19
Sep/17

Fish vs Fish


Fish IP Law firm seeks declaratory judgment against Fish and Richardson.



11
Sep/17

Cepeda v Hadid and IMG re Instagram Use of Photo


hadidas

Photographer sues model, Gigi Hadid, for uploading copyrighted photo to her Instagram page. As an aside, note alteration of ADIDAS to HADID.

Case was filed in ED of Virginia. Plaintiff’s lawyer is from there, and that’s pretty much it.



11
Sep/17

Engine Company 3, Ladder Company 12


engine-3-ladder-12

When we lived in Chelsea, our local firehouse was Engine Co. 3, Ladder Co. 12. They would send firemen to visit our kids’ preschool. When we took the kids in the stroller by the firehouse, the firemen would let the kids climb on the firetrucks.

On 9/11, Engine Co. 3, Ladder Co. 12 lost five men.

Some people run from burning buildings and some people run towards them.



11
Sep/17

My Favorite Sentence From the Dr. Phil Fair Use Decision


See here for my prior post, including the text of the Dr Phil copyright fair use decision.

Re-cap: defendant was suing TV’s Dr. Phil in state court for torts arising from his allegedly abusive behavior. In order to show that Dr. Phil is someone who shouts, defendant, a former employee, obtained access to archival footage of the show, and recorded nine seconds of video outtakes. Dr Phil then obtains a copyright registration for those nine seconds, and sues for infringement in federal court.

In discussing the four fair use factors, the court notes:

While it is true that many courts and commentators have acknowledged the general
principle that use of a work in a judicial proceeding may be considered fair use, fewer have
addressed whether copying an entire work in preparing a complaint is transformative.

Emphasis added.

Face palm slap here.

Unlike most fair use cases, here the amount used by defendant was determined by the copyright owner, and not the defendant. When the defendant made her copy, she copied nine seconds of presumably hours of archival footage. The ‘entire work’ only became ‘the entire work’ AFTER she copied it, when plaintiff later registered those nine seconds. Has plaintiff created (and registered) any other nine second works? Defendant did not evince an intent to copy an entire work – in fact her intent was to copy only that which she needed to make her commentary on the work. Accordingly, the ‘portion of work taken’ analysis should either favor defendant (as measured against the archives) or be considered neutral, because of the uniqueness of plaintiff’s behavior post-infringement.



8
Sep/17

All of Nine Seconds: Text of Dr Phil Fair Use Decision


Former employee of TV’s Dr Phil brings a state suit alleging various torts (including infliction of emotional distress). Seeking to document his abusive behavior, the defendant uses her iPhone to copy nine seconds of Dr. Phil archival footage, showing Dr Phil (allegedly) behaving badly in another incident, and seeks to use the clip as evidence.

Dr Phil obtains a copyright registration of the 9 second clip, and sues for infringement. Defendant asserts fair use as a defense.

Plaintiff moves for summary judgment to dismiss fair use defense. Granted.

I think the most startling thing is that the judge could cite a passage from Nimmer stating “. . . it seems inconceivable that any court would hold such reproduction to constitute infringement . . . ” and still hold that this wasn’t fair use.

The court distinguishes cases holding that judicial use is fair use, stating that these cases didn’t consider fact patterns involving ‘copying an entire work in preparing a complaint.’ Here’s the thing: When defendant copied nine seconds from Dr. Phil’s (presumably vast) archives, there was no ‘entire’ nine second work extant.

Quick takes:

The judge’s finding that the work wasn’t sufficiently transformative seems puzzling to me, as the defendant sought to use the clip in a very different manner than that of plaintiff. She sought to use the clip as evidence in a lawsuit to illustrate Dr. Phil’s behavior, and thus she was commenting on the work (sort of). Plaintiff’s presumed original intent in creating this 9 second work was to meld it into a larger work, namely the Dr Phil show.

The second factor going to the nature of the Work. The court places great weight on the fact that the Work is unpublished. The Court cites Harper & Row language that ‘as yet unpublished’ works are to be protected, but the court doesn’t discuss the significance of the ‘as yet’ part of that phrase. This is not Harper & Row, where the defendant allegedly rushed to published excerpts from an unpublished manuscript so as to ‘scoop’ the author. This isn’t a fact pattern either where J.D. Salinger has a secret manuscript and I break into his house and publish excerpts.

The third factor goes to the amount of the work taken. Defendant seems to have conceded this issue. This is because defendant took all nine seconds of plaintiff’s work – except what really happened is that defendant registered all nine seconds of what defendant excerpted from plaintiff’s much larger work. THe court cites a Ninth Circuit case, in which several photographs were copied out of a larger collection of photos, for the proposition that: Each of the individual wedding photos is a separate work[11] because each photo “can live [its] own copyright life” and “has an independent economic value and is, in itself, viable.” Columbia Pictures TV, Inc. v. Krypton Broad. of Birmingham, Inc., 259 F.3d 1186, 1193 (9th Cir.2001).

In theory, a nine second clip of Dr Phil having a tantrum might have an independent economic value (because of the blooper outtake market – not that Dr Phil would actually sell this particular clip to TMZ), and therefore it might have its own copyright life. But with regard to a fair use analysis, a better view for determining ‘amount of work taken,’ might be to look to the author’s intent when the work was created. When Dr Phil’s crew filmed, it was with the intention of melding any footage into some larger work. In that sense, defendant took a miniscule portion of the originally intended work.



6
Sep/17

Text of Decision in Rawlings 5150 v Easton S150 For Bats


easton-300x149

D Missouri: Easton S150 not confusingly similar to Rawlings 5150. Prominent use of house marks given great weight in finding.



5
Sep/17

JetMax Decision Part One – Work Made For Hire: Is Someone Coming Between ‘Employer’ and ‘Employee’?


Plaintiff Jetmax asserts copyright in ‘an ornamental light set comprised of a series of molded, decorative tear shaped covered lights with a wire frame over the covers.”

plaintiff's tear drop light set

Defendant Advance, “produced the allegedly infringing product., which ‘has a teardrop shaped plastic cover with eight sets of double grooves, as well as a decorative wire frame containing eight pieces of wire and the come together (sic) in a question mark form.” The cover does not have an iridescent finish.

advance light set

Cross-motions for SJ. Defendant raised issues as to Jetmax’ ownership of copyright. Also, it argued that the light set is not copyrightable because it is a useful article and because it lacks originality. The parties filed supplemental briefs after the SCOTUS issued its decision in Star Athletica v Varsity, 137 S. Ct. 1002 (2017).

Part One: Does Plaintiff Jetmax Own The Copyright?

In its copyright registration application, plaintiff Jetmax identified itself as the author.

In its complaint, Jetmax alleged that the Work was designed “by an employee of [plaintiff] in the scope of their employment as work for hire.”

In discovery, Jetmax disclosed that the designer was in fact paid by an intermediary company (“Intermediary”), because “under Chinese law, only Chinese entities are allowed to have employees in mainland China.”

We don’t know from the facts of the decision, the nature of ownership and control, if any, between Jetmax and Intermediary.

Under the Copyright Act, ‘employer’ and ‘author’ are not defined terms. Under case law, a Work is made at an employer’s ‘instance and expense’ – an employer induces creation and has the right to direct and supervise.

Here – at summary judgment, court notes that plaintiff’s discovery deposition ‘suggests that the design employees in mainland China were paid and employed by’ the Intermediary (as an aside plaintiff seems to have hurt itself (1) by not identifying the Intermediary in its initial disclosures and (2) because it ‘failed to sufficiently produce responsive documents concerning the Intermediary’).

For purposes of summary judgment, there were sufficient triable issues relating to the facts regarding plaintiff’s ownership, to deny summary judgment to plaintiff.

Quick Practice Pointers:

1. If a client said to you that the work was created by ‘its’ employee, now you know to dig deeper on that.

2. You can’t retroactively create a work made for hire, and not everything is eligible for the ‘independent contractor’ prong of the work made for hire provisions (industrial design products aren’t, for example). This is one more reason why agreements (such as those between an intermediary and an employer) should contain, in addition to clauses seeking to create a work made for hire relationship, back-up clauses that assign any and all rights, as well.



3
Sep/17

The Name “A Group of Youths in Baoji Holding a Cherished Dream That Under the Leadership of Uncle Niu They Will Create the Miracle of Life Network Technology Company Ltd.” . . .


. . . is too long.



3
Sep/17

Recent Tweets of Trademark Interest




18
Aug/17

Is Renewal Considered Registration For Purposes of Cybersquatting?


This case, American Cruise Line v HMS American SteamBoat Queen, seems to suggest that it can be. I believe there are other cases that suggest otherwise (GoPets v. Hise).