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IP/Entertainment Case Law Updates

Spolar v. Discovery Communications

District court denies application to temporarily restrain Discovery television network from broadcasting documentary about last photograph of Abraham Lincoln, finding that injunction would constitute prior restraint in violation of Discovery’s First Amendment rights, and that plaintiffs failed to establish likelihood of success on their own claim for misappropriation of trade secrets.

Plaintiffs Jerry Spolar and Tonny Williamson own what they claim to be the last photograph taken of Abraham Lincoln, depicting the president after he had been shot on the night of his assassination. For nearly 25 years, plaintiffs consulted with various forensic experts to authenticate the photograph, accumulating a number of reports and writings about the photograph that they sought to keep confidential through nondisclosure agreements with the experts with whom they consulted. Confident that the photograph was authentic, plaintiffs presented their work to a production company in 2018 in the hope of making a documentary. Although National Geographic and the History Channel initially turned down the project and the production company ultimately abandoned it, plaintiffs learned on Sept. 14, 2020, that the television network Discovery Communications planned to air a documentary about the photograph, titled The Lost Lincoln, on Oct., 2020. Plaintiffs allege that a person involved in the development of the project at the production company with which they discussed their research had taken the idea to Discovery, leading to the production of The Lost Lincoln. Plaintiffs filed a complaint against Discovery, the production company and other defendants, asserting claims for violation of the Defend Trade Secrets Act of 2016, breach of contract (nondisclosure agreements signed by the production company and other individuals) and violation of California’s Unfair Competition Law. Three days later, and six days before The Lost Lincoln was scheduled to air, plaintiffs filed an ex parte application for a temporary restraining order (TRO), seeking to enjoin the broadcast of The Lost Lincoln. The district court denied plaintiffs’ TRO application, finding that plaintiffs had failed to show they were entitled to injunctive relief.

In reaching that decision, the district court first discussed the First Amendment backdrop for plaintiffs’ request for a TRO. Noting that the requested injunctive relief constituted a prior restraint of Discovery’s protected speech—the broadcast of The Lost Lincoln—and that restraints on speech prior to publication are acceptable only in exceptional cases and if procedural safeguards are met to avoid chilling protected speech, the court emphasized that plaintiffs bore a heavy burden to show the justification for such a restraint. The court also noted that the fact that The Lost Lincoln was a matter of public concern weighed against a prior restraint. However, noting that the prior restraint doctrine is relaxed when utilized to protect intellectual property rights, the court determined that the law is “murky” as to whether and how the doctrine applies in situations where the work sought to be restrained contains protectable trade secrets. Because of that uncertainty, the district court declined to deny plaintiffs’ requested relief outright, instead imposing “an extra layer of First Amendment scrutiny” to determine whether plaintiffs had brought an “‘exceptional case[] … where the evil that would result from [broadcast] is both great and certain and cannot be mitigated by less intrusive measures.’”

The court then focused on the factors set forth in the U.S. Supreme Court’s 2008 decision in Winter v. Natural Res. Def. Council, Inc., which held that “[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.” Beginning with the likelihood of success, the court held that plaintiffs had not demonstrated a likelihood of success on their trade secrets claim because the trade secrets that were allegedly misappropriated in The Lost Lincoln were broad and general terms (such as “detailed reports, analyses, and conclusions” and “related expert and consultant write-ups”) that lacked sufficient specificity for the court to determine whether the information could in fact be protectable as trade secrets that were misappropriated by Discovery. The generality of plaintiffs’ trade secret claims was particularly troubling to the court in light of the free speech concerns, because “[t]he prior restraint doctrine counsels against preliminary guesswork at the peril of a defendant’s First Amendment rights.” The court further held that plaintiffs were unlikely to succeed on the merits on their breach of contract claim, as they had no breach of contract claims against Discovery, the only defendant they sought to enjoin. The same was true of plaintiffs’ unfair competition claim, which the court found to be preempted by the California Uniform Trade Secrets Act because it relied on the same factual allegations as their trade secret claim.

The district court next looked to whether plaintiffs had established a likelihood of irreparable harm if Discovery’s broadcast of The Lost Lincoln were allowed to go forward. Plaintiffs argued that the misappropriation of trade secrets “almost always” constitutes irreparable harm, but the court rejected that theory, as it had already determined that plaintiffs had not demonstrated a likelihood of success on their trade secrets claim. Instead, the court held that plaintiffs’ asserted injuries could be remedied through monetary relief and that such “purely economic harms are not irreparable.” 

Turning to the balance of the equities factor, the court acknowledged that if The Lost Lincoln aired, plaintiffs may lose the recognition and financial rewards for their work being presented on a national broadcast, but also concluded that plaintiffs would still have the opportunity to “set the record straight” with respect to their efforts to authenticate the Lincoln photograph, and they may still recover damages for their lost economic opportunity. For Discovery’s part, the court noted that the network had set aside a valuable primetime slot in its programming so it could broadcast The Lost Lincoln, which was slated to be the premiere episode of a new investigative anthology series titled Undiscovered. If Discovery were enjoined from airing The Lost Lincoln, the court reasoned, those efforts would be frustrated, along with the $4 million Discovery had already spent to market The Lost Lincoln. Furthermore, the district court held that even a temporary delay of the broadcast of The Lost Lincoln would constitute irreparable harm because it would constitute a prior restraint of Discovery’s speech. The court ultimately held that the balance of the equities weighed against injunctive relief.

Finally, the court examined how the public interest would be affected if the broadcast of The Lost Lincoln were enjoined. Noting that the Ninth Circuit has “consistently recognized the significant public interest in upholding First Amendment principles,” the court held that this factor weighed against an injunction.

Concluding that plaintiffs failed to meet their burden to show that any of the Winter factors favored injunctive relief in this situation, much less the higher standard required to impose a prior restraint on Discovery’s First Amendment free speech rights, the district court denied plaintiffs’ application for a TRO.

Summary prepared by Tal Dickstein and Kyle Petersen