Recently the 11th Circuit addressed on appeal the question of whether fair use insulates from copyright liability a University which offers to its students a digital repository of reading material culled from third party publications without the benefit of a license. Three academic publishers filed suit against Georgia State University claiming that the University infringed their copyrights by maintaining a policy which allows GSU professors to make digital copies of excerpts of their books available to students without paying them a royalty. Prior copyright cases known as the “course pack cases” – cases in which commercial copy shops were found to have infringed copyrights by printing course packs containing excerpts from third party publications without permission from the publishers – seemed to dictate a finding of infringement. However, of the 74 instances of infringement alleged, the lower court found that the Plaintiffs failed to establish a prima facie case of infringement for 26 works and that fair use applied to all but 5 instances.
The fair use of a copyrighted work is not an infringement of copyright. The four factors a court must consider in determining whether fair use applies are: (1) the purpose of the allegedly infringing use, (2) the nature of the original work, (3) the size and significance of the portion of the original work that was copied, and (4) the effect of the allegedly infringing use on the potential market for or value of the original. Continue Reading
In March 2014, this column analyzed a decision by a Ninth Circuit panel in Garcia v. Google, Inc., in which the Court held that an actress, who believed she was appearing in a minor role in an Arabian adventure movie, could maintain a copyright infringement claim against the producers when they used the footage instead in an anti-Islamic film that resulted in her receiving death threats. As the prior column surmised, it appeared that “bad” (although entirely sympathetic) facts were making “bad” law.
This week, the Ninth Circuit ruled that it would rehear the matter en banc and ordered that its previous decision “not be cited as precedent by or to any court of the Ninth Circuit.” It remains to be seen whether the entire Ninth Circuit will take a different position this time (and hold that the lower court properly denied the injunctive relief) or take the opportunity to emphasize just how limited the scope of its prior ruling was intended to reach.
Below is the original column analyzing the Ninth Ciruit’s original ruling in this case.
A Bit Part, A Fatwa and Copyright Infringement
Most law students learn early in law school the old maxim: “Bad facts make bad law.” A recent Ninth Circuit case, Garcia v. Google, Inc., seems certain to test this proposition with its incredibly sympathetic facts. Continue Reading
One of the more important intellectual property cases decided in 2014 is the U.S. Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014) 134 S.Ct. 1749. In that case, the Supreme Court announced a new test for awarding attorneys’ fees in patent infringement cases, holding that the existing test used by the Federal Circuit Court of Appeals was “overly rigid.”
The plaintiff, Octane Fitness, and the defendant, ICON Health, both made elliptical exercise machines. ICON owned a U.S. patent for its machine. ICON sued Octane for patent infringement. The district court granted summary judgment of noninfringement in favor of Octane. Octane filed a motion to seeking its attorneys’ fees under 35 U.S.C. section 285. The district court denied the motion. On appeal, the Federal Circuit Court of Appeals affirmed.
The Supreme Court reversed, stating that “the framework established by the Federal Circuit in Brooks Furniture Mfg. v. Dutailier International (Fed. Cir. 2005) 393 F.3d 1378 is unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts.” Id. at 1755. The Court held that the Federal Circuit’s test in Brooks Furniture was “overly rigid.” Id. at 1756. Under that test, a case was exceptional if there was either: (1) litigation-related misconduct, or (2) subjective bad faith and objective baselessness. According to the Federal Circuit, the first alternative, litigation misconduct, would be found it there was willful infringement, vexatious litigation, a Rule 11 violation, or fraud or inequitable conduct in obtaining the patent. Under the second alternative, subjective bad faith was met only if the plaintiff actually knew that its suit was objectively baseless, and objective baselessness was met if no reasonable litigant could believe they would prevail. In addition, the Brooks court held that a defendant had to prove an exceptional case by clear and convincing evidence. Continue Reading
On May 31, 2014, members of the band Led Zeppelin and its publishers were sued for copyright infringement by Randy California, the former guitarist and front man of the band Spirit. The lawsuit, filed in the state of Pennsylvania, alleges that a significant portion of Led Zeppelin’s “Stairway to Heaven” was stolen from “Taurus,” a song written by Mr. California when he was with Spirit.
Claiming that a Pennsylvania court lacks jurisdiction over the band’s three British citizens, Led Zeppelin challenged jurisdiction and, in the alternative, argued that the lawsuit should be Going to California, Over the Hills and Far Away, where venue would be more appropriate. (Put another way, they sang the Immigrant Song.) The court denied Led Zeppelin’s motion, leaving the band Dazed and Confused. Accordingly, The Song Remains the Same.
While the decision has undoubtedly been a Heartbreaker for the band, failure to have the case dismissed or transferred is really only a minor setback. It’s not yet time to lead Stairway to Heaven to the Gallows Pole. The case will simply go forward in Pennsylvania, Wearing and Tearing its way to trial.
Led Zeppelin’s predicament is not a new one for musicians. In 1971, music publishing company Bright Tunes alleged that George Harrison’s “My Sweet Lord” was a copy of the Chiffons’ hit “He’s So Fine.” During the litigation, George Harrison testified that he had not noticed any similarities between the two songs until other people started pointing them out, but he also admitted that he had been aware of the Chiffon’s hit before he wrote “My Sweet Lord.” Ultimately, the court ruled that, although Harrison did not intentionally plagiarize the song, Mr. Harrison had “subconsciously” copied substantial portions and incorporated them into “My Sweet Lord.” The court then ordered Harrison to pay to Bright Tunes three quarters of the royalties he had received from sales of his song.
Bright Tunes should be ringing in Led Zeppelin’s ears. “Taurus” was released on Spirit’s debut album in 1968. Led Zeppelin opened for Spirit on their 1969 tour, and later released Stairway to Heaven in 1971. (It is fair to question why Spirit did not raise a claim for copyright infringement within the last 43 years. Perhaps they were occupied with Somethin’ Else.) As the opening act for Spirit on the 1968 tour, it appears likely that Led Zeppelin probably had heard “Taurus” prior to writing “Stairway.” The band therefore might face a fate similar to George Harrison’s – a finding of “subliminal” infringement similar to the outcome in Bright Tunes. Based on the royalty award in Bright Tunes, it no doubt will be Celebration Day for Spirit if they successfully prove a case for copyright infringement.
Rock and Roll. That’s the Way. But I don’t want to Ramble On.
Zombies have become part of our lives. We are fascinated with vampires, but we are obsessed with zombies.
Our obsession is best evidenced by the tremendous success of AMC’s television series “The Walking Dead,” about the zombie apocalypse. The show first aired on Halloween night in 2010 and was watched by 5.35 million viewers. It premiered worldwide the same week, in 120 countries. The premier was preceded by a zombie invasion (orchestrated by AMC and Fox) on October 26, 2010 in 26 cities throughout the world, including Hong Kong, Taipei, and Los Angeles. The show is now going strong in its fourth season.
Movies about zombies are also alive and well. Since 1980, zombie movies have brought in almost $1 billion. The highest grossing zombie movie was Sony’s 2009 “Zombieland,” bringing in $75 million since it opened. “Warm Bodies,” one of several zom-rom-coms (as this genre is now called) has grossed $65 million since it opened three months ago. Other favorites include the “Resident Evil” and “Night of the Living Dead” series, and “Shaun of the Dead.”
Thus, even though zombies have been walking (slowly) among us for hundreds (thousands?) of years, we have really just recently (as evidenced by our 33 years of TV and movies) noticed them. Zombies have been here all along. In fact, they are way ahead of us in the intellectual property world.
Zombies have amassed a significant number of U.S. patents for their inventions. The biggest problem zombies face is a defining one: how to come back from being dead. The undead have developed several inventions to solve this problem and they have obtained patents on these inventions. (We are not sure why a zombie would want a patent, but we don’t know who to ask, so we can’t tell you.) Continue Reading
In this author’s opinion, I believe that most consumers see wine, beer and mineral water as unrelated products and would not believe that beer, wine or mineral water that share similar trademark elements (e.g., similar words or similar design) are related or emanate from the same source. However, the TTAB has found otherwise.
Beginning with its 1992 decision in In re Sailerbrau Franz Sailer, the TTAB has been receptive to arguments that wine and beer are related. In In re Sailerbrau, the TTAB found the mark CHRISTOPHER COLUMBUS for beer confusingly similar to the mark CRISTOBAL COLON and Design for sweet wine. The TTAB found persuasive the third party registrations introduced by the trademark examiner showing that a number of companies have registered their marks for both beer and wine.
Following that case, the TTAB adjudicated a number of non-precedential cases in which the TTAB found beer and wine related. For example, in In re Stonestreet, LLC, the TTAB found the mark BUCKEYE for wine confusingly similar to the mark BUCKEYE SPARKLING DRY (stylized) for beer. Similar to In re Sailerbrau, the TTAB found persuasive third party registrations covering both beer and wine. The applicant in In re Stonestreet argued that the Federal Circuit case of G.H. Mumm & Cie v. Desnoes & Geddes Ltd., required a finding that beer and wine are not related. However, the TTAB was not persuaded. The record in G.H. Mumm demonstrated the MUMM brand champagne to be a premium sparkling wine marketed by one of France’s top quality champagne producers. The record in Stonestreet lacked any such distinction. Continue Reading
You don’t have to be a Disney enthusiast like myself to be familiar with its latest blockbuster franchise, Frozen. To date, the film has grossed over 1.2 billion dollars in worldwide box office revenue, making it the highest-grossing animated film of all time, and the fifth highest-grossing film overall. The fact is, Frozen has taken the world by storm since its November 27, 2013 release, and it does not appear to be letting up as Disney is planning on opening a Frozen themed ride at Walt Disney World and a Frozen musical on Broadway. Nonetheless, one New Jersey woman is seeking to put an immediate halt on Disney’s cash cow with the filing of her complaint for copyright infringement in the United States District Court for the District of New Jersey.
On September 22, 2014, Isabella Tanikumi—also known as L. Amy Gonzalez, filed a complaint against the Walt Disney Company (“Disney”) alleging copyright infringement because Disney purportedly stole at least eighteen (18) elements of Frozen from her 2010 autobiography, Living My Truth. Specifically, Ms. Tanikumi has cited the following similarities: (1) both stories involve villages at the base of snow covered mountains; (2) both stories involve two sisters with different colored hair; (3) both stories involve one of the two sisters injuring the other; (4) both stories have two male characters who act as the romantic interest of one of the sisters; and (5) open doors/gates are involved in the endings of both respective tales. This list is merely illustrative, but for those of you who wish to see the entire list, feel free to read the complaint and its attachment by clicking Isabelle Tanikumi AKA L. Amy Gonzalez v. The Walt Disney Company. In the interest of providing full disclosure, the remaining similarities do not get much more mind blowing than those stated above. Regardless, Ms. Tanikumi obviously believes that she has been wronged by Disney, but whether she can prevail on these farfetched claims remains to be seen. Continue Reading
One of the primary purposes of the Communications Decency Act (“CDA”) is to limit liability for certain internet content providers specifically protecting websites from liability for material posting on their website by a third party. In Jane Doe No. 14 v. Internet Brands, Inc., the operator of a networking site in the modeling industry sought to use the CDA as a defense to a negligence claim based on a failure to warn. The facts of the case are horrific.
Jane Doe was an aspiring actress who posted her information on the networking site Modelmayhem.com. In February 2011, she was contacted by two men Lavont Flanders and Emerson Callum, about a modeling audition in Florida. Jane Doe traveled to Florida to meet with the two men and was given a drug that caused her to pass out after which she was raped and the assault made into a pornographic film. (Flanders and Mr. Callum were convicted of numerous crimes by a federal jury in Florida and sentenced to life in prison for this and other similar assaults.)
Jane Doe claimed that the owner of the Modelmayhem.com website, Internet Brands, Inc. knew of the two men’s unlawful conduct but took no steps to warn her or other users of the threat. Prior to the 2011 assault, Internet Brand, which had purchased the Modelmayhem site in 2008, had apparently sued the seller of the site in 2010 for failing to disclose the potential civil liability arising from the criminal deeds of Callum and Flanders. She brought a claim against Internet Brands, Inc. for negligence under California law which recognizes a cause of action for failure to warn. Internet Brands moved to dismiss the claim asserting that the CDA immunized it from liability as to Jane Doe’s claims. The trial court agreed and dismissed the complaint. Jane Doe appealed to the Ninth Circuit which reversed the trial court’s decision in an opinion dated September 17, 2014.
The patent laws require that the claims of a patent (which define the boundaries of what the patent owner can protect) “particularly point out and distinctly claim the subject matter … of the invention.” 35 U.S.C. §112, ¶2. This requirement is referred to as “definiteness.” A patent that fails to satisfy this requirement may be found to be invalid for indefiniteness.
The purpose of the definiteness requirement is to provide the public with notice of what the patent owner owns, and what would be an infringement of the patent. Thus, the definiteness requirement serves to encourage innovation by providing certainty as to what the patent protects.
This year, the United States Supreme Court vacated a Federal Circuit Court of Appeals decision on the grounds that the Federal Circuit’s test for indefiniteness was not precise enough and would result in confusion in the district courts. The case is Nautilus, Inc. v. Biosig Instruments, Inc., 189 L.Ed. 2d 37 (June 2, 2014).
In 2004, the patent owner, Biosig, sued Nautilus for infringement of a patent covering a heart-rate monitor used in exercise. Biosig’s heart monitor was different from existing heart monitors in that it was more accurate because it did not measure both electrical signals from the user’s heart and from the muscles. The Biosig heart monitor used two pairs of electrodes, one pair for each hand of the user. Biosig alleged that Nautilus, who owned the StairMaster brand of exercise machine, used the patented heart monitor in StairMaster machines. Continue Reading