Case Comments
| Citation | Vol. 40 No. 4 |
| Publication year | 2015 |
| Author | LOWELL ANDERSON |
LOWELL ANDERSON
Stetina Brunda Garred & Brucker
Dismissal of a remaining, unresolved claim at oral argument of the appeal enabled the district court's order to be treated as final for appeal of other claims. 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 115 U.S.P.Q2d 1185 (7th Cir. 2015).
"We now hold that the Copyright Office's determination that a design is protectable under the Copyright Act is entitled to Skidmore deference." Skidmore deference is the respect proportional to the interpretation's power to persuade. The registration of a cheerleader costume is presumed valid and is rebuttable, but was given insufficient deference here. Applying a multipart test that hinged upon identifying the utilitarian aspects of the useful article, whether a viewer can identify pictorial, graphic or sculptural features separately from the utilitarian aspects, and whether the pictorial, graphic or sculptural features can exist independently of the utilitarian aspects of the useful article. Identifying the wearer is not a utilitarian aspect. The arrangement of stripes, chevrons, zigzags and color-blocking were not unprotectable useful articles. Judge McKeague dissented, finding no conceptual separability and considered identification as functional. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 115 U.S.P.Q2d 1773 (6th Cir. 2015).
Allegations of aggregated copyright infringement relying on unidentified portions of numerous works being improperly used, were dismissed. Copyright law allows use of ideas and facts. McDonald v. K-2 Indus., Inc., 115 U.S.P.Q2d 1333 (W.D. N.Y. 2015).
The district court found plaintiff owned rights in a photo but was not entitled to damages, granted summary judgment for the defendants and issued a final judgment. The court did not address the complaint request for an injunction. The appellate court had no jurisdiction as injunctive relief was not decided. Bell v. Taylor, 791 F.3d 745, 115 U.S.P.Q2d 1175 (7th Cir. 2015).
After liability was established for infringement of pre-1972 copyrights in sound recordings by Sirius XM, class certification was sought and granted. While copyright ownership is individual it was viewed as largely administrative. Defenses of implied license, waver and estoppel were viewed as highly unlikely in view of Sirius's admissions and will not entail much individual attention. Damages based on 100% of revenues from performing pre-1972 recordings in California are inclusive and allows implied licenses to be excluded. Class certification was granted. Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 115 U.S.P.Q.2d 1053 (C.D. Cal. 2015). The case was stayed pending a Rule 23(f) appeal of the class certification. Flo & Eddie, Inc. v. Sirius XM Radio, 115 U.S.P.Q2d 1070 (C.D. Cal. 2015).
A joint work was derivative of two prior works, only one of which was co-authored by the joint authors. The derivative work lacked permission to use the non-coauthored work from which it was derived so a JMOL of non-infringement was properly denied. Greene v. Ablon, 794 F.3d 133, 115 U.S.P.Q2d 1615 (1st Cir. 2015).
A DMCA subpoena is valid whether served with a satisfactory takedown notification or afterwards. Allegedly infringing material must be present at the time the notification is served for a satisfactory notification. The subpoena is valid and enforceable regardless of whether the material is taken down, as the safe harbor and takedown shields the ISP from liability but not the alleged infringer. In short, Google must keep records of the material removed in response to a takedown notice and supply it in response to a subpoena. The court ordered information sufficient to identify the alleged infringers, as "all information" was overbroad. In re eBay, Inc., 115 U.S.P.Q.2d 1419 (S.D. Cal. 2015).
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The Google Books project is a fair use, even the snippets feature showing three uses of a searched term, in the context of three lines of adjacent text from the work for each snippet. As to transformative use, digitally searching the entire content of a work provides information about the work that is transformative and is not protected by copyright. The "snippets" feature shows limited words in context but with little protected expression and supporting the transformative search aspects. Profit is not determinative and Google's use does not supersede the original but adds something new so it is transformative. As to the nature of the work, Google's information about the work does not replicate any protected expression. As to the amount taken, the digital search requires all of the copyrighted work and an archival copy for confirmation as digital technology improves. While the entire work is digitized only small portions are available to the public through snippets that provide no significant competing substitute for the original work. As to market effect, information about the work has no market effect and snippets may have some effect but no significant effect on protected expression. The first and fourth factors were most important and all favored fair use. While derivative works focus on conversion of a work into a different form, copyright does not protect information about the work so the derivative work allegation has no merit here where public access to the expressive content is limited to three snippets of three lines each, selected by the user (not Google). The risk of hackers obtaining and disseminating the works has a theoretical basis but no factual basis in light of Google evidence of security. Providing digital copies to University libraries that provide works for copying is done under contracts that limit use of the digital copies to legal uses, with no evidence of non-legal use of record. A summary judgment finding Google's copying of over 20 million works to be a fair use was affirmed. The Authors Guild v. Google, Inc., ___ F.3d ___ (2d Cir. 2015).
A DJ defendant in an action to determine copyright ownership, who is determined to own the copyright and lacks a copyright registration, may recover costs and fees under 17 U.S.C. § 505. Fees were properly awarded even though the fee motion was filed before entry of judgment as the filing date met the statutory requirement of being "no later than 14 days after entry of judgment." 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 115 U.S.P.Q2d 1185 (7th Cir. 2015).
A work can be both a joint work and a derivative work. "When the authors of a derivative work are joint authors, they share equally in the copyright to the derivative work, regardless of who penned the new material." As evidence on the value of the original work used in the derivative work was excluded and there was no offer of proof on that value, there was no harm in excluding that evidence. The duty to account for profits from joint works is for profits, not value, so a co-author who charged nothing for a licensee-hospital's use of the joint work had no profits for which to account as it is the co-author's profits that are shared, not the licensee's profits. Greene v. Ablon, 794 F.3d 133, 115 U.S.P.Q2d 1615 (1st Cir. 2015).
While the use of "gray" and "black and white thinkers" were previously used to contrast ambiguity and precision, the copyright threshold is low and depends on the use of those terms in the particular context. Their use to describe a characteristic of an "explosive child" was entitled to copyright protection. Greene v. Ablon, 794 F.3d 133, 115 U.S.P.Q2d 1615 (1st Cir. 2015).
A company acquired rights to a film script, selected the cast, crew and director and held work-for-hire agreements with everyone but the director who delayed signing and ultimately refused to sign. The film's director had no copyright in his directorial contributions. The company was the dominant author of the film and owned the copyright rights. Summary judgment of ownership was affirmed. But the director's claim to ownership was not so misguided as to show he acted for a wrongful purpose or by improper means as required for interference with business relations so that was reversed. 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 115 U.S.P.Q2d 1185 (7th Cir. 2015).
Jurisdiction must arise from the Defendant's acts, not the plaintiff's acts. Copying photos and posting on a website does not enter California, contact anyone in California or otherwise reach out to California. The website was not directed toward California. Filling out a form for a license conferred no jurisdiction as the claim did not arise out of that form. The case was transferred to Nebraska. Erickson v. Neb. Mach. Co., 115 U.S.P.Q2d 1347 (N.D. Cal. 2015).
A website's terms of service included a forum selection clause consenting to personal jurisdiction in the website's chosen forum. A European party filed an improper takedown notice and did not respond to the aggrieved party's lawsuit, resulting in entry of a default judgment awarding $25,084 in attorney's fees, calculated using average billing rates of $418.50 per hour, based on an AIPLA survey stating the average IP billing rate in San Francisco was $546 per hour. Automatic, Inc. v. Steiner, 115 U.S.P.Q2d 1710 (N.D. Cal. 2015).
The court found no case requiring plaintiff to identify which of over 100 allegedly owned copyright registrations were infringed or to specify the relationship of the three registrations identified in the complaint to the software at issue, or face dismissal under Rule 12(b) (6). Dismissal was denied. Autodesk, Inc. v. ZWCAD Software Co., 114 U.S.P.Q2d 1907 (N.D. Cal. 2015).
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"[W]e join the majority position and hold that state law claims based on ideas fixed in...
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