What do hip-hop tracks, Christmas-themed works, and vampires have in common? Usually not much, but they are all subjects of copyright cases recently filed in the Atlanta Division of the U.S. District Court for the Northern District of Georgia. Three complaint filings occurred within three days of one another.
Soulja Boy’s “Swag Daddy” Charged as Infringing Work
On September 14, 2012, plaintiffs Hip Hop Frat House and Michael J. Garcia filed a complaint against defendants DeAndre Cortez Way (aka “Soulja Boy“) and S.O.D. Money Gang Entertainment, Inc. for copyright infringement, breach of implied contract, and related causes of action.
According to the Complaint, plaintiff Garcia created two musical compositions, one called “Racks” in or around 2010, and another that included “Racks” or a derivative thereof, in or around June 21, 2011. The Complaint alleges that Mr. Garcia registered those works on or around September 9, 2010 and August 8, 2011, respectively.
The Complaint further alleges that in or around June 2011, an agent of plaintiff Frat House e-mailed to Way Mp3 files of several musical compositions, including “Racks,” “for the sole and exclusive purpose of having him consider the tracks for his use in the production of future musical compositions, upon issuance of proper licenses or assignments for the outright purchase by Way or S.O.D.”
Plaintiffs allege that following a period of several weeks during which time Frat House’s agent sent several follow-up e-mails to Way that went unanswered, Way created the track “Swag Daddy,” “which was based upon and made full use of the track ‘Racks’ in complete, unedited form,” and that the track appears on Way’s album “21:EP,” accessible on certain websites.
The complaint recites six counts, or claims for relief. In their breach-of-implied-contract claim, plaintiffs allege: “In using ‘Racks’ in the creation of ‘Swag Daddy,’ Defendants effectively accepted the offer to license or purchase the track from Plaintiffs, and Defendants knew or should have known that Plaintiffs would expect reasonable and adequate compensation for the benefit conveyed to Defendants, despite the lack of a formal agreement permitting such use.”
The case is Hip Hop Frat House and Michael Garcia v. DeAndre Cortez Way and S.O.D. Money Gang Entertainment, Inc., No. 1:12-cv-3224-JOF, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on 09/14/12. The case has been assigned to Senior U.S. District Judge J. Owen Forrester.
Christmas-Themed Product Seller Files Declaratory Judgment Action
On September 17, 2012, Stone Mountain-based Mud Pie, LLC (“Mud Pie”) filed a declaratory judgment action against Kentucky-based company Clay Chick Ceramics, LLC (“Clay Chick”). The lawsuit seeks a judgment declaring that certain Clay Chick copyrights are invalid and not infringed by Mud Pie.
Mud Pie describes itself as “a leader in the gift, baby, and women’s accessories sectors of the giftware and home accents market, with a target demographic of female consumers.” It describes Clay Chick’s products as “personalized items and ornaments” and states: “Similar to Mud Pie, Clay Chick has its items manufactured in China and sells them online to high-end retail boutiques.”
Mud Pie’s complaint alleges that in January of 2008, it “designed a triangular-shaped reindeer face [shown at right] for use on Christmas gift items, including baby clothes and ornaments,” and that in 2010, it designed its “‘North Pole’ collection of tabletop items and giftware,” which included a reindeer design inspired by its 2008 design as well as “classic images” of a snowman and Santa Claus.
Mud Pie further alleges that in late 2008, Ms. Stacy Vollet created Clay Chick and designed three Christmas ornaments – a triangular-shaped reindeer face, a Santa Claus face, and a snowman face (collectively, “the Christmas icons”) – that she licensed to Clay Chick, which then sold them. That same year, according to the complaint, Clay Chick published a design for “a ceramic ornament consisting of a top view of a baby’s black-with-white-polka-dots ‘Mary Jane’ style shoe [“the Baby Shoe icon”].”
In September 2011, Mud Pie alleges, it designed a baby shoe-themed picture frame, which it first sold in January of 2012 (“the Baby Shoe Frame”).
According to the complaint, Clay Chick’s counsel twice threatened Mud Pie with litigation, once in September 2011 over the North Pole collection, and again in September 2012, over both the North Pole collection and the Baby Shoe Frame. The complaint also alleges that in January 2012, Clay Chick obtained copyright registrations for the Christmas icons and for the Baby Shoe icon.
Mud Pie alleges that it “is reasonably apprehensive that if it continues to sell its North Pole line and Baby Shoe frame, it will be sued by Defendants for copyright infringement,” and contends that its products are not substantially similar to Clay Chick’s registered works. Mud Pie therefore seeks a declaratory judgment of noninfringement.
Mud Pie also seeks a declaratory judgment of invalidity of Clay Chick’s copyrights for the Christmas and Baby Shoe icons. Regarding the Christmas icons, Mud Pie states that they are scenes-a-faire and therefore are not subject to copyright protection.” Regarding the Baby Shoe icon, Mud Pie contends that it is “an image found in the public domain.”
The case is Mud Pie, LLC v. Clay Chick Ceramics, LLC and Stacy Vollet, No. 1:12-cv-3242-CAP, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on 09/17/12. The case has been assigned to U.S. District Judge Charles A. Pannell, Jr.
Iceland-Based Company Files TRO Motion over IP in Vampire and Werewolf Role-Playing Games
On September 18, 2012, plaintiffs CCP hf (based in Reykjavik, Iceland) and its wholly-owned subsidiary CCP North America (based in Stone Mountain, GA) (collectively “CCP”) filed a complaint asserting counts for not only copyright infringement, but also for unfair competition under federal and Georgia law, as well as related state law claims. Defendant iFree Studio, Ltd. (“iFree”) is a Chinese company based in Hong Kong. On the same date, CCP also filed a Motion for Temporary Restraining Order (“TRO”) and Preliminary Injunction against iFree.
CCP alleges that it succeeded to the intellectual property interests of White Wolf, Inc., a company that merged with CCP in 2006. CCP identifies as two of its “signature product lines” the role-playing game Vampire: The Masquerade and a game identified by its rulebook titled Werewolf: The Apocalypse, with those games having been first published in 1991 and 1994, respectively.
CCP states: “According to Vampire: The Masquerade, the first vampire was Caine, slayer of Abel. God cursed Caine for killing Abel by making him a vampire.” Additionally, CCP alleges that using basic storylines from those product lines, it created the World of Darkness, a world in which vampires and werewolves live.
CCP’s derivative works from the above product lines “number in the hundreds,” according to the complaint, and include “companion books to the role-playing games, novels, updated rulebooks, storyteller guides, videogames, a television series produced by Spelling Entertainment, action figures and other merchandise bearing the copyrights and trademarks of CCP.” CCP alleges that readers of its books are estimated to number in the millions – 6 million for Vampire: The Masquerade and 3 million for Werewolf: The Apocalypse. CCP’s complaint identifies a total of 23 copyright registrations for its signature lines and derivative works.
CCP’s complaint states: “Throughout CCP’s works, various unique terms were created to describe aspects of the World of Darkness. Many of these terms have been used in such a way as to constitute trademarks, which have been registered with the [USPTO].” CCP proceeds to list such trademarks, both registered and unregistered, for example:
- “World of Darkness” (registered)
- “Kindred” (unregistered) and “Kindred of the East” (registered)
- “Camarilla” (registered) – defined by CCP as “the largest of vampire sects and are the protectors of the Masquerade, an organized campaign enforced by the Camarilla to convince people that vampires do not exist.”
- “Jyhad” (unregistered) – defined by CCP as a term used “to describe the war between vampire sects.”
iFree markets a game called Vampire War, which CCP alleges is available through online sources such as Microsoft Windows® Phone, the iTunes® App Store, Google Play, www.vampire-war.com, “and potentially other locations on the internet.” At the iTunes® App Store, iFree describes its game as follows:
Ah, a newborn, welcome to the world of darkness!
For centuries uncounted, we kindreds stand atop of the world, reigning over the reigns of the mortal worlds.
There was a challenger – lupines, or werewolves called by the mortals, which we have fought for centuries and merged victory against them in the end.
And hence came the Jyhad, divided all our clans into three sects – the Camarilla, the Sabbat, and the independent Inconnu. We take different paths towards our final death in Gehenna.
And so like every old story, here began the conflict for the sarcophagus which is rumored as containing the body of the Third Mortal Caine, the first vampire, as some believed. Truth or not, with the civil war broke among the kindreds and sects, there again rise the lupines, and mortals like witch-hunters.
My Prince, my story has ended. Now how would you lead us to finish this chaos and bring us back to the dominance we once held?
CCP quotes the above text verbatim and includes a printout of that web page as Exhibit B to its complaint.
Parties’ Interaction Prior to Lawsuit
The parties apparently began sparring over IP issues in the context of Microsoft’s DMCA (Digital Millennium Copyright Act) Policy. Apparently, CCP submitted a claim of infringement under that policy, which caused iFree to respond on August 15, 2012 by submitting a “Content Infringement Counter Notice Form,” shown in Exhibit A to iFree’s complaint. In that form, iFree indicated, among other things, that it: (1) disputed CCP’s claim of infringement; (2) removed Vampire War from the Microsoft Marketplace; and (3) consented “to the jurisdiction of the Federal District Court for the judicial district in . . . any judicial district in which Microsoft may be found.” Among its bases for noninfringement, iFree contended: “[T]he only similarity of the two games is a character of the back ground [sic], they are two stories about vampire [sic], or the story between vampire [sic] and other races.”
In response, CCP’s counsel sent a cease-and-desist e-mail (printout at Exhibit C to complaint) to an iFree representative listing certain copyrights claimed by CCP, as well as trademarks allegedly used in Vampire War. Following those lists, that e-mail stated: “As you can see from the above, your contention that the only infringing similarities are in the ‘background’ and your use of ‘World of Darkness’ is neither correct nor credible.” The e-mail warned that unless iFree removed Vampire War from all Internet locations by September 3, 2012, CCP would file suit and seek emergency injunctive relief.
CCP’s Causes of Action Asserted Against iFree
The first, second, and third counts in the complaint are copyright infringement, federal unfair competition under § 43(a) of the Lanham Act, and violation of the Georgia Uniform Deceptive Trade Practices Act (“GUDTPA”), respectively.
The fourth count of CCP’s complaint is for unfair competition under § 23-2-55 of the Official Code of Georgia. That section provides: “Any attempt to encroach upon the business of a trader or other person by the use of similar trademarks, names, or devices, with the intention of deceiving and misleading the public, is a fraud for which equity will grant relief.” Read literally, the statute limits the remedy for violation to equitable (thus, injunctive) relief, but there is some legal ambiguity on that issue. “Relief under [§ 23-2-55] depends upon showing of intent to deceive. However, this intent may be presumed if encroachment is done with knowledge of the prior right.” “In place of an affirmative showing of specific intent, Georgia courts will apply [§ 23-2-55] when it is shown that: (1) the defendant was put on notice or had knowledge of the plaintiff’s [mark] and (2) the similarity in [marks] is likely to confuse or mislead the public.”
The fifth count seeks injunctive relief under GUDTPA and under § 23-2-55.
The final count of CCP’s complaint is for recovery of litigation expenses under § 13-6-11 of the Official Code of Georgia, based on its allegation that “iFree Studio acted in bad faith, has been stubbornly litigious, and caused CCP unnecessary trouble and expense . . . .” Some legal authorities regarding this statute may be found in a prior blog post.
CCP’s Motion for TRO and Preliminary Injunction
CCP filed this motion on September 18, the same date that it filed its complaint. The motion is accompanied by an affidavit of a Senior Producer from CCP North America, Inc. essentially averring to the facts recited in the complaint.
In an order entered on September 19, however, the Northern District of Georgia indicated that it will not set a hearing date on the TRO motion “until the court is satisfied that the defendant has notice of the motion and an opportunity to participate in the hearing.” In that order, the court denied CCP’s motion to effect service of the complaint and motion upon iFree by e-mail. As of the time of this writing, no hearing date has been set.
The case is CCP hf and CCP North America, Inc. v. iFree Studio Ltd., No. 1:12-cv-3249-CAP, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on 09/18/12. The case has been assigned to U.S. District Judge Charles A. Pannell, Jr.
Note: In an unrelated matter, CCP was itself recently sued for patent infringement in the Northern District of Georgia by Recognicorp, LLC. See prior blog post regarding that litigation.
UPDATE: On October 19, 2012, the court entered a Consent Order Granting Permanent Injunctive Relief. See our November 13 post.
“[S]cenes a faire
, which include ‘[i]ncidents, characters, or settings that are indispensable or standard in the treatment of a given topic[,] are not copyrightable.’” Corwin v. Walt Disney Co.
, 475 F.2d 1239, 1251 (11th Cir. 2007) (citation omitted). See also Walker v. Time Life Films, Inc
., 784 F.2d 44, 50 (2d Cir. 1986) (observing that there is no protection for common elements in police fiction, such as “drunks, prostitutes, vermin and derelict cars” and “foot chases and the morale problems of policemen, not to mention the familiar figure of the Irish cop”).
 Reis v. Ralls
, 250 Ga. 721, 725, 301 S.E.2d 40, 44 (1983) (“We find that the sellers have succeeded in showing that the buyers are knowingly using a confusingly similar name. Thus equity will enjoin.”
). Despite the foregoing, the Supreme Court of Georgia refused to limit relief for trade name infringement to injunctions. Diedrich v. Miller & Meier Assoc., 254 Ga. 734, 737, 334 S.E.2d 308, 311 (1985) (“The contention is made that if the right to protection of a trade name exists, the remedy is limited to injunctive relief and damages do not lie. We disagree.”) (citing O.C.G.A. § 51-1-6). This is so even though § 23-2-55 is the statutory protection against trade name infringement. Corrpro Cos., Inc. v. Meier, No. 3:03-CV-31, 2007 U.S. Dist. LEXIS 74897, at *5 (M.D. Ga. Oct. 5, 2007) (“‘Georgia protects tradenames by both common law and statute.’ Future Prof’ls, Inc. v. Darby, 266 Ga. 690, 691, 470 S.E.2d 644, 646 (1996). O.C.G.A. § 23-2-55 is a codification of the unfair competition principle regarding trade names . . . .”).
 Giant Mart Corp. v. Giant Discount Foods, Inc.
, 247 Ga. 775, 776, 279 S.E.2d 683, 685 (1981).
 Thompson v. Alpine Motor Lodge, Inc.
, 296 F.2d 497, 500 (5th Cir. 1961).