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U.S. Intellectual Property and New Media Law Update ONGOING BARBIE BATTLES Mattel, Inc. v. Barbie-Club.com, et al, 310 F.3d 293 (2d Cir. 2002) WHERE IS CAPTAIN AMERICA WHEN WE NEED HIM? Marvel Characters, Inc. v. Simon, 310 F.3d 280, (2d Cir. 2002) PROTECTING GOD’S WORD Merkos L’Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc. 2002 U.S. App. LEXIS 24139, (2d Cir. 2002) GRILLED AM General Corporation v. DaimlerChrysler Corporation 2002 U.S. App. LEXIS 23725, (7th Cir. 2002) ONGOING BARBIE BATTLES Mattel, Inc. v. Barbie-Club.com, et al, 310 F.3d 293 (2d Cir. 2002) In this case, Mattel has tried to use a creative interpretation of the Anti-Cybersquatting Consumer Protection Act to expand the locations where it might bring an in rem proceeding against a domain name. Mattel sued a collection of domain names owned by unrelated defendants in the Southern District of New York although their registries and registrars were elsewhere. Mattel based its claim of in rem jurisdiction from the deposit in the Southern District of certificates of ownership from the trademark registries. One of the defendants successfully moved to dismiss based on lack of in rem jurisdiction, although it seems that everyone in the room mis-named the defense as lack of subject matter jurisdiction. The Second Circuit pointed out the error of their ways and moved on to the actual question on appeal. Subsection 45 (d)(2)(A) of the Lanham Act provides that an in rem civil action may be filed in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located. However, subsection 45(d)(2)(C) of the Lanham Act states that the situs of the domain name in an in rem action should be deemed to be either in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registers all assigned domain names is located; or "(II) Documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court." Mattel took this to mean that you could bring the in rem action any place you got the registrar to send a title document. The Second Circuit disagreed making a clear distinction between in rem jurisdiction and the situs of the domain name, one being a perspective limitation on jurisdiction in the granting language of subsection 45(d)(2)(A), distinct from the descriptive language of the legal situs in subsection 45(d)(2)(C). Section 45(d)(2) assumes a temporal sequence that makes it impossible for Section (2)(c) to provide jurisdictional independence of subsection 45(d)(2)(A). The decision can be viewed at: http://laws.findlaw.com/2nd/017680.htm WHERE IS CAPTAIN AMERICA WHEN WE NEED HIM? Marvel Characters, Inc. v. Simon, 310 F.3d 280, (2d Cir. 2002) What is fascinating about the copyright law is all the little unexpected turns it has made over the last century, with the rights ebbing and flowing over relatively short time periods. The Copyright Act of 1976, Section 304(c) grants authors (or if deceased, their statutory heirs) an inalienable right to terminate a grant in the second fifty-six years after the original grant "notwithstanding any agreement to the contrary." The termination provision, however, has one exception: copyright grants in works created for hire cannot be terminated. The question here is whether a settlement agreement entered into after a work's creation stipulated that a work created for hire constitutes "any agreement to the contrary" under the 1976 Copyright Act. The Second Circuit concluded that it did. The work here was the iconic Captain America comics. For the un-initiated, Captain America, a.k.a., Steve Rogers was an army reject turned superhero who was charged with protecting America from all enemies especially Nazi spies. Mr. Simon created Captain America as an independent freelance project before shopping it around to various publishers. Mr. Simon contends that he sold the Captain America story to Marvel's predecessor for a fixed page rate plus a twenty-five percent profit on the comic book. Mr. Simon maintains that he created the second through tenth issue of this American classic on a freelance basis and orally assigned his interest in Captain America comics and the Captain America character (collectively the "Works") to Marvel's predecessor. Copyright registrations were obtained and Mattel is the original own successor. In 1969 Simon sued claiming that only he had the renewal rights. In a settlement agreement resulting from this suit, Simon acknowledged that his contribution to the Works was done as an employee for hire. Then came the Copyright Act of 1976, which wished to protect authors from erosion of their rights, by allowing termination. Simon filed a notice of termination pursuant to Section 304(c) of the 1976 Copyright Act claiming that he independently created the Captain America character and therefore had a right of termination under the 1976 Copyright Act. Mattel filed a declaratory judgment action premised on the fact that Section 304(c) of the 1976 Copyright Act did not apply to Simon because the settlement agreement expressly stated that he was not author of the work for copyright purposes. The district court held that Marvel was entitled to summary judgment based on the plain language of the settlement agreement that he created the work for hire which prevented Simon from exercising the termination right under Section 304(c) of the 1976 Copyright Act. The Court of Appeals did not agree. Neither res judicata nor collateral estopped barred Simon from asserting that he was the work's author because the factual issue of authorship was never fully and fairly litigated in the prior action and is quite different from the present claim to termination rights in the work. The Second Circuit found the term "any agreement to the contrary" includes a settlement agreement stating that the work was created for hire. The decision can be viewed at: http://laws.findlaw.com/2nd/027221.html PROTECTING GOD’S WORD Merkos L’Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc. 2002 U.S. App. LEXIS 24139, (2d Cir. 2002) Defendant Otsar Sifrei Lubavitch, Inc. ("Otsar") appeals the Districts Court's grant of a preliminary injunction to Merkos L'Inyonei Chinuch, Inc. ("Merkos"). The preliminary injunction enjoins Otsar from disseminating a new version of Siddur Tehillat Hashem, a prayerbook widely used within the Lubavitch movement of Hasidic Judaism, pending resolution of Merkos' claim that Otsar's new version of the prayerbook violates Merkos' copyright in the original Siddur Tehillat Hashem by copying verbatim Rabbi Nissen Mangel's English translation of the Hebrew prayers, which appears in Merkos' Siddur Tehillat Hashem. Defendant contended that the translation lacks the originality to be a copyrightable literary work and secondly, he asserts that even if the translation is copyrightable, Merkos does not hold the copyright. As to the former argument, translation requires exercise of careful literary and scholarly judgment. Quoting the district court, which indicated that "the translation of prayer...involves partly the precision of science but partly the sensitivity and spirit of art. Behind the works that are found in the Hebrew and the words that are used in the English are shades of meaning and subtlety that cannot be labeled functional." Accordingly, it found the translation copyrightable. The second question is a closer call. Who owned the copyright hinged on whether the work for hire inquiry was governed by the Copyright Act of 1976 or the Copyright Act of 1909. Under the 1976 Act, the actions in the absence of a written agreement between Merkos and Rabbi Mangel as to who did the translation, Merkos would be required to satisfy the multifactored test of Community for Creative Non-Violence v. Reid, 490 U.S. 730, 751-52, (1989) to demonstrate that the author, Rabbi Mangel, prepared the translation within the scope of his or her employment. However, under the 1909 Act Merkos would face the lower threshold of demonstrating that the works were prepared at its "instance and expense." Here the court found that the record at this point contains sufficient evidence in Merkos' favor on the question of whether it holds the copyright not to call into question the District Court's issuance of the preliminary injunction. Of course, Merkos made a prima facie showing of copyright ownership. Next Otsar argued that it did not infringe, first, because of fair use, since it added user friendly instructions to the translation and secondly, because copyright law does not permit the monopolization of the recommended form of a religious prayer. The Court of Appeals found there was not fair use since the entire work was copied and since the effect would be to destroy a large part of the market for the copyrighted work. With regard to the second argument, the author in effect argues that the translation presents a medium where the expression of an idea has effectively merged with the idea itself because the Mangel translation, which was endorsed by the late Rabbi Menachem Mendel Scheerson (the "Rebbe"), is the sole viable translation of a prayer book within the Lubavitch community. The court found that it does not appear to be the case from the record that the Lubavitch loyalist can only use a prayer book utilizing the Mangel translation. Finally, Otsar argues that the federal courts do not have jurisdiction to decide this dispute because adjudication of the dispute requires determinations of religious law and doctrine. It seems that one rabbinical court ruled that Rabbi Sholom Simpson (whose followers control Otsar) is the Rebbe's successor and the individual who should control Merkos. Merkos does not accept the authority of this ruling and aligns itself with a fraction of the Lubavitch community that believes that Rabbi Yehuda Krinsky is the Rebbe's successor. The Court simply rejected Otsar's argument and indicated that the Court can not decide a dispute that implicates religious interests. This must have been quite trial below. Just like kosher hot dogs, this one will ultimately be decided by the highest authority. The decision can be viewed at: http://laws.findlaw.com/2nd/027465v2.htm GRILLED AM General Corporation v. DaimlerChrysler Corporation 2002 U.S. App. LEXIS 23725, (7th Cir. 2002) This case is an appeal from a denial of a motion for preliminary injunction with a defendant in a declaratory judgment action based on trademark infringement and dilution. Chrysler claimed rights in the grill on its line of Jeeps, and that General Motors new H2, baby Hummer, contains a confusingly similar grill. The District Court found that DaimlerChrysler had virtually no chance of success on the merits and that the hardship to General Motors would weigh heavily against issuing the injunction. The basis for this was the showing that DaimlerChrysler had not objected to a similar grill on the original Humvee and Hummer vehicles which were directed to a different market. Obviously, a key question, in dilution is fame and when it occurred. The court extensively discussed both brand's histories. Both claims are based on its family of marks in its grills, since there are a number of different grills that Jeep has used over the years that fall within its definition. The court found that the DaimlerChrysler claims require proof that the family of marks was famous before General Motors adopted the alleged diluting mark. Thus, it has to show that the family of marks existed before General Motors adopted the alleged diluting mark. This fails since only since 1998, but not before, have all Jeep models had a grill that fit within DaimlerChrysler's definition of its family. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/7th/021816p.pdf |
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