Copyright Infringement

Kroto Inc. v. Chapa, No. 17 C 1218, Slip Op. (N.D. Ill. Jun. 22, 2017) (Der-Yeghiayan, J.).

Judge Der-Yeghiayan granted defendants’ motion to dismiss for lack of personal jurisdiction, but denied defendants’ motion for sanctions in this declaratory judgment copyright case.

The only link plaintiff Kroto established between defendants and Illinois was the sending

Panoramic Stock Images, Ltd. v. McGraw-Hill Global Educ. Holdings, LLC, No. 12 C 9881, Slip Op. (N.D. Ill. Nov. 25, 2014) (Pallmeyer, J.).

Judge Pallmeyer denied defendant McGraw-Hill’s motion for summary judgment regarding a statute of limitations and granted in part plaintiff Panoramic Images’ motion for summary judgment of copyright infringement in this case

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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