Wednesday, December 28, 2005

Justice Rehnquist, Judge Alito, and Section 105

Among the papers released by the National Archives yesterday in connection with Judge Alito's nomination to the Supreme Court is one dealing with an advance on royalties Justice Rehnquist received for his 1986 book, "The Supreme Court, How it Was, How it Is." Here is a link to the memo then Deputy AG Alito wrote.

Aliot assumes that Renhquist worked on the book after hours and without using court personnel to help. Had the contrary been the case, a number of issues would have been raised, including, for copyright purposes, Section 105's ban on protection for "works of the United States Goverment," a term defined in Section 101 as "a work prepared by an officer or employee of the United States Government as part of that person's official duties."

It is highly unlikely Chief Justice Rehnquist's book was done as part of his official duties, but the term has been construed more broadly, as alluded to in the Alito memo. The book was certainly related to Rehnquist's official duties; it is, after all, a history of the very institution he headed. But that is not sufficient to place the work within Section 105.

While there are fortunate souls who have interests outside of their day job and actually follow them, many professionals blur if not eliminate the line between night and day, to invoke the old song. And, given the expertise gathered during the day, as a society, we benefit when such individuals use their off-the-clock time to write about their area of expertise.

The rub comes when government facilities or staff are used, even though the work was created off-hours. Should there be no protection as a penalty, or should other forms of redress be resorted to? In drafting Section 105, Register of Copyrights Abraham Kaminstein favored only some form of small administrative penalty, not loss of copyright.

Moreover, some use of government facilities is not only harmless but should be encouraged, such as use of libraries. And it is hard to say that use of a computer is usurpation of government resources. Photocopy machines are somewhat different, but all employers are aware that employees use them and requiring that employees leave the building and go to a commercial photocopying center is in no one's interest. It is only when other staff or significant resources are used that the issue of a penalty should arise.

Reasonable Attorney's Fees

Section 505 of the Copyright Act permits (but does not require) the award of "reasonable" attorney's fees to the prevailing party (as part of costs). How does the court figure out what is "reasonable" and must there be an evidentiary hearing when reasonableness is disputed? On December 23d, the Second Circuit addressed these questions in a non-copyright (Section 1983 class action) case, Farbotko v. Clinton County (from the link go to "Decisions" and then "Current Month").

Plaintiff had requested fees of $200 and $250 an hour and presented evidence of the prevailing rates within the district. The District Court for the Northern District of New York) awarded attorney's fees at an hourly rate of $175 (and reduced the number of hours by 40% to reflect only partial success). No findings of fact or comment on plaintiff's evidence were made; the court apparently relied solely on the hourly awarded in other cases in the district.

In vacating, the Court of Appeals, per Judge Feinberg, noted that "a reasonable hourly rate is not itself a matter of binding precedent. Rather, ... a reasonable hourly rate is the 'prevailing market rate,' i.e., the rate 'prevailing in the [relevant] community for similar services by lawyers of reasonably comparable skill, experience, and reputation.'" A reasonable hourly rate "is not ordinarily ascertained simply by reference to rates awarded in prior cases." Instead, the court of appeals observed, the inquiry "contemplates a case-specific inquiry into the prevailing market rates for counsel of similar experience and skill to the fee applicant's counsel."

This leads to the question of how one determines that rate. Citing by analogy to a copyright case, Crescent Publishing Group, Inc. v. Playboy Enterprises, 246 F.3d 142, 147 (2d Cir. 2001), Judge Feinberg noted that "while not required in every case, an evidentiary hearing, or at the very least an opportunity to submit evidence, is necessary to determine the propriety of a fee award and the amount of such award if it is evident that the material facts necessary for those determinations are genuinely in dispute and cannot be resolved from the record."

For those of us who practice in the Southern District of New York, I should point out that the court noted that even for the rather straightforward type of 1983 action involved, the prevailing hourly rate in Manhattan is more than twice the rate in the Northern District of New York.

Tuesday, December 27, 2005

Augustine Birrell and Benjamin Kaplan

There have been, since the 17th century, many different types of works written about copyright: partisan petitions to Parliament, copyright treatises, and much later, law review articles and popular books. It is the extended lectures series I want to focus on, though, and two in particular. The first is Augustine Birrell's Seven Lectures on the Law and History of Copyright in Books, a selection from 18 lectures he delivered as a professor of law at University College, London in 1898 and then published as a book in 1899 (The link is to a 1971 reprinting by Fred B. Rothman).

Birrell (1850-1933), is a fascinating figure. He was called to the bar in 1875, and became a Queen’s Counsel in 1885. He was a member of Parliament beginning in 1889, representing West Fife, Scotland, as a Liberal. In the general election of 1900, his party made a strategic mistake by insisting he run from a district in the northeast of Manchester, resulting in his defeat. In 1906, he returned to Parliament, representing North Bristol, and also served as Minister of Education. In January 1907, he was became Chief Secretary of Ireland. That role was fraught with intense controversy, given Home Rule initiatives and tensions raised in the aftermath of World War I. Birrell put forth a number of initiatives, some of which were received well, others not. He was regarded as quite personally charming, but spent most of his time in London, and even when in Ireland, he was accused of “masterly inactivity,” particulary as regards the arming by Irish nationalists, and the events leading to the Easter Uprising that began on April 24, 1916. Birrell resigned right after the rebellion, and retired from public life. See generally Leon O’Brion, The Chief Secretary: Augustine Birrell in Ireland (Chatto & Windos, publishers, London 1969).

Aside from his political career, Birrell is best known not for his copyright lectures (and there is no evidence he had a long-standing or deep professional connection with the field), but for his widely published essays on literature. He was a witty, stylish writer, and his style quickly garnered him a wide audience. His first collection of essays, Obiter Dicta, was self-published in 1884, and much to his surprise went through six printings in the first year; his light touch of humor and irony gave rise to a new word “birrelling.” Of his legal writing, it has been said that his analysis was so clear that “solicitors complained that making the law so intellegible jeopardized their profession.” Among his admirers was Virginia Woolf, who called him a “born writer,” and who in 1930 published a favorable review of his work, “The Essays of Augustine Birrell.” Birell's son, Francis, was a member of the Bloomsbury Group. Birrell’s relationship with the Suffragette movement was much less favorable than his relationship with Woolf: on November 22, 1910, as a minister of the Government, he was attacked by a number of suffragettes, prompting Prime Minister Herbert Asquith to send Winston Churchill a letter requesting that legal action be taken against Birrell’s attackers.

The second lecture series I want to dicuss is Benjamin Kaplan's 1966 Carpentier Lectures at Columbia University, published in 1967 as An Unhurried View of Copyright. Professor Kaplan served as an illustrious professor of law at Harvard University, teaching many distinguished members of the bar, including Justice Breyer, whose views on copyright seem heavily influenced by his former professor. Kaplan later served on the Massachusetts Supreme Judicial Court.

There are currently annual copyright lectures, but these are one-offs, modern day speeches followed by a reception, and rarely of any impact beyond the event, if then (although there have been notable exceptions). The modern audience and perhaps modern lecturer, weaned on television, are not up for multiple nights of solid substance. Birrell and Kaplan's lectures were different, delivered as Professor Lloyd Weinreb has written, when "there was time not to be in a hurry." Both sets of lectures have had enduring influence, although in this country, Birrell is much less known, which is a shame. He is a witty, insightful writer who brought to bear on his subject the practical experience of a barrister and as a member of Parliament. Anyone who wants a clear-eyed look at early English copyright should start with Birrell.

Kaplan's book is well-known in this country but rarely read, in part because it has been out of print, in part because of a fondness of quoting favorite snippets without going through the trouble of reading the whole work. The out-of-print part has now blessedly been cured with the publication of a new edition by LexisNexis/Matthew Bender with the cooperation of the Suffolk University Law School Intellectual Property Law Concentration. Reading the whole work is still left up to the individual and is highly recommended: there has been a lamentable tendency among those favoring what is sometimes described as "thin" copyright to enlist Kaplan in the cause, just as Lord Macaulay's 1841 and 1842 speeches are similarly enlisted for the same purpose by the slightly more historically-inclined. Such snap-shots given a misleading impression of very full-rounded individuals. In Macaulay's case, he was one of the leading authors of his day and supportive of copyright as a system: he was merely opposed to Talfourd's life plus 60 term proposal, and offered a shorter one: life plus 7 years or 42 years from publication. His speeches do contain expressions of what he viewed as the dangers of copyright but always with the recognition that, like democracy, it is the best alternative. Professor Kaplan may have had unease about some of the details, but not about the enterprise.

Reading these works in their full glory should restore them to the position they richly deserve. The reprint of Kaplan's work is with the same pagination as the original, and I pray it is produced by a photocopy-like process because the add-ons to the volume have a number of typos and editorial errors. The add-ons consist of a helpful glossary of terms, names, or cases referred to by Kaplan that might not be familiar to modern readers. Yet, for all their assistance, one encounters entries like this one, for Macaulay: "English historian and writer who proposed a tax on readers in order to give money to authors." This is an embarrassing faux pas: Macaulay was speaking, of course, metaphorically.

There are also a number of "Contributions by Friends," in a kind of appended Festschrift. I confess to a bias against such enterprises. They are rarely insightful about either the target of the Fest and tend heavily to more about the Schrifter. At best, they should be privately printed and distributed. In this case, the description of "Friends" is largely a misdecription: only a few of the contributors knew Kaplan or were students of his. An article about the DMCA appears to have been a recycled earlier effort with no effort at relevance to the task at hand. There are nice pieces by Kaplan's colleagues Arthur Miller and Lloyd Weinreb, and a piece by Roger Zissu of Fross Zelnick in New York City entitled: "Funny is Fair: The Case for According Increased Value to Humor in Copyright Fair Use Analysis," is excellent. Surprisingly, there is no biography of Professor Kaplan, an unfortunate omission. Some may not know he is still alive and active in his 90s. I could have done without an article or two (or more) in favor of some information about Kaplan himself. Maybe even an article that discusses, directly, the influence of his work through judicial opinions or prominent jurists like Justice Breyer; but alas, it is on the whole typical Festschrift fare; Chinese food without the flavor.

Yet, one can still be thankful for the reprinting of such a wonderful work, and I am. Highly recommended!

Thursday, December 22, 2005

The Marx Brothers: Copyright Recidivists

The trademark dispute between the Brothers Warner and Marx has become an iconic example of the little guy winning over the over-reaching corporation and doing so with wit. Here is a link to the first of Groucho's letters (and which also includes links to other sites about the Marx Brothers and other comedy teams). The tiff involved the Marx Brothers' "Night in Casablanca" and Warners' "Casablanca."

The Marx Brothers were sued a number of times for copyright infringement, once under a criminal count. That case, Marx Brothers v. United States, 96 F.2d 204 (9th Cir. 1938), involved infringing and aiding and abetting the infringement of a radio script by Garrett and Carol Graham ("The Hollywood Adventures of Mr. Dibble and Mr. Dabble"). The Marx Brothers had met with the Grahams, and expressed an interest in the script; changes were made at the Marx Brothers' request. The Marx Brothers testified that they subsequently forgot about the work and that when the copyright owner's "gag man" (one Boasberg) gave them the script to use on the radio, they assumed he was the author. A jury convicted them. One unique feature of the case is that it highlighted a flaw in the 1909 Act: the failure to specify the term of protection for unpublished registered with the Copyright Office under Section 12. The Ninth Circuit read into the act the term for published works (28+28), measured from the date of registration.

In the same year, in a civil case, Clancy v. MGM, 37 USPQ 406 (S.D.N.Y. 1938), plaintiff's play "Nuts to You" was not found substantially similar to the boys' "A Day at the Races," even though both works had in common a veterinarian who runs a sanitarium and owns a race horse: no dialogue or other plot elements were taken, however.

A Day at the Races was, however, found by a jury to have infringed a scenario called "High Fever," a judgment upheld the following year in a California state court, Barsha v. MGM, 32 Cal. App.2d 566. The appellate opinion contains a lengthy list of alleged similarities, which were found sufficient to uphold the jury's finding.

Wednesday, December 21, 2005

Early Musical Borrowing

In the 2 Live Crew case, the Supreme Court made a distinction between parody and satire. Because parody targets the original, it has a need, under fair use, to at least conjure up its target. Satire, defined as a broader, more socially, culturally, or politically-oriented spoof, was felt to not have the same need given that it is not directing its sole attention to a particular work. Satires are not precluded from fair use, but seemingly don't enjoy an initial leg-up that parodies have. There are other terms to connote a degree of appropriation from other works, but without a critical purpose. One such term is "imitation."

Lisa Pon explores imitation in Renaissance prints in her excellent 2004 book "Raphael, Durer, and Marcantonio Raimondi: Copying and the Italian Renaissance Print." The origins of parody also lie in imitation, and originally the term did not connote criticism or even merriment. This topic is explored in another 2004 book called "Early Musical Borrowing" edited by the improbably named "Honey" Meconi and for the very steep price of $95.

As a music major, I immersed myself in the music of the Renaissance Netherlands composers (like Ockeghem) as well as Italians like Palestrina, and Josquin de Prez, all of whom wrote dozens of "parody masses," masses that used secular music as an integral part of the polyphony. There were also cantus firmus and paraphrase masses that were also built on others' works. The borrowing was right up front, in the titles like "L'Homme arme" and Tavener's "Western Wind" mass. As Professor Meconi notes, "Borrowing is probably almost as old as music itself, and Western notated music is replete with examples from every time period."

Given this rich history, what is unusual is the underlying thesis of Professor Meconi's collection that "major questions" have arisen about "what constitutes borrowing, how we define the different types in use, what we call them, and why and how composers borrowed what they did. These topics have been the subject of a fierce and impassioned debate; this is not a field for the faint of heart."

Oddly, that makes me feel better when we mere lawyers try to sort out fair use according to labels: we're not alone in difficulties.

Tuesday, December 20, 2005

Fair Use: The Source Copy

Should the fair use analysis be affected by whether the source from which the copy is made is authorized? The issue is a recurring one, and has taken on increased importance in the digital environment, but remains unsettled. In Time, Inc. v. Bernard Geis & Associates, 293 F. Supp. 130, 146 (S.D.N.Y. 1968), surreptious copies of stills from the Zapruder films of the John Kennedy assassination were made. While this troubled the court, the fact that defendant could have obtained the copies by other means was viewed as significant. This was particularly instructive since the court had earlier said that fair use "presupposes good faith and fair dealing," something that was entire absent in the case itself. By contrast, in Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832, 843 (Fed. Cir. 1992), the Federal Circuit took a harsh line on copying from unauthorized copies.

In Harper & Row, Publishers v. Nation Enterprises, 471 U.S. 539 (1985), defendant had knowing, unauthorized access to a temporarily "purloined" manuscript copy of Gerald Ford's then unpublished memoirs. Unlike in the Time-Geis case, unauthorized access was the only way to get access to the work "at the time." Before the district court, the purloined nature of the copy went into the mix of finding no fair use. Before the Supreme Court, the majority was also disturbed by the knowing copying from a purloined manuscript, while the dissent regarded it as a standard journalistic practice. These two views are not necessarily in conflict, but the key to Harper & Row is the fact that the work was intercepted on the way to being published: there was no effort by the copyright owner to suppress information.

The issue of the source of the source copy also takes place as part of a larger debate over the role, if any, of good faith in fair use analyses. Judge Pierre Leval of the Second Circuit, in his legendary 1990 Harvard Law review article, "Toward a Fair Use Standard," 103 Harv. L. Rev. 1105, 1126-1128, argues strongly against good faith being a factor. In NXIVM Corp. v. Ross Institute, 364 F.3d 471 (2d Cir. 2004), also involving unauthorized access to a manuscript, citing Harper & Row and my 1995 fair use treatise, Chief Judge John Walker, writing for the panel majority, held that district courts should consider whether bad faith is present in defendant's acts, but declined to follow the Federal Circuit's tough line, and noted that "even if the bad faith subfactor weights in plaintiff's favor, the first factor still favors defendant in light of the transformative nature of the secondary use as criticism." This seems right on target. Judge Jacobs, concurring, thought that "[b]ad faith is a slippery concept in the copyright context...," and noted that the purpose of the use in that case was to criticize plaintiff's work as "the pretentious nonsense of a cult."

One question in all good or bad faith determinations is good or bad faith as to what? What is the conduct that we wish to encourage or discourage?

Monday, December 19, 2005

Choreographers, Copyright, and Wine

In a recent email from a choreographer who operates the blog, an interesting example of the confluence of copyright and right of publicity is raised. On the site, there is reference to a dispute involving a choreographer whose picture was taken by a dance photographer. The photograph was then used as the basis for a painting which became the label for an expensive wine. When the dancer contacted the photographer, she was supposedly told that because the painter was inspired by, and not copying her image directly, and in another format, no payment to her was required.

On May 9th, I did a blog on the Seventh Circuit's Toney opinion, where a model able to prevail under a state right of publicity claim, with the panel reversing an earlier ruling that the Copyright Act preempted such claims. The twist in the choreographer/wine case is not in preemption, but in the degree to which right of publicity claims may be influenced by copyright principles, in particular transformative use. One might think that the two types of protection wouldn't influence each other, but in the well-known case of Comedy III Productions, Inc. v. Saderup, 25 Cal. 4th 387 (Cal. 2001), the California Supreme Court reconciled First Amendment concerns in the creation of art using individuals' images (there the Three Stooges) with publicity rights by incorporating the copyright transformative use concept, writing "when a work contains significant transformative elements, it is also less likely to interfere with the economic interest protected by the right of publicity." 25 Cal. 4th at 405.

Comedy III was followed in 2003 by Edgar Winter v. DC Comics, 30 Cal. 4th 881 (Cal. 2003), letting DC off the hook for a miniseries featuring two singing cowboys that were "less than subtle invocations of Winter and others. The court stated a test of asking "whether the celebrity likeness is one of the 'raw materials' from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question." 30 Cal. 4th at 888.

I don't know more about the facts in the choreographer-wine case, whether she is a protected under the relevant publicity statute, but the California Supreme Court provides one mode of analysis.

Friday, December 16, 2005

Glass Blowers Fight it Out

Here is a link to a story about an interesting suit going on in Seattle, a rare suit by one glass-blower against a former employee. The case is at an odd stage, since plaintiff does not appear to have identified which works are infringed, something that might lead to wonder if protection is being sought for style, concepts or ideas. There are, however, anecdotes in the article about verbatim copying. Still, originality itself is still required, and in the Ninth Circuit, there is precedent, referred to (although not by name) that took a dim view of the field. That case is Satava v. Lowry, a 1993 opinion involving a glass sculpture of a jelly fish (the link to this version of the opinion helpfully has a picture of the sculpture). As in the Washington case, there was testimony about confusing defendant's work for plaintiff's. But the Ninth Circuit found that plaintiff's selection and combination of elements were unoriginal. The same argument will no doubt be made in Washington.

Thursday, December 15, 2005

Legislative Drafting Gaffes

While the mounting of legislative initiatives frequently takes a long time, sometimes spanning years, the execution can be brutally swift. Haste makes waste and mistakes. The reason for the haste is the simple reality that most copyright legislation is passed in the very last minutes of a Congress, much like most labor deals struck right before a threatened strike, or court house steps settlements. The 1909 Copyright Act was rushed to and signed by Teddy Roosevelt only five minutes before his term expired (in those days in March). Many times last minute changes are made on the floor, under extreme pressure and lack of sleep. I will give a few examples of errors that have occurred.

In the 1831 Copyright Act, Congressman William Ellsworth, Noah Webster's son-in-law, was pushing for term extension, increasing the original term of protection from 14 years to 28 years, with the renewal period remaining at 14 years. The bill, at Webster's request, also granted the increased original term for works first published before 1831. Ellsworth ran into opposition, and the 72 year old Webster decided to come down to the Capitol from his Connecticut home and lobby personally for passage. On the way, he became ill, but recovered and gave grand speeches that had the desired effect. His illness and advanced age, however made Ellsworth wonder what would happen if Webster died before the Act was passed. Under the 1790 Act, if the author died during the first term, the work went into the public domain at the end of that term even though there were surviving heirs. Ellsworth's new bill took care of that problem for new works, but not for old works. So, at the last minute, on the floor, he changed the bill to provide that if an author of a work covered under the old statute died during the first term, the copyright would not be placed in the public domain and would also enjoy the new 28 year term. But by drafting in haste, he made an error: the renewal term was granted only to the heirs, not to the author even though when the author lived. This is was a problem that effected only a small group of authors, and even though Webster later discovered the error, it was never fixed.

The 1909 Act, despite being drafted over a period of three years, was full of inconsistencies. The late and very great Judge Henry Friendly of the Second Circuit (among whose former clerks are Chief Justice John Roberts, Chief Judge of the First Circuit Michael Boudin and Judge Pierre Leval of the Second Circuit was particularly critical of it, writing in Rohauer v. Killiam Shows, Inc., 551 F.2d 484,486 (2d Cir. 1977)(Friendly, J): “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,” and in The Gap in Lawmaking-Judges Who Can’t and Legislators Who Won’t, reproduced in Benchmarks 41, 48 (1967): “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.” One gap was the lack of a public performance right for motion pictures, the only way they were exploited then, and despite an amendment in 1912. The courts "cured" this omission by considering that a copy was made.

More recent errors include a wrong effective date for Section 104A, and two Section 512s. In one piece of legislation I was involved in, House Legislative Counsel gave to the floor the wrong version of a bill that amended parts of the statute that didn't exist anymore. It was too late to fix it, and the Senate passed it knowing of the error. It was fixed the next year.

Wednesday, December 14, 2005

Does Ideology Matter in Copyright?

Oren Bracha is a law professor at the University of Texas Law School, an Israeli who clerked for the famous Israeli Supreme Court Justice אהרן ברק (Aharon Barak). He recently completed an SJD dissertation at Harvard, called "Owning Ideas: The History of Anglo-American Intellectual Property," a thorough analysis of early British and American copyright legislation that takes a welcome positive law approach to the origins of copyright. The other day, Professor Bracha sent me a 131 page draft of an article called "The Ideology of Authorship Revisited." Like his SJD dissertation, it is a thorough look at issues that have been pored over by many others, but never as freshly or as innovatively.

It is, of course, impossible to review or encapsulate a 131 page scholarly work in a blog, so I won't even try; indeed, I am only beginning to process superficially the issues Professor Bracha has so carefully analyzed. Instead, I want to question whether there is an ideology of copyright in a functional sense.

By "functional" Professor Bracha means "a methodological approach under which law is understood to be a mere function of 'other' social developments. In our case, the social developments are the ideology of authorship, assumed to emerge 'outside' of the legal field. The law, in turn, is conceived of as changing and assuming forms that reflect or are determined by those ideological developments happening 'elsewhere.'" Professor Bracha's article is about the ideology of authorship, with authorship standing in to some, and perhaps, a very large extent, for all of copyright. Hence, he asserts: "Copyright law is the ideology of authorship not just because that ideology was developed and elaborated within it, rather than the law being reflective of social developments that happened elsewhere." Part of this is based on a belief that copyright underwent a metamorphosis during the 19th century.

As a self-professed non-ideologue (accurately or not), I do not dispute that others have developed healthy ideologies of copyright. What I do question is whether those ideologies have ever had any impact, at least of the kind that can be empirically demonstrated. For starters, I don't see any big transformation in copyright law in the 19th century, if by transformation we mean a fundamental change from one thing to another. That includes how authorship was viewed, as well as what constituted infringement and the rights granted. Fair use, for example, developed gradually and not as part of an Athena-like doctrine, along with fair abridgment, the latter being legislatively eliminated in the U.S. not until 1909.

What did occur in the 19th century was an increase in rhetoric about authorship and originality, usually employed in furtherance of lobbying for increased term of protection, as in the 1842 British Talfourd Act. But to assume that rhetoric employed for lobbying has an actual impact on the ideological make-up of the law needs a lot of empirical work that has not been done or at least published. Let me give a few examples of how hard it can be to make positive law when you do have an ideology. When I worked for the U.S. House of Representatives IP subcommittee, the chair, William Hughes, and his staff had a clear ideology of wanting to rely on the free market and of having no formalities. To that end, we tried to eliminate compulsory licenses - directly through repeal of the cable compulsory license and the Section 115 mechanical compulsory license, and a number of formalities. While there were isolated successes (automatic renewal) we otherwise failed miserably.

Some companies, like Disney had grown comfortable with the cable compulsory license and the broadcasters, who previously were its biggest critics, suddenly changed course 180% because of their efforts to obtain retransmission consent. In connection with the efforts to obtain a public performance right for sound recordings, we got record companies to agree to the repeal of Section 115, only to have music publishers, who were its biggest critics balk, in part because record companies had agreed to repeal. There are now more and more complicated compulsory licenses than ever.

As for formalities, well, we eliminated some in 1988 when we joined the Berne Convention, only to turn around two years later in VARA and impose formalities on the exercise of moral rights, a breathtaking incongruence if there ever was one. Did Berne adherence signal an end to the ideology of non-formalities? I doubt it. And, when we tried to eliminate the Section 412 formality, we ran in to vicious opposition from book publishers, who had also previously been a critic of that section.

One of the harsh lessons I learned in working for Congress was that exposing a past inconsistent position (and I have given examples of three above), mattered not at all. Members of Congress could care less what someone said in the past, because they themselves didn't want to be bound by what they had said in the past. All that matters is the reality on the ground now.

I doubt things were so different with legislatures in the past, but would be thrilled to be wrong. Until then, though, to me ideology is rhetoric not reality.

Monday, December 12, 2005

Winnie the Pooh 2

In an earlier posting, I discussed a case of first impression involving grants made by Winnie the Pooh author Alan Alexander Milne, a re-grant made after his death by his son Christopher Robin, and an attempted termination by grand daughter Clare under the CTEA extended 20 year period. The district court had ruled that the re-grant was not a prohibited "agreement to the contrary," and on December 8th, the Ninth Circuit affirmed.

I refer readers back to the earlier posting for the details of the dispute, and simply note that the dispute at bottom turns on whether parties who have entered into a contract transferring rights can choose to enter into a new contract, a purpose of which is to preclude termination. In Milne, this new contract occurred during the period when termination could have been effectuated, so it is hard to say that the heirs (or estate) was being strong-armed: if they didn't like the new contract being offered they could have terminated then.

The Ninth Circuit was quite dismissive of Clare's arguments, including that the second agreement was an agreement to the contrary, and of the "proverbial parade of horrors" trotted out by Milne's grandaughter, whose own father had signed the second agreement and who benefitted under it. The court was even more dismissive of Mel Nimmer's "moment of freedom" argument, which asserts that there has to be a moment under which no contract exists:

"Clare's sole support for her position is found in a treatise authored by the late-Professor Melville Nimmer. In his treatise, Professor Nimmer expressed his assumption that this subsection - which on its face applies only to the statutory termination of a prior copyright grant - is intended to benefit authors and should therefore be extended to prohibit a simultaneous contractual termination and re-grant of copyright rights. ... Clare's counsel, however, conceded at oral argument that no source of primary authority has endorsed this assumption. We too decline to do so."

The court delicately didn't mention that Mel had been retained earlier by the other side and had given them an opinion that the transaction was not an agreement to the contrary, nor that Clare's counsel was David Nimmer. Writing treatises can be inconvenient.

Sunday, December 11, 2005

BMG v. Cecilia Gonzalez

On Friday, a panel of the Seventh Circuit issued a very important opinion, per Judge Easterbrook, in BMG Music et al v. Cecilia Gonzalez. Here is a link to the oral argument.The case involved a consumer who, using KaZaA, downloaded more than 1,370 songs over the course of a few weeks after getting high-speed Internet access. Thirty of these songs formed the basis for a successful summary judgment motion (although Judge Easterbrook ignored that limitation and held that "all of the 1,000+ of her downloads violated the statute").

The end result was a finding of infringement and an award of $22,500 in statutory damages, calculated at the minimum of $750 per work. On this award, the court of appeals agreed with the district court that there is no right to a jury under Feltner provided only minimum damages are sought; that makes sense: there is no discretion or fact finding involved (once the court, as happened here, rejects the reduction down to $200 permitted by Section 504(c)(2)).

The opinion is significant in many respects. First, it established primary liability for those who download (at least under similar facts), an essential underpinning to all the previous (and presumably future) third party liability suits. The opinion then discusses what constitutes primary liability.

Defendant's argument was that she was just previewing songs, "sampling music to determine what she liked enough to buy at retail," and therefore her use was a fair use. She did not, however, erase the 30 songs in question and had not bought an authorized copy of them. On this basis and the fact that the works involved in Sony were transmitted as part of a free, over-the-air broadcast, the court of appeals rejected any analogy to Sony timeshifting. No attempt was made in the opinion to determine how long one might keep a copy for preview, although arguably the answer is that one cannot make such a copy at all, which may explain why no attempt was made.

The court then went on to discuss Internet radio and iTunes, noting that had Gonzales copied from a licensed stream, copyright owners would have received a royalty from the broadcasters. This part of the opinion is ambiguous: does it suggest that had she copied the same 30 songs and kept them as she did, that would have been OK because the stream was licensed, or is it further evdience of harm to the market? The industry's brief is not ambiguous: there is no fair use preview or any fair use for home copying, at least using a system like KaZaA.

The court also referred to "teasers" - 30 second samples on sites like, which it said was licensed. These may be licensed, but is that determinative of the issue? If a book publisher licenses excerpts for abstracts, does that alone kill fair use? What if one did make a "preview" copy from such a site? Would that be OK because the copyright owner was getting paid, or would it be not OK because the copyright owner was getting paid?

The court's opinion also glides over a number of nuances in Aimster and in one passage misstates UMG Recordings, Inc. v., 92 F. Supp.2d 349 (S.D.N.Y. 2000), saying that that opinion held "downloads are not fair use even if the downloader already owns one purchased copy." didn't involve downloading at all: bought lawfully made CDs, copied them on to its servers and through a verification process permitted consumers who had also purchased lawfully made copies to space-shift stream the CD. Judge Posner has criticized, and had Judge Easterbrook accurately understood the facts, one wonders whether, under some of the language in the BMG opinion, he would have come out the other way too, at least with respect to the consumer. (Recall was a suit against, not consumers, and over the server copy).

In any event, the BMG opinion is a huge win for the industry.

Thursday, December 08, 2005

War, The Public Domain and Chris Meyer

The posting from two days ago on the Confederacy had an issue I wanted to save for this one, namely, the concept of the public domain arising out of war. In the Goetzel opinion discussed in that blog, a Confederate court in Mobile Alabama found that a book on military tactics created and published in the North and in the public domain before the Civil War was in the public domain in the Confederacy, despite the issuance of a Confederate copyright registration. The court wrote: "I do not think the formation of the Government of the Confederate States, diminished or affected the rights of the public or increased those of General Hardee in this respect," and that "The publication of the Philadelphia edition of 1855 was made when this country was part of the United States. It was then a publication in this country, and it was as much to the public in Virginia or Alabama as the public of Pennsylvania."

The status of Southern authors in the North during the War was unaffected at one level: because Southerners were regarded as "rebellious citizens" rather than as "enemy aliens," their works were still protected in the North if they complied with formalities applicable to all authors. That was, as a practical matter, impossible. Russell Sanjek wrote that after the War was over a number of Southern authors "re-copyrighted" their works with the Library of Congress, but I don't know exactly how that could be done.

During World War I, compliance with formalities by foreign authors was also very difficult. In 1919, President Wilson signed legislation granting retroactive protection, provided the foreign country did the same for U.S. authors, and provided that within 15 months of March 3, 1921, the foreign author complied with the requisite formalities, Act of Dec. 18, 1919, P.L. No. 66-102, 66th Cong., 2st Sess., 41 Stat. 368.

There was something else that occurred in World War I, and that was the establishment of an Office of the Alien Property Custodian, abolished in 1934, but resurrected for World War II. Legislation permitted this office to seize title to the intellectual property of enemy authors. The office was very active during WWII. By fiscal year 1944, 185, 102 titles had been indexed, with 146,690 titles waiting to be indexed. The records are in the Copyright Office. Among the works title to which was seized were Puccini operas, films like the Blue Angel, and Mein Kampf, along with over 700 scientific books and 3,200 periodicals.

At the end of WWII, the War Claims Act of 1948 was passed, providing, among other things, for the satisfaction of U.S. War Claims from the funds obtained from the sale or licensing of seized intellectual property. At the same time, in many cases title to copyright was returned to the rightful foreign author or his or her heirs. That leads to the late Chris Meyer and the 1994 GATT implementing legislation. When I met Chris, he was an attorney in the Copyright Office; he subsequently left and went to the PTO's Office of Legislation. Chris was one of a number of truly outstanding public servants and brilliant copyright scholars in a Copyright Office known for brilliance. Another was the late Lewis Flacks, long the Office's international specialist, an eccentric's eccentric and a national treasure.

When I was counsel to the House IP subcommittee, Chris was still at the PTO and in 1994, he lobbied us for this exception to restored copyrights, contained in 17 USC 104A(a)(2), precluding restored copyright in "Any work in which the copyright was ever owned or administered by the Alien Property Custodian and in which the restored copyright would be owned by a government or instrumentality thereof... ."

I italicized "and" because Chris's concern was not with works created by individuals, but with those that the governments of Germany and Japan might claim ownership in, and might want to use that ownership to suppress dissemination of the work. That same concern is what led to Section 201(e) of the 1976 Act with the Soviet Union's joining the Universal Copyright Convention. Many voiced concerns over the Soviet issue, but there were few who were aware of the Alien Custodian Office and Chris was one of those few: a rare, wonderful man, whom I miss.

Sunday, December 04, 2005

Copyright, the Confederacy and Bulwer-Lytton

Victorian novelist and politician Edward George Earl Bulwer-Lytton (1803-1873) has inspired, dubiously, an annual contest, found at this link. The goal of the contest is to recognize the worst opening sentences to imaginary novels. Although best known for "The Last Days of Pompeii" (1834), which has been made into a movie three times, originating the expression "the pen is mightier than the sword," and phrases like "the great unwashed" and "the almighty dollar," as well as writing the novel that served as the libretto for Wagner's opera "Rienzi," Bulwer-Lytton's reputation now rests on the opening of novel Paul Clifford (1830):

It was a dark and stormy night; the rain fell in torrents--except at occasional intervals, when it was checked by a violent gust of wind which swept up the streets (for it is in London that our scene lies), rattling along the housetops, and fiercely agitating the scanty flame of the lamps that struggled against the darkness."

Here is the winner of the 2005 contest:

As he stared at her ample bosom, he daydreamed of the dual Stromberg carburetors in his vintage Triumph Spitfire, highly functional yet pleasingly formed, perched prominently on top of the intake manifold, aching for experienced hands, the small knurled caps of the oil dampeners begging to be inspected and adjusted as described in chapter seven of the shop manual.
Dan McKayFargo, ND

The competition website notes that the entry "extol[s] a subject that has engaged poets for millennia, [and] may have been inspired by Roxie Hart of the musical "Chicago." Complaining of her husband's ineptitude in the boudoir, Roxie laments, "Amos was . . . zero. I mean, he made love to me like he was fixing a carburetor or something."

Bulwyer-Lytton also inspired some unusual copyright initiatives, as related in a book published at the end of November by Professor Melissa Homestead, American Women Authors and Literary Property, 1822-1869. Many of the details of copyright in the Confederacy have been known, but Professor Homestead adds some nice touches. Previously known, for example, is an infringement opinion published by the Copyright Office's reported series of cases, Goetzel v. Titcomb, 14 Copyright Office Decisions, 1789-1909 (C.S.D. Mobile, Alabama 1863). That case involved "Hardee's Rifle and Military Tactics," by General William J. Hardee. Hardee, a graduate of West Point, had created the work with funding from the U.S. Congress which did not assert a claim in the work, although it was published in Philadelphia by a private publisher, in 1855. With secession, Hardee, a Georgian, joined the Confederacy, and revised the manual at Jefferson Davis' request. When Southern publisher S.H. Goetzel, Hardee's assignee, sued a rival publisher who reprinted the Philadelphia edition, the court refused to enjoin it, on the ground that the work was in the public domain in the Confederacy.

Where does Bulwer-Lytton fit into this? On March 11, 1861 (following by four days adoption of the Confederacy's Constitution, which contained a direct copy of the Union's Article I, sec. 8, clause 8), the Confederate Congress passed a resolution urging its diplomats to encourage Britain, France, and the German states to enter into reciprocal copyright relations with the South. Britain was of particular interest, given the large market it represented for cotton, and the widespread dissatisfaction felt by English authors such as Dickens over the lack of copyright protection in the U.S. (Protection did not come until 1891). The South would show it was different and protect, on a reciprocal basis, foreign authors.

The first Confederate copyright act, passed on May 21, 1861, contained a reciprocal rights provision. (An April 1863 amendment and a private act took care of Goetzel's problem). But Goetzel announced prominently in newspaper advertisements that he would voluntarily pay Bulwer-Lytton royalties. Much to his surprise, Bulwer-Lytton, perhaps in recognition of the larger Yankee market, subsequently announced that he had not received royalties from Goetzel, but had received handsome royalties from his New York publisher, Harper & Co.

The South's effort's at copyright foreign diplomacy failed, but not for lack of trying, and 30 years before the U.S. Congress got around to it. Even then protection was based on a punitive domestic manufacturing requirement that lingered like an almost terminal illness until 1986.

Bulwer-Lytton had earlier been involved directly with copyright, lobbying for passage, in 1833, of the U.K. statute (3&4 Will. 4, ch. 15), granting for the first time dramatic rights. Professor Laurence Tribe and Michael Dorf have written that Bulwyer-Lytton convinced Dickens to change the ending of "Great Expectations." According to them, Dickens originally planned to have Pip's love for Estrella remain unrequited. On Bulwer-Lytton's advice, "Dickens changed the ending, uniting the hero and his love," Laurence Tribe and Michael Dorf, Levels of Generality in the Definition of Rights, 57 U. Chi. L. Rev. 1057, 1072 (1990). Bulwyer-Lytton's reputation remains, of course, as a parody, awash in ample bosoms and Stromberg carburetors.

Thursday, December 01, 2005

Bootlegs and New Pony Records

As we await the Second Circuit's decision in the Martignon case, I participated in a Fordham panel on bootlegs, along with Martignon's lawyer. A few days ago, I received the following link to a new site:

Here's a description of what the site is about:

New Pony Records is Fan-based
We’re tape, disc and file traders, authors, scholars, collectors, and even some lawyers, who have spent decades collecting and sharing the music we love. We’ve amassed literally thousands of recordings, indexing and preserving them for posterity. We’ve applauded each installment of Sony’s Bootleg Series as it brings a sampling of this huge catalog of unreleased Dylan recordings to a wider public. And we applaud each new unauthorized recording as it circulates within the trading community. We have no formal connections to Sony, Dylan, or the commercial bootleggers. We’re simply interested in seeing these recordings reach the broader audience we believe they richly deserve. To us, it’s all about the music and our right to listen to it.
New Pony Records is a Not-For-Profit Record Company
We see the mass market record industry and the commercial bootleggers as obstacles to broad public availability of these recordings. The record industry, through its trade associations, has sought to criminalize any access to recordings which do not maximize their bottom line. The commercial bootleggers, exploiting the lack of transparency among unreleased recordings, charge exorbitant prices for recordings of highly variable quality. We’re articulating an alternative to the major labels and commercial bootleggers; an alternative that sincerely strives to accommodate the competing interests of artist, distributor, and fans alike. We’re asking Dylan and Sony to grant us a license to distribute the best of Dylan’s unreleased live recordings. We’re offering to pay Dylan a royalty on every recording sold. We’re restricting distribution to web-based mail order so we don’t get in the way of Sony’s mass market official catalog. We’re creating a one-stop website which can unify and clarify the vast and jumbled market in these recordings, assuring fans they’ll know what they’re getting and can trust it reflects the best of what’s available. And we’re a non-profit corporation, required, by law, to retain earnings for the purposes of the corporation and not for the profits of any shareholders.
New Pony Records Challenges Copyright Laws Which No Longer Serve the Public Interest.
We’re talking about recordings of live paid public performances. Dylan and his band have been paid once through ticket sales for these performances and we’re offering to pay Dylan a second time to license the recordings. We’ve watched copyright restrictions expanded in recent years to criminalize the unauthorized recording and distribution of performances such as these. Strict compliance with the law means these live performances are lost to the ages, an ironic twist on the avowed purpose of copyright law: To promote broad availability of copyrighted works by granting the copyright holder a distribution monopoly for a limited period of time.
What meaningful basis can there be for restricting access to these performances once they have been paid for through concert ticket sales? Contrary to the insidious arguments of the industry, copyright is not a property right, but a limited-term exclusive right to distribute recordings in an effort to hasten broader availability. How ironic to see copyright extended just as the means of distribution have been liberated by the digital revolution. How absurd to find the “Information Age” marked by laws undermining, even rolling back, the public domain. When did the economic interests of record distributors become more important than our freedom to hear and listen to what we want? This is great music which speaks to — and ultimately belongs to — the ages. How can it reach those future generations if copyright law can be used to prevent it being recorded, punish distribution, threaten possession, and stifle discussion?
So here we are, offering an alternative which honors both the free market and the public interest copyright law was meant to protect. We’ve chosen Bob Dylan because his performances are worth the fight. His management team has shown a deep understanding of the struggle between art and commerce and chosen integrity throughout. His fans -— now and in future generations — deserve the opportunity to hear his music because, like all music, once it reaches our ears it’s no longer only his.

Any predictions on how long the site is available?