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Tips to getting an injunction to stop willful copyright infringement [FRCP 65]

Posted by Steve Vondran | Nov 27, 2016 | 0 Comments

Federal Court Injunctions in Trademark and Copyright Infringement Cases – [FRCP 65]

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When an infringer is illegally reproducing, distributing, or publicly performing or rebroadcasting your copyrighted works (ex. music, lyrics, eBook characters, art, photos, film, videos, software), you want them to STOP.  To do this legally, you need to consider seeking an “injunction” which is an order from the court either requiring a Defendant or infringer to STOP doing something or forcing them to DO something.  But in order to get this order from the Court at the early stages of a federal court lawsuit being filed, you need to be able to MEET THE TEST FOR INJUNCTION under Federal Rules of Civil Procedure (FRCP 65).  This blog discusses the things a Plaintiff will need to be able to show to bear the BURDEN OF PROOF IN A CIVIL CASE.

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PODCAST:  Click on the icon above to listen to Attorney Steve discuss preliminary and permanent injunctions and TRO and FRCP 65.   Feel free to share our podcast on your social media networks.

Legal test to obtain an injunction to stop intellectual property infringement

Generally, there are several things a copyrights holder must show to obtain a court ordered injunction to stop willful copyright infringement.  In one infringement case the court noted:

“A plaintiff seeking preliminary injunctive relief must demonstrate “either a likelihood of success on the merits and the possibility of irreparable injury 


that serious questions going to the merits were raised and the balance of hardships tips sharply in its favor.” Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1517 (9th Cir.1992).  See also Cadence Design Sys., Inc. v. Avant! Corp., 125 F.3d 824, 826 (9th Cir. 1997).

Another Court in the Northern District of California put it this way:

“Federal Rule of Civil Procedure 65 permits the issuance of a preliminary injunction to preserve the positions of the parties until a full trial can be conducted. LGS Architects, Inc. v. Concordia Homes, 434 F.3d 1150, 1158 (9th Cir.2006).  When a party is seeking a preliminary injunction, he or she must show either:

(1) a combination of probable success on the merits and the possibility of irreparable injury,


(2) that serious questions are raised and the balance of hardships tips sharply in favor of the moving party. These standards ‘are not separate tests but the outer reaches of a single continuum.' ” See Stuhlbarg Int'l Sales Co. v. John D. Brush & Co., Inc., 240 F.3d 832, 839–40 (9th Cir.2001).  These two formulations represent two points on a sliding scale in which the required degree of irreparable harm increases as the probability of success decreases.” Roe v. Anderson, 134 F.3d 1400, 1402 (9th Cir.1998) (citation omitted). “An irreparable harm is one that cannot be redressed by a legal or equitable remedy following trial.”, LLC v. Ironport Sys., 323 F.Supp.2d 1037, 1050 (N.D.Cal.2004).  Iconix, Inc. v. Tokuda, 457 F. Supp. 2d 969, 974–75 (N.D. Cal. 2006).

So this sets forth in general what the federal court judge will be looking for in ruling on the injunction motions.

A closer look at the four factors to get an injunction

Here are some other cases that have discussed the proof factors for federal court injunctions.

A.  Likelihood of success on the merits of the case: The party seeking an injunction must convince the federal court judge that they are “likely to succeed” on the “merits” of the causes of action they have alleged in the complaint.  This does NOT mean they have to PROVE they will ultimately win the case in a jury trial, but they must convince the judge or magistrate that they are “likely” to prevail.   If they can do this, the injunction may issue, UNLESS the Defendant has an obvious legal defense that they can show (in other words, the Defendant can show they are likely or prevail in the case on a recognized affirmative defense such as “ fair use” under the copyright laws and the Plaintiff cannot convince the court that the defense is inapplicable.  Here is one case that discussed this “ shifting burden of proof:”

“Because Perfect 10 has the burden of showing a likelihood of success on the merits, the district court held that Perfect 10 also had the burden of demonstrating a likelihood of overcoming Google's fair use defense under 17 U.S.C. §107. Perfect 10, 416 F.Supp.2d at 836–37. This ruling was erroneous. At trial, the defendant in an infringement action bears the burden of proving fair use.” See Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 590, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994).

“Because “the burdens at the preliminary injunction stage track the burdens at trial,” once the moving party has carried its burden of showing a likelihood of success on the merits, the burden shifts to the non-moving party to show a likelihood that its affirmative defense will succeed.  Accordingly, once Perfect 10 has shown a likelihood of success on the merits, the burden shifts to Google to show a likelihood that its affirmative defenses will succeed.  See Perfect 10, Inc. v., Inc., 508 F.3d 1146, 1158 (9th Cir. 2007).

So burdens of proof are always important issues when parties seek to obtain and defend against injunctions and TRO's. B.  Possibility of Irreparable Injury Another factor in injunction hearings is “irreparable injury.”  The party claiming infringement needs to be able to show they will be irreparably harmed if the injunction doesn't issue (ex, a defendant will continue making profits from use of Plaintiff's copyrighted music, films, video, or software).  If you can show likelihood of success on the merits of the case, this might raise a “rebuttable presumption” that the infringing acts will cause irreparable harm. This concept was discussed in other federal court cases. “Since the Court finds that Adobe has not made a showing of a likelihood of success on the merits of its copyright claim, no presumption of irreparable harm is raised.  Parties seeking pretrial injunctive relief must demonstrate they will be exposed to some “significant risk of irreparable injury” if such relief is denied. Before a preliminary injunction may issue, the court must identify the harm which a preliminary injunction might cause the defendant and balance it against plaintiff's threatened injury.”  Armstrong v. Mazurek, 94 F.3d 566, 568 (9th Cir.1996). “Adobe contends it will suffer irreparable injury for the following reasons: dilution of customer goodwill, price erosion of Adobe software due to SoftMan's resale activities, the Adobe name will be tarnished and consumers may stop acquiring Adobe products, loss of annual sales, and dilution of trademarks. Adobe also contends that it is faced with a “Hobson's Choice” between upholding distribution agreements and denying consumers Adobe services (satisfying Adobe's “legitimate” distribution partners at the expense of customer goodwill), or providing services to consumers holding so-called “pirated” products.” “Irreparable injury and probability of success on the merits “are not really two entirely separate tests, but that they are merely extremes of a single continuum.” Benda v. Grand Lodge of Int'l Ass'n of Machinists & Aerospace Workers, 584 F.2d 308, 315 (9th Cir.1978). In this case, the Court finds that Adobe has not demonstrated probable success on the merits of its copyright claim. Nor has Adobe made a showing of irreparable injury sufficient to obtain preliminary injunctive relief. Adobe presents no specific evidence relating to dilution of customer goodwill or the direct loss of annual sales.

There must be evidence of actual injury to support claims of “irreparable injury.” Speculative losses are insufficient. Goldie's Bookstore, Inc. v. Superior Court, 739 F.2d 466, 472 (9th Cir.1984); Caribbean Marine Serv. Co. v. Baldrige, 844 F.2d 668, 674 (9th Cir.1988). Significantly, Adobe also admits that it discovered SoftMan's allegedly unauthorized distribution of Adobe software in November 1997. This delay further supports the Court's conclusion that Adobe has failed to demonstrate immediate threatened harm. The Court finds that Adobe has failed to show that it will suffer irreparable injury in the absence of preliminary injunctive relief. C.  Serious questions as to the merits (and a “fair chance” at success on the merits) This “serious questions” prong of the injunction test was discussed in another case:

“Under the sliding scale theory, a party seeking an injunction “need not demonstrate that he will succeed on the merits, but must at least show that his cause presents serious questions of law worthy of litigation.” Topanga Press, Inc. v. City of Los Angeles, 989 F.2d 1524, 1528 (9th Cir.1993).

“Serious questions” are those which are “substantial, difficult, and doubtful, as to make them fair ground for litigation and thus for more deliberative investigation.” Senate of State of Cal. v. Mosbacher, 968 F.2d 974, 977–78 (9th Cir.1992) (citing Gilder v. PGA Tour, Inc., 936 F.2d 417, 422 (9th Cir.1991)); Republic of the Philippines v. Marcos, 862 F.2d 1355, 1362 (9th Cir.1988) (‘serious questions' refers to questions which cannot be resolved one way or the other at the hearing on the injunction and as to which the court perceives a need to preserve the status quo lest one side prevent resolution of the questions or execution of any judgment by altering the status quo.”). Although the serious questions posed by the movant “need not promise a certainty of success, nor even a probability of success,” he or she must nevertheless demonstrate a “fair chance of success” on the merits. Gilder, 936 F.2d at 422.

“Finally, (as also noted below) in cases where the public interest may be affected, the court must consider the public interest as a factor in balancing the hardships. Harris v. Bd. of Supervisors, 366 F.3d 754, 760, 766 (9th Cir.2004) (citing Fund for Animals, Inc. v. Lujan, 962 F.2d 1391, 1400 (9th Cir.1992)).  See Iconix, Inc. v. Tokuda, 457 F. Supp. 2d 969, 975 (N.D. Cal. 2006).

D. Balance of Hardships The balance of hardships may also be analyzed: “In deciding whether to grant a preliminary injunction, the Court may also balance the potential hardships that each party may suffer if the Court grants or denies Adobe's motion. See International Jensen, Inc. v. Metrosound U.S.A., 4 F.3d at 819, 827 (9th Cir.1993). Given that neither Adobe nor SoftMan has submitted any evidence of economic loss except broad, general statements, the Court considers the balance of hardships to be a neutral factor.

One other factor some courts analyze is the “Public interest” in granting or denying the injunction.

E. Public Interest Another common thing that pops up when a party seeks an injunction is the weighing and balancing of the “public interest.” One federal court case addressed this issue: “Traditionally, courts have looked to public policy considerations in determining whether to grant preliminary injunctive relief. Chalk v. United States Dist. Court, Cent. Dist. of Cal., 840 F.2d 701, 711 (9th Cir., 1988) (“ We recognize that the public interest is one of the traditional equitable criteria which a court should consider in granting injunctive relief.”).

In this case, the Court finds that important public policy considerations weigh on each side.  The Court finds that the provisions contained in Adobe's EULA purport to diminish the rights of customers to use the software in ways ordinarily enjoyed by customers under copyright law.

Therefore, these restrictions appear to be inconsistent with the balance of rights set forth in intellectual property law. Commentators have noted that the arguments for enforcing this balance are particularly persuasive in the context of shrinkwrap licenses because the balance of rights in intellectual property law is already tilted heavily in favor of the intellectual property owner.

“The only countervailing forces favoring users are those rights specifically granted to users by federal law. In this context more than any other, therefore, it is justifiable to fear that removing or eviscerating those user rights may bring the whole edifice crumbling down.” “This is an area fraught with conflicting policy considerations. Software publishers are desirous of augmenting the protections offered under copyright law. 

In this case, through the use of licensing, Adobe seeks a vast and seemingly unlimited power to control prices and all channels of distribution. On the other hand, in the absence of copyright law violations, the market can often best regulate prices and all subsequent transactions that occur after the first sale. Sound policy rationales support the analysis of those courts that have found shrinkwrap licenses to be unenforceable.

A system of “ licensing” which grants software publishers this degree of unchecked power to control the market deserves to be the object of careful scrutiny.  For the reasons stated above, the Court finds that this factor weighs in favor of the counter-defendants. See SoftMan Prod. Co., LLC v. Adobe Sys., Inc., 171 F. Supp. 2d 1075, 1089–91 (C.D. Cal. 2001).

Attorney Steve describes the legal process for seeking injunctions in California

VIDEO:  Click on the photo above to watch an older video I did discussing the steps to obtaining an injunction.  While it relates to a real estate case and not intellectual property, the steps are essentially the same.   Make sure to click on the Red “V” for Victory to SUBSCRIBE to our fast growing youtube legal channel.  As we like to say “ be smarter than your friends.”

Permanent Injunctions

A permanent injunction is what a prevailing Plaintiff might want to seek at the end of a federal court case.  This would usually require that the Plaintiff win the case on the merits.  As the 9th circuit court noted in MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 520 (9th Cir. 1993):

“As a general rule, a permanent injunction will be granted when liability has been established and there is a threat of continuing violations. See, National Football League v. McBee & Bruno's, Inc., 792 F.2d 726, 732 (8th Cir.1986); 3 Nimmer on Copyright § 14.06[B] at 14–88.

However § 502(a) of the Copyright Act authorizes the court to “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).  While there has been no showing that Peak has actually loaned out any MAI software, the threat of a violation is clear as Peak has MAI computers in its loaner inventory.

The permanent injunction is upheld as it relates to this issue.” In another case involving music infringement, a federal court ruled: “Finally, Plaintiffs ask the Court to permanently enjoin Defendants from infringing in any manner the copyrighted musical compositions licensed by BMI.  

A court may grant “temporary and final injunctions on terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502(a). A permanent injunction is especially appropriate where a threat of continuing infringement exists.' See  TLM Investments, P.L.C., (quoting Broadcast Music, Inc. v. Niro's Palace, Inc., 619 F.Supp. 958, 963 (N.D.Ill.1985)).  In this case, there is a substantial threat of continuing infringement. As in TLM Investments and Niro's Palace, Norton's “provided unauthorized performances of copyrighted musical compositions on its premises after receiving oral and written notices of infringement and demands to stop such infringement from BMI.  

Defendants wilfully disregarded Plaintiffs' copyrights. Because Defendants received numerous calls, letters, and cease and desist notices from BMI but did not cease infringement, a permanent injunction is warranted to prevent future copyright violations. See TLM Investments (entering permanent injunction enjoining defendants from infringing on plaintiff's copyrighted musical compositions).  See  Broad. Music, Inc. v. McDade & Sons, Inc., 928 F. Supp. 2d 1120, 1136 (D. Ariz. 2013).

What is a Website Injunction under DMCA 512(j)?

A website blocking injunction is a order restraining the service provider from providing access to a subscriber or account holder of the service provider's system or network who is engaging in. The Digital Millennium Copyright Act (DMCA) provides safe harbor to service providers who comply with certain requirements, including implementing a policy that provides for the termination of accounts of repeat copyright infringers. In order to obtain a website blocking injunction under the DMCA, a copyright owner must send a notice to the service provider that includes

(i) identification of the copyrighted work(s) that are being infringed;

(ii) identification of the infringing material;

(iii) contact information for the copyright owner;

(iv) a statement that the copyright owner has a good faith belief that use of the infringing material is not authorized by the copyright owner, its agent, or the law; and (v) a statement, made under penalty of perjury, that all of the information in the notice is accurate and that the copyright owner is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

After receiving such a notice, if the service provider does not promptly remove or disable access to the infringing material, then the copyright owner may send a notice seeking a court order under 17 U.S.C. 512(j) ordering the service provider to block subscriber access to the infringing material.

A court may grant such an injunction if it finds, inter alia, that “the infringement or activity is occurring through” the service provider's system or network and “the infringing material resides on a server controlled or operated by” the service provider. Once such an injunction is obtained, it can be served on any internet service providers within jurisdiction who are then required to take steps to block access to the infringing material. Website blocking injunctions have been used effectively to combat online piracy and other types of online infringement, and are an important tool for copyright owners in protecting their rights online.

We can help your company obtain such an injunction.

Sample Copyright Injunction Language

What should the proposed order for the granting of the injunction say?  Well, that depends upon the facts and circumstances of your case.  Here is one to consider pulled from a photo infringement case:

"Plaintiff seeks a permanent injunction, pursuant to 17 U.S.C. §502, restricting Defendant and its agents, servants, employees, attorneys, successors, licensees, partners, assigns, and all those acting directly or indirectly in concert or participation with any of them, from infringing, by any means and inducing copyright infringement by any means of any of the exclusive rights of Plaintiff and its affiliates, under the Copyright Act, including but not limited to direct copyright infringement, inducement to infringe copyrights, contributory copyright infringement, and vicarious copyright infringement."

Top 10 things to consider regarding obtaining injunctions under Federal Rule of Civil Procedure 65

FRCP rule 65 injunction law sets for the procedures for obtaining a temporary restraining order (“TRO”) and preliminary and permanent injunctions.  In general, here are some things to consider:

  1.  File your lawsuit (complaint) setting forth your dispute including all claims / causes of action (ex. could be a right of publicity case, software infringement, illegal use of your music for mixing, etc.)
  2. If you need an immediate (emergency) injunction, you might want to consider seeking a “temporary” restraining order, which is a short term injunction.  You always want to consider whether or not to give notice to the opposing party.
  3. The legal threshold for getting a TRO might be slightly lower as you might not have another party opposing you.
  4. One a TRO issues, this would have to be served on opposing counsel or parties.
  5. At that point, a hearing on the issue of whether or not a preliminary injunction should issue would be set.  The parties would typically be allowed to file briefs and motions with memorandum of law.
  6. The judge would hear all arguments of the the parties and consider any evidence that might exist.
  7. After hearing all the arguments and evidence, the court may “dissolve” the TRO and grant the preliminary injunction, or could simply deny the request for preliminary injunction.
  8. If the preliminary injunction is granted, the court would either sign the proposed order that was submitted by the moving party, or the judge could completely re-write, limit, or modify the proposed order.
  9. If a preliminary injunction is granted, this will be in effect until the close of the case.
  10. The Court may also order that the moving party post a “bond” in case the merits of the case prove the moving party was wrong, the injunction should not have issued, and damages were caused to the non-moving party.

These are the main things to consider.  You always want to check for any other local rules, or rules of the judge that may apply.  Federal court judges have wide latitude in how they run their courts, so you need to check to see if any special rules apply in addition to FRCP Rule 65.

Contact a California copyright injunction attorney

We can help copyright holders (ex. music companies, bands, singers, songwriters, software publishers, recording houses, movie and film companies, authors and others) seek TRO's, preliminary and permanent injunctions under F.R.C.P. 65.  

We can also help companies, businesses and individuals defend against injunctions and infringements in federal courts across the United States, subject to local rules.  

Call us for a no cost initial consultation at (877) 276-5084.  We have appeared in over 400 federal court cases.

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337


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