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Copyright Cases

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  • Infringement Defense.
    Successfully defended MasterCard and its agency, McCann-Erickson USA, by obtaining a summary judgment against claim that commercials featuring two friends visiting all Major League Baseball ballparks infringed a documentary showing visits to three ballparks to illustrate their economic benefits to a community that builds a downtown baseball stadium. Hoch v. Mastercard Int'l Inc., 284 F. Supp. 2d 1217 (D. Minn. 2003).

Apparel
  • Infringement Claim
    In a matter of first impression, the Sixth Circuit reversed the district court and held that our client, Varsity Brands, could have valid copyrights in its cheerleading uniforms graphic designs holding that they were conceptually separable from the garments because they did not enhance the uniform’s functionality as clothing that covers the body, permits free movement and wicks moisture. It rejected the view of a dissenter that the designs were not separable from the function of identifying the wearers as cheerleaders. Varsity Brands, Inc. v. Star Athletica, LLC, 115 U.S.P.Q.2d 1773 (6th Cir. 2015).  This decision was affirmed by the United States Supreme Court.  Varsity Brands, Inc. v. Star Athletica, LLC, No. 15-866 (Supp. Ct. 2017).
  • Infringement Defense.
    Negotiated a favorable settlement for defendants during a mediation involving a “mug shot” photo of rap performer Machine Gun Kelly which allegedly had been used on t-shirts without authorization. Calmese v. Live Nation, 14 Civ 334 (S.D.N.Y. 2014).
  • Infringement Defense.
    In a copyright infringement action on a graffiti-inspired t-shirt design, obtained summary judgment dismissing the case with prejudice, an award of attorneys fees, and an order requiring plaintiff to post an appeal bond, which order was affirmed on appeal. Figure Eight Holdings, LLC v. Dr. Jays, Inc., Wicked Fashions et al., 10-CV-07828 (AJW) (CD Calif. 2011), appeal, No. 12-56215 (9th Cir. 2013).
Jewelry
  • Infringement Claim.
    Settled on favorable terms a litigation alleging that copyrighted jewelry designs of our client, J. Crew, had been infringed by Walmart and its fashion accessories supplier. J. Crew International, Inc. v. F.A.F. Inc. and Wal-Mart Stores, Inc., 1:15-cv-8375 (S.D.N.Y. 2016).
Motion Pictures
  • Infringement Defense.
    In a case that began in 2002 and was appealed to the Second Circuit twice, obtained summary judgment in favor of our clients Universal Pictures, Imagine Entertainment and Eddie Murphy that their 1999 film Life did not infringe any protectable elements of a play entitled No Harm, No Foul. Hudson v.Universal Pictures Corp., 89 U.S.P.Q. 2d 1132 (S.D.N.Y. 2008).

Music
  • Infringement Claim.

  • In a matter of first impression, New York Supreme Court applied the six year statute of limitations, rather than the three year period applied in previous cases, in granting summary judgment that the defendant restaurant had violated our client’s common law copyright by the unlicensed uploading and playing of a 1970 sound recording of “The Rumor” by The Band. Capitol Records, LLC v. Harrison Greenwich, LLC d/b/a/ The Harrison, 44 Misc 3d 202 (N.Y. Sup. CT. 2014), amended by, 44 Misc. 3d 428 (N.Y. Sup. Ct. 2014).

  • Infringement Claim.

  • Obtained a Statutory Damages award of $535,125 plus interest, and a permanent injunction, against a video game company for willfully infringing the copyrights in seven sound recordings by including them in the Rapstar videogame and making them available as additional downloads.  EMI April Music Inc. v. 4MM Games, LLC, 12 Civ. 2080 (DLC) (S.D.N.Y. 2014).

  • Infringement Claim.
    Obtained summary judgment that the business of implementing the re-sale of lawfully owned digital music files from one purchaser to another infringed the record company’s exclusive reproduction and distribution rights, was not excused by the fair use defense or the first sale doctrine, and resulted in direct, contributory and vicarious liability. Capitol Records, LLC v. ReDigi Inc., 12 Civ. 95 (RJS) (S.D.N.Y. 2013).  More recently, the founders of ReDigi claimed they had no individual liability, and the Court denied their motion to dismiss. 12 Civ. 0095 (RJS) (S.D.N.Y. 2014).  This case was settled without trial for a damage award of US$3.5 million.  RiDigi’s appeal of the summary judgment was argued to the Second Circuit in August 2017 and awaits decision.

  • Ownership and Infringement Claims.
    Service as Special Master in five consolidated cases, to make report and recommendation to United States District Court for the resolution of numerous conflicting claims with respect to 468 musical compositions on issues of copyright ownership and infringement. Latin-American Music Co., Inc. v. Archdiocese of San Juan, 194 F. Supp. 2d 30 (D.P.R. 2001).

  • Infringement Claim.
    Successfully represented defendant Uptown Records in a copyright infringement suit brought by the estate of the late jazz artist, Charles Mingus. Settled. Jazz Workshop, Inc. v. Uptown Records, No. 01 Civ. 3029 (S.D.N.Y 2001).

  • Infringement Claim.
    Successfully represented Recording Industry of America and all major record companies in copyright infringement case against major MP3 link site on the Internet. The case represented the recording industry's first effort to sue the owner of a website that provided links to sites from which users could download infringing copies of sound recordings. Settled in 2001. Arista Records, Inc. v. MP3Board, Inc., No. 00 Civ. 4660 (S.D.N.Y. 2000).

Oriental Carpets
  • Infringement Claim.
    On appeal, obtained unanimous reversal establishing that a modified version of antique Persian and Indian design elements in an oriental-style carpet were protectable and infringed. Tufenkian v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003).

Publishing
  • Infringement Defense

    Successfully defended copyright infringement claim concerning the alleged unlicensed reproduction of a number of stock images.  The court in a 36 page decision granted summary judgment to our client on all images except for two on the ground, among others, that the technical requirements for a “group” copyright registration had not been met.   After the Copyright Office denied applications to register these two works on a different basis, the Court granted our client’s motion to alter the judgment to dismiss those claims with prejudice, ending the case.   Palmer/Kane LLC v. Rosen Book Works LLC d/b/a Rosen Publishing Group, Inc., 15-cv-7406 (S.D.N.Y. 2017).

  • Infringement Defense
    One aspect of a complicated and protracted dispute involving a claim that our client Merkos infringed the copyright owned by Vaad when Merkos published an edited version of the thirty-nine volumes of the Likkutei Sichos, the collected talks given by the Lubavitcher Rebbe Schneerson. We persuaded the Eastern District of New York to issue a summary judgment dismissing Vaad’s complaint, except for a disputed issue of fact as to a single related work, on the ground that Vaad was not the author under work for hire principles so its copyright registration was invalid. Vaad L’Hafotzas Sichos, Inc. v. Krinsky, No. 11-CV-5658 (E.D.N.Y. 2015).

  • Infringement Defense.
    Obtained a summary judgment holding that defendant’s book’s quotation of 95 words from plaintiff’s book, with attribution, was too de minimis to support a claim of copyright infringement, both nonfiction books about the serial killer known as the “Cleveland Strangler.” Newton v. Penguin/Berkley Publishing USA, 13 Civ. 1283 (CM) (S.D.N.Y. 2014).

  • Infringement Defense.
    Obtained decision by the New York Court of Appeals on a question certified to it by the Second Circuit Court of Appeals: The Court held that “in copyright infringement cases involving the uploading of a copyrighted printed literary work onto the Internet,” the place of the “injury” for purposes of determining personal jurisdiction over non-residents under New York’s long-arm statute, CPLR 302(a)(3)(ii), is the “location of the principal place of business of the copyright holder,” not the location of the out-of-state infringing action. Penguin Group (USA) Inc. v. American Buddha, 2011 WL 1044581 (NY Court of Appeals, March 24, 2011), question certified, Penguin Group (USA) Inc. v. American Buddha, 609 F. 3d 30 (2d Cir. June 15, 2010).

  • Termination Defense.
    In an important copyright case, we persuaded the Second Circuit Court of Appeals to reject the claim of John Steinbeck's son and granddaughter that they had terminated the publishing rights of our client, Penguin Group, under a 1938 publishing agreement. The Circuit Court reversed because it found that the 1938 agreement had been 'cancelled and superseded' by a 1994 agreement providing substantially improved economic benefits and controls to the author's wife (since deceased), so there was no existing pre-1978 agreement subject to the Section 304(d) termination right. Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008), cert. denied, 2009 WL38199 (U.S. Sup. Ct. 2009).

  • Infringement Defense.
    Successfully defended as fair use a book publisher accused of infringing the copyrights in Grateful Dead Posters by including reduced-size images of them scattered among hundreds of other images in 480 page volume. Affirmed on appeal. Bill Graham Archives, LLC v. Dorling Kindersley Ltd., 78 U.S.P.Q. 2d 1764 (2d Cir. 2006), Affirming; 2005 WL 1137878 (S.D.N.Y. 2005).

  • Royalty Defense.
    Obtained affirmance of a summary judgement for publisher dismissing authors' breach of contract complaint, holding that publisher's transfer of software agreement with third party to produce electronic version of authors' tax treatise was not transfer of 'right in the work' triggering royalty under publishing agreement. Postlewaite v. McGraw-Hill, 2004 WL 414832 (S.D.N.Y. 2004), aff'd 411 F.3d 63 (2d Cir. 2005).

  • Infringement Defense.
    Obtained a decision vacating a permanent injunction against publisher's distribution of Dorothy Parker: Complete Poems, reversing summary judgment, and remanding to deistrict court, holding that plaintiff's creativity, if any, in compilation of Parker's previously-uncollected poems was too slight, under any circumstances, to support copyright injunction against publisher's complete-poems compilation that included a separate section of the uncollected poems. Silverstein v. Penguin Putnam, Inc., 368 F.3d 77 (2d Cir. 2004).

    On remand, the District Court found for publisher on all claims, dismissed the complaint, and entered judgment in favor of defendant, holding that plaintiff's selection process lacked protectable creativity. Silverstein v. Penguin Putnam, Inc., No. 01 Civ. 309 (S.D.N.Y. 2007).

  • Infringement Claim.
    Successfully represented publisher of UK based newsletter, Clinica Medical Device and Diagnostic News, in a copyright infringement action claiming that a competing US newsletter, Medical Device Daily, substantially copied more than 75 articles and misappropriated 'hot news' from our client's publication. Settled in 2003 after several weeks of arbitration. PJB Publications, Inc. v. American Health Consultants and Thomson Corporation, No. 02 Civ. 4637 (S.D.N.Y. 2002).

  • Infringement Claim.
    Successfully represented the copyright owner of English translations of Hebrew Prayers in a copyright infringement action. Plaintiff secured a preliminary injunction, affirmed on appeal. Merkos L'Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc., 312 F.3d 94 (2d Cir. 2002) Thereafter, on plaintiff's motion, the court held defendant in contempt and awarded plaintiff $120,000 in attorney's fees. Merkos L'Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc., 01 CV 7406, 2004 U.S. Dist. LEXIS 22637 (E.D.N.Y. 2000). Ultimately, the court entered a Final Judgment on Consent enjoining defendant from reproducing the copyrightable elements of plaintiff's prayer books.

  • Counterfeiting Claim.
    Successfully represented publisher of religious works in claim of copyright infringement against counterfeiters. Obtained preliminary and permanent injunctive relief and seizure of over 20,000 infringing volumes. Merkos L'Inyonei Chinuch, Inc. v. John Does Nos. 1-25, 172 F. Supp. 2d 383 (E.D.N.Y. 2001).

  • Breach of Contract; Infringement Claim.
    Successfully represented a book publisher against an author for breach of an author/publisher agreement and for copyright infringement based upon the author's unauthorized publication of a book. A jury trial resulted in a verdict for injunctive relief and damages. Regnery Publ. v. Ellison, 1996 U.S. App. LEXIS 34018 (2d Cir. 1996).

  • Infringement Defense.
    Obtained summary judgment dismissing complaint in copyright infringement suit against author and publishers of books Princess and Princess Sultana’s Daughters, including recovery of full amount of attorney’s fees for successful defense of copyright claim. Adsani v. Miller, 1996 WL 194326 (S.D.N.Y. 1996) and 1996 WL 531858 (S.D.N.Y. 1996).

  • Infringement Defense.
    Successfully defended copyright infringement suit against the book and movie Jurassic Park. Williams v. Crichton, 84 F.3d 581 (2d Cir. 1996), aff’d, 860 F. Supp. 158 (S.D.N.Y. 1994).

  • Infringement Defense.
    Successfully defended copyright infringement suit in leading Second Circuit case on defense of “fact” estoppel. Arica Inst., Inc. v. Palmer and Harper & Row Publishers, 970 F.2d 1067 (2d Cir. 1992).

  • Infringement Defense.
    Successfully defended against copyright infringement claim under compilation copyrights in classified telephone directories. BellSouth Advertising & Publ’g Corp. v. Donnelley Info. Publ’g, Inc., 999 F.2d 1436 (11th Cir. 1993).

Software
  • Fair Use Claim.
    Counsel to plaintiff videogame producer in action for copyright infringement based on defendant's intermediate copying of computer software for reverse engineering. Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000), cert. denied, 531 U.S. 871 (2000).

  • Infringement Defense.
    Successfully represented defendant, a Canadian software company, against a preliminary injunction motion in action for copyright infringement based upon the look and feel of computer screen displays. Settled. Blue Ocean Software, Inc. v. Track Man Help Desk Software, Inc. and Help Star.com, Inc., No. 8:01CV1365 T 24 (M.D. Fla. 2002).

  • Infringement Defense.
    Successfully represented defendant in an action for copyright infringement and breach of a software license agreement involving a license for a software toolkit used for creating digital images captured on a personal computer from a television input. Settled. Accusoft Corp. v. Hauppauge Digital, Inc., No. 01 Civ. 40101 (D. Mass. 2001).

Toys
  • Infringement Defense.
    Successfully defended a toy company in a copyright infringement action concerning the design of a dinosaur board game. Defendant’s motion for summary judgment was granted and affirmed on appeal. Hofmann v. Pressman Toy Corp., 790 F. Supp. 498 (D.N.J. 1990), aff’d, 947 F.2d 935 (3d Cir. 1991), cert. denied, 503 U.S. 963 (1992).

Prior results do not guarantee a similar outcome.

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