Burundi: Copyright Infringer?

The Central African country of Burundi was sued on April 26th in the Central District of California for copyright infringement. Here is a link I created to the complaint, which has pictures of plaintiff's work (a photograph) and the infringing work (paper currency). Burundi is a landlocked country (somewhat smaller than Maryland but with 8 million people) sandwiched between Rwanda, Tanzania, and the Democratic Republic of the Congo. About 90% of the population are subsistence farmers. Exports consist overwhelmingly of coffee and tea. Only 1 in 2 children go to school, and 1 in 10 adults has HIV/AIDS.

According to the CIA Factbook, Burundi's first democratically elected President was assassinated in 1993 after only 100 days in office. This set off widespread violence between Hutu and Tutsi factions, with an estimated 200,000 deaths in 12 years. A power-sharing agreement in 2003 lead to a new constitution and majority Hutu government headed by President Nkurunziza in 2005. Burundi has, it is fair to say, issues, but it is surprising that one of them is infringement by virtue of a blatant, unauthorized reproduction of a photograph on its 10,00 Franc note. (See the pictures in the complaint provided in the above link).

Plaintiff is Kelly Fajack, a freelance photographer who, in March 2002, took a picture of children in a Burundian school. This year, he discovered, much to his amazement, that his photo had been reproduced as the reverse side of the Burundian 10,000 Franc note. Fajack's complaint states: "While Fajack has no desire to punish or force a payment from an impoverished nation, he reasonably suspects the involvement and misconduct of unknown third parties. Because the Republic of Burundi has not responded to requests for official credit, information regarding how they came to use the Photo, and assistance in recovering a reasonable license fee, Fajack brings this action for copyright infringement and negligence."

There are signficicant hurdles to the suit besides the Burundian government's apparent decision to ignore Mr. Fajack: one is the Foreign Sovereign Immunity Act, found in chapter 97 of title 28 USC. Two provisions are relevant, 28 USC 1604, which states that "a foreign state shall be immune from the jurisdiction of the courts of the United States and of the States except as provided in sections 1605 and 1607," and the exceptions in section 1605. Section 1605(2) - which covers commercial activity - is problematic, because while issuing currency might seem like a commercial activity, that activity neither occurred in the United States nor is likely to fairly be said to have a direct effect in the United States: the amount of Burundi 10,000 franc notes circulating in the U.S. must be very very small.

Section 1605(3) covers rights in violation of international law where the property in question" is present in the United States in connection with a commercial activity carried on in the United States by the foreign state." This includes a requirement that the cause of action be based upon the commercial activity in the United States. It is very unlikely this exception applies, for the same reasons given with Section 1605(2).

There is an even more general reason both exceptions are likely to fail, the Supreme Court's opinion in Republic of Argentina v. Weltover, Inc., 504 U.S. 607, 614 (1992), which construed "commercial activity" within the meaning of the exception as the types of activities private parties engage in, something that definitely does not include issuing official currency. See also Saudi Arabia v. Nelson, 113 S.Ct. 1471 (1993).

There have been a tiny number of cases construing the FSIA and copyright infringement. In Leutwyler v. Office of Her Majesty Queen Rania Al-Abdullah, 184 F. Supp.2d 277 (S.D.N.Y. 2001), a photographer was commissioned to take, in Jordan, pictures of the Queen. A dispute broke out and suit was brought in Manhattan. Judge Gerard Lynch, in a very thorough opinion, refused to dismiss the copyright claim based on use of the photograph in the Kingdom's "Jordan Diary," a publication distributed in the United States. That activity was deemed to at least state a cause of action for commercial activity.

In Los Angeles New Service v. Conus Communications Co, Lt. P'ship, 969 F. Supp. 579 (C.D. Cal. 1997), the Canadian Broadcasting Company argued that the FSIA barred suit (the FSIA also covers agents or instrumentalities of a foreign state) for its "unintended and unavoidable" transmission of signals into the United States. The court had no problems in rejecting the CBC's claim, finding it was engaged in commercial activity.

Finally, in Intercontinental Dictionary Series v. de Gruyter,822 F. Supp. 662 (C.D. Cal. 1993), the Australian National University claimed immunity under the FSIA for its compilation of materials for a linguistic dictionary. In a strained interpretation of the statute, the court held that the activity was "academic" not commercial, and dismissed the case.

There is a second, big problem to the suit, namely lack of subject matter jurisdiction. My cursory, non-expert reading of the FSIA is that it is not an independent grant of subject matter jurisdiction, but instead a provision dealing with immunity from suits based on subject matter jurisdiction otherwise established. In the case of the Burundi government, that basis would be the Copyright Act. But the Copyright Act does not apply extraterritorially, at least to activity that was initiated and which occurs wholly overseas. Burundi itself, according to the Copyright Office's Circular 38a is not a member of any international copyright treaty, although it did join the WTO in 1995. One would assume suit in Burundi against the government would be most unlikely. The government should, instead, provide Fajack with the information and credit he has requested.

The DMCA: Successful in What?

On April 26th, the Cato Institute in Washington, D.C. hosted a "policy forum" at which the DMCA was the subject of some discussion by House IP chair Lamar Smith and Democratic member Zoe Lofgren. A brief report of the forum may be found here. According to the report, Representative Smith believes the DMCA has been a "successful law," which has been blamed for "everything under the sun." Consumers, he asserts, are becoming comfortable with digital rights management (DRM) technology; if some go too far in the application of DRMs, "the marketplace will act as a discipline on that behavior with consumers voting with their wallets."

Respectfully, I think a fundamental point is being overlooked: the DMCA is legislation, with both civil and criminal penalties; failure to comply with its provisions is not played out in the marketplace, but in the courts, while the threat of things being playing out in the courts has a very significant impact on how things work out in the marketplace, not naturally, but artifically because of the force of the statute. The PERFORM Act, introduced this week adds to the marketplace distortion (in the economics sense of that term) by proposing to amend Section 114(d)(2)(C)(vi) to require that webcasters use DRMs, irrespective of whether the format already includes the DRM .

I am all for marketplace solutions, and believe that copyright owners have every right to engage in self-help. Consumers can, in a pure marketplace environment shorn of the DMCA, decide with their wallet over such self-help steps, as they did with Sony's effort to prevent copying of its CDs. Nor do I think content owners must sit back while products or services are marketed with the intent and functionality of encouraging copying (one of the legitimate targets of the PERFORM Act). The DMCA, however, is a very big impediment to the marketplace approach Congressman Smith rightly favors.

One could even accept such interference with the marketplace sorting things out if there was an offsetting benefit. Indeed, the DMCA was premised on such an offsetting benefit. Here is what the House Judiciary Committee said about that in 1998: "When copyrighted material is adequately protected in the digital environment, a plethora of works will be distributed and performed over the Internet." H.R. Rep. No. 101-551, pt. 1, 105th Cong., 2d Sess. 19 (1998). Senator Leahy, in his additional views to the Senate Judiciary Committee report, similarly noted: "We must make sure that our copyright laws protect the intellectual property rights of creative works available online in ways that promote the use of the Internet, both by content providers and users." S. Rep. No. 190, 105th Cong., 2d Sess, 65 (1998). A fair and balanced statement, but can we say, 8 years later that there is a plethora of works available rather than a plethora of efforts to increase the level of protection?

The PERFORM ACT

There is a hearing today before the Senate Judiciary Committee on a just introduced bill, S. 2644, called the PERFORM ACT, short for the Platform Equality and Remedies for Rights Holders in Music Act of 2006. Here is a link to the witnesses. There is no text of the bill in the Congressional Record, but hopefully copies will be available through the Committee. The Hollywood Reporter has a story about the bill and hearing in today's issue, at this link.

Without seeing the bill, I can't figure out how it deals with the issue, but the issue itself is easy enough to describe: satellite radio companies like Sirius and XM have marketed devices (like the S-50) that permit consumers to record, store, and archive digital radio programming. In archiving the programming, there are file dividers that permit consumers to separate out parts of the programming, like individual songs. These songs may then be retained and accessed, as on an iPod. Sirius reached a deal on its product, but XM has not. The legislation appears to be an effort to encourage XM to see the error in its ways.

Warner Music Group's charismatic, articulate, and visionary chairman/CEO is quoted in written testimony for today's hearing as using the famous walking, swimming, and quacking duck metaphor for what he regards as a download service. That may be a stretch, but the product's file separation ability is a very active step in encouraging consumers to make copies that would interfere with true downloads through iTunes. One could of course draft legislation limited to music and still permit other uses, but we will have to wait to see the actual bill to make any judgments about the scope of the legislation.

How Copyright is Getting a Bad Name

Last week the Estate of artist Joan Miro demonstrated why copyright has gotten a bad name; not just among those who don't believe in protection at all, but among those, like myself, who have believed that the existence of protection is important and appropriate, and at a fair high level. Marty Schwimmer's Trademark Blog has the pictures and details. The short story is this. Last week, Google, in keeping with an occasional practice of honoring holidays or famous people, temporarily modified its logo on its search page with a stylized version of its name that evoked, but did not copy from Miro's works. When I saw it, I got the point and thought it quite clever and fun. Miro's estate thought otherwise, immediately sending a cease-and-desist letter, claiming copyright and moral rights violations. In my opinion, there was neither. Google did the sensible thing, though, and pulled the logo, to all of our loss.

Through its licensing agent, the Artists Rights Society, the Miro estate is quoted as being "very upset about it." And here is the kicker: the spokesperson is quoted as also saying "A lot of problems could have been alleviated if Google had informed the family first. But I'm not saying the family would have agreed to it." Both remarks sets out well why copyright has gotten a bad name. I guess the problems would have been alleviated by simply saying no. But what is there to be upset about? No Miro work was copied. It was not an attempt to market Miro, but rather to recognize him in a sly, amusing way. It was not a commercial use in any realistic way. This is not the first time the Miro estate has, in my opinion, overplayed its hand. An earlier dispute over Miro and DeChamp typefonts is further illustration of what in my opinion is misuse of the existence of some protection to claim protection that doesn't exist.

Miro died in 1983. Suppressing some uses might have been justifiable (although not Google's) during his life, but not now. In 1994, in the House of Representatives, we rejected lobbying requests by the estates of Tin Pan Alley composers for term extension. I later wrote a law article about it called, in brief "protecting the idle rich." The tragedy is that such unseemly efforts give fodder to those who oppose any protection.

Ding Dong Doha is (Almost) Dead

Newspapers this morning are reporting on WTO's inability to reach a (self-imposed) deadline of April 30th to reach agreement on the latest round of GATT talks, the Doha Round. The Doha round is not dead yet, but the divisions between the U.S and Europe, among other rifts (like North/South), are sharp. In terms of IP, much more emphasis has been placed on patents than copyrights, especially pharmaceutical patents in the healthcare industry. In 2004, the WTO published a book of essays edited by the other Michael Moore, called Doha and Beyond: The Future of the Multilateral Trading System. I am increasingly alarmed by how copyright laws are made. Domestically, one can complain that since 1995 copyright legislation has almost entirely been written "off the Hill," although I commend Chairman Lamar Smith for his more active approach. As bad as things were in the aftermath of 1995, at least those disagreeing had the possibility of persuading their elected officials to step in. Since 1996, however, in the WTO copyright treaties, a dangerous route has been taken of having what will become domestic legislation negotiated in the context of a treaty. Congress is then presented with a fait accompli. Those involved in such international efforts are a very small group and in no way represent the public interest. The negotiating is done in private and may be over before one hears about the latest proposal. Those outside the group and objecting are left with the impossible task of attempting to get the same Administration that negotiated the deal not to ratify the treaty or to attempt to get Congress not to pass implementing legislation. It should not be forgotten that the DMCA anti-circumvention and rights management provisions first surfaced in the Clinton Administration's Information Superhighway White Paper that was DOA before Congress. The recommendations were then shipped by the same Executive Branch over the big pond where they ultimately came to rest in the WTO treaties. When Congress does get involved early it can help shape the ultimate result or even reject it, as happened with the Washington Semiconductor Chip treaty, where IP subcommittee chair Congressman Bob Kastenmeier played a very active role in the treaty's negotiation and in the U.S. government's refsual to ratify it. It is not only copyright laws that are becoming globalized, but the process of enacting them and the last of these may be the most dangerous.

Draft Criminal Bill; DaVinci Code

The House of Representatives' IP subcommittee has circulated a draft bill, initiated, I believe with the DOJ to increase, yet again, the penalties for criminal infringement. Here is a link I have created to the bill. Those interested in the matter have the opportunity to get your two cents in early in the game.

The New York Post, getting momentarily over its obsession with Angelina Jolie (those lips!), reports that the Second Circuit has affirmed Judge Daniels' finding that Dan Brown's book did not infringe Lewis Perdue's. Here's a link to the earlier posting on it. Here is the opinion:

UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED that the judgment of the district court be and it hereby is AFFIRMED.This appeal involves a copyright infringement action between Appellant Lewis Perdue (hereinafter “Appellant” or “Perdue”), author of two novels, The Da Vinci Legacy (1983) and Daughter of God (2000), and Appellees Dan Brown, Random House, Inc., and several associated entertainment companies (collectively “Appellees”), who respectively wrote, published, and made into a movie, the best-selling fiction novel The Da Vinci Code (2003).FN1 After Appellant publicly alleged that Appellee Brown had, without permission, appropriated content from his two novels in creating The Da Vinci Code, Appellees filed suit against Perdue in federal court, seeking a declaratory judgment that they had not engaged in copyright infringement. Appellant promptly counterclaimed against Brown, his publisher, and the movie studios, seeking injunctive relief and $150 million in damages. In response to motions for judgment on the pleadings and summary judgment, the District Court for the Southern District of New York (Daniels, J.) ruled in Appellees' favor, granting declaratory relief to Appellees and dismissing all of Appellant's claims. We assume the parties' familiarity with the facts, procedural history, and scope of issues on appeal, which we reference only as necessary to explain our decision.FN2
FN1. On appeal to us, Appellant claims that The Da Vinci Code “plagiarized primarily” from Daughter of God, and, “to a lesser extent,” from The Da Vinci Legacy. Appellant's brief does not, however, develop his allegation of copyright infringement on the basis of The Da Vinci Legacy, and both parties treat this claim as essentially abandoned. We therefore only consider Appellant's copyright infringement claim on the basis of Daughter of God.
FN2. For a thorough summary of Daughter of God and The Da Vinci Code (which are the principal subjects of this litigation), see Brown v. Perdue, 2005 WL 1863673, No. 04 Civ. 7417(GBD) (S.D.N.Y. Aug. 4, 2005).
We review de novo the district court's grant of summary judgment in favor of Appellees. Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1071 (2d Cir.1992). Summary judgment is appropriate only when “there is no genuine issue as to any material fact and ··· the moving party is entitled to a judgment as a matter of law.”Fed.R.Civ.P. 56(c). A court must decide if “the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986).To establish copyright infringement, “two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ'n, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). In the case before us, the parties do not dispute that Appellant obtained valid copyrights for his books. Appellant therefore needs only to demonstrate that Appellees copied original, constituent elements of his books. In the absence of direct evidence, copying may be established by showing “(a) that the defendant had access to the copyrighted work and (b) the substantial similarity of protectible material in the two works.” Kregos v. Associated Press, 3 F.3d 656, 662 (2d Cir.1993); see also Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir.1992) (stating that a plaintiff must prove both “access and substantial similarity between the works” (internal quotation marks omitted)). For purposes of the summary judgment motion, Appellees have conceded that they had access to Perdue's books. This case therefore turns on the second part of the test: “whether, in the eyes of the average lay observer, [ The Da Vinci Code is] substantially similar to the protectible expression in [ Daughter of God ].” Williams v. Crichton, 84 F.3d 501, 581, 587 (2d Cir.1996).*2 In the case before us, the district court first distinguished between noncopyrightable and copyrightable work, following “a principle fundamental to copyright law,” that “a copyright does not protect an idea, but only the expression of an idea.” Kregos, 3 F.3d at 663 (internal citation omitted); see also Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231, 239-40 (2d Cir.1983) (holding that “[t]he similarity to be assessed must concern the expression of ideas, not the ideas themselves”). As to the copyrightable material in Appellant's books, the court concluded, on the basis of a comparison of “the similarities in such aspects as the total concept and feel, theme, characters, plot, sequence, pace, and setting of the [two sets of books],” that “no reasonable trier of fact could find the works substantially similar.” Williams, 84 F.3d at 587-88 (internal quotation marks omitted). On that basis, the court granted summary judgment in favor of Appellees. Having considered the matter de novo, we now affirm the decision below for substantially the reasons given by the district court.FN3
FN3. The district court also decided that Appellant's unjust enrichment claims were preempted by federal copyright law, and therefore dismissed those state law claims. Appellant did not appeal that decision to us. As a result, the question of whether all state law claims of unjust enrichment are preempted by federal copyright law is not before us. See Perez v. Hoblock, 368 F.3d 166, 171 (2d Cir.2004) (issues not raised on appeal are deemed abandoned); see generally Arthur R. Miller, Common Law Protection for Products of the Mind: An “Idea” Whose Time Has Come, 119 Harv. L.Rev. 703 (2006) (discussing the scope of federal preemption of state law claims under the 1976 Copyright Act).
We have considered all of Appellant's arguments and find them to be without merit. The judgment of the district court is hereby AFFIRMED.

Compilations and Statutory Damages

The Second Circuit handed down yesterday an important opinion on the calculation of statutory damages involving compilations. The case is WB Music Corp. v. RTV Communication Group, Inc., 2206 WL 1014089 (2d Cir. April 19, 2006). A slightly edited version of the opinion, deleting extraneous matter is reproduced below. In the Mp3.com cases as well as others, there was a claim that for calculation of statutory damages, the number of infringing works was the number of tracks. Judge Rakoff rejected this argument, at least in the case of a sound recording claim. Things get more complicated when a musical work is also involved, as well as when different owners. The statutory language is seemingly explicit in Section 504(c)(1): "for purposes of this subsection, all the parts of a compilation or derviative constitute one work."

The WB case involved a reverse fact pattern from the MP3.com cases: in WB the compilation was itself an infringing creation; in other words, the copyrighted works were not copied from a compilation, but were rather compiled, without permission, by the defendant. The trial court had held that this was a distinction without a difference, and made a single award per compilation. (There were seven infringing compilations using 13 works of plaintiffs). The court of appeals, per Chief Judge Walker, agreed that the statute was facially ambiguous, but reversed based on its Twin Peaks case. But even without Twin Peaks, the decision is correct: the statute was intended to prevent multiple awards from a single authorized compiled work, and was not intended to permit infringers to limit copyright owners' damage awards through the simple expedient of creating unauthorized works.

Here is the opinion:


WB MUSIC CORP. v. RTV COMMUNICATION GROUP, INC.

Before: WALKER, Chief Judge, FEINBERG and STRAUB, Circuit Judges.

JOHN M. WALKER, JR., Chief Judge.

The plaintiffs-appellants in these consolidated cases appeal from final judgments of the United States District Court for the Southern District of New York (John F. Keenan, Judge ) awarding them statutory damages for copyright infringement pursuant to 17 U.S.C. § 504(c). The district court computed statutory damages based on seven “compilations,” in the form of compact discs prepared by the defendants, that infringed the copyrights in thirteen separate works owned by the plaintiffs. We hold that, for purposes of statutory damages under § 504(c), a compilation created without authorization from the owners of the separate, infringed copyrights in its constituent parts is not a compilation contemplated by the last sentence of § 504(c)(1), which states that “[f]or the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.” We vacate the judgments of the district court and remand these cases for the district court to recalculate the amount of statutory damages.


BACKGROUND

The plaintiffs-appellants, music publishers who own copyrights in musical compositions, sued the defendants-appellees for copyright infringement. The three complaints in the cases now on appeal alleged that (1) the two corporate defendants made and distributed copies of seven compact-disc (“CD”) products containing songs that infringed the plaintiffs-appellants' copyrights in thirteen musical works and (2) defendant Robert W. Schachner was the president of the corporate defendants and guided their illegal activities. When the defendants defaulted, the district court entered default judgments that referred the cases to a magistrate judge for a hearing on damages.

At the hearing, the plaintiffs elected to recover statutory damages as provided by 17 U.S.C. § 504(c). The magistrate judge concluded that the infringement was willful, allowing the recovery of increased statutory damages, and he then computed the amount of recommended statutory damages with reference to copyright case law. The plaintiffs and defendants both timely objected to the magistrate judge's report. The plaintiffs argued that the magistrate judge erroneously interpreted copyright law in computing the amount of statutory damages, but the district court disagreed and adopted the magistrate judge's report in its entirety. The defendants argued that the infringement was not willful or in bad faith, a position that the district court rejected. The district court entered judgments against the defendants jointly and severally. This timely appeal followed.

DISCUSSION

The district court awarded statutory damages under 17 U.S.C. § 504(c). The version of that statute that governs this appeal provides in subsection (c)(1) that the copyright owner may elect ··· to recover ··· 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 $500 or more than $20,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.
17 U.S.C. § 504(c)(1) (1994).

… The district court, adopting the magistrate judge's report and recommendation, interpreted § 504(c)(1) as providing one statutory damage award for each of the defendants' CD products that contained one or more infringing songs.

This interpretation was in error. We do not think that the district court failed to understand the general principle that “the total number of awards of statutory damages that a plaintiff may recover in any given action depends on the number of works that are infringed and the number of individually liable infringers, regardless of the number of infringements of those works.” Venegas-Hernandez v. Sonolux Records, 370 F.3d 183, 192-93 (1st Cir.2004) (quoting Mason v. Montgomery Data, Inc., 967 F.2d 135, 143-44 (5th Cir.1992)) (emphasis and quotation marks omitted); accord Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1381 (2d Cir.1993); Walt Disney Co. v. Powell, 897 F.2d 565, 569 (D.C.Cir.1990).FN3 As these courts have noted, § 504(c)(1) disassociates the award of statutory damages from the number of infringements by stating that “an award” (singular tense) of statutory damages is available for “all infringements involved in the action” regarding any one work.

Rather, the district court appears to have concluded that, even though there were thirteen copied works and thus thirteen infringed copyrights, the last sentence of § 504(c)(1) required the court to award only seven statutory damage awards, one for each of the defendants-appellees' CD products. That sentence provides that “[f]or the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.”17 U.S.C. § 504(c)(1). The district court must have believed that if two or more of the plaintiffs' copyrighted works were included by the defendants on a single CD, that CD was a “compilation” that constituted only one work for purposes of computing statutory damages.

To be sure, the last sentence of § 504(c)(1) is facially ambiguous as to the question posed here: whether a compilation that infringes multiple separate copyrights and is created without the authorization of the infringed copyrights' owners constitutes “one work.” But this court has already answered that question in the negative. In Twin Peaks Productions v. Publications International, 996 F.2d 1366 (2d Cir.1993), the issue presented was whether eight separately written teleplays of the television show Twin Peaks, illegally copied into one book published by the defendant, id. at 1370-78, constituted eight works or one work for purposes of statutory damages under § 504(c)(1). We held that the defendant's unauthorized compilation of multiple separate copyrights did not trigger the last sentence of § 504(c)(1) and that eight awards, not one award, of statutory damages were warranted. As in Twin Peaks, there is no evidence here that any of the separately copyrighted works were included in a compilation authorized by the copyright owners. Rather, the compilations were created by the defendants. Thus, Twin Peaks is squarely controlling. Each of the plaintiffs' separate copyrighted works constitutes one work for purposes of § 504(c)(1), and accordingly the defendants' infringement of thirteen copyrights by copying thirteen songs onto seven distinct CD products warrants thirteen statutory damage awards. On remand, the district court should allow the plaintiffs-appellants to recover thirteen awards of statutory damages, each in an amount not less than $500 or more than $100,000 as the court considers just. See 17 U.S.C. § 504(c).

FN4. In Twin Peaks, we left open the question whether the “overlapping copyrights” doctrine of Robert Stigwood Group Ltd. v. O'Reilly, 530 F.2d 1096 (2d Cir.1976), survived the passage of the Copyright Act of 1976 because we found ourselves confronted only by the “easy case” in which the infringed copyrights were plainly separate. Twin Peaks, 996 F.2d at 1381. … We need not decide today the vitality of the overlapping-copyrights doctrine because the defendants did not raise this argument and have thus waived it. Norton v. Sam's Club, 145 F.3d 114, 117 (2d Cir.1998).

CONCLUSION

We VACATE the judgments of the district court and REMAND these cases for the district court to recalculate the amount of statutory damages consistent with this opinion.

Richard Eckersley and Book Design

Today's New York Times has an obituary of Richard Eckerlsey, a British graphic designer who put the University of Nebraska Press on the map. Here is an excerpt:

"Mr. Eckersley had been the senior designer at the University of Nebraska Press since 1981, producing hundreds of covers, jackets, interior layouts and promotional posters for scholarly — often abstract — books on modernist and postmodernist theory and criticism, including Louis Aragon's 'Treatise on Style.' Most of Mr. Eckersley's book designs, the design historian Roy R. Behrens said in a 2002 Print Magazine article, 'are characterized by typographic subtlety and restraint.'

A stickler for the finer points of spacing and arranging type, Mr. Eckersley turned out work that was resolutely functional. Yet through consistently meticulous compositions and a preference for bright, flat color, matte paper and minimal ornament, he created a visual identity for the University of Nebraska Press, which often received honors in book shows and design competitions. In 1989, however, Mr. Eckersley made a radical departure from his signature restraint, shaking up the field with his design for Avital Ronell's 'Telephone Book: Technology, Schizophrenia, Electric Speech,' an unorthodox study of Jacques Derrida, Martin Heidegger and the philosophy of deconstruction. This was the first book Mr. Eckersley designed on the computer, using new page-making software programs to interpret the author's complex postmodern ideas typographically.

Although the stark black-and-white cover of this long vertical book was rather quiet, he radically dislodged the interior text from conventional settings, and the book's layout sometimes upstages the text by deliberately impeding the act of reading, which is just what Ms. Ronell wanted. Throughout the book there are unexplained gaps and dislocations between sentences and paragraphs, forcing the reader to work at reading. On one page is a mirror image of the page that faces it. On another, snakelike trails of space that come from careless word spacing (called rivers) are intentionally employed. Some words are blurred to the point of being indecipherable; one line runs into another because of the exaggerated use of negative line-spacing.

Though some adventurous graphic designers were experimenting at the time with idiosyncratic computer type design, this was first attempt to apply a 'deconstructivist style' to a serious book.
Many of the same methods can be found earlier and later in Mr. Eckersley's layouts for Derrida's 'Glas' (1986) and its companion volume 'Glassary' (1986); and, to some extent, they are revisited in his designs for Warren F. Motte Jr.'s 'Questioning Edmond Jabès' (1990), Derrida's 'Cinders' (1991), Blaise Cendrars's 'Modernities and Other Writings' (1992), Eyal Amiran and John Unsworth's 'Essays in Postmodern Culture' (1994), and L. C. Breunig's 'Cubist Poets in Paris' (1995).

Among his design games, Mr. Eckersley regularly toyed with routine copyright pages by transforming them into typographic pictures suggesting the contents of the books."

This is art at very high level, but generally unprotectible under a Copyright Act that will protect shlocky fabric designs, automobile advertisements, and compilations of no note. There may be protection for dust cover art, just like there is for greeting cards and magazine covers, see Roulo v. Russ Berrie & Co., Inc., 886 F.2d 931 (7th Cir. 1989); Allied Mktg. Group, Inc. v. CDL Mktg. Inc., 878 F. 2d 806 (5th Cir. 1989) (possible copyright in format of postcard); Reader's Digest Ass'n v. Conservative Digest, 821 F.2d 800 (D.C. Cir. 1987); Roth Greeting Cards v. United Card. Co., 429 F.2d 1106 (9th Cir. 1970). But see Presby Constr. Co. v. Clavet, 61 SPQ2d 1184 (D.N.H. 2001), but the real problems arise with claims in typeface design, which are unprotectible. See Eltra Corp. v. Ringer, 579 F.2d 294 (4th Cir. 1978); 37 C.F.R. 202.1(e). Here, Mr. Eckersley was a master. Efforts by typeface designers to obtain protection (either through copyright or separate design protection) in the mid-1970s came to naught due to the opposition of book publishers and authors, concerned about injunctions being issued against books where the printer (unbeknownst to them) had used an infringing typeface.

Typeface designers were represented before Congress by the legendary Alan Latman, the greatest copyright lawyer of his day and a man loved and revered by all who knew him. There is copious information about this effort in the 1975 House Hearings on the revision effort, Copyright Law Revision: Hearings on H.R. 2223 before the Subcomm. on Courts, Civil Liberties, and the Administration of Justice of the House Judiciary Comm., 94th Cong., 1st Sess. (1975). Alan's willingness to take on a cause unpopular with his firm's then present and potential future clients was courageous and of a kind one rarely sees these days.

One can appreciate the concerns of authors and book publishers, but still question why their concerns are so markedly different than anyone else's. Typeface designers are not seeking after all, exclusive rights over the letter "A" (or any other letters), but rather for the calligraphic or other graphic expression of an "A." In any event, Mr. Eckersley's art lives on even though he does not.

Reprography

The Librarian of Congress has appointed a "Section 108 Study Group" to reexamine the exceptions in the Copyright Act governing library and archival copying in light of the widespread use of digital media. Section 108 is the principal such exception. Here is a link to the group's home page. The group has held a number of public round tables, most recently on April 14th. Here is a link to the transcripts of those round tables. Here is a link to the group's background papers. The Librarian has stated a desire to make recommendations to Congress by mid-2006, so if you're not already involved, now is the time.

There are a number of other, delightful sources to look at on what is an issue of reprography. Thomas Jefferson, who knew a thing or two about libraries and copying machines, wrote the following in a 1791 letter to Ebenezer Hazard:

"Time and accident are committing daily havoc on the journals deposited in our public offices. The late war has done the work of centuries in this business. The lost cannot be recovered; but let us save what remains: not by vaults and locks which fence them from the public eye and use, in consigning them to the waste of time, but by such multiplication of copies, as shall place them beyond the reach of accident."

This is quoted in a wonderful book by Silvio Bedini, Thomas Jefferson and His Copying Machines (1984). It is published, appropriately by the University of Virginia, in what looks like a vanity cover; my copy, from an Amazon.com reseller came with a commemorative 1993 ticket to Monticello, which I visited a number of times when I lived in DC, and got to see first hand the copying machines Jefferson used for his correspondence. Another, more popular style book is David Owen, Copies in Seconds: Chester, Carlson and the Birth of Xerox Machine (2004). Carlson, a patent lawyer who graduated from New York Law School at night, was an amazing figure, born into abject poverty we rarely see. Owen is a New Yorker staff writer and the book is a great read.

Another and truly astonishing book is Barbara Rhodes and William Streeter, Before Photocopying: The Art and History of Mechanical Copying, 1790-1938 (1999). At 498 pages with thousands of illustrations, this latter book is a must for anyone interested in the subject. William Streeter is a Massachusetts book binder with great technological knoweldge of the field. Barbara Rhodes handles ably the social and cultural issues. A final excellent work is Luis Nadeau’s two volume Encyclopedia of Printing, Photographic, and Photochemical Processes (1990).

Copyright and Analogical Reasoning

In the March 2006 Cornell Law Review (pages 761-774), article entitled "Reasoning by Analogy," Judge Richard Posner takes exception to many points made in a 2005 book by Professor Lloyd Weinreb of the Harvard Law School, Legal Reason and the Use of Analogy in Legal Argument. Aside from the inherent interest presented by issues of how judges decide cases and how lawyers attempt to persuade them to do so, both works discuss three copyright cases under the 1909 Act involving the public performance right: Judge Brandeis's opinion for a unanimous Court in Buck v. Jewell-La Salle Realty Co., 283 U.S. 191 (1917) and Justice Potter Stewart's majority opinions for a sharply divided Court in Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968) and Teleprompter Corp. v. CBS, 415 U.S. 394 (1974).

Buck was a test suit brought by ASCAP to encourage hotels to take a blanket license for retransmission of radio broadcasts to guests' rooms. Buck found liability. Fortnightly and Teleprompter involved the liability of cable systems for retransmitting television broadcasts. They found no liability, but to get there they had to "limit" Buck to its "own facts."

Professor Weinreb regards the three cases as examples of analogical reasoning, and indeed analogies are found in them. In Buck, for example, Justice Brandeis employed an analogy of a live orchestra in the hotel (which clearly required a license) to the retransmission of the radio broadcasts to the guests rooms. Justice Stewart employed an analogy of consumers turning on their television (for which no license is required since it is a private performance, not because it isn't a performance) to find that cable was "like" what consumers did and was not "like" what broadcasters did. Professor Weinreb asserts that none of the opinions engaged in policy-making and that it was the force of the analogies that drove the results, albeit while criticizing the CATV cases for "reconfiguring" the Buck analogy.

Others, like Justice Blackmun later accused Justice Stewart of disguising what the Court was really doing, namely overruling Buck. Judge Posner, as well as other scholars, take a dim view of reasoning by analogy. For critics, analogies depend on an agreement about the principles to be employed in making comparisons, including classification, that is, the criteria by which we will say something should be in class A rather than in class B. That antecedent work is believed to be the "real work" of legal analysis, after which the use of analogies is a form of window dressing or rhetoric to explain a result obtained by other means. As regards Buck, Judge Posner described the opinion as even giving reasoning by analogy a bad name. For Judge Posner:

"Reasoning by analogy as a mode of judicial expression is a surface phenomenon. It belongs not to legal thought, but to legal rhetoric. Weinreb has confused how judges think with how they talk. He had been correct when he had said, at the very outset, that his book would be 'about the arguments that lawyers make in support of their clients and judges make in the course of their opinions.' That is, it would be a book about the rhetoric, not the substance, of the law. (The book's subtitle carries a similar implication.) These are very different things. Reasoning by analogy tends to obscure the policy grounds that determine the outcome of a case, because it directs the reader's attention to the cases that are being compared with each other rather than to the policy considerations that connect or separate the cases."

In Buck, one might say that the real basis for the opinion was a belief that one should encourage efficient licensing of copyrighted works, something ASCAP was providing and indeed provided hotels for the live orchestras. It does seem fairly incredible that the Court thought it was compelled to reach the holding it did because radio transmission was so identical to a live orchestra.

The use of analogy in novel cases, and in many fact specific areas of copyright like fair use, is dubious at best. Their very novelty or ad hoc nature renders meaningful comparisons virtually impossible. Instead, as Judge Posner recommends, courts should do the best they can by applying the policies set forth in the statute (and I would add legislative history); in such a use of analogies are not freewheeling but can serve as "a certain caution in departing from prior rules." If courts get the policy wrong, Congress can intervene, as it did in the 1976 Act, reversing the result in all three of the cases discussed above.

Scope of Registrations

A recent opinion from the Central District of California, Express, LLC v. Fetish Group, Inc., 2006 WL 802294 (C.D. Cal. March 24, 2006), addressed an interesting question: understanding that copyright is automatic and that the ultimate question of copyrightability and the scope of protection is up to the court (or jury), for purposes of the Section 410(c) presumption of validity, is the presumptive effect limited by the statements in the application or by the deposit? The case involved lace and embroidery design for a camisole. At issue was whether the registration covered all protectible aspects of the design in keeping with an application that originally said "garment with lace and embroidery design," or instead whether it covered a narrower scope in keeping with the registration as issued which eliminated "garment with." (There were other changes too).

The court held that "it is the registration that sets the scope for the copyright protection," by which is meant presumptive validity. Plaintiff could still prove up its larger claim but had to do so without the benefit of Section 410(c). A related issue is whether the registration covers material not deposited, as in software, where less than the entirety of the work is deposited to protect trade secrets. My view, which is held I believe by some but not all in the Copyright Office, is that the registration only covers material deposited; after all, the Office cannot examine material not presented to it. Both issues demonstrate attention should be paid to the registration process.

Why Fashion Design is Like a Boat

Fashion Week in New York City provides much fodder for the New York Post and its tabloid rival, the New York Times. In addition to Tom Ford's always bare chest and Jenna Jameson fully clothed, there are the latest collections to oogle over, and of course copy. And it is the copying that caught the attention of four members of the House IP subcommittee (2 Southern Republicans, a Southern Democrat, and a Democrat from Southern Massachusetts), who on March 30th introduced H.R. 5055, which equates haute couture with vessel boat hull design, at least to the extent of proposing to protect the former in chapter of title 17, now reserved for the latter.

The Design Piracy Prohibition Act would create a limited three year sui generis right for fashion designs, defined to include not only outergarments, but also underwear, gloves, footwear, headgear, handbags, purses, tote bags, belts, and eyeglasses.

The fashion industry has been seeking protection since the 1920s. Under the 1976 Act, there have been a few interesting cases, like Galiano v. Harrah's Operating Co., 416 F.3d 411 (5th Cir. 2005)(uniforms), Express, LLC v. Fetish Group, Inc., 2006 WL 802294 (C.D. Cal. March 24, 2006), and the bridal dress cases, Eve of Milady v. Moonlight Design, Inc., 48 USPQ2d 1809 (SDNY 1998), 1998 U.S. Dist. LEXIS 21303 (SDNY Aug. 24, 1998), and Eve of Milady v. Impression Bridal, Inc., 986 F. Supp. 158 (SDNY 1997). In the Eve of Milady cases, protection was extended to the ornamental aspects, and not, at least as I understand them, the three-dimensional shape. That shape (among other things), is what H.R. 5055 is aimed at.

It is very late in this Congress for a new initiative to get legs, as one might say. There is an excellent article by Professors Kal Raustiala and Chris Sprigman, "The Piracy Paradox: Innovation and Intellectual Property in Fashion Design" here from a January 2006 UCLA research paper one can read to bone up on the issues.

The DaVinci Code opinion

I have now had time to read the British High Court opinion in the DaVinci Code case. Here is a link to it. For students of copyright law of all ages, it is a both a fun and informative read. It is also interesting from a comparative view of how British copyright law deals with issues that have long been faced in U.S. copyright law, and it is instructive on the craft of writing judicial opinions. U.S. readers will, I think, be stuck by the degree of skepticism, and sometimes sarcasm directed toward lawyers and witnesses. For example, at the very beginning of the "Legal Matters" section (in a U.S. opinion the section setting forth the applicable legal principles), one encounters:

"137. Fortunately I was told by both parties that there was no significant point of law involved in this case to trouble me.

138. That led to the production of two folders containing only (sic) 20 authorities and the citation of further authorities in the parties' respective closing speeches. My initial feeling on the statements of both Counsel was Timeo Donaos et dona ferentes. I feel having analysed the authorities in light of the submissions that my thought was correct."

By his thought being correct, the judge was referring to the italicized Latin phrase, which may be translated as "I fear the Greeks, even when they bring gifts." What follows is 15 pages of careful review of English case law. In that review, one finds copious quotations from prior opinions on originality, the idea-expression dichotomy, and the standard for infringement of historical works that most U.S. copyright lawyers would be quite comfortable with.

With evdient relish, abuse is heaped on the quality of works, as in this quote from Ravenscroft v. Herbert [1980] RPC 193, where Justice Brightman said: "One must not underestimate the commerical attraction of the rubbish I have attempted to describe. The book is written with much inventiveness and a racy flow of language and incident and the numerous scenes of violence exercise a strong appeal to certain readers. The Defendants' novels have enjoyed great financial success. Mr. Herbert deos not think of himself as a serious novelist."

Justice Smith modestly adds that in the DaVinci Code dispute, he "make[s] no such comments about either book ... as I have not said a quest for truth of speculative conjectures or an exercise in literary criticism of either book."

The failure to call Mr. Brown's wife is held against him, while Mr. Brown is all but called a liar on some points. Not that plaintiffs fared any better: "Mr Baigent was a poor witness. Those are not my words: they are the words of his own Counsel in his written closing submissions. Those words do not in my view do justice to the inadequacy of Mr Baigent's performance." Throughout the 71 page opinion, one gets a very clear impression of the judge's impressions and thought processes on every issue. The only American judge I know of like that is Judge Posner, but his opinions are extremely succinct. The beauty of this approach is that it leads the reader on the path the court itself seems to have taken. It is particularly powerful method of writing.

In the end, the case was a too clever effort to claim protection for a theme, gussied up as a non-literal copying claim, what was called in the old days of software infringement a sequence, structure, and organization claim, the architecture of the work. But plaintiffs could never settle exactly on the nature of their theme, which instead appeared to be ever-shifting to fit a litigation strategy. For all the hype about the trial, it did end with a very worthwhile legal opinion that is well worthy reading carefully.

Dan Brown's Body

As expected, English High Court Justice Peter Smith today found that Dan Brown had not committed infringement in writing The DaVinci Code. Here is a link to a CNN story, and to stories in the following British online newspapers: London Financial Times, the Guardian, and The Independent. Here is a link to the 71 page opinion itself.

One wonders only how it is the case got to trial. The use was, at best of a few ideas or what were described as historical references in the original. Still, there are some who believe Brown engaged in morally reprehensible behavior, as witnessed in this piece in the Times of London yesterday. I don't share that view. One of the many things I miss about Justice O'Connor's departure from the bench is her grasp of the promotion of progress as involving, in equal measure and respect, both protection for copyright owners and for those who want to build on the works of others.

No Fleas on Grokster

On March 31, 2006, Judge Simandle, a federal district judge in New Jersey, handed down a lengthy opinion in Arista Records, Inc. v. Flea World, Inc. The case involved a not unusual set of facts: a flea market rents space to vendors on a flat fee basis, has a policy of not permitting the sale of counterfeit copyrighted works, polices compliance with its rules, but turns a blind eye to the sale of counterfeited products, and has history of raids; in this case, 27 raids from July 1999 t0 May 2003. Defendants claim they had no specific knowledge of infringement and did not directly benefit from infringement by its vendors; liability is found.

What makes the case noteworthy is that it is post-Grokster and addresses some of the issues raised in Grokster outside of the digital environment. On the vicarious infringement claim, the court rejected reliance on the Ninth Circuit's "knowledge of specific acts of infringement," finding it not applicable outside of peer-to-peer software (but not opining if it was still applicable there); on contributory infringement, the court rejected the relevance of an inducement claim outside of the Grokster context. The common law works in strange and wonderful ways.

Smithsonian Showtime Agreement

The New York Times had this article on Saturday, by Edward Wyatt, which I reproduce in its entirety in order to give the discussion its proper context and understanding:

Some of the biggest names in documentary filmmaking have denounced a recent agreement between the Smithsonian Institution and Showtime Networks Inc. that they say restricts makers of films and television shows using Smithsonian materials from offering their work to public television or other non-Showtime broadcast outlets. Ken Burns, whose documentaries "The Civil War" and "Baseball" have become classics of the form, said in an interview yesterday that he believed that such an arrangement would have prohibited him from making some of his recent works, like the musical history "Jazz," available to public television because they relied heavily on Smithsonian collections and curators."I find this deal terrifying," Mr. Burns said in a telephone interview from San Francisco, where he is filming interviews for a documentary on the history of the national parks. "It feels like the Smithsonian has essentially optioned America's attic to one company, and to have access to that attic, we would have to be signed off with, and perhaps co-opted by,that entity."On March 9, Showtime and the Smithsonian announced the creation of Smithsonian Networks, a joint venture to develop television programming.Under the agreement, the joint venture has the right of first refusal to commercial documentaries that rely heavily on Smithsonian collections or staff. Those works would first have to be offered to Smithsonian on Demand,the cable channel that is expected to be the venture's first programming service. A Smithsonian official who is managing the institution's content and production assistance for the venture said yesterday that while the new arrangement did limit the ability of commercial filmmakers to sell some projects elsewhere, it ultimately would affect a small number of the works that draw on the museum's resources."It's not our obligation to help independent filmmakers sell their wares to commercial broadcast and cable networks," said the official, Jeanny Kim, a vice president for media services for Smithsonian Business Ventures."What it boiled down to is that we don't have the financial resources, the expertise or the production capabilities," she added, to continue to provide extensive access to materials but not to reap any financial benefit from the result. She said films that made incidental use of a single interview with a staff member or a few minutes of pictures of elements of the Smithsonian collections would be allowed.The Showtime venture, under which the Smithsonian would earn payments from cable operators that offered the on-demand service to subscribers, comes as the Smithsonian has suffered financial problems. At a Congressional hearing on Wednesday, a Smithsonian official said some necessary repairs to Smithsonian buildings could not be made because of lack of financing. That led to a suggestion by Representative James P. Moran, Democrat of Virginia,to suggest that the institution should charge admission, a proposal that its board of regents has rejected repeatedly.The Showtime agreement began attracting widespread attention this week as filmmakers said they had been told that some of their projects might fall under the agreement. Two Smithsonian curators, who were granted anonymity because they feared for their jobs if they spoke publicly about the Showtime venture, said in interviews yesterday that they could not be certain what kind of projects would be subject to the restrictions because details of the contract with Showtime had been shared with few employees below the executive level. Linda St. Thomas, a Smithsonian spokeswoman, said the details of the contract with Showtime were confidential and would not be released publicly.She said the outlines of the agreement had been left deliberately vague to allow the Smithsonian to consider "on a case-by-case basis" whether a proposed project competes with its new television venture or not. A Showtime executive, Tom Hayden, said the deal was not intended to be exclusionary but was intended to provide filmmakers with an attractive platform for their work. One well-known filmmaker, Laurie Kahn-Leavitt, said she had been told recently by a Smithsonian staff member that her last film, "Tupperware!," a history of the creation and marketing of the venerable food-storage containers, would have fallen under the arrangement, because much of the history of Tupperware is housed at the Smithsonian. The documentary, which won a Peabody Award in 2004, was broadcast on "American Experience," the PBS show produced by WGBH, the Boston public television station."This is a public archive," Ms. Kahn-Leavitt said. "This should not be offered on an exclusive basis to anyone, and it's not good enough that they can decide on a case-by-case basis what they will and won't approve."Margaret Drain, a vice president for national programs at WGBH, said she feared that public television programs like "Nova" and "American Experience"would suffer greatly because of the new restrictions."These are programs that regularly rely on the collections of the Smithsonian Institution," she said. "If access is restricted, we are really going to be in trouble."She added: "I'm outraged that a public institution would do a semi exclusive deal with a commercial broadcaster."

The Smithsonian is not, as I understand it, attempting to exercise any copyright interests. It status on that score is a bit murky, although it is clear that suits against it have to be brought in the Claims Court not in federal district court. Instead, the issue centers on restrictions on access to the physical objects, something that has been discussed in this blog (and elsewhere) before. the effect of the restrictions do seem to point toward a decrease in the creation of new works.