Not All the Plaintiff “Desires”: Only One Statutory Damages Award Available

Written by Aaron D. Johnston On February 2, 2021, the Ninth Circuit issued Desire, LLC v. Manna Textiles, Inc., 2021 WL 345583 (9th Cir. 2021), holding that where one upstream infringer was jointly and severally liable with various downstream infringers (who were not jointly and severally liable with each other) in three distinct infringing distribution chains, plaintiff could only be awarded one statutory award rather … Continue reading Not All the Plaintiff “Desires”: Only One Statutory Damages Award Available

Bursting the [Red]Bubble? Northern District of California Considers Online Retailer’s Scope of Liability for Copyright and Trademark Infringement

Written by Lillian Lee On January 28, 2021, the U.S. District Court for the Northern District of California addressed an online retailer’s liability for copyright and trademark infringement arising out of its users’ submissions.  Atari Interactive, Inc. v. Redbubble, Inc., Case No. 4:18-cv-03451.  The court on cross-motions for summary judgment deferred on most issues, holding that Plaintiff Atari Interactive, Inc. (“Atari”) could proceed on some … Continue reading Bursting the [Red]Bubble? Northern District of California Considers Online Retailer’s Scope of Liability for Copyright and Trademark Infringement

Another COVID-19 Surprise: Important New Trademark and Copyright Legislation Buried In Spending and Relief Package

Written by Marissa B. Lewis Yesterday, Congress’s omnibus spending and COVID-19 relief bill, H.R. 133, was signed into law.  Buried in the legislation are two new acts that potentially have sweeping implications for intellectual property owners.  The Trademark Modernization (“TM”) Act and the Copyright Alternative in Small-Claims Enforcement (“CASE”) Act introduce measures that are poised to significantly impact the way that trademark and copyright owners … Continue reading Another COVID-19 Surprise: Important New Trademark and Copyright Legislation Buried In Spending and Relief Package

No Safe Harbor: Online Music Streaming Mixtape Platform is Liable for Copyright Infringement That Occurred Before Registering a DMCA Agent

Written by Albina Gasanbekova In Atlantic Recording Corp., et al. v. Spinrilla, LLC, et al., 1:17-cv-00431-AT (N.D. Ga. Nov. 30, 2020), a federal district court ruled that an online streaming provider cannot invoke the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”) to avoid liability for infringing uploads occurring before the provider met the requisite criteria for such protection. Spinrilla.com (“Spinrilla”) proclaims that it … Continue reading No Safe Harbor: Online Music Streaming Mixtape Platform is Liable for Copyright Infringement That Occurred Before Registering a DMCA Agent

Copyright Preemption Remix – The Second Circuit Finds Implied Preemption of Right of Publicity Claim Relating to Remixes on Mixtape

Written by Elaine K. Kim and Elaine Nguyen The Second Circuit recently issued an important decision, In re Jackson, No. 19-480, — F.3d —, 2020 WL 4810706 (2d Cir. Aug. 19, 2020), in which it held that a state law right of publicity claim was barred on the ground of implied copyright preemption.  While implied preemption—also known as conflict preemption—has come up in other copyright … Continue reading Copyright Preemption Remix – The Second Circuit Finds Implied Preemption of Right of Publicity Claim Relating to Remixes on Mixtape

When the Jacket Fits but the Copyright Registration (Maybe) Doesn’t: Ninth Circuit Clarifies Requirement to Determine Validity of Knowingly Filed Incorrect Copyright Registration

Written by Aaron D. Johnston and Orly Ravid SUMMARY The Ninth Circuit recently decided a copyright infringement case that pitted fabric designer Unicolors against clothing retail giant H&M regarding an artwork design that H&M used on a jacket and skirt in its fall 2015 collection.  The dispute involved one fabric design in a copyright registration containing 31 designs as a “single-unit registration.”  In Unicolors, Inc. … Continue reading When the Jacket Fits but the Copyright Registration (Maybe) Doesn’t: Ninth Circuit Clarifies Requirement to Determine Validity of Knowingly Filed Incorrect Copyright Registration

Fair Use & Tater Tots

Written by Timothy M. Carter In 2011, Plaintiffs Tamita Brown, Glen S. Chapman, and Jason T. Chapman composed and recorded the children’s song Fish Sticks n’ Tater Tots (the “Song”), which details a student’s journey from her classroom to her school cafeteria to eat fish sticks and tater tots for lunch.[1]  Six years later, the documentary film Burlesque: Heart of the Glitter Tribe (the “Film”) — which … Continue reading Fair Use & Tater Tots

Manufacturer Strikes Out on Three IP Theories Asserted to Enforce Its Claimed Rights in Product Design

Written by Mark C. Humphrey

On May 14, 2020, the Federal Circuit Court of Appeals issued a decision in Lanard Toys Limited v. Dolgencorp LLC et al., Case No. 2019-178, affirming summary judgment for the defendants and dismissing claims for design patent and copyright infringement.  The claims were grounded in a challenging intellectual property law concept: the level of protection available for objects claimed to have both aesthetic and utilitarian functions.  While the decision does little to provide additional clarity on the issue, it offers a useful snapshot of current jurisprudence, particularly in the copyright context in light of the United States Supreme Court’s Star Athletica decision, and identifies the salient distinctions between copyright law, design patent law, and trade dress law as they apply to a product design.

Lanard involves toy chalk holders made to look and function like pencils.  Since 2011, Lanard had been making and selling one such product, the “Lanard Chalk Pencil,” to national distributors including Dolgencorp LLC (parent of Dollar General) and Toys R’ Us (“TRU”).  Lanard owned patent registrations for its design, as well as a copyright for a work entitled “Pencil/Chalk Holder.”  In 2012, Ja-Ru, Inc. (“Ja-Ru”) released a similar toy chalk pencil holder that used the Lanard Chalk Pencil as a design reference.  By 2013, Dolgencorp and TRU had stopped ordering the Lanard Chalk Pencil in favor of Ja-Ru’s product. Continue reading “Manufacturer Strikes Out on Three IP Theories Asserted to Enforce Its Claimed Rights in Product Design”

Attorney Fees Are Recoverable in Declaratory Relief Action for Copyright Abandonment, Ninth Circuit Holds

Written by Tiana A. Bey

On May 13, 2020, the Ninth Circuit opened the door for courts to award attorney’s fees to parties seeking or defending against equitable relief actions that may implicate the Copyright Act.  In Doc’s Dream v. Dolores Press, Inc., No. 18-56073 (9th Cir. May 13, 2020), the Circuit held broadly that “any action that turns on the existence of a valid copyright and whether that copyright has been infringed” is properly within the scope of attorney’s fees recoverable pursuant to the fee-shifting provision of the Copyright Act.  And it applied that holding to the particular claim for declaratory relief before it, namely whether a party had abandoned a copyright.

Section 505 of the Copyright Act, 17 U.S.C. § 505, provides a court with discretion to “award a reasonable attorney’s fee to the prevailing party” as a part of the recoverable cost incurred “in any civil action under” the Copyright Act.  Doc’s Dream presented a “first impression” issue: whether a declaratory relief claim concerning the judicially-created “copyright abandonment” doctrine qualifies as an action under the Copyright Act.  To address this question, the Circuit had to decide whether a determination of copyright abandonment required a “construction” of the Copyright Act, and it answered in the affirmative. Continue reading “Attorney Fees Are Recoverable in Declaratory Relief Action for Copyright Abandonment, Ninth Circuit Holds”

High Court Copyright Ruling Expands Government Edicts Doctrine

Written by Eleanor M. Lackman and Craig C. Bradley

On April 27, the U.S. Supreme Court for the first time in 130 years addressed the government edicts doctrine, a court-made rule holding that state government edicts having the force of law are not eligible for copyright protection.  

The doctrine provides that state and local government officials acting in their governmental capacity are not considered “authors” as that term is understood in copyright law.  Without authorship, no copyright protection is available for the work.  This principle has made judicial opinions and statutes freely available to publish and review free from claims of copyright infringement.

The decision in Georgia v. Public.Resource.Org, Inc., raised a new issue: not whether the law itself was copyrightable, but whether annotations and other analytical materials accompanying the law were also barred from copyright protection under the government edicts doctrine. Continue reading “High Court Copyright Ruling Expands Government Edicts Doctrine”