Cobb v. TripAdvisor LLC (20-cv-10111).

Maryland photographer William Cobb accuses TripAdvisor of misusing one of his photographs on its website. The complaint asserts that TripAdvisor stripped copyright management information from a Cobb photograph and then placed the photograph on TripAdvisor’s website in several places. The photograph, an aerial view of St. Petersburg, Florida, appeared on a “things to do” page, identified as https://www.thingstodo.avis.com, that appears to belong to Avis rather than TripAdvisor. No explanation is given as to why TripAdvisor is responsible for the placement of the photograph on this web page.

Comerica Bank & Trust, NA as Personal Representative of the Estate of Prince Rogers Nelson et al v. Habib (17-cv-12418).

Comerica Bank, on behalf of the estate of musician Prince, filed suit against Kian Andrew Habib after Habib posted footage he had filmed of two Prince concerts to Habib’s “PersianCeltic” YouTube page. Comerica operates an official Prince YouTube channel, and utilizes MarkMonitor to actively monitors the internet for potential infringements. When Comerica discovered the Habib videos, which included portions of five different Prince-written songs, it sent takedown notices to YouTube, which removed the videos. Habib filed counter-notifications, asserting that his videos constituted “fair use,” and Comerica filed suit, asserting copyright infringement and violation of the civil anti-bootlegging statute, 17 U.S.C. §1101. Habib in turn asserted that the takedown notices were “knowingly, material misprepresent[ations]” in violation of 17 U.S.C. § 512(f). The parties each moved for summary judgment.

Judge Sorokin granted Comerica summary judgment on the copyright claim, rejecting Habib’s argument that Prince’s copyright did not extend to live performances. Judge Sorokin disagreed, noting that in addition to the copyright in the sound recording, which covers the studio recordings, Prince had copyright in the musical compositions themselves. He further noted that courts have consistently held that live performances that differ somewhat in lyrics, temp, or arrangement are still protected by the copyright in the musical composition. Judge Sorokin rejected Habib’s fair use defense, finding that Habib’s videos had no educational or historic, and were essentially verbatim copying that was not transformative. He further noted that, while Habib had not monetized his YouTube account, lack of monetization does not affect liability, and that Habib’s use of the videos to drive traffic to his channel provides sufficient benefit to weigh against a finding of fair use. Judge Sorokin agreed that Comerica would lose revenue when someone viewed the Prince videos on Habib’s site, as well as lose control over the ability to preserve the reputation for excellence that Prince himself had established in strictly controlling his output. Judge Sorokin further granted Comerica summary judgment that the infringement was willful, finding that Habib’s continued posting of concert videos (of Prince and others) despite receiving multiple takedown notices demonstrated an unreasonable disregard for the rights of the performers, and his custom of filing counter-notifications parroting the statutory fair use factors without factual basis likewise is unreasonable.

Judge Sorokin further found in Comerica’s favor on the elements of the anti-bootlegging statute. This statute protects performances that are not themselves “fixed” in a tangible medium and thus entitled to copyright protection. He rejected Habib’s sole defense of implied license, which Habib asserted from a 2014 BBC interview in which Prince stated “[n]obody sues their fans… fans sharing music with each other, that’s cool.” Judge Sorokin agreed with Comerica that such a broad statement to the general public does not set out any license terms, does not demonstrate an intent to contract with Habib and has no relation to Habib himself, and thus did not create an implied license. While Judge Sorokin agreed that the elements of the statute were met, he withheld summary judgment to allow further briefing on whether the protections under the statute are inheritable such that Comerica has standing, an issue not yet addressed by the courts.

Judge Sorokin denied Habib’s request for summary judgment on his assertion that the takedown notices contained material misrepresentations, noting that MarkMonitor had, on Comerica’s behalf, had established at least a good faith belief that the Habib videos were infringing, including performing a fair use analysis, before the notices were sent. Finally, Judge Sorokin granted Comerica’s request for a permanent injunction prohibiting the posting of any videos of Prince performances.

Congratulations to Craig Smith and Eric Carnevale of my firm, Lando &Anastasi, who represent Comerica in this case!

Viglione v. 15 Beacon Street Corporation et al. (19-cv-12486).

Keith Viglione, a professional photographer whose work can be seen at https://www.617images.com/, accuses 15 Beacon Street Corporation, the owner of XV Beacon Hotel, and 15 Beacon’s president and director, Paul Roiff of infringing the copyright in a photograph of the Prudential Tower lit up with “GO PATS” in its windows. He asserts that 15 Beacon placed a copy of this photograph on the XV Beacon Hotel’s website, and that the copyright management information was removed from the photograph. He asserts vicarious copyright infringement against Roiff. The case is before Judge Stearns.

Tomelleri v. Taunton Rod and Gun, Inc. d/b/a Bears Den Fly Fishing Company (19-cv-12469).

Joseph Tomelleri charges Bears [sic] Den, a fly fishing shop, with copyright infringement and false copyright management information, accusing the shop of using his copyrighted fish illustrations without permission.   Tomelleri is a biologist/artist who has created more than a thousand illustrations of fresh-water fish which can be seen at his website, http://www.americanfishes.com. He asserts that Bear’s Den has reproduced and displayed modified versions of his illustrations, with Tomelleri’s copyright management information removed and Bear’s Den copyright information substituted in its place. Tomelleri cites the access that his site provides along with the “striking similarity” of the illustrations as proof of copying. This type of proof strikes me as problematic, given that Tomelleri’s illustrations are in a highly realistic, Audobon Society-type of mold, such that it would be difficult to determine whether an accused illustration is really a derivative of his work as opposed to an independently-created illustration (or, for that matter, a copy or derivative of someone else’s independent creation). In addition to this suit, Tomelleri filed three similar suits in Michigan, as well as suits in Arizona, Arkansas, Utah and West Virginia. The Massachusetts case has been assigned to Judge Gorton.

Mitchell Repair Information Company, LLC v. Kevin Truong d/b/a Kevin Nguyen (19-cv-12388).

Mitchell Repair is the owner of the copyright in an automotive diagnostic software program series known as “Mitchell On-Demand.” The software is available for license from Mitchell Repair, either as a perpetual license or as a twelve-month, renewable license. In either case, the license is non-transferable. Mitchell asserts copyright infringement against Kevin Truong, asserting that Truong obtained an unauthorized version of the software and sold copies to service stations in towns north of Boston. Mitchell also asserts violation of c. 93A.

Epstein v. Bruce Furniture, Inc. (19-cv-30050).

John Epstein had sued Bruce Furniture for breach of contract and copyright infringement relating to an advertisement campaign that Epstein alleges he prepared for Bruce Furniture. Judge Mastroianni denied Bruce Furniture’s motion to dismiss, finding the complaint made clear that it was the specific content, arrangement, and phraseology of the advertisements, and not the ideas contained therein (such as interest-free financing), that was being asserted, and that such information is plausibly within the realm of copyright protection. He further found that the merger doctrine and the “scenes a faire” doctrine did not negate the substantial similarity alleged in the complaint.

Adler v. Her Campus Media, LLC (19-cv-10087).

Judge Saylor denied Her Campus Media’s motion to dismiss or, in the alternative, for summary judgment, finding it premature to determine whether the use of Adler’s photograph constituted fair use or that Her Campus Media was shielded by the safe harbor provisions. Judge Saylor noted that the complaint alleges that Her Campus Media, which accepts and posts content from non-employees, utilizes an editorial staff to review proposed publications, including the submission that included the Adler photograph, and that a review of fair use and safe harbor would turn on facts such as the nature of the relationship between the website and its student contributors that preclude a finding at this early stage of the proceeding, much as it did in a different case involving Her Campus Media with a very similar fact pattern. Judge Saylor also denied the motion with respect to Mass. G.L. c. 214, § 3A, which provides a civil cause of action for any person whose name, portrait or picture is used in Massachusetts for advertising or trade without their consent. Her Campus Media asserted that, because the subject of the photographs had an independent right to their likenesses that Adler had not secured, an award of money damages to Adler would not be proper. Judge Saylor found this to be legally incorrect, because (a) Her Campus Media lacked the right to enforce the subjects’ rights under the Massachusetts law; (b) court-awarded monetary damages for copyright infringement would not qualify as a “use for advertising purposes or for the purposes of trade” within the meaning of the Massachusetts law; and (c) to the extent the Massachusetts law did somehow prevent an award for copyright infringement, it would likely be preempted by copyright law.