Articles Posted in Trademark and Copyright Litigation

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Two lawsuits brought by “The Fresh Prince of Bel-Air” actor Alfonso Ribeiro against Epic Games, the maker of Fortnite Battle Royale, and Take-Two Interactive Software, which makes NBA 2K, appear likely to end soon after Ribeiro suffered a setback when the U.S. Copyright Office denied copyright protection to the “Carlton” dance, a dance Ribeiro made popular on the show in the 1990s as seen here. In the lawsuits, Ribeiro alleges that characters in the videogames make illegal use of the “Carlton” dance which amounts to copyright infringement. A side-by-side comparison of the “Carlton” and the move as seen in Fortnite, as well as a discussion of the lawsuits, can be seen here.

Ribeiro has submitted three copyright applications involving the “Carlton” dance to the U.S. Copyright Office. So far, the Copyright Office has rejected two of the applications and is still considering the third. In the two applications that have been rejected to date, the Copyright Office ruled that the “Carlton” dance amounts to a simple dance move, which cannot be copyrighted, as opposed to a choreographed dance routine, which can be copyrighted.

Lawyers for the video game makers named in Ribeiro’s infringement lawsuits have filed motions to dismiss which are scheduled for hearing later in March. Although not bound by the rulings of the Copyright Office, the judges in the lawsuits would almost certainly have taken the rulings into account when deciding the motions to dismiss. Perhaps this fact played into Ribeiro’s decision to dismiss his lawsuit against Epic Games, a move which Ribeiro’s legal team announced in documents filed in the lawsuit on March 7, 2019. Ribeiro’s legal team also announced similar plans to dismiss the other lawsuit filed against Take-Two Interactive Software. Continue reading

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A manufacturer of systems that blend butane into gasoline prior to retail sale sued a competitor, accusing it of infringing on its patents. The competitor argued that the patents were invalid because the original inventors had sold their patented system to a third company more than a year before they filed for patents on the system, and because the plaintiff had allegedly engaged in inequitable conduct while prosecuting its patent claim. The Northern District of Illinois rejected the competitor’s arguments, finding that the sale of the system was made for experimental purposes and that the plaintiff’s conduct did not meet the high threshold required to invalidate the patents.

The plaintiff, Sunoco Partners, acquired its patents when it purchased the butane blending business of a company called Texon Terminals in 2010. The competitor, U.S. Venture, Inc. is in the business of mixing butane into gasoline prior to its distribution to retail outlets. In 2012, Venture retained Technics, Inc. to install a butane blending system at three of Venture’s fuel terminals located in Green Bay, Madison, and Milwaukee, Wisconsin. Sunoco later filed suit against U.S. Venture and Technics in federal court, accusing the companies of infringing on its patents when they installed the butane-blending systems at U.S. Venture’s fuel terminals. Continue reading

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Innocent infringement is one of the most oft-asserted yet most misunderstood defenses in copyright infringement litigation. Many defendants reflexively assert the defense without fully understanding what it means and what is required to successfully establish it. Understanding what the innocent infringer defense is and what it is not are essential for defendants to know how and when to assert the defense or for plaintiffs to know how to overcome the defense.

Statutory Basis for the Defense

The innocent infringer defense comes from Section 504(c)(2) of the Copyright Act. The section provides in pertinent part that “in a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.”

Innocent Infringer is not Synonymous with Unintentional Infringer

Most defendants who allege the defense confuse innocent infringement with unintentional infringement, believing that if they did not infringe the plaintiff’s copyright intentionally they must be an innocent infringer. Intent, however, is not relevant to copyright infringement liability as copyright infringement is a strict liability tort (the caveat being liability for contributory infringement which does require intent). Copyright infringement has not always been strict liability though. In fact, the United States’ first copyright statute only provided liability for “knowing infringement.” The Copyright Act of 1909, however, removed the knowing requirement for liability and the Copyright Act of 1976, the current copyright statute, maintained that omission.

While unintentional infringement is a requirement to assert the defense, it is not the only requirement. Section 504 provides that the defendant not only “was not aware” that its use of the work infringed the plaintiff’s copyright but also that it “had no reason to believe” that its acts constituted infringement. Courts have found that even unintentional infringers had reason to believe they were infringing where (1) the work contained a copyright notice, (2) the circumstances surrounding the defendant’s acquisition of the work were suspicious (e.g. internet downloading), and (3) where the nature of the work indicated that it likely was copyrighted. Additionally, courts have held that the defense is available only to “unsophisticated” parties and precluded sophisticated parties such as large companies from asserting the defense. Continue reading

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If you’re going to claim that the use of certain content counts as fair use, you should probably know what “fair use” means.

The fair use doctrine allows people limited use of copyrighted content without the need to get permission from the copyright holder first, but the law is specific about how and under what circumstances someone can claim fair use of a particular piece of content.

First, they can only use part of the content. Just reproducing the entire piece and distributing it on your own is not fair use.

Second, fair use is generally used to make a point about the content being used, such as in a parody or a review.

Third, whether the work in question is of a creative or factual nature.

Fourth, whether the person using the content for fair use intends to profit off the material in any way.

According to Judge Thomas M. Durkin, Jasmine Enterprises Inc. did not meet any of those requirements when claiming that their use of the three copyrighted photos they stole from FameFlynet constituted fair use. Continue reading

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Not all companies are sure how to apply their business practices to the Digital Age. Since most people running some of the larger, more established companies came of age in a pre-internet era, many of them are understandably stumped by what laws and rules apply to which online situations (although admittedly a lot of younger viewers aren’t sure about the rules of social media either).

The situation has improved over the years as everyone has adjusted to the new technologies, but the early part of the new century was an especially trying time for companies and individuals alike.

Take Stephanie Lenz for example. She took a video of her infant son dancing to the song, “Let’s Go Crazy,” by Prince, and then uploaded it to the internet where anyone could see it – without asking permission or paying for the use of a song to which she did not own the rights. That seemingly harmless act resulted in a copyright lawsuit that dragged on for more than ten years.

Universal Musical Publishing Group (UMPG), which owns the rights to the recordings of Prince’s songs, issued an order under the Digital Millennium Copyright Act for Lenz to take down the video.

Lenz initially complied with the order, but then she contacted the Electronic Frontier Foundation, an international non-profit group that works to protect people’s rights online. The company is based in San Francisco and argued that UMPG had ignored the fair-use exception to the copyright law when it ordered Lenz to take down the video. Continue reading

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One of the biggest advantages to settling a lawsuit outside of court is that it removes the uncertainty of going to trial. The plaintiffs are sure to get some financial benefit, rather than risking it all at trial, and the defendants often pay a lower amount than they would have had to pay if they had left it up to a jury. Both parties get to avoid the time, expense, and hassle involved in pursuing a legal dispute that has the potential to drag on in the courts for months or even years. This is why most class action lawsuits settle before ever reaching court.

But if the parties reach a settlement agreement and one or more of the plaintiffs don’t agree with the terms of the agreement, they can choose to opt out of the class. Plaintiffs who decide not to opt out, and take the settlement, are usually prevented from filing similar lawsuits against the defendant in the future as part of the settlement agreement. It’s for this reason that, when someone decides to opt out of a class, it’s often because they want to reserve their right to sue the defendant. In most cases, they think they can get better terms, either by pursuing a lawsuit all the way through a trial or pushing for a more favorable settlement agreement.

This is the case with the recent class action copyright lawsuit against Spotify. The music streaming company recently reached a settlement agreement worth $112.55 million with a class of more than 535,000 plaintiffs. After the class members were notified of the settlement and its terms, about 1,200 members opted out of the class. Continue reading

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A recent copyright ruling involving embedded Tweets of quarterback Tom Brady has created alarm among the digital media, where photos are embedded and linked to on a routine basis. In a copyright infringement case that could have a far-reaching impact on anyone who uses images on a blog or website, the Southern District of New York considered how photos are shown on one site but stored on another site’s server implicate the image owner’s exclusive display right under the federal Copyright Act.

District Court Judge Katherine Forrest held that when news organization defendants embedded Tweets on their web pages, they violated the plaintiff’s display right, and “the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”

Plaintiff Justin G. took a photo of New England Patriots quarterback Brady with the Boston Celtics manager in East Hampton, N.Y., in 2016. He uploaded it to his Snapchat page, where it went viral with the help of Twitter. Several news outlets including defendants Breitbart, Time Inc., and the Boston Globe then embedded the Tweeted image in their articles. Justin sued under the Copyright Act, claiming he never licensed the rights to display his photo. The other named defendants include Yahoo!, Vox Media and Gannett.

“A review of the legislative history reveals that the drafters of the 1976 Amendments [to the Act] intended copyright protection to broadly encompass new, and not yet understood, technologies,” Judge Forrest wrote, addressing the law’s application to the new frontier of social media. Continue reading

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Sometimes truth really is stranger than fiction.

As if the idea of a monkey (a “crested macaque,” to be precise) taking a perfect selfie wasn’t strange enough, the lawsuit that followed is.

In 2011, David Slater, a British nature photographer, was taking pictures of the wildlife on the Tangkoko reserve in Indonesia when a monkey by the name of Naruto managed to get Slater’s camera away from him. Naruto took several pictures before Slater managed to get his camera back and one of those pictures turned out to be a perfect selfie – Naruto even smiled and looked right at the camera as he snapped a picture of himself.

Later on, Slater published a book that included some of the pictures Naruto had taken, which had been dubbed “monkey selfies.” That’s when the People for the Ethical Treatment of Animals (PETA) got involved.

PETA sued Slater on behalf of Naruto, trying to claim that, because Naruto had taken the picture, Naruto owned the copyright to that photo. By publishing those photos, Slater had allegedly violated Naruto’s copyright, according to PETA’s lawsuit.

A federal district judge in San Francisco dismissed PETA’s claims in early 2016, saying that, since Naruto was not a person, he could neither own a copyright. Continue reading

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Miley Cyrus has become the latest pop star to be hit with a multi-million-dollar lawsuit for one of her songs, which reached second place on the Billboard Hot 100 in 2013. The song is “We Can’t Stop,” which Michael May, a Jamaican songwriter, alleges bears a striking similarity to his own song, “We Run Things,” a 1988 reggae track that reached No. 1 in Jamaica.

The line in question appears in “We Can’t Stop” as “We run things/things don’t run we,” which May alleges is suspiciously similar to the line “We run things/things no run we,” which appeared in “We Run Things.”

In addition to Cyrus herself, her manager, Larry Rudolph, has also been named as a defendant in the lawsuit, as have writers and producers of the song, including Timothy Thomas, Theron Thomas, and Mike Williams. RCA Records and Sony Music are also defendants in the copyright infringement lawsuit.

To support May’s allegations, the complaint points to a 2015 article in which Theron Thomas talks about how Caribbean music has influenced his own work. It further alleges that Cyrus’s song would not have seen the same success without the stolen elements of Jamaican music, specifically the language of Jamaican Patois. Continue reading

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Having remained a beloved classic for more than fifty years, the status of Harper Lee’s famous novel, To Kill a Mockingbird was seriously upset when an earlier version of the novel, Go Set A Watchman was published a few years ago. Specifically, readers were floored by the depiction of Atticus Finch as a racist segregationist, rather than the morally upright character depicted in Lee’s first novel.

With our perception of Atticus thus changed, it only makes sense for a playwright to draw on that dichotomy when writing an adaptation of either of Lee’s novels. But Lee’s estate does not appear to agree.

A new Broadway production of “To Kill A Mockingbird” is in development, with Jeff Daniels set to play the seminal character of Atticus, and Oscar winner, Aaron Sorkin, writing the script.

It should come as a surprise to no one that Sorkin wants to update this historic character. An adaptation is rarely, if ever, a word-for-word translation, since things that work on the page don’t necessarily work on the stage or on the screen. By the same token, things that had an impact in 1960 aren’t necessarily going to be as effective in 2018. In fact, Sorkin said he deliberately wanted to avoid setting the play in the same political climate as the book, since he doesn’t think that would be as interesting to a modern audience.

But when Tonja B. Carter, the attorney in charge of running Lee’s estate, heard about Sorkin’s ideas for Atticus, she reportedly met with Scott Rudin, one of the show’s producers, to express her concerns regarding the change. The two were reportedly unable to resolve their different interpretations of the matter, and Lee’s estate sued the producers of the show shortly thereafter. Continue reading