It’s All About the Chorus in Usher and Bieber Copyright Infringement Case

Musician Devin Copeland and his songwriting partner, Mareio Overton, wrote a song entitled “Somebody to Love” in 2008 and registered the copyright for the song later that year.  Usher Raymond IV and his manager, Jonetta Patton, listened to Copeland’s album, including “Somebody to Love,” in late 2009.  During a phone conversation with Copeland, Patton expressed interest in Copeland’s music and having him join Usher on tour.  Nothing came of that.  A few months later, Usher recorded and posted on YouTube a song entitled “Somebody to Love.”  Usher’s protégé, Justin Bieber, also recorded a song entitled “Somebody to Love,” releasing his version in the spring of 2010. 

Copeland sued Usher and Bieber for copyright infringement, alleging access to Copeland’s work and a striking resemblance to Copeland’s work.  Bieber and Usher filed a Rule 12(b)(6) motion to dismiss Copeland’s complaint, arguing that no reasonable jury could find that the Copeland song and the Usher and Bieber songs were substantially similar.  The district court agreed with Usher and Bieber and dismissed Copeland’s complaint.  The Fourth Circuit Court of Appeals vacated the district court’s ruling and remanded the case.

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It’s a Bead Dog Eat Bead Dog World!

The Fifth Circuit Court of Appeals:  “This case concerns the intersection between intellectual property rights and a Mardi Gras tradition.”  New Orleans Mardi Gras parade onlookers receive strands of beads thrown by parade “krewes.”   The onlookers can create “bead dogs” by twisting the strands of beads into the shape of a dog.  Haydel Enterprises, which also owns a bakery that sells special Mardi Gras cakes, commissioned an artist to design a “Mardi Gras Bead Dog” mascot.  Haydel’s jewelry mascot is made of sterling silver.  Haydel received USPTO trademark registrations for the MARDI GRAS BEAD DOG word mark and for its design mark.  Haydel also received a copyright registration from the Copyright Office for its jewelry design.

Raquel Duarte sells jewelry and accessories through her business, Nola Spice Designs.  Duarte sells a bead dog that she makes from beads and wire, which she learned to do as a child.  Nola Spice Designs received a cease and desist letter from Haydel.  Nola Spice Designs sued Haydel for a declaratory judgment that its actions do not violate trademark law and sought the cancellation of Haydel’s trademark.  Haydel asserted trademark infringement and copyright infringement counterclaims against Nola Spice.  This post focuses on the Fifth Circuit’s copyright infringement discussion.

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Photo’s Copyright Protection Not Increased by Subsequent Events

Donald Harney, a professional photographer, took the photo of a man with his daughter riding piggyback on his shoulders outside of a church on Palm Sunday on Beacon Hill in Boston.  The man told Harney that his name was Clark Rockefeller and his daughter’s name was Reigh.  The Beacon Hills Times published the photo on the front page.  About a year later, the man in the photo, whose actual name was Christian Karl Gerhartsreiter, abducted the girl, his daughter, during a custodial visit.  The FBI placed Harney’s photo on a “Wanted” poster without Harney’s knowledge or consent.  The girl was returned safely and Gerhartsreiter arrested about a week later.

The story broke that Gerhartsreiter was a professional imposter, having assumed many false identities over the years, and that he was also being investigated in connection with a 20 year old homicide.  Public interest in Gerhartsreiter’s story remained high.  Harney subsequently licensed the photo for publication in numerous media outlets.  Sony Pictures created a made for TV movie about Gerhartsreiter.  Sony recreated Harney’s photo using the actors in its movie, without Harney’s permission.  Harney sued Sony for copyright infringement.  The district court ruled that Sony’s photo was not substantially similar to Harney’s photo, granted Sony’s motion for summary judgment and dismissed the case.  On appeal, the First Circuit Court of Appeals affirmed the district court’s ruling.

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Life is good’s Jake not Substantially Similar to Penmen, Not Infringing

Gary Blehm, a commercial artist and the creator of Penmen characters, sued brothers Albert Jacobs and John Jacobs, creators of Life is good, for copyright infringement.  Blehm’s Penmen are “deceptively-simple looking” figures involved in a wide variety of activities based on Blehm’s life experiences.  Blehm’s Penmen are drawn in black on a white background and “have round heads, disproportionately large half-moon smiles, four fingers, large feet, disproportionately long legs, and a message of unbridled optimism.”  (Opinion pdf pages 2-3).  Between 1989 and 1993, Blehm created 6 posters, each of which contained hundreds of Penmen engaged in a variety of activities.  Blehm’s Penmen posters were sold nationally between 1990 and 2004.  He also created t-shirts, a Penmen comic strip and a Penmen book.

The Jacobses created a leading Life is good character, Jake, in August 1994.  Life is good as a company aspires to “overarching themes of optimism, simplicity, humor, and humility.”  (Opinion pdf page 6).  Blehm claimed that Life is good’s Jake infringed Blehm’s copyrighted Penmen works.  The district court granted Life is good’s motion for summary judgment, ruling that the Jake images are not substantially similar to the legally protectable elements of the Penmen images.  The Tenth Circuit Court of Appeals affirmed, stating “we must be careful not to grant Mr. Blehm a monopoly over all figures featuring black lines representing the human form.  Our analysis cannot be so generous as to sweep in all manner of stick figures as potentially infringing on his works.”  (Opinion pdf page 26).

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“Stealing Idea” Suit Dismissed on Summary Judgment

Frank Coble accused Anita Renfroe of stealing his idea for a song and filed suit against her, alleging copyright infringement and the trademark law claims of unfair competition and false designation of origin.  The district court granted Renfroe’s motion for summary judgment on both the copyright and trademark claims.

Facts.  Coble and Renfroe are both comedians.  Coble performs standup comedy and is also a full time artist.  Renfroe is a full time professional singer, songwriter and comedian whose comedy is aimed at mothers.  This brand of humor has been her forte since 1998.

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Copyright Infringement Suit Regarding Precast Concrete Vault Drawings Yields Summary Judgment Rulings

Western District of Washington Judge Marsha J. Pechman granted in part and denied in part Defendant’s motion for summary judgment, granted Plaintiff’s motion for summary judgment and granted Plaintiff’s motion to amend its complaint in Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc. (pdf) on March 2, 2011.

Facts.  Plaintiff Oldcastle Precast, Inc. began manufacturing concrete precast vaults in the 1960s and is considered the leader in the precast concrete vault market.  Defendant Granite Precasting & Concrete, Inc. is a competitor.  In 2006, Plaintiff became aware that Defendant was using drawings similar to those created by Plaintiff.  Plaintiff notified Defendant of the alleged copying, the parties met and Defendant agreed to change 12 sets of its drawings.  Defendant did not sign Plaintiff’s proposed settlement agreement.  Plaintiff did not follow up.

Plaintiff monitored Defendant’s website from 2007 through 2009 and found the continued infringing use of only one product.  Plaintiff believed that Defendant complied with the agreement, except for that one product.  Sometime in mid-2007, Plaintiff became aware that Defendant did not change all of its drawing and product numbers.  In 2009, Defendant submitted a bid for a Seattle City Light project using drawings that Plaintiff believed infringed its copyright.  Plaintiff sued Defendant for copyright infringement on February 24, 2010.

Defendant filed a summary judgment motion, arguing that the statute of limitations had expired on Plaintiff’s copyright and trademark claims, that its state law breach of implied covenant claim was barred by the statute of frauds and that Plaintiff’s copyright and trademark claims failed on the merits.  Plaintiff filed a summary judgment motion, too, to dismiss Defendant’s copyright misuse counterclaim. 

Plaintiff also filed a motion to amend its complaint.  Plaintiff’s previous amended complaint alleged that Defendant downloaded Plaintiff’s drawings electronically and used those drawings to create its own infringing drawings.  Plaintiff’s drawings were registered with the Copyright Office.  Testimony from a September 2010 deposition led Plaintiff to believe that Defendant copied some much older drawings that Plaintiff’s predecessor produced and published and that Defendant obtained from Seattle City Light.  Plaintiff believed that those drawings were registered under the Copyright Act of 1909, not the Copyright Act of 1976. 

Plaintiff undertook a laborious process of inspecting company records for the earliest publication of the documents, preparing the renewal registration and supplementing its registration under the 1976 Act.  Plaintiff submitted its documents to the Copyright Office on November 22, 2010.  On December 9, 2010, the Copyright Office granted the renewal and supplemental registrations.  Plaintiff filed its motion for leave to amend its complaint on December 22, 2010.  Defendant moved for summary judgment on all of Plaintiff’s claims on December 16, 2010, the discovery cut-off was November 26, 2010, the dispositive motion deadline was December 27, 2010 and trial was set for April 25, 2011.

Defendant’s Motion for Summary Judgment.  The court will grant a motion for summary judgment “when the moving party has shown an entitlement to judgment as a matter of law and there is an absence of genuine issues of material fact.”  (Order pdf page 4).

Defendant moved for summary judgment on the following bases:

  • The statute of limitations on the copyright claim expired.
  • The statute of limitations on the Lanham Act (trademark) claim expired.
  • The state breach of implied covenant claim was barred by the statute of frauds.
  • Plaintiff’s works were not copyrightable.
  • The Lanham Act claim fails on the merits.

Copyright Act statute of limitations.  The court found that the three year copyright statute of limitations expired regarding one drawing, but that the Plaintiff could not have discovered the alleged infringements regarding the other drawings through diligent research in the three years prior to the date the complaint was filed.  The court granted Defendant’s motion for one drawing.

Lanham Act statute of limitations.  The court noted that there is no express statute of limitations in the Lanham Act and applied the statute of limitations for the closest analogy under Washington State law – the common law tort of trade name infringement.  The applicable statute of limitations was three years.  The court ruled that Plaintiff’s Lanham Act claims were barred by the statute of limitations for one drawing.

Statute of frauds.  The statute of frauds requires that “any contract that by its terms is not to be performed in one year from the making thereof must be in writing.”  (Order pdf page 8, citing RCW 19.36.010.)  The court ruled that since the contract could not be performed within one year but required Defendant’s forbearance from copying Plaintiff’s work forever, Plaintiff’s breach of implied covenant claim was barred by the statute of frauds.

Defendant argued that Plaintiff’s works were not copyrightable on the following theories:

  • The works are outside the scope of copyright protection.
  • There is insufficient substantial similarity between Defendant’s drawings and Plaintiff’s drawings to establish copyright infringement.
  • Plaintiff’s copyright protection is “thin” and therefore protects only against copies that are virtually identical.
  • The idea of precast concrete vault drawings merges with the expression.
  • Plaintiff’s drawings are scenes a faire (a standard feature).

Scope of protection.  The court ruled that technical drawings such as Plaintiff’s are expressly included as works covered by the Copyright Act.  17 USC §§ 101 and 102(a)(5).  The court also ruled that a technical drawing is not a “useful article” under the Copyright Act.  The technical drawing of a precast concrete vault, a useful article, was not itself a useful article.  Useful articles are not protected by copyright law.

Substantial similarity.  Plaintiff has the burden of showing 1) access to the copyrighted work and 2) substantial similarity between the copyrighted work and the infringing work.  “Substantial similarity” has both an extrinsic test and an intrinsic test.  The court rules only on the extrinsic test on summary judgment, as the intrinsic test is for the jury to determine at trial.  The court found “Plaintiff to have shown adequate articulable similarities between the expressive elements of the drawings to satisfy the extrinsic test.”  (Order pdf page 12). 

Thin copyright protection.  Defendant argued that there is only a limited range of ways to express the idea of a precast vault, requiring Plaintiff to show “virtual identity” between its drawings and Defendant’s.  The court found that Defendant did not present enough evidence on this point to prevail.  The court also stated that “there is nothing inherent in the notion of precast concrete vaults that limits their range of expression.”  (Order pdf page 13).

Merger doctrine.  “When an idea and its expression are indistinguishable, or ‘merged,’ the expression will only be protected against nearly identical copying…..Merger means there is practically only one way to express an idea.”  (Order pdf page 14).  The court ruled that evidence that Plaintiff’s vault drawings are the industry standard does not satisfy the merger doctrine.

Scenes a faire.  “Scenes a faire holds that when similar features in the item claimed to be copyrighted are as a practical matter indispensable, or at least standard, in the treatment of a given idea, they are treated like ideas and are therefore not protected by copyright.”  (Order pdf page 14).  The court ruled that the scenes a faire doctrine did not apply, as Plaintiff sought protection for only specific expressions of vaults, not for the expression of utility vaults in general.

Lanham Act claim merits.  Plaintiff claimed trade dress violations under 15 USC §1125(a)Trade dress is some physical aspect of the product that identifies it as coming from a particular source.  Plaintiff has the burden of proving “(1) that its claimed dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s product or service creates a likelihood of consumer confusion.” (Order pdf page 16).  The court granted Defendant’s motion for summary judgment on this claim, as Plaintiff did not argue the first two points and did not provide competent evidence on the third point.

Plaintiff’s Motion for Summary Judgment.  The court granted Plaintiff’s motion for summary judgment on Defendant’s copyright misuse counterclaim.  “The party pursuing a copyright misuse claim must prove that the holder of the copyright is using its monopoly secured by the copyright to extend to areas not covered by the copyright itself.”  (Order pdf page 18).  “[T]here must be facts tending to show efforts to expand and extend rights secured by the Copyright Act beyond their proper scope.”  (Order pdf page 19). 

The court ruled that Defendant did not articulate a public policy reason to invalidate Plaintiff’s copyright and that it did not provide sufficient facts to support its claim of copyright misuse.  The court rejected Plaintiff’s argument that copyright misuse is a defense and not a cause of action and that therefore it was improperly pled as a counterclaim.  Plaintiff’s argument that Defendant’s copyright misuse counterclaim was barred by the statute of limitations was also rejected by the court, as the claim was based on Plaintiff filing the lawsuit in 2010 and not on Plaintiff’s actions in 2006.  The court ruled that Defendant could reassert its copyright misuse counterclaim in response to Plaintiff’s second amended complaint.

Plaintiff’s Motion to Amend its Complaint.  The factors to consider in granting a motion to amend are “(1) undue delay, (2) bad faith, (3) futility in amendment and (4) prejudice to the non-moving party.” (Order pdf page 20).  The court granted Plaintiff’s motion to amend, as it did not find evidence to establish any of these factors.  The court ruled that the amendment focused only on clarifying what copyrights apply and how Defendant obtained the drawings.  Plaintiff’s timing in filing its motion was not undue delay.

Plaintiff’s motion for reconsideration on the breach of implied covenant claim was denied on April 11, 2011.

This case is Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc., Case No. C10-322 MJP, Western District of Washington at Seattle.