SCOTUS to Consider Copyright Registration Circuit Split

By Peter R. Montecuollo and David G. Barker The Supreme Court of the United States granted certiorari in Fourth Estate Public Benefit v. Wall-Street.com to resolve a long-standing split among the United States Circuit Courts of Appeals concerning whether copyright owners must wait to file infringement suits until the United States Copyright Office has registered their works.  For instance, the Fifth and Ninth Circuits apply the “application approach,” which permits copyright owners to file infringement suits once upon applying for copyright registration.  Other circuits, including the Tenth and Eleventh Circuits, apply the “registration approach.”  In those circuits, failure to secure   Read More »

Posted in Copyright Litigation, IP and Technology Litigation | Tagged , , ,

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Ninth Circuit: Non-Exclusive Licensing Agent Has No Standing to Sue for Copyright Infringement

By Trisha Farmer Lau and David G. Barker In DRK Photo v. McGraw-Hill Global Education Holdings, LLC, the Ninth Circuit held that an Arizona stock photo agency could not sue McGraw-Hill under the Copyright Act for using images in textbooks without permission. The court recognized there was no bright line answer to this now oft-litigated issue, when it affirmed summary judgment in favor of the defendants, “because DRK is a nonexclusive licensing agent for the photographs at issue and has failed to demonstrate any adequate ownership interest in the copyrights to confer standing.” DRK Photo (“DRK”) licenses stock photos created   Read More »

Posted in Copyright Litigation | Tagged ,

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Ninth Circuit Construes Family Movie Act and Affirms Injunction Against Streaming Service

By Jacob C. Jones and David G. Barker In December 2016, a California federal court issued a preliminary injunction against VidAngel, Inc.’s custom-filtered video streaming service.  Thursday, in Hollywood Studios v. VidAngel, Inc., a Ninth Circuit panel affirmed the injunction, agreeing that Disney, Fox, and Warner were likely to prevail on their copyright infringement and technology circumvention claims and that VidAngel’s fair use defense would fail. VidAngel provided customizable filters that enabled users to skip scenes or silence objectionable content streamed to their devices.  The end-user purchased a newly-released DVD or Blu-ray disc from VidAngel, who would hold the physical media   Read More »

Posted in Copyright Litigation, IP and Technology Litigation | Tagged , , , , , , , , ,

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Octane Fitness and Highmark Apply to Ninth Circuit Attorney Fee Awards under the Lanham Act

On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).  Section 35(a) of the Lanham Act provides that “he court in exceptional cases may award reasonable attorney fees to the prevailing party.”  In determining whether a case is “exceptional,” courts in the Ninth Circuit are now required to apply a less “precise rule or formula,” and look to   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged , ,

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Ninth Circuit Could Reconsider Attorneys’ Fees Standard for Federal Trademark Litigation

In Octane Fitness v. ICON Health & Fitness (2014), the Supreme Court changed the standard for recovering attorneys’ fees in patent litigation.  Rejecting a “rigid and mechanical formulation,” the Court adopted a looser “totality of the circumstances” test.  Earlier this year, a Ninth Circuit panel held that the Octane Fitness standard did not apply in trademark cases.  But now the Ninth Circuit has ordered an en banc rehearing of the panel’s decision. In SunEarth, Inc. v. Sun Earth Solar Power Co., the district court permanently enjoined Sun Earth Solar Power from using “Sun Earth” in the U.S. because that use   Read More »

Posted in Patent Litigation, Trademark Litigation | Tagged , ,

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