Copyright & Literary Property Committee
The Copyright & Literary Property Committee addresses a wide variety of issues of concern to the copyright bar and to industries that are focused on content creation, distribution and publication, including book and magazine publishing, media, entertainment, music, art, film, and online content delivery technologies and business models. We follow and report on noteworthy decisions, new and proposed legislation, and cutting edge developments, such as in the areas of digital publishing rights, online digital media storage and access, DMCA enforcement, first sale doctrine, apparel design protection, evolving fair use standards, copyright restoration and recapture, online piracy, and anti-counterfeiting enforcement and remedies. The Committee also sponsors, sometimes with other Committees within the IP committee cluster, both CLE and non-CLE programs.
Committee members regularly volunteer to give insightful reports at each meeting on new cases, proposed legislation and news items of interest. If you have a strong interest in copyright and are willing to attend monthly meetings and participate actively, you are encouraged to submit your application to the City Bar before June 1. Members serve for staggered three-year terms by class, with one third (approximately 13 members) rotating as of each September 1.
June 2021 – July 2021 Updates:
Van Buren v. United States (SCOTUS): The Supreme Court reversed a decision of the Ninth Circuit, adopting a narrow view of the term “unauthorized access” under the Computer Fraud and Abuse Act (“CFAA”), which will have broad implications for web-scraping claims. Under Van Buren, “an individual ‘exceeds authorized access’ when he accesses a computer with authorization but then obtains information located in particular areas of the computer—such as files, folders, or databases—that are off limits to him.” The result of the ruling is that it may be harder for companies to bring and maintain CFAA claims. Decision here.
Liebowitz v. Bandshell Artist Management (Second Circuit): The Second Circuit issued a decision affirming a sanctions award of over $100,000 against plaintiff’s counsel Richard Liebowitz and his law firm Liebowitz Law Firm, PLLC. The sanctions were imposed after the United States District Court for the Southern District of New York determined that Liebowitz brought and maintained a copyright infringement action in bad faith; that he violated multiple court orders along the way; and that, when questioned about his conduct, Liebowitz repeatedly lied to the court, including under oath. Decision here.
Brooks v. Dash (Second Circuit): The Second Circuit affirmed judgment for plaintiff Edwyna Brooks in this copyright infringement suit, rejecting defendant Damon Dash’s contention that he co-authored the film “Mafietta.” The panel found that Brooks was the dominant author, as Dash’s alleged contributions to the film did not evince mutual intent of co-authorship. Decision here.
Shull v. Sorkin (Second Circuit): The Second Circuit affirmed the district court’s decision granting defendants’ motion to dismiss copyright claims alleging that the show “Billions” ripped off plaintiff’s book about the psychology of risk in financial markets, entitled “Market Mind Games.” The three-judge panel found that the works were not substantially similar. Decision here.
Design Basics, LLC v. Signature Construction, Inc. (Seventh Circuit): The Seventh Circuit panel unanimously affirmed a summary judgment win (including costs) for the defendant in this copyright case involving architectural floor plans. The panel labelled the plaintiff, a home design firm, who has brought more than 100 infringement suits against home builders in recent years, a “copyright troll.” The court further noted that the plaintiff’s copyrighted designs were “basic, common, and standard,” worthy of little copyright protection. An award of $518,457.90 in costs and fees was affirmed. Decision here.
Melendez v. Sirius XM Radio, Inc. (S.D.N.Y.): The District Court for the Southern District of New York granted defendant’s motion to dismiss this lawsuit, which was brought by a comedian featured on “The Howard Stern Show” who alleged that Sirius XM Radio was replaying clips without his permission. The suit, brought by “Stuttering John” Melendez, alleged that defendant violated California right of publicity law by using his name, voice, and likeness. The court, however, held that the state law claims were preempted by federal copyright law. Decision here.
Hajim v. Endemol Shine UK (N.D. Ill.): The District Court for the Northern District of Illinois dismissed copyright infringement claims brought by a film’s creator against the producer of Netflix’s “Black Mirror” series over an episode plaintiff alleged infringed his sci-fi film “Strange Frame.” The Court held that any similarities were “general, unprotectable plot ideas.” Decision here.
April 2021 – May 2021 Updates:
Google v. Oracle (SCOTUS): The Supreme Court found in favor of Google on the issue of fair use (without deciding re: copyrightability), reversing the Federal Circuit in a 6-2 decision. The dispute centered on the use of parts of the Java programming language’s application programming interfaces (APIs) and about 11,000 lines of source code, which are owned by Oracle (originally by Sun Microsystems), within early versions of the Android operating system by Google. Decision here.
ComicMix v. Dr. Seuss (SCOTUS): ComicMix has appealed the Ninth Circuit’s ruling, finding that its StarTrek/Dr. Seuss mash-up book was not a fair use, to the U.S. Supreme Court. Petition here.
Warhol Foundation v Goldsmith (Second Circuit): The Second Circuit issued a decision reversing the MSJ and finding that the Warhol works are not fair use as a matter of law, and are substantially similar as a matter of law. The Andy Warhol Foundation has since filed a petition for rehearing and rehearing en banc with the Second Circuit, seeking to overturn the decision that Wahol’s use of a photograph of Prince was not a fair use and therefore infringed Goldsmith’s copyright. Amicus briefs have been filed by: 1) 60 IP scholars, headed by Rebecca Tushnet of Harvard Law School (brief here); 2) a number of art foundations and museums, including the Robert Rauchenberg Foundation, the Roy Lichtenstein Foundation, the Whitney Museum of American Art, the Museum of Modern Art, and the Solomon R. Guggenheim Foundation (brief here); and 3) Professor Amy Adler of NYU School of Law (brief here). The court requested revised briefings addressing the recent Supreme Court decision in Google v. Oracle and its application to the case at bar. You can read helpful summaries of the opinion here and here. Decision here; petition for rehearing here; revised response to petition here; and the Warhol Foundation’s reply in support of its petition here.
Marano v. Metropolitan Museum of Art (Second Circuit): The Second Circuit issued a decision affirming SDNY’s 12(b)(6) dismissal, on the grounds that the museum’s use of a photograph on its website of Eddie Van Halen playing his “Frankenstein” guitar in an exhibition of rock n’ roll instruments constitutes a fair use. Decision here.
Betty v. Pepsico (Second Circuit): The Second Circuit affirmed dismissal of an ad agency’s copyright claim that Pepsi stole its pitch in its 2016 Super Bowl commercial, finding use of the same general theme of a time-traveling performer is not copyrightable. Decision here.
Brown v. Netflix (Second Circuit): The Second Circuit’s issued a decision in the Brown v. Netflix copyright case affirming that defendants’ use of plaintiff’s song (the kid’s song “Fish Sticks n’ Tater Tots”) in the documentary film “Burlesque: Heart of the Glitter Tribe” (which is about the Portland, Oregon burlesque scene) constituted a fair use. The film had featured footage of a performer using the song during a performance. Decision here.
Design Basics, LLC v. Signature Construction, Inc. (Seventh Circuit): The Seventh Circuit affirmed a finding of summary judgment for the defendant in this copyright case involving architectural floor plans. The court found the floor plans were entitled to only thin copyright protection, and, therefore, only virtually identical designs would infringe. The court labeled the plaintiff a “copyright troll” that had a practice of trying to get settlements based on meritless claims. Decision here.
Planner 5D v. Facebook, Inc. (N.D. CA): The Northern District of California denied defendant Facebook’s motion to dismiss. Planner 5D had filed suit after the Copyright Office rejected its application to register its alleged work. Subsequently, Planner 5D requested reconsideration from the Copyright Office. Facebook argued that as a result, the infringement action was premature until a final decision was rendered by the Copyright Office, and moved to dismiss on that basis. The court found that the Copyright Act is silent about whether finality is required before maintaining an infringement action, and that there was no caselaw on point. Based on the text of the Copyright Office’s refusal to register Planner 5D’s applications, the Copyright Office’s Compendium, and the Patry copyright treatise, the court found that Planner 5D met the prerequisites to proceed with its infringement claim and denied the motion to dismiss. Decision here.
Hunley v. Instagram (N.D. CA): Photojournalists have brought a class action against Instagram, claiming that its functionality that allows users to easily “embed’ posted images constitutes copyright infringement. Complaint here.
Jefferson v. Raisen (C.D. CA): The Central District of California granted Lizzo’s motion to dismiss amended counterclaims by the defendants, which claimed co-ownership of the song “Truth Hurts.” The court found that defendants had only alleged that they contributed to an earlier song, “Healthy,” and that “Truth Hurts” was distinct. Decision here.
Everly v. Everly (M.D. TN): Following a bench trial, the Middle District of Tennessee entered judgement in favor of plaintiff Don Everly in this dispute regarding ownership of the Everly Brothers’ 1960s song “Cathy’s Clown.” The court found that Don Everly had clearly repudiated his late brother Phil’s authorship to the song and that any challenges thereto should have been brought by 1983. Decision here.
Wooten v. Netflix (N.D. GA): The Northern District of Georgia granted a 12(b)(6) motion to dismiss a copyright case where the plaintiff, a North Carolina high school English teacher, had alleged that Netflix’s series “Outer Banks” infringed his copyrighted novel. The court found that the works are not substantially similar, noting that while they both involve shipwrecks and treasure hunts, “to analyze their plots at such a high level of abstraction would render every work involving a hunt for buried treasure susceptible to copyright infringement.” Decision here.
Richard Liebowitz sanctions update (D. Colo. & M.D. PA): Additional attorneys’ fees and sanctions were ordered against Richard Liebowitz in Jamieson v. Hoven Vision LLC (D. Colo.), where the court had found that Liebowitz was a “copyright troll” and repeatedly filed cases in the wrong court. The court noted Liebowitz’s “vexatious conduct” in filing suit in Colorado given that neither plaintiff nor defendant had “obvious connections to Colorado.” However, the Middle District of Pennsylvania declined to order attorneys’ fees against him in Adlife Marketing & Communications Co., Inc. v. Karns Prime & Fancy Food Ltd., noting that Liebowitz had already been sanctioned when the court dismissed the case, and that an award of attorneys’ fees would be overly punitive. Decisions here and here.
Sketchworks v. Jacobs (SDNY): The Southern District of New York (SDNY) denied a motion to dismiss for lack of an actual controversy. Plaintiff brought the case as a declaratory judgment action for a judicial determination that its theater production, “Vape,” constitutes a fair use of the musical “Grease” because it is a parody. Defendants moved to dismiss for lack of subject matter jurisdiction, claiming a lack of a concrete case or controversy. Judge Swain disagreed, noting, for instance, that defendants had refused to provide a covenant not to sue, and that their withdrawal of their cease & desist was insufficient. Decision here.
February 2021 – March 2021 Updates:
Copyright Office Issues Final Rule to Create New Group Registration Option for Works on an Album of Music: The U.S. Copyright Office has issued a final rule, which takes effect on March 26, 2021, establishing a new group registration option, known as “Group Registration for Works on an Album of Music” or “GRAM,” to allow applicants to register either a group of up to twenty musical works or a group of up to twenty sound recordings and associated literary, pictorial, or graphic works contained on an album of music. The final rule can be accessed here.
Desire v. Manna Textiles, Inc. (9th Cir.): The Ninth Circuit reversed a statutory damages award that was entered against multiple defendants in this case involving a floral print textile design, and found that only a single statutory damages award may be entered. The Ninth Circuit panel concluded that the plain meaning of §504(c)(1) precludes multiple awards of statutory damages when there is only one work infringed by a group of defendants that have partial joint and several liability amongst themselves through a prime tortfeasor that is jointly and severally liable with every other defendant. Decision here.
Dubay v. King (6th Cir.): The Eleventh Circuit affirmed a grant of summary judgment for defendants in this copyright infringement case that alleged that Stephen King’s “Dark Tower” series of books infringed plaintiff’s comic book series “The Rook.” The court found there was no substantial similarity and that King’s protagonist was “far more complex” than the hero in the comic book series. Decision here.
Zuma Press v. Getty Images (2d Cir.): The Second Circuit affirmed summary judgment for defendants in this copyright case, finding that they had established “an unbroken chain of authorization” from plaintiff through a series of licensing deals, and thus had authorization to use the images at issue. Decision here.
Carlini v. Paramount Pictures (C.D. Cal): The U.S. District Court, C.D. Cal., granted defendant’s 12(b)(6) motion to dismiss primarily on the basis that defendant’s film “What Men Want” was not substantially similar to plaintiff’s screenplay, both of which featured the idea of a woman who can hear men’s thoughts. Interestingly, the decision does not cite the Ninth Circuit’s Alfred v. Disney decision from last year, which required expert testimony to determine substantial similarity, and which has been cited in district court cases denying motions to dismiss. Decision here.
Charles v. Seinfeld (S.D.N.Y.): The U.S. District Court, S.D.N.Y., overturned the recommendation of a magistrate judge and awarded defendants attorneys’ fees, finding that the case was filed too late and was “opportunistic.” The underlying claims – relating to copyright infringement and ownership of the pilot episode of the television series “Comedians In Cars Getting Coffee” – had been dismissed due to the district court’s application of the limitations period in 17 U.S.C. §507(b). The dismissal was affirmed by the Second Circuit. Decision here.
December 2020 – January 2021 Updates:
- “Copyright Preemption and the Right of Publicity” (Robert W. Clarida, Robert J. Bernstein): NYCBA Copyright & Literary Property Committee member Robert Bernstein co-authored a New York Law Journal article on the recent Second Circuit decision in Jackson v. Roberts, 972 F.3d 25 (2d Cir. 2020), which addressed issues relating to copyright preemption and right of publicity. Read the column here.
- Copyright Alternative in Small-Claims Enforcement (“CASE”) Act Passes in U.S. Congress: The $2.3 trillion spending and coronavirus relief bill passed by Congress on December 21, 2020, which includes several IP provisions, such as creating a copyright small claims court, making unauthorized commercial streaming of copyrighted material a felony, and altering some trademark and patent procedures. The portion of the bill relating to the CASE Act begins on page 77 of the full text of the bill, which can be viewed here.
- Dr. Seuss Enterprises, LP v. ComicMix LLC (9th Cir.): The Ninth Circuit reversed a district court’s grant of summary judgment, ultimately finding that defendants’ mash-up of Star Trek and Dr. Seuss was not a fair use. The court found that the district court erred in putting the burden on plaintiff as to the fourth fair use factor, the market harm element, given that fair use is an affirmative defense for defendants. Decision here.
- Apple v. Corellium (S.D. Fl.): The U.S. District Court, S.D. Fl., granted portion of Corellium’s summary judgment motion arguing that security firm’s creation of a mirrored version of Apple’s iOS was a fair use, but denied portion of dueling motions relating to DMCA violations. Decision here.
- Jackson v. Netflix (C.D. Cal.): The U.S. District Court, C.D. Cal., granted Netflix’s motion to dismiss copyright and trademark infringement claims relating to the “Tiger King” documentary series. Plaintiff magazine had claimed that the series infringed its articles, including one titled “Joe Exotic, The Tiger King.” The copyright claims were dismissed on the basis that they were inadequately pled, without specifying what exactly was infringed. Plaintiff, however, was allowed to amend. The trademark claims were dismissed based on the First Amendment, without leave to amend. Decision here.