IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Copyrights
Subscribe to Copyrights's Posts

A Closed Book: No Past Infringement, No Reading Between the Lines into the Future

by | Feb 18, 2021 |

The US Court of Appeals for the Sixth Circuit affirmed a district court’s grant of summary judgment in favor of the defendant, finding no current or future copyright infringement. OverDrive Inc. v. Open E-Book Forum dba International Digital Publishing Forum, Case No. 20-3432 (6th Cir. Jan. 27, 2021) (Sutton, J.)

OverDrive is a digital reading platform and a member of International Digital Publishing Forum, a nonprofit trade association dedicated to the development of electronic publishing standards. The Forum has an intellectual property policy, approved by Overdrive and its other members, which provides that while its members retain copyrights in their contributions, they also grant the Forum a license to “reproduce, adapt, distribute, perform, display, and create derivative works” of any copyrighted contributions to EPUB, the leading eBook file format. The license also allowed the Forum to sublicense others to do the same.

In 2016, the Forum entered into an asset-transfer agreement with the World Wide Web Consortium, an international organization dedicated to developing web standards. The agreement granted the Consortium a “license to use” the Forum’s intellectual property to carry out digital publishing activities. The agreement further provided that the Forum would dissolve and its intellectual property rights, including any in EPUB, would be owned by the Consortium. The Consortium began developing improvements to EPUB. Shortly thereafter, the Forum and the Consortium entered into a second agreement, which provided that the Consortium’s license to “use” the intellectual property encompassed a license to “reproduce, adapt, distribute, perform, display and create derivative works.” In the second agreement the Forum agreed to begin the dissolution process only if and only when it transferred its intellectual property to the Consortium.

OverDrive sought a declaratory judgment that the Forum had violated and would violate its copyrights in EPUB. OverDrive claimed that the Forum infringed its copyrights by giving the Consortium access to EPUB. At the close of discovery, the Forum moved for summary judgment, which the district court granted for two reasons. First, it found that the Forum’s license defeated the infringement claim. Second, it found the claim for future infringement was not ripe. OverDrive appealed.

The Sixth Circuit agreed that the “use” license granted by Overdrive gave the Forum the right to “reproduce, adapt, distribute, perform, display and create derivative works” of Overdrive’s EPUB copyrights, and permitted the Forum to use the copyrighted work in these ways. The license also gave the Forum an unrestricted right to grant sublicenses with respect to those same copyrights. In turn, the appellate court concluded that the Forum permissibly sublicensed EPUB to the Consortium, including any of OverDrive’s copyrights in EPUB.

In support of its claims of future copyright infringement, OverDrive argued that once the Forum dissolved, the Consortium would lose its sublicense and its work on EPUB would then constitute copyright infringement. The Sixth Circuit disagreed. The ripeness doctrine two-question inquiry asks:

  • Does the claim arise in a concrete factual context and concern a dispute that is likely to come to pass?
  • What is the hardship [...]

    Continue Reading


read more

No Matter How Many Touched the Flowers, Single Infringement Begets Single Statutory Damages Award

by | Feb 11, 2021 |

In a dispute over the alleged infringement of a floral print textile design, the US Court of Appeals for the Ninth Circuit affirmed the plaintiff’s ownership of a valid copyright, but reversed and remanded for further proceedings on the issue of statutory damages, finding that the Copyright Act permits only a single award of statutory damages where multiple named defendants infringed one work. Desire, LLC v. Manna Textiles, Inc., et al., Case No. 17-56641 (9th Cir. Feb. 2, 2021) (Bennett, J.) (Wardlaw, J., concurring in part, dissenting in part). Judge Wardlaw’s dissent argued that the majority’s ruling limiting statutory damage awards was contrary to controlling Ninth Circuit precedent

Desire, a Los Angeles-based fabric supplier, sued Manna Textiles and several manufacturer and retail defendants for willful copyright infringement when Manna created a fabric design based on Desire’s two-dimensional floral print textile design, which Desire registered with the US Copyright Office in June 2015. Manna sold the copied floral textile design to the other defendants, which created and sold women’s garments made from the fabric.

After a jury trial, the jury found that Manna and two other defendants willfully infringed Desire’s textile design, and that two other defendants innocently infringed the design, and awarded statutory damages ranging from $10,000 to $150,000 against each defendant. The defendants appealed.

The Ninth Circuit readily affirmed the district court’s holding that Desire owned a valid copyright in its textile design, and noted that the district court was correct to extend broad copyright protection to the design. In particular, the Court confirmed that the Desire floral textile was sufficiently original and independently created, and that the originality of the stylized (rather than “lifelike”) flowers warranted broad protection.

The Ninth Circuit dedicated the majority of its opinion to its finding that the district court erred in permitting multiple awards of statutory damages. First, the Court determined that the district court correctly apportioned joint and several liability among the defendants by assessing which defendants were responsible for which acts of infringement based on the defendants’ distribution or sale of the fabric among one another or to end consumers. In short, based on a particular defendant’s upstream or downstream position in the distribution chain, and the “but for” cause of infringement within the chain, a defendant could be jointly and severally liable with certain other defendants, but not all defendants could be jointly and severally liable with all other defendants.

When statutory damages under 17 USC § 504(c)(1) (c)(1) are elected in lieu of actual damages and profits, ) the number of statutory damages awards available in a particular matter depends on the number of individual works infringed and the number of separate infringers. Here, the Ninth Circuit affirmed that there was only one work at issue (Desire’s floral print textile) and considered whether the Copyright Act authorizes multiple statutory damages awards where one infringer is jointly and severally liable with all other infringers, but the other infringers are not completely jointly and severally liable with one another. “No” was [...]

Continue Reading



read more

2020 IP Law Year in Review: Copyrights

by , and | Feb 2, 2021 |

Executive Summary

Copyright jurisprudence in 2020 was, in many ways, a study in the scope of copyright protection. While certain courts brought century-year-old precedent to the forefront to interpret the scope of copyrights, other courts ruled overruled 40 years of precedent to even the playing field between popular works and works that are less known.

In the wake of the US Court of Appeals for the Ninth Circuit’s pivotal copyright decision in the Led Zeppelin “Stairway to Heaven” lawsuit, several district courts, within and outside California, have relied on the en banc decision to resolve similar issues related to copyright infringement. The defining scope of the Zeppelin decision will have long-lasting effects within the music industry and beyond.

Copyrights

  1. Unprotected Subject Matter
  2. Copyright Infringement – Damages
  3. Music – The Scope of Protection
  4. Music – Royalty Rates for Digital Transmissions
  5. SCOTUS Update – Google v. Oracle

2021 Outlook

There is plenty to look forward to in 2021. We are certain to see big ripples from the Supreme Court decision in Google v. Oracle; whether it will “upend the world” is another story. Certainly the Court may rule on the extent to which software should be afforded copyright protection and the degree to which fair use applies to software copyrights. One thing is for sure—both sides agree that the future of software innovation is at stake. We are also certain to see a rising tide of cases relying on Skidmore v. Led Zeppelin, as we have already seen with the Katy Perry and Ed Sheeran cases. With the elimination of the inverse ratio rule, less popular songs will have a fairer day in court. Finally, once the vaccines allow for the courtroom doors to open again, we expect to see a flood of copyright infringement jury trials that were put on hold in 2020. Indeed, 2021 is looking like a very busy year.

Read the full report.



read more

2020 IP Law Year in Review: European Issues

by , and | Jan 26, 2021 | , , ,

Executive Summary

From a German perspective, 2020 saw highly interesting developments that may well have an impact even beyond the borders of Germany. For example, the Federal Court of Justice (Bundesgerichtshof) in Sisvel v. Haier handed down a landmark decision on fair, reasonable and non-discriminatory (FRAND) law. This decision has already affected many FRAND cases tried before lower instance courts. Generally speaking, the FRAND law judgments issued in Germany in 2020 may have more upsides for standard-essential patent (SEP) holders than for implementers of standardised technologies.

A successful constitutional complaint against the German act to ratify the Unified Patent Court (UPC) Agreement delivered a serious blow to the attempt to establish the UPC. However, German Federal Parliament and Federal Council managed, just before the end of 2020, to pass another UPC ratification act, thereby rectifying the mistake that led to the success of the constitutional complaint. The fate of the UPC project remains somewhat unclear, however, in light of newly filed constitutional complaints.

Finally, 2020 saw the United Kingdom officially withdraw from the European Union on 1 February and become a third-party country after a transitional period that ended on 31 December. This event has multiple consequences for EU intellectual property rights, particularly EU trademarks, depending on whether they were filed or registered as of 1 January 2021.

European Issues

  1. Germany and the UPC
  2. German Federal Court of Justice on FRAND Law: Sisvel v. Haier
  3. How Does Brexit Affect European Trademark Rights?

2021 Outlook

Even though there were major developments in Germany regarding FRAND law and the UPC in 2020, these topics are far from being finally settled.

After the Federal Court of Justice’s Sisvel v. Haier decision led to relatively SEP-holder-friendly decisions by the Munich I District Court and the Mannheim District Court, the Düsseldorf District Court referred several FRAND-related questions to the CJEU in November 2020. The expected CJEU decision has the potential to shape the future of FRAND law not just in Germany, but in the whole European Union.

It will be interesting to follow the further development of the UPC project in the light of new constitutional complaints filed against Germany’s new act to ratify the UPC Agreement. These complaints may put another hold on the UPC undertaking. In any event, Germany is not expected to deposit its instrument of ratification very soon because the UPC still needs time to set up its infrastructure, including the appointment of judges.

The question of whether competitors and consumer associations can issue warning letters for violations of the General Data Protection Regulation (GDPR) continued to occupy the courts in 2020, and likely will do so in 2021 as well. According to a decision of the Stuttgart Court of Appeal dated 27 February 2020 (2 U 257/19), competition associations can issue warning letters for violations of the GDPR. The Berlin Court of Appeal previously affirmed this on 20 December 2019 (5 U 9/18) for consumer associations in the [...]

Continue Reading



read more

IP Implications of the Consolidated Appropriations Act, 2021

by | Jan 14, 2021 | , ,

On December 27, 2020, Congress signed the Consolidated Appropriations Act, 2021, into law. The omnibus act includes new legislation affecting patent, copyright and trademark law. A brief summary of key provisions is provided below.

Patents – Section 325 Biological Product Patent Transparency

42 USC § 262(k) was amended to require that the US Food and Drug Administration (FDA) provide the public with more information about patented biological products. Within six months, the FDA must make the following information available to the public on its Database of Licensed Biological Products or “Purple Book,” and it must update the list every 30 days:

  • A list of each biological product, by nonproprietary name, for which a biologics license is in effect
  • The license date and application number
  • The license and marketing status (as available)
  • Exclusivity periods

The amendment requires that the holders of a license to market a biologic drug now disclose all patents believed to be covering that drug. The new law is designed to prevent errors that could delay biosimilars from coming to the market.

Copyrights – The CASE Act of 2020

The Consolidated Appropriations Act incorporates the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2020, as well as legislation designed to increase criminal penalties for the unauthorized digital streaming of copyright-protected content. The CASE Act includes revisions to the Copyright Act, 17 USC §§ 101 et seq., with the goal of creating a new venue for copyright owners to enforce their rights instead of having to file an action in federal court.

The Copyright Claims Board

The CASE Act established the Copyright Claims Board (a small claims court), which is designed to serve as an alternative forum where parties may voluntarily seek to resolve certain copyright claims regarding any category of copyrighted work. A party may opt out upon being served with a claim, choosing instead to resolve the dispute in federal court. A party to a proceeding before the Board may, but is not required to, be represented by a lawyer. A party may also be represented by a law student who is qualified under applicable law, and who provides such representation on a pro bono basis. The Board consists of three copyright claims officers who may conduct individualized proceedings to resolve disputes and must issue written decisions setting forth their factual findings and legal conclusions.

Procedural Matters

The Board must follow the law in the federal jurisdiction in which the action could have been brought if filed in federal court. Because jurisdictional conflicts may arise where a dispute may have been brought in multiple jurisdictions, the CASE Act provides that the Board may apply the law of the jurisdiction that the Board determines has the most significant ties to the parties and the conduct at issue.

Although formal motion practice is not permitted, discovery is allowed on a limited basis, including requests for documents, written interrogatories and written requests for admission. The Board may consider evidence, documentary and (non-expert) testimony, without the application of formal [...]

Continue Reading



read more

Government Contractors May Include Restrictive Markings on ‘Unlimited Rights’ Data

by and | Jan 7, 2021 |

The US Court of Appeals for the Federal Circuit reversed an Armed Services Board of Contract Appeals (ASBCA) denial of summary judgment and held that a federal contractor may include certain restrictive markings on “unlimited rights” data supplied to the US government. The Boeing Company v. Secretary of the Air Force, Case No. 19-2147 (Fed. Cir. Dec. 21, 2020) (Lourie, J.)

Boeing entered into two contracts with the US Air Force that required Boeing to deliver technical data to the Air Force with “unlimited rights” pursuant to Defense Federal Acquisition Regulation Supplement 252.227-7013 (-7013 clause). Boeing marked each technical data deliverable submitted to the Air Force with a legend that described Boeing’s data rights pertaining to third parties. The government rejected Boeing’s technical data deliverables in view of the legend Boeing placed on the data, and Boeing requested a Contracting Officer Final Decision (COFD) regarding the propriety of its marking. The Air Force issued a COFD for each contract, confirming the rejection of technical data marked with Boeing’s legend as a nonconforming marking because it was not in the authorized format pursuant to paragraph (f) of the -7013 clause (Subsection 7013(f)).

Boeing appealed the COFDs to the ASBCA and moved for summary judgment, arguing that Subsection 7013(f) only applies to legends that restrict the government’s rights in technical data and is inapplicable to legends that only restrict third-party rights. The ASBCA denied Boeing’s summary judgment motion because Boeing’s legend was not one of the four specific legends authorized under Subsection 7013(f). The ASBCA entered final judgment, and Boeing appealed.

The Federal Circuit reversed. The Court found that the plain language of Subsection 7013(f) makes clear that the two sentences describe the way in which a contractor “may assert restrictions on the Government’s rights,” and agreed with Boeing that Subsection 7013(f) applies only in situations when a contractor seeks to assert restrictions on the government’s rights. The Federal Circuit explained that under the ASBCA’s reading, the first sentence would be “entirely unnecessary” to the regulation, and the Court “cannot disregard the first sentence.” The Court also explained that its interpretation of Subsection 7013(f) is faithful to the overall purpose of the -7013 clause because the US Department of Defense intended the technical rights regulations to govern allocation of data rights between contractors and the government.

The Federal Circuit remanded the case back to the ASBCA for further proceedings on whether Boeing’s legend did in fact restrict the government’s rights.

Practice Note: This decision strengthens contractors’ ability to ensure that data supplied in a federal procurement remain protected from non-governmental access, particularly in light of evolving standards for the protection of “confidential information” pursuant to the Freedom of Information Act from the Supreme Court holding in Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356 (2019).



read more

This Mashup Is Not a Place You’ll Go – Seuss Copyright Will ‘Live Long and Prosper’

by | Jan 7, 2021 | ,

Presented with a publishing company defendant’s mashup of Dr. Seuss’ copyrighted works with Star Trek in a work titled Oh, the Places You’ll Boldly Go!, the US Court of Appeals for the Ninth Circuit tackled claims of both copyright and trademark infringement, including the defense of fair use and the use of trademarks in expressive works. The Ninth Circuit reversed the district court’s summary judgment in favor of defendants on the copyright infringement claim and affirmed the district court’s dismissal and grant of summary judgment in favor of defendants on the trademark claim. Dr. Seuss Enterprises, L.P. v. ComicMix LLC, et al., Case No. 19-55348 (9th Cir. Dec. 18, 2020) (McKeown, J.)

Seuss Enterprises owns the intellectual property in the works of late author Theodor S. Geisel, better known as Dr. Seuss. Seuss Enterprises carefully yet prolifically licenses the Dr. Seuss works and brand across a variety of entertainment, media, art and consumer goods, including derivative works of Dr. Seuss’ final book, and graduation favorite, Oh, the Places You’ll Go! When Seuss Enterprises encountered a Kickstarter campaign to raise funds for the Oh, the Places You’ll Boldly Go! mashup work created by ComicMix (a company whose employees include an author of Star Trek episodes), it filed suit for copyright and trademark infringement. The district court granted ComicMix’s motion for summary judgment, holding that the Boldly work was a fair use of Dr. Seuss’s Oh, the Places You’ll Go! and that Seuss Enterprises did not have a cognizable trademark infringement claim under the Lanham Act. Seuss Enterprises appealed.

On appeal, ComicMix asserted its defense of fair use by arguing that its copying of the Dr. Seuss works (described at one point in the record as painstaking attempts to create “identical” illustrations) resulted in a parody of the works. The Ninth Circuit examined the facts under the four non-exclusive factors of fair use reflected in § 107 of the Copyright Act:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
  • The nature of the copyrighted work
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • The effect of the use upon the potential market for, or value of, the copyrighted work.

Remarking that the outcome of the purpose and character of the use factor influences the assessment of the third and fourth factors, the Ninth Circuit concluded that the Boldly work was not transformative as a parody or otherwise, and that the “indisputably commercial” nature of the work weighed against fair use. The Court explained that a parody exists only if the resulting work critiques or comments on the underlying copyrighted work. The Ninth Circuit cited its decision in another Seuss case (Dr. Seuss Enters. v. Penguin Books), which involved the retelling of the O.J. Simpson murder trial through the lens of The Cat in the Hat. Here, the Court similarly found that Boldly only “evokes” Oh, the Places [...]

Continue Reading



read more

Two Turntables, No Microphone: Using Technical Diagram Is Not Copyright Infringement

by | Dec 10, 2020 |

The US Court of Appeals for the Sixth Circuit affirmed a district court’s summary judgment grant with respect to a copyright infringement claim related to technical drawings, and reversed the court’s summary judgment grant related to software source code. RJ Control Consultants, Inc. et al. v. Multiject, LLC, et al., Case No. 20-1009 (6th Cir. Nov. 23, 2020) (Donald, J.)

In 2008, Paul Rogers, through his company RJ Control Consultants (RJC), entered into an oral agreement with his friend Jack Elder, through Elder’s company Multiject. Rogers agreed to develop a rotary turntable control system (not for music, but to control a molding system) for Elder, calling the product “Design 3.”

In 2014, Elder asked Rogers for copies of Design 3’s technical diagrams as well as the software source code “in case something happened” to Rogers. Rogers provided the information to Elder, believing that Elder would not improperly use or disclose the information to others. Three days later, Elder informed Roger that he no longer needed Roger’s services and would instead use RSW Technologies for the assembly and wiring of the system. Elder claimed that he was increasingly concerned with Roger’s pricing and decided to switch out Rogers and RJC for RSW. Multiject and RSW used Design 3, both the technical drawings and the source code, in the assembly and wiring of identical new systems.

In 2016, Rogers obtained two copyright registrations, one for the technical diagrams and one for the source code. RJC filed a complaint for several federal and state law claims, including copyright infringement. Multiject and RSW filed motions for summary judgment on all claims, including dismissal of the copyright claims, which the district court granted. RJC appealed.

Multiject and RSW argued that copyright protection did not extend to the software at issue because the software embodied a procedure, a system and a method of operating an injection molding machine, and that is not eligible for copyright protection. They also argued that the use of copyrighted technical drawings to produce a control system did not constitute copyright infringement of the technical drawings for the same reasons that making a recipe out of a copyrighted cookbook does not constitute copyright infringement of the cookbook. Multiject and RSW asserted that to the extent Rogers sought to protect the “use” of his technical drawings to create something else, he should have sought protection under patent law—not copyright law.

The Sixth Circuit agreed. Because the source code and technical diagrams were registered, the validity of the copyrights was not contested. The Court first considered whether physical copying to reproduce the system contained in the drawings was copyright infringement. The Court noted that whether the drawings were themselves reproduced was a separate question from whether the drawings were used to create the system portrayed in that drawing. The Court found that the “manufacture of the control system from the copyrighted technical drawing was not copyright infringement because the recreation of a control system by using a copyrighted technical drawing is not ‘copying’ for [...]

Continue Reading



read more

By the Book: Unauthorized Material Doesn’t Forfeit Training Guide’s Copyright Protection

by | Oct 8, 2020 |

The US Court of Appeals for the Sixth Circuit affirmed a jury verdict in favor of a copyright owner in a lawsuit alleging infringement of the copyright in a home-services training manual, finding that the jury was correctly instructed that a work’s incorporation of some copyrighted content does not invalidate the copyright in the work’s original parts. Hiller LLC v. Success Grp. Int’l Learning Alliance LLC, Case No. 19-6115 (6th Cir. Sept. 23, 2020) (Suhrheinrich, J.).

Hiller is a home-services company providing HVAC services. Hiller was a paying member of Success Group International, which offered customer service training to home services companies. Success Group conducted training courses using manuals copyrighted by its owner, Clockwork Home Services. Hiller sent its employees to Success Group’s courses and had access to the manuals. Clockwork later sold Success Group to another company, but retained ownership of the copyrights in the manuals and granted a perpetual license for use of the manuals in Success Group’s training business.

Hiller later hired a contractor to create a more interactive training guide for its technicians as a replacement for the manuals. To create the guide, the contractor conducted a two-day workshop with Hiller employees and representatives from Success Group. The workshop included a series of interactive brainstorming sessions. One of the manuals was referred to during the workshop. Ultimately the new guide incorporated some content generated at the design workshop. Other “gap-filling” content was taken directly from the manuals. The contractor also added other original content. The contractor assigned its copyright in the guide to Hiller.

The Success Group subsequently conducted a training class using a workbook that closely resembled the guide. Hiller ended its Success Group membership and sued Success Group for copyright infringement for its use of the workbook. Clockwork intervened, alleging that it owned the guide and seeking declaratory relief invalidating Hiller’s copyright in the guide. Following a seven-day trial, a jury concluded that Hiller had a valid copyright in the guide and that the Success Group workbook copied protected elements of the guide. Clockwork moved for a judgment notwithstanding the verdict, which the district court denied. Success Group ultimately settled with Hiller. Clockwork appealed.

The Sixth Circuit affirmed. First, the Court found that sufficient evidence supported the jury’s verdict that Hiller owned a copyright in the guide. The Court rejected Clockwork’s two-pronged argument that the guide lacked independently created material (required to meet the Copyright Act’s originality requirement) and that Hiller should lose its copyright because the guide contained content taken from the manuals. Based on its selection and organization, the guide contained enough originality created independently by or on behalf of Hiller (through Hiller’s contractor) to meet the originality threshold for copyright protection. The original material included information and graphical depictions selected and organized at the design workshop. The Court also rejected Clockwork’s argument that Hiller should lose copyright protection because the guide was based on Clockwork’s “copyrighted system.” Copyright protection does not preclude others from copying or using the underlying ideas contained [...]

Continue Reading



read more

“Can’t Hold Us” Liable: Macklemore & Ryan Lewis Win Affirmance in Copyright Suit

by | Oct 8, 2020 |

The US Court of Appeals for the Fifth Circuit affirmed a grant of summary judgment on the issue of copyright infringement and an award of attorneys’ fees against the plaintiff under the Copyright Act. Although the Court noted that it lacked jurisdiction to review sanctions against the plaintiff’s attorney, it observed that counsel went beyond “vigorous representation.” Batiste v. Lewis, Case Nos. 19-30400, -30889 (5th Cir. Sept. 22, 2020) (Clement, J.).

Batiste, a local musician, sued Macklemore & Ryan Lewis, an internationally famous hip-hop duo, for copyright infringement. Batiste alleged that the duo sampled his songs without authorization. As support, Batiste submitted the expert report of a musicologist, Milton, but Milton later admitted that Batiste had conducted the analysis and written the report, and that Milton did not even have access to the necessary software. The district court excluded the report, which Batiste then sought leave to resubmit in his own name. The district court denied leave because Batiste had not disclosed himself as an expert and because the new report was untimely. The district court subsequently granted the defendants’ motion for summary judgment, finding that Batiste had failed to submit sufficient evidence of Macklemore and Lewis’s alleged access to Batiste’s work or of probative similarity between Macklemore and Lewis’s works and Batiste’s. The district court then awarded fees to Macklemore and Lewis under the Copyright Act (17 USC § 505) and made Batiste’s attorney (Hayes) jointly and severally liable for the fees award as a sanction under 28 USC § 1987. Batiste appealed.

Addressing the district court’s summary judgment of no infringement, the Fifth Circuit considered Batiste’s proofs as to access and similarity.

Batiste tried to prove access through “widespread dissemination” and “chain of events” theories. The Court held that Batiste’s evidence of widespread dissemination was insufficient because it only established “quite limited” dissemination of Batiste’s music. Batiste’s chain of events theory—under which Macklemore and Lewis allegedly accessed Batiste’s work by playing a concert at a venue near a record store that sold Batiste’s music—raised only a “bare possibility” of access and was therefore also insufficient.

On the issue of similarity, the Court explained that because of Batiste’s failure to show access, he needed to show “striking similarity” to withstand summary judgment. The Court rejected Batiste’s argument that “overwhelming evidence of access” obviated any need for him to show similarity. The Court compared the allegedly infringing songs to Batiste’s and found them insufficiently similar for a jury to find striking similarity. The Court also rejected Batiste’s invitation to adopt the US Court of Appeals for the Sixth Circuit’s ruling in Bridgeport, which held a showing of similarity unnecessary in some circumstances. The Fifth Circuit noted that Bridgeport has been widely criticized, and pointed out that Bridgeport considered the issue of substantial similarity (which dictates whether factual copying, once established, is legally actionable), whereas the issue in this case was probative similarity (which raises an inference of factual copying).

Batiste challenged the award of attorneys’ fees as erroneous absent a [...]

Continue Reading



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

Jodi Benassi

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES

Legal Notices  |  Privacy & Cookies Policy

Attorney Advertising © 2025 McDermott Will & Emery

Contact Us: info@mwe.com

Attorney Advertising ©2020 McDermott Will & Emery