MEMORANDUM AND TEMPORARY RESTRAINING ORDER
Plaintiff Design Furnishings, Inc. filed this action in state court against defendant Zen Path LLC alleging federal and state law claims arising from defendant's notices to eBay that plaintiff's auctions for wicker patio furniture infringe on defendant's pending copyright applications for the furniture designs and photographs of the furniture. Defendant has removed the action to this court, and plaintiff now requests to continue the state court's temporary restraining order ("TRO") based on the filings in state court. This court heard oral arguments on the request from counsel for both sides on October 18, 2010. The state court's TRO expires on October 22, 2010, when a state court hearing for a preliminary injunction was to be held.
I. Factual and Procedural Background
Both plaintiff and defendant sell wicker patio furniture from the same Chinese manufacturer on eBay. (Hayes Decl. ¶ 2 (Docket No. 1 Ex. 8).) In or about June of 2010, defendant contacted plaintiff, indicating that plaintiff's sale of the furniture violated copyright or patent law and plaintiff's pictures of the furniture violated copyright law. (Id. ¶ 3.) Jennifer Hayes, the owner and president of plaintiff, stopped using the pictures, but refused to stop selling the furniture unless presented with proof of defendant's intellectual property rights in the furniture. (Id. ¶¶ 4-5.) On August 27, 2010, defendant filed copyright applications for (1) a round sectional wicker furniture collection, (2) a U-shaped sectional wicker furniture collection, (3) a modern boxy sectional wicker furniture collection, and (4) a Capri sectional wicker furniture collection. (Banuelos Decl. ¶ 2 (Docket No. 1 Ex. 9).) The applications identified the works as "sculpture/3-D artwork, Ornamental Design" and attached pictures of the furniture.*fn1 (Id. Exs. A-E.)
On September 22, 2010, defendant notified eBay that plaintiff was selling furniture within the scope of the copyrights. (Messenger Decl. ¶ 3 (Docket No. 1 Ex. 10).) Even if a seller does not intend to cause eBay to temporarily or permanently suspend another seller's account, eBay temporarily and permanently suspends a seller's account based on notices of claimed infringement. (Hayes Decl. ¶ 9.)
Pursuant to eBay's policies, plaintiff has had approximately thirty-five auctions terminated and been prevented from listing new items, even non-furniture items.*fn2 (Id. ¶ 13.) Plaintiff alleges that defendant is still submitting notices to eBay, sixty-three as of the motion for a TRO in state court, and has caused plaintiff's policy violation rating with eBay to go from "high" to "very low" on one account and "high" to "low" on a second account. (Id. ¶ 14.) The owner and president of plaintiff states:
If Defendant is not stopped from submitting repeated notices of claimed infringement when there is absolutely no basis to claim that DFI's auctions are infringing on Defendant's intellectual property rights, then eBay could very well permanently suspend DFI's accounts. If that occurs, then my entire business will cease to exist since I rely on eBay for 95% of the company's revenues. I will be out of work and I will be forced to lay off DFI's employees. (Id. ¶ 15.)
In its Complaint originally filed in state court, plaintiff asserts claims for (1) misrepresentation of intellectual property infringement in violation of 17 U.S.C. § 512(f) of the Digital Millennium Copyright Act ("DMCA"), (2) tortious interference with a contract, (3) tortious interference with prospective economic advantage, (4) a violation of California's Unfair Competition Law, Cal. Bus. & Prof. Code §§ 17200-17210, and (5) declaratory and injunctive relief. (Docket No. 1 Ex. 1.) On October 1, 2010, the state court granted a motion for a TRO to enjoin defendant until October 22, 2010, from (1) submitting notices to eBay that plaintiff's auctions infringe on defendant's intellectual property rights and (2) defaming plaintiff. (Docket No. 1 Ex. 15.) The state court denied plaintiff's request to order defendant to notify eBay that plaintiff has not infringed on defendant's intellectual property rights. (Id.) Defendant removed the action to this court, and plaintiff now requests to continue the state court's TRO based on the filings in state court.
"A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest."*fn3 Winter v. Natural Res. Defense Council, Inc., --- U.S. ----, 129 S.Ct. 365, 374 (2008). In Winter, the Court reaffirmed the traditional standard for granting a preliminary injunction and rejected the Ninth Circuit's variations of the standard, such as requiring only a "possibility" of irreparable harm if the plaintiff shows a strong likelihood of prevailing on the merits. Id. at 375.
A. Likelihood of Success on the Merits
The DMCA provides that "[a]ny person who knowingly materially misrepresents under this section . . . that material or activity is infringing . . . shall be liable for any damages . . . incurred by the alleged infringer . . . who is injured by such misrepresentation, as the result of the service provider . . . removing or disabling access to the material or activity claimed to be infringing . . . ." 17 U.S.C. § 512(f). Liability does not extend to when "an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake. Rather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner." Rossi v. Motion Picture Ass'n of Am. Inc., 391 F.3d 1000, 1005 (9th Cir. 2004) (internal citation omitted).
To establish copyright infringement, a plaintiff must show (1) ownership of the copyright, and (2) copying of the protected expression by the defendant. Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1119 (9th Cir. 1999). A valid certificate of copyright registration creates a presumption of originality of the work for five years from the date of registration. Swirksy v. Carey, 376 F.3d 841, 851 (9th Cir. 2004).*fn4 "[T]his presumption is fairly easy to rebut because the Copyright Office tends toward cursory issuance of registrations." Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., Nos. 07-2180, 09-1437, 2010 WL 3278404, at *7 (4th Cir. Aug. 20, 2010) (hereinafter Universal II) (despite earlier upholding of a denial of a preliminary injunction, finding copyright claim infringement). "[T]he presumption of validity may be rebutted where other evidence in the record casts doubt on the question," such as "evidence that the work had been copied from the public domain or by evidence that the work was a non-copyrightable utilitarian article." Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (internal citations and quotation marks omitted).
The Copyright Act excludes from copyright protection any "useful article," defined as an article having "an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." 17 U.S.C. § 101. The Act extends copyright protection to "pictorial, graphic, and sculptural works." Id. The Act provides that "the design of a useful article . . . shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Id.
Thus, a "purely utilitarian article--such as bedroom furniture--receives no protection." Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1369 (Fed. Cir. 2006) (applying Ninth Circuit copyright law and upholding copyright protection of ornamental carvings on furniture, not the furniture as a whole). Nonetheless, "if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existence independently as a work of art, such features will be eligible for registration." Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 893 (9th Cir. 1983); see also Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., 74 F.3d 488, 493 (4th Cir. 1996) ("Thus, the industrial design of a unique, aesthetically pleasing chair cannot be separated from the chair's utilitarian function and, therefore, is not subject to copyright protection. But the design of a statue portraying a dancer, created merely for its expressive form, continues to be copyrightable even when it has been included as the base of a lamp which is utilitarian."); Universal II, 2010 WL 3278404, at *7 (despite earlier upholding of the denial of a preliminary injunction, finding the ornamental design on the furniture to be original and conceptually distinct from the utilitarian aspects of the furniture); Universal Furniture Int'l., Inc. v. Collezione Europa USA, ...