Home » Copyright Law Updates » New Judicial Opinions
Copyright Law Summaries
| » | New Judicial Opinions |
| New Settlements and Verdicts | |
| New Statutes, Regulations and Rules | |
| New Federal Register Notices | |
| New Proposed Legislation |
Second Circuit Nullifies Steinbeck Descendants' Bid to Terminate Penguin's Publication Rights
Penguin Group (USA), Inc. v. Steinbeck
Nos. 06-3226-cv, 06-3696-cv,
U.S. Court of Appeals for the Second Circuit, 08/13/2008
Holding: Reversing a decision of the U.S. District Court for the Southern District of New York, the U.S. Court of Appeals for the Second Circuit ruled that a 1938 agreement in which famed author John Steinbeck gave the sole and exclusive rights to publish "Of Mice and Men" and several other works was terminated and superseded by a 1994 agreement between his widow, Elaine Steinbeck, and plaintiff-appellant Penguin Group (USA), Inc. ("Penguin"). According to the Second Circuit, the validity of the 1994 agreement rendered invalid a copyright termination notice issued by defendant-appellee Thomas Steinbeck, the author's surviving son, and Blake Smyle, the sole surviving child of John Steinbeck's other son, the deceased John Steinbeck IV (collectively "Steinbeck Descendants"). The District Court had earlier upheld the validity of the notice of termination given by defendants-appellees in 2004 that purported to terminate the 1938 grant of copyright licenses. On appeal, the Second Circuit reversed. Specifically, it reasoned that because the 1994 agreement terminated and superseded the 1938 agreement, it also eliminated the right to terminate the grants contained in the 1938 agreement under the 1976 Copyright Act, 17 U.S.C. Section 304(c). On the basis of the foregoing, the Second Circuit remanded the case back to the District Court for entry of judgment in favor of Penguin. More...
Federal Circuit Holds That Open Source Code Licensors Are Entitled to Copyright Protection Governing Use of Code
Robert Jacobsen v. Matthew Katzer, et al.
No. 2008-1001,
U.S. Court of Appeals for the Federal Circuit, 08/13/2008
Holding: In a cutting edge case involving open source programming code licensing, the U.S. Court of Appeals for the Federal Circuit held that distributors of free open source programs can rely on copyright law and sue for monetary damages if the terms of their use licenses are violated. In this case, plaintiff-appellant Robert Jacobsen ("Jacobsen"), who held a copyright to a computer programming code, made that code available for free public download from a website pursuant to an "open source", or public license (the “Artistic License”). In the underlying case, the U.S. District Court for the Northern District of California denied Jacobsen’s motion for a preliminary injunction against defendants-appellees Matthew Katzer and Kamind Associates, Inc.(collectively "Katzer/Kamind") whom Jacobsen accused of copying copyrighted code from his website and incorporating it into Katzer/Kamind's software packages in violation of the Artistic License. The District Court ruled that Jacobsen’s Artistic License precluded copyright infringement liability. On appeal, the Federal Circuit reversed, holding that copyright holders who engage in open source licensing have the right to control the modification and distribution of their copyrighted material whether or not the license is provided free or charge. The language of the Artistic License at issue put conditions on the use of the open source programming code, and a violation of those conditions gave rise to a proper claim here. On such basis, the Federal Circuit vacated the denial of the motion for preliminary injunction, and remanded the case back to the District Court for further review. More...
Playback of Films on Cablevision's Remote Storage DVR System Not Copyright Infringement, Second Circuit Rules
The Cartoon Network LP, LLLP, et al. v. CSC Holdings, Inc. et al.
Nos. 07-1480-cv(L) & 07-1511-cv(CON),
U.S. Court of Appeals for the Second Circuit, 08/04/2008
Holding: In this appeal, the U.S. Court of Appeals for the Second Circuit reversed a decision of the Southern District of New York and held that Cablevision Systems Corp. ("Cablevision") did not commit direct copyright infringement through the playback of copyrighted movies via its "Remote Storage Digital Video Recorder" ("RS-DVR") – a technology that lets customers store recorded films on a central server, rather than on a hard drive in the customers’ home, like standard DVRs. Plaintiffs-appellees, producers of copyrighted movie and television programs that they provide to Cablevision, filed the underlying copyright infringement suit, contending that the operation of the RS-DVR system would directly infringe their copyrights through unauthorized reproductions and public performance of their protected works. The U.S. District Court for the Southern District of New York found in favor of plainitffs-appellees. On appeal, however, the Second Circuit reversed the summary judgment award. Specifically, the Second Circuit found that it is the customer, and not Cablevision, who does the unauthorized copying, the same way that a VCR user who operates the VCR machine is the one who makes "copies" of the video cassette. Because each RS-DVR playback transmission is made to a single subscriber using a single unique copy produced by that subscriber, the Second Circuit concluded that such transmissions are not performances “to the public,” and therefore do not infringe any exclusive right of public performance. On the basis of the foregoing, the Second Circuit issued summary judgment to defendant-appellant Cablevision. More...
NY District Court Rules Cigar Aficionado Suit Against Cigar500.com May Proceed to Trial
M. Shanken Communications, Inc. v. Cigar500.com, et al.
No. 07 Civ. 7371 (JGK),
U.S. District Court for the Southern District of New York, 07/07/2008
Holding: In this copyright and trademark infringement suit relating to plaintiff's Cigar Aficionado magazine and trademarks, the U.S. District Court denied defendant website operators' motion to dismiss. Defendants, charged for displaying on their website both the protected marks and a recent issue of the magazine, sought to dismiss the suit for lack of personal jurisdiction and under the doctrine of fair use. The District Court rejected both arguments, stating that defendants exhibited minimum contacts with New York, such as transacting steady business with New York residents via their interactive website. With respect to defendants' "fair use" argument, the District Court found that there were issues of material fact as to the adverse impact of the defendants’ use of the copyrighted works on the market for the plaintiff’s product. For these reasons, the District Court concluded that defendants’ claim of fair use cannot be decided on a motion to dismiss. More...
Federal Circuit Affirms Dismissal of Copyright Infringement Claims Against a Government Defendant for Lack of Jurisdiction Based on Sovereign Immunity
Blueport Co., LLC v. U.S.
No. 2007-5140,
U.S. Court of Appeals for the Federal Circuit, 07/25/2008
Holding: In this appeal, the U.S. District Court for the Federal Circuit affirmed the Court of Federal Claims' ("CFC") dismissal of the claims of Blueport Co., LLC ("Blueport") against the United States Air Force as a government defendant. Blueport brought claims of copyright infringement and violations of the Digital Millennium Copyright Act of 1998 ("DMCA") against the United States Air Force for having infringed on Blueport's copyrighted software. The CFC dismissed Blueport's action for lack of jurisdiction because the CFC held that the government had not waived its sovereign immunity under 28 U.S.C. Section 1498(b). On appeal, the Federal Circuit sustained the CFC's findings, and rejected Blueport’s argument that the government needed to prove that its suit fell under one of the three exceptions to sovereign immunity stated under Section 1498(b). According to the Federal Circuit, the CFC lacks jurisdiction over any copyright infringement claim within the scope of the Section 1498(b) provisos. With regard to Blueport's DMCA claim, the Federal Circuit likewise found that the Air Force similarly had not waived its sovereign immunity for DMCA claims. In so doing, the Federal Circuit cited the rule that a waiver of sovereign immunity cannot be implied but must be unequivocally expressed. More...
Copyright Law Commentaries
Following are Copyright Law Commentaries elaborating on the significance of the most important of the Copyright Law Summaries.
Derek Andrew v. Poof Apparel: No statutory damages available when copyright infringement begins pre-registration
Derek Andrew v. Poof Apparel
Posted: 08/07/2008
Commentary: Under the Copyright Act, a registered copyright owner has the option to elect to recover either statutory damages or actual damages for infringement. Because actual damages are often difficult to prove, the option to elect statutory damages is extremely valuable. Section 412 of the Copyright Act, however, limits the option of statutory damages available to a copyright owner when infringement occurs prior to the registration of the copyright in question, even if the infringement also occurs after the registration. In Derek Andrew v. Poof Apparel, 528 F.3d 696 (9th Cir. 2008), the Ninth Circuit Court joined the Second, Fourth, Fifth, and Sixth Circuit in barring the option of statutory damages for ongoing infringement, that is, where infringement begins pre-registration and continues post-registration. The lesson for copyright owners is clear: get your copyright registered as soon as possible to maximize the types of recovery available to you against infringers. More...
Related summary: Ninth Circuit Reverses Statutory Damage Award against Apparel Company, But Remands Attorneys’ Fees Award
Litecubes v. Northern Lights Products: Extending the Extraterritorial Reach of Subject Matter Jurisdiction
Litecubes, L.L.C. and Carl R. Vanderschuit v. Northern Lights Products, Inc.
Posted: 05/13/2008
Commentary: The Court of Appeals for the Federal Circuit’s decision in Litecubes LLC v. Northern Light Products clarified some critical elements of IP litigation jurisprudence. Litecubes LLC v. Northern Light Products, ___ F3d ___, 2008 WL 1848659 (C.A. Fed. (Mo.)) The Litecubes Court took the opportunity to clarify a few issues that have been the source of confusion in the IP arena, particularly regarding infringement claims with extraterritorial aspects. Specifically, the Litecubes Court addressed the fact that proof that the infringing activity takes place in the United States is proof of an element of infringement, but it is not relevant to the question of subject matter jurisdiction. More...
Related summary: Federal Circuit Affirms District Court’s Findings Against GlowProducts on LiteCubes’ Ice Cube
Bridgeport v. Combs: Putting Limits on Punitive Damage Awards in Copyright Action
Bridgeport Music, et al. v. Justin Combs Publishing, et al.
Posted: 12/04/2007
Commentary: It was once highly unusual for a successful copyright infringement plaintiff to win punitive damages – indeed, most courts have held that punitives were wholly unavailable for claims under the federal Copyright Act. But in the last decade, courts have been increasingly willing to allow punitive damages in actions based on both federal and state common law, and the awards are getting bigger and bigger. In Bridgeport v. Combs, 507 F.2d 470 (6th Cir. 2007), the 6th Circuit puts some parameters around these awards, explaining why a jury’s $3.5 million punitive damages award was unconstitutionally excessive, and offering future courts some guidance on assessing punitive damage awards More...
Related summary: Sixth Circuit Orders Remittitur of Punitive Damage Award in Bridgeport Music v. Justin Combs Case
US v. ASCAP: Downloading Music from the Internet Does Not Constitute a Public Performance for Which a Performance Royalty Fee Is Due to ASCAP; Only A Reproduction Fee Applies.
U.S. v. American Society of Composers, Authors, and Publishers
Posted: 09/20/2007
Commentary: In its decision in US v. ASCAP, 485 F. Supp. 2d 438 (SDNY 2007), the Southern District of New York clarified how the Copyright Law concept of “public performance” applies to the Internet concepts of downloading versus streaming. While on its face, the decision appears to establish a bright line rule, the Court did acknowledge the possibility of more questionable applications in the future. More...
Related summary: Downloading of a Music File Not A Public Performance, District Court Declares in U.S. v. ASCAP
In Amazon.com Case, Court Classifies Framed Display of Images in Web Search Engines as Fair Use
Perfect 10, Inc. v. Amazon.com, Inc.
Posted: 07/26/2007
Commentary: In this appeal brought by both the copyright owner Perfect 10, Inc. and defendants which included Internet search engine and Internet retailer (Google, Inc. and Amazon.com, Inc.), the Court of Appeals ruled that the Internet search engine operator's act of framing in-line linked full-size images of copyrighted photographs on its website did not constitute "display" of copies of such photographs, within the meaning of Copyright Act, as would amount to copyright infringement. Although the storage and transmission of a thumbnail image version of a full-size copyrighted image is considered direct infringement of the exclusive right to display a work, the use falls under the fair use exception. More...
Related summary: Perfect 10, Inc. v. Amazon.com, Inc.
