S Ct: Text of Kirtsaeng v John Wiley on Awarding Attorney’s Fees

Footnote two is a contender for funniest Supreme Court footnote this term.

Justia’s Summary:

Kirtsaeng bought low-cost foreign edition textbooks in Thailand and resold them to students in the U.S. In 2013 the Supreme Court held that Kirtsaeng could invoke the Copyright Act’s “first-sale doctrine,” 17 U.S.C. 109(a), as a defense to the publisher’s copyright infringement claim. Kirtsaeng then sought more than $2 million in attorney’s fees from the publisher under the Act’s fee-shifting provision. The Second Circuit affirmed denial of Kirtsaeng’s application, reasoning that Wiley had taken reasonable positions during litigation. A unanimous Supreme Court vacated. When deciding whether to award attorney’s fees under 17 U.S.C. 505, a court should give substantial weight to the objective reasonableness of the losing party’s position, while still taking into account all other relevant circumstances. Precedent has identified several non-exclusive​ factors for courts to consider, e.g., frivolousness, motivation, objective unreasonableness, and the need in particular circumstances to advance considerations of compensation and deterrence. Putting substantial weight on the reasonableness of a losing party’s position is consistent with the objectives of the Copyright Act, but courts must take into account a range of considerations beyond the reasonableness of litigating positions. Because the district court “may not have understood the full scope of its discretion,” the Court remanded for consideration of other relevant factors.


Another Copyright Decision About Dragons

eng dragon copyright.pdf


Swatch Defeats Bloomberg's Motion to Dismiss re Unauthorized Transcript of Analyst's Conference Call

From the complaint: Plaintiff Swatch, a Swiss publicly traded company, hosted a conference call for securities analysts. The call was transmitted and recorded by a conference call service. Participants were instructed not to record the call for publication or broadcast. Bloomberg News was not invited or authorized to participate in the call. Bloomberg recorded the call, created a transcript which it made available to others.

Bloomberg moves to dismiss. Denied. If a fixation of the work is being made simultaneously with its transmission, the Copyright Act creates the fiction that the simultaneous fixation occurs before the transmission, for purposes of an infringement claim. (page 4). Also, the conference call satisfied the requirement of originality.

Swatch v Bloomberg


"Copyright and Football"

NY Times Freakonomics Blog: Copyright and Football:

The theory behind copyright is simple – if we allow anyone to copy a good new idea, then no one will come up with the next one.  The theory makes perfect sense – in theory.  In previous posts, however, we have described how fashion designers, chefs, comedians and pornographers all continue to create, even though others are free to copy their fashion designs, recipes, jokes, and . . . images.  In this post, we’ll take a look at something different: football.

I’m favorably disposed towards the authors’ argument that appropriate IP protection should be considered in an industry-specific context, however this struck me as a somewhat superficial column. The authors don’t highlight sufficiently that they are analyzing non-commercial behavior, specifically strategic behavior in the GAME of football (as opposed to the commercial activity of providing the entertainment service of football). And yet, even in this non-commercial domain,  there is still (private, contractual) IP protection encoded in the rules of NFL football – namely, trade secret protection.  Recall the New England Patriots getting caught in SpyGate.

And it never helps one’s credibility to make a major (from the point of view of an IP lawyer) mistake in the first sentence – copyright doesn’t protect against the copying of ideas but against the copying of the specific execution of ideas.


"Avoiding The Wrath of Righthaven"

Las Vegas Trademark Attorney: “Avoiding The Wrath of Righthaven”:

There has been a lot of discussion in the Las Vegas area (and nationwide) about the numerous copyright infringement lawsuits filed by a Las Vegas company named Righthaven, LLC. As of August 4, 2010, Righthaven had filed approximately 86 lawsuits against various website operators claiming copyright infringement. While not immediate apparent from the lawsuits, Righthaven is essentially a company established by Stephens Media LLC, the owner of numerous newspaper including the Las Vegas Review Journal (the “RJ”), in order to go after any and all third party websites that improperly excerpt all or part of the copyrighted articles from the RJ.


The Burden Of The Past And The American Comic Book Writer (Gaiman v McFarlane)

Plaintiff Gaiman (famous writer) sues Defendant McFarlane (famous comic artist). Defendant hired plaintiff to write some scripts for the SPAWN comic book. Plaintiff creates a new character, Dark Age Spawn. Defendant later uses a Medieval Spawn. Judge, in determining damages, finds that Medieval Spawn infringes Dark Age Spawn.
Rainy day fun: compare the copyright analysis of Dark Age Spawn v Medieval Spawn, to the analysis of Bratty Dolls in the Ninth Circuit Bratz case. Who would win in a fight: Medieval Spawn or a Bratz Girl?
Decision Gaiman Mcfarlane Spawn


Text of Ninth Circuit Opinion Reversing BRATZ Constructive Trust

Coverage here.
Decision Bratz


Pile On – EMI v LimeWire

Citing the Arista decision in the complaint, EMI and others sue LimeWire.
Complaint Emi v Limewire Copyright


Reckless But Not Unreasonable Re Copyright Defenses

Defendant recording studio, Reckless Music, LLC, attempted to defend itself against copyright infringement by arguing that the studio engineer who copied plaintiff’s software without authorization, was an independent contractor. It was found liable on a vicarious liability theory but costs and fees were not awarded agaisnt it because its defense was not unreasonable, under Fogerty.
Decision Wave v Reckless Award of Fees


Our Firm Obtains Injunction On Behalf Of Music Publishers

My partner, Paul Fakler, successfully represented various music publishers including Warner/Chappell, Peermusic and Bug Music in obtaining a preliminary injunction in the CD Cal, enjoining several websites from displaying and distributing song lyrics without authorization.
Decision Prelim Peermusic v Live Universe Lyrics