Thursday, May 31, 2007

Jehovah J. God Loses Copyright Case

A favorite law school case for personal jurisdiction is United States ex rel Mayo v. Satan and his Staff, 54 F.R.D. 282 (W.D.. Pa. 1971). There have been a number of copyright cases involving ther-worldy beings, see e.g., Penguin Book USA v. New Christian Church of Full Endeavor, Ltd., 2000 WL 1028634 (S.D.N.Y. 2000), in which Jesus was reputed to have been not only been insistent on asserting copyright, but on registering his claim with the Copyright Office, which led to expected difficulties. Most recently, Jehovah J. God and Jesus J. Christ lost a copyright case in Arizona, brought appropriately, pro se, but unsuccessful:

Jehovah J. GOD, Jesus J. Christ, William E. Moore, and Jehovah Witness Foundation, Inc., Plaintiff
No. CV 07-971-PHX-JAT.
May 24, 2007.

Jehovah J. God, pro se.
Jesus J. Christ, pro se.
William E. Moore, pro se.
Jehovah Witness Foundation, Inc, pro se.


JAMES A. TEILBORG, United States District Judge.
In considering the motion to proceed in forma pauperis, the Court has concluded that Plaintiff's complaint should be screened pursuant to U.S.C. § 1915(e)(2) before it is allowed to be served. Therefore, the Court will do so in this order.

A. U.S.C. § § 1915(e)(2)

Congress provided with respect to in forma pauperis cases that a district court “shall dismiss the case at any time if the court determines” that the “allegation of poverty is untrue” or that the “action or appeal” is “frivolous or malicious,” “fails to state a claim on which relief may be granted,” or “seeks monetary relief against a defendant who is immune from such relief.” 28 U.S .C. § 1915(e)(2). While much of section 1915 outlines how prisoners can file proceedings in forma pauperis, section 1915(e) applies to all in forma pauperis proceedings, not just those filed by prisoners. Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir.2000)(“section 1915(e) applies to all in forma pauperis complaints”). “It is also clear that section 1915(e) not only permits but requires a district court to dismiss an in forma pauperis complaint that fails to state a claim.” Id. Therefore, this court must dismiss an in forma pauperis complaint if it fails to state a claim or if it is frivolous or malicious.

“[A] complaint, containing both factual allegations and legal conclusions, is frivolous where it lacks an arguable basis either in law or in fact.” Neitzke v. Williams, 490 U.S. 319, 325 (1989). Furthermore, “a finding of factual frivolousness is appropriate when the facts alleged rise to the level of the irrational or wholly incredible, whether or not there are judicially recognized facts available to contradict them.” Denton v. Hernandez, 504 U.S. 25, 33 (1992). “A case is malicious if it was filed with the intention or desire to harm another.” Andrews v. King, 398 F.3d 1113, 1121 (9th Cir.2005).

B. Plaintiff's Complaint

Plaintiff's complaint in this case falls into the category of “the irrational or wholly incredible.” See Denton v. Hernandez, 504 U.S. 25, 33 (1992) (dismissal also appropriate when the facts alleged are “clearly baseless,” “fanciful,” “fantastic,” and/or “delusional.”). Plaintiff, God, claims that Defendant university is infringing his copyright by using his “autobiography,” namely, “Bible,” without paying him royalties. Complaint at 2. Plaintiff seeks 9.3 million dollars in damages. Id. at 1. The Court finds these allegations to rise to the level of being both fanciful and factually frivolous; accordingly, the Court will dismiss the Complaint without using the Marshals for service, nor putting Defendant to the task of responding to the Complaint. Further, because the Court finds these factual allegations to be incurable, the Court will not grant leave to amend. Therefore,

IT IS ORDERED that the Motion to Proceed in forma pauperis (Doc. # 4) is denied.

IT IS FURTHER ORDERED that the Complaint is dismissed, with prejudice, for the reasons stated herein and the Clerk of the Court shall enter judgment accordingly.

Wednesday, May 30, 2007

Deference to Copyright Office Registration Decisions

The muddied state of general Supreme Court jurisprudence on deference to agency actions, coupled with misconceptions held by a few courts about the registration process, has led to a confused state of affairs on deference to Copyright Office actions. The issue was presented recently in Darden v. Peters, 2007 WL 1501355 (4th Cir. May 24, 2007).

The flashpoint for Copyright Office deference is registration determinations, either individually in the exercise of an examiner's understanding of the basic registration requirements, or more globally in the form of registrations promulgated by the Office. The Copyright Act imposes obligations on the Copyright Office to examine applications for registration and to accept or reject them (section 410). Those determinations are to be made “in accordance with the provisions of this title,” meaning that Congress has delegated to the Office interpretation of registration questions, yet while still leaving the ultimate question of protectibility to the courts. This has created a unique hybrid situation, where regulations promulgated by the Office should be governed by Chevron, but whether any particular material is subject to protection will be decided by the courts, placing the Office's prior determination into either Skidmore or no deference. This hybrid is not accidental, and reflects the important distinction between “registrability” (the province of the Copyright Office) and “copyrightability” (the province of the courts).

An additional complicating factor is the presence of the statutory presumption in section 410(c). Section 410(c) provides prima facie status to a certificate of registration obtained within five years of first publication. When reviewing an issued certificate it seems odd to talk of deference to the Office; instead, the court is following a statutory presumption, albeit a presumption that arises from an agency action that is the result of delegated authority. Where there has been a rejection, no such presumption flows, but should there be any “deference” given to the rejection? The correct approach is to accord a rejection “some” deference. In one such case, Paul Morelli Design, Inc. v. Tiffany & Co, 200 F. Supp. 2d 482 (E.D. Pa. 2002), the following rationale was given for the some deference standard:

We believe this standard strikes the proper balance between a de novo review which plaintiff seeks and the heightened abuse of discretion found in some cases. … The statute, after all, gives the Register of Copyrights the right to intervene in this action. … There would be little point in allowing her to do so if the decision of her office were deemed to be meaningless, as the plaintiff contends. On the other hand, since the statute permits a party whose application was denied to sue for copyright infringement, Congress did not intend, in our view, narrowly to constrain a jury or a court from finding a rejected work to be copyrightable and infringed.

Darden v. Peters also dealt with a rejection, but in a very different context, review under the Administrative Procedures Act. An applicant whose claim has been rejected has the option to sue an infringer anyway (in which the “some deference” standard should apply), or sue the Register in federal court under the APA, in which case an abuse of discretion standard applied. Darden argued for a de novo standard, and even argued such a standard was constitutionally required. The court of appeals brushed this argument aside. Darden next argued that the Office applied the incorrect legal standard; that argument worked in the Atari v. Oman litigation, but not here because Darden was actually complaining about the Register’s application of the correct legal standard, and not the standard itself.

The bottom line is, if you have a potential defendant in hand, don’t go for the bush of APA review.

Tuesday, May 29, 2007

First Sale Fandango

There are a number of dances that go by the name fandango, but they generally share a showy nature; hence, as wikipedia observes: “As a result of the extravagant features of the dance, the word is used as a synonym for 'a quarrel', 'a big fuss' or 'a brilliant exploit'.” A recent, extravagant attempt to circumvent the first sale doctrine is recounted in NEGB, LLC v. Weinstein Company Holdings, LLC, 2007 WL 1454460 (D. Mass. May 18, 2007).

The first sale doctrine was created by courts, and received endorsement by the Supreme Court in Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908). It was codified the next year in the 1909 Act, and now resides in Section 109 of the 1976 and permits (with few exceptions) those who purchase a lawfully made copy of a work to sell it or otherwise dispose of that copy without the copyright owner’s permission.

Two hundred years of settled case law does not of course mean that copyright owners are happy about the situation, nor that attempts to undermine it have ceased. Sometimes these efforts have been successful and justifiably so: rental of phonorecords in the mid 1980s was not even a thinly veiled subterfuge for the encouragement of copying; software rental posed the same problem, so Congress gave copyright owners the ability to shut such uses down.

The NEGB case, however, was an old-fashioned effort, involving DVDs, to control legitimate rental. Plaintiffs were independent video rental business owners. Defendants were various entities associated with the Weinstein brothers who had struck an exclusive deal with Blockbuster to sell DVDs of theatrical and direct-to-video movies. Copies of these movies were, according to an interview with one of the defendants’ executives, to be branded with a Blockbuster logo, marked for sale only, and with a notice encouraging consumers to call a toll-free number if they rented the copy. The executive acknowledged the existence of the first sale doctrine, but expressed a desire to “control” the distribution of copies nevertheless.

Plaintiffs brought suit in state court alleging violation of state laws involving misleading statements and unfair and deceptive practices. Defendants removed to federal court, although the basis for the removal is not spelled out and is not self-evident to me. The state court had before removal ordered defendants to “re-author and reproduce” DVDs containing the ‘intended for sale only message. Defendants complained this would cost them several million dollars, “cause delays in distribution, and leave them vulnerable to suits from numerous retailers.” When those accused of infringement make such complaints, courts brush them aside as self-imposed.

Various hearings were held before the federal court, as recounted here:

On January 18, 2007, counsel appeared for argument on Plaintiffs' motion for a preliminary injunction. Notwithstanding Defendants' contentions to the contrary, the court noted its concern that Defendants' product labeling could give rise to a viable cause of action if such labeling implied criminality or wrongdoing on the part of rentailers such as Plaintiffs. However, based on Plaintiffs' inability to establish irreparable harm or a balance of harm in their favor, the court denied their motion for a preliminary injunction.

On February 2, 2007, Defendants moved to dismiss the complaint pursuant to Fed.R.Civ.P. 12(b)(6). Among other things, they argued that Plaintiffs could not satisfy Chapter 93A's jurisdictional requirement by showing that the conduct at issue occurred, or had its competitive impact, “primarily and substantially” in Massachusetts.

In response to this argument, Plaintiffs emphasized that “[t]he activity that forms the basis of the allegations in the Verified Complaint (distributing DVDs bearing the toll-free-number message) has yet to occur.” (Dkt. No. 26, Pls.' Opp'n to Defs.' Mot. to Dismiss 12.) Consequently, Plaintiffs took the position that it was premature to consider the question of “where exactly the threatened toll-free-number message would have its ‘primary’ impact.” ( Id. at 7.) After Defendants filed a reply brief, Plaintiff went one step further by acknowledging that

If the case was about nothing more than the intended-for-sale-only message, the Defendants might have an arguable point that “nothing in the alleged product labeling remotely suggests that plaintiffs are actually engaged in any criminal wrongdoing.” In and of itself, the intended-for-sale-only message would not imply criminality.... [T]he suggestion of wrongdoing is in the toll-free number notice....

On March 9, 2007, during oral presentations on the motion to dismiss, the argument took an unexpected turn. Noting Plaintiffs' concession that the “intended for sale only” message did not imply criminality, Defendants raised the question of whether this case remained ripe for judicial action since that message was the only “notice, assertion, or representation” that had been embedded. In other words, the conduct Plaintiffs considered actionable, embedding the message with the toll-free number in the DVD, had not occurred and might not ever occur.

Based on the lack of a perceived present harm, the court dismissed the case on ripeness grounds.

Friday, May 25, 2007

You Can't Afford for Us Not to Play

The 1909 U.S. Copyright Act limited the public performance right for musical compositions to those for profit. The term "for profit" wasn't defined, so courts stepped into the breach. The most famous opinion on point is Justice Holmes' in Herbert v. Shanley, 242 U.S. 591, 595 (1917), an early test case brought by ASCAP, to establish that a hotel which employed musicians to play for the public while they dined, was engaged in a public performance. The Court held it was, Holmes remarking: "If music did not pay, it would be given up. If it pays, it pays out of the public's pocket. Whether it pays or not, the purpose for employing it is profit and that is enough."

I have thought of this eminenty quotable remark every time I go to the Caribbean and am sitting on a beautiful, quiet beach, only to be disturbed by a musician or two, hired by the hotel. The music is always horrific, like an electric piano version of Eleanor Rigby. Once, in Barbados, I begged the musicians to at least keep the volume down. They declined. I asked them how much it would cost for them not to play. In a line straight out of the Marx Brothers' movie "Animal Crackers," they said I couldn't afford that. This last week, in St. Maartens, it happened again: stunning beach, very quiet, and then the musicians came. This time I didn't even ask, but one has to question the accuracy of Holmes' statement: hotels can simply make mistakes: I imagine that if a poll was taken of customers, overwhelmingly, people would vote for no music. I would gladly pay a surcharge for musicians not to play, reversing Holmes' confident belief that the performance is of value: it is the non-performance that is more valuable. Silence is golden after all.

Friday, May 18, 2007

Whose Law Applies After a Venue Transfer

In finishing up my first update on my treatise (see posting here), I came across a point I had meant to discuss but forgot; I forgot because it is an issue one rarely encounters and for good reason: the issue is so outre that when one hears it, you say, "huh?" It is one of those questions that as an associate you dread: a partner comes and asks you to research an issue that you never thought of because you can't imagine anyone making the argument; these are the worst type of issues to research, much like finding a case that says the sun really does rise in the East and set in the West.

The issue is this: when a court grants a motion to transfer pursuant to 28 U.S.C. Section 1404(a), whose law applies, the law of the transferring court or the law of the court to which the case has been transferred? In an entirely federal field of law like copyright, there are nevertheless issues on which the circuits diverge. In Auscape International v. National Geographic Society, 409 F. Supp.2d 235 (S.D.N.Y. 2004), Judge Lewis Kaplan did the equivalent of a judicial double take at the argument that because the case had been transferred to him from California, he was to use the Ninth Circuit's interpretation of copyright law, in particular that circuit's insane opinion in Silvers v. Sony Pictures Entertainment, Inc., 330 F.3d 1204 (9th Cir, 2003)(later reversed en banc, 402 F3d 881 (9th Cir. 2005)), permitting assignment of the mere right to sue.

The law is clear: the court to whom a case is transferred in a copyright case applies the law of its own circuit.

Thursday, May 17, 2007

The Beat Ends Here

Striking similarity and experts are, for me, a toxic combination. Striking similarity is the last refuge of delusional plaintiffs who have failed to meet the pitiably low standard of showing a reasonable opportunity of access: experts are the vehicle used to help such plaintiffs survive a summary judgment motion and get to a jury. Not all experts are, as one circuit judge described them to me “paid liars;” some attempt to preserve their integrity while pushing as far as they can for their client. When they do so, however, it is unlikely they are of any use to their client, who needs them to opine against the facts. That’s what happened in an outstanding opinion by Judge William Pauley, Vargas v. Transeau, 2007 WL 1346618 (S.D.N.Y. May 9, 2007).

Here are the facts, paraphrased from the court’s opinion. Plaintiffs Ralph Vargas and Bland-Ricky Roberts alleged that Defendants' sound recording titled “Aparthenonia” was a copy of Plaintiffs' musical composition and recording titled “Bust Dat Groove Without Ride” (“BDG”). BDG is a live drumming performance by Vargas comprising one measure of percussion music looped 27 times. The composition utilizes a high-hat cymbal, snare drum, bass drum and “ghost notes.” According to Plaintiffs, a ghost note is a unique percussion sound with characteristics of both a tom-tom drum and a snare drum.

Aparthenonia,” a song Transeau composed in the year 2000, utilizes between one bar and two and one-quarter bars of drum music looped for nine seconds. (Like BDG, Aparthenonia is composed of a high-hat, snare drum, bass drum and ghost notes. Aparthenonia was included in a commercial jingle for the drug Celebrex, as well as Transeau's album titled “Breakz from the Nu Skool,” which was manufactured, distributed, sold and licensed by defendant East West. Transeau contends that he created Aparthenonia on his tour bus using a laptop computer and music-generation software called Propellerhead Reason (“Reason”) Breakz from the Nu Skool contains 403 separate beats that Transeau contends he created on Reason. Plaintiffs conceded that access has not been proven and, therefore, relied solely on the contention that BDG and Aparthenonia are strikingly similar.

And that’s where the experts were trotted out. As discussed by Judge Pauley. First came defendant’s expert, who attempted to show independent creation:

Defendants offer the testimony of Dr. Richard Boulanger, a Professor of Music Synthesis at Berklee College of Music. Boulanger compared BDG and Aparthenonia using Fast Fourier Transform (“FFT”) spectral analysis, which Plaintiffs concede is an appropriate method for determining whether Aparthenonia is a digitally edited copy of BDG. FFT converts sounds into a “frequency-domain representation,” i.e., a visual display of the sound's “unique timbre, spectrum [and] color.” An FFT analysis “separate[s] out all the components in a complex sound and show[s] how they evolve in time and contribute to make up the sound that we identify as unique.”FFT analysis can reveal the characteristics of sounds with much greater precision than the unaided ear.Comparing the FFT representations of BDG and Aparthenonia, Boulanger concluded that “the audio source material used in Aparthenonia is unique and original, and is not at all based on or copied or derived from [BDG].”

Then came plaintiff’s experts, who either did not support plaintiffs or contradicted each other:

Plaintiffs' FFT expert, Dr. Stephen Smith, confirmed that Aparthenonia was not digitally copied from BDG.Smith identified two categories of “copying” that may be observed in an FFT analysis: “direct” and “associated .” “Direct copies” occur when a sound is copied electronically. An FFT analysis of direct copies will involve “an identical match in both waveform and frequency spectra [with] [t]he only difference [resulting] from whatever degradation is introduced by the copying procedure.” Thus, direct copies are identical sounds with slight variations arising from the copying process itself. “Associated copies” are recorded sounds that are not “exactly alike,” but are “very similar to each other in both waveform and frequency spectra.” The example of an associated copy provided by Smith is the same drummer striking the same drum twice. Thus, an associated “copy” is not actually a copy, but rather an independently created sound that is similar to the first sound. Crucially, Smith found associated copies but no direct copies in comparing BDG to Aparthenonia. Smith's expert testimony therefore undermines Plaintiffs' theory of the case, which is that Transeau digitally copied BDG.

Plaintiffs also proffer the opinion of a purported percussion expert, Matthew Ritter, who contends (without reliance on a waveform or spectral analysis) that “Aparthenonia is a digitally edited version of [BDG].” Yet Ritter equivocates as to the precise level of similarity between the two songs. At one point in his declaration, Ritter suggests that the drum sounds in Aparthenonia and BDG are “identical.” (Leaving aside that this opinion directly contradicts Smith's conclusions, Ritter backpeddles later in his declaration, asserting only that “Aparthenonia is significantly similar, if not identical, to BDG.” Ritter also waffled about the level of similarity between the two works at his deposition.

After noting that the standard for striking similarity is stringent and that the evidence must preclude independent creation, Judge Pauley noted that plaintiffs’ witnesses hadn’t ruled out independent creation, whereas defendant’s had established it. Here is the money quote:

Plaintiffs' case on summary judgment boils down to the contention that summary judgment may be avoided by producing any expert witness who testifies that one sound was sampled from another, regardless of how conclusory the statement may be and regardless of whether it contradicts the testimony of Plaintiffs' other witnesses. That is not the law.


Wednesday, May 16, 2007

The Crime of Attempted Copyright Infringement

Former Deputy Attorney General James Comey provided dramatic testimony yesterday to the Senate Judiciary Committee, including a visit by then White House Counsel Alberto Gonzales and former chief of staff Andrew Card to Attorney General John Ashcroft's hospital bed. Here is a link to the transcript, which is a must-read. The Volokh Conspiracy has some excellent discussion on the testimony, but this excerpt will suffice:

[I]t seems that most of the highest-level officials in DOJ were ready to resign over the NSA Surveillance program when the White House decided to continue it without DOJ approval. The Office of Legal Counsel under Jack Goldsmith had come up with parameters under which DOJ was willing to approve the program as legal — perhaps within the scope of the AUMF? who knows — and it sounds like the then-existing program was broader than what OLC thought was permitted. Comey agreed with OLC's legal analysis, so he wasn't willing to give DOJ's approval to the program. So Card and Gonzales (then WH Counsel) go to Ashcroft at the hospital to try to persuade Ashcroft to overrule Comey. Comey gets word of what is happening, and he gets to the hospital first and tries to get Ashcroft ready for Card and Gonzales. Comey explains:
And so I raced to the hospital room, entered. And Mrs. Ashcroft was standing by the hospital bed, Mr. Ashcroft was lying down in the bed, the room was darkened. And I immediately began speaking to him, trying to orient him as to time and place, and try to see if he could focus on what was happening, and it wasn’t clear to me that he could. He seemed pretty bad off . . . I tried to see if I could help him get oriented. As I said, it wasn’t clear that I had succeeded. Soon Goldmsith and the ADAG are there by Ashcroft's bedside, and a few minutes later Gonzales and Card arrive. Comey explains what happened next:
They greeted the attorney general very briefly. And then Mr. Gonzales began to discuss why they were there — to seek his approval . . . . And Attorney General Ashcroft then stunned me. He lifted his head off the pillow and in very strong terms expressed his view of the matter, rich in both substance and fact, which stunned me — drawn from the hour-long meeting we’d had a week earlier — and in very strong terms expressed himself, and then laid his head back down on the pillow, seemed spent, and said to them, But that doesn’t matter, because I’m not the attorney general. . . . There is the attorney general, and he pointed to me, and I was just to his left. (Hollywood, are you getting this?) Anyway, the White House ended up not getting DOJ approval for the next period of the program; the President authorized the order for another 45-day window without DOJ's signature. This led the top people at DOJ to move towards resigning. As Comey puts it, "I didn't believe that as the chief law enforcement officer in the country I could stay when they had gone ahead and done something that I had said I could find no legal basis for." As I understand it, Comey, FBI Director Mueller, AG Ashcroft, and several other high-level officials were ready to resign. The crisis was defused when President met with Comey 1-on-1. It sounds like the President personally either gave in or reached a compromise with Comey (it's not clear to me which) that refashioned the program in a way that DOJ was willing to approve.

As others have pointed out, the Justice Department we are speaking of already had the most expansive view of Presidential power in modern times, so the dispute should be viewed in that context. As Mr. Comey was preparing his testimony, Present Attorney General Gonzales, in what one commentator described as a "Wag the Dog" tactic, has been shopping around an unprecedented proposal to beef up our criminal IP laws - already on steroids - to include a number of innovative crimes. Since we are not a Parliamentary system, Alberto has to go hat in hand to a member of Congress, and right now there are no takers. But here are some of the highlights:

The proposal asks for forfeiture provisions allowing the government to seize any property used in the commission of a crime; this is already the case for the actual infringing goods and articles used to manufacture them, but Gonzales is thinking big, like seizing the house the articles are kept in, money in your bank account, your car. A new crime of exporting would be adding, and in line with the fascism that is one of the hallmarks of the current Administration, the government would be given wiretapping authority when investigating copyright and trademark cases. And then, there is the new crime of "attempted" copyright. As Wired observes: "Th[e] new "attempt" provision that wouldn't require the actual commission of a violation, the bill could conceivably be expanded, in an extreme case, to interpret a computer full of music next to a spindle of blank CDs as an act of piracy."

We should never say things can't worse or that proposals for even more outrageous protection can't be proposed, but I am heartened indeed that there are no takers so far.

Tuesday, May 15, 2007

Copyright Stamp Mystery

A daily must read for me (and my cats) is the UK IPkat blog. They have the wittiest stories and the greatest pictures. They have posted a mystery and perhaps readers and/or their felines on this side of the pond can help solve it. Here it is:

Copyright stamp mystery

The IPKat's knowledge of all things connected with intellectual property is legendary, but it is probably based on the fact that, unlike most cats, the Kat has four brains and numerous degrees and qualifications. However, there are still many things of which the IPKat has to confess his woeful ignorance, and in such a circumstance he is very happy to draw on the combined knowledge and intelligence of his readers.

Recently the IPKat received an email from his friend Nadine Eriksson-Smith (Administrator, AHRC Research Centre for Studies in Intellectual Property and Technology Law, School of Law, University of Edinburgh). It reads, in relevant part:

"In the back of my World Classics edition of Stevenson's The Master of Ballantrae there is what appears to be some kind of copyright stamp. My collegues here are unsure of the function of this. The novel was first published in 1889 and the edition I have was published in 1936, after Stevenson's death in 1894. Any ideas as to what the stamp is for are most welcome".
The stamp is handsomely illustrated, above, right. The easy answer is to say that the stamp is there to raise money and it looks as though it may be something to do with author's royalties - but the IPKat feels that more explanation is needed and calls on his scholarly readers to help him answer Nadine's query. If you know anything about this stamp, can you please post the answer as a Comment below?

More on The Master of Ballantrae here
More on Robert Louis Stevenson here
More on Ballantrae here

Monday, May 14, 2007

Preemption Pleading Pitfalls

Say that three times fast and you may not fall into one, specifically, pleading multiple claims and incorporating by reference all previous allegations. This is a big problem where claim one is a copyright claim, and claim two asserts a claim for unfair competition. Some attorneys lazily slap on the label unfair competition, incorporate by reference all prior allegations, and then make the bald statement that defendant’s conduct constitutes unfair competition. In such circumstances, a Rule 12(b) motion to dismiss may be granted, see Meeco Mfg. Co. v. True Value Co., 2007 WL 1051259 (W.D. Wash. April 4, 2007); Blue Nile, Inc. v., Inc., 2007 WL 172613 (W.D. Wash. Jan. 18, 2007). Claiming that one is entitled to plead in the alternative will cut it: one has no right to plead a preempted state claim in the alternative, Meeco Mfg., 2007 WL 1051259, at*3; Moser Pilon Architects, LLC v. HNTB Corp., 2006 WL 2331013, at *11 (D. Conn. Aug. 8, 2006).

The contrary opinion in Ulloa v. Universal Music and Video Distribution Corp., 2004 WL 840279 (S.D. N.Y. 2004) and 303 F. Supp.2d 409 (S.D.N.Y. 2004), are baffling. Plaintiff asserted claims for copyright, infringement, declaration of joint ownership Lanham Act § 43(a), and unjust enrichment. The first two claims could be pled in the alternative, i.e., if defendant was not a joint author, it was an infringement. Defendant rightly argued that the unjust enrichment claim was preempted, but the court held, laconically, that plaintiff was entitled plead it “in the alternative to [its] copyright infringement claim.” 303 F. Supp.2d at 419. Pleading in the alternative is not the issue, however. The issue is whether the claim pled in the alternative was preempted, as it most arguably was. On a motion for reconsideration, the court attempted to explain its decision, but only dug a deeper hole by stating: “Although Plaintiff is not entitled to bring an unjust enrichment claim that is identical to her copyright infringement claim, the Court's previous opinion explicitly stated that the unjust enrichment claim was construed as a claim in the alternative to the copyright claim and further stated that the unjust enrichment claim was not preempted ‘[i]f a jury finds that Plaintiff has no copyright in the composition or sound recording of the Vocal Phrase'—because, as an employee under the work for hire doctrine, the employer would be the copyright author—‘or that she licensed her copyrights to Defendants,’ ” 2004 WL 840279 at *1846–1847. This passage misses the point: ownership (or a lack thereof) is not related to preemption. Ulloa is erroneously decided.

Friday, May 11, 2007

Barton Beebe's Fair Use Study

I have been studying fair use seriously for over 25 years. I have read every English and U.S. fair use/fair dealing decision I could find, many of them many times over; I have read a voluminous amount of commentary on the subject; read and re-read the legislative history of Section 107 and spoke to those involved in that process; testified before Congress on the subject, and as a Congressional staffer, I was heavily involved in the 1992 amendments on fair use and wrote the House Judiciary Committee report on the subject; as a Policy Planning Advisor to the Register of Copyrights I went to Brussels to discuss with European Union officials how fair use works and how it might work with software reverse engineering; as a law professor I spent years teaching the subject; I wrote a treatise on fair use and many law review articles, gave many speeches on the subject and participated in many panels; for 20 years I have been discussing the subject with friends who are court of appeals judges and who have issued some of the great fair use opinions; in private practice, I have argued fair use cases at both the trial and appellate level, and counseled clients on whether uses are permissible.

Yet, despite all this concentrated attention, I doubt I understand fair use much better than when I was a law student. No doubt this mostly reflects my own shortcomings; those with greater abilities or self-confidence may feel differently. But aside from my own intellectual infirmities, there are reasons anyone might feel uneasy about coming to grips with the subject: it is ad hoc, fact-oriented, allegedly completely equitable in nature, and dependent on a shadowy weighing of vague factors, to say nothing of the luck of the draw in the decision maker. On top of that, there is the long common law history but since 1978, a statutory recognition in Section 107 (often misdescribed as a codification). The effect of this statutory recognition has been entirely negative, frequently disastrously so, as in the Sony presumptions and a tendency toward mechanistic, fair use by the numbers adjudicating. The Supreme Court's 2 Live Crew case helped loosen things up, but any student of fair use has to be aware of the history of the doctrine, and as well as the troughs and valleys of its treatment by the Supreme Court and by the lower courts.

Professor Barton Beebe has undertaken to understand how fair use has been decided on the ground, in a article to be published soon in the Penn Law Review, but available on his website, here. Entitled "An Empirical Study of U.S. Copyright Fair Use Opinions, 1978-2005," Professor Beebe canvasses how courts have treated each factor, the phenomenon of stampeding, and reversal rates. It is an important work that should be carefully studied. Whether it will help advocates in actual cases is a different issue, and is complicated by the strong divergence between the rhetoric employed by courts in reaching results and how they reach those results. Even when courts say, for example, that they are engaging in an analysis of whether defendant's use is "transformative," what any particular judge means by transformative may vary greatly. In the end, like beauty, fair use tends to be in the eye of the beholder.

Thursday, May 10, 2007

Copyright Office Deposit and Trade Secrets

Ever since the Supreme Court's 1974 decision in Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, federal copyright and state trade secret protection have freely co-existed. The Copyright Office has been sensitive to the desire of owners of trade secrets embodied in copyrighted works to register, by promulgating regulations permitting the redaction of trade secret or other confidential business information, 27 C.F.R. sec. 202.20(c)(2)(vii)(A)(2):

( 2 ) Where the program contains trade secret material, the page or equivalent unit containing the copyright notice, if any, plus one of the following: the first and last 25 pages or equivalent units of source code with portions of the source code containing trade secrets blocked-out, provided that the blocked-out portions are proportionately less than the material remaining, and the deposit reveals an appreciable amount of original computer code; or the first and last 10 pages or equivalent units of source code alone with no blocked-out portions; or the first and last 25 pages of object code, together with any 10 or more consecutive pages of source code with no blocked-out portions; or for programs consisting of, or less than, 50 pages or equivalent units, entire source code with the trade secret portions blocked-out, provided that the blocked-out portions are proportionately less than the material remaining, and the remaining portion reveals an appreciable amount of original computer code. If the copyright claim is in a revision not contained in the first and last 25 pages, the deposit shall consist of either 20 pages of source code representative of the revised material with no blocked-out portions, or any 50 pages of source code representative of the revised material with portions of the source code containing trade secrets blocked-out, provided that the blocked-out portions are proportionately less than the material remaining and the deposit reveals an appreciable amount of original computer code. Whatever method is used to block out trade secret material, at least an appreciable amount of original computer code must remain visible.

Where material is redacted pursuant to this regulation, its trade secret status under state law is not compromised. But what if the material is not redacted? Does deposit with the Copyright Office result in forfeiture of trade secret protection? The issue is one of state law, and has been addressed a number of times, most recently in Third Party Verification, Inc. v. Signaturelink, Inc., 2007 WL 1288361 (M.D. Fla. May 2, 2007), in which it appears that only a two page version of the work with no redaction was made. Eight months after the close of discovery, plaintiff claimed that it intended to file more code, and in redacted form. As a sanction for making a later claim, the court limited plaintiff's claim to the two pages registered, an appropriate result in any event.

Section 408 of the Copyright Act sets forth the deposit requirements for copyright examination purposes and is relevant to placing copyright deposits on the public record. Pursuant to 17 U.S.C.A. § 704(a), material deposited becomes the property of the U.S. government. Section 705(b) mandates that all copies deposited with the Office shall be open to public inspection. The Copyright Office therefore has no authority to deny the public the right to inspect deposit copies. (The issue of making copies of material deposited with the Copyright Office is a separate matter from inspection of copies and is governed by a different statutory provision, 17 U.S.C.§ 706(b))

Although one court, Compuware Corporation v. Serena Software International, Inc., 77 F. Supp. 2d 816 (E.D. Mich. 1999), held that there was no forfeiture from the deposit of unredcated material, the Compuware court's discussion of the deposit practices of the Copyright Office reflects confusion between the making of copies and inspection. Other courts that have looked at the issue have correctly decided that deposit with the Copyright Office makes the deposit copy publicly available, and does therefore result in forfeiture of trade secret or confidential protection, Compuware Corp. v. Serena Software Intern., Inc., Tedder Boat Ramp Systems, Inc. v. Hillsborough County, Fla., 54 F. Supp. 2d 1300 (M.D. Fla. 1999); Cinebase Software, Inc. v. Media Guaranty Trust, Inc., 1998 WL 661465 (N.D. Cal. 1998) (preserving trade secrets only for redacted material); Phillips v. Avis, Inc., 1996 WL 288782 (N.D. Ill. 1996) (New York law). Although one court has seemingly held that the party arguing forfeiture provide evidence that individuals actually reviewed the material at the Copyright Office, See Computer Associates Intern., Inc. v. American Fundware, Inc., 831 F. Supp. 1516, 1529 (D. Colo. 1993) (“To prove that CA could no longer claim that the SPO programs were trade secrets, AFW would have to show that it or someone in the industry actually learned of CA's trade secrets by reviewing the limited information on file with the Copyright Office”). The Copyright Office keeps records of those who have obtained access to deposit copies, so where proof of such access is required, it should be available.

Wednesday, May 09, 2007

Lightning Strikes Copyright Owner Twice

In July I did a post on the United States as a DMCA scofflaw for asserting sovereign immunity against a charge that it had violated the anti-circumvention provisions of Section 10201. Judge Block of the Federal Claims Court tossed out the charge on June 29, 2006, 71 Fed. Cl. 768 (2006). The suit involved a computer program written by an Air Force sergeant (Davenport) in his off-hours, and which he permitted the Air Force to use. (Blueport is the company the sergeant and his uncle set up to exploit the work). Rather than engage in a continuing license with Blueport, the Air Force hired a private contractor to reverse engineer it, but only after hacking into the original program and disabling its expiration date, in order to "buy" time while its private contractor completed the reverse engineered product.

On May 7th, Judge Bock issued a new opinion on Blueport's straight-up copyright claim, 2007 WL 1321740 (Fed. Cl. May 7, 2007). Once again, Judge Block ruled for the government on jurisdictional grounds, but not after conducting a five day trial. The basis for the court's ruling is a novel interpretation of 28 USC Sec. 1498(b):

b) Hereafter, whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages for such infringement, including the minimum statutory damages as set forth in section 504(c) of title 17, United States Code: Provided, That a Government employee shall have a right of action against the Government under this subsection except where he was in a position to order, influence, or induce use of the copyrighted work by the Government.

The relevant part is the proviso at the end. The proviso is intended to prevent those who are in a position to get the government to use their works from turning around and suing the government once they do so. That was hardly the case with Technical Sergeant Davenport. Davenport provided copies to members of the Air Force and provided technical assistance. Outrageously, Judge Block used Davenport's helpfulness as an indication that he either actively induced use or was in a position to. Indeed, as Judge Block acknowledged, "the parties do not dispute that Davenport's rank of Technical Sergeant prohibited him from ordering the use of" the program. Even more importantly, though, Davenport's beef was not with what happened during this period, but what happened afterwards, in disabling the time expiration, and putting out a competing product.

Judge Block's sympathy with the government is apparent, in my opinion, from the "Top Gun" introductory paragraphs, and that sympathy seems to have led him to clearly erroneous factual and legal conclusions. Round two to the scofflaws.

Tuesday, May 08, 2007

Copyright in Outside Counsel's Work

Outside counsel perform many tasks for their clients outside of litigation, including drafting corporate documents and forms. When outside clients draft such documents at the request of their clients, who owns the copyright, assuming an original work? This issue was recently addressed by the Federal Circuit in Pods, Inc. v. Porta Stor, Inc., 2007 WL 1226740 (Fed. Cir. April 27, 2007)(available also at the Federal Circuit's website).

The parties were storage and moving companies that deliver storage containers to customers. Plaintiff had a patent on an apparatus and method for lifting a storage container from the ground on to a transport vehicle or vice versa, which explains how the case got to the Federal Circuit, since plaintiff alleged defendant's apparatus infringed this patent. There was a copyright claim too, and under Federal Circuit rules, that circuit applies the law from the circuit in which the district court sat; that meant in this case the law of the Eleventh Circuit. The copyright claim was alleged reproduction of a rental agreement. The whole case went to a jury, except the copyright claim, which the district court kept from the jury, holding as a matter of law that plaintiff did not own the copyright in the rental agreement since it found that agreement had been drafted by its outside counsel. Plaintiff did not argue work for hire under the second prong, and obviously failed to prevail on the first prong.

On appeal, the Federal Circuit reversed the grant of summary judgment, sending the copyright claim back for trial. The reversal was based on testimony indicating that joint authorship was possible. This possibility stemmed from the following trial testimony:

The only evidence at trial on the issue of joint ownership was the testimony of PODS president and CEO Peter Warhurst. On direct examination, Warhurst testified that PODS “went back to the [outside] attorney that helped draft the original mini-storage contract and he ... modified it for the uniqueness of ... the PODS business.” Likewise, when asked whether a document was “the rental agreement that the lawyer developed with your input,” Warhurst said “[t]hat's correct.” Id. (emphasis added). Similarly, he testified on cross-examination as follows:

Q: Who wrote the document for you?

A: The, uh-the lease agreement?

Q: Yes.

A: I believe that it was the outside counsel that we had hired.


Q: And the attorney who wrote the original document, Mr. Silver-Silverman?

A: I believe that's who we used at that time, yes.

Q: He was an attorney who had had [sic] an office, he wasn't an employee of PODS, was he?

A: Correct.

However, on redirect examination, Warhurst testified as follows:

Q: You are the president of Pods, Inc.?

A: I am.

Q: And ... on your executive group are vice-presidents, am I correct?

A: Yes, sir.

Q: Would it be fair to say that all of the executive group had some participation in the creation of that unique rental agreement in conjunction with the lawyer?

A: Uh, my staff and the lawyers worked together to create the document, yes, sir.

J.A. at 2135 (emphasis added).

Based on this testimony (and in particular the very leading question asked on redirect,
Would it be fair to say that all of the executive group had some participation in the creation of that unique rental agreement in conjunction with the lawyer?, the Federal Circuit wrote:

Warhurst's testimony is inconsistent as to whether the outside counsel was the sole author or whether the outside counsel and PODS employees jointly created the work. It is also unclear as to the extent of the employee contributions. Mere participation in, contributions to, and review of the work of an independent contractor by PODS employees would not necessarily create a joint work. See M.G.B. Homes, 903 F.2d at 1492-93 (finding no co-ownership where home builder reviewed architect's drawings, made suggestions and corrections, and had final approval authority). The evidence is plainly insufficient to warrant JMOL in favor of PODS on the question of joint ownership, and the district court erred in granting JMOL.

The question then becomes whether to direct the award of JMOL in favor of Porta Stor or to remand for a new trial. Despite the somewhat skimpy record as to employee contribution, we cannot say that “a reasonable jury would not have a legally sufficient evidentiary basis to find for [PODS] on [the copyright ownership] issue.” Fed.R.Civ.P. 50(a)(1). A jury could have believed that the contributions of the PODS employees were sufficiently significant to find the employees joint authors of the work.

Thus, we conclude that the district court erred in granting JMOL on copyright infringement and that the jury should have been permitted to determine whether PODS had carried its burden to establish ownership of the copyright. We therefore remand the case to the district court for the limited purpose of holding a new trial on the copyright infringement issue solely on the theory of joint ownership.

Friday, May 04, 2007

Section 104 and the Praetorian Guard

The praetorians were bodyguards for the Roman emperors. As noted by wikipedia: "With the right amount of money, or at will, they assassinated emperors, bullied their own prefects, or turned on the people of Rome. In 41 Caligula was killed by conspirators from the senatorial class and from the Guard. The Praetorians placed Claudius on the throne, daring the Senate to oppose their decision." (See this wikipedia link). What does this have to do with copyright, and particular Section 104, which concerns national eligibility? In response to an earlier posting on Section 104A and GATT restoration, I have had a back-and-forth with a European commentator about Berne and the rule of the shorter term. I had noted that the United States does not apply the rule of the shorter term found in Berne and since Berne is not self-executing in the U.S., U.S. courts are to apply title 17 to U.S. and foreign citizens alike for term purposes. (Section 104A(h)(6)(B) denies restoration if the work is in the pubic domain in the country of origin throgh expiration of term). Here was the reply:

All around the world, Berne convention is not self-executing in national legislation, and national legislatures specify national terms of protection, just like in the US. But the syllogism is not applied: unless otherwise specified, the rule of the shorter term (Berne convention, art. 7-8) is used as a jurisprudential interpretation for material first published abroad: when the term of protection has expired in the country of origin, it is not protected by national law, unless otherwise specified (This is interpreted as the national intention, since interpreting it the other way around would make the shorter term clause useless).

There is indeed 17 U.S.C. 104-c that may be interpreted as a specific rule on content and duration, but on the other hand, it can also be interpreted as simply being the US transposition of Berne convention art. 5-2: given the provision made by the rule of the shorter term, its effect on the protection term is ambiguous. I cannot understand why the worldwide jurisprudential interpretation should be different in the U.S.: is it a pretorian interpretation, a general principle, or a specific law?

I don't know what a praetorian interpretation is, but perhaps it is being suggested that the U.S. rules on term represent a rogue element, a violent attack on the corpus of international copyright jurisprudence. Given our current Administration it is easy to appreciate why Europeans might be led to think this is another example of "You're either with us or you're against us," but the facts are quite different.

To begin with, Section 104 was drafted before we joined Berne and thus cannot be said to represent an attempt to be different from any international consensus on the rule of the shorter term. Section 104 is, moreover, consistent with the way the U.S. Congress has always dealt with term: we have always applied the same term of protection for all works and all authors: its a one-size fits all approach. (Sound recordings representing the most prominent example of U.S. law being more generous than foreign law). This of course doesn't excuse Congress from addressing the rule of the shorter term in its Berne implementing legislation. Article 7(8) states: "In any case, the term shall be governed by the legislation of the country where protection is claimed; however, unless the legislation of that country otherwise provides, the term shall not exceed the term fixed in the country of origin of the work." As I interpret this, Article 7(8) doesn't require any country to apply the rule of the shorter term; countries are free to apply the domestic term to works of foreign origin (so long as it is at least life plus 50). That's what the U.S. has done. Section 104 assimilates foreign citizens, and, in Section 302 and 303 grants them the same term as U.S. authors. I don't see how this makes Article 7(8) "useless," since that provision gives countries a choice. If Article 7(8) mandated application of rule of the shorter term, then I could see criticism of the U.S. for failing to comply with a treaty obligation, but that's not the case, and Artilce 7(8) wod read differntly too, something like: "In all cases, the term shall not exceed the term fixed in the country of origin of the work." And, it should not be overlooked that in every case where the rule of the shorter term could be applied, because it isn't, the U.S. approach results in foreign works being granted a longer term than they get in their country of origin.

As for the question of courts interpreting national intention by applying the rule of the shorter term, this is where non-Berne self-execution comes into play. In the United States, national intention is usually grounded in a statute. Since U.S. courts have been epxressly told by the U.S. Congress not to apply Berne, but to apply title 17, that's what they do, and a plain reading of title 17 leads to granting foreign and U.S. works the same term. It is purely a question of statutory interpretation: no U.S. court, reading the plain words of Section 104 would think that it embodies the rule of the shorter term; contrary to the European commentator, there is no way to read Section 104 and think it carves out any special rules on duration for foreign works; that foreign courts may do so must come from a different interpretative tradition, that of reading a treaty into domestic law. (I would add that reading a treaty into domestic law and making the treaty self-executing is a very fine line). U.S. courts were, however, told in the Berne implementing legislation not to do that. In short, my answer is that the U.S. approach is consistent with international law, namely the choice given countries in Article 7(8) to legislate on the issue in domestic law. That other countries, either directly, or through court interpretations, have chosen differently, does not make us praetorians.

It is worth pointing out that in the one instance in which a court could write on a blank slate -- the New York Court of Appeals Capitol Records v. Naxos case -- in deciding, whether under state law, pre-1972 sound recordings would have the rule of the shorter term applied , the court held it would not apply the rule of the shorter term. So for us, Rubicon is a wine, not a river.

Thursday, May 03, 2007

Section 201(c) and Photographs

In 2001, the Supreme Court handed won its opinion in Tasini v. New York Times, 533 U.S. 483 an opinion by Justice Ginsburg. That opinion was decided on the revision prong of Section 201(c), which reads:

(c) Contributions to Collective Works. — Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

The Court held that by authorizing the reproduction of free-lancers’ works in different databases (NEXIS and the GPO), the Times was found to fall outside the 201(c) privilege. I agree the Times should have lost, but think there was a simpler, more-intuitive ground: There is no doubt that NEXIS, the GPO, and other third-party collective works are “entirely different collective works” from “that particular collective work,” i.e., the issue of The New York Times in which the contribution originally appeared. One need not, therefore, have worried about whether there was any “revision of that collective work” since the collective work at issue was not “that particular collective work.”

An April 30th opinion by Judge Raymond Fischer of the Ninth Circuit, Jarvis v. K2, Inc., 2007 WL 1239222 (9th Cir. April 30, 2007), explores another aspect of Section 201(c), the difference between derivative works and collective works. (HT to Bakari Brock). (This link will take you to the opinion and a link to exhibits). The opinion is very well written and reasoned: the damages part of the opinion should also be carefully studied, as the photographer plaintiff cleaned up big-time.

Jarvis delivered photographs (lots of them) to K2, a maker of outdoor sporting goods under some unique contractual provisions very favorable to Jarvis, and many of which K2 appears to have breached. The 201(c) issue arose out of K2’s making collage advertisements out of 24 of Jarvis’ photos, rather than using them as straight reproductions. The district court found that the collage was a collective work and that K2’s conduct was excused by Section 201(c). The court of appeals reversed:

[T]he collage ads were derivative rather than collective works. In accordance with his usual practice, Jarvis delivered all of his images to K2 in the form of identical square slides. The collage ads did not merely compile these slides as an album might, or as Jarvis' own website does. To the contrary, the ads shrank, expanded, distorted, overlaid and otherwise edited the original images, while also combining them with photos taken by other photographers, additional graphics, the K2 logo and marketing slogans. In the “SP5” ad, for example, Jarvis' six photos are of all different shapes and sizes, one of them has a drawing of a falling skier superimposed, there are at least six photos not taken by Jarvis in the arrangement and K2's logo and the slogan “Are You Listening” are prominently displayed. Similarly, in the “FT10” ad, seven of Jarvis' photos are arranged in trapezoidal wooden frames of different sizes along with more than a dozen other photos, and the words “Factory Team: Forty Years in the Making” appear in the upper right-hand section of the ad. The two remaining collage ads, “SP6” and “FT11,” are strikingly similar, respectively, to the SP5 and FT10 ads; the SP6 ad is largely a vertically aligned version of the SP5 ad while the FT11 ad is largely a black-and-white version of the FT10 ad.

The changes to which K2 subjected Jarvis' images are examples of the “recast [ing], transform[ing], or adapt[ing]” and “editorial revisions, annotations, elaborations, or other modifications” that define derivative works. See § 101. Jarvis delivered the images to K2 in one form, and they were subsequently used in the collage ads in a quite different (though still recognizable) form. The ads did not simply compile or collect Jarvis' images, but rather altered them in various ways and fused them with other images and artistic elements into new works that were based on-i.e., derivative of-Jarvis' original images. These circumstances are somewhat similar to Mirage Editions, Inc. v. Albuquerque A.R.T. Co ., 856 F.2d 1341 (9th Cir.1988), in which the appellant purchased art prints, encased them in a black plastic border, glued them onto ceramic tiles and then sold the resulting products. We held that “[b]y borrowing and mounting the preexisting, copyrighted individual art images ... appellant has prepared a derivative work and infringed the subject copyrights.” Id. at 1343. Even more analogous is Greenberg v. Nat'l Geographic Soc'y, 244 F.3d 1267 (11th Cir.2001), in which the National Geographical Society's animated sequence of magazine cover images “repositioned Greenberg's photograph from a horizontal representation of the diver into a vertical presentation of that diver.” Id. at 1274. According to the court, “[m]anifestly, this ... arrangement of preexisting copyrighted photographs constitutes ... with reference to the Greenberg photograph, a derivative work.” Id.

K2 fails to offer any case law in support of its position that the collage ads were collective works. It does argue that the collage ads “in no way transformed or altered[Jarvis'] preexisting photographs.” However, even a cursory look at the ads-which “transformed or altered” Jarvis' photographs in a variety of ways-demonstrates the weakness of this claim. Counsel for K2 also emphasized during oral argument that the collage ads that appeared on K2's website were identical to the original magazine inserts. But this fact is irrelevant to our inquiry into the ads' nature. A derivative work remains derivative when it is scanned and placed online, just as a collective work would remain collective if it were transferred from one medium to another.

We thus hold that the four collage ads were all derivative rather than collective works. Accordingly, when K2 scanned and placed the ads online after the usage period specified in the 2001 Agreement had terminated, the collective works privilege did not rescue them from infringement.

Other than the reference to Mirage, I applaud the court: it is not the scanning or placing the images online that matter, but rather what was done to them beforehand, in making the collage. The collage was not, as I pointed out at the beginning, “that particular collective work,” it was instead a new work.

Wednesday, May 02, 2007

Aussie Court Gives Free Kick to Fair Dealing

One frequently hears that fair dealing provisions in non-U.S. common law countries are more restrictive than U.S. fair use. An April 27th opinion by Judge Allsop in the Federal Court of Australia, permitting the use of up to two minutes of National Rugby League broadcasts under fair dealing challenges that view. The opinion is short on analysis, but sensitive to news reporting interests. Here is an excerpt from an article from the New Zealand Sunday Star Times:

Precedent set for media free-for-all

By MICHAEL DONALDSON - Sunday Star Times | Sunday, 22 April 2007

A court judgment in Australia over the use of online video highlights is being watched carefully by the International Rugby Board in the wake of its controversial decision to limit what news organisations can place on the internet.

Last week in Sydney, telecommunications giants Telstra took a huge hit when they failed to stop Premier Media Group, known as Fox Sports, from broadcasting National Rugby League (NRL) highlights online and onselling the footage.

Telstra paid a lot of money to the NRL for the exclusive rights to show five minutes of footage on their website and 3G mobile phones. They were trying to limit other organisations' usage of the footage to 45 seconds per game and 90 seconds for each round.

The IRB want to do much the same with highlights packages from the Rugby World Cup but have been been more stringent in the limitations they are applying, including telling news websites like or they cannot use any video highlights at all unless they pay for them.

In the Sydney case, Premier Media Group argued they had a right to use the NRL footage on their websites as news reporting under the fair dealing provisions of the Copyright Act.

The interim court decision in Sydney means non-rights holders on rival websites can continue to show two minutes of NRL action without penalty and for an unspecified time after the event if they are reporting news.

Tuesday, May 01, 2007

Pictures of Architectural Works

Sometimes you read an opinion and get a sense that rough justice was being done, but without much regard to the niceties of the statute. Groff Const., Inc. v. American Pride Building Co. , LLC, 2007 WL 495316 (M.D. Fla. Feb. 9, 2007), is such a case, if I understand the opinion. What I glean from it is that Groff claimed to own the copyright in an architectural work. Groff complained that defendants were copying a photograph he took of the architectural work. The court held that copyright in an architectural work does not give copyright owners the right to prevent others from using photographs of the architectural work. That is true up to a point; the point is expressed in Section 120(a), but that section covers the “making” of photographs, i.e. photographs that are independently created by taking your own picture of the architectural work. In Groff, as I understand it, defendants copied Groff’s photograph, conduct not covered by Section 120(a). The infringement action therefore should have been argued and analyzed as one for infringement of a photograph.

Here are the relevant parts of the opinion:

Groff asserts that since 1996, it is the owner of a copyright registration for The Cayman Model which was build at 5002 Lee Boulevard, Lehigh Acres, Florida in 2001. Groff used this model home for his business, but sold it in September 2001 to Adams Homes of NW Florida, Inc. Adams Homes then sold it to Humfleet, who later sold it to Fleet Lending Group, Inc. Groff is using a photograph of The Cayman Model on his website.

. Groff advertises its business by using photographs of the subject model home owned by D. Humfleet, Humfleet, and Fleet Lending…

A copyright owner may not prevent photographs of an architectural work once it has been constructed as long as the building is located in a public place.

Groff argues that based upon his ownership of a copyright of the architectural drawings of The Cayman Model he has the exclusive right to use a photograph of The Cayman Model. Groff is correct that the statutes do confer rights to a copyright owner, however, these rights are to the copyrighted plans and not to the embodiment of the work. Pursuant to the statutes and case law, Groff's alleged ownership of the copyright to the architectural work of The Cayman Model does not confer upon him the exclusive right to use a photograph of the embodiment of the architectural work. Therefore, the Motions to Dismiss Counts I and II of the Counterclaims and Third Party Complaints should be denied.