Perfect 10 Inc. v. Google Inc.

• Decision Date: 03 August 2011
• Docket Number: No. 10–56316.,10–56316.
• Citation: 653 F.3d 976,2011 Daily Journal D.A.R. 11688,2011 Copr.L.Dec. P 30111,39 Media L. Rep. 2129,99 U.S.P.Q.2d 1533,11 Cal. Daily Op. Serv. 9771
• Parties: PERFECT 10, INC., Plaintiff–counter–defendant–Appellant,v.GOOGLE, INC., a corporation, Defendant–counter–claimant–Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

653 F.3d 976

2011 Copr.L.Dec. P 30,111

99 U.S.P.Q.2d 1533

39 Media L. Rep. 2129

11 Cal. Daily Op. Serv. 9771

2011 Daily Journal D.A.R. 11,688

PERFECT 10, INC., Plaintiff–counter–defendant–Appellant,

v.GOOGLE, INC., a corporation, Defendant–counter–claimant–Appellee.

No. 10–56316.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted April 11, 2011.Filed Aug. 3, 2011.

David Schultz (argued) and Jeffrey Neil Mausner, Law Offices of Jeffrey N. Mausner, Woodland Hills, CA, for appellant Perfect 10, Inc.Andrew H. Schapiro (argued), Mayer Brown, LLP, New York, NY; Michael T. Zeller, Quinn Emanuel Urquhart & Sullivan, LLP, Los Angeles, CA; Bradley R. Love, Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA; and Rachel Herrick Kassabian, Margret M. Caruso, and Andrea Pallios Roberts, Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, for appellee Google, Inc.Nancy E. Wolff, Cowan, DeBaets, Abrahams & Sheppard, New York, NY, for amici curiae Picture Archive Council of America, Inc., et al.Joseph C. Gratz, Durie Tangri LLP, San Francisco, CA, for amici curiae Chilling Effects Clearinghouse Leaders.Appeal from the United States District Court for the Central District of California, A. Howard Matz, District Judge, Presiding. D.C. No. 2:04–cv–09484–AHM–SH.Before: ALEX KOZINSKI, Chief Judge, MICHAEL DALY HAWKINS and SANDRA S. IKUTA, Circuit Judges.

OPINION

IKUTA, Circuit Judge:

In this appeal, we once again consider a request by Perfect 10, Inc. for a preliminary injunction against Google, Inc. See Perfect 10, Inc. v. Amazon.com, Inc. ( Perfect 10 II ), 508 F.3d 1146 (9th Cir.2007). Because Perfect 10 has not demonstrated that it would likely suffer irreparable harm in the absence of a preliminary injunction, we affirm the district court's denial of that relief.

I

This appeal is the latest installment in a legal saga of several years' duration. That history is recounted elsewhere, see Perfect 10 II, 508 F.3d 1146, so we focus here on only those facts material to the questions before us now. Perfect 10 creates (and copyrights) photographic images of nude models for commercial distribution. For several years, it featured them in a now- defunct magazine, “PERFECT 10”; more recently, it began offering them for viewing on a password-protected, paid-subscription website, “perfect10.com.” Perfect 10's subscription website generates revenue from subscribers who pay a monthly fee to view the copyrighted images in a “members' area,” which members access through a unique username/password combination. Perfect 10 v. Google, Inc. ( Perfect 10 I ), 416 F.Supp.2d 828, 832 & n. 3 (C.D.Cal.2006). Perfect 10 has generated virtually all of its revenue from these copyrighted images. Id. at 832.

Google operates numerous web-based services. Chief among them is its search engine, which uses an automated software program, known as a web crawler, to obtain copies of publicly available webpages and images for use in its search index. Google's servers store the text of a web page in its cache, Perfect 10 II, 508 F.3d at 1156 & n. 3. In addition to its search engine, Google offers a service called Blogger, which hosts blogs created by users on Google's server. Blogger account holders may upload images from the web onto Google's server in order to post them on their blogs, or may use a hyperlink to images hosted on other servers.

In order to obtain the protections of the Digital Millennium Copyright Act (DMCA), Google has developed a copyright-infringement notification policy for each of these Internet services. Under the DMCA, a provider of online services (such as Google) must, among other things, designate an agent to receive a notification of claimed infringement (often referred to as a “takedown notice”) in order to get certain safe harbor protections. Under Google's notification policies, the take-down notice must include, among other things, the URL for the infringing material. Google forwards the takedown notices it receives to the website “chillingeffects.org,” a nonprofit, educational project run jointly by the Electronic Frontier Foundation and various law schools, which posts such notices on the Internet. As a result, even if Google removes Perfect 10's images from its search results, a person can still find the URL for the allegedly infringing images on chillingeffects.org.

Following our remand in Perfect 10 II, Perfect 10 once again moved for a preliminary injunction against Google. Perfect 10 argued that it was entitled to an injunction because Google's web and image search and related caching feature, its Blogger service, and its practice of forwarding Perfect 10's takedown notices to chillingeffects.org constituted copyright infringement. Additionally, Perfect 10 argued that it was entitled to an injunction based upon Google's alleged violation of the rights of publicity assigned to Perfect 10 by some of its models.

The district court rejected each of these arguments and denied Perfect 10's motion for preliminary injunctive relief. In doing so, the court held that Perfect 10 had not shown that it was likely to suffer irreparable harm in the absence of such relief, and that it had failed to satisfy any of the other requirements for a preliminary injunction. The district court also resolved motions by Google for partial summary judgment, and held that Google was entitled to safe harbor protection under the DMCA for its caching feature, its Blogger service and, in part, its web and image search. On appeal, Perfect 10 claims that the district court erred in denying its motion for a preliminary injunction and also seeks review of the district court's summary judgment order on the DMCA issues, arguing that the latter order is inextricably intertwined with the company's request for injunctive relief.

II

We begin by considering whether the district court erred in denying Perfect 10's request for preliminary injunctive relief. “A plaintiff seeking a preliminary injunction must establish [ (1) ] that he is likely to succeed on the merits, [ (2) ] that he is likely to suffer irreparable harm in the absence of preliminary relief, [ (3) ] that the balance of equities tips in his favor, and [ (4) ] that an injunction is in the public interest.” Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 129 S.Ct. 365, 374, 172 L.Ed.2d 249 (2008). We review the district court's determination that the plaintiff satisfied each of these four factors for abuse of discretion. Park Vill. Apartment Tenants Ass'n v. Mortimer Howard Trust, 636 F.3d 1150, 1158–59 (9th Cir.2011). In doing so, our review is “limited and deferential.” Am. Trucking Ass'ns v. City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir.2009) (quoting Lands Council v. Martin, 479 F.3d 636, 639 (9th Cir.2007)) (internal quotation marks omitted).

In explaining how it meets the four-factor test for preliminary injunctive relief, Perfect 10 argues primarily that because it has made a strong showing of likely success on the merits of its copyright claims, a court must presume it will suffer irreparable harm. In making this argument, Perfect 10 relies on a long line of cases, beginning with Apple Computer, Inc. v. Formula International, Inc., 725 F.2d 521 (9th Cir.1984), where we held that “[a] showing of a reasonable likelihood of success on the merits in a copyright infringement claim raises a presumption of irreparable harm” for purposes of a preliminary injunction. Id. at 525. We have repeated and relied on this rule numerous times in the nearly three decades since Apple Computer. See, e.g., LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150, 1155–56 (9th Cir.2006); Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1119 (9th Cir.1999); Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1174 (9th Cir.1989); Rodeo Collection, Ltd. v. W. Seventh, 812 F.2d 1215, 1220 (9th Cir.1987).

These cases, however, all predate eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006), which indicated that an injunction in a patent infringement case may issue only in accordance with “traditional equitable principles” and warned against reliance on presumptions or categorical rules. Id. at 393, 126 S.Ct. 1837. In eBay, the Supreme Court considered a decision by the Federal Circuit holding that MercExchange was entitled to a permanent injunction against eBay. Id. at 391, 126 S.Ct. 1837. MercExchange had prevailed at trial in its patent infringement action against eBay, but the district court concluded that the company's willingness to license its patents made it categorically unable to show irreparable harm from copyright infringement. Id. at 390, 393, 126 S.Ct. 1837. The Federal Circuit reversed, applying its rule “that a permanent injunction will issue once infringement and validity have been adjudged.” Id. at 393–94, 126 S.Ct. 1837 (quoting MercExchange, LLC v. eBay, Inc., 401 F.3d 1323, 1338 (Fed.Cir.2005)) (internal quotation marks omitted).

The Supreme Court reversed, holding that “the traditional four-factor framework that governs the award of injunctive relief” applies to “disputes arising under the Patent Act.” Id. at 394, 126 S.Ct. 1837. The use of presumptions or categorical rules in issuing injunctive relief would constitute “a major departure from the long tradition of equity practice,” and “should not be lightly implied.” Id. at 391, 126 S.Ct. 1837 (quoting Weinberger v. Romero–Barcelo, 456 U.S. 305, 320, 102 S.Ct. 1798, 72 L.Ed.2d 91 (1982)). The Court detected no evidence in the language of the Patent Act that Congress “intended such a departure” from traditional equity practice, id. at 391–92, 126 S.Ct. 1837, rejecting the argument that courts could find congressional intent to depart from the four-factor framework in statutory language giving patent holders a “right to exclude others from making, using, offering for sale, or selling the invention,” id. at 392, 126 S.Ct. 1837 (quoting 35...