Sandi Zimnicki v. General Foam Plastics Corp., USDC N.D. Illinois, October 4, 2010.

Sandi Zimnicki is an artist and a technical consultant for movies including “Home Alone 2″. She has a following of people who collect her holiday miniatures, including deer. Upon finding evidence that defendant, General Foam Plastics, was knocking off her deer designs in China, Zimnicki sued in Illinois.

General Foam noting that the infringement took place in China moved for summary judgement on the grounds that there was no subject matter jurisdiction.

The trial court ruled that “there is no indication that Congress intended extraterritorial limitations on the scope of the Copyright Act to limit the subject matter jurisdiction of the federal courts.” After finding that General Foam, a U.S. corporation domiciled in Virginia, is properly a party, the court ruled that the issue of where the infringement happened does not trigger jurisdiction issues but is to be a part of the infringement claim evidence. The court went on to explain that “It appears that the sale and delivery to the United States occurred in one seamless transaction – or a series of such transactions. Either way, we are not persuaded that we should parse the transaction in the technical way that Nixan has asked us to do. To rule otherwise would encourage gamesmanship.”

Doctor’s Associates Inc., V. Vinnie’s Smokehouse/Meat Specialty, LLC & Vincent Batiste, Civil Action No. 10-XXXX, D.C. Eastern District of Louisiana

It is surprising how proprietary restaurant interior designs are. Above, from the court record, is the plaintiff’s design which they describe as a uniquely identifiable subway-themed wallpaper, a brick-design wall paper, a mural of vegetables, menu boards, clocks with subway-themed art, and signs featuring the “Subway” logo”; and Plaintiff holds a copyright registration allegedly covering that composite. Plaintiff is Doctor’s Associates Inc (DAI), the owner of the SUBWAY sandwich franchise.

Defendant, Vinnie’s Smokehouse, took up business in space recently vacated by a SUBWAY franchisee. It seems that Vinnie’s Smokehouse likes the restaurant decor that they thought was a part of the leased unit. Vinnie’s Smokehouse likes it so well that they are loath to change it.

This case, filed on October 18th, is one that DAI was probably compelled to file to police its intellectual property; but it is one which is going to be especially interesting to watch for the copyright count. There are other counts, trademark and false designation, but the copyright count is going to be especially gnarly. Vinnie’s Smokehouse has not done anything apart from take up occupancy in a retail space that came with the interior design already installed, in place and through nothing that Vinnie’s Smokehouse copied, distributed, or otherwise created. Whether this amounts to copyright infringement is interesting; and that DAI would put their copyright registration in the vulnerable position of a federal action is an interesting litigation strategy.

Express v. Forever 21 (C.D. Cal. Sept. 2, 2010).

In pursuing its claims of copyright infringement against Forever 21, Express admits in detail that its design process amounts to taking other garments in the marketplace and then ‘reengineering and redesigning’ until the Express product is ready. Specifically, in this case, Express filed copyright applications claiming specific plaid designs. In none of the copyright applications does Express acknowledge the underlying, pre-existing plaids; nor did Express amend their registrations in the course of the litigation to identify the pre-existing plaids.

The court, granting summary judgement in favor of the defendant, Forever 21, held “Accordingly, because it is undisputed that each Plaid was derived from at least one pre-existing source and Express cannot present any evidence distinguishing the Plaids from their pre-existing source material, the Court grants summary judgement.”

The burden of disclosing in copyright applications the pre-existing sources gets heavier and heavier …

This case is a layered mess of creative contribution. Zimmerman, an independent ad agency, submits his novel ad concept to the insurance company AFLAC in the theme of, “You Don’t Know Quack”. This is, from the court record, among the images that the little ad agency submitted:

AFLAC was interested, but wanted changes. Zimmerman calls another, independent creative, Frazier, and asks Frazier to contribute some more exploratory illustrations. Zimmerman sends images that include these (again from the court record):

Zimmerman likes Frazier’s work and asks what the prize would be to go forward. After Frazier says a quarter of a million dollars; Zimmerman counters at one hundred thousand; and the two reach no agreement. Zimmerman sends an email later saying that the ‘client has decided to go in a different direction.’

AFLAC and Zimmerman went forward in creating the ad campaign. Here are two the resulting ads that were shown in such places as Times Square New York and other high visibility locations:

Frazier sued for copyright infringement among other claims. Defendants moved for summary judgement on two grounds: first, that the Frazier work is derivative of the Zimmerman underlying work and therefore cannot be independently protectable as there was no additional independent creation; and, second, that the image of the duck is not protectable under copyright law. Citing every copyright defendant’s best chestnut in support of disposing of any claim in which something from reality is depicted, Satava v. Lowry, 323 F.3d 805 (9th Cir. 2003), defendants contend that a graphical representation of a duck is dictated by its natural appearance, and that there are no protectable elements in Frazier’s illustrations.

The judge, Sandra Brown Armstrong, in the Northern District of California, ruled on September 24, 2010 that this case is going forward as Frazier has stated sufficient grounds to sustain the action. This is going to be an interesting case to watch as these facts frame the issues particularly well for some clarity to result in the topic of derivative work and copyright-ability. This is a case to watch.

Brighton Collectibles v. Coldwater Creek, Southern District of California, Case No. 08-CV-2307-H(POR)

Brighton and Coldwater are competitors selling and women’s handbags and accessories into boutique and specialty stores. Brighton alleges in this case that Coldwater infringed the Brighton product line “Melanie” and “Laguna”.

In defense, Coldwater moved for summary judgement on the grounds that the Brighton copyright registration is unenforceable. Specifically, Coldwater demonstrated that the copyright registration on which Brighton’s lawsuit depended was on that the Copyright Office had rejected at least once before. Coldwater claimed that Brighton had a duty to tell the Copyright Office that the application had been rejected before; and that Brighton’s failure to disclose the prior rejection constituted ‘fraud on the Copyright Office’ with the result that the registration was unenforceable.

The court denied the motion for summary judgement, holding that “nothing precludes the filing of a copyright application a second time.” The court went on to say that if there is proof of intent to deceive that the evidence should come in as the case proceeds.

This issue of whether a party has an obligation to proactively disclose the prosecution history of the copyright application is beginning to be a chronic one. The defendant’s challenging of the validity of the plaintiff’s copyright registration is no longer a trend, but represents a fundamental part of any effective copyright defense.