Bit Parts

The U. S. District Court for the Southern District of New York denied a Rule 12(b)(6) motion to dismiss direct infringement claims by owners of celebrity photographs against operators of fan websites. BWP Media USA Inc. v. Hollywood Fan Sites LLC, 14-CV-121. District Judge J. Paul Oetken acknowledged: “Initially, the simple assertion that Defendants own websites and that Plaintiffs' photographs appear on those websites is insufficient to plead volitional infringement [required for direct infringement] by Defendants.” District Judge Oetken added, “It is unclear in this [2d C]ircuit whether conduct short of the actual infringement itself can give rise to direct liability.' But the district judge found: “[T]he complaint states that Defendants themselves reproduced the photographs and created thumbnail images ' the acts by which the alleged infringement took place. The complaint is short on certain details regarding the infringement, but assuming the truth of its allegations, Plaintiffs have asserted that Defendants engaged in volitional acts that constitute direct infringement of the Plaintiffs' right of distribution.” The court allowed the BWP Media plaintiffs to proceed on their claims of contributory and direct infringement, too. But Judge Oetken dismissed allegations brought under the federal Racketeer Influenced and Corrupt Organizations Act, 18 U.S.C. '1962. “The complaint provides no concrete information on the group's organization or hierarchy,” the judge observed. “Nor is there information from which it could be concluded that Defendants function as a unit or that they shared a common purpose, in the absence of any mention of the roles each Defendant played and the actions they took.”

Direct Seller WWE Wins Ex Parte Order for Stopping Merchandise Counterfeiters

The U.S. Court of Appeals for the Fifth Circuit decided that World Wrestling Entertainment (WWE) was entitled to an ex parte seizure order under the Trademark Counterfeiting Act, 15 U.S.C. '1116, to stop counterfeit merchandise sales at live events. World Wrestling Entertainment Inc. v. Unidentified Parties, 14-30489. The district court had turned down the WWE for failing to show “specific facts” regarding the identities of 'person[s] against whom seizure would be ordered.' But the appeals court noted: “WWE does not license third parties to sell merchandise at live events. Rather, it makes its own merchandise sales directly. The resulting confined universe of authorized sellers of WWE merchandise necessarily 'identifies' any non-WWE seller as a counterfeiter. WWE cannot know in advance the specific identities of counterfeiters who will present themselves at any given event, but it does know that any non-affiliated seller at or near an event is almost certainly a counterfeiter. In this case, therefore, the 'person[s] against whom seizure would be ordered' are readily identifiable as any non-affiliated person purporting to sell WWE merchandise at or near a live WWE event.”

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He is the 2014 recipient of the State Bar of Texas Entertainment & Sports Law Section's “Texas Star Award.” Stan can be reached at [email protected] or via www.stansoocher.com.