The United States Court of Appeals for the Second Circuit has rejected an attempt to certify a class action by copyright holders for the unauthorized electronic reproduction of their works. In In re Literary Works in Electronic Databases Copyright Litigation, 2007 WL 4197413 (2d Cir. 2007), thousands of authors sued a number of large publishing companies, including the New York Times, West Publishing, for copyright infringement. The court, however, held that because the class included claims made by class members who had not registered their copyrights, the district court lacked subject matter jurisdiction to certify a class and enter a judgment.

The claims all arose from the unauthorized electronic reproduction of various written works. The class members were mainly freelance writers that contracted with publishers to author the works for publication in print media. The class members retained the copyrights in those works, and the vast majority of those copyrights were unregistered. The contracts between the authors and the publishers did not grant the publishers the right to electronically reproduce those works or license them for electronic reproduction by others. The publishers, however, did so, and four class actions were consolidated in the United States District Court for the Southern District of New York, with the plaintiffs contending that the unauthorized electronic reproduction of their works infringed their copyrights. A settlement was reached after lengthy negotiations, and the district court certified a class and approved the settlement.

The Court of Appeals vacated the order and judgment, holding that the district court did not have subject matter jurisdiction to approve a settlement or certify a class consisting of claims that arose from the infringement of unregistered copyrights. The court began its analysis by recognizing that the legal theory on which the claims were based was sound. In New York Times Co. v. Tasini, 533 U.S. 483, 488 (2001), the Supreme Court held that under section 201(c) of the Copyright Act, publishers are not permitted to reproduce freelance works electronically when they have not been specifically authorized to do so. But jurisdictional issues proved to be a barrier to pursuing the claims in a class action format.

The court noted that most of the claims of the class members arose from the infringement of unregistered copyrights. 17 U.S.C. § 411(a) states that “no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Previously, outside the class action context, the Second Circuit has held that registration is a jurisdictional requirement, and a district court lacks subject matter jurisdiction over infringement claims arising from unregistered copyrights. See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112, 115 (2d Cir. 2003); Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001). Other circuits have also reached the same conclusion, and the court held that section 411(a)’s registration requirement limits a district court’s jurisdiction over copyright claims. The court went on to conclude that the class action mechanism cannot be used to circumvent this jurisdictional requirement. Because every claim within a certified class must meet the registration requirement, the district court did not have jurisdiction to certify a class containing claims arising from thousands of unregistered copyrights. The court also rejected the plaintiffs’ contention that such claims could be included under a supplemental jurisdiction theory, finding that supplemental jurisdiction could not be exercised over jurisdictionally deficient federal claims. Judge Walker dissented from the opinion, arguing that in the wake of the Supreme Court’s decision in Eberhart v. United States<, 546 U.S. 12 (2005), the requirement in section 411(a) was not a true jurisdictional bar to pursuing claims based on unregistered copyrights.

Full Opinion text: Click Here

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The Eleventh Circuit has held that a digital reproduction of a copyrighted image may, under certain circumstances, be a privileged revision of the work that does not violate the creator’s copyright. In an en banc decision, the sharply divided court in Greenberg v. National Geographic Society 2008 WL 2571333 (11th Cir. 2008) (en banc), rejected a claim by a photographer that a digital reproduction of his work that had previously appeared in print did not, in and of itself, constitute infringement where the digital reproduction merely reproduced the original print version.

Jerry Greenberg is a freelance photographer who had some of his photographs published in four issues of the National Geographic Magazine. For decades, the National Geographic Society has been reproducing its back issues in bound volumes, microfiche, and microfilm. In 1997, National Geographic produced “The Complete National Geographic,” a thirty-disc CD-ROM set containing every monthly issue of the magazine since 1888. The CD-ROMS contained each magazine as it was originally published, reproducing each page. The CD-ROMS also included a short opening montage and a program that allowed users to search, zoom into particular pages, and print.

Greenberg sued National Geographic, alleging that it infringed his copyrights by reproducing the print magazine issues that included his photographs. The district court granted summary judgment in favor of National Geographic, holding that because the CD-ROMS constituted a revision of the print issues of the magazine, the reproduction was privileged under 17 U.S.C. section 201(c) of the Copyright Act and therefore did not constitute infringement. A panel of the Eleventh Circuit disagreed and reversed that decision. After a second appeal, the Eleventh Circuit granted rehearing en banc to address the question of whether National Geographic’s use of the photographs was a privileged revision.

By a 7-5 majority vote, the Eleventh Circuit held that National Geographic’s reproduction of Greenberg’s photographs was privileged under section 201(c). Section 201(c) provides that ”copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” A magazine is considered to be such a collective work. According to the court, section 201(c) is intended primarily to prevent publishers from revising the contribution of the author or including it in a new anthology or an entirely different magazine or other collective work without the author’s consent.

Greenberg claimed that the CD-ROMS constituted an entirely new collective work, such that section 201(c) did not apply. The court, however, concluded that the digital reproduction of the magazines was nothing more than a revision of the collective work. The court noted that the Supreme Court had previously recognized that reproducing a magazine on microfilm was privileged under section 201(c). By analogy, a digital reproduction is similarly privileged. The court rejected the notion that adding a computer program that allowed users to search and access individual pages somehow altered the collective works, concluding that “the revision of a magazine by reproducing it in its original context in a new ‘distinct form’ – i.e., a digital version – is not a difference that would undo a publisher's privilege under § 201(c).” The dissenters strongly disagreed with the majority’s conclusion, concluding that the CD-ROMS did constitute a new collective work to which the privilege of section 201(c) did not apply.

http://www.ca11.uscourts.gov/opinions/ops/200516964.ENB.pdf

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A recent opinion written by Judge Richard Posner for the 7th Circuit highlights the importance of carefully considering some of the risks of loss for plaintiffs in proceeding with a copyright infringement lawsuit.

In Eagle Services Corp. v. H2O Industrial Services, Inc., the plaintiff, Eagle, filed suit after several of its employees, who left to form H2O, used copies of Eagle’s safety manual in operations at the new business. The manual in question consisted largely, if not entirely, of quotations from OSHA regulations, making the scope of the copyright limited to the compilation as a whole. Instead of pursuing an award of statutory damages under the Copyright Act, Eagle argued that it should be awarded all the profits that H2O made in its business before it created its own manual, because, according to Eagle, without a manual H2O could not have provided any services in its industry without violating OSHA regulations. Though the trial court allowed Eagle to present its case to the jury, at the close of its evidence, H2O moved for judgment in its favor as a matter of law, which the court granted, based on Eagle’s failure to prove that OSHA requires the companies it regulates to maintain a safety manual. However, the trial court refused to award H2O, as the prevailing party, its reasonable attorney’s fees on the ground that the suit was not frivolous and had not been filed in bad faith. H2O appealed the denial of attorney’s fees.

The 7th Circuit reversed the trial court’s decision. In his opinion, Judge Posner noted that the suit “could not have been brought in good faith,” because Eagle never had any reasonable basis to believe that the state would have shut down H2O’s operations for want of a safety manual, especially in light of the fact that, even if a manual were required, the applicable regulations would have given H2O an opportunity to procure one. Judge Posner further noted, colorfully:

So we have a suit brought almost certainly in bad faith, a frivolous suit, a suit against a newer and probably smaller and weaker firm. Under any standard we know for shifting attorney's fees from a losing plaintiff to a winning defendant, H2O (and the individuals joined as defendants along with it) would be entitled to an award of attorney's fees.

Judge Posner also noted that in copyright cases, prevailing defendants are not required to prove that the plaintiffs’ suit was frivolous in order to prove their entitlement to an award of attorney’s fees. According to Judge Posner, if there is any asymmetry in the analysis regarding whether to award attorney’s fees in copyright cases, that asymmetry actually tips in favor of prevailing defendants:

The successful assertion of a copyright confirms the plaintiff's possession of an exclusive, and sometimes very valuable, right, and thus gives it an incentive to spend heavily on litigation. In contrast, a successful defense against a copyright claim, when it throws the copyrighted work into the public domain, benefits all users of the public domain, not just the defendant; he obtains no exclusive right and so his incentive to spend on defense is reduced and he may be forced into an unfavorable settlement.

Though H2O’s success in this case did not result in the enlargement of the public domain, that fact did not rebut the basic presumption affirmed by Judge Posner that, in most cases, awards of attorney’s fees to prevailing parties are presumed to be appropriate.

This case serves as a useful reminder to businesses considering whether to file suit over infringement of its copyrighted works. The costs of federal litigation are always high, and a loss at trial could mean that the plaintiff would be out not only its own attorney’s fees, but also those of its adversary.

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The Federal Circuit has held that software developers may still sue for copyright infringement when they release their software into the “open source” software community.  In Jacobsen v. Katzer, 2008 WL 3395772 (Fed. Cir. 2008), the court made it clear that when open source licenses place conditions on the use and copying of software, the holder of the copyright on the software may pursue a claim for copyright infringement.

Jacobsen manages an open source software group called Java Model Railroad Interface (“JMRI”), which involves many participants.  JMRI created an application called DecoderPro that allows model railroad enthusiasts to program the decoder chips that control model trains.  DecoderPro files are available for download and use free of charge from an open source incubator website called SourceForge.  The downloadable files contain copyright notices and refer the user to a “copying” file that sets forth the terms of the license.  Katzer/Kamind offers a competing software product called Decoder Commander that also programs decoder chips.  While Decoder Commander was being developed, one of Katzer/Kamind’s employees is alleged to have downloaded the decoder definition files from DecoderPro and used portions of those files as part of the Decoder Commander software.  The Decoder Commander software did not comply with the terms of the DecoderPro license.

Jacobsen filed a lawsuit seeking a preliminary injunction against Katzer/Kamind, contending that the violation of the terms of the DecoderPro license constituted copyright infringement.  The district court concluded that while Katzer/Kamind may have violated the license, this did not create liability for copyright infringement and that Jacobsen, at most, had a claim for breach of contract.

 The Federal Circuit disagreed.  The court noted that open source software projects allow programmers to view software code and make changes and improvements, and in exchange, the copyright holder permits users to copy, modify, and distribute the software code “subject to conditions that serve to protect downstream users and to keep the code accessible.”  Part of this protection is achieved by requiring that users copy and restate the license and attribution information. 

The court rejected the notion that because the software had not been sold for money, this affected the analysis.  “The lack of money changing hands in open source licensing should not be presumed to mean that there is no economic consideration, however.  There are substantial benefits, including economic benefits, to the creation and distribution of copyrighted works under public licenses that range far beyond traditional license royalties.”  The court concluded that open source licenses still grant copyright holders the right to control the modification and distribution of the material their own.  If a license is limited in scope and the licensee acts outside the scope of the license, the copyright holder has a claim for infringement along with a claim for breach of contract.  Because the terms of the license in this case set conditions on the use and copying of the software, failure to abide by those conditions constituted copyright infringement. 

According to the court, “copyright holders who engage in open source licensing have the right to control the modification and distribution of the copyrighted material.”  Under the license, it was impermissible to modify and distribute the materials without including the copyright notices and without tracking the modifications from the original files.  “The clear language of the Artistic License creates conditions to protect the economic rights at issue in the granting of a public license,” and Jacobsen therefore could pursue a claim for copyright infringement. 

Full opinion text: http://www.cafc.us courts.gov/opinions/08-1001.pdf 

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In Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (9th Cir. 2008), the Ninth Circuit recently clarified the law of implied licensing.  Kevin Gagnon began his relationship with AMS as an independent contractor creating software programs for AMS, a field marketing organization offering sales and marketing support to insurance marketing entities.  The Ninth Circuit found that Gagnon granted an unlimited and non-exclusive license to AMS to retain, use, and modify the computer software and that because AMS paid Gagnon, the license was irrevocable.

Gagnon and AMS memorialized their relationship by executing a one-year Technical Services Agreement (“TSA”) that included no provisions regarding licensing of intellectual property developed by Gagnon for AMS.  The relationship continued several years after expiration of the TSA.  Gagnon later proposed that AMS execute an Outside Vendor Agreement (“OVA”) that included a provision granting to Gagnon and his company, Mister Computer, all intellectual property rights to the software Gagnon developed for AMS.  After AMS rejected the OVA and counter-proposed with a revised agreement granting it all rights and license to the software, AMS decided to terminate its services with Gagnon.  Over the course of the following several months, Gagnon and AMS exchanged correspondence evidencing that confusion existed as to who owned the rights to the software and that the parties’ understanding regarding payment for services differed.

AMS filed a complaint in California Superior Court against Gagnon alleging, among other things, misappropriation of trade secrets and conversion.  Gagnon removed the case to federal court and counterclaimed alleging copyright infringement and other intellectual property and contractual claims.  The district court remanded AMS's claims back to state court.  AMS then filed its remanded state law claims as counter-counterclaims to Gagnon's federal counter-claims.

The Ninth Circuit determined that although exclusive licenses must be in writing, grants of nonexclusive licenses need not be in writing, and may be granted orally or by implication.  The court relied on a case involving use of movie footage and determined that an implied license is granted when (1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes that particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee-requestor copy and distribute his work. 

The court concluded that the first two prongs of the test were satisfied because AMS requested the programs and Gagnon delivered the programs to AMS.  Gagnon, however, disputed that he had the intent required by the third prong of the test.  The court noted that Gagnon misunderstood the import of the intent requirement.  The relevant intent is the licensor's objective intent at the time of the creation and delivery of the software as manifested by the parties' conduct.  The court relying on precdent from another court, applied the following factors for determining whether the relevant intent exists:

• whether the parties were engaged in a short-term discrete transaction as opposed to an ongoing relationship;
• whether the creator utilized written contracts providing that copyrighted materials could only be used with the creator's future involvement or express permission; and
• whether the creator's conduct during the creation or delivery of the copyrighted material indicated that use of the material without the creator's involvement or consent was permissible.

The court reviewed the course of conduct of the parties, including the written agreements whether executed or unexecuted, and concluded that Gagnon demonstrated the objective intent that the licensee-requestor copy and distribute his work.  Any of Gagnon’s conduct contrary to that conclusion was belated and insufficient to sway the court.  Of interest is Gagnon’s argument that the splash screens he created reserving in Gagnon a copyright in the software negated AMS’s license to use the product.  The court determined that the splash screens speak to Gagnon's intent to retain copyright ownership over the programs, not to his intent to grant or not grant a license as would be his right as the copyright owner.  Also of no concern to the court was Gagnon’s registration with the United States Copyright Office for his six programs one week prior to his termination from AMS.

Finally, because the AMS paid consideration, the license is irrevocable.  The Ninth Circuit affirmed the district court’s granting of summary judgment against Gagnon and ruled that Gagnon gave an implied license to AMS to use and modify the computer software he created after the termination of their relationship.

If your company develops software for other businesses or licenses software developed specially for your company, you should seek counsel experienced in protecting your intellectual property rights.

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A California Federal Court rejected an arguably literalistic interpretation of a safe harbor provision in the Digital Millennium Copyright Act (DMCA), providing clarification for online service providers that host and deliver third-party content to their users.

In UMG Recordings, Inc. v. Veoh Networks, Inc., the U.S. District Court for the Central District of California specifically addressed Section 512(c) of the DMCA, which sets forth the circumstances under which service providers can escape liability for copyright infringement “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” UMG, the plaintiff, asserted that Veoh was not eligible for protection under the safe harbor provision, because its site’s software manipulated files uploaded by users by “(1) automatically creating “Flash-formatted” copies of video files uploaded by users; (2) automatically creating copies of uploaded video files that are comprised of smaller “chunks” of the original file; (3) allowing users to access uploaded videos via a technology called “streaming”; [and] (4) allowing users to access uploaded videos by downloading whole video files.” According to UMG, such operations do not constitute “storage,” nor are they undertaken “at the direction of a user.” Veoh responded by arguing that, even though the operations occur after a user has taken steps to upload his or her content, they nevertheless occur automatically “by reason of the storage at the direction of a user” and are intended only to facilitate access to files stored by users.

The court denied UMG’s arguments and held that Veoh was entitled to use the defense. In so holding, it noted that Section 512(c) does not require that infringing conduct constitute storage in and of itself. Instead, the infringing conduct must occur “as a result of the storage.” In addition, the court agreed with Veoh that other language in Section 512(c) “presupposes that the service provider will be providing access to the user's material,” giving rise to a logical expectation that a service provider will take steps to manipulate the raw data uploaded by users in order to facilitate such access. Finally, the court cited to the legislative history of the DMCA, noting that “Congress enacted the DMCA ‘to facilitate the robust development and world-wide expansion of electronic commerce, communications, research, development, and education in the digital age.’” According to the court, the DMCA would be hard-pressed to achieve such goals “if service providers otherwise eligible for limited liability under [Section] 512(c) were exposed to liability for providing access to works stored at the direction of users.” 

While the opinion is that of a trial court rather than an appellate court, the Central District of California’s considerable experience with software issues, coupled with the number of such disputes it regularly hears, likely means that its analysis will be very persuasive in other jurisdictions and venues, and it would not be surprising if its holding were upheld or otherwise left standing by the Ninth Circuit, were UMG to appeal. Therefore, service providers and their counsel should be sure to review the opinion carefully in assessing the threat of litigation arising from hosted content. Copyright holders also should keep the Central District’s holding in mind when determining the advisability of filing suit against service providers to protect their content.

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Many businesses that use software published by Autodesk are familiar with the company’s vigorous copyright enforcement program. Autodesk is one of the most active software publishers when it comes to threatening litigation over allegedly unlicensed use of its well-known computer-aided design products, such as AutoCAD, and it regularly targets businesses of all sizes demanding costly and distracting audits and settlements, often based solely on the word of unidentified informants.

In addition to such matters targeted at its past and potential customers, however, Autodesk’s enforcement program also includes efforts to eradicate what it believes to be unauthorized sale of its software. The Washington state federal lawsuit of Vernor v. Autodesk Inc. falls into this category. Here, the plaintiff, Timothy Vernor, had for some time attempted to sell used AutoCAD packages on eBay. However, when he did so, Autodesk sent notices to eBay pursuant to the Digital Millennium Copyright Act that such activity violated Autodesk’s copyrights, and in order to avoid contributory copyright liability, eBay removed the listings. After several such exchanges, eBay eventually terminated Vernor’s account. In response, Vernor filed suit against Autodesk, seeking a declaratory judgment that his sale of used software did not constitute copyright infringement.

In its first substantive opinion in the matter, the Federal Court for the Western District of Washington denied a motion to dismiss in which Autodesk had argued that the software Vernor attempted to sell on eBay had been licensed exclusively to a Seattle architecture firm, that the firm had no authority to transfer the software to any other party, and that Vernor’s activity therefore constituted a violation of its copyrights in the software. The court disagreed, holding that the first sale doctrine under U.S. copyright law protected Vernor from liability. Despite Autodesk’s characterization of the earlier transaction as the transfer of a license, the court ruled that the architectural firm merely had purchased a copy of the product, and first sale doctrine allows the lawful owner of a copy of a work to sell or give it away.

On September 30, 2009, the court essentially repeated this holding in ruling on cross-motions for summary judgment filed by each of the parties. Again relying primarily on the 9^th Circuit’s opinion in United States v. Wise (1977), the court characterized the earlier sale to the architectural firm as just a sale with a restriction as to use. After Wise, the 9^th Circuit held in other cases involving software disputes that software licensees did not “own” their copies. However, the Vernor trial court nevertheless looked to Wise as the controlling precedent, because it was the earliest case to consider the issue and because the 9^th Circuit did not expressly address it in the cases that followed.

A decision by Autodesk not to appeal these rulings by the Vernor court would be surprising, considering what is at stake. The implications of the court’s holding, if allowed to stand, would cast a shadow across the license-enforcement initiatives of not only Autodesk, but also other software publishers and their trade groups, such as the Business Software Alliance and the Software & Information Industry Association. It will be very interesting to see what happens next in this matter.

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The Second Circuit Court of Appeals recently made what may have been the first U.S. federal appellate decision finding an album of music recordings to be a single work under the damages provision of the Copyright Act of 1976. In Bryant v. Media Right Productions, Inc., the court agreed with the lower court that an album is to be considered a “compilation” under the Act and, therefore, that a plaintiff is only entitled to statutory damages on a per-album basis. Specifically, the court says:

Based on a plain reading of the statute, therefore, infringement of an album should result in only one statutory damage award. The fact that each song may have received a separate copyright is irrelevant to this analysis.

The plaintiffs in this case argued that each copyrighted song constitutes a “work” under the 1972 Act, and therefore demanded statutory damages for each song contained on the two albums in the complaint. To make their argument, the plaintiffs relied heavily on decisions where other Circuits applied an “independent economic value” test to determine whether each work contained within a compilation qualifies for separate statutory damages. Here, the Second Circuit specifically rejected the “independent economic value” test and instead relied on a plain reading of the statute along with accompanying legislative commentary to hold that an album compiled by the songwriters constitutes a single work.

The Second Circuit’s reading of the compilation language of the 1976 Act may significantly reduce the value placed on album-infringement disputes by copyright holders. Whether this ruling could reach beyond the music industry to influence other decisions regarding assembling preexisting copyrighted materials into a compilation—such as bundled software packages in software copyright disputes—is an interesting question that could have broad ramifications.

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In Lapine v. Seinfeld, 2010 WL 1688713 (N.Y.C.A. 2010), plaintiff Missy Chase Lapine and The Sneaky Chef, Inc. (“Lapine”) appealed from a summary judgment awarded to defendants Jessica Seinfeld and others on plaintiffs' claims of copyright infringement, trademark infringement, and trademark dilution.  The district court determined that Seinfeld’s book Deceptively Delicious: Simple Secrets To Get Your Kids Eating Good Food, was not substantially similar to plaintiffs' cookbook, The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids' Favorite Meals, released four months earlier.  The court affirmed the district court’s findings.

Lapine contended the district court erred when it decided Seinfeld’s book was not substantially similar to Lapine’s book.  Both cookbooks provide information related to tricking children into eating healthy foods by including pureed vegetables in other foods.  Lapine claimed the two works are substantially similar in their unique and innovative expression of the idea of sneaking vegetables into children's food by means of a cookbook containing comprehensive instructions for making and storing a variety of vegetable purees in advance, and then using the purees in specially created recipes for children's favorite foods.  The court determined that the standard test for substantial similarity between two items is whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal as the same.  When, as in this case, a work incorporates unprotected elements from the public domain, the court should apply a “more discerning observer” test, which requires substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed work.

The court stated that stockpiling vegetable purees for covert use in children's food is an idea that cannot be copyrighted.  The Copyright Act does not protect ideas.  It protects expressions of ideas.  To the extent the two works have general and abstract similarities-including their vaguely similar titles and inclusion of illustrations of prepared dishes, health advice, personal narrative, descriptions of how to make purees, instructions for preparing dishes, and language about children's healthy eating-the district court correctly concluded that these elements do not raise a fact issue for trial because they are “scènes à faire,” or unprotectable elements that follow naturally from the work's theme rather than from the author's creativity.  The two books lacked the substantial similarity required to support an inference of copyright infringement.

Lapine also contended the district court erred by failing to apply an eight-factor test in Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492, 495 (2d Cir.1961) when it rejected Lapine’s trademark infringement claims.  The court ruled that a district court need not slavishly recite the litany of all eight Polaroid factors in each and every case.  The Court of Appeals considered the overall impression on a consumer and the context in which the competing marks are displayed and reached the same conclusion as the district court: the marks are not confusingly similar. Defendant’s cover art was much more detailed than plaintiff’s, though the two drawings incorporated similar themes.  Additionally, Defendant Jessica Seinfeld’s use of the famous “Seinfeld” name reduces any likelihood of confusion with Lapine’s marks.  The court affirmed the district court’s dismissal of Lapine’s trademark dilution claims for the same reasons.

If you have been accused of copyright or trademark infringement, you should seek counsel experienced in resolving such disputes.

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In Vergara Hermosilla v. Coca-Cola Co., 2010 WL 2232657 (S.D. Fla. 2010), a U.S. federal court in Florida required Coca-Cola to post a conspicuous notice indicating Rafael Vergara Hermosilla’s (“Vergara”) contribution to a song Coca-Cola intended to use in its advertising during the 2010 World Cup soccer games.

Vergara had been asked to translate into Spanish a portion of the lyrics to the song “Wavin’ Flag” by the artist K’naan and to mix and produce a newly recorded Spanish vocal track for the final mix.  Vergara penned the Spanish lyrics of the song, sent rough vocal tracks demonstrating how the vocals should be sung to Universal Music Group (“Universal”), who had the contractual relationship with Coca-Cola, added backing vocals to the rerecorded Spanish track, and mixed and produced the final song.

However, before Universal paid the invoice, it asked Vergara to sign a document indicating the work he completed was a work-for-hire under the Copyright Act. Vergara responded that he would not have gone forward with the project had he known it would be considered a work-for-hire, and he insisted that he receive credit for the production work and that, for the Spanish version of the song, his name appear next to the composer(s) of the original English version.  Universal did not agree to Vergara’s proposed terms.

In May, 2010, Vergara filed an action for injunctive relief seeking an order requiring that Coca-Cola cease advertising with or distributing the Spanish version of the song and that Coca-Cola make a public acknowledgement of Vergara’s contribution to the song.

Coca-Cola argued it secured an implied and non-exclusive license to use the song,  that the work was a work-for-hire, and that Vergara failed to obtain a copyright registration prior to filing the action, barring him from filing suit.  The court rejected all of these arguments and issued an injunction prohibiting Coca-Cola from distributing the work without proper credit given to Vergara.

If you would like to license or obtain rights to music, you should consult counsel experienced in negotiating agreements to help prevent disputes like the one described above.  If you have already become involved in such a dispute, you should contact counsel to discuss your options to resolve the issues between you and the other parties.

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A new type of copyright lawyer has arrived on the intellectual property scene—not terribly good news for bloggers or online media outfits. Righthaven LLC CEO Steve Gibson is on the attack, beginning a campaign this past March against bloggers and website operators who post articles from the Las Vegas Review-Journal, his first client. Righthaven has acquired copyrights to the LVRJ content and is filing suit against these operators for copyright infringement. According to a Wired.com article, Righthaven plans to continue targeting bloggers who repost entire articles without permission by filing hundreds of lawsuits by the end of the year.

While there is clearly nothing improper about protecting intellectual property, some commentators are accusing Righthaven of “trolling,” a tactic known in patent law circles where a patent owner enforces its patents against an infringer, often in an aggressive manner, without any intention to actually market or develop the patented technology. In the case of Righthaven and LVRJ, lawsuits have been filed against bloggers with miniscule web traffic numbers, where the actual damages caused by the infringement are correspondingly minor. However, Righthaven uses the threat of statutory damages—which can range up to $150,000 per infringement—to scare the media outfit into settlement. For a blogger who receives notice of a lawsuit, often without first receiving a request to remove the infringing material, the prospect of a lengthy federal court battle is far too expensive. Righthaven apparently counts on such analysis to encourage quick, monetary settlement of these cases.

The “copyright trolling” trend being pioneered by Righthaven likely will expand before any material reform to copyright law occurs. Regardless of whether this type of use (or misuse) of copyright law is appropriate, Internet media companies and bloggers must ensure that any use of third-party content is either properly licensed or falls within the safe harbors provided by the copyright law prior to publication.

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On August 12, 2010, Oracle sued Google in U.S. District Court in San Francisco based on claims that Google’s Android operating system constitutes an infringement of Oracle’s patents and copyrights related to the Java software development platform. Oracle owns the intellectual property rights in Java following its acquisition of Sun Microsystems earlier in 2010, and in its lawsuit, it alleges that a Google-developed technology called Dalvik, which is integrated in the Android O/S, is a competitor to Java that infringes the various patents and the copyright in Java.

In light of the massive resources Oracle and Google each are able to bring to bear in this fight, the outcome of the lawsuit is anything but certain. Google has countered that versions of Java have been licensed under open-source licenses for years and that Dalvik was developed under that kind of license. In addition, Sun Microsystems’ approach to Java patent matters historically was very permissive, which may call into question Oracle’s ability now to base a patent suit on rights that arguably may have been diminished through past inaction.

However, one thing that is certain is that Oracle’s lawsuit will cause – and should cause – many software developers to think long and hard about the advisability of any long-term plans that depend on the open availability of Java as software development platform. As this case unfolds, developers should be prepared to carefully consider whether it represents a sea-change in Java-related IP enforcement, in which case it may make sense to start identifying appropriate alternatives to Java, or whether it is merely a case of one big fish going after another big fish in an effort to reach a joint-licensing or other context-specific outcome.

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