J.D. Salinger catches infringer in the Rye?

By David P. Miranda and Caroline B. Ahn
The Daily Record Newswire

The renowned and reclusive author, J.D. Salinger, in the final year of his life, left another legacy with his novel “The Catcher in the Rye” by reshaping the preliminary injunction standard in copyright cases.

Published in 1951, “Catcher” tells a coming-of-age story from the perspective of the disaffected 16-year-old Holden Caulfield, as he wanders around in New York City after being expelled from prep school. “Catcher” became an instant success. Although many sought to adapt the work into film or otherwise create derivative works from it, Salinger rejected all such offers and explicitly instructed his lawyers to not allow adaptations of his works.

The accused infringing work
Without seeking or obtaining permission from Salinger, Fredrik Colting, using the pen name of John David California, wrote “60 Years Later: Coming Through the Rye” and published his work on May 9, 2009, in England. Colting’s “60 Years Later” tells a story of a 76-year-old Mr. C (Holden Caulfield) in a world that includes his 90-year-old author, a fictionalized Salinger.

The premise of “60 Years Later” is that Salinger has been haunted by his creation and now wished to bring Mr. C back to life in order to kill him. Yet as the story progresses, Mr. C becomes self-aware and realizes his ability to act contrary to his creator-author’s will. Mr. C travels to Salinger’s home, after some misadventures, and Salinger finds that he is unable to kill Mr. C. Rather, Salinger decides to set Mr. C free and Mr. C reunites with his younger sister and estranged son.

The lawsuit
In June 2009, shortly after “60 Years Later” was published in England, Salinger (90 years old at the time) brought suit against Colting and his publishing company (collectively referred to as Colting) for copyright infringement and unfair competition. Salinger also sought to enjoin Colting from publishing, advertising or otherwise distributing “60 Years Later” in the United States during the pendency of the lawsuit. Copies of Colting’s “60 Years Later” was originally scheduled to released in the U.S. on Sept. 15, 2009.

To establish a prima facie case of copyright infringement, the plaintiff must prove (1) ownership of a valid copyright, and (2) copying of the constituent elements of the work that are original. The copying element is generally established indirectly by proving access and “substantial similarity” to the copyrighted work.

In support of his claims, Salinger underscored the extensive similarities between “60 Years Later” and “Catcher,” including the similar narrative style, shared notable eccentricities between Mr. C and Caulfield, and similar scenes within the novels. Salinger further cited Colting’s efforts in marketing “60 Years Later” as a sequel.

Colting contended his book was never intended to be a sequel to “Catcher.” Salinger submitted on its motion the book’s back cover describing the work as “a marvelous seque to one of our most beloved classics” and cited excerpts from an interview, where Colting described “60 Years Later” as being “[j]ust like the first novel ... He’s still Holden Caulfield. ...” 

The district court granted Salinger’s motion for preliminary injunction, finding that Salinger would likely prevail on his copyright infringement claim and that Colting’s fair use defense would likely fail. The district court concluded that Salinger had valid copyrights in both “Catcher” and the Holden Caulfield character and further concluded that “60 Years Later” and Mr. C were substantially similar to Catcher and Holden Caulfield.

Thus absent a successful fair use defense, Colting infringed Salinger’s copyrights. As the district court also concluded that Colting’s fair use defense is likely to fail, it concluded that preliminary injunction should issue.

Traditional Second Circuit preliminary injunction standard
Historically in the Second Circuit, preliminary injunctions have been issued in copyright cases upon finding of irreparable harm if an injunction is not granted and “either (a) likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation, and a balance of hardships tipping decidedly in its favor.”

Thus, in the Salinger case, the district court had applied the Second Circuit’s longstanding standard for preliminary injunction for copyright cases — that once a plaintiff establishes a likelihood of success on the  merits, the presumption is that the plaintiff is also likely to incur irreparable harm if a preliminary injunction does not issue.

As the district court determined that Salinger had demonstrated likelihood of success on the merits and further concluded that Salinger had set forth a prima facie case of copyright infringement, the district court presumed that Salinger will also be irreparably harmed. Although it did not find error with the district court’s findings, the Second Circuit vacated the lower court’s judgment.

Rather, the Second Circuit explained that parts of its own preliminary injunction standard in copyright cases had been abrogated by the U.S. Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC (2006). Although eBay addressed a patent case, the Second Circuit expressly held that eBay applied with “equal force” to preliminary injunctions issued in copyright infringement cases. The Second Circuit further noted that the traditional principles of equity applied in eBay are the presumptive standard for injunctions in any context.

New standard for preliminary injunction in the Second Circuit

In adopting the factors set forth in eBay, the Second Circuit thus set forth a new standard for copyright cases.

Accordingly, a court may issue an injunction only if: (1) the plaintiff has demonstrated either likelihood of success on the merits or sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the plaintiff; (2) the plaintiff has demonstrated likelihood of irreparable harm in the absence of an injunction (i.e. remedies at law, such as monetary relief, is inadequate); (3) the court considers the balance of hardship between the plaintiff and defendant and the balance tips in plaintiff’s favor; and (4) public interest would not be disserved by the issuance of a preliminary injunction.

Despite vacating and remanding the case, the Second Circuit indicated that there was no reason to disturb the district court’s finding that Salinger was likely to succeed on the merits for the copyright infringement claim.

Upon review of the district court’s findings de novo, the Second Circuit affirmed the finding of substantial similarity between Salinger’s “Catcher” and Colting’s “60 Years Later.” As did the district court, the Second Circuit also concluded that Colting was not likely to prevail in his fair use defense, finding Colting’s contention that his primary purpose of the book was to critique Salinger and his persona not credible.

Thus the Second Circuit permitted the preliminary injunction to stay in place for 10 days to allow the plaintiff to apply for a temporary restraining order pending the rehearing of the preliminary injunction motion.

While Salinger will seemingly prevail again on remand, under this updated standard, a plaintiff seeking preliminary injunctive relief in copyright cases in the Second Circuit will face a more challenging burden.

Preliminary injunctions in copyright infringement cases will no longer be issued as a matter of course upon the plaintiff establishing likelihood of success on the merits. The plaintiff must now demonstrate both likelihood of success of its claim, as well as the likelihood of irreparable harm if the injunctive relief is not granted.

Thus, the court is no longer permitted to presume that irreparable harm will follow upon establishing likelihood of success on the merits. Rather, the court must consider all the traditional equitable factors in making its decision to issue preliminary injunctive relief. In the Second Circuit, preliminary injunction in copyright cases will be an extraordinary remedy, not a right.

David P. Miranda, dpm@hrfmlaw.com, is a partner with the Intellectual Property law firm of Heslin Rothenberg Farley & Mesiti PC. Caroline B. Ahn, cba@hrfmlaw.com, is an associate attorney with the firm. They can be reached in Rochester at (585) 288-4832 and in Albany at (518) 452-5600.