Pattishall IP Blog

May 22, 2017

11th Circuit Requires Copyright Registration Certificate in Hand to File Infringement Action, Deepening Circuit Split

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:13 pm

By Jason Koransky

The Copyright Act sets what seems to be a straightforward threshold for a plaintiff to bring an infringement claim — “preregistration or registration of the copyright claim.” 17 U.S.C. § 411(a). This seemingly simple requirement, however, has led to a significant circuit split on whether “registration” occurs upon merely filing an application with the Copyright Office or when the Copyright Office actually issues a registration certificate. This split only deepened on May 18, 2017, when the Eleventh Circuit ruled in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC (Case No. 16-13726) that a plaintiff must have a registration certificate in order to bring a claim.[1]

The Eleventh Circuit detailed the existing circuit split, and sided with the Tenth Circuit to adopt the registration requirement. In contrast, the Ninth and Fifth Circuits have both held a plaintiff needs only to have filed an application for the asserted copyright in order to bring a suit. This approach assumes that the registration itself eventually issues in due course.  The “application” rule was approved by the Eighth Circuit in dicta, while the Seventh Circuit has endorsed — also in dicta — both approaches in separate matters. Further, the First and Second Circuits have discussed this split, yet neither court has expressly endorsed an approach.

Considering the potentially long delays in obtaining a registration after filing an application with the Copyright Office, the Eleventh Circuit’s decision in Fourth Estate emphasizes that copyright owners should be diligent in filing copyright applications in a timely manner. Otherwise, if the proper venue for an infringement claim is the Eleventh Circuit, a party could be left with no recourse in court while waiting . . . and waiting . . . to obtain a copyright registration.

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[1] The decision is available for download at the court’s website, http://media.ca11.uscourts.gov/opinions/pub/files/201613726.pdf.

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.

May 12, 2017

Humanity Hates Trump may ________ Cards Against Humanity’s Trademark and Copyrights

Filed under: Copyright, Licensing, Trade Dress, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:42 am

By Paul A. Borovay

Chicago’s own Cards Against Humanity, the vulgar/raunchy/funny/the-opposite-of-politically-correct card game, filed a lawsuit against SCS Direct for its selling card sets called “Humanity Hates Trump.”[1]  Humanity Hates Trump – along with Humanity Hates Hillary Too!, to be non-partisan about it all – card sets are available on its website.[2]

SCS Direct displays the following disclaimer on its website:

This set is in no way endorsed or affiliated with Donald J. Trump himself or Cards Against Humanity™, a registered trademark of Cards Against Humanity LLC, nor does it represent the views of SCS Direct Inc.

The focus of the case is whether the Humanity Hates Trump cards infringe Cards Against Humanity’s trademark and copyrights.

Cards Against Humanity makes its cards available for free download through a Creative Commons license, namely, the “Attribution-Non Commercial-ShareAlike 2.0 Generic (CC BY-NC-SA 2.0)” license.[3]  While the name is a mouthful, the license is actually rather simple.  Licensees can share, copy, and adapt the Cards Against Humanity game as long as they give credit to Cards Against Humanity, make their adapted product available under the same license, and not use the borrowed material for commercial purposes.[4]

SCS Direct clearly sells its Humanity Hates Trump cards online for commercial gain, and its cards use the same simplistic, black and white appearance of the Cards Against Humanity products.

The case touches on several interesting issues.  Is Cards Against product appearance protected under trade dress law?  Are its cards protected under copyright law?  Do the Humanity Hates Trump cards “remix, transform, and build upon the [Cards Against Humanity] material,” as described in the Creative Commons license?  Or, are the Humanity Hates Trump cards a separate product not covered under the CC BY-NC-SA 2.0 license?  How much latitude do licensees have under the license, or Creative Commons licenses in general, with respect to making, offering (for free), or selling “adapted” products?  Maybe none, maybe some.  We’ll see.

_____________________________

[1] Cards Against Humanity LLC v. SCS Direct Inc. et al., case number 1:17-cv-02781 (E.D.N.Y. May 8, 2017).
[2] See https://humanityhatestrump.com/.
[3] See https://cardsagainsthumanity.com/ and http://s3.amazonaws.com/cah/CAH_MainGame.pdf.
[4] The license is available on the Creative Commons website.  See https://creativecommons.org/licenses/by-nc-sa/2.0/.

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.

May 9, 2017

Charging Bull vs. Fearless Girl

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:48 am

 

By Robert W. Sacoff

Charging Bull vs. Fearless Girl.  Now here’s a cultural and legal tangle you don’t see every day.  On the copyright front, Fortune Magazine had an interesting article at http://fortune.com/2017/04/16/fearless-girl-copyright/ suggesting that the contrarian little girl statue confronting the charging Wall Street Bull would not violate the Visual Artist Protection Act.  Even if the Bull were considered in the category of site-specific art, which has not fared well under VARA, as a University of Michigan blog post discusses at http://artsatmichigan.umich.edu/ink/2014/02/19/site-specific-art-and-the-law/.  The socio-economic debate will likely outlive any legal challenge or threat.

 

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.

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.

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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.

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March 16, 2015

‘Blurred Lines’ Verdict Creates Unpredictable Music Copyright Landscape

Filed under: Copyright — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:47 pm

Jason Koransky F HRby Jason Koransky, Associate

The recent verdict that Robin Thicke and Pharrell Williams’ hit “Blurred Lines” infringed the copyright to the late Motown legend Marvin Gaye’s composition “Got To Give It Up” has generated significant media attention.[1] And this coverage has certainly been compounded by the eye-popping $7.4 million in damages the California jury awarded Gaye’s heirs.

Controversy and debate have raged about whether the jury was correct, with the primary issue being whether Thicke and Williams actually copied “Got To Give It Up,” or were simply inspired by Gaye’s late-’70s soul/funk composition. Of course, copyright protection does not extend to a musical idea, genre, or overall “feel” of a song. Rather, copyright protects a musical expression fixed in a tangible medium — here, the written composition filed with the U.S. Copyright Office for “Got To Give It Up.” (Gaye’s estate does not own the copyright to the sound recording of “Got To Give It Up,” and thus could not assert that “Blurred Lines” infringed the recording.)

Thicke and Williams made this idea vs. expression dichotomy the primary issue in their complaint for a declaratory judgment of non-infringement: “Being reminiscent of a ‘sound’ is not copyright infringement. The intent in producing ‘Blurred Lines’ was to evoke an era. In reality, the Gaye defendants are claiming ownership of an entire genre, as opposed to a specific work . . . .”

The jury disagreed with this argument. Weighing evidence such as competing expert testimony, recordings of the compositions (interestingly, the judge only allowed the jury to hear a new recording of Gaye’s composition that was made for the litigation and which was based on the music filed with the Copyright Office), and testimony from Thicke and Williams regarding the creation of “Blurred Lines,” the jury found that Thicke and Williams incorporated too many elements of “Got To Give It Up” into “Blurred Lines,” such that it crossed the line from “inspired by” to “copying.”

Does this verdict represent a slippery slope in copyright law, in which songwriters now have grounds to plead infringement when another composition has a similar “feel” but does not actually copy a song? Further, could this decision extend to other media, such as film, literary works, or photography, in which new works are often inspired by those which precede them? (more…)

October 2, 2014

Not Quite “Happy Together” – Recording Industry Scores Significant Victory in First Major Pre-1972 Sound Recordings Performance Rights Decision

Filed under: Copyright, Internet, Litigation — Tags: , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:40 am

by Jason Koransky, Associate

When Sirius XM broadcasts “Happy Together,” “It Ain’t Me Babe,” and other hit recordings from The Turtles through its satellite and Internet radio services, it infringes the copyrights to these recordings, according to a court in the Central District of California.

In an order issued September 22, 2014, in Flo & Eddie Inc. v. Sirius XM Inc., 2:13-cv-05693 (C.D. California: Public performances of pre-1972 sound recordings protected by California copyright law)[1], the record industry scored a significant victory in the first major court ruling on the issue of state copyright protection for public performances of pre-1972 sound recordings. The court granted Flo & Eddie summary judgment on its claim that Sirius’ unlicensed public performances of its sound recordings violated California Civil Code § 980(a)(2), the section in California’s copyright statute that applies to pre-1972 sound recordings. Flo & Eddie is the corporation owned and operated by Howard Kaylan and Mark Volman, founding members and the lead singer and guitarist, respectively, of the 1960s pop group The Turtles. Because the case involves only California state law, however, the court’s ruling is limited in scope to public performances of these recordings in the state of California.

This case is one of a series of lawsuits that seek royalties for public performances by new media music services such as Sirius XM and Pandora of sound recordings created before February 15, 1972, based on the argument that state law protects these recordings from such unlicensed uses. While music compositions have long enjoyed copyright protection under U.S. copyright law, only in 1972 did Congress extend copyright protection to sound recordings. Individual states, however, had enacted their own copyright statutes, which co-existed with the federal Copyright Act until the enactment of the 1976 Copyright Revision Act, which preempted these state laws. The 1976 federal law, however, expressly carved out a preemption exemption to sound recordings created before February 15, 1972. See 17 U.S.C. § 301(c) (“With respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2067.”)

In 1995, Congress expanded the rights attached to a sound recording when it passed the Digital Performance Right in Sound Recordings Act, which added digital audio transmissions of sound recordings to the exclusive bundle of rights a copyright grants. See 17 U.S.C. § 106(6). SoundExchange has emerged as the performance rights organization that collects the compulsory license fees that non-interactive digital music services—including Sirius XM—pay to perform these recordings.

But Sirius did not pay, and SoundExchange did not attempt to collect, royalties for pre-1972 recordings, as these do not have federal copyright protection. The digital public performance rights that owners of these sound recordings possess have existed in a sort of legal limbo based on the interpretations of state copyright statutes. Flo & Eddie owns the rights to The Turtles’ recordings, and tested these legal waters by suing Sirius for violating California copyright law—and bringing claims for unfair competition, conversion, and misappropriation—for broadcasting its sound recordings.

The case boiled down to statutory construction. The applicable statute, California Civil Code § 980(a)(2), reads (with emphasis added):

The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound recording.

Flo & Eddie argued that “exclusive ownership” of sound recordings encompasses the right to control public performances of these recordings. Sirius argued that because the statute did not expressly specify the public performance right, it was not included in the “exclusive ownership” of a recording. Based on the plain language of the statute, its legislative history, and two court decisions which implied that the California statute granted the owner of a sound recording the exclusive right to control public performances of its recordings, the court agreed with Flo & Eddie’s interpretation. As such, because no dispute existed that Sirius had broadcast The Turtles’ recordings without a license, the court granted Flo & Eddie’s summary judgment motion that these public performances infringed their sound recording copyrights. The court also granted Flo & Eddie summary judgment on its unfair competition, conversion, and misappropriation claims.

This case has the potential to create significant revenue streams for major record labels and other owners of pre-1972 sound recordings. Conversely, it presents new licensing and business challenges to Internet, satellite, and other new media non-interactive music service providers. Of course, a treasure trove of artistically and commercially successful music was recorded before 1972—think Elvis, The Beatles, Jimi Hendrix, Miles Davis, Duke Ellington … the list could go on and on. A huge void would exist if Sirius simply stopped broadcasting these recordings. As such, the full implications of the decision in the Flo & Eddie case may take years to emerge, especially considering that the decision applies only in California. For example, a court interpreting another state’s law could issue an opposite decision. But in practicality, Sirius could most likely not block its broadcasts from California. So if this decision is affirmed on appeal, new licensing requirements will likely emerge for digital public performances of pre-1972 sound recordings.

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Jason Koransky is an associate 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, trade secret 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. Jason’s practice focuses on trademark, trade dress, copyright and false advertising litigation, as well as domestic and international trademark prosecution and counseling. He is co-author of the book Band Law for Bands, published by the Chicago-based Lawyers for the Creative Arts.

[1] http://www.soundexchange.com/wp-content/uploads/2014/09/Flo-Eddie-v.-Sirius-XM-Order-on-MSJ.pdf

 

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June 26, 2014

Aereo’s Internet-Based Television Streaming Services May Be Wizardry, But the Supreme Court is in No Mood for Magic

Filed under: Copyright, Internet, Litigation — Tags: , , , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:17 pm

Ekhoff_Jessica_2 F LRby Jessica Ekhoff, Associate

Describing its Internet-based television streaming services, tech start-up Aereo proclaims, “It’s not magic. It’s wizardry.”[1] In yesterday’s 6-3 decision the Supreme Court disagreed, or at the very least, adopted a staunchly anti-wizardry stance.[2]

Justice Breyer, writing for the majority in American Broadcasting Cos. v. Aereo, Inc., characterized the issue before the Court as whether “Aereo, Inc., infringes this exclusive right [of public performance under §106(4) of the Copyright Act] by selling its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over air.”[3] Despite Aereo’s self-description as a mere equipment supplier doing no “performing” of its own, the Court held in the affirmative.

The Court analyzed the issue in two parts: whether Aereo “performed” under the Copyright Act, and if so, whether the performance was “public.”

In concluding that Aereo did, in fact, perform under the Copyright Act, the majority of the Court turned to the 1976 amendments to the Act, which were adopted, in large part, to bring community antenna television, or CATV—the precursor to cable television—within the scope of the Act. CATV functioned by placing antennas on hills above cities, then using coaxial cables to carry the television signals received by the antennas into subscribers’ homes. CATV did not select which programs to carry, but rather served as a conduit for the transmission and amplification of television signals. Before the 1976 amendments, Supreme Court precedent considered CATV to be a passive equipment supplier that did not “perform” under the Act.[4] After the amendments, to “perform” an audiovisual work such as a television program meant “to show its images in any sequence or to make the sounds accompanying it audible.”[5] CATV thus “performed” the shows it transmitted because it both showed the television programs’ images to its subscribers, and made the accompanying sounds audible. Over a strong dissent authored by Justice Scalia[6], the majority found that, because its services were so similar to those once offered by CATV, Aereo also “performed” under the post-1976 definition of the term.[7]

Having determined that Aereo’s services constitute a performance under the Copyright Act, the Court next turned to the issue of whether those performances are public. Aereo argued its services do not constitute public performance because whenever a subscriber selects a program to watch, Aereo places a unique copy of the show in that subscriber’s folder on Aereo’s hard drive, which no one other than that subscriber can view. If another subscriber wants to watch the same show, she will receive her own copy of the program in her own folder from Aereo. The Court dismissed this argument, finding the “technological difference” inconsequential in light of Congress’s clear intent to bring anything analogous to CATV within the scope of the Copyright Act’s requirements. Under the post-1976 Act, an entity performs a copyrighted work publicly any time it “transmits” a performance. A performance is “transmitted” when it is communicated by any device or process beyond the place from which it is sent, whether the recipients receive the transmission at the same time and place, or at different times and places.[8] Aereo therefore publicly performs a copyrighted television program each time its system sends a copy of that program to a subscriber’s personal Aereo folder.

The majority characterized its holding as a “limited” one, and was careful to emphasize that its decision does not apply to other new technologies, such as cloud-based storage and remote storage DVRs. But with a slew of amici curiae predicting the decision could have a catastrophic impact on the tech industry, there are surely some who will take no comfort from the Court’s assurances. Aereo, unfortunately, may not have a spell to resurrect itself.

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Jessica Ekhoff is an associate 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, trade secret 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. Jessica’s practice focuses on trademark, trade dress, copyright and false advertising litigation, as well as film clearance, media and entertainment, and brand management.

[1] https://www.aereo.com/about

[2] http://www.supremecourt.gov/opinions/13pdf/13-461_l537.pdf

[3] American Broadcasting Cos. v. Aereo, Inc., No. 13-461, slip op. at 1, 573 U.S. __ (2014).

[4] Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968); Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974).

[5] 17 U.S.C. § 101.

[6] Justice Scalia argues that Aereo does not “perform” because it is the subscriber, rather than Aereo, who selects the program she wishes to watch, which in turn activates the individual antennae Aereo has assigned to her for the purpose of viewing that program. This means it is the subscriber who is doing the performing, since she is the one rousing Aereo’s antennae from dormancy and calling up a specific program to watch. Justice Scalia went on to note that although he disagrees with the majority’s interpretation of “perform,” he agrees that Aereo’s activities ought not to be allowed, either because Aereo is secondarily liable for its subscribers’ infringement of the Networks’ performance rights, or because it is directly liable for violating the Networks’ reproduction rights. If future courts fail to find Aereo liable under either of those theories, Justice Scalia advocates relying on Congress to close the loophole. Slip Op. at 12.

[7] Slip Op. at 8.

[8] 17 U.S.C. § 101.

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April 29, 2014

Performance of Magic Trick Protected Under Copyright Law, Nevada District Court Holds

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:03 am

SIA-LRBy: Seth I. Appel, Associate

A renowned illusionist has achieved a very real victory in court. The U.S. District Court for the District of Nevada held that Teller’s performance of his Shadows magic trick is protected under copyright law, even though the magic trick itself is not. Teller v. Dogge, 110 USPQ2d 1302 (D. Nev. 2014).[1]

Teller – a well-known magician, best known as half of Penn & Teller – has performed Shadows for over three decades. This illusion involves a spotlight pointed at a vase containing a rose, projecting a shadow onto a screen as shown below:

Magic Trick-Teller Blog Post

Teller, wielding a large knife, slowly cuts the leaves and petals of the rose’s shadow on the screen. Meanwhile, the corresponding leaves and petals of the real rose fall to the ground.

Teller brought a lawsuit against Gerard Dogge, a Dutch performer who uploaded to YouTube two videos of himself performing a similar illusion, entitled The Rose and Her Shadow.

Dogge’s caption for the videos stated: “I’ve seen the great Penn & Teller performing a similar trick and now I’m very happy to share my version in a different and more impossible way with you.” Dogge admitted that he posted the videos in an attempt to sell the illusion’s secret.

The court last month court granted Teller’s motion for summary judgment on his copyright infringement claim, holding that Teller’s performance of Shadows is subject to copyright protection. While magic tricks are not protected under copyright law, the court explained, the Copyright Act protects “dramatic works” and “pantomimes.” 17 U.S.C. § 102(a). “The mere fact that a dramatic work or pantomime includes a magic trick, or even that a particular illusion is its central feature does not render it devoid of copyright protection,” the court found.

The court rejected Dogge’s argument that Teller had waived his copyright because his partner, Penn Jillette, had issued a challenge of sorts, publicly stating that “no one will ever figure out” Shadows. This statement, the court observed, “merely provokes others to unearth the secret, not perform the work.” And for copyright purposes, the secret behind the trick is insignificant: “the performance it is used for is everything.”

Having determined that Teller’s illusion merited copyright protection, the court had no trouble finding infringement. Applying the Ninth Circuit’s two-part analysis – an “extrinsic test” and an “intrinsic test” – the court found that Teller’s Shadows and Dogge’s The Rose and Her Shadow were substantially similar.

The court noted that the two parties’ illusions were “nearly identical twins,” even though their secrets may have been different.

In discerning substantial similarity, the court compares only the observable elements of the works in question. Therefore, whether Dogge uses Teller’s method, a technique known only by various holy men of the Himalayas, or even real magic is irrelevant, as the performances appear identical to an ordinary observer.

Last week the court set trial for June 2, 2014, to determine whether Dogge committed willful infringement and to decide Teller’s unfair competition claim.

In its summary judgment order, the court noted that the magic community has traditionally blackballed performers who reveal other magicians’ secrets. This case confirms that wronged magicians also may have another avenue for relief, in federal court.

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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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[1]http://scholar.google.com/scholar_case?case=12052870780115350990&q=teller+v+dogge&hl=en&as_sdt=400006.

 

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February 7, 2014

Utilitarian Shape of Hookah Not Subject to Copyright Protection, Even if Distinctive, Ninth Circuit Holds

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

SIA-LRBy: Seth I. Appel, Associate

Inhale Inc.’s efforts to protect the shape of its hookah under copyright law went up in smoke, as the Ninth Circuit affirmed summary judgment in favor of Starbuzz Tobacco, Inc.  Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446 (9th Cir. 2014).[1]

Inhale, a designer and manufacturer of smoking products, sold the hookah[2] shown below:

Hooka

It obtained a U.S. copyright registration for this product.

Inhale sued Starbuzz for copyright infringement in the U.S. District Court for the Central District of California, alleging that Starbuzz sold a similar hookah.  Inhale’s claim was based entirely on the shape of Starbuzz’s hookah.  For purposes of the lawsuit, Inhale disclaimed copyright protection to the skull-and-crossbones graphic.

The district court granted Starbuzz’s motion for summary judgment in 2012, holding that Inhale did not own a valid copyright in the shape of its hookah, notwithstanding its registration.  Last month the Ninth Circuit Court of Appeals affirmed.

The Copyright Act generally protects “original works of authorship,” including sculptural works.  But it does not protect “useful articles.”  Under the Copyright Act, a “useful article” is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”  17 U.S.C. § 101.

Individual design elements of a useful article may be subject to copyright protection, to the extent that they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  17 U.S.C. 101.  Such protectable elements may be either physically separable or conceptually separable.

Inhale argued that the shape of its hookah was conceptually separable from its utilitarian features, but the Ninth Circuit disagreed.  It explained:  “The shape of a container is not independent of the container’s utilitarian function—to hold the contents within its shape—because the shape accomplishes the function.”  739 F.3d at 449.

The court, citing Copyright Office practice, rejected Inhale’s contention that the distinctiveness of the hookah shape affected the separability analysis.  The court observed:

Although Inhale’s water container, like a piece of modern sculpture, has a distinctive shape, “the shape of the alleged ‘artistic features’ and of the useful article are one and the same.”

739 F.3d at 449 (quoting Compendium of Copyright Office Practices II, § 505.03).

The Ninth Circuit also affirmed the district court’s award of attorneys’ fees to Starbuzz under 17 U.S.C. § 505, and further awarded Starbuzz its attorneys’ fees on appeal.

The Ninth Circuit’s decision is a blow to producers of creative works that have utilitarian functions, including other sculptural works such as bottles and vases.  In view of this decision, it may be harder for such entities to address copying by competitors – at least under copyright law.

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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.


[1] http://scholar.google.com/scholar_case?case=621471655821174883

[2]A hookah is a device for smoking tobacco, in which the smoke passes through a water basin, which filters and cools the smoke before it is inhaled by the user.  See http://en.wikipedia.org/wiki/Hookah.

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