Copyright Opinions
Samples in Madonna's "Vogue" Too Trivial
to Be Infringing: VMG Salsoul, LLC v. Ciccone, Nos.
13-57104, 14-55837 (9th Cir. June 2, 2016)
Graber, J. In a suit claiming infringement of both
composition and sound-recording copyrights based on alleged
sampling—in Madonna's song "Vogue"—of a
0.23-second "horn hit" from plaintiff's recording, a
divided Ninth Circuit panel affirmed the district court's
summary judgment of noninfringement under the de minimis
exception to copyright, notwithstanding the fact that plaintiff had
offered evidence of actual copying. With respect to the
composition, the Ninth Circuit relied on its precedent in
Newton v. Diamond (9th Cir. 2004), which held that copying
of a musical composition is de minimis—and therefore
noninfringing—when "the average audience would not
recognize the appropriation." With respect to the sound
recording, the panel majority rejected the Sixth Circuit's
bright-line rule of Bridgeport Music, Inc. v. Dimension
Films (6th Cir. 2005), under which any unauthorized copying of
a sound recording constitutes infringement. In the first federal
appellate decision to address the issue since Bridgeport,
the majority extended Newton's "average
audience" test to sound recordings, finding
"unpersuasive" the Sixth Circuit's reasoning that
Congress intended to eliminate the de minimis exception
for sound recordings under the Copyright Act. However, the Ninth
Circuit held that the district court abused its discretion in
granting attorneys' fees to defendants, holding that "[a]
claim premised on a legal theory adopted by the only circuit court
to have addressed the issue is, as a matter of law, objectively
reasonable."
Burning of Burning Man Ship Not a Violation of VARA:
Cheffins v. Stewart, No. 12-16913 (9th Cir. June 8,
2016)
O'Scannlain, J. In a suit alleging violation of the
Visual Artists Rights Act ("VARA"), 17 U.S.C. §
106A, based on the burning of a replica of a Spanish galleon, the
Ninth Circuit affirmed the district court's summary judgment
ruling that the replica was "applied art" and accordingly
not protected under VARA, which applies only to "works of
visual art." The panel majority held that "an object
constitutes a piece of 'applied art'. . . where the object
initially served a utilitarian function and . . . continues to
serve such a function after the artist made embellishments or
alterations to it." Where the galleon—which was built
around a functioning school bus—was used for transportation,
hosting of events, and other purposes during the annual Burning Man
Festival, the Ninth Circuit held that the replica was ineligible
for VARA protection under this standard.
Copyright Act's Fee-Shifting Provision Applies to
Litigation of Fee Petitions: Bell v. Lantz, No. 15-2341 (7th Cir.
June 17, 2016)
Rovner, J. In an appeal concerning the attorneys' fees
awarded to defendant after plaintiff voluntarily dismissed his
copyright infringement suit, the Seventh Circuit held that the
Copyright Act permits an award of legal fees to the prevailing
party for time spent defending the fee petition. The Seventh
Circuit concluded that the Act's fee-shifting provision, 17
U.S.C. § 505, displaces the traditional American Rule even in
the context of litigation over the entitlement to and amount of
attorneys' fees. The court also rejected plaintiff's
argument that defendant had run up fees by failing to timely notify
him that he had sued the wrong party because defendant's denial
of the infringement allegations in his answer was sufficient to put
plaintiff on notice. However, because the district court did not
address certain evidence pertaining to defense counsel's hourly
rate, the Seventh Circuit remanded the case for redetermination of
the fee award. Coming the day after the U.S. Supreme Court's
ruling in Kirtsaeng v. John
Wiley & Sons, Inc., the Seventh Circuit references the
ruling, but does not substantively apply the Supreme Court
standard.
Eleventh Circuit Upholds JMOL of Noninfringement for
Architectural Plans: Home Design Services, Inc. v. Turner
Heritage Homes Inc., No. 15-11912 (11th Cir. June 17,
2016)
Goldberg, J. In a suit alleging copyright infringement of
architectural floor plans, the Eleventh Circuit affirmed the
district court's grant of defendant's motion for judgment
as a matter of law following a jury verdict for plaintiffs. Citing
its precedent in Intervest Construction, Inc. v. Canterbury
Estate Homes, Inc. (11th Cir. 2008), together with
Zalewski v. Cicero Builder Dev., Inc. (2d Cir. 2014), the
court held that, if the similarities between the works at issue
concern only non-copyrightable elements, such as customary styles
or features that are motivated by efficiency- or expectation-driven
industry standards, there can be no copyright infringement as a
matter of law. Following its holding in Intervest, the
court also reaffirmed that because "separat[ing] protectable
expression from non-protectable expression is . . . a question of
law or, at the very least, a mixed question of law and fact,"
judges are often best-situated to perform the substantial
similarity analysis in such cases.
Trademark Opinions
Proof of Probable Confusion Not Required for Entire
Geographic Scope of Injunction: Guthrie Healthcare System v.
ContextMedia, Inc., No. 13-3343-cv(L) (2d Cir. June 13,
2016)
Leval, J. In a trademark dispute involving the logos of
plaintiff, a non-profit healthcare services provider, and
defendant, a provider of health-related digital content, the Second
Circuit affirmed the district court's ruling of infringement
and grant of a permanent injunction, but held that the district
court had misapplied the law in fashioning a narrowly limited
injunction that permitted defendant's use of the mark on the
Internet and limited defendant's use only in a prescribed
"Guthrie Service Area." The Second Circuit explained that
"[o]nce the senior user has proven entitlement to an
injunction, the scope of the injunction should be governed by a
variety of equitable factors—the principal concern ordinarily
being providing the injured senior user with reasonable protection
from the junior user's infringement." Here, the district
court had erroneously required plaintiff to prove a probability of
confusion in all geographic areas to be covered by the injunction.
Noting that plaintiff engaged in recruitment and fundraising
nationwide and that its future geographic expansion could be
impeded, the Second Circuit broadened the injunction to cover two
additional counties containing plaintiff's facilities and
remanded the case to the district court to determine whether an
injunction could be tailored to allow defendant some limited use of
its marks on the Internet and nationwide.
District Court Action Barred by Collateral Estoppel
Based on Prior TTAB Proceeding: Ashe v. PNC Financial Services
Group, Inc., No. 15-2566 (4th Cir. June 13, 2016)
(non-precedential)
Per Curiam. In an unpublished opinion, the Fourth Circuit
affirmed the district court's dismissal of plaintiff's
complaint for trademark infringement as barred by collateral
estoppel, based on the TTAB's finding in a prior opposition
that defendant had established priority of use for the mark in
question. The court declined to decide whether—as the
district court concluded—the issues of priority in an
opposition proceeding before the TTAB and in a federal infringement
case are necessarily always identical, or rather—as plaintiff
argued—that the Supreme Court's decision in B & B
Hardware, Inc. v. Hargis Industries, Inc. (2015) "stands
for the proposition that, when considering the issue of priority,
courts must determine whether the actual use of a mark is the same
as the use stated in a trademark application." However,
because plaintiff alleged no actual use of the mark beyond the uses
described in his application, the Fourth Circuit concluded that
"in this case, the issue of priority decided by the TTAB was
identical to the issue of priority presented to the district
court," such that collateral estoppel applied.
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