Wednesday, December 28, 2005

Justice Rehnquist, Judge Alito, and Section 105

Among the papers released by the National Archives yesterday in connection with Judge Alito's nomination to the Supreme Court is one dealing with an advance on royalties Justice Rehnquist received for his 1986 book, "The Supreme Court, How it Was, How it Is." Here is a link to the memo then Deputy AG Alito wrote.

Aliot assumes that Renhquist worked on the book after hours and without using court personnel to help. Had the contrary been the case, a number of issues would have been raised, including, for copyright purposes, Section 105's ban on protection for "works of the United States Goverment," a term defined in Section 101 as "a work prepared by an officer or employee of the United States Government as part of that person's official duties."

It is highly unlikely Chief Justice Rehnquist's book was done as part of his official duties, but the term has been construed more broadly, as alluded to in the Alito memo. The book was certainly related to Rehnquist's official duties; it is, after all, a history of the very institution he headed. But that is not sufficient to place the work within Section 105.

While there are fortunate souls who have interests outside of their day job and actually follow them, many professionals blur if not eliminate the line between night and day, to invoke the old song. And, given the expertise gathered during the day, as a society, we benefit when such individuals use their off-the-clock time to write about their area of expertise.

The rub comes when government facilities or staff are used, even though the work was created off-hours. Should there be no protection as a penalty, or should other forms of redress be resorted to? In drafting Section 105, Register of Copyrights Abraham Kaminstein favored only some form of small administrative penalty, not loss of copyright.

Moreover, some use of government facilities is not only harmless but should be encouraged, such as use of libraries. And it is hard to say that use of a computer is usurpation of government resources. Photocopy machines are somewhat different, but all employers are aware that employees use them and requiring that employees leave the building and go to a commercial photocopying center is in no one's interest. It is only when other staff or significant resources are used that the issue of a penalty should arise.

Reasonable Attorney's Fees

Section 505 of the Copyright Act permits (but does not require) the award of "reasonable" attorney's fees to the prevailing party (as part of costs). How does the court figure out what is "reasonable" and must there be an evidentiary hearing when reasonableness is disputed? On December 23d, the Second Circuit addressed these questions in a non-copyright (Section 1983 class action) case, Farbotko v. Clinton County (from the link go to "Decisions" and then "Current Month").

Plaintiff had requested fees of $200 and $250 an hour and presented evidence of the prevailing rates within the district. The District Court for the Northern District of New York) awarded attorney's fees at an hourly rate of $175 (and reduced the number of hours by 40% to reflect only partial success). No findings of fact or comment on plaintiff's evidence were made; the court apparently relied solely on the hourly awarded in other cases in the district.

In vacating, the Court of Appeals, per Judge Feinberg, noted that "a reasonable hourly rate is not itself a matter of binding precedent. Rather, ... a reasonable hourly rate is the 'prevailing market rate,' i.e., the rate 'prevailing in the [relevant] community for similar services by lawyers of reasonably comparable skill, experience, and reputation.'" A reasonable hourly rate "is not ordinarily ascertained simply by reference to rates awarded in prior cases." Instead, the court of appeals observed, the inquiry "contemplates a case-specific inquiry into the prevailing market rates for counsel of similar experience and skill to the fee applicant's counsel."

This leads to the question of how one determines that rate. Citing by analogy to a copyright case, Crescent Publishing Group, Inc. v. Playboy Enterprises, 246 F.3d 142, 147 (2d Cir. 2001), Judge Feinberg noted that "while not required in every case, an evidentiary hearing, or at the very least an opportunity to submit evidence, is necessary to determine the propriety of a fee award and the amount of such award if it is evident that the material facts necessary for those determinations are genuinely in dispute and cannot be resolved from the record."

For those of us who practice in the Southern District of New York, I should point out that the court noted that even for the rather straightforward type of 1983 action involved, the prevailing hourly rate in Manhattan is more than twice the rate in the Northern District of New York.

Tuesday, December 27, 2005

Augustine Birrell and Benjamin Kaplan

There have been, since the 17th century, many different types of works written about copyright: partisan petitions to Parliament, copyright treatises, and much later, law review articles and popular books. It is the extended lectures series I want to focus on, though, and two in particular. The first is Augustine Birrell's Seven Lectures on the Law and History of Copyright in Books, a selection from 18 lectures he delivered as a professor of law at University College, London in 1898 and then published as a book in 1899 (The link is to a 1971 reprinting by Fred B. Rothman).

Birrell (1850-1933), is a fascinating figure. He was called to the bar in 1875, and became a Queen’s Counsel in 1885. He was a member of Parliament beginning in 1889, representing West Fife, Scotland, as a Liberal. In the general election of 1900, his party made a strategic mistake by insisting he run from a district in the northeast of Manchester, resulting in his defeat. In 1906, he returned to Parliament, representing North Bristol, and also served as Minister of Education. In January 1907, he was became Chief Secretary of Ireland. That role was fraught with intense controversy, given Home Rule initiatives and tensions raised in the aftermath of World War I. Birrell put forth a number of initiatives, some of which were received well, others not. He was regarded as quite personally charming, but spent most of his time in London, and even when in Ireland, he was accused of “masterly inactivity,” particulary as regards the arming by Irish nationalists, and the events leading to the Easter Uprising that began on April 24, 1916. Birrell resigned right after the rebellion, and retired from public life. See generally Leon O’Brion, The Chief Secretary: Augustine Birrell in Ireland (Chatto & Windos, publishers, London 1969).

Aside from his political career, Birrell is best known not for his copyright lectures (and there is no evidence he had a long-standing or deep professional connection with the field), but for his widely published essays on literature. He was a witty, stylish writer, and his style quickly garnered him a wide audience. His first collection of essays, Obiter Dicta, was self-published in 1884, and much to his surprise went through six printings in the first year; his light touch of humor and irony gave rise to a new word “birrelling.” Of his legal writing, it has been said that his analysis was so clear that “solicitors complained that making the law so intellegible jeopardized their profession.” Among his admirers was Virginia Woolf, who called him a “born writer,” and who in 1930 published a favorable review of his work, “The Essays of Augustine Birrell.” Birell's son, Francis, was a member of the Bloomsbury Group. Birrell’s relationship with the Suffragette movement was much less favorable than his relationship with Woolf: on November 22, 1910, as a minister of the Government, he was attacked by a number of suffragettes, prompting Prime Minister Herbert Asquith to send Winston Churchill a letter requesting that legal action be taken against Birrell’s attackers.

The second lecture series I want to dicuss is Benjamin Kaplan's 1966 Carpentier Lectures at Columbia University, published in 1967 as An Unhurried View of Copyright. Professor Kaplan served as an illustrious professor of law at Harvard University, teaching many distinguished members of the bar, including Justice Breyer, whose views on copyright seem heavily influenced by his former professor. Kaplan later served on the Massachusetts Supreme Judicial Court.

There are currently annual copyright lectures, but these are one-offs, modern day speeches followed by a reception, and rarely of any impact beyond the event, if then (although there have been notable exceptions). The modern audience and perhaps modern lecturer, weaned on television, are not up for multiple nights of solid substance. Birrell and Kaplan's lectures were different, delivered as Professor Lloyd Weinreb has written, when "there was time not to be in a hurry." Both sets of lectures have had enduring influence, although in this country, Birrell is much less known, which is a shame. He is a witty, insightful writer who brought to bear on his subject the practical experience of a barrister and as a member of Parliament. Anyone who wants a clear-eyed look at early English copyright should start with Birrell.

Kaplan's book is well-known in this country but rarely read, in part because it has been out of print, in part because of a fondness of quoting favorite snippets without going through the trouble of reading the whole work. The out-of-print part has now blessedly been cured with the publication of a new edition by LexisNexis/Matthew Bender with the cooperation of the Suffolk University Law School Intellectual Property Law Concentration. Reading the whole work is still left up to the individual and is highly recommended: there has been a lamentable tendency among those favoring what is sometimes described as "thin" copyright to enlist Kaplan in the cause, just as Lord Macaulay's 1841 and 1842 speeches are similarly enlisted for the same purpose by the slightly more historically-inclined. Such snap-shots given a misleading impression of very full-rounded individuals. In Macaulay's case, he was one of the leading authors of his day and supportive of copyright as a system: he was merely opposed to Talfourd's life plus 60 term proposal, and offered a shorter one: life plus 7 years or 42 years from publication. His speeches do contain expressions of what he viewed as the dangers of copyright but always with the recognition that, like democracy, it is the best alternative. Professor Kaplan may have had unease about some of the details, but not about the enterprise.

Reading these works in their full glory should restore them to the position they richly deserve. The reprint of Kaplan's work is with the same pagination as the original, and I pray it is produced by a photocopy-like process because the add-ons to the volume have a number of typos and editorial errors. The add-ons consist of a helpful glossary of terms, names, or cases referred to by Kaplan that might not be familiar to modern readers. Yet, for all their assistance, one encounters entries like this one, for Macaulay: "English historian and writer who proposed a tax on readers in order to give money to authors." This is an embarrassing faux pas: Macaulay was speaking, of course, metaphorically.

There are also a number of "Contributions by Friends," in a kind of appended Festschrift. I confess to a bias against such enterprises. They are rarely insightful about either the target of the Fest and tend heavily to more about the Schrifter. At best, they should be privately printed and distributed. In this case, the description of "Friends" is largely a misdecription: only a few of the contributors knew Kaplan or were students of his. An article about the DMCA appears to have been a recycled earlier effort with no effort at relevance to the task at hand. There are nice pieces by Kaplan's colleagues Arthur Miller and Lloyd Weinreb, and a piece by Roger Zissu of Fross Zelnick in New York City entitled: "Funny is Fair: The Case for According Increased Value to Humor in Copyright Fair Use Analysis," is excellent. Surprisingly, there is no biography of Professor Kaplan, an unfortunate omission. Some may not know he is still alive and active in his 90s. I could have done without an article or two (or more) in favor of some information about Kaplan himself. Maybe even an article that discusses, directly, the influence of his work through judicial opinions or prominent jurists like Justice Breyer; but alas, it is on the whole typical Festschrift fare; Chinese food without the flavor.

Yet, one can still be thankful for the reprinting of such a wonderful work, and I am. Highly recommended!

Thursday, December 22, 2005

The Marx Brothers: Copyright Recidivists

The trademark dispute between the Brothers Warner and Marx has become an iconic example of the little guy winning over the over-reaching corporation and doing so with wit. Here is a link to the first of Groucho's letters (and which also includes links to other sites about the Marx Brothers and other comedy teams). The tiff involved the Marx Brothers' "Night in Casablanca" and Warners' "Casablanca."

The Marx Brothers were sued a number of times for copyright infringement, once under a criminal count. That case, Marx Brothers v. United States, 96 F.2d 204 (9th Cir. 1938), involved infringing and aiding and abetting the infringement of a radio script by Garrett and Carol Graham ("The Hollywood Adventures of Mr. Dibble and Mr. Dabble"). The Marx Brothers had met with the Grahams, and expressed an interest in the script; changes were made at the Marx Brothers' request. The Marx Brothers testified that they subsequently forgot about the work and that when the copyright owner's "gag man" (one Boasberg) gave them the script to use on the radio, they assumed he was the author. A jury convicted them. One unique feature of the case is that it highlighted a flaw in the 1909 Act: the failure to specify the term of protection for unpublished registered with the Copyright Office under Section 12. The Ninth Circuit read into the act the term for published works (28+28), measured from the date of registration.

In the same year, in a civil case, Clancy v. MGM, 37 USPQ 406 (S.D.N.Y. 1938), plaintiff's play "Nuts to You" was not found substantially similar to the boys' "A Day at the Races," even though both works had in common a veterinarian who runs a sanitarium and owns a race horse: no dialogue or other plot elements were taken, however.

A Day at the Races was, however, found by a jury to have infringed a scenario called "High Fever," a judgment upheld the following year in a California state court, Barsha v. MGM, 32 Cal. App.2d 566. The appellate opinion contains a lengthy list of alleged similarities, which were found sufficient to uphold the jury's finding.

Wednesday, December 21, 2005

Early Musical Borrowing

In the 2 Live Crew case, the Supreme Court made a distinction between parody and satire. Because parody targets the original, it has a need, under fair use, to at least conjure up its target. Satire, defined as a broader, more socially, culturally, or politically-oriented spoof, was felt to not have the same need given that it is not directing its sole attention to a particular work. Satires are not precluded from fair use, but seemingly don't enjoy an initial leg-up that parodies have. There are other terms to connote a degree of appropriation from other works, but without a critical purpose. One such term is "imitation."

Lisa Pon explores imitation in Renaissance prints in her excellent 2004 book "Raphael, Durer, and Marcantonio Raimondi: Copying and the Italian Renaissance Print." The origins of parody also lie in imitation, and originally the term did not connote criticism or even merriment. This topic is explored in another 2004 book called "Early Musical Borrowing" edited by the improbably named "Honey" Meconi and for the very steep price of $95.

As a music major, I immersed myself in the music of the Renaissance Netherlands composers (like Ockeghem) as well as Italians like Palestrina, and Josquin de Prez, all of whom wrote dozens of "parody masses," masses that used secular music as an integral part of the polyphony. There were also cantus firmus and paraphrase masses that were also built on others' works. The borrowing was right up front, in the titles like "L'Homme arme" and Tavener's "Western Wind" mass. As Professor Meconi notes, "Borrowing is probably almost as old as music itself, and Western notated music is replete with examples from every time period."

Given this rich history, what is unusual is the underlying thesis of Professor Meconi's collection that "major questions" have arisen about "what constitutes borrowing, how we define the different types in use, what we call them, and why and how composers borrowed what they did. These topics have been the subject of a fierce and impassioned debate; this is not a field for the faint of heart."

Oddly, that makes me feel better when we mere lawyers try to sort out fair use according to labels: we're not alone in difficulties.

Tuesday, December 20, 2005

Fair Use: The Source Copy

Should the fair use analysis be affected by whether the source from which the copy is made is authorized? The issue is a recurring one, and has taken on increased importance in the digital environment, but remains unsettled. In Time, Inc. v. Bernard Geis & Associates, 293 F. Supp. 130, 146 (S.D.N.Y. 1968), surreptious copies of stills from the Zapruder films of the John Kennedy assassination were made. While this troubled the court, the fact that defendant could have obtained the copies by other means was viewed as significant. This was particularly instructive since the court had earlier said that fair use "presupposes good faith and fair dealing," something that was entire absent in the case itself. By contrast, in Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832, 843 (Fed. Cir. 1992), the Federal Circuit took a harsh line on copying from unauthorized copies.

In Harper & Row, Publishers v. Nation Enterprises, 471 U.S. 539 (1985), defendant had knowing, unauthorized access to a temporarily "purloined" manuscript copy of Gerald Ford's then unpublished memoirs. Unlike in the Time-Geis case, unauthorized access was the only way to get access to the work "at the time." Before the district court, the purloined nature of the copy went into the mix of finding no fair use. Before the Supreme Court, the majority was also disturbed by the knowing copying from a purloined manuscript, while the dissent regarded it as a standard journalistic practice. These two views are not necessarily in conflict, but the key to Harper & Row is the fact that the work was intercepted on the way to being published: there was no effort by the copyright owner to suppress information.

The issue of the source of the source copy also takes place as part of a larger debate over the role, if any, of good faith in fair use analyses. Judge Pierre Leval of the Second Circuit, in his legendary 1990 Harvard Law review article, "Toward a Fair Use Standard," 103 Harv. L. Rev. 1105, 1126-1128, argues strongly against good faith being a factor. In NXIVM Corp. v. Ross Institute, 364 F.3d 471 (2d Cir. 2004), also involving unauthorized access to a manuscript, citing Harper & Row and my 1995 fair use treatise, Chief Judge John Walker, writing for the panel majority, held that district courts should consider whether bad faith is present in defendant's acts, but declined to follow the Federal Circuit's tough line, and noted that "even if the bad faith subfactor weights in plaintiff's favor, the first factor still favors defendant in light of the transformative nature of the secondary use as criticism." This seems right on target. Judge Jacobs, concurring, thought that "[b]ad faith is a slippery concept in the copyright context...," and noted that the purpose of the use in that case was to criticize plaintiff's work as "the pretentious nonsense of a cult."

One question in all good or bad faith determinations is good or bad faith as to what? What is the conduct that we wish to encourage or discourage?

Monday, December 19, 2005

Choreographers, Copyright, and Wine

In a recent email from a choreographer who operates the blog, an interesting example of the confluence of copyright and right of publicity is raised. On the site, there is reference to a dispute involving a choreographer whose picture was taken by a dance photographer. The photograph was then used as the basis for a painting which became the label for an expensive wine. When the dancer contacted the photographer, she was supposedly told that because the painter was inspired by, and not copying her image directly, and in another format, no payment to her was required.

On May 9th, I did a blog on the Seventh Circuit's Toney opinion, where a model able to prevail under a state right of publicity claim, with the panel reversing an earlier ruling that the Copyright Act preempted such claims. The twist in the choreographer/wine case is not in preemption, but in the degree to which right of publicity claims may be influenced by copyright principles, in particular transformative use. One might think that the two types of protection wouldn't influence each other, but in the well-known case of Comedy III Productions, Inc. v. Saderup, 25 Cal. 4th 387 (Cal. 2001), the California Supreme Court reconciled First Amendment concerns in the creation of art using individuals' images (there the Three Stooges) with publicity rights by incorporating the copyright transformative use concept, writing "when a work contains significant transformative elements, it is also less likely to interfere with the economic interest protected by the right of publicity." 25 Cal. 4th at 405.

Comedy III was followed in 2003 by Edgar Winter v. DC Comics, 30 Cal. 4th 881 (Cal. 2003), letting DC off the hook for a miniseries featuring two singing cowboys that were "less than subtle invocations of Winter and others. The court stated a test of asking "whether the celebrity likeness is one of the 'raw materials' from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question." 30 Cal. 4th at 888.

I don't know more about the facts in the choreographer-wine case, whether she is a protected under the relevant publicity statute, but the California Supreme Court provides one mode of analysis.

Friday, December 16, 2005

Glass Blowers Fight it Out

Here is a link to a story about an interesting suit going on in Seattle, a rare suit by one glass-blower against a former employee. The case is at an odd stage, since plaintiff does not appear to have identified which works are infringed, something that might lead to wonder if protection is being sought for style, concepts or ideas. There are, however, anecdotes in the article about verbatim copying. Still, originality itself is still required, and in the Ninth Circuit, there is precedent, referred to (although not by name) that took a dim view of the field. That case is Satava v. Lowry, a 1993 opinion involving a glass sculpture of a jelly fish (the link to this version of the opinion helpfully has a picture of the sculpture). As in the Washington case, there was testimony about confusing defendant's work for plaintiff's. But the Ninth Circuit found that plaintiff's selection and combination of elements were unoriginal. The same argument will no doubt be made in Washington.

Thursday, December 15, 2005

Legislative Drafting Gaffes

While the mounting of legislative initiatives frequently takes a long time, sometimes spanning years, the execution can be brutally swift. Haste makes waste and mistakes. The reason for the haste is the simple reality that most copyright legislation is passed in the very last minutes of a Congress, much like most labor deals struck right before a threatened strike, or court house steps settlements. The 1909 Copyright Act was rushed to and signed by Teddy Roosevelt only five minutes before his term expired (in those days in March). Many times last minute changes are made on the floor, under extreme pressure and lack of sleep. I will give a few examples of errors that have occurred.

In the 1831 Copyright Act, Congressman William Ellsworth, Noah Webster's son-in-law, was pushing for term extension, increasing the original term of protection from 14 years to 28 years, with the renewal period remaining at 14 years. The bill, at Webster's request, also granted the increased original term for works first published before 1831. Ellsworth ran into opposition, and the 72 year old Webster decided to come down to the Capitol from his Connecticut home and lobby personally for passage. On the way, he became ill, but recovered and gave grand speeches that had the desired effect. His illness and advanced age, however made Ellsworth wonder what would happen if Webster died before the Act was passed. Under the 1790 Act, if the author died during the first term, the work went into the public domain at the end of that term even though there were surviving heirs. Ellsworth's new bill took care of that problem for new works, but not for old works. So, at the last minute, on the floor, he changed the bill to provide that if an author of a work covered under the old statute died during the first term, the copyright would not be placed in the public domain and would also enjoy the new 28 year term. But by drafting in haste, he made an error: the renewal term was granted only to the heirs, not to the author even though when the author lived. This is was a problem that effected only a small group of authors, and even though Webster later discovered the error, it was never fixed.

The 1909 Act, despite being drafted over a period of three years, was full of inconsistencies. The late and very great Judge Henry Friendly of the Second Circuit (among whose former clerks are Chief Justice John Roberts, Chief Judge of the First Circuit Michael Boudin and Judge Pierre Leval of the Second Circuit was particularly critical of it, writing in Rohauer v. Killiam Shows, Inc., 551 F.2d 484,486 (2d Cir. 1977)(Friendly, J): “As has been so often true in cases arising under the Copyright Act of 1909, neither an affirmative nor a negative answer is completely satisfactory. A court must grope to ascertain what would have been the thought of the 1909 Congress on an issue about which it almost certainly never thought at all,” and in The Gap in Lawmaking-Judges Who Can’t and Legislators Who Won’t, reproduced in Benchmarks 41, 48 (1967): “Anyone who has had to deal with the Copyright Act of 1909 must stand in awe of the ability of the framers to toss off a sentence that can have any number of meanings.” One gap was the lack of a public performance right for motion pictures, the only way they were exploited then, and despite an amendment in 1912. The courts "cured" this omission by considering that a copy was made.

More recent errors include a wrong effective date for Section 104A, and two Section 512s. In one piece of legislation I was involved in, House Legislative Counsel gave to the floor the wrong version of a bill that amended parts of the statute that didn't exist anymore. It was too late to fix it, and the Senate passed it knowing of the error. It was fixed the next year.

Wednesday, December 14, 2005

Does Ideology Matter in Copyright?

Oren Bracha is a law professor at the University of Texas Law School, an Israeli who clerked for the famous Israeli Supreme Court Justice אהרן ברק (Aharon Barak). He recently completed an SJD dissertation at Harvard, called "Owning Ideas: The History of Anglo-American Intellectual Property," a thorough analysis of early British and American copyright legislation that takes a welcome positive law approach to the origins of copyright. The other day, Professor Bracha sent me a 131 page draft of an article called "The Ideology of Authorship Revisited." Like his SJD dissertation, it is a thorough look at issues that have been pored over by many others, but never as freshly or as innovatively.

It is, of course, impossible to review or encapsulate a 131 page scholarly work in a blog, so I won't even try; indeed, I am only beginning to process superficially the issues Professor Bracha has so carefully analyzed. Instead, I want to question whether there is an ideology of copyright in a functional sense.

By "functional" Professor Bracha means "a methodological approach under which law is understood to be a mere function of 'other' social developments. In our case, the social developments are the ideology of authorship, assumed to emerge 'outside' of the legal field. The law, in turn, is conceived of as changing and assuming forms that reflect or are determined by those ideological developments happening 'elsewhere.'" Professor Bracha's article is about the ideology of authorship, with authorship standing in to some, and perhaps, a very large extent, for all of copyright. Hence, he asserts: "Copyright law is the ideology of authorship not just because that ideology was developed and elaborated within it, rather than the law being reflective of social developments that happened elsewhere." Part of this is based on a belief that copyright underwent a metamorphosis during the 19th century.

As a self-professed non-ideologue (accurately or not), I do not dispute that others have developed healthy ideologies of copyright. What I do question is whether those ideologies have ever had any impact, at least of the kind that can be empirically demonstrated. For starters, I don't see any big transformation in copyright law in the 19th century, if by transformation we mean a fundamental change from one thing to another. That includes how authorship was viewed, as well as what constituted infringement and the rights granted. Fair use, for example, developed gradually and not as part of an Athena-like doctrine, along with fair abridgment, the latter being legislatively eliminated in the U.S. not until 1909.

What did occur in the 19th century was an increase in rhetoric about authorship and originality, usually employed in furtherance of lobbying for increased term of protection, as in the 1842 British Talfourd Act. But to assume that rhetoric employed for lobbying has an actual impact on the ideological make-up of the law needs a lot of empirical work that has not been done or at least published. Let me give a few examples of how hard it can be to make positive law when you do have an ideology. When I worked for the U.S. House of Representatives IP subcommittee, the chair, William Hughes, and his staff had a clear ideology of wanting to rely on the free market and of having no formalities. To that end, we tried to eliminate compulsory licenses - directly through repeal of the cable compulsory license and the Section 115 mechanical compulsory license, and a number of formalities. While there were isolated successes (automatic renewal) we otherwise failed miserably.

Some companies, like Disney had grown comfortable with the cable compulsory license and the broadcasters, who previously were its biggest critics, suddenly changed course 180% because of their efforts to obtain retransmission consent. In connection with the efforts to obtain a public performance right for sound recordings, we got record companies to agree to the repeal of Section 115, only to have music publishers, who were its biggest critics balk, in part because record companies had agreed to repeal. There are now more and more complicated compulsory licenses than ever.

As for formalities, well, we eliminated some in 1988 when we joined the Berne Convention, only to turn around two years later in VARA and impose formalities on the exercise of moral rights, a breathtaking incongruence if there ever was one. Did Berne adherence signal an end to the ideology of non-formalities? I doubt it. And, when we tried to eliminate the Section 412 formality, we ran in to vicious opposition from book publishers, who had also previously been a critic of that section.

One of the harsh lessons I learned in working for Congress was that exposing a past inconsistent position (and I have given examples of three above), mattered not at all. Members of Congress could care less what someone said in the past, because they themselves didn't want to be bound by what they had said in the past. All that matters is the reality on the ground now.

I doubt things were so different with legislatures in the past, but would be thrilled to be wrong. Until then, though, to me ideology is rhetoric not reality.

Monday, December 12, 2005

Winnie the Pooh 2

In an earlier posting, I discussed a case of first impression involving grants made by Winnie the Pooh author Alan Alexander Milne, a re-grant made after his death by his son Christopher Robin, and an attempted termination by grand daughter Clare under the CTEA extended 20 year period. The district court had ruled that the re-grant was not a prohibited "agreement to the contrary," and on December 8th, the Ninth Circuit affirmed.

I refer readers back to the earlier posting for the details of the dispute, and simply note that the dispute at bottom turns on whether parties who have entered into a contract transferring rights can choose to enter into a new contract, a purpose of which is to preclude termination. In Milne, this new contract occurred during the period when termination could have been effectuated, so it is hard to say that the heirs (or estate) was being strong-armed: if they didn't like the new contract being offered they could have terminated then.

The Ninth Circuit was quite dismissive of Clare's arguments, including that the second agreement was an agreement to the contrary, and of the "proverbial parade of horrors" trotted out by Milne's grandaughter, whose own father had signed the second agreement and who benefitted under it. The court was even more dismissive of Mel Nimmer's "moment of freedom" argument, which asserts that there has to be a moment under which no contract exists:

"Clare's sole support for her position is found in a treatise authored by the late-Professor Melville Nimmer. In his treatise, Professor Nimmer expressed his assumption that this subsection - which on its face applies only to the statutory termination of a prior copyright grant - is intended to benefit authors and should therefore be extended to prohibit a simultaneous contractual termination and re-grant of copyright rights. ... Clare's counsel, however, conceded at oral argument that no source of primary authority has endorsed this assumption. We too decline to do so."

The court delicately didn't mention that Mel had been retained earlier by the other side and had given them an opinion that the transaction was not an agreement to the contrary, nor that Clare's counsel was David Nimmer. Writing treatises can be inconvenient.

Sunday, December 11, 2005

BMG v. Cecilia Gonzalez

On Friday, a panel of the Seventh Circuit issued a very important opinion, per Judge Easterbrook, in BMG Music et al v. Cecilia Gonzalez. Here is a link to the oral argument.The case involved a consumer who, using KaZaA, downloaded more than 1,370 songs over the course of a few weeks after getting high-speed Internet access. Thirty of these songs formed the basis for a successful summary judgment motion (although Judge Easterbrook ignored that limitation and held that "all of the 1,000+ of her downloads violated the statute").

The end result was a finding of infringement and an award of $22,500 in statutory damages, calculated at the minimum of $750 per work. On this award, the court of appeals agreed with the district court that there is no right to a jury under Feltner provided only minimum damages are sought; that makes sense: there is no discretion or fact finding involved (once the court, as happened here, rejects the reduction down to $200 permitted by Section 504(c)(2)).

The opinion is significant in many respects. First, it established primary liability for those who download (at least under similar facts), an essential underpinning to all the previous (and presumably future) third party liability suits. The opinion then discusses what constitutes primary liability.

Defendant's argument was that she was just previewing songs, "sampling music to determine what she liked enough to buy at retail," and therefore her use was a fair use. She did not, however, erase the 30 songs in question and had not bought an authorized copy of them. On this basis and the fact that the works involved in Sony were transmitted as part of a free, over-the-air broadcast, the court of appeals rejected any analogy to Sony timeshifting. No attempt was made in the opinion to determine how long one might keep a copy for preview, although arguably the answer is that one cannot make such a copy at all, which may explain why no attempt was made.

The court then went on to discuss Internet radio and iTunes, noting that had Gonzales copied from a licensed stream, copyright owners would have received a royalty from the broadcasters. This part of the opinion is ambiguous: does it suggest that had she copied the same 30 songs and kept them as she did, that would have been OK because the stream was licensed, or is it further evdience of harm to the market? The industry's brief is not ambiguous: there is no fair use preview or any fair use for home copying, at least using a system like KaZaA.

The court also referred to "teasers" - 30 second samples on sites like, which it said was licensed. These may be licensed, but is that determinative of the issue? If a book publisher licenses excerpts for abstracts, does that alone kill fair use? What if one did make a "preview" copy from such a site? Would that be OK because the copyright owner was getting paid, or would it be not OK because the copyright owner was getting paid?

The court's opinion also glides over a number of nuances in Aimster and in one passage misstates UMG Recordings, Inc. v., 92 F. Supp.2d 349 (S.D.N.Y. 2000), saying that that opinion held "downloads are not fair use even if the downloader already owns one purchased copy." didn't involve downloading at all: bought lawfully made CDs, copied them on to its servers and through a verification process permitted consumers who had also purchased lawfully made copies to space-shift stream the CD. Judge Posner has criticized, and had Judge Easterbrook accurately understood the facts, one wonders whether, under some of the language in the BMG opinion, he would have come out the other way too, at least with respect to the consumer. (Recall was a suit against, not consumers, and over the server copy).

In any event, the BMG opinion is a huge win for the industry.

Thursday, December 08, 2005

War, The Public Domain and Chris Meyer

The posting from two days ago on the Confederacy had an issue I wanted to save for this one, namely, the concept of the public domain arising out of war. In the Goetzel opinion discussed in that blog, a Confederate court in Mobile Alabama found that a book on military tactics created and published in the North and in the public domain before the Civil War was in the public domain in the Confederacy, despite the issuance of a Confederate copyright registration. The court wrote: "I do not think the formation of the Government of the Confederate States, diminished or affected the rights of the public or increased those of General Hardee in this respect," and that "The publication of the Philadelphia edition of 1855 was made when this country was part of the United States. It was then a publication in this country, and it was as much to the public in Virginia or Alabama as the public of Pennsylvania."

The status of Southern authors in the North during the War was unaffected at one level: because Southerners were regarded as "rebellious citizens" rather than as "enemy aliens," their works were still protected in the North if they complied with formalities applicable to all authors. That was, as a practical matter, impossible. Russell Sanjek wrote that after the War was over a number of Southern authors "re-copyrighted" their works with the Library of Congress, but I don't know exactly how that could be done.

During World War I, compliance with formalities by foreign authors was also very difficult. In 1919, President Wilson signed legislation granting retroactive protection, provided the foreign country did the same for U.S. authors, and provided that within 15 months of March 3, 1921, the foreign author complied with the requisite formalities, Act of Dec. 18, 1919, P.L. No. 66-102, 66th Cong., 2st Sess., 41 Stat. 368.

There was something else that occurred in World War I, and that was the establishment of an Office of the Alien Property Custodian, abolished in 1934, but resurrected for World War II. Legislation permitted this office to seize title to the intellectual property of enemy authors. The office was very active during WWII. By fiscal year 1944, 185, 102 titles had been indexed, with 146,690 titles waiting to be indexed. The records are in the Copyright Office. Among the works title to which was seized were Puccini operas, films like the Blue Angel, and Mein Kampf, along with over 700 scientific books and 3,200 periodicals.

At the end of WWII, the War Claims Act of 1948 was passed, providing, among other things, for the satisfaction of U.S. War Claims from the funds obtained from the sale or licensing of seized intellectual property. At the same time, in many cases title to copyright was returned to the rightful foreign author or his or her heirs. That leads to the late Chris Meyer and the 1994 GATT implementing legislation. When I met Chris, he was an attorney in the Copyright Office; he subsequently left and went to the PTO's Office of Legislation. Chris was one of a number of truly outstanding public servants and brilliant copyright scholars in a Copyright Office known for brilliance. Another was the late Lewis Flacks, long the Office's international specialist, an eccentric's eccentric and a national treasure.

When I was counsel to the House IP subcommittee, Chris was still at the PTO and in 1994, he lobbied us for this exception to restored copyrights, contained in 17 USC 104A(a)(2), precluding restored copyright in "Any work in which the copyright was ever owned or administered by the Alien Property Custodian and in which the restored copyright would be owned by a government or instrumentality thereof... ."

I italicized "and" because Chris's concern was not with works created by individuals, but with those that the governments of Germany and Japan might claim ownership in, and might want to use that ownership to suppress dissemination of the work. That same concern is what led to Section 201(e) of the 1976 Act with the Soviet Union's joining the Universal Copyright Convention. Many voiced concerns over the Soviet issue, but there were few who were aware of the Alien Custodian Office and Chris was one of those few: a rare, wonderful man, whom I miss.

Sunday, December 04, 2005

Copyright, the Confederacy and Bulwer-Lytton

Victorian novelist and politician Edward George Earl Bulwer-Lytton (1803-1873) has inspired, dubiously, an annual contest, found at this link. The goal of the contest is to recognize the worst opening sentences to imaginary novels. Although best known for "The Last Days of Pompeii" (1834), which has been made into a movie three times, originating the expression "the pen is mightier than the sword," and phrases like "the great unwashed" and "the almighty dollar," as well as writing the novel that served as the libretto for Wagner's opera "Rienzi," Bulwer-Lytton's reputation now rests on the opening of novel Paul Clifford (1830):

It was a dark and stormy night; the rain fell in torrents--except at occasional intervals, when it was checked by a violent gust of wind which swept up the streets (for it is in London that our scene lies), rattling along the housetops, and fiercely agitating the scanty flame of the lamps that struggled against the darkness."

Here is the winner of the 2005 contest:

As he stared at her ample bosom, he daydreamed of the dual Stromberg carburetors in his vintage Triumph Spitfire, highly functional yet pleasingly formed, perched prominently on top of the intake manifold, aching for experienced hands, the small knurled caps of the oil dampeners begging to be inspected and adjusted as described in chapter seven of the shop manual.
Dan McKayFargo, ND

The competition website notes that the entry "extol[s] a subject that has engaged poets for millennia, [and] may have been inspired by Roxie Hart of the musical "Chicago." Complaining of her husband's ineptitude in the boudoir, Roxie laments, "Amos was . . . zero. I mean, he made love to me like he was fixing a carburetor or something."

Bulwyer-Lytton also inspired some unusual copyright initiatives, as related in a book published at the end of November by Professor Melissa Homestead, American Women Authors and Literary Property, 1822-1869. Many of the details of copyright in the Confederacy have been known, but Professor Homestead adds some nice touches. Previously known, for example, is an infringement opinion published by the Copyright Office's reported series of cases, Goetzel v. Titcomb, 14 Copyright Office Decisions, 1789-1909 (C.S.D. Mobile, Alabama 1863). That case involved "Hardee's Rifle and Military Tactics," by General William J. Hardee. Hardee, a graduate of West Point, had created the work with funding from the U.S. Congress which did not assert a claim in the work, although it was published in Philadelphia by a private publisher, in 1855. With secession, Hardee, a Georgian, joined the Confederacy, and revised the manual at Jefferson Davis' request. When Southern publisher S.H. Goetzel, Hardee's assignee, sued a rival publisher who reprinted the Philadelphia edition, the court refused to enjoin it, on the ground that the work was in the public domain in the Confederacy.

Where does Bulwer-Lytton fit into this? On March 11, 1861 (following by four days adoption of the Confederacy's Constitution, which contained a direct copy of the Union's Article I, sec. 8, clause 8), the Confederate Congress passed a resolution urging its diplomats to encourage Britain, France, and the German states to enter into reciprocal copyright relations with the South. Britain was of particular interest, given the large market it represented for cotton, and the widespread dissatisfaction felt by English authors such as Dickens over the lack of copyright protection in the U.S. (Protection did not come until 1891). The South would show it was different and protect, on a reciprocal basis, foreign authors.

The first Confederate copyright act, passed on May 21, 1861, contained a reciprocal rights provision. (An April 1863 amendment and a private act took care of Goetzel's problem). But Goetzel announced prominently in newspaper advertisements that he would voluntarily pay Bulwer-Lytton royalties. Much to his surprise, Bulwer-Lytton, perhaps in recognition of the larger Yankee market, subsequently announced that he had not received royalties from Goetzel, but had received handsome royalties from his New York publisher, Harper & Co.

The South's effort's at copyright foreign diplomacy failed, but not for lack of trying, and 30 years before the U.S. Congress got around to it. Even then protection was based on a punitive domestic manufacturing requirement that lingered like an almost terminal illness until 1986.

Bulwer-Lytton had earlier been involved directly with copyright, lobbying for passage, in 1833, of the U.K. statute (3&4 Will. 4, ch. 15), granting for the first time dramatic rights. Professor Laurence Tribe and Michael Dorf have written that Bulwyer-Lytton convinced Dickens to change the ending of "Great Expectations." According to them, Dickens originally planned to have Pip's love for Estrella remain unrequited. On Bulwer-Lytton's advice, "Dickens changed the ending, uniting the hero and his love," Laurence Tribe and Michael Dorf, Levels of Generality in the Definition of Rights, 57 U. Chi. L. Rev. 1057, 1072 (1990). Bulwyer-Lytton's reputation remains, of course, as a parody, awash in ample bosoms and Stromberg carburetors.

Thursday, December 01, 2005

Bootlegs and New Pony Records

As we await the Second Circuit's decision in the Martignon case, I participated in a Fordham panel on bootlegs, along with Martignon's lawyer. A few days ago, I received the following link to a new site:

Here's a description of what the site is about:

New Pony Records is Fan-based
We’re tape, disc and file traders, authors, scholars, collectors, and even some lawyers, who have spent decades collecting and sharing the music we love. We’ve amassed literally thousands of recordings, indexing and preserving them for posterity. We’ve applauded each installment of Sony’s Bootleg Series as it brings a sampling of this huge catalog of unreleased Dylan recordings to a wider public. And we applaud each new unauthorized recording as it circulates within the trading community. We have no formal connections to Sony, Dylan, or the commercial bootleggers. We’re simply interested in seeing these recordings reach the broader audience we believe they richly deserve. To us, it’s all about the music and our right to listen to it.
New Pony Records is a Not-For-Profit Record Company
We see the mass market record industry and the commercial bootleggers as obstacles to broad public availability of these recordings. The record industry, through its trade associations, has sought to criminalize any access to recordings which do not maximize their bottom line. The commercial bootleggers, exploiting the lack of transparency among unreleased recordings, charge exorbitant prices for recordings of highly variable quality. We’re articulating an alternative to the major labels and commercial bootleggers; an alternative that sincerely strives to accommodate the competing interests of artist, distributor, and fans alike. We’re asking Dylan and Sony to grant us a license to distribute the best of Dylan’s unreleased live recordings. We’re offering to pay Dylan a royalty on every recording sold. We’re restricting distribution to web-based mail order so we don’t get in the way of Sony’s mass market official catalog. We’re creating a one-stop website which can unify and clarify the vast and jumbled market in these recordings, assuring fans they’ll know what they’re getting and can trust it reflects the best of what’s available. And we’re a non-profit corporation, required, by law, to retain earnings for the purposes of the corporation and not for the profits of any shareholders.
New Pony Records Challenges Copyright Laws Which No Longer Serve the Public Interest.
We’re talking about recordings of live paid public performances. Dylan and his band have been paid once through ticket sales for these performances and we’re offering to pay Dylan a second time to license the recordings. We’ve watched copyright restrictions expanded in recent years to criminalize the unauthorized recording and distribution of performances such as these. Strict compliance with the law means these live performances are lost to the ages, an ironic twist on the avowed purpose of copyright law: To promote broad availability of copyrighted works by granting the copyright holder a distribution monopoly for a limited period of time.
What meaningful basis can there be for restricting access to these performances once they have been paid for through concert ticket sales? Contrary to the insidious arguments of the industry, copyright is not a property right, but a limited-term exclusive right to distribute recordings in an effort to hasten broader availability. How ironic to see copyright extended just as the means of distribution have been liberated by the digital revolution. How absurd to find the “Information Age” marked by laws undermining, even rolling back, the public domain. When did the economic interests of record distributors become more important than our freedom to hear and listen to what we want? This is great music which speaks to — and ultimately belongs to — the ages. How can it reach those future generations if copyright law can be used to prevent it being recorded, punish distribution, threaten possession, and stifle discussion?
So here we are, offering an alternative which honors both the free market and the public interest copyright law was meant to protect. We’ve chosen Bob Dylan because his performances are worth the fight. His management team has shown a deep understanding of the struggle between art and commerce and chosen integrity throughout. His fans -— now and in future generations — deserve the opportunity to hear his music because, like all music, once it reaches our ears it’s no longer only his.

Any predictions on how long the site is available?

Monday, November 28, 2005

Copyright Deposits and Trade Secret Protection

Registration (or attempted registration) with the Copyright Office is mandatory in order for infringement actions to be brought over "United States works." (Section 411(a)). There are three elements to registration: a completed application, the registration fee, and a deposit copy of the work for which protection is claimed. The deposit requirements are set out in Section 408 and in Copyright Office regulations. According to Section 704(a), all deposit copies are the property of the government. Section 705(b) mandates that the Copyright Office make deposit copies available for inspection. Section 706(b) addresses a different question, the Copyright Office making copies of deposits for members of the public requesting them. The section states that such copies may be made only under the conditions specified by the Copyright Office. Circular No. 6 spells out those conditions. There are three: (1) written authorization is obtained by the copyright owner; (2) a Litigation Statement form is filled out; (3) there is a court order.

Sometimes copyrighted works contain trade secrets or confidential information. Out of concern with making such material available for public disclosure, particularly in software, the Copyright Office has issued regulations that permit the deposit of less than all of the work. (In the case of secure tests, there is no deposit left behind). What if the claimant doesn't take advantage of this redaction option? Is trade secret protection lost?

Trade secret protection is purely a matter of state law, and nothing in the Copyright Act deals with the question. There is not a lot of case law on point. In Computer Corp. v. Serena Software Int'l, Inc., 77 F. Supp.2d 816, 819-820 (E.D. Mich. 1999), the court, in denying defendant's motion for summary judgment, let the issue go to the jury, but seemed of the view protection was not lost. Other courts have come out the other way. See e.g. Tedder Boat Ramp Systems, Inc. v. Hillsborough County, Florida, 54 F. Supp.2d 1300 (M.D. Fla. 1999); Cinebase Software, Inc. v. Media Guaranty Trust, Inc., 1998 U.S. Dist. LEXIS 15007, at *29 (N.D. Cal. Sept. 24, 1998)(but preserving trade secrets for redacted material); Phillips v. Avis, Inc., 1996 U.S. Dist. LEXIS 7342, at *7 (N.D. Ill. May 29, 1996)(New York law).

Copyright Parochialism?

I just finished a very thorough, fascinating book by Catherine Seville on the effort by Thomas Noon Talfourd to extend the term of copyright in England, beginning in 1837. Talfourd actually had far more ambitious goals, namely, a consolidation and revision of the separate British copyright acts. In addition to term extension, among the proposed revisions were ones concerned with how substantial similarity is determined, a fair use defense, and evidentiary issues. If passed, Talfourd's bill would have revolutionized UK copyright law, which instead remained a common law field until the 1911 Act. Whether Talfourd's measure would have had an effect on U.S. copyright is of course counterfactual, but our 1831 law in some substantial measure looked to the 1814 British Act.

Talfourd's efforts were heartfelt and had the support of a number of authors, such as Woodsworth. He met with stiff opposition, however from many quarters, and the public had begun to view copyright with deep suspicion. Regrettably, Talfourd's take it or leave it approach turned many off, most importantly, Thomas Babbington Macaulay, whose eloquent opposition was largely responsible for killing the bill on February 5, 1841. As a widely published author himself, Macaulay was viewed as a traitor by other writers and as a hero by opponents of Talfourd's measure. Talfourd did not run in the 1841 general election, and his bill, stripped down to term extension, passed in his absence in 1842 with a compromise proposed by Macaulay.

When term extension was first proposed in 1995 in the U.S. Congress, I published a three volume book on copyright and put the Talfourd-Macaulay speeches in an Appendix, expressing the hope that they might be looked to by those seeking to review what had been said before. They weren't. Talfourd's views make many of the points content owners make, and with great eloquence and sincerity.

Here is a very useful version of Macaulay's famous February 5, 1841 speech, posted by, made useful by the links embedded to people or concepts that were well-known to his audiences, but less so to ours. The version begins with this preface by the webhost: "The easiest form of parochialism to fall into is to assume that we are smarter than past generations, that our thinking is necessarily more sophisticated. That may be true in science and technology, but no necessarily so in wisdom."

Some evidence of this may be seen in recent legislative initiatives. By 1995, the English Parliament had peetered out in its zest for vigorous debate of the issues. No longer the days long, gallery-filled historic debates on the nature of copyright witnessed in 1774, when the House of Lords was considering Donaldson v. Beckett. Here is the House of Commons "debate" on extending its term another 20 years to comply with the EU Directive. The October 1998 "debate" in the U.S. House of Representatives gives no cause for joy either, being mostly devoted to the Section 110(5) amendment.

Term extension, perhaps more than any other issue, touches a raw nerve in copyright, and I thought and still think reviewing what those who were closer to the birth had to say might be useful. The past may not be a prologue to anything, but it is instructional.

Tuesday, November 22, 2005

DaStar II: The Ninth Circuit Does it Again

Many will remember the Supreme Court's rebuke of the Ninth Circuit for creating what it termed a "mutant" form of copyright in the DaStar case, 539 U.S. 23 (2003). That case didn't reach the issue of copyright infringement, which depended upon a work for hire issue. The Ninth Circuit has now decided that issue (link here), and while I can't imagine the case being cert. worthy, it is worthy of criticism.

At issue was whether General Dwight D. Eisenhower’s wartime memoirs, Crusade in Europe, published in 1948 by Doubleday, was a work for hire. The majority held it was, largely through a selective emphasis of facts, use of a presumption to overcome contrary facts, by ignoring contractual langauge, as well as discounting General Eisenhower’s careful crafting of his tax status.

Upon the German surrender in 1945, numerous publishers approached Eisenhower about publishing his memoirs. He turned them down, although previously, in 1942, while stationed in Gibraltar, he had written the first 60,000 words of what became Crusade in Europe. He had written to publishers about a book deal before he was approached by Doubleday. Eventually, Doubleday was able to overcome Eisenhower’s reluctance. Keenly aware, however, of the possibility of making money, Eisenhower sought advice from his lawyers about how to structure the book deal to minimize his taxes. An opinion was obtained from the IRS that his proceeds could be taxed at the lower capital gains rate if he could be classified as a nonprofessional, first-time writer, and if he completed the manuscript six months before conveying any rights in it.

With this opinion in hand, Eisenhower entered into a handshake agreement with Doubleday and set to work, 16 hours a day. Doubleday provided extensive assistance to Eisenhower, in the form of round-the-clock secretarial help and researchers. Editors also periodically met with him and gave him comments. There is no evidence that anyone other than General Eisenhower had final say over the content. After completion of the book, Eisenhower waited the six months required by the IRS and then signed a contract with Doubleday, stating, "I do hereby sell, assign, transfer and set over unto Doubleday & Co., for its own use, absolutely and forever, the manuscript of my War Memoir entitled CRUSADE IN EUROPE, and all rights of every nature pertaining thereto." He received a lump sum payment rather than royalties, but only because he did not want to be bothered by further dealings with the publisher.

In a bench trial, the district court found there was a work-for-hire relationship, a determination the majority affirmed. The governing legal standard applied was "an independent contractor creates a work-for-hire when it was made at the instance and expense of the commissioning party." As the dissent pointed out, however, that standard was not announced until 1965, 17 years after the book was published: the governing standard in 1948 only extended to traditional employment relationships

Was Eisenhower’s book created at Doubleday’s instance and expense? Certainly at Doubleday’s expense, but not at its instance. The instance for any publication was not Doubleday. As the majority itself noted, the success of Doubleday’s pitch was based on convincing Eisenhower that failure to publish his memoirs would permit inaccurate versions to create the public record. Having convinced that Eisenhower that it was a good idea for him to publish his memoirs is a far cry, though, from being the motivating factor for Doubleday being the author of them: Eisenhower could just as easily have said to Doubleday: "You’re correct, I should write my memoirs; I will now put them up for bidding." The fact that he chose Doubleday is evidence only of their sales prowess.

On the legal side of the instance and expense test, as the majority conceded: "the ‘instance’ test is shaped in part by the degree to which the ‘hiring party had the right to control and supervise the artist’s work." There was no evidence of any control or supervision over Eisenhower’s work. In finding to the contrary, the majority recast assistance as supervision. It is preposterous to believe Doubleday could have supervised the just-retired Supreme Allied Commander of Allied Expeditionary Forces during World War II composing his own memoirs. Doubleday pulled out all the stops for the simple reason that it wanted Eisenhower to write his entire book in less than three months so they could rush it in to print and catch the wave of his popularity. To find that such assistance is the equivalent of control is to fabricate a legal relationship out of a commercial desire for speed.

Such weaknesses in facts, of course, can be cured by results-oriented courts by relying on presumptions, and the Ninth Circuit was quick to rely heavily on its own self-created presumption: where a work was created at another's instance and expense, it was presumptively a work for hire. But it is only a presumption, and would fall in the face of other evidence. Here is some of that other evidence: Eisenhower wrote the first 60,000 words five years before he talked to Doubleday, he had contacts with other publishers before his contact with Doubleday, the Eisenhower-Doubleday contract was expressly an assignment, and there is the all-important tax treatment of Eisenhower as a non-employee: after all, employees don’t pay capital gains taxes on their salaries. Under the majority’s approach, General Eisenhower was a tax cheat. Finally, there is the little problem of a different legal standard being extant at the relevant time, something the majority ignored.

Judge Nelson dissented on the above grounds, but alas it is a dissent. The majority’s approach opens a football field wide loophole for work for hire treatment under the 1909 Act. Like much from that circuit, it is best confined to it.

Friday, November 18, 2005

Documentary Film Makers and Fair Use

Documentary film makers rely heavily on the use of others' works, many of which may be under copyright. Other issues arise out of a possible need for right of publicity clearances. Depending on the relationship with the subject, this may be tricky. A group of documentary film associations, in conjunction with the Center for Social Media, has just released a Statement of Best Practices in Fair Use. The statement details four different types of sitautions and reviews the possible application of fair use to them. Interesting reading.

Thursday, November 17, 2005

Intelligent Design and Copyright Misuse

Jennifer Granick, Executive Director of the Stanford Center for Internet and Society, had a recent article in Wired entitled "Evolutionists Are Wrong!" The lead in the story is this:

"Where are the copyright liberals when right-wing conservatives need us?
Last week, the National Academy of Sciences, or NAS, joined with the National Science Teachers Association, or NSTA, to tell the Kansas State Board of Education that it would not grant the state copyright permission to incorporate its science education standards manuals into the state's public school science curriculum because Kansas plans to teach students that 'intelligent design' is a viable alternative theory to evolution. Kansas is scrambling to rewrite its proposal to win over the NAS and NSTA."

Ms. Granick is apparently no fan of intelligent design theory, but expresses concern that the NAS and NSTA "are using their copyrights to bring wayward Kansas educators into line." She lumps them in with Disney movie trailer licenses that are purported to prevent licensees from criticizing Disney or the entertainment industry; Diebold; Cisco Systems; Scientologists; and NBC as further examples of copyright misuse. She also refers to Judge Posner's suggestion that the doctrine of copyright misuse might be applied in some cases where copyright owners are trying to suppress criticism.

I was counsel for the successful appellant in the case where Judge Posner first raised that possibility, Ty, Inc. v. Publications International, Ltd., and obviously agree with the importance of such a defense. But under what conditions? In the Kansas case, in all of the cases mentioned by Ms. Granick? Should the Kansas case be, as she asserts, "an uncomfortable issue for copyright scholars, who, if they are anything like biologists, presumably disagree with intelligent design?" Should we "have to call the game fairly," as she further suggests? Or, even more boldly, is it "hypocritical to stand by and watch as others use [copyright] to bring the Kansas Board of Education into the scientific fold?" as she asserts?

I certainly agree we should call the game as we see it and try to religiously, but I don't see how that leads to what Ms. Granick apparently wishes, a kind of copyright version of ACLU support for Nazis marching through Jewish neighborhoods. First off, Ms. Granick doesn't spend any time addressing the contours of a misuse defense. Judge Posner and I have jointly written about that issue, and without speaking for him, I don't believe it bears any resemblance to the First Amendment or to what Ms. Granick has in mind in the Kansas case. (Some of the other examples she gives are, however, excellent targets for the defense).

The misuse defense spoken of in the Ty case is intended to prevent copyright owners from using copyright litigation as a way to suppress criticism. In Ty, the allegation was that Ty insisted on a license to make photographs of its three-dimensional dolls. If you wanted to publish a guidebook to Beanie Babies you need to use photos, hence you allegedly needed a license from Ty. The allegation was that the license was a stalking horse for a license provision that gave Ty control over the written content in the guide.

But the Kansas example is very different. The NAS and NSTA are not trying to suppress criticism about themselves or even trying to suppress criticism about their materials. Instead, as I understand it, they are effectively saying, "what you are doing is not science, it is religion. You can't put our material in a book on religion and pretend that the book is about science; its not." I have no problem with that from a copyright standpoint or any other standpoint for that matter. There is nothing stopping Kansas, as I understand it, from publishing two manuals, their own which they can call whatever they want, and a second manual with the NSTA and NAS material used in a real science class. That at least, is what I derive from Ms. Garnick's use of the word "incorporate," meaning the copyright owners' complaint was over their material being bound in a single manual with Kansas' intelligent design material.

If this is right, I would have thought real First Amendment folks would defend NSTA and NAS from being forced to speak in a way they find offensive; there is, after all, a First Amendment right to remain silent. But that aside, I fail to see there is any copyright issue at all, much less one involving fair use. Let Kansas be Kansas if it wants, but it has no right to force NSTA and NAS to share its view by association; that too is a First Amendment right.

You check out Ms. Granick's own blog with comments on the issue here.

Wednesday, November 16, 2005

Those Hand Boys

An old saying among Second Circuit judges was "Cite Learned, but follow Augustus." Learned, was of course, Learned Hand, one of our greatest judges. Augustus was his first cousin, less known to the public, but also both a district and circuit judge. The point of the saying was that while Learned was a consummate stylist, Augustus was the more solid thinker. Mind you we are only talking about differences between the cream-of-the crop, but it was an era (the 1950s) where there was a lot of cream in that court. In addition to the Hands, there was John (later Justice) Harlan, Jerome Frank, Charles Clark, and Thomas Swann. (The clashes between Frank and Clark were legendary and presage much of the current debate about statutory interpretation: Clark once accused Frank, in the famous Arnstein v. Porter case, of having a "book burning mentality").

Learned Hand is the author of many famous copyright opinions, but one as a district judge stands out as a dud, and it is instructive that even the great can occasionally falter, at least to those like me who are virtually paralyzed by feelings of inadequacy. The case is found only in a compilation of decisions published by the Copyright Office. It is called Myers v. Mail & Express Co.36 Copyright Office Bulletin 478 (S.D.N.Y. 1919):

“[N]ot only are all the facts recorded in a history in the public domain, since the narration of history must proceed chronologically,—or at least, such is the convention,—the order in which the facts are reported must be the same in the case of a second supposed author. There cannot be any such thing as copyright in the order or presentation of the facts, nor, indeed, in their selection, although that selection may go the highest genius of authorship, for indeed history depends wholly upon a selection from the undifferentiated mass of recorded facts. “

Judge Hand’s comments reflect a naïve and blinkered understanding of how history is written: full of categorical statements (the narration of history must proceed known chronologically, “the “order in which the facts are separated must be the same in the case of a second author,” “there cannot be any such thing as copyright in the order of presentation of facts” history depends wholly upon a selection from the undifferentiated mass of recorded facts”). Historian M.C. Lemmon has explained the limited role of chronology in history:

[A] chronicle is a kind of calendar. It lists events (or other data) in the order of their dates. For example, one could produce a list of every Act of Parliament ordered (sequentially) according to their dates, or one could chronicle the offspring of a family over the generations. Insofar as their succession of time is the sole principle underlying their manner of presentation, it would appear continuity is the essence of the matter in the construction of a chronicle — and if so, then the chronicle is the narrative in its starkest, hence purest, form. But of course this is not the case. A chronicle’s “continuity” is merely abstract, superimposed by the purely formal rationale of the numerical ordering of dates; it is a meaningless continuity. Put formally, the chronicle is structured in terms of ‘this (then) that,’ whereas the narrative is structured in terms of “this then that.” In the narrative form, the “then” has a peculiar, distinctive significance which transforms a successor of events into a meaningful sequence.”

The “this’ and “then” refer to causality, the assertion by the selection and ordering of events that if y occurred after x, that is because x is the cause of y. But history has no beginning and no end: events which historians select are always culled for a purpose, principal of which is an attempt to create a retrospect intelligibility about something the historian almost always did not directly experience (except in the case of an autobiography): Historian Francois Furet has observed, “narrative history reconstructs an experience along a temporal axis. This reconstruction requires some conceptualization, but the latter is never made explicit. It is concealed within the temporal finality that structures and gives meaning to all narrative.” But even this assumes that there is one or more casual connections between events, assumes that historians can discover their existence, understand their importance, and accurately present them to a reader so that the reader may also comprehend them.

Historians are deeply skeptical such a task is possible. One thing historians do agree on is the falsity of Hand’s claim that the ordering of events must be the same in all accounts of the same period. As an initial matter chronologies do not exist in nature; Philosopher Hayden White has written, there is no preexisting, grouped series of facts arranged in a coherent order, much less a chronological one: order is created solely by the historian. For example, where would we find, prepackaged, the chronological order of all of the facts and events that led to the indictment of Lewis Libby in October 2005? Hand’s supposition that such an order exists, must be based on a Platonic view that these exists on objective logic inhering in the events themselves. This is clearly wrong. As M.C. Lemon put it,

“historical structuring is done intentionally by us, for our purposes, rather than being formally imposed by the anonymous requirements of dates succeeding each other. Our structuring is meaningful; it manifests the reasons we have in doing it: it constitutes a rationale. A computer can produce a chronicle, and do so more quickly, accurately, and hence efficiently, than a human being. But only human beings can create stories, because only they have reasons for doing something, whereby they endow what they do with meaning . . . . . . The chronicle is a “sequence” but it is not intelligible. It might even imply a story; one might infer an intelligibility from it; but its form is not in itself meaningful.

History — in the sense of giving meaning to events — is not found or discovered but rather invented. Or, as F.A. Olafson wrote: “we go to past not to discover facts but significances.” The historian alone provides that meaning, which is, under the Copyright Act, protectible.

Tuesday, November 15, 2005

Copyright Historiography and Futurists

Historiography involves writing about the writing of history. The field was populated early on by philosophers and literary critics, since historians seemed not too interested in theories about what they did; they just did it. After historiographers began to challenge a number of fundamental assumptions about the writing of history, such as that historians, in the Rankean sense, just "told it like it was," historians joined the battle, and the field has been quite active, although perhaps less so recently.

Copyright histories continue to be written, especially microhistories that is, histories about particular, narrow areas, like Renaissance Venetian printing privileges, or 16th century French printing privileges, or the efforts in the first third of the 1800s in England to extend the term of protection. Another fruitful area is the period leading up to the Statute of Anne, and then Millar v. Taylor, and Donaldson v. Becket[t]. Ronan Deazley and Oren Bracha have written magisterial works about this period.

But none of these are works of copyright historiography (although Professors Deazley and Bracha do a great job of positioning their studies in the larger context of the debates about the nature of copyright). Australian law Professor Kathy Bowrey has developed an important niche beginning with a 1994 SJD dissertation and continuing with a series of articles on the writing of copyright history, what I call copyright historiography. Her work meshes quite well with those of Ronan Deazley and Oren Bracha in establishing the positivist basis of copyright, and in debunking the Romantic/determinist view of copyright, but her work also helps us think about how we think about copyright.

I am particularly taken with her level headed analysis of some futurist writing on copyright. All history is about the present and perhaps the future, and so too historiography. Some futurists, however, appear to be only about themselves. Such futurists, invoking the painfully banal Alvin Toffler have wrought their own version of hell on us, much like Peruvian Incan musicians who play Simon and Garfinkel's Scarborough Fair in the 42d Street subway in Manhattan. One example in copyright is a piece written by a non-lawyer declaring that "Everything you know about intellectual property is wrong," filled with bloviated declarations that copyright is dead. If this is the Third Wave, dude, drown me please. I would venture to say that most people upset about the state of copyright today are upset at its overly vigorous life, not at a perception that it is going the way of the dodo. Generous sorts, like Professor Bowrey, may describe such futurist views as refreshing or even utopian, but my view is that they represent grandstanding whose only value is celebrity status, and of the Paris Hilton kind: one is famous for being famous (if not infamous).

There are other kinds of futurists too, like the one who declared that the "VCR is to the motion picture industry what the Boston strangler is to the woman alone," one of a long line of similar predictions of a catastrophic effect on copyright owners from new technologies.

An excellent dose of copyright historiography is just the antidote to both of these kinds of futurists: not so that we may plod along like the old Rankean historians, but rather so that we may think better about the future.

Monday, November 14, 2005

There is Collective Bargaining in Kansas, Dorothy

Last week I had a posting on academic ownership of copyrighted works. Right afterwards, on November 10th, the Kansas Supreme Court issued an interesting opinion on the intersection of state public employee collective bargaining obligations and ownership of faculty created copyrighted works, Pittsburgh State University/Kansas National Educational Association v. Kansas Board of Regents.

Ownership of copyright in faculty-produced works is fast becoming a hot topic, and has moved into the collective bargaining arena, at least in the public sector. Public sector collective bargaining can be a rather pale imitation of its private sector counterpart, especially without the right to strike, and sometimes even concepts like mandatory subjects of bargaining can be toothless. One side may have to talk about something, but then what? (In the private sector failure to bargain over such a subject can authorize a strike).

In the case at issue, the dispute involved the question of whether ownership of intellectual property was a mandatory subject of bargaining. The state said no, but for an odd reason: ownership of copyright was supposedly governed by federal law, and therefore, state law (including labor law) had no say in the matter, and would in fact be preempted. The intermediate appellate court agreed, but the Supreme Court reversed, finding no preemption.

This decision seems quite correct and indeed the application of preemption when it comes to ownership of state copyrights is uncertain at best: states don't have to provide any copyright protection at all, and if they do decide to permit it, it is up to the state to determine whether works created within the scope of employment are owned by the state, owned by the faculty member, or are in the public domain. In this respect, and this applies to works by private parties too, when operating under the first, employment prong of work for hire, parties cannot contractually agree that something that isn't a work for hire is, or vice versa: ownership can be transferred, but authorship can't (and that part of it decidedly is federal). In short, while federal law governs the abstract principles of ownership of state law, states have very broad discretion in applying those principles.

Postscript: On October 20, 2005, the Appellate Division of the New Jersey Superior Court affirmed a decision by the Public Employment Relations Commission that aspects of Rutgers' University patent policy and faculty ownership are mandatory subjects of bargaining, Rutgers Council of AAUP Chapters v. Rutgers, The State University, 2005 N.J. Super. LEXIS 306 (N.J. Superior Court, App. Div.).

Friday, November 11, 2005

What's in a Name? Database or Computer Program?

In the classic popular song, "Let's Call the Whole Thing Off," the singer laments:

"You say either and I say eyether,You say neither and I say nyther; Either, eyether, neether, nyther,Let's call the whole thing off! You like potato and I like potaeto, You like tomato and I like tomaeto;Potato, potaeto, tomato, tomaeto!Let's call the whole thing off!But oh! If we call the whole thing off,Then we must part. And oh! If we ever part,Then that might break my heart!"

How one calls a particular work may matter greatly, and the lack of protection might well break the proprietor's heart. This point is illustrated in a very thorough opinion handed down by Judge Robinson of the SDNY on November 3, 2005, eScholar, LLC v. Otis Educational Systems. Was the work a database or a computer program? The name matters for a few reasons: first, for deposit purposes, and second, in determining originality and infringement. A computer program is not a compilation: it is a set of statements or instructions used in a computer program to bring about a particular result; protection lies in the originality of the instructions or in their interrelationship. A database is a compilation, and protection lies in the selection, coordination or arrangement of the data. The deposit for a computer program is portions of the source or object code. (See Circular 61). The deposit copy for a database is the obviously the data as arranged (See Circular 65).

The relevant part of Plaintiff's work in eScholar is a "data model" used to facilitate the reporting of information about student performance for purposes such as the Orwellian-named "No Child Left Behind" act and similar state laws. The opinion goes into great detail about how the model works, but in the Rule 56.1 Statement, it is described as a "pictorial representation of the data structure in a given environment." In the copyright application, the nature of authorship was described ambiguously as a "computer program data model." At the Copyright Office's suggestion, apparently, this was changed to "computer program," but the deposit was a photocopy of the models, presumably the pictorial representations. Whatever it was, it appears not to have been source code or object code, an indication that in fact the claim was a compilation claim.

This point is reinforced when the court described plaintiff's claim as for what it nonsensically described as the "non-literal" elements of its work: "the overall selection, coordination, and arrangments of the fields and entities for its data model." Plaintiff claimed rights in the following "literal" components of its "program":

"(1) the invention of a multipart or composite key in each table, labeled a "district key" ... that permits the storage of multiple districts' information on one database; (2) a method of recording "slowly changing dimensions" by including "school year" in a table called "student," which provides a structure of organizing student data when it is combined with other fields; (3) the aggregation of assessment data into a single data structure that contains four levels of classifications for student assessments."

That sounds mostly like a database, not a computer program, a possibility that is heightened by Plaintiff's heavy reliance on authoring tools and DDL (Data Definition Language) for defining the database structures, creating and modifying the data models, and providing graphical interfaces. The name of Plaintiff's work (hence the lyrics at the beginning) is "eScholar Complete Data Warehouse."

I have no view on the merits of the case (other than to object to the description of the "non-literal" elements), and in any event, Judge Robinson denied summary judgment, but the case illustrates some of the problems of categorization and possible false dichotomies (computer program or database, as compared to just "original work of authorship").

Wednesday, November 09, 2005

Academics and Ownership of Copyright

What is the status of copyright ownership in works created by academics? Are they works for hire of the academic institution that employs them, or, are they owned by the academic who wrote them? At one level the answer is quite straightforward: the statutory rules on work for hire apply to academics as to all others. There is no special provision for academic works, notwithstanding Nimmer's view (at least at one time) that there is a "teacher exception." On November 3, 2005 SDNY Judge Denny Chin issued a opinion in Pavlica v. Behr that illustrates this.

In Pavlica, a high school science teacher created after hours, on his own initiative, a program on how to teach science students nationwide. His high school agreed he, not the school, owned the copyright. In attempting to disseminate the work, Pavlica got together with two other teachers to receive National Science Foundation grants. After the inevitable breaking up of that relationship and the other teachers' unauthorized continued use of Pavlica's material, suit was filed and a work for hire defense was asserted. Judge Chin denied defendants' motion for summary judgment and let the case go to a jury; from his opinion, it seems he was of the opinion there was no work for hire relationship, bolstered of course by the erstwhile employer's own denial of that relationship.

Other cases have gone the other way: in Vanderhurst v. Colorado Mountain College District, 16 F. Supp.2d 197, 1307 (D. Col. 1998), aff'd 208 F.3d 908 (10th Cir. 2000), amended 2000 U.S. App. LEXIS 6637 (10th Cir. April 11, 2000), a teacher's class outline was found to be within the scope of employment. Two 7th circuit opinions are also noteworthy, Hays v. Sony Corp., 847 F.2d 412 (1988) and Weinstein v. University of Illinois, 811 F.2d 1091 (1987), and more recently, the Second Circuit examined the issue in Shaul v. Cherry-Valley-Springfield Central School District, 363 F.3d 177 (2d Cir. 2004).

Collective bargaining agreements and unversity policies are also important sources of information. An excellent review of those policies along with cites to online versions at major universities may be found in Elizabeth Townsend, "Legal and Policy Responses to the Disappearing 'Teacher Exception,' or Copyright Ownership in the 21st Century," 4 Minn. Intell. Prop. Rev. 209 (2003).

Tuesday, November 08, 2005

Nigerians,, and Copyright

Here's the full-text of a November 3, 2005 per curiam opinion by the Third Circuit (Judge Alito was not on the panel):

Basil E. OKOCHA; Basil Publishing Company
AMAZON.COM Basil E. Okocha, Appellant.
No. 04-4125.

OPINION PER CURIAM [fn 1]Appellant Basil E. Okocha appeals from an order of the United States District Court for the District of New Jersey granting summary judgment in favor of We will affirm.The procedural history of this case need not be discussed at length as it is well-known to the parties and set forth in the District Court's opinion. In 1993 Okocha wrote and published a book in Nigeria entitled The Old Man Who Refused to Die. In 2001 Okocha moved to the United States. In 2002 Okocha decided to self-publish his book in the United States through his publishing business, Basil Publishing Company. Okocha planned to publish the book in 2006. In conjunction with his publishing company, Okocha created two websites using his name as a key word for internet search engines. Okocha subsequently visited a search engine and submitted his name as a search term. The search returned a link to the title of his book on By clicking on the link, Okocha discovered that copies of his book were listed for sale by several third-party sellers on the website. However, there were no listings for the sale of Okocha's book by itself.In May 2003, Okocha filed a complaint against in the United States District Court for the District of New Jersey alleging, inter alia, copyright infringement, conspiracy, fraud, negligent/intentional infliction of emotional harm, and loss of future wages. filed a motion to dismiss for failure to state a claim, which the District Court converted into a motion for summary judgment. Okocha then filed a motion for summary judgment. By order entered October 13, 2004, the District Court granted summary judgment in favor of Okocha appeals.After careful review of the record and consideration of the arguments on appeal, we agree with the District Court that was entitled to judgment as a matter of law. With regard to the copyright claim, Okocha failed to show that he owned a valid United States or foreign copyright for The Old Man Who Refused to Die, or that copied the material. See Masquerade Novelty, Inc., v. Unique Indus., Inc., 912 F.2d 663, 667 (3d Cir.1990) (setting forth the elements of a copyright infringement claim). Even assuming that Okocha owned a valid copyright, [FN1] did not interfere with Okocha's exclusive right to distribute his book because reselling a copy of a previously purchased book does not infringe upon the right of distribution. See 17 U.S.C. § 109.

FN1. On appeal, Okocha submitted documents purporting to prove that he owned a valid foreign copyright for The Old Man Who Refused to Die. We will not review the documents because they were submitted for the first time on appeal.

The internet printouts submitted by Okocha to prove that listed several copies of his book for sale also clearly indicate that the books listed for sale were published in 1993, the year the book was originally published in Nigeria. The fact that the books listed for sale were published in 1993 indicates that they were not published at a later date and redistributed internationally by as Okocha asserts. The evidence instead established that the independent third-party sellers were selling used copies of Okocha's 1993 book. Summary judgment thus was properly granted in favor of with respect to the copyright claim.*2 was likewise entitled to judgment as a matter of law with respect to Okocha's conspiracy claim. A conspiracy involves an intent to achieve a common improper goal and an agreement to work together toward that improper goal. See, e.g., United States v. Pressler, 256 F.3d 144, 149 (3d Cir.2001). Okocha failed to provide admissible evidence to show that and the third-party sellers conspired to violate his copyrights. As for Okocha's remaining claims alleging, inter alia, fraud, negligent/intentional infliction of emotional harm, and loss of future wages, we have thoroughly reviewed the record and conclude that was entitled to judgment as a matter of law. Accordingly, we will affirm the order of the District Court. Okocha's motion to expedite is denied. His motion to file supplementary proof and a supplemental appendix is granted.



There are quite a few points of interest on the copyright claim one might be inclined to gloss over. First, the court's statement that plaintiff had failed to show he had a "valid United States or foreign copyright" is unexplained and seemingly incorrect. It doesn't appear there is any question plaintiff authored the book or that it was original.

Nigeria is a member of the Universal Copyright Convention, Berne, and the WTO Copyright Treaty. (See Copyright Office Circular 38a). Nor, as a work of foreign origin (it was first published in Nigeria before plaintiff moved here) did plaintiff have to register his claim with the Copyright Office pursuant to Section 411. Moreover, phrasing the issue in the alternative as whether plaintiff had a U.S. or Nigerian copyright passes by way too quickly a wonderful theoretical question: is there only one copyright (Nigerian) enforced in the U.S. under treaty obligations and the terms of 17 U.S.C. 104, or, are there multiple copyrights throughout the world, each created under the terms of domestic law? The court's discussion is quite unclear about whether its concern was one of national eligibilty or subject matter jursidiction, but both grounds appear incorrect: plaintiff would have protection in both countries.

On the merits of the claim, was not selling the work directly. Here too is an important question: can be held liable for the eventual sale by a third party? The sale is hosted and made possible by as the middleman. also has a financial interest in the sale. Since the sales take place book-by-book through, the ability to control the sale is in play.

In the court's scant opinion, there is no evidence plaintiff had ever granted permission to sell the work in the United States; indeed, it seems he planned to do so himself in 2006. Section 109 does not apply then (as the court mistakenly thought) because that section only applies to works lawfully made in the United States and these copies apparently weren't. Unless there are facts I am not aware of (and that is certainly possible), the opinion seems incorrectly decided on the merits too, at least with respect to the actual sellers of the copies.

The opinion bears all the hallmarks of a circuit staff work, pouring out a pro se plaintiff, and with little understanding of how the Copyright Act truly works. One would have hoped for more and plaintiff certainly deserved more.