by Dale Campbell

The long-held rule in the Ninth Circuit was that a plaintiff, in a copyright infringement claim, is presumed to have suffered irreparable harm upon a showing of likelihood of success. (Elvis Presley Enterprises, Inc. v. Passport Video, 249 F.3d 622, 627 (9th Cir. 2003).) Two Supreme Court decisions cast doubt on the continued liability of that precedent, a doubt that was lifted in August 2011 when the Ninth Circuit overruled its own long line of precedents – hence, the Court’s poignant observation that “Elvis has left the building.”[1]

The decision overruling the Elvis presumption of irreparable harm is Flexible Lifeline Systems, Inc. v. Precision Lift, Inc., et al., Ninth Circuit Case No. 6:10-CV-00044, filed August 22, 2011, 2011 U.S. App. LEXIS 17462. The plaintiff, Flexible Lifeline Systems, Inc. (“Flexible”) claimed sole ownership of technical drawings for the manufacturing of aircraft maintenance stands used to repair aircraft.[2] Defendant Precision Lift was a company that had sold Flexible’s aircraft maintenance stands for a number of years. In 2008, Flexible and Precision entered into a joint venture to design, manufacture, and sell aircraft maintenance stands to the United States Air Force. Flexible and Precision designed custom maintenance stands and submitted an initial proposal to the Air Force. For various reasons, the joint venture broke down and was terminated.  Precision found another joint venturer and utilized the design plans developed in conjunction with Flexible to continue with its proposal to the Air Force.

 Continue Reading Elvis Has Left The Building

By Nathan Geronimo

In a recent opinion, the Ninth Circuit clarified the defense of copyright misuse, finding the defense inapplicable in a dispute between Apple Inc. and Psystar Corp. Apple, one of the most prolific software producers in the world, sued Psystar for copyright infringement based on Psystar’s practice of copying Apple’s Mac OS X operating software for use in Psystar computers. Essentially, Psystar would make a master copy of the Mac OS X software, and install a copy on one of their computers. Psystar would then bundle the computer for sale with an unopened packaged version of MAC OSX that it would purchase from any number of retailers. Psystar would purchase these copies so it could assert that it had purchased the software to run on each computer it sold, when actually the computers would run on the pre-installed copied version of Mac OS X.
Prior to the Ninth Circuit appeal, the Northern District held that Psystar was infringing on Apple’s copyrights in Mac OS X. Psystar argued that the defense of copyright misuse made Apple’s Software License Agreement unenforceable.
 Continue Reading Apple Wins Pivotal Software Licensing Lawsuit

By James Kachmar

The affirmative defense of copyright misuse is a court-created affirmative defense to copyright infringement which flows from a similar defense in patent litigation. In 1942, the U.S. Supreme Court in Morton Salt Co. v. GS Suppiger Co. recognized the affirmative defense of patent misuse where a patent holder attempted to maintain an infringement action by improperly tying the use of its patented product to one of its unpatented products. The Supreme Court held that this improper tying of a patented product to an unpatented product required that equity “withhold its assistance from such a use of the patent by declining to entertain a suit for infringement [until] the improper practice has been abandoned …”.

In 1990, the Fourth Circuit Court of Appeal became the first federal appellate court to extend the patent misuse defense to copyrights. On September 28, 2011, the Ninth Circuit issued its opinion in Apple, Inc. v. Psystar Corporation which addressed the important issue regarding the application of the “copyright misuse” affirmative defense in the context of a software licensing agreement.
 Continue Reading The Copyright Misuse Defense & Apple’s Software License Agreements