Cariou v. Prince

Filing 68

OPPOSITION TO MOTION to dismiss [51], on behalf of Appellant Lawrence Gagosian and Gagosian Gallery, Inc., FILED. Service date 06/01/2011 by CM/ECF. [304722][68] [11-1197]

BOIES, SCHILLER & FLEXNER LLP

WITHERS BERGMAN LLP
Hollis Gonerka Bart
Chaya F. Weinberg-Brodt

Jonathan Schiler

George Carpinello
Joshua 1. Schiler

Dara G. Hammerman

575 Lexington Ave, 7th Floor

Azmina N. Jasani
430 Park A venue, 10th Floor

New York, NY 10022

New York, New York 10022

212-446-2300 (p)

212.848.9800 (p)

212-446-2350 (f)

212.848.9888 (f)

Attorneys for Defendant-Appellant Richard Prince

Attorneys for Defendants-Appellants Gagosian Gallery, Inc.

and Lawrence Gagosian

UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
---------------------------------------------------------- )(
PATRICK CAROU,
Docket No. 11-1197-cv

Plaintiff-Appellee,
SDNY: 08-cv-11237 (DAB)
-against-

RICHARD PRINCE, GAGOSIAN GALLERY,
INC., and LAWRENCE GAGOSIAN,
Defendants- Appellants
---------------------------------------------------------- )(

DEFENDANTS-APPELLANTS' MEMORANDUM OF LAW
IN OPPOSITION TO PLAINTIFF-APPELLEE'S
MOTION TO DISMISS THE APPEAL

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TABLE OF CONTENTS
Page

TABLE OF AUTHORITIES................................... ................................................. ii

PRELIMINARY STATEMENT............................................................................... 1
STATEMENT OF FACTS ....................................................................................... 1

ARGUMNT ............................................................................................................ 6
POINT I
APPELLANTS' APPEAL FROM THE DISTRICT COURT'S
INJUNCTIONS IS NOT MOOT ................................................................. 6

POINT II

ALL THRE INJUNCTIONS ARE IMMDIATELY APPEALABLE
WITHOUT A SHOWING OF SERIOUS CONSEQUENCES, BUT
SERIOUS CONSEQUENCES DO E)(IST ............................................... 10

POINT III
THE COURT SHOULD HEAR THE APPEAL ON THE MERITS NOW

RATHER THAN AWAIT A HEARG ON DAMGES ...................... 16
CONCLUSION....................................................................................................... 18

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TABLE OF AUTHORITIES
Cases
Allee v. Medrano, 416 U.S. 802 (1974) ....................................................................9

Am. Express Travel Related Servs. Co., Inc. v. MasterCard Intl Inc., 776 F.
Supp. 787 (S.D.N.Y. 1991)............... .................... ................................................. 9
Anderson v. Davila, 125 F.3d 148 (3d Cir. 1997)................................................... 14
Carson v. Am. Brands, Inc., 450 U.S. 79, 84 (1981) .............................................. 10
Cohen v. Bd. 01

Trs. olthe Univ. olMed. And Dentistry oINJ., 867 F.2d

1455 (3d Cir. 1989)...................... ................................................. ....................... 14

Commodity Futures Trading Comm. v. Walsh, 618 F.3d 218 (2d Cir. 2010)10, 11, 14, 16
Consumers Union v. Gen. Signal Corp., 724 F .2d 1044 (2d Cir. 1983) .................. 8

Cross Med. Prods., Inc. v. Medtronic Solamor Danek, Inc., 424 F.3d 1293
(Fed. Cir. 2005) ................................................................................................ 7, 11
Dejohn v. Temple Univ... 537 F.3d 301 (3d Cir. 2008) ............................................. 9

Digital Filing Sys., L.L.c. v. Aditya Intl, 323 Fed. App'x 407 (6th Cir.
2009)..................................................................................................................... 13
Donlon Indus. v. Forte, 402 F.2d 935 (2d Cir. 1968) ............................................. 13

Duhn Oil Tool, Inc. v. Cooper Cameron Corp., 367 Fed. App'x 148 (Fed.
Cir. 2010).......................................................................................................... 7, 15
Four Seasons Hotels & Resorts, B. V. v Consorcio Barr, s.A., 320 F.3d 1205
( 11 th Cir. 2003)...................................................................................................... 7

HBE Leasing Corp. v. Frank, 48 F.3d 623 (2d Cir. 1995) ............................... 15, 16
In re Flanagan, 503 F.3d 171 (2d Cir. 2007) ......................................................... 10

Kuklachev v. Gelfman, 629 F. Supp. 2d 236 (E.D.N.Y. 2008)................................. 9

LaForest v. Former Clean Air Holding co., Inc., 376 F.3d 48 (2d Cir. 2004) ....... 11

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ii

Macewen Petroleum, Inc. v. Tarbell, 136 F.3d 263 (2d Cir. 1998)........................ 13
Midway Mlg. Co. v. Omni Video Games, Inc., 668 F.2d 70 (1st Cir. 1981) .......... 13
New York SMSA Ltd. P'ship v. Town olClarkstown, 612 F.3d 97 (2d Cir.

2010)....................................................................................................................... 7

Petrello v. White, 533 F.3d 110 (2d Cir. 2008).......................................................15
Robert Stigwood Group Ltd. v. Hurwitz, 462 F.2d 910 (2d Cir. 1972) .................... 9
Rosco, Inc. v. Mirror Lite Co., 2006 U.S. Dist. LEJCIS 73366 (E.D.N.Y.
Sept. 29, 2006)...................................................................................................... 13

RSO Records, Inc. v. Peri, 596 F. Supp. 849 (S.D.N.Y. 1984) .............................. 13
Sanofi-Synthelabo v. Apotex, Inc., 492 F. Supp. 2d 353 (S.D.N.Y. 2007) ............. 13

Saudi Basic Indus. C01p. v. Al-Jubail Petrochemical Co., 364 F.3d 106 (3d
Cir. 2004 ).................................................................... .................................... 10, 16

United States v. Allen, 155 F.3d 35 (2d Cir. 1998).................................................11
United States v. E-Gold, Ltd., 521 F.3d 411 (D.C. Cir. 2008)................................ 14
United States v. W T. Grant Co., 345 U.S. 629 (1953)............................................. 9

Westar Energy, Inc. v. Lake, 552 F.3d 1215 (10th Cir. 2009)............................7,14

Statutes
17 U.S.C. § 1 07 ......................................................................................................... 2

17 U.S.C. § 502 ................................................................................................. 11, 16
28 U.S.C. § 1292( a )(1)..................................................................................... passim

Fed. R. Civ. P. 65 (f) ................................................................................................ 13

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iii

PRELIMINARY STATEMENT
On March 25,2011, Defendants-Appellants Richard Prince, Gagosian
Gallery, Inc., and Lawrence Gagosian (collectively "Appellants") filed a joint

Notice of Appeal from a March 18,2011 Memorandum and Order (the "Order")
issued by the district court (Batts, J.), which included permanent injunctive relief

against them. See 28 U.S.C. § 1292(a)(1). Plaintiff-Appellee Patrick Cariou
("Cariou") now moves to dismiss the appeal without prejudice.
Cariou argues that the appeal is moot because Appellants have agreed

temporarily to comply with the district court's injunctions pending the results of
this appeal, including temporarily storing items with a neutral third-party, rather

than having them destroyed. Compliance with a court order never renders the
order moot, and Appellants only agreed to put the paintings in storage until the

district court's order is reversed. If Appellants prevail on this appeal, and the

injunctions are reversed or vacated, Appellants wil be able to resume all
commercial activities currently enjoined by the district court's Order. Because a

favorable decision from this Court wil have immediate and practical benefits for
Appellants, this Appeal is anything but moot.

STATEMENT OF FACTS
In his Amended Complaint ("Complaint"), Cariou alleged that Appellants
infringed his copyright by, among other things, creating, marketing, and selling a

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series of paintings and catalogs (the "Paintings" and the "Catalogs," and
Hollis Gonerka Bart, dated June 1,

collectively, the "Items"). See Declaration of

2011 ("Bart Dec.") ir 3. Appellants asserted, among other things, the defense of
fair use under 17 U.S.C. § 107. See id. ir 4.

On May 14,2010, the parties crossed-moved for summary judgment on
liability, including the claim of infringement and the defense of fair use. Neither
party moved for summary judgment on damages or remedies. Id. ir 5.
The Order granted Cariou' s motion for summary judgment on liability, and
rejected Appellants' defense of

fair use. Without the benefit of

briefing from

either party, the Order went beyond the issues that were sub judice, and granted

injunctive relief against Appellants. See Order, at Brooks Dec. Ex. A. The district
court set a hearing on damages, which it later adjourned pending determination of
this appeaL. See id. i

Specifically, the Order: (i) permanently enjoined Appellants from infringing
Cariou's copyright in the Photographs, thus prohibiting them from selling,

displaying, marketing, promoting, or distributing the existing Paintings and
Catalogs, which the district court found to be infringing; (ii) ordered Appellants to
deliver to Cariou, within ten days, all unsold Items in their possession, custody,

and control, "for impounding, destruction, or other disposition, as Plaintiff
i In doing so, the district court implicitly recognized that it would be more efficient
for this Court to hear the appeal, and for the damages hearing to await the result.
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the

determines;" and (iii) ordered Appellants to notify any known owners of

Paintings that the Paintings infringe Cariou's copyright and cannot be publicly

displayed. Each of these injunctions (collectively the "Injunctions") mirrors a
in Cariou's Complaint. See Complaint, at Bart Dec. Ex.

request for injunctive relief

A, pp.13-14 irir A, C and D.

Due to the Injunctions, Appellants cannot currently sell, display, loan,

market, promote, copy or distribute any of the existing Items. If the Injunctions are

reversed or vacated on appeal, however, Appellants wil be entitled to resume these
commercial activities.
the Paintings

Likewise, Appellants wrote letters to the current owners of

informing them of

the Order, and the district court's view that the Paintings

infringe Cariou's copyright and cannot be publicly displayed. See Brooks Dec. Ex.
D. The letters further told the current owners that Appellants had filed this appeaL.

If the Injunctions are reversed or vacated on appeal, Appellants will be entitled to
recall and/or correct these forced letters.
To comply with the portion of

the Injunctions requiring Appellants to turn

over the Items within ten days for impoundment, destruction, or other disposition,

the parties executed a stipulation (the "Stipulation"), under which Appellants
delivered the Items to Cariou for the "other disposition" which Cariou had the right

to select - namely the Items would be stored and preserved in a neutral third-party

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location. See Stipulation, at Brooks Dec. Ex. B. The Stipulation, by its express
terms, expires on final determination of

this appeaL. See Stipulation ir 1; Brooks

Dec. ir 5. The Stipulation recites that its purpose is to comply with the district

court order requiring "impounding, destruction, or other disposition." See id. at
Whereas Clause. By entering the Stipulation, Appellants were assured that the
Items would be preserved intact until this appeal could be heard, rather than
irreversibly destroyed.

If Appellants prevail on appeal and this Court reverses the findings of the

district court, the Stipulation wil expire (along with the underlying injunction it
enforces), and Appellants wil be entitled to retrieve their Items from storage, and
resume all rights of custody, possession, or control, including the rights to display,
the Items. In sum, contrary

promote, sell, advertise, lend, or otherwise dispose of

to Cariou's baseless argument that the injunction requiring impounding,

destruction, or other disposition is "not being enforced" (see Cariou Mem. p.7), the
Stipulation actually is the method by which Appellants are complying with the

mandatory injunction - pending the results of this appeal - by allowing for an
"other disposition" (i.e., third-party storage), which is less draconian than
immediate destruction, without the opportunity for a hearing.

Cariou now moves to dismiss this appeal without prejudice, and argues that

the appeal is "moot" because Appellants currently cannot commit further acts of

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alleged infringement - at least until their appeal is heard, an event Cariou now

seeks to delay with this motion. Indeed, Cariou goes so far as to vaguely suggest

that the Injunctions themselves may be unnecessary (or moot), but - notably - the
Injunctions are currently stil in place, and stil restraining Appellants' activities.

Indeed, contrary to Cariou's suggestion, absent the Injunctions, there is nothing

prohibiting Prince from creating new paintings. Furthermore, Cariou's suggestion
is entirely circular. If

the Injunctions are vacated, and this appeal is then

dismissed, both the Stipulation and the underlying Injunction requiring delivery to

Cariou for "other disposition," wil automatically expire, and Appellants wil be
entitled to retrieve their Items from storage, and resume all enjoined activities.
Respectfully, Cariou's motion is ilogicaL. Cariou is not the part aggrieved

by the Injunctions, and the fact that he is satisfied with the status quo does not

render Appellants' appeal moot. Appellants are the parties aggrieved by the

Injunctions and the status quo. If Appellants prevail on this appeal and the
Injunctions are vacated, the Stipulation wil expire by its terms, and the status quo

wil be materially altered in favor of Appellants. This controversy is therefore very
much alive, and Cariou's motion to dismiss should be denied.

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ARGUMENT

POINT I
APPELLANTS' APPEAL FROM THE
DISTRICT COURT'S INJUNCTIONS IS NOT MOOT
Because the district court issued a permanent injunction, Appellants are

right. See 28 U.S.C. §1292(a)(1) ("The

entitled to an immediate appeal as of

courts of appeals shall have jurisdiction of appeals from. . . interlocutory orders of
the district courts of

the United States. .. granting.. . injunctions,,).2

Cariou argues incorrectly that the appeal is moot because Appellants already
agreed (under penalty of contempt) to comply with the injunction pending appeal,

wrote the required letters to the owners, and delivered up the existing Items for

storage, pursuant to the Stipulation. Cariou further claims that because the Items
are now outside Appellants' physical control, Appellants are probably unable to
violate the Injunctions prohibiting further infringement, even if they wanted to.

Cariou, however, does not, and cannot, dispute that if Appellants prevail on this

appeal and the Injunctions are vacated, the Stipulation wil expire by its terms, and
Appellants wil be free to retrieve their Items, and recall and/or correct their forced
2 Although Cariou argues that the Order contains one injunction and two "equitable
orders," as opposed to three separate injunctive orders, Cariou does not dispute that
the district court issued at least one permanent injunction, appealable as of right.
As a matter of law, there is no requirement that Appellants seek a stay before
pursuing their appeal under 28 U.S.C. § 1292(a)(1). Likewise, Appellants are not
required to "expedite" the appeaL. Indeed, at this point, any delay in this appeal is
due to Cariou's baseless motion to dismiss. See Second Cir. Local Rule 31.2(a)(3).
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letters, and resume any commercial activity currently enjoined. See Four Seasons
Hotels & Resorts, B. V. v Consorcio Barr, s.A., 320 F.3d 1205, 1209 n.2 (lIth Cir.

2003) ("compliance with the terms of an injunction does not moot a case where the
action in question could be resumed or undone").

Cariou's argument has no support in the law. A party does not lose the right

to appeal an injunction when it agrees - or is forced - to comply with the
injunction temporarily, until its appeal is decided. See New York SMSA Ltd. P'ship

v. Town olClarkstown, 612 F.3d 97, 103 (2d Cir. 2010) (Second Circuit asserts
jurisdiction over Town's appeal, because district court's order requiring Town to

re-draft law was an effective injunction, notwithstanding Town's amendment of
law "subject to the outcome of

this appeal"); Duhn Oil Tool, Inc. v. Cooper

Cameron Corp., 367 Fed. App'x 148, 149 (Fed. Cir. 2010) (summary order)
(injunction is immediately appealable, even if defendant previously voluntarily

halted enjoined acts, because injunction "prevents (defendant) from changing its
mind"); Westar Energy, Inc. v. Lake, 552 F.3d 1215, 1221-24 (lOth Cir. 2009)

right under 28 D.S.C. § 1292(a)(1),

(injunction was immediately appealable as of

injunction pending

despite defendant's announcement that it would comply with

appeal); Cross Med. Prods., Inc. v. Medtronic Solamor Danek, Inc., 424 F.3d
1293, 1300-01 (Fed. Cir. 2005) (injunction prohibiting infringement is

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immediately appealable, even if defendant abandoned infringing activities before
injunction issued).3

Not surprisingly, Cariou cites not one case for his remarkable argument that
an appeal from an injunction is moot if

the enjoined party voluntarily complies

with the injunction pending determination of its appeaL. Cariou instead cites cases

that make an entirely different point - namely a request for an injunction may

become moot if there is no realistic expectation that the wrongful conduct wil ever
recur. For example, Cariou cites to Consumers Union v. Gen. Signal Corp., 724

F.2d 1044 (2d Cir. 1983), but that case supports Appellants. There, this Court
exercised

jurisdiction under 28 U.S.C. § 1292(a)(1) to vacate a preliminary

injunction. In doing so, the Court noted that the preliminary injunction with
respect to a specific television commercial had become moot because defendant

had already changed the commerciaL. Id. at 1052. However, the Court then
analyzed the substantive defense of fair use, and vacated the preliminary injunction

on the ground that the plaintiff was unlikely to succeed on the merits. Id. at 1054-

55. Nothing in Consumer Union remotely suggests that the appeal itselfwas
rendered moot, in whole or in part, because the underlying injunction was rendered

3 Conversely, Cariou's argument, taken to its extreme, seems to violate public
policy, because it would discourage parties from resolving issues between
themselves, and from complying with injunctions until their appeals can be heard.
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partially moot. To the contrary, that became another basis for this Couii to find in
favor of appellants, and vacate the injunctions.4

Moreover, unlike the defendants in Consumers' Union and the other cases
the Paintings and

cited by Cariou, Appellants fully intend to resume their sales of

other enjoined activity if

the Injunctions are vacated and the Order reversed.

Indeed, for this very reason, the Stipulation was drafted to remain in place only

temporarily, until this appeal is decided. Cf Dejohn v. Temple Univ., 537 F.3d 301,
309-1 1 (3d Cir. 2008) (injunction is not rendered moot by voluntarily cessation of

enjoined activity, unless it is absolutely clear that activities wil not resume in the
the injunction).

absence of

If Appellants prevail on this appeal and the Injunctions are dissolved,

Appellants wil no longer be required to comply with either the Injunctions or the
Stipulation, which enforces portions of

the Injunctions pending appeaL. Thus, a

favorable decision on this appeal wil give Appellants immediate, tangible benefits.
4 The remainder of Cariou' s cases are equally irrelevant. See Robert Stigwood

Group Ltd. v. Hurwitz, 462 F.2d 910 (2d Cir. 1972) (appeal from denial of
there is no reasonable expectation that wrong wil
not moot ifit
to continue unionization activities); United States v. W T.
wrongful
conduct did not render the case moot, but Court's denial of injunction was a proper
discretion); Kuklachev v. Gelfman, 629 F. Supp. 2d 236 (E.D.N.Y.
2008) (plaintiff s motion seeking injunction is moot absent reasonable expectation
that wrongful conduct wil recur); Am. Express Travel Related Servs. Co., Inc. v.
MasterCard Intl Inc., 776 F. Supp. 787 (S.D.N.Y. 1991) (same).
preliminary injunction is moot if

be repeated); Allee v. Medrano, 416 U.S. 802,811-12 (l974) (relief

would allow plaintiff

Grant Co.. 345 U.S. 629,632,635-36 (1953) (defendants' cessation of

exercise of

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Appellants continue to have a concrete interest in the outcome of this appeal,
which is therefore not moot. See In re Flanagan, 503 F.3d 171, i 78 (2d Cir. 2007)

("When an appellant retains an interest in a case so that a favorable outcome could
redound in its favor, the case is not moot.").

POINT II
ALL THREE INJUCTIONS ARE IMMEDIATELY APPEALABLE
WITHOUT A SHOWING OF SERIOUS CONSEQUENCES,
BUT SERIOUS CONSEQUENCES DO EXIST
In addition to the permanent injunction restraining Appellants from
infringing Cariou' s copyright, the district court also issued two mandatory

requested in Cariou's

injunctions, both essentially copied from the relief

Complaint. Cariou incorrectly argues that these injunctions are not appealable
because they do not have "serious consequences," but all three injunctions are
immediately appealable as of

right, under 28 U.S.C. § 1292(a)(l), without the need

for Appellants to show "serious consequences." See Commodity Futures Trading
Comm. v. Walsh, 618 F.3d 218,223-25 (2d Cir. 2010) (orders which grant

injunctions are automatically appealable as of right, whether or not they have

serious or immediate consequences); Saudi Basic Indus. Corp. v. Al-Jubail
Petrochemical Co., 364 F.3d 106, 111 (3d Cir. 2004) (same).5

5 Cariou cannot rely on Carson v. Am. Brands, Inc., 450 U.S. 79, 84 (l981), where

the Supreme Court held that an order which does not deny an injunction, but which
merely has the practical effect of doing so, may be immediately appealed under 28
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Cariou cannot, and does not, deny that the Court granted an injunction under
17 U.S.C. § 502, prohibiting Appellants from further infringing Cariou's copyright.

See Order p.36 ("Defendants. . . are hereby enjoined and restrained permanently

from infringing the copyright in the Photographs. . ."). Therefore, the Order is
immediately appealable, without the need for any additional showing.6 Cariou's
motion must be denied on this ground alone, and, as such, this Court need not
consider Cariou' s remaining argument that other portions of the Injunctions are not

really injunctions, but are instead merely equitable orders, without serious
consequences.
However, if

this Court were inclined to reach Cariou's additional arguments,

they are equally without merit. First, these injunctions have serious consequences.
For each additional day that the Injunctions are in effect, Appellants are prevented

U.S.C. § 1292(a)(l) if an appellant can also show "serious, perhaps irreparable,
consequences." The Second Circuit has expressly held that there is no need to

make this additional "Carson showing" for orders which explicitly grant
injunctions. See Commodity Futures, 618 F.3d at 224 ("Carson does not impose
an additional 'serious consequences' requirement for appellate jurisdiction over
orders that explicitly grant, continue, modify, refuse or dissolve injunctions and
thereby meet the plain terms of

the statute.").

6 Because this injunction is inextricably bound up with, and premised on, the
partial summary judgment on liability, the underlying
the summary judgment are raised on this appeaL. See, e.g., Cross Med.
Prods., Inc. 424 F.3d at 1301 (appeal from injunction prohibiting further infringing
use requires court to consider underlying grant of summary judgment which found
use to be infringing); LaForest v. Former Clean Air Holding Co., Inc., 376 F.3d
48,51, (2d Cir. 2004); United States v. Allen, 155 F.3d 35,39-40 (2d Cir. 1998).
district court's grant of

merits of

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II

from possessing, controlling, copying, displaying, publishing, advertising,

promoting, selling, marketing, or distributing the Paintings, with sales prices

ranging up to the millions, or the Catalogs. Likewise, Appellants have been forced
the district court's rulings,

the Paintings of

to inform all known owners of

including her ruling that the Paintings cannot publicly be displayed, thereby
eviscerating important rights of collectors who were not before the district court.

Until this Court vacates this injunction and Appellants can recall and/or correct the
letters, Appellants are forced to live with the continued impact they have on

important and long-standing business relationships. Moreover, until reversed or
vacated, this Order affects, or potentially affects, each of the existing owners, who
were not before the district court, but who may nevertheless continue to feel bound
by the Order, and the indirect instructions not to display the Paintings in public.
Second, the two additional injunctive paragraphs are mandatory injunctions,
and thus appealable as of

right with or without "serious consequences."

Specifically, the Order mandates that: "Defendants shall within ten days. . . deliver
up for impounding, destruction, or other disposition, as (Cariou) determines, all

infringing copies of the Photographs, including the Paintings and unsold copies of

the Canal Zone exhibition book. .." This is an injunction. Federal Rule of Civil
Procedure 65 - which applies to all injunctions - was amended in 2001 to make it
clear that copyright impoundment orders fall within Rule 65. See Fed. R. Civ. P.

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65(t); accord Digital Filing Sys., L.L.c. v. Aditya Intl, 323 Fed. App'x 407,410,

420 (6th Cir. 2009) (summary order) (post-trial order requiring impoundment and
destruction is an injunction).

Cariou argues that this is an "equitable order," not an injunction, but cites no

case to support his argument. Instead, he cites cases stating that impoundment and
destruction are discretionary remedies. This argument misses the point.
Injunctions are equitable, discretionary remedies, and a court's discretion to grant
or deny injunctive relief does not make the resulting order any less of an
injunction. See, e.g., Rosco, Inc. v. Mirror Lite Co., 2006 U.S. Dist. LEJCIS 73366,

at * 10 (E.D.N.Y. Sept. 29, 2006) ("Whether to grant or deny a permanent

injunction is within the district court's equitable discretion") (Internal citation
omitted); Sanofi-Synthelabo v. Apotex, Inc., 492 F. Supp. 2d 353, 397 (S.D.N.Y.

2007) (same).?

7Cariou's cases do not support his position. In RSO Records, Inc. v. Peri, 596 F.
Supp. 849, 863-64 (S.D.N.Y. 1984) the district court stated that it had discretion to
order destruction of infringing materials, but nothing in RSO suggests that any
resulting order would not be an injunction. Macewen Petroleum, Inc. v. Tarbell,
136 F.3d 263,264 (2d Cir. 1998), citing Donlon Indus. v. Forte, 402 F.2d 935,937

(2d Cir. 1968), held that an order imposing a litigation bond was not an injunction,
and was also not appealable as a collateral order because exercises of discretion are
not generally appealable under the collateral order doctrine. Likewise, Midway
MIg. CO. v. Omni Video Games, Inc., 668 F.2d 70 (lst Cir. 1981), held that the

district court discretion to vacate an ex-parte order of impoundment and suppress
evidence was not appealable as a collateral order. Appellants here are relying on
the express statutory grant of28 U.S.C. § 1292(a)(1), not the collateral order
doctrine, and therefore these cases are inapposite.
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The Order mandating impoundment and/or destruction is subject to Rule 65.

It was directed towards the Appellants, enforceable by contempt, and granted the
relief

requested in Cariou's Complaint. It is therefore immediately appealable.

See, e.g., Cohen v. Bd. 01

Trs. olthe Univ. 01 Med. And Dentistr oINJ., 867 F.2d

1455, 1464-68 (3d Cir. 1989); Commodity Futures, 618 F.3d at 224-25; see also,

Westar Energy, 552 F.3d at 1223 ("Orders which themselves grant or deny

injunctive relief are appealable as injunctions under 28 U.S.C. § 1292(a)(l)

without the Carson showing. Since the district court's order expressly granted
relief, it is immediately appealable notwithstanding the court's failure to label the
relief as injunctive") (citation omitted); accord United States v. E-Gold, Ltd., 521

F.3d 411,415 (D.C. Cir. 2008) (order directing defendants to take specific actions
was immediately appealable, even if not expressly denominated as an injunction:

"An injunction is an injunction is an injunction. That which we call an injunction
by any other name is reviewable on interlocutory appeaL."); Anderson v. Davila,

125 F.3d 148, 154-55 (3d Cir. 1997) (order which is directed to a party,

enforceable by contempt, and grants some of relief sought in complaint is an
injunction subject to immediate appeal, regardless what label court put on it).
Indeed, the Midway Court did not even consider (let alone decide) whether the
order was appealable under 28 U.S.C. § 1292(a)(l), perhaps because the order was
an ex-parte TRO, not an injunction, and thus not subject to Section 1292(a)(l).
Moreover, RSO and Midway predate the 2001 amendment to Rule 65, stating that

copyright-impoundment orders are injunctive.
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Likewise, the third injunctive paragraph, requiring Appellants to notify each
known owner of any Painting of

the district court's view that the Paintings infringe

Cariou's copyright and therefore cannot be displayed, is a mandatory injunction,
subject to immediate appeaL. See, Duhn Oil, 367 Fed. App'x at 149 (although

court stated it was not granting injunction, "it specifically imposed. . . an
affirmative obligation on (defendant) to provide instructions to its. . . customers,
which unambiguously state that the lockscrews are not to be engaged during
installation or use, . . . . Therefore, the order is an immediately appealable

injunction.") (internal quotation and citation omitted).8 At the very least, it has the
effect of granting an injunction, and is therefore appealable, given its ongoing,

serious consequences. See HBE Leasing Corp. v. Frank, 48 F.3d 623, 632-33 (2d
Cir. 1995) (order has practical effect of granting an injUnction "if it is directed to a

party, enforceable by contempt, and designed to accord or protect some or all of
the substantive relief sought in the complaint,,).9

8 Petrello v. White, 533 F.3d 110, 115-16 (2d Cir. 2008), is not to the contrary.
There, this Court held that an order granting plaintiff s motion for contractual
specific performance, which did not specify exactly what defendant was supposed
to do or a deadline for him to do it, was not a mandatory injunction because it was
not specific enough to be punishable by contempt. That case is inapposite here,
because Appellants understood that the ten-day time period likely applied to this
injunctive paragraph as well, and indeed sent the letters on March 28, 2011, within
the district court's Order, and because here the Order was specific
about what Appellants were required to do.
9 The Second Circuit has not yet determined whether a showing of serious
consequences is required for immediate appeal of every order which has the

ten days of

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In sum, the district court issued a permanent injunction against future

infringement under 17 U.S.C. § 502; a permanent injunction mandating
impoundment, destruction, or other disposition; and a mandatory injunction

requiring affirmative acts by Appellants. All three injunctions currently remain in

full force and effect, and Appellants' appeal from them is not "moot." Each of
these injunctions is immediately appealable as of right without any further
showing.

POINT III
THE COURT SHOULD HEAR THE APPEAL ON THE MERITS
NOW RATHER THAN AWAIT A HEARING ON DAMAGES
Appellants have an absolute right to take this appeal pursuant to 28 U.S.C. §

1292(a)(1). Moreover, although the district court initially denied Appellants'

motion to stay the hearing on damages pending the determination of this appeal,
the court later reversed its position and adjourned the damages hearing, sine die.
holding a trial on

Clearly, the district court recognized the potential inefficiency of

damages before this Court has had an opportunity to review the Order, including

the imposition of the Injunctions and the underlying findings of liabilty which
supported the Injunctions.

practical effect of granting an injunction. See Commodity Futures, 618 F.3d at
224-25, citing HBE Leasing, 48 F.3d at 632 n.5; see also, e.g., Saudi Basic Indus.,
this showing were necessary here,
and it is not, it is easily made.
Corp., 364 F.3d at 111. As noted supra, even if

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Should this Court reverse or vacate the Order in whole or in part, there may

be no need for a trial on damages and/or that trial may be significantly limited in

scope. Indeed, if the district court proceeds before this appeal is heard, there may

ultimately be a need for the entire damages trial to be redone. Conversely, this
Court can squarely address all the findings made by the district court (including her
imposition of Injunctions, and her finding that the Paintings were not fair use)
without waiting for the conclusion of any trial on damages.

Thus, over and above the fact that Appellants have a statutory right to

proceed with this appeal on the merits, judicial efficiency wil be served here by
doing so.

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CONCLUSION
For all of

the reasons stated, Cariou's motion to dismiss the appeal without

prejudice should be denied.

Dated: New York, New York
June 1,2011
Respectfully submitted,

WITHERS BERGMAN LLP

BOIES, SCHILLER & FLEJCR LLP

By: Isl Holls Gonerka Bart

By: Isl George Carpinello

Hollis Gonerka Bart
Chaya F. Weinberg-Brodt

Jonathan Schiler

430 Park Avenue, 10th Floor

George Carpinello
Joshua 1. Schiler
575 Lexington Ave
New York, NY 10022

New York, NY 10022-3505

Phone: [phone]

Phone: [phone]

Fax: [phone]

Fax: [phone]

Attorneys lor Delendant-Appellant

Dara G. Hammerman

Azmina N. J asani

Attorneys lor Delendants-Appellants

Richard Prince

Gagosian Gallery, Inc. and Lawrence
Gagosian

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