My new blog

I launched a new blog today, called Moral Panics and the Copyright Wars. Here's the link. The blog is based on a book I just published of the same title, available here and here.

Rocky Mountain Ratings

A recent decision by a district court in Colorado, Health Grades, Inc., v.  Robert Wood Johnson University Hospital, Inc. (HT to Eric Goldman and Mike Masnick at Techdirt) raises once again courts’ confusion over foundational holdings by the Supreme Court in its 1991 Feist compilation opinion, confusion that has resulted in inappropriate extension of copyright to facts, prices, and ratings. In the Colorado case, the opinion was on a Rule 12(b)(6) motion to dismiss, meaning that there has been no decision on the merits of the protectibility of the material in question, and also meaning that there can be no present appeal.

 The Colorado case is hardly the first time a ratings company has sought to stop another company  from publicizing a favorable review. An early, pre-Feist opinion, Consumers Union of  United States, Inc. v. General Signal Corp., 724 F.2d 1044 (2d Cir. 1983),  vacated a preliminary injunction against a vacuum manufacturer which quoted accurately from plaintiff’s review. Here are the quotations used:

-“Regina Powerteam-far ahead of the pack in cleaning ability.”

-Of all the lightweights tested “only one worked well.”

-On medium pile carpeting Powerteam “did the job with the least effort.”

-In fact, it's the only one Consumer Reports calls an “adequate substitute for a full-sized vacuum.”

On appeal, the Second Circuit observed, “In truth, CU is not really objecting to Regina's copying CU's expression. The statement of policy in its magazine and its position in its brief before us is that any mention of CU in commercial advertising will diminish its effectiveness as an unbiased evaluator of products.” Based on this, it is not surprising the court of appeals vacated the injunction, but it did not examine what was copyrightable in plaintiff’s work, probably because the quotations were from an article. The copying was de minimis at best, but the decision rested on fair use.

The facts in the Colorado case were described this way by Judge Kane: 

“Health Grades is a Delaware corporation based in Golden, Colorado.  It is in the business of developing and distributing objective ratings of hospitals, physicians and other healthcare providers.  Its “1-3-5 Star” ratings and provider awards are based on data and information obtained from a variety of sources, most of which are publicly available.  Health Grades determines its ratings and awards for individual providers by analyzing these data using its own proprietary methodologies. Health Grades publishes its ratings and awards for healthcare providers, along with other information, on its website.”

“Members of the public may access and view the ratings, awards and other information on Health Grades’ website by executing a “click-through” Limited License and User Agreement  (Limited License) set out on the website.  The Limited License grants “a personal, revocable,

nonexclusive, non-transferable license to access and view this Site and the Site Materials, and to copy, download, store and/or print only a single copy of any Site Materials, solely for your non-commercial use and not for resale or distribution to anyone else.”

“RWJ is a hospital located in Hamilton, New Jersey.  From 2004 through 2006, RWJ,  through its authorized employees, accessed the Health Grades website more than 200 times after entering into the required Limited License.  RWJ then proceeded to use materials from the

Health Grades’ website, specifically including Health Grades’ name and the ratings and awards it had given RWJ, in at least nine press releases and articles promoting the hospital and/or its services.  Health Grades’ name and its ratings of and awards to RWJ were also published on the

RWJ Hamilton website.  RWJ did not have permission from Health Grades to use its name, ratings or awards in this manner. “

 

In rejecting defendant’s argument that the ratings are facts, and therefore unprotectible, the court held:

“According to its complaint, Health Grades’ healthcare ratings for RWJ and other medical providers are a product of Health Grades’ collection of data and information from a variety of sources, which it then analyzes and weighs using its own proprietary methodologies to produce a Health Grades’ rating of 1, 3 or 5 stars and/or awards for each healthcare provider reviewed. These ratings and awards are not, therefore, facts “discovered” by Health Grades in the manner described in Feist, but rather are expressions created by Health Grades.  These ratings only exist because Health Grades has selected, weighed and arranged facts it has discovered to present the collected data in a form, Health Grades’ ratings and awards for specific health care providers, that can be used more effectively by the reader to make judgments about providers.  Taking Health Grades’ allegations as true, therefore, its healthcare provider ratings are independent creations by Health Grades and display at least the minimal degree of creativity necessary to be deemed original expressions.”

The court confused Feist’s holding that an original selection, coordination, or arrangement of facts is protectable as a compilation, with protection for the facts themselves. Originality will always be the result of judgment, artistic, or otherwise, but not all exercises of judgment are copyrightable. The judgment that this is the best route to go home is no more protectible than a judgment about what a fair price is for a coin, a car, a commodities futures contract, or how many stars a hospital deserves.

 To be fair to Judge Kane, he relied on an opinion by the great judge Pierre Leval in CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc. , 44 F.3d 61 (2d Cir. 1994). CCC Information Services proves that even the great have not so great days, and Judge Leval would, I believe, agree that the opinion was not successful. In reversing a district court opinion that had found that the Red Book was unoriginal, the court of appeals held:

The district court was simply mistaken in its conclusion that the Red Book valuations were, like the telephone numbers in Feist, pre-existing facts that had merely been discovered by the Red Book editors. To the contrary, Maclean' s evidence demonstrated without rebuttal that its valuations were neither reports of historical prices nor mechanical derivations of historical prices or other data. Rather, they represented predictions by the Red Book editors of future prices estimated to cover specified geographic regions. According to Maclean's evidence, these predictions were based not only on a multitude of data sources, but also on professional judgment and expertise. The testimony of one of Maclean' s deposition witnesses indicated that fifteen considerations are weighed; among the considerations, for example, is a prediction as to how traditional competitor vehicles, as defined by Maclean, will fare against one another in the marketplace in the coming period. The valuations themselves are original creations of Maclean.

 

In the end, however, the decision properly turned on the originality of the Red Book as a compilation—and therefore an infringement—of the compilation authorship, and thus the court's discussion of valuations as individually protectible is dictum. The dictum is erroneous. Judge Leval' s basic point—that valuations are constructed not discovered—is true enough, but not determinative. Protection is not based on one being merely the originator of the material in question: If that were true, protection could be granted to ideas, methods of operation, systems, and the like. Instead, to be an “original work of authorship,” the material must also (1) not be de minimis, and (2) not be an idea, method of operation, or the like. Prices fail on both counts, as the Copyright Office observed in Examining Division, Literary Online Practices, Chapter 20. C.II. D.3.d (2003): “Prices are not generally considered copyrightable because the determination of prices is considered a business decision and thus they represent facts”).  The Office also later criticized CCC Information Services in a  May 25, 2005 “Statement of Interest of the Register of Copyrights” submitted in New York Mercantile Exchange, Inc. v. IntercontinentalExchange, Inc., 389 F. Supp. 2d 527 (S.D. N.Y. 2005), where the court held: “The argument that NYMEX settlement prices do not embody facts is without merit. The numerical settlement price that arises from NYMEX' s judgment and discretion rejects no more than pure fact or idea of the present price of a futures contract. Regardless of the judgment and creativity involved in determining each NYMEX settlement price, there is plainly only one settlement price . . . Moreover, because NYMEX's settlement prices are the actual prices and are the only way to express the idea of a settlement price stated in numbers—the expression of the price is therefore not sufficiently distinct from the idea of the price to warrant copyrighted protection.”). See also Miracle Blade, LLC. v. Ebrands Commerce Group, LLC., 207 F. Supp. 2d 1136, 1150–1151 (D. Nev. 2002) (“Plaintiff's allegations that defendant copied plaintiff’s price should also not be considered since price is a non-copied plaintiff’s price should also not be considered since price is a non-copyrightable fact.”); Project Development Group, Inc. v. O.H. Materials Corp., 766 F. Supp. 1348, 1354 (W.D. Pa. 1991), aff’d, 993 F.2d 225 (3d Cir. 1993) (“The quantities estimated and prices selected, by nature of the estimate and bid process, do not possess the requisite originality under the copyright laws.”).

Judge Kane also relied on a 9^th Circuit opinion, CDN Inc. v. Kapes, 197 F.3d 1256 (9 Cir. 1999), which confusingly stated the question presented as follows:

Whether CDN's selection and arrangement of the price lists is sufficiently original to merit protection is not at issue here. CDN does not allege that Kapes copied the entire lists, as the alleged infringer had in Feist. Rather, the issue in this case is whether the prices themselves are sufficiently original as compilations to sustain a copyright.

This passage is hopelessly contradictory. The first sentence seems to indicate the court was not evaluating the work as a compilation, a conclusion heightened by the reference to “the prices themselves.” This view is undercut by the Court's final statement of the issue as whether there is sufficient originality as a compilation. Later in the opinion, the court states that “the prices listed are not mere listings of actual prices paid; rather they are CDN's best estimate of the fair value of that coin,” but in the next paragraph the court stated “Our holding that the prices are copyrightable is consistent with . . . CCC

Judge Kane’s holding on the contract claim is worth a separate discussion; while he found the claim preempted under the Copyright Act, he held that a contract claim might not be preempted based on a promise not violate trademark law. One can appreciate plaintiff being irked by defendant’s use of its rating, but the Copyright Act should not be abused to stop what is, even according to Judge Kane, a preempted contract claim.

My "new" fair use book

West Publishing just put out a "new" treatise of mine on fair use in copyright. Here is a link to buy it ($200, free shipping!). "New" is in quotes because the book goes back to 1985, when BNA published the first edition. The book got off to a good start: the week after it was published the Supreme Court cited it in its Harper & Row, Publishers v. Nation Enterprises opinion, the case about the Nation magazine's unauthorized publication of excerpts from former President Gerald Ford's memoirs before those memoirs were published. The Court later cited it in the 2 Live Crew parody case, as have lots of lower courts. In 1995 a second edition was published. But the book languished beginning in the late 1990s and went out of print. I discovered it was out of print in a funny way: I was asked for two copies of it by an erstwhile client. I called up BNA and asked for the copies. They said they doubted they had them because the book was out of print and they had destroyed all the copies. This was news to me, but at least all rights reverted to me. (This didn't include, btw, the electronic files which were on a funky proprietary system).

In my contract for the book with West, the problem of not notifying the author when the book goes out of print is well taken care of: under the rights given to West for the "new" book, the book can't ever go out of print even if West decides never to publish another copy and pulls it off of Westlaw. Gone, apparently, are the days when authors had their copyrights revert when the book goes out of print, but let's thank our stars for the termination rights in Section 304.

Anyway, to continue the saga of the out of print fair use book. In 2007, West published the 7 volume, 6,000 page general treatise on copyright I wrote. Given that the fair use treatise was out of date, I folded into that general book most of the old fair use treatise as Chapter 10, revised and updated to about 500 pages. (Since I didn't have the electronic files, see above, this meant OCR'ing the hard copy and a lot of clean-up work).

I have come to think though, given the increased importance of fair use, and the fact that the fair chapter was lost amongst the 6,000 pages of the larger treatise, that I should spin it off into its own book again, so that's what this "new" book is. While it remains part of the 6,000 general treatise, the spin off has two new chapters not found in the general treatise. One chapter is on the early 18th century English cases from whence fair use arose, and the other chapter is on current international issues. The old English cases are both interesting and important for showing the boldness of the common law judges in forging the doctrine. I expect to expand the international chapter in the next edition given the increased importance of limitations and exceptions and the debates about the three-step test.

The book will be updated once a year and will be reissued every year as a new soft copy to avoid those ultra-annoying pocket parts as well as loose-leaf inserts.

Barbara Ringer

Former Register of Copyrights Barbara Ringer died this morning at 83. A very private person, there will be no ceremony. It is impossible to overstate Barbara's contributions to U.S. copyright law, including her highly distinguished service as Register of Copyrights from 1973-1980 and as Acting Register from 1993-1994. A career Copyright Office lawyer, she worked with the legends of the Office, including Abraham Kaminstein and Arthur Fisher. Her knowledge of both U.S. and international copyright law was breathtaking and unsurpassed, making me look like a pisher. There was no one who knew more about arcana, such as renewal, the manufacturing clause, and conceptual separability. The regulations, which she and then General Counsel Jon Baumgarten drafted on passage of the 1976 Act to implement that Act involved a herculean effort, and it was hardly the only one going on at the time: an 1,100 page report to Congress performance rights was also being prepared and was issued in June 1978. But she was also a big picture person, with moving law U.S. so that we could eventually join the Berne Convention as a top goal, one widely shared within the Copyright Office; she assisted with that effort even after leaving the Office.

Its not that things came easy for her; they didn't. Barbara had to sue to get her position as Register. But Barbara had personal and political skills that could meld together the contentious factions that threatened to tear apart every compromise in the 20 year road to passage of the 1976 Act. Her influence with the Congressional committees was unrivalled, especially in the House of Representatives, where Chairman Robert Kastenmeier had a warm, trusting relationship with her, a relationship made possible by Barbara's impeccable integrity, her concern that every voice be heard, her refusal to let an injustice be done but her pragmatic willingness to take less than what she might want for the greater good. She also was not afraid to speak her mind, especially on behalf of authors, the real authors. While one hears, constantly, corporate chieftains claiming that they're out there fighting for the creators, we all know that is b.s.: the creators are merely an expense item on a balance sheet, to be reduced as much as possible. We also hear politicians make similar paeans to creators, yet when was the last piece of legislation that was passed that benefited creators at the expense of corporations? When was the last time you heard a government official suggest such a thing?

Barbara did. In what is, I believe, the most arcane copyright case the Supreme Court has heard, Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985), the Court, in a 5-4 decision, rules against the songwriter in favor of the music publisher in interpreting Section 304(c)(6)(A). In brief, the question was who receives the royalties from exploitation of a derivative work prepared during the term of the grant, after termination? It was clear that during the term of the grant, the songwriter received royalties according to his or her contract with the music publisher. But what after the songwriter terminated the music publisher's contract? Did the songwriter receive 100% of post-termination royalties, or, would the songwriter continue to receive royalties according to the contract? (The derivative work, in that case a sound recording of the song, could be exploited post-termination because the statute says so). The Second Circuit, per the great Judge James Oakes held for the songwriter, but the Supreme Court reversed.

Barbara was outraged, and testified before the Senate about the Court's error and the injustice it worked to authors. About music publishers, she said that had not bargained for the post-termination windfall and had done nothing to deserve it. We shall not see the likes of Barbara again; farewell.