Tag Archives: copyright infringement

Merger Grows Pittsburgh Business and Litigation Law Firm Houston Harbaugh, P.C.: Expands Litigation Practice

Posted on February 16, 2018 by Henry Sneath | 1 comment

Pittsburgh based law firm Houston Harbaugh, P.C. has announced its merger with the former and preeminent litigation boutique Picadio Sneath Miller & Norton, P.C. (PSMN®) effective January 1, 2018. The merger creates a 43 lawyer firm with particular strengths in Business Law and Business Litigation, Employment, Employee Benefits/ERISA, Environmental and Energy Law, Estates and Trusts, Health Care, Insurance Coverage and Bad Faith Defense, Immigration, Intellectual Property, Oil and Gas, Products Liability and Catastrophic Injury Defense, Public Finance and Real Estate. This blog will feature posts on the law and litigation of Patent, Trademark, Copyright, Trade Secrets, Defend Trade Secrets Act (DTSA), Cyber-Security, Technology matters and updates on the tremendous growth of the technology sector in Pittsburgh. Houston Harbaugh is proud to be among the regional law firms which are poised to provide high level, efficient, cost effective legal services for the new Eds, Meds, Energy and Technology economy in Pittsburgh, Ohio and West Virginia.

For more information on the merged firm please contact Marketing Director Anna Marks at 412-281-5060. See News Release regarding the merger here at: https://www.hh-law.com/houston-harbaugh-grows-litigation-practice/

SCOTUS Gives Guidance Regarding Attorney Fee Awards in Copyright Cases

Posted on June 24, 2016 by kellywilliams94 | Comments Off

by: Kelly A. Williams, a Senior Attorney at Houston Harbaugh, P.C.

On 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.

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Posted in Copyrights, United States Supreme Court

Tagged Attorney fees, copyright, copyright infringement, copyright litigation, intellectual property litigation, pittsburgh copyright attorney, pittsburgh intellectual property litigation

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

Posted on May 19, 2016 by PSMN® | Comments Off

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

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).

Background

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 films 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).

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.

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.

Conclusion

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.

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Posted in Copyrights

Tagged Axanar, copyright infringement, Fan film, language, pittsburgh intellectual property litigation, Star Trek

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

Posted on April 12, 2016 by kellywilliams94 | Comments Off

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

Rapper 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.

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Posted in Copyrights

Tagged copyright, copyright infringement, copyright litigation, pittsburgh intellectual property litigation

Monkeys Cannot Own Copyrights

Posted on February 1, 2016 by PSMN® | Comments Off

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

A 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.

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Posted in Copyrights

Tagged animal rights, copyright infringement, copyright litigation, pittsburgh intellectual property litigation

“Happy Birthday to You” Song Copyright Stricken

Posted on October 14, 2015 by kellywilliams94 | Comments Off

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.”

The 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).

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Posted in Copyrights

Tagged copyright infringement, copyright litigation, pittsburgh intellectual property litigation

2d Circuit Punts on Copyright Registration Question Again

Posted on August 5, 2015 by PSMN® | Comments Off

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

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.

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Posted in Copyrights

Tagged 411(a), Circuit split, copyright infringement, copyright litigation, copyright registration, pittsburgh intellectual property litigation

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

Posted on March 12, 2015 by PSMN® | 1 comment

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

On 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.