Decisions in brief

AuthorJohn C. Gatz
Published in Landslide, Volume 14, Number 4, 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.
A Rare Granting of Summary Judgment Despite the
Lack of Formal Discovery
Elliott v. Cartagena, No. 19 Civ. 1998, 2022 WL 44749, 2022
U.S. Dist. LEXIS 2274 (S.D.N.Y. Jan. 5, 2022). This case involves
a copyright infringement dispute relating to the song “All the Way
Up.” In 2016, Eric Elliott met with Fat Joe at an IHOP, signed a
“piece of paper,” and received a $5,000 check for Elliott’s contribu-
tion to the song. Elliott left the signed piece of paper with Fat Joe.
Elliott sued for copyright infringement on the grounds that he is
the coauthor and owner of the song “All the Way Up.” Before the
district court was the defendants’ motion for summary judgment,
wherein the defendants alleged that Elliott assigned his rights to
the song via the piece of paper signed at the IHOP.
The threshold issue was the admissibility of the piece of paper.
The district court had directed extensive efforts to locate the piece
of paper with no success. The best evidence rule provides that
“[a]n original writing . . . is required in order to prove its content
unless these rules or a federal statute provides otherwise.” Fed.
R. Evid. 1002. However, there are two exceptions to this rule
where the original document is not required, including instances
where a document may be admissible as a duplicate of the origi-
nal document, and other evidence of the content of the document
may be admissible if the original is lost. The district court found
that a draft agreement submitted in the case was admissible as a
duplicate of the original agreement and that the original piece of
paper was lost.
The district court reviewed the draft agreement and found
that it clearly indicated that Elliott assigned his rights in the song.
Specically, the agreement stated that “Elliott acknowledges that
[he] has no ownership or other rights in and to the Master and
the Composition and to the extent Elliott has any rights he hereby
assigns those rights, including any moral rights and copyright
rights . . . throughout the universe and in perpetuity.” Despite not
having a copy of the original agreement, the district court held
that the evidence of the draft agreement resolved the copyright
claims and granted the defendants’ summary judgment motion
and dismissed the action in its entirety.
Knowledge of Material Misrepresentation in DMCA
Takedown Notice Required to State a Claim
White v. UMG Recordings, Inc., No. 20 Civ. 9971, 2021 WL
6052106, 2021 U.S.P.Q.2d 1247 (S.D.N.Y. Dec. 21,2021). Jordan
White is a musician who purchased an instrumental arrangement
(the Beat) from defendant Jenks and used the Beat to create a song
called “Oi!” After White created “Oi!,” Jenks also allowed Jordan
Carter to use the Beat in a song called “Right Now.” White distributed
“Oi!” on internet media platforms. Digital Millennium Copyright
Act (DMCA) takedown notices were provided to the platforms, and
White was unsuccessful in using the counternotice procedure of the
DMCA to get the platforms to allow “Oi!” to remain posted on the
platforms. White sued under § 512(f) of the DMCA, alleging that the
defendants had provided misleading takedown notices to the inter-
net media platforms. The defendants moved to dismiss the suit under
Federal Rule of Civil Procedure 12(b)(6).
The district court denied the motion to dismiss with respect to
Jenks, but it granted the motion to dismiss with respect to Carter
and UMG. The district court began its analysis by noting that to
state a claim under § 512(f) of the DMCA, a plaintiff must show
that a defendant has actual knowledge of a material misrepresen-
tation in the takedown notice, that a service provider removed
content based on the takedown notice, and that the plaintiff was
damaged by the removal of content related to the takedown notice.
Applying these three factors to the allegations in the complaint,
the district court found that White had alleged that Jenks had sold
the Beat to White, Jenks knew that the Beat was used to create
“Oi!,” and therefore Jenks knew that any claim of infringement by
“Oi!” of a copyright owned by Jenks was false. The district court
also found that White alleged damages based on his inability to
promote his work on the internet media platforms.
Turning to Carter and UMG, the district court noted that the
complaint did not allege that either Carter or UMG had actual
knowledge that White had purchased the Beat from Jenks, and
therefore any takedown notice under the DMCA provided by
Carter or UMG would lack actual knowledge of a material
By John C. Gatz
Claim Construction
Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 2021 U.S.P.Q.2d 1259
(Fed. Cir. 2021). The Federal Circuit afrmed the Patent Trial and
Appeal Board’s (PTAB’s) claim construction and decision as to
the original claims, but vacated the PTAB’s determination as to
the substitute claims, and remanded for further proceedings. The
Federal Circuit found that the PTAB’s construction gave effect
to the contextually appropriate meaning of the claim term and
therefore afrmed the construction. The Federal Circuit found that
the PTAB’s analysis with respect to the substitute claims lacked
substantial evidence.
Claim Construction/Obviousness
AstraZeneca AB v. Mylan Pharmaceuticals Inc., 19 F.4th 1325,
2021 U.S.P.Q.2d 1201 (Fed. Cir. 2021). The Federal Circuit
disagreed with the district court’s construction and vacated the
judgment of infringement. The Federal Circuit found no clear error
in the district court’s nding that the prior art taught away from
the claimed invention and afrmed the determination of nonobvi-
ousness. The Federal Circuit found that the district court erred in
its claim construction and that the district court’s teaching away
nding on its own was sufcient to sustain the nonobviousness

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