Preliminary Injunction
Preliminary Injunction Preliminary Injunction
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 the absence of preliminary relief, that the balance of equities tips in [their] favor, and that an injunction is in the public interest.” Winter v. Natural Res. Def. Council, Inc. 555 U.S. 7, 20 (2008). Alternatively, an injunction should issue if Plaintiffs show “serious questions going to the merits” and a “balance of hardships that tips sharply towards the plaintiff[s],” so long as they also show “that there is a likelihood of irreparable injury and that the injunction is in the public interest.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1134-35 (9th Cir. 2011). A. Plaintiffs Will Prevail On Their Copyright Infringement Claim. To establish copyright infringement, a plaintiff must show (1) ownership of a valid copyright and (2) violation by the defendant of “at least one exclusive right granted to copyright holders” under 17 U.S.C. § 106. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001). One of the exclusive Section 106 rights reserved to the copyright holder is the right to make and authorize others to make derivative works, otherwise known as the adaptation right. See 17 U.S.C. § 106(2); Twin Peaks Prods. v. Publications Int’l, Ltd., 996 F.2d 1366, 1373 (2d Cir. 1993). See generally 2 NIMMER ON COPYRIGHT § 8.09 (“the right to make derivative works, i.e., the adaptation right”). Section 101 of the Copyright Act defines a derivative work as “a work based upon one or more preexisting works, such as a … motion picture version … or any other form in which a work may be recast, transformed, or adapted.” 17 U.S.C. § 101 (emphasis added). The Supreme Court established more than a century ago that a motion picture version of a book infringes the author’s copyright. See Kalem Co. v. Harper Bros., 222 U.S. 55, 62-63 (1911) (affirming injunction prohibiting defendant from distributing the silent film Ben Hur, which was based on the Lew Wallace novel Ben Hur). It is now hornbook law that “[a]n unauthorized dramatization of a novel clearly constitutes an infringement of the adaptation right.” 2 NIMMER ON COPYRIGHT § 8.09; accord Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1329 (9th Cir. 1983) (where defendant’s work -5- Memorandum ISO Plaintiff’s Motion for Preliminary Injunction
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 “is adapted for use in a medium different than that of plaintiff’s, the test for infringement remains the same”). With respect to the first element (ownership), FSL owns valid copyrights in the Fifty Shades Trilogy, see Mitchell Decl. 3, Ex. 4 (registrations), and Universal is the owner of exclusive rights to produce and distribute motion pictures based on the Fifty Shades Trilogy, see Brooks Decl. 6, Ex. 5. With respect to the second element (unlawful copying), in copyright infringement actions “[t]here seldom is any direct evidence of copying.” Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 206 (9th Cir. 1988). But where proof of actual copying of protected elements of a plaintiff’s work is demonstrated, “that is the end of the case.” M. Kramer Mfg. Co., Inc. v. Andrews, 783 F.2d 421, 445 (4th Cir. 1986); see also Range Road Music, Inc. v. East Coast Foods, Inc., 668 F.3d 1148, 1154 (9th Cir. 2012) (a showing of substantial similarity is “irrelevant” where a plaintiff produces evidence of direct copying of expressive elements); Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127, 1135 (N.D. Cal. 1986) (copying proven by direct evidence). Copying also may be established “by circumstantial evidence of (1) the defendant’s access to the copyrighted work prior to defendant's creation of its work, and (2) the substantial similarity of both the general ideas and expression between the copyrighted work and defendant’s work.” Data East, 862 F.2d at 206. Here, there is both direct and circumstantial evidence of unlawful copying. First, Defendants admit the XXX Adaptation is a derivative work that copies the expressive elements of the Fifty Shades Trilogy. Second, a side-by-side comparison of the parties’ works confirms that they are substantially similar. 1. Defendants Admit They Copied The Fifty Shades Trilogy. Defendants cannot seriously dispute that they had access to E L James’s novels, given their use of the title Fifty Shades of Grey: A XXX Adaptation and the numerous statements they made to promote their infringing work. See, e.g., Kohn -6- Memorandum ISO Plaintiff’s Motion for Preliminary Injunction
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“is adapted for use in a medium different than that of plaintiff’s, the test for<br />
infringement remains the same”).<br />
With respect to the first element (ownership), FSL owns valid copyrights in<br />
the Fifty Shades Trilogy, see Mitchell Decl. 3, Ex. 4 (registrations), and<br />
Universal is the owner of exclusive rights to produce and distribute motion pictures<br />
based on the Fifty Shades Trilogy, see Brooks Decl. 6, Ex. 5.<br />
With respect to the second element (unlawful copying), in copyright<br />
infringement actions “[t]here seldom is any direct evidence of copying.” Data<br />
East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 206 (9th Cir. 1988). But where proof<br />
of actual copying of protected elements of a plaintiff’s work is demonstrated, “that<br />
is the end of the case.” M. Kramer Mfg. Co., Inc. v. Andrews, 783 F.2d 421, 445<br />
(4th Cir. 1986); see also Range Road Music, Inc. v. East Coast Foods, Inc., 668<br />
F.3d 1148, 1154 (9th Cir. 2012) (a showing of substantial similarity is “irrelevant”<br />
where a plaintiff produces evidence of direct copying of expressive elements);<br />
Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127, 1135 (N.D.<br />
Cal. 1986) (copying proven by direct evidence). Copying also may be established<br />
“by circumstantial evidence of (1) the defendant’s access to the copyrighted work<br />
prior to defendant's creation of its work, and (2) the substantial similarity of both<br />
the general ideas and expression between the copyrighted work and defendant’s<br />
work.” Data East, 862 F.2d at 206.<br />
Here, there is both direct and circumstantial evidence of unlawful copying.<br />
First, Defendants admit the XXX Adaptation is a derivative work that copies the<br />
expressive elements of the Fifty Shades Trilogy. Second, a side-by-side<br />
comparison of the parties’ works confirms that they are substantially similar.<br />
1. Defendants Admit They Copied The Fifty Shades Trilogy.<br />
Defendants cannot seriously dispute that they had access to E L James’s<br />
novels, given their use of the title Fifty Shades of Grey: A XXX Adaptation and the<br />
numerous statements they made to promote their infringing work. See, e.g., Kohn<br />
-6-<br />
Memorandum ISO Plaintiff’s Motion for <strong>Preliminary</strong> <strong>Injunction</strong>
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