Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

The Chicago Tribune's Ameet Sachdev reported that an ongoing copyright dispute may be coming to a head at the corner of Michigan Avenue and Randolph Street in Chicago, click here for the Tribune article.  In the 1980s, Israeli artist Yaacov Agam was commissioned to create a sculpture for what would become the Stone Container building at 150 N. Michigan Avenue.*  Over time, Chicago weather faded the work and the current owner hired an expert to restore the multi-hued work to its original look.  Agam is unhappy with the restoration because he believes the colors were not restored to the exact shades he originally used.  The work is now back on display at the corner of Michigan and Randolph, and Agam is headed to Chicago this weekend to view the restored, or as he calls it "reconstructed," work.

In a previous Tribune article,** Agam's counsel admits that VARA, the Visual Artists Rights Act, did not protect Agam's position because the work was created before 1990 and because Agam no longer owns his work.  But Agam claimed to hold the copyright in the work and argued that the copyright allowed him to prevent the current owner from creating a derivative work, which Agam believed the restored or reconstructed work to be because of the changed colors.  The dispute is likely governed by the contract commissioning Agam to make the work.  Of course, it is possible, and maybe even likely, that the contract is silent or ambiguous regarding derivative works or that it was an oral contract without proof of what the parties intended.  It will be interesting to see how the dispute is resolved and, I am sure, people who work in the area will be glad that the wooden stump that stood in the work's place has been replaced by some restored version of the work.

*  Click here for a picture of the sculpture and further discussion of this dispute at the One-Way Street. 

**  Click here to read the blog's post about that article.

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Rosen v. Mystery Method, Inc., No. 07 C 5727, 2008 WL 723331 (N.D. Ill. Mar. 14, 2008) (Kocoras, J.).

Judge Kocoras granted defendants' Fed. R. Civ. P. 9(b) & 12(b)(6) motion to dismiss plaintiff Rosen's claims. Rosen, on behalf of himself and others similarly situated, alleged that defendant Mystery Method Corp. (“MMC”), in concert with various other business partners, violated the Racketeer Influenced and Corrupt Organizations Act (“RICO”) by continuing to market MMC's Mystery Method dating products as endorsed or otherwise approved by the original creator of the Mystery Method, Erik Von Markovick (“EVM”). EVM created a “sophisticated system . . . to help men meet and attract women” known as the Mystery Method. EVM offered personal training in his methods and eventually partnered with MMC to administer the business of his related Mystery Method website. Eventually, EVM left MMC and started his own website www.venusianarts.com. When EVM left, MMC maintained control of the Mystery Method website.

The Court held that Rosen had not sufficiently pled the predicate act of copyright infringement.* Rosen only pled general allegations:

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FM Indus., Inc. v. Citicorp Credit Servs., Inc., No. 07 C 1794, 2008 WL 717792 (N.D. Ill. Mar. 17, 2008) (Conlon, J.).

Judge Conlon granted Citicorp defendants and denied defendant Gelfand summary judgment of copyright infringement. Plaintiff FM Industries ("FMI") alleged that Gelfand infringed FMI's copyright in its TUCANS debt-collection software by continuing to use it after Gelfand's license expired. Gelfand argued that FMI could not prove ownership of the copyright because it could not produce the written assignment. But the Court held that FMI's deposition testimony was sufficient to create a material question of fact and, therefore, denied summary judgment.

Citicorp was accused of encouraging and inducing its outside attorneys to use the TUCANS software after their licenses expired. But at least in part because FMI failed to respond to Citicorp's Local Rule 56.1 statements or to submit its own responsive statements of fact, the Court accepted as true Citicorp's evidence that it told its outside attorneys to stop using TUCANS before licenses expired and that Citicorp was unaware that the attorneys continued using TUCANS.

Practice Tip: I cannot say it enough: you must strictly comply with Local Rule 56.1. Click here to read about other opinions considering Local Rule 56.1

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Tillman v. New Line Cinema Corp., No. 05 C 910, Slip Op. (N.D. Ill. Mar. 7, 2008).*

Judge Kennelly dismissed plaintiff’s copyright infringement claims holding that: (1) defendants’ allegedly infringing movie, “John Q,” was created before plaintiff’s copyrighted screenplay; (2) defendants did not have access to plaintiff’s screenplay when John Q was created; and (3) John Q was not substantially similar to plaintiff’s screenplay. Plaintiff wrote his screenplay in 1998. But defendants produced news articles and affidavits supporting the fact that their screenplay was written in 1993, including documents proving the John Q screenplay was registered with the Writers’ Guild in 1993. Plaintiff argued that defendants’ evidence was fabricated, but submitted no substantive evidence of fabrication.

The Court also held that there was no evidence that defendants’ writer had access to plaintiff’s screen play when John Q was written. First, the evidence proved that John Q was written before plaintiff’s screenplay. Furthermore, plaintiff admitted in response to a request for admission that he had not identified any witness confirming that John Q’s author had access to plaintiff’s screenplay. And while plaintiff filed his screenplay with the Writers’ Guild, the Writers’ Guild had strict regulations that would have prevented anyone from accessing plaintiff’s screenplay, and plaintiff offered no evidence proving the Writers’ Guild’s regulations had been violated.

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Schrock v. Learning Curve Int’l, Inc., No. 04 C 6927, __ F.Supp.2d __ (N.D. Ill. Jan. 29, 2008) (Shadur, J.).*

In February, I posted about Judge Shadur's opinion in this case holding that plaintiff's photographs of defendants' copyright Thomas & Friends toy trains were derivative works and, therefore, could not be registered with the Copyright Office without defendants' express permission -- click here for the post.  Professor Rebecca Tushnet of my alma mater, the Georgetown University Law Center, at the 43(B)log has posted about the case also.  Tushnet questions why the creator of an authorized derivative work should be prevented from registering that work:

What I don’t understand is why authority to register ought to matter. The derivative works – accepting for the moment that this is what they were – were made with the permission of the copyright owner in the original works. That is all that ought to be required. Of course there is a potential problem of blocking copyrights – but other cases have avoided this by finding no derivative work at all where a translation from two dimensions to three, or three to two, has taken place.

It does seem reasonable that the authorized creator of a derivative work should have the right to register the copyright, leaving any rights held by the underlying copyright owner to be controlled by contract.  Of course, requiring that the right to register be expressly granted also leaves the rights to the contract between the parties, just with a different default.

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Schrock v. Learning Curve Int’l, Inc., No. 04 C 6927, Slip Op. (N.D. Ill. Jan. 29, 2008) (Shadur, J.).*

Judge Shadur granted defendants’ motion for summary judgment of non-infringement and dismissed plaintiff’s related state law claims. Plaintiff took a series of photographs of defendants’ Thomas & Friend toy trains, each pursuant to a provision that defendants could only use the photographs for two years. Plaintiff argued that defendants infringed plaintiff’s copyrights by using the photographs after the two years were up. 

But the Court held that plaintiff had no copyright. The photographs were derivative works based upon defendant’s copyrighted Thomas & Friends train engines and cars. The party making a derivative work must have the copyright holder’s permission to copyright the derivative work. While plaintiff had the right to make the derivative works, plaintiff was not granted the right to copyright them. Plaintiff, therefore, had no copyright. And because plaintiff’s state law claims were based on supplemental jurisdiction, they were dismissed without prejudice.

The Court also noted that President Abraham Lincoln, a month before his assassination, signed the bill making photographs copyrightable for the first time.

*  Click here for a copy of the opinion.

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Matteo v. Rubin, No. 07 C 2536, Slip Op. (N.D. Ill. Dec. 3, 2007) (Kendall, J.).

Judge Kendall denied defendant’s motion to dismiss plaintiff’s copyright infringement and related state law claims. Plaintiff photographed defendant’s daughter’s wedding pursuant to a contract between plaintiff and defendant’s wife. Defendant was allegedly unsatisfied with plaintiff’s photographs and, therefore, allegedly created numerous website regarding plaintiff’s photographs including defamatory comments about both plaintiff and his photographs. The Court held that plaintiff stated a claim for copyright infringement because he pled that he owned copyrights in his photos and that defendant infringed those copyrights by posting the pictures on websites. Plaintiff was not required to plead that defendant received any economic benefit from his alleged infringement. Additionally, plaintiff did not have to register his copyright before defendant’s allegedly infringing acts. Finally, the Court held that defendant’s fair use defense was not grounds for dismissal. Fair use is a factual inquiry best resolved on summary judgment or at trial.

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Kelley v. Chicago Park District, No. 04 C 7715, Slip Op. (N.D.Ill. Sep. 14, 2007) (Coar, J.).

Judge Coar ordered the parties to submit further briefing regarding whether plaintiff Chapman Kelley’s (“Kelley”) work of art “Wildflower Works” (“WW”) was copyrightable as a sculpture pursuant to the Copyright Act and the Visual Artists Rights Act (“VARA”). Kelley originally installed his WW in Chicago’s Grant Park in 1984 pursuant to a permit from the City of Chicago. WW was an installation of wild flowers in two elliptical shapes surrounded by gravel — click here for pictures from Kelley's website — that Kelley replanted and tended each year. Chicago periodically renewed the permit until 1994, when Kelley continued his WW pursuant to an oral permit renewal. Then in 2004, Chicago fenced off WW, effectively destroying it. Kelley then brought this suit alleging copyright infringement, violation of VARA and various state law claims.

The Court considered various issues relating to jurisdiction and the validity of the alleged oral permit renewal. But the Court held that it lacked sufficient information to resolve the issue of whether WW was protectable as a sculpture pursuant to the Copyright Act and VARA. The Court struggled with whether a growing, evolving planting of flowers could be considered a sculpture using common dictionary definition. But the Court also acknowledged the artistic value of arranging flowers and plants, which precluded a holding that WW was per se not a sculpture:

to do so would ignore such exquisite examples of living art as topiaries, which are created by clipping and trimming living plants, usually bushes, into exotic shapes.

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Mullen v. Society of Stage Directors & Choreographers, No. 06 C 6818, 2007 WL 2892654 (N.D. Ill. Sep. 30, 2007) (Coar, J.).

Judge Coar granted in part defendant United Scenic Artists’ (“USA”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ declaratory judgment (“DJ”) claims and denied all defendants’ motions seeking dismissal of plaintiffs’ defamation claim. Plaintiffs are the various production heads of the Chicago production of the musical “Urinetown!” (“Chicago Production”). The Chicago Production was performed pursuant to a license from Blue Dog Entertainment, LLC. But despite that license, plaintiffs each received a cease and desist letter from counsel for defendants (the heads of production of the Broadway Urinetown! production (“Broadway Production”) and their unions USA and the Society of Stage Directors & Choreographers (“SSDC”). The letter warned that plaintiffs willfully copied copyrighted aspects of the Broadway Production and attempted to pass off the Chicago Production as the award-winning Broadway Production. Defendants demanded an accounting of revenues from the Chicago Production in order to calculate damages. Defendants also held a press conference during which they publicly stated that the plaintiffs “plagiarized” the Broadway Production. Plaintiffs responded by filing suit seeking declaratory judgments that the Chicago Production did not infringe any of plaintiffs’ copyrights and that it was not Lanham Act passing off. And based upon the press conference, plaintiffs included a defamation claim.

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Rudnick v. WPNA 1490 AM, No. 04 C 5719, Slip. Op. (N.D. Ill. Oct. 31, 2007) (Moran, Sen. J.).

Judge Moran denied defendants’ Fed. R. Civ. P. 56(f)-type motion for further discovery and ordered the parties to brief plaintiff’s motion to preclude defendants from arguing non-registration.” The Court held that the requested deposition of plaintiff was not required to determine whether plaintiff’s registrations were proper or timely. The Court explained that:

The copyright registration procedures are, apparently, many and varied. Plaintiff just wants to know if defendants believe he has followed the right procedures and, if not, what they think he needs to do.

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Vaughn v. Kelly, No. 06 C 6427, Slip Op. (N.D. Ill. Jul. 16, 2007) (Manning, J.).

Judge Manning denied defendant R. Kelly’s (“Kelly”) motion to dismiss plaintiff Vaughn’s case arguing that Vaughn’s state law claims were preempted by copyright law. The Court previously dismissed Vaughn’s motion to remand the case to state court, holding that his unjust enrichment claim sounded in copyright law and giving Vaughn time to amend his complaint to remove the copyright elements (you can read more about the case in the Blog’s archives). Kelly now moves to dismiss the amended complaint. As in the original complaint, Vaughn alleged that he introduced Kelly to stepping, taught him how to step, helped him write a stepping-based song entitled "Step in the Name of Love," and collaborated with Kelly to develop a video for the song.  The Court held that Vaughn’s unjust enrichment claim was preempted by copyright law, but granted Vaughn leave to refile the claim as one for copyright infringement. The Court refused to consider Vaughn’s proposed amended unjust enrichment claim because Vaughn failed to amend the unjust enrichment claim when the Court first offered Vaughn a chance to amend and because it is improper to consider amendments as part of a motion to dismiss. The Court held that Vaughn’s breach of oral contract claim was not preempted by copyright law because it could be for less than co-ownership of the copyright, which would be preempted. 

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DJ Photog. v. Wibert, Inc., No. 06 C 2215, Slip Op. (N.D. Ill. Jul. 11, 2007) (Zagel, J.).*

Judge Zagel dismissed plaintiff's copyright infringement claim, held that its quantum meruit claim was preempted by the Copyright Act and, therefore, entered judgment in the case in favor of defendants.  Plaintiff DJ Photography argued that defendants infringed its copyrights in pictures of a burial vault and mourners at a graveside service.  But in their Local Rule 56.1 Statement of Undisputed Facts, defendants stated that the copyrights asserted were both registered by an individual, Donald Johnson, not DJ Photography.  Because DJ Photography did not dispute that Johnson owned the copyrights, the Court held that DJ Photography could not prove ownership of the copyrights and, because it did not own the copyrights, DJ Photography lacked standing to bring the suit.  The Court also held that the quantum meruit claim was preempted by the Copyright Act.

* Because the opinion has not been published electronically, you can read a copy of it here.

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Scholz Design Inc. v. Jaffe, __ F. Supp.2d __, 2007 WL 1276910 (N.D. Ill. Apr. 24, 2007) (Grady, J.).

Judge Grady treated plaintiff's untimely motion to reconsider as a Fed. R. Civ. P. 60(b) motion to vacate judgment (Judge Grady's previous order is discussed in the Blog's archives) and denied the motion because it simply rehashed previously rejected arguments.  After a bench trial, the Court entered judgment on behalf of defendants because they had neither directly nor contributorily infringed plaintiff's copyrighted home design.  The Court held that, while defendants approved the design, any actual copying of the copyrighted design was done by defendants' architects without defendants knowledge.  In the instant motion, plaintiff argued that defendants infringed its copyrighted designs as a matter of law because the Court had deemed admitted -- for failure to respond to requests for admission -- that the interior and exterior designs of the house at issue were derivative works based upon plaintiff's design.  But the Court explained that the admission of infringement did not include an admission as to which parties committed the infringement.  As a result, the Court denied plaintiff's motion and allowed its prior judgment to stand.

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Johnson v. Wright, No. 05 C 3943, 2007 WL 1079063 (N.D. Ill. Apr. 5, 2007) (Grady, J.).

Judge Grady denied defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff's amended complaint for lack of subject matter jurisdiction.  Defendants, record companies and related individuals, were accused of infringing plaintiff Syl Johnson's copyright in his song "Is It Because I'm Black," as well as related state law claims.  Defendants argued that there was not federal jurisdiction because the co-owners of Johnson's copyright had transferred their rights to one of the defendants.  The transfer, defendants argued, destroyed Johnson's federal copyright claim, leaving only state claims over which the Court lacked independent jurisdiction.  But defendants conceded that Johnson stated a claim for federal copyright infringement.  The Court held that Johnson's and defendants' alleged co-ownership of the copyright was an affirmative defense, not a jurisdictional matter.  Because Johnson had a well-pled claim of federal copyright infringement, the Court denied defendants' Rule 12(b)(1) motion to dismiss.  The Court also noted that defendants' motion was "essentially" a copyright infringement summary judgment motion, but because it was styled as a Rule 12(b)(1) motion on the pleadings, Johnson was not given adequate opportunity to present his response.  Additionally, the Court identified several questions of fact that would have prevented a grant of summary judgment based upon the exhibits attached to the parties' briefs.

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Scholz Design Inc. v. Jaffe, No. 06 C 0075, 2007 WL 896536 (N.D. Ill. Mar. 21, 2007) (Grady, J.).

Judge Grady, after a bench trial, entered judgment on behalf of defendants because they had neither directly or contributorily infringed plaintiff's copyrighted home design.  The Court held that, while plaintiffs approved the design, any actual copying of the copyrighted design was done by defendants' architects.  Additionally, the Court held that plaintiff introduced no evidence at trial to prove that defendants knew that plaintiff's copyright was being infringed by defendants' architect.  The Court held that, at most, defendants knew plaintiff's design was being used, but had no reason to believe the architect was infringing the design.

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