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: 60-64

©2019. Published in Landslide®, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in

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Decisions in Brief

COPYRIGHTS By John C. Gatz

John C. Gatz is a member of the rm 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. Lechleiter, and Andrew M. McCoy, Faegre Baker Daniels LLP; Robert W.

(Bill) Mason, Harness, Dickey & Pierce; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP.

Trademarks: Elizabeth W. Baio, Jenni Wiser, and Alexis Grilli, Nixon Peabody LLP; and Amy L. Sierocki, Blumeneld & Shereff LLP.

Court Can’t Picture Dismissing Copyright Case

Michael Grecco Productions, Inc. v. Alamy, Inc., No. 18-CV-

3260, 2019 WL 1284256, 2019 U.S. Dist. LEXIS 46185

(E.D.N.Y. Mar. 12, 2019). Grecco is a photography studio that

entered into a licensing agreement where Alamy had the abil-

ity to sell some of Grecco’s copyrighted works. The licensing

agreement terminated in 2013, and any rights to continue to

sell copyrighted works under the licensing agreement termi-

nated in June 2015. Alamy continued to sell copyrighted works

in 2016. Grecco sued Alamy for copyright infringement and

for violating the Digital Millennium Copyright Act (DMCA).

The district court denied Alamy’s motion to dismiss. Alamy

rst argued that Grecco had named the wrong defendant and

that Alamy’s U.K. parent company was the proper defendant.

The court found that this argument was premature as part of

a motion to dismiss, but that discovery may show that Alamy

was in fact the wrong defendant. However, as the complaint

alleged that the Alamy website hosted and sold Grecco’s copy-

righted photos, the copyright infringement allegations of the

complaint were sufcient to survive a motion to dismiss.

Next, the district court evaluated the DMCA claim. The

court found that Grecco had sufciently alleged a violation of

the DMCA based on Alamy providing false copyright man-

agement information (CMI) by placing watermarks on the

digital copies of the photos. The court noted that the com-

plaint sufciently alleged that Alamy placed CMI on the

photos by providing watermarks on the photos, that Alamy

knew that it did not hold the copyright to the photos, and

that Alamy tried to cause or conceal copyright infringement.

Therefore, the district court denied Alamy’s motion to dis-

miss the DMCA count.

Registration Required

Fourth Estate Public Benet Corp. v. Wall-Street.com, LLC,

139 S. Ct. 881, 129 U.S.P.Q.2d 1453 (2019). Plaintiff Fourth

Estate, a news organization, licensed works to Wall-Street.

com, a news website. Fourth Estate sued Wall-Street.com and

its owner for copyright infringement of news articles that Wall-

Street.com failed to remove from its website after canceling the

parties’ license agreement. Fourth Estate had led applications

to register the articles with the Copyright Ofce, but the Regis-

ter of Copyrights had not acted on those applications.

Fourth Estate advanced the “application approach” to

§ 411(a) of the Copyright Act, arguing that registration

occurs when a copyright owner submits a proper application

for registration. Wall-Street.com advocated the “registra-

tion approach,” urging that registration occurs only when the

Copyright Ofce grants registration of a copyright. The U.S.

Supreme Court held that the registration approach reects the

only satisfactory reading of § 411(a), which states that “no

civil action for infringement of the copyright in any United

States work shall be instituted until . . . registration of the

copyright claim has been made in accordance with this title.”

The Supreme Court thus held that a copyright claimant may

commence an infringement suit only after the Copyright

Ofce registers a copyright. The Supreme Court noted that,

upon registration of the copyright, the owner can recover for

infringement that occurred both before and after registration.

Walking Dead Case Survives Motion to Dismiss

Smith v. AMC Networks, Inc., 129 U.S.P.Q.2d 1366 (N.D.

Cal. 2019). In 2007 and 2008, plaintiff Smith authored and

coauthored a series of zombie-themed comics called Dead

Ahead that was published by Image Comics. He also hired

David Alpert as his agent to represent him in contacts with

movie and TV studios. AMC started airing the zombie-

themed TV show The Walking Dead in 2010, and in 2015

launched a spinoff called Fear the Walking Dead. Alpert

was credited as an executive producer on both shows. Smith

argued that elements of Season 2 of Fear the Walking Dead

has similarities to Dead Ahead. Smith sued for copyright

infringement, and the defendants moved to dismiss.

The district court identied 11 alleged plot similarities

between Dead Ahead and Fear the Walking Dead in Sea-

son 2, including that both works begin on a similarly sized

boat located in the Pacic Ocean, off the coast of South-

ern California, with eight individuals, and that the survivors

are initially anxious to evade military ships while develop-

ing a plan to head south because of concerted military action

against civilians to move humans away from the coast and to

herd them inland so that the military can use or kill them. The

court also identied ve groups of character and dialogue

similarities, and three theme similarities.

In addressing the copyright claim, the district court

attempted to apply the extrinsic test for substantial similar-

ity. However, the court determined that it could not conduct

the analysis to separate the unprotectable elements from the

protectable elements in Dead Ahead and thus denied the defen-

dants’ motion to dismiss on the copyright claim. A motion to

dismiss a claim of duciary duty was also dismissed.