Category Archives: Copyrights

SCOTUS Gives Guidance Regarding Attorney Fee Awards in Copyright Cases

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

SupremeCourtImage_1On June 16, 2016, the U.S. Supreme Court issued an opinion on awarding attorneys’ fees in copyright cases for the first time in two decades and issued the first copyright case in two years. The case is Kirtsaeng v. John Wiley & Sons Inc., case number 15-375.  Section 505 of the Copyright Act provides that a district court “may  . . . award a reasonable attorney’s fee to the prevailing  party.”  The issue presented to the Supreme Court was whether a court, in exercising that authority, should give substantial weight to the objective reasonableness of the losing party’s position.  The court held that it should but that courts must also give due consideration to all other circumstances relevant to granting fees.  It further held that the district courts retain discretion, in light of those factors, to make an award of attorneys’ fees even when the losing party advanced a reasonable claim or defense.

Kirtsaeng, who was from Thailand, came to the U.S. to go to Cornell University.  While there, he discovered John Wiley & Sons, an academic publishing company, sold virtually identical, English language textbooks in the U.S. and Thailand, but sold them at a much cheaper price in Thailand.  He had family and friends in Thailand buy the books, ship them to him in the U.S. and sold them at a profit.

Wiley sued Kirtsaeng for copyright infringement, claiming Kirtsaeng’s sale of the books violated its exclusive right to distribute its textbooks.  Kirtsaeng invoked the “first sale doctrine” as a defense, which enables the lawful owner of a book (or other work) to resell or otherwise dispose of it as he or she wishes.  Wiley countered that the first sale doctrine did not apply to books manufactured abroad.  The circuit courts were split on the issue, and the issue went up to the Supreme Court.  The Supreme Court agreed with Kirtsaeng and held that the first sale doctrine does allow the resale of foreign made books.

Kirtsaeng went back to the district court and sought $2 million in attorneys’ fees as the prevailing party pursuant to section 505.  The District Court denied the motion, relying on Second Circuit precedent that gave “substantial weight” to the “objective reasonableness” of Wiley’s infringement claim.  The rational for that approach was that the imposition of a fee award against a copyright holder with an objectively reasonable—although unsuccessful—litigation position will generally not promote the purposes of the Copyright Act.  The District Court and the Second Circuit, on appeal, agreed that Wiley’s position was reasonable.  They also found that the other factors to be considered did not outweigh the reasonableness finding.   These non-exclusive factors were set forth in Fogerty v. Fantasy Inc., 510 U.S. 517 (1994).  In that case, the Supreme Court identified the non-exclusive factors as the frivolousness of the case, the loser’s motivation, the objective unreasonableness of their case, and considerations of compensation and deterrence, all of which are to be applied in a manner that’s faithful to the purposes of the Copyright Act.

In Kirstaeng, the Supreme Court explained that objective reasonableness can be only an important factor in assessing fee applications—not the controlling one.  District courts must take into account a range of considerations beyond the reasonableness of litigating positions.  Thus, a court may award fees even though the losing party offered reasonable arguments.  The Supreme Court cited as an example the situation where a court orders fee-shifting because of a party’s litigation misconduct, or the court decides to deter repeated instances of copyright infringement (i.e. copyright infringement “trolls”).  “Although objective reasonableness carries significant weight, courts must view all the circumstances of a case on their own terms, in light of the Copyright Act’s essential goals” (for instance—enriching the general public through access to creative works).

The Supreme Court concluded that the Kirstaeng matter should be remanded to the District Court because it appeared that the court had put too much emphasis on the “reasonableness” question.  Thus, the Supreme Court ordered the remand to ensure that the District Court evaluates the motion consistent with the analysis that it set forth—giving substantial weight to the reasonableness of Wiley’s litigating position, but also taking into account all other relevant factors.

Judge Determines That Star Trek Copyright Suit Against Fan Film Anaxar Can Proceed

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Last week, Judge Klausner from the US District Court for the Central District of California denied a fan film producer’s motion to dismiss a copyright infringement lawsuit brought by Paramount Pictures and CBS Studio, which own the copyrights in the Star Trek franchise. The case present some interesting issues regarding the interplay between copyright holders and fans that attempt to create works inspired by or based off of more famous works. The case is pending in Los Angeles and is captioned Paramount Pictures Corp. v. Axanar Productions, Inc. (No. 2:15-cv-09938-RGK-E).


Star Trek is one of the most successful science fiction creations of the last fifty years. Created by Gene Roddenberry and first aired on television in 1966, Star Trek chronicles the adventures of humans and aliens in the future as they venture through space. The original television series has spawned numerous feature Enterprisefilms and television series, in addition to creating a huge and devoted fan base. The fan base is noted, in particular, for recreating and reenacting characters and scenes from the franchise, as well as creating new works based on the characters and events portrayed in the television series and movies. This lawsuit arose out of one such effort by a group of fans to create a movie based on a scene from the original television series when Captain Kirk meets one of his heroes, Garth of Izar, and discusses Garth’s victory against the Klingons in the battle of Axanar. Defendants created a script, received funding through various sources, and released a short film based on the Battle of Axanar that is a preview of their anticipated longer film. Plaintiffs filed suit claiming that Defendants’ efforts violated numerous copyrights that they own in the Star Trek franchise.

Plaintiffs’ Amended Complaint

In plaintiffs’ amended complaint, they set forth numerous examples of what they contend are infringing features or elements of defendants’ work, which include such things as various characters, alien races, costumes, settings, starships, logos, plot points, dialogue, and themes, some of which are shown below (Anaxar on the left, and plaintiffs’ on the right).

Uniform Comparison

Klingon Comparison

Starship Comparison

Defendants’ Motion to Dismiss

Defendants moved to dismiss the lawsuit on various grounds–that plaintiffs had failed to provide sufficient notice of what actions constituted infringement, that Paramount lacked standing to sue, that the allegations were not sufficient under the Twombly standard, that the various elements identified by plaintiffs were not protectable, that the claims were premature because the film had not been released, and that plaintiffs’ efforts amount to impermissible prior restraint.

Klingon Ship Comparison

The Court rejected all of these arguments at this procedural stage, noting (with a nod to the Star Trek franchise) that “[a]lthough the Court declines to address whether Plaintiffs’ Claims will prosper at this time, the Court does find Plaintiffs’ claims will live long enough to survive Defendants’ Motion to Dismiss.”

Klingon Amicus Brief

One of the more interesting aspects to this case was an amicus brief filed by the Language Creation Society. In its amended complaint, plaintiffs asserted that the Klingon language itself was protected by copyright. The Language Creation Society argued that the copyright laws do not protect a language itself. The Judge did not address this point in the opinion on the motion to dismiss, but this issue is an interesting one presented in a novel form. The amicus brief is a particularly good read, as it is interspersed with quotes and phrases in the Klingon language.Klingon Quote


The case is far from over, but it is an interesting window into the difficulties (both legal and otherwise) that a successful copyright owner faces in trying to creatively and economically control its works.


Copyright Infringement Suit Over Hit Song Fails Due to Lack of Valid Copyright Registration

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

Copyright SignRapper Rick Ross and his producers sued LMFAO members Skyler and Stefan Gordy in December 2013, claiming that “Party Rock Anthem,” which topped the Billboard charts for six weeks and sold more than 7.5 million copies in the U.S., infringed Rick Ross’s 2006 hit “Hustlin’.”  The court held that Rick Ross and his producers didn’t have the copyright registration necessary to sue for infringement.  The court determined that Ross and his producers never presented evidence showing they were the owners of “Hustlin’,” and the three different registrations for the song at the U.S. Copyright Office were all inaccurate.

Interestingly, the members of LMFAO didn’t dispute that they had Ross’ “every day I’m hustlin” lyrics in mind when they drafted their “every day I’m shuffling” lyric.  However, they raised several defenses including lack of standing and fair use.  They won on lack of standing.  If they had not, the court had previously ruled that it would leave the fair use issue for trial.  That issue was whether LMFAO transformed Ross’ lyric into something new.

Also of note was the Register of Copyrights’ finding that the misrepresentations on three registrations for Ross’s Hustlin’ song were strong enough that the Register would cancel all three.  The court also commented on this, finding that the misrepresentations were dramatic and unexplained especially because two of them were filed by major, global music corporations.  The court’s ruling did not cancel the registrations.  However, it did bar Ross from bringing the infringement action because it turned on whether there was a valid registration, and Ross and his producers didn’t have one.

The case is found at Roberts v. Gordy, case no. 1:13-cv-2470 in the U.S. Dist. Court for the S.D. Florida.

Monkeys Cannot Own Copyrights

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

l1aYeA little over a year ago, we discussed an interesting case where the owner of a camera that took a picture of a monkey could not register a copyright in the picture because the monkey was the one took a picture of itself. Well, that case reemerged last year when attorneys for PETA who “represent” the monkey filed a lawsuit in California arguing that the photographer violated the monkey’s copyright when he published pictures that the monkey took. (Naruto v. Slater, 3:15-cv-04324-WHO, C.D. Cal.) Last week, the Court granted the photographer’s motion to dismiss, holding that a monkey is not entitled to register a copyright with the Copyright Office or bring suit for copyright infrinement.

The monkey brought suit under Sections 106 and 501 of the Copyright Act (17 U.S.C. §§ 106 and 501), alleging that the publication of the photographs it took violated its copyrights in these photographs. The Court initially noted that there is no per se bar to an animal being a proper plaintiff in some limited circumstances, so it chose not to focus on that aspect of the case. Instead, the Court looked to the language of the Copyright Act, its legislative history, court opinions interpreting the Act, and the regulations of the Copyright Office. Taking all of these together, the Court found no indicating that Congress ever intended for animals to be able to hold copyrights or bring suit under the Act. In particular, the Court noted the Copyright Office has considered this very situation–whether a monkey can hold a copyright–and concluded that it cannot. See Compendium of U.S. Copyright Office Practices § 313.2 (December 2014).

So, for now at least, photographs taken by monkeys (and other animals) cannot be copyrighted by the animal.

“Happy Birthday to You” Song Copyright Stricken

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

Good Morning to You Productions Corp. v. Warner Chappell Music, Case. No. 2:13-cv-04460, C.D. Cal. is about whether Warner/Chappell was properly asserting that it owned a copyright in the song “Happy Birthday to You.”

Birthday CakeThe case is a class action suit led by film production companies and a California musician who were working on a documentary about the song, “Happy Birthday to You.”  Warner/Chappell claimed to have a copyright on the song and demanded that Plaintiffs pay a $1,500 licensing fee to use the song.  The court goes through a large amount of historical evidence presented by both sides on cross motions for summary judgment.  After reviewing the evidence, the court found that Warner/Chappell did not own a valid copyright in the “Happy Birthday” lyrics and that the music for the song had entered the public domain years ago.  The origin of Warner/Chappell’s claim that it owned the copyright went back to a previous company which had acquired a song from two sisters that had the same music but different words, titled “Good Morning to All.”  The court could not find any reference to the “Happy Birthday” words in the agreement between the sisters and the purchasing company, Summy Co. (Defendants were successors-in-interest to Summy Co.).  Thus, the court ruled in favor of Plaintiffs.  Plaintiffs are seeking to have Warner/Chappell return the millions of dollars they collected over the years.  Also, we are all now free to sing “Happy Birthday to You” without fear of having to pay $1,500 (unless the case gets reversed on any appeal).

2d Circuit Punts on Copyright Registration Question Again

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Think!An interesting copyright question continues to percolate in the Circuit Courts over what “registration” means as a prerequisite for filing a copyright claim in federal court. The Second Circuit, in The A Star Group, Inc. v. Manitoba Hydro, (No. 14-2738) noted the Circuit split on the issue but declined again to weigh in.

Under 17 U.S.C. § 411(a), a copyright holder must register its work before it can initiate a lawsuit against an infringer:

no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

The question is what is sufficient to satisfy the “registration” requirement–is the filing of the application sufficient, or does the application need to be accepted and granted by the Copyright Office?

Currently, the Circuit Courts on split on the issue. The Fifth and Ninth Circuits require only that the copyright holder file the application. See, e.g., Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Cosmetic Ideas Inc. v. IAC/InteractiveCorp,  606 F. 3d 612, (9th Cir. 2010). While the Tenth and Eleventh Circuits require that the Copyright Office grant the application. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990) ;  La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-05 (10th Cir. 2005). The Seventh Circuit appears to have taken conflicting views on this matter. Compare Chicago Bd. of Educ. v. Substance Inc., 354 F.3d 624, 631 (7th Cir. 2003) with Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004).

The Second Circuit chose not to wade into this issue and was able to decide the case without having to choose a side. At some point, however, the U.S. Supreme Court will likely need to resolve this dispute as the Circuit split continues. As it stands now, a copyright holder can face very different results depending on where the case is filed, which is not a helpful situation when a national right, such as a copyright, is involved.

USPTO and US Copyright Office Offer New Tools for Practitioners

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

ComputerThe US Patent and Trademark Office and the US Copyright Office recently announced that some new tools are available to practitioners and interested individuals and companies to help individuals be better aware of recent patent applications and to help explain the fair use doctrine.

The USPTO, in partnership with Reed Technology and Information Services, created an alert system (the Patent Application Alert Service) that allows individuals to receive email alerts whenever a patent application publishes that contains certain keywords. After signing up for the service, a user can set “alerts” based on keywords found in the title, abstract, description, drawings, claims, CPC classification, applicant, inventor, or assignee fields (or combination of these fields). The system then sends out weekly emails whenever an alert criteria has been satisfied.

This system will enable individuals and companies to be better aware of what their competitors are attempting to patent, as well as to keep abreast of changes in the field. The USPTO also hopes that this service will lead to better patents being issued because interested individuals in the relevant fields can monitor patent applications and help identify prior art for pre-issuance submission to the USPTO.

The US Copyright Office has also been busy, creating a Fair Use Index, which is a searchable database of court opinions indexed by category and type of use. The Index currently has decisions reaching back to 1841 and provides a link to the opinion, the relevant court information, the type of medium (photograph, text, etc.), and the outcome. The US Copyright Office created the Index to help the public understand the contours of the fair use doctrine as applied to copyright law. While useful for the public, the Index will also be a useful resource for practitioners.

Jury Returns $7.4 Million Verdict for Marvin Gaye’s Family in “Blurred Lines” Copyright Infringement Suit

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Law and MoneyOn Tuesday, a jury in Los Angeles reached a verdict in favor of Marvin Gaye, Jr.’s family against Pharrell Williams and Robin Thicke, finding that Williams and Thicke’s song “Blurred Lines” infringed Marvin Gaye’s copyright in his song “Got to Give It Up.” The jury awarded approximately $7.4 million in damages.


In 1976, Marvin Gaye, Jr. composed the song “Got to Give It Up,” which went on to become a musical hit and reached number one on Billboard’s Hot 100 chart in the United States. Marvin Gaye registered the musical composition “Got to Give It Up (Part 1 and 2)” with the United States Copyright Office in 1977 (Reg. No. EP 366-530), and the registration was subsequently renewed in 2005 (RE 910-939). Marvin Gaye was a Grammy winning performing and is a member of the Rock-and-Roll Hall of Fame. He passed away in 1984.

In 2013, artists Pharrell Williams, Robin Thicke, and Clifford Harris, Jr. composed the hit song “Blurred Lines,” which also went on to become a huge success, selling over six million copies and being viewed over 250 million times on the internet. In various interviews, Robin Thicke indicated that he had been influenced by Marvin Gaye’s work and wanted to make something like that. He further indicated that “Got to Give It Up” was one of his favorite songs of all time.

Shortly after the song was released in March 2013, the Marvin Gaye’s family began to assert that “Blurred Lines” infringed the copyright on “Got to Give It Up” and threatened to bring a lawsuit against Williams and Thicke. In response, Williams and Thicke filed a pre-emptory lawsuit in Los Angeles on August 15, 2013, seeking a declaratory judgment that they did not infringe any of Marvin Gaye’s copyrights (Williams v. Bridgeport Music, Inc.No. 2:13-cv-06004, US. District Court for the Central District of California). Gaye’s family filed a counterclaim for infringement in response.

After discovery, the Williams and Thicke filed a motion for summary judgment, arguing that the case need not go before a jury. (The parties’ summary judgment arguments can be found here–Williams/Thicke and Gaye.) The Judge denied their motion (his opinion is here), and the case proceeded before a jury. After nine days of testimony and presentations, the jury returned its verdict, finding that Pharrell Williams and Robin Thicke infringed the copyright on “Got to Give It Up” and awared approximately $7.4 million in damages to Marvin Gaye’s family. The jury concluded, however, that the infringement was not willful.

Williams and Thicke have subsequently filed a notice of appeal with the United States Court of Appeals for the Ninth Circuit.

Take Aways

Copyright infringement cases are never a sure things, especially when they go to a jury. Williams and Thicke chose to file suit seeking a declaratory judgment that they did not infringe, which was a risky maneuver. While there are no guarantees that Gaye’s family would not have filed a lawsuit anyway, the decision may have escalated the conflict. Individuals who have been accused of infringement need to consider carefully whether a declaratory judgment action is the prudent thing to do. In some cases it will be, because it gives the accused infringer an opportunity to control the forum in which the case is heard and when the lawsuit begins, among other things. It may be worthwhile in some cases to accelerate a decision, even if that means risking getting an unfavorable outcome. This is just one of the many decisions that litigants need to consider carefully before lawsuits are filed and threats are made. There is likely no one right answer that applies to all cases. Instead, litigants and their attorneys need to carefully think through the various risks and benefits before they proceed.

What Is a Copyright?

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

PSMN What Is...? SeriesIn the next installment of our continuing “What Is?” series, we are going to discuss copyrights. One of the core intellectual property rights that exists under U.S. law is a copyright. In a nutshell, it is a legal right that provides authors of certain types of original and expressive works that have been fixed in a tangible medium the right to prevent others from using the work without the author’s permission. Obviously, there is a lot more detail behind this, so we will only cover some of the basics in this post.

First, only certain types of works are eligible for copyright protection. They include (1) literary works, (2) musical works, (3) dramatic works, (4) choreographic works, (5) pictorial, graphic, and sculptural works, (6) motion pictures and other audiovisual works, (7) sound recordings, and (8) architectural works. In addition, the work must have been fixed in a tangible medium to be eligible for a copyright—e.g., written down, put on film, or written in a computer. Certain things cannot be copyrighted, such as (1) things that have not been fixed in a tangible form (e.g., thoughts in your head or speeches that are not recorded or written down), (2) titles, names, and short phrases, (3) ideas, methods, inventions, or systems, and (4) standardized and commonly known information, such as standard calendars, tape measures, and lists or tables of publicly known information.

Second, in order to be eligible for a copyright, the work must be original. But, it does not have to be novel. In other words, the author must show that he or she created the work (and did not copy it from someone else), but the author does not have to show that he or she was the first to ever think of the work.

If an author can satisfy these requirements, he or she has a copyright. Under the change in federal law in 1976, a copyright exists under federal law the moment an author fixes an original expressive work in a tangible medium. There is no longer the need to affix a copyright symbol to the work or register the work with the U.S. Copyright Office. But, and this is a big but, there are a number of important advantages to registering a work with the Copyright Office that can be lost if not done timely. So, it is best for an author to consult an intellectual property attorney if there is the possibility that the work may be valuable or need to be protected.

A copyright gives an author a number of substantive legal rights, such as the ability to control who (1) reproduces or distributes copies of the work, (2) creates derivative works based on the original, and (3) performs or displays the work publicly. An author can sue an individual or company that violates these rights and collect damages, statutory penalties, or obtain a court order preventing the infringer from violating these rights in the future. In some cases, copyright infringement can even be a crime.

Because a copyright is a property right, it can be sold, transferred, or licensed like other types of real and intellectual property.

As of January 1, 1978, a copyright lasts for the lifetime of the author plus 70 years. If the work was made for hire or was published anonymously/psuedonymously, the copyright lasts for the shorter of 95 years from publication or 120 years from creation.

For more information about copyright, you can read this nice summary by the United States Copyright Office.

In upcoming posts, we’ll talk about some other issues involving copyrights, such as the fair use defense, what kind of remedies are available to authors whose works have been improperly copied, and the work-for-hire doctrine, among other things.

Copyright and the Selfie

by Cara Disheroon, attorney at Picadio Sneath Miller & Norton, P.C. ()

l1aYeIn the ever transitioning world of copyright law, issues surrounding the selfie have recently taken center stage. The latest dispute involves a selfie taken by a monkey who, in 2011 in Indonesia, grabbed wildlife photographer David Slater’s camera to snap a wide-smiling image of itself. Wikipedia subsequently placed the image in Wikimedia Commons, the area of Wikipedia that holds open-source material. Slater then requested that the photo be removed as he was the copyright owner and Wiki refused. You can visit Mr. Slater’s webpage for additional examples of his work here.

Wikimedia stated to the Huffington Post in response to the controversy “We didn’t think the monkey owned the copyright – instead, our assessment was that there’s no one who owns the copyright. That means that the image falls into the public domain.”

It appears that the US Copyright Office agrees with Wiki’s analysis. Two weeks after the controversy broke, the agency issued a 1,222 page draft compendium analyzing federal copyright law in which it stated “The Office will not register works produced by nature, animals, or plants.” Within Chapter 300, which outlines the “Human Authorship Requirement,” the Office noted that copyright law protects “the fruits of intellectual labor” that are “founded in the creative powers of the mind.” A photograph taken by a monkey was specified in the list of examples NOT protected.

A similar ownership issue surrounding the selfie has also arisen in the context of the Ellen DeGeneres group selfie taken at this year’s Oscars and posted on Twitter. The photo, taken in the audience during the ceremony, quickly became the most tweeted photo of all time and DeGeneres later granted the Associated Press permission to share the photo for editorial purposes to subscribers of AP’s photo service. But legal scholars noted that DeGeneres may not be the actual owner of the copyright.   As Bradley Cooper technically pressed the button, he could arguably be the copyright owner given the courts view historically that pressing the shutter created ownership.

Should Cooper attempt to stake a claim, DeGeneres could have an argument based on Brod v. General Publishing Group, 2002 U.S. App. LEXIS 2544 (9th Cir. Feb. 15, 2002). In Brod, a photographer sued a book author for using his photographs without permission. The court found however, that the book author was a co-owner since his contributions to the process were “sufficiently original and expressive.” The copyrightable expressions in Brod included selection and arranging of subject matter, composition, camera angle and lighting.

As Bradley Cooper is unlikely to assert a copyright claim, the incident currently serves only as an interesting hypothetical. However, as technology advances, issues over authorship in the photography/video context will likely arise again as physical snapping of the shutter is no longer required to produce artistic works.