IP Talk Blog

Thanks to Steven Hartman, I have come across a delightful French IP publication/blog, in English, called IP Talk. Here's the link to the blog, which I shall avidly read. The page I was sent was not on the blog, or at least I couldn't find it. It contains two blurbs that might surprise U.S. copyright lawyers. The first covers a Paris Court of Appeal opinion holding that at least the paparazzi at issue did not create copyrightable photographs. According to the write up:

The decision is based on the passive behaviour of the paparazzi when taking pictures. The judge regarded their work as being a material arrangement of the camera for the sole purpose of being ready to capture a star once he/she would show off. The lack of any artistic arrangement, specific searched angle and choice of the moment of the pictures brought [the court] to consider the pictures as not original.

This may the only time I have seen paparazzi described as passive. The decision seems questionable factually, as paparazzi are notorious for trying to get the "money shot," as those who regularly read (or in LA see) TMZ. The most famous parallel in the U.S. does not involve a paparazzi, but rather Abraham Zapruder's pictures (really a video) of the John F. Kennedy assassination. Zapruder had set his camera up to take pictures of the Kennedy entourage as it drove by, but clearly did not expect to capture Kennedy's killing. The court found the pictures protectible, Time Inc. v. Bernard Geis Associates, 293 F. Supp. 130 (S.D.N.Y 1968). And what about photojournalism? Some of the most famous photos ever taken were happenstance too, like the assassination of a Viet Cong soldier whose head we see a split second before the raised pistol's trigger is pulled, or the little Vietnamese girl, running naked, screaming away from napalm. It is the importance of the subject matter of these photos, and not copyrightable elements of posing etc. that separate them from pictures taken by paparazzi. Still, the French decision illustrates the higher level of protection for photographs required in a number of countries. The U.S. standard by contrast is the same for all works.

The other blurb concerns a February 5, 2008 decision by the French High Court apparently holding that copyright exists in fashion show as a whole, not just in the individual elements, such a lighting and the clothes. The dispute arose from a website that showed pictures from shows. This seems fairly extraordinary unless the show was by one designer who could be said to have choreographed the whole event, and even then there is the fixation question -- but not in France which I believe has no such requirement. Those interested in the question of fixation under U.S. law in theatre should read this article by Carrie Gallia in the 2007 issue of the Minnesota Law Review, entitled "To Fix or Not to Fix: Copyright's Fixation Requirement and the Rights of Theatrical Collaborators."

Finally, Harvey Korman may your memory be a blessing. You brought laughter and happiness to all of us.

The Blues and Copyright

SSRN is a wonderful repository of articles. A 51 page article was posted on it two weeks ago about famous blues performer Robert Johnson, copyright, and the ways in which different cultural traditions impact on the nature of creativity and copying. The article is called "Borrowing the Blues: Copyright and the Contexts of Robert Johnson." The author is Professor Olufunmilayo Arewa of Northwestern University Law School. The article is available here.

Johnson's influence on white rockers is well documented, but Professor Olufunmilayo notes: "The elevation of Robert Johnson as blues exemplar has involved significant diminution of the role of shared and collaborative aspects of blues creation and performance in Johnson's works. Robert Johnson's status has in turn been accompanied by more favorable outcomes for his estate from a copyright perspective." Therein nicely captured is a tension between copyright's professed goals and how it may work out in practice. She notes too a tension between Johnson's actual musical practice and his later, posthumous characterizations, observing: "The collaborative nature of blues musical composition does not lend itself very well to Romantic author characterizations. In blues practice, the combination of performers crafting material from a collaborative tradition is a difficult one from the perspective of current assumptions about creation in copyright." (page 12).

Professor Olufunmilayo helpfully reviews the litigation involving Johnson's works, ABKCO Music, Inc. v. LaVere. 217 F.3d 684 (9th Cir. 2000). Defendant LaVere had reached an agreement with Johnson's surviving heir, Carrie Thompson, with a 50-50 split. The suit was a DJ action. Since Johnson's recordings were on piano rolls, the White-Smith rule that copy was made applied, and thus the court correctly held that section 303(b), regarding unpublished works governed, resulting in the works remaining under copyright. This was not the last suit involving Johnson: 15 year litigation culminating in 1998 in Mississippi courts resulted in Claude Johnson being declared the illegitimate son of Robert, resulting in entitlement to over $1 million dollars.

The tangled web of copyright law and personal histories is interesting, but here is my question about the article: there are great discussions of the collaborative nature of blues and the tensions with a Romantic view of copyright, but I don't see how this is tied in to the litigation of establishing Johnson estate's rights: the records made and copied were copied verbatim, and no question of the scope of Johnson's creativity was at issue. In any event, an interesting look at a great musician.

Illegal art

Tomasz Rychlicki is a Polish copyright lawyer, who works at Patpol, Warsaw. He sometimes posts comments on this blog, and posted a very interesting one recently on the first sale question in the Vernor case. In the current issue of the Journal of Intellectual Property Law & Practice (Oxford Journals, OUP), Mr. Rychlicki has a fascinating article called "Legal questions about illegal art." (Volume 3, number 6, June 2008, pages 393-401). The topic is graffiti that is fixed in a tangible medium of expression in violation of local law. In addition to wonderful commentary, the article has great pictures.

The issue of illegality was raised in the U.S. in English v. BFC&R East 11th Street LLC, 1997 WL 746444 (S.D.N.Y. march 3, 1997)(97 Civ. 7466)(note Westlaw gives the caption incorrectly as CFC&R). The work in English was described this way by the court:

Plaintiffs are six artists who have created certain artwork in a community garden on East 11th Street (the “Lot” or the “Garden”). As I understand it, the artwork in question consists more or less of five murals and five sculptures (one of the alleged sculptures is a “continuous line pathway sculpture”). Plaintiffs also allege that the Garden itself constitutes a single work of art. They describe it as “a large environmental sculpture encompassing the entire site and comprised of thematically interrelated paintings, murals, and individual sculptures of concrete, stone, wood and metal, and plants.” Amended Compl. ¶ 9. One mural, on the wall of a city-owned building on the west side of the garden, is an anti-smoking mural painted by plaintiff Farinacci in 1992 as part of the City's anti-smoking campaign. One other mural is painted on that wall (without City permission). The other three murals are painted on a building owned by several plaintiffs and located on the east side of the garden.FN1 Without question, the artists expended significant time and effort, not only in cleaning the area but in constructing the artwork as well.

The difficulty was that the Garden was installed illegally. Defendants wanted to remove it, but were sued for violating the moral rights under 17 USC 106A (VARA). Defendants asserted illegality as a defense, and the court agreed:

The Court therefore holds that VARA does not apply to artwork that is illegally placed on the property of others, without their consent, when such artwork cannot be removed from the site in question. The Court expresses no view on VARA's application to the individual sculptures, also illegally placed but not permanently affixed to the site, though it is clear, as discussed below, that their display in the Garden is specifically excluded from the statute's scope. See 17 U.S.C. § 106A(c)(2). What is clear is that plaintiffs cannot claim a protectable interest in the Garden itself-even were it deemed to be a single unified work of art-because it was illegally placed on City property and, plaintiffs argue, cannot be removed as a whole. Because plaintiffs have failed to raise a genuine issue of fact as to any license or permission to place the artwork on the property, and in light of the Court's holding that VARA is inapplicable to such illegally placed works, summary judgment is appropriate.

As Mr. Rychlicki points out with graffiti, as with English, there are a number of difficult issues, including the conflict between the interests of the person or company on whose property the graffiti was placed without permission, and the rights granted in national laws to visual artists. He canvasses Polish law, U.S. law, and UK law. It is a very nice piece, but alas not available online, at least yet. But not to worry, he has generously offered to supply those who email him with copies of the article, and if you are really nice, he might even send along as a bonus pictures he submitted to the journal that weren't used. Here is his email address: tomasz@rychlicki.net

An Offer Countries Can't Refuse

In the movie The Godfather, Marlon Brando, playing the Don, is approached on the day of his daughter's wedding by his godson Johhny Fontane, a singer who wants a movie role. The head of the studio won't give Fontane the role, so the Don to Johnny: "I'm gonna make him an offer he can't refuse." He does, and Johnny gets the part. A number of countries appear in danger of being offers they can't refuse too. One such offer is ACTA, the proposed Anti-Counterfeiting Trade Agreement. Wikileaks has provided a discussion paper on the agreement that was provided to selected (pro-ACTA) groups. See wiki story and links to documents here. (In a wonderful show of independence, Wikinews posted an entry alleging the Wikipedia Foundation Board was trying to censor their reporting on other issues; see here.).

The document provides few details, but it is the very lack of transparency that is a concern to me. The concern is centered on agreements being hashed out in private, among a small select group of believers, and then presented on what is in reality a take it or leave it basis. As IP Justice put is in their story on the issue:

After the multi-lateral treaty’s scope and priorities are negotiated by the few countries invited to participate in the early discussions, ACTA’s text will be “locked” and other countries who are later “invited” to sign-on to the pact will not be able to re-negotiate its terms. It is claimed that signing-on to the trade agreement will be "voluntary", but few countries will have the muscle to refuse an “invitation” to join, once the rules have been set by the select few conducting the negotiations.

The important issues raised by such an agreement should be subject to legislative hearings at the outset, in which all interests can participate, before the agreement is "locked." There are reports the agreement will be on the agenda July's meeting of G-8 nations in Tokyo; non G-8 countries, including Israel, should be put on notice that they too may soon receive an offer they can't refuse. But what about G-8 countries like Canada, which have been criticized by the United States government and by IIPA, and which is about to introduce copyright reform legislation? What happens if the current government signs on to ACTA in July? These are issues known only to the Canadian government, and as a non-Canadian, it is not my place to offer advice, but ACTA does introduce more complications into an already complicated situation and not only for Canada.

Photographs of Useful Articles and the Forgotten Section 113(c)

There are many parts of the Copyright Act that go unread, and going unread their relevance is missed. Section 113(c) is one of those sections. The provision reads:

(c) In the case of a work lawfully reproduced in useful articles that have been offered for sale or other distribution to the public, copyright does not include any right to prevent the making, distribution, or display of pictures or photographs of such articles in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports.

The purpose of the section is to permit those selling lawfully made copies of commercial goods that may have some copyrightable element, like a label, to advertise the goods for sale without running afoul of the copyright law. A recent case seemed like the perfect occasion to apply the provision, but it wasn’t mentioned; instead, fair use was asserted, and denied.

The case is Designer Skin, LLC v. S&L Vitamins, Inc., 2008 WL 2116646 (D. Arizona May 20, 2008)(Docket No. No. CV 05-3699-PHX-JAT). The court gave the following facts:

Designer Skin, LLC is a manufacturer of certain indoor tanning products. It owns a number of registered trademarks in these products and its company name, and also owns the copyright in certain artwork related to its products. Designer Skin distributes its products through independent distributors. The relationship between Designer Skin and its distributors is governed by the terms of a distributorship agreement, which limits the distributors' ability to resell Designer Skin's products. Specifically, the agreement prohibits the distributors from selling Designer Skin's products to anyone other than certain qualifying tanning salons. More specifically, the agreement prohibits the distributors from selling Designer Skin's products to Internet resellers.

S & L Vitamins, Inc. is an Internet reseller: it buys various products in bulk and then resells those products on its websites at discount prices. Since some time near the beginning of 2004, S & L Vitamins has sold Designer Skin products on its websites. S & L Vitamins has obtained all of its Designer Skin products through tanning salons. It has not purchased any of these products directly from a Designer Skin distributor.

On its websites, S & L Vitamins displays thumbnail images of the Designer Skin products for sale and identifies those products by using Designer Skin's trademarks. In addition, S & L Vitamins uses Designer Skin's trademarks in the metatags of its sites and as search-engine keywords. On the current websites at issue, S & L Vitamins has posted a disclaimer stating that it is not affiliated with or authorized by any tanning lotion manufacturers to sell their products.

By suing (inter alia) for infringement of the labels, the case involves, in my opinion, a misuse of copyright to stop lower-priced resellers. (The court granted summary judgment to defendant on plaintiff’s trademark claims). On the copyright claim, plaintiff had registrations only for the artwork on the label and not the text, but no matter, the analysis should have been the same. Defendant also claimed it had taken its own photographs of the labels, but the court analyzed the issue as if it had copied from plaintiff.

Defendant relied on fair use, which the court rejected, regrettably. Here are excerpts from that discussion:

[First factor]
Regarding the first part of the inquiry, the court finds that while S & L Vitamins' use of the renderings has a commercial purpose, the commercial character of the use is “more incidental and less exploitive in nature than more traditional types of commercial use.” S & L Vitamins does not sell copies of the electronic renderings-it sells Designer Skin products. The renderings are used primarily to identify and market these products, to give Internet consumers a representative picture of what they are buying. Thus, S & L Vitamins profits from the use of these images only indirectly.

Regarding the second part of the inquiry, however, the Court finds that S & L Vitamins' use is minimally transformative at best. Citing to Kelly, S & L Vitamins argues that its use of smaller, lower-resolution images is transformative. In Kelly, however, the Ninth Circuit's finding of transformative use was primarily based on the additional fact that the defendant's use “served an entirely different function than [the] original images.” That is not the case here. Both parties use the images for the same reason: to market Designer Skin products to consumers.

Considering both aspects of this factor, the Court finds that the purpose and character of S & L Vitamins' use weighs slightly against fair use.

[Second Factor]
The electronic renderings at issue in this case were created by Designer Skin's graphic designer. The work product of a graphic designer, like any other artist, is fundamentally creative in nature. With that said, the renderings were not created for any aesthetic or educational purpose but for the functional purpose of selling products. Thus, although creative, the renderings do not seem to be at the core of intended copyright protection…. Nevertheless, because of the clearly creative nature of the work, this factor weighs slightly against fair use.


[Third Factor]
S & L Vitamins copied the entire work and uses it for the same purpose for which Designer Skin intended it to be used: to identify and market Designer Skin products to consumers. Under these circumstances, the third factor weighs against fair use.


[Fourth Factor]

Designer Skin argues that the relevant market is the authorized market for Designer Skin's tanning products. The Court disagrees. The relevant market is… the electronic images themselves. Designer Skin seems to concede that there is no market for these images. Designer Skin sells tanning products, not images of its products. Thus, S & L Vitamins' use of the images has not caused any market harm, and nor could it, regardless of how widespread its use might be. This final factor thus clearly weighs in favor of fair use.

Nonetheless, with three factors weighing against fair use (although two only slightly) and only one weighing in favor of it (albeit the most important one), the Court finds that copying the electronic renderings from Designer Skin's website and pasting them on S & L Vitamins' own sites for the purpose of selling Designer Skin's products is not protected by the fair use doctrine. …

This is a depressing approach to fair use, even a fair use analysis by the numbers. The use of the photographs was to sell lawfully tanning goods: if you are going to let consumers know what the product looks like, you have to show a picture of it, and if you are going to show a picture of it you have to show the whole thing. There was, finally, as the court noted, no harm to any legitimate market for the image. But the fair use issue could have been avoided by relying on Section 113(c), which was created for just such circumstances.

First Sale Victory in Vernor

On Tuesday, Judge Richard Jones of the U.S. District Court in Seattle handed down an opinion in Timothy Vernor v. Autodesk, Inc., handing Vernor victory in an important exposition of the first sale doctrine. (H.T. and congrats to Greg Beck). The case also illustrates why notice and notice is a better system for safe harbor regimes than the U.S. notice and take down approach USTR is trying to force on other countries.

The first sale doctrine (called "exhaustion" outside the U.S.) permits those who own a lawful copy of a work to sell or otherwise dispose of that copy by distribution. In the U.S., the doctrine was first developed by case law, then codified by statute in the 1909 Copyright Act, and is now found in Section 109 of title 17. While the first sale doctrine also applies to copies that are given away, what constitutes a sale is generally a question of state, not federal copyright law, and in recognition of this, many software companies have taken the position that they can convey the copy to the customer in an over-the-counter transaction for a one-time payment, but describe that transaction as a license; as a license, the first sale doctrine doesn't apply, meaning copyright owners can prevent further distribution of the copy. That is an absurd position to me, and in such cases, federal courts should take a common sense view of the transaction in order to avoid abolition of the first sale doctrine. Having made a sale at full value, there is no reason to let copyright owners preclude a rightful possessor of a copy from disposing of that copy, and no reason to force the rest of us to buy only new copies. Efforts to do so are yet another reason copyright has gotten a bad name.

The facts in Vernor are significant for safe harbor regimes too: Vernor makes his living selling lawfully purchased copies on eBay. In 2005, Vernor bought a copy of an AutoCAD package at a garage sale and put it up for sale on eBay. Autodesk sent a DMCA notice, and eBay suspended the auction. Vernor sent a counter-notice claiming his sale was lawful under Section 109. Autodesk failed to respond so the auction was reinstated by eBay. In 2007, Vernor bought 4 copies of an AutoCAD package from an architectural firm and sold three copies on eBay, but each time he put a package up for sale, Autodesk sent DMCA notices to eBay, which suspended the auction. Vernor promptly sent a counter-notice, and the auction was reinstated. When Vernor tried to sell the fourth package, Autodesk sent another DMCA notice, but this time eBay suspended Vernor's account for a month for alleged repeat infringement. Vernor then brought a declaratory judgment. If the first sale doctrine applied to the copies Vernor had purchased, then Vernor's actions were completely legal and he wasn't an infringer, much less a repeat infringer.

And Judge Jones found that the transactions were legal. To do so, he had to wade through a thicket of court of appeals' opinions, ultimately siding with a 1977 opinion, United States v. Wise, 550 F.2d 1180, over more recent opinions such as MAI Systems Corp. v. Peak Computer Inc., 991 F.2d 511 (9th Cir. 1993), which had touched on the issue briefly in a different context, the Section 117 archival and back-up copy privilege. I think Judge Roberts correct on all counts, and admire greatly his willingness to engage in a close reading of cases while keeping the commonsense nature of the issue foremost. This gets me back to the notice and notice versus notice and take down issue: the consumer won on the merits of his position, but went through hell and high water to vindicate his rights: he had repeated DMCA notices sent, auctions suspended, and then his account suspended. He had to obtain a lawyer (Public Citizen took the case on) and duke out the issue in court, and was blessed to have drawn an extremely thoughtful judge. Few consumers have the dedication to go through with a court case, and even fewer have the good luck to have dedicated consumer interest lawyers take up their cause; the vast majority of consumers, faced with similar notices, would have given up, and with that have been denied a rightful livelihood. Nor should eBay have been placed in the position of having to decide who was correct on an issue of law that has divided courts and commentator for well over a decade.

Under a notice and notice regime, eBay would not have to make judgments it has no ability to make, and Vernor's auctions would have gone forward because Autodesk was not, seemingly going to sue: recall that Vernor brought a declaratory relief action. Notice and take down, however, gave Autodesk the very relief it was denied by the court.

I conclude with a beautiful little post by Peter Brantley yesterday on first sale, which wasn't prompted by the Autodesk opinion (which I doubt he was aware of), but which shows why the principles of first sale are important to all of us. Thanks to Peter for letting me post it. Here it is:

On Owning Books


For various reasons, in the last month I have been filled with "life-nostalgia". My daughter recently turned 7, her celebration prompting like shadow puppets faint memories of my own childhood; my mother's birthday recently passed, but then, so had she a few years ago, so she was not around to enjoy it; and I've watched the news reports on Edward Kennedy's cancer with profound sadness; a loved family member had his own brush with a glioma a decade ago. It all makes one pause.

The delights of growing old: taking enjoyment from many small things. For me, one tenacious root of happiness is a shared enjoyment of reading with my father. It is to him that I must give credit for a love of books; as a professor of contemporary American literature for years, his book suggestions turned to Barthelme, Barth, and Pynchon when I was still in middle school. And for my father now, reading is something for him to hold onto; a love that only failing eyesight might stand to disperse -- and then there will be audiobooks.

I speak with my father weekly, and we reserve time to compare what is being read, how we heard about it, how it relates to other things we have enjoyed. And no doubt in part as a result of growing up in house filled with books, we've discovered that the walls of our house now bridge whole sections of the continent, for we mail books to each other regularly.

My father will mail me a copy of Willie Morris' North Toward Home and a few Durrells; I will mail him the hilarious and poignant A Thousand Shall Fall, and an old edition of Grimble's We Chose the Islands. And we argue over whom first heard about Andy Adam's The Log of a Cowboy; then we realize we both have editions in our homes.

Here is the thing: it's hard to say who owns these books. They are ours, collectively; they fling back and forth between Texas and California, and either household is only a temporary resting place. These books are shared, because they are appreciated; loved, because they are enjoyed with others.

Ultimately, I do not much care whether these books are paper or made of some other less organic substance, whether substrates and electrons, or plastic polymers. Instead what matters is that we are able to share books with each other; in return for the gift of spreading delight, a wait of days and the cost of media rate shipping are very modest penalties.

Whatever digital (ebook) books look like in the future, if they do not embody the right to share, in an unrestricted and platform independent manner, they will be poorer things.

This is called the first sale doctrine. It's part of why people love books -- a love built from sharing. It's what makes libraries possible. A world where content is licensed, and sold with restrictions on use, is a world less full of enthusiastic readers; less full of love.

To any publisher who sees the wisdom of DRM: don't.

What Nigeria Can Teach Oregon

The State of Oregon apparently continues to press its groundless efforts to assert, directly or otherwise, claims in its statutes. Nate Anderson at Ars Technica had an update on May 13th, in which he wrote: "Justia and public.resource.org have since retained counsel to deal with the issue, and their lawyer has already made clear to Oregon that his clients will be posting the entirety of the disputed material by June 2."

Yesterday I came across an article by Emeka Maduewesi in This Day (which presents "African Views on Global News") entitled: "Copyright: Who Owns the Rights to the Laws of Nigeria"? Mr. Maduewesi, a Nigerian who is admitted to practice in both Nigeria and California (he is employed by Townsend and Towsend in San Francisco) reviews the Nigerian copyright act, which doesn't directly address the question. (There is an exception for reproducing copyrighted works that are part of public records, and a provision of the evidence law that seems less helpful to me than to him). He concludes, nevertheless, that:

"Nigerian courts should be hostile to any claim that will infringe on the rights of the citizens to have unfettered access to the laws governing them. In a democratic society, works prepared by government employees -- executive, legislators and judges -- acting within the scope of their employment would be for hire. For this reason, any copyright belongs to the people who elected or paid them to do the work."

Oregon just reported the results of a wonderful democratic activity yesterday, and had the largest rally of the Presidential campaign, 75,000 people. The people get it; now it is up to the government to get it too.

The Forensics of Infringement

Motion picture companies, record labels, and famous entertainers of all kinds face, on a regular basis, baseless suits that not only drive up the cost of doing business (including through increased insurance premiums), but also waste human resources. Some of these baseless suits cross the line from delusional complaints into fraudulent ones. The Second Circuit recently dealt with one, Shangold v. Walt Disney Co., 2008 WL 1908908 (2d Cir. April 18, 2008), in which the court found:

Here, the defendants established, by clear and convincing evidence, that Shangold and Niederman submitted fraudulent evidence to the district court in order to bolster their claim of copyright infringement. The “T1a treatment” that Shangold and Niederman submitted to the district court, and claimed to have written in the spring of 1995, was shown to be fraudulent. The treatment contained various references to a character's “Palm Pilot,” a handheld computing device. The defendants established that palmOne, Inc., the company that manufactures the Palm Pilot, did not itself refer to the device by that name, even for internal corporate purposes, until late 1995. The name was not known to the public until early 1996-months after Shangold and Niederman claimed to have written the treatment. Both Shangold and Niederman offered testimony that the district court properly found to be false, at their respective depositions, in order to bolster their claims and continue the fraud.

J.K. Rowling was the victim of such a claim, Scholastic, Inc. v. Stouffer, 221 F.Supp.2d 425 (S.D.N.Y. 2002) in which there seemed to be striking similarities over the use of a “muggles” character. Great detective work by the law firm of O’Melveny & Myers came up with this finding by the court (note plaintiff is the declaratory judgment plaintiff, ordinarily the defendant; Stouffer is the party claiming infringement):

In connection with this litigation, Stouffer has produced booklets entitled The Legend of Rah and the Muggles that were allegedly created by Andé in the 1980's….. However, plaintiffs have submitted expert testimony indicating that the words “The Legend of” and the words “and the Muggles,” which appear on the title pages of these booklets, could not have been printed prior to 1991. According to plaintiffs' expert witness-whose testimony Stouffer does not rebut-the printing technology employed in the application of those words to the title pages was invented in 1985; however, because the specific printer used to print those words was between six and ten years old at the time the words were printed, “The Legend of” and “and the Muggles” could not have been placed on the title pages before 1991 (i.e. four years after Andé's bankruptcy). Stouffer concedes that these additional words were added to the title pages of the booklets after the booklets were originally printed, although she does not know exactly when the words were added or by what printing method.

The moral is that if a claim seems too good to be true, it probably is, but it will take a lot of skilled work to prove it so.

Harvey Schein and the VCR

Thursday's NY Times had a very good obituary on Harvey Schein, an important figure at Sony Corporation of America and other entertainment companies. Mr. Schein worked at CBS under William Paley, and in that capacity forged a deal in 1967 for a new joint venture record company with Sony, partnering with Akio Morita. Years later, when CDs came out, I bought a complete set of the Billie Holiday CBS/Sony recordings, long before CBS parceled them out domestically CD by CD. I later bought one of the CBS domestic CDs just for comparison, and was surprised by its, wooden, dull sound. I was surprised because presumably the source material for the U.S. release was the same as the earlier Japanese release, which was outstanding. But I digress.

In 1972, Mr. Schein became the President of Sony's American affiliate, which was then located at the distinctive 9 West 57th street in New York City. (It is now in the Philip Johnson AT&T building on Madison Avenue), and it was during his tenure at Sony (he later went on to Warner Communications) that he achieved eternal fame in the copyright field, as documented in James Lardner's outstanding book "Fast Forward: Hollywood, The Japanese, and the VCR Wars." Everyone interested in copyright should read Mr. Lardner's book, so here is a link to amazon.com for it, with copies available for as low as 40 cents.

Mr. Schein makes his first appearance on page 28 of the Lardner book, at a memorable occasion: Lew Wasserman of MCA/Universal, during a September 1976 business dinner with Mr. Morita and Mr. Schein told them he might sue them over the Betamax. Mr Schein and Mr. Morita both recalled Mr. Wasserman adding: "We may have to do this because if the Betamax is successful, the video disc will never get off the ground." Mr. Wasserman was referring to a product called Disco Vision that MCA was developing; it was a playback only laser disc (yes, in 1976). Morita not only disagreed but added he found it difficult to see how MCA "could discuss a business deal and threaten a lawsuit at the same time. It was his policy and Japanese tradition ... that 'when we shake hands, we will not hit you with the other hand.'" (Me: prepare memo to Silicon Valley people to be aware of this strange culture).

In November 1976, the day after the suit was filed, Mr. Schein met with MCA's Sid Sheinberg
(who had been at the dinner) to try and work out a compromise that would involve Congressionally mandated royalties. Sheinberg is reported to have said that Disney, a co-plaintiff, would not go for it, but Schein concluded that the competitive threat to videodisc was the real problem. Mr. Lardner quotes Mr. Schein:

[W]hy buy a videodisc machine when you can buy a videocassette machine that does everything it does plus it records off the air and makes home copies? I don't think it was accidental that the company that took the lead in fighting the videocassette held all the patents on the videosdisc.

During a debate with Mr. Sheinberg on Walter Cronkite, Mr. Sheinberg called Mr. Schein a "highwayman," which appalled Mr. Schein whose whole career had been and remained in the entertainment business, usually on content owners' side. Mr. Schein lasted only a year or so after this at Sony, due to fights with Mr. Morita over mr. Schein's American style approach to immediate profits, something noted in the Lardner book and the Times obituary. He was an amazing figure in amazing times.

The Anti-Piracy Scam: Canada Insulted Again

The Congressional International Anti-Piracy Caucus (IPAC) was established in October 2003. Its website states: " The Congressional International Anti-Piracy Caucus is a bipartisan and bicameral group committed to protecting American intellectual property and reducing the scourge of piracy abroad." It is hard to argue with such Motherhood and Apple Pie concerns.

The caucus made the news yesterday with a purported news release. I say purported not because I question the existence of the release, but because the news release hasn't been released on the caucus' website, but rather is reported on at the RIAA's website, here. The RIAA reports:

The co-chairs of the Congressional International Anti-Piracy Caucus (IAPC) today released their “Priority Country List” today highlighting some of the most pressing problems confronting the American creative community in global commerce.

Joining China and Russia in “the ignominious three” is Canada which, notwithstanding numerous public announcements, has failed to join the rest of its partners in the developed world in modernizing its copyright laws to address the challenges -- and to seize the opportunities -- of the digital age.

No quotes from the caucus are provided, however, so it is not possible to know what the caucus itself said, rather than what RIAA says. But this much seems clear: the addition of Canada well illustrates a cancer in discussions over copyright: RIAA is referring to its desire to have Canada adopt of the anti-circumvention and digital rights management provisions of chapter 12 of title 17. (It should be noted that despite chapter 12 being in title 17, chapter 12 is not a copyright provision, but is rather sui generis, like semiconductor chips, bootlegs, and vessel boat hulls. So even in the U.S., we have not implemented the 1996 WIPO treaties under our copyright laws.).

I have pointed out repeatedly that chapter 12 of title 17 has nothing to do with piracy. (See here and here). Instead, as Professor Tarleton Gillespie fully explained in "Wired Shut: Copyright and the Shape of Digital Culture" (reviewed in this blog post), chapter 12 is concerned with creating and controlling access, to creating a command and control business model in which U.S. corporations will be able to change, fundamentally the way we interact with culture; specifically toward a pay per view, pay per listen, or pay per read world in which we will never own a copy of a work, in which a combination of technological protection measures and the power to override limitations on copyright through contract -- made possible by the Seventh Circuit's ProCD opinion -- means we will all be licensees, subjects to whatever terms and conditions are unilaterally imposed, and which cannot be circumvented on pain of criminal prosecution brought on behalf of a government that is "Pro-IP."

What governments need to understand is how enacting what U.S. corporations are demanding of them will work in practice. In ordinary legislation, a bill is drafted, its provisions are laid bare, and can be debated. The effect the provision can have may be debated, but ultimately the legislature makes a policy decision, and a law is passed. Those who are affected by the provision can read it (or have their lawyers read it) and determine how to shape their conduct to comply with the provisions' mandates. Those mandates cannot be expanded or changed except by another act of the legislature. DRMs and TMPs work very differently. Chapter 12 of title 17 delegates law-making power to the private sector.

It is the private sector - to be specific, U.S. corporate interests -- that will determine, on a rolling, ever changing basis what conduct will be permitted; this includes what playback devices (e.g., DVD players, CD players, music and video enabled phones) can come to market and what functionalities they will have or not have; it also includes what uses we can make of lawfully acquired works: you buy a lawfully made DVD in England, sorry you can't play it in Canada; you purchased a download of a song, sorry you can listen to it only three times, or only on this device; you buy an eBook; sorry, you "bought" it only for two weeks, and only for play on a specific device (e.g., Kindle). None of this requires legislative approval: all of it -- and much much worse -- can be controlled through the rights granted in chapter 12 because those rights are rights to control access, broadly speaking and without being tied to acts that would otherwise violate the exclusive rights granted by copyright. Once chapter 12 is implemented into domestic law, it is U.S. corporate copyright interests that will shape what consumer goods can be used in your country and how citizens of your country will be able to access and use lawfully acquired copies of works. No legislature that is amending its copyright law should do so without understanding the momentous delegation of power they are handing to U.S. corporate interests.

This is not a piracy issue, it is nothing remotely resembling piracy. It is Orwellian to claim otherwise. The designation of Canada as a scofflaw because it hasn't implemented chapter 12 of title 17 is not only an abuse of language, but also a direct attack on the sovereignty of another country to determine what is in the public interest of its own citizens. Canada has more than adequate laws against real piracy, and as Howard Knopf had pointed out, its laws are more generous toward authors than is U.S. law. No legislature in the world should abdicate its responsibility to protect the public interest by vesting the private sector with the powers granted in chapter 12 of title 17. But Canadian abdication is exactly what is being proposed by U.S. interests, the false justification being that Canada is a pirate haven because it hasn't implemented the U.S. DMCA.

There is a very real danger that the false use of piracy as a stalking horse for the DMCA will succeed, and that of course is precisely why it is being employed. Members of Congress and parliaments (including the well-meaning members of the Congressional International Anti-Piracy Caucus) are of necessity generalists. They rely, of necessity, on specialists, both inside the government and in the private sector, to provide them with an honest presentation of the facts, the law, and the policies involved. This is why the misuse of language, the mischaracterization of international obligations, and the false association of DRMs and TPMs with piracy is so deadly, and why I complain about it so loudly and frequently. I support fully efforts to combat piracy in the usual sense of that word, in the sense the members of the Congressional International Anti-Piracy Caucus understand that word: the massive, commercial, unauthorized reproduction of copyrighted works. But this is not the sense in which U.S. corporate interests are now using the word; instead piracy has become a synonym for our DMCA, and on that score, I object. Let U.S. corporate interests make their case for our DMCA honestly, on the merits, without falsely impugning the state of the law in other countries with the scare tactic of piracy. If they have a good case, they can make it, but let's at least be honest about what is on the table.

Trump Trumps Architectural Infringement Claim

The motion picture industry has long suffered from frivolous lawsuits brought by unsuccessful writers certain that they have been wronged. Such claims are also common in the music field, bu are less common in architecture. One exception is an opinion handed down yesterday by the Eleventh Circuit, Oravec v. Sunny Isles Luxury Ventures. L.C., et al. available here. (H.T. to C.E. Petit). The court of appeals, per Judge Wilson, affirmed the trial judge’s grant of summary judgment to defendants, and appropriately so. The opinion is solid.

Plaintiff is a Czech born architect who, upon immigrating to the United States, eventually ceased practicing in the field, perhaps because he is not licensed to do so. In his spare time, he sketched a design for a high-rise building that featured the use of alternating concave and convex shapes, with elevator cores sticking out from the building’s roofline. He mailed out about 120 copies of his design, and stated he had given some in person presentations. He subsequently alleged that the Trump Palace and Trump Royale high-rise condos in Sunny Isles, Florida infringed his designs.

The trial court held there were disputed issues of fact about defendant’s access to plaintiff’s design, resting summary judgment on the ground that no reasonable jury properly instructed could find the two works were substantially similar in expression. The court of appeals helpful included copies of the parties’ designs in appendices to its opinion, so that readers may form their own opinion of the matter.

There are at least noteworthy legal points in Jude Wilson's opinion: (1) rejection of the Ninth Circuit’s extrinsic-intrinsic test; and (2) a proper construction of the scope of copyright in architectural plans. There is also a lengthy discussion of plaintiff’s repeated, hapless efforts to register his claims, that is worth reviewing for those who practice in the field, or who worry about the scope of registrations for derivative works.

On the first point, the court of appeals revisited the opinion in Herzog v. Castle Rock Entertainment, 193 F.3d 1241 (11th Cir. 1999)(per curiam). Herzog has always been an anomaly because the circuit per curiam adopted the district court’s opinion and did not write its own. I have seen many references to Herzog that gloss over this point. The point is important because the Herzog district court utilized the Ninth Circuit’s extrinsic-intrinsic test, announced in the 1977 Krofft opinion, and which has been transmogrified in the subsequent 31 years into a jurisprudence that is, at its best, unfathomable and bears no resemblance to basic principles of copyright law. Praise God that the Eleventh Circuit took the occasion in Oravec (pages 10-11 n.5 of the slip opinion) to hold” “We believe that the Herzog formulation is not useful in this case because the two tests ultimately merge into a single inquiry: whether a reasonable jury could find the competing designs substantially similar at the level of protected expression.” If only the Ninth Circuit could find its way to such a simple statement of the inquiry.

The other legal point worth noting (in the short space of a blog, that is) concerns the court of appeals' clear holding that registration of architectural plans or for other pictorial, graphic, and sculptural works "does not protect against the construction of a building based on copyrighted architectural plans; it only prohibits copying of the plans themselves." (page 20). This simple, but important principle is a result of the 1990 amendments protecting for the first time architectural works, and is followed rarely, regrettably. May this be the start of a correction.

New Director General for WIPO

Yesterday saw high drama in Geneva not seen since -- well, I don't know when there has been high drama in Geneva -- but anyway, by a vote of 42 to 41, Francis Gurry of Australia was elected the new Director General of WIPO. As reported by the Intellectual Property Watch blog:

The busy campaigns of the 15 original candidates lasted for months, beginning last autumn, and in some cases as far back as last summer, when it became apparent that a concerted effort would be made to convince the current director general to leave early out of concern for confidence in his leadership. Director General Kamil Idris agreed to leave the position one year early, on 1 October 2008.

But in the end, Gurry, considered a favourite as one of the most senior officials in the organisation who had nevertheless crafted a reputation for relative independence from the existing administration, prevailed. Gurry is the deputy director general in charge of patents, Internet domain names, and other matters, and previously served as WIPO general counsel. ....

In the end, it was a duel of insiders, as Graça Aranha also has been with the organisation for years. But Gurry may have managed to swing just enough developing country votes to take it. He also seemed to have support among some staff in the organisation. After the result, one staff person took to the hallways, shouting, “Viva Gurry!”

I have been told by an Australian colleague that the reaction in Australia was the more boisterous Australian war cry, "Aussie Aussie Aussie!!! Oi Oi Oi!" In any event, mazel tov to Mr. Gurry, and may the force be with you.

IceTV Iced: Kangaroos Hopping Mad

In August of last year, I did a post on a decision by Justice Annabelle Bennett of the Federal Court in Sydney, Australia in a copyright infringement suit brought by the Channel Nine Network in Australia against IceTV for the latter's electronic program guide. Ice's EPG copied schedule information from Nine's weekly guides. Earlier background on the suit can be found here in a post by Kim Weatherall, and here in a post by Peter Black. IceTV was found to have copied information from Channel Nine, but to have engaged in its own research as well, combining information from a number of sources. This activity led the judge to conclude: “It is open at law to a person to ascertain the facts recorded in a compilation on the basis of that independent inquiry. This is what IceTV did…” That made sense to me.

On May 8th, Justice Bennett's decision was reversed on appeal. Here is a link to the appellate opinion. Kim Weatherall has a long post on the opinion here, with a follow-up with other excellent links here. As Professor Weatherall points out regarding the appeal: "This truly was an all-stars copyright case: interesting issues, an all-star IP bench (including the CJ himself, plus two senior IP heavies - Justices Lindgren and Sackville) (note too - the same bench that sat on the Desktop Marketing case), no less than 4 senior counsel (all of them IP heavies in their own right) plus juniors." That said, for American lawyers, the opinion, as with the earlier opinion by in Desktop Marketing Systems Pty Ltd. v. Telstra Corporation, Ltd. [2002] FCAFC 112, involving telephone directories, may prove baffling. Not that baffling American lawyers should be any consideration for Australians: I am merely noting that Australian law on the issues of originality and infringement of factual compilations is radically different than U.S. law, at least post-Feist. (I think pre-Feist too, but there were a few sweat of the brow opinions before Feist).

I leave it to Australian copyright experts -- of whom there is a vast number in that magnificent country -- to debate whether the court of appeals got the IceTV issue right as a matter of Australian law and/or policy. I do note these remarks by Professor Weatherall:

In summary? A judgment that is consistent with the trend of Australian authority, and entirely [’entirely’ is a bit strong for a preliminary view!!!] consistent with the reasoning of the (identical) Full Federal Court in Desktop Marketing. But a judgment which also illustrates how far away, in some respects, Australian copyright law is from copyright law in other countries, including the US (with its concepts of thick and thin copyright), and the UK now that the UK has the Database directive. And a judgment that emphasises that Australian copyright law truly does protect information, and not just expression (the judgment is notable for not even talking about that issue).

My question about both Desktop Marketing and now IceTV is a conceptual one: where protection is based on sweat of the brow, how is there any room for the traditional substantial similarity analysis that the court nevertheless ploughs through, including a discussion of qualitative takings? To be clear about the context of the question: plaintiff did not claim copyright in the form of the weekly guides, meaning, I take it, the selection, coordination, or arrangement in U.S. compilation terms. Rather, the claim was in the sweat of the brow. Justice Bennett below had tried to make a fine distinction about types of labor, phrasing the question as "not whether Ice had taken the skill and labour which had been expended in programming decisions, but whether it had taken [Nine's] skill and labour of creating the work." This framing of the question at least tried to separate out two distinct activities, the first the creation of what Americans would call the creation of the broadcast day -- the actual programming that was broadcast --, and the second being whatever effort went into the creation of the weekly guide from which Ice took information. The court of appeals was having none of this: "it would seem that the originality of [the time and title] information lay not so much in the form in which None presented it, but the skill and labour expended in selecting and arranging the programs." (para 94).

To an American, I see two problems with this aside from the avowed protection of sweat of the brow (see paragraph 92 of the appellate opinion): first, it grants protection to the weekly guides based on what was done in constructing the actual programming rather than in constructing the guides, and, second, it absolutely protects facts. Given this, the opinion could have been quite short: did Ice expend its own sweat of the brow? If not, case over, and let's dispense entirely with the traditional infringement analysis. I say this not to be catty (I leave that to the IPKat, meow!), but rather to note than sweat of the brow is based on unfair competition, not copyright, so why not just decide it that way?

Retail Value among Thieves

You have been nabbed by the FBI for selling 300 counterfeit DVDs. You are facing prison time and fines, but how for long and how much money? The answer depends on the retail value of the DVDs, in particular whether they are worth more than $2,500. How do you get to below $2,500 for selling 300 counterfeit DVDs? By explaining to the judge that you sold them for $1,500. But is the relevant retail value the value for legitimate copies or the retail value that those who buy from counterfeiters pay? Who in other words are the willing buyers we look at? The term "retail value" is undefined, but the issue was just decided by the Fourth Circuit in United States v. Armstead, 2008 WL 1947869 (4th Cir. May 6, 2008)(05-5157). The court's approach seems unduly complicated, although it waqs of no moment to defendant since the court upheld the jury's verdict.

Here is the court's explication of defendant Armstead's argument:

He asserts that retail value, as used in the statute, means "the price a willing buyer would pay a willing seller at the time and in the market in which it is sold-the thieves' market." With this definition of "retail value," he argues that what a willing buyer would pay a willing seller at the time was evidenced by what the undercover agent paid him and therefore that the retail value amount was insufficient to satisfy the felony threshold amount of $2,500.

Here is the court's explication of the government's position:

The government contends that "retail value" refers to the higher value of what a willing buyer would pay a willing seller for a legitimate copy of the infringed item, such as an authentic, authorized DVD of the same movie. The government states that retail value as used in the statute is not the " 'bootleg value' the defendant received on the black market." It argues, "[i]f the Congress had meant to use the 'bootleg value' or 'wholesale value' of counterfeit product[s], it certainly would have used that or similar language; instead, the Congress used the phrase 'total retail value' of the copyright works."

The government's view makes sense and is easy to apply. Alas, that is not the approach taken by the court of appeals:

The government provides no authority to support the position that prices paid in a "thieves' market" cannot be a market value. Indeed, its only definition - the price of a movie "if it were sold to a member of the public" - would seem to include any market, except for the fact that the government argues for a value determined only by a market of "legitimate" copies. The government's assertion that the market for illicit goods is not determinative of "retail value" may be correct, but only if there is other evidence of a higher "value." ... Otherwise, a black market for illegitimate goods undoubtedly may provide evidence of a "market value." .... It remains undisputed by the parties that whatever value is used, it must be a value applicable at the time the violations occurred and the transactions in question took place-in this case, June 2003 and January 2004. Accordingly, retail value, as used in § 2319(b)(1), refers to prices assigned to commodities and goods for sale at the retail level at the time of sales at issue, representing face value or par value, or prices of commodities and goods determined by actual transactions between willing buyers and willing sellers at the retail level- whichever is the greatest. In this case, Armstead sold the illicit DVDs to an undercover agent when the movies recorded on them had only been distributed for theatrical release (and perhaps for hotel and airline release) but certainly before they had been released on DVDs to the public. Thus, at the time of the illicit transactions, there was no legitimate retail market for the sale of DVDs except as evidenced by the occasional and sporadic illicit transactions of the kind represented in this case. As noted, prices paid in those illicit transactions might be evidence of a market value. But in this case, the "thieves' market" prices were not the only evidence. The government presented evidence of other kinds of value that related to retail value during the theatrical release stage of the movies when the illegal transactions occurred.

...

Based on our reading of the statute, the government's evidence of the prerelease values of copies of movies, the actual selling prices of legitimate copies of movies in the postrelease period, as well as the suggested retail prices (which were erroneously excluded by the trial court), were all appropriate evidence for a jury to consider in determining total retail value of the illicit transactions. Likewise, the evidence relied on by Armstead of the actual transaction prices in the wholesale "thieves' market" was appropriate evidence for a jury to consider.

...
The fact that Armstead actually sold his DVDs in bulk for $5 per copy was also evidence that the jury could have considered. But this evidence would not be evidence of the greatest value; rather, it provided evidence of the lowest value that could be assigned to the DVDs. Indeed, the $5-per-copy price was a wholesale price, suggesting a "retail" value somewhat greater than $5 per copy.

BTW, Armstead was ultimately sentenced to six months' home detention, and paid $1,500 in fines.

Infringement by Copying Public Domain Works

Riddle me this Batman: when can you commit infringement by copying public domain works? When the public domain work is a derivative work and the underlying published work is still under copyright. The issue has its roots in the 1909 Act, in cases construing Section 7 of that Act, which read:

Compilations or abridgements, adaptations, arrangements, dramatizations, translations, or other versions of works in the public domain or of copyrighted works when produced with the consent of the proprietor of the copyright in such works, or works republished with new matter, shall be regarded as new works subject to copyright under the provisions of this title; but the publication of any such new work shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof, or be construed to imply an exclusive right to such use of the original works, or to secure or extend copyright in such original works.

This section led to numerous court of appeals opinions and one Supreme Court decision, Stewart v. Abend. The bolded part at the end is particularly inscrutable even by the standards of the 1909 Act. If for example, where there is an authorized derivative work, shouldn't the original material included in the derivative work fall into the public domain when the derivative work falls into the public domain? One way to interpret this section is to say that when an authorized derivative work falls into the public domain, anyone can use that work and anything from the original included in the derivative work. In the case of unpublished screenplays, that is what the Ninth Circuit held in Batjac Productions, Inc. v. Good Times Home Video Corp., 160 F.3d 1223 (9th Cir. 1998).

But earlier, in Russell v. Price, 612 F.2d 1123, 1128 (9th Cir.1979), the court came out differently where published works were involved. Russell involved a film version of Pygmalion, a play by George Bernard Shaw. In 1935, Shaw licensed rights to produce a film (also called Pygmalion) based on his published, copyrighted play. Copyright in the film expired through a failure to timely renew. Copyright in the play, Pygmalion, continued until 1988. Defendant began distributing the now public domain film in 1972. The owners of the play (Shaw had died) brought an infringement claim based on infringement of the play. The Ninth Circuit held that because parts of the film used the still-under-copyright play, infringement occurred. As stated by the court:

Thus we reaffirm ... the well-established doctrine that a derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work. Thus, although the derivative work may enter the public domain, the matter contained therein which derives from a work still covered by statutory copyright is not dedicated to the public. The established doctrine prevents unauthorized copying or other infringing use of the underlying work or any part of that work contained in the derivative product so long as the underlying work itself remains copyrighted. Therefore, since exhibition of the film “Pygmalion” necessarily involved exhibition of parts of Shaw's play, which is still copyrighted, plaintiffs here may prevent defendants from renting the film for exhibition without their authorization.

The issue arose again last August in a different setting, the Andy Griffith television show. The show aired on CBS from 1960 to 1968 and starred Griffith as Andy Taylor, Sheriff of Mayberry, North Carolina with Ron Howard as his son, Opie, Frances Bavier as his aunt, Beatrice "Aunt Bee" Taylor, and Don Knotts as his deputy, cousin, and best friend Barney Fife.
In March 1997, Paramount Pictures Corporation, a predecessor-in-interest to CBS, submitted renewal applications for episodes 80 through 95 (the “16 Middle Episodes”), as well as sixty other episodes. On June 5, 1997, the Copyright Office rejected the renewal applications for the 16 Middle Episodes as untimely, and into the public domain they went. A company called Rel Funds International, Inc. distributed the Middle Episodes, and CBS sued for infringement of the earlier episodes based on the Russell theory. The court held for CBS, 2007 WL 2325218 (N.D. Tex. Aug. 13, 2007). What I fine ironic about this result -- aside from the Middle Episodes not really being in the public domain anymore -- is that in the context of statutory damages, plaintiffs have successfully argued around the Section 504(c) limitation on only one award per derivative work or compilation (i.e., here the series), and obtained multiple awards of damages based on each episode. Apparently, when it comes to the precedent question whether each episode is under copyright, we magically are not to focus on the episode but on the series.

Forseeability and Copyright Incentives

Professor Shyamkrishna Balganesh of the University of Chicago Law School has an article called "Forseeability and Copyright Incentives, coming out in volume 122 of the Harvard Law Review but available here in draft form at ssrn. The topic is an intriguing one -- if copyright is instrumental, meaning incentive based -- how is that so little of how copyright actually works does not bear the slightest resemblance to incentives? This was the topic of then Professor Stephen Breyer's 1970 "Uneasy Case for Copyright " article (also in the Harvard Law Review). Professor Balganesh's work might provide a new look at the issues 38 years later, but in order for that effort to succeed, there are some basic errors that need to be corrected, as well as some rethinking.

His basic point is one I agree with and which I think deserves serious inquiry. The point is this: if copyright is instrumental -- and it is hard to look at the relevant Supreme Court opinions, the language and history of the Constitutional clause and think otherwise regardless of one's own views -- then it is incumbent to determine whether that instrumental goal is being fulfilled, not just as a systemic issue, but at the micro level. At the micro level, it is hard to look at the current level of protection and think there is any correlation at all between that protection and incentives to create. (It is a very different question whether the failure to match incentives to protection rises to the level of a constitutional infirmity, as Eldred illustrates).

To his credit, Professor Balganesh takes on a number micro issues, such a new uses, substantial similarity, and fair use. He proposes employing, as a common law tool, the foreseeability theory/behavior economics theory approach to deciding these issues. Both take as a starting point the idea of "bounded rationality": we each only know so much. This is in contradistinction to the neoclassical economic assumption that we are perfectly rational and readily respond to utility-enhancing incentives. Put crudely in Chicago terms, are you with Richard Posner or Cass Sunstein?

And again to Professor Balganesh's credit, he takes the bold step of offering some hypos and seeing how they would pan out with his theory. Here are some of my issues with how he approaches the hypos and works them out. First, the new use issue -- in 1955 did an author who authorized use of the work on black and white television think of VCRs in authorizing his or her work to be "exhibited" on television. This is a common issue, but it is not a copyright issue at all; instead, it is a contract issue, and a state contract issue at that. The Second Circuit has made this clear many times. Second, on fair use, it is not true as Professor Balganesh states that "the doctrine of fair use is of statutory origin." (page 11). It is a common law doctrine. Nor do I agree with his remark that "It remains common consensus among copyright scholars that the fair use doctrine -- as it is structured and applied today-- remains deeply flawed." (page 5, note 16). I don't know about copyright scholars, but Judge Leval who knows a thing or two about the question, takes a very different view. In recent speeches, he thinks fair use is working well. Professor Balganesh's interpretation of how transformative use is intended and works in practice is, regrettably, simply wrong; for example, he states "for uses that don't directly modify the substantive content of the work, the transformative use test becomes somewhat meaningless." (page 12). Not only has Judge Leval rejected this erroneous view of what is after all his own theory, but there are many cases to the contrary, such as the Perfect 10 v. Amazon.com case, which Professor Balganesh doesn't cite, and two that he does cite, one incorrectly for holding that such change is required -- the Bill Graham case -- and the Kelly Arriba case which he acknowledges but then cites another law professor who describes Kelly as a misapplication of transformative use. One can regard Kelly as a misapplication if you like, but that doesn't mean the opinion is meaningless; quite the opposite, the P10 case followed it, and Judge Leval has endorsed it as well.

One final example of my problems with the article as currently written; this one illustrates Professor Balganesh's failure to appreciate the role that Congress plays. Professor Balganesh discuses the Supreme Court's 1908 White-Smith opinion holding that perforated piano roles were not a copy of the underlying music. Professor Balganesh interprets the parties' briefs to have raised his foreseeability theory, but is upset that the Supreme Court decided the case on statutory interpretation grounds. Then, and this is regarded as particularly bad, the Court having decided the case on statutory grounds, Congress went ahead and amended the statute, rendering, it is said, the Court's reasoning as redundant. Had the Court decided the case on the foreseeabilty ground allegedly argued, Professor Balganesh argues, the Court "might have reached the same conclusion -- but on much surer footing."

I doubt it, and I disagree that deciding a case by interpreting a statutory term represents less footing than deciding the case on behavioral theories espoused in briefs. But in any event, Congress had been deliberating amendments on point years before White Smith was decided, and therefore did not act in response to the opinion, nor did Congress's legislative action render the Court's opinion redundant. The Court was construing the pre-1909 Act statute and Congress was passing a new, omnibus statute. Moreover, Congress did not reverse the Court's interpretation of the term "copy": that interpretation remained the law until the 1976 Act. What Congress did was to create a compulsory license, a license that had nothing to do with forseeability, but which neatly both gave copyright owners for the first time remuneration for the mechanical reproduction of their compositions, and which broke the tying arrangement that underlie the White Smith case.

Professor Balganesh has taken on a very important issue, and he may be the person to see it through, but the article as presently written doesn't. I would love to see the article reworked so that his insights could be more forceful.

Happy Birthday Now Pay the License Fee

I confess to vastly preferring the Beatles' You Say its Your Birthday to the traditional Happy Birthday. (Here is a link to the Beatles singing the traditional song, though). Nevertheless, for copyright geeks, the traditional Happy Birthday has provided fodder for what all that is wrong with copyright. Now, Professor Robert Brauneis of George Washington Law School has blessed us with an exhaustive treatment of the song. Available here on ssrn, the article is entitled "Copyright and the World's Most Popular Song," Professor Brauneis gives us 67 and a half pages of history of the song and the copyright issues surrounding it. He has also generously provided a an amazing resource -- a website hosting over a hundred documents relating to the song:

http://docs.law.gwu.edu/facweb/rbrauneis/happybirthday.htm

The article is a tour de force of historical research as well as a probing inquiry into how copyright works that have fallen into the public domain can still command serious income through the inability of others to spend the time and money to track down the provenance of the claims to copyright in them. For those interested in the economic effects of term extension, here are some statistics Professor Brauneis offers: "In the late 1940s and early 1950s, the song generated revenues in the range of $15,000 to $20,000 per year. By 1960, the figure was closer to $50,00, and by 1970, over $75,000. But the really dramatic increase in revenue came in the 1980s. By the early 1990s, the song was generating over $1 million per year, and by 1996, reported Forbes magazine, it was 'pull[ing] in slightly less than $2 million a year.'" The Sony Bono term extension did not occur until 2 years later, 1998, while Happy Birthday, then known as "Good Morning to All," was first published in 1893, 115 years ago.

Learned Hand and the Writing of History

Judge Learned Hand's opinion as a district judge in Myers v. Mail & Express Co., 36 Copyright Office Bulletin 478 (S.D. N.Y. 1919) reads in part:

[N]ot only are all the facts recorded in a history in the public domain, since the narration of history must proceed chronologically,—or at least, such is the convention,—the order in which the facts are reported must be the same in the case of a second supposed author. There cannot be any such thing as copyright in the order or presentation of the facts, nor, indeed, in their selection, although that selection may go the highest genius of authorship, for indeed history depends wholly upon a selection from the undifferentiated mass of recorded facts.

Judge Hand's comments reflect a naïve and blinkered understanding of how history is written, and shows that even the great falter on occasion. The passage is full of categorical statements (“the narration of history must proceed chronologically”; the “order in which the facts are separated must be the same in the case of a second author;” “there cannot be any such thing as copyright in the order of presentation of facts;” “history depends wholly upon a selection from the undifferentiated mass of recorded facts”) offered with no support, and overwhelmed by copious evidence from actual histories and writings by historians about the writing of history (historiography). few writers of any kind can produce a readable work without some kind of “plot” or “theme.” As Lawrence Stone wrote: “Thucydides's theme was the Peloponnesian Wars and their disastrous efforts upon Greek society and politics; Gibbon's the decline and fall of the Rome empire; Macaulay's the use of a liberal participatory constitution in the stresses of revolutionary politics.” Even if, in the case of histories, we feel more comfortable with the term narrative, no narrative can be, as Hand suggested, a self-defining, self-selecting, self-ordering aggregation of facts. Professor M.C. Lemon wrote in “The Structure of Narrative,” in The History and Narrative Reader at 108 (Geoffrey Roberts ed. 2001):

[A] chronicle is a kind of calendar. It lists events (or other data) in the order of their dates. For example, one could produce a list of every Act of Parliament ordered (sequentially) according to their dates, or one could chronicle the offspring of a family over the generations. Insofar as their succession of time is the sole principle underlying their manner of presentation, it would appear continuity is the essence of the matter in the construction of a chronicle—and if so, then the chronicle is the narrative in its starkest, hence purest, form. But of course this is not the case. A chronicle's “continuity” is merely abstract, superimposed by the purely formal rationale of the numerical ordering of dates; it is a meaningless continuity. Put formally, the chronicle is structured in terms of “this (then) that,” whereas the narrative is structured in terms of “this then that.” In the narrative form, the “then” has a peculiar, distinctive significance, which transforms a successor of events into a meaningful sequence.

All this leads to three recent, very interesting books and one interesting article on the writing of histories. The first book is John Burrow’s book, published on April 8th, fabulously entitled “A History of Histories: Epics, Chronicles, Romances and Inquiries from Herodotus and Thucydides to the Twentieth Century,” available for $29 at amazon.com. Professor Burrow, an English scholar, has written what might be a "history of ideas", or intellectual history. Professor Burrow relies heavily on the work of others. His is a synthetic effort where the value is in the telling of the tale, the tale being the writing of histories. he is an entertaining writer who assumes no knowledge of the subject. One passage I was struck by is the italicized portion on page 115, about the Roman writer Appian, a younger contemporary of Plutarch:

“There has been disagreement about how far Appian was a mere compiler of other men’s work. It is possible to say with certainty, for example, that his account of Catiline’s conspiracy derived heavily from Sallust, but in general the ancient habit of mentioning source only in cases of disagreement makes it impossible to be sure.”


As I noted in an earlier blog about originality and earlier views on plagiarism, Thomas DeQuincy, in the mid-19th century, vociferously accused others of plagiarism, but he regarded the following three activities as not plagiarism: “(1) when the author improved on the work of the original; (2) when the second author has borrowed from a work so well that known that a well-read reader may be expected to credit the original source; (3) when the borrowing had been unconscious.” It seems that the modern (by which I mean sarcastically within the last ten years or so) view of copying and when one must give attribution is quite against the weight of history.

My favorite of Professor Burrow's discussions are those of the Greek historians Herodotus and Thucydides, each of whom he gives fond attention to and whom he profitably contrasts. Lovers of those two historians are blessed with new books on each historian. David Mendelsohn, a humanities professor at Bard College has a review of the Herodotus book in the April 28th New Yorker. Professor Mendelsohn’s article is a fun read. Both he and Burrow chose to mention this nugget from Herodotus’ well-known digressions (that is, Herodotus’s descriptions of the manners and customs of the Egyptians, Persians and Babylonians in Book II of his history of the Persian Wars (490 to 479 B.C.E.)). The Egyptians, Herodotus wrote “seem to have reversed the ordinary practices of mankind” by “eating in the streets and relieving themselves indoors … the men urinating sitting down, the women standing up, and so on.” (quoted in Burrow page 25). Burrow adds this bon mot, “After recording that the Persians never acted on a decision taken when drunk without reconsidering it when sober, one can see that it was irresistible [for Herodotus] to add that a decision taken sober was always reconsidered when drunk.” If details like these don't make one want to take up Herodotus, nothing will.

The book Professor Mendelsohn was reviewing in The New Yorker was “Landmark Herodotus: The Histories” ($29 from amazon.com) published on November 6, 2007, 952 pages, edited by Robert Strassler (an unaffiliated scholar) and with a new translation by Andrea Purvis. Professor Mendelsohn is quite critical of the translation, finding it “naked and pedestrian,” two descriptions that in this case perhaps are not the most felicitous when conjoined. Lacking any knowledge of Greek (and I don’t know if Professor Mendelsohn knows Greek either; he was a journalist before becoming a humanities professor), I have to pass on his judgment, but he is otherwise highly complimentary about the book and it is easy to see why. The book is copiously annotated with maps, photographs, timelines, numerous footnotes, and scholarly references that greatly assist one on comprehending this quite long war.

The second book, “The Landmark Thucydides: A Comprehensive Guide to the Peloponnesian War,” issued April 1, 2008, is a revised edition (the first one was done ten years earlier). It too is $29 at amazon.com, is 706 pages, is also edited by Mr. Strassler, and has an introduction by Professor Victor Hanson, a professor of Greek at Fresno State University, California. (No translation credit is given that I could find). The format is the same as the Landmark Herodotus, and it has the same very high quality. It is a shame Professor Mendelsohn didn’t discuss the Thucydides book; perhaps that will be his next essay.

Both books are in hardcover. The Thucydides is published by Free Press, a division of Simon & Schuster. The Herodotus is published by Pantheon Books after Free Books turned it down. They both are extremely handsome books. With a price of $29 from amazon (list is $45), they are an amazing value. I proudly own both and despite their weight schlep them (one at a time) on airplanes where they help pass away the time during inevitable flight delays. Both books pay put to Hand’s view of history as well as to the idea that hard copy, mainstream books are a thing of the past. Both books are extraordinary accomplishments. Bravo to all involved.