Copyright Litigation & Counseling

Kirkland represented seven members of the Association of American Publishers in a copyright infringement lawsuit seeking to enjoin Audible Captions, a service that provides audiobook consumers the entire, machine generated text of literary works. In 2020, the parties reached a settlement, which enjoined Audible from launching Audible Captions, or any similar service, for publishers’ works without permission of the copyright owner.

Kirkland represented TriZetto and Cognizant in litigation adverse to Syntel involving healthcare software systems. Syntel alleged trade secret misappropriation, breach of contract, and unfair competition, while TriZetto countered with allegations of trade secret misappropriation, copyright infringement and breach of contract.

In October 2020, Kirkland secured a complete jury verdict in favor of TriZetto which included an award of $855 million in damages. Specifically, the jury found that Syntel misappropriated trade secrets and infringed copyrights, while TriZetto did not misappropriate trade secrets and did not breach an agreement. In May 2023, the Second Circuit affirmed liability.

Kirkland represented Motorola in lawsuits alleging patent infringement, misappropriation of trade secrets and copyright infringement against Hytera companies, involving patents, confidential information and source codes on digital two-way radio communication systems. At the trade secret misappropriation and copyright infringement jury trial, Kirkland won $764 million when the jury rejected Hytera’s statute of limitations defense and awarded Motorola its full requested compensatory and punitive damages.

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, issuing a precedential opinion which has become the court’s leading decision on substantial similarity and meaningfully clarified issues such as the inverse ratio rule. In 2019, the Supreme Court denied certiorari.

Kirkland achieved a victory for IBM against Teraproc, a competing software developer founded by former IBM employees. The copyright and trade secret litigation arose as a result of Teraproc’s creation of a software product called OpenLava, which incorporated proprietary IBM source code into a stripped down and open-sourced program. 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, 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 Take-Two’s video game brands, Rockstar, 2K, Private Division and Zynga. For example, Kirkland litigated a series of lawsuits against the creators of computer programs that allow users to alter Take-Two’s video game Grand Theft Auto V without authorization, permitting them to cheat and to “grief” other players. In 2018, Kirkland won a first-of-its-kind, precedent-setting injunction, holding that, because the mod menus alter Take-Two’s program without authorization, they create derivative works and that, because the use of mod menus violates the conditions on Take-Two’s license to play GTAV, continuing to play the game having violated the terms is a copyright infringement for that reason as well.

Kirkland also won summary judgment on the bases of de minimis use, fair use, and license in a lawsuit alleging that Take-Two and its 2K subsidiary committed copyright infringement by accurately depicting NBA players, along with their tattoos, in their NBA 2K video game.

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.