Copyright Infringement

Written by: Susan Neuberger Weller

Fabric design is a creative art form that has existed for thousands of years. Although the methods for creating such designs have evolved, the purpose and function of such designs has not changed as significantly.  Fabric designs are used for purely ornamental and decorative purposes, for purposes of identity, and also to convey information.  From an intellectual property standpoint, how a fabric design is used may dictate what type of protection it can claim. In addition, the time it takes to obtain each type of IP protection, its duration, and the procedures for enforcement may also dictate the type of protection to seek. Continue Reading It’s a Material IP World: Trademarks, Copyrights, Design Patents and Fabric Designs

Written by:  Joseph M. Dicioccio

Yesterday, the U.S. Supreme Court released its widely-anticipated decision in American Broadcasting Cos., Inc. et al. v. Aereo, Inc., wherein it reversed and remanded for further consideration a decision by the U.S. Court of Appeals for the Second Circuit that held that Aereo’s “watch” feature was not a “public performance” under copyright law, and thus did not directly infringe upon the public performance rights of the owners of that content, namely certain broadcast networks.  In reversing the 2013 Second Circuit decision, the Supreme Court noted that because the revisions to the Copyright Act in 1976 were, in the majority’s opinion, largely directed toward rejecting certain U.S. Supreme Court decisions that had held that services that “enhanced” a viewers’ ability to receive broadcast television signals (through cables connecting giant antennae with viewers television sets) were not “public performances,” those services did not run afoul of the copyright law prior to its 1976 revisions.  The majority, led by Justice Breyer held that the Copyright Act was then revised to reject the import of these decisions, thus setting the stage for the Court’s present decision.

Continue Reading U.S. Supreme Court Decides Aereo Internet Broadcast Television Case

Written by: Susan Neuberger Weller

The Digital Millennium Copyright Act (DMCA), signed into law October 28, 1998, added Section 512 to the US Copyright Act limiting the liability of online service providers for copyright infringement. Basically, the law exempts from liability online service providers on whose sites third-party users store, post, or otherwise place various types of infringing material if the provider had no knowledge of the infringing activity, if it expeditiously removed the infringing material once the infringement became known to it, and if the provider did not receive a direct financial benefit from the infringing activity.  In order to benefit from these “safe harbor provisions” of the DMCA, a service provider must meet all the requirements of the law. One of these requirements is that the service provider must designate an agent to receive notifications of claimed infringements. The contact information for the designated agent must be sent to the Copyright Office and must be posted on the service provider’s website in a location accessible to the public. The one page forms created for this purpose can be found on the Copyright Office website, but service providers may use their own form as long as it includes all of the required information.  Complying with this designation of agent requirement is not rocket science. However, failing to comply may set off unnecessary and expensive fireworks. Continue Reading OSPs: Are You Sure You Are Safely Within the DMCA Safe Harbor?

Written by: Susan Neuberger Weller

When you think of The Hershey Company, you think of delicious chocolate candy bars, chocolate kisses, and a fabulous amusement park in Hershey, Pennsylvania. The company’s brown candy bar wrappers with the HERSHEY’S trademark prominently displayed on the front have been in use since, at least, 1905, and the company owns numerous US trademark registrations for this version of this mark for candy and other products. However, Hershey is not so sweet on a Maryland State Senator Steve Hershey’s chocolate-colored campaign signs which, it claims, bear a striking resemblance to its famous trademark and trade dress, and has filed suit against the Senator for trademark infringement and related claims. A side-by-side comparison of the Hershey trademark and Senator Hershey’s chocolate-colored campaign signs are displayed in the Complaint and in connection with an article in The Baltimore Sun newspaper. Continue Reading Hershey Is Not So Sweet on Maryland Senator’s HERSHEY Campaign Logo

Written by: Susan Neuberger Weller

A federal jury in New York has found Agence France-Presse and Getty Images Inc. willful in their infringement of Daniel Morel’s copyrights in eight photographs of the 2010 Haiti earthquake, and ordered them to pay damages of $1.2 million. The court had already found AFP  liable for direct copyright infringement on summary judgment, but sent to the jury for disposition the issue of whether Getty’s affirmative defenses vitiated any liability for infringement. The jury was also asked to decide whether any infringement by either Defendant was willful. In addition, the jury awarded Morel $20,000 after finding that the two Defendants also violated the Digital Millennium Copyright Act.

Continue Reading Willful Infringement of Copyright in Haitian Earthquake Photographs Cost AFP and Getty $1.2 Million

Written by: Joseph M. DiCioccio

Following up on a previous post regarding the lawsuit winding its way through federal court seeking clarity on whether the music publisher Warner Chappell owns or has the exclusive right to license the copyright in the ubiquitous “Happy Birthday to You” song, U.S. District Judge George H. King (Central District of California) has ordered that certain tangential claims be stayed until further notice, while the case will move forward on the central claim, essentially whether Warner’s copyright in the song is valid and enforceable or not.

Continue Reading Court Narrows Claims Surrounding “HAPPY BIRTHDAY TO YOU” Copyright Suit

Written by: Joseph M. DiCioccio

The United States Intellectual Property Enforcement Coordinator Victoria Espinel recently blogged about a new effort to combat online piracy of intellectual property.  The broad-based effort attempts to leverage the participation of several large internet/publishing companies (Google, Yahoo, Microsoft, AOL and Condé Nast), advertising networks (24/7 Media, Adtegrity) and the Interactive Advertising Bureau.  The parties have agreed to voluntarily adopt a set of best practices to remove advertising from websites that are primarily engaged in copyright piracy (movies, video games, music, books, etc.) or selling counterfeit goods.

Continue Reading Google, Yahoo, and Ad Networks Agrees to Set of Best Practices to Combat Online Piracy

Written by: Joseph M. DiCioccio

Ownership of a copyright in one of the most popular songs in the English language has recently been challenged in several lawsuits around the country.  At the heart of the dispute is whether the music publisher Warner Chappell legitimately owns a copyright in, and thus has the right to license (and enforce) the rights to, the ubiquitous song “Happy Birthday to You.”  Since it acquired a company in 1998 that claimed to own the rights in this song, some have estimated that Warner makes as much as $2M per year licensing the rights to use this song in various movies and television shows.  Two recently filed lawsuits are challenging this ownership claim and seek a ruling that the rights to the song have passed into the public domain.


Written by: Susan Neuberger Weller

 The Tenebaum copyright infringement file sharing case, about which we first reported in an earlier blog, reached another milestone this week when the First Circuit upheld the jury’s $675, 000 damages award. Tenenbaum had been found liable for illegally downloading 30 songs and a jury awarded statutory damages of $22, 500 for each song infringed. The award was appealed on grounds that it was so large that it violated Tenenbaum’s constitutional right to due process of law.

 The court analyzed the function and purpose for statutory damages under the Copyright Act, which are to provide “reparation for injury” and  “to discourage wrongful conduct.” The court rejected Tenebaum’s argument that the amount of the award violated due process because it was not tied to the actual injury that he caused, stating that such an argument disregarded the intended deterrent effect of statutory damages. Moreover, the award of $22, 500 per song was only 15% of the maximum award possible for willful copyright infringement and even less than the maximum award for non-willful violations. Accordingly, the court held that the jury’s award did not violate the Constitutional right to due process and the judgment was affirmed.

Unless this decision is appealed to the US Supreme Court, this dispute is concluded. It is unlikely the Court would review any such appeal since review of similar cases have previously been declined.

If It Involves Your Customer, It Could be Your Problem Too

Written by: Susan Neuberger Weller

Right on the heels of our blog on trademarks and contributory infringement, comes a case in which the court refused to dismiss a claim against Amazon for sales by third parties of allegedly infringing photographs on its site. The case, Masck v. Sports Illustrated, et al., involves multiple claims against multiple parties for copyright infringement based upon the unlawful reproduction of a famous photograph of Desmond Howard taken on November 23, 1991 during a football game between the University of Michigan Wolverines and the Ohio State Buckeyes. Howard, after running back a punt for a Michigan touchdown, struck what is now known as “the Heisman pose” just before crossing into the end zone. Plaintiff Masck took a photograph of Howard in this pose and sent it to Sports Illustrated, which paid Masck for use of the photograph in a 1991 SI article about Howard, for which he was properly credited. The negative for the photograph was never returned to Masck.

Since that time, Masck became aware of many unauthorized uses of the photograph by various third parties, and eventually brought suit for copyright infringement and other claims. Included among those claims were claims for vicarious and contributory copyright infringement against Amazon for allowing third-party sales of infringing photographs on its site. Amazon moved to dismiss the claims on grounds that it had neither the ability to supervise the sale of infringing photos on its site nor an obvious direct financial interest in the sale, emphasizing that as an “e-commerce platform provider” through which thousands of sellers posted thousands of items for sale, it had no “practical ability” to assess which of those items may or may not be infringing.

As with trademarks, a claim for vicarious copyright infringement requires that the alleged infringer have the “right and ability to supervise the infringing conduct” and has “an obvious and direct financial interest in the infringement.” If these facts are demonstrated, liability may exist even in the absence of actual knowledge of the infringement. On the facts alleged in this case, the court dismissed the vicarious infringement claim for Plaintiff’s failure to demonstrate that Amazon had the ability to supervise the infringing conduct.

However, the court refused to dismiss the contributory infringement claim against Amazon. Contributory infringement occurs when one “with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.” Since the photographer Masck had specifically requested that Amazon take down the infringing merchandise, the court found that Amazon had knowledge of the infringing activity and yet continued to sell or allow the sale of the merchandise nonetheless. The court stated that selling the infringing merchandise is a material contribution to the direct copyright infringement so that the claim would not be dismissed.

The lesson here is never to ignore an allegation that you are in some way involved, directly or indirectly, with conduct considered to be an infringement of another’s intellectual property rights. Such a claim should be vetted by competent counsel so appropriate steps can be taken, if necessary, to address the issue promptly and thoroughly. Moreover, ignorance is not always bliss where a direct financial interest in activities subject to your supervision and control are present. We will keep you posted on further developments in this case.