Tuesday, April 17, 2007

Troll Dolls and Restoration

Judge Jon O. Newman of the Second Circuit is one of our national treasures. He has devoted his long, illustrious career to public service, beginning as a law clerk to Chief Justice Earl Warren, stints as a U.S. Senate aide, U.S. Attorney for the District of Connecticut, U.S. district judge, and chief judge of the court of appeals. His opinions are always thoughtful, restrained, and scholarly. We are doubly blessed because Judge Newman has been the author of dozens and dozens of landmark copyright opinions. We now have a new one, Troll Company v. Uneeda Doll Company, 2007 WL 1097082 (2d Cir. April 13, 2007).

The case is one of first impression in the Second Circuit, and one of the few on Section 104A. (See also Dam Things from Denmark v. Russ Berrie & Co., 290 F.3d 554 (2d Cir. 2002)). The works at issue are "those dam" troll dolls, "ugly but somehow endearing ... with oversized heads, big grins, pot bellies, and frizzy hair." The dolls have Denmark as a country of origin. They fell into the public domain for failure to affix notice; they were restored by Section 104A in the 1994 GATT implementing legislation.

Two issues were presented: (1) was plaintiff Troll Co. the owner of the restored copyright; (2) was defendant Uneeda a "reliance party." The questions were answered (prelimarily), respectively, yes and no. The first question turned on a number of factors, principal of which was the choice of law provision in Section 104A(b): rather than determining ownership of restored copyrights by reference to U.S. copyright law, such rights are governed by the law of the country of origin. This means that courts will have to examine a diversity of sources, but it is the only appropriate way to deal with the issue: the copyrights that were restored were created by foreign law. In 1994, we considered a proposal to apply U.S. law, but rejected it out of hand. Examining Danish copyright law, Judge Newman's opinion affirmed the preliminary injunction holding it likely that under Danish law, plaintiff is likely to be deemed the author.

The reliance party issue is one that we very deliberately considered in drafting Section 104A: it was the key element in concerns over a Takings Clause violation. One aspect of reliance party status was critical in Judge Newman's opinion: the requirement the reliance party has engaged in "continuing acts." The act deliberately refrains from providing a definition of "continuing" due to the fact-specific nature of such inquiries. Instead, in Congressman Hughes's floor statement, he analogizes to the continuing infringement doctrine, a doctrine well understood by courts, since they developed it. Judge Newman cites this statement and comes to the correct conclusion: defendant, who ceased exploiting the work for many years was not a reliance party.

Judge Newman's opinion points out one reason why Justice Scalia's screed against resort to legislative history is so profoundly misguided. Congress, aware that efforts to define a concept in the statute might prove under or over inclusive of the facts in real disputes, chose to refer courts, in legislative history, to a doctrine they had themselves developed and applied . Given that there was no Judiciary Committee report on the bill due to its fast-track nature, the legislative history was a floor statement by the subcommittee chairman, the person with the most familiarity with the provision, indeed the person on whose behalf the provision was drafted and inserted. A dispute arose, the court found the statute could admit of either argument advanced by defendant, and so it resorted to the floor statement, which supplied the answer.

Bravo to Judge Newman and to Craig Mende of Fross Zelnick of NYC, attorney for plaintiff.


Anonymous said...

Here's a direct link to the opinion:


Anonymous said...

I loved your comment, "such rights are governed by the law of the country of origin". We have an ongoing discussion around http://meta.wikimedia.org/wiki/American_non-acceptance_of_the_rule_of_the_shorter_term
as to whether the protection term is given by Berne convention 7-8 (shorter term) or whether the USC introduces a US exception. This jugement seems to hint that the foreign duration should apply.

William Patry said...

Since the Berne Convention is not self-excuting in the U.S., the U.S. doesn't apply the rule of the shorter term. This means though that U.S. term governs even as foreign law determines who owns rights.

Anonymous said...

Thank you for your answer, but I'm still puzzeled.

All around the world, Berne convention is not self-executing in national legislation, and national legislations specify national terms of protection, just like in the US. But the syllogism is not applied: unless otherwise specified, the rule of the shorter term (Berne convention, art. 7-8) is used as a jurisprudential interpretation for material first published abroad: when the term of protection has expired in the country of origin, it is not protected by national law, unless otherwise specified (This is interpreted as the national intention, since interpreting it the other way around would make the shorter term clause useless).
There is indeed 17 U.S.C. 104-c that may be interpreted as a specific rule on content and duration, but on the other hand, it can also be interpreted as simply being the US transposition of Berne convention art. 5-2: given the provision made by the rule of the shorter term, its effect on the protection term is ambiguous.

I cannot understand why the worldwide jurisprudential interpretation should be different in the U.S.: is it a pretorian interpretation, a general principle, or a specific law? I guess there is no US jurisprudence on this specific aspect, but is there a hint as to what the legislature intention was on this point? And would my interpretation have a chance to stand in court? So many questions - sorry, & thanks anyway.

William Patry said...

Anonymous, I did a whole posting on your question, here: