Friday, February 29, 2008

The Death of Divisibility

Karaoke cases continue to flood the courts of appeals, much like plonk (in the sense of bad wine, not in the sense of female police officers or of adding posters to one’s kill file in UseNet-speak; see here). The most recent addition to the back shelves of copyright case law is Sybersound Records, Inc.. v. UAV Corp., 2008 WL 509245 (9th Cir. February 27, 2008)(Docket No. 06-55221), but it deals not with warbling by amateurs, but instead amateur hour in statutory interpretation of one of the fundamental principles of ownership under the 1976 Act, divisibility.

Divisibility was intended to encourage the easy licensing and assignment of rights in copyright works, by permitting less than the whole of the work to be conveyed. Where there are multiple authors, Congress intended that one co-owner could offer non-exclusive licenses in the whole, but could not offer an exclusive license/assignment/conveyance in the whole without all co-owners' permission, since a sale of all interests in the work would take place: as Chief Joseph of the Nez Perce Indians once said: "Suppose a white man should come to me and say, Joseph, I like your horses. I want to buy them. I say to him, No, my horses suit me; I will not sell them. Then he goes to my neighbor and says, Pay me money, and I will sell you Joseph’s horses. The white man returns to me and says, Joseph, I have bought your horses and you must let me have them. If we sold our lands to the government, this is the way they bought them. "

At the same time, Congress permitted one co-owner to convey his or her proportional share in the whole, regardless of whether that conveyance was called an assignment or a license. This follows from the plain language of the statute and from the lack of any process for resolving disputes among co-owners: what if one co-owner wants to sell his or her interest, but the other doesn't want him or her to? Are co-owners stuck together in a marriage that isn't working? Long after non-fault divorces became common, Congress provided for them through divisibility. all was fine for a long time, until a spate of bad decisions. Sybersound is the most recent.

The parties are competitors in the production and sale of karaoke records. There was a Lanham Act and a RICO claim, but since my knowledge base is sadly limited to copyright, that’s what I will focus on. Plaintiff obtained its rights from TVT Music Publishing, and it is the nature of the rights obtained that sparked the dispute. Here is the court’s description:

Sybersound also claims that UAV, Madacy, Audio Stream, Top Tunes, and BCI are infringing Sybersound's copyrights in several songs by producing karaoke records of these songs without obtaining a license from Sybersound or its copyright assignor, TVT Music Publishing (TVT). Sybersound claims to have acquired an ownership interest in these songs by entering into a written agreement with TVT, an original co-claimant to the copyright of these songs. This written agreement allegedly made Sybersound an “exclusive assignee and licensee of TVT's copyrighted interests for purposes of karaoke use, and also the exclusive assignee of the right to sue to enforce the assigned copyright interest.” According to Sybersound, the copyright holders of these songs had an understanding that each could license only his or her respective shares and that a duly authorized karaoke recording would require a written license from each.

Sybersound bases its copyright infringement claim on the following reasoning: TVT is an original co-claimant or joint copyright holder (co-owner) in nine songs. Such co-owners are like tenants in common, each owning a share of the undivided whole. … Sybersound contends that it stepped into TVT's shoes and became a co-owner in the karaoke-use interest of the copyright when it became the “exclusive assignee and licensee of TVT Music Publishing's copyrighted interests for purposes of karaoke use, and also exclusive assignee of the right to sue to enforce the assigned copyright interests, for both present and past infringements in karaoke exploitation” pursuant to an assignment agreement with TVT. Citing 17 U.S.C. § 201(d)(1), Sybersound asserts standing to sue, as a co-owner, for copyright infringement against the Corporation Defendants that use any of the nine referenced copyrighted songs for karaoke purposes without having obtained a license from Sybersound or TVT

The court of appeals was having none of this, evidencing once again its failure to grasp an essential element of the 1976 Act, divisibility:

Sybersound's analysis is flawed because, as a co-owner of the copyright, TVT could not grant an exclusive right in the karaoke-use interest of the nine referenced copyrights.

If TVT were the sole copyright owner of the nine referenced songs and had transferred an exclusive karaoke-use interest to Sybersound (assuming such a divisible interest exists), Sybersound would have had standing as the exclusive licensee to sue the Corporation Defendants for infringement. However, even if a karaoke-use is a properly divisible interest in a copyright, TVT is not the exclusive owner of the karaoke-use interest in the copyright. In its Request for Judicial Notice filed concurrently with its motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), Madacy attached copies of copyright registration records from the United States Copyright Office showing that EMI Music Publishing, Ltd., Beyonce Publishing, Scott Storch Music, Careers-BMG Music Publishing, Inc., Xtina Music, Logrhythm Music, and others, are all co-owners of the copyrights in one or more of the nine assigned songs. Thus, unless all the other co-owners of the copyright joined in granting an exclusive right to Sybersound, TVT, acting solely as a co-owner of the copyright, could grant only a nonexclusive license to Sybersound because TVT may not limit the other co-owners' independent rights to exploit the copyright. … Sybersound does not allege that it has received the consent of the other co-owners to become the exclusive licensee for the karaoke-use interest.

Sybersound assumes that because its assignment agreement with TVT says that TVT is transferring all its karaoke-use interests in the copyrights to Sybersound, and says that Sybersound became exclusive assignee of TVT's copyrighted interest in karaoke use and of TVT's right to sue, Sybersound became a co-owner upon execution of the agreement. Sybersound is mistaken. Although the 1976 Copyright Act permits exclusive rights to be chopped up and owned separately, to be effective, the assignment or other type of alienation permitted by 17 U.S.C. §§ 101 and 201(d)(2) must be exclusive. Since TVT's assignment was admittedly non-exclusive, TVT succeeded only in transferring what it could under 17 U.S.C. § 201(d), a non-exclusive license, which gives Sybersound no standing to sue for copyright infringement.

We hold that because Sybersound is neither an exclusive licensee nor a co-owner in the nine copyrights, it lacks standing to bring the copyright infringement claims alleged in the FAC, and, thus, its copyright infringement claims fail.

The Sybersound court, like Gardner v. Nike, and the Second Circuit’s Davis v. Blige, have made co-owners agunot, to each other until a Get, is obtained or a Bet Din, steps in and settles the matter. This isn’t what Congress intended: it intended that co-owners be able to grant non-exclusive licenses without the others’ permission and that they be able to transfer their proportional share in the whole without the others’ permission, in which case the transferee would indeed stand in the shoes of the transferor. It is truly remarkable that such simple, but commercially important points have been destroyed. Our only hope lies with Congress.

Thursday, February 28, 2008

Will Tasini Get Birched?

Last June, I had a post about the Eleventh Circuit vacating its pre-Tasini panel opinion in the Greenberg v. National Geographic case, 244 F.3d 1267 (11th Cir. 2001), vacated, 488 F.3d 1331 (11th Cir. 2007), vacated and pet. for reh’g en banc granted, 497 F.3d 1213 (11th Cir. 2007).

Both Tasini and Greenberg involved interpretation of 17 USC 201(c):

(c) Contributions to Collective Works. — Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

If bad facts make bad law, persistently held erroneous views of the law make even worse cases. The Greenberg case illustrates this principle all too well. In Greenberg, district judge Joan Lenard rightly granted summary judgment to defendants National Geographic Society (NGS) and Mindscape, Inc., for the digitization and distribution of back issues of the NGS’ magazine on CD-ROM. Judge Lenard correctly held that Section 201(c) covered the use. (An introductory montage is not covered by that section but is argued to be fair use). A panel of the Eleventh Circuit, per Judge Stanley Birch, reversed.

Among the most important errors made in Judge Birch’s original panel decision are these two: (1) errors in the describing NGS’s copyright registrations ; (2) erroneously holding that by putting past issues of its magazine on CD-ROM, NGS had created a new collective work merely because buried within the CD-ROM, invisible to the user, was a computer program, created by defendant Mindscape, that permitted the search and retrieval of particular subjects. Judge Birch acknowledged that “Every cover, article, advertisement, and photograph appears as it did in the original paper copy of the magazine; ” [w[hat the user … sees on his computer screen … is a reproduction of each page of the Magazine that differs from the original only in the size and resolution of the text.” That should have been the end of the matter, and an affirmance of Judge Lenard.

Judge Birch also acknowledged that “both the digital reproductions and the microfilm/microfiche reproductions require a mechanical device for viewing them,” but added, “the critical difference, from a copyright perspective, is that the computer, as opposed to the machines used for viewing microfilm and microfiche, requires the interaction of a computer program in order to accomplish the useful reproduction involved with the new medium. These computer programs are themselves the subject matter of copyright, and may constitute original works of authorship, and thus present an additional dimension in the copyright analysis.” Although Judge Birch added that because there were other aspects to the court’s ruling, such as an introductory montage, “we need not decide in this case whether the addition of only the Program would result in the creation of a new collective work,” in reality, the only basis for the panel’s holding on the principal issue – exact reproduction of the NGS issues -- was the use of the computer program.

One can scour in vain the statutory language, the legislative history, cases under the 1909 and 1976 Acts, and the Supreme Court’s Tasini opinion for the slightest indication that use of a computer program, copyrighted or not, in conjunction with an exact replica of the original collective work has any bear on the analysis under Section 201(c), nor did Judge Birch cite any authority for the proposition. Neither did he explain what the “additional dimension” is for the copyright analysis: merely stating there is such a dimension establishes its existence much less relevance. Finally, there is no explanation for why the unseen use of a computer program whose only function is to permit one to search and retrieve a digital version of the intact, original collective work results in a “new collective work”: the old NGS collective work was unchanged.

It is important to point out that Section 201(c) does not refer to a “new collective work;” and neither do the legislative reports, which referred instead to “an entirely different magazine or other collective work.” It is semantic and legal legerdemain to characterize a digital version that exactly reproduces the paper version of the original collective work as a “new collective work,” “an entirely different magazine,” or as another collective. It is, instead, the same collective work, not even a revision of that collective work. The fact that a different work, a computer program, is used functionally to permit consumers to search and access the original collective work in the exact form and context could not be more irrelevant for Section 201(c) purposes.

A holding that use of an underlying, unseen computer program disentitles a publisher of the Section 201(c) privilege makes a mockery of Tasini’s holding that Section 201(c) is media-neutral. Digital accessing of works can only be achieved through use of computer programs. All CD-ROMs utilize computer programs, as do search engines (which are computer programs after all). A Luddite construction of Section 201(c) barring use of computer programs would consign the world to using microfilm and microfiche, in the process not only impeding the present surge in electronic preservation in favor of requiring libraries to maintain hard copies and microform/microfiche, but also impeding the democratic access to and dissemination of information to those who do nor live near depository libraries, to who cannot go to those libraries even if they do because they have to work for a living and cannot arrange to go during library hours, to say nothing of the exponentially larger amount of information available and searchable. Judge Birch’s approach places itself diametrically in the strongest opposition to the Constitutional goal of Promoting the Progress of Science.

A panel of the Eleventh Circuit panel vacated Judge Birch’s opinion on June 31, 2007 and as noted in the prior post, was correct in all respects. But that opinion itself was vacated en banc. The court en banc heard argument two days ago, February 26th. I didn’t attend the argument, and so have to rely on those who did, including newspaper reports. The sense I get from my sources is that the vote may be close. Here are excerpts of a truly outstanding article by R. Robin McDonald from the Daily Report in Georgia (link to the full article here):

Kenneth W. Starr, former independent counsel during the Whitewater Investigation, had been addressing the 11th U.S. Circuit Court of Appeals en banc for less than a minute Tuesday morning when Judge Stanley F. Birch Jr. interrupted.

"Mr. Starr, we're familiar with the facts. Let's get to the heart of things," he chided.

… Birch -- the 11th Circuit's resident copyright expert -- repeatedly challenged Starr as National Geographic's executive vice president, Terrence B. Adamson, watched from the packed gallery with former U.S. Attorney General Griffin B. Bell. Adamson clerked for Bell when the latter was a federal appellate judge.

… Starr argued that the U.S. Supreme Court's Tasini opinion expanded the definition of a revision to denote "a new version." The CD-ROM archive, he argued, was a new digital version that faithfully reproduced the published magazines and was "the modern version of microform."

As a digital replica, he said it did not infringe the copyrights of the contributors whose photographs had been previously published.

But Birch noted pointedly that the National Geographic had secured a new copyright for the CD-ROM library, called "The Complete National Geographic" -- an indication that the National Geographic Society considered it to be a new work, not a reprint.

Starr responded, "It's a new copyrightable element, which is what makes this a revision."

… Starr asserted Tuesday that if previously published works are faithfully reproduced -- much as they appear on microform -- then Tasini does not find a copyright has been infringed.

"If Tasini does not approve of microform," Starr said, "I am misreading Tasini."

Said Barkett: "I think Tasini does say that." [Patry: meaning she agreed with Starr].

Chief Judge J. L. Edmondson also weighed in, saying he was troubled that the digital library also contained computer code and software that made it different from old copies of National Geographic sitting in his father's closet.

"Here's the problem I have," Edmondson said. "This thing can do a lot of stuff that thousands of issues in my father's closet can't do. This thing is different. ... At some point, I have to ask, 'Doesn't something stop being a revision and become a new compilation?'"

Edmondson also noted that the photo montage included in the digital set "seems to be a different thing" than faithfully reprinting the magazine.

Judge Stanley Marcus wanted to know how the CD-ROM library differed from microform. But Starr insisted that any difference in the two products "does not matter as long as there is contextual continuity."

Using Ginsburg's dicta as his basis, Starr insisted that as long as what is presented to the user mirrors the previously published image, "regardless of the robustness of the [digital] search engine," it can be considered a revision acceptable under federal copyright law rather than a new work.

Greenberg was represented by Miami attorney Norman Davis, of Squire, Sanders & Dempsey, who argued that federal copyright law permits the reproduction of articles without infringement only in limited cases.

Like Marcus, Judge Susan H. Black pushed to know how microform and the CD-ROM library differed. When Davis suggested the CD-ROM library was more marketable and more lucrative, Black replied, "The money answer doesn't help a lot."

When Davis insisted that "the money argument" was a relevant part of the debate, Birch suggested that the copyright publishing privileges must be balanced "relative to economic advantages. It's kind of like the writers; strike," he said referencing the recent settlement between Hollywood writers and producers over additional royalties derived from digital libraries and Internet Webcasts. Birch also distinguished Greenberg from Tasini, calling Tasini a "disassembled case" where "they had taken apart the original work" and placed individual articles online. "We don't have that case," Birch said. "We have a different case." Greenberg, he said, "is an assembly case" where pieces have been added to a previously published work rather than having that work dissected for individual articles as was the case in Tasini.

Judge Charles R. Wilson appeared unconvinced by Davis' argument. "It's simply a digital version of microfilm," he said. "At least, it sounds like that to me."

And Anderson wanted to know whether a new collection of bound magazines as well as microfilm "would somehow violate your client's [copy]rights? ... Is it your position that a bound volume is a new collective work?"

And he pressed Davis about Starr's argument: "Your opponent is suggesting strongly that the Supreme Court in Tasini held that microfilm of the entire National Geographic magazine is protected."

"I don't think [the Supreme Court] held that," Davis replied. "I think they suggested it."

During Starr's rebuttal, Birch suggested that a revision, under the federal copyright statute, had to be a revision of an individual issue, not an entire library of work.

Starr replied, "You have fallen into error," citing Tasini as "saying microform is a revision."

When Anderson noted pointedly, "That is dicta," Starr replied, "It is guidance that tells us the meaning of revision."

Wednesday, February 27, 2008

Copyright Owners Can Get Satisfaction, But Only Once

The Rolling Stones kvetched about gettin' no satisfaction, although no one believed they came ever up short. The Eleventh Circuit is concerned about satisfaction too, and of copyright owners. It concluded, on February 25th that copyright owners should be satisfied, but only once. The case is BUC International Corp. v. International Yacht Council Ltd., 2008 WL 482159, Docket No. 05-16151, available here.

The court of appeals had previously affirmed a jury verdict of $1,598,278 in actual damages for infringement of plaintiff's used boat price guide, 489 F.3d 1129 (11th Cir. 2007)(There was an alternate award of $1,098,ooo in statutory damages). Several weeks before trial, plaintiff had entered into a confidential settlement agreement with some of the co-defendants. One co-defendant paid plaintiff $290,000. Two others paid, through their insurance companies, $500,000. The present appeal was from a decision by the district court declining to reduce the final judgment by the settlement amounts against the defendants who went to trial under the "one-satisfaction rule." Rule 60(b)(5) of the Federal Rules of Civil Procedure allows a court to relieve a part from a final judgment if "the judgment has been satisfied, released, or discharge." See also 60(b)(6). The one-satisfaction rule has its roots in general tort principles, and is designed to limit awards to one payment for a single injury ; the rule sweeps in amounts received from settling joint tortfeasors.

The one-satisfaction rule is different from contribution. Contribution concerns the ability of one defendant to demand that another, co-defendant who is jointly liable pony up for damages too. Under copyright law, a plaintiff may collect the entire amount from one defendant, so it is easy to see why such a defendant might seek contribution from other defendants. But the Copyright Act does not contain any provisions providing for contribution, and not surprisingly, the courts are uniform in holding that no such rights exist as a matter of federal law. See, e.g., Elektra Entertainment Group, Inc. v. Santangelo, 2008 WL 461536 (S.D.N.Y. February 15, 2008); Pure Country Weavers, Inc. v. Bristar, Inc., 410 F. Supp. 2d 439, 448 (W.D. N.C. 2006); Equity Builders and Contractors, Inc. v. Russell, 406 F. Supp. 2d 882, 885-886 (N.D. Ill. 2005); Artista Records, Inc. v. Flea World, Inc., 356 F. Supp. 2d 411, 416 (D.N.J. 2005); Christopher Phelps & Associates, Inc. v. Galloway, 2005 WL 4169714 (W.D. N.C. 2005); Lehman Brothers, Inc. v. Wu, 294 F. Supp. 2d 504 (S.D. N.Y. 2003); Johnston v. Smith, 1997 WL 584349 (N.D. Ga. 1997). But see the dictum in Salton, Inc. v. Philips Domestic Appliances Personal Care B.V., 39 F.3d 871, 877 (7th Cir. 2004), dismissed in Equity Builders, 406 F. Supp. 2d at 885 n.1 as referring to the context of joinder of indispensable parties, and Interscope Records, Inc. v. Duty, 2006 WL 988086, at *2 9D. Az. April 14, 2006)(stating in dictum that defendant "may have" a "viable" contribution claim).

What about state law? In two opinions, federal courts have rejected state claims of contribution for damages paid for copyright infringement, holding such rights may exist only under the Copyright Act; since the Copyright Act does not provide such a right, the claim was rejected. Lehman Brothers, Inc. supra, and Johnston. See also Yash Raj Films (USA) v. Kumar, 2006 WL 2463532 (E.D. N.Y. 2006) (denying leave to file third-party complaint for contribution, noting Lehman Bros. and Johnston); Polygram Intern. Pub., Inc. v. Nevada/TIG, Inc., 855 F. Supp. 1314, 1334 (D. Mass. 1994), where Judge Keeton noted tentative agreement that there is no right of contribution. These rejections did not use preemption as the decisional ground, but no other basis seem apparent: if state law did not provide for such relief, the court would have dismissed on that basis.

What about the one-satisfaction rule? In its decision two days ago, the Eleventh Circuit held that it does apply to copyright infringement actions, citing Screen Gems-Columbia Music, Inc. v. Metlis & Lebow Corp., 453 F.2d 552, 553-554 (2d Cir. 1072), and therefore reversed and remanded, writing: "To hold otherwise would allow a plaintiff to recover multiple times for a single injury, frustrating this elementary principle of tort law in a manner we cannot imagine envisioned by Congress." 2008 WL 482159, at *5.

Tuesday, February 26, 2008

An Idea by any other name

Copyright, like many areas of law has its pat phrases; one of the most common is that there is no protection for ideas, but only for the expression of ideas. As Judge Easterbrook observed, this is not an analytical tool, but merely a way to state a conclusion. See Nash v. CBS, Inc., 889 F.2d 1537, 1546 (7th Cir. 1990).

Another pat phrase in copyright is "I am only trying to protect my combination of unprotectible elements," including ideas. Sometimes the statement is accurate, but in other cases, the compilation argument is a disguised effort to protect ideas after all. Jewelry designs present a compelling case for careful scrutiny of the "I'm only trying to protect a combination of unprotectible elements" argument. Defendants' rebuttal to this argument have two prongs: plaintiff's design is not protectible at all; or, it is (barely) protectible, but not infringed. In Todd v. Montana Silversmith, Inc., 379 F. Supp.2d 1110 (D. Col. 2005), the court found plaintiff's barbed wire design unoriginal.

David Yurman has brought a number of suits over his use of cable in his upscale jewelry. See Yurman Design Inc. v. PAJ, Inc., 262 F.3d 101, 112 (2d Cir. 2001)(affirming finding of willful infringement); Yurman Design Inc. v. Chaindom Enterprises, Inc., 2003 WL 22047846 (S.D.N.Y. Aug. 29, 2003), Civ. No. 99 Civ. 9307 (reviewing plethora of earlier opinions in the case); Yurman Design Inc. v. Garden Jewelry Mfg. Corp., 2000 WL 1141428 (S.D.N.Y. Aug. 11, 2000, 99 Civ. 10507). A recent suit, Yurman Studio Inc. v. Andin International, Inc. et al, 08 Civ. 01159 (S.D.N.Y.), presents another aspect of this. The case was originally assigned to the great judge Miriam Cedarbaum, who practised copyright law before she went on the bench. I understand that at a conference on the case she indicated that it was her initial view there was no infringement. She later recused herself because her son is a lawyer at a firm of representing another defendant who was added to the case. Here is a side by side of some of plaintiff's design and some of defendants':

There are three basic elements to both designs: (1) the middle part which as a diamond "pave" (think pavement) arrangement; (2) a gold frame around the middle part, and (3) a chain design "skirt" around the gold frame. This is a common combination in the industry. Here are a few examples:

Defendant alleged independent creation and lack of access, but on the substantial similarity issue there are a number of differences only some of which can be seen in the photos above. There is for example only one cable in Yurman's, but three in defendants, and they are of a different type of design and perspective. One can of course see similarities, but similarities alone don't give rise to infringement: the similarities may exist but the two works be independently created (as is alleged here); and the similarities may be in uncopyrightable elements. The danger in this dispute is that none of the elements are themselves protectible. But in looking at the two designs side by side, one tends to focus on the similarities in the discrete elements, and not focus as one should on the bare compilation claim. While I think there are differences in the discrete elements, what probably led Judge Cedarbaum to conclude there was no similarity was her (correct) focusing on the claim that plaintiff can at best own copyright in the combination of three standard, nonprotectible elements, and that therefore any similarities in the discrete elements are irrelevant. Whether the trees are similar (I think not), the forest isn't, and it is only the forest that is protectible, if at all in this case.

Sunday, February 24, 2008

When is a Party a Prevailing Party?

When is a party a prevailing party in a copyright infringement action for purposes of awarding attorney's fees? Attorneys’ fees in copyright cases may be (but need not be) awarded to the prevailing party, a concept that has some grey areas. The Seventh Circuit, in an opinion by Chief Judge Easterbrook, just cleared one such area up: where plaintiff moves to dismiss a case without prejudice but the district judge dismisses with prejudice. The case is Riviera Distributors, Inc. v. Jones, 2008 WL 441762 (7th Cir. Feb. 20, 2008)(here is a link to the opinion and the oral argument). Here’s the relevant part of the opinion:

Both sides to this litigation hold copyrights in software. Plaintiffs (which we call Riviera) contend that the “Stars and Stripes” video-poker game sold by defendants (which we call Midwest) infringes Riviera's “Americana” source code. (There are several other games and sets of code, which we bypass to simplify the exposition.) After the suit had been pending for more than a year-and long after the time for a voluntary dismissal, without prejudice, under Fed.R.Civ.P. 41(a)(1) had passed-Riviera filed a motion to dismiss. It conceded that it lacked the evidence to prove its claim, though hoping to acquire better evidence in the future it asked the district judge to dismiss without prejudice under Rule 41(a)(2). The district judge dismissed the case, but with prejudice.

Midwest then applied for attorneys' fees under § 101 of the Copyright Act of 1976, codified at 17 U.S.C. § 505. That section authorizes a district court to “award a reasonable attorney's fee to the prevailing party as part of the costs.” Unlike many fee-shifting statutes, which entitle prevailing plaintiffs to recover fees as a matter of course but allow prevailing defendants to recover fees only if the suit was frivolous, § 505 treats both sides equally and allows an award in either direction. Fogerty v. Fantasy, Inc., 510 U.S. 517, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). Since Fogerty we have held that the prevailing party in copyright litigation is presumptively entitled to reimbursement of its attorneys' fees. See, e.g., Woodhaven Homes & Realty, Inc. v. Hotz, 396 F.3d 822, 824 (7th Cir.2005); Assessment Technologies of Wisconsin, LLC v. WIREdata, Inc., 361 F.3d 434 (7th Cir.2004).

The district court denied Midwest's request for fees, ruling that it is not the prevailing party. The judge wrote that he “did not in any way pass on the merits of the litigation.... [T]here has been no evidence of lack of merit to [Riviera's] copyright infringement claims and no finding with respect to the merits of the case. The Court therefore does not believe that [Midwest is] entitled to prevailing party status on the facts of this case.”

This approach supposes that the content of a judge's opinion is what makes a litigant a prevailing party. If the judge sustains a litigant's position on the merits, then it “prevails”; otherwise not. The Supreme Court took a different view in Buckhannon Board & Care Home, Inc. v. West Virginia Dep't of Health & Human Resources, 532 U.S. 598, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001), which holds that a litigant “prevails” (for the purpose of fee-shifting statutes) when it obtains a “material alteration of the legal relationship of the parties”, 532 U.S. at 604, quoting from Texas State Teachers Ass'n v. Garland Independent School District, 489 U.S. 782, 792-93, 109 S.Ct. 1486, 103 L.Ed.2d 866 (1989). A judgment in a party's favor has such an effect, which is why a consent decree confers prevailing-party status even though everyone denies liability as part of the underlying settlement, and the judge takes no position on the merits.

Midwest obtained a favorable judgment. That this came about when Riviera threw in the towel does not make Midwest less the victor than it would have been had the judge granted summary judgment or a jury returned a verdict in its favor. Riviera sued; Midwest won; no more is required. See Mother & Father v. Cassidy, 338 F.3d 704, 708 (7th Cir.2003) (dismissal under Rule 41(a)(2), with prejudice, after a plaintiff gives up makes the defendant the prevailing party). The district court recognized as much when it awarded costs to Midwest under Fed.R.Civ.P. 54. Only the “prevailing party” is entitled to costs. Because Midwest is the prevailing party for regular costs, it must be the prevailing party for the purpose of § 505, which allows an award of attorneys' fees as part of costs.

The court then went on to hold the fees should be awarded, especially because the parties had previously agreed to a no suit clause in their contract.

Friday, February 22, 2008

Steve Fishman's Public Domain Book

One result of the radical expansion of copyright is increased focus on the public domain. In the last 30 years we have seen the elimination of the renewal and notice requirements which had done yeoman's work, and the exponential expansion in term, which created tens of millions of orphans. The public domain ain't what it used to be. Regrettably, part of the scholarly focus on the public domain is nostalgic, a look at what the Amazon rain forest had been before much of it was destroyed. And like the Amazon rain forest, calls for for a re-invigorated public domain ignore the harsh reality on the ground: due to treaty obligations alone, the U.S. cannot reimpose formalities or diminish the term of protection. The formerly vibrant public domain will never return.

Into this depressing state of affairs comes an amazing 724-page scholarly treatment of the subject by Californian Stephen Fishman called "Copyright and the Public Domain." The book, due out in March, is published by Law Journal Press ( Mr. Fishman had previously written on the issue for laypeople "The Public Domain: How to Find and Use Copyright-Free Writings, Music, Art & More." (I had used a picture of the cover in this blog back in the days when I was attempting to make wry transformative comments via my profile picture, but I gave that up when not everyone got the point, so I gave that effort up as distracting, although it did confirm my view that we are in an era when all uses are regarded as infringing.)

Mr. Fishman's new book is a very different type of work. For starters, there has never been such a comprehensive look at the public domain. The excellent footnotes reveal a depth of research that would make the book worthwhile for them alone, but their principal purpose is to serve a text that is at once richly insightful and readable. The book begins where it should, with a discourse on the varied ways the term "public domain" has been employed (including outside of copyright). Within copyright law, we have: (1) works that were under copyright, but are no longer. Here some reasons for the lack of current protection: expiration of term, forfeiture of protection for failure to comply with formalities, lack of originality (a vast topic of its own), lack of fixation, lack of national eligibility, lack of protection as a governmental work, exclusion from protection (e.g, typeface), lack of separability in the case of the design of useful article, and abandonment. This final point finally receives the treatment it is due in chapter 6; there is no excuse (if there ever was) for relying on Nimmer's strange views on the subject.

Mr. Fishman also points out -- and covers in great detail -- that the concept of the public domain refers not just to entire works that aren't protected, but also to constituent elements of works that are; given the Amazon rain forest problem noted above, this aspect of the public domain is our last real sanctuary, and he covers it thoroughly in chapter 7. There are also many helpful practical sections, such as chapter 11 (researching copyright renewals), as well as charts on duration (3:04).

Here is a list of the chapters:

1. Introduction to the public domain
2. Works not entitled to protection
3. Works whose copyright protection has expired
4. Copyright forfeiture
5. Publication
6. Copyright Abandonment
7. Public domain elements in copyrighted works
8. Copyrights restored from the public domain
9. New works created from the public domain
10. The public domain outside the United States
11. Researching copyright renewals
12. Non-copyright restrictions on use of public domain materials

Paradoxically, the shrunken public domain has only increased its importance, and therefore the importance of Mr. Fishman's exhaustive treatment. Bravo.

Thursday, February 21, 2008

The National Journal's Biennial Salary Survey

Every two years, the National Journal, a DC political magazine, does a survey of how much money Washington trade association heads, heads of think tanks, labor unions and the like make. This is a category that also includes 21 former members of Congress, governors, and Administration officials. The figures are for 2006, and so must be adusted (up) for 2008. The top earner was Robert Glauber, head of the blandly named Financial Industry Regulatory Authority, who pulled in $6,823,854. In the IP area, there is Mitch Bainwol, head of RIAA, who pulled in $1,472,944. Dan Glickman, a former member of Congress and head of MPAA, pulled in $1,280,000 plus another $32,800 in other benefits and allowances. Eddie Fritts, president emeritus of NAB made $1,166,350 plus another $1,091,221 (I would have been happy with just the other"). Former member of Congress Pat Schroeder, head of AAP made $444,044 plus $20,134 in others. Kyle McSlarrow, head of the NCTA made $1,754,599.

The purpose of trade associations is to advance the interest of its members, something accomplished through ensuring that greater rights are achieved or threats to members' eliminated. Heads of such organizations, in order to justify their continued employment and compensation, must deliver. I mention the obvious only because it is sometimes asked how it is
ours laws are the way the are: incentives work, after all, not just in the creation of new works.

Monday, February 18, 2008

Fraud and Preemption

Issues involving when state laws are preempted are both frequent and vexing. A recent, marvelous opinion by Chief Judge Curtis L. Collier of the Eastern District of Tennesse is important for its insights into this difficult area. The case is Shuptrine v. McDougal Littell, 2008 WL 400453 (E.D. Ten. Feb. 12, 2008), Docket No. 1:07-CV-181. Congratulations to Christopher Seidman and Maurice Harmon of Harmon & Seidman for prevailing against defendant’s motion for judgment on the pleadings.

Here are the relevant facts as described by the court:

According to Plaintiff's complaint, she holds copyrights to paintings made by her late husband, Hubert Shuptrine (“Shuptrine”).. . Prior to his death in 2006, Shuptrine held the copyrights, and in exchange for payment granted licenses to print his paintings to Defendant, a textbook publisher, for expressly limited print runs … However, Plaintiff alleges those limits were misrepresentations by Defendant intended to obtain access to the paintings at a lower cost than had it been honest with Shuptrine … Plaintiff alleges that at the time of the licensing agreements, Defendant knew its actual use would greatly exceed the number of copies it agreed to make… . For instance, Plaintiff states Defendant requested a license to print 40,000 copies of a painting in a textbook, even though it knew at the time it would need to print hundreds of thousands copies, and it eventually printed over 1.2 million copies … . By licensing copyrighted work for low numbers of reproductions while allegedly surreptitiously making far more copies, Defendant lulled Shuptrine into a false sense of trust, giving no reason to suspect it was making excessive copies … Shuptrine set the reproduction fee based on Defendant's representations as to how many copies it would make, and discovered the excessive copying fortuitously ….

Count XI of the compliant alleged defendant committed fraud by deliberately obtained a price for the license based on a representation that it would be making fewer copies than it knew it would be. Defendant argued that the fraud claim was preempted “because the fraud and copyright claims rest on the same fundamental allegations that Defendant copied and distributed Shuptrine's paintings beyond the limitations in the license agreements.” Plaintiff asserted there was no preemption “because Defendant misrepresented to Shuptrine the number of copies it would make with the intention of obtaining the paintings at a lower price.”

As the court noted,

A claim for common-law fraud exists “When a party intentionally misrepresents a material fact or produces a false impression in order to mislead another or to obtain an undue advantage over him.” … “The representation must have been made with knowledge of its falsity and with a fraudulent intent. The representation must have been to an existing fact which is material and the plaintiff must have reasonably relied upon that misrepresentation to his injury.” … By requiring misrepresentation of a material fact, knowledge of falsity, fraudulent intent, and reliance on a misrepresentation, fraud has extra elements that are not illusory. Assuming the truth of Plaintiff's allegations, Defendant did not merely infringe Plaintiff's copyrights. Rather, she contends Defendant obtained the right to make copies of Shuptrine's paintings under fraudulent pretenses, by knowingly misrepresenting how many copies it intended to make for the purpose of obtaining the copies at a lower cost and decreasing the likelihood Plaintiff would discover the copyright violations.

Defendant argues Plaintiff's fraud claim mischaracterizes its actions. Defendant analogizes the situation to “a customer's purchase of three pairs of blue jeans while intending to steal a fourth pair the next day,” which is not fraud. But the analogy is imprecise. In a more accurate representation of Plaintiff's allegations, the customer would agree with the seller to buy three pairs of jeans for a certain price while knowing that he would have to pay a significantly higher price for the ten pairs he intends to, and does, take. But even that analogy does not fully explain the alleged fraud. A store owner conducting inventory would notice missing blue jeans, but a trusting copyright holder cannot easily notice that a licensee misrepresented how many copies it would make of copyrighted work. The infringing activity is obscured from view by the fraudulent act of a knowing misrepresentation.

Defendant contends Plaintiff's claims are about only the exclusive rights to copy and distribute the paintings. Assuming Defendant printed copies in excess of the licenses, it “should have taken out a broader license, and, as a result, should pay for allegedly unauthorized copies which exceeded the numbers stated in the licenses.” Defendant further argues, “Plaintiff's fraud claim is nothing more than a claim for intentional infringement, which damaged Plaintiff to the extent of what the license fee would have been for the unlicensed copies.”. The Court disagrees. Defendant entered into a relationship with Shuptrine allegedly under false pretenses designed to lower the cost of obtaining Shuptrine's paintings. Plaintiff's fraud allegation is a qualitatively different offense than merely exceeding the licensing agreement.

… Even though the alleged fraud in this case could not have existed without the alleged copyright infringement, the fraud accusation is more than just copyright infringement. It meets the Sixth Circuit's test, and is therefore not preempted.

I think Chief Judge Collier got the issue exactly right: the allegation (which must be accepted as true in the procedural posture of the case) was that the original license price was set far too low as a result of the fraud; this has nothing to do with violation of exclusive rights under title 17. Bravo Judge Collier.

Thursday, February 14, 2008

Conference in London on Copyright History

Primary Sources on Copyright 1450-1900 is to launch in March. The online resource will revolutionize the way historical research into copyright is done, and is the brainchild of Professors Ronan Deazley, Oren Bracha and others. To celebrate the launch, on March 19-20, there will be an important in its own right two day seminar at Stationer's Hall.
Here is a link. The program is here:

AHRC Primary Sources on Copyright History Project: Conference – Wednesday 19th and Thursday 20th March 2008 – Stationers' Hall, London

Wednesday 19th March 2008, 10:00

This two day conference is the culmination of a research project involving the creation of a digital resource concerning the history of copyright in five key jurisdictions; France, Germany, Italy, the UK and the US, for the period before 1900. The project involves the selection of certain key documents, their digitisation, transcription, and translation. The project will create a free electronic archive of primary sources from the invention of the printing press (ca1450) to the Berne Convention (1886): in facsimile and transcription, translated and key word searchable. The documents will include statutes, materials relating to legislative history, case law, tracts, and commentaries. Editorial headnotes will provide context. The project is entirely publicly-funded by the Arts and Humanities Research Council and benefits from an advisory board of internationally-recognised experts in relevant fields. When complete, the digital resource will be hugely valuable to scholars from all disciplines interested in the history of copyright. More information about the project is available at Primary Sources on Copyright History.

Keynote Speakers: Professor Mark Rose University of California Santa Barbara , Professor Laurent Pfister University of Versailles Saint-Quentin and Professor Karl Nikolaus Peifer Köln University.

The conference will be held at the Stationers' Hall in London. (The research group is very grateful to the Worshipful Company of Stationers and Newspaper Makers for providing this facility free of charge and to Emmanuel College, Cambridge for providing sponsorship towards the cost of the conference). The booking fee is £100 (to include refreshments, lunches and drinks reception). A booking form can be downloaded here. Please contact Gaenor Moore for more information.

Programme Wednesday 19th March

10:00 – 10:15 Welcome tba
10:15 – 11:00 Introduction and Demonstration of Resource Professor Lionel Bently, University of Cambridge and Professor Martin Kretschmer, University of Bournemouth
11:00 – 12:00 Keynote Speech: The Public Sphere and the Emergence of Copyright: Areopagitica, the Stationers’ Company, and the Statute of Anne Professor Mark Rose, University of California, Santa Barbara
14:00 – 14:30 From the Stationers’ Company Archive Robin Myers, Honorary Archivist Emeritus, Stationers’ Company
14:30 – 16:00 National Editors’ Afternoon (1) Institutions. The Political Economy of Copyright, Dr Oren Bracha, University of Texas (US); From Local to National to International Regimes, Dr Friedemann Kawohl (Germany)
15:20 – 15:40 BREAK FOR TEA/COFFEE
15:45 – 17:30 National Editors’ Afternoon continues (2) Ideas. Subject Matter, Dr Joanna Kostylo, University of Cambridge (Italy); Originality, Dr Frédéric Rideau, University of Poitiers (France); Derivatives, Dr Ronan Deazley, Birmingham University (UK).

Programme Thursday 20th March

09:00 – 09:15 COFFEE
09:15 – 10:00 Keynote Speech: Author and work in the French Print Privileges system Professor Laurent Pfister, University of Versailles Saint-Quentin
10:00 – 11:45 Invited Papers: The Significance of Copyright History for Publishing History and Historians Professor John Feather, Loughborough University;Visualising property in art and law Dr Katie Scott Courtauld Instiute of Art; A mongrel of early modern copyright: Scotland in European perspective Dr Alastair Mann Stirling University; Digging up fragments and building IP franchises Professor Kathy Bowrey, University of New South Wales
11:45 – 12:00 COFFEE
12:00 - 13:30 Invited Papers continue: Perpetual Copyright: the Venetian Experiment (1780-1789) Dr Maurizio Borghi, Brunel University; “Neither bolt nor chain, iron safe nor private watchman, can prevent the theft of words”: The birth of the performing right in Britain Dr Isabella Alexander University of Cambridge; Les formalités sont mortes, vive les formalités! Copyright formalities in nineteenth century Europe and their significance for current discourse Stef van Gompel, University of Amsterdam.
13:30 – 14:30 BUFFET LUNCH
14:30 – 15:15 Keynote Speech: The Return of the Commons - Copyright history as a common source Professor Karl Nikolaus Peifer, Köln University
15:15 – 15:30 BREAK FOR TEA/COFFEE
15:30 – 16:30 Open Discussion: A View of Copyright History Introduced by: Professor Lionel Bently and Professor Martin Kretschmer
16:30 Closing Rapporteur Professor Jane Ginsburg, Columbia University
17:00 Launch of the International Society for the History and Theory of Intellectual Property

Wednesday, February 13, 2008

No One Likes a Bully: The IIPA and Canada

Despite the use of the word “International” in its name, the International Intellectual Property Alliance (IIPA) is an umbrella group comprised of 7 U.S. trade associations: the Association of American Publishers, Business Software Alliance, Entertainment Software Association (video game industry), The Independent Film & Television Alliance, The Motion Picture Association of America, National Music Publishers’ Association, and Recording Industry Association of America; it pursues a purely U.S. corporate copyright agenda.

The IIPA had a modest infancy: it arose out of early legislative efforts in the mid 1980s to condition favorable U.S. trade benefits on other countries providing U.S. works “adequate and effective” IP protection, a concept very much in the eye of the beholder. With a ramped up GSP program and then the “Special 301” revision in the 1988 Omnibus Trade and Competitiveness Act, the IIPA quickly filled a vacuum: the Office of the United States Trade Representative (charged with enforcing trade laws) needed statistics to establish which countries were naughty and which were nice. Lacking any investigative resources of its own, USTR uses figures given to it by IIPA. The figures offered up by the IIPA on projected U.S. losses from “piracy” have been criticized for being wildly inflated, speculative, and based on demonstrably false assumptions, such as every pirated copy equaling a loss of a sale (and usually at U.S. prices). But what’s wrong with fudging for a good cause? And who are pirates to complain? (It also appears that the U.S. is the nicest country of all since it never appears on its own list, while major Western and many other countries have been tarred with varying degrees of naughtiness).

It is entirely proper for U.S. industries to protect their own interests. IIPA’s website, though, shoots for a loftier goal, that of helping to create “a legal and enforcement regime for copyright that not only deters piracy, but that also fosters technological and cultural development in these countries, and encourages local investment and employment.” The last two clauses evoke a globally beneficent outlook, one reminiscent of the “a raising tide lifts all boats” bromide according to which very high levels of protection are actually good for other countries because it protects authors from those countries. The bromide is false, though, and not only because the IIPA doesn't do outreach to help local investment or employment in foreign countries: it is also false because the ill-effects of hyper-copyright are felt in the U.S., from orphan works, to oppressive remedies, and misuse of circumvention rights to squelch competition and preserve outmoded business models. It must also be pointed out that the rising tide lifts all boats approach is one the U.S. deliberately eschewed in the first 100 years of its existence, resulting in the British referring to the U.S. as the Barbary Coast of Piracy, and that the U.S. did not join the Berne Convention until the extremely late date of March 1, 1989. The U.S. conversion to international copyright is quite recent; post-conversion, we have been acting like Paul, not Saul. Other countries, especially those who have been members of the Berne Convention since the 19th century, can be excused for thinking our conversion came about not out of faith but rather out of an opportunity to force U.S. law on the rest of the world; in short, copyright imperialism.

In practice, the IIPA’s efforts have gone far beyond issues of piracy. Its annual 301 report goes into great detail about the perceived deficiencies of all stripes in foreign laws, accusations that understandably offend those countries. Nor is the IIPA content with attempting to get other countries to adopt U.S. law lock-stock-and-barrel (and regardless of vast differences among legal systems): Last year, I reported on IIPA’s efforts to stop the Israeli Knesset from adopting the U.S. fair use provision in its statute. Apparently, it is only those laws that are favorable to U.S. corporate interests that “will foster[] technological and cultural development in these countries, and encourage[] local investment and employment.”

Sometimes countries fight back (and the Israelis, Baruch HaShem, passed their fair use provision anyway). IIPA’s repeated attacks on Canadian copyright law led Ms. Nancy Segal, a senior Canadian Foreign Affairs official, to remark last year:

In regard to the watch list, Canada does not recognize the 301 watch list process. It basically lacks reliable and objective analysis. It's driven entirely by U.S. industry. We have repeatedly raised this issue of the lack of objective analysis in the 301 watch list process with our U.S. counterparts. I also recognize that the U.S. industry likes to compare anyone they have a problem with, concerning their IPR regime, to China and the other big violators, but we're not on the same scale. This is not the same thing. If you aren't on the watch list in some way, shape, or form, you may not be of importance. Most countries with significant commercial dealings are on the watch list.

Member of Parliament Joe Comartin (Windsor—Tecumseh, NDP), then added:

My perception, and I think this is based on fairly decent material, is that if anybody was going to be on that watch list, the U.S. should put themselves on it, in the sense that they have more counterfeit material and goods going through their country, getting into their country, and manufactured in their country on a proportional basis than Canada does, by a long shot.

In reading these remarks, I remembered my seven years working on Capitol Hill, where on my daily trek up Pennsylvania Avenue to get lunch, I would pass by tables at which counterfeit DVDs were offered for sale, one block from the Capitol building itself, and right across the street from the Copyright Office. The Canadians officials quoted above were reacting, perhaps, to IIPA’s 2007 report, which began, “Canada’s long tenure on the USTR Watch List seems to have had no discernible effect on its copyright policy.” Ordinary people, when faced with such a lack of response from an immediate neighbor – in this case, a friendly, wealthy (Canada’s dollar is worth more than the U.S. dollar), high educated and networked country -- might re-evaluate an obviously failed policy, but no, IIPA’s recommendation was to throw more fuel on the fire, recommending that Canada be placed on an even naughtier list, the Priority Watch List, a recommendation repeated in the 2008 report, and to upbraid the Canadians for allegedly having a copyright law fit for Pirate Bay, not Thunder Bay.

So what are the IIPA’s beefs? The principal ones ostensibly concern Canada’s failure to implement the 1996 WIPO treaties. Examination of the IIPA’s 301 reports reveals, though, that what it has in mind is simply adoption of U.S. law, not amendments to Canada law that are consistent with the treaties obligations. The WIPO treaties modestly require only remedies for circumvention of Technological Protection Measures (TPMs) that involve the exercise of exclusive rights. Although the U.S. attempted to have the treaties include remedies for circumvention of access controls, other countries rejected the U.S.’s efforts. One would never know this from the IIPA’s reports, which mix the two together and lead readers to believe both are required; they are not.

Even more, the IIPA has stated (2004 report), “The WIPO digital treaties provide the principal legal tools required to fight piracy.” No evidence to support this assertion is presented, and the assertion is absurd: piracy (even as IIPA defines it), has existed for millennia, and the tools used to combat it have been traditional copyright rights and remedies. On this (and many other scores), Canada’s law is exemplary. I have not seen any proof that the U.S. TPM laws have led to a decrease in piracy within the U.S.; to the contrary, U.S. corporate interests constantly complain before Congress about the exponential increase of piracy, a “pandemic” that can only be cured by ever stronger laws. If we take content owners at their word, TPMs have been remarkably ineffectual, and therefore not something we would want to stuff down other countries’ throats. Indeed, in a stunning mea culpa not lost on Canadians, last year former U.S. Commissioner of Patent Bruce Lehman, the architect of the DMCA and of the U.S. negotiations at the WIPO treaties, stated during a symposium in Montreal that the DMCA had been a failure due – to copyright owners’ actions. See here.

The actual purpose of TPMS has nothing to do with piracy, and is stated in the concluding sentence to the one I quoted above from the IIPA’s Section 301 report: “Electronic commerce in copyrighted content requires a working digital marketplace in which only legitimate copies of works are transmitted, and only under the terms negotiated or permitted by the rights owner.” In other words, TPMs are all about preserving business models, not about piracy. In the United States, we have been waiting since 1998 for a working digital marketplace, after granting to IIPA’s members extensive rights in the DMCA on the promise that once the laws were in place, copyright owners would create the market. They haven’t: we are still nowhere close to even a nascent digital marketplace, much less a working one. But why not, since the laws are in place? The answer is content owners already have what they wanted, which is control over whether a legitimate marketplace will ever exist; but if it does, it will certainly be on their terms as IIPA clearly indicates. The purpose of the DMCA from their perspective was not to facilitate the actual development of a digital marketplace, but to give them veto power over whether one would ever exist, and if so, what it would look like. That’s why the DMCA represented a fatal blow to copyright as a system: rather than adapting copyright rights to the digital environment, the DMCA gave copyright owners the right to control the environment itself, with consequences that were entirely predictable given the past track record of the industry’s suits against innovations from talkies, to cable television, photocopy machines, and VCRs.

Lacking an authorized marketplace due solely to content owners’ failure to create one, it is hardly surprisingly that unauthorized ones grew up. Content owners response was not to provide consumers with what they wanted, but to declare war. Even Edgar Bronfman Jr., honcho of Warner Music, admitted this was a huge mistake, and it is the unwillingness of copyright owners to provide a legitimate market that led Bruce Lehman to publicly declare his own handiwork had failed. The idea that adherence to the WIPO treaties and a verbatim adoption of U.S. law is both necessary and sufficient to create a legitimate market and fight piracy has thus been roundly rejected by both Mr. Bronfman and Mr. Lehman, yet the IIPA continues to argue it to USTR and to the Canadian government.

The IIPA 301 report also insists on Canada adopting the U.S. notice and takedown safe harbor approach found in Section 512, but the IIPA doesn’t reveal that the WIPO treaties have nothing to do with ISP safe harbors. Indeed, it was content owners’ refusal to incorporate safe harbors into the DMCA that held up that legislation for three years, from 1995 to 1998. Content owners argued then that the WIPO treaties had nothing to do with ISP safe harbors. What a difference a few years makes.

The intense, negative reaction of Canadian citizens to IIPA’s efforts is well-taken. Why any government would want to adopt approaches that have been admitted to be a dismal failure in the U.S. by the law’s own ardent author, and that are not required by the
WIPO treaties is a mystery.

Tuesday, February 12, 2008

Scholarly Journals and Open Access

An article on page E1 of the New York Times Arts section today discusses a vote today by the Harvard Arts and Sciences faculty on whether to implement a new opt-out policy that would provide open, free Internet access to professors' finished articles. Robert Darnton, director of the university library, is quoted as saying, "In place of a closed, privileged and costly system , it will help open up a world of learning to everyone who wants to learn. It will be a first step toward freeing scholarship from the stranglehold of commercial publishers by making it freely available on our own repository."

Under the proposal, all articles are made available, unless the author specifically requested in not be. The article notes that commercial publishers have opposed open access proposals in the past, although not the particular Harvard proposal because of the opt-out. A publishers' representative is quoted as saying "As long as they leave the element of choice for authors and publishers, there isn't a problem." What I wonder about is whether there is a choice provided to authors by publishers in this circumstance: say an author wants to put his or her article in Harvard's repository and have it published in a commercially published scholarly journal? Will the publisher mandate that the author not put the article in the repository as the price of publication in the journal? If so, that doesn't sound like an element of choice to me, especially in the publish or perish world of academia.

The open access issue had been confronted a few months ago in the legislative battles over the National Institute of Health's Public Access Policy. That Policy, signed into law by the resident of 1600 Pennsylvania Avenue N.W. in the Consolidated Appropriations Act of 2007 (H.R. 2764), changed a voluntary program into a mandatory one, requiring that peer-reviewed articles funded with NIH monies be deposited for free in the National Library of Medicine's online archive, no later than 12 months after publication in a journal. This 12 month delay gives publishers an exclusivity window, and one would think therefore the ability to sell subscriptions. Nor does the policy prevent a grant of exclusive rights in journal form.

Publishers, though, vehemently objected to the mandatory nature of the NIH requirement, alleging that it "effectively allows the agency to take the important publisher property interests without compensation, including the value added to the article by publishers' investment in the peer review process and other quality-assurance aspects of journal publication." Others disagreed, noting the investment of public monies and the heavy investment by universities in funding faculty salaries and equipment. As with the term "jurisdiction," "choice" seems to be a word of many meanings.

Monday, February 11, 2008

Drop Kick Me Jesus Through the Goalposts of Copyright

In 1976, country and western singer Bobby Bare a song written by Paul Craft called “Drop Kick Me Jesus Through The Goal Posts of Life.” The song appeared on his album “Winners and Other Losers.” Here are the first two verses:

Drop kick me Jesus through the goal posts of life End over end neither left nor to right Straight through the heart of them righteous uprights Drop kick me Jesus through the goal posts of life. Make me, oh make me, Lord more than I am Make me a piece in your master game plan Free from the earthly temptation below I’ve got the will, Lord if you’ve got the toe.

(The entire lyrics and an version of the song may be found here).

There is a surprising amount of exegesis on this song, including this from one, surprisingly from the West Coast (sometimes called the Left Coast). The Pacific Theological Society from Berkeley, California writes on its website).

With football providing the basic metaphor, Jesus is portrayed as both leader (the strategist with a master game plan) and player--the one who kicks the ball for a field goal. This is a wonderful intertwining of prophet, priest and king. Jesus is on the field with us, able to be where we are, but also bringing divine revelation which will be revealed to his team, and with the power (athletic prowess) to provide the grace for the willing supplicant to attain the righteousness needed. The football's inability to kick itself emphasizes the need for grace and divine intervention, which Jesus is there to provide. The importance of the Body of Christ is also brought in, this is not just a "me and Jesus" endeavor, but the communion of saints has a role. The salvation of one individual requires a team effort. This setting includes the concept of an opposing team--"the enemy." There is, a certain ambiguity in the time factor here. The desire to go through the goal posts suggests the aim of achieving righteousness and a "holy death." But the idea of being part of the "master game plan" when "free from the earthly temptation below" suggests activity in the after-life. The communion of saints, and their role in the "offensive line" may be for now, to protect the kick, to ensure no interference in the field goal, and/or for the master game plan that is for the time when they are free. Perhaps it is for both times.
This is indeed making wine out of water.

What you may ask do football and Jesus have to do with copyright? Plenty, as this article in the February 7th Washington Post shows:

Bill Would End Separation of Church and Super Bowl Jacqueline L. Salmon Washington Post Staff Writer Thursday, February 7, 2008; Page A06 Sen. Arlen Specter, the top Republican on the Senate Judiciary Committee, introduced a bill this week that would allow houses of worship to show football games on big-screen televisions. The legislation was among a flurry of action taken this week as the result of an article Friday in The Washington Post reporting that churches were canceling Super Bowl parties out of fear of lawsuits from the NFL if they showed the game on jumbo TV screens. The league has sought to enforce its copyright of the Super Bowl by sending letters to churches warning them that showing the game on big-screen sets violates the league's copyright. The NFL allows sports bars to show the game on large TV sets but objects to similar viewings by other out-of-home large assemblies. Under Specter's legislation, religious organizations that wish to show professional football games would be declared exempt. "The legislation simply provides churches with a limited yet justifiable exemption to allow them to bring their congregation together to watch the Super Bowl," Specter (R-Pa.) said in a floor statement when he introduced the legislation Monday. "In a time when our country is divided by war and anxious about a fluctuating economy, these types of events give people a reason to come together in the spirit of camaraderie." NFL spokesman Brian McCarthy said that the league is reviewing the bill. Specter is also expected to raise the issue with NFL Commissioner Roger Goodell when he meets with him soon to discuss the league's investigation of the spying scandal involving the New England Patriots. Other legislators are also weighing in. Rep. Heath Shuler (D-N.C.), a former Redskins quarterback and evangelical Christian who has spoken at church Super Bowl parties, plans to introduce legislation similar to Specter's in the House by the end of the week, a Shuler spokesman said yesterday. And Rep. Paul Broun (R-Ga.) said he is talking to the NFL about coming up with a legislative or nonlegislative solution to the situation. Broun spokesman Derek V. Baker said Broun has received numerous calls from constituents in his Bible Belt district expressing concern about how the law would affect their churches' Super Bowl events. "We just want to make sure that churches are not being unfairly discriminated against," Baker said. "We want them to be treated fairly." This week, a group of Christian leaders also wrote to Goodell, calling on the NFL commissioner to allow churches to show league games on their large television screens. "The NFL allows the Super Bowl and other NFL games to be aired on Sundays in bars and even in casinos as hundreds stand by gambling on the outcome," the letter said. "Yet it is churches the NFL chooses to crack down on?" The NFL needs to "rethink the whole process and what they're trying to accomplish," said Gary L. Cass, chairman of the San Diego-based Christian Anti-Defamation Commission. Others who signed the letter included Paul M. Weyrich, chairman of the Coalitions for America, and the Rev. Louis P. Sheldon, chairman of the Traditional Values Coalition. NFL spokesman McCarthy said that as long as churches do not charge for the event and do not use televisions that exceed the 55-inch maximum size set out in the copyright act, "we have no objection to special, one-time Super Bowl parties, whether at churches or any other location."

It is hard to see how churches are being discriminated against or treated unfairly as Representative Baker wondered, if, as the NFL stated, the same rule, a maximum of a 55 inch set, applies to everyone. That size is of course arbitrary, and is based on the exemption in Section 110(5) for a “single receiving apparatus of a kind commonly used in private homes.” That size is increasing along with mortgage defaults, but so long as the standard is a flexible one, adaptable over time, the size will never be fixed. (Certainly was provided for the size of the venue in the 1998 amendments to Section 110(5), but those amendments led to an adverse WTO panel ruling). The purpose of the initiative seems to be to treat churches more favorably, not to reverse treatment that unfairly singles them out.

Here is the text of the bill, which seeks to amend Section 110(5):

Section 110(5) of title 17, United States Code, is amended-- (1) in subparagraph (A), by inserting `or (C)' after `(B)'; (2) in subparagraph (B)(v), by adding `or' after the semicolon; and (3) by adding at the end the following: `(C) communication by an entity defined under section 3121(w)(3)(A) or (B) of the Internal Revenue Code of 1986 of a transmission or retransmission embodying a performance of a professional football contest intended to be received by the general public, originated by a radio or television broadcast station licensed as such by the Federal Communications Commission, or if an audiovisual transmission, by a cable system or satellite radio, if-- `(i) no direct charge is made to see or hear the transmission or retransmission; `(ii) during the communication no money is accepted or received by the organization; and `(iii) the transmission or retransmission is not further retransmitted by the establishment where the transmission or retransmission is received.'.

Here are Senator Specter’s remarks in introducing the bill:

Mr. SPECTER. Mr. President, I rise to introduce legislation which would modify the limitations on churches showing the Super Bowl under the NFL copyright franchise. Churches across the country were notified by the NFL not to show the Super Bowl on a big screen because it infringed their copyright. There is an exception under the copyright laws for bars. It is anomalous that you can go to a bar and see the Super Bowl, but you cannot go to a church for a social gathering and do the same. This legislation will correct that. Mr. President, I ask unanimous consent that my full statement be printed in the Record: Few images are more distinctly American than that of a religious community coming together not only in prayer but in fellowship to watch a major sporting event. For years, houses of worship across this country have opened up their doors and welcomed their congregation into their halls to watch the Super Bowl. They have provided families with an alternative to going to the local bar down the street to cheer for their favorite team. However, if the National Football League has its way, such gatherings will come to an end. A strict reading of the copyright code prohibits virtually anyone from bringing a large group of people together and watching the Super Bowl. The one exception to this general rule is ``food service and drinking establishments.'' This exemption allows sports bars to show a sporting event, so long as they do so on screens that do not exceed fifty-five, 55, inches. Although the law is nearly impossible to enforce for Super Bowl parties held in places other than food service and drinking establishments, the NFL has turned its sights on churches and other houses of worship, which use the large screens normally reserved for displaying hymns to show the Super Bowl to their congregation. Over the past several years, the NFL has begun sending churches across the country cease-and-desist letters, warning them not to show the game on their big-screen televisions and threatening them with a copyright infringement suit if they do. These religious establishments--many of which do not have enough money to even think about defending themselves against a giant such as the NFL--have had little choice but to shut down these gatherings. This is unfortunate because many houses of worship have used these events to reach out to their members, as well as
potential new members, particularly young people. As Reverend
Thomas Omholt, senior pastor of St. Paul's Lutheran in Washington, DC, stated in a recent Washington Post article, ``It takes people who are not coming frequently, or who have fallen away, and shows them that the church can still have some fun.'' These churches do not charge their members to watch the game nor have they used them as fundraisers. Rather, these events provide churches with a means of connecting with the greater community and new potential members of their congregation. The uniqueness of these events is underscored by the fact that these churches do not use the Academy Awards or other popular television programming as a means of outreach. When Congress created the sports bar exemption in 1998, they did so based on the rationale that the display of copyrighted performances--such as football games--in sports bars and similar establishments did not negatively impact the overall viewership for the game and value of the rights to the game. The same rationale applies to churches. Allowing churches to show the game would not diminish the overall viewership for the Super Bowl. If anything, it increases the viewership by making it a social event and bringing people out to watch the game who might not have watched it at home or in a bar. Today, I am introducing legislation that will create a new
exemption for religious establishments. This legislation will
provide churches and other houses of worship with the protection that they need to gather to watch the Super Bowl without fear of being sued for copyright infringement. This exemption will have limitations. For example, in order to qualify for the exemption, a church may not charge a fee to view the game. This will ensure that religious establishments do not unfairly profit from the NFL's copyright. Further, the exemption only applies to the live broadcast of a professional football game at the church or house of worship. A church may not tape the game to show at a later date or rebroadcast the game to another location. In other words, the legislation simply provides churches with a limited yet justifiable exemption to allow them to bring their congregation together to watch the Super Bowl. I am aware that some may argue that this bill implicates constitutional concerns. This is not the first time that we have recognized the unique needs of the religious community in the Copyright Code. Indeed, the section of the Copyright Code that we are amending already has an exemption for houses of worship and other religious assemblies for the use of copyrighted works of a religious nature. Although the Constitution does not require the creation of an exception in this case, it is reasonable to pursue one. In preparing this measure, my staff has researched the issue and spoken with some of the foremost experts in the field of First Amendment law. They share our view that this legislation appears
consistent with the Establishment Clause of the Constitution.
This legislation will not further entangle Government with religion but instead accommodates the needs of houses of worship and recognizes their important role in the communities they serve. In a time when our country is divided by war and anxious about a fluctuating economy, these type of events give people a reason to come together in the spirit of camaraderie. We, Congress, need to recognize the unique need that these events satisfy and provide religious establishments with the protection that they need. I urge my colleagues to join me in this effort.

It is difficult to see how there is a religious imperative that churches need to have a TV screen 200 inches large to have their congregants watch the very secular Superbowl (think the religious groups' uproar about the infamous wardrobe malfunction) while, say, the Elks or the Moose (or any other fraternal organizations named after animals with large horns) have to be satisfied with 55 inches; I assume members of those groups are pretty chummy with each other too, exhibiting the requisite “spirit of camaraderie” and solace in these difficult times. This is not to say that all nonprofits groups shouldn’t be able to watch free broadcast sports games with a 1,000 inch screen so long as there is no direct or indirect benefit obtained; it is only to note that churches seem an odd choice for such manna. One could truly without discrimination amend Section 110(4) to treat all nonprofit groups the same, something that would definitely withstand constitutional challenge.

I don’t know the esteemed First Amendment experts consulted, but it should be noted that the only copyright law ever struck down as unconstitutional was one struck down on Establishments grounds, United Christian Scientists v. Christian Science Bd. of Directors, First Church of Christ, Scientist, 829 F.2d 1152 (D.C. Cir. 1987)(extending the term of protection for the works of Mary Baker Eddy).