A Copy of Something Huge is Still a Copy Under Copyright Law

The 1976 Copyright Act protects sculptures as copyrightable works.  17 USC §102(a)(5).  The Copyright Act also authorizes the court to order the destruction or other reasonable disposition of all infringing copies. §503(b).  What happens when the copyrighted work is a sculpture and multiple infringing copies have been made?  Can the court order the removal of the infringing copies from their current locations?

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Conan Doyle Estate Can’t Protect Public Domain Sherlock Holmes Characters

Can the editor of a collection of stories based on the Sherlock Holmes characters and written by modern authors publish and distribute the collection without infringing the copyrights on the 10 Sherlock Holmes stories that are still protected by copyright?  Yes, ruled the Seventh Circuit Court of Appeals, as long as the collection is based on the 56 stories and 4 novels that are in the public domain and not on the 10 stories that are still protected by copyright.  Arthur Conan Doyle’s estate can’t leverage the copyrights of the 10 protected stories to claim copyright protection for the other 56 stories and 4 novels.

Arthur Conan Doyle wrote the Sherlock Holmes stories between 1887 and 1927.  The Copyright Act of 1976 protects works that were created from 1923 to the present.  The 56 stories and 4 novels written by Doyle before 1923 are in the public domain.  A public domain work is a work that is not protected by copyright.  Public domain works belong to the public and anyone can use them without permission and, therefore, without infringing the rights of the most recent copyright owner.  Leslie Klinger planned to publish a collection of stories created by modern authors and based on the Sherlock Holmes characters.  Conan Doyle Estate, Ltd., heard of the plan and threatened to prevent distribution of the book.  Klinger brought a declaratory judgment action against the estate, asking the court to declare that he can use the Sherlock Holmes stories and novels that are no longer protected by copyright.  The district court ruled in Klinger’s favor and the Seventh Circuit affirmed.

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Porno-Trolling Collective Called Out by D.C. Circuit

As a business model, Prenda Law, a law firm, formed AF Holdings.  AF Holdings acquired the copyrights to pornographic movies and filed massive copyright infringement lawsuits against anonymous copyright infringers, John Does, for unauthorized downloading.  AF Holdings would next seek discovery.  Through discovery, it would obtain contact information for account subscribers of the IP addresses from which the porno films were downloaded.  It would then contact and negotiate settlements with the subscribers.  Lawsuits against defendant subscribers who decided to litigate were dismissed by AF Holdings.  According to an article on Prenda Law’s practices, it made about $15 million from the John Doe copyright infringement lawsuits in less than three years.

After the district court judge granted discovery from Internet service providers in one such case, Cox Communications and other Internet service providers appealed, arguing that responding to the subpoenas would be unduly burdensome and that the district court lacked venue and personal jurisdiction over most subscribers.  Most of the subscribers resided outside of the district court’s jurisdiction.  Obtaining information about Internet subscribers residing outside of the district would allow AF Holdings to pressure those subscribers into settlements without requiring AF Holdings to comply with applicable statutes and court rules.

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Domain Name Seller Pushes the Envelope Too Far

Domain name purchase negotiations went seriously awry here.  SelectHealth, Inc., is a Utah corporation and health insurance provider.  James E. Risinger is a Texas resident.  Risinger owned the domain name www.selecthealth.com.  SelectHealth contacted Risinger about purchasing the domain name and entered into negotiations with Risinger.  Risinger copied SelectHealth’s website, www.selecthealth.org, and pasted it into the www.selecthealth.com website.  Risinger then added a registration survey and email capability to the www.selecthealth.com website.  Over 1,200 emails and 637 registrations were collected by Risinger, who then turned this information over to SelectHealth, apparently in an effort to drive up the domain name’s purchase price. 

SelectHealth sued Risinger in federal district court in Utah, alleging that Risinger caused confusion by misappropriating Select Health’s copyrighted material, trade names, trade dress and trademarks and that SelectHealth suffered damages.  The district court denied Risinger’s motion to dismiss for lack of personal jurisdiction.  SelectHealth’s copyright infringement claim provided enough allegation of injury to SelectHealth to prevent Risinger’s motion to dismiss from being granted.

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Copyright Infringement Not Always Enough to Satisfy Long-Arm Statute

Troma Entertainment, Inc., produced and owns the distribution rights for the spoof films Citizen Toxie, Toxic Avenger Part IV and Poultrygeist: Night of the Chicken Dead.  Lance Robbins and King Brett Lauter represented to Intravest Beteiligungs GMBH, a German company, that Robbins and Lauter owned the distribution rights to the films.  Intravest paid Robbins and Lauter for the right to distribute the films on pay per view channels in Germany.  Troma did not authorize the distribution and was not compensated for the distribution of the films.

Troma, a New York corporation, sued Robbins and Lauter for copyright infringement in the Eastern District of New York.  Troma did not allege that the events giving rise to the copyright infringement occurred in New York.  The district court granted Robbins’ and Lauter’s motions to dismiss for lack of personal jurisdiction.  The only issue on appeal to the Second Circuit Court of Appeals was whether the district court lacked personal jurisdiction over Robbins and Lauter under the New York State long-arm statute.  The Second Circuit affirmed the district court’s ruling that it lacked personal jurisdiction over the defendants. The Second Circuit’s ruling does not mean that Troma cannot sue Robbins and Lauter. It simply means that Troma cannot sue Robbins and Lauter in New York. The district court gave Troma the option of transfering the case to the Central District of California, which Troma refused.

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Trade Secrets Claim Results from Copyright Infringement Investigation

nexTUNE, a Washington corporation, provides digital music services to businesses and individuals.  Over a period of more than six years, nexTUNE developed music delivery technologies that it considered trade secrets.  EMI Music is a major music company.  EMI sent nexTUNE a cease and desist letter, which accused nexTUNE of copyright infringement.  EMI then requested information about nexTUNE’s music services in connection with its investigation of nexTUNE’s claim that a statutory license covered nexTUNE’s use of EMI’s copyrighted sound recordings.  nexTUNE agreed to provide the information requested, on the condition that it be kept confidential.  nexTUNE’s president met with EMI’s outside counsel, Buck McKinney and Christopher Harrison, in Austin, Texas, and provided the requested information.  In a phone conversation before the meeting, McKinney agreed to keep the information confidential.  At the meeting, nexTUNE’s president recognized Harrison as someone who was working for a nexTUNE direct competitor and had previously worked for other nexTUNE’s direct competitors.

nexTUNE sued EMI, McKinney and Harrison in the Western District of Washington, alleging non-infringement of EMI’s copyrights (a federal law claim) and misappropriation of trade secrets (a state law claim).  Harrison moved to dismiss the trade secret misappropriation claim against him for lack of personal jurisdiction (FRCP 12(b)(2)) and failure to state a claim upon which relief can be granted (FRCP 12(b)(6)).  McKinney moved to dismiss the trade secret claim against him for lack of subject matter jurisdiction (FRCP 12(b)(1)) and lack of personal jurisdiction.  EMI moved to dismiss the trade secret claim against it for lack of subject matter jurisdiction and failure to state a claim upon which relief can be granted.  The district court granted Harrison’s motion to dismiss for lack of personal jurisdiction, but denied McKinney’s motion.  The district court granted McKinney’s and EMI’s motions to dismiss for lack of subject matter jurisdiction without prejudice and with leave to amend the complaint.  EMI’s motion to dismiss for failure to state a claim was granted and the claim dismissed without prejudice.

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No Expedited Discovery of Torrent Peers in Internet Copyright Infringement Cases

Third Degree Films filed a complaint against 110 John Doe defendants, alleging copyright infringement arising out the unauthorized distribution of its copyrighted pornographic movie through BitTorrent.  BitTorrent is a peer-to-peer file sharing protocol in which each peer acts as a server, storing and distributing small pieces of the work. 

Third Degree filed a motion to conduct expedited discovery to obtain names, addresses, telephone numbers and other information on the defendants from their Internet Service Providers (ISPs) using the Internet Protocol (IP) addresses collected by Third Degree’s investigator.  The district court denied the motion without prejudice, ruling that Third Degree’s need for expedited discovery did not outweigh the prejudice to the John Doe defendants. 

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Personal Jurisdiction Over Foreigner Who Accessed Server in Forum State

The Second Circuit Court of Appeals recently held that a Canadian defendant’s remote use of a computer located in Connecticut satisfied the jurisdictional requirements of both the Connecticut long-arm statute and due process.  MacDermid, Inc., a specialty chemical company, maintains its principal place of business in Waterbury, Connecticut.  Defendant Jackie Deiter lives near Toronto, Ontario, Canada and is a former employee of MacDermid’s Canadian subsidiary, MacDermid Chemical, Inc.  MacDermid alleged that prior to her termination, Deiter forwarded confidential and proprietary MacDermid files from her corporate email account to her personal email account, thereby misappropriating MacDermid’s trade secrets and obtaining unauthorized access to and misusing MacDermid’s computer system.  Deiter obtained and emailed the files by remotely accessing MacDermid’s Waterbury, Connecticut servers.

MacDermid sued Deiter in federal district court in Connecticut for state law violations, basing jurisdiction on diversity of citizenship and the Connecticut long-arm statute.  The district court judge granted Deiter’s Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction, ruling that Deiter did not use a Connecticut computer when she sent email from the MacDermid computer at her home to her personal home computer.  The Second Circuit reversed the district court’s decision. 

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Willful Copyright Infringement is Enough Contact for Personal Jurisdiction

Washington Shoe is a Washington State corporation that manufactures footwear for men, women and children.  Through one of its sales representatives, Washington Shoe had an ongoing relationship with A-Z Sporting Goods, a single retail store located in Alma, Arkansas.  A-Z is an Arkansas corporation.  A-Z does not sell products over the Internet.  Washington Shoe’s sales representative discovered that A-Z was selling infringing copies of two of Washington Shoe’s copyrighted children’s rain boot designs.  Washington Shoe’s attorney sent A-Z two cease and desist letters.  After receiving the second letter, A-Z moved the boots out of its store, but sold its remaining supply of the boots to a thrift store.

Washington Shoe sued A-Z for copyright infringement in the Western District of Washington.  The district court granted A-Z’s motion to dismiss for lack of personal jurisdiction, but denied A-Z’s request for attorneys’ fees.  Washington Shoe appealed the dismissal of its case.  A-Z cross-appealed the denial of its motion for attorneys’ fees.  The Ninth Circuit Court of Appeals reversed the order dismissing the case.  The Ninth Circuit ruled that A-Z, whose only relevant contact with Washington State was its alleged willful copyright infringement, was subject to personal jurisdiction in Washington State.

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Laches Defense Upheld, But Injunction Imposed After Long Delay by Trademark Owners

Thomas Kenneth Abraham founded Paddle Tramps in 1961.  Paddle Tramps manufactures and sells products displaying the names and symbols of fraternities and sororities and is known for its wooden paddles decorated with the Greek letters associated with fraternities and sororities.  Abraham was first contacted about obtaining a license from the Greek Organizations in 1990.  Abraham received letters from individuals representing the Greek Organizations periodically until 2007, when the Greek Organizations sued him in the Southern District of Florida for patent infringement and unfair competition.  That case was dismissed for improper venue, as Paddle Tramps is located in Lubbock, Texas. 

Abraham then brought a declaratory judgment action against the Greek Organizations in 2008.  A jury found that Abraham established his laches defense and that the Greek Organizations did not establish their unclean hands counter-defense.  The district court ruled that the Greek Organizations were not entitled to damages, due to the laches finding.  The district court judge enjoined Abraham from selling and using in advertising all of the infringing products except one.  Both parties appealed to the Fifth Circuit Court of Appeals.  The Fifth Circuit affirmed the district court’s judgment.

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