fasoli reply to opp to pi
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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION
FRANCO FASOLI (A/K/A JAZ), ) NICOLAS SANTIAGO ROMERO ) ESCALADA (A/K/A EVER) AND ) DEREK SHAMUS MEHAFFEY (A/K/A ) OTHER), ) Plaintiffs, ) v. ) ) Case No. 1:14-cv-06206 - RWG VOLTAGE PICTURES, LLC, THE ) ZANUCK CO. D/B/A ZANUCK ) INDEPENDENT, MEDIAPRO PICTURES, ) WELL GO USA INC., AMPLIFY ) RELEASING, DAVID WARREN, ) TERENCE VANCE GILLIAM, AND JOHN ) DOES 1-10, ) Defendants. ) _______________________________________
PLAINTIFFS REPLY TO CERTAIN DEFENDANTS OPPOSITION TO PLAINTIFFS MOTION FOR PRELIMINARY INJUNCTION
FOLEY & LARDNER LLP Jami A. Gekas Kenneth K. Suh Diego Fernandez (Of Counsel) 321 N. Clark, Suite 2800 Chicago, IL 60654 Phone: (312) 832-4500 Fax: (312) 832-4700 Diego R. Figueroa Rodriguez (Of Counsel) One Biscayne Tower 2 South Biscayne Boulevard, Suite 1900 Miami, FL 33131 Phone: (305) 482-8400 Fax: (305) 482-8600 Attorneys for Plaintiffs
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TABLE OF CONTENTS
ARGUMENT .................................................................................................................................. 2
I. Defendants Recitation of the Facts is Inaccurate. .................................................. 2
II. The Berne Convention Allows Plaintiffs to Bring Suit Based on a
Argentinian Copyright. ........................................................................................... 4
III. Defendants are Wrong on the Merits. ..................................................................... 5
It is Undisputed that the Infringing Work is Substantially Similar A.
to the Copyrighted Artwork. ....................................................................... 5
Proof of Actual Viewing is not Required to Establish Access. ............... 7 B.
The Supreme Court has Rejected Defendants First Amendment C.
Irreparable Harm Argument. ....................................................................... 8
Defendants Private Harm Argument is Contrary to Seventh D.
Circuit Precedent. ........................................................................................ 9
The Supreme Court has Rejected Defendants Public Harm E.
Analysis....................................................................................................... 9
No Bond is Necessary. .............................................................................. 10 F.
This Court Has the Inherent Authority to Fashion an Appropriately G.
Tailored Injunction.................................................................................... 12
CONCLUSION ............................................................................................................................. 13
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TABLE OF AUTHORITIES
Page(s)
Cases
In re Aimster Copyright Litigation, 334 F. 3d 643 (7th Cir. 2003) ....................................................................................................9
Am. Promotional Events, Inc.--Nw. v. City & City. of Honolulu, 796 F. Supp. 2d 1261 (D. Haw. 2011) .......................................................................................8
Apple Inc. v. Psystar Corp., 673 F. Supp. 2d 943 (N.D. Cal.2009) ........................................................................................8
Boucher v. Sch. Bod. Of Sch. Dist. Of Greenfield, 134 F.3d 821 (7th Cir. 1998) .....................................................................................................6
City of Atlanta v. Metropolitan Atlanta Rapid Transit Authority, 636 F.2d 1084 (5th Cir.1981) ..................................................................................................11
Dotster, Inc. v. Onternet Corp. for Assigned Names & Nos., 296 F.Supp.2d 1159 (C.D. Cal. 2003) .......................................................................................8
Eldred v. Ashcroft, 537 U.S. 186, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003) ..............................................................9
Graphic Design Mktg. v. Xtreme Enters., Inc. 772 F. Supp. 2d. 1029 (E.D. Wis. 2011) ..................................................................................10
Habitat Educ. Ctr. v. United States Forest Serv., 607 F.3d 453 (7th Cir.2010) ..............................................................................................10, 11
JCW Invs., Inc. v. Novelty, Inc., 222 F.Supp.2d 1030 (N.D.Ill.2002) .................................................................................7, 9, 10
Michigan v. U.S. Army Corps. of Engineers, 667 F.3d 765 (7th Cir. 2011) .....................................................................................................6
Microsoft Corp. v. Marturano, 2009 U.S. Dist. LEXIS 44450 (E.D. Cal. May 27, 2009)..........................................................8
MySpace, Inc. v. Sanford Wallace, 498 F.Supp. 2d 1293 1305 (C.D. Cal. 2007) .............................................................................8
Planned Parenthood of Indiana & Kentucky, Inc. v. Commr, Indiana State Dept of Health, 984 F. Supp. 2d 912 (S.D. Ind. 2013) ......................................................................................10
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Rent-A-Center, Inc. v. Canyon Tele. & Appliance Rental, Inc., 944 F.2d 597 (9th Cir. 1991) .....................................................................................................8
Sanhu Singh Hamdad Trust v. Ajut Newspaper Adver., Mktg. and Commcns., Inc., 503 F. Supp. 2d 557 (S.D.N.Y. 2007) ........................................................................................4
Scholle Corp. v. Rapak LLC, No. 13 C 3976, 2014 WL 3687734 (N.D. Ill. July 24, 2014) ..................................................10
Smith v. Bd. of Election Commrs for City of Chicago, 591 F. Supp. 70 (N.D. Ill. 1984) ..............................................................................................11
Spinmaster, Ltd. v. Overbreak LLC, 404 F. Supp. 2d 1097 (N.D. Ill. 2005) .......................................................................................7
Temple University v. White, 941 F.2d 201 (3d Cir.1991)......................................................................................................11
Ty, Inc. v. GMA Accessories, Inc., 959 F. Supp. 936 (N.D. Ill.) affd, 132 F.3d 1167 (7th Cir. 1997) ............................................7
People ex rel. Van De Kamp v. Tahoe Regional Planning Agency, 766 F.2d 1319 (9th Cir.1985) ..................................................................................................11
Wayne Chemical, Inc. v. Columbus Agency Services Corp., 567 F.2d 692 (7th Cir. 1977) ...................................................................................................10, 11
Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 129 S. Ct. 365, 172 L. Ed. 2d 249 (2008) ...............................................................7
Woodard v. Victory Records, Inc., No. 11-CV-7594, 2013 WL 5517926 (N.D. Ill. Oct. 4, 2013) ..................................................6
Zimnicki v. Gen. Foam Plastics Corp., No. 09-C2132, 2011 WL 5866267 (N.D. Ill. Nov. 22, 2011)....................................................5
Statutes
17 U.S.C, 101, 104, 411 ................................................................................................................4
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Four of seven named defendants have filed an opposition to Plaintiffs Motion for
Preliminary Injunction (Motion, Dkts. 8-13). These four Defendants (together, the U.S.
Defendants) represent the U.S. companies responsible for the current distribution and
promotion of The Zero Theorem (the Film) in the United States. The U.S. Defendants have,
by their own admission, made money off the Film and will continue to do so. Plaintiffs, three
international artists, filed suit because the Film set contains a blatant knockoff (the Infringing
Work) of Plaintiffs large-scale and famous Buenos Aires mural (the Copyrighted
Artwork). Plaintiffs now seek a narrowly-tailored injunction to prevent the U.S. Defendants
from continuing to use depictions of the Infringing Work to promote the Film in the U.S.
The U.S. Defendants Opposition (Opposition, Dkt. 36) relies on erroneous factual
assertions and unsupportable legal theoriesmany directly contradicting Seventh Circuit and
Supreme Court precedent. The law is clear and, as outlined in Plaintiffs Motion, the Court
should grant Plaintiffs Motion for Preliminary Injunction because:
(1) Plaintiffs Copyrighted Artwork is protected by a valid foreign copyright;
(2) Plaintiffs will likely succeed on the merits of their copyright allegations based on the knockoff of their work presented in the Film;
(3) Plaintiffs continue to suffer harm as long as the U.S. Defendants continue to use images of the knockoff to promote the Film, and therefore Plaintiffs have no adequate remedy at law; and
(4) the balance of harms and public interest support granting a preliminary injunction.
(Motion at Table of Contents).
At its heart, Defendants Opposition is nothing more than an improper attempt to run up
the cost of litigation and a classic case of deep-pocketed Goliaths attempting to prevent a few
Davids from enforcing their legitimate intellectual property rights.
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ARGUMENT
I. Defendants Recitation of the Facts is Inaccurate.
The U.S. Defendants have their facts wrong. Contrary to the vague representations in the
Opposition, Plaintiffs did not wait a year to bring suit. This case was filed on August 13, 2014
(Docket No. 3), shortly after Plaintiffs learned of the Film and its impending U.S. Distribution.
Plaintiffs copyright was registered in 2013; it is undisputed that the Film was first released in
U.S. theaters on September 19, 2014, and on-demand/online on August 19, 2014. Plaintiffs
waited a few weeks after filing the Complaint to serve the Defendants and bring the instant
Motion, but only because Plaintiffs were diligently working during that time to negotiate an
amicable resolution to this case. Regardless, and importantly for the purposes of Plaintiffs
Motion, the U.S. Defendants concede that they have continuing, ongoing plans to distribute and
promote the Film. (Opposition at 15).
Indeed, the Opposition completely ignores U.S. Defendants continued acts of
infringement, through the ongoing distribution and online streaming of the Film in the U.S., as
well as the reproduction and continued depiction of the Infringing Work in and on a variety of
printed Film marketing materials, Film trailers and Film stills used on websites and social media
properties controlled by the U.S. Defendants. As a result, Defendants Opposition is fixated on
the first instance of infringement (the original creation of the Infringing Work, on set in
Romania, allegedly by the non-U.S. Defendants), but fails to address the many ongoing
infringing activities currently occurring here in the United States. For example, it is indisputable
that as of the date of this filing, lead Defendant Voltage Pictures, LLC (Voltage) continues to
host a branded Youtube page with a version of the Official Trailer (2014) for the Film that
prominently features the Infringing Work, immediately following a large version of Voltages
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logo. This Youtube page (available at URL https://www.youtube.com/watch?v=rae7_O_6EtU)
directs consumers to the Films official site, also hosted by Voltage, and has received more
than 2.1 million views, nearly 5,000 thumbs up or thumbs down votes, and nearly 1000
comments:
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The U.S. Defendants contention that the Plaintiffs have ignored post-eBay caselaw is no
more than an attempt to distract the Court from U.S. Defendants own blatant, ongoing,
profitable copyright infringement in the United States. Plaintiffs Motion is consistent with the
law of the Seventh Circuit, addresses each factor for seeking a preliminary injunction and sets
forth undisputed facts that support the granting of an injunction. The U.S. Defendants have not
offered any credible explanation for why they continue to use the Infringing Work, and have
failed to raise any persuasive argument against a narrowly-tailored injunction here.
II. The Berne Convention Allows Plaintiffs to Bring Suit Based on a Argentinian Copyright.
The U.S. Defendants contend that Plaintiffs Argentinian Copyright registration does not
evidence ownership of a valid copyright and thus cannot be the basis to bring this suit. The U.S.
Defendants are wrong. They do not, and cannot, rebut Plaintiffs right to bring suit in the United
States under the Berne Convention. (Motion at 4 (citing 17 U.S.C, 101, 104, 411; Sanhu
Singh Hamdad Trust v. Ajut Newspaper Adver., Mktg. and Commcns., Inc., 503 F. Supp. 2d
557, 584 (S.D.N.Y. 2007)). Moreover, despite admitting that the analysis of Plaintiffs
ownership must be conducted under the law of the country where the work was created[,] U.S.
Defendants provide no legal authority to support their contention that Plaintiffs copyright
registration is invalid under the laws of Argentina.1
Likewise, U.S. Defendants contention that Plaintiffs failed to provide competent
evidence of their copyright ownership is frivolous. Plaintiffs Mehaffey and Escalada submitted
1 Opposing Defendants resort to citing U.S. law for the irrelevant proposition that the Argentinian copyright right registration is not entitled to the procedural benefits of Section 401(c). For the reasons stated in their own Opposition, Opposing Defendants arguments are not persuasive.
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uncontroverted sworn testimony that the facts alleged [in the complaint in this matter] are true
and correct[,] including the specific identification of the copyright filing, the co-authorship of
the Copyrighted Artwork, and co-ownership of the copyright. (Dkts. 3 at 21 and 22; 11 at 3
and 12 at 2). Defendants focus on the fact that Plaintiff Mehaffeywho is a Canadian citizen,
rather than a citizen of Argentinais not identified on the face of the relevant copyright
registration. But Defendants present no authority to support their contention that this invalidates
the registration, because none exists. There is clearly no dispute among the Plaintiffs as to the
ownership of the Copyrighted Artwork or the validity of the Argentinian copyright registration,
so U.S. Defendants cannot manufacture a dispute to avoid liability here. Similarly flawed are
U.S. Defendants evidentiary objections to the copyright filing, submitted as Exhibit D to the
complaint in this matter. U.S. Defendants had the opportunity to depose Plaintiffs or provide
contradictory evidence, but have failed to do so.
III. Defendants are Wrong on the Merits.
It is Undisputed that the Infringing Work is Substantially Similar to A.the Copyrighted Artwork.
The U.S. Defendants do not, and cannot credibly, contest that the Infringing Work
cop[ies] [the] constituent elements of the [Copyrighted] [W]ork that are original[,] Zimnicki v.
Gen. Foam Plastics Corp., No. 09-C2132, 2011 WL 5866267, at *2 (N.D. Ill. Nov. 22, 2011),
thus the Court should infer that [they] are unable to do so. (Opposition at 10, n. 10). Instead,
U.S. Defendants argue that their fair use defense, raised for the first time after Plaintiffs filed
their Motion, overcomes any copyright allegations. Here too, the U.S. Defendants arguments
are misplaced.
The U.S. Defendants cursory overview of their fair use defense is not sufficient to
overcome Plaintiffs strong likelihood of success on the merits. To the contrary, as stated in
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Plaintiffs Motion, the threshold for establishing the likelihood of success is low, and
requires merely establishing a better than negligible chance of succeeding on the merits.
(Motion at 3 (quoting Michigan v. U.S. Army Corps. of Engineers, 667 F.3d 765, 782 (7th Cir.
2011) and Boucher v. Sch. Bod. Of Sch. Dist. Of Greenfield, 134 F.3d 821, 824 (7th Cir. 1998)).
Thus, according to the Seventh Circuit, a movant satisfies this element so long as it
demonstrates a better than negligible chance of succeeding on the merits. Woodard v. Victory
Records, Inc., No. 11-CV-7594, 2013 WL 5517926, at *2 (N.D. Ill. Oct. 4, 2013) (quoting
Boucher v. Sch. Bd. of Sch. Dist. of Greenfield, 134 F.3d 821, 824 (7th Cir.1998) (internal
citations omitted)). Simply put, to avoid a preliminary injunction, the U.S. Defendants
purported fair use defense must be so strong that it gives Plaintiffs a less than negligible
chance of succeeding on the merits. (Id., emphasis added). It is not.
U.S. Defendants scant two-paragraph, unsupported conclusory assertions regarding their
fair use defense improperly puts the onus on Plaintiffs to disprove a defense that Defendants
have yet to establish, and worse, contains factual inaccuracies. (Opposition at 8). For example,
U.S. Defendants contention that Plaintiffs do not even speculate that the imagery in the Film
possibly injured their long-range commercial opportunities, is contrary to Plaintiffs discussion
of the long term harm they will continue to suffer as result of Defendants continued
infringement. (Id; Motion at 10-13). Moreover, the copyright fair use defense protects critical
commentary and transformative artistic uses of prior artwork that benefit the public. It does not
provide an after-the-fact excuse for an intentional infringer who gets caught.
Accordingly, Plaintiffs have demonstrated a better than negligible chance of succeeding
on the merits. Woodard., 2013 WL 5517926, at *2.
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Proof of Actual Viewing is not Required to Establish Access. B.
According to the U.S. Defendants, Plaintiffs must prove Defendants actual access to the
Copyrighted Work. (Opposition at 12 (stating Plaintiffs failed to show Defendants have been to
Buenos Aires or Argentina)). But here too, U.S. Defendants argument is contrary to the law.
U.S. Defendants interpretation of this factor would effectively eviscerate this Circuits
access standard. While U.S. Defendants admit that [b]road public display of a product may
give rise to an inference of access, they persist in arguing, without citing to authority, that no
such inference arises in this case. (Opposition at 12; Spinmaster, Ltd. v. Overbreak LLC, 404 F.
Supp. 2d 1097, 1104 (N.D. Ill. 2005) (quoting JCW Invs., Inc. v. Novelty, Inc., 222 F.Supp.2d
1030, 1034 (N.D.Ill. 2002)). Rather, U.S. Defendants argue that Plaintiffs must provide
evidence that Defendants have visited the street in Buenos Aires, been to Argentina, saw
the blogs and internet posts about the [Copyrighted] Work. (Opposition at 12). To the
contrary, courts are clear that [a] demonstration of access does not require proof of actual
viewing, but proof of the opportunity to view the copyrighted work. Further, a strong
inference of access arises when an accused work is virtually identical to the copyrighted work
Ty, Inc. v. GMA Accessories, Inc., 959 F. Supp. 936, 940 (N.D. Ill.) affd, 132 F.3d 1167 (7th
Cir. 1997) (emphasis added).
In addition to the public nature of the Copyrighted Artwork and the broad industry
coverage of the Copyrighted Artwork, U.S. Defendants do not contest that the Infringing Work
(and its mechanical reproductions) are virtually identical to the copyrighted work[,] thus, under
this Circuits precedent, there exists a strong inference of access, that U.S. Defendants cannot
rebut. Id.
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The Supreme Court has Rejected Defendants First Amendment C.Irreparable Harm Argument.
The U.S. Defendants misapprehend the irreparable harm factor. U.S. Defendants
contention that Plaintiffs must provide evidence of actual loss of goodwill or reputation,
Opposition at 6 (emphasis in original), directly conflicts with the Supreme Courts frequently
reiterated [standard that] plaintiffs seeking preliminary relief [need only] demonstrate that
irreparable injury is likely in the absence of an injunction. Winter v. Natural Res. Def. Council,
Inc., 555 U.S. 7, 8, 129 S. Ct. 365, 367, 172 L. Ed. 2d 249 (2008) (emphasis in original).
As courts recognize, damage to reputation and goodwill would be difficult, if not
impossible, to quantify. Apple Inc. v. Psystar Corp. ,673 F. Supp. 2d 943 at 948-950 (N.D. Cal.
2009); id. at 948 (In run-of-the-mill copyright litigation, however, proof of such harm stemming
from infringementsuch as harm to business reputation and market shareshould not be
difficult to establish) (emphasis added); see also MySpace, Inc. v. Sanford Wallace, 498
F.Supp. 2d 1293 1305 (C.D. Cal. 2007) (citing Rent-A-Center, Inc. v. Canyon Tele. & Appliance
Rental, Inc., 944 F.2d 597, 603 (9th Cir. 1991) (Intangible injuries, such as damage to ongoing
recruitment efforts and goodwill, qualify as irreparable harm)). This is particularly the case
when the infringer causes confusion as to the source of the infringing material. As in the Apple,
MySpace, and Microsoft cases, cited in Plaintiffs Motion, here the Defendants overt
representation that the Infringing Work belongs to them weighs this factor heavily toward
granting injunctive relief. Id. (further citations omitted); Motion at 12 (citing Microsoft Corp. v.
Marturano, 2009 U.S. Dist. LEXIS 44450, at *8-8 (E.D. Cal. May 27, 2009); Complaint at
42-44 (This is our worldThe graffiti is ours.)).
Cases cited by the U.S. Defendants do not change the analysis. For example, in Dotster,
the plaintiff submitted affidavits that merely stated it will suffer irreparable harm as a result of
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loss of business. Dotster, Inc. v. Onternet Corp. for Assigned Names & Nos., 296 F.Supp.2d
1159, 1163-64 n. 2 (C.D. Cal. 2003); Am. Promotional Events, Inc.--Nw. v. City & City. of
Honolulu, 796 F. Supp. 2d 1261, 1284 (D. Haw. 2011) (same). Here, Plaintiffs went far beyond
such conclusory assertions. (See Motion at 9-13; Dkts. 11 and 12). Plaintiffs Motion and
supporting declarations articulate the bases for the irreparable harm they face, none of which are
substantively addressed by U.S. Defendants. Thus, the irreparable harm weighs in favor of
Plaintiffs.
Defendants Private Harm Argument is Contrary to Seventh Circuit D.Precedent.
The U.S. Defendants contention that the balance of harms between the parties disfavors
granting a preliminary injunction is contrary to well-established law. U.S. Defendants complain
that Plaintiffs offer no actual evidence to support [the assertion that damages from copyright
infringement cannot be readily estimated,] whereas they would suffer financial harm.
(Opposition at 12). Ironically, in doing so, U.S. Defendants quote and dismiss, without
explanation, binding Seventh Circuit case law. (Id. (citing Motion at 14); Motion at 14 (quoting
In re Aimster Copyright Litigation, 334 F. 3d 643, 655 (7th Cir. 2003); infra; and supra).
Accordingly, this factor supports granting a preliminary injunction.
The Supreme Court has Rejected Defendants Public Harm Analysis. E.
U.S. Defendants argue that the public interest disfavors preliminary injunctive relief
because movies are a form of expression protected by the First Amendment. (Opposition at 13-
14). U.S. Defendant argument has already been rejected by the Seventh Circuit and the
Supreme Court. In re Aimster, 334 F. 3d at 656 (quoting Eldred v. Ashcroft, 537 U.S. 186, 123
S.Ct. 769, 788-89, 154 L.Ed.2d 683 (2003) (copyright law contains built-in First Amendment
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accommodations[the First Amendment] bears less heavily when speakers assert the right to
make other peoples speeches.)).
U.S. Defendants misapply this factor and fail to cite any authority relevant to the
preliminary injunction standard. Notably, [i]n balancing the harms to the parties and the public,
the court uses a sliding scale approach, so that the more likely it is the movant will succeed on
the merits, the less the balance of irreparable harms need weigh toward its side. JCW Invs.,
Inc., 222 F. Supp. 2d at 103. U.S. Defendants ignore this balancing test for two reasons. First,
courts have held that there is no countervailing public interest at risk that would outweigh [a
plaintiffs] interest in preventing continued, blatant copyright infringement. Graphic Design
Mktg. v. Xtreme Enters., Inc. 772 F. Supp. 2d. 1029, 1035 (E.D. Wis. 2011). Second, when, as
here, Plaintiffs likelihood of success on the merits is high, the sliding scale test requires that
less of the balance of the irreparable harmweigh in favor of the Plaintiff. JCW Invs., Inc.,
222 F. Supp. 2d at 103. Accordingly, the public harm factor indisputably favors Plaintiffs
No Bond is Necessary. F.
U.S. Defendants request for a bond should be denied, as a bond is unnecessary in this
case and, given the disparity between the parties financial resources, would actually impede
justice rather than further it.
First, in this Circuit, [a] bond is not necessary for a preliminary injunction to take
effect. Scholle Corp. v. Rapak LLC, No. 13 C 3976, 2014 WL 3687734, at *2 (N.D. Ill. July 24,
2014) (citing Wayne Chemical, Inc. v. Columbus Agency Services Corp., 567 F.2d 692, 701 (7th
Cir. 1977) (Finally, it was not error for the District Court to issue the preliminary injunction
without a bond. Under appropriate circumstances bond may be excused, notwithstanding the
literal language of Rule 65(c).) (emphasis added). [T]he Seventh Circuit has recognized that
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there is no reason to require a bond in cases where the Court is satisfied that there is no danger
that the opposing party will incur any damages from the injunction. Planned Parenthood of
Indiana & Kentucky, Inc. v. Commr, Indiana State Dept of Health, 984 F. Supp. 2d 912, 931
(S.D. Ind. 2013) (citing Habitat Educ. Ctr. v. United States Forest Serv., 607 F.3d 453, 458 (7th
Cir.2010)). In Habitat, the Seventh Circuit recognized that when, like in this case, the
injunction would exceed the applicants ability to pay, and the district court balances (often
implicitly) the relative cost to the opponent of a smaller bond against the cost to the applicant of
having to do without a preliminary injunction that he may need desperately. Habitat Educ. Ctr.
v. U.S. Forest Serv., 607 F.3d 453, 458 (7th Cir. 2010) (citing Wayne Chemical, Inc. v.
Columbus Agency Service Corp., 567 F.2d 692, 701 (7th Cir.1977); Temple University v. White,
941 F.2d 201, 220 (3d Cir.1991); People ex rel. Van De Kamp v. Tahoe Regional Planning
Agency, 766 F.2d 1319, 132526 (9th Cir.1985); City of Atlanta v. Metropolitan Atlanta Rapid
Transit Authority, 636 F.2d 1084, 1094 (5th Cir.1981)).
The current case presents the precise situation described by Habitat. Based on their
erroneous understanding of this Circuits law, U.S. Defendants have asked for a bond amount
that three independent street artists simply cannot pay so as to condition the exercise of
plaintiffs constitutional rights upon their financial status. Smith v. Bd. of Election Commrs for
City of Chicago, 591 F. Supp. 70, 71-72 (N.D. Ill. 1984). Plaintiffs are successful in their chosen
field, but their financial resources are simply not in the same universe as the U.S. Defendants, all
movie-industry insiders who have admittedly already made close to one million dollars on the
Film. Further, conclusory language aside, Defendants Opposition fails to expressly identify any
specific harm a single Defendant would suffer should the Court enter an injunction. U.S.
Defendants do not identify any specific third-party contracts, or the activities associated with
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those contracts, that would be impacted by an injunction. Thus, the Court, at its discretion, may
excuse any bond.
Second, U.S. Defendants request for a $2,000,000 bond constitutes nothing more than an
improper attempt to run up the cost of litigation, making it impossible for three independent
artists to enforce their Constitutional rights. See Id. (We decline, however, to order plaintiffs to
post this bond. To do so, we believe, would condition the exercise of plaintiffs constitutional
rights upon their financial status. Indeed, only a wealthy defendant could post such bond in most
instances.). U.S. Defendants appear to have conjured up this bond amount based on less than a
million dollars in total revenue because of concerns about their international distribution. Such
worries are unwarranted as the Courts order would only affect infringing activity within the
United States.2
This Court Has the Inherent Authority to Fashion an Appropriately G.Tailored Injunction.
The Court can address U.S. Defendants concerns that a preliminary injunction will be
overly broad. U.S. Defendants do not contest that a preliminary injunction is the only way to
stop continued and further use of the Infringing Work in the United States on promotional and
marketing materials, particularly websites and social media, or that a preliminary injunction is
the only way to prevent the U.S. Defendants from continuing to repeat the false representations
that Defendants Gilliam and/or Warren conceived of the Infringing Work.
2 At a minimum, should the Court decide that a bond of some amount is appropriate in this case, that amount should not be based on the highly speculative $2 million figure U.S. Defendants have thrown out. Instead, Plaintiffs respectfully request that they be given the opportunity to take some targeted discovery, and have further briefing on the appropriate amount, after a preliminary injunction has been entered.
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The U.S. Defendants argue that an injunction should be denied because the non-
infringing portions of the Film should not be disrupted pending a decision on the merits, and
Defendants will have to expend substantial resources to remove the Infringing Work from the
Film. Notably, however, lead defendant Voltage makes absolutely no effort to quantify or
explain what it means by substantial resources. (See Docket 36-1, 12). Even if it would be
expensive to remove the Infringing Work from physical copies of the Film currently in U.S.
theaters, Defendants do not explain why they cannot immediately (and cheaply) remedy the
online infringements, i.e., by pulling down infringing trailers, photos, Film stills, and streaming
copies of the Film. In any event, this Court has the inherent authority to craft an injunction that
will balance any potential for harm to the U.S. Defendants against Plaintiffs right to a remedy
against ongoing infringement.
CONCLUSION
For all of the foregoing reasons, Plaintiffs respectfully renew their request that the Court
GRANT Plaintiffs Motion for Preliminary Injunction, and enter a narrowly-tailored injunction
to prevent the U.S. Defendants from continuing to make money off of the Infringing Work.
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4818-5479-7856.3
Dated: December 2 , 2014
Respectfully submitted,
By: /s/ Jami A. Gekas ____________________ Jami A. Gekas (IL# 6275196) Kenneth K. Suh (TX # 24070701) Diego R. Figueroa Rodriguez (Of Counsel) Diego Fernandez (Of Counsel, Licensed to Practice in Argentina) FOLEY & LARDNER LLP 321 North Clark Street, Suite 2800 Chicago, IL 60654-5313 Phone: 312.832.4500 Fax: 312.832.4700 Attorneys for Plaintiffs
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4818-5479-7856.3
CERTIFICATE OF SERVICE
The undersigned certifies that all counsel of record who are deemed to have consented to
electronic service are being served with a copy of this document via the Courts CM/ECF system
on this December 2, 2014. Copies of this document are being served to those Defendants who
have not yet appeared via electronic mail.
/s/Jami A. Gekas_________________ Jami A. Gekas, Attorney for Plaintiffs
Case 2:15-cv-00889-R-JEM Document 39 Filed 12/02/14 Page 19 of 19 Page ID #:402