Pinterviews

Sort of surprised at all the (P)interest in Pinterest, or at least in the copyright issues surrounding it.

I was interviewed by the Wall Street Journal about the use of non-user generated content posted as UGC on the site. That is, taking someone else’s images and pinning them to the Pinterest user’s on pinboard.

The first thing I told the Journal is that there's a decent fair use argument here. There are many uses beyond straight commentary that deliver new meaning while still providing important social benefits (comparable to commentary or criticism) that the fair use doctrine aims to protect. The fair use doctrine has to remain flexible enough to recognize the complications of contemporary technology if it's to remain a true First Amendment safeguard. Maybe this requires amending the Copyright Act. Uh, certainly, this involves amending the Copyright Act.

Of course technology evolves so quickly that striving to have the Act keep up with it is a little like using a bicycle to chase a speeding Viper. I don’t care how good a cyclist you are, you’ll never catch up. (In homage to Roger Corman: Eat My Dust.)

The Wall Street Journal reporter took all that down, then called back and said: Just give me the dos and don'ts. Here’s a link to the article: http://blogs.wsj.com/law/2012/03/13/dont-get-stuck-by-pinterest-lawyers-warn/?mod=WSJBlog.


Those comments, by-the-by, led to a radio interview on the same topic on the Victoria Taft Show. A link to that is right here: http://stationcaster.com/player_skinned.php?s=99&c=849&f=444791 .


Between those two pieces, I’ve said everything I have to about this issue. A far more interesting issue (or two), was noted by the esteemed scholar, Eric Goldman (who everyone should read if they don’t already).


Eric opined in a Facebook discussion yesterday that the two really interesting points about Pinterest are: “(1) it's a site that surely would never grow to maturity in a SOPA world as opposed to a DMCA 512(c) world because the copyright concerns would have taken it out without any 512(c)(3) takedown notices being filed, and (2) it came out of nowhere to become a major threat to Facebook, reminding us that the next wave of innovation is nowhere on our radar screen today, and locking in the existing competitive environment would be a huge mistake.”


Now that’s thinking! Those are by far the most interesting points I’ve heard about Pinterest. So pin that.


Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Orange County offices of Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.

Louis Vuitton Threatens Law School? This Little One's Not Worth the Trouble

You’ve got to admire Louis Vuitton. They aggressively pursue alleged infringers of their trademarks.

There’s the recent case of Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011) in which the Ninth Circuit held that a web-hosting company was liable for contributory copyright and trademark infringement when it failed to take steps to stop alleged infringement committed by Chinese websites which had used its servers.

There was Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, in which the House of Louis sued a company that sold a parody pet product called Chewy Vuitton: a chew toy that resembled a Louis Vuitton handbag. (The Fourth Circuit ruled that the toy, which included a number of dissimilarities to the real bag, was a parody and thus did not infringe Louis Vuitton’s trademark.)

And the suit against Warner Brothers for its use of a counterfeit LV bag in “The Hangover Part II” (Zach Galifianakis warns his cohort not to sit on his Louis Vuitton bag, “Careful, that is a Louis Vuitton.”)

Now, LV has set its sights on the University of Pennsylvania Law School.

Penn Law included a version of the LV logo/design on a student flyer advertising a conference on intellectual property infringement in the fashion industry.

Specifically, the flyer showed those flowery, circley and diamondy shaped images that LV is known for. The flyer intermixed those images with some stylized ones to make a point about the discussion. They included circle-cs (for copyright) and TMs (for trademark). Get it?

Louis Vuitton's director of civil enforcement for North America did, and he didn’t like it. He wrote to the law school's dean, saying Louis Vuitton had “created the Toile Monogram pattern” (that’s what those clover and star things are called) “in the 1890’s to protect the Louis Vuitton brand from unlawful imitators.”

He was "dismayed" that the school’s Intellectual Property Group had "misappropriated and modified the LV Trademarks and Toile Monogram as the background for its invitation to [its] . . . Annual Symposium on ‘IP Issues in Fashion Law’", calling such conduct “egregious” and predicting that it would dilute the LV Trademarks and could lead others to think that that it’s ok.

The coffee machine must work overtime at Louis Vuitton. They may want to consider laying off the caffeine.

The letter from LV’s counsel goes on to chastise the law school like a parent ripping into a kid for running across the street without looking first: “I would have thought the Penn Intellectual Property Group, and its faculty advisors, would understand the basics of intellectual property law and know better than to infringe and dilute the famous trademarks of fashion brands, including the LV Trademarks, for a symposium on fashion law."

In my house we would have taken away the school’s treats for the day. I’m wondering if LV considered rejected this as being too harsh.

Perhaps I’m naively optimistic, but I just don’t think most people are going to confuse the law school’s use of the LV marks with LV’s participation in, sponsorship or support of the school’s program. After all, all the participants were listed on the flyer, and LV wasn’t one of them.

The University of Pennsylvania's associate general counsel wrote back to LV. In his letter, he noted that the Lanham Act "expressly protects a noncommercial use of a mark and a parody from any claim for dilution" and that, in order to infringe LV’s marks, the school would have had to have used the marks in interstate commerce in a manner likely to cause confusion between "Louis Vuitton's luxury apparel goods and [the student group's] educational conference among the relevant audience."

He says he’s not going to tell the Intellectual Property Group to discontinue its use of the image, and invites LV’s counsel to attend the symposium.

Nice.

I suppose LV’s counsel has reason to be concerned about fair use. It’s a good defense in some instances, such as when a mark is used in a descriptive sense. See e.g. Radio Channel Networks, Inc. v. Broadcast. Com, Inc. 1999 WL 124455 (S.D.N.Y. 1999), aff’d w/out opinion, 201 F.3d 432 (2d Cir. 1999) (use of term “radio channel” to label one of several website groupings of streaming programming held to be descriptive); see also Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (defendant’s use of the plaintiff’s mark to describe the plaintiff’s product is acceptable); Playboy Ent., Inc. v. Welles, 279 F. 3d 796 (9th Cir. 2002) (use of plaintiff’s mark to identify defendant was not infringing).

Still, that doesn’t really fit this fact pattern.

Rather, this is closer to incidental use which is so de minimis that no infringement can be found, or better yet, how about the First Amendment? A trademark may develop into a cultural icon that becomes a referent for purposes of social commentary. See e.g. Mattel, Inc. v. MCA Records, Inc., 202 WL 1628504 at *2 (9th Cir. 2002) (“Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the trademark becomes a word in our language and assumes a role outside the bounds of trademark law.”)

This is similar to the parody defense that school’s counsel mentioned. See Anheuser-Busch, Inc. v. Balducci Publications, 28 F. 3d 769, 773 (8th Cir. 1994) (use of a trademark to comment on or criticize the trademark, its owner, or the products and services marketed with the trademark may constitute a defense to an action for trademark infringement).

But the one I like best of all, is that there simply is no likelihood of confusion by the likely viewers (law students, IP lawyers, etc.) as to the source, sponsorship or affiliation with respect to the plaintiff’s mark and the defendant’s goods or services. See 15 U.S.C. Section 1114; Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205 (2d cir. 1979) (“The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.”).

Is the use of those marks on a law school flyer for a Symposium on “IP Issues in Fashion Law" really going to dilute the LV trademarks?

To quote from that great bar scene in Star Wars, Episode IV (after Ponda Baba gives Luke a rough shove and starts yelling at him in an alien language Luke doesn't understand):

Dr. Evazan (grabbing Luke) I don't like you either. You just watch yourself. We're wanted men. I have the death sentence on twelve systems.
Luke: I'll be careful.
Dr. Evazan: You'll be dead!
Obi-Wan: (intervening) This little one's not worth the effort. Come, let me get you something.
(Dr. Evazan shoves Luke across the room and pulls out a blaster, at which point Obi-Wan ignites his light saber and severs Ponda Baba's arm.)

This little one’s not worth the effort. LV should show up for the symposium and speak its mind. Beyond that, and knocking off the coffee, they should think twice before making an issue out of something like this . . . before they lose an arm and have no place to hang their bag.



Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is resident in the firm’s Los Angeles and Orange County (Irvine) offices. He can be reached at jonathan.pink@bryancave.com or 949-223-7173.

Inadequate Pre-Filing Investigation of Copyright Claims May Be Costly

All too frequently, I encounter plaintiffs whose claims never should have been filed, would not have been filed, if they or their counsel had conducted an adequate pre-filing investigation of the merits of their claim.

Even worse, and particularly untenable, are those who continue to maintain their claim once the material defect that an adequate pre-filing investigation would have revealed is brought to their attention.

Many times in a copyright claim, the only requirement to conclusively decide a case is to compare the works at issue side by side, perhaps with the assistance of expert. In many instances, it would not take an expert more than a minute to determine that the works at issue are different, distinct and non-duplicative.

Why does this matter? Why should plaintiffs and their counsel always make certain to conducted an adequate pre-filing investigation, and not merely shoot-from-the-hip and leave questions for later? Because there’s real money at stake for both sides.

When determining if an award of attorneys fees should be granted pursuant to 17 U.S.C. Section 505, bad faith or frivolousness on the part of the plaintiff can be an influential consideration. Fantasy, Inc. v. Fogerty, 94 F.3d 553, 558 (9th Cir. 1996); see also Lumiere (Rights) Limited v. Baker & Taylor, Inc., 116 F.3d 484 (9th Cir. 1997) (appellants’ copyright claims were, if not frivolous, at least factually unsupported, and an award of fees may deter other such suits).

Likewise, the obligation to pay the defendants’ fees may not rest solely on the plaintiff (who may believe him/herself protected by the fact that they are “judgment proof”). The financial burden may fall upon both the counsel and the client. Under 28 U.S.C. § 1927, “an attorney of record may be personally required to pay costs, expenses, and attorneys’ fees that are caused by counsel’s unreasonable and vexatious conduct.” Baker v. Urban Outfitters, 431 F. Supp. 2d 351, 362 (S.D.N.Y. 2006). The statute provides:

Any attorney or other person admitted to conduct cases in any court of the United States or any Territory thereof who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.
28 U.S.C. § 1927.

Notably, courts in copyright cases can—and have—awarded prevailing defendants their attorneys’ fees under 28 U.S.C. § 1927 numerous times. See, e.g., Baker v. Urban Outfitters, Inc., 431 F. Supp. 2d 351, 363-67 (S.D.N.Y. 2006) (granting defendant’s motion for attorneys’ fees under 28 U.S.C. § 1927 against plaintiff’s attorneys for unreasonably promoting expensive and time consuming litigation, including: (1) seeking statutory damages that were precluded by the plain language of the Copyright Act; (2) inclusion of a tortious misappropriation of goodwill claim, though clearly preempted by the Copyright Act; (3) seeking actual damages that were “too extravagant to be maintained”; (4) documentary evidence of bad faith (e.g., attorney correspondence seeking payment from “deep pocketed” defendants); (5) withholding evidence in discovery; and (6) filing baseless motions); Tillman v. New Line Cinema, 375 Fed. Appx. 664, 667 (7th Cir. 2010) (affirming award of attorneys’ fees after defense summary judgment and sanctions against plaintiff’s attorney’s under 28 U.S.C. § 1927 for unreasonably multiplying the proceedings. According to the court, not only did the plaintiff take inadequate steps to investigate the supposed inconsistencies underlying his conspiracy theory, but he made no effort to identify any particular expression in the allegedly infringing work that is substantially similar to copyright-protected expression in plaintiff’s work).

Further, any continuance of an action after the disclosure of a material defect that a pre-filing investigation should have revealed may also result in the defendant bringing a motion pursuant to FRCP Rule 11.

As you know, Rule 11 requires an attorney to certify every filing, and by doing so creates an affirmative duty of investigation both as to law and as to fact to deter frivolous actions and meritless claims. Fed. R. Civ. P. 11; see Business Guides, Inc. v. Chromatic Communications Enterprises, Inc., 498 U.S. 533, 550 (1991). By signing, an attorney certifies that he/she has done a reasonable inquiry, and to the best of his/her knowledge:
“(2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law; [and]
(3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery.”
Fed. R. Civ. P. 11 (b)(2)-(3).

The Rule 11 certification represents that counsel has done a prefiling examination of the facts that is reasonable under the circumstances. Zaldivar v. City of Los Angeles, 780 F.2d 823, 831 (9th Cir. 1986). “Reasonable inquiry” requires attorneys to seek credible information rather than proceed on mere suspicions. California Architectural Building Products, Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1472 (9th Cir. 1987). The test is “whether a reasonable inquiry would have revealed there was no basis in law or fact for the asserted claim.” (internal quotes omitted). Ali v. Mid-Atlantic Settlement Services, Inc., 233 F.R.D. 32, 39 (D. D.C. 2006).

Further, counsel cannot blindly rely on their clients representations. Lloyd v. Schlag, 884 F.2d 409, 413 (9th Cir. 1989). The reasonableness standard is objective, and if the pleading is legally unreasonable or without factual foundation, sanctions are warranted. Zaldivar v. City of Los Angeles, 780 F.2d 823, 831 (9th Cir. 1986). Reasonableness is measured at the time paper is filed, but if the same position is advocated again in the litigation, the reasonableness is measured at the time of later affirmation. Fed. R. Civ. P. 11 (b); see e.g., Battles v. City of Ft. Meyers, 127 F.2d 1298, 1300 (11th Cir. 1997). Postfiling developments may also be relevant for determining the reasonableness of the prefiling inquiry. For example it may show that the plaintiff’s counsel should have known from the outset that there was no evidentiary basis for the complaint. See Jones v. International Riding Helmets, Ltd., 49 F.3d 692, 695 (11th Cir. 1995). If after a complaint is filed, discovery demonstrates that a fraud has been perpetrated and the claim is unfounded, failure to withdraw the frivolous pleading or conduct a further reasonable inquiry is sanctionable. See e.g., Childs v. State Farm Mut. Auto. Ins. Co., 29 F. 3d 1018, 1026 (5th Cir. 1994).

Thus, if a reasonable inquiry by the attorney and his/her client would have revealed, at a minimum, that the works at issue are entirely different from one another, and thus, the allegations of infringement are unsupported by existing law and fact (as substantially similarity of the works is an essential element), the plaintiff’s counsel faces serious risk of sanctions under Rule 11. See e.g., Llyod, supra, 884 F.2d at 412 (“We hold that a reasonable attorney would have discovered that a copyright infringement suit cannot be brought unless and until the copyright transfer has been properly recorded, and ascertained that the recordation has been accomplished.”)

Based on this, a plaintiff’s counsel who finds him or herself in this position, should negotiate a fast exit to such an action. Pressing forward with such lawsuits hurts the parties, the judicial system, and the counsel who doggedly pursues them.


Jonathan Pink is an intellectual property attorney specializing in copyright and trademark matters. He is resident in the Los Angeles and Irvine offices of Bryan Cave, LLP and can be reached at jonathan.pink@bryancave.com.

You Say SOPA, I Say Soupa

I recently had a very pleasant conversation about the death of the Stop Online Piracy Act (SOPA). On the other side of the table (quite literally) was a record company exec: a charming and intelligent man with whom it was great fun to converse.

SOPA (and its sister, PIPA), faced some stiff opposition from the Web community, and ultimately failed. My dinner companion saw this as a shame, and felt that the reason it failed was what the factual disconnect between the actual content of the Act and the claims being made against it by Google, Wikipedia, Facebook, others in the Web-community – and me (at least at dinner).

His position on SOPA, quite predictably, was that combating flagrant mass thieving of intellectual property on the Internet, as often perpetrated from foreign-based websites, required a coordinated strategy that SOPA delivered. As he saw it, SOPA only regulated foreign sites engaged in unlawful activity. (SOPA proposed to do this, in case you don’t already know, by cutting off the flow of revenue from US-based advertisers and by preventing US-based payment processors from conducting business with such foreign sites until they’ve proven themselves to be non-infringing. The Act contains a penalty for seeking such relief where there is no basis for the allegation.)

The argument against SOPA has always been that it imposes regulations on all Internet sites (legitimate and non-) that will stall innovation and curtail the flow of information. The opposition to SOPA is that putative copyright owners could use the law recklessly (or even maliciously), and that such conduct would unnecessarily impede and harm legitimate sites – possibly to the point of cyber-death. The fear has also been that the Act was a big step towards government censorship, although I admit that that’s a bit of the-sky-is-falling-ness that I never really bought into. Also admittedly, I only read the October version of the Act. It was long and rambling and circular enough that I never went back to read the sequel. Still, I get the objective. I’m a content creator, an artist by nature, and fully believe in protecting a creator’s intellectual property rights. I even think SOPA and PIPA asked the right questions; I just think they came to the wrong answer.

Moreover, and in defense of my position, doesn’t the recent legal shuttering of Megaupload prove that the current law worked sufficiently? And it the law worked to close down a alleged infringer like Megaupload, who was to say the system was broken? Hey, if it ain’t broke, don’t SOPA.

No doubt a new bill will come in to fill the SOPA/PIPA void. I’m all in favor of one that prevents an erosion of content-creators’ fundamental rights, but believe that it must contain sufficiently flexible language to strike a balance between the rights and interests of the content creator, the pipeline creator and the general public. Isn’t that fair? Isn’t it in everyone’s interest that safeguards for all concerned be preserved? I think so. And certainly, preventing theft benefits all concerned, but the prevention has to be done intelligently and without creating even more problems.

To reach across disciplines and borrow (generally/paraphrasing) from the Hippocratic Oath, legislation like SOPA that aims to solve the problem of infringers who profit from the distribution of illegal content must first insure that it does no harm to the patient it is attempting to cure.



Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Irvine office of Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.

Lights, Camera, Vuitton!

This has already garnered a fair amount of press, but it’s funny and interesting, and those are generally my two criteria for writing about something.

Here’s the scoop: luxury designer Louis Vuitton (forget about the fact that it’s owned by a larger holding company, I’m just referring to Vuitton in this post) sued Warner Bros. alleging that a handbag featured in the Warner-movie Hang Over Part II is a fake.

Specifically, in a scene played out in an airport waiting area, the character of Alan, played by Zach Galifianakis, warns another character (Stu), who’s about to drop his tush on the bag at issue: “Careful, that is.. that is a Louis Vuitton.”

According to the fine folks at Louis Vuitton, the bag at issue is a counterfeit, made by a company named Diophy. Vuitton and Diophy are no strangers to each other: Vuitton is currently suing Diophy with respect to its allegedly counterfeit bags; and Diophy . . . well Diophy appears to really like the design of Vuitton’s bags. There, no strangers.

With respect to the movie, however, Vuitton claims consumers are likely to be confused, and thus Vuitton will be/has been damaged, by Warners’ use of the bag in the film. The claims expressly asserted include trademark dilution, false designation of origin and unfair competition.

Streeetch! (Sorry, just stretching here. Ah, that feels better.)

So what does LV want? The scene cut from the film. Is that all? You want butter with that? And a box of damages? Your total will be . . . .

You may recall that Hangover Part II is the same file that was previously the issue of another IP claim: in that one, the studio was sued by a tattoo artist who claimed that mark on Ed Helms' face infringed the tattoo the artist had etched into boxer, Mike Tyson. What is it about this film? In October, a writer also sued, claiming the flick infringed a script he had written. Well, that’s how you know a film is successful: the lawsuits start flowing in. Seems nobody sues over the films that are dogs (The pending John Carter release? We’ll see. See here for an article about that one: http://www.thedailybeast.com/articles/2012/02/21/john-carter-disney-s-quarter-billion-dollar-movie-fiasco.html )

Back to our story:

Warners – shockingly – disagrees with the position taken by les Medames et Messieurs chez Louis Vuitton. According to Warners’ attorneys, Warners’ use is de minimus, non-infringing and subject to a defense under the First Amendment. And if that’s not enough, the studio has March 14 to think of a few more reasons why a 12(b)(6) should be granted and the complaint dismissed.

Is it just me, or does this who spat seem just a little bit silly? Cut the scene? Really? Damages under trademark law for this? Yeah? What about when Bugs hopped along singing “I’m looking over a three-leaf clover . . .” Do you think Mort Dixon and Harry M. Woods (the gentlemen who wrote the song I'm Looking Over a Four Leaf Clover" in 1927) should have had a claim for infringement too?


Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Irvine offices of Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com

The Face Book of Sex

A friend of mine recently told me, “If you’re going to practice intellectual property, sooner or later you’re going come across something that touches on the porn industry.”

Which brings me to a case settled this week between Facebook and the “Face Book of Sex” (Facebook Inc. v. Various Inc., case number 4:11-cv-01805, N.D. CA).

Facebook’s trademark claim seems to have been pretty straightforward: that the defendant infringed the social media giant’s trademarks by running the adult-themed FaceBookOfSex.com, asserting that FaceBookOfSex.com mimicked the social network's site with such features as "like" (albeit, in a slightly different context).

As many of you know, the Lanham Act imposes liability upon any person or entity who uses a mark in interstate commerce in connection with the sale or advertising of goods or services that is likely to cause confusion or mislead consumers as to source or origin of the goods or services. See 15 U.S.C. § 1114(1)(a). Likelihood of confusion is typically measured by a series of criteria originally set forth in AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

While Facebook’s claims were somewhat obvious, impressively and unexpectedly, "Face Book of Sex" brought its own counterclaim to cancel Facebook’s marks, arguing that “face book” is a term that has been used for years by schools and organizations, ant Facebook should not be allowed to monopolize it.

That’s the argument people made with respect to “Windows,” way back when, and “Apple,” too.

Not necessarily a winning argument, but you have to appreciate the in-your-face chutzpah!



Jonathan Pink is an intellectual property attorney resident in Bryan Cave LLP’s Los Angeles and Orange County offices. He can be reached at jonathan.pink@bryancave.com

Bon Victoire

Just back from the Grammys.

The televised portion of the show is fine, but the real spirit of the place is found in the Grammy Week lead-up events, and the pre-telecast portion of the awards. That’s where the music industry really comes together to honor its own in an intimate and heartfelt ceremony.

Two fashion notes: guys, lose the bow ties on the tuxes, and everyone: “black tie” does connote some degree of formal attire (and that does not include simply recycling what you wore to your wedding or what you wore to your sister’s wedding).

Ok, enough of that, but in honor of that: a music law case to report on:

Last week, the First Circuit affirmed the dismissal of three lawsuit that had been brought against Bon Jovi based on the allegation that Bon Jovi’s song, “I Love This Town,” infringed “Man, I Really Love This Team” by little known artist, Samuel Bartley Steele. (Steele v. Ricigliano et al., case number 11-1675; Steele et al. v. Bongiovi et al., case number 11-1674; Steele et al. v. Vector Management et al., case number 10-2173; and Steele et al. v. Turner Broadcasting System Inc. et al., case number 09-2571, in the U.S. Court of Appeals for the First Circuit.)

What?! An unknown artist suing a big-named artist for infringement?! Shocking! A little known artist claiming that the big-guys listened to and stole the little’s guy song?

Look, I’ve got a message for the little guy: the big guy (generally) hit it big because he (or she) has a lot of talent. Hard to believe, but true. Talent is what brought them to such heights. Talent as in they don’t need to steal from you because they’re pretty damn good at writing their own stuff. Got that?

Ok, enough of that too.

Back to Steele and Bon Jovi. Turns out Bon Jovi’s song was regularly played at baseball games, which may be why Steele thought it was stolen (remember, his work is entitled “Man, I Really Love This Team,” which could refer to baseball). Unfortunately for Steele, however, copyright law does not protect facts, ideas, or themes. It only protects the way these things are expressed.

In other words, to prove direct infringement, a plaintiff must first prove that the defendant copied the protected work. Kelly v. Arriba Soft Corp., 336 F.3d 811, 817 (9th Cir. 2003) ("the plaintiff must show ownership of the copyright and copying by the defendant.”); see also LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150, 1156 (9th Cir. 1996) (“A plaintiff must meet two requirements to establish a prima facie case of copyright infringement: (1) ownership of the allegedly infringed material and (2) violation by the alleged infringer of at least one of the exclusive rights granted to copyright holders.”).

Such copying may be proven by either direct evidence, which is rare, or by indirect evidence that shows (1) the defendant had access to plaintiff’s work, and (2) the defendant’s work has probative similarity. See, e.g., Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 832 (10th Cir. 1993); Computer Assoc. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 701 (2d Cir. 1992) (requiring “substantial similarity”). "The word ‘copying’ is shorthand for the infringing of any of the copyright owner’s exclusive rights, described" in 17 U.S.C. § 106. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085, n.3 (9th Cir. 1989).

The degree of similarity needed to infer that copying has occurred will vary from case to case, but a plaintiff must show evidence sufficient that a reasonable fact finder, considering both access and similarity of the works, could find that the second work was copied from the first. See Gates Rubber v. Bando, 9 F.3d at 833 n.9. The plaintiff must also show that the copying was a result of a volitional act. See Religious Tech. Ctr v. Netcom On-Line Commc’n Servs., Inc., 907 F. Supp. 1361, 1369-70 (N.D. Cal. 1995).

The plaintiff also must show that those elements of a work that have been copied are protected expression and of such importance to the copied work that the appropriation of these protected elements is actionable. See id. at 832; Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1341 (5th Cir. 1994). The materiality component is important because not all copying constitutes copyright infringement. See Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (“The mere fact that a work is copyrighted does not mean that every element of the work may be protected.”). Thus, unprotectable elements of a work cannot serve as basis for liability for copyright infringement; liability will only attach where protected elements of a copyrighted work are copied. Gates Rubber v. Bando, 9 F.3d at 833.

In this case, the district court – and later the Court of Appeal on its own independent review -- concluded that no reasonable juror could find a substantial similarity of expression between Bon Jovi’s work and Steele’s work sufficient to support an infringement claim. The court also said that that no reasonable juror could find any “probative similarity of expression sufficient to support an inference of actual copying.”

In other words, Steele had failed to establish a degree of similarity between the works to lead any reasonable jury to infer that copying has occurred. In fact, the First Circuit went on to say that the differences between the works are “fundamental and extensive,” and the similarities that do exist stem from the works' common subject matter.

That’s judicial equivalent of a body slam. Once a court has told you “no substantial similarity,” it’s time to go home and figure out why you took the case in the first place. Personally, I would hope that legitimate plaintiffs represented by knowledgeable copyright counsel would call it quits at that point.

Of course, even if most legitimate plaintiffs and knowledgeable counsel would do that, that still leaves many, many people who will press on. And in this case?

I suspect its not over yet.



Jonathan Pink is an intellectual property attorney specializing in copyright and trademark matters. Resident in the Los Angeles and Orange County offices of Bryan Cave, LLP, he represents clients in film, television, music, design and the visual arts. He can be reached at jonathan.pink@bryancave.com.