Intellectual Property and Tech Law Reports

Birdgeport Music, Inc. v. WB Music Corp.

Plaintiff-Appellant Bridgeport Music, Inc. (“Bridgeport”) appeals from the district court’s order awarding attorneys’ fees and costs to Defendant-Appellee Universal-Polygram International Publishing, Inc. (“UPIP”) as a prevailing party under 17 U.S.C. § 505. This court had vacated an earlier award of fees and costs to UPIP and remanded to the district court for further consideration. Bridgeport Music, Inc. v. Rhyme Syndicate Music, 376 F.3d 615 (6th Cir. 2004). On remand, the district court awarded the same amount of fees and costs to UPIP. Bridgeport argues that the district court abused its discretion. For the reasons set forth below, we affirm.

Download the decision.

Jada Toys, Inc. v. Mattel, Inc.

Defendant-Appellant Mattel, Inc. (“Mattel”) appeals the grant of summary judgment in favor of Jada Toys, Inc. (“Jada”) on Mattel’s federal and state trademark infringement counterclaims. Mattel also challenges the district court’s entry of summary judgment in favor of Jada as to its dilution and copyright claims.

We hold that because the district court erred in its application of the relevant infringement test, the district court’s entry of summary judgment in Jada’s favor as to those claims is reversed. We also hold that genuine issues of material fact exist as to Mattel’s copyright and dilution claims and, therefore, the district court’s entry of summary judgment as to those claims in favor of Jada is also reversed.

Download the decision.

Riviera Distribs., Inc. v. Jones

Riviera came to the wrong forum. Agreements such as the one between Riviera and Midwest are designed to reduce the price tag of decision-making. By filing another suit, Riviera forced Midwest to bear the very expenses that the parties had agreed to avoid. The party responsible for creating excessive legal costs must bear them itself in the end.

This conclusion makes it unnecessary to discuss the parties’ other disputes, such as whether by filing a second suit Riviera entitled Midwest to an award under 28 U.S.C. §1927.

The judgment is reversed, and the case is remanded for an award of reasonable attorneys’ fees to Midwest under 17 U.S.C. §505. The award should include the legal fees that Midwest has incurred to vindicate its rights on appeal.

Download the decision.

Dudnikov v. Chalk & Vermilion Fine Arts, Inc.

Plaintiffs are eBay “power sellers.” Through the Internet auction site, they sell a variety of fabrics from their home in Colorado. This case concerns two of plaintiffs’ prints, both of which play on famous images by the artist Erté, Symphony in Black and Ebony on White. While Erté’s images depict elegant women walking aquiline dogs, plaintiffs’ prints portray Betty Boop next to her aptly named canine companion, Pudgy.

Defendants, owners of the rights to the Erté images, saw plaintiffs’ eBay auction page (which disclosed plaintiffs’ Colorado location), and came to the conclusion that plaintiffs’ prints infringed their copyrights. Defendants promptly contacted eBay in California and successfully suspended plaintiffs’ auction, an action that allegedly had adverse consequences for plaintiffs’ business and future dealings with the auction site. By e-mail, defendants also threatened plaintiffs with suit in federal court. Before defendants could carry out that threat, however, plaintiffs initiated this action in federal district court in Colorado seeking a declaratory judgment that their prints do not infringe defendants’ copyrights. Defendants responded with a motion to dismiss, arguing that the court lacked personal jurisdiction over them. The district court concurred and dismissed plaintiffs’ complaint. For reasons we explore below, we reverse.

Download the decision.

US v. Chalupnik

BMG Columbia House (“BMG”) sells CDs and DVDs by mail. Many BMG discs prove to be undeliverable. During the time in question, BMG arranged with the United States Postal Service (“USPS”) to gather and discard undeliverable discs, as it was less costly for BMG to produce replacement discs than to pay for the return and restocking of undeliverable discs. James Chalupnik, a janitorial supervisor at the downtown post office in Fargo, North Dakota, took several thousand undeliverable CDs and DVDs from the post office trash and sold them to used record stores. Initially charged with felony mail theft, Chalupnik pleaded guilty to misdemeanor copyright infringement in violation of 17 U.S.C. § 506(a) and 18 U.S.C. § 2319(b)(3). The district court sentenced Chalupnik to two years probation and ordered him to pay BMG restitution in an amount equal to his documented sales proceeds, $78,818. Chalupnik appeals the restitution award. We conclude that the government failed to prove the amount of loss to BMG proximately caused by Chalupnik’s offense. Accordingly, we vacate the restitution award and remand for resentencing.

Download the decision.

NCR Corp. v. Korala Assocs. Ltd.

Plaintiff NCR Corporation (“NCR”) appeals the order of the district court1 compelling NCR and defendant Korala Associates Ltd. (“KAL”) to arbitrate NCR’s claims against KAL, pursuant to 9 U.S.C. § 2062, part of Chapter 2 of the Federal Arbitration Act, see 9 U.S.C. § 201, et seq., which implements the United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards, June 10, 1958, 21 U.S.T. 2517, 330 U.N.T.S. 38.

Download the decision.

Leadsinger, Inc. v. BMG Music

This case requires us to determine how the Copyright Act, 17 U.S.C. §§ 101-1332, applies to karaoke devices that enable individuals to sing along to recordings of musical compositions, which is a matter of first impression in this circuit. In the district court, Plaintiff-Appellant Leadsinger, Inc., a karaoke device manufacturer, filed a complaint for declaratory judgment against music publishers, Defendants-Appellees BMG Music Publishing and Zomba Enterprises,Inc. (“BMG”). Leadsinger sought a declaration that it is entitled to print or display song lyrics in real time with song recordings as long as it obtains a compulsory mechanical license under 17 U.S.C. § 115, or that it is entitled to do so under the fair use doctrine, 17 U.S.C. § 107. The district court dismissed the complaint without leave to amend for failure to state a claim. We affirm.

Download the decision.

Cambridge Literary Props, Inc. v. W. Goebel Porzellanfabrik G.m.b.H. & Co. Kg.

The district court entered summary judgment for defendants due to plaintiff's failure to meet the Copyright Act's three-year statute of limitations in this dispute over profits from the sale of Hummel figurines and images. Cambridge Literary Properties, Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. & Co. Kg. (Cambridge II), 448 F. Supp. 2d 244 (D. Mass. 2006). We affirm.

Download the decision.

Perfect 10, Inc. v. Amazon.com, Inc.

In this appeal, we consider a copyright owner’s efforts to stop an Internet search engine from facilitating access to infringing images. Perfect 10, Inc. sued Google Inc., for infringing Perfect 10’s copyrighted photographs of nude models, among other claims. Perfect 10 brought a similar action against Amazon.com and its subsidiary A9.com (collectively, “Amazon.com”). The district court preliminarily enjoined Google from creating and publicly displaying thumbnail versions of Perfect 10’s images, Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828 (C.D. Cal. 2006), but did not enjoin Google from linking to third-party websites that display infringing full-size versions of Perfect 10’s images. Nor did the district court preliminarily enjoin Amazon.com from giving users access to information provided by Google. Perfect 10 and Google both appeal the district court’s order. We have jurisdiction pursuant to 28 U.S.C. § 1292(a)(1).

The district court handled this complex case in a particularly thoughtful and skillful manner. Nonetheless, the district court erred on certain issues, as we will further explain below. We affirm in part, reverse in part, and remand.

Download the decision.

JCW Invs., Inc. v. Novelty, Inc.

Tekky Toys won a jury verdict for $575,099.82 on its claim that Novelty, Inc., infringed Tekky’s copyright and trademark on “Pull My Finger Fred,” a farting plush doll; this court affirmed that judgment. See JCW Invs., Inc. v. Novelty, Inc., 482 F.3d 910, 921 (7th Cir. 2007). Thirty days after we entered judgment in Tekky’s favor, it filed a petition for attorneys’ fees, expenses, and costs in the district court. What is presently before us is the petition Tekky filed in this court for an award of appellate attorneys’ fees, expenses, and costs in the amount of $78,037.76.

Download the decision.