Educators Forced to Become MPAA's Cops

On July 30th, the House and Senate conferees approved the Higher Education Act reauthorization conference report, H.R. Rep. 110-803, to H.R. 4137. The bill, expected to become law soon, includes the College Opportunity and Affordability Act. Some may recall efforts last year to condition federal aid to universities on those institutions employing filtering technology. Senate Majority leader Harry Reid would have also mandated that the Secretary of Education compile a 25 “worst offenders" list of those schools with the highest levels of illegal P2P file sharing. The idea wasn’t original, MPAA had already compiled its the top 25 list. MPAA head Dan Glickman put out this press release at the time:


Some college students are abusing powerful taxpayer funded computer networks to download and distribute movies and other copyrighted material which is why we are committed to working with universities to develop and implement plans to address this problem. We commend Senator Reid for his leadership in getting this important legislation passed through the Senate which will help encourage universities to do more.

At the time, Mr. Glickman estimated that downloading at universities cost the industry $500 million annually. Why not the Austin Powers ONE BILLION DOLLARS? Apparently members of Congress later failed to read the MPAA’s January 2008 admission that its numbers in a commissioned survey about the extent of alleged unauthorized file sharing on campus were way off, the result of alleged “human error.” But even the new number was phony and also failed to take into account the fact that most students live off campus.

This raises one of the features of Washington DC that rightly baffles those outside the Beltway: how is that a trade association gets an issue so wrong, but then still manages to get legislation passed that addresses a non-problem that the association deliberately concocted? The answer, supplied by Mr. Glickman, is: leadership.

MPAA’s initial efforts were defeated fortunately, and the history of the bill during late 2007 and early 2008 is recounted in a series of very informative posts by Anne Broache for Cnet here , here, and here. Congress, in the bill that just passed, instead of mandating filtering and bad boy lists, mandated various requirements for educators to undertake, all of which involve spouting MPAA and RIAA’s propaganda. Here are the relevant pages from the Joint Explanatory Statement of the Managers in the Conference Committee report describing the requirements:

Institutional and Financial Assistance Information for Students.

The Senate amendment and the House bill require institutions to make available to current and prospective students the institution of higher education's policies and sanctions related to copyright infringement, including a description of actions taken by the institution of higher education to detect and prevent the unauthorized distribution of copyrighted materials on the institution of higher education's technology system.

Both the Senate and the House recede with an amendment to replace language in (iv) with language requiring institutions to make available the development of plans to detect and prevent unauthorized distribution of copyrighted material on the institution of higher education's information technology system which shall, to the extent practicable, include offering alternatives to illegal-downloading or peer-to-peer distribution of intellectual property, as determined by the institution of higher education in consultation with the Chief Technology Officer or other designated officer of the institution.

The Conferees have combined elements from both bills to require institutions to advise students about this issue and to certify that all institutions have plans to combat and reduce illegal peer to peer file sharing.

Experience shows that a technology-based deterrent can be an effective element of an overall solution to combat copyright infringement, when used in combination with other internal and external solutions to educate users and enforce institutional policies.

Effective technology-based deterrents are currently available to institutions of higher education through a number of vendors. These approaches may provide an institution with the ability to choose which one best meets its needs, depending on that institution's own unique characteristics, such as cost and scale. These include bandwidth shaping, traffic monitoring to identify the largest bandwidth users, a vigorous program of accepting and responding to Digital Millennium Copyright Act (DMCA) notices, and a variety of commercial products designed to reduce or block illegal file sharing.

Rapid advances in information technology mean that new products and techniques are continually emerging. Technologies that are promising today may be obsolete a year from now and new products that are not even on the drawing board may, at some point in the not too distant future, prove highly effective. The Conferees intend that this Section be interpreted to be technology neutral and not imply that any particular technology measures are favored or required for inclusion in an institution's plans. The Conferees intend for each institution to retain the authority to determine what its particular plans for compliance with this Section will be, including those that prohibit content monitoring. The Conferees recognize that there is a broad range of possibilities that exist for institutions to consider in developing plans for purposes of complying with this Section.

Numerous institutions are utilizing various technology based deterrent in their efforts to combat copyright infringement on their campuses. According to a report of the Joint Committee of the Higher Education and Entertainment Communities, many institutions of higher education have taken significant steps to deal with the problem. Indiana University, for example, hosts an extensive "Are you legal?" educational campaign for students on the issues, and enforces campus policies on proper use of the network. It acts on DCMA notices by disconnecting students from the network and requires tutorials and quizzes to restore service. Second offenders are blocked immediately and are sent to the Student Ethics Committee for disciplinary action.

Audible Magic's CopySense Network Appliance provides comprehensive control over Peer-to-Peer (P2P) usage on a university's network. The CopySense Appliance identifies and blocks illegal sharing of copyrighted files while allowing other legitimate P2P uses to continue. It filters copyrighted P2P content by sensing an electronic fingerprint unique to the content itself, which is very similar to the way virus filters operate.

Red Lambda's "Integrity" is a network security solution dedicated to the management of file-sharing activities via protocols like P2P, IM, IRC, and FTP. This technology is able to detect all P2P, OS file-sharing, FTP, IM, proxy use, Skype and application tunneling over HTTP, HTTPS, DNS and ICMP protocols.

The University of Maryland, College Park, severely restricts bandwidth for residential networks and block certain protocols. It designed "Project Nethics" to promote the responsible use of information technology through user education and policy enforcement. A third violation can result in eviction from the university housing system. Montgomery College in Maryland enforces an Acceptable Use Policy on its wired and wireless networks.

Additional existing technological approaches can deter illegal file sharing by automatically processing notices sent by scanning vendors then taking actions such as messaging the user via browser redirection, applying the appropriate sanction and automatically re-enable browsing after a timeout or reconnect fee is paid. Other institutions use technology to appropriately manage their campus networks by limiting and/or shaping bandwidth, such as Packeteer's packet shaping technology.

This statement, in all likelihood written by MPAA, is extraordinary in many respects, especially for its detailed endorsement of private sector products. No general principles here like the text of the bill, and that of course is one of the abuses of legislative history that Justice Scalia and others rightly complain about: the tenor of the legislative history would never have been able to pass as legislative text. But the legislative history was inserted to serve a long-term agenda: there is likely to be an effort in the next Congress to mandate these technologies. The MPAA, with figures no better than the ones they retracted, will complain about universities’ alleged failure to be MPAA’s cops, and will lobby for mandated use of technologies, along with forfeiture of federal funding for not doing so. Why not throw in a 10 year federal prison term (no parole in the federal system, btw) for the President of a University that isn’t up to snuff. Or, how about adopting Sarbanes-Oxley for university officials who will have to swear on penalty of perjury (and imprisonment) that they have fulfilled MPAA’s requirements?

Here is the relevant statutory language:

1 SEC. 488. INSTITUTIONAL AND FINANCIAL ASSISTANCE IN

2 FORMATION FOR STUDENTS.

3 (a) INFORMATION DISSEMINATION ACTIVITIES.—

4 Section 485(a) (20 U.S.C. 1092(a)) is amended—

5 (1) in paragraph (1)—

6 (A) in subparagraph (G)—

7 (i) by striking ‘‘program, and’’ and in

8 serting ‘‘program,’’; and

9 (ii) by inserting ‘‘, and (iv) any plans

10 by the institution for improving the aca

11 demic program of the institution’’ after

12 ‘‘instructional personnel’’; and

13 (B) by striking subparagraph (M) and in

14 serting the following:

15 ‘‘(M) the terms and conditions of the loans

16 that students receive under parts B, D, and

17 E;’’;

18 (C) in subparagraph (N), by striking

19 ‘‘and’’ after the semicolon;

20 (D) in subparagraph (O), by striking the

21 period and inserting a semicolon; and

22 (E) by adding at the end the following:

23 ‘‘(P) institutional policies and sanctions re

24 lated to copyright infringement, including—

25 ‘‘(i) an annual disclosure that explic

26 itly informs students that unauthorized

P96

1 distribution of copyrighted material, in

2 cluding unauthorized peer-to-peer file shar

3 ing, may subject the students to civil and

4 criminal liabilities;

5 ‘‘(ii) a summary of the penalties for

6 violation of Federal copyright laws; and

7 ‘‘(iii) a description of the institution’s

8 policies with respect to unauthorized peer

9 to-peer file sharing, including disciplinary

10 actions that are taken against students

11 who engage in unauthorized distribution of

12 copyrighted materials using the institu

13 tion’s information technology system;

...

17 SEC. 493. PROGRAM PARTICIPATION AGREEMENTS.

...

25 U.S.C. 1094(a)) is amended—

1 (i) in paragraph (23)—

2 (I) by moving subparagraph (C)

3 two ems to the left; and

4 (II) by adding at the end the fol

5 lowing:

……..

6 ‘‘(29) The institution certifies that the institu

7 tion—

8 ‘‘(A) has developed plans to effectively

9 combat the unauthorized distribution of copy

10 righted material, including through the use of a

11 variety of technology-based deterrents; and

12 ‘‘(B) will, to the extent practicable, offer

13 alternatives to illegal downloading or peer-to

14 peer distribution of intellectual property, as de

15 termined by the institution in consultation with

16 the chief technology officer or other designated

17 officer of the institution.’’.

US Government Insists on Right to Violate DMCA

I previously did a posting on the US government’s successful invocation of sovereign immunity in a claim alleging copyright infringement and an anti-circumvention claim under the DMCA. The opinion in that case came from the Court of Federal Claims, a trial-level court. The decision has now been affirmed by the Federal Circuit, Blueport Company, LLC v. United States, 2008 WL 2854127 (CAFC, July 25, 2008)(No. 2007-5140), available here.

Congress abrogated the federal government’s sovereign immunity for copyright infringement in 28 USC 1498(c), but a DMCA anti-circumvention violation is not an infringement action; instead, chapter 12 of title 17 is a sui generis right, like semiconductor chips, bootlegging, and vessel boat hull protection. There is no express abrogation of sovereign immunity for DMCA violations, and thus the US government is free to – and appears quite happy to – engage in activity, which if done by individuals or companies, would be illegal, perhaps even criminal. The hypocrisy in the US government’s conduct is breathtaking given USTR’s vigorous efforts to peddle the DMCA internationally. Where are the IIPA, BSA, and other “pro-IP” groups on this scandalous treatment of creators? Will they now press for an amendment to 1498(b) to include violations of the DMCA?

The facts in the Blueport case fully support the sense of outrage we should all have over this situation. I will simply copy them verbatim from the CAFC’s opinion so there is no slanting of them. After reading them, ask yourself whether we should ever believe again government officials who talk about the importance of intellectual property:



BACKGROUND

In this case, Blueport claims that the Government-specifically the U.S. Air Force-infringed Blueport's copyright on a software program known as “the AUMD program.” The AUMD program was written by Air Force Technical Sergeant Mark Davenport. On March 6, 2000, Davenport assigned all his rights in the AUMD program to Blueport.

When Davenport wrote the AUMD program, he was employed as a manager of the Air Force Manpower Data System (“MDS”), a database containing manpower profiles for each unit in the Air Force. In his capacity as an MDS Manager, Davenport updated the MDS with new data and provided reports from the MDS to Air Force personnel upon request. Davenport was also a member of the Air Force's Manpower User Group, a group of manpower personnel from each of the Air Force's major commands who provided guidance on the use of the MDS. Based on his experience with the MDS, Davenport concluded that the software the Air Force used to run the MDS was inefficient and began seeking ways to redesign the software program. Davenport initially requested training in computer programming from the Air Force, but his request was denied. Undeterred, Davenport learned the computer programming skills necessary to write the AUMD program on his own time and with his own resources. Davenport then wrote the source code for the AUMD program while at home on his personal computer. Although he wrote the program solely at his home and at his own initiative, Davenport's intent in writing the program was that other Air Force manpower personnel would use it.


In June 1998, Davenport shared an early version of the program with a fellow coworker, and both tested the program on the MDS at work during regular business hours. Based on the results of this testing, Davenport made changes to the source code of the AUMD program on his home computer. Davenport did not at that time, or at any time thereafter, bring the AUMD program's source code to work or copy it onto Air Force computers.

After these initial tests, Davenport began sharing copies of the AUMD program with other colleagues. At first, Davenport shared the AUMD program with colleagues by giving them a computer disk containing the program or by personally installing the program on their computers. Later, Davenport posted the AUMD program on an Air Force web page so that Air Force manpower personnel could download it directly. As the program became popular within the Air Force manpower community, Davenport's superiors asked him to train additional personnel in its use. During this time, he continued to modify the program based on feedback he received and, as a result, improved its functionality and eliminated programming errors. At some point, Davenport added an automatic expiration date to each new version of the AUMD program so that users were required to download the newest version when the older one expired.

In September 1998, Davenport gave a presentation to senior Air Force manpower officers at an annual conference and, according to one of Davenport's superiors, “absolutely sold his audience” on the AUMD program. Davenport's performance report deemed him the “go to troubleshooter for [the] entire [Air Force] manpower community ... [and] the most knowledgeable database manager in [the] career field.” The performance report concluded with a recommendation to promote Davenport immediately.

Despite Davenport's success in creating the AUMD program and his willingness to share it, the Air Force eventually decided it was becoming too dependent on Davenport for access to the program. Accordingly, Davenport's superiors asked him to turn over the source code for the program, which Davenport had always kept on his home computer. When he refused to turn over the source code, his superiors threatened him with a demotion and a pay cut, and excluded him from the Manpower User Group's advisory authority.

Davenport then assigned all his rights in the AUMD program to Blueport. Subsequently, Blueport attempted to negotiate a license agreement with the Air Force. However, the Air Force refused Blueport's offer and solicited other contractors to recreate the AUMD program. The Air Force ultimately contracted with Science Applications International Corporation (“SAIC”). At the request of the Air Force, SAIC programmers modified the AUMD program's object code to extend its expiration date. This modification allowed Air Force manpower personnel to continue to use the AUMD program despite Davenport's refusal to provide the source code.

In 2002, Blueport brought the present claims against the Government for copyright infringement and violations of the DMCA. Specifically, Blueport argues that the Air Force infringed its copyright in the AUMD program. In addition, Blueport argues that the Air Force violated the DMCA by extending the expiration date in the AUMD program's object code-thus circumventing the measures taken by Blueport to prevent unauthorized use of the program. The CFC dismissed Blueport's claims for lack of jurisdiction on the ground that the Government had not waived its sovereign immunity for any of the claims. Blueport now appeals.

Is there such a thing as holding legal title to a registration?

The question in the title was posed by a decision filed yesterday in Tom Bean v. McDougal Littell (a division of the Houghton Mifflin Company) and R.R. Donnelley & Sons Company, No. 07-8063-PCT-JAT (D. Arizona (James Teilborg, Judge).

The relevant statutory provision is 17 USC 408(a)

— At any time during the subsistence of the first term of copyright in any published or unpublished work in which the copyright was secured before January 1, 1978, and during the subsistence of any copyright secured on or after that date, the owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim …

This provision, drafted by the Copyright Office, contains from the Office’s perspective a big problem, highlighted in bold. The problem is that the statute clearly permits the owner of a single exclusive right to file a claim of registration. From the Office’s perspective that’s a problem because it might lead to multiple registrations for the same work, and a cluttered public record. But the statute has not been amended since passage in 1976. The Office’s initial, immediate response was to solicit a letter from counsel for the Author’s Guild, the late Irwin Karp, that attempted to make the case for what might be called an indivisible registration for divisible copyright; in short, permitting only a single registration per work. That is the system that exists today, and it makes perfect sense; it certainly makes searches simple.

To register a claim you either have to be (1) the author, (2) the assignee of all rights, or (3) an agent for (1) or (2).

In regulations implementing this, we find:

For the purposes of this section, a copyright claimant is either:

(i) The author of a work;

(ii) A person or organization that has obtained ownership of all rights under the copyright initially belonging to the author.1

1 This category includes a person or organization that has obtained, from the author or from an entity that has obtained ownership of all rights under the copyright initially belonging to the author, the contractual right to claim legal title to the copyright in an application for copyright registration.

The kicker here is the footnote, which seems to conflict with the text of the regulation. The regulation refers to ownership of all rights. The footnote, by contrast, refers to a concept not found in the statute, a contractual right to claim legal title. What does it mean to have a contractual right to claim “legal title” to the copyright in an application for copyright registration? Must legal title be the ability to exercise rights, or, can it be merely an exclusive right to file for registration? This latter concept is not found in the statute. In asking this question, note that it is a different question than standing under Section 501(a), which reads in relevant part: “The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.” Here one must be the legal or beneficial owner of an exclusive right, and not merely possess a contractual right to claim legal title in connection with an application. Assignees of a single exclusive right would of course satisfy Section 501(a) and Section 408(a), but would they satisfy the Office’s regulations for registration purposes? Moreover, what if had such a contractual right to claim legal title but no right to actually exercise a Section 106 or 106A right?

This last issue arose in the Tom Bean case. The photographer plaintiff, along with 127 others, had signed a copyright registration agreement with Corbis, which granted Corbis “legal title” to the photographs “solely for the purpose of copyright registration.” Under the agreement, Corbis agreed “that it will promptly reassign legal title …. upon written request … .” The collective work registration obtained by Corbis was to extend to the individual photographs. Plaintiff sued defendants over claimed re-uses that were not licensed; defendants sought to dismiss the case for lack of subject matter jurisdiction based on an alleged invalid registration: Corbis allegedly could not be a proper registrant because it had only been conveyed the right to register the works and not the right to exercise any of the Section 106 rights. Corbis, in short, could not have brought an infringement suit, but could it have properly registered the works?

Judge Teilborg upheld the registration, but was perplexed by 37 CFR §202.3(a)(ii), writing that because that section “clearly intends to give registration rights to entities other than the author, and because no entities other than the author can have rights under Section 106A(a) “all the rights under the copyright owner originally belonging to the author cannot be taken absolutely literally lest it render 37 C.F.R. §202.3(a)(ii) superfluous.” I don’t know what the court is getting at here. For one thing, registration is not a requirement for VARA [Section 106A] rights. Another way to approach the issue would have been to interpret the regulation as creating two categories: ownership of exclusive rights, and, ownership of the contractual right to claim legal title in an application. But this begs the central question: what does legal title mean in this context? Why the footnote? How is the contractual right to claim legal title different from ownership of Section 106 and 106A rights, and if there is a difference, where in the statute does the statute authorize registration by the merely holder of such a contractual right? One way to look at this is that the Office’s regulations conflict with the statute from two directions: first, by not permitting the owner of a single exclusive right to register a claim to just that right, and second, by permitting a class of people to register that the statute doesn’t permit to register – the holders of a mere contractual right to claim legal title (assuming that right is different from a Section 106 or 106A right).

The problem for photographers is a practical one and one that has vexed Congress and the Copyright Office for quite awhile: how to enable photographers to obtain the benefits of registration while still preserving the integrity of the registration system. The Corbis agreement seems needlessly complex to me: why transfer something called a legal title to claim registration, which is then transferred back (how, by the way, do you transfer back a legal right to register a claim once the claim has already been registered?). A much simpler approach, and one the Office permitted under the 1909 Act, is to appoint Corbis (or any other organization) an agent. Agents can register claims for authors (law firms do this all the time).

Open Access and the NIH

In 1978, in enacting Section 105 of title 17, Congress faced a choice about what to do with copyrighted works that result from government funding, including basic research funding of scientific, technical, and medical (“STM”) journal articles. One approach was simply to preclude any assertion of copyright, treating such works the same way as works created by government employees within the scope of their employment. That approach would have been simple to apply, but might have inhibited the publication of some STM journals, at a time when hard copy ruled as the method of distribution. Congress chose a middle approach, discussed here in the 1976 House Judiciary Committee report:, which begins by referring to the definition of “work of the United States government”:

A more difficult and far-reaching problem is whether the definition should be broadened to prohibit copyright in works prepared under U.S. Government contract or grant. As the bill is written, the Government agency concerned could determine in each case whether to allow an independent contractor or grantee to secure copyright in works prepared in whole or in part with the use of Government funds. The argument that has been made against allowing copyright in this situation is that the public should not be required to pay a ''double subsidy,'' and that it is inconsistent to prohibit copyright in works by Government employees while permitting private copyrights in a growing body of works created by persons who are paid with Government funds. Those arguing in favor of potential copyright protection have stressed the importance of copyright as an incentive to creation and dissemination in this situation and the basically different policy considerations applicable to works written by Government employees and those applicable to works prepared by private organizations with the use of Federal funds.

The bill deliberately avoids making any sort of outright, unqualified prohibition against copyright in works prepared under Government contract or grant. There may well be cases where it would be in the public interest to deny copyright in the writings generated by Government research contracts and the like; it can be assumed that, where a Government agency commissions a work for its own use merely as an alternative to having one of its own employees prepare the work, the right to secure a private copyright would be withheld. However, there are almost certainly many other cases where the denial of copyright protection would be unfair or would hamper the production and publication of important works. Where, under the particular circumstances, Congress or the agency involved finds that the need to have a work freely available outweighs the need of the private author to secure copyright, the problem can be dealt with by specific legislation, agency regulations, or contractual restrictions.
H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 59 (1976).

With the advent of the World Wide Web, the National Institutes of Health, which provides about $30 billion in research grants, decided the public and other researchers would benefit from having STM articles it was funding placed in the National Library of Medicine’s PubMed Central on line archive. Acting responsibly, a NIH adopted a voluntary deposit policy several years ago, but participation was extremely low because STM publishers were opposed to it and the authors were not well informed about it. So, in the 2008 Labor-HHS Appropriations bill, Congress directed NIH to adopt a mandatory deposit policy. The STM publishers lobbied very hard against the bill, both in Congress and in the Administration (e.g., trying to convince HHS to withdraw support of the policy). Congress rejected the opposition, and enacted the mandatory deposit policy.

Under the policy, the grantee must ensure that a copy of the author’s final manuscript is electronically submitted to the PubMed Central archive, and that no later than 12 months after publication, the NIH may make the full text of the manuscript publicly accessible in PMC. The policy went into effect in April of this year, and with no apparent difficulty in compliance. As noted above, NIH provides about $30 billion in research grants, which amounts on average to about $400,000 per grantee. STM publishers require the authors/grantees to transfer the copyright as a condition of publication. The publishers manage the peer review process, but the peer reviewers generally aren't paid -- they are members of the community who do the peer review for free. Public institutions pay the salaries of the researchers and the hard costs of the building, lab, materials, energy etc., a very large amount. Publishers thus get the content for free, generally get the peer review for free, and don’t pay a penny toward the costs of the research. Under the current NIH policy, they have a 12 month period of exclusivity for individual articles, and a 95 year term of protection for the journal which they may also load up with all the DRMs their little hearts desire. Since time is usually of the essence in STM publishing, and subscriptions are sold by the year for a journal and not by individual article, publishers are provided with ample opportunity to recoup their investment and make a profit.

The American Psychological Association is reported to have to gone off the deep end on the issue. As reported in The Open Access News Blog on July 15, 2008:

The American Psychological Association may have the worst publisher policy to date for NIH-funded authors. Excerpt:

In compliance with [the NIH OA policy], APA will deposit the final peer-reviewed manuscript of NIH-funded research to PMC upon acceptance for publication. The deposit fee of $2,500 per manuscript for 2008 will be billed to the author's university per NIH policy....

Even after collecting the fee, the APA will not deposit the published version of the article, will not allow OA release for 12 months, will not allow authors to deposit in PMC themselves (and bypass the fee), will not allow authors to deposit in any other OA repository, and will not allow authors to retain copyright.


As a commentator pointed out on that blog:

Since there is virtually no cost associated with the mechanics of deposit itself, and the NIH policy allows an embargo on public availability of articles of up to one year in order to protect the traditional subscription market, it is hard to see what this policy is intended to accomplish other than to force an additional income stream out of the faculty authors who already provide the APA with free content. And there is heavy irony in the APA’s assertion that they can do this “as the copyright holder.” ...

The NIH policy has been raised most recently by a bill reported out by the Subcommittee on Labor, Health and Human Services, Education, and Related Services passed out of a provision for Fiscal Year 2009 appropriations which would continue the NIH policy. STM publishers are claiming that the issue is one that arises under the copyright law, and are attempting to have the Judiciary Committee intervene on their behalf. The claim that the NIH policy raises copyright issues is absurd. First, the policy does not reach the journal at all; only individual articles. Publishers’ investment is thus left untouched entirely. Publishers did not invest a dime in the individual articles, and thus have no investment to complain about. They still have a 12 month window of exclusivity for the articles, which is quite long enough to ensure that their only investment – in the journal – is protected. As reviewed at the beginning of this posting, Congress could have chosen to deny all protection to STM articles funded in whole or in part by the government. It is surprising by taking a less extreme, balanced approach, Congress is now being attacked by those who contributed nothing financially to the creation of the works.

Infringement and the Foreign Sovereign Immunities Act

May a foreign government be sued in U.S. courts for infringement occurring in the United States? The answer, provided by the Foreign Sovereign Immunities Act, 28 U.S.C.A. §§ 1602 to 1611, is no. Section 1603 states: “Subject to existing international agreements to which the United States is a party at the time of enactment of this Act a foreign state shall be immune from the jurisdiction of the courts of the United States and of the States except as provided in sections 1605 to 1607 of this chapter.” Exceptions are provided in section 1605:

(a) A foreign state shall not be immune from the jurisdiction of courts of the United States or of the States in any case—
(1) in which the foreign state has waived its immunity either explicitly or by implication, notwithstanding any withdrawal of the waiver which the foreign state may purport to effect except in accordance with the terms of the waiver;
(2) in which the action is based upon a commercial activity carried on in the United States by the foreign state; or upon an act performed in the United States in connection with a commercial activity of the foreign state elsewhere; or upon an act outside the territory of the United States in connection with a commercial activity of the foreign state elsewhere and that act causes a direct effect in the United States.


Given the clear basic immunity, cases focus on the exceptions. One discussion of the exception is in Leutwyler v. Office of Her Majesty Queen Rania Al-Abdullah, Leutwyler v. Office of Her Majesty Queen Rania Al-Abdullah, 184 F. Supp. 2d 277 (S.D. N.Y. 2001), which involved a dispute between a photographer hired to take pictures of the Queen of Jordan. In reviewing the plaintiff's argument that the defendant's activities fit with the exceptions to FSIA immunity, Judge Lynch wrote:

[I]t is clear that Leutwyler has alleged that the Defendants engaged in at least two series of acts that were unmistakably commercial in nature. First, he argues that the Defendants entered into a contract for him to travel to Jordan to photograph the Royal Family and to grant Queen Rania a limited license to use the pictures for personal use and distribution to Middle Eastern print media. …

… If representatives of the Royal Family arranged for Leutwyler to photograph them, develop the prints, and assign to them rights over the resulting photos, that activity is indistinguishable from the garden-variety commercial transactions that families or business entities throughout the world enter into with photographers to obtain portraits for home or office display


… Second, Leutwyler argues that by allegedly furnishing photos taken by Leutwyler for use in the Jordan Diary, a publication that has been sold in the United States, the Individual Defendants facilitated a venture that was unmistakably commercial in nature. … Once again, while the purpose of publishing the diary may have been governmental (disseminating information about Jordan and encouraging tourism), the nature of the activity (publishing and selling books) is clearly commercial.

Leutwyler has therefore sustained his burden of demonstrating that the Individual Defendants engaged in certain “commercial activity,” as that term is defined in § 1603(e), that could give rise to subject matter jurisdiction under the FSIA.

Similarly, in Los Angeles News Service v. Conus Communications Co., Ltd., Los Angeles News Service v. Conus Communications Co., Ltd., 969 F. Supp. 579 (C.D. Cal. 1997), the court rejected a claim by the Canadian Broadcasting Corporation that its broadcast of the plaintiff's footage was not commercial within the meaning of the exemption.

The FSIA (not to be confused with the similarly acronymed FISA), was raised unsuccessfully again less than a week ago in Santilli v. Cardone, 2008 WL 2790242 (M.D.Fla. July 18, 2008)(No. 8:07-cv-308-T-23MSS). Here are the facts from the court’s opinion:


The pro se plaintiff sues the defendants Cornell University (“Cornell”), Instituto Nazionale Fisica Nucleare (“INFN”), and the Universita' Del L'Aquila (the “University of Aquila”). Cornell owns and operates arXiv, an Internet-based collection of physics manuscripts. The plaintiff alleges that after he attempted to post several of his manuscripts to arXiv's high energy physics section, the arXiv administrators relocated the manuscripts to the general physics section. Meanwhile, physicists Fabio Cardone (“Cardone”), Roberto Mignani (“Mignani”), and Alessio Marrani (“Marrani”) successfully posted their manuscripts to the high energy physics section. The plaintiff alleges that the physicists' papers “violate the most basic laws in physics,” plagiarize the plaintiff's works, and violate the plaintiff's copyrights. The plaintiff alleges that INFN provides financial support to Cardone, Mignani, and Marrani, and that the University of Aquila employs Cardone. Cornell, INFN, and the University of Aquila move to dismiss the plaintiff's claims in the third amended complaint, and the plaintiff responds in opposition.

The University of Aquila claimed immunity under the FSIA, arguing that it was an organ of the Italian government. As noted by the court:

The “organ of a foreign state” requirement commends consideration of (1) whether the foreign state created the agency for a national purpose, (2) whether the foreign state requires the hiring of public employees and pays their salaries, (3) whether the foreign state funds the agency, (4) whether the agency holds an exclusive right to some right in the state, and (5) whether state law treats the agency as dependent on the foreign state.

The University argued it was an organ of the States because it receives approximately seventy-five percent of its funding from the Italian government, because the Italian government oversees and controls the University's budget, and because the university “conducts research that serves a national purpose.” Not enough the court held. What was required was that:

(1) that the university's purpose of teaching and conducting research serves a national purpose, (2) that the Italian government actively supervises the university or requires it to hire public employees, (3) that the university holds exclusive rights, or (4) that Italian law treats the university as dependent upon the government.

In the end, this holding didn’t matter because the court found there was no personal jurisdiction and the copyright claim – for plagiarism, is not a legally supportable claim.

The Declaration on the Three-Step test

On April 2d, I did a post on the counter-reformation against amendments to copyright laws in the public interest. It is, apparently, not enough for some copyright holders that their rights have ballooned to unprecedented size and strength: they also have to fight back any efforts to ameliorate the harsh consequences on the public from the expansion of those rights. One political argument advanced in the push-back against the public is what I call the Neo-Blackstone movement: copyright is property, and property represents “that sole and despotic dominion which one man claims and exercises over the external things of the world, in total exclusion of the right of any other individual in the universe.” Blackstone’s ode here (in his Commentaries) to property was never descriptive, not even of then-contemporary English law; it was in fact merely a political wish. Professor Robert Gordon, in a study of the actual state of the law in Blackstone’s time, wrote:

What strikes the backward-looking observer
as curious is simply this: that in the midst of
such a lush flowering of absolute dominion talk
in theoretical and political discourse,
English legal doctrines should contain so
very few plausible instances of absolute
individual rights. Moreover, it is curious that
English and colonial social practices contained so
many property relations that seem to traduce the
ideal of absolute individual rights.
Robert Gordon, “Paradoxical Property,” reproduced in Early Modern Conceptions of Property 95, 97 (John Brewer and Susan Staves editors 2996, Rutledge).

And as much as Blackstone pushed the view of copyright as a natural property as a lawyer for the London publishers in the great “Battle of the Bookseller,” when he later became a judge, he did not adhere to the view of copyright as vesting its owner with the sole and despostic dominion he earlier advanced in his Commentaries. Wonderful evidence of this is provided in a report of the 1774 decision in Hawkesworth v. Newbery, which held that abridgments (we would call them condensations today), might not violate copyright owners’ rights:

The Lord Chancellor was of opinion that this abridgement of the work was not any violation of the author's property whereon to ground an injunction.

That to constitute a true and proper abridgement of a work the whole must be preserved in its sense: And then the act of abridgement is an act of understanding, employed in a carrying a large work into a smaller corpus, and rendering it less expensive, and more convenient both to the time and use of the reader. Which made an abridgement in the nature of a new and meritorious work.

That this had been done by Mr. Newbery, whose edition might be read in a fourth of the time, and all the substance preserved, and conveyed in language as good or better than the original, and in a more agreeable and useful manner. That [the Lord Chancellor] had consulted Mr. Justice Blackstone whose knowledge and skill in the profession was universally known, and who as an author had done honour to his country.

That they had spent some hours together, and were agreed that an abridgement, where the understanding is employed in retrenching unnecessary and uninteresting circumstances, which rather deaden the narration, is not an act of plagiarism upon the original work, nor against any property of the author in it, but an allowable and meritorious work. And that this abridgement of Mr. Newberry's falls within these reasons and descriptions.

Judgment for defendant abridger. Fair abridgments were permitted in the United States until passage of the 1909 Act. So much for the sole and despostic view. But one even sees expressions of the view that the natural state of affairs in copyright is sole and despotic dominion in how to interpret the Berne Convention's three-step test. Professor Sam Ricketson, the god of Berne Convention scholars and an all around great guy, wrote in a 2003 study of rights and limitations in the Berne Convention statements that limitations and exceptions will be allowed if “there is a public interest … that justifies overriding the private rights of authors in their works in … particular circumstances.” Sam Ricketson, WIPO Study on Limitations and Exceptions of Copyright Related Rights in the Digital Environment 4, Standing Committee on Copyright and Related Rights, Ninth Session, Geneva, June 23 to June 27, 2003, SCCR/9/7 (April 5, 2003).

I don’t accept the private -- public dichotomy advanced here: there is, after all, no such thing as copyright rights privately created and privately enforced. Copyright is created by governments for public reasons and is enforced by public laws and public judges. Copyright laws are created as an entire fabric consisting of certain entitlements given to copyright owners, and certain entitlements given to the public. There is no basis to regard any one entitlement as more privileged or important than another. That leads me to an exciting new declaration on the three-step test recently issued by three very prominent European scholars: Reto. M. Hilty, who is the Director of the Max Planck Institute for Intellectual Property, Competition and Tax Law, Munich, and a Professor at the Universities of Zurich and Munich, Germany; Christophe Geiger, a Researcher, at Max Planck Institute and Associate Professor and Director, Centre for International Industrial Property Studies (CEIPI), University of Strasbourg, France; and Jonathan Griffiths, Senior Lecturer, School of Law, Queen Mary, University of London.

The declaration is available here, at the Max Planck website, and is entitled “A Balanced Interpretation of the ‘Three-Step Test’ in Copyright Law. The word balanced is accurate for all but the most partisan of combatants in the Copyright Wars. The declaration states, for example: “Copyright law aims to benefit the public interest. It produces important incentives for the creation and dissemination of new works of authorship to the general public. These works serve to satisfy common needs; either in their own right or as a basis for the creation of further works.” The declaration also does not interpret the three-step test as a free for all, noting: “The Three-Step Test has already established an effective means of preventing the excessive application of limitations and exceptions.” No bomb throwers in this group. The declaration adds, though: “The public interest is not well served if copyright law neglects the more general interests of individuals and groups in society when establishing incentives for rightholders.”

This balanced view is continued in how to interpret the three-step test. The dominant way of interpreting it – advanced by copyright owners and natural rights copyright lawyers – is as an obstacle course: national governments interested in amendments to serve the public interest have to surmount all three steps, and the burden is really heavy at each step. In place of this absurd approach, the declaration states in reaction to a finding that “in applying the Three-Step Test, national courts and legislatures have been wrongly influenced by restrictive interpretations of that Test”:

1. The Three-Step test constitutes an indivisible entirety. The three steps are to be considered together and as a whole in a comprehensive overall assessment.
2. The Three-Step Test does not require limitations and exceptions to be interpreted narrowly. They are to be interpreted according to their objectives and purposes.
3. The Three-Step Test’s restrictions of limitations and exceptions to exclusive rights to certain special cases does not prevent legislatures from introducing open ended limitations and exceptions, so long as the scope of such limitations and exceptions is reasonably foreseeable …

The last statement refers of course to fair use and should be a helpful rebuke to the whispering campaign being conducted in certain national capitals against the adoption of more liberal fair dealing laws. I regard the declaration as a watershed event: a statement by the crème de la crème of European scholarship that the counter-reformation is exactly that.

The EU Railroads Term Extension

I have avoided commenting on the EU's proposed 45 year extension for sound recordings because the effort is so clearly wrong, so clearly another example of politicians ignoring the public interest in favor of hobnobbing with (in this case aged) stars that there is nothing constructive to say. Term extension will benefit a very few a great deal, and most not at all. The public will suffer as it always has done, but because the suffering is suffered in small amounts and diffusely, politicians are spared confronting directly the ugly consequences of their failure to act in the public interest. But yesterday, a succinct letter on the topic was published in the (UK) Times online by a number of European scholars that I thought all worth reprinting. For those in the U.S., it should be noted that in Europe academics play a significant role in governmental policy and are not as politically polarized as in the States. Here it is:



From The Times
July 21, 2008

Copyright extension is the enemy of innovation
The proposed Term Extension Directive will alienate a younger generation that fails to see a principled basis

Sir, Europe’s recorded music was about to experience a wave of innovation. For the first time, a major set of culturally important artefacts was to enter the public domain: the sound recordings of the 1950s and 1960s. Apparently not so. If the European Commission has its way, re-releases and reworkings of recorded sounds will remain at the mercy of right owners for another 45 years (report, July 17). Why?

The record industry succeeded to supply the Commission with evidence that was not opened to public scrutiny: evidence that claims that consumer prices will not rise, that performing artists will earn more, and that the record industry will invest in discovering new talents, as if exclusive rights for 50 years had not provided an opportunity to earn returns.

The Commission’s explanatory memorandum states: “There was no need for external expertise.” Yet, independent external expertise exists. Unanimously, the European centres for intellectual property research have opposed the proposal. The empirical evidence has been summarised succinctly in at least three studies: the Cambridge Study for the UK Gowers Review of 2006; a study conducted by the Amsterdam Institute for Information Law for the Commission itself (2006); and the Bournemouth University statement signed by 50 leading academics in June 2008.

The simple truth is that copyright extension benefits most those who already hold rights. It benefits incumbent holders of major back-catalogues, be they record companies, ageing rock stars or, increasingly, artists’ estates. It does nothing for innovation and creativity. The proposed Term Extension Directive undermines the credibility of the copyright system. It will further alienate a younger generation that, justifiably, fails to see a principled basis.

Many of us sympathise with the financial difficulties that aspiring performers face. However, measures to benefit performers would look rather different. They would target unreasonably exploitative contracts during the existing term, and evaluate remuneration during the performer’s lifetime, not 95 years.

We call on politicians of all parties to examine the case presented to them by right holders in the light of independent evidence.

Professor Lionel Bently, Director, Centre for Intellectual Property and Information Law, University of Cambridge

Professor Pierre-Jean Benghozi, Chair in Innovation and Regulation in Digital Services; Director, Research in Economics and Management, Ecole polytechnique, CNRS 1, Paris

Professor Michael Blakeney, Co-Director, Queen Mary Intellectual Property Research Institute, University of London

Professor Nicholas Cook, Director, AHRC Research Centre for the History and Analysis of Recorded Music, Royal Holloway, University of London

Professor Dr. Thomas Dreier, Director, Centre for Information Law, Universität Karlsruhe, Karlsruhe Institute of Technology

Professor Dr Josef Drexl, Director, Max-Planck-Institute for Intellectual Property, Munich

Dr Christophe Geiger, Associate Professor and Director elect, Centre for International Industrial Property Studies (CEIPI), University of Strasbourg

Professor Johanna Gibson, Co-Director, Queen Mary Intellectual Property Research Centre, University of London

Professor Dr Reto Hilty, Director, Max-Planck-Institute for Intellectual Property, Munich

Professor Dr Thomas Hoeren, Director, Institute for Information, Telecommunications- and Media Law, Münster University

Professor Bernt Hugenholtz, Director, Institute for Information Law, University of Amsterdam

Professor John Kay, Chair, British Academy Copyright Review

Professor Martin Kretschmer, Director, Centre for Intellectual Property Policy & Management, Bournemouth University

Professor Dr Annette Kur, Max-Planck-Institute for Intellectual Property, Munich

- Show quoted text -

Professor Hector MacQueen, Co-Director, SCRIPT/AHRC Centre Intellectual Property & Technology Law, University of Edinburgh

Professor Ruth Towse, Professor of the Economics of Creative Industries, Erasmus University Rotterdam and Bournemouth University

Professor Charlotte Waelde, Co-Director, SCRIPT/AHRC Centre Intellectual Property & Technology Law, University of Edinburgh

The Facebook Suit

The lawsuit filed by Facebook in California against the German site StudiVZ (and StudiVZ’s declaratory judgment action against Facebook in a German court) has been all over the newspapers and blogosphere. StudiVZ s an abbreviation of Studentenverzeichnis or Studienverzeichnis, which means students' directory. Studivz claims the suit is motivated by what I calls the failure of Facebook’s German language version: "Their strategy appears to be: 'If you can't beat them, sue them,'" said Marcus Riecke, chief executive of Studivz, which is owned by Verlagsgruppe Georg von Holtzbrinck, a German publishing company. The site has about 10 million members, mostly in Germany, Switzerland and Austria, although my German au pair uses it here in Connecticut. (I do wonder about the jurisdictional issue). A side by side of the two is available, here.

I haven’t seen Facebook’s complaint and so don’t know if it is a copyright infringement suit (as is usually claimed), a trademark suit, or both. Some of the language in press releases sounds like trademark, e.g., “As with any counterfeit product, StudiVZ’s uncontrolled quality standards for service, features and privacy negatively impact the genuine article,” Facebook is said to have stated in the complaint. Facebook is also said to have sued over the “copying the look, feel, features and services of Facebook.” Look and feel may state a copyright claim, but services don't. Even before the suit, blogs have been very loose about what they consider to be a “clone.” On July 11th, Mashable ran a post called “Copycats: Top 10 International Facebook Clones." There are services that market themselves as offering clone templates and functionalities for popular sites, but as the software industry discovered decades ago, "look and feel" charges are more easily made than won.

Preemption and Mutant Copyright

In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 31 (2003), Justice Scalia phrased the question to be decided this way:

[A]s it comes to us, the gravamen of respondents' claim is that, in marketing and selling [defendant’s TV series] as its own product without acknowledging its nearly wholesale reliance on the [plantiff’s] television series, Dastar has made a “false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion ... as to the origin ... of his or her goods.” § 43(a). See, e.g., Brief for Respondents 8, 11. That claim would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own. Dastar's alleged wrongdoing, however, is vastly different: It took a creative work in the public domain-the Crusade television series-copied it, made modifications (arguably minor), and produced its very own series of videotapes. If “origin” refers only to the manufacturer or producer of the physical “goods” that are made available to the public (in this case the videotapes), Dastar was the origin. If, however, “origin” includes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was the origin of Dastar's product. At bottom, we must decide what § 43(a)(1)(A) of the Lanham Act means by the “origin” of “goods.”

He then answered the question as follows:

Assuming for the sake of argument that Dastar's representation of itself as the “Producer” of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public's “federal right to ‘copy and to use’ ” expired copyrights, Bonito Boats, supra, at 165, 109 S.Ct. 971. When Congress has wished to create such an addition to the law of copyright, it has done so with much more specificity than the Lanham Act's ambiguous use of “origin.”

Subsequent courts have not limited Dastar to works that are in the public domain, which is why it is a surprise to read the recent opinion in LBB Corp. v. Lucas Distribution, Inc., 2008 WL 2743751 (S.D.N.Y July 14, 2008) No. 08 Civ. 4320(SAS). The facts are a bit spare, perhaps because of the court’s sensitivity to the pornographic of the films. As related by the court:

Plaintiff LBB Corporation is a California corporation that produces and distributes pornographic films that are marketed toward niche audiences. Pursuant to a contract dated November 6, 2007, LBB purchased all rights to a film entitled Nasty Piss Boys (the “Work”), a film produced in the Czech Republic by Galaxia Studio. Defendants are marketing a film entitled Raw Twinks in Czech, an identical or substantially similar film that features the same performers in the same sequence.FN3

FN3. See Compl. ¶¶ 23, 36. A cursory examination of the DVD cases indicates that at least one of the photographs on defendants' case is identical to a photograph on the case of the Work.

Claims were brought under the Copyright Act and a New York State consumer protection law. Section 349 of the General Business Law. The opinion only concerns the state law claim. Defendant moved to dismiss the claim under FRCP 12(b)(6) for failure to state a claim, arguing inadequacy under state law. The court granted the motion on that ground, but rejected defendant’s preemption argument. That seems error to me. In finding that the requirement of intentional deception saved the claim from preemption, the court merely cited to a pre-Dastar opinion in the Second Circuit, and then added: “The only harm alleged in the Complaint is actual confusion amongst consumers whereby the public is deceived and confused into believing that the Defendants' film is produced, provided, endorsed or authorized by Plaintiff.”

But the actual claim seems to be based on what Dastar rejected, a claim based on the content of the film, not confusion as to its origin.

EU Press Release on Term Extension

Here is a link to the EU's Press Release today proposing the extension of term for sound recordings from 50 to 95 years. As the Press Release notes, there is an additional proposal to deal with the problem of term for co-authorship for musical compositions. The proposal is the same as that found in U.S. law:

In the case of a joint work prepared by two or more authors who did not work for hire, the copyright endures for a term consisting of the life of the last surviving author and 70 years after such last surviving author's death.

Here's a teaser though: what is the term for a co-written work where one author is an individual and the other author has created the work as a work for hire?

The Strange Copyright World of Warcraft

The trial court has handed down its summary judgment opinion in MDY Industries, LLC v. Blizzard Entertainment, Inc., involving the multiplayer online role-playing game "World of Warcraft" and a bot program known as WowGlider, created by declaratory judgment plaintiff. WowGlider plays WoW while the player is away from his or her computer, thereby permitting the player to advance more quickly than he or she otherwise could. WoW's owners didn't like this, claiming it violated terms of use and the end user license. Blizzard found out about the activity through its "Warden" spyware program, discussed here in Wikipedia, and in the opinion at pages 17-20. Blizzard took a page out of the Godfather by sending representatives to MDY owner Michael Donnnelly's home and telling him they would file suit the next day against MDY and Donnelly unless he agreed to stop selling the program. About 100,000 copies of the program have been sold, as compared to the 10 million active players of WoW. Not intimidated, Donnelly filed a declaratory judgment action later that day. Blizzard filed a counterclaim, charging contributory infringement and vicarious liability.

The court held for Blizzard on the copyright claims (No. CV-06-2555-PHX-DGC (David Campbell, Judge, July 14, 2008)), available here. On the DMCA claims, the court granted MDY's motion that the Warden spyware did not qualify as controlling access within the meaning of 17 USC 1201(a)(2), but denied summary judgment on Blizzard's 1201(b)(1) claim that the spyware was a technological protection measure: MDY argued that the code from the game client software was not written to RAM after the user makes it through the spyware scan; the court found there was a factual dispute "with respect to the extent to which Blizzard's protective software protects the copying of software code to RAM ... ."

The court's holding on the copyright claims compares very unfavorably to its handling of the DMCA claims, permitting a chilling extension of control by copyright owners of software over copies of programs they have sold. The critical point is that WoWGilder did not contributorily or vicariously lead to violating any rights granted under the Copyright Act. Unlike speed-up kits, there was no creation of an unauthorized derivative work, nor was a copy made even under the Ninth Circuit's misinterpretation of RAM copying in the MAI v. Peak case. How one might ask can there be a violation of the Copyright Act if no rights granted under the Act have been violated? Good question.

To get to its result, the court had to first find that WoW, even though sold over the counter, was licensed not sold. In so finding, the court declined to follow the recent Vernor opinion in the Western District of Washington, believing it had to follow other Ninth Circuit precedent. I agree with the Vernor court that the other precedent (MAI, Triad, Wall Data) do not hold that over the counter software is licensed, not sold. (WoW may be purchased online too, but I don't think this changes the analysis.). Having found there was license not a sale, there still had to be a breach of the license in order to permit an infringement action to lie, and recall here that the claim is not one for direct infringement, but rather secondary liability; there was no privity between the parties. There was in fact no provision in the license that barred use of WoWGlider. The court took the extraordinary step of stitching together two unrelated provisions to create one. You have to read it to believe it, but it took the court 8 pages to go through this hard work, and why? Was the court offended by what it regarded to be cheating? If so, God help us if law is being reduced to such subjective, non-statutory grounds.

Lassie Rescued Again

The Ninth Circuit has saved the copyright in Lassie for its authors' heirs, rejecting a patently frivolous claim by Classic Media, Inc. that a woefully inadequate transfer defeated the heirs' termination rights. The opinion in Classic Media, Inc. v. Winifred Mewborn, available here.

The case is pretty straightforward and involves transfers made by the wife (later deceased) and daughters of Eric Knight, who wrote the 1938 novel "Lassie Come Home." Mr. Knight had made an original transfer, and then died in 1943 before the renewal term, bequeathing his rights to his family. Under the Fred Fisher and Rear Window cases, his heirs obtained all rights free and clear of the transfer of renewal rights when they register the renewal claims. Plaintiff's predecessor in interest had an agreement with Mrs. Knight to use the novel in the later television series, but did not have an agreement with the three daughters. In 1976, before the 1976 Act became effective on January 1, 1978, the daughters made transfers for pitiful sums. Termination rights were thus governed by Section 304(c), not Section 203.

A critical difference between the section 203 and section 304(c) termination rights is the limitation of the section 203 termination right to transfers made by the author(s), 203(a)(1), a limitation not found in Section 304(c). See Section 304(c)(1): “(1) In the case of a grant executed by a person or persons other than the author … .” The reason for limiting the section 203 termination right to the author was explained as follows in the Register of Copyrights' 1965 report:

[A]s a direct result of the present renewal provisions, a large number of binding transfers and licenses covering renewal rights have been executed by the author's widow, children, and other statutory beneficiaries, as well as the author himself. We believe that, for example, where the author's widow was the proper renewal claimant but had previously executed a transfer of her renewal rights, she should be able to gain the extended term after the present 28-year renewal period is over.
Supplementary Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill 96 (Comm. Print 1965).

Section 304(c)(1) was thus intended for exactly the situation that arose with Lassie. Both Sections bar any effort to contractually give up termination rights. The relevant language in Section 304(c)(5) states that termination "may be effected notwithstanding any agreement to the contrary," so it mattered not at all what the language of the 1976 transfers was. They were pre-1978 transfers, and thus were terminable at will if done in a timely fashion, as they were.

The district court got matters completely fouled up, but the Ninth Circuit straightened them out, also delivering repeated criticisms of Classic's lawyer for what it seems to have perceived as an effort to intimidate an elderly woman. See. e.g., page 8533 where counsel accused Mr. Knight's daughter of extortion, and threatened to hold her and her counsel personally responsible for "enormous and irreparable damages." I don't know the precise procedural posture of the case at this point because of the reversal (there was a Lanham Act claim too), but I hope that Mr. Knights' daughter is able to receive her full attorney's fees and costs for a case that should never have been brought (and it was brought by Classic as a declaratory relief action).

Eleventh Circuit: Fair Use, Laches, and Kitchen Sink

The Eleventh Circuit has been on a copyright tear in the last two weeks. In addition to the en banc opinion in the Greenberg - National Geographic Society case, there was a highly technical opinion on the Satellite Home Viewer Act and the Section 119 compulsory license, as well as today's opinion: Peter Letterese & Associates, Inc. v. World Institute of Scientology Enterprises, a 69 page opinion by Judge Tjoflat. The opinion is so vast that he has a introductory section explaining its organization.

So what, you might ask, caused so many trees to be felled and ink to be spilled? There are almost 10 pages of facts, for one thing. I will boil the facts down to this: there was a guy (Leslie Achilles "Les" Dane) who developed a sales book on closing techniques. L. Ron Hubbard liked it, bought some copies, and began teaching its techniques. For many years, Dane and the Scientologists had a good working relationship; Dane went to many Scientology offices and gave seminars. Dane died and a different company, run by a booted-out Scientologist (Peter Letterese), bought Dane's copyrights and sued the Scientologists.

The first issue to be discussed was whether a derivative work was created. Here the facts are unclear to me, but in one part of the opinion it is stated that the Scientologists "did not make copies of the book itself; students would either borrow or purchase the book for their study." The Scientologists did, though, produce their own course book, and may have appended some of Dane's material to it without copying that material. This seems to be what led the Eleventh Circuit to trash-talk the Ninth Circuit's Mirage Editions v. Albuquerque A.R.T. Co., 856 F.3d 1341 (9th Cir. 1988) opinion, which held that remounting an original copy was an infringing work. No way according to the Eleventh, siding with Judge Easterbrook's opinion in Lee v. A.R.T. Co., 125 F.3d 582 (77th Cir. 1997).

There are then 15 pages on whether the two course books were substantially similar. I can sum that up in one word, "no." Next up was fair use, 28 pages. There are a few interesting passages in that discussion. The first is the court of appeals' rejection of the district court's "fifth factor," which it called "the copyright owner's actual consent to the use of the copyrighted material." This factor was held by the court of appeals to be "incorrect, both in terms of logic and precedent." If someone has consented, then one need not rely on fair use, which is a privileged, unconsented to use. The rest of the fair use opinion is straightforward enough, but there is a discussion of out of print books worthy of reading. The court held that the fact that a book is out of print will tend to favor fair use (p. 46-47). But in this case, the plaintiff withheld the book in order to make a decision about when and how to re-release it; hence the book was not out-of-print in the usual sense, i.e., no immediate plans to republish it.

The final part of the opinion deals with whether laches is available for causes of action brought within the statute of limitations period. I have blogged about this before, and my view, siding with the Fourth Circuit's Lyons opinion, is no, it is not. The Eleventh Circuit couldn't bring itself to say "no, never," but did say a: "presumptive 'no;' there is a strong presumption that a plaintiff's suit is timely if it is filed before the statute of limitations has run. Only in the most extraordinary circumstances will laches recognize a defense." The court added,: "Even where such extraordinary circumstances exist, however, laches serves as a bar only to the recovery of retrospective damages, not to prospective relief."