Decisions in brief
Author | John C. Gatz |
Pages | 56-61 |
Published in Landslide, Volume 14, Number 3, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
56
Patents
Case Exceptionality/Attorney Fees
Energy Heating, LLC v. Heat On-The-Fly, LLC, 15 F.4th
1378, 2021 U.S.P.Q.2d 1035 (Fed. Cir. 2021). The Federal
Circuit afrmed the district court’s nding of exceptional-
ity under 35 U.S.C. § 285 and award of attorney fees. The
Federal Circuit rejected a variety of arguments set forth by
the patent owner, Heat On-The-Fly (HOTF). The Federal
Circuit rejected HOTF’s argument that the district court erro-
neously credited the jury’s bad-faith nding in determining
that HOTF’s case was substantively weak, noting that the jury
nding was within the district court’s equitable discretion to
consider. The Federal Circuit also rejected HOTF’s argument
that because the jury found that HOTF did not commit the
Copyrights
A Two-Story Triangular Atrium in Common Isn’t
Enough to Find Substantial Similarity
Designworks Homes, Inc. v. Thomson Sailors Homes, LLC, 9
F.4th 961, 2021 U.S.P.Q.2d 878 (8th Cir. 2021). Designworks
registered an architectural design of a home having a two-story
triangular atrium design with stairs as part of the main room.
Thomson Sailors also used a triangular-atrium design called the
Newbury Model. Designworks sued Thomson Sailors for copy-
right infringement. The district court decided at the summary
judgment stage that the Newbury Model was not a copy and
awarded Thomson Sailors attorney fees. Designworks appealed.
Designworks argued that the Newbury Model was substantially
similar to its design. The Eighth Circuit agreed with the district
court and found that there was no substantial similarity. The Eighth
Circuit determined that the only similarity between the architectural
designs was the two-story triangular atrium and that this was not
enough to establish copying. The Eighth Circuit further noted that
there were plenty of differences between the designs. The Eighth
Circuit also concluded that the district court had discretion and
exercised it properly when awarding attorney fees.
Miller Is the Author of Friday the 13th and Entitled
to Termination of the Copyright
Horror Inc. v. Miller, 15 F.4th 232, 2021 U.S.P.Q.2d 1002 (2d Cir.
2021). This case involves the question of whether Victor Miller was
an employee or independent contractor of Manny Inc. and Horror
Inc. when he wrote the screenplay for the lm Friday the 13th. In
2016, Miller gave notice to Manny and Horror to terminate its
copyright under 17 U.S.C. § 203. In response, Manny and Horror
sued Miller, seeking declaratory judgment that Miller wrote the
screenplay as a work for hire under the Copyright Act, thus making
Miller’s termination notice invalid. Miller countersued for declara-
tory judgment that the screenplay was not a work for hire. The
district court found in favor of Miller on the basis that Miller did
not prepare the screenplay as a work for hire and that Miller’s
termination notice was timely. Manny and Horror appealed.
On appeal, Manny and Horror argued that Miller was an
employee when preparing the screenplay for the infamous
horror lm. The Second Circuit looked to the factors set forth
in Community for Creative Non-Violence v. Reid, 490 U.S.
730, 737 (1989), for distinguishing between an employee and a
nonemployee author for purposes of copyright ownership. The
U.S. Supreme Court in Reid identied 13 nonexhaustive factors
for making this determination, including: (1) the hiring party’s
right to control the manner and means by which the work is
accomplished; (2) the skill required to create the work; (3) the
source of the instrumentalities and tools; (4) the location of the
work; (5) the duration of the relationship between the parties;
(6) whether the hiring party has the right to assign additional
projects to the hired party; (7) the extent of the hired party’s
discretion over when and how long to work; (8) the method of
payment; (9) the hired party’s role in hiring and paying assis-
tants; (10) whether the work is part of the regular business of
the hiring party; (11) whether the hiring party is in business;
(12) the provision of employee benets; and (13) the tax treat-
ment of the hired party.
The Second Circuit balanced the Reid factors to conclude
that Miller was an independent contractor when he wrote the
screenplay. In coming to this decision, the Second Circuit gave
more weight to the following factors, citing Aymes v. Bonelli, 980
F.2d 857 (2d Cir. 1992): (1) the hiring party’s right to control the
manner and means of creation; (2) the skill required of the hired
party; (3) the provision of employee benets; (4) the tax treat-
ment of the hired party; and (5) whether the hiring party has the
right to assign additional projects to the hired party. Manny and
Horror proposed that because Miller was a member of the Writ-
ers’ Guild of America, he was working as an employee. The Second
Circuit rejected this argument and found that the Reid factors
clearly weighed in favor of Miller being an independent contrac-
tor. Because Miller was not an employee, the Second Circuit found
that he is the author of the screenplay and entitled to terminate
the copyright under § 203.
By John C. Gatz
DECISIONS IN BRIEF
tort of deceit, the jury necessarily found that HOTF did not
engage in inequitable conduct, nding that the two claims
had no bearing on one another. Further, the Federal Circuit
discarded HOTF’s argument that the district court failed to
address ndings in a previous order denying fees before appeal,
noting that the previous order was previously vacated, and
therefore inapposite.
The Federal Circuit rejected other arguments, noting
that the district court (1) provided ample support for nd-
ing HOTF’s case substantively weak, (2) was not required to
afrmatively weigh a lack of litigation misconduct, and (3)
was allowed to nd the continuation patents irrelevant to the
fee-shifting determination.
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