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District and appellate courts (mostly) continued the theme. An expansive construction of the fair use defense in a case brought to enforce copyright in a famous Dr. Seuss work is being appealed to the Ninth Circuit. The Eleventh Circuit found a compilation and annotation of state code to be unprotectable under copyright law, a ruling which was appealed to and will be heard by the Supreme Court.
Two appellate rulings, both in California (arguably America’s entertainment capital), rejected songwriters’ claims to copyright based on lack of originality, dismissing their infringement suits, even as another California appeals court found a nine-word phrase in a song’s lyrics could be original and therefore copyrightable subject matter. Yet another court, this one in New York, found a copyright claim time-barred three years after accrual of an ownership claim. These cases and others are organised by industry and discussed below.
Copyright Law in Publishing, Software and Online Services
Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, 139 S.Ct. 881 (2019)
One of last year’s most significant copyright cases stemmed from a news organization’s licensing agreement with an online news website. In this case, Fourth Estate Public Benefit Corporation (Fourth Estate) appealed a ruling issued by the Eleventh Circuit, in which the appeals court dismissed the organisation’s copyright infringement claim based on its failure to register copyrights for the articles in question. The Supreme Court agreed with the lower courts, ruling that Fourth Estate’s filing applications to register copyright in the articles with the Copyright Office did not confer upon it the right to sue for infringement, resolving a long-standing dispute among the lower courts as to whether registration was a precondition to suit.
The Supreme Court reasoned that, although the Copyright Act of 1976 vests copyright in the work immediately on its creation, an author or exclusive licensee may file a civil action for an infringement of those rights only after they have properly registered their work. 17 U.S.C. § 411(a). This necessitates an actual review of the application and official registration by the Copyright Office; mere submission of an application is insufficient.
Rimini Street, Inc. v. Oracle USA, Inc., 139 S.Ct. 873 (2019)
This 2019 case stemmed from software developer Rimini Street, Inc.’s claims that Oracle USA, Inc, a provider of software support services, had infringed on various copyrights in Oracle software.
Following partial summary judgment and a jury verdict in favour of Rimini, the federal district court sitting in Nevada granted the developer’s motion for permanent injunction, prejudgment interest, and attorney fees, and awarded the developer expert witness fees, e-discovery expenses, and jury consultant fees. Oracle, USA appealed, arguing that the court was not authorized to award these types of litigation expenses under the Copyright Act.
The Supreme Court agreed, holding that the Copyright Act’s reference to “full costs” does not include litigation expenses beyond the six categories identified by Congress in the general costs statute. See 28 U.S.C. §§ 1821, 1920. Ultimately, the Court reversed the Ninth Circuit’s judgment and remanded the case. It remains to be seen whether the ruling will have a chilling effect on copyright litigation given that prevailing plaintiffs without deep pockets in copyright suits will not be able to recover all their costs in bringing action.
Dr. Seuss Enter. v. Comicmix, LLC, 372 F. Supp. 3d 1101 (S.D. Cal. 2019)
Last spring, a federal district court sitting in California issued a decision that adopted an expansive view of fair use, and therefore was widely viewed as a setback for efforts to enforce copyrights in literary works. The decision, which granted defendants’ motion for summary judgment, arose from a suit filed by Dr. Seuss Enterprises, L.P. alleging that defendant Comicmix, LLC’s book, Oh, the Places You’ll Boldly Go!, unlawfully infringed on copyright in the book Oh, the Places You’ll Go!. Comicmix’s work is a “mashup” of the beloved children’s book and Star Trek written by veteran StarTrek creator David “Tribble” Gerrold and renowned comic book artist and writer Ty Templeton (who were also named as defendants).
The court rejected the plaintiff’s claims, holding that readers would immediately understand that the book was a parody, and thus protected by the doctrine of fair use.
The court reached its decision even though the authors borrowed liberally from the Dr. Seuss classic, because it transformed and adapted these elements to create the parody. For example, instead of a rainbow-ringed disc, the defendant authors created a decidedly Star Trek-shaped spaceship. The court ruled the defendants’ work was a permissible adaptation and transformation of the text and illustrations of the original book to create the parody. The case has been appealed to the Ninth Circuit.
Copyright Law Affecting States’ Rights
Georgia v. Public.Resource.Org, Inc. 906 F.3d 1229 (11th Cir. 2018)
In 2013, the State of Georgia and a code revision commission compiled and published the laws enacted in the Official Code of Georgia, along with annotations comprising cross references, notations, and commentaries.Both parties filed a copyright infringement claim against the defendant (an organization whose mission is to improve public access to legal materials), which published and distributed a copy of the compilation online.
The federal district court sitting in Georgia found for plaintiffs, stating that while the statutory portions of the code are protected, the annotations themselves are not. On appeal, the Eleventh Circuit reversed the lower court’s ruling, finding that the annotations in the Official Code of Georgia were written and integrated into the “official” code in such a way, that they were also attributable to the state’s constructive authorship, thereby placing them in the public domain.
In reaching this decision, the appellate court examined multiple factors, including the identity of the public officials involved in the project, the authoritativeness of the work, and the process by which the code was created. Plaintiffs appealed to the Supreme Court, which has agreed to hear the case.
Allen v. Cooper, 589 US 140 S.Ct. 994 (2020)
In 1996, Intersal, Inc., a marine salvage company named discovered the remains of the Queen Anne’s Revenge off the coast of North Carolina. The State of North Carolina contracted with the company to conduct recovery operations. Intersal hired the plaintiff videographer to document recovery efforts.
The plaintiff took photos and made video recordings for more than 10 years and registered copyrights in all the works. When North Carolina published some of the videos and photos on its website, the plaintiff sued for copyright infringement. The US district court sitting in North Carolina refused to dismiss the case, ruling that the defendant’s claim of sovereign immunity was abrogated by the Copyright Remedy Clarification Act (CRCA).
The Fourth Circuit reversed, stating that Congress did not have authority to abrogate a state’s immunity from copyright infringement under its Article I or Fourteenth Amendment powers. Early this year, the Supreme Court affirmed the Fourth Circuit’s ruling and dismissed the case on the grounds that Congress’ authority to enforce the due process clause did not authorise it to abrogate the states’ Eleventh Amendment immunity from copyright infringement, thus finding the CRCA unconstitutional.
Copyright Law and the Entertainment Industry
Gray v. Hudson, No. 19-56195, 2020 WL 1275221 (9th Cir. 16 March 2020)
Last summer, a federal jury found that Katy Perry’s song “Dark Horse” unlawfully infringed on the copyright of a Christian rap song and ordered the defendant to pay USD2.78 million in damages. After receiving the defendant’s motion for judgment as a matter of law, in March, 2020, the United States District Court in Los Angeles vacated the jury’s verdict, ruling that the plaintiff had failed to show that the musical elements identified by the plaintiff were original and substantial enough to qualify for protection.
The ruling followed on the heels of a ruling from the Ninth Circuit that Led Zeppelin’s Stairway to Heaven had not infringed copyright in Spirit’s 1968 instrumental track, “Taurus.”
Griffin v. Sheeran,351 F.Supp.3d492 (S.D.N.Y. 2019)
This 2019 case involved allegations by the heirs of Edward Townsend, who owned partial interests in the copyright of the musical composition “Let’s Get It On” (LGO), that the defendant’s song “Thinking Out Loud” (TOL) infringed copyright in LGO. The defendant moved for summary judgment, arguing that common musical elements (including key, meter, and tempo),were not entitled to copyright protection.
The court agreed that many elements are so common as to be a part of the public domain. However, it also held that factual questions precluded the grant of summary judgment, specifically (1) whether specific chord progressions, harmony and harmonic rhythms were uncommon prior to LGO and therefore original enough to warrant copyright protection, and (2) whether the musical elements in the two works are substantially similarand so uncommon that an ordinary observer would recognize TOL as having been appropriated from LGO.
Oyewole v. Ora, 775 Fed.App’x. 42 (2d Cir. 2019)
Oyewole was a founding member of The Last Poets, a spoken-word/rap group that created and published “When the Revolution Comes” in 1968, a poem that referenced the phrase “party and bullshit.” In 1993, Christopher Wallace, better known as the Notorious B.I.G., created a song called “Party and Bullshit” by sampling Oyewole’s work and remixing the phrase. After his death, his estate licensed the use of the phrase to the defendant, who used it in the creation of her hit single, “How We Do (Party),” released in 2012. The plaintiff filed suit against the Wallace estate, as well as Ora, and a number of songwriters and producers for copyright infringement.
The district court dismissed the complaint, holding that the songs in question constituted fair use of the “party and bullshit” lyric. The Second Circuit was not convinced by the plaintiff’s argument that the lower court had erred in determining that the two songs qualified as fair use, and affirmed the New York federal district court’s dismissal.
Hall v. Swift, 786 Fed.App’x. 711 (9th Cir. 2019)
This case stemmed from an appeal filed by the plaintiff after a federal district court sitting in California dismissed plaintiff’s complaint against Taylor Swift for copyright infringement. The complaint alleged that Swift’s song “Shake It Off,” released in 2014, unlawfully used the phrase “Playas, they gonna play/And haters, they gonna hate” from plaintiff’s 2001 song, “Playas Gon’ Play.”
The district court dismissed the complaint, holding that the copied material lacked originality and therefore was not copyrightable The Ninth Circuit disagreed, ruling that originality is a question of fact if not established on the face of the complaint or through judicial notice, so the lower court’s dismissal was improper. The Ninth Circuit found the district court had in effect, made itself the final judge of the worth of an expressive work, a charge that can be granted only to a jury. The decision was reversed, and the case remanded.
Charles v. Seinfeld, 410 F. Supp. 3d 656 (S.D.N.Y. 2019)
This lawsuit stemmed from allegations of copyright infringement levied by Christian Charles against Jerry Seinfeld, producer of the show Comedians in Cars Getting Coffee. Plaintiff alleged Seinfeld unlawfully used his script, treatment, and pilot. The federal district court sitting in New York dismissed the claim, stating that civil actions brought under the Copyright Act have a three year statute of limitations that begins to run when a reasonably diligent plaintiff would have been put on notice of the existence of his or her ownership right.
The court explained that a number of different events can trigger accrual of an ownership claim, including an express assertion of sole authorship or ownership. Ultimately, the court held that the defendant’s rejection of the plaintiff’s request for backend compensation in 2011 and previous statement that the plaintiff’s only involvement was to be on a work for hire basis were enough to put him on notice that any claim of authorship was repudiated. Because notice of ownership had been repudiated beginning in 2011, the court ruled that the copyright infringement claim was time barred, and so dismissed the case. Plaintiff has appealed the case to the Second Circuit.
And One Case that’s Just Bananas
Silvertop Associates Inc., v. Kangaroo Manufacturing Inc., 931 F.3d 215 (3d Cir. 2019)
Last summer, the Third Circuit grappled with a copyright infringement case, in which the plaintiff claimed that the defendant’s use of a full-body banana costume violated plaintiff’s ownership rights in the design. The defendant appealed to the Third Circuit the New Jersey federal district court’s decision to grant plaintiff’s preliminary injunction, which affirmed the district court’s preliminary injunction.
In its opinion, the appellate court found that the banana costume’s non-utilitarian, sculptural features could be identified separately from and were capable of existing independently of its utilitarian features, and, therefore, the costume was copyrightable as a sculpture.
The sculptural features in question included the costume’s combination of colours, lines, shape, and length, but not the cutouts for the wearer’s limbs and face. In reaching its decision, the Third Circuit rejected defendant’s claim that the banana was not copyrightable because it lacked originality. The modicum of creativity embodied in the non-utilitarian sculptural features was all that was required to establish originality.
Finally, the court rejected Kangaroo’s claim that copyrighting the costume would result in the monopolisation of an idea’s expression, and ruled that such a monopoly would not exist in this case because there are other ways to make a costume resemble a banana. For these reasons, the Third Circuit affirmed the ruling of the lower court.
Although copyright owners experienced some setbacks in 2019, many of the most adverse decisions are being appealed. We can look forward to learning whether the appellate courts will reverse any of the setbacks experienced in 2019.
2019 Year in Review: Significant US Copyright Court Rulings
Authors, artists, and musicians have grappled with the limitations of copyright law since the eighteenth century. Significant recent US copyright court rulings illustrate these challenges aptly. The Supreme Court seems to have erected a series of obstacles to enforcing copyrights in the past year. One ruling requires copyright owners to obtain registration of their works before bringing suit, another finds unconstitutional Congress’ attempt to limit the sovereign immunity of states for copyright infringement; and still another limits the types of costs a prevailing copyright owner can recover in an infringement suit.
Jeanne Hamburg concentrates her practice in all aspects of copyright and trademark law, both in litigation and in the transactional area. Resident in the New York City office, she assists clients in a broad range of industries with their IP needs. In each year since 2009, Jeanne has been recognised in New York Super Lawyers® for Intellectual Property and Intellectual Property Litigation. Only 5 per cent of New York attorneys are given this honour. Additionally, Jeanne is ranked in the 2019 World Trademark Review 1000 – The World’s Leading Trademark Professionals, which lists the top 1,000 trademark attorneys in 70 jurisdictions globally.