Case Comments
| Jurisdiction | United States,Federal |
| Author | LOWELL ANDERSON |
| Publication year | 2016 |
| Citation | Vol. 41 No. 2 |
LOWELL ANDERSON
Stetina Brunda Garred & Brucker
Defendant was enjoined from providing video on demand equipment and services using remote servers with separate transmitters for each subscriber. After the Supreme Court decision in ABC, Inc. v. Aereo, 134 S.Ct. 2498 (2014), the Defendant announced it qualified for a compulsory license under 17 U.S.C. § 111 and began providing equipment contrary to the injunction. The Defendant neither immediately applied for such license nor sought leave of court to modify or clarify the injunction. A $10,000 per day contempt award to ensure compliance with the injunction was affirmed, as was an award of attorney's fees under a settlement agreement. CBS Broad., Inc. v. Film-On.com, Inc., 814 F.3d 91, 117 U.S.P.Q.2d 1685 (2d Cir. 2016).
A traffic information database contained factual information not subject to copyright protection, including fictional additions seeded to detect copying. Copyright protection does not extend to individual facts, actual or fictitious. The location of where to indicate traffic conditions on a map was dictated by the functional nature of the information and not protectable. The arrangement and organization was not alleged to be original and the protection accorded a compilation of facts is thin. Plaintiff failed to show a protectable interest in any portion of the database allegedly copied, but did allege access via the seeded fictional inserts. A Rule 12(b)(6) dismissal was granted with leave to amend. PhantomALERT, Inc. v. Google, Inc., 117 U.S.P.Q.2d 1433 (N.D. Cal. 1433).
The play "Hand to God" used 67 seconds of Abbot and Costello's "Who's on First?" routine. The creative nature of the work was offset by the highly transformative use in the play. The play did not affect the potential market for the 1940 movie which first published and registered a derivative version of the earlier performed but unpublished radio routine. The highly transformative use by puppets in a different setting strongly favored and resulted in a finding of fair use on a motion to dismiss. As the registration prevents common law copyright from coexisting, claims for common law copyright were also dismissed. TCA Television Corp. v. McCollum, 117 U.S.P.Q.2d 1452 (S.D.N.Y. 2015).
A prevailing party need not be a completely prevailing party as the defendant here lost a counterclaim but was awarded fees for successfully defending a copyright infringement claim. Plaintiff's claim was not frivolous but was based on copying of concepts and ideas in a building design and sought damages of $259 million even though its alleged actual damages were only $400,000. The Fifth, Sixth and Seventh Circuits have reportedly adopted a presumption in favor of awarding fees to prevailing defendants. Fees of $841,872.96 and $792,796 were awarded to two separate defendants, after detailed deductions arising in part because the fees charged by Finnegan attorneys greatly exceeded comparable rates and because of poor documentation. Costs for videotaped depositions were not awarded as there was no showing why videography was necessary rather than simply convenient. Read the case if you have any fee motion. Humphreys & Partners Architects, LP v. Lessard Designs, Inc., 117 U.S.P.Q.2d 1669 (E.D. Va. 2015).
Once an accused copyright infringer shows lawful acquisition of the accused work the burden shifts to Plaintiff to prove a license rather than sale. Defendant provided sales invoices for its Adobe software. "Adobe's effort to substitute general testimony and generic licensing templates in lieu of the actual licensing agreements does not withstand scrutiny under Vernor. Under Vernor, the precise terms of any agreement matter as to whether it is an agreement to license or to sell; the title of the agreement is not dispositive. And here, in the end, there is no admissible evidence that Adobe 'significantly restrict[ed] the user's ability to transfer the software' at issue here." Summary judgment of no infringement was affirmed where defendant purchased academic versions of Adobe software and resold them online. Adobe Sys., Inc. v. Christenson, 809 F.3d 1071, 117 U.S.P.Q.2d 1257 (9th Cir. 2015).
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Copyright Office opinions and decisions are not entitled to Chevron deference, but are entitled to a lower level of deference under Skid-more where they are considered to the extent they are found reasonable and persuasive. The Copyright Office Compendium and plaintiff agreed the "look and feel" of a website is not copyrightable subject matter and the Office typically refuses to register claims based solely on Cascading Style Sheets (CSS). Plaintiff's registered hypertext markup language (HTML) for the website which was registered, was presumed copyrightable and was found to contain copyrightable subject matter even though it included CSS which were generated by HTML. Dismissal was granted with leave to amend and define the allegedly copied HTML portions. Media.net Adver. FZ-LLC v. NetSeer, Inc., 117 U.S.P.Q.2d 1701 (N.D. Cal. 2016).
Courts have routinely accepted the argument that evidence of infringement gathered by a copyright owner's investigative agent can be used to establish infringement. Plaintiff downloaded 100,000 full copies of its works raising a factual issue of direct infringement by 'distribution' of copyrighted works by Cox and users. The evidence of these downloads and the identification of 2.5 million IP addresses of Cox customers downloading or uploading copyrighted works was sufficient to raise a fact issue avoiding summary judgment of no infringement. Cox's contractual right to terminate infringers and failure to do so raised a factual issue on willful blindness. Summary judgment dismissal of defendant Cox was denied. BMG Rights Mgmt.(US) LLC v. Cox Commc'ns, Inc., 117 U.S.P.Q.2d 1359 (E.D. Va. 2015).
The chain of title need only run back to the original claimant, not to the author. Registrations and relevant merger and acquisition agreements established sufficient evidence of ownership of copyrights in over 1,400 musical composition copyrights to avoid summary judgment dismissal for lack of ownership. BMG Rights Mgmt.(US) LLC v. Cox Commc'ns, Inc., 117 U.S.P.Q.2d 1359 (E.D. Va. 2015).
Plaintiff allegedly bought an exclusive license to "I Get Money" from Curtis Jackson (aka '50 Cent'). Suit was filed more than three years after 50 Cent denied the license and released the song. The alleged exclusive license of a copyright right was treated the same as an ownership claim and was barred by the three year limitations period. The dismissal was affirmed. Simmons v. Stanberry, 810 F.3d 114, 117 U.S.P.Q.2d 1577 (2d Cir. 2016).
An independent contractor effectively disabled a mobile payment application for ordering food. The complaint alleged that a partially oral, partially written work-for-hire agreement transferred ownership of source code for the mobile app with sufficient mutuality to avoid the statute of frauds. The complaint adequately alleged a third party aided and abetted the software developer to breach the developer's fiduciary duty to restore operations using the source code. No facts were alleged to show personal knowledge of customer agreements so claims for interference with contract and prospective business advantage were dismissed with leave to amend. Some conspiracy claims were dismissed for failure to identify which alleged torts were the predicate acts for the conspiracy. A state court order to preserve documents was dismissed when plaintiff dismissed that state court lawsuit after removal to federal court, so there was no jurisdiction for the federal court to enforce the state court order after removal even if documents were destroyed. Swipe & Bite, Inc. v. Chow, 117 U.S.P.Q.2d 1504 (N.D. Cal. 2015).
Alleging artworks are "fine art, creations of pure imagination" does not establish protectability as the works contain standard geometric forms such as circles, lines and rays and the pleadings allege copying the unidentified "core" or plaintiff's works. To the extent the core involves style or elements of ideas the works are not protected. To the extent the "total concept and feel" is allegedly copied the description "is tantamount to a set of unprotectable concepts or methods over which there can be no copyright monopoly conferred." Dismissal on the pleadings was granted. Hayuk v. Starbucks Corp., 117 U.S.P.Q.2d 1938 (S.D.N.Y. 2016).
Claims for interference were predicated upon copying plaintiff's copyrighted HTML code and were preempted. Claims for unfair competition under § 17200 based on interference were also preempted. Media.net Adver. FZ-LLC v. NetSeer, Inc., 117 U.S.P.Q.2d 1701 (N.D. Cal. 2016).
A registration is not a jurisdictional prerequisite for a copyright infringement action, but it is an element of an infringement claim. The court refused to dismiss an infringement claim provided the plaintiff met the registration requirement within a reasonable time. Wieczorek v. Nat'l Catholic Prayer Breakfast, 117 U.S.P.Q.2d 1243 (D. Md. 2016).
A registration of 8,000 photos taken over a 17 year period was not a single work publication as the photos were not published for the first time together as required by 37 C.F.R. § 202.3(b)(4)(i)(A). The photos were not registerable as an "aggregate compilation" as there was nothing creative about the organization of photos and the compilation portion of the registration was left blank. Summary judgment dismissal for lack of a valid registration was granted. Senisi v. John Wiley &Sons, Inc., 117 U.S.P.Q.2d 1305 (S.D.N.Y. 2015).
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