Court Realizes It Totally Screwed Up An Injunction Against Zazzle For Copyright Infringement
from the oops dept
Last year we wrote about a bizarre and troubling DMCA case involving the print-on-demand company Zazzle, in which the judge in the district court bizarrely and wrongly claimed that Zazzle lost its DMCA safe harbors because the allegedly infringing works were printed on a t-shirt, rather than remaining digitally (even though it was the end user using the infringing work, and Zazzle’s system just processed it automatically). To add insult to injury, in November, the judge then issued a permanent injunction against Zazzle for this infringement.
However, it appears that no one is more troubled about this permanent injunction issued by Judge Stephen Wilson… than Judge Stephen Wilson.
In early February, Wilson released a new order reversing his earlier order and chastising himself for getting things wrong.
The Court finds that there is a “manifest showing” of the Court’s “failure to consider
material facts presented to the Court” because the Court did not provide any justification for the
Yes, that’s the judge chastising himself for not providing the necessary justification for an injunction after finding Zazzle to not have safe harbors (some of the background here involves a question about which rules — federal or local — the court should be using to reconsider the earlier ruling, which isn’t that interesting). Unfortunately, Wilson doesn’t go back and revisit the DMCA safe harbors question — this new ruling just focuses on why he was wrong to issue a permanent injunction after finding that the DMCA safe harbors didn’t apply.
For that, the court notes (correctly, this time!) that under the Supreme Court’s important MercExchange standard, courts should be careful about issuing injunctions for infringement, and that the plaintiffs need to show irreparable harm and that other remedies aren’t more appropriate (and that an injunction won’t cause greater harm to the public). Here, the plaintiff failed to do all of those — and somehow the court missed it.
In addition, the court does note that it never even considered the question about whether the artwork that is displayed on Zazzle’s website, but not printed on t-shirts, still gives Zazzle safe harbor protections — and the injunction would have applied to those works too, even though they might have been protected under the DMCA:
Plaintiff’s proposed permanent injunction was ambiguous and went beyond the issues at
trial, facts which the Court did not consider when it granted the initial motion for a permanent
injunction. Before trial, the Court never decided whether Zazzle had a viable DMCA defense as
to images only displayed on Zazzle’s website and never physically manufactured. Dkt. 81.
Plaintiff withdrew its claims as to such “display-only” artworks prior to trial, so the issue was not
tried. Dkt. 110 at 2:11-25. As such, it is unclear whether the injunction applies to both the
manufacture and distribution of physical goods, or also to display of images on the Zazzle
website. It is also unclear if Zazzle must take “reasonable” steps to address the display of images
on its website as well as its manufacture of products. The Court did not consider these material
facts in determining the scope of the permanent injunction; upon reviewing these facts, the
proposed injunctions go beyond the issues at trial.
It’s good that the court has realized its own mistakes and fixed them — though it would be nice if it went further to the point of recognizing the problems of saying that by printing an image on a physical good the DMCA protections disappear.
But, really, reading this new ruling, you almost (almost) feel bad for Judge Wilson as he complains about Judge Wilson’s failings in this case:
The Court recognizes that it failed to consider material facts in granting the permanent
injunction in October 2017. The Court also recognizes that it provided no rationale for the
permanent injunction, manifestly showing the failure to consider such facts. Upon considering
those facts, the Court finds no basis for a permanent injunction in this matter.
Don’t be too hard on yourself, Judge. Admitting your mistakes is the first step.