Case Comments
| Jurisdiction | United States,Federal |
| Author | Lowell Anderson |
| Publication year | 2014 |
| Citation | Vol. 39 No. 4 |
Lowell Anderson
Stetina Brunda Garred & Brucker
This suit alleges that the NCAA restrains competition by preventing Division I schools from offering recruits a portion of revenue from football and basketball broadcasting and videogame licenses in the college education market and the group licensing market. The NCAA's proposed justifications of protecting amateurism, promoting balance among teams, integrating education and athletics raised fact issues for trial. But supporting women's sports was not justified and dismissed on summary judgment. Also, "taken together, Zacchini and Wisconsin Interscholastic make clear that the First Amendment does not create a right to broadcast an entire athletic performance without first obtaining a license or consent from all of the parties who hold valid ownership rights in that performance." The "broadcast of entire Division I football and basketball games do not constitute commercial speech." These two cases also "make clear that the First Amendment does not bar Division 1 student-athletes from selling group licenses to use their names, images, and likenesses in live or recorded broadcasts of entire college football and basketball games." The case is proceeding toward trial. In re NCAA Student-Athlete Name & Likeness Licensing Litig, 111 USP2d 1339 (N.D. Cal. 2014).
The copyright in 46 Sherlock Holmes stories and 4 novels published before 1923 have expired, while copyright remains in 10 later-published stories. "When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow-on authors...." The 10 remaining copyrighted stories were derivative of the earlier ones so only original elements added in the later stories remain protected. Summary judgment of non-infringement was affirmed. Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496, 111 U.S.P.Q.2d 1065 (7th Cir. 2014).
A special master's report comparing software programs must document his application of each step of the abstraction-filtration-comparison test and failure to do so here resulted in vacating the court's decision relying on that report. Copying alone is insufficient as the copied elements must also be protected by copyright. The case was remanded. Paycom Payroll, LLC v. Richison, 758 F.3d 1198, 111 U.S.P.Q.2d 1472 (10th Cir. 2014).
A DJ Plaintiff obtained a judgment on the pleadings that its film Effie did not infringe a copyrighted screenplay, which was affirmed on appeal as being "without merit." The court awarded about $499,000 in attorney fees. The motion was filed 14 days late but with a time extension that the court granted. Effie Film, LLC v. Murphy, 111 U.S.P.Q.2d 1819 (S.D.N.Y. 2014).
"[T]he creation of a full-text searchable database is a quintessentially transformative use." A full-text, searchable database requires copying all of the work as needed for the limited purposes of word searching, presenting snippets of the search results and preserving the work. Also, "the doctrine of fair use allows the Libraries to provide full digital access to copyrighted works to their print-disabled patrons." Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 111 U.S.P.Q.2d 1001 (2d Cir. 2014).
Claims of co-ownership accrue when notice of repudiation is communicated to the claimant and are time barred after three years. The Supreme Court Petrella decision involved an infringement claim rather than an ownership claim. A claim of copyright ownership was dismissed on summary judgment as time barred. Sanchez v. Hacienda Records & Recording Studio, Inc., 111 USPQ2d 1892 (S.D. Tx. 2014).
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While copyright does not protect short phrases, a recorded, two word snippet of "get down" from a Richard Pryor song had sufficient originality to warrant copyright protection, and at the motion to dismiss stage had sufficient substantiality to deny the motion to dismiss. Pryor v. Warner/Chappell Music, Inc., 111 U.S.P.Q.2d 1221 (C.D. Cal. 2014).
Plaintiff failed to plead how a defendant knew or had reason to know that a song included an unauthorized, infringing sample of a sound recording as required for contributory infringement. Having had one prior opportunity to cure the defect by amended pleadings, the complaint was dismissed with prejudice. Pryor v. Warner/Chappell Music, Inc., 111 U.S.P.Q.2d 1221 (C.D. Cal. 2014).
Alleged copyright rights in "letuce turnip the beet" on shirts were mere rearrangements of a short phrase and unprotectable by copyright so that insufficient facts were pled to pass the extrinsic test for substantial similarity. Leave to amend was granted. Gorski v. Gymboree Corp., 111 U.S.P.Q.2d 1631 (N.D. Cal. 2014).
A film is a joint work with contributions by different authors. An actor never intending her performance to be part of a joint work is not an author and that was not at issue here. Just because an actor is not an author "doesn't mean she doesn't have a copyright interest in her own performance within the film." "Nothing in the Copyright Act suggests that a copyright interest in a creative contribution to a work simply disappears because the contributor doesn't qualify as a joint author of the entire work." An actor's performance, expression, body language and reactions have the minimal originality required for protection. While a scripted performance is a derivative work, the actor has an implied license for that derivative performance so the actor's separate performance is copyrightable. There was no work for hire agreement and the actor was hired for three days so the performance was not a work for hire. Any implied license was exceeded when the actor's performance was procured by lies as to the nature of the anti-Muslim film. Threats of personal harm established irreparable injury. The refusal to issue a preliminary injunction was again reversed as an abuse of discretion in this amended decision. Garcia v. Google, Inc., 111 U.S.P.Q.2d 1748 (9th Cir. 2014).
"When an original work contains many un-protected elements, however, a close similarity between it and a copy may prove only copying, not wrongful copying. This is because the similarity may derive only from these unprotected elements." In architectural drawings, layout efficiency, design features common to building styles and topography depictions are unprotectable. A summary judgment finding of no infringement was affirmed. The case was remanded for findings on a fee award for filing several amended complaints naming about 90 parties. Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 111 U.S.P.Q.2d 1023 (2d Cir. 2014).
"[T]he Copyright Act does not permit copyright holders to choose third parties to bring suit on their behalf" Several authors' associations thus lacked standing to challenge a trust that scans university book collections to create a digital library and to challenge Michigan's Orphan Works Program. Also, as the orphan works project was abandoned, the procedures for copying and use could change so that use was not ripe for adjudication. The dismissal of the associations was affirmed. Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 111 U.S.P.Q.2d 1001 (2d Cir. 2014).
In cases involving supplemental jurisdiction the statute of limitations is "tolled while the claim is pending and for a period of 30 days after it is dismissed unless state law provides for a longer tolling period." 28 U.S.C. § 1367(d). That tolls the expiration of the limitations period not the running of the limitations period so that if the limitations period expires during federal litigation and the claim is not resolved then a timely action must be filed in state court within 30 days after dismissal of the federal claim. City of Los Angeles v. County of Kern, 59 Cal.4th 618, 174 Cal.Rptr.3d 67 (2014).
"[M]ediators are required to disclose a potential conflict whenever there are facts and circumstances that 'could reasonably be seen as raising a question about the mediator's impartiality.'" Here a potential conflict arising from prior dealings with one law firm involved in the litigation was reviewed on the same standards as a judge's conflict under Liljeberg. No recusal was required. CEATS, Inc. v. Cont'l Airlines, Inc., 755 F.3d 1356 111 U.S.P.Q.2d 1479 (Fed. Cir. 2014).
Federal statutes may grant any party the right to file an inter parties reexamination and appeal the PTAB decision under 35 U.S.C. § 311-318, but the requestor must have Article III standing to appeal to a federal court. "To be clear, although Article III standing is not necessarily a requirement to appear before an administrative agency, once a party seeks review in a federal court, 'the constitutional requirement that it have standing kicks in.'" Here, a watchdog group had no embryonic stem cell research and lacked standing to appeal the PTAB decision affirming the validity of the patent claims. In this case, the estoppel provisions do not constitute an injury in fact for Article III purposes as the requestor is engaged in no activity giving rise to risk of infringement. Consumer Watchdog v. Wisconsin Alumni Res. Found., 753 F.3d 1258, 111 U.S.P.Q.2d 1241 (Fed. Cir. 2014).
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The PTAB denied five IPR requests and because 35 U.S.C. § 314(d) precludes appeal of the decision to institute an IPR, the requestor appealed to the district court in Virginia. The court dismissed the appeal for lack of jurisdiction. Dominion Dealer Solns., LLC v. Lee, 111 U.S.P.Q.2d 1400 (E.D. Va. 2014).
The appeal of an injunction that was modified on a prior remand and a civil contempt order for violating that injunction were not final when the PTO completed an IPR invalidating...
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