Salinger v. Colting

In a case brought by J.D. Salinger, the Second Circuit holds that the four-factor test as to when an injunction may issue, announced in the context of a permanent injunction in a patent infringement case in the U.S. Supreme Court’s decision in eBay, Inc. v. MercExchange, L.L.C., applies with equal force to preliminary injunctions in copyright infringement cases and that the court must not presume that the plaintiff will suffer irreparable harm.

In 1951, plaintiff J.D. Salinger published The Catcher in the Rye (“Catcher”). Catcher stands as one of the most popular and most influential works of American fiction from the later half of the twentieth century. To date it has sold over 35 million copies and has been the subject of a tremendous amount of literary criticism and comment. Catcher is the self-narrated story of its protagonist, a disaffected teenage boy named Holden Caulfield, who, after being expelled from prep school, wanders around New York City for several days before returning home. Despite the fact that he did not publish after 1965, Salinger maintained notoriety until his death in 2010, both for his reclusive lifestyle and for his litigious defense of his published works. Salinger almost never authorized adaptations of his works and brought several legal actions to prevent unauthorized adaptations.

Defendant Fredrik Colting, writing under the pen name John David California, authored 60 Years Later: Coming Through the Rye (“Coming Through the Rye”), and through his own publishing company, defendant Windupbird Publishing, Ltd., published the book in England in May 2009. Colting did not seek Salinger’s permission to publish Coming Through the Rye. Colting’s book is framed as a sequel to Catcher, taking up the story of Holden Caulfield as the 76-year-old “Mr. C.” Coming Through the Rye also includes Salinger as a character, as well as Caulfield’s younger sister Phoebe, a character from Catcher. Throughout Coming Through the Rye, Mr. C/Holden Caulfield recounts events which occurred in Catcher and exhibits the famous character’s eccentricities noted in the earlier work. The back cover of Coming Through the Rye’s U.K. edition refers to the book as a sequel, and Colting promoted it as a sequel to Catcher in a 2009 interview in the Guardian.

With copies of Coming Through the Rye scheduled to be available in the U.S. in September 2009, Salinger commenced an action for copyright infringement and unfair competition in the Southern District of New York. The district court granted plaintiff’s motion for a preliminary injunction, preventing defendants from, among other things, promoting, selling, or distributing Coming Through the Rye in the U.S. Defendants appealed, and the U.S. Court of Appeals for the Second Circuit vacated the district court’s order and remanded the matter for further proceedings consistent with the U.S. Supreme Court’s decision in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

As a general rule, a court must find that a party requesting injunctive relief will or has suffered irreparable harm without the injunction. The circuit court found that the district court erred in granting the preliminary injunction because, having found Salinger was likely to succeed on the merits, the district court presumed that Salinger would suffer irreparable harm. Although the presumption of irreparable harm based upon a finding of likely success on the merits of a copyright infringement claim was supported by longstanding Second Circuit precedent, the circuit court found that such precedent is undermined by the U.S. Supreme Court’s eBay decision. In eBay, the Supreme Court held that both the district court below and the Federal Circuit applied incorrect standards, utilizing “broad classifications,” contrary to traditional equitable principles, to the grant of a permanent injunction in a patent infringement case. Pursuant to eBay, district courts may not presume the irreparable harm necessary to grant an injunction, but instead must undertake their analysis on a case-by-case basis, examining each of the four factors set forth by the Supreme Court in its decision. Specifically, “plaintiffs must show that, on the facts of their case, the failure to issue an injunction would actually cause irreparable harm.”

Holding that eBay applies with equal force to preliminary injunctions in copyright infringement cases as it does to permanent injunctions in patent infringement cases, the Second Circuit formulated its own version of eBay’s four-factor test for use in copyright cases. The circuit court held that, to prevail on a motion for a preliminary injunction in a copyright case, a 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) that the plaintiff is likely to suffer irreparable injury in the absence of an injunction; (3) that the balance of hardships tips in the plaintiff’s favor; and (4) that the public interest would not be disserved by the issuance of a preliminary injunction. Because the district court did not analyze each of the four factors as required by the Second Circuit’s decision, the circuit court vacated the grant of preliminary injunction and remanded for further proceedings consistent with eBay, affirming, in part, as to the district court’s finding of likely success on the merits.