expression and cannot constitute a strong equitable basis for resisting the invocation of the fair use doctrine.”). This factor favors Connectix.
The four statutory fair use factors must be “weighed together, in light of the purposes of copyright.” Acuff-Rose, 510 U.S. at 578, 114 S.Ct. 1164. Here, three of the factors favor Connectix; one favors Sony, and it is of little weight. Of course, the statutory factors are not exclusive, Harper & Row, 471 U.S. at 560, 105 S.Ct. 2218, but we are unaware of other factors not already considered that would affect our analysis. Accordingly, we conclude that Connectix’s intermediate copying of the Sony BIOS during the course of its reverse engineering of that produce was a fair use under 17 U.S.C. § 107, as a matter of law. With respect to its claim of copyright infringement, Sony has not established either a likelihood of success on the merits or that the balance of hardships tips in its favor. See Cadence Design Sys., Inc. v. Avant! Corp., 125 F.3d 824, 826 (9th Cir.1997), cert. denied, 523 U.S. 1118, 118 S.Ct. 1795, 140 L.Ed.2d 936 (1998). Accordingly, we need not address defenses asserted by Connectix under 17 U.S.C. § 117(a)(1) and our doctrine of copyright misuse. We reverse the district court’s grant of a preliminary injunction on the ground of copyright infringement.[1]
- B. Tarnishment
The district court found that Connectix’s sale of the Virtual Game Station tarnished Sony’s “PlayStation” mark under 15 U.S.C. § 1125(c)(1). The district court based its preliminary injunction, however, exclusively on Sony’s copyright claim, and did not cite its tarnishment finding as a ground for the injunction. Although we can “affirm the district court on any ground supported by the record,” Charley’s Taxi Radio Dispatch Corp. v. SIDA of Haw., Inc., 810 F.2d 869, 874 (9th Cir.1987), we decline to affirm on this alternative ground. Sony has not shown a likelihood of success on each element of the tarnishment claim.
To prevail on its tarnishment claim, Sony must show that (1) the PlayStation “mark is famous,” (2) Connectix is “making a commercial use of the mark;” (3) Connectix’s “use began after the mark became famous;” and (4) Connectix’s “use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services.” Films of Distinction, Inc. v. Allegro Film Prods., Inc., 12 F.Supp.2d 1068, 1078 (C.D.Cal.1998); 15 U.S.C. §§ 1125(c)(1), 1127 (definition of “dilution”). Connectix does not dispute the first and third of these elements. We address only the fourth element.
Because Sony proceeds under a tarnishment theory of dilution, it must show under this fourth element that its PlayStation mark will “suffer negative associations” through Connectix’s use. Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d
- ↑ We do not accept Sony’s argument that the downloading of Sony’s BIOS from the Internet was itself an infringement justifying the injunction. The evidence of record suggests that the downloaded BIOS played a minimal role, if any, in development of the Virtual Game Station. We conclude that, on this record, the downloading infringement, if such it was, would not justify our upholding the injunction on the development and sale of the Virtual Game Station. The Virtual Game Station itself infringes no copyright. Bearing in mind the goals of the copyright law, “to stimulate artistic creativity for the general public good,” Sony, 464 U.S. at 432, 104 S.Ct. 774 (internal quotation marks omitted), we conclude that there is a legitimate public interest in the publication of Connectix’s software, and that this interest is not overborne by the record evidence related to the downloaded BIOS. The imposition of an injunction is discretionary. See 17 U.S.C. § 502(a). On this record, we conclude that it would be inappropriate to uphold the injunction because of Connectix’s copying and use of the downloaded Sony BIOS; damages would adequately protect Sony’s interest with respect to that alleged infringement. See Acuff-Rose, 510 U.S. at 578 n. 10, 114 S.Ct. 1164 (discussing factors to be evaluated in deciding whether to enjoin product found to have exceeded bounds of fair use).
