IP Law Chat : IP Law Chat -- Hendricks & Lewis, intellectual property, trademark, copyright and technology attorneys

Eastland Music Group, the "proprietor" of the rap duo Phifty-50 (which according to the Seventh Circuit "has to its credit one album (2003) and a T-shirt"), successfully registered the trademark "PHIFTY-50" and also claimed a trademark in "50/50."

Eastland sued Lionsgate and others claiming that they infringed its trademark rights by using "50/50" as the title of a film that opened in 2011.  The district court dismissed Eastland's complaint for failure to state a claim, concluding that the movie title was descriptive because the film apparently concerned "a 50% chance of the main character surviving cancer."

Eastland appealed, raising various substantive and procedural arguments that ultimately the Seventh Circuit concluded it need not reach to affirm the dismissal

because this complaint fails at the threshold:  it does not allege that the use of "50/50" as a title has caused any confusion about the film's source--and any such allegation would be too implausible to support costly litigation.

The Seventh Circuit noted that the film's title, "50/50," differed from Eastland's registered mark "PHIFTY-50," and that Eastland's mark existed in a crowded field as a "very junior user" with correspondingly "weak and narrow" rights.

Finally, citing Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), the Seventh Circuit noted that the "title of a work of intellectual property can infringe another author's mark only if the title falsely implies that the latter author is its origin" but here,

Eastland Music's complaint does not (and could not plausibly) allege that consumers treat it as the producer or source of the film 50/50, or treat Lionsgate as the producer of the 2003 rap album.

The case cite is Eastland Music Group, LLC v. Lionsgate Entm't, Inc., Appeal No. 12-2928 (7th Cir. Feb. 21, 2013).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Ann Bogie attended a stand-up comedy show featuring Joan Rivers at a casino in Wisconsin.  During the performance, Rivers told a joke about Helen Keller and was heckled by an offended audience member who had a deaf son.  The exchange was filmed and included in a documentary entitled Joan Rivers: A Piece of Work that was sold nationwide.

After the performance, Bogie gained entry to a backstage area where Rivers had exited that was closed to the general public.  Bogie asked Rivers to sign a copy of Rivers' book and the two engaged in a brief conversation in which "Bogie expressed frustration with the heckler and sympathy for Rivers."  (The Seventh Circuit quotes the full conversation in its opinion.)  The brief conversation was filmed, presumptively without Bogie's permission, and included in the documentary.  The film showed that there were at least three other individuals in close proximity to Bogie and Rivers during this conversation, which lasted 16 seconds, representing 0.3 percent of the 82-minute film.

Bogie sued Rivers and others for invasion of privacy and misappropriation of her image under Wisconsin law (which, it turns out, is modeled in part on New York law).  The district court dismissed Bogie's claims with prejudice on the defendants' motion to dismiss for failure to state a claim after viewing the film and Bogie appealed.

 After agreeing with the district court that Bogie's invasion of privacy claim could be decided as a matter of law based on viewing the scene in the film, the Seventh Circuit likewise agreed that both of her claims were subject to dismissal with prejudice.

As to Bogie's invasion of privacy claim, the Seventh Circuit concluded that Bogie could not prove that her conversation with Rivers occurred in a place (the backstage area) that a reasonable person would consider private:

[Bogie] voluntarily approached a celebrity just after a public performance.  Any reasonable person would expect to encounter some kind of a security presence, and indeed here that presence was visible.  Furthermore, the camera crew must have also been visible to Bogie as they were filming both Rivers and, of course, Bogie.  Courts have found that even performers themselves cannot count on a reasonable expectation of privacy in their own backstage areas.

The Seventh Circuit also concluded that Bogie could not prove that the alleged intrusion into her privacy would be highly offensive to a reasonable person, an objective test.  "The fact that Bogie was embarrassed to be filmed saying something she regrets having said and now deems offensive does not convert the filming itself into a highly offensive intrusion."

The Seventh Circuit also affirmed the dismissal with prejudice of Bogie's misappropriation claim, concluding that the documentary was subject to the newsworthiness exception to such claims and that the 16-second clip of Bogie was merely incidental.

The case cite is Bogie v. Rosenberg, Appeal No. 12-1923 (7th Cir. Jan. 17, 2013).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

For the second time, the long-running dispute between Mattel and MGA over the Bratz dolls made its way to the Ninth Circuit, which dispensed some painful conclusions to both parties.

The Ninth Circuit's earlier decision is discussed here along with more detailed facts of the underlying dispute.  Long story short, the dispute began when Carter Bryant conceived the idea for a line of Bratz dolls which he pitched to MGA while still employed by Mattel.  MGA liked the idea, Bryant signed a consulting agreement with MGA, MGA released the Bratz dolls, and the lawsuits began.

On the first appeal, the Ninth Circuit vacated the equitable relief at issue and remanded the case to the district court, noting that it was likely "the entire case will probably need to be retried."  Chief Judge Kozinski, who authored both opinions, apparently was prophetic as the case was retried.

After the retrial, the jury rejected Mattel's claim that MGA infringed Mattel's copyrights in connection with the Bratz dolls.  The jury also concluded that Mattel misappropriated MGA's trade secrets.  MGA was ultimately awarded approximately $170 million in damages in connection with its trade secret claim and received its attorneys' fees and costs with respect to that claim and under the Copyright Act.

As to MGA's successful trade secret claim, Mattel had moved to dismiss the claim arguing that the statute of limitations had run on the claim.  The district court denied the motion, concluding that MGA's claim was a compulsory "counterclaim-in-reply" to Mattel's own trade secret misappropriation counterclaim and was therefore permissible.  Mattel appealed that decision.

The Ninth Circuit agreed with Mattel that MGA's trade secret claim was not a compulsory counterclaim-in-reply because that claim and Mattel's claim "did not rest on the same 'aggregate core of facts'."  The court thus vacated the verdict in favor of MGA on that claim and the related damages, fees and costs and directed the district court to dismiss the claim without prejudice on remand.

But there was bad news for Mattel as well.  The Ninth Circuit upheld the award of attorneys' fees to MGA under the Copyright Act for successfully defending against Mattel's copyright claim, which the district court apparently characterized as being "stunning in scope and unreasonable in the relief it requested."  While the Ninth Circuit didn't explicitly agree or disagree with the district court's characterization of Mattel's claim, it readily concluded that the court had "properly exercised its discretion in awarding and calculating attorneys' fees and costs," which apparently were in the neighborhood of $140 million.

The case cite is Mattel, Inc. v. MGA Entm't, Inc., Appeal No. 11-56357 (9th Cir. Jan. 24, 2013).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The Supreme Court heard argument on October 29, 2012, in a Second Circuit case addressing the question of the applicability of the first sale doctrine of the Copyright Act to copyrighted works that are legally acquired abroad and then resold in the United States.  The Second Circuit concluded that the first sale defense in Section 109(a) of the Copyright Act applies only to copies of copyrighted works manufactured in the United States.

You can listen to the Supreme Court argument in the case here.

And you can read the original post about the Second Circuit's decision in the case here.

The case cite is Kirtsaeng v. John Wiley & Sons, Inc., No. 11-697.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Lens.com appealed the decision of the Trademark Trial and Appeal Board granting summary judgment to 1-800 Contacts and ordering the cancellation of Lens.com's registration for the mark LENS in connection with "computer software featuring programs used for electronic ordering of contact lenses[.]"

Specifically, the TTAB granted summary judgment on 1-800 Contacts's claim of abandonment, concluding that Lens.com's software was "merely incidental to its retail sale of contact lenses, and is not a 'good in trade,' i.e., 'solicited or purchased in the market place for [its] intrinsic value.'"

Because it was undisputed that Lens.com did not sell software, the issue on appeal was whether its software was a "good" that was "transported in commerce."

Although there was "ample" case law addressing goods in trade with respect to "traditional articles" used in conjunction with services, the Federal Circuit noted that there was little precedent on the question of whether an internet service provider's software is an independent good in commerce or is merely incidental to the internet service.

While the Federal Circuit agreed that "distribution of [s]oftware over the internet can satisfy the jurisdictional predicate for 'use in commerce' . . . whether consumers actually associate a mark with software, as opposed to other services, is a factual determination that must be conducted on a case-by-case basis."  And the court identified several factors to consider in making this determination, including whether the software

(1) is simply the conduit or necessary tool useful only to obtain applicant's services; (2) is so inextricably tied to and associated with the service as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the services.

Applying those factors, the Federal Circuit concluded that Lens.com's software was merely the conduit through which it renders its online services, and while the software "may provide greater value to Lens.com's online retail services by enhancing the overall consumer experience, there is no evidence that it has any independent value apart from . . . rendering the service."  The court thus affirmed the TTAB's conclusion that Lens.com's mark was not in use in commerce with respect to its software and the TTAB's grant of summary judgment to 1-800 Contacts, Inc. on the question of abandonment.

The case cite is Lens.com, Inc. v. 1-800 Contacts, Inc., Case No. 2011-1258 (Fed. Cir. Aug. 3, 2012).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Plaintiffs, producers and owners of copyrighted television programming, sued ivi, Inc. and its chief executive officer for copyright infringement for streaming that programming over the Internet without their authorization.

Plaintiffs sought a preliminary injunction and the district court granted it, holding that plaintiffs were likely to succeed on the merits because ivi was not a "cable system" entitled to a compulsory license under Section 111 of the Copyright Act and that the other factors supported issuing an injunction.

Because it was undisputed that plaintiffs had valid copyrights in the television programming that ivi publicly performed without authorization, the principal issue on appeal was whether the district court was correct in concluding that ivi was not a "cable system" under Section 111 of the Copyright Act.  If ivi was a "cable system," it was entitled to a compulsory license to retransmit the programming and would therefore have a statutory defense to plaintiffs' copyright infringement claims.  If ivi was not, it had no such defense.

The Copyright Act defines a "cable system" in part as:

a facility, located in any State, territory, trust territory, or possession of the United States, that in whole or in part receives signals transmitted or programs broadcast by one or more television broadcast stations licensed by the Federal Communications Commission, and makes secondary transmissions of such signals or programs by wires, cables, microwave, or other communications channels to subscribing members of the public who pay for such service.

17 U.S.C. Section 111(f)(3).

The Second Circuit concluded that it was unclear, based on the statutory language alone, whether ivi (which the court described as "a service that retransmits television programming live and over the Internet") constituted a "cable system."  For instance, the court opined that it was "certainly unclear whether the Internet itself is a facility, as it is neither a physical nor a tangible entity; rather, it is 'a global network of millions of interconnected computers.'"

Thus, the Second Circuit looked to legislative history for any guidance as to whether ivi constituted a "cable system" under Section 111.  The court divined "two societal benefits" that Congress sought to balance in enacting Section 111:  "Congress enacted Section 111 to enable cable systems to continue providing greater geographical access to television programming while offering some protection to broadcasters to incentivize the continued creation of broadcast television programming."  From this history, the Second Circuit concluded that Congress did not intend Section 111's compulsory license to extend to Internet retransmissions.

The Second Circuit then took the second step of looking to the Copyright Office's interpretation of the statute, which is to be accorded deference provided that it is reasonable.  According to the court, the "Copyright Office has consistently concluded that Internet retransmission services are not cable systems and do not qualify for Section 111 compulsory licenses," a position the court found both "reasonable and persuasive."

The Second Circuit summarized its holdings:

(1) the statutory text is ambiguous as to whether ivi, a service that retransmits television programming over the Internet, is entitled to a compulsory license under Section 111; (2) the statute's legislative history, development, and purpose indicate that Congress did not intend for Section 111 licenses to extend to Internet retransmissions; (3) the Copyright Office's interpretation of Section 111 -- that Internet retransmission services do not constitute cable systems under Section 111 -- aligns with Congress's intent and is reasonable; and (4) accordingly, the district court did not abuse its discretion in finding that plaintiffs were likely to success on the merits of the case.

The court then readily concluded that the district court had not abused its discretion in finding that the other factors (irreparable injury, balance of hardships, and the public interest) supported its grant of a preliminary injunction.

The case cite is WPIX, Inc. v. ivi, Inc., Case No. 11-788-cv (2d Cir. Aug. 27, 2012).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Scholz Design, Inc. alleged, in part, that defendants infringed its copyrights in three front-elevation architectural drawings of homes it designed by copying and posting them on various websites.

Defendants moved to dismiss the complaint arguing that because the architectural drawings contained insufficient detail from which a building could be constructed, they could not be protected by Scholz's copyright.  The district court agreed, reasoning that

"copyright protection extends to the component images of architectural designs to the extent that those images allow a copier to construct the protected design," and therefore "the copied images do not fulfill the intrinsic function of an architectural plan and thus the act of copying them does not violate any right protected by a copyright for architectural technical drawings."

The Second Circuit reversed.  Specifically, the court disagreed with defendants' argument--adopted by the district court--that the architectural drawings were not entitled to copyright protection because they did not have sufficient detail to allow for construction of the home depicted in the drawings.

The Second Circuit opined that the district court's decision likely stemmed from a misunderstanding regarding the applicability of the Architectural Works Copyright Protection Act ("AWCPA"), which added protection to "architectural works."  Prior to the enactment of the AWCPA, although architectural structures themselves were not entitled to copyright protection, architectural plans, blueprints, and drawings like that at issue in the case were covered under the Copyright Act's protection of "pictorial, graphic, and sculptural works."

In this case, Scholz contended that the architectural drawings were protected under that latter pre-existing category of works subject to copyright protection and the Second Circuit agreed:

Sketches or drawings such as those allegedly infringed here . . . did receive protection before enactment of the AWCPA, although the architectural works they depicted did not.  The district court seems to have misunderstood the import and relevance of this distinction in concluding that under section 102(a)(5), architectural sketches or drawings are required to include a certain level of detail to receive protection.  Where the complaint alleges unlawful copying of a pictorial work registered under section 102(a)(5), there is no requirement of any level of detail.

Thus, the Second Circuit reversed the district court's grant of the motion to dismiss the copyright infringement claim, characterizing it "as a straightforward case of copyright infringement."

The case cite is Scholz Design, Inc. v. Sard Custom Homes, LLC, Case No. 11-3298 (2d Cir. Aug. 15, 2012).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

In a long-running dispute over ownership of Marilyn Monroe's right of publicity, the Ninth Circuit ultimately resolved the dispute through application of judicial estoppel, concluding that New York law applied to the question, that New York law did not provide for a posthumous right of publicity, and therefore Marilyn Monroe LLC did not inherit that right and could not enforce it against others.

The case began in 2005 when Marilyn Monroe LLC and its licensee ("Monroe LLC") sued Milton Greene Archives, Inc. and Tom Kelley Studios, Inc. ("Milton Greene") in Indiana, claiming ownership of Marilyn Monroe's right of publicity and alleging that Milton Greene was violating that right by using Monroe's image and likeness for commercial purposes without authorization.

Milton Greene then sued Monroe LLC and others in California seeking, in part, a declaration that Monroe LLC did not own Marilyn Monroe's right of publicity.

The cases were later consolidated in the Central District of California.

In May 2007, the Central District of California granted summary judgment in favor of Milton Greene, holding that Monroe LLC did not own Marilyn Monroe's right of publicity because at the time of her death in 1962, under either New York or California law, no right of publicity could have passed through her will.  Thus, because Monroe LLC had not inherited Marilyn Monroe's right of publicity, the district court concluded that it had no standing to assert those rights against Milton Greene.

In June 2007, in direct response to the Central District of California's decision, a California state senator introduced a bill, which was enacted in September 2007, that amended California law

to provide that the California statutory right of publicity is deemed to have existed at the time of death of any deceased personality who died before January 1, 1985; is a property right, freely transferable and descendible; and, in the absence of an express testamentary transfer, could pass through the residual clause in the will of the deceased personality.

Monroe LLC then sought reconsideration of the grant of summary judgment to Milton Greene based on this change in California law.

The Central District of California granted the motion for reconsideration but again granted summary judgment in favor of Milton Greene.  The issue came down to whether California or New York law applied, which in turn would be decided based on where Monroe was domiciled at the time of her death.  If she was domiciled in California, that state's law would apply and the amendment to the law permitted Monroe's right of publicity to pass to Monroe LLC through the residual clause of her will.  But if she was domiciled in New York, that state's law would apply and because "the New York legislature had rejected Monroe LLC's efforts to amend its laws to enact a similar descendible, posthumous right of publicity," Marilyn Monroe's right of publicity would have been extinguished at her death.  Ultimately, the district court concluded that judicial estoppel precluded Monroe LLC from arguing that Marilyn Monroe was domiciled in California when she died, that therefore New York law applied, and summary judgment in favor of Milton Greene was appropriate.

Although it took the long route, the Ninth Circuit ultimately agreed with the Central District of California, stating that "[t]his is a textbook case for applying judicial estoppel":

Monroe's representatives took one position on Monroe's domicile at death for forty years, and then changed their position when it was to their great financial advantage; an advantage they secured years after Monroe's death by convincing the California legislature to create rights that did not exist when Monroe died.  Marilyn Monroe is often quoted as saying, "If you're going to be two-faced, at least make one of them pretty."  There is nothing pretty in Monroe LLC's about-face on the issue of domicile.  Monroe LLC is judicially estopped from taking the litigation position that Monroe died domiciled in California.  Our conclusion in this regard is guided by the need to preserve the dignity of judicial proceedings that have taken place over the last forty years and to discourage litigants from "playing fast and loose with the courts."

(footnote omitted).  The Ninth Circuit's opinion details at some length Monroe LLC's "about-face" on the issue of Marilyn Monroe's domicile at the time of her death.

Thus, the Ninth Circuit concluded that Marilyn Monroe died domiciled in New York, New York law applied to the question whether Monroe LLC had the right to enforce her posthumous right of publicity, and because no such right exists under New York law, Monroe LLC could not enforce the right against Milton Greene or "others similarly situated."

The case cite is Milton H. Greene Archives, Inc. v. Marilyn Monroe LLC, Case Nos. 08-56471, 08-56472 (9th Cir. Aug. 30, 2012).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

This appeal followed a third jury trial of copyright infringement claims over file sharing involving 24 sound recordings.

The first jury trial found Jammie Thomas-Rasset liable for willful copyright infringement and awarded statutory damages of $9,250 per work for a total of $222,000.  The district court subsequently granted Thomas-Rasset's motion for a new trial based on an erroneous instruction to the jury that making sound recordings available for distribution on a peer-to-peer network violates the copyright owner's distribution right regardless of whether actual distribution has been shown.  The district court concluded that making a work available to the public is not "distribution."

The second jury trial again found Thomas-Rasset liable for willful copyright infringement and awarded statutory damages of $80,000 per work for a total of $1,920,000.  Upon Thomas-Rasset's post-trial motion, the district court remitted damages to $2,250 per work for a total of $54,000, finding that the jury's award was "shocking."  The record companies declined the remitted award and thus a third trial was held limited to the question of the amount of statutory damages.

The third jury trial awarded statutory damages of $62,500 per work for a total of $1,500,000.  Thomas-Rasset moved to alter the judgment, arguing that any statutory damages award would be unconstitutional or alternatively, that the award should be reduced under the Due Process Clause.  The district court granted the motion again reducing the award to $2,250 per work for a total of $54,000, the maximum amount the court concluded was permitted by the Due Process Clause.  The district court also entered a permanent injunction against Thomas-Rasset but refused to enjoin her from "making available" copyrighted works for distribution to the public.

The record companies appealed arguing that the district court erred in granting a new trial based on the "making available" jury instruction in the first trial and in holding that the Due Process Clause limited the statutory damages award to $2,250 per work.  The companies sought reinstatement of the first jury's statutory damages award of $222,000, and an injunction that included language prohibiting Thomas-Rasset from making the copyrighted works available to the public.

Thomas-Rasset cross-appealed arguing that even the minimum statutory damages award authorized by the Copyright Act would be unconstitutional.

The Eighth Circuit first addressed what it characterized as "tactical maneuvers" that sought to either, depending on the party, obtain or avoid review of the legal question whether making copyrighted works available is part of the copyright owner's distribution right under the Copyright Act.  Noting that it "reviews judgments, not decisions on issues," the Eighth Circuit stated that the only matters in controversy were whether the record companies were entitled to damages of $222,000 and an injunction that included the "making available" language.

As to the injunction issue, the Eighth Circuit accepted, without deciding, the district court's interpretation of the Copyright Act that the distribution right did not include an exclusive right to make the recordings available to the public.  But the appeals court concluded that the district court had still erred in refusing the language the record companies sought because it had authority to issue a broad injunction even if the conduct did not violate rights under the Copyright Act "where 'a proclivity for unlawful conduct has been shown.'"  The Eighth Circuit held that such a proclivity had been shown here.

As to the statutory damages issue, the Eighth Circuit held that the award of $9,250 per infringed work for a total of $222,000, did not contravene the Due Process Clause.  The court concluded that the award was "not 'so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable,'" noting that the award fell toward the lower end of the range established by Congress (currently $750 to $150,000 per infringed work).

The Eighth Circuit also rejected the notion that the noncommercial nature of the infringement made the award severe and oppressive or wholly disproportionate to the offense, again emphasizing the wide range of statutory damages available in the Copyright Act.  And "[f]or those who favor resort to legislative history," the court noted that Congress apparently "was well aware of the threat of noncommercial copyright infringement when it established the lower end of the range."

Thus, in the end, the Eighth Circuit remanded with instructions to enter judgment for statutory damages in the amount of $222,000, and to enter a permanent injunction that precluded Thomas-Rasset from making any of the record companies' copyrighted works "available for distribution to the public through an online media distribution system."

The case cite is Capitol Records, Inc. v. Thomas-Rasset, Case No. 11-2820 (8th Cir. Sept. 11, 2012).

• Email This
• Print
• Comments
• Trackbacks
• Share Link