3Procedurals RulesFederal Rules of Civil Procedure – governs all civil trials held in federal district courtsStates – state rules of civil procedureCourt – local rules of procedureWhat is local counsel and why would a company hire local counsel for litigation?What is pro hac vice?
5Stages in Greater Detail EventAttorney consultationPrefiling investigationPlaintiff files complaintDefendant notified of complaintAnswer to complaint or motion to dismissMotion for judgment of the pleadingsDiscoveryMotion for summary judgmentAdditional discoveryPretrial conferenceTrialPostrial motionsAppealJudgment enforcement and collection
6Attorney Consultation What to expect in an initial consultationCharge for initial consultation?Conflict checkSubject matter conflictParty conflictEngagement letter
7Prefiling Investigation How extensive must the prefiling investigation be?What are rule 11(b) sanctions?By presenting to the court a pleading, written motion, or other paper — whether by signing, filing, submitting, or later advocating it — an attorney or unrepresented party certifies that to the best of the person's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:
8Rule 11(b) Requirements(1) it is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation;(2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law;(3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery; and(4) the denials of factual contentions are warranted on the evidence or, if specifically so identified, are reasonably based on belief or a lack of information.
9Example Rule 11 Sanction“On Friday, New Haven, Conn., federal district court Judge Janet Bond Arterton granted a motion for Rule 11 sanctions (pdf) against Labaton Sucharow and Barroway Topaz Kessler Meltzer & Check, lead plaintiffs counsel in a failed securities class action against Star Gas. Arterton agreed with Star's counsel from Skadden, Arps, Slate, Meagher & Flom that the class' claims were almost entirely without merit, and that Labaton and Barroway knew as much early in the litigation. She ordered the plaintiffs firms to pay all of Star's attorney fees and costs.”Taken from and as reported by Law.com
10Complaint Filed by plaintiff Contains a sworn statement alleging: Facts showing court has jurisdictionFacts establishing the plaintiff’s basis for reliefRemedy the plaintiff is seeking
11Example Portion of a Complaint “JURISDICTION AND VENUE 6. This is a complaint for trademark infringement, trademark dilution, and unfair competition arising under the Trademark Act of 1946, 15 U.S.C. §§ 1051, et seq., as amended (the “Lanham Act”), for common law trademark infringement and unfair competition and for trademark dilution under the laws of the State of Missouri. 7. This Court has original subject matter jurisdiction over Plaintiff’s claims pursuant to 28 U.S.C. §§ 1331 and 1338 and 15 U.S.C. §§ 1116 and This Court has supplemental jurisdiction over state law claims under 28 U.S.C. § This Court has personal jurisdiction over Defendants in that they do business and reside in the State of Missouri and in this District. 9. Venue is appropriate in this judicial district under 28 U.S.C. § 1391 in that Defendants are subject to personal jurisdiction in this judicial district, and this is the District in which events giving rise to the claims hereinafter set forth occurred.”Taken from the complaint filed by North Face Apparel Corp against South Butt
12Service Service of Process Method of Service Formally notifying the defendant of a lawsuitComplaint and a summonsMethod of ServiceProcess serverMailOther acceptable rulesHow are corporations served?
13Answer Response to the complaint Admit or deny each of the plaintiff’s allegationsAffirmative DefensesCounterclaims
14Example Answer“12. Defendants admit Plaintiff uses the phrase NEVER STOP EXPLORING on some of its marketing materials and products. Defendants are without information sufficient to form a belief as to the veracity of the remaining allegations contained in this paragraph and, therefore, deny same.13. Defendants are without information sufficient to form a belief as to the veracity of the allegations contained in this paragraph and, therefore, deny same.14. Defendants admit Plaintiff has attached documents to its Complaint which it has identified as Exhibit A. Defendants respectfully refer the Court to the documents themselves for a complete determination of their terms and proper interpretation. Defendant is without information sufficient to form a belief as to the common law lights Plaintiff identified in this paragraph and, therefore, deny same.”Taken from the response filed by South Butt:
15Motion for Summary Judgment Judgment without a trialNo facts are in disputeQuestion is how the law applies to the factsEvidence is viewed in light most favorable to other party
16DiscoveryAllowed for any matter that is relevant to a claim or defense of a partyInformation that is relevant or likely to lead to relevant information is discoverableElectronic discovery discussion
17Scope of RelevancyThe test for whether something is discoverable is based on the relevancy of the subject matter and not admissability of the material at trial.What is discoverableInfo about matters that are not in dispute but are relevantInformation about witnessesInsurance coverageFinancial Status
18DepositionsSworn testimony by a party to the lawsuit or by any witnessRecorded by a court officialCreates ability to impeach at trial
19Limits on Scope of Deposition Depositions may be taken by telephone and other than stenographicallyAll parties may pose questionsNo more than 10 depositions per partyGenerally can’t depose the same person more than once without stipulation or leave of the courtObjections to QuestionsWitness may be instructed not to answer toPreserve a privilegeEnforce a limitation on evidence imposed by the courtPresent a motion for a protective orderDeposing attorney may seek motion to compel
20Use of Depositions at Trial Depositions are generally not admissible at trial because they are hearsayDepositions may be admissible when:Deposition statements by party witnesses are admissible against those partiesTo impeach a nonparty witness who has changed their storyDeposed party is unavailable (e.g., dead or sick)
21InterrogatoriesWritten questions for which written answers are prepared and signed under oath.
22Duty to RespondWhen responding, the party must provide facts known by the party and facts that are available to the partyThe party must answer or object within 30 daysThe party must investigate if they don’t have personal knowledge but have access to the answerIf extensive search would be required, the party can specify the pertinent records and give the asking party access to the records.
23Rules of EvidenceEvidence presented during trial is fair and reasonableRelevant evidence tends to prove or disprove a fact in question or to establish the degree of probability of a fact or actionMay not be admitted if reliability is in question or if its probative value is substantially outweighed by other considerations
24Objections at Trial Argumentative Questions Lack of Foundation Assuming Facts Not in EvidenceQuestions Calling for NarrativeNon-Responsive AnswerRepetition
25Argumentative Questions Question: (Cross-examination of defendant in automobile crash case.) How can you testify that the light was green when you drove your car into the intersection? The fact of the matter is that you didn’t see the light; otherwise, your car would not have struck the plaintiff. Right?Objection: I object. Argumentative, your honor, Rule , Fed. R. Evidence
26Lack of FoundationQuestion: What color did the traffic light show for eastbound automobiles?Objection: I object. Foundation not shown, your honor. Rule , Fed. R. Evidence
27Assuming Facts Not in Evidence Question: After the red car drove through the stop sign, where in the intersection did the collision occur? (Witness earlier had testified only that she saw the vehicle at the point of impact.)Objection: I object. Assuming facts not in evidence, your honor. There is no testimony in the record that the red car went through a stop sign.
28Questions Calling for Narrative Question: Ms. Witness, moving to the time after the accident, in your own words will you please tell the jury what your life has been like?Objection: I object. Overly narrative response is asked for, your honor.
29Non-Responsive Answer Question: Did you see the other drive get out of his car right after the wreck?Answer: He told me he had insurance with Travelers.Motion: Motion to strike, your honor. The witness’s answer was nonresponsive, and contained inadmissible matter under Rule , Fed. R. Evidence.
30RepetitionQuestion: I ask you again, how can you be sure the light was red?Objection: Objection; asked and answered. Question is repetitive, your honor.
31HearsayHearsay is testimony given in court about a statement made by someone else who was not under oath at the time of statementGenerally not admissible
32Appellate Review Appellate Court Options Affirm Reverse Remand In Part Modify
33Legal Considerations in Selecting Business Format
34Where to Set up the Business Situs - the legal and operating jurisdiction of a business.Home state, Delaware, or other place
35ControlHow much control will the business owner(s) have over the business?Depends on type of organization
36LiabilityCertain business organizations provided for limited liability, while others do notLimited Liability - liability that is restricted by law or by contract and that prevents the owner of a business from being held personally liable for business debts. The owner can only lose his or her investment in that company.
37TaxationCertain business forms are taxed once (i.e., directly through the owners) and other business forms are double taxed (i.e., a tax on the business AND a tax on the individual)
38CapitalizationDoes the business need to have significant asserts to operate?
39Transferability of Ownership Should ownership or portions of ownership of the business be transferable to others?
43FEDERAL CONSTITUTIONAL POWER "The Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."U.S. CONST. Art. I, §8, cl.8.
44Copyright Requirements For an author to have a valid copyright in a particular work, the work must(i) be original,(ii) remain fixed in a tangible medium of expression, and(iii) have involved a minimum degree of creativity.
45Originality Must: Artistic merits are irrelevant, be an original work of the author“a work independently created by its author, one not copied from pre-existing works, and a work that comes from the exercise of the creative powers of the author's mind, in other words, ‘the fruits of [the author's] intellectual labor.’”Artistic merits are irrelevant,The underlying idea of a work is not subject to copyright protection.
46FixationWorks must be fixed in a tangible medium of expression to be protected under the Copyright Act.Works must be embodied in a tangible form that is “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”The requirement for fixation is met when the work can either be directly perceived or perceived with the aid of a machine or other device.
47Fixation“Artic contends that the audiovisual displays of Midway's games do not meet that requirement. Artic's argument is based on the specific technology by which the images that appear on the game screens are generated. ….“While Artic's argument has a certain facial validity, it nonetheless fails. The fixation requirement, as is clear from the statute, does not require that the work be written down or recorded somewhere exactly as it is perceived by the human eye. Rather, all that is necessary for the requirement to be satisfied is that the work is capable of being "reproduced ... with the aid of a machine or device." 17 U.S.C. § 102(a).”
48Not Protected by Copyright Ideas, concepts, facts, historic eventsPlot concepts & outlines (only plot details)Stock plots & scenesStereotype charactersMaterial copied from public domain
49OTHER UNCOPYRIGHTABLE MATERIAL Words & short phrases; familiar symbols or designs; variations of typographical ornamentation, lettering or coloring; lists of ingredients or contentsWorks consisting entirely of public domain information: e.g., standard calendars, height & weight charts, tape measures & rulers, schedules, lists or tables taken from public documents or other common sources
51Protection of Fictional Characters Is a fictional character an idea (rather than an expression of an idea) and therefore not protectable by copyright?
52Protection of Fictional Characters “It is clear that when cartoons or movies are copyrighted, a component of that copyright protection extends to the characters themselves, to the extent that such characters are sufficiently distinctive.”See Warner Bros. Entertainment, Inc. v. X One X Productions (8th Cir. 2011)
53Klinger v. Conan Doyle Estate 7th Circuit 2014Case historyD.C. granted Klinger’s motion for summary judgment and issued a declaratory judgment for Klinger that provided Klinger could use the material
54Klinger v. Conan Doyle Estate Sherlock Holmes created by DoyleCopyright on original stories have expiredCopyright on final 10 stories don’t expire until“Once the copyright on a work expires, the work becomes a part of the public domain and can be copied and sold without need to obtain a license from the holder of the expired copyright.”
55Klinger v. Conan Doyle Estate Klinger prepared an anthology containing stories written by modern authors on Sherlock HolmesKlinger did not obtain a license from the Doyle estate, but Random House didKlinger was preparing a sequelDoyle estate made threats regarding the book absent an additional license being taken from the Doyle estate for the new workKlinger sued for declaratory judgment
56Klinger v. Conan Doyle Estate Doyle’s contentionCopyright in a character extends beyond the original work because the character is further developed in subsequent works
57Klinger v. Conan Doyle Estate “When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow‐on authors”Additional works are derivative works, and copyright only extends to additions of originality
58Klinger v. Conan Doyle Estate “The ten Holmes‐Watson stories in which copyright persists are derivative from the earlier stories, so only original elements added in the later stories remain protected. … The ‘freedom to make new works based on public domain materials ends where the resulting derivative work comes into conflict with a valid copyright’”
59Klinger v. Conan Doyle Estate “An author ‘could not copyright a character described merely as an unexpectedly knowledgeable old wino,’ but could copyright ‘a character that has a specific name and a specific appearance.’”
61Protection SchemesSome works are protectable by amendments or extensions to the copyright law, or by other laws that have similar rights to copyright law
62List of Protection Schemes ArchitectureHot NewsRights in IdeasDMCA/Access to Works (future class)
63Architecture“An original design of a building created in any tangible medium of expression, including a constructed building or architectural plans, models, or drawings, is subject to copyright protection as an “architectural work” under section 102 of the Copyright Act (title 17 of the United States Code), as amended on December 1, 1990.“Protection extends to the overall form as well as the arrangement and composition of spaces and elements in the design but does not include individual standard features or design elements that are functionally required.”
64National Basketball Assoc. v. Motorola, Inc. How news elements [from INS](i) the plaintiff generates or collects information at some cost or expense(ii) the value of the information is highly time-sensitive,(iii) the defendant's use of the information constitutes free-riding on the plaintiff's costly efforts to generate or collect it(iv) the defendant's use of the information is in direct competition with a product or service offered by the plaintiff(v) the ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened
65Rights in Ideas Some ideas may be protectable by an implied contract Implied contract when creator of an idea submits the idea to another party for purposes of selling it, and the parties come to a mutual understanding that the recipient will pay for any use of the ideaIssue - State law “implied in fact” contracts are not preempted by the Copyright Act.Why no copyright protection/action?Possibly because of No work
67Other Areas Common Law Copyright Registration and Deposit Term Notice RequirementRegistration
68Common Law CopyrightWorks in "fixed medium of expression" are protected exclusively by Copyright Act [§ 101]Published works, unpublished works, sound recordings, broadcastsUnfixed works are protected by common law copyrightExtemporaneous utterances, unchoreographed dance performances, unwritten jazz & musical performancesUnpublished works created before January 1, 1978 (even if in a "fixed medium")
69Registration and Deposit Work can be registered at any time [§ 408(a)]Not a prerequisite to copyright protection [§ 408]U.S. authors must register before bringing infringement suit [§ 411(a)]Creates prima facie presumption of validity [§ 410(c)]Deposit: [§ 407]2 complete copies of best edition must be deposited in Library of Congress within 3 months of first publicationNot a prerequisite to copyright protection [§ 407(a)]Penalty: $ 250 + retail price of undeposited workSega's certificates of registration establish a prima facie valid copyright in its video game programs. 17 U.S.C. s 410(c); Apple Computer, Inc. v. Formula Int'l Inc., 725 F.2d 521, 523 (9th Cir.1984). Sega Enterprises Ltd. v. MAPHIA, 857 F.Supp. 679, (N.D.Cal. 1994)
70Term What is the term of a copyright registration? Life of the Author + 70 yearsFor anonymous works, pseudonymous works, and works made for hire - 95 years from publication or 120 years from creation, whichever expires first
72Copyright Registration The Copyright Office’s copyright registration system is available online atYou can print paper forms from the same link, but paper submissions for registration are more expensive.
73Copyright Registration Computer SoftwareForm TXDifferent Fees for online v. paperNo trade secretsfirst 25 and last 25 pages of source codeWith trade secretsFirst 25 and last 25 pages of source code with portions containing trade secrets blocked out; or • First 10 and last 10 pages of source code alone, with no blocked out portions; or • First 25 and last 25 pages of object code plus any 10 or more consecutive pages of source code, with no blocked out portions; or • For programs 50 pages or less in length, entire source code with trade secret portions blocked out.
74Copyright Registration Registration of a single work as a literary work should cover visual display as wellHowever, many video games are covered as audio visual works instead of literary workSee Circular 61 for more information on registering a copyright in software
75Foreign ProtectionU.S. authors are entitled to protection in foreign jurisdictions under the Berne ConventionNo requirement to register the work in the foreign country or comply with other formalities in foreign jurisdictionHowever, infringement action must be brought in foreign jurisdiction under foreign law
77OwnershipGeneral Rule – Copyright ownership vests with the author(s) of the workCopyright ownership of a work can be assigned to anotherImportant exception – work made for hire
78Work Made For Hire Within the Scope of Employment EmployeesWithin the Scope of Employmentthe work is deemed authored by the employer and the employer will have all exclusive rights associated with the work.Outside the Scope of Employmentthe work is deemed authored by the employee and the employer will simply have a license to use the particular embodiment of the work without the exclusive rights associated with the work
79Work Made For Hire Non-Employees The work must be: specially ordered or commissioned,for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, andin a written instrument signed by the parties that states the work shall be considered a work made for hire.
80Community for Creative Non-Violence et al. v. Reid Supreme Court 1989Case historyDC - work is a “work made for hire” of which Synder is the ownerCt of Appeals - work is not a “work made for hire” and Reid is the owner
81Community for Creative Non-Violence et al. v. Reid Synder wanted a sculpture to be created for CCNV featuring modern nativity scene with homeless peopleSynder finds Reid“The parties agreed that the project would cost no more than $15,000, not including Reid's services, which he offered to donate. The parties did not sign a written agreement. Neither party mentioned copyright.”
82Community for Creative Non-Violence et al. v. Reid
83Community for Creative Non-Violence et al. v. Reid Things go down hill…Sculpture is repaired; Synder wants to take it on tour and Reid refuses; Reid obtains a copyright registration for the work; Synder wants the sculpture back and Reid refuses; Synder seeks a competing registration for the work
84Community for Creative Non-Violence et al. v. Reid “The Copyright Act of 1976 provides that copyright ownership ‘vests initially in the author or authors of the work.’ .. As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.”
85Community for Creative Non-Violence et al. v. Reid Work made for hire is an exception“Classifying a work as ‘made for hire’ determines not only the initial ownership of its copyright, but also the copyright's duration, § 302(c), and the owners' renewal rights, §304(a), termination rights, § 203(a),and right to import certain goods bearing the copyright, §601(b)(1).”
86Community for Creative Non-Violence et al. v. Reid Different viewswhenever the hiring party retains the right to control the productwhen the hiring party has actually wielded control with respect to the creation of a particular workcommon‐law agency"formal, salaried" employees
87Community for Creative Non-Violence et al. v. Reid “[W]hen Congress has used the term ‘employee’ without defining it, we have concluded that Congress intended to describe the conventional master‐servant relationship as understood by common‐law agency doctrine.”
88Community for Creative Non-Violence et al. v. Reid “In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party's right to control the manner and means by which the product is accomplished.”
89Community for Creative Non-Violence et al. v. Reid Factors – (i) the skill required; (ii) the source of the instrumentalities and tools; (iii) the location of the work; the duration of the relationship between the parties; (iv) whether the hiring party has the right to assign additional projects to the hired party; (v) the extent of the hired party's discretion over when and how long to work; (vi) the method of payment; (vii) the hired party's role in hiring and paying assistants; (viii) whether the work is part of the regular business of the hiring party; (ix) whether the hiring party is in business; (x) the provision of employee benefits; and (xi) the tax treatment of the hired party.
90Community for Creative Non-Violence et al. v. Reid “Examining the circumstances of this case in light of these factors, we agree with the Court of Appeals that Reid was not an employee of CCNV but an independent contractor.”
92Types of WorksDerivative WorkJoint WorkComposite WorkCompilation
93Derivative Work“A ‘derivative work’ is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a ‘derivative work’.”A derivative work is a work based upon one or more preexisting works where the original work is recast, transformed, or adapted.The derivative work copyright protects only new materials contributed by the author, and does not affect or enlarge the scope, duration, ownership, or subsistence of any copyright protection in the preexisting material.
94Joint Work“A ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”The joint owners can independently exploit the work without consent of the other joint owners, but must account to the other joint owners for such exploitation.Term – life of last surviving author + 70 years
95Composite WorkA composite work is a work prepared by two or more authors without the intent to merge their contributions into a unitary whole.The work is treated as multiple works for licensing and duration each of the component parts.
96Compilations“A ‘compilation’ is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term ‘compilation’ includes collective works.”
97Compilations What did the Federal Notice say about dance moves? “A claim in a choreographic work must contain at least a minimum amount of original choreographic authorship. Choreographic authorship is considered, for copyright purposes, to be the composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive whole. Simple dance routines do not represent enough original choreographic authorship to be copyrightable.”
98Compilations What did the Federal Notice say about exercise movements? “Exercise is not a category of authorship in section 102 and thus a compilation of exercises would not be copyrightable subject matter. The Copyright Office would entertain a claim in the selection, coordination or arrangement of, for instance, photographs or drawings of exercises, but such compilation authorship would not extend to the selection, coordination or arrangement of the exercises themselves that are depicted in the photographs or drawings.”
99ProgramCompletedAll course materials - Copyright Randy L. Canis, Esq.99