Remembering another lousy year with a countdown of the most ill-considered, unsatisfying and wrongly-decided copyright rulings of 2022
Global conflicts, surging inflation and a lingering pandemic have made for another pretty awful year. So what better way to commemorate 2022 than with a look at the worst copyright decisions from coast to coast? Remember: the smaller the numbers, the bigger the misses. Who’ll be number one this year? Only one way to find out. Let the countdown begin!
5. NOCO v. Shenzhen Dingjiang Tech. Co.
NOCO manufactures and sells car battery accessories. It also files lawsuits—lots of them. The company has brought over 300 cases since 2017, often using copyrighted product images as a technical hook to shut down undesired resellers who advertise its products at below retail prices. But as far as opportunistic legal actions go, NOCO’s copyright claim against Shenzhen Dingjiang Technology Co. d/b/a Topdon is entirely next level.
NOCO and Topdon both produce portable jump starters, and both advertise that their products can fit in the palm of your hand:
To be clear, the products themselves aren’t at issue. NOCO is claiming that Topdon infringed the copyright in NOCO’s photograph by creating its own photograph depicting its own hand-held jump starter being held in a model’s hand. Topdon brought a motion to dismiss, arguing that once this unprotectable idea was filtered out, the images aren’t substantially similar as a matter of law. Aside from differences in lighting, depth of field, and the presence of a car battery in Topdon’s photo, Topdon’s product isn’t even being held in the same hand as NOCO’s.
In the court’s January 2022 opinion, Northern District of Ohio Judge Dan Aaron Polster acknowledged that photographs are only entitled to “thin” copyright protection when the range of creative choices available in producing the work is narrow. The decision also recognized that “there are relatively few ways that a hand-held device can be displayed.” Despite the overwhelming and obvious differences in expression between the parties’ images, the court denied the motion to dismiss and allowed NOCO’s case to proceed.
The opinion is especially frustrating given the court’s comment that it was “concerned about plaintiff’s flooding the district’s docket with infringement cases, particularly with a case such as this, which appears to be very weak.” But instead of actually discouraging NOCO from using litigation as an anti-competitive business tactic, the decision only ensures that Topdon will need to continue spending money to either settle or defend this baseless lawsuit.
4. Gregorini v. Apple Inc.
Another year, another missed opportunity for the Ninth Circuit to provide some long-needed clarity on motions to dismiss in substantial similarity cases involving literary works. Instead, the court gave us Gregorini v. Apple Inc., a four-paragraph unpublished memorandum disposition containing absolutely no analysis or comparison of the two works at issue (Francesca Gregorini’s film The Truth About Emanuel and M. Night Shyamalan’s AppleTV+ series Servant).
The works are actually quite different despite their shared premise of a grieving mother who believes a therapy doll is her deceased child—a concept the plaintiff in Gregorini conceded was unprotectable. Rather than comparing the two works as a whole to determine whether substantial similarity was plausible (as required by the Supreme Court per Bell Atlantic v. Twombly), the Ninth Circuit panel held in February that so long as the commonalties were more than de minimis, it was inappropriate for the lower court to dismiss the case prior to expensive discovery and expert testimony.
Then, just eight days later, a different Ninth Circuit panel issued another unpublished opinion in Carlini v. Paramount Pictures, a case involving two works that both featured a woman able to read men’s thoughts. But in Carlini, the panel engaged in a “careful review of the two works” and concluded that the plaintiff couldn’t plausibly allege substantial similarity in protectable expression as a matter of law.
The Carlini court acknowledged that both works “follow a woman who gains the ability to hear men’s thoughts, but the plots diverge substantially from there.” Elements shared by the works were generic and unremarkable given the plot premise, while others were standard scènes à faire of a romantic comedy. Unlike Gregorini, there was no suggestion in Carlini that expert testimony was needed to distinguish creative elements from scènes à faire, or that discovery could “shed light” on the substantial similarity issue. The court affirmed the district court’s order, and the case was dismissed.
I’ve written several times before (here, here, and, oh yeah, here) about the sorry state of affairs in the Ninth Circuit when it comes to substantial similarity lawsuits involving literary works. Despite hearing more of these disputes than any other federal circuit in the country, the Hollywood Circuit still hasn’t issued a single published decision involving a pleading-stage dismissal of one of these cases.
Sure, there have been plenty of unpublished dispositions (which are supposed to have no precedential value), but these rulings are usually extremely cursory, and the results have been all over the map. It’s beyond time for the circuit to offer clear guidance to content creators, lawyers, and district court judges. Pretty please?
3. McGucken v. Newsweek LLC
In March, McGucken v. Newsweek LLC became the latest Southern District of New York decision to throw shade on the Ninth Circuit’s longstanding “server test”—the rule that protects websites from liability if they embed or link to copyrighted content stored on someone else’s server. The court held that Newsweek displayed McGucken’s photograph of a rare ephemeral lake by embedding the photo from McGucken’s Instagram page without his permission.
As a technical matter, this just isn’t correct. Newsweek didn’t host, possess or “display” anything other than a piece of embed code. That code snippet (which is conveniently supplied by Instagram itself) simply provided instructions for the end user’s browser to retrieve McGucken’s photograph from Instagram’s server. In this respect, “embedding” an image is no different than linking to an image. In both cases, it’s the end user’s computer that’s doing the displaying, not Newsweek. If Instagram or McGucken were to delete the photo or disable the embed feature, the image would no longer appear.
In rejecting the server test, Judge Katherine Polk Failla effectively ruled that Newsweek could be directly liable for infringement simply because it facilitated someone else’s public display. If this is indeed true, then millions and millions of other websites are also committing acts of direct infringement, because embedding third party content and resources is a ubiquitous and fundamental feature of the internet.
In 2018, when Goldman v. Breitbart became the first S.D.N.Y. court to reject the server test, then-Judge Katherine Forrest tried to offer reassurance that “strong defenses to liability” would help mitigate the effects of the court’s ruling and that “numerous viable claims should not follow.” But in McGucken, the court denied summary judgment, not only as to the server test, but on Newsweek’s implied license and fair use defenses too. Not surprisingly, the case settled less than three weeks later, once again dashing any hope that the Second Circuit Court of Appeals might step in and right the ship.
2. Alexander v. Take-Two Interactive
In September, after over four years of litigation, a Southern District of Illinois jury found that Take-Two’s realistic depiction of wrestler Randy Orton in the “WWE 2K” video game series infringed tattoo artist Catherine Alexander’s copyrights in Orton’s tattoos. From a purely economic standpoint, Alexander’s victory was hollow; the jury only awarded her $3,750 in actual damages.
But the damages award (which works out to a measly $71 per month during the time the case was pending) isn’t the problem. As I explained in my 2020 worst-of list, this case never should have gone to a jury in the first place. To add insult to injury, Judge Staci Yandle refused to recognize a de minimis defense and refused to give the jury any instruction on implied license—even though both parties requested one. The judge also refused to give defendants’ proposed jury instruction on waiver, even though the plaintiff hadn’t objected to it. Following a four-day trial, a hamstrung jury found in favor of Alexander.
Simply put, the ruling calls into question the ability of tattoo owners to control the right to make or license realistic depictions of their own likenesses. At the same time, content creators now need to worry about making even incidental reproductions of a copyrighted tattoo design without permission, which could deter them from accurately depicting an individual’s identity in any number of expressive works protected by the First Amendment. Talk about a tattoo fail.
1. Morford v. Cattelan
While I’m not usually one to generalize, I’m going to offer a few generalizations: I think it’s a good bet that people who pay $120,000 for a banana duct-taped to a wall have too much money on their hands. I’m also pretty sure that someone who files a lawsuit claiming copyright in the idea of a banana duct-taped to a wall has too much time on his hands. And I can say with virtual certainty that a judge who doesn’t take the earliest opportunity to throw out a lawsuit claiming copyright in the idea of a banana duct-taped to a wall is going to earn a top spot in my list of the worst copyright decisions of the year.
The plaintiff, conceptual artist Joe Morford, created a work called “Banana and Orange.” The work consists of an artificial banana and an artificial orange, each duct-taped to a piece of green construction paper. In 2008, Morford’s concoction appeared for less than two seconds out of a nine minute YouTube video seen by fewer than 500 people. In 2015, Morford posted “Banana and Orange” to his Facebook page, where it was “liked” by all of five people.
Then, in 2019, artist Maurizio Cattelan hit paydirt with “Comedian,” a piece he exhibited at Art Basel Miami Beach featuring a banana duct-taped to a white wall. Upon seeing Cattelan’s success, Morford proclaimed to his handful of Facebook followers: “I did this in 2000. But some dude steals my junk and pimps it for 120k+ in 2019. Plagiarism much?” The inevitable lawsuit soon followed.
Morford’s complaint should have been left to rot. The idea of duct taping a banana to a wall isn’t protected by copyright, so in order to state a claim, the plaintiff was required to plausibly allege that Cattelan copied the expressive elements of his work. Morford didn’t do this. Putting aside his woefully conclusory and deficient access allegations, Morford alleged no substantial similarity between the two works beyond their unprotectable idea.
Cattelan’s “Comedian” used a real banana taped directly to a white wall instead of an artificial banana attached to green construction paper bordered by masking tape. The banana and duct tape are also affixed at different angles in the two pieces, making it clear that Morford is seeking protection in the underlying idea, which isn’t proper.
Unfortunately, the court didn’t seem to get any of this. Judge Robert N. Scola, Jr. had several different ways to toss this case, whether based on a lack of plausible access, the idea/expression dichotomy, or a palpable lack of substantial similarity as a matter of law. Instead, the court allowed the lawsuit to proceed, and Cattelan is still fighting it to this day. Morford v. Cattelan is a horrible opinion based on an absurd lawsuit based on a silly art installation, and it earns the distinction of being the worst copyright decision of 2022.
Well, there you have it—the worst copyright rulings of 2022, according to yours truly. Now it’s your turn to weigh in. Let me know your thoughts in the comments below or on your favorite social media platform @copyrightlately. And don’t forget to keep your feet on the ground and keep reaching for the stars in 2023!