Addressing the appropriateness of the district court’s decision to deny attorneys’ fees relating to a copyright claim it labeled “frivolous,” the US Court of Appeals for the Seventh Circuit affirmed the denial, despite the strong presumption in favor of awarding fees. Timothy B. O’Brien LLC v. Knott, Case No. 19-2138 (7th Cir. June 17, 2020) (Flaum, J).
(more…)
The US Court of Appeals for the Second Circuit affirmed a district court’s denial of a motion to dismiss a copyright infringement suit on the ground of sovereign immunity, holding that advertising activity in the United States on behalf of a sovereign government falls within the commercial activity exception to sovereign immunity. Pablo Star Ltd. v. Welsh Gov’t, Case No. 19-1262 (2d Cir. June 8, 2020) (Lynch, J.).
Pablo Star is a company registered under the laws of Ireland and the United Kingdom. The Welsh government is a political subdivision of the United Kingdom. Pablo Star sued the Welsh government, along with multiple New-York-based media companies working with the Welsh government, for copyright infringement. Pablo Star alleged infringement of its copyrights in photographs that the Welsh government used in online and printed materials advertising Welsh-themed events in New York and promoting tourism to Wales. The Welsh government moved to dismiss, asserting sovereign immunity under the Foreign Sovereign Immunities Act (FSIA), which provides for presumptive immunity of a foreign state in federal court. The district court denied the motion to dismiss, holding that the commercial activity exception to the FSIA applied because the acts of the Welsh government that resulted in Pablo Star’s claims constituted commercial activity, and the activity had substantial contact with the United States. The Welsh government sought an interlocutory appeal.
The Second Circuit affirmed, finding that the Welsh government abrogated its sovereign immunity by engaging in commercial activity that had substantial contact with the United States. On the commercial activity prong, the Court rejected the argument that the Welsh government’s conduct was governmental, rather than commercial, because it promoted tourism to Wales. The Court explained that an activity is deemed commercial based on its nature rather than its purpose. Activity is commercial if a foreign state performs the types of actions typical of a private party engaging in commerce. A state’s motives, including motives without profit or to fulfill sovereign objectives, are irrelevant. The Welsh government’s assertion that it acted as a sovereign government to promote Welsh culture and tourism conflated the act with its purpose. The broader characterization of promoting tourism also did not distinguish the activity from functions regularly undertaken by private entities because the profit motive was irrelevant. Because the publication of advertising materials is an activity regularly performed by private-sector businesses, the court affirmed the district court’s conclusion that the Welsh government engaged in commercial activity.
The Second Circuit also distinguished Pablo Star’s claims from those in cases where sovereign immunity applied. Claims dismissed on the ground of sovereign immunity lacked a sufficient nexus between a party’s injury and the governmental entity’s commercial activity. They instead stemmed from functions unique to government, such as detention and punishment or the employment of civil service personnel. Pablo Star’s copyright infringement claim, by contrast, directly resulted from the Welsh government’s commercial conduct, including its unauthorized use of photographs in advertising materials promoting Welsh culture and tourism.
On the substantial contact prong, the Second Circuit agreed that the [...]
Continue Reading
With the validity of a copyright registration at issue, the US Court of Appeals for the Ninth Circuit reversed and remanded a district court’s judgment after a jury trial and award of attorney’s fees in favor of the plaintiff in a copyright infringement action, holding that the district court was required to request the Register of Copyrights to advise whether inaccurate information, if known, would have caused the Register to refuse registration of the plaintiff’s asserted copyright. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., (9th Cir. May 29, 2020) (Bea, J.).
The appeal to the Ninth Circuit arose from a copyright infringement action brought by Unicolors, a company that creates designs for use on textiles and garments, against the global fast-fashion retail giant, H&M Hennes & Mauritz (H&M). After a jury found substantial similarity between a design created by Unicolors in 2011 and a design printed on a skirt and jacket sold by H&M four years later, the Ninth Circuit was tasked with examining the threshold issue of whether Unicolors actually holds a valid copyright registration for the 2011 design, which is a precondition to bringing its copyright infringement suit.
The garment design that Unicolors claimed to be infringed by H&M is one of 31 separate designs comprising a “single-unit registration.” To register a collection of works as a “single unit” under the Copyright Act, however, the works must have been first sold or offered for sale in “a single unit of publication.” On this point, H&M argued that the collection of works identified in Unicolors’s asserted copyright registration were sold separately instead of together and at the same time, which required the court to find Unicolors’s copyright registration invalid.
In its examination of the “rarely disputed” issue of whether a copyright is properly registered, the Ninth Circuit found the district court’s rationale for denying H&M’s petition to be “flawed.” First, the Court flatly rejected the district court’s requirement that H&M demonstrate that Unicolors intended to defraud the Copyright Office at the time of its application filing, and pointed to the Ninth Circuit’s 2019 ruling in Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, where it clarified that there is no such intent-to-defraud requirement for copyright registration invalidation (and in doing so, rejected a series of Ninth Circuit cases that imply an opposite conclusion).
Second, the Ninth Circuit concluded that the plain meaning of “single unit,” under the Copyright Act’s provision for the registration of a collection of published works as a single unit, requires that the registrant first published the works in a singular, bundled collection. Therefore, the Court explained that the district court further erred in concluding that Unicolors’s application for copyright registration did not contain inaccuracies despite the inclusion of the company’s own designated “confined designs,” which, according to testimony and evidence in the proceeding, were sold separately and exclusively to individual customers and were not first sold together and at the same time with the rest of the works in the single unit registration.
With this underlying [...]
Continue Reading
Vacating the district court’s order denying a defendant’s recovery of attorneys’ fees under the Copyright Act, the US Court of Appeals for the Ninth Circuit held that, even when asserted as a claim for declaratory relief, any action that turns on the existence and potential infringement of a valid copyright invokes the Copyright Act and therefore gives the district court discretion to award reasonable attorneys’ fees pursuant to § 505 of the Copyright Act. Doc’s Dream, LLC v. Dolores Press, Inc. and Melissa Scott, Case No. 18-56073 (9th Cir. May 6, 2020) (Callahan, J.).
Addressing issues of design patent infringement, copyright infringement, trade dress infringement and unfair competition, the US Court of Appeals for the Federal Circuit affirmed a district court’s grant of summary judgment on all claims. Lanard Toys Limited v. Dolgencorp LLC, Ja-Ru, Inc., Toys “R” Us-Delaware, Inc., Case No. 2019-1781 (Fed. Cir. May 14, 2020) (Lourie, J.).
Addressing a myriad of issues relating to copyright law, the US Court of Appeals for the Second Circuit found that the discovery rule applies for statute of limitations purposes in determining when copyright claims accrue, but damages are limited to three years before filing of the lawsuit. Sohm v. Scholastic Inc., Case Nos. 10-2110, -2445 (2d Cir. May 12, 2020) (Sullivan, J.).
In a non-precedential ruling by summary order, the US Court of Appeals for the Second Circuit affirmed the dismissal of a copyright infringement lawsuit filed against famed comedian Jerry Seinfeld, finding that the defendant’s claims, which accrued in 2012, were time-barred. Christian Charles v. Jerry Seinfeld, et al., Case No. 19-3335 (2d Cir. May 7, 2020) (Summary Order).
The US Court of Appeals for the Eighth Circuit addressed the copyright protection afforded to an information database and whether comments made to a reporter while litigation was ongoing violated the disparagement clause in a separation agreement. Ultimately, the Court affirmed a judgment against the defendant for copyright infringement and against its founder for breach of contract. In doing so, the Court upheld the findings that plaintiff’s database copyright was valid, even though it was only entitled to a narrow scope of protection, and that the defendant’s founder’s comments to a reporter violated his contract with the plaintiff. Infogroup, Inc. v. DatabaseUSA.com LLC, Case No. 18-3723 (8th Cir. Apr. 27, 2020) (Benton, J.).
In a 5-4 decision, the Supreme Court of the United States held that copyright law does not protect annotations contained in the official annotated compilation of state statutes. Georgia v. Public.Resource.Org, Inc., Case No. 18-1150 (Supr. Ct. Apr. 27, 2020) (Roberts, Justice) (Thomas, Justice, dissenting) (Ginsburg, Justice, dissenting).
Addressing whether a copyright infringement claim should be dismissed with prejudice where the plaintiff failed to register his copyright prior to filing the lawsuit, the US Court of Appeals for the First Circuit held that dismissal is too harsh, remanding the case for consideration of whether the claim should be dismissed without prejudice or if the plaintiff should be entitled to supplemental allegations. Cortes-Ramos v. Martin-Morales, Case No. 19-1358 (1st Cir. Apr. 13, 2020) (Dyk, J.[1]).
Subscribe
