5th Circuit copyright decision involving the registration requirement and "probative similarity"

The 5th Circuit recently handed down a lengthy decision that addresses several basic copyright issues. Positive Black Talk Inc. v. Cash Money Records Inc., No. 03-30625, concerned a dispute between two New Orleans based rappers, each of whom recorded a piece called "Back that A** Up" (which the court dryly described as a "poetic phrase"). Here are some highlights:

First, there was a jurisdictional issue. The plaintiff filed suit the same day it mailed the application to register the copyright to the Copyright Office. Four days later, the Copyright Office received it. The case then went all the way through a jury trial. Although the 5th Circuit has previously held that a valid copyright registration is a jurisdictional prerequisite to a copyright suit, it has also interpreted this to require only that the Copyright Office receive the application, deposit, and fee before the plaintiff files suit. Here, it was even more lenient, holding that, although there was no subject matter jurisdiction when the suit was filed, the jurisdictional defect was cured when the Copyright Office received the application materials. The court relied on Supreme Court cases under other jurisdictional rules that permit courts to overlook "procedural-jurisdictional" defects that were cured before final judgment based on "considerations of finality, efficiency, and economy." (p.12).

On to the merits. The court's holding require some background. Copyright infringement requires (1) ownership of a valid copyright and (2) copying of protected elements of the plaintiff's work. The "copying" element is proven by (a) factual copying and (b) substantial similarity. Because copying's hard to prove, it can be inferred from (i) proof of access and (ii) "probative similarity."

The court first held that the "probative similarity" element doesn't require the "whole of the defendant's work [to] replicate[] the whole of the allegedly copied work." Instead, "the jury must consider the whole of the first work (including both copyrightable and non-copyrightable parts) and the whole of the second work and then compare the two works, looking for any similarities between their constituent parts." (p.17)

The court went on to say that, "In order to avoid confusion, a district court should explain that the purpose of the probative similarity inquiry is to determine whether factual copying may be inferred and that this inquiry is not the same as the question of substantial similarity, which dictates whether the factual copying, once established, is legally actionable." (p.18.) A "jury may find that two works are probatively similar if it finds any similarities between the two works (whether substantial or not) that, in the normal course of events, would not be expected to arise independently in the two works and that therefore might suggest that the defendant copied part of the plaintiff's work." (p.19)

Once copying is found, the court noted that the "substantial similarity" element must take into account "must take into account the qualitative importance of the copied material to the plaintiff's work" -- NOT whether it constitutes a substantial portion of defendant's work. (p.26 n.12). Further, the substantial similarity must focus on a comparison of the two parts of the works that are similar, not the works as a whole. (pp. 25-28.)

The court also held that newspaper articles that contained statements that the district court did not err in excluding newspaper articles that stated that the two songs were quite similar. The court said that "the question of substantial similarity is typically left to the fact finders' own impressions. Thus, a court could reasonably conclude that the views of persons not on the jury and not qualified to give an expert opinion on substantial similarity should not be admitted." (p.37.)

These look to be the major points, though court discussed a host of other topics too.

9th Circuit Officially Blesses "Famous Mark" Doctrine for Foreign Markholders

The 9th Circuit recently held that foreign mark owners can avail themselves of "famous" or "well-known" mark doctrine to assert rights in the United States even where they don't "use" the mark here.

In Grupo Gigante S.A. de C.V. v. Dallo & Co., No. 00-57118, the plaintiff GIGANTE was a Mexican grocery store chain of over 100 stores throughout Mexico, including 2 in Tijuana. The defendant was a San Diego company that began operating GIGANTE Market after the plaintiff's mark became known in the San Diego area.

The district court applied "famous mark doctrine" and held that the plaintiff's mark qualified for protection in San Diego because it had established secondary meaning there before the defendant opened up its first store. The 9th Circuit surveyed the sparse case law concerning the famous mark doctrine (including the eponymous MAXIM'S case, Vaudable v. Monmartre, Inc.) (sorry, can't find a link), and concluded that the famous mark doctrine was a sound corollary of the Supreme Court's venerable Tea Rose-Rectanus territoriality cases.

The 9th Circuit went on to hold that the famous or well-known mark doctrine applies when (1) the plaintiff can show secondary meaning in the contested geographic area and (2) that a substantial percentage of consumers in that market are familiar with its mark. The court suggested that intentional copying and actual confusion are relevant factors in determining whether the second element of this test is met.

The 9th Circuit seemed to think that there was no circuit court authority on famous or well-known mark doctrine, apparently ignoring two Depression-era cases involving the mark HUDSON BAY, in which both the 9th Circuit itself and the 5th Circuit approved and applied the doctrine.

The Court also went on to discuss the issue of laches in some detail.

10th Circuit Pours Out Beerman

The 10th Circuit recently gave a Christmas present to Coors Brewing, which was exonerated of ripping off the "Bob the Beerman" character created by a locally-renown Coors Field beer vendor.

The plaintiff created a persona he called "Bob the Beerman," who used certain crazy antics and quips to sell beer at Rockies baseball games. The character got to be so well-known that Bob (a/k/a Robert Donchez) was able to snag several paying gigs to do his "Bob the Beerman" routine outside of cozy confines of Coors Field.

He tried to sell Coors on the idea, but you know the story. Coors wasn't interested, yada yada yada, but lo and behold, a few months later, Coors comes out with a bunch of ads featuring beer vendors with crazy antics and quips.

Bob the Beerman became Bob the Lawsuitman, asserting a six-pack of claims against Coors. The district court drained the Beerman out of court on summary judgment. Thirsty for another round of litigation, Bob went to see what legal principles the 10th Circuit had on tap.

In its opinion, the 10th Circuit quickly and understandably cold-filtered out his trademark and service mark claims for the term "beerman." But it seemed curious that the 10th Circuit didn't find the nose of the right of publicity claim more interesting. It held that the right of publicity doesn't extend to a character created by the plaintiff, but only to the plaintiff's own identity. Although this would seem to conflict with the Restatement's view (section 46, comment d), and also some of the case law out there, the result is that Bob got a mug full of foam.

Cheers!