Summary of a Recent
Judicial Development in
Environmental Law

FIFRA Regulated Speech is Copyrightable

Eric H. Foy
National AgLaw Center Research Associate

Summary of Decision

In FMC Corp. v. Control Solutions, Inc., 369 F. Supp. 2d 539 (E.D. Pa. 2005), the United States District Court for the Eastern District of Pennsylvania granted a pesticide manufacturer's motion for a preliminary injunction against a competitor for infringement of a pesticide label.

Background

The plaintiff produced chemicals for agricultural, consumer, and industrial markets. Id. at 542. The defendant was a producer of generic pesticide products. Id. The plaintiff alleged that the defendant was "willfully violating [the plaintiff's] copyright on the TalstarOne pesticide product label and [sought] to enjoin Defendant from selling its generic . . . pesticide using an allegedly infringing product label." Id. at 542-43. Prior to filing suit, the plaintiff sent a cease and desist letter to the defendant on March 4, 2005. Id. at 544. On March 28, 2005, the defendant responded to the letter, rejecting the plaintiff's copyright infringement claim. Id. Thereafter, the plaintiff filed suit. The plaintiff sought a preliminary injunction ordering the defendant to:

(1) stop manufacturing the infringing label or causing the label to be manufactured; (2) halt using the infringing label; (3) stop placing any product that has the infringing label affixed to it into the stream of commerce; (4) recall all products bearing the infringing label that are not already in the hands of an end user; (5) destroy all existing infringing labels; and (6) immediately provide all of [generic pesticide's] distributors, customers and sub-registrants with a copy of the preliminary injunction order.
Id.

Arguments

The plaintiff argued that unless the court granted an immediate preliminary injunction, the defendant would "continue to illegally profit from [the plaintiff's] copyrighted and proprietary property, including by granting sub-registration rights to two other companies . . . to use a label substantially similar to Plaintiff's." Id.

The defendant argued that the plaintiff came to the court with unclean hands and should be barred from equitable relief. Id. at 554. The defendant also argued that because pesticide labels were regulated by FIFRA, the plaintiff's label constituted a regulated commercial product label that per se was not copyrightable, and that issuing a preliminary injunction based on copyright infringement would "chill or thwart legitimate competition." Id. at 567.

Analysis and Holdings

After reviewing the evidence and reading the parties' assertions, the court held that the defendant was violating the plaintiff's copyright by "knowingly and willfully" selling its generic pesticide product "with an infringing product label." Id. at 545. The defendant was also helping other producers of generic products do the same. Id. In making these determinations, the court examined the following factors used to determine the propriety of issuing a preliminary injunction: "(1) the likelihood that the moving party will succeed on the merits; (2) the extent to which the moving party will suffer irreparable harm without injunctive relief; (3) the extent to which the nonmoving party will suffer irreparable harm if the injunction is issued; and (4) the public interest." Id. at 554. Ultimately, the court held that the plaintiff satisfied all of the factors necessary and granted the plaintiff's motion for preliminary injunction. Id.

As for the defendant's argument that the plaintiff brought the instant action with unclean hands, the court held that "no evidence exist[ed] within [the] record to raise the specter of any improper motive by FMC in its attempt to protect its legitimate legal rights or maintain equitable, lawful competition with regard to the protectible intellectual property contained within its product labels." Id. at 554.

The court also addressed the defendant's claim that regulated commercial product labels were per se not copyrightable. Id. at 567. It responded that there were "multiple means to express the non-regulated language contained within [the plaintiff's] label," and it was "entirely consistent with common sense that the language structure and selection used by [the plaintiff did] not represent the only means of expression of the ideas described by that language. Id.

The case was decided on May 16, 2005.