Estate of Curtis v. Chambers and Globe Specialties, Supreme Court of Massachusetts, Case No. 10662 (Jan. 18, 2011)

Harold Curtis designed and produced unique and distinctive printed promotional and advertising materials used by automobile dealerships to conduct direct mail campaigns and advertise dealership sales events. In 2000, Globe was rebuffed by Curtis after Globe offered to license and distribute Curtis’ materials. Curtis grew angry when Globe and Chambers subsequently began selling promotional and advertising materials that ” “[t]o an ordinary observer … were substantially similar to those produced by Curtis,” and the Chambers defendants ceased doing business with Curtis. Curtis demanded in writing that the defendants terminate their conduct, but the demand was ignored. Because the promotional materials published and distributed by Globe Specialty for the Chambers defendants were used so often in the same marketing areas served by other Curtis automobile dealership clients, Curtis could no longer sell his promotional materials and services to the automobile dealerships in these marketing areas.” (1/18/11 Opinion)

The state trial court reviewed the 2006 complaint that included copyright and common law trade dress claims. The copyright claims were dismissed as the judge concluded that Curtis had “not registered any copyright for the advertisements at issue, and copyright registration is a condition precedent to bringing an infringement action.” (1/18/11 Opinion) The trial court also dismissed the trade dress claims as preempted by the copyright claims that were erroneously pled.

Curtis died, and his estate filed the appeal with the Massachusetts Supreme Court which affirmed both the dismissal of the copyright claims and the trade secret claims.

Barefoot Architect, Inc. v. Bunge, (3rd Cir. Jan. 14, 2011)

Defendant’s dream of building a home in the Virgin Islands is the genesis of this dispute. Bunge retained an individual architect who, later and before the litigation, became employed by Plaintiff to create that dream house’s architectural plans. But there was the usual archetypal falling out after Bunge claimed to have paid the agreed value for the plans, but no plan set was delivered by Plaintiff; instead Plaintiff demanded further monies. Bunge hired another architectural firm to complete the plans. Architect’s new employer, Barefoot Architect, sued Bunge; and, Bunge challenged Barefoot being the proper owner of the copyright of the architectural plan in dispute.

The individual architect and his employer, Barefoot Architect, signed a document confirming that the oral assignment took place and pointed to cancelled checks as evidencing the consideration of that copyright transfer.

The Third Circuit affirmed the trial court’s granting of Bunge’s motions for summary judgement and dismissing Bunge’s counter claims. The court held that the idea of a memorandum validating an earlier copyright transfer depended on the original transferring event actually having transpired. The court went on to point out that the memorandum of transfer could not simultaneously serve both purposes of proving that an oral transfer occurred and giving legal effect to that otherwise unenforceable transfer. The court further held that the checks cited by Barefoot Architects carried little evidentiary weight. In sum, the court concluded that the record contained nothing to show that Barefoot Architect purchased the copyright at issue.

This video was originally posted on law.com.

The Cobalt law firm believes in creating a sense of community for their employees by hosting a wine and cheese party every Thursday.

As the two cases below teach … it isn’t enough to assert copyright infringement when only the broadest themes are shared.

1. Estate of Adrian Jacobs v. Scholastic, 10. Civ. 5335, S.D.N.Y.

Paul Gregory Allen, Trustee of the Estate of Adrian Jacobs, sued Scholastic, Inc. in the Southern District of New York for copyright Infringement of expression of a 20-page book which included wizard competition. Jacobs authored the book “The Adventures of Willy the Wizard — No 1 Livid Land,” in 1987 in the United Kingdom. The differences between the two plots, tone and contextual points (‘look and feel’) cause the court to begin with analyzing the motion to dismiss with the FRCP Rule 12 standard of ‘plausibility’ as ‘more than a sheer possibility that the defendant has acted unlawfully.’
The court found ‘scant basis’ for finding substantial similarity; and that the allegedly infringing plot elements are not protectable elements. The court went on to find that the plaintiff had alleged similarities by selectively extracting various trivialities from each book, but random similarities scattered throughout the works do not amount to substantial similarities. Motion to dismiss granted ‘in its entirety’.

2. Buggs v. Dreamworks, CV 09-07070 C.D.Ca

A single copyright complaint alleging that defendant’s animated film “Flushed Away” is substantial similar to plaintiff’s screenplay, “Critter Island” a story of two cockroach gang leaders who occupy the same Harlem retirement home, but whose battle ends up in the sewer; love ensues; and the gang leader who falls in love, but finds his way with his love to paradise, Critter Island. In contrast, Flushed Away is the story of an entitled rat whose dream of privilege is foiled when he attacked by rats who come up from the sewer; the entitled rat is consigned to Ratopolis, a living hell, where that entitled rat falls in love, distinguishes himself and lives happily ever after with his new love.

The court found the two works are ‘substantially dissimilar’. Anthropomorphic pests who occupy the sewer at some point in the respective stories are not similar expressions but basic, unprotectable plot elements. The court went on to note that the plaintiff had asserted the assertions that the two works are substantially similar on other specific grounds, but the court finds that the plaintiff did not ‘demonstrate any concrete or articulable similarities’.

Motion for summary judgement granted in its entirety.

Amaretto Ranch Breedables v. Ozimals, Inc., 2010 WL 5387774 (N.D. Cal. Dec. 21, 2010).

The court in this case is also being asked to order Linden Research, the operator of Second Life, to stop complying with DMCA ‘Take Down’ demands (Section 512) until the merits of the case are determined by the court. But the real gravamen of the case is much more serious. On page one of the opinion, the court gives us a terse summary:

“The gist of the copyright dispute between the parties is whether Plaintiff’s virtual horses infringe on copyrights associated with Defendant’s virtual bunnies.”

Judge Charles R. Breyer granted the TRO and ordered Amaretto Ranch Breedables to post a $25,000 bond.

This case is a first to my knowledge where two copyright content claimants have engaged in serial DMCA Take Down demands so often that the take downs and re-postings are disruptive to the commerce of both. This is a strategy to watch how long the courts’ will have patience for this.

UMG Recording, v. Augusto (9th Circuit Opinion 0110104)

Troy Augusto d/b/a Roast Beast Music Collectibles did not infringe on copyrights held by Universal Music Group (UMG) when he sold promo “industry edition” CDs through the online auction site eBay, despite the presence of labels on the giveaway CDs warning that they should not be resold. Or so a three-judge panel of the 9th Circuit held today, affirming the trial court.

The opinion is an important one in helping us understand the metes and bounds of ‘consensual licensing operations’.

“UMG dispatched the CDs in a manner that permitted their receipt and retention by the recipients without the recipients accepting the terms of the promotional statements,” Judge William Canby wrote for the panel. “UMG’s transfer of unlimited possession in the circumstances present here affected a gift or sale within the meaning of the First Sale Doctrine, as the district court held.”

The court went on to distinguish this case from that of Vernor, making software a separate and distinct exception, in the otherwise generally enforceable First Sale Doctrine.

Two law professors, one at Case Western and one at U.C Hastings, intended to write a textbook about criminal law, but end up writing a lesson in misapplication of copyright law.

In McMunigal v. Bloch (N.D. Cal. 12/23/10), two law professors contract with Aspen Publishing to create a criminal law textbook, but the production of the manuscript for the book and the teacher’s manual becomes a process beleaguered with disappointment and missed deadlines.

After review of the counts to the complaint, Judge Susan Illston granted defendant’s motion to “the complaint with prejudice, finding after argument that leave to amend would be futile.”

The whole opinion is a great read, but the two relevant copyright points are how the court analyzes the parties’ tangle efforts to create separately copyrightable works; merge those into unity whole, a joint work; and then to attempt to separate the individual works back out into separable works.

Specifically, McMunigal and Bloch independently selected and edited cases, statutes, jury instructions, and scholarly excerpts and wrote original text, problems, and questions for their parts of the book. Once published, the book listed McMunigal and Bloch as the authors in alphabetical order and did not identify who authored which parts of the book. For that, the court found that a jointly authored work had been created, and not a collective work that the Plaintiff had asked that the court find.

The issue of dividing the separable works back out needed separate analysis as Aspen had taken an assignment of the work as a condition of the publishing agreement. In this, the court declined the invitation to partition joint copyright ownership into separable parts; and refused to give Plaintiff separate assignment based on a unilateral email to the defendant stating that he intended to own separate parts. The court admonished the plaintiff the he need to comply with the Copyright Statute to effect the separation; including getting a written assignment, in compliance with Section 204(a).

If that plaintiff wants relief, he’s got a considerable amount of homework to do before filing again, as the court commented that too much is missing in the allegation set to be cured easily, finding “leave to amend would be futile”.

https://wiki.mozzilla.org/Drumbeat/Attribution_generator.

Mozilla (noting that people who want to do the right thing and give attribution should be able to easily) has launched “OPEN ATTRIBUTE” which is a free and easy suite of tools that makes giving attribution easy and fast. It is only available for Creative Commons’ licensed content, but it’s so deliciously easy and straightforward that we may expect to see it expand to a wider category of works.

Another demonstration that people really do understand the incentive that drives some authors the right to be acknowledged; to have their work attributed to them and not someone else.

Joe Esposito, who blogs at “Scholarly Kitchen”, has a knack of distilling the influx issues in the tumultuous world of publishing. This most recent blog post is particularly helpful in making sense of the upheaval and seeing some patterns emerge.

To quote a bit:

“While one would be hard-pressed to find any publisher who does not view digital media as a central strategic concern, we have reached a critical point in the evolution of publishing – henceforth, no one who starts a new publishing company is likely to be thinking of the world of print.

New publishing entities from here on are almost certainly going to be Born Digital.
This is a big shift because print is, well, more than print; it’s also an entire ecosystem that has grown up around print. That means no more looking back to see which legacy customers can be grabbed, no fidelity to old partners or ways of doing business.”

And he then gives a useful comparison of the playbooks of the two: Digital Born and Born Again:

“… Compare the playbooks of the Born Again and the Born Digital publishers:

• Identifying A New Market. While Born Again publishers pay lip service to the idea of finding a new market, for the Born Digital, a new market is essential, as it puts them beyond the reach of the established and powerful marketing capabilities of the Born Again. In scholarly communications, one form this takes is the identification of new sources of purchasing power adjacent to legacy purchasers. For example, a Born Again publisher may concentrate on selling materials to academic libraries, while a Born Digital publisher may seek to cultivate faculty as customers.

• Thinking Globally. Although this is not a new outlook for journals publishers, many book publishers continue to operate on a national basis. This requires them to find a sufficient audience in their own territory, whereas a global program can bring in customers from many areas, thus making it easier to get to break even. Both Born Again and Born Digital publishers alike pursue global strategies today, but the Born Digital publisher has the advantage, as its global strategy is unimpeded by relationships forged in the print era.

• Selling Direct. The print world is full of intermediaries, from wholesalers to libraries that stand between a publisher and the end-user or reader. These intermediaries provide an essential role for print. But with low-cost digital distribution, disintermediation becomes possible. It’s much harder for a Born Again publisher to sell direct, as direct sales put a publisher into conflict with established distribution channels. A Born Digital publisher, on the other hand, has no legacy customers and thus no conflict.

• Using Pricing to Disrupt Legacy Expectations. As noted above, aggressive pricing can hamstring larger and better-resourced established publishers regardless of how forcefully they are pursuing their Born Again strategy. Born Again publishers typically try to charge as much as the market will bear, but Born Digital publishers will often charge the minimum necessary in order to build market share. A strategy based on price works best in direct-to-consumer markets.

• Identifying New Fields. This is an editorial issue: What are the growing areas to work in? Some fields are well-established and not likely to make room for newcomers. New fields may also be small and not deliver the return on investment that the Born Again publisher requires. But for the Born Digital publisher, all the negatives associated with a new field are transformed into positives, as there is not likely to be competition from established publishers.

• Investing in Print Infrastructure. Instructive is the example of Born Digital OR Books, founded by two veterans of trade publishing. OR (named for founders John Oakes and Colin Robinson) uses digital technology to bring books to market rapidly and has a network of suppliers for print on demand, but when an OR title gets hot and can benefit from the legacy distribution channels of trade publishing, the company licenses rights to established trade houses.

• Sizing the Organization. Born Digital publishers try to stay as small and lean as possible, as this gives them flexibility and the ability to underprice established publishers. When Born Again publishers attempt to attack their cost structure, they often fail, as they may cut out essential services that their legacy customers have come to expect from them.”

That 2011 is going to be an accelerated shake-up to the Born Again and the Digitally Born is a certainty.