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

Peters, p/k/a Vince P. v. Kanye West, No. 10 C 3951, Slip Op. (N.D. Ill. Mar. 3, 2011) (Kendall, J.).

Judge Kendall granted defendants' (collectively "Kanye West") Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Vince P's copyright infringement claim. Vince P alleged that Kanye West copied Vince P's 2006 song "Stronger" when Kanye West released his 2007 song "Stronger." Vince P sufficiently pled ownership of a registered copyright. So, the issue was whether Vince P sufficiently pled copying. As an initial matter, Vince P sufficiently pled access to Vince P's work by alleging that Vince P shared his song with Kanye West's "close friend, advisor and business associate" John Monopoly.

The Court then considered whether the allegedly copied elements of Vince P's song were copyrightable:

• Title -- Titles by themselves are not copyrightable.
   
• Kate Moss -- A reference to Kate Moss in each song was an unprotectable fact.
   
• Hook -- The use of the maxim "that which does not kill us makes us stronger" was not protectable because it was not original to Vince P. And the use of "wronger" in each hook was not protectable because while it was a unique word, it was actually part of a rhyme scheme with "longer" and common rhyme schemes are not protectable.

The combination of the above elements was not used in its entirety or in a nearly identical way. Therefore, the combination was not protectable.

Finally, the two songs did not display "fragmented literal similarity." That doctrine, recognized in other circuits, allows for infringement where a smaller fragment of a work is literally copied, but not the entire work. The similarities between the two Stronger songs, however, did not even rise to the level of fragmented literal similarity. Among other reasons the allegedly copied fragments were not integral parts of the copyrighted work.

Because there was no substantial similarity between the two songs, the Court dismissed the copyright infringement claim.

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The Nielsen Co. (US), LLC v. Truck Ads, LLC, No. 08 C 6446, Slip Op. (N.D. Ill. Jan. 24, 2011) (Pallmeyer, J.).

Judge Pallmeyer granted plaintiff Nielsen's: 1) Fed. R. Civ. P. 12(b)(1) motion to dismiss defendant Truck Ads' declaratory judgment claim for lack of copyright infringement; and 2) Fed. R. Civ. P. 56 motion for summary judgment regarding Truck Ads' copyright misuse counterclaim in this copyright case regarding Nielsen's designated marketing area ("DMA") maps.

While the Court held that any copyright claim to raw census data would be "frivolous," that was not Nielsen's claim. Nielsen originally brought claims alleging infringement of its DMA regions and data, as well as the DMA maps. The current claims only accused infringement of the DMA maps. There was therefore, no case or controversy regarding the DMA regions or data. The Court also granted Nielsen summary judgment on Truck Ads' copyright misuse claim. First, the Court held that counts were split on whether copyright misuse was a proper counterclaim, or an affirmative defense. But the Court did not have to decide the issue because Truck Ads could not prove that Nielsen's claims were wholly lacking in merit. The DMA maps are original content that can warrant copyright protection, even though they may have been created based upon uncopyrighted data. And Nielsen's allegation that Truck Ads' alleged copying of the maps was unlawful was not frivolous, unsupported by law or clearly contradicted by record facts. Furthermore, Truck Ads offered no evidence that its alleged harm - a lost contract - was based upon Nielsen's accusations or its merit.
 

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Wayne Cable v. Agence France Presse, No. 01 C 8031 (N.D. Ill. July 20, 2010) (Manning, J.).

Judge Manning denied defendant Agence France Presse's ("AFP") motion to dismiss plaintiff's copyright, Lanham Act, Digital Millennium Copyright Act ("DMCA") and related state law claims. Plaintiff took a series of photos of a Chicago-area home for a realtor that included images of the home next-door owned by President and Mrs. Obama. AFP allegedly reproduced those images and distributed them over the internet after first removing plaintiff's copyright notice and an embedded link to plaintiff's website.

The Court held that the alleged removal of plaintiff's copyright notice and website link could fall within the scope of altering "copyright management information" in violation of the DMCA.
Plaintiff's Lanham Act claim, allegedly a reverse passing-off claim, was not preempted by the Copyright Act pursuant to the Supreme Court's decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). In Dastar, the Supreme Court held that the Lanham Act claim would have been sustained if defendant had repackaged plaintiff's videos as its own. That is what plaintiff alleged AFP did with plaintiff's photographs. Similarly, the Court did not dismiss plaintiff's state law claims which allegedly rose and fell with plaintiff's Lanham Act claim.
 

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Flava Works, Inc. v. Wyche d/b/a DGSource.com, No. 10 C 748, Slip Op. (N.D. Ill. Jun. 28, 2010) (Gottschall, J.).

Judge Gottschall denied plaintiff Flava Works' motion for default judgment based upon Flava Works' proof of damages. Flava Works accused defendants (collectively "DGSource") of copyright infringement and Lanham Act false designation of origin based upon a series of websites that allegedly used and sold Flava Works' copyrighted content. DGSource never answered the complaint, and the Court entered a default order. In response, Flava Works submitted a proof of damages seeking approximately $1.3M. As an initial matter, the Court held that because both claims stem from the same operative facts, Flava Works was required to choose either copyright or Lanham Act damages. Flava Works also had to choose actual or statutory damages to the extent it chose copyright damages. 

With respect to actual damages, the difference between the copyright and Lanham Act claims was that the Lanham Act provided for trebling damages. Regardless of the calculation, Flava Works' estimates of its losses and DGSource's profits were "conclusory" and provided without context. For example, Flava Works did not set out how much of DGSource's website content was infringing and, therefore, would be relevant to a damages calculation. 

Flava Works was not required to present evidence if it chose statutory damages, but without evidence the Court was required to adjust the award down, and the Court noted that it would benefit from additional evidence. The Court also noted that Flava Works was only entitled to statutory damages as to the two registered copyrights. 

Finally, Flava Works did not prove the elements necessary for a permanent injunction. And Flava Works offered no authority for its requested remedy of transferring DGSource's domain names to Flava Works. 

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Nova Design Build, Inc. v. Grace Hotels, LLC, No. 08 C 2855, Slip Op. (N.D. Ill. Feb. 26, 2010) (Der-Yeghiayan).

Judge Der-Yeghiayan granted defendant summary judgment as to plaintiffs' copyright infringement claims, and refused to exercise supplemental jurisdiction over plaintiff's state law claims. Plaintiffs had a registered copyright, which was prima facie evidence of registration. But the Court held the registration was invalid because it was not accompanied by original deposit materials.

Plaintiffs were robbed prior to filing for their copyright. The original building diagrams were taken at that time. So, in order for plaintiffs to get copyright protection, plaintiff prepared a reconstruction of the deposit materials – blueprints in this case. The fact that the deposit material was a close approximation of the originals was not enough. Furthermore, manual reconstruction without reference to the original was also not sufficient. Having denied plaintiffs' federal claims, the court exercised its discretion to refuse supplemental jurisdiction over the state law claims.

*  Click here for much more on the case in the Blog's archives.

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Stereo Optical Co. v. Judy, No. 08 C 2512, Slip Op. (N.D. Ill. Apr. 1, 2010) (Kocoras, J.)

Judge Kocoras granted defendants’ (collectively “Vision”) summary judgment as to plaintiff Stereo Optical’s copyright infringement claim. The Court denied the parties’ cross-motions for summary judgment as to Stereo Optical’s related state law claims. Stereo Optical alleged that Vision, many of whom were Stereo Optical’s former employees, misappropriated, and sold in competition with Stereo Optical, Stereo Optical's copyright-protected stereopsis vision tests. Stereo Optical did not mark the tests at issue with a copyright notice between 1980 and 1988. Between 1978 and 1988 a copyrightholder was required to add a copyright notice to publicly distributed copies of a work. 

Where the copyrightholder was responsible for distributing unmarked copies, the work entered the public domain unless: 1) only a “relatively small” number of unmarked copies were distributed; or 2) the copyright was registered within five years after the unmarked copies were distributed and “reasonable efforts” were made to add the missing notice. Stereo Optical made no argument that its distribution was “relatively small.” And Stereo Optical made no efforts to replace the missing markings. The Court, therefore, granted summary judgment for Vision as to the copyright claim. The Court denied both parties summary judgment as to Stereo Optical’s state law claims because the parties contested essentially all of each other’s statements of material fact.

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Zimnicki v. General Foam Plastics Corp., No. 09 C 2132, Slip Op. (N.D. Ill. Mar. 24, 2010) (Grady, J.).

Judge Grady denied defendants' motion to dismiss or, in the alternative, to join a necessary party pursuant to Fed. R. Civ. P. 19 in this copyright case involving holiday decorations including  "decorative deer" designs. In an earlier-filed, ongoing litigation defendant Neo-Neon claimed that it owned the copyrights-in-suit and argued in the alternative, that the designs are generic. As an initial matter, the Court held that dismissal was not appropriate, even if Neo-Neon was a required party, because defendants did not attempt to show that Neo-Neon could not be joined.

Defendants did argue that their failure to join Neo-Neon would subject defendants to multiple or inconsistent obligations. While a theoretical interest in a litigation would not require joinder, Neo-Neon's actual claimed interest in the copyright was more than theoretical.  The Court had discretion to require joinder based upon that claim.

But the Court did not require joinder. Neo-Neon was determining its interests in a parallel proceeding in the Northern District – click here for more on that case. And while the ownership dispute generally put defendants in risk of multiple obligations, circumstances mitigated that concern. In addition to claiming ownership, Neo-Neon claimed the copyrights were generic. And there was no indication that Neo-Neon intended to use any interest it acquired to enforce the copyrights-in-suit.

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Ho v. Taflove, No. 07 C 4305, Slip Op. (N.D. Ill. Jan. 15, 2010 (Bucklo, J.). 

Judge Bucklo granted defendants' motion for summary judgment in this copyright and Lanham Act case involving the alleged infringement and misappropriation of plaintiffs, a Northwestern professor and a Northwestern graduate student, mathematical model of a 4-level z-electron atomic model with Pauli Exclusion Principle for simulating the electron dynamics of active media using Finite Difference Domain method (the "Model"). 

Copyright Claims

Plaintiffs copyrighted their thesis, notebooks, certain figures and a presentation, all embodying the Model. The Court held that the Model was uncopyrightable because it was fact and algorithm. The Court explained why the Model was a fact as opposed to a cartoon character like Mickey Mouse, as defendants argued:

But Mickey Mouse is not an idea, procedure, process, system, method of operation, concept, principle, or discovery, and his characteristics and personality are not intended to realistically mimic those of a real mouse (e.g., wears clothes, owns a dog, has jobs, etc.)  Simply put, Mickey Mouse does not have plaintiffs' merger doctrine or 17 U.S.C. §102(b) problems.

To the extent the Model was copyrightable based upon "unique considerations" underlying the Model, plaintiffs did not identify the considerations or support them with evidence. And the two copyrighted charts consisted of unprotectable elements such as lines, arrows and parabolas.   Additionally, Northwestern described the figures as "fairly conventional diagramatic representations."

Lanham Act Claims

Citing the Supreme Court's Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041 (2003), decision, the Court held that the defendants were correct in identifying themselves as the originator of their papers, even if plaintiff originated the Model underlying the papers. The proper designation of origin is the producer of the work, not the author of the underlying idea. Because defendants prepared the papers, they were correctly identified. And the Court held that plaintiffs' common law unfair competition claim failed for the same reasons.

Conversion Claim

The Court granted summary judgment in defendants' favor as to plaintiffs' conversion claim because plaintiffs presented no evidence that defendants prevented plaintiffs access to their written works or to their intangible property – the Model or their research. Plaintiffs remained able at all times to continue their research.

Trade Secret & State Law Claims

The Court held that the Model was not a trade secret because plaintiffs published it in 2001 and 2002. The plaintiffs' remaining state law claims were also preempted by the Copyright Act.

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Rudnicki v. WPNA 1490 AM, No. 04 C 5719, Slip. Op. (N.D. Ill. Dec. 10, 2009) (Pallmeyer, J.).

Judge Pallmeyer granted plaintiff summary judgment of copyright registration of six of  his Polish radio broadcasts.  The Court also granted defendants summary judgment that plaintiff lacked standing to bring his copyright infringement suit.  But the Court gave plaintiff thirty days to seek reconsideration if he was able to get an assignment of plaintiff's radio broadcasts from his employer RadioZET during that time.  The Court also granted in part defendants' motion to strike plaintiff's summary judgment declarations.

As an initial matter, the Court held that pursuant to the Berne Convention, Polish law controlled copyright ownership issues as the country most closely related to the work and that U.S. law controlled infringement issues.

Copyright Ownership

The Court held that plaintiff's radio news reports were protectable pursuant to Polish law, although the reported facts were not protectable.  Furthermore, plaintiff's reports dealt with political issues which is a type of reporting Polish law specifically provided should be compensated.  Plaintiff's six copyrighted broadcasts, therefore, were protectable and the copyrights were owned by plaintiff or his assignee.

Standing

Plaintiff's contract with RadioZET provided a transfer of rights to RadioZET in plaintiff's broadcasts that was "unlimited in time and space."  Based upon that contract, plaintiff was not the exclusive copyright holder either in Poland or anywhere in the world where a copyright was held, including in the United States.  The Court, however, gave plaintiff thirty days to get an assignment from RadioZET and seek reconsideration of the standing decision based upon the assignment.

Entitlement to Damages

Plaintiff's deposition statement that he did not incur economic loss from defendant's alleged infringement did not prevent plaintiff from an award of actual damages.  The Court noted that actual damages could be determined in the range of $20-$38 per broadcast based upon what plaintiff was originally paid for his reports, including the copyrighted reports.  If plaintiff proved all 53 alleged infringements that would result in damages of $1,060 to $2,014.  The Court did not consider whether statutory damages were available.

Copyrighted Works

The Court held that plaintiff had properly registered his copyright in the six broadcasts deposited with the Copyright Office.

Motion to Strike

The Court did not strike the declaration of a previously undisclosed witness because the witness was only required because the equipment required to playback recordings of the broadcasts at issue unexpectedly failed.

The Court did, however, strike portions of two declarations by plaintiff's RadioZET supervisors.  There was no evidence that the supervisors drafted or negotiated the contract.  The fact that the witnesses were not disclosed in Rule 26 disclosures was not relevant, however, because they were disclosed during plaintiff's deposition.

 

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Schrock v. Learning Curve Int’l, No. 08-1296, 2009 WL 3644331(7th Cir. Nov. 5, 2009).

The Seventh Circuit reversed and remanded Judge Shadur's decision in this copyright case.*  The Court held that plaintiff's photographs of defendant's Thomas the Tank Engine trains were derivative works, and that absent a contractual provision to the contrary, plaintiff had a copyright in the derivative work.  Because plaintiff had permission to create the derivate works, plaintiff had a copyright in his derivative works.  And the Court could not decide whether the agreements prevented plaintiff from getting a copyright in the derivative work because the agreements were not part of the appellate record.  Additionally, the Court pointed out that the requirement that a derivative work be "substantially different" from the original did not create a heightened originality standard for derivative works.  The Court noted that plaintiff's photographs of defendant's Thomas the Tank engines had sufficient originality.

*  Click here for more about this case in the Blog's archives.

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Allen v. Destiny's Child, No. 06 C 6606 (N.D. Ill.) (Holderman, C.J.).

As I reported earlier this week, plaintiff's copyright infringement case against Destiny's Child and its members, among others, was set for trial before Chief Judge Holderman this week.  Plaintiff alleged that defendants, including the musical group Destiny's Child and its members, infringed plaintiffs' copyrights in his song "Cater 2 U" by producing and selling Destiny's Child's song of the same name (watch the video of Destiny's Child's version on their website).  Late last week, the Sun-Times' Natasha Korecki reported (click here for the story) that the parties settled the case at the courthouse steps. A dismissal has not been filed yet, but it appears that the case is likely settled. I will post about some of the more interesting motion in limine rulings in the next week or two, as well as about any settlement-related orders that may issue.

* Click here for more on this case in the Blog's archives.

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Allen v. Destiny's Child, No. 06 C 6606, Slip Op. (N.D. Ill.) (Holderman, C.J.).

Plaintiff's copyright infringement case against Destiny's Child and its members, among others, is set for trial before Chief Judge Holderman on December 8, 2009.  Plaintiff alleges that defendants, including the musical group Destiny's Child and its members, infringed plaintiffs' copyrights in his song "Cater 2 U" by producing and selling Destiny's Child's song of the same name (watch the video of Destiny's Child's version on their website).  For more on this case, click here for the Blog's archives and here for a story by Natasha Korecki, the Sun-Times' federal court reporter.  I will post about some of the more interesting motion in limine rulings in the next week or two.

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Donovan v. Quade, No. 05 C 3533, Slip Op. (N.D. Ill. Oct. 15, 2009) (Nolan, Mag. J.)

Judge Nolan granted in part defendants/counterplaintiffs’ motion for summary judgment in this copyright suit. Initially, the Court deemed admitted all of plaintiff’s properly supported supplemental statements of material fact because defendants failed to factually support their denials of the facts pursuant to Local Rule 56.1(b)(3)(B). The plaintiff and individual defendant were co-authors of the well-known play Late Night Catechism (“LNC”) and its primary character “Sister” a fictional Roman Catholic nun. The individuals founded defendant QDE in 2000 as a vehicle for producing LNC. The individual defendant also made plays that were derivative works of LNC and licensed them separately from QDE. Plaintiff also made derivative works, but only licensed them through QDE.

False Designation of Origin and Deceptive Trade Practices

The Court granted summary judgment as to plaintiff’s false designation of origin and deceptive trade practice claims because plaintiff did not respond to defendants’ summary judgment arguments as to those claims.

Deprivation of Copyright Revenues

Because the Court held that the parties were not governed by a partnership agreement, copyright law governed any revenues from LNC. The issue, therefore, was whether plaintiff’s plays were derivative of the parties’ joint work LNC. First, the Court held that LNC was a joint work of the parties. The parties’ copyright application identified the parties as joint authors, and plaintiff failed to put forth sufficient evidence to counter the presumption created by the application.

The Court also held that plaintiff’s later plays were derivative of LNC. Defendants put forth evidence that plaintiff’s plays all included the Sister character and, therefore, were based upon and derivative of LNC. Plaintiff’s “answers, conclusory denials” were not sufficient to overcome plaintiff’s evidence. Because the parties were joint authors of LNC and because plaintiff’s subsequent plays involving the Sister character were derivative of LNC, defendant was granted summary judgment regarding the demand for an accounting.

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Cassetica Software, Inc. v. Computer Sciences Corp., No. 09 C 0003, Slip Op. (N.D. Ill. Jun. 18, 2009) (Kendall, J.).

Judge Kendall granted defendant CSC's Fed. R. Civ. P. 12(b)(6) motion to dismiss.  Plaintiff Cassetica asserted patent infringement, breach of contract, violation of the Computer Fraud and Abuse Act ("CFAA"), and related state law claims based upon CSC's alleged continued use of Cassetica's NotesMedic software after the end the parties' contract for the software.  The Court dismissed each claim as follows:

• Copyright Infringement:  Cassetica's copyright claim was dismissed because Cassetica could not recover its claimed statutory damages.  Cassetica registered its copyright after CSC's alleged infringement began.  It did not matter that CSC's alleged infringement allegedly continued after the registration.
   
• Breach of Contract:  Because CSC's alleged breach occurred after the contract terminated there was no longer a contract to be breached and, therefore, no claim.
   
• CFAA:  There was no "damage" as defined by the CFAA.  The CFAA defines damages as harm to a computer system's data.  But Cassetica alleged copying of electronic information, not that any of its data was lost or harmed.  Otherwise, Cassetica only made bare allegations that its data was harmed without any factual statement.
   
• Other State Law Claims:  Cassetica's conversion, trespass to chattels and unjust enrichment claims were all preempted by the copyright law because each state law claim was based upon the alleged downloads of the NotesMedic software.

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Bryan Cave's art law blog has an excellent post by Jonathan Pink discussing eleven copyright myths -- click here to read it.  Every corporate executive and small business owner needs to be aware of how the copyright laws impact their business, especially the intersection of copyright law and the internet.  I developed a presentation as an element of a corporate copyright compliance program and I am amazed by the results every time I give the presentation to a new corporate division or small business.  People are routinely, and largely accidentally, violating copyrights.  But the worst part is that a little education, such as my presentation, followed by a few days of generally simple, inexpensive fixes resolves most accidental copyright infringement issues and provides a significant measure of protection for any business, large or small.

Pink's eleven copyright myths, written in multiple choice format, are a great start toward improving copyright compliance and they are written both humorously and in plain language.  Here are two of my favorites:

Myth 4:

If it's on the Web, it's free for the taking.

a. No. Stealing is stealing.

b. Sure, why not?

c. This is true, but only if I use a 28KB modem, and the copyright expires before I finish downloading it.

The answer is a. Unless the work falls under a generally recognized exception to the copyright law, if it's on the Web, copyright protection attaches, and you can get hit with an infringement lawsuit for misappropriating it. See 17 USC §501(a). Nothing about the Web strips otherwise protectable work of its copyright protection.

Myth 5:

Copying just a little bit does not constitute copyright infringement.

a. Maybe.

b. Maybe.

c. Maybe.

The answer is all of the above. Though the "fair use" doctrine allows for some limited copying of a small portion of some works-for example, quotes for use in educational or scholarly works, criticism, parody, and news reporting-there is no bright-line rule as to how much is too much.

                                                              * * *

That means that if you take your kid's Darth Vader action figure, give it Barbie-like hair, and dress it in platform shoes, you're going to get hit with an infringement action when you try selling it at Toys-R-Us as Ella Vader. You also risk getting hit with a morals charge.

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The Sun-Times' Neil Steinberg had an interesting column in the Sunday edition about his acceptance of a class action settlement involving Google Books.  As an author, Steinberg is glad to see the settlement which he sees as a good balance of access to a wide variety of works and compensating the authors.  Steinberg explains that as an author and a newspaper columnist he needs access to research tools and, therefore, is glad to see tools like Google Books created.  But as an author, he also wants  to be paid when his books are used which the class settlement accomplishes according to Steinberg.  Steinberg goes on to predict that we will see other internet-based copyright issues resolved in similar manners over time.  Steinberg may be right and he hits on advice I often give about copyrights:  if you want to use something ask, copyrightholders are generally glad to share their work and often only request a small payment in the form of money or even just acknowledgment.

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Consumers Digest Comms., LLC v. Westpoint Home, Inc., No. 08 C 3486, Slip Op. (N.D. Ill. Dec. 9, 2008) (Shadur, Sen. J.).

Plaintiff filed an amended complaint including a copyright claim, after Judge Shadur orally granted defendant's motion to dismiss its original copyright and related state law claims.  The Court noted that the amended complaint did not include a copy of the allegedly infringing publications as exhibits.  The Court, therefore, ordered plaintiff to deliver copies of the allegedly infringing publications to the Court and defendant's counsel. 

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Stereo Optical Co., Inc. v. Judy, No. 08 C 2512, 2008 WL 4185689 (N.D. Ill. Sep. 8, 2008) (Kocoras, J.).

Judge Kocoras granted in part defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff's copyright, trade secret and related state law claims. The Court noted that the Seventh Circuit required a registered copyright, not just pre-registration, to file a copyright complaint. But the Court held that it was sufficient to allege the registration and did not dismiss the claim because the registration was not attached. The Court did note, however, that the registration requirement was jurisdictional and the motion, therefore, should have been styled a Fed. R. Civ. P. 12(b)(1) motion for lack of jurisdiction.

The Court also denied defendants' motion to dismiss plaintiff's trade secret complaints. While plaintiff did not specifically identified the allegedly misappropriated trade secrets they did allege misappropriation of customer lists, vision test methodologies and other information that could be trade secrets.

Finally, the Court dismissed plaintiff's unjust enrichment claim because it was preempted by the copyright and trade secret claims. The alleged unjust enrichment sought damages for either the alleged copyright infringement or the alleged trade secret misappropriation. Plaintiff's other state claims, however, required additional elements and were not preempted.

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Nova Design Build, Inc. v. Grace Hotels, LLC., No. 08 C 2855, 2008 WL 4450305 (N.D. Ill. Sep. 30, 2008) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan denied defendants’ motion to dismiss plaintiffs’ copyright infringement and related state law claims. Plaintiffs claimed that they developed plans for a Holiday Inn Express hotel defendants planned to build, and that defendants infringed the copyrights in plaintiffs’ plans by revising them with another firm and using them without plaintiffs’ permission. The Court held that plaintiffs’ copyright claim was sufficiently pled. Plaintiffs alleged ownership of a copyright, attaching the copyright registration, and that defendants infringed the copyright. Defendants’ argument that plaintiffs’ plan were a derivative work were beyond the pleadings and, therefore, not appropriate for a Fed. R. Civ. P. 12(b)(6) motion. 

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O’Leary v. Mira Books, No. 08 CV 8, 2008 WL 3889867 (N.D. Ill. Aug. 18, 2008) (Gettleman, J.)

Judge Gettleman granted defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s copyright infringement and related state law claims. Plaintiff alleged that defendant – the author and publisher of the novel The Good Liar – infringed plaintiff’s copyright in plaintiff’s novel, What If, by publishing The Good Liar. The Court dismissed the copyright claim because plaintiff did not identify specific copied passages of her work or show substantial similarities between the works. What If was about a relationship between a paralegal and a rockstar. The Good Liar was about a counter-terrorist organization.  The similarities between the works were references to common places or things – both were set in Chicago and had blonde-haired characters.

The Court also dismissed plaintiff’s state law unfair trade practices and unfair competition claims. Both were preempted by the Copyright Act because they were based upon publishing and marketing of the allegedly infringing novel.

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Johnson v. Cypress Hill, No. 03 C 9452, Slip Op. (N.D. Ill. Jul. 7, 2008) (Norgle, J.).

Judge Norgle struck defendants’ motion to dismiss plaintiff Johnson’s copyright infringement claim. The Court previously denied summary judgment as to the other plaintiffs, Watts and Jones - click here to read the Blog's prior post about that opinion. Plaintiffs authored the song “Is It Because I’m Black” in 1968 and recorded a version of it in 1969 (the “Song”).  Plaintiffs alleged that defendants, including the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed their copyright in the Song by using parts of it in their Black Sunday album.
 

Johnson’s copyright claim is based upon a 1997 registration for a compilation of songs allegedly containing the Song. But a review of a certified copy of Johnson’s compilation from the Copyright Office proved the Song was not on the deposited compilation. Because the Song was not a part of the registered work, Johnson could not show ownership of a valid copyright. The Court, therefore, dismissed the claim.
 

The Court also held that Johnson’s failure to file a Notice of Use pursuant to the 1909 Copyright Act was irrelevant because Congress deleted the Notice of Use requirement effective January 1, 1978, before any alleged infringement occurred.

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Watts v. Cypress Hill, No. 03 C 9452 & 06 C 3348, 2008 WL 2540811 (N.D. Ill. Apr. 28, 2008) (Norgle, J.).

Judge Norgle denied defendants’ motion for summary judgment on plaintiff’s copyright infringement claim. Defendants’ motion was based upon three arguments: 1) plaintiffs did not have a valid copyright registration; 2) plaintiffs’ suit was barred by the statute of limitations; and 3) plaintiffs failed to file a Notice of Use as required by the 1909 Copyright Act. Plaintiffs authored the song “Is It Because I’m Black” in 1968, and recorded a version of it in 1969 (the “Song”). Plaintiffs alleged that defendants, including the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed plaintiffs’ copyright in the Song by using parts of it in their album titled Black Sunday.

Copyright Registration

Defendants argued that plaintiffs did not meet their burden of proving a valid copyright registration because instead of the registration certificate or a copy of the deposited CD, plaintiffs produced a printout of the Copyright Offices’ summary of their registration. Because defendants did not dispute the information in the summary, the Court denied summary judgment. The validity of the registration was a question of fact for the jury.

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Rudnicki v. WPNA 1490 AM, No. 04 C 5719, Slip Op. (N.D. Ill., Jul. 24, 2008) (Moran, Sen. J.).

Judge Moran denied plaintiff’s motion in limine to preclude defendants from arguing non-registration of plaintiff’s allegedly copyrighted works. Plaintiff argued that his certificate of registration was conclusive proof that his works were registered. But plaintiff only deposited six of his works with his applications. In response, plaintiff argued that deposit of a representative sample was all that was necessary for registration, and all that was necessary for statutory damages.

The Court, however, held that the mandatory registration requirement, and its exceptions pursuant to 17 U.S.C. § 407, was separate from the registration–deposit requirement, pursuant to 17 U.S.C. § 408. The registration–deposit requirement did not provide exceptions for works first published outside the United States, such as plaintiff’s works. Because § 408 required deposit for all of plaintiff’s works, and because plaintiff had not identified if any of the six works plaintiff deposited was at issue in this case, the Court denied plaintiff’s motion.

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LimitNone v. Google, Inc., No. 08 C 4178 (Manning, J.).

Last month I posted that LimitNone, a Chicago company, sued Google for trade secret misappropriation seeking $1B -- click here for that post.  Earlier this week, Google removed the case to the Northern District, arguing that LimitNone's Illinois Consumer Fraud and Deceptive Business Practices Act ("ICFA") claim sounded in copyright and, therefore, was preempted by the Copyright Act creating federal question jurisdiction (click here for Google's removal papers). 

In its complaint, LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone's gMove software -- software that helps Microsoft Outlook users migrate data to the Google platform.  Google allegedly assured LimitNone that it would not offer a competing product.  But after receiving LimitNone's trade secrets, including its software code, and promoting the $19 gMove software, Google allegedly began offering a free, competing software package which allegedly used LimitNone's trade secrets.   LimitNone has not filed any responsive papers or pleadings yet, but I will keep you updated if LimitNone challenges the removal.

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Blawg Review #168 is available at Jeffrey Mehalic’s West Virginia Business Litigation blog (another LexBlog blog) – click here for the post. It is another excellent review, although it is a bit light on IP. Additionally, Mehalic has a very even-handed post about the settlement of a West Virginia suit between West Virginia University and Rich Rodriguez, the new football coach of my University of Michigan Wolverines. While the subject matter of that dispute is not necessarily relevant to Chicago IP litigators (Coach Rodriguez is paying his full $4M buyout over time, much of it funded by the University of Michigan), Mehalic has an interesting side note about a contract the court reporters put on each transcript in the case requiring that no copies be made or used without paying the court reporter for them – click here for the post. My first reaction is, and always has been, that the reporters hold the copyright because the transcript is their interpretation and compilation of what was said. But Mehalic disagrees, and makes a good point. The copyright in a (usually) verbatim recitation of a proceeding has to have a very thin copyright, if any.

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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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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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