Articles Posted in Intellectual Property

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The Second Circuit appealed the district court's dismissal of Great Minds' copyright infringement action against FedEx. The court found that Great Minds' license did not explicitly address whether licensees may engage third parties to assist them in exercising their own noncommercial use rights under the license. The court held that, in view of the absence of any clear license language to the contrary, licensees may use third‐party agents such as commercial reproduction services in furtherance of their own permitted noncommercial uses. In this case, because FedEx acted as the mere agent of licensee school districts when it reproduced Great Minds' materials, and because there was no dispute that the school districts themselves sought to use Great Minds' materials for permissible purposes, FedEx's activities did not breach the license or violate Great Minds' copyright. View "Great Minds v. FedEx Office & Print Services, Inc." on Justia Law

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Plaintiff filed suit under the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S.C. 1961, et seq., challenging the district court's judgment in favor of defendants. In this case, plaintiff alleged that defendants were members of two enterprises that conspired to sue plaintiff for, inter alia, trademark infringement. The Second Circuit held that the alleged litigation activities did not constitute RICO predicate acts. The court also held that the district court did not abuse its discretion in denying plaintiff leave to amend, plaintiff's motion to disqualify, and defendants' motions for sanctions. Accordingly, the court affirmed the judgment. View "Kim v. Kimm" on Justia Law

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Fox filed suit against TVEyes for copyright infringement after TVEyes, a media company that continuously records the audiovisual content of more than 1,400 television and radio channels, enabled its clients to watch Fox's programming. The Second Circuit held that TVEyes's actions were not protected by the fair use doctrine. The court explained that, although TVEyes's re‐distribution of Fox's content served a transformative purpose by enabling clients to isolate material and to access it in a conventional manner, such re‐distribution makes available to clients virtually all of Fox's copyrighted content that clients wish to see and hear. Therefore, TVEyes deprived Fox of revenue that properly belongs to the copyright holder. The court reversed the district court's order to the extent that it found fair use; affirmed the district court's order to the extent that it denied TVEyes's request for additional relief; and remanded for entry of a revised injunction. View "Fox News Network, LLC v. TVEyes, Inc." on Justia Law

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DRK, a purported assignee of photographers' rights to sue for infringement, filed suit seeking statutory damages from Wiley, a licensee, for exceeding its licensed use of certain photographs as to which DRK non‐exclusively represents the photographers. The Second Circuit invoked its precedent in Eden Toys v. Florelee Undergarment, Co., 697 7 F.2d 27 (2d Cir. 1982), and held that as a matter of law the Copyright Act did not permit prosecution of infringement suits by assignees of the bare right to sue that were not and have never been a legal or beneficial owner of an exclusive right under copyright. In this case, the court held that DRK was not and has never been the holder of an exclusive right in the photographs. Accordingly, the court affirmed the judgment of the district court. View "John Wiley & Sons, Inc. v. DRK Photo" on Justia Law

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CI owns the registered marks ʺCollective Network,ʺ ʺCollective Video,ʺ and ʺC Collective The Audience Engine,ʺ a stylized mark in which the word ʺCollectiveʺ appears most prominently. CCM operates under the name ʺCollective[i].ʺ This appeal arises from the software companies' dispute over trademarks containing the word "collective." In a series of three orders, the district court granted summary judgment to CCM on virtually all points in dispute and awarded attorneyʹs fees under the Lanham Act, 15 U.S.C. 1051 et seq. The court reversed or vacated all contested portions of the March Order, August Order, and December Order because: (1) the unregistered mark ʺcollectiveʺ is suggestive, not descriptive; (2) there is a genuine dispute of material fact as to whether CI used the unregistered mark ʺcollectiveʺ in commerce before CCM introduced its allegedly infringing marks; (3) the district court prematurely granted summary judgment as to CIʹs counterclaim for infringement of the registered marks, an action that neither party requested and the district court did not explain; and (4) there is a genuine dispute of material fact as to whether CI abandoned its registered marks ʺCollective Networkʺ and ʺCollective Video.ʺ Accordingly, the court reversed in part, vacated in part, and remanded for further proceedings. View "Cross Commerce Media, Inc. v. Collective, Inc." on Justia Law

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Plaintiffs filed a copyright infringement suit against MP3tunes and its founder and CEO, alleging that two internet music services created by MP3tunes infringed their copyrights in thousands of sound recordings and musical compositions. The district court granted partial summary judgment to defendants, holding that MP3tunes had a reasonably implemented repeat infringer policy under section 512 of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. 512. A jury returned a verdict in favor of plaintiffs, but the district court partially overturned the verdict. The court vacated the district court's grant of partial summary judgment to defendants based on its conclusion that MP3tunes qualified for safe harbor protection under the DMCA because the district court applied too narrow a definition of “repeat infringer”; reversed the district court's grant of judgment as a matter of law to defendants on claims that MP3tunes permitted infringement of plaintiffs’ copyrights in pre‐2007 MP3s and Beatles songs because there was sufficient evidence to allow a reasonable jury to conclude that MP3tunes had red‐flag knowledge of, or was willfully blind to, infringing activity involving those categories of protected material; remanded for further proceedings related to claims arising out of the district court's grant of partial summary judgment; and affirmed the judgment in all other respects. View "EMI Christian Music Group, Inc. v. MP3tunes, LLC" on Justia Law

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In this copyright infringement suit, plaintiffs challenged the district court's determination that defendants’ verbatim use of a portion of Abbott and Costello’s iconic comedy routine, "Who’s on First?," in the recent Broadway play "Hand to God," qualified as a non‐infringing fair use. The court concluded that defendants’ entitlement to a fair use defense was not so clearly established on the face of the amended complaint and its incorporated exhibits as to support dismissal. In this case, defendants' verbatim use of the routine was not transformative, defendants failed persuasively to justify their use of the routine, defendants' use of some dozen of the routine’s variations of “who’s on first” was excessive in relation to any dramatic purpose, and plaintiffs alleged an active secondary market for the work, which was not considered by the district court. The court concluded, however, that the dismissal is warranted because plaintiffs failed to plausibly plead ownership of a valid copyright. The court found plaintiffs' efforts to do so on theories of assignment, work‐for‐hire, and merger all fail as a matter of law. Accordingly, the court affirmed the judgment. View "TCA Television Corp. v. McCollum" on Justia Law

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Plaintiff, the widow of Louis K. Smith, who authored and copyrighted a book entitled "The Hardscrabble Zone," filed suit alleging direct and contributory copyright infringement by Barnes & Noble. Barnes & Noble, under license, uploads books and book samples to digital “lockers” that it maintains for its individual customers. When the license granted by Smith was terminated, Barnes & Noble did not delete a sample of Smith’s book. The court concluded that, because the agreement does not provide for the license in the sample to terminate after the sample has been distributed, plaintiff cannot sustain her burden to prove that providing cloud‐based access to validly obtained samples is beyond the scope of the license agreement. Therefore, the court concluded that the conduct at issue was authorized by the relevant contracts between the parties and affirmed the judgment. View "Smith v. Barnesandnoble.com, LLC" on Justia Law

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Plaintiff, a composer and music producer, filed a copyright suit against Sony, Razor Sharp Records, and Dennis Coles, a/k/a Ghostface Killah, to enforce plaintiff's claimed ownership rights in the "Iron Man" theme song. The district court determined that plaintiff failed to present sufficient evidence to rebut the presumption that Marvel was, in fact, the copyright owner. Therefore, the district court dismissed plaintiff's New York common law claims for copyright infringement, unfair competition, and misappropriation on the basis that those claims were preempted by the Copyright Act, 17 U.S.C. 101 et seq. The court held that, although the district court properly determined that defendants had standing to raise a “work for hire” defense to plaintiff’s copyright infringement claim, the district court erred in concluding that plaintiff failed to raise issues of material fact with respect to his ownership of the copyright; the district court properly dismissed plaintiff’s state law claims as preempted by the Copyright Act; the court vacated the district court’s summary judgment ruling with respect to plaintiff’s Copyright Act claim and remanded for further proceedings; and the court affirmed the district court's dismissal of plaintiff's state law claims. View "Urbont v. Sony Music Entm't" on Justia Law

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Plaintiffs filed suit alleging that defendant fraudulently obtained his federal trademark registration for the PUDGIE’S mark in connection with restaurants that principally serve pizza, pasta, and submarine sandwiches. The district court granted summary judgment to plaintiffs. In this case, the district court correctly concluded that no material issue of fact existed as to whether defendant knowingly made false, material representations in his application where the specimen he included with his application exhibited that the PUDGIE'S mark originally came from another source. The court concluded that no genuine issue of material fact exists as to whether defendant knew that other entities had rights to use the mark in the very manner in which he sought to use the mark, and whether he intended to mislead the PTO by attesting otherwise in his trademark application. Accordingly, the court affirmed the judgment. View "MPC Franchise, LLC v. Tarntino" on Justia Law