Court Refuses to Remand Complaint Finding Likelihood of Copyright Preemption

In a February 16, 2017 ruling, Judge Katherine B. Forrest declined to remand a complaint alleging claims for unjust enrichment, conversion and restitution, and an accounting arising from the defendant's exploitation of a taped ice skating performance by the plaintiff, finding that the Copyright Act likely preempted the claims.  First, the Court found that the taped performance was subject to copyright protection on either of two grounds, "that the motion picture recording of [the plaintiff's] performance is a work entitled to copyright protection," and that the plaintiff's ice skating performance is "akin to a choreographed dance" which is entitled to protection.  Judge Forrest further found that the plaintiff's claims, which are based on the defendant's use and exploitation of the recorded performance, essentially allege that the defendant violated the plaintiff's reproduction and distribution rights "that are encompassed within the bundle of rights afforded to copyright owners,"  Lastly, the Court concluded that the plaintiff's claim "does not contain an extra element in addition to reproduction or distribution," which would avoid copyright preemption.

Court Finds Computer Program to Be a Work-for-Hire

In a February 3, 2016 ruling, Judge Colleen McMahon declined to dismiss the plaintiff’s copyright infringement claim, finding that the defendant’s computing programming services under a written agreement constituted a “work-for-hire” under the Copyright Act. Judge McMahon found that the defendant’s work was specially commissioned pursuant to a written agreement designating the work as a “work-for-hire.” On the issue of whether the work fit into one of the nine statutory categories for which the work-for-hire doctrine applies, the Court found that the computer programs written by the defendant were either compilations or contributions to collective works. Specifically, the Court wrote:

Here, [the defendant] created and combined a number of different computer programs to create [the plaintiff’s] new software system. This new system was comprised of various elements including an open source framework, compression software, a multi-protocol library written by [the defendant’s associate], a "referral" program, anti-fraud software, routing algorithms, and code for an entirely new . . . website. . . .The system as a whole is properly deemed a compilation of computer programs. Alternatively, the source code for each program can be deemed a contribution to the "collective work" that is [the plaintiff’s] system. Thus, [the defendant’s] work falls into one of the nine categories enumerated in [17 U.S.C.] § 101(2).

Court Denies Extraterritorial Application of Lanham Act

In a February 1, 2016 ruling, Judge Jed S. Rakoff issued a decision explaining his reasoning for the dismissal of the plaintiff’s trademark action seeking to find that the holder of a presumptively valid foreign trademark had abandoned the mark. The plaintiff and defendant had originally been commonly owned. After a corporate reorganization, the plaintiff became an exclusive licensee of the defendant’s trademarks outside the United States. The plaintiff began this action contending that the defendant had abandoned the foreign marks under the Lanham Act by failing to exercise any control, including quality control, over the marks. Judge Rakoff ruled that

as a matter of law, . . . the Lanham Act may not be applied extraterritorially to adjudicate the validity or ownership status of foreign trademarks. This is because it is firmly settled that “[a] trademark has separate legal existence under each country’s laws, and trademark rights exist in each country solely according to that nation’s laws.” . . . Consistent with that principle, courts in this Circuit have repeatedly held that determination of the validity of foreign trademarks in their foreign applications is not just a matter of choice of law but that, rather, United States courts are simply not in the business of adjudicating foreign trademark rights in such circumstances.