Flexible Lifeline Systems., Inc. v. Precision Lift, Inc.

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

FLEXIBLE LIFELINE SYSTEMS, INC., 

Plaintiff-counter-claim-defendant-

No. 10-35987

Appellee,

D.C. No.

v.

 6:10-cv-00044-

PRECISION LIFT, INC.; JOHN DWM

TOLLENAERE,

OPINION

Defendants-counter-claimants-

Appellants.



Appeal from the United States District Court

for the District of Montana

Donald W. Molloy, District Judge, Presiding

Argued and Submitted

May 5, 2011—Seattle, Washington

Filed August 22, 2011

Before: Mary M. Schroeder, M. Margaret McKeown, and

Consuelo M. Callahan, Circuit Judges.

Per Curiam Opinion

11283

11286 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

COUNSEL

Robert L. Sterup, Shane P. Coleman, and Michael P. Manning

(argued), Holland & Hart LLP, Billings, Montana, for the

defendants-appellants.

Lisa H. Meyerhoff (argued), Myall S. Hawkins, Baker &

McKenzie LLP, Houston Texas; Jean E. Faure, Jason T.

Holden, Faure Holden Attorneys At Law, Great Falls, Mon-

tana, for the plaintiff-appellee.

OPINION

PER CURIAM:

Defendants-appellants John Tollenaere and Precision Lift,

Inc. (collectively “Precision”) appeal from the district court’s

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11287

grant of a preliminary injunction against them in an action for

copyright infringement by plaintiff-appellee Flexible Lifeline

Systems, Inc. (“Flexible”). The district court found that Flexi-

ble was likely to succeed in its infringement suit, and granted

the injunction relying on long-standing precedent of this cir-

cuit that presumes irreparable harm in a copyright infringe-

ment case upon a showing of likelihood of success on the

merits. Precision appeals, claiming that such a presumption

runs afoul of two recent Supreme Court decisions, eBay Inc.

v. MercExchange, L.L.C., 547 U.S. 388 (2006) and Winter v.

Natural Resources Defense Council, Inc., 555 U.S. 7 (2008).

We agree, and therefore vacate the injunction and remand.

BACKGROUND

John Tollenaere formed Precision in the 1990s to market a

helicopter rescue lift product he had patented. In or around

2000, Precision expanded its business to include sales of air-

craft maintenance stands and platforms for fixed- and rotor-

wing aircraft.1 Precision did not manufacture any of its own

stands or platforms. Rather, Precision sold stands or platforms

manufactured by others, even though it claims that it also had

the ability to independently design aircraft maintenance

stands. In early 2001, Precision again sought to increase its

business and became the sole distributor for aircraft mainte-

nance stands designed and manufactured by West Coast Weld

Tech, Inc. (“West Coast”).

West Coast allowed Precision to use the technical drawings

of the stands manufactured by West Coast in order for Preci-

1

Maintenance stands and platforms are used by aircraft maintenance

personnel to stand on when working on aircraft. They provide greater sta-

bility and an easier base from which to work than a ladder. Due to the var-

ied size and shape of different aircraft, maintenance stands come in a

variety of sizes, shapes, and configurations. In addition, while there are

generic stands available, stands and platforms are sometimes specifically

designed to fit a particular aircraft. This dispute involves stands and plat-

forms specifically designed for a particular aircraft.

11288 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

sion to market the stands, but West Coast always claimed

ownership of the drawings.2 All of the drawings at issue were

stamped by West Coast as its confidential and proprietary

information. West Coast never transferred or sold ownership

of the drawings, or any of its intellectual property, to Preci-

sion. Precision never challenged West Coast’s ownership or

otherwise indicated that Precision believed it had any owner-

ship interest in the drawings. In fact, in addition to the “confi-

dential and proprietary information” stamp West Coast used

on all of its drawings, at one point Precision requested that

West Coast add a watermark across the face of the drawings

that said, “Property of West Coast Weld Tech” to more

clearly identify the drawings as West Coast’s property.

In July of 2008, Precision and West Coast entered into a

joint venture to compete for a United States Air Force con-

tract to manufacture and sell maintenance stands for C-130

Hercules aircraft. Under this arrangement, West Coast was

responsible for designing and manufacturing the stands, and

Precision was responsible for submitting the bid to the gov-

ernment and handling the bid process. Rather than a single

maintenance stand, the government requested bids for a wrap-

around maintenance platform comprised of several stands for

use during extensive aircraft inspections.

West Coast included provisions to protect its ownership of

intellectual property in the Joint Venture Agreement (“JVA”).

First, the JVA expressly provides that each party acknowl-

edges the need to disclose its confidential and proprietary

information to the other for the purposes of the venture. Sec-

ond, the JVA contains an agreement that each party will not

disclose the confidential and proprietary information of the

other party to anyone else, except to the government, and

even then only as necessary to complete their duties in per-

2

As will be shown, Flexible is the plaintiff here because West Coast

sold its assets, including the rights to the drawings at issue, to Flexible in

2009.

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11289

forming the venture. Third, the JVA expressly requires each

party to promptly return the other party’s confidential and

proprietary information upon termination of the venture or at

the request of the other party.

The parties dispute Precision’s role in the actual design of

the maintenance platforms and the creation of the drawings.

Precision contends it assisted in the design of custom, wrap-

around stands, and claims that it owns, or at least co-owns, the

drawings as a result of its part in their creation. Primarily,

Precision claims that its employees assisted in the design pro-

cess (and thus presumably had a role in creation of the design

drawings) by going to on-site visits with West Coast engi-

neers and employees to understand the customer’s require-

ments.

Flexible disagrees, countering that Precision did not con-

tribute to the design and could not have done so because it

employed no engineers and did not have manufacturing or

design capabilities. West Coast, on the other hand, employed

an engineer and two draftsmen, and Flexible contends that

West Coast alone designed the maintenance stands and cre-

ated the drawings at issue here. Moreover, the JVA specified

that West Coast was responsible for all engineering, technical

design work, and manufacturing, while Precision was respon-

sible for completing the bid proposal and dealing with the

government during the bid process.

In July 2008, Precision submitted the initial proposal for

the Air Force C-130 platform, which, as required, included

the initial drawings. These drawings had to be submitted for

evaluation and revisions prior to submitting the final bid.

Thereafter, Precision communicated with the Air Force

regarding the proposal and West Coast continued its design

work on the stands, which included making revisions to the

design and technical drawings.

In 2009, West Coast encountered significant financial prob-

lems. Unable to continue operating on its own, West Coast

11290 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

sold the majority of its assets, including much of its intellec-

tual property, to Flexible. In particular, the purchase agree-

ment specified that “ALL drawings, details, production

schedules, etc. for design, construction and installation of

maintenance platforms for aircraft and land vehicles” were

included in the purchase. After the purchase, Flexible contin-

ued what had been West Coast’s work on the final C-130

drawings and forwarded them to the Air Force in December

2009. Meanwhile, Precision asked Flexible to discuss formal-

izing their continuing business relationship in light of Flexi-

ble’s purchase of West Coast’s assets.

On January 27, 2010, Flexible responded to Precision’s

requests to formalize their business relationship by advising

Precision that Flexible was not interested in continuing a joint

venture. Flexible presented Precision with alternate proposals,

including one by which Precision would become a sales agent

for Flexible’s products. Rather than proceed with either of

Flexible’s proposals, Precision found another joint venture

partner to take West Coast’s place in the C-130 maintenance

stand bid proposal. Precision joined with Carbis, one of Flexi-

ble’s competitors, and submitted a final bid for the project

totaling over $61 million. Flexible did not submit a bid of its

own for the proposal. The Air Force eventually awarded the

contract to another competitor at a contract price approxi-

mately $9.5 million higher than Precision’s bid, likely due to

the dispute between Precision and Flexible as to the owner-

ship of the drawings. Precision protested the award, but the

Air Force ultimately denied the protest.

In the meantime, Flexible filed applications to register the

drawings it had purchased from West Coast, and the Copy-

right Office granted the registrations effective June 23, 2010.

Flexible then filed its complaint and an application for injunc-

tive relief to enjoin Precision from using Flexible’s intellec-

tual property on the C-130 bid. The district court denied the

motion for a temporary restraining order, but set a hearing on

the preliminary injunction. Prior to the hearing, Flexible filed

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11291

an amended application for injunctive relief, expanding the

scope of the relief sought to include enjoining Precision from

using any of the drawings for maintenance stands for aircraft

other than the C-130. In both its application and supplemental

application, Flexible argued only that it was entitled to a pre-

sumption of irreparable harm and did not offer any evidence

of actual harm that it was likely to suffer in the absence of an

injunction. The district court held a hearing on the preliminary

injunction application on October 14 and 19, 2010. Following

the hearing, the court granted the injunction except as to the

use of the drawings for the C-130 bid.

The district court issued findings of fact and conclusions of

law in granting Flexible’s injunction application. It found that

the C-130 drawings at issue were created by West Coast

employees, and that West Coast gave Precision the drawings

to use for the C-130 contract proposal. The court also found

that: (1) the joint venture agreement required Precision to

return all of West Coast’s proprietary information upon the

termination of the agreement; (2) Flexible was likely to show

that Precision reproduced and used Flexible’s drawings with-

out permission or license; and (3) Precision had distributed

copies of Flexible’s drawings without permission or license.

However, the court noted that Flexible “elicited no proof sug-

gesting that it entered competing bids with contracts that Pre-

cision Lift, Inc. procured through the use of Flexible Lifeline

Systems, Inc.’s platform drawings.” On the other hand, it

observed that “[i]f a preliminary injunction is issued, Preci-

sion Lift, Inc. may lose existing or potential contracts.”

The district court’s conclusions of law included the follow-

ing: (1) Flexible is likely to prove its drawings are copyright-

able; (2) West Coast was the sole author and creator of the

drawings; (3) Flexible had valid copyrights in the drawings;

and (4) Flexible was likely to succeed on the merits of its

copyright infringement claim. The district court did not make

a finding on whether Flexible would be irreparably harmed

absent an injunction, but concluded that “[b]ecause Flexible

11292 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

Lifeline Systems, Inc. has shown a likelihood of success on

the merits, Flexible Lifeline Systems, Inc. is presumed to be

irreparably harmed.” The district court did not analyze the

issue of irreparable harm, but based on our precedent con-

cluded “[w]hen a plaintiff is likely to succeed on the merits

of a copyright infringement claim, irreparable harm is pre-

sumed. Elvis Presley Enterprises, Inc. v. Passport Video, 349

F.3d 622, 627 (9th Cir. 2003).”

The court also found a “public . . . interest in the efficient

and economical performance of contracts,” but because of the

additional money the government would have to pay on the

C-130 contract, the public interest would not be served by

preventing Precision from using the drawings for that con-

tract. The court concluded that Flexible was entitled to a pre-

liminary injunction against Precision for the immediate return

of all intellectual property Precision had received from West

Coast, which was now owned by Flexible, and prohibited Pre-

cision from using such intellectual property other than in con-

nection with the bid proposal on the Air Force C-130 contract.

Precision timely appealed the issuance of the preliminary

injunction. We have jurisdiction pursuant to 28 U.S.C.

§ 1292(a)(1).

DISCUSSION

I. STANDARD OF REVIEW

A district court’s decision regarding preliminary injunctive

relief is subject to limited review. Harris v. Bd. of Supervi-

sors, L.A. Cnty,, 366 F.3d 754, 760 (9th Cir. 2004) (review

“limited and deferential”) (internal quotation marks omitted);

Sw. Voter Registration Educ. Pro. v. Shelley, 344 F.3d 914,

918 (9th Cir. 2003) (en banc) (same). We will reverse only if

the district court has abused its discretion. Alliance for the

Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011).

“The district court, however, ‘necessarily abuses its discretion

when it bases its decision on an erroneous legal standard or

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11293

on clearly erroneous findings of fact.’ ” Earth Island Inst. v.

United States Forest Serv., 351 F.3d 1291, 1298 (9th Cir.

2003) (quoting Rucker v. Davis, 237 F.3d 1113, 1118 (9th

Cir. 2001) (en banc)). If “the district court is alleged to have

relied on an erroneous legal premise, we review the underly-

ing issues of law de novo.” Id.

II. STANDARD FOR PRELIMINARY INJUNCTIVE RELIEF

The Copyright Act provides that a court “may . . . grant

temporary and final injunctions on such terms as it may deem

reasonable to prevent or restrain infringement of a copyright.”

17 U.S.C. § 502(a). Thus, injunctive relief to prevent copy-

right infringement is available as an equitable remedy in the

court’s discretion. In order to obtain preliminary injunctive

relief, a plaintiff “must establish that he is likely to succeed

on the merits, that he is likely to suffer irreparable harm in the

absence of preliminary relief, that the balance of equities tips

in his favor, and that an injunction is in the public interest.”

Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co.,

571 F.3d 873, 877 (9th Cir. 2009) (quoting Winter, 555 U.S.

7, 129 S. Ct. 365, 374 (2008)). This is commonly referred to

as the “four-factor test.” See, e.g., Sierra Forest Legacy v.

Rey, 577 F.3d 1015, 1021 (9th Cir. 2009). Although Precision

also argues that the district court erred in finding Flexible

demonstrated a likelihood of success on the merits, the pri-

mary issue in this appeal is whether the district court used an

erroneous legal standard by presuming irreparable harm in

issuing injunctive relief.

A. Presumption of Irreparable Harm

[1] We have long held that irreparable harm can be pre-

sumed in a copyright infringement case upon a showing of a

likelihood of success on the merits by the copyright owner.

Apple Computer, Inc. v. Formula Intern. Inc., 725 F.2d 521,

525 (9th Cir. 1984); see also Triad Sys. Corp. v. Se. Exp. Co.,

64 F.3d 1330, 1335 (9th Cir. 1995) (noting the general

11294 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

requirement of showing irreparable harm, but stating “[i]n a

copyright infringement action, however, the rules are some-

what different. A showing of a reasonable likelihood of suc-

cess on the merits raises a presumption of irreparable harm.”).3

[2] Based on our precedent, the district court granted the

preliminary injunction after finding a likelihood of success on

the merits, without inquiring into whether Flexible would

actually suffer any irreparable harm absent relief. Instead, the

district court relied solely on the presumption of irreparable

harm, citing our 2003 decision Elvis Presley, 349 F.3d 622.

Precision objects, arguing that this circuit’s standard, as

expressed in Elvis Presley and relied upon by the district

court, has been effectively overruled by the Supreme Court.

According to Precision, after the Supreme Court’s eBay and

Winter decisions in 2006 and 2008, this circuit’s long-

standing practice of presuming irreparable harm upon the

showing of likelihood of success on the merits in a copyright

infringement case is no longer good law. Precision is correct.

As we prophetically proclaimed in Elvis Presley that “[t]he

King is dead,”4 349 F.3d at 624, referring to Elvis Presley the

man, today we proclaim that the “King” is dead, referring to

Elvis Presley the case — to the extent it supported the use of

a presumption of irreparable harm in issuing injunctive relief.

3

We were not alone in presuming harm. Indeed, nearly thirty years ago

the prevailing view among the circuits was that “[a] copyright plaintiff

who [made] out a prima facie case of infringement [was] entitled to a pre-

liminary injunction without a detailed showing of irreparable harm.” Apple

Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1254 (3d Cir.

1983) (citing 3 Nimmer on Copyright § 14.06[A], at 14-50, 14-51 & n.16

(collecting authorities)).

4

See Elvis Presley, Wikipedia, http://en.wikipedia.org/wiki/Elvis_

Presley (last visited June 1, 2011) (explaining that Elvis Presley is “[a]

cultural icon, [ ] widely known by the single name Elvis [and] is often

referred to as the ‘King of Rock and Roll’ or simply ‘the King’ ”).

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11295

1. eBay Inc. v. MercExchange, L.L.C.

In eBay, the Supreme Court reviewed a request for a per-

manent injunction after a jury found eBay had infringed

MercExchange’s patent. The district court refused to issue an

injunction notwithstanding the infringement, finding “that a

‘plaintiff ’s willingness to license its patents’ and its ‘lack of

commercial activity in practicing the patents’ would be suffi-

cient to establish that the patent holder would not suffer irrep-

arable harm.” eBay, 547 U.S. at 393 (quoting MercExchange,

L.L.C. v. eBay, Inc., 275 F. Supp. 2d 695, 712 (E.D. Va.

2003)). The Federal Circuit reversed the district court, “apply-

ing its ‘general rule that courts will issue permanent injunc-

tions against patent infringement absent exceptional

circumstances.’ ” Id. at 391 (quoting MercExchange, L.L.C. v.

eBay, Inc., 401 F.3d 1323, 1339 (Fed. Cir. 2005)).

[3] The Supreme Court stated that the district court’s “cat-

egorical rule” regarding irreparable harm “cannot be squared

with the principles of equity adopted by Congress.” eBay, 547

U.S. at 393. However, by applying a “general rule,” the Fed-

eral Circuit had “departed in the opposite direction [as the dis-

trict court] from the four-factor test.” Id. The Court explained

that “[j]ust as the district court erred in its categorical denial

of injunctive relief, the Court of Appeals erred in its categori-

cal grant of such relief.” Id. at 394. The Court was very clear

that even where infringement had been proven, a plaintiff may

not be granted injunctive relief until he satisfies the four-

factor test, which includes demonstrating irreparable injury.

Id. (holding that because “neither court below correctly

applied the traditional four-factor framework that governs the

award of injunctive relief, we vacate the judgement of the

Court of Appeals, so that the District Court may apply that

framework in the first instance.”)

[4] Flexible tries to distinguish eBay on the grounds that

eBay involved patent infringement, not copyright infringe-

ment, and argues that the presumption remains valid for a

11296 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

copyright infringement case. However, the Court’s reasoning

in eBay cannot be so narrowly read. The Court based its con-

clusions on principles of equity, citing the Patent Act’s autho-

rization to grant an injunction “in accordance with the

principles of equity.” Id. at 392. The Court made clear that

these principles apply equally to copyright infringement by

discussing the Copyright Act and drawing parallels between

patent and copyright protection throughout its analysis. It

explained that its “approach is consistent with our treatment

of injunctions under the Copyright Act,” id., and noted that

“[l]ike the Patent Act, the Copyright Act provides that courts

‘may’ grant injunctive relief ‘on such terms as it may deem

reasonable to prevent or restrain infringement of a copy-

right,’ ” id. (quoting 17 U.S.C. § 502(a)). The Court empha-

sized that it “has consistently rejected invitations to replace

traditional equitable considerations with a rule that an injunc-

tion automatically follows a determination that a copyright

has been infringed,” and based on its experience in copyright

cases, similarly rejected the invitation to adopt a categorical

rule in patent infringement cases. Id. at 392-93. Thus, under

eBay, a presumption of irreparable harm is equally improper

in a case based on copyright infringement as it is in a case

based on patent infringement.

[5] Nor does the fact that eBay concerned a permanent

injunction rather than a preliminary injunction sufficiently

distinguish the cases to result in a different outcome. The

Supreme Court has been more than clear on this point:

Finally, the Ninth Circuit distinguished [Weinberger

v. Romero-Barcelo, 456 U.S. 305 (1982)] on the

ground that the District Court in that case refused to

issue a permanent injunction after a trial on the mer-

its whereas in this case the District Court denied pre-

liminary injunctive relief. We fail to grasp the

significance of this distinction. The standard for a

preliminary injunction is essentially the same as for

a permanent injunction with the exception that the

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11297

plaintiff must show a likelihood of success on the

merits rather than actual success.

Amoco Prod. Co. v. Gambell, 480 U.S. 531, 546 n.12 (1987).

Indeed, the eBay Court relied on a preliminary injunction case

in reaching its holding. 547 U.S. at 391 (citing Amoco, 480

U.S. at 542)). Thus, we conclude that eBay applies with equal

force to preliminary injunction cases as it does to permanent

injunction cases.

2. Winter v. Natural Resources Defense Council, Inc.

If we harbored any doubts about the applicability of eBay

in the preliminary injunction context, they have been dis-

pelled by the Supreme Court’s decision in Winter. In Winter,

the Supreme Court reaffirmed the equitable nature of the four-

factor framework and applied it to a case involving a prelimi-

nary injunction. The district court had issued an injunction

restricting the U.S. Navy’s ability to conduct war readiness

exercises off the coast of Southern California, and the Ninth

Circuit affirmed. Natural Res. Def. Council, Inc. v. Winter,

518 F.3d 658, 697 (9th Cir. 2008). We held that the district

court need only find a possibility of irreparable harm to issue

an injunction and rejected the Navy’s argument that any claim

of irreparable injury was merely speculative. Id.

[6] The Supreme Court reversed, holding that “the Ninth

Circuit’s ‘possibility’ standard is too lenient.” Winter, 555

U.S. at 22. The Court explained that its “frequently reiterated

standard requires plaintiffs seeking preliminary relief to dem-

onstrate that irreparable injury is likely in the absence of an

injunction.” Id. (emphasis original). The Court clarified that

“[i]ssuing a preliminary injunction based only on a possibility

of irreparable harm is inconsistent with our characterization of

injunctive relief as an extraordinary remedy that may only be

awarded upon a clear showing that the plaintiff is entitled to

such relief.” Id. Thus, Winter reaffirms the principles relied

upon in eBay: a plaintiff must satisfy the four-factor test in

11298 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

order to obtain equitable injunctive relief, even if that relief

is preliminary. The Court cautioned that

[a] preliminary injunction is an extraordinary remedy

never awarded as of right. In each case, courts must

balance the competing claims of injury and must

consider the effect on each party of the granting or

withholding of the requested relief. In exercising

their sound discretion, courts of equity should pay

particular regard for the public consequences in

employing the extraordinary remedy of injunction.

Id. at 24 (quotation marks and citations omitted) (emphasis

added). If our past standard, which required a plaintiff to dem-

onstrate at least a possibility of irreparable harm, is “too

lenient,” then surely a standard which presumes irreparable

harm without requiring any showing at all is also “too

lenient.”

B. The Ninth Circuit After eBay and Winter

[7] Flexible contends that the presumption of irreparable

harm in a copyright infringement preliminary injunction case

survives the Supreme Court’s opinions in eBay and Winter.

Flexible’s primary argument for the continued viability of the

presumption is that this Circuit reaffirmed the presumption of

irreparable harm in Marlyn, in which we reviewed a prelimi-

nary injunction issued in an analogous trademark infringe-

ment case. There we quoted the proper four-factor test in

Winter and affirmed after stating “[t]he district court properly

considered each of these factors.” Marlyn, 571 F.3d at 877.

The district court there, like the district court here, rested on

a presumption of irreparable harm rather than finding that

such harm was likely. Id. Flexible contends that our affirma-

tion of the district court in Marlyn is an affirmation of the

continuing vitality of the presumption of irreparable harm in

intellectual property infringement cases.

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11299

[8] We do not agree. Marlyn contains no analysis concern-

ing the use of the presumption of irreparable harm post-

Winter. In fact, there is no indication that the parties briefed

the issue of whether our long-standing presumption of harm

survived after eBay or Winter. The entire discussion of irrepa-

rable harm in Marlyn reads:

In evaluating irreparable harm, the court cited Ninth

Circuit law holding that “[i]n a trademark infringe-

ment claim, ‘irreparable injury may be presumed

from a showing of likelihood of success on the mer-

its.’ ” El Pollo Loco, Inc. v. Hashim, 316 F.3d 1032,

1038 (9th Cir. 2003) (quoting GoTo.com, Inc. v.

Walt Disney Co., 202 F.3d 1199, 1205 n.4 (9th Cir.

2000)). Because the court found a likelihood of suc-

cess on the merits, it reasonably presumed irrepara-

ble injury.

Id. The panel’s summary treatment of the presumption with-

out consideration of the effect of eBay and Winter does not

bind this panel or constitute an affirmation of the presump-

tion’s continued vitality. “[S]tatements made in passing, with-

out analysis, are not binding precedent.” Thacker v. FCC (In

re Magnacom Wireless, LLC), 503 F.3d 984, 993-94 (9th Cir.

2007).

[9] Flexible also cites Alliance for the Wild Rockies v. Cot-

trell, 632 F.3d 1127 (9th Cir. 2011) as supporting the contin-

ued use of the presumption of irreparable harm in an

environmental case once a likelihood of success on the merits

is demonstrated. Alliance for the Wild Rockies does not so

hold. To the contrary, we stated that although the Supreme

Court has noted “ ‘[e]nvironmental injury, by its nature, can

seldom be adequately remedied by money damages and is

often permanent or at least of long duration, i.e., irrepara-

ble[,]’ . . . this does not mean that ‘any potential environmen-

tal injury’ warrants an injunction.” Id. at 1135 (quoting The

Lands Council v. McNair, 537 F.3d 981, 1004 (9th Cir. 2008)

11300 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

(en banc)). Nonetheless, we found that “actual and irreparable

injury, such as [Alliance] articulates here, satisfies the ‘likeli-

hood of irreparable injury’ requirement articulated in Winter.”

Id. Thus, we appreciated the key distinction that although

some injuries may usually be irreparable and thus a likelihood

of irreparable injury easily shown, the plaintiff must still

make that showing on the facts of his case and cannot rely on

a presumption to do it for him.

[10] Another panel of this circuit very recently addressed

an argument nearly identical to the one Flexible is now mak-

ing. See Perfect 10, Inc. v. Google, Inc., ___ F.3d ___, 2011

WL 3320297 (9th Cir. Aug. 3, 2011). Perfect 10 argued that

the district court erred in finding it had not demonstrated

irreparable harm because, having shown a likelihood of suc-

cess on the merits of its copyright infringement case, it was

entitled to a presumption of irreparable harm. Id. at *2. The

panel in Perfect 10 rejected the argument, concluding, as we

do, that such a presumption does not survive eBay and Winter.

Id. at *4. The minor differences between this case and Perfect

10 — here the district court relied on the presumption of harm

while in Perfect 10 the court found that Perfect 10 failed to

establish irreparable harm and the panel subsequently refused

to rely on the presumption — are not enough to compel dif-

ferent results.

C. Presuming Irreparable Harm Is Now

Impermissible

We conclude that presuming irreparable harm in a copy-

right infringement case is inconsistent with, and disapproved

by, the Supreme Court’s opinions in eBay and Winter. Id. at

*4. Thus, our long-standing precedent finding a plaintiff enti-

tled to a presumption of irreparable harm on a showing of

likelihood of success on the merits in a copyright infringe-

ment case, as stated in Elvis Presley and relied on by the dis-

trict court, has been effectively overruled. In other words,

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11301

“Elvis has left the building.”5 Accordingly, we hold that even

in a copyright infringement case, the plaintiff must demon-

strate a likelihood of irreparable harm as a prerequisite for

injunctive relief, whether preliminary or permanent.

D. Other Circuits and Authorities Agree

[11] Our sister circuits agree with our holding. The Second

Circuit faced exactly the same question just a year ago, and

came to the same answer we do today. See Salinger v. Colt-

ing, 607 F.3d 68 (2d Cir. 2010). The Second Circuit, like the

Ninth, had a long-standing history of presuming irreparable

harm upon the showing of a likelihood of success on the mer-

its in a copyright infringement case. In Salinger, the district

court issued an injunction based on Second Circuit precedent

establishing a presumption of irreparable harm after finding

the requisite likelihood of success on the merits. Id. at 74.

The Second Circuit reversed, holding that after eBay and

Winter such a presumption was no longer permitted. Id. at 77.

Salinger undertook a detailed examination of both eBay and

Winter, and their applicability to preliminary injunctions in

copyright infringement actions, and concluded “nothing in the

text or the logic of eBay suggests that its rule is limited to

patent cases. On the contrary, eBay strongly indicates that the

5

See Cecil Adams, The Straight Dope (Dec. 27, 2002),

http://www.straightdope.com/columns/read/2430/elvis-has-left-the-

building-who-said-it-first, which explains that the quote has become “a

catchphrase whose meaning, usually tinged with irony, is clear to all: the

show’s over, the curtain has fallen, the sun has set, that’s all she wrote,

the fat lady has sung, our work here is done, move along, nothing more

to see, disperse, beat it, turn the page, hit the road, don’t forget to tip your

waitress, pack it up, turn out the lights, das ist alles, time’s up, toodle-oo,

exeunt omnes, class dismissed, back to work, don’t let the screen door hit

you where the good Lord split you, end of story, that’s all there is there

ain’t no more, so long, hasta la vista, you don’t have to go home but you

can’t stay here, later gator, 30, buh-bye, get lost, ite missa est, the end,

finito, Scotty, beam me up.” The same can be aptly said of the fate of the

presumption of irreparable harm described in Elvis Presley.

11302 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

traditional principles of equity it employed are the presump-

tive standard for injunctions in any context.” Id. at 77-78. The

Second Circuit recognized, as we have, that the Supreme

Court “expressly relied upon copyright cases in reaching its

conclusion” in eBay. Id. at 78.

The Second Circuit also had no trouble applying these prin-

ciples to preliminary injunctions, reasoning:

Nor does eBay, as reinforced by the Supreme

Court’s very recent decision in Winter v. Natural

Resources Defense Council, ___ U.S. ___, 129 S. Ct.

365 (2008), permit an easier grant of a preliminary

than of a permanent injunction. First, as mentioned

above, one of the two cases eBay relied upon in stat-

ing the traditional equitable test involved a prelimi-

nary injunction. See Amoco Prod., 480 U.S. at 542;

see also id. at 546 n.12 (“The standard for a prelimi-

nary injunction is essentially the same as for a per-

manent injunction with the exception that the

plaintiff must show a likelihood of success on the

merits rather than actual success.”).

Id. at 78-79. Thus, the Second Circuit agrees with us that a

presumption of irreparable harm is no longer permitted in

issuing an injunction; a plaintiff must show a likelihood of

harm.

[12] The Fourth Circuit has also held that a plaintiff is no

longer “entitled” to an injunction on the showing of infringe-

ment, and applied eBay in requiring all four factors of the

four-factor test be shown. Christopher Phelps & Assocs., LLC

v. Galloway, 492 F.3d 532, 543 (4th Cir. 2007). Similarly, the

First Circuit has also applied eBay to a copyright infringement

injunction.6 CoxCom, Inc. v. Chaffee, 536 F.3d 101, 112 (1st

Cir. 2008).

6

More recently, the First Circuit applied eBay to a trademark infringe-

ment case, although it declined to decide whether a presumption of irrepa-

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11303

[13] The leading treatises are in accord with our reading of

the effect eBay and Winter have had on the plaintiff’s burden

in copyright infringement injunction cases. Before eBay, Nim-

mer on Copyright was routinely cited as supporting the pre-

sumption. See Apple Computer, Inc. v. Franklin Computer

Corp., 714 F.2d at 1254 (citing 3 Nimmer on Copyright

§ 14.06[A], at 14-50, 14-51 & n.16 (collecting authorities)).

Nimmer has now seen the light, and recognizes that even in

the context of preliminary injunctions in a copyright infringe-

ment claim, “[t]he Supreme Court’s decision in eBay caused

a new day to dawn . . . . No longer applicable is the presump-

tion of irreparable harm, which allowed the collapse of factors

that plaintiff must prove down to one. As one commentator

notes, ‘Harm must be proved, not presumed.’ ” 4 Nimmer on

Copyright § 14.06[A][5], at 14-149 (footnotes omitted). The

Rutter Guide also recognizes the change: “In the past, at least,

injuries to certain types of property were presumed to be

irreparable on the theory that monetary damages could not

compensate for harm done . . . . The continued validity of

these cases seems doubtful in light of eBay . . . .” Schwarzer,

Tashima & Wagstaff, Cal. Prac. Guide: Fed. Civ. Proc.

Before Trial, ¶¶ 13:58.25-26 (The Rutter Group 2011) (cita-

tions omitted). In our view, there really is no doubt; at the

very least the cases applying a presumption of harm after

finding copyright infringement are no longer valid in light of

eBay.

rable harm was valid after eBay. Instead, it held that the plaintiff was not

entitled to relief because of the excessive delay in seeking an injunction

and thus avoided the question. Voice Of The Arab World, Inc. v. MDTV

Medical News Now, Inc., ___ F.3d ___, 2011 WL 2090132, *5-7 (1st Cir.

May 27, 2011). We have not found, nor has Flexible cited, any case in

which a circuit court has upheld the presumption of irreparable harm after

analyzing the issue following eBay. For that matter, we have not found,

nor has Flexible cited, any case in which the Supreme Court has approved

of such a presumption, either before eBay or after.

11304 FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT

E. The District Court’s Presumption of Harm Was

Error

The district court, albeit reasonably in light of our prece-

dent, relied solely on the presumption of irreparable harm to

issue its injunction. Applying our reading of eBay and Winter

to this case, reliance on a presumption of irreparable harm

was error. Perfect 10, 2011 WL 3320297, *4 (refusing to rely

on presumption of irreparable harm because such a presump-

tion “is clearly irreconcilable with the reasoning of the

Court’s decision in eBay”) (internal quotation marks and cita-

tion omitted). Flexible must demonstrate a likelihood of irrep-

arable harm in order to obtain injunctive relief.

[14] Flexible asks us to affirm the district court notwith-

standing the error because, in its view, the record clearly dem-

onstrates that it is likely to suffer irreparable harm absent the

requested injunction. However, the district court made no fac-

tual findings that would support a likelihood of irreparable

harm. In fact, its only finding that touches the issue weighs

against such a determination. The court found that “[Flexible]

elicited no proof suggesting that it entered competing bids

with contracts that [Precision] procured through the use of

[Flexible’s] platform drawings.”

[15] While we do not suggest that this finding establishes

a lack of irreparable harm, we believe it counsels against our

undertaking a searching review of an incomplete record to

make the required factual findings in the first instance. Flexi-

ble did not argue in its briefs below that it was likely to suffer

irreparable harm; it relied solely on its entitlement to a pre-

sumption of irreparable harm. Nor do its briefs on appeal set

forth sufficient facts demonstrating irreparable harm to com-

pel us to find in its favor.7 We believe the better course is to

7

The evidence Flexible cites consists primarily of the unsubstantiated

testimony of its President. Precision points to testimony of its own which

seems to dispute Flexible’s evidence. We believe the district court, which

heard all the testimony and was presented with all the evidence, is in a bet-

ter position to make this determination initially.

FLEXIBLE LIFELINE SYSTEMS v. PRECISION LIFT 11305

remand to allow the district court to make the requisite factual

determinations regarding irreparable harm and apply those

factual findings to the four-factor framework to determine

whether injunctive relief is warranted. See eBay, 547 U.S. at

394 (vacating “the judgment of the Court of Appeals, so that

the District Court may apply that framework in the first

instance”). Accordingly, we vacate the injunction and remand

to the district court for further proceedings consistent with

this opinion.

III. OTHER ISSUES

Precision also contends that the district court abused its dis-

cretion in concluding, as a matter of law, that Flexible was

likely to succeed on the merits and in issuing an overly-broad

injunction. Because we vacate the injunction based on the dis-

trict court’s abuse of discretion in presuming irreparable

harm, we need not reach these contentions.

CONCLUSION

The preliminary injunction issued against Precision is

VACATED, and the matter REMANDED to the district

court for further proceedings consistent with this opinion.

However, the preliminary injunction will stay in place for ten

days following the issuance of the mandate so that Flexible

will have an opportunity to apply for a temporary restraining

order pending the rehearing of the motion for a preliminary

injunction.