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Evidentiary Restrictions on Proving Copyright Substantial Similarity

The U.S. District Court for the Southern District of New York has issued a reminder of its ' and the Second Circuit's ' restrictive view on the use of experts' reports and other exhibits for determining substantial similarity in copyright infringement cases. District Judge Laura Taylor Swain found no substantial similarity between the 2007 Steven Spielberg-produced movie Disturbia and the 1942 short story “It Had to Be Murder,” by Cornell Woolrich, on which the 1954 movie Rear Window was based. The Sheldon Abend Revocable Trust v. Spielberg, 08 Civ. 7810(LTS)(JCF). (The October 2010 issue of Entertainment Law & Finance contains a retrospective article on the U.S. Supreme Court's 1990 decision regarding continued use of the Woolrich-story's derivative elements in Rear Window. See, www.ljnonline.com/issues/ljn_entertainment/25_10/news/154279-1.html. The article discussed the Disturbia complaint but was completed just before the Southern District issued its recent ruling.) In her summary judgment ruling, Southern District Judge Swain observed that the plaintiff had “submitted thousands of pages of exhibits.” The district judge then cautioned in a footnote: “The opinions of experts or other third parties are irrelevant to a determination of substantial similarity [though they may be used to show actual copying by a copyright defendant]. ' Nor are lists or charts, in any medium, of purported similarities relevant to a determination of substantial similarity. ' Furthermore, because 'the Court considers the works as they were presented to the public' ' earlier drafts of a book, manuscript, or screenplay are irrelevant. Opinions of third parties published in secondary materials [e.g., movie reviews] are also irrelevant.” In the Second Circuit, substantial similarity is instead determined from the perspective of the “ordinary observer.”

Profits Accounting for Use of Band Name Is Nondischargeable Debt

The U.S. District Court for the District of New Jersey affirmed a bankruptcy court ruling that violating a 1999 permanent injunction against unauthorized use of “The Drifters” vocal group name was a “willful and malicious injury” ' and therefore a nondischargeable debt under 11 U.S.C. '523(a)(6). In re Singer, 10-00045(FLW). The debt is an accounting of profits ordered by the U.S. Court of Appeals for the Third Circuit for Faye Treadwell, widow of manager George Treadwell, who originally obtained the rights in the “Drifters” name in the 1950s. New Jersey District Judge Freda L. Wolfson explained, in her recent unpublished opinion, that “whether we evaluate [debtor Barry] Singer's culpability subjectively or objectively, there is no lack of certainty that infringing upon one's trademark will result in injury. Singer acted willfully and purposefully to infringe upon [Faye] Treadwell's trademark. As a result, Treadwell suffered the injury of having her trademark infringed. Because this infringement is both the action Singer took and the injury Treadwell suffered, applying either an objective or subjective standard of culpability, Singer's conduct was clearly malicious.” Judge Wolfson added: “Singer went as far as negotiating with Treadwell for rights to the mark. When negotiations failed and the opportunity to license the 'The Elsbeary Hobbs Drifters' arose, Singer and an associate established Singer Management Consultants, Inc. for the express purpose of circumventing the injunction and acquiring the rights to 'The Elsbeary Hobbs Drifters.'” [Hobbs was a member of The Drifters.] Singer argued that his activity hadn't been malicious because he relied on the advice of counsel. But Judge Wolfson found: “Singer's reliance on counsel was neither reasonable, nor resulted in Singer's inability to act willfully. [Singer's lawyer] Lowell Davis ' was also held in contempt for 'violat[ing] the letter, as well as the spirit and intent, of [the 1999] injunction by engaging in an elaborate shell game through their creation of various business identities in an attempt to deceive Treadwell and the Court.'”

Third Amended Complaint Allowed in Karaoke Case

The U.S. District Court for the Middle District of Tennessee granted a motion by plaintiff Sony/ATV Music Publishing to file a third amended complaint in copyright litigation alleging unauthorized use of the publisher's songs in karaoke recordings. Sony/ATV Music Publishing LLC v. D.J. Miller Music Distributors Inc., 3:09-cv-01098. Defendants argued, among other things, that co-plaintiff Lowery Music Co. didn't own some of the songs at issue and that a state unfair-competition claim was preempted by federal copyright law. Senior District Judge John T. Nixon noted: “The revised pleading clarifies Plaintiffs' allegations concerning ownership of the music compositions and deletes 47 songs; eliminates any claim by Lowery Music Company, Inc., and dismisses that entity as a Plaintiff; and eliminates the Tennessee common law claims for unfair competition.” Judge Nixon added that “there has been no undue delay in requesting the amendment. Indeed, Plaintiffs' request for leave to amend the complaint, albeit for a third time, was less than three months after the filing of the initial Complaint. There is no allegation of lack of notice to the opposing party. ' [A]lthough Defendants assert that the series of requested amendments has created additional work for them and counsel, this alone does not rise to the level of prejudice.” But the district judge did grant a defense motion to dismiss infringement claims for six songs that hadn't been registered with the Copyright Office at the time the suit was filed.

Evidentiary Restrictions on Proving Copyright Substantial Similarity

The U.S. District Court for the Southern District of New York has issued a reminder of its ' and the Second Circuit's ' restrictive view on the use of experts' reports and other exhibits for determining substantial similarity in copyright infringement cases. District Judge Laura Taylor Swain found no substantial similarity between the 2007 Steven Spielberg-produced movie Disturbia and the 1942 short story “It Had to Be Murder,” by Cornell Woolrich, on which the 1954 movie Rear Window was based. The Sheldon Abend Revocable Trust v. Spielberg, 08 Civ. 7810(LTS)(JCF). (The October 2010 issue of Entertainment Law & Finance contains a retrospective article on the U.S. Supreme Court's 1990 decision regarding continued use of the Woolrich-story's derivative elements in Rear Window. See, www.ljnonline.com/issues/ljn_entertainment/25_10/news/154279-1.html. The article discussed the Disturbia complaint but was completed just before the Southern District issued its recent ruling.) In her summary judgment ruling, Southern District Judge Swain observed that the plaintiff had “submitted thousands of pages of exhibits.” The district judge then cautioned in a footnote: “The opinions of experts or other third parties are irrelevant to a determination of substantial similarity [though they may be used to show actual copying by a copyright defendant]. ' Nor are lists or charts, in any medium, of purported similarities relevant to a determination of substantial similarity. ' Furthermore, because 'the Court considers the works as they were presented to the public' ' earlier drafts of a book, manuscript, or screenplay are irrelevant. Opinions of third parties published in secondary materials [e.g., movie reviews] are also irrelevant.” In the Second Circuit, substantial similarity is instead determined from the perspective of the “ordinary observer.”

Profits Accounting for Use of Band Name Is Nondischargeable Debt

The U.S. District Court for the District of New Jersey affirmed a bankruptcy court ruling that violating a 1999 permanent injunction against unauthorized use of “The Drifters” vocal group name was a “willful and malicious injury” ' and therefore a nondischargeable debt under 11 U.S.C. '523(a)(6). In re Singer, 10-00045(FLW). The debt is an accounting of profits ordered by the U.S. Court of Appeals for the Third Circuit for Faye Treadwell, widow of manager George Treadwell, who originally obtained the rights in the “Drifters” name in the 1950s. New Jersey District Judge Freda L. Wolfson explained, in her recent unpublished opinion, that “whether we evaluate [debtor Barry] Singer's culpability subjectively or objectively, there is no lack of certainty that infringing upon one's trademark will result in injury. Singer acted willfully and purposefully to infringe upon [Faye] Treadwell's trademark. As a result, Treadwell suffered the injury of having her trademark infringed. Because this infringement is both the action Singer took and the injury Treadwell suffered, applying either an objective or subjective standard of culpability, Singer's conduct was clearly malicious.” Judge Wolfson added: “Singer went as far as negotiating with Treadwell for rights to the mark. When negotiations failed and the opportunity to license the 'The Elsbeary Hobbs Drifters' arose, Singer and an associate established Singer Management Consultants, Inc. for the express purpose of circumventing the injunction and acquiring the rights to 'The Elsbeary Hobbs Drifters.'” [Hobbs was a member of The Drifters.] Singer argued that his activity hadn't been malicious because he relied on the advice of counsel. But Judge Wolfson found: “Singer's reliance on counsel was neither reasonable, nor resulted in Singer's inability to act willfully. [Singer's lawyer] Lowell Davis ' was also held in contempt for 'violat[ing] the letter, as well as the spirit and intent, of [the 1999] injunction by engaging in an elaborate shell game through their creation of various business identities in an attempt to deceive Treadwell and the Court.'”

Third Amended Complaint Allowed in Karaoke Case

The U.S. District Court for the Middle District of Tennessee granted a motion by plaintiff Sony/ATV Music Publishing to file a third amended complaint in copyright litigation alleging unauthorized use of the publisher's songs in karaoke recordings. Sony/ATV Music Publishing LLC v. D.J. Miller Music Distributors Inc., 3:09-cv-01098. Defendants argued, among other things, that co-plaintiff Lowery Music Co. didn't own some of the songs at issue and that a state unfair-competition claim was preempted by federal copyright law. Senior District Judge John T. Nixon noted: “The revised pleading clarifies Plaintiffs' allegations concerning ownership of the music compositions and deletes 47 songs; eliminates any claim by Lowery Music Company, Inc., and dismisses that entity as a Plaintiff; and eliminates the Tennessee common law claims for unfair competition.” Judge Nixon added that “there has been no undue delay in requesting the amendment. Indeed, Plaintiffs' request for leave to amend the complaint, albeit for a third time, was less than three months after the filing of the initial Complaint. There is no allegation of lack of notice to the opposing party. ' [A]lthough Defendants assert that the series of requested amendments has created additional work for them and counsel, this alone does not rise to the level of prejudice.” But the district judge did grant a defense motion to dismiss infringement claims for six songs that hadn't been registered with the Copyright Office at the time the suit was filed.