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"Fruit of the Poison Tree" Injunctions
by Robert W. Clarida, December 2000
Two recent copyright cases raise a fascinating and seldom-explored remedy issue: to what extent can a court's injunctive power reach beyond the four corners of the defendant's infringing work? Injunctions commonly extend to the destruction or impoundment of the means of making infringing articles (e.g., printing plates, molds, silkscreens), but can a court also reach the non-infringing results of an infringement, the so-called "fruit of the poison tree"? Nimmer asserts (at §14.06[C]) that such injunctions are not permissible under the Copyright Act, but Epic Metals Corp v. Souliere1 and Sony Computer Entertainment Inc. v. Connectix Corp.2 demonstrate that the courts are quite willing to grant such relief in appropriate cases.
Epic Metals
In Epic Metals, defendant allegedly infringed Epic's trade dress in a steel decking product, and also violated Epic's copyright in various catalogs and promotional materials which depicted the product. On appeal, the Eleventh Circuit reversed on the trade dress count but affirmed as to copyright infringement. Epic subsequently moved in the district court to modify the copyright injunction to prohibit defendant from claiming that its (non-infringing) decking was UL-approved, because the safety data and tables which defendant submitted to UL were in fact copied from the Epic catalogs. By copying Epic's materials, defendant saved the considerable expense of conducting its own safety tests, thus gaining an advantage in the marketplace as a result of its unauthorized copying. Epic requested the modification to keep defendant from "benefiting from the fruit of their willful copyright infringement." The district court agreed.
On a second trip to the Eleventh Circuit, the modified injunction was affirmed, with the court noting that defendant "would reap an unexpected and unintended windfall by using a UL rating obtained through the copyright violation." Citing Nimmer, defendant argued in its reply brief that such "fruit of the poison tree" was beyond the reach of an injunction for copyright infringement, but the Eleventh Circuit refused to entertain the argument because it was not raised earlier in the proceedings. Thus, Epic Metals allows the particular remedy to stand on procedural grounds, but does not expressly repudiate Nimmer on the substantive issue.
Sony
Sony Computer Entertainment, however, addresses the issue head-on and finds that a court has the authority to enjoin the sale of non-infringing material created through an infringing process. Defendant in Sony created a "virtual game system" (VGS) which emulated the operation of the popular Sony Playstation® video game platform. In developing the VGS, defendant repeatedly copied substantial portions of Sony computer code embodied in the Playstation, but the final VGS product contained no infringing code. Nonetheless, the Central District of California preliminarily enjoined the sale of the (non-infringing) VGS because it was the product of illicit intermediate copying. Defendant cited Kepner-Tregoe Inc. v. Leadership Software Inc.3 to argue that the court had no authority to enjoin a non-infringing product, no matter how it was created, but applying Sega v. Accolade 4 the court concluded that "in a copyright infringement claim based on intermediate infringement, the composition of the end product is not the sole test. The infringing conduct is based on how the end product was developed." Given defendant's conduct, "the only effective remedy for such intermediate infringement is to enjoin the end product. . . . Therefore, this court believes it has the authority to enjoin, and should enjoin, the retail sale of VGS under Sega."
The Sony ruling was recently appealed to the Ninth Circuit, and argued to a panel including one of the judges from the Sega decision, so enlightened guidance on the subject may be forthcoming shortly. But whatever the outcome of that appeal, the Sony result seems consistent with the basic axiom that equity will suffer no wrong without a remedy. Accordingly, the courts have held in analogous circumstances that an injunction may issue against a non-infringing work, or non-infringing activity, when such a work or activity is the result of defendant's infringement. For example, the Sixth Circuit in Robert R. Jones Assocs. Inc. v. Nino Homes,5 concluded (prior to the advent of architectural works protection in 1990) that "one may construct a house which is identical to a house depicted in copyrighted architectural plans, but one may not directly copy those plans and then use the infringing copy to construct the house." 6 It will be interesting to see whether the Ninth Circuit follows the same equitable blueprint in deciding the Sony case, or whether instead it fashions some other palatable antidote to the fruit of the poison tree.
1 No. 98-2387, 1999 U.S. App. LEXIS 16928 (11th Cir. July 22, 1999).
2 50 U.S.P.Q.2d 2d 1920 (N.D. Cal. 1999).
3 12 F.3d 527 (9th Cir. 1994).
4 977 F.2d 1510 (9th Cir. 1992).
5 858 F.2d 274, 280 (6th Cir. 1988).
6 See also, e.g., The Herman Frankel Organization, Inc. v. Wolfe, 184 U.S.P.Q. 819 (E.D. Mich. 1974); Ga-On Homes, Inc. v. Spitzer Homes, Inc., 178 U.S.P.Q. 183 (M.D. Fla. 1973); Eales v. Environmental Lifestyles Inc., 958 F.2d 876 (9th Cir. 1992).
© 2000 Cowan, Liebowitz & Latman, P.C.
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