Cameo Clips

COPYRIGHT INFRINGEMENT/JURY INSTRUCTIONS

The U.S. District Court for the Middle District of Florida, Tampa Division, decided that a trial judge's refusal to issue a supplementary jury instruction on when copyright protection begins didn't justify a new infringement trial. Thornton v. J Jargon Co., 8:06-cv-1640-T-27TGW. Plaintiff John Thornton filed suit alleging that the “Take the Age Test” in programs for the theatrical production of Menopause the Musical was an unauthorized copy of his quiz “The Official Baby Boomer Qualifying Exam [BBQE].” A jury found no infringement. During deliberations, the jurors had asked the trial judge: “Is copyright retroactive from date of application? Should it matter?” Thornton then asked that the judge respond that “copyright protection comes into existence the day that it's authored and that registration is merely a formality.”

In denying Thornton's motion for a new trial, the district court noted: “In the instant motion, Plaintiff argues that because Defendants distributed the Age Test in theater programs before Plaintiff registered his copyright, the jury erroneously thought that Plaintiff's copyright was not protected at the time of the alleged infringement. However, the Court's Jury Instructions implicitly answered the jury's question because the instructions provided: 'The Court has determined, as a matter of law, that the plaintiff owns a copyright in [the BBQE], as registered with the U.S. Copyright Office.' ' In addition, in stating the two elements of direct infringement, the Court instructed the jury: '[First element] Plaintiff owns a valid copyright in the work (which the Court has already determined).' This left for the jury's consideration only the second element of whether Defendants copied constituent elements of the BBQE that were original. ' [T]here was sufficient evidence supporting the jury's finding that Plaintiff did not meet his burden on this element.”

The U.S. District Court for the Southern District of New York dismissed a trademark infringement claim by a son and granddaughter of author John Steinbeck in their Lanham Act challenge to licensing uses by the Steinbeck Heritage Foundation, to which Steinbeck's late widow Elaine had assigned the trademark rights in the late author's name and likeness. Steinbeck v. McIntosh & Otis Inc., 04 CV 5497(GBD). (This decision is related to complex issues over termination rights in Steinbeck copyrights. See, Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008) and other parts of Steinbeck v. McIntosh & Otis Inc.)

Starting early in the 1980s, Thomas Steinbeck licensed use of his father's name and image to third parties. Since 1999, the Steinbeck Heritage Foundation filed five federal registrations of John Steinbeck trademarks, including name and signature applications. The district court noted: “The linchpin of trademark protection for a licensor is control over the quality of the goods, such that the licensor may be identified as the source of goods. ' Only two of the uses Thomas Steinbeck lists (1982: Steinbeck Treatment Center; and, 1984: Steinbeck Credit Union) occurred prior to the earliest use date provided by the Foundation in its USPTO registration applications (1986: the Center for Steinbeck Studies or 'Steinbeck Studies'), and both of those uses involved a licensing arrangement. Thomas Steinbeck has not supplied either license agreements or information on informal quality standards imposed on licensees, nor did his counsel address the legal consequences of his licensing activities during oral argument. He has not adequately refuted the Estate defendants' contention that his activities do not deserve trademark protection.”

In a companion ruling the same day, the Southern District ruled that Thomas Steinbeck couldn't terminate a 1983 agreement for the McIntosh and Otis literary agency to represent John Steinbeck works for “motion picture, television and ancillary interests.” “Because there is no indication, and plaintiff does not allege, that Elaine Steinbeck made any written or oral grant of the power to plaintiff while she was alive, and she specifically excluded him from her will, he has identified no instance in which the discretion to terminate M & O would inure to his benefit,” the district court concluded.

COPYRIGHT INFRINGEMENT/JURY INSTRUCTIONS

The U.S. District Court for the Middle District of Florida, Tampa Division, decided that a trial judge's refusal to issue a supplementary jury instruction on when copyright protection begins didn't justify a new infringement trial. Thornton v. J Jargon Co., 8:06-cv-1640-T-27TGW. Plaintiff John Thornton filed suit alleging that the “Take the Age Test” in programs for the theatrical production of Menopause the Musical was an unauthorized copy of his quiz “The Official Baby Boomer Qualifying Exam [BBQE].” A jury found no infringement. During deliberations, the jurors had asked the trial judge: “Is copyright retroactive from date of application? Should it matter?” Thornton then asked that the judge respond that “copyright protection comes into existence the day that it's authored and that registration is merely a formality.”

In denying Thornton's motion for a new trial, the district court noted: “In the instant motion, Plaintiff argues that because Defendants distributed the Age Test in theater programs before Plaintiff registered his copyright, the jury erroneously thought that Plaintiff's copyright was not protected at the time of the alleged infringement. However, the Court's Jury Instructions implicitly answered the jury's question because the instructions provided: 'The Court has determined, as a matter of law, that the plaintiff owns a copyright in [the BBQE], as registered with the U.S. Copyright Office.' ' In addition, in stating the two elements of direct infringement, the Court instructed the jury: '[First element] Plaintiff owns a valid copyright in the work (which the Court has already determined).' This left for the jury's consideration only the second element of whether Defendants copied constituent elements of the BBQE that were original. ' [T]here was sufficient evidence supporting the jury's finding that Plaintiff did not meet his burden on this element.”

The U.S. District Court for the Southern District of New York dismissed a trademark infringement claim by a son and granddaughter of author John Steinbeck in their Lanham Act challenge to licensing uses by the Steinbeck Heritage Foundation, to which Steinbeck's late widow Elaine had assigned the trademark rights in the late author's name and likeness. Steinbeck v. McIntosh & Otis Inc., 04 CV 5497(GBD). (This decision is related to complex issues over termination rights in Steinbeck copyrights. See , Penguin Group (USA) Inc. v. Steinbeck , 537 F.3d 193 (2d Cir. 2008) and other parts of Steinbeck v. McIntosh & Otis Inc.)

Starting early in the 1980s, Thomas Steinbeck licensed use of his father's name and image to third parties. Since 1999, the Steinbeck Heritage Foundation filed five federal registrations of John Steinbeck trademarks, including name and signature applications. The district court noted: “The linchpin of trademark protection for a licensor is control over the quality of the goods, such that the licensor may be identified as the source of goods. ' Only two of the uses Thomas Steinbeck lists (1982: Steinbeck Treatment Center; and, 1984: Steinbeck Credit Union) occurred prior to the earliest use date provided by the Foundation in its USPTO registration applications (1986: the Center for Steinbeck Studies or 'Steinbeck Studies'), and both of those uses involved a licensing arrangement. Thomas Steinbeck has not supplied either license agreements or information on informal quality standards imposed on licensees, nor did his counsel address the legal consequences of his licensing activities during oral argument. He has not adequately refuted the Estate defendants' contention that his activities do not deserve trademark protection.”

In a companion ruling the same day, the Southern District ruled that Thomas Steinbeck couldn't terminate a 1983 agreement for the McIntosh and Otis literary agency to represent John Steinbeck works for “motion picture, television and ancillary interests.” “Because there is no indication, and plaintiff does not allege, that Elaine Steinbeck made any written or oral grant of the power to plaintiff while she was alive, and she specifically excluded him from her will, he has identified no instance in which the discretion to terminate M & O would inure to his benefit,” the district court concluded.