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 Rosario Law P.C.; Michael N. Spink, Brinks, Hofer, Gilson & Lione; and Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. ...
• Pages: 61-66

Published in Landslide® magazine, Volume 11, Number 3, 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

A Magical License to Download

Disney Enterprises, Inc. v. Redbox Automated Retail, LLC,

127 U.S.P.Q.2d 1810 (C.D. Cal. 2018). Plaintiff Disney sells

“combo packs,” which contain a DVD and/or Blu-ray disc

version of a particular Disney movie and a piece of paper

containing an alphanumeric code. The code can be input

or redeemed online to allow a user to stream and/or down-

load the same Disney movie contained on the physical discs.

Defendant Redbox rents and sells movies to consumers via

automated kiosks, and also began offering combo pack down-

load codes for individual sale at Redbox kiosks. Disney

sued and previously sought a preliminary injunction enjoin-

ing Redbox from offering standalone Disney codes for sale,

based on theories of contributory copyright infringement and

breach of contract (which Redbox enters when it purchases

combo packs). The district court had denied Disney’s motion

for a preliminary injunction, concluding that in light of the

specic contract language printed on combo pack boxes and

used within the redemption sites’ terms of use, Disney could

not show a likelihood of success on the merits of its breach of

contract or contributory copyright infringement claims.

Disney subsequently changed the language on its combo

pack boxes, changed the download sites’ terms of use, and

amended its complaint. The back of the boxes state: “Digital

code redemption requires prior acceptance of license terms

and conditions. Codes only for personal use by recipient of

this combination package or family member. Digital movie

code . . . subject to expiration after May 15, 2023.” The pack-

aging also stated: “The digital code contained in this package

may not be sold separately and may be redeemed only by the

recipient of this combination package or a family member.

Visit MoviesAnywhere.com, RedeemDigitalMovie.com, and

disneytermsofuse.com for code redemption and other applica-

ble terms and conditions.”

The district court ruled in favor of Disney on its subse-

quent motion for a preliminary injunction, based on the new

language on the packaging. The district court found that the

contract was closer to a shrinkwrap or boxtop agreement,

for example, as opposed to a clickwrap agreement, which

requires a positive manifestation of assent. The notice on the

packaging was sufciently denite and clear, was readable

prior to purchasing a combo pack, and gave the purchaser

notice of the existence of a license and its key conditions.

Further details of the license were also available prior to pur-

chase from the download websites. Additionally, because

the new terms did not restrict a purchaser’s use and disposal

of the physical discs, Redbox’s arguments regarding copy-

right misuse were not persuasive. Therefore, the district court

granted Disney’s motion for a preliminary injunction.

Oracle Still Entitled to Injunction and Attorney Fees

after Remand

Oracle USA, Inc. v. Rimini Street, Inc., 324 F. Supp. 3d 1157

(D. Nev. 2018). Oracle sued Rimini Street for copyright

infringement and violation of California and Nevada computer

access laws for Rimini Street’s after-license software support

to customers who had licensed Oracle software. A jury found

that Rimini Street was liable for copyright infringement and

violations of the states’ computer access laws while provid-

ing this support. The district court granted Oracle a permanent

injunction and awarded attorney fees to Oracle. Rimini Street

appealed. The Ninth Circuit upheld the copyright infringement

decision, but overturned the ndings on the computer access

laws, and remanded the case back to the district court to deter-

mine if a permanent injunction against Rimini Street was still

justied and if Oracle still deserved attorney fees.

On remand, the district court issued a permanent injunc-

tion and awarded Oracle attorney fees. Starting with the

permanent injunction, the district court determined that all

four factors the U.S. Supreme Court provided in eBay, Inc. v.

MercExchange, LLC, 547 U.S. 388 (2006), for determining

whether a permanent injunction is proper in a copyright case

favored Oracle. The jury found that Rimini Street infringed

93 of Oracle’s copyrights, and this weighed heavily in the

district court’s nding that Oracle suffered an irreparable

injury and that monetary damages were inadequate.

Turning to the award of attorney fees, the district court

determined that Oracle should be entitled to fees based on

factors the Supreme Court enumerated in Fogerty v. Fantasy,

Inc., 510 U.S. 517 (1994), for an award of attorney fees in a

copyright case. The district court focused extensively on Ora-

cle having a great deal of success at trial by proving Rimini

Street had infringed many Oracle copyrights, and the fact that

Rimini Street had acted unreasonably by completely chang-

ing the basis of its defense during the case, requiring Oracle

to spend more resources to prove copyright infringement.

Copyright Suit against Empire Show Creators

Fizzles Out

Tanksley v. Daniels, 902 F.3d 165, 127 U.S.P.Q.2d 1802 (3d

Cir. 2018). In 2005, plaintiff Tanksley wrote Cream, a three-

episode pilot focusing on an African American–owned hip hop

label, which he also starred in and directed. In 2008, Tanksley

spoke with Lee Daniels about Cream, and also gave Daniels a

Cream DVD and script. Daniels later created Empire, a show

about an African American–run record label, which debuted on

Fox in 2015. Based on his perception of similarities between

the shows, Tanksley sued Daniels, Fox, and others for copy-

right infringement. The district court granted the defendants’

motion to dismiss, based on a nding that the shows were not

substantially similar as a matter of law.

Despite supercial similarities between the shows, the

Third Circuit afrmed the district court’s decision. On the

question of the plots of the shows, the Third Circuit found

that “the similarities between the shows . . . extend no far-

ther than the bare abstraction of an African-American, male

record executive.” With respect to the characters, the Third

Circuit determined that, even given an assumption that an

unprotectable idea gave rise to similar characters, the particu-

lar expressions of this idea are not substantially similar.