March 2012 — 6th Circuit Copyright Litigation Update

The 6th Circuit Court of Appeals and its subordinate district courts decided a total of eight cases involving copyright infringement claims in the month of March 2012:

Pleading Standards

Mertik Maxitrol GMBH & Co. KG v. Honeywell Technologies, Inc., No. 10-12257, 2012 US Dist Lexis 29264 (E.D. Mich. Mar. 6, 2012)

Mertik alleged that Honeywell manufactured and distributed unauthorized copies of a Mertik product based on Mertik’s copyrighted drawings, and brought a host of copyright, Lanham Act, and other tort claims.  Honeywell moved to dismiss under Rule 12(b)(6) and the Supreme Court’s Twombly and Iqbal decisions, arguing that Merck had not pled sufficiently plausible causes of action.  The court granted the motion as to several causes of action, but not as to the copyright claim.  There, Honeywell’s argument was that Mertik had failed to specify which of several Honeywell entities mentioned in the complaint took which allegedly tortious actions.  The court acknowledged case law holding that “collective allegations” are insufficient under Twombly/Iqbal, but distinguished them on the grounds that this complaint made materially identical allegations against each Honeywell entity.

 

Rule 60(b) Motions; Res Judicata; Statute of Limitations

Bridgeport Music, Inc. v. Deep Technology Music, Inc., No. 3:01-718, 2012 US Dist Lexis 30126 (M.D. Tenn. Mar. 7, 2012)

This lengthy report and recommendation from a magistrate judge ultimately denies a series of post-judgment motions filed by a late songwriter’s widow, the collective purpose of which was to reopen litigation between two other parties over copyrighted songs in which she claims ownership.  The rights at issue had previously been litigated in three separate cases decided by judges of the Eastern District of Michigan, and the parties’ voluminous briefing caused the motions to become “as murky as the Mississippi river in full flood.”  Making a long story short, the magistrate judge denied the motions on several grounds, including that they were barred by the widow’s 2006 settlement of other copyright claims with Bridgeport, the res judicata effect of a 2005 judgment, and the widow’s “constructive notice” of Bridgeport’s renewal filings with the Copyright Office.

 

Joint Authorship; Section 411(a) Requirement of Registration Before Filing Suit

Corwin v. Quinonez, No. 3:10 CV-2163, 2012 US Dist Lexis 32299 (N.D. Ohio Mar. 12, 2012)

Plaintiff and Defendant were members of the electro-pop band “Rediscover.”  Plaintiff sued for a declaration that he is a joint author of 31 of the band’s songs and entitled to an accounting of profits derived from them.  Defendant counterclaimed for a declaration of sole authorship.

Defendant won. Finding no guidance from the 6th Circuit for determining joint authorship, the court adopted the two-part “intention/contribution” test from Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991), which was also endorsed by the 7th Circuit in Erickson v. Trinity Theaters, 13 F.3d 1061 (1994) and several other district courts within the 6th Circuit.  After examining in detail the history of the parties’ relationship, the court found as a matter of law that the parties had never intended Plaintiff to be a joint author.  The court thus found it unnecessary to decide whether Plaintiff had ever made an independent contribution to the works.

The court did reject Defendant’s argument that the complaint was barred under 17 USC 411(a) by Plaintiff’s lack of a copyright registration, holding that the provision bars only infringement lawsuits, not declaratory judgment actions.

 

Attorneys’ Fees and Costs; Section 505

Chambers v. Ingram Book Co., No. 09-14731, 2012 US Dist Lexis 37125 (E.D. Mich. Mar. 20, 2012)

This decision awarded the full amount of legal fees and actual costs incurred by the defendants in this copyright infringement case.  Defendants had been awarded summary judgment in a prior order.  Determiing that an award of costs and fees is the rule rather than the exception in the 6th Circuit, the court applied the four nonexclusive factors from the Supreme Court’s Fogerty decision.  Here, all four factors weighed in favor of an award, as the court found Plaintiffs’ claims frivolous, unreasonable, and motivated by questionable intentions.

The court also found that the “considerations of compensation and deterrence” weighed in Defendants’ favor for the reasons explained by the 7th Circuit in Assessment Technologies of WI v. Wire Data, 361 F.3d 434 (7th Cir. 2004).  Specifically, quoting the 7th Circuit, the court held that”the presumption in favor of awarding fees [to prevailing defendants] is very strong.  For without the prospect of such an award, the [defendant] might be forced into a nuisance settlement or deterred altogether from enforcing his rights.”  The court also interpreted Section 505′s provision for “full costs” to include all actual costs, not just taxable costs–an issue on which the 6th Circuit has not yet directly spoken.

 

Access and Substantial Similarity

Gooch v. Raymond, No. 3:09-cv-00891, 2012 US Dist Lexis 38180 (M.D. Tenn. Mar. 21, 2012)

This decision upheld a magistrate judge’s report and recommendation to dismiss Plaintiff’s copyright infringement lawsuit.  Plaintiff claimed that Defendant Usher’s song unlawfully sampled her own.  But Plaintiff provided no evidence that Defendants ever had access to her song.  Moreover, the “expert” whose affidavit Plaintiff had used as evidence of substantial (and even “striking”) similarity later recanted that testimony during his deposition after being presented with prior art that contained the same accused melody.

 

Discovery; Protective Orders

Dassault Systemes, SA v. Childress, No. 09-10534, 2012 US Dist Lexis 38805 (E.D. Mich. Mar. 22, 2012)

This case involves alleged copying of copyrighted business software.  In a prior criminal law enforcement action, the FBI had seized computers and records from Defendant and used them in grand jury proceedings.  The court had previously authorized Plaintiff to subpoena those records for use in this case.  Defendant moved for entry of an additional protective order placing limitations on that discovery.  Specifically, it wanted an independent technician to examine the seized computers for presence of the disputed software and to disclose his findings to counsel and the Court before the computers were produced.  Defendant also sought to bar discovery of grand jury materials.  The court denied the motion, finding the information discoverable and outside the protection afforded to grand jury materials under the criminal rules.

 

Subpoenas to Discover Defendants’ Identity; Joinder

Patrick Collins, Inc. v. John Does 1-23, No. 11-cv-15231, 2012 US Dist Lexis 40536 (E.D. Mich. Mar. 26, 2012)

This is one of many mass copyright lawsuits against individuals accused of downloading copyrighted movies via BitTorrent.  The complaint joined together 23 John Does, and on that basis issued subpoenas to each Doe’s ISP to discover the identity of the persons associated with the Does’ IP addresses.  Counsel for the Does sought to quash the subpoenas on the grounds that the Does had been misjoined in one lawsuit.

The court agreed.  After a lengthy dissertation on how BitTorrent and peer-to-peer file sharing works, the court concluded that simply because multiple computers were involved in the distributed file transfer process did not suggest that their owners intentionally worked in concert with each other to perform the transfer.  The court also found it likely that the various defendants would present different and conflicting defenses.  The Does did not, however, otherwise challenge the subpoenas on their merits.  So the court quashed them as to everyone except Doe 1, and required Plaintiff to file separate lawsuits against Does 2-23.

 

Amendments to Pleadings

Ashley Furniture Industries, Inc. v. American Signature, Inc., No. 2:11-cv-00427, 2012 US Dist. Lexis 41377 (S.D. Ohio Mar. 27, 2012)

Plaintiff had already brought several trademark infringement and related claims against one of the Defendants in a prior lawsuit.  In this case, it had alleged copyright infringement against two Defendants.  The parties conducted several months of discovery on the Defendants’ fair use defense.  On the deadline set by the court for amending pleadings, Plaintiff sought to add several more counts of copyright infringement and other claims, and to drop the second Defendant.

Defendants opposed to additional claims, arguing at length that Plaintiff had been aware of the basis for its new claims all along.  The court gave this argument short shrift, reasoning that the Plaintiff probably did have some of the information all along, but that it had gained more during discovery, that it brought its motion within the timeframe set by the court, and that the rules liberally favor the ability to amend.  The court found no bad faith in Plaintiff’s request.