Copyright in Letters

Awhile back, I had a posting about misuse in the manner in which a cease and desist letter was being used (link here). This turned out to be a web-wide controversy, which I won’t re-enter; recently though the author of the letter put out a press release touting a recent decision by a magistrate judge on the copyrightability of such letters. (see here). This press release has been challenged by Public Citizen and others (see here). Among other issues was the posture of the case, a Rule 12(b)(6) motion, and not, as my blog was about, misuse.


A February 1 opinion from the Western District of Louisiana also concerns letters, this time collections letters. Robison v. Cardiology Associates, L.L.C., 2008 WL 294488 (W.D.La. Feb. 1, 2008), Docket No. 05-1581. Here are relevant excerpts:

To disprove originality, Cardiology Associates argues that Robison copied from earlier letters in the public domain, that she added nothing of any significance to the collection letters already existing in the public domain, and that her letters do not contain any ideas, but rather are tools used to attempt to collect debts.FN5 FN5. This final argument is easily dispelled. Robison's letters clearly and concisely convey numerous ideas: an assertion that the recipient owes money to the sender; a request for payment; a non-threatening and cooperative approach to the debtor; and a threat of action adverse to the debtor if payment is not forthcoming. … Further, defense expert Dr. Perlman identified fifteen separate ideas in Robison's letters. … Robison is not claiming a copyright in these ideas, but rather in the particular way that she expressed the ideas in her letters-that is, the actual language that she used, which is subject to copyright. … Again, Robison's letters are contained in Record Document 65, Exhibit A. From her deposition testimony, it is clear that Robison had read other collection letters. But with her letters, she sought to create collection letters that achieved the goal of collecting the account, but were also sympathetic, unoffending, cooperative, and non-threatening. … According to Robison, she was “trying to give the patients options without making them feel threatened.” … In the letters, Robison expressed that the account is now due, we realize that you (the patient) have hardships, we realize that real life happens, and we are willing to work with you to settle the account. … Robison sought to achieve these goals with her terminology and phraseology. … Phrases from her letters include: • We regret having to take these measures and have tried working with you in order to clear this account. • We can at this time still make financial arrangements with you to clear the account and cancell [sic] legal procedures. • It is my intent to work with you and to set up a payment schedule that is reasonable and financially accepted to you. I do not want to cause any undo [sic] financial stress however this account needs to be taken care of. • Your account has been presented to me in order to try to establish [a] payment plan suitable to you and your financial obligations in order to clear the account. …. Here, the particular way that Robison chose to express her ideas, no matter if those ideas were in the public domain, is original to her. It required some degree of creativity on her part to select the language, terminology, and phraseology that she used to express those ideas. This expression is what plaintiff sought to protect via copyright. Even Dr. Perlman, the defense expert, stated that Robison's letters “contained ... some degree of creativity in the phraseology of the content of [the] letters” and that the author of such letters exhibited “at least a minimal degree of creativity” in creating the letters. Record Document 65, Exhibit D at 89-90.
Letters have long been protected under U.S. law, beginning with Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass.1841) (Story, J., riding circuit), which concerned President George Washington’s letters. An even earlier English decision involved letters of Alexander Pope and Jonathan Swift, Pope v. Curll, 2 Atkins 342 (1741). More contemporary disputes involved novelist Harold Norse, Norse v. Heny Holt & Co., 991 F.2d 563 (9th Cir. 1993); author Richard Wright, Wright v. Warner Books, 953 f.2d 731 (2d Cir. 1991); Scientologist founder L. Ron Hubbard, New Era Publications, ApS v. Henry Holt & Co., 873 F.2d 576 (2d Cir. 1989); and, J.D. Salinger, Salinger v. Randon House, 811 F.2d 90 (2d Cir. 1987). Like many works, the original creative efforts in letters can vary wildly, from cease and desist letters, to the Richard Strauss-Hugo Hofmannstahl correspondence, which seems to have been written from the beginning with an eye to publication, see here.

That a letter, or any work is protectible as a whole, says little about the scope of that protexted, fair use, or misuse.

The Crime of Selling Abandoned Copies

The Crime of Selling Abandoned Copies

If you came across a trash can filled with lawfully made compact discs and DVDs that the copyright owner had authorized to be put in that trash can and then thrown away because it didn’t want to pay the postage to have them returned, do you think you could be criminally prosecuted for selling those copies, and would you think that the copyright owners would be entitled to restitution under the Mandatory Victims Restitution Act? If you answered no to these questions, you would be wrong according to the Eighth Circuit.

Here’s the opinion, United States v. Chalupnik, 2008 WL 268997 (8th Cir. Feb. 1, 2008), court’s docket no. 07-1355, available on the court of appeals’ website, here (search for Chalupnik).

The facts are pretty much these (at least as recited in the opinion): defendant was an employee for the U.S. Postal Service. BMG Columbia House is a mail order operation selling CDs and DVDs by mail. Many of these discs are undeliverable. Rather than pay the postage to have them returned to it, BMG Columbia House instructed the Postal Service to throw them away. The Postal Service did throw them away. Defendant then retrieved them from the trash and sold them to area stores, netting $78,818. A surveillance camera showed defendant retrieving the items and he was arrested; he was originally charged with felony mail theft, but then pleaded guilty to misdemeanor copyright infringement. The trial court sentenced defendant to two years probation and ordered him to pay $78,818 to BMG in restitution. Chalupnik appealed .

The district court’s theory was “I do believe that there is in fact a lost opportunity to ... BMG, that the people that bought those CD's ... would likely have bought new CD's, and that that represents a real and substantial loss to ... BMG in the amount of $78,818.” The government argued that “BMG is a victim because it owns the discs, sells them with permission of the copyright owners, and controls the disposition of undeliverable discs; that each time Chalupnik sold an undeliverable disc, the artist lost a royalty and BMG lost a potential sale; and that the amount of those losses is conservatively estimated by Chalupnik's gross revenues, $78,818.

The court of appeals agreed that BMG Columbia House was a victim within the meaning of the MVRA, but held that no loss had been established:

[I]t is clear that the government proved no actual loss to BMG. The PSR recommended, and the district court agreed, that BMG suffered a “lost opportunity” when Chalupnik stole BMG's undeliverable discs and sold them to competing retail sellers. The … lost opportunity rationale is valid in the sense that all authorized retailers of the copyrighted discs-Wal-Mart, Best Buy, iTunes, BMG, and countless others-as well as the copyright owners, suffered collective financial injury when infringer Chalupnik sold purloined discs at cut-rate prices to used record stores. But it would be a windfall to award BMG this entire collective “injury to the market.” And the large number of victims and the difficulty of determining each victim's actual loss make the collective injury inappropriate for MVRA restitution.

The government argues that the price at which Chalupnik sold the stolen discs is a reasonable, indeed conservative estimate of BMG's lost sales. One problem with this argument is that, for goods held by a merchant for sale, lost profits rather than lost sales revenues are the proper measure of “actual loss.” A more fundamental problem is that proof of lost sales, like proof of lost profits, may not be “based entirely upon speculation.” … Here, the letter from BMG's senior counsel asserted that Chalupnik sold discs to used record stores whose customers “theoretically could have purchased them [from BMG], resulting in lost sales to BMG.” But BMG's practice of destroying rather than restocking undeliverable discs meant that the discs Chalupnik stole would not have been sold by BMG, and there is no evidence that Chalupnik's sales diverted specific business from BMG. From this standpoint, BMG's position resembles that of the purported MVRA victims whose restitution awards were reversed because the government failed to prove actual loss through lost sales in Hudson, 483 F.3d at 710-11, where counterfeit Microsoft software was turned over to the government by the infringing defendant's customer before any payment to the infringer, and in United States v. Adams, 19 Fed.Appx. 33, 35 (4th Cir.2001) (unpublished), where pirated videocassettes were confiscated before the infringer could sell them.

Finally, the government argues that BMG should receive restitution on behalf of the unidentified copyright owners who would have been paid royalties had BMG sold the purloined discs. This argument is without merit because restitution to each victim is limited to “the full amount of each victim's losses.” 18 U.S.C. § 3664(f)(1)(A). The letter from BMG's senior counsel admitted that Chalupnik's criminal conduct “resulted in no royalty payments being made [by BMG] to the artists, record labels, music publishers, and movie studios,” so there was no proof of actual loss to BMG arising out of its unproven relationships with copyright owners.

Among the many things I find amazing in this whole debacle is the assumption that there could be copyright infringement. The copies had been thrown away at the direction of the BMG Columbia House (which may or may not have also been the copyright owner). I would think that means any ownership in the copies had been abandoned and that therefore anyone was free to do with them what they wanted. If instead of the postal worker having taken them out of the trash, what if the trash dump owner had discovered them and sold them?

State and Local Tax Assessment Maps

Section 105 of title 17 USC prohibits copyright in works of the United States government, but does not bar works of state and local governments. Under case law, state court decisions and statutes have been held not protectible, but the rationales for these decisions do not apply to other material, like maps. Of course, states may decide as a matter of state law that given material may not be subject to copyright (a decision akin to abandonment), and states may pass FOIA or similar laws that severely circumscribe the exercise of copyright. But the question of originality of state authored material is governed by federal copyright law.

A number of disputes have arisen over tax assessment maps. Living in a city that has gone through a real estate re-evaluation last year and is undergoing a second re-evaluation this year, I have become personally familiar with these works and the data contained in them. In County of Suffolk v. First American Real Estate Solutions, 261 F.3d 179 (2d Cir. 2001), at issue (variously) was whether a county could, under federal copyright law and as a matter of state law, assert copyright in official tax maps. In finding no bar under state FOIA law, the court of appeals inquired into whether the county required the incentive of copyright to create the maps. The court of appeals indicated that if on remand it was found that the existence and content of the maps “are purely dictated by law, it is likely that Suffolk County needed no additional incentive to create them.” On the other hand, “[m]any works of government … due to their expense, may require additional incentives in order to justify their creation.” Given the fact-specific nature of such inquiries, the court declined to “declare a general rule that works by state governmental authors are automatically in the public domain from their inception.”

The decision to rest on an inquiry into incentives is surprising and has not been taken in other areas. Personal letters, for example, hardly need the incentive of copyright to be written, yet they have been protected by the Second Circuit without such an inquiry. A more traditional ground is that set forth in Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 363 (1991): “We note in passing that the selection featured in Rural's white pages may also fail the originality requirement for another reason. Feist points out that Rural did not ‘select’ to publish the names and telephone numbers of its subscribers; rather, it was required to do so by the Kansas Corporation Commission as part of its monopoly franchise. See 737 F. Supp. at 612. Accordingly, one could plausibly conclude that this selection was dictated by state law, not by Rural.”

Thus, if the content is dictated by state law, the grounds for exercising originality don’t exist. The issue of copying of local tax assessment maps is to addressed on Friday, February 8th, in all of all places, state court in a hearing on a motion for a preliminary injunction brought by a country tax assessor in Kanawha County Tax Assessor. The injunction is sought against Seneca Technologies, which is being defended by Paul Alan Levy and Greg Beck of Public Citizen Litigation Group. (HT to Paul). Information about the litigation can see found at this link.

In short, Seneca brought a successful state FOIA action to obtain a copy of tax maps in electronic form. It then posted the maps on its website (link here). Rather than appeal the judge’s decision, the tax assessor brought a separate suit for unauthorized copying under state law and for an injunction against further copying. As Paul and Greg have pointed out in their brief, the suit is clearly preempted: the idea of a state court issuing an injunction against copying a map is ludicrous, but is also raises important issues about the dissemination of important public information. It’s a case worth following and I imagine the Public Citizen website will have updates about it.

Photographs and Derivative Works

The concept of what constitutes a derivative work seems to elude far too many courts, particularly in the photography context. In Ets-Hokin v. Skky Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000), a photograph of a vodka bottle was taken for use in an advertisement. The district court had held that the bottle depicted in the photograph was a “preexisting work,” and thus the photograph was “based on” that work and was therefore a derivative work. Rather than dismiss this shockingly wrong conclusion on the basis of the plain words of the statute, the court of appeals went off on an irrelevant inquiry: Whether the object depicted in the photograph (the vodka bottle) was copyrightable. According to the court of appeals, if it was, the photograph was a derivative work; if not, the photograph was not a derivative work. In order to determine whether the bottle photographed was copyrightable, the court examined it as the design of a useful article, ultimately rejecting protection for the bottle and therefore upholding copyright in the photograph as a nonderivative work.

Photographs of other objects are not derivative works of those objects. First, a photograph of an object is not “based on” that object: It is a mere depiction of it. Second, even if one were to find that a photograph of an object is based on that “preexisting work” within the meaning of the definition of “derivative work” in Section 101, such a photograph must still “recast, transform, or adapt” the authorship in the preexisting work to be considered a derivative work. Such recasting, transformation, or adaptation does not occur in a photograph of an object, even copyrighted objects. What makes a derivative work a derivative work is the contribution of changes in the actual authorship of the preexisting work, not a mere depiction of that work.

Fortunately, Judge William H. Pauley III of the Southern District of New York set matters straight in SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301 (S.D. N.Y. 2000). Judge Pauley rightly focused on the requirement of recasting, transformation, or adaptation, noting: “A photograph of Jeff Koons's ‘Puppy’ sculpture in Manhattan's Rockefeller Center merely depicts that sculpture; it does not recast, transform, or adapt Koons's sculptural authorship. In short, the authorship of the photographic work is entirely different and separate from the authorship of the sculpture

Now a district court in Illinois has returned to the Ets-Hokins approach,
Schrock v. Learning Curve Intern., Inc., 2008 WL 224280
(N.D.Ill., January 29, 2008). In Schrock, defendants hired plaintiff photographer to take pictures of hundreds of toys for use in marketing. There surprisingly was no work for hire or transfer, but instead a license with usage restrictions, which the photographer alleged had been violated. Defendants alleged the photographs were unauthorized derivative works of their toys, and regrettably the court agreed:

Schrock's photographs are product photographs-depictions of Thomas & Friends toys. Such depictions portray the three dimensional toy in two dimensions. In the words of Section 101, such photographs “recast, transform[ ] or adapt [ ]” the preexisting three dimensional toy into another medium, thus creating a derivative work “based upon” the preexisting work. Such photographs are no less derivative works than are three dimensional embodiments of two dimensional drawings (e.g., a guitar created to embody a written symbol, as in Pickett v. Prince, 207 F.3d 402 (7th Cir.2000), or porcelain dolls fashioned to embody Norman Rockwell illustrations, as in Saturday Evening Post, 816 F.2d at 1193). In sum, Schrock's photographs are derivative works of the copyrightable toys that they portray.

The court then widened its destructive trip through basic principles of copyright law by holding that there was no original derivative authorship based on the Seventh Circuit’s widely criticized Gracen opinion. In short it was a windy, blustery day in Chicago.

Retroactive work for hire agreements

Run of the mill cases sometimes illustrate common problems. Gladwell Government Services, Inc. v. County of Marin, 2008 WL 268268
(9th Cir. January 28, 2008) presents two: an after the fact work for hire agreement, and a transfer that is (allegedly) vague about whether it transfers copyright or ownership of physical objects. All circuits permit after the fact transfers, so what’s the different? Both involve independent contractors. One – and perhaps the only – explanation is that since copyright vests automatically upon creation if there is no agreement at the time of creation, the author is the author, a status that cannot be altered later. But if the parties agree at the time and just don't sign at the dotted line why should it matter? Of course, if the creator disputes he or she had agreed to work for hire status that's a different fact setting, one where presumably there was no signed agreement. I am referring to cases where there is an after the fact signed work for hire agreement. There are other fact settings too pointing the other way, say one where the commissioning party later, perhaps years later, insists that a work be for hire when the parties had not so agreed at the time, and the commissioned party, under the gun in order to get a new job, agrees under duress. Maybe its best just to have a clear rule: signed at the time of (or before) creation, or no work for hire.

In Gladwell, the work for hire agreement was entered into after the fact. But there was also a belt-and-suspenders transfer. That agreement read: ““[a]ll reports, information, data, work product, findings, and conclusions furnished to or collected, prepared, assembled, and/or made by [Gladwell's agents] under this Agreement (“Work Product”) shall be the property of [Marin].”

The posture of the case is important, a motion to dismiss by defendant, my former home County of Marin, California, to dismiss for failure to state a claim. The district court granted the motion, the Ninth Circuit reversed in yet another unpublished opinion:

The central claim raised on appeal is that Gladwell had authored and obtained copyright protection in certain material (“Pre-Existing Materials”) that pre-dated the Marin contract that resulted in the creation of the retention schedules (“Marin Schedules”). The Copyright Act provides that copyright ownership “vests initially in the author or authors of the work.” 17 U.S.C. § 201(a). However, if the work is made “for hire,” “the employer or other person for whom the work was prepared is considered the author ... and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.” 17 U.S.C. § 201(b). Section 101 of the Copyright Act defines a “work made for hire” as “a work specially ordered or commissioned ... if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire....” 17 U.S.C. § 101(2). The plain language of the statute indicates that a work-for-hire agreement cannot apply to works that are already in existence. Works “specially ordered or commissioned” can only be made after the execution of an express agreement between the parties. See Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 558-59 (2d Cir .1995); Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 412-13 (7th Cir.1992) (“The writing must precede the creation of the property” to qualify as a work-for-hire agreement). Accordingly, Marin could not acquire copyright ownership in Gladwell's Pre-Existing Materials through a work-for-hire agreement. Additionally, the agreement did not transfer Gladwell's copyright interest in the Pre-Existing Materials to Marin. The agreement provides that “[a]ll reports, information, data, work product, findings, and conclusions furnished to or collected, prepared, assembled, and/or made by [Gladwell's agents] under this Agreement (“Work Product”) shall be the property of [Marin].” This language by itself cannot operate to effect a copyright transfer as a matter of law. See 17 U.S.C. § 204(a) (requiring that a transfer of copyright ownership must be made in a signed writing); Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir.1990). Transfer of a copyright interest must be made expressly. Id. (“The rule is really quite simple: If the copyright holder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of paper saying so.”).

There the RIAA goes again

In a 1980 debate with then President Jimmy Carter, Ronald Reagan, remarked, "There You Go Again." In a 1989 interview with Reagan by Jim Lehrer, Reagan explained "it just seemed to be the thing to say in what he was saying up there, because it was to me it felt kind of repetitious, something we had heard before." And so it is with the RIAA.

Last Friday, I and many others participated in an all-day, closed congressional staff-Copyright Office round table meeting about the statutory damages provision in the so-called Pro-IP bill. The session was wonderfully free of rancor. The Copyright Office had prepared a list of issues that were thoroughly explored in great detail by the participants in a professional, constructive manner, with the exception of a gratuitous, buffoonish attack on the Google/YouTube deal by the NMPA. David Carson, Associate Register of Copyrights, was the moderator, and did a masterful job of keeping the proceedings on track and on point.

Speaking were proponents of the provisions, opponents, and those who were neutral. Legislative history, Congressional intent, and case law were also reviewed. Lawyers who litigated spoke of their experiences; non-lawyers spoke of their experiences. RIAA's representative said little. I had not intended to say anything about the meeting, but I was provoked by a comment from a representative of the RIAA quoted in an article by Andrew Noyes in the current issue of TechDaily: "[A] lobbyist for the Recording Industry Association of America said opponents of the section tried to turn what was supposed to be a narrow conversation "into a referendum on the copyright system in general."

That statement is completely false, and is a sad effort to denigrate what was a productive exchange of views among a diverse cross-section of interests. The statement is at the same level as Bill Clinton's remarks after Barack Obama's win in South Carolina. The parties who opposed the provision as well as those who supported it stayed on the high ground (with the one exception of NMPA), focusing on the question of statutory damages and how to recompense copyright owners for their monetary injury. No one attacked the system of copyright, and no one suggested that copyright owners should not receive every penny of their actual harm, nor that they shouldn't receive statutory damages at their election. Opponents of the proposal asserted that the existing regime did adequately recompense copyright owners, a point the proponents were never able to dispute despite repeated requests to do so by the Copyright Office. Their silence was prolonged and embarrassing. But a request that proponents of legislative change make their case is in no way a "a referendum on the copyright system in general." And if it is, Mr. Carson was a part of the cabal because he repeatedly pressed the proponents too.

When the RIAA was falsely accused recently by the Washington Post of taking a position in a brief it hadn't taken, I stood up for RIAA, and would do it again, but RIAA should itself do unto others as it would have them do unto it, and it is most ironic that a process set up by the sponsors of the legislation to flesh out the need for legislation supported by RIAA should under attack by RIAA.

It is also time for the RIAA (and NMPA in its usual role of Toto) to stop hiding behind photographers' skirts in pushing what is an unwise, gluttonous proposal: the proposal is not new and has nothing to do with photographers; it is a recycled proposal whose origins lie in the MP3.com litigation. The purpose of the amendment is not to clarify Congress's intent because Congress's intent is already clear; the purpose of the amendment is not to correct the courts, because the courts have done a pretty good job in interpreting the statute; the purpose of the amendment is not to provide needed flexibility in the award of damages because the current law already has tremendous flexibility; rather the purpose of the amendment is to hand a windfall to those who have too much already and who will never be satisfied with more.

Personal Jurisdiction and eBay

The Tenth Circuit has issued an interesting opinion on personal jurisdiction, Dudnikov v. Chalk & Vermillion Fine Arts, Inc. (No. 06-1458).

Plaintiffs were Power Sellers on eBay. Among the things they sold were two prints that were a parody of images by the (I think kitschy) artist Erte. Using eBay's verified rights owner program, licensees of Erte got the plaintiffs' auction for the goods terminated. Plaintiffs sent a notice trying to get the action reversed, but defendants refused. Plaintiffs filed a DJ action in Colorado where they live, claiming that not only did defendant's termination cause them economic loss, but that it took its actions well aware that plaintiffs' use was a fair use. Defendant is a Delaware corporation with its principal place of business in my home state of Connecticut.

Defendant moved to dismiss for lack of personal jurisdiction. The district court granted the motion, the 10th circuit reversed in the attached 36 page opinion. The court of appeals held that by sending eBay a letter invoking the verified rights owner provision, defendant was intentionally took action to cause them harm in Colorado under the Supreme Court's Calder decision. The court held that defendant's sending the termination notice to eBay in California could fairly be considered the proximate cause of plaintiff's claim, distinguishing cases involving cease and desist letters. Defendants' letter as deemed to have been "expressly aimed" at Colorado even though it was sent to California, the court writing that defendants "'express aim' ... can be said to have reached into Colorado in much the same way that a basketball player's express aim in shooting off of the backboard is not simply to hit the backboard, but to make a basket." The court must have been thinking of the Denver Nuggets rather than the NY Knicks.

Jokes and Copyright

Jay Leno, NBC, and others (Rita Rudner, Jimmy Brogan, Diane Nichols, Sue Pascoe, Kathleen Madigan and Bob Ettinger) against comedy author Judy Brown and her publishers for the unauthorized publishing thousands of their jokes in 19 books over 10 years, entitled “The Funny Pages, Squeaky Clean Comedy, Funny You Should Know That, Getting Old Is a Joke and Joke Stew. (I wonder about the statute of limitations defense for the stuff older than three years). Leno is quoted as saying “I thought it was important to make it clear that jokes are protected like any other art form…. On behalf of the tremendous and talented group of writers we have at The Tonight Show and many other hardworking comedians, I'm very glad we've been able to stop this practice once and for all."

Brown, issued an apology : "In my books, I have published jokes of Jay Leno and the other comedians in this lawsuit without their permission.... I sincerely apologize for doing so. I greatly admire the creativity, wit and energy of stand-up comedians, and I recognize that comedy is as much an art form as other types of creative expression...This is why I am settling this lawsuit by agreeing never again to publish their jokes without asking their permission to do so."

While Ms. Brown was made to repent, some of our top comedians are alleged to have very sticky fingers with their colleagues’ materials. Many articles have been written about Robin Williams. Here is one from a Feb. 14, 2007 article in Radar, which begins:

Anyone who has ever performed stand-up is familiar with the red light, the universal signal that warns dawdlers it's time to wrap things up. In the '80s, comics at the Hollywood Improv came up with a novel use for the light. When shining steadily, it had the conventional meaning. But if the bulb began sputtering, it was the comedic equivalent of an air-raid siren, warning performers to lock up their original material immediately unless they wanted to lose it to a master thief.

Robin Williams, comedy's most notorious joke rustler, was in the house.

Though the rap has followed Williams for years, he's not alone. In the world of stand-up, joke-jackers are as common as exposed brick walls and liquored-up hecklers—an occupational hazard that eventually robs every working comic of time-tested material. It's the dirty little secret of the comedy world, a crime committed at every level—from amateurs at open mikes to big-name pros on late-night TV. Though rarely discussed outside the clubby, if sharp-elbowed, comic community, the subject is the surest way to wipe the grin off a funnyman's face. Daily Show correspondent Demetri Martin learned the lesson during his first year on the circuit, when he watched in horror as a comic brazenly recycled a joke he had told the previous evening. "I thought, Jeez, this is how it works?" he recalls.

George Lopez accused Mencia of ripping off his act for an HBO special. "One night, I picked him up and slammed him against the wall," Lopez told Howard Stern. Unfortunately, it is. While most comics take pride in performing their own material, many have built lucrative careers on borrowed bits.

There are numerous others mentioned in the article to including this rather unusual one out of many about Dane Cook:

Joe Rogan, host of Fear Factor and formerly of The Man Show, says he experienced this firsthand with a routine he spent months developing on the topic of tiger fucking. When Rogan saw a friend he'd performed with many times recycle his bit on Comedy Central after simply changing the tiger to a rhino, his claws came out.

The friend? Future megastar Dane Cook.

Here is a passage about Dennis Leary

Accusations of comedic skullduggery have also dogged Denis Leary, who has spent much of his career denying that he borrowed his act wholesale from Bill Hicks, the edgy, anti-establishment legend who died of cancer in 1994. Critics have long cited a laundry list of alleged similarities between Leary's 1993 album No Cure for Cancer and Hicks's earlier work, from Leary's angry, chain-smoking persona to specific jokes about tobacco, health nuts, and lame bands. The charges grew so widespread that they inspired a scathing joke among some of Hicks's friends that Leary had become famous only because, well, there's no cure for cancer.

Colleen McGarr, a onetime talent coordinator for the Montreal Comedy Festival and a close friend of Hicks's was backstage at the fest in 1991 when she first saw Leary perform what seemed to her an uncomfortably familiar set. "I was aghast," says McGarr, who later became Hicks's manager and fiancée. "To me, it was Bill's material done in a shabby, humorless way, but shocking enough that people would respond to it."

"I was shocked that [Leary] could still work in Boston," says Rogan, who claims he has also watched Leary recycle old bits by Ray Romano.

Compendium II of Copyright Office Practices § 420.02 states: “Jokes and other comedy routines may be registered if they contain at least a certain minimum amount of original expression in tangible form. Short quips and slang expressions consisting of no more than short expressions are not registrable.” In other words, jokes are to be considered under the ordinary originality standard applied to all other material.

What have the courts held? In Jeff Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200, 1217–1219 (N.D. Ga. 1995), the court gave very expansive to Jeff Foxworthy’s “You might be a redneck if …” one-line jokes, jokes which seem to fit within the final, non-protectible part of the Compendium, taken individually. The court however, saw things differently:

Defendants argue that the jokes are not original to plaintiff because he receives ideas, often in the form of jokes, from others. To support this assertion, defendants point to the Foreword to plaintiff's book, Red Ain't Dead, where plaintiff wrote

[N]ot a day goes by that someone doesn't offer me a new example of ‘redneckism’ ... With the help of my wife and friends, I add several to the list almost daily. I have collected numerous Redneck Lines from radio audiences and even from my live show audiences.

… Defendants therefore argue that “plaintiff's work consists of preexisting ‘public domain’-[sic] material that was ‘authored’ by many persons over the years.” …

Plaintiff testified at the hearing in this matter that he does in fact receive ideas from other sources, but more than 95% of his redneck joke ideas are original to him. … More important, plaintiff testified that, even when he receives an idea from another person, it is plaintiff who takes the idea and gives it the expression in the form it appears in his books. In other words, plaintiff testified unequivocally that he wrote every word in his books, calendars, etc. Finally, plaintiff testified that he wrote and had the ideas for each joke appearing on defendants' t-shirts produced at the hearing.

….
In the same way, two entertainers can tell the same joke, but neither entertainer can use the other's combination of words. This is where defendants' argument misses the mark. Copyright is concerned with the originality of the expression, not the subject matter. Plaintiff repeatedly stated that he uses other people's ideas, but he puts them in his own words. At the hearing, he explained why:

A joke is [...] a strange thing. And probably to the public, they never realize this. But I have-with a comic, we all have the same bowl of words to work with, and the whole trick is to take the smallest amount of words and put them in the proper order. You know, I've sat backstage with Jay Leno or Gary Shandling and sometimes for ten or fifteen minutes argued about a particular one line in a joke, which word should go where, should you delete this, which word should go to the end of the joke, and so that's why it changes. I mean, it's to get the maximum laugh from, you know, the shortest amount of material.

Q. How important is the particular expression of the joke versus the underlying idea of the joke?

....

A. Well, I mean the idea is key in coming up with the wording. You need-the idea comes first and then you play with it to get the wording correct.

Unofficial Trans., at 18-19. Plaintiff clearly established at the hearing that all of the jokes copied by the defendants were not only his own ideas, but his own expression. His expression clearly evidenced a “modicum of intellectual labor,” Feist, 499 U.S. at 346, 111 S.Ct. at 1288 (quotation marks and citation omitted), and defendants clearly copied that expression verbatim. Accordingly, plaintiff has shown a likelihood of success on the merits of his copyright claim.

Another case involved the classic humor-grabber, the fart joke, JCW Investments, Inc. v. Novelty, Inc., 289 F.Supp.2d 1023 (N.D. Ill. 2003), in which the trial court was offended by defendant’s association of such jokes with a specific class of people:


Defendant directs the court's attention to excerpts from Jim Dawson's Who Cut the Cheese? A Cultural History of the Fart, Ten Speed Press (1999), as evidence that “ ‘fart jokes’ have long been popular ‘among the lower classes’ and ‘poor people.’ ” Assuming arguendo that this proposition is true, however, does not dictate that it is “standard” to depict a farting character as having low socioeconomic status.

On appeal to the Seventh Circuit, 483 F.3d 910 (7th Cir. 2007). the great Judge Diane Wood expressed that court’s surprise: "Somewhat to our surprise, it turns out that there is a niche market for farting dolls, and it is quite lucrative."

Whether Mr. Leno is blowing hot air with suit, it does seem that the practices of some other comedians is less respectful of those (still striking) writers and whose behalf of course the suit was brought.

FreeLaw

An important rationale for the lack of copyright in judicial opinions is the belief that the public should have free access to the laws they are commanded to obey. But lack of copyright is not the same thing as providing access. The Internet is beginning to solve the access problem, although difficulties remain. Court websites vary wildly, and none as far as I am aware of make available all the material they receive in electronic form.

A number of companies and organizations beside the well-known paid services of Westlaw and LEXIS/NEXIS have stepped in to fill the void, although these tend to focus on court opinions. Yesterday there was an article in Law.com was about one person who is trying to provide broader protection, Carl Malamud:


In November, Malamud and the legal research company Fastcase announced an agreement to publish 1.8 million pages of federal case law in the public domain. The archive, to become available sometime in 2008, will include all U.S. courts of appeals decisions since 1950 and all Supreme Court decisions since 1754. Notably, this public database will come about with the cooperation of Fastcase, which has agreed to sell this case law with no strings attached.


Another project is the Atlaw joint project of Columbia Law School and the University of Colorado Law School, which contains federal decisions to the early 1990s from the Supreme Court and federal appellate courts. Franklin Pierce's law school has an extensive online library of material related to IP, called the IP Mall. Last but definetly not least is The Internet Library of Law and Court Decisions is an online case digest which provides in-depth analysis of over 520 court decisions affecting those who do business on the Internet. The Library is updated regularly and can be found at http://www.internetlibrary.com

Court decisions are organized by subject matter. The user is provided with a brief synopsis of the court's decision. If the decision is of interest, a link takes the user to a more thorough analysis. Pdfs of, or links to the full text of most court decisions analyzed are also provided. A free electronic newsletter, Internet Law Update, is available to provide users with the latest cases added to the Library. A full text search engine is also available to assist in utilizing the Library's resources.

The Internet Library has analyzed cases covering a broad array of topics, including trademark and copyright infringement, dilution, use of meta tags, links, thumbnails and framing, browse wrap, click wrap and shrink wrap agreements, domain name disputes, internet service provider liability, subpoenas, online defamation, gripe sites, the Digital Millennium Copyright Act, the Electronic Communications Privacy Act, the Computer Fraud and Abuse Act, jurisdiction, the legality of gambling on the Internet, search engine advertising, licensing requirements for the operation of an online pharmacy and automobile distributorship, the legality of keying and cookies, use of e-mail in the work place, spam, the legality of pop-up ads and spyware, and First Amendment issues arising out of governmental regulation of the Internet, among others.

The Internet Library also features an Online Resources section that provides links to over 300 free

Copyright Claim in Frog Croaks

The Ninth Circuit has taken a singularly restrictive approach to claims of copyright in sculptural works depicting real animals. For example, See Satava v. Lowry, 323 F.3d 805, 810 (9th Cir.2003) the court held that a glass jellyfish sculpture was unprotectible as “commonplace and typical of jellyfish physiology.” The most recent case is George S. Chen Corp. v. Cadona International, Inc., 2008 WL 152651 (9th Cir. Jan. 17, 2008). The opinion is marked not for publication, but it contains a substantial dissent by Betty Fletcher, illustrating once again the lawless of courts in attempting to deny precedential value to opinions that contain important discussions of law: if the issues were important enough for Judge Fletcher to dissent, the opinion is enough to issue as published.

Plaintiff claimed infringement of copyrights on dolphin, frog, and moon/star wind chime ornaments, and on a stand-alone frog ornament. The district court granted summary judgment to defendant; the court of appeals affirmed.

Plaintiff testified that it tried to make its works “approximately true to life,” testimony that the court of appeals seemed to be quite important, but why? There is no Platonic frog, and even among frogs, there are many different types, and among types many different looking individual specimens. Additionally, all sculptors must decide which features to emphasize, de-emphasize, delete, or add. As a parent who has bought dozens and dozens of stuffed animal toys, I can testify that even among frogs there is a wide variety to choose from, some of which are a hit at home, and others rejected.

The court placed on plaintiff, apparently, an obligation “to identify any elements of the dolphin or frog that it selected that are not commonplace or dictated by the idea of a swimming dolphin or sitting frog sculpture” According to the majority, plaintiff’s owner’s concept was

“to make a ‘cute’ dolphin-with an open mouth and an uplifted, twisted tail which made it appear to be swimming-but these features necessarily follow from the idea of a swimming dolphin.… There is no indication that the frog is anything but a stereotypical frog, sitting as a frog would sit in nature. Although a combination of unprotectable elements may qualify, [plaintiff] points to no elements that, considered together, have a sufficient quantum of originality for copyright protection. …Nor does [plaintiff] show any respect in which George Chen made choices that contributed a non-trivial, original feature. Accordingly, [plaintiff] has failed to show the quantum of originality that is required … for even thin protection.

In her dissent, Judge Fletcher noted that plaintiff’s registration entitled it, prima facie, to protection, and that defendant:

“Cadona did not offer any evidence of its own to rebut that presumption, relying instead on the bare legal argument that under our decision in Satava v. Lowry, GSC's works do not merit copyright protection because they are based on items that exist in nature. 323 F.3d 805 (9th Cir.2003). Satava, which was not a summary judgment case, does not so hold. Id. at 812 (“We do not hold that realistic depictions of live animals cannot be protected by copyright.”). It is true that in Satava the court found that copyright protection for items from nature does not extend to aspects of a work “resulting from [an animal's] physiology.” Id. at 810. But this language from Satava does not empower the district court, nor this court, to act as fact-finder and arbiter of originality on summary judgment. North Coast, 972 F.2d at 1035 (“The plaintiff was entitled to have the validity of its copyright determined by a trier-of-fact.”).

Even if Cadona had carried its burden on summary judgment-and it did not-contrary to the majority's suggestion, [plaintiff] placed in the record a declaration from [plaintiff’s- president identifying artistic choices made in creating the ornaments sufficient to raise a triable issue of fact on originality. …

The majority apparently shares the district court's subjective opinion that the plaintiff's works are simply too “stereotypical” to warrant copyright protection. Maj. op. at 2. But the Copyright Act does not allow copyright registrations to be invalidated on nothing more than a failure to conform to a particular judge's idiosyncratic notions of creativity. An artist or craftsperson can create a work based on an animal using his skill and artistry and imagination that is “original.” He can copyright his creation. And if a defendant makes an exact copy of that work, that artist is entitled to have a jury decide whether or not his work is original enough. I respectfully dissent.

Without having seen the works oneself, it is not possible to take sides, but in the abstract, Judge Fletcher states the better case.

The Natural Rights Issue

Claims that copyright involves human rights or is a property right are based on the theory that copyright is also a natural right -- a right that exists independent of legislative enactment, even if there are legislative enactments. In the United States, copyright is not a natural right, since the Supreme Court has said so twice, first in 1834 in Wheaton v. Peters, and then in 1932 in Fox Film Corp. v. Doyal. Yet, rhetoric based on a natural rights basis for copyright are behind all the claims that those who use copyrighted works without permission are thieves or pirates. If copyright is instead a limited privilege that parcels out limited control to copyright owners, one might view issue differently.

Professor Tom Bell has a draft of a book that takes on these issues and many others, called "Intellectual Privilege: Copyright, Common Law, and the Common Good," available here. There is a lot of good thinking and research, and I encourage others to read it.

Appeals to Human Rights: The Next Battlefield?

In yet another sign that the water will never be safe when it comes to proposals to grant copyright owners ever greater rights beyond the current Incredible Hulk level, the groundwork is being laid for a new source of law: human rights. In this battle, the push may be limited to individual copyright owners, although recently at an International Governance Forum meeting in Rio on the proposed broadcast treaty, a speaker from the Council of Europe, billed as an "international human rights attorney" stated that intellectual property rights are human rights. I confess to being moved to tears by European human rights attorneys taking up the cause of very large U.S. broadcasting corporations: Donald Rumsfeld was so wrong.

The beauty of the approach to new rights as human rights is that according to some of its advocates it doesn’t have to rely on new legislation – much like Jimmy Stewart woke up one morning and discovered to his amazement that he had been speaking prose his whole life – some day soon we may wake up and find that vague human rights declarations bind nations to grant authors new, formidable rights. Like Winston Churchill, I say we must oppose this effort with everything we have:

We shall go on to the end, we shall fight in France,
we shall fight on the seas and oceans,
we shall fight with growing confidence and growing strength in the air, we shall defend our Island, whatever the cost may be,
we shall fight on the beaches,
we shall fight on the landing grounds,
we shall fight in the fields and in the streets,
we shall fight in the hills;
we shall never surrender


The effort to shoehorn copyright within human rights is not an overnight phenomenon, see e.g., F. Dessemontet, ‘Copyright and Human Rights’, in: Jan J.C. Kabel and Gerard J.H.M. Mom (eds.), Intellectual Property and Information Law - Essays in Honour of Herman Cohen Jehoram, The Hague/London/Boston: Kluwer Law International 1998, p. 113; M. Vivant, ‘Le droit d’auteur, un droit de l’homme’, [1997] 174 RIDA 60; A. Kéréver, ‘Authors’ rights are human rights’, [1999] 32 Copyright Bulletin 18. Article 27 (2) of the 1948 Universal Declaration on Human Rights reads:

“Everyone has the right to protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.” Article 19 of the Convention states, “Article 19: “Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.” And Article 27(1), which proponents of copyright as a human right do not cite in favor is Article 27(2), reads, “(1) Everyone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits.”

Article 15(1)(c) of the United Nations Covenant on Economic, Social and Cultural Rights reads: “The States Parties to the present Covenant recognize the right of everyone: […] (c) To benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.” But neither of these lofty statements requires implementation in any specific form, and for good reason: that was the job of the Berne Convention. Nor do they forbid any exceptions to the rights; phrased more accurately, they do not state how far the author’s rights must go.

On November 21, 2005, the UN High Commissioner for Human Rights issued a document (called General Comment No. 17) on Article 15(1)(c), available here.

The document is a call to arms by fellow travelers, one of whom appears to be Professor Graeme Austin of the University of Arizona law School. In a paper authored with a law student at the school, and posted here on ssrn.com, Professor Austin tries to make the case for copyright as human right. Here I face a problem: even though the paper has been posted on ssrn.com and is accessible to anyone around the world, and may be freely downloaded from that site, there is the following legend on the bottom of every single page: “Graeme W. Austin, Copyright Law Reform Through a Human Rights Lens. Working draft: please do not quote or cite without permission. To be published in: Intellectual Property and Human Rights (Paul Torremans, ed. Kluwer Law International 2008). I fear I may have already contravened the legend merely by quoting it. What should a conscientious person do when faced with such a dilemma: a freely available work that the author has tried to make not citable or quotable from? Is doing so bad manners, copyright infringement, or, dare I ask, a violation of human rights? This last possibility would be ironic since Professor Graeme attempts to justify treating copyright as a human right in part by asserting concerns over censorship of authors (see pages 13-14), but as in all paeans by maximalists, there is also only one author, the copyright owner who claims foul, even if crying foul suppresses other authors; those other authors either are not authors or are a subspecies of authors who are not entitled to human rights.

Professor Graeme also trots out the old saw of protecting what he calls creators’ vulnerability; we are told attacks against authors, both blatant and covert continue today, although none of the examples cited have a thing to do with copyright issues. (see pages 11-14. Again, only one type of author is vulnerable; those authors who have been subject of oppressive claims of infringement by other authors in an effort to stifle them are apparently not authors or are a subspecies of authors who are not entitled to human rights.

The purpose for asserting a human right of copyright is clear enough though: to avoid the meager limitations and exceptions that exist, and to avoid any sort of check on copyright by messy theories of instrumentalism, instrumentalism being the theory that copyright is designed to serve a socially useful purpose, as compared to vesting copyright owners with the unfettered right to stop all uses of their work. Lest readers think I am overstating this, I will do what the legend on each page says I shouldn’t do, quote from the article. I do this not to make a point about the legend, which I find obnoxious, but because I cannot criticize Professor Austin’s article without doing so: the passage in question is so remarkable that it must be read, for in it he expresses quite clearly the human rights agenda. Here it is (pages 8-9):

Considerable embarrassment for the human rights agenda might be caused if a human right to intellectual property were understood as coinciding exactly with the :instrumentalist” intellectual property rights protections required by the TRIPS Agreement. Rather than providing a source of limiting principles, human rights could instead establish a basis for assertions of requirements for stronger protections than are provided by existing intellectual property laws. If human rights “trump” intellectual property law, their power to constrain intellectual property may be undermined if human rights law itself requires protection of intellectual property.

That last sentence is an oxymoron, and he later acknowledges (quoting again!,for the same reason, here from pages 34-35):

[L]egal obligations relating to creators; human rights do not of course enjoy the same dispositive ‘bite’ as specific obligations in the international intellectual property regime. But creators’ human rights should have at least some, and perhaps powerful, normative claims that should be reckoned with in the context of domestic law reform agenda. Acknowledging creators’ human rights may deepen our understanding of the implications of law reform deliberations.

So what are the human rights in question: fish or fowl, real rights in the sense of obligations that are binding on states, or are lofty statements like those in the U.S. Declaration of Independence that express principles but not law. And what are the rights at issue any way? Would they reach my quoting in this blog against the author's legend? I can’t say I know, but I do know that they would not, according to the article, be subject to the U.S. constitutional objective of promoting the progress of science: no such grubby aspirations for human rights advocates!

At this point one might sit back and say, ah idle academic prattle. Not so, arguments are being made in EU courts on the issue, and in the recent UK Lord Triesman follow up report to Gowers, this remark is made in paragraph 37:

Ministers will be required to make a statement in accordance with section 19 of the Human Rights Act of 1998 that the provisions of any amending instrument are, in their view, compatible with the European Convention on Human Rights (“ECHR”). The primary relevant ECHR consideration is whether Article 1, Protocol 1 ECHR is engaged. We will need to consider this once the proposals are developed following this consultation and will comment further when we consult on the draft statutory instrument.
How, for example, will permissible limitations and exceptions work out with the famous three-part test, or parodies, if as Professor Austin advocates, the instrumentalist approach to copyright as a human right is not employed: so what if the use doesn’t harm the market; all that matters is that the authors’ dignity has been impaired. Indeed, in the U.S., a prominent scholar at a New York City University opposed permitting fair use to act as a defense to the artists’ rights granted in the 1990 Visual Artists Rights Acts. Fortunately, I convinced Congress otherwise, but these and other issues will be raised again if the human rights approach gains traction.

Winston Churchill, where are you now that we need you?

Scrabbling Copyright

A recent suit in India, followed by Hasbro, over an online version of Scrabble called Scrabulous shows another side of social networking sites: the ability to change a gaming experience between two people into one taking place over continents, involving, it is reported, 2.3 million daily users on Facebook. Permission was allegedly sought, but not received; not surprising since Hasbro granted Electronic Arts exclusive rights. But I don't think EA had put out a social networking version, which is reportedly quite addictive, and can be played out over days, not hours, and across continents, not just living rooms. (I played Candyland with my twins this morning, so traditional board games are still viable too).

There are unauthorized versions of other games, including of Hasbro's Monopoly and Boggle, but in those cases, the games were altered. Copyright in games extends only to the graphic elements and textual explanations, not to the way the game is played, so it is possible to make some changes and avoid infringement. The reaction of fans of Scrabulous Hasbro's actions has not been positive.

Appropriation Art Again

Shepard Fairey had a solo art exhibit in LA in December. Among those commenting on the exhibit was Mark Vallen, who with the help of other artists, published online a lengthy, fairly savage attack on Fairey's unattributed appropriation from a vast number of sources. Vallen provides side by side comparisons and detailed discussions of each piece. Vallen's article is noteworthy in a number of respects: it represents one group of artists challenging another artist, and it sets out some thoughts on what he thinks represents genuine appropriation art from mere plagiarism. I imagine not all will agree with Vallen's approach, but the article is thorough, and would make for an excellent presentation at a seminar or law school class. Here is the link. Hat tip by the way to my favorite online sneaker website, hypebeast.com

The Dead Hand of widows, including Zappa's

In arguing for meaningful fair use of unpublished works, Second Circuit Judge Pierre Leval expressed worry about what he called the dead hand of widows (not as many men get to claim widower status): widows of authors who suppress biographies they don't like (and they only ones they ar elikely to like are the ones that they pre-approve and get license fees for). The blight extends to children and especially grandchildren, who under the guise of protecting the artistic vision of a dead relative they may have only slightly known, also seek to suppress performances they don't like; the dust-up with James Joyce's relatives being a recent one on the English-speaking world, and Victor Hugo's being one in France.
Now we have an example of the dead widow syndrome that takes the cake, one involving Frank Zappa, whose band "The Mothers of Invention," gives the story a very ironic twist. The item comes from my favorite UK website, IPKat:

The IPKat's friend Ben Challis of Music Law Updates has sent him this item, which he describes as "disturbing", about the current state -- or is it fate -- of Frank Zappa tribute bands. According to the Herald & Review

" ... Frank Zappa died 14 years ago, just short of his 54th birthday. While it might be hard to believe for those who know Zappa for "Valley Girl" and "Don't Eat the Yellow Snow," his 60-plus albums represent a valuable canon to a pocket of fans ...

That music has also launched about a dozen tribute bands that play both here [ie the US, or "there" as it is known to us Europeans] and in Europe. In addition, Zappa Plays Zappa, a group headed by Frank's son Dweezil, has conducted a pair of tours of the United States, recently toured Australia and is planning shows in Japan this month.

The problem is, Zappa Plays Zappa is the only group authorized by the Zappa Family Trust, the group that controls Frank Zappa's estate. And the trust spent much of December sending out cease-and-desist letters to blogs, to tribute bands and to a European memorial concert that's been going on since 1990 (one that Frank Zappa endorsed during his life).

The trust's cease-and-desist case - which has altered but not shut down any blogs, and which failed to stop at least two tribute band performances it was designed to halt - seems to rest on the interesting yet dubious assertion that, quoting the letter from trust lawyers posted on the Web site of tribute band Bogus Pomp:

" ¦ (ASCAP) licenses ¦ limit the grant of rights to nondramatic performances ¦ Many works by Frank Zappa are inherently dramatic in nature."

Carried to a logical extreme, any band that performs a tribute to another band in some "dramatic" form is performing against the law. Isn't any performance on a stage "dramatic" by definition?

...

The law certainly has its place in the entertainment industry. Unreliable acts and unscrupulous promoters and venue owners need to have their feet held to the fire.

But lawyers are out of place when they begin to affect the art, and the audience's enjoyment of same.

Frank Zappa said it best during his lifetime:

"If you're a musician, play my music. If you're not a musician, play my music."

The IPKat would like to know what's going on here. If a licence to perform has been obtained and the performer is neither infringing any Zappa trade mark nor passing itself off as the long-dead hero, and no representation or suggestion is made that the tribute band has been officially endorsed, isn't that enough? Merpel says, one should not forget the extent to which the deceased promoted the image of the furry feline through such oeuvres as Yo Cats and Alley Cat.

As those playful kittens might have noted, limitation of the term of protection to life of the author (for copyright, right of publicity, and all rights) would take care of these problems. I note too this entry from wikipedia:

Situated in New York, and only interrupted by the band’s first European tour, the Mothers of Invention recorded the album widely regarded as the peak of the group's late Sixties work, We're Only in It for the Money (released 1968).

CNN Tells Us How to Burn Analog Music to Digital

Whether as a follow-up to their segment on the RIAA v. Howell dust-up about personal copying or not, CNN did a story today how to transfer your LPs or cassettes to digital form: here is the link, which is an interview with datadoctors.com. A future segment will deal with how to transfer video tape.

A Friday Grab Bag

Two items from Canada are much in the news. The first is the Canadian Court of Appeals reversal, within 24 hours of oral argument, of the imposition by the Copyright Board of a levy of up to $75 on iPods. See here. (Congrats to Howard Knopf). Then, following up on an earlier posting, Avril Lavigne has confidentially settled her copyright dispute, see here. In the UK, after issuing the comprehensive follow-up to Gowers discussed in this blog two days ago, Lord Triesman has apparently abandoned the topic entirely, resigning his government position and taking a job as President of the Football League, see here. He has a longstanding interest in the subject, as a player, referee, and coach. His appointment surprised many, especially those that Manchester United, who had expected one of there own to be appointed.

Back in the U.S., Professor Tim Wu has a piece on Slate about the Harry Potter Lexicon suit, here, in which he states:

Rowling is overstepping her bounds. She has confused the adaptations of a work, which she does own, with discussion of her work, which she doesn't. Rowling owns both the original works themselves and any effort to adapt her book or characters to other media—films, computer games, and so on. Textually, the law gives her sway over any form in which her work may be "recast, transformed, or adapted." But she does not own discussion of her work—book reviews, literary criticism, or the fan guides that she's suing. The law has never allowed authors to exercise that much control over public discussion of their creations. Unlike a Potter film or computer game, the authors of the Lexicon encyclopedia are not simply moving Potter to another medium. Their purpose, rather, is providing a reference guide with description and discussion, rather like a very long and detailed book review.

Architects, Profits, and Hearsay Objections

Cases involving damages for infringement of architectural plans and works raise some interesting questions, ones that have been discussed on this blog before. A recent Fifth Circuit per curiam opinion, Powell v. Penhollow, 2007 WL 4513119 (5th Cir Dec. 21, 2007), also brings in the perils of proof. The facts are fairly routine: architect hired to create plans, client without permission gives them to other architect who finishes job. First architect sues. There are a few twists, though: the first architect initially sued in state small claims court for unpaid fees and obtained a default judgment which was satisfied (thereby precluding an award of actual damages), and the defendant in the infringement case did not appeal an infringement finding. The appeal was by the successful plaintiff who complained about the amount of the award of defendant's profits by the magistrate judge and the judge's admission of a summary of defendant's profits without the originals being made available. The Fifth Circuit vacated a portion of the award and remanded for a new trial, which may or may not increase the damages, which were: $546.

The evidence point is a common one: defendant was trying to prove the amount of its overhead, in order to deduct it from any award. It had a summary document created which it offered into evidence; plaintiff objected, but the judge let it in, remarking as judges are wont to do: "The court will give it such credit as it deserves in the way of accuracy and so forth." Very reassuring; and also in conflict with Federal Rule of Evidence 1006 which requires that where there are voluminous writings etc. that cannot be conveniently examined by the court, a summary is fine, so long as the underlying originals are made available for examination or copying," which wasn't done. As a result, the court of appeals tossed that part of the award that relied on the summary.

The court of appeals then went on to the apportionment of damages issues; the magistrate had awarded only 1% of defendant's profits to plaintiff. The infringing house (or more accurately, a house built by using infringing plans), was sold for $950,660.42. Defendant claimed its direct costs were $837,672.15, with additional direct overhead costs of $41,280.76 and what were called "allocated overhead costs" of $56,810.25, leaving net profits of $14,696.65 . The magistrate never explained how he or she go to the $564.40 figure, but the court of appeals believed it represented 1% . Plaintiff disagreed with all but the amount the house sold for. But even if plaintiff is successful in upping the amount, one imagines the case is a net loss: two trial and one appeal, and (I think but don't know for sure) no attorney's fees due to failure to register until after infringement.

The UK Consultative Document and the Problems of Private Copying

In December 2006, Andrew Gowers, an editor of the Financial Times, issued a report and recommendations to Gordon Brown, then Exchequer, on various issues related to copyright. One controversial part of the Gowers report was his rejection of a call by dinosaur rockers for an extension of the term of copyright for sound recordings. But there were other, meat and potato recommendations too. Yesterday, the UK Intellectual Property Office, under the auspices of Lord Triesman, the Parliamentary Under Secretary of State for Intellectual Property, which issued a very substantial document, “Taking Forward the Gowers Review of Intellectual Property: Proposed Changes to Copyright Exceptions.” The document begins a formal process of implementing recommendations, in two stages: (1) the submission of public comments by April 8; (2) followed by a draft law, which will be the subject of its own consultative process.

“Taking Forward” is an exceptionally thorough, careful document, setting out the issues and laying out a number of options. It does not propose specific statutory language and in some cases does not make recommendations, in favor of discussing problems and options. There are five categories of issues covered: (1) educational exemptions (2) format shifting; (3) research and private study; (4) libraries and archives; (5) parody. I will focus only on the format shifting issue because it is meaty enough by itself and because it relates to the Howell case in the U.S. The remainder of the document should be carefully studied though.

In a déjà vu to the recent brouhaha over the RIAA’s position in the Howell case, “Taking Forward” notes in connection with format shifting (para. 81): “The current law is difficult to enforce in this area. Not only may it be difficult to justify the illegality of such activity but, because the restrictions are seen as unreasonable, they can often be damaging to the public’s perception of copyright. Many consumers simply do not understand why the act of transferring music from CDs they own to their MP3 players is illegal.” “Taking Forward” proposes (but with lots of alternative options) a format shifting exception for personal, private use. Format is defined to include not just CD to MP3 but also PC to portable player or CD (the last of these less likely). File sharing is not regarded as format shifting. There would be no right to give away or distribute the copy made; third parties could not make copies for individuals' personal use, and most significantly, the document recommends that the exception only apply to works copied after the exception is enacted. This last recommendation leaves in limbo the status of copies made before legislation is enacted, an approach that will leave a legacy of uncertainty about the law in an initiative whose purpose is to bring certainty.

“Taking Forward” does a very good job of reviewing the complexity of possibilities. Readers can review the document themselves (see pp. 15-20), so I summarize some of the issues.

1. The classes of works to which the exception would apply, i.e., just music, or audiovisual works, photographs, literary works, artistic works, computer games. and other works too? If works beyond music, should the exception be the same for all types of works or should it be different for each type of subject matter?

2. Which format shifts should be covered: analog to digital, digital to digital, CD to MP3, CD to PC?
3. Should consumers be permitted to give away the original once a copy has been made? What about giving away an iPod with burned copies in it?
4. Should third parties be able to make copies for consumers?
5. Should consumers be limited to making one copy if the purpose of the other copy is also to use on a different device?
6. Should the exception apply retrospectively or only prospectively, and on what basis?
7. Should levies be imposed for some or all of the exceptions?
8. Should DRM attach?


Note that the format shifting proposals do not attempt to solve all noncommercial copying; there are still fair dealing issues, covered in the recommendations on private research and copying, as well as educational and library issues. On amending current fair dealing provision in Section 29 of the CDPA, the Document makes a polite criticism of Gowers: "The recommendation made by the Gowers Review were fairly broad brush and leaves a number of questions to be resolved concerning the appropriate scope and form of any amended exception for research and private study." (Para 131). As an American, one thing that particularly interested me was the Document's recognition of the conflicting needs for clear guidelines so that people can know what they may do and what they may not, and the countervailing ad hoc nature of so many determinations. In my opinion, these needs should be addressed separately, but in tandem: there should be clear guidelines where it is possible to have them, but there should also be a safety valve provision for those where it is not possible to foresee specifics, but where a policy can be articulated. English courts operate very well in the period between the Statute of Anne (1710) and the 1911 UK Act in forging such ad hoc principles and in their application and there is no reason to think they cannot do so now.

Karaoke Blues

Jewishmusic.com sent me an email the other day touting the release of "Jewish Karaoke and Band Music" CDs. From the pictures on the CDs, they contain the type of music that would turn any bar/bas mitzvah into a relic of the 1950s, fond or not depending on one's nostalgia level. There have been two court of appeals opinions on copyright and karaoke in 6 months, a number that bears no relationship to the complexity of the issues raised. The recent, and the first appellate opinion on copyright in the new year is Leadsinger, Inc. v. BMG Music Publishing, 2008 WL 36630 (9th Cir. Jan. 2, 2008), from the Ninth Circuit. The earlier opinion is Zomba Enterprises, Inc. v. Panorama Records, Inc., 491 F.3d 574 (6th Cir. 2007). (See also ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60 (2d Cir. 1996)).

Leadsinger was a declaratory judgment action, and had a few inconsequential twists, like printing out the lyrics and not just displaying them alongside a performance of the music. The courts have agreed with copyright owners that karaoke manufacturers require a sync right and are not entitled to the Section 115 compulsory license, the difference being that a sync license is issued at a market rate. The sole wild hair seems to be EMI Entertainment World, Inc.v. Priddis Music, Inc., 505 F. Supp.2d 1217 (D. Utah 2007).

It is not the result in the Leadsinger opinion that interests me, but rather some weird language in the opinion. For example, “As the definition of phonorecords indicates, audiovisual works are not phonorecords. See id. §101. Thus, §115’s compulsory licensing scheme does not apply to audiovisual works.” (page 7). True enough that audiovisual works aren’t subject to the Section 115 compulsory license, but not because they are not phonorecords: no works of authorship are phonorecords. Phonorecords are the physical embodiments of works, not the works themselves. Only nondramatic musical works are subject to the Section 115 compulsory license, and audiovisual works aren’t nondramatic musical works. (Audiovisual works are, by the way, embodied in copies, not phonorecords; the definition of phonorecords explicitly excludes the embodiment of audiovisual works).

Can nondramatic works that contain lyrics be subject to the Section 115 compulsory license? Yes. While there is no definition of musical work in Section 101, Section 102(a) protects “musical works, including any accompanying words.” The Ninth Circuit though, for reasons that escape me, wrote that “Song lyrics are copyrightable as a literary work and, therefore, enjoy separate protection under the Copyright Act.” (p. 8). Nu?

Then, the court really goes off the deep end: “That the definition of literary works includes the phrase ‘other than audiovisual works,’ confirms that a literary work may constitute an audiovisual work if it also fulfills the definition of an audiovisual work.” (p. 10). Huh? Am I alone in thinking this makes no sense?