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October 28, 2008

Settlement Reached in Authors Guild v. Google

Today, Google, the Authors Guild, and the Association of American Publishers announced the signing of a settlement agreement in the ongoing copyright litigation over the Google Library Project.

I’m proud to be a member of the legal team representing Google in this matter.

Class members can get information about the settlement here, and members of the public can get more information from Google here.  If you’re looking for more detail than those sites provide, the proposed class notice (39 page PDF) goes into greater depth, as does the brief in support of plaintiffs’ motion for preliminary settlement approval (48 page PDF).  And if you’re interested in the real nitty gritty, the proposed settlement agreement is available here.

January 26, 2008

Federal Court Doesn’t Quite Recognize Copyright in C&D Letter

Techdirt has a post on a rather triumphal press release put out by a law firm claiming that “[t]he US District Court for the District of Idaho has found that copyright law protects a lawyer demand letter posted online by the recipient.” That’s one way of interpreting the judge’s ruling, but I don’t think it’s the right way.

Here’s what happened. An anonymous poster (“Tom Paine”) said some things on a message board that a company called Melaleuca didn’t like. Melaleuca’s lawyers sent a letter to the message board’s administrators asking them to take down the posts to which they objected. Then, a second anonymous poster (“d2″) posted Melaleuca’s cease-and-desist letter to the message board.

Melaleuca wanted to know Tom Paine’s identity so that they could take some action against him. But bringing a John Doe lawsuit would be expensive and time-consuming. Then Melaleuca had a clever idea: because section 512 of the Copyright Act allows pre-litigation subpoenas to uncover the identities of anonymous online copyright infringers, they could get Tom Paine’s identity by (1) accusing d2 of infringing the copyright in their cease and desist letter, then (2) claiming that d2 and Tom Paine were the same person.

Well, it almost, sort of worked.

They were successful in getting d2′s identity, because the court found the test for issuance of a section 512 subpoena to be a lenient one: If the Copyright Office issues a registration, the court found, that’s all the copyrightability analysis a court must undertake in order to enforce a pre-litigation subpoena under section 512. The court did not say that the C&D letter was copyrightable, or that posting it was not fair use. Instead, the court merely said that Melaleuca had met the low bar of showing a prima facie case of infringement. As the court put it:

[T]he Court will not go into an in-depth analysis of the merits of a copyright infringement claim in determining whether to quash this subpoena. It is sufficient in this instance that Melaleuca has registered the Sheppard Letter with the Copyright Office.

Unlike the Patent and Trademark Office, the Copyright Office (for various very good reasons) does not perform an in-depth examination of each registration. As the lawyer who put out the press release notes, “a US copyright registration is usually ‘rubber stamped’ and obtained on an expedited basis in about five business days.” Close cases, such as an attempt to register a virtually purely functional work such as a legal demand letter, usually result in the issuance of a registration, the validity of which is later contested in court. The district court in this case decided that the validity of the copyright should be determined after the plaintiffs actually filed their lawsuit for copyright infringement. It did not, as the press release implies, make a conclusive determination of copyrightability.

Melaleuca was thwarted in its ultimate goal of unmasking “Tom Paine.” The court found that Melaleuca had presented insufficient evidence that “d2″ and “Tom Paine” were one and the same, and quashed that portion of the subpoena which sought Tom Paine’s identity. (The edited version of the decision on the web site of the lawyer who put out the press release conveniently leaves that part out, but it makes up a substantial part of the court’s decision, which is available here.)

January 2, 2008

9th Cir.: Karaoke versions are audiovisual works, not fair use

In an opinion published today in Leadsinger, Inc. v. BMG Music Publishing, the Ninth Circuit held that Leadsinger’s karaoke devices, which contain copies of lyrics for display on a TV screen, are not eligible for a license under 17 U.S.C. 115 because they are “audiovisual works,” not “phonorecords.”  This holding is the same as the Second Circuit’s holding on the same question in ABKCO Music, Inc. v. Stellar Records, Inc. 96 F.3d 60, 65 (2d Cir. 1996). This means that companies marketing karaoke versions of songs, when they display the lyrics, must separately negotiate licenses with the relevant music publishers rather than relying on the statutory license that would be available if the karaoke versions were marketed without the ability to simultaneously display lyrics.

Perhaps more interestingly, the court affirmed the dismissal with prejudice of the plaintiff’s declaratory judgment claim asserting noninfringement based on the fair use doctrine.  The court held that resolving the fair use inquiry on a motion to dismiss is proper when the facts alleged in the complaint, if true, resolve the fair use inquiry.

December 12, 2007

Fandom’s nonprofit: the Organization for Transformative Works

The world has a new good cause. A group of writers and academics with ties to the fanfic community has founded the Organization for Transformative Works.  As befits an organization with its roots in a deeply postmodern art form, the organization is a bit of a pastiche: part EFF, providing legal support to the fanfic community; part Participatory Culture Foundation, creating and disseminating software that furthers its policy goals; and part academic society, publishing a peer-reviewed journal on “fanworks and practices.”

I’m exicted to see what they do. They’re certainly well-represented on the legal side, as Rebecca Tushnet, the leading legal scholar on fanfic, is on the organization’s founding board.

November 22, 2007

Romantics Detail What They Don’t Like About Activision

As commented upon by Michael Madison, the Romantics have filed suit against Activision, alleging that the version of “What I Like About You” included in the Guitar Hero Rocks the ’80s video game (for which Activision got a license from the songwriters) sounds too much like the original recording.

In their complaint, available here as a PDF, the Romantics allege three counts: violation of the right of publicity, a somewhat vaguely outlined Lanham Act claim, and unjust enrichment. They can’t allege copyright infringement, since the defendants licensed the underlying musical work, and the copyright in a sound recording does not extend to recordings that merely consist of sounds that “imitate or simulate those in the copyrighted sound recording,” under 17 U.S.C. § 114(b).

The publicity claim would seem to turn on whether the Michigan common law right of publicity protects against vocal impersonations, as the Ninth Circuit held California law did in Midler v. Ford Motor Co. – and whether the court feels like having another crack at the thorny preemption issues raised by the interaction between such a common-law right and Section 114(b) of the Copyright Act.

UPDATE (20 December 2007): The Detroit Free Press reports (via Bill Patry) that the Romantics’ motion for preliminary injunction was denied. No written opinion is available as of this writing. The denial of a preliminary injunction doesn’t mean the case is over, only that Activision can keep selling the game while the suit is ongoing.  Perhaps the court felt that pulling Guitar Hero off the shelves this holiday season would cause too much strum und drang.

October 4, 2007

Turns Out You Can’t Do That

Yet another “reconstructed copyright deposit leads to great sorrow” case, this time from Puerto Rico, via the First Circuit Court of Appeals: Fernando Torres-Negrón v. J&N Records. (Via Bill Patry.)

September 24, 2007

D. Mass.: Unfinished Works Aren’t Covered by VARA

Judge Ponsor of the District of Massachussetts has decided Mass MoCA v. Büchel, a case featuring the thrilling combination of an improperly-bisected house, a suspended spider-hole, and a huffy Swiss artiste.

The story, in brief: Christoph Büchel is an installation artist. Mass MoCA, an art museum, commissioned Büchel to create a large installation. Büchel worked with museum staff to physically create the artwork. When the work was nearing completion, Büchel left the project, maintaining that the museum was unwilling to adequately fund the project. (Incidentally, the piece itself seems pretty brilliant, if a little overtly polemical; it’s called “Training Ground for Democracy,” and presents a manufactured vision of American life featuring the above-mentioned house, through which a cinder-block wall was constructed, apparently in the wrong place, and the spider-hole, which was supended in the air, apparently against the artist’s wishes.) Museum staff continued their work for a while, based on their best guess as to what Büchel would have wanted — at least until relations between Büchel and the museum turned permanently icy.

So the museum was left with a garden-variety breach-of-contract case — and with a hangar-sized gallery full of an almost-finished installation. What to do with it?

The museum wanted to exhibit the unfinished work as an unfinished work, explaining the circumstances of its creation, but not calling it a work by Christoph Büchel. The artist wanted it destroyed, and wanted damages for the museum’s “mutilation” of the work (by working on it after he left the project).

The key legal issue here is the interpretation of the Visual Artists’ Rights Act, a statute situated within the Copyright Act but having nothing to do with copying. VARA protects certain one-of-a-kind or limited-edition “works of visual art” from misattribution, intentional mutilation, or (if the work is one of “recognized stature”) intentional destruction.

So, interesting questions arise: is it possible to “mutilate” an artwork that isn’t even finished yet? Is it misattribution to show an unfinished, unattributed artwork, when many in the audience already know who the artist was? Is a museum staffer “mutilating” an artwork when he modifies it under the artist’s direction? When he modifies it against the artist’s wishes, but from the artist’s own drawings? When he modifies it without direction from the artist but believing, albeit mistakenly, that he is realizing the artist’s vision?

These were the issues before the court in Mass MoCA v. Büchel. Büchel’s brief is here; the museum’s brief is here. They make for interesting (if occasionally needlessly vitriol-filled) reading.

Sadly, there’s no written opinion — the judge ruled from the bench on Friday. But we know from the notice of appeal to the First Circuit that the judge held in favor of Mass MoCA, holding the Visual Artists’ Rights Act (and, apparently, the Copyright Act) inapplicable to Büchel’s installation. It’s too bad the details are so sketchy. I’d really like to know how the judge reached the conclusion that the Copyright Act, which covers any expressive, tangible work, didn’t cover a warehouse-sized sculpture, which — whatever else it is — is certainly tangible and certainly expressive.

I find it easier to swallow the idea that the VARA might not apply. The statutory language just doesn’t tell us what to do about unfinished works. Büchel tries to import a concept from general copyright law: because a work is copyrighted if it is fixed in a tangible medium of expression, whether or not it is finished, Büchel argues that the VARA applies to all works of visual art, whether or not they are finished. But, as the museum argues in its brief, this leads to absurd results. The VARA rights are waivable only in writing, not orally, so if VARA applies to unfinished art works, it’s hard to see why an assistant who modifies the work at the artist’s direction wouldn’t be liable. A reading of VARA that causes it to apply only to art works that have been declared finished by the artist would seem to fit with legislative intent; after all, it requires that limited-edition works to be signed by the artist, something that’s generally done to signify that a work is finished.

While I don’t think Büchel ought to be able to use copyright law (or a copyright-like law like VARA) to prohibit the exhibition of the unfinished work, I do think that the museum is making a mistake. As many have pointed out, norms are more important than laws in the art world, and by pressing the legal question, the museum may be disregarding the moral one.

At any rate, I expect a fascinating opinion out of the First Circuit. Continuing coverage is likely to be found on The Art Law Blog, written by Donn Zaretsky, who was responsible at least in part for Büchel’s excellent (if unsuccessful) summary judgment brief.

September 5, 2007

10th Cir.: Shrinking the Public Domain Implicates the First Amendment

Yesterday, a unanimous three-judge panel of the United States Court of Appeals for the Tenth Circuit awarded a major victory to the public domain in Golan v. Gonzales.

In 2003, the Supreme Court ruled in Eldred v. Ashcroft that a copyright law could be reviewed under the First Amendment as a restriction on speech only if it constitued a change to the “traditional contours of copyright protection.” Yesterday, the Tenth Circuit ruled that the permanence of public-domain status is such a “traditional contour” — that is, when something enters the public domain, we expect it to stay there. Accordingly, the 1994 Uruguay Round Agreements Act (URAA), which granted “restored” copyright protection to a large number of works in the public domain that had been created outside the United States, was a change to that traditional contour, and required review as a restriction on speech.

The court reached its decision by careful attention to history. The government’s best argument was that Congress had pulled works from the public domain several times in American history, so no “traditional contour” had been changed. The court conducted a detailed analysis of each of those (rather obscure) historical situations, such as wartime copyright laws enacted in 1919 and 1941 which excused authors’ inability to comply with copyright formalities due to wartime shortages and disruptions. The court found that each was by definition an unusual event prompted by exigent circumstances, and that such temporary enactments did not set copyright’s “traditional contours.” The court took an even more scholarly approach to the question of whether the 1790 Copyright Act, which was the young nation’s first copyright statute, removed works from the public domain in certain states which did not have copyright laws up until that time. Reviewing a number of primary sources and law review articles, the court found that it was “probably not just unclear but also unknowable” whether the first Congress thought it was removing works from the public domain due to the scarcity of historical evidence.

The Tenth Circuit remanded the case to the district court. Its instructions on remand are a little curious. It asks the district court to determine whether the URAA is a content-based or a content-neutral restriction on speech. I’m not sure why, for two reasons. [UPDATE: I want to emphasize that I think the court was right to reach this analysis, since it found that the URAA was subject to First Amendment scrutiny. I'm just not sure why it needed to remand on these grounds rather than deciding that the regulation was content-based, anouncing the proper standard, then remanding.] First, whether a law is content-based or content-neutral ought to be a pure question of law; there aren’t any facts to find, so I’m not sure why the district court gets first crack. Second, I can’t imagine a way to find that any copyright law is content-neutral. If I stand on a soapbox in the middle of town and recite a certain poem that begins “Shall I compare thee to a summer’s day?,” the law does not punish me. If I stand on the same soapbox and recite — at the same volume, in the same tone of voice — a different poem that begins “Oh baby baby, how was I supposed to know?,” the law punishes me. That’s the very definition of a content-based restriction. We’ll see what the district court does.

Or maybe we won’t. The government can petition for certiorari before the case gets remanded. Because of the Ninth Circuit’s decision in Kahle v. Gonzales, there’s now a circuit split regarding how courts decide when a law has changed copyright’s “traditional contours,” making Supreme Court review more likely. A chance for the Court to revisit its “traditional contours” comment could be a great boon to culture, or might shut off all future opportunities to place First Amendment limits on copyright laws.

This ruling is an extremely satisfying development for me personally. During the summer of 2004, I worked on the Golan case with Larry Lessig, Elizabeth Rader, Colette Vogele, and Chris Sprigman. I had the chance to do some of the factual, legal, and historical research that supported the plaintiffs’ claims. I’m proud of the work the team has done since the case was filed back in 2001, and hope that this victory is only the first.

August 30, 2007

TLF Podcast on Promo CD Resale Case

On this week’s Technology Liberation Front podcast, a number of IP luminaries discuss the UMG Recordings v. Augusto case, in which an eBay seller is defending against a copyright infringement claim based on his resale of “promotional” CDs given away by UMG.

Full disclosure: I’m proud to be a member of the team representing Mr. Augusto.

August 24, 2007

E.D. Va. Gives Teeth to the Deposit Requirement

On July 17, Chief Judge Spencer of the Eastern District of Virginia issued an opinion in Tavory v. NTP. This case is a follow-on to the NTP v. RIM patent litigation, and features a number of copyright claims by Tavory, alleging that he had written some of the software at issue. The patents in suit contain source code that Tavory claims to have authored, and Tavory claims that the reproduction of the patents themselves is copyright infringement.

Tavory had a problem, though. He hadn’t registered his copyrights at the time he wrote the software, and no copy of the relevant version of the software existed. Copyright registration, a prerequisite for an infringement suit, requires the deposit of a copy (although in the case of software the requirements are very odd). So what did Tavory do? He tried to reconstruct, from memory, what the relevant version of the source code would have been, and deposited the result.

Turns out you can’t do that.

In explaining why, Judge Spencer sets forth the following gorgeous passage on the doctrinal necessity of the deposit requirement:

In one sense, the deposit requirement serves a gatekeeping function. Effective registration of a copyright is predicated on the submission of some objective indicia of an individual’s authorship. In another sense, the requirement serves an evidentiary function. The copies that are submitted in connection with an application for registration then become part of a record by which claims of infringement are tested. The utility of these functions, as well as our confidence in the integrity of the copyright system, breaks down when recollection is tolerated. That is because memories are inherently unreliable. They are susceptible to influence and subject to change. Time is especially corrosive, and the more time that passes, the more our memories fail. These are simple facts of life, and the Copyright Act deals with these facts by not dealing with them at all. For the purpose of the deposit requirement, the degree to which the registrant relied on his memory does not matter. The Copyright Act does not countenance the validity of any deposit copy that was made with even the slightest reference to recollection.

Accordingly, the court held that Tavory’s copyright registration was invalid, and that the court lacked subject matter jurisdiction.

But the lack of subject matter jurisdiction didn’t keep the court from saying a number of other smart things. The most interesting relates to the copyright “litigation privilege” — the relatively ill-defined idea that infringement that occurs in the course of litigation is sometimes not actionable, either as a fair use or under some independent equitable doctrine. Tavory claimed that NTP’s reproduction of the patents-in-suit in connection with the litigation itself constituted infringement; NTP asserted that copying incident to litigation was fair use.

The court found that NTP’s copying was fair use, holding that, while a categorical rule might be inappropriate, “where, as here, the works produced before the Court are material to the litigation, and where the party offering production of the work has done so without notice or knowledge of another’s claim to copyright, the equities are in favor of fair use.” That would seem to cover nearly all of the prima facie “infringement” that goes on in the course of litigation, and provides needed guidance in a tiny, seldom-litigated corner of copyright law.

UPDATE: My initial post failed to recognize that this opinion contains one of the finest sentences in the Federal Supplement 2d:

In 1993, MTV aired Beavis and Butt-Head, an animated series that centered on two Texas teens and their penchant for petty vandalism, music videos, and “chillaxin’.”

Wondering why it’s relevant? See Kodadek v. MTV Networks, 152 F.3d 1209 (9th Cir. 1998), in which the plaintiff deposited with the Copyright Office drawings he made in 1993, after seeing the allegedly infringing TV show. The plaintiff asserted that the drawings were just like ones he’d given to Mike Judge, Beavis auteur, in 1991.  Turns out you can’t do that.

Disclaimer Haiku:
West wind seems to say,
"This is not legal advice;
I'm not your lawyer."

(And if you're a client with whom I have a preexisting attorney-client relationship, this still isn't legal advice.)

In case you're wondering, this blog is also not intended as advertising, as a representation of anything but my personal opinion, or as an offer of representation.

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