Decisions in brief

• Author: John C. Gatz
• Pages: 54-58

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

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54

Copyrights

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

misrepresentation.

By John C. Gatz

Patents

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

determination.

DECISIONS IN BRIEF