Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Law PC; Michael N. Spink, Brinks, Hofer, Gilson & Lione; and Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter...
• Pages: 57-61

Published in Landslide® magazine, Volume 10, Number 6, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

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Decisions in Brief

COPYRIGHTS By John C. Gatz

Destruction of Aerosol Paintings—

$150,000 per Work

Cohen v. G&M Realty LP, 125 U.S.P.Q.2d 1708 (E.D.N.Y.

2018). Plaintiffs, 21 “aerosol artists,” sought a prelimi-

nary injunction under the Visual Artists Rights Act of 1990

(VARA) against the defendants (real estate entities G&M

Realty) to prevent the planned demolition of their warehouse

buildings, and consequent destruction of the plaintiffs’ paint-

ings on the walls of the buildings. The district court had

previously denied preliminary injunctive relief, stating that

a written opinion would soon be issued. Rather than wait for

the opinion, G&M Realty destroyed the art by whitewashing

the walls.

VARA has codied the right to integrity, which includes

the right “to prevent any destruction of a work of recognized

stature.” The district court reiterated that these buildings

had become the repository of the largest collection of exte-

rior aerosol art in the United States, and this litigation was

one of rst impression for a court to determine if the work

of an exterior aerosol artist is protectable under the law. The

defendants here permitted the artists to rent studio space in

the warehouse buildings, and the artists took it upon them-

selves to clean up the area, install lighting, and make the area

inviting. Eventually the site became a major attraction to the

public. The district court therefore found that G&M Realty

violated the aerosol artists’ rights under VARA, and given the

willful violation of rights, awarded the maximum statutory

damages totaling $6,750,000 for the 45 works destroyed.

Embedding Viral Photograph of Tom Brady

Implicates Photographer’s Exclusive Display Right

Goldman v. Breitbart News Network, LLC, 125 U.S.P.Q.2d

1778 (S.D.N.Y. 2018). Justin Goldman took a picture of

New England Patriots quarterback Tom Brady, showing

Brady helping the Boston Celtics basketball team to recruit

Kevin Durant. Goldman uploaded the photo to his Snap-

chat account, and the photo went viral. Eventually, it was

uploaded to Twitter by several sources, and the defendants’

news sources embedded the photo into news stories about the

attempted recruitment. In the embedding process, the photo

is not physically copied by the defendants for storage on their

servers; rather, the defendants constructed web pages that

retrieved the image from third-party servers, thereby display-

ing the photo to users of the defendants’ sites. Goldman sued

the media outlets for infringing his copyright in the photo,

and the defendants moved for partial summary judgment of

the suit. The defendants urged adoption of the Ninth Circuit’s

“server test,” whereby they would be liable for copyright

infringement only if the photo were stored on their serv-

ers. Here, the district court noted that most courts of appeal

have neglected to adopt that test. Finding for the plaintiff and

denying the defendants’ motion for summary judgment, the

district court declined to apply the server test. The district

court also noted that there is a very serious and strong fair use

defense that was not the subject of the motion.

Ticketmaster Fails to State Copyright Claim in

Battle over Bots

Ticketmaster L.L.C. v. Prestige Entertainment, Inc., 125

U.S.P.Q.2d 1540 (C.D. Cal. 2018). Ticketmaster sells tick-

ets to entertainment events via its website, mobile app, and

telephone. Prestige is a company that allegedly used bots and

dummy accounts to purchase large amounts of tickets in a

manner that a human user could not match and subsequently

resold these tickets on the secondary market for prot. Tick-

etmaster alleged that Prestige purchased 30–40 percent of

tickets to some events. Ticketmaster’s terms of use (TOU)

prohibit the use of bots to purchase tickets, or to request

access to more than 1,000 pages of the site in a 24-hour

period. Ticketmaster sent Prestige a cease and desist letter,

and subsequently sued Prestige and asserted many claims,

including copyright infringement and violations of the Digi-

tal Millennium Copyright Act (DMCA). Prestige moved to

dismiss.

The district court granted Prestige’s motion to dismiss

the copyright claim, but denied the motion to dismiss the

DMCA claim. The district court determined that Prestige

was a nonexclusive limited licensee, and could only infringe

Ticketmaster’s copyright if it exceeded the license’s scope

in a manner that implicates one of the licensor’s exclusive

statutory rights. The terms must be conditions that if met ter-

minate or enlarge the obligation of the parties, and there must

be a nexus between the condition and the licensor’s exclusive

right of copyright. The district court determined Ticketmas-

ter’s terms were merely covenants, because the license said

Ticketmaster “may” take action if the terms of the license

were breached, so neither party’s obligations are terminated

or enlarged if a violation occurs because the parties’ interests

do not change unless and until Ticketmaster acts.

The district court denied Prestige’s motion to dismiss the

DMCA claim, as Ticketmaster’s allegations involved Pres-

tige using bots to bypass technological measures to access

copyrighted information. The district court rejected Prestige’s

arguments that CAPTCHA is not a technological measure

under the DMCA, since a user may not access copyrighted

materials without utilizing CAPTCHA.