Who’s on First? Copyright Infringement Question as Tangled as the Routine

The creators of the dark comedy play Hand to God included in their play dialogue from Who’s on First?, the iconic comedy routine created by Abbott and Costello.  Abbott and Costello’s heirs sued Kevin McCollum and others involved in creating Hand of God for copyright infringement.  McCollum and the other defendants argued that the heirs failed to allege a continuous chain of title to the routine, that the routine passed into the public domain and that the Hand of God creators made fair use of the routine.  The district court agreed that the plaintiffs did not sufficiently allege a copyright infringement claim and granted the defendants’ motion to dismiss for failure to state a claim.

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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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No Copyright Infringement for Photos Registered After Suit Filed

Louis Psihoyos is a professional photographer.  John Wiley & Sons, Inc. is a textbook publisher.  Wiley discovered that it published some of Psihoyos’ photos in its textbooks without a license from Psihoyos.  Wiley requested licenses from Psihoyos after the fact.  Psihoyos sued Wiley for infringing the copyrights on eight photos.  Although Psihoyos won the case overall, some of the photos he alleged were infringed were excluded from consideration by the jury.

This case emphasizes the importance of making sure that the infringed works are registered before the complaint is filed, making sure that the infringed works identified in the complaint are the works that were actually infringed and making sure that the registration certificates provided to the court by the copyright owner are for the works that were actually infringed.

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Domain Tools Seeks Declaratory Relief in Copyright and Trademark Dispute

This is a summary of the allegations in Domain Tools’ complaintDomain Tools, LLC is a King County-based company offering online domain name research and monitoring services.  Domain Tools’ services include domain name research, registration research, WHOIS information, historical WHOIS information and historical static screenshots of the home pages of websites that have been associated with specific domain names.  WHOIS information is the contact information that everyone who registers a domain name must provide, as per ICANN requirements.  ICANN is the Internet Corporation for Assigned Names and Numbers and is the entity that controls the domain name system. 

The historical screenshots provided by Domain Tools are not interactive and do not substitute for live websites.  Domain Tools believes that by providing access to historical information about the Internet, it provides a service that benefits the public.  The DOMAINTOOLS trademark is registered on the U.S. Patent and Trademark Office (USPTO) Principal Register, which means that it is a distinctive trademark.  Domain Tools, LLC is the exclusive licensee of the mark. 

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Batmobile Not Excluded From Copyright Protection As a Matter of Law, Rules District Court

DC Comics, owner of registered copyrights in the Batman comic book character, sued Mark Towle, dba Gotham Garage, for copyright infringement for reproducing and distributing unauthorized and counterfeit Batmobile vehicles.  Judge Ronald S.W. Lew, U.S. District Court, Central District of California, recently denied defendant Towle’s motion to dismiss DC Comics’ copyright claim

The defendant filed a Federal Rules of Civil Procedure 12(b)(6) motion to dismiss for failure to state a claim upon which relief can be granted.  A Rule 12(b)(6) motion can be granted for “the lack of a cognizable legal theory or the lack of sufficient facts alleged under a cognizable legal theory.”  (Order pdf page 2).

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VendNovation Sues to Enforce Copyrights and Protect Trade Secrets in Vending Machine Software

VendNovation, LLC, filed a complaint (pdf) claiming copyright infringement, breach of contract, misappropriation of trade secrets, unfair business practices and other causes of action against Apex Industrial Technologies LLC, on April 26, 2011, in the Western District of Washington.  VendNovation developed “Web Management Software,” a server-hosted software program that allows the user to remotely control vending machines through an Internet connection.  Special control boards programmed by VendNovation are installed in the vending machines.  VendNovation claims trade secrets in the design of the software and the know-how to make it work.  It licensed its software, but did not license the source code.  VendNovation also protected its trade secrets by using a secure procedure to register its software copyrights.  Apex markets and sells vending machines.

VendNovation alleges that it, Apex and a vending machine manufacturer formed a three-way venture to manufacture, market and license vending machines with VendNovation’s Web Management Software and control boards.  The parties operated under an oral agreement for about two years. 

VendNovation alleges that in April 2008, Apex wanted to acquire VendNovation’s assets or become an exclusive licensee and obtain access to VendNovation’s source code so that it could pursue an opportunity with a large customer (Fastenal).  VendNovation declined, but Apex started selling vending machines with VendNovation’s Web Management Software and control boards to Fastenal without an exclusive license from VendNovation or access to its source code.  The Web Management Software used by Fastenal was hosted on VendNovation’s servers.

Users must agree to VendNovation’s End User License Agreement (EULA) before they can access its website.  The EULA is a “click through” license in which users must acknowledge reading the EULA by clicking a button.  The EULA contains language claiming VendNovation’s copyright and intellectual property rights in the software, including the software’s look and feel.  The EULA prohibits reverse engineering, modification or de-compiling the software.

VendNovation alleges that it entered into a written licensing contract with Apex in February 2009.  The license reiterates VendNovation’s ownership in the software, control boards and derivative works.  The license provides that Apex can access VendNovation’s source code and produce derivative works only if VendNovation becomes insolvent. 

VendNovation allegedly learned in January 2011 that Apex ordered vending machines from the manufacturer without VendNovation’s control boards.  It alleges that Apex developed its own competing control board and an inferior substitute for VendNovation’s Web Management Software.  Some people installing Apex’s competing software believed that VendNovation designed the software and contacted VendNovation for technical support.  VendNovation alleges that Apex sold vending machines with Apex’s competing control board and access to Apex’s competing software to Fastenal.  Apex also sold a desktop vending machine model incorporating VendNovation’s control board and Apex’s competing web management software to Fastenal and others.

Apex’s competing works allegedly use VendNovation’s trade secrets and copyrighted works, without VendNovation’s authorization.  VendNovation has not received compensation from Apex for using VendNovation’s copyrighted works or trade secrets.

VendNovation’s cause of action for copyright infringement includes claims against Apex of willful infringement and Apex’s unauthorized copying, distributing and creation of derivative works.  VendNovation requests injunctive relief under 17 USC §502 and impounding and destruction of infringing materials pursuant to 17 USC §503

The number for this case is Case 2:11-cv-00700-JLR, Western District of Washington at Seattle.

Microsoft Complaint Against Hagen and BC Tech Gear Survives Motion to Dismiss

Microsoft filed a complaint against Jason W. Hagen, doing business as BC Tech Gear, also known as BCMT, Inc. and Doubletimeit, and other defendants in the Eastern District of California on December 1, 2009.  The case was transferred to the Western District of Washington on August 31, 2010.  The First Amended Complaint was filed on February 16, 2010.

The First Amended Complaint  (pdf) claims copyright infringement; federal trademark infringement; false designation of origin, false description and false representation; common law unfair competition; imposition of constructive trust; and requests an accounting.  Microsoft alleges that Defendants advertise, market and distribute computer software, including purported Microsoft software.  Defendants allegedly do business in Fresno, California and Ridgefield, Washington.

Microsoft alleges that the Defendants distributed counterfeit Windows XP Pro software components numerous times between March and June 2007.  Microsoft sent Defendants a letter in August 2007 notifying Defendants of their infringing activity and asking them to stop.  Defendants distributed the counterfeit products several more times between February 2008 and June 2009.  Microsoft sent a second letter in June 2009, informing Defendants that they may have distributed illegal and/or unlicensed software.  Defendants distributed the counterfeit software to an investigator in October 2009.  Defendants allegedly advertised, marketed and/or distributed reproductions, copies or colorable imitations of Microsoft’s copyrighted materials, trademarks, logos and service mark.

Defendant Jason W. Hagen, appearing pro se, filed a motion to dismiss on June 29, 2010 and an amended motion to dismiss on January 30, 2011.  In his amended motion to dismiss, Hagen argued insufficiency of service of process under Federal Rule of Civil Procedure 12(b)(4) in that he did not receive an Amended Summons naming him as a defendant, the lack of a plain statement showing why Plaintiff is entitled to relief under Rule 8(a)(2) and failure to state a claim upon which relief can be granted under Rule 12(b)(6), as the wrong party was named.  Hagen claimed that there was no evidence connecting him with the activity complained of.  Specifically, Hagen argued that Microsoft was unable to connect his name to the eBay user name “bctechgear,” under which Microsoft alleged some of the infringing sales occurred from Fresno, California.  Hagen argued that the complaint did not meet the standard of Bell Atlantic v. Twombly.

The Court’s Ruling (pdf)

The court stated

A complaint may be dismissed under Rule 12(b)(6) of the Federal Rules of Civil Procedure if it appears beyond doubt that the plaintiff can prove no set of facts in support of the claim that would entitle him to relief.

The court cited Bell Atlantic v. Twombly in declaring “[a] court may dismiss a claim under Rule 12(b)(6) if the plaintiff’s factual allegations are not sufficient ‘to state a claim to relief that is plausible on its face.’”  The court quoted Ashcroft v. Iqbal:  “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”  The court ruled that Microsoft sufficiently put Hagen on notice of its copyright and trademark infringement claims pursuant to Rule 8. 

Hagen argued that he is the wrong party and that some other person misappropriated his name.  The court noted that a Rule 12(b)(6) review is generally limited to a review of the complaint, but that the court may take judicial notice of public records outside of the pleadings.  Microsoft submitted Washington Department of Licensing and Washington State Department of Revenue records showing Hagen doing business as BC Tech Gear.  The court concluded

Whether or not someone stole Defendant’s identity when opening and operating BC Tech Gear is inappropriate for a Rule 12(b)(6) motion to dismiss.  These issues are appropriately left to discovery and further motions.

The court indicated that the same is true regarding insufficient service.  The docket reflects that the summons and complaint were personally served on Hagen and any factual dispute regarding proper service is the subject of further discovery.

Hagen filed a Motion for Reconsideration of Order Denying Motion to Dismiss First Amended Complaint on March 30, 2011.  He argued that the complaint did not meet the Rule 12(b)(6) standard and that some finer points had been overlooked; that there was new evidence that the complaint failed to state a claim under Rule 12(b)(6); and that the complaint did not allege fraud with particularity, as required by Rule 9(b).  The court denied the motion (pdf) on April 4, 2011, citing Western District of Washington Local Civil Rule 7(h)(1) (page 11):

Motions for reconsideration are disfavored.  The court will ordinarily denied [sic] such motions in the absence of a showing of manifest error in the prior ruling or a showing of new facts or legal authority which could not have been brought to its attention earlier with reasonable diligence.

The court found that there was no error in its prior ruling or new facts or legal authority to indicate error in the prior ruling.

The case number is Western District of Washington at Tacoma, No. C10-5621 RJB.