Published in Landslide, Volume 17, Number 1, 2024. © 2024 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
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47
Copyrights
Profit Nexus and Literal Falsity
33 I Dig Texas, LLC v. Creager, 98 F.4th 998, 2024 U.S.P.Q.2d
685 (10th Cir. 2024). The Tenth Circuit found that using a competi-
tor’s copyrighted images was not closely tied to prots and afrmed
such use was not infringement of the images. Plaintiff and appellant
Creager sells skid steer attachments called Montana Post Drivers.
In an advertisement, Creager’s competitor I Dig Texas used two of
Creager’s images of Creager products along with the text “DON’T
BUY 110% MADE IN CHINA - MONTANA Post Drivers Driver
WHY? - $1 (Marble Falls TX & Dewey Oklahoma)” with two
circle-backslash symbols with the text “MADE IN CHINA” inside.
Creager asserted that this use of its images constituted copyright
infringement and that I Dig Texas misrepresented the origin of I
Dig Texas’s products in violation of the Lanham Act.
In district court, I Dig Texas asserted that its use of the images
constituted fair use and that Creager failed to show a nexus
between I Dig Texas’s use of the images resulting in prots for I Dig
Texas. For a claim of copyright infringement, the copyright owner
can recover either based on its own damages or on the infringer’s
direct or indirect prots. The district court granted I Dig Texas
summary judgment on the copyright infringement claim, relying
on its afrmative defense, and did not address the nexus between
I Dig Texas’s use of the images and any prots gained from that
use. The Tenth Circuit rst considered the nexus issue, namely,
whether I Dig Texas indirectly received prots from its use of Crea-
ger’s images. Creager’s only evidence of the required prot nexus
was the use of the images themselves; Creager did not provide
any evidence that I Dig Texas sold any more of its own skid steer
attachments as a result of the advertisements. Thus, Creager failed
to show a nexus between the use of the images and any prots
gained by the infringer. The Tenth Circuit stated that even if Crea-
ger could show that someone had purchased something from I Dig
Texas based on the advertisement, it doesn’t automatically imply
that the inclusion of the images made the difference to consumers.
As such, the Tenth Circuit afrmed the summary judgment in favor
of I Dig Texas as to the claim of copyright infringement.
The Tenth Circuit also considered Creger’s claim that I Dig
Texas’s advertising statements on its website and elsewhere violate
the Lanham Act as false advertising and false designation of origin
because some of I Dig Texas’s products include components from
other countries, including China and Canada. A claim for false
advertising can be shown by establishing that the statement was
false in one of two ways: (1) the statement is literally false, or
(2) the statement is literally true but “likely to mislead or confuse
consumers.” Creager’s claim relied on the literal falsity of the state-
ments in I Dig Texas’s various advertisements, including “100%
American Made Skid Steer Attachments” and “American” patri-
otic symbols like the American ag. The Tenth Circuit held that
the statements were ambiguous as to the location of where I Dig
Texas’s products are made because they could mean that the
products are “100% assembled in America” even if some of the
components are made abroad, and a statement can only be liter-
ally false if it is unambiguous. As such, Creager’s claims as to false
advertising and false designation under the Lanham Act also failed.
Works Made for Hire and Fair Use
Whyte Monkee Productions, LLC v. Netix, Inc., 97 F.4th
699, 2024 U.S.P.Q.2d 580 (10th Cir. 2024). The Tenth Circuit
remanded the copyright infringement case for reconsideration of
the transformation required by the fair use factors in light of the
Andy Warhol Foundation for the Visual Arts, Inc. decision by the
U.S. Supreme Court.
Defendant Netix released the docuseries Tiger King about
a big cat and other exotic animal zoo (the Park) featuring the
controversial personality Joseph Maldonado-Passage, also known
as “Joe Exotic.” The series included eight video clips lmed by
plaintiff Timothy Sepi, seven of which were lmed while Sepi
was an employee of the Park, but the eighth had been lmed
after his employment ended. Sepi sued Netix and the Tiger King
production company Royal Goode for copyright infringement
for including the eight video clips without permission from Sepi.
Despite ling for and obtaining copyright registrations in all
eight video clips after the release of Tiger King, the district court
awarded Netix summary judgment as to the rst seven videos
on the grounds that they were works made for hire in the scope
of Sepi’s employment as a videographer and photographer for the
Park, working to produce the web series Joe Exotic TV, and there-
fore the Park, not Sepi or Whyte Monkee, was the owner of the
copyright in those videos, and further awarded Netix summary
judgment as to the eighth video on the grounds that the inclusion
of that clip is fair use.
The Tenth Circuit upheld the decision as to the rst seven videos
but determined that the district court erred in its assessment of the
fair use factors as to the eighth video. Specically, the Tenth Circuit
determined that the district court erred in nding that the rst fair
use factor, the purpose and character of the use of the video, and
the fourth factor, market impact on the owner’s ability to mone-
tize its work, favors Netix and the defendants. The rst fair use
factor also assesses whether the unauthorized use of another’s
work was transformative. While the district court determined that
John C. Gatz is a member of the firm Nixon Peabody LLP in
Chicago, Illinois. Column contributors include the following
writers: Copyrights: Kaleigh Morrison, Nixon Peabody LLP.
Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor
Carter and Andrew M. McCoy, Faegre Drinker Biddle & Reath
LLP; Robert W. (Bill) Mason, Southwest Research Institute;
and Angelo Christopher, Nixon Peabody LLP. Trademarks:
Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki,
Blumenfield & Shere LLP. Trade Secrets: R. Mark Halligan,
FisherBroyles LLP.
John C. Gatz
DECISIONS IN BRIEF
