Copyright Litigation & Counseling

In 2015, the U.S. District Court for the District of Oregon dismissed a copyright infringement and Digital Millennium Copyright Act (DMCA) case against Nike, Inc. Photographer Jacobus Rentmeester, who took a photograph of Michael Jordan executing a dunk in 1984 that was published in LIFE magazine, had claimed that Nike copied his protected expression in creating the iconic “Jumpman” logo for its Brand Jordan products. The court accepted Kirkland’s arguments that the plaintiff could not monopolize the idea of Jordan dunking a basketball in a particular way, and that Nike’s photograph and Jumpman logo were not substantially similar to the plaintiff’s photograph as a matter of law. The U.S. Court of Appeals for the Ninth Circuit affirmed the district court’s decision in 2018.

In September 2018, Kirkland achieved a victory for IBM in its two-year battle with Teraproc Inc., a competing software developer founded by former IBM employees. The copyright, trade secret, tortious interference and breach of fiduciary duty litigation arose as a result of Teraproc’s creation and distribution of a software product called OpenLava, which incorporated proprietary IBM source code into a stripped down and open sourced program. Putting an end to the case, the U.S. District Court for the Southern District of New York entered a judgment and permanent injunction against Teraproc and any parties working in concert with it, including the former IBM employees, prohibiting any further infringement of IBM’s copyrights or misappropriation of IBM’s trade secrets. As a result of IBM’s lawsuit, Teraproc has ceased all development and distribution of OpenLava.

Kirkland represents both of Take-Two’s video game brands, Rockstar and 2K, in various matters. For instance, Kirkland is representing Take-Two in a lawsuit brought by Solid Oak Sketches, LLC in the U.S. District Court for the Southern District of New York. Solid Oak has accused Take-Two of infringing copyrights in tattoos inked on NBA players rendered in Take-Two’s NBA 2K video game series. In August 2016, the court granted Take-Two’s motion to dismiss Solid Oak’s statutory damages and attorney’s fees claims, holding that Solid Oak’s registration of the tattoos-in-issue was untimely. Take-Two then counterclaimed seeking declaratory judgments of de minimis and fair use, as well as fraud on the Copyright Office. Solid Oak moved to dismiss, but the court denied the motion holding that Take-Two’s counterclaims served a useful purpose in the litigation.

Kirkland also is representing Take-Two in a copyright, breach of contract and unfair competition lawsuit involving computer programs that alter Take-Two's Grand Theft Auto video games, allowing users to cheat and perform unauthorized actions in the well-known games. In 2018, Kirkland won a first of its kind, precedent-setting injunction for Take-Two.

For almost 20 years, Kirkland attorneys have represented J.K. Rowling, author of the phenomenally successful Harry Potter books, in connection with the enforcement of her intellectual property rights. For example, our lawyers won a highly publicized copyright fair use trial (named “Copyright Trial of the Year” by Managing Intellectual Property) against RDR Publishing halting the proposed publication of an unauthorized Harry Potter “lexicon.” Our lawyers also defeated copyright and trademark infringement claims brought by Nancy Stouffer against Ms. Rowling and Warner Bros., and obtained an award of monetary sanctions based on Ms. Stouffer’s submission of numerous falsified documents.

Kirkland represented prominent artist Damien Hirst and Other Criteria (US), LLC in a copyright infringement, trade dress infringement and unfair competition lawsuit brought by a Canadian artist who alleged that Mr. Hirst’s pharmaceutical pill-inspired jewelry infringed her U.S. and Canadian rights. The court granted Kirkland’s motion to dismiss, holding that the works were not substantially similar and that the plaintiff’s remaining claims were preempted by the Copyright Act.

Kirkland represented The Associated Press (AP) in the highly publicized lawsuit brought by graphic artist and merchandiser Shepard Fairey arising out of his unauthorized use of the AP’s photo of President Barack Obama to create the “Obama Hope” poster, an icon of the 2008 presidential campaign, and related commercial merchandise. Mr. Fairey initially claimed he used a different AP photo that looked less like the poster and required more modification. He was later forced to admit that he attempted to destroy documents and fabricate evidence in an effort to conceal the true source photo, which in fact was the one the AP had identified, and ultimately plead guilty to criminal contempt. Mr. Fairey and the AP settled their claims. Meanwhile, the AP and Obey Clothing, Mr. Fairey’s exclusive licensee for apparel using the “Hope” image, filed cross-motions for summary judgment. The court granted the AP’s motion for summary judgment, striking Obey Clothing’s fair use defense and denying Obey Clothing’s motion in its entirety. Shortly thereafter, the case settled.