Second Life IP Suit

My morning gossip rag, the New York Post, had this story yesterday about a suit brought by six Second Lifers suing a Queens man in the EDNY for copyright and trademark infringement for "counterfeiting and selling versions of their products." Among the products allegedly copied were clothing, shoes, and beds. As a virtual and real world, does the conceptual separabilty analysis apply to the design of useful articles on Second Life?

Judge Thomas Meskill

A second former Chief Judge of the Second Circuit has died, Thomas Meskill. Judge Meskill had been the mayor of New Britain, Connecticut, a Congressman, and governor from 1971 to 1975, before, like Judge Oakes, he was nominated to the bench by President Nixon. Unlike Judge Oakes, he was not a Nixon appointee, because his nomination died: in part from opposition from the ABA who thought he had too little actual legal experience, and in part because his nomination was one of the last acts of President Nixon before he resigned. Meskill was re-nominated by President Ford, and with the support of Senator Lowell Weicker, he was confirmed. Also unlike Judge Oakes, Judge Meskill was quite conservative, and had the nickname "Tough Tommy," mostly for his courage in putting the state on a solid financial footing after having inherited a state on the verge of bankruptcy. He was though, personally unflappable: In 1970, when both Meskill and Weicker were Congressmen, their two engine prop plane lost both engines over New York City. While Weicker was about to faint, Meskill calmly kept working on a speech and joked that they were riding in the most expensive glider in the world. The pilot fortunately was able to restart the engines and land safely.

Judge Meskill was of a time when career politicians were regularly appointed to the bench (when I worked for Congress, my boss, a moderate Democrat in a Republican district, was repeatedly offered a Third Circuit judgeship by Republican Presidents as a way to get his seat; he declined). Once on the bench, Judge Meskill worked hard at becoming a respected judge. Although he was not a copyright maven like Judge Oakes, he nevertheless wrote a number of very well known opinions which were excellent in every respect. Reyher v. Children's Television Workshop, 533 F.2d 87 (2d Cir. 1976), issued the year after he joined the circuit is the foundational opinion on the scenes a faire doctrine. Warner Brothers, Inc. v. ABC opinion, 654 F.2d 204 (2d Cir. 1981), is an oft-cited opinion on parody and protection for characters (Judge Newman then wrote a second opinion in a later appeal). Durham Industries, Inc. v. Tomy Corp., 630 F.2d 908 (2d Cir. 1980) is a foundational opinion on the scope of the derivative right. Wright v. Warner Books, 953 F.2d 721 (2d Cir. 1991), was a critical opinion in ending a huge fight within the circuit on application of fair use to unpublished works, a fight that began with the Salinger opinion, continued with the New Era opinion, and which saw three members of the circuit testify before Congress. Judge Meskill's sober and sensible approach eliminated the need for any legislation; the insistence by book publishers that an amendment to Section 107 be enacted anyway backfired when the amendment was carefully crafted to do nothing since in light of Judge Meskill's Wright opinion, nothing was needed.

Judge Meskill continued to work until his death, joining in Judge Newman's excellent GATT opinion of April 13th, Troll Doll Co. v. Uneeda Doll Co., 483 F.3d 140 (2d Cir. 2007). He also wrote a famous dissent in the Harper & Row v. Nation to Judge Irving Kaufman's majority opinion which the Supreme Court reversed and wrote a compelling dissent in the circuit's en banc reversal of his panel opinion in the famous L. Batlin & Sons, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976), with Judge Oakes writing the en banc majority opinion.

Calatrava, Bridges, and Moral Rights

When the 1990 Architectural Works Protection Act was being drafted, the question of what constituted an architectural work was an important one. I had become infatuated with bridge designs, from the great Swiss Christian Menn to the contemporary Spanish designer, Santiago Calatrava (see this wonderful wikipedia entry on him). I bought books on both for the study I did on architecture as a Policy Planning Advisor in the Copyright Office. To me the works of these designers and others were not only art, but great art. Calatrava's bridge at Bilbao (see here) is art by anyone's definition. In New York City, he designed the new Path transportation Station at the World Trade Center, and has designed a wild apartment building at 80 South Street consisting of stacked cubes. (See here). Despite his training as an engineer, Mr. Calatrava asserts that function follows form, and there can be no doubt that his works are sculptural.

Like Frank Lloyd Wright and other architects, there is also no doubt Mr. Calatrava's works suffer from defects in practicality, and tend to need a lot of repairing. Calatrava has recently sued Bilbao over changes to his bridge, including an extension by Japanese architect Arata Isozaki. An article in the UK newspaper The Independent spells out the dispute. Here is a link to the full article, and here is a relevant excerpt:

Calatrava is renowned worldwide for his soaring, airy bridges, and, in the case presented by lawyers in Bilbao's law courts yesterday, he claims that the new link "breaks the symmetry of the bridge, clumsily distorts the design... and damages the integrity of his work". He is demanding €250,000 compensation and the dismantling of Isozaki's extension, or, if the new link remains, - €3m for "moral damages". Initially ridiculed for "leading from nowhere to nowhere", Calatrava's footbridge is beautiful, but not exactly user-friendly. Its limpid glass floor tiles, designed to reflect the grey-green waters of the river Nervion that flow beneath, are notoriously slippery when wet. For 10 years residents and visitors have complained of skidding and tumbling. The city authorities who approved Isozaki's housing complex and his bridge link vigorously disagree. "The paintings of Goya are works of art; a bridge is for people to walk on," insisted Bilbao's mayor, Iñaki Azkuna. Without the bridge link, pedestrians would have to walk down to the old riverside jetty, then up two flights of steps. Mr Askuna concedes that a metre of banister was removed from Calatrava's bridge to accommodate Isozaki's extension, but reckons "this has no negative impactwhatsoever upon Calatrava's work", and that the structures co-exist harmoniously. Calatrava's lawyer, Fernando Villalonga, thinks otherwise. "This mustn't happen, because in this country, architecture, like other arts, is protected by intellectual property rights," he said. Mr Villalonga accused the town hall of "cheek, arrogance and ignorance". To which Mr Azkuna countered that all 560 glass tiles of Calatrava's bridge have cracked over the years, ravaged by the extremes of climate, and had to be replaced at the cost to taxpayers of €200,000. "If it's his intellectual property, let him take his intellectual property," fumed Mr Azkuna in the spring, when Calatrava launched his suit. "We've had enough of the dictatorship of Calatrava saying we can't touch his little bridge. We've had enough of this superstar."

As an American, I confess to feeling amused by the decidedly un-natural rights attitude expressed in the final quote. In the U.S., bridges were excluded from protection under the 1990 Act despite my love for them based on a concern that they and related transportation structures were too essential to the public to be tied up in copyright disputes. Moreover, even those works of architecture that were included were denied moral rights. Maybe we got things right for once.

Cablevision Oral Argument

Yesterday I attended the oral argument in the Second Circuit in the Cablevision RS-DVR case, previously blogged here. With the usual caveats about not always being able to tell about the final vote merely from the questioning, I am optimistic there will be a reversal.

The panel consisted of three outstanding judges: John Walker, Robert Sack, and a new judge, Debra Ann Livingston, a former Columbia Law School professor. Judge Walker (ex-chief judge, now on senior status), has been a dedicated public service for almost his entire career. He is the author of a number of excellent copyright opinions. Judge Sack is a First Amendment scholar, the author of "Sack on Defamation: Libel, Slander, and Related Problems (3d ed. 1999) and the co-author of "Advertising and Commercial Speech: A First Amendment Guide." (1999). Judge Livingston is an expert on criminal procedure.

Judge Walker dominated the argument, although Judge Sack was active too. Judge Livingston asked a few questions. The court expanded the time for argument from 12 to 15 minutes a side and then gave Cablevision’s counsel a bit more time on his rebuttal. It was a hot bench as the saying goes. Judge Walker began the questioning by asking Cablevision’s lawyer why RS-DVR wasn’t just like Video on Demand (VOD). Cablevision’s lawyer responded with what was his principal theme: consumer choice: with VOD, it is the content supplier’s choice what you can see. With RS-DVR, it is the consumer’s choice. Walker noted that this was also was true for RS-DVR since consumers could only tape what the content suppliers originally chose to make available. He wondered whether the only difference between the two services was the sequence in which the consumer chooses. The answer, an analogy to iTunes, was not, I thought, particularly apt.

Judge Sack then asked what I think was a softball question: whether the copyright owners could have stopped Cablevision from offering RS-DVR as a condition of the license to initially transmit the programming. Eventually after much to-ing and fro-ing, the answer was yes the studios could by license impose such a condition. I think Judge Sack was making the point that the case was really about money, about what one side or the other could or couldn’t get in contract negotiations, a point that was in fact later made rather caustically, in questioning plaintiffs’ lawyers.

Judge Walker next spoke abut TIVO and noted that the industry hadn’t sued , and he therefore assumed that TIVO was noninfringing. He also noted that not only does TIVO copy the particular programming consumers select, but based on developed preferences, it copies and sends to you programs it thinks you might like. What, he asked, would be the liability of TIVO for such preference-generated copying? Cablevision was quick to point out that RS-DVR did not have a preference-generating copying feature and thus, it was inferred, even better situated. Cablevision took the position that someone who proffers a suggestion is not a direct infringer; therefore, TIVO was not a direct infringer (leaving open whether it could be secondarily liable).

It was then plaintiffs' turn at the podium. Plaintiffs split their time between Kathleen Forrest of Cravath, speaking to the reproduction right, and Bob Garrett of Arnold & Porter, speaking to the reproduction right. Judge Walker asked her what the difference was between RS-DVR and TIVO. She replied that to the consumer they were the same, but the back end was different. Essentially, Walker rejoined, "who cares about the back-end?" Her response, delivered fairly stridently (in keeping with her entire presentation, in which she sometimes almost shouted over the judges), was “but it’s a commercial service!” Nu?

Walker then asked, "what if I want to make a copy of a work for my own personal use. I don’t have any machines that do that so I take it to a copy shop, they make the copy, and I bring it home." Kinko’s was the reply. Walker was not impressed and then asked if Cablevision is directly liable, what is the liability for consumers? She conceded consumers “might” have a fair use argument.

Sack then continued the thread by asking what is at bottom the agency issue for fair use: he asked, “say we on this panel send copies to the XYZ corporation for our personal use, and then get the copies back and use them for our own purposes. Is that infringement?” Forrest answered that the Copyright Act covered hosting in Section 512, but with checks and balances. But Sack's question wasn't about hosting, and i have no doubt her position on infringement via RS-DVR would have been the same had the argument been heard in 1997 before the DMCA was passed.

Next up was Bob Garrret on the performance right. His argument was based entirely on the statutory language regarding the public performance. Cablevision's use, he argued, squarely fell within the plain meaning of the statute. He was calm and measured, in stark contrast to Ms. Forrest. I thought unconvincingly, he argued that there is a single performance, no matter how delayed the second one (the one initiated by the consumer). The court seemed skeptical there was a single performance and seemed to believe that the second performance was private.

We will now have to wait for the opinion.

The Effect of Judicial Ideology in IP Cases

Awhile back I posted about an article by Professor Oren Bracha entitled the "The Ideology of Authorship Revisited. " Professor Matthew Sag and his colleagues, Tonja Jacobi and Maxim Stych, have just posted on ssrn a paper entitled "The Effect of Judicial Ideology in Intellectual Property Cases," available here. Professor Sag et al have produced not a philosophical look at ideology as Professor Bracha did, but rather, a draft analysis of data from intellectual property cases decided in the U.S. Supreme Court from 1954 to 2006. They conclude that ideology "is a significant determinant of cases involving intellectual property rights. However, our analysis also shows that there are significant differences between intellectual property and other areas of law with respect to the effect of ideology." (Abstract).

As interestingly, within the IP field, they conclude that "compared to patent cases, in copyright cases, the justices were significantly less likely to vote against the IP owner, and conversely, were more significantly more likely to vote against the IP owner in trademark cases. One interpretation of this result is that the justices are more convinced by the incentive theory underlying copyright than they are by the consumer protection theory underlying trademark law. " (page 34).

This last conclusion is more easily susceptible of objective verification than the first conclusion about the effect of ideology (because you can see from the opinion who won or lost, appreciating that not all disputes are binary), but that shouldn't mean that efforts to discover whether ideology plays a role shouldn't be undertaken. The authors start from the premise of determining whether "copyright exceptionalism" -- the theory that copyright is not ideological in a political sense -- pans out. They note:

First, the Supreme Court decides an unusually large number of IP cases unanimously. Second, there are a number of IP cases in which justices vote against type, i.e. cases in which conservative justices vote against the IP owner or liberal justices vote in favor of the IP owner. Third, there are also many IP cases which produce strange coalitions of liberals and conservatives that would appear to defy the predictions of an attitudinal model.(page 17).

There are plenty of graphs and charts and explanations of models used, too detailed to go into here, and which address the expected objections to such an effort. A highly recommended read.

Punitive Damage Award Unconstitutional

One of the few areas left to state common law copyright is with pre-1972 sound recordings. The New York Court of Appeals took the liberty provided to erect a full-blown copyright regime in . A jury in Tennessee recently went wild, awarding serial litigant Bridgeport Music, Inc. $3.5 million for sampling in the Notorious B.I.G.'s album "Ready to Die. The case is Bridgeport Music, Inc. v. Justin Combs Publishing, 2007 WL 3010525 (6th Cir. Oct. 17, 2007), available on the Sixth Circuit website here.

The opinion has some colorful examples of home-towning by local lawyers to the jury, like

This is a joke. They think they can come down on and if it is okay to do what defendants did, then I guess you have to tell them that. But if it is not okay, if in Nashville, Tennessee, we're not going to put up with that, then it is up to you. You six people today stand for the community that we live in.

Up here in the north, down on means something else. Well, shucks, you got your award from the jury that stood up and showed them fancy Yankees, but dang it, the Sixth Circuit vacated the award as violating due process. But seriously (and it is not, I think, disparaging Southerners to satirize when they themselves play to the lowest stereotypes) the court's explanation for why it vacated the award is interesting. First, it found defendant's conduct -- making a transformative use -- was not reprehensible, with reprehensible defined as indifference to or reckless disregard of the health or safety of others, or the result of intentional malice or trickery. Second, the compensatory damage award ($366,939) was not only large, but the punitive award was deemed to be disparate to it. Finally, the court compared the punitive award to statutory damages under the Copyright Act, noting that $150,000 is the maximum.

The moral for me is that you can lead a jury to the water and get them to drink it but the horse will still stay in the corral.

The Fourth Circuit's Self-Inflicted Wound

If bad cases make bad law, it is also true that sometimes easy cases can make bad law too when courts don't exercise the discipline that the situation requires. Courts are flooded with meritless suits brought against motion picture studios or against other deep pocket defendants either by pro se plaintiffs or on behalf of delusional, talentless individuals who believe, wrongly, that they have been ripped off. In such circumstances, a swift end to the litigation is the only answer. The failure to do so leads to enormous wasted resources, by courts, by defendants, and when a jury is empaneled, by ordinary citizens.

The litigation brought by Frederick Bouchat is, in my opinion, Exhibit #1 in a lack of discipline leading to subsequent disaster. Bouchat, a security guard in Baltimore, believed that the Baltimore Ravens had infringed a design he claims to have created for the team's logo. He sued the team and the NFL's licensing arm. In my opinion, there was no evidence of access and the thus the case should have been summarily dismissed. In my opinion, the case was a shakedown. But, applying the fatally flawed theory of striking similarity, the case went to a jury. The jury found liability, and the Fourth Circuit affirmed in an awful decision that drew an excellent dissent by Judge King, 228 F.3d 489 (4th Cir. 2000), amended by and pet. for reh'g en banc denied. 241 F.3d 350. Judge King's dissent is the best thing yet written on why striking similarity is inherently inconsistent with basic copyright principles, and as to the facts in Bouchat, devastating to the plaintiff's claim and the majority opinion.

Meanwhile, the district court ruled that Bouchat was not entitled to claim statutory damages for failure to register before infringement. Bouchat understandably did not claim damages for his unpublished design but did claim defendant's profits. The trial court limited his claim to revenue from the sale of products reproducing the logo, and excluded revenue from things like beers sales, etc. A second jury ruled plaintiff had suffered no damages and awarded him zilch. The Fourth Circuit dutifully affirmed this too, 346 F.3d 514 (4th Cir. 2003).

Meanwhile, Bouchat brought four different suits naming hundreds of other defendants. The captions in these cases run to three and a half pages single space. All of this could and should have been prevented by never letting the case go to the jury in the first case. By not exercising the correct discipline, the Fourth Circuit has caused the waste of many millions of dollars in legal fees, lost time, and wasted juror's time. Having dug themselves into a hole of their own making, they had to find a way out, but in doing so, they made confronted some difficult damages issues, a point noted by Judge Niemeyer's concurring opinion. The latest case is from Wednesday, Bouchat v. Bon-Ton Department Stores, 2007 WL 3015736 (4th Cir. Oct. 17, 2007).

The latest slew of claims were brought against so-called downstream defendants: licensees of the original defendants: advertisers, publishers of magazines, video game makers, trading card makers, etc. In these cases, Bouchat claimed statutory damages based on these defendants infringement after registration, and he claimed actual damages. The district court, sweeping away a threatened tsunami of Bridgeport-like dimensions, held that all of these later suits were barred by claim preclusion. The Fourth Circuit once again affirmed.

Now recall that Bouchat did not seek actual damages in the first action and could not have (successfully) claimed statutory damages either because the first two defendants had infringed (or so the jury held) before registration; not so for the later defendants. The court of appeals wove (their word) all of the claims into one action: while the court held that Bouchat was not "legally obligated" to join the later defendants in the first action (after all, they only engaged in conduct later), he was precluded from suing what they described as joint tortfeasors in successive actions. According to the court of appeals, "[e]ach time a licensee copied the [logo], Bouchat's copyright was infringed and two parties were responsible: the licensee who made the copy and NFL[] and the licensees, who used the logo with NFL[]'s authorization. Because NFL[] and the licensee were at fault together for the licensee's violation, they are jointly and severally liable for any damages the violation caused." A different approach, one taken by the concurring opinion, was to focus on Bouchat's concession that all the parties were in privity.

Interesting issues also also with the statutory damages claim. The downstream defendants were alleged to have infringed after Bouchat's registration, and thus Bouchat was not facially excluded from collecting such damages from them. The district courts held though that "the date on which NFL[] first infringed was the date on which the infringement by the licensees commenced because the NFL[] approved all of the licensees' infringing acts." In reaching this novel result, the court stated that "Section 412 cannot be read in isolation." Why not? Well, the court said, "Because the statute does not distinguish between 'one infringer ... liable individually' and 'two or more infringers ... liable jointly and severally,' we must treat these two categories of infringers identically when assessing their statutory damage liability. The statute thus subjects a licensor-licensee to the same tracing rule that would apply to either one as an individually liable infringer." This despite the court's acknowledgment that "Of course, NFL[] is not a party in today's cases, and none of the licensees appear responsible for NFL[]'s initial act of infringement since none aided in designing the [logo]."

Judge Niemeyer's concurring opinion takes a different tack; for him the only thing that saved the court from "almost irresolvable issues presented by this multi-party licensing infringement case" was Bouchat's concession that the licensee defendants were in privity with the original defendants. Judge Niemeyer believed that the Act does not address such situations, situations that occurred at what he called the "subatomic level." Judge Niemeyer used the example of an infringing book sold my multiple bookstores to illustrate his concern over what he described as unintended exposure to liability, but it appears he failed to appreciate that statutory damages are awarded per work, not per infringing copy made. He did though raise an interesting hypo: what if the copyright owners files first against the publisher of the infringing work, electing statutory damages, and then later sues bookstores, electing statutory damages? Is there claim preclusion? Judge Niemeyer believed the answer turned on whether there was privity among the parties.

Storage Lockers Redux

The great Mp3.com wars were fought over the concept of storage lockers: yes, the suits involved violation of the reproduction right from MP3.com's massive purchase of lawful CDs and copying them on to their servers, but the labels' objections were over consumers ability to listen to a lawfully purchased copy wherever they wanted -- as opposed to having to buy multiple copies, say. As an audiophile, I have never liked the mp.3 format, and go the other way, buying SACD and DVD audio CDs, although admittedly not so far back as vinyl.

Storage lockers are back, most recently with the announcement by the Norwegian company Ezmo that's storage locker service will be available in the U.S. Techcrunch describes the service this way:

Ezmo, like Anywhere.FM, is a clone of iTunes on the web that just came to the United States. Their Flash based player lets you upload your music to the web, organize it into playlists, and share with your friends (just 10). Unlike Anywhere.FM, Ezmo lets you not only pull music from iTunes, but upload music from your Windows Media Player and Winamp music collections too. However, Anywhere.FM still wins out in my mind for the time being. I find it easier for me to use because its user interface stays truer to iTunes. Their buddy radio is also an easy way to consume new music on par with Last.FM. Ezmo only lets you share music with ten friends.

Judge James L. Oakes

We have lost one of our greatest judges, Judge James L. Oakes (whose initials deliciously spelled out Jell-O). Judge Oakes was a native of Illinois, but spent his professional career in Vermont, where he was every bit a classic Vermonter: an individual who believed in the need for society to benefit everyone. His service as a state legislator, state attorney general, and federal judge gave him vast insights into how government achieved or thwarted those goals, goals which he, as a public servant, devoted his life to. He served on the Second Circuit for 36 years, and was its chief judge from 1988 to 1992. As the NY Times noted in its obituary:

Scholarly and gregarious, Judge Oakes insisted in his decisions, speeches and writings that judges should never shy away from protecting fundamental rights. He had little patience, he wrote in a 1997 article in the Columbia Law Review, for politicians who attacked such rulings as improper activism. Historic moments, he added, sometimes required judges to act “when the rest of our political structure bogs down.” In this sense, he was, he wrote, “old-fashioned — fashioned from the thirties of the Great Depression, the forties of war and the Holocaust and fascism, the fifties of the cold war and McCarthyism and Little Rock, and the sixties of the civil rights movement, the assassinations and the would-be Great Society.”

It will surprise people then to learn that he was a Nixon appointee. President Nixon appointed him to the District Court for Vermont in 1970 and to the circuit court the following year. While my contact with him was with copyright, where he was a giant in the field, he was very proud of his opinions in other areas. He was, for example, the dissenter in the Pentagon Papers case, with the Supreme Court agreeing with him on appeal. (Even when the Supreme Court reversed him, as it did in his Mills Music v. Snyder copyright case, his was the correct opinion). He also wrote majority opinions upholding regulations barring sex discrimination in education, applying the principle of one-person-one-vote to New York City’s Board of Estimate, and allowing aliens to challenge deportation orders in court. As the New York Times noted, "All three decisions were affirmed by the Supreme Court."

In the field of copyright, Judge Oakes, as a private lawyer, was involved in a landmark case under the 1909 Act on work for hire, Brattleboro Publishing Co. v. Winmill Publishing Co., 369 F.2d 565 (2d Cir. 1966). I don't think he issued an published opinions in his short tenure as a district judge, but on the court of appeals, I can think of 30 major majority opinions and two important concurring opinions. Here are the most important of the majority opinions, which many readers will quickly recognize as cornerstones of Second Circuit law today:

Medforms, Inc. v. Healthcare Mgt Solutions, Inc., 290 F.3d 98 (2d Cir. 2002)
Morris v. Business Concepts, Inc., 283 F.3d 502 (2d Cir. 2002)(earlier opinion at 259 F.3d 65)
Hamil America, Inc. v. GFI, 193 F.3d 92 (2d Cr. 1999)
Richard Feiner & Co. Inc. v. Turner Entm't Co., 98 F.3d 33 (2d Cir. 1997)
Williams v. Crichton, 84 F.3d 581 (2d Cir. 1996)
Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (2d Cir. 1995)
Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995)
Waldman Pub. Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1995)
Folkways Music Publishers, Inc. v. Weis, 989 F.2d 108 (2d Cir. 1993)
Laureyssens v. Idea Group, Inc., 964 F.2d 131 (2d Cir. 1992)
Brandir Int'l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987)
Sygma Photo News, Inc. v. High Society Magazine, Inc., 778 F.2d 89 (2d Cir. 1985)
FII, Inc. v. Moody's Inv. Service, Inc., 751 F.2d 501 (2d Cir. 1984)
Warner Bros., Inc. v. Gay Toys, Inc., 724 F.2d 327 (2d Cir. 1983)
Harry Fox Agency, Inc. v. Mills Music, Inc., 720 F.2d 733 (2d Cir. 1982)(rev'd by S.Ct.)
Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980)
Big Seven Music Corp. v. Lennon, 554 F.2d 486 (2d Cir. 1976)
L. Batlin & Sons, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976)
Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941 (2d Cir. 1975)
Meeropol v. Nizer, 505 F.2d 232 (2d Cir. 1974).

The two concurrences are (1) New Era Publications, Int'l ApS v. Henry Holt & Co., Inc., 873 F.2d 576 (2d Cir. 1989), in which he wrote to defend then district judge Pierre Leval's fair use approach and to state his views in favor of fair use of unpublished works in cases where copyright was being used to suppress criticism; and, (2) Author's League of America, Inc. v. Oman, 790 F.2d 220 (2d Cir. 1986), a challenge to the then extant manufacturing clause, in which he wrote to leave open the possibility of a First Amendment limitation on copyright.

Judge Oakes' writing style was lively yet precise. In the Sygma case, for example, he wrote:

One of the challenging socio-legal questions raised by this copyright infringement case involves the extent to which the buyers of men's “sophisticate” magazines are motivated to purchase a particular magazine by the cover photo. The question is no less difficult when the photo is, as it is here, one of Raquel Welch in the buff (modestly covering herself in the nature of September Morn).

He also had a great interest in the esoteric issue of conceptual separability - when the design of a useful article could be protected. He wrote two opinions on this, the first, Kieselstein Cord, involving a belt buckle, in which he began:
This case is on a razor's edge of copyright law. It involves belt buckles, utilitarian objects which as such are not copyrightable. But these are not ordinary buckles; they are sculptured designs cast in precious metals-decorative in nature and used as jewelry is, principally for ornamentation. We say “on a razor's edge” because the case requires us to draw a fine line under applicable copyright law and regulations.
(District Judge Weinstein, sitting by designation had a different view: The works sued on are, while admirable aesthetically pleasing examples of modern design, indubitably belt buckles and nothing else; their innovations of form are inseparable from the important function they serve-helping to keep the tops of trousers at waist level.")

The other conceptual separability case was Brandir, involving the unique undulating bike rack design that is so common today. It was with conceptual separability that I came to meet Judge Oakes. In the late 1980s, I was a Policy Planning Advisor to the Register of Copyrights, and wrote a study on copyright protection for architectural works. I asked Judge Oakes and Judge Jon O. Newman, another giant in the field, if they would sit down for a discussion of the issue. They agreed, and I flew to NYC and met them in Judge Oakes' chief's chambers in Foley Square. After a good discussion, we went to dinner at an Indian restaurant at Rockefeller Center. I had been to NYC only a few times at this point and suggested taking a cab. Judge Oakes insisted we take the subway, which I hadn't taken before. This was before Rudy Giulani had allegedly tamed the city, and I had visions of Sylvester Stallone-looking thugs in black leather jackets terrorizing us while Woody Allen hid behind his newspaper. But I thought if a circuit judge could ride the rails, so could I and did without incident, as I have . I stayed in touch after then and saw him last last year, at a speech Judge Leval gave at NYU Law School.

Judge Oakes' openness (so evident in his willingness to vacate a huge chunk of his first Morris Business Concepts opinion), his intellectual curiosity, his warmth, and commitment to all of God's creations will be deeply missed, but never forgotten. May his memory be a blessing for eternity.

Good Copy, Bad Copy Documentary

Tomorrow at NYU, there will be a screening of the 2007 documentary Good Copy, Bad Copy, coupled with what promises to be an insightful question and answer period afterwards. Here’s the announcement:

In cooperation with Digital Freedom, NYU ACM, Free Culture @ NYU will be hosting the first American screening of the 2007 film Good Copy Bad Copy. The documentary highlights the current state of copyright and culture, and features prominent copyright players such as Girl Talk, Lawrence Lessig, Renaldo Lemos, and Dan Glickman.

We’re especially excited to announce that immediately following the screening, we’ll be hosting a question and answer session with the film’s award-winning Danish co-director, Henrik Moltke and Fritz Attaway, the MPAA’s Executive VP and Special Policy Advisor. If you’re at all interested in these issues, or want to meet a director working in free culture, or even just want to meet someone from the MPAA, you should absolutely come! The film is a wonderful introduction to the topics that Free Culture @ NYU deals in and this screening will be a fantastic opportunity to learn more about what we’re working towards.

Good Copy Bad Copy Screening
Followed by Q&A with Co-Director Henrik Moltke and Fritz Attaway, MPAA
Tuesday, October 16th 2007
9:15pm - 11:15pm
NYU’s Courant Institute
251 Mercer Street b/w Bleecker and W. 4th
Room #109
Free and Open to the Public (bring ID if non-NYU)


The documentary is a 58 minute (boy does it needs editing!) Danish documentary, directed by Andreas Johnsen, Ralf Christensen, and Henrik Moltke. It features interviews with Danger Mouse, Girl Talk (born Gregg Gillis), Siva Vaidhyanathan, Larry Lessig, and others. In keeping with the spirit of the film, it can be downloaded for free (or contribution) at www.goodcopybadcopy.net. The film looks at attitudes in Nigeria, Sweden, Brazil, the UK, and the US. about sampling and copyright in general. For those of us like me who regard the Bridgeport – Dimension 6th Circuit opinion (rejecting even de minimis uses of sound recordings as non-actionable) as the worst and most evil copyright decision in the history of the world, you will get to meet the folks at Bridgeport. Conversely, Danger Mouse, of the Grey Album fame, is utterly charming. Then there is serial copyright court expert Lawrence Ferrara, who while genuinely trying to help explain the (anyway simple) musical issues in the Bridegeport case, seems all too eager to impress us that despite his almost Madame Tussaud dressed for success look, he is down with George Clinton’s immortal “Get Off Your Ass and Jam,” the subject of that case.

Since you can see the movie for free on your computer (as I did), why stay up for a screening that starts at 9:15 pm (in the city that never sleeps)? The answer is the Q&A with the film’s Co-Director Henrik Moltke and Fritz Attaway of the MPAA. I do not knw Mr. Molte, and assume he will provide interesting tidbits about the making of the film. For those on the copyleft side of issues, I strongly urge that you go just to listen to Fritz, whom I have know for over 20 years, and whom I admire deeply. Fritz’s knowledge of copyright and communications law is breathtaking. He is also an extremely straightforward, reasonable, honest, calm, and articulate person whom I think will wow everyone. It is so common in the copyright wars to demonize the other side, a mistake for many reasons. It is courageous for Fritz to appear at the screening, in the belly of the beast, and after a movie which is sure to rile the faithful up to a fever pitch. He is well worth staying up for. I think people will learn a great deal from him; I always have.

A Copyright Owner's Castle

There have been a number of stories about a petition filed by author J.K. Rowling and Warner Brothers in the Delhi High Court seeking about $50,000 from a group that erected a recreation of Hogwarts Castle as a pandal, an elaborately crafted temporary structure, in conjunction with the Durga Puja religious festival honoring, as the name indicates, the Hindu Goddess Durga. There are also reportedly life-sized models of Harry Potter and other characters as well as a mock steam engine train that resembles the Hogwarts Express. See here.

Warner Brothers is said to have released this statement:

Sadly, the organizers of this large-scale commercially sponsored event did not approach us for permission to go ahead. This event falls outside the guidelines set up by Warner Bros., JK Rowling and her publishers to help charitable and not-for-profit organizations to run small-scale themed events that protect fans and allow everyone to enjoy Harry Potter books, films and events in the spirit in which they were created.
There is supposedly a hearing today on the matter, which will be governed in its infringement issues by Indian copyright law. Here is a link to a very well done summary of Indian Copyright Law put out by the Indian Department of Secondary & Higher Education, and here is a link to the Indian Copyright Office website, which has links to various texts.

There are many wonderful copyright issues in the case: for example, does the literary copyright owned by Ms. Rowling extend to the making of three-dimensional structures like a pandal or a mock steam engine, or even the visual depiction in their details of the characters she created? The existence of copyright for literary characters in the U.S. -- apart from the copyright in the novel in which they appear -- is not an easy matter to achieve, and was raised for the first time in the Sam Spade case, Warner Bros. Pictures Inc. v. CBS, Inc., 216 F.2d 945 (9th Cir. 1954), which spoke of a character that "really constitutes the story being told" (protectible) as compared to a character who "is only the chessman in the game of telling the story" (unprotectible). This decision was criticized by Judge Posner as "wrong," Gaiman v. McFarlane, 360 F.3d 644, 660 (7th Cir. 2004).

One would hope that the question of literary authorship for characters would be governed by the same standards as all other works. What the law is in India, I do not know. The rights of Warner Bros. are a different matter since those rights, which flow from Ms. Rowling, are in audiovisual works and therefore include visual depictions.

Is that a Radio under your kilt?

In the United States, the battle over licensing of public performances of music played via radio broadcasts in businesses open to the public reached the Supreme Court in Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975), and the following year when Congress dealt with the issue in Section 110(5) of the Copyright Act, exempting use of a single receiving apparatus commonly found in private homes. In 1998, Section 110(5) was amended again to provide numerical guidelines for certain establishments, but that amendment was found by a GATT panel to violate the TRIPS Agreement. The section remains and the U.S. paid a fine.


The issue is now being brought to the fore in Scotland in a dispute between the Performing Rights Society and a Scots car repair chain called Kwik-Fit.

The BBC reports that

At a procedural hearing at the Court of Session in Edinburgh a judge refused to dismiss the £200,000 damages claim. Kwik-Fit wanted the case brought against it thrown out. Lord Emslie ruled that the action can go ahead with evidence being heard. The PRS claimed that Kwik-Fit mechanics routinely use personal radios while working at service centres across the UK and that music, protected by copyright, could be heard by colleagues and customers. It is maintained that amounts to the "playing" or "performance" of the music in public and renders the firm guilty of infringing copyright.

Here is a link to the full story about the matter.

Misuse via Cease & Desist Letters

Efforts by lawyers to assert copyright in their pleadings and briefs is not new, and is typically done not to suppress the contents of documents but to prevent their reproduction by competitors. There are occasional exceptions, usually dealing with expert reports. Most recently, lawyers sending cease and desist letters have taken to asserting copyright to prevent the public disclosure of the enforcement effort itself. One law firm that appears to be doing this is the Dozier Internet Law, P.C. , in Glen Allen, Virginia. Here is a link to a letter they sent to an individual, Mr. Justin E. Leonard of Scottsdale, Arizona on September 21, 2007 on behalf of DirectBuy. DirectBuy was upset at things said about them on three websites, www.infomercialblog.com, www.infomercialratings.com, and infomercialscams.com. These sites allegedly contained defamatory statements about DirectBuy (an issue I offer no opinion about). On behalf of DirectBuy, the Dozier firm stated, "Our client will not stand by and allow this misconduct to continue," and therefore demanded various things, while still claiming on behalf of the law firm, not DirectBuy, that "this law firm does not attempt to restrict legitimate free speech... ." The letter however closed with this: "Please be aware that this letter is copyrighted by out firm, and you are not authorized to republish this in any manner. Use of this letter in a posting, in full or in part, will subject you to further causes of action." I am of course using the letter in part too.

Mr. Leonard decided not to roll over and contacted Public Citizen. Public Citizen describes itself as "a national, nonprofit consumer advocacy organization founded in 1971 to represent consumer interests in Congress, the executive branch and the courts." It has a litigation arm, and decided to get involved in the dispute, on October 5th, sending this response, captioned as "How not to write a cease and desist letter." Public Citizen's Paul Levy closed his letter this way in reference to the copyright threat at the end of the Dozier letter:

Such a posting would be fair use. Moreover, inquiry by my colleague Greg Beck produced the interesting information that the copyright in the letter has not been registered. Sadly, according to what you told him, you have been successful in this intimidation because none of your cease and desist letters has ever been posted.

There is always a first time. We are posting the letter on the Public Citizen web site (the letter can be found at http://citizen.org/documents/directbuy.pdf) so the public can access our differences by comparing your contentions with our responses. By this letter, we are inviting you to test the validity of your theory that the writer of a cease and desist letter can avoid public scrutiny by threatening to file a copyright law suit if his letter is disclosed publicly on the Internet.

Please make me the second time for what is clearly misuse.

Urinetown producers pissed off

In a case that one couldn’t make up, the producers of the Chicago version of the Broadway play “Urinetown” sought a declaratory judgment that their version didn’t infringe the original. This delicious dispute didn’t get off the ground, because the Chicagoans named the wrong party, Mullen v, Society of Stage Directors & Choreographers, 2007 WL 2892654 (N.D. Ill. Sept. 30, 2007). Now that’s funny!

Here is the relevant (edited) part of the court’s opinion:

Plaintiffs seek a declaratory judgment that their Chicago production (the “Chicago Production”) of “Urinetown!” the Musical (the “Work”) was original and unique and did not copy any of Defendant's creative authorship present in Defendant's Broadway production of the Work (the “Broadway Production”) under the Copyright Act. Plaintiffs also seek a declaratory judgment that the Chicago Production did not constitute “passing off” Defendants' creative authorship, if any, in the Broadway Production as Plaintiffs' own, in violation of the Lanham Act. Lastly, Plaintiffs seek damages for Defendants' knowingly false public statement that Plaintiffs staging of the Work in Chicago “plagiarized” substantial elements of the Broadway Production.

...
On or about November 9, 2005, Blue Dog Entertainment, LLC entered into a licensing agreement with Music Theatre International (“MTI”), whereby the Chicago Team was granted a license to use the script and music for Urinetown the Musical (“Urinetown”). The Work was first staged in 1999 at the New York International Fringe Fest by Joseph P. McDonnell, who directed the original production of the Work. A copyright claim to the book and lyrics of Urinetown was registered with the U.S. Copyright Office on August 12, 1998, by Greg Kotis and Mark Hollmann. A copyright claim to the lighting design of Urinetown was registered with the U.S. Copyright Office on August 21, 2006, by Brian MacDevitt. No other copyright claims associated with Urinetown have been registered with the U.S. Copyright Office. In order to make the satire of musical theater conventions successful, it is necessary to borrow heavily from the parodied works themselves, including such elements as stage direction, choreography, scenic design, costumes and lighting. In 2001, the Work was staged again on Broadway by Defendants Rando, Carrafa, Pask, MacDevitt and Gale (the “Broadway Team”). Defendant Rando won the 2001 Tony Award for “Best Director” for his direction of the Work and Defendant Carrafa, was nominated for, but did not win the Tony Award. In 2006, the Work was staged at the Mercury Theatre in Chicago, Illinois by the Chicago Team.

On November 13, 2006 each member of the Chicago Team received a “cease and desist” letter (the “letter”) from lawyers representing the Broadway Team, the SSDC and the USA Guild. A true and correct copy of the November 13, 2006 letter was attached to the Amended Complaint. The letter stated that “original contributions” of each member of the Broadway Team were “copied willfully, blatantly and practically wholesale” by each member of the Chicago Team. The letter further stated that the Chicago Team “set out to willfully duplicate [the Broadway Team's creative elements] in their entirety and with extraordinary precision.” The letter demanded that within ten days the Chicago Team represent in writing that they agree to cease performing Urinetown (the show closed in May 2006), that Mr. Loeffler “decline and remit” the Jefferson Award and After Dark Award, and that the Chicago team provide an accounting to “assess license fees and damages.” The letter closed with an admonition to Plaintiffs that the Defendants authorized their lawyers to “vigorously and promptly pursue their rights in the United States District Court in the event [Plaintiffs] do not comply with the terms of this letter.”

On November 14, 2006, the Broadway Team, Defendant Hauptman, representing the SSDC, and USA held a press conference in the SSDC's offices in New York City, where the Defendants publicly released the letter and publicly stated that the Chicago Team plagiarized stage direction, choreography, scenic design, costumes and lighting from the Broadway Team. During the press conference, the Defendants publicly stated that the Chicago Production was “nearly identical” to the Broadway Production, that the Act I Finale was “copied exactly” and the Defendant's called the Chicago Team “plagiarists.” Attached to the Amended Complaint is an article in which the Chicago Team is accused of plagiarism. On December 7, 2006, McDonnell, the original director and choreographer of the Work, publicly stated that the Broadway Team had copied substantial portions of McDonnell's creative authorship present in the original staging of the Work.

Plaintiffs allege that the Defendants made public statements that the Chicago Production was “nearly identical” to the Broadway Production, that the Act I Finale was “copied exactly” and that the Chicago Team are “plagiarists” are false and defamatory. According to Plaintiffs, the term “plagiarist” has an objective and factual meaning in the creative arts profession. The clear and unequivocal effect of Defendants' statements is that the Chicago Team intentionally committed professional and intellectual theft. Moreover, the statements were not expressions of opinion. Lastly, the statements were defamatory per se because they attacked the professional honesty, integrity and ability of each member of the Chicago Team and damaged the reputations of each member of the Chicago Team in the eyes of the creative arts community in which they work and in the minds of thousands of writers, directors, choreographers, designers, actors, producers and millions of theatre patrons. The statements were made with actual malice, with the knowledge that they are false or reckless disregard for whether they are false and in with the knowledge that the allegations would likely cause actual harm to the Plaintiffs professional reputations. The allegations were made within sixteen hours of sending the letter to Plaintiffs, in the offices of the very union to which several of the parties belong, giving the allegations and Defendants' a false air of legitimacy and unfairly attacking the Plaintiffs' in such a manner that it would be nearly impossible for the Plaintiffs to defend against such charges.

Plaintiffs request that this Court issue a declaratory judgment that Plaintiffs' production of the Work was unique and not copied protectable creative authorship lawfully owned by the Defendants; issue a declaratory judgment that Plaintiffs' production of the Work was unique and that Plaintiffs did not pass off Defendants' work as their own; issue a permanent injunction against Defendants, jointly and severally, enjoining and prohibiting Defendants, their agents, servants, employees, officers, attorneys, successors and assigns from making any further public statements inconsistent with the judgments of non-infringement; order Defendants, jointly and severally, to place a minimum one-quarter (1/4) page advertisement in Variety Magazine recant their allegations and apologizing to Plaintiffs; order an award of damages against the Defendants, jointly and severally, in an amount to be determined at trial ... Plaintiffs conceded in their reply brief that USA had no ownership interests in any copyrights at issue in the Copyright Act and Lanham Act claims.

A. Non-Infringement under the Copyright Act and Lanham Act

Plaintiffs claim they are entitled to declaratory judgment of non-infringement of the Copyright Act and the Lanham Act for their use of certain works registered with the Copyright Office and owned by the Defendants. However, Plaintiffs concede that USA does not own “the proprietary rights” at issue in the claims involving the Copyright Act and the Lanham Act. They simply argue that USA has a sufficient legal interest in the proprietary rights of its members. In doing so, Plaintiffs cite nothingno case law, no law review articles, nothingsupporting the proposition that a suit seeking declaration of non-infringement can be maintained against parties who are unable to assert infringement themselves. Plaintiffs merely contend that USA has a legal interest in the outcome of this lawsuit as well as the proprietary rights at issue by virtue of the copyrights.

The Seventh Circuit has noted that “[t]he purposes of declaratory judgments are to ‘clarify[ ] and settl[e] the legal relations at issue’ and to ‘terminate and afford relief from the uncertainty, insecurity, and controversy giving rise to the proceeding.’ “... Here, Plaintiffs have no legal relations with USA that require clarification or settlement. Thus, in the instant case, declaratory judgment against USA serves no real purpose other to satisfy Plaintiffs' thirst for revenge against USA for siding with the other Defendants.

Furthermore, if USA sought a declaratory judgment of copyright infringement or damages for copyright infringement against Plaintiffs, it would surely fail for lack of standing because it is an “owner” nor is it a “beneficial owner” (e.g.a licensee) of any copyright at issue under the Copyright Act. ... To prove copyright infringement, a plaintiff must first demonstrate the she owns a valid copyright.... Therefore here, it is fairly evident that there is nothing to declare against USA, as it is incapable of pursuing a copyright infringement action against Plaintiffs.

Therefore, counts I and II are dismissed against USA.

The Second Circuit Goes to the Dark Side

I try not to be discriminatory among the circuits, either in my praise or criticism. As things fall out, for me and for others, the Ninth Circuit tends to fall more than others into the criticism category for reasons that many have pondered and which may remain insoluble. The Second Circuit’s forays to the dark side are less often, for reasons that may also remain insoluble, but a decision on October 5th, in Davis v Blige, 2007 WL 2893003 (2d Cir. Oct. 5, 2007), is about dark as indeed. The decision opens up to challenge untold numbers of settlement agreements, and even more broadly eliminates one of the central tenets of the 1976 Act: the alienability of one co-owner’s rights without the permission of the other co-author(s). In this latter respect, the Second Circuit has unwittingly joined the Ninth Circuit’s widely lambasted opinion in Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2002). The Davis v. Blige opinion is by an excellent judge, Jose Cabranes, reversing that of another excellent judge, District Judge Charles (Terry) Haight. What is more inexplicable is that the circuit once vacated part of an earlier opinion that had incorrectly came to a similar conclusion, Morris v. Business Concepts, Inc., 283 F.3d 502 (2d Cir. 2002).

The case involved an infringement claim brought by Sharice Davis against a number of individuals and companies over two songs on defendant Mary Blige’s album “No More Drama.” After suit was filed, two of the co-authors, Bruce Chambliss (whose testimony on key issues was admittedly less than a model of clarity), executed a transfer to another of the co-authors, Bruce Miller. The transfer was retroactively effective to the date of the works’ creation (an unspecified date). Miller in turn had licensed the other defendants. Defendants’ claim, which was correct, is that Miller’s license as a co-author eliminated an infringement claim by plaintiff. Plaintiff was not left out in the cold, however, because she still had a right to an accounting of the profits from the licenses Miller entered into. Judge Haight agreed that such a retroactive license barred plaintiff’s infringement claim, citing prior case law in the SDNY. The court of appeals vacated and remanded. A full discussion of the opinions shortcomings is well beyond even a long blog like this, so I will focus on the essentials.

First, the court held, “we conclude that … retroactive transfers violate basic principles of tort and contract law, and undermine the policies embodied by the Copyright Act.” Call me old fashioned, but if there are explicit provisions in the Copyright Act that address the question at hand, that is where one finds the relevant answers and policies, and I don’t give a hoot whether basic principles of tort and contract law are in conflict. The relevant provisions are Section 201(d) (cited by the court only in passing) and the definitions provision of Section 101. Congress explicitly permitted an exclusive licensee's right to transfer rights without the author's permission in these sections.

Section 101 defines a “copyright owner as the owner of any particular exclusive right.” No distinction is made among the author, a licensor of the author, or a subsequent licensee. The statute further defines a transfer of copyright ownership as an assignment or exclusive license, excluding only nonexclusive licenses. Section 201(d)(1) ties these two definitions together by expressly indicating that a transfer of copyright ownership may be made “by any means of conveyance.” Under these provisions, every holder of an exclusive right is regarded as a “copyright owner” to the extent of the right possessed. There may be, and typically are, multiple copyright owners of a single work, e.g., a novelist sells to a book publisher the right to publish a sequel, but retains the right to authorize the making a movie of based on the book, but there can be as in Davis v. Blige, co-authors of one work.

Important economic consequences flow from a joint authorship relationship: Each joint author is a co-owner of the work and, as a tenant in common, possesses an equal, undivided interest in the whole, absent a contractual agreement to the contrary, and regardless of the relative extent or quality of their contributions. Thus, two joint authors each own a 50% interest in the whole, even if one author contributed only 10% of the work. As a co-owner in the whole, each joint author may utilize the work him- or herself without the other's permission and indeed over the other author's objection. A co-owner may also sue for infringement by third parties without joining the other co-owner in litigation.

A license from one co-owner is a defense to a claim of infringement brought by the other, nonlicensing joint owner. This is a significant point: a co-owner may unilaterally grant nonexclusive licenses; a joint author (or co-owner by assignment) is immune from an infringement claim by the other author or co-owner; and, a joint author has an independent right to use or license others to use the work.

The only obligation of a co-owner is to account for any profits earned from the exploitation. One joint author may also transfer all of his or her own exclusive interest in the work without the other joint author's consent. A joint author (or co-owner) may not, however, transfer all interest in the work without the other co-owner's express (and written) authorization, since that would result in an involuntary transfer of the other joint owner's undivided interest in the whole. But the statute explicitly covers the ability of one co-author to transfer his or her proportional share in the work, and regardless of whether such a transfer is called a transfer or an exclusive license: the two terms are synonyms.

The Second Circuit, contrary to Section 201(d), held that one co-author cannot transfer his or her exclusive rights in the work without all other co-authors’ permission: “a co-owner cannot unilaterally grant an exclusive license”: to do so, the court held would conflict with “the venerable law of property that, while an owner may convey any of his rights to others permanently or temporarily, he may nor convey more than he owns.” This misses entirely the point that a co-author is only conveying his or proportional share as a tenant in common and that Section 201(d) was written precisely to permit such transfers. Such a co-owner is not, as the court of appeals incorrectly stated, trying to “convey the interests of his fellow co-owners without their express written consent… .” Under the court of appeals’ approach, there can be no copyright divorce without consent: a co-owner is the equivalent of an agunah in Jewish religious law, even though the Copyright Act lets spouses go at will.

Here is the simple analysis the court of appeals missed. Section 101 states: ”’Copyright owner’”, with respect to any one of the exclusive rights comprised in a copyright, refers to the owner of that particular right. A copyright owner is therefore merely someone who owns an exclusive right. Co-authors own proportional share of the exclusive rights. The question is then, can they transfer their exclusive right? Is there anything in the statute that bans such transfers? No there isn’t. Is there anything that permits such transfers? Yes there is. Section 201(d)(1) reads: “The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.” Is there anything that permits partial transfer of interests? Yes there is. Section 201(d)(2) reads: “Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.” The section expressly contemplates that there will be multiple owners of exclusive rights, and is not limited to copyright in works authored by a single author. A co-author who transfers his or her proportional interest is merely transferring his or right “to the extent of that right.” It is telling indeed that the court of appeals failed entirely to quote or apply Section 201(d)(2), referencing it only as a cite and referencing Nimmer for the absurd and irrelevant proposition that one may not license more than one owns.

The court’s failure is to understand the statute is profound and will have profoundly negative consequences: no business can now purchase rights to a work unless it gets an assignment from all authors: imagine trying to buy rights to collective works that contains the works of thousands of authors, many of whom are co-authors. This is a disaster of major proportions, all the more so in the face of a clear statute to the contrary.

The second part of the court’s opinion painfully reveals its result-driven, legal realist nature. The issue was the validity of retroactive licenses and transfers. This section was unnecessary analytically because of the first part, but was necessitated by the court’s unwillingness to overrule its contrary opinion in Eden Toys, Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27 (2d Cir. 1982). Eden Toys held, in part, that a later writing could confirm an earlier oral agreement. Chambliss claimed there had been such an agreement, but the evidence on this point was confusing at best. But in the end, who cares? Unless a co-author can never assign rights, he or she can assign them at any time and make them retroactive to cover things like pre-existing causes of action. It is here that other courts have permitted, rightly, transfers from one-co-owner as a part of a settlement agreement that then ends the suit. The co-author(s) who didn’t transfer or settle are not out of luck, because they still have a right to an accounting from exploitation of the work, past or future. Yet, mistakenly believing non-transferring or settling co-authors would be harmed, the court of appeals held that such settlement transfers “can only waive or extinguish claims held by a settling owners; it can have no effect on co-owners who are not parties to the settlement.” Why not? Because of “a venerable principle of New York co-tenancy law … .” This is copyright law, not state law. The court also pulled out of thin air the assertion that “Licenses and assignment … are prospective… .” That will be news to millions of licenses and assignees. The court apparently thought it terrible that “A retroactive license or assignment purports to authorize a past use that was originally unauthorized.” And so what? That happens all the time.

Davis’ holding on retroactive active licenses is as disastrous as its holding on the nonassignability of proportional exclusive licenses, and moreover reflects a stunning deafness to the commercial realities of life: one would expected much much more from a court that sits in the commercial hub of the country.

One can only hope that a petition for rehearing is granted, the original opinion is vacated, and a proper one substituted.

The RIAA's Jury Verdict

There have been a number of stories about yesterday's jury verdict in Minnesota, awarding $220,000 in statutory damages. The best reporting I have seen so far is by Declan McCullagh at CNet.com, here. As he points out, there were some key factual issues and key jury instructions. On the facts, there was a match between a username, an email address, and an IP address. Here are two critical jury instructions:

JURY INSTRUCTION NO. 14: The act of downloading copyrighted sound recordings on a peer-to-peer network, without license from the copyright owners, violates the copyright owners' exclusive reproduction right.

JURY INSTRUCTION NO. 15: The act of making copyrighted sound recordings available for electronic distribution on a peer-to-peer network, without license from the copyright owners, violates the copyright owners' exclusive right of distribution, regardless of whether actual distribution has been shown.


The making available instruction is obviously of great importance.

I have read stories in which people have questioned the amount of damages, which is a bit more than $9,166 per work and well within the non-willfulness range. I would be stunned if there is any room for overturning the award. There is serious doubt that any award within the permissible range, even the tippy-top, is subject to review. I think there may well be cases where a damage award may be constitutionally flawed, but this is not one of them. This is not to say I think the jury should have awarded anything above the minimum after finding liability, but it is to say the jury was free to award that amount and even a more without review, and especially given the vastly larger number of works for which there was

Deficit Deposit Requirements and Subject Matter Jurisdiction

My criticism of Nimmer's wholly incorrect view that to satisfy the subject matter jurisdictional requirement of Section 411(a) have been discussed in this blog before and I won't bore readers with my reasoning again. Nimmer's erroneous view is that one need only submit an application, deposit and fee; one need not receive and actual certificate of registration or rejection. One reason for my disagreement is he plain words of the statute, but another is practical: what is the Copyright Office would reject, later, the application, because it learned that the deposit was not an actual copy of the work, but a reconstruction? This scenario has been played out in a number of circuit cases, most recently Tuesday by the First Circuit in Torres-Negron v. J&N Records, 2007 WL 2846117, which held that a reconstruction did not comply with Section 411(a) and therefore that the court lacked subject matter jurisdiction. Here is an edited version of the relevant discussion:

At the request of a friend who was looking for new material for his band to play, Fernando Torres-Negron wrote the music and lyrics to a song, Noche de Fiesta, in 1993. Torres gave his friend the piece of paper on which he had written the lyrics, along with a cassette tape containing a recording of Torres singing the song. The song eventually ended up on three CDs, distributed both in Puerto Rico and the continental United States. When Torres first learned of the distribution and sales of his song in 2001, he submitted an application for copyright registration with the Copyright Office, and filed this lawsuit for infringement. Although the case proceeded to trial and resulted in a jury verdict for Torres, the district court granted the defendants' motion for judgment as a matter of law.

There is no dispute about the district court's finding that Torres submitted a reconstruction of his original songs, created from his memory and without direct reference to his original works, to the Copyright Office. Because the Copyright Act requires that a “copy” be submitted along with an application for copyright registration, and not a reconstruction, Torres failed to submit a complete application for registration of his copyright. A complete application is a jurisdictional prerequisite to filing suit in federal court for copyright infringement. Therefore, we agree with the district court that it lacked jurisdiction over Torres' lawsuit. We also conclude that the district court did not err in denying defendants' motion for attorney's fees.

I.
Torres filed a copyright infringement action against numerous defendants, including J & N and other producers and distributors of each of the three records, in the District of Puerto Rico. At trial, the defendants moved for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a)(1) after the close of the plaintiff's case. The district court dismissed the claims against some defendants, but denied the motion as to J & N Records. At the close of all evidence, the remaining defendants renewed their motion, but the court reserved judgment and permitted the case to go to the jury. The jury returned a verdict in favor of Torres, finding that J & N had infringed his copyright on Noche de Fiesta.

Defendant J & N then filed a renewed motion for judgment as a matter of law, Fed.R.Civ.P. 50(b), on a number of grounds. J & N argued that the district court lacked subject matter jurisdiction for two independent reasons: (1) the copy of Noche de Fiesta submitted to the Copyright Office was an invalid reconstruction (rather than a “bona fide” copy); and (2) Torres' application indicated that his song was not a derivative work, whereas J & N argued that it was an unauthorized derivative of an earlier merengue song. J & N also argued that the case was barred by the statute of limitations, that there was insufficient evidence to support the jury's verdict, and that the damages were speculative and unjustified.

The district court held that “a copy that is simply created or reconstructed from memory without directly referring to the original, known as [a] ‘reconstruction,’ does not comply with the deposit requirements of the Copyright Act,” and found that “Torres' deposits constitute impermissible reconstructions.” Torres Negron v. Rivera, 433 F.Supp.2d 204, 213-14 (D.P.R.2006). Therefore, the court concluded that the copyright registration was invalid, and because “copyright registration is a jurisdictional prerequisite for maintaining a copyright infringement suit,” it granted J & N's motion for judgment as a matter of law.

The court alternatively found that the jury verdict could not stand because “(1) Noche de Fiesta is an unauthorized derivative work not entitled to copyright protection; (2) Torres granted [the producer] an implied license to exploit the song[ ] Noche de Fiesta ...; and (3) the amount of damages awarded by the jury is untenable due to insufficiency of the evidence.”

Torres appealed, seeking reinstatement of the jury verdict. J & N cross-appealed, challenging the district court's denial of its motion for attorney's fees and costs. We affirm the district court's judgment dismissing the infringement claims, on the basis of Torres' failure to satisfy the deposit copy requirement for copyright registration. We also affirm the district court's denial of attorney's fees.


II.
...
“[N]o action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a); see also Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 (1st Cir.1994) (“[R]egistration of the copyright is a prerequisite to suit under the Copyright Act.” (citation omitted)). This requirement is often described as a jurisdictional one. See, e.g., Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir.2004) (“17 U.S.C. § 411(a) sets forth [a] jurisdictional prerequisite....”); Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003) (“Th[e] registration requirement is jurisdictional.”); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir.2003) (“Copyright registration is a jurisdictional prerequisite to bringing an action for infringement under the Copyright Act.”); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir.1990) (“The registration requirement is a jurisdictional prerequisite to an infringement suit.”). In order to complete the registration process, and receive a certificate of copyright registration, a creator must submit to the Copyright Office “a complete copy or phonorecord” of the work for which he seeks registration, often referred to as the “deposit copy.” 17 U.S.C. § 408(b). The Copyright Act defines “copies” as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Id. § 101

It is undisputed that the written lyrics and tape that Torres submitted as his deposit copy were not the originals that is, they were not the exact tape or piece of paper on which he first recorded the music or wrote the lyrics of the song. Indeed, the parties agree that Torres gave both the original lyrics and the first recording of the song to Cauelas. By the time he submitted his copyright registration application, he no longer had access to either the original writing of the lyrics or the tape recording of the song. Thus, in order to comply with the requirement that a “copy” of the song be submitted with the application, Torres reconstructed his original work from memory by singing the song, while clapping the rhythm, into a tape recorder. It was the reconstruction, made in 2001, that he submitted to the Copyright Office.

A. The Deposit Copy Requirement

The question before us is whether that reconstruction is a “copy” within the meaning of 17 U.S.C. § 408(b). The statutory definition of “copy” provides little guidance. It neither distinguishes between copies and reconstructions, nor specifies whether a copy must be made from an original. However, dictionary definitions highlight the difference between a “copy” and a “reconstruction.” Black's Law Dictionary defines a “copy” as an “imitation or reproduction of an original.” Black's Law Dictionary 360 (8th ed.2004). To “reconstruct” something is “to construct again; rebuild; make over,” or to “re-create in the mind from given or available information.” Random House Webster's Unabridged Dictionary 1612 (2d ed.1997). Given these definitions, a reconstruction is not a copy; a reconstruction is created without an original, whereas a copy is made from an original. Congress specified that a registration had to be accompanied by a “copy.” See Conn. Nat'l Bank v. Germain, 503 U.S. 249, 253-54 (1992) (“We have stated time and again that courts must presume that a legislature says in a statute what it means and means in a statute what it says there.”). Therefore, we agree with the district court that a reconstruction, created without access to or reliance on the original work, cannot constitute a “copy,” as that term is used in 17 U.S.C. § 408.

The only other circuit courts that have addressed this question have arrived at the same conclusion. In Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir.1998), the Ninth Circuit held that a “bona fide copy” is one that is “virtually identical to the original and ... produced by directly referring to the original.” Thus, reconstructions created from memory, without access to the original work, could not serve as valid copies for registration purposes. Id.
The Sixth Circuit adopted the same rule in Coles v. Wonder, 283 F.3d 798, 802 (6th Cir.2002). There, the plaintiff claimed that he had written the song “For Your Love” in 1982 and sued Stevie Wonder, alleging copyright infringement, after Wonder recorded and distributed a song of the same name in 1995. The plaintiff registered his song in 1990 and submitted a recording of the song, as his deposit copy, that had been recorded earlier that same year. He claimed that he no longer possessed an original (i.e., 1982) recording of the song. Wonder argued that the plaintiff's registration was invalid because the deposit copy was not a bona fide copy, but rather a recreation from memory. The Sixth Circuit agreed, following the reasoning of Kodadek, and concluded that the deposit copy would be valid only if it had been created from an original recording of the song. Id. at 802 (“[H]ad [the plaintiff] been able to establish that he made the 1990 recording after listening to an audio copy of his 1982 rendition of For Your Love, he could have met the deposit requirement and his copyright would be valid from the date listed on his application. Likewise, had he made his 1990 recording after reviewing a tear sheet or other written summary that dated from 1982, he could have satisfied the deposit requirement.”). The court also explained that a strict application of the word “copy” would serve to protect the rights of artists by encouraging prompt registration and preventing fraudulent claims filed after the commercial success of a work. Id.

Torres argues that Kodadek and Coles are distinguishable because each of those cases involved a dispute about who first authored the work and, therefore, who was the valid owner of the copyright. He further argues that the definition of “copy” adopted in those cases should, at most, be limited to cases involving disputes about authorship. Torres has cited no support for this argument. That is not surprising. It makes no sense to interpret the statutory requirement of a deposit copy differently depending on what factual issues are disputed in a given case. There is no valid reason, in our view, to assume that the legislature intended the word “copy” to be a chameleon, taking on different meanings depending on the context of the litigation.