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Pleading Removal of Copyright Management Information Under the DMCA (and a Related Trademark Claim)

In Fischer v. Forrest, 14 Civ. 1304 (PAE); 14 Civ. 1307 (PAE) (S.D.N.Y. Jan 13, 2015), the court denied a Rule 12(b)(6) motion to dismiss a suit alleging copyright and trademark infringements. Of particular interest in this post is the pleading required to state a claim for remove of Copyright Management Information (CMI) under the DMCA. Also of interest is the way in which the facts supporting this claim were intertwined with a claim for trademark infringement under the Lanham Act.  Finally, this case offers a lesson for drafting choice of law provisions in confidentiality agreements — make them broad enough to cover related tort claims in addition to breach of contract claims. The plaintiff held a valid federal copyright registration for text and images used on his website, and a valid federal trademark registration for his honey harvesting product for beekeepers called Bee-Quick®. The plaintiff authorized the defendant to…

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Action Brought Under DMCA and CFAA Dismissed (Part I)

In LivePerson, Inc. v. 24/7 Customer Inc., 2015 U.S. Dist. LEXIS 3688, No. 1:2014cv01559 (Jan. 16, 2015), the Southern District of New York dismissed a complaint alleging copyright infringement, a violation of the Digital Millennium Copyright Act (DMCA), and the Computer Fraud and Abuse Act (CFAA) for failure of the pleadings under F.R.C.P. 12(b)(6). This case thus provides good guideposts for drafting sufficient pleadings alleging both DMCA and CFAA violations.  Here in Part I, we will discuss the copyright infringement and DMCA claims, while in Part II, we will discuss the CFAA claim. Plaintiff LivePerson provides customers with live-interaction and customer engagement technology for e-commerce websites, allowing real-time interaction with customers. Defendant 24/7 is a customer service technology company that historically provided human call-center operators to answer phones in customers’ call centers. In 2006 and 2007, Plaintiff and Defendant entered into a license agreement, wherein Defendant received a license to…

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Use of Copyrighted Software’s Output and Mere Downloading of Copy Held Not to Constitute Infringement

Neither using output from copyrighted software, nor downloading (but not installing or using) the copyrighted software, constituted actionable copyright infringement under the US copyright statute.  Design Data Corporation v.  Unigate Enterprise, Inc., No. 12-cv-04131-WHO (N.D. Cal. Aug. 6, 2014).  Accordingly, the court in this case granted summary judgment in favor of the defendants on the plaintiff’s claims of direct as well as contributory copyright infringement. The plaintiff “created and owns copyrighted structural steel detailing software called SDS/2.”  The plaintiff never sold licenses to SDS/2 to any of the defendants.  Although the defendants contended that they merely acted as intermediaries between Chinese contractors and US clients, and had never used SDS/2 themselves, it was undisputed that SDS/2 “appear[ed] to have been used to create drawings and images for five of” their projects.  Moreover, the defendants admitted that they had forwarded SDS/2 output files “to clients and prospective clients,” even while contending…

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Ninth Circuit Affirms Inapplicability of Copyright First Sale Doctrine to Restrictive Software License

The Ninth Circuit has affirmed a district court decision (reported in this blog) holding that a restrictive software license is not a “sale” for purposes of the federal copyright laws, and that the license could not be used to assert a defense to copyright infringement based on the first sale doctrine.  Adobe Systems Inc. v. Anthony Kornrumpf, No. 12-16616 (9th Cir. June 2, 2014). The operative paragraph of the court’s per curiam three-paragraph opinion explained that, after its de novo review, the Ninth Circuit determined that: The district court did not err in its application of Vernor v. Autodesk, Inc., 621 F.3d 1102, 1111 (9th Cir. 2010), to Dell’s and HP’s acquisition of copies of Adobe software products. The original equipment manufacturer contracts specified that Dell and HP were granted licenses, significantly restricted Dell’s and HP’s ability to transfer the software and imposed notable use restrictions. A transfer of software…

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Third Party Affirmative Defenses to Software Copyright Infringement

A license, either express or implied, may be an affirmative defense to software copyright infringement.  However, a recent case, brought by Oracle against a vendor who had provided services to Oracle’s customer, illustrates the limits of these defenses.  Oracle USA, Inc. v. Rimini Street, Inc., No. 2:10-CV-00106-LRH-PAL (D. Nev. Feb 13, 2014).  Perhaps more importantly, this case illustrates practices – generally governed by fairly standard provisions in a software license – concerning which both the software licensee and its third-party vendors should take care. Following a motion by Oracle, the court granted summary judgment denying a number of the affirmative defenses raised by the defendant, albeit reserving judgment on a few.  The defendant, Rimini, conceded that it had copied Oracle’s software.  However, with respect to four different Oracle customers, Rimini argued that it had express and implied licenses to use the software.  (Rimini also raised an affirmative defense of “consent,”…

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