Decisions in Brief

Decisions in Brief
Published in Landslide® magazine, Volume 12, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 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.
Case Remanded against Taylor Swift for Possible
Copyright Infringement
Hall v. Swift, No. 18-55426, 2019 WL 6608746, 2019 U.S.
App. LEXIS 36143 (9th Cir. Oct. 28, 2019). Sean Hall and
Nathan Butler sued singer-songwriter Taylor Swift alleging
that Swift’s chart-topper “Shake It Off” copied a six-word
phrase and a four-part lyrical sequence from Hall’s “Pla-
yas Gon’ Play.” The district court dismissed the complaint
because Hall’s and Butler’s work lacked originality. The
Ninth Circuit disagreed with the district court’s decision and
determined that the complaint plausibly alleged originality.
The district court’s decision was reversed and remanded.
Mercedes Found to Have Plausible Claims against
Detroit Muralists for Declaratory Relief
Mercedes Benz, USA, LLC v. Lewis, Nos. 19-10948, 19-10949,
2019 U.S.P.Q.2d 444096 (E.D. Mich. Sept. 11, 2019). Mer-
cedes Benz brought three declaratory judgment actions against
defendants who are street artists. Mercedes posted six pho-
tographs on Instagram that depict murals painted on public
buildings in Detroit, Michigan, by the defendants. The defen-
dants sent letters to Mercedes asserting that Mercedes’s use of
the defendants’ works constitutes copyright infringement. In
response, Mercedes sought declaratory relief.
The defendants moved to dismiss the actions by arguing
that the complaints failed to state a claim on the basis that (1)
the case is not ripe as the defendants do not have registered
copyrights, and (2) Mercedes failed to state a claim under the
Architectural Works Copyright Protection Act (AWCPA), 17
U.S.C. § 120(a). The motions were denied because Mercedes
alleged a plausible claim for declaratory relief.
The district court held that a copyright registration is not
a prerequisite for ling a declaratory judgment action. The
court noted that the recent U.S. Supreme Court decision in
Fourth Estate Public Benet Corp. v., LLC
claried that a registration is required to bring an infringe-
ment suit, but it did not address an action seeking declaratory
relief. Further, the district court determined that Mercedes
properly asserted a claim under the AWCPA, which protects
Mercedes’s right to photograph publicly visible buildings that
depict the defendants’ murals.
Registration Is Required and Attorney Fees Awarded
for Bringing a Claim without a Registration
Johnson v. Magnolia Pictures LLC, No. 7:18-cv-09337-VB,
2019 U.S.P.Q.2d 348285 (S.D.N.Y. Sept. 16, 2019). Hillary
Johnson sued Magnolia Pictures claiming that she owned the
copyright to audio recordings made with actress and comedian
Gilda Radner in preparation for a book by Radner. These audio
recordings were subsequently used in a lm about Radner that
was made by Magnolia. Magnolia led a motion to dismiss.
The district court granted Magnolia’s motion to dismiss.
The district court noted that to state a claim for copyright
infringement, the plaintiff must allege that he or she owns
a valid copyright, and that copying of the copyrighted work
has occurred. Johnson did not have a registered copyright
in the audio recordings since she did not have a copy of the
audio recordings. The district court found that since Johnson
did not have a copyright registration in the audio recordings,
the copyright action must be dismissed. The district court
similarly dismissed Johnson’s declaratory judgment action
to access the audio recordings to register a copyright in the
audio recordings, since a declaratory judgment action is not
an independent substantive action. Finally, the district court
granted Magnolia attorney fees, as Johnson admitted in her
complaint that she lacked a registered copyright in the audio
recordings, while admitting that having a registered copyright
is a prerequisite for bringing a copyright action.
Zazzle’s Recklessness May Constitute Willful
Greg Young Publishing, Inc. v. Zazzle, Inc., No. 18-55522,
2019 U.S.P.Q.2d 446653 (9th Cir. Nov. 20, 2019). Greg
Young sued Zazzle for using copyrighted images with the
sale of items on Zazzle’s website. Zazzle conceded infringe-
ment at trial and contested only damages and whether the
infringement was willful. The district court found that there
was insufcient evidence to establish willful infringement
and (1) entered, but later vacated, a permanent injunction;
(2) denied Young’s motion for attorney fees; and (3) awarded
costs to both parties. Young appealed.
The Ninth Circuit concluded that a reasonable jury could
nd willfulness based on the evidence presented before the
district court and remanded the decision accordingly. The
Ninth Circuit reasoned that recklessness can constitute willful
infringement, and can be established by an infringer’s know-
ing reliance on obviously insufcient oversight mechanisms.
Because Zazzle never changed or improved its oversight sys-
tem throughout the two-year time period relevant to the case,
despite repeatedly being notied of its ineffective policies,
a jury could nd Zazzle to have acted recklessly. The Ninth
Circuit held that the district court did not abuse its discre-
tion with respect to the other issues brought up on appeal and
afrmed the district court’s decision regarding the same.
John C. Gatz is a member of the rm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers:
Copyrights: Jenni Psihoules, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K. Barnett,
Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP;
Robert W. (Bill) Mason, Southwest Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan,
FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumeneld & Shereff LLP.

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT