Attorney’s Fees Awards Not Controlled by Losing Party’s Reasonableness Arguments

Before ending its 2015-2016 term, the U.S. Supreme Court issued an opinion in Kirtsaeng v. John Wiley & Sons, Inc.  – for a second time.  SCOTUS issued its first Kirtsaeng opinion in March 2013.  That time, the Court ruled that Kirtsaeng did not infringe Wiley’s copyrights by selling books in the U.S. that were published abroad by Wiley.  I posted on the Court’s decision in First Sale Doctrine Not Limited by Geography, Rules U.S. Supreme Court.

Whether the lower courts erred in denying Kirtsaeng’s motion for attorney’s fees brought Kirtsaeng before the Court the second time.  The Court determined that the lower courts may not have understood the full scope of their discretion to award attorney’s fees and remanded the case for further consideration of Kirtsaeng’s attorney’s fees motion.

Continue reading “Attorney’s Fees Awards Not Controlled by Losing Party’s Reasonableness Arguments”

Successful Bit Torrent Defendant’s Attorney’s Fees Request Denied

What happens when the copyright owner of a motion picture sues multiple “John Doe” defendants for copyright infringement through use of the BitTorrent protocol, but the copyright owner later dismisses the case?  Is a defendant who challenges the copyright owner entitled to attorney’s fees?

Killer Joe Nevada, LLC owns the copyright to the motion picture “Killer Joe.”  Killer Joe Nevada sued John Doe defendants for copyright infringement, identifying the defendants only by their Internet Protocol (IP) addresses.  Killer Joe Nevada identified Leigh Leaverton by name after subpoenaing Leaverton’s Internet service provider.  Killer Joe Nevada filed a motion to make Leaverton a defendant in the lawsuit.  Leaverton denied infringing Killer Joe Nevada’s copyright and counterclaimed for a declaratory judgment that she did not infringe.  Killer Joe Nevada then moved to voluntarily dismiss its complaint and to dismiss Leaverton’s counterclaim as moot.  Leaverton opposed Killer Joe Nevada’s voluntary dismissal unless she received an award for attorney’s fees.  The district court granted Killer Joe Nevada’s motion to voluntarily dismiss its complaint, dismissed Leaverton’s counterclaim as moot and denied Leaverton’s attorney’s fees request.  On appeal, the Eight Circuit affirmed the district court’s judgment.

Continue reading “Successful Bit Torrent Defendant’s Attorney’s Fees Request Denied”

Distinctively Shaped Hookah Water Container Copyright Smoked

Under what circumstances can copyright protect the shape of a useful article?  In Inhale, Inc. v. Starbuzz Tobacco, the Ninth Circuit Court of Appeals faced the question of whether the distinctive shape of a hookah water container affects its copyrightability.  The Ninth Circuit ruled that the hookah water container was not protected by copyright, even though it had a distinctive shape.

Inhale Inc. obtained a copyright on a hookah water container depicting a skull-and-crossbones design.  Starbuzz Tobacco allegedly sold a hookah water container with the same shape as the copyright registered Inhale hookah container, but without the skull-and-crossbones design.  Inhale sued Starbuzz for copyright infringement.  The Ninth Circuit concluded that the Copyright Office issued the registration for the skull-and-crossbones design, without considering the shape of the container.

Continue reading “Distinctively Shaped Hookah Water Container Copyright Smoked”

District Court Sometimes Required to Consult With Register of Copyrights

Mark Swift entered into a partnership with Michael Schaltenbrand and Joey Siddle.  They agreed that Medicate Pharmacy, a retail pharmacy owned by Schaltenbrand, would provide mail-order services to customers found by DeliverMed, a marketing firm owned by Swift.  The parties agreed to use the DeliverMed name to identify the services the partnership provided to customers.  Swift hired Deeter Associates to design a logo for the partnership to use in marketing its services.  Allan Kovin orally agreed with Linda Deeter, Deeter Associates’ Executive V.P., to perform the logo work as an independent contractor.  Kovin created a graphic design of a house and pestle and was the sole creator.

A dispute erupted among the partnership members.  Swift sued Schaltenbrand, Siddle and Medicate for federal and state law claims.  DeliverMed, Deeter Associates and Linda Deeter also sued the defendants, alleging trademark infringement claims for the defendants’ use of the logo.  Deeter Associates and Linda Deeter agreed to file the suit in exchange for a cash payment and expenses reimbursement from Swift.  DeliverMed applied to register a copyright for the logo.  DeliverMed represented to the Copyright Office that Linda Deeter was the author of the logo and that she transferred her copyright to DeliverMed by written agreement.  One week later, Deeter actually did sign a transfer of ownership agreement.  DeliverMed, Deeter Associates and Linda Deeter then amended their complaint to include a copyright infringement claim.  The district court ruled in the defendants’ favor on the copyright infringement claim and invalidated the copyright registration.  The Seventh Circuit Court of Appeals affirmed the district court’s ruling on the infringement claim, but determined that the district court erred in invalidating DeliverMed’s copyright registration.

Continue reading “District Court Sometimes Required to Consult With Register of Copyrights”

Copyright Owner Out-Hustles Flynt

When Ohio newscaster Catherine Bosley (aka Catherine Balsley) entered a wet t-shirt contest and danced nude at a bar while on vacation in Florida in March 2003, she didn’t realize that an amateur photographer was taking photographs of her.  Bosley lost her job as a news anchor when the amateur photographer posted photos of Bosley on the photographer’s website.  Bosley and her husband acquired all rights to the photos from the photographer and registered the copyrights with the Copyright Office in August 2004.

LFP, Inc. (aka Larry Flynt Publications) publishes Hustler magazine, which “contains graphic images and stories about sex.”  “Hot News Babes” is a recurring item in the magazine.  A Hustler reader nominated Bosley as a “hot news babe” in August 2005.  The reader did not provide Hustler with photos of Bosley, but told Hustler that it could find photos on the Internet.  One of the photos Hustler obtained online was a photo for which Bosley and her husband owned the copyright.  The photo included a visual copyright notice.  Hustler’s editors knew that the photo was copyrighted, but published the photo in the February 2006 edition without locating the copyright owner and without obtaining a license.  Hustler’s attorney advised Hustler that it could publish the photo as a fair use.  Bosley found out about the publication and filed suit against LFP for copyright infringement and other claims in February 2008.

Continue reading “Copyright Owner Out-Hustles Flynt”

Textbook Publishers’ Copyright Litigation Strategy Implodes in Bankruptcy Court

Textbook publishers Pearson EducationCengage Learning and The McGraw-Hill Companies filed suit against an individual for copyright infringement when, without authorization, that individual sold the publishers’ college textbook solutions manuals on the Internet.  The publishers probably could have stopped the infringing activities by sending a cease and desist letter.  Instead, the publishers sought to make an example of the infringer by filing a lawsuit in the Southern District of New York.  The publishers’ plan backfired when the litigation expenses overwhelmed the alleged infringer’s resources and he filed for bankruptcy in Minnesota, where he resides.

The bankruptcy court judge struck the publishers’ demand for a jury trial, awarded the publishers the minimum in statutory damages even after finding willful infringement of the publishers’ copyrights and denied the publishers’ motion for attorney’s fees.  The district court affirmed the bankruptcy court’s decision.  The Eighth Circuit Court of Appeals likewise affirmed the bankruptcy court’s decision.  On appeal to the Eighth Circuit, the publishers argued that they should have had a jury trial to determine damages and that they should have been awarded their attorney’s fees of more than $90,000.

Continue reading “Textbook Publishers’ Copyright Litigation Strategy Implodes in Bankruptcy Court”

Significant Damages and Attorney’s Fees Award in Music Performance Copyright Infringement Case Upheld by Ninth Circuit

Seven music company members (Music Companies) of the American Society of Composers, Authors, and Publishers (ASCAP) sued East Coast Foods, Inc. and its sole officer and director, Herbert Hudson, for copyright infringement arising out of musical performances of eight works at the Long Beach, California, Roscoe’s House of Chicken and Waffles restaurant.  The Ninth Circuit Court of Appeals upheld the district court’s grant of summary judgment and award of $36,000 in damages in favor of the Music Companies and the district court’s award of $162,728.22 in attorney’s fees to the Music Companies.

East Coast owns the Roscoe’s restaurant chain.  The Long Beach Roscoe’s restaurant opened in 2001.  The Sea Bird Jazz Lounge is attached to the restaurant.  ASCAP is a nonprofit music licensing organization that collects royalties for its members.  ASCAP contacted East Coast shortly after the Long Beach Roscoe’s opened to offer East Coast a license to perform music in the restaurant and lounge.  East Coast did not obtain a license and between 2001 and 2007, ignored ASCAP’s recurring requests to pay licensing fees. 

Continue reading “Significant Damages and Attorney’s Fees Award in Music Performance Copyright Infringement Case Upheld by Ninth Circuit”