Wednesday, August 31, 2005

Should Obscene Works Be Protected?

Whether works deemed obscene should receive copyright protection periodically receives attention. In the SDNY, then Judge Martin refused to grant a preliminary injunction and a pretrial impoundment and seizure order for movies he believed to be obscene writing, "Given the clearly criminal nature of plaintiff's operations, it is self-evident that the Court should not use its equitable powers to come to the aid of plaintiffs and should invoke the doctrine of clean hands and leave the parties where it finds them," Devils Films, Inc. v. Nectar Video Corp., 29 F. Supp.2d 174, 175 (S.D.N.Y. 1998). More recently, Judge Baer of the same court took a different view in Nova Products, Inc. v. Kisma Video, Inc., 2004 U.S. Dist. LEXIS 2471 (S.D.N.Y. Dec. 1, 2004), noting that in Manhattan at least hard-core pornography is not patently offensive under "contemporary community standards."

Given the community standards approach to obscenity, an obscenity defense to infringement (the issue in Nova) or as a bar to equitable relief (the issue in Devils Films) is problematic as a practical matter. But what about as a legal matter? When Judge Martin said the matter was "self-evident," that was a good tip off it was anything but that. All copyright mavens know the Supreme Court's Bleistein opinion, but may not know that the lower courts had barred protection on grounds of immorality, the posters depicting women in tights with bare arms, designed to lure men to the circus. Other courts denied protection to song lyrics. Dramatic compositions, especially those including dance, were a favorite target of disapproval; as late as a 1963 New York state court decision denied common law protection to choreography that had too suggestive moves.

The Copyright Office has had a varied history in the matter, rejecting some claims in the 1930s. In 1941 Register Bouve stated this policy explicitly in his 1941 Annual Report. This may have been in reaction to a registration made in 1940 by Assistant Register Howell who noted that "to the pure of heart all things are pure." Beginning in 1954 (Ruling No. 32), the Office stated that while the Office does not ordinarily examine for content, if a work was deemed obscene the matter would be referred to the Justice Department for possible prosecution with the registration placed on hold. Register Kaminstein was, however, particularly concerned about avoiding the Office in such matters and despite pressure from the Attorney General and the Post Office (you had to mail in deposits, after all), and perhaps bolstered by the Supreme Court's 1957 opinion in Roth v. United States, 354 U.S. 476, he registered Lady Chatterly's Lover in 1959. An Attorney General opinion in 1959 noted the "substantial problems" the Office would face in making ad hoc decisions. In 1967, a Supplementary Practice was inserted into Compendium I along the lines of the 1954 ruling. Compendium II (Sec. 108.09), states that
the Office doesn't examine for content, but doesn't contain any provision for referral to the Justice Department.

There is one exception, apparently. While I was a Policy Planning Advisor the issue of registration of child pornography came up. Under pressure form then Senator Dan Qualye (I recall), the Register announced he had a policy (that people could view in the Public Office I never managed to be able to get a copy of the policy) and the policy was apparently the same as the 1954 ruling, referral for possible prosecution. But legality aside, does pornography promote the progress of science? Do we make such determinations on an individual basis, a class basis, or a systemic basis (the Copyright Act as a whole). The last possibility has been the more recent approach, but child pornography perhaps pushes the question in other directions.

Copyright Office Appeals Process

Register of Copyright Mary Beth Peters, with whom I worked as a fellow Policy Planning Advisor from 1988 to 1992, has made a number of very important improvements in the operation of the Copyright Office. For example, she abandoned the Office's former refusal to accept for registration a work that would be registrable but for the fact that a prior design patent had been obtained. And she instituted short form registration to simplify matters. Another improvement is the institution of a formal internal appellate procedure for refusals to register claims, explained most recently in a December 28, 2004 Final Rule in the Federal Register and placed (although not yet, apparently from the Office's website) in 37 C.F.R. Section 202.5. The Office doesn't call these appeals, but rather "requests for reconsideration," but because it is shorter I will call them "appeals." The history of such appeals is spotty.

In the days before there was a Copyright Office, occasional appeals from a refusal to register by the Librarian of Congress were taken to Congress's Joint Committee on the Library, which held oral argument. In the mid 1930s, within the Copyright Office, there was a "Revisory Board" consisting of three members who issued written opinions on a wide variety of topics. My favorite is one where two members of the panel thought the work of graphic art depicted a typical Pennsylvania Dutch holiday scene but the third deemed it obscene. Double entendres were also an issue of deep concern to the Revisory Board, including one involving a song entitled "Santa has Cotton Balls and a Candy Cane."

But when the Revisory Board disbanded so too was a formal procedure. Informally, Compendium II of Copyright Office Practices spelled out a reconsideration proceeding, but it stopped at the Chief of the Examining Division. In the Copyright Reform Act of 1993, which did not pass, an appellate procedure would have been established. Even though the Act didn't pass, Ms. Peters instituted an interim one on May 4, 1995. The Franklin Pierce Law School has a very helpful database of Appeals Board decisions from October 30, 1995 to March 14, 2004, at this link. The decisions are worth reading.

One thing to bear in mind is the Office's interpretation of what a "final decision" is. For purposes of an APA review, one has to follow the appeals process. But for purposes of filing an infringement suit, the rejection from the line examiner suffices.

Monday, August 29, 2005

Bikram and Supplementary Registration

Supplementary registration is provided for in Section 408(d) of the Copyright Act. The Copyright Office has regulations in 37 CFR 201.5 and a Circular, No. 8 The purpose of a supplementary registration is to "correct" or "amplify" information on an original registration, hence the name of the form for it, CA (correct/amplify). It also follows from this purpose that there must be an original registration on file to correct or amplify. A few things must be borne in mind: a supplementary registration is issued a new registration number in the same class as the original registration, and doesn't expunge or modify the original: the supplementary registration merely"augments" the basic registration by placing new information on the public record (and it is therefore usually cross-referenced to the original record).

There isn't a new deposit requirement because the CA does not expand the existing registration but merely corrects or amplifies it . (The deposit requirement does come into play in one respect: because the deposit requirements are different for unpublished than for published works, a CA may be used where the original claim was for a published work but it is now considered unpublished, but not vice versa).

A CA may be used to correct errors in the basic registration made at the time of the original registration, like an authorship listing. Authorship issues may also be addressed in the amplification part of a CA to add a co-author who was left off, but not to reflect changes in ownership since the basic registration was made. For purposes of statutory damages and attorneys fees, the date of the original registration governs, a very important point for those who might be tempted to seek a new registration.

On Monday, August 22d I did a posting about a claim of copyright in a series of 26 yoga exercises by Bikram Choudhury. I noted there was a CA registration, that it stated "compilation of exercises," and that it was made to a 1979 basic registration for a book. The CA was submitted on December 3, 2002. The CA was preceeded by this: On October 23, 2002, registration on form PA was sought for "Bikram's Asana Sequence," with the nature of authorship described as "selection and arrangement." The cover letter asserted that the work was a "copyrightable performing arts work," and that special handling was sought in connection with a suit already brought in the Central District of California against the Morrisons. In a letter dated October 28, 2002, the Office questioned the application on various grounds, including the large gap in the alleged creation date of 1965 and the date of first publication of 1994.

There were apparently a number of telephone calls between Bikram's attorney and the Examining Division following the letter. In a letter dated dated November 27, 2002 from the Examining Division, Performing Arts section, to Bikram's attorney, the Office suggested filing a CA to the 1979 TX registration for the book to claim either "compilation of exercises" or "selection and arrangement of exercises." The Office noted that the CA would "augment but not supersede the previous registration." A fax dated the same day has what is to me an important clarification about the registration. A handwritten annotation from a Senior Examiner states: "I received your message about the gymnastic floor exercise. I believe I mis-spoke in our earlier conversation. We do not register such claims as choreography, but rather as a compilation of floor exercises." On December 5, 2002, the PA application was abandoned in favor of a CA along the lines suggested by the Office.

The effect of the CA was essentially nil: the claim in the book, which was for entire text, the broadest description, could hardly have been made broader. The only thing that the CA registration did was to note for the public record that entire text included a compilation of exercises. Among the things the registration did not do are the following, contained in a February 5, 2003 press release from Bikram's attorney: "the United States Copyright Office acknowledges Bikram's exclusive right to the distinct series of postures and breathing exercises comprising the sequence and Bikram's Beginning Yoga Class." The Copyright Office never "acknowledges" anyone's exclusive right to anything by registering it: the Office is one of record, and registers claims; it doesn't have the staff to determine whether the claim is true, a fraud, or based on an error. In this case, the Office merely said: "Hey, you registered a claim in 1979 for an entire book; you now want to state that some material already in the book is protected ." In fact, the handwritten notation from the Examiner emphatically stated no choreography claim could be made. As a result, Bikram has, in my opinion, no registered claim in the choreography of the asanas.

As importantly, the press release states that "Due to the originality of the sequence and the strength of the copyright registration, infringement of the sequence can occur in a number of ways." Those ways including "the unauthorized use of even a small number of consecutive postures" and the teaching of the sequence. The registration says nothing about infringement; no registration ever does; nor for the reasons given in the last blog would performance of the exact sequence of 26 asanas every constitute infringement. And we know from Feist that the scope of protection in compilations is thin, not as the press release suggests, obese.

In my opinion, the press release seriously misrepresents the registration and the law. To leave this posting with an amusing precedent, though, in Seltzer v. Sunbrock, 22 F. 621 (S.D. Cal. 1938), a chap registered a claim in a book about roll-skate racing. He then put on, implausibly, a month-long roll-skating event at which skaters traversed the equivalent of coast-to-coast. So many people bought tickets that a competing game was mounted. The owner of the book sued; the competitor didn't have access to the book and couldn't have copied it, and didn't in any event. Improvidently a TRO was earlier issued and then dissolved in this opinion once the judge woke up and smelled the coffee beans. Let's hope that happens in the yoga community.

Wednesday, August 24, 2005

Football and the Idea-Expression Dichotomy

Continuing the thread if not the theme of the last three blogs, today's is on the idea-expression dichotomy, prompted by a June 27, 2005 opinion in Reed v. Peterson, by Judge William Schwarzer of the ND California. The case was brought to my attention by Cathy Kirkman of Wilson Sonsini, who runs the fantastic SVmedialaw blog, which I highly recommend.

Reed wrote a book called "Football Clock Management." The book advocated that coaches and players use prescribed offensive and defense strategies for managing time during a football game. Defendant wrote a competing book called "The Football Coaches' Guide to Clock Management." As if Baker v. Selden never existed, plaintiff in Reed apparently claimed a copyright "in the use of principles and rules as a method of instruction of clock management." Judge Schwarzer quickly dispatched the claim (but without citing Baker), noting the bad things that would happen if plaintiff prevailed as well the thin nature of copyright in factual works. His opinion is a solid discussion of frequently-recurring issues.

Baker v. Selden is often referred to as "about" the idea-expression dichotomy, even though it never used the word idea or really discussed the concept. I think of Baker as a "blank form" case, derived from the very end of the opinion which expresses the Court's actual holding. But if Baker is an "idea-expression dichotomy case" what does that mean? Indeed, what does it mean to say that Section 102(b) "codifies" the dichotomy? We would have to know what the dichotomy is at the least, why it is a "dichotomy," and how we can use it.

In a recent case in the SDNY, discussed in a prior blog involving photographs, Judge Kaplan doubted that the idea-expression has any application beyond literary works, and certainly none to visual works. Reed involved a literary work so it could have application even for Judge Kaplan. In the end, though, I think we are better off if we appreciate that the idea-expression dichotomy is not an analytical tool; it is not a test; "idea" and "expression" are simply labels that reflect that some material is protected and some isn't, and that determination is always after-the-fact. See Veeck v. SBCCII, 293 F.3d 791, 816 (5th Cir. 2002)(en banc)(Judge Weiner, dissenting); Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971).

"Idea" and "expression" are not categories that have content; they do not express set characteristics; they are just metaphors by which we pretend we are reasoning a priori, when in truth we are engaged in fact-finding.

Tuesday, August 23, 2005

Copyright and Athletics

This is the last of three postings dealing with copyright in movement. The first was on choreography, the second was on Yoga, and this one is on athletics. But just like the choreography posting was also about the utility of the copyright system, this one touches on the utility of labels or categorization as a way to decide whether protection should be granted.

There have been a number of interesting looks at the topic from the standpoint of cognitive science, including collections of essays in Similarity and Categorization , edited by Ulrike Hahn and Michael Ramscar (Oxford U Press 2001), and Handbook of Categorization in Cognitive Science, edited by Henri Cohen and Claire Lefebvre to be published in October by Elsevier. Steven Winter has an interesting chapter on categorization and "reasoning" by analogy in A Clearing in the Forest: Law, Life, and Mind (2001). And Judge Posner has an extensive review of the issue on pages 86-100 of The Problems of Jurisprudence, which he begins as follows: "The heart of legal reasoning as conceived by most modern lawyers is reasoning by analogy. This method of practical reasoning has an impeccable Artistotelian pedigree but no definite content of integrity; it denotes an unstable class of disparate reasoning methods."

As Judge Posner notes, analogies are sometimes used inductively, that is, we have had experiences in the past (like owning Volvos since 1963) and so think that if a new type of car is said to be like a Volvo, we expect it to share known features, understanding though that the new car isn't a Volvo but may share some of its characteristics. Another use of analogy is to to regard it as a form of authority; A is protected, we say B is like A, therefore B should be protected too. B is, legally, no different from A.

In protecting scripted movement, choreography stands as "authority" in this sense because it is a statutorily enumerated type of subject matter in the Copyright Act. As a class, choreography is protected; whether any individual piece of choreography will be protected turns only whether it is "original." Yoga shares with choreography both its movement and its scripted nature, and we can assume that any given yoga series can be "original" in the sense of not being copied. Bikram may have been the first to select 26 out of 84 or more ancient postures. But, yesterday I took the view (which I adhere to) that Bikram's yoga sequence did not give him any right to prevent others from performing that exact sequence, or I would add here, from inserting new ones or subtracting from the 26. Bikram claimed that the sequence was designed to and did create health benefits, and I regarded it as a Section 102(b) process. So, while yoga shares some characteristics with choreography, others it doesn't are to me determinative.

What about athletic routines, like figure skating or football plays? There have been attempts to secure protection for football plays, beginning in 1984 with registration of a I-Bone formation with the Copyright Office by two Texans, James Smith and Joey Lorenzo. The Copyright Office took the view though that the registration did not cover the performance of the formation. See Craig Neff, "Whose Bone is it, Anyway?" Sports Illustrated, January 23, 1989, at p.7. In arguing for protection, a law review notes state that "Football plays can be described on paper in ways analogous to dance steps." Brent Moberg, "Football Play Scripts: A Potential Pitfall for Federal Copyright Law?", 14 Marquette Sports L. Rev. 525, 540 n. 115 (2004). But that's not the point, although it does present the analogical reasoning issue I am interested in.

The point is whether football plays, all of which involve motion and some of which may be scripted in part, share the key attributes that led to Congress to protect choreography. In other words, are football plays (B) legally so close to choreography (A) that B is A? How do we make that determination?

Calling football a "sport" and choreography "art" doesn't help unless those categories have defined characteristics and those characteristics have relevance to the facts at hand and to the legal issue too. I think we have to first identify the salient features of originality in choreography, those things that result in choreography being protected: is it the presence of choices, and the purely aesthetic purpose? For something to be protected analogously to choreography, it would have to share those features and not have others that disqualify protection. Yoga, for example, has a utilitarian function and is probably not concerned with aesthetics in the sense that the movements are not principally designed to be aesthetically pleasing. Football is also functional: get to the other end of the field, and it has rules that restrict choice. And, of course, the football script is only for one side, and varies as soon as the play starts due to the other side's reactions. But what about figure skating? Not functional, and scripted.

Monday, August 22, 2005

Yoga and Copyright

The last posting, on choreography, mainly dealt with the lack of utilization of copyright by choreographers and others such as fine artists. One reason for choreographers' attitude toward copyright is that protection was very late in coming, and until 1978 quite limited. Of necessity, if not by design, alternatives had to be found.

Although choreography is of very ancient origin, the first registration was not until 1952. Even in 1952, there was not a separate enumeration in the statute for choreography (as there is now). Instead, choreography had to qualify as a species of dramatic composition in Section 5(d) of the 1909 Act; that meant the choreography had to tell a story. This requirement excluded a lot of what was then called "modern" dance. Fixation was also problematic and expensive since videotaping was not an option. (Tapes weren't an option for musical compositions either). The 1976 Act opened things up both by expanding choreography to include abstract choreography (by which I mean choreography that doesn't tell an overt story like Cinderella), and by permitting more flexible fixation, including videotaping. The same holds true for pantomime (protected for the first time in the 1976 Act). The Office has a fact letter on both.

But what about other scripted routines involving motion, like yoga? Until April 1, 2005, I would never have thought a court would entertain the possibility that one could acquire exclusive rights over the performance of yoga exercises. Leaving aside serious questions of origination, yoga routines are intended to bring about physical, mental, or emotional results and are, therefore, excluded by Section 102(b). Nor does a book about them convey any rights in the routines; that's been the law since Baker v. Selden, 101 U.S. 99 (1879), which rejected a claim by the author of a treatise on bookkeeping that a registration for the book gave him exclusive rights over the system of bookkeeping explained therein. Baker v. Selden is one of the foundations for Section 102(b).

So if everything is so clear, what happened? Bollywood met Hollywood and were married by ignorance, a lethal combination. Bikram Choudhury, a Calcutta native transplanted to LaLa Land, became a yoga teacher to the stars, through his Bikram "hot" yoga style, consisting of 26 yoga positions (asanas), and two breathing exercises, performed at a room temperature of about 105 degrees. We will assume arguendo he was the first to select these particular 26 positions. Importantly, he was quite insistent that they be performed strictly in order to achieve advertised physical and emotional benefits. Whether they did or not is irrelevant to me.

A book, "Bikram's Beginning Yoga Class" was written, and perhaps published before 1978, although that's unclear, at least to me, because the literary work registration (TX 179-160) states it was created in 1978 and first published on January 1, 1979 (most unlikely); the application was submitted on January 17, 1979. The claim of authorship was for "entire text."

Sometime in this new century, Bikram concluded, somehow, that he not only had a copyright in his selection of the 26 positions, but that this selection gave him the exclusive right to stop others from performing them in that order. That's baloney, as Baker v. Selden shows. And his registration was, as in Baker, on a literary work form and for "text," not choreography or any form of performing arts work (PA). That didn't stop him though from suing and threatening to sue, and making what were, in my opinion wildly extravagant and erroneous claims about the extent of this copyright.

On October 24, 2002, he filed a supplementary registration to the 1979 one, TX 5-624-003, listing amplified information of "compilation of exercises." There was correspondence over this that I am dying to see and will as soon as possible. If relevant, I'll revise this posting. But, no matter for right now; the supplemental registration was also for a literary work (it amplified a textual work, after all), and was a compilation claim. It still was not a choreography claim. Yet, Bikram asserted in litigation that "the teaching or offering of the sequence" constituted infringement. That is, as I said, baloney.

The claim was made in a declaratory judgment action brought by the Open Source Yoga Unity, a non-profit group. Their website has copies of many of the relevant legal documents. The case has now been settled, but not after an April 1, 2005 opinion by Judge Phyllis Hamilton of the Central District of California, denying Open Source's motion for summary judgment. A decision that Bikram had a copyright in a pictorial compilation of 26 exercises or in narration about them would be uncontroversial, no more so than a compilation of someone's choices of the best Indian restaurants in New York City. But what is controversial, indeed, outrageously wrong, was Judge Hamilton's conclusion that "should Choudhury establish at trial that his copyright in the Bikram yoga style is valid, under Section 106(4) he retains the exclusive right to authorize the public performance of his sequence."

Not true. Section 102(b) dictates otherwise, as does the very limited scope of the compilation. The only thing hot about Bikram's claim is the air in stating it.

Thursday, August 18, 2005

Choreography and Alternatives to Copyright Law

Given all the attention copyright law gets, one would think copyright protection is of vital interest to creators of original works of authorship. The copyright industries are fond of pointing out the relative importance of their industries to the GDP, and indeed they are important. This too might make one believe copyright protection is pervasively important. How can one measure the importance of copyright protection though (without going into the scope or extent of that protection, which is obviously also an important question)?

One way, an imperfect one, is to look at copyright registrations, since for U.S. works, registration (or rejection) is a prerequisite to bringing suit and for all works it is a prerequisite for getting statutory damages and attorneys fees. In FY 2004, the Copyright Office received 614,235 claims and registered 661,469 claims (the larger number being attributable to the processing of claims received in FY 2003 as well). More copyrighted works are created in part of one day in New York City alone. Not more economically valuable works necessarily, and that's part of why registration figures can't supply a complete answer. But 600,000 plus works a year is a very small number (and that number also includes registrations for foreign works).

Even within the 600,000 plus figure, the numbers are heavily weighted toward some groups and away from others. The fine arts are one example of a class of works that have, historically, been underrepresented in registrations. Choreography is another. The Register of Copyrights' 2004 Annual Report lists registration numbers for the broad class of performing arts, a class that also includes music, motion pictures and other audiovisual works, and other dramatic works. This class represented 170,512 registrations in FY 2004. More detailed breakdowns are given though in the number of registered works transferred to the Library's collections. Here, while the category includes dramatic works, it does not include music or motion pictures and other audiovisual works. Only 1,115 registered dramatic works , choreography, and pantomimes were transferred to the Library.

This very low figure corresponds to the legal literature on copyright and choreography, which repeatedly notes choreographers' decision not to rely on copyright and to instead develop their own "community" system of protection, protection believed to be better suited to choreography and providing better protection. The community system works in large part because of the concentration of choreographers in New York City, the tight-knit nature of dance companies, and the reputation within the community enjoyed by choreographers.

In brief, the dance community recognizes the choreographer's right to control his or her works even after they have been performed. Where a dance company different from that for whom the work was originally written wishes to perform the work, the choreographer ensures that the company is capable of performing the work and that it will ensure the integrity of it. A formal license agreement is entered into. This sounds like contract law, and it is. But the recognition of a choreographer's interest goes well beyond this, including rights of attribution where the work is revised, and a right to withdraw the work from performance. Interesting discussions can be found in Barbara Singer, "In Search of Adequate Protection for Choreographic Works: Legislative and Judicial Alternatives vs. the Custom of the Dance Community, 38 U. Miami L. Rev. 287 (1984) and Leslie Wallis, "The Different Art: Choreography and Copyright," 33 UCLA L. Rev. 1442 (1986).

The choreography example may be unique, but one wonders what form of protection, if any, the vast majority of copyrighted works not registered each year rely on, and whether amidst all the debates on copyright we are fussing about the tip of the iceberg.

Wednesday, August 17, 2005

Section 1008

Section 1008 of title 17 brings back bad memories. It was drafted "off-the-Hill" by industry (as was the entire initial draft of what later became the Audio Home Recording Act of 1992 of which Section 1008 is a part.) The drafting was done before Congressman Hughes was chair of the House IP subcommittee and I joined it. Neither Hayden Gregory - the subcommittee's chief counsel - nor I liked the bill or the drafting, including that in Section 1008. We thought Section 1008 should have been much more transparent, but we had many other fish to fry in the bill and with other members of Congress too, and so we let it go. That was a mistake, and on my part, an abdication of responsibility.

The Judiciary Committee report, H.R. Rep. No. 102-873, pt. 1, 102d Cong.,2d Sess.24 (1992) states our intent with respect to Section 1008: "In the case of home taping, the exemption protects all noncommercial copying by consumers of digital and analog musical recordings." Not this uses the term "all" and is not limited to "digital audio recording devices." But that's not what the statute says. Section 1008 says in relevant part, that no action may be brought "based on the noncommercial use by a consumer of such device or medium for making digital musical recordings or analog musical recordings." The "such" here refers to (and this is the nub of the matter) only the following: "a digital audio recording device, a digital audio recording medium, an analog recording device, or an analog recording medium." Focusing only on the digital side, the critical definition is that in Section 1001 of a "digital audio recording device," which is limited to machines or devices or parts thereof "the digital recording function of which is designed or marketed for the primary purpose of, and that is capable of, making a digital audio copied recording for private use... ."

This definition, and that of "digital audio copied recording" were the heart of RIAA v. Diamond Multimedia Sys., Inc., 180 F.3d 1072 (9th Cir. 1999), which held that a computer hard drive is excluded from the definition of digital musical recordings and therefore the Serial Copy Management System (SCMS) and royalty obligations of the AHRA. But the definition of a digital audio recording device and Diamond Multimedia bite both ways: as applied to Section 1008, I think it fair to say that the legislative report is much broader than the statutory language and it goes without saying that the statutory language prevails.

Industry might respond that the exemption was only intended for cases where they were getting a royalty from sales of copying devices and blank digital recording media, and where SCMS or its equivalent prevented serial copying. Where they weren't getting SCMS protection or royalties, no exemption. That may well have been their intention, and that is the way the statute works out. Nor did industry mislead us in any way. But our subjective intention and that of the Committee, expressed in the Committee report, was to exempt all noncommercial private copying. Because we failed to express that intention in the statute, I accept that our intention is irrelevant.

I have been asked occasionally whether there is a practical difference between Section 1008 being phrased as "no action may be brought" versus the usual language, "x is not an infringement." That issue is one reason why I didn't kvetch about the language of Section 1008 during the drafting process. I thought the phrasing awkward and silly: why not just say that conduct x is not infringing, like Section 107 does. My goal in statutory drafting was Anton von Webern's definition of art: expressing an idea in its simplest, clearest, most comprehensible terms. Section 1008 was most inartful. But, because I thought I was just fussing about drafting styles (and the private sector is generally an awful drafter of statutory language, which they tend to treat as if it was a contract), I let it go. That was a big mistake. I missed that the phrasing was the way it was because it masked, in plain view, the real point, the severe limitation of the exemption to copying from a digital audio recording device. Shame on me.

Tuesday, August 16, 2005

Technological Protection Measures

The DMCA is not the first provision in title 17 to mandate technological protection measures (TPMs). The first time I experienced this was in 1992, as copyright counsel to the House IP subcommittee. Hayden Gregory, the chief counsel of the subcommittee and I were charged with making was referred to jokingly as "DART-Lite", watering down the industry's version of what became the Audio Home Recording Act of 1992. Industry wanted the Serial Copy Management System (SCMS) to be mandated. We balked at mandating a private technology in public legislation, and so, Section 1002(a) refers to SCMS and to "a system that has the same functional characteristics as" SCMS.

DART, by the way, is a classic case of Congress being sold a phony bill of technological threats. We were told that the docks were loaded with these new fangled ditigal machines that would produce endless perfect copies from other copies. I saw no market for the digital audio cassettes contemplated by DART: adults would want CDs since they were hardly any more expensive, while kids would prefer analog cassettes given the much lower price.
And as for the "perfect copy claim," that claim was very powerful among members of Congress in the 1990s. Hayden and I actually insisted that the proponents send over from Japan a technician to demonstrate whether that was true; it turned out that after the 40th copy, there was an appreciable degradation.

Two other points, the utility of DART turned out to be of very short, limited value, while Section 1008, which was intended to take care of home copying once and for all, did no such thing. I wished we had killed the bill.

The issue of TPMs and whether the DMCA has fulfilled its purpose is being discussed on Randy Picker's mob. The mob is based on an article by Fred van Lohmann on the infamous Microsoft darknet paper. Here's the link to the discussion group:

Monday, August 15, 2005

Twisting in the Wind

In drafting legislation, it is impossible to convey most of what went into the legislation: what led to the proposal, the initial discussions about the proposal, the decision to introduce a bill including the assessment of who would be for it and who would be against it (and how to take care of such opposition), the prospects for passage, whether it was really necessary or worth the effort, the initial drafting, selecting witnesses for the hearing(s), preparing questions for the hearing, the actual hearing and inevitable surprises, making necessary revisions in light of the hearing, the effort to secure the necessary support and eliminate objections, the subcommittee mark-up (when I was subcommittee staff the most difficult mark-up task was just getting a quorum; I once had to block the door to try and persuade members from leaving, and we eventually considered"rolling" quorums in which we counted the total number of people who had come at different times), the full committee mark-up (getting the full committee chair to schedule a time wasn't easy and could fall victim to fights about other, unrelated disputes in which your bill was kept off as retaliation) and any problems that occurred at the full committee, the drafting of the committee report, preparing the bill for the floor, preparing floor statements and getting floor time, eliminating last minute objections that came out of the blue, and finally getting the bill passed. And that's only one chamber.

In the case of copyright protection for the built design of works of architecture, even before all of the above began, there were discussions two years before the first bills were introduced, during the Berne adherence efforts, when a decision was made to postpone any provision extending protection to architectural works in favor of a Copyright Office report. I then spent a year studying the issue and drafting the Copyright Office report, amidst a brutal fight with the then-General Counsel about a different, but related issue, the standard for conceptual separability. It was only by placing architectural works in its own category of work of authorship in new Section 102(a)(8), that the legislation could go forward, leaving for another day the donnybrook over conceptual separability.

The 1990 Architectural Works Copyright Protection Act was the end result. It is a statute I have tremendous fondness for, both because it is a subject matter I truly love (see my earlier posting on Louis Kahn), because it was the only non-fast track statute I worked on that never changed once it left the House subcommittee, because it reflected pure policy, and because I lived deeply the history of its passage through battles in the Copyright Office and later in drafting the legislation.

Chief Judge Michael Mukasey of the SDNY recently issued a masterful and important AWCPA opinion (decided Aug. 4th but not filed until the 10th), Thomas Shine v. David M. Childs and Skidmore Owings & Merrill. Here's a link to a helpful 2004 article on the dispute from Architectural Record, including side by side photographs of the two works, and an August 11, 2005 NY Times article on the opinion, with one picture.

In brief (since this is only a blog), in 1999, Shine, a Masters architecture student at Yale took a class on skyscrapers from famed architect Cesar Pelli. The object of the class was to create a design proposal for what became the Freedom Tower at the World Trade Center. Shine created a number of sophisticated models, one of which was called "Shine 99" and the other "Olympic Tower" (back in the days before Sheldon Silver stopped New York from being seriously in the running for the Olympics). A jury, including Childs, held Shine's Olympic Tower in high regard. Shine describes the work as "a twisting tower with a symmetrical diagonal column grid, expressed on the exterior of the building, that follows the twisting surface created by the floor plates' geometry."

The saga of the World Trade Center "Freedom Tower" design is the stuff of soap operas, including the "difficult marriage" between Daniel Liebeskind and Childs. Recently, the design that is alleged to be infringing was scrapped due to security concerns, so as Judge Mukasey pointed out, any damages and the need for injunctive relief, are iffy indeed. But when that original design was released, some at the Yale Architecture School thought there was a lot of similarity to Shine's Olympic tower. Litigation followed.

Access was not an issue, nor is this the first time that there are alleged similarities between a younger architect and that of an older one on the jury for the younger architect's work: a famous example involves Jorn Utzon's Sydney Opera House and Eero Saarinen who was on the Sydney jury and who later designed the TWA terminal at JFK and Dulles International Airport, outside of DC.

Judge Mukasey granted defendant's motion for summary judgment on Shine 99 but denied it for the Olympic Tower. His discussion of the substantial similarity issues is quite sound (and I don't express any opinion on infringement), but without taking away from the infringement discussion, I want to instead focus on the earlier, copyrightability stage because defendants made some arguments I find patently frivolous.

The first argument is that Shine's models were not protectible because there were preliminary or conceptual and one could not construct an actual building from them. Judge Mukasey rightly noted no cases supported these arguments, but even more to the point, the statute rejects them. First, here's the definition of "created," in 17 USC 101: "A work is 'created' when it is fixed in a copy or phonorecord for the first time; where a work is prepared over a period of time, the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work.

Preliminary works are protectible: if I write one chapter of a treatise on copyright law and plan to write 25, chapter one is protected even if I never finish the other 24 (I did, btw). Second, the definition of an "architectural work" in Section 101 (quoted by Judge Mukasey) imposes no special requirements on architectural works, so the general definition of "created" applies. There was consideration in the legislative process to limit protection only to the actual built design, but Congress decided against such a limitation. A watercolor or charcoal sketch is just fine, as are three-dimensional models. All that matters is that there is a fixation. SOM's argument is legally frivolous. But is it against SOM's long-term interest? Might SOM not be a plaintiff some day? Yes, but here's how SOM's argument might work out in practice: to be a protected architectural work, you need to have not just artistic rendering of the design, but also a full-set of working drawings. For skyscrapers you're talking vast, extremely expensive drawings. No one makes such drawings until the work has been bid and awarded. Who builds big expensive skyscrapers? Big corporate architecture firms like SOM do. Architects like Shine don't; in fact, very very few architects ever do. Those who don't build, but who do create expressive designs would, under SOM's theory (if I understand it), be out of luck and at the mercy of the SOMs of the world. Fortunately, that's not the law.

SOM's next argument is that the Olympic tower isn't original. Having attacked Shine's work because it couldn't be used to construct a building, SOM then claimed the design was functionally dictated and therefore not protectible. Really? How would SOM know, since they couldn't actually make a building from the design.

In reviewing SOM's argument, Judge Mukasey rightly focused on the low general standard for originality and on the particular definition of architecture, which focuses on overall form. I wrote that definition and I wrote it that way to capture the nature of architectural expression, which at its greatest is one of form. I also recognized that architecture, like Cubist paintings, frequently consists of the original use of geometric shapes. SOM attempted to subvert the statutory definition by dissecting the work into constituent elements and then declaring since none of the dissected elements were protected, the whole wasn't. That's missing the whole point. As Judge Mukasey pointed out, the House report (there was no Senate bill) dictated a two-step process: first one looks to see if the work is original, meaning its overall form. If so, one asks whether that form is functionally dictated. If the overall form is not functionally dictated, the work is protectible.

It is this two-step test that served to resolve the fight I had with the General Counsel of the Copyright Office on conceptual separability: she thought the Guggenheim Museum was a useful article whose overall form was functionally dictated. It thought that insane: the overall form of the Guggenheim is not functionally required; if it was all art museums would look like it, and they don't. We could never agree, and the dispute had, actually, nothing to do with architecture, and everything to do with good-looking toasters and the like. But so long as architecture was not in Section 102(a)(5), the two-step test was fine with her. I thus find it amusing to see SOM resurrect the argument in a different guise: all parts are required to support the whole therefore the whole and none of the parts are original. The argument is wrong, and, as it turns out, not original.

Friday, August 12, 2005

Unpublished Works

Yesterday's posting pointed out Senator Hatch and Professor Lee's error regarding unpublished works. Because most people interested in copyright today never practiced under the 1909 Act, it remains a mystery. And if you're not an historian, prior acts are too. Today's posting is an effort to demystify. I leave to others the conclusions, if any, to be drawn from this history. This is merely a Jack Webb blog.

The existence of copyright protection for unpublished works and the source of that protection hearkens back to the famous Battle of the Booksellers, in which the Stationers Company alleged that the 1710 Statute of Anne, which prescribed statutory protection for a fixed term of years (14 plus 14) was supplementary to a perpetual common law right. While in Atkins v. Stationers Co. (1666), the House of Lords had declared that a "copyright is a thing acknowledged at common law," in 1774, in Donaldson v. Becket, the House of Lords, as a body (in other words not just the Law Lords) rejected the claim that common law rights survived the Statute of Anne, thus rejecting the Stationers' claims. There is a difference of opinion whether there was ever a perpetual common law copyright in England, but no one doubted that there was no common law right for published works.

In the United States, in its first copyright opinion, the 1834 Wheaton v. Peters, the Supreme Court held that federal copyright was entirely a creature of statute and that therefore there was no federal common law protection. The Court expressed doubt whether there was state common law copyright in the particular state, Pennsylvania, but didn't hold such protection was impossible. Indeed, the pre-1978 ability of states to protect unpublished works under the common law has never been questioned and most, if not all states other than Lousiana (which didn't have a common law), extended common law rights to unpublished works. And it has never been doubted that such protection could be perpetual, since states are not bound by Article I, sec. 8, cl. 8.

But what about federal statutory protection for unpublished works? There has always been federal statutory protection for certain classes of unpublished works. Section 6 of the 1790 Act, our first Copyright Act, stated "That any person or persons who shall print or publish a manuscript, without the consent ... of the author or proprietor thereof, ... shall be liable to suffer and pay to the said author or proprietor all damages occasioned by such injury ... ." Section 9 of the 1831 Act repeated this, including injunctive relief, as did Section 102 of the 1870 Act and Section 9 of the 1891 Act.

The most recent and important example, though, is Section 12 (originally 11) of the 1909 Act: "That copyright may also be had of the works of an author of which copies are not reproduced for sale." Section 2 added, "That nothing in this Act shall be construed to annul or limit the right of an author or proprietor of an unpublished work, at common law or in equity, to prevent the copying, publication, or use of such unpublished work without his consent, and to obtain damages therefor."

There was no term of protection in the statute for Section 12 works, so the courts created one: the date of registration; the first term ran from that date, and renewal had to be made within 28 years from the registration. Section 12 encompassed a vast body of works, including musical compositions, motion pictures, speeches, and later television programs (a performance has never been a publication, but if there was a publication, protection was still available provided a new registration was made and proper notice affixed). If you look at old registrations and see a small "u" after the registration, that means it was a section 12 registration.

Thursday, August 11, 2005

Copyright, Cognitive Linguistics, and Originalism

Metaphor plays a powerful role in many aspects of life, in so many different aspects that the term itself stands for different things. There are image metaphors used in literature ("Juliet is the Sun," "Aryeh is a Lion"). These illustrate the figurative aspect of metaphor: no one thinks that Juliet actually is the solar entity or that Aryeh is the King of the Jungle (itself another metaphor). By associating the person with something different we intend to make a statement about the person's character.

Another use of metaphor is conceptual. The conceptual metaphor goes beyond metaphor as a figure of speech, and instead regards metaphors as conceptual structures even though those structures are expressed linguistically. Cognitive linguists believe that via conceptual metaphors, patterns of reasoning are carried over from one part of the metaphor to the other. A classic example, given by George Lakoff and Mark Johnson in "Metaphors We Live By," is the concept "Argument" and the conceptual metaphor "Argument is War," from which we derive a number of expressions found in law: "The judge shot down all my arguments" or "My arguments were right on target." According to cognitive linguistics, the point is not that arguments are a subspecies of war (the latter is physical, the former, verbal), but rather that how we approach arguments is influenced by regarding them metaphorically as a battle in which one side or the other wins, something quite embedded in the advocacy approach to law.

What does this have to do with copyright, much less originalism - an approach to Constitutional interpretation that seeks to determine the meaning of a Constitutional term by its understanding at the time of the Constitution's adoption? In their article, "To Promote the Progress of Science": The Copyright Clause and Congress's Power to Extend Copyrights, published in 16 Harvard Journal of Law & Technology 1 (2002), and which also served as an amicus brief in the Eldred case, Senator Orrin Hatch and Professor Thomas Lee offered an interpretation of the term "Progress" in Article I, sec. 8, cl. 8. They felt compelled to do so based on their position that the "To promote the Progress of Science" language does act as some form of substantive limitation on Congress's power to enact copyright legislation. In this respect, they differed, as it turned out, from the Supreme Court majority, although their interpretation of the term is so broad as to render any difference theoretical. Moreover, Hatch and Lee also referred, as did the Eldred majority, to the "promote" language as a "preamble," a novel interpretative approach under which a single sentence is atomized and whose beginning is thereby rendered superfluous to the remainder. So much for giving every word a meaning.

What fascinated me about the Hatch/Lee article is how it went about ascribing a meaning to "progress." Taking an originalist approach, they looked to a number of contemporary sources, including the Pennsylvania Gazette, published from 1728 to 1800, and described as the New York Times of the 18th century. (Here's a 1750 edition published by Ben Franklin). In all the sources they looked at though, they were openly pursuing progress as "a notion of physical movement or dissemination," in other words, as a metaphor, something they acknowledge in the examples they quote, such as Alexander Hamilton's comment in Federalist Papers No. 15 in which he refers to readers' understanding as a "road they have to pass," or a "field they have to travel." But for Hatch and Lee, this becomes quite literal, or as cognitive linguists would say, they adopt a substitution theory of metaphor in which a metaphorical expression replaces a literal expression that is purported to have the same meaning. Cognitive linguistics reject the substitution theory.

But here is what Hatch and Lee do with it: they use the conceptual metaphor of progress as physical movement as a literal definition, so that it trumps other literal meanings of progress, such as intellectual improvement. (They do acknowledge this other possible meaning). This trumping is necessary because they both (1) accept that "progress" acts as a limitation on Congress's power but (2) don't want it to really act as one, since to do so would mean that Eldred would have had come out differently given that the challenge in Eldred - to the term extension for preexisting works - can't be said to have led to new works . They therefore focus on the physical, that is, new means of disseminating old works. "Progress" is, in other words, physical, physically providing the means of getting works out, even old ones. So long as term extension increases this physical movement, it is, definitionally, promoting the "progress" of science.

Wholly aside from this very odd mixing of originalism and the substitutional theory of metaphor, Hatch and Lee are wrong on an number of important points. I will mention only one, an historical point. They incorrectly say that before 1978, federal copyright law did not protect unpublished works. The 1909 Act protected, in Section 12, a large number of unpublished works. So too did the 1790 Act. This point was important for Hatch and Lee because they used it as proof that copyright acts had always been involved with movement, publishing. One wonders then if Senator Hatch believes that protection for unpublished works is and always has been unconstitutional.

Wednesday, August 10, 2005

Authorship and Religion

Claims to copyright in religious texts are not uncommon and may raise no real problems, depending on whom the claimant is. Neither the Copyright Office nor the courts delve into whether the work is "religious," but whether the claimant of a purported religious text is in fact the author or derives rights via a valid transfer from the author is as fair game for religious works as it is for secular works.

For starters, the Copyright Office sensibly interprets the Act as requiring human authorship. If, for example, a claim is submitted by a human being who claims to be a medium for the creations of an otherwordly being, the claim is invalid both because the otherwordly being is not a human and because the claimant is not an author, but is instead merely a scribe. See Oliver v. St. Germain Foundation, 209 F. Supp. 53 (S.D.N.Y. 1913), aff'd, 219 F. 178 (2d Cir. 1914). An English judge later felt the same way, see Cummins v. Bond , (1927) 1 Ch. 167, in which the plaintiff medium claimed rights in "automatic writing'' from a 1900-year-old spirit. The court held that ''authorship and copyright rest with some one already domiciled on the other side of the inevitable river,'' id. at 175.

These principles were weakened by Judge Sweet in Penguin Books U.S.A., Inc. v. New Christian Church of Full Endeavor, Ltd., 55 USPQ2d 1680, 1691 (S.D.N.Y. 2000), where plaintiff made the claim that Jesus was the author of the work and that she was merely the medium. Jesus also allegedly communicated to her the unprecedented, but quite adamant instruction to register the material with the Copyright Office. When the Office refused an application listing Jesus as the author, the claim was amended to read "Anonymous (Helen Schucman").

Judge Sweet chose to disbelieve Ms. Schucman's claim that Jesus was the author, based in part on "common sense" and in part on an inability to separate fact from belief. In so doing, I think the Court did make a religious judgment, namely, that Jesus wasn't the author. (There are, of course, other grounds for bouncing a claim submitted by Jesus, and one wonders how long the term of protection would be). Taking Ms. Schucman at her word avoids enmeshing courts in religious determinations and is simply an application of a general doctrine of authorial estoppel: if X publicly says Y created the work, in a later infringement action against Z, X will be held to the statement that Y created it.

These claims should be distinguished from claims by human authors who trace their inspiration to alleged divine sources, whether it is Scientologists referring to the "lingering spirits of extraterrestial people massacred by their ruler, Xenu, over 76 million years ago," Religious Technology Center v. Lerma, 40 USPQ2d 1569 (E.D. Va. 1996), and from cases where works by human beings are regarded as religious texts, such as those by Mary Baker Eddy. We should also distinguish translations of mainstream religious texts, like the Chumash (the first five books of the Bible), which are protected as derivative works like any secular work and subject to the same standards.

There appears to be no area where general copyright principles can't handle claims involving copyright in religious works.

Tuesday, August 09, 2005

Copyright and Religion

Yesterday's blog on the Da Vinci Code didn't go into the issues of religion raised by the case, although some of the similarities claimed to be infringing involved religious events or issues. I didn't discuss any particular similarities, religious or secular, and as a non-Christian, I wouldn't feel qualified to offer any comments on the religious aspects of the similarities.

Religion rarely raises its head in copyright disputes, although the only copyright statute ever found unconstitutional was found unconstitutional as a violation of the First Amendment's Establishment clause, United Christian Scientists v. Christian Science Board of Directors, 829 F.2d 1152 (D.C. Cir. 1987). That case involved a private law, Priv. L. No. 92-60, which extended copyright on Mary Baker Eddy's "Science and Health," published originally in 1875 and revised continually since. The original version, along with revisions made by Ms. Eddy until her death in 1910 had fallen into the public domain. A dissident group viewed the 1910 version as authoritative. Private Law 92-60 was passed avowedly to help suppress this group, and the law was deservedly struck down.

Religion has been raised in other copyright contexts. In Merkos L'Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc., 312 F.3d 94, 97 (2d Cir. 2002), another dispute among followers of a deceased (at least to some) religious leader led to a dispute over copyright in a translation of the Lubavitchers' siddur (prayerbook). The translation certainly was not for necessary for regular Chabad members whose Hebrew is quite excellent, but rather for non-Chabad members who have not regularly attended services. The Second Circuit held that "the translation process requires exercise of careful literary and scholarly judgment." As a collector of siddurim, I can vouch for this. There also was a challenge to the court's authority to hear the dispute, since a religious court (bet din) had made a determination, but binding on only one of the parties. The court noted that both parties were corporations, and that the federal judiciary could apply neutral secular law (the Copyright Act) to resolve the dispute, thereby not trampling on religious territory.

Similarly, in Religious Technology Center v. Scott, 660 F. Supp. 515 (C.D. Cal. 1987), the court rejected a claim that a determination of infringement would impermissibly entangle the courts in religious doctrine. And, finally, in Worldwide Church of God v. Philadelphia Church of God, Inc. 227 F.2d 1110 (9th Cir. 2000), the court rejected a Religious Freedom Restoration Act defense raised by an infringer, holding that it matters not if the work infringed is religious, only whether it is original and has been substantially copied.

Tomorrow's blog will be on authorship of religious texts.

Monday, August 08, 2005

Da Vinci Code Opinion

On August 4th, Judge George Daniels of the SDNY handed down the copyright opinion heard around the world press, in an infringement suit brought over the popular "The Da Vinci Code." He granted summary judgment to Dan Brown and Random House that there was no infringement. The losing declaratory judgment defendant, Lewis Perdue, has two blogs on the case. Here's the link to the first, called the Da Vinci Crock, and to the second, called Writopia. Both are fairly vitriolic.

Such disputes, common with any famous work (even famous trashy ones), rarely merit serious attention, and this one doesn't either. I say this not of disrespect to Mr. Perdue, a published author who feels he has been victimized, but instead out of the obvious fact that his case, like many, turn overwhelmingly on a fact judgment, and as such, while reasonable people may disagree, that disagreement is not the stuff of broad legal principle, unless something went seriously awry. It doesn't seem to have here. (Brown and Random House conceded access for purposes of the summary judgment motion, so it really was just a straight comparison).

There are a few points worth noting, mostly about judicial technique. After setting out the basic legal principles, Judge Daniels does a comparison of the works, breaking the comparison down into issues like "thematic expression," "total concept and feel," "plot," etc. Helpfully, he prefaces each section with a definition of the issue. The opinion is very readable and thorough.

On his Da Vinci Crock blog, Mr. Perdue raises a question, though: how much of the opinion is Judge Daniel's writing and how much is Random House's? He refers to a University of Virginia The Plagiarism Resource Site that extracts text portions of files and looks through for matching words in phrases of a specified minimum length. A comparison of Judge Daniels' opinion and Random House's brief using this tool showed that there was cutting and pasting. This is of course, quite typical, as is wholesale adoption of the parties' "proposed" findings of fact and conclusions of law. That's the nature of the judicial process and one where the winner wins and the loser loses. But given the courts' heavy reliance on parties' material, one wonders why they object to legislative history. At least a staffer writing a legislative report is a full-time, loyal employee; with findings of fact, trial courts are not only adopting the work of advocates, they then expect appellate courts to review them under the clearly erroneous standard.

Friday, August 05, 2005

Recordation of Documents

In addition to registration of claims to copyright, the Copyright Office also records documents relating to copyright. From January 1, 1978 until February 28, 1989, if you were a transferee of an exclusive right, you had to record the transfer document in order to sue. That provision, found in then Section 205(d), was abolished (at my lobbying) in the Berne Convention Implementation legislation. The Library of Congress has, however, been recording documents related to copyright since 1870, and continues to do so today.

Documents are indexed under the names of the parties and the titles of the works listed in the documents. Once a document is recorded, a unique identifying number is assigned, while the original documents are returned. Unlike with registration, the Office does not make any determination as to the document's validity or legal effect. Its just there on the public record.

Why record, then, after March 1,1989? One reason, and it is important, is that if a registration is on file, it works to give constructive notice so that a recordation will give priority for conflicting transfers. This is a Brooklyn Bridge issue: if the Brooklyn Bridge is sold twice, who owns it? While the answer to that question is no one since it can't be sold, where a copyrighted work can be sold, it does happen that it is sold twice by the same person. And just like in real estate, the Copyright Act has a way to sort out the true owner. In the parlance of real estate recordation schemes, the Copyright Office scheme is a "race-notice" statute: the first party to record without notice of the previous transfer wins. These rules are in Section 205.

Recordation is also important in bankruptcy situations, where, under Judge Kozinski's Peregrine decision, unless the transferee has recorded first, a bankruptcy trustee will prevail merely by virtue of the bankruptcy filing. That rule is particularly harsh since a search of the Copyright Office records will not reveal the bankruptcy trustee's priority. Marvel Comics, Sony, and Paramount were tied up in litigation over this for years, delaying the release of the first Spiderman movie. The issue arises far more often and significantly than one would think.

On August 1st, the Copyright Office issued a Notice of Policy Decision clarifying a number of recordation issues, and should be consulted, along with Compendium II of Copyright Office Practices chapter 16.

Thursday, August 04, 2005

Attorneys Fees

The availability of attorneys fees has been an important, lurking issue in all of the registration issues raised in previous postings. As a private practitioner faced with a mortgage and educational costs times 2 for almost 20 more years, it is an issue near and dear to my heart, and one I have direct experience with on a daily basis. It is also a policy issue though too since there is no question that the availability - or not- of such fees impacts significantly on the number of copyright suits brought. When I was counsel to the House of Representatives IP subcommittee, the 1993 Copyright Reform Act's provisions on registration were an effort to level a playing field tilted strongly against individual authors, a problem that remains today. Individual authors have the most need of at least the theoretical availability of attorneys fees; their unavailability acts as a serious impediment to bringing meritorious claims.

Of course, individuals also bring a lot of frivolous suits, and Tuesday's posting was about one of them. One policy approach, then, would be to deny all attorneys fees, and this is, in fact the prevailing "American rule" (contrasted with the "British rule" where prevailing plaintiffs almost automatically get their fees awarded). The countervailing policy is one where private parties act as "private attorney generals" vindicating the purposes of the Act that Congress has passed.

The British rule used to be followed in some circuits before Fantasy v. Fogerty, 510 U.S. 517 (1994)(The link here is to Columbia's awesome Music Plagiarism Project which has not only the opinion, but recordings of the works in the suit, and the score, along with commentary), levelled the playing field by mandating even handed treatment (while not dictating what that treatment is). Fantasy was the perfect case to deal with the matter since it was the author, rock musician John Fogerty (formerly of Creedence Clearwater Revival) who was sued for copyright infringement by the record label to whom he had earlier transferred rights in a song called "Run Through the Jungle". Attorneys fees served there to permit a defendant to fight against a meritless suit.

Sometimes contingency fee arrangements are entered into (only on plaintiff's side, obviously), and on August 2d, in King v. Fox the Second Circuit (per then District Judge, later Attorney General Michael Mukasey), addressed a dispute between members of the band Lynyrd Skynyrd over royalties. The plaintiff was a band member, Edward King. The defendant was his lawyer, Lawrence Fox. Fox was a personal injury lawyer and had no experience with entertainment law. Fox was, though, quite familiar with contingency arrangements and he entered into one with King for the typical one-third recovery. A settlement was reached but King balked at Fox's one-third share of the recovery. King then filed a complaint against Fox alleging various state claims.

I won't go into the details, but only point out that no matter the arrangement, attorney's fees are a very significant part of litigation, both in bringing the suit, and in client-attorney relations. As in most disputes over money, usually both sides lose.

Wednesday, August 03, 2005

Bill Gates and Software Copyright

At a recent conference of the Association for Competitive Technology, Microsoft's GC, Brad Smith advocated reform of the software patent approval system. Sunday's New York Times, Business Section, page BU3 had an article entitled "Why Bill Gates Wants 3,000 New Patents" which also quoted Mr. Smith, but noted Microsoft had increased its patent applications. The article quoted Mr. Smith to the effect that "We thought we could rely on copyright" in the past. The story then opined:

"If Congress passed legislation that strengthened copyright protection to include design elements as well as software's source code, formalizing the way the courts interpreted the law in the 1970s, we could bring an end to software patents and this short, unhappy blip in our patent system's time line."

I don't know what is referred to by "design elements" or by court interpretations in the 1970s. Although the Copyright Office did register a few claims before the 1976 Act, design elements weren't an issue since there were no decisions under those registrations, registrations which, by the way, were and could only be for published programs. (And the programs were quite primitive). Even after the 1980 CONTU amendments, protection for sequence, structure, and organization, that is, non-literal elements, didn't really take off big time until Whelan v. Jaslow Dental Laboratories, 797 F.2d 1222 (3d Cir. 1986). Most of the criticism of Whelan wasn't over protecting "SSO" but instead was over Whelan's expansive definition of idea and its false analogy to regular literary works. In other words, the complaint was not that non-literal elements shouldn't ever be protected, but with how the court determined the protectible elements and therefore their likelihood of being infringed. To call Whelan liberal is like calling Rush Limbaugh right wing.

The Whelan era came to an end six years later, with Computer Associates Int'l Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). Computer Associates was, from my understanding, a deliberate effort by the Second Circuit not only to cut back on Whelan but to also signal strong disapproval of Congress's choice to protect software under copyright at all, and to cripple the broad protection that seemed to be the wave of the future.

Computer Associates fell into one of the same traps as Whelan though (the analogy to literary works) and its abstraction-filtration-comparison approach (based on Mel Nimmer's false and flawed abstractions "test" and David's proposed expansion of it for software) is an abomination that has ravaged copyright like the Black Plague. But if the purpose of the abomination was to indirectly but deliberately eliminate expansive protection for what Mr. Gates was referring to as design elements, Computer Associates accomplished that purpose, and thus it may be the basis for his remark.

But even the Third Circuit has turned its back on Whelan, in Dun & Bradstreet Software Services, Inc. v. Grace Consulting, Inc., 307 F.3d 197 (3d Cir. 2002), while the Second Circuit mitigated a few of the untoward consequences of Computer Associates by taking a more holistic approach in Softel, Inc. v. Dragon Medical & Scientific Communications, Inc., 118 F.3d 955 (2d Cir. 1997). And then there is Lotus Development Corp. v. Borland Int'l, Inc., 49 F.3d 807 (1st Cir. 1995), aff'd by an equally divided Court, 516 U.S. 233 (1996), reminding us that the Supreme Court is indeed in the habit of dodging, not deciding, tough copyright cases, since it dropped Lotus one week after oral argument.

Due to international obligations, the U.S. has no choice but to protect software under copyright, but the scope of that protection, including "design elements" is up to national law. And that leads us back to Microsoft's simulataneous embrace of and criticism of patent law. I would be interested in learning exactly what Microsoft's views are on the current state of software copyright and whether it thinks there are current deficiencies. I'll send this to a friend in Microsoft's legal department and perhaps he'll tell us.

Tuesday, August 02, 2005

How it Should Be Done

Every now and then one reads an opinion that is so right, you think "that's how it should be done." Mowry v. Viacom International, Inc. 2005 WL 1793773, 2005 U.S. Dist. LEXIS 15189 (S.D.N.Y. July 29, 2005)(03 Civ. 3090 (AJP), an 18-page opinion issued by Judge Andrew Peck, Chief Magistrate Judge of the SDNY, is one of those opinions. (The case was decided under 28 USC sec. 636(c), for cognoscenti).

Mowry is a bread and butter dispute: someone writes an unpublished screenplay and claims that a well-known movie (here "The Truman Show") infringed. There is no evidence of access. An expert is hired and attempts to establish sufficient evidence of striking similarity through a comparison of the two works.

What makes Mowry so special is solely Judge Peck's (typical) extraordinary thoroughness, clear reasoning, and writing. His opinions are usually a precis of the relevant field, and Mowry is of a piece. If you want to find the latest (as well as many older but still relevant) cites to any issue on infringement (the discussion of "industry access" is excellent), here is your handbook.

A Judge Peck opinion usually has some sly, sardonic humor, present here in describing plaintiff's linguistics expert: "Mowry points to no case in which an expert using cladistic or phylogenetic tree analysis has been used to show striking similarity (or even substantial similarity) between literary works, and the Court's research has found no such cases. While it is true that there must be a first time for an expert methodology to be accepted by the courts, this is not the case."

Bravo all around. I urge everyone to read and consult the opinion.

Monday, August 01, 2005

Registration Issues

The continuing relevance of registration with the Copyright Office was displayed in the last week or so in two different fora, the 10th Circuit (construing Section 411(a)) and the Copyright Office, which issued proposed rules for preregistration of unpublished works.

1. Section 411(a)

The 10th Circuit opinion, issued on July 26th by Judge Timothy Tymkovich in La Resonalana Architects, PA v. Clay Realtors Angel Fire, is an outstanding effort. Plaintiff had sued for infringement after only submitting (but not receiving) a certificate of registration or a rejection. Defendant, citing the plain language of Section 411(a), filed a motion to dismiss for lack of subject matter jurisdiction. The district court granted the motion and the circuit affirmed. This was the correct result.

As discussed in a June 7th posting, Section 411(a) states, simply and clearly, that no action for infringement shall be instituted until registration of the copyright claim has be made. Like Horton the elephant sitting on the egg, this passage means what it says and says what it means, 100%. Virtually all courts have read it plainly. The Fifth is the sole appellate exception (there are wild hairs in a few district courts like Rhode Island).

The errant courts have all been led astray by Nimmer, for whom, in my opinion, the statute is at best a secondary source to be ignored at will. Nimmer on Copyright reflects an approach of the treatise writer as colossus, striding the legal world and telling courts what the law is regardless of what the law is; a bit like country singer Willie Nelson's lyrics about being caught in flagrante delicto by a wife and saying to her "Who are you going to believe, your eyes or me"? Judge Tymkovich's opinion is thorough and methodical in showing why Nimmer is wrong, why the emperor (like Willie Nelson) has no clothes.

When a complaint is dismissed for failure to comply with Section 411(a), the dismissal is without prejudice, so after receiving the registration (or rejection), the suit may be refiled if still within the statute of limitations. Sometimes, though, dismissal will mean refiling will be outside the limitations period either for the copyright claim or for a pendent state claim. That problem was addressed in a July 22 opinion, Kenny v. Ryan Web Solution, 2005 U.S. Dist. LEXIS 14863 (S.D.N.Y.)(Batts, J.), where the time had run on a state privacy claim appended to the original complaint. Taking pity on the hapless plaintiff, Judge Batts reversed a previous dismissal order and allowed plaintiff to file an amended coomplaint. Others may not be so lucky.

2. Preregistration

On July 22, the Copyright Office published in the Federal Register a Notice of Proposed Rulemaking. This rule makes seeks to implement the ART Act (effective April 27, 2005), which, in part, amended Sections 408 and 411(a) to allow what is called "preregistration" for unpublished works that are being prepared for commercial distribution. The regulations must be in place by October 24, 2005. Preregistration is available only for the classes of works that the Register determines have had a history of infringement prior to unauthorized distribution. This lamentable imposition of responsibility hearkens back to the DMCA with its problems on identifying classes of exempt works. I wish Congress would do the work and figure out what it wants to exempt or include and not delegate such vague problems to an administrative agency.

Preregistration doesn't mean you don't have to eventually really register, you do, within one month of becoming aware of an infringement, but in no event later than three months from publication. That grace period is copied from the current statute, which permits statutory damages to be awarded even if infringement occurred before registration if in the case of a published work it is registered within three months of publication. And it is statutory damages and attorney's fees that are the motivation behind preregistration.

The House of Representatives tried to do away with the effects Section 412 in 1993 and 1994 passing a bill twice, but after Chairman Hughes became a lame duck, the quacks of cooperation stopped immediately, and given Senator DeConcini's lame duck status too, no bill got through the Senate. It has now been resurrected in a much smaller form, but in an Orwellian twist, it will benefit almost entirely corporations since only they will typically have the ability to comply.

I support corporations benefiting from statutory damages and attorneys fees against pirates, but I continue to think that individual authors must benefit too. And in that respect the ART Act is artless.