Chris Rock's Movie Good Hair Prevails against Motions for Injunctive Relief

Regina Kimball was probably pleased when comedian Chris Rock requested to view her film, My Nappy Roots, a documentary that explores the politics, culture and history of African-American hair. However, this happiness inevitably faded after she saw a trailer for Rock’s film, Good Hair, in late September. Kimball believed that Rock’s movie incorporated elements of her film, so she filed suit, alleging copyright infringement and requested that the Court enjoin the film’s October debut. (Kimball v. Rock, et. al., case number 2:09-cv-07249-DSF-E (C.D. Cal.)). However, U.S. District Court Judge Dale S. Fischer ultimately denied Kimball’s request for injunctive relief, and allowed the film to show.

To establish copyright infringement, two elements must be proven: (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are similar. The Court refused to grant Kimball’s request for injunctive because she had failed to demonstrate a likelihood of success on the merits.

First, even though her film debuted in 2005, Kimball’s copyright registration is still pending. The Court noted that there is a disagreement, among various Circuits, about whether a pending registration is enough to confer jurisdiction.

Second, with regard to infringement, Kimball provided the following chart to demonstrate the similarities between the two films:

My Nappy Roots	Good Hair
Title connotes the perceived negative end of the spectrum of black hair	Title connotes the perceived positive end of the spectrum of black hair
Is socially and politically conscious	Is socially and politically conscious
Kimball was inspired to make the film because of her daughter's hair angst	Rock claims he was inspired to make the film because of his daughter's questions about her hair
Includes an interview with a doctor	Includes an interview with a dermatologist and Chemist
Includes an interview with hair care [sic] George Johnson	Includes an interview with hair care pioneer Joe Dudley
Tells story of weave with film clips of India, focusing on Tonsure ceremony at Temple Tirumala Tirupati	Visits India to explore a principle source of human hair, focusing on Tonsure ceremony at Temple Tirumala Tirupati
Has comedian Tommy Chung for comedic relief	In addition to Rock, has comedian Paul Mooney for comedic relief
Covers the business of black hair care	Covers the business of black hair care
Celebrities tell their own hair stories	Celebrities tell their own hair stories
Tour of manufacturing plant where hair relaxers are made	Tour of manufacturing plant where hair relaxers are made
Interviews Aleila Bundles	Interviews Aleia Bundles
Photos of Madame C.J. Walker graduation ceremony	Footage of J. Dudley graduation ceremony
Discuses controversy over inventor of the "Jheri Curl"	Interviews Willie Morrow the "self-proclaimed Jheri Curl inventor"
Interviews Sam Enos, founder of BOBSA	Interviews Sam Enos, founder of BOBSA

This chart did not convince the court. In particular, when it applied the substantial-similarity test, which has both an intrinsic and extrinsic component, the Court held that the two films differed with regard to their theme, plot, sequence of events, characters, dialogue, setting, mood and pace. The court held that Good Hair is a comedic documentary, while My Nappy Roots takes a serious and holistic view, and is an authority on the history and social dynamics of African-American Hair.

Ten Reasons Your Company Should Not File a Lawsuit To Resolve a Business Dispute

While I make my living suing people, I think all clients should be advised of the top ten reasons not to file a lawsuit. I offer this list:

1. You owe your opponent more money than he or she owes you.
2. You don’t want to turn over relevant documents to your opponent’s lawyer or they are already shredded.
3. You fired all of your employees who are knowledgeable about the dispute.
4. You lack the time to educate your lawyer about the dispute, retrieve relevant documents, or give a deposition.
5. You think that all witnesses tell the truth.
6. You regard yourself as superior to jurors or the Judge.
7. You believe that just by filing the lawsuit, you will get a settlement.
8. Your opponent has no money to pay a judgment.
9. Your company or key witnesses must continue to do business with your opponent or his or her allies.
10. The cost of the lawsuit is more than you would benefit with total victory.

If none of your clients are now contemplating a lawsuit, print and save.

A Tale of Two Orders

It was with some excitement that Volterra Semiconductor Corporation announced that U.S. District Court Judge Joseph Spero granted its motion for a preliminary injunction against Infineon Technologies AG, Infineon Technologies North America Corporation and Primarion Inc. (Infineon/Primarion) in its patent infringement lawsuit. (Case No. 08-cv-05129-JCS (N.D. Cal.).

Commentators note that this is a rare decision because, since the Supreme Court’s ruling in eBay, Inc. v. Mercexchange, L.L.C., which eliminated the presumption of irreparable harm in the context of permanent relief, it has been difficult to win injunctions in patent infringement cases.

Thus, Volterra was obviously pleased and stated that “"[w]e believe this ruling signals the likelihood of success on the merits of our case against Infineon/Primarion, and validates the strength of our intellectual property position."

While the Judge orally ruled on the issue of granting the preliminary injunction, a formal order has not yet been issued. Instead, the court directed the parties to both file briefs on the amount of the bond and submit proposed orders. Not surprisingly, the parties’ proposed orders are vastly different. The language of an injunction order is important because it defines who is to be restrained, what acts are to be restrained, and essentially protects a judge from an embarrassing appeal. Fed. R. Civ. P. 65 (d) dictates what each order must contain:

1. The reasons the court issued the injunction: Volterra’s proposed order states that a preliminary injunction is appropriate because the Company proved all the necessary elements, including that “Volterra is likely succeed on the merits of its patent infringement claims.” Conversely, Infineon’s proposed order simply notes that the preliminary injunction is “warranted.” While I understand why Infineon would probably not want to elaborate on the reasons why the Court granted the injunction, unfortunately, the language in its proposed order does not adhere to the mandate of Rule 65.
2. The persons or entities to be restrained: Volterra and Infineon’s orders are fairly similar in that they restrain the defendants and the defendants’ affiliates. However, Infineon’s order would exempt third parties, who have either purchased or have already contracted to purchase enjoined products.
3. The acts to be restrained: Volterra’s order would halt all sales, manufacturing or marketing of any product that contained its patents. Conversely, Infineon’s order is much more liberal and would not enjoin the defendants from:
   
   
   1. shipping enjoined products that have already been sold to customers or have already been promised to customers
   2. providing support for enjoined products that have already been sold or otherwise provided
   3. selling enjoined products that have been manufactured, but not yet sold.

Infineon’s order also cautions that any relief not granted in the order is denied.

4. Bond: Volterra’s order does not speak to bond. Infineon’s order, on the other hand, would have Volterra post a $20 Million Bond.
5. The date and hour of issuance: Infineon’s order states that the order shall not take place until the Plaintiff has posted bond. Infineon’s order also states that the order shall not take effect until 60 days until after the entry of the Order, so as to give the defendants time to review the Court’s Order and to explore a potential design-around.
6. The order’s expiration date: Infineon’s order states that the injunction shall run until trial, unless there is an earlier order modifying, terminating, or vacating the order. Volterra’s order simply contains standard language stating that the order shall remain effect until further order of the Court.

The parties are currently briefing the issue of the proper bond amount. (As is the case in patent litigation, most portions of the briefs are redacted, and the exhibits are sealed). Judge Spero is expected to issue a formal order soon, and I will let you know when he does, as it will be interesting to see which order was more persuasive.