JOLT Digest

Second Circuit Rules First Sale Doctrine Only Applies to Goods Manufactured Domestically
By Heather Whitney – Edited by Chinh Vo

John Wiley & Sons v. Kirtsaeng, No. 09-4896-cv (2d Cir. Aug. 15, 2011)
Slip Opinion

After the Supreme Court’s non-precedential decision in Costco v. Omega, 131 S.Ct. 565 (2010), it is no surprise that the nexus of the first sale doctrine and works manufactured outside of the United States remains in flux.  In Wiley, the Second Circuit affirmed the judgment of the District Court for the Southern District of New York, awarding statutory damages to book publisher John Wiley & Sons for copyright infringement after a jury trial. In a case of first impression, the Second Circuit held that defendant Kirtsaeng, a Thai student studying in the United States, was not entitled to a “first sale doctrine” defense under the Copyright Act when he resold  books imported from abroad, finding the doctrine inapplicable to copyrighted works produced outside of the United States.

The Library Journal provides an overview of the case and commentary on its significance to libraries. TechDirt criticizes the decision, arguing it makes reselling items lawfully purchased overly risky when the place of manufacture is uncertain because, under the opinion, the first sale doctrine would not apply to goods made overseas.  (more…)

Second Circuit Holds that Submission of Entire Copyrighted Work in Judicial Proceedings Constitutes Fair Use

By Kaethin Prizer – Edited by Esther Kang
Hollander v. Steinberg, No. 10-1140-cv (2d Cir. Apr. 5, 2011)
Summary Order hosted by Scribd.com

The Second Circuit affirmed the decision of the District Court for the Eastern District of New York, which had granted summary judgment in favor of the defendant in a copyright infringement suit.

The Second Circuit applied the traditional four-factor fair use test, 17 U.S.C. § 107, to filings in judicial proceedings. The court held that the grant of summary judgment for non-infringement was appropriate, because the filing of an author’s essays in their entirety in judicial proceedings constituted fair use.

The Copyright Litigation Blog provides an overview of the case.  (more…)

Kwan v. Schlein
By Raquel Acosta – Edited by Jonathan Allred

Kwan v. Schlein, No. 09-5205-cv (2nd Cir. Jan. 25, 2011)
Opinion hosted by Scribd.com

The Court of Appeals for the Second Circuit affirmed the District Court for the Southern District of New York, which denied summary judgment on plaintiff’s claim for copyright infringement because it was time-barred, and granted defendants’ motion for summary judgment to dismiss the claims. [Editorial note: the Second Circuit opinion incorrectly records that the district court granted appellant’s motion for summary judgment]. The circuit court also affirmed the district court’s order to dismiss defendants’ counterclaims without prejudice.

The Second Circuit held that where there is a genuine dispute regarding plaintiff’s ownership of copyright and the statute of limitations has run, plaintiff cannot then claim copyright infringement. In so holding, the court noted that whereas an infringement action may be commenced within three years of any infringing act, an action based on an ownership claim must be commenced within three years of the point in time plaintiff became aware of the dispute in ownership. A disputed claim to ownership cannot be repackaged as an infringement claim – the statute of limitations runs on the underlying issue.

Property, intangible questions whether the case was properly decided. PlagiarismToday presents an overview of copyright infringement and the statute of limitations. (more…)

U.S. appeals court affirms district court decision that a download is not a performance under the Copyright Act
By Greg Tang – Edited by Ian C. Wildgoose Brown

United States v. Am. Soc’y of Composers, Authors & Publishers, No. 09-0539 (2d Cir. September 28, 2010)
Opinion

On September 28, the United States Court of Appeals for the Second Circuit affirmed the ruling of the Southern District of New York that a digital download of a song does not constitute a public performance under section 106(4) of the Copyright Act. The court also vacated the district court’s assessment of fees for the blanket licenses that Yahoo! Inc. and RealNetworks Inc. sought from The American Society of Composers, Authors and Publishers (“ASCAP”), and remanded for further proceedings.

The holding in this case prevents ASCAP from “double-dipping” by receiving compensation for both copies and performances of its members’ musical works. It also provides much needed clarification on how license fees should be calculated for music streamed over the Internet.

JOLT Digest previously reported on the district court’s ruling that cell phone ringtones do not constitute public performances. BroadbandBreakfast.com and Bloomberg Businessweek each provide an overview of the case. The 1709 Blog and Internet Cases examine the court’s reasoning in detail. (more…)

Court Orders District Court to Reconsider Preliminary Injunction on “Catcher in the Rye” Sequel
By Katy Yang – Edited by Kassity Liu

Salinger v. Colting, No. 09-2878-cv (2d Cir. April 30, 2010)
Slip Opinion

The United States Court of Appeals for the Second Circuit vacated and remanded the judgment of the United States District Court for the Southern District of New York, which had granted Salinger’s motion for a preliminary injunction for copyright infringement and unfair competition.

The Second Circuit unanimously held that the Circuit standard for granting preliminary injunctions in copyright cases, applied by the District Court, was inconsistent with the four-factor test “historically employed by courts of equity,” set out in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 390 (2006), which now replaces the original standard. Although eBay was about a permanent injunction for patent infringement, the Second Circuit also held that it “applies with equal force (a) to preliminary injunctions (b) that are issued for alleged copyright infringement.” In so holding, the court explained that eBay strongly suggests that its scope presumptively extends to injunctions in any context. The court also affirmed the district court’s conclusion that Salinger is likely to prevail on the merits due to substantial similarity between the two works and the likely failure of Colting’s fair use defense. Finally, because the Circuit’s original standard for granting preliminary injunctions in copyright cases has been changed to the eBay standard, the court found it unnecessary to reach the constitutional issue of whether the Circuit’s original standard is an unconstitutional prior restraint on speech.

Bloomberg Businessweek provides an overview of the case and features a thorough analysis of the decision. The Am Law Daily and the New York Times summarize some of the legal issues in the decision. Stanford Law School’s Center for Internet and Society submitted an amicus brief arguing that courts should consider more factors before granting injunctions, which can be found here. (more…)