Independent Contractor Content Providers Ruled DMCA Safe Harbor Users

BWP Media owns the rights to a number of celebrity photographs.  BWP sued Clarity Digital Group (n/k/a/ AXS) for copyright infringement when 75 of BWP’s photos appeared without BWP’s permission on, a website owned by AXS.  AXS argued it was protected from liability by the Digital Millennium Copyright Act (DMCA) safe harbor.  The district court agreed and granted AXS’s motion for summary judgement.  The Tenth Circuit affirmed.

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Contract Defenses Argument Can’t Bypass Expired Statutes of Limitation

Drug manufacturer Amylin Pharmaceuticals hired Consumer Health to develop materials to help Amylin more successfully market its diabetes drug, Byetta.  Although Consumer Health began its work in December 2005, the parties signed a contract in March 2006.  The contract assigned to Amylin the copyright in the materials Consumer Health created.  Amylin stopped paying Consumer Health for work after September 30, 2006, but continued to use the materials Consumer Health created. 

Consumer Health sued Amylin for copyright infringement in July 2013.  The district court ruled that Consumer Health filed its lawsuit too late under both the four-year California statute of limitations applying to contract rescission and the three-year copyright statute of limitations and dismissed the suit.  The Seventh Circuit Court of Appeals affirmed the district court’s ruling that Consumer Health’s suit was filed more than four years too late.

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Copyright Preregistration Another Piece of the Registration Puzzle

I recently attended a Continuing Legal Education (CLE) seminar in which the presenter asserted that copyright owners who register their works within one month after the infringement occurs can still get attorney’s fees and statutory damages in litigation.  That assertion perplexed me, so I looked at the statute afterwards.  Perplexed, because, for the copyright owner to receive attorney’s fees and statutory damages, the statute requires that the work be registered either before the infringement occurs or within 3 months after the first publication.

Section 412 of the Copyright Act of 1976 indicates that statutory damages and attorney’s fees may be available for copyright owners of preregistered works when the registration occurs one month after the owner learns of the infringement. 

…an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement…

17 U.S.C. §412.

The one month window applies only if the work is a) preregistered and b) the one month period occurs before 3 months after the first publication.

This leads to two questions:  1) What is preregistration? and 2) What is publication?

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Can Peter Rabbit Save Mickey Mouse?

Mickey Mouse first appeared in Disney’s Steamboat Willie cartoon in 1928.  Under the Copyright Act of 1976, Disney’s copyright on Steamboat Willie was set to expire at the end of 2003, 75 years from the publication date.  In 1998, Congress passed the Sonny Bono Copyright Term Extension Act to extend copyright terms another 20 years.  The Sonny Bono Copyright Term Extension Act has also been called the Mickey Mouse Act.  Under current law, the Steamboat Willie copyright is set expire and the work to go into the public domain at the end of 2023.

In Dastar Corp. v. Twentieth Century Fox Film Corp., the U.S. Supreme Court refused to let Fox Film use trademark law to reclaim its expired copyright from the public domain. 

Once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been careful to caution against misuse or over-extension of trademark and related protections into areas traditionally occupied by patent or copyright.  The Lanham Act, we have said, does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity.  Federal trademark law has no necessary relation to invention or discovery, but rather, by preventing competitors from copying a source-identifying mark, reduces the customer’s costs of shopping and making purchasing decisions, and helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.  Assuming for the sake of argument that Dastar’s representation of itself as the ‘Producer’ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public’s federal right to ‘copy and to use, expired copyrights.

Will the Dastar ruling prevent Disney from using trademark law to protect Mickey Mouse?  In her recent CSUSA presentation in Seattle, Washington, Columbia Law School Professor Jane C. Ginsburg argued that Dastar did not answer the question of whether a cartoon character whose copyright has expired can be protected by a trademark.

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The Beat Goes on in the Pre-1972 Sound Recording Battles

Plaintiffs Arthur Sheridan and Barbara Sheridan, owners of sound recordings made before 1972, brought New Jersey law copyright infringement claims against iHeartMedia for broadcasting those recordings without authorization and without compensating the sound recording owners.  The Copyright Act of 1976 does not apply to pre-1972 sound recordings.  Copyright owners for pre-1972 have brought state law copyright infringement claims in several states, arguing that state statutory and common law governs the rights attached to pre-1972 sound recordings.  iHeartMedia moved to stay the New Jersey proceeding against it, pending the outcomes of similar cases pending in the Second, Ninth and Eleventh Circuits.  The district court granted iHeartMedia’s motion to stay.  I posted on this topic in Flo and Eddie Goes for the Two Coast Punch Against Sirius XM.

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