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.”

It’s no secret that bookstores as that magnificent sanctuary of books and people of the book are permuting. The new and soon to your neighborhood ‘bookstore’ will be a ‘books-plus’ or an ‘anything plus books’ emporium.

This is shift means that the anomalous venue because the normative one, as this article explains in greater detail.

One of the most commonly asked questions authors pose when they read their first book contract is, “What are special sales?”
The simple answer is that they are sales outside of “regular trade channels” – that is, bookstores. An example might be a fly-fishing book sold in an outdoor clothing store or a baby-naming book sold near the checkout counter of a maternity shop.
The phrase is buried in a tedious list of royalty rates applicable to marginal retail outlets. The royalty is expressed as a function of the publisher’s net receipts – as opposed to the list-price royalty paid by most trade publishers for bookstore sales. A net royalty always tells you that the cost of generating sales is higher than that for regular trade channels. In the case of special sales, those gift shops and stationery and maternity stores insist that the books they order from the publisher are not returnable. That means that publisher must slash its discount, leaving little by way of profit margin.

Practice Tip: when reviewing the publishing agreement, keep your coverage of the ‘special sales’ clear and transparent for the revenue from those non-book markets where your books are going to sell.

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.

Product placement and co-branding is normative, but here is a co-branding deal that demonstrates how a weekly drama can be synergistic for a “real life” issue driven campaign. The Tuesday night CBS drama, The Good Wife, is known by some audiences as the strong, long suffering, capable, working, lawyer wife show, with moral ambiguity.

This week it is notable for another reason. Just Say Now, a real life campaign for marijuana legalization, was featured as part of the plot where the politician running wanted to reach the youth vote and so took up medical marijuana as an issue. In an intersection of on-screen drama and real world issues, the Just Say Now name, logo and mock-web video was featured as part of the episode (presumably as part of an agreement between CBS and Just Say Now that granted permission for the use of Just Say Now’s trademarks).

The curse of an intellectual property attorney is that we can never “just watch the show” without thinking through the myriad of fascinating intellectual property issues and Tuesday’s episode of The Good Wife was no exception. Was there a license and/or co-branding agreement in place? Did it adequately protect the JUST SAY NOW trademarks? Did the product placement in a mainstream show threaten to dilute the JUST SAY NOW brand?

JUST SAY NOW is the proprietary trademark for a “real” movement and a wink to the old defunct anti-drug Nancy Reagan campaign (‘just say no’). The co-branding arrangement with CBS, while having the possibility of diluting the affiliation with the actual Just Say Now campaign, was, we believe a reasonable gamble because of the audience the TV appropriate would reach. Moreover, so long as the license agreement mandated that the show’s script did not disparage the mark, it would be a trade-off worth considering.

From a practical perspective, there are several key issues that must be properly considered and addressed before entering into a co-branding/licensing agreement. Despite the old adage, all publicity is not good publicity when it comes to protecting your trademarks and other intellectual property rights. Thus, co-branding/licensing agreements should be carefully vetted by a skilled intellectual property professional to ensure that the trademark and other intellectual property rights remain strong.

Separate and unrelated, Cobalt LLP will be hosting a seminar on Intellectual Property Issues of Medical Marijuana on March 24th. You are welcome to attend. Save the Date Card also here.

(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)

Tecnimed SRL v. Kidz-Med, Inc. (S.D.N.Y., Jan. 18, 2011)

Tecnimed is the manufacturer of a non-contact thermometer. Kidz-Med, Inc. had the exclusive right to distribute this non-contact thermometer. The complaint alleges that the defendants are now marketing and selling a competing non-contact thermometer despite the distribution agreement which prohibits the defendants from marketing and selling a competing non-contact thermometer for two years The plaintiff also alleges that the defendants are marketing their new product under a confusingly similar name with confusingly similar trade dress to the plaintiff’s product. The complaint alleges specific instances of confusion among consumers and cites a review on Amazon.com as evidence of such confusion.

The court held that an injunction is warranted; and, “Tecnimed will also derive benefit from a recall. At present, the Thermofocus directly competes against Kidz-Med’s product both in “brick and mortar” stores and over the Internet. Given Kidz-Med’s misleading promotional efforts and the high likelihood of consumer confusion, the harm resulting to Tecnimed from Kidz-Med’s continued sale of its product is likely to be substantial. Because consumers are likely to buy only one non-contact thermometer, a Kidz-Med sale obtained at Tecnimed’s expense will not be recouped in the future Accordingly, the Court finds that the balance of hardships favors a recall of the Kidz-Med product.” (p. 30)

The court found likelihood of success on the merits, irreparable injury; the balance of hardship in Plaintiff’s favor; and that the public would not be disserved by the issuance of the injunction. The court ordered both a recall and an injunction with bond posted in the amount of $130,000.

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.

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.