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.)

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 9, 2007

Followup on § 2257

I’ve received a number of emails asking for basic information about the ramifications of the Sixth Circuit’s decision in Connection Distributing case, discussed here.  I can’t say what the decision means for any particular person, but here are some helpful facts:

  • Who is this “Sixth Circuit”? The decision was issued by a three-judge panel of the United States Court of Appeals for the Sixth Circuit. The Sixth Circuit encompasses Kentucky, Michigan, Ohio, and Tennessee.
  • What happens now? The government can ask for rehearing by the full Sixth Circuit court sitting together (or “en banc”). If rehearing is denied, the government can ask the Supreme Court to review the case. In very few cases is en banc rehearing or Supreme Court review granted — but in very few cases does a Court of Appeals declare a federal statute unconstitutional. If the Supreme Court decides to review the case, its decision would have nationwide effect.
  • What does it mean if rehearing en banc and Supreme Court review are denied? It will mean that federal district (trial-level) courts in Kentucky, Michigan, Ohio, and Tennessee, as well as later three-judge panels of the Sixth Circuit Court of Appeals, will have to abide by the ruling.
  • What does it mean for jurisdictions outside Kentucky, Michigan, Ohio, or Tennessee? As a formal matter, not much. But federal courts look to other federal courts for guidance in deciding their cases, and no Circuit (other than, arguably, the D.C. Circuit) has affirmatively found Section 2257 to be constitutional. Other courts may look to Connection Distributing as a persuasive authority in deciding future cases about the constitutionality of Section 2257.

My practice doesn’t include any 2257 work, and I can’t help you with your recordkeeping compliance. But I hope that the above helps clarify what the Sixth Circuit’s decision means (and doesn’t mean).

November 4, 2007

Join the ABA IPL Special Committee on the DMCA

This year, I’m co-chair of the American Bar Association Section of Intellectual Property Law Special Committee on the Digital Millennium Copyright Act. My co-chair is Kate Spelman of Cobalt LLP, and we have a great deal planned for the coming year. If you’re an ABA member, I encourage you to join the Section and the committee. Both are filled with thoughtful, engaged lawyers who care about the development of the law.

This year, Kate and I are hoping the committee will study and propose ABA policy on a number of issues, including:

  • the two sets of “principles” for user-generated content sites that were recently promulgated (1 2);
  • the international effect of notices sent pursuant to 17 U.S.C. 512; and
  • the Federal Circuit’s 2004 holding that plaintiffs in anti-circumvention cases brought under 17 U.S.C. 1201 must show that the circumvention they allege has facilitated copyright infringement.

If these issues sound interesting to you, join our committee! If you’re already an IP Section member, you can join in just one click from this page. If you’re an ABA member but not an IP Section member, go here first to join the IP Section. If you’re not an ABA member, start here.

Kate and I are looking forward to a great committee year. I’m writing this on a flight home from the IP Section’s Fall Leadership Meeting in Chicago, where all of the committee chairs met to discuss their committees’ plans. If the DMCA committee doesn’t ring your bell, take a look at these other committees; many of them have some fascinating plans for the year.

A Full Day of Legal Blogging Events on November 5th

A programming note. Tomorrow, November 5th, I’ll be honored to participate in a lunchtime panel at Stanford Law School with four highly-regarded law professor bloggers (Ann Althouse, David Friedman, Eric Goldman, and Larry Solum), moderated by none other than Jonathan Zittrain. The event is free and open to the public, and details are here. I understand that a recording will be available after the program concludes.

But that’s not all! For a double dose of Bay-area legal blogging tomorrow, attend the second Bay Area Blawgers meetup, organized by Eric Goldman. Details are here; RSVPs are required.

October 23, 2007

6th Cir.: § 2257 Facially Unconstitutional

In a beautifully written, powerfully reasoned opinion, the Sixth Circuit today declared 18 U.S.C. § 2257 facially unconstitutional under the First Amendment for overbreadth. The opinion, in Connection Distributing Co. v. Keisler, is here. The statute imposes harsh recordkeeping requirements on all producers and disseminators of sexually explicit content, ostensibly in order to more easily find and prosecute child pornographers. In practice, as discussed in this post from December of 2005, the statute burdens parties who have nothing to do with child pornography — and many, particularly on the Internet, who don’t produce pornography at all.

The Sixth Circuit panel, in patient and careful terms, explained that the government doesn’t get to chill lawful speech in order to make its law-enforcement job easier. Bravo.

October 13, 2007 reh’g en banc granted!

Yesterday, the Ninth Circuit granted rehearing en banc in the case, which I expressed my concerns about here. This means that the existing panel opinion was withdrawn by the court, and is no longer usable as precedent. A 15-judge panel will now hear and decide the case as if the panel opinion had never existed.

This is great news for the Internet, and might even be good news for the fictional “” hypothesized in Judge Kozinski’s panel opinion. It is, however, definitely bad news for the real (“This hypothetical website brought to you by,”) since that example is unlikely to appear in the court’s en banc decision.

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.

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.

May 17, 2007

9th Cir. Decides Perfect 10 v. Google

Yesterday, the Ninth Circuit Court of Appeals decided Perfect 10 v. Google. The case encompasses numerous issues, from section 512 to fair use to the bounds of secondary copyright liability. Here’s a summary of the most interesting parts to me (not to be confused with the most interesting parts to the litigants or to the court):

  1. Preliminary Injunctions and Fair Use. The court held, for the first time, that in order to get a preliminary injunction in a copyright case, the plaintiff must not only demonstrate a substantial likelihood of proving his prima facie case, but must also demonstrate a substantial likelihood of overcoming any defenses raised by the defendant. First, “the defendant is responsible for introducing evidence of fair use in responding to a montion for a preliminary relief,” then the plaintiff must “show it is likely to succeed in its challenge to the alleged infringer’s evidence.” Slip op. at 5767. The availability of preliminary injunctions in cases where the plaintiff’s prima facie case is easy to prove but the defendant has a strong fair use defense chilled speech, when it didn’t ban it outright. This holding is likely to mean that plaintiffs will rarely get preliminary injunctions in many of the cases copyfighters care about — cases where copying is obvious and the real question is fair use.
  2. Preliminary Injunctions and Section 512. The court also held that a plaintiff seeking a preliminary injunction must demonstrate a substantial likelihood of overcoming a defense under 17 USC 512. Section 512 contains its own rules about injunctions, but the court held that because “the DMCA does not change copyright law,” general principles apply. Accordingly, if the defendant raises a section 512 defense, the court first decides whether the defendant is likely to qualify for protection under section 512, then applies the appropriate injunction rules depending on the answer.
  3. The “Server Test.” In analyzing whether the copyright holder’s display right has been violated, we are told that the “displaying” is performed by the web server, not by the user’s computer. Displaying is “show[ing] a copy;” here, the copy being shown resides on the server, and is shown by transmitting it over the Internet to the user’s computer for display. In a slightly weird turn, the court says that a computer owner displays a work when she “uses the computer to fill the computer screen with the photographic image stored on the computer, or by communicating the stored image electronicallly to another person’s computer” (so the server is doing the displaying in the web context because it stores the image). What’s weird is that right in the middle of this analysis, the court cites MAI v. Peak, which held that copies held in RAM are sufficiently “fixed” to be copies for copyright law purposes. If RAM copies are “fixed” (which they aren’t, but we’ll argue about that another day), why isn’t the user the one displaying the work by “us[ing] the computer to fill the computer screen with the photographic image stores on the computer”? I have to imagine that the fact that web browsers store transmitted images in RAM before displaying them wasn’t before the court.
  4. In-Lining Images Is Not a Display. Well, it’s not direct infringement, at least. IMG tags and links are just HTML instructions, the court says, and “[p]roviding these HTML instructions is not equivalent to showing a copy.” This is because the HTML doesn’t represent the photographic image; you can’t display the image solely by knowing the URL, because the server the URL is pointing to has to actually serve the image.
  5. Framing Is Not a Display. Having another site’s content display inside a frame is not infringement, because the content itself is being served by the original website. It might confuse consumers, but the court rightly notes that confusion is dealt with by trademark law, not copyright law.
  6. Linking is not Distribution. Because the data itself is coming from some other server, linking to infringing content is not a “distribution” of that content. Connectedly, the “deemed distribution” rule from Hotaling (the bad Hotaling, not the good Hotaling) doesn’t apply because Google doesn’t have a copy of the allegedly distributed full-size images, and you can’t distribute something you don’t even possess. (I expect that some will see this as an adoption of the Hotaling rule by the Ninth Circuit, but I think it’s dicta. Napster is bad enough.)
  7. Art. I, sec. 8, cl.8 Gets Teeth. The court says that courts must be “flexible in applying a fair use analysis,” and that the four fair use factors must be “‘weighed together in light of the purposes of copyright’” (quoting Campbell). And then comes the best part. “The purpose of copyright law is ‘[t]o promote the Progress of Science and the useful Arts,” and to serve the welfare of the public” (internal quotations and citations omitted). So courts must weigh the factors together, balancing the benefit to the generation of knowledge that comes from greater protection against the public interest in making fair use of copyrighted works. Excellent. (I’m hoping for summary dispositions in really egregious fair use cases that just say, “The district court failed adequately to consider the Progress of Science and the Useful Arts. VACATED and REMANDED.”)
  8. Superseding Use. Use that displaces sales of the copyrighted work has rarely been held to be fair use. But here, the court held that even if the defendant’s use supersedes some of the copyright holder’s revenue-generating uses, it can still be fair use if the value to the public from the defendant’s use outweighs the “significance” of the superseding use. This is perhaps the most important holding, in part because it helps to get rid of the circular argument that the copyright holder wanted to license uses like the defendant’s. Even if the copyright holder could have garnered some meager licensing revenue by prohibiting uses like the defendant’s, the “market harm” factor won’t weigh against the defendant if the benefit to the public outweighs the superseded benefit to the copyright holder.
  9. Evidence of Harm. In order for the “market harm” factor of the fair use analysis to tip in the plaintiff’s favor, the plaintiff must come forward with evidence of actual market harm. Market harm cannot be presumed, and “hypothetical” harm isn’t good enough. This will help to erode further the circular “I could have licensed this use, therefore it is not fair use” argument; on the other hand, it makes the sham “licensing” of use that’s actually fair use all the more pernicious, because it makes the use less likely to be found to be fair use in the future.
  10. The User’s Local Cache Is Fair Use. The court held that the user’s local web cache is a fair use copy because it is a transformative use — presumably because it is using the image data not as a photograph, but as a means toward faster web-browsing performance. The effect on the copyright holder’s rights is minimal — who’s going to license the image for use in their own local cache? — and the public benefit is significant, so it’s fair use. The court also expressed some doubt that “such automatic copying could constitute direct infringement,” presumably under a CoStar v. Loopnet volitional copying theory.
  11. Substantial Noninfringing Use. The court held that substantial noninfringing uses for a product defeats a claim for secondary copyright liability based on an infringement-facilitating product design, but does not immunize a defendant from other sources of secondary liability. Thus, for example, if Sony had sent letters to each VCR owner exhorting them to duplicate and sell movies they rented from the video store, Sony would be subject to contributory copyright liability for sending the letters, even though it is not subject to liability for the infringement-facilitating design of its product.
  12. Imputed Intent. The court held that intent is an element of a claim for contributory copyright infringement. Then, the court effectively read that element back out of the doctrine by holding that intent may be imputed if the defendant knew that infringement was “substantially certain” to result from her action. (Just like in Torts class.)
  13. Contributory Liability. The court announced a new formulation of the contributory liability doctrine for internet sites: in order to be liable, the defendant must have actual knowledge that specific infringing material is available, and must then fail to take simple measures which would have prevented further damage. The court also called those “simple measures” “reasonable and feasible means.” Recall, however, that compliance with section 512 makes this analysis go away; it removes secondary liability for service providers if its procedures are followed. The district court hadn’t reached the section 512 analysis, so the court remanded this issue.
  14. Vicarious Liability. As with all forms of secondary liability, a claim for vicarious liability must be based on some underlying act of direct infringement performed by someone. Here, that direct infringement was the unauthorized display of Perfect 10′s images on websites unaffiliated with Google. For a plaintiff to prevail on a claim of vicarious liability, he must show that the defendant has the right and ability to control the direct infringement, but fails to do so. Here, the court found that Google had no right nor ability to control the display of Perfect 10′s images on the unauthorized websites, since Google didn’t run those websites and couldn’t shut them down even if it wanted to. Perfect 10 argued that Google could have shut down the sites’ AdSense accounts, depriving them of revenue, but the court pointed out that doing so would not remove the images from the third-party websites.

It’s a big opinion, with a lot of holdings, but most of them make sense and apply the law correctly. The case now goes back down to the district court for further factfinding and analysis. There’s a dispute over the adequacy of Perfect 10′s section 512 takedown notices, and after Perfect 10 v. CCBill, Google will have a much easier time prevailing on that issue.

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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