Posts in Copyright Litigation

The suit, filed in the Western District of Texas, alleges that the mega retailer has been infringing on its IP related to trade dress covering aspects of YETI beverage holders in violation of a settlement agreement stemming from previous litigation activity which had played out between the two companies… The allegedly infringing products include 20- and 30-ounce beverage holders and a “Koozie” beverage container which are the same size and shape as the YETI trade dress. These products had previously been the subject of patent and trademark litigation played out between YETI and Wal-Mart

Like other opinions in the IP arena, the Supreme Court’s decision in Star Athletica v. Varsity Brands has created a new legal rule with limited practical guidance that will inevitably lead to less predictability in an already-murky area of copyright law.  Its new “imaginative separability” test for copyright eligibility for useful articles, such as footwear, clothing, and furniture, may be so easy that few designs will fail to qualify.  Yet, ultimately, Star Athletica may have the unimagined consequence of making copyright protection less desirable for qualifying designs. For those who seek the benefits of the Court’s undeniable expansion of potential copyright protection for useful designs, a bit of caution may be the appropriate response.

One of the interesting theories posed by the case is Character for Hire’s claimed right to use Disney characters, which derive from Norse mythology or centuries-old fairy tales. In its response to Disney’s motion for summary judgment, Characters for Hire argues that many of the Plaintiffs’ copyrights are based on prior works that have been in the public domain for hundreds of years such as Cinderella, Snow White, Rapunzel, Sleeping Beauty, Aladdin, Princess Aurora, Beauty and the Beast, the Little Mermaid, Thor and Loki. “It will be interesting to see how the Court delineates between established fairy tale characters and the original expression added to them by Disney,” Furey said.

On November 20th, both Peter Gene Hernandez, the American singer-songwriter-producer who goes by the professional name Bruno Mars, and New York City-based Warner Music Inc. were named as defendants in a copyright case filed in the Southern District of New York by Burbank, CA-based photographer Catherine McGann. The lawsuit targets Mars’ social media use of a photograph of himself taken by McGann when Mars was performing as an Elvis impersonator as a child.

On Thursday, October 19th, the creators of the 1984 rock band mockumentary This Is Spinal Tap filed a second amended complaint against French mass media company Vivendi SA (EPA:VIV) in the Central District of California. The lawsuit, which includes trademark and copyright claims, alleges that Vivendi and its subsidiaries provided fraudulent accounting to the plaintiffs which resulted in greatly reduced royalty payments over the course of decades. The plaintiffs, which include the movie’s director Rob Reiner as well as performers/co-creators Christopher Guest, Harry Shearer and Michael McKean, are seeking more than $400 million in compensatory and punitive damages from Vivendi and Universal Music Group.

Characters for Hire also argued that the trademark infringement claims lacked the essential element of confusion. Citing to Naked Cowboy v. CBS, a case decided in Southern New York in 2012 involving trademark infringement claims asserted by a Times Square street performer against the use of his likeness in the soap opera The Bold and the Beautiful, Characters for Hire argue that the use of the names of fictional persons are merely descriptive of the entertainment services provided by the defendants. “Indeed, Plaintiff Disney is well aware of the limits of trademark enforceability having successfully defended a claim brought against them for using the famous ‘Caterpillar’ trademark for construction trucks in one of their films,” Characters for Hire argued. This statement references Caterpillar Inc. v. Walt Disney Co., a 2003 case decided in the Central District of Illinois wherein the court ruled that Disney’s use of construction vehicles with Caterpillar logos in the movie George of the Jungle 2 created no likelihood of confusion that Caterpillar either endorsed or sponsored the movie.

Although patent litigation levels through the first nine months of 2017 have largely remained consistent with patterns from recent years, it does appear that the number of patent suits filed in U.S. district courts has been on a slow decline in recent years. There were a total of 995 patent lawsuits filed in district court during 2017’s third quarter, an 8.4 percent decline when compared to totals from 2016’s third quarter. Year-over-year declines in patent suit filing were also seen in the first and second quarters of 2016 as well. As Lex Machina data scientist Brian Howard notes, 2017 continued a trend in which patent suit filings tend to drop in the first quarter of the year, rise during the second quarter and then fall again during the third quarter. “Historically, that’s a pattern that we’ve seen pretty consistently in the past few years,” Howard said.

In 2011, ReDigi Inc. introduced technology that effectively attempted to establish a secondary market for “used” digital music files, where owners who had legally downloaded music files from iTunes could sell the music that they no longer wanted.  In a nutshell, the system allowed the owner of a digital file to transfer the music to ReDigi’s cloud storage locker, from which ReDigi could then sell it to a willing buyer for a lower price than the cost of an “original” purchase from the iTunes Store.  When a sale was made, Redigi would retain 60% of the sales price, while the seller and artist got 20% each. Although the process of transferring a file from an owner’s personal computer to ReDigi required that it be reproduced on ReDigi’s server, the system removed the file from the owner’s personal computer as the file was moved.  Capitol Records, the copyright owner of many music files sold over the ReDigi system, sued ReDigi for copyright infringement, alleging that the company reproduced and distributed its copyrighted works without permission.

Robins Kaplan LLP filed an Amended Complaint detailing allegations that The Walt Disney Company and Pixar misappropriated the central concept and characters behind the animated hit movie Inside Out from a nationally recognized child development expert, Denise Daniels, who had pitched her uniquely original material and characters from her show The Moodsters to top studio executives… Ronald Schutz, partner at Robins Kaplan and lead trial counsel for Daniels and The Moodsters Company, sat down with IPWatchdog to discuss the copyright infringement claims.

A complaint was filed in the Northern District of California on behalf of Naruto, at the time a six-year-old crested macaque residing in the Tangkoko Reserve located on the Indonesian island of Sulawesi… The plaintiffs argued that Naruto is the author of the monkey selfie and has the right to own and benefit from the copyright to that photo. “Had the Monkey Selfies been made by a human using Slater’s unattended camera, that human would be declared the photographs’ author and copyright owner,” the complaint reads. Although the plaintiffs acknowledge that claims of authorship by members of species other than homo sapiens are novel, they argue that 17 U.S.C. § 101 defines authorship broadly enough that Naruto should be afforded a claim of copyright ownership.

My intuition is that the judge came to the correct conclusion, but that the Supreme Court test ultimately did little to guide her thinking.  As I mentioned in my previous IPWatchdog article, determining the contours of the useful article is a metaphysical exercise that likely will require other “tests” to resolve.  Why, for instance, does the useful article not consist of the lighting elements, sockets, wires and covers, which the judge admits also serve important utilitarian functions?  What factors caused her to draw the line so that the covers were not included within her concept of the useful article?  My guess is that it came down to the fact that in her view, “The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string.” 

An increasing trend in copyright infringement suits filed in the United States has tattoo artists bringing suit against entertainment entities, and in some cases against the tattoo bearer themselves, for the reproduction or recreation of tattoos they created. Most commentators would likely conclude that tattoos are eligible for copyright protection under the Copyright Act. However, it is important to note that a distinction can be made between the copyright in the design of the tattoo and the copyright in the tattoo as it is reproduced on the body of a person

It’s not everyday that a copyright case involves claims of false imprisonment but an order granting summary judgment entered on August 30th in the Eastern District of Texas granted a legal win to American TV personality and psychologist Dr. Phil and his production studio in just such a case. Judge Rodney Gilstrap decided to grant summary judgment sua sponte to Dr. Phil and Peteski Productions in a case against a former segment director for The Dr. Phil Show after the director recorded an iPhone video from archived footage of The Dr. Phil Show to build evidence for a emotional distress suit against Dr. Phil.

There are major concerns that websites enabling consumers to access streaming video illegally without paying, in violation of copyright, could hamper the fortunes of those broadcasting the event. On August 15th, New York City-based television channel operator Showtime Networks Inc., the exclusive producer of the live transmission of the Mayweather-McGregor fight, filed a copyright infringement suit in the Central District of California. The suit is a preemptive strike against a series of John Doe defendants operating a few dozen websites offering illicit livestreaming of the Mayweather-McGregor fight.

The total number of intellectual property claims included in all commercial cases is higher than the figure of 11,643 commercial cases including at least one IP claim. “It turns out to be incredibly hard to build a Venn diagram that reflects the types of IP claims included in these commercial cases,” said Brian Howard, Lex Machina data scientist and the author of the commercial litigation report. “It turns out to be its own mini-Venn diagram within a Venn diagram, some of the cases are patent and trademark and commercial, so there’s overlap within that IP circle.” Of the different types of intellectual property claims which are included in commercial litigation, trademark claims are by far the most common, occurring in a total of 8,277 commercial cases; that’s 15 percent of all commercial cases filed since 2009. Copyright claims were brought in a total of 3,260 commercial cases filed since 2009, a total representing about 6 percent of all commercial cases. Patent claims were brought in 2,219 commercial cases, or only about 4 percent of the total.