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IP In the News

Nearly everyday there is something in the news about a copyright or trademark matter. Here’s some of the latest:
3/29/2013 Angelina Jolie wins Copyright Infringement Lawsuit
James Braddock v. Angelina Jolie, et al.
U.S. District Judge Dolly M. Gee granted the defendants Angelina Jolie, GK Films, LLC and FilmDistrict Distribution, LLC’s Motion for Judgment on the Pleadings, stating, “the common features of the works’ protectable elements, taken separately or together, would not lead a trier of fact to conclude that the works are substantially similar”.  In other words, the film In the Land of Blood and Honey is not a copyright  infringement of plaintiff’s book Slamanje Duse, as a matter of law.  The Court issued a 19 page decision explaining why Braddock is not entitled to have a jury hear his claim for copyright infringement.
The Court stated: To establish copyright infringement, a plaintiff must prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Because direct evidence of copying is not available in most cases a plaintiff can establish copying by showing (1) that the defendant had access to the plaintiff’s work and (2) that the two works are substantially similar.  It is well established that copyright law only protects expression of ideas, not the ideas themselves. To determine whether substantial similarity exists between the expressive elements of two works, courts apply a two-part extrinsic/intrinsic test. First, the extrinsic test is an “objective comparison of specific expressive elements.”  In conducting this test, the Court must distinguish between the protectable and unprotectable elements and determine whether the protectable elements are substantially similar.  Specifically, the extrinsic test looks for “specific, articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.” The “intrinsic test,” on the other hand, involves “a subjective comparison that focuses on whether the ordinary, reasonable audience would find the works substantially similar in the total concept and feel of the works.  In a Motion for Judgment on the Pleadings, the Court applies only the extrinsic test. (explaining that the intrinsic test is “exclusively the province of the jury”).” Citations omitted.

3/19/2013 First Sale Applies to Foreign Manufactured and Sold Goods
Kirtsaeng v. John Wiley & Sons, Inc.
The US Supreme Court ruled that first sale doctrine applies to copies of works lawfully manufactured and sold abroad but then imported into the United States without the copyright owner’s permission.  Such works are not an infringement under Copyright Law.
When a lawfully manufactured copy of a copyrighted work is sold to a consumer anywhere in the world, that consumer is then freely able to sell that copy in the United States.  Pursuant to the “first sale doctrine” such sale may not be restricted under Copyright Law. The copyright owner’s exclusive right to distribute copies of his or her works ends after the first sale of the item.
In  Kirtsaeng v. John Wiley & Sons, Inc., the book publisher sued a student from Thailand who, finding his text books were substantially cheaper in Thai book shops, had friends and family ship him the textbooks from home, which he then resold for a profit.  Publisher John Wiley & Sons brought an action against Kirstaeng for infringement of their exclusive distribution right as copyright holder. Both the District Court and the 2nd Circuit Court of Appeals agreed with the publisher.  The Supreme Court reversed.
It is important to understand this case deals only with the Copyright Law and the first sale doctrine. I mportation of foreign produced goods, also known as “gray market goods” or “parallel imports” may still be a violation of US law.
Section 42 of the Lanham Act, 15 U.S.C.A. §1142, empowers the U.S. Customs Service to refuse entry of gray market goods into the United States if those goods are physically and materially different from the domestic product, and thus are likely to cause consumer confusion.

The Law Offices of Angela Small Booth can record your registered trademark with the U.S. Customs Service to prevent the import of infringing goods including parallel imports.

 

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