Justia Copyright Opinion SummariesArticles Posted in U.S. Supreme Court
Star Athletica, L. L. C. v. Varsity Brands, Inc.
The “pictorial, graphic, or sculptural features” of a “design of a useful article” are eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article,” 17 U.S.C. 101. Plaintiffs have copyright registrations for two-dimensional designs, consisting of lines, chevrons, and colorful shapes, appearing on cheerleading uniforms that they design, make, and sell. They sued a competitor for infringement. The district court rejected the claims on summary judgment. The Sixth Circuit reversed. The Supreme Court affirmed. A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated. That test is satisfied here. The feature cannot be a useful article or “[a]n article that is normally a part of a useful article,” nor the replica of a useful article in another medium. While plaintiffs have no right to prevent anyone from manufacturing a cheerleading uniform that is identical in shape, cut, or dimensions to the uniforms at issue here, an artistic feature that is eligible for copyright protection on its own does not lose that protection simply because it was first created as a feature of the design of a useful article, even if it makes that article more useful. View "Star Athletica, L. L. C. v. Varsity Brands, Inc." on Justia Law
Kirtsaeng v. John Wiley & Sons, Inc.
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. View "Kirtsaeng v. John Wiley & Sons, Inc." on Justia Law
Am. Broad. Cos. v. Aereo, Inc.
The Copyright Act of 1976 gives a copyright owner the “exclusive righ[t]” to “perform the copyrighted work publicly,” 17 U.S.C. 106(4), including the right to “transmit or otherwise communicate ... the [copyrighted] work ... to the public, by means of any device or process, whether the members of the public capable of receiving the performance ... receive it in the same place or in separate places and at the same time or at different times,” section 101. Aereo sells a service that allows subscribers to watch television programs over the Internet. Aereo’s server tunes an antenna, which is dedicated to the use of one subscriber, to the broadcast carrying the selected show. A transcoder translates the signals received by an antenna into data that can be transmitted over the Internet. A server saves the data in a subscriber-specific folder and streams the show to the subscriber, a few seconds behind the over-the-air broadcast. The owners of program copyrights unsuccessfully sought a preliminary injunction, arguing that Aereo was infringing their right to “perform” their copyrighted works “publicly.” The Second Circuit affirmed. The Supreme Court reversed and remanded, holding that Aereo performs the works within the meaning of section 101 and does not merely supply equipment that allows others to do so. The Court noted that the Act was amended in 1976 to make the law applicable to community antenna television (CATV) providers by clarifying that an entity that acts like a CATV system “performs,” even when it only enhances viewers’ ability to receive broadcast television signals. Aereo’s activities are similar; it sells a service that allows subscribers to watch television programs, many of which are copyrighted, virtually as they are being broadcast. That Aereo’s system remains inert until a subscriber indicates that she wants to watch a program is not critical. Aereo transmits a performance whenever its subscribers watch a program. The Court stated that when an entity communicates the same contemporaneously perceptible images and sounds to multiple people, it “transmit[s] ... a performance” to them, regardless of the number of discrete communications it makes and whether it makes an individual personal copy for each viewer. Aero subscribers are “the public” under the Act: a large number of people, unrelated and unknown to each other. View "Am. Broad. Cos. v. Aereo, Inc." on Justia Law
Petrella v. Metro-Goldwyn-Mayer, Inc.
The Copyright Act protects works published before 1978 for 28 years, renewable for up to 67 years, 17 U.S.C. 304(a). An author’s heirs inherit renewal rights. If an author who has assigned rights dies before the renewal period the assignee may continue to use the work only if the author’s successor transfers renewal rights to the assignee. The Act provides for injunctive relief and damages. Civil actions must be commenced within three years after the claim accrued-ordinarily when an infringing act occurred. Under the separate-accrual rule, each successive violation starts a new limitations period, but is actionable only within three years of its occurrence. The movie, Raging Bull, is based on the life of boxer Jake LaMotta, who, with Petrella, told his story in a screenplay copyrighted in 1963. In 1976 they assigned their rights and renewal rights to MGM. In 1980 MGM released, and registered a copyright in, Raging Bull. Petrella died during the initial copyright term, so renewal rights reverted to his daughter, who renewed the 1963 copyright in 1991. Seven years later, she advised MGM that it was violating her copyright. Nine years later she filed suit, seeking damages and injunctive relief for violations occurring after January 5, 2006. The district court dismissed, citing laches. The Ninth Circuit affirmed. The Supreme Court reversed. Laches cannot bar a claim for damages brought within the three-year window. By permitting retrospective relief only three years back, the limitations period takes account of delay. Noting the “essentially gap-filling, not legislation-overriding,” nature of laches, the Court stated that it has never applied laches to entirely bar claims for discrete wrongs occurring within a federally prescribed limitations period. It is not incumbent on copyright owners to challenge every actionable infringement; there is nothing untoward about waiting to see whether a violation undercuts the value of the copyrighted work, has no effect, or even complements the work. The limitations period, with the separate-accrual rule, allows an owner to defer suit until she can estimate whether litigation is worth the effort. Because a plaintiff bears the burden of proof, evidence unavailability is as likely to affect plaintiffs as defendants. The Court noted that in some circumstances, the equitable defense of estoppel might limit remedies. Allowing this suit to proceed will put at risk only a fraction of what MGM has earned from Raging Bull and will work no unjust hardship on innocent third parties. Should Petrella prevail on the merits, the court may fashion a remedy taking account of the delay and MGM’s alleged reliance on that delay. View "Petrella v. Metro-Goldwyn-Mayer, Inc." on Justia Law
Lexmark Int’l, Inc. v. Static Control Components, Inc.
Lexmark sells the only type of toner cartridges that work with its laser printers; remanufacturers acquire and refurbish used Lexmark cartridges to sell in competition with Lexmark’s new and refurbished cartridges. Lexmark’s “Prebate” program gives customers a discount on new cartridges if they agree to return empty cartridges to the company. Every Prebate cartridge has a microchip that disables the empty cartridge unless Lexmark replaces the chip. Static Control makes and sells components for cartridge remanufacture and developed a microchip that mimicked Lexmark’s. Lexmark sued for copyright infringement. Static Control counterclaimed that Lexmark engaged in false or misleading advertising under the Lanham Act, 15 U.S.C. 1125(a), and caused Static Control lost sales and damage to its business reputation. The district court held that Static Control lacked “prudential standing,” applying a multifactor balancing test. The Sixth Circuit reversed, applying a “reasonable interest” test. A unanimous Supreme Court affirmed. The Court stated that the issue was not “prudential standing.” Whether a plaintiff comes within a statute’s zone of interests requires traditional statutory interpretation. The Lanham Act includes in its statement of purposes, “protect[ing] persons engaged in [commerce within the control of Congress] against unfair competition.” “Unfair competition” is concerned with injuries to business reputation and sales. A section 1125(a) plaintiff must show that its injury flows directly from the deception caused by the defendant’s advertising; that occurs when deception causes consumers to withhold trade from the plaintiff. The zone-of-interests test and the proximate-cause requirement identify who may sue under section 1125(a) and provide better guidance than the multi-factor balancing test, the direct-competitor test, or the reasonable-interest test. Static Control comes within the class of plaintiffs authorized to sue under section 1125(a). Its alleged injuries fall within the zone of interests protected by the Act, and it sufficiently alleged that its injuries were proximately caused by Lexmark’s misrepresentations. View "Lexmark Int'l, Inc. v. Static Control Components, Inc." on Justia Law
Kirtsaeng v. John Wiley & Sons, Inc.
Wiley, an academic publisher, often assigns to its foreign subsidiary (WileyAsia) rights to publish, print, and sell Wiley’s English language textbooks abroad. WileyAsia’s books state that they are not to be taken (without permission) into the U.S. When Kirtsaeng moved to the U.S., he asked friends to buy foreign edition English-language textbooks in Thai book shops, where they sold at low prices, and mail them to him. He sold the books at a profit. Wiley claimed that Kirtsaeng’s unauthorized importation and resale was an infringement of Wiley’s 17 U.S.C. 106(3) exclusive rights to distribute its copyrighted work and section 602’s import prohibition. Kirtsaeng cited section 109(a)’s “first sale” doctrine, which provides that “the owner of a particular copy or phonorecord lawfully made under this title ... is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” The district court held that the defense did not apply to goods manufactured abroad. The jury found that Kirtsaeng had willfully infringed Wiley’s American copyrights and assessed damages. The Second Circuit affirmed, concluding that section 109(a)’s “lawfully made under this title” language indicated that the “first sale” doctrine does not apply to copies of American copyrighted works manufactured abroad. The Supreme Court reversed; the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad. Section 109(a) says nothing about geography. A geographical interpretation of the first-sale doctrine could re¬quire libraries to obtain permission before circulating the many books in their collections that were printed overseas; potential practical problems are too serious, extensive, and likely to come about to be dismissed as insignificant—particularly in light of the ever-growing importance of foreign trade to America. View "Kirtsaeng v. John Wiley & Sons, Inc." on Justia Law
Golan v. Holder
Petitioners are orchestra conductors, musicians, publishers, and others who formerly enjoyed free access to literary and artistic works section 514 of the Uruguay Round Agreements Act (URAA), 17 U.S.C. 104A, 109(a), removed from the public domain. Petitioners maintained that Congress, in passing section 514, exceeded its authority under the Constitution's Copyright and Patent Clause and violated the First Amendment rights of anyone who previously had access to such works. The Tenth Circuit ruled that section 514 was narrowly tailored to fit the important government aim of protecting U.S. copyright holders' interests abroad. In accord with the judgment of the Tenth Circuit, the Court concluded that section 514 did not transgress constitutional limitations on Congress' authority. The Court held that neither the text of the Copyright and Patent Clause, historical practice, or the Court's precedent excluded application of copyright protection to works in the public domain. The Court also held that nothing in the historical record, subsequent congressional practice, or the Court's jurisprudence warranted exceptional First Amendment solicitude for copyrighted works that were once in the public domain. View "Golan v. Holder" on Justia Law