Senate Commerce Committee Grokster Hearing

The Senate Commerce Commitee held a hearing yesterday on Grokster. Here's a link to the webcast and testimony. There were 6 witnesses: Adam Eisgrau on behalf of P2P United, Inc., and EFF; Greg Kerber of Wurld Media, Inc.; Mark Heesen of National Venture Capital Association; David Baker of EarthLink, Inc.; Mitch Bainwol of RIAA; and an old friend, Fritz Attaway of MPAA. (Fritz is one of the most knowledgeable people on the planet about copyright and about Congress; he is extraordinarily savvy and sophisticated. Jack Valenti was the public face, but Fritz was the brains and then some).

Press reports, including this one from Wired, uncritically put out the message committee members wanted: "P2P pirates We're watching U." It was, however, a sound and fury signifying nothing. Here is some of the fury, first from chairman Ted Stevens:

"I do hope we're being heard because there are people in the Senate who want us to move now... We're holding a hearing to see what's going on in these industries and to see what might be done to terminate this illegal activity.."

Senator Barbara Boxer, a former neighbor of mine from Greenbrae, California (Marin County) said: "I want everybody to come out of this in good shape, but there's a right and wrong here."
"If you don't do more to protect our children, it's not going to sit well." Ah, liberals can be tough too.

This is Congress at its worst, grandstanding and ignorant. Copyright law has nothing to do with pornography problems; there are more than adequate laws already on the books to deal with pornography and as a father of 4 year old twins I am all for enforcing them ruthlessly, but imposing even more stringent liability on P2Ps under the copyright law will do nothing to solve that problem.

Contrary to Senator Stevens, there is no one in Congress pushing copyright legislation to deal with the issues raised but lamentably not decided in the public relations 9-0 opinion the Court issued before it whisked off for a three month vacation. The proof of this assertion is in the testimony by RIAA and MPAA yesterday which can be summarized in two words; "We're happy." And if they're happy, ain't nuthin' happin' Ted. Besides, you chair the wrong committee. Arlen is the man and he is otherwise occupied.

Jennifer Anniston and Copyright

Who would have thought that Jennifer Anniston and copyright would appear in the same sentence? Recent press reports about a former beau's efforts to sell letters and memorabilia on eBay on July 29th raise the possibility of a copyright infringement suit. Lawyer (why oh why, to paraphrase Lyndon Johnson, does it have to be lawyer?) Michael Baroni is planning to auction off keepsakes from a summer of love in 1984, when he was 16 and she 15.

Among the keepsakes reported to be put up for sale (there's a $100,000 reserve) is a makeshift birthday card written on a piece of toilet paper. That's a fixation. (This evokes German composer Max Reger's brief letter to a critic who had savaged a work of his: "I am sitting in the smallest room in my house. I have your review before me. In a moment it will be behind me").

Letters have long been copyrightable, and Anniston retains copyright even though she parted with the physical object. J.D. Salinger, for example, was successful in suing a biographer over unpublished letters Salinger sent to others, including Learned Hand, and which were donated to libraries. But in Salinger there was a reproduction, whereas in Anniston's case there is only sale of the original. Sale of the original is permitted under Section 109, known as the first sale doctrine, but better described as the exhaustion doctrine since it applies to copies given away. This doctrine was judge made, out of a dislike for restrictions on alienation (not of affection, but of trade). Imaginative lawyers could, I guess, argue that the sale of her letters will contribute to others copying the work and hence gives rise to third party liability, but such other copying has not yet occurred, and hence there is no direct infringement, plus the same argument could be made against the sale of any physical copy.

This leaves state law, but here there are two problems: (1) any claim based on state law would have to survive preemption under Section 301, and (2) would have to actually present a cause of action under state law. Claims based on a fiduciary relationship or a confidential relationship are not preempted because the nature of that relationship is qualitatively different than a Section 106 right: that's why trade secret claims are preempted. But can teenagers in a summer fling be deemed to be in such an intimate situation? Time and the courts may tell.

The Ninth Circuit's Struggles with Transfers

On July 15th, Chief Judge Joe Fish (give me an "F", what's that spell?) of the Northern District of Texas handed down a straightforward opinion in an easy case, Curtis Trey Seastrunk v. Darwell Intergrated Technology, Inc., 2005 U.S. Dist. LEXIS 14191, rejecting plaintiff's claim that an assignment of all rights in software, "including all rights of copyright" by "implication" included preexisting causes of action. The case law, including ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 980 (2d Cir. 1991) is to the contrary. If you want to buy preexisting causes of action, you have to expressly have include them in the transfer agreement, or, purchase them separately after the fact. Otherwise, the transferor retains them and is the only person who can sue for their infringement.

The plain language of Section 501(b) mandates this result: "The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it."

Another consequence of this plain language is that only legal or beneficial owners (the latter being someone who was a legal owner but transferred those rights in exchange for royalties and the like) can sue. This plain meaning, however, eluded the Ninth Circuit, even though the court en banc reversed a panel which had held one could assign a mere chose in action. There were two dissenting opinions and the majority, while reaching the right result, found the statutory language ambiguous and issued an opinion that could be described as ugly. Silvers v. Sony Pictures Entertainment, Inc.. (2005).

I am quite aware that some very fine judges believe all statutory construction requires interpretation if only to say that meaning is plain, but I confess to being baffled by the Ninth Circuit's repeated inability to read the Copyright Act's transfer provision. Another decision by that court pertaining to transfers is of a piece with Silvers, Gardner v. Nike (2002). Gardner held that unless a exclusive licensee gets in the transfer document the right to further assign, it can't, wreaking havoc in the motion picture industry. The language of Sections 201 and 204 are clearly to the contrary, as is the legislative history. There is also Rano v. Sipa Press, a 1993 opinion that has been widely ridiculed by other circuits and commentators for holding that a non-exclusive agreement lacking a termination date can't be terminated until the 35 period set out in Section 203, which has nothing to do with the issue.

The lesson is that if you're in Texas, there's nothing Fish-y about transfers, but if you are on the West Coast you're in a whale of trouble.

Linking and Copyright Infringement (Australian Version)

On July 14, 2004, the Federal Court of Australia handed down a decision in Universal Music Australia Pty Ltd. v. Cooper, involving linking from a website Mp3s4free that contained unauthorized copies of sound recordings. Since the opinion involves niceties of Australian law, I shan't offer any opinions about it, but instead refer readers to Australian commentators, beginning with Kim Weatherall's blog and ZD Net. The opinion turns on an interpretation of the Australian Digital Agenda Act of 2000, in particular whether a "communicating a recording to the public" occurred. Justice Tamberlin's opinion, though, does rely on U.S. courts for a description of linking, in particular Judge Kaplan's (see yesterday's posting) opinion in Universal City Studios, Inc. v. Remierdes, 111 F. Supp.2d 294, 324 (S.D.N.Y. 2000), aff'd sub nom. Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001, amended Jan. 29, 2002). It may be recalled that in Remierdes, Judge Kaplan issued an injunction against linking to any other website that contained DeCSS. That injunction was upheld against constitutional challenge.

There are safe harbors for some linking in Section 512(d), put in as part of the DMCA, and this provision has been noted in a number of opinions, e.g., In re Charter Communications, Inc. Subpoena Matter, 393 F.3d 771, 775-776 (8th Cir. 2005); RIAA v. Verizon Internet Services, Inc., 351 F.3d 1229, 1234 (D.C. Cir. 2003); Perfect 10, Inc. v. CCBill, LLC, 340 F. Supp.2d 1077 (C.D. Cal. 2004), and Online Policy Group v. Diebold, Inc, 337 F. Supp.2d 1195 (N.D. Cal. 2004).

Non-DMCA linking cases include Arista Records, Inc. v. MP3Board, Inc., 2002 U.S. Dist. LEXIS 16165 (S.D.N.Y. Aug. 29, 2002); Ticketmaster Corp. v. Tickets.com, Inc., 2000 U.S. Dist. LEXIS 4553 (C.D. Cal. 2000); Los Angeles Times v. Free Republic, 56 USPQ2d 1862 (C.D. Cal. 2000)(consent judgment); Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc., 75 F. Supp.2d 1290 (D. Utah 1999) and Bernstein v. J.C. Penney, Inc., 1998 U.S. Dist. LEXIS 19048 (C.D. Cal. 1998). There are some obscure cases too, like Batesville Services, Inc. v. Funeral Depot, Inc., 2005 U.S. Dist. LEXIS 24336, *31-33 (S.D. Ind. Nov. 10, 2005), where the court granted summary judgment prohibiting a website from linking to a lawfully displayed picture of (yes) caskets because the court believed that defendant, in conjunction with the website owner was trying to circumvent a restriction on such displays on defendant's own site. (The remainder of the opinion is just as horrible.)

In evaluating linking claims we should distinguish between direct infringement and those of third party liability. Claims of direct infringement via linking (whether non-active or active) should fail because there is no exclusive right implicated: there is no reproduction and there is no display on the defendant's site; instead the display is on the user's monitor. The same is true for framing claims. Whether third party liability occurs where there is a link to infringing material and the person who provides the link knows the infringing material is at the linked site presents pressing post-Grokster problems. Is linking in such circumstances like someone asking me as I am walking in DuPont Circle whether I know where bootlegs can be bought and I say, "Yeah, one block away on 1331 Connecticut Ave. N.W. " at "AAIR," or is it "inducing" in the Grokster/patent law sense? Only The Shadow Knows, but the rest of us are likely to find out only after a new wave of litigation.

Photography and Copyright Continued

On July 21, 2005, Judge Lewis Kaplan of the SDNY issued an opinion (only available over the weekend) in Mannion v. Coors Brewing Co., 2005 U.S. Dist. LEXIS 14686. Judge Kaplan is a scholarly, brilliant jurist whose opinions always contain a lot of learning, in this case about photography. Mannion is a worthy round two for yesterday's discussion.

In Mannion, a freelance photograph took photos of basketball star Kevin Garnett for SLAM magazine, which published them in conjunction with an article in the December 1999 issue. In December 2001, an ad agency for Coors beer used a manipulated version of one of Manning's photo for a "comp board" on which a picture of a can of Coors was superimposed along with the slang phrase "Iced Out." Permission was obtained for this internal use only. The rest of the story could be filled in by anyone: an ad is later generated and used without permission as a billboard that is alleged to capture the look and feel of Mannion's photo.

Validity of the copyright and access were undisputed, the only issue being substantial similarity. The court denied most of defendant's motion for summary judgment in a lengthy discussion of the protectible elements in photographs and their infringement.

On the question of originality, one distinction Judge Kaplan made (and that was noted in comments on the first posting), was between "decisions that a photographer makes in creating a photograph and the originality of the final product." Judge Kaplan recited language from prior decisions about choice of film, camera, and the like, but found that "the fact that a photographer made such choices does not alone make the image original. ... Protection derives from the features of the work itself, not the effort that goes into it." Interestingly, in further delving into the scope of originality (in order to determine how far plaintiff's copyright reached), Judge Kaplan relied on an English copyright treatise, Sir Hugh Laddie's "The Modern Law of Copyright and Designs" (2000).

Judge Kaplan also reviewed a question not touched on last week, rights over the subject of the photo, questioning the oft-cited principle that copyright confers no right over the subject of the photo, and refining the principle so that "to the extent the photograph is original in the creation of the subject, copyright extends also to the subject. Thus, an artist who arranges and then photographs a scene often will have the right to prevent others from duplicating that scene in a photograph or other medium." Obviously, the idea/expression dichotomy has a large role to play in all this, and there is a very extensive discussion of that principle, in which Judge Kaplan joined those who have come to reject Nimmer's meaningless "abstractions test."

This was all prelude to the infringement analysis, an analysis which includes a helpful discussion of the total-concept-and-feel versus more discerning observer approaches, although not choosing one since he denied defendant's motion, sending the case to a jury.

Photography and Copyright

The New York Times had a story yesterday about an exciting joint venture between the International Center for Photography in Manhattan and the George Eastman House in Rochester, New York called PhotoMuse. PhotoMuse's goal is to have available, for free, online, by 2006, almost 200,000 photographs. Included would be many iconic works since the two centers have plates and negatives of the works of Ansel Adams, Alfred Stieglitz, Edward Steichen, Lazlo Moholy-Nagy, Weegee, Roman Vishniac, and many many others. In some cases copyright is also owned, in others not, and that will pose problems.

Particularly promising is the way the search capacity is being established: one will be able to search by photographer, by topic, as well as in technical ways, like for albumen prints or even types of cameras. There are commercial sites, like Corbis and Getty, but they don't allow free use. The Library of Congress has a digital collection as does the Met and the National Museum of Photography, Film and Television in Bradford, England.

Photography was not subject to copyright protection in the United States until 1865, and came about as a result of Brady's sensational photographs of the Civil War. The major test of the statute, in particular its constitutionality, came in 1884, in Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, which involved photographs of Oscar Wilde taken by Napoleon Sarony in his Union Square, NYC studio during Wilde's tour of the United States. (The one where he stated to Customs upon arrival, "I have nothing to declare but my genius"). Wikipedia has a nice article about the case.

Appropriately to this posting, you can view, download, or purchase copies of all 19 of Sarony's photographs of Wilde online from the Library of Congress since Wilde had to deposit copies for registration to obtain protection. Here's the search already done for you, beginning with the particular one at issue in the case (No. 18).

Sarony explained how photographs could be original, however one question raised but not decided was possible joint authorship between the photographer and the subject; not as a matter of law, but as a matter of fact given the subject's contributions to the aesthetics that gave rise to the originality. If you view all 19 of the Wilde photos and do some background research on the case, a case can be made out for joint authorship between Sarony and Wilde. Under the current statute, there is a definition of joint author, which of course adds the element of intent: "a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. "

That requirement will eliminate most claims of joint authorship by the subjects of photographs, but it is important to realize there is no per se rule against such claims. (An excellent review of almost all issues involving copyright and photography is found in Judge William Pauley's opinion, SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301, (SDNY 2000)).

Photographs also featured in a VARA decision handed down Tuesday, Lilley v. Stout, 2005 U.S. Dist. LEXIS 14313 (D.D.C. July 19, 2005)(not available on the court's homepage yet). This is an issue I care about, having convinced the House Judiciary Committee to add, on February 28, 1990, photographs to the list of works of art covered by VARA. But because, as noted in my earlier posting VARA is really a preservation statute, and due to opposition from newspapers and book publishers, only a small subset of photographs could be protected, "a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer signed or consecutively numbered by the author."

In Lilley the court correctly found this definition had a plain, unambiguous meaning, covering both prints and negatives. There are, however, some thorny questions, principally the "for exhibition" limitation: what if a work was intended for exhibition purposes but was later used for nonexhibition purposes? What if a work was created for nonexhibition purposes but is used for exhibition purposes? Note that the statute doesn't refer to the intent for which the photograph was created, but rather the purpose for the production.

Judge Roberts and Copyright

With President Bush's nomination of Judge Roberts to the Supreme Court, one might wonder how this will impact on copyright decisions. I don't mean the impossibility of reading tea leaves on things like Grokster. Justice O'Connor joined Justice Breyer's concurring opinion in Grokster, so in a future similar case that might be one less vote there. Chief Justice Rehnquist, for whom Judge Roberts clerked, joined in Justice Ginsburg's concurring opinion, so that might be one more vote in that column, but that would still only make 4 votes. On the other hand, if one aligns Judge Roberts with Justice Scalia and Thomas, that's also of no help, since neither of those two joined a Grokster concurring opinion. And of course, there is no reason to think being conservative or liberal has anything to do with the issue, given the political line-up in the concurring opinions. There is no reason to assume anything other than that Judge Roberts would approach these issues in a way no one can predict, so we shouldn't.

Given Judge Roberts' very short status as a judge and the fact that the DC Circuit hears few copyright cases, the record is scant. In fact, I found only one opinion, Universal City Studios LLP v. Peters, 402 F.3d 1238 (D.C. Cir. April 8, 2005)(Another decision, DSMC Inc. v. Convera Corp., 358 F.3d 670 (D.C. Cir. 2003) involved arbitration of copyright and trade secret claims).

The Universal Case was an agency appeal, a staple of the DC circuit diet. MGM and Universal couldn't establish they had complied with the Copyright Office's regulation (37 CFR 252.4) for filing a claim to entitlement to royalties for cable and satellite compulsory license fees. The Office rejected the claims, meaning no royalties. The studios sued under the APA and the Due Process Clause of the 5th Amendment. The district court found no merit and Judge Roberts, writing for the panel affirmed. Judge Roberts' opinion is thorough, mainstream, and well-written.

Jason Schultz of the EFF pointed out to me that Judge Roberts was on the RIAA v. Verizon DMCA panel, although he didn't write the opinion. Jason provided me with this link from Wired's account of the oral argument.

(Those who wish to read his opinion in the infamous single french fry case, in which a 12 year old girl was arrested, handcuffed, had her shoelaces removed, fingerprinted and held at a juvenile processing center for 3 hours, Hedgepeth v. WMATA, 386 F.3d 1148 (D.C. Cir. 2004), will find it here).

Winnie the Pooh and Copyright Too

Continuing yesterday's theme of works for children that have become fabulous money machines and, as a result, are the subject of long-running copyright feuds, I want to note a case on appeal to the Ninth Circuit involving the works of A.A. Milne, a favorite of my soon-to-be four year boy-girl twins. The state law side of this dispute has been vicious but with elements of farce. (Here is a link to a self-styled "politically incorrect" article from the London Times of 2003.) The federal component of it raises serious issues of copyright law.

The issue I will discuss is narrow, but dense. There are three termination of transfer rights. The first is for works published before January 1, 1978, and is in Section 304(c). The second, for transfers made on or after January 1, 1978 is in Section 203. The third, in Section 304(d)(which I take credit for) was added in CTEA, and gives to those who missed their 304(c) termination, the possibility to terminate the extra 20 years added in 1998. (See my June 9 posting for some background).

In the Pooh dispute, author A.A. Milne licensed certain rights in the Pooh stories to a literary agent, Stephen Slesinger. Slesinger then assigned the rights to his corporation, SSI. By will, Milne transferred his beneficial interests (which would include his recapture rights) to a trust. In 1956, Milne died. At Milne's death, this trust operated for the benefit of his wife, Daphne, who died in 1971. In 1972, the rights in the trust were transferred to another trust which operated for the benefit of the Milne's son, Christopher Robin.

In 1961, SSI licensed rights to Disney, as did Daphne and the estate's executors. In 1983, within the time for service of a 304(c) termination notice, Christopher Robin, joined by the trust, entered into a new contract with Disney. At this time, Christopher Robin had a daughter, Clare, who is disabled and whose affairs are managed by a court-appointed receiver. An opinion was obtained and paid for from Melville Nimmer that the new contract would not run afoul of the language in both Sections 203 and 304(c) which declare that the termination of transfer right may be exercised "notwithstanding any agreement to the contrary." Mel's belief may have been that while Congress did not want authors to be coerced into signing transfer agreements that also waived a termination right, Congress did not intend to prevent those possessing termination rights from entering into new contracts (legislative history supports this), and certainly not during the period when termination was possible.

The issue is important, because the 1983 deal included language expressly recognizing the intent of the parties to negate termination rights under both 304(c) and 203. Nimmer's son, David, is representing Clare Milne who filed a 304(d) termination notice arguing that the 1983 agreement was not effective (contrary to Melville's prior written opinion) and that since her father (who had earlier died) did not terminate under 304(c) she could under (d).

Leaving aside both Nimmers' extra-statutory "moment of freedom" argument, David also argues that the language "notwithstanding any agreement to the contrary" is plain and that resort to legislative history is inappropriate. That position is unusual for a treatise editor to make where that treatise cites legislative history constantly. Does, for example, "any agreement" include a waiver by one party years after the original assignment in return for loads more money? Does an "agreement" have to be in writing? Does it, as in the 1983 agreement, preclude the giving up of a termination of transfer when the copyright owner could have at that time terminated, but instead chose to enter into a new agreement? The theory here would be that the bar on waiving the termination right was solely to prevent in waivers in futuro, and that this wasn't the case for Christopher Robin. Should Clare (or more accuratley her lawyer) be able to undo what her father agreed to? And what is the purpose behind the provision, a key determination for any statute?

These are all difficult questions and hardly plain. Any bets on how well the 9th Circuit will handle them? Oral argument has not been set although the briefs have been submitted.

J.B. Barrie and Perpetual rights

Last night, I watched Finding Neverland, a 2004 film which stars the always amazing Johnny Depp as J.M. Barrie (Anthony Lane did a wonderful review of the film in the New Yorker). The name Neverland raises, of course, inevitable associations with a recent trial in California; Barrie's life (including those issues) is explored in an excellent book by Andrew Birkin, "J.M. Barrie and the Lost Boys: The Real Story Behind Peter Pan," reissued in 2003 by Yale University Press. The movie says it was "inspired" by true events, and that seems accurate enough. Kate Winslett plays Sylvia Llewelyn Davies, the boys' (including Peter's mother). I can't say much for her performance: her death is inevitable and we see the inevitable effect of that through Peter. This was quite difficult for me since my mother died young, and unlike the concept of Neverland and Barrie's comments to Peter at the end of the movie that one can connect with a dead parent at will, I, alas, have never been able to. For me, those who die remain forever lost, beyond reach: sought, but never found.

Copyright, however, is another story. Barrie died in 1937, meaning that under the life plus 50 UK copyright law then in existence, his copyright expired in 1987. Barrie had earlier willed his copyright to the Great Ormond Street Hospital. In 1988, the British government included this provision in Section 301 of the Copyright, Designs and Patents Act (The Great Ormond Street Hospital discusses this amendment and has information on licensing on its website.):

"The provisions of Schedule 6 have effect on conferring on trustees for the benefit of the Hospital for Sick Children, Great Ormond Street, London, a right to royalty in respect of the public performance, commercial publication, broadcasting or inclusion in a cable programme service of the play 'Peter Pan' by Sir James Matthew Barrie, or of any adaptation of that work, notwithstanding that copyright in the work expired on 31 December 1987."

Note the provision does not resurrect the copyright; it only provides a right to royalties, and then only with respect to the play. Material, including characters, that predated the play, are not covered. The situation in that respect is messy, as is the status of copyright itself. The United States is not obligated to enforce Section 301 of the UK law, and the term of protection accorded to Barrie's works in the United States is that found in US, not UK law. Wikipedia has a brief but useful discussion (and links) about the copyright issues, which include disputes over sequels. A more extensive discussion with links is at Furd Log.

Barrie was a deeply flawed man, and the efforts to create perpetual rights to royalties is also flawed. But Barrie did manage to create a work that inspired many (although I do not count myself as one of them). Genuine empathy and imagination are rare and should be treasured. NPR's segment today of "This I Believe" on the Morning Edition was by Iranian writer Azar Nafisi, who was fired from her university position in Teheran for refusing to wear a veil. The beginning of her segment raises the same point:

"I believe in empathy. I believe in the kind of empathy that is created through imagination and through intimate, personal relationships. I am a writer and a teacher, so much of my time is spent interpreting stories and connecting to other individuals. It is the urge to know more about ourselves and others that creates empathy. Through imagination and our desire for rapport, we transcend our limitations, freshen our eyes, and are able to look at ourselves and the world through a new and alternative lens."

A State Court Opinion

The relationship between federal copyright law and state law is complex and sometimes confusing. While it is true that national uniformity was the overriding reason for a federal system, that system has rarely been exclusive, witness the parallel protection for unpublished works until 1/1/78, the continued state law protection for pre-1972 sound recordings (until 2/15/2067), and state law protection for unfixed works. Aside from subject matter issues, Section 301 saves from preemption non-equivalent rights with respect to equivalent subject matter. And then there are a vast host of issues involving contracts: when something is just a breach of contract, when something may be both a breach of contract and an infringement, plus traditional state law issues like, was there consideration? The ProCD case in the Seventh Circuit illustrated some of these issues. Others present jurisdictional issues: are you in the right court system?

Criminal prosecutions are another area of potential conflict. If someone steals a DVD from a store that's clearly a state law crime. If someone sells a counterfeit DVD that's a federal crime. But there may be state law issues too, and in New York City, where I work, licensing of vendors is a big issue. Those licensing laws are sometimes used to catch counterfeiters. There are though First Amendment issues. The sale of DVDs alone has been interpreted by the NYC Dept. of Consumer Affairs (DCA) not to require a vendor's license. But the DCA has also opined that the sale of counterfeit or "copyrighted" DVDs do require a license. (How many people buy blank DVDs from street vendors?)

In People v. Santiago, a July 11, 2005 opinion from the Criminal Court of the City of New York, a street vendor was selling allegedly counterfeit DVDs without a license. In addition to the license charge there was a charge for failing to disclose the manufacturer of the recording (that it was counterfeit in other words). Rejecting a First Amendment argument (he was being charged with a failure to speak, I guess), the court held:

"The First Amendment is intended to protect the creators of speech and those who facilitate its dissemination, as well, as the public's right to access information. However, when the property rights of the speech originator are wrongfully diverted by counterfeiters, copyright violators or other illicit practitioners, free speech protection may not be invoked by the offenders. Under such circumstances, the creator neither requires nor requests constitutional protection and the offenders surely are not entitled to claim it. Even the public's right to receive information must yield in light of the illicit character of the information offered for sale ... To allow those who effectively steal the original work product of another, mask and market it for profit, to claim derivatively the First Amendment rights of the defrauded maker, would stand logic and constitutional law on its head."

Presumably, if defendant had truthfully disclosed they were counterfeit, he could not have been charged, and I have I seen bootlegs that do just that. On the failure to be licensed charge, the court did depart from the DCA by holding that a complaint would be unconsitutional unconstitutional unless the DVD was not "in some respect, illicit."

Music Licensing Reform: A New Era?

Congressional interest in serious reform of music licensing is palpable. On Tuesday, the Senate IP subcommittee held a Section 115 reform hearing. The House IP subcommittee held its second hearing on the subject on June 21st. (March 11, 2004, was the first House hearing). On May 11th of this year the House also held a hearing on licensing by ASCAP, BMI, and SESAC. On April 6th of this year, the House held a hearing on "digital interoperability," i.e., porting music between different types of services and devices. On July 15, 2004, the House held a hearing on Internet streaming. These oversight (that is non-legislative) hearings also come on the heels of a considerable amount of time spent by House subcommittee IP chair Lamar Smith in roundtable meetings with industry representatives and by the Copyright Office in trying to develop a workable licensing scheme for music on the Internet, efforts that have so far not borne fruit.

Congress does not spend this much time on issues it does not intend to deal with, though, and Congressional IP leaders have indicated the question is not whether a reform is required and will take place, but what it will consist of. A wholesale reform is long overdue. The present system, hearkening back to the 1909 Act is broke and can't be fixed. Digital distribution has wiped out distinctions which previously supported, needlessly, separate licensing schemes and business models. The relationship between the performance right, the copying right as implicated by buffering and caching, and the distribution right no longer hold up, and certainly cannot justify the type of separate payments that have impeded online licensing.

What is needed at the outset is a visionary idea for how an ideal system should work. Legislation should then be drafted and introduced that would make that scheme law. After that comes the hard part: exercising the political muscle to get the scheme through. Due to the way IP legislation is processed, especially in the Senate via unanimous consent, serious compromises will be made along the way and at the end. But if we start out with only what industry groups collectively will agree to, the final product may fall far short of the objective of meaningful reform. I understand the contrary approach: get a solid agreement and then start the legislative process, but to me, that cedes too much control to the private sector. Committee chairs and ranking minority members can knock heads together and the threat of a pending bill going through can clarify thinking.

The time to get involved is now. The beginning of a session is a time for oversight hearings and study. That is the current phase. The second session, 2006, is when the legislative part begins in earnest and the rubber begins to meet the road. But to jockey at the end, your car needs to be in the race during the starter trials.

The Way Back Machine and Robots.txt

On July 8th, a complaint was filed in the United States District Court for the Eastern District of Pennsylvania, Healthcare Advocates, Inc. v. Harding, Early, Follmer & Frailey, et al. This is such an extraordinary document that I will break with my usual practice of not commenting on complaints or motions. Those who decry the DMCA as an (attempted) tool of oppression will find more than ample support in this effort. Other laws are implicated too, including some I venture to guess most IP lawyers have never heard of at least in the IP context, for example, a Greta Garbo like claim for "Intrusion upon Seclusion." Others, such as the Computer Fraud & Abuse Act and trespass to chattels have become better known recently but are invoked here in a novel way, to say the least. In my opinion (and all this is opinion whether denominated as such or not), the Healthcare Advocates complaint represents a misuse of the legal process.

The complaint appears to be the result of an earlier failed suit brought by Kevin Flynn and Healthcare Advocates (Flynn is the President) against Health Advocate, Inc. and others for various trademark and related type claims. Three opinions in that case should be noted, 2004 U.S. Dist. LEXIS 293 (E.D. Pa. January 13, 2004)(dismissing a number of claims), 2004 U.S. Dist. LEXIS 12536 (E.D. Pa. July 8, 2004)(denying plaintiff's motion to amend complaint and denying defendant's motion for in camera review of the documents in question), and 2005 U.S. Dist. LEXIS 1704 (E.D. Pa. Feb. 8, 2005)(dismissing remaining federal claims and declining to exercise pendent jurisdiction over state fraud claim).

During the investigation of plaintiff's claims, a law firm for some of the defendants utilized the not-for-profit Internet Archive Wayback Machine. The Wayback Machine lets one access archived versions of websites. You type in the URL, select a date range, and presto, you can surf an archived version of the web page in question. It is a phenomenally important archive, useful to people throughout the world, including parties in lawsuits who want to find out what their adversary was saying in the past on a website that has been updated or revised potentially hundreds of times since the events in question. The Wayback machine contains about 1 petabyte of data, more than that in the Library of Congress, even though the archiving only began in 1996. The archiving is accomplished by the Alexa webcrawler.

The Wayback machine is not, however, interested in archiving material website administrators don't want archived, so it has developed a number of ways for people to say, "Please don't collect our stuff." You could telephone the Internet Archive and tell them not to. Or, you can utilize the SRE (Standard for Robot Exclusion) to specify files or directories that cannot be crawled. This is accomplished by a file called robots.txt. (Here is a short article on the Wayback machine and robot exclusion from Wikipedia, and here is a more technical explanation, Robots.txt.) Use of robots.txt is entirely voluntary and many webcrawlers do not utilize it, although the Alexa webcrawler is programmed to obey the robots.txt instructions, and in fact is constructed so as to block, retroactively, files in existence before the instructions were inserted.

Back to the Healthcare Advocates case. The complaint in the earlier suit against Health Advocate, Inc. was filed in June 26, 2003. Healthcare Advocates had been operating a website, www.healthcareadvocates.com since 1998. In July 8, 2003, the robots.txt instructions were inserted. The next day, it is alleged, defendant's law firm tried to access archived Healthcare Advocates website material. In the court's July 8, 2004 opinion, an allegation is recited that between July 8, 2003 and July 15, 2003, 849 attempts were made to access the archived information, of which about 112 attempts were successful. Presumably, all of the material was pre-July 8, 2003 information.

Plaintiff sought to amend the complaint to bring claims against the law firm for this activity, but the court denied the motion. After plaintiff's complaint was dismissed as noted above, this new complaint against the law firm, its members and employees, and the Internet Archive was brought last Friday, July 8th.

There are 12 counts, too many to recite on this already too long blog. I will only talk about one, the DMCA claim, an alleged violation of Section 1201(a): "No person shall circumvent a technological measure that effectively controls access to a work protected under this title." It is alleged that the robots.txt denial text string is a technological circumvention measure and that defendant law firm circumvented it. This claim, in my opinion, is factually and legally wrong. Factually, at least from the complaint, it does not appear that the law firm "circumvented" anything, if by circumvent we mean devised a mousetrap to bypass the denial text string. Instead, it seems as if defendant kept banging on the URL until, for whatever reason, the denial failed to be recognized. This is like going down a row of houses and trying doors to see if they are open. If they aren't you move on until you find one that is. If it is open you walk in, but you certainly haven't circumvented an access control mechanism.

But as importantly, I don't see how the robots.txt can meet the 1201(b)(2)(B) definition of a technological measure: it is a voluntary protocol, operated if at all not by the copyright owner but by a third party, and not all third parties have agreed to use it. The definition of a technological measure is one that "effectively protects a right of a copyright owner ... if the measure, in the ordinary course of its operation, prevents, restricts, or otherwise limits the exercise of a right of the copyright owner under this title."

In the ordinary course of the operation of plaintiff's website only those webcrawlers that had voluntarily agreed to do so would restrict access, and many don't. That can hardly meet the effective protection standard contemplated in the definition. And as a policy matter, plaintiff's theory would encourage good government archivists like the Internet Archive not to use voluntary measures on pain of a DMCA violation. Nor can one say that there was any quid pro quo here: the webpages in question were publicly available long before plaintiff decided to restrict access in conjunction with a much later filed lawsuit. And that is the worst policy of all.

Clothing and Costumes Redux

An earlier posting reviewed the availability of protection for the design of clothing and costumes. In the last ten days, two important circuit opinions on point were issued. On July 7, the Fifth Circuit handed down Galiano v. Harrah's Operating Co., and on June 30, the Second Circuit handed down Chosun Int'l, Inc. v. Chrisha Creations, Ltd. In Galiano, the Fifth Circuit affirmed a trial court which had ruled the clothing designs in question were not protectible. In Chosun, the Second Circuit vacated a trial court's FRCP 12(b)(6) ruling that the costume designs weren't protectible. The procedural posture in Chosun was a criticial aspect to the case since the appeals court needed only to disagree (as it did) that "it is beyond peradventure that the plaintiff could prove no set of facts leading to success." In Galiano, the case came to the appellate court on review of a summary judgment grant to defendant on infringement (and therefore was also de novo review).

Chosun was written by Judge Guido Calabresi. He is the author of a number of opinions on the issue, including Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir. 1996) (He is also the former Dean of the Yale Law School, and for history buffs, he is both a Finzi-Contini and has a yichus that goes back to family in Jerusalem carried off to Rome after the destruction of the Temple.) Galiano was a maiden effort on the topic by Judge Jerry E. Smith (himself a Yale-Yale grad).

In my opinion neither decision approaches the issue correctly, that is, by examining what the real first question is. Galiano mentions the question in a very quick reference, but doesn't analyze it and its failure to appreciate there is a real first question creates analytical deficiencies. Chosun, in footnote 3, realizes there is a predicate issue, but doesn't decide it, and the case should have been decided on basis of that issue.

So what's the first question? This: is the design at issue the design of a useful article? There is only one way to answer that question, by examining the definition of "useful article" in 17 US.C. 101: "A 'useful article' is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article.” If the design is of an article whose instrinsic purpose is merely to portray its appearance, that article is not a useful article.

The instrinsic purpose of costumes is merely to portray their fanciful appearance, and hence they are not useful articles, ever. Accordingly, no separability analysis is required, ever. The Fourth Circuit got this right in Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488, 494 (4th Cir. 1996), but that court is alone in this regard (To its credit, Chosun did cite to Superior Form Builders on this point).

Clothing presents more complicated issues. While I reject the Scottish kilt theory for full-body costumes that "underlay" the Copyright Office's 1991 regulation (56 Fed. Reg. 56530), ordinary clothing does serve an obvious useful purpose. But we must distinguish between two and three-dimensional designs. Two-dimensional designs are not subject to the separability analysis because the design is not the design "of" the useful article, but is instead extrinsic to the useful article; it is merely applied to it. Designs embossed on T-shirts are a good example. (This is entirely different from physical separability: that applies to three-dimensional designs).

Three-dimensional designs of clothing are subject to the separability analysis, but of course may meet it. Most courts come undone because they state the question as whether clothing as a class is protectible or whether clothing can meet the separability standard, as if clothing is what copyright protects. Copyright doesn't protect clothing: it protects original pictorial, graphic, or sculptural elements that function (to a greater of lesser degree) as the design of clothing.

Of course, even after we clear away these conceptual weeds, another problem arises: what is the proper test of separability? Answering that question exceeds the space limitations of any blog. Indeed, any real discussion of Galiano would take up a healthy-sized law review article. In the end, Galiano takes a unique approach for solely garment designs - a "likelihood of marketability" approach - that is unprecedented, extra-statutory, and which has for good reason been rejected by the Second Circuit. At this point, the separability standard is, unfortunately, beyond repair and as bad, is unlikely to ever be fixed.

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A few random notes. On Tuesday, the Second Circuit will hear argument in the bootleg appeal, U.S. v. Martignon. The argument will be at the 40 Foley Square courthouse in Manhattan, about 10:30 am in Courtroom 1505. Wendesday's blog will review the argument.

There are two blogs I recommend. Kevin Heller has one, called "Legislating IP," containing useful, current information on legislative hearings and initiatives. And Gary O'Connor has the Statutory Construction Zone, a wonderful resource for federal statutory interpretation material.

The 2d Circuit Speaks Twice on Willfulness

Since June 28th, the Second Circuit has handed down two opinions on willful copyright infringement. The first, and more substantial, is Island Software and Computer Service, Inc. v. Microsoft Corp., 2005 U.S. App. LEXIS 12766 (2d Cir. June 28, 2005). The second, a summary order, is GMA Accessories, Inc. v. Oliva Miller, Inc., 2005 U.S. App. LEXIS 13368 (2d Cir. July 5, 2005). Willfulness determinations principally come into play in determining whether to exceed the otherwise binding ceiling of $30,000 in statutory damages per work.

Island Software involved the degree of proof necessary at the summary judgment stage to establish willfulness. The court, per Judge Calabresi, "concluded" that "in the absence of evidence conclusively demonstrating actual, rather than constructive, knowledge," summary judgment on willfulness is inappropriate. I put "concluded" in quotes because the court's discussion is dictum. It is dictum because the district court awarded statutory damages within the non-willful range, albeit while noting that its finding of willfulness was a factor that led it to award damages at the high end of the non-willful spectrum.

In vacating and reversing, the court of appeals conceded that "it may well be that the identical remedies that we are currently vacating are reimposed upon .. remand." So why vacate then? Because, the circuit stated: "We cannot be certain that the district court's remedial decision would have been the same absent its conclusion that [defendants] acted with reckless disregard for, or willful blindness to [plaintiff's rights]."

I question the wisdom of district courts ever finding willfulness if they are not going to exceed the $30,000 floor for non-willful behavior. A willfulness finding can have devastating impact by itself in precluding insurance coverage and in leaving a company open to shareholder derivative suits. Willfulness findings are also relevant for bankruptcy proceedings. In any event, the court of appeals reiterated that there are three ways to establish willfulness: actual awareness of the infringing activity, reckless disregard for the copyright owner's rights, or willful blindness to them.

At the summary judgment stage, though, the court stated that "where the non-moving party does not traverse the evidence suggesting constructive knowledge of infringement, but only disputes the inferences drawn from that evidence, our standard of review requires that we decide in favor of the non-moving party." This statement was really directed at what the trial court should have done (deny summary judgment on the issue), since the court of appeals vacated that decision.

GMA Accessories (with Judge Calabresi as the only judge in common between the two panels), summarily affirmed, in an unsigned order, the trial court's finding of non-willfulness. This finding came after a bench trial on damages, and so the standard of review was the clearly erroneous one. The standard was important because there was conflicting evidence on constructive notice of infringement. In affirming, the court cited Anderson v. Bessemer City, 470 U.S. 564, 574 (1985): "Where there are two permissible views of the evidence, the factfinder's choice between them cannot be clearly erroneous."

When it comes to willfulness it is all about the evidence and the standard of review.

Rashi and the Reading of Statutes

Observant young Jewish children learning Chumash (the first five books of the Bible) also read Rashi's commentary to those books. Rashi was Rabbi Shlomo Yitzhaki, born in Troyes, France. He was the greatest Biblical scholar of the Middle Ages, one of the great ages of Jewish scholarship. Rashi is used as a learning device for children not because he is simple (he isn't) but because of the unusual nature of his commentary. His commentary consists of very terse conclusions, but without the questions that prompted the conclusions. Children are left with the task of asking "What's Bothering Rashi?" That is, what was it in the text that bothered Rashi so much that he felt compelled to comment on it? (Dr. Avigdor Bonchek's recent and delightful series, of five books of course, "What's Bothering Rashi?," helps students work through what was in fact bothering Rashi in a few select examples. For the vast majority of the rest, students are on their own, and that's the idea).

The "What's Bothering Rashi?" approach to learning text is useful in analyzing statutes because it teaches one to ask the why of things, rather than as we almost always do, just read the literal words divorced from what the law would be like in their absence. Since at least the 1584 opinion in Heydon's Case, 76 Eng. Rep. 637, courts have looked to the "mischief" the legislature sought to solve, that is, they have sought to discover the purpose of the statute as a guide to understanding how to interpret it. This may support, but does not require, examination of legislative history, and even textualists follow Heydon's Case. In some ways, the exercise is even more important for textualists because they usually won't look to external explanations of purpose like committee reports or floor statements.

Israeli Supreme Court President Aharon Barak has written a 6 volume book (in Hebrew) on statutory interpretation ("Parshanut ba-mishpat"), the last volume of which has just been translated into English as Purposive Interpretation in Law. It is an invaluable look at the subject, with quite alot on U.S. law. Felix Frankfurter's famous 1947 lecture "Some Reflections on the Reading of Statutes," 47 Columbia Law Review 527 is also a wonderful read, but what prompted this posting was my study, yesterday, of the late, great Second Circuit Judge Henry Friendly's review of Frankfurter's lecture "Mr. Justice Frankfurter and the Reading of Statutes." Friendly's essay may be found in a 1967 collection of his lectures called Benchmarks. (He has another essay in the same volume that is quite critical of Congress, entitled "The Gap in Lawmaking - Judges Who Can't and Legislators Who Won't." Friendly was particularly critical of the drafting of the 1909 Copyright Act. In his Gap essay he wrote: "Anyone who has had to deal with the Copyright Act of 1909 must stand in awe of the ability of the framers to toss off a sentence that can have any number of meanings." And in Rohauer v. Killiam Shows, Inc., 551 F.2d 484, 486 (2d Cir. 1977), he wrote: "As has been so often true in cases arising under the Copyright Act of 1909, neither an affirmative nor a negative answer is completely satisfactory. A court must grope to ascertain what would have been the thought of the 1909 Congress on an issue about which it almost certainly never thought at all." Obviously, I am not trying to overstate in this posting Congress's drafting skills).

What Friendly points out is that for various reasons, none of Frankfurter's predecessors, not Holmes, not Cardozo, not Brandeis, nor even Learned Hand had anything approaching Frankfurter's interest in the challenges posed by intepreting statutes. Frankfurter had pioneered their study as an academic topic at Harvard Law School and came to the bar (as they said in those days) during the FDR I era of new legislation. As Friendly put it, "His whole legal life had been lived with statutes."

What I learned from writing provisions of the Copyright Act on the Hill was invaluable to me, and I think it would be to others. First, in trying to amend an existing statute, one comes to appreciate text as nothing more than what one group of people did at a discrete point in time to solve a discrete problem. Maybe they did a bad job and maybe you can do a better job, and the proof of that is in the trying. Sometimes I found I could do a better job, and sometimes I found I couldn't. I learned more from the times I couldn't because it taught me that the words were there for a reason I had never really grasped.

Sometimes things change so much the words have to change, and that is a real challenge because you have to struggle not only to find the right words for your problem but to also try and be somewhat clairvoyant so you didn't have to do it over again next year. Not easy, because we're not clairvoyant. But at the same time, Congress won't legislate over and over again for every new technology. For example, the definition of "fixed" in the 1976 Act was deliberately drafted broadly and encompassed without any problems compact discs when they later came along. Yet, that same definition has caused major problems when it was construed (technically correctly) to include RAM copying. Licensing problems from buffering on the Internet are a direct result.

The next time you are faced with interpreting a provision of the Copyright Act, at least if you are baffled by it, try to figure out the question that was bothering Rashi. It may help. It is, if you do it honestly and diligently, at least a good learning experience. One way to do that is to imagine how the law would be different if the provision wasn't there at all.

Is Copyright A Gift You Can't Refuse?

Last week, a reader asked me to do a posting on whether one may disclaim an interest in copyright; in other words, is copyright a gift you can't refuse? The answer is yes you can disclaim an interest in an original work of authorship you have created. The issue only arises under a system of automatic copyright; that is, a system like ours where you don't have to satisfy a formality in order for copyright to vest. You create an original work of authorship, presto, you've got yourself a copyright.

OK, but what if you don't want the copyright? Given the millions of copyrighted works created every day in the United States and the fact that only about 600,000 claims to copyright are registered a year, clearly there are a lot of folks who aren't interested in vigorously protecting their copyrights (since registration is a prerequisite to important relief). But there are people who are interested in using works people don't care about (in a copyright sense). And it does happen sometimes that people who didn't care before, all of a sudden do care when someone else is using the work and making money off it, or is simply using it in a public way.

The problem is a relatively recent one. Until January 1, 1978 (the effective date of the 1976 Act), there were formalities placed on the existence of copyright. In the 1790 Act this entailed publishing a notice of a claim to copyright in newspapers (all the better to inform those who might not know of your claim), and registration with the clerk of your federal district court. In the 1909 Act, you merely had to place a proper notice in the book (or other published work), and eventually provide the Library of Congress with deposit copies. Additionally, however, failure to comply with the renewal requirement led to a vast amount of works falling into the public domain.

The 1976 Act went to a system of automatic copyright (Section 102(a)), but there was a mandatory notice requirement; not on the existence, but on the exercise of copyright. This distinction was played out in Section 405 which provided ways to cure the absence of, or an incorrect notice, thereby preventing a work from falling into the public domain.

Finally, until 1986, there was a manufacturing clause requirement (Section 601 of the 1976 Act). The nature of the requirement changed substantially over time (it began in 1891), but the short statement of it is that works covered by the requirement which were not printed and bound in the United States had no protection. Under the 1909 Act, the Customs Service would seize books coming into the country with a copyright notice but without being printed here or qualifying for an exemption. This requirement led some publishers to effectively abandon copyright by leaving the notice off, but there was also a procedure before the Copyright Office where one could actually record a notice of abandonment, so people could search the Office's records for such notices.

In short, one could deliberately inject a work into the public domain by consciously failing to comply with the requisite formality, or, the work could fall into the public domain through an inadvertent failure to comply. There is no question that the existence of formalities weeded out a very large number of works that authors had no copyright interest in. It is also true that copyright owners lost copyright inadvertently or through a genuine but failed effort to comply.

Formalities under the 1909 Act were extremely rigid and technical. Those who didn't practice under that Act tend to underestimate the difficulty of good faith efforts to comply, even by lawyers. For non-lawyers it was much worse.

I am a firm believer that we did the right thing by doing away with formalities, having seen first hand the tragic loss of copyright in works authors or their estates deeply cared about, but this doesn't mean the abolition of formalities hasn't led to its own set of problems. It has, and we have yet to solve those problems or to even try. The extension of term in 1998 has made the problem of "orphan works" (those works authors aren't interested in) even more important, perhaps critical. (One can of course, still disclaim copyright via a statement to that effect put on copies of the work, or you can file such a statement with the Copyright Office, or however else you want to publicize the fact).

Judge Posner and I wrote an article about the problem of orphan works and fair use, "Fair Use and Statutory Reform in the Wake of Eldred," 62 California Law Review 1639 (Dec. 2004). The Copyright Office on January 26, 2005 published a Notice of Inquiry requesting comments on the problem of orphan works. A number of comments have been submitted and they make good reading. Congress has indicate some receptivity to the problem and this may be a way, small as it is, to ameliorate some of the problems.

Sandra Day O'Connor

Justice O'Connor's announcement last Friday of her retirement was surprising and expected. The last time I saw her, the morning of the Grokster argument (March 29), she had moved out of her usual chambers into much smaller chambers on the other side of the building. Her old chambers were on the left of the Court as you walk up the front steps and had a wonderful view of the Capitol. She could also see and hear protesters, who not infrequently gathered below. The Court is undergoing a modernization project, quadrant by quadrant, and her quadrant was first. I was told in early March by a relative of hers not to read "too much" into the move, but it was hard not to, especially as the new chambers are those for a retired Justice, the ones she will now occupy permanently.

She was, the day of the Grokster argument, as she always is: incredibly warm, gracious, and wanting to know the latest with you and your family. I worked for 12 years in DC, 8 of them in the legislative branch, and with some masterful politicians. In person, Justice O'Connor has an aura, an astonishing ability to connect on an intimate level that cannot be explained unless you experience it. Her love of people is genuine, her loyalty unflagging, and she is very direct: she says what she means and means what she says. She is also down to earth, as befits someone who grew up on a working ranch and who was cut no slack because she was a woman. An illustration: once, when I was working for the House IP subcommittee, my direct line rang: I answered the phone and heard a very recognizable voice on the other end: "Hello, Bill, this is Sandra. Are you free for dinner at the house Thursday with Craig and I?" The DC protocol for important people is to have their staff call for them: Justice O'Connor always called herself, and always referred to herself as Sandra.

Craig is Craig Joyce, an old friend (I was for a time co-author of a few editions of his casebook on copyright and he is the co-author with her of her latest book, the one I am reading in my blog photo). He is a close relative of the Justice's by marriage and once worked as an associate for John O'Connor in the latter's then Arizona law firm. (In 1978, the O'Connors set him up on a blind date with the woman who became his wife, Molly, a cousin of the Justice's; they have two children, Will and Matt.) The dinner the Justice had called me about consisted of her cooking dinner for Craig and I in her kitchen, she bedecked with an old apron. We had a small salad and then the main course, an enormous piece of salmon. I have been a strict vegetarian for over 30 years, but it was just the three of us, in her kitchen, and she was the cook. I ate every bit of it, but was the last to finish by an uncomfortable amount of time.

I don't know many who, in her position, would cook for lowly people like me. When Janet Reno was confirmed as Attorney General, she came over to the House Judiciary Committee and had a brown bag lunch just with staffers; that was a big deal to us, but she didn't make our lunches. Justice O'Connor is to me as perfect as human beings get: so warm you feel you are a close friend, brilliant, loyal, incredibly strong yet still caring, and always reaching out to opponents to try and find common ground. Before the Grokster argument, three times she mentioned to me how much Congress hated the Court, yet she had a short time before invited a group of House Republicans over to the Court for a private lunch to try and repair relations, a wonderful gesture, and one that would never have been initiated from the other direction.

Justice O'Connor's approach to the work of the Court was best summed up by Eugene Volokh, whom I met while he was an O'Connor clerk: "Justice O'Connor, a pragmatist, saw the work of the law as making law work." That approach angered the uber-ideological, those like Robert Bork, who view as apostates conservatives who don't put their private views into action on the Court (See the transcript of Bork's July 1, CNN interview.) Of course, Bork didn't make it on to the Court and O'Connor did; he should, but doesn't, see a lesson in that.

Being a pragmatist doesn't mean an absence of principle, as Judge Posner never tires of pointing out. And Justice O'Connor's dissents in Raich and Kelo certainly dispel any doubt that her principles are deeply conservative ones. (You can buy an SOC Kelo dissent t-shirt at cafepress.com). But she viewed her job as deciding the case before her; she didn't view the case as a vehicle for furthering a private philosophical view.

Much has been made in the press about Justice O'Connor's role as the swing vote, and there is no doubt she was in many case, but any real estimation of the number of times she was the "swing" might helpfully focus on those where her vote was in play, not just those where she was in the majority. One case where she was the decisive 5th vote was Sony. In a previous posting on June 1, I gave a look at the behind the scenes shift in votes in Sony, and there was one Justice and one Justice only I didn't name. Justice O'Connor was that Justice and she was, in Sony, the 5th vote that switched from Blackmun, making Stevens' opinion the new majority. Sony, then, is a case where she cast the decisive vote. And she stuck with Justice Stevens in Grokster, joining him in Breyer's concurring opinion.

I want to conclude though with more typical O'Connor opinions, those where she forged a 9-0 Court, in particular, Bonito Boats, Inc. v. Thundercraft Boats, 489 U.S. 141 (1989) and Feist Publications, Inc. v. Rural Telepone Services, 490 U.S. 340 (1990). Justice O'connor prided herself not for being the swing vote, but on her ability to forge a consensus. These two opinions, written a year apart and properly regarded as twins, express a coherent, principled, pragmatic view of how the intellectual property system should work, a view that is frequently overlooked. Both cases express the view that IP is a two-sided coin in which the Promotion of the Progress of Science can only go forward if the public domain is protected as well as content owners' rights. In Bonito Boats, the Court struck down an effort by the State of Florida to circumvent the lack of patent novelty by providing a mutant form of unfair competition protection. In Feist, the Court insisted that the originality requirement in copyright means something, and that facts really are free.

Justice O'Connor clearly saw that a balance was integral to our IP system. To her, this meant a balance by which an adequate amount of incentives are provided but not at the expense of a vigorous public domain. She saw her job as making that system work. Those of us who are non-ideological, precisely because we believe that the system can function properly only if both sides of the equation genuinely work and work together, have an extra reason to mourn her retirement.