Category Archives: Copyright

Remember When You First Heard “Kick Out The Jams!”

Hey Forever 21 got sued, again, for copyright infringement – and it’s not over clothing design.
It is alleged in a L.A. Federal Court complaint that F21 made and sold clothing bearing a copyrighted photo of the [to some, legendary] rock band, the MC-5. Said photo, exhibit A to said complaint, was on the F21 garment “H81Rock-N-Roll Studded Top.” That’s rock and roll with a capitol N, and in caps MC-5 (Motor City 5).

Well-known rock icon photographer, Robert Matheu, intends to kick the jams out of that F21, H81 “Studded Top.” His photo, taken in the ‘summer of `69’ was not attached to the PACER copy, but it’s likely this photo on his website, Matheu’s suit filing nearly coincides with the passing of another legend of Detroit hard rock, Ron Asheton of the Stooges. The filing is 2:2010cv0214-CAS (C.D. Cal.).  Rock on Ron.

Vive la Different Way of Co-creating.

The French court decided a design case by a petit-mains, which are seamtresses who present design samples to major fashion houses, hoping to secure a contract to purchase.  Basically, the court issued a split decision, granting both sides damages that nearly offset, and ruling for each side on some claims.  The case highlights how in IP, the ‘old ways’ used in design industries – working without contracts or copyrights – hit up against the modern, rights-based rules of IP ownership.

Press reports leave it unclear whether the court rendered a verdict, with some oral explanation, or also issued a written opinion on the claims and their disposition.  The backstory is that Carmen Colle, grew a firm of seamtresses in France, and her products were adopted in the several major fashion lines.  A crocheted sample was presented to Chanel, but her offer was not accepted.  Later, Colle saw a finished garment, incorporating her sample design, being sold in a Chanel store in Asia.  She called it to Chanel’s attention, but no resolution was reached.  She sued for counterfeiting her design, and for breach of contract. Chanel cut off business to Colle, and countersued for commercial disparagement (based either on the suit allegations, or more likely, public comments by Colle about the alleged taking of her original design).  The historic practice of not copyrighting the designs (allowed under French law), and not having an agreement setting out ownership rights or limits on use without attribution, left Madam Colle without much of a remedy in court.

Consistent with modern IP practice – “get it in writing” is the norm.  Sure, software writers, screenplay editors, collaborators, etc., still put their creative contributions in the hands of others to use, or refuse, and often without an expectation of specific remuneration.  Old way -> bad; written IP agreements – > often best.

The further points of interest are how Chanel’s pre-trial defenses fit or misfit with the verdict.  Colle’s counterfeit charge was tossed out, but the reasons are not clear.  In pre-trial comments, Chanel’s stated defenses were either that the design was the result of specific instructions it gave to Colle, and/or that Chanel had used a design that was ‘at the very least a product of collaboration’ by the parties.  The first of those often arises with software or screenplays – write me a routine that performs these functions, or a story which has these plot elements.  Both wind back to the question of who owns, or has any rights to the end product, where only one person wrote the work, but the other suggested the content.  The second of those defenses, joint ownership or collaboration, is more an acknowledgment of the uncertain nature of the relationship.  If both own, that is, own an undivided joint interest in the work, then one cannot appropriate from the other entirely, but neither must account to the other for gains made from a joint work.

Madam Colle believed that the exchange of designs, as a step to reaching an agreement, was understood as a matter of “honour and justice and noblesse.”  Her lawsuit, however, provoked Chanel to point out the lack of a copyright and of a written understanding about ownership and exploitation of the disclosed designs.  Again, the ‘old way’ is passing away, supplanted with the ‘rely on rights and writings’ approach now necessary to those in the creative industries.

Twombly’s Alternatives Make Pleading Personal Jurisdiction Particularized.

The seeds of legal change often are found in unpublished, Circuit opinions. Among that mix are decisions interpreting, expansively, the Supremes’ remarks about adequate pleading in the Twombly and Iqbal cases. Serious parsing and explanations emerge when a panel decision extends the “plausible” requirement, without at the same time, implicitly amending federal civil procedure rules 8 and 9. Newly-defined pleading rules for personal jurisdiction over national distributors of infringing works are the seeds sown by a Sixth Circuit in Palnik v. Westlake Enter., 2009 WL 2707368 (6th Cir. August 31, 2009), a case over distribution of films that had an infringing soundtrack.

Without repeating here the elemental facts needed to sustain personal jurisdiction, it needs to be recalled that those pleaded facts are ‘taken as true’ when challenged by a Rule 12(b) motion. Then though, the plausibility inquiry kicks in. If the pleader opts for jurisdictional discovery, then that forfeits the advantage of the pleaded jurisdictional facts being favorably construed in the pleader’s favor. The Circuit panel ruled that Palnik didn’t plead enough facts, that what he did plead didn’t pass its plausibility test, and that Palnik never asked for jurisdictional discovery.

What was new in this case was the combined hurdles of pleading jurisdictional facts, with plausibility and with “reasonable particularity.” As best as research indicates, only the 6th and 3rd Circuits require jurisdictional facts to be pleaded with “reasonable particularity.” It’s not in Civ. Pro. Rule 9. But, those Circuits differ in the approach. The 6th makes it essential to the pleading, while the 3rd views particularity as a indicia of the need for jurisdictional discovery – even if that wasn’t requested. Consider C.J. Stapelton’s recent remark in dissent “I read ‘with reasonable particularity’ to mean that if a plaintiff suggests a realistic basis for believing that personal jurisdiction exists, he or she should be allowed to pursue discovery before having to prove that such jurisdiction does exist.” Metcalfe v. Renaissance Marine, Inc., 566 F.3d 324, 340 (3rd Cir. 2009), and Toys “R” Us, Inc. v. Step Two, 318 F.3d 446, 456, 65 U.S.P.Q.2d 1628 (3rd Cir. 2003). The 5th Circuit follows the 3rd Circuit on that approach. Cable Electronics, Inc. v. N. Amer. Cable Equip., Inc., 2009 WL 2382561 (N.D.Tex. Aug. 10, 2009).

The twist added in Palnik’s case derives from Twombly defining a “plausible” allegation as that which does not admits of two possible “alternative explanation[s]”. 550 U.S. at 567. When the well-pleaded facts support a persuasive, and perhaps likely, “obvious alternative explanation” to the pleaded facts, then that can defeat an assertion of personal jurisdiction as not “plausible.” That obvious-but-unfavorable notion seems hostile to construing facts in favor of the pleader, viz., if the allegations admit of two explanations, then doesn’t the pleader get the most favorable one? “Palnik’s complaint fails not because he lacked sufficient information to state the facts supporting jurisdiction or because the defendants leveraged their possession of information to hide the true facts, but because the allegations contained in his complaint were capable of multiple interpretations regarding the defendants’ involvement in the distribution of the film”.

A slap added to the twist was the panel’s suggestion that Palnik could have satisfied the “reasonable particularity” requirement by alleging the mots’ magique upon “information and belief,” and as enabled to do so  to the extent possible under Rule 11(b). “Palnik had his chance …and did not take advantage of it.” This suggestion seems to urge overstatement, in place of notice pleading – all in pursuit of singular interpretation and reasonable particularity (which aren’t in the rules).

The decision, albeit unpublished, comes from a distinguished panel, which suggests where the requirements to plead personal jurisdiction may be heading. It too raises concern because the Palnik case involved whether distributors of a film containing infringing music “caused it to be distributed to Ohio through a national or regional distribution contract,” and the reasonable particularity requirement came in a case involving internet commerce. These modes of distribution are likely to arise in most all cases, which today infrequently involve locally-based authorized distributors of products. These new layers of requirements come out, just when you’d been practicing long enough to think you were starting to understand that personal jurisdiction material presented in your first year of law school.

I ‘Know a Guy’ – Generically Speaking.

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.”

The Unbearable Pointlessness of the Fight.

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.

The Complaintant As Essayist.

All that a federal complaint requires is a “short and plain statement of the claim.”  FRCvP 8(a); Swierkiewicz, 534 U.S. at 512 (2002) (a 28-word complaint).  Recently noted are complaints which turn a phrase finely, and which are quotable in press reports.  What is better – to plead ‘just the facts’ or more?

One new sort of allegation, is to plead the state of the law.  Our Supreme “Court further held that Sony was not liable for supplying the technology that allows the consumer to make such copies.”  20th Century Fox v. Cablevision, (S.D.N.Y.). The “federal copyright law does not extend to protect a fictional charager in the abstract, outside of any particular storyline or work, since the character was and is an idea and concept and federal copyright law specifically does not extend to, cover, or preempt laws dealing with [that].” Friedrich v. Marvel & Sony, (S.D. Ill.).  No matter how you say it, these allegations will be answered with ‘pleads law not facts.’

Another new tactic is to plead the equities, even in a law case. “Industry observers noted this fundamental shift in the competitive landscape.”  Oracle v. SAP, (N.D. Calif.).  “Indeed, there appears to be a general consensus in the [TV &] film industries that DVRs do not violate the Copyright Act.”  Cablevision  “YouTube has harnessed technology to willfully infringe copyrights on a huge scale, depriving writers, composers and performers of the rewards they are owed for effort and innovation, reducing the incentives of America’s creative industries, and profiting from the illegal conduct of others as well.”  Viacom v. YouTube, (S.D.N.Y.).  Does any of that plead how “the pleader is entitled to relief”?  Rule 8(a)(2).

Essaying in your next IP complaint may get it noticed.  My favorite pleaded allegation (and one that cries out for answers) is:  “By day, taciturn and reserved with an outwardly tough demeanor, he hides the loss felt from the death of his father, Barton Blaze, the affection he feels for Roxanne, the love of his life, his guilt over his inability to save the life of Crash Simpson, the only father he’d ever known, and a heart of unparalleled concern for those around him.”  Friedrich v. Marvel & Sony (The “Ghost Rider” copyright suit).

R.I.P. – Ross Zirkle

At death, an artist’s life is canonized by the art he has entrusted to the living.  It is saddening to hear that artist and professor, Ross Zirkle succumbed to cancer. 

History, law, religion, royalty, and common citizens all celebrate art, and so too, they revere the artist, who opens windows for us with their creative eye and inspired hand.  Their works, having been, as the law states “fixed in any tangible medium of expression,” enliven objects and domains, both observed and imagined by them, with the artist’s metaphysic.  When the artist dies, that metaphysic, that viewpoint, continues unchanged, and the windows that they have opened remain so. 

The enrichment, inspiration and instruction of this teacher and artist too remain with those who shared some time on this artist’s path through life.  R.I.P.

The CRB Slips the Yoke onto Streamcasters.

Friday, the Copyright Royalty Board issued its determination about the compulsory royalties that webcasters will have to pay for streaming music.  Various commentators report that, at the rates set by the CRB, the business of streaming music over the web, is dead.  The less-fatal viewpoint is that the RIAA intends to distribute streaming music, but over websites it selects, at agreed royalties, rather than at the CRB’s compulsory rates.

In the CRB’s 115-page determination, the rate structure evolved from a debate between a per-play royalty versus a percentage of revenue royalty.  The webcasters would be benefitted by revenue-percentage model, which would enable both small and large to streamcast and grow their businesses.  The per-play rate would put many streamcaster’s operations into the net-loss category.   The put-out-of-business argument got this sort of reception from the CRB.  “Copyright Royalty Judges cannot guarantee a profitable business to every market entrant. Indeed, the normal free market processes typically weed out those entities that have poor business models or are inefficient. To allow inefficient market participants to continue to use as much music as they want and for as long a time period as they want without compensating copyright owners on the same basis as more efficient market participants trivializes the property rights of copyright owners.”  What cut stings more, being branded as inefficient or being trivialized?  Neither – an .08 cents per performance royalty is the killer!

The CRB decided against the revenue-percentage royalty, based on several factors, mostly difficulties with calculating and assessing the sums due.  “The absence of persuasive evidence of what constitutes an unambiguous definition of revenue that properly relates the fee to the value of the rights being provided militates against reliance on a revenue based metric.”  “The Copyright Royalty Judges do not find a sufficient clarity of evidence based on the record in this proceeding to produce a revenue-based metric that can serve as a good proxy for a usage-based metric.”

In the end, the determined rate, for 2007, is .08 cents “per performance.”  A “performance” is streaming one song to one listener, so do the math.  Streaming 10 songs each hour, 20 hours a day, for 30 days is 6000 performances, if you have only one listener.  Streaming to 20,000 or to 200,000 listener is many more, and at .08 cents per performance, the monthly rate only can be borne by a webcaster with substantial, consistent revenues (not inefficient or trivial ones).

The CRB’s determination goes for publication and comment in the Federal Register.  A web-copy, provided at no royalty, is at

So what if they copied; whatever; fuggettaboutit.

The IP bar deserves to be commended for its studied efforts protecting the IP of the businesses, innovators and artisans of our Country.  Instead, the legal protections sewn around IP appear to provoke more criticism of U.S. patents and copyrights, and to foment calls to slacken the bonds permitted by Art. I, Sect. 8, clause 8.

Much of critique is aimed at Congress or the Courts, but there too are some who suggest tossing away long-standing IP principles.  Some critics are idle bloggers or academics, but other voices carry more weight.  Here are some striking remarks by one worthy observer.  A “plagiarized passage in a published work can increase the pleasure of the reader.”  The “amount of sheer originality in literature and the arts is greatly exaggerated.”  “[O]ur broad and strict copyright laws …stifle creativity.”

These passages are taken from “In Defense of Plagiarism” by noted Federal Judge, Richard A. Posner, in the Jan. 29th edition of Forbes.  His Honor makes three proposals: stop extending copyright terms, add an intent element to infringement, and provide remedies only for proven harm to the “source, a competitor or an audience.”  Posner’s money quote is “No harm, no foul is what the law ought to be.”

Many may agree that legislating term extensions to existing copyrights does not serve the public good.  Posner may have that right, but it gets overshadowed by his suggestion to “bring in the concept of fraud,” to the copyright law “with its connotation of harming”.  Posner’s thesis is that copying has benign forms, “If copying is not fraudulent” and “if it thus is harmless” then why should it be “a reprobated form of copying.”  Because it is unoriginally wrong?

He adds many examples of now-famous persons who were copyists, who in his opinion, improved on the original.  Posner claims that Manet “borrowed the woman’s pose” in his painting of “Olympia” from the master Titian’s “Venus of Urbino.”  Dear Judge Posner, naked women reclined in repose might look all the same through your spectacles, but the keen eyes of others never would mistake the lissome Olympia for the full-figured Venus.  So too, no studied reader would confuse Plutarch’s “Mark Antony” with either of the retellings written by Shakespeare and by Sir Thomas North.  Again, tales of one figure in history tend to have shared content, or their tale would not be true to history.

Judge Posner, in my humble view, suggests a copyright regime built in honor of established authors.  If the work of unknowns can serve as the inspiration for others to “improve the original” then they are certain to remain unknowns.  Posner justifies his no-harm, no-foul thesis with the notion that “plagiarism is ubiquitous in Western culture.”  That same point of reference may be a solid rationale for granting copyrights, for “limited Times to Authors,” which are enforceable with remedies not excused by a lack of fraudulent intent or an absence of provable harm.

Rugged Individualist Film Fest & Copyright Primer.

You probably watched a film over this long weekend, perhaps at a theatre and at home.  Seeing the FBI & Interpol WARNING about copyright infringement in 16:9 aspect on my new HD setup really made a big impression. 

My viewing pleasure was The New Bond Film (does it have another title?), The Good German, and two classics, Lawrence of Arabia, and Rocky.  Each has that central figure, with their own essential male-ness – strengths that cloak vulnerabilities, wise ways that may just be instincts, admired by men and women to the point that some want them destroyed – no one of them the sort you’d raise your son to be.

Each of these films has its own copyright profile too.  Lawrence is an original portrayal of a life in actual historical context.  The New Bond and his exploits derive from, but differ from Ian Fleming’s novel.  Rocky depicts a flamboyant heavyweight champ named for an earth god, who plucks an unknown club fighter into the limelight.  The Good German uses visual composition to pay homage to past films.  Artistic license, and the copyright tenets that provides exclusivity, provides full vocal range to these characters and to directorial efforts composed from history and popular culture.  What limits then are there on making a known story one’s own.

Recent cinema has retold ‘true’ or ‘inspired by’ stories of Ray, Johnny Cash, Enron execs, The Aviator, and now, “Bobby.”  These biopics are more history, or pop culture fables, than “works of original authorship.”  When the famous or infamous say “I’ll sell you my story,” what really do they sell – a covenant not to sue?  The great exploits of Lawrence in Arabia are true, and many truly are exagerrated.  With that, and “Bobby,” the man who lived the story died before it was adapted for the silver screen.   Events in history are publici juris, and uncopyrightable.  Yet, the expression or arrangement of the historical story may be protected by copyright.

Is “Lawrence of Arabia” any more T.E. Lawrence, or any less so, than “Rocky” is a depiction of The Bayonne Bleeder, Chuck Wepner; is not Apollo Creed a crass version of The Louisville Lip?  Copyright cannot protect the author’s studied retelling of the facts, especially when those facts and the essential characteristics of real persons are woven into new costuming.

The Bond franchise credits its originator, but the films produced by Albert Broccoli derive from, rather than track closely, the books of Ian Fleming.  Both are original works, protected by copyright, one for the originals and others for the derivative versions.  A derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work.

A more complex issue of copyright accompanies “homage” films such as The Good German.  Students of film noir, neo-noir, as well as fans of Dietrich, Garbo and Welles can reel off the numerous instances where The Good German pays homage to their prior work.  “The Third Man” “Casablanca” and others, plainly were recast in The Good German.  Recall the cases about “look and feel” form of copyright infringement.  Director Steven Soderbergh adopts, in gross, the look and feel of several classics and noir films.  In fact, scenes or perhaps Scènes à faire, appear throughout the film.  What then is the distinction between homage and “substantial similarity” in a copyright context?  At least one of the two will get you sued.  Homage is perhaps a sincere form of showing your respect for the masters.  Substantial similarity is what chafes an author to the point of suing for exploitation.

It’s another week, with plenty of opportunities to watch more films.  Enjoy!