Category Archives: Unfair Competition

CAD software user interface copyrightable as a compilation of public domain elements

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Shourin Sen - 16 February 2010 – 12:36 pm
Filed under Noncopyrightable Material, Originality, Scenes a Faire, Software, Unfair Competition

Real View, LLC v. 20-20 Technologies, Inc., 2010 WL 455459 (D. Mass. 2010)

Real View and 20-20 Technologies sold competing CAD software that enabled consumers to model kitchens. 20-20 sent Real View a cease-and-desist letter, which Real View responded to by filing a complaint seeking a declaratory judgment that it has not infringed 20-20′s copyrights. 20-20 filed counterclaims for copyright infringement, trade dress infringement, unfair competition, intentional interference with advantageous relations, and violations of Massachusetts General Laws Chapter 93A.

The District Court of Massachusetts (Saris, J.)  held a preliminary hearing to determine whether 20-20 Design contained expression that merited copyright protection, and if so, which parts. The Court’s decision is interesting for its attempt to synthesize the “abstraction, filtration, comparison” test, adopted by the Second Circuit in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) (plaintiff claiming non-literal infringement), and the First Circuit’s decision in Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 820 (1st Cir.1995) (plaintiff claiming literal infringement) that criticized the “abstraction, filtration, comparison” test for obscuring the fundamental question of whether a work merited copyright protection at all.
20-20 presented the court with a list of fifty-four elements that it contended merited copyright protection. The Court found that this allowed it to skip directly to the filtration portion of the “abstraction, filtration, comparison” analysis:

Since 20-20 has offered a list of specifically protected elements, this Court need not engage in the abstraction process described in Altai and eschewed in Lotus. See MiTek Holdings v. Arce Eng’g Co., 89 F.3d 1548, 1555 (11th Cir.1996) (“[I]f the copyright holder presents the court with a list of features that it believes to be protectable …, the court need not abstract further such features.”); ILOG, Inc. v. Bell Logic, 181 F.Supp.2d 3, 11 (D.Mass.2002) (declining to “abstract” and proceeding to “filter” when parties identified elements of a computer program that were allegedly copied). Nevertheless, sitting in a Lotus position, the Court must read Altai through the lens of Lotus and thus filter out elements based on § 102(b) before filtering on the basis of merger, scenes a faire, or public domain.

Analysis

The Court found that many of the elements of the program design did not merit copyright protection when viewed in isolation. The Court however found that a compilation of the individual components, as viewed on the screen display, was protectible. The Court also found that a particular dialog box that enabled users to specify characteristics of kitchen items placed into a design was copyrightable as a compilation of factual information (based on unique selection and arrangement).

Individual components that were found to be in the public domain when not evaluated as part of a compilation

  • The sequence of sub-windows on the left side of the screen: information box, edit box, hierarchical catalog box, drag and drop listing, and search box.
  • The items in various dialog boxes.
  • “Save as Image” function.
  • A row of command categories on the top of the screen display (File, Edit, View, Place, Project, Design, Notes, Dimensions, Render, Preferences, Window, and Help).
  • The ability to add notes via a dialog box.
  • Three methods used to add a wall. One of the methods was consisted of using a menu command function; a second, pressing a button on a toolbar.
  • An “idiosyncratic” sequence of mouse clicks through which a user could draw walls (regardless of the novelty of the sequence).
  • The ability to terminate a wall sequence through a single left mouse click behind the most recent wall drawn.
  • An edit box and default room configuration users can use to create walls.
  • A submenu that allows a user to move, rotate, extrude, and delete a wall.
  • A dialog box that allows users to modify the appearance of a wall or a placement zone.
  • A drop and drag method of placing items such as cabinets; a method through which a user can select an item from a list and click “place”; and a method through which a user can input coordinates.
  • Two means through which a user could resize windows and doors Options for editing countertops, e.g, “Add Bevel,” “Notch,” and “Rotate.”

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Cal Court of Appeals finds that First Amendment bars right of publicity claims against Rolling Stone

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Shourin Sen - 1 February 2010 – 9:00 am
Filed under First Amendment, Right of Publicity, Unfair Competition

Stewart v. Rolling Stone LLC, 2010 WL 317016 (Cal. App. 1 Dist. 2009)

The California First Appellate District (Marchiano, Margulies, Dondero writing) issued a First Amendment decision in an interesting right of publicity case on Thursday. The class action plaintiffs were a group of one hundred and eighty-six Indie Rock musicians whose band names were featured in a centerfold spread “Indie Rock Universe” in the November 15, 2007 issue of Rolling Stone.

The spread contained five pages of content and four pages of advertisements for Camel cigarettes. The plaintiffs brought three claims against Rolling Stone and R.J. Reynolds: (1) the unauthorized use of name in violation of California Civil Code section 3344, (2) a common law right of publicity claim for unauthorized use of name for commercial advantage, and (3) a claim for unfair competition claim for violation of California Business and Professions Code sections 17200-17203.

At bar, Rolling Stone appealed from the trial court’s order denying its special motion to strike a class action complaint under California’s Anti-SLAPP provisions. Rolling Stone (R.J. Reynolds wasn’t a party on appeal) argued that  there wasn’t a triable issue as to whether the foldout constituted commercial speech, and that the plaintiffs did not present evidence sufficient to establish that they had a probability of prevailing on the merits. The California Court of Appeals agreed and reversed, finding that Rolling Stone was shielded by the First Amendment’s Freedom of Speech and Press protections.

Was the speech commercial? Was clear and convincing evidence of actual malice required?

The trial court found that the foldout was commercial speech on behalf of Rolling Stone because the magazine, through its “layout decision,” published “an allegedly integrated 9-page advertisement” for Camel cigarettes. The trial court found that a trier of fact could conclude that the feature was commercial speech because it was “inextricably intertwined” with the advertisement. The Court of Appeals looked to both the Ninth Circuit’s and California Supreme Court’s tests for commercial speech and found that the speech was non-commercial:
Simply put, there is no legal precedent for converting noncommercial speech into commercial speech merely based on its proximity to the latter. There is also no precedent for converting a noncommercial speaker into a commercial speaker in the absence of any direct interest in the product or service being sold. We thus conclude that the Feature is noncommercial speech.

The Court of Appeals next looked to New York Times Co. v. Sullivan, 376 U.S. 254, 279-280 (1964)  for the proposition that a “plaintiff who is either a public official or public figure may not recover damages for defamation absent proof that the defendant published defamatory statements with ‘actual malice,’ that is, either with knowledge of their falsity or with reckless disregard for the truth.” The Court of Appeals found that as non-commercial speech the plaintiff needed to show actual malice for the commercial misappropriation claims brought under the common law and Section 3344. The Court dismissed finding that the plaintiff could not present evidence that would surmount the First Amendment defense.

Freedom of Press

The Court of Appeals further found that the plaintiff’s claims were also barred by the First Amendment Freedom of Press protections:

It is well established that “The choice of material to go into a newspaper, and the decisions made as to limitations on the size and content of the paper, and treatment of public issues and public officials-whether fair or unfair-constitute the exercise of editorial control and judgment. It has yet to be demonstrated how governmental regulation of this crucial process can be exercised consistent with First Amendment guarantees of a free press as they have evolved to this time.” ( Miami Herald Publishing Co., Division of Knight Newspapers, Inc. v. Tornillo (1974) 418 U.S. 241, 258 [41 L.Ed.2d 730, 94 S.Ct. 2831].) “[T]he courts have long held that the right to control the content of a privately published newspaper rests entirely with the newspaper’s publisher. The First Amendment protects the newspaper itself, and grants it a virtually unfettered right to choose what to print and what not to.” ( Eisenberg v. Alameda Newspapers, Inc. (1999) 74 Cal.App.4th 1359, 1391 [88 Cal.Rptr.2d 802].)

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

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Shourin Sen - 23 February 2009 – 8:43 am
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.

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