Date01 February 2022
AuthorSamuelson, Pamela


The Supreme Court's 2006 eBay Inc. v. MercExchange, L.L.C. ruling has had transformative effects on the availability of injunctive relief for intellectual property (IP) infringements. (1) That decision held that courts should deny injunctions in patent infringement cases unless plaintiff's have shown that (1) without an injunction, they would suffer irreparable harm; (2) compensatory remedies at law would be inadequate; (3) a balance of hardships tips in their favor; and (4) "the public interest would not be disserved by" the issuance of an injunction. (2) The Court rejected the Federal Circuit's

"categorical rule" that injunctions should virtually always issue upon a finding of infringement. (3) In addition to pointing out that both the patent and copyright statutes provide that courts "may" issue injunctions, (4) not that they must, the Court relied on three of its copyright precedents for the proposition that injunctions need not always be issued in IP cases. (5) Note 10 of Campbell v. Acuff-Rose Music, Inc. said that the public interest is not always served by injunctive relief when defendants raise plausible fair use defenses. (6) This Article assesses how the Campbell footnote and the eBay fourfactor test have affected the availability of injunctions as a remedy for copyright infringement in the decades that followed. (7)

Part I shows that prior to the Campbell decision, courts routinely issued permanent injunctions when plaintiff's had proven that defendants infringed copyrights and preliminary injunctions when plaintiff's showed a likelihood of success on the merits, (8) although courts sometimes denied injunctions because of unreasonable delay or a plaintiff's unclean hands. (9) Courts occasionally decided that unusual circumstances warranted denying injunctive relief, as when harm was trivial, (10) when the infringement was of small parts of larger works, (11) and when injunctive relief would be too difficult to tailor or administer. (12) Judges had mixed opinions about whether withholding injunctive relief was appropriate in close but ultimately unsuccessful fair use cases. (13)

Part II explains that the Court's Campbell decision transformed fair use jurisprudence by recognizing that parodies and other transformative uses of copyrighted works favored fair use defenses. Yet, its endorsement of withholding injunctions in close fair use cases was rarely followed. Several withholding injunctive relief cases in the post-Campbell, pre-eBay period involved architectural works in which the courts decided that the balance of hardships tipped toward infringers or that the requested injunction would have negative impacts on third parties (such as innocent tenants). In one high-profile technology case, courts denied a requested preliminary injunction because they viewed the dispute as more about the parties' contractual obligations than about copyright infringement. (14)

Part III suggests that courts took several years before they began taking seriously that eBay had much, if any, relevance in deciding whether to grant injunctions in copyright cases. Since 2010, courts have more frequently denied injunctions in four types of cases: (1) when copyright owners fail to offer persuasive evidence of irreparable harm and/or when courts perceive legal remedies to be adequate, (2) when the balance of hardships favors defendants, (3) when the public interest would be better served by denying the requested injunctions, and (4) when the plaintiff seeks to vindicate non-copyright interests. While injunctions are still quite common in simple piracy cases, eBay has radically changed the injunctive relief calculus for copyright plaintiff's in cases in which defendants had plausible defenses. (15) In the past decade, courts have generally been dutifully analyzing each of the eBay factors and seem to be granting injunctions less frequently now than before eBay. (16)

Part IV.A considers how the post-eBay copyright rulings comport with traditional principles of equity. Although private law and remedies scholars have lodged several criticisms against eBay, (17) this Article concludes that the eBay four-factor test has had, by and large, salutary effects on judicial decisions as to whether to issue injunctions in copyright infringement cases. Part IV.B speculates about why eBay has not caused courts to withhold injunctions more frequently.


    Prior to the Supreme Court's decision in Campbell, courts routinely granted injunctive relief when plaintiff's had either proven copyright infringement or shown a likelihood of success on the merits. (18) Some courts went so far as to say that plaintiff's in such cases were "entitled" to injunctive relief. (19) These decisions were consistent with the conception of copyright's exclusive rights as creating an entitlement to an exclusionary remedy (that is, an injunction). (20) In the pre-Campbell and pre-eBay periods, courts typically presumed that plaintiff's would suffer irreparable injury based on a finding of infringement or a showing of a likelihood of success on the merits. (21) Only rarely were other factors, such as a balance of hardships as between the plaintiff or defendant and the public interest, taken into account. (22) However, a long delay in seeking injunctive relief and insignificant harm sometimes influenced courts to deny requested injunctions. (23) In addition, courts sometimes denied injunctions when the defendant had made significant investments in creating their works and the infringing element constituted a relatively small part of a larger work. (24) More mixed, however, were judicial views about whether injunctive relief was appropriate in close but ultimately unsuccessful fair use cases. (25)

    1. Unreasonable Delay and Triviality Defenses to Injunctive Relief

      The most common basis for judicial denials of injunctive relief in the pre-Campbell era was a plaintiff's unreasonable delay in seeking relief. (26) In Love v. Kwitny, for instance, the court denied Love's request for a permanent injunction, even though the court was convinced that Kwitny had unlawfully copied eleven pages of Love's unpublished manuscript. (27) Yet, because Love had failed to seek a preliminary injunction during six years of litigation, the court found his claim of imminent, irreparable injury unpersuasive. (28) Commercial interest in Kwitny's book had, moreover, waned over time, so any future injury to Love from further sales of Kwitny's book was too "trifling" to justify issuance of an injunction. (29)

      Another case denying a motion for a preliminary injunction because the infringement caused only trivial harm was Consumers Union of United States, Inc. v. Hobart Manufacturing Co. (30) Consumers Union had wanted to stop Hobart from quoting from a Consumer Reports (CR) review of its dishwashers in a bulletin to its sales force. (31) Hobart copied the passages to inform its distributors about the positive parts of the CR review and to explain why Hobart thought it should have gotten the top billing. (32) Even if the Union was correct that this copying infringed its copyright, the court calculated that the maximum actual damage suffered from the infringement was forty-eight dollars, which was too trivial to justify an injunction. (33) The court was also unpersuaded by the Union's theory of irreparable injury that Hobart's use of this content in its sales bulletins would undermine "the confidence of its subscribers in its impartiality." (34) This was not a type of harm that copyright law was designed to prevent. (35)

    2. Substantial Investments in Non-Infringing Elements

      In a few pre-Campbell cases, courts denied injunctions because the defendants had made significant investments in producing new works whose value principally lay in their non-infringing parts. An early example is the Supreme Court's 1908 decision in Dun v. Lumbermen's Credit Ass'n. (36) Dun charged that Lumbermen's Credit Association (LCA) infringed copyright by copying numerous entries from its directory of data about North American businesses in LCA's similar directory focused on lumber-related businesses. (37) Because LCA had expended considerable effort in obtaining data about lumbering businesses independent of Dun's directory, the Court affirmed dismissal of Dun's suit in equity which sought to enjoin LCA's directory. (38) Although the Court accepted that LCA had copied some elements from Dun's directory, it agreed with the circuit court's conclusion that issuing an injunction would be "unconscionable" given the defendant's considerable investment in gathering and adding new information to its directory. (39) Dun could, however, seek damages for the infringement in a court of law. (40)

      A more recent example is Belushi v. Woodward, which denied the plaintiff's request for a temporary restraining order (TRO) to stop further distribution of copies of Bob Woodward's book about John Belushi that included a photograph of the actor in which Belushi's widow claimed copyright. (41) Because a TRO would significantly disrupt the publisher's marketing strategy, the balance of hardships tipped to Woodward. (42) While protecting copyrights is in the public interest, the court noted that "there is a competing public interest in this case: the promotion of free expression and robust debate." (43) It mattered that the photograph constituted a very small part of Woodward's book. (44)

      In Abend v. MCA, Inc., the Ninth Circuit gave considerable weight to significant investments MCA had made in creating a valuable derivative work having many non-infringing elements. (45) MCA made the classic film "Rear Window" in 1954 after acquiring the right to make a movie based on a Cornell Woolrich short story. (46) Woolrich died before the renewal right vested, so he could not fulfill his contractual obligation to assign the renewal right to MCA. (47) Woolrich bequeathed his property, including...

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