Some Claims Dismissed in Unique Website Dispute

Vilana copied two of Gregerson’s photographs in various advertisements. Gregerson created websites where he discussed Vilana’s copying of the photographs and made unflattering statements about Vilana. Gregerson filed suit for copyright infringement, while Vilana filed a counterclaim for trademark infringement, cybersquatting, deceptive trade practices, and other claims.

The court easily granted summary judgment on the copyright claim. A comparison of the photographs showed they were identical. The court also granted summary judgment against the trademark and cybersquatting counterclaims, finding that Gregerson just made a descriptive use of Vilana’s trademarks in his metatags.

However, the court refused to grant summary judgment on the deceptive trade practices and related claims. There was evidence in the record that Gregerson made statements that Vilana is a thief, actively engaged in predatory lending, and a member of the Russian mafia. These issues and the damages on the copyright claim must be resolved at trial.


Puddle of Mudd Copyright Case Will Proceed for Now

This case centers around the alternative-metal group Puddle of Mudd. Patrick Spurgeon filed this suit claiming that, in 1999, he and Puddle of Mudd front-man Wesley Scantlin co-authored 2 songs. In August 2001, Puddle of Mudd released an album with a song substantially similar to the disputed songs.

The lawsuit was styled as a declaratory action of co-ownership rather than one for copyright infringement. Spurgeon argued this imposed the 5-year statute of limitations rather than the standard 3-year period for copyright cases. The district court rejected this argument and held the 3-year limitations period would apply. The court denied the motion to dismiss but hinted that Puddle of Mudd will likely win this case at the summary judgment stage.


Copyright Dispute Over Miss Hawaiian Tropics Bikini Photographs

Blair sued the various business entities that comprise Hawaiian Tropic, the popular tanning-product company that sponsors Miss Hawaiian Tropic contests across the globe. Hawaiian Tropic would hire Blair to take photographs of models at various Miss Hawaiian Tropic events. Hawaiian Tropic paid his expenses, but they never issued him a W2 or provided employee benefits. While at these events, Blair took pictures of the models when they were not competing.

After the events, Blair would send all the images to Hawaiian Tropics on computer disk. Blair claimed they had an oral agreement that Hawaiian Tropics could used the photographs in calendars if they provided him a photographer’s credit and that he would own the copyright. Hawaiian Tropics claims they own the photographs because Blair is a Hawaiian Tropics employe. Alternatively, Hawaiian Tropics claims they had a license to use the photographs as they chose and published a number of the photographs in calendars without giving Blair credit. He filed suit for copyright infringement and both parties moved for summary judgment.

The court denied the motions for summary judgment. The court held that Blair was not an employee of Hawaiian Tropics and owns the copyright to the photographs. As to the existence of a license, the court held that an issue of fact existed for the jury to determine.


Software Developer Contracts Itself Out of Copyright Infringement Claim

SunGard, a global software developer, entered into a software license with Piper for use of SunGard’s Global Trader software. The agreement was amended to include additional software products. The contract included two standard limited liability clauses: (1) Neither party shall be liable for incidental, indirect, consequential, or punitive damages; and (2) Any tort liability is limited to the license fees paid by Piper.

SunGard terminated the contract citing failure by Piper to pay fees, and Piper filed this lawsuit claiming breach of contract. SunGard counterclaimed for copyright infringement for Piper’s continued use of software products after the contract was terminated. SunGard sought Piper’s profits.

The court agreed with Piper that the copyright infringement claim arose of the contract. The court found that Piper’s profits were not direct damages to SunGard, and applying the limited liability provisions of the contract, the court held Piper could not be liable for copyright infringement. Parties have extensive freedom to structure intellectual property rights via contract and can sometimes contract themselves out of an intellectual property claim.