Fair Use Event for Readers in Washington, D.C.

Happy 1709 readers in Washington, D.C. – and unhappy ones in need of a little pick-me-up – can get a special preview of the book Reclaiming Fair Use: How to Put Balance Back in Copyright by Patrica Aufderheide and Peter Jaszi.  A reception for the book will be held at Washington College of Law this coming Tuesday.

Details
Where: 6th floor student lounge, Washington College of Law, 4801 Massachusetts Av., NW
When: 16:30, Tuesday, September 13th
Books: On sale for $10
Fair and fun: “Good food, fair use-friendly music, and friends”
RSVP: klbieze [@] gmail.com

More on Reclaiming Fair Use here: http://centerforsocialmedia.org/reclaiming

More Scrutiny for First Sale

First comes suit, then comes jury, then comes appeal after appeal after appeal.

A defendant previously found liable for copyright infringement has filed an appeal for an en banc rehearing of his last appeal.  A jury found Supap Kirtsaeng was liable for willful infringement of eight copyrighted works belonging to John Wiley and Sons.  Faced with a rather large damages bill ($600,000), Kirtsaeng did the usual thing and appealed.  The Second Circuit affirmed, in a 2-1 majority, the District Court.  Now Kirtsaeng has filed another appeal, asking for an en banc rehearing in the Second Circuit.

Infringing Acts

Kirtsaeng, a Thai student studying in the US, had friends and family ship him books legally printed in other countries but not authorized for importation into the United States.  He then sold those books on eBay, reimbursed his friends and family for their trouble and kept the remainder of the proceeds.  We’re not talking small change here where the books were used for his studies and then sold after the semester.  Kirtsaeng took in somewhere between $900,000 and a million dollars doing this.

First Sale – What does “made under” mean?

The first sale doctrine in the US Copyright Act allows people to resell copyrighted works “lawfully made under this Act.”  The Second Circuit held that “made under” means made domestically and so the reselling copyrighted items made elsewhere is not protected by the first sale doctrine.  This is the same issue that came up in Costco where the Supreme Court upheld the 9th Circuit on a 4-4 split.

The Second Circuit looked at Costco and found it rather unhelpful, being a Supreme Court 4-4 split.  The court also tried to do a statutory analysis of the “made under” clause and decided the statute was rather ambiguous.  In the end, the court’s decision that “made under” means made domestically rests on language from a 1998 Supreme Court case, Quality King Distributors, Inc. v. L’anza Research International and some jockeying with the Copyright Act trying to make sense of the first sale doctrine language (§ 109(a))  in conjunction with part of the Act prohibiting unauthorized importation (§ 602(a)(1)).  Then the court punted:

If we have misunderstood Congressional purpose in enacting the first sale doctrine, or if our decision leads to policy consequences that were not foreseen by Congress or which Congress now finds unpalatable, Congress is of course able to correct our judgment.

Kirstaeng’s New Appeal

In his appeal for en banc, Kirstaeng argues that Quality King was misinterpreted and that the Second Circuit’s decision is in conflict with decisions from other Circuits (note: as a matter of legality, this is allowed but it is often grounds for a Supreme Court review of the issue).

Kirstaeng argues that the text of the first sale doctrine is not ambiguous because the Supreme Court found that it was “unambiguous” in Quality King.  Basically, Kirstaeng attempts to show the court’s arguments are really in favor of allowing the first sale doctrine as a defense for imported goods but the court just didn’t want to admit it.

The majority’s opinion conflicts with the text, history, and purpose of the Copyright Act, as well as the Supreme Court’s reading of those sources in Quality King. The opinion’s most remarkable feature, however, is that the majority all but conceded those points. Indeed, it repeatedly expressed deep skepticism about the correctness of its own interpretation. It offered a decision at odds with itself.

We’ll keep you posted if the en banc rehearing is granted.

American aircraft carrier in Port Klang

Update: The aircraft carrier will be here for 4 days in which Sailors will have the opportunity to volunteer their time at several local community service projects, including work in two children’s homes and a senior citizen’s home. - Source

Sometimes I wish Kuala Lumpur is situated by the coast where you can see boats, yachts or even ocean-liners gliding by, or at least located alongside a huge body of water such as a lake or a river where you can enjoy watching people sailing or watch fishing boats go by. Lovely!

Not sure whether the vessel is still at Port Klang but the American aircraft carrier, USS John C. Stennis, made a scheduled port call yesterday. The name doesn't ring a bell?

This same aircraft carrier was used in movies including Transformers: Revenge of the Fallen, Executive Decision and others. It also responded to disasters such as Hurricane Katrina and the tsunami in Indonesia.

Image source: The Star

More on US Termination, a How to

I don’t have any moving stories of the importance of the Village People in my life like Nicholas Smith’s wonderful post on the US termination right at IP Whiteboard.  - Although I will admit that The Village People’s Greatest Hits was the first cd I purchased with my own money; – But, I would like to draw your attention to a very detailed how-to-guide on termination rights by Digital Music News: The Comprehensive Guide to Reclaiming Your Old Masters…

Note: If you’d like some background on the US termination right before getting into the guide, see Ben’s earlier post, Terminal Blues for Record Labels?

The Guide gives a bit of background on the termination law, explains the affect terminations may have on record labels and outlines the steps artists wishing to terminate their contracts should follow. 

It also, and perhaps most interesting to the copyright gurus reading this blog, explores in detail the ‘work for hire’ issue that will often be the deciding factor in whether a termination is successful or not.  As the Guide points out, if a work was created as a work for hire, the person who created the work cannot reclaim the rights.  This is because although they created the work, they are not the legal author.  Authorship in works for hire vests with the hiring entity. 

Of course, most record label agreements would state that the works at issue are works for hire.  The golden nugget lies in the fact that saying something doesn’t make it so.  (A common theme in copyright lately.)  The Guide gives a great analysis of the work for hire doctrine, complete with Congressional drama and RIAA trickery.  Check it out.

Hurricane Irene making landfall in North Carolina

Update on Hurricane Irene.. here's CNN Live on the situation. Hurricane Irene has made landfall at North Carolina dumping heavy rain resulting in floods.




Related post:
How to prepare for a hurricane (or other emergencies)

A Rose by Any Other Name

No matter what you call it or how you try to frame it, internet streaming is internet streaming.

Zediva tried to claim otherwise, setting up a rather elaborate system that attempted to get around the copyright law requirements for licensing movies streamed over the internet.  A lot of times this is how the law is figured out, attempts to get around it lead to law suits and court-issued clarifications.  (See the Napster/Grokster/Limewire string of cases.)  But in this case, the Zediva folks missed an important part of copyright law history, and the District Court for the Central District of California issued an injunction.

How Zediva tried to avoid licensing fees

First, I want to acknowledge that I was not able to locate a copy of the decision so my information is coming from various news sources, all listed at the end of this post.

Zediva set-up the service to mimic a video rental store.  Users rented a dvd that Zediva had purchased and the dvd was played in a remote dvd player also purchased by Zediva and shown to the customer via the internet.  One article mentions that users would sometimes get messages that movies were out of stock.  I’m guessing this occurred when customers had rented out all of the DVDs Zediva had purchased of that film. 

Rather than finding this system as a way of remotely renting purchased DVDs, the court found that this was just an annoyance and potential source of confusion for customers learning about video streaming. 

Zediva wasn’t paying licensing fees, trying to rely on the first sale doctrine saving their rental model.  But, as one law professor pointed out, Zedvia seemed to have missed the case where renting a video to be watched in a booth inside the store was infringement.  (That case was Columbia Pictures Indus. v. Redd Horne, Inc. from 1984.)  Even if Zediva could persuade the court that it was renting and not streaming movies, the facts are more similar to Redd Horne than to a regular video rental store.

However, the court did not buy the rental concept and instead found that Zediva was transmitting the performance to the public and thus infringing copyright.  Wonder if they’ll be another attempt at a work around…

Media Post News: http://www.mediapost.com/publications/?fa=Articles.showArticle&art_aid=155164

Read Write Wed: http://www.readwriteweb.com/archives/citing_copyright_law_judge_orders_movie_streaming_service_shut_down.php

CNET: http://news.cnet.com/8301-31001_3-20050579-261.html?tag=mncol;2n

A Motion for Fair Use

The courthouse for the United States District Court, Eastern District of Wisconsin* is majestic, beautiful, dignified. The 100-year old structure’s granite tower draws eyes upward, past elegantly arched windows and into the clear blue sky.  Marble and ornately carved wood add an air of grandness to the sedate black-robed men and women who spend their days in the building’s courtrooms and chambers.  Sunlight pours into the entrance-way atrium from a glass sky-light high above.  It’s a peaceful place, where footsteps echo down from long open balconies and sophisticated women in well-pressed skirts dart in and out of doors.

But this month, one Federal Judge in Wisconsin had to deal with something far less dignified than his magnificent surroundings.  As Judge Stadtmueller’s opening line explained, “Federal lawsuits seldom touch on such riveting subjects and regard so many colorful parties as the present matter.”  The present matter: a copyright dispute over a song called “What What (In the Butt).”

This is one case where no summary could be as entertaining as the actual judicial opinion, and so it will give the basic copyright issues. You can read the full Brownmark Films, LLC v. Comedy Partners decision for yourself.

Dry Background

Brownmark Films made a ridiculous music video that was a smash hit on YouTube.  South Park (Comedy Partners) featured its own 58-second version of the song, performed by a character named Butters Stotch.  Brownmark brought an action for violation of the US Copyright Act (Section 101) against Comedy Partners.  Comedy Partners filed a motion to dismiss on the grounds that Brownmark’s suit failed to state a claim on which relief could be granted.  (A 12b(6) motion for the Fed Civ Pro junkies out there.)

Defenses Raised

Comedy Partners made 2 arguments in its defense: 1) Brownmark lacked standing to bring a federal copyright suit, 2) the use on South Park was permissible under the doctrine of fair use.

Standing – registration and transfer

In order for a US copyright holder to sue for infringement in a federal court, the work involved must be registered with the US Copyright Office.  And, the person bringing the suit has to have exclusive rights to the work.  The song at issue here was registered and two of the joint authors properly transferred their rights to Brownmark such that he had exclusive rights.  In discussing this issue, the court recognized a circuit split between the 9th and 7th Circuits on whether joint copyright owners can grant an exclusive license.  The court sided with the 7th Circuit, saying joint owners can grant exclusive licenses.  This is probably a good thing since the Eastern District of Wisconsin is in the 7th Circuit.  The court goes on to comment further on a wider rejection of the 9th Circuit’s perspective, noting that it “has been widely lampooned in several respected treatises.”

Fair Use – Parody

Factor 1: purpose and character of the use – “to lampoon the recent craze in our society of watching video clips on the internet that are — to be kind — of rather low artistic sophistication and quality.^“  The work is transformed by replacing the original performers with a South Park character, and commentary is made on the value of viral videos.  [Tell that to Justin Bieber.]  In favor of Comedy Partners.

Factor 2: nature of the work – “the "nature" of the copyright in question does not help this court assess whether South Park's parody is a fair use.”  Factor ducked.  In favor of, neither side?

Factor 3:amount and substantiality of the portion of the work used – “the use of the copyrighted work in the South Park episode was relatively insubstantial.”  Only a small amount of the song’s lyrics were used.  In favor of Comedy Partners.

Factor 4:effect of the use on the work’s potential market – “there is little risk that derivative work in question would somehow usurp the market demand for the original.”  In favor of Comedy Partners.

The result: dismissal of the suit, with prejudice.

Strange Procedures?

There are some very interesting nuggets hiding in this apparently standard fair use analysis.  The court notes that normally, to bring in materials from outside of the complaint, i.e. the two video clips at issue here, the court needs a motion for summary judgment rather than a motion to dismiss.  The difference is that in summary judgment, the court is making a decision to a valid legal dispute with the facts given in the pleadings.  In a motion to dismiss, the court is deciding whether or not there is a valid legal dispute to judge. 

When necessary, a motion to dismiss can be transformed into a motion for summary judgment.  But here, the court points out an exception, “where the material in question is expressly referenced in the complaint and is central to the plaintiff's claim,” and continues to make a decision on whether or not there is a valid legal dispute here.

The Court acknowledges another problem to proceeding with a fair use analysis on a motion to dismiss.  Fair use is generally regarded as an affirmative defense to infringement.  Don’t you need a valid dispute, a valid claim, before there can be a defense to it?  Normally, yes.  But here again, the court finds an exception.  If the plaintiffs prove the defense in their own pleadings, then the court can proceed under the motion to dismiss.  And that’s what the court found here.

The court says that this practice is common place.  If that is so, why keep viewing fair use as an affirmative defense instead of as not infringement?  Seems like it would require less legal gymnastics.

Picture credit:Milwaukee Federal Building cc-by compujeremy available at http://www.flickr.com/photos/compujeramey/2041317259/. The photo was cropped for the blog.

* More information about the Milwaukee Federal Building here.  The author spent a splendid 6 weeks exploring the building as an intern.
For our European friends, don’t forget the old quip, “America, where 100 years is a long time and 100 miles is a short distance.”

Folk hero and/or cyberthief? The case of Aaron Swartz

The 1709 Blog has been made aware of criminal proceedings which are being brought against Aaron Swartz following a dramatic gesture that was pretty much guaranteed to draw a response.  Since this event is governed by United States law, this blogger was hesitant to offer an uninformed opinion. The 1709 Blog is therefore pleased to host this guest piece from Christopher F. Meatto (New York attorney and HarvardLaw74 blogger), which reads thus:

"Swartz, Civil Disobedience, and Harvard Ethics


[The July 14, 2011 United States criminal indictment of activist Aaron Swartz, inventor of RSS, for downloading mass quantities of academic journals, can be accessed here].

The relevant American newspapers have two different takes on the Swartz indictment.

Boston: “Aaron Swartz, a Cambridge web entrepreneur and political activist who has lobbied for the free flow of information on the Internet, was charged in federal court with hacking into a subscription-based archive system at MIT and stealing more than 4 million articles, including scientific and academic journals.

New York Times: “A respected Harvard researcher who also is an Internet folk hero has been arrested in Boston on charges related to computer hacking, which are based on allegations that he downloaded articles that he was entitled to get free.”

I suggest we view this indictment of a Harvard ethics fellow in the following context: “Civil disobedience is the active, professed refusal to obey certain laws, demands, and commands of a government, or of an occupying international power. Civil disobedience is commonly, though not always, defined as being nonviolent resistance. It is one form of civil resistance. In one view (in India, known as ahimsa or satyagraha) it could be said that it is compassion in the form of respectful disagreement.”

JSTOR, the academic archiving service from which the documents were downloaded, has published an ambivalent, at best, account of its position on this case:

“It is important to note that we support and encourage the legitimate use of large sets of content from JSTOR for research purposes. We regularly provide scholars with access to content for this purpose. Our Data for Research site (http://dfr.jstor.org/) was established expressly to support text mining and other projects, and our Advanced Technologies Group is an eager collaborator with researchers in the academic community….Even as we work to increase access, usage, and the impact of scholarship, we must also be responsible stewards of this content. We monitor usage to guard against unauthorized use of the material in JSTOR, which is how we became aware of this particular incident.”

The JSTOR statement also implies that it has already settled with Swartz with respect to the nature of his use of the downloaded content.

I respectfully suggest that the solution here is for JSTOR to publish its complilation of 1,000 academic journals on a non-exclusive basis under a Creative Commons Licence.

I applaud Aaron Swartz for his efforts".

Thanks, Christopher, for this take on what clearly has the makings of a cause celebre -- but what do our readers think?

Jewel cases! Get your empty jewel cases here!

Over one thousand burned DVDs, a small shop in Orlando, Florida, and the county Economic Crimes Unit, a combination that has “uh-oh” written all over it.

The shop owner tried to claim that what he was doing was legal because he wasn’t selling the DVDs.  He was giving the DVDs away for free, for promotional use only, with the purchase of a $5 empty jewel case.

The newspaper reporting the results of the search warrant execution states that Mr. DVD-seller is facing felony charges under state law. However, the Florida statute that appears to be most applicable, 540.11, doesn’t seem to quite address the facts at issue here. The first two subsections making it unlawful to copy and sell DVDs only applies to sound recordings fixed prior to February 15th, 1972.  The next two provisions make it illegal to copy “performances.” There’s no definition of “performance” in the statute, so it’s unclear whether movies would fall under this provision.

If movies do count as performances, then Mr. DVD-seller is in trouble. Section (2)(a)3. makes it illegal to copy articles embodying performances with the intent to use those articles to cause the sale of other articles. Hmm… now why would someone pay $5 for an empty jewel case when a pack of 10 retails for nearly half that price on amazon.com?

A Florida case involving infringing CDs, rather than DVDs, suggests section (3)(a)1. might be applicable here.  In that case, it was clear that the CDs themselves were for sale.  If the court doesn’t allow the “I’m only selling the jewel cases” line to fly, then this provision could possibly be applicable.  The real tricky thing here is that half of the provisions talk about sound recordings and half talk about performances. Neither term is defined and neither obviously covers movies.

But don’t worry.  Even if Mr. DVD-seller manages to slip through the cracks of Florida’s state laws, he’s still in deep trouble under Section 506 of the US Copyright Act.

The Orlando police were alerted about Mr. DVD-seller by the MPAA.  Maybe he shouldn’t have set up his shop in a town owned by Disney.

Photo credit:Jewel case in the snow cc-by-nc eleda 1.

US Copyright Registration: $35 Insurance?

Formalities may not be allowed thanks to Berne, but that doesn’t stop the United States from encouraging copyright owners to register their works.  With so many everyday people creating copyrighted works – photos, emails, blog posts, tweets – a question to the necessity of copyright registration arises.  When should you bother registering?  Jonathan Bailey over at Plagiarism Today has a great post seeking to answer this question.

Once upon a time, there were formalities…

One answer is that you should register your work if it was created back when registration was required (i.e. under the old 1909 Copyright Act).  That’s something blues musician Syl Johnson learned the hard way.  Although in this instance, Syl had some bigger problems.

Part I

The case, Johnson v. Cypress Hill, et al. [Johnson II], Nos. 08-3810, 09-2213 & 10-1733 (June 1, 2011), involved legendary rap group Cypress Hill and Syl’s song “Is It Because I’m Black.”  Syl recorded two versions of this song, one in 1969 and one in 1972.  In 2003, he sued Cypress Hill for using his song in one of their 1993 songs.  As is the case with most copyright suits about hip hop tracks, the portion of the song used was small (2.5 seconds) and looped.  (Not relevant, but interesting all the same.)

Syl believed that his federal lawsuit was valid based on his recollection of having registered the 1972 recording in 1997.  But he ran into two problems.  First, he didn’t actually register the 1972 song (other songs were contained in the registration, but not the one at issue here).  Second, Cypress Hill didn’t use the 1972 recording, they used the 1969 recording.  The problem with that?  Sound recordings weren’t eligible for federal copyright protection until 1972.  Cypress Hill: 2, Syl: 0.

Syl’s next move was to try to sue under laws that applied to his work: common law misappropriation and federal copyright infringement for a different copyright.  Compositions were eligible for copyright protection in 1969 so Syl registered the work as a composition, in 2003.  That is the registration he used for the basis of the federal copyright claim in his motion to amend his complaint.  By this point, it was 2008, five years after the suit began and 15 years after the Cypress Hill song at issue was released.  The judge denied Syl’s motion to add these claims to the case and granted Cypress Hill summary judgment.  Cypress Hill: 3, Syl: 0.

Syl tried to get the court to vacate the summary judgment and just dismiss the case for lack of subject matter jurisdiction.  In a nice twist, Syl argued that since he didn’t have copyright in the first place, the court didn’t have jurisdiction.  Instead he got an order to pay attorney’s fees and costs for Cypress Hill, a judgment in excess of $300,000.  Cypress Hill: 4, Syl: –300,000.

But wait, it turns out that was only the first half.  If you’ll notice above, the case citation has the nickname “Johnson II.”  All that stuff above, that’s all in Johnson I.  So could Syl come back and even the score in the 2nd half?

Part II

Syl came back with a new case, Johnson II, in state court, again bringing the state law misappropriation claim.  Cypress Hill had the case moved to federal court.*  Once that happened, Syl tried to amend his complaint to add the composition infringement claim, basically attempting to make Johnson II exactly like what he tried to make Johnson I.  It didn’t work any better the second time.  The court dismissed the case with prejudice, meaning Syl couldn’t try to bring the same case for a third time.  The reason: Syl’s claims were barred by res judicata.  Cypress Hill: 5, Syl: still –300,000.

Syl fights hard and doesn’t give up.  He appealed, and he appealed everything: the first courts grant of summary judgment, his motion for dismissal based on lack of subject-matter jurisdiction, the attorney fees and costs award, and the dismissal of his claims in the new case.

Syl lost on all four. The first court didn’t abuse it’s discretion when granting summary judgment because of the long delay in attempting to amend the complaint.  The court had subject matter jurisdiction over the case because a valid copyright registration is a requirement for filing a claim but does not affect the court’s jurisdiction over the case.  The fees and costs award was valid because the US Copyright Act gives the court discretion to award costs and attorney’s fees to the prevailing party in an infringement suit.  And finally, dismissal of the new case was correct because the second case involved the same people, involved the same events, and the first case was decided on its merits.

Final score: Cypress Hill: 300,000.  Syl: –300,000.

 

* For those unfamiliar with US civil procedure, there are basically two ways to have a case heard in federal court, have a claim under a federal law (federal question jurisdiction) or have the two parties be from different states (diversity jurisdiction).  Johnson I was brought in federal court under the first type; Johnson II was moved to federal court under the second type.

Hat tip to Joe Forward and the State Bar of Wisconsin for their post on this case.

Out with the Acting, in with the Doing

The news is a few days old, but it hasn’t appeared here yet and it should.  This past week the United States got a new Register of Copyrights: Maria Pallente.

Maria has been serving as the Acting Register since the previous Register, Marybeth Peters, retired at the end of the last year.  As of the first of this month, Maria is now the full, official, not-just-acting-but-being, Register.

The US Register of Copyrights works under the Librarian of Congress and does a lot more than just registering things.  Her role does includes developing procedures within the Copyright office for registering works, researching registrations and other such things.  But her increasingly more important role is to provide input and analysis on copyright law and issues relating to copyright, both domestic and international.

Already Maria has testified before Congress about potential changes to the US copyright regime.  Her first day as Register, she appeared before the Subcommittee on Intellectual Property, Competition, and the Internet to discuss various types of online infringement.  She had testified about similar issues before the same subcommittee has Acting Register in March.

Marybeth Peters is often hailed for her many achievements as Register of Copyrights, and I’ve often heard her spoken of fondly by both sides of the great copyright debates.  Maria has some big shoes to fill, but it looks like she’s jumped right in and is ready for the challenge.  Welcome to Maria!

For a full description of the US Register of Copyrights duties: 17 U.S.C. §701

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Map Those Treaties

Treaties, treaties, treaties.  Keeping track of all the different, an often overlapping, copyright treaties can be quite the task.  Who’s signed it? When?  What’s included?  It’s a lot of information to sort through.  But it’s just gotten easier, at least for copyright treaties to which the United States is a partner.

Puneet Kishor has put together “Copyright Treaties With the US,” a wonderful map viz that gives an interactive picture of the major international copyright treaties.  The map features a list of 17 options ranging from “Show all” to “None” and including five incarnations of Berne, several WIPO treaties, and of course the WTO TRIPs agreement.

Clicking on a treaty option brings up an array of blue circles across the map.  Each circle represents a country or territory that matches the chosen option.  Users can get more information by clicking on the circles.  Here’s a screen shot of the “Unclear” option for an example.

Since the map is designed to show treaty relations with the United States, the United States does not get a clickable circle on any of the options.  As Puneet explained, “The US can’t have a treaty with itself.”

Puneet developed the map to meet his own needs while doing research on different copyright regimes and the concept of an “international copyright.”  He had located the information he needed in Circular 38a, but found it’s pdf format less than ideal.  The interactive map was born.

Recognizing the huge potential of usefulness to others, he’s made the map available via his website under CC0, waiving his rights in the work.  As someone who’s tried to make a similar map in the past with Paint and color coding, I know I’ll be referring to this new resource often.

Nana-na-boo-boo, You Can’t Sue Me

Wilcox v. Career Step, the case is a few months old now, but it hasn’t been mentioned on this blog yet and is worth a look.

The main heart of the Wilcox case is a dispute over ownership of copyright between the author of a medical coding course, Ms. Wilcox, and an online course distributor, Career Step, that offered the course and helped pay for its development and may have employed Ms. Wilcox.  However, these work-for-hire and ownership questions are not the interesting item from the recent decision.

In addition to suing Career Step, Ms. Wilcox also sued a number of individuals and colleges who received the course from the Career Step.  Some of these colleges that were sued are state-run, public institutions.  And one of these state-run, public institutions, West Virginia Community and Technical College, challenged the suit on grounds of sovereign immunity under the 11th Amendment of the US Constitution.  That motion to dismiss was granted.

The 11th Amendment prohibits law suits against a state by citizens of another state unless the state has consented to be sued or a federal law permits the suit.  West Virginia Community and Technical College is considered to be an arm of the state of West Virginia because it is controlled by and receives most of its funding from the state.  The court held that West Virginia did not consent to be sued and that there was no federal law to change the standard 11th Amendment rule.  Thus, the court granted West Virginia Community and Technical College’s motion to dismiss the copyright claims against it.

This case is unusual for a few reasons.  First, this case is going on in the District Court for the District of Utah.  This is not one of the common places for a copyright infringement suit, such as the Eastern District of New York or the Central District of California.

Second, a sovereign immunity claim in a copyright infringement suit is, I believe, a very novel defense.  (Readers can please correct me if they know of other similar cases.)  And, the success of the defense raises questions for the future of interactions between copyright holders and public education.

The United States has a large number of public universities, colleges and technical training schools, as well as an extensive public K-12 system.  If state-run institutions have immunity from copyright infringement suits, do they have a free license to ignore copyright law and infringe content as much as they would like? 

What about secondary liability concerns for things like file-sharing?  A growing number of universities, both public and private, have instituted programs and partnerships with big content to deter file-sharing on their campuses.  If state-run universities can claim sovereign immunity protection, will they have no need for these programs?  Will state universities become sanctuaries for file-sharing students?

The White House has announced recently that IP Czar Victoria Espinel is suggesting new copyright laws.  Will these include a copyright infringement exception to the 11th Amendment?

Decision dismissing claim against West Virginia Community and Technical College

First decision in case addressing a number of joinder and dismissal claims

Da Bears, Da Dance, Da Lawsuit

Da Bears.  Perhaps one of the most famous phrases in 1980s American football.  The Chicago Bears had a lot of cultural staples that decade, Mike Ditka, Refrigerator Perry and the 1985 Superbowl Shuffle (video available here).  But as the 25th anniversary of the Superbowl Shuffle approaches, there’s trouble in the Windy City.

Photo credit: “It’s Like Making a Trip
to Mecca if You’re a Bears Fan”
CC-BY-SA Senor Codo

Julia Meyer, owner of the copyrights to the video and song Superbowl Shuffle has brought suit against cable network Viacom, owner of MTV and VH1.  Meyer alleges copyright infringement under the US Copyright Act, misrepresentation under the Lanham Act, deceptive trade practices under Illinois state law and unjust enrichment.  (Full brief pdf)
What did Viacom do?  It played the Superbowl Shuffle video on MTV and VH1, not the whole video, but clips of it.  The shortest clip, 16 seconds, the longest, a minute and a half.
According to Meyer,

“The Defendants’ conduct significantly damaged the market for the ’85 Bears Shuffle Video. [Because now that people have seen it, they’ll know better than to buy it?]  The 25th Anniversary of the ’85 Bears Shuffle Video will take place during late 2010 and early 2011, which has created additional interest from the public in the ’85 Bears Shuffle Video.” [What’s more likely to create additional interest is that the Bears could make it to the Superbowl this year.  They’re currently first in their division, just ahead of the Green Bay Packers.]

Copyright Infringement

Meyer’s claims that by airing the Superbowl Shuffle clips on MTV and VH1, Viacom’s actions were “willful and deliberate, and in utter disregard for Meyer’s rights.”
All I can do here is speculate.  Once upon a time, MTV and VH1 actually played music videos, full music videos, all of the time.  That suggests that the Networks are familiar with the standard process for licensing videos and would not have aired the videos without going through that standard process.  (Unfortunately, I am not familiar with the standard process and have no idea if there is any sort of set compulsory licensing in place for music videos or if each video’s airing must be negotiated with the rightsholder.)
On the other hand, most of the videos MTV and VH1 show are produced and owned by major record labels.  This video is different.  It is not owned by a label, but by a entrepreneur who licenses the video via a company in Illinois.  Did Viacom try to take advantage of this situation by airing the video without going through the normal licensing practice?  The brief filed by Meyers gives us no information about any relevant background facts in this area.

Deceptive Trade Practices and Unfair Competition

The claims under the Lanham Act and Illinois State Law (815 ILCS 510/2) are similar.  Meyer and co-plaintiff Renaissance Marketing Corporation alleges that by showing clips of the Superbowl Shuffle on VH1’s program One Hit Wonders and MTV’s MTV News, Viacom engaged in “unfair and deceptive trade practices in that it likely caused confusion and mistake by the public.” 
At first, this sounds pretty ridiculous.  How would the public confuse a football team with some cable channels?  Would the public really think that the airing of the videos means the Chicago Bears are endorsing VH1 and MTV?  But the alleged confusion isn’t over affiliation or endorsement.  Meyer’s claim is that the public will be mislead into believing that she authorized the use of the video on the programs.
It’s possible viewers believe the owners of videos approve the playing of their videos.  But I wonder how realistic it is that the public would believe that for the video uses at issue here.  The MTV clip was part of a news show including interviews with members of the 1985 Chicago Bears team.  Does the public assume permission is granted whenever a very brief (40 seconds in this case) clip appears on the news as part of a story?  And the real question, would the public assume permission is given by the video owners for videos that appear on VH1’s One Hit Wonders?  Being known as a one-hit-wonder isn’t usually a good thing.  The public might assume that if specific permission were needed, there wouldn’t be any videos on the show.
The deceptive practices and likelihood of confusion claims are plausible but tenuous at best.  My guess is the case settles; I’ll be surprised if it goes to trial.

Ignorance of the Law, an Excuse?

Throughout my childhood my father used to tell me, “Ignorance is no excuse for the law.”  It didn’t matter whether I was jaywalking or learning the hard way that glass jars of pickles don’t bounce; ignorance was no excuse.  Well it looks like there may be one time when ignorance is an excuse.  But I’m in doubt.

Criminal Charges under US Copyright Act Dropped

Many readers may have been following the USA v. Crippen case on other sites.  - Wired has a fairly detailed running account of the case. – This is the case in which California resident Matthew Crippen was criminally charged for violations of the US Copyright Act.  It was to be the first criminal case addressing a violation of the Copyright Act’s restriction against circumvents technical protection measures (TPMs) designed to protect copyrighted works.  “Was” because this past week the prosecution dropped the charges.
The many reports on the prosecution’s decision list a number of factors leading to the decision to drop charges.  Rumors of prosecutorial misconduct and concerns about the jury learning of crimes committed by the prosecution’s witnesses are two of the reasons mentioned.  (See Wired, above, and TechSpot for more on these reasons.)  But it seems like the main reason, which is related to both of these, is Judge Gutierrez’s decision that the prosecution would need to prove that Crippen knew he was violating the law.  (“The government said it would have dropped the case if that more onerous standard was required.” Wired.)

Looking for “Knowledge”

I’m still trying to figure this one out.  According to Wired (specific article link), “Gutierrez ruled that the government had to prove Crippen knew he was breaking the law by modding Xboxes.”  Maybe there’s a nuance that got missed or misinterpreted somewhere between the judge and Wired.
Crippen was modifying X-Boxes, allegedly so that they would play pirated games.  From what I can gather, the statute Crippen was charged for violating was 17 USC 1201.  I am not sure if it was part (a) for “circumventing a technical measure” or part (b) for “circumventing protection afforded by a technical measure.”  However, the rest of the provisions in each section are parallel so we can look into the knowledge element without knowing with which specific provision Crippen was charged.

Subsections (A)

The first requirement, in § 1201 (a)(2)(A) and (b)(1)(A), is that the main purpose of the service be to circumvent a measure that effectively controls access to the work.  This could have a  knowledge element, requiring the defendant to know that the changes he was making would give access to works that were previously not accessible.  But knowing you’re getting access to something you couldn’t access before is not the same as knowing you are breaking the law.  So our knowledge of committing a crime being an element isn’t here.
-- NOTE: There’s a number of elements within this each Subsection.  I am only looking at potential knowledge elements.  For a great in-depth look at each element of the crime, see this post on bunnie studios by someone who was called as an expert witness in this case. --

Subsections (B)

The next subsection, (a)(2)(B) and (b)(1)(B), requires that any commercially significant purposes aside from allowing access to previously restricted items are limited.  No knowledge element there.

Subsections (C)

The last subsection requires that the service be marketed for use in circumventing a TPM.  This requires the same sort of knowledge element as subsection (A), the knowledge that the service is providing access to restricted works.  Again, there doesn’t appear to be anything suggesting that in order to violate this law the person circumventing the TPM needs to know that circumventing TPM is illegal.

So Where’s the Knowledge

Is there a knowledge element elsewhere in the DMCA or in the US Copyright Act that applies to this section?  What am I missing?  Do any of our readers have an idea why the judge would require the prosecution to prove that the defendant knew he was breaking the law?

Going for Five? Golan Tries Again

Several months ago, The 1709 Blog reported on the 10th Circuit decision of Golan v. Holder, also known as Golan IV.  Yesterday, the Stanford Center for Internet and Society announced that is has filed a petition for writ of certiorari with the United States Supreme Court on behalf of the Golan side.

The entire petition is available from CIS here (pdf).  For those that have been following the Golan saga, the petition contains little surprises.  As in the case’s previous incarnations, Golan’s group (the Petitioners) is arguing that the US Copyright Act provision reinstating copyright for foreign works that had fallen out of copyright due to non-compliance with previously required formalities violates the US Constitution.  The Constitution sections at issue are the First Amendment – guaranteeing freedom of speech and expression, and the Progress Clause – introducing intellectual property rights with a ‘limited time’ time-limit.

When Golan III was argued, the US government claimed that the provision of the Copyright Act at issue was necessary in order for the US to comply with its duties under the Berne Convention.  The 10th Circuit decided Berne was not an issue because it found there to be this other interest the government had to protect, the interest of US authors abroad.  The petition argues that the Golan III 10th Circuit panel decision side-stepped the real issues (as mentioned above) and rested its decision on this made-up theory of protecting US author’s rights abroad.  It states that in this way and others the Golan III decision goes against prior Supreme Court decisions.  Interestingly, in one of the places where this argument is made, most of the cases cited are actually patent cases and not copyright cases.  That difference may be something the US government side can latch onto when trying to distinguish the cases and show that the rules do not apply to here.

For those who are not familiar with US procedures.  This filing does not mean that the Supreme Court will hear the case.  It only means that the Golan group thinks the Supreme Court should hear the case.  The Court will decide on its own whether there will be a Golan V.

Photo Credit: five CC-BY woodley wonderworks available at http://www.flickr.com/photos/wwworks/3196112134/

Sports and Politics

Conflicts between copyright owners and politicians for unauthorized use of works in political campaigns is not unusual.  Often it’s a musician or record label that has not agreed to a theme song’s use, occasionally, it’s a news station that does not want to help a candidate it doesn’t support, but for Senator Russ Feingold, it’s the NFL, the National Football League, big granddaddy of American football (just called “football” for the rest of this post).

Senator Feingold’s ad uses a number of football clips, one of which is from an NFL game.  The NFL, having not authorized the use of the clip, contacted the campaign and the campaign agreed to edit the ad to remove the clip. Ceased and desisted. Settled without a law suit sounds pretty good.  But is it really the best outcome?

Senator Feingold is running for re-election in Wisconsin.  For Wisconsinites, football is not just a sport, it’s part of our identity; it’s the Green Bay Packers.  The Packers team is almost 100 years old and is the only non-profit, community owned major sports team in the United States.  The team may be based in Green Bay, but it belongs to the entire state.  This post, despite the spelling and grammar errors, explains the relationship between the team and its fans well.

The NFL clip at issue in Senator Feingold’s commercial shows a player dancing in the end zone and pretending to moon the crowd.  Not just any player.  Randy Moss, formerly (and just recently, again) of the Minnesota Vikings, an arch enemy team. (We’re talking Germany-Holland fussball here.  When the Packer star quarterback decided to go play for the Vikings, he became forever linked to the top traitors in history.)  The clip is from 2004, but that particular victory ‘dance’ was so offensive, it is still talked about.

Now that you have a bit of background, here’s why the ceasing and desisting may not have been the best outcome.  The Feingold ad [video] uses various football clips, the others not owned by the NFL.  All the clips show players celebrating.  The NFL clip is the only one that shows a recognizable incident; the only one that is highly emotionally charged.  It’s the clip that really makes the Senator’s point – that the pre-mature celebrating of his opponents is disgusting and something to be abhorred.  Removing the clip changes the tone of the ad.  This is one instance where a licensing deal would have produced a better result, keeping the tone of the ad intact.  Of course, the big question is: What would it cost?

Georgia on my ... oh, never mind

It's not the technology that causes
the problems, but what you do with it ...

From a Jiscmail list, via the ever-vigilant Graham Titley (Subject Librarian and Copyright Advisor, Charles Seale Hayne Library, University of Plymouth), comes news that three publishers (Cambridge University Press, Oxford University Press and Sage) are busily suing Georgia State University (GSU) for copyright infringement following allegations that GSU staff are letting students make electronic copies of parts of copyright works without making payment to the publishers, encouraged by GSU's new copyright policy.  This offers a "Fair Use Checklist" to assist in determining whether material in question can be copied under the "fair use" provision in US copyright law.

The Atlanta District Court judge has so far ruled that GSU cannot be sued for direct infringement of copyright since it's the students who are doing the copying. Indirect infringement is however a possibility.  It's now up to the plaintiffs to establish an "ongoing and continuous misuse" of the fair use defence following the introduction of the new GSU policy. If they can do this, the burden of proof then falls on GSU to justify each otherwise-infringing copy.

The court's ruling in Cambridge University Press and others v Becker and others on the direct infringement issue can be read on Justia here. The 1709 Blog awaits the next developments with excitement.

Georgia on my mind here
Sweet Georgia Brown here
Unfair dealing with Georgia here

Fair Use, the Standard Hail Mary

When a judge starts his opinion, “For the fourth time we consider on appeal…” you get the impression he’s a little annoyed and tired of seeing these two parties in court.

That’s exactly how Judge Michael of the United States Court of Appeals for the Fourth Circuit started his opinion in the latest iteration of Bouchat v. National Football League. (full opinion).  The case began over a dozen years ago when Bouchat first brought suit against the NFL and one of its teams, the Baltimore Ravens.

Bouchat designed the first Ravens’ logo used in the mid-90s, except the Raven’s didn’t acknowledge this, didn’t license Bouchat’s work from him and didn’t pay him any royalties for the use of the “strikingly similar logo.”  So Bouchat sued and won and got absolutely no damages. Obviously not happy with this outcome, he attempted to sue other companies that had manufactured and sold goods bearing the Ravens’ logo.  That didn’t pan out well for him either. 

Then, 10 years after the original suit against the Ravens and NFL for using the logo on its helmets and fields, Bouchat tried again, suing again for copyright infringement but this time for using the logo in a highlight reel that includes video of those original uses and for displaying the logo on historical memorabilia in the franchise’s headquarters.  (How an expansion team that’s been in existence for less than 20 years has enough highlights for a full-length video is beyond me, but then I come from hardcore-football land.)

The Play: Fair Use

The Ravens tried to claim fair use of the logo, citing its use in the highlight reel as historical and non-commercial. The district court agreed and found in favor of the Ravens.  The appellate court disagreed and reversed.

Fair Use in the Film - Blocked

Under the US Copyright Act, fair use in analyzed against four factors: Purpose and character of defendant’s use of the work, the nature of the copyrighted work, the amount and substantiality of the portion of the work used compared to the whole, and the effect of the use on the potential market for the copyrighted work.

Looking at the logo’s original use in the footage rather than the usage of the footage itself in the highlight reel, the appellate court found that the use was not transformative.  The logo was used to identify the team.  A standard use for a logo.  Additionally, the highlight reel was sold commercially giving the use of the logo a commercial purpose. [When a defendant’s use is transformative or non-commercial, the use is more likely to be deemed a fair use.]

The appellate and district courts agreed with each other on the second fair use factor, finding that the copyrighted work was highly creative. The logo is a drawing of a flying B.  [When a work is very fact-based or only minimally creative, the factor leans in favor of fair use.]

The third fair-use factor is probably the one responsible for misleading 10% guides and other myths that suggest there is a certain set amount of a work one can take without infringing.  In this case, the court did not need to consider any percentages; the entire work was used.  This was a place where the appellate court disagreed with the district court as the district court had compared the logo to the entire video content instead of to itself.  [The less of the work that is used, the more likely there will be a finding of fair use.]

The defense attempted to rely on the absence of damages awarded in the previous lawsuits to show that there was no market for Bouchat’s work, but the court disagreed.  “The licensing of NFL logos for use in the sale of official team merchandise, in exchange for royalties,is exactly the type of potential market that exists for Bouchat’s copyrighted logo.”  [If the use has little to no impact on the potential market, it is more likely to be fair use.]

Having found that all four fair use factors weighed against fair use, the court held that the Ravens were liable for copyright infringement for showing the Bouchat logo in the highlight videos.

Fair Use in Memorabilia – It’s Good

When analyzing fair use in terms of the memorabilia displayed in the lobby, the court came to a different conclusion.

With the video, original footage showing the original use of the logo was deemed not transformative and for commercial purposes.  However, when displaying an original ticket with the logo in a location open to the public free of charge, the court found this use to be both transformative and non-commercial.  “Most important, the use of the logo in a museum-like set-ting "adds something new" to its original purpose as a symbol identifying the Ravens.”

The second factor analysis remains the same as above since the work is still highly creative.  Interestingly enough, although the amount of the work used under the third factor did not change, both the ticket and the video used the whole work, the court found the third factor to be neutral in the lobby display context.  The court decided that using the whole work was justified in relation to transformative nature discussed under the first factor.  (Professor David Franklyn of the University of San Francisco stated at this year’s American Bar Association meeting that the transformative factor has morphed fair use; this use of transformative to justify taking the entire work seems to be a good example of Professor Franklyn’s concern.)

Transformative is brought in again for the fourth factor, with the court stating that transformative uses are less likely to have an effect on the potential market.  The fact that Bouchat presented no evidence to support any market harm didn’t help either.  The court found the fourth factor to be in favor of fair use.

The court held that it was fair use to display the logo on memorabilia in the lobby.

Final Score – not quite

Finding one use as infringing and the other as fair, the court remanded and sent the case back to the district court to decide whether an injunction is appropriate.  After all that, the review from the booth overturned the ruling on the field and it’s back to the game to find out who will win in the end.