LANDSLIDE March/April 2025
Published in Landslide, Volume 17, Number 3, 2025. © 2025 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
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62
Copyrights
Fifth Circuit Interprets Compilation to Mean One
Work for Statutory Da mages
33
UMG Recording s, Inc. v. Grande Comm unications
Networks, L.L.C., 118 F.4th 697, 2024 U.S.P.Q.2d 1798 (5th
Cir. 2 024). T he plaintis , a group of record labels, filed a
complaint against G rande Communications Net works, an inter
-
net service provider, for contributor y copyright infr ingement.
A jury found Grande liable for i nfringement and awarded t he
record labels statutory da mages. Grande moved for judgment as
a matter of law on the issue of liabil ity and a new trial on statu-
tory damages. T he district court denied both mo tions. Grande
appealed. The Fif th Circuit deter mined that the di strict court
did not err in findin g liability but did err in award ing separate
statutory damage s for each song infringed.
As a result of a change of hand s in 2010, Grande’s repeat
infringement pol icy changed. Under the new policy, Grande no
longer terminated its subs cribers for repeat copyright infringe -
ment. Additionally, Grande faile d to take other measures to
address infr ingement, such as suspendi ng subscriber account s
or requiring subscr ibers to contact Grande to ma intain thei r
services. Gra nde would merely put subscribers on notice of copy-
right infringement complaints and advise that any infringement
should stop. This policy cont inued for seven years. Rightscorp,
a technology used to identi fy infringing I P addresses, sent more
than 1.3 mil lion infringement notices to Grande be tween 2011
and the filing of t he lawsuit, over 300,000 of which were subjec t
to this case. One subs criber had infringed nearly 14,00 0 times.
The plainti s sued Grande based on the se infringeme nts, and
the jury found Grande cont ributorily liable. The Fif th Circuit
found that the distr ict court did not err in upholding the liabil-
ity verdict because t he plaintis sat isfied each element of the
contributory infr ingement test. The ev idence supported that
Grande provided its subscriber s with the tools necessa ry to
infringe (i.e., the i nternet) and that Grande’s subscrib ers used
those tools to infri nge the plaintis’ works. Grande had a si mple
measure to prevent fur ther infringement (i.e., termi nating repeat
infringers) but failed to t ake such measure.
With respect to da mages, the dist rict court found th at the
plaintis were ent itled to individual statutor y damages for the
1,403 separate songs infr inged. Grande’s position was that when
more than one of those songs appea red on the same album, the
plaintis were entit led to only one statutory damages award for
that album, regard less of the number of songs infringed on the
album. Sect ion 504 of the Copyright Act p ermits recovery of
“an award of statutory damages for a ll infringements involved
in the action, wit h respect to any one work, . . . in a sum of not
less than $750 or more than $30,0 00 as the court considers just.
For the purposes of th is subsection, all the parts of a com pila-
tion or deri vative work constitu te one work.” 17 U.S.C. § 504(c)
(1) (emphases added). The Fifth Circuit found that t he plain
language of the stat ute is clear that a compilation is eligible for
only one statutory dam ages award. Because many of the works
at issue were albums, which a re considered compilations, the
Fifth Circu it held that the district court er red in awarding indi-
vidual statutory da mages for each separate song. T here is a
split in the circuit s on the interpretation of this langua ge in the
Copyright Act. T he case was remanded to the distric t court for
a new trial on the da mages issue.
Eleventh Circuit Finds Similarities Between
Marvel and Owl Chara cters Are Scenes a Fai re
33
Bennett v. Walt Disney Co., No. 23-12786, 2024 U.S .P.Q.2d
1599 (11th Cir. Sept. 4, 2024). Author Michael B ennett wrote
Owl: Unlikely C rusade r (later republished as Owl: Knigh t’s
Quickening), featur ing the character Owl, which B ennett sent to
Marvel in respon se to Marvel’s request for submissions. Bennet t
alleges that two M arvel characters— Falcon, sidekick to Captain
America, and Vult ure in Spider-Man: Homecoming—infringe
his rights in th e Owl character based on several alleged ly simi-
lar and copied charact eristics.
The Eleventh Circu it found no substantial sim ilarities
between the Ma rvel characters and the Owl charac ter because
the alleged aspec ts of the Owl character that were copied were
not original elements a nd, therefore, are not protect able or
enforceable under the Copyr ight Act. Bennet t alleged that
aspects like O wl’s blade-shaped wings, blue and g rey camou-
flage clothing wit h military b oots, and use of grapplin g hooks
as weapons were copied by Marvel for t he Falcon character. But
the Eleventh Circu it noted that winged superheroes are endur-
ing, dating back to Ica rus in Greek mythology, and ubiquitous
in the genre; blade-l ike wings are not mea ningful ly dierent
from other wings; and t he other elements are merely custom-
ary scene s a faire in action and com ic books and therefore not
original to Owl or B ennett.
The Eleventh Circu it likewise found t hat the alleged sim i-
larities bet ween Vulture and Owl were not subst antial or
protectable. It determi ned that the charact ers’ masks reflect-
ing their self-tit led animal were aga in scenes a fai re and not
original to Owl or Vultu re—Batman, Wolverine, Bl ack Partner,
Hawkeye, Ant-Man, Wasp, and Cat woman all wear masks that
emanate their an imal. Althoug h Bennett al leged, for the first
time on appeal, th at both Owl and Vulture have fan-p owered
wings, nothi ng in the Owl art work actually supported t hat
Owl’s wings are fan-powered. B ecause none of the alleged ly
copied elements were original or prote ctable, the Eleventh
Circuit a rmed the distri ct court’s dismiss al of the complaint
against Disney.
John C. Gatz
DECISIONS IN BRIEF
