Factual Decisions Required Before Querying Register of Copyrights

Palmer/Kane LLC sued Gareth Stevens Publishing (Stevens) for infringing the copyrights on a number of photograph copyrights owned by Palmer/Kane. After substantially completing discovery, Stevens informed the district court that it intended to contest the validity of the copyright registration certificate for four photos. Stevens asked the district court to request the advice of the Register of Copyrights on whether it would have refused to register the copyrights due to inaccurate registration.

The district court denied Stevens’ request. On a motion for reconsideration, the district court again denied Stevens’ request. The district court ruled that it could not decide from the facts before it the question of whether Palmer/Kane knowingly provided inaccurate information to the Copyright Office in the registration application.

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Stem Cell Photographer’s $1.6 Million Copyright Infringement Jury Verdict Upheld

Andrew Leonard photographs stem cells using an electron microscope.  Due to the technical skill required, he is one of just a handful of such photographers.  Leonard pays a scientific research institution to use its electron microscope.  He obtains cell samples from doctors, scientists and researchers.  Leonard takes the images in black and white, then uses his artistic judgment to add color to the images. 

Stemtech uses distributors to sell the nutritional supplements it formulates.  Stemtech distributors sign a contract and must comply with Stemtech’s policies and procedures manual.  Leonard licensed two of his stem cell images to Stemtech for limited use.  Stemtech failed to pay Leonard the agreed upon licensing fee and exceeded the scope of the license by using the images without a license in its promotional materials.  Further, Stemtech allowed some of its distributors to use Leonard’s images on their websites.  After Stemtech and its distributors refused to pay Leonard for the unauthorized use of his images, Leonard sued Stemtech and its distributors for copyright infringement.  The jury awarded Leonard a $1.6 million verdict against Stemtech on Leonard’s direct, vicarious and contributory infringement claims.  The issues on appeal to the Third Circuit were whether the district court should have granted Stemtech’s motion for a new trial on contributory and vicarious liability and damages and whether Leonard should have received prejudgment interest and infringer’s profits.

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Merchandising Missteps Lead to Willful Infringement and CMI Removal Claims

Music merchandising company Live Nation admitted to copyright infringement by using photographer Glen Friedman’s photographs of the hip-hop group Run-DMC on t-shirts and a calendar without Friedman’s authorization.  On appeal to the Ninth Circuit, the issues in Friedman’s lawsuit against Live Nation involved whether the evidence was sufficient to establish that Live Nation willfully infringed Friedman’s copyrights and to establish that Live Nation violated §1202(b) by knowingly removing copyright management information (CMI) from Friedman’s photos.  There was also an issue of whether the number of retailers who purchased infringing merchandise from Live Nation could be used to calculate statutory damages.

The district court granted summary judgment to Live Nation on the willful infringement and CMI issues.  The district court ruled that Friedman could recover one statutory damages award per work infringed, rejecting Friedman’s damages calculation based on the number of retailers.  The Ninth Circuit reversed the district court’s rulings on the willful infringement and CMI issues, but upheld the district court’s ruling on the statutory damages issue.

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Known Copyright Registration Inaccuracies Can Hurt Later

I’m going to ignore blog post best practices and start out with a statute:

(b)

(1) A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, unless—

(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and

(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.

(2) In any case in which inaccurate information described under paragraph (1) is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. §412(b).

Palmer/Kane sued Rosen Book Works for copyright infringement.  The district court granted Rosen’s motion for the district court to request the Copyright Office to advise the court on whether the Copyright Office would have refused registration if it knew that certain information included in the registration application was inaccurate.  Rosen argued that Palmer/Kane’s predecessor knowingly misrepresented to the Copyright Office that the photographs it applied to register as an unpublished collection had not been previously published.

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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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Neither Side Wins the Land O’ Lakes Tug of War

So in this unusual case two firms sued each other though neither had been, is, or is likely to be harmed in the slightest by the other. The suit was rightly dismissed.

This is the last paragraph of this Seventh Circuit trademark opinion, written by Judge Posner.

Jack Hugunin began selling the fishing tackle he manufactured in the Land O’ Lakes region of Wisconsin in 1997.  He decided to use LAND O LAKES as the trademark for his fishing tackle and received a registration from the USPTO in 2000. 

Land O’ Lakes, the Minnesota dairy products company, started sponsoring the Wal-Mart FLW Tour and began advertising in fishing magazines in 1997.  After Hugunin received his USPTO registration for LAND O LAKES for fishing tackle, Land O’ Lakes dairy company contacted Hugunin, informing him that his use infringed the dairy’s famous trademark and that Hugunin would need to get a license from the dairy to continue using the mark.  Hugunin refused.  The dairy then filed an opposition to Hugunin’s reapplication for his trademark, which had lapsed.  Hugunin then sued the dairy in federal district court, claiming that his use of the mark has priority in the fishing industry and that the dairy’s involvement in the fishing industry created reverse confusion.

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Lanham Act Disparagement Provision Held Unconstitutional

Cutting to the chase, because this is a noteworthy decision, but many people are busy getting ready for the holidays and might appreciate receiving the result up front.

We hold that the disparagement provision of Lanham Act § 2(a) is unconstitutional because it violates the First Amendment. We vacate the Board’s holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

(Opinion page 62).

The USPTO is prohibited from registering scandalous, immoral, or disparaging marks by the Lanham Act, §2(a), also known as 15 U.S.C. §1052(a).  Simon Shiao Tam leads the Asian-American dance-rock band The Slants.  Twice Tam filed a trademark registration application for the mark THE SLANTS and was twice refused by the USPTO on the basis that the USPTO examiner found the mark to be disparaging to people of Asian descent.  Tam appealed to the Trademark Trial and Appeal Board.  The Board affirmed the examiner’s refusal to register the mark.  Tam appealed to the Federal Circuit.  A Federal Circuit panel affirmed the Board’s decision.  On its own initiative, the Federal Circuit ordered a hearing en banc.  The Federal Circuit en banc ruled that §2(a) of the Lanham Act, relied on by the UPSTO and Federal Circuit panel in rejecting Tam’s trademark registration application, is unconstitutional.

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Website Designer Likely Violated Anticybersquatting Act

Jysk Bed’N Linen is a retailer selling home, office and patio furniture from its stores located in Georgia, New Jersey and North Carolina.  Since 1990, Jysk has operated under the By Design trade name and common law trademark.  Jysk contracted with Monosij Dutta-Roy and several others to create an online shopping website in 1999.  Dutta-Roy registered the domain name bydesignfurniture.com, listing himself as the domain name owner.  Dutta-Roy’s involvement with the bydesignfurniture.com website ended in 2003. 

When Dutta-Roy’s registration of bydesignfurniture.com expired on April 9, 2012, Jysk’s website went down.  Jysk then discovered that it did not own the registration and asked Dutta-Roy to re-register the website in Jysk’s name.  Dutta-Roy refused.  A few weeks later, Dutta-Roy re-registered bydesignfurniture.com (presumably bringing that website back up) and also registered the domain names bydesignfurniture.org, bydesignfurnitures.com, and bydesign-furnitures.com.  Dutta-Roy offered to transfer the domain names to Jysk in exchange for compensation for over 4,000 hours work under a non-existent agreement.  Jysk brought suit against Dutta-Roy for cybersquatting, among other claims.  The district court granted Jysk’s motion for a preliminary injunction and the Eleventh Circuit Court of Appeals affirmed.

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Fair Use Protects Copyright Holder of Unauthorized Parody

The Second Circuit began its opinion with its intriguing ruling:

The primary question presented is whether an unauthorized work that makes ‘fair use’ of its source material may itself be protected by copyright.

We hold, for substantially the reasons stated by the United States District Court for the Southern District of New York (Thomas P. Griesa, Judge), that, if the creator of an unauthorized work stays within the bounds of fair use and adds sufficient originality, she may claim protection under the Copyright Act, 17 U.S.C. § 103, for her original contributions.

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