Holden Caulfield might have called it a crumby old rule.  Using more diplomatic terms, the Second Circuit concluded that the standard it has long applied to preliminary injunctions in copyright cases is “inconsistent with the ‘test historically employed by courts of equity,’” and has been abrogated by the Supreme Court’s ruling in eBay v. MercExchange.  Salinger v. Colting, __ F.3d __ (2d Cir. 2010).

Salinger pitted J.D. Salinger against an author who wrote a sequel to the iconic novel “Catcher in the Rye” entitled “60 Years Later: Coming Through the Rye.”  As its title implies, “60 Years Later” picks up the story of Holden Caulfield (referred to as “Mr. C”) in his 70’s, in a world that also includes Mr. C’s now-elderly author, a fictionalized Salinger.  Faux Salinger is haunted by his creation and wants to bring him to life to kill him, but ultimately cannot bring himself to do so.  Instead, he frees Mr C, who then reunites with his younger sister, Phoebe, and estranged son, Daniel.

Consistent with his famous and longstanding practice of refusing to authorize adaptations of his work, Salinger sued to enjoin the U.S. publication of “60 Years Later.”  In July 2009, the District Court granted Salinger’s motion for a preliminary injunction, finding that (1) Salinger has a valid copyright in “Catcher” and the Holden Caulfield character; (2) “60 Years Later” does not constitute a fair use; and (3) “60 Years Later” infringes Salinger’s copyrights.  Courts in the Second Circuit have long issued preliminary injunctions in copyright cases upon a finding of irreparable harm to the plaintiff coupled with a likelihood of success on the merits; significantly, courts presumed irreparable harm if the plaintiff could establish a prima facie case of copyright infringement. The District Court adhered to this standard in granting Salinger’s request for a preliminary injunction.  Though the court noted that the Supreme Court had recently rejected the practice of presuming irreparable harm in the eBay case, it reasoned that eBay “dealt only with the presumption of irreparable harm in the patent law context, and thus is not controlling in the absence of Second Circuit precedent applying it in the copyright context.” Salinger v. Colting, 641 F. Supp. 2d 250, 268 n.6 (S.D.N.Y. 2009).

The Second Circuit held that the standard enunciated in eBayapplies to preliminary injunctions in copyright cases, reasoning that the the Supreme Court relied not merely on patent law, but on traditional principles of equity as well as copyright cases in reaching its conclusion.  Thus, in order to obtain a preliminary injunction in a copyright case in the Second Circuit, the plaintiff must demonstrate (1) either (a) a likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the plaintiff’s favor; (2) a likelihood that the plaintiff will suffer irreparable harm absent the injunction; (3) the balance of hardships between the plaintiff and defendant tips in the plaintiff’s favor; and (4) issuance of the injunction will not disserve the public interest.  Courts may no longer presume irreparable harm.  Rather, they must “actually consider the injury the plaintiff will suffer if he or she loses on the preliminary injunction but ultimately prevails on the merits, paying particular attention to whether the remedies available at law, such as monetary damages, are inadequate to compensate for that injury.”

In considering the first factor – the probability of success on the merits – the Second Circuit cautioned courts to be “particularly cognizant of the difficulty of predicting the merits of a copyright claim at a preliminary injunction hearing,” especially where the defendant has raised a “colorable” fair use defense.  With respect to the second and third factors – irreparable harm and balancing of hardships – the only relevant harm is that which occurs to the parties’ legal (commercial) interests and which cannot be remedied after a final adjudication.  Both plaintiffs and defendants in copyright suits have property interests in their respective works, as well as First Amendment rights of expression (including, on the part of plaintiff copyright owners like Salinger, the right not to speak) at stake. 

The Second Circuit vacated the preliminary injunction and remanded to the District Court to consider the remaining eBayfactors.  It was careful to note, however, that it agreed with the District Court that Salinger was likely to prevail on the merits and would not disturb that finding.  Moreover, it cautioned that its ruling “is not to say that most copyright plaintiffs who have shown a likelihood of success on the merits would not be irreparably harmed absent preliminary injunctive relief.  As an empirical matter, that may well be the case, and the historical tendency to issue preliminary injunctions readily in copyright cases may reflect just that.”  This caveat seems practically to invite district courts to continue to find irreparable harm as a matter of course where the plaintiff has established a likelihood of success on the merits.