Category Archives: Copyright

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.

That Judge Said Disgorge, and I Say Much More.

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).

Did the Oracle Ever Speak of The Balance?

If you’ve been to Delphi, and stood at the ruins of Oracle, looking off toward the valley, wondering whether it lies at the line between the cosmological, the meta- and the physical, hinged over a sorcerer’s stone, and not far from the touristical, then you must’ve been experiencing a lot of demestica on that trip.  None of some of the mysteries at the Oracle of Delphi have been recreated at the Oracle of Silicon Valley, but still, there is there some thirst for the unknown.

Oracle entrepreneur and yachtsman Larry Ellison had his name invoked in a court proceeding, reported out of NYC, in which the Master & Commander of the Alinghi team alleges that a spy, (allegedly) from Adm. Ellison’s yacht team, tried “to illegally break into facilities to take photographs and secure information” about the design of the vessel that the Alinghi team will enter in the 2011 America’s Cup.  The interloper was arrested after Alinghi employees saw him scouting around and photographing in the area where they are building their vessel.

Do boat-builders have common law IP rights; or, did Justice S.D. O’Connor rule those out in Bonito Boats?  Perhaps the billionaires, who plan to challenge for the America’s Cup, have their own take on J. O’Connor’s remark that our laws embody a “recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.”

I Covenant, No I Condition, Not To Infringe Your Copyright.

Not since the Sixth Circuit decided Mike’s Train House v. Lionel LLC, around Xmas/Hannukah 2006, has the notion of grown-ups, wearing judges’ robes, arguing over how to run model railroads, come into mind. Until now, with the CAFC’s ruling in Jacobsen v. Katzer, 8/13/2008 (a month that celebrates no holidays).

Jacobsen writes software to run your model train. (Yes, Virginia, examine the box for a ‘software not included’ caveat). Access to downloadable files of Jacobsen’s copyrighted programs is granted subject to an “Artistic License,” which is modeled after a Creative Commons or GPU license. A competitor downloaded software owned by Jacobsen, then incorporated it into their competing product.

The district court framed the issues presented by a preliminay injunction motion as whether noncompliance with the Artistic License terms was a breach of license, or an infringement of a copyright to the work. The Circuits are not aligned on what differentiates a license breach from a copyright infringement claim, and this decision by the CAFC does not add to the jurisprudence – but they called it “precedential” anyway.

The conundrum is that a license, governed by state contract law, may set conditions or limitations, which when not followed, create a cause of action for copyright infringement. However, none of those conditions are statutorily defined as infringing conduct per se. The license could require that each use include a “prominent notice” that the author of the work is a ‘flat-out genius’ and if that was omitted, then all the presumptions and remedies allowed by the copyright statute come into play. Judge Hochberg, sitting by designation, split the territory into “[C]ovenants and conditions [that] limit the scope of the license …[which] are governed by copyright law,” as distinct from mere “covenants, by contrast, [that] are governed by contract law.” Such semantic distinctions about intangible rights, are well, intangible too.

The variations of covenants viz. conditions, which are not “mere” covenants, amply prove the need for a clearer state of the law. If a condition, or covenant, does not promote a goal or policy of the copyright law, then it should not be the basis for a copyright cause of action. Conditions or covenants that serve business or philistine goals should not provoke a copyright infringement action, but only recourse to a contact case for damage to that business interest. Consider the Bobbs-Merrill decision, 100 years ago by our Supreme Court, where the covenant required resale price maintenance, “No dealer is licensed to sell it at a less price“. Resale price maintenance is really not what the drafters of the Copyright Clause intended to protect. In this Jacobsen decision, the CAFC views the conditions in the Artistic License as keyed to the original author gaining the value from derivative works, i.e., values “vital to enabl[ing] the copyright holder to ..benefit from the work of downstream users.” Later, the panel observed that the conditions in the license “support the right to exclude,” which again, is a goal or policy served by the Copyright Act.

The CAFC rested at ease with a “mere” semantic distinction between contract and copyright claims, unencumbered by any policy or statutory goal being served. Instead, the subtext of the panel’s opinion is that creative collaboration and the open licensing that supports that are just plain “good.” Whither the statute, or the goals of copyright that it serves?

Originality is Elemental, but is it Art.

The protection of visual and artistic works is the stock and trade of the Register of Copyrights. These works do not have to aesthically pleasing or critically acclaimed, only original. The 10th Circuit’s recent decision in Meshwerks, Inc. v. Toyota has kept me perplexed through the weekend. In the end, the panel relies on caselaw about whether photos embody copyrightable originality, to decide that 3D digital models of a car body are not copyrightable, but are simply such perfect copies as to lack minimal originality. Trying to extend that logic seems to lead to a rule that superrealistic depicitions lack originality, but that imperfect representations have earmarks of originality that make those copyrightable.

The ruling is grounded on the premise that a photo includes the elements of shot “angle, lighting, shadow, reflection, and background,” which differs from photo to photo. A perfect 3D model created from actual measurements of an object has “stripped away all lighting, angle, perspective, and ‘other ingredients’ associated with an original expression.” That suggests that added content makes a work more copyrightable, but that does not actually answer the question of whether a “stripped away” image, or some other minimalist work, embodies originality or not.

Meshwerks was hired to create (?) wire model 3D drawings of the Totoya body, in digital form, for advertising use. The wire frame depictions can be manipulated, shadowed, colored, etc., and then inserted into ads, which offers a more flexible than a photoshoot, but yields comparable quality images. Using sensing devices moving all over the exterior of the car, a digital image was developed in 3D using modeling software. The finished image appears as a series of wires or frames forming the shape of the car body. Again, with a keystroke, the exterior color and other features can be added, which converts the wire frame image into a picture of the car. That simplicity combined with perfection was enough for the 10th Circuit to deem the 3D images as unoriginal, and uncopyrightable as visual works. The suit was driven by the fact that the images had been licensed for a single ad campaign, but those later were used again, and were given to a competing company to use for similar projects.

There are several threads running off this decision, both in copyright law and perceptions about originality. The case holds that the images are not copyrightable, but presumably, those had been registered as visual works. An alternative might have been to copyright the set of instructions that drove a PC to the result of generating those specific 3D images. The Copyright Office might have accepted the code as a copyrightable “set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result,” i.e., desired 3D images. On the aesthetic issues, consider this. The visual works of Frederic Remington or Norman Rockwell are loved because they so closely capture our view of ‘the original’ subject of the works. It is not that such depictions of a cowboy or a horse, or of events typical of Americana, are original or never before seen; it is just the opposite, that it, they are so exact in matching what we see with what we’ve seen that we view these artists’ works as unique, exact and truthful to perceived reality. If one were to pose live models in exactly the same way as seen in a Remington painting, then would a photo or drawing of that have enough ‘minimal originality’ to be copyrightable, or would it be so similar as to lack originality?

Results are Worthy Goals For Experts, but Principled Reasoning is Worthier.

Prior posts dealt with legal experts and the uncertain edge between copyright claims governed by federal law, and distribution contracts subject to state law. In a software infringement, and unauthorized distribution, case, there already may be expert issues of “substantial similarity” on a functional or instruction level. Add to that, disputes over local law as applied to the distributor’s alleged unauthorized actions under the contract. The latter issue presented difficulty when the dispute crossed international boundaries in Artificial Solutions Germany GmbH v Creative Virtual Ltd., [2008] EWHC 593, Case No: HC07C01803, England and Wales High Court of Justice (Chancery Div. Apr. 2, 2008).

Rather than relating the overall dispute, the High Court’s comments on the legal experts are instructive of what often is presented and how the court views it. My other observation is the German convention of listing all the titles of an expert, e.g, Prof. Dr. Dr.

Both parties offered experts on German law to try to confirm or avoid provisions in the software distribution contract. But counsel, probably, kept the experts’ opinions circumscribed (possibly so the opponent could not get admissions). The High Court felt that the narrowing approach was not altogether helpful, as follows:

“I also heard evidence from two distinguished professors of German law. Professor Dr Dr Stefan Grundmann, Professor of German and European Private and Business Law” and from “Professor Dr Heinz-Peter Mansel, Professor of German Civil Law, Comparative Law and Private International Law,” and both “were clearly doing their best to assist the court.” Their assistance was limited though, because “both had been led by their instructions to focus on the application of the relevant principles of German law to their instructing party’s version of the disputed facts of the case, rather than on simply expounding their understanding of those principles.” This frustrated the inquiry, making it “difficult to ascertain precisely where they differed as to the principles as opposed to the application of the principles.”

And so it goes. Experts can agree on the principle, of law or damages or of science, or they can disagree on the applicable principles. Similarly, experts who agree on principle, can apply the principles in ways that lead to differing results. Here, the Court felt that neither side was committed to a principle, but only to a result that favored their client. Before spending a lot of time and money on experts, it is preferable to commit to a principle, and state if it differs fundamentally or in application to what the opposing expert relies upon, and go with that in court. Trying to get past making that commitment runs the risk of the experts not being persuasive, or having the High Court deem your approach “not straightforward.”

Named as a Derivative Work of Twombly, in 3 notes.

In losing a case over the copyright holder’s 106(3) exclusive right of distribution, one reads every case and all of the legislative history on the subject. Even when studied, the distribution right protected by copyright has fuzzy contours and intangible aspects. Copyright is a creature of federal law and statute, but distribution is more a matter of contract, lex mercatoria, and the U.C.C. Thus, what distinguishes the two regimes, and to which caesar is tribute owed.

The latest, best analysis of the distribution right comes as a result of the ‘plausibility’ probing that The Supremes required after Bell Atl. v Twombly, (2007). In Elektra Entert. v. Barker, 7:05CV7340 (3/31/2008 S.D.N.Y.), the standard suit by the RIAA against some peer-sharer got non-standard review. The claim that Barker infringed the right of distribution went under the microscope, because RIAA alleged that the copyrighted works had been “made available” as an infringement distinct from actual distribution.

In the end, the Judge found enough allegations of actual distribution, but held that just making a copyrighted work “available” for distribution failed to state a claim of infringement of the enumerated statutory rights. “[B]ecause Congress did not expressly equate the act of ‘offering to distribute’… to the act of ‘making available,’ Plaintiffs’ allegations – insofar as Plaintiffs wish to hold Defendant liable for acts of infringement other than actual downloading and/or distribution – fail to state a claim.” Reduced to an analogy, advertising “$8.95 copies of last year’s Oscar winning movies,” but selling none, does not infringe the copyright owner’s exclusive right to distribute.

The infringement alleged in my first copyright trial requires a working knowledge of skee-ball as is played at coastal amusement parks, and of the fabulous prizes always on display. Understand this much, no one wins the big prizes hanging about the booth. Those just attract skee-ballers to play, only to win junky, little, novelty prizes. My defendants displayed plush toys that were beloved characters in a most-famous movie. No one ever won one, i.e., none ever were “distributed,” but these toys were ‘made available.’ As the saying goes, if I knew then what I know now, maybe the 2nd Circuit already would have ruled on the available right of distribution.

Must Have Been More Original Than The Many Others.

A local TV news anchor, whose on-air name is Catherine Bosley, was a wet T-shirt contest participant in Florida in 2003. She claimed back the photos of her, resigned from her TV job, then registered the photos for copyrights in 2004.  In a prior case, an injunction against use of the photos was stayed on appeal, as a prior restraint Bosley v., 2004 WL 2169179, 70 USPQ2d 1537 (6th Cir., No. 04-3428, 2004), noting that the speech at issue lacked a creative component. Now, Hustler has published some photos of her, and she has sued. Balsley et al. v. LFP Inc. et al., No. 08-0491, (N.D. Ohio, Feb. 27, 2008).

Would these photos rise to the level of “originality” necessary to be registrable for copyrights?

The Tasini authors copyright case get Article III’d

Before the turkey and dressing were still getting frequent re-heatings, the Second Circuit had another sitting with the class of authors who’d licensed their works for print publication but not for later digital archive publication.  After the final rulings in the Tasini case, suits were consolidated, a class was certified, and a settlement was approved.  The Second Circuit, on Nov. 29th, undid all of that, on jurisdictional grounds.

It held that the district court lacked jurisdiction over all claims and all class members, and so, its actions disposing of the case were vacated.  The sole basis was 17 U.S.C. 411(a).  Hornbooks instruct that to state a copyright claim, two things are needed, a copyright and a copy.  Section 411 provides that suit cannot be “instituted” until the author had pursued “registration” of a copyright.  Many of the authors and works lacked registration, and so as to those, the court lacked jurisdiction.

Two points seem odd.  First, cases often are settled while there is a pending motion to dismiss for lack of jurisdiction.  Those undecided motions do not divest the court of power to finalize, even later to enforce, settlements.  Maybe if such a motion was decided, there would have been a finding of no jurisdiction, but the case is allowed to settle.  To toss a settlement based on a threshold jurisdiction issue doesn’t do much to encourage settlements.  Second, the related arguments that having jurisdiction over the registered works was enough to argue for supplemental jurisdiction over the rest of the case sounded pretty good.  The Circuit Court rejected that, apparently because the defendants who argued that on appeal had argued there was no supplemental jurisdiction when they were in district court.  IMO, the maleability of the supplemental jurisdiction statute provides ample ground to keep all of a case involving related issues and parties.

Last, the statute may  plainly preclude the unregistered works from being adjudicated in federal court, but the caselaw that the Second Circuit relied on sounded weak.  Two Supreme Court cases were cited, which interpreted a statute on review of Social Security determinations.  Those cases held that review only of “final” decisions was jurisdictional.  The test of finality regards appellate jurisdiction.  That is rather different from original and supplemental jurisdiction.  Thus, those Social Security cases and statute sounded unconvincing.

On a sidebar, had the Tasini authors been able to settle, then the terms could have helped inform the striking screenwriters about what fairly they should receive for later versions of their works.  Since the Tasini authors now have lost their settlement, then the writers strike will continue longer than it might have.

The case is In re: Literary Works in Electronic Databases Copyright Litigation (2nd Cir. 05-5943).