The Stream Runs Downhill: Part 3

Today we will conclude our overview of the court's four-part decision in the Hearst v. Aereo copyright infringement case. If you recall, last week we concluded with the court's denial of Hearst's final two claims.

The court then turned to the question of whether Hearst had adequately shown that irreparable harm would be caused absent an injunction, and found that it had not. Hearst first claimed that allowing Aereo to continue its streaming service would leave Hearst unable to maintain its negotiating position in regards to the sale of rebroadcasting rights and the pursuit of other streams of revenue. While the court conceded that Aereo’s service might, in time, weaken Hearst’s ability to negotiate with rebroadcasters, it also noted that because these contracts were only re-negotiated every few years, rather than constantly, that the irreparable harm would likely not occur before the litigation ran its course, making a preliminary injunction unnecessary for preventing this damage.

Hearst next claimed that there would be irreparable harm to its advertising revenue, as advertising rates were based on viewership ratings, and those ratings did not measure those viewers who used streaming services such as Aereo. The court noted that Nielsen, the foremost ratings agency, had recently begun to count online viewers as part of its ratings, and thus ruled that Hearst had not shown irreparable harm from that source either. Finally, the court ruled that Hearst’s claim that Aereo’s service would harm Hearst’s efforts to create its own online streaming service was defective as well, as Hearst’s plans for such a service were too inchoate to be irreparably harmed at this time.

Having failed the first two prongs of the preliminary injunction test, the final two factors were more perfunctory than dispositive. The court, in two paragraphs, noted that the balance of harm does not appear to clearly favor either party, and the public interest similarly “cuts both ways.” In the end, it found that neither factor did much to change its earlier conclusions, and so ruled that because Hearst had failed to show a likelihood of success on the merits, and failed to show irreparable harm, its request for a preliminary injunction was denied.

What does this case mean in a larger context? For one, it is clear that attempts to use decades-old law to regulate cutting edge technology are bound to create serious problems of interpretation. The Copyright Law regarding these issues as cited by the court comes from 1976, when cable television was still in its infancy, and has not truly evolved to keep up with the times. The court’s ruling can be interpreted in different ways. Some will argue that it allows emergent forms of technology to effectively flout copyright laws and profit off the protected material of others due to unforeseen loopholes in the law. Others will take the opposing view, that the courts are unwilling to force new forms of technology into an antiquated regime of law, and will instead allow them to innovate new forms of content distribution until some elected body makes the conscious decision to regulate these new technologies.

 

The Streams Run Downhill: Part 1

Today’s blog post will focus on yet another online television streaming case. In a recent decision by the Federal District Court in Massachusetts, a company owning a local broadcast network found itself unable to get a preliminary injunction to stop a new start-up from converting its signals into a digital, streaming format.

The set-up of the case is interesting, in that it shows how changing technology can, in some cases, create new conflicts. Aereo, the defendant in this case, had recently begun a new service that allowed users, for a fee, to receive digital versions of broadcast television signals that they could either watch live or save on a DVR system for later viewing. To accomplish this goal, Aereo had set up a number of antennae around Boston in order to receive the broadcast signals for digital conversion. The Hearst Group, a media conglomerate that counts WCVB-TV in Boston as one its holdings, brought suit in the District Court of Massachusetts, alleging copyright infringement by Aereo, and further filed for a preliminary injunction to stop Aereo’s service while the litigation was ongoing. Aereo responded by asking the court to transfer the case to the Southern District of New York, where the company was incorporated.

As a preliminary matter, the court first rejected the motion for transfer. It explained that even though Aereo was incorporated in New York, and the Hearst Group had its place of principal business there as well, the Hearst Group’s choice of venue would have to be given deference unless Aereo could show some reason why the action should be transferred. In this case, since the Hearst Group’s claim was restricted to Aereo’s conversion of signals only from WCVB, based in Boston, and since Aereo did a great deal of business in the city, there was no sufficient reason to transfer the case. Further, as the court pointed out, the litigation was in an advanced enough stage that the transfer would have the pernicious effect of delaying the litigation, which the court also deemed to be a factor in denying Aereo’s request. Looking at the rest of the decision, it is clear that at least one reason for Aereo’s attempt to move venue is that the 2nd circuit, which encompasses New York, had a more substantial body of favorable precedent than the 1st Circuit, and, in addition, Aereo had already prevailed in a similar suit in the 2nd Circuit just months prior.

Next week we will begin to review the court's process in reaching its decision.

 

Fox Broadcasting v. Dish Network

Recent developments in broadcasting technology have changed the way that people watch television. Unsurprisingly, however, there has been some push back from traditional broadcasters, who see their business model as being under siege from these new innovations. We have written about one such case in our last couple posts. The recent case of Fox Broadcasting v. Dish Network is one example of this type of clash.

The defendant, Dish Network, had recently introduced a service, “Autohop”, that allowed customers to fast-forward through commercials on certain shows they had digitally recorded previously. Fox Broadcasting, which derives a great deal of its revenue through the sale of ad time, sued Dish Network in the Federal  district court in Central California, claiming a breach of the contract between Fox Broadcasting and Dish Network, as well as copyright infringement. Fox also sought preliminary injunction to stop the Autohop service while the case was still pending.

The district court used the four-factor test for determining whether or not a preliminary injunction was warranted, and ultimately decided that it was not. The first factor, whether Fox had established a likelihood of success on the merits of the case, was likely the most dispositive. This factor turned on whether or not it was DirectTV, or the consumer, that was party that made the digital copy of Fox’s programming for later viewing. In order for Fox’s copyright infringement case to be likely to succeed, it would have to show that it was DirectTV making those copies, and thus directly infringing its copyright. In support of its position, Fox argued that since it was DirectTV that operated the system that made the copies possible, and set rules such as how long the copies would last in the memory, as well as editing the start and end times of the recorded shows, that it should be judged to be directly responsible for making the copies. The district court disagreed with this assessment, and instead ruled that this fact pattern was more akin to a person making a copy of a show on a VCR, and that it is the end user who is making the copies, and who be most likely liable for a direct infringement suit.

The court next turned to whether or not Fox could show a likelihood that DirectTV had was liable for secondary copyright infringement by facilitating the direct copying of its users. As there was no real question that the users in question were copying Fox’s copyright material, the burden shifted to DirectTV to show that the users were protected by fair use. The long-held precedent is that a person is entitled, under the doctrine of fair use, to record a program for the purpose of time-shifting. Fox argued, however, that fair use did not allow customers to skip commercials or build a library of recorded programs. When the Betamax case was decided, the technology had not yet reached the point where either of purposes was feasible and so that court had not ruled on whether they were permissible under fair use or not. As to the matter of skipping commercials, the court was not sympathetic to Fox’s argument, noting that, although Fox owned the copyright to the television shows being recorded, it did not own the copyright to the commercials being skipped, and could not sue for copyright infringement under that theory.

The court then examining DirectTV’s AutoHop program under the Fair Use factors. First, the use was noncommercial; it was done by private consumers for their own viewing convenience, not as a commercial activity. Next the court looked at the “nature of the work” and “amount of substantiality of the work shown”, ultimately concluding that, even though the users in question copied the entirety of the material copyrighted by Fox, they had been invited to watch this event free of charge, and merely copied the work in order to make its viewing more convenient. Finally, the court looked at the last factor, how the use would affect the market for this work, which they ultimately concluded would not be adversely affected by the commercial skipping technology. Next week’s blog post will focus on the next steps that the court took in coming to the conclusion.

The Court Answers Last Two Questions in Online Television Streaming Copyright Infringement

Last week we presented an overview of the court’s process in making its decision in a recent copyright infringement lawsuit involving broadcasters and an online television streaming company. This week’s wrap-up will focus on the ancillary questions presented at the end of last week’s post—what the scope of the injunction should be and what amount of bond should be required of the plaintiffs.

As to the first question, the matter of scope was complicated by jurisdictional issues. As the defendants’ business had been running on a nationwide basis, different district courts had already weighed in and while Ninth Circuit had come to a similar conclusion to this court, the Second Circuit, having come to a different conclusion on whether the streaming service violated copyright law, had not granted an injunction. Further, the Copyright Act mandated that whenever an injunction was granted based on a claim of copyright infringement, that the injunction should be “operative throughout the United States.” Attempting to square this circle, the court referred to D.C. Circuit precedent that allowed it to limit the scope of injunctions in circumstances such as these and, accordingly, limited the scope of the injunction to cover the entirety of the United States except for the Second Circuit.

Finally, the court turned to the issue of bond. As it noted, the D.C. Circuit is not a mandatory-bond jurisdiction and, as a result, the court had the option of requiring no bond if the circumstances warranted it. The defendants, concerned that the injunction might destroy their business, asked the court to require a $10,000,000 bond. The court, however, noting the “considerable assets” held by the plaintiffs of this case, instead imposed a $250,000 bond.

               

 

Overview of the Court's Decision in Online Television Streaming Case

Last week we wrote about a recent decision in a copyright infringement case involving online television streaming. Today we are going to run through the court’s process in reaching the decision.

The court used the standard four-part test to determine whether or not a preliminary injunction should be granted in this case.

Likelihood of Success

The first question was whether the moving party was likely to succeed on the merits of the case. As a result, the court first had to look at the two elements that must be shown in a successful copyright claim, (1) that the plaintiff owns the allegedly infringed material and (2) that the infringement is a violation of the copyright holder’s rights set forth in the federal copyright law. In this case, the court noted that there was little dispute that the plaintiffs owned the material in question.

The second element, though, whether the infringement violated the plaintiffs’ rights, was more carefully scrutinized. The plaintiffs’ argument was that although online streaming was not entirely what Congress had in mind when they had last updated the relevant law, the streaming service provided by the defendant was an effective retransmission of the copyrighted material and, as a result, the defendants had violated the Copyright Act by failing to secure a license before retransmitting the copyrighted work.

The defendants, on the other hand, argued that the streaming service did not constitute a public retransmission of copyrighted material, instead casting its service as a private transmission to a single user, who could use the service in order to record broadcasts as a matter of convenience, which has, since the Betamax case, been considered a right of the consumer, and not a violation of copyright law.

Ultimately, the court chose to look at the legislative history regarding the 1976 amendments to the Copyright Act, which contained the clauses that were operative in this case, and came to the conclusion that, although Congress had not been able to foresee the exact cluster of facts in this case, it was clear from the record that they would have considered a streaming service like the defendant’s to be considered a transmission for the purposes of the Copyright Act and, as a result, there was a strong likelihood that defendant had violated the law by failing to gain the plaintiffs’ consent before retransmitting the material over its service.  The court then went on to explain that, even if the technological methods involved in the streaming service meant that, in a technical sense, the streaming was not done by conventional public transmission as was contemplated in the act, the overall effect of the streaming service was effectively the same as public transmission in either case. As a result, the court found that there was a likelihood that the plaintiffs would succeed on the merits of the case, passing the first part of the test.

Irreparable Harm

The second factor is whether there is a likelihood of irreparable harm should the injunction not be granted. The court ruled that there was, as the existence of the streaming service negatively impacted the copyright holder’s ability to sell advertising, negotiate retransmission agreements, or create its own internet television presence, as well as the danger of loss of control over its own content. Further, this harm could not be compensated with money damages as it would be difficult to calculate the total damages and, in all likelihood, the defendant would not be able to afford the judgment should the plaintiffs prevail on the case.

The defendant countered that such damages were speculative, and that plaintiffs had not shown that said damages were imminent or anything other than economic losses that could be recovered at law. The court rejected this argument, however, noting that the plaintiffs had produced some testimony from television executives that cable companies had already begun to take entities such as the defendant into account when negotiating retransmission fees, and therefore the harms were both imminent and non-speculative. The court ruled that there was a likelihood of irreparable harm as well.

Balance of Harms

The court looked at the balance of harms only briefly. The defendants had argued that, even if there were a likelihood of irreparable harm to the plaintiffs in the form of lower payments from content partners, the harm done to them by the granting of this injunction would be more severe, potentially collapsing their business model and thereby chilling technological innovation. The court, however, noted that the defendant had already begun to make agreements to legally transmit material through its streaming service, and therefore would not be too badly damaged by having its illegal streaming services shut down by an injunction.

Public Interest

The final question, that of the public interest, was dismissed with the court merely pointing to the long-held precedent that the public interest favors the upholding of copyright law and, as a result, that this final factor weighed in the plaintiffs’ favor as well.

Having decided that an injunction was warranted, the court next turned to two ancillary questions. First, what the scope of the injunction should be, and second, what amount of bond should be required of the plaintiffs. This will be covered in our next post.

 

 

Broadcasters Obtain Second Win in Court Case against FilmOn

Several lawsuits have resulted from the emergence of live streaming services broadcasting television via the internet.  Music streaming companies such as Napster involved similar issues, but the courts have only recently tackled the issue of television streaming.

A recent decision in Washington, D.C. granted a preliminary injunction against FilmOn, providing some insight into the future of these copyright issues.

The U.S. District Court for the District of Columbia handed out a preliminary injunction as the second win for the broadcasters in a series of three decisions in their copyright battle.

Both television streaming companies (FilmOn used to be associated with Aereo under a different name before striking out on its own) contend that they are not in violation of the law because they merely provide consumers with their own antennae, not access to the copyrighted content.

While it appears that the broadcasters involved in the lawsuit against FilmOn (Fox, NBC Universal, Telemundo, ABC, CBS, Allbritton Communications, Gannett Co.) will achieve a victory, having already been granted an injunction preventing FilmOn from continuing to stream television from their networks without permission, the U.S. District Court for the District of Columbia’s decision opposes a New York court’s decision in a similar case there against the streaming company Aereo.

What does this mean for the issue of copyright law associated with live streaming? It could mean that the issue will reach the Supreme Court. While the U.S. District Court of the District of Columbia’s decision extends to many territories beyond the D.C. area, the injunction is not nation-wide. It is yet to be determined whether or not the issue will reach the Supreme Court, but two major decisions reaching opposite conclusions opens a door to that possibility.  

Tune into our blog next week for a more comprehensive run through of the Court’s decision.

The Patterson Law Firm has handled many intellectual property cases and we stay abreast of the trends within this sphere in order to provide the best service to our clients. To learn more about the services we offer visit pattersonlawfirm.com or call 312.223.1699.

 

Apple's Argument re Validity of D'677 Patent

Apple argued that Samsung’s invalidity challenges would not likely succeed at trial (Court Order Denying Motion for Preliminary Injunction, 9). As mentioned in a previous post, Apple’s argument section on the validity of D’677 is rather sparse. However, we have outlined the main points here.

According to Apple, none of Samsung’s previously identified prior art posed a danger to the validity of the D’677s patent. Moreover, during the prosecution of the design patent, the PTO had granted the patent after considering a substantial volume of prior art references. Apple then proceeded to point to the ‘overwhelming public and media reaction to the revolutionary and distinctive look of the iPhone as support for its argument about the novelty of Apple’s D’667 patent (Apple’s Motion for a Preliminary Injunction, 17).

The cited New York Times review of the iPhone analogized Apple to Cinderella’s fairy godmother, stating that Apple had effected a “transformation of a homely and utilitarian object, like a pumpkin or a mouse, into something glamorous and amazing, like a carriage or fully accessorized coachman.” Per Apple’s view, this review and the general media and public reaction constituted secondary considerations that demonstrated the non-obviousness of its D’677 patent. Secondary considerations include things like: commercial success; long felt industry need; failure of others; skepticism in industry; praise of others; copying of invention by others.  Secondary considerations can prove that an invention was non-obvious, and Apple used the news review and general media/public reaction to do just that. 

Prefacing Note on Intellectual Property Tests and Standards (Part 4 of 4)

                The anticipation and obviousness inquiries are different for design patents, as compared to utility patents.  Given that three of the patents at issue are designs, a clear understanding of both anticipation and obviousness is necessary to understand Samsung’s invalidity arguments.  As discussed earlier, we are focusing on anticipation and obviousness as grounds for invalidating a patent.

                As mentioned in the last post, patent law theory essentially posits the same tests for anticipation and obviousness.  The anticipation inquiry requires only one single reference.  If an ordinary observer would think that one single prior art reference is “substantially the same” as the design patent, then that reference is anticipatory and invalidates the design patent.  A prior art reference is substantially the same as the design patent if “‘the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.’” As the district court emphatically stated, “the focus should likewise be on ‘the overall design’ of the patent as compared” to the anticipatory reference. Court Order Denying the Motion for Preliminary Injunction at 10-11, 18.

The inquiry for obviousness is more complicated.  If a designer “of ordinary skill [in the design of the articles involved] would have combined teachings of the prior art to create the same overall visual appearance as the claimed design,” then the design patent is obvious and invalid. Richardson at 3.  Determining if the combined prior art creates the same overall visual appearance as the design patent falls under the ordinary observer test: would an ordinary observer think the appearance of the design created by combined prior art is substantially similar to the appearance of the design patent?  If yes, then the combined prior art renders the patent obvious. Wharton, Blog Entry.  In sum, the obviousness analysis centers on the overall appearance of the claimed design, not on the design concept. Richardson at 3, Manual of Patent Examining Procedure (“MPEP”) at 1504.03.

The combination must contain one “primary [prior art] reference” and at least one other “secondary [prior art] reference.” Tambolas, Blog Entry.  This primary reference must be one prior art reference with “design characteristics [that] are basically the same as the claimed design.” Richardson at 3. The “design characteristics” term is defined to mean “overall visual appearance.” MPEP at 1504.03. So, the primary reference must have the “basically the same overall visual appearance” as the design patent. This standard is an incredibly stringent test.

If the defendant doesn’t find a primary reference that has basically the same appearance as the design patent, then he cannot argue that the design patent is invalid due to obviousness. Id.  This prior art reference must be “something in existence, and not something brought into existence by selecting and combining features from prior art references.” Id.  Differences between the primary reference and design patent are permissible where such differences are minor or don’t concern the overall appearance of the design.  Where there such permissible differences, then secondary references can be utilized to bridge the gap between the two.  However, the defendant must prove that these differences would have been obvious to a person of ordinary skill in the art. Id.

After finding a primary reference, secondary sources can be used to modify the primary reference.  However, in order to qualify as a secondary reference, the reference must be “‘so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.’” Richardson at 3.  Essentially, a designer of ordinary skill in the art must see some sort of suggestion in one of the references to combine it with the other. Id.at 3-4.  Secondary references can be used to modify the primary reference by: adding new features from the secondary references to the primary reference; interchanging features of both references with the other; or, deleting features from the primary reference due to something in the secondary reference. However, the secondary references can only be combined if such a combination would have been obvious to a designer of ordinary skill in the art.

References

Court Order Denying Motion for Preliminary Injunction, Docket No. 450, 2011-12-02.

Manual of Patent Examining Procedure, 8th Ed. 2011-08, Section 1504.03 Nonobviousness [R-5] – 1500 Design Patents, http://www.uspto.gov/web/offices/pac/mpep/documents/1500_1504_03.htm.

Julie Richardson, “Design Patents: Alternative Protection for Articles of Manufacture”, available at: http://www.myersbigel.com/library/articles/DesignPatents.pdf.

Teresa Tambolas, “Chicago Design Patent Attorney Explains How An Obviousness Challenge Can Trump a Motion for Preliminary Injunction in a Design Patent Case, Pattishall IP Blog, http://blog.pattishall.com/2009/08/06/chicago-design-patent-attorney-explains-how-an-obviousness-challenge-can-trump-a-motion-for-preliminary-injunction-in-a-design-patent-case/.

Jake Wharton, “Federal Circuit Updates Design Patent Invalidity Standard,” Furniture Law Blog, 2010-01-23, http://womblefurniturelaw.blogspot.com/2010/01/federal-circuit-updates-design-patent.html

Prefacing Note on Intellectual Property Tests and Standards (Part 3 of 4)

Since the standards and tests for anticipation and obviousness are different for design patents and utility patents, we have devoted this post to discussion of anticipation and obviousness of utility patents.  The next blog will focus on the standards for anticipation and obviousness of design patents.

To prove anticipation of a utility patent (like the ‘381), a defendant must demonstrate that one single prior art reference discloses every element of at least one claim; if one single prior art reference discloses every element of a claim, then that claim is invalid because it has been anticipated by the prior art and is not novel.   If this test seems familiar to you, then you are right.  Under patent law, the tests for anticipation and infringement are the same.  The only difference is that an anticipatory reference has an earlier date of invention than the patent, whereas infringement involves an accused device that has a later date of invention than the patent.  In the anticipation analysis, courts compare the anticipatory reference to the patent claim.  For infringement, courts compare the patent claim with the accused device. See, Court Order Denying Motion for Preliminary Injunction at 18.

A challenge on the grounds of obviousness is arguing that a person of ordinary skill in the art would find the patent claim to be obvious in light of the entire prior art.  In determining if a claim is obvious, courts look to four factors: a) scope and content of the prior art; b) the level of ordinary skill in the art; c) differences between the claimed invention and the prior art; and d) any secondary considerations (i.e. commercial success of invention; industry skepticism about success or viability of invention, failure of others, etc).  The statutory standard states that a claim is obvious if a person of ordinary skill in the art would think that “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole” were obvious.  35 U.S.C. 103, “Conditions for Patentability, Non-Obvious Subject Matter (2004).

Combining prior art references is permissible to demonstrate obviousness.  One way to prove obviousness is when the combination of prior references discloses every element of a claim.  If a combination of prior art references discloses every element of a patented claim, then that claim is invalid for being obvious.  However, another way to prove obviousness does not require disclosure of every element of the patented claim in a reference.  For example, if the difference between the prior art and the patented claim is a matter of general knowledge to people of ordinary skill in the art, then that general knowledge functions to fill the gap between the prior art and the claim, making the claim obvious even if one element of the claim had not been explicitly disclosed in a prior art reference.

Obviousness can be a tricky determination, because prior art references may only be combined under certain circumstances.  Some circumstances where certain prior art references can be combined are: where something in one reference suggests, teaches, or motivates (TSM test) a person of ordinary skill in the art to combine that reference with another one; where a person of ordinary skill in the art would think the combination was obvious to try; where common sense would motivate a person of ordinary skill in the art to combine references.

 [NOTE: with utility patents, invalidating one or more claims does not necessarily invalidate the whole patent. Just because one patent claim (even if it is an independent claim) is invalidated, this does not mean that the other claims have been invalidated as well.  It just means that the patentee cannot claim infringement of his patent based upon that particular claim.]

The Hangover II Injunction Denied

By Jay Lewis

S. Victor Whitmill v. Warner Bros. Entertainment, Inc., 4:11-cv-752 (E.D. Mo. 2011)

Plaintiff S. Victor Whitmill (“Whitmill”) is the tattoo artist who inked Mike Tyson’s face.  Whitmill sought a preliminary injunction against Warner Brothers Entertainment (“Defendant”) to enjoin the release of “The Hangover II.”  Actor Ed Helms sports an identical tattoo in the film which Whitmill believes infringes on his copyright. Missouri Eastern District Court Judge Catherine D. Perry orally denied Whitmill’s preliminary injunction at the hearing and issued a short one page order.

To obtain a preliminary injunction, the movant must show likelihood of success on the merits, irreparable harm, the balance of equities weighs in favor of the movant, and an injunction is in the public interest.  Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008). 

To be successful on the merits, Whitmill needed to demonstrate he had a valid copyright and the Defendant copied the protected work. See Plaintiff’s Memorandum in Support of his Motion for Preliminary Injunction, p 5, citing, Rottlund Co. v Pinnacle Corp., 452 F. 3d 726 (8th Cir. 2006).  Based on the facts set forth in the Plaintiff’s Memorandum, Whitmill demonstrated both a copyright and an unauthorized copy.  Plaintiff’s Memo, p 5-7. However, according to the Memorandum in Opposition to Plaintiff’s Motion for Preliminary Injunction, seen here, “[t]here are no reported cases addressing the copyrightability of tattoos.” (Memo in Opposition, p. 12).  Regardless, the Judge found a copyright, stating:

Of course tattoos can be copyrighted. I don’t think there is any reasonable dispute about that. They are not copyrighting Mr. Tyson’s face, or restricting Mr. Tyson’s use of his own face, as the defendant argues, or saying that someone who has a tattoo can’t remove the tattoo or change it, but the tattoo itself and the design itself can be copyrighted, and I think it’s entirely consistent with the copyright law.

NY Times, quoting Judge Perry.

The Defendant, in its Memorandum, offered several defenses to Whitmill’s copyright infringement claim. (Memo in Opposition, pp. 18-19).  The Defendant argued that displaying Tyson’s tattoo on a character in the film constituted Fair Use: 

[T]he fair use of a copyrighted work…for purposes such as criticism, comment…is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include — 

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. § 107.

Judge Perry rejected the Fair Use argument, stating, “This use of the tattoo did not comment on the artist’s work or have any critical bearing on the original composition. There was no change to this tattoo or any parody of the tattoo itself. Any other facial tattoo would have worked as well to serve the plot device.” NY Times.

The next factor, irreparable harm, is presumed if movant has established the likelihood of success on the merits in a copyright infringement case according to Plaintiff’s Memorandum which cites West Pub. Co. v. Mead Data Central, Inc., 799 F.2d 1219, 1229 (8th Cir. 1986); DF Inst. Inc. v. Marketshare EDS, 84 USPQ 2d 1206, 1212 (D. Minn. 2007).  (Plaintiff’s Memo, page 8).  Based upon the Judge’s statements that a copyright exists and the Defendant infringed upon it, supra, irreparable harm was presumed in this case.

Although Whitmill showed a likelihood of success on the merits and irreparable harm, the balance of harms and public interest tipped too sharply in favor of the Defendant. The Defendant and its partners had invested hundreds of millions of dollars into producing, marketing and distributing the film.  An injunction preventing the opening would have cost the Defendant millions in box office revenues over the Memorial Day weekend.  Additionally, the Defendant argued that a substantial likelihood existed that a delay in the release of the film would create a black market of pirated DVDs based upon the prints that already had been shipped to theaters around the country. (Memo in Opposition, pp. 36-40).

Judge Perry agreed with the Defendant:

The public interest does favor protecting the thousands of other business people in the country as well as Warner Brothers, and not causing those nonparties to lose money, and I think it would be significant, and I think it would be disruptive. I think that tilts the public interest in favor of Warner Brothers on this because all over the country people would be losing money if I were to enjoin this movie.

NY Times.

The Hangover II was released in theaters as scheduled.  It reportedly grossed $86 million over the weekend and $137 million since its release breaking previous box-office records for an R-rated comedy. LA Times.

Amaretto v. Ozimals: Non-opposition to the entry of a preliminary injunction

A TRO lasts for a very short amount of time, usually only ten days. So, it wasn’t surprising that after the Court granted its motion for a TRO Amaretto moved for a preliminary injunction, which can last indefinitely. However, what was unexpected is that Defendant Ozimals filed a Statement of Non-Opposition to Amaretto’s request for a preliminary injunction. Ozimals filed a complaint for copyright infringement against Amaretto in the United States District Court for the Northern District of Alabama. Thus, Ozimals believed that the parties were well beyond the DMCA notification activity and didn’t object to Amaretto’s service provider being enjoined from acting on Ozimal’s takedown notice. While it didn’t oppose the entry of a preliminary injunction, Ozimals requested that the Court vacate the injunction hearing. In its Statement of Non-Opposition, Amaretto expressed its concerns that conducing a hearing would be an inefficient use of judicial resources. Amaretto also feared that a hearing would cause the Court to rule on the likelihood of success on the merits “on an extremely abbreviated schedule and without the opportunity for full briefing or evidentiary submissions by the parties, or even any discovery at all by the parties.” (Defendant Ozimals, Inc.’s Response and Statement of Non-Opposition to Plaintiff Amaretto Ranch Breedables, LLC’s Motion for Preliminary Injunction; Request to Vacate Hearing, p. 2). The Court entered the preliminary injunction as unopposed and vacated the hearing. Ozimals’ decision not to oppose Amaretto’s motion for a preliminary injunction was tactical. If an evidentiary hearing was held on the injunction, there was a risk that the Court could make various findings against Ozimals, which could ultimately be detrimental in its copyright infringement action. Thus, Ozimals determined that would it be better to yield to the entry of a preliminary injunction, barring Amaretto’s service provider from taking down offending material on its website, in order to maximize its chances of ultimate success.

Chris Rock's Movie Good Hair Prevails against Motions for Injunctive Relief

Regina Kimball was probably pleased when comedian Chris Rock requested to view her film, My Nappy Roots, a documentary that explores the politics, culture and history of African-American hair. However, this happiness inevitably faded after she saw a trailer for Rock’s film, Good Hair, in late September.   Kimball believed that Rock’s movie incorporated elements of her film, so she filed suit, alleging copyright infringement and requested that the Court enjoin the film’s October debut. (Kimball v. Rock, et. al., case number 2:09-cv-07249-DSF-E (C.D. Cal.)). However, U.S. District Court Judge Dale S. Fischer ultimately denied Kimball’s request for injunctive relief, and allowed the film to show.

To establish copyright infringement, two elements must be proven: (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are similar. The Court refused to grant Kimball’s request for injunctive because she had failed to demonstrate a likelihood of success on the merits. 

First, even though her film debuted in 2005, Kimball’s copyright registration is still pending. The Court noted that there is a disagreement, among various Circuits, about whether a pending registration is enough to confer jurisdiction. 

Second, with regard to infringement, Kimball provided the following chart to demonstrate the similarities between the two films:

My Nappy Roots

Good Hair

Title connotes the perceived
negative end of the spectrum
of black hair
 

Title connotes the perceived
positive end of the
spectrum of black hair

Is socially and politically
conscious
 

Is socially and politically
conscious

Kimball was inspired to make
the film because of her daughter's
hair angst
 

Rock claims he was inspired
to make the film because of his
daughter's questions about
her hair
 

Includes an interview with a doctor
 

Includes an interview with a
dermatologist and Chemist
 

Includes an interview with hair
care [sic] George Johnson
 

Includes an interview with hair
care pioneer Joe Dudley

Tells story of weave with film
clips of India, focusing on
Tonsure ceremony at Temple
Tirumala Tirupati
 

Visits India to explore a principle
source of human hair, focusing
on Tonsure ceremony at Temple
Tirumala Tirupati

Has comedian Tommy Chung
for comedic relief
 

In addition to Rock, has comedian
Paul Mooney for comedic relief

Covers the business of black
hair care
 

Covers the business of black
hair care

Celebrities tell their own hair
stories
 

Celebrities tell their own hair
stories

Tour of manufacturing plant
where hair relaxers are made
 

Tour of manufacturing plant where
hair relaxers are made

Interviews Aleila Bundles
 

Interviews Aleia Bundles

Photos of Madame C.J. Walker
graduation ceremony
 

Footage of J. Dudley graduation
ceremony

Discuses controversy over inventor
of the "Jheri Curl"
 

Interviews Willie Morrow the
"self-proclaimed Jheri Curl
inventor"
 

Interviews Sam Enos, founder of BOBSA

Interviews Sam Enos, founder of
BOBSA

This chart did not convince the court. In particular, when it applied the substantial-similarity test, which has both an intrinsic and extrinsic component, the Court held that the two films differed with regard to their theme, plot, sequence of events, characters, dialogue, setting, mood and pace.  The court held that Good Hair is a comedic documentary, while My Nappy Roots takes a serious and holistic view, and is an authority on the history and social dynamics of African-American Hair.