C-Span and originality

An article in the February 26th New York Times dealt with a flurry of claims regarding copyright in the broadcast of Congressional proceedings in the House of Representatives, spawned by a false charge by the House Republican Study Committee that Speaker Nancy Pelosi infringed alleged copyrights of C-Span in video transmissions of floor proceedings by hosting them on her website The Gavel. While C-Span itself corrected the group's claim, it did take the opportunity to claim copyright in transmissions of other congressional proceedings, such as committee hearings.

The distinction drawn by C-Span in the article was between proceedings where C-Span cameras are used and where government cameras are used. Thus, for floor proceedings, where government cameras are used, but which C-Span broadcasts, C-Span disclaims any copyright interest. By contrast, where C-Span cameras are used, as at a committee hearing recently where Speaker Nancy Pelosi testified, C-Span claimed copyright in the work, the work being the audiovisual telecast.

This distinction is hardly satisfactory as a complete look at the issue, nor is C-Span's following statement on its website:

"IMPORTANT NOTICE: Use of C-SPAN RSS Feeds and Audio/Video Files is Restricted. Please Read Notice Below Carefully.

C-SPAN's RSS feeds and audio/video files are made available free of charge for use by individuals for personal, non-commercial uses, but they are still fully protected by copyright.

Except as specifically permitted by this policy, C-SPAN's RSS feeds and audio/video files may not be used for any political, commercial or otherwise unauthorized purpose. Any posting, retransmission, sale, public performance or other unauthorized duplication of the audio/video files is strictly prohibited.

You may, however, make copies of the audio/video files (by means of, for example, a PC or an MP3 player) solely for your personal and noncommercial use.

You may also display the links and other information contained in C-SPAN's RSS feeds on a personal website so long as (i) you do not in any way modify such information, (ii) you do not redistribute the RSS feeds; (iii) you attribute the source of the feed to "www.C-SPAN.org", (iv) you do not improperly associate C-SPAN as a supporter or endorser of any particular website, activity or point of view, and (v) your links redirect users to a C-SPAN website."

Aside from the issue of the prohibition in claims to U.S. governments works, any claim to copyright must meet the constitutional standard of originality, regardless if C-Span's cameras are used; it is not the equipment, but the creative choices using the equipment that matters. The committee reports to the 1976 Act make this point clearly in discussing claims of copyright in telecasts of live sports events. In the case of congressional hearings, one or two cameras shooting, without editing, falls far below the constitutional standard, and as a long time viewer of such hearings, I have yet to see one that I thought evidenced sufficient originality. The same holds true for confirmation hearings in the Senate. Claims in live podcasts of hearings or press conferences is farcical: sticking a microphone in front of someone is not an act of originality.

Congressional committees, or the House and Senate as a whole, could and should easily deal with the issue by precluding those who Congress permits to broadcast hearings from asserting copyright even if one to were to exist. These are important public events, and those who obtain special privileges to film or record them should be permitted to do so only on the condition the events remain in the public domain. There is an easy answer to those who wish to recoup the investment in such acts and who assert they therefore must be able to obtain a copyright: add value. Copyright would then inure in the added vaue, although never in the transmission of the underlying proceedings.

The issue is likely to gain even more importance due to C-Span's efforts to change the way floor coverage is transmitted. As reported by Jonathan Kaplan in the December 14, 2006 edition of "The Hill":

Noting that Democrats have pledged to increase transparency and accountability in government, C-SPAN Thursday called on House Speaker-in-waiting Nancy Pelosi (D-Calif.) to give television viewers the same real-time access to views of the House floor as anyone sitting in the gallery would have.

In a Dec. 14 letter, C-SPAN CEO and Chairman Brian Lamb asked Pelosi to roll back the three-decade old practice that put the House Speaker in charge of the cameras. C-SPAN and the House reached the current agreement in 1979 when cameras were first introduced to the chamber. He wrote that he sought a similar agreement in 1994 when Republicans captured control of the House, but he did not get it.

Lamb wrote that the current 28-year-old arrangement is "an anachronism that does a disservice to the institution and to the public…Congressional technicians are limited to taking static, head-on shots of the representative who's speaking at the podium."

Rules and established practices prevent cameras from taking individual reaction shots or from panning the chamber, leaving viewers with an incomplete picture of what's happening in the House," he added.

In addition, Lamb asked Pelosi to immediately post how individual lawmakers voted on a piece of legislation. Currently, the parties' totals appear on screen, but the individual tallies are not posted until hours later.

"Frequently, by the time individual voting records are released by the [House] Clerk, the House has moved on to other issues. The net effect is that this important information is rarely included in C-SPAN's live telecasts of House floor proceedings," Lamb wrote. "Members' votes are the most critical part of the public record."

Pelosi has just received the letter and will review the request, said Jennifer Crider, Pelosi's spokeswoman.

C-SPAN is pressing the House first because its initial coverage of Congress started with the lower chamber, according to a C-SPAN spokesperson.

Subsequent stories indicate the request was rebuffed, but if such a request is ever granted, it should be not provide C-Span the opportunity to then argue that because it uses its cameras (or arguably makes editing choices), it should be able to assert copyright. The very transparency in government C-Span purports to seek is antithetical to claims of ownership in the events as recorded.

Bands and Partnerships

It is common for bands to form a corporation or other juridical entity like a partnership. When preexisting works are transferred to such an entity, the ordinary provisions on individual ownership, duration, and termination of transfer apply. But what about works created after the juridical entity is created? This issue is presented, but not considered, in Lopez v. Musinorte Entertainment Corp., 2007 WL 579746 (9th Feb. 16, 2007).

In this case, band members created a partnership under Arizona law that owned both pre-existing recordings and recordings created in the future. The drummer later sued asserting that he was a co-owner both as a partner of the juridical entity and as a joint-author. The circumstances under which he could be both weren’t addressed by the court.

As to the works that were created before the juridical entity was formed, the drummer could be a joint author who had transferred his rights, making him a beneficial owner if he shared in royalties. Leaving aside the recording engineer part of the equation, for these works, the term is measured by the lives of the band members, there is a termination right under Section 203, and the drummer is both a beneficial owner and a co-owner as a general partner in the juridical entity.

For works created after the juridical entity was created, though, none of the band members are joint authors: the entity is the sole author, there is no termination right, and the duration is 95 years from first publication.

Here is the entire opinion:

*1 Alejandro Lopez, a former drummer in the band Los Hurricanes del Norte, appeals the district court's grant of summary judgment in favor of the defendants. We have jurisdiction pursuant to 28 U.S.C. § 1291, review the district court's grant of summary judgment de novo, Aalmuhammed v. Lee, 202 F.3d 1227, 1230 (9th Cir.2000), and reverse and remand.

Lopez argues that he came forward with sufficient evidence to create a genuine issue of material fact about whether he was a partner in the band pursuant to Arizona partnership law. We agree. Viewing the facts in the light most favorable to Lopez, the 1992 Artist Recording Agreement and 1994 extension of that agreement established the band members' intent to jointly own certain of the recordings and to share jointly in the profits of the new Unico recordings. These facts support a finding of the existence of a partnership. A.R.S. §§ 29-1012(C)(1) & (C)(3)(b). These agreements covered recordings made for 17 of the 20 years that Lopez was the drummer in the band. Moreover, the trademark application, signed under oath by Heraclio Garcia, asserted that the band was a partnership and that Lopez was a general partner. Taken together, the evidence was sufficient to create a genuine issue of material fact about whether Lopez and the other band member defendants associated “as co-owners [of] a business for profit” pursuant to A .R.S. §§ 29-1001(11) & 29-1012(A) (2007).

We also agree that Lopez came forward with sufficient evidence to create a genuine issue of material fact about whether he was a joint author of the band's master recordings for purposes of copyright law. First, Lopez came forward with evidence that he made an independently copyrightable creative contribution to the sound recordings on par with the other musicians when he developed and performed the rhythmic and percussion elements during the master recordings. The fact that Lopez did not write the songs is irrelevant. None of the band members wrote the songs. Lopez was not claiming copyrights in the songs, just in the recordings.

Second, Lopez came forward with evidence of the objective intent of the parties to be joint authors when the work was created. Absent a written contract among the parties, we apply the factors set forth in Aalmuhammed. 202 F.3d at 1234-25. Although the parties had not signed written contracts with each other, the individual band members jointly signed the 1992 Artist Recording Agreement and agreed that they owned the catalog of already-recorded albums and “retain[ed] all ownership rights, including copyright,” in those albums and in the three new “licensed albums.” In addition, Lopez testified that he exercised control over his part of the music-making by developing and performing the rhythmic and percussion elements during the studio recordings. Finally, the parties agreed that the band members were equally billed in recordings and performances for the 20 years that Lopez played as a drummer in the band. This evidence was sufficient to create a genuine issue of material fact regarding the parties' objective intent to be joint authors under the Aalmuhammed factors. Id.FN1

FN1. Because we reverse the summary judgment order, we need not address the appeal of the new trial order.

Fair Use, Israel, and the IIPA

The February 12, 2007 International Intellectual Property Alliance 2007 Special 301 Report contains detailed discussions of which countries throughout the world have been naughty and which have been nice (excluding of course the U.S. which is the nicest of all). One country's treatment bears pointing out, Israel. The Knesset is in the process of passing a number of amendments to its copyright law - an amalgam of laws going back to the extension, in 1924, of the British Copyright Act of 1911 during the British Mandate over ארץ ישראל (The most recent amendment took effect on November 3, 2002). Israel is a member of the Universal Copyright Convention and the Berne Convention. The current effort is intended both to modernize aspects of Israeli copyright law and to implement other international obligations.

What caught my eye in the discussion of Israel (found here) is on pages 70-71, entitled "Proposed Application of U.S.-Type 'Fair Use' Factors." This refers to the Knesset's expected adoption of a provision modeled very closely on Section 107 of title 17. One might expect that an effort by a foreign government to adopt a rather singular aspect of U.S. copyright law would be met with praise. Not so, when it comes to the non-proprietary side of the constitutional ledger. Here are the IIPA's words in full:

At the outset, we note that Section 19(a) attempts to adopt the U.S. 'fair use' test by stating that 'fair dealing with the creation is allowed, among others, for the following purposes: self study, research...." Section 19(b) includes a list of factors that are similar to those in place in the United States and the explanatory notes clarify the intention to enact a non-exclusive list of purposes, which would allow enough flexibility to the courts in determining whether a particular use is 'fair.' We understand there may already be agreement to adopt the draft, and we register our concern that the result of this change could result in considerable case law interpretation in Israel on 'fair dealing' being thrown out in favor of as yet undeveloped factors in Section 19(b). By contrast, in markets like the U.S., which employs very similar factors to those set out in proposed Section 19(b), many years of jurisprudence have provided society with considerable clarity on the boundaries of 'fair use.' There is a significant risk that in Israel the adoption of these factors at this time might be viewed by the community as a free ticket to copy. This would have disastrous consequences, and thus we urge the Israeli government to re-examine the introduction of these factors, rather than relying on Section 19(a), which sets out the long-established 'fair dealing' principle, followed by specific exceptions dealing with certain special cases (Section 19-32, but see comments below). Finally, if the factors in Section 18(b) are to be ultimately adopted, Section 19(b)(1) especially needs to be amended to properly narrow the scope of the 'fair use' inquiry:

(b) In order to examine the fairness of a use of the creation for the purposes of this paragraph, the following shall be considered:
(1) The aim of the use and its type, including whether the use is of a commercial nature or is for non-profit educational purposes.

These remarks should lead to debate in U.S. circles: the concern that Israeli judges can't handle the doctrine or that the Israeli population will see adoption of fair use as a "free ticket to copy" is not borne out by any empirical evidence, nor by any references justifying such concerns (e.g., prior decisions of Israeli courts), nor of course by the proposed statutory language, which directs judges to look at the traditional four factors, including the effect of the use on the market for the copyrighted work.

The IIPA's preferences are for (1) the existing law, which contains a narrower set of enumerated exceptions or (2) the above amendment, which is designed to "properly narrow the scope of the 'fair use' inquiry." That proposed amendment (the bold portion) would add language taken from Section 107(1): "including whether the use is of a commercial nature or is for non-profit educational purposes."

That language, added at the 11th hour to Section 107 of title 17 as a sop to educators led to years of confusion in U.S. courts, ultimately to the Sony presumptions ("every commercial use is presumptively unfair;" "every commercial use presumptively results in harm to the market"), and years and years of rigid, mis-directed case law, corrected ultimately in the 2 Live Crew case. Adopting that language in the Israeli statute would result in the adoption of the one part of Section 107 that has failed miserably, and might lead plaintiffs in Israel to argue things like "commercial use bad," but "non-profit educational use maybe good, under some circumstances." It is unclear how the IIPA sees its amendment working in practice, but how could reference to commercial versus non-profit educational uses narrow anything by itself unless commercial uses are painted as the bad guys? That approach, it must be noted is strongly contrary to existing U.S. law, pace Justice Souter's quote from Samuel Johnson that "No man but a blockhead ever wrote, except for money."

The unusual aspect of all this of course, is a U.S. trade organization lobbying the Office of United States Trade Representative to lobby a foreign government not to adopt a critical part of U.S. copyright law.

Is There a Copyright Under That Kilt?

The Canadian Broadcasting Company carried this story:

A tartan design with Nova Scotia roots is the subject of a lawsuit in the United States. In 1964, Sol Gilis of Yarmouth designed the tartan with the state of Maine in mind. Light blue for the sky, dark blue for the water, green for the forest, and a red bloodline for the people of Maine.
Jane Holmes of Plymouth, Maine, says she acquired the rights to the tartan design in 1993, and since then has overseen the manufacturing of the tartan cloth, which she has made in Scotland.
Holmes is suing U.S. retailer L.L. Bean for using the design in its Americana Tartan Shirt, claiming the company did not have permission to use it.

L.L. Bean is defending its use of the design, arguing the tartan is in the public domain because it is widely recognized as the state tartan of Maine. Holmes claims that's not the case and says Gilis might have been inspired by Maine when he made the tartan, but only she has the right to use the pattern. Holmes wants U.S. District Court in Maine to award her damages and stop L.L. Bean from selling any items with the tartan design. L.L. Bean has until March 19 to respond to the lawsuit in court.

A picture of the tartan and further information may be found here. L.L. Bean's argument that adoption by the state of the tartan resulted in the work falling into the public domain doesn't make sense. Since states can own copyright, had the work been created by Maine state employees, the copyright status of the work would not have been impaired. The work was, however, created in 1964, and I wonder whether proper notice was affixed during the relevant periods.

Horse Cents, Maybe Not Copyright Sense

In 1971, the Nitty Gritty Dirt Band went to Nashville to record a three-LP album, "Will the Circle be Unbroken," remastered in 2002 as a double CD. The song on the album was the "Tennessee Stud," recorded by the great guitar picker Doc Watson, and written by Jimmy Driftwood. The chorus begins: "The Tennessee stud was long and lean. The color of the sun and his eyes were green. He had the nerve and he had the blood. And there never was a hoss like the Tennessee stud."

A recent case in Tennessee, Tennessee Walking Horse Breeders' Association & Exhibitors' Association v. National Walking Horse Association, 2007 WL 325774 (M.D. Tenn. Jan. 31, 2007), evidences a spill-over into copyright among competing groups of horse-fanciers. Plaintiff's organization is dedicated to the Tennessee Walking Horse, which it describes this way:

The Tennessee Walking Horse is a composition of Narragansett and Canadian Pacer, Standardbred, Thoroughbred, Morgan, and American Saddlebred stock. Originally bred as a utility horse, this breed is an ideal mount for riders of all ages and levels of experience. The breed easily adapts to English or Western gear, and its calm, docile temperament combined with naturally smooth and easy gaits insure the popularity of the Tennessee Walking Horse as the “world’s greatest show, trail, and pleasure horse”.

Defendant's organization is more generally devoted to walking horses. Its website states:

The National Walking Horse Association (NWHA) is as alliance of people committed to preserving and fostering the natural abilities and welfare of the Walking Horse.
The NWHA improves the lives of horses and people by encouraging responsibility and sportsmanship. It promotes educational and recreational activities, while preserving the unique qualities of the Walking Horse.

There is an overlap in membership in the two groups, and an overlap in their respective activities, including issuing registry certificates attesting to a horse's bona fides as a walking horse. Another overlap, alleged by plaintiff, was copyright infringement by defendant of its registry and registry certificates. The court agreed, granting plaintiff's motion for summary judgment. The court's opinion leaves some discomfort though. With the registry certificates (presumably graphic works), defendant argued that only 7 out of 158 colors (of the horses themselves) were in common. Color in this context is a fact; it is a fact that there are horses of this color, but the court seems to have thought otherwise perhaps because the defendant was found to have copied almost verbatim from plaintiff's certificates. Without seeing the certificates, it is not possible to assess this, but I would assume there were important differences too, given the different names of the organizations (leading to a different visual layout) and defendant's wider scope.

As for the registry, a compilation, the court found originality in which horses to designate as foundation horses and the choice of which horses to deem pure breds, and the acceptable colors and markings. Defendant was held not to have independently done its own work but to have copied from plaintiff's work. Its a close call whether these choices evidence the type of judgment deemed sufficiently original, whether to say, yay or neigh.

Big Tobacco and Copyright

What might Big Tobacco and copyright have in common? A decision by the Supreme Court on Tuesday, Philip Morris USA v. Estate of Williams, may prove the relationship to be this: where statutory damages are sought for willful infringement and deterrence is one of the purposes for the award, the deterrence better be for the acts of the specific defendant for the conduct in the specific suit, and not a desire to deter others not before the court. In other words, the Philip Morris decision may be the death knell for an approach taken in the first, somewhat infamous suit brought by Universal Music Group against Mp3.com.

In UMG Recordings, Inc. v. MP3. com, Inc., 56 USPQ2d 1376 (S.D.N.Y. 2000), the court adopted a theory of general deterrence:


[W]hile the difficult issue of general deterrence must always be approached with caution, there is no doubt in the Court’s mind that the potential for huge profits in the rapidly expanding world of the Internet is the lure that tempted an otherwise generally responsible company like MP3.com to break the law and that will also tempt others to do so if too low a level is set for the statutory damages in this case. Some of the evidence in this case strongly suggests that some companies operating in the area of the Internet may have a misconception that, because their technology is somewhat novel, they are somehow immune from the ordinary application of the laws of the United States, including copyright law. They need to understand that the law’s domain knows no such limits.


Relying in part on this belief (one made without any admissible or tested evidence concerning the “some companies operating in the area of Internet”), the court awarded $25,000 per CD in statutory damages. (I was involved in the case at a later stage on defendant's behalf). There are numerous serious flaws with this approach, beginning with the fact that in awarding $25,000 per CD, the court did not know how many works had been infringed (or which ones plaintiff owned rights in):

If defendant is right that there are no more than 4,700 CDs for which plaintiffs qualify for statutory damages, the total award will be approximately $118,000,000; but, of course, it could be considerably more or less depending on the number of qualifying CDs determined at the final phase of the trial scheduled for November of this year.

One hundred eighteen million dollars was hardly necessary as a deterrent for a defendant who had not made a penny in profits off its use, and where plaintiff had conceded it could not prove any actual damages (defendant’s service was designed to stream to individual’s CDs they verified they already owned). The court’s acknowledgment that the ultimate amount “could be more or less” than $118 million demonstrates that the $25,000 per CD figure was not directly tied to any real sense of deterrent effect: if defendant proved that plaintiff owned only one work, would that amount ($25,000) have been sufficient for the deterrence goal the court embraced? Would it be an equally effective deterrent at $118 million? The court did not know, and thus its award of $25,000 per CD was without any supportable basis.

Enter Big Tobacco, seeking to overturn a punitive damage award by a jury on behalf of the estate of a heavy smoker. The issue, as framed by Justice Breyer's majority opinion, was "whether the Constitution's Due Process Clause permits a jury to base [an] award in part upon its desire to punish the defendant for harming persons who are not before the court (e.g. victims whom the parties do not represent). We hold that such an award would amount to a taking of 'property' from the defendant without due process."

That sounds to me like what happened in the Mp3.com case. Indeed, in MP3.com, the court went further by punishing Mp3.com for the perceived acts other potential defendants, and not as in Philip Morris to punish defendant for conduct harming other potential plaintiffs.

iTunes: Infringement Detection Tool?

For my birthday, I was given the mega iPod video. I don't have any videos on it though because it is not yet possible to load a lawfully purchased DVD on to the iTunes store on my MacBook Pro and then import it to my iPod. So, I have been importing lots and lots of lawfully purchased CDs. When you insert a CD into your iTunes library, many things happen before you import it. A story in the New York Times on February 17th by Alan Riding, reporting from Paris, reveals an unexpected one.

The story, entitled "A Pianist’s Recordings Draw Praise, but Were They All Hers?," concerns the late British pianist Joyce Hatto, who Mr. Riding reports, "was rediscovered by a small group of musicians and critics who contended that her recordings of Chopin, Rachmaninoff, Liszt and others ranked alongside those of the 20th century’s most exceptional virtuosos." He also observes, that "she may have been less prolific than she seemed. ... Ms. Hatto’s reputation for excellence and originality has been shaken by a charge of plagiarism. Gramophone, the London music monthly, has presented evidence that several of the recordings issued under her name were in fact copied from recordings of the same music by other pianists."

Here is where the iTunes angle comes in:

"Jed Distler, a composer and music critic who was among Ms. Hatto’s admirers, contacted Mr. Inverne [of Gramophone] with a strange story. When he put the Hatto CD of the Liszt études into his computer, Mr. Inverne recounted, “his iTunes player identified the disc as, yes, the Liszts, but not a Hatto recording.” Instead, it identified Mr. Simon as the performer. "

"Looking for scientific evidence of a hoax, Mr. Inverne then sent the Hatto and Simon recordings to Mr. Rose, a former sound engineer for the BBC. Mr. Rose said that the Liszt recordings were easy to identify as those made by Mr. Simon, but that the Nojima recording had been 'manipulated' to disguise its origin."

“'If all this is true,'” Mr. Inverne said, “'what strikes me is that this sort of piracy was made possible by technology, and later advances in technology uncovered it.

Notes on the Art Appropriation Symposium

As the last posting indicated, the College Art Association held a two-day symposium in NYC this last Friday and Saturday which included considerable discussion of the issues raised by the art appropriation movement, including the ways that movement has evolved in the last two decades or so. On Friday morning, Judge Pierre Leval and I had a public dialogue on the relevant copyright issues. First though there were presentations by three professors of art history: Lisa Pon ("Inappropriate? Copying in the Renaissance"), Johanna Burton ("The Reign of the Quotation -- Appropriation and Its Audience"), and Jaimey Hamilton ("From Appropriation to Postproduction").

The panel was chaired by Martha Buskirk and Virginia Rutledge. The session was taped, but permissions haven't been worked out. One thing seems evident: it is difficult to bridge the gap between how those in the art community who favor art appropriation and who see copyright as an inappropriate vehicle by which to address disputes over such copying, and Judge Leval's and my view: appropriation art should be judged by the same standards as all other uses, taking into account what the artist was trying to accomplish.

For me and I believe Judge Leval, fair use has done, on the whole, an admirable job of mediating between the two typical opposing forces in art appropriation: the artist whose work has been appropriated and the artist who does the appropriating. These disputes, it must be emphasized, are intra-mural, pitting one artist against another. Too often, copyright is described in the art community as an alien force joyfully stifling art. Historically, however, it is artists who sought copyright or similar protection for their works: it was artists who did the lobbying, and in the case of the 16th century Venetian privileges, paid for them. I am unaware of any instance where a sovereign or legislature granted copyright (or the like) against the wishes of artists. If there are tensions between art and copyright, let's locate the source of the tension where it belongs: in differences within the art community. The tension is not externally imposed by the legal community. Nor is such tension peculiar to the arts. Harold Bloom's "The Anxiety of Influence" is a good source for poetry. Law didn't create such tensions and it can't solve them other than on a case-by-case basis.

Some of the discussion revolved around whether such tensions fell out along the "fine art" versus "commercial art" distinction, but in Koons's case, it is unclear how such a distinction would be applied. Both Judge Leval and I emphasized that whatever the source, once matters get in to court (and few do, it should be observed), there is no special artists' exemption, and instead, the general principles of transformative use apply: the idea that judges shouldn't judge such disputes is a dangerous fallacy. Another fallacy, noted by Judge Leval, is that judges are judging art in doing so: not true, he noted, although he did state that some judges have stepped over the line and inappropriately done so.

We both agreed that judges should be instead deciding a fair use defense and that the ultimate decision whether a use is fair or not says nothing about the quality of the art on either side of the pleading. Appropriation art of the Sherry Levine copying of Walker Evans was met with great skepticism as fair use: making a conceptual point as an artist is, after all, different than making a transformative use in copyright, and I would say it was on this point that two groups: art historians favorable to art appropriation and non-partisan lawyers (that is those of us not representing anyone in such disputes), had and probably will always have the greatest trouble.

At the same time, Judge Leval agreed that while fair use was invented by judges for judges (in order to promote learning and creativity), too many judges have been hostile to it. Judge Leval was particularly critical of the Supreme Court's Sony decision (but not of the result). Rather than regarding all unconsented to uses as fair use, in order for fair use to have doctrinal coherence, it is preferable to instead to treat some uses as either not within the copyright owner's rights or as de minimis.

Appropriation Art Conference

Tomorrow, February 16th, I am having a "dialogue" with Second Circuit Judge Pierre Leval - the originator of the transformative use concept - at a conference in NYC devoted to appropriation art and fair use. It begins at 10 am and is open to the public for free. Here is a blurb about it:

THE LAW AND APPROPRIATION ART
As part of the 95th annual College Art Association conference in New York, Feb. 14-17, 2007, the New York City Bar Association is hosting a panel titled "Reexamining Appropriation: The Copy, The Law and Beyond" on Friday, Feb. 16, at 10 am-12:30 pm. Among the speakers are William Patry, Google’s senior copyright counsel (and keeper of the Patry Copyright Blog), and Judge Pierre N. Leval, who first articulated the "transformative" test that was critical to Jeff Koons’ recent win in the courts [see "Artnet News," Jan. 19, 2006].

Other speakers include SMU art historian Lisa Pon ("Inappropriate? Copying in the Renaissance"), Princeton professor Johann Burton ("The Reign of the Quotation -- Appropriation and Its Audience") and Jaimey Hamilton of the University of Hawai’i ("From Appropriation to Postproduction"). The panel is chaired by Martha Buskirk and Virginia Rutledge. It takes place at the New York City Bar Association, 42 West 44th Street, and is open to the public.

Renewal and the Dead Author

Does a renewal copyright vest when the renewal term begins? (That is, on January 1st of the 29th year from publication). Neither the statute nor the legislative history of the 1976 Act provided guidance on the question. The issue was featured in an opinion yesterday from the ever-prolific Sixth Circuit, in Roger Miller Music , Inc. v. Sony/ATV Publishing, LLC, 2007 WL 443048. In the Roger Miller case, there were the extra twists of the renewal coming due in the very year renewal became automatic (1992), the author dying in the 28th year (1964), and a renewal application filed in that year, triggering a special provision enacted in the 1992 legislation.

There are three possibilities for vesting of a renewal term. Renewal could vest: (1) when the renewal term begins; (2) when a timely, proper renewal application is filed with the Copyright Office; or (3) when the renewal certificate is issued by the Copyright Office. The third possibility is undesirable because it depends on a mechanical and uncertain date. The first period (when the renewal term begins) was adopted in Marascalco v. Fantasy, Inc., 17 USPQ2d 1409, 1411 (C.D. Cal. 1990), aff’d, 953 F.2d 469 (9th Cir. 1991), a pre-1992 case, on the ground that it would best effectuate the congressional policy of protecting the rights of authors and their families. The Marascalco approach also had the benefit of making the beginning of the renewal term and vesting coterminous.

The second option (renewal vests when a timely renewal application is filed) was adopted in Frederick Music Co. v. Sickler, 708 F. Supp. 587, 589 (S.D.N.Y. 1989), another pre-1992 case,
principally on the ground that the plain language of the statute did not mention survival until the renewal term began, instead stating that entitlement to the renewal term was available “when application for such renewal and extension shall have been made to the Copyright Office and duly registered therein.” See also 708 F. Supp. at 592. “[R]enewal rights vest upon registration for renewal during the author’s lifetime and within the statutorily prescribed renewal period.”

Frederick Music Co. represented the better rule since the author (or other renewal claimant) had done all that he or she is required to do and the act of issuing a renewal application is ministerial, assuming the application is timely and properly filed, although it does mean that the vesting of the renewal term and its commencement may not be coterminous.


The Copyright Renewal Act of 1992 clarified this question. If a renewal registration is made in the 28th year of the original term, and the claimant dies following the renewal registration but before December 31 of that year, the renewal copyright is secured on behalf of the renewal claimant and the 67-year renewal term is conveyed as part of the claimant’s estate. However, if the renewal registration is not made in the 28th year of the original term, the renewal term will vest on January 1 of the 29th year from the commencement of federal protection in the party entitled to claim renewal as of December 31 of the 28th year (e.g., typically as assignee of the author). Here is the statutory langauge:

Section 304(c)(2)(A) At the expiration of the original term of copyright in a work specified in paragraph (1)(B) of this subsection, the copyright shall endure for a renewed and extended further term of 67 years, which —

(i) if an application to register a claim to such further term has been made to the Copyright Office within 1 year before the expiration of the original term of copyright, and the claim is registered, shall vest, upon the beginning of such further term, in the proprietor of the copyright who is entitled to claim the renewal of copyright at the time the application is made; or

(ii) if no such application is made or the claim pursuant to such application is not registered, shall vest, upon the beginning of such further term, in the person or entity that was the proprietor of the copyright as of the last day of the original term of copyright.

These provisions were inserted at the request of a motion picture company, which argued that it shouldn't be disadvantaged by automatic renewal where the author died before the renewal term but no renewal registration was filed. (In Rear Window a renewal was made). Under those facts, the work would have been in the public domain and the motion picture company would have been free (along with anyone) to use the work.

In the Roger Miller case, Sony filed the renewal application on behalf of Miller before Miller died. If I understand the facts and the statute (and I am most interested if anyone has a different interpretation), submitting the renewal applications worked to Sony's disadvantage (although in 1964 Sony could not have known about how a statute would be drafted 28 years later): because the renewal application was filed in the 28th year and Miller died in that year, under the statute the rights vested in Miller's heirs. Had Sony not filed the renewals (and had the heirs not filed either), Sony would have taken the renewal term under the statute even though Miller died before the renewal term began because it would have been deemed to vest in Sony on January 1, 1993. Professor Tim Armstrong discusses the case at Info/Law.

What Did the 4th Circuit Eat for Breakfast?

Jerome Frank (Second Circuit 1941-1957), an echt Legal Realist (see Brian Leiter, "Legal Realism and Positivism Reconsidered," 111 Ethics 278 (2001)), is reputed to have remarked that a court's decision might turn on what the judge had for breakfast. This led litigants to have a generous morning repast waiting for him at the Plaza Hotel. Eventually, Judge Frank ballooned to 450 pounds and burst like the Stay-Puft Marshmellow Man in the movie Ghostbusters. Judge Alex Kozinski of the Ninth Circuit, while a bon vivant, is nevertheless more careful about breakfast, as he detailed in his March 19,1993 speeech, "What I Ate for Breakfast and other Mysteries of Judicial Decision Making," available here.

All this is by way of background to wondering what a panel of the 4th Circuit had for breakfast when it decided, yesterday, Christopher Phelps and Associates, LLC v. Galloway; whatever it is was, I earnestly pray it is never served again. (HT to LKB for letting me know about the opinion).

The case, while possessed of some factual interest, is, in its legal essence, simple: an individual (Galloway) had an unauthorized copy of architectural plans made and then built a house based on them. The building design firm plaintiff sued for infringement. There was a jury trial; the jury awarded plaintiff its lost fees for use of the plans ($20,0000). The trial court denied plaintiff's motion for a new trial on damages and refused to order an injunction barring the future lease or sale of the house or mandating destruction or return of the infringing plans. Since there was no registration for the architectural plans, the lost fee award can be justified only as a value of use award for infringement of an architectural work.

But, alas, the Fourth Circuit issued a 22-page opinion. The opinion is a maddening mixture of getting some things right and some things very very wrong. The court's holding on how the first sale doctrine works applies across all subject matter, and bears no resemblance to how copyright law has worked since its inception centuries ago. Let's work through the issues methodically, though, since there is error built on error, which must be peeled back.

The first error, and it is a common one, is in fixing the proper measure of damages for infringement of architectural plans. Architectural plans have been protected since the 1909 Act; architectural works only since 1990. Because of their historically different roots, great care should be taken to ensure that the proper remedies are awarded for the particular type of work sued upon. This is more of a problem than one would think, given the failure of many plaintiffs to obtain a registration for both types of work, even if that party is the creator and owner of both. Copyright Office regulations are crystal clear that two separate registrations are required, one for the architectural plans and one for the architectural work. If plaintiff has failed to obtain both registrations, the court lacks subject matter jurisdiction of the work for which registration has not been obtained and obviously has no power to award any relief for such a work.

In the typical case, plaintiffs obtain a registration for architectural plans, but not for the architectural work, and yet attempt to claim remedies for infringement of the architectural work, that is, they seek defendant’s profits from sale of infringing houses. Such claims must be rejected. Assuming there are proper registrations for both types of works, what are the available monetary remedies? For architectural plans, a common measure is the fee the architect or building designer charges for use of his or her plans. One may never obtain damages for infringement of architectural plans measured by profits made from sale of infringing homes; such damages are proper only for infringement of architectural works, although courts with a disturbing regularity overlook this critical distinction. For infringement of architectural works, a common remedy is either the profit plaintiff would have made but for the infringement from sale of the house, or the profits defendant made from the same sale. In the case of the profits plaintiff would have made, one might ask why isn't this the fee the architect would have charged? This would, of course, justify the jury's award under a different theory.

In the Christopher Phelps case, plaintiff only sued on (I believe) infringement of the architectural work. The only remedies the jury could award, therefore, was damages from violation of the architectural work copyright. In an ordinary case, looking at defendant's profits, this would be calculated by the profit the builder made from selling the house(s), reduced by expenses and things like the value of the land, the location, and many other features, like the comps in the neighborhood. For plaintiff's losses, it seems a stretch to claim plaintiff suffered losses calculated by the value of the house: if authorized plaintiff's don't charge that way. Rather they charge either a flat fee for use of the plans or a percentage of the construction costs (in the case of skyscrapers, this is no small amount). In Phelps, though, defendant didn't sell the house: it was his dream house, which he built and still lives in. I don't disagree that in such circumstances, it might be possible to award the fair market value of the infringing house, apportioned by non-infringing elements of the design, and deducting for other non-infringing things like the construction costs, the value of the land, the value of the location etc. This may be a speculative task, although not impossible. More straightforward, however, is the fee the architect would have charged if authorized, in Phelps, $20,000.

On to injunctions. The court of appeals, citing eBay, rejected the argument (if it was made), that plaintiff was entitled to a permanent injunction since it prevailed on the merits. Since it was very unlikely defendant (an individual building his "dream" house) would do anything else with the plans, an injunction was unnecessary, although plaintiff was entitled to get the infringing copy back (on this point, the court of appeal remanded and hopefully the district court will order return of the copy, although for reasons given at the end of this posting, I don't see how it can). Plaintiff, though, asked for an injunction against defendant leasing or selling the house. The argument was based on the radical view that there can be a distribution of a house within the meaning of the Copyright Act merely by selling it. I disagree: there can only be a distribution by physical transfer of the copy, not by transfer of the title to the copy. In the case of an architectural work, that means selling it and moving it to a different location.

The Section 106(3) right is: "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending." There is no definition of "distribution" but one thing is clear: the operative terms are not, as plaintiff asserts, "by rental, lease or lending," but instead to "distribute copies." Whatever distribute means, it means distributing a copy, not title to the copy, and that's all that happened in Christopher Phelps.

Now on to the real La-La-Land. In rejecting plaintiff's argument, the court of appeals didn't focus on the statutory language, and instead found for defendant on a ground not briefed or argued (I am told). That ground was the first sale doctrine, in Section 109. At this point, I expect readers to say, "huh?" What does first sale have to do with it; the first doctrine states, in Section 109 that it is limited to lawfully made copies. An infringing copy is by definition, not lawfully made. Yes, but the 4th Circuit panel clearly had something very very bad for breakfast. The panel holding is that when the jury awarded plaintiff the $20,000 for the use fee for the plans, plaintiff was made whole-- and this is the kicker -- the infringing copy magically became a lawfully made copy.

In reaching this result, the court cited to the 1976 House committee report; that report, however, refers to copies made under a compulsory license; that is, by a congressional act, not a judicial act. The court also cited to the Second Circuit's decision in Platt and Munk Co. v. Republic Graphics, Inc., 315 F.2d 847, 854 (2d Cir. 1963). Platt was allegedly construing the the term "vend" under that Act, and in doing so, inquired into whether the copyright owner had received its "reward" for transfer of the copies. This passage was external to the statutory provision at issue, and indeed to the facts of the case, which involved a dispute between the copyright owner of games and the manufacturer thereof over quality deficiencies. When the copyright owner refused to pay for defective goods, the manufacturer sold them. Those facts have nothing to do with a first sale since the copyright owner never took possession of the copies and the initial distribution (by the manufacturer) was, in any event, unauthorized by the copyright owner. Platt and Munk was bad law under the 1909 Act and has not been followed in the Second Circuit under the 1976 Act.

If I read the 4th Circuit opinion correctly, defendant now owns an authorized copy of the plans and can sell them; why then remand to the district court for a possible return or destruction order under Section 503(b)? That section only covers infringing copies, and of course, that paradox points out another fatal flaw in the court's first sale holding: all of the post-judgment remedies are now impossible, including an injunction. But beyond this case, are we now in a situation in the 4th Circuit where copyright owners have to elect between damages and all other remedies, on pain of infringing copies being deemed lawfully made if monetary relief is granted?

Well-Pleaded Complaint Rule and Complete Preemption

A recent Third Circuit opinion, Board of Chosen Freeholders of the County of Burlington v. Tombs, 2006 WL 3713109 (3d Cir. Dec. 18, 2006), presents some important jurisdictional issues. Plaintiff municipal agency commissioned the creation of land maps for areas within the county. There is no reference to whether the county asserted copyright in the maps. The Board provided free copies of the maps to government agencies; for non-governmental requests, copies were provided at a fee calculated by the maps' coverage; presumably this meant the bigger the map the larger the fee.

Defendant, an individual, requested copies, but insisted they be provided at the cost of reproduction, pursuant allegedly to New Jersey's Open Records Act. (It is not clear to me that defendant was correct even on the merits of the state law). The Board refused; Tombs threatened to seek relief from the state. Then some brilliant lawyer for the county decided to bring a declaratory judgment action in federal court seeking a declaration that the Copyright Act preempted Tombs' Open Records request. The district court wisely dismissed the action sua sponte for lack of subject matter jurisdiction, and the court of appeals affirmed.

As the court of appeals pointed out, the Declaratory Judgment Act is not an independent basis for jurisdiction, which must, therefore be separately established. One cannot establish federal jurisdiction based on a defense, and that's what the Board's preemption argument was. Nor did the Board's complete preemption argument succeed. As the court of appeals pointed out, the Copyright Act "does not create an exclusive cause of action for access to public records ... ."

The well-pleaded complaint rule acts as a check on the potential scope of potential federal judicial power. Established by the Supreme Court in Louisville & Nashville R.R. Co. v. Mottley, 211 U.S. 149 (1908), arising under jurisdiction (a prerequisite to jurisdiction under the Copyright Act) is said to exist only when the federal claim may be identified "unaided by anything alleged or in anticipation or avoidance of defenses which it is thought the defendant may interpose." Taylor v. Anderson, 234 U.S. 74, 75-76 (1914).

Complete preemption, which, due to its name, might be thought to be related to the preemption found in 17 USC 301, is not. Judge Wilkinson has nicely explained the differences in Lontz v. Tharp, 413 F.3d 435, 440-441 (4th Cir. 2005):

In assessing whether defendants have carried their burden, we may not conflate "complete preemption" with "conflict" or "ordinary" preemption. While these two concepts are linguistically related, they are not as close kin jurisprudentially as their names suggest. Complete preemption is a "jurisdictional doctrine," while ordinary preemption simply declares the primacy of federal law, regardless of the forum or the claim. ... Ordinary preemption has been categorized as a federal "defense to the allegations." ... And as a mere defense, the "preemptive effect of a federal statute ··· will not provide a basis for removal." ... Even if preemption forms the very core of the litigation, it is insufficient for removal. ... By contrast, when complete preemption exists, there is "no such thing" as the state action ... since the federal claim is treated as if it appears on the face of the complaint because it effectively displaces the state cause of action. Complete preemption thus "transform[s] the plaintiff’s state-law claims into federal claims."

The Board's action failed on both grounds.

Wacka Wacka Hula Hula

Hawaii has been a feature in our house recently, with the release, by Nickelodeon, of the Backyardigans "The Legend of the Volcano Sisters." Those who do not have children in the 4-7 range may have missed the Backyardigans, but it is a great animated show on Nick Jr. The music is really really good (a rarity in children's shows) and so are the stories, revolving around 5 characters with animal shapes (Austin, Pablo, Tasha, Tyrone, Uniqua), who set off on adventures from their backyard. Those adventures take them to far away places, like space and Hawaii. In the Legend of the Volcano Sisters, Tasha and Uniqua insist that the boys guess what it is they want but if they guess incorrectly, they will unlease a volcano. Ultimately, they guess correctly, which is merely to invite the sisters to a luau.

Hawaii is not exactly a hotbed of copyright disputes, but a recent one bears mention, Reece v. Island Treasures Art Gallery, 2006 WL 3804685 (D. Hawaii Dec. 22, 2006). Plaintiff claimed her photograph of a hula dancer was infringed by defendant's stained glass artwork. Judge Seabright denied plaintiff's motion for a preliminary injunction in a very wonderful opinion canvassing originality, the idea-expression dichotomy, the scenes a fair doctrine and Hawaiian culture. Here's the most important part of the opinion:

The protectable elements of a photograph generally include lighting, selection of film and camera, angle of photograph, and determination of the precise time when the photograph is to be taken. ... In the Ninth Circuit, “courts have recognized repeatedly that the creative decisions involved in producing a photograph may render it sufficiently original to be copyrightable and ‘have carefully delineated selection of subject, posture, background, lighting, and perhaps even perspective alone as protectable elements of a photographer's work.’ ...

The idea of a hula dancer performing an ‘ike movement in the hula kahiko style from the noho position is not protected. Further, the parties agree that the ‘ike motion itself is not protected. Instead, the protected elements of Plaintiff's “Makanani” are limited to those that derive from the Plaintiff's expression of the idea of a hula dancer performing the ‘ike motion. Plaintiff's expression of those ideas include the angle, timing, and lighting of the photograph, as well as the expression of the hula kahiko performance and dress. Unprotected elements of the photograph are those that are not original, but are part of the public domain, including natural elements like the ocean and shoreline. See Satava, 323 F.3d at 813 (“These ideas, first expressed by nature, are the common heritage of humankind, and no artist may use copyright law to prevent others from depicting them. An artist may, however, protect the original expression he or she contributes to these ideas.”).

Once the court separates the protectable from the unprotectable elements, the court “must then apply the relevant limiting doctrines. Under the doctrine of scenes a faire, when similar features are indispensable and naturally associated with, or at least standard, in the treatment of given idea, they are treated like ideas and are therefore not protected by copyright....

Elements particular to the hula kahiko tradition are scenes a faire. Hula movements have standard forms and to perform an ‘ike motion, “a dancer raises one hand out and one arm is bent at the elbow and the hand is open and placed behind the eye with the thumb facing downwards and the finger to show the seeing motion.” ... At the hearing, de Silva testified that the right hand would naturally be up-“always up because your knowledge does not come from yourself. It comes from your kupuna. It comes from everything that's come before you and that's always up towards the heavens.” To the extent the dancers in the artworks are performing an ‘ike motion from the noho position, their similar features are indispensable, naturally associated with the motion, or at least standard. Further, the dancer's hula kahiko dress is scenes a faire; the proper dress required a p;a’;u, four k;upe‘e, and a lei ‘;a’;i and lei po‘o. See de Silva Decl. at ¶ 23. Because these elements are scenes a faire, they not protected by copyright.

When the protected elements of Plaintiff's “Makanani,” viewed in isolation, are compared to the stained glass artwork, their differences are clear. The angle and perspective of the pieces are very similar (both viewed in profile from the dancer's left side), but the position of the subject dancer relative to her setting is not. The dancer in “Makanani” kneels in the shorebreak with waves splashing her knees, facing the ocean, and appears large and tightly focused in relation to the unfocused shoreline distant in the background. On the other hand, the dancer in “Nohe” kneels on the beach, but does not face the ocean-which is directly behind her-and the top portion of the piece is dominated by the smaller island jetting out of the ocean. The angle and position of the dancers' bodies are in the standard ‘ike position, but even those angles vary slightly. Plaintiff's Exhibit 2 is a transparent black and white overlay of the “Makanani” model, placed over a color copy of “Nohe,” which shows that the dancers' outstretched right arms are not perfectly aligned (the top of the “Makanani” right arm is higher and does not appear to bend at the elbow, as “Nohe's” does). Exhibit 2 also shows that the position of the dancer's left foot is different, and that “Makanani's” foot and heel are larger and extend farther along the sand. Exhibit 2 demonstrates the difference in the angle and thickness of the dancer's bent left arm and hand (“Makanani's left elbow and forearm extend farther to the left and are thicker than “Nohe's,” and “Makanani's” left hand appears to be open, exposing the palm, while “Nohe's” left hand appears closed). Finally, although difficult to discern from Exhibit 2, Plaintiff's “Makanani” appears to be bending further backward than “Nohe,” with her back in a more arched position.

Plaintiff's timing and decision when to take the photograph is protected, but these elements are not relevant to any similarities found in the stained glass piece. Plaintiff's decision to take the shot at the moment the wave reached the model, so that the water can been seen splashing into her knees, is unique to “Makanani.” There is no wave crashing up against the dancer in “Nohe;” in fact, the dancer is positioned well away from the ocean. The lighting element is unique to the photograph. The striking contrast between dark and light and the shading of the sepia “Makanani” are absent from the stained glass. For example, the light coloring of the dancer's left arm and hand in “Makanani” is completely absent in “Nohe.” Instead, the flesh color in “Nohe” appears to be monotone throughout.

“Makanani's” expression of the traditional hula kahiko dress is different from “Nohe's.” Although both wear the traditional k;upe‘e on wrists and ankles and lei around the head and neck, the leaves in the stained glass are bright green and clearly delineated, in contrast to the photograph's darker, fuller, less clearly delineated leaves. Significantly, although the lei are worn in the same position around the neck and down the bare torso, the lei around “Nohe's” neck is thinner and composed of maile interwoven with colorful ‘ilima. “Makanani” appears to wear multiple strands of maile around her neck, which are denser and without ‘ilima interwoven. The meaning of this lei-and therefore its expression-is distinct, because the kinolau represent different ideas. With respect to the Plaintiff's expression of the traditional lei po‘o around the head, “Nohe's” is visible only on the front and top of her head, while “Makanani's” is composed of more leaves and is more clearly visible all around the head. Finally, the cloth worn by the dancers is worn in the same style, but expressed in a different fabric; the model in the photograph wears a printed fabric with designs in contrast to the plain, off-white fabric in the stained glass.

The facial expression of the dancer in “Makanani”-a serious, contemplative appearance-is fully absent from the featureless face in “Nohe.” Colucci testified that in all of her work, including “Nohe,” she omitted facial features in an effort to represent all Hawaiian hula dancers, not just a single dancer. The remaining similarity is the dancers' dark, windblown hair. Plaintiff's Exhibit 2 clearly shows the differences in the dancers' hair. “Makanani's” is shorter, more bluntly cut and reaches to the waistline. On the other hand, the hair in the stained glass flows all the way to the left edge of the piece and extends beyond the dancer's hips, with clearly outlined strands and pointy, sharp ends.

Upon careful examination, for the purposes of this motion, the court concludes that Plaintiff has failed to demonstrate that the protected elements of Plaintiff's photograph are substantially similar to the stained glass artwork. In the context of “thin” protection, “Makanani” and “Nohe” are not virtually identical. Although the position of the dancer in the ‘ike motion is common to both artworks and both are set on Kailua beach, they cannot be described as substantially or virtually identical. The appearance of the dancers is different; notably, the absence of detail in the stained glass. The dancer represented in “Nohe” has no facial features, hand details, or muscular differentiation, but simply shows the outline of the body. The mountains and ocean dominate the upper half of the stained glass, but not the photograph. The dancers' hairstyles are notably different lengths and shapes. Finally, the sepia tone of the photograph is markedly contrasted by the vibrant colors of the stained glass.

2 Live Bankrupt

The copyright controversy over 2 Live Crew's parody (or alleged parody to some) of "Pretty Woman," reached the Supreme Court where in front of the Court, Luther Campbell pulled up in a Rolls Royce, complete with entourage, and held a pre-oral argument press conference of sorts. It was good theater, and I enjoyed it. One wonders what happened to Luther afterwards. Some inkling may be gathered from a opinion issued by the Eleventh Circuit on Monday February 5th, Thompkins v. Lil' Joe Records, Inc., 2007 WL 316302. The case well illustrates the potentially toxic intersection of copyright and bankruptcy law for recording artists.

Plaintiff is Jeffrey Thompkins, who along with Patrick Watler, formed the group "Poison Clan." In 1989 Thompkins signed with a Effects Records, a division of Campbell's Skywalker Records, which in turn became Luke Records. The 1989 agreement transferred to Luke Records copyright in sound recordings created by Poison Clan. The transfer of rights in the sound recordings carried a continuing royalty obligation. (The status of rights, if any, transferred in the underlying musical compositions, was subject to disagreement).

In 1995, Luke Records, and Campbell personally filed for bankruptcy. Thompkins filed a proof of claim in the Luke Records bankruptcy as an unsecured creditor. Eventually, a joint reorganization plan was agreed to. In that agreement, rights in the sound recording copyrights owned by Luke Records, including those of Poison Clan, were to be transferred by operation of law to Lil' Joe Records. Pursuant to 11 U.S.C. sec. 365, certain executory contracts, including specifically those of Poison Clan were "rejected" by Luke Records at Lil' Joe's insistence. "Rejection" of an executory contract is a term of art in bankruptcy law. Thompkins did not file a pre-petition claim for damages resulting from the breach caused by the rejection.

Here's what all this means. By Luke Records' rejection of the contract with Thompkins, Luke Records was relieved of any obligation to pay royalties to Thompkins, even though the contract that imposed those obligations is the one that transferred the rights to Luke Records in the first place, and even though the transfer of the rights was not affected by the rejection. (That's why I said "rejecting" a contract is a term of art in bankruptcy law). Thompkins' sole remedy was to file a separate claim in the bankruptcy proceeding, as an unsecured creditor, for damages for the breach of the contractual obligation to pay royalties. But since Thompkins had failed to file such a pre-petition seeking damages, he waived his claim.

Lil' Joe was free and clear of any obligation: it owned 100% of the copyright in the sound recordings, yet did not have to pay anyone any royalties, nor was it liable for any contractual breach; it had no contract with Thompkins. Recording artists beware, to say the least!

Paris is OverExposed

CNN reports that a federal judge in Los Angeles has enjoined the now popular website, ParisExposed.com from releasing Paris Hilton's Social Security number, health data and other personal information. The story states:

The subscription-based Web site was launched last month and claims to have footage of Hilton in a "sexy bubble bath" video and various shots of the 25-year-old socialite in "racy situations."
Hilton previously said she put her possessions in storage two years ago when she and her sister, Nicky, moved out of a house that had been burglarized. The lawsuit alleges two defendants paid $2,775 for the contents of the storage unit and later sold the items for $10 million to entrepreneur Bardia Persa, who created the Web site.

Hilton's spokesman, Elliott Mintz, said Saturday he was pleased by the move. "I know what this has done personally and emotionally to Paris," Mintz said. "As far as I'm concerned, this is the most disturbing intrusion upon the privacy of a public figure that I've ever witnessed."

One would have thought Mr. Mintz had seen quite a lot in his day. On the copyright angle, which seems not to be a part of the case, naturally, sale of the iterms is covered by the first sale doctrine, but at least as to the diaries, I would think Paris retained the copyright as well as in any other photos or videos she took. Not having paid the subscription, I would still imagine much of the images were taken by others who then retain the copyright. And, after all, the first sale doctrine is not a limitation on the public performance right, even for such a very public performer.

Federal Circuit Says No to International Law

In a decision that is likely to be heard en banc, a divided panel of the Federal Circuit vacated a district court's order permitting plaintiff to amend his complaint to allege infringement of foreign patents. The panel majority (per Gajarsa, joined by Prost), held that the trial court erred in exercising discetionary power to hear such claims pursuant to the supplementary jurisdiction granted in 28 USC 1367. Judge Newman dissented. This is a very significant opinion. The case is Voda v. Cordis Corp., 2007 WL 269431 (Fed. Cir. Feb. 1, 2007).

This is not a case where the issue was whether to look to foreign law as a source of U.S. law; rather, the question was whether, given jurisdiction over the parties in an action for infringement of a U.S. patent, could plaintiff amend his complaint to include separate claims for infringement of foreign patents, for which the district court would apply foreign law for the foreign claims? The majority seems to have held no, never. The dissent seems to say yes in this case, but each case will have to be decided on its own facts to see whether there a common nucleus of operative facts under United Mine Workers v. Gibbs, 383 U.S. 715 (1966).

In copyright cases, courts have followed the dissent's approach of analyzing the issue on a case by case basis. No case I am aware of has taken the across-the-board approach of the panel majority, nor did the majority base its decision on a failure to find a common nucleus of operative fact. I appreciate the majority's concern about offending the possible interests of other nations and there is also the concern about whether asserting jurisdiction over foreign claims makes sense from an efficiency standpoint. For example, what if a U.S. declares a foreign patent invalid under foreign law? If one replies that a foreign court does not have to give such a ruling any weight, what is the value of having parties litigate the matter initially in the United States? On the other hand, as the dissent points out, U.S. courts routinely apply foreign law in a broad array of commercial contexts, although it is unclear if such decisions are the result of a forum selection clause or other consent of the parties.

Two from Europe

Two court decisions from Europe this week illustrate how different things can be there from here.

An article from the Finnish paper Helsingin Sanomat tells of a Finnish copyright dispute that one is unlikely to encounter here: the court ordered screenings of a film stopped because the film producer was found to have violated the screenplay writer's rights:

Riisuttu mies ("Man Exposed"), a Finnish feature film directed by Aku Louhimies, is being pulled from cinemas after the Helsinki Court of Appeals ordered screenings to stop. The court found that the film’s producer, Lasihelmi Filmi, had violated the rights of Veli-Pekka Hänninen, the writer of the original screenplay.
The distributor says that it will pull all of the copies of the film, which premiered in September, and that it will also put a freeze on the publication of the DVD version, which was to have gone on sale on February 14th.
In its decision, the Court of Appeals overturned a ruling by Helsinki District Court in May, according to which the producer had not violated the rights of the scriptwriter. The lower court felt that the complaint was premature, because at the time, only a preliminary version of the film was available.
The Court of Appeals found in a unanimous ruling that the producer of Riisuttu mies had violated the writer’s exclusive rights to the script. The film was produced on the basis of the text of the scriptwriter without his permission.
According to the ruling, the "transfer of copyright does not include a more extensive right to change the work than what is agreed in the contract".
Hänninen cancelled the contract already in the summer of 2005, after Harri Räty, CEO of the production company, said that the script would be modified as much as necessary, whether or not Hänninen authorises the changes.
Lasse Saarinen, chairman of the Central Organisation of Finnish Film Producers says that the decision was unfortunate, but not unexpected.
"The wrong people will now suffer, such as the film’s distributor and the company that bought the television rights, because the producer has drawn up a contract with a scriptwriter, showing a lack of professionalism, and has apparently failed to follow the contract", Saarinen says.


Meanwhile, in Paris, the potential dangers of allowing perpetual moral rights were illustrated in the efforts of the great-great grandson of Victor Hugo to stop a sequel to Les Miserables. This story is by Kim Willsher in the January 31, 2007 The Guardian:

The great-great-grandson of Victor Hugo said yesterday he was bitterly disappointed after his six-year battle to ban a modern sequel to Les Miserables was ended by France's highest appeal court. But he vowed to continue fighting to protect what he described as his family's "moral rights" to the classic work.

"I believed we were fighting the good cause but the court decided otzherwise. It is very, very disappointing," Pierre Hugo said. "I am not just fighting for myself, my family and for Victor Hugo but for the descendants of all writers, painters and composers who should be protected from people who want to use a famous name and work just for money." Mr Hugo, 59, a goldsmith, has been fighting to have banned Cosette ou le Temps des Illusions (Cosette or the Time of Illusions), ... claiming the publishers had betrayed the spirit of his ancestor's work to make money.

Angry descendants have written to President Jacques Chirac, to the European parliament and to France's culture ministry urging them to criticise the book. In an open letter to the French newspaper Liberation they asked: "Can one imagine commissioning the 10th symphony of Beethoven?" Hugo purists were furious that [the sequel writer] resurrected Inspector Javert, the villain of Hugo's story who jumps into the Seine at the end, and recast him as a hero.
The court decision met with a sigh of relief from authors, playwrights and musical producers who had feared an end to adaptations of classical works.

The case set French copyright laws, which put a literary work in the public domain 70 years after the author's death, against the concept of an author's "moral rights". The latter are considered timeless and passed on to descendants. Mr Hugo argued that the sequel, branded Les Mis II by critics, violated the "respect of the integrity" of Les Miserables, which Hugo wrote in 1862. The first court threw out his case saying he had not proved he was related to the author.

In 2004 an appeal court overturned this verdict, ruling that an author's rights were transmissible to heirs. It called Les Miserables "a veritable monument of world literature" and agreed that Hugo "would not have accepted for a third party to write a sequel". The publishers were ordered to pay symbolic damages ... but appealed.

Yesterday the French court of cassation decided Cosette, published by Plon, did not betray the spirit of the original or breach descendants' rights. Mr Hugo said: "I don't mind adaptations and many are very good but this book is not an adaptation. I have read it and it is not badly written but the publishers used Victor Hugo's name and the title Les Miserables as a commercial operation ... It was nothing to do with literature, they were just trying to make money."

[Defendant's] lawyers argued that banning his novel would violate freedom of expression and prevent others using great works of art and literature as inspiration. Victor Hugo himself once wrote: "The writer as a writer has but one heir - the public domain."