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).
Monday, November 28, 2005
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 Kuro5hin.org, 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.
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 Kuro5hin.org, 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.
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.
"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.
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.
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.).
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").
"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).
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, Amazon.com, 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
v.
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 Amazon.com. 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 Amazon.com. By clicking on the link, Okocha discovered that copies of his book were listed for sale by several third-party sellers on the Amazon.com website. However, there were no listings for the sale of Okocha's book by Amazon.com itself.In May 2003, Okocha filed a complaint against Amazon.com 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. Amazon.com 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 Amazon.com. Okocha appeals.After careful review of the record and consideration of the arguments on appeal, we agree with the District Court that Amazon.com 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 Amazon.com 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] Amazon.com 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 Amazon.com 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 Amazon.com 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 Amazon.com with respect to the copyright claim.*2 Amazon.com 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 Amazon.com 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 Amazon.com 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.
END OF OPINION
MY COMMENTS:
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, Amazon.com was not selling the work directly. Here too is an important question: can Amazon.com be held liable for the eventual sale by a third party? The sale is hosted and made possible by Amazon.com as the middleman. Amazon.com also has a financial interest in the sale. Since the sales take place book-by-book through Amazon.com, 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.
Basil E. OKOCHA; Basil Publishing Company
v.
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 Amazon.com. 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 Amazon.com. By clicking on the link, Okocha discovered that copies of his book were listed for sale by several third-party sellers on the Amazon.com website. However, there were no listings for the sale of Okocha's book by Amazon.com itself.In May 2003, Okocha filed a complaint against Amazon.com 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. Amazon.com 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 Amazon.com. Okocha appeals.After careful review of the record and consideration of the arguments on appeal, we agree with the District Court that Amazon.com 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 Amazon.com 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] Amazon.com 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 Amazon.com 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 Amazon.com 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 Amazon.com with respect to the copyright claim.*2 Amazon.com 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 Amazon.com 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 Amazon.com 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.
END OF OPINION
MY COMMENTS:
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, Amazon.com was not selling the work directly. Here too is an important question: can Amazon.com be held liable for the eventual sale by a third party? The sale is hosted and made possible by Amazon.com as the middleman. Amazon.com also has a financial interest in the sale. Since the sales take place book-by-book through Amazon.com, 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.
Monday, November 07, 2005
Two Fair Use Cases
Two fair use decisions were issued in the Southern District of New York on November 1st. The first involved Jeff Koons appropriating yet again another photographer's work. The second involved use of very small excerpts from a classical musical performance by a nonprofit satellite program about the arts. The results in the cases are the opposite of what one would expect from this introduction.
If the White Sox can win the World Series, Jeff Koons can win a fair use case, and he did in Blanch v. Koons, S.D.N.Y. (Judge Stanton). The suit involved well-known fashion photographer Andrea Blanch, who did an advertisement for Gucci silk sandals, run in the August 2000 issue of Allure Magazine. Koon's painting Niagara was the alleged infringer. (Here's a link to a site with other Koons works).
Ms. Blanch's photo showed a woman's bare legs below the knees crossed at the ankles, resting on the knee of a man. She is, of course, wearing Gucci sandals which have an ornately jeweled strap. As Judge Stanton put it, "[o]ne of the sandals dangles saucily from her toes."
Unlike other works of Koons, such as his infamous "Puppies," which infringed a photograph by turning it into a three-dimensional sculpture with minimal additions, "Niagara" is genuinely transformative: Koons (or actual painters?) copied only portions of the photograph as one component of the painting, changed the perspective, and added Salavador Dali-like elements.
One need not pay the slightest attention to Koons' representations about what he set out to do to see that "Niagara" uses the work in a transformative manner. Indeed, not paying any attention to what Koons says has two signal values: (1) from a legal standpoint, one cannot as easily get enmeshed in debates about judges judging art: you merely look at his work to see if it is, objectively, transformative. I think Blanch was a transformative use and Puppies not. Second, by ignoring Koons's remarks, one also avoids paying him the slightest attention, thereby avoiding feeding into the very source of his "art": attention.
In the second case, Video-Cinema Films, Inc. v. Lloyd E. Rigler-Lawrence E. Deutsch Foundation (Judge Buchwald), defendant was a nonprofit company that prepared and distributed a program called "Classic Arts Showcase," principally to public television and cable channels. Plaintiff was a licensor of audiovisual works. The fair use claim involved an excerpt of a performance by opera singer Lily Pons of "The Bell Song" in an old movie, "Carnegie Hall." The movie is 136 minutes long. Ms. Pons' performance was 5 minutes and 8 seconds long. Defendant used one minute and 25 seconds from Ms. Pons performance, preceded by an interview with opera singer Marilyn Horne and a voice over by her for the first 25 seconds of the performance.
In granting summary judgment to plaintiff, Judge Buchwald noted defendant's status as nonprofit organization and that the use in particular had an educational purpose. Factor one, defendant. The nature of the work was fictional, the court rejecting defendant's absurd argument that the performance was "factual" because Ms. Pons actually performed. (What is with such stupid arguments lately in fair use cases, in which obviously creative works are claimed to be factual?). Factor two, plaintiff. The amount taken was tiny. Factor three, defendant. Defendant's use clearly did not supplant the market for the movie, but because plaintiff licensed us of its clips, Judge Buchwald held that defendant's unauthorized use would "erode the market value" for the clip. Factor four, plaintiff.
A two-two tie, numerically, but the fourth factor tipped the scale to plaintiff.
Koons, Classic Arts Showcase, Koons, Classic Arts Showcase, who would have thought?
If the White Sox can win the World Series, Jeff Koons can win a fair use case, and he did in Blanch v. Koons, S.D.N.Y. (Judge Stanton). The suit involved well-known fashion photographer Andrea Blanch, who did an advertisement for Gucci silk sandals, run in the August 2000 issue of Allure Magazine. Koon's painting Niagara was the alleged infringer. (Here's a link to a site with other Koons works).
Ms. Blanch's photo showed a woman's bare legs below the knees crossed at the ankles, resting on the knee of a man. She is, of course, wearing Gucci sandals which have an ornately jeweled strap. As Judge Stanton put it, "[o]ne of the sandals dangles saucily from her toes."
Unlike other works of Koons, such as his infamous "Puppies," which infringed a photograph by turning it into a three-dimensional sculpture with minimal additions, "Niagara" is genuinely transformative: Koons (or actual painters?) copied only portions of the photograph as one component of the painting, changed the perspective, and added Salavador Dali-like elements.
One need not pay the slightest attention to Koons' representations about what he set out to do to see that "Niagara" uses the work in a transformative manner. Indeed, not paying any attention to what Koons says has two signal values: (1) from a legal standpoint, one cannot as easily get enmeshed in debates about judges judging art: you merely look at his work to see if it is, objectively, transformative. I think Blanch was a transformative use and Puppies not. Second, by ignoring Koons's remarks, one also avoids paying him the slightest attention, thereby avoiding feeding into the very source of his "art": attention.
In the second case, Video-Cinema Films, Inc. v. Lloyd E. Rigler-Lawrence E. Deutsch Foundation (Judge Buchwald), defendant was a nonprofit company that prepared and distributed a program called "Classic Arts Showcase," principally to public television and cable channels. Plaintiff was a licensor of audiovisual works. The fair use claim involved an excerpt of a performance by opera singer Lily Pons of "The Bell Song" in an old movie, "Carnegie Hall." The movie is 136 minutes long. Ms. Pons' performance was 5 minutes and 8 seconds long. Defendant used one minute and 25 seconds from Ms. Pons performance, preceded by an interview with opera singer Marilyn Horne and a voice over by her for the first 25 seconds of the performance.
In granting summary judgment to plaintiff, Judge Buchwald noted defendant's status as nonprofit organization and that the use in particular had an educational purpose. Factor one, defendant. The nature of the work was fictional, the court rejecting defendant's absurd argument that the performance was "factual" because Ms. Pons actually performed. (What is with such stupid arguments lately in fair use cases, in which obviously creative works are claimed to be factual?). Factor two, plaintiff. The amount taken was tiny. Factor three, defendant. Defendant's use clearly did not supplant the market for the movie, but because plaintiff licensed us of its clips, Judge Buchwald held that defendant's unauthorized use would "erode the market value" for the clip. Factor four, plaintiff.
A two-two tie, numerically, but the fourth factor tipped the scale to plaintiff.
Koons, Classic Arts Showcase, Koons, Classic Arts Showcase, who would have thought?
Friday, November 04, 2005
Statutory Damages
A recent decision from a federal court in Arizona, Coogan v. Avnet, Inc., 2005 WL 2789311 (D. Az. October 24, 2005), raises the pesky issue of multiple awards of statutory damages. Here's what the statute says:
(c) Statutory Damages. -
(1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.
Unlike the 1909 Act, which permitted awards based on the number of infringing copies, the 1976 Act bases awards on the number of works, a fundamental shift: if a novel is infringed by selling 5 million copies, there is only one award (although here most likely actual damages would be sought).
It is the final sentence of Section 504(c)(1) that is of interest: "For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work." This provision is intended to further the fundamental shift from infringing copy to work: without the final sentence, one could multiply the number of awards, say in the case of an encyclopedia, by basing the award on each entry, or, for works that are frequently updated, by claiming infringement of each revision.
In the MP3.com litigation, the question of a per track or per CD award was also raised, and there are many permutations, such as: (1) each track is owned by plaintiff who also owns the CD; (2) some tracks are owned by different parties from the owner of copyright in the CD; (3) the underlying musical composition is owned by a different party; (4) the underlying musical composition is owned by the same party as owns the sound recording. Careful scrutiny of Judge Rakoff's laconic opinions is necessary to sort these permutations out.
Questions also arise due to the lack of a definition of the term "work" in Section 504(c)(1), an omission that occurred probably because Congress thought such a definition unnecessary, especially in light of the final sentence. In Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir. 1990), the court created the "live their own copyright life" approach as a way to separate out claims on what were clearly derivative versions of Mickey and Minnie Mouse. Characters as characters aren't registrable.
Other issues will arise with a TV series: is every season of "Curb Your Enthusiasm" a single work or is each show the work? One thing is clear from the legislative history and that is that how a work is registered is not determinative of the number of awards. This is so because one can get multiple derivative work registrations. But what if one avails oneself of the ability to register on a single form a large collection of photographs as a group? Is this collection a "compilation" for Section 504(c)(1) purposes, or is it merely administrative convenience? That was the issue in Coogan.
The conditions for group registration of photographs are spelled out in Copyright Office instructions linked here. The issue of registration for photographs was a hot one in 1993 and 1994 during the debates on the Copyright Reform Act of 1993. Thereafter, the Copyright Office worked together with photographers to solve the very difficult issues raised by the fact of photographers taking so many pictures a year.
The photographs in Coogan involved a single photographer, a single subject, and a single location (the CEO of a company), something the court seemed to find dispositive, but I don't. Unlike Powell, where there was a single work that was then varied, each photograph in Coogan should be regarded as a separate work (a new way to look at the subject); the fact of a single registration was for administrative purposes, not because the photographs were regarded as a collection. This is not to say there cannot be cases where a single award for a group of photographs is not appropriate, merely that Coogan is not such a case. Coogan undermines the Office's laudable efforts, achieved after much work.
(c) Statutory Damages. -
(1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.
Unlike the 1909 Act, which permitted awards based on the number of infringing copies, the 1976 Act bases awards on the number of works, a fundamental shift: if a novel is infringed by selling 5 million copies, there is only one award (although here most likely actual damages would be sought).
It is the final sentence of Section 504(c)(1) that is of interest: "For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work." This provision is intended to further the fundamental shift from infringing copy to work: without the final sentence, one could multiply the number of awards, say in the case of an encyclopedia, by basing the award on each entry, or, for works that are frequently updated, by claiming infringement of each revision.
In the MP3.com litigation, the question of a per track or per CD award was also raised, and there are many permutations, such as: (1) each track is owned by plaintiff who also owns the CD; (2) some tracks are owned by different parties from the owner of copyright in the CD; (3) the underlying musical composition is owned by a different party; (4) the underlying musical composition is owned by the same party as owns the sound recording. Careful scrutiny of Judge Rakoff's laconic opinions is necessary to sort these permutations out.
Questions also arise due to the lack of a definition of the term "work" in Section 504(c)(1), an omission that occurred probably because Congress thought such a definition unnecessary, especially in light of the final sentence. In Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir. 1990), the court created the "live their own copyright life" approach as a way to separate out claims on what were clearly derivative versions of Mickey and Minnie Mouse. Characters as characters aren't registrable.
Other issues will arise with a TV series: is every season of "Curb Your Enthusiasm" a single work or is each show the work? One thing is clear from the legislative history and that is that how a work is registered is not determinative of the number of awards. This is so because one can get multiple derivative work registrations. But what if one avails oneself of the ability to register on a single form a large collection of photographs as a group? Is this collection a "compilation" for Section 504(c)(1) purposes, or is it merely administrative convenience? That was the issue in Coogan.
The conditions for group registration of photographs are spelled out in Copyright Office instructions linked here. The issue of registration for photographs was a hot one in 1993 and 1994 during the debates on the Copyright Reform Act of 1993. Thereafter, the Copyright Office worked together with photographers to solve the very difficult issues raised by the fact of photographers taking so many pictures a year.
The photographs in Coogan involved a single photographer, a single subject, and a single location (the CEO of a company), something the court seemed to find dispositive, but I don't. Unlike Powell, where there was a single work that was then varied, each photograph in Coogan should be regarded as a separate work (a new way to look at the subject); the fact of a single registration was for administrative purposes, not because the photographs were regarded as a collection. This is not to say there cannot be cases where a single award for a group of photographs is not appropriate, merely that Coogan is not such a case. Coogan undermines the Office's laudable efforts, achieved after much work.
Thursday, November 03, 2005
A Vexing Antiquarian Problem
I am vexed by an antiquarian problem involving unpublished works in England that perhaps someone can solve. In 1911, the English Parliament abolished all common law copyright; we followed suit in 1976 Act (see earlier posting here). Abolishing rights assumes, probably, that they existed. So, what were common law rights in England before 1911? That's my difficulty.
There are a number of reasons for the difficulty. One is the confused reporting of the votes of the Law Lords in Donaldson v. Beckett in 1774, rejecting the Stationers Company claim that the 1710 Statute of Anne was a mere remedial supplement to common law rights they had and which weren't extinguished, allegedly, by Anne. The confusion is two-fold. I think all agree that the House of Lords (including the full House, not just the Law Lords), held that if there was a common law right in published works, that right was taken away by Anne. Anne, importantly, only protected published works.
The confusion comes from whether the House of Lords also held there was ever a common law, and if so, whether the common right included (1) a right to prevent the authorized printing and distribution of unpublished manuscripts and (2) a right to prevent a third party from distributing copies of printed copies (either authorized by the authors, or owned by the publisher as a result of Stationers' monopoly). In other words, whether the pre-1710 common law (if any) covered both unpublished and published works.
Since Anne only protected published works, were unpublished works protected, and if so, how?Whether Donaldson rejected the existence of a common law right for published works or more narrowly held that it had been supplanted by the Statute of Anne, doesn't seem to me an answer to whether there was a common law right for unpublished works, for two reasons:
(1) unpublished works could have been seen as a different property than printed "copies": using the broad term common law to apply to both manuscripts and printed copies could be eliding important distinctions between the two pre-1710. For example, in the U.S. at least under the 1909 Act, you lost common law by publishing the work, either in an investitive way (gaining federal protection), or divestitively (losing both state and federal protection) where there wasn't a proper notice. Under this view, publication does not change the property right; it either creates a new, statutory right, or it wipes out a different, common law right for the unpublished work. Of course, this distinctly American approach may not reflected conceptual problems in England, but we did inherit the structure from the Brits so our common law judged probably thought they were following their English colleagues.
(2) since Anne didn't apply to unpublished works, one can't tease out of that statute very much if anything about unpublished works: Anne said nothing about unpublished works, meaning either unpublished works weren't protected before Anne and remained unprotected after, or, that unpublished works were protected beforehand and remained so afterwards. I have seen references to a third possibility: that unpublished works weren't protected before Anne, but became protected under the common law as a result of Anne giving protection to published work, as a sort of ancillary necessity. That seems fantastic to me: how could statutory protection for x create common law protection for y. The theory at the least is devoid of any supporting evidence and there is alot of evidence leading up to Anne's adoption.
In the U.S. there were pre-1790 state statutes, at least some of which were repealed when our 1790 Act was passed, and yet, after repeal of the state statutes, the states went ahead and vigorously "applied" common law copyright for almost 200 years. Did the pre-1790 state statutes supplant a preexisting common law that somehow sprang back into existence after repeal of the state statute and even in the face of a federal statute (and note the 1790 federal act did protect manuscripts too). It is possible these statutes continued after the federal statute but my copy of them, from the Copyright Office says, for example re the Connecticut statute "This Act was repealed by Act IX, October session, 1812 of the General Assembly of the State of Connecticut, Book II, October Session, 1812," p. 104." And, even absent a repeal in other statutes, I am unaware of any evidence they continued to do so.
Any thoughts?
There are a number of reasons for the difficulty. One is the confused reporting of the votes of the Law Lords in Donaldson v. Beckett in 1774, rejecting the Stationers Company claim that the 1710 Statute of Anne was a mere remedial supplement to common law rights they had and which weren't extinguished, allegedly, by Anne. The confusion is two-fold. I think all agree that the House of Lords (including the full House, not just the Law Lords), held that if there was a common law right in published works, that right was taken away by Anne. Anne, importantly, only protected published works.
The confusion comes from whether the House of Lords also held there was ever a common law, and if so, whether the common right included (1) a right to prevent the authorized printing and distribution of unpublished manuscripts and (2) a right to prevent a third party from distributing copies of printed copies (either authorized by the authors, or owned by the publisher as a result of Stationers' monopoly). In other words, whether the pre-1710 common law (if any) covered both unpublished and published works.
Since Anne only protected published works, were unpublished works protected, and if so, how?Whether Donaldson rejected the existence of a common law right for published works or more narrowly held that it had been supplanted by the Statute of Anne, doesn't seem to me an answer to whether there was a common law right for unpublished works, for two reasons:
(1) unpublished works could have been seen as a different property than printed "copies": using the broad term common law to apply to both manuscripts and printed copies could be eliding important distinctions between the two pre-1710. For example, in the U.S. at least under the 1909 Act, you lost common law by publishing the work, either in an investitive way (gaining federal protection), or divestitively (losing both state and federal protection) where there wasn't a proper notice. Under this view, publication does not change the property right; it either creates a new, statutory right, or it wipes out a different, common law right for the unpublished work. Of course, this distinctly American approach may not reflected conceptual problems in England, but we did inherit the structure from the Brits so our common law judged probably thought they were following their English colleagues.
(2) since Anne didn't apply to unpublished works, one can't tease out of that statute very much if anything about unpublished works: Anne said nothing about unpublished works, meaning either unpublished works weren't protected before Anne and remained unprotected after, or, that unpublished works were protected beforehand and remained so afterwards. I have seen references to a third possibility: that unpublished works weren't protected before Anne, but became protected under the common law as a result of Anne giving protection to published work, as a sort of ancillary necessity. That seems fantastic to me: how could statutory protection for x create common law protection for y. The theory at the least is devoid of any supporting evidence and there is alot of evidence leading up to Anne's adoption.
In the U.S. there were pre-1790 state statutes, at least some of which were repealed when our 1790 Act was passed, and yet, after repeal of the state statutes, the states went ahead and vigorously "applied" common law copyright for almost 200 years. Did the pre-1790 state statutes supplant a preexisting common law that somehow sprang back into existence after repeal of the state statute and even in the face of a federal statute (and note the 1790 federal act did protect manuscripts too). It is possible these statutes continued after the federal statute but my copy of them, from the Copyright Office says, for example re the Connecticut statute "This Act was repealed by Act IX, October session, 1812 of the General Assembly of the State of Connecticut, Book II, October Session, 1812," p. 104." And, even absent a repeal in other statutes, I am unaware of any evidence they continued to do so.
Any thoughts?
Wednesday, November 02, 2005
Two Events in November
There are two events coming up this month in New York City that may be of interest, and in which I am participating. The first is on November 10th from 6 p.m. to 8:45 pm at the Association of the Bar of New York, 42 West 44th. The topic is "Transforming Arts: Fair Use Issues." The panelists include Larry Lessig, myself, an art crictic for the New York Times, a professor of modern art, chief curator of the International Center of Photography, and President of the Andy Warhol Assocation. Many of the fair use issues covered in previous postings will be discussed. Here's a link to the program.
On November 18th, there will be a day long (9 to 5) IP conference at Fordham Law School. I will present the origins of the bootleg statute and there will be four folks, some of whom may be attacking me ruthlessly Here's the link: http://law.fordham.edu/event.ihtml?id=5147&back=home&template=cal
and the program description of the copyright part (there are also trademark and patent segments):
"The copyright panel will examine the role the Constitution should play and has been judicially interpreted to play on the ability of Congress to provide protection for original works of authorship and their performances. The panel will discuss Supreme Court and lower court cases. It will focus on the recent KISS Catalog and Martignon cases, in which district courts in California and New York found the federal Anti-Bootlegging statutes to be unconstitutional. The opinions in these two cases raise directly the question of what limits the Copyright and Patent Clause imposes and what role, if any, may the Commerce Clause play? These cases have broad implications, not only for question of what power Congress has to determine intellectual property policy, but also on the ability of the U.S. to comply with existing international obligations or to ratify new ones under TRIPs and other multilateral and bilateral agreements. William F. Patry, Thelen, Reid & Priest (New York)Panelists and Commentators:Robert W. Clarida, Cowan, Liebowitz and Latman (New York)Kenneth Doroshow, Vice President of Legal Affairs, Recording Industry Association of America (Washington)Jane C. Ginsburg, Professor, Columbia University School of Law (New York)Marjorie Heins, Brennan Center for Justice, Free Expression Policy Project (New York)David Patton, Federal Defender Office, Southern District of New York (New York)Moderator:Hugh C. Hansen, Professor, Fordham University School of Law (New York)."
On November 18th, there will be a day long (9 to 5) IP conference at Fordham Law School. I will present the origins of the bootleg statute and there will be four folks, some of whom may be attacking me ruthlessly Here's the link: http://law.fordham.edu/event.ihtml?id=5147&back=home&template=cal
and the program description of the copyright part (there are also trademark and patent segments):
"The copyright panel will examine the role the Constitution should play and has been judicially interpreted to play on the ability of Congress to provide protection for original works of authorship and their performances. The panel will discuss Supreme Court and lower court cases. It will focus on the recent KISS Catalog and Martignon cases, in which district courts in California and New York found the federal Anti-Bootlegging statutes to be unconstitutional. The opinions in these two cases raise directly the question of what limits the Copyright and Patent Clause imposes and what role, if any, may the Commerce Clause play? These cases have broad implications, not only for question of what power Congress has to determine intellectual property policy, but also on the ability of the U.S. to comply with existing international obligations or to ratify new ones under TRIPs and other multilateral and bilateral agreements. William F. Patry, Thelen, Reid & Priest (New York)Panelists and Commentators:Robert W. Clarida, Cowan, Liebowitz and Latman (New York)Kenneth Doroshow, Vice President of Legal Affairs, Recording Industry Association of America (Washington)Jane C. Ginsburg, Professor, Columbia University School of Law (New York)Marjorie Heins, Brennan Center for Justice, Free Expression Policy Project (New York)David Patton, Federal Defender Office, Southern District of New York (New York)Moderator:Hugh C. Hansen, Professor, Fordham University School of Law (New York)."
Tuesday, November 01, 2005
Robots, Space Aliens and Estoppel
Here is a delightful story from Today's NY Times Arts section by Edward Wyatt that raises some interesting copyright questions (I have provided the internal link to the site mentioned):
The Story:
As a comedian, actor and satirist, Chris Elliott has made a career out of blurring the line between truth and absurdity. As a novelist, he has unintentionally fuzzied things further by falling for an online spoof and incorporating a fictional robot into his book as a historical figure. Boilerplate and his creator, Archibald Campion, from bigredhair.com.
Now, Mr. Elliott finds himself in a comic nightmare, bending over backward to avoid being accused of a comedian's cardinal sin - lifting someone else's joke - and agreeing to a financial settlement with the robot's creator to head off potential litigation.
"The Shroud of the Thwacker," Mr. Elliott's debut novel, published in October by Miramax Books, tells the tale of Jack the Jolly Thwacker, a serial killer terrorizing New York in the late 1800's. A spoof of period mysteries like Caleb Carr's "Alienist," the book also nods to the thrillers of Patricia Cornwell and, perhaps inevitably, to "The Da Vinci Code."
But it does so in characteristic Elliott fashion, mixing historical figures like Teddy Roosevelt, here seen as a disturbingly flatulent mayor of New York (a wink at those who know that Roosevelt was a police commissioner of New York, but never mayor), with fictitious creations like the police chief, Caleb Spencer. Some inhabit a kind of time-warped middle ground, like an intrepid reporter named Liz Smith who writes for a paper called The Evening Post and a time-traveling investigator named Chris Elliott.
To his satirical 19th-century mix of gas-powered wooden cellphones and imagined New York landmarks like the original Ray's Pizzeria, Mr. Elliott adds a minor but intriguing character named Boilerplate, a robot said to be developed by the inventor Archibald Campion in the late 1800's. According to a deliciously detailed Internet site that tracks the robot's history (bigredhair.com), Boilerplate was designed to replace humans in combat; it took part in Roosevelt's campaign at San Juan Hill, joined the hunt for Pancho Villa, and fought in and, ultimately, disappeared during World War I.
But in fact, Boilerplate never was. It is the creation of Paul Guinan, an illustrator and graphic novelist in Portland, Ore., who with his wife, Anina Bennett, is the author of "Heartbreakers Meet Boilerplate," published in July by IDW Publishing.
In an interview, Mr. Guinan (pronounced GUY-nan) said he learned of Boilerplate's inclusion in Mr. Elliott's novel when he read a local newspaper article last month about a promotional appearance by Mr. Elliott in Oregon.
In the acknowledgments section of his book, Mr. Elliott says that Boilerplate came to his attention thanks to research performed by his brother, Bob Elliott Jr. "You can't make up something like 'Boilerplate,' " Mr. Elliott writes. "Well you can, but it's a lot easier when your brother just shows you a picture of it."
Soon, Mr. Elliott heard from friends of Mr. Guinan, who said that he was considering legal action for the "fairly blatant and quite unauthorized" lifting of a copyrighted character.
Mr. Elliott, who is scheduled to give a reading tonight at 7 at the Barnes & Noble at 4 Astor Place in Manhattan, said in an interview that he knew Boilerplate was some kind of a spoof. But, he said, he thought it was a 19th-century spoof, not a postmodern, post-dated parody of a hoax.
"I knew something like that could not exist," he said. "It was an innocent mistake, and I felt like such an idiot. It made me feel like less of an idiot that the background information he gives on his Web site is fairly convincing."
Mr. Elliott said he did find a bit of humor in the episode: "I think it's really kind of funny. The whole thing about this book is that I did almost no research for it, and the one little bit of research I did I got wrong."
Mr. Elliott, it turns out, is not the first person to be caught in Boilerplate's net. The Boilerplate site's digitally altered period photographs have roped in a number of victims, including various students of robotics who have asked technical questions about Boilerplate's means of propulsion and other historical details.
Mr. Guinan said on Saturday that Mr. Elliott had agreed to pay him a percentage of his earnings from the book and would credit Mr. Guinan's creation in future editions. The two negotiated a settlement themselves, both said, sharing a desire to keep lawyers out of it. They were both surprised, they said, that at no point in the publication process did anyone at Miramax raise questions about the legal standing of Boilerplate.
Judy Hottensen, publisher of Miramax Books, said the company had lawyers look at the manuscript, given that the story included real-life characters. "But it has things like wooden cellphones powered by gas, and all this other crazy wacky stuff," she said. "The robot just didn't hit the radar screen."
END OF STORY
There are at least two interesting issues here. The first and obvious one is spoofing a spoof, and the fair use possibilities where, like the original spoof, the spoof of the spoof is transformative and in the same way. Mr. Elliott's being taken in (are all comics that gullible?) of course adds a different twist. The second issue is what is sometimes called factual estoppel: If someone represents something as being true, as being factual, are we free to taken the person at their word and use it as a fact, or should a court (hearing the ultimate dispute) exercise, well, judgment: "You may say that the book was written by Oliver, a space alien from Thebes, but I don't think so;" or, "You may say every word in your 1,000 book on Wyatt Earp is factual, but I don't think so." It is a dilemma: do we say that people should make the bed they lie in, or should use common sense? Do we save Paul Guinan (the creator of the fictional robot history) from himself, in other words?
The Story:
As a comedian, actor and satirist, Chris Elliott has made a career out of blurring the line between truth and absurdity. As a novelist, he has unintentionally fuzzied things further by falling for an online spoof and incorporating a fictional robot into his book as a historical figure. Boilerplate and his creator, Archibald Campion, from bigredhair.com.
Now, Mr. Elliott finds himself in a comic nightmare, bending over backward to avoid being accused of a comedian's cardinal sin - lifting someone else's joke - and agreeing to a financial settlement with the robot's creator to head off potential litigation.
"The Shroud of the Thwacker," Mr. Elliott's debut novel, published in October by Miramax Books, tells the tale of Jack the Jolly Thwacker, a serial killer terrorizing New York in the late 1800's. A spoof of period mysteries like Caleb Carr's "Alienist," the book also nods to the thrillers of Patricia Cornwell and, perhaps inevitably, to "The Da Vinci Code."
But it does so in characteristic Elliott fashion, mixing historical figures like Teddy Roosevelt, here seen as a disturbingly flatulent mayor of New York (a wink at those who know that Roosevelt was a police commissioner of New York, but never mayor), with fictitious creations like the police chief, Caleb Spencer. Some inhabit a kind of time-warped middle ground, like an intrepid reporter named Liz Smith who writes for a paper called The Evening Post and a time-traveling investigator named Chris Elliott.
To his satirical 19th-century mix of gas-powered wooden cellphones and imagined New York landmarks like the original Ray's Pizzeria, Mr. Elliott adds a minor but intriguing character named Boilerplate, a robot said to be developed by the inventor Archibald Campion in the late 1800's. According to a deliciously detailed Internet site that tracks the robot's history (bigredhair.com), Boilerplate was designed to replace humans in combat; it took part in Roosevelt's campaign at San Juan Hill, joined the hunt for Pancho Villa, and fought in and, ultimately, disappeared during World War I.
But in fact, Boilerplate never was. It is the creation of Paul Guinan, an illustrator and graphic novelist in Portland, Ore., who with his wife, Anina Bennett, is the author of "Heartbreakers Meet Boilerplate," published in July by IDW Publishing.
In an interview, Mr. Guinan (pronounced GUY-nan) said he learned of Boilerplate's inclusion in Mr. Elliott's novel when he read a local newspaper article last month about a promotional appearance by Mr. Elliott in Oregon.
In the acknowledgments section of his book, Mr. Elliott says that Boilerplate came to his attention thanks to research performed by his brother, Bob Elliott Jr. "You can't make up something like 'Boilerplate,' " Mr. Elliott writes. "Well you can, but it's a lot easier when your brother just shows you a picture of it."
Soon, Mr. Elliott heard from friends of Mr. Guinan, who said that he was considering legal action for the "fairly blatant and quite unauthorized" lifting of a copyrighted character.
Mr. Elliott, who is scheduled to give a reading tonight at 7 at the Barnes & Noble at 4 Astor Place in Manhattan, said in an interview that he knew Boilerplate was some kind of a spoof. But, he said, he thought it was a 19th-century spoof, not a postmodern, post-dated parody of a hoax.
"I knew something like that could not exist," he said. "It was an innocent mistake, and I felt like such an idiot. It made me feel like less of an idiot that the background information he gives on his Web site is fairly convincing."
Mr. Elliott said he did find a bit of humor in the episode: "I think it's really kind of funny. The whole thing about this book is that I did almost no research for it, and the one little bit of research I did I got wrong."
Mr. Elliott, it turns out, is not the first person to be caught in Boilerplate's net. The Boilerplate site's digitally altered period photographs have roped in a number of victims, including various students of robotics who have asked technical questions about Boilerplate's means of propulsion and other historical details.
Mr. Guinan said on Saturday that Mr. Elliott had agreed to pay him a percentage of his earnings from the book and would credit Mr. Guinan's creation in future editions. The two negotiated a settlement themselves, both said, sharing a desire to keep lawyers out of it. They were both surprised, they said, that at no point in the publication process did anyone at Miramax raise questions about the legal standing of Boilerplate.
Judy Hottensen, publisher of Miramax Books, said the company had lawyers look at the manuscript, given that the story included real-life characters. "But it has things like wooden cellphones powered by gas, and all this other crazy wacky stuff," she said. "The robot just didn't hit the radar screen."
END OF STORY
There are at least two interesting issues here. The first and obvious one is spoofing a spoof, and the fair use possibilities where, like the original spoof, the spoof of the spoof is transformative and in the same way. Mr. Elliott's being taken in (are all comics that gullible?) of course adds a different twist. The second issue is what is sometimes called factual estoppel: If someone represents something as being true, as being factual, are we free to taken the person at their word and use it as a fact, or should a court (hearing the ultimate dispute) exercise, well, judgment: "You may say that the book was written by Oliver, a space alien from Thebes, but I don't think so;" or, "You may say every word in your 1,000 book on Wyatt Earp is factual, but I don't think so." It is a dilemma: do we say that people should make the bed they lie in, or should use common sense? Do we save Paul Guinan (the creator of the fictional robot history) from himself, in other words?
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