Copyright

A Practice Note discussing the fair use doctrine under US copyright law. It provides an overview of the constitutional basis and policy rationales for the fair use doctrine and the Copyright Act's provisions governing fair use. It also outlines the practical and strategic issues counsel should consider in advising clients on and litigating fair use and discusses the intersection of fair use and new technologies.

This Practice Note covers injunctive relief in copyright infringement litigation. Topics include the importance of injunctive relief as an infringement remedy, the traditional tests for injunctive relief in copyright actions, the Supreme Court's decision in eBay v. MercExchange, the application of eBay to copyright actions and key federal court decisions assessing irreparable harm post-eBay.

A Practice Note discussing key issues relevant to intellectual property (IP) licensors and licensees affected by bankruptcy. These include issues related to the automatic stay, determining whether an IP license is an executory contract, tests for assignment and assumption of IP licenses and risks and protections for non-debtor licensees of rejected IP licenses.

A discussion of the Kirtsaeng v. John Wiley & Sons, Inc. litigation, in which the US Supreme Court held that the first sale doctrine applies to copies of copyrighted works lawfully made and purchased outside the US and then imported for resale in the US without the permission of the copyright owner.

An overview of special issues and considerations with respect to security interests in intellectual property, relevant to both corporate and finance transactions.

This is a standard short-form copyright assignment agreement for use as an ancillary agreement to a principal asset purchase agreement or other principal transaction agreement. This copyright assignment agreement can be attached as an exhibit to the principal asset purchase agreement or other principal transaction agreement. In addition, it can be recorded with the US Copyright Office against scheduled copyright registrations and applications. This Standard Document has integrated notes with important explanations and drafting tips.

This is a standard short-form copyright security agreement to be used with a principal security agreement in a syndicated secured loan transaction. This copyright security agreement can be attached as an exhibit to the principal security agreement. In addition, this copyright security agreement can be recorded with the US Copyright Office against US copyright registrations and applications included in the collateral subject to the security interest. This Standard Document has integrated notes with important explanations and drafting tips.

An agreement between an employer and an employee concerning confidentiality and appropriate handling of the employer's commercially valuable information, compliance with relevant security rules and policies, and protection of the employer's intellectual property assets. Agreements of this type have various titles, which may use the term "non-disclosure" in place of "confidentiality," or "intellectual property" in place of "proprietary rights." This Standard Document is drafted in favor of the employer. It is based on federal law. For information on state law requirements, see the State Q&A Tools under Related Content to the right. This Standard Document has integrated notes with important explanations and drafting tips.

A freelance contributor agreement for a company to commission one or more creative (typically copyrightable) works from an individual (freelancer), with alternative provisions depending on whether the company is to own or license the work. This Standard Document can also serve as the starting point  for a form agreement for use by a company that frequently uses freelancers. It is drafted in favor of the company, but aims to be reasonable with the objective of being signed with little or no negotiation. This Standard Document has integrated drafting notes with important explanations and drafting tips.

This is a standard short-form intellectual property (IP) security agreement to be used with a principal security agreement in a syndicated secured loan transaction. This IP security agreement can be attached as an exhibit to the principal security agreement. In addition, this IP security agreement can be recorded with the US Patent and Trademark Office and US Copyright Office against US IP included in the collateral subject to the security interest. This Standard Document has integrated notes with important explanations and drafting tips.

This Standard Document is a standard short-form agreement to release a security interest in intellectual property (IP) included as collateral in a secured loan transaction. This release can be recorded with the US Patent and Trademark Office (USPTO) and US Copyright Office to terminate and release security interests filed against US IP. This Standard Document has integrated notes with important explanations and drafting tips.

An agreement granting a party a license to provide the other party's content on its website. Website content license agreements vary in length and complexity depending on several factors, including the types of content being licensed, the scope of rights being granted and the value and duration of the licensing arrangement. Each website content license agreement must be tailored to suit the particular circumstances of the transaction. While drafted in favor of the licensor, this Standard Document aims to be reasonable and includes provisions commonly negotiated in website content license agreements. This Standard Document has integrated notes with important explanations and drafting and negotiating tips.

Long-form clauses for the protection of an employer's intellectual property (IP) rights for use in an agreement with a junior or senior employee who is principally involved in a technical or creative role. These clauses include specific language that aims to protect the employer's IP rights in this context, including treatment of pre-existing intellectual property rights. These Standard Clauses have integrated notes with important explanations and drafting tips.

A Checklist of common issues for copyright licensors and licensees to consider when licensing copyrighted material and in negotiating a copyright license agreement. While copyright license provisions vary based on many factors, this checklist sets out material terms copyright licenses typically address, including the specific rights the licensee may exercise, the limitations on those rights, license fees or other consideration, the duration of the license, and allocation of risk and liability between the parties.

An expert Q&A with Andrew P. Bridges of Fenwick & West LLP on key questions in the debate about the Stop Online Piracy Act (SOPA) and the Protect IP Act (PIPA), from the perspective of SOPA and PIPA opponents.

On October 24, 2012, Practical Law Company, Davis Wright Tremaine LLP and Copyright Clearance Center presented Strategies for Protecting Copyrights and Trademarks Online, a webinar on steps a company can take to address the risks of online copyright and trademark infringement and counterfeiting. You can access the recorded webinar here (registration required to view recorded webinar). You can download the webinar slides by clicking the PDF link below.

An expert Q&A with Jeffrey D. Neuburger and Maureen E. Garde of Proskauer Rose LLP on the growth of cloud-based platforms for storing and distributing digital content, referred to as “lockers,” and the copyright issues raised by these services.

This article provides an overview of recent developments in the US Google books case. (Free access.)

In Righthaven LLC v. Hoehn, the US Court of Appeals for the Ninth Circuit held that Righhaven lacked standing to sue in two copyright infringement suits because it only owned the bare right to sue for infringement, which is not an exclusive right under the Copyright Act. Additionally, the Ninth Circuit vacated the district court's grant of summary judgment on fair use in one of the suits.

In UMG Recordings, Inc. v. Escape Media Group, Inc., the NY Supreme Court, Appellate Division reversed a NY Supreme Court, New York County decision denying UMG's motion to dismiss Escape Media Group's affirmative defense that the DMCA's safe harbor provisions shielded it from infringement claims concerning pre-February 15, 1972 sound recordings. The NY Supreme Court, Appellate Division held that the DMCA does not cover these sound recordings.

On April 18, 2013, in Viacom v. YouTube, the US District Court for the Southern District of New York granted the renewed motion for summary judgment in favor of the defendants, YouTube, Inc and Google, Inc., and held that the Digital Millennium Copyright Act's (DMCA) safe harbor provisions protected the defendant service providers. The case was before the SDNY on remand from the US Court of Appeals for the Second Circuit.

This Legal Update provides guidance and drafting tips for takedown notices under the Digital Millennium Copyright Act (DMCA).

In American Broadcasting Cos. v. AEREO, Inc., the US Court of Appeals for the Second Circuit affirmed the denial of the plaintiff television production and broadcasting companies' motion for a preliminary injunction against AEREO, Inc., which was based on their claim that Aereo's transmissions of television programming over its internet playback platform were public performances in violation of the plaintiffs' copyrights. 

In Luvdarts, LLC v. AT&T Mobility, LLC, the US Court of Appeals for the Ninth Circuit affirmed the district court's dismissal of Luvdarts's complaint under Federal Rules of Civil Procedure Rule 12(b)(6) for failure to state a claim. Luvdarts sued mobile wireless carriers seeking to hold them vicariously or contributorily liable for copyright infringements allegedly committed by users of the carriers' mobile networks.

In Associated Press v. Meltwater US Holdings, Inc., the US District Court for the Southern District of New York granted summary judgment in favor of The Associated Press, holding that the defendant online news clipping company's reports featuring AP news story excerpts sold to subscribers constituted copyright infringement and not permissible fair use.

In UMG Recordings, Inc. v. Shelter Capital Partners, Inc., the Ninth Circuit Court of Appeals withdrew its December 20, 2011 opinion and filed a superseding opinion, which is largely the same but clarifies the reasoning supporting its decision that the Section 512(c) safe harbor provision of the Digital Millennium Copyright Act (DMCA) applied to Veoh Networks insulating it from copyright liability based on its users' activity.

In The Ray Charles Foundation v. Robinson, the US District Court for the Central District of California, Western Division, decided in favor of Ray Charles's children allowing them to proceed with their attempt to terminate Ray Charles's transfer of certain of his copyrights to the Foundation.

A discussion of the fair use doctrine under US copyright law. This Legal Update includes links to resources that provide an overview of the constitutional basis and policy rationales for the fair use doctrine, the Copyright Act's provisions governing fair use and practical and strategic issues counsel should consider in advising clients on and litigating fair use.

In US v. Fair, the US Court of Appeals for the District of Columbia Circuit vacated the district court’s order directing Fair to pay $743,098.99 in restitution to Adobe Systems, Inc. for illegally selling pirated copies of Adobe software.

The US Copyright Office announced a new rule designating five classes of copyrighted works exempted from the Digital Millenium Copyright Act's anti-circumvention provisions. The rule goes into effect on October 28, 2012.

In Evergreen Safety Council v. RSA Network, the US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of summary judgment dismissing RSA’s copyright infringement claim on grounds of laches. This case is notable for the Ninth Circuit’s holding that RSA's laches barred the availability of prospective injunctive relief.

In Authors Guild, Inc. v. HathiTrust, the US District Court for the Southern District of New York held that the defendant universities' mass digitization of the plaintiff authors' copyrighted works for the HathiTrust Digital Library is a transformative fair use under Section 107 of the Copyright Act.

The US Copyright Office has made a request for public comment on the topic of resale royalty rights for visual artists. The Copyright Office specifically seeks comments on the means by which visual artists exploit their works under current law and the possible issues when considering a federal resale royalty right in the US.

In Capitol Records, Inc. v. Thomas-Rasset, the US Court of Appeals for the Eighth Circuit vacated the district court's judgment reducing statutory damages for willful copyright infringement to $54,000 and remanded the case with directions to enter a judgment for damages in the amount of $222,000. The Eighth Circuit also issued an injunction preventing Thomas-Rasset from making any of plaintiff's copyrighted works available for distribution online.

In Paula Petrella v. Metro-Goldwyn-Mayer, the US Court of Appeals for the Ninth Circuit held that laches barred copyright infringement claims brought by an owner of copyrights in books and screenplays underlying the film Raging Bull. In a holding that underscores the circuit split on the availability of a laches defense in copyright cases, the Ninth Circuit found that MGM successfully demonstrated expectations-based prejudice and met its three-element laches test.

The US Copyright Office has made a second request for public comment on the topic of adjudicating small copyright claims. The Copyright Office is specifically seeking comments on how a potential small copyright claims system would be structured and function.

In Peters v. West, the US Court of Appeals for the Seventh Circuit affirmed a district court decision that the hip-hop artist Kanye West did not infringe the plaintiff's copyrighted work. Notably, the court rejected the use of the inverse-ratio rule for copyright infringement to allow weaker proof for similarity between the allegedly infringing work and the original based on the accused infringer's strong proof of access to the original.

In American Broadcasting Cos. v. AEREO, Inc., the US District Court for the Southern District of New York denied the plaintiff television production and broadcasting companies' motion for a preliminary injunction against AEREO, Inc., which was based on their claim that Aereo's transmissions of television programming over its internet playback platform were public performances in violation of the plaintiffs' copyrights. The SDNY relied on the Second Circuit's decision in Cartoon Network LP v. CSC Holdings, Inc. (Cablevision) in ruling that, because Aereo's creation and transmission of single-user-only copies of television programs was not a "public" performance under Sections 101 and 106(4) of the US Copyright Act, the plaintiffs failed to show a likelihood of success on the merits of their copyright infringement claim.

On July 6, 2012, the Copyright Office filed its final rule for deposit requirements for registration of automated databases that consist predominantly of photographs. Under this new rule, when a registration is made for a database consisting predominantly of photographs, and the copyright claim extends to individual photographs, each of those photographs must be included as part of the deposit accompanying the application.

In Omega S.A. v. Costco Wholesale Corp., the US District Court for the Central District of California awarded Costco $396,844.17 in attorneys' fees after having granted Costco's previous motion for summary judgment based on a copyright misuse defense. 

The Copyright Office issued a statement of policy dated June 18, 2012 to clarify its practices relating to the examination and registration of claims in compilations. The Copyright Office will refuse registration of a compilation unless it falls within at least one of the categories listed in Section 102(a) of the Copyright Act. Specifically excluded are compilations of exercises, including yoga sequences, and simple dance routines.

In Tire Engineering and Distribution, LLC v. Shandong Linglong Rubber Co., the US Court of Appeals for the Fourth Circuit affirmed a district court decision that two foreign entities were liable under the Copyright Act and for conversion under Virginia law. This decision is notable for its adoption of the predicate-act doctrine allowing damages for foreign copyright infringement stemming from domestic infringement.

In Brownmark Films, LLC v. Comedy Partners, the US Court of Appeals for the Seventh Circuit affirmed the district court order granting Comedy Partners' motion to dismiss Brownmark's copyright infringement suit based on the fair use affirmative defense.  The Seventh Circuit also expressed favor in extending the incorporation-by-reference doctrine to audio-visual works.

The European Commission has issued a consultation paper on the procedures for notifying and acting on illegal content hosted by online intermediaries. Note: On 5 September 2012, the deadline for responding to this consultation was extended until 11 September 2012.

On May 21, 2012, in WNET v. Aereo, Inc., the US District Court for the Southern District of New York granted Aereo's motion for judgment on the pleadings on the plaintiffs' unfair competition claim. The plaintiffs brought the claim as an alternative to its copyright infringement claims, if the district court decides that Aereo's retransmission of broadcast television signals from New York area television stations over the internet to Aereo subcribers involves private performances, rather than public performances protected under the Copyright Act.

In Swatch Group Management Services Ltd. v. Bloomberg L.P., the US District Court for the Southern District of New York determined that the defendant's publication of the plaintiff's recorded earnings conference call was fair use under Section 107 of the Copyright Act.

On May 17, 2012, the Copyright Royalty Judges published proposed rules setting the complusory license rates and terms for mechanical and digital phonorecords under Section 115 of the Copyright Act.

On May 7, 2012, in Scorpio Music S.A. v. Willis, the US District Court for the Southern District of California granted the defendant's motion to dismiss. At issue were several songs by the Village People and whether a joint author who separately transferred his copyright interest may unilaterally terminate that grant under Section 203 of the Copyright Act's termination and recapture provisions.

On April 5, 2012, in Viacom v. YouTube, the US Court of Appeals for the Second Circuit reinstated Viacom's billion dollar copyright infringement litigation against YouTube.  In its decision the court addressed the contours of safe harbor protection for online service providers under the Digital Millenium Copyright Act (DMCA).

The USPTO and National Institute of Standards and Technology (NIST) Manufacturing Extensions Partnership (MEP) announced in a press release the launch of a new web-based IP Awareness Tool designed to help manufacturers, small businesses, entrepreneurs and independent investors evaluate their intellectual property, including copyrights, patents, trademarks and trade secrets.

In Adobe Systems Inc. v. Hoops Enterprise LLC,  the US District Court for the Northern District of California held that Adobe's distribution of certain software to original equipment manufacturers (OEMs) was a license, not a sale of the software. Relying on Vernor v. Autodesk, the District Court found that the copyright first sale doctrine was unavailable as a defense to Adobe's claims of copyright infringement against third parties who subsequently resold the software without authorization.

In its January 18, 2012 opinion in Golan v. Holder, the US Supreme Court upheld Section 514 of the Uruguay Round Agreements Act (URAA), which restores copyright protection to certain foreign works in the public domain. The Court held, 6-2, that Section 514 does not violate the Copyright Clause or the First Amendment of the US Constitution.

The US Copyright Office has published a report recommending that Congress enact legislation to bring sound recordings made before February 15, 1972 under federal copyright protection.

In UMG Recordings, Inc. v. Shelter Capital Partners, Inc., the Ninth Circuit Court of Appeals affirmed the district court's summary judgment ruling that Section 512(c) of the Digital Millennium Copyright Act (DMCA) (the system storage safe harbor) insulated Veoh Networks from copyright liability resulting from acts of its users. 

In a dispute involving copyright in the helmets of the "Stormtrooper" soldiers from the Star Wars films, the Supreme Court has upheld the Court of Appeal's view that the helmets were not sculptures, and so were not artistic works, but overturned its decision that US copyright claims were not justiciable in England. (Lucasfilm Limited and others v Ainsworth and another [2011] UKSC 39, 27 July 2011.) (Free access.)

On June 26, 2012, in Forest Park Pictures v. Universal Television Network, Inc., the US Court of Appeals for the Second Circuit vacated the US District Court for the Southern District of New York's judgment dismissing Forest Park's complaint and remanded for further proceedings. The plaintiffs sued the defendants for breach of contract that included an implied promise to pay for using plaintiff's pitched content for defendant's television show "Royal Pains."

The ECJ has held that the copyright available to computer programs under the Software Directive (2009/24/EC) does not protect the functionality of a computer program, its programming language, or its data file format. (SAS Institute Inc v World Programming Ltd, Case C-406/10, 2 May 2012.) (Free access.)