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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Nova Design Build, Inc. v. Grace Hotels, LLC., No. 08 C 2855, Slip Op. (N.D. Ill. Mar. 25, 2009) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted in part and denied in part plaintiffs’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants’ counterclaim copyright infringement case. 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 previously held that plaintiffs’ copyright claim was sufficiently pled — click here for more on that opinion and the case generally in the Blog’s archives. After that opinion, defendants answered the complaint and filed a counterclaim seeking among other things declaratory relief. The Court dismissed the counterclaim as to plaintiff Annex whom defendants agreed should be dismissed. And the Court struck defendants’ request that plaintiffs’ complaint be struck because the Court already denied defendants’ Rule 12(b)(6) motion to dismiss.
But the Court denied to dismiss defendants’ counterclaim. Plaintiffs argued that the counterclaim should be dismissed because it was not clearly pled, the legal basis was not specifically identified and it lacked factual detail. But the Court held that notice pleading did not require good grammar or organization, nor were specific facts required. Because defendants’ counterclaim put plaintiffs on notice that their copyright was allegedly a derivative works to which defendants maintained certain rights. To the extent plaintiffs believed additional information, the appropriate remedy was a Rule 12(e) motion for a more definite statement. But the Court noted that a more definite statement was not required in this case because defendants’ counterclaim put plaintiffs on notice.

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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.
Similarly, defendants’ argument that plaintiffs, as authors of a derivative work, lacked standing to bring their copyright suit also was beyond the scope of a Rule 12(b) motion to dismiss. Furthermore, it was not ripe for decision because defendants made the argument for the first time on reply.
The Court also held that defendants’ arguments as to plaintiffs’ state law claims were beyond the complaint and, therefore, not sufficient for a motion to dismiss.

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Over the weekend, 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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Blawg Review #150 is up at Trust Matters by Charlie Green, co-author of The Trusted Advisor and creator of the Carnival of Trust, which I will be hosting on the first Monday of May. This week’s review links to the Blog’s follow-up post about whether photographs of copyrighted Thomas & Friends toy trains are derivative works — click here for the post.

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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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