Literary Authors and Amazon.com

First it was Google; now its Amazon.com that literary authors are kvetching about. An article in Thursday's (September 29) Wall Street Journal discusses complaints authors have about the fact that amazon.com offers books for sale at different prices: list price, new books at lower prices, and used books. Authors and literary agent are quoted as saying they think they are being deprived of royalties and they want their share! It is really no fun to write about copyright owners acting like Luddite pigs, and being in private practice it has a definite commercial downside; I would much rather praise Caesar. But, things are as they are, and I have always opted for honesty over craven brown-nosing and over self-imposed censorship. I hope my twins forgive me.

I buy around 150 books a year. This week I bought three brand new ones: a $160, 245 page book on copyright and printing privileges in Venice circa 1500; a $55 book about prints in the same era; and a $20 book accompanying the print exhibit I blogged about a few days ago. I also borrowed three books through Inter Library Loan. I may end up buying one; the other two (by historian Carl L. Becker) are out of print.

I buy the vast majority of my books through amazon.com and pay alot of attention to the choices they offer for the book I am interested in. Choice is bad, apparently. I should have to pay list price and I shouldn't be able to resell it (at least through amazon.com) without amazon.com sending a check to the publisher, who will pass 100% through to the author, at least that is what a literary agent is quoted in the article as advocating.

Sad, is the only polite word I can think of for literary authors' utter failure to embrace an extremely beneficial system. The first sale doctrine was judicially created by the Supreme Court pre-1909 Copyright Act in order to prevent misuse of copyright to maintain list price. Some things truly never change.

Common Law Countries and Originality

The concept of originality is of obvious central importance in copyright law, but does it mean the same thing everywhere? On March 4, 2004, the Supreme Court of Canada handed down Law Society of Upper Canada v. CCH Canadian Limited, a comprehensive, comparative look at originality. I confess to being utterly baffled by this opinion, and I say this with trepidation, not wanting to sound like a snooty American.

In a 2002 Copyright Society article by Daniel (not Ricky) Gervais, "Feist Goes Global: A Comparative Analysis of the Notion of Originality in Copyright Law." Professor Gervais also discusses other countries's approaches to originality, but is the CCH opinion I want to mention, because it manifests such a questionable grasp of U.S. law and logic. (See also Professor Gervais' post-CCH article, "Canadian Copyright Law Post CCH.).

The dispute in CCH concerned a law library's photocopying and fax transmissions of legal materials for which copyright was asserted in headnotes, case summaries, topical indexes, and a compilation of judicial opinions. I have two central beefs with the opinion's discussion of originality, neither of which has to do with the merits of the particular dispute.

First, the court noted a number of different interpretations of the term "original," but stated nevertheless that the "plain meaning of the word 'original' suggests at least some intellectual effort, as is necessarily involved in the exercise of skill and judgment." The Court cited a dictionary for this position. However one comes out on plain meaning in statutory interpretation and the use of legislative history, it is very hard to see how a term like "original," which is undefined, the subject of quite different legal interpretations in other countries, and which is the subject of wildly different non-legal meanings, could ever be regarded as having a "plain" meaning.

The second beef I have is with the Court's conclusion that the "correct approach falls between [two] extremes," those extremes being sweat of the brow and the Feist standard. I wouldn't describe Feist as an extreme and certainly not in relation to sweat of the brow: there is no logical connection, no polar relationship, no ying-yang between the two. They represent very different approaches to originality but this doesn't mean they are points on the same line much less at opposite poles. Feist is a very mainstream, modest approach; it is not at anyone's extreme of what originality could mean, like novel or non-obvious, for example.

It is a common enough debating trope to describe yourself as being in the middle, as if you are somehow the reasonable one by your own self-identification, and that is what seemed to happen here. Yet, the approach taken seems little if any different from Feist: to be original under Canadian law, the Court held that a work "must be more than a mere copy of another work. At the same time, it need not be creative in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. By skill, I mean the use of one's knowledge, developed aptitude or practised ability in producing the work. By judgment, I mean the use of one's capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort."

Despite the verbose nature of this, I doubt Feist would disagree. Why not just say so then?

Subway Maps and Copyright

One of my favorite blogs, Corante, had a posting about cease-and-desist letters sent by the NY Metropolitan Transit Authority and BART in the SF Bay Area over iPod downloading of subway maps. This is very disturbing. Those agencies have much more pressing, public safety and service issues they should be worrying about than vigorously asserting copyright in subway maps. And if their concern is that the iPod maps were inaccurate, they should have offered to provide a free, up-to-date file. The only purpose for such maps in that format is to inform the public about which trains to take. Copyright is both unnecessary and inappropriate. The agencies' actions are shameful.

But are they legally sound? Maps have been protected since the 1790 Copyright Act. The basis for protection in some of the early decisions is unclear: was it sweat of the brow, as a factual compilation, as a visual work, or something else? See e.g., Perris v. Hexamer, 99 U.S. 674 (1878); Blunt v. Patten, 3 F. Cas. 762 (C.C.S.D.N.Y. 1828) and on maps in general in this period, J.B. Harley, The New Nature Maps: Essays in the History of Cartography (Paul Laxton ed. 2001); John Rennie Short, Representing the Republic: Mapping the United States (1600-1900) (2001). Compendium II of Copyright Office Practices Sec. 509.01 (1984) refers to drawings or pictorial representations "based on original surveying or carto-graphic field work," but this final requirement seems inappropriate after Feist. More persuasive is Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992), which based protection on the inherent pictorial nature of the map.

A particularly apposite opinion is Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739 (2d Cir. 1998), which involved to a glossy map of New York City. And then there is County of Suffolk, N.Y. v. First American Real Estate Solutions, 261 F.3d 179 (2d Cir. 2001), which injected a new incentives based test for protection. Under that approach, there is no need for the incentive of copyright for the transit authorities to publish the subway maps; they have to anyway, if not by law, by necessity.

Unlike Section 105 of title 17, which bars protection for works of the United States government, there is no bar on state governments (or subdivisions or corporations owned by them) owning copyright, although states are free to ban protection: given states lack vigorous assertion of sovereign immunity, common decency would require them to disavow copyright. There is no statutory bar to protection for original subway maps, therefore. There should, though, be a common sense bar but that, like common decency, is apparently lacking.

Albrecht Dürer and Copyright

Albrecht Dürer may lay claim to the most aggressive copyright notice ever used, declaring in 1511 in a colophon to the Life of the Virgin:

Hold! You crafty ones, strangers to work, and pilferers of other men’s brains. Think not rashly to lay your thievish hands upon my works. Beware! Know you not that I have a grant from the most glorious Emperor Maximillian, that not one throughout the imperial dominion shall be allowed to print or sell fictitious imitations of these engravings? Listen! And bear in mind that if you do so, through spite or through covetousness, not only will your goods be confiscated, but your bodies also placed in mortal danger.

What got him so angry? The answer is seen in a current show "Paper Musuems: the Reproductive Print in Europe, 1500-1800," at New York University's Grey Art Gallery through December 3d, reviewed in an excellent, Friday New York Times article by Grace Glueck.

Dürer was angry at Marcantonio Raimondi, who had made a line-for-line copy of Dürer's work. Dürer obtained an injunction, but only against the use of Albrecht's well-known "AD"insignia. Raimondi's prints sold for the same price as Dürer's and with Dürer's insignia could easily fool the public as to the source of the print, a problem currently dealt with in Section 43(a) of the Lanham Act. Raimondi was not just a scoundrel; he worked with famous artists on creating authorized prints. He and other, less-skilled print makers who sold their mass-produced versions served to acquaint the general public with works that were otherwise limited to the wealthy, including the church.

Among the excellent sources of information on Dürer's travails (in addition to the catalog essay in the NYU show by Alexandra Korey) is a 215 page book I just read by Lisa Pon, published in February 2004 by Yale University Press called "Raphael, Dürer, and Marcantonio Raimondi: Copying and the Italian Renaissance Print" as well as the September 2004 issue of the Japanese Journal "Studies in Western Art," entitled "Originality and Reproduction" which contains numerous very interesting and probing articles on the copying of Western art throughout the ages.

The NYU show raises a number of important points about what was considered an original and what is now considered a derivative work; many prints made creative changes in the works, and it should be noted that it was quite late in the copyright game that such alterations were deemed infringing, in the U.S. perhaps as late as 1909: the English common law doctrine of "fair abridgment" thrived in the U.S. well into the mid-to late 1800s.

Small Beauty

The saying "Less is More" was popularized by architect Mies van der Rohe (but found in an 1855 poem by Robert Browning), and scoffed at by architect Robert Venturi, who quipped "Less is a Bore." The general legal doctrine of de minimis non curat lex bars copyright protection where the material for which protection is claimed fails to embody a minimal quantum of creative authorship. In applying this doctrine, the Copyright Office refuses registration for “words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents.” Last week, Judge Sprizzo of the SDNY upheld the Office’s refusal to register the Coach luggage letter C design.

Too much can be made of the term “short” though: since originality involves qualitative as well as quantitative considerations, no quantitative guidelines can be given for identifying the line between not enough and just enough creativity. In addition to obvious examples such as haiku with its concentrated poetic pattern of 5-7-5 morea (roughly syllables), brevity may be a sign of greater, rather than less, creativity. Anton Webern, who along with his mentor Arnold Schoenbeg and friend Alban Berg are frequently referred to as the “Second Viennese School”, composed severely spare music. Webern’s philosophy, set forth in a monograph “The Path to New Music,” is best seen in his definition of Art as “the ability to present an idea in its simplest, clearest, that means most comprehensible form.” This didn’t mean Webern’s ideas were simple – his music is the most rigorous devoted to Schoenberg’s 12-tone approach – rather, it means that Webern aimed for transparency in the expression of his idea. For example, Webern’s Six Bagatelles for String Quartet (1911/1913), each take up only a single page, and when performed in their entirety, last barely three minutes. Schoenberg wrote a preface to score that sums the matter up well:

Though the brevity of these pieces is a persuasive advocate for them, on the other hand that very brevity itself requires an advocate. Consider what moderation is required to express oneself so briefly. You can stretch every glance out in a poem, every sigh into a novel. But to express a novel in a single gesture, a joy in a breath – such concentration can only be present in proportion to the absence of self-pity.

Before we dismiss out of hand brief works, we should be sure about their nature.

Judge Boudin, Per Stirpes, and An Authorization Right

Michael Boudin is Chief Judge of the U.S. Court of Appeals for the First Circuit. He clerked for the legendary Second Circuit Judge Henry Friendly. He and Judge Richard Posner constitute the Federal Circuit Judges Cat Society. Judge Boudin is a wonderful, generous, open person,with a brilliant intellect and very readable opinion style. On Friday, he released an important copyright opinion, Venegas-Hernandez v. Asociacion de Compositores y Editores de Musica Latino Americana. Judge Boudin's opinions are concise like Judge Posner's and like Judge Posner's, they have a helpful habit of invisibly leading the reader along the path of his thinking, and what great thinking it is.

Two aspects of the most recent opinion bear mention. The first is a technical but important issue of statutory interpretation: Section 304(a) bumps wills and in a compulsory bequest gives the deceased author's renewal right to designated statutory heirs, in order. The first class is "widow and children." (The statute says widower too, but that is statistically rare). The question, where there is both a widow and children, is how they take: do they take per capita (a widow and two children would each take a third) or per stirpes (the widow takes 50% and the two children 25% each)?

The Copyright Office favors per capita, but a divided Sixth Circuit went with per stirpes, BMI v. Roger Miller Music, Inc., 396 F.3d 762 (6th Cir. 2005), as does Judge Boudin and his court, but only after a different review than that taken by the Sixth Circuit, given that he entertained the possibility of looking at state law for guidance. I favor the per capita approach, but both opinions are essential reading (including Judge Daughtrey's dissent in the BMI case).

The other aspect of Judge Boudin's opinion that merits review is his musing about whether there exists a separate authorization right such that that right may be violated where there is no direct infringement. After noting there is a plain language argument in favor of the right, he ultimately concludes otherwise, based, correctly, I believe, on the purpose of the "authorization" language being to statutorily recognize the common law doctrine of contributory infringement which does have a direct infringer requirement.

Broadcasters and a WIPO Treaty

I have been watching the "Yes Men," a documentary about two guys who spoof on the WTO, mostly via invitations sent to a domain site they own http://www.gatt.org/. The WIPO is like the WTO, at least by also having a W and an O at the beginning and end of its name, and by being concerned with intellectual property. WIPO not only administers the Berne Convention and the WCT and WPPT treaties, it is instrumental in their formulation and negotiation. Most recently, broadcasters have been pushing for a new treaty of their own. On September 16th, the Copyright Office held a meeting with some NGOs about this. At the end of September, there is a WIPO General Assembly at which the issue of a possible diplomatic conference toward a new treaty will be taken up.

Here is an August 24, 2005 Document prepared by the WIPO Secretariat summarizing broadly previous discussions. Here is an April 2005 working paper, and the most recent public draft, from May 2005. Here is a link to CPTech which has a number of links to documents, with a not altogether accurate review of the current state of the law. http://www.cptech.org/ip/wipo/wipo-casting.html

Broadcasters do enjoy in the U.S. a copyright in their broadcast day, the compilation of a full-day programming, as well as in the shows they produce. Since 1992, they also possess "retransmission consent" in Section 325(b)(1) of the Communications Act. Retransmission consent is a copyright right not passed under the Copyright Act and over the objection of the House Judiciary Committee. This right gives broadcasters the ability (if they have the economic stroke) to "just say no" to cable companies. (Larry Tisch then at CBS thought this would be a huge money machine; it isn't).

Broadcasters internationally aren't viewed as copyright owners and thus aren't covered by the WCT or WPPT, although they are covered by the 1961 Rome Convention, to which the U.S. does not adhere. The U.S. is very active in this new effort and of signal importance (pun intended) is whether the new right (if there is one) should cover webcasting and have DMCA like Chapter 12 provisions.

The time to get involved is now, not later, wherever you come out on the issue. Recall that early proposals for what became the DMCA Chapter 1200 provisions floundered domestically until the decision was made by the Administration to go the back-door international treaty route and use that obligation as leverage for domestic changes. That approach was not used during Berne adherence but only because then House Judiciary IP chair Bob Kastenmeier made clear that Congress had a very important role to play. One hopes that is the case here.

Remedies in Architecture Cases

I know I am "building" up posts on architecture, but I came across an opinion that is so wacky it shouldn't go without comment; and, it raises issues not previously discussed: remedies in architecture cases. The opinion is Palmetto Builders and Designers, Inc. v. Unireal, Inc., 342 F. Supp.2d 468, 473 (D.S.C. 2004), and the relevant part of it is:

"[B]ecause the constructed homes constitute infringing copies of the Plaintiffs copyrighted works, they cannot be lawfully resold without the Plaintiff's permission. Under 17 U.S.C. § 106(3) a copyrighted article may be sold only by the owner of the copyright. Any sale by another party without the owner's permission constitutes an act of infringement. The only exception to this rule exists under 17 U.S.C. § 109(a) which permits the resale of a copyrighted article by a buyer who received a valid non-infringing copy of the work. This is known as the "first sale" doctrine. An infringing copy, therefore, does not fit within the "first sale" doctrine embodied in 17 U.S.C. § 109(a) and cannot be resold without the resale causing an additional act of infringement. The homeowners, the Nickols and Kellers, own houses that are infringing copies. Thus, without express permission by the Plaintiff, any sale of the houses by them - or by any subsequent owner - will constitute an act of infringement for which the copyright owner could bring suit. To fully enforce its rights, the copyright owner would have to bring a new lawsuit every time one of the houses was sold. One of the reasons for equitable relief is to prevent such a multiplicity of lawsuits. For this reason, too, the injunction is not only appropriate but indeed necessary."

There is a heap wrong with this. The suit was for infringement of architectural plans, not the architectural work. Copyright in architectural plans does not give one the right to enjoin construction of a building, ever. The reasons for this hearken back to Baker v. Selden and are also found in Section 113(b). Congress reaffirmed this view in the 1988 Berne implementing legislation committee reports, see S. Rep. No. 352, 100th Cong., 2d Sess. 8 (1988); H.R. Rep. No. 609, 100th Cong., 2d Sess. 50-51 (1988). For the same reasons, monetary relief for infringement of the plans is limited to things like lost license fees; it does not include lost profits from the construction of the building nor defendant's profits from the sale of an infringing structure. If you want those type of remedies you have to sue for infringement of the architectural work.

So the first error in Palmetto is granting relief for infringement of plans that could be granted, if at all, only for infringement of the architectural work. The other error, laughable were it not true (or perhaps even more laughable because it is true), was the court's reference to the hapless homeowners not being able to resell their homes. Resale, the court thought, would be a distribution. Huh? These weren't mobile homes, carted off their mooring and taken to a different site. Distribution of an infringing architectural structure (as compared to the copy of it) is impossible.

Borges, History, and Copyright

My two favorite writers are Kafka and Borges. There was a time I could read Kafka fairly well in the original, but never Borges, which I have always regretted, since while Kafka in the original adds (for me) a certain baroque dimension, I have always imagined (or is it the other Patry?) that Borges in the original would add a beauty and set of associations that will always elude me. In yesterday's blog, I had in mind too Borges 1939 short story "Pierre Menard, Author of the Quixote." In this story, Borges begins by describing Menard's oeuvre (after first noting Mme Henri Bachelier's "deceitful catalog in a certain newspaper, whose Protestant leanings are surely no secret"). There are 19 works listed in chronological order, including, Borges writes: "a diatribe against Paul Valery, in Jacques Reboul's Feuilles pour la suppression de la realite (which diatribe, I might add parenthetically, states the exact reverse of Menard's true opinion of Valery; Valery understood this, and the two men's friendship was never imperiled").

Borges spends most of his time attacking the "insinuation" that Menard devoted his life to writing a "contemporary Quixote." Borges states that "Pierre Menard did not want to compose another Quixote, which surely is easy enough - he wanted to compose the Quixiote. Nor, surely, need one be obliged to note that his goal was never a mechanical transcription of the original; he had no intention of copying it. His admirable ambition was to produce a number of pages which coincided - word for word and line for line - with those of Miguel de Cervantes."

This process would, of course, far exceed that mentioned by Learned Hand in independent creation of Keats' Ode on a Grecian Urn. Menard never finished, but what he did finish was line by line identical to Cervantes' work. Yet, the narrator opines that "Menard's fragmentary Quixote is more subtle than Cervantes'." One passage is quoted from Cervantes:

"truth, whose mother is history, rival of time, depository of deeds, witness to the past,
exemplar and adviser to the present, and the future's counselor."

Here is Menard's version:

"truth, whose mother is history, rival of time, depository of deeds, witness to the past,
exemplar and adviser to the present, and the future's counselor."


Although the passage is identical in both, the narrator declares that Cervantes' version is "mere rhetorical praise of history," while with Menard's, he states: "History, mother of truth! - the idea is staggering. Menard, a contemporary of William James, defines history not as delving into reality but as the very fount of reality. Historical truth, for Menard is not 'what happened'; it is what we believe happened. The final phrases - exemplar and adviser to the present, and the future's counselor - are brazenly pragmatic."

Borges here pokes fun at many things, including some of the theories of history noted in yesterday's blog, as well was literary criticism. But in a turn of events that Borges himself no doubt anticipated, a pompous, tendentious, unreadable, post-structuralist "discussion" of the Menard short story by William Plank inadvertently makes best another of Borges' points in that story: "there is no intellectual exercise that is not ultimately pointless."

History and Copyright

In Feist, the Supreme Court dealt with what it viewed as the fact versus compilation-of-fact dichotomy: facts aren't protectible, but compilations can be. But why should compilations of fact be protectible? Why should the aggregation of 100 unprotectible elements magically be transformed into something different that the parts, Justice O'Connor wondered. How, in other words, is the sum of the parts intrinsically different from each individual part, no matter how many individual parts there are?

The Court answered that question by examining the nature of each side of the equation. As regards facts, they weren't protectible because no one was their author; they are, we are told, objectively existent, a priori. Compilations of facts, on the author hand, can be protectible if there is an original selection, coordination, or arrangement: one can be the author of a compilation because it isn't a priori. This left open the question of what an original selection, coordination, or arrangement is, but given the alphabetical arrangement in Feist, it is no surprise the Court focused on selection as the key element of originality, the exercise of judgment in what to select (the 100 best vegetarian restaurants in Houston, for example).

Claims of copyright in historical works has suffered from courts' reflexive treatment of historical "facts" as facts like addresses in white pages. Historical facts exist a priori, are discovered, and can't be authored, ergo, they can be copied at will. But what is a historical fact? There are events that are documented or otherwise not disputed: that the U.S. Senate's confirmation hearings of John Roberts to replace Chief Justice Rehnquist began today. But those types of facts are what Macaulay called the "dross of history," things historians don't see as their raison d'etre, favoring instead narration as the real conveyor of meaning, a view espoused in the 1970s by American bad-boy historian Hayden White.

True enough in the past some historians referred to "facts, facts, facts - which carry within themselves their lesson and their philosophy" (address of Henri Houssaye at 1900 First International Congress of Historians in Paris), but others, like Frederick Turner 10 years later believed that facts were part of the times and could only be seen as "true" with considerable distance. Carl Becker, in 1958, believed that it is "almost impossible" to distinguish facts from theory, and three years later, English bad-boy historian E.H. Carr wrote that the "facts of history never come to us 'pure' since they do not and cannot exist in a pure form: they are always refracted through the mind of the recorder." Still others, like Paul Conkin and Michael Stanford regarded facts as something like a communal judgment, something a majority of historians agreed upon.

In the 1990s, some historians like Keith Jenkins, viewed facts as "only a description of things that happened, and which, therefore, cannot have an intrinsic meaning." Although there was a phase in which the influence of the "linguistic turn," Roland Barthes and post-structuralists threatened to undermine the legitimacy of the historical exercise altogether, the field seems fragmented today, with no consensus at all, a fact that doesn't seem to faze courts in copyright cases.

Does the Substantial Similarity Analysis Make Sense?

That are a number of axioms in copyright, by which I mean foundational principles. One is that infringement of the reproduction right occurs when there has been unauthorized copying of a material portion of a protected work. There are many different formulations of this principle, sometimes expressed as tests, and the principle is frequently broken down into smaller elements, like access and copying: there must be access to the work, copying from it, and then the copying must be substantial. Sometimes these divisions have importance for things like the use of expert witnesses: such witnesses are permitted generally to establish copying, but are not permitted at the substantial similarity stage. That at least has been the custom since Arnstein v. Porter, although it was breached in Computer Associates v. Altai, which permitted experts at the substantial similarity stage, or at least what purported to be that stage.

Sometimes, substantial similarity gets a confusing double duty, as when it is said there has to be access and substantial similarity. The late Professor Alan Latman proposed "probative similarity" to avoid the confusion inherent in such a formulation: there would be access, probative similarity to establish copying, and substantial similarity for the ultimate infringement. That's something of an improvement, but not a lot. All one really needs are access (since you can't copy something you don't have access to), copying (of anything, even unprotectible material like a phony address), and substantial similarity, this last term being merely a metaphor for the legal conclusion that plaintiff wins because defendant took too much protectible stuff.

The substantial similarity test has also been refined when plaintiff's work has a considerable amount of unprotectible material. Then, instead of comparing the two works from the perspective of the ordinary observer (the copyright equivalent of the reasonable person in general tort law), the "more discerning observer" is used, by which the same trier of fact manages the amazing trick of factoring out unprotectible material while still comparing the protectible elements as a whole. The purpose of this heightened scrutiny is two-fold: to avoid giving the copyright owner indirect control over unprotectible elements, while not ignoring any originality in a unified whole that nevertheless has unprotectible elements.

Having attempted to be a more discerning observer (and, I would like to think with success) in comparing two expensive rugs, I understand theoretically why it should be done, and perhaps how. But, is it really possible and if so how can be validate the exercise? Should such copyright determinations take into account social science research into how people perceive simlarities and dissimilarities? Do people generally perceive similarities more readily or dissimilarities? Are people influenced by how long they look at the items? What if they are told to focus on or not to focus on certain things? Are there some types of similarities/dissimilarities that people perceive more easily than others? And, finally (or first) what does it mean to even say something is "similar"?

Professor Arthur Markman at the University of Texas has been doing very interesting work on similarity and cognition, both through his writings and through his Similarity and Cognition lab. Right now, copyright law exists at the crude level of Potter Stewart's "I know it when I see it." He may have known it, but are the rest of us sure, especially when wearing our more discerning observer goggles? Is it possible to put copyright on an empirically more sound basis or is the Potter Stewart approach good enough for government work, as the saying goes?

Apres Grokster

The cases construing Grokster are beginning to trickle out. One from the Northern District of Illinois, involving the Monotype Corporation and Bitstream, Inc., is interesting because the direct infringement claim was adjudicated on April 21, 2005 (pre-Grokster)(2005 U.S. Dist. LEXIS 7410), while the third party liability claim was adjudicated on July 12, 2005, apres Grokster (276 F. Supp.2d 877). At issue in Monotype was Bitstream's "True Doc" software program, which includes a "Character Shape Recorder" feature. That feature's purpose is to create a file format which, when transmitted with a document, permits the replication of typeface designs in the document regardless of whether the recipient of the document has those designs on his or her computer.

There is no copyright in typeface designs even though they qualify as original works of authorship because Congress, in 1976, chose not to extend protection. (This is found in the House Committee report, so if you refuse to look at legislative history, you'll miss it.). The reason for the exclusion was opposition from book publishers and authors who were concerned about injunctions and damages that might obtain where, unbeknownst to them, a printer used what turned out to be an infringing typeface design. A mandamus action against the Register of Copyrights was rejected by the Fourth Circuit in 1978. (Eltra v. Ringer).

But this doesn't mean that computer programs, like Adobe's, for example, that generate font designs when printing out documents, aren't protectible as a set of statements or instructions; they are, if original. For awhile in 1990 or 1991, the Copyright Office had a policy of requiring registrants of computer programs to disclaim the typeface, but after a real battle in which I and the "liberals" (read everyone other than the then General Counsel) prevailed, the policy was abandoned in favor of an amendment to the Office's regulations which state that "typeface qua typeface" is not protectible. And that gets us to Monotype v. Bitstream, where the claim, at least purportedly, was in the software, not the typeface.

In the April opinion, the court noted that Monotype did not present any evidence that Bitstream's "Character Shape Recorder" copied any of Monotype's programs, but did any of Bitstream's end-users? Monotype pointed to web tutorials; Bitstream claimed these uses were fair uses and that its product had substantial noninfringing uses. First of all, True Doc was used primarily with Bitstream's own fonts and those of others licensed to Bitstream. Monotype pointed to advertising by Bitstream that the program could be used with "any" fonts. Being in the Seventh Circuit, Aimster was the standard employed, and under that standard Judge St. Eve found a genuine issue of material fact on contributory infringement, but none on vicarious liability, which she decided in favor of Bitstream.

Fast forward to July, apres Grokster. The court found no evidence of direct infringement, which could have ended the matter, but Judge St. Eve went on to discuss the contributory infringement claim, relying on a mix of Grokster and Aimster. The number of noninfringing uses were found to vastly outweigh any potential infringing uses, and with an absence of any evidence of encouragement of infringement. Bitstream was found to have made some efforts to reduce potential infringement. End result: no contributory infringement.

Next up, the new Grokster "intentional inducement" theory, as it was described by Judge St. Eve; the theory was found not to apply to the facts because of the lack of any knowledge of any infringement, much less "purposeful, culpable expression and conduct." The advertisements might have qualified, but were construed as referring to Bitstream's own fonts and those of its licensees. Grokster was distinguished as involving a "targeted audience"where defendants took no steps to mitigate infringement and where defendant benefited from the infringement.

Taxonomies, Compilations, and Categorization

The Sixth Circuit has become quite active in copyright cases in the last few years, now and then even issuing good opinions. One is ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 700 (6th Cir. 2005). The case involved a compilation of parts numbers and follows on the heels of Judge Alioto's outstanding en banc opinion in Southco, Inc. . v. Kanebridge Corp., 390 F.3d 276 (3d Cir. 2004).

The part of ATC Distribution Group that interests me is not the compilation issue, but instead the court's review of Judge Easterbrook's opinion in American Dental Association v. Delta Dental Plans Association, 126 F.3d 977 (7th Cir. 1997), in particular Judge Easterbrook's conclusion that the work in question there was not a compilation, but a taxonomy, and as such protected. The ATC Distribution Group panel expressed, understandably, some confusion about the actual basis for the ADA opinion, and for good reason: the holding is mushy on whether the protection was for numbers, the scheme of the numbers, or the descriptors that went along with the numbers, or only all three in combination.

But what bugs me is the trope of calling the work a taxonomy in the first place. The work in ADA (which my dentist let me look at over this last weekend) is a "Code on Dental Procedures and Nomenclature." Note that the copyright owner called the work a code, not a taxonomy. It is used to standardize codes (numbers) submitted for insurance claims, for those fortunate enough to have worthwhile and affordable dental insurance (surely an elite group).

The ADA surveyed all dental procedures and broke them down into twelve service groups and then divided those groups further into subgroups. For example, D2000-D2999 is for "Restorative" services; within that 02110 is "Amalgam - one surface, primary;" 02120 is "Amalgam - two surfaces, primary." The Federal government has made it a standard for submitting claims under a federal insurance act and the Preface to the Code states that there is nothing to interpret; one is to apply the Code as is.

The book as a whole in which the Code appears is clearly protectible, but defendant, which had a competing but very similar code, cleverly submitted just the numbers for registration, which the Copyright Office refused. And that, for me states the issue clearly: the question is not, as Judge Easterbrook stated it, whether a taxonomy is protectible, but rather whether defendant, who copied numbers from a protectible book, committed infringement. The trope (from the Greek "tropos," "turn") is, therefore, seeking to turn the discussion away from the true issue presented by calling the work something else with the intent that we analyze it differently because it has a different name.

But I think Judge Easterbrook even misdefined plaintiff's work. He defined a taxonomy as "a way of describing items in a body of knowledge or practice; it is not a collection or compilation of bits and pieces of 'reality.'" Really? The ADA Code described nothing; it merely listed all existing dental procedures according to a classification scheme, with the sole purpose of putting them in a mutually exclusive and exhaustive series of classes.

"Taxonomy" is derived from the Greek words "taxis" (order) and "nomos" (law). An authoritative study of taxonomies states: "A taxonomy begins empirically, rather than conceptually, with the goal of classifying cases accorded to their measured similarity on observed variables." If we use taxonomy in this sense, it is unclear how authorship, if any, in the ADA's "taxonomy" differs from authorship, if any, in a compilation. Which is why both I and the Sixth Circuit are confused.