Case Comments
| Citation | Vol. 39 No. 1 |
| Publication year | 2014 |
| Author | Lowell Anderson |
Lowell Anderson
Stetina Brunda Garred & Brucker
The statute requires the author's name and the work's title be included in a registration. 17 U.S.C. § 409(2). Collective works do not require that information on the collected works but limit who can sue for what. The U.S. has filed amicus briefs "arguing that the Copyright Office has permissibly interpreted Section 409 not to require a registration application to identify the author of all claimed component works and that courts should defer to that interpretation." The Fourth Circuit has adopted that view as has an unreported N.D. California case and this district court. A motion to dismiss the complaint for lack of a valid registration under 17 U.S.C. § 411(a) was denied. Panoramic Stock Images, Ltd. v. McGraw-Hill Cos., 108 U.S.P.Q2d 1064 (N.D. Ill. 2013).
Jury instructions requiring proof that a defendant "knew that those actions may infringe the copyrights" were deficient as criminal copyright infringement under § 506(a) requires a defendant to have known the copying was illegal (or reckless or pursued with willful blindness). But the overall instructions did not constitute plain error. Restitution reflects the victim's actual losses, not the defendant's gain. That a consumer purchased counterfeit Adobe software at a greatly reduced price is not sufficient to establish the consumer would have purchased an authentic copy at full price. The conviction was affirmed but remanded for recalculation of restitution. United States v. Anderson, 109 U.S.P.Q2d 1054 (9th Cir. 2013).
Willfulness for criminal copyright infringement under 17 U.S.C. § 506(a)(1)(A) requires that the government prove that the defendant acted with a specific intent to violate someone's copyright or to commit copyright infringement where the copying is unlawful. Having good reason to know copyright rights were violated is not the same as actually knowing it. A criminal copyright conviction was vacated. United States v. Liu, 731 F.3d 982, 108 U.S.P.Q2d 1371 (9th Cir. 2013).
Criminal copyright infringement has a five-year limitations period under 17 U.S.C. § 507(a). A 2006 indictment and a 2010 superseding indictment alleged violations ending in 2003. An indictment tolls the limitations period, but a superseding indictment that broadens or substantially amends the charges does not toll the limitations period as to the new or broadened charges. The superseding indictment clearly added some copyrighted works beyond the limitations period and others were unclear. Failure to raise this defense showed counsel was constitutionally ineffective, warranting dismissal on the count clearly barred by the limitations period. United States v. Liu, 731 F.3d 982, 108 U.S.P.Q2d 1371 (9th Cir. 2013).
Google Books' scanning of entire copyrighted works to create digital, searchable works is highly transformative and does not supersede the sale of books because the digitized works are given to libraries but not sold and not used to read them. Most scanned works are also non-fiction and available to the public. While the entire text is searchable only limited portions are displayed in response to a search. The digitized copying enhances book sales, increases the book value and provides a public service. A summary judgment was granted finding that the digitizing was a fair use. Authors Guild, Inc. v. Google, Inc., 108 U.S.P.Q2d 1674 (S.D.N.Y. 2013).
A copyrighted photo of the mayor of Wisconsin was put on a T-shirt, in neon green on a black background with the phrase "Sorry for Partying." It was found to be a fair use of the photographer's copyright on summary judgment. First Amendment political satire issues were not reached. Kienitz v. Sconnie Nation LLC, 108 U.S.P.Q2d 1704 (W.D. Wis. 2013).
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The copying and distribution of an unpublished doctoral thesis was not a fair use. While non-commercial, the entire work was copied, the work was unpublished and thus not a fair use at common law, and publication barred plaintiff from using the work as a thesis at another university. Diversey v. Schmidly, 738 F.3d 1196, 109 U.S.P.Q.2d 1161 (10th Cir. 2013).
A court trail found misstatements that plaintiff owned rights when it filed its copyright application were willful because rights were not assigned until afterward. The invalidity of the registration was reversed and remanded because the court did not obtain the Copyright Office's "advisory" opinion on whether the misstatement would result in refusal to register the copyright per 17 U.S.C. § 411(b)(2). Inaccurate material information in the application and that the inaccurate information was knowingly included should both be established before the court seeks the Office's advisory opinion. The case was remanded but an award of attorney fees to defendants was affirmed. DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616,108 U.S.P.Q2d 1207 (7th Cir. 2013).
A delay of 6.5 years after plaintiff (not defendant) knew of the infringement gives rise to a rebuttable presumption of prejudice. The first instance of a series of related acts triggers the running of laches as to later acts containing the same infringing conduct. Lack of sophistication and money did not rebut the presumption. Also, the investment of time, effort and money in promoting the accused song Big Pimpin,' established expectations based prejudice and the death of witnesses established evidentiary prejudice. Summary judgment of laches limiting damages was granted. Fact issues barred a decision on prospective injunctive relief. Fahmy v. Jay-Z, 108 U.S.P.Q2d 1981 (C.D. Cal. 2013).
In the Ninth Circuit there is a fixed three-year limitations period for claims of ownership but a rolling three-year limitations period for infringement and damages. "[A]n untimely ownership claim will bar a claim for copyright infringement where the gravamen of the dispute is ownership, at least where, as here, the parties are in a close relationship." Seven Arts Filmed Entm't Ltd. v. Content Media Corp., 773 F.3d 1251, 108 U.S.P.Q2d 1557 (9th Cir. 2013).
There is a fixed three-year limitations period for infringement claims in the Tenth Circuit, as continuing wrong theory is a minority view without support in the copyright statute while laches and tolling adequately protect against delays. The plaintiff knew defendant copied his unpublished doctorate dissertation and gave it to the library more than four years before filing suit. A dismissal for failing to state a timely claim for copying was affirmed. Claims for distributing an unpublished work were timely filed as they were discovered within three years of filing suit. Diversey v. Schmidly, 738 F.3d 1196, 109 U.S.P.Q2d 1161 (10th Cir. 2013).
Five photos were published in a magazine under the 1909 Act, with copyright notice in the publisher's name. The doctrine of indivisibility made the magazine publication a publication without notice by the photographs' author, placing the photos in the public domain under the 1909 Act. Plaintiffs did not meet their burden of proving a chain of title from the magazine publisher. Summary judgment dismissal for lack of ownership was granted. Jim Marshall Photography, LLC v. John Varvatos of Calif., 109 U.S.P.Q2d 1114 (N.D. Cal. 2013).
In discovery, Plaintiff denied requests to admit that books containing its asserted photographs were compilations or collective works. Plaintiff was then barred from alleging that the books were compilations. That prevented Plaintiff from arguing that because it owned both the compilation and the preexisting photo works in the compilation, registration of the book constituted registration of the commonly owned preexisting works. Summary judgment dismissal for lack of ownership was affirmed. Jim Marshall Photography, LLC v. John Varvatos of Calif., 109 U.S.P.Q2d 1114 (N.D. Cal. 2013).
Under the "server test" personal jurisdiction is based on where the hosting computer is based not where the search engine is based. Contributory infringement and vicarious liability both require direct infringement in the U.S. and foreign hosted images are not directly infringing. Claims arising from internet servers based in Russia were dismissed. For the images using servers based in the US, the thumbnail images were a transformative, fair use, that were not used in connection with defendant's advertising and the cell phone market is hypothetical at this time. Perfect 10, Inc. v. Yandex N.V., 107 U.S.P.Q2d 2123 (N.D. Cal. 2013).
No plausible facts established the defendant music company had access to the copyrighted song that was sent to radio stations. Bald speculation of access is insufficient. As the copyright and lyrics were attached to the pleadings, the court could compare them to evaluate substantial similarity, which was found lacking. The pleadings failed to state a claim and were dismissed. Lyles v. Capital-EMI Music, Inc., 108 U.S.P.Q2d 2017 (S.D. Ohio 2013).
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No plausible fact based allegations established personal liability of corporate officers, or fraudulent concealment under the particularity of Rule 9(b). Allegations on information and belief were insufficient as the information was not peculiarly within the accused infringer's knowledge. Claims for personal liability and fraud were dismissed. Warren v. John Wiley & Sons, Inc., 109 U.S.P.Q2d 1041 (S.D.N.Y. 2013).
A service using a separate antenna to receive a program signal broadcast over the airway, and to optionally record the program separately for later retransmission, was a "public" performance under 17 U.S.C. § 106(4)...
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