Case Comments
| Citation | Vol. 41 No. 3 |
| Publication year | 2016 |
| Author | Lowell Anderson |
Lowell Anderson
Stetina Brunda Garred & Brucker
A 1990's Madonna hit song titled "Vogue" contained one 0.23 second single horn hit physically sampled from the sound recording titled Love Break and also contained six, two horn hits lasting under a second, each of which were created from that sampled single horn hit. "We hold that the 'de minimis exception applies to infringement actions concerning copyrighted sound recordings, just as it applies to all other copyright infringement actions." "A 'use is de minimis only if the average audience would not recognize the appropriation.'" "A reasonable jury could not conclude that an average audience would recognize the appropriation of the Love Break composition" or of the sound recording as other instruments were simultaneously heard and even Plaintiff's expert erred in discerning which parts of the song were copied. 17 U.S.C. § 106(1)-(2) and 114(b) allows a sound recording to be imitated by independent fixation but the limitation of § 114(b) does not prevent a de minimis copying requirement. Contrary to Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), which set out a bright line rule making any physical copying or sampling of a sound recording an infringement. Summary judgment of non-infringement was affirmed. Judge Silverman dissented and would not create a circuit split. VMG Salsour, LLC. v. Ciccone, LEXIS 10017 (9th Cir. June 2, 2016).
"We conclude that because 17 U.S.C. § 107 created a type of non-infringing use, fair use is 'authorized by the law' and a copyright holder must consider the existence of fair use before sending a takedown notification under 512(c)." "If, however, a copyright holder forms a subjective good faith belief the allegedly infringing material does not constitute fair use, we are in no position to dispute the copyright holder's belief even if we would have reached the opposite conclusion" unless there is evidence to the contrary. "We hold the willful blindness doctrine may be used to determine whether copyright holder 'knowingly materially misrepresented' that it held a 'good faith belief' the offending activity was not a fair use." A petition for rehearing en banc was denied, the prior decision affirming a denial of summary judgment was affirmed and the case remanded. Judge Smith dissented and would find for the plaintiff as Universal's takedown procedures did not include fair use. Lenz v. Universal Music Corp., 815 F.3d 1145, 118 U.S.P.Q.2d 1157 (9th Cir. 2016).
In exercising its discretion on whether to award attorney fees, substantial weight should be given to the objective reasonableness of the losing party's position. "But the court must also give due consideration to all other circumstances relevant to granting fees; and it retains discretion, in light of those factors, to make an award even when the losing party advanced a reasonable claim or defense." "Copyright law ultimately serves the purpose of enriching the general public through access to creative work" and in doing so strikes a balance between "encouraging and rewarding authors' creations while also enabling others to build on that work." But a court may not award attorney's fees as a matter of course, and may not treat prevailing plaintiffs and prevailing defendants differently. The denial of fees was vacated and remanded for further consideration. Kirtsaeng v. John Wiley & Sons, Inc., 118 U.S.P.Q.2d 1770 (2016).
One factor in evaluating whether to award attorney fees under Fogerty is the objective reasonableness. Plaintiff sued for infringement of a sampled sound recording when the only precedent was a Sixth Circuit decision stating a bright line rule that such sampling, even if de minimis, was an infringement. Despite critiques of a Sixth Circuit precedent, "[i]t plainly is reasonable to bring a claim founded on the only circuit-court precedent to have considered the legal issue, whether or not our circuit ultimately agrees with that precedent." The district court erred as a matter of law in evaluating objective reasonableness, and in its evaluation of disputed facts and credibility, so an award of fees was remanded for reconsideration. LEXIS 10017 (9th Cir. June 2, 2016).
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"Because California law permitting contractual fee-shifting provisions does not fall within the scope of [17 U.S.C.] § 301(a) or conflict with the purpose of the Copyright Act, we determine that the Copyright Act does not preempt enforcement of the Agreement's fee-shifting provision." An award of attorney fees to a plaintiff who did not register copyrights before infringement commenced, was affirmed but the award was remanded for redetermination on the amount of fees. Ryan v. Editions Ltd. West, LEXIS 6782 (9th Cir. Jan 19, 2016).
A prior appeal and pre-litigation cease and desist letters were involved in the prosecution of a successful contributory infringement claim covered by a fee-shifting agreement, so excluding fees for those acts was error. Categorical exclusion of fees is permitted if adequately explained but here the facts and issues of the contributory infringement claim were "highly interrelated" with three other unsuccessful claims the pro rata reduction of fees by ¾ was not adequately explained. A 23% reduction for block billing failed to adequately address bills not involving block billing. Fees were properly excluded for: (1) spoliation motions where no prejudice was shown from the alleged spoliation and for (2) excluding damages from trial as a prior appeal found damages of only $1.72. An award of about $51,000 in fees of $328,000 requested, was reversed and remanded for further determination on the amount of fees. Ryan v. Editions Ltd. West, LEXIS 6782 (9th Cir. Jan 19, 2016).
Applying Seventh Circuit law the court abused its discretion in dismissing U.S. copyright infringement claims in favor of Canada on forum non conveniens grounds while retaining design patent infringement claims. The Berne Convention does not require that member countries provide remedies for extraterritorial infringing activity nor does it require Canada to apply its laws to U.S. infringements nor was there evidence any infringement occurred in Canada - although defendant was a Canadian company. Halo Creative & Design, Ltd. v. Comptoir Des Indes, Inc., 816 F.3d 1366, 118 U.S.P.Q.2d 1187 (Fed. Cir. 2016).
Incorporating part of a work into a larger work is not necessarily a transformative use, as for example, it would allow a short story to be reprinted in whole without permission in a larger collection of short stories. Thus, a jury instruction that a transformative work included the incorporation of copyrighted works as part of a broader work - was refused. Oracle Am., Inc. v. Google, Inc., 118 U.S.P.Q.2d 1561 (N.D. Cal. 2016).
Copyright claims are sufficiently pled "by alleging representative acts of infringement rather than a comprehensive listing" of episodes, film and element of a proposed short film featuring the starship Enterprise and a character from the TV series. Pleading financial benefit for vicarious infringement may be met by alleging the infringing materials act as a draw for customers and was met here because the accused work was funded on Kickstarter and Indiegogo. Information and belief allegations were sufficiently supplemented by cites to defendants materials to make the allegations plausible. Unprotectable elements may be protected in combination with each other so the court did not filter out elements at the pleading stage. The complaint alleged completion and distribution of one film scene which was sufficient for pleading purposes even though all filming was not complete. As no injunction was sought, prior restraint was not relevant. Dismissal was denied. Paramount Pictures Corp. v. Axanar Prods., Inc., 118 U.S.P.Q.2d 1600 (C.D. Cal. 2016).
"False association and its related unfair competition is the same claim as that of false designation of origin, just under a different name." As plaintiff claimed part of its Dirty Dancing movie was copied, changed and used to promote a 401K plan, its false association claim was barred by Dastar and dismissed with prejudice on a Rule 12(b) (6) motion. State court claims were preempted by copyright. A § 43(a) claim alleging likelihood of confusion asserted the same rights as raised by copyright claims in the portions of the movie that were copied and those allegations were also dismissed. Allegations that the movie's use of "Nobody puts Baby in a corner" was a trademark and likely to be confused with "Nobody puts your old 401k in a corner" (for financial services) was not covered by Dastar and not dismissed. Dilution claims based on the same alleged trademarks lacked plausible facts as to fame and were dismissed with prejudice. Lions Gate Entm't Inc. v. TD Ameritrade Servs. Co., 118 U.S.P.Q.2d 1103 (C.D. Cal. 2016).
Independent contractors submitted articles published on a website with the website operator suggesting topics and providing an image database for use with the articles. The website operator did not control the article content or post it so the safe harbor protected the website operator when an independent contractor posted an article using Plaintiff's photo rather than using one from defendant's photo database. BWP Media USA, Inc. v. Clarity Dig. Grp., LLC, 820 F.3d 1175, 118 U.S.P.Q.2d 1433(10th Cir. 2016).
"Judgments about the substantial similarities of two works are not the proper subject of lay-witness testimony." This is especially so when opinions are rendered for the work as a whole, when only part of the work is protected by copyright. A declaration by Plaintiff's officer was excluded in a summary judgment motion involving...
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