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Nothing Lost in Translation: Book’s Spanish Version Isn’t Different Creative Work

by Dana Breitman | Aug 31, 2023 | Trademarks

In a precedential opinion, the Trademark Trial & Appeal Board of the US Patent & Trademark Office upheld an examiner’s refusal to register a trademark on the ground that the proposed mark was the title of a single creative work and therefore did not function as a trademark. In re Douglas Wood, Serial No. 88388841 (TTAB, Aug. 15, 2023) (Adlin, Larkin, English, ATJs).

Douglas Wood sought to register the standard-character mark CHURCH BOY TO MILLIONAIRE for goods ultimately identified as “Books in the field of faith-based coaching, personal development, motivational and inspirational topics; books in the nature of memoirs; books about personal development; printed matter in the field of personal development, namely, books, booklets, curricula, newsletters, magazines, printed periodicals.” Since the title of a single book cannot be registered as a trademark, in support of the application Wood stated that the proposed mark was used on two separate books, an English-language book titled Church Boy to Millionaire and a Spanish-language book titled De Chico de Iglesia a Millonario. According to Wood, he published two books of different titles that had been marketed under the same mark as evidenced by use on his website.

The examining attorney refused registration, finding that the mark was the title of a single creative work and thus did not function as a trademark. Wood appealed.

The Board determined that Church Boy to Millionaire was the title of a single work, and that the book’s Spanish translation did not qualify as a separate work that might create a “series” entitled to trademark protection. The Board explained that “[t]he title of a single creative work, such as a book, is not considered to be a trademark, and is therefore unregistrable.” The Board further differentiated trademarks from copyrights, explaining that “[u]nlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name.”

Wood argued that Church Boy to Millionaire and its Spanish translation, De Chico de Iglesia a Millonario, were different works since the choice of the translator had a large impact on the version created. The Board explained that the issue was whether the content “has change[d] significantly” in translation. The Board acknowledged that translators can employ their unique skills and cultural understandings to produce different content for a book in another language. However, the examining attorney showed that Wood did not provide any evidence that the Spanish version had content that significantly differed from the English version. On the contrary, the evidence of use contradicted Wood’s position that the Spanish translation featured different content because his website’s links directed customers to “get the book today” and “get the book in Spanish,” which effectively confirmed that [...]

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Change in Law Leading to Case Dismissal Doesn’t Preclude Attorneys’ Fees

by Eleanor B. Atkins | Aug 24, 2023 | Copyrights

Addressing the symmetrical fee-shifting provision of the Copyright Act and whether a prevailing defendant was entitled to fees even when the plaintiff moved to dismiss the case in response to a change in law, the US Court of Appeals for the Seventh Circuit reversed the district court’s denial of attorneys’ fees and remanded the case for reconsideration. Live Face on Web, LLC v. Cremation Society of Illinois, Inc., et al., Case No. 22-1641 (7th Cir. Aug. 11, 2023) (Scudder, Kirsch, Jackson-Akiwumi, JJ.)

The Cremation Society of Illinois and its co-defendants (collectively, CSI) licensed software from Live Face on Web. Live Face on Web then sued CSI for copyright infringement, seeking damages of more than 1,000 times the initial license fee. Five years later, while summary judgment was pending, Live Face on Web moved to dismiss the case, arguing that the Supreme Court’s 2021 decision in Google LLC v. Oracle America, Inc. “made the defendants’ fair-use defense insurmountable.” The district court granted the motion to dismiss, and CSI filed a motion to recover fees. The court denied the motion for fees, in part because “awarding fees would neither encourage nor discourage other defendants from maintaining valid defenses against copyright claims.” CSI appealed.

The Copyright Act allows prevailing parties to recover costs and fees. The Seventh Circuit examined the nonexclusive factors that guide this analysis:

The frivolousness of the lawsuit
The losing party’s motivation for bringing or defending the lawsuit
The objective unreasonableness of the losing party’s claims
The need to advance considerations of compensation and deterrence.

The Seventh Circuit noted that the last factor relates to the purpose of the fee-shifting provision: “[b]y encouraging parties to stand on their rights, the Act’s symmetrical fee-shifting provision advances its core purposes.” A successful copyright infringement litigant “encourages others to use the copyright system, fostering further innovation,” whereas a defendant “who successfully protects his rights to use things in the public domain necessarily gives others a license to do the same.” The Court stated that prevailing defendants in particular benefit from a strong presumption that they are entitled to recover attorneys’ fees: “Without an award of attorney’s fees, a defendant faces pressure to abandon his meritorious defenses and throw in the towel because the cost of vindicating his rights (his attorney’s fees) will exceed the private benefit he receives from succeeding (a nonexcludable right to continue doing what he was already doing).”

In this case, the district court reasoned that CSI’s success was due to the change in the law rather than meritorious defenses and, therefore, awarding fees to CSI would not advance or deter any conduct. The Seventh Circuit disagreed, stressing that Live Face on Web did not demonstrate that it would have prevailed but for the Supreme Court’s decision in Google. Moreover, the Court noted that CSI had raised multiple other defenses that were not impacted by Google. In any event, the Court reasoned, “[i]n litigation, both sides accept that as the case evolves, the law might, [...]

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A Textbook Example: Single Online Sale Does Not a Minimum Contact Make

by Mike Baldwin | Aug 10, 2023 | Copyrights

The US Court of Appeals for the Eighth Circuit affirmed a district court’s grant of a motion to dismiss for lack of personal jurisdiction, finding that a single online sale did not establish minimum contacts to support personal jurisdiction. Kendall Hunt Publishing Company v. The Learning Tree Publishing Corporation, Case No. 22-1885 (8th Cir. July 24, 2023) (Smith, Wollman, Loken, JJ.)

Kendall Hunt Publishing filed a copyright infringement lawsuit against The Learning Tree Publishing in the District of Iowa. Before founding Learning Tree, Frank Forcier and John Coniglio worked remotely for Kendall Hunt from their homes in California. Both individuals traveled to Iowa for work, had regular contact with Iowa co-workers during their tenures and accessed files on an Iowa-based server. Nicholas Baiamonte teaches in California, where he wrote an online ethics textbook. Forcier negotiated with Baiamonte on behalf of Kendall Hunt from 2014 to 2016, and as a result, Baiamonte entered into contracts with Kendall Hunt to publish his textbook as Course Pack 4: Ethics. Baiamonte assigned publication rights to Kendall Hunt.

In 2019, Forcier and Coniglio incorporated Learning Tree in California to sell online textbooks to post-secondary students. Learning Tree targeted its advertising to California professors and educational institutions, as well as some limited sales to Colorado and Oklahoma. One of these textbooks was an ethics textbook that included some copyrighted portions of Baiamonte’s ethics textbook.

Kendall Hunt’s lawsuit alleged that a single purchase of the ethics textbook by an Iowa-based Kendall Hunt employee established the requisite minimum contacts with Iowa to support personal jurisdiction. Kendall Hunt also alleged that the prior contacts Forcier and Coniglio established with Iowa through their employment with Kendall Hunt should be attributed to Learning Tree. These contacts included Coniglio regularly traveling to Iowa from 1995 to 2006 and Forcier traveling to Iowa in 2005 and 2006. The district court rejected Kendall Hunt’s jurisdictional arguments and dismissed the complaint. Kendall Hunt appealed.

Reviewing de novo, the Eighth Circuit set out the factors to analyze Iowa’s long-arm statute, which is permissive up to the extent of due process. These factors include the nature and quality of Learning Tree’s contracts with Iowa, the quantity of the contacts, the relation of the cause of action to the contacts, the interest of the forum state and the convenience of the parties. They also include the additional factors for intentional torts: the intentionality of the acts; whether the contacts were uniquely or expressly aimed at the forum; and whether the contacts caused harm, or the defendant knew they were likely to cause harm, of which the majority occurred in the forum state.

The Eighth Circuit concluded that Learning Tree did not expressly aim at or target Iowa because it did not advertise in Iowa. The Court found that Kendall Hunt’s litigation-based purchase was the only sale, and the infringing conduct occurred in California. Based on this fact and the Court’s 2022 decision in Brothers & Sisters in Christ v. Zazzle, which was decided under similar facts, the Court [...]

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Burst That Bubble: Specific Knowledge Necessary to Prove Contributory Trademark Infringement

by Sarah Bro and Kathleen Lynch | Aug 3, 2023 | Trademarks

The US Court of Appeals for the Ninth Circuit addressed contributory trademark infringement for the first time, finding that specific knowledge is required for liability to attach. Y.Y.G.M. SA, DBA Brandy Melville v. Redbubble, Inc., Case Nos. 21-56150; -56236 (9th Cir. July 24, 2023) (Callahan, Nelson, Thomas, JJ.)

Brandy Melville manufactures clothing and home goods and owns multiple trademarks, including the Brandy Melville Heart and LA Lightning marks. Redbubble is an online marketplace where individual artists upload designs for printing on demand on various articles and Redbubble handles payment, manufacturing and shipping.

In 2018, on two consecutive days, Brandy Melville notified Redbubble of infringing products on its marketplace. Redbubble removed them. One year later, Brandy Melville sued Redbubble for trademark infringement. The district court granted summary judgment to Redbubble on several of its claims. The case then went to trial on Brandy Melville’s contributory infringement and counterfeiting claims. The jury found Redbubble liable for contributory counterfeiting of the Brandy Melville Heart and LA Lightning marks, contributory infringement of those marks and contributory infringement of various unregistered trademarks. However, the court granted Redbubble judgment as a matter of law (JMOL) as to the contributory counterfeiting claim for the Heart mark. Brandy Melville moved for a permanent injunction, attorneys’ fees and prejudgment interest. The district court denied each of Brandy Melville’s motions.

Redbubble appealed the denial of JMOL on contributory infringement claims and the finding of willful contributory counterfeiting of the LA Lightning mark. Brandy Melville appealed the grant of JMOL on contributory counterfeiting of the Brandy Melville Heart mark and the denial of permanent injunction, attorneys’ fees and prejudgment interest.

Addressing Redbubble’s appeal, the Ninth Circuit considered contributory infringement and contributory counterfeiting together. The issue of the applicable standard in questions of contributory liability was novel for the Ninth Circuit. The Lanham Act provides a cause of action when a party intentionally induces trademark infringement or when the party continues to supply products to a third party, despite knowing or having reason to know that the third party is engaging in trademark infringement. This case dealt with the latter.

In other contexts, the Ninth Circuit has applied the “knows or has reason to know” standard as satisfying the willful blindness (in lieu of actual knowledge) element. Willful blindness requires a subjective belief that infringement is likely occurring and deliberate actions were taken to avoid knowledge of that infringement. Redbubble argued that willful blindness requires specific knowledge, while Brandy Melville argued that there is a duty to take reasonable corrective action once a party obtains general knowledge of infringement. The Court noted that for contributory copyright infringement, specific knowledge is not required. In keeping with its sister circuits, the Court held that “willful blindness for contributory trademark liability requires the defendant to have specific knowledge of infringers or instances of infringement.” The Court, therefore, vacated and remanded for the district court to reconsider Redbubble’s JMOL motion under this standard for contributory trademark infringement.

The Ninth Circuit next considered Brandy Melville’s appeal, beginning [...]

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Serving a Perfect 10: No Protection for Embedding

by Jodi Benassi and Hannah Hurley | Jul 27, 2023 | Copyrights

The US Court of Appeals for the Ninth Circuit found that a photo- and video-sharing social networking service could not be liable for secondary copyright infringement because embedding a photo does not “display a copy” of the underlying image. Hunley v. Instagram, LLC, Case No. 22-15293 (9th Cir. July 17, 2023) (Bybee, Bumatay, Bennett, JJ.)

Embedding is a method of displaying images on a website by directing a browser to retrieve an image from the host server. Instead of hosting an image file on a home server, a website merely pulls the image, along with any other content, from an external server and displays it.

Alexis Hunley and Matthew Brauer are photographers who brought a class action lawsuit against Instagram on behalf of copyright owners whose work was “caused to be displayed via Instagram’s embedding tool on a third party website without the copyright owner’s consent.” Hunley alleged that Buzzfeed News and Time embedded Hunley’s Instagram posts (copyrighted photos and videos) within news articles. Hunley also alleged that Instagram’s embedding tool violated her exclusive display right under the Copyright Act by enabling third-party websites to display copyrighted photos posted to Instagram.

Hunley’s argument was unsuccessful, and the district court granted Instagram’s motion to dismiss. The district court determined that the Ninth Circuit’s 2007 holding in Perfect 10 precluded relief to Hunley. The court explained that under the “server test” set forth in Perfect 10, embedding websites that do not store an image or video does not “communicate a copy” of the image or video and therefore does not violate the copyright owner’s exclusive display right. The court explained that because Buzzfeed News and Time do not store images and videos, they do not “fix” the copyrighted work in any “tangible medium of express” (a copy), and therefore when they embed the images and videos on a website, they are not displaying “copies” of the copyrighted work. Hunley appealed.

Hunley argued that Perfect 10 was inconsistent with the Copyright Act, but the Ninth Circuit declined to consider the argument in detail as the proper procedure was to seek a rehearing en banc. While the Court was sympathetic to policy arguments advanced by Hunley (as well as other amici), the Court stated it was not its place to create a policy solution. Hunley’s final major argument questioned the validity of Perfect 10 in light of the Supreme Court’s 2014 decision in American Broadcasting Co. v. Aereo, but this too was rejected. The Ninth Circuit failed to see sufficient similarities between the performance and display rights, holding them as two distinct rights with few parallels.

Applying the server test to the facts presented, the Ninth Circuit found that Instagram could not be found secondarily liable for displaying images on third-party sites. Since Buzzfeed News and Time embedded the images and no copy was stored, they could not be liable for direct infringement. Because there was no direct infringement, there could be no secondary infringement, and the Court found that the district court properly [...]

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The Game of Life: Winner Gets Everything Except Attorneys’ Fees

by Connor S. Romm | Jul 13, 2023 | Copyrights

The US Court of Appeals for the First Circuit agreed with the trial court regarding the reasonableness of the plaintiff’s legal positions and found that the trial court did not abuse its discretion in denying the defendants, as the prevailing party, attorneys’ fees. The First Circuit determined that the positions advanced by the unsuccessful plaintiffs were not objectively unreasonable. Markham Concepts, Inc. v. Hasbro, Inc., Case Nos. 19-1927; 21-1957; -1958 (1st Cir. June 22, 2023) (Kayatta, Lipez, Thompson, JJ.)

The underlying case involved a copyright action concerning ownership rights to The Game of Life, a board game that has been widely popular since its launch in 1960. The Game of Life became the center of a long-standing dispute between its creators, Reuben Klamer and Bill Markham. Klamer, a toy developer, conceived the initial idea for the game and enlisted Markham to design and create the game prototype. Markham believed he deserved greater recognition for his contribution and felt the royalty he received was unfairly low.

In its previous ruling on the merits, the First Circuit affirmed the district court’s decision in favor of the Hasbro defendants (including Klamer). The Hasbro defendants then sought attorneys’ fees, which the district court denied. Hasbro appealed and moved for appellate attorneys’ fees.

Although both the district court and the First Circuit examined various factors, such as Markham’s motivations and the need for compensation or deterrence, the key factor for both courts in determining whether to award legal fees hinged on the reasonableness of Markham’s litigation arguments.

The merits of the underlying case revolved around the termination right provided by the Copyright Act of 1976 (1976 Act), which allows authors to terminate copyright grants after a certain period and thereby disentangle themselves from agreements made before the true value of their work became apparent. This right does not apply to works made for hire. In this instance, the issue of whether The Game of Life qualified as a work made for hire was determined under the Copyright Act of 1909 (1909 Act), as the game was created long before the 1976 Act took effect. Under the 1909 Act, Markham had to meet the “instance and expense” test, which treats contractors as employees of the party commissioning the work, thereby presuming copyright ownership in the latter. The district court held that The Game of Life was a work for hire because it was created at Klamer’s instance and expense.

Markham’s primary argument relied on the 1989 Supreme Court decision in Reid, which interpreted “employee” for purposes of the work-for-hire test as being defined according to “the general common law of agency.” Although Markham acknowledged that Reid was directed to the 1976 Act, he contended that the logic of Reid should extend to the 1909 Act, thereby nullifying the “instance and expense” test in favor of the general common law of agency.

Four years after the Supreme Court’s decision in Reid, however, the First Circuit applied the “instance and expense” test in Forward to a work covered [...]

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‘Show Me The Money’ Isn’t Enough: Disproportionate $1.7M Attorneys’ Fees Rejected

by Rodney Swartz, PhD and Hannah Hurley | Jun 22, 2023 | Copyrights

The US Court of Appeals for the Ninth Circuit reversed and remanded a $1.7 million award of attorneys’ fees, finding the amount unreasonable compared to the benefit the plaintiffs received. Lowery v. Rhapsody International, Inc., Case No. 22-15162 (9th Cir. June 7, 2023) (Smith, Collins, Lee, JJ.)

Streaming music providers such as Apple Music, Spotify and Napster (formally Rhapsody International) have fundamentally changed the way we enjoy music. Gone are the days of the mixtape. But to bring these services, providers must license the copyrighted music and pay royalties to the owners. At the time this case was filed, the two main licensing paths available to streaming music providers required either direct negotiations with the owners or compulsory licensing by serving a notice of intent to each owner. These paths were unworkable and antiquated given the millions of songs that the providers were playing.

David Lowery and others sued Rhapsody in 2016 on behalf of a putative class of copyright owners. They claimed Rhapsody had infringed their copyrights by reproducing and distributing their musical compositions through its platform without a license. The parties eventually reached a settlement. Rhapsody agreed to pay a maximum of $20 million to the class members, but because an earlier argument effectively decimated the putative class, the actual payout to the class was just over $50,000.

Despite the low amount paid to the class, the plaintiffs’ counsel requested $6 million in attorneys’ fees. The request was based on a “lodestar” calculation, where the number of hours reasonably spent on the case is multiplied by a reasonable hourly rate, then adjusted up or down as called for by the peculiarities of the case. The plaintiffs’ counsel estimated its fees to be around $2.1 million, with a proposed 2.87 multiplier due to the “exceptional” results in a “complex” case.

The magistrate judge disagreed and recommended reducing the lodestar to $1.7 million because one-fifth of the hours spent were either unreasonable or improperly blocked billed. The judge also recommended further reducing the lodestar value with a negative multiplier in light of the limited benefit actually paid out. The district court took issue with the magistrate judge’s cross-checking of the lodestar value against the amount paid. The court noted that there was “no bright-line rule” to cross-check a lodestar value either against the claimed amount ($50,000 in this case) or the possible recovery ($20 million). However, the district court agreed with the magistrate judge’s lodestar calculation and awarded $1.7 million in attorneys’ fees. Rhapsody appealed.

The Ninth Circuit rejected the award, concluding that the $1.7 million award was unreasonable given the small benefit to the class members. The Court explained that the actual benefit to the class must be considered when assessing the value of a class action settlement. Here, the Court pointed out that the district court should have cross-checked any lodestar calculations to ensure that there was a reasonably proportional benefit to the class members. The district court also should have disregarded the $20 million settlement cap when [...]

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A Single Picture Database Is Worth a Thousand Statutory Damages Awards

by Tessa Kroll | Jun 22, 2023 | Copyrights

In the latest appeal of a copyright infringement dispute, the US Court of Appeals for the Ninth Circuit upheld the lower court’s finding that the copyright owner’s photographs were not part of a single compilation for purposes of awarding statutory damages. VHT, Inc. v. Zillow Grp., Inc., Case Nos. 22-35147; -35200 (9th Cir. June 7, 2023) (McKeown, Fletcher, Gould, JJ.)

VHT is a professional real estate photography studio that real estate brokerages and listing services hire to photograph properties. VHT retouches the photographs, saves them in its photo database and licenses them to its clients for marketing purposes. In 2015, VHT sued Zillow for copyright infringement based on Zillow’s display of VHT photographs on its real estate listing website and on its Digs home design website. The district court found that Zillow was not liable for displaying VHT photographs on its real estate listing website or for displaying untagged, unsearchable VHT photographs on its Digs home design website. However, the district court found that Zillow’s display of tagged, searchable VHT photographs on Digs constituted infringement and that the searchability functionality was not fair use.

The parties cross-appealed, and the Ninth Circuit considered the issue of infringement in a 2019 decision (Zillow I). In this prior appeal, the Ninth Circuit agreed that Zillow’s display of VHT photographs on its real estate listing website was not copyright infringement, while Zillow’s display of searchable VHT photographs on its Digs home design website constituted infringement and was not fair use. The Ninth Circuit also reversed the jury’s finding that Zillow had willfully infringed 2,700 searchable VHT photographs displayed on Digs and remanded for consideration of whether the searchable photographs were a compilation for purposes of awarding statutory damages. On remand, the district court found that the photographs were not a compilation and awarded statutory damages of $200 for each innocently infringed photograph and $800 for each remaining photograph.

The district court also considered the impact of the Copyright Act’s preregistration requirement and Fourth Estate v. Wall-Street (Supreme Court, 2019) on VHT’s ability to sue. In accordance with Ninth Circuit precedent holding that registration is made when the Copyright Office receives a completed registration application, VHT had sued Zillow for copyright infringement after applying for copyright registration. However, the works were not registered until after the suit was filed. Just 11 days before Zillow I was decided, in Fourth Estate, the Supreme Court held that registration is made when the Copyright Office has registered a copyright after examination—not when the application is filed. Zillow argued that VHT’s claims should be dismissed because VHT did not satisfy the preregistration requirement. The district court excused the exhaustion requirement because dismissal would result in a massive waste of resources. The parties again cross-appealed.

Preregistration and Fourth Estate

Addressing the preregistration issue, the Ninth Circuit agreed that dismissal was not required. The decision to excuse compliance with a non-jurisdictional exhaustion requirement is based on whether the claim is wholly collateral to the substantive [...]

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PTO Seeks Comments on Strategies to Address Counterfeiting and Piracy

by Amol Parikh | Jun 8, 2023 | Uncategorized

On May 25, 2023, the US Patent & Trademark Office (PTO) requested comments on strategies to address counterfeiting and piracy. The PTO requested information on current anti-counterfeiting and anti-piracy strategies that have proven effective, as well as ideas for future strategies.

The PTO requested comments on the 14 points listed below. Respondents may address any, all or none of these points. The PTO will receive any input relevant to future strategies in the fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers.

1. Current anti-counterfeiting and anti-piracy strategies, and any trends in how often such practices guide plans for addressing these issues in the future.

2. The types of harms observed from sales of counterfeited and pirated goods.

3. How to educate consumers about the harms and dangers that may result from the use and sale of counterfeited or pirated products.

4. Current anti-counterfeiting and anti-piracy strategies that have proven successful, and those that have not. Information relating to targets of anti-counterfeiting and anti-piracy efforts, such as ecommerce platforms, physical markets and social media.

5. Anticipated challenges in the fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers, and how to address those challenges.

6. Observed patterns and trends in counterfeiting and piracy during the COVID-19 pandemic. An indication of whether the commenter anticipates that such patterns and trends will continue post-pandemic.

7. Patterns and trends observed in counterfeiting and piracy due to shifts in the economy. An indication of whether the commenter anticipates that such patterns and trends will continue and if so, an explanation regarding the expected impact on current and future strategic plans to combat counterfeiting and piracy.

8. The commenter’s thoughts on whether any strategic plans to combat counterfeiting and piracy might include collaboration with private or public parties. If a strategic plan is not collaborative, why not? If collaborative, a discussion of the anti-counterfeiting and anti-piracy strategies employed in the collaboration.

9. New collaborative efforts contemplated to combat counterfeiting and piracy and factors that will affect implementation decisions. Discussion of how future collaborations might be composed.

10. Effective technologies to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers, such as counterfeit product identification devices or advanced algorithms to secure supply chains and provide the identity of counterfeit goods online. A discussion of how anticipated strategies will improve an overall anti-counterfeiting and anti-piracy strategy.

11. How online enforcement activities intersect with trademark and copyright laws or procedures. Do online enforcement strategies include employing existing trademark laws to combat online counterfeiting? Do online enforcement strategies use existing copyright laws to combat online piracy? If so, describe these activities and suggestions for maximizing these practices.

12. Description of any fraudulent documentation or materials observed in the furtherance of online counterfeiting and piracy activity. For example, comment on whether, after reporting an infringement to a platform, a counter-notification was attached [...]

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First Circuit: Claim Preclusion Shouldn’t Apply to Bar Claims Under VARA

by Hannah Cohen | May 25, 2023 | Copyrights

Addressing for the first time whether federal res judicata law recognizes the alternative determinations doctrine, the US Court of Appeals for the First Circuit determined that a plaintiff’s claims under the Visual Artists Rights Act (VARA) were not precluded by a previous action in which she brought a federal copyright claim against the defendant. Foss v. Eastern States Exposition, Case No. 22-1313 (1st Cir. May 10, 2023) (Barron, Howard, Montecalvo, JJ.)

Cynthia Foss previously brought a federal copyright action against Eastern States Exposition that was dismissed. The previous action did not involve any claim under VARA. Eastern argued that claim preclusion should apply to bar the claim, and the district court agreed. Foss appealed.

To establish federal claim preclusion, a party must establish that there is a final judgment on the merits in an earlier suit, sufficient similarity between the causes of action asserted in the earlier and later suits, and sufficient identicality between the parties in the two suits. Foss did not dispute that the first and third requirements were satisfied, and thus the First Circuit’s decision turned on whether the second requirement was met.

Foss argued that the “alternative determinations” doctrine should apply. This doctrine strips a dismissal of claim preclusive effect if the dismissal rests on multiple grounds, not all of which would on their own render the dismissal claim preclusive. Whether the doctrine should apply was a matter of first impression in the First Circuit. Foss argued that the previous dismissal was in part based on “her failure to allege that she had satisfied the registration-related precondition to copyright infringement suits under § 411(a),” which was not a merits-based dismissal and therefore had no preclusive effect. Eastern argued that even if the First Circuit adopted the alternative determinations doctrine, the Court should limit the doctrine because the district court “rigorously considered” the merits-based rationale for dismissal in the previous action.

The First Circuit adopted the alternative determinations doctrine and rejected Eastern’s contention that the doctrine should not apply in the instant case because Eastern did not provide support for the contention that the district court in the previous action “rigorously considered” the merits-based grounds for dismissal of Foss’s federal copyright claims. The Court then remanded the case for further consideration, noting that Eastern might argue that the alternative disputes doctrine should be limited in this instance because of Foss’s failure to allege satisfaction of the precondition to suit, which might be prejudicial to Eastern.

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