Articles Posted in US Court of Appeals for the Second Circuit

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BWP appealed the district court's memorandum and order granting summary judgment to Polyvore on BWP's copyright claims for direct and secondary infringement and denial of BWP's cross-motion for summary judgment on direct infringement. BWP's claims arose from Polyvore's posting of BWP's photos on its website. The Second Circuit held that the district court erred in granting summary judgment to Polyvore on the direct infringement claim because there was a dispute of material fact regarding whether Polyvore created multiple copies of BWP's photos that were not requested by Polyvore users; questions of material fact precluded the court from holding at this stage that Polyvore satisfied the requirements for the Digital Millennium Copyright Act (DMCA) section 512(c) safe harbor, even though BWP has not shown that Polyvore's stripping of metadata disqualifies it from safe harbor protection; but Polyvore was entitled to summary judgment on BWP's secondary infringement claims of contributory, vicarious, and inducement of infringement because BWP abandoned those claims. Finally, the court held that the district court did not err by declining to sanction BWP. Accordingly, the court affirmed in part, vacated in part, and remanded for further proceedings. View "BWP Media USA Inc. v. Polyvore, Inc." on Justia Law

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The Second Circuit affirmed the district court's judgment granting attorneys' fees and costs to defendants under section 505 of the Copyright Act and section 35(a) of the Lanham Act. These provisions authorized the district court to award fees to the prevailing party in a lawsuit. The court held that defendants met the definition of "prevailing party" under both fee-shifting provisions. Although defendants did not obtain a dismissal on the the Copyright and Lanham Acts claims, defendants have fulfilled their primary objective by obtaining dismissal of the complaint on collateral estoppel grounds. View "Manhattan Review, LLC v. Yun" on Justia Law

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Defendants appealed the district court's judgment for plaintiffs, finding copyright infringement. Defendants created an Internet platform designed to enable the lawful resale, under the first sale doctrine, of lawfully purchased digital music files, and had hosted resales of such files on the platform. The Second Circuit held that defendants infringed plaintiffs' exclusive rights under 17 U.S.C. 106(1) to reproduce their copyrighted works. In this case, the operation of ReDigi version 1.0 in effectuating a resale resulted in the making of at least one unauthorized reproduction. Such unauthorized reproduction violated the right holder's exclusive reproduction rights under section 106(1) and was not excused as fair use. The court declined to make a decision as to whether ReDigi also infringed plaintiffs' exclusive rights under 17 U.S.C. 106(3) to distribute their works. View "Capitol Records, LLC v. ReDigi Inc." on Justia Law

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Under the circumstances of this case, copyright registration, without more, does not trigger accrual of an ownership claim under section 205(c) of the Copyright Act. The Second Circuit denied a petition for rehearing in a dispute over ownership of the renewal term copyrights of certain musical compositions and sound recordings. The court had previously vacated the district court's grant of defendants' motion to dismiss for untimeliness under section 205(c) and remanded for further proceedings. View "Wilson v. Dynatone Publishing Co." on Justia Law

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Sports photographers filed suit seeking to recover damages on copyright, contract, and tort theories of liability after the NFL exploited thousands of their photographs without a license and without compensation. The photographers also brought an antitrust challenge alleging that the NFL and AP conspired to restrain trade in the market for commercial licenses of NFL event photographs. The district court dismissed the complaint for failure to state a claim. The Second Circuit held that the photographers' allegations plausibly supported an inference that before the 2012 AP-NFL agreement was signed, AP had not granted the NFL a complimentary license to use the photographers' works, and the NFL knew it. The court vacated the photographers' claims for copyright infringement against AP and the NFL relating to the NFL's use of photographs from 2009 to present; claims for copyright infringement against AP, the NFL, and Replay relating to uses of the photographs in connection with the Replay Photo Store; claims for breach of the implied covenant of good faith and fair dealing against AP; and claims for fraud against AP. The court affirmed in all other respects and remanded for further proceedings. View "Spinelli v. National Football League" on Justia Law

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Marcel filed suit against Lucky Brand under the Lanham Act for infringing on Marcel's "Get Lucky" trademark through its use of "Lucky" on its merchandise. Marcel also alleged that Lucky Brand did so in violation of an injunction entered in an earlier action between the parties. The district court dismissed the complaint, concluding that Marcel released its claims through a 2003 settlement agreement that resolved an earlier substantially similar litigation between the parties.  The Second Circuit vacated the judgment, holding that res judicata precluded Lucky Brand from raising its release defense in this case. The court held that under certain conditions parties may be barred by claim preclusion from litigating defenses that they could have asserted in an earlier action, and that the conditions here warranted application of that defense preclusion principle. Accordingly, the court remanded for further proceedings. View "Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc." on Justia Law

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OBC appealed the district court's grant of summary judgment for Excelled in a trademark dispute over use of the brand-name ROGUE on t-shirts. The Second Circuit held that Excelled failed to show entitlement to summary judgment dismissing OBC's trademark infringement counterclaims. In this case, Excelled failed to meet its burden of proving that OBC's delay in bringing suit was unreasonable and caused prejudice to Excelled. Therefore, the court vacated the district court's grant of summary judgment to Excelled, dismissing OBC's counterclaims, alleging trademark infringement, false designation, and unfair competition. The court reversed the district court's grant of summary judgment to Excelled on its infringement claims and the district court's denial of OBC's motion for summary judgment dismissing these claims. The court also reversed the award of injunctive relief and damages and fees against OBC. Finally, the court vacated the district court's grant of summary judgment to Excelled on OBC's trademark cancellation counterclaim because the district court erroneously relied on determinations of disputed facts about the continuity of Excelled's sales that usurped the province of the jury. View "Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing" on Justia Law

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Plaintiffs, members of a musical group called "Sly Slick & Wicked," filed suit alleging that Dynatone and others collected royalties from the sampling of their song, "Sho' Nuff" in 2013 and that plaintiffs were entitled to those royalty payments. The Second Circuit held that the district court erred in concluding that a repudiation of plaintiffs' claims with respect to the original terms constituted a repudiation of the renewal terms. In this case, plaintiffs did not have reasonable notice that defendants had filed a registration in the capacity of employer for hire. Therefore, the registration did not constitute effective repudiation, triggering an obligation for plaintiffs to bring suit. Accordingly, the court vacated this portion of the judgment. The court affirmed the district court's dismissal of plaintiffs' state law accounting claim for failure to allege a fiduciary duty. Therefore, the court remanded for further proceedings as to plaintiffs' renewal term copyright claims. View "Wilson v. Dynatone Publishing Co." on Justia Law

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This case stemmed from the parties' dispute over adjudicating rights associated with The Sloppy Tuna, a restaurant in Montauk, NY. On appeal, Montauk challenged the district court's dismissal of its Lanham Act claims and motion for preliminary injunction under the first-filed rule. Montauk also challenged the district court's order to pay costs, including attorneys' fees, that Associates incurred in responding to a previous action Montauk brought against Associates in Georgia state court that Montauk voluntarily dismissed. The Second Circuit held that, because New York law allowed for derivative representation on the facts presented, the district court correctly rejected Montauk's request to hold Associates in default. Nonetheless, the court vacated the district court's dismissal of the complaint and preliminary injunction motion in favor of a first-filed federal Georgia action because the Georgia suit was transferred to the Eastern District of New York, so the reasoning behind the first-filed ruling no longer applied. Finally, the court affirmed the district court's award of costs under Federal Rule of Civil Procedure 41(d), including attorneys' fees, incurred by Associates in the Georgia state action. View "Montauk U.S.A., LLC v. 148 South Emerson Associates LLC" on Justia Law

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The Second Circuit appealed the district court's dismissal of Great Minds' copyright infringement action against FedEx. The court found that Great Minds' license did not explicitly address whether licensees may engage third parties to assist them in exercising their own noncommercial use rights under the license. The court held that, in view of the absence of any clear license language to the contrary, licensees may use third‐party agents such as commercial reproduction services in furtherance of their own permitted noncommercial uses. In this case, because FedEx acted as the mere agent of licensee school districts when it reproduced Great Minds' materials, and because there was no dispute that the school districts themselves sought to use Great Minds' materials for permissible purposes, FedEx's activities did not breach the license or violate Great Minds' copyright. View "Great Minds v. FedEx Office & Print Services, Inc." on Justia Law