- Court grants plaintiff’s motion for preliminary injunction in copyright and trademark infringement action against publisher of a Twilight fanzine that used plaintiff’s Twilight trademark as well as images from the Twilight films and promotional images that were taken from plaintiff’s publicity website.
Plaintiff filed suit for, inter alia, trademark infringement and dilution, copyright infringement, and breach of contract, and filed an application for a temporary restraining order, which the court converted into a motion for a preliminary injunction. In the Ninth Circuit, a plaintiff seeking a preliminary injunction must establish “that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Am. Trucking Ass'ns v. City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir. 2009) (quoting Winter v. Natural Res. Def. Council, Inc., 129 S. Ct. 365, 374, 172 L. Ed. 2d 249 (2008)).
The court held that plaintiff was likely to succeed on the merits of its copyright claim because plaintiff submitted credible evidence that it owns the copyrighted works at issue, that images in defendant’s fanzines are substantially, “even strikingly similar,” in their protected elements to plaintiff’s images, and that defendant had access to the images due to their availability on plaintiff’s website and “by virtue of their pervasiveness resulting from the Twilight movies’ enormous popularity.”
The court also held that plaintiff was likely to succeed on the merits of its trademark infringement claim because it provided credible evidence that it owns a valid, protectable trademark and that defendant displayed a “virtually identical version of this mark” in and on its fanzines.
Turning to irreparable injury, the court held that, in copyright and trademark infringement actions, irreparable injury is presumed upon a showing of likelihood of success on the merits. Moreover, while cessation of unlawful conduct can “moot” a dispute in a manner that renders a preliminary injunction appropriate, such cessation must be irrefutably demonstrated and total. Here, even though defendant indicated it voluntarily recalled both of its fanzines and did not intend to redistribute them or publish any future issues, irreparable injury weighed in favor of plaintiff because, as of the date that defendant’s opposition was filed, copies of the fanzines were still widely available in Los Angeles stores and over the internet.
Regarding the balance of hardships, the court held that plaintiff credibly stated that its copyrights, trademarks and goodwill are at risk of being devalued by defendant’s fanzines, and if an injunction is improperly granted “defendant would not appear to suffer substantial hardship, since the injunction would merely enforce what defendant has already announced its intention to do, namely, cease all offending activity.” Finally, the court agreed with defendant that the scope of the preliminary injunction should be narrowed so that it does not bar any fair use of plaintiff’s copyrighted works and that it should clearly define which of plaintiff’s trademarks are included in the injunction.