Music Copyrights,Access, Substantial Similarity, Song Lyrics,
Motion to Dismiss Peters v. Kanye West, 692 F.3d 629 (7th Circuit August 20, 2012).Vince P. gave song “Stronger” quoting
Nietzsche to Joe Monopoly.Monopoly
agreed to rep him if a label financed.Deal fell through.Less than a
year later Kanye West comes out with megahit titled “Stronger” quoting
Nietzsche.Joe Monopoly is a producer on
the album.District court finds the
songs not similar, affirms the district court’s dismissal following a Rule
12(b)(6) motion to dismiss.Lyrics in
opinion, good discussion of access.
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Purchase Copyright Litigation Handbook 2012-2013 by Raymond J. Dowd from West here
Personal Jurisdiction, Copyright
Infringement, Motion to Dismiss
Washington Shoe Company v. A-Z Sporting Goods
Inc., 2012 WL 6582345 (9th
Circuit December 17, 2012).Long-time
Arkansas client of Washington Shoe Co. buys Chinese knockoffs of Washington
Shoe products.Sells in retail store in
Arkansas next to real Washington Shoe products.Get cease and desist letter.Sells knockoffs to thrift store.Washington Shoe brings suit in Washington State.District court dismisses for lack of personal
jurisdiction.Ninth Circuit
reverses.Holds that intentional tort is
expressly aimed at copyright holder in Washington State.This is part of a trend of dramatically
expanding the concept of personal jurisdiction over defendants in copyright
infringement cases who satisfy none of the traditional criteria for long-arm
jurisdiction.
www.dunnington.com
Purchase Copyright Litigation Handbook 2012-2013 by Raymond J. Dowd from West here
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Creations USA Inc. v. Hilton Worldwide, Inc., 2012 WL 2687957 (2d Cir. July 9, 2012)(unpublished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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Purchase Copyright Litigation Handbook 2012-2013 by Raymond J. Dowd from West here
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.
www.dunnington.com
Purchase Copyright Litigation Handbook 2012-2013 by Raymond J. Dowd from West here
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 (7th Cir. June 7, 2012).PlaintiffBrownmark 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.
www.dunnington.com
Purchase Copyright Litigation Handbook 2012-2013 by Raymond J. Dowd from West here
In Syrus v. Bennett, the court of appeals for the 10th Circuit considered the issue of whether a man who claimed copyright in the short phrases "Go Thunder" and "Let's Go Thunder" had stated a claim. Referring to the Feist requirement of originality and copyright's requirement that copyright protection extends only to works that "are the fruits of intellectual labor" the court found that the phrases plaintiff claimed were infringed were not copyrightable. Adding "Let's Go" or "Go" which are common cheers to the team name required no "intellectual labor".
The plaintiff claimed that he'd written a song with these phrases and distributed the song to the team in response to a team request for song submissions. The plaintiff pro se did not allege any copying. Plaintiff's suit was dismissed on a motion to dismiss pursuant to Rule 12(b)(6) of the federal rules of civil procedure. The decision is unpublished, embedded below.
"...it is virtually impossible for violations to go undetected on Wall Street today..." Bernie Madoff, in the 2007 YouTube interview I posted below. Watching the video is really like a punch in the stomach, and I didn't even lose any money.
Another Bernie Madoff video was at issue in Stadt v. Fox News Network, 2010 WL 2540957 (S.D.N.Y. June 22, 2010)(SAS). Stadt had a 2003 copyrighted video of Madoff on vacation. He licensed it to Fox for a period to be labelled as a "Fox Business Exclusive" for $10K. After the license ran out, he caught Fox still using it and licensed it for an additional $50K. After that license ran out, he caught Fox using it again. After he contacted them, they stopped using it, but wouldn't tell him how many times it was downloaded after the license expired or give any information on how much money they'd made from it. He sued for copyright infringement and the following seven claims.
1. breach of contract;
2. conversion;
3. breach of fiduciary duty and an accounting;
4. deceptive trade practices in violation of section 349 of New York General Business Law
6. unjust enrichment; and
7. unfair competition
Fox moved to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, raising the issue of preemption. "Preemption" comes about because the Copyright Act says basically that the Copyright Act exclusively governs copyrights in 17 USC 301. So if the Copyright Act governs copyrights, how can state law govern copyrights?
State law comes up when someone enters into a contract for the sale (assignment) or rent (license) of copyrightable subject matter. So a person's act may be both a copyright infringement AND a breach of contract. Sorting out which state law claims are "equivalent" to copyright infringement claims sounds easy, but in fact requires a careful, fact-based analysis.
Practice Tip: Where a plaintiff has thrown in the kitchen sink in a copyright pleading and realizes that certain state law claims may not be worth fighting for, prior to any answer or summary judgement motion being filed, the plaintiff may simply file a notice of dismissal without prejudice under Rule 41(a) of the Federal Rules of Civil Procedure. This is a good idea in copyright litigations because at the end of the day, if one forces a court to resolve weak claims against you, it may affect/reduce an ultimate assessment of attorneys fees. An alternative, if you see that your Complaint failed to plead necessary elements (your adversary's motion to dismiss is likely to point this out to you, is to cross-move for leave to amend pursuant to Rule 15 of the Federal Rules of Civil Procedure with a Proposed Amended Complaint attached to your papers.
In Stadt v. Fox Network, the district court, Judge Scheindlin considered whether each claim was preempted by copyright or whether Stadt had failed to state a claim:
The Copyright Act expressly provides for preemption of state law.FN29 In Briarpatch Ltd. v. Phoenix Pictures, Inc., the Second Circuit held;
FN29. See 17 U.S.C. § 301(a).
The Copyright Act exclusively governs a claim when: (1) the particular work to which the claim is being applied falls within the type of works protected by the Copyright Act ..., and (2) the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights already protected by copyright law.... The first prong of this test is called the “subject matter requirement,” and the second prong is called the “general scope requirement.” ... The general scope requirement is satisfied only when the state-created right may be abridged by an act that would, by itself, infringe one of the exclusive rights provided by federal copyright law.... [T]he state law claim must not include any extra elements that make it qualitatively different from a copyright infringement claim.... To determine whether a claim is qualitatively different, we look at “what [the] plaintiff seeks to protect, the theories in which the matter is thought to be protected and the rights sought to be enforced.” FN30
The court takes a “restrictive view” of what qualifies as an extra element sufficient to shield the claim from copyright preemption.FN31 Nevertheless, “a state law claim is qualitatively different if it requires such elements as breach of fiduciary duty, or possession and control of chattels.” FN32 FN31. Id. at 306. FN32. Id.
Although the court looked only to 17 USC 301(a), let me quote both 301(a) and (b) for you, with screaming loud bold to make reading the statute easier, full statute here:
§ 301. Preemption with respect to other laws:
(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.
(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to — (1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or (2) any cause of action arising from undertakings commenced before January 1, 1978; (3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106; or (4) State and local landmarks, historic preservation, zoning, or building codes, relating to architectural works protected under section 102(a)(8).
The Judge's conclusion:
IV. CONCLUSION
For the reasons set forth above, Fox's motion to dismiss the breach of contract claim is denied. Fox's motion to dismiss the breach of fiduciary duty and an accounting, section 349, unjust enrichment, and unfair competition claims is granted. These claims are dismissed with prejudice. Fox's motion to dismiss the conversion claim is granted, and this claim is dismissed with leave to replead.
Stadt v. Fox News Network LLC, 2010 WL 2540957, 7 (S.D.N.Y. 2010).
Conversion under New York State law requires a demand for the return of a chattel, and the holder's refusal to return the chattel. The court found that plaintiff's hadn't alleged a demand or refusal, so was granted leave to replead. In copyright cases a conversion claim usually involves something like masters or high quality originals from which copies can be made that the defendant failed or refused to give back.
Chapter 10 of my Copyright Litigation Handbook is titled "Removal from State Court and Preemption". In it I discuss the preemption doctrine and how it applies in litigation involving copyrighted works.
Will plaintiff really demand the return of the Bernie Madoff video? Stay tuned.
Purchase Copyright Litigation Handbook from West here
In Peter F. Gaito Architecture, LLC v. Simone Development Corp., 2010 WL 1337225, 1 (2d Cir. April 5, 2010), the Second Circuit held for the first time that a district court may compare the registered copyrighted materials annexed to the complaint to the allegedly infringing materials, enter a finding of non-infringement as a matter of law, and throw the case out on a Rule 12(b)(6) motion for failure to state a claim.
Ordinarily the facts alleged on the face of a Rule 12(b)(6) motion are assumed to be true in the earliest stage of a litigation.
District courts within the Circuit had been throwing cases out for a while, using the Second Circuit's "good eyes and common sense" standard to determining whether any reasonable juror could find the infringing materials to be "substantially similar".
Although the court tried to limit the holding to the facts involving very dissimilar buildings, the holding is likely to have a much broader application.
