A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Grants Permanent Injunction Against Continued Copyright Infringement of Software

In a May 9, 2014 ruling, Judge Katherine B. Forrest granted a permanent injunction against defendant ABN Amro Bank's continued use of the plaintiff's software.  In an earlier ruling (here), Judge Forrest granted summary judgment of copyright infringement after finding that ABN Amro did not retain the right to use the software when it sold a subsidiary that had licensed the software from the plaintiff.  In later defending against the plaintiff's request for an injunction, ABN Amro argued that the software was too important to its business and too integrated into its systems to stop using the software, and since the plaintiff was demanding commercially unreasonable terms for a license, the Court should, in essence, grant it a perpetual license for a commercially reasonable royalty.  In rejecting that argument, Judge Forrest found that the plaintiff would be irreparably harmed without an injunction, that the balance of hardships favored the plaintiff, and the Court was particularly concerned about the public interest, writing:
[I]f this Court were to find that a license for an important piece of software may not be revoked -- or, put otherwise, must be renewed -- on terms the licensee considers reasonable, the Court would be flooded with requests to assume licensing responsibilities it is ill-equipped to assume.  This undue burden is not in the public interest in light of its already busy dockets.  To be sure, there are instances in which courts impose licensing terms -- when judicial fact-finding has determined a particular and unusual need. . . . Courts should not wade into such deep waters casually.
The Court gave ABN Amro one year to transition from the software at issue, and wrote that the Court would consider a "stay on condition that the parties both agree to move with all available speed to perfect and argue any appeals (e.g., no delays or extensions of deadlines)."
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