Reconciling Federal Circuit Choice of Law with eBay v. MercExchange‘s Abrogation of the Presumption of Irreparable Harm in Copyright Preliminary Injunctions

April 2, 2012

In 2006, the U.S. Supreme Court’s decision in eBay, Inc. v. MercExchange, L.L.C. did more than establish the four-factor test that courts must utilize when determining whether to grant permanent injunctions for patent infringement. It also spawned a movement among lower courts to abandon the judicially created and sometimes-criticized practice of presuming the most important factor of the injunction analysis- irreparable harm-upon a showing of patent or copyright infringement. Over the past several decades, presuming such harm routinely permitted courts to automatically grant preliminary injunctions once a plaintiff proved a likelihood of success on the merits. This practice contrasted sharply with the historical nature of preliminary injunctions as “extraordinary” relief, which rested the burden of proof on the plaintiff.

In Jacobsen v. Katzer, the Federal Circuit became the first circuit to directly address eBay‘s potential application to preliminary injunctions in the copyright context. The Jacobsen court declined to invoke eBay‘s standards, and instead applied the Ninth Circuit’s pre-eBay presumption of irreparable harm, as Federal Circuit precedent requires application of regional circuit law to copyright matters. This ruling contrasted with every circuit to subsequently confront the issue, including the Ninth Circuit, which effectively overruled the very presumption that the Jacobsen court utilized. This Note posits that the Jacobsen court erred in enforcing the presumption in a post-eBay landscape to begin with, as eBay indeed abrogated the presumption of irreparable harm as applied to copyright preliminary injunctions. Further, it urges the Federal Circuit to apply eBay‘s holding in future copyright cases where the regional circuit has not directly addressed the presumption’s post-eBay vitality.

April 2012

No. 5