Beverly A. Berneman
Kfir Moyal is a pop artist who has created commissioned pieces for celebrities like the Kardashians, Paris Hilton, Gloria Estefan, Flo Rida and Lil’ Kim. His signature style is to take a photograph and add a glittery sheen to it.
Douglas Kirkland is a Hollywood photographer with a long career who has photographed celebrities like Marilyn Monroe, Elizabeth Taylor and Marlene Dietrich.
In 2017, Kirkland sued Moyal for copyright infringement. Kirkland alleged that Moyal used some of his photographs, including one of Bridget Bardot. Moyal gave the photograph his classic treatment and titled his creation “Star Struck” (See picture). Moyal didn’t have a license from Kirkland to create the work. As the litigation went on, Moyal’s counsel withdrew from the case. Moyal didn’t appear after that and he didn’t retain substitute counsel. A default judgment was entered against him for $204,787.00 in damages along with a permanent injunction.
Kirkland discovered that Moyal was going to open an exhibit in a gallery in the Beverly Hills Sofitel hotel. The posters for the exhibit on Instagram and Twitter appeared to feature Star Struck. Since a permanent injunction against using Moyal's version of the photo was still in place, Kirkland went to court to enforce the permanent injunction.
Moyal says that he had no idea an injunction was entered. But that’s not going to help him.
WHY YOU SHOULD KNOW THIS. Kirkland’s original photograph was copyrighted in the 1970s. Moyal’s Star Struck was a derivative work of Kirkland’s original photograph. The ability to create derivative works is one of the bundle of rights included in copyright ownership. So, Moyal needed Kirkland’s permission to create the work. Let’s now focus on the injunction. Even though Moyal’s attorney withdraw from the first case, Moyal couldn’t just ignore it. Even if he didn’t know about the injunction, he knew that Kirkland was objecting to his use of the Bridget Bardot photograph. So, the second suit may have more dire consequences if Moyal’s knowledge of the infringement from the prior suit is considered willful infringement. There lies a cautionary tale in two ways. First, don’t use someone else’s content without either seeking permission for the use or getting an opinion of counsel that the use will be non-infringing or fair use. Second, never ignore litigation.
Beverly A. Berneman
For about 20 years, Lucky Brand Dungarees, Inc. has been battling Marcel Fashions Group, Inc. over their trademarks. The US Supreme Court finally ended Lucky Brand’s struggle. At least for now.
Marcel received a trademark registration for “Get Lucky” for jeans. Lucky Brand received a trademark in “Lucky Brand”, also for jeans. Then the parties fought each other through three separate rounds of litigation over 20 years. The first round ended in a settlement in which Lucky Brand agreed not to use “Get Lucky” and Marcel released all claims. In the next round, when Marcel sued Lucky Brand, Lucky Brand brought up the settlement agreement in its pleadings but then didn’t address it again. Then there was the third round that ricocheted between the District Court and the Second Circuit Court of Appeals. At issue was whether Lucky Brand could assert the settlement agreement as a defense in the third round of litigation. The case ended up before the US Supreme Court. Justice Sonia Sotomayor, writing for the Court, held even though Lucky Brand didn’t litigate the defense in the second round, Lucky Brand could still use the defense in the third round.
The key to the decision was that Marcel was alleging different conduct in the second round than it did in the third round. Justice Sotomayor wrote, “[B]ecause the two suits here involved different marks and different conduct occurring at different times, they did not share a “common nucleus of operative facts.” However, if the third round of litigation involved the same nucleus of operative facts that had already been adjudicated Lucky Brand would not have been able to use the settlement agreement in its defense.
WHY YOU SHOULD KNOW THIS. When dealing with any type of lawsuit, a party can have a lot of different claims and defenses. Each of them should be addressed as completely as possible during the litigation. That’s because, generally, once an issue is raised and fully litigated, a party can’t try to re-litigate in a subsequent lawsuit. This is generally called “issue preclusion”. In the Lucky Brand case, the courts referred to it as “defense preclusion.” In the world of litigation, the effect would be the same. Lucky Brand wouldn’t be able to use the settlement agreement. But, if the same parties keep suing each other over different issues, claims and defenses may not be lost.
Beverly A. Berneman
Two recent US Supreme Court cases give a loss for the State of Georgia and a win for the State of North Carolina.
State of Georgia’s Loss
The State of Georgia makes the simple text of its state statutes available to anyone who wants to look at them. Georgia hired a company to annotate the statutes featuring citations, an analysis of the statutes and opinions from the state’s attorney general. A company named Public.Resource.Org. Inc. copied and distributed the annotated version of Georgia’s statutes without paying for it. Georgia sued Public.Resource.Org for copyright infringement. The Supreme Court ruled that Georgia cannot sue for the copying and distribution of the annotated version of the state’s statutes. Chief Justice John Roberts wrote the opinion for the Court. Justice Roberts invoked the doctrine of “government edict” which means that public officials who create a governmental work cannot copyright their works. Justice Roberts pointed out that allowing a governmental unit to withhold access to government information would create a “first class” and an “economy class” of access to public information.
North Carolina’s Win
In 1996, a marine salvage company found the sunken slave ship, the Revenge. North Carolina commissioned a marine salvage company to resurrect the ship. The Revenge had been captured by the famous pirate Edward Teach (Blackbeard) and he had used the ship to conduct his piratical activities for about a year. The ship ran aground off the coast of North Carolina in 1718. The salvage company hired Frederick Allen to record videos and take pictures of the operation. Frederick registered the copyright in the works. North Carolina published some of the videos and photos. Frederick sued North Carolina for copyright infringement. The US Supreme Court affirmed the dismissal of Frederick’s lawsuit on appeal. Justice Elaina Kagan, writing for the Court, explained that under the doctrine of sovereign immunity, a state cannot be sued without its permission. Frederick tried to rely on the Copyright Remedy Clarification Act of 1990 (CRCA) which was supposed to remove a state’s sovereign immunity from copyright infringement cases. But a prior case decision had held that Congress didn’t have the constitutional authority to abrogate sovereign immunity. It’s interesting to note that Justice Kagan believed that an abrogation statute, if properly drafted, could have created a right of action against a state for copyright infringement.
WHY YOU SHOULD KNOW THIS. These two cases show parameters of copyright protection when dealing with a governmental unit. In the Georgia case, if a private company had owned the annotated statutes, it would have had the right to enforce the copyright. But Georgia owned the annotated statutes so it had to make them available to the public. In the North Carolina case, the problem was a poorly worded statute. Nonetheless, the holding stands. States don’t have to pay to use copyrighted works.
Beverly A. Berneman
Zazzle, Inc. is an on-line marketplace for imprinted merchandise. Zazzle will then imprint the image on things like coffee mugs, t-shirts and, these days, face masks. Zazzle uses stock images but it also allows someone to upload their artwork or a graphic.
Greg Young Publishing Inc. (“GYPI”) is the licensing agent for various artists. GYPI sued Zazzle for using images belonging to its clients. Zazzle’s defense was that it relies on the user certification process so it shouldn’t be held liable. GYPI gave Zazzle a catalog of GYPI’s images and Zazzle kept on using the images anyway. Obviously, the user certification process didn’t work. A jury found that Zazzle’s infringement was willful and returned a verdict in favor GYPI in the amount of $460,800. The trial court reversed the jury’s holding that GYPI didn’t present sufficient evidence that Zazzle acted willfully. The damages were reduced to $351,000. The trial court also denied GYPI’s request for attorneys’ fees despite the fact that GYPI was the prevailing party. The trial court believed that Zazzle’s defense was objectively reasonable.
The Ninth Circuit Court of Appeals reversed the trial court on the issue of willfulness. The Ninth Circuit held that a reasonable jury could have found that Zazzle acted recklessly by knowingly relying on obviously insufficient oversight mechanisms. The Ninth Circuit did not reverse the trial court’s denial of attorneys’ fees but reserved the issue to be revisited considering the finding of willfulness.
WHY YOU SHOULD KNOW THIS. The U.S. follows the “American Rule” when it comes to fee shifting in a law suit. The aptly named American Rule means that parties to a lawsuit pay their own attorneys’ fees unless a statute or contract provides otherwise. The Copyright Act allows the recovery of attorneys’ fees by the prevailing party. Fee shifting in a copyright infringement case can vastly change the economic dynamic of bringing or defending a suit. Exposure to attorneys’ fees can have a chilling effect on vigorous advocacy. So, the courts have developed a standard for fee shifting. A claim or defense has to be “objectively reasonable”. In other words, do you have a good faith basis to argue your position? If you don’t and the other side is the prevailing party, you pay their attorneys’ fees. This leaves room for parties to come up with novel and innovative arguments without fearing an attorneys’ fees burden. In Zazzle’s case, just relying on someone else saying, “Yes, own this”, wasn’t objectively reasonable.