HarperCollins v. Gawker: Did The Court Get it Wrong?
It was over in the blink of an eye, the flash of a nanosecond. It was declared an open-and-shut case. But was it? Was the Order the Court entered, requiring Gawker to take down
its sneak-peek postings of pages from Sarah Palin’s new book, legally sound? Or, might the Court – had it considered the matter a bit longer – have concluded that there were a host of issues that should have precluded it from issuing a TRO?
Most discussions I’ve seen of the case have focused on the issue of “fair use.” In other words, they’ve assumed that Gawker infringed HarperCollin’s rights and focused on the question of whether Gawker could make out a defense.
In my view, there was no need for the Court to rule on the issue of “fair use” in order to dispose of the preliminary application. It should have denied the request for a temporary restraining order (“T.R.O.”) on threshold grounds. What do I mean? Simply this: Its erudition aside, the Court made four errors. It reverted, as a practical matter, to an outmoded standard for deciding requests for injunctive relief. It assumed that plaintiff’s publication right was infringed when, very likely, it wasn’t. It assumed the existence of “irreparable harm,” when there was very likely no harm. (Sales and pre-orders may even have been fueled.) And, finally, it didn’t even examine the question of whether plaintiff’s pre-registration was proper, timely and effective.
Let’s briefly examine each issue.
Didn’t Salinger Change The Law?
The District Court’s decision is really a throwback to an earlier time when copyright violations were presumed to result in injury and injunctions were automatically entered. That was all supposed to have changed with the Supreme Court’s decision in ebay v. MercExchange, 547 U.S. 388 (2006), and this Circuit’s decision in Salinger v Colting, 607 F.3d (2010). Together, they put requests for preliminary and permanent injunctive relief in patent and copyright infringement actions on the same footing as requests for injunctive relief in all other actions. In other words, they required patent and copyright plaintiffs to satisfy the same five criteria other plaintiffs have to satisfy in order to obtain an injunction:
- that they are likely to prevail on the merits;
- that they’ve suffered irreparable injury;
- that they would not be adequately compensated by an award of damages;
- that the balance of hardships tips decidedly in their favor; and
- that the public interest would not be disserved by the entry of an injunction.
For the reasons that follow, it is unlikely, in my view, that plaintiff could have satisfied these requirements.
The salient facts can be summarized as follows:
If the reports are to be believed, HarperCollins sent out at least a thousand pdfs of Sarah Palin’s new book, America by Heart, to prospective reviewers, bloggers, pundits and traditional media outlets between October 12 and November 17, 2010. It did so, believing it had a “gentleman’s agreement” that no one would excerpt or review the book prior to its official “release” date, Tuesday, November 23, 2010. (It had a formal “non-disclosure” agreement with some outlets under which they agreed to respect this “embargo.”)
Gawker was either sent or somehow obtained a pdf or digital photograph of the book, and ran with the story. On November 17, 2010, it posted excerpts from the book – consisting of twenty-one pages – interspersed with a few “snarky” comments. Sarah Palin shot back with a tweet:
The publishing world is LEAKING out-of-context excerpts of my book w/out my permission. Isn’t that illegal?
HarperCollins then mobilized its legal forces. On November 19th, they “pre-registered” a copyright claim with the United States Copyright Office and either that day or the next instituted suit. Sarah Palin was not named as a plaintiff.
Was HarperCollins’ “Right To Publish” Infringed?
As it’s pre-registration filing makes clear, Sarah Palin is both the author of the book and “copyright claimant.” HarperCollins sued as the transferee and owner of certain exclusive rights. Specifically, it accused Gawker of infringing its rights “by publishing and distributing copies of the Book without permission and disseminating it publicly via the Internet.” (Complaint at ¶ 22).
As copyright lawyers know – but the general public undoubtedly doesn’t – under United States law, a copyright consists of a bundle of six rights, each of which is almost infinitely divisible. The three that are the most relevant for purposes of this discussion are:
- the exclusive right to “reproduce” a book in copies;
- the exclusive right to distribute it; and
- the exclusive right of public “display.”
These rights originally belong to the author of a book – in this case, Sarah Palin. She, in turn, transfers or conveys a subset of her rights to the Publisher. Any exclusive rights (or portions of rights) she does not convey, she retains. In my view, it is very likely an exclusive right she retained in this instance, rather than an exclusive right she transferred, that Gawker infringed when it broke the embargo.
As copyright lawyers also know – but, again, the public may not – the legal or beneficial owner of specific exclusive rights under a copyright has standing, “subject to the requirements of section 411 [17 USCS § 411] to institute an action for any infringement of that particular right committed while he or she is the owner of it.” 17 U.S.C. § 501(b)(emphasis added).
It follows that had Sarah Palin herself brought suit or been joined in the action as a plaintiff, the case would have presented closer questions. She may well have stated a valid infringement claim and been entitled to some relief. As it is, however, the only one who sued was the Publisher and – as far as I can tell – it did not own the “public display” right. It was that exclusive right, rather than the exclusive right “to publish” or “distribute” the Book that, in my opinion, Gawker infringed.
The two are not synonymous. First of all, the Copyright Act defines “publication” as “the distribution of copies … of a work” and specifies that “copies” are “material objects … in which a work is fixed.” 17 U.S.C. § 101 (definition of “publication” and “copies”). Second, it defines “publication” as the “distribution of copies . . . by sale or other transfer of ownership, or by rental, lease, or lending.” Id. Gawker did not engage in these activities.
Equally significantly, the statute states unequivocally that the “public … display of a work does not of itself constitute publication.” 17 U.S.C. § 101 (definition of “publication”).
So, the threshold legal question the Court should have considered in my view was the following:
By permitting end-users to view pages from the book, did Gawker infringe the Publisher’s right to distribute the book, or only the exclusive right to “publicly display” it?
As I understand the facts, Gawker only infringed the latter right and that right belonged to Palin, rather than her Publisher. While Gawker may have disrupted the Publisher’s marketing plans and interfered with non-disclosure agreements, it did not infringe the Publisher’s right to distribute or publish the Book.
The Court Found “Irreparable Injury,” When There Was Likely No Injury At All.
Copyright infringement is what lawyers call a “tort.” The claim is only made out if one proves an injury. Here, there is significant question as to whether the Publisher’s exclusive rights were injured as a result of Gawker’s actions. Indeed, there is significant question whether it suffered any injury at all. It is not unlikely that, instead of harming its interests, the sneak peeks and snarky comments increased rather than decreased interest and sales.
Without any demonstrable injury to the market for the book and to the Publisher’s excusive rights, a TRO should not have issued. At a minimum, there should have been discovery on the question of whether the Publisher had suffered cognizable loss.
Pre-Registration: Was It Proper, Timely and Effective?
Pre-registration is a relatively new animal in copyright law. It was introduced in about 2005. Since then the Copyright Office has promulgated regulations, defining the circumstances under which pre-registration can be made.
A couple of things are clear from the statute and regulations: Pre-registration is intended
- to apply only to unpublished works
- to be effected while a work is still being prepared;
- to be made in anticipation of future infringements rather than to punish those that have already commenced; and, finally,
- to be effected prior to the commencement of an infringement that is made the subject of suit.
None of those criteria appear to have been satisfied in this case. The work may no longer have even qualified as an “unpublished work” when pre-registration was effected. Pre-registration was only effected after the work was completed, not while it was still being prepared. And, finally, by the time pre-registration was effected, the infringement had already commenced. Put another way, the infringement being targeted preceded pre-registration, rather than vice versa.
So, in addition to there being questions as to whether the Publisher’s rights of distribution and publication were infringed and whether it suffered any cognizable injury, there is also a substantial question as to whether the action was properly commenced.
The Bottom Line:
So, what’s the takeaway? Well, it depends on whether you’re a lawyer, a business with an on-line presence or simply John or Jane Q Public, citizen-at-large.
If you’re a lawyer, the takeaway may well be that Salinger v. Colting really hasn’t changed anything. Injunctive relief will continue to be available on the same terms as it was previously.
If you’re a business with an on-line presence, you should probably take away 2 lessons: First, you can’t afford to be unrepresented. You need a lawyer. Copyright is a very technical Graphic_gawker_#3_area of the law. Second, don’t immediately start mouthing off about “fair use.” Your statement may be taken as an admission that you’ve infringed, when no admission is warranted. (“Fair use” is what lawyers call an “affirmative defense.” It is only supposed to come into play if infringement has been established.)
Finally, if you’re simply a member of the public, you might well conclude that both parties gamed the system. Gawker had the excerpts up for as long as it needed to drive traffic to its site. (After that, it may not have cared whether they were taken down, so it didn’t vigorously defend against the lawsuit.) By the same token, HarperCollins might be thought to have loved the controversy, its protestations notwithstanding. So, rather than be concerned with whether it could actually “enjoin” anything, it may simply have brought the lawsuit in order to generate buzz and sales. It was probably guaranteed that, after all, however the request for an injunction turned out.
 The Judge who ruled in the case, Thomas P. Griesa, is a marvelous jurist who has issued many an important and exquisitely-reasoned opinion over the years. The fact that he got it wrong in this instance is only testament to the fact that even great judges are not infallible.