Deficit Deposit Requirements and Subject Matter Jurisdiction

My criticism of Nimmer's wholly incorrect view that to satisfy the subject matter jurisdictional requirement of Section 411(a) have been discussed in this blog before and I won't bore readers with my reasoning again. Nimmer's erroneous view is that one need only submit an application, deposit and fee; one need not receive and actual certificate of registration or rejection. One reason for my disagreement is he plain words of the statute, but another is practical: what is the Copyright Office would reject, later, the application, because it learned that the deposit was not an actual copy of the work, but a reconstruction? This scenario has been played out in a number of circuit cases, most recently Tuesday by the First Circuit in Torres-Negron v. J&N Records, 2007 WL 2846117, which held that a reconstruction did not comply with Section 411(a) and therefore that the court lacked subject matter jurisdiction. Here is an edited version of the relevant discussion:

At the request of a friend who was looking for new material for his band to play, Fernando Torres-Negron wrote the music and lyrics to a song, Noche de Fiesta, in 1993. Torres gave his friend the piece of paper on which he had written the lyrics, along with a cassette tape containing a recording of Torres singing the song. The song eventually ended up on three CDs, distributed both in Puerto Rico and the continental United States. When Torres first learned of the distribution and sales of his song in 2001, he submitted an application for copyright registration with the Copyright Office, and filed this lawsuit for infringement. Although the case proceeded to trial and resulted in a jury verdict for Torres, the district court granted the defendants' motion for judgment as a matter of law.

There is no dispute about the district court's finding that Torres submitted a reconstruction of his original songs, created from his memory and without direct reference to his original works, to the Copyright Office. Because the Copyright Act requires that a “copy” be submitted along with an application for copyright registration, and not a reconstruction, Torres failed to submit a complete application for registration of his copyright. A complete application is a jurisdictional prerequisite to filing suit in federal court for copyright infringement. Therefore, we agree with the district court that it lacked jurisdiction over Torres' lawsuit. We also conclude that the district court did not err in denying defendants' motion for attorney's fees.

I.
Torres filed a copyright infringement action against numerous defendants, including J & N and other producers and distributors of each of the three records, in the District of Puerto Rico. At trial, the defendants moved for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a)(1) after the close of the plaintiff's case. The district court dismissed the claims against some defendants, but denied the motion as to J & N Records. At the close of all evidence, the remaining defendants renewed their motion, but the court reserved judgment and permitted the case to go to the jury. The jury returned a verdict in favor of Torres, finding that J & N had infringed his copyright on Noche de Fiesta.

Defendant J & N then filed a renewed motion for judgment as a matter of law, Fed.R.Civ.P. 50(b), on a number of grounds. J & N argued that the district court lacked subject matter jurisdiction for two independent reasons: (1) the copy of Noche de Fiesta submitted to the Copyright Office was an invalid reconstruction (rather than a “bona fide” copy); and (2) Torres' application indicated that his song was not a derivative work, whereas J & N argued that it was an unauthorized derivative of an earlier merengue song. J & N also argued that the case was barred by the statute of limitations, that there was insufficient evidence to support the jury's verdict, and that the damages were speculative and unjustified.

The district court held that “a copy that is simply created or reconstructed from memory without directly referring to the original, known as [a] ‘reconstruction,’ does not comply with the deposit requirements of the Copyright Act,” and found that “Torres' deposits constitute impermissible reconstructions.” Torres Negron v. Rivera, 433 F.Supp.2d 204, 213-14 (D.P.R.2006). Therefore, the court concluded that the copyright registration was invalid, and because “copyright registration is a jurisdictional prerequisite for maintaining a copyright infringement suit,” it granted J & N's motion for judgment as a matter of law.

The court alternatively found that the jury verdict could not stand because “(1) Noche de Fiesta is an unauthorized derivative work not entitled to copyright protection; (2) Torres granted [the producer] an implied license to exploit the song[ ] Noche de Fiesta ...; and (3) the amount of damages awarded by the jury is untenable due to insufficiency of the evidence.”

Torres appealed, seeking reinstatement of the jury verdict. J & N cross-appealed, challenging the district court's denial of its motion for attorney's fees and costs. We affirm the district court's judgment dismissing the infringement claims, on the basis of Torres' failure to satisfy the deposit copy requirement for copyright registration. We also affirm the district court's denial of attorney's fees.


II.
...
“[N]o action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a); see also Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 (1st Cir.1994) (“[R]egistration of the copyright is a prerequisite to suit under the Copyright Act.” (citation omitted)). This requirement is often described as a jurisdictional one. See, e.g., Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir.2004) (“17 U.S.C. § 411(a) sets forth [a] jurisdictional prerequisite....”); Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003) (“Th[e] registration requirement is jurisdictional.”); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir.2003) (“Copyright registration is a jurisdictional prerequisite to bringing an action for infringement under the Copyright Act.”); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir.1990) (“The registration requirement is a jurisdictional prerequisite to an infringement suit.”). In order to complete the registration process, and receive a certificate of copyright registration, a creator must submit to the Copyright Office “a complete copy or phonorecord” of the work for which he seeks registration, often referred to as the “deposit copy.” 17 U.S.C. § 408(b). The Copyright Act defines “copies” as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Id. § 101

It is undisputed that the written lyrics and tape that Torres submitted as his deposit copy were not the originals that is, they were not the exact tape or piece of paper on which he first recorded the music or wrote the lyrics of the song. Indeed, the parties agree that Torres gave both the original lyrics and the first recording of the song to Cauelas. By the time he submitted his copyright registration application, he no longer had access to either the original writing of the lyrics or the tape recording of the song. Thus, in order to comply with the requirement that a “copy” of the song be submitted with the application, Torres reconstructed his original work from memory by singing the song, while clapping the rhythm, into a tape recorder. It was the reconstruction, made in 2001, that he submitted to the Copyright Office.

A. The Deposit Copy Requirement

The question before us is whether that reconstruction is a “copy” within the meaning of 17 U.S.C. § 408(b). The statutory definition of “copy” provides little guidance. It neither distinguishes between copies and reconstructions, nor specifies whether a copy must be made from an original. However, dictionary definitions highlight the difference between a “copy” and a “reconstruction.” Black's Law Dictionary defines a “copy” as an “imitation or reproduction of an original.” Black's Law Dictionary 360 (8th ed.2004). To “reconstruct” something is “to construct again; rebuild; make over,” or to “re-create in the mind from given or available information.” Random House Webster's Unabridged Dictionary 1612 (2d ed.1997). Given these definitions, a reconstruction is not a copy; a reconstruction is created without an original, whereas a copy is made from an original. Congress specified that a registration had to be accompanied by a “copy.” See Conn. Nat'l Bank v. Germain, 503 U.S. 249, 253-54 (1992) (“We have stated time and again that courts must presume that a legislature says in a statute what it means and means in a statute what it says there.”). Therefore, we agree with the district court that a reconstruction, created without access to or reliance on the original work, cannot constitute a “copy,” as that term is used in 17 U.S.C. § 408.

The only other circuit courts that have addressed this question have arrived at the same conclusion. In Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir.1998), the Ninth Circuit held that a “bona fide copy” is one that is “virtually identical to the original and ... produced by directly referring to the original.” Thus, reconstructions created from memory, without access to the original work, could not serve as valid copies for registration purposes. Id.
The Sixth Circuit adopted the same rule in Coles v. Wonder, 283 F.3d 798, 802 (6th Cir.2002). There, the plaintiff claimed that he had written the song “For Your Love” in 1982 and sued Stevie Wonder, alleging copyright infringement, after Wonder recorded and distributed a song of the same name in 1995. The plaintiff registered his song in 1990 and submitted a recording of the song, as his deposit copy, that had been recorded earlier that same year. He claimed that he no longer possessed an original (i.e., 1982) recording of the song. Wonder argued that the plaintiff's registration was invalid because the deposit copy was not a bona fide copy, but rather a recreation from memory. The Sixth Circuit agreed, following the reasoning of Kodadek, and concluded that the deposit copy would be valid only if it had been created from an original recording of the song. Id. at 802 (“[H]ad [the plaintiff] been able to establish that he made the 1990 recording after listening to an audio copy of his 1982 rendition of For Your Love, he could have met the deposit requirement and his copyright would be valid from the date listed on his application. Likewise, had he made his 1990 recording after reviewing a tear sheet or other written summary that dated from 1982, he could have satisfied the deposit requirement.”). The court also explained that a strict application of the word “copy” would serve to protect the rights of artists by encouraging prompt registration and preventing fraudulent claims filed after the commercial success of a work. Id.

Torres argues that Kodadek and Coles are distinguishable because each of those cases involved a dispute about who first authored the work and, therefore, who was the valid owner of the copyright. He further argues that the definition of “copy” adopted in those cases should, at most, be limited to cases involving disputes about authorship. Torres has cited no support for this argument. That is not surprising. It makes no sense to interpret the statutory requirement of a deposit copy differently depending on what factual issues are disputed in a given case. There is no valid reason, in our view, to assume that the legislature intended the word “copy” to be a chameleon, taking on different meanings depending on the context of the litigation.

GATT Restoration Teaser

Here is a GATT restoration teaser I have been thinking about for some time. Section 104A restores copyright to foreign works that fell into the public domain in the U.S. for failure to comply with U.S. formalities like lack of notice, lack of renewal, or in some cases for lack of national eligibility. Determining when a work is subject to restoration is governed in part by the definitions on Sections 104A(h)(6) and (8):

(6) The term “restored work” means an original work of authorship that — (A) is protected under subsection (a); (B) is not in the public domain in its source country through expiration of term of protection; (C) is in the public domain in the United States due to — (i) noncompliance with formalities imposed at any time by United States copyright law, including failure of renewal, lack of proper notice, or failure to comply with any manufacturing requirements; (ii) lack of subject matter protection in the case of sound recordings fixed before February 15, 1972; or (iii) lack of national eligibility; (D) has at least one author or rightholder who was, at the time the work was created, a national or domiciliary of an eligible country, and if published, was first published in an eligible country and not published in the United States during the 30-day period following publication in such eligible country; and (E) if the source country for the work is an eligible country solely by virtue of its adherence to the WIPO Performances and Phonograms Treaty, is a sound recording.34 ... (8) The “source country” of a restored work is — (A) a nation other than the United States; (B) in the case of an unpublished work — (i) the eligible country in which the author or rightholder is a national or domiciliary, or, if a restored work has more than 1 author or rightholder, of which the majority of foreign authors or rightholders are nationals or domiciliaries; or (ii) if the majority of authors or rightholders are not foreign, the nation other than the United States which has the most significant contacts with the work; and (C) in the case of a published work — (i) the eligible country in which the work is first published, or (ii) if the restored work is published on the same day in 2 or more eligible countries, the eligible country which has the most significant contacts with the work. If a work's source country is the U.S., there is no restoration. Eligibility for restoration is based on a number of factors, one of which is country of first publication. What is not always clear is when, for U.S. purposes there was a publication. This is the result of case law under the 1909 Act and a reluctance of U.S. judges to throw foreign works in the public domain for failure to comply with U.S. laws of which they probably knew nothing. The Ninth Circuit, as is its wont, addressed the problem in a manner that screws things up entirely. I refer to the Twin Books case, 83 F.3d 1162 (9th Cir. 1996), discussed previously here, which treats a foreign publication as not existing for U.S. purposes; for U.S. purposes, all that matters is first publication in the U.S., an event that could occur years later, and which may or may not involve complying with U.S. formalities.

Here is my GATT problem: Assume there was a first publication in Germany in 1935, without notice and without ever registering or renewing the work in the U.S. Assume that copies were distributed in the U.S. If nothing else occurred, that work would clearly be subject to restoration. Then, however, assume that in 1940, an exact, authorized edition was printed and published in the U.S.. There could be two scenarios here: (1) the 1940 U.S. publication did not comply with all formalities; (2) the 1940 U.S. publication did comply with applicable formalities.

Did the 1940 U.S. edition wipe out the ability of the 1935 German edition to be restored because the source country of the 1940 edition is the U.S.? There is nothing in a literal reading of Section 104A(h)(6) or (8) that says the 1935 work can't be restored because of the 1940 publication, but one could argue that on the date of restoration (which I say is January 1, 1995, but which others say is January 1, 1996) there was nothing to restore because the later 1940 authorized publication trumps the earlier publication. Yet, under a literal reading of the statute, the source country of the 1935 edition is under the statute France, not the U.S., and I think the statute treats the 1940 publication as meaningless since the work was already pd at the time under scenario (1). Under scenario (2), though, the work would have a U.S. copyright and the difference between restoration or not turns merely on the length of copyright (that is, is it measured from 1935 or 1940).


That's one scenario, under a reading of the statute that treats the publication overseas as a publication for U.S. purposes. Here is where Twin Books comes in, since it regards the 1935 publication overseas as a non-publication, and therefore the 1940 as the first publication, the U.S. becomes the country of origin, there is no restoration. That I think would cause the French to cry foul.

Is the Grass Greener on the VARA side?

VARA disputes are uncommon, and so we are blessed indeed with two recent ones. The first, detailed in yesterday's Wall Street Journal, involves Yahoo's1 Sunnyvale campus, near where I am I am hanging out this week in Mountain View. The second is from Chicago, and is reviewed in this article from the Sun Times.

Both disputes are even more unusual because they involve gardening or landscape art, neither of which are covered by VARA. It does seem to be the case, as Andy Warhol said that art is whatever you it is, although VARA defines art in a quite particular manner.

HT to Karen Lai and Peter V.

Kopyright and Kids Continued

My last planned post on efforts to expose children to copyright law concerns the Copyright Society of the USA. The Society states it is "dedicated to advancing the study of copyright law and related rights in literature, music, art, theater, motion pictures, television, computer software, architecture, and other works of authorship, distributed via both traditional and new media." To this end, the Society puts on excellent meetings at which copyright issues are discussed, holds a very entertaining annual meeting, and publishes a journal, of which I was once the Editor-in-Chief. The Society also has on its website a section devoted to "Copyright Kids." On the Society's website is a Copyright Basics and FAQs, which says this about fair use:

Unless you are absolutely sure, relying on the doctrine of "Fair Use" to avoid seeking Permission to copy a work is risky. Despite what you may have heard, there are no set rules about what kind of use is "fair" and what is "infringing." For example, using less than a certain number of words from an author's work does not automatically constitute fair use. Courts apply the four factors on a case-by-case basis, and one court's interpretation of the factors could easily differ from another's. Thus, it is often impossible to predict whether or not a court would find any given unauthorized use to be "fair." The best course of action is simply to seek permission for all copied material you intend to use.

In other words, kiss off fair use as a practical matter: you can sit around until Hell freezes over waiting for a response to your request, or if you get a refusal, and then what do you do? Why not use the work since the copyright owner said no, just like Nancy Reagan earlier told students.

There is also a quiz, one question of which asks the following:

You just saw the coolest video clip on the Internet, You want to download it and cut it into your own video that you have been working on. You will not use the entire video clip so it should not be a problem to use the music. True or False? If the student answers true, the student is told this is wrong. Students are told they may not copy the entire work (the facts however said the student wasn't doing so anyway), and then the students are cautioned that under fair use, one may use "a very small portion" of the work but even this will depend on the facts. If the student had read the above FAQ about fair use, he or she would already know never to rely on fair use. Where, for example, is a discussion of transformative uses, parody, satire, or cases which have permitted the copying of entire works?

There are a number of activities, including a pretend "Lincoln Middle Multimedia School Year Book, in which "Copyright Cat" helps students who want to put together a multimedia CD-ROM. The gist of the yearbook is that students have to ask permission and then follow the permission guidelines very very carefully.

The Copyright Society's effort is disappointing: it takes an extreme, and inaccurate view of fair use, and even so, urges kids not to rely on it anyway. The overall thrust is that copyright owners own all rights and if they license them, you better do what they say. I find it misleading to describe such efforts as education: they are propaganda, albeit propaganda copyright owners in good faith believe in. If you think this is a harsh assessment, read this statement from the "Why should I care about copyright" intro:

As the creator of your work, you should have the right to control what people can and cannot do with your work. In the United States - one of the world's biggest sources of creative works like movies, television shows, books, computer games, etc. -- this right to control your work has actually turned into big business, but that's what allows all the creative people around us to get paid for coming up with all the wonderful songs, shows, books, painting, movies and other great works that we enjoy. Just think of all the cool songs your favorite band wrote, the great books you loved reading, the plays, movies and television shows you love to watch again and again. These talented musicians, authors, illustrators and screenwriters deserve our respect and appreciation - and they deserve to make a living from the hard work they put into their creative works -- otherwise most of them wouldn't be able to produce as many (or any) of the songs, books, plays, movies and TV shows that you like. That's what copyright is all about. It reflects our appreciation for all the hard work that goes into creating "original works of authorship" and respect for the right of the creator of that work to control what people can and cannot do with it.
Naturally all of those creators themselves created every single part of every single work of theirs from scratch, without ever building on the work of others: if so, they were very hard workers indeed. And if you dare use more than a very small part of one of the works produced by a large multinational corporation in your Lincoln Middle School Multimedia Yearbook, you will kill the goose that laid the golden egg.

There is of course nothing requiring schools to adopt such efforts and hopefully they won't. In the current environment, I am doubtful all sides could sit down together and develop a consensus product: the Canadian experiment is one such failed example. I certainly don't think we should be teaching third graders about digital rightds management; whether there are other things at other grade levels that are properly a part of a schools' agenda, remains to be seen.

WIPO and Children

A recent post dealt with the transparent efforts of the Copyright Alliance to pass on the propaganda of its members as education to children as early as third grade. Recently, the World Intellectual Property Organization got into the act with its colorful 72 page booklet "Learn from the Past, Create the Future: The Arts and Copyright." The WIPO effort has a section on the public domain and other limitations (pages 40-47), a fact that distinguishes it from almost all other such efforts. The booklet even provides links to places where one can obtain access to pd or free use works. There are also features with young creators and good information about copyright basics. WIPO has made genuine efforts to present a balanced view.

My unease comes from the lengthy section on copyright infringement, including a page called "Game: Defending Authors and Performers," which attempts to teach children to distinguish between legal and illegal actions, prefaced with this statement: "You understand the purpose of copyright and related rights and want to respect the rights of authors and performers that you admire." Previous to this are conclusions like ""Piracy makes legal copies more expensive," and paragraphs about piracy taking away needed incentives.

It is not impossible to view the pages and pages of biographies of young authors as the prelude to the section on piracy. None of the young authors featured are however likely to have any piracy worries and thus one wonders why the heavy emphasis on them: could the idea of transference be at play, a desire to have children identify with young authors their own age and then transfer that identification to multinational corporate copyright owners? I don't defend piracy if defined as counterfeiting, but I think we have to be very careful not to manipulate young children under the guise of educating them.

Copyright, Divorce, and First Sale

Gill v. American Mortgage Educators, Inc., 2007 WL 2746946 (W.D. Wash. Sept. 19, 2007), illustrates how tangled a web copyright ownership can become when it is part of a small business. The court does such a good job of laying out the facts, that I reproduce them, in slightly edited form:

The two consolidated cases arise out of an acrimonious divorce. No. C07-5244 was originally filed by AME against Harjit Gill, in Thurston County Superior Court. Mr. Gill had the case removed to this Court. AME is a Washington corporation co-owned by Lisa Rosenberger, Mr. Gill's ex-wife and AME president, and Robert Rosenberger, Ms. Rosenberger's father and majority shareholder. Mr. Gill filed Cause No. C07-5229 against AME, Inc. Mr. Gill, a self proclaimed “world authority on accelerated [home] mortgage reduction strategies”, is an Australian citizen currently residing in Yelm, Washington. In 1995 while living in Australia, Mr. Gill published How to Own Your Home Years Sooner and created a software program that allows paid subscribers to track online his/her individual mortgage and equity. Both the book and software are part of an accelerated equity system designed by Mr. Gill to teach homeowners how to save money in interest payments by using the banking system to their advantage. This system was successful enough that upon moving to the United States, Mr. Gill decided to redevelop the book and software to make them applicable to the North American home mortgage market. ... ... A year later, in 2003, Mr. Gill redeveloped and branded the software as “Speed Equity” software (the “software”) and published it live on MortgageFreeUSA.com The software was registered with the Copyright office on June 1, 2007. ... That same year Mr. Gill published the U.S. version of How to Own Your Home Years Sooner (the “Book”), which was also sold on the website. He formed Mortgage Eliminators, LLC (“LLC”), a Washington limited liability company in 2003. The LLC was supported by Mr. Gill's speaking engagements, Speed Equity seminars and workshops, online software subscriptions, and book sales. ... In 2002, while trying to get the LLC off the ground, Mr. Gill met Ms. Rosenberger at a spiritual retreat and they began dating shortly thereafter. Mr. Gill and Ms. Rosenberger cohabitated, became pregnant with their daughter, and subsequently married in 2005. While dating Mr. Gill, Ms. Rosenberger began working in an administrative capacity at the LLC. She and members of her family, including Mr. Rosenberger, became minority shareholders of the LLC; Mr. Gill, however, remained the majority shareholder. Later, Mr. Gill met Perfecto Bobadilla-who would become AME's Chief Operating Officer, Bobidilla encouraged the formation of a corporation to better market and commercialize Mr. Gill's intellectual property, and to provide liability protection the LLC supposedly lacked. In May of 2006 AME was formed; the LLC dissolved in June of 2006. ... In forming AME the intention of the participants was that Mr. Gill would transfer his ownership in the intellectual property while Mr. Rosenberger and others made financial investments in the corporation. Presumably, the investors and Mr. Gill would share ownership of the corporation. AME claims that Mr. Gill transferred his intellectual property interest to the new corporation (AME). It relies on undocumented conversations between Mr. Gill and Mr. Bobadilla, Bobadilla ... and Mr. Gill's failure to expressly state that he was not surrendering his intellectual property to AME. .... Mr. Gill, however, states that when Mr. Rosenberger became majority shareholder Mr. Gill refused to transfer his intellectual property rights, which included the book and all of its physical copies and the Software. .... No evidence of an actual transfer of ownership to the corporation has been presented to the Court.... In 2007 Ms. Rosenberger filed for divorce. Just prior to filing of dissolution proceedings, it is alleged that Mr. Gill and the others decided that Mr. Gill would not be a shareholder in AME but that he would instead be an independent consumer advocate who could promote the corporate website with greater credibility. AME claims Mr. Gill is not an AME shareholder but rather a mere independent contractor. In the divorce proceeding the Thurston County Family & Juvenile Court concluded: 1. There is a prima facie showing that [t]he intellectual property of the books and on-line software is the separate property of Harjit Gill. 2. The intellectual property should be turned over to [him]. 3. The court does not have the jurisdiction to order the corporation to take any action or turn over any property.

The principal copyright question was who owned rights in physical copies of Mr. Gill's books. AME had physical possession of them, and there was no allegation that possession was unauthorized. In holding that Mr. Gill owned rights in the physical copies, the court declared the parties' evidence scant, albeit AME's even more scant. In the end, the court focused on who might have paid for the books' printing. Under the facts, that may have been all the court could so, but I'm not sure that paying for printing always equates into ownership of the physical object, as compared say, to a right of reimbursement for the printing costs.

Dead Musicians, New Performances

Zenph Studios is a North Carolina company that specializes in a very special area: what it calls re-performances of previously recorded performances. Its first product, a re-performance of Glen Gould’s famous 1955 Bach Goldberg Variations, is available here. I have had a number of versions of this famous performance: the LP; the original CD release; and, the recent triple CD set which couples the 1981 recording of the variations along with out-takes and commentary by Gould, available here. I highly recommend the triple set for Gould fans. His explanation for the tempi is insightful, and his off-beat humor is much in evidence (for good or ill).

The reviews of the Zenph recording of the 1955 performance on Amazon.com are decidedly mixed and I leave it others to form their own opinion after listening to it. One great advantage of the Zenph recording (aside from not having any of Mr. Gould's humming along) is that (unlike the other Gould releases), it is on the Hybrid SACD format, an amazing format which the record labels strangled on birth (along with DVD Audio).

Zenph, through its software attempts to reproduce the experience of hearing the original recording live. In the case of the Gould Goldberg variations, we are talking about a studio recording in monaural. The advantage then of the Zenph recording is that it attempts to expand the ambience of the sound experience. Some reviewers have applauded Zenph’s effort in this respect, while others deride it as artificial and note the differences between the piano used by Gould and by the Zenph engineers (e.g., a Yamaha Disklavier Pro grand). My own view is that a thousand flowers should bloom: the more the better, with everyone free to choose whatever version(s) they prefer.

Zenph made headlines in at Shrine Auditorium Los Angeles last night with a live recording of its re-performance of late jazz icon Art Tatum’s 1949 epic album "Piano Starts Here." Here is a link to Zenph’s description of the event. Zenph notes: “Jazz pianist Art Tatum was recorded live in Los Angeles on April 2, 1949. That recording is available today on the Sony CD Piano Starts Here. “He was the greatest soloist in jazz history, regardless of instrument,” jazz critic Leonard Feather wrote in the liner notes. It is one of the best loved jazz albums ever, and has been in print for more than fifty years”.

I am among the legions of people who are in awe of Tatum and I possess quite a number of the hissy, compressed Brunswick recordings for the sheer brilliance of Tatum’s playing buried somewhere in the recordings. If Zenph can make Tatum come alive and without the almost fatal defects in the originals, I’ll get down on my knees and praise them. The Tatum event led to an editorial in the Los Angeles Times Sunday by the always excellent Jon Healey, available here. (HT to Mr. Healey for the story, too). Mr. Healey observes:

Zenph, which also revived pianist Glenn Gould's 1955 recording of Bach's Goldberg Variations, has ambitions that stretch beyond re-performed piano works. The company's co-founder, John Q. Walker, says the technology will eventually be extended to other instruments -- and voices. And once enough data are gathered about a performer, living or dead, that person's distinctive playing or singing style could be applied to material he or she never recorded. Imagine adding Eddie van Halen's guitar pyrotechnics to your band's sound, without needing him in the studio. Or paying him. This is heady stuff, and frankly a little creepy. It also suggests a battle to come over who, if anyone, owns a playing style. Lawmakers didn't anticipate technologies such as Zenph's when they wrote the statutes governing copyrights and other intellectual property, so it's not clear how the courts might rule. Nor do we know how these technologies will develop and be used. The only sure thing is that because of Zenph, we have a lot more useful knowledge about how Art Tatum played the piano -- knowledge that could conceivably lead to a panoply of new creative works. As a result, Tatum's signature cascades of sound will reverberate out of the Shrine Auditorium long after his computerized self has left the building.
From a copyright perspective, there are a few points to keep clear. The Gould and Tatum re-performances are being done in conjunction with the labels and (at least in the case of Gould), the artists’ estates. They also involve recapturing the original sounds. The example of Eddie van Halen given by Mr. Healey, by contrast, is both hypothetical and would not involve recapturing the original sounds: instead, it would reflect an educated guess about how Mr. van Halen would perform something he had never performed. In such a case, there are no copyright implications at all. Section 114(b) of the Copyright Act states in relevant part for both the Gould/Tatum and van Halen scenarios:

The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 is limited to the right to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording. … The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.

Under the final sentence, countless covers of performances have been permitted (such as Smith’s version of the Band’s “The Weight” in the original release of the soundtrack to Easy Rider, after The Band refused to grant permission to use their original. In the van Halen hypothetical there would be no original performance at all, and thus no infringement of a sound recording. Style has never been protected under copyright, and in the case of popular music, insuperable problems would be encountered. As wikipedia's entry on Tatum notes some of the dangers:

Tatum drew inspiration from his contemporaries James P. Johnson and Fats Waller, who exemplified the best stride piano style. Tatum's meteoric rise to the top began with his appearance at a cutting contest in 1933 that included Waller and others. Standard contest pieces included Johnson's "Harlem Strut" and "Carolina Shout," and Fats Waller's "Handful of Keys." Tatum was victorious, presenting his arrangement of "Tiger Rag." This was considered by Harlem musicians to be Tatum's ultimate contribution to stride piano, and taken as the most astonishing and original that would probably ever appear, in many respects, despite being an arrangement. … From the foundation of stride, Tatum made a quantum leap in terms of technique and theory, and honed a new style that would greatly influence later jazz pianists, such as Thelonious Monk, Oscar Peterson, Billy Taylor, Bill Evans, and Chick Corea. Tatum's extensive use of the pentatonic scale, for example, may have inspired later pianists to further mine its possibilities as a device for soloing. Moreover, as long as "new" performances via Zenph in the style of artists who never performed the pieces is marketed accurately, it is doubtful any state laws, such as right of publicity, would be violated, although I confess readily to not being an expert in state laws.

Klingons, Kopyright, and Jokes

Cenk Uygur is the host of Air America's morning radio show "The Young Turks." A few people are reported to find him funny, leading some very unfunny Democratic members of Congress as well as unfunny conservative pundits to appear on his show. Mr. Uygur is reported to be suing another funny man, Stephen Colbert of "The Colbert Report"for $65 million for allegedly stealing a joke of Mr. Uygur's about Klingons. To further his claim, Mr. Uygur recently posted a video on YouTube (here) detailing his claim and posting both parties jokes.

A commentator in AOL News may have summed the matter up nicely, if not a bit crudely:

Star Trek should sue you both for the use of Klingons in your jokes. Nice try at getting some publicity. Live long and prosper! speaking of Klingon jokes: (please don't sue me) Why did Captain Kirk buy a million rolls of toilet paper? To fight the Klingons from Uranus

Bankruptcy Trustees and Standing

The Federal Circuit issued an opinion yesterday in a case of first impression involving the standing of bankruptcy trustees to bring suits for patent infringement, Morrow v. Microsoft Corp., 2007 WL 2713248 (Fed. Cir. Sept. 19, 2007). The court held there was no such standing and that the question of standing is governed by the Patent Act and constitutional standing requirements, rather than provisions of the bankruptcy law. The opinion, which seemingly is applicable to copyright infringement, is significant due to its insistence that the party suing actually possess one of the exclusive statutory rights and not merely be a trustee appointed to administer assets that include such rights.

Amen Brother

Here is a link to an amazing 18 minute video (there is not much to see, so you can put it on a back screen and just listen to the audio), that explains a great deal about the history of sampling and its later encounters with copyright through one famous drum break. Well worth listening to, and yes, I think the clip is making fair use of the excerpts it utilizes to tell the story: if this isn't a transformative use, I don't know what is.

And in the end

.. the love you take is equal to the love you make. In the end, Pro se plaintiff (and lawyer) Marie Flaherty, who, has been litigating a claim of copyright infringement for four years, will have to end her quest. The allegedly infringing work, is the film "Bringing Down the House," which is alleged to have infringed plaintiff's screenplay. In the latest of a series of opinions in the case, Judge Swain of the SDNY addressed a recurring question of interest, Flaherty v. Filardi et al., No. 03 Civ. 2167 (S.D.N .Y. Sept. 17, 2007): which version of defendant's work does one look at to determine the ultimate question of substantial similarity? Do we look at the final product, or also at preliminary drafts? The issue is a recurring one in the film industry due to the large number of drafts that screenplays and movies go through, and because plaintiffs frequently make meritless and invasive discovery claims in a desperate effort to get to a jury (the latest opinion was decided on summary judgment, it should be noted).

The correct answer is the final version, as Judge Swain wrote:

As other courts in this district have held, "[s]ince the ultimate test of infringement must be the film as produced and broadcast, we do not consider the preliminary scripts." Davis v. United Artists, 547 f. Supp. 722, 724 n.9 (S.D.N.Y. 1982). "In determining copyright infringement,... [t]he Court considers the works as they were presented to the public." Walker v. Time Life Films, 615 F. Supp. 430, 434 (S.D.N.Y. 1985).

In the motion picture cases, preserving this principle is important since plaintiffs are attempting to create inferences based on nothing, e.g., the presence once of a passage which allegedly is strikingly similar; its deletion is then used to "prove" access and to permit the case to go to a jury. But the principle exists at the other end of the spectrum too: courts have held that one is permitted to start with a copyrighted work and make sufficient changes so long as the end product is not substantially similar. This approach makes sense both because the harm from infringement is from the reaction of the ordinary observer who might buy the work, and because intermediate copying should not be infringement at all.

(HT to Jeff Conciatori).

MediaDefender Leak

MediaDefender markets itself this way: "We provide services that stop the spread of illegally traded copyrighted material over the Internet and Peer-to-Peer networks. Our solutions have been adopted as practical, proven methods to thwart Internet piracy and to drive consumers to pay for digitized content distributed through authorized channels." MediaDefender has been in the news recently due to leaks of emails and other picture is found in Wikipedia, which has a remarkably current story, along with links:

…. MediaDefender is based in Los Angeles, California in the United States, and its chief executive is Randy Saaf. As of March 2007, the company has approximately 60 employees and uses 2,000 servers hosted in California with contracts for 9 GB/s of bandwidth. Increasingly, these type of organizations are being hired to stymie peer-to-peer (P2P) traders through a variety of methods including: posting fake files online, recording individuals who contribute copyrighted material, but also marketing to individuals using P2P networks. Clients include Universal Pictures, 20th Century Fox, Virgin Records, HBO, Paramount Pictures, and BMG. On August 1, 2005, the digital media entertainment company ARTISTdirect announced that it had acquired MediaDefender for $42.5 million in cash. … In February 2007, MediaDefender launched a video sharing site called Miivi.com. On July 4, 2007, file-sharing news site TorrentFreak alleged that Miivi.com was created to trap uploaders of copyrighted content. The site's origins were discovered by a blogger who looked up Miivi.com domain registration information. After the allegation was re-posted throughout the blogosphere, Miivi.com was shut down on July 4, 2007. In an interview with Ars Technica, chief executive Randy Saaf stated that "MediaDefender was working on an internal project that involved video and didn't realize that people would be trying to go to it and so we didn't password-protect the site". MediaDefender blamed file-sharing groups such as The Pirate Bay for starting the story.Following MediaDefender's subsequent email leak, TorrentFreak alleged that MediaDefender's statement was revealed to be a deliberate falsehood. Saaf denied that MiiVi was "a devious product" and that the company aimed to entrap users, stating only that it was part of MediaDefender's "trade secrets." The MPAA denied any involvement with MediaDefender. On September 14, 2007, internal emails from MediaDefender were leaked to The Pirate Bay, appearing to indicate that Miivi.com was created to catch potential copyright violators. The emails also revealed that the site was closed when this fact became public knowledge, and was scheduled to be re-launched as www.viide.com. As of September 15, 2007, viide.com has not been opened up to the public. The e-mails also showed efforts to suppress the leak on the Wikipedia article about MediaDefender. … On September 14, 2007, thousands of the company's internal e-mails were leaked, containing information contradicting previous statements and details of strategies intended to deceive pirates. The emails link MediaDefender to projects that management previously denied involvement in, confirm speculation that MiiVi.com was an anti-piracy honeypot site, discuss responses to unexpected and negative press, and expose upcoming projects, problems in and around the office, Domino's pizza orders, and other personal information about employees. Beyond strategic information, the leak also exposed login information for FTP and MySQL servers, making available a large library of MP3 files likely including artists represented by MediaDefender's clients. The emails also revealed that MediaDefender probably was negotiating with the New York Attorney General's office to allow them access to information about users accessing pornographic material. As of September 15, 2007, there has been no official response from the company. … On September 16, 2007, a 25 minute excerpt of a phone conversation between the New York Attorney General's office and MediaDefender was released as a torrent on The Pirate Bay by MediaDefender-Defenders, the same group behind the e-mail leak. MediaDefender-Defenders claims in information released with the phone conversation that they have infiltrated the "internals" of the company.

A more detailed picture is provided here in Arts Technica. The story has been picked up by the Wall Street Journal (today's issue, page B1), which has this quote from one of the emails:

"In one case, a Universal executive asked if there was any data showing the music industry's lawsuits were resulting in less file-sharing activity from addresses ending in .edu -- namely, colleges and universities. Mr. Saaf forwarded the message to five MediaDefender employees with the message 'Take a moment to laugh to yourselves.'"

Non-profit, non-partisan education in copyright

In response to Monday’s posting, the Executive Director of the Copyright Alliance asserted in a comment on the posting, “we are a non-profit, non-partisan educational organization.” I don’t doubt that the organization is non-profit, and if by partisan one means whether an organization is populated mostly or entirely by Republicans, Democrats, or members of the Beer Drinker’s party, I am sure this is true too. Copyright is rarely a partisan affair in this meaning, something Lord Macaulay pointed out just before he happily trashed Serjeant Talfourd in the 1842 House of Commons debates on copyright term extension. If, however, by partisan one means espousing a consistent view on the scope of copyright, then the Alliance is thoroughly partisan. A review of its website reveals that every position it discusses as having taken is pro-protection. And that’s fine: Washington, D.C. is awash with partisan groups like this, on all sides of issues, on hundreds of topics; being partisan is in fact such groups’ very reason for existing, so it is hardly a knock to say any such group is partisan. Jack Valenti, whom I regarded with great affection and respect (see here), was fiercely and effectively partisan. (However, the claim on its website that “The Copyright Alliance represents millions of members of the creative community” gives new meaning to the word “represents.” It appears to be based on the fact that ASCAP, BMI and a few unions are members of the Alliance. But if a songwriter gives ASCAP a non-exclusive license to non-exclusively license his or her song, does this mean that every other organization ASCAP itself joins represents the songwriter too,? Apparently so, according to the Alliance).

It is the assertion of an educational role performed by the Alliance and efforts generally to provide educational material about copyright to children that I want to focus on, though. Here is what the Copyright Alliance says on its website:


For Educators It’s never too early to learn the value of copyright. In fact, every time a child takes crayon to paper, he or she has created a copyrighted work, but how many know the rights they’ve just earned? Educators across the country recognize the value of incorporating an understanding of copyright into lesson plans, but the resources haven’t always been readily available. The Copyright Alliance, as part of its educational mission, aims to identify valuable curriculum guides and other educational resources and make those resources available to educators.
You will find some materials here, and more will be added.
This cheery passage makes me think of my six year old twins (today is their birthday), happily drawing on their table in the playroom. But I doubt my twins are thinking of copyright, even with me as their father. The Alliance’s website does not contain educational materials at all, though. It performs no educational role in developing them, either it seems. Instead, the Alliance’s site merely links to sites of its members. These sites include Music Rules! which concerns “songlifters” (by alliance member RIAA), “Donny the Downloader” (by Alliance member ASCAP), and materials “Illegal File Sharing” of videos (by alliance member MPAA). This is “education” of a distinct type; equating copyright education overwhelmingly with stopping file sharing (the Music Rules! plan does discuss briefly some permissible personal uses). Crayon drawers are nowhere to be seen.

A similar effort in 2006 in Canada (by a different group) took the approach of a superhero, Captain Copyright, who would teach respect for copyright. Captain Copyright drew this response from the Canadian Library Association:

The most disturbing aspect of the Captain Copyright advertising campaign is the targeting of children with propaganda-style tools. Advertising Standards Canada, a self-regulating trade association, reminds us that advertising to children is illegal in Quebec and its Canadian Code of Advertising Standards provides guidelines for the rest of Canada. It explicitly states that exploiting children's credulity, lack of experience or sense of loyalty is forbidden. As an entity mandated by law, Access Copyright should be held to the highest standards of accuracy and should carefully reconsider Captain Copyright in light of the Code. CLA believes that any copyright advocacy initiative intended to be used directly by children or in the classroom by teachers should be developed, if required, by the institutions which represent the education community, like the Council of Ministers of Education, Canada, the Canadian Teachers' Federation, and with the library community. Captain Copyright is a unilateral initiative on the part of Access Copyright and reflects its own perception, not the broader Canadian perspective.
The librarians were hardly alone in their criticism of these efforts, leading to this announcement in February of this year from the Captain Copyright folks:

In August 2006, we took the Captain Copyright website offline so that we could revise its content in response to the criticisms the site had received. We worked extensively on revising the original lessons and we commissioned someone with expertise on the creation of educational materials to prepare new lessons on the Creative Commons, fair dealing and the public domain. We also sought the assistance of an advisory panel of educators and copyright experts with a range of perspectives on copyright, and every lesson was submitted to them for rigorous review. We then incorporated their revisions to the lessons so that they could be thoroughly teacher-tested. Despite the significant progress we made on addressing the concerns raised about the original Captain Copyright initiative, as well as the positive feedback and requests for literally hundreds of lesson kits from teachers and librarians, we have come to the conclusion that the current climate around copyright issues will not allow a project like this one to be successful. It is difficult for organizations to reach agreement on copyright issues at this time and we know that, in the face of continuing opposition, the materials will not be used in the classroom. Under these circumstances there is no point in our continuing to work on this project. We began this project because teachers told us that copyright had become too much a part of their students’ daily lives for it not to be taught in the classroom, and they told us they needed a teaching tool to help them do it. We still believe that creating such a tool is important, but we also now believe that no single organization can take the lead on such an initiative. We truly hope that there will come a time when the copyright community – including educators, librarians and copyright collectives – can work together to provide a unbiased teaching tool that provides teachers and students with a balanced view of copyright.

To the Canadians’ credit, after an initial stumble, they appear to have made some attempt to provide a balanced viewpoint, one with actual educational objectives. Alas, that wholesome effort drew fatal opposition, but from whom? I don’t have the answer; perhaps some of my Canadian readers can fill in the story. It would be sad indeed if a balanced educational plan for copyright was unachievable, especially where there is a will to develop one, rather than merely spew out partisan propaganda at our children. If education of children is important, why isn’t it important to sit down until balanced materials are achieved?

Next posting is Monday. L'shanah tovah tikatev v'taihatem, v L'shanah tovah tikatevi v'taihatemi

Published opinions and Vacatur

I did a posting awhile back on a fair use involving manuals for Gulfstream jets. There is a new opinion in the case that raises different issues: the effect of an opinion being published, and the conditions under which earlier opinions should be vacated. As part of settlements, one party – the losing one – will insist that the unfavorable opinion be vacated. It is, however, in the trial court’s discretion to vacate, a fact that can put the settlement in limbo. In a new opinion in the case, Gulfstream Aeropspace Corp. v. Camp Systems Int’l, Inc., 2007 WL 2469577 (S.D.Ga. Aug. 30, 2007), the court refused to vacate and generally trashed such efforts.

Here are the relevant parts of the opinion:

[P]laintiff Gulfstream Aerospace Corporation (Gulfstream) moves the Court to vacate its opinion published at Gulfstream Aerospace Corp. v. Camp Systems Intern., Inc., 428 F.Supp.2d 1369 (S.D.Ga.2006), as well as its later opinion (doc. # 150) denying Gulfstream's reconsideration motion. FN1 Plaintiff emphasizes that its motion is unopposed-a concession that it obtained as part of the settlement that has since led to the dismissal of this case…

BACKGROUND

Gulfstream, a jet aircraft manufacturer, brought this copyright action against Camp Systems Intern. Inc., a maintenance tracking company, alleging illegal use of maintenance manuals written by Gulfstream for use with its aircraft. Both sides cross-moved for summary judgment. This Court concluded that Camp did not impermissibly infringe on Gulfstream's copyright by using Gulfstream-authored maintenance manuals for use with maintenance-tracking Gulfstream aircraft. Camp made “fair use” of the manuals, and although its use of the manuals was commercial and substantial, the nature of the manuals was predominantly factual, and there was no evidence that Camp's use adversely affected the market for plaintiff's manual. Gulfstream, 428 F.Supp.2d at 1377.

The Court thereafter denied Gulfstream's motion for reconsideration, doc. # 150, but it did not publish that Order.FN3 The Eleventh Circuit later denied an interlocutory appeal that this Court had certified. Doc.150, 151. Subsequently, the parties settled. Doc. # 158. While Gulfstream insists that it negotiated the right to seek vacatur unopposed, doc. # 157 at 1, Camp has gone out of its way to point out that it “does not oppose-nor does [Camp] join Gulfstream's motion to vacate.” Doc. # 159.

FN3. The Court's website has a “Written Opinions” section wherein the public, and thus any publisher, may obtain Court opinions for publication. Thompson West and other publishers are free to publish whatever they may choose. Thompson West owns Westlaw, http://west .thomson.com/default.aspx (site as of 8/31 /07), and “publishes” many of this Court's opinions on Westlaw, but this and other courts refer to those “Westlaw-only” cases as “unpublished,” while opinions found in F.Supp.2d, such as Gulfstream, are referenced as “published” opinions. This can be confusing because opinions that reside only on the Court's docket ( e.g., doc. # 150, unless Westlaw or someone “publishes” it) are also referenced as “unpublished.” Those opinions obviously are also in the public domain, but typically only the immediate parties to a case or those who randomly peruse the Court's docket will be aware of them. So, there are degrees of “publication” and thus impact on the law.


III. ANALYSIS

As explained in Jones v. Unum Life Ins. Co. of Am., 486 F.Supp.2d 864 (E.D.Ark.2007), “[w]hen parties settle without going to trial, there is no final, valid judgment on the merits, which is required in virtually every jurisdiction ... for a litigant successfully to assert res judicata ....” Id. at 866. …On top of that,

District court rulings have influence only to the extent that jurists in other cases find them convincing, as would indeed be the case with other forms of legal analysis. Once a decision has been filed and in the public domain, its influence beyond any effect on the parties is based solely upon future readers' views of its merit, whether vacated in connection with a settlement or not so vacated.

*2 Id. …

But that same reasoning easily leads one to ask-if nothing is binding on anyone, why go to all the trouble (paying ones counsel to draft and file a vacatur motion) of seeking vacatur?

It has been said that “vacated opinions, like unloaded guns, may be dangerous.” Charles A. Sullivan, On Vacation, 43 HOUS. L. REV. 1143, 1144 (2006). But that comment came within the context of one circuit's vacated precedent ruffling another circuit's judicial feathers whence cited by counsel before it. Id. Even at that the discussion can get pretty complicated:

The difficulty arises because the law uses “precedent” in two very different ways. In the weaker sense, “precedent” merely refers to any authoritative pronouncement of a court that other courts have an obligation to respect; in this sense, any court decision may be a “persuasive precedent,” although precisely what that means-how respectful a court must be-is unclear. The second, and stronger, sense is “binding precedent,” which means that a lower court, subject to the appellate jurisdiction of the higher court, is required to follow the decisions of that court, or, more accurately, to follow the “holdings” of that court. This is sometimes called the doctrine of vertical precedent; “ stare decisis ” is also sometimes used to refer to binding precedent in this sense, although it is often used to refer only to what has been called horizontal precedent, the obligation of a court to follow its own precedents.

Id. at 1146-48 (footnotes omitted).

All of that sensitivity flows from the binding, if not then merely persuasive, impact of appellate opinions both intact and vacated. …

In contrast, virtually no such sensitivity arises from a district court opinion. And vacating one will not cause publishers to magically erase them from the myriad published volumes sitting on law library shelves around the globe. In fact, what precisely would be accomplished by vacating any district court opinion, especially one that never did get bound up in a binding (on the immediate parties) judgment? See In re Finley, 160 B.R. 882, 898 (Bankr.S.D.N.Y.1993) (“[A] logical and well-reasoned decision, despite vacatur, is always persuasive authority”) (emphasis added)….

Unsurprisingly, Gulfstream does not even explain why it seeks vacatur, other than the mere fact that it negotiated the right to do so and now professes that its “continuing concern over the Orders is evident....” Doc. # 157 at 3. Concern about what? Both opinions are in the public domain (one is unpublished, but anyone can find it on the Court's public docket), so entering a formal order vacating them at most would be a symbolic act.

Symbolic acts, like advisory opinions, should play no part in the federal judicial process. If all vacatur does is salve a wounded ego, that would not advance the public's interest. Granting Gulfstream's motion here, for that matter, would only create a precedent for more such motions-thus wasting more judicial resources. Plaintiff's motion therefore is denied.

UK Crown Copyright

Those in the U.S. take for granted that works of the U.S. Government are in the public domain, a principle expressed in Section 105 of the Copyright Act. Not so in other common law countries, where crown copyright -- assertion by the government of copyright in works produced by government employees or officials, including Parliament -- is the rule. A group called Free our Data is trying to change this and posted an interesting story on the issue today in the Guardian:

Time to take the jewels from the crown?

Campaigners question whether the ancient institution of crown copyright still has a place in the digital age

• Michael Cross
• The Guardian
• Thursday September 6 2007

Copyright of the King James Bible, one of the first widely available English-language editions, is vested in the crown in perpetuity.

What does the King James Bible have in common with an Ordnance Survey map? Both are subject to crown copyright, an ancient institution whose function is increasingly open to question. Ownership of almost all information produced at taxpayers' expense is one of the main legal weapons government has to control - or block - the re-use of public sector information in the knowledge economy.

Knowledge economy

By contrast, the US government does not claim copyright in its works. We argue that the UK government should follow the US in making all raw taxpayer-funded data available to the knowledge economy - except where that data compromises personal privacy or national security.

Some of our supporters say that a short cut to this state of affairs would be to abolish crown copyright itself. The idea is worth examining. Abolition was last floated in 1998, as part of a series of examinations in to what the government should do with its publishing arm, Her Majesty's Stationery Office. A green paper, Crown Copyright in the Information Age (tinyurl.com/2a8ea2), proposed abolition as one of seven options for crown copyright.

In the public consultation that followed, abolition emerged as the most popular. From 70 responses received, abolition received 12 votes as preferred choice. The runner-up (retaining copyright but in a simpler form) received eight votes. The snag was that although abolition was the most popular response, it was also the least popular, receiving the largest number of "unacceptable" votes.

Faced with this polarised response, the government chose compromise. In 1999, the Cabinet Office found a "general consensus" in favour of retaining copyright, with simplified procedures for re-use. This is broadly the strategy of the body responsible for controlling copyright, the Office of Public Sector Information (part of the National Archives), whose head, Carol Tullo, also enjoys the title the Queen's Printer. Today, the office runs a "click-use" licensing scheme for crown copyright and other government material. This is a Whitehall version of "creative commons", allowing the free reproduction of material provided the source is acknowledged.

Officials at the office say that, far from stifling the re-use of public information, crown copyright can help it happen. "Copyright helps ensure greater consistency in our licensing approach," says Jim Wretham, head of information policy. "It also protects the overall integrity of information, its badge of authenticity."

Judging by recent investigations on the re-use of public-sector information carried out by the Office of Fair Trading and the Cabinet Office, a debate about the abolition of crown copyright would be as polarised today as it was in 1998.

Even if a consensus could be built, abolition would not by itself open access to much information. While the list of crown bodies runs to several hundred organisations, from the Prime Minister's Office to HM Prison Service, swathes of data are owned by non-crown bodies. Top of the list come local authorities, who own the rights to data created at public expense.

Subtleties of constitution

Other exceptions are non-departmental public bodies such as the Environment Agency, which earlier this year was at the centre of a row about how it charges for data on the location of water sources. The reason lies with the subtleties of the British constitution: the Environment Agency is not a crown body, because its watchdog functions require it to take legal action against crown bodies, and the Queen cannot sue herself. The Financial Services Authority and the British Standards Institute are likewise non-crown bodies.

And ancient constitutional oddities abound. One such is the Authorised (King James) Version of the Bible. In the 17th century, the English-language Bible was a weapon of war, and rights are "vested in the crown" in perpetuity.

The simplest way to abolish crown copyright might be to abolish the crown itself. That, however, would take our campaign into much trickier waters.

A history of rights

From the Domesday book on, British governments have recognised the power of asserting ownership of information. In 1604, King James 1 authorised a new standard English translation of the Bible; because of its historical value in promulgating Protestantism, rights remain owned by the Crown. In 1990, the House of Lords ruled that the government could assert Crown copyright to prevent publication of the MI5 memoir, Spycatcher. Today, Crown copyright lasts for 125 years, or 50 years from commercial publication.

The modern bureaucracy of Crown copyright dates from 1786, with the formation of a new Treasury department, His Majesty's Stationery Office (HMSO). In 1882, HMSO was made the official publisher to both Houses of Parliament, which still retain copyright on official proceedings. In 1889, Queen Victoria granted the controller of HMSO Royal Letters Patent as "printer to Her Majesty of all Acts of Parliament". The Letters Patent appointed the controller to hold Crown copyright. This grant and the office of the Queen's Printer continues today. In 1980, HMSO became a trading fund. In 2000, the government repositioned HMSO to regulate Crown copyright licensing. This role was taken on by the Office of Public Sector Information, now part of the National Archives.

· Join the debate at the Free Our Data blog: freeourdata.org.uk/blog

Golan's Copyright Lows

In a 37 page opinion today, available here (HT to Ryland for being first off the dime on it), the Tenth Circuit stated it was affirming the district court's challenge to the GATT implementing legislation's retroactive protection for works of foreign origin that fell into the public domain pursuant to 17 USC 104A, Golan v. Ashcroft, No. 05-1259 (10th Cir. Sept. 4, 2007), but nevertheless remanded to see if the statute could survive First Amendment scrutiny. This baffling approach is the first vindication of an approach argued by Larry Lessig and colleagues that I had thought made no sense at all. One can expect an eventual petition for cert., which I expect will be granted.

Plaintiff made two attacks on the legislation: (1) it violated the limited times limitation; (2) Congress has no authority to remove material from the pd. The limited times argument was an easy loser, with the court of appeals siding with the Ninth Circuit's Kahle opinion. Kahle regarded the argument as a regurgitation of the arguments made in Eldred.

It was, therefore, on to the exceeding authority argument by restoring copyright to pd works. The 10th Circuit agreed that "it would be troubling if Congress adopted a consistent practice of restoring works in the public domain in an effort to confer perpetual monopolies." (p. 13), but relying on the DC Circuit's Luck opinion, the Tenth Circuit easily rejected plaintiff's reliance on the Supreme Court's Graham v. John Deere opinion.

That was the first 16 pages of the court's opinion, and it exhausted the plaintiffs' arguments: what then were the remaining 21 pages devoted to? Plaintiff's First Amendment review argument. I have mentioned a number of times in a number of places, my view that this argument makes no sense at all because a standard of review is not a substantive attack on legislation and because in this case once it was found that Congress had acted within its copyright powers, the jig was up. Moreover, as in Eldred, once it is admitted that one's First Amendment argument is based on one's copyright argument, and the copyright argument fails, presto should go the First Amendment argument. That's what Justice Ginsburg so deftly got out of Professor Lessig at oral argument in Eldred.

But, Eldred did state that First Amendment scrutiny might be appropriate if copyright legislation "altered the traditional contours of copyright protection," 537 U.S. at 221, and that's how the Tenth Circuit spent the remaining 21 pages of its opinion. Of course, one might lose even if the contours were believed to have been altered, and that's what the remand is about.

The Tenth Circuit took the issue head on by examining what it thought the traditional contours of copyright are: one of them is that like Las Vegas, what goes into the pd stays in the pd. GATT therefore altered that traditional contour, the court held, in an historical review of prior copyright statutes. That seems an odd approach: the first time Congress imposed compulsory licensing, in the 1909 Act, it was certainly altering the traditional contours of copyright, and Nathan Burkhan argued, violating an alleged limitation of granting only "exclusive" rights. More to the point, there have been prior retroactive pulling out of works from the pd, as in the wartime cases. How many of these are needed to make a minhag (tradition)?

My biggest issue, though, is that to me the court got things analytically backwards: I cannot see how the court could have rejected plaintiff's' substantive challenges, but then remanded on a standard of review question. Hopefully smarter folks than me can answer that one. One should not deny this is a very big victory for Professor Lessig and his colleagues, whom I congratulate.

Class Counsel Fees

If class counsel is alleged to have blown a settlement worth $40 million dollars, what is an appropriate award of attorney’s fee for class counsel? That question split a panel of the Ninth Circuit in Steiner v. ABC, 2007 WL 2460326 (9th Cir. Aug. 29, 2007).

As explained by Judge Kleinfeld’s dissent:

Defendants used copyrighted music in television soap operas without permission. After successfully suing on behalf of an individual, class counsel brought a class action on behalf of all the other copyright holders. There was no serious question about liability, and damages were subject to a statutory minimum per use. The practical risk, as described by the district court, was not losing, but rather "protracted litigation against very good litigators."

The risk did not materialize. With no depositions, no motions to dismiss or for summary judgment, no opposition to class certification, and no trial, class counsel got defendants' agreement to a $25.4 million settlement. That is not to say that counsel did not have to do a great deal of very sophisticated, specialized, and difficult legal work to get the settlement. They did. At rates for attorneys ranging from $275 to $600 an hour, and for non-lawyers from $130 to $175 an hour, at that point their time was worth about $554,000.

But the "major" music companies that owned 85% of the music at stake in the litigation were not satisfied with the $25.4 million settlement. They objected to the settlement. With no depositions, contested motions, or trial, they got it more than doubled, to $65 million. They went through a two day mediation with the defendants in which class counsel had no substantial role. Their total billings came to something over $900,000, for obtaining the additional $40 million.



The district court awarded a stunning amount of money: 25% of the 25 million, finding class counsel “achieved excellent results and faced a good deal of risk.” Plaintiff major studios argued that “class counsel did not achieve excellent results, because they negotiated a facially inadequate initial settlement of $25.4 million, as demonstrated by the Majors' ability to negotiate a final settlement of $65 million.” The court of appeals, however, held that “The district court… addressed this contention and made findings to the contrary, which were not clearly erroneous. Specifically, the court found that the Majors were able ‘to extract a much more attractive settlement" because of the "much greater bargaining power’ that they brought to the table, not because the original settlement amount was inadequate. The court also found that the Majors chose to build on the initial settlement agreement negotiated by class counsel, instead of opting out of the class and pursuing independent litigation, because the initial settlement amount ‘obviously had value to the Majors.’"

Judge Kleinfeld dissented:

In the case at bar, the fee award is 25% of the $25 million settlement class counsel negotiated before the objectors got it set aside. While 25% of a common fund is a "starting point," 25% may be "inappropriate," requiring the court to consider "all the circumstances." A 25% contingent fee is one thing in a $900,000 personal injury case, and quite another when the percentage is applied to $25 million. And quite another indeed, where the $25 million has been rejected as inadequate. If the district court applied the 3.65 multiplier approved in Vizcaino to class counsel's time and rates, class counsel would receive 3.65 times the lodestar amount of $554,000, or a fee of about $2 million. That might arguably have been a reasonable approach, but it was not used.