Category Archives: Useful Article

Attorneys’ fees evaluations in unpublished decisions

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Shourin Sen - 23 April 2010 – 9:00 am
Filed under Attorneys' Fees, Useful Article

Lanard Toys, Ltd. v. Novelty, Inc. (9th Cir. 2010) (unpublished)

The Ninth Circuit recently affirmed a jury decision finding that, among other things, a slingshot was not a noncopyrightable useful article. (H/t Raymond Dowd.) I thought I would briefly address the Circuit’s attorneys’ fees analysis since fees are apparently the topic of the week.

After determining the appropriate defendants to access attorneys’ fees against, the Circuit wrote one sentence on whether the District Court’s granting of fees was appropriate: “An award of attorneys’ fees on appeal is appropriate in this case pursuant to 17 U.S.C. 505, to further the purposes of the Copyright Act — i.e, to protect copyrights and deter infringement.”

If I’m allowed to be nit-picky about an unpublished memorandum issued by an overburdened Circuit, the Copyright Act’s directive is to Promote the Progess of Science. Graham v. John Deere Co., 383 U.S. 1 (1966) (adopting Richard Crosby De Wolf‘s disjunctive reading of the Progress Clause.) The deterrence of infringement is a means to an end, not an end in and of itself. The Supreme Court has noted that attorneys’ fees should be awarded, at the court’s discretion, to encourage “meritous” infringement claims, and to encourage clearly demarcated boundaries of the Copyright Act. Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (reversing the Ninth Circuit and finding that a prevailing defendant cannot be held to a more stringent standard than a prevailing plaintiff in an attorneys’ fee evaluation under the Copyright Act.)

This begs a pair of question: If one of the purposes of awarding attorneys’ fees is to encourage clearly demarcated boundaries, are parties being denied neutral application of the Copyright Act when a Circuit elects to issue an unpublished opinion. How can litigants be rewarded for assisting in the demarcation of boundaries when a Circuit elects to issue an unpublished opinion?

Fair use cannot be raised sua sponte, 11th Cir.

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Shourin Sen - 6 April 2010 – 9:00 am
Filed under Derivative Work, Fair Use, Noncopyrightable Material, Useful Article

Latimer v. Roaring Toyz, Inc., 2010 WL 1253090 (11th Cir. 2010)

The facts of this case are somewhat convoluted. Kawasaki engaged a motorcycle shop to customize two ZX-14 motorcycles for use in promotional material. The customization shop hired a third-party designer to paint the bikes using his own graphics and color scheme. The owner of the cycle customization shop also hired a noted motorcycle photographer, at the bequest of Kawasaki, to take pictures of the customized ZX-14s. The customization shop never entered into written agreements with either the paint job designer or the photog.

The photog claimed, but it was disputed, that the customization shop assured him that the photos would only be used on placard besides a showing of the ZX-14s at Daytona Bike Week and that the photos would not be leaked before the release of a forthcoming issue of Two Wheel Tuner, which feature pictures of his of the bikes from a different photo shoot. Instead, Kawasaki used the photos in a press release which they distributed to the media, the customization shop distributed the photos on its website, and the motorcycle publication Cycle World published three of the photos that were included in Kawasaki’s press kits.
The photographer brought suit alleging, inter alia, that (1) the customization shop unlawfully  distributed his photos on its website; (2) Kawasaki unlawfully distributed his photos as part of its press kits, and (3) the publisher of Cycle World magazine unlawfully distributed his photographs in the magazine.

The defendants moved for summary judgment arguing that the photographs were “unauthorized derivative works based upon protectable preexisting works” of the third-party artist who painted the bikes. The district court granted summary judgment to Kawasaki and the publisher of Cycle World finding that the phtog granted Kawasaki an implied license to use the photographs in its press release materials, and that Cycle World’s subsequent publication of the photographs was fair use (the District Court raised the issue of fair use sua sponte). The District Court also found that the photographs were not derivative works of the third-party artist’s paint design.

The Eleventh Circuit delved into a discussion of whether a photograph is a derivative work but ultimately found that the third-party paint artist had granted a non-exclusive license to the photog. The Court found that the third-party artist knew that the ZX-14 that he was customizing was ultimately for Kawasaki’s promotional purposes. The Circuit found that it was “reasonable to infer” that the third-party artist intended that his artwork be photographed and distributed by Kawasaki, the motorcycle customization shop, and the media.  The Circuit thus found that the photographs were not infringing, and sidestepped the need to answer the question of whether the photographs were derivative of the the third-party artist’s paint work.

Fair use

The Court also addressed the issue of whether fair use can be raised by a court sua sponte. The defendant-appellees elected not to assert fair use in their answer or in their motion for summary judgment.  In a series of rather peculiar events, fair use was first raised by the district court sua sponte in its summary judgment order. It later vacated the order to allow the parties to brief, among other things, the issue of fair use. In the defendants brief on the second motion for summary judgment they stated “Defendants respectfully suggest that this Court need not go as far as fair use analysis in order to determine, as a matter of law, that [Cycle World's] use of the photographs was lawful.” On reconsideration the district court for a second time entered summary judgment in favor of the publisher of Cycle World on the issue, finding its distribution of the photos were a non-infringing fair use.

The photog on appeal argued that, as an affirmative defense, fair use must be pled in an answer. The Eleventh Circuit found that the district court erred in raising the defense sua sponte. The Circuit, however, did not decide the question of whether the defense was waived. The Circuit found that although an affirmative defense usually must be raised in an answer, courts recognize exceptions to the general proposition. The Circuit also stated in a footnote that if factual questions in any resulting fair use analysis “are in dispute, these must be resolved by the jury.”

On whether a work merits copyright protection is a question of law or fact

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Shourin Sen - 29 June 2009 – 9:00 am
Filed under Originality, Useful Article

Jonathan Browning, Inc. v. Venetian Casino Resort LLC, 2009 WL 1764652 (N.D. Cal. 2009)

There was an interesting decision last week in the Northern District of California over the question of whether a work warrants copyright protection is of one of law, appropriate for a judge, or fact, appropriate for a jury. The Plaintiff brought suit for among other things infringement of its copyrights in two lighting fixtures. The Defendant challenged whether the works merited protection. An examiner at the Copyright Office had rejected registration of the fixtures finding that they were “‘useful articles’ which do not contain any separable features that are copyrightable.” Post rejection, the Plaintiff submitted hand drawings of the light fixtures to the Copyright Office that were registered.

At issue on this motion was a request by the Plaintiff to strike an expert report and to preclude the Defendants from offering the expert’s testimony in opposition to Plaintiff’s motion for summary judgment or at trial. The Plaintiff objected to the testimony on the grounds that the expert was set to speak about a pure issue of law, whether a work merits copyright protection. As a pure question of law, the Plaintiff argued, the issue must be reserved for the judge to decide as a matter of law, sans expert testimony. (The Defendant, perhaps as a tactical decision, elected not to challenge the characterization of the issue as a question of law.)

The Court agreed that the question of whether a work is copyrightable is a question of law, citing Pivot Point International, Inc. v. Charlene Products, Inc., 932 F.Supp. 220, 225 (N.D.Ill.1996) (holding that there is no need for expert testimony on the subject of what constitutes copyrightable subject matter as the issue is determined by the judge, not the jury). The Court excluded the expert testimony in regards to the whether specific light fixtures at issue warranted copyright protection, but allowed the expert’s testimony on the general practices of the Copyright Office and history of design protection:

The subjects of Mr. Oman’s testimony, as represented in his report, are: (1) the practices and procedures of the Copyright Office; (2) the history of design protection in the United States; and (3) the decisions of the Copyright Office as to the light fixtures at issue here. To the extent Mr. Oman wishes to testify generally about the practices and procedures of the U.S. Copyright Office regarding the registration of useful articles, or the procedures for special handling requests, or the history of design protection in the United States, Mr. Oman is entitled to so testify. However, to the extent Mr. Oman is proffered to testify about the copyrightability of the specific light fixtures in this matter or the particular decision on those fixtures, that testimony does indeed pertain to an ultimate issue of law to be decided by the Court, and not by the jury.

Notes:

  • Patry on Copyright takes the position that the question of whether a work is a useful article, that doesn’t contain independent features that merit copyright protection, is a question of fact that may be resolved by a jury with expert testimony. Citation to Poe v. Missing Persons, 745 F.2d 1238 (9th Cir. 1984); Kikker 5150 v. Kikker 5150 USA, LLC, 2004 WL 1837926 (N.D. Cal. 2004). Patry at 3:147.  More generally, the Treatise states that the “vast majority” of courts have held that “creativity is a question of fact.” Patry at 3:39.