While the King of Pop has passed to his eternal resting place, he leaves behind more than devastated fans, mourning family members, legendary dance moves, and record breaking statistics. With his demise, we have learned that Michael Jackson amassed a substantial intellectual property portfolio, demonstrating a creativity well beyond his musical talents and leaving some to refer to him as an “Intellectual Property Goldmine.”

A little known fact about Jackson, he co-owned a patent for an invention he created that allows dancers to lean forward at a 45 degree angle beyond their center of gravity by wearing specially designed shoes. (U.S. Patent No. 5,255,425, titled “Method and Means For Creating Anti-Gravity”).

His famous gravity defying “lean” can be seen in the music video for the song Smooth Criminal.

Jackson also registering his name with the U.S. Patent and Trademark Office and owned numerous other trademarks for goods and services ranging from merchandise to fan clubs.

And, of course, let’s not forget about the copyrights. In addition to securing copyrights to his own works, Jackson famously outbid Paul McCartney and purchased rights to the Beatles song-copyright catalog for $47 million dollars in what many claim to be his best business decisions, later selling the rights to Sony for $90 million.

Although often maligned for his lifestyle choices and actions, Jackson’s dedication to creating and protecting his art and talents cannot be denied. Love him or hate him, he leveraged his superstardom (and that of others) into substantial intellectual property assets.

Fairey et al v. The Associated Press, Case No. 1:09-cv-01123-AKH (S.D.N.Y, filed 02/09/2009)

A follow up to this blog post. As predicted, copyright ownership in the underlying photograph is turning out to be a point of contention in the federal lawsuit.

To refresh the reader’s recollection, Fairey, filed for declaratory relief on the basis of fair use, after the AP threatened to sue him for using its photograph without permission to create the famous “Hope” artwork; the AP counterclaimed on the basis of infringement of its copyright in the photograph.

Last week, Mannie Garcia, who took the 2006 photo of Mr. Obama which Fairey admits was an inspiration for the “Hope” artwork, filed a Motion to Intervene and Memorandum of Law in the Fairey v. AP case. Mr. Garcia claims that he, not the AP, owns the copyright in the photograph because he was a freelance photographer at the time (in other words an independent contractor, not an employee); and that he never assigned his rights in the photograph to the AP. In support of his claim, Mr. Garcia proffers a copyright registration certificate for the photograph filed in March 2009. Mr. Garcia argues that he should be permitted to intervene in the lawsuit, under FRCP 24(a)(2) or in the court’s discretion, because his “interests are not adequately represented by either party:” on the one hand, Fairey “profited from the sales of Mr. Garcia’s copyright photographic image;” and on the other hand, the “AP seeks to reap some of the profit by claiming that it — and not Mr. Garcia, is the rightful owner of the copyright in the photograph.”

Stay tuned for further developments and the Court’s decision on Mr. Garcia’s motion.

Practice Pointer: This development serves as another reminder of the critical importance of securing copyright assignments in writing from independent contractors whose work you want to own, regardless of what their agreement might provide. It is a prudent practice, whether the contractor created an entire work for you (for example, a logo design or a photograph), or a piece of a larger project (such as a few lines of software code or illustrations for a book).

Copyright infringement claims can often be reduced to a formula. In instances where the copyright infringement is less obvious and direct, a copyright owner asserts both a valid copyright registration and a theory of how access occurred and then conjectures that because of the substantial similarity between the two works, it may be concluded that defendant’s work infringes. Such a formula is the basis of a copyright complaint filed this week in the Eastern District of New York by a fine art book designer against Urban Outfitters and its subsidiary, Anthropologie. The copyright registration upon which the case relies was effective February 13, 2009, well after the date of alleged infringement. That’s a problem because the Copyright Statute explicitly prohibits the plaintiff from recovering attorney’s fees or statutory damages when the copyright registration is obtained after infringement.

Here are the facts: Purgatory Pie Press attended the fall 2008 Artists Book Fair in New York. Visiting their booth, an Urban Outfitter representative signed the guest book with effusive praise. According to the complaint, the Urban Outfitter representative was “observed surreptitiously taking pictures using small digital cameras and mobile telephone cameras.” But there is no clarity as to whether the surreptitiously taken pictures were of the disputed work.

The complaint includes a blend of claims, not just copyright. Other claims include unfair competition as well as trademark dilution, which is particularly interesting as there is no assertion that the work at issue rises to the level of a trademark.

The prayer for relief includes a demand for attorney’s fees and damages in the amount of $150,000 (the upper statutory damage limit.) This will be hard for the Plaintiff to obtain given that their post-infringement registration bars both attorney’s fees and statutory damages.

This is a complaint by an angry artist who obviously feels ripped off and is seeking orderly revenge. Unfortunately, there is little likelihood of getting more than an injunction and perhaps some modest, actual monetary damages given the late filing of the copyright application and the absence of the image at issue having been used as a trademark. It is a complaint that expresses the emotion, but fails to have many teeth.

Practice tip: Register those copyrights early and often. Having a registration in hand before an infringement occurs empowers the complaint, making it more fierce. The Copyright Statute favors the proactive.

In a huge victory for U.S. copyright owners (including Warner Bros, Sony Music Entertainment, EMI, and Columbia Pictures) in their longstanding battle against The Pirate Bay, the largest BitTorrent file-sharing web site, a court in Stockholm, on Friday, convicted the four site owners to one year in prison and a fine of about $3.5 million for copyright violations. The Court found that the defendants knew that the content being shared was protected by copyright.

With over 20 million reported users and millions of files exchanged every day, The Pirate Bay is one of the most high-profile facilitators of P2P file-sharing on the internet. The Pirate Bay, based in Sweden, was set up in 2003 by the anti-copyright group Piratbyran (“The Piracy Bureau”). The site does not technically host copyrighted content on its servers, but indexes and links to BitTorrent files (music, movies, TV shows, etc.) on its users’ computers. The site is known for its militant (and sometimes humorous) opposition to copyright laws and the Hollywood industry, and has been involved in many lawsuits. Some countries, like Denmark, have banned access to the site altogether. The site was also blocked by Facebook a few weeks ago after The Pirate Bay tried to create a “Share on Facebook” application.

The U.S. film industry, led by the Motion Picture Association of America (MPAA), has worked tirelessly with Swedish authorities to shut down the site since its creation and filed a criminal complaint against The Pirate Bay’s owners in 2004. In 2006, the Swedish police raided The Pirate Bay offices for copyright violations, ceased their servers and shut down the site for a few days. Last year, the four Pirate Bay owners were charged by a Swedish court with “promoting other people’s infringements of copyright laws.”

The defendants have maintained that the site is not illegal under Swedish laws because they do not store copyrighted material on their servers but instead act as a directory for users who wish to exchange files. The defendants say they plan to appeal; in the meantime, the sentences are suspended. Their response to the sentencing is available here (for now!).

It’s no secret: U.S. and international markets are in deep turmoil. Massive layoffs, historic stock market declines, and institutional failures remind us this no ordinary time. Even while companies look for ways to cut back and streamline institutional costs, now may be the best time to strengthen your intellectual property (IP) portfolio.

Although frequently overlooked, a company’s IP, including its trademarks, copyrights, and patents, is often its most valuable asset. There are several reasons why strengthening an IP portfolio now, even during the recession, not only makes good business sense but may be the key to a company’s future economic growth and recovery:

1. IP Assets May Be A Significant Source Of Revenue During (And After) The Recession.

Licensing or selling of IP assets has always been a way for companies to generate additional revenue. For example, during 2006 Neo-Magic recorded a $3.5 million gain on the sale of its unused patents, representing over 37% of the company’s total yearly revenue. A recent article in the Chicago Tribune reports “amid the recession, a growing number [of companies] are looking to generate cash by selling or licensing their dormant trademarks and patents.” If protected and maintained properly, your IP assets can offer significant revenue now and into the future. In fact, many lending organizations look to a company’s trademark portfolio as a means for determining the foundational strength of the organization.

2. IP Assets Are The Building Blocks To A Flexible Business.

The recession has brought significant restructuring and reorganizing of businesses. Mergers, acquisition, spin-offs, and new business units are a sign of the times, and strong IP portfolios are the building blocks for new business opportunities as companies transform their products and market positions. Perhaps this is why, historically, certain IP filings and litigation tends to increase during times of recessions (click here and here for historical figures). As a business continue to change, adapt and grow, so too must its IP assets.

3. IP Assets Will Set Companies Apart From The Competition.

Brand recognition by consumers not only increases product and service sales, but creates a significant barrier to entry for new competitors. Thus, the strengthening of a brand position in a downturn (through both IP filings and consumer marketing), provides an opportunity for companies to stand out when there is a smaller competitive market. Strong IP assets, such as trademarks, will help ensure brand recognition and differentiate companies from their competition.

4. IP Assets Have A Lifetime That Will Extend Well Beyond The Recession.

Perhaps the only thing we know about this recession is that it will end. Innovation, creation and entrepreneurism will continue to drive our economy forward, and as we emerge into the next profitable market cycle, IP assets will remain one of most valuable company assets. Failure to protect them now may have severe consequences for the future.

Fairey et al v. The Associated Press, Case No. 1:09-cv-01123-AKH (S.D.N.Y, filed 02/09/2009)

Shepard Fairey is a contemporary visual artist who created the iconic red, white and blue “Hope” poster that became the symbol of Obama’s campaign and, arguably, a cultural phenomenon (have you Obamicon-ed yourself yet?).

Fairey doesn’t dispute that he used a photograph taken by AP photographer Mannie Garcia at a 2006 National Press Club conference as a “visual reference” for creating the series of “Hope” posters and related merchandise. The AP owns a copyright registration in the photograph (Registration No. VA 1-356-885).

After the AP threatened to sue Fairey for copyright infringement for using the photograph without permission, credit or notice, the artist and his companies filed for declaratory relief. Fairey asserts that his use is protected by the Fair Use Doctrine because: 1) the photograph was used for a “highly transformative purpose;” Fairey “altered the original with new meaning, new expression, and new messages;” 2) the photograph was published “well before” Fairey used it and it is a factual work; 3) Fairey only used a cropped portion of the photograph, and the portion used was reasonable in light of his expressive purpose; and 4) the use not only does not harm the value or market of the photograph or any derivatives, but it has enhanced the photograph’s value “beyond measure.”

In its answer and counterclaim, filed yesterday, the AP asserts that Fairey’s series of posters and merchandise based on the photograph “copy all the distinctive and unequivocally recognizable elements of the [photograph] in their entire detail, retaining the heart and essence of [the photograph], including but not limited to its patriotic theme.” In response to Fairey’s fair use arguments, the counterclaim also alleges that the posters and other merchandise “do not alter any of the distinctive characteristics that make the [photograph] so striking — from the selection of subject matter, to the composition, to the exacting details of the photo.” AP’s counterclaim further points out that licensing of photographs “is an important source of revenue” for news and photo agencies and gives the following as an example of a photograph licensed by the AP for commercial use:

The AP seeks damages and injunctive relief for copyright infringement, contributory infringement and DMCA violation.

To be continued…

Note: Ownership of the copyright in the photograph (and, therefore, the AP’s standing to sue) may become an issue in this case. The AP asserts in its answer that Mannie Garcia was a “full-time salaried staff employee” when he took the 2006 photograph, making the photograph a work-made-for-hire under 17 U.S.C. sec 101. Mr. Garcia, however, claims that he was a freelancer, not an employee.

Textbook cases can get complicated. Those complications generally do not arise in association with the manuscript or first edition, but with the subsequent updates and revisions. This is often the result of the original authors being assisted, or superceded, by other contributing authors. Sometimes the credit and acknowledgement of each contribution is not adequately represented.

The Plaintiff, Vogel, was invited by the Defendant, textbook publisher Wolters Kluwer Health dba Lippincott et al, to author one section of the medical textbook “Pathology” in the Second and Third revisions. Plaintiff was not asked to participate in the Fourth revision; however, the Fourth revision includes portions of Plaintiff’s contributions to the preceding revisions. Plaintiff received no attribution for his earlier, iterative contributions; authorship for the Fourth revision has been credited to a completely new author-physician.

The Court of the Middle District of North Carolina granted the Defendant’s motion to dismiss Plaintiff’s claim of false designations of origin on the grounds that “Section 43(a) does not protect the merely communicative aspects of the goods apart from the goods themselves.” Specifically finding that Plaintiff’s interpretation of Dastar is “incorrect,” the Court held that any claims of false authorship attribution must be pursued under copyright law. The copyright claim survives the motion to dismiss and the case will go forward to trial.

Vogel v. Wolters Kluwer Health, Inc. (12/30/08)

Crane v. Poetic Products Ltd., 2009 U.S. Dist. LEXIS 993 (SDNY January 8, 2009)

Arising from a fondness for the conspiracy theory that the 1978 death of Pope John Paul I was a murder most vile to facilitate a specific succession, both plaintiff and defendant to this action wrote works. Crane wrote a two act play entitled “The Last Confession” and filed a declaratory judgement for a ruling that that play does not infringed copyright claimant, Poetic’s, nonfiction book entitled, “In God’s Name”.

In reviewing the two works, the Southern District of New York held that the play is not substantially similar to the book. The court looked at the elements of both works and found that while the selection, arrangement and organization of the facts constitute protectable copyright in both works, the comparison between the two works revealed that the resulting thin copyright did not extent to the specific historical order of presentation that each used in expressing their thinly protectable copyright. No substantial similarity was found between the two that used different means and devices in expressing the same plot. Crane’s work utilized dialogue and a series of flashbacks while the Poetic work employed historical narrative in chronological order.

The court in granting defendant’s motion for summary judgement, the court instructed the clerk to ‘close the case’.

With the goal of capturing “the most detailed experience of a single moment ever in history,” CNN and Microsoft invite inaugural attendees to send photographs documenting the moment that Barack Obama took the oath.

Participants are instructed to:

“1. Take one photo of the moment when Obama takes the oath. If you have a digital camera with a zoom lens, take three photos (wide-angle, mid-zoom, full-zoom).

2. E-mail each photo as soon as possible to themoment@cnn.com (one photo per message, 10MB size limit). Please only send in photos you took yourself.

3. Go to cnn.com/themoment to see all of the photos in our photosynth.”

And what is a “photosynth” exactly? Photosynth is technology developed by Microsoft and the University of Washington that creates a collage, a derivative work. Specifically, photosynth takes multiple shots of the same scene and reconstructs the 2D photos into 3D space. According to the web site, “depending on the number of photos, their resolution and the computing iron thrown at the project we should have a fully explorable virtual environment. It is a technology in its infancy. This is the first time a mass audience has been asked to participate. The technology takes all the submitted images from thousands of sources and angles to create a 360 degree visual image that can be viewed from different angles.”

And what about the copyright in those photographs by the amateur photographers? It is governed by pretty complicated and professional sounding terms of use.

After granting CNN and its affiliates a perpetual, irrevocable, royalty-free, worldwide license to which the submitter retains only personal use rights (which some would call an illusory license, and indeed much more akin to an assignment than a license at all), that photographer “warrants” that he or she, the amateur submitter, has “the written consent of each and every identifiable natural person in any submission to use such persons name or likeness in the manner contemplated by iReport.com, and each such person has released you from any liability that may arise in relation to such use.” Which is a bit of a trick as there is no chance of the amateur having obtained such “written consent” on the Mall on January 20th; and that amateur just also agreed earlier in the terms of use that CNN does not have to inform what “use” will be made of the submission.

And yet, people seem to have blithely blown past all those words and have made their submissions nevertheless.

It’ll be interesting to see the copyright application for registration at the United States Copyright Office that CNN will be making. A daunting task, it will be to draft that application.

This week, Apple announced that Digital Rights Management (DRM) would not attach to any single song from the iTunes store. This is huge confirmation of what most music fans have noticed: DRM doesn’t work and may never work. The details of this change include a price change. A tiered spectrum of prices will be the tariff card with the most ‘popular’ (read: hot and new) costing $1.29; the usual .99 cents for the chestnuts and perennial favorites; and then .69 cents for the sentimental and slow demand ones.

That music downloaded necessarily involves a ‘codec’ (which means that only a fraction of the full fidelity is made available) seems to continue to elude the consumer. But as anyone who has tried to play iTunes music on a full fidelity, fancy speaker knows, the quality of music is definitely strained…. and thin sounding.

For those of us who have been watching the DRM life cycle over the last decade, this is more confirmation that technological control efforts have far less to do with piracy than with an effort to control the design of consumer electronics, digital broadcasting and the evolving distribution models. Content owners are about out of tricks for how to slice and dice the accessing of content (regional codes, restrictions on porting lawfully made copies and pricing).

Washington D.C. is full of original works of art in the form of sculptures. One description of D.C. made by a young friend is that D.C. is a sculpture garden disguised as a town. A score of years ago, the Supreme Court issued a copyright opinion on another sculpture case, The Community for Creative NonViolence (CCNV). This opinion, Gaylord v. U.S., which issued on December 16, 2008, is consistent with CCNV.

The title of the work at issue, “The Column”, refers to a public sculpture depicting 19 Korean War soldiers in a ‘column’ formation. This sculpture forms the core of the larger Korean War Veterans Memorial (KWVM) in Washington, D.C. Frank C. Gaylord, the acknowledged artist who authored “The Column”, objected when the United States Postal Service commissioned a freelance photographer for $1,500.00 and then used that image on a commemorative stamp. The USPS sold 86.8 million 37-cent stamps bearing the image before retiring the stamp in 1998. The photographer pocketed his $1,500. Gaylord got nothing, not even a free stamp.

Gaylord sued; alleged copyright infringement; and demanded as damage 10% of the revenue of the USPS stamp sales.

The tangled facts surrounding the creation of the sculpture are pivotal in understanding this case. It is a fact pattern that reads like a nested Russian doll. An architectural firm won the contract from the American Battle Monuments Commission (ABMC) to create and install the KWVM; and, that architectural firm subcontracted the sculpture of the soldiers (19 in all) to Frank Gaylord, a self employed and well known artist. In the documentation regarding the creation of the sculpture, Gaylord demanded; was refused; and then succeeded in unimpeded ownership to the copyright in his works. Gaylord obtained numerous copyright registrations covering the sculptures of the poncho wearing foot soldiers both individually as a grouped column.

After the KWVM was installed, an amateur photographer visited the KWVM during a snowstorm and took photographs. The snow frosted images of trudging soldiers in column was licensed to the United States Postal Service for $1,500. The photographer notified the Postal Service that the permission of the artist of the sculpture would also be needed for reproduction of the image. The Postal Service contacted the ABMC who represented that it had the rights to the sculptures. No one contacted Mr. Gaylord; Mr. Gaylord did not consent.

Upon learning of the use of his work, Gaylord tried negotiating a ten percent license on the revenue of the stamp sales, and when that was refused, he sued the United States.

The United States defended stating that the Gaylord sculpture was a joint work. In reviewing the facts and logic, which were reminiscent of those of the Community for Creative Nonviolence (1988), the Court of Federal Claims found no joint authorship and that Gaylord is the sole owner of the sculptures. However, in reviewing the defense of fair use, the Court of Federal Claims found that United States Postal Service stamp was a fair use of Mr. Gaylord’s solely owned sculpture as the stamp is a transformative work, having a new and different character and expression from that of Mr. Gaylord’s sculpture. Gaylord for all his effort and for his tenacity in taking the matter to court; still gets nothing.

Last Wednesday, the Eastern Division of the Central District Court of California issued a series of extraordinarily sweeping injunctions in favor of Mattel, in the four-year legal dispute between the toy giant and the makers of the popular BRATZ dolls, MGA Entertainment.

Unless you don’t have any tween girls in your entourage, you may know that the BRATZ dolls are saucy, sexy versions of the BARBIE dolls. They came on the market in 2001 and were an instant sensation with young girls, resulting in a billion-dollar franchise, including over 40 characters, video games, and a whole host of ancillary products, accessories and related toys, like BRATZ BOYZ or BRATZ PETZ; even a movie.

Last July, Mattel won a $100 million jury award against MGA for breach of contract and copyright infringement. The jury found that the creator of the BRATZ dolls, Carter Bryant, came up with the idea and design while still under an exclusive contract with Mattel and that MGA had interfered with that contractual relationship. The jury also found that Mattel’s copyright had been infringed by the BRATZ dolls.

One of the post-trial disputes between Mattel and MGA was centered on whether the jury found that only the first generation BRATZ dolls created by Bryant while he worked at Mattel (Yasmine, Chloe, Sasha and Jade) infringed on Mattel’s copyright, or whether the entire line of BRATZ products was in violation. In this latest series of orders, issued on December 3, 2008, the District Court found the entire line to be infringing and issued the following rulings:

- MGA must cease manufacturing, marketing and selling the BRATZ line and any ancillary products;
- MGA must deliver, at its own expense, all infringing dolls and products to Mattel for impoundment; and
- Mattel is granted a constructive trust in the BRATZ and JADE trademarks and related domain names.

These unusually broad injunctions, once in place, would essentially shut down MGA’s business. It may not be the end of the Bratz quite yet, however (no matter what some parents may hope!). The District Court stayed the orders until February 2009 and MGA issued a statement that it will file an appeal to the 9th Circuit and request a stay.

Practice Pointer:

While ideas and concepts are not copyrightable, the expression of ideas and concepts is. Here, the employee crossed a line by re-using more than just intangible ideas and by taking with him actual trademarks and designs created at his former job. This case reminds us of the very real and very costly copyright risk that exists when a company hires an employee or independent contractor who has worked for a competitor. Ideally, you want your new employee to create something new and original every time but, practically speaking, that is not always possible. One prudent practice is to institute in-house policies for clear and clean copyright and content hygiene. Such policies, for example, specify which materials employees may or may not re-use in the scope of employment; and may also set forth a clearance process for “prior art” and open source materials employees are allowed to use from time to time.

Electrolux turned the tables on former distributor-turned-competitor Imig, Inc., which filed a complaint against the famous vacuum and home appliance company, for interfering with relationships with perspective customers. Electrolux filed several counterclaims, alleging that Imig copied Electrolux’s protected trade dress, copyright protected user manuals, and that Imig made false claims in its advertising.

The district court dismissed all of Imig’s claims on summary judgment, and found for Electrolux on copyright infringement and false advertising. The court found that Imig had copied the user manuals in violation of U.S. Copyright law. From a false advertising perspective, the court found that specific numerically based claims about the Imig vacuum’s superiority were false on their face, because the products did not actually meet those objective standards. The remaining counterclaims proceeded to trial. On March 31, 2008, the court issued its finding that Electrolux had not met its burden of establishing a protectable trade dress in its vacuum and therefore, did not find Imig liable.

The facts show that Imig, afraid that it would lose its distributorship of the Electrolux SANITAIRE brand, developed its PERFECT brand vacuum as a replacement. Discovery produced evidence of copying: in creating the PERFECT design, Imig referred its Chinese manufacturer to the specifications of the SANITAIRE line. It was also revealed that Imig’s patent attorney sent a letter to a patent research company noting his clients’ desire “to make a private label vacuum cleaner that is virtually identical in appearance” to defendant’s vacuum. The court also noted numerous visual similarities between the SANITAIRE vacuum and the PERFECT vacuum.

Notwithstanding Imid’s clear intent to copy, the court did not find liability. The court noted that Electrolux had not met its burden of establishing trade dress infringement. In order to establish trade dress infringement, the court wrote, a company must show that the product design is distinctive and that consumers are likely to be confused by seeing the distinctive trade dress on another product. The court held that the elements claimed by Electrolux were functional in nature, and that the company had not proved otherwise, despite Electrolux’s survey evidence showing consumers recognized the various elements of the vacuum as being uniquely from the SANITAIRE brand. The court also determined that secondary meaning had not been established, even though the product had been in use for several years. Addressing the issue of confusion, the court, citing Cadbury Beverages, Inc. v. Cott Corp. determined that Eletrolux had to show a “probability – not merely a ‘possibility’ – of confusion,” a burden that it also did not meet. Even with the victory on the copyright and false advertising claims, we’re guessing Electrolux thinks the decision, well, sucks.

Practice Note: One method of distinguishing trade dress elements is to use “look for” advertising tactics in marketing the products. If a product contains non-functional elements that truly distinguish the product, a company can generate recognition around those features by directing clients to look for them when they make a purchase. Such use may be more persuasive than survey evidence in making clear to both customers and competitors what elements of a design are trade dress.

Mallery v. NBC Universal, No. 07 Civ. 2250, 2007 U.S. Dist. LEXIS 88960 (S.D.N.Y., December 3, 2007)

Another “absurd” (the court’s words) claim that a Hollywood studio stole plaintiffs’ ideas for a hit show. And another reminder that not all copying amounts to actionable copyright infringement. That two works of fiction have similar plot, scenes or characters does not necessarily mean there is infringement.

Plaintiffs claimed that the TV show “Heroes” was “strikingly similar” to a novel, short film and painting series they created. “Heroes” is a show that borrows from comic book lore and tells the intersecting stories of a diverse group of individuals who discover they have superhuman powers. In the first season, the characters try to prevent an explosion that is set to destroy New York City, as predicted in paintings created by a character who can draw the future (like the one shown below).

Plaintiffs claimed that “Heroes” was similar to their works in a number of ways. They claimed that it contained characters who were “minorities” and had the ability to paint the future. They also claimed that the stories both featured paintings depicting New York buildings destroyed and predictions that were validated in a newspaper. Other alleged similarities included close up eye images, twin characters, and characters trying to stop tragic events.

The court granted defendant’s motion for summary judgment and held that any similarities between the works related to unprotectable ideas. Storylines such as a minority artist painting the future or heroes trying to stop a catastrophe are scenes à faire, that is to say elements that necessarily follow from the choice of storyline or situation and are not protected by copyright. The court also rejected plaintiff’s argument that the works had similar “total concept and feel.” It noted that any similarities were too abstract for a jury to find substantial similarities and that the two stories “differed in nearly every relevant way.”

This opinion follows a long-line of cases holding that similar stories and characters do not necessarily amount to copyright infringement; for example cases finding that a children’s book about a dinosaur zoo was not substantially similar to the film Jurassic Park, or that the character of Superman was not substantially similar to the TV show “Greatest American Hero.”

Dalton-Ross Homes, Inc. v. Williams, No. CV-06-1301-PCT-FJM, 2007 U.S.Dist. LEXIS 64135 (D. Ar. August 29, 2007).

This case highlights the crucial importance of registering works that copyright owners want to protect and enforce.

Plaintiff, a construction company, owned and registered the copyright in architectural floor Plan 1. A draftsman working for plaintiff prepared Plan 2, based on Plan 1, and Plan 3, based on Plan 2 (and, possibly, Plan 1). Defendants hired the same draftsman, who used plaintiff’s Plan 3 to prepare Plan 4 for defendants. Plaintiffs alleged that defendant’s Plan 4 infringed on plaintiff’s Plan 3, which was derivative of registered Plan 1. Plaintiff never registered its copyrights in Plans 2 or 3.

Dalton-Ross Homes’ Villa Del Mesa model
(“Plan 1″)

The court granted defendant’s motion for summary judgment, stating that copyright registration is a prerequisite to bringing an action in federal court for copyright infringement (17 U.S.C. § 411). A separate registration was required for Plan 3, the derivative work that was the subject of the action. Registration of the underlying original work was not sufficient to create jurisdiction in a lawsuit for infringement of the unregistered derivative work.

The court noted that copying an unregistered derivative work might give rise to liability based on infringement of the registered underlying work, if plaintiff can establish that defendant copied protectable elements of the original work. In this case, plaintiff merely argued that Plan 4 was derivative of Plan 3, which in turn was derivative of Plan 2, which in turn was derivative of Plan 1. Plaintiff never directly argued infringement of Plan 1. If it had done so, the result of the case may have been different.

Jacobsen v. Katzer, No. C06-01905 JSW, 2007 U.S. Dist. LEXIS 63568 (N.D. Ca. August 17, 2007)

This little case about model railroad software addresses a debated issue in the open source community: on what basis can open source creators sue people who misuse their work. This case seems to suggest breach of contract is an available remedy, but not copyright infringement. The case also deals with copyright law preemption.

Plaintiff developed model train software made available on this online community. Plaintiff’s work was subject to a standard open source software license permitting members of the public to make copies, distribute and make derivative works, providing they gave credit to the creators. Plaintiff alleged that defendants used plaintiff’s software to develop and fraudulently patent their own software for model train enthusiasts. Plaintiff sued on a number of counts and moved for a preliminary injunction to enjoin defendants from willfully infringing plaintiff’s copyrighted materials.

The court first held that plaintiff’s claims of unfair competition and unjust enrichment were preempted by federal copyright law, as both counts dealt “exclusively” with the misappropriation of plaintiff’s copyrighted files, a subject matter within the Copyright Act. To survive preemption the state claims must protect different rights than copyright rights. The state claims here did not add the required “extra element” to change the nature of the action or the rights secured under copyright law.

The court then denied plaintiff’s injunction, stating that plaintiff’s claims sounded in contract, not copyright. The court held that, implicit in a non-exclusive license like this one was a promise not to sue for copyright infringement. That is not to say that a licensor may never sue for copyright infringement, but they may only do so when the licensee exceeds the scope of the license. In this case, the license, like all open source licenses, was intentionally broad, closing the door to a copyright claim.