Articles Posted in U.S. 2nd Circuit Court of Appeals

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Defendants, the children of the late Jack Kirby, one of the most influential comic book artists of all time, appealed the district court's grant of summary judgment to Marvel. This case concerned the property rights in 262 works published by Marvel between 1958-1963. After defendants served various Marvel entities with Termination Notices purporting to exercise statutory termination rights under section 304(c)(2) of the Copyright Act of 1976, 17 U.S.C. 304, Marvel filed suit seeking a declaration that defendants have no termination rights under section 304(c)(2). The court concluded that the district court lacked personal jurisdiction over Lisa and Neal Kirby and, therefore, vacated the district court's judgment against them; Lisa and Neal are not indispensable parties and it was appropriate for the action against Barbara and Susan Kirby to have proceeded on its merits; the district court did not err in determining as a matter of law that the works at issue were "made for hire," made at Marvel's instance and expense, and that the parties had no agreement to the contrary; and the district court properly granted Marvel's motion for summary judgment as to Susan and Barbara, who were without termination rights under section 304(c). View "Marvel Characters, Inc. v. Kirby" on Justia Law

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Plaintiffs filed suit under the Lanham Act, 15 U.S.C. 1051 et seq., against defendants, alleging trademark infringement based on a theory that defendants misappropriated and have unauthorized commercial use in the United States of certain United States-registered trademarks related to "Stolichnaya" - brand vodka (the "Marks"). At issue on appeal was whether plaintiffs have sufficient claim to the Marks to sue for infringement under the Act. The court concluded that FTE was neither (1) the Russian Federation's "assign" of the marks nor (2) its "legal representative." The court also concluded that Cristall could not sue, since its rights as a plaintiff were purely derivative of those held by FTE, and FTE could not grant rights greater than its own; the court rejected plaintiffs' joint argument that they were entitled to proceed because the Russian Federation had "ratified" their suit; and, therefore, neither plaintiff was entitled to sue for infringement under section 1114(1). Accordingly, the court affirmed the district court's dismissal of the Third Amended Complaint with prejudice. View "Fed. Treasury Enter. v. SPI Spirits Ltd." on Justia Law

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Plaintiffs, entities with rights or licenses to registered trademarks bearing the "Guggenheim" name, filed suit alleging trademark infringement and other federal and state law claims after defendant solicited investors to buy various financial products while presenting himself as "David B. Guggenheim." On appeal, defendant challenged the district court's entry of default judgment against him. The court concluded that the district court did not abuse its discretion by entering a default judgment against defendant where the district court was presented with a plethora of evidence to support its finding that he willfully defaulted. Moreover, defendant's asserted defense failed on the merits because his conduct plainly failed to satisfy the elements of a legitimate fair use defense, even if the district court erred by not specifically addressing this defense. View "Guggenheim Capital, LLC v. Birnbaum" on Justia Law

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Plaintiffs, an association of authors and several individual authors, filed suit against Google alleging that it committed copyright infringement through the Library Project of its "Google Books" search tool by scanning and indexing more than 20 million books and making available for public display "snippets" of most books upon a user's search. On appeal, Google challenged the district court's grant of class certification. The court believed that the resolution of Google's fair use defense in the first instance would necessarily inform and perhaps moot the court's analysis of many class certification issues and that holding the issue of certification in abeyance until Google's fair use defense has been resolved would not prejudice the interests of either party. Accordingly, the court vacated and remanded for the district court to consider the fair use issues. View "The Authors Guild Inc., et al. v. Google, Inc." on Justia Law

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Plaintiff sued Marvel, contending that he conceived the comic book character "Ghost Rider," the related characters, and the origin story. Plaintiff also claimed that he owned the renewal term copyrights in those works. On appeal, plaintiff challenged the district court's grant of summary judgment in favor of Marvel, holding that plaintiff had assigned any rights he had in the renewal term copyrights to Marvel when he executed a form work-for-hire agreement (the Agreement), six years after the initial publication of the issue in question. The court, by applying the "strong presumption against the conveyance of renewal rights," concluded that the district court erred in holding as a matter of law that plaintiff had assigned his renewal rights to Marvel by signing the Agreement; plaintiff's claim was not untimely as a matter of law because there were genuine disputes regarding whether plaintiff should have known about Marvel's repudiation of his claim of ownership; and there were genuine disputes of material fact that precluded granting summary judgment on the issue of authorship. Accordingly, the court vacated and remanded for trial. View "Gary Friedrich Enters., LLC v. Marvel Characters, Inc." on Justia Law

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Plaintiff, owner of a motivational services business organized around the concept of "Own Your Power," appealed from the district court's grant of a motion to dismiss finding that defendants' use of the phrase "Own Your Power" was fair use. The district court dismissed plaintiff's counterfeiting, vicarious infringement, and contributory infringement claims on additional grounds. Defendants published a magazine cover, hosted an event, and built a section of a website all utilizing the phrase. Because the court found that defendants have not adequately established a fair use defense, the court vacated the judgment of the district court with respect to the trademark infringement, false designation of origin, and reverse confusion claims and remanded for further proceedings. The court agreed with the district court's holdings with respect to plaintiff's vicarious infringement, contributory infringement, and counterfeiting claims and affirmed with respect to these claims. View "Kelly-Brown, et al. v. Winfrey, et al." on Justia Law

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Plaintiff appealed from the district court's dismissal of the counts in its amended complaint directed against the Vatican State. Plaintiff alleged fraud, negligence, breach of contract, unjust enrichment, and conversion, in connection with a licensing program involving artwork and artifacts in the Vatican Library collection. The district court dismissed plaintiff's claims on the grounds of improper venue based on the forum selection clauses contained in the Sublicense Agreements. Plaintiff is a New York corporation with its principal place of business in Long Beach, New York. The Vatican State is the territory over which the Holy See of the Roman Catholic Church exercised sovereignty. The court held that the Vatican State could invoke the forum selection clauses in the sublicense agreements because the licensee and the Vatican State were "closely related" parties and it was foreseeable that the Vatican would enforce the forum selection clauses. Accordingly, the court affirmed the judgment. View "Magi XXI, Inc. v. Stato della Citta del Vaticano" on Justia Law

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Plaintiff sued defendant and the Gagosian Gallery, alleging that defendant's series of paintings and collages infringed on plaintiff's registered copyrights in certain photographs from a book of classical portraits and landscape photographs that plaintiff took while living among Rastafarians in Jamaica. The district court concluded that, in order for defendant to use a fair use defense, defendant's work must comment on plaintiff, on plaintiff's photographs, or on aspects of popular culture closely associated with plaintiff or the photographs. The court concluded that the district court applied the incorrect standard to determine whether defendant's artworks made fair use of plaintiff's copyrighted photographs; that all but five of defendant's works did make fair use of the photographs; and with regard to the remaining five artworks at issue, the court remanded to the district court to consider whether defendant was entitled to a fair use defense. Accordingly, the court reversed in part, vacated in part, and remanded. View "Cariou v. Prince" on Justia Law

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Two groups of plaintiffs, holders of copyrights in programs broadcast on network television, filed copyright infringement actions against Aereo. Aereo enabled its subscribers to watch broadcast television programs over the internet for a monthly fee. Plaintiffs moved for a preliminary injunction barring Aereo from transmitting programs to its subscribers while the programs were still airing, claiming that those transmissions infringed their exclusive right to publicly perform their works. The district court denied the motion and plaintiffs appealed. The court concluded that Aereo's transmissions of unique copies of broadcast television programs created at its users' request and transmitted while the programs were still airing on broadcast television were not "public performances" of plaintiffs' copyrighted works under Cartoon Network LP, LLLP v. CSC Holdings, Inc. As such, plaintiffs have not demonstrated that they were likely to prevail on the merits on this claim in their copyright infringement action. Nor have they demonstrated serious questions as to the merits and a balance of hardships that tipped decidedly in their favor. Accordingly, the court affirmed the district court's order denying plaintiffs' motion. View "WNET v. Aereo, Inc." on Justia Law

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Christian Louboutin, a fashion designer best known for his use of red lacquer on the outsole of the shoes he designs, appealed the district court's order denying a motion for preliminary injunction against alleged trademark infringement by Yves Saint Laurent (YSL). The court concluded that the district court's conclusion that a single color could never serve as a trademark in the fashion industry was inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., and that the district court therefore erred by resting its denial of Louboutin's preliminary injunction motion on that ground. The court further concluded that Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identified the Louboutin brand. Pursuant to Section 37 of the Lanham Act, 15 U.S.C. 1119, the court limited the trademark to uses in which the red outsole contrasted with the color of the remainder of the shoe. Because Louboutin sought to enjoin YSL from using a red sole as part of a monochrome red shoe, the court affirmed in part the order of the district court insofar as it declined to enjoin the use of the red lacquered outsoles in all situations. However, the court reversed in part the order of the district court insofar as it purported to deny trademark protection to Louboutin's use of contrasting red lacquered outsoles. View "Christian Louboutin S.A. v. Yves Saint Laurent America Inc." on Justia Law