Copyright Case Summaries Q3 2010

First Circuit Courts

Molinelli-Freytas v. University of Puerto Rico, 2010 WL 3001662 (D. Puerto Rico, July 27, 2010) Opinion by Judge Daniel R. Dominguez: In this case, the court held that the Copyright Act preempted §1983 claims. The issue of whether §1983 claims are preempted by the Copyright Act was a matter of first impression in the First Circuit. Plaintiffs argue that they created an original document during non-work hours when they were employed as professors at the University of Puerto Rico. Plaintiffs further allege that the University improperly used the proposal to create a new graduate program in violation of the Copyright Act and plaintiffs’ right to due process.

The court reasoned Congress intended the Copyright Act to preempt §1983 claims because registration was required for bringing a suit for copyright infringement, but was not required to bring a case under §1983. Thus, without preemption, plaintiffs would have the capability to avoid the registration requirement of the Copyright Act by filing claims under §1983 and would also be able to receive punitive damages, which are not available under the Copyright Act. The court concluded that the Congress intended the Copyright Act to “preempt §1983 claims based on the same actions that underlying the Copyright Act claims.”

Feldman v. Twentieth Century Fox Film Corp., ___ F.Supp.2d ___, 2010 WL 2787698 (D.Mass. 2010).

Opinion by Douglass P. Woodlock, District Judge

In this case, the court granted defendants’ motion to dismiss plaintiff’s action alleging claims for copyright infringement, misappropriation, unfair competition, and unjust enrichment, because plaintiff’s unpublished fiction book Days of Grace, unpublished screenplay for An Ordinary Hero, personal letters stored on plaintiff’s computer, private telephone conversations, and details of its personal life are unregistered works; because none of the various elements plaintiff claims defendants copied of plaintiff’s registered works, books entitled An Ordinary Hero, The Comfort of Strangers, and The Red Tattoo, all part of The Overlap Series, are protected by copyright; and because plaintiff’s state law claims are preempted by federal copyright law, and thus moot. The court explained:

First, to prevail in an action for copyright infringement, a plaintiff must establish (1) ownership of a valid copyright and (2) copying of the constituent elements of the work

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that are original. To prove the first element, the plaintiff must show that the work is original and registered with the U.S. Copyright office. The second element, actionable by copying, is provable by two separate alternative inquiries. The first inquiry addresses the factual question as to whether the alleged infringer actually copied the protected material, which may be proven directly or through evidence that the alleged infringer enjoyed access to the copyright work and that a sufficient degree of familiarity exists between the copyright work and the allegedly infringing work. The second inquiry addresses whether the copying is legally actionable: where the copying of the copyrights material is so extensive that it rendered the infringing and copyrighted works substantially similar. A party will only be liable for copying of original elements. Similarity among unoriginal, uncopyrightable elements cannot form the bases of an infringement claim.

Here, the court found plaintiff’s unpublished fiction, personal letters, private telephone conversation, and details of its personal life, to be unregistered works and cannot form the basis of its infringement claim. Regarding plaintiff’s registered books, plaintiff did not offer direct evidence of actual copying. Also, the court found plaintiff’s theories of access, including that it announced its website on local radio, that defendants could have eavesdropped on its phone calls or hacked into its phone, and that copies of the works could have been obtained from an ex-boyfriend of plaintiff created only bare possibility that defendants had access to the works, and not enough to prove it. Lastly, the court found the various elements of plaintiff’s registered works plaintiff alleges defendants infringed, such as “storylines”, “names”, “lives”, “actions”, “people stories”, “medical drama[]”, “after effect[s]”, and time travel to be generic features found in innumerable works and not protected by copyright.

Second, regarding the claims for misappropriation, unfair competition, and unjust enrichment, are preempted by federal copyright law. The court held there to be no valid copyright claims, and thus plaintiff’s state law claims are moot.

Second Circuit Courts

White House/Black Market, Inc. v. Cache Inc., Slip Copy, 2010 WL 2985232 (S.D.N.Y., July 27, 2010).

Opinion by United States District Judge Paul G. Gardephe.

On motion for remand to state court, the District Court found that Plaintiff’s trade secret claim was not preempted by federal copyright.

Defendants Farhang and Broad (“Defendants”) were employees of White House/Black Market, Inc. (“WHBM”) and went to work for co-Defendant Cache Inc. WHBM contends that, in violation of non-disclosure, code of ethics, and handbook agreements, Defendants took confidential and proprietary information. Shortly after Defendants’ arrival, Cache released clothing lines utilizing designs identical to WHBM’s already

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released and upcoming lines. WHBM sued in New York state court under trade secret, breach of contract, and other theories.

Defendants removed to federal court. WHBM moved to remand to state court on the grounds that there is no federal subject matter jurisdiction, namely that copyright did not preempt WHBM’s trade secret claim.

Federal courts have jurisdiction over copyright claims where the subject matter falls within the type to be protected by the Copyright Act and where the claim seeks vindication of rights equivalent to those protected by copyright law. A trade secret claim, however, is qualitatively different from a copyright claim, requiring the additional element of proving breach of an agreement or confidential relationship. The District Court therefore remanded to state court over Defendant’s unsupported argument that clothing designs cannot form the basis of a trade secret claim.

Software Freedom Conservancy, Inc. v. Best Buy Co., Inc., Slip Copy, 2010 WL 2985320 (S.D.N.Y., July 27, 2010) (damages and attorneys’ fees pursuant to a default judgment)

(Shira A. Scheindlin, J.) Plaintiff sued multiple defendants for distributing copies of its “Busybox” software in High Definition Televisions (HDTV's) in violation of Plaintiff's open source, public license.

During the course of discovery, Plaintiffs moved for a default judgment against defendant Westinghouse Digital Electronics, LLC (“Westinghouse”) because Westinghouse “ceased complying with its discovery obligations.” The court granted the motion.

Westinghouse executed a General Assignment for the benefit of creditors (a California state law construct similar to bankruptcy), which the Court found to indicate that Westinghouse would not continue to defend itself. By being in held default, Plaintiff's infringement allegations against Westinghouse were uncontroverted, with Westinghouse ignoring Plaintiff's warnings that Westinghouse's HDTV's distributed Plaintiff's software inconsistently with the public license. These facts strongly suggested to the Court that Westinghouse would continue to infringe Plaintiff's copyright unless enjoined, the Court granted a permanent injunction from copying, distributing, or using Busybox without permission.

Further, Westinghouse's infringement was held to be willful because Westinghouse received notice from Plaintiff regarding the infringing activity. The Court proceeded to grant Plaintiff enhanced statutory damages under 17 U.S.C. 504(c)(2), attorneys' fees and costs, and destruction of all infringing copies under 17 U.S.C. 503(b).

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BanxCorp v. Costco Wholesale Corp., --- F.Supp.2d ----, 2010 WL 2802153 (S.D.N.Y. 2010)

(KENNETH M. KARAS, J.) Plaintiff initiated this action against Capital One and Costco alleging that its license with Capital One did not permit Capital One to share information with Costco.

Plaintiff created various BanxQuote economic indices, which it licenses to various banking institutions and service providers. Defendants Costco and Capital One provided co-branded banking services to members of Costco's members. Plaintiff and Capital One entered into a limited licensing agreement for Capital One to access and use Plaintiff's indices. Capital One then provided this information to Costco to benefit their co-branded service.

Plaintiffs complaint alleged two federal causes of action: (Count One) alleging copyright infringement based upon Defendants’ improper use of the BanxQuote Indices and (Count Three) DMCA violations, accusing Defendants of coping the BanxQuote Indices and altering or removing copyright management information. Other causes of action included state law claims for “hot news” type misappropriation, unfair competition and breach of contract.

Addressing copyright infringement, the Court looked at three aspects (referred to as “levels”) of possibly protectable elements in Plaintiff's work:

(1) Raw data in the indices(2) Product of the raw data (here, the averages listed in the indices, or “final value”)(3) Arrangement and presentation of the final values

The court considered only the product of the raw data fully, as the raw data was held to be unprotectable under Fiest Publications and Plaintiffs did not claim copyright in the arrangement.

The product of raw date will be unprotectable by copyright when (1) the raw data used to create the final value were unprotectable facts; (2) the method of converting raw data into the final value was an industry standard, or otherwise widely accepted as an objective methodology; and (3) the final value attempted to measure an empirical reality. Alternatively, final values produced from raw data are protectable by copyright, when (1) the raw data used to create the final value were protectable; or (2) the method of converting the raw data into a final value was an original (but not necessarily novel) process that is neither widely accepted as objective, nor an industry standard; or (3) the final value did not attempt to measure an empirical reality.

Because no copyright protection attached to the raw data, the Court looked to whether Plaintiffs sufficiently alleged “minimal” originality in the method of converting the raw data to the final values. Because Plaintiffs alleged that their method satisfied the minimal originality test “because they chose which economic measures to consider and omit.” The Court noted that this allegation was enough for the Plaintiffs to get to “first base” with their copyright claim, and overcome Defendants' motion to dismiss.

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Defendants also sought dismissal of the claim under the merger doctrine. The Court rejected this argument, finding that while the Second Circuit had previously found security settlement prices unprotectable in New York Mercantile, the record was not fully developed to determine whether, or not, the indicies at issue could be expressed in enough ways to avoid merger of the idea (method of data selection and analysis) and its expression (the indices). As such, this was an issue for trial.

Plaintiffs also alleged DMCA violations under 17 U.S.C. 1202(b)(1) and (3), claiming that Defendants intentionally removed copyright management information and distributed copies of works knowing that copyright management information has been removed. Plaintiffs sustained their burden by attaching an advertisement where Defendants published a quote from the index at issue without the associated copyright management information (CMI) normally published by Plaintiffs.

Fourth Circuit Courts

In Re Outsidewal Tire Litigation, 2010 WL 2929626 (E.D.Va. 2010).

Order by T.S. Ellis, II, District Judge

In this case, the court granted judgment as a matter of law with respect to plaintiffs’ registered trademark infringement claim and dismissal of one defendant from the case, and denied judgment with respect to plaintiffs’ civil conspiracy, conversion, and copyright infringement claims. Regarding plaintiff’s copyright claim, defendants copied plaintiffs’ blueprints of its Alpha tire and modified them to create an infringing derivative work, blueprints for the Infinity tire, before the critical limitation date and within the United States. After the critical limitation date, defendants produced tire molds and tires in China and sold them to customers outside the United States. The court adopted the Second Circuit holding that the extraterritorial exploitation of a copyright originally infringed inside the U.S. falls within the jurisdiction of the Copyright Act, and continued that the domestic predicate infringement occurring prior to the critical limitation date is irrelevant to the exploitation occurring subsequent to that date, regardless of location. The court also held that no requirement of showing of a Copyright Office stamp is needed to establish ownership when instead registration certificates describing the works at issue are provided, and found that the infringed tires at issue clearly demonstrate the minimal degree of creativity required to establish copyright originality.

Universal Furniture International, Inc., v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010).

Opinion Per Curiam

On appeal from the United States District Court for the Middle District of North Carolina (William L. Osteen, Jr., Judge), the court affirmed the district court’s judgment that

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plaintiff possessed valid copyrights on the GIC and EMC lines of chairs, which are sufficiently original for copyright protection and aesthetically conceptually separable from their utilitarian aspects, that defendant infringed these copyrights and misrepresented plaintiff’s designs as its own in contravention of the federal Lanham Act and the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA); and the court affirmed the district court’s award to plaintiff of more than $11 million in damages. Regarding the copyright violation, the court explained:

First, to prevail in an action for copyright infringement, a plaintiff must establish ownership of a valid copyright and copying by the defendant. A certificate of registration issued by the Copyright Office is prima facie evidence of validity and ownership, and shifts to the defense the burden to prove the claimed copyrights invalid. However, a reviewing court should assess other relevant indicia of ownership, such as parties’ intent and the terms of any transfer agreements or other documents establishing chain of title. A writing is required to transfer copyright ownership, except for transfers occurring by operation of law. Here, the court found the registrations issued by the Copyright Office for the GIC and EMC lines to identify plaintiff as the claimant, and found plaintiff to be the successor in interest following mergers and agreements involving the original owner of the copyright, thus possessing valid copyrights.

Second, a plaintiff must also establish that the work is original. Originality requires only independent creation by the author and a minimal degree of creativity. A compilation work may be extended copyright protection even if the material of which it is composed is not copyrightable itself, so long as sufficient original skill and labor is expended in its creation. Also, industrial designs, including furniture design, are not entitled to copyright protection. Here, plaintiffs sought copyright protection for the decorative sculptural designs on furniture, the adaptation of preexisting decorative designs, and the compilation of decorative designs on the EMC and GIC furniture designs, and not the furniture design itself. The court found the author had utilized elements culled from public domain resources, adapted to create a different look than has been previously seen, and therefore original.

Third, the aspects of the work for which copyright protection is sought must conceptually separable from any utilitarian aspects of the work. Here, the court found the furniture designs are highly ornate, adorned with three-dimensional shells, acanthus leaves, columns, finials, rosettes, and other carvings which are independent of and separately identifiable from the utilitarian aspects of the furniture.

Splitfish AG v. Bannco Corp., 727 F. Supp2d 461 (E.D. Va. 2010)

Opinion by T.S. Ellis, III

Plaintiff moved for preliminary injunction on copyright claim and the motion was granted. Plaintiff, a video game controller developer, brought action against competitor Bannco claiming unfair competition and trademark and copyright infringement. In its copyright claim, Plaintiff claimed that Defendant copied portions of programming code

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from their video game controller. Chinese contractors for Plaintiff developed the programming code in Nabon. Where a disputed work is produced abroad, courts must look to the law of the country of the work’s origin to determine ownership. Because the code was developed in China, the court looked to Chinese law to see if the copyright vested in the contractors or in Plaintiff. Court held that as a matter of Chinese law Plaintiff owned copyright in the code. Defendant admitted that the code for its controllers was developed by taking Plaintiff’s code and removing any reference to Plaintiff or their product from the code. Court held that Plaintiff satisfied the four requirements for preliminary injunction outlined in Real Truth About Obama, Inc. v. Federal Election Commission, 575 F.3d 342, 346 (4th Cir. 2009).

Thomas v. Artino, --- F.Supp.2d ----, 2010 WL 2696639 (D. Md. 2010)

(Deborah K. Chasanow, Chief Judge) Plaintiff, an architect, performed work pursuant to the repair and remodeling of Defendant's residence. However, the signed contract was between Plaintiff and Defendant's contractor (a third party); Defendant did not sign the contract, even though the contractor purported to sign the contract on behalf of Defendant. Defendant then failed to pay Plaintiff, who kept his drawings and original building permit. Later, Plaintiff learned that Defendant remodeled his home using the drawings and obtained a second building permit based thereon.

After a number of complaints in various state and federal courts, Plaintiff registered his copyright and commenced the instant action against Defendant.

Defendant moved for summary judgment on Plaintiff's claim of copyright infringement and two state law claims. The Court granted summary judgment to Defendant on the state law claims, and denied summary judgment on the copyright infringement claim.

First, the Court dismissed Defendant's assertion that Plaintiff failed to provide sufficient evidence of ownership of a copyright. Defendant asserted that “Plaintiff must provide the application, file, deposit, or a 'certified copy' of the registered work to prove that he holds the copyright.” The court rejected this argument, noting no cases make such a holding and that the Copyright Act provides that registration “constitute[s] prima facie evidence of the validity of the copyright”.

Further, the Court agreed with Plaintiff that Defendant copied the registered drawings by submitting the drawings to the municipality for a second building permit and using the drawings to remodel his home. The court noted that substantial similarity of architectural designs only requires “a substantial part of the allegedly infringing design [be] copied,” and that such similarity could “be established on the basis of similarity between either the floor plans or the exterior, or both.”

However, the instant case was where similarity could be decided on summary judgment. The court found both sets of drawings (the Plaintiff's registered drawings and the drawings Defendant submitted for the second building permit) to be identical. Thus,

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a side-by-side comparison was not required for a determination of substantial similarity. Further, the Court found that the municipality's records show the drawings were used to remodel the home, and that Defendant offered no evidence that the home was remodeled with other plans.

The court asked that the parties to brief the issue of vicarious liability, being that Defendant asserts that he was not the party that copied Plaintiff's work

Bouchat v. Baltimore Ravens Ltd. Partnership, 619 F.3d 301, 305 -306 (4th Cir. 2010)

(Michael, Circuit Judge) This opinion emanates from the fourth appeal by Plaintiff in his quest to successfully prove that the Baltimore Ravens football team and the NFL copied the Ravens' “Flying B” logo without authorization. Particularly, the instant appeal focused on whether Plaintiff could enjoin Defendants from using the logo in highlight films and the Ravens' corporate office.

The trial court held that these uses were a fair use of the logo, but the Fourth Circuit reversed-in-part as to the highlight films because the use was non-transformative and commercial. The Court completed a full fair use analysis, finding that the logo use in the films was the same as the original intent of the work: to identify the Baltimore Ravens football team. Thus, the Fourth Circuit overturned the District Court's finding that use of the logo was primarily historical (the Ravens ceased using the Flying B logo on its uniforms in 1998) and the purpose of the films was to promote the Ravens.

However, the Fourth Circuit viewed the use in the office lobby differently. The Court found that use of the Flying B logo in the office lobby did not provide the Ravens with “direct or immediate commercial advantage from the depictions of the logo in the lobby - i.e., the team's profits, revenues, and overall commercial performance were not tied to this use.” Further, because no fee was charged in gaining admittance to this lobby, the Court affirmed that the Ravens use of the logo in the office lobby was a fair use.

In dissent, Judge Niemeyer would have affirmed the District Court's ruling in its entirety, finding that the Ravens use of Plaintiff's logo was only for historical and biographical purposes.

Fifth Circuit Courts

MGE UPS Systems, Inc. v. GE Consumer and Industrial, Inc., 612 F.3d 760 (5th Cir. 2010) Opinion by Judge Emilio M. Garza: On appeal from the United States District Court for the Northern District of Texas, the circuit court affirmed the district court’s grant of GE/PMI’s motion dismissing MGE’s DMCA claim.

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One of Congress’ purposes in creating the DMCA was to target the circumvention of technological protections. The issue in this case was how to interpret the type of “access” controlling technological measures that was needed to acquire DMCA protections. The court held that “merely bypassing a technological protection that restricts a user from viewing or using a work is insufficient” to utilize the DMCA anti-circumvention provision. Therefore, the anti-circumvention provision applies when the technological measure protects the copyrighted material from an infringement of a right that the Copyright Act covers. The court held that the mere fact that a piece of technology is circumvented is insufficient to invoke the anti-circumvention provisions of the DMCA because the technology does not necessarily protect against copyright violations. Since MGE did not demonstrate that GE/PMI circumvented MGE’s software protections in violation of the DMCA, the Fifth Circuit held that the District Court did not err in dismissing MGE’s DMCA claim.

Seventh Circuit Courts

Woods v. Resnick, 725 F.Supp.2d 809, 2010 WL 2814414 (W.D. Wis. 2010).

Opinion by United States Magistrate Judge Stephen L. Crocker.

On competing declaratory judgment motions for copyright ownership in a software program, the court found that Woods was the sole and exclusive owner.

Woods and Resnick worked together in the creation of a software program. Resnick had generated the idea, the formulae in Excel, some source code, and mock-ups of the displays. Woods contributed the bulk of the source code. Woods and Resnick formed F&I Source, LLC (“F&I”) as equal presidents and members. Their relationship soured and they sought the present judgments to determine ownership.

The court found that Resnick owned no copyrightable expression in his contribution. Ideas and formulae are not copyrightable and Resnick was unable to identify any protectable specifics about his source code. Resnick was also unable to make any showing that his mock-ups of the displays contained original expression.

The court then found that ownership was in Woods, not F&I as a work-for-hire. There was no written agreement that the protected source code was made as work-for-hire. Further, bas a co-president of F&I, Woods was not an employee or independent contractor to F&I. Additionally, F&I did not exist at the time of the creation by Woods of the software. Finally, no written agreement had been executed as required for a transfer of Woods’s rights to F&I.

Broadcast Music, Inc. v. CDZ, Inc., 724 F.Supp.2d 930 (2010),WL 2774447 (C.D. Ill. 2010).

Opinion by United States District Judge Michael M.Mihm.

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On motion for summary judgment by Broadcast Music, Inc. and copyright owners (“BMI”) for infringement against Goodfellas Pub & Pizza and its owners (“Goodfellas”), the District Court found infringement.

Goodfellas hired bands to perform music at its establishment, the copyright of some of which were licensed to BMI. On several occasions over five years BMI notified Goodfellas of their infringing action and the need to secure licenses from BMI. Goodfellas ignored these communications and BMI sued.

Goodfellas argued that they were not liable because they merely hired as independent contractors the musicians who performed the works, the copying act. The court held Goodfellas vicariously liable because they owned, operated, maintained, and controlled the establishment, and because they hired the musicians who performed for Goodfellas’ profit.

The court further found that BMI’s statutory award was reasonable; it was within the statutory limits, was one-and-a-half times the license fees that would have been paid, and Goodfellas acted willfully. The court also granted attorney’s fees to BMI because of Goodfellas’ willful infringement and to deter their further infringement. Finally, the court entered a permanent injunction to prevent necessitation of BMI’s constant monitoring and litigation efforts and because the burden on Goodfellas in obtaining a BMI license is not great.

Eighth Circuit Courts

Frye v. YMCA Camp Kitaki, 617 F.3d 1005 (8th Cir. 2010)

Opinion by Hansen

Plaintiff, a playwright, previously obtained a judgment against Defendant, where Defendants were enjoined from performing Plaintiff’s play titled Kastleland at Defendant’s summer camp Camp Kitaki. Kastleland was and “adventure trail” where the cast members interacted with campers and took the campers to complete different “quests” (summer camp activities). Defendant then put on a different midevil themed play titled KnightQuest which also included cast members interacting with campers and taking them on quests. Plaintiff then brought this action, asking the court to hold Defendant in contempt for violating the injunction against performing Kastleland by performing KnightQuest. The district court found that the characters in Kastleland were skeletal archetypes and the plot composed of scenes a faire and that Plaintiff failed to prove any substantial similarity to any protected expression between the two. The district court denied Plaintiff’s motion. The court of appeals here, in reviewing the district court’s finding that there was not substantial similarity, held that the district court’s finding was not clearly erroneous.

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Ninth Circuit Courts

Jules Jordan Video, Inc. v. 144942 Canada, Inc., 617 F.3d 1146, 2010 WL 3211818 (9th Cir. 2010).

Opinion by United States Circuit Judge Robert W. Gettleman.

On appeal from the District Court decisions, the Circuit Court found Plaintiffs had standing in copyright and that the right of publicity was preempted by copyright.

Gasper is an actor, director, producer and sole shareholder and president of Jules Jordan Video, Inc (“JJV”). JJV’s DVDs were counterfeited by 1928919 Canada, Inc. and others (collectively “Defendants”). JJV and Gasper sued. After jury verdicts in favor of Plaintiffs, Defendants moved that neither plaintiff had standing to bring the copyright claim and that the right of publicity claim was preempted by copyright. The District Court found that the right of publicity was not preempted, but agreed regarding standing—Gasper created the works as works-for-hire, leaving JJV as the author, precluding Gasper’s standing, and Gasper’s mistake in listing himself as the author on JJV’s copyright registrations invalidated them, preventing JJV’s standing.

On appeal, the Circuit Court held that the right of publicity claim was preempted. Because Gasper’s claim was founded solely on misappropriation of its DVDs and performances therein, the entire claim falls within a copyrighted medium. Further, the essence of Plaintiffs’ claim was that Defendants reproduced and distributed its DVDs without authorization, falling squarely under the Copyright Act.

Regarding standing, the Circuit Court concluded that the works were not work-for-hire. Gasper testified that he and JJV intended copyrights be retained by him personally. Given that JJV was Gaspers’ one-man shop, his intent must also have been JJV’s. Alternatively, Gasper’s mistake in identifying himself as author did not invalidate the copyright registrations. Thus, Gasper and/or JJV had standing..

The court reinstated the copyright verdict and rejected Defendants’ arguments that the District Court erred in allowing certain jury instructions and a special verdict form.

Mattel, Inc. v. MGA Entertainment, Inc., 2010 WL 2853761 (9th Cir. 2010) Opinion by Chief Judge Alex Kozinski:

On appeal from the United States District Court for the Central District of California, the ninth circuit vacated the district court’s constructive trust, UCL injunction and declaratory judgment regarding Mattel’s rights to Bratz’s trademarks. The court stated that to win its copyright claim, Mattel must prove: (1): that it owned copyrights in the sketches and sculpt, (2) prove MGA had access to the sketches and sculpt, and (3): demonstrate that MGA’s dolls infringe the sketches and sculpt. In

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distinguishing between permissible lifting of ideas and impermissible copying of expression, the court utilized a two-part “extrinsic/intrinsic” test. At the “extrinsic” level, the court analyzed the similarities between the two works and whether the similar aspects were protectable. At the “intrinsic” stage we asked whether an “ordinary observer” would consider the two works as being substantially similar. The court held that “substantial similarity” for copyright infringement is not satisfied merely by a similarity of ideas. Instead, there must be a similarity of expression. Here, because there are only a finite number of ways to create the expression of a young, female fashion doll, the sculpt was only entitled to thin copyright protection. On the other hand, the ninth circuit held that the district court did not err in providing the sketches with broad copyright protection. However, the court found that Mattel cannot claim a monopoly over the idea of fashion dolls with a bratty look. Thus, the court held that MGA’s Bratz dolls are not substantially similar because there is merely a similarity of ideas, not expression.

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Bean v. Houghton Mifflin Harcourt Publishing Co., Slip Copy, 2010 WL 3168624 (D. Ariz., August 10, 2010)

(David G. Campbell, J.) Plaintiff, a photographer, brought suit against Defendant for willfully exceeding the scope of a limited license for use of Plaintiff's photographs in publications by Defendant.

Plaintiff transferred ownership of the photographs to his agent, who then registered the images at issue, and others, by registering six compilations. However, only one of the six applications for registration list Plaintiff as an author of its photographs and no titles of the works were given.

Defendant sought to dismiss the complaint because the images were not registered individually under 17 U.S.C. § 409, noting that § 409 requires a registration to list “the name . . . of the author or authors” and “the title of the work”.

The court agreed, granting Defendant's motion to dismiss. The Court held that the registration of the six compilations did not have the effect of registering the individual photographs, because the titles and author (Plaintiff) of the photographs at issue were not listed in the registration.

Plaintiff argued that 17 U.S.C. § 411 should save the registration. § 411 creates invalidity of a registration only when application inaccuracies are (A) made with knowledge of the inaccuracy, and (B) the inaccuracy would have caused refusal of registration. As to the individual photographs, Plaintiff's agent failed to comply with § 409 almost completely, and that Court held that reading § 411 to save such registrations “would eviscerate the requirements of § 409.”

This case serves a strong warning to those who register a single compilation to save money from multiple works. Best practices would dictate after Bean that the author(s) and title of each work therein be listed on the application for registration.

Eleventh Circuit Courts

Baby Buddies, Inc., v. Toys “R” Us, Inc., 611 F.3d 1308 (11th Cir. 2010)

Opinion by Circuit Judge Tjoflat

On appeal from the United States District Court for the Middle District of Florida (Elizabeth A. Kovachevich, Judge), the court affirmed the district court’s grant of summary judgment for the defendants with regard to federal copyright infringement because the potentially copyrightable elements of defendants’ allegedly-infringing pacifier holder are aesthetically distinctly different from plaintiff’s copyright-protected pacifier holder, and with regard to misleading advertising under Florida law, per Fla. Stat. § 817.41, by claiming to be the original author and copyright holder of the allegedly-

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infringed pacifier holder by including the copyright symbol on its pacifier holder’s packaging indicating that it was the author of the design. The court explained:

First, to prevail in an action for copyright infringement, a plaintiff must establish ownership of a valid copyright and copying of the constituent elements of the work that are original. Copying can be proven with direct evidence of copying, which is rare, or indirectly. Where there is no direct evidence of copying, the plaintiff may establish copying through indirect evidence by showing (1) access to the allegedly-infringed work by the defendants, and (2) substantial similarity between the two works at issue. Under a two-step approach for determining whether substantial similarity exists, the factfinder first asks what aspects of the copyrighted work, if any, are protected and then asks whether the second work involves elements that are substantially similar to the protected elements of the original work.

Here, defendants conceded both the validity of the plaintiff’s copyright and that they had access to the plaintiff’s copyrighted work. The copyrighted work, as well as the allegedly-infringing work, is a pacifier holder consisting of a plastic bear, a device to attach to the baby’s clothing, a ribbon bow, and a length of ribbon to extend to the pacifier functioning as a tether. The court isolated the bear and bow only as items potentially protected by copyright. The court found plaintiff’s bear to be protected by copyright, but found defendants’ bear to be distinctly different from an aesthetic perspective. The court found plaintiff’s ribbon bow to fall below the threshold of originality required for copyright protection, and thus beyond scrutiny for copyright infringement. Thus the court held that no reasonable jury could find defendant’s pacifier holder to be substantially similar to plaintiffs, and held that summary judgment was appropriate on the issue of infringement.

Second, plaintiff’s allegation of misleading advertising, by claiming to be the original author and copyright holder of the allegedly-infringed pacifier holder by including the copyright symbol on its pacifier holder’s packaging to indicate that it was the author of the design, is predicated on a finding of copyright infringement on the pacifier holder itself. As the court found no such infringement, it held that summary judgment was appropriate on the issue of misleading advertising.

Federal Circuit

Cohen, Ed.D. v. United States, 617 F.3d 1005 (2010), 2010 Copr.L.Dec. P 29,975, 95 U.S.P.Q.2d 1990

Opinion by Hewitt

Plaintiff brought suit alleging copyright infringement of at least 12 works by FEMA, claiming that FEMA displayed his articles on FEMA’s website. The government moved for partial summary judgment claiming that Plaintiff failed to register one of the works (Plaintiff responded that the article in question was also contained in his PHD

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dissertation, which was registered with the copyright office) and that Plaintiff’s conveyance of certain exclusive rights (produce, distribute, and display rights) made him a legal owner but not beneficial owner and deprived him of standing to bring suit. Plaintiff contended that because he still receives royalty payments that he is a beneficial owner. The court held that the article was protected by the registered copyright in Plaintiff’s dissertation, the author did have standing as a beneficial owner because of his royalty payments, that there were remaining issues of fact as to tolling of limitations and as to recovery of damages for the period after the articles were taken down from the FEMA website.

Law Student Contributors: Sean Flaim, Deb Sengupta, Megan Wantland, Misty Mirpuri, Rob Weaver and Josh Miller, the student coordinator

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