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Rex Woodard entered into a written agreement to ghostwrite the autobiography (the “Work”) of Thomas DeVito, one of the original members of the “Four Seasons” band later known as “Jersey Boys.” After Woodward passed away, DeVito registered the Work with the U.S. Copyright Office solely under his own name in 1991. DeVito and another former “Four Seasons” band member, Nicholas Macioci, executed an agreement with two of their former bandmates, Frankie Valli and Bob Gaudio, which granted Valli and Gaudio the exclusive rights to use aspects of their lives to develop a musical stage performance (the “Play”) about the “Four Seasons.” Plaintiff, Woodward’s widow, subsequently filed suit alleging that the Play constitutes, at least in part, a “derivative work” of the DeVito autobiography, the right to create which resides exclusively in the copyright-holders of the underlying work, and their lawful successors, assignees, and licensees. The court concluded that the 1999 Agreement constitutes a transfer of ownership of DeVito’s derivative-work right in the Work to Valli and Gaudio; Sybersound Records, Inc. v. UAV Corp. presents no obstacle to DeVito’s exclusive transfer of his derivative-work right to Valli and Gaudio under the 1999 Agreement; copyright co-owners must account to one another for any profits earned by exploiting that copyright; and, therefore, the district court erred in rejecting plaintiff’s claims for accounting and declaratory relief. Further, defendants have necessarily failed to establish the existence of a license as an affirmative defense to plaintiff’s infringement action. The court also concluded that summary judgment for defendants on plaintiff’s claims of infringement under foreign law grounds must be reversed. Accordingly, the court reversed the district court’s grant of summary judgment in favor of defendants, vacated its assessment of costs against plaintiff, and remanded for further proceedings. View “Corbello v. Valli” on Justia Law

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Omega, global purveyor of luxury watches, filed suit against Costco for copyright infringement, alleging that Costco’s importation of Omega’s Seamaster watches, which sometimes bears an engraving of the Omega Globe Design, was without the copyright holder’s permission in violation of the Copyright Act, 17 U.S.C. 602. The district court granted summary judgment to Costco on remand, finding that Omega misused its copyright of the Omega Globe to expand its limited monopoly impermissibly and granting Costco attorney’s fees. Pursuant to Kirtsaeng v. John Wiley & Sons, Inc., the court affirmed and concluded that Omega’s right to control importation and distribution of its copyrighted Omega Globe expired after that authorized first sale, and Costco’s subsequent sale of the watches did not constitute copyright infringement. Therefore, application of the first sale doctrine disposes of Omega’s claim, resolves this case in Costco’s favor, and conclusively reaffirms that copyright holders cannot use their rights to fix resale prices in the downstream market. The court also concluded that the district court did not abuse its discretion in awarding attorney’s fees to Costco where it should have been clear to Omega that copyright law neither condoned nor protected its actions, and the imposition of fees would further the purpose of the Copyright Act. View “Omega S.A. v. Costco Wholesale Corp.” on Justia Law

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Oracle filed suit against SAP alleging that TomorrowNow, an enterprise software company recently acquired by SAP, was engaging in systematic and pervasive illegal downloading of Oracle’s software. SAP stipulated to liability and the parties went to trial solely on damages. On appeal, Oracle challenged several of the district court’s rulings. The court affirmed the district court’s grant of judgment as a matter of law to SAP where the hypothetical-license damage award was based on undue speculation and Oracle failed to provide sufficient objective evidence of the market value of the hypothetical license underpinning the jury’s damages award; for the same reasons, the court affirmed the district court’s grant of SAP’s motion for a new trial based on remittitur; and the court rejected Oracle’s claim that the district court erred in limiting the second trial to damages based on a lost-profits and infringer’s-profits theory, barring Oracle’s pursuit of hypothetical-license damages. The court concluded that the district court, in selecting a $272 million remittitur amount, abused its discretion in selecting the $36-million lost-profits figure rather than the $120.7-million one. Therefore, the court vacated and remanded to the district court for it to offer Oracle the choice between a $356.7-million remittitur and proceeding to a second trial. The court affirmed on the four rulings related to the second trial and did not reach the questions presented by the other three rulings. View “Oracle Corp. v. SAP AG” on Justia Law

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Clinton is a musician, bandleader, and touring performance artist. H&L, a law firm, represented Clinton in in 2005-2008, billed Clinton $3,341,650, received $1,000,578 in payment, and wrote off $600,000 of the remaining balance. This left $1,779,756.29 due. H&L initiated arbitration. Clinton did not participate; the panel ruled in favor of H&L. The district court confirmed the award of $1,675,639.82, plus interest plus $60,786.50 in attorney fees. H&L pursued collection, including garnishments, levies, and liens across the country. Clinton’s attorney declared that they created a financial “stranglehold” so that Clinton “[c]an’t pay his taxes … it is going to affect… his ability to make a living at 72 years old.” A year later, Clinton sued H&L for legal malpractice. H&L asserted counterclaims and sought an order authorizing the sale of master sound recording copyrights to satisfy its judgments. The district court appointed a receiver and authorized the receiver to use the copyrights to satisfy the judgments. Amending its earlier order, the Ninth Circuit affirmed. Under Washington law Clinton’s copyrights in the masters were subject to execution to satisfy judgments against him. Section 201(e) of the federal Copyright Act does not protect Clinton from the involuntary transfer of his copyrighted works. Clinton could raise claims of fraud on the court and judicial estoppel for the first time on appeal, but the claims were meritless.

View “Hendricks & Lewis PLLC v. Clinton” on Justia Law

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Musical artist George Clinton appealed the district court’s order appointing a receiver and authorizing the sale of copyrights in an action against his former law firm. The firm obtained judgments against Clinton for past-due attorneys’ fees and sought an order authorizing the sale of master recordings that Clinton recorded with the group Funkadelic (the “Masters”) to satisfy the judgments. The court concluded that Clinton’s copyrights in the Masters were subject to execution to satisfy judgments entered against him; Section 201(e) of the Copyright Act, 17 U.S.C. 201(e), does not protect Clinton from the involuntary transfer of his copyrighted works; the district court did not abuse its discretion by appointing a receiver to manage or sell ownership of these copyrights; Clinton may raise claims of fraud on the court and judicial estoppel for the first time on appeal, but both claims are meritless; and Clinton failed to raise his preemption, Erie Doctrine, and Due Process Arguments in the district court. Accordingly, the court affirmed the judgment of the district court. View “Hendricks & Lewis PLLC v. Clinton” on Justia Law

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Alaska Stock, a stock photography agency, registered large numbers of photographs at a time under the Copyright Act, 17 U.S.C. 101 et seq., listing only some of the authors and not listing titles for each photograph. After Houghton Mifflin greatly exceeded the number of publications it had paid for, Alaska Stock filed suit for injunctive relief, actual and statutory damages, attorneys’ fees, and costs. The court concluded that Alaska Stock successfully registered the copyright both to its collections and to the individual images contained therein; the statute required identification of the author and title of the “work,” which was the collective work, and extended registration to the component parts if the party registering the collective work owned the copyright to the component parts, as Alaska Stock did; the procedure applied for over three decades by the Register of Copyrights to registration by stock photo agencies complied with the statutory requirements and did not violate any clear requirement to list individual authors and titles of the components within the work; the Register of Copyrights’ reading that a collection of stock photos may be registered without individual titles, and without naming more than three of the authors and merely designating the number of authors, pursuant to an assignment in the language Alaska Stock used, was reasonable and persuasive; and therefore, the court reversed the district court’s dismissal. View “Alaska Stock v. Houghton Mifflin” on Justia Law

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Plaintiff was cast in a minor role in an adventure film with the working title “Desert Warrior.” The film never materialized and plaintiff’s scene was used, instead, in an anti-Islamic film titled “Innocence of Muslims.” The film was uploaded to YouTube.com and her brief performance was dubbed over so that she appeared to being asking, “Is your Mohammed a child molester?” An Egyptian cleric subsequently issued a fatwa, calling for the killing of everyone involved with the film. After Google refused to take it down from YouTube, plaintiff sought a restraining order seeking removal of the film, claiming that the posting of the video infringed the copyright in her performance. The district court treated the application as a motion for a preliminary injunction but denied the motion. The court concluded that plaintiff demonstrated a likelihood of success on the merits where plaintiff had an independent copyright interest in her performance; the work for hire doctrine was inapplicable in this instance because plaintiff was not a traditional employee and the filmmaker was not in the regular business of making films; and although plaintiff granted the filmmaker an implied license to use plaintiff’s performance, the filmmaker exceeded the bounds of the license when he lied to plaintiff in order to secure her participation and she agreed to perform in reliance on that lie. The court also concluded that plaintiff faced irreparable harm absent an injunction where plaintiff took legal action as soon as the film received worldwide attention and she began receiving death threats; the harm plaintiff complained of was real and immediate; and plaintiff demonstrated a causal connection because removing the film from YouTube would help disassociate her from the film’s anti-Islamic message and such disassociation would keep her from suffering future threats and physical harm. Finally, the balance of the equities and the public interest favored plaintiff’s position. Accordingly, the court concluded that the district court abused its discretion in denying the motion for a preliminary injunction. The court reversed and remanded. View “Garcia v. Google, Inc.” on Justia Law

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Inhale claimed copyright protection in the shape of a hookah water container that it first published in 2008 and registered with the United States Copyright Office in 2011. Inhale filed suit against Starbuzz for copyright infringement, claiming that Starbuzz sold water containers that were identical in shape to Inhale’s container. The district court granted summary judgment in favor of Starbuzz after determining that the shape of the water container was not copyrightable. The court concluded that the shape of a container is not independent of the container’s utilitarian function – to hold the contents within its shape – because the shape accomplishes the function. Therefore, the district court correctly concluded that the shape of Inhale’s hookah water container was not copyrightable. Further, the district court did not abuse its discretion under 17 U.S.C. 505 by awarding attorneys’ fees to Starbuzz. Moreover, the court awarded attorneys’ fees incurred in the defense of this appeal to Starbuzz under section 505 in an amount to be determined by the district court. Accordingly, the court affirmed the district court’s judgment and remanded. View “Inhale, Inc. v. Starbuzz Tobacco, Inc.” on Justia Law

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Defendant appealed his conviction for criminal copyright infringement based on his sale of Adobe software. The court applied the willfulness standard for criminal copyright cases as recently clarified in United States v. Liu and concluded that the jury instruction was flawed but did not rise to the level of plain error; the evidence of uncharged acts was properly admitted as intrinsic to the charged conduct and the court affirmed the conviction; and the district court erred in failing to award restitution reflecting the victim’s actual loss and the court vacated the restitution order and remanded for reconsideration. View “United States v. Anderson, Jr.” on Justia Law

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This appeal stemmed from Seven Arts’s attempts to establish ownership of copyrights in several motion pictures: “Rules of Engagement,” “An American Rhapsody,” and “Who is Cletis Tout?” Seven Arts filed suit against Paramount and Content Media for copyright infringement, a declaration of ownership rights, and an accounting, seeking a declaration that neither Content Media, nor its predecessors-in-interest, CanWest, was the owner or grantee of rights to the films. The action was filed over three years after Paramount plainly and expressly repudiated Seven Arts’s copyright ownership by choosing to continue paying royalties to CanWest and Content Media, rather than to Seven Arts’s predecessors. The court joined its sister circuits in holding that an untimely ownership claim will bar a claim for copyright infringement where the gravaman of the dispute was ownership, at least where, as here, the parties were in a close relationship. The court affirmed the judgment of the district court, concluding that the district court properly dismissed the suit because it was apparent from the complaint that Paramount clearly and expressly repudiated Seven Arts’s ownership of the copyrights more than three years before Seven Arts brought suit. View “Seven Arts v. Content Media” on Justia Law