Grokster Remand Opinion

The difference a Supreme Court opinion can make, even on how one views the facts, is seen in Judge Wilson's Wednesday opinion ( link here) in the Grokster case (now the StreamCast case given the settlement with Grokster). The facts sure felt a lot different in his 2003 opinion (259 F. Supp.2d 1029), not that they changed of course in the intervening three years. And it is the facts that are the driver in the new opinion. Of the opinion's 60 pages, 25 are devoted to evidentiary issues. Emails supplied the majority of the documents offered into evidence. The discovery process that leads to such evidence is very expensive, and while one may focus in the future on the court's legal analysis, overlooking the factual component would be a mistake: it was the email trail on which Judge Wilson hung liability under the new inducement theory. This is not to say the legal analysis is unimportant; it is, and it confirms my fear about Grokster's killing off of Sony, footnote 12 notwithstanding. There is also 10 pages of discussion on a misuse defense. In my opinion, the misuse defense in Grokster was frivolous, as sympathetic as I am to the double-dipping streaming argument.

On to the legal analysis. The most important thing to note is that the only basis for liability discussed is inducement: no contributory infringement, no staple article of commerce. I have had many discussions with friends about whether Grokster did create a new third theory of liability, separate from the inducement prong of classic copyright contributory infringement. I have taken the position it did and further that it did so deliberately to kill off Sony. Content owners have, I believe, seen it this way, and Wednesday's opinion shows I was right. Who would have thought even at the oral argument before the Supreme Court in Grokster that on remand (if there was one) that the staple article of commerce doctrine would have no role to play? Wasn't the whole point of the appeal to the Supreme Court to get the Court to set out rules for applying the doctrine for the Internet? Instead, the Court provided content owners with a way to avoid the staple article of commerce defense entirely. Here's why I say this.

The classic formulation of contributory liability in copyright cases, pre-dating Sony is: "[O]ne who with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer," Gershwin Publishing Corp. v. Columbia Artists Mgt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). By contrast, the new inducement theory, derived from Section 271(b) of the Patent Act focuses on defendant’s intent, and not on its knowledge of others’ direct infringement:

"Sony’s rule limits imputing culpable intent as a matter of law from the characteristic or uses of a distributed product. But nothing in Sony requires courts to ignore evidence of intent if there is such evidence, and the case was never meant to foreclose rules of fault-based liability derived from the common law.FN10 …Thus, where evidence goes beyond a product's characteristics or the knowledge that it may be put to infringing uses, and shows statements or actions directed to promoting infringement, Sony's staple-article rule will not preclude liability.

FN10. Nor does the Patent Act's exemption from liability for those who distribute a staple article of commerce, 35 U.S.C.A. § 271(c), extend to those who induce patent infringement, §271(b)."

Justice Ginsburg’s concurring opinion in Grokster discretely points what the majority did not state directly (although footnote 10 states the conclusion), namely that the purpose of the new inducement theory was to jettison Sony’s staple article of commerce doctrine:

"At bottom, however labeled, the question in this case is whether Grokster and StreamCast are liable for the direct infringing acts of others. Liability under our jurisprudence may be predicated on actively encouraging (or inducing) infringement through specific acts (as the Court's opinion develops) or on distributing a product distributees use to infringe copyrights, if the product is not capable of 'substantial' or 'commercially significant' noninfringing uses. Sony, 464 U.S., at 442 … While the two categories overlap, they capture different culpable behavior. Long coexisting, both are now codified in patent law. Compare 35 U.S.C.A. § 271(b) (active inducement liability), with § 271(c) (contributory liability for distribution of a product not "suitable for substantial noninfringing use").

What Justice Ginsburg is pointing out in her usual, quiet manner, is that Sony does not apply to the new inducement theory, footnote 12 notwithstanding. Inducement is based on 35 US.C. Section 271(b); the staple article of commerce defense only applies to contributory infringement claims under Section 271(c). Content owners are free to rely solely on inducement, in which case staple article of commerce is irrelevant, and that is exactly what happened in the remand opinion.

Inducement, though, is as it turns out a fairly watered down threshold. It is more like intent. This is seen in footnote 13 of the Supreme Court's opinion (notice how all the juicy parts of the opinion are the footnotes: 10, 12, 13):

"It is not only that encouraging a particular consumer to infringe a copyright can give rise to secondary liability for the infringement that results. Inducement liability goes beyond that, and the distribution of a product can itself give rise to liability where evidence shows that the distributor intended and encouraged the product to be used to infringe. In such a case, the culpable act is not merely the encouragement of infringement but also the distribution of the tool intended for infringing use."

And this is where the facts killed StreamCast, with Judge Wilson holding that "Plaintiffs need not prove that StreamCast undertook specific actions, beyond product distribution, that caused specific axcts of infringement. Instead, Plaintiffs need prove only that StreamCast distributed the product with the intent to encourage infringement."

The new theory of liability might, therefore, more properly be called intent to encourage infringement, and not inducement to infringe. I don't shed crocodile tears over StreamCast itself, and maybe all cases are nothing more than a decision on the facts, but there is, I believe, cause to worry about the killing off of Sony and its replacement with such a loose standard.

Can a Minor Be Sued For Infringement?

Now that Judge Wilson has ruled against Morpheus (more on this tomorrow after I digest the 60 page opinion), will content owners increase suits against individuals, maybe even minors, and if they do, can a minor be sued for infringement? Warner Bros. Inc. v. Souther, 2006 WL 1549689 (June 1, 2006) addressed this issue in passing. Defendant grandmother apparently claimed that her grandson may have been the one responsible for the alleged downloading of over 1,ooo songs and that because he may have done it, she wasn't liable. She further argued that he couldn't be sued either because he was a minor. The court replied:

"Defendant has also raised an issue as to whether a minor may be sued in federal court. This may answered by quick reference to Rule 17(b), Federal Rules of Civil Procedure, which provides, as follows: The capacity of an individual, other than one acting in a representative capacity, to sue or be sued shall be determined by the law of the individual's domicile.Fed.R.Civ.P. 17(b). In North Carolina, “infants” may be sued, but must be defended by a guardian ad litem. N.C.R.Civ.P. 17(b)(2)."

Posthumous Works and Renewal

Difficult questions of the proper renewal claimant continue to be litigated, most recently in Judge Miriam Cedarbaum's September 21 opinion in the "Chitty Chitty Bang Bang" case, Legislator 1357 Limited v. MGM, Inc., 2006 WL 2709783 (S.D.N.Y. Sept. 21, 2006). The place to begin is with Section 24 of the 1909 Act:

"[T]he copyright secured by this Act shall endure for twenty-eight years from the date of first publication, whether the copyrighted work bears the author’s true name or is published anonymously or under an assumed name: Provided, That in the case of any posthumous work or of any periodical, cyclopaedic, or other composite work upon which the copyright was originally secured by the proprietor thereof, or of any work copyrighted by a corporate body (otherwise than as assignee or licensee of the individual author) or by an employer for whom such work is made for hire, the proprietor of such copyright shall be entitled to a renewal and extension of the copyright in such work for the further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright: And provided further, That in the case of any other copy- righted work, including a contribution by an individual author to a periodical or to a cyclopaedic or other composite work when such contribution has been separately registered, the author of such work, if still living, or the widow, widower, or children of the author, if the author be not living, or if such author, widow, widower, or children be not living, then the author’s executors, or in the absence of a will, his next of kin shall be entitled to a renewal and extension of the copyright in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright: And provided further, That in default of the registration of such application for renewal and extension, the copyright in any work shall determine at the expiration of twenty-eight years from first publication."


It is difficult to justify including posthumous works in the first proviso, since this has the effect of depriving the author’s spouse and children of the renewal privilege in case the original copyright was secured by the publisher. In principle, the author’s spouse and children should have the same right of renewal as they would have if the work were not posthumous. The provision was undoubtedly the result of an unfortunate historical accident, introduced when the drafts of the 1909 law provided for a basic life-plus term. This scheme may have been deemed inappropriate for posthumous works, but when the term was changed to a first term of 28 years with a renewal term of the same duration, the exception was inadvertently maintained.

A sharp limitation on what could be considered a posthumous work was imposed in the first case directly construing its meaning. In Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941 (2d Cir. 1975), the Second Circuit held that the basic policy behind granting renewal rights (i.e., to provide for the author or the author’s family), would best be served by limiting the category of posthumous works to those not covered by an assignment or contract for exploitation made during the author’s lifetime. The work in question, Bartok’s Concerto for Orchestra, not only had been the subject of such an assignment, but in addition had already been performed on the radio and its score set in printer’s proofs before the composer died. The court of appeals rejected the district court’s definition of posthumous works as those that are technically "unpublished" under the 1909 law—that is, generally not distributed in tangible form prior to the author’s death.

The drafters of the 1976 Act expressly stated their intent to include in Section 304(a) the meaning of "posthumous" given in the Bartok decision. Although the term is not defined in the Act, Copyright Office regulations state:

"[P]osthumous work" means a work that was unpublished on the date of the death of the author and with respect to which no copyright assignment or other contract for exploitation of the work occurred during the author’s lifetime."

Notwithstanding this definition, the regulations also provide that

"[T]he renewal claim may be registered in the name of the proprietor of the work, as well as in the name of the appropriate claimant under paragraph (f)(1)(iii) of this section [e.g., widow, executor], in any case where a contract for exploitation of the work but no copyright assignment in the work has occurred during the author’s lifetime. However, registration by the Copyright Office in this case should not be interpreted as evidencing the validity of the claim."

On top of all this must be added the Supreme Court's decision in Miller Music Corp. v. Charles Daniels, Inc., 362 U.S. 373 (1960), which held that where the author conveys the renewal term during the original term but dies before the renewal term vests, the renewal term conveyance is void and all rights go by the statute, that is, as detailed above.

With that background, on to Chitty Chitty Bang Bang, one of Ian Fleming's non-James Bond stories. The various transactions are set out in the opinion, but the bottom line is this: Fleming conveyed the renewal term to various parties but died before the renewal term vested. He also died before the work's publication. Plaintiffs argued that the executor of Fleming's estate and had title through them. Defendant argued the work was posthumous and that therefore rights went to the "proprietor," from whom they claimed. Judge Cedarbaum held that because Fleming had assigned rights in the work before his death and had revised versions of it, the work was not posthumous and rights vested ultimately in plaintiffs.

The Little Guy Gets Off the Hook

Following the Second Circuit's affirmance of Judge Daniels' grant of summary judgment in the U.S. DaVinci Code case, Brown et al v. Perdue, the inevitable attorney's fee petition was filed. It was recently rejected by Magistrate Judge Fox, here. Given the virulent campaign Perdue mounted in claiming that his books "Daughter of God" and "The DaVinci Legacy" were infringed by Brown's book, it would be easy to forget that Perdue did not initiate the litigation; instead, Brown and Random House did in a declaratory judgment action. Perdue then filed a counterclaim, although in that counterclaim he brought in various motion picture studios who were not party to the DJ action.

Attorney's fees of $310,580.24 were sought, a not particularly large number. Judge Fox's opinion is a pretty straight, by the numbers opinion. He finds Perdue's claims were not objectively unreasonable, and not brought in bad faith. I have my doubts, by hey, that's what it means to be a finder of fact.

No Bull

Page 3 (not 6) of today's New York Post has a story about a copyright infringement suit filed by sculptor Arturo DiModica against North Fork Bank of Melville Long Island, Wal-Mart, and seven other companies. DiModica is not a household name, but one of his works is very well-known: the famous 16-foot long "Charging Bull" that was originally installed at the entrance to the New York Stock Exchange, but which now sits in Bowling Green Park, and which has come to symbolize Wall Street.

DiModica created the work on his own in 1989 but described it as a "Christmas gift to the people of New York." By gift, presumably he meant the physical object since he receives licensing fees for reproductions of the work in advertising and for cameos in movies, and has a registration for it. The registration was obtained on March 9, 1998, as an unpublished work, #VAu 422-325. He claims Wal-Mart is selling pictures without his permission and that North Fork has used it in an ad campaign. Reproductions of it have been ubiquitous.

Ceci n'est pas une chaussure

Many years ago, before Lindsay Lohan was born, before Herbie was even one-quarter loaded, I was a college student, majoring in music. I still needed a credit in another humanities field, so I took a class on art appreciation. The class was at 8 am. That was very early for most of my fellow students. The class was quite easy, though, consisting of the professor showing slides in a darkened room. The darkness and the hour caused many to sleep through the class; some of the sleepers would fall out of their chairs on to the floor. Five minutes before the lights would come on, the professor would start warning students, but of course if you were asleep, this warning did no good, and when the lights came on, some slept on, occasionally after class was over and everyone had left the room.

One of the paintings discussed was Magritte's Ceci n'est pas une pipe. Michael Foucault wrote a book about the picture, "This is not a Pipe." An alternative title might be "This is not a Book." In Eliya, Inc. v. Kohl's Department Stores, 2006 WL 2645196 (S.D.N.Y. Sept. 13, 20006), Judge Gerard Lynch, a jurist of formidable intellectual prowess confronted the question of when a shoe is not a shoe for copyright purposes. Plaintiff designed a woman's shoe, which Judge Lynch referred to as the "SHOE design." It consisted of "patterned stitching on the front and sides of the shoe, a strap with visible stitching, and a sole with a pattern of spots that wraps around the shoe and extends up the back, sides, and front." Plaintiff claimed Kohl's copied the shoe.

Plaintiff's registration was for a two-dimensional work which described the nature of authorship as "etching." Judge Lynch correctly held that plaintiff's copyright did not extend to three dimensional shoes, and that there were no separable features warranting protection for the design of a useful article (the shoe). He distinguished the Second Circuit's Knitwaves, Inc. v. Lollytogs Ltd. which had found infringement of a sweater design: Knitwaves involved infringement of a two-dimensional design by another two-dimensional design. Judge Lynch noted that a three-dimensional design may infringe a two-dimensional design, but not where as here, the three dimensional work is unprotectible. Any other holding would result in vesting of copyright in gas turbines through an original drawing of them. Although he didn't cite the provision, Section 113(b) provided another ground for rejecting plaintiff's claim:

This title does not afford, to the owner of copyright in a work that portrays a useful article as such, any greater or lesser rights with respect to the making, distribution, or display of the useful article so portrayed than those afforded to such works under the law, whether title 17 or the common law or statutes of a State, in effect on December 31, 1977, as held applicable and construed by a court in an action brought under this title.

Praise the Lord, But Pay the PRO

In a September 14th opinion, Simpleville Music v. Mizell, 2006 WL 2642106, a district judge in Alabama addressed a rarely encountered part of the Copyright Act, Section 110(3). This provision exempts the public performance "of a nondramatic literary or musical work or of a dramatico-musical work of a religious nature, or display of a work, in the course of services at a place of worship or other religious assembly."

The suit was brought by ASCAP against the owner of radio stations operating without a license from ASCAP, known affectionately as a PRO ("Performing Rights Organization"). One of the defendant's arguments against liability was that he could broadcast some of the songs because the songs had been performed during church services. The court rejected the argument, rightly noting that the exemption applies only to performances that occur at the place of worship; it does not extend to broadcasts of those performances. The legislative history states that the exemption does "not extend to religious broadcasts or other transmissions to the public at large, even when the transmissions were sent from a place of worship." H.R. Rep. No. 1476, 94th Cong., 2d Sess. 84 (1976).

The scope of the Section 110(3) exemption was the subject of debate during its drafting. The 1964 revision bills would have more broadly exempted the performance of nondramatic literary works and musical works in the course of religious services at a place of worship or other religious assembly.The 1965 revision bills further expanded the exemption to include dramatico‑musical works. At the same time, the Copyright Office noted concerns that the term “dramatico‑musical work” would encompass secular works if performed in the course of religious services. Since this was not Congress’s intention, the Office suggested that the term be amended to read “dramatico‑musical works of a religious nature.” This amendment was made in the House Committee on the Judiciary’s version of the bill reported on October 12, 1966. The amendment was explained as follows in the Committee’s report:

The purpose . . . is to exempt certain performances of sacred music that might be regarded as “dramatic” in nature, such as oratorios, cantatas, musical settings of the mass, choral services, and the like. The exemption is not intended to cover performances of secular operas, musical plays, motion pictures, and the like, even if they have an underlying religious or philosophical theme and take place “in the course of [religious] services.”


The phrase “in the course of services” is intended to exclude performances at places of worship that are for social, educational, fundraising, or other entertainment purposes, and, as the Alabama court held, broadcasts.

Sixth Circuit Hot Docs Opinion

On Friday, the Sixth Circuit, per Judge John Rogers, issued its opinion in the "Hot Docs" case, Ross, Brovins & Oehmke, P.C. v. LEXIS NEXIS Group. The opinion is very well written and reasoned, with a careful analysis of the facts and law. Bravo.

The dispute concerns originality and infringement of compilations of public domain legal forms, although there are a few twists involving some material that originated with plaintiff (but which were not found to be "original'). Plaintiff law firm, acting as "LawMode," contracted with defendant to create and market a system of automated Michigan state legal forms. Of a universe of something over 700 forms, plaintiff selected 576. The eventual product also included drop-down dialog boxes and templates by which data entered in one data field was automatically inserted into another, relevant field.

The parties' contract was eventually terminated by defendant, which then developed and marketed its own product. (The term "Hot Docs" refers to LEXIS' proprietary Hot Docs Pro software that was used by both parties). Plaintiff claimed the new product infringed its product. (There is also a contract claim, and that was the only part of the district court's opinion the Sixth Circuit reversed). There is some to-and-fro about how to determine the relevant percentage of forms that appear in plaintiff's work that also appears in defendant's, but the exact percentage does not seem to have concerned the court.

The court of appeals found plaintiff's selection original but not infringed, relying in part on the Second Circuit's Key Publications v. Chinatown Today, 945 F.2d 509 (2d Cir. 1991). The analysis is easy to follow, going through elements of selection and then arrangement. On the question of the material that originated with plaintiff, the court nicely distinguished Judge Posner's opinion in Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923 (7th Cir. 2003), on the issue of originality through the "interrelationship of variables in the templates," meaning data entered on one template affecting choices on future templates.

Making U.S. Law Overseas

BNA's September 15th PTCJ has two articles well worth reading. The first describes a meeting held by the PTO and the Copyright Office on September 5th about a proposed new treaty protecting broadcasters. The second is an announcement of a diplomatic conference about the proposed treaty from July 11 to August 1, 2007.

There are two dangers presented, both serious. The first is the merits of the protection sought. Broadcasters may be the most powerful lobby in Washington, and they have used that power over many decades to enrich themselves through the use of giveaways of public resources, the public airwaves; digital television is only the most recent example. In the early 1990s, they rammed through, over the Judiciary Committee's objections, another property right, retransmission consent. They also enjoy a complete exemption from payment of Section 106(6) performance royalties for terrestrial transmissions, while webcasters, a far less economically viable market segment must pay. (In a rare lobbying lapse, in 1998, the broadcasters let themselves become liable for web retransmissions of terrestrial broadcasts). I see no reason for broadcasters to further feather their nest, and that feathering will come at the expense of new technology companies and consumers: arguments that it is only foreign consumers who will pay sound alot like the arguments that were made during the Sonny Bono term extension debates. If no amendments to U.S. law are required to join the proposed treaty, fine; but if amendments are necessary, as commentators at the hearing indicated, that is a red flag.

But beyond a concern over the fabulously rich getting richer, there is a serious process point at issue, raised, thankfully, at the PTO-Copyright Office meeting. That point is the trend, certainly since the DMCA, and possibly earlier with the GATT/TRIPs agreement, of the Executive Branch, through the Office of the United States Trade Representative (USTR), of making domestic law indirectly through treaty negotiations. Here's how it works: U.S. industry group X goes to USTR and says we need new rights; please obligate the United States to provide for those rights in an international agreement, whether a new treaty or trade deal. Without public input, without congressional hearings, without legislation, USTR commits the U.S. to provide that protection. The Executive Branch then goes to Congress and says to Congress that legislation has to be passed on pain of the U.S. violating its international obligations. Congress complies.

Whatever one might say about USTR, one cannot fairly describe that agency as concerned with the larger public good; its concerns are with increasing the U.S. share of markets overseas. If that means obligating domestic changes to U.S. law to get more goodies for U.S. industries overseas, so be it. There are serious institutional and policy issues with this trend. Initiatives to amend U.S. law should be taken up first by Congress; they should make sense as a matter of domestic balancing. Congress is the policymaker in our system, not the Executive Branch. Couching issues as trade issues or foreign policy is a too clever and dangerous way to make U.S. law overseas. It should stop for the public good.

While the PTO-Copyright Office hearing is a good first step, but only public demand that Congress take control of the issues is sufficient. There is time to do so. Congress can and should hold oversight hearings on the issues presented early in the next Congress. Congress should then set the U.S. position for the diplomatic conference, and not the Executive Branch. Given the broadcasters' much larger influence over the commerce committees, the Judiciary Committees would do well to make their voice heard early and forcefully; if the retransmission experience is any precedent, the Judiciary Committees will get rolled if they don't.

Bob Dylan Plagiarist?

Among the books Judge Posner will publish this year is one called "The Little Book of Plagiarism." He sent me a copy awhile back in manuscript form, consisting of 43 single space pages. The book opens with the story, much recounted in the news this year, of Harvard student Kaavya Viswanathan's "chick lit" novel and her borrowings from the works of Megan McCafferty. Ms. Viswanathan's publisher ended up dumping over the affair; never explained was whether Ms. Viswanathan herself copied or whether it was the polishing company that assisted her. Plagiairism, as Judge Posner notes, can be a "gaudy offfense," which has received increasing attention. Judge Posner observes that digitization "has made it at once easier to commit plagiarism and easier to detect." This is also true for law students: while serving on a faculty committee dealing with poorly performing students, we came across examples of the phenomenon Judge Posner points out.

Plagiairism is not always copyright infringement, and certainly not when the work from which the plagiarist borrows is in the public domain. Today's New York Times Arts section gives an example with Bob Dylan's new album "Modern Times." Times writer Motoko Rich (giving attribution is a factor in plagiarism disputes) discusses a number of instances in which Internet researchers have discovered unattributed borrowing by Dylan from the slender poetical works of Henry Timrod, sometimes called the poet laureate of the Confederacy, like this one:

Henry Timrod:
A round of precious hours.
Oh! here, in that summer
noon I basked.
And strove; with logic frailer than
the flowers.

Dylan:

More frailer than the flowers,
these precious hours.

Other examples are given, sufficient for me at least to conclude that there was no independent creation, especially given Dylan's interest in the Civil War. But even had Timrod's works been under copyright, it is unlikely a suit would have succeeded, although it is very likely one would have been brought. Dylan fans are divided on their attitude to the Timrod borrowing. One describes him as a "thieving little swine." Another says it is "characteristic of great artists and songsters to immediately draw on their predecessors," a statement that casts Timrod in a new, fascinating historical lineage. Harold Bloom's classic "The Anxiety of Influence" captures nicely this final point with its thesis that the great steal only to make what they stole their own in a struggle for self-identity. Whether Dylan has such a Freudian relationship with Timrod is most doubtful.

Copyright Modernization Act of 2006

Yesterday, the "Copyright Modernization Act of 2006" was introduced in the House. Here is a link I created to this 100 page bill.

The bill has three titles: title I (taking up 85 and a half pages of the bill) is a revised version of the "SIRA" bill (H.R. 5553) and adds a new Section 115(e) covering digital music licensing. Title II is a revised Orphan Works section. Title III is a provision called "Copyright Protection Resources."

Title III has three substantive components: Section 302 (of the bill, not title 17) is, I believe, something the record companies previously sought to beat back fraud on the Copyright Office challenges to certificates of registration. It would require the certificate to be regarded as valid unless the applicant knew that inaccurate information had been provided and the Register of Copyrights would have rejected the application had she known of the inaccuracy. Where an allegation of inaccuracy is alleged, the court is required to request the Register to advise it whether it would have rejected the application. Courts routinely uphold registrations unless the inaccuracy would have caused rejection, so I don't see the need for the provision, which will, in any event, only delay litigation and add to the Copyright Office's workload. Moreover, since the applicant is in the best position to know the accuracy of the information it provides, there is no reason for applicants not to provide that information to the court anyway.

Section 303 of title III is also I believe a record industry initiative, designed to increase its statutory damage awards by permitting separate awards for individual sound recording tracks appearing on a CD. The new language would permit separate awards when the court "in its discretion" determines that individual components of a collective work "are distinct works having independent economic value." The independent economic value test is already used by some courts albeit importantly for different types of works. One would have thought that the staggering amounts already received by the labels were more than sufficient.

Section 304 increases the FBI's crime-busting piracy role.

Ben Hur Rides Again

According to a Reuters story, veteran impressario Robert Hossein is to put on a live sea battles, gladitorial combat, and the chariot race from Ben Hur, known to many from the 1959 movie directed by William Wyler and starring Charleton Heston. The chariot race will be 14 minutes long, and requires Ben Hur's enemy Messala to fall from his chariot and be dragged along the dirt. The event will take place in France's 17,940 square yard football stadium, the Stade de France, scene of France's 1998 World Cup victory.

The novel Ben Hur was published in 1880 by American Civil War General Lew Wallace (1827-1905), and tells the story of Judah ben ("son of") Hur, improbably described as a Jewish "prince," who is sent into slavery sometime before 70 C.E., when the Second Temple was destroyed and Second Circuit Judge Guido Calabresi's ancestors were hauled off to Rome by Titus. (Judge Calabresi is also a Finzi-Contini). Judah, amidst the spectacular sea battles and chariot races for which the book is well-known manages to witness Jesus of Nazareth's crucifion. Judah then converts to Christianity. There is a General Lew Wallace Study and Museum in Crawfordsville, Indiana, which hosts a website at www.ben-hur.com. Those who wish to plough through 576 pages of dense Victorian prose may do so in a 2003 Signet reprint.

Ben Hur has featured in two copyright cases. The first is Harper Bros. v. Klaw & Erlanger, 232 F. 609 (S.D.N.Y. 1916), in which Wallace's son was enjoined from mounting a motion picture version based on a judicially created (and outrageously erroneous) implied negative covenant not to destroy the value of rights previously granted to put on a play. Defendants later produced their own (silent) movie in 1925, directed by Fred Niblo and starring Ramon Novarro. Some regard the chariot races in that film (which cost $4 million to produce) as superior to those in the 1959 film. Douglas Fairbanks, Mary Pickford, Harry Lloyd, Myrna Loy, and Lillian Gish appeared as extras ("spear-chuckers" in the vernacular).

The second dispute is Kalem Company v. Harper Bros., 222 U.S. 55, 64 (1911) in which Justice Holmes wrote: "Action can tell a story, display all the most vivid relations between men, and depict every kind of human emotion, without the aid of a word." In other words, copyright extends well beyond the literary text and includes dramatic action. Holmes wasn't breaking new ground; that was done in Daly v. Palmer, 6 F. Cas. 1132 (C.C.S.D.N.Y. 1868), in which infringement of a dramatic composition was found by what was regarded as a substantially similar scene (a man tied down to a railroad track as the train approaches), even though no dialogue was taken.

Which gets us back to Mr. Hossein, who is fortunate the book is in the public domain, since such a spectacle would no doubt otherwise have led to litigation.

A Parody of a Parody

The New York Post's Page Six creation, Paris Whitney Hilton was arrested for driving under the influence according to news reports today. (Where was Elliot Mintz?????). A different story in the LA Times reveals the heirhead (as the Post now calls her since moving to LA) to be the victim of a guerrilla parody by Banksy (see www.banksy.co.uk). Banksy is reported to have taken copies of Paris' alleged recent CD, altered the artwork, and slipped in a remix he did along with the legendary Danger Mouse, of Grey Album fame. Mr. Mouse is reported to have said through his management company: "Its [sic] hard to improve on perfection, but we had to try." The work was then put on to shelves at 48 record stores across Britain for those who, for whatever reasons, had sought to buy the original.

Furniture and Unpublished Opinions

In April, the Supreme Court blessedly adopted a rule change permitting the citation of unpublished opinions, effective December 1st. Here is an article about it by Tony Mauro:

The Supreme Court on Wednesday adopted a historic rule change that will allow lawyers to cite so-called unpublished opinions in federal courts starting next year. The new rule takes effect unless Congress countermands it before Dec. 1.
The justices' vote represents a major milestone in the long-running debate over unpublished opinions, the sometimes-cursory dispositions that resolve upward of 80 percent of cases in federal appeals courts nationwide. In some circuits these dispositions have no precedential value and cannot be cited.
"Unpublished" is a misnomer, since most of these opinions are available now on legal databases. But some federal judges have argued that if this category of opinions can be cited and used as precedent, they will take more time to decide and write, sharply increasing the backlog of cases. Many sentencing appeals, for example, are resolved by unpublished opinions. The U.S. Courts of Appeals for the 2nd, 7th, 9th, and federal circuits ban the citation of unpublished opinions outright, while six other circuits discourage it.
Under the new rule, circuits will still be able to give varying precedential weight to unpublished opinions, but they can no longer keep lawyers from citing them -- in the same way lawyers cite rulings from other circuits or other authorities, such as law review articles.
"This change will facilitate lawyers' representation of their clients, and it will facilitate the courts' informed decision of future cases," said Mark Levy of Kilpatrick Stockton, a member of an advisory committee that recommended the change. "It will also bring national uniformity to the process."
At one point in the debate, 9th Circuit Judge Alex Kozinski, the leading opponent of the rule change, said unpublished opinions were so designated for a reason: They are drafted "entirely" by law clerks and staff attorneys. He added, "When the people making the sausage tell you it's not safe for human consumption, it seems strange indeed to have a committee in Washington tell people to go ahead and eat it anyway."
The committee Kozinski was referring to, the Advisory Committee on the Federal Rules of Appellate Procedure, was chaired at the time by then-3rd Circuit Judge Samuel Alito Jr., and one of its members was then-D.C. Circuit Judge John Roberts Jr. Both supported the change while on the committee, and now that both serve on the Supreme Court, Wednesday's vote may have been unsurprising. There was no indication in the Court's order whether any justices dissented or did not participate.
The advisory committee's original recommendation was to allow the citation of all unpublished opinions, past and future, but the Judicial Conference last September added an amendment to make the rule prospective, allowing the citation only of those rulings issued on or after next Jan. 1. The high court adopted that amendment in the rule change it promulgated Wednesday.
Unpublished opinions first came into vogue in the 1960s as a time-saving device for appellate judges. Though the propriety of an essentially secret judicial process has been debated for years, the catalyst for change came in 2000, when the late 8th Circuit Judge Richard Arnold ruled in a routine case that stripping unpublished opinions of precedential value was unconstitutional because it gave judges a power not authorized by Article III of the Constitution.

Judge Kozinski's comments are rather striking: the opinion is binding on the parties no matter who writes it. Moreover, Judge Kozinski infers that law clerks don't write published opinions. There have been examples in copyright cases where courts of appeals have issued opinions containing important legal points. Most recently, in Universal Furniture International, Inc. v. Collezione Europa USA, Inc. (No. 06-1144, 4th Cir. Aug. 29, 2006), the Fourth Circuit issued a 15 page opinion after oral argument that reviewed a number of significant issues, including the presumption of irreparable harm for injunctions, conceptual separability, and compilation copyrights. The court properly couched much of its discussion on whether the district court abused its discretion on the record presented, but there is still material of general applicability on standards and disagreements with other cicuits. More to the point, there is no reason why the opinion should not be cited.

Funk Parlor Deep Six'd

On the same day the latest Bochco appeal was argued, the Ninth Circuit heard argument in a case claiming that HBO's "Six Feet Under" infringed a screenplay called "The Funk Parlor." The district court granted summary judgment to HBO, the Funksters appealed, and the 9th Circuit affirmed in this opinion by Willie's mother. My good friend and train commuting buddy Jeff Conciatori of the Mighty Quinn firm argued for HBO.

Funk Parlor has good language on the “inverse ratio” theory, sometimes more grandly called a “rule.” Originally, there was only one version of this theory, according to which the amount of similarity required at the material appropriation stage is inversely related to the degree of defendant’s access to plaintiffs work: the more access, the less similarity is required for infringement; the less access, the more similarity is required for infringement. The theory has now migrated in some courts to the precedent copying stage.

An early and forceful rejection of the theory came in Judge Clark’s opinion for the Second Circuit in Arc Music Corp. v. Lee, 296 F.2d 186, 187 (2d Cir. 1961), which aptly described the theory as a “superficially attractive apophthegmatic which upon examination confuses more than it clarifies. The logical outcome of the claimed principle is obviously that proof of actual access will render a showing of similarities entirely unnecessary.”

The inverse ratio theory confuses fundamental principles of infringement analysis: access is relevant only in establishing the act of copying, not in establishing the degree thereof. Once copying is established, access is irrelevant and the inquiry shifts to the final stage of the infringement analysis, material appropriation. At that stage, substantial similarity is the sole issue. Substantial similarity is an objective determination, made by comparing the two works from the perspective of the ordinary observer. This comparison is completely unaffected by the defendant’s degree of access.

To be useful, a theory must provide an analytical framework that can explain existing facts and aid in predicting future events. This is accomplished by testing and then verifying hypotheses. The inverse theory is not, however, a theory at all; it does not purport to reflect any past efforts in establishing that individuals who had a high degree of access have a high likelihood of copying more or that those with a lesser degree of access are likely to copy less. Instead, the theory attempts to circumvent the rigorous testing of hypotheses one finds in actual analytical work in favor of establishing a law that does away with the need for proof (hence Judge Clark’s dismissal of it as a “superficially attractive apophthegmatic”). The theory purports to be a law much like Newton’s Law of Universal Gravitation. Under Newton’s law, if we want to learn the force of gravity on the Moon in its orbit around the Earth (that is, what it takes to keep the Moon moving in the same orbit), we can conduct calculations by reference to established facts such as the radius of the Earth and the distance to the Moon. The requisite gravity will be expressed mathematically and will present an actual relationship among the various facts.
The inverse ratio theory similarly attempts to postulate a set relationship between the amount of access and the amount of copying required to prove infringement. Thus, according to the theory, if infringement is 100%, that 100% may be reached by 10% access and 90% copying, by 90% access and 10% copying, or by any figures in between. Unfortunately, there is no necessary relationship between access and copying. Nor is there any basis to believe that the two are fungible relative to each other so that a percentage of one may be readily substituted for the other. There are no equivalents to the radius of the Earth and distance to the Moon that we can use as empirical guideposts with the inverse ratio theory. While it is true that one cannot copy something to which one does not have access, it is also true that one can have complete access to a copyrighted work (indeed have it pasted on the wall of your office when creating your own work) but not copy that work. No degree of access necessarily leads to any degree of copying. The inverse ratio theory is based on a false postulate.Despite rejection by most courts, like the raptors in the motion picture Jurassic Park, the theory is loose and alive, especially in the Ninth Circuit, albeit with many inconsistent and limiting panel statements.

This is where Funk Parlor comes in. HBO moved for summary judgment on lack of access, but the district judge "assumed" it for purposes of his ruling. Such an approach may in fact be a way around some of the negative effects of the first Bochco opinion. Here's the Funk Parlor court's discussion:

"The district court disposed of the motion for summary judgment exclusively on the issue of substantial similarity and, in so doing, assumed for the sake of argument appellees' access to the script. Although appellants wanted to take additional discovery on the issue of access, the court found it unnecessary because appellants could not meet the lower burden required by the substantial-similarity test. Appellants contend, however, that they should be given an opportunity to satisfy an even lower burden of proof under the “inverse-ratio rule,” which applies to those cases in which a party demonstrates the alleged copier's “high degree of access” to the purportedly copied material. See Three Boys Music, 212 F.3d at 485 (“we require a lower standard of proof of substantial similarity when a high degree of access is shown”) (internal citation omitted). Appellants contend that further discovery would allow them to demonstrate such access; that they would prevail under the lower burden of proof required in cases where such a degree of access is shown; and that the district court erred in failing to conduct that inquiry.We do not agree that appellants' invocation of the inverse-ratio rule requires reversal of the district court's decision. “No amount of proof of access will suffice to show copying if there are no similarities,” Krofft, 562 F.2d at 1172, and, in this case, additional discovery would not change the fact that the two works lack any concrete or articulable similarities. Thus, appellants would not be able to demonstrate unlawful copying even under a relaxed version of the substantial-similarity test. Consequently, we affirm the district court's summary judgment in appellees' favor as well as its ruling on additional discovery."

Hopefully Funk Parlor represents a welcome check on prior cases.