Copyright Law - Second Circuit - Will Ghost Rider Renewal Rights Come Back to Haunt Disney At Trial?

Copyrights in Characters, Literary Works, Collaborative Works, Work-for-Hire, Assignments of Copyright, Renewal of Copyrights

Gary Friedrich Enterprises LLC v. Marvel Characters, Inc., 2013 WL 2477056 (2d Cir. 2013)

 

Ghost Rider (John Blaze), Marvel Universe Wiki

 

According to plaintiff, in 1971 Gary Friedrich conceived of and wrote a synopsis of an original story featuring a flame-skulled character clad in leather on a motorcycle called Ghost Rider.  Working with Marvel, Friedrich worked with an artist to flesh out and publish a comic book based on the character. According to Marvel’s version, Friedrich merely presented Marvel with uncopyrightable ideas in 1971.  Because Marvel raised triable issues of fact, the Second Circuit remanded for a trial on the issue of ownership. Additionally, in 1978, Marvel asked Friedrich to execute a “work for hire” agreement.  The issue in this action is if Friedrich was the sole author or a joint author, then who owns the renewal rights? Did the 1978 assignment convey Friedrich’s renewal rights in the pre-existing Ghost Rider character to Marvel? The district court granted summary judgment awarding copyright ownership to Marvel.  The Second Circuit vacated and remanded for trial.  The Second Circuit characterized the operative facts governing ownership of Ghost Rider as “heavily disputed”.  The Second Circuit found the 1978 work-for-hire agreement to be ambiguous and the extrinsic evidence not to be clear as to the parties’ intent.  Additionally, the Second Circuit found Marvel’s evidence going to the statute of limitations issue to also be disputed.  Under the Copyright Act, where copyright ownership has been repudiated, a true owner generally has three years to sue.  Marvel claimed that it repudiated Friedrich’s copyright ownership claim, publicly, privately and through implied repudiation. The Second Circuit did not find Marvel’s copyright notice in the 1971 comic book to be a public repudiation of any renewal rights.  The Court found that Marvel did not expressly repudiate renewal rights until it wrote a letter in 2004, within three years of the action, making Friedrich’s claims timely.  Finally, the court found the evidence of implied repudiation to be unpersuasive.

To read Judges Winter, Chin, and Droney's decision, click 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
 

Copyright Law - Second Circuit - Is A Picture Of A House The Same Thing As A House?

Architectural Works, Architectural Works Copyright Protection Act, Pictorial Works, Copyright Infringement

Scholz Design, Inc. v. Sard Custom Homes, LLC, 691 F.3d 182 (2d Cir. 2012). 

 

Scholz Design, Inc. Springvalley A Design

 The district court dismissed a claim for copyright infringement based on copying of architectural drawings created in 1988 and 1989 pursuant to a motion under Rule 12(b)(6) of the Federal Rules of Civil Procedure.  The district court reasoned that because the drawings contained insufficient detail from which to construct a building and because the drawings pre-dated the Architectural Works Copyright Protection Act (“AWCPA”), the drawings were unprotected by copyright.  The Second Circuit reversed, finding that the drawings were original pictorial works subject to copyright and had been exactly copied and published on Defendants’ website.  Because the claim was not based on protections granted by the AWCPA but on protections in the Copyright Act generally covering pictorial works, the plaintiff had stated a valid claim.

To read Judges Leval, Sack, and Hall's decision, click 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
 

Copyright Law - Second Circuit - Is It Copyright Infringement If You Play It In Russian?

Audiovisual Works, DVD Sales, License Agreements, Multilingual Licensing, Subtitles, Copyright Infringement

Russian Entertainment Wholesale, Inc. v. Close-Up International, Inc., 2012 WL 1525080 (2d Cir. 2012). 

from: www.fromrussia.com

Where licensee had licensed “Russian language only” or “English language only” rights to distribute Russian language films in the United States, could the licensor claim copyright infringements over production of DVDs with multilingual functionality?  The Second Circuit found the answer in New York contract law.  The parties could have agreed that functionality in DVDs that permitted subtitles or other languages could have been disabled, but did not agree to do so.  Additionally, facilitating viewers watching a video with an added or missing language did not rise to contributory or vicarious copyright infringement as a matter of law.

To read Judges Calabresi, Raggi and Chin's summary order and judgment, click 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
 

Copyright Law - Fourth Circuit - Throwing The Book At A Tattoo Parlor?

Registering Compilation Copyrights, Copyrights in Tattoos, Breach of License Agreement, Copyright Infringement, Damages, Statutory Damages, Statutory Damages for Compilation Copyrights, Actual Damages

Tattoo Art Incorporated v. TAT International LLC, 2012 WL 6098085 (4^th Cir. 2012)



Ancient Art Tattoo Studio by J.D. Crowe

www.tattoo-art.com

 Tattoo artist created images for tattoo stencils and inspirations for tattoo designs and licensed them to tattoo parlor.  Images were compiled in 24 books of 50 sheets, each of which contained several images.  License covered a number of years with royalty payments and minimum guarantee.  Parlor breached by failing to pay and account for royalties.  Following termination of license agreement, parlor recolored the images and continued to use, sell and reproduce the images.  The Fourth Circuit affirmed the trial court’s award of damages for breach of contract and failure to pay royalties of $18,000.  In addition, the trial court found each of the 24 books to be a “compilation copyright” because only one copyright registration was filed for each book.  Accordingly, for the period following the termination of the license agreement, the Court affirmed the trial court’s allowance 24 awards statutory damages per registered compilation for a total additional award of $480,000.  The Court rejected appellant’s argument that the Copyright Act required an election of remedies between actual and statutory damages where actual damages occurred during the license period and statutory damages covered only post-termination infringements.

To read Judges Traxler, Wilkinson, and Agee's decision, click 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
 

Copyright Law- Seventh Circuit- Does Sloppiness Invalidate A Copyright Registration?

Neri v. Monroe, 2013 WL 4046638 (7^th Cir. 2013). 



"Mendota Reflection" from www.quincyneri.com Glass sculpture by Quincy Neri

 Plaintiff sculptor hired to put large glass sculpture called “Mendota Reflection” inside the vaulted ceiling of the foyer of a condominium (which required defendant architects to remove a dome).  Architects used photographs of the installed sculpture to compete for an architectural award.  Lighting designer used photographs to promote her work on her website.  Magistrate judge dismissed action because the copyright deposit for the unpublished collection consisted of a booklet and loose photographs.  The copyright deposit was not in the court record.  The Seventh Circuit reversed, finding that the Copyright Office’s determination that the copyrighted works were “readily identifiable” constituted an agency determination that was entitled to deference and that  plaintiff had produced prima facie evidence of registration under 17 U.S.C. §410(c) by producing a valid copyright registration certificate.  On remand, the circuit court suggested that the homeowner and the architects might be considered joint authors of the photographed materials which included design elements and architecture that was not part of the sculpture.  Additionally, the Seventh Circuit suggested that consideration of the fair use doctrine might be appropriate.

Read Chief Judge Easterbrook's decision 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
 

Thomson Reuters Interviews Copyright Litigation Handbook Author Ray Dowd

Interview reprinted with permission from ePublished magazine, a Thomson Reuters publication for West Key Authors.


Author Profile- Ray Dowd Thomson Reuters Westlaw author Ray Dowd is an avid social media user and uses his blog Copyright Litigation Blog to promote his publication Copyright Litigation Handbook. In a recent interview with attorney editor they discussed how he uses social media to both increase his legal knowledge and raise his own professional profile.
Copyright Litigation Handbook came about because “the treatises out there really were more interested in the ‘why’ of copyright law, and not really the ‘how,’” Dowd said. He recalled standing in court during a trial before Judge Denny Chin, S.D.N.Y., and staring down at a stack of books on the table.  “I needed a reference book. Copyright Litigation Handbook is part of a desire to have a quick, easily accessible cheat sheet.”

The book is designed to help practitioners manage client interviews, deal with the copyright office pre-litigation, file a complaint, and navigate court proceedings. It received praise in the New York Law Journal, and Dowd is proud of his colleagues’ positive feedback as well.

The blog promotes the book, and it has topped the Google search rankings for months because Dowd identified a niche and carefully selected a name for it.  “I went out there and identified a specific need, and I simply called it something different…. Folks out there are writing about ‘copyright law’—very few are writing about ‘copyright litigation,’” he noted.

His blogging advice for authors: Use targeted, logical keywords.

Dowd also recommends Twitter for legal authors.  Don’t underestimate “the intellectual firepower of the members of the legal profession who are tweeting,” said Dowd, who belongs to a list of IP lawyers who tweet on legal issues. “You can process a massive amount of information in a matter of seconds. It’s focused on exactly what you’re looking for.” Dowd uses Twitter streams to follow certain search terms, link to documents, and receive updates that supplement his Westclips service.

 “I’m very excited about this new collaboration and the real hands-on approach I’ve gotten from my attorney editor and Thomson Reuters Westlaw’s in-house social media coordinator,” said Dowd.  “We’ve entered this world that’s a lot like the film The Matrix, where we are connected whether we like it or not.”

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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
 

Copyright Law - First Circuit - Shoud Winning Defendant Architects Who Built The Dream House Get Attorneys Fees in Copyright Infringement Cases?

T-Peg, Inc. v. Vermont Timber Works, Inc., 669 F.3d 59 (1^st Cir. 2012). 



Timbers at Sunrise from www.vermonttimberworks.com

In 1999, Stan Isbitski wanted to build his dream home in New Hampshire. T-Peg drew up a preliminary design and then worked with Stan and updated the design and registered the updated design in May 2001.  Meanwhile, Stan showed the unregistered preliminary design to Vermont Timber Works which completed its updated design in 2002.  The dream home was sold to Mr. Dupee before it was fully constructed, at which time T-Peg sued, seeking $66,000 in damages.  The district court dismissed the case finding that no reasonable jury could conclude that the designs were substantially similar.  An earlier First Circuit panel reversed and remanded to permit proof of copying.  The jury found against plaintiff.  Prevailing Defendant sought over $200,000 in attorneys fees.  The court, applying 17 U.S.C. §505 exercised its discretion to award only $35,000 in attorneys fees.  The First Circuit affirmed the trial court’s application of the discretionary factors district judges are to apply in awarding attorneys fees in copyright cases set forth in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994).

To read Judges Torruella, Thompson, and Saris' decision, click 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
 

Copyright Law - First Circuit - Can You Prove You Own That Song?

 Latin American Music Co., Inc. v. Media Power Group, Inc., 705 F.3d 34 (1^st Cir. 2013).

 

 

www.radioisla1320.com

 

Music licensing organization asserted copyright infringement claims against “Radio Isla” in Puerto Rico.  The district court found collateral estoppel on certain songs barred some claims that LAMCO had previously litigated and lost.  Other ownership claims were submitted to the jury, some after the district court had ruled on summary judgment at trial.  LAMCO lost on all claims, and appealed the district court’s referral of the ownership issue to the jury.  Because the pretrial order asserted that ownership was a contested issue at trial and because LAMCO did not object to a special jury verdict form that asked the jury to decide the question, the ownership issue was properly before the court.  On several songs, the First Circuit affirmed LAMCO’s claims for failure to prove registration.  Instead of proving copyright registration of individual songs, LAMCO’s registration certificates only reflected a recording of an assignment to rights in the songs.  Accordingly, it was held that this was insufficient proof of a registration of the copyright in the underlying works.

Click here to read Judges Torruella, Howard, and Thompson's decision.

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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
 

Copyright Law - Second Circuit - Copyrightability of a Light Fixture Revisited?

Ochre LLC v. Rockwell Architecture, Planning and Design, P.C., 2013 WL 3606123 (2d Cir. 2013)

 

Ochre's Arctic Pear "Round 45" Chandelier

 

In any suit for copyright infringement, a plaintiff must establish its ownership of a valid copyright and that the defendant copied the copyrighted work.  Copyright protection does not subsist in useful articles.  Nor can aesthetic or artistic features in works of applied art or industrial design be copyrighted if the features cannot be identified separately from the useful article.  But where a useful article incorporates a design that is “physically or conceptually separable” from an underlying useful product, the object is eligible for copyright protection.  The Second Circuit affirmed the district court’s finding that facts were not pleaded that made physical or conceptual separability plausible.  The Second Circuit noted that after two opportunities to amend the complaint, the plaintiff could not articulate why the elements of the design to which it pointed do not “reflect a merger of aesthetic and functional considerations.”

Ron Coleman of the Likelihood of Confusion blog represented the plaintiff and has posted the pleadings online.

To read the Summary Order by Judges Pooler, Lohier, Jr., and Carney, click 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
 

Copyright Law - Sixth Circuit - Is Hearsay Admissible To Prove An Ancient Work-For-Hire?

 Brumley v. Albert E. Brumley and Sons, Inc., --- F.3d --- (2013), 2013 WL 4105842 (6^th Cir. 2013).





From http://www.therestorationmovement.com/brumley.htm

Songwriter Albert Brumley began writing and composing “I’ll Fly Away” in 1928 or 1929.  In 1932, the Hartford Music Co. secured the copyright by publishing it in a songbook.  In 1947, the songwriter’s eponymous Albert E. Brumley and Sons, Inc. purchased Hartford’s assets.   Songwriter said in a 1977 interview recorded with his son that he sold the rights to “I’ll Fly Away” for three dollars.   Newspaper articles from 1977 and 1986 said that the songwriter was a salaried employee of Hartford.  The district court granted a pre-trial motion in limine and admitted the songwriter’s son’s 1977 recorded interview with his father under the residual exception to the hearsay rule.  Fed. R. Evid. 807.  Also on the motion in limine, the district court then excluded the newspaper articles, even though the articles would have been admissible under Fed. R. Evid. 803(16)(ancient documents) and Fed. R. Evid. 902(6)(self-authenticating newspapers and periodicals), applying Fed. R. Evid. 403 (relevance) because the newspaper articles did not note the basis for the author’s statements therein.  With respect to the trial court’s admission of the sound recording, the Sixth Circuit noted that this was a question of first impression. The Sixth Circuit upheld the admissibility of the recording under the residual exception to the hearsay rule and concluded that the recording had the “requisite guarantees of trustworthiness”.   With respect to the newspaper articles, the Sixth Circuit reversed.  The newspaper articles were properly admissible as self-authenticating and ancient documents under Rules 902 and 803(16) of the Federal Rules of Evidence.  The evidentiary weight of the challenged articles should have been left to the discretion of the jury.

To read Judges Keith, Martin, and Cole's decision, click 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
 

How Do They Tax A Copyright? Taxing Intangibles: Fordham Law Teams Up With the Federal Bar Association

Recent Developments in the Taxation of Intangibles
On September 18^th, 2013, the Federal Bar Association Section on Taxation in conjunction with the Fordham Law School Corporate Law Center will present a panel discussion on recent governmental proposals regarding the international taxation of multinational enterprises and intangible assets, topics that have attracted much attention in Congress and the press over the past year.  The panel will feature in-house international taxation and transfer pricing practitioners with experience in a variety of industries.  After examining some of the specific provisions of the recent Obama Administration, Congressional, and OECD proposals, the panelists will then discuss how these proposals will affect their respective industries and taxpayers in general.

Panelists:
Marc M. Lewis
VP of Tax & Insurance
Novartis Corporation
Karen Milhoua
Director - Transfer Pricing
IBM Corporation

Stanley Sherwood
International Tax Counsel
KERING
Moderator:
Brian Power
Senior Associate
Mayer Brown LLP
8:00 a.m. Registration and light breakfast
8:30 – 10:00 a.m.  Panel Discussion
CLE credit will be available through the Federal Bar Association.  Additional details to follow.

 For more information and to register:

 

www.law.fordham.edu/intangibles

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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
 

Copyright Law - First Circuit - Is A $675,000 Judgment Against A Student For Downloading and Distributing Thirty Songs Constitutionally Excessive?

SONY BMG Music Entertainment v. Tenenbaum, 719 F.3d 67 (1^st Cir. 2013). 

 

From www.sonymusic.com

 

From 1999 through 2007, Tenenbaum downloaded as many as five thousand songs. In discovery, he lied about his activities and tried to blame burglars and a foster child.  Thirty violations were proven at trial and the jury awarded Sony $22,500 for each violation (15% of the statutory maximum) for a total of $675,000.  The district court accepted the argument that the award was so excessive as to violate Tenenbaum’s right to due process, relying on a U.S. Supreme Court case holding that an excessive award of punitive damages can violate due process and reduced the award to $67,500.  Sony appealed and obtained a vacate and remand.  On remand, the district court found that the award did not violate due process.  Tenenbaum appealed.  On this appeal, the First Circuit found that an award of statutory, as opposed to punitive damages, violates due process only “where the penalty prescribed is so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.”  Three key factors are to be considered in determining whether an award is constitutionally excessive.  First, the degree of reprehensibility of the defendant’s conduct; Second, the ratio of the punitive award to the actual or potential harm suffered by the plaintiff; and Third, the disparity between the punitive award issued by the jury and the civil or criminal penalties authorized in comparable cases.  The First Circuit applied Supreme Court precedent that permits Congress to link statutory damages to the “public wrong” that the statute was designed to address and rejected the district court’s linking of statutory damages to actual damages, particularly given the difficulty of proving actual damages in a copyright infringement case.  Accordingly, the award of $675,000 was held to be constitutionally permissible.

To read Judges Lynch, Torruella, and Howard's decision, click 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
 

Top 50 New York Law Blogs of All Time?

According to Justia's Blawg Directory the top 25 Most Popular New York Law Blogs of all time are:

1. Real Estate Law Blog
2. New York Supreme Court Criminal Term Library
3. New York Public Personnel Law
4. New York Attorney Malpractice Blog
5. Copyright Litigation Blog
6. Criminal Law Library Blog
7. Clancco: Art & Law
8. ERISA Lawyer Blog
9. New York Law Notes
10. Coverage Counsel
11. Sui Generis-- a New York Law Blog
12. New York Personal Injury Law Blog
13. CFTC Law Blog
14. The Insurance and Reinsurance Report
15. Securities Law Blog
16. NY Medical Malpractice Video Tutorials
17. NYInjuryLawBlog.com
18. New York Criminal Lawyer Blog
19. Food and Agriculture Law Blog
20. UB Law Library Blog
21. LoTempio Law Blog
22. Quitam Help
23. Restaurant Worker News Blog
24. New York Business Divorce
25. New York Personal Injury Lawyer Blog 24/7
26. IP In Brief
27. New York Criminal Lawyer Blog
28. Business Blog
29. The Immigration News Blog
30. Jackson on Consumer Class Actions and Mass Torts Blawg
31. New York Employment Lawyer Blog
32. Lennyesq
33. Wait A Second!
34. NY Divorce Attorney Blog
35. Matthew Kolken on Deportation and Removal
36. Culture Forum Blog
37. Disability Insurance Lawyer Blog
38. Central New York Injury Lawyer Blog
39. New York Law Thoughts
40. New York Legal Update
41. New York City Criminal Defense Blog
42. New York Civil Law
43. Health Law Attorney Blog
44. New York Employment Attorneys Blog
45. New York Court Watcher
46. New York Injury Talk Blog
47. New York Real Estate Lawyers Blog
48. Brain Injury Lawyer Blog
49. Long Island Bankruptcy Blog
50New York Real Estate Lawyers Blog

Thanks to all of you who have helped to put Copyright Litigation Blog at #5 on the list. To follow on Twitter, please go to @raydowd

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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
 
New York Personal Injury Lawyer Blog 24/7

Copyright Law - Second Circuit - Are Google's Book Snippets Fair Use?

Authors Guild, Inc. v. Google, Inc., 2013 WL 3286232 (2d Cir. 2013). 

 

https://books.google.com

 

The Authors Guild and several individual authors sued Google for its “Google Books” tool.  The Google Books tool was developed by copying millions of books without authorization of the copyright owners and displaying “snippets” of the books to persons searching the internet.  The district judge certified a proposed class of copyright owners pursuant to Rule 23.1 of the Federal Rules of Civil Procedure.  Google appealed.  On this appeal, the Second Circuit vacated and remanded for a consideration of Google’s defense of fair use.  Google persuaded the Second Circuit that a fair use analysis would inform and perhaps moot the Court’s consideration of class certification issues including those relating to the commonality of plaintiff’s injuries, the typicality of their claims, and the predominance of common questions of law or fact.

To read Judges Leval, Cabranes, and Parker's decision, click 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