Visual artist Daniel Moore won at the trial level against the University of Alabama's lawsuit alleging Moore's original fine art violated the University's trade dress rights in the school’s football uniform and crimson color.

Moore, a visual artist who attended the University of Alabama, and has sent his children to the University as well, is well-known for his real-life paintings of “great moments” in University of Alabama football history. 

The litigation began in 2005 after numerous years of an amicable relationship between the parties.   In a very large nut shell, from 1991 to 2000 there was a licensing agreement in place allowing Moore to reproduce and offer for sale certain visual works that included “indicia” of the University/Football team.   “Indicia” was defined to include logos, seals, symbols and “Colors: Crimson PMS 201 Gray PMS 429.”  “Uniforms” were never included as “Indicia.”

After the agreement ended, Moore continued to create fine art visual works that included the football team, and uniforms --- but not “Indicia.”  Moore’s defense, “if I am not including ‘Indicia’ there is no reason to pay a royalty.”  The University claimed common law trade dress rights in the team’s uniforms and crimson color and that Moore’s paintings infringed upon such trade dress rights. 

The Opinion is long but does a good job of setting out the arguments.  The case in my mind really turns on the decision in ETW Corp. v. JIREH Publishing, Inc., 332 F.3d 915 (6th Cir. 2003). ETW is the Tiger Wood’s case where the publisher distributed limited edition fine art prints of Tiger Woods. The court in ETW made it clear that First Amendment freedom of expression trumps publicity rights when the work is an original or true limited edition fine art.  If they were talking about coffee mugs and t-shirts, a different decision would have been rendered.

The case style is University of Ala. Bd. of Trustees v. New Life Art, Inc., Civ. No. 7:05-cv-00585-UNAS-RBP (N.D. Ala. 2009).

Billboard Magazine is reporting that the copyright lawsuit filed by Joe Satriani against Coldplay was dismissed.  Satriani sued based on the similarities between his song “If I Could Fly” and Coldplay’s “Viva La Vida”.  Details of the settlement are under wraps but industry insiders say that a financial settlement was likely reached and that Coldplay does not have to admit any wrongdoing.  Both parties will bear their own legal costs.  The case was dismissed with prejudice which means that the case cannot be reinstated.

Neither Satriani nor Coldplay has made any public comment about the settlement.  Satriani is currently on tour with “supergroup” Chickenfoot while Coldplay is in the studio recording new material.  The settlement was finalized on September 14, 2009, but was kept under the radar as news of Kanye West’s outburst on the MTV Video Music Awards took over the airwaves.

What remains to be seen is whether Cat Stevens will file a similar lawsuit based on his belief that Coldplay’s “Viva La Vida” infringed his song “Foreigner Suite”.  Stevens has publicly said that he may file suit depending on how Satriani’s lawsuit turns out. But what about the Latin band Enanitos Verdes whose song “Frances Limon” sounds similar and predates both Coldplay & Satriani’s versions?  Are they contemplating getting in on the legal action?  Is the Satriani settlement just the first in a long line of potential lawsuits?

It will be interesting to see whether this settlement affects Coldplay’s habit of publicly bragging about the similarities between their songs and other artists’.  Hopefully, their legal counsel has advised them that this habit is not endearing to fans and could come back to bite them in the butt.

Yesterday, Gregory Fair, a 46-year-old man from Falls Church, Virginia, was sentenced to three years and five months in federal prison and was ordered to pay $743,098 in restitution to Adobe for selling at least $1.4 million in pirated Adobe software on eBay.  This past April Fair pled guilty to charges of criminal copyright infringement and mail fraud for selling the pirated software since 2001.  In addition to restitution and jail time, Fair also had to forfeit a BMW, a Hummer, a Mercedes, a 1969 Pontiac GTO and $144,000 in cash seized from a safe deposit box, all of which were obtained from his sale of the pirated software. 

The case was originally brought to the attention of federal authorities by SIIA-member Adobe in 2007.  Once alerted to the problem, undercover U.S. postal inspectors made several "test" purchases of the pirated software from Fair.  After verifying the illegal nature of the software, they then raided Fair's home where they found a CD burner and label printer that Fair was using to make copies of the illegal software.  The case was prosecuted by federal prosecutors Marc Miller and Glenn Leon.  Miller has been at the forefront of many of these eBay software piracy cases, including the case of Jeremiah Mondello, who comtinues to serve his four year prison term for selling pirated software on eBay.

About ten days prior to Fair's sentencing, another Gregory, Gregory Bambo, a 47 year-old-man from Richmond, California was also sentenced to prison for engaging in software piracy.  Bambo pled guilty to selling pirated software online during a three-year period beginning in 2004 and was sentenced to prison for one year and one day.  During the three years he engaged in the piracy, Bambo sold at least 1,400 cracked software programs having a combined retail value of just over a half million dollars. 

The case of Bilski v. Doll, set for oral argument in the U.S. Supreme Court on November 9, may be one of the more significant patent cases in recent memory.  At issue is the scope of subject matter that is eligible for patent protection, governed by section 101 of the Patent Act.  The petitioner Bilski is seeking to patent a “business method,” an allegedly novel process for hedging risk in commodities trading.  His claims were rejected as unpatentable by the Patent and Trademark Office, and by the Federal Circuit appellate court.  The Federal Circuit held that a process must (1) be tied to a machine, or (2) transform matter to a different state or thing, in order to be patentable.  Bilski challenges that ruling and asserts that pure methods can be patentable.

Friday, October 2 saw the latest round of amicus (non-party, “friend of court”) briefs filed in the case, among them a brief by the Software & Information Industry Association.  The SIIA agreed with the results in the lower court, arguing that Bilski’s method is unpatentable.  The SIIA, however, urged the Court not to go “too far” and call into question the patentability of computer software.  The SIIA explained that software inventions have long been treated as patentable by the courts and the Patent and Trademark Office, and that the software and information industries have thrived with the availability of patents.  The promise of patent exclusivity is one factor that leads to investment in the industry.

Over 30 amicus briefs have been filed in the case, with many more still pouring in.  Further updates will follow after oral argument in the case.

House of Bryant, the administrators for the song “Rocky Top,” sued A&E Television Network for copyright infringement of the song based on an authorized clip of the song included in an episode of the television show “City Confidential” featuring a crime that took place in Knoxville, TN. 

The City Confidential episode aired on December 11, 2004 and included a 12-second clip of the song “Rocky Top.”  The song is included in a scene of a University of Tennessee football game as performed by the school’s marching band.  Defendant’s Memorandum in Support of its Motion to Dismiss states: “During this brief sequence, and as part of the actual noise occurring within the stadium, the UTK marching band can be heard playing an instrumental version of the musical composition “Rocky Top.” The song is audible for a total of approximately twelve seconds; however, the tremendous noise of the crowd and the narration of the documentary obscure the song for approximately six of the twelve seconds. Therefore, the song “Rocky Top” can be heard on its own for only six seconds of the Program.”

A&E, citing the 2008 court ruling regarding the use of the song “Imagine,” argues the usage was “fair use” which is a defense to copyright infringement. In the “Imagine” case, Yoko Ono -- the plaintiff, was denied an injunction for an unauthorized use of the song “Imagine” in the film Expelled, with the court holding the defendant/alleged infringer was likely to prevail on a fair use defense.  A&E, like the defendant in the “Imagine” case, is relying on the transformative nature of the use.  The Defendant’s Memorandum in Support of the Motion To Dismiss argues the use of “Rocky Top” is transformative in that it is used to portray the atmosphere around Knoxville and the lyrics, used in context with the subject matter of the murder mystery, are a commentary on what life should be like in Tennessee.

The first air date of December 11, 2004 does not seem to be contested by either party. The episode has continued to air.   The Complaint was filed June 3, 2009.  I am wondering why A&E has not raised the defense of statute of limitations because the three year statute of limitations found in 17 U.S.C. sec. 507(b) should apply.  The section states that “no civil cause of action may be brought later than three years from the date the claim accrued.”  It is possible the parties had a tolling agreement while they attempted to resolve the matter outside of the court house.

You can read the complaint here.  House of Bryant Publications, L.L.C. v. A&E Television Networks, Middle Dist. Tenn., Civil Cause No. 3:09-cv-00502.

You can read the Defendant’s Brief In Support of the Motion to Dismiss here.

Last Friday, August 28th, a jury in the Northern District of California, awarded French luxury goods maker, Louis Vuitton Malletier (part of LVMH), $32.4 million in statutory damages for its claims of contributory copyright and trademark infringement.   The amount awarded -- $31.5 million for contributory trademark infringement and $900,000 for contributory copyright infringement -- was certainly newsworthy standing alone.  But really what pushes this case to the top of the IP headlines is that the defendants held liable here -- Akanoc Solutions and Managed Solutions Group, Inc -- are Internet Service Providers (ISP) (and their primary -- Stephen Chen). 

Many a case has been brought against an ISP by a plaintiff trying to hold that ISP liable for the acts of its users.  I could be wrong, but I believe this is the first case where an ISP was held liable for the acts of its users.  For one reason or another these other ISPs and hosting sites have been able to escape liability.  But that was not to be the case here.  Through internal emails, Plaintiff LV was able to demostrate that the ISPs knew of the counterfieting taking place on the sites they hosted but took no action.  The jury agreed with LV that the ISP defendants should be liable because they knew of the large amounts of counterfeiting of LVMH product taking place on their sites and failed to take proper action to stop it.

The case began with a complaint filed back in 2007 in which LV claimed that "most if not all" of the sites hosted by Akanoc were trafficking in counterfeit goods.  About two years later, the jury awarded almost all of $1 million in damages requested for each of LV's fifteen trademark infringement claims against each of the three defendants. The copyright award was $150,000 for each of two copyrights against three defendants for a total of $900,000.

Although motions are still pending in the case, the amount of damages ordered by the jury should send a strong signal that ISPs must actively enforce their terms of use and effectively disable or remove content the subject of abuse notices from rights owners.  This case proives that an ISP that knows of an infringement and fails to take quick and effectuve action to remove the infringement from its site runs the risk of incurring a large damage award and serious damage to its business reputation as a result.

This month’s blog revisits the pending lawsuit filed by Joe Satriani against Coldplay for copyright infringement.  Some background in copyright law is necessary to evaluate the merits of Satriani’s case.  Let’s start with the basics of copyright law.

Under Section 106 of the Copyright Act,  copyright owners are granted certain exclusive rights.  A copyright owner has the right to reproduce, distribute, perform, display or prepare derivative works.  A claim for copyright infringement arises under Section 501 of the Act when someone violates the owner’s exclusive rights.  In order to prove a claim of copyright infringement, the copyright owner must prove two things: ownership of the copyright and proof that defendant copied the work. 

Ownership can be proven by providing a copy of the registration on file with the Copyright Office.  Proof of actual copying is very difficult to prove unless you are a fly on the wall in the musician’s rehearsal studio.  Courts recognize that eyewitness testimony rarely exists.  Thus, in order to prove that copying occurred, a plaintiff must demonstrate that the defendant had access to the work and that there are substantial similarities between the two works.  This legal analysis will be the crux of Satriani’s case. More...

I blogged here and here regarding the recent case brought by author J.D. Salinger for copyright infringement against the writer, publisher and distributor of a sequel to "Catcher In The Rye" entitled "60 Years Later: Coming Through the Rye."

Although Mr. Salinger won in the district court when the Judge held Mr. Salinger was likely to succeed on a claim of copyright infringement, an appeal has since been filed along with “Friends of the Court” Amicus Briefs.

The Amicus Briefs filed by the American Library Association (here),

The New York Times Company (here), and

Public Citizen, Inc. (here), all argue to the court that the district court erred in its decision. 

The briefs are worth the read for the depth of case law cited. 

The primary focus of the briefs filed by the American Library Association and The New York Times Company is the concern that First Amendment rights of authors/creators/readers are being narrowed and that an unduly restrictive fair use standard was applied.

In comparison, the Public Citizen brief’s primary focus is the concern the district court extended copyright to “ideas” and has blurred the line between the idea/expression dichotomy.

Agree or disagree, this case is one to watch and to read the court filings. 

On July 27th, in Capitol Records Inc. v. Alaujan, the U.S. District Court for the District of Massachusetts granted the plaintiff record companies’ motion for summary judgment by holding that the defendant Joel Tenenbaum, a Boston University student who was using the Kazaa peer-to-peer file-sharing system to upload infringing music files, may not present a fair use defense before a jury at trial. 

The court said that the proposed defense was “so broad that it would swallow the copyright protections that Congress has created” and that Tenenbaum had failed to set forth any argument based on the fair use doctrine.  The court added that “…fair use is not a referendum on fairness in the abstract, as the Defendant would have it, but an effort to measure the purpose and effects of his particular use against the incentives for artistic and literary creation that Congress established in the Copyright Act.” 

In this case Tenenbaum admitted to using Kazaa to illegally distribute the music files, but takes the position that the potential penalties under U.S. copyright law are unconstitutionally excessive.  Opening arguments in the case began on July 29 and then, on July 31st -- following Tennenbaum’s admission in court that he was liable for infringing the copyright of 30 songs he downloaded and distributed -- the court quickly concluded that there was no issue for the jury on the question of infringement and granted the record company’s motion for a directed verdict of infringement.  

With the only issues remaining being willfulness and damages, the jury came back with a verdict that found Tenenbaum liable for willful copyright infringement of 30 songs to a tune of $675,000 - which amounts to $22,500 for each song (the same as Jammie Thomas).  

Joe Satriani has accused the band Coldplay of copying his song in a pending lawsuit filed last year.  Satriani says that Coldplay’s song “Viva La Vida” borrows substantially from his song “If I Could Fly.”  “Viva La Vida” won a Grammy for Song of the Year for 2008. Satriani’s song, released in 2004 was intended as a love letter to his wife and reportedly took him ten years to write.

Satriani is a Grammy nominated guitarist that has released a dozen solo albums selling in excess of ten million copies.  Dubbed “Satch” by his fans, he has played with several rock legends including Mick Jagger, Sammy Hagar and Alice Cooper.  Just in case you have been living under a rock, Coldplay is a British alternative rock band that has produced four major label albums and won seven Grammy awards.  They have sold in excess of 50 million records.  They have eschewed endorsement and licensing deals (with the exception of an iTunes commercial) and to their credit, Coldplay claims they give 10% of their profits to charity. 

Satriani says it was his fans that brought the songs’ similarities to his attention.  After Coldplay’s latest record was released, Satriani’s inbox was flooded with emails telling him he was being “ripped off”.  He said: “The second I heard, I knew…I felt like a dagger went through my heart.”  And Satriani is not the only one who feels cheated.  Cat Stevens claims that Coldplay infringed his song “Foreigner Suite”.  And it doesn’t stop there.  Creaky Boards, an indie rock band from New York, claim “Viva La Vida” is a ripoff of their song, “The Songs I Didn’t Write”.  Cat Stevens says he will wait and see how Satriani’s lawsuit plays out before taking any action.  Creaky Boards seem to have relished the publicity their band is getting.  After all, being compared to Coldplay can’t be such a bad thing for a relatively unknown band from Brooklyn. More...