By Nathan Geronimo

In a recent opinion, the Ninth Circuit clarified the defense of copyright misuse, finding the defense inapplicable in a dispute between Apple Inc. and Psystar Corp. Apple, one of the most prolific software producers in the world, sued Psystar for copyright infringement based on Psystar’s practice of copying Apple’s Mac OS X operating software for use in Psystar computers. Essentially, Psystar would make a master copy of the Mac OS X software, and install a copy on one of their computers. Psystar would then bundle the computer for sale with an unopened packaged version of MAC OSX that it would purchase from any number of retailers. Psystar would purchase these copies so it could assert that it had purchased the software to run on each computer it sold, when actually the computers would run on the pre-installed copied version of Mac OS X.
Prior to the Ninth Circuit appeal, the Northern District held that Psystar was infringing on Apple’s copyrights in Mac OS X. Psystar argued that the defense of copyright misuse made Apple’s Software License Agreement unenforceable.
 Continue Reading Apple Wins Pivotal Software Licensing Lawsuit

By James Kachmar

The affirmative defense of copyright misuse is a court-created affirmative defense to copyright infringement which flows from a similar defense in patent litigation. In 1942, the U.S. Supreme Court in Morton Salt Co. v. GS Suppiger Co. recognized the affirmative defense of patent misuse where a patent holder attempted to maintain an infringement action by improperly tying the use of its patented product to one of its unpatented products. The Supreme Court held that this improper tying of a patented product to an unpatented product required that equity “withhold its assistance from such a use of the patent by declining to entertain a suit for infringement [until] the improper practice has been abandoned …”.

In 1990, the Fourth Circuit Court of Appeal became the first federal appellate court to extend the patent misuse defense to copyrights. On September 28, 2011, the Ninth Circuit issued its opinion in Apple, Inc. v. Psystar Corporation which addressed the important issue regarding the application of the “copyright misuse” affirmative defense in the context of a software licensing agreement.
 Continue Reading The Copyright Misuse Defense & Apple’s Software License Agreements

By David Muradyan

“South Park” is an animated sitcom that airs on Comedy Central, and centers on the happenings of four foul-mouthed fourth graders in a small mountain town in Colorado. As the District Court in Brownmark Films, LLC v. Comedy Partners stated, in the nearly 15 years that South Park has been on the air, “the four central characters have, amongst other adventures, battled space aliens, hunted Osama Bin Ladin in the wake of 9/11 ala Elmer Fudd and Bugs Bunny, and have, more recently, resolved the nation’s economic woes by charging the nation’s consumer debts on one of the character’s credit card.” Brownmark Films, LLC, v. Comedy Partners, 2011 U.S. Dist. LEXIS 72684 (E.D. Wis. July 6, 2011) (“Brownmark”). 

The entities involved in the production of South Park found themselves in the middle of a copyright infringement suit because of a South Park episode entitled “Canada on Strike,” which allegedly infringed on Plaintiff Brownmark Films, LLC’s (“Plaintiff” or “Brownmark”) copyright in WWITB (defined below).  In that episode, the naïve “Butters Stotch” (one of the South Park characters) is coaxed by his fellow classmates to record an internet video in the hopes of making money on the Internet. The Internet video replicates parts of the “What What (In the Butt)” (“WWITB”) video, which was a copyrighted video. The Court described the WWITB music video as “a nearly four minute ditty regarding the derriere of the singer of the underlying work.” The Court further explained: “The music video begins with an array of bizarre imagery—from a burning cross to a floating pink zeppelin—and only gets stranger from there. The heart of the video features an adult African American male ensconced in a bright red, half-buttoned, silk shirt, dancing, grinning creepily at the camera, and repeatedly singing the same cryptic phrases: ‘I said, what what, in the butt.’ And “you want to do it in my butt, in my butt.’” Brownmark, the purported co-owner of a copyright in the WWITB music video, filed suit against various entities involved in the production of South Park, alleging copyright infringement. According to Brownmark, the “Canada on Strike” episode has an internet video—which lasts for 58 seconds of the approximately 25 minute episode—replicating parts of the WWITB video, with the 9 year old Butters “singing the central lines of the original video, while dressed as a teddy bear, an astronaut, and even as a daisy.” As the Court noted, “[i]n the episode, Butters’ video, much like the original WWITB video, goes ‘viral,’ with millions watching the clip. However, after their attempts to collect ‘internet money’ prove fruitless, the South Park fourth graders learn that their video, much like other inane viral YouTube clips, have very little value to those who create the work.” The defendants justified their use by claiming “fair use,” which is an affirmative defense to copyright infringement.

 Continue Reading South Park Prevails in Copyright Infringement Case Thanks to the “Fair Use” Doctrine