Thursday, August 31, 2006

The 8th Circuit Gets Technical

Section 408(c)(1) provides

The Register of Copyrights is authorized to specify by regulation the administrative classes into which works are to be placed for purposes of deposit and registration, and the nature of the copies or phonorecords to be deposited in the various classes specified. The regulations may require or permit, for particular classes, the deposit of identifying material instead of copies or phonorecords, the deposit of only one copy or phonorecord where two would normally be required, or a single registration for a group of related works. This administrative classification of works has no significance with respect to the subject matter of copyright or the exclusive rights provided by this title.

One might think then that getting a registration in the right class is not such a big deal. In Action Tapes, Inc. v. Mattson, issued yesterday, the Eighth Circuit took a technical approach to the registration issue. Plaintiff created eight graphic embroidery designs. It then fixed those designs on memory cards that were inserted into sewing machines capable of reading the cards and then emebedding the designs on fabric and apparel. Defendant is alleged to have purchased lawfully made memory cards containing plaintiff's designs, and then renting the cards to customers. Plaintiff alleged such rental did not fall within the first sale doctrine of Section 109 because of the computer program exception contained therein. In other words, plaintiff alleged it was the owner of a computer program.

Plaintiff only had visual arts registrations, however, and had made no deposit of software. The court of appeals found "insufficient evidentiary support int he rcords" that the certificates obtained related to a computer program. While this is no doubt correct, a less technical approach, based on Section 408(c) would have been to simply say plaintiff presented no evidence it owned a computer program.

Wednesday, August 30, 2006

T.B. Harms

Last week, I referred to the "arising under" test for determining whether a case belongs in state or federal court. I mentioned Judge Friendly's famous opinion in T.B. Harms v. Eliscu, 339 F.2d 823 (2d Cir. 1964) as the standard bearer, but noted a belief there are some problems with that opinion. Here's why I think that.

Edward Eliscu was one of two lyricists who added words to music composed by Vincent Youmans for use in the motion picture "Flying Down to Rio." Both lyricists assigned their rights to the studio, RKO. A music publisher subsequently claimed that Eliscu assigned rights to it. The publisher produced a transfer agreement, but the agreement was not signed by Eliscu, who denied he had ever executed such an agreement. Eliscu filed suit in New York state court seeking a declaration that he was the owner of his proportionate share of the renewal rights and seeking an accounting of money from exploitation of the work, based on his position that he had not signed the agreement.

Seven weeks later, the music publisher filed in federal court a single count action for infringement and seeking a declaration that it owned Eliscu’s renewal interest. Eliscu moved to dismiss for failure to state a claim and for lack of subject matter jurisdiction. The parties submitted affidavits, prompting Judge Weinfeld to convert the motion into one for summary judgment.

Looking at the facts pled in the complaint, District Judge Weinfeld held that "no matter how viewed, the claim in substance seeks to enforce the alleged 1933 agreement by Eliscu, [and] as part of the relief it seeks, to assign to the plaintiff in the renewed copyrights." This was certainly correct: everything turned on whether the agreement produced by the publisher was valid or fraudulent. That was an issue purely of state law. Judge Weinfeld was correct in finding that plaintiff could not obtain jurisdiction by pleading that if his title was established, defendant was infringing its title. This pointed out another problem with plaintiff’s complaint. There was no allegation that Eliscu had exploited the work, and therefore he could not be infringing. Nor did the declaration for ownership of the renewal copyright interest advance matters since plaintiff’s ownership claim was purely contractual, and was not based on any construction or interpretation of the renewal provisions of the Copyright Act: if the assignment was valid, the renewal interest was conveyed; if it was not, plaintiff had no claim. The case was, therefore, one of enforcing the contract, and that dispute was properly the subject of the earlier-filed state court action.

The Second Circuit, per Judge Friendly, affirmed, but took exception to what it perceived to be Judge Weinfeld’s construction of arising under jurisdiction as being limited to infringement actions:

"[T]he jurisdictional statute does not speak in terms of infringement, and the undoubted truth that a claim for infringement 'arises under' the Copyright Act does not establish that nothing else can. Simply as a matter of language, the statutory phrasing would not compel the conclusion that an action to determine who owns a copyright does not arise under the Copyright Act, which creates the federal copyright with an implied right to license and an explicit right to assign. But the gloss afforded by history and good sense leads to that conclusion as to the complaint in this case."

The final sentence referred to the historical cutting back on the broad construction of subject matter jurisdiction left open by Osborn v. Bank of United States. The reference to the Copyright Act as having created the cause of action is to Justice Holmes’ opinion in American Well Works. Had the court of appeals’ opinion stopped there, all would have been well-enough. Indeed, the circuit noted that plaintiff’s claim was not within Holmes’ creation test, and that the claim did not fall with Smith v. Kansas City Title & Trust Co.’s need to determine the meaning or application of the Copyright Act. That should have been the end of the matter. Judge Friendly ventured much further.

Mindful of the hazards of formulation in this treacherous area," the court of appeals held that an action "arises under" the Copyright Act if and only if "the complaint is for a remedy expressly granted by the Act, e.g., a suit for infringement or for the statutory royalties for record reproduction . . . , or asserts a claim requiring construction of the Act, as in De Sylva [v. Ballentine, 351 U.S. 570 (1956)], or, at the very least and perhaps more doubtfully, presents a case where a distinctive policy of the Act requires that federal principles control the disposition of the claim. The general interest that copyrights, like all other forms of property, should be enjoyed by their true owner is not enough to meet this last test."

Judge Friendly set forth two acceptable vehicles for subject matter jurisdiction, and one possible vehicle. The two acceptable vehicles are: (1) a claim for a remedy expressly granted by the Copyright Act, "e.g., a suit for infringement or for the statutory royalties for record reproduction;" and (2) a claim requiring construction of the Copyright Act. As a possible vehicle, he listed "a case where a distinctive policy of the Act requires that federal principles control the disposition of the claim." This formulation does not encapsulate, neatly at least, the governing Supreme Court case law (at that time or subsequently), and its choice of terminology is confusing, especially "remedy." Does this term refer to the old English forms of action where a cause of action was inseparable from the remedy sought? Or, does the term refer to a cause of action as one through which plaintiff is entitled, generally, to a particular type of remedy?

The Supreme Court formulation is more simply stated: subject matter jurisdiction exists if the cause of action is created by the Copyright Act (American Well Works) or if plaintiff’s right to relief under its well-pleaded claim requires resolution of a substantial question of copyright law (Christianson).

Comparing the Supreme Court’s formulation to T.B. Harms’ reveals the latter’s shortcomings. T.B. Harms’ first category may be intended to be equivalent to American Well Works, but by using "remedy," T.B. Harms invites attention away from whether the claim is one for a right created by the Copyright Act and toward non-dispositive issues such as remedial measures for violation of the right. For example, is a claim that requests an injunction a copyright claim merely because an injunction is sought? The answer is no. As a state court observed in denying a motion to dismiss in favor of federal jurisdiction: "The suit does not turn into one for copyright infringement because there is a request for an injunction; injunctive relief may be, and often is demanded with declaratory relief pursuant to state law." Is a claim that seeks an accounting of defendants’ profits a copyright claim? The answer here too is no, since disgorgement of ill-gotten gains is common in many state law actions, such as unfair competition. Is a claim that seeks statutory damages under section 504(c) a copyright claim merely because, in the prayer for relief, that measure of damages is sought? Here, statutory damages are an uncommon remedy, and certainly when asked for in the amounts provided by Section 504(c), unique to that section, but a state cause of action is not transformed into a federal cause of action merely by requesting statutory damages.

Either the cause of action is one arising under the Copyright Act or it isn’t. If it isn’t, asking for monetary damages found uniquely under the Act does not change the elements of the cause of action. The correct approach is to determine whether plaintiff’s complaint actually pleads the elements required for an infringement action – if so, one would expect the prayer for relief to request infringement, rather than contract remedies, but it is the cause of action that determines whether jurisdiction exists. Yet, one reads numerous opinions in copyright cases, citing T.B. Harms, finding subject matter jurisdiction based on the damages sought.

If, as in T.B. Harms, the only issue to be resolved is whether the contract assigning copyright rights is fraudulent, the cause of action does not become a copyright cause of action merely because plaintiff asks for statutory damages, for the breach or for that matter an injunction against future infringement for the breach (as plaintiff in T.B. Harms did). T.B. Harms held to the contrary on the facts, and thus Judge Friendly’s use of "remedy" was an unfortunate linguistic lapse, an error heightened by the example he gave of "statutory royalties for record reproduction." The reference to "statutory royalties for record reproduction" did not concern claims for unpaid royalties due under a contract, but rather to the mechanical reproduction compulsory license for nondramatic music works embodied in phonorecords, then contained in §1(e) of the 1909 Act and now contained in Section 115 of the 1976 Act. Failure to pay these royalties results in loss of the compulsory license, thereby automatically rendering the person who makes the reproductions an infringer (unlike a contractual failure to pay royalties).

Judge Friendly’s first category should, nevertheless, be understood as a reiteration of American Well Works’ "creation" test: does the Copyright Act create the cause of action that forms the basis of the claim? This prong of T.B. Harms appears, however, to be considerably narrower than American Well Works, encompassing only infringement actions. Questions involving other issues arising under the Copyright Act, such as claims to authorship, renewal rights, and the like fall under "a claim requiring construction" of the Act. Judge Friendly erroneously viewed these claims as falling with Smith v. Kansas City Title & Trust. Smith, though, permitted federal subject matter jurisdiction over admitted state claims where resolution of those claims required resolution of a substantial question of federal law. In the case of a declaratory judgment action by an individual who asserts he or she is the author or co-author of a copyright by virtue of his or contributions, the issue involves a construction of the Copyright Act – what is the nature of authorship – and arises only under the Copyright Act.

Ironically, given his criticism of Judge Weinfeld, Judge Friendly made the same mistake in narrowing American Well Works to infringement actions, rather than also encompassing as it surely does, these other issues. Smith, which Judge Friendly cited as support, was a state law action in which violation of federal law supplied the necessary element of illegality for establishing the state claim. The examples given by Judge Friendly, however, all involved exclusively federal issues. Judge Friendly simply misunderstood Smith.

Judge Friendly’s third category, one where "federal law may govern what might seem to be an issue of local law because the federal interest is dominant," might be relevant in cases where, for example, at issue is a federal policy concerning renewal rights being conveyed in a contract. Ordinarily, whether an agreement adequately assigns a property right, even a federally created one, involves only state rules of contract construction. However, given the paternalistic underpinnings of much of the Copyright Act, reflected in measures adopted by Congress to ensure authors do not inadvertently convey their copyright interests, courts have created a federal common law of renewal conveyance requiring a heightened level of specificity in order to fulfill Congress’s objectives. A dispute over whether a contract conveyed renewal rights thus implicates federal common law. Another example arises when there is a need to interpret whether the writing requirement of Section 204(a) has been complied with.

Tuesday, August 29, 2006

Bochco Boffo

Steven Bochco’s television series ‘‘City of Angels” was the subject of a 2003 opinion in the 9th Circuit. Plaintiffs sued on three works: a treatment called "Combat Zone," and two scripts, one called “About Face," and the other "As Long as They Kill Themselves." All the works focused on an Army doctor training program set in a inner city hospital in Los Angeles with a predominantly black staff. (Plaintiffs had access themselves to articles in the Los Angeles Times about a simialr program at LA's King Drew Hospital). Reversing a district court’s grant of summary judgment in favor of defendant, the court, per Judge Kozinski, took a “wholistic” approach to extrinsic similarities:

"[T]he presence of so many generic similarities and the common patterns in which they arise do help the Metcalfs satisfy the extrinsic test. The particular sequence in which an author strings a significant number of unprotectible elements can itself be a protectible element. Each note on a scale, for example, is not protectible, but a pattern of notes in a tune may earn copyright protection. A common 'pattern' [that] is sufficiently concrete . . . warrants a finding of substantial similarity."[1]

Metcalf v. Bochco confused protectibility with infringement, and in doing so unwittingly provided a tempting roadmap on how plaintiffs can best position their case: focus on the overall selection and sequence of similarities, rather than pointing to individual similarities. Metcalf’s shelf-life, however, appears to have been short. On the copyrightability side, in Satava v. Lowry,[2] the Ninth Circuit acknowledged the principle that a combination of unprotectable elements may qualify for protection citing Metcalf, but then added: “It is not true that any combination of unprotectable elements automatically qualifies for copyright protection,”[3] finding the sculptural work at bar not protectible. Similarly, in Lamps Plus, Inc. v. Seattle Lighting Fixture Co.[4] the Ninth Circuit found a lamp unprotectible as a “mechanical” combination of four-preexisting elements, citing Satava.[5]

The approach taken in Bochco may have been the result of confusion over defendant Bochco’s access to the work. The access was alleged to have come via a friend of both parties, actor Michael Warren, with whom plaintiffs had worked with in developing their scripts. Mr. Warren appeared in Bochco’s work. Plaintiffs alleged that Warren told them he intended to provide the scripts to Bochco. Warren was a defendant, but was dismissed before trial, and testified on Bochco’s behalf, stating he had not given plaintiffs’ script to Bochco. Before the trial court, earlier at the summary judgment stage (the stage which formed the basis for the appeal), the district judge held that “plaintiffs’ interrogatory responses attesting to their submission of plaintiff’s works to Defendant Warren, and to Defendant Bochco, constitute sufficient evidence to establish that Defendant Bochco and Waren had access ….”[6]

This is a unique approach to finding access: plaintiff states in interrogatory responses that a third party told plaintiff he intended to provide defendant with a copy of the work. Regardless of any wrinkles in the laws of evidence, the substantive law of copyright does not regard such responses as satisfying the legal standard of access: there must be reasonable evidence that defendant in fact received the manuscript (absent widespread distribution). In Bochco, no such evidence existed. On appeal, the very slim reed created by the trial court became a mighty redwood tree:

"Indeed, here we have more than access: One of the defendants, Michael Warren, allegedly stated that he had read three versions of the script, and had passed them on to defendant Steven Bochco, who had also read them and liked them. Warren and Bochco were intimately involved with “City of Angels,” as star and writer, respectively. If the trier of fact were to believe that Warren and Bochco actually read the scripts, as alleged by the Metcalfs, it could easily infer that the many similarities between plaintiffs’ scripts and defendants’ work were the result of copying, not mere coincidence."[7]

Mere allegations are not, however, sufficient, to survive summary judgment. Bochco went even further, though, by suggesting that allegations of access through an intermediary are sufficient to send the case to a jury, which may then find for plaintiff based on striking similarity and the inverse ratio theory. Bochco is singularly insensitive to the invitation to strike suits its created.

Indeed, on remand the jury found for defendants. Yesterday, the Ninth Circuit affirmed. The opinion goes into great detail on the issue of plaintiff's attempts to prove access through Warren, and is well worth reading for those in the trenches. Hats off to the outstanding lawyering of Lincoln Bandlow and Ed Ruttenberg, who tried the case and did the 9th Circuit briefing.

[1] 294 F.3d 1069, 1074 (9th Cir. 2002). The district court opinion, by Judge Kelleher, is 17 pages, but unreported. See Metcalf v. Bochco, CV 00-4550 RJK (C.D. Cal. March 27, 2001). Metcalf also contains an important interpretation of Cavalier v. Random House, Inc., 297 F.3d 815 (9th Cir. 2002), limiting that opinion to plaintiff’s unsuccessful effort to satisfy the extrinsic test by pointing to “random similarities scattered throughout the works.” 294 F.3d at 1079. Satisfying the intrinsic test is an entirely different matter than satisfying the extrinsic test, 3D, Ltd. v. Spectratek Technologies, Inc., 2002 U.S. App. LEXIS 15057 (9th Cir. July 18, 2002) (affirming grant of summary judgment for non infringement of polygon designs).
[2] 323 F.3d 805, 811-812 (9th Cir. 2003).
[3] 323 F.3d at 811.
[4] 345 F.3d 1140 (9th Cir. 2003).
[5] 345 F.3d at 1147.
[6] See district court opinion at p.11 ¶1.
[7] 294 F.2d at 1075.

Monday, August 28, 2006

The EFF Sues Barney

The EFF is seeing purple, as in Barney. A suit filed last week in San Francisco seeks to stop what the EFF regards as abusive behavior by the usually well-behaved dino. Here is a link to an EFF case page about the litigation. My twins have shown little interest in Barney, preferring Dora the Explorer and my favorite, The Backyardigans. Barney has long been a flashpoint in cultural debates. (Please notice my restraint in this posting, part of my continuing efforts to be Mr. Nice Guy). The case will no doubt touch on those debates as part of its effort to declare Barney fair game for parodies of all sorts.

The suit was filed on behalf of Stuart Frankel (not to be confused with my friend and copyright lawyer Simon Frankel who is also in San Francisco). Stuart's website, has received a number of cease and desist letters from Barney's adult guardians, Lyons Partnership of Allen Texas. Lyons has been quite litigious.

I Love You, You Love Me.

Friday, August 25, 2006

Mr. Nice Guy

After four lackluster and overly critical posts (triggered by a classic relaxing family vacation, and then some), I am back home and determined to regain some equanimity by accentuating the positive. Here is a link to an August 23rd Tenth Circuit opinion, 1Mage Software, Inc. v. Reynolds & Reynolds Co. There are two issues of interest in the opinion; the first involves "arising under" subject matter jurisdiction, the second arbitration. I will cover only the first issue, although the second is important too.

Federal question jurisdiction is provided for as a general matter in 28 USC 1331, and for IP specifically in 28 USC 1338(a). In the latter case, not just original, but exclusive jutrisdiction is provided for. But the dispute must still "arise under" the Copyright Act for original, exclusive jurisdiction to lie in the federal courts. If every dispute involving a copyright work was deemed to arise under the Copyright Act, the task would theoretically be easy. Courts have, however, rejected such an approach. Say, for example, a film studio gets financing for a movie and the bank takes a security interest. The film studio doesn't pay up, and the bank wants to foreclose on the copyright. Does such a dispute arise under the Copyright Act? No.

Contracts are another and the most frequently litigated area in which arising under jurisidiction disputes occur. Two parties enter into a licensing deal. The licensee breaches and the licensor says, you breached and now you are an infringer because your use is without a license. Very long chapters in treatises can be written on this subject.

The classic case on point is the legendary Henry Friendly's T.B. Harms Co. v. Eliscu, 339 F.2d 823 (2d Cir. 1964). T.B. Harms was thrown overboard for awhile in the Second Circuit, but reinstalled by Judge Leval's opinion in Bassett v. Mashantucket Pequot Tribe, 204 F.3d 343 (2d Cir. 2000)(Judge Leval clerked for Judge Friendly). Judge Friendly's T.B. Harms opinion is not without its problems and may even have been wrong on the merits as the law clerk for him at the time mentioned to me once, but I am accentuating the positive today. The positive is this: the purpose of T.B. Harms is to ensure that exclusive federal jurisdiction is not knocked out at the FRCP 12(b)(6) stage, when facts are likely to be in short supply. It may turn out after discovery that the dispute really is a pure contract dispute, and if so and no other basis for federal jurisdiction exists, the case will be dismissed since lack of subject matter jurisdiction may be raised at any time.

The iMage opinion joins a long line of other circuits in adopting Judge Friendly's helpful approach. Have a nice weekend.

Thursday, August 24, 2006

The Tenth Circuit's Harold Department Stores

LBK in Houston pointed out that yesterday's posting on an August 7th 10th Circuit case actually involved a quotation from an expert on economics in an earlier 10th Circuit case, Harolds Stores, Inc. v. Dillard, Inc., 82 F.3d 1533 (10th Cir. 1996). Harold's must have been a wild case, since in addition to the aforementioned economics testimony, the Tenth Circuit affirmed a jury award of lost goodwill as a form of actual damages under the Copyright Act.

The award appears to have been motivated by unobjected-to testimony from a company official that identifiable dollar losses occurred from lost goodwill and by a survey in which respondents (undergraduate women shopping for skirts) indicated that when they saw infringing goods at defendant that they thought unique to plaintiff, they were less likely to shop at plaintiff in the future for other goods. No reason for this alleged inclination is given, though, and certainly one important possibility, price, has nothing to do with lost goodwill.

To the extent the survey was legitimate (a decidedly unlikely proposition), it goes to violation of the trademark laws, not copyright.

Wednesday, August 23, 2006

Experts and the Things They Say

Experts are a common feature of American litigation, for good, ill, or whatever. Here is a discussion of one's testimony on a common issue from a 10th Circuit opinion of August 7, Champagne Metals v. Ken-Mac Metals, Inc. in a state anti-trust claim about the effect of copyright infringement. The expert testified in an earlier opinion, Harold's Stores, to be discussed tomorrow.

"The economist testified that the defendant's illegal infringement on the plaintiff's copyrights didn't just do damage to [the plaintiff], it sen[t] a signal to anybody else that wants to enter this market, that if you come in here, you're going to get squashed because this big company will exercise its power and take your copyrights. In that regard, in economics, we would say it raised a barrier to entry. That itself is anti-competitive. That, in my judgment, is an unreasonable restraint of trade."

Tuesday, August 22, 2006

The First Circuit Misses the Boat Again

The First Circuit has done it again, with four days of its last opinion, this time in a VARA case. The result is right, but to me it misapprehends the right analysis. The case is Phillips v. Pembroke Real Estate, Inc., issued today. The case arises under the Visual Artists Rights Act (VARA), in particular whether artists granted the anemic rights in Section 106A were granted the right to prevent the removal of their work, even if not physically destroyed under the theory that removal by itself constitutes destruction. The court of appeals framed the issue incorrectly as: "Either VARA recognizes site-specific art and protects it, or it does not recognize site-specific art at all." That's not the issue; the issue us whether a work of visual art protected under Section 106A is protected against removal under the aforesaid theory. The answer to that is clearly no.

The purpose of VARA is “not . . to preserve a work of visual art where it is, but rather to preserve the work as it is.”[1] There is, in short, no right under VARA requiring a work of art to remain at the site of its original installation.
The legislative history states that removal of a work of art generally comes within the Section 106A(c) exclusion from liability because location is a matter of presentation.[2] Liability results only if in the process of removal, there is a destruction, mutilation, or other modifications to the work that are prejudicial to the artist’s honor or reputation, but in such an event it is those acts and not the mere fact of removal that gives rise to liability. Thus, actual physical alteration is required, not just hurt feelings or a strongly felt belief that the artist’s vision had been violated.[3] VARA is very clear on this point for a good reason: during its drafting, pitched cultural battles were taking place over the concept of “site-specific art.” The term generally refers to art created to exist in a specific site by virtue of its relationship to surrounding elements such as the landscape, other art, buildings, vista and the like. If a work of art is removed from its intended context, it is believed to have lost its identity, even hypothetically said to have been “destroyed.”[4] A well-known example is the removal of Richard Serra’s Tilted Arc from Foley Square in Manhattan. The removal of this sculpture was taking place when VARA was drafted, and Mr. Serra lobbied the House Subcommittee on the question. The previously quoted report language was written with Tilted Arc in mind, and indicates that Mr. Serra would not have had a cause of action under VARA (nor did he have one under Section 106, for that matter).[5] Removal of a work of visual art that is incorporated in a building (rather than being placed near the building or on its plaza or in its lobby) is treated separately in Section 113(d).
The contretemps over Tilted Arc was a cause celebre, and illustrates why Congress choose not to grant artists a right to insist on their work remaining at the site on which it was originally installed. Titled Arc was commissioned by the General Services Administration’s Arts-in-Architecture program. The sculpture was 120 feet long, 12 feet high, 2-1/2 inches thick and weighed 73 tons. It was of Cor-Ten steel, a manufacturing material that is particularly subject to external rust. Serra had worked in a steel mill and was quite familiar with Cor-Ten’s properties, seeking an unfinished, raw, rusting look. The piece was set in Federal Plaza, and was placed in a manner so as to cut-off one’s ability to walk across the space, in order to create a confrontation with those who used the space. Serra commented “I don’t think it the function of art to be pleasing. Art is not democratic. It is not for the people,” a sentiment that is at odds with the plaza as a public space, and a heavily traveled space at that: the Javits building directly in front of the plaza houses 10,000 employees alone, many of them in the GSA’s own regional office.

[1] Board of Managers of SOHO Int’l Arts Condominium v. City of New York, 2003 WL 21403333 at *10 (S.D.N.Y. June 17, 2003).)
[2] H.R. Rep. No. 514 at 17.
[3] H.R. Rep. No. 514 at 17.
[4] See generally Miwon Kwon, One Place After Nother: Site-Specific Art and Locational Indentity (2004); Nick Kaye, Site-Specific Art: Performance, Place and Documentation (2000); Space, Site, Intervention: Situating Installation Art (Erika Sunderburg ed. 2000).
[5] See Serra v. United States Gen. Servs. Admin., 847 F. 2d 1045 (2d Cir. 1988). Phillips v. Pembroke Real Estate, Inc. 288 F. Supp. 2d 89, 99-100 (D. Mass. 2003); Board of Managers of SOHO Int’l Arts Condo v. City of New York, 2003 WL 21403333 (S.D.N.Y. June 17 2003) (focus of VARA is “not. . . to preserve a work of visual art where it is, but rather to preserve the work as it is”), on reconsideration, 2003 WL 21767653) (S.D.N.Y., July 31, 2003) (“nowhere in VARA does the statute make any legal distinction between site-specific and free-standing works”); English v. BFC&R East 11th Street LLC, 1997 WL 74044 (S.D.N.Y. Dec. 3, 1997), aff’d summary order, 198 F. 3d 233 (2d Cir. 1999); on summary judgment, 2004 WL 1982520 (S.D.N.Y. Sept. 8, 2004), later proceeding, 2005 WL 1153752 (S.D.N.Y. May 13, 2005).

An interesting example of the same result occurring in Europe may be found in unsuccessful attempt, in November 1991, by the heirs of Soviet artist Nikolai Tomski to prevent the city of Berlin, Germany, from dismantling his huge sculpture of Vladimir Lenin in response to political changes.

Monday, August 21, 2006

What is so Hard About the AWCPA?

The First Circuit has just issued its first, and I hope last opinion in a case purportedly under the Architectural Works Copyright Protection Act. The case, on appeal from the District Court of New Hampshire is T-Peg, Inc. v. Vermont Timber Works, Inc. Here is a link. (You will have to go to "Opinions," then "Last Week"). The court blows completely the fundamental distinction between protection for architectural plans (Section 102(a)(5)) and for architectural works (Section 102(a)(8)). Before 1990, only plans were protected, and only against copying as plans, not as embodied in a structure based on the plans. The 1990 Act did not change this law (hence the court of appeals erred by saying it was error for the district court to rely on pre-AWCPA case law on that point). The 1990 Act added protection in Section 102(a)(8) for the built structure; this was a new form of protection, with its own registration requirements and infringement analysis. The court of appeals cites this history but doesn't understand any of it.

Here is the relevant discussion:

"This more expansive definition means that the holder of a copyright in an architectural plan (such as Timberpeg) has two forms of protection, one under the provision for an “architectural work” under 17 U.S.C. § 102(a)(8), and another under the provision for a “pictorial, graphical, or sculptural work” under 17 U.S.C. § 102(a)(5). The legislative history confirms this point. See H.R.Rep. No. 101-735, reprinted in 1990 U.S.C.C.A.N. at 6950 (“An individual creating an architectural work by depicting that work in plans or drawing will have two separate copyrights, one in the architectural work (section 102(a)(8)), the other in the plans or drawings (section 102(a)(5)).”). "

The error, and it is profound, is in saying that because one owns rights in subject matter protected under Section 102(a)(5) that means you own rights in subject matter protected under Section 102(a)(5) and (8). The mistake is so simply stated that the court did so itself, but then somehow didn't comprehend the obvious implications of the statement: how can the owner of rights in a work protected under Section 102(a)(5) have two forms of protection, one of which isn't Section 102(a)(5)? The correct analysis is to say that the same individual may own rights in the separate copyrights provided for architectural plans and for architectural works, and may sue for infringement of both if the Office's regulations have been complied with. Then, in the resulting infringement analysis, each will be analyzed separately, and the plaintiff may prevail with respect to both claims if the requirements for both are met.

The court of appeals however conflated both forms of protection into one. I cannot fathom why, with clear Copyright Office regulations and circulars, courts can't seem to get such a simple distinction straight. Its like not being able to chew gum and walk at the same time.

Thursday, August 17, 2006

Porno Leads the Way Again

With the increase in the number of web sites offering videos, the number of copyright suits has increased too. As has been the case from the inception of the VCR, pornography is a significant source of litigation. Here is a recent complaint filed in the Northern District of California by the IO Group, d/b/a Titan Media (a creator of gay male porn) against Veoh Networks (, a recent entrant into the field. There are direct and third-party claims over the copying and distribution of such works as "Boner," "Detour," "Don't Ask Don't Tell," "Heat," "Island Guradian," "River Patrol," and "SeaMen: Fallen Angel IV." A jury trial has been requested.

Tuesday, August 15, 2006

An Empirical Study of Legislative History

One of the most unsuccessful postings I think I have done was on the use of legislative history in general civil litigation. I regard it as unsuccessful because it led to polemical shouting and no real advance in understanding. I decided to do something different in light of this failure, namely a study of what courts actually do. I read almost 1,000 copyright opinions in which legislative history (mostly committee reports) are referred to. The results of that study are found in two documents I have created. The first, linked here, is six pages of single space string cites, broken down by circuit with a parenthetical about the issue for which the legislative history was used). The second, linked here, is a 26 page textual discussion of 22 Supreme Court opinions in which legislative history was used. I haven't attempted to be comprehensive, although I think 1,000 cases is a pretty good sample.

Monday, August 14, 2006

Gongs and Pacificism

Today's New York Times has a beautifully written obit. The obit masterfully draws out, but doesn't trumpet, wonderful paradoxes. The online version has a picture of the gong.

Ken Richmond, 80, Gong-Striker Familiar to Filmgoers, Dies

Ken Richmond, the 6-foot-5, ripple-armed wrestler who for decades was seen striking the gong that heralded the opening credits for dozens of films produced by the J. Arthur Rank Studio in England, died on Aug. 3 at his home in Christchurch, on England’s south coast. He was 80.

The cause was a heart attack, said Mr. Richmond’s frend, Chris Saunders.

The famous “golden gong’’ never rang for Mr. Richmond, however. It was actually papier-mâché, and as he often joked, “If you hit that gong, you would have gone straight through.”
It was in 1954 that Mr. Richmond was paid a one-time fee of £100 — about $280 at the time — to bare his chest, grease his body and take a slow, delicate swing at a gong about five feet across.

Mr. Richmond was actually the Rank company’s fourth mock ringer, and its last; the studio closed in 1980. At 265 pounds, Mr. Richmond brought his own athleticism to the job. He was a heavyweight wrestler who won a bronze medal at the 1952 Olympics in Helsinki, Finland, and a gold medal at the 1954 Commonwealth Games in Vancouver, British Columbia.

Kenneth Richmond was born in London on July 10, 1926. His father abandoned the family when Mr. Richmond was 3, according to his friend, Mr. Saunders. Mr. Richmond’s wife, Valentina, died in 1996. During his amateur wrestling career, Mr. Richmond began appearing as an extra or playing small roles, like that of the wrestler Nikolas in Jules Dassin’s 1950 film noir classic “Night and the City.” He also worked as a deckhand on whaling ships.
A Jehovah’s Witness for most of his life, Mr. Richmond was jailed as a conscientious objector in World War II. In later life, he was a door-to-door missionary for his church.
“He was a pacifist,” Mr. Saunders said. “The only time he ever mentioned using his strength, except as a wrestler, was when a burglar broke into his house. He grabbed the burglar and put him in a sleeper hold until the police came.

Thursday, August 10, 2006

Play ball if that's your fantasy

Here's a link I created to the lengthy opinion in C.B.C. Distribution & Marketing, Inc. v. Major League Baseball Advanced Media, L.P. , 2006 WL 2263993 (E.D. Mo. Aug. 8, 2006), by Magistrate Judge Mary Ann L. Medler. The dispute, over the use of players' names and scores and fantasy leagues has been widely covered. The court's analysis is in two basic parts: (1) right of publicity, including a First Amendment exception; (2) preemption under the Copyright Act. There is also a discussion of a license issue.

The Court found that the C.B.C. was not using the players' names and playing records in a way to create an impression of association or sponsorship, or commercial advantage, or as a symbol of the players' identity, and that the First Amendment trumped any interest players might have.

On preemption, the Court faltered badly, assuming arguendo that the names and playing records were within the scope of copyright. This was not the right question, and it then led the court to its second error in finding that because they weren't original, there was no preemption. The Second Circuit's Motorola case (105 F.3d 841) got this analysis right.

In short, an interesting opinion, right result, reasoning shaky.

Wednesday, August 09, 2006

Disco Inferno Hell

One of my all time favorite movies is the 1980 "Airplane," with Leslie Nielsen (Dr. Rumack), Robert Stack (Rex Kramer), Julie Hagerty (Elaine) and Robert Hays (Ted Striker; says that David Letterman screen tested for the Striker role). The movie is perfect (except for lots of continuity gaffes), and shows the best comedy can be played straight. Who can ever forget Barbara Billingsley taking jive (link to wav file here), or the bar fight between the Girl Scouts? I particularly love and did so even more when it came out, the scene near the end when the airplane knocks off the antenna for the disco station. If there ever were people who deserve their own rung in Dante's Hell, it is those people involved in foisting disco on us; that wasn't music, it was torture. I am surprised the U.S. Army didn't use disco to force Manuel Noriega to surrender; I would have surrendered faster than one of the Village People could put on his lipstick.

It was, therefore, with great trepidation that I read two opinions involving a "song" from that era, "Disco Inferno," Dimension Music Publishing, LLC v. Kersey, 2006 WL 1983189 (E.D. Pa. July 12, 2006), 2006 1716568 (E.D. Pa. June 23, 2006). The opinions illustrate the continuing importance of registration and the foresight of those who drafted the 1992 Automatic Renewal Act (ahem, ahem, ahem). Readers will recall that the 1992 Act abolished for all times the requirement of renewal as a condition for copyright. If one counts back 28 years from 1992, you get 1964. Since December 31, 1977 was the last effective date for works created under the 1909 Act, the ARA has relevance for works first published between 1964 and 1977.

Here's the connection between disco "music" and renewal. "Disco Inferno” was performed by The Trampps, and reached number one on the Billboard disco chart in 1977, and was included on the soundtrack for the film Saturday Night Fever (no comment). It was written by two Philadelphia songwriters, Tyrone Kersey, a/k/a/ Ron “Have Mercy” Kersey and Leroy Green (Yo! Leroy?)Through lots of transfers, plaintiff came to allegedly own all rights, including the renewal rights. I am deeply skeptical the original agreement conveyed renewal rights, but for purposes of a summary judgment motion that issue was conceded for reasons that aren't explained.

The foresight of the 1992 drafters is seen in an obscure fact setting: an author files an application for renewal within the 28th year but dies before the renewal term begins. The 1992 Act takes care of this situation in Section 304(a)(2)(B)(ii). It is one of those nitpicky sections that can have important consequences. Those who want a different result might think of hiring a special care nurse until the beginning of the 29th year.

Tuesday, August 08, 2006

RIAA v. LimeWire

Here is a link to the complaint filed against LimeWire on August 4th in the SDNY. The case has been assigned to Judge Gerard Lynch, a extremely smart, liberal jurist. The record company plaintiffs are represented by Cravath, with Kathleen Forrest in the lead. Ms. Forrest, who has been involved in these issues since at least the first case, is simply outstanding. I have always admired the extreme care with which she drafts her papers, and these are particularly well done. In addition to naming Lime Wire LLC and Lime Group LLC, the complaint names individually the company's CEO Mark Gorton and its CTO/COO Greg Bildson, an aggressive move on plaintiffs' part.

Among the points one can make about the complaint is the careful separating out of three distinct theories for liability: contributory infringement, vicarious liability, and the new Grokster inducement. Ms. Forrest's attention to detail is so refined that in making out the contributory infringement claim, she omits the word "inducement," even though, as noted below, it was, pre-Grokster, one of the trilogy of elements of a contributory infringement action. We are in a new era and this complaint reflects that era.

I happen to think the new era sucks, but it is here and we had best come to grips with it. The LimeWire case is likely to provide the inducement for that waking up. Aside from what I regard as the Supreme Court's insitutional irresponsibility, my objection to the Grokster opinion (which is not a defense of Grokster the company), is that it only added to the conceptual morass begun with Sony by creating a new, third category of third-party liability, and without any perceived need for it by the parties, Congress, or anyone else. It was, I believe, merely a way to paper over the court's inability to do the job it took upon itself: determine how to apply Sony to the Internet. When the Court shirked that responsbility, it apparently felt it too had to something to show it was tough on pirates (you're not alone Mr. Attorney General!), hence the inducement theory.

This new inducement theory is not a species of vicarious liability or contributory infringement, although at one point Justice Souter’s "majority" opinion referred to contributory infringement: “One infringes contributorily by intentionally inducing or encouraging direct infringement … .” This passage evokes the classic formulation of contributory liability in copyright cases, pre-dating Sony: “[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.” By contrast, the new inducement theory focuses on intent, as Justice Souter explained:

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.

I regard the intent of this approach to be solely to eliminate the staple article of commerce defense available to contributory infringement, a defense the Court had itself judicially legislated into the Copyright Act in Sony, but apparently found inconvenient in Grokster. The Court’s sop to Sony in footnote 12 does not ameliorate this, and instead adds to Grokster’s conceptual illegitimacy:

FN12 Of course, in the absence of other evidence of intent, a court would be unable to find contributory infringement liability merely based on a failure to take affirmative steps to prevent infringement, if the device otherwise was capable of substantial noninfringing uses. Such a holding would tread too close to the Sony safe harbor.

Sony surely intended that its machine be used for infringing purposes and took no steps to prevent those uses. Moreover, since intent is not an element of contributory infringement, it is baffling to see why it should play a role in carving out an exception from such infringement. But no matter, I would be surprised if Ms. Forrest does not argue that under Grokster, the staple article of doctrine doesn't apply, so forget about whether there are substantial noninfringing uses; their existence is irrelevant.

Of course (in the way the Supreme Court uses that phrase), plaintiffs in LimeWire have also pled contributory infringement so the issue will come into play there, but as Grokster shows, you only need one theory to win, and it can be a new one the Court makes up or impresses from another field of law: tag, you're it, you lose!

Grokster and the LimeWire complaint do raise important issues of inducement: how does the inducement in contributory infringement differ from the inducement in the new inducement theory: are they different, and if not, what does the new theory add (trick question, the answer is what it takes away:the staple article of commerce defense). And then there is "intent," one of Justice Souter's favorite words: what type of intent must be shown before the court will require defendant to take affirmative steps to prevent infringement under an inducement theory: is it an intent to facilitate infringement coupled with a design that doesn’t attempt to control infringement, or is it more like classic willfulness in both the intent to facilitate infringement and in designing a system that can’t control infringing uses? The majority made no effort to answer these important questions, perhaps because Footnote 12 was intended to be less a formulation of a legal principle and more a political concession to keep Justices Breyer, Stevens, and O’Connor on board for the majority opinion, while leaving them free to write their own concurring opinion that takes a different path.

A few other points about the LimeWire complaint. There is a common law, pre-1972 Naxos claim, and what seems to me a preempted claim for unfair competition. The prayer for relief discretely asks for "injunctive" relief, meaning permanent injunctive relief, since the complaint acknowledges LimeWire has been at it since 2000.

Monday, August 07, 2006

Couples Get the Pictures, Photographer Gets Jail

Paparazzi aren't the only photographers whose antics can land them in trouble with the law, as Mark Roob found out in Wisconsin by preying on couples wishing to have their wedding photographed. He ended up in jail on eight felony counts of fraud and with a criminal restitution order to turn over the originals and negatives; an appeal to copyright was unsuccessful. Here is the opinion. Roob has also been the subject of other litigation; here is an August 1, 2006 appeal from a damage award in a civil case.

Roob's M.O. appears to have been to get couples about to be married to sign a contract for 8o pictures. At the wedding he would prevent anyone else (even the couple's parents) from taking pictures. After the wedding, he would have the couple in for a "design" session, at which he presented the couple with far more than the 80 pictures they had contracted for and insisted they purchase all of them, at a higher fee; he refused to sell them the 80 unless they paid "a la carte" also at a much higher fee. He usually ended up receiving far more than the original agreement since he was the only source for the wedding photos.

A few couples had too much and eventually got him criminally prosecuted. A jury found him guity of four counts of felony fraudulent representations and four counts of felony fraudulent writings. He was sentenced to 3 years imprisonment served concurrently on two of the fraudulent writings charges and 5 years probation on the other two, and fined $100 on each of the fraudulent representation charges. As a condition of the probation, he was ordered to pay restitution, and to turn over to the couples all proofs, photographs, and negatives.

In his appeal, Roob argued that Section 201(e) of the 1976 Copyright Act, added to prevent the Soviet Government from expropriating dissident's copyrights, barred the turn over order. The court of appeals rightly noted that Section 210(e) only bars involuntary transfer of copyright ownership, and does not refer to the physical object. Still without negatives, a photographer can't exploit his or her copyrights, which in Roob's case was quite fine. The only similar case I am familiar with in the civil context of recent is the CCNV v. Reid case, where on remand from the Supreme Court, the parties settled the matter with the sculptor (Reid) owning all three-dimensional rights and CCNV and the sculptor jointly owning two-dimensional rights. Reid however forgot one important fact: CCNV had physical ownership and possession of the work of sculpture and without access to it, Reid could not exercise his 3D rights. CCNV denied him access. The district court took care of the matter by simply declaring it had authority under the All Writs Act to order CCNV to give Reid access.

Friday, August 04, 2006

The Sweet Smell of Infringement

Here is a link to an article about a ruling from the Dutch Supreme Court ruling that there is copyright protection for a fragrance, and that it was infringed. Plaintiff L'Oreal has a fragrance "Tresor." Defendant Dutch company Kecofa put out a supposedly similar fragrance "Female Treasure." (No comment from me about that).

According to L'Oreal, 23 of the 26 most important chemicals used to create Tresor were used in Female Treasure. Tresor not surprisingly retails for a much higher amount. Leon Meels, a spokesman for Kecofa, is reported as saying: “Everybody who knows anything about this thinks it is ridiculous. Where are the boundaries? Are companies going to claim that they have the rights to the taste of vanilla or the smell of lilies? L’Oréal’s real problem with us is that we are offering a product that is too inexpensive and they have to protect their profits.”

There would be no claim under U.S. copyright law, so does this mean we Americans will be able to smell better for less internationally, finally?

Wednesday, August 02, 2006

Wikipedia and Digital Maoism

Yesterday's "On Point" show on NPR (referred to by me and by many in my community "National Palestinian Radio) station WBUR (Boston), was called "Wikipedia: Open Intelligence." Guests were Jimmy Wales, founder of Wikipedia ; John Palfrey, the Director of the Berkman Center for Internet & Society, Simon Pulsifier (a prolific Wikipedia contributor), and as a dissident, Jaron Lanier, who is sometimes described musician and a virtual reality developer, sometimes as a "computer scientist and digital visionary," and other times as a film maker. While a shameless self-promoter and perhaps claiming a quite a bit too much for himself, he apparently has broad interests in addition to shaping his own image carefully. (Here is a link to his homepage so you can make your own mind up). There were also call-ins, some pro and some scathingly anti-Wikipedia. I love Wikipedia so let me get my side on the debate right out there.

Jimmy Wales was unfazed by the negative call-ins, and only once expressed some risibility; that was when Lanier trotted out his theory that Wikipedia was engaged in what he calls "Digital Maoism." Wales said this was the most surprising thing he had heard about Wikipedia and it made no sense. I'm surprised he was surprised. Lanier had expressed his views in a May 30, 2006 piece for "Edge The Third Culture." (Appropriately, there is a link to it on his Wikipedia entry). Here is an introduction to the piece:

"In "Digital Maosim", an original essay written for Edge, computer scientist and digital visionary Jaron Lanier finds fault with what he terms the new online collectivism. He cites as an example the Wikipedia, noting that "reading a Wikipedia entry is like reading the bible closely. There are faint traces of the voices of various anonymous authors and editors, though it is impossible to be sure".

"His problem is not with the unfolding experiment of the Wikipedia itself, but "the way the Wikipedia has come to be regarded and used; how it's been elevated to such importance so quickly. And that is part of the larger pattern of the appeal of a new online collectivism that is nothing less than a resurgence of the idea that the collective is all-wise, that it is desirable to have influence concentrated in a bottleneck that can channel the collective with the most verity and force. This is different from representative democracy, or meritocracy. This idea has had dreadful consequences when thrust upon us from the extreme Right or the extreme Left in various historical periods. The fact that it's now being re-introduced today by prominent technologists and futurists, people who in many cases I know and like, doesn't make it any less dangerous".

"And he notes that "the Wikipedia is far from being the only online fetish site for foolish collectivism. There's a frantic race taking place online to become the most "Meta" site, to be the highest level aggregator, subsuming the identity of all other sites".

"Where is this leading? Lanier calls attention to the "so-called 'Artificial Intelligence' and the race to erase personality and be most Meta. In each case, there's a presumption that something like a distinct kin to individual human intelligence is either about to appear any minute, or has already appeared. The problem with that presumption is that people are all too willing to lower standards in order to make the purported newcomer appear smart. Just as people are willing to bend over backwards and make themselves stupid in order to make an AI interface appear smart (as happens when someone can interact with the notorious Microsoft paper clip,) so are they willing to become uncritical and dim in order to make Meta-aggregator sites appear to be coherent."

"Read on as Jaron Lanier throwns a lit Molotov cocktail down towards Palo Alto from up in the Berkeley Hills... "

Well, I came of age in the San Francisco Bay Area in the 1960s, when there were real molotov cocktails being thrown, some in Berkeley, and when Jaron was about 6 years of age. In the NPR show I laughed when he referred to the 1960s as a time when individuality was valued, maybe even blossomed. My hair then was about the length of Jaron's now, but it was natural, without the Rasta locks he takes the time to construct. In the Berkeley Hills (read white areas) of the 1960s, there was just as much conformism among hippies as there were among the straights (as they were called then; now the term has an obviously different meaning). Your hair had to be long, you had to wear Levis, smoke dope, have lots of sex, etc. Now if you have to conform to something, that was pretty good, and I wasn't complaining. But it was not individuality, it was adolescent rebellion: when John Lennon decided to cut his hair short, people were shocked, outraged. I cut mine too, and lost almost all the friends I had had the day before.

It is the cult of the individual, of the original author, that Lanier is hyping (notice the subtitle of his piece, an "original essay"). His concern with wikipedia is with its quick popularity and with its collective (read anonymous) nature. Rather than having an entry in wikipedia on, say, Icelandic Transsexuals, he thinks there should be an Icelandic Transsexuals website, where we can see pictures of such people, read their stories, bond with them. A collective, anonymous wiki entry suppresses them just as surely as their bodies do.

In copyright, we have seen this before, with efforts to recast the evolution of copyright in the form of the struggle of the Romantic author. That effort was historically flawed and merely a polemic. Wikipedia is a tool, and an amazing one; it is not a form of intelligence, it is not history, it should not be anyone's principal or sole source for information anymore than TV should be for "news."

Originality is vastly overrated, most especially by those who claim to be original. Some forms of works are inherently collective and encyclopedias are the echt example. (Think of the examples of collective works that can be specially ordered or commissioned works for hire; why them? Because there are lots of contributions by individuals that are then shaped into one collective work usually).

Blogs and websites serve totally different purposes; they let you express yourself and I am not shy in that regard. But you can't spend all your time strutting around like a peacock. Sometimes too you just want access to information, and it doesn't matter from whom it comes. And even on Lanier's own terms, I find wikipedia's entries have far more personality than works of the same genre and that is the true comparison, not to blogs or websites.

In any event, as Justice Holmes said in Bleistein: "Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man's alone. " Maybe Lanier just doesn't like wikipedia's personality, but I suspect it is more its popularity that he dislikes.

Jaron, my advice is get over yourself and I say: baihuā yùndòng!

Joint Ownership of Sound Recordings

A July 28th decision by the Fourth Circuit, Brown v. Flowers, 2006 WL 2092548, led to a divided panel on whether a recording engineer was a joint author; the majority said no, the dissent yes, at least at the FRCP 12(b)(6) stage. Brown was a manager and Flowers was a musician. They formed a partnership called "Hectic Records," to provide vinyl 12 inch discs to clubs. With respect to particular recordings, Brown claimed work for hire ownership, or in the alternative joint-authorship. The district court granted Flowers' motion to dismiss on both points. The dissent agreed with dismissal of the work for hire claim, but not the joint authorship claim.

A business partnership does not by itself result in a copyright ownership. To own a copyright interest, you either have to contribute to the creation of the work (including fictionally through work for hire), or get a transfer. Brown did none of these. In a somewhat similar case, Forward v. Thorogood, 985 F.2d 604 (1st Cir. 1993), a manager's ownership claim was also rejected.

With audio recording of a live musical performance, and the making of sound recordings, the performers and the sound engineer/producer, are, absent any special circumstances classic joint authors. See H.R. Rep. No. 1476, 94th Cong. 2d Sess. 56 (1976); Diamond v. Gillis, 2005 U.S. Dist. LEXIS 2410 (E.D. Mich. Feb. 17, 2005); Staggers v. Real Authentic Sound, 77 F.Supp.2d 57, 63 (D.D.C. 1999). Systems XIX, Inc. v. Parker, 30 F.Supp.2d 1225, 1228-30 (N.D. Cal. 1998) (arrangement and administration of recording equipment, electronic processing of sounds, balancing, equalization of vocal, instrumental and audience components into a "blended whole"); Ballas v. Tedesco, 41 F.Supp.2d 531, 540 (D. N.J. 1999).

An interesting, but not persuasive, distinction between joint authorship in a musical composition being recorded and the sound recording was drawn in BTE v. Bonnecaze, 43 F.Supp.2d 619 (E.D. La. 1999). In BTE, a claim was made by the band’s drummer that he was a joint author of both the sound recording and the musical composition being recorded. Agreeing with the first argument, the court rejected the second, citing a distinction between the two copyrights and a belief that the drummer’s contributions were not fixed. This last point is erroneous: the contributions were fixed on the same tape that fixed the sound recording. Musical compositions can be fixed by notation, by any form of tape, or by any other means "now known or later developed," including "phonorecords." 17 U.S.C. § 101(definition of "phonorecords’). The court thus confused fixation of the musical composition with authorship in the sound recording.

Tuesday, August 01, 2006

More on Laches

Last week I did a posting on laches. The comments were very thoughtful. I thought I would do some more research and do a follow-up posting to show my appreciation. The topic is still too big for a blog, but here are some additional thoughts

Professor Dobbs has written that laches may have originated in equity where no statute of limitations applied, and clearly enough laches functioned in part as a kind of "flexible" statute of limitations, barring long-delayed claims where no statute of limitations was available for that purpose. 1 Dan Dobbs, Law of Remedies 104 (1993). This traditional function suggests that laches should be limited to cases in which no statute of limitations applies.

The Ninth Circuit appears to be particularly willing to utilize laches to bar claims brought within the limitations period, while paradoxically acknowledging such application as "unusual." The problem, at least in intellectual property cases, may in part be traced to that circuit’s approach to statute of limitations issues under the Lanham Act, which does not contain a limitations period. Most courts, including the Ninth Circuit, have borrowed state law limitations periods for Lanham Act claims. Unfortunately, in Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (2002), the panel engaged in a series of serious errors, the effects of which are still being felt as subsequent courts quote snippets from that opinion and apply the snippets to the very different field of copyright.

Jarrow’s opening error was its strikingly wrong assertion that prior panel decisions in the Ninth Circuit had "curiously" failed to consider "whether Congress intended that laches, as opposed to the statute of limitations, be the sole timeliness defense available to §43(a) claims." But prior panels had held, in keeping with well-established Supreme Court precedent, that Congress intends state statutes to apply where Congress fails to specify a limitations period in a federal statute, That was the case for copyright infringement actions, by the way, before amendments made in 1957. In Lanham Act cases, prior Ninth Circuit cases had held there was a statute of limitations that applied, the limitations period being fixed by state law. Jarrow question's was phrased was backwards and nonsensical.

The Jarrow court’s next error was in characterizing actions for infringement under Section 43(a) seeking monetary damages as being equitable. The applicability of equitable remedies does not make a cause of action legal; an action for trademark infringement is legal no matter the remedies sought and certainly remains so when plaintiff seeks money damages.

Building on its first two errors, the Jarrow panel then constructed a set of presumptions which are not only inherently contradictory, but which manifest a profound misunderstanding of the continuing violation theory:

"We hold that the presumption of laches is triggered if any part of the claimed wrongful conduct occurred beyond the limitations period. To hold otherwise would 'effectively swallow the rule of laches, and render it a spineless defense.' Danjaq, 263 F.3d at 953. The plaintiff should not be entitled to the strong presumption against laches simply because some of the defendant's wrongful conduct occurred within the limitations period. Laches penalizes dilatory conduct; as such, the presumptions that a § 43(a) plaintiff is barred if he fails to file suit promptly when the defendant commences the wrongful conduct.

"We further hold, consistent with our precedent, that in determining the presumption for laches, the limitations period runs from the time the plaintiff knew or should have known about his § 43(a) cause of action. This principle is grounded in the fact that laches penalizes inexcusable dilatory behavior; if the plaintiff legitimately was unaware of the defendant's conduct, laches is no bar to suit. … In sum, we presume that laches is not a bar to suit if the plaintiff files within the limitations period for the analogous state action; the presumption is reversed if the plaintiff files suit after the analogous limitations period has expired. For purposes of laches, the limitations period may expire even though part of the defendant's conduct occurred within the limitations period. Further, the state limitations period runs from the time the plaintiff knew or should have known about his § 43(a) cause of action."

It would be bad enough if the court’s approach was confined to trademark actions, but it has subsequently been applied to copyright infringement actions. The Copyright Act without doubt has an express limitations period. Where there is an express limitations period there is no historical role for applying laches and as the Lyons court hels spearation of powers reasons for not doing so too.