Wednesday, January 31, 2007

Leave Borat Alone

The news wires were hot yesterday with stories about Sacha Baron Cohen being sued once again over his Borat character, this time by Israeli comedian Dovale Glickman for use of the phrase "wa wa wee wa." (See this fanastic wikipedia entry on Borat; this is the link to the official Borat homepage; this is the link the official Borat movie homepage.). Here is a story (in Hebrew) from the Israeli media. According to the Israeli reports, the phrase originated with three people: Glickman, Anat Gov (the script writer), and Yoram Levi (the director). Glickman used the term in TV in commercials for the Israeli yellow pages company, where Glickman played Saul, a flower vendor. Cohen had access from his time in Israel, a time when the ad was running. The story reported yesterday by the Associated Press reads:

"Following lawsuits from Southern conservatives, frat boys, Romanian villagers and seemingly every other group in the "U.S. and A.," Sacha Baron Cohen could be facing even more legal difficulties over his wacky comedic creation, Borat Sagdiyev. This time his accuser is an Israeli comedian who claims that Borat's signature exclamation of excitement -- "Wa wa wee wa" -- belongs to him.

According to "Good Evening With Guy Pines," an Israeli entertainment news show, Dovale Glickman plans to sue the Golden Globe-award winning comedian for copyright infringement. Baron Cohen capped his Golden Globe acceptance speech by thanking "every American who has not sued me so far." But he didn't count on Glickman. The Israeli comedian coined the phrase 16 years ago, for a character on the hit Israeli comedy show "Zehu Zeh." Glickman further popularized the expression in a series of TV commercials for the Israeli yellow pages. It caught on and is still commonly heard on the Israeli street. When asked by The Associated Press if he planned to press forward with a lawsuit, Glickman would neither confirm not deny the report.
"Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan" was a huge hit in Israel, in large part because Israelis were the only ones to truly understand what the anti-Semitic, misogynist Kazakh journalist was actually saying. Few realize that in the movie Borat is not speaking Kazakh or even gibberish, but rather Hebrew."

Under U.S. law, "Wa wa wee wa" (meaning roughly "Wow") would be unprotectible as a short phrase. See 37 C.F.R. 202.1(a). My limited understanding of Israeli copyright law leads me think the same is true under Israeli copyright law. Israeli copyright law was originally derived the 1911 British Act (see this article by Debbie Rabina at Bar Ilan University), although more recently it has been moving toward its own approach. Most recently, an omnibus revision is close to passage. (See this December 28, 2006 summary by Israeli scholar Zohar Efroni at the Stanford Center for Internet & Society website). Two weeks ago, the Economics Committee of the Knesset adopted a non-exhaustive "fair use" provision in its approved text for Section 19 of the pending Copyright Bill. Another excellent source is the excellent Israel Law Review, a peer review journal by the faculty of Hebrew University. The journal publishes outstanding articles on jurisprudence by Israeli scholars as well as scholars from around the world. It also frequently publishes articles on copyright. In its most recent issue (volume 39, no. 3, December 2006), it has an artcle by Professor Guy Pessach (I wonder if he eats kitniyot) entitled "Israel Copyright Law: A Positive Economic Perspective," a law and economics look at the subject.

Returning to the Glickman-Borat contretemps, perhaps the news story really mean that Mr. Glickman intends to pursue a trademark claim (the Israeli reports claim Glickman is upset that Cohen is not even pronouncing the “wa wa wee wa” right), but in any case, to Mr. Glickman, I say, with Borat (hint to non-Hebrew speakers, read the wikipedia entry):

קום בחור עצל וצא לעבודה

Father Drinan and Copyright

News account of Father Robert Drinan, who died on Sunday, mention his service in Congress, and understandably so. Elected in 1970, he served on the House IP subcommittee and was involved in efforts to find an accommodation over fair use and photocopying issues between educators on one hand and author/publishers on the other hand. In that effort at reconciliation, despite his life-long unwavering dedication to education, he did not slight the interests of authors and publishers. When an educator once remarked at a hearing that widespread educational use was by definition in the public interest, Father Drinan remarked, "[i]t is not good for the owner of the copyright." (See 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. 305 (1975)).

He also was the "father" (pun intended) of what became VARA. The history of VARA begins on January 15, 1979, with the introduction, by Father Drinan of H.R. 288, 96th Cong., 2d Sess. See also 125 Cong. Rec. H164 (daily ed. Jan. 15, 1979) (floor remarks introducing the bill). In the first session of the 97th Congress, Representative Barney Frank introduced H.R. 2908, identical to H.R. 288. See 127 Cong. Rec. H217 (daily ed. Mar. 30, 1981) (Mr. Frank’s floor remarks). Mr. Frank reintroduced the proposal as H.R. 1521 in the first session of the 98th Congress, again with no action. See 129 Cong. Rec. H2414 (daily ed. Feb. 17,1983). In the second session of the 99th Congress, Mr. Markey took over for Mr. Frank, thereby continuing the Massachusetts connection that started with Father Drinan. (On the Senate side, the Massachusetts connection was with Ted Kennedy, who saw it through to the end and was a stalwart supporter of artists).

I met Father Drinan once at Georgetown Law School, when I was an adjunct there, my full-time job then being a Hill staffer. Georgetown had a reception for adjuncts in an effort to get them into closer contact with the full-time faculty, something that rarely occurs. I got to talk to him a bit about his role in the 1976. He was warm, gentle, and charismatic; a truly great man. May his memory be a blessing forever.

Tuesday, January 30, 2007

Books on Tape and First Sale

The Sixth Circuit is fast becoming the most prolific court of appeals in copyright cases. The most recent opinion, from January 26th, is a case of first impression on whether books on tapes are covered by the exception to the first sale’s rental right. The correct answer, reached by the majority in Brilliance Audio, Inc. v. Haights Cross Communications, Inc., 2007 WL188103, is that lawfully made copies of such books may be rented without the copyright owner’s permission.

A ban on rentals was first applied to musical compositions in 1984 (amended in 1988), in response to the introduction of CDs and rental stores who pitched customers by saying “never ever buy another record." In 1990, Congress expanded the ban to include computer programs, but never beyond that. The 1984 and 1988 versions of Section 109(b)(1) were clearer on whether the rental ban extended to all audio works, stating that “Notwithstanding the provisions of subsection (a), unless authorized by the owners of copyright in the sound recording and in the musical works embodied therein.”

The 1990 formulation of Section 109(b)(1), amended to include computer programs, unintentionally injected a degree of ambiguity by its placement of computer programs in the middle of the clause: “Notwithstanding the provisions of subsection (a), unless authorized by the owners of copyright in the sound recording or the owner of copyright in a computer program . . . and in the case of a sound recording in the musical works embodied therein.”

Since the 1990 formulation was not intended to change the law regarding sound recordings, this unintended potential ambiguity should not be construed to include within the section nonmusical sound recordings; it is simply bad drafting. (And the 1990 amendments were very bad drafting indeed). The 1988 House Judiciary Committee report noted that no specific concerns about literary works had been raised, but that “if problems do arise, they may be addressed when the new [eight] year ‘sunset’ provision expires.

The majority in Brilliance Audio, per Judge Julia Gibbons, found the statutory language ambiguous (I think Judge Gibbons was being gentle in so saying), and therefore examined the legislative history. The decision, however, turned not on the legislative history but instead on what might be called a canon of construction: the first sale doctrine represents a firm Congressional policy against restraints on alienation, so any ambiguities in the statute should be construed against derogating from that policy. Hence, the majority's holding was: “The language of the statute does not unambiguously apply to audio books, and we have found no evidence that it should be so construed.” I think that right on the merits and as an interpretative method.

The partial dissent of Judge Kennedy would have vacated the district court’s grant of defendant’s 12(b)(6) motion, based on a plain meaning interpretation of the statute as prohibiting the rental of audio books. Based on that plain meaning assertion (no actual analysis of how the alleged plain meaning got to the plain meaning result was given; it was, instead merely asserted), Judge Kennedy criticized the majority for looking at the legislative history, even though that wasn’t the basis for the majority’s decision. Why go out of your way to make such an essentially gratuitous remark? In any event, I favor looking at legislative history whenever you please. What I find stereotypically amusing in the dissent is the absolute conviction that one’s own belief a particular provision is plain is so strong that those who feel otherwise must plainly be wrong.

Monday, January 29, 2007

Raw International Law

Via Instapundit, I came across a paper by Professors John McGinnis (Northwestern Law School) and Ilya Somin (George Mason Law School), entitled "Should International Law be Part of Our Law?" I suspect the actual heart-of-hearts answer in all cases, according to the authors, is probably "no, hell no, never." To be fair, the authors are not particularly exercised about what they term "domesticated international law" --- law which has gone through the domestic political process, i.e., a treaty that has been ratified, or domestic legislation enacted that directs the incorporation of international law --- but they are quite exercised about what they term "raw international law," law that becomes a part of U.S. law through court decisions. Roger Alford, at Opinio Juris, has a short reference to the article (described as "provocative"), but most interesting to me are the to-and-fro in the debate between Matthew Gross and Benjamin Davis played out in the comments to the Alford piece.

As the distinction between the above two catgories illustrates, the authors professed concern is with circumvention of the democratic processes by unelected judges, particular liberal judges. I think it accurate to define a liberal judge in this context in a peculiar fashion as someone who would even look at international law as is said in Talmudic studies, as "zeker le-dabar," not as actual proof for the meaning of a text, but rather as a reference to further support for one's own interpretation of one's own text by pointing out others interpret similar texts the same way. This is what happened in two Supreme Court opinions that infuriated conservatives, Atkins v. Virginia, 536 U.S. 304 (2002) and Roper v. Simmons, 543 U.S. 551 (2005), the latter involving the death penalty as applied to juveniles.

I confess to not understanding, jurisprudentially, what the uproar is about. In Roper, the majority did not claim that its decision was determined by treaties or decisions in other countries. I therefore find it inaccurate for the authors to state that "the Court applied international material that the political branches expressly refused to carry into the transom of domestic law," if by "applied" we mean part of U.S. law. So long as a claim is not made that international or foreign law compels U.S. law be construed a particular way (other than in a situation where a treaty the U.S. has ratified is at issue) why shouldn't courts try to gain as much knowledge as possible from whatever sources as possible? I understand quite well what the political rhetoric is about, though, and that is, conservatives don't want judges interferring with the executive branch during a Republican Administration.

At the same time, conservatives are quite right in crying foul for liberals' efforts to directly incorporate customary international law (CIL) into U.S. law, and quite right to describe this, as the authors do, as a "democratic deficit." Modern customary international law advocates assert that CIL provides a private course of action directly, justiciable in federal court. But federal courts are courts of limited jurisdiction; they require a specific grant of authority and cannot create their own jurisdiction. The mere existence of CIL is not itself such a grant. On this score, I wholeheartedly agree with the authors about the dangers to our democratic institutions posed by CIL advocates.

In the copyright field, in Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998), the issue was whether to apply foreign law to ownership of articles written by foreigners and first published in their own country (Russia). If U.S. law applied plaintiffs had standing; if Russian law applied, they didn't. In applying Russian law, Judge Newman wrote that the court was "fill[ing in] the interstices of the [Copyright] Act by developing federal common law on the conflicts issue." This approach, one of a federal "interpretative" common law, recognized by the Supreme Court in Smith v. Alabama, and applied regularly in maritime cases, may be contrasted with the creation of a separate body of choice of law rules to be interposed between the U.S. Copyright Act and foreign copyright law. This is not the approach taken in Itar-Tass. Itar-Tass may be said to have interpreted the Copyright Act as permitting the application of foreign law on ownership; it did not create a new federal common law of copyright conflicts of law. This approach is consistent with the Supreme Court’s decision in Texas Industries, Inc. v. Radcliff Materials, Inc., which held that the appropriate types of federal common lawmaking are "few and restricted" and fall into two categories, those "necessary to protect uniquely federal interests and those in which Congress has given the courts the power to develop substantive law." The latter category is the one which applies to copyright since Congress has delegated to the courts the power to create the most important substantive doctrines in copyright law: who is an "author," when is a work "original," and when is a work infringed? Courts previously developed the critical fair use defense, which Section 107 merely statutorily recognizes, but does not codify. In short, Itar-Tass’ development of copyright choice of law rules is of a type Congress has empowered the courts to create when construing the Copyright Act. Rather than creating external choice of law rules, Itar-Tass should be understood as interpreting the Copyright Act (in particular Section 104) as authorizing courts to develop choice of law rules in applying the Act in situations where choice of law problems are encountered. This is closer to the "domesticated" international law than the "raw" international law referred to by Professors McGinnis and Somin.

Thursday, January 25, 2007

Ryszard Kapuscinski

Michael Kaufman of the New York Times wrote a wonderful obituary of Polish journalist Ryszard Kapuscinski on January 24th. Kapuscinski, who was 74 when he died, had a day job (of over 40 years), of gathering information about conflicts throughout the world and reporting them for a Polish news agency. His reports, for which he never took notes using instead his memory "to stimulate his poetic imagination," were, not surprisingly, "often tinged with magical realism." Kapuscinski himself wrote: "Its what surrounds the story. The climate, the atmosphere of the street, the feeling of the people, the gossip of the town; the smell; the thousands and thousands of elements that are part of the events you read about in 600 words of your morning paper."

In copyright cases involving new reporting, one frequently encounters the claim that "news" is not copyrightable. Of course, the facts of an event -- The Emperor Haile Selassie (born Tafari Makonnen) death on August 27, 1975 -- aren't protectible, but descriptions of the event and life at Selassie's court are. (See Kapuscinki's great 1978 book "The Emperor"). The issue arose in Harper & Row, Publisher, Inc. v. Nation Enterprises, 471 U.S. 539 (1985), where the late President Gerald Ford sought to protect his "word portraits" of the Nixon pardon and other historical events.

Historians have gone even further, being quite skeptical about the idea that facts are merely discovered. Carl Becker, writing in 1910, quipped: “The witty remark of Dumas, that Lamartine had raised history to the dignity of romance, would have appealed to Thomas Buckley who was much occupied with reducing it to the level of a science.” History as literature was the dominant view until this time, and the “scientific” view of history was short-lived. Some historians were quite blunt about their disdain for objectivity. George Macaulay Trevelyan (1876-1962), great-nephew of the great Whig historian Thomas Macaulay, wrote in an essay called “Bias in History” that his own three books on the Italian leader Garibaldi, (written 1907-1911), were “reeking with bias,” and that “Without bias, I should never have written them at all. For I was moved to write them by a poetical sympathy with the passions of the Italian patriots of the period, which I retrospectively shared.”

Kapuscinki's writings were less about political sympathy and more about the use of metaphor and allegory to cut to the soul of the matter. This point is illustrated in a oft-told story about his winning of Poland's Golden Cross of Merit. Kapuscinki had written an article about the poor treatment of steel workers at a plant near Krakow that had been extolled as showpiece of protelarian culture. His account caused his firing under government pressure. After a blue-ribbon panel was appointed to look into the matter, Kapuscinki's story was vindicated, and he received the aforementioned award. Now that's magical realism.

Wednesday, January 24, 2007

The Next Supreme Court Arbitration Case?

Common law judges expressed a negative view toward arbitration, apparently based on a belief that such alternative dispute resolution ousted the court’s jurisdiction. In the United States, the legal landscape fundamentally changed with the passage in 1925 of the Federal Arbitration Act. The purpose of the FAA "was to reverse the longstanding judicial hostility to arbitration agreements that had existed at English common law and had been adopted by American courts, and to place arbitration agreements upon the same footing as other contracts." Motions to compel arbitration for a wide variety of claims arising under the Copyright Act are now routinely granted, so long as the dispute is encompassed by the agreement to arbitrate.

Motions to confirm arbitration awards are also routinely granted, mostly because the grounds for challenging them are so limited. Partiality is one such ground. The standard for determining when the arbitrator was impartial has divided the Fifth Circuit en banc in an 11-5 vote in a copyright dispute, Positive Software Solutions, Inc. v. New Century Mortgage Corp., 2007 WL 111343 (5th Cir. Jan. 18, 2007)(vacating the panel opinion),

The problem stems from the Supreme Court's opinion in Commonwealth Coatings Corp. v. Continental Casualty Co., 393 U.S. 145 (1968), and extends to whether Justice Black's opinion was a majority or plurality opinion. One might think the latter issue relatively straightforward, but apparently it is not, turning on the weight to be given to Justice White's concurrence and his statement that he was "glad to join" the Black opinion, thereby supplying the fifth vote. White's concurring opinion however sets forth a narrower ground for the decision, and because of this all circuit courts except the Ninth have concluded that Justice Black's represents only a plurality opinion. (Ses Schmitz v. Zilveti, 20 F.3d 1043 (9th Cir. 1994)). There is also widespread dissatisfaction among the lower courts with Commonwealth, plurality or not, see e.g., Judge Posner's early opinion in Merit Insurance Co. v. Leatherby Insurance Co., 714 F.2d 673, 680 (7th Cir. 1983).

The dispute turns on the meaning of "evident partiality" in 9 USC 10(a)(2): whether that term requires that an undisclosed relationship that the arbitrator had with a party, witness, or counsel (as in Positive Software Solutions) must be beyond a "trivial or insubstantial" prior relationship in order to justify vacating an award (as the majority of the Fifth Circuit en banc held), or whether the "very failure to disclose facts that might create a reasonable impression of the arbitrator's partiality" justifies vacating the award (as the panel opinion had held).

Given the importance of the issue and the split in the lower courts on even the nature of Justice Black's Commonwealth opinion, this might be a good candidate for the Supreme Court's tiny, tiny docket.

Tuesday, January 23, 2007


The Ninth Circuit has affirmed the lower court's rejection, on a 12(b)(6) motion, to various provisions of the Copyright Act. Here is a link. (It's the third case on the list). One aspect of the challenge was plaintiff's argument that the 1992 Automatic Renewal Act altered the "traditional contours of copyright protection," requiring First Amendment review. The court of appeals held, that under Eldred, such a review might well be triggered, but further held that Eldred had already addressed whether extending existing copyrights was constitutionally permissible. That wasn't the exact issue in Kahle, but the court of appeals believed effectively they were the same.

The second issue, also not addressed in Eldred, was whether the Limited Times language in Article I, section 8, clause 8, was a substantive limitation on Congress's power to alter durational provisions. It clearly is, and I have gone further in arguing that "to promote the progress of science" is also a substantive limitation. The court of appeals, however also believed Eldred had impliedly reached the issue, and that the question of whether a term was limited or not is a balancing test, one best left up to Congress.

In short, the court of appeals seemed to agree with plaintiff on the approach to use, but rejected the claims on the merits.

Monday, January 22, 2007

XM, RIAA, 1008

There are few cases involving the interpretation of Section 1008 of title 17, added in the 1992 Audio Home Recording Act, RIAA v. Diamond Mutimedia Systems, Inc., 180 F.3d 1072 (9th Cir. 1999) being the most important. Section 1008 was intended to provide, finally, a statutory exemption for home copying of musical works, but that isn't how it has worked out. Section 1008 received another look on January 19th by Judge Deborah Batts of the SDNY in Atlantic Recording Corp. et al v. XM Satellite Radio, Inc. You can get the decision on Cathy Kirkman's Silicon Valley Media Blog.

The case was an RIAA case, brought on behalf of ten labels against XM's "XM+MP3" players (inno, Helix, and NeXus). The players have a number of features besides permitting listeners to hear broadcasts. The players permit listeners to instantly record songs being broadcast (even if they have started, through use of a buffered copy). Additionally, XM provides playlists of individual tracks disaggregated from blocks of radio programming and a search function facilitated by "ArtistSelect" and "TuneSelect" utilities. Listeners can request alerts for particular artists or songs and XM will notify listeners when a song is being brodcast. Up to 50 hours of music can be stored for unlimited playback, but when the subscription ends so too does access to the songs.

XM's position was clear, although in the court's opinion, extreme: Section 1008 immunized its conduct completely, and such that a 12(b)(6) motion should be granted. The label's position was less clear from the opinion, other than that XM was wrong. The labels certainly asserted that XM, while not liable for mere broadcasting, was acting without authorization by delivering permanent digital copies. But the copies weren't permanent, they were, as the court put it leased, for the duration of the subscription, not that the distinction matters. The court also stated that the labels were not claiming "XM is infringing on their copyrights by distributing a [digital audio recording device]." Section 1008 exempts such distribution so certainly the labels would not want to make such a claim, but to me, at least, an important issue is whether the XM players are a digital audio recording device, a defined term. What I find baffling about the court's opinion is that it doesn't address that issue except in passing (fn.4) , even though I thought that was the basis for XM's motion. Instead, the court analyzed whether XM had exceeded its license under Section 114, presumably as an independent ground for liability not covered by Section 1008, but it would have been nice to have a real discussion of Section 1008.

Thursday, January 18, 2007

A legal mash-up?

A story in today’s New York Times (here) tells the story of the arrest of DJ Drama, creator of the “Gangsta Grillz” HipHop mix-up compilations. The story is reminiscent of the bust of Mondo Kim’s in the East Village, Manhattan. This bust, led by RIAA, was under the Georgia R.I.C.O statute, according to the Times. Brad Buckles of RIAA is quoted in the story as saying “A sound recording is either copyrighted or not.”

Mr. Buckles’ remark is true enough, but does not necessarily end the matter. First, why isn’t the state proceeding preempted by the Copyright Act? Presumably, the base conduct complained of was the reproduction and distribution of copyrighted works. No state can make such actions a crime. Perhaps the indictment (and DJ Drama was charged with a felony offense according to the Times) was for the operation of an organization engaged in criminal activity and not for the criminal activity itself, but this may be a bit too glib.

And then there is the question of the performing artists’ own participation – and therefore authorization – of the compilations. According to the Times story “most of DJ Drama’s mixtapes begin with enthusiastic endorsements from the artists themselves.” Have the artists already transferred all rights such that their permission is ineffective?

Finally, there is the “biting the hand that feeds you issue”; as the Times observes: “It also seems clear that mixtapes can actually bolster an artists’s sales.” The RIAA apparently thinks otherwise, and its data presumably comes directly from the labels. Moreover, the labels are interested in their relationship with their artists. It would be instructive to hear the labels’ side of the issue, even by an anonymous posting.

Tuesday, January 16, 2007

Make Sure the Contract is Signed

Form agreements done well reduce transaction costs and risks of future misunderstanding. Not surprisingly, they have to be signed by the parties to constitute a binding contract. In the field of architecture, it is common to use forms developed by the American Institute of Architects, sometimes by themselves, sometimes in conjunction with another contract. A per curiam January 8th opinion by the Sixth Circuit. Grusenmeyer & Associates, Inc. v. Davison, Smith & Certo Architects, 2007 WL 62620, illustrates the pitfalls in not dotting your "i"s and crossing your "t"s.

The fact pattern was typical: an RFP was put out for a master plan. One architectural firm won. Then, a different RFP was put out for the building of one structure and this time a second firm won. The entity putting out the bids gave the second architects the first architect’s master plan, and the first architect sued for infringement. The district court granted summary judgment to defendant’s finding that even though the first firm was the copyright owner, it had granted permission for the use. This turned of course on the specific language of the contract, and to get around that plaintiff relied on an AIA form which was not, however, attached to the contract. The court of appeals’ discussion is instructive:

Where a party has used copyrighted material with permission, a finding of infringement is precluded.... The defendants argued, and the district court agreed, that notwithstanding any otherwise valid copyright protection, the contract between Grusenmeyer and Magnificat permitted DSC Architects to use the drawings. ...
Grusenmeyer argues on appeal that in adopting the defendants' theory of the contract's coverage, the district court overlooked the provision that Grusenmeyer's services would be rendered in accordance with American Institute of Architect's "Abbreviated Form of Agreement Between Owner and Architect." Although Jeffrey Grusenmeyer conceded that the form agreement was not appended to the actual contract or otherwise supplied to Magnificat, he relied on Section 6.1 of AIA's form agreement to establish his exclusive retention of rights in the disputed drawings. ...
The district court rejected the plaintiff's interpretation of the [AIA] provision....
We agree with this interpretation and with the district court's substantive ruling on the effect of the explicit contractual provisions... As provided in the contract, the program for capital improvements included the building of a "Fine Arts/Band Practice/Auditorium type space[ ]." It is undisputed that Plaintiff provided Magnificat with existing conditions drawings, and that those drawings were used in connection with the development of the Performing Arts Center at Magnificat. As such, the existing conditions drawings fall within the scope of Plaintiff's responsibilities under the contract, for which Magnificat paid Plaintiff approximately $15,000.
It is consistent with logic that drawings of existing conditions would be necessary for the implementation of the capital improvements program and would therefore be included within Plaintiff's responsibilities under the contract. Equally logical is the fact that such drawings may be used in the implementation, in return for the compensation that Magnificat paid to Plaintiff.
We agree with the district court's conclusion that, contrary to the plaintiff's assertions, the contract permits the use, as described, of the materials developed under it. Otherwise, the contract provision stating that Grusenmeyer would "[p]rovide ··· plans, renderings, and perspectives suitable for use and future reference during master plan implementation" would be meaningless.

Repeat PERFORMance

The 110th Congress's first copyright initiatives came on January 11th, with two bills introduced in the Senate. S. 258, introduced by Senator Akaka and 20 other Senators is a bill "to clarify provisions relating to statutory copyright licenses for satellite carriers." The word "clarify" in such bills rarely carries with it its ordinary meaning of making an ambiguous provision clear, but rather has historically meant lowering royalty rates.

The other bill, S. 256, introduced by Senators Feinstein, Alexander, Biden, and Graham, is a repeat in an amended form of last Congress's PERFORM Act ("Platform Equality and Remedies for Rights-Holders in Music"). Interestingly, Senate Judiciary chair Patrick Leahy is not listed as a co-sponsor. Fred von Lohmann had a blog posting on the bill yesterday here and there have been many news stories about it. Senator Feinstein's introductory statement and a copy of the bill were published in the Congressional Record, pages S446-448, available through the Library of Congress's online Thomas service, (I tried creating a link, but links created through Thomas searches are apparently time limited),

This time, like last time, the bill goes beyond addressing specific issues raised by devices such as Sirius's Inno player, and ventures more generally into general DRM requirements, as well as rate setting. As Senator Feinstein stated, under the bill: "All companies covered by the government license created in section 114 of title 17 would be required to pay 'fair market value' for the use of music libraries rather than having different rate standards apply based on what medium is being used to transmit the music," even though I think some of these issues are before the Copyright Royalty Board.

Senator Feinstein also remarked: "The bill would also establish content protection. All companies would be required to use reasonably available, technologically feasible, and economically reasonable means to prevent music theft. " She noted "some have concerns that applying content protection to all providers is unfair. They argue that if there is no connection between the distributor of the music and the technology provider that allows for copying an manipulating of performances then they should not be required to protect the music that they broadcast. I general, I do not agree." She added though that under the bill one can automatically record particular stations at particular times and "then use the[] recording device to move these programs so that each program of the same genre would be back to back," but that one cannot target particular performers.

At the same time, Senator John Sununu's office is reported to have announced that he is working on a bill to ban the FCC from passing regulations mandating the broadcast flag. There also is a WIPO meeting on the proposed broadcast treaty. We are off to a fast start, and it is all pointing in the same direction.

Monday, January 15, 2007

I Have A Dream

What is called Dr. Martin Luther King's "I Have a Dream" speech was delivered at the Lincoln Memorial on August 28, 1963. Here is a link to a video of it; here is a link to the text. According to Wikipedia, a 1999 poll of scholars of public addresses (talk about a niche field!), voted it the top public address of the 20th century, and it is easy to see why that would be the case. I heard it on TV it as a child when he delivered it and am still deeply moved by it. I have never heard anyone who is remotely close to Dr. King as an orator, while the profound justice of his message and his own deep personal integrity make the speech a seering experience. When I worked in the Copyright Office, the deposit copy of it was on display and it seemed a sacred document. Few, though, will recall today that when he bravely expanded his message to include opposition to the Vietnam War, he was subject to great criticism from many quarters, resulting in great personal suffering and no small degree of marginalization, but that didn't stop him from speaking out.

Parts of the I Have a Dream speech, including the famous ending - the I Have a Dream Refrain and the conclusion - were given in a very substantially similar form in a June 23, 1963 speech in Detroit at the invitation of the charismatic Rev. C.L. Franklin (Aretha's father), available here. That link, eventually to the MLK Papers Project states at the end, after a copyright symbol: "The words of Martin Luther King, Jr. are copyrighted by the King Estate," a claim that is subject to disagreement.

There were in the past claims that parts of King's speech were taken from a 1952 speech to the Republican National Convention by pastor Archibald Carey, but the similarities are extremely slight: both end by reciting the first verse of Samuel Francis Smith's 1832 (and therefore pd) hymn "America," along with the listing of geographic locations from which the orator shouts "Let freedom ring."

A year ago I did a post on the copyright cases involving the speech, available here.

Friday, January 12, 2007

Laches and the Statute of Limitations

Previous posts (here and here) discussed whether laches is available against a claim brought within the three year limitations period provided for in Section 507(b). I think not for the reasons given in those posts, but in a lamentable tendency to treat copyright litigation as if it somehow enjoyed a special exemption from general principles applicable to general civil litigation, some courts have allowed laches to bar such claims. The latest to do so is the Sixth Circuit, in its January 10, 2007 opinion in Chirco v. Crosswinds Communities, available here (do a search by plaintiff's name Chirco). The court had a far sounder ground upon which to reach the result it wished, making its discussion even more regrettable.

It is not difficult to see why the court wanted to ding plaintiff for its delay. In the course of an earlier suit, plaintiff discovered facts that put it on notice of a different infringement. As the court of appeals recited:

During the discovery period for that federal law suit, Chirco v.. Charter Oak Homes, Inc. (No. 01-71403), the plaintiffs obviously learned of Glieberman's intention to build yet another development that allegedly infringed upon the plaintiffs' copyrights, because plans for a Glieberman project known as Jonathan's Landing in Howell, Michigan, were found in the plaintiffs' files, dating from April 16, 2001. Six months later, on October 16, 2001, the plaintiffs made a request of local officials for copies of the plans for the Jonathan's Landing project through the Michigan Freedom of Information Act. Those plans were then sent to the plaintiffs a week later, but no action was taken by Chirco and Moceri, even in May 2002, when Glieberman and Crosswinds Communities, Inc., broke ground for the 252-unit development. In fact, the plaintiffs took no steps to prevent the second alleged infringement of their copyrights until November 14, 2003, when the plaintiffs filed a second federal law suit against Glieberman, Chirco v. Crosswinds Communities, Inc. (No. 03-74600). By that time, 168 of the planned 252 units had been constructed, 141 of them sold, and 109 already occupied by the buyers.

Eventually, the defendants filed a motion for summary judgment in the second law suit, Chirco v. Crosswinds Communities, Inc., arguing that the plaintiffs' attempts to recover for copyright infringement were barred by the equitable doctrine of laches. The district judge agreed, ruling that the plaintiffs knew of the Jonathan's Landing construction for at least 18 months prior to the filing of the federal action. The district court further stated:

Defendants have shown prejudice in this case. As of the filing of the Complaint, more than 168 units were built, 109 of which were occupied. Plaintiffs have not shown why they did not diligently pursue the claim as to Jonathan's Landing as early as May 9, 2002, or perhaps earlier. Plaintiffs have not shown that the Jonathan's Landing case was in fact covered in Case No. 01-71403, a case in which Crosswinds is not a party. There is no mention of the Jonathan's Landing project in the Amended Complaint. Defendants had no notice that Plaintiffs were going to sue them regarding this project.

The court of appeals' approach was that of a de novo fact finder and statute re-drafter. As to monetary damages and injunctive relief, the court held that defendant had not shown undue prejudice, apparently disagreeing with the district court on the facts. As to plaintiff's request for destruction of completed and occupied condos, the court affirmed, saying "such a request smacks of inequity... ." True enough under the facts, but this has nothing to do with the statute of limitations, but rather is a discretionary question of remedial relief. The legislative history of the Architectural Works Protection Act provides sound support for not granting such relief.

The court's decision to rest this part of the opinion on laches was unnecessary, therefore, as was its decision to reverse on its application to money damages and injunctive relief: the Sixth Circuit permitted such relief but only after an extended discussion of laches that will open the barn door to routine arguments of the same kind, thereby causing litigants and courts extra time and expense. Sometimes just saying no is the best approach.

Wednesday, January 10, 2007

A Model Opinion

In keeping with my New Year's resolution, here is a model opinion by the extraordinary Judge Gerard Lynch of the SDNY, in Chivalry Film Productions v. NBC Universal (05 Civ. 5627, Dec. 22, 2006). Here's what I like about it: it is short, to the point, but doesn't skimp on the law or the facts. It is a typical case involving alleged infringement of an unpublished screenplay by a movie and most of the typical arguments in such cases are made, but wonderfully dealt with succinctly. And that's the key: it takes great discipline to reduce matters to their essence but not short-change the substance. Bravo Judge Lynch. Here's the opinion, edited to take out cites:

In this copyright infringement action, pro se plaintiff Joseph Ardito charges that defendants, a number of motion picture production and distribution companies, infringed his copyrights. Defendants move for summary judgment dismissing plaintiff's claim, arguing that the allegedly infringing films are independently created works that no reasonable juror could find substantially similar to plaintiff's copyrighted material. Defendants' motion will be granted.

Plaintiff charges that two movies produced and distributed by certain of the defendants, Meet the Parents and its sequel Meet the Fockers, infringe his copyrights in several versions of a novel and screenplay entitled variously The Tenant or The Dysfunctionals (hereafter collectively “ The Tenant ”).To establish copyright infringement, plaintiff must demonstrate “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Copying may be established either through direct evidence of copying or through indirect evidence, including “ ‘similarities that are probative of copying between the works.’ “ Defendants do not dispute that plaintiff holds valid copyrights in the various versions of The Tenant. They argue, however, that no reasonable finder of fact could find copying, because the works are not substantially similar, and because plaintiff has failed to raise a genuine issue of fact with respect to defendants' claim of independent creation. Defendants are right on both grounds.FN2
FN2. Defendants also claim there is no evidence that any defendant had access to The Tenant. Indeed, plaintiff offers no evidence whatsoever that any defendant ever saw any of his works, asserting only that while visiting Los Angeles in 1998, and staying with a friend of his attorney, his bags were broken into and ransacked by unknown individuals, and “[v]arious project outlines were missing.” Even assuming that a thief took or read a version of The Tenant (something not expressly asserted in plaintiff's statement), there is absolutely no evidence that any defendant ever came into possession of that material. Nevertheless, because plaintiff may not have had an adequate opportunity to take discovery of defendants on this issue, the Court declines to rely on the absence of evidence of access as a ground for summary judgment

.Summary judgment may be granted on a copyright infringement claim when “no reasonable trier of fact could find the works substantially similar.” That is precisely the case here.The works at issue could not be more different in “total concept and feel.” Defendants' movies are farcical situation comedies in which a young man encounters various embarrassing calamities while trying to win over the parents of his fiancée, and in which the parents of the engaged couple, who represent opposing cultural and political stereotypes, seek to become comfortable with each other. In the tradition of slapstick comedies, exaggerated disasters ensue from the encounters among the protagonists, but the tone is light, no one suffers lasting damage, and the situations resolve happily with the former antagonists achieving grudging mutual respect and accommodation. The works are designed as light entertainment for a mainstream audience.Plaintiff's work is more in the violent horror genre. Any humor in the work is, in plaintiff's own words, “sick humor.” The prologue to the novel version warns that “[i]f you find the material contrary to your taste, vile, abusive and pornographic, the author has achieved his objective”, and the work more or less lives up to that claim. The work follows a common theme in the horror genre, that of the unwitting “normal” protagonist thrown together with a group of violent sociopaths, who torment and torture him. The plot involves three brothers, their sister and their father, whose back story involves extraordinary intrafamily violence and abuse, depicted at considerable length. The eponymous tenant rents a room in the house from one of the brothers, who repeatedly beat and abuse him, in addition to engaging in extreme violence against various other characters. Eventually, the three brothers are brought to justice and committed to a psychiatric hospital, and the police suspect the tenant of murdering the father, who in fact commits suicide. The treatment is unrelentingly horrific and is presumably aimed at the popular niche market for graphic tales of violence. Plaintiff attempts to show similarity by providing a long chart of alleged similarities between specific scenes in his work and defendants'. These parallels, however, involve the most trivial and generic of incidents. For example, in Meet the Parents the fiancée's father ridicules his prospective son-in-law's car, and in The Tenant the abusive landlord is critical of his tenant's vehicle. ( See Ardito Decl. at 6.) Even if the scenes were otherwise similar, there is nothing original in either scene; the events are simply minor, generic set pieces establishing the relationships between the parties through common experiences relating to cars. In any event, the scenes are not even that similar. Apart from the differences in tone, the father in defendants' film sneers at the make and color of the car, thus making his daughter's suitor feel embarrassingly outclassed in wealth and taste, while in plaintiff's work the villain objects to the protagonist's choice of a standard shift, because he might “need to borrow [the tenant's] car,” thus establishing his assumed power over his tenant's property. ( Id.) The scenes are thus strikingly different. Plaintiff offers scores of such specious similarities, all of which can be similarly deconstructed.The characters, pace, settings, themes and plots of the two sets of materials are in fact so extraordinarily different that plaintiff is reduced to arguing that copying can be proved by the absence of similarity, alleging that defendants “blatantly went through extremes in revisions and manipulation in an attempt to conceal and subterfuge said crime by revising said screenplay.” But this claim is self-defeating. As the Second Circuit has held, “[e]ven if an alleged copy is based on a copyrighted work, ‘a defendant may legitimately avoid infringement by intentionally making sufficient changes in a work which would otherwise be regarded as substantially similar to that of the plaintiff's.’ ". In short, no reasonable fact-finder could conceivably find the works so substantially similar as to warrant an inference that one was copied from the other.Summary judgment is also appropriate because defendants can establish an independent source for their films pre-dating The Tenant. Defendants' works do not pretend to be wholly original. They are based on an earlier film, also called Meet the Parents, that was made and copyrighted in 1991, and to which defendants acquired the rights in 1994. Plaintiff's earliest copyright for The Tenant dates to 1996. Unlike The Tenant, the earlier version of Meet the Parents shares a similar theme and tone with defendants' film; the similarity extends to the very names of the principal characters in the two versions. While plaintiff attempts to discredit defendants' claim by pointing to various differences between the two versions of Meet the Parents, those differences are far less striking than the differences between either version and plaintiff's work, and the similarities between the two versions of Meet the Parents are far more striking. No reasonable fact-finder could conclude that the challenged works derived from The Tenant, rather than from the earlier Meet the Parents film and screenplay. Summary judgment is appropriate where a plaintiff fails to offer evidence sufficient to raise a factual question about a defendant's proof of independent creation, including “re-creation” from an independent pre-existing source. Accordingly, defendants' motion for summary judgment is granted.

My Treatise is Now Available

After seven years of intensive work, my new treatise on copyright is finally available for purchase from Thomson/West, here. Justice O’Connor wrote a foreword. I did 100% of the research and writing, never using assistants of any kind. The book is seven volumes, all text. My hope is that some day soon there will be a website that will contain the complete legislative history of the 1976 Act, free and accessible to all, but until then, I feel uncomfortable charging for volumes of what is, after all, public domain material.

In single space, printed form, the treatise is close to 6,000 pages and will be that length after the first year's updates: it is looseleaf and will be updated twice a year. It is, by almost 100%, the largest treatise on copyright published, and is the first new multi-volume treatise on U.S. copyright law in 17 years. Here is table of contents with approximate page lengths:

1 Historical review 402
2 Statutory interpretation 184
3 Copyrightable subject matter 444
4 Noncopyrightable subject matter 230
5 Ownership 316
6 Formalities 108
7 Duration 124
8 Overview of exclusive rights 38
9 Reproduction right 594
10 Fair use 498
11 Other limitations on the reproduction right 124
12 Right to prepare derivative works 52
13 Distribution right 102
14 Public performance right 224
15 Display right 32
16 Visual Artists Rights Act 86
17 Jurisdiction 576
18 Preemption 192
19 Pleading 20
20 Statute of limitations 98
21 Parties 190
22 Remedies 494
23 International 140
24 GATT 292
25 Choice of Law, Extraterritoriality, Forum non conveniens 272

The organization of the treatise is designed to be transparent and as useful as possible. For example, rather than have a single chapter on substantive aspects of infringement which contains infringement and defenses for all rights, I have broken down infringement into each of the exclusive rights, and have provided a separate chapter for fair use. Rather than a single chapter on procedural aspects of infringement, I have provided separate chapters for jurisdiction, pleading, statute of limitations, and parties.

I have also tried to write a different kind of treatise, one that is many kinds of works in one. For those in private practice or inhouse, I have tried to provide the most comprehensive discussion possible, including all relevant legislative history (not just the 1976 committee reports) and case law: where useful, I have broken down footnotes by circuit and sometimes have also broken down the textual discussion that way too, as in Chapter 3, on the sections dealing with computer programs and the design of useful articles). and Chapter 22 (remedies). Chapter 9 (the reproduction right, 594 pages) contains an extensive review of general issues of infringement and then in the second half is broken down by circuit.

I have also tried to place copyright issues in the personal, social, and political contexts in which they arose: there are anecdotes aplenty and enough references to other scholars and disciplines to give a generation of law students ideas for law review notes. I have also drawn on my eight years experience in the legislative branch of government into how problems are identified, debated and ultimately resolved or not at the policy level.

One reason the book took as long as it did and is as big as it is, was my desire to break out of the specialist's blinders which I had voluntarily donned to my detriment for too many years. For too many years, I believed that copyright law was special, the Cinderella of the law, as some referred to it. This tunnel vision prevented me from understanding how the most important generalists in our society -- members of Congress and federal judges -- see copyright, but it also prevented me from seeing how some lines of case law in copyright law are simply wrong. I will give two examples. First, there has long been an erroneous view that there is a split in the circuits on the accrual of the statute of limitations in copyright infringement actions. I thought so too, but after I spent a number of months studying the general law on statute of limitations, I realized there is no such split. (See chapter 20, 98 pages). Second, the standards by which preliminary injunctive relief is granted by the lower courts in copyright cases is profoundly at odds with general law principles, and numerous Supreme Court decisions. The rationale for such favorite treatment simply doesn't make sense, either as an historical or normative matter. (See chapter 22, remedies, 494 pages).

I have further attempted to provide copyright lawyers with a complete and current discussion of important general law issues such as jurisdiction and venue (576 pages), choice of law, extraterritoriality and forum non conveniens (272 pages) and how they are addressed in copyright cases. I think the chapter on statutory interpretation (chapter 2, 284 pages), will be a surprise to those who have assumed that the textualist approach to statutes is the dominant approach, even on the Supreme Court. The chapter represents a painstaking effort to document actual practices. I read far in excess of 1,000 cases, hundreds of law review articles, dozens of books, and of course drawn on my own 8 years in drafting statutes while a federal legislative branch attorney. For those conservatives who bristle at my sustained attack on Justice Scalia’s polemics on this issue, I invite you to prove me wrong, and also to read my equally painstaking attack in Chapter 25 on liberals’ efforts to further a universalist agenda via importation of customary international law into U.S. law. In law, as in politics, I am a registered Independent.
I have also started today a separate blog, The Patry Treatise Blog. The purpose of this new blog is to start breaking down the one-way nature of treatise writing: I want to provide a forum where people can react to the book and I can both respond and provide further thoughts on things I have written or am thinking about putting in the next supplement.

I do encourage those who use the book to post comments on the treatise blog (and you can do so anonymously, as you can here). The book will always be a work in progress: my objective is to learn, every day, and I at least learn best by being challenged: I am very happy to live in a glass house as the price to pay for learning. I am also quite happy to be proved wrong: as Judge Leval once said to me, the best way to know you have a mind is to change it. So having to correct something is a cause for rejoicing, not resistance. With your help, I hope to change a great deal.

Tuesday, January 09, 2007

Copyright Leaps Over Tall Buildings

In the usual debates over copyright, the interests of content owners like motion picture studios are set in opposition to consumers. This binary araying of interests is, of course, woefully incomplete. A consumer may be making a tranformative use, while many disputes are between two authors or between two motion picture studios. The following story from di-ve illustrates this point:

Copyright problems for "Hollywoodland"

by Mario Azzopardi

Monday, 08 January, 2007

One of the films released this week, is the mystery thriller "Hollywoodland". Adrien Brody plays a detective who examines the mysterious death of actor George Reeves, TV's Superman in the fifties. Ben Affleck, winner of best actor award at last year's Venice Film Festival, plays Reeves.

The film, unceremoniously met several copyright difficulties. Warner Bros., who own the TV rights, refused to grant permission for the use of the actual TV opening credits.

DC Comics, who own the rights to the Superman character, refused to allow the Superman "S" insignia in any of the trailers or promotional material of the film, but allowed it to be in the actual movie!

Monday, January 08, 2007

Section 411(a) Bites Plaintiff Twice

While a few courts, misled by Nimmer, ignore the Section 411(a) requirement that subject matter jurisdiction exists only if plaintiff has received an actual registration certificate or a rejection on institution of the suit, the vast majority follow the statute. An opinion issued on January 4th in the Eastern District of Wisconsin, Woodhaven Homes & Realty, Inc. v. Hotz, 2006 WL 30882, shows some courts may take the requirement too seriously.

The dispute involves a rather traditional infringement of architectural blueprints
by unauthorized construction of a home based on those plans. Plaintiff sued both the couple who gave the builder the plans, and the builder. The builder moved to dismiss for failure to comply with Section 411(a). Plaintiff stipulated to dismissal of the builder, but then amended the complaint after receiving a registration, adding the builder. The builder again moved to dismiss; the court granted the motion, holding that the “relevant jurisdictional fact, which cannot be changed by amending the complaint, is that registration of the copyright had not been made” when the complaint was originally filed. Plaintiff then re-filed its complaint; the builder moved to dismissal under FRCP 41(a). The court denied the motion, but sua sponte ordered plaintiff to pay attorney’s fees in connection with the prior two dismissals, and to really show its pique stayed the proceedings until the fees were paid up.

That was just the beginning of the mess, though, as years of litigation over motions for reconsideration, summary judgment, and appeal to the Seventh Circuit occurred. Ultimately, another $75,000 in fees were awarded in connection with the motion for summary judgment and the appeal. One cannot but wonder whether the final award was influenced by the 411(a) fiasco. While I understand the award for the first dismissal, I don’t for the second: it is quite common to permit plaintiffs to amend their complaint after they have received a registration.

Friday, January 05, 2007

Happy New Year, Praise the Aussies

I was doing research yesterday on the copyright law in Anguilla. I went to Google Scholar ("Stand on the Shoulders of Giants") and typed in copyright. Up came a few entries, including one for an article by an Australian copyright professor, Matthew Rimmer, that I had been wanting to read: "The Garden of Australian Dreams: The Moral Rights of Landscape Architects." (Here is a convenient link to it). There are a number of excellent Australian copyright scholars and IP blogs, beginning with the amazing Kim Weatherall, who has her own blog plus participating in the LawFont blog. Kathy Bowrey has written many wonderful articles. Warwick Rothnie also has an insightful blog. I am sure there are many others and I don't mean to slight them by not mentioning them.

Professor Rimmer's piece is a masterful look at difficult legal, social, and cultural issues raised public art. He also has an excellent comparative analysis of U.S. cases, including Phillips v. Pembroke Real Estate Inc., a dispute that bounced around betweeen the state and federal courts in Boston. In drafting the 1990 act extending protection to works of architecture, Congress faced somew difficult line drawing. An early version of the legislation would have protected not just architectural works, but also "or other three-dimensional structures," As a result of the hearing, the phrase was deleted, however. The purpose of the phrase had been to cover cases where architectural works were embodied in innovative structures that defy easy classification. But as the Judiciary Committee report noted, the phrase could also be interpreted as covering interstate highway bridges, cloverleafs, canals, dams, and pedestrian walkways. While there was little doubt that bridges designed by Frank Lloyd Wright, Robert Maillart, Christian Menn, and others are original, the Committee made a policy decision to exclude all such works at that time, since protection is not mandated by the Berne Convention. This intention was made clear by the deletion of the phrase “or other three-dimensional structures” from the definition and by legislative report language.

As enacted, therefore, the legislation protects only the design of “buildings,” the meaning of which is more important than it had been under H.R. 3990. The term obviously covers structures such as houses, apartments, office buildings, churches, and the like. It also encompasses structures that are used by humans but not inhabited, such as belvederes, pergolas, gazebos, and garden pavilions, as well as the difficult-to-classify works that prompted the “and other three dimensional structures” language initially. Landscape architecture, golf courses, and structures not intended for use by humans are not protected. But that doesn't appear to be the case in Australia, which moreover accords architects moral rights along the lines of our 104A. But as Professor Rimmer details, those "rights" are essntially a mere right to be consulted, not to prevent changes. Even that right seems to be more honored in the breach though, and in the case of public art, the changes can tangled up in a toxic mix of politics and social conflict. His article has a number of fascinating illustrations of the point and is a great read.

Thursday, January 04, 2007

A New Congress, a New Act?

Today begins the new Congress with new committee and subcommittee chairs. In the House, Howard Berman takes the reins as chair of the IP subcommittee. In the Senate, the subcommittee has been folded back into the full Committee, chaired by Senator Leahy. The Senate has had an on-off again attitude. After the 1976 Act was passed, the Senate abolished its subcommittee believing there would be little work to do in the future. After a few years, the subcommittee was back in business. The House has historically permitted its full committee chairs to also chair a subcommittee. On the Judiciary Committee, the chair in fact typically chaired the most powerful subcommittee. In the days before subcommittees had names, Chair Manny Cellar also chaired Subcommittee No. 5. But in the Senate, the full Judiciary Committee chair has been precluded from chairing a subcommittee. Given his great interest in copyright, when Senator Hatch became full committee chair, he abolished the subcommittee once again and handled copyright from the full committee. When Senator Spector took over at the full committee, the subcommittee was reinstated, with Senator Hatch as chair. But with Senator Leahy as full chair of Judiciary, the subcommittee has once again been dissolved.

Aside from the first 100 hours legislation advocated by Speaker Pelosi, the first session of a Congress is usually devoted to oversight hearings, and exploring proposed legislation. One exception may be music licensing. That issue received a great deal of attention last Congress. It may receive attention in the first session of this Congress and if so, some type of reform might be passed relatively early in the two-year period. But what is really needed is serious groundwork toward a new omnibus revision. The 1976 Act is over 30 years old. It is tired, and weighted down by ever longer and more complex provisions. Even the 1998 DMCA provisions are in need of revisiting to say nothing of redrafting. There are many other provisions that can fruitfully be revisited, like personal use exemptions (Section 1008 can hardly be considered a success in that respect), damages and secondary liability. But even more, it is a fair question to ask afresh what we want our copyright laws to be.

The 1976 Act was the culmination of over 21 years of study and effort. The need for a new Act seems even more compelling than it did in the past.

Wednesday, January 03, 2007

The Curse of the Mutant Copyright

Justice Scalia's 2003 opinion for a unanimous Court in Dastar v. Twentieth Century Fox, 123 S.Ct. 2041, coined the phrase "mutant copyright" to thwart efforts to obtain what he regarded as a backdoor right of attribution of authorship. The effort was blocked by construing the term origin in Section 43(a)(1)(A) of the Lanham Act to refer to origin of the physical goods and not to their creator. There is of course a limited attribution right in Section 104A of title 17, added in VARA, and it may be that the presence of this provision has now created the inference that Section 104A is the only permissible source for attribution rights.

Certainly that is how lower courts after Dastar seem to have approached the matter, most recently, in Judge Jed Rakoff's December 29 opinion in Antidote International Films, Inc. v. Bloomsbury Publishng, PLC, 06 Civ. 6114 (S.D.N.Y.). The author of the fictional book in question, the 2000 "Sarah" was Laura Albert, but she (and perhaps her publisher) contrived a very different persona for the work, that of J.T. Leroy, a male (the novel is about a 12 year old male prostitute, named Cherry Vanilla. Sarah is the name of the boy's mother, with whom he competes for tricks at truck stops). This hoax was one of a series of finctional works that have been marketed as autobiographical in order to boost sales. Ms. Albert broke new ground in this respect. Here is an interview with Ms. Albert in USA Today's PopCandy column (It is very hard not to break my New Year's resolution with that one).

Plaintiff in the case is a NY film production company. Defendants included Ms. Albert and her publisher. Plaintiff' had optioned the film rights to the novel, but after the fraud was exposed, it backed out and sued, in count I, under Section 43(a)(1)(A). Judge Rakoff held that the claim was foreclosed by Dastar. He also dismissed count II, brought under Section 43(a)(1)(B). Some commentators have argued the possibility of such a cause of action, but Judge Rakoff swept such a fine parsing of Dastar aside. Those in fear of a mutant copyright need not fear anymore.

Professor Rebecca Tushnet has a good discussion of the case at her excellent 43(b) blog.

Tuesday, January 02, 2007

Happy New Year, Praise the British

Yesterday was my birthday, and my resolution, made to my late mother (aleha ha-shalom), was to be a better person, and particularly less critical. Too many of my posts were critical, especially in tone. So, I resolved to be a kinder, gentler person in Bush 41's terminology (evoking perhaps Nancy Reagan's rejoinder "than whom?"). Perhaps something along the lines of AJ.P. Taylor's admonition to "have strong views lightly held." An easy way to do that is to focus on British scholarship, given its extremely high standards, and no better representative is the Oxford University Press journals.

Over the weekend I was reading two, one which has been around for 27 years, the other for barely one; both are excellent sources. I have read well over 1,000 opinions on statutory interpretation, hundreds of law review articles, and about a dozen books. There is a blog on the topic, Statutory Construction. (which has a delightful monthly feature "Worst statute in the World." But OUP puts out The Statute Review, a wonderful thrice a year journal that has been around for 27 years. Among recent articles are:

Noel Cox
Copyright in Statutes, Regulations, and Judicial Decisions in Common Law Jurisdictions: Public Ownership or Commercial Enterprise?

Edwin Tanner
Clear, Simple, and Precise Legislative Drafting: How Does a European Community Directive Fare?

Daniel Greenberg
The Nature of Legislative Intention and Its Implications for Legislative Drafting

All of these (and many more) are of interest, and I for one have always wondered how Europeans view the drafting quality of the EU Directives.

The other journal is the Journal of Intellectual Property Law and Practice. This journal has been published monthly since November 2005, under the editorship of Jeremy Phillips, co-founder of the great IP Kat blog (Meow to you!). The September 2006 issue has an article by Phil C. W. Chan "Copyright ownership in university students' academic works." The June 2006 issue has an article by Cerys Wyn-Davies and Nav Sunner "Inspiration is not infringement." The April issue has two interesting articles, one by Maarten Schut "Armani found to infringe copyright of Dutch shoe designer," and one by Guido Westkamp "Hyperlinks, circumvention technology and contributory infringement—a precarious tale from German jurisprudence." The journal has many topical features beyond articles and cuts across the whole swath of IP.

The only downside of the journals is their hefty subscription prices, but for those with Westlaw, The Statute Review is available at no extra charge on that service.