Justia U.S. 2nd Circuit Court of Appeals Opinion Summaries

The Second Circuit affirmed the district court's dismissal of plaintiff's third amended complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), alleging that defendants violated the Copyright Act by copying creative aspects from his unreleased science fiction videogame, including his use of a tardigrade -- a microscopic animal -- traveling in space, in their television series Star Trek: Discovery.Even assuming that actual copying occurred, the court agreed with the district court that plaintiff failed to plausibly allege substantial similarity between protectible elements of his videogame and elements from Discovery. The court explained that, overall, the presence of Ripper the tardigrade in Discovery is minimal, as it only appears in three episodes. Therefore, after extracting the unprotectible elements from plaintiff's videogame -- the scientific facts, general ideas, science fiction themes constituting scènes à faire, and generalized character traits -- the court held that the videogame and Discovery are not substantially similar because the protectible elements are markedly different. View "Anas Osama Ibrahim Abdin v. CBS Broadcasting Inc." on Justia Law

Tiffany filed suit against Costco under the Lanham Act and New York law, alleging that Costco was liable for, inter alia, trademark infringement and counterfeiting in connection with its sale of diamond engagement rings identified by point-of-sale signs containing the word "Tiffany." The district court granted summary judgment for Tiffany and awarded Tiffany Costco's trebled profits along with punitive damages and prejudgment interest, for a total of $21,010,438.35.The Second Circuit vacated, holding that the district court's determination was inappropriate at the summary judgment stage. The court held that Costco has raised a question of material fact as to its liability for trademark infringement and counterfeiting and, relatedly, its entitlement to present its fair use defense to a jury. In this case, Costco argued that it was using the word in a different, widely recognized sense to refer to a particular style of pronged diamond setting not exclusive to rings affiliated with Tiffany. Costco claimed that its use of the term was not likely to confuse consumers—the essence of a claim for infringement—and that even if some degree of confusion was likely, it was entitled under the Lanham Act to the descriptive fair use of an otherwise protected mark. Accordingly, the court remanded for trial. View "Tiffany & Co. v. Costco Wholesale Corp." on Justia Law

Plaintiff filed suit against BuzzFeed for using one of his photographs without crediting him in violation of the Digital Millennium Copyright Act (DCMA). The district court awarded plaintiff statutory damages. BuzzFeed appealed, arguing that it did not know its conduct would lead to future, third-party copyright infringement.The Second Circuit affirmed the district court's award of statutory damages and held that the plain language of the DMCA does not require plaintiff to prove that BuzzFeed knew its actions would lead to future, third-party infringement. In this case, the district court correctly applied the DMCA by finding that Buzzfeed, through its own journalist, distributed the photo knowing that plaintiff's gutter credit had been removed or altered without his permission and distributed the photo with a gutter credit reading "Fisher & Taubenfeld" knowing that doing so would conceal the fact that a BuzzFeed journalist did not have authority to use the photo. View "Mango v. Buzzfeed, Inc." on Justia Law

The Second Circuit affirmed the district court's dismissal of plaintiff's claims under the Copyright Act and the Digital Millennium Copyright Act (DMCA). Plaintiff alleged claims of copyright infringement and copyright management information (CMI) removal based on an underlying controversy involving defendants' promotion of their own version of a honey harvesting product, which replaced one that plaintiff had invented and that defendants had sold for many years through a website defendants owned.The court held that plaintiff was not entitled to statutory damages or attorneys' fees, because the first allegedly infringing act occurred before the date of the copyright registration and no genuine issue of material fact exists concerning this issue. The court also held that plaintiff failed to establish a CMI removal claim under the DMCA, because "Fischer's" cannot be construed as a CMI with respect to the advertising text at issue because it is simply the name of the product being described. View "Fischer v. Forrest" on Justia Law

SM Kids filed suit against Google and related entities, seeking to enforce a 2008 agreement settling a trademark dispute over the Googles trademark. The agreement prohibited Google from intentionally making material modifications to its then-current offering of products and services in a manner that is likely to create confusion in connection with Googles. The district court concluded that the trademark assignment was invalid, and dismissed for lack of subject-matter jurisdiction.The Second Circuit vacated the district court's judgment and held that the validity of the trademark was not a jurisdictional matter related to Article III standing but was instead a merits question properly addressed on a motion under Federal Rule of Civil Procedure 12(b)(6), a motion for summary judgment, or at trial. In this case, the district court erroneously resolved Google's motion as a fact-based motion under Rule 12(b)(1) and considered evidence beyond the complaint, as well as placed on SM Kids the burden of proving subject-matter jurisdiction. Accordingly, the court remanded for further proceedings. View "SM Kids, LLC v. Google LLC" on Justia Law

The Second Circuit affirmed the district court's denial of the Welsh Government's motion to dismiss claims of copyright infringement brought by Pablo Star over two photographs of the Welsh poet Dylan Thomas and his wife, Caitlin Macnamara, on the ground of sovereign immunity. The Welsh Government argued that the commercial-activity exception of the Foreign Sovereign Immunities Act (FSIA) does not apply to its conduct promoting Welsh culture and tourism in New York.The court held, however, that the Welsh Government engaged in commercial activity in publicizing Wales-themed events in New York, and that the Welsh Government's activity had substantial contact with the United States. Therefore, Pablo Star's lawsuit falls within an exception to the immunity recognized in the FSIA. View "Pablo Star Ltd. v. The Welsh Government" on Justia Law

Plaintiff and Visions of America filed suit against Scholastic, alleging copyright infringement on 89 photographs plaintiff had authored. The district court determined that Scholastic had infringed six of the photographs and dismissed the remaining claims.The DC Circuit held that the district court properly recited the elements of a copyright infringement claim and placed the burden of proof on plaintiff to demonstrate that Scholastic's use of his images was outside the scope of the license; Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014), did not abrogate this Circuit's adoption of the "discovery rule" for copyright infringement claim accrual in Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120 (2d Cir. 2014); the Copyright Act limits damages to the three years prior to when a copyright infringement action is filed; and the registration of a compilation of photographs under 17 U.S.C. 409 by an applicant who holds the rights to the component works is valid and effectively registers the underlying individual photos, even if the compilation does not list the individual authors of the individual photos. Accordingly, the court affirmed in part and reversed in part, remanding for further proceedings. View "Sohm v. Scholastic Inc." on Justia Law

The Second Circuit affirmed the district court's dismissal of plaintiff's action seeking a declaratory judgment adjudicating the validity of defendants' trademark registrations relating to the "SULKA" mark.The court held that, before a court may entertain an action for declaratory relief in the context of trademarks, the plaintiff must allege that he has taken some action showing that he has both the "definite intent and apparent ability to commence use of the marks on the product." In this case, the court held that defendant's allegations are too vague to support the exercise of federal jurisdiction. The court explained that the only allegation that does relate to the U.S. market is plaintiff's application to register the mark in the United States. However, while his allegation is certainly relevant to the matter of intent, it has little bearing on plaintiff's ability to transition his business to the United States and there were significant reasons for the district court to be skeptical that he was, in fact, prepared to enter the U.S. market. View "Saleh v. Sulka Trading Ltd." on Justia Law

The Second Circuit affirmed the district court's award of statutory damages to plaintiffs under the Visual Artists Rights Act of 1990. Defendants are developers who destroyed aerosol artwork that plaintiff painted on buildings owned by defendants. The site was known as 5Pointz in Long Island City, New York, and evolved into a major global center for aerosol art, attracting thousands of visitors, numerous celebrities, and extensive media coverage.The court held that the district court correctly determined that temporary artwork may achieve recognized stature so as to be protected from destruction by VARA and that plaintiffs' work had achieved that stature. The court also held that the district court did not err in finding defendants' violations of VARA to be willful and that the district court's award of statutory damages was not an abuse of discretion. View "Castillo v. G&M Realty L.P." on Justia Law

When the existence of a license is not in question, a copyright holder must plausibly allege that the defendant exceeded particular terms of the license. The Second Circuit affirmed the district court's judgment in favor of Scholastic in an action brought by Yamashita for copyright infringement.The court held that, although Yamashita stands in this suit not as a party to the contract that set the limits now allegedly breached, and more as a beneficiary of that contract, the Corbis‐Scholastic license still sets the terms that provide the foundation for Yamashita's complaint. The court held that the speculative, indefinite allegations made in this case as to all photographs, except the ones in Row 80, were insufficient to state a claim. Furthermore, the court's decision was not in conflict with Arista Records, LLC v. Doe 3, 604 F.3d 110 (2d Cir. 2010). Finally, because the proposed amendment would not cure the complaint's defects, leave to amend was futile. View "Yamashita v. Scholastic Inc." on Justia Law