Copyright Law

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By: Dale C. Campbell 

The United States Supreme Court heard oral argument last month in the Kirtsaeg v. John Wiley & Sons, Inc. case that may finally determine if the First-Sale Doctrine in copyright law applies to goods manufactured outside of the United States. 

The holder of a U. S. copyright has the “exclusive rights . . . to distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership . . ..”  (17 U.S.C. § 106(3).)  Importation of a copyrighted work into the United States without the authority of the owner of the copyright constitutes infringement.  (17 U.S.C. § 602(a).)  The First-Sale Doctrine is codified in section 109(a) and provides that, notwithstanding other provisions of the Copyright Act, “the owner of a particular copy . . . lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy . . ..”  The First-Sale Doctrine is based on the concept that, once the copyright owner consents to the first sale of a protected copy, the owner has exhausted its right to control the subsequent distribution or sale of those copies.Continue Reading THE FIRST-SALE DOCTRINE AND FOREIGN MANUFACTURED GOODS: THE ANSWER IS FORTHCOMING

By: James Kachmar

Frequent readers of this column will recall our discussions concerning the defense of laches in copyright infringement actions. Last month, the Ninth Circuit revisited this issue and considered the willful infringement exception to the laches defense in the case, Evergreen Safety Council v. RSA Network, Inc.

Evergreen and RSA are both involved in providing training for pilot escort vehicles (these vehicles that help escort oversized vehicles). Evergreen and RSA publish training manuals in connection with state pilot vehicle training programs.Continue Reading Evergreen – Copyright Infringement, Laches and the Willful Infringement Exception

By: James Kachmar

The Ninth Circuit recently revisited the “Work Made for Hire” Doctrine in connection with a copyright infringement case in US Auto Parts Network, Inc. v. Parts Geek, LLC.  The Ninth Circuit concluded that an employer can be the owner of copyrighted material when it is prepared by an employee in the course of his or her employment under the work made for hire doctrine.

The case arose out of an online auto part business, Partsbin, that was created in the mid-1990s.  Partsbin entered into a licensing agreement with a computer programmer, Lucas Thomason, who had prepared an order processing software program called Manager while self-employed.  Thomason gave Partsbin a “perpetual license to use” the Manager software.  Approximately a year later, Partsbin hired Thomason as its “director of eServices,” where he continued to make modifications and enhancements to the Manager software to fit Partsbin’s business changes.  Over the next several years Thomason, as a Partsbin employee, developed at least four more versions of the Manager software.  Partsbin became an internet success story and in 2006 was acquired by US Auto Parts Network (“USAP”).  The acquisition included its intellectual property.  After the acquisition USAP, hired many of Partsbin’s key employees, including Thomason.  Thomason’s primary role was to “manage” the Manager software by modifying and enhancing it to accommodate the needs of Partsbin.  His efforts created two additional versions of the Manager software.Continue Reading Copyrights and the Work for Hire Doctrine

By: Nathan Geronimo

In a recent case, the Ninth Circuit affirmed the district court’s grant of summary judgment based on the doctrine of laches.  But Justice Fletcher, in a concurring opinion, stressed the fact that the Court’s application of the doctrine to copyright infringement cases was out of step with decisions in other federal circuits, and is likely contrary to congressional intent.

In Petrella v. Metro Goldwyn Mayer, Inc. et al., the plaintiff, Paula Petrella  (“P. Petrella”) sued Metro Goldwyn Mayer (“MGM”) and others for alleged copyright infringement based on the defendants’ use of the movie Raging Bull, which is allegedly based on a book and two screenplays in which P. Petrella has a purported legal interest.  Retired boxer Jake LaMotta and his friend Frank Petrella worked together to write a book and two screenplays on LaMotta’s life.  The works were registered with the U.S. Copyright Office; one screenplay in 1963, the book in 1970, and the other screenplay in 1973.  In 1976, Frank Petrella and LaMotta assigned their rights in the three works to Chartoff-Winkler Productions, who subsequently assigned the motion picture rights to MGM in 1978.  Frank Petrella passed away in 1981, and his copyright renewal rights in the works passed to his daughter, P. Petrella.  (When an author dies prior to the beginning of a renewal period, his successors get his renewal rights even if the author previously assigned the rights.)Continue Reading Aging Bull? Laches Still a Valid Defense to Copyright Infringement Claims (For Now)

By: David Muradyan

In order to prevail on a claim for contributory copyright infringement, a plaintiff must show that a defendant had knowledge of or had reason to know about direct infringement by a third party and that it substantially contributing to the infringing activities. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 n.2, 1019 (9th Cir. 2001). “One who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer.” Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264 (9th Cir. 1996) (citation omitted).

In a very recent case, the Court held that there was no contributory copyright infringement because the defendant was not aware of its employees’ copyright infringement. In Hitek Software LLC v. Timios Inc., Case No. CV 12-709 CAS (C.D. Cal. June 18, 2012), Plaintiff Hitek Software LLC (“Plaintiff”), a software company who sells its copyrighted programs over the Internet, filed a complaint against defendants Timios, Inc. (“Timios”), Scott Chamberlain (“Chamberlain”) and Y. Sarumaru (“Sarumaru,” and together with Timios and Chamberlain, the “Defendants”), alleging claims for copyright infringement and contributory copyright infringement, among others. Chamberlain was a computer specialist who provided computer services to Timios as an independent contractor but who was later hired as an employee of Timios. Sarumaru was also a computer specialist and was an employee of Timios.Continue Reading No Contributory Copyright Infringement in Software Copyright Infringement Case