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

The Digital Millennium Copyright Act of 1998 (DMCA), 17 U.S.C. 512(c), establishes a safe harbor which gives qualifying Internet service providers protection from liability for copyright infringement when their users upload infringing material on the service provider’s site and the service provider is unaware of the infringement. Plaintiffs filed suit against Vimeo alleging that Vimeo is liable for copyright infringement by reason of 199 videos posted on the Vimeo website, which contained allegedly infringing musical recordings for which plaintiffs owned the rights. In this interlocutory appeal on certified questions from rulings of the district court interpreting the DMCA, the court concluded that the safe harbor of section 512(c) does apply to pre-1972 sound recordings, and therefore protects service providers against liability for copyright infringement under state law with respect to pre-1972 sound recordings, as well as under the federal copyright law for post-1972 recordings. Therefore, the district court’s grant of partial summary judgment to plaintiffs with respect to Vimeo’s entitlement to the safe harbor for infringements of pre-1972 recordings is vacated. The court also concluded that various factual issues that arise in connection with a service provider’s claim of the safe harbor are subject to shifting burdens of proof. Because, on a defendant’s claim of the safe harbor, the burden of showing facts supporting a finding of red flag knowledge shifts to the plaintiff, and the district court appears to have denied Vimeo’s motion for summary judgment as to a number of videos on this issue based on a test that would improperly deny service providers access to the safe harbor, the court vacated the denial of Vimeo’s motion for summary judgment on that issue. The court remanded for reconsideration and further proceedings. Finally, the court rejected plaintiff's argument that the district court erred in its ruling in Vimeo’s favor as to plaintiffs’ reliance on the doctrine of willful blindness. Accordingly, the court affirmed in part, vacated in part, and remanded for further proceedings. View "Capitol Records, LLC v. Vimeo, LLC" on Justia Law

Plaintiff filed suit alleging trademark infringement in violation of the Lanham Act, 15 U.S.C. 1114, and other claims on the basis that defendant's trademark logo was confusingly similar to plaintiff's trademark. The district court granted permanent injunctive relief, prohibiting defendant from using its marks within plaintiff’s geographic service area (Guthrie Service Area), but held that defendant may continue to use its marks everywhere outside the Guthrie Service Area, as well as without restriction in Internet transmissions, on defendant’s websites and on social media. The court agreed with the district court’s liability determination that there is a likelihood of confusion between plaintiff’s and defendant’s trademarks. The court concluded, however, that, in restricting the scope of the injunction, the district court misapplied the law, and failed to adequately protect the interests of plaintiff and the public from likely confusion. The court concluded that it is correct that a senior user must prove a probability of confusion in order to win an injunction. But it does not follow that the injunction may extend only into areas for which the senior user has shown probability of confusion. Accordingly, the court affirmed in part, vacated in part, and expended the scope of the injunction, remanding for further consideration. View "Guthrie Healthcare Sys. v. ContextMedia, Inc." on Justia Law

ISC filed suit against SU and Sondra Schneider, alleging that SU's use of ISC's certification mark violated the Lanham Act, 15 U.S.C. 1051 et seq., and constituted infringement under 15 U.S.C. 1114, false designation of origin and false advertising under 15 U.S.C. 1125(a), and trademark dilution under 15 U.S.C. 1125(c), and that SU’s use of the mark constituted unfair competition under the Connecticut Unfair Trade Practices Act (CUTPA), Conn. Gen. Stat. 42–110a et seq. The district court granted summary judgment to defendants. The court held that nominative fair use is not an affirmative defense to a claim of infringement under the Lanham Act. In cases involving nominative use, in addition to considering the Polaroid factors, courts are to consider (1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services. When considering these factors, courts must be mindful of the different types of confusion relevant to infringement claims. Because the district court failed to consider the Polaroid factors and because its consideration of the relevant nominative fair use factors was based on incorrect assumptions, the court vacated the district court’s grant of summary judgment on the infringement claims. The court vacated the grant of summary judgment as to the false designation of origin and false advertising claims, and the CUTPA claims. The court affirmed as to the dilution claims and remanded for further proceedings. View "Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Security Univ., LLC" on Justia Law

This case stemmed from rival claims to the “Stolichnaya” trademarks. FTE and Cristall alleged that defendants unlawfully misappropriated and commercially exploited the Stolichnaya trademarks related to the sale of vodka and other spirits in the United States. Control over the marks in the United States is currently exercised by defendants as successors in interest to a Soviet state enterprise. In a prior suit, FTE brought claims against SPI under section 32(1) of the Lanham Act, 15 U.S.C. 1114, and the court dismissed the claims on the grounds that the Russian Federation itself retained too great an interest in the marks for FTE to qualify as an "assign" with standing to sue. FTE's non-section 32(1) claims were either dismissed or dropped during the course of that litigation. At issue principally in this appeal is whether FTE, an agency of the Russian Federation, has been endowed by that government with rights and powers that give it standing to pursue claims under section 32(1) of the Lanham Act. The court concluded that the district court erred in determining whether FTE’s asserted basis for standing was valid under Russian law. However, the court concluded that the district court correctly dismissed all of FTE's other claims as barred by both res judicata and laches. Accordingly, the court affirmed in part, vacated in part, and remanded for further proceedings. View "Fed. Treasury Enter. Sojuzplodoimport v. Spirits Int’l B.V." on Justia Law

Plaintiffs, authors of published books under copyright, filed suit against Google for copyright infringement. Google, acting without permission of rights holders, has made digital copies of tens of millions of books, including plaintiffs', through its Library Project and its Google books project. The district court concluded that Google's actions constituted fair use under 17 U.S.C. 107. On appeal, plaintiffs challenged the district court's grant of summary judgment in favor of Google. The court concluded that: (1) Google’s unauthorized digitizing of copyright-protected works, creation of a search functionality, and display of snippets from those works are non-infringing fair uses. The purpose of the copying is highly transformative, the public display of text is limited, and the revelations do not provide a significant market substitute for the protected aspects of the originals. Google’s commercial nature and profit motivation do not justify denial of fair use. (2) Google’s provision of digitized copies to the libraries that supplied the books, on the understanding that the libraries will use the copies in a manner consistent with the copyright law, also does not constitute infringement. Nor, on this record, is Google a contributory infringer. Accordingly, the court affirmed the judgment. View "Authors Guild v. Google, Inc." on Justia Law

Defendant, a film director, producer, and editor, appealed the district court's grant of summary judgment in favor of plaintiff, a film production company, on its copyright and state-law claims related to the film entitled "Heads Up." At issue was whether a contributor to a creative work whose contributions are inseparable from, and integrated into, the work maintain a copyright interest in his or her contributions alone. Determining that the court had jurisdiction over the merits of the appeal, the court concluded that, on the facts of the present case, the Copyright Actʹs, 17 U.S.C. 102, terms, structure, and history support the conclusion that defendantʹs contributions to the film do not themselves constitute a ʺwork of authorshipʺ amenable to copyright protection. The court concluded that a directorʹs contribution to an integrated ʺwork of authorshipʺ such as a film is not itself a ʺwork of authorshipʺ subject to its own copyright protection. Therefore, defendant did not obtain and does not possess a copyright in his directorial contributions to the finished film. The court agreed with the district court that in this case, plaintiff was the dominant author of the film and concluded that plaintiff owns the copyright in the finished film and its prior versions, including the disputed ʺraw film footage.ʺ Finally, the court disagreed with the district court's conclusion that defendant's interference with plaintiff's planned screening and post-screening reception constituted tortious interference under New York law. Rather, the court concluded that the undisputed material facts require judgment as a matter of law in defendantʹs favor. Accordingly, the court affirmed in part, reversed in part, and remanded with instructions and for the district court to reexamine its award of costs and attorneyʹs fees, and for such other proceedings as are warranted. View "16 Casa Duse, LLC v. Merkin" on Justia Law

Marcel filed suit against Lucky Brand, seeking damages and injunctive relief based on claims of trademark infringement, false designation of origin, and unfair competition under 15 U.S.C. 1114, 1116, and 1125, as well as common law trademark infringement and unfair competition under Fla. Stat. 495.151. On appeal, Marcel challenged the district court's judgment in favor of Lucky Brand. The court concluded that a prior judgment in Marcel's favor awarding damages and an injunction did not bar Marcel from instituting a second suit seeking relief for alleged further infringements that occurred subsequent to the earlier judgment. Accordingly, the court vacated the grant of summary judgment and the denial of leave to amend the complaint. The court affirmed the district court's denial of Marcel's motion to hold Lucky Brand in contempt for violation of an injunction in the prior litigation because Marcel did not show that Lucky Brand's conduct violated the terms of the injunction. View "Marcel Fashions v. Lucky Brand Dungarees" on Justia Law

TechnoMarine holds various trademark and copyright registrations for its word mark, logo, and watch dial. At issue in this appeal was whether a prior litigation between TechnoMarine and Giftports resolving claims of trademark infringement and other unfair business practices, and stemming from earlier conduct, bars the present suit of TechnoMarine over similar conduct that occurred after the settlement of the earlier suit. The court concluded that res judicata did not bar the trademark and other unfair business practice claims that arose after the original settlement agreement between the parties; the court affirmed the dismissal of the complaint on the alternative basis that TechnoMarine failed to state a claim upon which relief may be granted where TechnoMarine failed plausibly to plead its claims for trademark infringement, false designation of origin, trademark dilution, tortious interference, unfair competition, or copyright infringement; and the court affirmed the district court's denial of TechnoMarine's request to amend its complaint because TechnoMarine failed to indicate how further amendment would cure its pleading deficiencies. View "Technomarine SA v. Giftports, Inc." on Justia Law

This appeal concerned the HathiTrust Digital Library (HDL). At issue was whether the HDL's use of copyrighted material is protected against a claim of copyright infringement under the doctrine of fair use. Plaintiffs appealed the district court's grant of summary judgment in favor of defendants and dismissal of their claims of copyright infringement. The district court also dismissed the claims of certain plaintiffs for lack of standing and dismissed other copyright claims as unripe. The court held that three authors' associations lacked standing to bring suit on behalf of their members and were properly dismissed from the suit and the remaining four authors' associations do have standing to bring suit on behalf of their members; the doctrine of fair use allowed defendants to create a full-text searchable database of copyrighted works and to provide those works in formats accessible to those with disabilities; and claims predicated upon the Orphan Works Project are not ripe for adjudication. Therefore, the court affirmed as to those issues. The court vacated the judgment, in part, insofar as it rests on the district court's holding related to the claim of infringement predicated upon defendants' preservation of copyrighted works and remanded for further proceedings. View "Authors Guild, Inc. v. HathiTrust" on Justia Law

Plaintiff, an architect, and the company through which he does business, filed suit asserting that he created then licensed numerous designs for colonial homes to two construction companies and that these companies and their contractors infringed his copyright in these designs by using them in ways the licenses did not permit after the licenses had expired. Plaintiff also alleged that defendants' actions violated the Digital Millennium Copyright Act (DMCA), 17 U.S.C. 1202(b). The district court dismissed plaintiff's claims against some defendants, granted summary judgment in favor of the remaining defendants, and granted attorney's fees to two defendants. The court affirmed in part and held that (1) any copying of plaintiff's designs extended only to unprotected elements of his works, and (2) plaintiff failed to plead a violation of the DMCA. The court vacated in part and held that the district court misapplied the incorrect legal standard in awarding attorney's fees, remanding for the district court to apply the correct standard. View "Zalewski v. Cicero Builder Dev., Inc." on Justia Law