Here’s a look at what’s been going on in the copyright world, drawn up by our counsel Matt Hersh:
Top Issue—Artificial Intelligence and Copyright
The use of artificial intelligence to create art and literature continues to be the hot topic of 2023. The inevitable litigation has taken place, very roughly speaking, on two levels—each of which has seen action over the summer.
First, artists and photographers have brought a wide range of lawsuits against the creators of artificial intelligence, claiming that their works have been misappropriated in order to “train” the software. The latest entry is a pair of lawsuits in July by Sarah Silverman (one of your correspondent’s favorite comics) against the makers of ChatGPT and LLaMA, two of the most prominent AI programs out there. I covered the filing of the lawsuit for IP Law Daily here. That joins a long line of other lawsuits against AI makers, including a suit earlier this year by Getty Images against AIO image-maker Stable Diffusion (which I covered for IP Law Daily here), as well as lawsuits by other artists as well.
Then there is the other side—the quest by software developers to obtain copyright registrations for their AI-generated artwork. So far the Copyright Office has held fast against those efforts, as have the courts. In one prominent case earlier this year, the Office called back its registration of an illustrated comic book once it learned that many of the illustrations had been computer generated. (I covered the case for IP Law Daily here.) And just a few weeks ago, a federal judge in Washington DC—in between her oversight of January 6-related cases, as it happens—released a widely noted decision upholding the Office’s refusal to register a work of art produced by the so-called “Creativity Machine” developed by prominent AI developer Stephen Thaler. My colleague Robert Barnett wrote about that latest decision in the IP Law Daily here.
Not much happening lately, as the Court is on its summer recess. The Court did refuse to take up petitions for certiorari on two copyright issues. In ML Genius Holdings LLC v. Google LLC, the Court declined to weigh in on a long-brewing circuit split over whether and in what circumstances breach of contract claims are preempted by the Copyright Act will not be reviewed at the Supreme Court, the Court announced on Monday. I wrote about the issue in IP Law Daily here. More recently, in H&M Hennes & Mauritz, v. Unicolors, the question raised was whether a court may refer to the Register of Copyrights the validity of a copyright registration even without an allegation that the registrant intended to defraud the Register. My colleague Linda Panszczyk wrote about the Court’s refusal to consider the issue in IP Law Daily here.
District Court of Arizona
Not much happening in the District Court either over the last two months, but here’s a quick look at some developments.
Pima Community College District v. Yuksel, 4:2023-cv-00361 (filed: July 31, 2023)
This is the only new copyright case on the court’s docket since our last writeup. It’s one you don’t see every day. Pima Community College sued a former philosophy professor of theirs. The allegation: that he recorded the classes that he taught and then put those videos up on his website. In the schools’ view, making the videos breached his employment contract with the school. Moreover, the school asserts, since the professor allegedly assigned to the school any materials he prepared in the school of his employment, the records allegedly belong to the school—which means his reproduction and display of them constituted a copyright violation. The professor has just filed a lengthy pro se opposition to the brief, which explains that he “occasionally recorded and published some of my philosophy and logic lectures, and brilliant class discussions,” and that his recording was done openly and with the knowledge of the school.
Cameron C Stanley and Fredric D Bellamy, Dickinson Wright PLLC (Phoenix) and Scott A Holcomb, Mariscal Weeks McIntyre & Friedlander PA (Phoenix) for Plaintiff.
Photography by Frank Diaz LLC v. Friends of David Schweikert et al, 2:2022-cv-01170 (filed July 13, 2022).
We wrote about this case at length in our June newsletter. David Schweikert, the Republican Congressman from Arizona’s 6th congressional district, allegedly used a photograph without permission during one of this campaign ads. Fair use? Or copyright infringement? The courts have split on this issue, and it could have been a great test case—especially in light of the recent Warhol v. Goldsmith Supreme Court opinion. But—the case just settled without an opinion. Possibly the best outcome for the parties, but a bit of a letdown to a copyright law nerd like me.
Other interesting cases I recently covered for the Intellectual Property Law Daily
As always, I’ve been busy writing my daily column for the IP Law Daily. Here’s a sampling of some of my favorite pieces over the past few months.
S.D.N.Y.: Tip your server: Dow Jones has domestic cloud servers to thank for its lawsuit against a Chinese company (Mar 23, 2023). Author and journalist Nuri Vittachi once wrote: “You can leave Hong Kong, but it will never leave you.” A federal court in Manhattan apparently disagrees. The court, refusing to dismiss a copyright claim by Dow Jones against a Chinese publisher based in the bustling Asian city, found that the claim was within the territorial scope of U.S. copyright because the publication was served to its readers, in part, on computers based on the United States. (Dow Jones & Co., Inc. v. Juwai Ltd.)
S.D. Fla.: Defendant’s name is Maximus, but Plaintiff has her revenge (Mar 24, 2023). An Indian company that filed a DMCA counternotice that agreed to accept service of process did not waive its right to have service of a follow-on copyright infringement complaint served under the process provided for in an international treaty covering service abroad, the federal court for Miami has held. The court’s ruling on a little-litigated provision of the landmark 1998 statute, while sparsely reasoned, appeared to be relying on a reading of the statute in light of analogous language in the Hague Convention. (Cook v. Maximus International Specialists)
E.D.N.Y.: Big chill: A hip-hop jeweler’s lawsuit is frozen out of the courts (Mar 28, 2023). The operator of a website that purported to register its entire website, but actually described only the text and photos within the website, did not meet the statutory prerequisite for suing the operator of another website for infringement, the federal court for Brooklyn has held. The court, in dismissing the lawsuit brought by one New York jeweler retailer against another, also found that still publicity photos of jewelry laying on a white background, like “generic photographs of common Chinese-takeout dishes,” were not sufficiently original to qualify for copyright protection. (ID Tech LLC v. Toggle Web Media LLC)
C.D. Cal.: If a photograph imitates reality, and reality is wearing a pin-up girl design on her trousers, whose art wins? (Mar 29, 2023). A photographer who snapped a picture of a model crossing a street while wearing a designer pair of pants was not required to register his photograph as a “derivative” of the design on the model’s outfit, the federal court in Los Angeles has held. The court, in affirming the validity of the registration, cleared the way for the photographer to prevail in his claim that the clothing designer infringed his copyright by posting the photo on its promotional social media pages. (Vila v. Deadly Doll, Inc.)
7th Cir.: Group registrants, beware: Use of a convenient Copyright Office procedure might limit the scope of statutory damages (Apr 3, 2023). The fact that a graphic artist registered a series of her works with the Copyright Office in two separate groups rather than individually could be a factor in determining whether she was entitled to statutory damages for each of those works or only for the two groups, the U.S. Court of Appeals for the Seventh Circuit has held. The court, in reversing and remanding for the second time a $3.6 million judgment in favor of the artist, also found that the district court had overlooked a wide range of other evidence that could have limited the statutory damages award based on the two groupings as opposed to each of the individual works. (Sullivan v. Flora, Inc.)
D. Colo.: Not in my House: Legend of the Chicago sound is hit with infringement lawsuit (Apr 12, 2023). A Denver-based company that was once a staple of the Chicago House music scene released an unauthorized version of a popular dance music track, an affiliate of Sony Music has alleged in a newly filed lawsuit. The federal complaint, filed by Sony Spain and its US-based sublicensee, alleges that the House music label granted Sony an exclusive license to the track but then violated that license by putting out its own version of the song anyway. (Sony Music Entertainment Espana, S.L. v. Moody II LLC)
E.D. Mo.: Missouri court has Zippo jurisdiction over Florida resident based on a single online sale (Apr 20, 2023). The fact that a Florida resident operated an interactive website that was available to Missouri residents was not enough to obtain personal jurisdiction over that resident where he had made only one actual sale to a Missouri resident, the federal court for St. Louis has held. The court, in granting the Florida resident’s motion to dismiss, based its ruling on a modern-day interpretation of a personal jurisdiction case dated to 1997. (Store Chain, Inc. v. Gilbert)
S.D. Fla.: Stolen scenes from an Italian restaurant might get chain owner in trouble (Apr 21, 2023). The fact that an online aggregator and food delivery company allegedly reposted to its website a photo from a restaurant chain’s in-store menu did not make that company an indispensable party in a lawsuit against the restaurant chain for copyright infringement, the federal court for Miami has held. The court, in refusing to dismiss a lawsuit against the restaurant chain based on its alleged theft of the menu photo, found that it did not matter that the copyright owner did not name the online aggregator as a defendant because the restaurant chain’s alleged conduct—even though it used the work only for in-store menus and not online—was enough to constitute copyright infringement. (Prepared Food Photos, Inc. v. DelVecchio Pizza, LLC)
W.D. Wash.: The ability to withdraw a ‘carrot’ does not create the ‘stick’ of right to supervise (May 1, 2023). The mere fact that a media company had the right to terminate a contractual relationship with a radio host did not make it vicariously liable for the radio host’s alleged copyright infringement, the federal court for Seattle has held. The court, in dismissing for a second time a widower’s claim against the media company for the alleged conduct of the host, emphasized that the contractual relationship alone did not give the media company the right and ability to control the host’s conduct. (Al-Bustani v. Alger)
1st Cir.: Dismissal for failure to register is not a dismissal on the merits (May 12, 2023). The dismissal of a copyright infringement lawsuit on the grounds that the plaintiff failed to register her work with the Copyright Office did not preclude that plaintiff from bringing a similar claim in another court even where the dismissal was with prejudice, the U.S. Court of Appeals for the First Circuit has ruled. The court’s decision, in reversing a Massachusetts district court, enabled it to reach a thornier civil procedure question about the preclusive effect of a decision that is based partially on the merits and partially on other factors. (Foss v. Eastern States Exposition)
S.D. Fla.: Notice and ‘take-down’ prevails over notice and ‘stay-down’ (May 19, 2023). YouTube was protected by the Digital Millennium Copyright Act against a claim that it contributed to infringement by its users even though it had available, but did not use, content identification technology capable of detecting infringing content, a magistrate judge in Miami has found. The federal magistrate, in a report and recommendation that remains subject to further review by the judge overseeing the case, emphasized in his opinion that the copyright owner’s complaint “runs headlong against a brick wall erected by the DMCA.” (Athos Overseas Limited Corp. v. Youtube)
E.D.N.Y.: Court lacks power to alter Copyright Office records (Jun 6, 2023). A songwriter who contributed the English-language lyrics to a melody that is firmly embedded within the rites of Jewish worship and ritual was not entitled to a court order correcting Copyright Office records that allegedly left off his name, the federal court for Brooklyn has held. The court, while allowing the songwriter’s action for declaratory relief and an accounting for profits to go forward, emphasized that neither the Copyright Act nor any other federal statute granted the courts the power to alter Office records. (Kahn v. Carlebach)
D.N.J.: Are the answers derivative of the questions? A discovery dispute might provide a clue (Jun 7, 2023). A maker of educational study solutions was entitled to discovery in connection with its argument that it was entitled to reprint a textbook publisher’s end-of-chapter questions along with its suggested answers to those questions, a special master has ruled. The special master, in granting the study tool maker’s motion to compel the discovery, reasoned that the textbook maker’s understanding of the custom and practice within the educational industry would inform the debate over whether the republication of the questions—and the allegedly infringing derivation of the answers from those questions—was protected by fair use. (Pearson Education, Inc. v. Chegg)
D. Utah: A ‘Rembrandt of Snow’ will have to prove ownership and artistry (Jun 12, 2023). An artist who has long been famed for creating watercolor ski trail maps was unable to establish as a matter of law that a seller of ski maps infringed three of his artistic works by selling unauthorized prints, the federal court for Salt Lake City has held. The court, in denying the artist’s motion for summary judgment on his claim that the competing seller purloined his maps outright, found the artist failed to establish his creations were protectible because he did not separate the expressive elements from “factual, naturally occurring, geographic information.” In addition, as to two of the allegedly infringed works, the court also found that the artist would have to prove to a jury whether he continued to hold title to the copyrights in his creations. (Niehues v. Whitemyer)
S.D. Fla.: How many ways can a banana be duct-taped to a wall? (Jun 13, 2023). A Canadian visual artist who conceived of the idea of duct-taping a banana to a wall as part of an art exhibit was not entitled to protection for his work because the manner in which he aligned the duct tape with the fruit was not creative but rather “the obvious choice,” the federal court for Miami has held. The court, in granting summary judgment in favor of an Italian artist who created a work with a similar element, also found that the Italian artist created his work independently and without access to the original. (Morford v. Cattelan)
1st Cir.: A lesson from the The Game of Life: Everybody pays for their own attorney (Jun 23, 2023). A game designer who claimed that a popular board game he created was not a work for hire did not make an objectively unreasonable argument entitling his counterparty to attorney fees under the Copyright Act even though he had argued in favor of a legal standard that had been rejected by the court of appeals, the U.S. Court of Appeals for the First Circuit has held. The court, upholding a district court’s refusal to award attorney fees in the highly contested case, also found that the game designer would not recover his attorney fees for prevailing on appeal. (Markham Concepts, Inc. v. Hasbro, Inc.)
CRB: From the ‘not a typo’ department: Copyright Royalty Board finalizes mechanical license rates for the years 2018-2022 (Jun 29, 2023). A federal ratemaking process that was intended to establish the amount that songwriters and musical publishers would be paid for certain uses of their works during the years 2018-2022 has finally come to a conclusion—nearly a year after the expiration of the time period it was meant to cover. The ratemaking proceeding, which was stalled by an intervening appellate decision, the COVID-19 pandemic, and an internecine industry debate over calculations that only an accountant could love, retroactively establishes industry rates for the form of internet listening known as interactive streaming. The final ruling, which sets out what the Copyright Royalty Board denominated from the start as “historical regulations,” had long been overshadowed in any event by a game-changing raise for songwriters for non-streaming uses. (In re: Determination of Rates and Terms for Making and Distributing Phonorecords)
C.D. Cal.: Slow and steady doesn’t win the race for these Turtles (Jul 28, 2023). The music publishing company that owns the rights to songs by prominent 1960’s folk rock band The Turtles could not prevail on its claim that music streaming serve Pandora infringed on those exclusive rights by making copies of its songs in order to facilitate its streaming, the federal court for Los Angeles has held. The court, granting summary judgment to Pandora in what it characterized as “the last case standing” in a nine-year run of litigation that has crisscrossed the country, harmonized California’s state copyright law with that of Florida and New York with respect to the same question. (Flo & Eddie, Inc. v. Pandora Media)
D. Me.: A seamstress’s feathered costumes are for the children, but much of her complaint is for the birds (Jul 31, 2023). An artist whose bird costumes were allegedly counterfeited and sold on eBay—with photos of the artist’s own children wearing the costumes, no less—failed to state a claim against the online marketplace giant for direct and contributory copyright infringement because it failed to allege the facts that would sustain such a claim, the federal court for Maine has held. But the court, in granting in part and dismissing in part the seamstress’ claims, nonetheless kept a thread of the case alive by allowing the vicarious liability claim to proceed to discovery. (Okolita v. Amazon.com)
8th Cir.: Does the completion of a building constitute a permitted `alteration’ of it? (Aug 14, 2023). Neither the bank that purchased an unfinished building out of bankruptcy nor the developers it engaged to complete the construction could be held liable for infringing the exclusive rights held by the initial architect of the building, a three-judge panel of the U.S. Court of Appeals for the Eighth Circuit has held. But the panel majority, in issuing its ruling, rested largely on collateral estoppel and other procedural issues and avoided reaching an important but little-litigated provision over the scope of copyright protection for architectural works. (Cornice & Rose International, LLC v. l Four Keys, LLC)
2d Cir.: See no mural, hear no mural: Covering art with an acoustic panel does not violate VARA (Aug 21, 2023). A law school that covered up two controversial murals with acoustic panels in order to hide them from public view did not violate the rights of the visual artist who created the murals, the U.S. Court of Appeals for the Second Circuit has held. The court, in affirming the judgment of a district court in Vermont, relied largely on the plain meaning of the visual arts statute to find that the obscuring of the two murals did not equate to their unauthorized “destruction” or “modification.” (Kerson v. Vermont Law School)