Copyright Infringement

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.

Continue Reading Mathematical Formula is No Mickey Mouse

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.
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.

Continue Reading Copyright Suit Dismissed With 30 Days to Prove Standing

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.

Continue Reading No Heightened Originality Standard for Derivative Works

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.

Continue Reading Destiny’s Child & Beyonce Settle Cater 2 U Copyright Dispute

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.

Continue Reading Destiny’s Child & Beyonce in Upcoming Copyright Trial

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.

Continue Reading Joint Authors Must Share Profits of Their Derivative Works

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.

Continue Reading Copyright Statutory Damages: Infringement Must Start After Registration

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.

Continue Reading Copyright Myths Debunked

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.

Continue Reading Sun-Times on Copyright

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.

Continue Reading Court Requires Copyright Plaintiff to Include Allegedly Infringing Work in Complaint