Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In litigation between Comerica, who is charged with protecting the assets of music legend Prince, and a person who had recorded videos of several of Prince’s concerts and posted them on his YouTube channel, Comerica was granted summary judgment of copyright infringement because the videos are live representations of otherwise copyrighted songs. In addition, the Court granted summary judgment as to Comerica and against the defendant on the issue of whether the videos were a fair use because they were not commercial. The defendant had argued that the posting of the videos to YouTube was a fair use because he was not selling them. Yet, and interestingly, the Court found that he used the videos to drive traffic to his YouTube channel, which is a for profit-type, essentially commercial use. The opinion is here.

2. Unfortunately, the U.S. Supreme Court denied certiorari in a series of patent cases involving issues under Section 101 covering subject matter eligibility. As many know, the judicial interpretations of Section 101 have been inconsistent and quite broad, including to the point where certain medical diagnostic tests are being found patent ineligible. One case that many hoped SCOTUS would take up was Athena Diagnostics v. Mayo Colloborative, which engendered a highly fractured 86 page Federal Circuit opinion containing eight (8) different opinions, yet denying en banc review of the 101 issue. Many hoped this would be the vehicle SCOTUS would use to clarify its Section 101 jurisprudence. Unfortunately, the petition for certiorari was denied yesterday. This leaves it to Congress to resolve the situation, if at all, which does not seem particularly likely at this time.

3. In a recent opinion out of the Fifth Circuit Court of Appeals, the Court determined that statutory damages for copyright infringement are barred where the a first mode of infringement of a copyright (reproduction) pre-dates the registration, which would traditionally bar statutory damages under 17 U.S.C. Section 412, and a second mode of infringement (distribution) post-dated the same registration, the latter of which would traditionally be a fact pattern where statutory damages would be permitted. The issue was whether a different mode of infringement by the same defendant post-registration would permit an award of statutory damages for the second mode of infringement even though the same defendant began its infringing activity, in a different manner, before the copyright registered. The Fifth Circuit determined that no statutory damages were available at all to the plaintiff, stating, “section 412 bars statutory damage awards when a defendant violates one of the six exclusive rights of a copyright holder preregistration and violates a different right in the same work after registration.” Slip Op. at 10. The Court did not that “if there were a substantial gap in time between preregistration and postregistration infringement,” it could be a viable distinction that would allow post-registration statutory damages. Slip Op. at 10 n.4. The opinion is here. The takeaway here is to register your copyrighted works early.