The Second Circuit held that 25 works of appropriation art that incorporated original copyrighted photographs constituted fair use under the Copyright Act, 17 U.S.C. § 107. Cariou v. Prince, __ F.3d __, No. 11-1197-CV, 2013 WL 1760521 (2d Cir. Apr. 25, 2013). Continue Reading
Fendi Receives Revised Trademark Infringement Damages of Almost $30 Million
Posted in Counterfeiting, Remedies/Damages, TrademarkOn remand from the Second Circuit, the Southern District of New York revised an award to Fendi for defendant Ashley Reed Trading, Inc.’s (“Ashley”) willful infringement of Fendi’s trademarks from $12.3 million to $29.9 million. Fendi Adele S.r.l. v. Ashley Reed Trading, Inc., No. 06 Civ. 00243 (RMB) (MHD), Corrected Order (S.D.N.Y. Apr. 22, 2013). Continue Reading
Blogger’s DMCA Take-down Request of Her Own Obscene Photo on Rival’s Blog Was Not an Abuse of DMCA
Posted in Copyright, DMCA, ProcedureEven if the offending poster has a “plausible, and even dispositive” affirmative defense to a claim of copyright infringement, the poster cannot make a claim that the offended person abused the DMCA by sending a take-down request of the copyrighted material. So ruled the District of Massachusetts in a case involving dueling bloggers. Tuteur v. Crosley-Corcoran, No. 13-10159-RGS, 2013 WL 1450930 (D. Mass. Apr. 10, 2013). Continue Reading
Ninth Circuit Holds That Use of Ed Sullivan Clip in Jersey Boys is Fair Use
Posted in Copyright, Remedies/DamagesThe Ninth Circuit upheld a district court’s holding that use of a seven-second clip from The Ed Sullivan Show in the musical Jersey Boys constituted fair use. SOFA Entm’t, Inc. v. Dodger Prods., Inc., 709 F.3d 1273 (9th Cir. 2013). Continue Reading
No First Sale Doctrine for Digital Distribution
Posted in CopyrightThe Southern District of New York granted summary judgment for the plaintiff in a case involving a secondary marketplace for used digital music. Capitol Records, LLC v. ReDigi, Inc., __ F. Supp. 2d __, No. 12 Civ. 95(RJS), 2013 WL 1286134 (S.D.N.Y. Mar. 30, 2013). Continue Reading
Ninth Circuit Revives Trademark Infringement Claims Regarding “Red Gold”
Posted in Procedure, TrademarkThe Ninth Circuit reversed the district court’s dismissal of Solid 21, Inc.’s (“Solid’s”) trademark infringement claims regarding its “Red Gold” trademark, holding that, in dismissing the claims, the district court had inappropriately considered evidence challenging the complaint’s allegations. Solid 21, Inc. v. Breitling USA, Inc., No. 11-56439, 2013 WL 1116539 (9th Cir. Mar. 19, 2013) (unpublished opinion).
Supreme Court Holds That International First Sale Rights Apply to Copyrighted Works Lawfully Made Overseas
Posted in CopyrightThe Supreme Court of the United States in Kirtsaeng v. John Wiley & Sons, Inc. reversed the Second Circuit and held that the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad. The Court’s decision resolves a conflict between two seemingly contrary provisions of the Copyright Act: a first that codified the first sale doctrine for copyrighted works, 17 U.S.C. § 106(3), and a second that provided that importing a copy of a copyrighted work without permission violates the owner’s exclusive distribution right, 17 U.S.C. § 602(a)(1). Kirtsaeng v. John Wiley & Sons, Inc., __ U.S. __ No. 11-697, 2013 WL 1104736 (Mar. 19, 2013). Continue Reading
Entering into Trademark Licensing Agreement Shuts Door on “Naked Licensing” Defense
Posted in Licensing, TrademarkEntering into a trademark licensing agreement eliminated a former business partner’s ability to challenge the validity of a trademark owner’s mark under a “naked licensing” defense, ruled the Eleventh Circuit. Nguyen v. Biondo, No. 12-13776, 2013 WL 530840 (11th Cir. Feb. 13, 2013) (unpublished). Continue Reading
Copyright Claim Dismissed for Failure to Specify Infringed Works, Acts of Infringement, and Relevant Time Period
Posted in Copyright, ProcedureThe Southern District of New York dismissed a copyright claim because the plaintiff failed to specify which works were at issue, which acts constituted infringement, and the time period in which the infringement occurred. Palmer Kane LLC v. Scholastic Corp., No. 12 CV 3890, 2013 WL 709276 (S.D.N.Y. Feb. 27, 2013). Continue Reading
An Implied-in-Law Contract Claim for the Unauthorized Use of Software Is Preempted by the Copyright Act
Posted in CopyrightThere are two theories of implied contracts: implied-in-law contracts, based on the equitable theory that a contract to pay for services rendered should be implied by the law for reasons of justice, and implied-in-fact contracts, where the parties’ actions evince an intention to create a binding contract. The Northern District of California held that an implied-in-law contract claim seeking recovery under quantum meruit is preempted by the Copyright Act (17 U.S.C. § 101 et seq.) because the implied-in-law claim does not require an “extra element” beyond the elements required to recover under the Act. Design Data Corp. v. Unigate Enter., Inc., No. C 12-4131 PJH, 2013 WL 360542 (N.D. Cal. Jan. 29, 2013). Continue Reading