The Ninth Circuit affirmed the district court’s summary judgment for defendants and its order denying attorneys’ fees in a copyright case alleging infringement of pornographic content. The panel held that the Digital Millennium Copyright Act’s safe harbor applied to defendants because the material at issue was stored at the direction of the users and defendants did not have actual or apparent knowledge that the clips were infringing. Furthermore, defendants expeditiously removed the infringing material once they received actual or red flag notice of the infringement, they did not receive financial benefit, and they had a policy to exclude repeat infringers. Finally, the district court did not abuse its discretion in not exercising supplemental jurisdiction over a California state law claim, and the district court did not abuse its discretion in denying an award of attorneys’ fees to defendants.
Anthem Sports LLC v. Under the Weather, LLC, 17cv596 (D. Conn. March 6 2018)
Patent and trademark dispute relating to small tents for viewing outdoor sports. As 43(B)log points out, the judge used the term SPORTSPOD generically in the decision, which doesn’t bode well for the trademark claim.
Calling something a shoddy knockoff is an opinion and therefore not actionable under 43(a)(1)(B).
Falsely claiming to be the inventor of something is not actionable under 43(a)(1)(A) per Dastar.
DJ Action re use of FAZE CLAN by FAZE CLAN video game organization against apparel manufacturer. It seems that there are leagues for video games, and ‘clans’ compete, and there are standings, and everything.
Plaintiff files copyright infringement suit. Defendant serves Rule 68 offer of judgement. Defendant files motion to dismiss for lack of personal jurisdiction. Plaintiff withdraws complaint without prejudice. Defendant moves for fees and costs under Rule 68, and/or as a prevailing party under Section 505 of the Copyright Act.
Because the case terminated due to plaintiff’s withdrawal and not by court action, the dismissal could not be deemed a judgment. As Rule 68 explicitly refers to judgments, it will not apply here.
As to whether Section 505 applies, the court noted that there appears to be no decision in which a court considers whether defendant should be deemed to be a prevailing party after plaintiff’s voluntary dismissal. However, the court implicitly states that it doesn’t have to answer that question because it has the inherent power to sanction counsel, in cases such as these where plaintiff’s filing in the SDNY was ‘frivolous, unreasonable, or groundless.’ Nevertheless, the court declined to sanction Mr. Leibowitz this time, but noted that as he has filed 500 copyright cases in the SDNY in the past 24 months, the court may well sanction him the next time he appears to make a frivolous filing.
For purposes of this discussion, the day you file a trademark application is referred to as your ‘priority date.’
If this is the first application an applicant files for a specific mark for specific goods/services in a ‘convention country’ (which is pretty much every country) where the applicant has what is referred to as a ‘real and effective industrial or commercial establishment’ (usually the applicant’s home country, but see discussion below), you have six months to file in other countries (for the identical mark, for identical goods) and those subsequent filings receive your original priority date (sometimes referred to as your ‘convention priority’ date, because this process was created by an international treaty known as the Paris Convention.
Newco files for the mark EXAMPLE covering widgets in the U.S. on January 1.
Bad Guy files for EXAMPLE covering widgets in Canada on January 2.
Newco has until July 1 to file in Canada, to receive an earlier priority date than Bad Guy.
Newco files for EXAMPLE covering widgets in the U.S. in January 1.
Newco dawdles until July 2 to think about other countries.
Newco can never use Convention Priority for EXAMPLE covering widgets. HOWEVER
Newco can file for EXAMPLE for gadgets.
Newco can use convention priority for up to 6 months for EXAMPLE covering gadgets (only).
Newco files for EXAMPLE covering widgets in the U.S.
Newco files for EXAMPLE and logo (or EXAMPLE stylized or EXAMPLE XL) in Canada.
Newco cannot claim convention priority in Canada because the application didn’t cover the identical goods as the underlying application.
Newco files for EXAMPLE covering widgets in the U.S.
Newco files for EXAMPLE covering widgets and gadgets in Canada.
Newco can claim priority for widgets, but not for gadgets, in Canada.
Note re “Real and Effective Industrial or Commercial Establishment’
This is an introductory discussion so I won’t get into a lengthy discussion of ‘real and effective industrial or commercial establishment.’ As a practical matter, most companies file their first application for a mark in their home country or some other country where they do business. There are unusual situations where a company might want to file in an out-of-the-way country, because they want to attract as little attention as possible to their choice of mark or goods (for a variety of reasons). The question arises as to whether the filer has a real and effective industrial or commercial establishment in that jurisdiction. But that is a problem that very few companies ever have.
Ok. Plaintiff took a photo, on the street, of Tom Brady and Celtic GM Danny Ainge. Plaintiff uploads it to Snapchat and it goes viral. People tweet the photo and various defendant news organizations embed the tweets in an article about Brady and the Celtics. Defendants, citing the server test as articulated in Perfect 10, argue that they are not violating the exclusive display right of the copyright owner. The court characterizes defendants’ argument as “the physical location and/or possession of an allegedly infringing image determines liability under the display right. Although the Brady photo is displayed ‘seamlessly’ on their webpages (ed. note. – really? seems that the tweet is graphically recognizable as a tweet – isn’t the border of the tweet a seam?), Defendants are simply providing instructions for the user to navigate to a third-party server on which the photo resides.
Held: The server test from Perfect 10 is probably wrong. Noting the small commercial establishment exemption form the display right, the Court states: …that these establishments require an exemption, despite the fact that to turn on the radio or TV is not to make or store a copy, is strong evidence that a copy need not be made in order to display an image.”
If the server test is correct, user volition would seem to take this case out of that test. In Perfect 10, the user had to click on the link to get to the original image. Here, Defendants were effectively displaying the image to their readers.
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