Tuesday, December 22, 2009

No Infringement for Cussler Bros., Adventure Novelists

Ka-Pow! The District Court in Hawaii ruled recently that the adventure novel Treasure of Khan by Clive Cussler and Dirk Cussler (the nineteenth Cussler yarn to feature the character Dirk Pitt) did not infringe plaintiff’s novel, Gold of Khan, about Marco Polo's lost treasure. (Doody v. Penguin Group (USA) Inc., D. Haw., No. 08-cv-00285-JMS-BMK, 11/23/09.)

Specifically, the court found that there was no substantial similarity between the protectable elements plaintiff’s work those the Cussler novels. From a plaintiff’s perspective, this amounts to a superhero body slam.

As an aside, you will recall that copyright protection does not extend to ideas or facts. 17 U.S.C. Section 102(b). It does, however, protect the original expression of ideas or facts. Also, mere themes and bare plots are not protected. Midas Productions, Inc. v. Baer, 437 F. Supp. 1388, 1390 (C.D. Cal. 1977). There is also agreement among the circuit courts of appeal that a stereotyped characters are not protected by copyright; a character must be sufficiently fleshed out to constitute more than an idea, or more than a stock character. Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978); Miller v. Universal City Studios, 650 F. 2d 1365 (5th Cir. 1981); but see the widely criticized, Ninth Circuit “fleshing out” and “story being told” tests in e.g. Metro-Goldwyn-Meyer, Inc. v. American Honda Motor Co., Inc., 900 F. Supp., 1287, 1296 (C.D. Cal 1995 (James Bond character protected because a James Bond story without 007 is not a Bond story).

Ok, back to our regularly scheduled programming: The Court in Doody also rejected the plaintiff’s argument that the Court’s similarity analysis should be based on a comparison of the plaintiff's work with the defendants’ books as a whole. The Court said that “[t]o accept Plaintiff's proposition would mean that ‘hardly any drama since the Garden of Eden could survive the charge of plagiarism.” (Quoting Rose v. Connelly, 38 F. Supp. 54 (S.D.N.Y. 1941).

Jonathan Pink practices in the areas of intellectual property and commercial litigation at Bryan Cave, LLP. He is resident in the firm's Los Angeles and Irvine offices, and is Co-Chair of the firm's Internet and New Media Team. He can be reached at 949-223-7173.

Monday, December 21, 2009

Google et Les Françaises -- Hardly a French Kiss

Google et Les Françaises . . . So let’s see, the Can-Can began-gan in Paris. But now, Google has come to find that Can’t-Can’t has originated there as well.

A Paris court has ordered Google to cease its scanning and subsequent distributing of French books online. The court awarded the plaintiffs roughly $400,000 (US) in damages, and ordered Google to pay about $14K per day that the material remains on the web. The plaintiffs had sought about $26 million in damages.

You will recall that Google has made a global push to digitize books – becoming, in a sense, the Digital Alexandria – and has received quite a bit of flack/resistance and legal bills for its efforts. In the U.S., Google reached a proposed settlement with class plaintiffs over a similar issue, and the Court just recently approved of that proposal. Notably, it excludes foreign works published after January 5, 2009, provided such works had been registered with the U.S. Copyright Office by that date, or had been published in Canada, the United Kingdom or Australia by then.

Jonathan Pink is a commercial litigator with a specialty in high-stakes trademark, trade dress, copyright, patent and trade secret disputes. He also has extensive experience litigating claims for breach of contract, fraud, unfair practices, trade libel and a broad spectrum of intellectual property matters in state and federal courts across the nation. He is resident in Bryan Cave's Irvine (Orange County) and Los Angeles offices, and is Co-Chair of the firm’s Internet and New Media Team. He can be reached at jonathan.pink@bryancave.com.

Sunday, December 20, 2009

Storm Troopers, Copyright Infringement and a Bit of Clever Luck

Some months ago I wrote about a case I was handling involving an Italian company accused of infringing a U.S. copyright. The infringement alleged against my client occurred in Italy. According, my defense was that the U.S. courts had no jurisdiction over the claim because -- well, see earlier post ("An Italian Fling") for that analysis. The bottom line is they don't, and as a result, the plaintiff's million dollar claim became the parties' several thousand dollar, nuisance-value settlement.

This post deals with the flip side of that issue. Here, Lucasfilm Ltd. prevailed in a U.S. court against British national, Andrew Ainsworth, ruling that Mr. Ainsworth (one of the costume makers who made the storm trooper helmets used in its Star Wars films -- can you say "cool!"), replicated those helmets and sold them over the Internet to customers in the U.S. Mr. Ainsworth is nothing if not industrious -- and creative, and apparently rather clever.

Lucasfilm sued for the U.S. Based copyright infringement, and Mr. Ainsworth largely ignored them. The court entered a default judgment entered against him, and Mr. Ainsworth (ok, I'm imagining here) yawned. After all, Mr. Ainsworth lives in England and the judgment against him was way over here on the other side of the pond.

So back to my "flip side" comment. If a U.S. court does not have jurisdiction over foreign infringement (and again, remember the court here tagged Ainsworth for U.S. based infringement), does its domestic rulings have an international reach? As Lucasfilm discovered, apparently not.

Lucasfilm tried to enforce its U.S. judgment against Ainsworth in England, and the court there said "I should say not!" (or upper crust words to that effect). Now, a second British court has sided with the first, ruling that Mr. Ainsworth is safe from a U.S. default judgment entered against him. (Lucasfilm Ltd. & Ors v. Ainsworth & Anor, case number [2009] EWCA Civ 1328, in London's High Court of Justice, Court of Appeal (Civil Division).)

Hence my comment that Mr. Ainsworth is industrious, creative, and cleaver. Now, if this result was based on dumb luck rather than a calculated risk, I suppose we could substitute the adjective lucky.

In fairness, while Ainsworth's sales ran afoul of U.S. copyright law, they are legal under British laws. Under U.K. law, the storm trooper helmets are not entitled to the protections afforded works of art, because their purpose was primarily utilitarian. Moreover, the British court ruled that Ainsworth's online sales to U.S. customers do not place him under U.S. jurisdiction.

So for now, the Force is with Mr. Ainsworth. Lucasfilm may appeal to the U.K. Supreme Court, but doing so may carry as much probability of success as trying to destroy the the Deathstar with a bunch of X-Wing Fighters.

Jonathan Pink is a business litigation attorney with a specialty in intellectual property. He handles high stakes copyright, trademark and patent litigation for clients world wide. He is resident in Bryan Cave's Irvine (Orange County) and Los Angeles offices. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.

Wednesday, December 16, 2009

And People Wonder Why Most Patents Don't Make Any Money

As we close out the year, it’s fun to take a look back. In the work of intellectual property, that always makes for some quality amusement. Let’s look, for example, at just a few of the patents that issued this year:

Pat. No. 7,533,832 -- Leg-mounted scent dispenser
Pat. No. D589070 -- Bacon comb
Pat. No. 7,537,453 -- Life-sized furniture kit
Pat. No. 7,497,606 -- Functional shoe
Pat. No. D585,182 -- Removable underwear
Pat. No. D596,839 Striped socks
Pat. No. 7,594,814 -- Prayer-reminder device
Pat. No. 7,510,225 -- Combined manure fork and fan-type shavings blower
Pat. No. D593,731 -- Visor with hair
Pat. No. D589,252 -- Combined towel and handbag
Pat. No. 7,607,664 -- Marriage and divorce game
Pat. No. D596,237 -- Human-shaped toilet stationery organizer
Pat. No. 7,594,878 -- Whole-body vibrator
Pat. No. 7,591,811 -- Diaper with legs
Pat. No. 7,494,681 -- Food products comprising fat and salt
And last (but certainly not least) Pat. No. 7,597,727 -- Method for starting a fire.

Now for 2010? Let the infringement suits begin!

Jonathan Pink is a commercial litigator specializing in high stakes copyright, trademark, patent and business-related disputes. He is Co-Chair of the Internet and New Media Team at Bryan Cave, LLP, where he is resident in the Irvine (Orange County) and Los Angeles offices. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.