WilmerHale compiles lists of precedential and informative opinions that raise copyright and trademark law issues. The following is a consolidated list of those opinions with brief summaries designed to showcase the latest developments in intellectual property law.
Copyright Opinions
CBS Broadcasting Inc. v. FilmOn.com,
Inc., No. 14-3123-cv (2d Cir. Feb 16,
2016): Second Circuit Upholds Finding of Contempt and
Sanctions For Use of An Aereo-like System
The Second Circuit affirmed the district court's contempt order
finding that defendant violated an injunction precluding it from
infringing plaintiffs' exclusive rights under the Copyright
Act, where it continued to operate its Aereo-like remote storage
DVR technology for nine days after the Supreme Court's
Aereo decision (holding that Aereo's use of its
time-shifted streaming technology constituted copyright
infringement). The court rejected FilmOn's arguments that
Aereo "created confusion" as to whether
FilmOn's Teleporter system qualified for a Section 111 license,
given that FilmOn never obtained a Section 111 license, and, that
under WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 284 (2d Cir.
2012), "[i]nternet retransmission services do not constitute
cable systems under §111." In addition, the district
court did not abuse its discretion in holding defendant's CEO
in contempt because the CEO had the ability to prevent defendant
from deploying its infringing technology. The district court
also did not abuse its discretion in imposing sanctions of $90,000
on defendant; the sanctions were civil in nature, rather than
criminal, because they served the purpose of coercing defendant
into future compliance. Finally, the district court's
award of attorneys' fees to plaintiff was authorized by the
parties' prior settlement agreement, which had resulted in
entry of the injunction.
Larson v. Warner Bros.
Entertainment, Nos. 13-56243, 13-56244,
13-56257, 13-56259 (9th Cir. Feb 10, 2016): The Ninth Circuit
Re-Visits The Rights To Superman and Upholds The 2001 Transfer to
DC Comics
In an unpublished opinion, the Ninth Circuit upheld the district
court's ruling that a 2001 letter from Jerome Siegel,
co-creator of Superman, to DC Comics, transferred to DC Comics all
of the copyrights listed in the agreement. In so doing, the
court rejected the argument of Siegel's successor-in-interest
that, notwithstanding the 2001 agreement, she had recaptured
certain copyrights pursuant to 17 U.S.C. 304(c)(6)(D) and
304(c)(5), through notices of termination in 2002 and
2012. The court held that plaintiff's recapture notices
were ineffective because the 2001 agreement properly replaced and
superseded the earlier grants of the copyrights at issue,
explaining that Siegel's 2001 re-grant of copyrights by
contract in lieu of statutory termination was exactly what
Congress intended in enacting Section 304(c) of the 1976 Copyright
Act, i.e., he used his "'increased bargaining power
conferred by the imminent threat of statutory termination to enter
into new, more advantageous grants.'" (quoting Milne
ex re. Coyne v. Stephen Slesinger, Inc., 430 F.3d 1036 (9th
Cir. 2005)). The court also agreed with the district court
that plaintiff waived her argument, raised for the first time on
remand, that the 2001 agreement had been rescinded, in light of the
substantial prejudice the argument would cause DC
Comics. Finally, the court declined to re-visit the district
court's rejection of DC's argument that the Superman
copyrights arose from works made for hire because it found no error
in the district court's finding that the works were not made at
DC's "insistence and expense."
Trademark Opinions
C&L International Trading Inc. v. American
Tibetan Health Institute, Inc., No. 14-4748
(2d Cir. Feb 22, 2016): Second Circuit Holds Protectability
Argument Waived When Raised After Trial
In a non-precedential summary order, the Second Circuit affirmed
the district court's judgment restricting the use of
"Tibetan Baicao Tea" by C & L International Trading,
who raised for the first time after losing at trial, an argument
that the mark was not protectable. "Without delving into
the merits of plaintiff-appellants' protectability argument, we
affirm the District Court's judgment on procedural
grounds. By failing to raise this argument until after trial,
plaintiffs-appellants forfeited it.
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