Buying Copyright to Buy Censorship

Australian pop singer Dannii Minogue is reported to have a fondness for lap dancers. She has denied a recent story that she went to a lap dancing club in Cardiff, Wales, where lap dancer Kelly Simpson states that Ms. Minogue paid "£30 for a saucy dance and was so impressed that an hour later she asked for another steamy session. She loved holding eye contact with me. Afterwards I got changed into a baby doll negligee and she asked for another dance." Ms. Minogue denies she was at the club.

The story has gotten traction because of other stories that Ms. Mingue, through her lawyers, purchased the copyright interest in an apparently admitted event a year ago with another lap dancer, named Jupiter, at the improbably named "Puss in Boots" Club. The pictures reportedly show Ms. Minogue engaged in sexual acts with the dancer. See story here. Ms. Minogue's lawyers are reported to be attempting to have the pictures pulled off of websites on the basis of the purchased copyrights.

Buying a copyright to suppress unfavorable remarks or portraits is not new. The most well-known example is Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966), where Howard Hughes tried to kill a story about himself. The Second Circuit stopped such misuse of copyright by relying on fair use, although there was a two judge concurring opinion relying on the First Amendment. (Why in a three judge panel this wasn't the majority opinion is unclear to me). Misuse itself another possible defense, as has been suggested by Judge Posner.

Community Property Joint Tortfeasors?

Wired had an article yesterday (with useful links), to an opinion in a case brought by the RIAA (Atlantic Recording Corp. v. Pamela and Jeffrey Howell, wife and huisband), on the right to make available via file sharing (link here). I discussed the issue in an earlier post, so I won't repeat that discusion here. One part of the case was most unusual: the court's discussion of whether one spouse could be liable for the actions of another under an alleged theory of community property liability.

Having grown up in a community property state (California), I was interested in the intersection of community property laws and copyright as a law student. The first article I ever wrote on copyright was as a third year, on that precise question. It was published in what was then called the Bulletin of the Copyright Society, 28 Bull. Copr. Soc'y 237 (1981). For court decisions, see Compare Rodrigue v. Rodrigue, 218 F.3d 432 (5th Cir. 2000) with In re Marriage of Worth, 195 Cal. App. 3d 768, 241 Cal. Rptr. 135 (1st Dist. 1987); Jackson v. Kitsap County Court, 211 F.3d 1273 (9th Cir. 2000) (noting, but not deciding issue); Stein v. Soyer, 1997 WL 104967 (S.D. N.Y. 1997); Sheshtawy v. Sheshtawy, 150 S.W.3d 772 (Tex. App. San Antonio 2004) (patents); Miner v. Miner, 2002 WL 33955151 (Tex. App. Corpus Christi 2002) (derivative software copyrights); Alsenz v. Alsenz, 101 S.W.3d 648 (Tex. App. Houston 1st Dist. 2003); Teller v. Teller, 99 Haw. 101, 53 P.3d 240 (2002); Hass v. Hass, 2000 WL 1474881 (Conn. Super. Ct. 2000); (ordering transfer of 25% copyright interest as part of marital distribution); Boutz v. Donaldson, 128 N.M. 232, 1999, 1999-NMCA-131, 991 P.2d 517 (Ct. App. 1999) (child support).

The RIAA case, though, liability was sought by plaintiff against the community. This was a federal copyright claim, so it is a mystery to me why state law grounds were even discussed. In any event, the court noted that under state law there is no presumption of community liability, and that "there was no showing or even argument ... that Pamela Howell consented to Jeffrey Howell's distribtution of the sound recordings or that the distribution was committed with the intent to benefit the community."

Copyright Dogs

Today's New York Post had a lead story about Leona Helmsley (also known as "the Queen of Mean") giving $12 million in her will to her dog. Inside, on page 23, is a different story "Pups Hit the paws button." The story describes the world's first DVD detecting dogs being used to bust counterfeiters. The two dogs, Lucky and Flo, have been trained to identify and sniff out the unique polycarbonate used in DVDs; they put their skills to use yesterday in a demonstration at City Hall of bootlegs found in nearby Chinatown. So successful have the dogs been, it is reported, that a bounty was put on the pooches by counterfeiters. The dogs can't distinguish between legit and illegit DVDs though, but their skills are so refined that in a suitcase filled with canned meat, they found the one DVD.

Go ____ Its Your Birthday

Both the Eleventh Circuit and a district judge showed their familiarity with hip-hop music and its unique culture, in a classic infringement case, Lil' Joe Wein Music, Inc. v. Jackson
Slip Copy, 2007 WL 2274519 (11th Cir. Aug. 9, 2007).

Plaintiff’s song was written by the infamous Luther Campbell, “Its Your Birthday.” Plaintiff bought the song from Campbell. Defendant’s song, ”In Da Club” as written by Connecticut Gold Coast resident, Curtis James Jackson III, also known as “Fifty Cent” or “Fitty” to his friends. Fitty is in an unrelated fit right now, concerned that arch-rival Kanye West’s new album, to be released on the same day as his (9/11, but don’t expect any deep comments on the event that will mark that day forever), will top his on the charts. He has even threatened to quit the biz if this occurs.

But Mr. Cent is happy about the result in this case, because the court of appeals affirmed the trial court’s grant of summary judgment, even over an expert’s report (Praise the Lord!). Mr. Cent and his co-defendants conceded access – a wise move given that Luther’s work sold more than copies. Both courts cast doubt on the copyrightability of the phrase at issue: “Go _____, it's your birthday.” Mr. Cent's lyrics were:

Go, go, go, go

Go, go, go shawty

It's your birthday

We gon' party like it's yo birthday

We gon' sip Bacardi like it's your birthday And you know we don't give a f---

It's not your birthday


In affirming, the court of appeals delved into history: “A signature and long-standing feature of live performance rap music is the hip hop chant. The chant is a form of audience engagement staged by the performer (mc, dj or rapper) who provides a familiar phrase or saying, often in call and response format, designed to energize, include, affirm and engage the audience.” This went to the underlying music of the phrase and not its lyrics, which defendants demonstrated were preexisting, including in a 1993 movie. Here the court recited the district judge’s prowess:

Lil' Joe Wein disputes the relevance of this evidence. With respect to Who's the Man?, Lil' Joe Wein contends: (1) that the Defendants fail to describe how the line is spoken in terms of rhythms, melodies and rhythmic placement and the nature of its similarity to the songs at issue in this case; (2) that the lyrics are hardly discernible to the ordinary listener without specialized listening equipment; and (3) that there was an issue of contested fact as to whether the film was in circulation or distribution such that it could be considered the source or inspiration for “Its Your Birthday.” The Court disagrees.

Lil' Joe Wein's own expert, Judith Finell (“Finell”), states that every element of similarity that exists between “In Da Club” and “Its Your Birthday” is present in Who's the Man?. Finell reached a similar conclusion with respect to “The Birthday Jam,” finding the only difference to be the use of different proper names. The [Trial] Court, without the assistance of any specialized listening equipment, viewed the segment of Who's the Man? and had no difficulty discerning the lyrics.

Go Fitty, its your birthday, or not.

Tarleton Gillespie's Wired Shut

While its too late to buy a summer beach book, for those times when you can sit back and really contemplate, I heartily recommend Tarleton Gillespie's recent "Wired Shut: Copyright and the Shape of Digital Culture,"(available for as little as $6.74 through Amazon. com's reseller program, a great price for a 394 page book). The book is not a screed against content owners, or a manifesto in favor of information wanting to be free, but rather a look by a non-lawyer at the way technology is being used by content owners to influence the design to technology. The greatest strength of the book is its demonstration of what it takes to marshal the various forces necessary to achieve that control: agreement among a diverse group of usually competitive content owners, the consumer electronics industry, standards groups, distributors, and Congress to name a few, as well as what it takes to beat back opposing forces. These issues tend to be treated in a cardboard fashion in other discussions, and it is a signal achievement of Professor Gillespie that he demonstrates the intensive effort it takes to accomplish such control.

My first experience with the issue was as a Congressional staffer in 1992, with the Audio Home Recording Act (treated very briefly in the book), and the Serial Copy Management System, where the alleged threat of hordes of digital tape machines invading from overseas was used as a justification for the first mandated technological restriction. We were told that digital changed everything, and that without the fix, profits would be in the toilet. The bill was a failure but so was the technology.

Next up was the DMCA, and here it is necessary to go back to the efforts of Commissioner of Patents Bruce Lehman in his 1994 Green Paper and 1995 White Paper to propose significant expansions of rights, including DRMs (or TPMs, whatever label one wishes). Bills were introduced in 1995, but died after the Administration and content owners refused to include safe harbor protections for ISPs. Ditto the early efforts in 1997, although by Septmeber 1997, bills include skeletal safe harbor provisions were introduced. (Note to readers, Google was incorporated on September 7, 1998, a month before the DMCA was passed and had no role in it).

I have been re-reading the DMCA hearings, which are noteworthy for the clashes between Congressman Boucher and Mr. Lehman and Jack Valenti. Professor Gillespie spends a whole chapter on Mr. Valenti's testimony, and carefully works through Mr. Valenti's colorful testimony to demonstrate its careful strategic purpose. Mr. Valenti was an extremely successful spokeperson and advocate, and reading his testimony reveals why, although I had the great pleasure of hearing it live and talking to him personally many times. After the DMCA, came one of the failures in attempted technological fixes, SDMI, which is treated to its own chapter, and the broadcast flag (its own chapter too), which had initial success, followed by defeat at least in the DC Court of Appeals.

Professor Gillespie's overarching take on technological control efforts by content owners is that they have far less to do with piracy or counterfeiting than with the effort to achieve control over the design of consumer electronics, digital broadcasting, and of course Internet distribution, in order to permit content owners to be able to decide who can access works of authorship and where (regional codes for DVD, restrictions on porting lawfully made copies), as well as pricing (pay-per-view as the future). The book is that of an outsider, and it is the insiders who know the real story. They are unlikely to ever tell it (as complaints about Mr. Valenti's posthumously published autobiography state), and so we are left, of necessity, with looks from those of intelligent outsiders to help us figure things out. Professor Gillespie's work is certainly a worthy effort in that regard.

Two From the First

The First Circuit issued two copyright opinions quite recently:

Latin American Music Co., Inc. v. The Archdiocese of San Juan, 2007 WL 2326817 (1st Cir. Aug. 16, 2007), and Mag Jewelry Co., Inc. v. Cherokee, Inc., 2007 WL 2258279 (1st Cir. Aug. 08, 2007). Latin American Music Co. is a fine illustration of the folly of those who assert it is easy for third parties to determine who owns copyrighted works: the dispute involved twisted chains of titles and competing claims of ownership by multiple parties, all of whom had issued licenses. Mag Jewelry is a traditional infringement claim involving jewelry but with a twist: unauthorized copying by defendant of an earlier, independently created work.

In Latin American Music Co., the Court of Appeals affirmed the district court’s grant of ASCAP’s motion for summary judgment on the ownership of four of five songs, the exception being “Caballo Viejo,” by Simon Diaz. My favorite version of this song is on Ry Cooder and Manuel Galban's’s excellent 2003 album “Mambo Sinuendo,” where it is the fifth song, and it is my favorite song on that album. The album was recorded mostly at Egrem Studios in Havana with amazing musicians, including the incomparable Miguel “Anga” Diaz on congas, Orlando “Cachaito” Lopez on bass. (The title song “Mambo Sinuendo,” has a guest appearance by Herb Alpert on trumpet).

The most interesting part of the opinion is not the ownership question, but instead concerns the non-existence of a separate authorization right, something the First Circuit had previously denied, but reiterated here:


LAMCO/ACEMLA challenge the district court's conclusion that they infringed the Publishers' copyrights in the disputed songs by including them in the ACEMLA catalog. They contend that merely authorizing the use of the songs, in the absence of proof that the songs were actually used in an infringing manner, is not infringement. The Publishers argue that the particular circumstances of this case show conduct by LAMCO/ACEMLA beyond merely authorizing use of the songs.

17 U.S.C. § 106 provides the exclusive rights that are held by the owner of a copyright. “One infringes a copyright when he or she violates one of the exclusive rights to a work held by a copyright owner, and the owner has the right to sue for infringement .” T-Peg, Inc., 459 F.2d at 108. Mere authorization of an infringing act is an insufficient basis for copyright infringement. Venegas-Hernandez, 424 F.3d at 57-58. Infringement depends upon whether an infringing act, such as copying or performing, has occurred. Id. at 58-59. Therefore, to prove infringement, a claimant must show “an infringing act after the authorization.” Id. at 59.

In Mag Jewelry, the case is all in the facts, which though lengthy, I have edited:

In December 2001, plaintiff Mag Jewelry Company (“Mag”) purchased some costume jewelry at a Target store in Rhode Island. The necklaces, whose pendants were comprised of four crystal stones in the shape of an angel, were of interest to Mag because it holds a copyright on that “crystal angel” design, and Target was not one of Mag's customers. Mag subsequently filed this copyright infringement action against Target Corporation and its supplier, Style Accessories, Inc. (“Style”).The defendants denied copying Mag's angel, claiming that their jewelry was based on an identical design independently created by someone else. Following presentation of Mag's case to a jury, the district court granted defendants' motion for judgment as a matter of law.


I.


The facts underlying the dispute-other than the ultimate question whether copying occurred-are largely undisputed. Mag's president, Daniel Magnanimi, applied for copyright registration for the angel in November 1995, listing 1995 as the year of its creation and June 1, 1995 as the date of first publication. The United States Copyright Office issued the registration and, in the following months, Mag sent letters through counsel to dozens of individuals and businesses demanding that they stop selling similar crystal angels.

One such letter was sent to Alan Gregerman, a Rhode Island jewelry designer and manufacturer, who was selling a crystal angel virtually identical to Mag's. Gregerman hired an attorney, who in February 1996 sent a response to Mag stating that Gregerman had created the same angel design earlier than 1995 and that he also had “first manufactured, marketed, and sold products incorporating the angel design” before that year. Gregerman later testified that he created his crystal angel in the summer of 1994, that he began selling and shipping copies by September 1994, and that his angel was included in a 1995 gift catalog. His attorney's letter reciprocally accused Mag of copyright infringement and demanded that Mag “cease and desist” using the angel in any products.

There were further communications between Mag's and Gregerman's attorneys, followed by two significant events. First, in June 1996, Mag filed a supplement to its original copyright registration, changing its crystal angel's date of creation to March 1992-more than two years earlier than Gregerman claimed to have created his angel. Second, Gregerman and Magnanimi agreed that they both would sell crystal angels without interference or threat of suit from the other, and Gregerman also gave Mag permission to make and sell two other angel jewelry designs that he had created. Magnanimi sent Gregerman a letter reflecting that arrangement in September 1996, stating that “we have both agreed that you can make the crystal angel as copyrighted by Mag Jewelry Co. Mag and Gregerman continued to make and sell crystal angels, co-existing without incident until Mag discovered the crystal angel necklaces sold by Target Corporation in late 2001. After purchasing some at the Target store in Warwick, Rhode Island in December 2001 and more at a Target store in New York the next month, Mag filed this copyright infringement action against the retailer. Target later identified Style as its supplier, and Mag amended its complaint to add Style as a defendant, alleging that Style had sold crystal angel items that were copied from Mag's angel.

Style, however, was a customer of Gregerman. In its answers to Mag's interrogatories, the company denied that it had copied “any piece sold or created by Mag jewelry” and reported that it had “adapted a piece purchased from Alan Gregerman Co.” to create the Target necklace. Style had purchased crystal angels from Gregerman between May 1997 and August 1998 and subsequently had similar pieces produced, at a lower cost, by two other companies. Style did not obtain Gregerman's permission to bring the design to other manufacturers.

The twist in the case came from the fact that Style didn’t have Gregerman’s permission to copy: but since Style copied from the earlier Gregerman design and not Mag’s, Mag lost, the court noting:

Mag argues that we should reject out of hand what it characterizes as Style's unprecedented independent creation defense, i.e., that Style is protected by Gregerman's independent creation notwithstanding the fact it did not have Gregerman's permission to make the allegedly infringing items. While we can appreciate Mag's dismay, principles of copyright law on which Mag itself relies appear to permit just such a defense by Style.

Artist Sees Pink, Wants Green

Singer Pink and her label Zomba have been sued in the SDNY for infringement by artist Vladimir Kush over alleged unauthorized use of his painting, "Contes Erotiques" in a music video for "U + Ur Hand." In the video a book opens up, revealing Pink dressed as a car mechanic. Wikipedia has a lengthy entry that tells you more than you want to know about the song and the video, here. Here is a link to the video, which begins with a toy figure of a woman, mostly nude, mounting the spine of a book and opening it up. Through the video, the book opens up and shows pictures of Pink as well as various text.

Vladmir Kush is a Russian emigre. (See his own story of himself here). Kush's painting (link here to his site to see the work) depicts a naked woman mounting a book's spine with a quill sticking through pages. Other than a rather trite metaphor, the meaning of the painting is lost on me, but then so is Pink. That said, I far prefer the painting.

In my opinion, it is extremely likely that whoever created the image of the woman that opens the video (and I would be surprised if that was Pink herself), did so after seeing Kush's work. But Kush doesn't have a copyright in the idea of a naked woman mounting the back of a book even if he was the first to come up with it (something I have no way of knowing). Moreover, after the quick initial showing of the toy woman in the video (which doesn't much look like Kush's anyway), the scenes with a book opening bear no resemblance to Kush's work.

Several Liability and Statutory Damages

Section 504(c) of the 1976 Act contains a deliberate departure from the 1909 Act's handling of awards of statutory damages. Under the 1909 Act, awards could be made per infringing copy. Under the 1976 Act, by contract, the general rule is one award per work, reflected in this statutory language:

(1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.
But the one-work-one-award general rule is just that, a general rule. The statutory permits multiple awards for inringement of the same work by defendants who are severally liable. In Section 22:196 of my treatise, I have these comments:

Whether there is joint or only several liability for statutory damages is determined by general copyright principles. Where two or more defendants, acting in concert, violate the same exclusive right(s), they are jointly and severally liable. Under such facts, no matter the number of such defendants, the copyright owner may recover only one award of statutory damages for violation of that one work. By contrast, where multiple defendants infringe the same work, but by violating different rights, there is several liability, and thus separate awards. This result is obtained from the statutory language limiting the copyright owner to one award: (1) “with respect to any one work, for which any one infringer is liable individually,” or (2) “for which any two or more infringers are liable jointly and severally.” These two categories are, though, duplicative: if the infringement is not one “for which any two or more infringers are liable jointly and severally,” obviously each defendant is liable individually (the first category).

Some examples may prove helpful:

• Defendants A&B, acting in concert, violate the reproduction right. Only one award is permissible, for which A&B are jointly and severally liable.
• Defendants A&B, not acting in concert (as where Student A, on the West Coast, downloads Song C, and Student B, on the East Coast, also downloads Song C), violate the reproduction right. Two awards are permitted. A&B are severally liable.
• Defendants A, B, & C, acting in concert, violate the reproduction right. Defendant C, acting alone, also violates the public performance right. There is one award for violation of the reproduction right, for which A, B, & C are jointly and severally liable. There is a second award for violation of the public performance right, for which C is severally liable.
• Defendants A, B, & C, acting in concert to put on a play which is infringing, violate separate rights. A alone violates the reproduction right. B alone violates the distribution right. C alone violates the public performance right. There are three awards, for which each defendant is severally liable.

---

The final example was recently questioned by a friend, who believed it lacked support. I think the statutory language is support enough: the one-award-per-one-work general rule applies only to individuals acting alone and joint tortfeasors who are jointly and severally liable: it doesn't speak to situations where joint tortfeasors are severally liable, meaning to me, that the one award rule doesn't apply in such situations. But here is the relevant discussion from the House report.

Where the infringements of one work were committed by a single infringer acting individually, a single award of statutory damages should be made. Similarly, where the work was infringed by two or more joint tortfeasors, the bill would make them liable for an amount in the $250 to $10,000 range. However, where separate infringements for whom two or more defendants are not jointly liable are joined in the same action, separate awards of statutory damages would be appropriate.

H.R. Rep. No. 1476, 94th Cong., 2d Sess. 162 (1976).

It is, I think, the final sentence that supports the example in question.

Promos CDs and First Sale

Of all the things to occupy record labels’ time, I wouldn’t have thought any would be devoted to tracking down the sale of lawfully made Promotional CDs on eBay. I’m wrong. There have been a number of such suits (two of whom are against the same individual), but in one the EFF has taken up defendant’s cause. Here is a link to EFF’s site, which contains a press release, the complaint, and the answer.

It is not only Promo CDs that are getting cracked down on; inexplicably, there has been an increase on so-called state “pawn shop” laws, most recently in Florida. In Florida, stores buying second-hand merchandise for resale must apply for a permit, thumb-print CD sellers and get a copy of the seller’s driver's license. Stores are limited to issuing store credit, and furthermore must hold the merchandise for 30 days before re-selling them. Not surprisingly, this has resulted in the closure of a number of such stores or in stores ceasing the sale of used CDs. (See this article in Ars Technica). And copyright owners wonder why they have a bad reputation among consumers.

In the promo CD case, the first sale doctrine will be a key element of the defense. The record label does not dispute that the promo CD was lawfully made but contends that a legend stating it was given under a license prevents application of that doctrine since the license terms prohibited resale. I have a few of these promo CDs, bought in second hand stores (in NYC, not Florida). I have always regarded efforts to make a sale (or in the case of promos, a gift), into a license just by saying so, is legally deficient. Putting a license label on something but treating in every other way as a sale, doesn’t seem to me to represent the strongest position, as the 2001 Softman/Adobe case showed. Yet, there is the Seventh Circuit’s ProCD versus Zeidenberg going the other way. Perhaps the promo CD case will distinguish ProCD by considering the effort to make the promo a license to be ineffectual in comparison, but all such analyses point out an Achilles heel in first sale: a federal defense is subject to the vagaries of state law.

Civil Conspiracy to Commit Copyright Infringement

I there a civil cause of action to commit copyright infringement, and if so is it a federal or state claim? In Mintel Learning Technology, Inc. v. Beijing Kaidi Education & Technology Development Co., 2007 WL 2288329 (N.D. Cal. Aug. 9, 2007), the court dismissed a claim for civil conspiracy to misappropriate copyrighted software on the ground that under California law civil conspiracy "is not a separate and distinct cause of action. ... Instead, it is a 'legal doctrine that imposes liability on persons who, although not actually committing a tort themselves, share with the immediate tortfeasors a common plan or design in its preparation.'" The court instructed plaintiffs to replead the conspiracy allegations "separately as to each of the substantive causes of action." The required elements were "(the formation and operation of a conspiracy, (2) wrongful conduct in furtherance of the conspiracy, and (3) damages arising from the wrongful conduct." Additionally, "all the elements of the underlying tort must be satisfied. If the plaintiff fails to adequately plead the underlying claim, the corresponding conspiracy claim must also fail."

I find this discussion confusing at best. If conspiracy is not a separate cause of action, why would it have to be repled and how could it succeed if the underlying claim is adequately pled? Moreover, if the underlying tort is copyright, a federal claim, why aren't state conspiracy allegations preempted?

When the conspiracy alleged is merely a conspiracy to engage in conduct that violates rights equivalent to those granted in Section 106, the conspiracy claim is preempted, and is more properly understood as a clumsy (or sneaky) effort to hold third parties responsible for contributory infringement, vicarious liability, or their share of the damages.

Some courts have held that where the underlying tort about which the conspiracy is alleged is itself not preempted, the conspiracy claims are not preempted, a common sense result. Conversely, courts have held that where the underlying tort is preempted, the conspiracy claim is also preempted, an equally commonsense result.

Public Works and Feline Bloggers

The illustrious IP Kat blog ("we put the meow in IP"), mewsed today about liability and exceptions for copyrighted works displayed in public. See ipkat.com. My feline friends recalled a 2002 decision by the German Bundesgerichtshof involving alleged artist Christo, who successfully stopped postcards from being sold depicting his wrapping of the Reichstag. See here. many many years ago, in my beloved Northern California, Christo unveiled one of his early works, miles of white fence stretching from the Pacific Ocean to a highway north of Novato in Marin County. I drove by it every day going to work. It looked like a very long roll of toilet paper. A few years ago, he similarly treated Central Park in NYC. One person's commerce is another's art, perhaps, and I have no doubt that the result in the U.S. would be the same as it was in Germany, for we have no general exception from infringement for works of art displayed in public, unlike Section 62 of the UK Act:

Section 62.—(1) This section applies to— (a) buildings, and (b) sculptures, models for buildings and works of artistic craftsmanship, if permanently situated in a public place or in premises open to the public. (2) The copyright in such a work is not infringed by— (a) making a graphic work representing it, (b) making a photograph or film of it, or (c) broadcasting or including in a cable programme service a visual image of it. (3) Nor is the copyright infringed by the issue to the public of copies, or the broadcasting or inclusion in a cable programme service, of anything whose making was, by virtue of this section, not an infringement of the copyright.
Its not clear to me that this provision would have helped Christo, since I am not sure his promiscuous use of Cottonnelle qualifies as a sculptural work or a model of one. In the U.S. we have fair use which might excuse particular uses of works like Christo's or other works of art displayed publicly, and in the case of architectural works, we have Section 120(a):

(a) Pictorial Representations Permitted. — The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.

Liberating Linux

Judge Dale Kimball’s 102 page opinion Friday in the SCO Group, Inc. v. Novell, Inc. (available here), has been widely reported on. It is a surprisingly easy read: Bravo Judge Kimball (and his clerks). My comments are limited to the copyright aspects of the case. Because those aspects are, however, intertwined with the parties’ contracts, it is not surprising that much of the court’s discussion of copyright law turned on the intersection of copyright and contract law.

One frequently encounters in judicial opinions the statement that copyright contracts are to be construed by ordinary contract principles. This statement is at usually unhelpful and sometimes wrong. Those advocating such an approach do not identify how to decide whether to apply federal or state law, nor do they attempt to identify which state aids to construction are contemplated. In some cases, state law cannot be applied. For example, while a number of states permit use of parol evidence to supply missing terms even where the contract is ambiguous, in copyright cases Section 201(b) indicates that any agreement between an employer for hire and a employee for hire transferring rights to the employee must expressly convey the rights in question. Similarly, states may not excuse or circumvent express requirements found in the Copyright Act, such as the Section 204 writing requirement for exclusive licenses or the writing requirement for specially commissioned works for hire, nor may they impose additional requirements for conveying such interests.

There are a few areas where state contract law will apply: whether there has been a “meeting of the minds,” whether consideration has been provided, and whether a particular provision is a condition precedent or a covenant. One issue in SCO concerning the intersection between copyright and copyright law was the difference between covenants and conditions. It is common for courts to say that if there is a material breach of a condition of the license, the copyright owner has the option of suing for copyright infringement or breach of contract.
The D.C. Circuit has defined a “condition” as “any fact or event which qualifies a duty to perform.” Some courts have held that payment is a condition precedent to a license; some regard payment as a covenant, not a condition; while yet others have held that withholding royalty payments supports rescission of the contract. The condition-covenant dichotomy does, however, suffer from some imprecision. Sometimes “condition” is used interchangeably with “term,” as when a contract provision is headed “Terms and Conditions.” Other times, condition is used in contrast with “promise.”

In SCO, SCO argued that license restrictions were covenants. The court dodged the issue in a confusing digression on preemption, ultimately holding that SCO could have both a contract claim and a copyright claim; the contract claim was based on allegations of Novell’s copying, preparation of derivative works, and sublicensing of Linux products containing allegedly unauthorized material owned by SCO. In essence, Novell was alleged to have exceeded the scope of its license.

The principal part of the court’s opinion dealt with what was transferred originally (or later by amendment to the original deal) by Novell. This issue turned on specific contractual language, but there against the backdrop of Section 204(a) which requires express transfer of copyright to be enumerated. SCO argued that “in a non-consumer setting .. a transfer of all right, title and interest to computer programs and software can only mean the transfer of the copyrights as well as the actual computer program or disks.” The issue is a common one: whether the rights or title referred to refers to the physical embodiment of intellectual property or to the intangible intellectual property (or both). Here the court did an excellent job on the facts and in distinguishing other cases: as the court pointed out, in this case there was a specific provision detailing which rights were transferred, and thus whether the copyright was transferred turned on construction of that specific provision. Fortunately for the rest of us, the court held the copyright in the UNIX code were not transferred

Australian Electronic TV Guide Opinion

A Federal Court in Sydney, Australia has handed down a very interesting opinion in a case testing the scope of compilation copyright and independent creation. Channel Nine sued IceTV, the creator of an electronic program guide, claiming copyright infringement of Nine's Weekly Schedule. Users of IceTV’s service can record up to two channels at once from their DVR, computer, or cell phone, and skip advertisements. The court, per Judge Annabelle Bennett, held that while Channel 9’s owns a copyright in its schedule, it had not been infringed. She added though that “Nine cannot claim copyright in the time and title information for a single day or week as if that information were itself a separate compilation."

IceTV was found to have copied some of the information from Channel Nine, but to have engaged in its own research as well, combining information from a number of sources. This activity led the judge to conclude: “It is open at law to a person to ascertain the facts recorded in a compilation on the basis of that independent inquiry. This is what IceTV did…” She then goes on at length to describe the process by which IceTV created its guide.

Australia had an earlier case that raised some of these issues, Desktop Marketing Systems Pty Ltd v Telstra Corporation [2002] FCAFC 112, in which the Full Federal Court of Australia held that copyright subsisted in the white pages telephone directory, but based on a more liberal approach to originality as requiring that for to works be ‘‘original,” they need only “originate from the author." The U.S. Feist opinion, by contrast held the white pages uncopyrightable, and on constitutional grounds for lack of originality. On the infringement side of the Desktop case, defendant copied almost the whole directory (as was true in Feist but with a different result). This was not the case in IceTV, and makes that opinion more interesting for that reason alone.

Ice itself has commented on the opinion here, which includes a link to the judge’s summary of her findings.
A Federal Court of Sydney Australia has handed down a very interesting opinion in a case testing the scope of compilation copyright and independent creation. Channel Nine sued IceTV, the creator of an electronic program guide, claiming copyright infringement of its own Weekly Schedule. Users of IceTV’s service can record up to two channels at once from their a DVR, computer, or cell phone, record from two channels at once, and skip advertisements. The court, per Judge Annabelle Bennett held that while Channel 9’s owns a copyright in its schedule, but that it had not been infringed. She added though that “Nine cannot claim copyright in the time and title information for a single day or week as if that information were itself a separate compilation.

IceTV was found to have copied some of the information from Channel Nine, but to have engaged in its own research as well, combining information from a number of sources. This activity, led the judge to conclude: “It is open at law to a person to ascertain the facts recorded in a compilation on the basis of that independent inquiry. This is what IceTV did…” She then goes on at length to describe the process by which IceTV created its guide.

Australia had an earlier case that raised some of these issues, Desktop Marketing Systems Pty Ltd v Telstra Corporation [2002] FCAFC 112, in which the Full Federal Court of Australia held that copyright subsisted in the white pages telephone directory, but based on a more liberal approach to originality as requiring that for to works be ‘‘original,” they need only “originate from the author. On the infringement side of the Desktop case, defendant copied almost the whole directory. This was not the case in IceTV, and makes it interesting for that reason alone.

Ice itself has commented on the opinion here, which includes a link to the judge’s summary of her findings.
http://www.icetv.com.au/news/?p=44

In a twist that may raise some eyebrows, one should report the notice that IceTV itself uses:

IceTV's electronic program guide (EPG) is an original work created by IceTV's staff. Some programs are available elsewhere that gather EPG data from various sources such as websites. IceTV does not recommend use of such programs as their use is likely to infringe other parties' copyright. Such programs may also be unreliable, especially if the owners of the data take technical or legal steps to prevent their work being copied. IceTV's EPG is its own, original work and IceTV owns the copyright. You may not copy or distribute it in any way except for the personal use for which you obtain license when subscribing to the service.



In a twist that may raise some eyebrows, one should report the notice that IceTV itself uses:

IceTV's electronic program guide (EPG) is an original work created by IceTV's staff. Some programs are available elsewhere that gather EPG data from various sources such as websites. IceTV does not recommend use of such programs as their use is likely to infringe other parties' copyright. Such programs may also be unreliable, especially if the owners of the data take technical or legal steps to prevent their work being copied. IceTV's EPG is its own, original work and IceTV owns the copyright. You may not copy or distribute it in any way except for the personal use for which you obtain license when subscribing to the service.

Preemption: I Feel Good

The hardest working man in show business is dead, but before he passed on he filed suit against Corbis Corporation and others for licensing photographs of him, allegedly in violation of his right of publicity. An Illinois state appellate court just held in favor of his alleged representatives that the claim is not preempted by the Copyright Act, James Brown v. ACMI Pop Division, No. 1-06-0870 (Ill. Ct. App. 4th Div.)(H.T. to C.E.Petit).

The decision affirmed a trial court that had radically changed its mind, first holding the claim was preempted and then changing course and holding it wasn’t. At least the sequence was correct. Both courts relied on the 7th Circuit’s opinion in Toney v. L’Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005), a reliance that was fitting given that the 7th Circuit had itself engaged in the same flip-flop. See earlier posting here.

Defendant relied on Laws v. Sony Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006), which was the wrong circuit and the wrong facts. In Laws, the complaint was about a sound recording and not about plaintiff’s voice as an attribute of her separate identity. See earlier posting here. In both Toney and Brown the complaint was about the use of identity apart from any particular fixation even though obviously the right of publicity is violated by a particular fixation. Under those facts, at least facially, such claims are not preempted.

Sign of the Times

Via IPKat.com (which put the meow back in IP), here is an article about claimed rights in street signs in London:

Prominent designer Sir Misha Black's 1960s street signs for London's Westminster are to be protected against counterfeiters and copyright cheats for the first time in their 40-year history.Westminster City Council is now the sole owner of the iconic red-and-black lettered enamel steel signs, as well as of the copyright to their original drawings and design briefs from Black's estate. Anyone wishing to reproduce the signs, many of which mark London's best-known locations, such as Carnaby Street, Abbey Road and Downing Street, needs permission from the council.Councillor Danny Chalkley, cabinet member for transport and economic development, says, 'We bought the copyright as we felt we needed to retain an element of control over the signs to maintain Westminster's image as a world class tourist information.' Created by Black in 1967, the enamel steel signs are said to have become synonymous with Westminster.The council bought the copyright from Black's estate, which is represented by his son Oliver Black. Anyone wishing to copy the signs should contact Westminster City Council to discuss their particular requirements. According to the council, any copyright fees levied by the council will be ploughed back into frontline services for Westminster's residents.

I put one of the signs as my picture profile today. I doubt that the signs would be protected under U.S. copyright law; perhaps my friends to the east of the Great Pond could explain the elements of originality under UK copyright law that would lead to protection.

The 6th Circuit's Likelihood of Confusion

Yesterday's posting was on a 9th circuit case that used a trademark analysis to dismiss a copyright claim. The 6th circuit recently did the reverse, finding that a trademark claim should be dismissed because it "paralleled" a copyright claim that was found to be without merit. The opinion in Tiseo Architects, Inc. v. B&B Pools Service & Supply Co., 2007 WL 2141375 (6th Cir. July 27, 2007). Here's the court's discussion in its entirety:

Tiseo Architects' Lanham Act claim fails because it parallels its copyright claim. “Where a plaintiff's Lanham Act claim parallels his copyright infringement claim, a finding of no substantial similarity on the copyright claim precludes the Lanham Act claim.” Stromback, 384 F.3 d at 300. Like the plaintiff in Stromback, Tiseo Architects “makes no attempt to distinguish his Lanham Act claim from his copyright infringement claim or to explain how there could be a likelihood of confusion when the two works are not substantially similar.” Id. Accordingly, the district court correctly denied this claim as well.
The Stromback opinion is Stromback v. New Line Cinema, 384 F.3d 283, 300 (6th Cir. 2004). Stromback in turn cited among other cases Litchfield v. Spielberg, 736 F.2d 1352, 1358 (9th Cir. 1994). Litchfield dealt with reverse passing off. A reverse passing off claim rests on an assertion that defendant's product is falsely stated to arise from defendant when in truth is was copied from plaintiff. The claim will fail if the two products are deemed not be confusingly similar. To me it doesn't follow as a matter of law, that where two products are found for copyright purposes not to be substantially similar, that they cannot be confusingly similar for trademark purposes. For example there could be similarities in unprotectible material, like color, that would nevertheless lead to confusion among customers. In place of pat rules, ad hoc adjudication is the surest way to get things right.

The Ninth Circuit's Likelihood of Confusion

As a Northern Californian who lives in the East, I have a split personality: as a matter of personal feelings, Northern California will always be home. (Southern California is alien territory best appreciated by its own denizens). But professionally, I have only practiced on the East Coast and am continually baffled by the Ninth Circuit’s substantial similarity copyright decisions, going back to the root of all evil, the 1977 Sid & Marty Krofft case. (562 F.2d 1157). The whole extrinsic-intrinsic stuff makes no sense to me, and to make matters worse, the circuit has developed lists of factors to be considered depending on the subject matter involved. I wish the court of appeals would ditch the whole unwieldy and unhelpful edifice and start from scratch with a much simpler approach, preferably that followed in the Second Circuit.

The Ninth Circuit’s most recent case, Jada Toys, Inc. v. Mattel, Inc., 2007 WL 2199286 (9th Cir. Aug. 2, 2007), poses a different problem, confusion between trademark and copyright law. The opinion, by a district judge, does a good of framing the facts, the parties’ contentions, and the decision below:


Jada Toys is a California corporation that specializes in the distribution and sale of miniature diecast toy cars, trucks, and other vehicles. Generally, these vehicles are scale model replicas of actual vehicles. From 2001 to 2004, Jada produced a line of toy trucks called HOT RIGZ. In 2001, Jada filed an application for a trademark registration of the term HOT RIGZ with the United States Patent and Trademark Office (“U.S.PTO”). The trademark was issued by and registered with the U.S. PTO in 2002, though Jada used its HOT RIGZ trademark in advertising material and on its toys and their packaging from 2001 to 2004. Mattel is also a toy company. Among its many lines of toys is its familiar HOT WHEELS miniature vehicle brand, which it has been marketing since 1968. The HOT WHEELS vehicle line includes small scale versions of big rig trucks. Since 1968, Mattel has employed the use of a flame logo (“68 logo”) to identify the HOT WHEELS brand. In 1982 Mattel developed a complementary version of the 68 logo, this one incorporating the Mattel seal, to be used in conjunction with the sale of its product. Mattel owns U.S. federal trademark registrations for both of these flame logos. On April 20, 2004, Jada filed an action against Mattel, asserting claims for trademark infringement, false designation of origin, and unfair competition. Jada's allegations, however, were not related to its HOT RIGZ mark; rather, Jada claimed that Mattel's advertising and sale of its OLD SCHOOL and NEW SCHOOL lines infringed on Jada's use of its registered trademark OLD SKOOL. Mattel asserted various affirmative defenses and counterclaims. Among the counterclaims were allegations that Jada's HOT RIGZ mark infringed on Mattel's HOT WHEELS mark. Mattel also counterclaimed for copyright infringement and dilution. Ultimately, each party submitted motions for summary judgment. On March 15, 2005, the district court issued its ruling regarding the parties' motions for summary judgment. As to Jada's claims relating to Mattel's OLD SCHOOL and NEW SCHOOL marks, the court granted summary judgment in Mattel's favor. And as to Mattel's counterclaims for infringement, copyright, and dilution, relating to Jada's use of its HOT RIGZ logo, the court granted summary judgment in Jada's favor. In granting summary judgment as to Mattel's infringement claims, the district court relied on the dissimilarity of the marks alone to determine that no likelihood of confusion existed. Mattel timely appealed the grant of summary judgment as to its counterclaims.
To recap: each side lost on its claims. Mattel appealed; the Ninth Circuit reversed. On the trademark claim, the court of appeals expressed concern over use of dissimilarities alone to support a finding of no likelihood of confusion. This concern inexplicably spilled over into the court’s copyright analysis:


This Court employs a two-part test to determine whether two works are substantially similar. The first part, the extrinsic test, focuses on the similarity of the ideas expressed. Sid & Marty Krofft Television Prod., Inc. v. McDonalds Corp., 562 F.2d 1157, 1164 (9th Cir.1977). The extrinsic test is objective and involves an analysis of “the type of artwork at issue, the materials used, the subject matter, and the setting for the subject.” Id. The second part, the intrinsic test, focuses on the similarity in expression. Id. This test is subjective and thus turns on the impressions of the average reasonable observer. Id. In this case, the district court concluded that because the marks at issue were not similar, the extrinsic test was not met. It also found that since the marks were not similar, no reasonable person could believe that they conveyed a similar expression and therefore the intrinsic test had not been satisfied. We hold, however, that a reasonable trier of fact could conclude that the marks are objectively similar. It could also be argued that, given the similarity of the marks, a reasonable observer of the two marks could understand the HOT RIGZ mark to be expressing the sense that the product sold under that mark is, essentially, a HOT WHEELS product. Therefore, the district court's entry of summary judgment in favor of Jada as to Mattel's copyright claim is reversed.
The part that is objectionable is this, “a reasonable observer of the two marks could understand the HOT RIGZ mark to be expressing the sense that the product sold under that mark is, essentially, a HOT WHEELS product.” That’s a trademark analysis, not a copyright analysis. One can only hope that such confusion of two very different rights and infringement of them is limited to the facts of this particular case.

Superboy Crashes into Building

The authors of Superman – Jerome Siegel and Joseph Schuster -- are legendary for both their creative offspring, and for fights with their publishers, disputes that span many decades. One suit was brought in 1947. The Second Circuit issued an opinion in 1974, Siegel v. National Periodical Publications, Inc., 508 F.2d 909 (2d Cir. 1974). An opinion in the most recent dispute, over the character Superboy, brought by Siegel’s heirs, was decided on July 27, 2007, Siegel v. Time Warner Inc., 2007 WL 2172822 (C.D. Cal. 2007). The opinion, by Judge Larson, is a remarkable one in many respects, wholly aside from being 30 pages long.

One remarkable factor is that the opinion came on a motion for reconsideration of an opinion by another judge, a motion that was granted and which resulted in important changes favorably to defendants. Another remarkable factor was the court’s willingness to take on very complicated questions of collateral estoppel raised in prior settlement agreements and court opinions, and to then interweave those issues with equally thorny questions of copyright law. The opinion is a tour de force and cannot be adequately captured in the small space of a blog, even one as verbose as this one frequently is.

There were really two cases in one: a claim that a termination of transfer under Section 304(c) was effective, and if so, an infringement claim asserting that the television series Smallville infringed Superboy post termination. The opinion does not address this last claim, for which there is a pending summary judgment motion. There is also a joint authorship issue.

In brief, the court held that Superboy was not a work for hire under the 1909 Act (a result reached after an extensive review of case law on the issue), but that Superboy was a joint work between Siegel and Schuster. On the joint authorship issue, it should be pointed out that the 1909 Act case law departs significantly from the statutory provision in the 1976 Act in a determinative way: unlike the 1976 Act which deliberately rejects earlier Second Circuit case law, under the 1909 Act, it was OK if a work was created with an expectation that it would later be joined with others’ contributions. This was important because Siegel alone had submitted literary material to defendants’ predecessors. Since defendants had a grant from Schusters’ heirs for Schuster’s later-created artwork, they were off the hook for infringement, and were subject at most to an accounting since Schusters’ heirs did not seek to terminate under Section 304(c). (There is also a good discussion of issues involving derivative works).

Judge Larson’s opinion is a major win for defendants, and for us too given its extremely thorough and lucid review of very difficult issues. Bravo to Judge Larson and to the excellent work done by defendants' counsel, the legendary Roger Zissu.

The Price May Be Right But There's Still No Protection

On October 7, 2005, I did a post on Judge John Koeltl's fine opinion in New York Mercantile Exchange, Inc. v. Intercontinental Exchange, Inc. Judge Koeltl granted defendant's motion for summary judgment finding that settlement prices for NYMEX open positions were not protectible. Yesterday, the Second Circuit affirmed in an opinion by Judge Katzmann, with a concurring opinion by Judge Hall. Judge Katzmann's opinion is pretty much a by-the-numbers opinion (pun intended), but there were sparks between the two opinions on the threshold standard for protection and the originality of the prices at issue.

As I noted in the original posting, NYMEX's claim was for the individual prices, and not in the compilation of them. One might wonder how NYMEX got a registration for prices. The answer is it didn't. The Copyright Office repeatedly refused registration for the prices and NYMEX then (in my opinion) misused the registration process to get into court with a registration. The Office submitted a very helpful brief to Judge Koeltl. I confess to being baffled by why NYMEX every thought it had a claim for such clearly unprotectible material. To me, it matters not if NYMEX exercised judgment in setting a price, the price was still that price and that was a fact. Moreover, the individual price itself not remotely the type of work protected by copyright.

In rejecting plaintiff's claim, Judge Katzmann's opinion evidences some tsouris about drawing the line between discovery and creation -- did NYMEX "author" the prices" or did it discover them? That is a line that has no relevance here: NYMEX's claim was in individual discrete items that could not rise to the level of originality even if it had given them a fanciful name like googa-geeba.

Judge Kaztmann was, I suspect, perfectly happy to decide the case on the solid ground of lack of originality, but didn't, opting instead for what he thought the safer ground of merger. I think safer here relates not to the merits, but to the fact that he avoided a dissent by Judge Hall since while Judge Hall disagreed on the originality issue, he too rejected the claim on merger grounds. Politics aside, I find the merger argument the weakest. In Arica Institute, Inc. v. Palmer, the Second Circuit stated that the roots of the merger doctrine “can be found in cases such as Baker v. Selden.” That seems inaccurate since Baker neither used the term nor were issues commonly associated with the concept raised: Defendant's forms in Baker were concededly not substantially similar to plaintiff's and hence there was more than one way to express the idea. Plaintiff's claim was instead that copyright in his book gave him a monopoly over the system of bookkeeping discussed therein. (See Pam Samuleson's article discussed in yesterday's blog for more on this point).

The merger doctrine has been explained by language like, "When the 'idea' and its expression are … inseparable, copying the 'expression' will not be barred, since protecting the expression' in such circumstances would confer a monopoly of the 'idea' upon the copyright owner free of the conditions and limitations imposed by the patent law." Subsequent courts have expanded the doctrine's reach, finding it applicable when there are a number of ways to express a particular idea, and yesterday's Second Circuit opinion follows this trend.

The doctrine is, however, based on a faulty premise: If an idea and its alleged expression are truly inseparable, there can be no selectivity sufficient to permit originality. This is also true if there are only a limited number of ways to “express” the idea. Such a conclusion is, in reality, a statement that the purported copyright owner's way of expressing the idea contains only a de minimis number of non-ideas. So understood, merger is merely a judgment that there is a lack of originality and thus, like the idea-expression dichotomy, merger merely reflects a judgment about where on the continuum of expression the work at hand lies. The prices asserted by NYMEX fall off the spectrum completely.

Pam Samuleson and Section 102(b)

Yesterday I did a post on Professor Pam Samuleson's call for the initiation of discussions on a thorough revision of the Copyright Act. She has also written a very serious, very well-research 57 page piece on Section 102(b), entitled "Why Copyright Law Excludes Systems and Processes from the Scope of Its protection." The article is available here on ssrn and will be published in the University of Texas Law Review, 85 Tex. L. Rev. 1921 (2007). This is a must read.

Professor Samuelson has done outstanding historical, case law, and legislative history research, as well as providing very close readings of foundational Supreme Court opinions such as Baker v. Selden and Mazer v. Stein. She then ties her reading of the issues to late 20th century software cases. Her biggest contribution though may be in her devastating critiques of the Nimmer treatise's "reading" of Baker and Mazer. Although far from the first to do so, hers is the most thorough. Her work is one more welcome addition to what could be a lifetime of purging fallacious readings found in that treatise.

Baker is important for many reasons although as she notes few of them can be traced to the opinion itself. The origin of the idea-expression dichotomy is frequently traced to Baker, but it is questionable whether the origin is correctly ascribed; the opinion was decided on the ground of lack of originality. Plaintiff Selden had developed a system of double-entry bookkeeping, which he described through explanatory text and forms and published in a book for which he received a copyright registration. Defendant Baker wrote a book employing a similar system of bookkeeping, but he used substantially different forms. While certain columns were identical in both parties' works, the defendant claimed these columns did not originate with the plaintiff and were, moreover, required by state law. Even though there was no appropriation of either the explanatory text or the forms, Selden claimed that the copyright in his book gave him the exclusive right to use the double-entry system of bookkeeping, despite the lack of substantial similarity between the parties' forms. The Supreme Court rejected Selden's claim of ownership of rights in his system, writing, “the mere copyright of Selden's book did not confer upon him the exclusive right to make and use account-books, ruled and arranged as designated by him and described and illustrated in said book.”

The Court's reasoning is revealed in an earlier passage:

To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright.[FN5]

In short, Selden was attempting to gain patent protection for his system through a copyright in a book, an effort the Court rightly rejected. Then, in dictum that has become (in)famous as the “use versus explanation” dichotomy, the Court added:

The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public; not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application.

This statement is dictum for two reasons. First, under the facts of Baker, the defendant Baker's work was not substantially similar to plaintiff Selden's; Baker could use the knowledge contained in Selden's book “without incurring the guilt of piracy” and did so without copying Selden's forms. In other words, Baker did practice the art contained in Selden's book without using Selden's “methods and diagrams.” The centerpiece of the suit was Selden's claim that he owned a copyright in the bookkeeping system notwithstanding the lack of substantial similarity in the forms—the illustrated methods and diagrams. If there had been substantial similarity between the parties' forms, the case would have been a run-of-the-mill infringement suit. The Supreme Court appears to have subsequently interpreted Baker v. Selden as standing for nothing more than a case where there was no substantial similarity and the claim was in the system notwithstanding the lack of similarity.

The second and perhaps more important reason the “use versus explanation” statement is dictum is that the Court decided the case on an entirely different ground. The holding as announced by the Court was “blank account-books are not the subject of copyright.”[FN8] The Court's conclusion was that Selden's forms lacked originality, not that they contained expression that was merged with his bookkeeping system, as the lower courts' computer program opinions mistakenly assert. Instead, there was no original expression to begin with. The holding announced by the Court—that there is no originality in blank forms—spawned a rich history of cases and Copyright Office regulations involving such forms, the upshot of which is the conclusion that the Baker v. Selden “blank form rule” is nothing more than an application of the originality requirement. Those forms that possess the requisite “modicum of creativity” have been protected.

Baker v. Selden, when understood according to its facts and the holding announced by the Court, stands for the unremarkable conclusion that Selden's forms lacked the requisite originality. Since the forms were unprotected and Selden had not received a patent, he had no right to control their use. Deification of Baker v. Selden in late 20th-century computer-program cases is entirely unjustified.