Case Comments
| Publication year | 2018 |
| Author | Lowell Anderson |
Lowell Anderson
Stetina Brunda Garred & Brucker
Sherman Act monopolization and attempted monopolizations claims have a four-year statute of limitations which may be tolled by a continuing conspiracy to violate the antitrust laws and for which the party asserting the claim has the burden of proof. Defendant failed to make a sufficient showing of a continuing conspiracy to avoid summary judgment so dismissal of the antitrust claims was affirmed. A jury finding that the patents were not proven invalid was also affirmed. XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 127 U.S.P.Q2d 1084 (Fed. Cir. 2018).
The CRRA. grants the artist of "a work of fine art" (original painting, sculpture, drawing or original glasswork) made by a U.S. citizen or a California resident, the unwaivable right to 5% of the proceeds of any resale of the work occurring in California during the author's life or within 20 years of the artist's death. Cal.Civ.Code § 986. The 1976 Copyright Act expressly preempts the CRRA. for any sales after the Copyright Act's effective date of Jan. 1, 1978, but not for sales before then as the 1909 Act did not preempt such state protection. The CRRA. took effect Jan. 1, 1977—exactly one year before the 1976 Act took effect. The dismissal of class action claims was affirmed for sales after Jan. 1, 1978 but vacated and remanded for sales during the one-year period discussed above. Close v. Sotheby's, Inc., ___ F.3d ___ (9th Cir. 2018).
"[P]roviding a product with 'substantial non-infringing uses' can constitute a material contribution to copyright infringement." Grokster makes clear that what matters is not simply whether the product has some or even many non-infringing uses, but whether the product is distributed with the intent to cause copyright infringement." The court did not err in refusing to instruct the jury to the contrary. But it was error to instruct the jury that liability can arise if the defendant "knew or should have known of such infringing activity." Based on the Supreme Court's identical treatment of contributory infringement in patents and copyrights, and the Restatement of Torts, the court stated: "We therefore hold that proving contributory infringement requires proof of at least willful blindness, negligence is insufficient." "[W]e have explained that copyright infringement is willful if the defendant 'recklessly disregards a copyright holder's rights." A new trial on contributory infringement was ordered. On remand, the jury instruction "should require that Cox knew of specific instances of infringement or was willfully blind to such instances." Also, "the court's willful blindness instruction should similarly require a conclusion that Cox consciously avoided learning about specific instances of infringement, not merely that Cox avoided confirming the fact that 'Cox users were infringing BG's copyrights' in general." BMG Rights Mgmt. US LLC v. Cox Commcns, Inc., 881 F.3d 293, 126 U.S.P.Q2d 1327 (4th Cir. 2018) (original emphasis).
Computer generated notices of copyright infringement sent to an ISP were not excluded as "the information contained in the notices was not hearsay because it was generated by a computer and thus was not a 'statement.'" "[T]he fact that the machine-generated notices also contained the signature of Rightscorp's CEO and an oath under penalty of perjury does not transform them into statements, since the information itselfwas not prepared or created by a human." BMG Rights Mgmt. US LLC v. Cox Commcns, Inc., 881 F.3d 293, 126 U.S.P.Q2d 1327 (4th Cir. 2018) (original emphasis).
"First, although facts are not entitled to copyright protection, factual compilations are entitled to some protection as long as there is creativity in the selection, arrangement, or coordination of the facts.... Second, the creativity that suffices to establish copyright protection in factual compilations is minimal.... Third, such compilations of factual information receive only limited protection. [citation omitted]. This means that a compiler may freely use the facts contained in a compilation when preparing a competing work, as long as the competing work does not exhibit the same selection or arrangement." Experian's pairing of names and addresses were entitled to limited copyright protection because of its selection in culling data from multiple sources and appropriately pairing names with addresses. But, for factual works it "is not enough to compare the allegedly infringing compilation with only a portion of the copyrighted work" because bodily appropriation of expression or unauthorized use of substantially the entire item must occur. Experian's entire database was not introduced into evidence so there was insufficient evidence for bodily comparison. But the accused database contained 200 million name and address parings while Experian's database contained 250 million pairings, and assuming even exact copying "the match rate would only be 80% and insufficient to establish a bodily appropriation of Experian's work." A summary judgment of no copyright infringement was affirmed. The facts were protectable as a trade secret so a dismissal of trade secret claims was reversed. Experian Information Solutions, Inc. v. SPL Nationwide Mktg. Servs., Inc., ___ F.3d ___ (9th Cir. 2018).
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"[W]e conclude that whether the court applied the correct legal standard to the fair use inquiry is a question we review de novo, whether the findings relating to any relevant historical facts were correct are questions which we review with deference, and whether the use at issue is ultimately a fair one is something we also review de novo" The jury here decided all aspects of fair use and found fair use. But in the Ninth Circuit, all findings relating to fair use, other than implied findings ofhistorical fact were only advisory. Google's use of 37 APIs from Oracle's JAVA program was not transformative because it did not fit within the uses in the preamble of17 U.S.C. § 107, the purpose of the APIs was the same as in JAVA, the expressive content of the APIs was unchanged and smartphones were not a new context for the API software. The non-transformative, commercial use went against fair use even without considering alleged bad faith copying. The amount copied was neutral and while the nature of the work favored fair use that factor is historically less significant. The effect on the potential market was significant as Google's Android was a substitute for JAVA and had a direct and widespread impact on the potential market for the original and derivative programs, thus weighing heavily against fair use. On balance, Google's use of 37 APIs was not a fair use as a matter of law so the jury finding of fair use was reversed and remanded. Oracle Am. v. Google LLC, 886 F.3d 1179, 126 U.S.P.Q2d 1228 (Fed. Cir. 2018) (applying Ninth Circuit law).
A copyright infringement case arising from a songwriting contest was dismissed with prejudice because the claims were subject to mandatory arbitration. The "Supreme Court has made clear that '[t] he touchstone of the prevailing party inquiry...[i]s the material alteration ofthe legal relationship of the parties in a manner which Congress sought to promote in the fee statute." The legal relationship of the parties was not affected by sending the case to arbitration so an award of attorneys' fees was reversed. Cortes-Ramos v. Sony Corp. of Am., 889 F.3d 24, 126 U.S.P.Q2d 1583 (1st Cir. 2018).
Plaintiff distributed its "Eureka Math" materials by selling books and through a "public license" granting the college recipients a "worldwide, royalty-free, non-sublicensable, non-exclusive, irrevocable license to...reproduce and Share the [Materials] in whole or in part, for Non-Commercial purposes only" FedEx was sued because it copied the materials at the colleges' request and sold the copies to students. The license to "reproduce and Share" encompassed using third party agents to perform the authorized reproduction and sharing. A dismissal for failure to state a claim was affirmed. Great Minds v. FedEx Office & Print Servs, Inc. 186 F.3d 91, 126 U.S.P.Q.2d 1395 (2d Cir. 2018).
In addition to denying a motion for rehearing in banc, the court issued a revised opinion in which all references to the inverse ratio rule were omitted. Under that rule, the higher degree of access the lower the degree of similarity was required. The court reaffirmed that a copyright in musical compositions like the song "Got to Give It Up" are entitled to the substantially similarity standard for evaluating infringement, rather than the virtual identity required to prove infringement for works with "thin" protection. The court accepted, without deciding, that the 1909 Act limited protection to the sheet music of the deposit copy rather than the studio sound recording of that music. A jury instruction on subconscious copying was proper as it required copying and access for that copying. "In short, there is no scienter requirement." A related instruction properly required both substantial extrinsic and intrinsic similarity with the accused song, "Blurred Lines" song and clarified that plaintiffs "do not have to show that each of these individual elements is substantially similar, but rather that there is enough similarity between a work ofthe Gaye Parties and an allegedly infringing work of the Thicke Parties to comprise a substantial amount." The jury finding of substantial similarity, based only on the deposit copy's music, was not against the clear weight of the evidence. Judge Nguyen dissented, finding differences in melody, harmony and rhythm prevented objective similarity. Williams v. Gaye, ___ F.3d ___ (9th Cir. 2018) (amended after denial of en banc hearing).
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