Electrolux turned the tables on former distributor-turned-competitor Imig, Inc., which filed a complaint against the famous vacuum and home appliance company, for interfering with relationships with perspective customers. Electrolux filed several counterclaims, alleging that Imig copied Electrolux’s protected trade dress, copyright protected user manuals, and that Imig made false claims in its advertising.

The district court dismissed all of Imig’s claims on summary judgment, and found for Electrolux on copyright infringement and false advertising. The court found that Imig had copied the user manuals in violation of U.S. Copyright law. From a false advertising perspective, the court found that specific numerically based claims about the Imig vacuum’s superiority were false on their face, because the products did not actually meet those objective standards. The remaining counterclaims proceeded to trial. On March 31, 2008, the court issued its finding that Electrolux had not met its burden of establishing a protectable trade dress in its vacuum and therefore, did not find Imig liable.

The facts show that Imig, afraid that it would lose its distributorship of the Electrolux SANITAIRE brand, developed its PERFECT brand vacuum as a replacement. Discovery produced evidence of copying: in creating the PERFECT design, Imig referred its Chinese manufacturer to the specifications of the SANITAIRE line. It was also revealed that Imig’s patent attorney sent a letter to a patent research company noting his clients’ desire “to make a private label vacuum cleaner that is virtually identical in appearance” to defendant’s vacuum. The court also noted numerous visual similarities between the SANITAIRE vacuum and the PERFECT vacuum.

Notwithstanding Imid’s clear intent to copy, the court did not find liability. The court noted that Electrolux had not met its burden of establishing trade dress infringement. In order to establish trade dress infringement, the court wrote, a company must show that the product design is distinctive and that consumers are likely to be confused by seeing the distinctive trade dress on another product. The court held that the elements claimed by Electrolux were functional in nature, and that the company had not proved otherwise, despite Electrolux’s survey evidence showing consumers recognized the various elements of the vacuum as being uniquely from the SANITAIRE brand. The court also determined that secondary meaning had not been established, even though the product had been in use for several years. Addressing the issue of confusion, the court, citing Cadbury Beverages, Inc. v. Cott Corp. determined that Eletrolux had to show a “probability – not merely a ‘possibility’ – of confusion,” a burden that it also did not meet. Even with the victory on the copyright and false advertising claims, we’re guessing Electrolux thinks the decision, well, sucks.

Practice Note: One method of distinguishing trade dress elements is to use “look for” advertising tactics in marketing the products. If a product contains non-functional elements that truly distinguish the product, a company can generate recognition around those features by directing clients to look for them when they make a purchase. Such use may be more persuasive than survey evidence in making clear to both customers and competitors what elements of a design are trade dress.

Mallery v. NBC Universal, No. 07 Civ. 2250, 2007 U.S. Dist. LEXIS 88960 (S.D.N.Y., December 3, 2007)

Another “absurd” (the court’s words) claim that a Hollywood studio stole plaintiffs’ ideas for a hit show. And another reminder that not all copying amounts to actionable copyright infringement. That two works of fiction have similar plot, scenes or characters does not necessarily mean there is infringement.

Plaintiffs claimed that the TV show “Heroes” was “strikingly similar” to a novel, short film and painting series they created. “Heroes” is a show that borrows from comic book lore and tells the intersecting stories of a diverse group of individuals who discover they have superhuman powers. In the first season, the characters try to prevent an explosion that is set to destroy New York City, as predicted in paintings created by a character who can draw the future (like the one shown below).

Plaintiffs claimed that “Heroes” was similar to their works in a number of ways. They claimed that it contained characters who were “minorities” and had the ability to paint the future. They also claimed that the stories both featured paintings depicting New York buildings destroyed and predictions that were validated in a newspaper. Other alleged similarities included close up eye images, twin characters, and characters trying to stop tragic events.

The court granted defendant’s motion for summary judgment and held that any similarities between the works related to unprotectable ideas. Storylines such as a minority artist painting the future or heroes trying to stop a catastrophe are scenes à faire, that is to say elements that necessarily follow from the choice of storyline or situation and are not protected by copyright. The court also rejected plaintiff’s argument that the works had similar “total concept and feel.” It noted that any similarities were too abstract for a jury to find substantial similarities and that the two stories “differed in nearly every relevant way.”

This opinion follows a long-line of cases holding that similar stories and characters do not necessarily amount to copyright infringement; for example cases finding that a children’s book about a dinosaur zoo was not substantially similar to the film Jurassic Park, or that the character of Superman was not substantially similar to the TV show “Greatest American Hero.”

Dalton-Ross Homes, Inc. v. Williams, No. CV-06-1301-PCT-FJM, 2007 U.S.Dist. LEXIS 64135 (D. Ar. August 29, 2007).

This case highlights the crucial importance of registering works that copyright owners want to protect and enforce.

Plaintiff, a construction company, owned and registered the copyright in architectural floor Plan 1. A draftsman working for plaintiff prepared Plan 2, based on Plan 1, and Plan 3, based on Plan 2 (and, possibly, Plan 1). Defendants hired the same draftsman, who used plaintiff’s Plan 3 to prepare Plan 4 for defendants. Plaintiffs alleged that defendant’s Plan 4 infringed on plaintiff’s Plan 3, which was derivative of registered Plan 1. Plaintiff never registered its copyrights in Plans 2 or 3.

Dalton-Ross Homes’ Villa Del Mesa model
(”Plan 1″)

The court granted defendant’s motion for summary judgment, stating that copyright registration is a prerequisite to bringing an action in federal court for copyright infringement (17 U.S.C. § 411). A separate registration was required for Plan 3, the derivative work that was the subject of the action. Registration of the underlying original work was not sufficient to create jurisdiction in a lawsuit for infringement of the unregistered derivative work.

The court noted that copying an unregistered derivative work might give rise to liability based on infringement of the registered underlying work, if plaintiff can establish that defendant copied protectable elements of the original work. In this case, plaintiff merely argued that Plan 4 was derivative of Plan 3, which in turn was derivative of Plan 2, which in turn was derivative of Plan 1. Plaintiff never directly argued infringement of Plan 1. If it had done so, the result of the case may have been different.

Jacobsen v. Katzer, No. C06-01905 JSW, 2007 U.S. Dist. LEXIS 63568 (N.D. Ca. August 17, 2007)

This little case about model railroad software addresses a debated issue in the open source community: on what basis can open source creators sue people who misuse their work. This case seems to suggest breach of contract is an available remedy, but not copyright infringement. The case also deals with copyright law preemption.

Plaintiff developed model train software made available on this online community. Plaintiff’s work was subject to a standard open source software license permitting members of the public to make copies, distribute and make derivative works, providing they gave credit to the creators. Plaintiff alleged that defendants used plaintiff’s software to develop and fraudulently patent their own software for model train enthusiasts. Plaintiff sued on a number of counts and moved for a preliminary injunction to enjoin defendants from willfully infringing plaintiff’s copyrighted materials.

The court first held that plaintiff’s claims of unfair competition and unjust enrichment were preempted by federal copyright law, as both counts dealt “exclusively” with the misappropriation of plaintiff’s copyrighted files, a subject matter within the Copyright Act. To survive preemption the state claims must protect different rights than copyright rights. The state claims here did not add the required “extra element” to change the nature of the action or the rights secured under copyright law.

The court then denied plaintiff’s injunction, stating that plaintiff’s claims sounded in contract, not copyright. The court held that, implicit in a non-exclusive license like this one was a promise not to sue for copyright infringement. That is not to say that a licensor may never sue for copyright infringement, but they may only do so when the licensee exceeds the scope of the license. In this case, the license, like all open source licenses, was intentionally broad, closing the door to a copyright claim.

Tiseo Architects, Inc. v. B &B Pools Serv. and Supply Co., No. 06-1819, 2007 U.S. App. LEXIS 17894 (6th Cir., July 20, 2007)

This case illustrates the long-standing, but sometimes forgotten, copyright principle: that one must first analyze whether the similarities between defendant’s and plaintiff’s works pertain to original elements of plaintiff’s work. If they do not, then there is no infringement.

First, the facts: B&B Pools hired Tiseo Architects to prepare design drawings for its store remodel; then later hired a new architect, Olson, to prepare the construction plans. Tiseo sued for copyright infringement.

The Sixth Circuit affirmed the lower court’s finding of no infringement. Even when works are very similar and access to plaintiff’s work is obvious, defendant’s work must be substantially similar to protectable elements of plaintiff’s work. Filtering out the unoriginal, unprotectable elements of Plaintiff’s plans (such as elements dictated by the client or zoning regulations), the court reached the logical conclusion: there are not a lot of ways for an architect to draw plans for an existing office.

Practice Tip: Practitioners should take care to fully analyze the elements of their infringement cases. The result in this case might have been different if Plaintiff had briefed the similarities between the protectable elements of the drawings, which, according to the Sixth Circuit Court, it did not do.

WB Music Corp v. RTV Communications Group, Inc. 445 F.3d 538 (2d Cir. 2006)

In 7 separate CD products, RTV copied and distributed unauthorized copies of WB Music’s copyrights in 13 musical works. The trial court held that the infringement was willful and granted statutory damages for 7 infringments.

On appeal, the Second Circuit reversed and awarded 13 infringements. The damage calculation was properly the works taken not the works produced.

Roberts v. Keith 79 USPQ 2d 1368 (SDNY 2006)

This is a case of disclosure; biding one’s time; and that biding being seen as a fraud that tolled the three year statute of limitations.

Roberts wrote songs in 1976 and 1977 and showed them to Keith who stated that he had no interest in those works.

In 1980, Keith released the songs; and between 1997 - 2001, Keith’s song was re-released repeatedly in compilations.

Roberts sued Keith in 2003 for copyright infringement; and, Keith defended that the statute of limitations barred all infringements prior to 1999.

Court held that the Statute of Limitations was tolled by the fraud of Keith. Motion of dismiss on statute of limitations denied; case going forward.

Gilpin v. Siebert 419 F. Supp 2d 1288 (D. Or. 2006)

Bernadine Gilpin was an employee of the Portland Community College as a counselor. With another college employee, Al Gilpin, she co-authored a book, “College Survival and Success”.

In a copyright infringement action between the two authors, summary judgement was denied because there was insufficient evidence on whether the Work Made For Hire doctrine applied. The court noted that the record was insufficient to determine the following:
-whether the writing was incidental to job duties;
-whether work was created inside or outside the authorized work hours;
-whether the the writing was within her job description;
-whether the writing was written with the intent to benefit the college; and,
-whether the writing was inspired by or derivative to her work experience.

A veritable paint-by-numbers for a professor to own a copyright, it is.

Pritchett v. Pound No. 05-41445 December 18, 2006 (5th Cir)

Pound was an employee of Pritchett; and his employment agreement/ job description included that he would be“completing regular written
assignments and the development of new products and procedures;” and that “[s]hould the Employee produce any written materials in the course of
his work with the Employer, then such shall be done for and on behalf of the Employer and all work produced shall be the exclusive property of the Employer.”

While still employed in 1988 and 1989, Pound co-authored two books which Pritchett both filed for copyright applications at the United States Copyright Office, and published and sold successfully.

When completing the copyright application, Pritchett erroneously checked “NO” in response to the question, “Is this a Work Made For Hire?”; and went on to identify Pound as an “author” on that form. The copyright applications resulted in registrations; and an effort to correct that error at the Copyright Office was blundered in 1990.

In 1995, Pound died. Pritchett was generous in accomodating the widow including paying the entire one million dollar bonus that year even though Pound had only worked one quarter of that year.

In 2002, Pound’s widow sued Pritchett as a joint author demanding an accounting and damages.

Pritchett defended that Pound was not an author, and that the Work Made For Hire doctrine trumped the errors in the copyright application.

The Fifth Circuit agrees with Pritchett stating that a more clear agreement of the parties was needed to change the status of Work Made For Hire. The error in the copyright application was not substantive or effective in changing ownership.

Faessler v. United States Playing Card Co 1:05-cv-00581; U.S. District Court for the Southern District of Ohio

Michael Faessler was a cadet at the United States Military Academy when he composed a playing card set modeled on the military ranking system (lowest rank correlates to lowest card and so on). Faeseller registered his set with the United States Copyright Office; offered to sell the cards through the military commissaries but was declined that opportunity.

Upon learning that his identical card sets were being manufactured, and distributed by the military commissary, Faessler sued.

Two of the defenses raised were that there is no copyright in the set; and that the location of copyright notice solely on the joker card and not on any of the other cards caused any copyright to be forfeit and the work in the public domain.

The trial court held that the copyright in the set is valid and enforceable; and that the notice on the joker card alone is sufficient.