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.

Debunking the myth that a group of attorneys can never agree on anything, 30 attorneys general recently sent a letter to the administrator of the federal Alcohol and Tobacco Tax and Trade Bureau, requesting that the organization investigate the aggressive marketing campaigns that surround the promotion of new energy drinks that mix caffeine and alcohol (a trend started by want-to-have-it-all professionals whose drink of choice is a Vodka and Red Bull cocktail).

The recent boom in energy-alcohol drinks, coupled with the super-sweet alcohol “soft drinks” is sparking a trend by consumers of drinking alcohol beverages designed to feel alcohol-free. If nothing else, the proliferation of drinks like Anheuser Busch’s Bud Extra, Miller Brewing Company’s Sparks, and other alco-energy drinks like Charge and Liquid Core, make clear that such drinks are speeding up the cash conveyor for large companies.

AGs nationwide are concerned that the aggressive position marketers are taking with these drinks, coupled with the “outlandish” health-claims related to the consumption of these energy-pops are misleading. Moreover, many AGs believe that the target market is underage drinkers. Slogans like “You can sleep when you’re 30” and references to “pulling an all-nighter,” appear, at least in the minds of the attorneys general, to be focusing on the under 21 crowd.

Practice Pointer: Even when a marketing campaign is legally sound, and regardless of the product, when companies engage in advertising that is directed at a younger crowd, they run the risk of having parents and watchdog groups complain if the message, however understated, suggests a behavior that is either illegal, or promotes unhealthy habits. Attorneys should advise their clients to be prepared for fallout when launching aggressive marketing campaigns.

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.

The latest trend in customer loyalty and brand value is the creation of the Limited Edition gift card. Currently, consumers can purchase the gift card for the value of the card. When the value is depleted, the gift card is theirs to keep. The retention by the consumer of the commemorative card is associated with a positive perspective on the client.

Recently, the Texaco Company has begun selling what it calls commemorative gift cards, featuring the image of Juan Pablo Montoya on the cards and touting it as a limited edition card. Currently, the special edition card costs no extra.

Some state laws forbid the charging of a sizeable premium for a gift card. This new twist, however, paves the way for companies to recoup any losses they may rack up in the creation of the cards themselves. So long as the card is legally a “limited edition,” and there is some real value associated with collecting the card, companies may start trying to push the envelope with regard to charging a premium for gift cards. It appears that the “free drinking glass with fill-up” days are long over.

Last Wednesday, Johnson & Johnson filed suit against the Red Cross, alleging trademark infringement of J&J’s RED CROSS design by the Red Cross for products licensed by the Red Cross and sold to the public.

J&J doesn’t appear to dispute the Red Cross’ use of the mark for disaster preparedness, but claims that its use cannot extend to commercially available products, such as first aid kits, something J&J has been selling since at least as early as 1903 (and possibly 1887). J&J claims that the 1900 Charter by Congress did not give the Red Cross the right to sell commercial products. The Red Cross, on the other hand, points to language in the Charter that allowed it to register its emblem (red cross on a white background) in every class at the U.S. Patent and Trademark Office, as well as language in the Charter that allows it to carry out other activities consistent with its Charter purposes. Supplying the public with various products related to safety, the Red Cross contends, is completely within the course and scope of its mandate and the Charter. Such a position is making J&J see red.

If the Red Cross’ public information is correct and it has for 100-plus years been selling first aid kits for over 100 years openly, and with the knowledge of J&J, this writer thinks a laches defense might well carry the day. If J&J leaps that hurdle, then perhaps a showing of lack of confusion for the past 100 years is sufficient to quiet the company. Nabisco, Inc. v. PF Brands, Inc. 191 F. 3d 208 (2d Cir. 1999)Surely, the proliferation of third party “cross” marks, coupled with both entities’ longstanding histories has over time educated consumers to the distinction between the two marks’ use. Sun Banks of Fla., Inc. v. Sun Fedl. Sav. & Loan Ass’n. 651 F.2d 311 (5th Cir. 1981); Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (TTAB 1990).

Despite the fact that the marks are identical, it’s not difficult to tell the difference when we are presented with each; much like pornography, we know which is which when we see it. What is likely making J&J see red is the potential loss of market share rather than any real concern of confusion. And here we thought trademarks were for consumer protection.

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.