Copyright Developments

“ON THE BUBBLE: In a state of uncertainty between two possible outcomes. This phrase is often used in reference to sports teams.” www.idioms.thefreedictionary.com 

With the Stanley Cup just around the corner, this month’s column deals with a recent case from the Eastern District of Pennsylvania, Grondin v. Fanatics, Inc., 2023 U.S. Dist. LEXIS 65897 (E.D. Pa. Apr. 14. 2023), which involves an item of hockey memorabilia called “Slice of the Ice,” a “Lucite sculpture in the approximate shape of the Stanley Cup, with a hockey puck–shaped piece in the center filled with melted ice gathered from the rink used in a prominent hockey game.”  The plaintiff in Grondin alleged that defendant’s competing puck-shaped, water-filled hockey memento infringed his registered copyright in “Slice of the Ice.”  In January, the Court dismissed a first amended complaint with leave to replead, because plaintiff failed to identify a “non-utilitarian, non-commonplace feature of the puck-shaped cavity.”  Plaintiff filed a Second Amended Complaint, alleging in paragraph 22 that the cavity in defendant’s item contained the same amount of water as did his Lucite puck, “such that shifting the position of the puck yields the same wave motion of the water inside.”  Defendant again moved to dismiss, and on April 14 the Court granted that motion with prejudice.   

While the Supreme Court weighs a potentially momentous ruling on fair use, photography and fine art in The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, the Ninth Circuit recently adjudicated a fair use claim involving photographs of hundreds of works by perhaps the only twentieth-century artist even more famous than Warhol: Pablo Picasso.  In De Fontbrune v. Wofsy, 39 F.4th 1214 (9th Cir. 2022) (“Wofsy”), the plaintiff sought to enforce a French judgment against defendant’s unauthorized duplication of over 1400 photographs of Picasso artworks in its so-called “Picasso Project.”  The photos had originally been made by or for plaintiff’s predecessor beginning in the 1930s for an authorized catalogue raisonné of Picasso’s work, the so-called “Zervos Catalogue,” and were held by the French courts to be protectable in their own right as photographs.  Defendant challenged the enforcement of the French judgment in the U.S. on a number of grounds, including the claim that the judgment violated U.S. public policy by imposing liability on activities that would be shielded by the fair use doctrine had they occurred in the U.S.  A California district court agreed, and granted summary judgment to defendant on that basis.

On August 24, 2022 the Central District of California granted defendant’s 12(b)(6) motion to dismiss in Hanagami v. Epic Games Inc., 2022 WL 4007874 (C.D. Cal. Aug. 24, 2022), in which plaintiff Kyle Hanagami claimed that Defendant Epic Games infringed his registered copyright in a choreographic work titled “How Long Choreography.”   

“Bananas are great, as I believe them to be the only known cure for existential dread.”  -- Anne Lamott

On July 7, 2022 the Southern District of Florida denied a motion to dismiss in Morford v. Cattelan, 2022 WL 2466775 (S.D. Fla. July 7, 2022), which began by posing the following question: “Can a banana taped to a wall be art?” At issue was a claim by artist Joe Morford that his sculptural diptych, “Banana & Orange,” allegedly created in 2000 and shown at left below, was infringed by a work entitled “Comedian” by internationally famous artist Maurizio Cattelan, shown at right below. Both works prominently feature a banana affixed to a wall with silver duct tape, though Plaintiff’s banana is plastic and Defendant’s is overripe:

In Acuti v. Authentic Brands Grp. LLC, 33 F.4th 131 (2d Cir. May 4, 2022), the Second Circuit considered an appeal regarding the rights to the musical composition “Can’t Help Falling in Love,” written in part by Hugo Peretti and made popular by Elvis Presley.  The song was created in 1961, under the 1909 Copyright Act, which provided for an initial copyright term of 28 years with a contingent right to renew the copyright for an additional 28-year renewal term.

On March 10, 2022 the Ninth Circuit affirmed a District Court’s vacatur of a jury verdict in Gray v. Hudson, 28 F.4^th 87 (9^th Cir. 2022)(“Gray”), to rule that a repeating eight-note instrumental pattern in Katy Perry’s 2013 hit “Dark Horse” did not infringe two similar patterns in Plaintiff’s 2008 composition entitled “Joyful Noise.”  The decision articulates the current state of Ninth Circuit law regarding the threshold of protectable originality in music infringement cases, and because so many music cases are brought in the Ninth Circuit the ruling will likely be significant to music litigators nationwide.  

In Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., Case No. 20–915, 595 U. S. ____ (2022), the U.S. Supreme Court held that the safe harbor provision provided under § 411(b) of the Copyright Act does not distinguish between a mistake of law and a mistake of fact.  Lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration.

The Supreme Court vacated the judgment of the U.S. Court of Appeals for the Ninth Circuit and remanded the case for further proceedings.

The Copyright Act protects “original works of authorship.” 17 U.S.C. § 102(a) (emphasis added). Courts have uniformly understood “authorship” to refer to a quality that is uniquely “human,” often alluding to the nexus between the human mind and creative expression.  For example, some of the earliest copyright cases defined copyright as “the exclusive right of man to the production of his own genius or intellect.” Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 56 (1884). See also Trade-Mark Cases, 100 U.S 82, 94 (1879) (explaining that copyright law only protects “the fruits of intellectual labor” that are “founded in the creative powers of the mind”).

In dual lawsuits filed on February 7, 2022, the estates of Robin Williams and George Carlin accuse Pandora Media of willfully infringing the legendary comedians’ registered copyrights in their “spoken word compositions” – their standup routines – by streaming the sound recordings that embody those routines without a license for the spoken word works.  Robin Williams Trust v. Pandora Media, LLC, No. 22-cv-815 (C.D. Cal. Feb. 7, 2022); Main Sequence, Ltd. v. Pandora Media, LLC, No. 22-cv-810 (C.D. Cal. Feb. 7, 2022).

In July, we reported on the U.S. Supreme Court’s grant of certiorari in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194 (9^th Cir. 2020) (“Unicolors”) for the October 2021 term, docket no. 20-915.  Briefing was completed in mid-October (briefs can be found at www.scotusblog.com) and oral argument was held November 8 (recording available at www.c-span.org).  This column will describe some of the major issues the Court addressed in that argument, and will identify some questions that are likely to remain open no matter the outcome.