Tuesday, January 31, 2006

The Embedded Photographer in Iraq

The Wizbang blog had a posting yesterday about a copyright dispute involving the U.S. Army and Michael Yon, a former Green Beret and photographer/blogger who took the most searing photograph of this profoundly controversial war: a May 2005 picture of a solider cradling an dying, very young Iraqi girl, one of tens of thousands of innocent civilians and soldiers killed, tragically and wholly unnecessarily. As the father of a daughter the same age, I will never forgive the one individual responsible for her death and all the others.

Mr. Yon was not an employee or contractor of the United States government, and indeed was employed by no one. The only agreement he is reported to have had with the government was a "hold harmless" agreement with respect to physical injuries, an entirely understandable agreement. According to Mr. Yon, the Army released the photograph without his permission, where it was prominently reproduced and displayed. The Army claims that the hold harmless agreement covers copyright (the document will, as is said, "speak for itself"), and is also reportedly asserting an implied license from Yon having uploaded the picture using government servers.

The implied license argument seems like a stretch, since there is no allegation in the reports that Yon created the work for the Government and intended that they use it. Moreover, given where Yon was, use of government servers may have been the only option. The government's position would, if accepted, presumably apply to all material that passes through its servers, a class that would sweep in quite a lot of material from a diverse number of sources. But even if there was an implied license one would have to determine its scope. No doubt the government will also claim fair use news reporting. If so, perhaps the Government's motivation for the exploitation of what was a deeply moving, private act of compassion and sorrow would be factored in as well.

Any claim will not be brought in federal district court. Instead, pursuant to 28 USC 1498(b), the claim must be brought in the Court of Federal Claims. No attorney's fees are available, no injunctive relief, only "reasonable damages." On the plus side, the current Chief Judge of that court is my old friend, Ed Damich, a former copyright law professor and a former Senate Judiciary Committee staffer to Orrin Hatch. If he gets the matter, we are assured of expert and scrupulously fair treatment.

Monday, January 30, 2006

Personal Jurisdiction Heats Up

Those who watch for cert-worthy decisions should watch the Fifth Circuit's Luv N' Care, Ltd. v. Insta-Mix opinion, handed down January 25th. The concurring opinion by Judge DeMoss openly begs the Supreme Court to take the case to resolve a split in the circuits on an important issue of specific personal jurisdiction: does one use the mere stream of commerce approach or the stream of commerce plus approach advocated by Justice O'Connor in her 1987 plurality opinion in Asahi.

Personal jurisdiction is, in federal question cases such as copyright, intertwined with service of process. A suit for copyright infringement is instituted by the filing of a complaint with the clerk of the district court and serving a copy of the complaint along with a summons on the defendant. Technically, FRCP 4 does not directly deal with personal jurisdiction, only service of process, and with the exception of FRCP 4(k)(2), valid service of process does not necessarily ensure that the court may exercise in personam jurisdiction over a defendant. One might assume that in exclusively federal cases such as copyright, the exercise of personal jurisdiction over the parties would not raise questions of state law. Such an assumption would be erroneous. While amendments to the FRCP in 1963 led some to hope that a step had been taken toward an eventual nationwide service of process, which would in turn lead to a reorganization and reorientation of personal jurisdiction issues in the federal courts, no progress has been made. There is, therefore, an anomaly in a federal question case, such as copyright, in which original and exclusive jurisdiction is vested in federal courts: the federal court’s ability to hear the case at all will be determined by state laws that can and do vary considerably. But even state laws are constrained by constitutional due process considerations, and it is in articulating the requisite minumum to justify the exercise of jurisdiction over non-residents that the trouble has arisen.

In 1980, the Supreme Court issued its landmark opinion in World Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, which introduced the stream of commerce theory. World Wide Volkswagen involved an attempt by a couple who purchased an Audi automobile in New York and who were injured in Oklahoma to bring a products liability suit in Oklahoma against the New York retailer and the New York wholesale distributor. In a 5–4 opinion, the Supreme Court rebuffed the effort. In so doing, the Court held that “a state court may exercise personal jurisdiction over a nonresident defendant only so long as there exist “minimum contacts” between the defendant and the forum State. . . . The concept of minimum contacts, in turn, can be seen to perform two related, but distinguishable, functions. It protects the defendant against the burdens of litigating in a distant or inconvenient forum. And it acts to ensure that the States, through their courts, do not reach out beyond the limits imposed on them by their status as coequal sovereigns in a federal system.”

One might have assumed that on the facts plaintiffs would have prevailed; however, the Court held it was not foreseeable that a New York retailer and a New York wholesale distributor selling a car to a New York couple reasonably foresaw the car traveling to Oklahoma. One wonders if the same result would have been obtained if car had been sold by the New York retailer to an individual from New Jersey or Connecticut. Reasonable minds (including four dissenting Justices) could disagree with the majority’s narrow view. Presumably, though, a unanimous court would have agreed that Volkswagen as the manufacturer would have foreseen nationwide mobility.

Product liability arguments akin to those in World Wide Volkswagen were raised in the Supreme Court’s 1987 effort at again taking up the stream of commerce theory, Asahi Metal Industry Co. v. Superior Court of California, 480 U.S. 102. Unfortunately, no majority opinion resulted, with Justice O’Connor authoring a plurality opinion as to the result. Cutting back on liberal interpretations of World Wide Volkswagen given by some lower courts, the plurality sided with those lower courts which interpreted the Due Process Clause to require “something more” than that the defendant was aware of its product’s entry into the forum state through the stream of commerce in order for the state to exercise jurisdiction over the defendant.

Justice O’Connor wrote:
The “substantial connection” . . . between the defendant and the forum State necessary for a finding of minimum contacts must come about by an action of the defendant purposefully directed toward the forum State. The placement of a product into the stream of commerce, without more, is not an act of the defendant purposefully directed toward the forum State. . . . . Additional conduct of the defendant may indicate an intent or purpose to serve the market in the forum State, for example, designing the product for the market in the forum State, advertising in the forum State, establishing channels for providing regular advice to customers in the forum State, or marketing the product through a distributor who has agreed to serve as the sales agent in the forum State. But a defendant’s awareness that the stream of commerce may or will sweep the product into the forum State does not convert the mere act of placing the product into the stream into an act purposefully directed toward the forum State.

Although only a plurality opinion, Justice O’Connor’s approach has been treated by many courts as a majority opinion, although other courts do not follow it, opting instead to rely on their interpretation of World Wide Volkswagen. As a result, care should be taken to determine the state of stream of commerce jurisdiction in the relevant jurisdiction. On the whole, though, Asahi has fared well in copyright litigation, but not in the Fifth Circuit, which follows the stream of commerce approach, although before Luv N' care, that court had been reluctant to apply the stream of commerce approach outside of product liability cases.

In Luv N’Care, Ltd. v. Insta-Mix, the court reversed a district court that found no personal jurisdiction over infringement of a bottle label. The Fifth Circuit held that under its more relaxed approach, defendant, a Colorado company had complete control over where the goods were shipped, including in this case, to Lousiana.

Judge DeMoss, specially concurred for the sole purposes of having his views on a circuit split on record and begging the Supremes to take the case put into the petition for cert. In an amazing end to his opinion, he concludes:

“I hope Insta-Mix will apply for a writ of certiorari and I urge the Supreme Court to take up the minimum contacts issue and reolve it and the increasing circuit divide with clarity. The recent changes in the composition of the Court should produce a new effort by the Court to definitively answer this controversy. The sovereignty of the individual states in one the line.”

Talk about a guy who thinks his ship has come in! The recent changes he refers to can’t produce the result he wants: Justice O’Connor was the author of the plurality opinion he favors and Rehnquist joined her. It is true that Brennan, Marshall, White and Powell were on the 1987 Court, and aren't now, but those changes are hardly recent. Nevertheless, while the composition of the Court now is quite different than in 1987, it remains to be seen whether the issue is a liberal versus conservative one.

Sunday, January 29, 2006

Copyright in Stage Directions?

Ever since Daly v. Palmer, 6 F. Cas. 1132 (C.C.S.D.N.Y. 1868)(No. 3,552), the nature and scope of protection for dramatic works has been problematic. In that case, Augustin Daly's play "Under the Gaslight" (made into a 1914 movie starring Lionel Barrymore) was alleged to have been infringed by Dion Boucicault's play "After Dark." There was no copying of dialogue or characters; instead, the principal focus of the suit was the "railroad scene," described as "the chief value of the composition and its popularity," and as being 'entirely novel, and unlike any dramatic incident by any author before plaintiff." The nature of the infringment was the copying of "dramatic effect ... produced by what is done by movement and gesture, entirely irrespective of anything that is spoken ... the spoken words in each are but a trifling consequence to the progress of the series of events." 6 F. Cas. at 1133.

Palmer's lawyer wrote in a law review article that it was "the first decision which established a property right in incident ... [and which] advance[s] in literary law the doctrine of ... equivalents" found in patent law," T.W. Clarke, 3 American L. Rev. 453 (1869). While this might be dismissed as the grumblings of a losing party, Professor Ben Kaplan, in "An Unhurried View of Copyright" (p. 32) wrote that much of the interest in the scene derived from mechanical stage effects, that Daly had copied from his predecessors, and that Boucicault had made changes in copying the scene from Daly.

Daly's approach to finding copyright in dramatic action alone was endorsed by the Supreme Court in the "Ben Hur" case, Kalem Co. v. Harper Brothers, 222 U.S. 55, 63 (1911), which rejected the argument that such protection would grant protection to ideas. Daly also served served as the springboard for Judge Hand's Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) opinion. Daly has been called the first modern copyright infringement opinion, which may not be a compliment, but it is relevant to a very current dispute.

In Sunday's New York Times, Jesse Green has a long, detailed article, "Exit, Pursued by A Lawyer," about a pending suit in the SDNY before Judge Lewis Kaplan. The suit was brought by director Edward Einhorn who is reported to have alleged that his directorial contributions to the Off-Off Broadway play "Tam Lin" are copyrightable and infringed by their use without his permission. Mr. Einhorn was fired before the play went on, after two months of unpaid work. The play closed after 10 performances and may or may not be revived. Einhorn reportedly seeks $150,000 in statutory damages, an amount said to have reached $3 million at this point. Copyright lawyers will, at this point in the article, already be suspicious, since statutory damages are awarded per work, not infringement.

The suit is said to have been filed in October 2005 and be set for trial in April 2006. For those of us who practice in the SDNY that seems wildly fast. And then there is the registration, No. PA 1-254-494, which was effective December 10, 2004, for a work said to have been published on October 21, 2004, an unlikely characterization since performance is not publication. The claim is in "blocking and choreography script," with preexisting being listed as the script of the play. The claim, is in, other words, for a derivative work, and unlike the Times article, could most easily be read as one in choreography, not for aspects of a dramatic composition.

Whatever the procedural posture, the case is, though, in excellent hands. Judge Kaplan brings to the case a dazzling intellect, a scholar's thoroughness, and a vast amount of experience with copyright litigation, including one directly on point: Thomson v. Larson, 1997 U.S. Dist. LEXIS 13150 (S.D.N.Y. July 31, 1997), aff'd, 147 F.3d 195 (2d Cir. 1998), in which a dramaturg sought co-author status for her contributions to the play "Rent."

The New York Times article canvasses a number of disputes where directors have sought "intellectual property" protection, and provides pictures and some details about some, regrettably in much more detail than about the Tam Lin dispute itself. Of particular interest are the pictures and information about the 1995-1997 dispute between Joe Mantello over his production of "Love!Valour!Compassion!, which is said to have resulted in a decision to dismiss defendant's motion to dismiss. I could not find the decision on Westlaw and Lexis, though.

Defendants in the Einhorn case dismiss his contributions as de minimis: where the play script said "Exit," he said "Exit left." Where the play script said "Pick up book," he said "Pick up red book." Einhorn's lawyer (his older brother) disputes this. One would have to know a great deal about the facts to be able to sort out the merits of the claim, as well as know whether the claim is one for choreography or something different. But on the purely legal side, there are a few matters in play. First, Daly v. Palmer and Kalem Bros. provide sound support for claims of copyright in dramatic meaning shorn of words. The term "stage direction" is, by itself, unhelpful in figuring out whether a director's contributions to the dramatic meaning of a play were protectible. (And, contrary to the misinterpretation of Childress v. Taylor that is so rampant, each person's contribution need not be capable of being protectible on its own, the subject of another blog). What is required is a fact specific inquiry into the actual contribution made.

Then there are the issues of joint authorship, implied license, and status as a derivative work. If, as Einhorn apparently represented to the Copyright Office, his work is a derivative work of the play script, under Section 103, he is unlikely to be able to have a valid copyright without the playwright's permission, which presumably here would be denied. If Einhorn instead claims he is a joint author, then the other joint authors can use his contributions without his permission, subject only to an accounting, and amount which sounds minimal. If no joint authorship existed because there was no intent (the intent perhaps eliminated by his firing before the play was produced), and his contributions were protectible (and severable from the play), then one reaches the issue not fully reached in Thomson v. Larson, aside from implied license: what happens when someone has contributed copyrighted material but is not a joint author?

Friday, January 27, 2006

There's Hole in Your Opinion, Partner

Hank Williams Sr. left a legacy befitting a great musician: enough classic recordings to fill box sets that can be reshuffled and sold anew every holiday season, illegitimate children who can tie up the estate in litigation for years, and undiscovered live recordings whose chain of title is as tortured as James Frey and Doubleday's relationship to the truth. A week ago, a Tennessee state appellate court issued an opinion that addresses this final attribute of greatness, Polygram Records, Inc. v. Legacy Enterntainment Group, LLC., although the court's reasoning is staggeringly bad.

In 1947-1953, Williams signed an exclusive services contract with Polygram's predecessor, MGM Records, "for the purpose of making phonograph records." During the same time period, Williams and his band, The Drifting Cowboys, were frequent visitors on Nashville's WSM Radio's "Mother's Best Flour" program. When they performed live at the station, WSM made, for its own purposes, recordings. When the Boys in the Band were on the road, they made their own pre-recorded performances for WSM, which WSM then broadcast. Neither WSM nor Williams ever released the recordings and Williams never had possession of them.

In the 1960s, WSM moved its offices. Les Leverett, a WSM photographer, was going through the trash bins at the time and came upon the (acetate) recordings. WSM let him keep them. He took them home and did nothing. In 1982, the late Hillous Butrum, one of the Drifting Cowboys, discovered that Leverett had the recordings and bought whatever rights Leverett had in them, in exchange for giving Leverett 40% of all monies earned from their exploitation. Compact discs were just coming out and Butrum began to do a transfer, cleaned up problem spots, and added new music and voice overs. He never followed through on releasing the recordings, and in 1997 sold his rights to defendant Legacy. Polygram learned of Legacy's plan to release the recordings and after unsuccessful negotiations, sued. Hank Willams Jr. and Jett Williams intervened and claimed they were the copyright owners. The court of appeals affirmed the trial court judgment for Jr. and Jett.

The court's opinion is full of puns on the titles of Willams' songs (as the title of this blog is a dig at the opinion), which would be less grating if the opinion was "sound;" alas, it isn't. Polygram's claim was the easiest to dispose of, and here the court got it right. Polygram's claim (at least as explained in the opinion) was contractual, based on the services contract. The appellate court agreed with the trial court that Polygram's contract didn't cover the recordings that occurred as an adjunct to the WSM performances, but even if it did, how that would vest copyright in Polygram is not explained, and in any event, Polygram's claim could not encompass Butrum's later derivative authorship.

Legacy certainly had a claim to Butrum's derivative authorship, but that authorship would be infringing and any registration invalid unless it was done with the permission of the original rights holder of the 1950s acetate recordings. Legacy traced rights in those recordings to Leverett, who of course, had to trace his rights to WSM letting him take the acetates from the trash bin, and to WSM originally having the rights. So did WSM or someone else have rights in the original recordings?

The court held that Jr. and Jett did, ultimately dismissing Polygram and Legacy's claims: with their claims dismissed, the court held no one else had standing to challenge Jr. and Jett, who won, therefore, by default. As unsatisfactory as this is, how the court got to dismissing Legacy's claims is even more unsatisfactory. To begin with, there is the question, never addressed, of WSM's rights as the producer of the sound recordings: why wasn't this enough for at least joint authorship? And in a pre-1972 sound recording era, it might even have been enough, in some jurisdictions under some facts, for sole authorship. But certainly joint authorship represented a solid claim for WSM (and, by the way, also for Butrum, who could have conveyed his proportional interest to Legacy if he performed on the recordings).

Whether that resulted in Leverett gaining rights when WSM let him take the acetates is a different question. Here, the court referred to federal copyright law, which as embodied in Section 202, makes clear that transfer of the physical embodiment does not transfer copyright rights. But this doesn't mean the same answer is required under state law for pre-1972 sound recordings. In some jurisdictions, like New York, the owner of the master will usually own intangible rights. WSM could therefore have had a valid claim based on ownership of the acetates, if that was the status of Tennessee law. But we'll never know because that isn't how the court analyzed the issue.

In a bizarre leap, the court relied on Tennessee right of publicity law. Apparently, Legacy argued that Williams had transferred his publicity rights and that this somehow encompassed copyright in the performances. The court seems to have agreed with the premise that publicity rights encompass copyright in the performance, which if I understand the court's discussion, I find astonishing, but this was merely a method for the court's use of a double negative to get rid of Legacy's claim:

"We are unwilling to infer, indeed to jump to the illogical conclusion that Hank Williams assigned [publicity] rights without limitation based on the mere fact that his heirs cannot establish that the 1951 informal agreement with WSM provided to the contrary." The court then affirmed that the heirs owned those rights by default, those rights being the publicity rights encompassing the copyright in the recorded performance.

Someone will no doubt write a bad country song about the opinion, but I would rather it be the blues.

Wednesday, January 25, 2006

SOC'S Last 5-4

With the vote to confirm Judge Alito in the bag, Justice O'Connor has left the building. The Court does not hear argument again until February 21, when Alito will take his spot as the newest member. Justice O'Connor left, fittingly, in two ways. First, with a 9-0 opinion in an abortion case Ayotte v. Planned Parenthood of Northern New England (January 18) and, second, by supplying the 5th vote on January 23rd in a sovereign immunity case, Central Virginia Community College v. Katz. (Katz held that States are subject to suit by bankruptcy trustees seeking preferential transfers for the debtor's estate).

Both cases are fitting because she strove mightily to forge unanimity and succeeded more often than she is given credit for (i.e. Feist), but also because on issues where the Court was sharply divided, as a pragmatist, she wanted the law to work for people, and did not see it as an ideological exercise.

The Katz case is interesting both because it would have come out the other way with Justice Alito on the bench, and because of its implications for Railway Labor Executives Ass'n v. Gibbons, 455 U.S. 457 (1982), a case that has featured prominently in debates about Congress's power to enact intellectual property legislation under the Commerce Clause, a connection noted by Justice Stevens' majority opinion (p. 11 n.9). Justice Thomas's dissent makes repeated references to copyright, stating in one passage that he could see no reason under the majority's view to distinguish between Commerce Clause power and the power to establish uniform bankruptcy laws or to grant exclusive rights under Article I, sec. 8 clause 8 (p.4. See also p. 6).

It will be interesting to see what this leads to in the lower courts and if the matter reaches the Supreme Court again, what the force of stare decisis is, a topic of much recent discussion.

Monday, January 23, 2006

A Straightforward 411(a) case

Among my disagreements with the Nimmer treatise is its insistence, contrary to the plain language of the statute, that the copyright owner of a United States work need not have actually obtained registration or a refusal before instituting an infringement suit. (See earlier posting). Outside of the Fifth Circuit, courts have, almost without exception, rejected this view. On January 20th, the Eleventh Circuit did so again. The opinion also lays out in a straightforward way some common evidentiary issues that arise. The opinion is so clear, useful, and short that it is worth reproducing. In particular, it tells us how to get before the court evidence that the plaintiff has not registered, usually a task akin to disproving a negative. Here is the opinion in full:

2006 U.S. App. LEXIS 1375, *
JOHN D. WATKINS, Plaintiff-Appellant, versus SOUTHEASTERN NEWSPAPERS, INC., d.b.a. The Augusta Chronicle, Defendant-Appellee.
No. 05-13869 Non-Argument Calendar
2006 U.S. App. LEXIS 1375
January 20, 2006, Decided January 20, 2006. [*1] NOT FOR PUBLICATIONPRIOR HISTORY: Appeal from the United States District Court for the Southern District of Georgia. D.C. Docket No. 04-00127-CV-1-AAA.

JUDGES: Before TJOFLAT, BARKETT and PRYOR, Circuit Judges.OPINION: PER CURIAM:John D. Watkins, proceeding pro se, appeals the district court's order granting Southeastern Newspapers, Inc.'s renewed motion for summary judgment in a pro se action for copyright infringement, 17 U.S.C. § 101 et seq. Watkins alleged that Southeastern infringed his copyright in a book he had written, King's Last Visit to Augusta (He Was Persona Non Grata) (hereinafter "the book"), by (1) using a copy of a photograph of Dr. Martin Luther King, Jr. (hereinafter "the photograph") which was contained in the book in a newspaper article it published, and (2) selling copies of the photograph on the Internet. n1 On appeal, Watkins argues that the district court erred when it granted Southeastern's motion for summary judgment based on a letter from the U.S. Copyright Office, which indicated that Watkins had not registered his copyright in the book, because (1) the letter was inadmissible hearsay, and (2) Southeastern did not [*2] disclose the name of the witness who wrote the letter, or the letter itself, as it was required to do pursuant to Fed.R.Civ.P. 26(a)(1).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -n1 In his complaint, Watkins also raised a claim for common law plagiarism. On appeal, Watkins does not challenge the district court's finding that this claim was preempted by the Copyright Act, and therefore, he has abandoned any argument on this issue. See, e.g., Greenbriar, Ltd. v. City of Alabaster, 881 F.2d 1570, 1573 n.6 (11th Cir. 1989). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -

I. Admissibility of the letter from the Copyright OfficeAs an initial matter, because Watkins did not challenge the admissibility of the letter from the Copyright Office based on Southeastern's alleged failure to comply with the disclosure requirements of Fed.R.Civ.P. 26(a)(1) before the district court, Watkins has waived any argument on this issue, and we will not consider it on appeal. See Narey v. Dean, 32 F.3d 1521, 1526-27 (11th Cir. 1994) [*3] (noting that, except for limited exceptions which are not applicable in this case, issues not raised in the district court generally are not considered on appeal).Hearsay is defined as "a statement, other than one made by the declarant while testifying at the trial or hearing, offered in evidence to prove the truth of the matter asserted," and generally is not admissible unless it falls under an exception to the hearsay rule. See Fed.R.Evid. 801(c) and 802. There is an exception to the hearsay rule for public reports and records. See Fed.R.Evid. 803(8)(C). That exception provides, in relevant part, that "records, reports, statements, or data compilations, in any form, of public offices or agencies, setting forth . . . factual findings resulting from an investigation made pursuant to authority granted by law," are admissible "unless the sources of information or other circumstances indicate lack of trustworthiness." Id. We have explained that "Rule 803(8)(C) allows into evidence public reports that (1) set forth factual findings (2) made pursuant to authority granted [*4] by law (3) that the judge finds trustworthy," unless the evidence is otherwise inadmissible because it is irrelevant or is more prejudicial than probative. Hines v. Brandon Steel Decks, Inc., 886 F.2d 299, 302 (11th Cir. 1989). The district court has broad discretion to admit or exclude evidence, and that decision "will not be reversed absent a clear showing of abuse of that discretion." Id.In this case, the district court did not err in considering the letter from the Copyright Office, which is a report from a public office or agency, because it falls under the public-reports-and-record-exception to the hearsay rule See Fed.R.Evid.803(8)(C). First, the letter sets forth factual findings. Second, those factual findings resulted from an authorized search of the copyright registration records. See 17 U.S.C. § 705(c) (authorizing the Copyright Office to "make a search of its public records, indexes, and deposits," for, among other things, information regarding the registration of copyrights). Third, there was no evidence presented contradicting the information in the letter, and there were no other [*5] circumstances indicating that the document otherwise lacked trustworthiness. Finally, the letter is relevant and is not more prejudicial than probative, and therefore, is not otherwise inadmissible. Accordingly, we conclude that the district court did not abuse its discretion when it considered the letter from the Copyright Office.II. Summary judgment was properWe review de novo the district court's ruling on a motion for summary judgment, applying the same legal standards as the district court. See Miller v. King, 384 F.3d 1248, 1258 (11th Cir. 2004). Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The Copyright Act provides, in relevant part, that "no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made . . . ." 17 U.S.C. § 411 [*6] (a). This Court has held that "the registration requirement is a jurisdictional prerequisite to an infringement suit." M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir. 1990); see also Brewer-Giorgio v. Producers Video, Inc., 216 F.3d 1281, 1285 (11th Cir. 2000) (describing this rule as "well settled").In this case, because the evidence in the record shows that Watkins failed to register the copyright in his book before bringing his copyright infringement claims, the district court did not have jurisdiction to consider Watkins's claims, and therefore, did not err in granting Southeastern's renewed motion for summary judgment. See M.G.B. Homes, 903 F.2d at 1488.

Friday, January 20, 2006

Fantasy Baseball

Claims in copyright cases (on both sides) sometimes have the air of fantasy about them. A recent dispute involving fantasy baseball leagues revives another fantasy: the assertion by sports leagues that they own copyright in the game statistics. The CDM Fantasy league, owned by the CBC Distribution and Marketing company, filed suit in the Eastern District of Missouri for a declaratory judgment that Major League Baseball's Advanced Media licensing arm cannot require it to take out a license to use game statistics on pain of copyright infringement. (Use of player images might raise right of publicity issues, but those rights are owned by the players, not by the leagues).

Kevin Heller's Tech Law Advisor website posted a blog on the issue last year, and CNN ran a story last week. One would have thought that the Second Circuit's NBA- Motorola decision had ended claims in game data, but the league's Jim Gallagher has been quoted as saying: "Player statistics are in the public domain. We've never disputed that. But if you're going to use the statistics in a game for profit, you need a license from us to do that. We own those statistics when they're used for commercial gain." That's an unusual view of the public domain to say the least; it is a view that the public domain ceases to exist once someone can figure out how to make money off it. And it is the lure of the money that CDM and other sports leagues are making that has brought the matter to a head.

Major League Baseball was successful in getting CDM to pay a license fee in the past, but according to CNN, the Players' Association (?) declined to enter into a new one, prompting the suit.

Tom Waits

Tom Waits has always been unique, and well aware of his unique voice and vocal style, he has been aggressive in protecting it, beginning with his well-publicized suit against Frito-Lay in 1990. An article in today's New York Times provides an update of his efforts and his rationale for spending so much time suing those who use imitators, including an award a week ago in Spain against Audi. Another is pending in Germany against Opel.

In all these cases, an advertiser has approached Waits to use his voice in an ad. Waits says no, and the agency hires another singer to mimic him, the jist being to fool the public into thinking it was Waits singing. The Opel case may be something of an exception because the imitator is only accused of performing in a "suspiciously Waitsian voice." What baffles me is why, given his well-known position, they keep asking him and using imitators after he says no.

Waits has no problems with people performing in a way that imitates his voice, but he does take umbrage at people using his voice to sell underwear and cigarettes. His regards such uses as a violation of his moral rights, as unscrupulous behavior by evil doppelgangers, and theft of his property. He has been 100% successful so far, as all defendants have been "Down by Law."

Thursday, January 19, 2006

Preliminary Injunctions

I had planned to post this yesterday, but as with Monday's planned posting, both nature and Connecticut Light & Power's continued incompetence thwarted me for the second time this week. Yesterday morning, I was trapped in a commuter train for three hours after a tree hit it. At the same time, power went out at my house again after being on for only 12 hours since Saturday night: it won't be restored until Friday afternoon at best, with the prospect of pipes bursting because of the freezing temperatures. Meanwhile neighbors are driving across my lawn like it was a freeway. Not a good week for blogging or anything else.

The case I wanted to take up is the Ninth Circuit's January 11th opinion in LSG Architects, Inc. v. Concordia Homes of Nevada, which reversed, in part, a district judge who had declined to issue an injunction against the use of architectural plans beyond the scope of a license. The case raises a number of interesting points.

First, where the infringing activity is a one-off and has stopped by the time the preliminary injunction motion is filed, the Ninth Circuit held no injunction can issue due to mootness. The court of appeals went further though and spoke in constitutional terms: Article III requires a case or controversy which doesn't exist if the behavior has stopped. That reasoning seems to confuse remedial relief with subject matter jurisdiction. If no injunction was requested, there would be a case or controversy from the infringement claim. The fact that the activity has stopped may (but as we shall see below need not) argue against the need for a preliminary injunction, the constitutional controversy remains. The court wasn't suggesting dismissing the case entirely, but I am a bit baffled by its belief that it lacked constitutional power to issue an injunction in such circumstances.

Where there is a possibility that the infringing activity can be repeated, the court held that defendant's mere promise not to infringe is insufficient, by itself, not to issue an injunction, and that is one area in which the court reversed, holding: "Voluntary cessation of challenged conduct moots a case ... only if it is absolutely clear that the allegedly wrongful behavior could not reasonably be expected to recur." This argument is frequently made by defendants, and the Ninth Circuit's strong stance on the issue should prove helpful.

The final aspect of injunctive relief was the decision whether to issue what is called a "mandatory injunction." This type of injunction does not seek to preserve the status quo pending a determination on the merits, but instead effectively seeks the ultimate relief sought in the suit. For this reason, mandatory injunctions are disfavored and were by the Ninth Circuit in LGS. (In the LGS case, plaintiff sought the return of the allegedly infringing architectural plans used to build unauthorized homes).

Tuesday, January 17, 2006

Martin Luther King, Jr.

I had wanted to post this yesterday, but a combination of nature and Connecticut Light & Power's incompetence resulted in my being without power from Saturday night to late Monday night, and that was the least of the problems caused by the storm. It will be some time and many thousands of dollars until things are back to normal.

Among the many things written about Dr. King's birthday, only one article I saw, in the Washington Post, dealt with the copyright issues over his "I had a Dream Speech, and then briefly. In 1963, a district judge in the Southern District of New York engaged in pretzel-like contortions to avoid fofeiture, King v. Mister Maestro, Inc., 224 F. Supp. 101 (S.D.N.Y. 1963). A more results-oriented law and facts be damned opinion would be hard to find.

A rational view on this subject was expressed by the trial court in Estate of Martin Luther King Jr. Inc. v. CBS Inc., 13 F. Supp.2d 1347 (N.D. Ga. 1998), which held that the speech was in the public domain through general publication without notice. Citing the fact that King had (understandably) encouraged the widest possible press coverage and dissemination of copies of the speech (and without limitation on reproduction), the Georgia trial court rightly characterized these activities as "almost epitomiz[ing] the definition of a general publication." The opinion was not, though, free of error; in particular, the trial court mistakenly considered the public performance of the speech as a factor pointing toward a general publication. This was reversible error, and indeed, the Eleventh Circuit subsequently reversed.

The majority opinion in the Eleventh Circuit, by Chief Judge Anderson, was careful to note that its decision took place in the context of the district court's grant of summary judgment in favor of defendant, CBS. CBS could, the court observed, still prevail on general publication grounds if certain facts involving authorized publication were established. Nevertheless, there was more than enough in the record to support the district court's decision: the distribution of multiple copies of King's speech to members of the press, without notice, and without restriction on its further distribution, clearly resulted in a general publication. The court of appeals expressed concern that "an author whose message happens to be newsworthy" should not be forced "to choose between obtaining news coverage for his work and preserving his common-law copyright." Dr. King could, however, have easily accomplished both goals by restricting further distribution of copies. Or, alternatively, he could have opted for the widest possible dissemination and federal protection merely by placing a copyright notice on the copies. The court of appeals' solicitude for Dr. King is understandable (although why this sympathy should extend to his estate is unclear, given its rather aggressive commercial practices), but its stretching of the boundaries of the law should still be criticized.

Friday, January 13, 2006

The Other Munich Movie

In today's The Wall Street Journal's "Weekend Journal" section there is an article by Jon Weinbach, entitled "The Other Munich movie" (p.W4). As the article begins, "Nearly everyone who's seen Steven Spielberg's 'Munich' seems to have a strong opinion about the movie." My own view is strongly negative, and of his screenwriter, unprintable. But as Mr. Weinbach points out, "Now there's something else to add to the discussion: It turns out there was a cable-TV movie made 20 years ago about the same historical events, and some people involved in that production say the Spielberg movie is getting too much credit for originality."

The earlier film is called "The Sword of Gideon" (with Steven Bauer, Michael York, Rod Steiger, and Colleen Dewhurst). It too "focuses on an Israeli agent named Avner who faces a crisis of conscience after helping assassinate Palestinians believed to be behind the Munich slayings." The article points out other similarities, but importantly notes that similarities should be expected because both films are based on the same 1984 book, "Vengeance," by George Jonas, as well as, to some extent, the actual events.

But beyond this, there are some less explainable similarities, including details not found in the book and certain camera angles. Robert Lantos, producer of "Sword of Gideon," is quoted as saying "some parts of the current film are 'almost re-enactments' of his 1986 work. 'It's a testament to the cunning and foresight of Spielberg's publicity machine that 'Sword of Gideon' has not made it onto anyone's radar, he says."

Whether any of this would amount to infringement is highly doubtful, and the kvetching may just be jealousy. But if one truly wants foresight, consider that Universal, which has distribution rights to Munich, owns the film rights to "Vengeance" and the remake rights to Sword of Gideon.

Thursday, January 12, 2006

Sovereign Immunity

The Supreme Court yesterday did something doubly unusual: it issued an opinion rejecting a state's claim to sovereign immunity and did so in a unanimous opinion, written by Justice Scalia. The case is Goodman v. Georgia. The state of Georgia has been one of the most extreme advocates of sovereign immunity, and I had first hand experience with it in a copyright infringement suit I filed against the state on behalf of a software company that designed its web portal.

The Court's decision yesterday refers to its infamous Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999) opinion, which seemingly spelled the end of most efforts to hold states accountable in money damages for copyright and patent infringement. I have long been scandalized by the Court's sovereign immunity case law, which I regard as a power grab at the expense of Congress, and one in which, Peanuts like, a football is put down only to be removed at the last minute. When I worked for Congress, staffers fantasized about passing the same legislation repeatedly, each time curing each of the Court's phony excuses for striking the legislation down (e.g., not enough witnesses, not enough evidence of infringement by states). Whether this would have been an effective tactic or not (given Marbury v. Madison), we at least would have been in the Court's face and would have been telling it we were an equal branch of government that would not be lectured to.

Yesterday's decision offers no solace to intellectual property owners, alas. The basis for the decision was the Court's belief that whatever may be the scope of the "prophylactic" enforcement powers of Congress under Section 5 of the 14th Amendment (something there is a split about), there is no disagreement that Section 5 can authorize Congress to provide for money damages against states for direct violations of the substantive provisions of 14th Amendment. In the case at bar, since the 14th Amendment incorporates the 8th Amendment's ban on cruel and unusual punishment, a claim for violation of the 8th Amendment provided a constitutionally sound basis for a damages claim.

Copyright infringement actions, however, seek to vindicate only statutory rights, and thus do not benefit from yesterday's decision.

Tuesday, January 10, 2006

In Praise of Imitation

My college degrees are in music theory and composition, the "and" signifying that I both analyzed what the greats had done and wrote my own pieces. These two processes were, however, rarely separate: much of what I composed was an imitation of what I was studying, and I went through compositional fads related to my then-current theoretical interest. When I was infatuated with the Second Viennese School of Schoenberg, Berg, and Webern, I wrote music with twelve-tone rows, and not being original, I used one of theirs. When later I was into the avant-garde Polish music of Penderecki and Lutoslwaski, I tried to write like them.

I eventually stopped composing because I came to the conclusion that I had no authentic voice of my own (although I still play an instrument, clarinet). I concluded all I could summon was a weak imitation of others' voices. I sometimes wish I had kept at it, not out of a belief I would have gotten better, but for the sincere joy of it. Yet, I realized then, as now, that as Oscar Wilde quipped, "all bad poetry is sincere," and as we shall see, he should know.

The fear of influence in music is well-documented, including Brahms' complaint of Beethoven "dogging" his footsteps, and the unflattering comparison of his music to Beethoven's. In literature, Harold Bloom wrote a classic book in 1967, published in 1973, called The Anxiety of Influence. On pages 5-6, Bloom writes:

"My concern is only with the strong poets, major figures with the persistence to wrestle with their strong precursors, even to the death. Weaker talents idealize; figures of capable imagination appropriate for themselves. But nothing is got for nothing and, and self-appropriation involves immense anxieties of indebtedness, for what strong maker desires the realization that he has failed to create himself? Oscar Wilde, who knew he had failed as a poet because he lacked strength to overcome his anxiety of influence, knew also the darker truths concerning influence."

In Benjamin Kaplan's The Uneasy Case for Copyright, he states: "Copyright is in danger of stifling such wrestling with ourselves and with our predecessors: by seizing on all appropriation as a legal -- and moral-- shortcoming -- we fail to appreciate the creative process, and will end up the poorer for it." He also refers to a natural right to imitate, a nice twist on the different way the term "natural rights" is used in copyright discourse.

Copyright is often cast as a battle between creators and users, but more importantly, it involves issues with other authors, and within ourselves. We will be poorer, as Kaplan noted and as Bloom cautioned, if we don't facilitate the working out of creative anxieties.

Monday, January 09, 2006

Going Ape Over King Kong

As Peter Jackson's ode to animal love closes in on $200 million in B.O. (as the trades call it), not far off are the inevitable infringement suits brought by forelorn scriptwriters who had previously given their manuscript to someone who knows someone who said Peter would be interested. A January 8, 2006 article in the Los Angeles Times provides a wrinkle on the defense of such suits: the existence of an earlier gorilla craze in the 1920s and 1930 (arising out of Teddy Roosevelt's African safari), in particular "Ingagi," which predated by three years Merian Cooper and Ernest Schoedsack's "King Kong."

Ingagi was released, appropriately by Congo Pictures Ltd. The ads for the film stated it was based on an expedition to the Congo by Sir Hubert Winstead of the Royal Geological Society. In Chicago's Garrick Theatre, large crowds were drawn by "lurid lobby advertising depicting a gorilla fondling a near-nude native woman." This not suprisingly led to problems with the Hays Office censorship enforcers, causing the films' producers to state that "Sex perversion or any inference of it is forbidden," along with a ban on "complete nudity." This only helped to draw viewers. The documentary nature of the film was later shown to be fradulent.

In the movie, a bare-breasted woman is carried off by a gorilla who is shot, thereby foreclosing its ability to climb the Empire State Building. Other women are depicted as willing mates of gorillas. The LA Times article concludes:

"Although Merian C. Cooper never listed 'Ingagi' among his influences for
'King Kong,' it's long been held that RKO green-lighted 'Kong,' despite the
studio having fallen into receivership in the midst of the Depression, because
the bottom-line example of 'Ingagi': Gorillas plus sexy women in peril equals
enormous profits. And it that was indeed the case, there's no doubt that
'King Kong' was by far the best thing to be spawned by 'Ingagi."

Friday, January 06, 2006

Now that's a Kiss

As we await the Second Circuit's opinion in the Martignon case (and I await it with great trepidation), all has not been quiet with the bootleg statute (17 USC 1101). Readers will recall that there was a civil challenge in Kiss Catalog, Ltd. v. Passport Int'l Prods., 350 F. Supp.2d 823 (C.D. Cal. 2004), by Judge Rea. Judge Rea's opinion was, in my view, not much more than a warmed-over rehashing of Judge Baer's atrocious handiwork in the Martignon case.

After Judge Rea's opinion, the United States, which was not a party to the Kiss case, and was not aware of it, sought leave to intervene, and then for reconsideration. Judge Rea granted the request and then died. The case was transferred to Judge Dale Fischer, who handed down his opinion on the motion for reconsideration on December 21, 2005. He found the statute to be constitutional.

The opinion began with a whopper of an error which made me worried: that Congress believed it was acting under the Copyright Clause. Whatever one may think of the merits of the provision, that is simply false. There is no doubt we knew we were legislating under the Commerce Clause. Graciously, however, Judge Fischer indicated that "Congress's intent is not dispositive;" he had an obligation to try and save us from ourselves by scouring the Constitution for authority we may have overlooked, like: the Commerce Clause. (That damn Article I is just too long for Congress to have noticed it, I guess).

Sarcasm aside, Judge Fischer did find that the provision is within Congress's Commerce Clause power, especially under Gonzales v. Raich, 125 L.Ed 2195 (2005) and Lopez. He went on to also discuss, in dicta, whether the statute is inconsistent with the Copyright Clause, and agreeing with the Government, held that nothing prohibits Congress from protecting similar things in different ways, "so long as the Constitution allows it do so," discussing Railway Labor Executives, and in any event finding no fundamental conflict because the subject matter of the two statutes is different.

While I wish some court, somewhere will understand that we always knew we were acting under the Commerce Clause, I am very happy with the outcome.

Thursday, January 05, 2006

Aharonian v. Gonzales

On January 3d, Judge Marilyn Patel of the Northern District of California (of Napster fame), handed down an opinion in Aharonian v. Gonzales, a pro se case brought by Gregory Aharonian seeking declarations that (1) computer source code consists entirely of algorithms and data structures considered by him to be unprotectible ideas or processes under 17 U.S.C. 102(b); (2) that "idea" and "expression" are unconstitutionally vague in violation of the Due Process Clause of the Fifth Amendment; and (3) that software is not covered by the Copyright Act.

Aharonian's interest (and what gave him standing, the court found, rejecting the Government's challenge on that point), was his development of an automated prior search tool that will assist in finding relevant prior art so that people may avoid patent and copyright infringement. His tool is to consist of three parts: (1) an expert system containing a programmatic representation of patent and copyright law; (2) a database of existing source code; (3) an analytical tool applying (1) to (2) to determine the likelihood of infringement or invalidity.

Judge Patel was troubled by the generalized nature of the attack on all software as consisting of ideas or algorithms. Relying, interestingly, on among other sources, Wikipedia, she noted the choices available to programmers in expressing their ideas, and on that basis rejected Aharonian's across-the-board challenge, further holding that if Ahaonian "copies source code that is protected by copyright law, he infringed the copyright regardless of whether the ideas underlying the source code are patentable."

The attack on idea (and "expression") as unconstitutionally vague was rebuffed with a flourish: while the terms are inexact, "the fact that words in a statute require a certain degree of judicial interpretation is not merely permissible -- it is bedrock assumption of our common law system."