Case Comments
| Citation | Vol. 41 No. 4 |
| Publication year | 2016 |
| Author | LOWELL ANDERSON Stetina Brunda Garred & Brucker |
LOWELL ANDERSON Stetina Brunda Garred & Brucker
"THE NINTH CIRCUIT AND COURTS INTERPRETING California law have held that the phrase 'relating to' should be given broad meaning, in contrast to other prefatory phrases, such as 'arising under.'" An agreement providing that "any dispute, claim or controversy arising out of or relating to the breach, termination, enforcement, interpretation or validity of this Agreement shall be determined by arbitration" but stating "no arbitration shall resolve, disputes relating to issues of scope, infringement, validity and/or enforceability of an Intellectual Property Rights" did not require arbitration of patent infringement claims when the agreement was asserted as an affirmative defense and license. Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 119 U.S.P.Q.2d 1441 (Fed. Cir. 2016).
Two measures of vocal memory were allegedly copied from plaintiff's song "Bright Red Chords" in defendant's song, "Domino," which was written by five persons collaborating in Santa Barbara. Plaintiff sent the song to an executive at defendants' studio but admitted the songwriters did not receive anything from the executive. Likewise, hearsay evidence that a guitarist on the song had access did not establish access through intermediaries. While defendants were in Santa Barbara when the song local music scene was allegedly saturated with the song, they were there to write defendants' song and no evidence showed access to the local music scene or radio, so widespread distribution failed to establish access. A summary judgment of no infringement because of lack of access was affirmed. Lfarendoomis v. Cornish, 119 U.S.P.Q.2d 1817 (9th Cir. 2016).
The 11th Circuit has likened the statutory definition of architectural works to that of compilations, with the substantial similarity test being narrowed for compilations. Differences in dimensions, wall placement, the presence, arrangement, and function of features of a house such as doors windows and other fixtures - were sufficient to affirm a summary judgment of no substantial similarity in floor plans for a house. Medallion Homes Gulf Coast v. Tivoli Homes of Sarasota, Inc., 119 U.S.P.Q.2d 1377 (11th Cir. 2016) (unpublished).
"We therefore hold that Section 504(c)(1)'s provision of separate statutory damages awards for the infringement of each work 'for which any two or more infringers are liable jointly and severally' applies only to parties who have been determined jointly and severally liable in the course of the liability determinations in the case for the infringements adjudicated in the action. A plaintiff seeking separate damages awards on the basis of downstream infringement must join the alleged downstream infringers in the action and prove their liability for infringement." The court's limitation of damages to three statutory damages for three registered works, against one defendant, was affirmed. That implies damages against 104 alleged downstream infringers may be available in other, separate actions. Friedman v. Live Nation Merch., Inc., 119 U.S.P.Q.2d 1852 (9th Cir. 2016).
The court initially awarded fees of $845,000 to the prevailing defendants. The loosing Plaintiff showed total annual income of $300,000 to $500,000 with variable profits and losses in a motion for reconsideration. Plaintiff argued the award would chill litigation by small recording labels and publishing companies in all but the most clear cut cases, and would put it out of business. The court ordered the parties to negotiate a lower award in good faith and if unsuccessful, brief their positions following the negotiation, but indicated a lower award was likely required to prevent manifest injustice. TufAmerica, Inc. v. Diamond, 119 U.S.P.Q.2d 1366 (S.D.N.Y. 2016).
"[A] plaintiff is not required to prove that the defendant's copying was unauthorized in order to state a prima facie case of copyright infringement. [10 citations omitted] Rather, the burden of proving that the copying was authorized lies with the defendant. See generally Fed.R.Civ.P. 8(c)(1) item 12 (license is an affirmative defense)." A judgment from a bench trial was reversed and remanded to determine damages as no evidence of license was of record. Ali v Final Call, Inc., 119 U.S.P.Q.2d 1749 (7th Cir. 2016).
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A fact issue existed on whether a 3-D flash drive had sufficient originality for protection as it was a derivative work of a 2-D PlumbBob icon from the Sims videogame. The number of sides and slight differences in shape lacked originality. Defendant contended that because a derivative work cannot affect the scope of the preexisting material original work, finding originality here would grant a monopoly on all uses of the icon for a flash drive. The court disagreed because others could create a flash drive that "used a different method or design for flash drive removal" from the icon-shaped housing, and the underlying copyright in the icon "would obviously not preclude others from making a 3-D PlumbBob without a flash drive." A summary judgment finding no originality was reversed. Direct Techs., LLC v. Elec. Arts, Inc., 119 U.S.P.Q.2d 1842 (9th Cir. 2016).
"We thus conclude that third parties to an alleged employer-employee relationship have standing to raise a 'work for hire' defense against a claim of copyright infringement." Sony could thus argue that the plaintiff did not own the copyright to the music for Iron Man's theme song. Fact issues on whether the song was created at the "instance and expense" of Marvel Comics reversed a summary judgment that the plaintiff-writer owned the copyright. Urbont v. Sony Music Entm't, 119 U.S.P.Q.2d 1619 (2d Cir. 2016).
Plaintiff designed a flash drive shaped like a "PlumBob" icon from the Sims video game, at the request of a supplier. The supplier outsourced the manufacturing but told plaintiff it got the manufacturing contract, which transferred IP ownership to defendant who owned the copyright in the PlumBob icon. If the assignment was induced by fraud it is not enforceable and if plaintiff can establish joint authorship, it may seek recovery of half the profits from defendants' sales. Fact issues existed on whether plaintiff's contributions had sufficient originality for joint authorship. A summary judgment dismissing all claims was reversed. Direct Techs., LLC v. Elec. Arts, Inc., 119 U.S.P.Q.2d 1842 (9th Cir. 2016).
The defendant has the initial burden of proving entitlement to the DMCA safe harbor provisions by showing it is an ISP complying with 17 U.S.C. § 512. The plaintiff, after discovery, has the burden of proving knowledge of infringement or facts and circumstances showing knowledge of infringement and failure to take prompt action against such infringement. Knowledge is not established when an employee views a video without proof that songs used on the video were known to be infringing or that infringement was obvious to an ordinary user having no specialized knowledge. A summary judgment finding infringement based on employee viewing of videos was vacated. Capital Records, LLC v. Vimeo, LLC, 826 F.3d 78, 119 U.S.P.Q.2d 1110 (2d Cir. 2016).
While a 2011 Copyright Office Report says the safe harbor provisions do not protect against liability for infringement of pre-1972 sound recording under state law, that is wrong. "[W]e find no reason to doubt that [17 U.S.C.] § 512(c), protects service providers from liability for infringement of all copyrights established under the laws of the United States, regardless of whether established by federal law or by local law under the sufferance of Congress, and not merely from liability under the federal statute." A summary judgment denying the availability of the DMCA safe harbor to the defendant for liability on pre-1972 sound recordings was vacated. Capital Records, LLC v. Vimeo, LLC, 826 F.3d 78, 119 U.S.P.Q.2d 1110 (2d Cir. 2016).
A motion for judgment on the pleadings is functionally identical to a motion to dismiss for failure to state a claim, and both may consider materials whose contents are alleged in or incorporated by reference in a complaint without converting it to a summary judgment motion. Differences in themes, dialogue, setting, pace, characters and sequence of events warranted a judgment on the pleadings of no substantial similarity with the Empire television series. Newt v. Twentieth Century Fox Film Corp., 119 U.S.P.Q.2d 1629 (C.D. Cal. 2016).
The remastering of a pre-1972 sound recording resulted in sufficient changes to create an original work subject to copyright protection even though the pre-1972 works were excluded from copyright protection. As only the remastered works were performed by defendant the pre-1972 recording rights were not infringed. Plaintiff failed to prove all of its licenses precluded derivative works and failed to allege the performance of the remastered works lacked payment of the compulsory license fee under 17 U.S.C. § 114. Plaintiff also failed to prove 126 of defendant's works performed plaintiff's pre-1972 sound recordings rather than a remastered version created by a third party. Summary judgment of non-infringement was granted. ABS Entm't, Inc. v. CBS Corp., 119 U.S.P.Q.2d 1152 (C.D. Cal. 2016).
A sound recording does not include the sounds accompanying audiovisual works. That plaintiff made a separate recording of the theme song of Iron Man before it was matched with the film. This did not make it a sound recording under the Copyright Act. It was intended to be combined with the visual portion of the audiovisual work, as is true of nearly all sound tracks. The dismissal of claims for infringement of a sound recording was...
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