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In Dash v. Mayweather, No.  3:10-cv-01036-JFA (D. S.C. May 11, 2012), the U.S. District Court for the District of South Carolina dismissed a copyright owner’s copyright infringement claims against World Wrestling Entertainment, Inc. (“WWE”) and other parties arising from the unauthorized playing of a recording of the plaintiff’s song “Yep” at two live WWE events. The court’s opinion suggests that the plaintiff did not register his copyright in the song until significantly after the time of the alleged infringement, and therefore, pursuant to 17 U.S.C. § 412, was not entitled to pursue statutory damages. Accordingly, the plaintiff asked the court to award as damages the profits of the infringer and actual damages. The court, however, found no basis to award damages under either of those theories.

17 U.S.C. § 504(b) permits a copyright owner “to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages.” Section 504(b) further provides that–

In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

For purposes of the statute, the U.S. Court of Appeals for the Fourth Circuit has interpreted “gross revenue” to refer only to revenue “reasonably related to the infringement.” Bonner v. Dawson, 404 F.3d 290, 294 (4th Cir. 2005). In the instant case, the court observed that the plaintiff stipulated “that playing ‘Yep’ did not increase the revenues of the Wrestlemania or RAW programs beyond what they would have otherwise garner.” Because the plaintiff “failed to present any evidence demonstrating a causal link between the alleged infringement and the enhancement of a revenue stream at the WWE events in question,” the court held that he was not entitled to an award of the alleged infringer’s profits.

The court also found that the plaintiff was not entitled to actual damages because he “only offered speculation as to the value of the song.” In particular, the plaintiff presented evidence as to amounts paid by WWE to other, much better known entertainers, who the court found were not similarly situated to the plaintiff. The court also pointed out that the plaintiff had not reported any income from his songs on his tax returns and did not offer any other proof of sales of his songs.

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U.S. Congressman Darrell Issa (R-CA) has published for open comment the Obama Administration’s February 2011 proposal for the intellectual property rights chapter of the Trans Pacific Partnership (“TPP”), which the United States has been negotiating behind closed doors with Australia, Brunei, Chile, Malaysia, New Zealand, Peru, Singapore and Vietnam. Rep. Issa posted the non-public document–which had previously been leaked by a non-governmental organization–on the website keepthewebopen.com.

The TPP–described by the Office of the U.S. Trade Representative as “a landmark, 21st-century trade agreement, setting a new standard for global trade and incorporating next-generation issues that will boost the competitiveness of TPP countries in the global economy”–has attracted controversy because of the secrecy with which negotiations have been conducted. Rep. Issa wrote that he took the step of opening the proposed IP chapter for public comment “in response to the Administration’s continued refusal to negotiate transparently and inclusively.”

The substance of the proposed IP chapter is familiar to those who have read recent U.S. bilateral trade agreements. Among other things, it establishes detailed requirements for the prohibition of technology aimed at circumventing technological protection measures, which resemble more closely the U.S. Digital Millennium Copyright Act than the analogous provisions of the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. Another potentially controversial provision is Article 8(2), which provides that,

Each Party shall make patents available for inventions for the following:
(a) plants and animals, and
(b) diagnostic, therapeutic, and surgical methods for the treatment of humans or
animals.

Rep. Issa has previously published for open comment the texts of the Anti-Counterfeiting Trade Agreement, the PROTECT IP Act, and the Stop Online Piracy Act.

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A federal court in Washington state has entered a preliminary injunction prohibiting Motorola, Inc. from enforcing a German court order that would block sales of Microsoft Corp.’s Xbox and Windows products in that country. Microsoft Corp. v. Motorola, Inc., No. 2:10-cv-01823-JLR (W.D. Wash. May 14, 2012). The court’s ruling is the latest in a longstanding patent battle being waged by the multinational companies in Seattle, Washington and Mannheim, Germany.

Patent Claims Essential to an Industry Standard. The patent dispute between Motorola and Microsoft arose from both companies’ participation in the standard-setting process that led to the development of the Institute of Electrical and Electronics Engineers (“IEEE”) standard 802.11 for wireless local area networks and the International Telecommunication Union (“ITU”) standard J.264 for advanced video coding technology. It was a condition of participation in the IEEE and ITU processes that holders of patents deemed essential to the practice of the agreed-upon standards must offer to license such patents on reasonable and non-discriminatory (“RAND”) terms to an unrestricted number of applicants. Motorola held several patents essential to the IEEE and ITU standards, and therefore sent declarations and assurances to both organizations in which it made the RAND licensing commitment.

Alleged Breach by Motorola of RAND Commitments. In October 2010, Motorola offered Microsoft licenses under the essential patents for the IEEE 802.11 and ITU H.264. Among other things, the terms proposed by Motorola would have required Microsoft to pay a royalty of 2.25% per unit on the price of end products compliant with the standards, and to grant back to Motorola a license of Microsoft’s own patents that were essential to the standards. Microsoft filed an action against Motorola, seeking a declaration that Motorola’s proposed terms violated the RAND commitments it had made to the IEEE and the ITU. Motorola denied these allegations and, in a separately-filed case that was consolidated with Microsoft’s declaratory judgment action, alleged that Microsoft had infringed three Motorola patents. In a pretrial ruling, the court determined that Motorola’s RAND assurances and declarations created enforceable contracts between Motorola and the standards organizations, and that Microsoft was a third-party beneficiary of those contracts.

The German Action. Six months after Microsoft filed its declaratory judgment action, General Instrument Corporation (“GIC”), a company affiliated with Motorola, sued Microsoft in Germany, seeking injunctive relief prohibiting Microsoft from offering decoder apparatus and computer software that allegedly infringed two European patents owned by Motorola that were essential to the IEEE 802.11 and ITU H.264 standards. Those patents had been subject to the RAND declarations Motorola had made to the ITU.

Microsoft’s Request for an Anti-Suit Injunction. The German court announced that it would issue a decision in GIC’s infringement action on April 17, 2012. Microsoft filed a motion for a temporary restraining order (“TRO”) and a preliminary injunction to restrain Motorola from enforcing any injunctive relief it might receive in the German action. Upon Microsoft’s posting of a US$100 million bond, the court entered the requested TRO. In a May 14, 2012 order, the court granted Microsoft’s motion for a preliminary injunction.

Factors Relevant to Grant or Denial of Anti-Suit Injunction. As explained by the court, the factors courts consider in determining whether to enjoin litigation in another forum include the following:

… (1) whether or not the parties and the issues are the same, and whether or not the first action is dispositive of the action to be enjoined; (2) whether the foreign litigation would frustrate a policy of the forum issuing the injunction; and (3) whether the impact on comity would be tolerable.

Considering the first factor, the court determined that the parties in the U.S. and German actions–all affiliated companies–were essentially identical, and that a full adjudication of the U.S. action would be dispositive of whether the German court should bar sales of allegedly infringing products in Germany. The court emphasized that its TRO had not prohibited Motorola and GIC from proceeding with litigation in Germany, and the only issue implicated by Microsoft’s anti-suit injunction motion was whether Motorola could enforce the German court’s order. With regard to the second factor, the court found that enforcement of the German injunction could frustrate U.S. judicial policies against inconsistent judgments, forum shopping, and duplicative and vexatious litigation. A key fact supporting the court’s determination was the timing of the filing of the German action. In the third step of its analysis, the court found that an anti-suit injunction would not have an intolerable impact on international comity. The court pointed out that Microsoft’s declaratory judgment action “plac[es] directly at issue whether it is entitled to a license for Motorola’s standard essential patents, including the European patents.” According to the court, “Motorola seeks to litigate that precise issue with respect to the European patents in the German action[,] denying this court the opportunity to administer the prior filed action.” The court also reasoned that the narrow scope of its own injunction–merely “enjoining Motorola from enforcing any injunctive relief that it may receive in the German action with respect to the European patents”–would not greatly interfere with the German proceedings. Further, the court wrote that it had “a strong interest in adjudicating the claims before it,” as both the plaintiff and the defendant were U.S. corporations, and the events relating to Motorola’s alleged breaches of its RAND commitments occurred in the U.S. Indeed, the court concluded that “the lawsuit lacks international issues and foreign government involvement.”

Preliminary Injunction. The court held that Microsoft would suffer irreparable harm absent the requested anti-suit injunction, and that the balance of the equities and the public interest favored the entry of the injunction. Therefore, the court granted Microsoft’s motion and converted the previously-entered TRO into a preliminary injunction.

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On Monday, May 7, 2012, a federal jury in California determined that Google, Inc. had copied portions of Oracle America, Inc. copyright-protected Java code in connection with Google’s development of the Android mobile operating system. See Caleb Garling, Oracle Ignores Judge’s Advice in Push for Google Damages, Wired (May 11, 2012). However, according to Wired magazine, “the only definitive decision was that Google had lifted nine lines of software code.” Moreover, the jury deadlocked on whether Google’s actions were protected by the defense of fair use.

Today, an order by U.S. District Judge William Allsup upped the ante for Google by declaring as a matter of law that “Google decompiled eight Java files and copied them each in their entirety.” Oracle America, Inc. v. Google, Inc., No. C 10-03561 WHA (N.D. Cal. May 11, 2012). The court based this finding on the testimony of Oracle’s expert witness, who “testified about the decompilation process, how he determined that the eight files were decompiled and how, in a side-by-side comparison he found ‘that the actual code matches completely.’” The court rejected Google’s contention that its use of the decompiled files was de minimis, observing that in the Ninth Circuit,

[I]it is the amount of copying compared to plaintiff’s work that matters for the de minimis inquiry, not how the alleged infringer used the copied work…. Here, Google has admitted to copying the entire files.  No reasonable jury could find that this copying was de minimis.

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The U.S. District Court for the Central District of California dismissed claims for copyright infringement, misappropriation of ideas, and unjust enrichment by an individual who claimed that ex-”Frasier” star Kelsey Grammer and others associated with the BET television series “The Game” took the idea for an episode of the series from the plaintiff without compensating her. Colo’n v. Akil, No. CV12 00861 (C.D. Cal. May 8, 2012). The court found the copyright claims barred by the applicable three-year statute of limitations. According to the court, the plaintiff’s idea misappropriation and unjust enrichment claims were barred by res judicata because a court in Indiana had previously held that those claims were preempted by the U.S. Copyright Act.

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The U.S. Court of Appeals for the Tenth Circuit affirmed the dismissal of trademark infringement and cybersquatting claims by a plaintiff who contended he owned an enforceable trademark in JEET KUNE DO–the name of a style of martial arts established by the late Bruce Lee. Hargrave v. Chief Asian LLC, No. 11-5112 (10th Cir. May 7, 2012). The court determined that the plaintiff was not entitled to relief because he neither held a registration for the mark nor possessed common law trademark rights.

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The U.S. Court of Appeals for the Sixth Circuit affirmed a lower court decision holding that Maker’s Mark Distillery’s registered trademark–a red dripping wax seal depicted as an element of trade dress on  bottles of Kentucky bourbon whiskey–is a valid trademark that was infringed by a tequila manufacturer’s bottle which also bore the image of a red wax seal. Maker’s Mark Distillery, Inc. v.  Diageo North America, Inc., Nos. 10-5508/5586/5819 (6th Cir. May 9, 2012).

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The U.S. District Court for the District of Massachusetts dismissed a copyright infringement suit by Aaron Greenspan, the author of a self-published book about the founding of Facebook. Greenspan claimed that a book published by Random House, The Accidental Billionaires: The Founding of Facebook: A Tale of Sex, Money, Genius, and Betrayal,  and the successful 2010 motion picture The Social Network, were unauthorized adaptations of the plaintiff’s book. Greenspan v. Random House, Inc., Civ. A. No. 11-12000-RBC1 (D. Mass. May 9, 2012).

For purposes of the defendants’ motion to dismiss, it was undisputed that Benjamin Mezrich, who authored the Random House book on which The Social Network was based, had access to Greenspan’s book, because Mezrich cited Greenspan’s book as a secondary source in his own book. The crux of the copyright dispute was whether the allegedly infringing works constituted unauthorized copies of the plaintiff’s protected work. To meet this requirement, a copyright claimant must establish “that the copying of the copyrighted material was so extensive that it rendered the infringing and copyrighted works substantially similar.”

In determining whether works are substantially similar, courts consider the following:

The resemblances relied upon as a basis for finding probative similarity must refer to ‘constituent elements of the [copyrighted] work that are original.’ Thus, in examining whether actual copying has occurred, a court must engage in dissection of the copyrighted work by separating its original, protected expressive elements from those aspects that are not copyrightable because they represent unprotected ideas or unoriginal expressions.

In the instant case, the court rejected Greenspan’s contentions that certain similarities between his book and the Random House book were indicative of copying of Greenspan’s original work. For example,

• The appearance in the titles of both books of the phrase “founding of” did not indicate copying because that phrase “cliché expression conveying the origin of something;”
• The words “Harvard Yard” and “Veritas,” which appeared in chapter headings of both books, were, respectively,  the name of a place and an English translation of the Latin word for “truth.”
• Although the two books described meetings between Facebook founder Mark Zuckerberg and Harvard University President Lawrence Summers in a similar manner and used some of the same words, “[c]opyright protection does not extend to ‘fragmentary words and phrases and to forms of expression dictated solely at functional considerations on the grounds that these materials do not exhibit the minimal level of creativity necessary towarrant copyright protection.’”
• Although Greenspan’s original expressions describing certain events were subject to copyright protection, mere factual information and ideas are not. Accordingly many merely physical descriptions of actual people (e.g., an “African American woman”) , places (e.g., the location of Massachusetts Hall at Harvard), and events (the general idea of Zuckerberg’s frustration at facing possible academic discipline for exposing flaws in Harvard’s computer system) were not protected expressions.
• “Although both Greenspan and the defendants use similar phrases to express the idea of Summers’ unwelcoming manner, his inability to see the students’ point of view, and the students being upset at the system … , the five sentences that convey these ideas arequantitatively and qualitatively insubstantial in the context of [Greenspan's book] as a whole.”

In addition to dismissing Greenspan’s copyright infringement claims, the court found that he failed to state claims under the Lanham Act and for defamation.

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