July 1, 2009 by thomason.
In reversing an award of substantial attorneys fees in a copyright case, a Ninth Circuit panel reversed another panel’s seventy-year old ruling about whether a voluntary dismissal without prejudice makes the defendant a “prevailing party.” In Cadkin v. Loose, 2009 WL 1813263 (9th Cir. June 26, 2009), the parties were trusts formed by two former musical collaborators, who composed “cues,” which are “short musical works used” in TV and films.
‘We’ll be right back after this message; cue my music, Billie!’
Although the Ninth Circuit’s ruling in Corcoran v. CBS had been followed by courts there and in other circuits, it was “clearly irreconcilable” with a 2001 Supreme Court case on Fair Housing Act fee awards. The panel in Cadkin ruled that the “dictionary definition” of a prevailing party that J. Rehnquist applied in Buckhannon v. W.Va., 532 U.S. 598, 603 (2001) signaled a change in the application of each statute using that term. The panel held that a voluntary dismissal of a copyright case, even after some of plaintiff’s claims had been lost or dismissed, where it dismisses voluntarily without prejudice, does not cause a “material alteration of the legal relationship” between the litigants. Thus, the party benefitted by the voluntary dismissal is not a “prevailing party.” It could be sued again on the same claims.
The late plaintiff, Emil Cadkin, also composed film scores, such as one for “The Killer Shrews” featuring dog-sized shrews run amok on an isolated island and starring Ken Curtis, b/k/a Festus on TV’s Gunsmoke. Cue that killer reel up on your NetFlix account, and see if the shrews or the islanders prevail.
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June 19, 2009 by thomason.
It’s a short trip from S. Florida to Puerto Rico, but what’s there to do there. You could stroll a white sand beach along Playa Brava, or spend eight hours at the Univ. P.R. - Mayaguez making an illicit copy of a standardized exam. The defaulting defendant in National Council of Examiners for Engineering and Surveying v. Cameron-Ortiz, 2009 WL 1674768 (D.Puerto Rico June 16, 2009) chose the latter.
To sit for the patent bar exam, the OED requires an engineering degree, or credit hours in pure sciences and math, and then, there are Category C applicants. To be Cat. C, an applicant must pass the FE exam, but that is not easy. Defendant Cameron-Ortiz may, or may not, have planned to spawn a horde of new patent agents, but she did sit for the FE planning to copy the entire test. As the decision notes, the exam proctors suspected copying, and “a search of her jacket and bag” found “recording and transmitter devices … sewn into the pockets of her jacket and her bag, including: (1) a wireless audio/video transmitter module with a built-in microphone, (2) a mini video camera, (3) a receiver, (4) a pocket video recorder, (5) a cradle used to connect to a TV or computer with audio/video input, and (6) two battery packs … to power the equipment …[which] allowed Cameron-Ortiz to copy, transmit, duplicate, and otherwise reproduce the contents of the exam.”
The FE exam is copyrighted, but not in the public domain, because of a regulatory exception for registering a “secure test.” 37 C.F.R. 202.20. As a consequence of the infringement, NCEES “retired one copyrighted exam form, and a portion of another copyrighted exam form.” Damages allowed by statute were based “upon the cost of replacing the test questions” which resulted in an award “total of $1,021,630.80 in actual damages, plus “costs and attorney’s fees.”
So, in this week of federal court awards of non-recoupable copyright damages, the RIAA leads the NCEES by several hundred thou.
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June 18, 2009 by thomason.
A jury verdict against Jammie Thomas for downloading, and making available, 24 copyrighted songs, totals $1.92 million. The RIAA never will be able to collect on this Dr. Evil sized penalty, but still, it’s a win.
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June 17, 2009 by thomason.
One word added to the parlance, but still known as “fixed” to a novel and film is “The Godfather.” Capece? It seems the term is at once, unique and attributable to the Puzo book and Coppola film, while too being generic and adjectival. Can you brand your next product with it; can you put the godfather in your next film…
Indeed, can its use infringe the constitutional rights of an accused, as argued in U.S. v. Kincannon, — F.3d —-, 2009 WL 1577686 (7th Cir. 2009). There, Kincannon (no relation to James Mason’s character in “The Verdict”) complained that “the prosecutor inflamed the passions of the jury, rendering the trial unfair, by referring in closing argument to The Godfather.” Kincannon, a 77-year old meth dealer (but only 30-35 in the 1960’s) was accused of masterminding the actions of others, and in his closing soliloquy, the prosecutor brought in an allusion to Coppola’s work.
The Circuit panel suggested that there’s a right and wrong way to do that. “It would be one thing if the government compared Kincannon to Michael Corleone, an organized crime kingpin responsible for murders and a whole host of other criminal activity.” That’s the wrong way, or the way that could ‘inflame’ an Illinois jury. But by contrast, it “was not Corleone’s criminality, but Francis Ford Coppola’s direction that was at the heart of the prosecutor’s closing remarks.” That apparently is the right way to send the jury away, un-inflamed. “The prosecutor explained to the jury that he would try to do orally what Coppola did in his film-that is, tie together the events that occurred during the two controlled buys into one seamless story.” Not only was that an errorless way to close, it too is the hard way to do it. “To do so as eloquently as Coppola is a tall task, but there is certainly nothing improper about the attempt” by this prosecutor.
The Circuit panel then re-ignited the debate over how the Academy gets it wrong. To present two events, occuring separately, so as to urge a “poetic implication” that the audience “can understand it very easily, is difficult.” With that, the panel did “agree, as did the Academy of Motion Picture Arts and Sciences, who nominated Coppola for an Oscar for best director.” However, in “an upset along the lines of the 2009 Kentucky Derby win by Mine That Bird, the 1972 Oscar went to Bob Fosse (for Cabaret) rather than Coppola.” A search of copyright deposits for “Godfather” yielded 570 entries, including The Godfather Waltz “What are you doing the rest of your life?” but nothing criminal. It just shows that there’s a right and a wrong way to use, reuse, close, and even author anew from the term “The Godfather.”
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June 14, 2009 by thomason.
Litigation, especially over property to which the litigant has an intellectual connection, tends to be hard fought - but then, the stakes often are so high. The continuation of a business, and the employment of those pursuing that business, hinges upon the litigation outcome. On a coordinate path, with that leading to the litigation outcome, is winning. Plain, and simple, winning; we win; just win baby; I won that case; the other guys lost because… The litigating lawyers pull on the robe of battle, and ‘represent’ all that is at stake in the case, but too, they pursue victory, so that they win. The element of self-aggrandizement is there, and always near the surface. Clients complain that win or lose, the ‘lawyers get paid,’ and to that point, some lawyers can de-personalize their representation and just do the best job. Others need, and seek, to be part of the ‘winning team,’ and to impose defeat on the adversary. Again, it can for self-promotion, or in service of a ’cause,’ such as eliminating a law viewed as unjust or serving a person thought to have been prosecuted unjustly. In my pro bono experience, I’ve freely represented those who had virtually no defense - a seven-time shoplifter, an addict mother about to lose parental rights, a drunk driver who head-on-hit a nice family - but, every time a litigator comes up to the plate, they come to hit at least a single or draw a walk. In IP litigation, there is no laying down the bat, and the IP litigators on both teams play with sharpened cleats.
Some, or none, of those thoughts come up when lookubf over the RIAA v Thomas and Tenenbaum cases, especially the defense. Props to Ben Sheffner’s excellent posts and informed analyses of these matters.
The cases are taking on the big-show-as-down-we-go characteristic. It recalls some of the hype during the Pirate Bay trial, where the prosecutor’s case was ridiculed, but the defense failed. Having represented downloading college-age music lovers, there comes a quick understanding that there’s no much that defense counsel can achieve, and even if you have a good idea, then it’ll cost more than three-grand to play it.
Facing the facts about unpermitted copying of a registered work, gets you closer to perceiving how the case will turn out. The judge is going to apply the law, and eliminate many defenses drawn from fairness, equity and why-me. Even if you bring in inventive, devoted defense counsel, the proofs that establish copyright infringement are hard to overcome. A client once remarked, ‘your work is outstanding and when you said we’d win, we did, but if it’s a case of you against the World, then I’d have to put my money on the World winning.’ So, with a hopeless case, and an unlimited defense effort, the outcome still is fairly predictable.
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June 11, 2009 by thomason.
One attraction of intellectual property is that, although the exclusive rights are for “limited times,” the I in IP embodies an element of immutability. Even after IP is devoted to the public domain, the invention was one that persons of skill in the particular art, at the time of invention, would consider new, useful and non-obvious. That ‘moment’ of invention and its recognition tend to live on, unchanged. It, perhaps, was the best idea anyone had had up to then. It’ll be mentioned in the inventor or author’s obit. “We feel, conceive or reason …Nought may endure but Mutablilty.”
In this age of disposables and non-renewables, the thought of lasting contribution raises little general interest. Still, my attendance at a ceremony recognizing the life’s work of a group of septuagenarians subsumed thoughts about what current and on the cutting edge. One of the group was absent, having died, but her work was recalled. It was saddening, because she tirelessly spent the first years of her retirement, establishing an exhibit space for creative works. Her vision was ‘reduced to practice’ and no long thereafter she died suddenly. Other tried to keep it going, but the museum although beautiful, later closed and there is no sign of it.
The digital medium, and certainly works in cyberspace, are the most mutable forms of expression. The Dead Sea Scrolls or the Magna Carta appear fragile, but I expect those to be around for centuries to come. When all the works of intellectual creation are arrayed as digital bits, retrievable as long as the electricity holds out, or evanescent if the medium in which those are fixed becomes inaccessible, then hereafter, what “body of work” remains. It hardly seems believable that, if I ever have grandchildren, that they’ll want to come over and look at my hard-drive, just like I wanted to peruse the photo albums of my grandparents.
So, whether you are a blawger or lawyer, you’ll choose a day to give that work up. All those finely-worded and bound briefs, all those well-organized file wrappers, and all those blawg posts will go away, either dumped, shredded or deleted. Only mutability will endure. But, maybe if you invent something patentable, then you can sort of ignore that enduring fact.
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June 5, 2009 by thomason.
When an owner/patentee feels the ship listing, then the IP often gets assigned, reclaimed, conveyed, etc. No specific or legal remedy can prevent this, but typically pleaded is an action for imposition of a constructive trust, as in The Compak Companies v. Johnson, 03-cv-7427 (N.D. Ill. June 1, 2009). Even if it is an available remedy, there still is a shell game to play, hoping to impose the equitable trust on the correct transferee. After 20+ pages of analysis, the court held that it would “decline the parties’ invitation to declare who owns” the patents.
After passing several opporutnities to find ‘meaning’ in recent cases about patents for subatomic combinations of matter, I took to blawing about insolvency of IP-only-asset companies as in this Compak case. It deals with “Communion Packaging,” and the patents claim containers for “wine and communion wafers.” Holy gobbledegook, Antony! But here, an intervening bankruptcy (not a moral one) affected the title to the patents for the holy vessels.
The case and claimed subject matter altogether provoked surmise about what sort of advertising or promotion was used for the patented containers. ‘We transport what you transubstantiate.’ A related curiosity was whether the ruling could be rendered without using any Latin; and, it could not: holding that a post-insolvency license was not void “ab initio.” Taking a quick look at USP #5,246,106, I was reminded of that travel cup my folks gave me for the long bus ride to summer camp - that, was unholy.
The ruling is a worthy read for those who counsel start-ups, where the patentee/owner either holds the IP personally or has licensed it to the start-up. The actions and uncertainties that can ensue when the start-up faces insolvency, and its only asset is the IP, make the case useful to consider.
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June 1, 2009 by thomason.
News that the Supreme Court will review In re Bilski is quick to set off currents of speculation. In its un-reviewed form, Bilski was relief from the State Street hangover and was a work-around to the stunted state of reforming the Patent Act. Now, one wonders how the Supremes can keep intact their string of smackdowns on CAFC rulings, when Bilski seems to have been a reaction to prior whippings.
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May 26, 2009 by thomason.
May celebrates Historic Preservation month, http://www.preservationnation.org/take-action/preservation-month/. Those who have contributed to the preservation and adaptation of historic places in America are celebrated by The National Trust for Historic Preservation, as well as by local bodies. 16 U.S.C. §470a.
Tonight I am excited to accept an award in the category of best adaptive use of an existing structure from the local Historic Review Board. My renovation of an ugly duckling building, restoring its original curved corners, and upgrading it with an Art Deco facade and interior, was like IP - fun, but challenging.
Attorneys, who fill in many spaces in downtowns and renovate existing structures, have done as much as any group to contribute to historic preservation and revival. So, give yourselves a pat on the back, and invite your community to visit that office which gives pride to your profession.
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May 22, 2009 by thomason.
Alas, the sphere of copyright protected musical works is too often penetrated by pirates, and if Gilbert & Sullivan still could craft a tune, they’d bemoan that what’s been gained is now often lost. This fine, and hallowed, Memorial Day weekend, will include some time listening to some faves on the radio or media player, which was the notion that lent some interest to yesterday’s contempt ruling against an unauthorized distributor of contemporary works.
Among the hits that provoked the Court to consider the case were “Hypnotized,” “Freaky Gurl Remix,” and “Chillin With My B* * * *.” It was not Jung or Freud that observed: ‘know another by what he will steal.’
The first line of defense was improper venue. The defense wanted to a venue change, which could have raised questions under 28 U.S.C. §1400(a) of where that Freaky Gurl may be “found” or was Hyponotized or was Chillin. Transfer was denied.
Defendants earlier had consented to an injunction, but were alleged to have acted contemptously by later distributing hits that included “Dip Slide” by T.I., and “B* * * * * * Ain’t Sh*t” by Attitude. Surely, anyone with the credentials needed to ascend the federal bench would be prepared to address the degree of “substantial similarity” between rap songs, er.. tunes, (?) works…
Contempt was found, and the sanction was for the infringer to “disgorge a percentage of the profits derived from that album equal to the infringing song’s proportionate share of the total number of songs on the album.”
There just are things that deserve the protective sword of copyright.
Atlantic Recording Corp. v. BCD Music Group, Inc., 2009 WL 1390848 (S.D.N.Y. 2009).
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