Friday, July 11, 2008

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."

6 comments:

Bruce Boyden said...

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."

I would have thought that laches would also matter -- in fact, matter primarily, in your ordinary case -- to the availability of equitable relief, i.e. an injunction.

Anonymous said...

Copyright, though, is not ordinary in respect of a continued use of the work as an infringement; to which laches could not apply because the infringements, in terms of timeliness, are refreshed with each sale, distribution, manufacturing, display, performance, transmission and so forth.

lqp said...

Looks like a fascial attack on fair use as such.

William Patry said...

I admit lqp, I have no idea what you are talking about.

Scott said...

One comment you made piqued my interest, William. You noted that "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."

How is the distinction made between a book which is "out of print"--in other words, whoever it is who controls publication rights has decided to permanently (or at least indefinitely) discontinue making it available, and one which the publisher or author is only temporarily withholding? Given that being out of print makes a potentially-infringing use or a work more likely to be fair use; it is often to the publisher's advantage to take the posture that nothing they have published is truly out of print--it's just, as the folks at Disney like to say when they cease making a DVD available for a while, "in the vault"--that the publisher reserves the right to resume publication at any time, and may do so without notice. Indeed, many publishers find it useful to restrict the availability of a work in the marketplace--by geography or time-- for reasons both good and bad: in order to further drive up prices, increase the cachet or the work (cf "limited editions"), better utilize limited production resources, or at least make demand more predictable.

The existence (or lack) of a publication or release plan for a work may indicate that it is or is not out of print; but may such plans may be trade secrets of the publisher--only available through discovery--and often don't represent any sort of commitment to the marketplace.

William Patry said...

Hi Scott, you raise very important questions. I think the court on this case adopted a pretty searching look at the issue, and helpfully eschewed labels in favor of actual practices, and in the end I think that is the best way: forget about the label out of print in favor of the publisher or copyright owner's past and reasonably future plans