Northern California Courts Rule in Intellectual Property Cases

Several Judges on the U.S. District Court for the Northern District of California have recently released opinions in intellectual property cases, among them:

Wall Mountain Co. v. Edwards is a copyright infringement lawsuit.  According to court documents, Wall Mountain Co. realized that Gary Edwards was selling unauthorized copies of its DVDs on eBay in January 2008.  Wall Mountain asked eBay to remove the listings which it did, Mr. Edwards responded that he was not violating anyone's copyrights and was later able to sell the subject DVDs.  Wall Mountain sued for copyright infringement.  The case went into discovery and Mr. Edwards made the procedural mistake of failing to disclose his trial witnesses and exhibits as required by Fed. R. Civ. P. 37(c)(1), Chief Magistrate Patricia V. Trumball then sanctioned him by barring any witnesses in his copyright infringement defense, and Wall Mountain moved for summary judgment.

Judge Trumball granted the motion in part but denied it as to willfulness.  Wall Mountain requested reconsideration stating that without witnesses or evidence Mr. Edwards could not oppose the showing of willfulness exhibited by selling the DVDs after the takedown request.  Judge Trumball recanted and granted the remainder of the motion for summary judgment upon reconsideration, she entered damages of $25,000 for each of the two counterfeit DVDs sold for a total of $50,000.

The Ansel Adams Publishing Rights Trust v. PRS Media Partners, LLC is a trademark infringement action under federal and California law.  The facts aren't clear from the case, but this article explains that some guy bought a box of Ansel Adams negatives at a garage sale for $40 and now wants to sell posters of the prints.  As it relates to the present matter, the trust claims it has the ownership of the Ansel Adams mark which PRS is using to sell the stuff.  PRS moved to dismiss, as Judge Jefferey S. White noted:

Defendants argue that the Trust’s claim for false designation of origin is barred by the “Dastar Doctrine.” However, Defendants fail to define the “Dastar Doctrine” or otherwise show how the Supreme Court holding in Dastar Corp. v. Twentieth Century Fox Film Corp., (U.S. 2003) is applicable here. Therefore, the Court denies Defendants’ motion to the extent they rely on Dastar.

Under the Latham Act, a plaintiff can recover for the defendant stating a false origin of the goods it is selling in a manner that is likely to cause confusion about the origin of goods.  In Dastar, Fox owned the rights to a documentary called, "Crusades in Europe" based on Dwight Eisenhower's book of the same name.  Dastar bought eight beta cam tapes of the original Crusades in Europe Television series (now in the public domain) and edited them into a new documentary without giving any credit to the original series.  Fox claimed that this showed a false origin of goods because, Dastar claimed it, and not the original series was the origin of the documentary. Justice Scalia explained that origin of goods, "refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods."  Since Dastar put the elements of the film together and claimed it was the producer of the video, it is the origin of goods under the Latham Act and Fox cannot recover under that theory.

Their may be a Dastar defense in this case some place, but that is an issue for summary judgment.