On September 4, 2015, a long running legal battle over the right to use footage from a 1972 concert by Aretha Franklin took a twist right out of a Hollywood movie when the Queen of Soul sought, and was granted, a temporary restraining order preventing a screening of the documentary film Amazing Grace at this year’s Telluride Film Festival.

In her complaint for emergency injunctive relief, Ms. Franklin alleged that footage of a concert at the New Missionary Baptist Church in Los Angeles, filmed by director Sydney Pollack, which comprised the bulk of the documentary was obtained by Amazing Grace producer Alan Elliot subject to a quitclaim agreement. That quitclaim agreement explicitly stated that Ms. Franklin’s authorization would be required for any subsequent commercial exploitation of the footage. Also according to the complaint, Ms. Franklin has not given Elliot her permission. The complaint also states that Elliot was aware that he lacked Ms. Franklin’s permission given that the parties had been engaged in a prior lawsuit in 2011 over the same issues. The complaint further alleges that Elliot’s movie violates the anti-bootlegging statute found in the 1976 Copyright Act (17 U.S.C. 1101(1)), which specifically provides for injunctive relief.

Judge John L. Kane of the U.S. District Court for the District of Colorado, in a brief three-page order, held that the anti-bootlegging statute applied and provided for injunctive relief. Judge Kane also found that the film consists predominantly of the 1972 concert footage and essentially recreated the concert experience, thus, Elliot could not claim fair use. Judge Kane further found that the quitclaim agreement required Elliot to negotiate with Ms. Franklin for her permission to use the footage, that Ms. Franklin had not given her permission to use the footage, and that Ms. Franklin has a strong interest in protecting her publicity rights. Based on these factors, Judge Kane found that Ms. Franklin had a high likelihood of success on the merits, the issuance of a fourteen day temporary injunction would preserve the status quo, the balance of equities weighed in favor of granting the injunction, and that it would not be a disservice to the public to issue the injunction.

Critics of the opinion have argued that the injunction is unprecedented and constitutes a prior restraint on free speech.

In terms of precedent, if Judge Kane relied upon the moving party’s papers, the decision to grant injunctive relief was based on several opinions that are either inapposite or are no longer good law. In the motion for temporary injunction, Franklin’s attorney first cites to Kiss Catalog v. Passport In’t Prods., Inc., 405 F.Supp.2d 1169 (C.D. Cal. 2005) for the proposition that the anti-bootlegging statute applies under the facts of this case. The motion contends that the statute “protects recordings of broadcast which may have been lawfully made in the first instance, but are then distributed in violation of the performer’s permission.” The statute, however, is not so broad and Kiss Catalog does not hold that the subsequent distribution of a lawfully created copy of a performance is a violation. Rather, the Kiss Catalog case dealt with a situation where the recording was alleged to have been made without the permission of the artists. See Kiss Catalog v. Passport Int’l Prods., Inc. (Kiss I), 305 F.Supp.2d 823 (C.D. Cal. 2004). Nor does the case address the issue of injunctive relief under the statute.

Franklin then cites Elvis Presley Enterprises, Inc. v. Passport Video, 349 F.3d 622 (9th Cir. 2003) in which the Ninth Circuit affirmed an injunction preventing the defendant from distributing a biography about Elvis Presley because its use of copyrighted footage of The King was not “fair use” and, accordingly, the plaintiff would likely prevail on the merits. However, that case was expressly overruled by the Ninth Circuit in Flexible Lifeline Systems, Inc. v. Precision Lift, Inc., 654 F.3d 989 (9th Cir. 2011), which noted that since the Passport Video decision, the United States Supreme Court’s decisions in EBay inc. v. MercExchange, LLC, 547 U.S. 388 (2006) and Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008) articulated a heightened standard for granting injunctive relief in trademark and copyright cases – eliminating the presumption of irreparable harm and requiring the plaintiff to demonstrate that he or she would actually suffer irreparable harm. Whether Ms. Franklin would suffer “irreparable harm” should the documentary be screened was not a factor addressed in Judge Kane’s ruling. The injunctions granted in both Kiss Catalog and Elvis Presley Enterprises were prior to the U.S. Supreme Court’s rulings in eBay and Winter. While Ninth Circuit precedent is not binding in the Tenth Circuit where Judge Kane sits, the application of eBay and Winter should be consistent and a determination of “irreparable harm” should be required before any injunction should be issued.

Whether the injunction constitutes a prior restraint is another question. Barron’s Law Dictionary defines prior restraint as “any prohibition on the publication or communication of information prior to such publication or communication.” Here, the documentary had already been completed before the request for an injunction was made. Arguably, because the speech had already been exercised by Elliot (in making the film), the injunction might not bet a prior restraint. This argument, while tenuous, would make sense only if the injunction were aimed at Mr. Elliot. However, here, the complaint and requested TRO were filed against the film festival and not Elliot.

While the general rule is that a prior restraint is an unconstitutional abridgement of free speech, there are some exceptions that permit enjoining speech before it has been made. In fact, where speech is not constitutionally protected in the first place, it may be enjoined without offending the longstanding prohibition against prior restraint. The most notable exception is for speech inciting violence. See Brandenberg v. Ohio, 394 U.S. 444, 447 (1969). In Near v. Minnesota, 283 U.S. 697, 716 (1931), the Supreme Court also suggested that obscenity could be enjoined (“On similar grounds, the primary requirements of decency may be enforced against obscene publication.”)

However, even in the case of obscene speech, an injunction can occur only after the material has been adjudicated to be obscene, not before. See Vance v. Universal Amusement Co., 445 U.S. 308 (1980). The law in California is clear that a prior restraint cannot be placed on expressive content, unless there is a prior judicial determination that the speech is unlawful. See Balboa Island Village Inn, Inc. v. Lemen, 40 Cal.4th 1141 (2007) (holding injunction prohibiting defamatory speech is unconstitutional prior restraint absent a judicial determination that the speech is defamatory before the injunction is issued). The law in Colorado should be in accord.

While Judge Kane made certain preliminary findings, the procedural nature of a TRO hearing does not give rise to a final judicial adjudication that the film either infringed Ms. Franklin’s copyright or violated her right of publicity such that it can be constitutionally enjoined absent a clear showing of irreparable harm.

Unfortunately, judges often grant preliminary injunctions without considering constitutional implications. Unless the party against whom the injunction is sought clearly articulates that there is no longer a presumption of irreparable harm where copyright and trademark infringement are alleged and that injunctive relief in such cases is appropriate only as an extraordinary measure, the court may simply apply a traditional balancing test and find that an injunction should issue.

Recently, Elliot and Franklin agreed that the film would not be shown to anyone for a 30 day period (including private screenings during the upcoming Toronto Film Festival) during which the parties will continue to negotiate. Whether they are able to come to terms, and whether Judge Kane’s ruling will be appealed, remains to be seen.