Two From the First

The First Circuit issued two copyright opinions quite recently:

Latin American Music Co., Inc. v. The Archdiocese of San Juan, 2007 WL 2326817 (1st Cir. Aug. 16, 2007), and Mag Jewelry Co., Inc. v. Cherokee, Inc., 2007 WL 2258279 (1st Cir. Aug. 08, 2007). Latin American Music Co. is a fine illustration of the folly of those who assert it is easy for third parties to determine who owns copyrighted works: the dispute involved twisted chains of titles and competing claims of ownership by multiple parties, all of whom had issued licenses. Mag Jewelry is a traditional infringement claim involving jewelry but with a twist: unauthorized copying by defendant of an earlier, independently created work.

In Latin American Music Co., the Court of Appeals affirmed the district court’s grant of ASCAP’s motion for summary judgment on the ownership of four of five songs, the exception being “Caballo Viejo,” by Simon Diaz. My favorite version of this song is on Ry Cooder and Manuel Galban's’s excellent 2003 album “Mambo Sinuendo,” where it is the fifth song, and it is my favorite song on that album. The album was recorded mostly at Egrem Studios in Havana with amazing musicians, including the incomparable Miguel “Anga” Diaz on congas, Orlando “Cachaito” Lopez on bass. (The title song “Mambo Sinuendo,” has a guest appearance by Herb Alpert on trumpet).

The most interesting part of the opinion is not the ownership question, but instead concerns the non-existence of a separate authorization right, something the First Circuit had previously denied, but reiterated here:


LAMCO/ACEMLA challenge the district court's conclusion that they infringed the Publishers' copyrights in the disputed songs by including them in the ACEMLA catalog. They contend that merely authorizing the use of the songs, in the absence of proof that the songs were actually used in an infringing manner, is not infringement. The Publishers argue that the particular circumstances of this case show conduct by LAMCO/ACEMLA beyond merely authorizing use of the songs.

17 U.S.C. § 106 provides the exclusive rights that are held by the owner of a copyright. “One infringes a copyright when he or she violates one of the exclusive rights to a work held by a copyright owner, and the owner has the right to sue for infringement .” T-Peg, Inc., 459 F.2d at 108. Mere authorization of an infringing act is an insufficient basis for copyright infringement. Venegas-Hernandez, 424 F.3d at 57-58. Infringement depends upon whether an infringing act, such as copying or performing, has occurred. Id. at 58-59. Therefore, to prove infringement, a claimant must show “an infringing act after the authorization.” Id. at 59.

In Mag Jewelry, the case is all in the facts, which though lengthy, I have edited:

In December 2001, plaintiff Mag Jewelry Company (“Mag”) purchased some costume jewelry at a Target store in Rhode Island. The necklaces, whose pendants were comprised of four crystal stones in the shape of an angel, were of interest to Mag because it holds a copyright on that “crystal angel” design, and Target was not one of Mag's customers. Mag subsequently filed this copyright infringement action against Target Corporation and its supplier, Style Accessories, Inc. (“Style”).The defendants denied copying Mag's angel, claiming that their jewelry was based on an identical design independently created by someone else. Following presentation of Mag's case to a jury, the district court granted defendants' motion for judgment as a matter of law.


I.


The facts underlying the dispute-other than the ultimate question whether copying occurred-are largely undisputed. Mag's president, Daniel Magnanimi, applied for copyright registration for the angel in November 1995, listing 1995 as the year of its creation and June 1, 1995 as the date of first publication. The United States Copyright Office issued the registration and, in the following months, Mag sent letters through counsel to dozens of individuals and businesses demanding that they stop selling similar crystal angels.

One such letter was sent to Alan Gregerman, a Rhode Island jewelry designer and manufacturer, who was selling a crystal angel virtually identical to Mag's. Gregerman hired an attorney, who in February 1996 sent a response to Mag stating that Gregerman had created the same angel design earlier than 1995 and that he also had “first manufactured, marketed, and sold products incorporating the angel design” before that year. Gregerman later testified that he created his crystal angel in the summer of 1994, that he began selling and shipping copies by September 1994, and that his angel was included in a 1995 gift catalog. His attorney's letter reciprocally accused Mag of copyright infringement and demanded that Mag “cease and desist” using the angel in any products.

There were further communications between Mag's and Gregerman's attorneys, followed by two significant events. First, in June 1996, Mag filed a supplement to its original copyright registration, changing its crystal angel's date of creation to March 1992-more than two years earlier than Gregerman claimed to have created his angel. Second, Gregerman and Magnanimi agreed that they both would sell crystal angels without interference or threat of suit from the other, and Gregerman also gave Mag permission to make and sell two other angel jewelry designs that he had created. Magnanimi sent Gregerman a letter reflecting that arrangement in September 1996, stating that “we have both agreed that you can make the crystal angel as copyrighted by Mag Jewelry Co. Mag and Gregerman continued to make and sell crystal angels, co-existing without incident until Mag discovered the crystal angel necklaces sold by Target Corporation in late 2001. After purchasing some at the Target store in Warwick, Rhode Island in December 2001 and more at a Target store in New York the next month, Mag filed this copyright infringement action against the retailer. Target later identified Style as its supplier, and Mag amended its complaint to add Style as a defendant, alleging that Style had sold crystal angel items that were copied from Mag's angel.

Style, however, was a customer of Gregerman. In its answers to Mag's interrogatories, the company denied that it had copied “any piece sold or created by Mag jewelry” and reported that it had “adapted a piece purchased from Alan Gregerman Co.” to create the Target necklace. Style had purchased crystal angels from Gregerman between May 1997 and August 1998 and subsequently had similar pieces produced, at a lower cost, by two other companies. Style did not obtain Gregerman's permission to bring the design to other manufacturers.

The twist in the case came from the fact that Style didn’t have Gregerman’s permission to copy: but since Style copied from the earlier Gregerman design and not Mag’s, Mag lost, the court noting:

Mag argues that we should reject out of hand what it characterizes as Style's unprecedented independent creation defense, i.e., that Style is protected by Gregerman's independent creation notwithstanding the fact it did not have Gregerman's permission to make the allegedly infringing items. While we can appreciate Mag's dismay, principles of copyright law on which Mag itself relies appear to permit just such a defense by Style.