Pattishall IP Blog

April 28, 2011

Successfully Defend Copyright Infringement Claim – Win Attorneys’ Fees

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:55 pm

Categories: Litigation, Copyright
Tags: Copyright Infringement, Attorney’s Fees, 1st Circuit, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

The First Circuit recently confirmed that an alleged copyright infringer who prevails in the copyright infringement action can be entitled to its reasonable attorneys’ fees.  Latin American Music Co. v. American Society of Composers, Authors and Publishers, 98 U.S.P.Q.2d 1409 (1st Cir. 2011).[1]  Without getting into the details of this long-running dispute, this decision concerned Latin American Music Co.’s (“LAMCO”) appeal from an award of attorneys’ fees to the American Society of Composers, Authors and Publishers (“ASCAP”) after ASCAP won a jury verdict of non-infringement of the one song still at issue in the proceeding during trial.

Section 505 of the Copyright Act states, in relevant part, “the court may . . . award a reasonable attorney’s fee to the prevailing party as part of the costs.”  17 U.S.C. § 505.  The First Circuit noted that a “prevailing party” is “one who has prevailed on the merits of at least some claims.”  LAMCO, 98 U.S.P.Q.2d at 1411 (quotations omitted).  “A showing of frivolity or bad faith is not required; rather, the prevailing party need only show that its opponent’s copyright claims . . . were ‘objectively weak.’”  Id. (citations omitted).  Here, the First Circuit refused to disturb the district court’s finding that LAMCO’s claims were weak and its award of fees.  The First Circuit stated that it would do so “only if the record persuades us that the trial court indulges in a serious lapse in judgment.”  Id. (citation omitted). (more…)

April 8, 2011

The Likely Impact of a Federal Government Shutdown on the United States Patent and Trademark Office, Copyright Office, and Federal Courts

Filed under: Copyright, Litigation, TM Registration, Trademark (General) — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:34 am

Categories: Copyright, Litigation, TM Registration, Trademark (General)
Tags: Federal Litigation, Belinda J. Scrimenti

by Belinda Scrimenti, Trademark, Copyright, and Litigation Attorney

Like many areas of commerce to be effected in the United States, the threatened government shutdown – currently scheduled for midnight on Friday, April 9, 2011 – will impact trademark owners, copyright applicants, and federal court litigants.  Immediately available information suggests that a brief shutdown would have little impact, but the impact of a longer shutdown is uncertain.  We will keep current status information posted here.

Patent and Trademark Office

The United States Patent and Trademark Office (“USPTO”) has announced that, in the event the April 9, 2011 shutdown comes to pass, it will remain open and will continue to operate as usual for a period of six business days, through Monday, April 18, 2011.  The USPTO is able to keep its doors open because it has enough available reserves, not linked to the current fiscal year, to remain in operation until that date.  Should a shutdown occur and continue longer than the six-day period, the USPTO has advised that it “anticipate[s] that limited staff will be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.”  The USPTO has advised that it will continue to post information on its website as it becomes available. (more…)

January 11, 2011

Filing Requests With eBay That Improperly Allege Copyright Infringement Can Result in Liability Under Section 512(f) of the DMCA

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:50 pm

Categories: Copyright
Tags: Copyright, Digital Millennium Copyright Act

by Phillip Barengolts, Trademark Attorney

The Digital Millennium Copyright Act (DMCA) offers copyright owners and Internet service providers with new avenues to assert and avoid liability.  As part of the DMCA’s regime, a copyright owner can request that a service provider, e.g., a website, which hosts third-party content that the copyright owner deems infringing to take down such content.  However, a copyright owner who misrepresents to a service provider that third-party content is infringing can be held liable to the alleged infringer for any damages incurred by the improper takedown of the third-party content.  In particular, Section 512(f) provides in pertinent part: “[a]ny person who knowingly materially misrepresents under this section . . . that material or activity is infringing . . . shall be liable for any damages .. . incurred by the alleged infringer . . . who is injured by such misrepresentation, as the result of the service provider . .. removing or disabling access to the material or activity claimed to be infringing . . . .” 17 U.S.C. § 512(f).

In Design Furnishings, Inc. v. Zen Path, LLC, Civil Action No. 2:10-2765 (E.D. Cal. 2010),[1] the parties both sold wicker furniture predominantly through eBay.  Zen Path sent numerous takedown requests to eBay based upon its alleged ownership of copyrights in various furniture designs, which eBay honored, resulting in a substantial reduction of Design Furnishings’ sales and injury to Design Furnishings’ reputation among eBay users.  After some fruitless exchanges between the parties regarding the copyrightability of Zen Path’s furniture designs and other matters, Design Furnishings filed suit and requested a preliminary injunction to stop Zen Path’s submission of takedown requests to eBay.  Design Furnishings’ primary allegation was that Zen Path did not own copyrights in the furniture at issue and knowingly misrepresented its ownership of protectable rights to eBay in violation of Section 512(f).  Ultimately, the Court granted a preliminary injunction to the plaintiff prohibiting the defendant from “notifying eBay that defendant has copyrights in the furniture and that plaintiff’s sales violate these copyrights.” (more…)

January 4, 2011

How to Analyze Substantial Similarity in a Copyright Infringement Claim: Susan Hassett’s Self-Published “Living with Celiac Disease” versus Elisabeth Hasselbeck’s “The G Free Diet”

Filed under: Copyright — Tags: — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:58 pm

Categories: Copyright
Tags: Substantial Similarity

by Phillip Barengolts, Trademark Attorney

Susan Hassett, a self-published author, sued Elisabeth Hasselbeck, her publisher, and an alleged ghost-writer for allegedly copying her book Living with Celiac Disease.  Hassett claimed to have mailed her book to Hasselbeck about one year prior to the publication of Hasselbeck’s book about celiac disease, The G Free Diet, and that Hasselbeck copied Hassett’s book.  Hasselbeck obtained summary judgment because the Court found that “a rational factfinder, correctly applying the pertinent legal standards, would be compelled to conclude that no substantial similarity exists between [the books].” Hassett v. Hasselbeck, C.A. No. 09-12034 (D. Mass. Dec. 3, 2010).[1] The Court’s choice of procedure and analysis of the similarities of the works are instructive for those seeking to claim copyright infringement in self-published works and those wanting to defend themselves from such claims.

To expedite the lawsuit the Court converted Hasselbeck’s motion to dismiss to a summary judgment motion under Fed. R. Civ. P. 12(d).  Significantly, this permitted the court to enter judgment for Hasselbeck after deciding the motion rather than giving Hassett another chance by filing an amended complaint.  In cases of two published works where the only real issue is similarity, such a choice seems reasonable to resolve the parties’ dispute quickly. (more…)

December 4, 2010

Fourth Time’s the Charm: Fashion Designs May Soon Receive Copyright Protection

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 8:53 am

by Jasmine Davis, Trademark Attorney

On December 1, 2010, the fashion industry came a little closer to specialty copyright protection for fashion designs.  The Innovative Design Protection and Piracy Prevention Act (“IDPPPA”) was unanimously passed by the Senate Committee on the Judiciary.  The bill, introduced by New York Senator Charles Schumer, is the fashion industry’s fourth attempt to gain protection against knockoffs.   Previously, Senator Schumer had introduced three versions of the Design Piracy Prohibition Act (“DPPA”), which all faced criticism from both Congress and some members of the fashion industry.  The IDPPA, a substantial shift from the DPPA, has the support of fashion heavyweights such as Diane von Furstenberg and the Council of Fashion Designers of America, as well as organizations that previously opposed the DPPA, such as the American Apparel and Footwear Association.  Originally, the American Apparel and Footwear Association opposed the DPPA because it allowed designers to seek legal action against designs that were substantially similar to the registered designs.  The organization changed its stance and now supports the IDPPPA due to its “substantially identical” language, heightened pleading standard, and lack of a formal registration process for fashion designs. (more…)

August 17, 2010

Government Filings Made Publicly Available Through Government Web Sites May Maintain Copyright Protection

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:26 pm

by Phillip Barengolts

Nowadays, nearly all filings to a federal court or an administrative agency, such as the USPTO or the SEC, are available to the general public through government web sites (e.g., PACER, EDGAR, TESS, PAIR, and others).  Businesses (and lawyers) often wonder whether their submissions are protected by copyright or if copying another’s publicly available document violates copyright law.  In a matter of first impression, one court recently found that copying a work that is available to download and use through a government web site may constitute copyright infringement.

In International Swaps & Derivatives Association, Inc. v. Socratek, LLC, No. 09 CV 8033  (S.D.N.Y. May 4, 2010) (available at http://scholar.google.com/scholar_case?case=41428918949911 51874&q), the Southern District of New York  found that the mass resale of U.S. Securities and Exchange Commission (“SEC”) filings that include copyrighted material and that are available through the EDGAR database[1] may violate the Copyright Act. (more…)

May 6, 2010

Second Circuit Rules against J.D. Salinger, Invalidates Presumption of Irreparable Harm when Considering Preliminary Injunctions in Copyright Cases

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 7:30 pm

by Phillip Barengolts, Esq.

J.D. Salinger wrote The Catcher in the Rye, became a sensation, and then disappeared—except for the occasional copyright suit.  In Salinger v. Colting, No. 09-2878-cv, slip op. (2d Cir. Apr. 30, 2010), the Second Circuit vacated and remanded for further consideration the district court’s decision to grant Salinger a preliminary injunction against the publication in the United States of Frederick Colting’s 60 Years Later: Coming Through the Rye.[1]

The Second Circuit’s decision did not turn on any error in the lower court’s logic—Judge Calabresi, writing for a unanimous panel, upheld the lower court’s findings that Salinger likely would prevail on the merits of his copyright claim because (1) the works at issue were substantially similar and (2) Colting was not likely to prevail on a fair use defense—but instead on a change to the Second Circuit’s standard for granting injunctions, both preliminary and permanent, in response to the Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).

(more…)

April 27, 2010

Supreme Court to Examine Application of Copyright Law’s First Sale Doctrine to Importation of Gray Market Goods

Filed under: Copyright, Gray Market — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:18 pm

by Uli Widmaier, Trademark Attorney

Does copyright law’s first sale doctrine apply to imported goods manufactured abroad that are not intended for the United States market?  That is the question on which the Supreme Court recently granted certiorari in Costco Wholesale Corp. v. Omega, S.A., No. 08-1423 (Apr. 19, 2010).  Costco purchased genuine Omega “Seamaster” from an entity that acquired the watches outside the U.S. and imported them into the U.S. without Omega’s authorization.  Costco ultimately sold the watches to consumers at 35% below the price Omega normally charged in the U.S.  To stop this practice, Omega engraved a small design on the back of these watches, registered it with the U.S. Copyright Office, and then sued Costco for copyright infringement in the Central District of California, alleging violations of Sections 106(3) and 602(a) of the Copyright Act, 17 U.S.C. §§ 106(3), 602(a).  The district court entered summary judgment in Costco’s favor, but the Ninth Circuit Court of Appeals reversed.  Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008). (more…)

April 9, 2010

Supreme Court Justice John Paul Stevens to Retire: An Important Contributor to Copyright, Trademark, and First Amendment Law Steps Aside

Filed under: Copyright, First Amendment, Pattishall — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:41 pm

by Uli Widmaier, Trademark Attorney

Earlier today, Associate Justice John Paul Stevens informed the President of his intention to resign from the U.S. Supreme Court at the end of the current term.  It is with utmost respect and admiration that we consider his contributions to the development of intellectual property and Internet law.

A close personal friend of former Pattishall McAuliffe managing partner, Beverly Pattishall (1916-2002), Justice Stevens has written some of the most influential decisions in these areas.  Undoubtedly, the most famous of these is his majority opinion in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), which defined the law of contributory copyright infringement for decades to come.  Universal challenged Sony’s sale of home videotape recorders on the ground that purchasers could use the devices to infringe content providers’ copyrights by copying television programs.  The facts of the case ensured that the decision would guide the interplay of technology and copyright law through the tumultuous growth of the Internet.  Sony was a complex and hotly contested case, decided 5-4 with a powerful and lengthy dissent by Justice Blackmun.  Nevertheless, its holding can be distilled into a simple but immensely influential formula: selling a technology that may enable third parties to infringe existing copyrights does not give rise to liability for contributory copyright infringement if the technology is “capable of commercially significant noninfringing uses.”  Id. at 442 (emphasis added).  Speaking through Justice Stevens, the Supreme Court found that Sony’s Betamax videotape technology indeed was capable of such uses; therefore Sony’s sale of Betamax equipment did not constitute contributory copyright infringement.  Id. at 456. (more…)

March 9, 2010

U.S. Supreme Court Upholds Federal Court Jurisdiction Over Copyright Infringement Claims For Unregistered Works: Reed Elsevier Inc. v. Muchnick

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:58 pm

By Belinda J. Scrimenti, Esq.

Nearly nine years after its seminal decision regarding copyright law and electronic publication in New York Times Co. v Tasini,[1] the United States Supreme Court addressed jurisdictional issues arising from authors’ post-Tasini claims.  On March 2, 2010, the Court held in Reed Elsevier, Inc. v. Muchnick,[2] that, while Section 411(a) of the Copyright Act makes registration a precondition to filing a copyright infringement suit, it is not a jurisdictional requirement.  The decision likely will lead to final resolution of an $18 million settlement in the underlying litigation.  The Supreme Court’s unanimous holding[3] reversed the Second Circuit Court of Appeals’ decision,[4] which held that the district court lacked jurisdiction to certify a class and approve a settlement because some of the class members’ copyrighted works were unregistered. (more…)

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