Glacier Films (USA), Inc. v. Turchin

The panel reversed the district court’s order denying plaintiff’s motion for attorney’s fees in a copyright infringement suit.

A film production company sued a user of BitTorrent, a peer-to-peer network, who illegally downloaded and repeatedly distributed a movie. Per the parties’ agreement in a stipulated consent judgment, the defendant stipulated to liability and to statutory damages, and the district court entered a permanent injunction against him.

The panel held that the district court abused its discretion by focusing on its generally unfavorable view of other BitTorrent litigation and failing to faithfully apply the “Fogerty factors” in deciding whether to award attorney’s fees under 17 U.S.C. § 505. The panel remanded the case to the district court.

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American Society for Testing v. Public.Resource.Org, Inc.

Across a diverse array of commercial and industrial endeavors, from paving roads to building the Internet of Things, private organizations have developed written standards to resolve technical problems, ensure compatibility across products, and promote public safety. These technical works, which authoring organizations copyright upon publication, are typically distributed as voluntary guidelines for self-regulation. Federal, state, and local governments, however, have incorporated by reference thousands of these standards into law. The question in this case is whether private organizations whose standards have been incorporated by reference can invoke copyright and trademark law to prevent the unauthorized copying and distribution of their works. Answering yes, the district court granted partial summary judgment in favor of the private organizations that brought this suit and issued injunctions prohibiting all unauthorized reproduction of their works. In doing so, the court held that, notwithstanding serious constitutional concerns, copyright persists in incorporated standards and that the Copyright Act’s “fair use” defense does not permit wholesale copying in such situations. The court also concluded that the use of the private organizations’ trademarks ran afoul of the Lanham Act and did not satisfy the judicial “nominative fair use” exception. Because the district court erred in its application of both fair use doctrines, we reverse and remand, leaving for another day the far thornier question of whether standards retain their copyright after they are incorporated by reference into law.

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Allen v. Cooper

Frederick Allen, a videographer, and Nautilus Productions, LLC, Allen’s video production company, commenced this action, which, at its core, alleges that North Carolina, its agencies, and its officials (collectively, “North Carolina”) violated Allen’s copyrights by publishing video footage and a still photograph that Allen took of the 18thcentury wreck of a pirate ship that sank off the North Carolina coast. Allen and Nautilus obtained the rights to create the footage and photograph through a permit issued by North Carolina to the ship’s salvors, and Allen subsequently registered his work with the U.S. Copyright Office. Allen and Nautilus also seek to declare unconstitutional a 2015 state law — N.C. Gen. Stat. § 121-25(b) (providing that photographs and video recordings of shipwrecks in the custody of North Carolina are public records) — which Allen and Nautilus claim was enacted in bad faith to provide the State with a defense to their federal copyright infringement action.

North Carolina filed a motion to dismiss under Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6), asserting sovereign immunity under the Eleventh Amendment, qualified immunity, and legislative immunity. North Carolina’s claim of sovereign immunity prompted Allen and Nautilus to argue (1) that in a 2013 Settlement Agreement, North Carolina waived sovereign immunity; (2) that in any event the federal Copyright Remedy Clarification Act of 1990 had abrogated the State’s sovereign immunity; and (3) that as to their claims for injunctive relief, Ex parte Young provided an exception to sovereign immunity for ongoing violations of federal law. The district court rejected North Carolina’s claims of immunity, and North Carolina filed this interlocutory appeal. Allen and Nautilus filed a cross-appeal. For the reasons that follow, we reverse and remand with instructions to dismiss with prejudice the claims against the state officials in their individual capacities and to dismiss without prejudice the remaining claims.

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Close v. Sotheby's, Inc.

The panel affirmed in part and reversed in part the district court’s dismissal of claims for resale royalties under the California Resale Royalties Act, which grants artists an unwaivable right to 5% of the proceeds on any resale of their artwork under specified circumstances.

Affirming the dismissal in part, the panel held that plaintiffs’ CRRA claims concerning sales that postdated the 1976 Copyright Act’s effective date of January 1, 1978, and thus were covered by the 1976 Act, were expressly preempted by 17 U.S.C. § 301(a).

Reversing in part, the panel held that CRRA claims concerning sales that occurred between the CRRA’s effective date of January 1, 1977, and the 1976 Act’s effective date of January 1, 1978, were not expressly preempted, nor were they preempted by conflict preemption. The panel remanded those claims to the district court for further proceedings.

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Experian Information Solutions, Inc. v. Nationwide Marketing Services, Inc.

The panel affirmed in part and reversed in part the district court’s summary judgment in favor of the defendant in a copyright case.

Plaintiff Experian Information Systems, Inc., compiled the ConsumerView Database, which contains more than 250 million records, each pertaining to an individual consumer. The database includes compiled pairings of names and addresses.

Affirming in part, the panel held that the name and address pairings were copyrightable as compilations but were entitled only to limited protection under the copyright laws. The panel held that Experian failed to show that its copyright was infringed because it did not establish a bodily appropriation of its work.

Reversing the district court’s grant of summary judgment on a state law trade secret claim, the panel held that, if proper safeguards were maintained, then Experian’s lists could be protected as trade secrets under Arizona law. The panel concluded that there were triable issues of fact as to the defendant’s knowledge of misappropriation. The panel remanded for further proceedings on the trade secret claim.

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Cortes-Ramos v. Martin-Morales

This case concerns Luis Adrián Cortés-Ramos' appeal from a District Court order that dismissed his claims that the singer Enrique Martin-Morales violated various articles of the Puerto Rico Civil Code and federal copyright and trademark laws. The suit arises in connection with a songwriting contest held in Puerto Rico in 2014.

For purposes of this appeal, Cortés-Ramos does not dispute that, as a contestant, he agreed to the terms of the contest's rules and that they included an arbitration provision that compelled the submission to arbitration of those of his claims that "aris[e] in connection with, touch[e] upon or relat[e] to" those rules. He contends, though, that the District Court erred in granting Martin's motion to dismiss his claims based on that arbitration provision.

We agree with Cortés-Ramos. We therefore reverse the order dismissing his claims pursuant to Federal Rule of Civil Procedure 12(b)(6).

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Stevens v. CoreLogic, Inc.

The panel affirmed the district court’s grant of summary judgment in favor of CoreLogic, Inc., on professional real estate photographers’ claims that CoreLogic removed copyright management information from their photographs and distributed their photographs with the copyright management information removed, in violation of 17 U.S.C. § 1202(b)(1)-(3), a part of the Digital Millennium Copyright Act.

The photographers alleged that CoreLogic’s Multiple Listing Services software removed copyright management information metadata from their photographs. The panel held that § 1202(b) requires a showing that the defendant knew the prohibited act would “induce, enable, facilitate, or conceal” infringement. The panel concluded that the photographers did not offer evidence to satisfy this mental state requirement because they did not provide evidence from which one could infer that future infringement was likely, albeit not certain, to occur as a result of the removal or alteration of copyright management information.

The panel affirmed the district court’s rulings regarding discovery and costs.

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Alliance for Water Efficiency v. Fryer

James Fryer and the Alliance for Water Efficiency set out to produce a study about drought. Unfortunately, the collaboration ran dry, and the Alliance sued Fryer under the Copyright Act, 17 U.S.C. §§ 101 et seq. The lawsuit proved to be far less troublesome than the ensuing settlement. While the parties were supposed to part ways and publish their own reports, they instead find themselves in the fourth year of protracted litigation.

The parties’ disputes center on their obligations under the settlement. Years ago the district court ordered Fryer to turn over certain data sets to the Alliance and refrain from acknowledging a number of organizations in his study. On appeal we reversed solely on the acknowledgment issue. Alliance for Water Efficiency v. Fryer, 808 F.3d 1153 (7th Cir. 2015). Fryer then returned to the district court and sought restitution for injuries caused by the court’s erroneous injunction. He also moved for attorney’s fees under § 505 of the Copyright Act for having prevailed in the first appeal. A magistrate judge denied both motions and Fryer appealed.

We affirm. Fryer does not present genuine claims for restitution; he seeks to relitigate unrelated claims for breach of the settlement. His request for attorney’s fees is also unsuccessful because he did not prevail on the Alliance’s copyright claim as § 505 requires. The parties compromised their positions, obtained some relief, and walked away from the underlying lawsuit. At no time has any court entered judgment on the Alliance’s copyright claim.

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Wilson v. Dynatone Publishing Co.

Plaintiffs appeal from the dismissal of their suit by the United States District Court for the Southern District of New York (Paul A. Engelmayer, District Judge). Plaintiffs John Wilson, Charles Still, and Terrance Stubbs are former members of a musical group called “Sly Slick & Wicked.” They claim authorship of, and ownership of the renewal term copyrights in, the musical composition and sound recording of a song entitled “Sho’ Nuff,” pursuant to 17 U.S.C. § 304(a)(3)(A) & (B). Plaintiffs brought this action alleging that Defendants, Dynatone Publishing Company, UMG Recordings, Inc., and Unichappell Music, Inc., collected royalties from the sampling of Sho’ Nuff in 2013, during the renewal terms, and that Plaintiffs were entitled to those royalty payments. The district court granted Defendants’ Rule 12(b)(6) motion to dismiss for untimeliness. We AFFIRM the dismissal of Plaintiffs’ state law accounting claim and otherwise VACATE the judgment and REMAND to the district court.

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Fahmy v. Jay-Z

The panel affirmed the district court’s grant of judgment as a matter of law in favor of rapper Jay-Z and other defendants on copyright infringement claims brought by the heir to Egyptian composer Baligh Hamdy’s copyright in a 1957 arrangement of the song Khosara.

Jay-Z used a sample from the arrangement in the background music to his hit single Big Pimpin’.

The district court held that the heir, Osama Ahmed Fahmy, lacked standing to bring the copyright claims. First, the district court held that Egyptian law recognizes a transferable right of “adaptation,” such that when Fahmy transferred “all” of his economic rights to Mohsen Mohammed Jaber in a 2002 agreement, the transfer included the right to create derivative works adapted from Khosara. The district court concluded that the right of adaptation is an economic right under Egyptian law, not an inalienable moral right. Second, the district court held that the conveyance of rights contained in the 2002 agreement complied with the requirements of Article 149, the Egyptian law governing the transfer of economic rights. Accordingly, the 2002 agreement successfully conveyed a right of adaptation of Khosara to Jaber. Third, a reservation of rights found at the end of the 2002 agreement referred to the right to receive royalties, and thus did not confer standing on Fahmy to bring a claim of copyright infringement.

Affirming, the panel concluded (1) that Egyptian law recognizes a transferable economic right to prepare derivative works; (2) that the moral rights Fahmy retained by operation of Egyptian law were not enforceable in U.S. federal court; and (3) that, even if they were, Fahmy had not complied with the compensation requirement of Egyptian law, which did not provide for his requested money damages, and which provided for only injunctive relief from an Egyptian court. The panel held that the district court properly interpreted the 2002 agreement as conveying to Jaber the economic right to create derivative works. In addition, the fact that Fahmy retained the right to royalties did not give him standing to sue for copyright infringement.

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