Monthly Archives: February 2009

Judge Matz denies motion to dismiss infringement claim: floral design wasn’t a generic copy of natural phenomena

Filed under Natural Phenomena

L.A. Printex Industries, Inc. created two-dimensional graphic designs that were used on textiles, primarily in the garment industry. L.A. Printex brought a copyright action against a number of clothing retailers and vendors, alleging infringement of one of L.A. Printex’s floral designs (on right).

Allegedly infringed work

Allegedly infringed work

Simply Fashion Stores, Ltd., one of the defendants, moved to dismiss the claim on the grounds that the floral design at issue was derived from elements found in nature,  and as such, is only granted “thin” exclusive rights.   Simply Fashion argued that because L.A. Printex was only granted “thin” exclusive rights, Simply Fahion’s design must be virtually identical to L.A. Printex’s for a Court to find infringement.

Judge Matz, of the Central District Court of California (also currently presiding over UMG recordings v. Veoh), rejected the argument on two grounds.

First, Judge Matz found that the design at issue wasn’t a generic copy of natural phenomena:

The floral patterns in Plaintiff’s design are, however, comprised of many different depictions of flowers, some relatively realistic and others more creative or abstract, as well as different kinds of curls, which vary in how realistically they depict the stems and tendrils of flowers and plants. Simply Fashion has made no effort to identify the kinds of natural flowers and plants that these elements supposedly depict. Indeed, upon a cursory visual inspection, most of Plaintiff’s flowers and curls look more graphic and stylized than do flowers and stems in nature. Hence, Simply Fashion’s conclusion that Plaintiff’s design elements are generic copies of natural phenomena is unsubstantiated.

Secondly, Judge Matz found that even if the design consisted of generic copies of natural phenomena, the unique arrangement of the flowers may warrant exclusive rights.

Judge Matz applied the Ninth Circuit’s two-part objective extrinsic and subjective intrinsic test, and denied the motion to dismiss.  The Court couldn’t reach the conclusion that no reasonable jury could find infringement.

L.A. Printex Industries, Inc. v. Global Gold, Inc., 08 cv 7316 AHM, 2009 WL 453105 (C.D.Cal. Feb. 20, 2009).

fashion attorneys

EMI files suit against music search engine SeeqPod and music-on-demand site Favtape

Filed under DMCA

EMi filed suit against music search engine SeeqPod and music-on-demand site Favtape this past Friday in the S.D.N.Y.  SeeqPod is a search engine that indexes and finds third-party websites that host music and video content.   SeeqPod allows a user to play music from their search engine using an Adobe Flash interface without having to individually visit the third-party sites from which they stream content.  This lawsuit follows a similar suit filed by Warner Music Group roughly one year.

EMI brought claims for direct, contributory and vicarious copyright infringement, and inducement of copyright infringement.  EMI also alleged that SeeqPod and Favtape violated New York unfair competition law by commercially exploiting their pre-1972 recordings.

While EMI didn’t file claims against investors in SeeqPod and Favtape, the complaint contained the following language:

SeeqPod has been able to attract millions of dollars of financial support from various “angel” investors.  Upon information and belief, each of these corporations have also contributed to, facilitated and profited from the infringing conduct of SeeqPod, the other SeeqPod defendants, and SeeqPod users.  Plaintiff reserved the right to add as defendants SeeqPod’s investors once the full extent of their contribution to, and facilitation of, the infringing conduct described herein is know.

EMI may be waiting to see whether UMG Recordings, Inc. refiles claims against Veoh’s investors in an amended compliant, and if they do, the outcome of those claims, before they decide whether to file suit against SeeqPod’s investors.

C.D. IL denies summary judgment for alleged registration hijinks

Filed under Registration

Design Ideas LTD. v. Things Remembered, Inc., 2009 WL 426218 (C.D.Ill. Feb. 20, 2009)

Design Ideas marketed wire sculptures of flowers.  The sculptures were designed by an employee and produced by a Chinese manufacturing firm.  Things Remembered marketed a metal basket decorated with wire flower sculptures.  Design Ideas brought suit for copyright infringement.  Things Remembered moved for summary judgment on three grounds related to registration:

Collective work

Design Ideas registered the series of flower sculptures on one application form.  Times Remembered argued that this registration method created a collective work, and that Design Ideas was only able to bring an action for infringement of the entire collective work as a whole.  Thus, Things Remembered argued that Design Ideas couldn’t bring a claim alleging infringement of the “individual wire flower sculptures.”

Judge Scott of the Central District of Illinois pointed to 37 C.F.R. § 202.3(b)(4)(i)(A):

(4) Registration as a single work. (i) For the purpose of registration on a single application and upon payment of a single registration fee, the following shall be considered a single work: (A) In the case of published works: all copyrightable elements that are otherwise recognizable as self-contained works, that are included in a single unit of publication, and in which the copyright claimant is the same….

The Court found that the various individual wire sculptures were recognizable as self-contained works. Because all the wire sculptures were included in a single unit of publication, called Basic Book, the Court found that Design Ideas could allege infringement of the individual wire sculptures.

Not the author

Things Remembered argued that Design Ideas’ registration was invalid because their manufacturer in China was the actual author.  The court rejected this argument stating that author is the individual who “exercised artistic control over the work and acts as the inventor or mastermind.”

Work for Hire

Things Remembered argued that Design Ideas’ registration was invalid because they misrepresented that the works at issue were made-for-hire.  The Court found that evidence showed that the wire flowers were created by an employee within the course of their employment, and thus constituted a work-for-hire.


Associated Press v. All Headline News: A gem of a choice of law issue that wasn’t addressed; attribution as trademark infringement

Filed under Choice of Law, Preemption, Unfair Competition

Associated Press v. All Headline News Corp. et al, 08 cv 00323 PKC, 2009 WL 382690 (S.D.N.Y. Feb. 17, 2009).

I finally have had the chance to work through Judge Caste’s order from this past Tuesday in Associated Press v. All Headline News.  The facts in this case are relatively straightforward. AP alleged that All Headline News, a Florida corporation, collected their stories from the internet, and either rewrote or copied them in full.  AP brought suit for copyright infringement, and violations of the DMCA (17 U.S.C. § 1202), Lanham Act, and New York common law.

All Headline News filed a motion to dismiss the New York state misappropriation claim on the grounds that the Court should apply Florida unfair competition law, which they alleged doesn’t recognize misappropriation.  AP argued the reverse: Florida state unfair competition law recognizes misappropriation and, regardless, the Court should apply New York state law.

Judge Caste applied New York State choice of law rules, which establish a two step evaluation:

  • Determine whether there is an actual conflict between the laws of the jurisdictions involved; and if there is,
  • The law of the jurisdiction having the greatest interest in the litigation should be applied.

The Court punted on the question of whether Florida unfair competition recognizes misappropriation and assumed conflict, finding that neither party had “persuasively demonstrated” that Florida would or wouldn’t recognize the claim.

Moving on to which jurisdiction had the “greatest interest,” the Court looked to NY tort law that states that when a defendant’s allegedly tortuous conduct arises in one jurisdiction and the injury occurs in another, the location of the tort is the place “where the plaintiff suffered the injury sued upon.”  Thus, because AP was headquartered in NY and suffered injury in NY, the Court found that NY law should apply.

The Court denied the motion to dismiss finding that the Second Circuit has “unambiguously” held that misappropriation, brought under NY unfair competition law,  is not preempted by the Copyright Act.

The gem of a choice of law issue that wasn’t addressed

So far so good, right?  I’m not certain.  This wouldn’t affect the outcome, but it appears to me the wrong choice of law issue was briefed.

The choice of law issue at play isn’t whether a state recognizes misappropriation, but whether the federal courts in a particular jurisdiction have found that misappropriation is preempted.  Presumably, every state’s unfair competition tort would recognize misappropriation.  If Florida doesn’t recognize misappropriation, it’s not because their tort of unfair competition doesn’t reach the claim.  Instead, it would be due to the fact that the Eleventh Circuit has ruled that the claim is preempted by copyright law.  Whether a state has a tort for misappropriation is really a question of federal law, not state law.

Would the Second Circuit be forced to apply the Eleventh Circuit’s interpretation of federal law if it was different?  I would assume that the answer is no.   It would appear to me that, regardless of whether the Court applied Florida or New York state unfair competition law, the question of whether a misappropriation claim is preempted,  should fall on the Second Circuit’s interpretation of the Copyright Act.

These types of fed courts issues aren’t my strong suit. (Which can be seen in my analysis of Nicholson v. Shafe.  After sleeping on it, I think there’s a lot more to the case than I first thought.)  If anyone has comments on this issue, I’d love to hear them.

Attribution as trademark infringement

The AP brought a couple of creative claims in their complaint, one of which may be of particular interest.  The AP claimed that All Headline News infringed their trademark, under section 32 of the Lanham Act, by attributing them when All Headline directly copied parts of a story. (E.g., “[a]ccording the Associated Press.”)  AP alleged that by doing this, All Headline News mislead readers into believing that their stories were issued by AP.  Judge Caste dismissed the claim.


publishing law attorneys

The not so daily, daily copyright roundup

Filed under Daily Copyright Roundup

The directors of the law libraries at ten U.S. law schools have released an open letter titled the “Durham Statement on Open Access to Legal Scholarship.”  The letter calls for all law schools to make the “legal scholarship they publish available in stable, open, digital formats in place of print.”  (H/t John Palfrey.)

Tech Daily Dose has a great run down on upcoming policy events for this week.  Two particular events of note:

Senate Judiciary Chairman Patrick Leahy and House Judiciary Chairman John Conyers will join House Foreign Affairs Chairman Howard Berman, House Oversight and Government Reform ranking member Darrell Issa and Rep. Marsha Blackburn, R-Tenn., for a Tuesday briefing on legislation they introduced to end a longstanding copyright royalty exemption granted to AM and FM radio stations. The rally organized by the MusicFirst Coalition will feature appearances by artists and musicians from across genres and decades.

* * * *

The Property Rights Alliance will unveil its 2009 International Property Rights Index at the National Press Club on Tuesday. The event will be followed with a discussion by a panel of experts on what the rankings means for property rights in the 111th Congress and around the globe. The alliance’s annual study measures the significance of physical and intellectual property rights and their protection for economic well-being. The index includes data for 115 countries, representing 96 percent of world GDP.

David Hoffman comments on the New York Times article about making PACER free:

In my view, the real effect of costly public dockets is that sophisticated & wealthy parties are given a huge advantage in litigation: they can afford to purchase information about judges’ actual practices in resolving cases. Such trends are not readily discernible in unrepresentative opinions. By contrast, if PACER were free and easily searchable, everyone could see how cases are actually resolved, instead of the privileged few. The result: PACER permits lawyers to extract more rents.

Carolyn E. Wright discusses why Facebook’s old (now readopted) Terms of Use may be potentially worrisome for photographers.

Afro-IP discusses the IIPA’s inclusion of Egypt and Nigeria on their list of countries that they suggest the United States Trade Representative should place on their Special 301 Report.

Ray Beckerman issues a “call to action” for people to urge President Obama not to intervene on behalf of the RIAA in Sony BMG Music Entertainment v. Cloud.

Ben Sheffner reports that the C.D. Cal. has declined to dismiss a suit filed by Jackson Browne over the Ohio Republican Party’s use of the song “Running on Empty” in a web video.

And finally, Kotaku reports on Pecover vs. Electronic Arts, a case alleging that Electronic Arts has engaged in anti-competitive behavior in violation of the Sherman Act,  in conjunction with securing an exclusive deal with the NFL-NFLPA.   Says Kotaku, the “deal []basically makes it impossible for 2KGames to keep making games like NFL2K.”  Court transcripts feature Judge Vaughn Walker of the Northern District of California discussing the possibility of playing the games at trial:

THE COURT: I know absolutely nothing about video games, but how in the world would the quality of a video game be affected in this fashion?

MR. PAYNTER: Well, in the same way that, any time, Your Honor, a market becomes uncompetitive, there’s not the same incentive by the entity that’s monopolized the market to continue to invest in that product. And you know, I’m not a video game player, either, Your Honor… But my understanding is, you know, there are websites out there that review these games. And you know, we have alleged that, at the time, that the Take-Two game was widely viewed as a higher-quality game, presumably, Your Honor, in terms of the graphics.

THE COURT: Maybe that would be fun, a fun issue for us to decide or allow a jury to decide that. We could have a lot of fun in this case….

* * * * *

THE COURT: So that means we wouldn’t have a jury trial. We would have a bench trial. It would be a lot easier to play the games.

MR. WALL: It would be, yeah. We would only need one machine. It would be much better. But we would have a bench trial where what? Your Honor is going to assess the relative quality of games before and after exclusivity contracts? That should be interesting.

THE COURT: I’m up for any challenge.

copyright attorneys

Hao Dong: “Illegal works” and WTO DS362

Filed under Academia

Hao Dong, a PHD Candidate at the City University in Hong Kong, Lecturer at Yunnan University (mainland China), and publisher of a great blog on IP issues, has posted an article at SSRN on “illegal works” and the recent WTO decision in the U.S.-China dispute.  The abstract:

This article reviews the copyright dilemma of illegal works in the context of Chinese copyright system. Under the current law, not merely the works with illegal content, but also the works did not fulfill the procedural requirement will be denied the copyright protection. Article 4(1) may find legitimacy in the domestic level, but does not comply with the WTO law. The three criteria in Article 13 of TRIPS Agreement can be applied to examine Article 4(1). The key problem lies in the uncertainty of the scope of denial of copyright. This leads to the Super-national Treatment. Based on these analyses, the last part of the article proposed some suggestions for the future legal reform.

International Copyright Representation

11th Cir.: Rooker-Feldman doctrine allows for federal review if action is filed when a state appeal is still pending

Filed under Jurisdiction

How about some fed courts to go with your morning coffee?  The 11th Circuit addressed a couple of interesting procedural issues  in a copyright suit yesterday.


Nicholson filed a copyright infringement suit against Shafe in federal court.  The N.D. Ga. granted summary judgment for Shafe on the grounds that the work at issue was a joint work, thus barring an infringement action — an individual can’t infringe their own copyright.

Nicholson then filed a state law claim for an accounting arguing that, as is customary for joint authors, she was entitled to 50% of the profits that arose from the joint work.  Why file in state court?  See Jay Dratler, Licensing of Intellectual Property:

State law governs the accounting for and sharing of profits, whether or not there is an agreement.  Therefore, in the absence of diversity of citizenship or a federal claim from which an action for apportionment can pend, a claim for a share of a co-owner’s profits must be brought in state court.  The reason is that the legal theory underlying an accounting is constructive trust or restitution under state law.  Accordingly, an action for apportionment of profits has no basis for federal jurisdiction by itself.

The state trial court concluded that the federal ruling that the work at issue was a joint work was dicta.   The state court allowed the matter of what ownership rights Nicholson had in the publication and what if any compensation she was due go to a jury.   The  jury returned a verdict in favor of Shafe, finding that Nicholson was fully compensated for her work and had no ownership rights.  The Georgia State Appellate Court affirmed,  holding that collateral estoppel didn’t apply because the federal finding on the joint work wasn’t essential to the outcome.

However, while the appeal to the Georgia state appellate court was pending,  Nicholson had filed a “Complaint for Declaratory Judgment” in the N.D. Ga. alleging two causes of action: (1) declaratory judgment to establish that the Appellants and the Appellees were “equal co-owners of the subject work” and that the Appellants were entitled to an accounting; and (2) declaratory judgment to determine the applicability of federal preemption of copyright accounting matters.

The N.D. of Ga. dismissed the action sua sponte based on lack of jurisdiction, applying the Rooker-Feldman doctrine, and ordered sanctions for costs and attorneys’ fees.

The Rooker-Feldman doctrine

The Rooker-Feldman doctrine, speaking in broad terms, bars federal district courts from reviewing state court decisions.  As the 11th Circuit explained:

Underlying the analysis in Rooker and Feldman is the interpretation of two federal statutes: 28 U.S.C. § 1331 and 28 U.S.C. § 1257. First, section 1331 provides that federal district courts “shall have original jurisdiction of all civil actions arising” under federal law, not appellate jurisdiction. 28 U.S.C. § 1331. Second, section 1257 provides for Supreme Court review of state court judgments. . .  28 U.S.C. § 1257(a). Taken together, the Rooker-Feldman doctrine draws a “negative inference” from section 1257: “because Congress only provided for review of state court judgments by the Supreme Court, Congress therefore intended to preclude lower federal courts from exercising such review.”

The Northern District of Georgia decision based on Amos

The N.D. GA. found that Nicholson was barred from proceeding in federal court by using a four-factor test from Amos v. Glynn County Bd. of Tax Assessors, 347 F.3d 1249, 1266 n.11 (11th Cir.2003).

The 11th Circuit rejection of Amos

Judges Wilson, Cox and Fawsett reversed, calling into question the continued viability of the Amos test.  Wrote Judge Wilson:

Rather than apply Amos, we adhere to the language in Exxon Mobil, delineating the boundaries of the Rooker-Feldman doctrine: “cases brought by state-court losers complaining of injuries caused by state-court judgments rendered before the district court proceedings commenced and inviting district court review and rejection of those judgments.” Exxon Mobil, 544 U.S. at 284.  Because the Appellants commenced the federal district court action before the end of state proceedings in Georgia, we find that the Rooker-Feldman doctrine does not apply here.

Was the state court proceeding at its end?

Lastly, the 11th Circuit addressed the issue of whether the state proceeding in Georgia was already at its end:   i.e. “whether the entry of judgment on a jury verdict in a state trial court pending appeal marks the end of state proceedings for purposes of the Rooker-Feldman doctrine.”  The 11th Circuit looked for “guidance” to Federacion de Maestros de Puerto Rico v. Junta de Relaciones del Trabajo de Puerto Rico, 410 F.3d 17, 21 (1st Cir.2005), although it refrained from explicitly adopting the 1st Circuit test.

In Federacio, the First Circuit found that state proceedings have “ended” in three situations:

  • (1) “When the highest state court in which review is available has affirmed the judgment below and nothing is left to be resolved”;
  • (2) “If the state action has reached a point where neither party seeks further action”; (“If a lower state court issues a judgment and the losing party allows the time for appeal to expire, then the state proceedings have ended”); and,
  • (3) “if the state court proceedings have finally resolved all the federal questions in the litigation, but state law or purely factual questions (whether great or small) remain to be litigated.”

The 11th Circuit found that the second situation in Federacion implies that a state proceeding has not ended when a state court loser seeks “further action,” such as an appeal.  Thus, the 11th Circuit found that the federal action for an accounting was not barred by the state action, and likewise dismissed the District Court’s order for attorneys’ fees and costs.

In conclusion, we agree with our sister circuits (the First, Eighth and Tenth Circuits) and hold that state proceedings have not ended for purposes of Rooker-Feldman when an appeal from the state court judgment remains pending at the time the plaintiff commences the federal court action that complains of injuries caused by the state court judgment and invites review and rejection of that judgment. At the time of the filing of this action, the state proceeding in the Georgia courts had not ended but remained pending on appeal and therefore Rooker-Feldman did not divest the United States District Court for the Northern District of Georgia of jurisdiction.


Jeanette C. Nicholson, PH.D. v. James C. Shafe, 07-02724 CV-BBM, 2009 WL 385579 (11th Cir. Feb 18, 2009).

copyright litigation attorneys

C.D. Cal. denies motion for summary judgment for invalidity of copyrights (fraud on the copyright office)

Filed under Registration

Crew Knitwear, Inc. sought a finding that U.S. Textile Printing’s copyrights in designs were invalid.  Crew alleged that U.S. Textile engaged in a broad pattern of fraud in which they routinely registered design patterns created by others.  Crew argued that U.S. Textile fraudulently secured the copyright registration in the designs at issue by intentionally misrepresenting to the Copyright Office that the designs were works made for hire.  Judge Wright II of the Central District of California denied the motion for summary judgment, finding that the issue of how the designs were created was better determined by a trier of fact:

A party seeking to establish such fraud, and thereby rebut the presumption of copyright validity . . . bears a heavy burden. Absent intent to defraud and prejudice, inaccuracies in copyright registration do not bar actions for infringement.” S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086 (9th Cir.1989). On the record before it, the Court is of the opinion that disputed issues of material fact preclude summary judgment. Equally competing evidence has been presented, for example, as to whether the designs at issue were works made for hire, and therefore as to whether Defendants intended to defraud the Copyright Office by registering the subject designs as such.


fashion attorneys

Equitable estoppel as a defense against infringement

Filed under News

There was a decision in the District of Connecticut last week that showcased the use of equitable estoppel.

G. Berry Schumann was a pathologist who, along with his wife, developed a urinalysis test.  In 1993, Schumann and Dianon Systems, the plaintiff in this action, began marketing the urinalysis test.  Schumann consulted with Dianon continuously as a medical director, and his corporation, Schumann Cytology Laboratories, was given office space at Dianon’s facilities. During much of that time, Schumann was responsible for overseeing Dianon’s scientific and technical operations relating to the urinalysis test.  Sales of the Schumann urinalysis test steadily increased from approximately $2 million in 1994 to nearly $20 million in 2006.

In this action, Schumann counterclaimed, alleging that Dianon had copied from manuals and a textbook that he had created in order to produce an updated manual. Dianon had made fewer than 50 copies of the updated manual and only intended its use to be internal.

Schumann was an independent contractor, but there was no clause in his consulting agreement with Dianon that assigned the rights in the materials he created in the course of his services.  Dianon moved for summary judgment on the counterclaim on the grounds of equitable estoppel, implied license, and that the claim was barred by the statute of limitations (injury rules).

Equitable estoppel is properly invoked where the enforcement of rights of one party would work an injustice upon the other party due to the latter’s justifiable reliance upon the former’s words or conduct…. [S]ee 4 Nimmer on Copyright § 13.07 (noting that equitable estoppel applies in copyright infringement actions, and may deprive a plaintiff of an otherwise meritorious copyright infringement claim)…. A copyright defendant invoking equitable estoppel must show that: 1) the plaintiff had knowledge of defendant’s infringing acts, 2) the plaintiff either intended that defendant rely on his acts or omissions or acted or failed to act in such a manner that defendant had a right to believe that it was intended to rely on plaintiff’s conduct, 3) the defendant was ignorant of the true facts, and 4) the defendant relied on plaintiff’s conduct to its detriment.” Dallal v. New York Times Co., 05-2924, 2006 WL 463386 (2d Cir. Feb. 17, 2006) (h/t Media Law Prof Blog).

The Federal Circuit summarized the difference between equitable estoppel and implied license in Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 103 F.3d 1571, 1581 (Fed. Cir.

The primary difference between the estoppel analysis in implied license cases and the analysis in equitable estoppel cases is that implied license looks for an affirmative grant of consent or permission to make, use, or sell: i.e., a license. Equitable estoppel, on the other hand, focuses on “misleading” conduct suggesting that the patentee will not enforce patent rights.  [Citation omitted.]

Judge Bryant granted summary judgment on the grounds of equitable estoppel finding that the record showed that on two separate occasions, Schumann had revised pages of the manual from which the updated manual was produced.  The Court further noted that Dianon employees had used the updated manual while Schumann consulted with the company, and that he didn’t object to it at that time.



  • Laboratory Corporation Of American Holdings, et. al: Parker Poe Adams & Bernstein, LLP (Raleigh, NC); Cantor Colburn LLP (Hartford, CT).
  • G. Berry Schumann, et. al: DeLio & Peterson LLC (New Haven, CT).

copyright litigation attorneys

Daily Copyright Roundup

Filed under Daily Copyright Roundup

Tech Daily Dose announced that National Association of Broadcasters has reached a deal with SoundExchange.  The deal will provide discounts on previously-set rates for 2009 and 2010 and establish rates for 2011-2015 for terrestrial radio stations that simulcast programming or create new stand-alone internet stations .

Under the agreement, rates for simulcasts or Web channels operated by local stations are reduced for the first two years by about 16 percent then gradually increase through 2015 — from $0.0015 per streamed sound recording in 2009 to $0.0025 per stream by 2015.

* * * * *

Still to come: Settlements between SoundExchange and small commercial webcasters; religious broadcasters; and members of the Digital Media Association.

The RIAA posts their Music Rules! classroom series.

Photo Attorney Blog notes that under Facebook’s new Terms of Use, you must grant the site an irrevocable, perpetual, transferable license to use any content that you post.

The Berkman Center for Internet and Society has extended the deadline to apply for a summer internship until March 6, 2009.

There is a new empirical paper on Chinese enforcement of IPRs up at SSRN:  Alan J. Cox & Kristina Sepetys, Intellectual Property Rights Protection in China: Trends in Litigation and Economic Damages (2009).

And finally, David Ross and Ed Colbert of Kenyon & Kenyon discuss Fairey v. Associated Press.

copyright attorneys