SUMMARIES OF EACH AMICUS BRIEF WE HAVE FILED

Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258 (2023)

Decision Filed by the U.S. Supreme Court on May 18, 2023

This case involved a dispute between Lynn Goldsmith, a photographer who had taken photographs of the recording artist Prince, and the Estate of Andy Warhol, a famous pop artist. The underlying facts are simple: Goldsmith took a photograph of Prince in 1981 and licensed it to Vanity Fair in 1984. Vanity Fair hired Warhol to craft an illustration from Goldsmith’s photograph that brought Prince to life in a mesmerizing purple silkscreen portrait. The artwork was showcased in Vanity Fair’s November 1984 issue alongside an article about the iconic musician. The article credited Goldsmith as the source photographer and Vanity Fair paid her $400 in recognition of her contribution. While Vanity Fair had the right to use Goldsmith’s photograph for a ‘one-time’ illustration in their magazine, Warhol went far beyond that right and used the photograph to create the Prince Series, a collection of sixteen individual art pieces valued in the six-figure range. After Prince died in 2016, Vanity Fair published Warhol’s work without compensating or crediting Goldsmith. Goldsmith asserted a claim against the Warhol Estate, and the Andy Warhol Foundation (“AWF”) filed a “declaratory relief” action claiming that the use by Warhol was “fair use,” which did not require credit or compensation to Goldsmith. The U.S. District Court in the Southern District of New York ruled in favor of AWF and held that the Prince Series was “transformative” and thus “fair use.” Goldsmith appealed to the U.S. Second Circuit Court of Appeals, which sided with her, emphasizing the importance of adhering to the plain language of the fair-use defense codified in Section 107 of the Copyright Act of 1976, which provides the four non-exclusive “fair use” factors that courts are to consider when evaluating whether the use of a copyrighted work is “fair.” This decision prompted the Andy Warhol Estate to appeal to the U.S. Supreme Court, leading CSEL, the U.S. Copyright Office, and the Biden administration to file an amicus brief in support of Goldsmith in August 2022.

CSEL’s brief made several arguments to challenge the “transformative” test and to supportGoldsmith’s position. First, CSEL contended that the current application of the transformative test conflicted with an author’s exclusive right to create “derivative works.” CSEL further argued that an expansive interpretation of transformative use undermines an author’s control over derivative works. Second, CSEL argued that the transformative test advocated by Warhol deviated from the clear language of the Copyright Act because the statute’s fair use factors, outlined in Section 107, do not consider the degree of transformation at all. This departure from the statutory text has caused confusion and uncertainty. Third, CSEL also claimed that infringers often invoke a  bad faith fair use defense to avoid paying licensing fees. This undermines the fair use doctrine and disadvantages copyright holders like Goldsmith. Lastly, CSEL argued that the market effect factor, an essential aspect of fair use analysis, has been needlessly de-emphasized. CSEL maintained that courts often overlook the potential negative impact on the value of copyrighted works when a secondary user’s work is deemed “transformative.” The brief notes that if a secondary user’s work “adversely affects the value of any of the rights in the copyrighted work…the use is not fair.” 

Fortunately, the U.S. Supreme Court largely adopted many of CSEL’s arguments and ruled in favor of Goldsmith on May 18, 2023. The U.S. Supreme Court affirmed the Second Circuit holding in favor of Goldsmith, stating “the four statutory fair use factors may not be treated in isolation” but must be “weighed together, in light of the purposes of copyright.” This ruling serves as a major victory for CSEL and all creative professionals.

Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 142 S. Ct. 941 (2022)

Decision Filed by the U.S. Supreme Court on February 24, 2022

This case addressed a tantalizing question in copyright law: what level of knowledge is necessary to invalidate a copyright registration? In 2016, Unicolors sued  H&M, a street-fashion apparel store, for copyright infringement. In the U.S. District Court for the Central District of California, Unicolors accused H&M of selling fashion items, a jacket, and a skirt flaunting a design that was similar to a design Unicolors had copyrighted. The jury’s verdict set the stage ablaze, ruling in favor of Unicolors. But, H&M appealed to the U.S. Ninth Circuit Court of Appeals and filed a motion for judgment as a matter of law, igniting a debate over the validity of Unicolors’ copyright registration. H&M argued that Unicolors knowingly twisted the truth in their copyright application, which challenged the very foundation of Unicolors’ claim. H&M pointed out that Unicolors’ copyright registration was invalid because their designs were listed as “published” instead of “unpublished” in the registration with the U.S. Copyright Office. The Ninth Circuit ruled in favor of H&M. CSEL, along with the U.S. Copyright Office and other creator rights organizations, filed an amicus brief with the U.S. Supreme Court in support of Unicolors’ Petition for Writ of Certiorari. We urged the U.S. Supreme Court to grant certiorari in order to address whether a slight mistake on a copyright registration form renders the registration of the copyright invalid. The U.S. Supreme Court granted certiorari, and in March 2021, CSEL filed another amicus brief supporting Unicolors. CSEL argued that the copyright registration process should be accessible to copyright owners without legal expertise because the registration forms require actual knowledge. Further, CSEL noted that according to the 1976 Copyright Act, only fraud, which requires knowledge and intentional use of inaccurate information, can invalidate a registration. In other words, a good-faith mistake is not a fraud. CSEL also emphasized the importance of copyright protections in encouraging creative contributions and contended that the Ninth Circuit’s ruling violated the very purpose of the Copyright Act.

Fortunately, on February 24, 2022, the U.S. Supreme Court ultimately ruled in favor of Unicolors and sided with the position taken by CSEL, holding that it would “make no sense” for copyright registrations to be invalidated based on good-faith misunderstandings of copyright law. In a thrilling majority opinion (6-3), Justice Stephen Breyer declared that one must have actual knowledge of either a factual or legal error to challenge a registration. This sensible ruling recognizes the importance of protecting creators who may not possess legal expertise from having their copyright registration invalidated due to an innocent mistake. It marks a significant triumph for CSEL and all creative professionals.

Gregorini v. Apple Inc., No. 20-55664 (9th Cir. 2022)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on February 22, 2022

In this case, Francesca Gregorini, the copyright owner of the film entitled The Truth About Emanuel (released in 2013 and starring Jessica Biel, Kaya Scodelario, and Alfred Molina) filed a lawsuit in 2020 against Apple TV, director M. Night Shyamalan, writer Tony Basgallop, and producers Ashwin Rajan, Jason Blumenthal, Todd Black, and Steve Tisch alleging that the Apple TV series called Servant infringed upon Gregorini’s copyright. The similarities between the two films were astounding. For instance, both narratives revolve around a bereaved mother who develops an emotional connection with a lifelike doll in the midst of mourning her deceased baby. In both stories, a teenage nanny accompanies the mother and nurtures the doll with an unwavering belief in its lifelikeness. Additionally, the similarities between the two works go beyond the initial premise. Gregorini asserted that nearly every aspect of her film was repurposed by Shyamalan and Basgallop in Servant, including aesthetic elements, characters, plot progressions, and even the composition of certain shots. Comparing it to an academic exercise, Gregorini told a reporter at The Atlantic that “[she] felt like [her] film had been thoroughly analyzed in a semiotics class, and they were assigned the task of ‘Remake this.’” Notwithstanding all of the significant similarities, the U.S. District Court in the Central District of California ruled in favor of Apple  and determined that there was not sufficient substantial similarity between the works. On November 4, 2020, CSEL filed the only amicus brief with the Ninth Circuit, advocating on behalf of Gregorini and urging the court to reverse the District Court’s decision. CSEL argued that the lower court incorrectly applied the extrinsic test for substantial similarity by wrongfully filtering out unprotectable elements and focusing on dissimilarities. This “filtration” test conflicts with the standard set by the U.S. Supreme Court in the case of Feist v. Rural Telephone and other Ninth Circuit cases that apply the “selection and arrangement” test. The “selection and arrangement” test entitles an author to protection if that author independently makes a selection or arrangement of elements, displaying some minimal level of creativity, and even the individual unprotectable elements can contribute to copyright protection if they form a distinctive pattern or arrangement. However, the “filtration” test fails by disregarding these unprotectable elements collectively, which has been subject to criticism for undermining the scope of copyright protection. CSEL contended that when the “selection and arrangement” test is applied, summary judgment should not have been granted due to the significant similarities between the works in question. Furthermore, CSEL pointed out that the lower court placed undue emphasis on the dissimilarities between the works, whereas the court should have solely focused on whether the similarities were substantial.

On February 22, 2022, the Ninth Circuit agreed with CSEL, holding in favor of Gregorini and stating, “the district court’s dismissal of Gregorini’s suit at this early stage of the case was ‘improper’ because ‘reasonable minds could differ on the issue of substantial similarity . . . .’” Dismissal is only  suitable if the similarities between the two works are solely in uncopyrightable material or are minimal (de minimis) as a matter of law. Steven T. Lowe, CSEL’s founder and longstanding advocate for all creative professionals, told the Hollywood Reporter, “Theft is rampant in the entertainment industry. It basically goes unchecked because there is so much bad precedent. Infringers would just assume to take their chances in the courts. Finally, (perhaps) the pendulum is beginning to swing in the other direction.” This was another major victory for artists’ rights!

Greg Kihn v. Bill Graham Archives LLC, No. 20-17397 (9th Cir. Jan. 3, 2022)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on January 3, 2022

In June 2021, CSEL was granted permission to file an amicus brief in the U.S. Court of Appeals for the Ninth Circuit. CSEL, along with the Screen Actors Guild American Federation of Television and Radio Artists (SAG-AFTRA), Black Music Action Coalition (BMAC), Music Artists Coalition (MAC), and Songwriters of North America (SONA), advocated on behalf of Greg Kihn and his band, who were artists that performed at the Filmore East. These artists had their performances recorded without consent by Bill Graham, the famous rock music promoter who played a pivotal role in shaping Janis Joplin’s solo career and in evolving the Grateful Dead’s psychedelic rock sound. The U.S. District Court for the Central District of California certified two classes to proceed with the case: a composer class and a performer class. After Bill Graham’s death, unauthorized recordings of live musical performances emerged without proper documentation of chain of title or authorization by the numerous artists who performed at the Filmore East, including the famous rock group, the Allman Brothers Band. The appellant, Graham’s Estate, argued that the “bootleggers” who are exploiting these recordings should only be held liable under Section 1101 of the Copyright Act if they can prove that performers never consented to be recorded. In other words, each of the rock groups who had their concerts recorded and bootlegged must sue separately and not as a class.

CSEL’s amicus brief emphasized the importance of Section 1101 as a critical protection for artists in the entertainment industry. It provides performers with remedies against bootleggers and those who traffic in unauthorized recordings. Graham’s Estate claimed that performer interaction with a camera implies consent to fixation and exploitation, even without signed agreements. CSEL countered by highlighting how a finding in Graham’s favor could have a negative impact on the entire entertainment industry. For example, it would impact artists’ ability to use video conferencing and chat apps and enable non-artist participants to steal and exploit recordings. CSEL argued against diluting the bootlegging protections established by Congress, as doing so would allow serial bootleggers to evade accountability and to potentially copyright the work before the artist. On January 3, 2022, the Ninth Circuit Court issued its ruling, acknowledging CSEL's amicus brief and recognizing the significance of the raised issues. Unfortunately, the Ninth Circuit Court ultimately sided with Graham's Estate and decided to “decertify” the class.

Greg Young Publ'g, Inc. v. Zazzle, Inc., No. 20-55812 (9th Cir. Aug. 20, 2021)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on August 20, 2021

Certiorari Denied by the U.S. Supreme Court on October 8, 2021

In this case, Greg Young Publishing, an artwork provider to the manufacturing industry, took on Zazzle, an online marketplace, in a fiery copyright infringement lawsuit filed in the U.S. District Court of the Central District of California. Greg Young Publishing uncovered a shocking revelation: their prized copyrighted images were being shamelessly sold on Zazzle’s website without any permission granted. As the case unfolded, Zazzle reluctantly admitted to infringing upon thirty-five images. But, this legal showdown ensued over the amount of damages (i.e., how much money Greg Young Publishing should recover) and whether this infringement was a calculated move. Amidst the legal drama, one particular point of contention burned bright: the district court’s controversial decision to deny Greg Young Publishing the opportunity to recover their hard-earned attorneys’ fees. In September 2021, CSEL, alongside several artists’ rights organizations, submitted an amicus brief to the Ninth Circuit to support Greg Young Publishing’s Petition for Rehearing and Rehearing En Banc and to advocate for the plaintiff to be awarded attorneys’ fees. CSEL presented two main arguments. First, we contended that the “degree of success” should not be a decisive factor in determining attorneys’ fees, as it cannot be objectively and impartially applied. Instead, when awarding “statutory damages” (a predetermined amount of money set by law that can be awarded to the plaintiff in a legal case without having to prove actual financial harm), it is crucial to objectively compare the amount received by the plaintiff to the apparent actual damages, disregarding subjective statements or unrelated evidence. Second, CSEL argued that an En Banc review is necessary to address the trend of granting attorney fee awards to defendants but not plaintiffs, which contradicts the purpose of the Copyright Act in fostering creativity. 

To encourage creators to produce original works, the awarding of fees must be based on an objective standard and applied equally to both creators and defendants. Unfortunately, on October 8, 2021, the Ninth Circuit denied the rehearing, stating that the “district court did not abuse its discretion in denying Young’s motion for attorney’s fees.”

Markham Concepts, Inc. v. Hasbro, Inc., 1 F.4th 74 (1st Cir. 2021)

Decision Filed by the U.S. First Circuit Court of Appeals on June 14, 2021

Certiorari Currently Pending Before the U.S. Supreme Court

This case involved a dispute between Rueben Klamer, the concept developer of “The Game of Life,” a board game introduced by the Milton Bradley Company in 1960, and Bill Markham, the board game designer that Klamer recruited to create the game’s prototype. Markham’s heirs and successors-in-interest (the “plaintiffs”) sued Klamer and others, seeking “termination rights” under the 1976 Copyright Act. “Termination rights” give creatives or their heirs the power to reclaim their copyright or rights to a work they’ve created. The provision acts like a special “reclaim” button that allows them to undo any previous transfers or licenses, putting control back in their hands. Yet creatives or their heirs may not have “termination rights” if the work is created under a “work for hire” arrangement. The U.S. District Court in the District of Rhode Island ruled that Markham’s board game design was a “work for hire,” denying the plaintiffs’ ability to exercise their “termination rights.” The U.S. First Circuit Court of Appeals upheld this decision, confirming that the board game qualified as a “work for hire” and no “termination rights” applied. The plaintiffs appealed to the U.S. Supreme Court. CSEL filed an amicus brief in support of the plaintiffs with the U.S. Supreme Court. 

CSEL’s brief presents two key arguments. First, CSEL argues that the First Circuit’s application of the “Instance and Expense” test, derived from the Ninth Circuit’s Forward v. Thorogood case, is not supported by the Copyright Act or established precedent as it “runs afoul of blackletter law.” CSEL asserts that the First Circuit erred in applying this test and highlights the Community for Creative Non-Violence (“CCNV”) case, which excludes independent contractors from the employee-employer relationship in the work-for-hire doctrine,  as the appropriate standard. Second, CSEL contends that the First Circuit’s use of the “Instance and Expense” test creates uncertainty in copyright law by affecting and “chilling creators’ rights.” CSEL points out the confusion and conflicting case law arising from the First Circuit’s conflation of independent contractors with employees in work-for-hire analysis. CSEL emphasizes the need for clear boundaries in copyright law and urges the U.S. Supreme Court to align their interpretation of “employer” with the statutory definition, which ensures predictability in determining whether a creative professional is an independent contractor (non-employee) or an employee under the work-for-hire doctrine. CSEL highlights the lack of consistent application of the “Instance and Expense” test among the other Circuit Courts and the potential negative impact on creators’ “termination rights” and the bargaining power of major studios. CSEL calls on the U.S. Supreme Court to “expand its holding in CCNV” to support all independent creatives by clarifying the work-for-hire provisions under both the 1976 Copyright Act and the 1909 Copyright Act. This case is currently awaiting review by the U.S. Supreme Court.

Tah v. Glob. Witness Publ'g, Inc., 451 U.S. App. D.C. 248, 991 F.3d 231 (2021)

Decision Filed by the U.S. D.C Circuit Court of Appeals on March 19, 2021

Certiorari Denied by the U.S. Supreme Court on November 1, 2021

In this case, Global Witness Publishing, a corruption-exposing nonprofit, faced a defamation lawsuit from two former Liberian officials after publishing a report in 2018. The report shed light on controversial bonuses given to the officials involved in a deal with ExxonMobil. The D.C. District Court dismissed the case, a decision that the D.C. Circuit Court of Appeals later upheld. In August 2021, CSEL and the Beverly Hills Bar Association jointly submitted an amicus brief to the U.S. Supreme Court in support of the plaintiff’s request for a Writ of Certiorari. CSEL presented two key arguments. First, we pointed out that the lower court deviated from the pleading standards set by the U.S. Supreme Court, which require demonstrating “plausibility.” Instead, the lower court assessed whether the plaintiff’s allegations were convincing by weighing different plausible explanations for the defendant’s actions. CSEL highlighted the resulting conflict between this approach and the standards followed by other circuit courts, leading to a conflict between the different circuits as to how pleading standards should be applied in defamation cases involving public figures. CSEL urged the U.S. Supreme Court to clarify the appropriate standards in such cases. Second, CSEL emphasized the importance of safeguarding one’s reputation and weighing that against the protection of the First Amendment rights. Given the significance of these issues, we urged the U.S. Supreme Court to consider the case and provide badly needed guidance to all of the circuit courts in the United States as to the correct pleading standard for defamation cases involving public figures. Unfortunately, the U.S. Supreme Court apparently did not think that this case was sufficiently sexy, as they denied certiorari on November 1, 2021.

Desire, Ltd. Liab. Co. v. Manna Textiles, Inc., 986 F.3d 1253 (9th Cir. 2021)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on February 2, 2021

Certiorari Denied by the U.S. Supreme Court on October 12, 2021

In this case, Desire, a textile manufacturer, provided an exclusive floral-patterned fabric to Top Fashion, an apparel manufacturer, to create dresses for Ashley Stewart, a women’s clothing retailer. Amid a pricing disagreement, Top Fashion turned to Manna, a competing textile supplier, seeking a comparable pattern. Manna made minor alterations to the design, registered it with the Copyright Office, and sold the modified pattern to Top Fashion and two other apparel manufacturers. Subsequently, these manufacturers used the fabric to produce garments, which were then sold to Ashley Stewart and two additional retailers. Desire sued Manna, the manufacturing defendants, and the retailer defendants for copyright infringement. The U.S. District Court in the Central District of California ruled in favor of Desire, holding all defendants jointly and severally liable for infringing upon Desire’s copyright. Separate statutory damages were awarded to each defendant.

On August 23, 2021, CSEL joined several creator’s rights organizations, including the American Society of Media Photographs, Inc., and the National Press Photographers Association, to file an amicus brief with the U.S. Supreme Court on behalf of Desire. The key issue centered around the calculation of “statutory damages” for copyright infringement. Statutory damages are predetermined monetary awards provided by law to compensate for injury or loss in cases where it is difficult to precisely determine the extent of harm suffered by the plaintiff. Statutory damages offer copyright holders an alternative avenue for resolving infringement cases, as they can be awarded simply by demonstrating that the infringement occurred without the need to prove the actual harm or loss suffered. The Ninth Circuit, in line with the District Court, had unfortunately limited Desire’s statutory damages award to only one award, despite Desire’s potential qualifications for multiple awards of statutory damages. The Ninth Circuit’s rationale was to prevent excessive damages compared to the actual harm caused. CSEL argued that affirming the Ninth Circuit’s decision would significantly curtail creators’ ability to seek fair compensation from infringers, which ignores the dual purpose of statutory damages and hinders copyright protection. CSEL emphasized that the Ninth Circuit’s ruling would force plaintiffs to file separate lawsuits, which would cause inefficient court congestion and ultimately impede creators’ ability to safeguard their works effectively. CSEL urged the U.S. Supreme Court to reverse the Ninth Circuit’s ruling. Unfortunately, the U.S. Supreme Court apparently did not find this case as compelling as we did, as they denied certiorari on October 12, 2021.

Moodsters Co. v. Walt Disney Co., 141 S. Ct. 1050 (2021)

Certiorari Denied by the U.S. Supreme Court on January 11, 2021

This case starts with Denise Daniels, an expert in children’s emotional intelligence. Daniels created The Moodsters Company to bring emotions to life through captivating characters. With a team of talented individuals and three million dollars in investment, Daniels developed a group of five color-coded anthropomorphic emotions, each representing a different emotion. These characters, including their unique expressions and interactions, were presented as residing within each child. The Company introduced “The Moodsters Bible,” a pitchbook outlining the characters, themes, and envisioned universe, followed by a pilot episode in 2007. In subsequent years, The Moodsters evolved with a new line of toys and books available at major retailers. During their journey, Daniels and the Company engaged with various media and entertainment companies, most notably the Walt Disney Company. Detailed discussions and presentations about The Moodsters took place with Disney officials, including high-ranking executives and even Pete Docter, a famous director and screenwriter. However, in 2010, Disney suddenly cut off communications with Daniels and embarked on its own animated film project called Inside Out, featuring anthropomorphized emotions within a young girl’s mind. These anthropomorphized emotions portrayed characters that shared the same concept and purpose as The Moodster characters, aligning with the theme of child development and the exploration of emotions. The film achieved tremendous success, winning an Academy Award and earning over $1.2 billion worldwide. Notably, Pete Docter, the screenwriter in negotiations with Daniels, was the director and co-writer of Inside Out, which adds an intriguing twist to the story. Daniels and The Moodsters Company filed a copyright infringement lawsuit against the Walt Disney Company following the release of the movie Inside Out, alleging that the Inside Out characters resembled their Moodsters characters. Yet, the U.S. District Court for the Central District of California dismissed the case, ruling that The Moodsters’ characters were not eligible for copyright protection.

In September 2020, CSEL filed an amicus brief with the U.S. Supreme Court in support of The Moodsters, requesting that it consider the case after the Ninth Circuit affirmed the dismissal in favor of Disney. As mentioned, the facts were quite egregious. CSEL argued that there is a conflict among Circuit Courts regarding copyright protection for “characters.” CSEL’s brief argued that the Ninth Circuit had deviated from established and binding precedent by introducing virtually unattainable (except to conglomerates like Disney) criteria in characters. The Ninth Circuit required characters to possess carefully delineated physical and conceptual qualities, recognizable consistency, and exceptional distinctiveness. CSEL argued that the originality standard outlined in the U.S. Supreme Court Case Feist v. Rural Telephone governs copyright infringement cases and the copyrightability of characters instead. Feist only requires originality, which is the overarching “premise of copyright law.” According to CSEL, the Ninth Circuit’s heightened standard imposes unnecessary obstacles for creators, undermining copyright law’s purpose. Additionally, CSEL raised concerns about the Ninth Circuit’s failure to employ the “selection and arrangement” test in assessing substantial similarity. Under the “selection and arrangement” test, authors are granted protection if they independently create a selection or arrangement of elements with some level of creativity. Even individual unprotectable elements can contribute to copyright protection if they form a distinct pattern or arrangement. By disregarding this crucial standard, the court overlooked the interplay between characters and erroneously concluded that they each lacked copyrightability. Unfortunately, despite the significant legal question in copyright law presented by this case, the U.S. Supreme Court denied certiorari on January 11, 2021.

Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on March 9, 2020

Certiorari Denied by the U.S. Supreme Court on October 5, 2020

In September 2019, CSEL filed an amicus curiae brief in support of Petitioner Michael Skidmore, representing the Randy Craig Wolfe Trust (“Skidmore”). The brief was filed with the Ninth Circuit and also in support of a petition for a writ of certiorari to the U.S. Supreme Court in September 2020. For context, this case begins with Randy Wolfe, known as Randy California, who was a guitarist for the 1960s rock band Spirit. In 1967, California composed the instrumental song “Taurus,” which was included in the group’s first album. That same year, the composition was registered with the U.S. Copyright Office as an unpublished work and accompanied by a one-page deposit of the sheet music. In 2014, Michael Skidmore, representing California’s estate, alleged that Led Zeppelin had copied “Taurus” in their song “Stairway to Heaven.” CSEL first addressed the U.S. District Court for the Central District of California’s incorrect definition of originality in the jury instructions and its failure to adequately explain the protectability of the original selection and arrangement of unprotectable elements (i.e., the “selection and arrangement” test). Under the “selection and arrangement” test, artists are entitled to protection if they independently create a selection or arrangement of elements, displaying a minimum level of creativity. Moreover, even unprotectable individual elements can contribute to copyright protection if they form a distinctive pattern or arrangement. Further, the brief argued that the jury instructions should have followed the “selection and arrangement” test rather than the “filtration” test from Cavalier v. Random House Inc., which “filters out and disregards non-protectable elements.” 

First, the Ninth Circuit ruled in favor of the plaintiff (Skidmore v. Led Zeppelin, 905 F.3d 1116 (9th Cir. 2018)), but the Ninth Circuit then granted a rehearing en banc, meaning it was heard by  a panel of eleven judges. The majority opinion that ensued was a mish-mash of conflicting theories, ultimately stripping away the previous hard-won victory with the Ninth Circuit and also abolishing the “inverse ratio rule,” which had been used by creators for decades. CSEL then advocated for the U.S. Supreme Court to consider the case. CSEL maintained that the Ninth Circuit’s inconsistent application of both the “filtration” test and the “selection and arrangement” test has created confusion and prejudice to creators. The brief urged the U.S. Supreme Court to reconcile the circuit split on the issue of substantial similarity, as different circuits have adopted different tests on this crucial issue, leading to further confusion. Lastly, CSEL advocated for the adoption of the dissent from the Ninth Circuit, which was supported by two justices, as it presented a cogent and well-reasoned perspective. The en banc majority’s decision was seen as a complete perversion of copyright law against the interests of creators. Unfortunately, the U.S. Supreme Court did not grant certiorari, and this crazy en banc decision is now the law in the Ninth Circuit.

Kaffaga v. Estate of Steinbeck, 938 F.3d 1006 (9th Cir. 2019)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on September 9, 2019

Certiorari Denied by the U.S. Supreme Court on October 5, 2020

In April 2020, CSEL filed an amicus curiae brief in support of petitioners, the Estate of Thomas Steinbeck, Gail Knight Steinbeck, and the Palladin Group, Inc. (“Steinbeck”), with the U.S. Supreme Court, seeking a writ of certiorari. In this case, the dispute over the literary works of famous author John Steinback had been ongoing for several decades among his heirs, who have been fighting for control and financial benefits. In 1983, a settlement agreement known as the “1983 Agreement” was reached, granting Elaine Steinbeck control over the works while John Steinbeck IV and Thomas Steinbeck (“Thom”) received a share of royalties. The 1983 Agreement included provisions that purported to transfer Thom’s “termination rights'' to Elaine. A “termination right” in copyright law allows the original creator or their heirs to reclaim ownership of the copyright after a certain period has passed (i.e., 35 years). CSEL’s brief argued that the decisions of the Second and Ninth Circuits undermined Section 304(c)(5)  of the Copyright Act by allowing the relinquishment of termination rights through agreements. In fact, the Copyright Act does not permit the assignment of termination rights. The case at issue posed a risk of entertainment companies extinguishing the termination rights of creative professionals, contrary to Congress’s intent when enacting the 1976 Copyright Act. CSEL further contended that Thom’s conveyance of rights in paragraph 5 and exhibit A of the 1983 Agreement should be interpreted as grants of his separate rights, which could still be terminated under 17 U.S.C. Section  304(c)(5). The brief emphasized that for an assignment or alienation of rights separate from the exclusive rights granted under Section 106 to be valid, it must be conveyed exclusively. In other words, the recipient must have full control over that right. CSEL argued that the 1983 Agreement could not be a valid and enforceable conveyance of Thom’s “termination rights” unless Elaine had control over all of Thom’s rights. Unfortunately, even though CSEL was notified that the U.S. Supreme Court was considering the case and the Court requested a brief from the appellant, the Court ultimately denied certiorari on October 5, 2020.

Gold Value Int'l Textile, Inc. v. Sanctuary Clothing, Ltd. Liab. Co., 925 F.3d 1140 (9th Cir. 2019)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on June 4, 2019

Certiorari Denied by the U.S. Supreme Court on March 9, 2020

In this case, there was a dispute over whether the work at issue was published or unpublished. The Ninth Circuit had rejected the creator's good faith arguments that he reasonably believed that the work was "unpublished" when he filed the copyright registration form. Instead, the Ninth Circuit ruled in favor of the infringer, determining that the work was "published" and awarding attorney's fees to the defendant based on a registration technicality. In January 2020, CSEL, along with other creator rights organizations, jointly filed amicus briefs with the U.S. Supreme Court in support of Gold Value's Petition for Writ of Certiorari. Firstly, CSEL argued that creators are disadvantaged by the unclear definition of "publication" in the Copyright Act. The Ninth Circuit's ruling created a "circuit split" that normally requires a showing of intent to defraud or bad faith to invalidate a copyright registration. As copyright legal scholar Melville Nimmer stated, if defining publication is challenging, "the weight of this challenge should not be placed on creators" in attempting to protect their creative works.

Even though the U.S. Supreme Court declined to consider this case in 2020, in the recent case of Unicolors v. H&M, the U.S. Supreme Court addressed an issue, holding that a good faith misunderstanding does not invalidate a copyright registration (see Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 142 S. Ct. 941 (2022)). CSEL had argued that the millions of existing copyrights registered as "unpublished" would face the risk of being deemed invalidated by this decision, which would cause irreparable harm to copyright owners. Fortunately, this is no longer an issue in light of the Unicolors case. Finally, CSEL argued that the Ninth Circuit erred in affirming attorney's fees to an infringer who only won on a technical defense having nothing to do with the substance of the infringement claim. Unfortunately, the U.S. Supreme Court denied certiorari on March 9, 2020, but later considered this same issue in Unicolors.

Olive v. Gen. Nutrition Ctrs., Inc., 30 Cal. App. 5th 804, 242 Cal. Rptr. 3d 15 (2018)

Decision Filed by the California Court of Appeal, Second District, on December 27, 2018

Certiorari Denied by the California Supreme Court on April 17, 2019

In February 2019, CSEL filed an amicus brief with the California Supreme Court. The central issue in the brief was how much the plaintiff should recover in damages where the defendant continued to use the plaintiff's likeness in advertising despite the expiration of their rights. California’s statutory right of publicity embodied in Civil Code Section 3344 provides a framework for a plaintiff to pursue both actual damages and the defendant's ill-gotten gains. Traditionally, courts exercised their equitable power to apportion profits between the infringement and non-infringement, following the established framework codified in Section 3344: (1) “the rightsholder identifying the gross revenues attributable to the infringement,” and (2) “the infringer identifying which monies within those gross revenues should be deducted.” However, the court of appeals departed from this established framework and only awarded damages of $1,123,000 basing its decision on a narrow interpretation of the term “attributable to,” which shifted the burden to show apportionment from the infringer to the plaintiff. CSEL argued that this deviation resulted in an absurd construction of Section 3344. A proper reading of the statute would not reasonably suggest that the legislature intended to place the burden onto the plaintiff. CSEL further argued that upholding this ruling would empower infringers, while placing an overwhelming burden on plaintiffs, leaving them with little hope of being able to show “apportionment.” 

Furthermore, CSEL’s brief highlighted that prevailing plaintiffs in similar cases were typically entitled to recoup attorney's fees from the infringers under the California Code of Civil Procedure Sections 1032 and 1033.5. However, the Court of Appeals in Olive deviated from this standard by applying code Section 1717, which is primarily meant for contract actions, and declined to award attorneys' fees to the plaintiff, despite their successful outcome. CSEL argued that this misapplication of the law constituted an abuse of discretion and required reversal. Allowing this erroneous ruling to stand would not only create future confusion but also discourage the enforcement of important rights. Unfortunately, on April 17, 2019, the California Supreme Court declined to hear this case.

ABS Entm't v. CBS Corp., 908 F.3d 405 (9th Cir. 2018)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on August 20, 2018

In this case, ABS Entertainment filed claims against CBS for the unauthorized use of pre-1972 recordings embodying remastered musical performances. In 1971, Congress passed the Sound Recording Act which offered federal protection for certain sound recordings. According to that legislation, sound recordings that were recorded after February 15, 1972 became subject to a mandatory licensing system for digital transmission performances, while being exempted from infringement claims for performances on terrestrial radio. CBS argued that they only used remastered recordings created after 1972, which would fall under the purview of federal copyright law. The central issue was whether a sound recording “fixed” prior to February 15, 1972 could be remastered to circumvent the provisions of the California statute. This statute stipulates that the author of a pre-1972 sound recording holds exclusive ownership rights until 2047. The U.S. District Court ruled in favor of CBS  by stating that the remastering of a pre-1972 sound recording constitutes the creation of a new work that can be used without obtaining a license for the original recording. 

In February 2017, CSEL filed an amicus brief with the Ninth Circuit in support of ABS, urging the court to reverse the lower court's ruling. CSEL presented three arguments on behalf of ABS. First, CSEL argued that the lower court failed to adhere to the Ninth Circuit's established standard which requires a “derivative work” to be substantially different from the original. Second, CSEL argued that the lower court erroneously relaxed the required degree of variation in a remastered recording to warrant copyright protection, which reduced it to mere "perceptible changes." This departure conflicted with the Ninth Circuit's standard, which mandates that the changes be non-trivial. Lastly, CSEL asserted that the court improperly presumed that CBS's obligations were exclusively governed by federal law and neglected to consider CBS's obligations under state law, particularly California Code Section 980(a)(2), which pertains to the usage of both remastered and original pre-1972 recordings. On August 20, 2018, the Ninth Circuit agreed with CSEL’s arguments and ruled in favor of ABS.

Shame on You Prods. v. Banks, 893 F.3d 661 (9th Cir. 2018)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on June 21, 2018

In this case, the plaintiff alleged that the copyright of his screenplay Darci's Walk of Shame was infringed upon by the movie Walk of Shame, starring Elizabeth Banks. However, the U.S. District Court Central District of California ruled in favor of Banks et al., determining that there was no substantial similarity between the two works. The District Court issued a 65-page decision deconstructing the screenplay into separate elements and finding each element unprotectable (which is like shooting fish in a barrel) when the court couldn’t find three or four of them unprotectable, it found the remaining similarities “de minimis.” In March 2016, CSEL filed an amicus brief with the Ninth Circuit in support of the appellant, Shame On You Productions, Inc.

CSEL argued that the Ninth Circuit had departed from the correct test to be employed in copyright infringement cases. CSEL contended that the "selection and arrangement test," as established by the U.S. Supreme Court in Feist Publications, Inc., v. Rural Telephone Service Co. and reiterated in numerous Ninth Circuit decisions, should be applied. CSEL asserted that the District Court had erred by either requiring an admission of access to the plaintiff's work or striking similarity before applying the selection and arrangement test, neither of which should be required. Furthermore, CSEL argued that the court had improperly focused on the dissimilarities between the works in question. This approach would empower studios to infringe upon a creator's work by simply pointing out the characteristics that the works did not share. CSEL argued that the inconsistent application of the "filtration test" since 2002 had rendered it exceedingly difficult for creators to safeguard their intellectual property rights because the court consistently ruled in favor of major studios and networks. CSEL urged the court to apply the appropriate test and uphold the objectives of copyright law. CSEL, represented by Steven Lowe, was granted the opportunity to present arguments before the Ninth Circuit (see the video here).

Morawski v. Lightstorm Entm't, Inc., 599 F. App'x 779 (9th Cir. 2015)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on April 15, 2015

Certiorari Denied by the U.S. Supreme Court on November 2, 2015

This case was one of the many cases filed in connection with the film, Avatar. In this case, Morawski had pitched ideas to Lightstorm, James Cameron’s company, which Morawski alleged had been used in Avatar. The Ninth Circuit ruled in favor of Lightstorm. In October 2015, CSEL filed an amicus brief with the U.S. Supreme Court, supporting Morawski's Petition for Writ of Certiorari and urging a reversal of the Ninth Circuit's decision. In our brief, we presented four key arguments on behalf of Morawski.

Firstly, CSEL argued that the test employed by the Ninth Circuit in that case to determine substantial similarity improperly excluded non-protectable elements, disregarding the established selection and arrangement test. Furthermore, the court wrongly limited the application of the selection and arrangement test to cases in which a defendant admits access to the plaintiff's work. Additionally, we highlighted the court's inappropriate use of the substantial “dissimilarity” test, which allows infringement if sufficient new material is added and contradicts the established principle that focuses on similarities. Secondly, CSEL pointed out that the Ninth Circuit's decision failed to adhere to the standard set by the California Supreme Court, which grants an inference of copying when a plaintiff asserting an “idea theft” claim demonstrates access and similarity, unless compelling contrary evidence is provided. The Ninth Circuit's decision did not provide such an inference, allowing the defendant's evidence of “independent creation” to prevail. Thirdly, CSEL expressed concern about the Ninth Circuit's treatment of creators and the misapplication of the law, as it has resulted in judges making factual determinations that should be left to a jury. This practice has allowed judges to bypass expert witnesses and juries and has led to rulings uniformly in favor of Mr. Cameron. Lastly, CSEL emphasized the necessity of a U.S. Supreme Court review to restore balance due to conflicts of authority and the perceived pro-defendant handling of infringement cases by the Ninth Circuit. Unfortunately, on November 2, 2015, the U.S. Supreme Court did not agree to consider the case.

Petrella v. MGM, 572 U.S. 663, 134 S. Ct. 1962 (2014)

Decision Filed by the U.S. Supreme Court on May 19, 2014

This case represents CSEL’s greatest victory to date. In this case, the collaboration between renowned boxing champion Jake La Motta and Frank Petrella resulted in the creation of a book and two copyrighted screenplays centered around La Motta's illustrious boxing career. Ultimately, this resulted in the famous, award-nominated film called Raging Bull, directed by Martin Scorcese. The exclusive rights to these works were assigned to United Artists Corporation, a subsidiary of MGM. However, years later, after Petrella's daughter assumed sole ownership of the copyright, she took legal action against MGM, alleging copyright infringement concerning their film Raging Bull. MGM invoked the defense of “laches,” arguing that Petrella's 18-year delay in pursuing the claim barred her from seeking legal remedies. Subsequently, the United States District Court for the Central District of California granted summary judgment in favor of MGM, a decision that was upheld by the Ninth Circuit Court of Appeals. Subsequently, Petrella sought a Writ of Certiorari. In June 2013, CSEL filed the only amicus brief in support of Petrella's petition, and it remained the sole amicus brief when the U.S. Supreme Court granted certiorari.

In the amicus brief put before the U.S. Supreme Court, CSEL strongly contested any notion that restricting the application of laches would adversely impact the judicial system in copyright cases. CSEL argued that defendants in copyright litigation were already equipped with an array of defenses, while plaintiffs were burdened with meeting stringent standards of proof. Furthermore, CSEL emphasized that plaintiffs stood to gain little and risked losing significant opportunities by delaying their claims. The entertainment industry in particular witnessed the majority of its profits generated within the initial weeks or months following a project's release, which rendered delays detrimental to plaintiffs' interests. Additionally, the passage of time posed the risk of crucial evidence being lost and witnesses becoming unavailable, or their memories fading. CSEL further contended that a more lenient application of the defense of laches would not result in an overwhelming influx of copyright infringement cases. Despite the Ninth Circuit's frequent utilization of laches, other circuits had not experienced a flood of such claims. Even though CSEL cited the existence of six circuits that had ruled on this issue (all of which found laches not to present an obstacle to the plaintiff’s claim) demonstrating that a broader interpretation of laches did not lead to an excessive burden on the courts. Consequently, CSEL urged the U.S. Supreme Court to grant the writ of certiorari based on these arguments and then reiterated them again in its amicus brief (i.e., the only one filed) after SCOTUS granted certiorari. The U.S. Supreme Court, concurring with CSEL, ruled in favor of Petrella on May 19, 2014, holding that the “[Ninth Circuit] erred in treating laches as an absolute bar to Petrella’s copyright infringement suit.” The U.S. Supreme Court's decision recognized the need to strike a fair balance between the rights of copyright holders and the interests of defendants and clarify the application of laches in copyright law. This is CSEL’s greatest victory to date, although the Unicolors, Gregorini, and Goldsmith cases run a close second, third, and fourth.

Segal v. Rogue Pictures, 544 F. App'x 769 (9th Cir. 2013)

Decision Filed by the U.S. Ninth Circuit Court of Appeals on November 13, 2013

Certiorari Denied by the U.S. Supreme Court on October 6, 2014

In this case, CSEL submitted an amicus brief in support of petitioner Segal's request for a writ of certiorari from the U.S. Supreme Court in October 2014. The core argument was that the Ninth Circuit erred in applying an incorrect test to determine substantial similarity. CSEL contended that the appropriate test is the selection and arrangement test, as established in Metcalf v. Bochco. However, some Ninth Circuit cases deviated from this standard and instead employed the "filtration test," which excludes “unprotectable elements” from consideration.

According to CSEL, the Ninth Circuit wrongly distinguished the Metcalf case by relegating the application of the selection and arrangement test to situations in which a defendant admits “access” to a plaintiff’s work. In Metcalf, the defendant admitted access, whereas in Segal, the defendant did not. CSEL argued that an admission of access should not be required to apply the correct test for evaluating substantial similarity. In addition, CSEL argued that substantial similarity should be determined based on shared patterns and structures rather than giving undue weight to differences between the works. CSEL maintained that as long as the works exhibit substantial similarities, any differences should be deemed inconsequential. Finally, CSEL argued that there is a conflict among the different circuits as to the correct test for substantial similarity. Unfortunately, on October 6, 2014, SCOTUS declined to consider the case.

Marvel Characters, Inc. v. Kirby, 726 F.3d 119 (2d Cir. 2013)

Decision Filed by the U.S. Second Circuit Court of Appeals on August 8, 2013

In this case, an issue arose regarding the works created by Jack Kirby, a comic-book artist who, along with Stan Lee, created virtually every superhero so far for Marvel Comics. Following Kirby's passing in 2009, his children sent termination notices to Marvel to assert their termination rights under the Copyright Act. Marvel responded by initiating legal proceedings, contending that the works were “made for hire,” thereby rendering the termination notices ineffective. The United States District Court for the Southern District of New York ruled in favor of Marvel. Subsequently, the Kirbys appealed the decision, specifically challenging the application of the "instance and expense test" used to determine whether a work qualifies as a "work for hire" in copyright cases. The "instance and expense test" is a legal assessment used to determine whether a worker should be classified as an employee or an independent contractor in the context of a "work for hire" arrangement. The test evaluates the degree of control exerted by the employer over the work performed (instance) and who bears the expenses associated with that work (expense).

The Second Circuit Court of Appeals affirmed the ruling in favor of Marvel, stating that the comics created by Jack Kirby and Stan Lee for Marvel were indeed works for hire because they were produced under Marvel's direction and financial support. This prompted CSEL to support Kirby's Petition for Writ of Certiorari by filing an amicus brief with the U.S. Supreme Court in June 2014. In the brief, CSEL presented three main arguments. First, CSEL criticized the Second Circuit's reliance on legal principles unsupported by prior case law or the Copyright Act when applying Section 26 to independent contractor cases. Second, CSEL pointed out the inconsistent case law that creates unpredictability and biases against creative professionals and favors major studios like Marvel. Lastly, CSEL contested the use of the "instance and expense" test, advocating for its replacement with a more appropriate evaluation, such as the multi-factor balancing test established in the Community for Creative Non-Violence (CCNV) v. Reid case. The CCNV test distinguishes employees from independent contractors by considering factors such as “skill requirements, tool ownership, work location, relationship duration, project assignments, work hours, payment methods, hiring of assistants, integration with the hiring party's business, employee benefits, and tax treatment.” CSEL urged the U.S. Supreme Court to grant the petition and adopt the CCNV test in order to bring clarity and fairness to copyright cases involving independent contractors. The case was settled, reportedly for a lot of money, while the application for certiorari was pending.