Tuesday, March 23, 2010

The Singaporean Cablevision Case

Many countries around the world are wrestling with similar, evolving copyright issues in response to new digital technologies. In facing common issues, courts sometimes share insights, but when they do, it's critical that they recognize the full procedural context of a decision from another country, as well as specific substantive legal elements. A recent opinion in Singapore regarding remote storage DVRs shows this danger. Although the facts are complicated given the change in the system in question over time, at bottom the Singaporean litigation – against RecordTV – is for most purposes the same case as the remote storage DVR dispute, Cartoon Network v. Cablevision, decided by the Second Circuit, and in favor of the defendant, Cablevision.

In reading the Singaporean judgment below – a very comprehensive one by Justice Ang -- one gets to the end expecting the same result as in the Second Circuit, only to find judgment for plaintiff. Hopefully, the High Court will reverse. The disparity between the trial court’s findings of fact and its conclusions of law, as well as a misreading of Judge Walker’s opinion in Cablevision, are responsible for much of the disconnect. The principal misreading was based on the posture of Cablevision: a direct infringement suit against Cablevision, rather than as inRecordTV, a secondary liability suit. This posture was the result of the plaintiff’s fear – justifiably – that they would have lost on a secondary liability claim because of the Supreme Court’s Sony opinion: users of Remote Storage DVRs are engaging in fair use, and just like VCR manufacturers, those supplying Remote Storage DVRs are supplying a staple article of commerce that has substantial non-infringing uses. Plaintiffs claiming otherwise bear the burden of proving infringement.

Nothing in the Second Circuit’s opinion is contrary the conclusion that on the facts, a claim of contributory infringement would have failed; indeed, during oral argument it was quite clear to me the court of appeals would have held for Cablevision had the case been brought as a secondary liability case. Judge Ang thought to the contrary, and he was in this regard, I respectfully submit mistaken. He certainly was mistaken as a matter of Singaporean fair use law, given the statutory provision permitting consumers to make “a cinematographic film of [a] broadcast or cable programme for . . . private and domestic use.”

One could understand Judge Ang’s opinion if he had found that RecordTV and not consumers make the copy, but he didn’t: he agreed with the Second Circuit that users, not RecordTV make the copies. Yet, Judge Ang found RecordTV liable for “authorizing” infringements by the users. Authorizing a fair use cannot form the basis for a finding of contributory infringement since there must be a primary infringement to contribute to. Perhaps the court was influenced by the number of people who can access the service, a possibility that is heightened by its finding that RecordTV was engaging in a public performance. However, two million private performances do not make one public performance, no more than gathering together in an unoriginal way two million uncopyrighted facts results in a copyrighted compilation, as we learned from the Feist opinion. A stream that can be seen only by one viewer is a private performance, else the very distinction between public and private would be erased.

Thursday, August 06, 2009

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.

Saturday, July 18, 2009

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 9th 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.

Monday, June 08, 2009

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.

Thursday, April 09, 2009

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.

Sunday, November 30, 2008

In Memoriam Sir Hugh Laddie

Baruch dyan ha-emet. “Blessed is the Judge of Truth,” is an expression uttered when one hears news of a terrible loss, especially death. It is the expression I used when I heard of the death of Sir Hugh Laddie, zikhrono livrakha.

Sir Hugh was buried today in London. He was born in 1946. His mother is, I believe still alive at the age of 91. Though he didn’t learn a great deal of Yiddish, his mother was fluent in it: when her grandparents fled Russia to England, the only way to communicate with them was in Yiddish. His father died some time ago, but this last year was the first Kol Nidre he had missed, due to his health. Although Hugh did not accept the existence of a divine spirit, Kol Nidre had been for him a day of intense family bonding, and so the inability to go to it this last year was a source of regret.

When I stopped my blog, Hugh posted a comment urging me to resume. I haven’t resumed it , but the loss of my dear friend warrants a farewell.

Sir Hugh studied at Aldenham School and St Catharine's College, Cambridge. In 1980, he and his co-authors Peter Prescott and Mary Vitoria published the first edition of their landmark treatise, The Modern Law of Copyright and Design. (Last year a fourth edition was published). At the time it was seen as a quite courageous thing to do because the existing standard textbook in England - Copinger and Skone James - was taken for granted. At the time of Hugh’s treatise, there was no perceived need for anything else. Paul Torremans, reviewing the third edition in EIPR in 2001, described some of the chapters as revolutionary: they dared to have views that did not jibe with the status quo, and to express those views publicly.

After being called to the bar, Sir Hugh also performed valuable public service: in 1992 he was appointed Vice Chairman of the Copyright Tribunal, a statutory body that settles disputes between collecting societies and users of copyrighted works over royalty rates. In 1986, he was appointed a Queen’s Counsel (having been called to the bar in 1969). From 1981 to 1986, he served as a counsel for Her Majesty’s Treasury, a capacity in which he represented the British Government and the British Patent Office in all areas of Intellectual Property law litigation.

After 25 years as a successful IP barrister (during which he developed a well-deserved reputation as an expert patent and trademark lawyer too), he was appointed a Justice of the High Court in 1995, hearing cases in the Chancery Division and Patents Court (which includes copyrights).

On the bench, he continued the honesty and humor that was as much a part of his personality as his searing intellect and personal warmth. Here, for example, is an excerpt from a BBC story, about a dispute between two bands:

The judge in a court case involving two groups called Blue has been demonstrating his knowledge of the finer points of the pop and rock world.

Mr Justice Hugh Laddie is in charge of the case in which pop act Blue are being sued by a 1970s rock band of the same name. The original Blue want to prevent them from using the name, saying their own career and reputation is being damaged. They are suing the contemporary boy band and their label EMI/Virgin, for up to £5m.

As proceedings began at the High Court, Mr Justice Laddie defied the image of Britain's crusty, out-of-touch judiciary with some pithy examination of counsel. The judge - known for his broad taste in music - appeared surprised when the older band's barrister said their reputation was being threatened.

"Are you seriously saying that fans of one group would mistake one for the other?" he asked Charles Purle QC.

“There is somewhat a difference of appearance. One is aged like you and me, the other is a boy band." Mr Purle said: "My clients were a boy band in the 1970s."

The judge replied: "Oh no. Boy band is a style of music that is a bit more recent than the Charleston."

He resigned in 2005, the first High Court judge to do so in 35 years. His resignation caused a furor (in British spelling "furore," signifying a great degree of sturm und drang than the shorter, more base U.S. emotion). An article in the Times Online awhile after his resignation, a few wonderful quotes from Sir Hugh:

I was at the Bar for 25 years. I had a truly stupendous time. I still think, if you’re lucky and get a good practice, it’s a great job.” But with the heavy and tiring workload — “it was the only thing my wife and I would argue about” — he had no doubt about becoming a High Court judge. “There was only one direction — down. You can’t stay at the top for ever.”

For the first five years, he enjoyed it. But aspects jarred. “One thing is that you are really isolated. You can go all day without speaking to another judge.” So he set up a common room where judges could meet weekly for teas. Laddie, who was senior judge of the Patents Court, also believed strongly that the courts should serve litigants, not the profession. “That meant I was determined to try to cut costs to a point where I used to irritate people.

“Everyone has egos — it’s a matter of how difficult you find it to control.” Laddie did not endear himself to counsel when, at the start of a case, having read the papers, he would make clear his preliminary views. “Obviously I had provisional thoughts — it would be amazing if I didn’t. Some would say: he’s made up his mind. I hadn’t, of course.”

Laddie also objected to sitting on Chancery cases beyond his expertise. Had he taken a case outside his field at the Bar, he’d have left himself open to a negligence action, he says. But the moment he was a judge he was expected to do just that. “It was challenging — like high-wire walking — but I didn’t think it fair for clients to be learning at their expense.” Most worrying were the cases involving unrepresented litigants, with applications “ in an area of law that I knew nothing about”.

Nevertheless, despite the extremely hostile reactions of some of his colleagues to his resignation, in July of this year, Sir Hugh defended the British judiciary: "They were not people who used quill pens. They're computer literate, savvy, quite ordinary, nice people and not hidebound traditionalists.”

Rather than retiring to the country and practicing his fly-fishing technique, Sir Hugh joined the IP boutique Willoughby & Partners as a consultant. In that capacity, I had the great joy to hire him in 2007 as an expert on UK law for an amicus brief I filed in a case involving Uri Geller. Plaintiff asserted that a resident of Pennsylvania who was a critic of Geller’s committed a violation of UK law by uploading an allegedly infringing video on to YouTube’s servers, from which the video was hosted for others to view. Sir Hugh wrote in his report, however, that “a finding of infringement through authorization is dependent upon there being a finding that the person who was authorized, committed an infringement of United Kingdom copyright by performing, in the United Kingdom, one of the activities set out in section 16(1).” He concluded: “It follows from this that if the primary acts of which the plaintiff complains took place outside the United Kingdom there cannot be infringement of British copyright. Alleging authorization makes no difference to this. It is not an infringement to authorize a non-infringing activity.” After I filed Sir Hugh’s report, plaintiff did not even bother to file an answer and the case was settled.

In addition to being a consultant to the Willoughby firm, Sir Hugh became Professor Laddie when, in 2006, he became a Professor of Intellectual Property Law at University College London. There he founded the Institute of Brand and Innovation Law (IBIL). He wrote me a note recently about this post:

I thought that being a Professor entailed nothing more than walking around looking sombre while talking in obscure English. Apparently there's more to it than that. There are lectures, exams, exam-marking and begging people for support funds. At least on the last issue I got some help from a friend. I had sent out a number of begging letters to various firms of lawyers and was having dinner with this friend. I told him what I had done. .. . He asked me whether I had telephoned all the people to whom I had sent a letter. I was horrified. I didn't think it was part of my job to actually phone people up and ask. He pointed out, not unreasonably, that most people do not respond to letters asking for money and that really what you have to do is to speak to them either face-to-face or on the phone so that they feel too embarrassed to refuse. … I have got quite used to it now. I have developed an extremely thick skin and, by English standards, I think I have been rather successful.

In connection with the University’s Institute of Brand and Innovation Law , in June of this year, he gave an interview on the question of piracy in China and made these remarks. (I would love to know whether they made their way to USTR):

China has become a scapegoat for the West’s intellectual property problems, a leading lawyer said today. Sir Hugh Laddie, a former High Court judge, said that although China had issues with counterfeiting and other forms of intellectual property theft, there was a “complete misconception” about the scale of the problem relative to other countries. Sir Hugh said: “Of course there is counterfeiting in China, but the same goes on in the US and Europe. Pro rata, the biggest source of pirated computer software in the world in the US.”

Sir Hugh’s courage extended to his decisions on the bench, most famously in the Arsenal case. Marty Schwimmer described Sir Hugh’s actions in the case this way,

A vendor sold scarves with the Arsenal football club name and indicia. The issue turns on whether use of a team name in such way is trademark use in that sense that the team name designates the origin of the good, or is the team name and logo merely decorative use in the sense that the wearer of the scarf is merely communicating allegiance to that team. It's my understanding that Laddie himself tends toward the latter view ... . Laddie referred the case to the ECJ. Now that the ECJ has ruled that of course it's trademark use, Laddie has refused to follow its decision, apparently relying on the fact that the ECJ made fresh findings of fact, something it had no power to do.

The court of appeals reversed him. Reversal by a higher court doesn't of course mean HL was wrong, only that he had the courage to point out the dangerous usurpation by the EU, an "Emperor Has No Clothes" statement that must have embarrassed the court of appeals. May we all emulate him. Nor did his opinion stem from antipathy toward EU rights. Quite the contrary, in his earlier, 2001 Burrell Competition Lecture, "National I.P. Rights: A Moribund anachronism in a Federal Europe," 23 E.I.P.R. 402 (2001), he concludes "Now that we are in a single market, our domestic economy is Community-wide. So should our I.P. rights be. ... I can only hope that the Community trade mark will prove such a success that users will vote with their feet and will use it to the exclusion of national rights."

In the field of copyright, two of Sir Hugh’s articles should be laminated and placed on your desk so they may be re-read often. The first is his 1995 Stephen Stewart lecture, "Copyright: Over-strength, Over-regulated, Over-rated", published in 18 European Intellectual Property Review 253 (1996). Sir Hugh began the lecture this way:

The purpose of this lecture, given in honour of the memory of a clever and perceptive copyright lawyer, is to consider the current state of copyright law in this country. Does it meet current commercial needs? My purpose this evening is to ask questions and possibly raise doubts. Copyright is one of the quartet of monopolies which form the core of what is now known as intellectual property law. The others, of course, are patents, trade marks and registered designs. I suppose that since the introduction of the unregistered design right in the 1988 legislation, there really is a quintet of such rights. Each, in its own way, places a fetter on the right of others to compete in the market-place with the originator of the right or his employer. Therefore, to some extent, each distorts trade.

If this were all, these monopolies would work against the interests of the public at large. At the simplest level it can be said that the existence of a monopoly enables the monopolist to increase his prices or restrict supply as he pleases. Of course, we know that that is much too superficial a view. It ignores all the benefits to the public at large which can flow from the increased creativity and investment which are the product of a well-balanced monopoly system. But we must always bear in mind that monopoly legislation is the end result of a balancing act: is the restraint on competition justified by the benefits which it gives to society at large? In this lecture I would like to consider this basic balancing act as it applies to copyright.

One of the areas where he felt the balance was out of whack was with the length of copyright and the low standard for originality, seen in this passage:

[A]s a result of the Term Directive, the copyright in the first category of works, that is to say, literary works and so on, is now life of the author plus 70 full years. This additional 20 years has been imposed throughout the Member States of the European Union to bring us into line with the domestic law of Germany. As is now familiar in copyright law, the process was one of leveling up the protection rather than levelling down. The result of this new term is that if, for example, a young computer programmer writes a new piece of computer software, he generates a monopoly which will normally last for over 100 years. Depending on his longevity, it may last more than 150 years. Similarly, if a politician writes letters or speeches which are of general historic interest, they also may be protected for a century or more. Indeed, if a modern-day architect were to design a new Albert Memorial, he would have the satisfaction of knowing that his copyright is likely to be sprightly and in the prime of life long after the concrete and steel of his architectural creation have started to crumble.

The question to be asked is: what justification is there for a period of monopoly of such proportions? It surely cannot be based on the principle of encouraging artistic creativity by increasing the size of the carrot. No one is going to be more inclined to write computer programs or speeches, compose music or design buildings because 50, 60 or 70 years after his death a distant relative whom he has never met might still be getting royalties. It is noticeable that this expansion of term is not something which has only occurred in the last decade. On the contrary, it has been a trend which has been in evidence for the whole of this century. Before the 1911 Act, the term of copyright in artistic works extended to seven years after the author's death. In 1911 this was extended to 50 years after death. The growth of term is in fact greater than these figures suggest. Life expectancy in 1910 was far shorter than it is now. The result is that a monopoly which was expected to last about four decades in 1910 should now be expected to last on average more than three times as long.

Indeed, I believe that the same criticism of excessive duration can be leveled at the 50-year flat term which applies to films, recordings and broadcasts. It may be possible to pick out a few creations of exceptional artistic or commercial merit where one could argue for lengthy protection - for example, the recordings of Rostropovich or the Beatles - but is it right that all copyright should be protected on the basis of what might be thought justified for the exceptional few? Furthermore, it is possible to argue that these long copyright terms are not necessary to protect the commercial exploitation of the works themselves. Most works protected by copyright are exploited very rapidly, if at all. This is so whether we are considering films and records or literary works such as computer software. Even books such as those that win the Booker prize are only commercially successful for a short time and then, to all intents and purposes, pass away. Yet the dead hand of copyright lingers on, in most cases serving no useful purpose.

Another of the problems with copyright law is that, unlike inventions protected by patent or designs protected by registration, the requirements for qualification are so low as to be virtually non-existent. Virtually any written material, any sketch and any film footage or sound recording is automatically protected. This has practical consequences. In Elanco v Mandops, the Court of Appeal accepted, as it had to, that a label of instructions placed on the side of a barrel of herbicide was a copyright literary work. No doubt depending on the youth of the literary genius who wrote it, the label will be protected for more than a century and perhaps for as long as a century and a half - certainly well beyond the date when for safety or commercial reasons the product has been removed from the market. So one of the troubles with copyright, then, is that it springs up to protect nearly every creation of the human mind, be it ever so trivial. As another member of the judiciary put it, the fact that our system of communication, teaching and entertainment does not grind to a standstill is in large part due to the fact that in most cases infringement of copyright has, historically, been ignored.

He criticized the insane criminalization of the economic tort of copyright infringement: “We have … reached the stage where taxpayers' money is being used to enforce private rights which many might think are more than adequately protected by civil remedies. I should also mention that it appears that in most cases it is not the poor and weak who are using these criminal provisions but the rich and well organised.” Importantly for the current debates around the world on air use versus fair dealing, Sir Hugh came out in favor of fair use, beginning with criticisms of the 1988 UK Copyright Act’s enumerated and lengthy list of possible fair dealings:

These detailed and pedantic exceptions to copyright protection, and their predecessors in the 1956 Act, are not only difficult to understand in some cases, but they also reinforce the perception that virtually all reproductions of copyright works, no matter how innocuous, are infringements. Is it surprising then, that when, for the purposes of advertising the film "Carry on Cleo', a poster was created which was a harmless but humorous spoof of a similar poster for the Elizabeth Taylor/Richard Burton film "Cleopatra', it was held to infringe copyright.

It would be possible to go on criticising the width of our copyright laws, but perhaps I have said enough. It might be more useful to inquire why our law has developed as it has. I have mentioned already the value and size of the industries which now believe they need extensive copyright protection to safeguard their income stream. They, quite properly, lobby for their interests. But who lobbies against them? There is no trade union of copyright infringers. Support for any limitation on copyright is easily portrayed as support for pirates - the usual pejorative global expression for infringers. It is depicted as support for the parasites of industry. Is it surprising, then, that the scope of protection gets ever wider? I suggest that the drafting of the legislation bears all the hallmarks of a complacent certainty that wider copyright protection is morally and economically justified. But is it?

Sir Hugh’s second speech, his inaugural talk as a professor at UCL, was delivered on December 4, 2007; it is entitled “The Insatiable Appetite for Intellectual Property Rights.” Alas, I do not think it has been published or is available online. In this talk, Sir Hugh noted a point deliberately obscured by the property rights rhetoric, that competition, not ownership is the natural state of affairs:

We believe in competition. It is competition which, by and large, delivers better and cheaper goods and services to the consumer. Competition is the whip
which drives traders to offer more for less to their customers. … If they don’t they will lose market share and profits to competitors who do. In our system, competition is king. It is the enemy of complacency. …

So where do IP rights fit into this? After all, they appear to undermine the very basis of our economic success. They hinder by creating areas of exclusivity. What are they supposed to deliver which justifies this subversion of the free market?

Sir Hugh’s answer was this:

The function of IP rights is to provide an economic incentive to goods and services, which, absent the would not exist or would take many more years to reach the market. They make up for a defect in the competitive system by supplying an incentive where otherwise there would be none.

This answer is orthodox, but here is how Sir Hugh ties the orthodoxy into his views on competition:

IP rights are the carrot to competition’s stick. Their purpose is not to displace competition but to modify it, to create sufficient economic incentive to justify the labour and investment in new products or art, but, after that incentive has worked its magic, to allow the normal forces of competition to have their way. … [O]nce the incentive has had its effect there is no further justification for its retention. It has done its work and competition should be allowed to return.

It is this last point that the property rights rhetoric wish to deny, but which Sir Hugh won’t allow. Sir Hugh concluded as follows:

We should be trying to hone the system so that the greatest rewards and encouragement go to
those industries which need and deserve them the most. Where IP rights perform their function of advancing the science or arts, they should be encouraged to do so. Where or to the extent that they do not, they have no justification and the normal discipline of competition should apply. The gluttony which has resulted in the growth of completely unnecessary or excessively long IP rights undermines the system itself. As Shakespeare wrote in Richard II,
--“With eager feeding food doth choke the feeder.”

We have lost a great treasure; a man whose erudition and practical experience rightly gave his views tremendous influence; a man whose honesty and candor was as rare as it is essential. Sir Hugh faced death as he did life, and we can learn from him in this too. He did not have a fear of death for himself, but instead worried about how his death would upset his beloved wife Stecia and children. Shortly his death he told me:

I am as greedy as the next man and want more of the fun and love-filled days that I have enjoyed in the past. But all these things come to an end at some time and I am not in a position to complain. I have a wonderful wife, three great children, six challenging and fun-filled grandchildren, have had a remarkably enjoyable career and have achieved more than I deserved and, last but not least, have a collection of wonderful and generous friends. What more could I ask for?

Friday, August 08, 2008

Restoring Old Posts

The voice of the people has been heard. I will restore the posts, hopefully by tomorrow. This is not what I would prefer, but I respect that almost everyone else feels differently, other than those anonymous posters who were happy for the blog to go anyway. As I mentioned before, because I laboriously deleted the posts one-by-one, I needed a tool to capture the actual URLs for each post, which isn't as easy as it sounds since the URL did not always match the title of the blog. Thanks to Peter Ecklersley, who developed very cool tool to capture the URLs, and the great Blogger support team, almost all have been recaptured. They were recaptured as drafts though and there are posting limits that have to be overridden, so some work needs to be done yet. I will also try and cross reference those posts that were not captured and add them later.

Because so many people wrote asking for an archive, I will also compile an archive and send it to those who asked for it. That archive will not contains comments because the actual posts will be available for people to access. Deleting the comments from the archived posts will helpfully reduce the size of the archive, and avoid unanswered questions about the status of comments.

Thanks all of you for your kind words, and I hope restoring the links will show will my appreciation.