Articles Posted in Trademark and Copyright Litigation

A recent decision in the case of Huffman v. Activision, a case we previously covered here, has created a split among federal courts on the issue of who gets to decide the issue of disgorgement of profits in copyright infringement cases. The court in Huffman ruled that a jury is entitled to decide the issue. Other courts to recently consider the issue have come to the opposite conclusion finding that the court should decide the issue, not a jury. These differing answers to the same question may be teeing up the issue for the Supreme Court to settle the question once and for all.

As we have previously detailed, Huffman involves claims by retired professional Booker T that video game developer, Activision, infringed on his copyrights. Specifically, Huffman has alleged that Activision’s video game character, David “Prophet” Wilkes, in Call of Duty: Black Ops 4 infringed his own “G.I. Bro” character. Huffman requested that the issue of disgorgement of Activision’s profits be decided by a jury. Activision moved to strike Huffman’s jury demand.

In its motion, Activision argued that Section 504(b), the section of the Copyright Act dealing with disgorgement of an infringer’s profits, does not provide a statutory or constitutional right to a jury trial. Activision’s motion was filed on the heels of a decision on essentially the same issue in the case Navarro v. Procter & Gamble in which the court in that case found no right to a jury on the issue of disgorgement of an infringer’s profits under Section 504(b). Despite concerning the same issue, the district court disagreed with the reasoning and conclusion of the Navarro court and denied Activision’s motion.

The plaintiff in Navarro is Anette Navarro, a world-renowned photographer, from Cincinnati, Ohio. She filed a copyright infringement suit against Procter & Gamble (P&G) and Walmart alleging that the companies willfully infringed on her copyrights in certain photos that she provided to P&G for use pursuant to licensing arrangements between the parties. Navarro claims that P&G violated the terms of the license by using them on products and in geographic areas beyond those permitted in the license agreements and also continued to use her photographs after the licenses expired.

She sought both actual damages and disgorgement of the defendants’ profits under Section 504(b) of the Copyright Act. P&G and Walmart sought to strike her jury demand with regard to disgorgement of profits, arguing that nowhere does Section 504(b) mention juries. They also argued that there was no constitutional right to a jury under the Seventh Amendment because it only provides a right to a jury for “legal” remedies, not “equitable” remedies which the companies argued disgorgement was. Continue reading ›

On April 5, 2021, the United States Supreme Court issued its much-anticipated decision in the long-running case of Google v. Oracle, a case that we have been following for nearly five years. In its long awaited decision, the Court held that Google’s copying of the “declaring code” from the application program interface (API) of Oracle’s Java SE platform when creating Google’s Android operating system constituted fair use under copyright law. By deciding the case on these grounds, the Court managed to sidestep the issue of whether the software code at issue was copyrightable in the first place. Instead, the Court simply assumed that it was, virtually guaranteeing that it will be forced to address the issue in a future case.

Background

The saga that culminated in the Court’s decision dates all the way back to 2005 when Google acquired Android and began creating its now-famous Android software platform for mobile devices. Google’s goal was to create an open platform that would allow software developers to build mobile applications to run on it. The Java programming language, originally invented by Sun Microsystems which was later acquired by Oracle, was an obvious candidate for use in the Android platform as it was a popular programming language among software developers.

Shortly after Google’s acquisition of Android, Google began talks with Sun to explore the potential for licensing the entire Java platform. However, negotiations broke down after it became apparent that Sun’s requirement of interoperability was not compatible with Google’s vision for the Android platform. This left Google to build the Android platform on its own.

Creating the Android platform required roughly 100 Google engineers working for more than three years and required writing millions of lines of new code. Google did not write the entire platform from scratch, however. Instead, it copied roughly 11,500 lines of code from the Java SE program, consisting of 37 Java API packages. APIs are used by software programmers to simplify the creation of complex computer programs by allowing two programs to communicate with each other. Java’s API provides access to a collection of prewritten software programs that carry out a large number of specific tasks.

When Oracle Corporation acquired Sun in 2010, Google’s Android platform had been completed for several years and was already a notable success. Oracle promptly filed suit against Google alleging infringements of Oracle’s patents and copyrights. The first trial ended in a victory for Google when the district court ruled that the API packages were not copyrightable as a matter of law. That decision was overturned on appeal and remanded further proceedings on Google’s copyright infringement defense of fair use. Following a second trial, a jury found that Google’s copying constituted fair use, but this verdict was overturned on appeal when the Federal Circuit found that Google’s use of the declaring code was not a fair use as a matter of law. The Supreme Court then agreed to consider both the copyrightability and fair use questions. Continue reading ›

“March Madness” is a popular term used to refer to the basketball tournament run by the National College Athletic Association (N.C.A.A.) every year in March, but it’s not an accident that everyone thinks of college basketball when they think of March Madness. It’s the result of the N.C.A.A. having trademarked the name, along with strategic branding, and they are very proactive about protecting that brand, even if it means suing a urology practice over the phrase “Vasectomy Mayhem”.

The urology practice, Virginia Urology, registered the term “Vasectomy Mayhem” with the U.S. Patent and Trademark Office and proceeded to launch an ad campaign linking their practice to the March Madness basketball tournaments. Their ads featured a doctor, in scrubs and with a basketball, claiming if men wanted an excuse to stay home and watch basketball all weekend, they could do so while recovering from their vasectomy.

The N.C.A.A. sued the urology practice, claiming the term “Vasectomy Mayhem” was too similar to “March Madness”, and as a result, might cause confusion and dilute the value of their brand. According to the complaint, the N.C.A.A. believes its brand has already suffered damage from the registration of the term, and will continue to suffer damage if the urology practice is allowed to maintain the registration and continue using the term “Vasectomy Mayhem” in their advertising. Continue reading ›

Recently a federal judge in the Eastern District of Texas ruled that copyright infringement claims filed by retired professional wrestler Booker T. Huffman (known as Booker T) against Activision, the developer of the Call of Duty video games, should proceed to trial. The infringement claims revolve around alleged similarities between promotional artwork for the Call of Duty 4 video game and a poster depicting Huffman’s in-ring persona G.I. Bro.

In 2015, Huffman commissioned a poster from the artist, Erwin Arroza, to promote his comic, G.I. Bro and the Dragon of Death. The comic stars a “special operations hero called G.I. Bro,” which bears a striking resemblance to Huffman in his G.I. Bro persona. Following creation of the poster, Huffman distributed copies of the poster at comic conventions and other events.

In 2018, Activision commissioned Petrol Advertising, Inc. to create a series of marketing images of the characters in its Black Ops 4 video game. Black Ops 4, which was released in 2018, was a prequel to the third Black Ops game, and featured many of the same characters as the prior version including the character David “Prophet” Wilkes. The ad agency hired live models and conducted several photoshoots with them in order to create the allegedly infringing marketing images. The ad agency then created a “composite” by adding graphical elements to create the artwork. Activision used this resulting artwork in various promotional posters, billboards, and special edition packaging, some of which included the allegedly infringing “Prophet Image” that is the focus of the lawsuit. Continue reading ›

Statutory fee-shifting is usually meant to incentivize plaintiffs to bring claims involving important rights but relatively low monetary damages. Some statutes provide for fee-shifting not only to successful plaintiffs but also to successful defendants. As the recent decision in the case of Multimedia Sales & Marketing, Inc. v. Marzullo illustrates, plaintiffs considering bringing trade secret misappropriation claims in Illinois courts would be wise to review their claims before filing so to ensure that their claims are not meritless.

The plaintiff in the lawsuit, Multimedia Sales & Marketing, Inc., is a radio advertiser who sued a competitor, Radio Advertising, Inc., along with three former employees who left Multimedia to work for Radio Advertising. Multimedia alleged that the former employees misappropriated Multimedia’s potential customer lead lists or renewal lead lists, which these individuals allegedly used to attempt to woo away Multimedia’s existing and potential customers. Multimedia claimed the lists were protectable trade secrets under the Illinois Trade Secrets Act (ITSA), 765 ILCS 1065/1 et seq.

The trial court disagreed and granted the defendants summary judgment finding that the lists (1) did not qualify as a trade secret under ITSA, and (2) were not “secret” because Multimedia widely shared them with numerous parties including radio stations. Following the grant of summary judgment, the defendants filed a motion for attorney’s fees as permitted by Section 5 of the ITSA. The trial court granted the defendants’ motion and awarded them $71,688 in attorney’s fees. Multimedia then appealed the ruling that the lists did not qualify as trade secrets as well as the award of attorney’s fees. Continue reading ›

Everyone knows who Sherlock Holmes is. Even if you haven’t read one of Sir Arthur Conan Doyle’s short stories featuring the famous detective, you’ve no doubt seen, or at least heard of, one of the many adaptations of Holmes and his adventures into other works of fiction, from other books and short stories, to movies and TV shows. He is known as the cold, calculating detective who sees clues everywhere, but is either incapable of taking into consideration the feelings of the people around him, or just lacks the patience to do so.

That is the Sherlock Holmes of the public domain, but later stories written by Doyle show a softer side – someone who has become more considerate in general, and more respectful towards women in particular. That version of the detective is not yet in the public domain, which forms the basis of a copyright lawsuit against Netflix, Nancy Springer, and Random House, among others.

The copyright lawsuit focused on Enola Holmes, a series of young adult books written by Springer, published by Random House, and adapted into a film starring Millie Bobby Brown that was released on Netflix in 2020. Enola is Sherlock’s younger sister and proves equally capable of solving mysteries. Both the books and the film portray a Sherlock (played by Henry Cavill in the film) who starts out dismissive of his younger sister, but gradually grows warmer towards her as she grows on him, and it is those latter characteristics that prompted the estate of Sir Arthur Conan Doyle to file their copyright lawsuit. Continue reading ›

Copyright infringement lawsuits over tattoos have become increasingly popular since Mike Tyson’s tattoo artist famously sued Warner Brothers over its recreation of Tyson’s face tattoo on the face of actor Ed Helms in the Hangover II. The latest bout of suits involving copyrighted tattoos involves video game maker Take-Two Interactive Software.

Take-Two is responsible for a number of popular game franchises including Grand Theft Auto, NBA 2K, and WWE 2K. In addition to releasing some of the most popular video games titles of the year, Take-Two has found itself defending against two separate copyright infringement suits over the company’s use of tattoos in its NBA 2K and WWE 2K games.

A federal judge in New York earlier this year dismissed the lawsuit over Take-Two’s depiction of athletes’ tattoos in its NBA 2K video games. In dismissing the lawsuit, the judge found that Take-Two’s use of the tattoos did not infringe the plaintiff’s copyrights because Take-Two had an implied license to display the tattoos and also because Take-Two’s use constituted fair use and was de minimis in the context of the entire games.

The second lawsuit filed in an Illinois federal court concerned Take-Two’s depiction of tattoos in its WWE 2k games. After the case proceeded to discovery, the parties filed cross-motions for summary judgment. The plaintiff’s motion sought partial summary judgment on the issue of actionable copying based on Take-Two’s admission “to copying Alexander’s tattoos in their entirety in order to depict Orton in WWE 2K as he appears in real life.” Take-Two’s motion asserted the same affirmative defenses of implied license, fair use, and de minimis copying. Despite the similarity of the cases and Take-Two’s defenses, the federal judge overseeing the Illinois case did not warm to Take-Two’s arguments. Continue reading ›

Every time you hear a famous song playing in a commercial, it’s because the producers paid for the right to use that song in their commercial … or at least they were supposed to. According to a recent copyright lawsuit the Doobie Brothers filed against Bill Murray, the famous actor allegedly failed to obtain permission from the band before using one of their hits in a commercial for his clothing line.

Murray, along with his brothers, released a line of golf clothing under the name William Murray. One of his recent commercials promoting the clothing line featured the song, “Listen to the Music”, a hit created by the Doobie Brothers that reached #11 on the Billboard chart in 1972.

The commercial featuring the song was specifically promoting a polo shirt called Zero Hucks Given, which is named after the fictional character, Huckleberry Finn. The clothing line is meant to bring back the loud golfing clothes that were popular in the 1970s, which could be why Murray chose to use a song from the early ‘70s to evoke that time period in his advertisements.

Peter T. Paterno, the attorney representing the Doobie Brothers, sent a letter to Murray notifying him of the lawsuit. Paterno also represents other musicians whose music Murray has allegedly stolen for use in commercials promoting his line of golf wear, although the Doobie Brothers are the only plaintiffs named in this copyright lawsuit. Continue reading ›

Musicians have been trying for years to control whether and which politicians may play their music at events. Many see their efforts as a natural reaction to a legitimate concern with having their art associated with someone whose views may not align with their own. As seen in a recently filed lawsuit by Neil Young against President Trump’s reelection campaign, musicians are trying out new strategies.

There is no love lost between Young and President Trump. The President has been using Young’s songs at rallies and events ever since he announced his campaign in 2015. This never sat well with Young who expressed his displeasure numerous times online and in interviews. Young’s posts were laced with frustration as he conceded that “legally he has the right to” but added, “however it goes against my wishes.” On election day in 2018, Neil Young posted a frustrated statement about President Trump and his continued use of Young’s music at events.

Young’s gripe with Trump’s use of his music is no recent phenomenon. Musicians and songwriters have balked when politicians play their songs at public events for decades. A famous example is Bruce Springsteen’s objection to Ronald Reagan’s campaign’s use of “Born in the U.S.A.” at campaign events in 1984. Numerous other artists have objected to political co-opting of their music over the intervening years.

Young’s recently filed lawsuit takes issue with President Trump’s use of “Rockin’ in the Free World” and another song, “Devil’s Sidewalk,” at the President’s rally in Tulsa, Oklahoma in June. In his suit, the musician accused the President’s campaign of copyright infringement for playing the songs without a license. The lawsuit seeks to enjoin the campaign from using the songs as well as an award of statutory damages. In his complaint, Young contends that he “in good conscience cannot allow his music to be used as a ‘theme song’ for a divisive, un-American campaign of ignorance and hate.” Continue reading ›

When one party sues another over a business dispute, not only does the defendant deny the allegations, but it’s also common for the defendant to countersue, meaning they bring their own allegations against the individual or entity suing them. After Turner “Tfue” Tenney, a professional esports player, sued FaZe Clan, a professional esports organization, FaZe Clan turned around and sued Tenny for allegedly breaching his contract with them and denying them a portion of the income he earned from streaming.

The legal dispute started in May of 2019 when Tenney sued FaZe for allegedly operating as an unlicensed agency, blocking Tenney from various business opportunities, and taking up to 80% of the income Tenney earned.

Tenney claimed that, by allegedly operating as an unlicensed agency, FaZe had violated the California Talent Agency Act (TTA), which prohibits unlicensed agents from managing talent in the state of California. Tenney used this as his basis for asking the court to rule that his contract with FaZe was invalid because it went against California law, but FaZe argued that it hadn’t managed Tenney in the state of California, and so their contract was not subject to California law.

Tenney also alleged FaZe had breached the Gamer Agreement between Tenney and the company by failing to pay an agreed-upon fee of $2,000 per month. FaZe did pay the fee eventually, but Tenney alleged the payments were so late as to render the contract invalid. Continue reading ›

Contact Information