Copyright Law - Second Circuit: Are Judges More Discerning Than Ordinary People?

Motion to Dismiss, Copyright in Literary Works, Substantial Similarity, “More Discerning Ordinary Observer” Test

DiTocco v. Riordan, 2012 WL 4016898 (2d Circuit September 13, 2012)(summary order).  The district court dismissed a copyright infringement claim after determining that the series of five Percy Jackson and the Olympian books were not substantially similar to plaintiff’s books The Hero Perseus and Atlas’ Revenge.   The Second Circuit affirmed, applying the “more discerning ordinary observer” test which requires an extraction of unprotectable elements and answering the question of whether the protectable elements, standing alone, are substantially similar, with an eye to “the total concept and feel”.  Since “what is required is only a visual comparison of the works” and the district court did not err in its finding of lack of substantial similarity, the dismissal was affirmed.

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Copyright Law - Fifth Circuit:

Software, Preemption, Complete Preemption Doctrine, Removal from State Court,  Remand from Federal to State Court, Misappropriation of Trade Secrets, Conversion, Unfair Competition, Tortious Interference

Globeranger Corp. v. Software A.G., 691 F.3d 702 (Fifth Circuit August 17, 2012).  Plaintiff developer of passive radio frequency identification (RFID) system including software for a method of tracking objects like the EZ-Pass system for cars at toll booths sued over losing a Navy contract due to underhanded practices including improper relationship with the Navy and stealing Plaintiffs technology.   Defendant removed the action to federal court, alleging that the claims set forth in the complaint were preempted by the Copyright Act.  The district court denied a motion to remand to state court and dismissed the claims.   On appeal, the Fifth Circuit reversed the dismissal and remanded to the federal district court, not the state court.  This decision is important because for the first time the Fifth Circuit joins the Second, Fourth and Sixth Circuits’ approach and  adopts the “complete preemption” doctrine.  Under the complete preemption doctrine, state law actions preempted by Section 301(a) of the Copyright Act are deemed to “arise under” federal law.   The practical significance is that if a plaintiff files a complaint in state court alleging only state law claims, if the defendant can show a federal court that any of the state law claims have been preempted, the defendant may properly remove the action from state to federal court.   Ordinarily, a plaintiff is entitled to be master of the complaint and may choose the state forum by choosing not to plead federal claims.  This is known as the “well-pleaded complaint rule” – unless federal claims appear on the complaint’s face, the action stays in state court.   In Globeranger, the Fifth Circuit found that the state law conversion claim was probably just a copyright infringement claim and thus probably preempted and permitted the action to stay in federal court.  Although the complaint referenced “tangible property” it did not do so specifically, so at this jurisdictional stage the Fifth Circuit left the question for a federal factfinder, without prejudice to a later finding that no such tangible property exists, thus depriving the federal court of subject matter jurisdiction.   However the Fifth Circuit also found that other claims based on “procedures, processes, systems and methods of operation” are excluded from the protection of the Copyright Act and thus claims based on those factual allegations, if proven true, would not be preempted.  An important case for business processes and applications involving software, important to read for those pleading such claims and trying to navigate the removal/remand process.

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Copyright Law - Second Circuit: Cutting Down The Ivi Internet Stream With A Preliminary Injunction

Audiovisual Copyrights, Streaming, Copyright Infringement, Preliminary Injunction

WPIX, Inc. v. ivi, Inc., 691 F.3d 275 (Second Circuit August 27, 2012).  Internet streaming company streams live copyrighted television content without plaintiff copyright owners’ consent. District court issued preliminary injunction.  Second Circuit affirmed principally on the grounds that ivi is not a cable system and thus not entitled to a compulsory license in an opinion that contains a detailed analysis of the statutory definition of cable system and the legislative intent.   Applying the eBay standard, the Second Circuit affirmed the district court’s finding of irreparable harm, balanced the hardships and found that continuing ivi’s broadcasts would cause hardship to the plaintiffs and not serve the public interest.

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Copyright Law - Second Circuit: Can Lamp Fixture Elements Be Conceptually Separable?

Copyrightability of Useful Objects, Merger Doctrine, Separability, Light Fixtures and Lamps, Motion to Dismiss Copyright Infringement Action

Aqua Creations USA Inc. v. Hilton Worldwide, Inc., 2012 WL 2687957 (2d Cir. July 9, 2012)(unpublished summary order).  Here the Second Circuit affirmed the dismissal of an amended complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim.   Plaintiff was a manufacturer of lamp fixtures.  The Copyright Office denied Plaintiff registration for the lamp fixtures.  Useful items are not generally copyrightable.  An exception is only to the extent that a design “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article”.  The court noted that no aspect of the lamp could be physically separated, citing the famous Mazer v. Stein, 347 U.S. 201 (1954)(copyrighted statue of a dancer as a lamp base remained protectable).   The court then reviewed “conceptual severability” (also known as the “merger doctrine”) – “if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements.”   Conversely “where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.”   Pleading tip:  the court chided plaintiff for pleading in a conclusory manner that elements were conceptually and physically separable, but failing to identify any such elements, even on appeal.  In drafting a complaint, a plaintiff should specify elements that are either physically or conceptually separable.

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Copyright Law - Second Circuit: Are Prom Dresses Useful?

Prom Dress, Copyrightability, Useful Articles, Decorative Elements, Separability, Motion to Dismiss

Jovani Fashion Ltd. v. Fiesta Fashions, 2012 WL 4856412 (2d Circuit October 15, 2012).  Articles of clothing are “useful articles” not protected by Copyright.   Design and decorative elements were neither physically nor conceptually separable and thus not protectable.   District court’s dismissal on Rule 12(b)(6) motion affirmed.

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Copyright Law - Eighth Circuit - Does A Declaratory Judgment Action Trump an Arbitration?

Copyright Assignments, Contracts Involving Copyrights, Arbitration of Copyright Disputes, Motion for Stay of Proceedings

Art Etc. LLC v. Angel Gifts, Inc., 686 F.3d 654 (8^th Cir. July 27, 2012).  Plaintiff buys library of art images from defendant in an asset purchase agreement.  Defendant signs promissory note for part of purchase price.  Promissory note has arbitration clause.    Plaintiff discovers belatedly that art images belong to third parties who are asserting copyright.  Plaintiff sues in federal district court seeking declaration that selling art images would violate the Copyright Act.  Defendant moves to stay proceedings pending arbitration.  District court denies stay, Plaintiff appeals and Eight Circuit affirms.  The asset purchase agreement had no arbitration agreement and reserved all litigation remedies.  The arbitration clause referred only to breaches of the promissory agreement or attempts to offset.  Accordingly, the action for declaration of infringement of the Copyright Act could proceed.

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Copyright Law - Seventh Circuit: Expedited Summary Judgment Is A Pain in the Butt

Copyright Infringement, Fair Use as Affirmative Defense, Rule 12(b)(6) Motion to Dismiss, Parody, Audiovisual Works and the Incorporation by Reference Doctrine

Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7^th Cir. June 7, 2012).  Plaintiff  Brownmark produced a video celebrating anal sex called “What What In the Butt” performed by Samwell.

South Park produced a parody.  According to the court, the parody took the “heart” of the Brownmark work.  The South Park video was this:  the country of Canada went on strike because it was not getting “internet dollars” from viral videos.   A South Park character named Butters made a video to go viral and buy off Canada.  You can watch both on YouTube.

 

The interesting part about this case (aside from the original that is more comic and disturbing than the parody), is that the plaintiff did not attach its work to the complaint nor did it attach the allegedly infringing work, yet a motion to dismiss was granted on the affirmative defense of fair use (parody).  Defendant South Park responded to the motion to dismiss by attaching its parody and the original video to a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure (FRCP).  Ordinarily, a district court may not consider materials extraneous to the complaint without converting the motion to a motion for summary judgment under FRCP 56.  See FRCP 12(d).  Under the “incorporation by reference” doctrine, the district court might be free to look at the videos because the complaint had incorporated the videos by reference.  Since the parties declined to brief the issue, the court saved it for another day.  Instead the court treated the motion as one for summary judgment, noted that Brownmark failed to request discovery and failed to provide a list of possible evidence that would support its infringement claim.   On appeal, Brownmark’s broad list of discovery that it would have sought gives Brownmark “the appearance of a ‘copyright troll’” and the 7th Circuit was “confident” that the district court would have “refused to grant such expansive demands”. The 7th Circuit noted that South Park had “miscaptioned” its motion and ought to have said that it was a summary judgment motion. Since only two videos were necessary to review and grant summary judgment, Brownmark was not prejudiced by the lack of notice ordinarily afforded on a motion for summary judgment. Practice tip: this case shows a willingness of federal courts to “cut to the chase” in a case where plaintiff has not articulated early and clearly the need for additional discovery and where plaintiffs have not clearly put the infringement: the original and the allegedly infringing material before the court in its complaint.

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Copyright Law - Fifth Circuit - Did Novelist's Cooperation with DVD Producer Create Implied License?

Copyright Infringement, Declaratory Judgment, Exclusive Copyright License, Evidence, Statute of Frauds, Implied Nonexclusive Copyright License, Jury Instructions, Verdict Forms, Attorneys Fees

Baisden v. I’m Ready Productions, Inc., 693 F.3d 491 (5th Circuit August 31, 2012).  Novelist enters into contract granting exclusive rights to screenplays and limited time for DVD production/distribution for two novels.  After DVD contract expires, parties enter into oral agreement extending DVD production/distribution.   Novelist gets movie deal, sues to end oral agreement, claiming copyright infringement.   Jury trial conducted, jury finds no copyright infringement.  Held: implied nonexclusive license may be proven by totality of the circumstances.  Proper jury instruction on affirmative defense of a license cured a potentially unclear jury verdict form, particularly where counsel did not object.  Here, novelist agreed to activities, participated in distribution of DVDs, bought DVDs to resell and accepted royalty checks.  Full performance and payment of royalties sufficient to remove from statute of frauds 17 U.S.C. §204(a).  Trial court’s refusal to permit novelist to read entire novels to jury or show second two-hour DVD was not reversible error where testimony regarding similarities and differences was permitted and where jury had copies of the novels.  Trial court’s refusal to award either party attorneys fees affirmed.

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Copyright Law - First Circuit - Christmas Carol Chaos in Puerto Rico?

Music Licensing, Copyright Infringement, Declaratory Judgments, Competing Copyright Claims, Exclusion of Evidence

Banco Popular de Puerto Rico v. Asociacion de Compositores y Editores de Musica Latinoamericana (ACEMLA), 678 F.3d 102 (1^st Cir. May 11, 2012).   Banco Popular produced a series of Christmas concerts from 1993 to 1999 featuring Puerto Rican musicians.  Banco Popular decided to seek retroactive copyright licenses (performance, mechanical or synchronization) starting in 1999.  Upon reaching a settlement with one purported licensor, other purported licensors issued cease and desist letters, each claiming to have exclusive rights in songs that the first purported licensor purported to own.  In 2001, Banco Popular sued for a declaratory judgment and deposited royalties into court, seeking direction from the court on who to pay.  Various purported licensors sued for copyright infringement.  Resulting litigations took nine years.  In the middle of a jury trial, one party found new evidence that the University of Puerto Rico owned one of the copyrights, the district judge excluded the evidence because it would disrupt the trial.  The First Circuit affirmed in all respects, the byzantine opinion is noteworthy only as a cautionary tale:  get the rights and investigate the copyright holders before you throw the concerts and sell the CDs! 

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Copyright Law: Substantial Similarity of Stick Figures

Blehm v. Jacobs, 2012 WL 6700437 (10^th Cir. December 27, 2012).  Blehm created a series of stick figure characters called Penmen.  Examples below:

 

 

Blehm sued Life Is Good, a company that developed a character named Jake

 

Jake gets involved in many action situations

 

for copyright infringement.  The district court granted summary judgment.  The 10^th Circuit granted summary judgment, affirming the holding that no reasonable jury could conclude that Penmen and Jake were substantially similar.  The court’s opinion consists largely of a careful parsing of elements dictated by the idea of a stick figure in action (unprotectable ideas) and comparing the elements that were the result of creative choices.   The court concluded that the images were so dissimilar so that no reasonable jury could have found substantial similarity.  Check out the opinion yourself, you will find 67 side by side illustrations that are fun and creative.  Judge for yourself, but some of Jake’s poses appear to be “inspired” – others not so much.

 

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Is Our Federal Justice System Being Dismantled?

THE FEDERAL BAR ASSOCIATION CHAPTERS

FOR THE EASTERN AND SOUTHERN DISTRICTS OF NEW YORK

Invite you to an important forum

and information briefing:

IS OUR FEDERAL JUSTICE SYSTEM BEING DISMANTLED?

 

A report from Capitol Hill on the budget battles,

judicial vacancies, and adequate judicial pay

–Welcome–

THE HONORABLE LORETTA A. PRESKA

Chief United States District Court Judge

for the Southern District of New York

–Introduction–

KAREN SILBERMAN

Executive Director,

Federal Bar Association

–Capitol Hill Report–

 

BRUCE MOYER, ESQ.

Government Relations Counsel,

Federal Bar Association

June 18, 2013, 5:30pm

–US District Court, 500 Pearl Street–

Courtroom 9C, New York, NY 10007

 

Reception to Follow

 

No Reservations Required

 

 

For more information:

SDNY Chapter President Phil Schatz (212) 421-8120 or philip.schatz@wsfny.com

 

Co-Sponsored by Network of Bar Leaders



 BRUCE MOYER serves the Federal Bar Association as its Counsel for Government

Relations. He brings to the Federal Bar over three decades of experience in

working with Congress, the Judiciary and the Executive branch.

Bruce advises and represents the Federal Bar in Washington on policy
issues that involve the federal court system, its funding, operations andjurisprudence. His column, Washington Watch, appears regularly in The
Federal Lawyer, the magazine of the Federal Bar Association.

Bruce is an attorney, registered lobbyist, and the principal of The Moyer
Group, a firm specializing in government relations and public policy.

Bruce received his law degree from George Washington University Law School, his undergraduate

degree from Juniata1 College in Pennsylvania, and is a member of the bars of the District of

Columbia, Maryland and Pennsylvania.

KAREN SILBERMAN is the Executive Director of the Federal Bar

Association (FBA), whose 16,000 lawyers and judges are dedicated to
preserving our federal courts and to promoting the welfare, interests,
education and professional development of federal practitioners. Prior to
joining the FBA, Karen was the Executive Director of the Society for
Human Resource Management (SHRM) Foundation. She has also served
as executive director of the National Coalition for Promoting Physical
Activity (a coalition whose members include the American Heart
Association, the American Cancer Society, Nike, the American College of

Sports Medicine and the International Health, Racquet and Sports Club

Association), the Association Management Group, the Points of Light

Foundation, and the American Heart Association.

A Washington, D.C., native, Karen earned her undergraduate degree from Oberlin College and a

master's degree in public affairs from Indiana University. In 2005, she became a certified association

executive (CAE). Karen also serves as Vice Chair of the board of the Friends of the National Zoo.

 

 

THE FEDERAL BAR ASSOCIATION is dedicated to strengthening the federal

legal system and administration of justice and serving the interests and
the needs of the federal judiciary, federal practitioners, both public and
private, and the public they serve. The FBA has more than 16,000
members, including 1,200 federal judges, who work together to promote
the sound administration of justice and integrity, quality and
independence of the judiciary. The FBA also provides opportunities for
scholarship and for judges and lawyers to work together socially andprofessionally. The FBA is governed by a 15-member elected board, and publishes The Federal Lawyer, published 10 times per year, the only professional publication devoted to the federal courts.
The FBA maintains a strong presence on Capitol Hill, working diligently to further the interests of
the Bench, the Bar, and the Public.
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 Copyright law, fine art and navigating the courts. All practice, no theory.Copyright Litigation Handbook (Thomson Reuters Westlaw 2012-2013) by Raymond J. Dowd
 

Call In At Lunchtime Today: Ethics and Intellectual Property CLE

              

            Ray Dowd, author of West’s Copyright Litigation Handbook, and partner at Dunnington Bartholow & Miller LLP in New York City interviews Alexandra Darraby, author of West’s Art, Artifact, Architecture & Museum Law Volumes 1 & 2, and Principal in the Art Law Firm, a California law firm, and President of Creative Vision Strategies,  LLC in New York.  This interactive program pin-points ethical pitfalls lawyers need to know when tackling intellectual property issues, including those that have international dimensions.  If you work in the IP space,  this dialogue of tips and how-to’s is for you.

            Darraby will discuss best practices and the foundations of ethical practice in intellectual  transactions, and Dowd will add litigation angles and legal opinions.   Copyright, trademark, patent and knowhow transfers make particular demands on the practitioners;  Hear what these lawyers have to say  to avoid missteps that can lead an attorney into areas that may open up liability for malpractice.

             The 16^th edition of Art, Artifact, Architecture and Museum Law by leading arts attorney, Alexandra Darraby, is the platinum standard in the field of art law. It is the standout guide for legal and arts professionals, in a world where every decision can make or break a critical deal.  LeAnn Shelton, Esq., and AIA, Rockwell Design, General Counsel and Senior Vice President,   New York, New York called Art, Artifact, Architecture and Museum Law the “single definitive source of authoritative and thorough analysis for architects, designers, and others in creative practice.”

Description:
Ray Dowd, author of West's Copyright Litigation Handbook, and partner at Dunnington Bartholow & Miller LLP in New York City interviews Alexandra Darraby, author of West's Art, Artifact, Architecture & Museum Law Volumes 1 & 2, and Principal in the Art Law Firm, a California law firm, and President of Creative Vision Strategies, LLC in New York. This interactive program pin-points ethical pitfalls lawyers need to know when tackling intellectual property issues, including those that have international dimensions. If you work in the IP space, this dialogue of tips and how-to's is for you.
Darraby will discuss best practices and the foundations of ethical practice in intellectual transactions, and Dowd will add litigation angles and legal opinions. Copyright, trademark, patent and knowhow transfers make particular demands on the practitioners; Hear what these lawyers have to say to avoid missteps that can lead an attorney into areas that may open up liability for malpractice.

The 16th edition of Art, Artifact, Architecture and Museum Law by leading arts attorney, Alexandra Darraby, is the platinum standard in the field of art law. It is the standout guide for legal and arts professionals, in a world where every decision can make or break a critical deal. LeAnn Shelton, Esq., and AIA, Rockwell Design, General Counsel and Senior Vice President, New York, New York called Art, Artifact, Architecture and Museum Law the single definitive source of authoritative and thorough analysis for architects, designers, and others in creative practice.

The New York Law Journal called Dowd's Copyright Litigation Handbook "an indispensable guide and supplement to the ins and outs of copyright litigation". Join us for a lively session on a hot topic. For more information on either Dowd or Darraby book, please visit the Thomson Reuters Westlaw Store here
Sign up for the webinar at the WestLegalEd Center. http://westlegaledcenter.com/

Practice Areas:		Copyright Law, Ethics & Professional Responsibility, Intellectual Property Law
Online Media Type:		Audio
Production Date:		06/05/2013 1:00 PM EDT
Level:		Basic
Category:		Standard
Duration:		1 Hours, 0 Minutes
Online Format:		Live

             The New York Law Journal called Dowd’s Copyright Litigation Handbook “an indispensable guide and supplement to the ins and outs of copyright litigation…”.   Join us for a lively session on a hot topic.   For more information on either Dowd or Darraby book, please visit the Thomson Reuters Westlaw Store here.

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 Copyright law, fine art and navigating the courts. All practice, no theory.
Copyright Litigation Handbook (Thomson Reuters Westlaw 2012-2013) by Raymond J. Dowd