United States District Court, D. Nebraska
MEMORANDUM AND ORDER
F. Bataillon, Senior United States District Judge
matter is before the court on plaintiff Fortress Iron,
L.P.'s (“Fortress”) motion for preliminary
injunction, Filing No. 19. The court heard oral
argument on the motion on June 28, 2018.
is a designer and manufacturer of metal railings. Fortress
alleges it authored original installation instructions for
installing its railings, posted the information on its
website, and included the instruction on the outside of the
packaging for the railings. In October 2017, defendant
Fairway Building Products, LLC (“Fairway”)
brought its metal railings to market and posted instructions
on its website and on its packages. Fortress contends
Fairway's instructions copy its instructions and infringe
its copyright on the instructions. Fortress moves for a
preliminary injunction enjoining Fairway from using
Fortress's instructions and infringing Fortress's
support of the motion, Fortress has shown the instructions
were created in-house by Fortress employees at a significant
cost of money and time. Filing No. 21-1, Index of
Evid., Ex. A, Declaration of Matt Sherstad (“Sherstad
Decl.”) at 1. Fortress learned in late 2017 that
Fairway was marketing an allegedly identical railing product
with identical packaging and installation instructions.
Id., Ex. A, Sherstad Decl. at 2. Fortress lowered
its prices in order to compete with Fairway's products.
Filing No. 37-5, Index of Evid., Ex. H, Declaration
of Jim Ganninger at 1. Fortress applied for and received
United States Copyright Registration No. TX0008468254 on
January 26, 2018 for its instructions. Filing No.
21-3, Index of Evid., Ex. C, Copyright Registration
Certificate. At oral argument, Fortress's counsel stated
that its price reductions resulted in lost profits to the
company of approximately $45, 000 dollars per month for the
two months that Fairway sold products with infringing
instructions after Fortress registered its
instructions and Fairway's allegedly infringing
instructions appear identical in many respects.
CompareFiling No. 1, Complaint, Ex. A, FE26
Installation Instructions with id., Ex. B, Fairway
Steel-Level Stair-Instructions. On February 20, 2018,
Fortress filed this copyright infringement action against
Fairway under the Copyright Act of 1976, 17 U.S.C.
§§ 101 et seq.
opposition to Fortress's motion, Fairway has shown that
it became aware of the filing of the plaintiff's
complaint several days after it was filed. Filing No.
28-1, Index of Evid., Ex. A, Declaration of Greg
Burkholder (“Burkholder Decl.”) at 1. Without
admitting liability, Fairway removed the challenged
instructions from its website on or about March 1, 2018, and
halted production and shipment of its metal railings from its
manufacturing operation in China pending a rewrite of the new
instructions. Id. at 1-2. On or about March 7, 2018,
Fairway drafted new instructions and computer-aided design
(CAD) drawings (“new instructions”) in about four
hours. Id. at 2; seeFiling No. 28- 2 Ex. B,
was officially served with the Complaint on March 19, 2018.
Filing No. 28-1, Ex. A, Burkholder Decl. at 2. On or
about March 22, 2018, Fairway uploaded the New Instructions
to its website. Id. at 2. On or about April 19,
2018, Fairway began including the new instructions in all of
its metal railing packaging. Id. at 2. For purposes
of this motion, Fortress does not contend the new
instructions infringe its copyright.
has shown that fewer than 5000 products with the old
instructions remain in inventory. Id. at 3. Fairway
inserted copies of the new instructions in the packages of
its unsold inventory of railings that contain the allegedly
infringing instructions and posted a yellow
“ATTENTION” notice on the outside of the
packaging, instructing the customer to disregard the old
instructions and follow the new instructions when installing
the product. Id. at 2; seeFiling No. 28-3,
Ex. C, Photos of Notice & New Instructions; Filing
No. 28-4, Ex. D, Notice to Use New Instructions. Fairway
has only shipped products with its new instructions since May
8, 2018. Filing No. 28-1, Ex. A, Burkholder Decl. at
2. Fairway has also shown that it would be costly to
repackage the products entirely because the equipment it
requires to do so remains in China, where it manufactures and
packages its products. Id. at 2-4.
seeks an order enjoining Fairway from distributing the
remaining inventory unless it is fully re-packaged. Fairway
opposes the motion and challenges the validity of
Fortress's copyright, contending that parts of
Fortress's copyrighted instructions are functional or
otherwise uncopyrightable and asserting affirmative defenses
of merger and functionality. Fairway argues that Fortress
cannot show irreparable harm or probability of success on the
merits. Further, it argues that Fortress's delay in
seeking injunctive relief undermines its claim of irreparable
extraordinary remedy of an injunction should not be granted
unless the movant has demonstrated: (1) the threat of
irreparable harm to the movant; (2) the state of the balance
between this harm and the injury that granting the injunction
will inflict on other parties; (3) the probability that the
movant will succeed on the merits; and (4) the public
interest. Dataphase Sys., Inc. v. C L Sys., Inc.,
640 F.2d 109, 114 (8th Cir. 1981) (en banc);
Roudachevski v. All-American Care Ctrs., Inc., 648
F.3d 701, 705 (8th Cir. 2011). The burden of establishing the
propriety of an injunction is on the movant.
Roudachevski, 648 F.3d at 705.
Copyright Act provides that courts may grant injunctive
relief “on such terms as it may deem reasonable to
prevent or restrain infringement of a copyright.” 17
U.S.C. § 502(a). Injunctions under the Copyright Act are
governed by traditional equitable considerations. See
eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388, 392-93 (2006) (rejecting categorical rules for
injunctions in patent cases). The Supreme Court “has
consistently rejected invitations to replace traditional
equitable considerations with a rule that an injunction
automatically follows a determination that a copyright has
been infringed.” Id. at 392-93.
deciding whether to grant a preliminary injunction,
likelihood of success on the merits is the most significant
factor. Laclede Gas Co. v. St. Charles Cnty., 713
F.3d 413, 419-20 (8th Cir. 2013). “To that end, the
absence of a likelihood of success on the merits strongly
suggests that preliminary injunctive relief should be
denied.'” Barrett v. Claycomb, 705 F.3d
315, 320 (8th Cir. 2013) (quoting CDI Energy Servs., Inc.
v. W. River Pumps, Inc., 567 F.3d 398, 402 (8th Cir.
2009)). A party seeking injunctive relief must show a fair
chance of prevailing where a preliminary injunction is sought
to enjoin something other than ...