SoCal IP Institute
Please join us for the SoCal IP Institute meeting, Monday, February 14 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following cases:

Kwan v. Schlein, 09-5205 (2d. Cir. Jan. 25, 2011) (case attached)  Ms. Kwan was hired by BRB publications in 1998 to provide 100 hours of editing for Mr. Schlein’s book entitled Find it Online.  Ms. Kwan was also to receive a by line as “editor” of the book.  After Ms. Kwan completed the 100 hours, Mr. Schlein asked her to continue editing the book.  The first edition of the book eventually was published in January of 1999 naming Ms. Kwan as an editor.  Second through fourth editions were published in 1999, 2002 and 2004.

Kwan filed suit in January 2005 alleging copyright infringement and attempted to file a copyright registration naming her as co-author.  The application was  later “corrected” to name her as sole author.  The district court granted summary judgment that her “infringement” action was essentially an action for ownership of the copyright that was time-barred as falling outside of the three-year statute of limitations.  The district court also granted Schlein’s request to dismiss its counterclaims without prejudice.

The 2nd Circuit agreed with the district court in all respects.  The summary judgment was proper and the dismissal of counterclaims without prejudice did no legal harm to Kwan.

Lessem v. Taylor, No. 07-10601  (S.D.N.Y. Feb. 3, 2011) (case attached)  Ryan Lessem and Douglas Johnson wrote and recorded “Elevator” in 2002.  It was never commercially distributed, aired on the radio and it never was distributed via the internet.  Mr. Lessem and Mr. Johnson were allegedly attempting to use “Elevator” to land a record deal.  The song “How We Do” was written in 2004 by a number of artists including The Game, Dr. Dre and 50 Cent.  Both songs include the phrase “this is how we do” repeated four times in each chorus.  In 1999, 50 Cent included the phrase “this is how we do” in another song entitled “How to Rob”.  The parties did not dispute that the parties had never met and that the defendants had not received copies of the plaintiff’s music.  However, Mr. Lessem asserted that the producer of “How we Do”, Chris Pope, met and listened to Mr. Lessem’s music while Mr. Lessem worked at Sam Ash music in New York City.

The plaintiffs moved for summary judgment of infringement.  Universal Music Group and Black Wall Street Publishing each moved for summary judgment of noninfringement on the basis of a lack of access.  BWS separately moved on the basis that they do not own the copyright in the allegedly infringing song and did not cause the plaintiff’s alleged damages.

The court granted BWS’ motion and denied both the plaintiff’s and UMG’s motions for summary judgment primarily because factual questions regarding access to the allegedly infringed work and to the copyright protection that should afforded to the allegedly infringed elements remained.  These questions were not suitable for determination on summary judgment.