Thursday, December 28, 2006

Congress Dissed, Copyright Owners Shafted Again

On December 21, 2006, the always outstanding Scotus blog posted an interview with David Stras, on the occasion of his insightful article "The Supreme Court's Gatekeepers: The Role of Law Clerks in the Certiorari Process." The interview went over the Court's anorexic plenary docket - over the past 5 or 6 years: the docket is now the lowest in 150 years. This year is far lower yet. Given what I believe to be the irresponsible way the Court has been adjudicating intellectual property cases - issuing purported 9 to 0 opinions, which have their legs cut out from under them by dueling concurring opinions that starkly reveal the Court's inability to muster a majority on the most important issues in the case (e.g. eBay and Grokster), the low docket is a cause to rejoice. I am going to the oral argument on February 21st in the AT&T v. Microsoft case, but cringe at the ultimate result of those deliberations.

Alas, despite the small number of cases taken by the Court, the Rehnquist Court repeatedly went out of its way to invite and take cases that have had a devastating impact on intellectual property owners' ability to collect damages against one particular type of defendant: states and their instrumentalities. If Congress makes it intent crystal clear, over and over again, in unambiguous language while exercising a valid constitutional power, might the courts follow that intent? When the topic is abrogating sovereign immunity, the answer is no. In a shell-game the Supreme Court has been playing since the ascendancy of a conservative majority, the Court tells Congress it didn’t do x and so it failed. Congress then goes back and does x, but the Court says, ah but you didn’t do y. Congress goes back and does y, and the Court says ah, but you didn’t do z. Congress has now seemingly concluded it could run the whole alphabet and it would do no good: the Court simply refuses to permit Congress to do what the Court facetiously acknowledges Congress may constitutionally do. In a deep affront to separation of powers, the Court complains that Congress didn't call enough witness, or didn't enumerate enough examples of states gone wild. How many witnesses are held at a hearing is none of the courts' business: Marbury v. Madison has never looked more like the naked power grab it was.

The latest lower court to get the Court’s signal is a district court in Puerto Rico. In De Romero v. Institute of Puerto Rican Culture, 2006 WL 3735352 (D.P.R. Dec. 15, 2006), the court found Congress indeed failed:

The first question before the Court is whether the Copyright Act, 17 U.S.C. § 101 et seq., as amended, validly abrogates the states' sovereign immunity. The Copyright Act makes any person who violates another's exclusive rights as copyright owner liable for actual or statutory damages. See, 17 U.S.C.A. §§ 501, 504. By virtue of the Copyright Remedy Clarification Act (hereinafter CRCA), PL 101-553 (1990), included among those who risk liability if they engage in the conduct proscribed by the Act are “any State, any instrumentality of a State, and any officer or employee of State or instrumentality of a State acting in his or her official capacity.” 17 U.S.C. § 501(a). Indeed, “[a]ny state, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity.” Id.

The language used by Congress leaves little room for argument as to its intention: Congress explicitly extended liability for copyright infringement to the states and its instrumentalities and officers. Because Congress made its intention to abrogate the states' immunity in copyright suits “unmistakably clear”, we turn to the second abrogation inquiry: whether Congress was constitutionally authorized to effect such an abrogation.

Per the discussion above, Congress' authority to abrogate the Eleventh Amendment immunity stems from § 5 of the Fourteenth Amendment. Congress may successfully invoke that authority after identifying conduct by the states that violates the Fourteenth Amendment's substantive provisions and tailoring its remedies to curb that conduct. In applying that standard to the CRCA, we find a host of obstacles. The first problem is evident from the inception of the analysis: the legislative history of the CRCA does not refer to § 5 of the Fourteenth Amendment as the source of authority for abrogating the states' immunity.

Congress' intent in passing the CRCA was to make clear that states should be held liable for copyright infringement. It was guided in that exercise by its belief that in order to effect the abrogation, it needed only to express such an intention within the statute. See, S.Rep. No. 101-305 (1990). Perhaps because at the time it passed the CRCA Seminole Tribe and City of Boerne, supra, had not yet been decided by the Supreme Court, Congress appeared to be unconcerned with the fact that its power to abrogate the states' immunity was founded on the Fourteenth Amendment, and that in order to be able to use such power, it had to fashion legislation that was proportionate to and congruent with the Fourteenth Amendment evil that it sought to erradicate.

Congress' failure to ground its legislation on the Fourteenth Amendment, in and of itself, presents problems for the abrogation inquiry. The Supreme Court, albeit in a footnote, has stated that when Congress is explicit about invoking its authority under certain constitutional clauses, the court is precluded from considering whether other clauses, not mentioned by Congress, provide a successful launching pad for the attack on the states' sovereign immunity. See, Florida Prepaid, 527 U.S. at 642, n. 7. See also, Chavez v. Arte Publico Press, 204 F.3d 601, 604 (5th Cir.2000) (stating that Florida Prepaid supports the proposition that a court may not consider whether the abrogation is justified in light of a constitutional ground that Congress did not invoke.) Even ignoring that snag, Congress' intent to abrogate the states' immunity in the CRCA does not prosper.

As Supreme Court precedents dictate we should do, we have turned to the legislative history to ascertain the Fourteenth Amendment evil that Congress sought to remedy, and whether the legislation it passed is tailored to eliminating such evil. As in Florida Prepaid, 527 U.S. 627 (dealing with a purported abrogation in the context of patent suits), the evil here is state infringement of copyrights and the use of Eleventh Amendment immunity to avoid compensating copyright owners for such infringement. Much like what happened with patents and Congress' intent to abrogate the states' immunity as to suits arising out of the infringement thereof, see, Florida Prepaid, supra (holding that the Patent and Plant Variety Protection Remedy Clarification Act did not validly abrogate the states' immunity), the legislative record of the CRCA offers scant evidence of widespread copyright infringement by the states in violation of the Due Process Clause. To be sure, there are accounts of a handful of cases in which states infringed copyrights, and at least in some of those cases the offending states used the Eleventh Amendment to shield themselves from responsibility for their actions. See, S.Rep. No. 101-305 (1990). But along with the six or seven concrete examples of such infringement that Congress could muster, the record also reveals that Congress heard testimony to the effect that the legislation was premature and that there were other measures that it could take in order to attend the problem of copyright infringement by states. See, H.R.Rep. No. 101-282 (1989). At least some of those were rejected due to considerations that are proper within the Article I calculus: for example, concurrent state jurisdiction over copyright suits was rejected because the Copyright Act sought to create a uniform Federal system. Id. See, Florida Prepaid, 527 U.S. at 645 (stating that the need for uniformity in patent law, while undoubtedly important, is a factor that belongs to the Article I calculus and not to the Eleventh/Fourteenth Amendment analysis); Chavez, 204 F.3d at 607 (applying the same reasoning to copyrights). As such, the CRCA's legislative history reveals that Congress had scarcely any evidence of unconstitutional action by the states, that it bypassed alternative remedies that did not entail abrogation of immunity for reasons that are extraneous to the Fourteenth Amendment analysis, and that, with such scant evidence, it passed far ranging legislation that conceivably FN5 covers more ground than is necessary to curb the states' unconstitutional conduct.FN6

In fact, what the legislative history shows is that more than consternation over actual or imminent copyright infringement by states in violation of the Due Process clause, Congress was moved by its conclusion “that it would be anomalous and unjustified for State ··· institutions to be exempt from certain remedies, while private institutions are not.” Id. Although the basic wisdom of that premise is self-evident, under City of Boerne, supra, and its progeny, it is not enough to effect a valid abrogation of the states' sovereign immunity. As such, we hold that the CRCA did not abrogate the states' (and its officers' and instrumentalities') Eleventh Amendment immunity. In so doing, we join the other courts that, post- Seminole Tribe, have faced this issue. See, Chavez, 204 F.3d 601 (analyzing the CRCA and its legislative history in light of the congruence and proportionality test, and concluding that it did not validly abrogate the states' immunity); Rodríguez v. Texas Com'n on the Arts, 199 F.3d 279 (5th Cir.2000) (concluding that CRCA did not validly abrogate the states' sovereign immunity); Salerno v. City Univ. of New York, 191 F.Supp.2d 352 (S.D.N.Y.2001) (dismissing copyright claims against arms of the state because they are immune from such suits); Jensen v. New York State Martin Luther King, Jr. Institute for Nonviolence, 13 F.Supp.2d 306, 311 (N.D.N.Y.1998) (stating that because “the copyright legislation was authorized by Article I and not the Fourteenth Amendment, Congress is without authority to abrogate state sovereign immunity for copyright cases”); Rainey v.. Wayne State University, 26 F.Supp.2d 973, 976 (E.D.Mich.1998) (“There is no question that the Eleventh Amendment bars plaintiff's federal copyright infringement claim and state law claims against WSU for monetary damages, as these claims would require payments from the State's coffers”); Hairston v. North Carolina Agric. & Technical State Univ., 2005 WL 2136923 (M.D.N.C.2005) (unpublished) (CRCA not a valid abrogation of states' immunity).FN7 But see, Florida Prepaid, 527 U.S. at 658, n. 9 (Stevens, J., dissenting) (suggesting that the CRCA would be able to withstand the congruence and proportionality test as set forth by the majority).

Wednesday, December 27, 2006

No Pound of Copyright

A number of previous posts have dealt with statute of limitations issues. The thorniest problems arise when ownership claims are at issue, rather than infringement. Although things started out on the right foot with the Second Circuit’s opinion in Stone v. Williams, 970 F.2d 1043 (2d Cir. 1976), which correctly regarded the limitations provisions in Section 507 as being remedial rather than substantive, things went downhill thereafter, with courts barring ownership claims (rather than claims for relief outside the limitations period) permanently if not brought within the three year period specified in that section.

Over time, exceptions were created, none of which make particular sense logically, but which instead represent a tendency of courts to attempt ad hoc justice on the facts. In Pritchett L.P v. Pound, (5th Cir. Dec. 18, 2006), the Fifth Circuit followed the Second Circuit in one of these exceptions, and on facts which clearly pointed to one result only.

Nancy Pound was the wife and heir of an employee of Pritchett L.P., , a business consulting firm. The employment contract governing Pound's employment provided that he was responsible for, inter alia, “completing regular written assignments and the development of new products and procedures.” In addition, the contract stated that should Pound produce any written materials in the course of his work with Pritchett, “then such shall be done for and on behalf of the Employer and all work produced shall be the exclusive property of the Employer.” Pound was paid a salary plus a discretionary bonus, which reached $1 million in 1995, the last year he worked for Pritchett (he died in the first quarter of the year, but Pritchett generously paid the entire bonus amount).

As noted by the court of appeals:

In 2002, Nancy Pound sued Pritchett in state court, alleging co-ownership in the books' copyrights and seeking an accounting and royalties from the books' sales. Pritchett removed the case to the Northern District of Texas, but it was remanded, apparently based on Pound's representation that there was no ownership dispute and therefore no federal question. Pritchett then filed suit in the Eastern District of Texas, seeking declaratory judgment that it was the sole owner of the copyrights in the two books. Pound counterclaimed in the Eastern District for an accounting and payment of royalties. On Pritchett's motion, the district court granted summary judgment and awarded Pritchett attorney fees.

The court of appeals upheld the district court’s correct finding that Pritchett was the sole owner of the copyrights and that “the ownership of the copyrights by Pritchett defeats Pound's claim for royalties and moots the limitations bar to Pound's claim.” Recall though that it was Pritchett who was the plaintiff in the declaratory action for sole ownership. Pound filed a counterclaim based on state law. How then could the limitations issue be mooted when one issue was whether the declaratory judgment action was timely filed?

Here is the court’s discussion of the limitations question:

The declaratory judgment action initiated by Pritchett is not barred by limitations. Under appropriate circumstances, a party may seek a judicial declaration regarding the ownership of a copyright. As a practical matter, declaratory judgments typically are sought by potential defendants…. We agree with our sister circuit that a defendant who is not seeking any affirmative relief and who asserts a defense only to defeat plaintiff's claim is not barred by the Act's statute of limitations. See Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 163-64 (2d Cir.2003). A potential defendant is not required to seek at the earliest opportunity a declaration that a defense to a claim not yet brought is valid. Id. (holding that a commissioning party's claim that books were works for hire accrued, for limitations purposes, when commissioned party's heirs first claimed copyright interest in books).

Pritchett's work-for-hire contention was a defense to Pound's initial claim for accounting in state court. Pritchett's declaratory judgment rights accrued when it knew or had reason to know of the injury upon which the claim is based. Id. at 165. Pritchett's work-for-hire “claim” did not accrue until it suffered some injury. Since the evidence establishes that Pound never asserted a claim of ownership or demanded royalties during his lifetime, Pritchett was not aware of and the claim did not accrue until the Pound estate first asserted accounting claims in 2002. Pritchett's work-for-hire “claim” was asserted in 2003, thus within the statute of limitations.

I have no quibble with the court’s selection of the accrual date (other than the erroneous reference to suffering injury as the accrual trigger) nor with its conclusion that the declaratory judgment action was timely therefore (the state suit was brought in 2002 and the DJ in 2003). The part of the opinion that baffles me is the reference to Pritchett not seeking affirmative relief: the declaratory judgment action did seek affirmative relief, a declaration that Pritchett was the sole owner; it was not a defense to Pound’s counterclaim based on state law, which only came later. Indeed, federal jurisdiction cannot be based on a defense and since Pound’s claims were state law only, absent a affirmative claim by Pritchett, the district court lacked subject matter jurisdiction.

Tuesday, December 26, 2006

Copyright in Nude Photo Crushed by Grapes

Section 301(d) of the Copyright Act states that: “Nothing in this title annuls or limits any rights or remedies under any other Federal statute.” While there are a few other federal statutes where a conflict might arise, the federal trademark act has led to the most judicial ink being spilled. At one time, the Copyright Office was itself acting contrary to Section 301(d): it would refuse to register a claim in a visual work if a design patent had already issued. If the design patent hadn’t issued, the Office would register the claim even if it knew that a design patent had been applied for and indeed would issue shortly.

Blessedly, an early (1995) policy decision issued by Marybeth Peters less than a year upon becoming Register (in government time, almost overnight) abandoned this ultra vires policy, by amending 37 CFR §202.10, which had embodied the infamous “election of protection” approach. Section 202.10 was amended to declare that “The availability of protection or grant of protection under the law for a utility or design patent will not affect the registrability of a claim in an original work of pictorial, graphic, or sculptural authorship.” (Prior to 1974, the Patent Office had a similar policy, but abandoned it after the decision in In re Yardley, 493 F.2d 1389 (C.C.P.A. 1974)).

A December 4, 2006 opinion by Judge Marilyn Hall Patel (of Napster fame), raises the problem of a possible conflict between trade dress protection and copyright: can trade dress protection trump the Copyright Act? (The Lanham Act has no equivalent to either Sections 301(a) or (d) of title 17). In Nova Wines, Inc. v. Adler Fels Winery LLC, 2006 WL 3498574 (N.D. Cal. Dec. 4, 2006), plaintiff produced wines under the Marilyn Monroe brand and had done so since 1987. Monroe’s estate licensed plaintiff to use on its wines the registered trademark “Marilyn Monroe,” as well as common law trademarks for her name, image and likeness. Plaintiff utilized this license to use photographs of Monroe on its bottles and had done so for 20 years. The suit involved the winery’s “Velvet Collection,” a limited edition wine “featuring historic photo portraits of Marilyn Monroe with the first ever ‘peel and peek’ label.” (The peak and peel was not a coy marketing device but rather the result of Tobacco Tax and Trade Bureau’s refusal to approve a label with a nude photograph of Monroe). The problem can quickly be seen in this more complete description by plaintiff of its collection:

A chance meeting in Hollywood between photographer Tom Kelley and an aspiring but unknown actress led to a two-hour photo session on May 27, 1949 that made history and established Marilyn Monroe as the ultimate sex symbol of the 20th century. The ten stunningly beautiful photographs from the historic session became known as the "Red Velvet" series, each one a portrait of Marilyn Monroe posing on a red velvet drape.

These images are now immortalized in the Velvet Collection wines. The most famous of the photographs appeared as the Centerfold of the inaugural edition of Playboy in 1953. That photo became the label of the 2003 vintage of the Velvet Collection, nearly all of which was destroyed in a warehouse fire shortly after the wine was released. By exclusive agreement with Playboy Enterprises, that historic photo portrait is now the label of The Velvet Collection 2004.

Kelley (and various entities under his control) had licensed the images to plaintff in 2004, but the license was eventually terminated, and eventually Kelley licensed defendant, who put out a wine with one of the photographs, which it marketed as part of its “Red Velvet Collection … ultra fine wines.” Plaintiff then sued for trademark infringement, trade dress infringement, unfair competition and passing off. Judge Patel’s decision was on plaintiff’s motion for a preliminary injunction.

One of defendant’s arguments was that as a licensee of the copyright owner on the photograph (Kelley), it couldn’t be sued for trade dress infringement merely by using the photograph. I think that’s correct, but Judge Patel disagreed:

Defendants assert that TKS owns copyrights in the Red Velvet Collection images, and plaintiff's trade dress interests cannot prevent TKS from licensing its copyrighted works to Adler Fels for the use on wine labels. This case therefore presents a conflict between two asserted intellectual property rights: Nova's trade dress and TKS's copyright. The issue is whether plaintiff's trade dress rights can prevent TKS from exploiting its copyright by licensing images for use on wine labels. While the parties cite to no cases addressing this specific intersection between copyright and trade dress, the Federal Circuit has found that service mark registration does not give the owner of the mark the right to infringe another's copyright. Boyle v. United States, 200 F.3d 1369, 1373 (Fed.Cir.2000). In Boyle, a copyright owner challenged the government's failure to cancel a competitor's service mark registration which, according to the copyright owner, effectively destroyed his copyright. Id. at 1372. Although the court declined to reach the issue on sovereign immunity grounds, the court noted that while a “grant of a service mark registration entitles the registrant to certain rights and privileges under the Trademark Act [citations], the right to infringe another's copyright is not one of those rights.” Id. at 1373. The court therefore held that, as a matter of law, “the government's issuance of a service mark registration ··· cannot be construed as either authorization or consent for it to infringe Boyle's copyright,” and that “possession of a service mark is not a defense to infringement of a valid copyright.” Id. at 1373-74. A complementary conclusion is that a valid copyright does not entitle the copyright holder to infringe another's trade dress rights. This is particularly true where, as here, the plaintiff's trade dress rights are considerably broader than the defendants' copyright interests at issue. Nova has developed a unique trade dress, over a substantial period of time, comprising the use of Marilyn Monroe's name and image on wine labels. The trade dress interest therefore covers all images of Marilyn Monroe used on wine labels. These rights are broader than TKS's copyright interests in the specific images comprising its Red Velvet Collection. Plaintiff's trade dress rights therefore entitle it to prevent TKS from exercising the narrow portion of its copyright interests consisting of licensing images of Marilyn Monroe for use on wine bottles.

Assuming defendant did not use other elements of plaintiff’s trade dress, how could this be correct? What would happen if Kelley had sued plaintiff for copyright infringement at the expiration of the license, would Judge Patel have held that there was no liability merely by virtue of defendant’s trade dress ownership? And, while Judge Patel seemed taken with her “complementary conclusion,” I’m not: the issue is not whether a copyright permits the owner thereof to infringe a trade dress, but rather whether a lawful use of a copyrighted photograph itself licensed by the owner of rights in the image can form the basis for a trade dress action where the trade dress consists of an unlicensed use of the copyright. Phrased that way, I think the answer is no: how can one have a valid trade dress in an unauthorized use of a copyrighted work?

I would have no problem if the defendant's use of the image in the copyrighted photograph exceeded the scope of the license from Monroe (that is, defendant had no right to market the photograph of Monroe's image on wine bottles, but only in stand alone photographic displays), therefore leading to a right of publicity claim by her estate, but I don't get how such a use could form the basis for a trade dress action by a third party. My good friend Marty Schwimmer of the Trademark Blog knows far more about these matters than I , though, and may well disagree.

Friday, December 22, 2006

Gentlemen Stop Your Linking

Cases involving pro se defendants are usually quite dangerous, not only to the defendant, but also to the rest of us: plaintiffs who are represented by decent enough law firms, if before a district judge without copyright experience can, and often do, get away with outrageous things. This may have been the case in Live Nation Motor Sports, Inc. v. Davis, 2006 WL 361983 (N.D. Tex. Dec. 12, 2006). I say "may" because the opinion is somewhat ambiguous on what is for me the critical factual issue in the case: was defendant streaming a radio broadcast or merely providing a link to the authorized stream of that broadcast?

Plaintiff is SFX, a division of Clear Channel. At issue were live broadcasts of motorcycle races known as Supercross. Defendant has a website at The opinion states plaintiff alleged defendant "performs and displays audio webcasts of the racing events .. . by stream[ing] the live webcast of the races on his website in 'real time,' which causes SFX irreparable harm by limiting its right to sell sponsorships or advertisement on its own website as the 'exclusive source' of the webcasts."

That made me think defendant was somehow capturing a live feed of the event and streaming it over his site, a not particularly difficult issue. But, in discussing defendant's purported "affirmative defenses," the court indicates defendant did no more than provide a link to plaintiff's own site, which permitted consumers to listen to plaintiff's stream of the broadcast while still remaining on defendant's site. This seems consistent with plaintiff's complaint that its loss was from advertising revenue: consumers would go to defendant's site and not to plaintiff's and thus reduce the audience size on plaintiff's site. If true, there was no violation of the Copyright Act since the stream was plaintiff's. This story on CNET supports the view that defendant did merely provide a link to plaintiff's site, and thus this is a deeply disturbing opinion.

Here is the entirety of the court's discussion. If I am right on the facts as I seem to be, its analogy to the NFL case is completely wrong since that case involved an unauthorized capture and performance through defendant's separate satellite service (and to Canada much less):

The court finds that SFX has shown a substantial likelihood of succeeding on the merits of its copyright claim against Davis because SFX has shown ownership of the material and "copying" by Davis. The live broadcasts of the racing events, either via television, radio or internet webcasts, constitute original audiovisual material that can be copyrighted under the Copyright Act. See 17 U.S.C. § 102; see also Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841 at 847 (2d Cir.1997) ( citing H.R.Rep. No. 94-1476 at 52 (1976), reprinted in 1976 U.S.C.C.A.N. 5659 at 5665) (noting Congress's reasons for amending the Copyright Act to include protections for live brodcasts). SFX, as the producer of the racing shows, qualifies as the author or "owner" of the copyrightable material. ... SFX also states, and Davis does not appear to deny, that Davis's website,, provided live audio webcasts of those shows. Davis's response to SFX's allegations are unclear, because he denies streaming, copying or re-broadcasting SFX's shows; however, Davis asserts that he has an "affirmative defense" to SFX's complaint because he provides "the same audio webcast link freely distributed by ClearChannel executives and thousands of individuals upon thousands of websites worldwide."... . Additionally, Davis asserts "fair use" as an affirmative defense.
Litigation over copyright protections for live internet webcasts have not made their way into controlling Fifth Circuit opinions (nor any other circuit court opinions that this court could find). Opinions addressing copyright protection for live television broadcasts, however, provide appropriate, analagous guidance in this case. In National Football League v. PrimeTime 24 Joint Venture, the Second Circuit upheld a permanent injunction against Defendant PrimeTime, which provided unauthorized satellite transmissions of the NFL's copyrighted weekly live broadcasts of football games to viewers in Canada. 211 F.3d 10 (2d Cir.2000). PrimeTime had argued that "capturing or uplinking copyrighted material and transmitting it to a satellite does not constitute a public display or performance of that material." Id. at 12. The court rejected that argument by reviewing similar copyright infringement actions, as well as legislative history, and stated:
We believe the most logical interpretation of the Copyright Act is to hold that a public performance or display includes each step in the process by which a protected work wends its way to its audience. Under that analysis, it is clear that PrimeTime's uplink transmission of signals captured in the United States is a step in the process by which NFL's protected work wends its way to a public audience. In short, PrimeTime publicly displayed or performed material in which the NFL owns the copyright. Because PrimeTime did not have authorization to make such public performance, PrimeTime infringed the NFL's copyright.
Id. (internal citations ommitted). The court believes Davis has tried to make a similar argument as PrimeTime by stating that he has an "affirmative defense" because he provides the "same audio webcast link freely distributed by ClearChannel." Similarly, the court finds that the unauthorized "link" to the live webcasts that Davis provides on his website would likely qualify as a copied display or performance of SFX's copyrightable material.
The court also finds that the link Davis provides on his website is not a "fair use" of copyright material as Davis asserts through his Answer. The Copyright Acts states that reproductions of a copyrighted work is protected as a "fair use" of the material if used for purposes of "criticism, comment, news reporting, teaching ··· scholarship or research." 17 U.S.C. § 107.
Davis has not provided any evidence that his "use" of SFX's audio webcasts falls within any of these categories. He does use the word "commentary" in his "Seventh Affirmative Defense," where he asserts that "[t]his is a malicious attempt by the Plaintiff to stifle competition and commentary from non-Plaintiff Internet websites and to clear the commercial landscape of potential competitors of Plaintiffs." ... In light of Davis's statements regarding commercial competition, the court does not believe Davis's "use" of SFX's audio webcasts qualifies as fair use for the purpose of criticism, comment or news reporting. Davis has given no indication that he excerpts portions of the webcasts on his website for these purposes. Rather, he admits providing a link to the webcast that "is the same audio webcast" provided by SFX.... . Accordingly, the court finds that SFX is likely to succeed on the merits of its copyright infringement claim against Davis, because Davis has copied SFX's copyrighted webcasts without authorization, and not for the purposes protected by the "fair use" provision of the Copyright Act.

Thursday, December 21, 2006

A Whiter Shade of Joint Authorship

One of my favorite of all blogs is the UK IPKat, founded by Jeremy Phillips and Ilanah Simon in June 2003. It covers copyright, patent, trade mark and privacy/confidentiality issues “from a mainly UK and European perspective.” Every time I read it, which is every day, I am humiliated: the writing is always witty and highly informative, the blog’s use of visual images is amazingly creative and it is frequently populated with extremely helpful links. This is the crème de la crème.

Yesterday, I came across a report in it of an opinion by Justice Blackburne of England’s High Court in a copyright suit brought by Matthew Fisher, former Hammond organist of the British band Procol Harum, whose 1967 “A Whiter Shade of Pale” I remember well. There are two reasons I remember it; first, Fisher’s organ work; second, I could never figure out what the lyrics meant. I am not alone in this inability, but surprisingly efforts by some of us on this side of the Great Pond to understand them (efforts I confess I never undertook), have annoyed Mr. Fisher. In an March 25, 2000 interview with him on the occasion of Claes Johansen’s biography of the group, he made this statement:

"I don't know what they mean. It's never bothered me that I don't know what they mean. This is what I find rather hard, that, especially in America, people are terribly hung up about lyrics and they've got to know what they mean, and they say, "I know, I've figured out what these lyrics mean." I don't give a damn what they mean. You know, they sound great… that's all they have to do."

For those who want to read the lyrics and further annoy Mr. Fisher, here is a link to them. The song remains quite popular, and it has its own wikipedia entry, which quite wonderfully was updated the same day to take into account the opinion, one of the features that endears Wikipedia to me. (The entry also discusses alleged similarities to works of Bach).

Here is a link to a BBC story about the opinion. Within the story click on, underneath the picture of Fisher, the button that says “Watch the song performed.” That takes you to a filmed report that includes an interview with Fisher and clips of original performances of the song.

Mr. Fisher’s dispute with his bandmates Gary Brooker and Keith Reid turned on Fisher’s claim that he should be regarded as a co-author of the composition, and as such entitled to a percentage of the royalties. The law in the U.K. on joint authorship is quite different from that in the U.S. In the U.S., joint authors own an undivided interest in the whole according to the number of co-authors: two own 50%, three 33 1/3%, etc. This is without regard to the respective qualitative or quantitative contributions: with two co-authors each own a 50% interest even if one contributed only 10% to the work. Because of this, one would think that the threshold for being a joint author would be high, but it really isn’t, aside from having to contribute expression and having an intent to be a joint author.

In the U.K., however, not only is the contribution threshold higher, but the consequences are different too. As set out in the Spandau Ballet case, Hadley v. Kemp, [1999] E.M.L.R. 589, it is required that the contribution must have been original and “significant,” “the right kind of “skill and labour,” “significant and skillful.” (A recent 80 plus page UK opinion on claims by former members of Bob Marley and the Wailers provides a fascinating account of these issues for many of the group’s most famous songs, Barrett v. Universal-Island Records Ltd., [2006] EWHC 1009 (Ch.)(Lewison, J.)). Once one meets this threshold, as Fisher was held to have done, Justice Blackburne – a music expert in his own right before being called to the bar and bench– stating: “I find that the organ solo is a distinctive and significant contribution to the overall composition and, quite obviously, the product of skill and labour on the part of the person who created it,"), the proportional ownership is based on the extent of the contribution not the number of authors, Fisher being awarded 40%.

In the U.S., had he won, he would have received a mathematical percentage based on the number of composers (that might not have been the same as the number of band members; for instance, if Lennon and McCartney wrote a song, they would each be 50% owners, even though the Beatles as a group had four members; for the sound recording of the song, however, all four would have an 25% interest, reduced proportionally by the producer's share, e.g. George Martin or the label. Many bands today exist as a juridical entity, resulting in perhaps only two "authors" of the sound recording, the group as a single performer and the producer, again likely a juridical entity).

Another difference between the two countries’ laws (and those IPKittens can correct me if I am wrong), is that in the U.K., joint authors cannot license a work without the others’ permission, whereas in the U.S., joint authors can unilaterally license the work on a non-exclusive basis.

But the biggest difference is that in the U.S., Fisher's case would have been dismissed at the outset on statute of limitations grounds; the song was, after all, written and performed and credit taken in 1967. This point is illustrated in an opinion issued by the First Circuit just six days ago, Santa-Rosa v. Combo Records, 2006 WL 3691613 (1ST Cir. December 15, 2006):

"17 U.S.C. § 507(b) provides that “[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” A claim accrues when “the plaintiff ‘knows or has reason to know of the act which is the basis for the claim.’ “ Rodríguez-García v. Municipality of Caguas, 354 F.3d 91, 96-97 (1st Cir.2004) (quoting Rodríguez Nárvaez v. Nazario, 895 F.2d 38, 41 n. 5 (1st Cir.1990)). Thus, a claim for declaratory judgment of ownership accrues when the plaintiff “knew of the alleged grounds for the [ownership] claim.” Margo v. Weiss, 213 F.3d 55, 60-61 (2d Cir .2000); see also Merchant v. Levy, 92 F.3d 51, 56 (2d Cir.1996)(“[N]o ··· uncertainty exists as to co-ownership rights based on co-authorship. A co-author knows that he or she jointly created a work from the moment of its creation.”). It goes without saying that Santa Rosa was present when his performances were recorded by Combo Records, and thus knew from the moment that each recording was created that he had a potential claim for ownership of it. Thus, there is little question that Santa Rosa's claims for co-ownership accrued as soon as he finished recording each album.

Santa Rosa points to the Ninth Circuit's holding in Zuill v. Shanahan that a claim for a declaratory judgment would not accrue until a “plain and express repudiation of co-ownership is communicated to the claimant.” 80 F.3d 1366, 1369 (9th Cir.1996). Even applying this test for accrual of a claim, we cannot think of a more plain and express repudiation of co-ownership than the fact that Combo openly, and quite notoriously, sold Santa Rosa's records without providing payment to him: according to documents provided by Santa Rosa, at least 1,140 of the recordings in dispute were sold during the six month period between January and June of 2000, almost four years before Santa Rosa filed suit in May 2004. Likewise, it is hard to believe that a singer of Santa Rosa's stature would have been unaware that Combo Records was selling his recordings and thus claiming ownership over them until three years before this action was commenced.

Because we conclude that Santa Rosa had reason to know of his claim of ownership over the recordings soon after they were created (which was well over three years before Santa Rosa filed suit against Combo), we agree with the district court that Santa Rosa's declaratory judgment action is time barred by 17 U.S.C. § 507(b)."

In Mr. Fisher's case there was an estoppel agreement, which Justice Blackburne rejected.

Tuesday, December 19, 2006

Bambi's Twin Copyright Horrors

Sometimes you read a case and gloss over how truly horrible it is. I re-read yesterday the Ninth Circuit's opinion in Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162 (9th Cir. 1996). One could never pick the worst Ninth Circuit opinion because the field is almost limitless. But in the realm of copyright, Twin Books could be a contender. Contrary to popular belief, Bambi was not a Disney creation; it was written by a Hungarian Jew, Siegmund Salzman. Salzman (born 1869) moved with his parents to Vienna when he was three weeks old, wrote Bambi in 1923 and first published it under the pen name Felix Salten in Germany in 1923 as "Bambi, ein Leben im Walde" ("Bambi, a Life in the Woods"). Hitler, showing the consistency in racial beliefs that was one of his hallmarks, had Bambi banned in 1936 as the work of an undesirable, causing Salzman to flee to Switzerland. (The Ninth Circuit opinion omits all this unpleasantness in its Disney-like recitation of the facts, as well as the fact that Salzman's other major work, the novel "Josephine Mutzenbacher," a kind of Viennese "Fanny Hill'", was published anonymously and banned as pornographic).

Salzman's publication in Germany was, not surprisingly, without a copyright notice since Germany had no such requirement. At some point, though, he must have realized there might be a problem in the U.S. because in 1926, he republished it in Germany and Austria with a copyright notice. (Whittaker Chambers subseqently translated it into English to supplement his meager income working for a communist newspaper). A U.S. registration was obtained in 1927.

Salzman and his publisher then assigned rights to one Sidney Franklin, who in 1937, assigned rights to Disney. According to, Franklin was to "direct" the animated film, but after it was delayed, he moved on to other projects. (He is credited as "artistic collaborator;" David Hand was the helmer). Disney's movie Bambi (one of an endless stream of Disney movies in which one of the parents is killed off), came out in 1942 and has been a huge success ever since. My 5 year old twins have watched it a number of times this year, which means I have too, mostly so I can skip over the part of Bambi's mother being offed. (This is perhaps a Freudian reaction since my own mother died young).

According to wikipedia, Salzman never received a penny from Disney for the movie's use of his work. Salzman died in 1945, which means all U.S. rights reverted to his estate since he died before the renewal term (if any). His daughter, Anna Salten Wyler, renewed the alleged U.S. copyright in 1954 (1926 +28). In 1958, she negotiated three agreements with Disney. She died in 1977, leaving her husband Veit Wyler as her only heir. In 1993, Veit und seine zwei kinder assigned their rights to Twin Books.

At some point things between Twin Books and Disney turned ugly; Twin Books sued and Disney mounted a creative defense full of alternative arguments: Bambi the book was in the public domain; no it isn't, Disney owns the renewal rights; Twin Books is only a non-exclusive licensee. You get the idea. Disney's public domain argument was based on the publication in Germany in 1923 without notice. That was a very good argument, one the Ninth Circuit misdescribed and misunderstood. The 1909 Act was clear that U.S. copyright was secured by foreigners complying with the requirements of U.S. law. This is not, as the Ninth Circuit erroneously stated, an extraterritorial application of U.S. law: Congress was merely saying that if you want a U.S. copyright, this is what you need to do, regardless of where the work is first published. (In Section 401(a) of the 1976 Act as passed, Congress hammered this point home unmistakably, referring to: "Whenever a work protected under this title is published in the United States or elsewhere by authority of the copyright owner ...").

In coming to a contrary result from the statute, the Ninth Circuit purported to rely on the Supreme Court's pre-1909 Act opinion in United Dictionary Co. v. G&C Merriam Co., 208 U.S. 260 (1908), but that case was inapposite because it involved a different statute and different facts: whether a work published with copyright notice in the U.S. lost protection by subsequent publication without notice in England. The Ninth Circuit also purported to "adopt" the reasoning of Judge Frank's opinion in Heim v. Universal Pictures Co., 15 F.2d 480 (2d Cir. 1954), but that opinion stands for a very different proposition. As Judge Clark pointed out in his concurring opinion in Heim, "the opinion holds that American copyright is secured by publication abroad without the notice of copyright admittedly required for publication here, " 154 F.2d at 488. In other words, U.S. copright commenced with publication overseas regardless of whether the foreign publication complied with the U.S. Copyright Act.

All of the above could be dismissed as differences of statutory interpretation and sloppy reading of precedent. Here is where Bambi's horrors kick in. Heim held that U.S. copyright began with publication overseas without the notice prescribed by U.S. law (a position the Copyright Office later rejected), but at least U.S. protection was coterminous with the facts of publication and term began and could end based on those facts, say by failure to renew. Twin Books however held that U.S. copyright did not begin until publication with notice in the U.S., that is, in 1926. So what then of the status of the work in 1923-1925? The court held that within that period, anyone in the U.S. could have used the work without liability. But that makes no sense: if the work was not "published" within the meaning of the U.S. copyright before 1926, then it was "unpublished." There is no third category. If it was unpublished, it was protected in the U.S. and no one could use it. The court of appeals thus created a new category of work never before seen or dreamed of, even by Walt.

The court's holding also creates chaos for those seeking to determine the status of older, foreign works. Does one follow the Copyright Office's view, the Second Circuit's view in Heim, or Twin Books? Moreover, as noted by a district court in the Ninth Circuit: "The Twin Books rule would prevent a foreign work published without notice from being eligible for copyright restoration under section 104A," Societe Civile Succession Richard Guino v. Beseder, Inc., 414 F. Supp.2d 944, 949 (D. Az. 2006). Indeed, Twin Books creates huge problems addressed in Section 104A's reliance party provisions, but not elsewhere, namely the ability, say of those who find a copy of the 1923 version of the book to continue to distribute the book after 1926 or to translate it.

Bambi may have ended up happily with Filene
, but the Ninth Circuit has once again left the rest of us running deep into the forest, trying to save our lives from Man.

A Long Tail Effect on Copyright?

In yesterday’s posting, I painted a dire future for macro changes to the Copyright Act. The reason for that prediction is that Congress’s hands have been tied by U.S. adherence to the Berne Convention, by the 1994 GATT agreement, the WIPO treaties, and by various regional or bilateral free trade agreements. For example, what if Congress decided that software should be protected for 10 years under a sui generis regime? What if Congress decided the term of protection should be life of the author plus 10 years? What if Congress decided that it would condition protection on filing periodic statements with the Copyright Office indicating a continued desire to exploit the work?

No can do, at least not without the U.S. violating its treaty obligations, being hauled before a WTO panel, and being subject to fines or cross-sector retaliation. (Actually, the U.S. could do all these things for works of U.S. origin, but that is as likely to happen as Rush Limbaugh voting for Senator Clinton for President). Congress’s room for deciding public policy is limited then to areas permitted to national legislatures under the various treaties and to things not covered by the treaties, micro issues to be sure. If the proposed WIPO broadcasting treaty is successfully concluded and the U.S. adheres to it, even less room will be available.

Contrary to John Perry Barlow’s declaration in 1994 that "everything you know about intellectual property is wrong," that “intellectual property law cannot be patched, retrofitted, or expanded to contain digitized expression,” and his follow-up statement in 2000 that “The war is on, all right, but to my mind it's over. The future will win; there will be no property in cyberspace,” Napster (the source of his optimism in 2000) is now a licensed subscription service while the Grokster defendants settled after losing 9 to zip in the Supreme Court. The Supreme Court also upheld term extension, and all of the follow-on suits challenging various other provisions (GATT retroactivity, etc.) have been decided adversely to the plaintiffs. And, as noted, trade agreements have globalized very strong IP protection. If I was a betting guy, I wouldn’t be betting with JPB. But then, I have never been a futurist: I can’t understand either the past or the present, so the future is far too daunting for me.

But I do try to read as much as I can by people who take very different approaches than I do: one learns less from reading those who merely reinforce existing beliefs than from those who challenge them. The past two days I have been reading “The Long Tail” by Chris Anderson. The book began as an article in Wired and there are some who think that was its most perfect form; their point is that Anderson's central point is straightforward and in little need of the iterative 224 pages presented in the book. The same complaint is made about other books of the same general thrust, especially Malcom Gladwell’s “The Tipping Point,” which has also been criticized as being shallow and merely trendy, attributes The Long Tail certainly does not share. (An excellent book is Steven Levitt’s “Freakonomics”).

So what’s Anderson’s approach and what might it say about copyright? Anderson studied a number of businesses, like Netflix, Rhapsody, and What he discovered is that beyond the head tail of initial sales, where mass-produced hits rule, there is a long tail comprised of much smaller sales of niche works; the sales of niche works, in the aggregate, add up to a very substantial market and one that is growing at a fast pace. Moreover, as the offerings expand, there is no diminishment in the number of sales. He gives the example of CDs at Wal-Mart where half of the 10,000 CDs carried don’t sell once a quarter, whereas 98% of the 10,000 CDs available on Ecast, a digital jukebox company are downloaded in the same time period. The more works are added to the Long Tail, the same rate of sales prevails, suggesting to him vast opportunities for niche markets, markets which in the aggregate will rival the head tail of hits.

Anderson’s brief is to point to a fundamental cultural shift away from hits and he asserts, possibly to attitudes toward copyright. He readily acknowledges that head tail companies, those who produce the expensive hits, will always be in favor of strong protection. In a middle zone, he sees a less fervent attitude, while at the further parts of the long tail, approaches to protection are far more flexible and situational. That of course is hardly a novel idea nor one that is particular to the Internet. Groups like Metallica had a decided attitudinal shift toward copyright as they graduated from the long tail to the head tail.

What is different, Anderson asserts, is that the long tail market will, in the not too distant future become the dominant market in terms of numbers, eclipsing the head tail hit market. If true, we will still have a regime of very strong copyright protection on the statute books which will still be enforced strongly by head tail companies (which is why I think Barlow’s predictions have always been purely polemical and divorced from reality), but we will also have a less rigorous de facto regime for the majority of works.

Monday, December 18, 2006

In Praise of the 1909 Copyright Act

Last Tuesday, I visited a friend in DC, who, like me, has been practicing copyright law for a long time (in my case 25 years). He was speaking warmly of the 1909 Act. I began practicing copyright a few years after the 1909 Act was repealed, but that Act still governs a number of questions for works first published while the 1909 Act was in effect, like whether a proper renewal was accomplished, whether a proper notice was affixed, and whether there has been compliance with the manufacturing clause. (The manufacturing clause was in effect until 1986). I have dealt with many cases involving these questions, so while not a “1909 Act copyright lawyer” in the sense of having practiced while it was in effect, I have had a lot of 1909 Act “cases,” and have also studied it extensively.

As my friend was speaking, I realized I shared his enthusiasm for the 1909 Act, and believe it not only was vastly superior to the 1976 Act (especially as the latter has been amended), but I further realized that the contrast between the two Acts brings to the fore my own professional transformation, as well as why I think there is so much hostility to copyright today. The objections to the 1909 Act centered around the harshness of its formalities and the obstacles those formalities (including duration conditioned on renewal) presented to the U.S. joining the Berne Convention. One may, however, view the 1909 Act’s formalities and its renewal structure as constituting that Act’s greatest strengths: it forced those who were genuinely interested in exploiting their works to take affirmative steps indicating their intent, the failure of which left the work free (in every sense) for others to use. In the vast majority of cases, this meant a term of protection of 28 years. For a small group of works, the maximum term was 56 years. The prevalence today of paeans to copyright as property and descriptions of those who use even small portions of copyrighted works without permission as thieves had no traction under the 1909 Act. (This is not to say they weren’t occasionally made, just that the Act itself stood as a refutation).

It would be one thing if the 1909 Act stood, empirically, as a bar to the creation or distribution of new works, but on what basis can it be said that fewer works of utility or greatness were created under the 1909 Act? Moreover, we know only too well the downside to the l1976 Act’s life of the author plus 70 years regime: works are protected well over a century, while a vast and ever growing body of orphan and torpedo works haunt those who in the best faith and with the most diligent efforts cannot track down the copyright owner or who if they locate them, cannot get a response. I experienced this problem myself in the last few months in seeking, at my publisher’s insistence, to get permission to use quotations in my new treatise. While some authors were very responsive and helpful, there were a large number I never heard back from, and some I did hear back from were uncertain whether they or their publisher had to give permission; and this was for recent works where it was simple to locate the parties. Try that for a work 80 years old.

But aren’t authors better off under the 1976 Act? Some, perhaps many, are. Works no longer fall into the public domain for failure to comply with formalities, while a term well beyond post mortem ensures that the author will be able to enjoy royalties for his or her full life and so will his her grandchildren if not great grandchildren (whom the author is unlikely to ever meet). But the principal reason the 1909 Act stayed with the concept of a renewal term rather than switching to a term of life of the author as had been proposed, was to give the author a second bite at the apple, to retain the renewal term and bargain for it later when its value in the marketplace would be known. That goal was frustrated by the Supreme Court in the Fred Fisher case, which led to authors having to assign away ab initio all rights to the first and the renewal term. When it was proposed for the 1976 Act that term be measured by life the author’s life, authors’ group noted that this would be detrimental to authors because there would be no ability to recapture. Publishers adamantly opposed a recapture right, proving once again that when publishers talk about looking out for authors it is best for authors (and the rest of us ) to hold on to our wallets tightly. A compromise was struck, namely the termination of transfer provision in Section 203, a provision so complicated that is of use to only a few authors, which was the idea, of course. And it is, of course, exactly the type of formality that publishers had decried in the 1909 Act.

In the end, those authors who have lump sum deals are no better off than they were under the 1909 Act, but publishers are much better off. And for those who create under a work for hire regime, arguably expanded under the 1976 Act, again it is only the juridical entity that benefits, while the rest of us lose from the switch to our extremely long term. I do not assert that corporations are second class copyright owners, only that after three quarters of a century, it is likely that the tie between the original corporate author and the fifth or tenth successor to that company is so attenuated that we can only describe the longer term as a windfall for the remote owners.

As for the international benefits from the 1976 Act, there none since we did not repeal the notice requirement until March 1, 1989 when we joined Berne. We had before then joined the Universal Copyright Convention and had relations with all of the most important trading partners. By joining Berne, by the 1994 GATT implementing legislation and the subsequent WIPO Treaties, and free trade agreements, we have committed the United States to a vast number of provisions, all of which make it impossible to return to the 1909 Act or anything like it. We have in other words forever given up our sovereignty in determining the content of our own copyright law. That couldn’t have happened under the 1909 Act, and is a tragedy of monumental proportions because it means that future Congress’s ability to enact laws that fit the perceived needs of the times is seriously circumscribed.

Tomorrow, whether the effect of the Long Tail mitigates some of this.

Thursday, December 14, 2006

Mozart Leads the Way, Ja oder Nein?

I had thought about doing a posting today on the European Union's craven caving in to France's desire to kill harmonization for royalties on appliances such as Mp3 players. The theme would have been how harmonization is only for ever more expansive rights and terms of protection, and that the oft-stated rationale of vesting power in Brussels to issue IP directives in order to reduce trade barriers within the EC is so much hoo-ha: the one time consumers might benefit from such a reduction in tariffs, the initiative is strangled in the dark of night. But, it was an easy and obvious shot (see story here), and I feared I would sound like Rummy kvetching about Old Europe.

Instead, I found another topic from Europe, specifically Austria and Mozart. I have been to Salzburg and found it frightening for its fairy tale facade, but then I get whigged out going to adjacent New Canaan, Connecticut too. What interested me about the Mozart angle (other than my complete love for his music), is an announcement from the Internationale Stiftung Mozarteum and a series of stories about that announcement. The announcement states that the entire 600 work plus catalog of Mozart's works are now available on line here.

The announcement states: "The purpose of this web site operated by the Internationale Stiftung Mozarteum in cooperation with the Packard Humanities Institute is to make Wolfgang Amadeus Mozart's musical compositions widely and conveniently accessible to the public, for personal study and for educational and classroom use."

The Packard Humanities Institute is reported to have ponied up a fair amount of money, including $400,000 for digital rights to a music publisher Bärenreiter. Here is the license agreement posted on the website:

"The purpose of this web site is to make Wolfgang Amadeus Mozart's musical compositions widely and conveniently accessible to the public, for personal study and for educational and classroom use. Wholesale downloading or reuse of the contents of this website is prohibited under all circumstances, whether commercial or otherwise. The works of Mozart should be considered in the public domain. Restrictions may, however, apply to the scholarly edition as such, the graphic representation, and the reproduction of images of source materials. The works by Mozart are more than two hundred years old and are to be treated as historical documents. Since 1955, the Neue Mozart-Ausgabe has been published by Bärenreiter-Verlag, Cassel (; printed copies of any volume of the edition may be obtained from authorized dealers. For further information please contact the publisher. Inquiries for commercial purposes or on a scale beyond „fair use“ of this online publication should be directed in writing to: Digitale Mozart Edition (DME), Internationale Stiftung Mozarteum
Schwarzstr. 26"

There are a number of interesting angles here. First, recognition in Europe of the American fair use doctrine. (You'll note the search part of the web is in German). The reference to fair use though is tempered by the reference to wholesale downloading; if this means of an individual work, not much of a concession is being made. If as is more likely this means downloading 500 or so works, that's a different story.

I am baffled though by the apparent claim that pictures of a Mozart manuscript might be subject to some restriction; I don't see any originality there. Then there is the claim to the Neue Mozart-Ausgabe itself. It is one thing to claim copyright in annotations to public domain works, but quite another to claim copyright in corrections to a public domain work where the corrections assert that this what the original contained all along. Still, U.S. courts have long recognized that a copyrightable derivative work might exist if enough choices were made, and over the course of preparing an edition of all of Mozart, such a standard is easily met.

The project has been wildly successful in its opening days and is certainly invaluable to those of us who can read music and love Mozart.

You Say Apple, I say Orange

Section 408(c)(1) of the Copyright Act reads:

(c) Administrative Classification and Optional Deposit. —
(1) 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.

Based on this provision, the Copyright Office has, under the 1976 Act, as it did under the 1909 Act, promulgated forms for applicants to use in submitting their claim for copyright, e.g. Form TX for literary works, Form PA for Performing Arts, Form SR for sound recordings. These classifications are useful in routing the application to examiners, in compiling statistics for types of works registered, as well as to the public in determining the nature of the claim staked out. But as the statute makes clear, the classification by itself does not affect copyrightability or the scope of the registration.

What will affect the scope of the registration is the nature of authorship claim and the deposit. Section 408(c)(1) intended to assist hapless applicants who accurately describe their claim and submit the correct deposit but fill out the wrong form. If, for example, an applicant described the nature of the work as an audiovisual work, but the nature of authorship as music, and submits a deposit that contains the music, the Office will understand that the claim is in the music. This point was made quite clear when the contrary holding of the Third Circuit was vacated without argument, Raquel v. Education Mgt. Corp., 196 F.3d 171 (3d Cir. 1999), vacated, 531 U.S. 952 (2000).

The issue arose again last week in Texas, in Compliance Review Services, Inc. v. Davis-Osuawu, 2006 WL 3541715 (S.D. Tex. Dec. 7, 2006), where a truly hapless plaintiff submitted on a VA (Visual Arts) form, a claim for a "Policy and Procedure Manual." As plaintiff later conceded, the claim should have been submitted on a TX (literary work) form. The court rightly forgave the error, but also rightly dismissed the claim on the merits, after plaintiff apparently failed to submit copies of either its work or defendant’s for the court to review on the issue of substantial similarity, submitting instead an affidavit of its CEO. (Loooooser!).

One exception to this nice liberal attitude is found with the distinction between architectural works and architectural plans. Because the deposit requirements are different for these classes, separate registrations must be made; a single application does not register both.

Wednesday, December 13, 2006

Georgia on My Mind

I've got Georgia on my mind, but I think its a migraine. In Briggs v. State of Georgia, the Supreme Court of Georgia demonstrated why the preemption provision in 17 USC 301 is in need of tightening up. At issue was the constitutionality and possible preemption of a state statute (OCGA Sec. 16-8-60(b)), that makes it a crime, inter alia, to sell or distribute sound recordings and motion pictures unless the copy "bears the actual name and address of the transferor of the sounds or visual images in a prominent place on its outside face or package." The statute makes no distinction between authorized or unauthorized copies. Sections 109 and 202 of title 17 permit the lawful owner of a copy to sell or distribute the copy without the obligations imposed by the Georgia statute, setting up, for me a preemption issue. (Other states have similar provisions).

The majority of the Georgia Supreme Court dismissed the preemption argument in the briefest of discussions without mentioning Sections 109 or 202: "The statute does not criminalize unauthorized copyrighted works. The federal copyright law, on the other hand, protects the exclusive right of the copyright owner to reproduce, perform, or distribute or display the copyrighted work. ... Thus, the Georgia statute contains an extra element -- i.e., labeling -- which qualitatively distinguishes it from federal copyright law and saves it from preemption." (None of the concurring or dissenting opinions take the matter up).

It is true that the Georgia statute is directed toward labeling, but it does make criminal, activity that Sections 109 and 202 permit. Congress’s power to preempt state law is a fundamental constitutional power embodied in Article VI (2), and occurs when Congress is exercising one of its Article I powers. Preemption may occur in one of three ways: (1) when there is an express statutory provision declaring state law preempted (express preemption); (2) when even in the absence of a statutory preemptive provision, Congress intends federal law to "occupy the field" (field preemption); (3) and when state law conflicts with a federal statute even where Congress has not occupied the field (conflict preemption). Conflict preemption occurs when a state law stands as an obstacle to a federal purpose or where it is impossible for a private party to comply with both state and federal law. These three categories are not rigidly distinct, and may operate in conjunction with one another.

The extra elements test has its most useful application with express preemption, and less, if any, with field or conflict preemption, as in the Georgia statute. One way to look at the Georgia law (and similar provisions) is as a form of consumer protection, designed to ensure that consumers aren't defrauded about the source of the goods. (Or as another way for content owners to put pirates in jail). Such a law wouldn't be preempted as to fraudulent goods, but what about goods that are lawfully made, and which, say, simply have no express attribution of source as required by the Georgia statute? It is one thing to ban false designations of origin, and quite another to require a designation of origin on lawfully made goods which consumers have a right to dispose of pursuant to 17 USC Sections 109 and 202.

Monday, December 11, 2006

Transcript of Judge Posner in Second Life

For those who couldn't attend Judge Posner's interview in Second Life (or attended it but couldn't hear alot), here is a link to the transcript. The transcript also has screen shots of avatars, as well helpful links. (Brava to Genevieve Junot and others at Creative Commons for the transcript and the event). The interview is wide-ranging and is based on Judge Posner's most recent book, Not a Suicide Pact: The Constitution in a Time of National Emergency. But, the audience was also salted with us copyright types, whch led to some very interesting exchanges. My avatar, Chalil Vandeverre, asked a few questions (although the transcript doesn't reflect all of them, perhaps because at one point a female avatar came and sat on my head).

Three copyright topics were discussed, parody/satire, fan fiction/derivative works, and architecture in Second Life, the subject of an earlier posting. Judge Posner noted that courts sometimes micharacterize parody as satire. I asked why he used such labels and instead didn't use his own labels of substitutability and complementarity. He responded that "Judges aren't yet comfortable" with those concepts. I then shouted out, "but they are your labels, so why don't you use them?" but alas, my question wasn't heard (maybe because at that point I was being sat on) even though Judge Posner said "I'd like to hear from the raccoon." (Later, I did get in a snide question: "What is so virtual about Linden's servers?" in response to the inevitable question "How does the idea of jurisdiction apply in a virtual world?").

On architectural works, Ludwig Swain (who was inaccurately described as asking my question; in truth, he had earlier sent me an email posing it), raised the issue of whether the "cloning of a copyrighted real work architectural work into SL would be infringement or fair use." There was then a discussion on the issue of habitability. Judge Posner raised the example of the pyramids. These would be considered habitable, although probably not original under our Act, at least as to the exterior.

In all, a very fun time.

Vacating District Court Opinions for Settlement

Since most cases are settled, and at various stages of their litigation life, it is not surprising that there are an appreciable number where the court has already issued at least one opinion. That opinion may well have been the spur to the settlement. Can the parties agree to have the opinion vacated as part of their settlement? The answer is of course, yes, but the parties' agreement is in no way binding on the court. In light of this, parties usually make the settlement contingent on the court agreeing to vacate its opinion. District court judges' views of such motions to vacate vary, and may vary within the same court depending on the posture of the case: an opinion issued on a preliminary injunction motion at the very outset of the case with a scant record is likely to be regarded differently than an opinion issued after bench trial.

Occasionally, parties settle while the case is on appeal; this creates further problems, because the district court is usually ousted of jurisdiction by virtue of the appeal, and at such a late stage would, in any event, be even less likely to vacate if it could. Finally, pursuant to FRCP Rule 60(b)(6), the decision to vacate is discretionary, presenting very narrow circumstances in which to compel a vacatur. (It is something of an open question whether review of such a motion is de novo, see Major League Baseball Properties, Inc. v. Pac. Trading Cards, Inc., 150 F.3d 149, 151 (2d Cir. 1998)).

Yet, in Mattel, Inc. v. Goldberger Doll Mfg. Co., No. 04-6432-cv (2d Cir. Nov. 2, 2006), the parties managed to get the Second Circuit to order vacatur, reversing the district court which had twice denied such a motion. (Jeff Conciatori, Kathleen Sullivan, Michael Zeller, and Partha Chattoraj of Quinn Emanuel were the successful attorneys handling the vacatur motions). The court of appeals had earlier reversed the trial court's grant of summary judgment to defendants and remanded for trial, 365 F.3d 133 (2d Cir. 2004). The panel, per the legendary Judge Pierre Leval, had written in part at that time:

"The district court granted the defendant's motion for summary judgment. The court assumed for the purposes of the summary judgment motion that the defendant had copied the Rockette doll's eyes, nose, and mouth from Barbie. It concluded, however, “When it comes to something as common as a youthful, female doll, the unprotectible elements are legion, including, e.g., full faces; pert, upturned noses; bow lips; large, widely spaced eyes; and slim figures” (internal quotation marks omitted). Believing that copyright protection did not extend to Barbie's eyes, nose, and mouth, the court excluded similarity as to those features from the determination whether there was substantial similarity between plaintiff's and defendant's dolls. It concluded in comparing the other parts of the respective heads that there was no substantial similarity and therefore entered summary judgment for the defendant. Mattel, Inc. v. Radio City Entm't, 2002 WL 1300265, at *1 (S.D.N.Y. June 12, 2002). The court's conclusion that the eyes, nose, and mouth of the registered Barbie faces were not protected by copyright was erroneous."

On remand, a one day bench trial was held; an opinion in favor of defendant was issued on November 20, 2004 and judgment entered on December 7, 2004. An appeal was taken, and Mattel's opening brief was filed. Mattel then learned that there was another doll which it believed infringed.The parties entered into negotiations, and ultimately entered into a "global" settlement, which included the doll that was the subject of the appeal as well as the new one. The settlement was contingent on the district court vacating the opinion adverse to Mattel. The parties moved the district court for vacatur, a motion the court denied on December 12, 2005 for lack of jurisdiction. The parties then obtained a limited remand from the circuit for consideration of the vacatur motion. On April 3, 2006, the district court took the opportunity to issue (for it) a lengthy opinion explaining why it was denying the motion again, this time on the merits. Mattel then reactivated its appeal, and pursant to 28 USC 2106, sought vacatur, which the court of appeals granted.

There are good reasons not to vacate an opinion in such circumstances. As the Supreme Court held in U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18, 23 (1994), "Judicial precedents are presumptively correct and valuable to the community as a whole. They are not the property of private litigants and should stand unless a court concludes that the public interest would be served by a vacatur." Thus, the court seemingly limited vacaturs to "exceptional circumstances."

Mattel successfully overcame these circumstances (and quite easily it seems given the terse nature of the Second Circuit's order), by pointing to the public interest served by quelling problems with future enforcement efforts, the uncertainties in appeal, and by arguing that the trial court's opinion had only limited precedential value. Given that the issue of vacatur is not uncommon, the Second Circuit's quick and decisive action is important to note.

Friday, December 08, 2006

Layout Claims

Layout is a word of multiple meanings in copyright. In Incredible Technologies, Inc. v. Virtual Technologies, Inc, 400 F.3d 1007 (7th Cir. 2005), the Seventh Circuit rejected as functionally determined the “layout” of controls on a video game. By contrast, in General Universal Systems, Inc. v. Lee , 379 F.3d 131 (5th Cir. 2004), the Fifth Circuit considered the layout of computerized database invoice statements at the infringement stage. Obviously, in both architecture and maps, layout is a critical element of originality. In Reader’s Digest Association v. Conservative Digest, 821 F.2d 800 (D.C. Cir. 1987), the District of Columbia of Appeals held: “None of the individual elements of the Reader’s Digest cover—ordinary lines, typefaces, and colors—qualifies for copyright protection. But the distinctive layout of those elements is entitled to protection as a graphic work,” Similarly, in Steinberg v. Columbia Pictures Industries, Inc., 663 F. Supp. 706 (S.D.N.Y. 1987), the court held “one can hardly gainsay the right of an artist to protect his choice of perspective and layout in a drawing, especially in conjunction with the overall concept and individual details.” Layout has also been used in connection with the arrangement of a catalog/compilation.

In an opinion dated Decmber 5, 2006, Sartor v. Walters, 2006 WL 3497856 (W.D. LA.) a claim of layout in a magazine survived a summary judgment motion, although the opinion appears to be an example of the blind leading the blind. As an initial matter, plaintiff's apparent lack of standing went unnoticed. Plaintiff and defendant had started a magazine, Home Essentials, which lasted only two issues. Defendant then started a new magazine, Home Construction and Rennovation, which is still going. The opinion is silent about the structure of Home Essentials, who owned it and how, and whether it still existed at the time suit was filed. Plaintiff was described as suing "individually and in her capacity as a representative of " the magazine, neither of which facially accord ownership and therefore standing. On top of things, plaintiff also sued for advertisements appearing in the magazine. The court dismissed the claim, but not on the obvious ground that plaintiff didn't own rights in them (the advertisers likely do), but because the certificates of registration for the magazine don't list the advertisements. If plaintiff did own the ads (the only way she could sue, of course), then the collective work registration would cover all copyrightable content contained therein.

On the layout claim, the nature of the claim was stated to be

"The layout includes the words “HOME” prominently displayed at the top. The cover has a vertical bar on the left side, on which the date and edition are written. A horizontal bar beneath “HOME” intersects the vertical bar, with the horizontal bar including “Resource.” Featured articles are listed to the right of the vertical bar, with a photograph dominating the right-hand side.

The layout of the editorial page, or the page including the magazine's masthead and message from the editor, has double lines that border the masthead. The editorial consists of 2/3 of the page, and the masthead consists of 1/3 of the page. The layout of the sidebar design mimics a tabbed card. The title of the sidebar is featured on the tab.

The articles alternate between a two-column layout and three-column layout, depending on the graphics and story length. The title of an article is superimposed over a photograph or graphic."

OK, its a summary judgment motion, but that doesn't sound like a lot. And given the grievous oversights in the rest of the opinion, one does wonder.

Thursday, December 07, 2006

Tiling for Dollars

If I couldn't be a copyright lawyer, I would want to be a trade dress lawyer. There are some conceptual similarities, especially in figuring out the line between ideas and protectibilty, as well as functionality defenses.

There are cases is which both trade dress and copyright claims are made. Sometimes plaintiffs lose on the copyright claim because the claim is deemed to be for a general style and not particularized expression, but they then win on the trade dress claim for essentially the same reason: a recognizable, nonfunctional style may well be protected. But sometimes plaintiffs lose on both claims, and that's largely what happened on December 1st in Walker & Zanger, Inc. v. Paragaon Industries, Inc., 2006 WL 3490975 (N.D. Cal.)(Vaughan Walker)(Thanks to C.E. Petit for bringing the case to my attention). The court granted summary judgment to defendant on the trade dress claims (and a false advertising one), and partial summary judgment on the copyright claims, leaving a few designs for further exploration.

Plaintiff was a producer of what was described as "high quality stone and ceramic decorative tiles." (Here is a link to its website). Plaintiff claimed that there was an overriding design theme that included "classical design, colors and glazes that evoke the look of 'Old World handiwork.'" One line, deftly called Avignon, "is intended to capture a variety of French-inspired designs, specifically invoking the 'look and feel' of French architecture and art 'over a large span of time,'" quite an accomplishment indeed. Defendant was believed to be an evil pirate. (Here is a link to its website). In a quite thorough review of the case law and facts, Judge Walker held plaintiff's designs to be generic, albeit nonfunctional (some consolation!).

On the copyright side, plaintiff had registrations and so relied on their prima facie status. Defendant was, however, held to have rebutted that status through expert testimony demonstrating a considerable body of similar pre-existing works by third parties. Of course, there might be non-trivial variations sufficient to support derivative copyrights, and it is here that some designs made the summary judgment cut while others didn't, with the warning that those that stayed in would be accorded at best a thin copyright.

A very solid opinion.

Wednesday, December 06, 2006

Second Life and Architectural Works

A reminder of tomorrow night's interview of Judge Posner in Second Life from 6 to 8 pm PST as described in this earlier post. To attend the interview, you must make a reservation for your avatar at Creative Commons, through Once you make your reservation, link this this blog post: That will take you to a SLurl which, when you click the link/button, launches your Second Life login and automatically teleports you to the location of the event, which happens to be the Creative Commons in-world HQ. This Slurl is an external link. While you're logged in, you can use the "Search" button at the bottom of the screen to find places/people/groups.

Once in Second Life, here is a nice copyright question. Section 120(a) of the Copyright Act, added in 1990 when protection was accorded for the first time statutorily to architectural works, reads:

"(a) Pictorial Representations Permitted. — The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place."

The limitation to buildings is important, since the legislation does not provide an exemption for the copying of plans or drawings of architectural works. The limitation to two-dimensional reproductions of course heightens the interest in what is a three-dimensional reproduction. Note too that the exemption is limited to architectural works that have been constructed. This limitation is something of an analog to fair use and unpublished works: where a work has not yet been built, the architectural work owner can sue for unauthorized two-dimensional copies, subject of course to other limitations in the act, like fair use. Finally, the built structure must be located in or ordinarily visible from a public place for Section 120(a) to kick in.

Applying the above to Second Life, let’s say that a 3D model contained in a city mapping program of a proposed, unconstructed architectural work like the Freedom Tower in Manhattan is posted to Second Life as part of a resident’s site. Section 120(a) doesn’t apply because the work is unconstructed, but is there liability? Or, let’s say there is a constructed work in a public place, and it is posted to Second Life where it forms part of a resident’s site. Does 120(a) apply and is there liability is it doesn’t?

Tuesday, December 05, 2006

Unpublished Opinions

Effective January, 2007, litigants may, without restriction, cite unpublished opinions in their briefs, thanks to the Supreme Court. This long-overdue reform ends an abusive practice by which federal judges have limited the use of their own law-creating. The principal argument for unpublished opinions - that it permits overworked courts to dash off insignificant opinions - was a make-weight: If an opinion was useless, no one would cite it. On the other hand, if an unpublished opinion does contain significant statements of law, litigants should be aware of it and able to use it as support; after it, it is what at least three appellate judges thought. (There are district courts who mark their opinions unpublished too, but that is less common).

I want to give one recent example of an opinion in a copyright case that provides important statements on the fundamental issue of how substantial similarity is determined. The case is Boone v. Jackson, 2006 WL 3327058 (2d Cir. Nov. 15, 2006). Here is the opinion. Note that the court of appeals disagreed with the district court's reasoning and that if one were unable to cite the appellate opinion, the citation would have to be a mere affirmance of the district court:

Plaintiff argues that the district court improperly dismissed her copyright claim with respect to two versions of her song “Holla Back” because (1) in its “probative similarity” analysis, the court wrongly “hyperdissected” the songs at issue into protectable and nonprotectable elements instead of considering the songs as a whole and (2) there were issues of material fact whether “substantial similarities” existed between the songs such that an ordinary observer would recognize an appropriation of plaintiff's song by defendant.

At the outset, we note that the district court opinion is at times unclear as to which similarity analysis-probative or substantial-it was undertaking. The court correctly noted that a copyright claim requires both proof of (1) actual copying, which a plaintiff may establish by demonstrating probative similarity, and of (2) improper use, which requires substantial similarity, see Repp v. Webber, 132 F.3d 882, 889 & n. 1 (2d Cir.1997), but it appears to have confused the distinction-and hence the analysis-between the two at a few junctures in its opinion. Nevertheless, after a de novo review of the district court's decision as well as the record, Feingold v. New York, 366 F.3d 138, 148 (2d Cir.2004), including the experts' reports and audio recordings of both “Holla Back” and “Young N,” viewed in the light most favorable to plaintiff, this Court agrees with the district court that defendants did not infringe Boone's copyright, although we do not, as explained below, adopt all of the district court's reasoning.

As to plaintiff's first argument, our precedent makes clear that “dissection” of a work in terms of, inter alia, its lyrics, harmony, or structure, is often required in the probative similarity context to determine whether a defendant has actually copied a plaintiff's work, see Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.1946), and even plaintiff herself submitted expert testimony that dissected the songs at issue. See Repp, 132 F.3d at 889 (noting expert testimony as method of demonstrating probative similarity). We agree with plaintiff, however, that in undertaking the probative similarity analysis, the district court erred by dissecting the works into protectable and non-protectable elements and then comparing the protectable elements for similarities because such an analysis is appropriate to the substantial similarity context. Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir.1994) copied), ‘[probative] similarity’ relates to the entire work, not just the protectible elements.”)... [2] Nevertheless, the district court appears to base its decision on the permissible ground that the plaintiff's expert conceded the alleged similarities at issue are different and dissimilar, thereby weakening plaintiff's argument that defendant copied her work. Boone, 2005 WL 1550511, at *3-*4. Plaintiff's expert claimed that defendants' song shared three fundamental similarities with “Holla Back,” which evidenced actual copying: (1) the position of the phrase “holla back” in the hook, or chorus, of the song; (2) the rhythmic construction of the phrase, specifically the eighth-note, eighth-note, quarter-note syncopation and its instrumentation; and (3) the nature and quality of the lyric's repetition in the hook, particularly the call and response element. But a review of the deposition transcript reveals that plaintiff's expert undermined his own conclusions by conceding, inter alia, that the hook in both songs have different lyrics; that the rhythmic constructions are different in that Holla Back varies the beat and vocalization pattern of the “holla back” phrase while Young N does not; that the bass instrumentation of the defendants' hook does not share length, pitch, and rhythm with plaintiff's hook; and that the call and response applied only generically to the two songs and was executed in defendants' song “in a different way and to varying degrees.” There is no probative similarity where an expert concedes that allegedly similar music elements, alleged to have been copied, were in fact different. See, e.g., Johnson v. Gordon, 409 F.3d 12, 21-23 (1st Cir.2005); cf. Attia v. Soc'y of the N.Y. Hosp., 201 F.3d 50, 58 (2d Cir.1999) (“Where, as here, a defendant's work is dissimilar in the very respects in which it is claimed to be similar, that can obviously influence the conclusion as to whether the claimed similarity in fact exists or is substantial.”). Thus, we find that as a matter of law no probative similarities between “Holla Back” and “Young N” exist.

FN2. We are mindful that probative similarity does permit the dissection of the work on other grounds, such as structure, harmony, lyrics, and instrumentation and that expert testimony may dissect two works to elucidate where the two are similar to an extent that suggests actual copying. See, e.g., McDonald v. Multimedia Entm't, Inc., No. 90 Civ. 6356(KC), 1991 WL 311921, at *2 (S.D.N.Y. July 19, 1991) (“Evidence admissible on the issue of ‘probative similarity’ includes expert testimony ‘dissecting’ the two works and discussing the works' relationships to other earlier works, for the purpose of illuminating whether similarities between the two works are more likely due to copying or independent creation.”)

*2 As to plaintiff's second argument, assuming arguendo that plaintiff had demonstrated probative similarity and hence actual copying, we agree with plaintiff that the district court misapplied our precedent in undertaking the substantial similarity analysis, but that error does not mandate reversal. The court below seems to have employed the “more discerning ordinary observer test” discussed in Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003 (2d Cir.1995), from which the district court concluded that in examining the works at issue to determine whether improper use has occurred, it must extract unprotectable elements “from consideration to determine if the protectable elements standing alone, are substantially similar.” Boone, 2005 WL 1560511, at *3 (citing Knitwaves, 71 F.3d at 1002). however, we expressly cabined the broad application of this standard, In Knitwaves,see 71 F.3d at 1003, and our subsequent decisions have emphasized that “[i]n applying this test, a court is not to dissect the works at issue into separate components and compare only the copyrightable elements,” Boisson v. Banian, Ltd., 273 F.3d 262, 272-73 (2d Cir.2001). Instead, a “court, confronted with an allegedly infringing work, must analyze the two works closely to figure out in what respects, if any, they are similar, and then determine whether these similarities are due to protected aesthetic expressions original to the allegedly infringed work, or whether the similarity is to something in the original that is free for the taking.” Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 134-35 (2d Cir.2003). This is because a defendant may infringe a copyright not only by literally copying a portion of a work, but also by “parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work of art ··· are considered in relation to one another.” Id. at 134.

Under this standard, we agree with the district court's analysis that in examining only the protected elements, there was as a matter of law no substantial similarity between any protectable portion of plaintiff's and defendants' respective songs. Indeed, it is well-established that common phrases are not protectable under copyright, see, e.g., Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 144 (2d Cir.1998) (finding the phrase “you've got to stand for something, or you'll fall for anything” too common to accord copyright protection), and undisputed evidence supported the district court's finding that “holla back” was one such phrase. Defendants, for instance, produced a list of over 30 songs that detailed the mainstream and widespread use of “holla back” in popular American music at around the same time plaintiff's song was recorded and released, and even plaintiff's expert admitted that the phrase “holla back” spoken in an eighth-note, eighth-note, quarter-note pattern could not be deemed original.

*3 The district court erred, however, in not considering whether the defendant “parrot[ed] properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work of art-the excerpting, modifying, and arranging of public domain compositions, if any, together with the development and representation of wholly new motifs and the use of texture and color, etc.-are considered in relation to one another.” Einstein Moomjy, Inc., 338 F.3d at 134. Guided by a common sense inquiry of the works as a whole, Boisson, 273 F.3d at 273, we find the combination of elements in each work is distinct. There is undisputed evidence that the songs' respective structures, lyrics, and harmonies are all different, and as our probative similarity discussion above makes clear, plaintiff's own expert conceded numerous differences in the very similarities alleged to exist between the works. See Attia, 201 F.3d at 57-58 (affirming grant of summary judgment where defendant's work had numerous differences in the very elements in which it was alleged to be similar). There is, therefore, no substantial similarity between the songs “Holla Back” and “Young N.” As such, plaintiff could not establish as a matter of law the elements required to prove an infringement claim.

Accordingly, for the reasons above, the judgment of the district court is hereby AFFIRMED.