Pattishall IP Blog

March 23, 2017

“Give Me A C . . .” (for Copyrightable)

Filed under: Copyright — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:06 pm

By Seth I. Appel

On March 22, the Supreme Court found that Varsity Brands’ cheerleader uniform designs –arrangements of colors, shapes, stripes and chevrons, shown below  – may be subject to copyright protection.  Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. __ (2017), https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf.

Varsity Brands, the leading producer of cheerleader uniforms, brought suit for copyright infringement based on a competitor’s sale of similar uniforms.  In order to prevail, Varsity Brands had to prove that it owned valid copyrights in its designs.

Copyright protects “works of authorship” including “pictorial, graphic, and sculptural works.”  17 U.S.C. § 102(a)(5).  It typically does not protect useful articles.  However, the design of a useful article may be protected to the extent that “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  17 U.S.C. § 101.

In yesterday’s  decision, the Supreme Court clarified the “separability” analysis.  It held that a feature incorporated into the design of a useful article is eligible for copyright if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work on its own or when fixed in some other medium.  Under this test, Varsity Brands’ designs were sufficiently separable to permit copyright protection.

Courts previously have struggled with the “separability” analysis, leading to different tests throughout the country.  The Supreme Court yesterday rejected the notion of “physical” separability adopted by some courts and commentators.  The statutory text of the Copyright Act, the Court explained, indicates that “separability is a conceptual undertaking.”

The Copyright Act does not expressly protect fashion designs, but yesterday’s decision will make it easier for designers to protect and enforce their creative works.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

October 16, 2015

Second Circuit Authors Guild v. Google, Inc. – Google Books Does Not Infringe Authors’ Copyright

Filed under: Copyright — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:22 pm

Widmaier_Uli_1 F LRKAB - Low ResBy: Uli Widmaier and Kristine A. Bergman

In the latest development in the 10-year legal battle between the Authors Guild and Google, the Second Circuit affirmed the district court’s grant of summary judgment in Google’s favor and held that Google Book’s search and snippet functions were “transformative” under the test of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) and thus constituted fair use of the published books under copyright that the plaintiffs had authored.

The court, in a unanimous decision written by Judge Pierre Leval, provides a lucid summary of the relevant facts:

Through its Library Project and its Google Books project, acting without permission of rights holders, Google has made digital copies of tens of millions of books, including Plaintiffs’, that were submitted to it for that purpose by major libraries. Google has scanned the digital copies and established a publicly available search function. An Internet user can use this function to search without charge to determine whether the book contains a specified word or term and also see “snippets” of text containing the searched-for terms. In addition, Google has allowed the participating libraries to download and retain digital copies of the books they submit, under agreements which commit the libraries not to use their digital copies in violation of the copyright laws. These activities of Google are alleged to constitute infringement of Plaintiffs’ copyrights.

Slip op., pp. 2–3.

The plaintiffs made five distinct arguments, each of which the Court rejected:

(1) Plaintiffs argued that Google’s copying of entire books, together with letting readers search them and view “snippets” of them, is not “transformative” under Campbell. Slip op., p. 3.

The court found that making searchable copies and providing snippets to the public was “a highly transformative purpose” because it “augmented public knowledge” and revealed only as much as was essential to “permit searchers to identify and locate the books in which words or phrases of interest to them appeared.” Id., pp. 4, 21. While the snippet view allows users to read portions of the copyrighted book, it “communicates little of the sense of the original” and provides only “enough context surrounding the searched term to help [the searcher] evaluate whether the book falls within her scope of interest” the use was still “highly transformative [for the] purpose of identifying books of interest to the searcher.” Id., p. 23, 33.

(2) Plaintiffs argued that Google’s overall profit motive and its goal of “use its dominance of book search to fortify its overall dominance of the Internet search market” preclude a finding of fair use, even though Google does not charge for access to the books and provides the functionality in question without advertising. Id., pp. 3, 24.

The court saw “no reason in this case why Google’s overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose, together with the absence of significant substitutive competition, as reasons for granting fair use.” Id., p. 26. The court also noted that “[m]any of the most universally accepted forms of fair use, such as news reporting and commentary, quotation in historical or analytic books, reviews of books, and performances, as well as parody, are all normally done commercially for profit.” Id.

(3) Plaintiffs argued that Google infringes their derivative rights by cutting into potential licensing revenues. Id., pp. 3–4.

The court found that “the copyright resulting from the Plaintiffs’ authorship of their works does not include an exclusive right to furnish the kind of information about the works that Google’s programs provide to the public. For substantially the same reasons, the copyright that protects Plaintiffs’ works does not include an exclusive derivative right to supply such information through query of a digitized copy.” Id., p. 37.

(4) Plaintiffs argued that Google’s digital copies of plaintiffs’ books are vulnerable to hackers who might distribute the books for free on the Internet. Id., p. 4

The court conceded that “this claim has a reasonable theoretical basis, [since] unreasonably expos[ing] the rights holder to destruction of the value of the copyright resulting from the public’s opportunity to employ the secondary use as a substitute for purchase of the original” may rebut a fair use claim. Id., p. 41. However, the court found that plaintiffs’ claim is “not supported by the evidence” because Google Books’ digital scans are protected by “impressive security measures” that were praised by “plaintiffs’ own security expert.” Id., p. 42.

(5) Finally, Plaintiffs argued that “Google’s distribution of digital copies to participant libraries is not a transformative use.” Id., p. 4.

The court found that “the possibility that libraries may misuse their digital copies is sheer speculation. Nor is there any basis on the present record to hold Google liable as a contributory infringer based on the mere speculative possibility that libraries, in addition to, or instead of, using their digital copies of Plaintiffs” books in a non-infringing, manner, may use them in an infringing manner.” Id., p. 45.

Throughout the decision, the court acknowledged that at risk is an important tool for public knowledge. As the court noted, “giving authors absolute control over all copying from their works would tend in some circumstances to limit, rather than expand, public knowledge. Google Books, however, “augments public knowledge by making available information about Plaintiff’s books.” Id., p. 13. Many of these books, as the court observed, are out of print, so Google Books “provide[s] otherwise unavailable information” about these works. Id., p. 18.

This decision may prove a landmark case for copyright litigants and scholars alike, as it presents useful guidance on how courts should define what is “transformative use.” The battle may not be over yet, however: the next step may be a petition for certiorari.

*     *     *

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.

Kristine A. Bergman is a new associate (pending admission) with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, rejoining the firm after working as a summer associate in 2014. Kristine received her J.D., cum laude, from Loyola University Chicago School of Law in 2015.

For a printer-friendly version, click here.

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.

For a printer-friendly version, click here.

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…)

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…)

Blog at WordPress.com.