Salinger v. Colting

     09-2878-cv
     Salinger v. Colting
 1
 2
 3                              UNITED STATES COURT OF APPEALS
 4
 5                                   FOR THE SECOND CIRCUIT
 6
 7
 8
 9                                          August Term, 2009
10
11    (Argued:       September 3, 2009                                    Decided:     April 30, 2010)
12
13                                        Docket No. 09-2878-cv
14
15
16
17     COLLEEN M. SALINGER and MATTHEW R. SALINGER, as Trustees of the J.D. Salinger
18                                 Literary Trust,
19
20                                          Plaintiffs-Appellees,
21
22                                                 – v. –
23
24         FREDRIK COLTING, writing under the name John David California, WINDUPBIRD
25           PUBLISHING LTD., NICOTEXT A.B., and ABP, INC., doing business as SCB
26                                  DISTRIBUTORS, INC,
27
28                                        Defendants-Appellants.
29
30
31
32   Before: CALABRESI, CABRANES, HALL, Circuit Judges.
33
34           Plaintiff-Appellee J.D. Salinger (now represented by trustees of the J.D. Salinger Literary
35   Trust) brought suit in the United States District Court for the Southern District of New York
36   (Deborah A. Batts, Judge) against Defendants-Appellants Fredrik Colting, Windupbird
37   Publishing, Ltd., Nicotext A.B., and ABP Inc. claiming copyright infringement and unfair
38   competition. Salinger alleged that Colting’s novel 60 Years Later Coming Through the Rye is
39   derivative of Salinger’s novel The Catcher in the Rye. The District Court granted Salinger’s
40   motion for a preliminary injunction; Defendants appeal. We hold that the Supreme Court’s
41   decision in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), which articulated a four-
42   factor test as to when an injunction may issue, applies with equal force to preliminary injunctions
43   issued on the basis of alleged copyright infringement. Therefore, although we conclude that the
44   District Court properly determined that Salinger has a likelihood of success on the merits, we
 1   vacate the District Court’s order and remand the case to the District Court to apply the eBay
 2   standard.
 3
 4                                        MARCIA BETH PAUL, Davis Wright Tremaine LLP,
 5                                        New York, N.Y., for Plaintiffs-Appellees.
 6
 7                                        EDWARD H. ROSENTHAL (Maura J. Wogan, Jessie F.
 8                                        Beeber, Cameron A. Myler, Marisa Sarig, on the brief),
 9                                        Frankfurt Kurnit Klein & Selz P.C., New York, N.Y., for
10                                        Defendants-Appellants.
11
12                                        David E. Kendall, Thomas G. Hentoff, Kannon K.
13                                        Shanmugam, Hannah M. Stott-Bumsted, Scott K.
14                                        Dasovich, Williams & Connolly LLP, Washington, DC, for
15                                        Amicus Curiae Motion Picture Association of America, Inc.
16                                        in support of Plaintiffs-Appellees.
17
18                                        Anthony T. Falzone, Julie A. Ahrens, Sarah H. Pearson,
19                                        Stanford Law School, Center for Internet & Society,
20                                        Stanford, CA; Rebecca Tushnet, Georgetown University
21                                        Law Center, Washington, DC; Jennifer M. Urban,
22                                        Samuelson Law, Technology & Public Policy Clinic,
23                                        University of California, Berkeley, School of Law,
24                                        Berkeley, CA, for Amici Curiae American Library
25                                        Association, Association of Research Libraries, Association
26                                        of College and Research Libraries, The Organization for
27                                        Transformative Works and the Right to Write Fund in
28                                        support of Defendants-Appellants.
29
30                                        George Freeman, Itai Maytal, The New York Times
31                                        Company, Legal Department, New York, NY (Barbara W.
32                                        Wall, Gannett Co., Inc., McLean, VA; Karen Flax, Tribune
33                                        Company, Chicago, IL, of counsel), for Amici Curiae The
34                                        New York Times Company, Gannett Co., Inc., and Tribune
35                                        Company in support of Defendants-Appellants.
36
37                                        Deepak Gupta, Gregory A. Beck, Public Citizen Litigation
38                                        Group, Washington, DC; Dan Hunter, New York Law
39                                        School, New York, NY, for Amicus Curiae Public Citizen,
40                                        Inc.
41
42
43
44   CALABRESI, Circuit Judge:




                                                    -2-
 1            Defendants-Appellants Fredrik Colting, Windupbird Publishing Ltd., Nicotext A.B., and

 2   ABP, Inc. appeal from an order of the United States District Court for the Southern District of

 3   New York (Deborah A. Batts, Judge) granting Plaintiff-Appellee J.D. Salinger’s1 motion for a

 4   preliminary injunction. The District Court’s judgment is VACATED and REMANDED.

 5                                                  BACKGROUND

 6                                                            I.

 7            Salinger published The Catcher in the Rye (hereinafter “Catcher”) in 1951. Catcher is a

 8   coming-of-age story about a disaffected sixteen-year-old boy, Holden Caulfield, who after being

 9   expelled from prep school wanders around New York City for several days before returning

10   home. The story is told from Holden’s perspective and in his “own strange, wonderful,

11   language.” Nash Burger, Books of the Times, N.Y. Times, July 16, 1951. Holden’s adventures

12   highlight the contrast between his cynical portrait of a world full of “phonies” and “crooks” and

13   his love of family, particularly his younger sister Phoebe and his deceased younger brother Allie,

14   along with his developing romantic interest in a childhood friend, Jane Gallagher. While his

15   affection for these individuals pushes him throughout the novel toward human contact, his

16   disillusionment with humanity inclines him toward removing himself from society and living out

17   his days as a recluse. He ultimately abandons his decision to live as recluse when Phoebe insists

18   on accompanying him on his self-imposed exile.

19            Catcher was an instant success. It was on the New York Times best-seller list for over

20   seven months and sold more than one million copies in its first ten years. Polly Morrice,

21   Descended from Salinger, N.Y. Times, March 23, 2008. To date it has sold over 35 million


     1
       We note that Plaintiff-Appellee J.D. Salinger died during the pendency of this appeal. In a February 18, 2010
     order, we granted the motion of Colleen M. Salinger and Matthew R. Salinger, trustees of the J.D. Salinger Literary
     Trust, to be substituted for Salinger as Appellees. For reasons of convenience, however, we will continue to refer to
     Salinger as “Plaintiff” or “Appellee” in this opinion.


                                                              -3-
 1   copies, Westberg Aff. ¶ 2, influenced dozens of literary works, and been the subject of “literally

 2   reams of criticism and comment,” Appellees’ Br. 5. Literary critic Louis Menand has identified

 3   Catcher “rewrites” as a “literary genre all its own.” 2 Holden at Fifty: “The Catcher in the Rye”

 4   and What It Spawned, The New Yorker, Oct. 1, 2001. The Holden character in particular has

 5   become a cultural icon of “adolescent alienation and rebellion,” Appellants’ Br. 7, a “moral

 6   genius” “who refuses to be socialized.” Menand, Holden at Fifty, supra.

 7           Inseparable from the Catcher mystique is the lifestyle of its author, Salinger. 3 Shortly

 8   after publishing Catcher, Salinger did what Holden did not do: he removed himself from society.

 9   Salinger has not published since 1965 and has never authorized any new narrative involving

10   Holden or any work derivative of Catcher. Westberg Aff. ¶¶ 15, 16. Other than a 1949 film

11   adaptation of one of his early short stories, Salinger has never permitted, and has explicitly

12   instructed his lawyers not to allow, adaptations of his works. Id. ¶ 16. He has, however,

13   remained in the public spotlight through a series of legal actions to protect his intellectual

14   property. Id. ¶ 19. Salinger has registered and duly renewed his copyright in Catcher with the

15   U.S. Copyright Office.

16                                                         II.

17           Defendant-Appellant Fredrik Colting wrote 60 Years Later: Coming Through the Rye

18   (hereinafter “60 Years Later”) under the pen name “John David California.” Colting published

19   60 Years Later with his own publishing company, Defendant-Appellant Windupbird Publishing,

20   Ltd., in England on May 9, 2009. Copies were originally scheduled to be available in the United



     2
       Menand includes among Catcher “rewrites” Sylvia Plath’s The Bell Jar (1963), Hunter S. Thompson’s Fear and
     Loathing in Las Vegas (1971), Jay McInerney’s Bright Lights, Big City (1984), and Dave Eggers’s A Heartbreaking
     Work of Staggering Genius (2000).
     3
       Salinger has conceded that Catcher is “sort of” autobiographical. Paul Alexander, Salinger: A Biography 177-78
     (1999).


                                                           -4-
 1   States on September 15, 2009. Westberg Aff. ¶ 2. Colting did not seek Salinger’s permission to

 2   publish 60 Years Later. Id. ¶ 3.

 3           60 Years Later tells the story of a 76-year-old Holden Caulfield, referred to as “Mr. C,”

 4   in a world that includes Mr. C’s 90-year-old author, a “fictionalized Salinger.” 4 The novel’s

 5   premise is that Salinger has been haunted by his creation and now wishes to bring him back to

 6   life in order to kill him. Unsurprisingly, this task is easier said than done. As the story

 7   progresses, Mr. C becomes increasingly self-aware and able to act in ways contrary to the will of

 8   Salinger. After a series of misadventures, Mr. C travels to Cornish, New Hampshire, where he

 9   meets Salinger in his home. Salinger finds he is unable to kill Mr. C and instead decides to set

10   him free. The novel concludes with Mr. C reuniting with his younger sister, Phoebe, and an

11   estranged son, Daniel.

12           In bringing this suit, Salinger underscores the extensive similarities between 60 Years

13   Later and Catcher. First, Mr. C is Holden Caulfield. Mr. C narrates like Holden, references

14   events that happened to Holden, and shares many of Holden’s notable eccentricities. Appellees’

15   Br. 8. Also, Mr. C’s adventures parallel those of Holden. Both characters leave an institution,

16   wander around New York City for several days, reconnect with old friends, find happiness with

17   Phoebe, and ultimately return to a different institution. Finally, within these broader structural

18   similarities, the novels contain similar scenes, such as a climactic carousel scene. Id. 9-10.

19           Salinger also cites Defendants’ efforts to market 60 Years Later as a sequel to Catcher.

20   The back cover of the United Kingdom edition describes the novel as “a marvelous sequel to one

21   of our most beloved classics.” Westberg Aff. ¶ 32. In a 2009 interview in the Guardian, Colting

22   describes 60 Years Later as “[j]ust like the first novel . . . . He’s still Holden Caulfield, and has a


     4
       Appellants concede that Mr. C is Holden Caulfield and that the unnamed author living in Cornish, New Hampshire
     is a “fictionalized Salinger.” Special App. 6-7 (Hr’g Tr. 16-17, June 17, 2009); Appellants’ Br. 10.


                                                           -5-
 1   particular view on things.” Alison Flood, Catcher in the Rye Sequel Published, but Not by

 2   Salinger, Guardian, May 14, 2009.

 3          Colting responds that 60 Years Later is not, and was never intended to be, a sequel to

 4   Catcher. Rather, Colting claims that it is a “critical examination of the character Holden and the

 5   way he is portrayed in [Catcher], the relationship between Salinger and his iconic creation, and

 6   the life of a particular author as he grows old but remains imprisoned by the literary character he

 7   created.” Appellants’ Br. 9-10. In support of this claim, Colting first emphasizes that a main

 8   character in 60 Years Later—Salinger himself, who narrates portions of the novel—does not

 9   appear in Catcher. Next, he explains how the Mr. C character evolves from a two-dimensional

10   and absurd version of a sixteen-year-old Holden into a real person with a rich life completely

11   apart from Catcher. Finally, he relies upon the declarations of two literary experts. Martha

12   Woodmansee, a professor of English and law at Case Western Reserve University, described 60

13   Years Later as a “work of meta-commentary” that “pursues critical reflection on J.D. Salinger

14   and his masterpiece [Catcher] just as do the articles that literary scholars conventionally write

15   and publish in scholarly journals, but it casts its commentary in an innovative ‘post modern’

16   form, specifically, that of a novel.” Woodmansee Decl. ¶ 9. Robert Spoo, a professor at the

17   University of Tulsa College of Law, found 60 Years Later to be a “sustained commentary on and

18   critique of Catcher, revisiting and analyzing the attitudes and assumptions of the teenaged

19   Holden Caulfield. In this respect, [60 Years Later] is similar to a work of literary criticism.”

20   Spoo Decl. ¶ 7.

21                                                   III.

22          On July 1, 2009, the District Court granted Salinger’s motion for a preliminary

23   injunction, barring Defendants from “manufacturing, publishing, distributing, shipping,




                                                      -6-
 1   advertising, promoting, selling, or otherwise disseminating any copy of [60 Years Later], or any

 2   portion thereof, in or to the United States.” Salinger v. Colting, 641 F. Supp. 2d 250, 269

 3   (S.D.N.Y. 2009). In doing so, it found that (1) Salinger has a valid copyright in Catcher and the

 4   Holden Caulfield character, (2) absent a successful fair use defense, Defendants have infringed

 5   Salinger’s copyright in both Catcher and the Holden Caulfield character, (3) Defendants’ fair use

 6   defense is likely to fail, and (4) a preliminary injunction should issue.

 7          The District Court disposed of the first two issues in its decision’s introduction.

 8   Defendants did not contest that Salinger has a valid copyright in Catcher. And regarding the

 9   Holden character, the Court stated that the character is “sufficiently delineated so that a claim for

10   infringement will lie.” Id. at 254. The Court elaborated on this finding in a June 17, 2009

11   hearing:

12           Holden Caulfield is quite delineated by word. It is a portrait by words. It is
13           something that is obviously seen to be of value since the effort is made [by
14           defendants] to recall everything that the character in the book does. . . . It is
15           difficult, in fact, to separate Holden Caulfield from the book.
16
17   Special App. 8 (Hr’g Tr. 24). Having found a valid copyright in both Catcher and the Holden

18   character, the Court concluded that “there is substantial similarity between Catcher and [60

19   Years Later], as well as between the character Holden Caulfield from Catcher, and the character

20   Mr. C from [60 Years Later], such that it was an unauthorized infringement of Plaintiff’s

21   copyright.” Salinger, 641 F. Supp. 2d at 254.

22          The District Court next concluded that Defendants’ fair use defense is likely to fail and

23   that therefore Salinger has established a prima facie case of copyright infringement. In its

24   consideration of the four statutory factors, the Court found that not one supports Defendants’

25   claim of fair use. Id. at 255.




                                                      -7-
 1          Regarding the first factor, the “purpose and character of the use,” 17 U.S.C. § 107(1), the

 2   Court held that 60 Years Later is not sufficiently “transformative” of Catcher, the Holden

 3   character, or Salinger, id. at 256 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579

 4   (1994)). One recognized form of transformative value, the Court noted, is parody, which

 5   requires a “reasonably discernable rejoinder or specific criticism of any character or theme.” Id.

 6   at 258. The Court found that 60 Years Later does not parody Catcher or the Holden character,

 7   and although it might parody Salinger, that is insufficient because according to the Supreme

 8   Court’s decision in Campbell, 510 U.S. at 580, parody must critique or comment on the work

 9   itself, Salinger, 641 F. Supp. 2d at 256-57.

10          The District Court similarly concluded that 60 Years Later does not have sufficient non-

11   parodic transformative value. Although 60 Years Later’s comment on Salinger himself “has

12   some transformative value,” id. at 262, the Court found that it is insufficient to render the work

13   as a whole transformative for three reasons. First, according to Colting’s public statements, his

14   purpose for writing 60 Years Later was not to comment on Salinger but to write a Catcher

15   sequel. Id. at 259-60 & n.3 Second, Salinger is a “minor or supporting character” in 60 Years

16   Later. Id. at 262. And third, the ratio of borrowed to transformative elements in Catcher is too

17   high to render the entire work transformative. Id. at 262-63. Finally, the Court observed that 60

18   Years Later’s commercial nature further cuts against Defendants on the “purpose and character

19   of the use” factor. Id. at 263.

20          Addressing the second and third factors, see 17 U.S.C. § 107(2)-(3), the District Court

21   held with respect to the “nature of the copyrighted work” that Catcher is a “‘creative expression

22   for public dissemination [that] falls within the core of the copyright’s protective purposes.’” Id.

23   at 263 (quoting Campbell, 510 U.S. at 586). It then found as to “the amount and substantiality of




                                                     -8-
 1   the portion used in relation to the copyrighted work as a whole” that Colting took “well more

 2   from Catcher, in both substance and style, than is necessary for the alleged transformative

 3   purpose of criticizing Salinger and his attitudes and behavior.” Id.

 4          The District Court went on to conclude that the fourth factor, “the effect of the use upon

 5   the potential market for or value of the copyrighted work,” 17 U.S.C. § 107(4), weighs “slightly”

 6   in Salinger’s favor, Salinger, 641 F. Supp. 2d at 267-68. The Court acknowledged that 60 Years

 7   Later is unlikely to impact the sales of Catcher itself, but it found that an unauthorized sequel

 8   might undermine the potential market for an authorized Catcher sequel, whether through loss of

 9   the novelty of a sequel or through confusion as to which of the sequels is the authorized one.

10   Although the Court recognized that Salinger has publicly disclaimed any intention of authorizing

11   a sequel, the Court noted that Salinger has the right to change his mind and, even if he has no

12   intention of changing his mind, there is value in the right not to authorize derivative works. Id.

13          Having made this determination, the District Court turned to whether a preliminary

14   injunction should issue. According to the Court:

15           Under Rule 65, to obtain a preliminary injunction a party must demonstrate: (1)
16           that it will be irreparably harmed if an injunction is not granted, and (2) either (a)
17           a likelihood of success on the merits or (b) sufficiently serious questions going to
18           the merits to make them a fair ground for litigation, and a balance of hardships
19           tipping decidedly in its favor.
20
21   Id. at 254 (quotation marks and alterations omitted). Given its findings, the Court deemed the

22   only remaining question to be whether Salinger had shown that he would be irreparably harmed

23   if an injunction was not granted. Because Salinger had established a prima facie case of

24   copyright infringement, and in light of how the District Court, understandably, viewed this

25   Court’s precedents, the District Court presumed irreparable harm without discussion. Id. at 268




                                                      -9-
 1   (citing ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 66 (2d Cir. 1996)). In a footnote,

 2   the Court stated:

 3            Although Defendants contend that eBay, Inc. v. MercExchange, 547 U.S. 388 . . .
 4            (2006), undermines the validity of this presumption, that case dealt only with the
 5            presumption of irreparable harm in the patent law context, and thus is not
 6            controlling in the absence of Second Circuit precedent applying it in the
 7            copyright context.
 8
 9   Id. at 268 n.6.

10                                                   DISCUSSION

11           We hold that, although the District Court applied our Circuit’s longstanding standard for

12   preliminary injunctions in copyright cases, our Circuit’s standard is inconsistent with the “test

13   historically employed by courts of equity” and has, therefore, been abrogated by eBay, Inc. v.

14   MercExchange, L.L.C., 547 U.S. 388, 390 (2006).

15                                                            I.

16           The Copyright Act of 1976 authorizes courts to “grant temporary and final injunctions on

17   such terms as [they] may deem reasonable to prevent or restrain infringement of a copyright.”

18   17 U.S.C. § 502(a). And, as the District Court stated, this Court has long issued preliminary

19   injunctions in copyright cases upon a finding of (a) irreparable harm and (b) either (1) likelihood

20   of success on the merits or (2) sufficiently serious questions going to the merits to make them a

21   fair ground for litigation and a balance of hardships tipping decidedly toward the party

22   requesting the preliminary relief. See, e.g., NXIVM Corp. v. Ross Inst., 364 F.3d 471, 476 (2d

23   Cir. 2004); ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 64 (2d Cir. 1996); Video

24   Trip Corp. v. Lightning Video, Inc., 866 F.2d 50, 52 (2d Cir. 1989); Wainwright Sec., Inc. v. Wall

25   St. Transcript Corp., 558 F.2d 91, 94 (2d Cir. 1977). 5


     5
      The overwhelming majority of decisions addressing injunction motions have focused solely on whether the
     plaintiff has shown a likelihood of success on the merits and irreparable harm, rather than on balancing the


                                                            -10-
 1           Thus, once a plaintiff establishes a likelihood of success on the merits, the only additional

 2   requirement is a showing that the plaintiff will be irreparably harmed if the preliminary

 3   injunction does not issue. And traditionally, this Court has presumed that a plaintiff likely to

 4   prevail on the merits of a copyright claim is also likely to suffer irreparable harm if an injunction

 5   does not issue. See, e.g., Richard Feiner & Co., Inc. v. Turner Entm’t Co., 98 F.3d 33, 34 (2d

 6   Cir. 1996); ABKCO Music, 96 F.3d at 64; Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d

 7   189, 192 (2d Cir. 1985).

 8           This Court has applied this presumption in several ways. Some decisions have

 9   interpreted the presumption to mean that a plaintiff likely to prevail on the merits does not need

10   to make a detailed showing of irreparable harm. See, e.g., Wainwright, 558 F.2d at 94 (“In

11   copyright cases, . . . if probable success—a prima facie case of copyright infringement—can be

12   shown, the allegations of irreparable injury need not be very detailed, because such injury can

13   normally be presumed when a copyright is infringed.”); Robert Stigwood Group Ltd. v. Sperber,

14   457 F.2d 50, 55 (2d Cir. 1972); Am. Metro. Enters. of N.Y. v. Warner Bros. Records, Inc., 389

15   F.2d 903, 905 (2d Cir. 1968); Rushton v. Vitale, 218 F.2d 434, 436 (2d Cir. 1955). Other cases

16   have discussed the presumption as though it applies automatically and is irrebuttable. See, e.g.,

17   Rice v. Am. Program Bureau, 446 F.2d 685, 688 (2d Cir. 1971) (“It is likewise well settled that

18   when a prima facie case is made out a preliminary injunction should issue without the showing

19   of irreparable injury . . . .”); Am. Code Co. v. Bensinger, 282 F. 829, 834 (2d Cir. 1922) (“In

20   cases of infringement of copyright, an injunction has always been recognized as a proper

21   remedy, because of the inadequacy of the legal remedy.”). A few decisions, by contrast, have

22   found the presumption rebuttable where the plaintiff delayed in bringing the action seeking an

     hardships. But see Random House, Inc. v. Rosetta Books L.L.C., 283 F.3d 490, 492 (2d Cir. 2002) (considering the
     balance of hardships but finding the standard unsatisfied); Consumers Union of U.S., Inc. v. Gen. Signal Corp., 724
     F.2d 1044, 1054 (2d Cir. 1983) (same).


                                                            -11-
 1   injunction. See Richard Feiner, 98 F.3d at 34; Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp.,

 2   25 F.3d 119, 124 (2d Cir. 1994); Bourne Co. v. Tower Records, Inc., 976 F.2d 99, 101 (2d Cir.

 3   1992).

 4            Under any of these articulations, however, this Court has nearly always issued injunctions

 5   in copyright cases as a matter of course upon a finding of likelihood of success on the merits. Cf.

 6   Mark A. Lemley & Eugene Volokh, Freedom of Speech and Injunctions in Intellectual Property

 7   Cases, 48 Duke L.J. 147, 159 (1998) (“The ostensibly four-factor test collapses . . . to a simple

 8   inquiry into likelihood of success on the merits. If that can be demonstrated, a preliminary

 9   injunction is the expected remedy.” (footnotes omitted)). But see Am. Visuals Corp. v. Holland,

10   219 F.2d 223 (2d Cir. 1955) (affirming denial of injunction because, among other reasons,

11   plaintiff failed to show that money damages would be inadequate).

12                                                    II.

13            Defendants do not claim that the District Court failed to apply this Circuit’s longstanding

14   preliminary injunction standard. Rather, they argue both that this standard is an unconstitutional

15   prior restraint on speech and that it is in conflict with the Supreme Court’s decision in eBay, Inc.

16   v. MercExchange, L.L.C., 547 U.S. 388 (2006). We agree that eBay abrogated parts of this

17   Court’s preliminary injunction standard in copyright cases, and accordingly, this case must be

18   remanded to the District Court to reevaluate Salinger’s preliminary injunction motion. In light of

19   that holding, we need not decide whether the preliminary injunction issued by the District Court

20   constituted an unconstitutional prior restraint on speech.

21            eBay involved the propriety of a permanent injunction after a finding of patent

22   infringement. The United States District Court for the Eastern District of Virginia had ostensibly




                                                     -12-
 1   applied the traditional four-factor test for determining whether a permanent injunction should

 2   issue:

 3             Issuance of injunctive relief against [the defendants] is governed by traditional
 4             equitable principles, which require consideration of (i) whether the plaintiff
 5             would face irreparable injury if the injunction did not issue, (ii) whether the
 6             plaintiff has an adequate remedy at law, (iii) whether granting the injunction is in
 7             the public interest, and (iv) whether the balance of the hardships tips in the
 8             plaintiff's favor.
 9
10   MercExchange, L.L.C. v. eBay, Inc., 275 F. Supp. 2d 695, 711 (E.D. Va. 2003) (quotation marks

11   omitted). In its application of this test, however, the district court “appeared to adopt certain

12   expansive principles suggesting that injunctive relief could not issue in a broad swath of cases.”

13   eBay, 547 U.S. at 393. Specifically, the district court found that “the evidence of the plaintiff’s

14   willingness to license its patents, its lack of commercial activity in practicing the patents, and its

15   comments to the media as to its intent with respect to enforcement of its patent rights, are

16   sufficient to rebut the presumption that it will suffer irreparable harm if an injunction does not

17   issue.” eBay, 275 F. Supp. 2d at 712. The Federal Circuit reversed on appeal, applying a

18   “general rule . . . that a permanent injunction will issue once infringement and validity have been

19   adjudged.” MercExchange, L.L.C. v. eBay, Inc., 401 F.3d 1323, 1338 (Fed. Cir. 2005). The

20   court cited for this rule Richardson v. Suzuki Motor Co, which equates the “general rule” with a

21   rule that “[i]n matters involving patent rights, irreparable harm has been presumed when a clear

22   showing has been made of patent validity and infringement.” 868 F.2d 1226, 1246-47 (Fed. Cir.

23   1989) (quoting H.H. Robertson Co. v. United Steel Deck, Inc., 820 F.2d 389, 390 (Fed. Cir.

24   1987)).

25             Writing for a unanimous Court, Justice Thomas held that neither the district court nor the

26   Federal Circuit correctly applied the equitable factors:




                                                       -13-
 1            According to well-established principles of equity, a plaintiff seeking a
 2            permanent injunction must satisfy a four-factor test before a court may grant such
 3            relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury;
 4            (2) that remedies available at law, such as monetary damages, are inadequate to
 5            compensate for that injury; (3) that, considering the balance of hardships between
 6            the plaintiff and defendant, a remedy in equity is warranted; and (4) that the
 7            public interest would not be disserved by a permanent injunction.
 8
 9   eBay, 547 U.S. at 391. Although the courts below had articulated the correct standard, they had

10   both, albeit in different ways, applied “broad classifications” that were inconsistent with

11   traditional equitable principles. Id. at 393.

12            This Court has not directly addressed the scope of eBay. 6 And district courts in our

13   Circuit have split on eBay’s reach. Compare, e.g., Lennon v. Premise Media Corp., 556 F. Supp.

14   2d 310, 319-20 n.1 (S.D.N.Y. 2008) (holding that eBay only applies to permanent injunctions in

15   patent cases), with Microsoft Corp. v. AGA Solutions, Inc., 589 F. Supp. 2d 195, 204 (E.D.N.Y.

16   2008) (applying eBay in a permanent injunction trademark case). Two district court decisions

17   have noted that the scope of eBay remains an open question in this Circuit and have decided the

18   cases before them without determining whether the eBay or pre-eBay standard applied. See




     6
       In Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 162 (2d Cir. 2007), this Court applied the pre-eBay
     standard where the plaintiff sought a preliminary injunction claiming false advertising under the Lanham Act. But
     whether eBay affected that standard was neither raised by the parties nor discussed by either the district court or this
     Court on appeal. Accordingly, Time Warner Cable is not binding precedent on this issue. See Webster v. Fall, 266
     U.S. 507, 511 (1924). Similarly, the Federal Circuit has, without discussion, applied a pre-eBay standard in one
     post-eBay copyright case involving a preliminary injunction. Jacobsen v. Katzer, 535 F.3d 1373, 1378 (Fed. Cir.
     2008) (applying the Ninth Circuit’s pre-eBay standard); see also Abercrombie & Fitch Co. v. Moose Creek, Inc., 486
     F.3d 629, 633 (9th Cir. 2007) (applying the pre-eBay standard, without discussion, in a preliminary injunction
     trademark case). By contrast, the First, Eleventh, and Fourth Circuits have applied eBay in copyright cases. See
     CoxCom, Inc. v. Chaffee, 536 F.3d 101, 112 (1st Cir. 2008); Peter Letterese & Assocs. v. World Inst. of Scientology
     Enters. Int’l, 533 F.3d 1287, 1323 (11th Cir. 2008); Christopher Phelps & Assocs. v. Galloway, 492 F.3d 532, 543
     (4th Cir. 2007) (“The Supreme Court [in eBay] reaffirmed the traditional showing that a plaintiff must make to
     obtain a permanent injunction in any type of case, including a patent or copyright case[.]”); see also Metro-
     Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1208-10 (C.D. Cal. 2007) (extensively
     discussing the issue and concluding that eBay applies in the permanent injunction copyright context). See generally
     Voile Mfg. Corp. v. Dandurand, 551 F. Supp. 2d 1301, 1306 (D. Utah 2008) (collecting cases and summarizing that
     “[d]espite the lack of clear direction from the Federal Circuit, the majority of district courts to directly analyze the
     issue have held that eBay did away with the presumption of irreparable harm in preliminary injunction cases
     involving patents”).


                                                              -14-
 1   Gayle Martz, Inc. v. Sherpa Pet Group, L.L.C., 651 F. Supp. 2d 72, 85 (S.D.N.Y. 2009); Warner

 2   Bros. Entm’t Inc. v. RDR Books, 575 F. Supp. 2d 513, 552 (S.D.N.Y. 2008).

 3            We hold today that eBay applies with equal force (a) to preliminary injunctions (b) that

 4   are issued for alleged copyright infringement. First, nothing in the text or the logic of eBay

 5   suggests that its rule is limited to patent cases. On the contrary, eBay strongly indicates that the

 6   traditional principles of equity it employed are the presumptive standard for injunctions in any

 7   context. 7 Significantly, after laying out the four-factor test quoted above, eBay cites two cases:

 8   Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-13 (1982), which involved a permanent

 9   injunction after a finding that the defendant violated the Federal Water Pollution Control Act,

10   and Amoco Production Co. v. Village of Gambell, 480 U.S. 531, 542 (1987), which involved a

11   preliminary injunction in which the plaintiff alleged that the defendant was violating § 810 of the

12   Alaska National Interest Lands Conservation Act, eBay, 547 U.S. at 391. The Court then looked

13   to whether the logic of these cases should apply in the patent context. Reasoning that “‘a major

14   departure from the long tradition of equity practice should not be lightly implied,’” id. at 391

15   (quoting Weinberger, 456 U.S. at 320), the Court concluded that “[t]hese familiar principles

16   apply with equal force to disputes arising under the Patent Act,” id.

17            Moreover, the Court expressly relied upon copyright cases in reaching its conclusion. In

18   response to the Federal Circuit’s reasoning that the Patent Act’s right to exclude justifies the

19   preference for injunctive relief, the Court stated that “the creation of a right is distinct from the

20   provision of remedies for violations of that right.” Id. at 392. In support of this distinction, it


     7
       Indeed, although our holding here is limited to preliminary injunctions in the context of copyright cases, eBay’s
     central lesson is that, unless Congress intended a “major departure from the long tradition of equity practice,” a
     court deciding whether to issue an injunction must not adopt “categorical” or “general” rules or presume that a party
     has met an element of the injunction standard. 547 U.S. at 391-94 (quotation marks omitted). Therefore, although
     today we are not called upon to extend eBay beyond the context of copyright cases, we see no reason that eBay
     would not apply with equal force to an injunction in any type of case.


                                                             -15-
 1   noted that “[l]ike a patent owner, a copyright holder possesses the right to exclude others from

 2   using his property.” Id. (quotation marks omitted). It further noted that “[l]ike the Patent Act,

 3   the Copyright Act provides that courts ‘may’ grant injunctive relief ‘on such terms as it may

 4   deem reasonable to prevent or restrain infringement of copyright.’” Id. (quoting 17 U.S.C. §

 5   502(a)). Because of these similarities, the Court emphasized that it “has consistently rejected

 6   invitations to replace traditional equitable considerations with a rule that an injunction

 7   automatically follows a determination that a copyright has been infringed.” Id. at 392-93 (citing

 8   N.Y. Times Co. v. Tasini, 533 U.S. 483, 505 (2001); Campbell, 510 U.S. at 578 n.10, Dun v.

 9   Lumbermen’s Credit Ass’n., 209 U.S. 20, 23-24 (1908)). Whatever the underlying issues and

10   particular circumstances of the cases cited by the Court in eBay, it seems clear that the Supreme

11   Court did not view patent and copyright injunctions as different in kind, or as requiring different

12   standards.

13          Nor does eBay, as reinforced by the Supreme Court’s very recent decision in Winter v.

14   Natural Resources Defense Counsel, 129 S. Ct. 365 (2008), permit an easier grant of a

15   preliminary than of a permanent injunction. First, as mentioned above, one of the two cases

16   eBay relied upon in stating the traditional equitable test involved a preliminary injunction. See

17   Amoco Prod., 480 U.S. at 542; see also id. at 546 n.12 (“The standard for a preliminary

18   injunction is essentially the same as for a permanent injunction with the exception that the

19   plaintiff must show a likelihood of success on the merits rather than actual success.”). Second,

20   in Winter, the Supreme Court in fact applied eBay in a case involving a preliminary injunction.

21   Reversing the Ninth Circuit, which had preliminarily enjoined the Navy’s use of sonar in training

22   exercises based on a “strong” likelihood of success on the merits and a “possibility” of

23   irreparable harm, the Court stated: “Issuing a preliminary injunction based only on a possibility




                                                     -16-
 1   of irreparable harm is inconsistent with our characterization of injunctive relief as an

 2   extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled

 3   to such relief.” Winter, 129 S. Ct. at 375-76. And using broad, unqualified language, the Court

 4   discussed the preliminary injunction standard as follows:

 5            A preliminary injunction is an extraordinary remedy never awarded as of right.
 6            In each case, courts must balance the competing claims of injury and must
 7            consider the effect on each party of the granting or withholding of the requested
 8            relief. In exercising their sound discretion, courts of equity should pay particular
 9            regard for the public consequences in employing the extraordinary remedy of
10            injunction.
11
12   Id. at 376-77 (quotation marks and citations omitted) (citing Munaf v. Geren, 128 S. Ct. 2207,

13   2218-19 (2008); Amoco Prod., 480 U.S. at 542; Weinberger, 456 U.S. at 312).

14                                                            III.

15            This Court’s pre-eBay standard for when preliminary injunctions may issue in copyright

16   cases is inconsistent with the principles of equity set forth in eBay. The Supreme Court’s

17   decision in Winter tells us that, at minimum, we must consider whether “irreparable injury is

18   likely in the absence of an injunction,” we must “‘balance the competing claims of injury,’” and

19   we must “‘pay particular regard for the public consequences in employing the extraordinary

20   remedy of injunction 8 .’” 129 S. Ct. at 375-77 (quoting Amoco, 480 U.S. at 542; Weinberger,

21   456 U.S. at 312). Therefore, in light of Winter and eBay, we hold that a district court must

22   undertake the following inquiry in determining whether to grant a plaintiff’s motion for a

23   preliminary injunction in a copyright case. First, as in most other kinds of cases in our Circuit, a


     8
       This Court has rarely considered the public’s interest before deciding whether an injunction should issue.
     Although decisions have referenced the public’s interest in passing, see Silverstein v. Penguin Putnam, Inc., 368
     F.3d 77, 84 (2d Cir. 2004) (quoting 4 Nimmer on Copyright § 14.06 for the proposition that “where great public
     injury would be worked by an injunction . . . the courts could . . . award damages or a continuing royalty instead of
     an injunction”); New Era Publ’ns Int’l., ApS v. Henry Holt, Co., 884 F.2d 659, 664 (2d Cir. 1989) (Newman, J.,
     dissenting from denial of rehearing in banc) (“[T]he public interest is always a relevant consideration for a court
     deciding whether to issue an injunction.”), the public’s interest has not in the past been a formal factor in this
     Court’s standard for when to issue copyright injunctions.


                                                              -17-
 1   court may issue a preliminary injunction in a copyright case only if the plaintiff has

 2   demonstrated “either (a) a likelihood of success on the merits or (b) sufficiently serious questions

 3   going to the merits to make them a fair ground for litigation and a balance of hardships tipping

 4   decidedly in the [plaintiff]’s favor.” NXIVM Corp., 364 F.3d at 476; see also, e.g., Faiveley

 5   Transp. Malmo AB v. Wabtec Corp., 559 F.3d 110, 116 (2d Cir. 2009). Second, the court may

 6   issue the injunction only if the plaintiff has demonstrated “that he is likely to suffer irreparable

 7   injury in the absence of an injunction.” Winter, 129 S. Ct. at 374. The court must not adopt a

 8   “categorical” or “general” rule or presume that the plaintiff will suffer irreparable harm (unless

 9   such a “departure from the long tradition of equity practice” was intended by Congress). eBay,

10   547 U.S. at 391, 393-94. Instead, the court must actually consider the injury the plaintiff will

11   suffer if he or she loses on the preliminary injunction but ultimately prevails on the merits,

12   paying particular attention to whether the “remedies available at law, such as monetary damages,

13   are inadequate to compensate for that injury.” eBay, 547 U.S. at 391; see also Winter, 129 S. Ct.

14   at 375 (quoting 11A C. Wright, A. Miller & M. Kane, Federal Practice and Procedure § 2948.1

15   (2d ed. 1995), for the proposition that an applicant for a preliminary injunction “must

16   demonstrate that in the absence of a preliminary injunction, ‘the applicant is likely to suffer

17   irreparable harm before a decision on the merits can be rendered’”). Third, a court must consider

18   the balance of hardships between the plaintiff and defendant and issue the injunction only if the

19   balance of hardships tips in the plaintiff’s favor. Winter, 129 S. Ct. at 374; eBay, 547 U.S. at

20   391. Finally, the court must ensure that the “public interest would not be disserved” by the

21   issuance of a preliminary injunction. eBay, 547 U.S. at 391; accord Winter, 129 S. Ct. at 374.

22                                                     A.




                                                      -18-
 1            The first consideration in the preliminary injunction analysis is the probability of success

 2   on the merits. In gauging this, we emphasize that courts should be particularly cognizant of the

 3   difficulty of predicting the merits of a copyright claim at a preliminary injunction hearing. See

 4   Lemley & Volokh, supra, at 201-02 (“[When deciding whether to grant a TRO or a preliminary

 5   injunction,” the judge has limited time for contemplation. The parties have limited time for

 6   briefing. Preparation for a typical copyright trial, even a bench trial, generally takes many

 7   months; the arguments about why one work isn’t substantially similar in its expression to

 8   another, or about why it’s a fair use of another, are often sophisticated and fact-intensive, and

 9   must be crafted with a good deal of thought and effort.”). This difficulty is compounded

10   significantly when a defendant raises a colorable fair use defense. “Whether [a] taking[] will

11   pass the fair use test is difficult to predict. It depends on widely varying perceptions held by

12   different judges.” Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1132

13   (1990); see also Campbell, 510 U.S. at 578 n.10 (noting that “the fair use enquiry often requires

14   close questions of judgment”).

15                                                               B.

16            Next, the court must consider whether the plaintiff will suffer irreparable harm in the

17   absence of a preliminary injunction, and the court must assess the balance of hardships between

18   the plaintiff and defendant. Those two items, both of which consider the harm to the parties, are

19   related. The relevant harm is the harm that (a) occurs to the parties’ legal 9 interests and (b)

20   cannot be remedied after a final adjudication, whether by damages or a permanent injunction.

21   The plaintiff’s interest is, principally, a property interest in the copyrighted material. See

22   Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 661 (1834). But as the Supreme Court has suggested, a

     9
      As Judge Leval noted in New Era Publications International, ApS v. Henry Holt & Co., “the justification of the
     copyright law is the protection of the commercial interest of the artist/author. It is not to coddle artistic vanity or to
     protect secrecy, but to stimulate creation by protecting its rewards.” 695 F. Supp. 1493, 1526 (S.D.N.Y. 1988).


                                                                -19-
 1   copyright holder might also have a First Amendment interest in not speaking. See Harper &

 2   Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 559 (1985). The defendant to a copyright

 3   suit likewise has a property interest in his or her work to the extent that work does not infringe

 4   the plaintiff’s copyright. And a defendant also has a core First Amendment interest in the

 5   freedom to express him- or herself, so long as that expression does not infringe the plaintiff’s

 6   copyright.

 7           But the above-identified interests are relevant only to the extent that they are not

 8   remediable after a final adjudication. Harm might be irremediable, or irreparable, for many

 9   reasons, including that a loss is difficult to replace or difficult to measure, or that it is a loss that

10   one should not be expected to suffer. In the context of copyright infringement cases, the harm to

11   the plaintiff’s property interest has often been characterized as irreparable in light of possible

12   market confusion. See Merkos L’Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc., 312 F.3d

13   94, 96-97 (2d Cir. 2002). And courts have tended to issue injunctions in this context because “to

14   prove the loss of sales due to infringement is . . . notoriously difficult.” Omega Importing Corp.

15   v. Petri-Kine Camera Co., 451 F.2d 1190, 1195 (2d Cir. 1971) (Friendly, C.J.). Additionally,

16   “[t]he loss of First Amendment freedoms,” and hence infringement of the right not to speak, “for

17   even minimal periods of time, unquestionably constitutes irreparable injury.” Elrod v. Burns,

18   427 U.S. 347, 373 (1976). 10

19           After eBay, however, courts must not simply presume irreparable harm. See eBay, 547

20   U.S. at 393. Rather, plaintiffs must show that, on the facts of their case, the failure to issue an

21   injunction would actually cause irreparable harm. This is not to say that most copyright

22   plaintiffs who have shown a likelihood of success on the merits would not be irreparably harmed


     10
       But cf. Freedman v. Maryland, 380 U.S. 51, 59 (1965) (finding permissible pre-adjudication restraint where,
     among other things, the time between the restraint and the final adjudication is brief).


                                                           -20-
 1   absent preliminary injunctive relief. As an empirical matter, that may well be the case, and the

 2   historical tendency to issue preliminary injunctions readily in copyright cases may reflect just

 3   that. See H. Tomás Gómez-Arostegui, What History Teaches Us About Copyright Injunctions

 4   and the Inadequate-Remedy-at-Law Requirement, 81 S. Cal. L. Rev. 1197, 1201 (2008)

 5   (concluding, after a thorough historical analysis, that “the historical record suggests that in

 6   copyright cases, legal remedies were deemed categorically inadequate”). As Chief Justice

 7   Roberts noted, concurring in eBay:

 8           From at least the early 19th century, courts have granted injunctive relief upon a
 9           finding of infringement in the vast majority of patent cases. This “long tradition
10           of equity practice” is not surprising, given the difficulty of protecting a right to
11           exclude through monetary remedies . . . . This historical practice, as the Court
12           holds, does not entitle a patentee to [an] . . . injunction or justify a general rule
13           that such injunctions should issue. . . . At the same time, there is a difference
14           between exercising equitable discretion pursuant to the established four-factor
15           test and writing on an entirely clean slate. . . . When it comes to discerning and
16           applying those standards, in this area as others, a page of history is worth a
17           volume of logic.
18
19   547 U.S. at 395 (quotation marks omitted).

20          But by anchoring the injunction standard to equitable principles, albeit with one eye on

21   historical tendencies, courts are able to keep pace with innovation in this rapidly changing

22   technological area. Justice Kennedy, responding to Justice Roberts, made this very point as to

23   patent injunctions in his eBay concurrence. Although the “lesson of the historical practice . . . is

24   most helpful and instructive when the circumstances of a case bear substantial parallels to

25   litigation the courts have confronted before[,] . . . in many instances the nature of the patent

26   being enforced and the economic function of the patent holder present considerations quite

27   unlike earlier cases.” Id. at 396. Justice Kennedy concluded that changes in the way parties use

28   patents may now mean that “legal damages [are] sufficient to compensate for the infringement.”

29   Id.



                                                     -21-
 1                                                    C.

 2          Finally, courts must consider the public’s interest. The object of copyright law is to

 3   promote the store of knowledge available to the public. But to the extent it accomplishes this

 4   end by providing individuals a financial incentive to contribute to the store of knowledge, the

 5   public’s interest may well be already accounted for by the plaintiff’s interest.

 6          The public’s interest in free expression, however, is significant and is distinct from the

 7   parties’ speech interests. See Pac. Gas & Elec. Co. v. Pub. Utils. Comm’n of Cal., 475 U.S. 1, 8

 8   (1986). “By protecting those who wish to enter the marketplace of ideas from government

 9   attack, the First Amendment protects the public’s interest in receiving information.” Id. Every

10   injunction issued before a final adjudication on the merits risks enjoining speech protected by the

11   First Amendment. Some uses, however, will so patently infringe another’s copyright, without

12   giving rise to an even colorable fair use defense, that the likely First Amendment value in the use

13   is virtually nonexistent.

14                                                   IV.

15          Because the District Court considered only the first of the four factors that, under eBay

16   and our holding today, must be considered before issuing a preliminary injunction, we vacate and

17   remand the case. But in the interest of judicial economy, we note that there is no reason to

18   disturb the District Court’s conclusion as to the factor it did consider—namely, that Salinger is

19   likely to succeed on the merits of his copyright infringement claim.

20          Most of the matters relevant to Salinger’s likelihood of success on the merits are either

21   undisputed or readily established in his favor. Thus, Defendants do not contest either that

22   Salinger owns a valid copyright in Catcher or that they had actual access to Catcher. And while

23   they argue only that 60 Years Later and Catcher are not substantially similar, that contention is




                                                     -22-
 1   manifestly meritless. 11 “In considering substantial similarity between two items, we review the

 2   district court’s findings de novo—not on the clearly erroneous standard—because what is

 3   required is only a visual comparison of the works, rather than credibility, which we are in as

 4   good a position to decide as was the district court.” Folio Impressions, Inc. v. Byer Cal., 937

 5   F.2d 759, 766 (2d Cir. 1991). And for largely the same reasons as the District Court, we affirm

 6   the District Court’s finding that Catcher and 60 Years Later are substantially similar.

 7            More serious is Defendants’ assertion of a fair use defense. And at this preliminary

 8   stage, we agree with the District Court that Defendants will not likely be able to make out such a

 9   defense. The District Court in its discussion of fair use focused on the first statutory factor: the

10   “purpose and character of the use.” 17 U.S.C. § 107(1). In doing this, the Court found that “[i]t

11   is simply not credible for Defendant Colting to assert now that his primary purpose was to

12   critique Salinger and his persona, while he and his agents’ previous statements regarding the

13   book discuss no such critique, and in fact reference various other purposes behind the book.”

14   Salinger, 641 F. Supp. 2d at 262. Such a finding is not clear error. See Anderson v. Bessemer

15   City, 470 U.S. 564, 575 (1985) (a district court’s findings regarding witness credibility are to be

16   reviewed for clear error). It may be that a court can find that the fair use factor favors a

17   defendant even when the defendant and his work lack a transformative purpose. We need not

18   decide that issue here, however, for when we consider the District Court’s credibility finding

19   together with all the other facts in this case, we conclude, with the District Court, that

20   Defendants are not likely to prevail in their fair use defense. 12



     11
       We find it unnecessary to decide whether Salinger owns a valid copyright in the character Holden Caulfield.
     12
       As noted above, since the commencement of these proceedings, Plaintiff-Appellee J.D. Salinger has died. On
     remand, nothing precludes the District Court from considering that or any other additional evidence that may bear
     on the legal issues to be determined with respect to the preliminary injunction and the final merits. Moreover, while
     we are remanding for further consideration of a preliminary injunction, we wish to make clear that nothing we have


                                                             -23-
1                                                    CONCLUSION

2            In this preliminary injunction case, the District Court erred by not applying the equitable

3   standard outlined by the Supreme Court in eBay, Inc. v. MercExchange, L.L.C. and Winter v.

4   Natural Resources Defense Council. Accordingly, we vacate and remand for further proceedings

5   consistent with this opinion. The preliminary injunction will stay in place for ten days following

6   the issuance of the mandate so that Appellees will have an opportunity to apply for a temporary

7   restraining order pending the rehearing of the motion for a preliminary injunction.




    said is intended to preclude the District Court on remand from consolidating its further consideration of the
    preliminary injunction application with the trial on the merits. See Fed. R. Civ. P. 65(a)(2).


                                                            -24-