Bryan Pringle v. William Adams Jr et al

Filing 84

OPPOSITION to MOTION for Preliminary Injunction re: copyright infringement 73 and Joinder in Other Defendants' Oppositions filed by Defendants Interscope Records, UMG Recordings Inc. (Attachments: # 1 Declaration Rowland, # 2 Declaration Youssef, # 3 Declaration Burrow, # 4 Exhibit A)(Pearson, Heather)

CALDWELL LESLIE & PROCTOR, PC
1 LINDA M. BURROW, State Bar No. 194668
[e-mail]
2 HEATHER PEARSON, State Bar No. 235167
[e-mail]
3 1000 Wilshire Boulevard, Suite 600
Los Angeles, California 90017-2463
4 Telephone: [phone]
Facsimile: [phone]
5
Attorneys for Defendants
6 UMG RECORDINGS, INC. and
INTERSCOPE RECORDS
7
8

UNITED STATES DISTRICT COURT

9

CENTRAL DISTRICT OF CALIFORNIA

10

SOUTHERN DIVISION

11
12 BRYAN PRINGLE, an individual,

Case No. SACV 10-1656 JST (RZx)

13

JOINDER TO OPPOSITIONS AND
OPPOSITION BY DEFENDANTS
UMG RECORDINGS, INC. AND
INTERSCOPE RECORDS TO
MOTION FOR PRELIMINARY
INJUNCTION; DECLARATIONS
OF LINDA M. BURROW, TOM
ROWLAND, AND IKE YOUSSEF;
EXHIBIT

14

Plaintiff,
v.

15 WILLIAM ADAMS, JR.; STACY
FERGUSON; ALAN PINEDA; and
16 JAIME GOMEZ, all individually and
collectively as the music group the
17 Black Eyed Peas; DAVID GUETTA;
FREDERICK RIESTERER; UMG
18 RECORDINGS, INC.; INTERSCOPE
RECORDS; EMI APRIL MUSIC,
19 INC.; HEAPHONE JUNKIE
PUBLISHING, LLC.; WILL.I.AM
20 MUSIC, LLC; JEEPNEY MUSIC,
INC.; TAB MAGNETIC
21 PUBLISHING; CHERRY RIVER
MUSIC, CO.; SQUARE RIVOLI
22 PUBLISHING; RISTER EDITIONS;
and SHAPIRO, BERNSTEIN & CO.,
23
Defendants.
24

Hearing Date:

January 31, 2011

Time:

10:00 a.m.

Courtroom

10A

Trial Date:

None Set

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TABLE OF CONTENTS

1

Page

2
3
4
5

I.

INTRODUCTION............................................................................................. 1

II.

PLAINTIFF WILL NOT SUFFER IRREPARABLE HARM
WITHOUT THIS EXTRAORDINARY RELIEF ............................................ 2

6

A.

Plaintiff is Not Entitled to a Presumption of Irreparable Harm.............. 3

7

B.

Plaintiff Has Not Been Irreparably Harmed ........................................... 5

8

1.
2.

9
10
11 III.
12

Plaintiff’s Delay In Bringing This Action Fatally
Undermines His Claim of Harm................................................... 5
Plaintiff All But Concedes His Harm Can Be Addressed
Through Money Damages ............................................................ 7

THE BALANCE OF HARDSHIPS WEIGHS AGAINST THE
PROPOSED INJUNCTION.............................................................................. 7

IV.

A PRELIMINARY INJUNCTION WOULD NOT SERVE THE
PUBLIC INTEREST.......................................................................................10

14 V.

TO PROTECT UMG, PLAINTIFF WOULD HAVE TO POST AN
IMMENSE BOND ..........................................................................................12

13
15
16

VI.

CONCLUSION ...............................................................................................14

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TABLE OF AUTHORITIES

2

Page(s)

3 Cases
4 A&M Records, Inc. v. Napster, Inc.,
239 F.3d 1004 (9th Cir. 2001)......................................................................... 6
5
6 Abend v. MCA, Inc.,
863 F.2d 1465 (9th Cir. 1988)...............................................................3, 7, 10
7
8 Apple Computer, Inc. v. Franklin Computer Corp.,
714 F.2d 1240 (3d. Cir. 1983).......................................................................10
9
10 Aurora World, Inc. v. Ty Inc.,
2009 WL 6617192 (C.D. Cal. Dec. 15, 2009) ..........................................3, 11
11
12 Autoskill Inc. v. Nat’l Education Support System, Inc.,
994 F.2d 1476 (10th Cir. 1993).....................................................................10
13
14 Barahona-Gomez v. Reno,
167 F.3d 1228 (9th Cir. 1999).......................................................................12
15
16 Cal ex. rel. Van De Kamp v. Tahoe Regional Planning Agency,
766 F.2d 1319 (9th Cir. 1985).......................................................................13
17
18 Calmar, Inc. v. Emson Research, Inc.,
838 F. Supp. 453 (C.D. Cal. 1993).................................................................. 7
19
20 Canopy Music, Inc. v. Harbor Cities Broad., Inc.,
950 F. Supp. 913 (E.D. Wis. 1997) ...............................................................10
21
22 Chase-Riboud v. Dreamworks, Inc.
987 F. Supp. 1222 (C.D. Cal. 1997)................................................................ 9
23
24 Concrete Machinery Co. Inc. v. Classic Lawn Ornaments, Inc.,
843 F.2d 600 (1st Cir. 1988) .........................................................................10
25
26 eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) ........................................................................................ 3
27
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14
15
16
17
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21
22
23
24
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Frank’s GMC Truck Center, Inc. v. General Motors Corp.,
847 F.2d 100 (3d Cir. 1988) ..........................................................................13
Friends of the Earth v. Brinegar,
518 F.2d 322 (9th Cir. 1975).........................................................................13
Gillette Co. v. Ed Pinaud, Inc.,
178 F. Supp. 618 (S.D.N.Y. 1959).................................................................. 5
Gilman v. Schwarzenegger,
2010 WL 4925439 (9th Cir. Dec. 6, 2010) .................................................1, 2
High-Tech Medical Instrumentation, Inc.v . New Image Industries, Inc.,
49 F.3d 1551 (Fed. Cir. 1995).....................................................................4, 5
International Jensen, Inc. v. Metrosound U.S.A., Inc.,
4 F.3d 819 (9th Cir. 1993)............................................................................... 8
LucasFilm Ltd. v. Media Market Group, Ltd.,
182 F. Supp.2d 897 (N.D. Cal. 2002) ............................................................. 9
Mead Johnson & Co. v. Abbott Laboratories,
201 F.3d 883 (7th Cir. 2000).........................................................................12
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,
518 F. Supp.2d 1197 (C.D. Cal. 2007)............................................................ 3
Nintendo of America, Inc. v. Lewis Galoob Toys, Inc.,
16 F.3d 1032 (9th Cir. 1994).........................................................................12
Northwestern Bell Tel. Co. v. Bedco of Minn, Inc.,
501 F. Supp. 299 (D. Minn. 1980) ................................................................12
Oakland Tribune, Inc. v. Chronicle Publishing Co., Inc.,
762 F.2d 1374 (9th Cir. 1985)......................................................................... 5
Playboy Enters. v. Netscape Communications Corp.,
55 F. Supp. 2d 1070 (C.D. Cal. 1999)............................................................. 5

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21
22

Protech Diamond Tools, Incorporation v. Liao,
2009 WL 1626587 (N.D. Cal. June 8, 2009) ..............................................4, 6
Reebok Intern. Ltd. v. J. Baker, Inc.,
32 F.3d 1552 (Fed. Cir. 1994)......................................................................... 4
Santa Rosa Mem. Hosp. v. Maxwell-Jolly,
380 Fed. Appx. 656 (9th Cir. 2010) ..............................................................13
Sargent v. American Greetings Corp.,
588 F. Supp. 912 (D.Ohio. 1984).................................................................... 8
Save our Sonoran, Inc. v. Flowers,
408 F.3d 1113 (9th Cir. 2005).......................................................................13
Stormans, Inc. v. Selecky,
586 F.3d 1109 (9th Cir. 2009).......................................................................10
Summit Entertainment, LLC v. Beckett Media, LLC,
2010 WL 147958 (C.D. Cal. Jan. 12, 2010) ................................................... 4
Taylor Corp. v. Four Seasons Greetings, LLC,
403 F.3d 958 (8th Cir. 2005)........................................................................... 6
Trust Co. Bank v. Putnam Publ'g Group, Inc.,
5 U.S.P.Q.2d 1874 (C.D.Cal. 1988)..........................................................9, 11
Winter v. Natural Resources Defense Council, Inc.,
555 U.S. 7 (2008) ........................................................................................2, 3
Statutes

23 Fed. R. Civ. P. 65(c) ................................................................................................11
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1 I.

INTRODUCTION

2

Defendants UMG Recordings, Inc. and Interscope Records (collectively,

3 “UMG”) hereby oppose the Motion for a Preliminary Injunction filed by Plaintiff
4 Bryan Pringle. Instead of repeating the arguments and evidence presented by other
5 Defendants, UMG hereby joins in their Oppositions (Docket (“Dkt.”) Nos. 81, 83).
6 UMG firmly agrees with its co-Defendants that Plaintiff has failed to establish that
7 he is likely to prevail on the merits of his claim, which alone is reason enough to
8 deny this motion for a Preliminary Injunction. See Gilman v. Schwarzenegger, 2010
9 WL 4925439 at *3 (9th Cir. Dec. 6, 2010) (providing that “[a] plaintiff seeking a
10 preliminary injunction must establish that he is likely to succeed on the merits, that
11 he is likely to suffer irreparable harm in the absence of preliminary relief, that the
12 balance of equities tips in his favor, and that an injunction is in the public interest”)
13 (emphasis added).
14

UMG files this brief to support the other Defendants’ Oppositions, and

15 emphasize that this Motion should be denied because, even if Plaintiff could
16 demonstrate a possibility of success on the merits (which he cannot), he is still not
17 entitled to injunctive relief, for at least four reasons:
18



First, Plaintiff delayed nearly twenty months from the release of the

19

alleged infringing work, the Black Eyed Peas’ “I Gotta Feeling,” (the

20

“Song”) to bring this motion—an unreasonably long period that negates

21

any finding of irreparable harm.

22



Second, Plaintiff’s Motion makes clear that any harm he may have

23

suffered is not irreparable. Rather, Plaintiff merely seeks through his

24

lawsuit a share of the “millions of dollars” he claims Defendants have

25

received from the distribution of the Song.

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

Third, when balancing the harms caused by the injunction, this Court
must account for the incalculable costs that UMG would incur in
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complying with his proposed injunction, which far outweighs any

2

possible harm Plaintiff may incur during this litigation.

3



Finally, Plaintiff fails to offer any evidence of any “public interest,”

4

that would be served should an injunction issue in this case.

5

In addition, contrary to Plaintiff’s apparent belief that he is entitled to the

6 benefit of an injunction without satisfying his burden to post a bond (a position for
7 which there is no support), any injunction in this case must be secured by an
8 immense bond, and even that bond could protect against the intangible harm of loss
9 of good will and reputation that the injunction would cause UMG.
10

“‘A preliminary injunction is an extraordinary and drastic remedy; it is never

11 awarded as of right.’” Gilman, 2010 WL 4925439 at *3 (quoting Munaf v. Geren,
12 553 U.S. 674, 689-90 (2008) (quotation marks and citations omitted)). Plaintiff has
13 failed to meet his burden to satisfy any of the factors for injunctive relief.
14 Accordingly, for the reasons set forth below, and for the reasons described in the
15 Oppositions filed by UMG’s co-Defendants, Plaintiff’s motion should be denied.
16 II.

PLAINTIFF WILL NOT SUFFER IRREPARABLE HARM WITHOUT

17

THIS EXTRAORDINARY RELIEF

18

This Court cannot issue an injunction in the absence of a finding that Plaintiff

19 is likely to suffer irreparable harm. See Winter v. Natural Resources Defense
20 Council, Inc., 555 U.S. 7, 129 S.Ct. 365, 375-76 (2008) (discussing the Supreme
21 Court’s “frequently reiterated standard requir[ing] plaintiffs seeking preliminary
22 relief to demonstrate that irreparable injury is likely in the absence of an injunction”)
23 (emphasis in original). It is clear, however, from Plaintiff’s Motion, that he would
24 not suffer any “irreparable” harm in the absence of an injunction. Indeed, Plaintiff
25 appears to believe that he is not obligated to supply any evidence of harm at all;
26 instead, according to Plaintiff, this Court may merely presume harm from his
27 (defective) infringement claims. The law does not support this presumption, and
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1 any presumption in this case would be negated by Plaintiff’s twenty-month delay in
2 bringing this motion. (See Dkt. No. 15.)
3

A.

Plaintiff is Not Entitled to a Presumption of Irreparable Harm

4

Despite Plaintiff’s assertion otherwise, this Court may not merely assume

5 irreparable harm simply because this is a copyright infringement case. Indeed,
6 injunctive relief has never been automatic, even in a case of copyright infringement.
7 See Abend v. MCA, Inc., 863 F.2d 1465 (9th Cir. 1988) (finding infringement but
8 declining to enjoin distribution of defendant’s film where the plaintiff “can be
9 compensated adequately for the infringement by monetary compensation”).
10 Moreover, the validity of any presumption of harm has been called into serious
11 question by the Supreme Court’s decisions in eBay Inc. v. MercExchange, L.L.C.,
12 547 U.S. 388 (2006), in which the Court held expressly that there can be no
13 presumption of irreparable harm with respect to permanent injunctions in
14 intellectual property cases, see 547 U.S. at 394, and Winter, in which the Court
15 rejected the standard then in effect in the Ninth and other Circuits, pursuant to which
16 an injunction could be entered based only on a “possibility” of irreparable harm
17 where the plaintiff demonstrated a strong likelihood of prevailing on the merits.1
18 See Winter, 555 U.S. at ---, 129 S.Ct. at 375-76. Since eBay and Winter, courts in
19 this District and elsewhere have cast serious doubt on the validity of the
20 presumption of irreparable harm in assessing the need for preliminary relief. See,
21 e.g., Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197,
22 1212-13 (C.D. Cal. 2007) (Wilson, J.) (citing cases and observing that “a significant
23 number” of courts have determined that the presumption no longer applies); see also
24 Aurora World, Inc. v. Ty Inc., No. CV09-08463, 2009 WL 6617192, at *37 (C.D.
25
1

Of course, as Plaintiff has failed to establish that he is likely to prevail on the
merits at all, let alone demonstrate a strong likelihood, this standard would not have
27 applied in this case.
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1 Cal. Dec. 15, 2009) (Morrow, J.) (declining to apply presumption of irreparable
2 harm in trademark case).2
3

Even if irreparable harm could be presumed in some cases, that presumption

4 has been rebutted here. A presumption merely “shifts the ultimate burden of
5 production ... onto the alleged infringer”—it does not override the evidence on the
6 record. See Reebok Intern. Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1556 (Fed. Cir.
7 1994). A presumption of irreparable harm is rebutted by delay in bringing a motion
8 for an injunction, or where monetary damages alone are sufficient to compensate the
9 plaintiff. High-Tech Medical Instrumentation, Inc.v . New Image Industries, Inc., 49
10 F.3d 1551, 1556-57 (Fed. Cir. 1995) (applying presumption of irreparable harm, but
11 finding presumption rebutted based upon seventeen-month delay in bringing action
12 and an absence of evidence that monetary damages would be inadequate); see also
13 Protech Diamond Tools, Incorporation v. Liao, 2009 WL 1626587, *6 (N.D. Cal.
14 June 8, 2009) (acknowledging the existence of a presumption of harm, but finding
15 presumption rebutted that where the plaintiff had waited two years after the alleged
16 infringement to file a complaint, and then waited another five months to file a
17 motion for a preliminary injunction).
18

As discussed below, it is clear that any presumption of harm has been negated

19 by Plaintiff’s unexplained twenty-month delay in filing this Motion, and any harm
20 Plaintiff may have suffered can be easily addressed through monetary damages.
21
22
23
24

2

Summit Entertainment, LLC v. Beckett Media, LLC, No. CV 09-8161, 2010 WL
25 147958 (C.D. Cal. Jan. 12, 2010) (Guttierez, J.), the unpublished district court case
on which Plaintiff relies, is not to the contrary. In Summit Entertainment, the Court,
26 after noting case law describing this “presumption,” went on to make a factual
determination that the plaintiff had, in fact, demonstrated that irreparable harm was
27 likely. See id. at *4.
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B.

Plaintiff Has Not Been Irreparably Harmed
1.

Plaintiff’s Delay In Bringing This Action Fatally Undermines
His Claim of Harm

Plaintiff all but concedes that he has not suffered irreparable harm. Plaintiff

5 admits that Defendants’ alleged infringement began upon release of “I Gotta
6 Feeling” in May 2009, twenty months ago. See Declaration of Bryan Pringle
7 (“Pringle Decl.”), ¶ 10; see also Declaration of Ike Youssef (“Youssef Decl.”), ¶ 2 .
8 Plaintiff’s attorney first contacted counsel for Defendants concerning “I Gotta
9 Feeling” in May of 2010—more than six months ago—but did not either file a
10 complaint or seek an injunction at that time. See Declaration of Linda M. Burrow
11 (“Burrow Decl.”), Exh. A. Indeed, Plaintiff did not file his complaint until several
12 weeks after settlement discussions with Defendants had broke down, see Burrow
13 Decl., ¶¶ 3-4, waited an additional month before seeking a temporary restraining
14 order, and then waited an additional five-and-a-half weeks to bring this Motion. Id.
15

“Plaintiff's long delay before seeking a preliminary injunction implies a lack

16 of urgency and irreparable harm.” Oakland Tribune, Inc. v. Chronicle Publishing
17 Co., Inc., 762 F.2d 1374, 1377 (9th Cir. 1985). A “preliminary injunction is sought
18 upon the theory that there is an urgent need for speedy action to protect the
19 plaintiff's rights. By sleeping on its rights a plaintiff demonstrates the lack of need
20 for speedy action . . . .” Gillette Co. v. Ed Pinaud, Inc., 178 F. Supp. 618, 622
21 (S.D.N.Y. 1959) (denying preliminary injunction where Plaintiff waited six months
22 after Defendant started marketing a product to request injunction for alleged
23 trademark infringement); see also Playboy Enters. v. Netscape Communications
24 Corp., 55 F. Supp. 2d 1070, 1080, 1090 (C.D. Cal. 1999) (Stotler, J.) (denying
25 preliminary injunction because plaintiff's five-month delay in seeking injunctive
26 relief demonstrated lack of any irreparable harm), aff'd, 202 F.3d 278 (9th Cir.
27 1999); see also High-Tech Medical, 49 F.3d at 1556-57 (finding seventeen-month
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1 delay in bringing action “a substantial period of delay that militates against the
2 issuance of a preliminary injunction”); see also Protech Diamond Tools, 2009 WL
3 1626587 at *6 (finding “delay alone…sufficient to undermine the Plaintiff’s claim
4 of immediate, irreparable harm”).
5

The absence of irreparable harm to Plaintiff is further bolstered by Plaintiff’s

6 failure even to register his work in the eleven years since it was created. See Pringle
7 Decl., ¶ 5 (stating that he created the derivative of “Take a Dive” in 1999, but
8 registered the work with the Copyright Office in 2010). As Pringle had registered
9 previous works with the Copyright Office, see id., ¶ 4, he was well-aware of the
10 steps he needed to take to invoke the Copyright Act’s protections. Nevertheless,
11 Pringle proceeded to submit CDs with his unregistered work to music labels,
12 internet websites, and virtually anyone else who would listen. See id., ¶ 7. If
13 Pringle himself could not be bothered to make even the most basic efforts at
14 protecting his work despite more than a decade of distribution, he cannot now claim
15 that further distribution of “I Gotta Feeling” would harm him irreparably. 3
16
17
18

3

A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001), on which
19 Plaintiff relies, is not to the contrary. In Napster, the Ninth Circuit held that the
20 activities of the Napster file-sharing service, which allowed users to download
copyrighted sound recordings for free, had an irreparable “deleterious effect on the
21 present and future digital download market” for such recordings. 239 F.3d at 1017.
22 This case does not concern an entire market, as was the case in Napster, but a single
work, which Plaintiff concedes he has never sold. Similarly inapposite is Taylor
23 Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958 (8th Cir. 2005), in which the
24 court concluded that the plaintiff’s decision not to seek monetary relief did not
preclude it from obtaining a permanent injunction following trial—particularly
25 where, as in that case, the defendants’ use of the plaintiff’s copyrighted greeting
26 cards precluded the plaintiff from making any use whatsoever of that material
thereafter. Id. at 962, 967-68.
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2
3

2.

Plaintiff All But Concedes His Harm Can Be Addressed
Through Money Damages

It is axiomatic that, for an injunction to issue, the harm to be prevented must

4 be irreparable—in other words, not redressible through money damages alone. See,
5 e.g. Calmar, Inc. v. Emson Research, Inc., 838 F. Supp. 453, 455-56 (C.D. Cal.
6 1993) (Tevrizian, J.) (holding that plaintiff was not irreparably harmed where the
7 defendant was “financially sound and capable of satisfying [any] monetary damage
8 award”); see also Abend, 863 F.2d at 1479 (declining to enjoin further distribution
9 of the film Rear Window because the Plaintiff could “be compensated adequately for
10 the infringement by monetary compensation”).
11

Here, after waiting nearly two years since the Song was released, Plaintiff

12 now seeks an injunction on the grounds that, to date, the Defendants have reaped
13 “millions of dollars of profit” from exploitation of the Song. See Mot. at 21. If
14 Plaintiff can establish that the Song infringes his work (which, for the reasons set
15 forth in the Oppositions filed by UMG’s co-Defendants, he cannot), it is clear that
16 what he seeks is not the protection of his work for some higher purpose, but a share
17 of the Defendants’ profits arising from the use of that work. Such harm can
18 unquestionably be ameliorated with monetary damages, and Plaintiff is therefore not
19 entitled to an injunction.
20 III.

THE BALANCE OF HARDSHIPS WEIGHS AGAINST THE

21

PROPOSED INJUNCTION

22

Plaintiff asks this Court to (i) prohibit UMG from manufacturing or

23 distributing any additional copies of the Black Eyed Peas album, “The E.N.D.”,
24 which contains the Song, (ii) require UMG to remove the Song from digital
25 distribution, such as through iTunes, (iii) prohibit UMG from entering into any
26 further third-party license agreements and (iv) to place all profits relating to the
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1 Song in an escrow accounting pending resolution of this case.4 Not only does
2 Plaintiff fail to offer any evidence of irreparable harm, but it is clear from his motion
3 that UMG would suffer disproportionally if his requested injunction should issue.
4

An injunction may not issue unless the balance of harms favors the moving

5 party. See International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822
6 (9th Cir. 1993). Where, as in this case, the Plaintiff fails to establish a likelihood of
7 success on the merits of his claim, he is not entitled to an injunction unless he can (i)
8 demonstrate that there are “serious questions” going to the merits and that the
9 balance of hardships tips sharply in his favor. Id.
10

The balance of harms sharply favors the denial of Plaintiff’s Motion. The

11 Song, “I Gotta Feeling” was the second – and by far the highest-selling, single from
12 the Black Eyed Peas’ immensely popular album, “The E.N.D” (the “Album”). See
13 Youssef Decl., ¶¶ 2, 3. Should, as Plaintiff requests, the Defendants be prohibited
14 from manufacturing or shipping albums containing the Song, UMG would suffer at
15 least hundreds of thousands of dollars in damage, including costs relating to revising
16 the Album’s artwork, remastering the Album and manufacturing new copies of the
17 Album and the loss of the ability to sell more than $100,000 worth of existing, but
18 yet undistributed, copies of the album. Id., ¶ 3. In addition, because of the “I Gotta
19 Feeling’s” vast popularity, it is likely that a significant number of consumers would
20 decline to purchase a copy of the Album that did not include “I Gotta Feeling,”
21 which would cause UMG to suffer further – if unquantifiable – losses. Youssef
22 Decl., ¶¶ 3, 4.
23
4

Plaintiff offers no legal or factual support for his request that Defendants’ profits
be placed in escrow—a remedy usually reserved for circumstances where the
25 defendant is of questionable financial health. See, e.g. Sargent v. American
Greetings Corp., 588 F. Supp. 912, 925 (D.Ohio. 1984) (rejecting request for
26 preliminary injunction to escrow proceeds from sale of alleged infringing works,
where the plaintiff failed to demonstrate a likelihood of success on the merits and
27 where the defendant was financially healthy).
24

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UMG would also suffer a substantial loss of goodwill with retailers – both

2 traditional record stores and digital retailers such as iTunes– if it could no longer sell
3 “I Gotta Feeling.” Id., ¶¶ 3-4. For traditional retailers, this loss of goodwill could
4 have implications for UMG ability to place other product in those stores in the
5 future. Id. at ¶ 4; see also Trust Co. Bank v. Putnam Publ'g Group, Inc., 5
6 U.S.P.Q.2d 1874, 1877 (C.D.Cal. 1988) (Stotler, J.) (refusing to enjoin publication
7 of book alleged to infringe “Gone with the Wind” where, among other things, an
8 injunction would damage the defendant’s “goodwill with wholesalers and retailers
9 would be damaged” and would have an adverse effect on the defendant’s ability to
10 obtain shelf space at stores).
11

UMG would be harmed even further if, as Plaintiff suggests, it were to be

12 prohibited from licensing “I Gotta Feeling” for use in films, television programs,
13 commercials and video games (collectively, “Ancillary Exploitations”). See
14 Declaration of Tom Rowland (“Rowland Decl.”), ¶ 2. “I Gotta Feeling” is one of
15 UMG’s top revenue generating recordings over the past several years, having
16 generated more than $650,000 in license revenue from Ancillary Exploitations. Id.
17 ¶ 4. UMG conservatively estimates that “I Gotta Feeling” will generate at least an
18 additional $300,000 in Ancillary Exploitation revenue over the next two years—
19 revenue that would not be directly replaced if UMG were enjoined from further
20 licensing activity. Id., ¶ 5.
21

These harms, balanced against the minimal harm Plaintiff would suffer should

22 “I Gotta Feeling” continue to be distributed, weigh against the issuance of an
23 injunction. See, e.g. LucasFilm Ltd. v. Media Market Group, Ltd., 182 F.Supp.2d
24 897, 901 (N.D. Cal. 2002) (denying motion for preliminary injunction where the
25 balance of hardships did not tip sharply in the plaintiff’s favor); Chase-Riboud v.
26 Dreamworks, Inc. 987 F. Supp. 1222, 1233 (C.D. Cal. 1997) (refusing to enjoin the
27 release of the film “Amistad” where, although the Plaintiff had raised serious
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1 questions to the validity of her claim, the defendants had invested heavily in the
2 film, and release was imminent).5
3 IV.

A PRELIMINARY INJUNCTION WOULD NOT SERVE THE PUBLIC

4

INTEREST

5

Where an injunction goes beyond the parties, carrying with it a potential for

6 public consequences, the “public interest” becomes relevant to whether an
7 injunction should issue. Stormans, Inc. v. Selecky, 586 F.3d 1109, 1139 (9th Cir.
8 2009). Plaintiff argues conclusorily that “[t]here is a public interest in upholding
9 intellectual property rights such as copyright protections,” that favors an injunction
10 in this case. See Mot. at 22. In each of the cases Plaintiff cites to support his
11 position, however, the plaintiff had established a clear likelihood of success on the
12 merits—which is not present here. See Concrete Machinery Co. Inc. v. Classic
13 Lawn Ornaments, Inc., 843 F.2d 600, 612 (1st Cir. 1988) (“an issue of public policy
14 rarely is a genuine issue if the copyright owner has established a likelihood of
15 success.”)(emphasis added)); Autoskill Inc. v. Nat’l Education Support System, Inc.,
16 994 F.2d 1476 (10th Cir. 1993) (likelihood of success established); Apple Computer,
17 Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1255 (3d. Cir. 1983) (copying
18 admitted).
19

Moreover, none of the cases Plaintiff relies on makes any substantial finding

20 regarding the public interest, or even suggests (as Plaintiff argues) that the public’s
21 interest in upholding copyright protection will always support an injunction on
22
5

27

Plaintiff’s reliance on Canopy Music, Inc. v. Harbor Cities Broad., Inc., 950 F.
Supp. 913 (E.D. Wis. 1997), is misplaced. The court in Canopy Music enjoined
radio station from broadcasting recordings of compositions owned by the plaintiffs
after the plaintiff’s public performance license was terminated. 950 F. Supp. at 915.
The fact of infringement was not in dispute (indeed, the station was in default)—the
only question was whether the equities favored an injunction—and the station was
unlikely to suffer any significant harm if enjoined. Here, unlike Canopy, Plaintiff
has not established any likelihood of success on the merits, and the harm to UMG if
it were to be enjoined would be substantial.

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1 behalf of a claimed copyright holder. Indeed, the Ninth Circuit and courts in this
2 District have denied injunctive relief where, although the plaintiff established a
3 likelihood of success on its infringement claim, the public’s interest in access to an
4 artwork outweighed the need to protect the plaintiff’s rights. In Abend, for example,
5 the Ninth Circuit found that because “an injunction could cause public injury by
6 denying the public the opportunity to view a classic film” (Alfred Hitchcock's Rear
7 Window), monetary damages would adequately compensate the plaintiff for any
8 infringement. 863 F.2d at 1479. Similarly, in Trust Co. Bank, Judge Stotler denied
9 a preliminary injunction that would have prohibited the publication a work alleged
10 to infringe Gone with the Wind, citing the “strong public interest favoring the
11 publication of books and novels.” 5 U.S.P.Q.2d at 1877. This same public interest
12 supports allowing the public access to a popular song like “I Gotta Felling”, and
13 denial of Plaintiff’s request for a preliminary injunction.
14

Neither can Plaintiff obtain a preliminary injunction in this case as part of his

15 apparent one-man effort to “help maintain and further the integrity of the music
16 business.” Mot. at 23. The burden is on Plaintiff to establish that he is entitled to an
17 injunction in this case. See Aurora World, 719 F.Supp.2d at 1125 (providing that
18 the Plaintiff must make a “clear showing” that he is entitled to injunctive relief). A
19 injunction that withdraws a hit song from public access before the Court has
20 determined infringement (indeed, where a finding of infringement is unlikely) does
21 not promote copyright protection or the integrity of the industry. Instead, it creates a
22 vehicle for unsuccessful artists to extort payment from defendants based on false
23 and unproven claims.6
24
25

6

Plaintiff’s attempt to ground his injunction based upon “widespread reports” of
26 other infringement claims against Black Eyed Peas (despite the absence of any
finding of infringement) is both improper and completely without basis in fact or
27 law.
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1 V.

TO PROTECT UMG, PLAINTIFF WOULD HAVE TO POST AN

2

IMMENSE BOND

3

Finally, any injunction issued in this case must be supported by a substantial

4 bond. Although Plaintiff claims that this Court may dispense with the bond
5 requirement entirely, the Federal Rules require Plaintiff to post a bond “to pay the
6 costs and damages sustained by any party found to have been wrongfully enjoined
7 or restrained.” Fed. R. Civ. P. 65(c). The purpose of the bond requirement is
8 threefold: (1) to discourage the moving party from seeking preliminary injunctive
9 relief to which it is not entitled; (2) to assure the court that if it errs in granting such
10 relief the moving party rather than the wrongfully-enjoined party will bear the cost
11 of the error; (3) to provide a wrongfully-enjoined party a source from which it may
12 readily collect damages without further litigation and without regard to the moving
13 party’s solvency. Nintendo of America, Inc. v. Lewis Galoob Toys, Inc. 16 F.3d
14 1032, 1037 (9th Cir. 1994). “When setting the amount of security, district courts
15 should err on the high side. . . . [A]n error in the other direction produces
16 irreparable injury, because the damages for an erroneous preliminary injunction
17 cannot exceed the amount of the bond.” Mead Johnson & Co. v. Abbott
18 Laboratories, 201 F.3d 883, 888 (7th Cir. 2000).
19

Plaintiff seeks to avoid his obligation to post a bond entirely, relying on

20 authorities wholly inapposite to the case before this Court. In Northwestern Bell
21 Tel. Co. v. Bedco of Minn, Inc., 501 F. Supp. 299 (D. Minn. 1980), for example, the
22 defendant used photocopies of advertisements from the plaintiff’s Yellow Pages
23 directory in materials it used to try to solicit advertisers for its competing directory.
24 The court enjoined the use of these photocopies (but not defendant’s non-infringing
25 efforts to compete with the plaintiff) and declined to post a bond, holding that no
26 bond was required “[c]onsidering the strength of the case presented by plaintiff” and
27 the absence of any substantial harm suffered by the defendant as a result of the
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1 injunction. Id. at 304. Where, as in this case, the Plaintiff has not made out a strong
2 case of infringement, and where there is substantial evidence of the harm to UMG
3 accruing from the injunction, it would be an abuse of this Court’s discretion to
4 decline to order a bond. See Frank’s GMC Truck Center, Inc. v. General Motors
5 Corp., 847 F.2d 100, 103 (3d Cir. 1988) (holding that “absent circumstances where
6 there is no risk of monetary loss to the defendant, the failure of a district court to
7 require a successful applicant to post a bond constitutes reversible error”).
8

In each of the other cases cited by Plaintiff, the injunction was granted to

9 individuals or non-profit organizations that sought relief from government action on
10 behalf of the public interest. See, e.g., Save our Sonoran, Inc. v. Flowers, 408 F.3d
11 1113, 1126 (9th Cir. 2005) (discussing the Ninth Circuit’s “long-standing precedent
12 that requiring nominal bonds is perfectly proper in public interest litigation” and
13 affirming $50,000 bond securing injunction against construction in Sonoran desert);
14 Barahona-Gomez v. Reno, 167 F.3d 1228 1237 (9th Cir. 1999) (declining to require
15 that class of undocumented immigrants post a bond to secure injunction staying
16 deportations, particularly in the absence of evidence that injunction caused
17 government any harm); Cal ex. rel. Van De Kamp v. Tahoe Regional Planning
18 Agency, 766 F.2d 1319, 1325 (9th Cir. 1985) (declining to require bond in
19 environmental action, “where requiring security would effectively deny access to
20 judicial review”); Friends of the Earth v. Brinegar, 518 F.2d 322 (9th Cir. 1975)
21 (reversing $4,500,000 bond imposed in injunction obtained by non-profit against
22 government construction, noting that unreasonably high bond requirements would
23 undermine statutory mechanisms for environmental enforcement); see also Santa
24 Rosa Mem. Hosp. v. Maxwell-Jolly, 380 Fed. Appx. 656, 658 (9th Cir. 2010) (citing
25 Save Our Sonoran, and finding that a challenge to Medicaid reimbursement rates
26 falls within the “public interest” exception to the bond requirement). None of these
27
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1 cases apply here, where the Plaintiff is not acting on behalf of the public interest, but
2 is merely seeking to protect his alleged rights in his musical works.
3

Plaintiff seeks to force UMG to incur substantial costs in complying with an

4 injunction against future sales of “I Gotta Feeling” when Plaintiff himself allowed
5 those sales to continue for twenty months before seeking any sort of relief. As
6 UMG would be required to take immediate action to comply with the injunction, the
7 costs and damages it incurs would be substantial, even before accounting for the
8 good will and reputation loss that UMG would suffer from an injunction. See
9 generally Youssef Decl., ¶¶ 3-5; Rowland Decl., ¶ 5. Accordingly, in the unlikely
10 event this Court is inclined to issue a preliminary injunction, it should require the
11 Plaintiff to post a bond in excess of $500,000 to cover the harm to UMG should the
12 injunction be found to have been improvidently entered.
13 VI.

CONCLUSION

14

For the reasons stated herein, and in the Oppositions filed by other

15 Defendants, this Court should deny Plaintiff’s Motion and decline to issue the
16 requested Preliminary Injunction. In the alternative, should this Court issue a
17 preliminary injunction, UMG respectfully requests that Plaintiff be required to post
18 a bond in excess of $500,000.
19
20 DATED: January 10, 2011

Respectfully submitted,

21

CALDWELL LESLIE & PROCTOR, PC
LINDA M. BURROW
HEATHER PEARSON

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By

/s/
LINDA M. BURROW
Attorneys for Defendants
UMG RECORDINGS, INC. and INTERSCOPE
RECORDS
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