Pattishall IP Blog

April 27, 2012

Hey Ya! District Court Dismisses Copyright Lawsuit Against André 3000′s “Class of 3000″

Filed under: Copyright, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:40 pm

by Seth I. Appel, Trademark Attorney

In 1997, Timothy McGee pitched an animated TV series, “The Music Factory of the 90′s,” to The Cartoon Network.  McGee’s show, set in Atlanta, centered on Tony “The Play Maker” Rich, a wealthy corporate attorney who leaves his law firm to become a music producer.  The show would feature animated versions of well-known guest musicians.  Each episode would include a musical performance, and at the end of the episode the guests would appear in their live-action state.  The show would deal with serious issues such as racism and violence, and it aimed to teach viewers lessons about the music industry and life.  The Cartoon Network rejected “The Music Factory of the 90′s” because it did not meet the network’s programming needs at the time.

Nearly ten years later, The Cartoon Network debuted “Class of 3000,” an animated series co-created and co-produced by Andre “Andre 3000″ Benjamin, best known as one-half of the hip-hop duo Outkast.  This show was also set in Atlanta.  It focused on Sunny Bridges, a musical superstar who returned to Atlanta to teach, and his students at a performing arts school.  Sunny displayed supernatural abilities and lived in a magical house in the woods.  Benjamin provided the voice of Sunny, and each episode included his original music.  According to the complaint, “Class of 3000″ taught viewers lessons, and the plan was for animated versions of real artists to appear on the show.

In May 2008, “Class of 3000″ concluded its second and final season.  Shortly following, McGee brought suit against Benjamin, The Cartoon Network, and its parent company, Turner Broadcasting Systems, Inc., alleging copyright infringement and other claims.

The court granted the motion to dismiss of The Cartoon Network and TBS, the only defendants that McGee served, because McGee was unable to show probative similarity between “The Music Factory of the 90′s” and “Class of 3000.”  McGee v. Benjamin 3000, 102 U.S.P.Q.2d 1299 (D. Mass. March 20, 2012).

To demonstrate copyright infringement a plaintiff must establish (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.  There was no dispute McGee satisfied the first element.  He owned a copyright registration for a treatment of “The Music Factory of the 90′s” and related materials.  However, McGee could not demonstrate actionable copying.

In the First Circuit, establishing copying involves two steps.  First, the plaintiff must show that the defendant “actually copied the work as a factual matter,” either through direct evidence or through indirect evidence of access and probative similarity.  In comparing the works to determine similarity, only protectible elements are relevant; the court must ignore “unprotected ideas or unoriginal expressions.”  Second, if court finds probative similarity, then it considers substantial similarity.  “Two works are substantially similar if a reasonable, ordinary observer, upon examination of the two works would conclude that the defendant unlawfully appropriate the plaintiff’s protectable expression.”

The court found McGee’s claims insufficient with respect to probative similarity.  McGee’s vague references to similarities in “location, characters, content, format, and dramatis personnae” were not enough.  The only specific similarities, the court explained, were that both shows take place in Atlanta; both shows involve the music industry; and both shows involve a character who left his job to try something new.  But McGee does not have the exclusive right to any of these elements.

McGee’s argument regarding probative similarity runs up against several hurdles often encountered by those who seek to enforce a copyright in a treatment for a television show, movie, or theatrical performance. Most notably, there are very few elements of the Music Factory treatment that are original; most of the alleged similarities are noncopyrightable “basic concepts and ideas” or “stock scenes and characters.”

Because ideas are not protected by copyright, whether or not the defendants copied McGee’s ideas was irrelevant.  Further, under the scenes a faire doctrine, copyright generally does not protect “plots, subplots or themes” insofar as they are “for all practical purposes indispensable, or at least customary, in the treatment of a given subject matter.”  For example, “the plot device of a protagonist leaving one profession to embark on an unrelated profession with little experience but considerable passion is a familiar one.”

Likewise, copyright does not protect stock characters.  The court found that several characters in the parties’ shows, such as young musicians and a tough executive, were largely stock characters.  Meanwhile, the shows’ main characters – Sunny and The Play Maker – were “in certain fundamental senses … almost polar opposites.”

Therefore, McGee’s copyright claim failed based on the absence of probative similarity.  The court added that McGee also could not establish substantial similarity.  In that regard, it pointed to additional differences in “format and tone,” and added that the themes of the two shows were in conflict.  While “The Music Factory of the 90′s” celebrated the pursuit of money and fame, “Class of 3000″ emphasized the love of music and creativity.

McGee reflects the difficulty in establishing copying infringement in this context.  Copyright owners must beware that basic concepts and ideas are not protectable, nor are routine storylines or stock characters.  Superficial similarities between creative works are often not actionable.

Seth I. Appel is an associate attorney at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.

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January 18, 2012

Peter and the Wolf Leave the Public Domain – Supreme Court Holds Copyright Restoration Law is Constitutional

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:59 pm

by Uli Widmaier

On January 18, 2012, the U.S. Supreme Court held in Golan v. Holder, No. 10-545, 565 U.S. — (2012), that a law bestowing U.S. copyright protection on certain foreign works that had previously been in the public domain is constitutional under both the Copyright Clause of the Constitution and the First Amendment.  Justice Ginsburg authored the opinion.  Justice Breyer wrote a dissenting opinion, joined by Justice Alito.  Justice Kagan took no part in consideration or decision of the case.[1]

The Supreme Court’s holding is important because it affirms the accession of the U.S. to a system of international IP protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), the World Trade Organization (WTO), and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).  It also clarifies the reach of Congress’s authority under the Constitution to legislate in the copyright arena.

1.     Background

In 1989, the U.S. joined the Berne Convention for the Protection of Literary and Artistic Works.  Article 18 of the Berne Convention provides that “a work must be protected abroad unless its copyright term has expired in either the country where protection is claimed or the country of origin.”  Golan, at 3.  The U.S., however, did not comply with Art. 18.  Prior to 1998, U.S. copyright protection of foreign works was limited.  A foreign work did not enjoy copyright protection in the U.S. for one of three reasons: (1) the U.S. did not protect works from the country of the origin at the time of the work’s publication; (2) the U.S. did not protect sound recordings fixed before 1972; and (3) the work’s author had not complied with certain statutory formalities relating to copyright notice, registration, and renewal, that were formerly required under U.S. copyright law.  See Golan at 1, 4.

When the United States joined both the WTO and TRIPS, continued noncompliance with Art. 18 of the Berne Convention could have given rise to significant sanctions such as “tariffs or cross-sector retaliation.”  Golan at 8.  To bring the U.S. into compliance with Art. 18, Congress in 1998 enacted Section 514 of the Uruguay Round Agreements Act (URAA), codified at 17 U.S.C. §§ 104A & 109(a).  Section 514 “restores” copyright protection to foreign works that were not protected in the U.S. for one of the three reasons set forth above.[2]  Specifically, “restored” copyrights in such works “subsist for the remainder of the term of copyright that the works would have otherwise been granted . . . if the work never entered the public domain.”  17 U.S.C. § 104A(a)(1)(B).

Section 514 grants copyright protection to works that were previously available in the U.S. without such protection.  In other words, it removes these works from the public domain.  This has significant real-world effects.  For example, prior to enactment of Section 514, orchestras could rent the sheet music for famous musical works such as Prokofiev’s Peter and the Wolf, Stravinsky’s A Soldier’s Tale, or the great symphonies of Shostakovich for relatively low fees.  With U.S. copyright in these works newly established, the rental fees became drastically higher, making it economically impossible for many ensembles to afford to perform these works.  See generally Brief of the Conductors Guild as Amicus Curiae supporting Petitioners (filed Nov. 24, 2010).[3]

2.     The Supreme Court’s Analysis

The petitioners appealed from a Tenth Circuit ruling rejecting their argument “that Congress, when it passed the URAA [including Section 514], exceeded its authority under the Copyright Clause and transgressed First Amendment limitations.”  Golan, at 11.  The Supreme Court disagreed, refuting each of the petitioners’ arguments.

(a)     Copyright Clause – “Limited Times”

The Copyright Clause states in relevant part that “Congress shall have Power . . . [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors . . . the exclusive Right to their . . . Writings.” Art. I, §8, cl. 8.

Petitioners argued that “removing works from the public domain . . . violates the ‘lim­ited [t]imes’ restriction by turning a fixed and predictable period into one that can be reset or resurrected at any time, even after it expires.”  Golan at 14 (citations and quotation marks omitted).  According to Petitioners, the works in question had enjoyed an initial “limited term” of “zero” duration, and it was unconstitutional to extend that term.

The Supreme Court made short work of the “zero” argument.  “[S]urely a ‘limited time’ of exclusivity must begin before it may end.”  Golan, at 15.  More generally, the Court held, the term “limited times” is “best understood to mean confined within certain bounds, restrained, or circumscribed.”  Golan at 14 (citations and quotation marks omitted).  Section 514 provided a “restrained” and “circumscribed” copyright term for these former public-domain works and thus does not violate the “limited times” clause.  Golan at 14-15.

Moreover, the Court found ample historical precedent of Congress’s removing works from the public domain and giving them copyright protection.  Importantly, the Court noted, “the Copyright Act of 1790 granted protection to many works previously in the public domain.”  Golan at 16.  In short, the Court held, “[g]iven the authority we hold Congress has, we will not second-guess the political choice Congress made be­tween leaving the public domain untouched and embrac­ing [the Berne Convention] unstintingly.”  Golan at 19.

(b)     Copyright Clause – “Promote the Progress of Science and useful Arts”

Petitioners argued that the Copyright Clause mandates that any copyright laws passed by Congress must “promote the Progress of Science and useful Arts.”  Golan at 20.  But a law providing new copyright protection to an existing work in the public domain cannot possibly incentivize the creation of new works.  Therefore, according to Petitioners, such a law is unconstitutional.  Id.  The Supreme Court disagreed.  “A well-functioning international copyright system would likely encourage the dissemination of exist­ing and future works. . . . The provision of incentives for the creation of new works is surely an essential means to advance the spread of knowledge and learning. We hold, however, that it is not the sole means Congress may use “[t]o promote the Pro­gress of Science.” . . . Congress determined that exem­plary adherence to Berne would serve the objectives of the Copyright Clause. We have no warrant to reject the ra­tional judgment Congress made.”  Id. at 22-23.

3.     First Amendment

Petitioners argued that they “enjoyed ‘vested rights’ in works that had already entered the public domain,” and depriving them of these rights by withdrawing the works from the public domain violates petitioners’ First Amendment rights.  Golan, at 26.  The fact that copyright law protects First Amendment interests via doctrines such as the idea/expression dichotomy or the fair use doctrines cannot, in Petitioners’ view, compensate for Congress’s “unprecedented foray into the public domain.”  Id. (quotation marks omitted).

The Supreme Court noted that this argument depends on a premise the Curt had already rejected, “namely, that the Constitution renders the public domain largely untouchable by Congress.”  Id.  Moreover, the Court noted, granting copyright protection to Prokofiev’s Peter and the Wolf or to Shostakovich’s symphonies merely puts these works on equal footing in the marketplace with “music of Prokofiev’s U.S. contemporaries: works of Copland and Bernstein, for example, that enjoy copyright protection, but nevertheless appear regularly in the programs of U.S. concertgoers.”  Golan, at 29.  The Court stated that there is no “free speech principle [that would disarm Congress] from protecting works prematurely cast into the public domain for reasons antithetical to the Berne Convention.”  Id. at 28.

In short, “[b]y fully implementing [the Berne Convention], Congress ensured that most works, whether foreign or domestic, would be governed by the same legal regime.”  Id. at 30.  Neither the Copyright Clause nor the First Amendment prevents Congress from determining “that U.S. interests were best served by our full participation in the dominant system of international copyright protection.”  Golan, at 32.

4.     The Dissent

In dissent, Justice Breyer argued that the Copyright Clause embodies a strong “utilitarian view of copyrights and patents” and places “great value on the power of copyright to elicit new production.”  Golan, Breyer Dissent, at 5, 7.  Therefore, since a law bestowing copyright on existing works that were – often for decades – in the public domain does not in any meaningful way elicit the production of new works, the law – Section 514 – is unconstitutional.  See id.  Justice Breyer also notes the “speech-related harms” arising from Section 514, such as “restricting use of previously available material; reversing payment expectations; [and] rewarding rent-seekers at the public’s expense.”  Id. at 16.

The Court should therefore have scrutinized “with some care the reasons claimed to justify [Section 514] in order to determine whether they constitute reasonable copyright-related justifications for the serious harms, including speech-related harms, which [Section 514] seems likely to impose.”  Id. at 16-17.  Applying such scrutiny, Justice Breyer concludes that “the Copyright Clause, interpreted in light of the First Amendment, does not authorize Congress to enact this statute.”  Id. at 24.

5.     Conclusion

In Golan v. Holder, the Supreme Court strongly affirmed Congress’s authority to legislate freely in the copyright area.  “The judgment §514 expresses lies well within the ken of the political branches.”  Golan, at 32.  Neither the Copyright Clause nor the First Amendment imposes strict or inflexible limitations on Congress’s power.

From a political perspective, the Supreme Court’s decision has the important effect of affirming the place of the United States within the legal structure of international intellectual property law.  In deciding the case, the Supreme Court had Congress’s intent to protect the United States’ international interests firmly in mind.  “Those interests in­clude ensuring exemplary compliance with our interna­tional obligations, securing greater protection for U. S. authors abroad, and remedying unequal treatment of foreign authors.”  Id.

*  *  *

Uli Widmaier is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals. The firm advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Uli’s practice focuses on domestic and international trademark, copyright, trade dress and Internet law and litigation.

[footnotes]

[1] A copy of the opinion and the dissent is available at: http://www.pattishall.com/pdf/golanscotusruling.pdf.

[2] The Supreme Court noted that “[r]estoration is a misnomer insofar as it implies that all works protected under Section 104A previously enjoyed protection. Each work in the public domain because of lack of national eligibility or subject ­matter protection, and many that failed to comply with formalities, never enjoyed U. S. copyright protection.”  Golan, at 10 n. 15.

December 27, 2011

Stylish Baby Bottoms: Kimberly-Clark Wins Copyright Battle Over Diaper Jeans

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:23 pm

by Phillip Barengolts, Trademark Attorney

As the father of two little boys, I’ve changed thousands of diapers in the last three years, but never diaper jeans.  Apparently, I’m missing out.  The owner of a copyright in certain diaper jeans sued Kimberly-Clark, which sold jean diapers.[1]  Kimberly-Clark moved to dismiss the claims because the alleged designs were not substantially similar, and prevailed. Pollick v. Kimberly-Clark Corp., Case No. 11-12420 (E.D. Mich. Sep. 23, 2011).[2]   The Court stated, “Perhaps frivolous, Plaintiff’s complaint was plainly objectively unreasonable,” and granted Kimberly-Clark its attorneys’ fees as well.  Images of the plaintiff’s and defendant’s diaper designs are below.

The Judge analyzed the lack of similarities as follows:

First, the color of the diapers: Plaintiff’s diaper comes in two colors, white or light blue; Defendant’s comes in one color, dark blue. Second, the pattern of the diapers: Plaintiff’s diaper comes in two patterns, flat white or flat light blue; Defendant’s comes in one pattern, distressed blue denim. Third, the color of the stitching: Plaintiff’s diaper has red stitching; Defendant’s has either black or gold stitching. Fourth, the front pockets: Plaintiff’s diaper has two pockets, indicated by a straight line and a curved line; Defendant’s has three pockets, the larger two pockets indicated by a single curved line and a rivet at the top, and the third, smaller pocket inset within one of the larger pockets and indicated by a gently curving line and a rivet at the top. Fifth, the front fly: Plaintiff’s diaper indicates the fly with a single straight line (with no button); Defendant’s indicates the fly with a straight line and curved line, a button, and thicker hashed lines representing reinforced stitching. Sixth, the front belt loops: Plaintiff’s diaper has none; Defendant’s has two, one above each larger pocket with thicker lines representing reinforced stitching. Seventh, the back belt loops: Plaintiff’s diaper has none; Defendant’s has three with thicker lines representing reinforced stitching. Eighth, the back label: Plaintiff’s diaper has an embroidered “Diaper Jeans” on the left side of right pocket; Defendant’s diaper has a patch with “Huggies® Little Movers EST. 1975″ above the right pocket between the belt loops. And ninth, the back waist: Plaintiff’s waist is indicated by a single straight line and single v-line; Defendant’s is indicated by a double straight line and v-line.

The above contains considerable factual analysis at the motion to dismiss stage.  Under the Twombly/Iqbal standard articulated by the Supreme Court, to survive a motion to dismiss, a complaint must allege facts that are facially plausible.  Here, a picture is worth a thousand words (actually, 272 in the quoted section).  You be the judge.

For businesses facing a copyright infringement suit, this type of ruling helps pave the way for efficient resolutions of copyright disputes at the pleading stage.  Many judges, however, would not rule at such an early stage of the proceeding, preferring to allow the litigation to play out to a greater extent, including discovery.  This judge had no such qualms and clearly saw this case a certain way.

*     *     *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Oxford University Press.

[footnotes]

[1] Yes, they’re the same thing, but the parties insisted on their own names.

November 30, 2011

Green Day Awarded Attorneys’ Fees Against Artist After Defeating Copyright Infringement and Unfair Competition Claims With Fair Use Defense

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:27 pm

Categories: Copyright, Litigation
Tags: Copyright, Fair Use, Attorney’s Fees, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Green Day, a punk band most of us know for the song Good Riddance,[1] and others remember for songs like Basket Case,[2] was sued by artist Derek Seltzer for copyright infringement and unfair competition over Green Day’s use of his work Scream Icon in connection with Green Day’s song East Jesus Nowhere.[3]  More precisely, Green Day’s co-defendant Roger Staub, a photographer and set designer photographed a torn Scream Icon poster he saw on the corner of Sunset Boulevard and Gardner Avenue in Los Angeles, altered the color and contrast, added a brick background, and superimposed a red spray-painted cross over the image.  On summary judgment, Green Day defeated the copyright claim with a fair use defense and the unfair competition claim because Green Day did not use Scream Icon in a trademark manner.[4]  For a thorough discussion of that decision, see Professor Tushnet’s post at http://tushnet.blogspot.com/2011/08/fair-useaesthetic-functionality-save.html.  Seltzer has appealed the ruling and briefing is scheduled to close in April 2012.

Just before Thanksgiving, the Court awarded Green Day $128,000 and its co-defendants an additional $72,000 in attorneys’ fees.  Seltzer v. Green Day, Inc., No. 10-2103 (C.D. Cal. Nov. 17, 2011).[5]  In an arguably close case that turned on fair use analysis, why did the court grant Green Day its fees?  Let’s take a closer look.

Under the Copyright Act, a court “may award a reasonable attorneys’ fee to the prevailing party . . .” 17 U.S.C. § 505.  The court properly referred to the Supreme Court’s decision in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), which highlighted that a prevailing defendant must be treated similarly to a prevailing plaintiff in the award of attorneys’ fees.  The court observed, “The pivotal inquiry is whether the successful defense furthered the goals of the Copyright Act.”  It then proceeded to analyze the Ninth Circuit’s attorneys’ fees factors: “ (1) the degree of success; (2) frivolousness; (3) motivation; (4) the objective unreasonableness of the losing party’s factual and legal arguments; and (5) the need, in particular circumstances, to advance considerations of compensation and deterrence.

Immediately, we see a problem for the plaintiff when, according to the court, plaintiff cited to bad law in the Ninth Circuit, which had established a “dual” standard for attorneys’ fees in copyright claims – plaintiffs usually won them, defendants had to show a plaintiff’s claim was objectively unreasonable or frivolous.  The court was harsh: “Plaintiff’s citation to Hustler, a case applying the ‘dual’ standard rejected by the Supreme Court in Fogerty, edges close to an affirmative attempt to mislead the Court.” (more…)

November 22, 2011

First Amendment Right To Anonymous Speech Trumps Right To Discover Identity Of Blogger Alleged To Have Infringed Copyrighted Works of Art Of Living Foundation

Filed under: Constitution, Copyright, First Amendment — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:02 pm

Categories: Copyright, First Amendment, Constitution

Tags: First Amendment, Discovery , Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

“Skywalker’s First Amendment right to anonymous speech outweighs the need for discovery at this time.” Art of Living Foundation v. Does 1-10, No. 10-cv-05022 (N.D. Cal. Nov. 9, 2011).[1]  This statement and the decision in Art of Living Foundation has significant consequences for intellectual property owners pursuing claims against defendants hiding behind privacy services, pseudonyms, or using other identity blocking methods – an increasingly common obstacle to enforcing intellectual property rights.

But first, a few words about the parties.  The Art of Living Foundation (“AOLF”) is an international “educational and humanitarian” organization dedicated to teaching the spiritual lessons of “His Holiness Ravi Shankar.”[2]  Technically, the plaintiff in this case is the U.S. branch of AOLF.  The defendants, who go by the pseudonyms “Skywalker” and “Klim,” write blogs that criticize AOLF.  Allegedly, they are disgruntled former participants in AOLF.

After filing a complaint for defamation, trade secret misappropriation, trade libel, and copyright infringement, AOLF sought expedited discovery to learn the true identities of Skywalker and Klim.  The magistrate in the case granted this request and AOLF issued subpoenas to Google and Automattic – the companies that host the defendants’ blogs.  AOLF’s stated purpose for the subpoenas was to serve the complaint upon the defendants.  The defendants made special appearances through counsel to move to quash these subpoenas, among other motions that ultimately left only the copyright and trade secret misappropriation claims pending.[3]

(more…)

November 18, 2011

If You Build It, Will the Lawyers Come? 3D Printing and Copyright Infringement

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:09 pm

Categories: Copyright
Tags: Copyright Infringement, 3D Printing, Jake Linford

Guest Post by Jake Linford, Assistant Professor, Florida State University College of Law

As I previewed earlier this week, I want to talk about the copyright implications for 3D printers. A 3D printer is a device that can reproduce a 3-dimensional object by spraying layers of plastic, metal, or ceramic into a given shape. (I imagine the process smelling like those Mold-a-Rama plastic souvenir vending machines prevalent in many museums, a thought simultaneously nostalgic and sickening). Apparently, early adopters are already purchasing the first generation of 3D printers, and there are websites like Thingiverse where you can find plans for items you can print in your home, like these Tardis salt shakers.[1]

Perhaps unsurprisingly, there can be copyright implications. A recent NY Times blog post correctly notes that the 3D printer is primarily suited to reproduce what § 101 of the Copyright Act calls “useful articles,” physical objects that have “an intrinsic utilitarian function,” and which, by definition, receive no copyright protection…except when they do.

A useful article can include elements that are protectable as a “pictorial, graphic, [or] sculptural work.” The elements are protectable to the extent “the pictorial, graphic, or sculptural features…can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” There are half a dozen tests courts have employed to determine whether protectable features can be separated from utilitarian aspects. Courts have rejected copyright protection for mannequin torsos and the ubiquitous ribbon bike rack, but granted it for belt buckles with ornamental elements that were not a necessarily part of a functioning belt.


Print out a “functional” mannequin torso (or post your plans for it on the internet) and you should have no trouble. Post a schematic for the Vaquero belt buckle, and you may well be violating the copyright protection in the sculptural elements. But even that can be convoluted. The case law is mixed on how to think about 2D works derived from 3D works, and vice versa. A substantially similar 3D work can infringe a 2D graphic or pictorial work (Ideal Toy Corp. v. Kenner Prods. Div., 443 F. Supp. 291 (S.D.N.Y. 1977)), but constructing a building without permission from protectable architectural plans was not infringement, prior to a recent revision to the Copyright Act. Likewise, a drawing of a utilitarian item might be protectable as a drawing, but does not grant the copyright holder the right to control the manufacture of the item.

And if consumers are infringing, there is a significant risk that the manufacturer of the 3D printer could be vicariously or contributorily liable for that infringement. The famous Sony decision, which insulated the distribution of devices capable of commercially significant noninfringing uses, even if they could also be used for copyright infringement, has been narrowed both by recent Grokster filesharing decision and by the DMCA anticircumvention provisions. The easy, but unsatisfying takeaway is that 3D printers will keep copyright lawyers employed for years to come.

Back to the Tardis shakers, for a moment: the individual who posted them to the Thingiverse noted that the shaker ”is derivative of thingiverse.com/thing:1528 and thingiverse.com/thing:12278“, a Tardis sculpture and the lid of bottle, respectively. I found this striking for two reasons. First, it suggests a custom of attribution on Thingiverse, but I don’t yet have a sense for whether it’s widespread. Second, if either of those first things are protectable as copyrighted works, (which seems more likely for the Tardis sculpture, and less so for the lid) then the Tardis salt shaker may be an unauthorized, and infringing, derivative work, and the decision to offer attribution perhaps unwise in retrospect.

Cross-posted at PrawfsBlawg.

[1] The TARDIS is the preferred means of locomotion of Doctor Who, the titular character of the long-running BBC science fiction program. It’s a time machine / space ship disguised as a 1960s-era London police call box. The shape of the TARDIS, in its distinctive blue color, is protected by three registered trademarks in the UK.

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November 16, 2011

You Say You Want a Revolution: RIAA Does Not Agree that ReDigi’s “Legally Downloaded Digital Music” Marketplace Qualifies for First Sale Protection

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:11 pm

Categories:  Copyright
Tags:  Copyright, e-commerce,  Jake Linford

Guest Post by Jake Linford, Assistant Professor, Florida State University College of Law

Two potentially revolutionary “disruptive technologies” were back in the news this week. The first is ReDigi, a marketplace for the sale of used “legally downloaded digital music.” For over 100 years, copyright law has included a first sale doctrine, which says I can transfer “lawfully made” copy* (a material object in which a copyrighted work is fixed) by sale or other means, without permission of the copyright owner. The case law is codified at 17 U.S.C. § 109.

ReDigi says its marketplace falls squarely within the first sale limitation on the copyright owner’s right to distribute, because it verifies that copies are “from a legitimate source,” and it deletes the original from all the seller’s devices. The Recording Industry Association of America has objected to ReDigi’s characterization of the fair use claim on two primary grounds,** as seen in this cease and desist letter.

First, as ReDigi describes its technology, it makes a copy for the buyer, and deletes the original copy from the computer of the seller. The RIAA finds fault with the copying. Section 109 insulates against liability for unauthorized redistribution of a work, but not for making an unauthorized copy of a work. Second, the RIAA is unpersuaded there are ReDigi can guarantee that sellers are selling “lawfully made” digital files. ReDigi’s initial response can be found here.

At a first cut, ReDigi might find it difficult to ever satisfy the RIAA that it was only allowing the resale of lawfully made digital files. Whether it can satisfy a court is another matter. It might be easier for an authorized vendor, like iTunes or Kindle, to mark legitimate copies going forward, but probably not to detect prior infringement.

Still, verifying legitimate copies may be easier than shoehorning the “copy and delete” business model into the language of § 109. Deleting the original and moving a copy seems in line with the spirit of the law, but not its letter. Should that matter? ReDigi attempts to position itself as close as technologically possible to the framework spelled out in the statute, but that’s a framework designed to handle the sale of physical objects that embody copyrightable works.

This is not the only area where complying with statutory requirements can tie businesses in knots. Courts have consistently struggled with how to think about digital files. In London-Sire Records v. Does, the court had to puzzle out whether a digital file can be a material object and thus a copy* distributed in violation of § 106(3). The policy question is easy to articulate, if reasonable minds still differ about the answer: is the sale and distribution of digital files something we want the copyright owner to control or not?

As a statutory matter, the court in London-Sire concluded that material didn’t mean material in its sense as “a tangible object with a certain heft,” but instead “as a medium in which a copyrighted work can be ‘fixed.’” This definition is, of course, driven by the statute: copyright subsists once an original work of authorship is fixed in a tangible medium of expression from which it can be reproduced, and the Second Circuit has recently held in the Cablevision case that a work must also be fixed — embodied in a copy or phonorecord for a period of more than transitory duration — for infringement to occur. Policy intuitions may be clear, but fitting the solution in the statutory language sometimes is not. And a business model designed to fit existing statutory safe harbors might do things that appear otherwise nonsensical, like Cablevision’s decision to keep individual copies of digital videos recorded by consumers on its servers, to avoid copyright liability.

Potentially even more disruptive is the 3D printer, prototypes of which already exist in the wild, and which I will talk more about tomorrow.

* Technically, a digital audio file is a phonorecord, and not a copy, but that’s a distinction without a difference here.

** The RIAA also claims that ReDigi violates the exclusive right of public performance by playing 30 second samples of members’ songs on its website, but that’s not a first sale issue.

Cross-posted at PrawfsBlawg.

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October 12, 2011

District Court Denies Preliminary Injunction because Plaintiff Failed to Introduce Evidence of Irreparable Harm – Declares Presumption of Irreparable Harm in Trademark Cases Dead

Filed under: Copyright, Gray Market, Litigation — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:16 am

Categories:  Gray Market, Litigation, Copyright
Tags: Preliminary Injunction, Gray Market, Software, Copyright, Phillip Barengolts

By Phillip Barengolts, Trademark Attorney

AFL Telecommunications LLC (“AFL”) sells FUJIKARA fusion splicers[1] in the U.S. under an exclusive license from Fujikura Ltd., a Japanese manufacturer of fiber optic equipment.  AFL also is a wholly-owned subsidiary of Fujikara.  SurplusEQ.com, Inc. and friends (“SurplusEQ”) import FUJIKURA fusion splicers intended for sale outside the U.S. and sell them over the Internet to U.S. consumers.  In other words, SurplusEQ sells gray market FUJIKARA fusion splicers.

AFL sued SurplusEQ and moved for a preliminary injunction over these sales, claiming unfair competition, false advertising, and copyright infringement.[2]  SurplusEQ moved to dismiss.  The Court denied AFL’s motion for preliminary injunction because AFL failed to provide evidence of irreparable harm under the standard announced in eBay v. MercExchange L.L.C., 547 U.S. 388 (2006)[3] and Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008). It also denied SurplusEQ’s motion to dismiss, except for a common law unfair competition claim that AFL did not properly articulate.  AFL Telecomm. LLC v. SurplusEQ.com, Inc., 11-01086 (D. Ariz. Sep. 14, 2011).[4]

The facts here are relatively straightforward: 1) the parties dispute whether the U.S. market splicers are materially different from the foreign market splicers sold by SurplusEQ, which allegedly alters them in some way; and 2) the copyrighted software that operates the splicers is made abroad originally, so it falls within the type of claim allowable under Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982, 985 (9th Cir. 2008), aff’d per curiam, 131 S. Ct. 565 (2010). (more…)

July 12, 2011

A Website Providing File-Hosting or “Cyberlocker” Services to Internet Users Wins Dismissal of Disney’s Direct Copyright Infringement Claim, but Disney’s Claim for Secondary Copyright Infringement Through Hotfile Users’ Copying and Distribution of Copyrighted Material Survives

Filed under: Copyright, Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 6:29 pm

Categories: Copyright, Internet
Tags: Copyright Infringement, Internet, Secondary Liability, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Hotfile hosts files uploaded by its users.[1]  A user receives a unique link to each of his files hosted by Hotfile, so the user can access a file from anywhere with an Internet connection.  The user also can share the link to his file with others.  And that is all you probably need to know about Hotfile to understand the basis for the Motion Picture Association of America’s suit for copyright infringement, styled Disney Enterprises, Inc. v. Hotfile Corp., 1:11-cv-20427 (M.D. Fla. July 8, 2011).[2]  You can learn much more about Disney’s allegations regarding Hotfile’s business model, including its creative money generating scheme of subscribers and third-party affiliates, in the opinion by the United States District Court for the Southern District of Florida on Hotfile’s motion to dismiss both direct and secondary copyright infringement claims.

Disney alleged direct copyright infringement, as well as secondary liability under theories of inducing infringement, contributory infringement and vicarious infringement.  Hotfile moved to dismiss on the ground that it could not be liable for direct copyright infringement because it has no control over the files that a user chooses to upload to Hotfile’s servers. (more…)

July 8, 2011

Copying a Photograph Openly Available Over the Internet Constitutes Copyright Infringement, Despite Attempted Fair Use Defense by Appropriation Artist

Filed under: Copyright, Internet — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:08 pm

Categories: Copyright, Internet
Tags: Copyright Infringement, Internet, Photograph, Fair Use, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

In 1985, Glen E. Friedman took a photograph of Run DMC, a then famous and now iconic rap group, standing shoulder-to-shoulder and wearing black Stetson hats (the “Friedman Photograph”).  The photograph itself became relatively famous.  Friedman published the photograph in a not-so-family-friendly titled book F**k You Heroes, and in 2003 obtained a copyright registration for the photograph.  Thierry Guetta, an appropriation artist[1] known as Mr. Brainwash,[2] found the Photograph on the Internet and, by his own admission, used a digital image of the Friedman Photograph in the creation of his own works.  Friedman sued Guetta.[3]

On cross-motions for summary judgment, the Court for the Central District of California found that Guetta’s works infringed the Friedman Photograph.  Friedman v. Guetta, 2:10-cv-00014 (C.D. Cal. May 27, 2011).[4]  The Court denied Guetta’s motion, which was based upon an argument that the works were not substantially similar in their original aspects and the fair use defense.  (more…)

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