Thursday, August 31, 2006

The 8th Circuit Gets Technical

Section 408(c)(1) provides

The Register of Copyrights is authorized to specify by regulation the administrative classes into which works are to be placed for purposes of deposit and registration, and the nature of the copies or phonorecords to be deposited in the various classes specified. The regulations may require or permit, for particular classes, the deposit of identifying material instead of copies or phonorecords, the deposit of only one copy or phonorecord where two would normally be required, or a single registration for a group of related works. This administrative classification of works has no significance with respect to the subject matter of copyright or the exclusive rights provided by this title.

One might think then that getting a registration in the right class is not such a big deal. In Action Tapes, Inc. v. Mattson, issued yesterday, the Eighth Circuit took a technical approach to the registration issue. Plaintiff created eight graphic embroidery designs. It then fixed those designs on memory cards that were inserted into sewing machines capable of reading the cards and then emebedding the designs on fabric and apparel. Defendant is alleged to have purchased lawfully made memory cards containing plaintiff's designs, and then renting the cards to customers. Plaintiff alleged such rental did not fall within the first sale doctrine of Section 109 because of the computer program exception contained therein. In other words, plaintiff alleged it was the owner of a computer program.

Plaintiff only had visual arts registrations, however, and had made no deposit of software. The court of appeals found "insufficient evidentiary support int he rcords" that the certificates obtained related to a computer program. While this is no doubt correct, a less technical approach, based on Section 408(c) would have been to simply say plaintiff presented no evidence it owned a computer program.


Anonymous said...

An interesting question: Let's say that Action Tapes, after exhausting its appeals, goes back and registers a new set of copyrights specifically in the computer programs. It then files a new infringement action against Mattson. Would that case be barred?

On the language of the opinion, my inclination is to say no, since the court appears to decide that the copyrights at issue only cover the design. (Caveat: I've been out of litigation for years.)

Your "less technical" approach, however, might well be a bar, since the time for presenting evidence of ownership in the computer programs would have passed. I wonder if this had anything to do with the decision.

Anonymous said...

The Court reports that "Action Tapes has assembled a portfolio of graphic embroidery designs which it embeds on disk-like memory cards that enable computer-run sewing machines to stitch the embedded design on fabric and apparel. ... The district court ... conclud[ed] that Action Tapes memory cards contain only data, not computer

You seem to agree with the district court, calling it "a less technical approach," but the difference between "just data" that "enable computer-run sewing machines to stitch the embedded design," and a “set of statements or instructions to be used ... in a computer in order to bring about a certain result" may not be technical but it isn't simple. The "embedded design" is not the graphical work; it's a set of instructions for reproducing the graphical work. If it's not a computer program, what is it?

Action Tapes did not register the copyright in the computer program, and could not maintain an action for infringement of the computer program on that basis. So I don't have any problem with the Court's refusal to apply the computer program exception to the first sale doctrine.

However, Action Tapes did register the copyright in the visual works of art, and the unauthorized reproduction of those works is infringement. Mattson wasn't lending the visual works of art. She was lending a computer program that made reproductions of the protected visual works. Even if the unauthorized distribution of the program wasn't actionable because the copyright in the program wasn't registered, Mattson doesn't have authority to authorize reproductions of the protected visual works.

It's hard to imagine that Action Tapes, in this day and age, is distributing the computer program by sale rather than license; but assuming she was the owner, she would have at least an implied right to use the programs to reproduce the copyrighted visual works, and probably an implied license to distribute the authorized reproductions. But I don't see how her ownership of the authorized copy of the program conveys the right to "sublicense" the right to reproduce the protected visual works.

Her distribution of the program, which has no use other than making reproductions of the protected works, even if it isn't actionable as an unauthorized distribution, looks an awful lot like contributory infringement of the reproduction right, and the first sale doctrine doesn't help at all.

William Patry said...

John, excellent analysis, thanks