Case Comments
| Publication year | 2015 |
| Author | LOWELL ANDERSON Stetina Brunda Garred & Brucker |
LOWELL ANDERSON Stetina Brunda Garred & Brucker
Whether viewed as a license or assignment, an agreement by members of the Four Seasons that granted the "exclusive right to use" their life stories, including biographies, names and likenesses, transferred rights that encompassed a derivative musical work based on those life stories. Granting exclusive rights to one's life story while retaining the right over one's biography would be self-defeating. Fact issues arose on reversionary rights. Summary judgment denying an equitable accounting was reversed and remanded. Corbello v. DeVito, 777 F.3d 1058, 113 U.S.P.Q.2d 1789 (9th Cir. 2015).
To calculate fair market value for the unauthorized use of images of the Vietnam memorial on U.S. stamps, the court can use a hypothetical negotiation from patent cases to determine a reasonable license fee. A reasonable approximation was needed rather than mathematical exactness. A 90/10 split of revenue awarding the author a 10% royalty was upheld. Gaylord v. United States, 111 F.3d 1363, 113 U.S.P.Q.2d 1606 (Fed. Cir. 2015).
The issue here was when a university must pay to post a digital copy of an excerpt of a copyrighted work on the school's electronic distribution system where professors posted compilations of works and excerpts used in courses. The district court found fair use in 43 of the 48 cases. The nonprofit, pedagogical use favored fair use even though the use was not transformative. Works with evaluative, subjective or analytical material favored infringement, but here only slightly. While licenses were available for some works, any adverse market effect was small. The burden of proving license availability was properly placed on plaintiffs as they had possession of the information. Finding insubstantial use if less than 10% of a work or one chapter was used—was error and required reversing the 43 findings of fair use. Cambridge Univ. Press v. Patton, 769 F.3d 1232, 112 U.S.P.Q.2d 1697 (11th Cir. 2014).
Omega watches bearing a copyrighted design were purchased overseas so under Kirtsaeng, the copyright distribution and importation rights expired with that first sale. "[C]opyright holders cannot use their rights to fix resale prices in the downstream market." Attorney fees were awarded because by affixing a barely perceptible copyrighted design to the back of its watches, Omega sought to exert control over its watches, control which it believed it could not otherwise exert. Omega S.A. v. Costco Wholesale Corp., 776 F.3d 692, 113 U.S.P.Q.2 1434 (9th Cir. 2015).
In New York "a pending application does not constitute 'registration' sufficient to allow suit for copyright infringement under 17 U.S.C. § 411(a)." A motion to dismiss was granted as no registration was identified for an image of Gwen Paltrow. BWP Media USA, Inc. v. Gossip Corp. Media, LLC, 113 U.S.P.Q.2d 1585 (S.D.N.Y. 2015).
Both plaintiff and counterclaim defendant sought only injunctive relief. As all parties elected equitable claims and there were no legal claims, neither party was entitled to a jury trial. Plaintiff's motion to strike a jury demand was granted. American Soct'y for Testing & Materials v. Public Resource.org, Inc., 113 U.S.P.Q.2d 1757 (D.C.D.C. 2015).
Defendants used high resolution photos of murals on clothing, but altered the signatures of the mural artists to make them illegible in the photos. The signatures were copyright management information and the removal of the legible signatures stated a claim for removal of copyright management information under 17 U.S.C. § 1202. By putting the images on clothing with degraded names of the authors of the images, the Defendants also falsely identified the source of the images giving rise to claims under 15 U.S.C. § 1125(a). Motions to dismiss were denied. Williams v. Roberto Cavalli S.p.A., 113 U.S.P.Q.2d 1944 (C.D. Cal. 2015).
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The use of the commonplace word "oh" was assumed to be protectable but its use only once in the accused song was de minimis. Also, "factual copying and actionable copying are not coextensive concepts. The former 'requires only the fact that the infringing work copies something from the copyrighted work; the later^requires that the coping is quantitatively and qualitatively sufficient to support the legal conclusion that infringement...has occurred.'" No plausible claim of substantial similarity was pled. TufAmerica, Inc. WB Music Corp., 113 U.S.P.Q.2d 1076 (S.D.N.Y. 2014).
The common-interest exception to waiving attorney client privilege requires a common legal (not commercial) interest and disclosure made in the course of formulating a common legal strategy. Draft claim charts of potential infringers that were provided under a NDA so Acacia could evaluate potential purchase of patents were disclosures for commercial reasons. Any common legal interest took effect only after the disclosure was made. After the sale, the sellers also retained no legal interest in common with Acacia, nor was there a common legal strategy. Communications with the sellers were not privileged. Microsoft Corp. v. Acacia Res. Corp., 113 U.S.P.Q.2d 2029 (S.D.N.Y. 2015).
A peer-reviewed article in the journal of Perinatology was said to include five false statements about the relative effectiveness of two commercial products. "We therefore conclude that, to the extent a speaker or author draws conclusions from non-fraudulent data, based on accurate descriptions of the data and methodology underlying those conclusions, on subjects about which there is legitimate ongoing scientific disagreement, those statements are not grounds for a claim of false advertising under the Lanham Act." The same applies to actions for defamation under New York common law. ONY, Inc. v. Cornerstone Therapeutics, Inc., 720 F.3d 490, 113 U.S.P.Q.2d 1398 (2d Cir. 2013).
"The First Amendment ensures a robust discourse in the pages of academic journals, but it does not immunize false or misleading commercial claims." "Advertisements do not become immune from Lanham Act scrutiny simply because their claims are open to scientific or public debate." The ONY case was distinguished as involving statements in a scientific journal, not commercial advertising. Here the defendant distributed comparative advertising stating that products (water bottles) containing Eastman's Tritan plastic had significant levels of estrogenic activity. Eastman Chemical submitted tests showing Tritan had no estrogenic activity. A jury finding of false advertising was affirmed on appeal. Eastman Chem. Co. v. PlastiPure, Inc., 775 F.3d 230, 113 U.S.P.Q.2d 1405 (5th Cir. 2014).
Merely alleging that a product review said negative things about plaintiff's product is insufficient to plead false statements of fact. Alleging that "false reviews" can be found somewhere on the internet does not provide sufficient notice as to what Plaintiff alleges. California law allows claims for false comparative statements in advertising under Cal. Bus.& Prof. Code § 17500. Homeland Housewares, LLC v. Euro-Pro Operating LLC, 113 U.S.P.Q.2d 1255 (C.D. Cal. Cir. 2014).
"This court concludes that claims of false designations of authorship as false advertisement are not actionable under § 1125(a)(1)(B) in the Ninth Circuit." A claim that a product is "improved" is puffery, is not a statement of fact and is not actionable. "Although there is some disagreement, the majority of district courts within the Ninth Circuit have extended the Ninth Circuit's application of Rule 9(b) pleading standards in Kearns and Vess to false advertising claims under the Lanham Act." Except for the false authorship claims, the claims were dismissed with leave to amend. A.H. Lundberg Assocs. v. TSI, Inc., 113 U.S.P.Q.2d 1321 (W.D. Wash. 2014).
Packaging representing "MORE POWERFUL STEAM vs Rowenta" "based on independent comparative steam burst testing" and further representing the grams per shot, were statements of fact to be evaluated for accuracy based on the criteria defined in the representations themselves. A survey also showed "more powerful steam" had no independent meaning to consumers. The representations were false. A presumption of irreparable harm was inappropriate but the cheaper defendant's steam irons were sold side-by side with Plaintiff's products. A preliminary injunction was affirmed that required stickers over the entirety of the false statements. Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192, 113 U.S.P.Q.2d 1329 (3rd Cir. 2014).
Claim limitations were directed toward replicating the "look and feel" of a web page merged with a third party website. The court improperly required an "overall match" with the host website and absent that improper limitation all other claim limitations were disclosed in a prior art system. The denial of a JMOL for anticipation was reversed, as was the jury finding of no anticipation. DDR Holdings, LLC v. Hotels. com, LP, 773 F.3d 1245, 113 U.S.P.Q.2d 1097 (Fed. Cir. 2014).
An assignment recited "[f]or and in consideration of the sum of One Dollar to us in hand paid, and other good and valuable consideration, the receipt of which is hereby acknowledged...." "The use of boilerplate language does not make the stated consideration invalid or non-
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existent." A summary judgment finding adequate consideration was affirmed. Memorylink Corp. v. Motorola Solutions., Inc., 773 F.3d 1266, 113 U.S.P.Q.2d 1088 (Fed. Cir. 2014).
"It is well established that a general jury verdict can give rise to collateral estoppel only if it is clear that the jury necessarily decided a particular issue in the course of reaching...
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