Filewrapper® | A patent, trademark, and copyright law blog - Fair use

Fourth Circuit: Plagiarism detection service is fair use of students' copyrighted papers

Mon, 26 Oct 2009 14:27:00-0500

In a recent decision by the Court of Appeals for the Fourth Circuit, the court decided that the anti-plagiarism service provided by iParadigms at turnitin.com, did not constitute copyright infringement of high school students' papers submitted via the service. Instead, the court held the service was a fair use of the copyrighted works and therefore not infringement under § 107. However, the court reversed and remanded to a district court on the issue against a student for liability under the Computer Fraud & Abuse Act for allegedly unauthorized access to its servers based on one student's use of a password meant for students from another school obtained via the internet.

More on A.V. v. iParadigms, LLC after the jump.

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Eleventh Circuit: Laches presumed not to apply in copyright case filed during limitations period

Thu, 17 Jul 2008 07:47:00-0500

In a decision last week, the Eleventh Circuit affirmed in part and vacated in part a district court decision granting summary judgment in a copyright infringement action. The central disagreement between the parties was over the scope of copyright protection in a book about sales techniques. The district court granted the defendant's motion for summary judgment, finding fair use and laches precluded recovery.

The Eleventh Circuit affirmed in the district court's decision as to whether instructional courses constituted derivative works. However, the court vacated and remanded in part the district court's application of the fair use doctrine and laches. Regarding laches, the court held, as a matter of first impression in the circuit, that laches may be raised as a defense in a copyright infringement action, even when the statute of limitations has not yet run. However the court stated there is a "strong presumption" against laches when a claim is filed within the limitations period, only applying in "the most extraordinary circumstances."

Regarding fair use, the court criticized the district court's use of a so-called fifth fair use factor, specifically the consent of the copyright owner. The court stated analyzing consent in the context of fair use was "incorrect, both in terms of logic and precedent," because "the existence of actual consent negates the necessity of conducting a fair use analysis in the first place." Ultimately, there were sufficient questions of fact for one of the plaintiff's four claims to survive summary judgment, and the court remanded that claim for further consideration.

More on Peter Letterese & Assocs., Inc. v. World Institute of Scientology Enters. after the jump.

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Ninth Circuit: Karaoke is audiovisual work, so not fully covered by § 115 compulsory license

Thu, 03 Jan 2008 06:02:00-0500

In a decision yesterday, the Ninth Circuit affirmed a district court's dismissal of a complaint for declaratory judgment by a karaoke device manufacturer without leave to amend for failure to state a claim. The complaint sought a declaration that a compulsory license under § 115 of the Copyright Act was a sufficient license for a karaoke device to not only play music, but also display the lyrics in real time in coordination with the music.

The Ninth Circuit affirmed the dismissal of the complaint, finding that the § 115 license was insufficient. The § 115 license applies to "phonorecords," but karaoke, because of the lyrics and other content displayed in connection with the song, is an "audiovisual work," specifically excluded from the definition of phonorecords. The court also held that the use of the lyrics also could not constitute fair use based on its commercial nature, aggreeing with a Sixth Circuit decision (blogged here).

More details of Leadsinger, Inc. v. BMG Music Publ'g after the jump.

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Sixth Circuit affirms copyright infringement award against karaoke disc maker

Tue, 26 Jun 2007 11:48:00-0500

In a decision today, the Sixth Circuit affirmed an award of $806,000 in statutory damages plus attorney fees in a copyright case. The case was brought by a copyright holder against a manufacturer of karaoke discs incorporating the compositions to which the plaintiffs held the copyright.

The court upheld the award and finding of willful infringement over the defendant's challenges under the Due Process Clause of the Fifth Amendment and the Eighth Amendment, as well as its contention that it was engaged in fair use.

More details of Zomba Enters., Inc. v. Panorama Records, Inc. after the jump.

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Preliminary injunction against Google image search's display of copyrighted images reversed

Fri, 18 May 2007 09:06:00-0500

In a lengthy and tech-heavy opinion [Update (12/4): the court has released an amended opinion, available here], the Ninth Circuit this week reversed a preliminary injunction against Google restricting its image search from displaying thumbnails of images copyrighted by Perfect 10, Inc. There are several aspects of the ruling of interest, such as:

Holding that Perfect 10 failed to show Google would not likely prevail on its fair use defense based on its display of copyrighted thumbnail images. At the preliminary injunction stage, this places the burden on the copyright holder to disprove fair use, instead of the reverse at trial.
Affirming that Google was not directly liable for providing links to sites displaying the full copyrighted images
Remanding the issue of contributory infringement, because there was a factual dispute as to whether Google knew of the infringement, and whether there were "reasonable and feasible means for Google to refrain from providing access to infringing
images"

The determination on remand of the contributory infringement claims (assuming they do not settle) will likely provide useful guidance for the potential liability of search engines for copyright infringement on the Internet.

Click below for other media and blog coverage of the decision.

Media:

Law.com (a second article)

Washington Post

Associated Press (via Forbes)

Reuters

Sydney Morning Herald (Australia)

Blogs:

Eric Goldman

John Ottaviani

EFF deep links (the EFF also has many of the court documents available here)

How appealing

43(b)log

Academy of Motion Picture Arts and Sciences sues Oscarwatch.com for trademark infringement

Tue, 08 May 2007 10:02:00-0500

The Academy of Motion Picture Arts and Sciences (AMPAS) has sued the operator of the website oscarwatch.com for trademark infringement based on the use of "Oscar" in the website's address. AMPAS holds several federal trademark registrations for "Oscar" for various goods and services, such as "telecasts in connection with recognition of distinguished achievement in the motion picture industry" (reg. no. 1096990), "prerecorded videotapes featuring entertainment relating to motion pictures and award ceremonies" (reg. no. 2021582), and "sweatshirts, jackets, t-shirts and caps" (reg. no. 1996585).

The complaint alleges that oscarwatch.com's use of "Oscar" constitutes trademark infringement, dilution, false designation of origin, and a violation of the anticybersquatting consumer protection act. A copy of the complaint is not yet available on the court's website, but Moviecitynews.com has made a portion of it available online (page 1, 2, 3, 4). Oscarwatch.com has countered that its use of "Oscar" constitutes fair use under trademark law, stating that the website offers commentary that directly addresses the Oscars awards, a topic of great interest to the general public, and therefore the Oscarwatch to describe commentary about the Oscars constitutes fair use.

This fair use argument appears to be the "nominative fair use" argument the Ninth Circuit Court of Appeals (the court whose law applies to this case, as it was filed in California federal court) found compelling in New Kids on the Block v. News America Publishing, Inc. There, the court found that a newspaper's use of the name "New Kids on the Block" to describe the musical group was fair use, because the New Kids trademark was being used to refer to the New Kids on the Block themselves, rather than for a competing group or products. The court held that:

where the defendant uses a trademark to describe the plaintiff's product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

It is uncertain whether such a defense will be successful under these facts, but this case illustrates an issue commonly faced by trademark owners when members of the public use a mark. On one hand, a mark owner must police use of the mark in order to maintain rights in the mark, but on the other hand, enforcement cannot be so zealous as to wrongfully pursue fair uses of the mark. Striking the appropriate balance is the key, but is often difficult even for experienced trademark practitioners.