One of the areas where expectations might be more effectively shaped proactively is when someone in the nonprofit arena authors content. Often, the fact that the nonprofit, not the employee own the resulting copyright in the work eludes the employee’s understanding. This case from last week is such a circumstance.

Kamanou v. Executive Secretary (SDNY Jan. 19, 2012)

Kamanou sued the Executive Secretary of the Commission of the Economic Community of West African States (ECOWAS) for copyright infringement claiming that work she had done while an employee of ECOWAS was ‘unlawfully claimed’ as owned by ECOWAS and then sublicensed to the United Nations.

Kamanou, a citizen of Cameroon, with a PhD in Applied Statistics from U.C. Berkeley, is a well-known international expert on poverty statistics. Kamanou acknowledges that the work at issue was created within the time that she was an employee within her official duties, but states that her job description did not specifically call out the particular work. Moreover, Kamanou asserts that the work can not be a work made for hire as she ‘had no choice but to work on it due to her contractual obligations, and as there was no volitional choice that the work could not qualify for a work made for hire.

The court, in dismissing the action, held that the copyright is owned by ECOWAS who was authorized to license the work to the United Nations. The court explained that Kamanou does not own any copyright in the work. “The obligation to complete the work pursuant to an employment contract is precisely what makes the work a ‘work made for hire’.”

In a 6-2 majority decision written by Ruth Bader Ginsburg, the Supreme Court ruled today that Congress has the authority to restore copyrights in this country that had had lapsed. Relying heavily upon the 2003 decision of Eldred v. Ashcroft:

“Our decision in Eldred is largely dispositive of petitioners’ limited-time argument. There we addressed the question whether Congress violated the Copyright Clause when it extended, by 20 years, the terms of existing copyrights. 537 U. S., at 192–193 (upholding Copyright Term Extension Act (CTEA)). Ruling that Congress acted within constitutional bounds, we declined to infer from the text of the Copyright Clause “the command that a time prescription, once set, becomes forever ‘fixed’ or ‘inalterable.’” Id., at 199. “The word ‘limited,’ ” we observed, “does not convey a meaning so constricted.” Ibid. Rather, the term is best understood to mean “confine[d] within certain bounds,” “restrain[ed],” or “circumscribed.” Ibid. (internal quotation marks omitted). The construction petitioners tender closely resembles the definition rejected in Eldred and is similarly infirm.”

By this ruling, the court extends U.S. copyright protection to books, musical compositions and other works by foreign artists that had been available without paying royalties:

“In accord with the judgment of the Tenth Circuit, we conclude that §514 does not transgress constitutional limitations on Congress’ authority. Neither the Copyright and Patent Clause nor the First Amendment, we hold, makes the public domain, in any and all cases, a territory that works may never exit.”

This opinion ends one of the longest, continuously pending copyright disputes in the history of the United States. First filed in 2001, this case challenged the 1994 federal law passed to implement global agreements worked out in trade negotiations called the ‘Uruguay Round Agreement’. The challenge, however, failed on all points as held in today’s opinion: the law does not violate the Constitution’s Copyright Clause, it does not violate the First Amendment rights of anyone who previously had free access to creative works, and it does not deviate from any long-standing historical practice or perception, according to the decision.

After filing over 275 lawsuits in almost 18 months, it seems as though Righthaven, LLC (“Righthaven”) may have run out of steam.

Righthaven, a Nevada holding company, was founded in early 2010, for the sole purpose of filing copyright lawsuits on behalf of its clients, news content owners (such as Stephens Media).  Its methods involved Righthaven scouring the Internet for republication of news articles and photos, suing the website hosting the infringing content (seeking monetary damages and the transfer of the infringer’s domain name), and then extending a settlement offer. Lawsuits filed by Righthaven have been brought against a wide variety of online publishers, including bloggers, political campaigns, nonprofits, and website operators — almost always without notice or DMCA takedown. Many cases settled swiftly, totaling an estimated $400,000 in aggregate settlement payment.  Righthaven’s founders claim they created the company in order to fight and deter “copyright theft” by bloggers and news aggregators online. Their aggressive enforcement strategies, including suing noncommercial bloggers and nonprofits who cannot afford to litigate, have also garnered much criticism, particularly from the Electronic Frontier Foundation. The critics have described the company as a “copyright troll” and a “settlement factory.”

In the past few months, Righthaven has suffered serious setbacks in the courts. In Righthaven v. Realty One Group, Inc. (D. Nev. Oct. 19, 2010), Righthaven sued a blogger for republication of 8 sentences from a 30-sentence Las Vegas Review-Journal article.  In a rare decision, the court granted the blogger’s fair use defense on a motion to dismiss.  The court noted that the blogger quoted a small percentage of the source article and his “use of the copyrighted material was likely to have little to no effect on the market for the copyrighted news article.” Another example is Righthaven v. DiBiase (D. Nev. April 15, 2011) in which Righthaven sought to have DiBiase’s domain name transferred to them.  In this case, the Court rejected transfer of the domain name stating that “Congress has never expressly granted plaintiffs in copyright infringement cases the right to seize control over the defendant’s website domain.”

Most notably, Righthaven suffered a particularly hard blow recently in Righthaven v. Democratic Underground (D. Nev. June 14, 2011).  In that case, the agreement between Righthaven and its clients, called a “Strategy Alliance Agreement,” was unsealed.  The agreement purported to assign copyrights to Righthaven for the purpose of filing infringement lawsuits, while exclusively licensing back all rights to the client, with Righthaven maintaining no rights, except the right to use. The judge dismissed the lawsuit on the ground that Righthaven had no standing to sue, stating that a “copyright owner cannot assign a bare right to sue,” essentially rejecting Righthaven’s business model. Over three-dozen other cases filed by Righthaven are being held up on appeal over the same issue.

Is it the end of Righthaven?  Most signs point to yes.  In the past two months, Righthaven has stopped filing new lawsuits, let cases lapse due to procedural defects and laid off a number of employees. Steve Gibson, CEO of Righthaven, stated they are awaiting the outcome of numerous appellate rulings in the Ninth Circuit Court of Appeals before resuming their efforts.

Regardless of what happens to Righthaven, this line of cases is particularly instructive in at least three ways:  first, they have allowed the emergence of blog-specific copyright cases and an expansion of the fair use doctrine, which Righthaven intentionally helped create (See Cobalt’s prior post on the topic: The Emerging Blog Specific Copyright Cases). Second, these cases are illustrative of how copyright owners from the traditional news world are continuing to struggle over how to best protect and monetize their content. Finally, the cases raise particularly interesting questions of copyright law relating to standing to sue and the validity of copyright assignments, for which we are awaiting clarification from the Ninth Circuit

Warner Bros. v. X One X Production, 2011 U.S. App. LEXIS 13646 (8th Cir. Mo. July 5, 2011) This is a case that will make game and movie companies add a new level of analysis and scrutiny to every new creation that has a basis in a work that has entered the public domain. The Eighth Circuit restricted the reproducibility of certain film/cartoon images extracted from publicity materials that had passed into the public domain.

The facts are straightforward. The dispute focuses on promotional pictures that the studios used to promote movies that were adaptations from the out-of-copyright books including ‘Gone with the Wind’, ‘Tom and Jerry’ and ‘The Wizard of Oz’. Art & Vintage Entertainment Licensing Agency (AVELA) got hold of movie posters, “lobby cards”, and the like that bore the images and used them as the basis for things like t-shirts, lunch boxes, and action figures. The studios sued AVELA for a permanent injunction and got one. The publicity images were not taken from film footage, but were created independently. The publicity materials, as distributed, did not comply with the 1909 Copyright Act’s notice requirements. Consequently, the materials fell into the public domain.

The Eighth Circuit reversed and affirmed. The basis of the reversal, in part, was based on the images identical to the ones on the old posters, cards, press books, and other items had that had become public domain material couldn’t provide the basis for an infringement claim.

The Eighth Circuit panel affirmed the injunction to the extent it barred AVELA from using more than just the images themselves. Adding a catch phrase, turning a two-dimensional picture into a three-dimensional figurine, and making other changes or additions, the court held, infringed the copyrights in the characters they depicted:

In essence, the panel of justices finds that the features of film characters can be copyrighted even if these characters were based on prior work. According to the decision:

“We agree with the district court’s conclusion that Dorothy, Tin Man, Cowardly Lion, and Scarecrow from The Wizard of Oz, Scarlett O’Hara and Rhett Butler from Gone with the Wind, and Tom and Jerry each exhibit “consistent, widely identifiable traits” in the films, that are sufficiently distinctive to merit character protection under the respective film copyrights…. Put more simply, there is no evidence that one would be able to visualize the distinctive details of, for example, Clark Gable’s performance before watching the movie Gone with the Wind, even if one had read the book beforehand. At the very least, the scope of the film copyrights covers all visual depictions of the film characters at issue, except for any aspects of the characters that were injected into the public domain by the publicity materials.”

Elly May is the role played over two hundred and sixty-four times by Donna Douglas in 1960′s series, The Beverly Hillbillies; and, Douglas has sued Mattel in Louisiana for making the “Elly May” doll in the Barbie Doll line. While Mattel claims to have obtained all necessary licenses to make the product under necessary channels, Douglas asserts that she was never consulted and that the infringement creates the false public impression that Ms Douglas has endorsed the doll. Douglas claims that she still makes an income from appearances; and, that the 264 episodes are in syndication and still being broadcast throughout the world.

Douglas asks for $75,000 in damages against Mattel.

Other celebrities have won such cases based on a clause of the Trademark Act of 1946 stating that it is illegal to use an image or likeness to make it appear the person in endorsing a product. Such celebrities include Vanna White, the wheel turner in ‘Jeopardy’ as well as Tom Waits and Bette Midler for sound-alikes. Waits sued Frito-Lay Inc. in 1992 and Midler sued Ford Motor Co. in 1988. The latter two differ in that both companies had asked the respective singer to do a song for a commercial, and when the singer refused, the company proceeded to hire a sound-alike performer.

Below are photos from the packaging. The front package alone might not trigger liability but the two side panels and backsides of the package clearly identify Douglas. Liability becomes more likely as the connection gets stronger. In her suit, Douglas says that she “continues to make public appearances in association with” her character. Mattel introduced the “Elly May” Barbie doll in December 2010, and even uses Douglas name in promotional materials for the doll. A settlement in the Elly May case looks to be prudent, especially given the amount demanded.

Lady Gaga, on the other hand, has conditioned that any photographer who asks for a press pass to Lady Gaga’s performances agree that copyright in all photographs taken during the performance shall be owned by Madonna. Here is the agreement. http://images.tbd.com/entertainment/gaga-release.pdf Not only is copyright in photographs not yet taken (expectancies) transferred, but the photographer agrees to take down from websites after four months.

This automatic transfer of copyrights is a theme in the medical arena as well. Some doctors are conditioning their providing of services upon the patient agreeing that any commentary that the patient writes is assigned to the doctor. This facilitates a speedy take down of any review that a doctor does not agree with… which some believe is unenforceable; and others believe is effectively a gag-order. The Santa Clara University High Tech Law Institute and The Samuelson Law, Technology & Public Policy Clinic at the University of California Berkeley School of Law have begun a website to address this practice: http://doctoredreviews.com/

While fair use in copyright keeps expanding, the pressure both for control of copyright content and for commercial activities using copyright content to pay full freight is stepping up.

Section 512 includes a recital of the various safe harbors from liability and is also collectively referred to as OCILLA (Online Copyright Infringement Liability Limitation Act). Section 512(f) is intended to be a deterrent to those making false claims of infringement; this subsection of OCCILLA makes the person who is asserting the false claim of infringement liable for damages suffered by those who were harmed by the false take-down plus attorney fees. The recent two cases demonstrate that this is a specialty tool to be specifically and narrowly applied against those who assert specious take-downs to ISPs and (f) is not just a blunt retaliation instrument.

1. Rock River Communications, Inc. v. Universal Music Group, Inc., 2011 WL 1598916 (C.D.Cal. April 27, 2011)

We’ve had the DMCA for a little over a decade now, and the case law reflects that we are beginning to chart the navigational paths through its topography. In this case, a remixer, the plaintiff, took a license from someone who purported to be the authorized licensee of the specific Bob Marley music at issue.

The defendants claim they are the correct licensor of that particular Bob Marley music; and, defendants succeeded in getting the allegedly infringing remixes removed from the market.

This case is one brought by one of those driven out of the market as retaliation for the newly remixed pieces being removed by use of Section 512. In short, the plaintiff is asserting that Section 512(f) is being incorrectly applied. The court agreed holding that (f) did not apply because the recipient of defendant’s take-down was not an ISP, but was a retailer. Section 512(f) did not apply both because iTunes wasn’t performing the functions contemplated by 512(c) and because iTunes has a financial interest, as such, the C&D letter isn’t the functional equivalent of a 512(c)(3) take-down notice.

2. Amaretto Ranch Breedables, LLC v. Ozimals, Inc., 3:10-cv-05696-CRB (N.D. Cal. April 22, 2011)

In this case of the dueling take-down letters, two virtual animal vendors on Second Life sent numerous take-down demands regarding the alleged infringement of their respective bunnies and horses. In an unorthodox procedural play, the horse vendor asked the court to enjoin Second Life from acting on the bunny vendor’s take-downs. The court threw out the predictable Section 512(f) retaliatory claim brought by the horse vendor, in this the most recent episode of this ongoing saga.

The court held that because Second Life forbore from acting on the bunny vendor’s take-down there was no standing for a Section 512(f) action. While the horse vendor may be pragmatically correct that the sending of the specious take-down should be the only condition precedent to (f) eligibility, the court read the statute literally and ruled that there is a further second condition precedent to getting standing to file the (f) action is that the recipient of the take-down actually have taken it down.

Gaylord v. United States, (Fed. Cir. 4/22/11)

A 37 cent stamp is at the heart of this copyright dispute that has been percolating through the courts like coffee in an old stovetop pot. It began in the Court of Claims; went up to the Court of Appeals for the Federal Circuit (CAFC); was remanded and is now issuing from the Court of Claims again, but narrowly this time, solely on a determination of damages.

For those who have not been following this case here is a thumbnail summary: This is a case that arose from a sort of fairy tale with a twist. An amateur photographer visiting the Korean War Veterans’ during a snowstorm took a terrific picture. To the amateur photographer’s delight, the U.S. Postal Service paid him $1,500 for that photograph to be the subject of a stamp. Up to that point, it is sort of a sweet story of an amateur photographer getting a bit of recognition and reward.

But, then the story takes on a darker tone in that the photographer sued the postal service claiming copyright infringement; and the postal service raised the usual battery of defenses including VARA, Fair Use and others.

The photographer claimed that he was owed damages in the amount of $3,024,276.20 (three million dollars and change) as representing ten percent on the 86.8 million 37-cent stamps and related merchandise that the postal service sold in the two years between 2003 when the stamp was issued, and 2005 when the stamp was retired. The CAFC found that the postal service’s use was not protected by the fair use defense; and the issue of damages was remanded for calculation to the lower court.

The court addressed two questions. First what damages are owed to the photographer; and second, whether pre-judgment interest applies?

As to question 1, the court found that $5,000 was the amount owed. The court was governed by the relevant statute that provides for a ‘zone of reasonableness’ to determine the actual damages; and the court found compelling the testimony of U.S. Postal Service management that the postal service is barred from paying royalties by long standing policy; and that the absolute top amount ever paid in the one-time negotiations was $5,000 dollars. The court ruled that $5,000 was the amount owed to the plaintiff photographer as that amount represents the top amount that the plaintiff would have obtained in the one-time negotiations with the postal service.

Question 2 was answered in the negative. The court noted that while pre-judgment interest may be possible in private copyright suits, there is no provision for pre-judgment interest in claims against the United States unless specifically permitted by contract or by act of Congress. Pre-judgment interest on the $5,000 award was denied.

An open question is whether the plaintiff photographer is entitled to a new amount of $5,000 from the postal service or whether the postal service can offset the $1,500 paid to the plaintiff photographer in 2002.

RightHaven, LCC, v. Center for Intercultural Organizing, 2:10-CV-1322 JCM (LRL) (DC Nev., 2011)

The word ‘blog’ began as a typo, and now it’s a genre all on its own. And with the emergence of a new genre comes a category of case law that arises specifically from that genre. April 22, 2011, RightHaven failed in its effort to get a copyright infringement judgment, and instead succeeded in getting a judge to find, even a 100% republications, can be fair use.

Consistent with RightHaven’s pattern of eschewing what might be solved by a simple DMCA Take Down request, and instead, precipitously filing a federal copyright infringement action, this action was intended to halt defendant’s 100% republishing of a newspaper article discussing the Las Vegas alleged focus on minorities as illegal immigrants. The website is owned and run by the defendant non-profit and begun when a Somalian Muslim leader, the head of a mosque, was arrested in the airport. Based in Portland, Oregon, “At CIO, we are not talking about black and brown, we are talking about Somalis and Ethiopians, Congolese and Liberian, Mexican, Korean, Palestinian and Afghani community leaders working with other Latino leaders, African American leaders, and progressive white folks.” http://www.interculturalorganizing.org/

The court carefully analyzed the four factors of Section 107 Fair Use finding without reservation that fair use applies:

a. Purpose and character of the use: transformative and noncommercial.

b. Nature of the copyrighted work: informational and factual;

c. Amount and substantiality of the work used: “…although the defendants posted the work in its entirety, the amount used was reasonable in light of the purpose of the use, which was to educate the public about immigration issues.”

d. Effect on the market: “… the plaintiff has failed to allege that a “market” exists for its copyright at all, and the court declines to simply presume the existence of a market.”

Concluding, the court emphasized the fair use defense applicability and then went on to comment negatively on the plaintiff’s business model:

“The court finds that the defendant’s use of the copyrighted article in this case constitutes fair use as a matter of law. The article has been removed from its original context, it is no longer owned by a newspaper, and it has been assigned to a company that uses the copyright exclusively to file infringement lawsuits. Plaintiff’s litigation strategy has a chilling effect on potential fair uses of RightHaven-owned articles, diminishes public access to the facts contained therein, and does nothing to advance the Copyright Act’s purpose of promoting artistic creation.”

Kenneth M. Stern v. Does, et al., C.D.Ca., No. CV 09-01986 DMG (April, 2011)

A single sentence sent to a list serve formed the basis of the copyright infringement action in this case.

Specifically, an attorney sent a single sentence seeking information regarding a certified public accounting firm which he suspected had over-billed his client. One of the recipients of the single sentence email forwarded it to the CPA firm in question. The author lawyer took umbrage that his under cover effort was revealed; filed and obtained a copyright registration and filed a copyright infringement action naming the ‘Does’ of the entire list serve as the defendants.

The single sentence, in its entirety, is this: “Has anyone had a problem with White, Zuckerman . . . CPAs including their economist employee, Venita McMorris, over-billing or trying to churn the file?”

The court in the Central District of California held that the single sentence was uncopyrightable; and went further to say that if it had been copyrightable, then the forwarding of the email would have been protected by the Fair Use Doctrine.

“This is unsurprising. In an age of blogs, listservs, and other online forum, a person’s short comment in cyberspace is frequently quoted in its entirety as others reply or forward it elsewhere. It would be strange, dangerous even, if such quotation subjected the copier to liability and a federal lawsuit. Such heavy-handed tactics are akin to using a cannon to kill a mosquito; they carry the same attendant risk of collateral damage by chilling free speech. A free and vibrant democracy depends upon the unfettered exchange of ideas.”

Fleischer Studios v. A.V.E.L.A., Inc. (9th Cir. Sept. 23, 2011) A copyright and trademark case in which the Ninth Circuit finds copyright chain of title argument waived for failure to raise in the opening brief; and the trademark analysis goes off in an obtuse angle to trademark law as we know it.

Max Fleischer, while in his studio of the same name, created Betty Boop in 1941. Thereafter a tangled chain of transfers followed, including a transfer to Paramount Pictures and a comprehensive campaign by the Fleischer family to gather up all the disparate assignments. The family, believing that they had regained ownership to the work, sued A.V.E.L.A who was making unauthorized use of the image for sales of t-shirts and handbags.

The Ninth Circuit affirmed the trial court’s dismissal of the case. In the copyright portion of the case, the court held that the family’s claim of ownership failed for lack of proof of one of the chains of title, and an alternative theory of complete title was nil for failing to raise that alternative theory in the opening brief.

The trademark claim is also dismissed, but for an unorthodox reason, that the trademark fails as a trademark for the reason that it is functional. The court generated this conclusion on a theory that was neither argued nor briefed. Briefly, the court held that because the consumer buys the image on the t-shirt and the handbag for the pleasing image, that rendered the image functional and not a candidate for trademark protection.

To the discomfort of any trademark professional or college logo licensing group, the court placed emphasis on the fact that the defendants’ infringement was less problematic because they did not ‘designate the merchandise as official or otherwise a affirmatively indicate sponsorship’. This is an opinion that flies in the face of 9th Circuit opinions that state that when the trademark is the very thing that is being infringed, that that infringement is not insulated by the functionality doctrine. The recent case of Automotive Gold v. Volkswagen of America (457 F.3d 1062, 9th Cir. 2006) comes to mind.

Finally, the court seems confused about where copyright ends and trademark begins. This opinion suggests that the court is simply set upon not finding a valid copyright chain of title under the mistaken thought that if it did, that copyright would go on in perpetuity: ‘If we ruled that A.V.E.L.A’s depictions of Betty Boop infringed Fleischer’s trademarks, the Betty Boop character would essentially never enter the public domain.’

This is a case that we’ll be either seeing in an en banc review or we’ll be scratching our heads about for a long time to come.

Softech v. Internet Technology (E.D. Va., Jan. 24, 2011)

Softech holds itself out as a ‘premier provider of streaming media software platforms’, while Internet Technology characterizes Softech as ‘a rogue subcontractor who did little, but merely integrated preexisting software creating largely unusable and unused work product’.

Both agree that Softech provided seven pieces of software to IT. After paying Softech nearly 3.3 million dollars, IT was in possession of software that Softech had installed on IT’s servers with Softech reserving no right to repossess.

Softech and IT agree that IT thereafter modified the software on IT’s servers to ‘debug and make routine modifications to support existing functions or support changes in business needs.’

Softech claims such modifications were copyright infringements; IT defends stating that the modifications were an essential step both, to make the software work and to make the software worth using and helpful.

The court in the Eastern District of Virginia held that IT’s use of the Softech software was used in no other manner than that envisioned in the creation and installation of the program; and as such, the essential step defense properly applied.

The Nielsen Company, LLC v. Truck Ads, LLC (Jan. 24, 2011)

This dispute began as a feud between two trucking companies regarding maps depicting marketing areas. Neilsen sued claiming that the Neilsen maps were protected by copyright as compilations; and, that Truck Ads’ display of those proprietary ads on their website was copyright infringement.

Truck Ads denies that it has posted the Nielsen ads on their website; and, in the alternative, if they did that the Nielsen maps are uncopyrightable.

The parties were focusing their dispute on whether the maps were copyrightable, but then Truck Ads took an unescalating step of filing a declaratory judgment counterclaim asserting that Nielsen is misusing their copyrights against Truck Ads.

Nielsen moved for summary judgment on the grounds that copyright misuse is a defense and not a cause of action.

Judge Rebecca Pallmeyer of The Eastern Division of the Northern District of Illinois rejected the copyright misuse defense as a vehicle for affirmative relief for the reason that the condition precedent to a copyright misuse arising is absent. The court held that there is no claim that the underlying infringement claim is wholly lacking in merit. “Plaintiff’s allegation that Defendant acted unlawfully when it chose to copy Plaintiff’s maps is not frivolous, unsupported by law, or clearly contradicted by the facts in the record, as it must be to constitute copyright misuse.”

Plaintiff’s motion to dismiss was granted.

Kelley v. Chicago Park District (7th Cir. Feb. 15, 2011) The 7th Circuit has, on two theories, denied copyright protection to the two enormous elliptical flower beds entitled, “Wildflower Works” featuring a variety of native wildflowers and edged with borders of gravel and steel.

One theory of the denial is the site-specific art like Wildflower Works is categorically excluded from protection under VARA. The other theory of denial is more interesting. It is not that Wildflower Works failed the test for originality. Chapman Kellye’s piece clearly satisfied that; but the court held that a living garden lacked the kind of authorship and stable fixation normally required to support copyright. Simply put, gardens were planted and cultivated, not authored. Further, a garden’s constituent elements were alive and inherently changeable, not fixed.

I suppose that means my law partner can’t get a copyright in her son, as he is alive and inherently changeable, too; and, maybe I’m barred from getting a copyright on our firm mascot, my dog, Brecon, for the same reason.

Fodere v. Lorenzo (Feb. 3, 2011 S.D. Fl.)

Defendant, Compacstone, sells marble and quartz for home, particularly kitchen, installation; and hired Plaintiff Fodere to photograph a kitchen featuring defendant’s marble and quartz. Defendant and Plaintiff, both speaking Spanish, negotiated the permissible uses that may be made of the resulting photographs. This oral license was in addition to an invoice that included a written heading “Rights Licensed” under which the words “for public relations, collateral and website usage for an unlimited time” were written.

Fodere sued for copyright infringement claiming that Compacstone’s use of the photograph in a magazine advertisement exceeded the terms of the rights license and constituted copyright infringement. She demanded one thousand dollars in compensation for the unauthorized use; and sued after her demand letter went unanswered.

Compacstone responded with the defense that Fodere had orally granted a license to advertising usage and recalled that in that conversation during which both spoke Spanish, both agreed that the photographs could be used in “para publicidad” which translates as ‘advertising’.

In a 17-page opinion, the Miami District Court lays out a comprehensive analysis of copyright infringement and focused on Fodere’s deposition testimony in which she agreed that she had that discussion and that “publicidad” translates as “advertising”. The court ruled the Plaintiff granted Defendant an oral nonexclusive license to use the photograph and that the license included the right to use the photograph in advertisements. The defendant’s summary judgement motion was granted; and the action dismissed with prejudice.

It is astonishing to think that Denny Chin has taken a full turn of the calendar without issuing an opinion. We welcome the opinion when he is ready … and we wish for that ‘ready’ to be sooner rather than later.

Some of us wonder if the adage ‘justice delayed is justice denied’ might be relevant.

The world of publishing will never be the same. The Google Book case has changed the topography.

General Shinseki, 34th Chief Staff of the U.S. Army, perhaps had the insight that applies to Denny Chin and his long forbearance from giving us an opinion, “If you dislike change, you are going to dislike irrelevance even more.”

There will come a time when the decision from Chin will be irrelevant. The facts and market are changing beneath his feet and beneath all of our feet. Let’s hope that an opinion comes before that time, when what he may have to is irrelevant to the issues in play.

(N.D.Ca., Jan. 19, 2011)

Adobe sued Tony Kornrumpf of Lookout Mountain, TN, for $140,000. Kornrumpf sold a variety of pirated and education/OEM software through several eBay accounts and the web site “cyberpcs.” pursuant to the Copyright Act.

Mr. Kornrumpf defended and counterclaimed that the first sale doctrine was triggered and cited UMG v. Augusto; and alleged that Adobe should be barred from enforcing its copyrights on grounds that Adobe engaged in copyright misuse.

Northern District of California Judge, Claudia Wilkens, found that the First Sale Doctrine did not apply and that the allegations did not support a finding of copyright misuse:

“Although there may be circumstances that justify providing declaratory relief on a counterclaim for copyright misuse, Hoops has not presented them here. As explained below, Hoops’s allegations, even if true, do not establish that Adobe engaged in copyright misuse. ” (p. 7)

Cheffins v. Stewart, (D. Nevada, Jan. 20, 2011)

Be careful where you park your drivable sixty foot long Spanish Galleon. That’s the lesson here. La Contessa was the much beloved mobile, interactive replica of the 16th century Spanish Galleon.

Beginning in 2003, La Contessa was stored on a ranch with permission of the ranch’s life estate tenant. Stewart, through his company, was the owner of the ranch. In 2005, the life estate tenant moved off the ranch and abandoned her life estate. Stewart notified Burning Man that if La Contessa was not removed, it would be destroyed. In 2006, Stewart destroyed La Contessa by setting it on fire. The VARA theory was generated as a part of an effort to get legal redress. The trial court in Nevada threw the case out:

“A bus is a utilitarian object, the purpose of which is to move and transport people. La Contessa was built on top of a bus and retained the bus’ innate function of movement and transport. La Contessa was thus a functional object. Plaintiffs argue that simply including a bus as part of an art piece does not make that piece applied art, citing Carter, 71 F.3d at 83. Carter held that a sculpture incorporating applied art, as opposed to constituting applied art, is not barred from VARA’s protections. Id. While true that the mere incorporation of applied art would not render a sculpture ineligible for VARA’s protections, La Contessa did not merely incorporate a utilitarian object. By virtue of its retention of the ability to move and transport people, however slowly, it remained a utilitarian object and thus constituted applied art. In addition, to the extent Plaintiffs assert that La Contessa was not applied art because it was a venue for performances, such an object is also functional and would constitute applied art, as well. Accordingly, as La Contessa was applied art, it was not a work of visual art, and Plaintiffs are thus not eligible for relief under 17 U.S.C. § 106A. Defendant’s motion for summary judgment on Plaintiffs’ VARA claim will therefore be granted”.

To see La Contessa in 2003: http://laughingsquid.com/la-contessa-vs-the-whale-at-burning-man-2003/.

Agence France Presse v. Morel, (Jan. 14, 2011, S.D.N.Y.)

Agence France Press, Turner Broadcasting/CNN, ABC, Getty Images and CBS are suing Daniel Morel after Morel claimed that the news sites stole his images from Twitter immediately after the Haiti earthquake.

Twitter’s terms of service granted a license to use content only to Twitter and its partners. Moreover, AFP and TBS failed to establish that they were intended third-party beneficiaries of Twitter’s terms of service. Morel’s allegations that AFP knew that the images were his, disregarded his rights, and licensed Morel’s images to third-parties were sufficient to plead knowledge and inducement of infringement. Morel never uploaded images on Twitter. Instead, he used a third-party service called TwitPic, which says in its terms and conditions that the images posted remain the property of their owners. Morel used Twitter only to post a link to his TwitPic images. However the court held that Morel failed to allege facts supporting his claim that CBS had a direct financial interest in its affiliates’ exploitation of Morel’s images.

The Digital Millennium Copyright Act (DMCA) prohibits anyone from knowingly providing or distributing false copyright information with intent to “induce, enable, facilitate or conceal infringement.” Morel claims that AFP falsified and removed his copyright information from his images.

“Morel set forth a factual basis for alleging that AFP knew the copyright management information was false and intended to facilitate infringement,” Pauley wrote. In particular, an AFP editor viewed Morel’s images before AFP took identical images from Suero’s Twitpic feed. AFP also knew Morel was a professional photographer “and had no reason to believe Suero took the photos. However, AFP credited Suero without inquiry,” District Court Judge Pauley explained.

The court rejected AFP’s argument that it didn’t remove copyright management information (CMI) in violation of the DMCA. AFP says the DMCA stipulates that CMI must be removed from the photograph itself. But the DMCA “imposes no such requirement,” Pauley said. CMI includes information conveyed in connection with the work in question, and not just information on the work itself.

“It is implausible that a viewer of Morel’s photos would not understand the designation ‘Morel’ and ‘by photomorel’ appearing next to the images to refer to authorship,” Pauley wrote. Regarding Morel’s claim for violation of the Digital Millennium Copyright Act, the notations “Morel,” “daniel morel,” and “photomorel” fell within the scope of copyright management information under the plain language of the statute.

HyperQuest, Inc. v. N’Site Solutions, Inc. (Jan. 19, 2011, 7th Cir.) The Seventh Circuit affirms the trial court that held that a nonexclusive licensee lacked standing to lodge a lawsuit.

The case centered around custom software in the field of consumer automobile insurance that Unitrin Direct purchased from N’Site. In 2008, the plaintiff, HyperQuest, sued both N’Site and Unitrin Direct for copyright infringement alleging that the software Unitrin Direct purchased was a derivative work of the eDoc software; and for standing HyperQuest claimed to be an exclusive licensee from Safelite Group, Inc. of software called eDoc.

Following the chain of title to the eDoc software gets complicated. Quivox Systems granted N’Site Solutions, Inc. a non-exclusive license to certain copyrighted software that is used to process consumer automobile insurance claims. Quivox later fell on hard times and sold its assets to Safelite Group, Inc., which continues to own the copyright for the eDoc software. Eventually, Safelite granted rights in the eDoc program to HyperQuest; when it did so, the parties acknowledged the continued existence of the N’Site license and they agreed that Safelite itself would retain certain rights to use and develop the software.

This case had its origins in a dispute between N’Site and HyperQuest over the terms of these licenses. To make matters worse, at least from HyperQuest’s vantage point, N’Site sold the source code to its modified soft- ware to Unitrin Direct Insurance Company in 2006. HyperQuest filed suit on January 22, 2008, against both N’Site and Unitrin, asserting that each had infringed the copyrighted software. The district court concluded that HyperQuest held only a non-exclusive license and thus lacked statutory standing to sue and dismissed HyperQuest’s case with prejudice. Later, the court awarded attorneys’ fees and costs to N’Site and Unitrin in the amount of $134,958.42. HyperQuest has appealed, challenging both the conclusion that it was not an exclusive licensee (and thus, not entitled to assert a claim for copyright infringement) and the attorneys’ fee award. Unitrin cross-appealed from the district court’s decision to reduce the amount of the fees it had requested. The Seventh Circuit found no error and affirmed the lower court in its entirety.

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.