Law360
In light of the U.S. Supreme Court decision to set aside a permanent injunction granted in eBay Inc.’s patent battle, many in the intellectual property law world are now watching to see if and how the opinion’s emphasis on tying an injunction to public interest might influence two high-profile copyright cases – one against YouTube LLC and one over Google Inc.’s book search project.
The high court’s 2006 eBay ruling, asserting that courts must consider an injunction’s effects on the public good before granting one automatically, has already influenced a number of lower court decisions on patent cases.
But its effect on copyright cases, while made clear in the Supreme Court opinion, has been slower to translate in the district courts, sparking interest in whether judges will consider the public benefit of YouTube and the Google book project when ruling on claims against them.
"I think there's no question the public interest should be looked at if the infringement came up,” said Edward Lee, associate professor of law at Ohio State University’s Moritz College of Law. “The more pressing issue is, it may be that the district courts have not focused as much on the copyright context in following the eBay case to the extent that they may be more reluctant to give an injunction.”
The eBay decision, though directed at a patent case, essentially stated that there is no reason to treat copyright disputes differently from patent cases. Reaffirming its 1994 ruling in the fair-use case Campbell v. Acuff-Rose Music, the Supreme Court found that when certain infringing activity seems to serve a public good, district courts have the authority to either limit an injunction or reject it altogether.
In the two and a half years since the ruling, there has only been one copyright case in which a judge decided not to grant an injunction despite finding infringement.
Still, while the eBay case is taking time to seep into copyright cases, it is spurring judges to consider the public good, attorneys said. The recent ruling over a proposed Harry Potter encyclopedia illustrated this slow change.
In that case, the U.S. District Court for the Southern District of New York decided on Sep. 8 to ban the lexicon and award Harry Potter author J.K. Rowling $6,750 in damages. The opinion did acknowledge that the lexicon could be deemed transformative, which fair-use permits, but found that it lifted too much of the copyrighted work.
Turning to the YouTube and Google book project cases, IP attorneys are now waiting to see whether the judges will take the public benefit these services provide into account when deciding if there is infringement and whether a permanent injunction is warranted.
“The eBay decision brings the idea of the public interest over to the copyright arena,” said Daniel Venglarik, a shareholder in the IP group at Munck Carter LLP.
“For example, the YouTube claim is based on the sharing of copyrighted material through the YouTube site. Well, the YouTube site has other noninfringing material, so that, I think, is where one of the public interest factors may be served by not enjoining YouTube's practices," he said.
In the case, Viacom Inc. is demanding $1 billion in damages and an injunction against Google, YouTube’s owner, for willfully trampling its copyrights and turning a profit from YouTube users who upload protected content onto the popular Web site.
Google has countered that services such as YouTube, which posts hundreds of thousands of free videos online, provide the “free” and “authorized” access to libraries of information that the Digital Millennium Copyright Act was designed to protect.
The DMCA, passed in 1998, diminishes the liability that Internet service providers could face for providing information online but requires them to remove apparently infringing material from their Web sites – something YouTube has willingly done when IP owners inform it of the breach.
The question of whether YouTube will have to fight against an injunction still depends on whether it is found to infringe. The public benefit that YouTube provides could, however, come into play even as the judge considers the company’s DMCA claim, said James Gibson, director of the Intellectual Property Institute.
"In the Viacom v. Google case, that's balanced between the public interest and private interest, and it's taken care of by the DMCA,” Gibson said.
Comparing YouTube’s case to the copyright case against the online music file-sharing service Napster, he added: "The degree to which the material up there is predominantly infringing is a big issue in these cases. YouTube has a much better shot at showing they have complied with the DMCA, which should give them immunity to get anything but a limited injunction.”
Google has been battling a 3-year-old lawsuit by a group of publishers who claim that the Internet giant’s plans to scan and digitally share millions of books oversteps their copyright protection. Google has contended that the fair-use doctrine shields the project from infringement charges.
“The defense in the Google book case is pretty much fair use, that they're trying to create a virtual library of all these books and that certainly has a lot of benefit,” Venglarik said. “I guess the issue becomes, is there enough of a possibility of some public interest that a court would find against issuing an injunction?"
While the courts are likely to consider the benefits that YouTube and the Google book project can bring, Google may have a tough time arguing that the general good its services provide is enough to overcome injunctions, attorneys said.
"What you see if you look at copyright cases generally, when judges consider public good, they don't necessarily look to see, is this a product that would generally benefit the public in a generalized sense?” said David Leichtman, a New York-based IP partner at Lovells LLP. “They look at, are there third parties that would be harmed by an injunction?”
This was evident in the Harry Potter lexicon case, in which Rowling gave emotional testimony about the impact that the encyclopedia had on her creative drive, Leichtman noted. The judge therefore found that despite the general benefit that a lexicon might bring, the injunction was appropriate.
As a result, if Google fails to prove that YouTube is eligible for DMCA protection and that its book project is allowed under fair use, the company could struggle to fight off an injunction, attorneys said. Post-eBay, however, Google could convince the judges to at least limit the injunctions, they said.
"In the YouTube and Google book project cases, the argument is that there's a generalized benefit to the public if these products are allowed to proliferate, but there's not any specific party that is going to be harmed,” Leichtman said.
However, he added, "The courts will have a lot of discretion after eBay to specifically tailor the injunctions to what the perceived public interest is."