Laches Bars Prospective Injunctive Relief in Copyright Infringement Case: Ninth Circuit | Practical Law

Laches Bars Prospective Injunctive Relief in Copyright Infringement Case: Ninth Circuit | Practical Law

In Evergreen Safety Council v. RSA Network, the US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of summary judgment dismissing RSA’s copyright infringement claim on grounds of laches. This case is notable for the Ninth Circuit’s holding that RSA's laches barred the availability of prospective injunctive relief.

Laches Bars Prospective Injunctive Relief in Copyright Infringement Case: Ninth Circuit

by PLC Intellectual Property & Technology
Published on 22 Oct 2012 • USA (National/Federal)
In Evergreen Safety Council v. RSA Network, the US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of summary judgment dismissing RSA’s copyright infringement claim on grounds of laches. This case is notable for the Ninth Circuit’s holding that RSA's laches barred the availability of prospective injunctive relief.

Key Litigated Issues

The key issue for decision for the US Court of Appeals for the Ninth Circuit in Evergreen Safety Council v. RSA Network was whether the RSA's claim for copyright infringement was barred by laches and, more particularly, whether this bar also extended to its claim for prospective injunctive relief.

Background

In 1999, Evergreen sent to RSA for RSA's review and comment a letter enclosing the draft training manual at issue in this litigation. RSA claimed that it did not open the letter in 1999 or become aware of its contents until 2010. From 1999 through 2009, Evergreen, not having heard from RSA, printed the manual in multiple editions. In late 2009, after receiving a demand letter from RSA and meeting with RSA and its attorney, Evergreen sued RSA seeking a declaratory judgment of non-infringement regarding some of the artwork in Evergreen's manual and asserting a fair use defense. Eleven months later, RSA sent a letter to Evergreen identifying certain allegedly infringing items and demanding that Evergreen stop infringing. In 2010, RSA asserted a counterclaim for copyright infringement and Evergreen asserted several affirmative defense, including laches.

Outcome

In its October 17, 2012 opinion in Evergreen Safety Council v. RSA Network, the Ninth Circuit affirmed the US District Court for the Western District of Washington's grant of summary judgment dismissing, on grounds of laches, RSA's claim that Evergreen infringed its copyrights in a pilot escort vehicle operator training manual.
After the district court granted Evergreen's motion for summary judgment dismissal on the basis of laches, RSA moved for reconsideration on the grounds that:
  • The evidence did not fulfill the required elements of laches.
  • Evergreen's willful infringement prevented the application of laches.
  • Laches could not bar RSA's claim for prospective injunctive relief.
The district court denied RSA's motion for reconsideration. RSA appealed from the court's grant of summary judgment dismissing its copyright infringement claim and the Ninth Circuit affirmed the decision below.
The Ninth Circuit ruled that laches barred RSA's copyright claim and that the willfulness exemption did not apply. Addressing RSA's request for an injunction prohibiting Evergreen's potential future infringement, the court ruled that although a claimant's laches does not per se bar its claims for prospective relief, it may bar these claims when, as in this case, the alleged future infringements both:
  • Are the same as the alleged past infringements.
  • Stem from the same claimed access to the allegedly copyright-protected materials.

Court Documents