Justia Copyright Opinion Summaries

The First Circuit vacated the judgment dismissing on claim preclusion grounds Plaintiff's claims against Eastern States Exposition alleging violations of federal copyright infringement law and the U.S. Visual Artists Rights Act, holding that the district court erred.On appeal, Plaintiff argued that the claim preclusive order gave claim preclusive effect to the dismissal in a prior action that she brought even where the dismissal rested on several grounds, not all of which would on their own render the dismissal claim preclusive. In support of her claim, Plaintiff argued that federal res judicata law recognizes the "alternative-determinations" doctrine. The First Circuit vacated the judgment dismissing the claims at issue, holding (1) the assertedly preclusive dismissal rested on one ground that, on its own, would not allow the dismissal to be claim preclusive, even though the dismissal also rested on two counts that could have; and (2) federal res judiata law recognizes the alternative-determinations doctrine, which strips a dismissal of claim preclusive effect if the dismissal rests on multiple grounds, not all of which would on their own render the dismissal claim preclusive, and the doctrine applied in this case. View "Foss v. Eastern States Exposition" on Justia Law

Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to Plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees.   The Ninth Circuit filed (1) an order amending its opinion, denying a petition for panel rehearing, and denying on behalf of the court a petition for rehearing en banc; and (2) an amended opinion affirming in part and vacating in part the district court’s judgment and award of attorneys’ fees. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. The panel held that the district court correctly exercised personal jurisdiction over CEFCU regarding SDCCU’s noninfringement claims, which sought declaratory relief that SDCCU was not infringing CEFCU’s registered mark or common-law mark. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law

Sotheby’s International Realty commissioned Plaintiff to photograph Lugalla, an Irish estate owned by the Guinness family. Plaintiff took seven photographs of the property, and Lugalla was subsequently listed for sale. On March 7, 2017, Hearst Newspapers used Plaintiff’s photographs in a web-only article, which Hearst Newspapers published on websites associated with the Houston Chronicle, the San Francisco Chronicle, the Times Union, the Greenwich Time, and The Middletown Press. Plaintiff sued Hearst Newspapers for copyright infringement. On February 11, 2022, Plaintiff amended his complaint to bring a copyright infringement claim against Hearst Magazine Media, Inc. and to allege that his photographs were also used on websites associated with various media sources. Plaintiff brought these claims within three years of discovering the infringements but more than three years after the infringements occurred. The district court followed Graper, granted Plaintiff’s motion for summary judgment, and denied Hearst’s motion.   The Fifth Circuit affirmed. The court first explained that Graper is the only precedent binding upon the court to apply the discovery rule with respect to the Section 507(b) limitations period for copyright infringement claims. Further, the court wrote that the Supreme Court’s decisions in Petrella and Rotkiske did not unequivocally overrule Graper. And under Graper, Plaintiff’s copyright infringement claims were timely because he brought them within three years of discovering Hearst’s infringements. View "Martinelli v. Hearst Newspapers" on Justia Law

SAS creates and sells software used for data access, management, analysis, and presentation. The SAS System allows users to input user-written programs into its graphical user interface to complete analytics tasks. Users write commands in SAS’s programming language. An earlier version of the SAS System is in the public domain. SAS has copyright registrations that cover various aspects of the SAS System. WPL created a competitor, the WPS System, which uses the SAS Language to allow users to run user-written programs to complete analytics tasks such as data access, management, analysis, and presentation. SAS sued WPL, alleging copyright infringement of the SAS System and SAS user manuals.The district court first concluded that SAS possessed valid copyright registrations covering SAS’s asserted software, then determined that WPL provided evidence that showed the software program elements were not within the scope of protection under copyright law. Applying the abstraction-filtration-comparison test, the district court determined that SAS failed to establish copyrightability.The Federal Circuit affirmed the dismissal of the suit. The court interpreted “copyrightability” as meaning whether the specific elements of a copyrighted work that are asserted in a copyright infringement action fall within the scope of protection extended to that particular work under copyright law. The district court acted properly in conducting a pretrial “Copyrightability Hearing.” View "SAS Institute, Inc. v. World Programming Ltd." on Justia Law

Sullivan registered copyrights for two “illustration collections,” comprising 33 individual illustrations, and sued Flora for infringing those copyrights, 17 U.S.C. 504(c)(1). A jury found that Flora willfully infringed Sullivan’s copyrights and awarded statutory damages for each of the individual illustrations infringed ($3,600,000). The Seventh Circuit rejected the court's test for calculating statutory damages, which focused exclusively on how the illustrations were copyrighted. The court adopted the “independent economic value test”: “A protected work has standalone value if the evidence shows that work has distinct and discernable value to the copyright holder.” On remand, the district court denied Flora’s request to reopen discovery; held that Flora had waived arguments challenging the independent economic value of certain illustrations; granted Sullivan summary judgment; and entered the same verdict, finding that the 33 illustrations constitute separate works.The Seventh Circuit reversed, finding that, in entering summary judgment, the district court violated the remand mandate and improperly weighed the evidence. The case must proceed to trial on the question of damages. The scope of the remand was narrow and limited to determining whether Sullivan’s illustrations “constitute 33 individual works or instead are parts of two compilations (corresponding with the two advertising campaigns in which Flora used the illustrations).” At trial, Flora is not prohibited from “nitpicking” specific aspects of the 33 illustrations to show that they lack independent economic value. Flora is not permitted to relitigate the issues of infringement or joint authorship. View "Sullivan v. Flora, Inc." on Justia Law

Appellants are a Swiss consortium, Interprofession du Gruyère (“IDG”), and a French consortium, Syndicat Interprofessionel du Gruyère (“SIG”) (together, “the Consortiums”), who believe that gruyere should only be used to label cheese that is produced in the Gruyère region of Switzerland and France. Seeking to enforce this limitation in the United States, the Consortiums filed an application with the United States Patent and Trademark Office (“USPTO”) to register the word “GRUYERE” as a certification mark. Appellees, the U.S. Dairy Export Council, Atalanta Corporation, and Intercibus, Inc. (together, “the Opposers”), opposed this certification mark because they believe the term is generic and, therefore, ineligible for such protection. The USPTO’s Trademark Trial and Appeal Board (“TTAB”) agreed with the Opposers and held that “GRUYERE” could not be registered as a certification mark because it is generic. The Consortiums filed a complaint challenging the TTAB’s decision in the United States district court. The district court granted summary judgment for the Opposers on the same grounds as articulated in the TTAB’s decision.   The Fourth Circuit affirmed and concluded that that the term “GRUYERE” is generic as a matter of law. The court explained that the Consortiums have not brought evidence bearing on whether, at an earlier point in history, the term “GRUYERE” was in common use in the United States. But even assuming that was the case, this argument still fails. In sum, the Consortiums cannot overcome what the record makes clear: cheese consumers in the United States understand “GRUYERE” to refer to a type of cheese, which renders the term generic. View "Interprofession du Gruyere v. U.S. Dairy Export Council" on Justia Law

Plaintiffs in this case—Sherman Nealy and Music Specialist, Inc.—filed this copyright action seeking, among other things, damages for infringement they allege occurred more than three years before they filed this lawsuit. The defendants—Warner Chappell Music, Inc. and Artist Publishing Group, LLC—contend that Plaintiffs cannot recover damages for anything that happened more than three years before they filed suit.  The district court certified the following question for interlocutory appellate review: whether damages in this copyright action are limited to a three-year lookback period as calculated from the date of the filing of the complaint.   The Eleventh Circuit answered that question in the negative. The court wrote that given that the plain text of the Copyright Act does not support the existence of a separate damages bar for an otherwise timely copyright claim, the court held that a copyright plaintiff with a timely claim under the discovery rule may recover retrospective relief for infringement that occurred more than three years prior to the filing of the lawsuit. View "Sherman Nealy, et al. v. Warner Chappell Music, Inc., et al." on Justia Law

Dmarcian, Inc. (dInc) and dmarcian Europe BV (dBV)—and a broken business relationship. The original dmarcian, dInc, is a Delaware corporation with headquarters in North Carolina. Its corporate homonym, dBV, is a Dutch entity based in the Netherlands. The two companies negotiated an agreement authorizing dBV to sell dInc’s software in Europe and Africa. The license was done on a handshake, and the parties now dispute its terms. Among other allegations, dInc accuses dBV of directly competing for customers, which prompted dInc to bring claims of copyright and trademark infringement, misappropriation of trade secrets, and tortious interference. The district court exercised personal jurisdiction over dBV and declined to dismiss for forum non conveniens. The district court also issued a preliminary injunction limiting dBV’s use of dInc’s intellectual property. The district court later held dBV in contempt for violating the injunction, and dBV appealed.   The Fourth Circuit affirmed except as to one aspect of the contempt order, which the court vacated and remanded for further proceedings as to the proper amount of sanctions. The court explained that the district court did not err in exercising personal jurisdiction, in declining to dismiss for forum non conveniens, and in issuing a preliminary injunction. Further, the court held that the district court was also justified in issuing a contempt sanction; but the court  requires a more thorough examination of the sanction amount. While the preliminary injunction may not be the final word on the merits, its entry was also not an abuse of discretion considering the weighty interests and detailed findings discussed at length above. View "Dmarcian, Inc. v. Dmarcian Europe BV" on Justia Law

The Everly Brothers (Phil and Don) are known for many musical hits, including Cathy’s Clown, recorded, released, and copyrighted in 1960. The copyrights listed both brothers as authors; both were credited as co-authors and received royalties. In 1980, Phil signed notarized documents titled “Release and Assignment,” related to Cathy’s Clown and other works: “Phil Everly desires to release, and transfer, to the said Don Everly all of his rights, interests and claim in and to [‘Cathy’s Clown’], including rights to royalties and his claim as co-composer. In 2017, Don sued Phil’s estate for a declaratory judgment that Don was the sole author of Cathy’s Clown. There was contradictory evidence of Phil’s factual authorship, particularly a 1984 television interview.The district court found that Don repudiated Phil’s authorship of Cathy’s Clown, which triggered a three-year window for Phil to make an authorship claim under the Copyright Act. Phil did not do so. The district court rejected Phil’s estate’s argument that the three-year limitations period should not apply to the defense that Phil is a co-author. The Sixth Circuit affirmed. Don’s estate may rely on the statute of limitations. The district court did not clearly err in finding that Phil failed to exercise his rights after Don repudiated his authorship. View "Garza v. Everly" on Justia Law

Plaintiff is a physically challenged athlete and motivational speaker who started the Scott Rigsby Foundation and registered the domain name “scottrigsbyfoundation.org” with GoDaddy.com. When Plaintiff and the Foundation failed to pay the annual renewal fee in 2018, a third party registered the then-available domain name. Scottrigsbyfoundation.org became a gambling information site. Plaintiff sued GoDaddy.com, LLC and its corporate relatives (collectively, “GoDaddy”), for violations of the Lanham Act and various state laws and sought declaratory and injunctive relief, including the return of the domain name. The Northern District of Georgia transferred the case to the District of Arizona, which dismissed all claims.   The Ninth Circuit affirmed the district court’s dismissal and dismissed Plaintiff’s and the Foundation’s appeal of an order transferring venue. The panel held that it lacked jurisdiction to review the District Court for the Northern District of Georgia’s order transferring the case to the District of Arizona because transfer orders are reviewable only in the circuit of the transferor district court. The panel held that Plaintiff could not satisfy the “use in commerce” requirement of the Lanham Act vis-à-vis GoDaddy because the “use” in question was being carried out by a third-party gambling site, not GoDaddy. As to the Lanham Act claim, the panel further held that Plaintiff could not overcome GoDaddy’s immunity under the Anti-cybersquatting Consumer Protection Act.  The panel held that Section 230 of the Communications Decency Act shielded GoDaddy from liability for Plaintiff’s state-law claims for invasion of privacy, publicity, trade libel, libel, and violations of Arizona’s Consumer Fraud Act. View "SCOTT RIGSBY, ET AL V. GODADDY INC., ET AL" on Justia Law