You could argue about the merits of the subtitles . . . Or you could just marvel at copyright law’s ability to inspire dorkiness. (H/t Ron Coleman.)
Author Archives: Shourin Sen
Court finds that distribution of sheet music to the U.K. that is made under license in the U.S. is nonifringing
Filed under Distribution Right, Extraterritoriality, Pro-IP Act
Music Sales Limited, et al., v. Charles Dumont & Son, Inc., 09-1443 RMB-JS (D. N.J. 2009)
There was an interesting decision issued in the federal district court in New Jersey that addressed the territorial limitations of the U.S. Copyright Act. The decision also contained a brief discussion of the new portions of 17 U.S.C. 602(a), as recently amended by the Pro-IP Act.
The Plaintiff, the leading distributor of sheet music in Europe, alleged that the Defendant infringed its exclusive right to distribute music in the U.K. by exporting copies across the Atlantic. The Plaintiff was unable to allege that the Defendant infringed its copyright by making copies in the United States because the Defendant had a license to do so. The Court granted the Defendant’s motion to dismiss for lack of subject matter jurisdiction.
Said the Court in regards to the claim that the Defendant infringed the plaintiff’s 106(3) distribution right:
To be clear, the unauthorized distribution of a work in the United Kingdom, by mailing the work from the United States to the United Kingdom, does not constitute infringement under the Copyright Act. Section 106(3) creates a right of distribution in the United States only; any right of distribution that exists in the United Kingdom is a manifestation of British law. Plaintiffs treat the copyright laws of disparate nations as if they comprise a seamless ensemble, with infringement of any one’s law enforceable wherever the act was committed. Of course, this Court’s subject-matter jurisdiction is limited to cases arising under the Copyright Act; it has no power to vindicate violations of British law.
17 U.S.C. 602(a) as amended by the Pro-IP Act
The Pro-IP Act, which was signed into law in October of last year, amended, among other things, Section 602. The Act created a new exclusive right of exportation:
(a) INFRINGING IMPORTATION OR EXPORTATION.
(1) IMPORTATION—Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.
(2) IMPORTATION OR EXPORTATION OF INFRINGING ITEMS.—Importation into the United States or exportation from the United States, without the authority of the owner of copyright under this title, of copies or phonorecords, the making of which either constituted an infringement of copyright, or which would have constituted an infringement of copyright if this title had been applicable, is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under sections 501 and 506.
The Court asked for briefing on whether 602 as amended could create liability for the Defendant. Both parties agreed that it didn’t apply:
Here, there is no allegation that the infringing copies were made in violation of copyright; Plaintiffs allege only that the distribution of the (otherwise lawful) copies infringes upon their license. This position is certainly consistent with a plain reading of the statute, and since Plaintiffs agree that the exportation right does not apply here, the Court need not decide its scope.
NPR targets same-sex marriage campaign with a cease-and-desist and take down
The Portland Press Herald brings word of a brewing copyright dispute. National Public Radio has sent a cease-and-desist to Stand for Marriage Maine over the groups use of NPR content in one of its television adds. NPR, apparently, also sent a takedown notice to Youtube and Hotdaddy.
NPR asserts that Marriage in Maine’s commercial infringes a story “Massachsuetts Schools Grapple with Including Gay & Lesbian Relationships in Sex Education,” from its program All Things Considered. Says NPR’s senior vice president for marketing, communications, and external relations:
NPR did not license use of this story or its content, and would certainly not have licensed or permitted it if we had been asked . . .NPR is a highly respected news organization and does not allow its content to be used by political or advocacy groups. Such use is harmful to the integrity and independence of NPR. NPR does allow – even encourage — personal, non-commercial use of our content, so long as it is not modified, and not used in a manner that suggests NPR promotes or endorses a cause, idea, Web site, product or service. The use made by Stand for Marriage Maine violated all of these terms.
The Copyright Act as a race-notice statute
Filed under Registration, Transfers
Banco Popular de Puerto Rico v. Latin American Music, 2009 WL 3294789 (D. P.R. 2009)
What happens if a party purchases a copyright from a copyright owner, and then the now former copyright owner turns around and sells the copyright again to a third-party? 17 U.S.C. 205 governs these situations and all of their messiness:
As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice under subsection (c), within one month after its execution in the United States or within two months after its execution outside the United States, or at any time before recordation in such manner of the later transfer. Otherwise the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.
This provision essentially makes the Copyright Act a modified race-notice statute. If there are conflicting transfers, the person who first recorded their acquisition with the Copyright Office prevails provided that they were a bona fide purchaser for value, and they had no notice of the previous transfer.
There was a case in the federal district court in Puerto Rico on October 8 that addressed what happens when a person’s notice of transfer to the Copyright Office is defective. UMG acquired a copyright, that was later also assigned to Latin American Music. LAM provided notice of the transfer to the Copyright Office before UMG did, but, perhaps trying to save money on the Copyright Office fees, its notice covered a group of songs, not just one song. UMG cried foul, arguing that the notice was invalid. The Court rejected the argument finding that the Latin American Music’s filing gave it priority, even if it didn’t meet the specificity requirements set forth in 205(c):
Universal also points out that the recorded document in this case lists too many songs for it to conform with the specificity requirements of 17 U.S.C. § 205(c). However, that disposition merely deals with whether or not a recordation document in the Copyright Office may give constructive notice of the facts stated therein. Such disposition is inapposite as to whether or not LAMCO’s transfer takes priority over EMLASA’s, an issue that is governed by 17 U.S.C. § 205(d).
It may be difficult to reconcile the Court’s finding with a plain language reading of Section 205, but the Court’s finding is hardly surprising. The federal courts don’t take kindly to the Copyright Act’s paperwork requirements. This is but one instance forming a broader trend of federal courts looking past paperwork provisions so as to achieve what they see as just decisions.
Monday Copyright Roundup
Filed under Academia, Daily Copyright Roundup, News, Termination
Doug Lichtman has released a new podcast in his IP Colloquium series. The details:
Title: Can Content Survive Online?
Guests: Brad Smith (General Counsel, Microsoft); Scott Martin (Executive Vice President, Paramount Pictures); Dan Cooper (Vice President of Business & Legal Affairs, MySpace).
Description: The music, publishing and motion picture industries are each today struggling to identify new business models that might replace existing mechanisms for funding professional content. In this edition of the Intellectual Property Colloquium, we consider the legal and strategic roadblocks that might be standing in the way. Guests include: Brad Smith, General Counsel, Microsoft; Scott Martin, Executive Vice President, Intellectual Property, Paramount Pictures; and Dan Cooper, Vice President, Legal & Business Affairs, MySpace. UCLA law professor Doug Lichtman hosts.
O‘Melveny and Myers attorneys Christopher Murray and Paul Iannicelli have posted an article at Mondaq and their firm’s website on how the Copyright Act’s termination provisions may impact I.P. transactions. A snipit:
Although [Sections 203 and 304 of the] Copyright Act seem reasonably clear on their face, it is often the case that in actual application they can become quite complicated. As the judge in the Siegel case noted, “The 1976 Copyright Act contains many intricate formalities that an author (or his or her heirs) must navigate to successfully terminate” a grant. As one example, both Sections 203 and 304 provide that a grant can be terminated when the statutory right ripens “notwithstanding any agreement to the contrary,” in order to prevent an unsuspecting author, or one with little leverage, from waiving the right at the time of the grant or before its value can accurately be measured. But what if the author or his heirs have subsequently entered into an agreement with the grantee after the work has been exploited, in a manner that takes into account the demonstrated value of the work? Should those be considered “agreements to the contrary” that have no bearing on the validity of the termination right? Or should they be upheld as waiving the termination right, on the basis that they have effectively fulfilled the public policy of providing the author or his heirs the chance to re-negotiate from a position of knowledge and possibly strength?
Robin S. Lee, an Assistant Professor of Economics at the Stern School of Business, New York University, and Tim Wu, Professor of Law at Columbia University Law School have posted a new article at SSRN titled Subsidizing Creativity Through Network Design: Zero Pricing and Net Neutrality. The abstract:
Today, through historical practice, there exists a de facto ban on termination fees – also referred to as a “zero-price” rule (Hemphill, 2008) – which forbids an Internet service provider from charging an additional fee to a content provider who wishes to reach that ISP’s customers. The question is whether this zero-pricing structure should be preserved, or whether carriers should be allowed to charge termination fees and engage in other practices that have the effect of requiring payment to reach users. This paper begins with a defense of the de facto zero-price rule currently in existence. We point out that the Internet, as an intermediary between users and content providers, exhibits pricing dynamics similar to other intermediaries in “two-sided markets.” In particular, we posit that the Internet’s absence of payments from content creators to users’ ISPs facilitates the entry of content creators. In that respect, the rule provides an alternative implementation of the policy goals provided by the intellectual property system and achieves functions similar to copyright and patent law. The rule also helps avoid the problems of Internet fragmentation, in which content providers who do not reach agreements with ISPs cannot access all customers, and consumers on a single ISP are foreclosed from processing their content.
Copy shop liable for direct infringement from student on-premises copying of course packets
Blackwell Publishing Group, Inc. v. Excel Research Group, LLC 07-12731 (E.D. Mich. 2009).
The Eastern District of Michigan issued a decision on Wednesday that is sure to be controversial. A group of publishers brought suit alleging that a copy shop had infringed thirty-three of their works. The copy shop had accepted course packets from professors; ensured that the course packets were in proper form to be copied; given the packets to students upon request; and provided copy machines for the students to copy the packets.
The twist
If you were looking at this case from afar, you’d probably expect the Court to find the copy shop was secondarily liable for infringing copies made by the students. Instead the Court found the copy shop directly liable for infringement of the publishers 106(1) right to make reproductions and 106(3) right to distribute. Why?
For four of the thirty-three allegedly infringed works the students were arguably authorized to make copies. The university the students attended had entered into licensing agreements with the publishers that allowed “student copying.” So for at least some of the works, the Court ostensibly believed it had to find that the copy shop directly infringed the publisher’s works to find the copy shop liable.
The Court may have also felt that it could not find the students directly liable for the remaining twenty-nine works under a fair use evaluation. There can be no secondary liability without direct liability. The copy shop, then, couldn’t be liable without a finding that the students directly infringed the works. I’m not convinced that the outcome of a fair use evaluation, regardless of the outcome, should change in this circumstance if it is being conducted from the point of view of the students or the copy shop, but reasonable minds can reach a contrary conclusion.
106(1) right to reproduce the copyrighted work
In a section labeled “Direct Infringers” the Court wrote the following:
Excel next argues that because it is the students who do the copying, they are the purported infringers and therefore the publishers cannot establish that Excel is an infringer. While “[t]he Copyright Act does not expressly render anyone liable for infringement committed by another,” Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 434 (1984), Excel’s argument ignores the circumstances of the copying.
First, although students press the start button and make a copy of the coursepack, Excel is the source of the reproduction. Excel controls the entire copying process. It retains the “master,” maintains its quality, gives it to a student to copy, and accepts payment. Excel also owns and supplies all of the elements of reproduction – the venue, the copy machines, the paper, and the utilities. Excel staff members are available to assist students in the copying process and also provide binding services if requested. This scenario is vastly different from a student, who happens to obtain a coursepack from a friend or other third party and comes into Excel’s premises and makes a copy. Under this scenario, whether Excel would be liable is a different question. Here, however, it is clear that this is not mere student copying.
From this paragraph and context provided by the rest of the decision we can deduce that the Court found that the copy shop was directly liable for the student copying — that the copy shop was actually making the copies, not the students. (When the Court conducted its fair use evaluation, it considered the direct infringement by the copy shop and not by the students.)
This creates a groundbreaking and potentially troublesome extension of direct liability. It should be noted that the publisher’s amended complaint primarily asserts infringement claims under secondary liability. There is only one boilerplate sentence that mentions directly liability.
Direct liability verses secondary Liability
Edit: Peter Hirtle raises interesting questions about this case at the LibraryLaw Blog. He points to a provision in the Copyright Act, 17 U.S.C. 108(f), that I should paid more attention to before posting. 108(f) shields libraries from liability stemming from the “unsupervised use of reproducing equipment located on [their] premises,” provided that they post a warning on their duplication machines stating that an individual may be personally liable for using the machine to make infringing copies. I’ve changed this paragraph to reflect the provision. Mr. Hurtle questions whether this decision eliminates the safe harbor for libraries under 108(f):
It is common for libraries to receive from a faculty member a copy of a course pack and place it on reserve (much as faculty members provided copies of their course packs to Excel). If a student then borrowed that course pack and copied it on a library photocopy machine, would the library be liable? Section 108(f) of the Copyright Act protects libraries from charges of contributory infringement for copying done by patrons on library equipment, but could this decision be extended to suggest that libraries, just like Excel, have direct, not contributory, liability for infringing copies made by students? If so, the “safe harbor” of 108(f) would evaporate.
I think this analysis is spot on. The Court in Blackwell found that when an entity “retains the ‘master,’ maintains its quality, gives it to a student to copy, and accepts payment,” it is the party making duplications; not a third-party, be it supervised or unsupervised. 108(f) is drafted in broad terms and doesn’t explicitly just provide a shield against secondary liability. But I think that it is possible to make a strong argument that Blackwell has essentially eliminated the 108(f) safe harbor.
106(3) right to distribute copies
The Court also found that the copy shop directly infringed the publisher’s 106(3) distribution right by “renting” their copy of the course packets to the students, even though the students never left the copy shop’s premises. This actually presents a more interesting issue than may appear at first blush. 17 U.S.C. 106(3) grants a copyright owner the exclusive right 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.” The Copyright Act, however, does not define “distribute.”
William Patry contends that the operative language in 106(3) is “distribute copies . . . to the public” not “sale or other transfer of ownership, or by rental, lease, or lending.” This makes a difference in the context of selling a house that infringes a copyright owner’s architectural work. If “distribute copies . . . to the public” is the operative language, invoking some kind of motion, then a sale of house, which is merely a change of title, would not be considered an infringing act.
Would the copy shop’s on-site supply of the course packets be considered a distribution under Patry’s reading of 106(3)? For that matter, is Patry’s proposed definition of 106(3) viable in all contexts?
(h/t Mary Minow at Fairly Used Blog)
Court finds that putting photos on the internet doesn’t make them U.S. works
Filed under Jurisdiction, Publication, Registration
Moberg v. 33T LLC, 2009 WL 3182606 (D. Del. 2009)
There was a relatively important decision issued in the federal District of Delaware last week that addressed whether posting unpublished photos on the internet made them U.S. works. The Plaintiff was a Swedish photographer who put up a series of photos on a German art gallery’s website. The Defendant ran a site that offered customizable website designs for sale. According to the complaint, at some point in December 2007, the Defendant used some of the Plaintiff’s photos as stock images in some of its web designs. The Plaintiff sent the Defendant a cease-and-desist, and when it was partially ignored, it filed suit alleging copyright infringement and violation of the DMCA.
The fireworks
The Defendant moved to dismiss the copyright claim on the grounds that the Court didn’t have subject matter jurisdiction. The omnipresent, omnipotent Section 411(a) of the Copyright Act states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 411(a) essentially creates a two-tiered structure, requiring that copyright owners of U.S. works must register their works prior to bringing suit; but allowing copyright owners of foreign works to bring suit without registration.
The Plaintiff had brought suit sans registration on the theory that its works were not United States works since they were first published on a German website. The Defendant argued that the Plaintiff’s photos were United States works:
Defendants contend that plaintiff’s photographs, which were created undisputably outside the United States, are United States works because when they were posted on a German website, they were “published” simultaneously in Germany and in the United States. 17 U.S.C. § 101 (“[A] work is a ‘United States work’ only if-(1) in the case of a published work, the work is first published-… (B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States.” FN7). Defendants argue that it is “well settled that Internet publications are published everywhere simultaneously, regardless of the location of the server hosting the website.” (Def. Br. at 7.) Therefore, because the posting of a photograph on a website simultaneously “publishes” the photograph “everywhere,” including the United States, it is a “United States work,” and as such, it must be registered prior to filing suit for infringement.
I’m aware of only one previous case where a court considered whether distributing a work on the internet constituted a publication, Getaped.com, Inc., v. Cangemi. In the case the S.D.N.Y. found that posting a website on the internet constituted a publication. Getaped may be of limited precidential value because the court seemed to use the concepts of distribution and publication interchangeably.
Back to Moberg: The Court rejected the easier out (a finding that the Plaintiff’s distribution didn’t constitute a publication) and instead found that treating the photos as United States works, and not foreign works, would “pervert” U.S. copyright law and “would be contrary to the Berne Convention.” The Court, thus, found that regardless of whether posting a work on the internet constitutes a publication, if a foreign author puts a work up on a foreign website, it’s not a publication in the United States.
The Court first stated that it would be contrary to the purpose of the Berne Convention to hold that publishing a work on the internet “automatically, instantaneously, and simultaneously causes that work to be published everywhere in the world.”:
“The overarching purpose of the Berne Convention is to provide protection to authors whose works will be published in many countries.” Christopher Sprigman, Reform(aliz)ing Copyright, 57 Stan. L.Rev. 485, 544 (2004). “Berne’s proscription of mandatory formalities is a rational response to the difficulty of complying (and maintaining compliance) with differently administered formalities that may have been, absent the Convention, imposed in dozens of national systems, some with registries, some without, and none of which shares information.” Id. (explaining that “[e]vidence for this view can be found in the origins of the Berne Convention”). Thus, if the publishing of plaintiff’s photographs on the German website simultaneously caused them to be published in the United States, and such publication transformed the work into a United States work, plaintiff would be subjected to the very formalities that the Berne Convention eschews. To hold otherwise would require an artist to survey all the copyright laws throughout the world, determine what requirements exist as preconditions to suits in those countries should one of its citizens infringe on the artist’s rights, and comply with those formalities, all prior to posting any copyrighted image on the Internet.
Next the Court noted that if posting a work on the internet made a work a United States work, American citizens could infringe foreign works without fear of retribution:
While not all Americans would exploit such an advantage, the misappropriation of intellectual property remains a significant problem and there is no principled reason why domestic users should be able to act with such impunity.
Finally, the Court found that such a finding would be contrary to the policy underlying U.S. copyright law:
Third, the United States copyright laws, in accord with the Berne Convention, provide for protection of foreign works in the United States without requiring the artists to undertake any formalities in the United States. See 17 U.S.C. § 408(a) (2000) (“[R]egistration is not a condition of copyright protection.”); Kuklachev v. Gelfman, 600 F.Supp.2d 437, 473 (E.D.N.Y.2009) (citing Muchnick v. Thomson Corp., 509 F.3d 116, 133 (2d Cir.2007)) (“Under the clear language of the statute, which refers only to ‘any United States work,’ foreign works originating in countries party to the Berne Convention need not comply with § 411.”); Cotter, supra, at 1743-44, (explaining that “U.S. copyright subsists in unpublished works … from the moment of creation, wherever those works happen to be created. Upon publication, … U.S. copyright continues to subsist in the work … if, “on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or sovereign authority of a treaty party, or is a stateless person, wherever that person may be domiciled”). The adoption of defendants’ point of view would be contrary to that law.
Notes:
The proposition that all works become U.S. works under the Copyright Act if they are first published on the internet is somewhat strange, but the outcome created by such a reading is hardly onerous. Expedited “special handling” of copyright registration takes at most two weeks and is the same cost as regular registration if litigation is looming, under the new regulations established by the Copyright Office.
Samuelson and Sheffner on Due Process challenges to peer-to-peer statutory damages awards under Gore
PENNumbra, the University of Pennsylvania Law Review’s ezine, has published a point-counterpoint by Pamela Samuelson and Ben Sheffner on whether the recent peer-to-peer statutory damages awards violate the Due Process clause of the Constitution, as interpreted in BMW v. Gore. Readers here may recognize Pamela Samuelson from her article with Tara Wheatland, Statutory Damages in Copyright Law: A Remedy in Need of Reform, and Ben Sheffner from his blog Copyrights and Campaigns.
I’d be remiss if I didn’t mention the form of the essays: Both run under two thousand words and remind me of some of the delightfully short writings found in some European IP journals. PENNumbra is a forum that, in this case, offers a nice middle-ground between full length journal essay and blog post.
Some clips from the series:
Samuelson said:
The only plausible explanation for the outlandishly large jury awards against Thomas-Rasset and Tenenbaum was the jury’s desire to punish them for the sins of all file sharers at the direct or indirect urging of the recording industry plaintiffs. See Pamela Samuelson & Tara Wheatland, Statutory Damages in Copyright Law: A Remedy in Need of Reform, 51 Wm. & Mary L. Rev. (forthcoming 2009) (manuscript pt. I-B), available at http://ssrn.com/abstract=1375604 (explaining that courts and commentators are increasingly recognizing that statutory damage awards, especially at the high end of the range, are punitive in intent and punitive in effect). Under the Supreme Court’s due process jurisprudence, juries seem to be punishing these individuals for the acts of millions of other file sharers who are “strangers to the litigation” on behalf of copyright owners who are also “strangers to the litigation” as to copyrighted works that are not before the court. Williams, 127 S. Ct. at 1063 (“[T]he Constitution’s Due Process Clause forbids a State to use a punitive damages award to punish a defendant for injury that it inflicts upon nonparties or those whom they directly represent, i.e., injury that it inflicts upon those who are, essentially, strangers to the litigation.”). Because there are insufficient constraints on jury awards of statutory damages, courts should draw upon the Court’s due process jurisprudence by reducing grossly excessive statutory damage awards in peer-to-peer music file-sharing cases either to the $750 minimum, which seems to have become the norm in the reported cases, or to something much closer to the minimum. See, e.g., Cooper Indus. v. Leatherman Tool Group, Inc., 532 U.S. 424 (2001) (directing de novo review of excessive jury awards).
Sheffner said:
. . . Gore guideposts two and three don’t work at all with copyright statutory damages. In many copyright cases (Thomas-Rasset and Tenenbaum included), it is impossible to compare actual to statutory damages because, as noted above, it is difficult or impossible to measure actual damages. Indeed, statutory damages exist in part to relieve copyright owners of the burden of proving up actual damages where, as a practical matter, they cannot. See F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, 231 (1952). And it makes no sense to speak of comparing the actual damages with “the civil or criminal penalties that could be imposed for comparable misconduct,” Gore, 517 U.S. at 583; statutory damages are the “civil… penalties” that Congress has chosen to impose on copyright infringers. If we’re going to debate the constitutionality of statutory damages, we’re going to have to do so under the much more deferential standard set forth in St. Louis, Iron Mountain & Southern Railway v. Williams, 251 U.S. 63 (1919)—under which, as far as I am aware, no award has ever been invalidated.
Reasonable people can disagree over the proper amount of statutory damages for individual non-profit infringers like Thomas-Rasset and Tenenbaum. I, for one, would likely be willing to trade a significantly lower range of available damages for a cheap and streamlined process for adjudicating such cases. See, e.g., Mark Lemley & R. Anthony Reese, Reducing Digital Copyright Infringement Without Restricting Innovation, 56 Stan. L. Rev. 1345 (2004) (“Another way to reduce the cost of enforcement is to create some sort of quick, cheap dispute resolution system that enables copyright owners to get some limited relief against abusers of peer-to-peer systems….”). But these are essentially legislative choices.
Friday fun: IP questions from the Philippines Bar Exam
Filed under Meta
One of the disappointments for U.S. law students who specialize in intellectual property is that there isn’t room on the bar exam for copyright or trademark questions; what with the need to cover 19th Century criminal and property law. This is apparently not the case in the Philippines. LAWPHiL has posted the questions from the Mercantile Law September 2009 Bar Exam, which featured a couple of fun IP questions.
You’re more than welcome to answer the questions in the comments. The winner will be openly ridiculed. The decision of the judges is final.
I
TRUE or FALSE. Answer TRUE if the statement is true, or FALSE if the statement is false. Explain your answer in not more than two (2) sentences. (5%)
- The Denicola Test in intellectual property law states that if design elements of an article reflect a merger of aesthetic and functional considerations, the artistic aspects of the work cannot be conceptually separable from the utilitarian aspects; thus, the article cannot be copyrighted.
XV
After disposing of his last opponent in only two rounds in Las Vegas, the renowned Filipino boxer Sonny Bachao arrived at the Ninoy Aquino International Airport met by thousands of hero-worshipping fans and hundreds of media photographers. The following day, a colored photograph of Sonny wearing a black polo shirt embroidered with the 2-inch Lacoste crocodile logo appeared on the front page of every Philippine newspaper.
Lacoste International, the French firm that manufactures Lacoste apparel and owns the Lacoste trademark, decided to cash in on the universal popularity of the boxing icon. It reprinted the photographs, with the permission of the newspaper publishers, and went on a world-wide blitz of print commercials in which Sonny is shown wearing a Lacoste shirt alongside the phrase “Sonny Bachao just loves Lacoste.”
When Sonny sees the Lacoste advertisements, he hires you as lawyer and asks you to sue Lacoste International before a Philippine court:
- For trademark infringement in the Philippines because Lacoste International used his image without his permission; (2%)
- For copyright infringement because of the unauthorized use of the published photographs; (2%) and
- For injunction in order to stop Lacoste International from featuring him in their commercials. (2%)
- Can Lacoste International validly invoke the defense that it is not a Philippine company and, therefore, Philippine courts have no jurisdiction? Explain. (2%)
Will these actions prosper? Explain.
Supreme Court hears oral arguments in Reed Elsevier
Filed under Jurisdiction, Supreme Court
Reed Elsevier v. Muchnick, Oral Arguments (Oct. 7, 2009).
The Supreme Court heard oral arguments in Read Elsevier v. Muchnick yesterday. There were some questions, by Chief Justice Roberts in particular, on the overall merits of whether 411(a) is a jurisdictional requirement or merely a case processing rule. But a large portion of the arguments, if not the lion’s share, centered on the more narrow question of whether to frame 411(a) as a strict rule (which courts could raise sua sponte, and could not be waived by a defendant), or a common defense (which courts cannot raise sua sponte, and which could be waived by litigants).
Justice Ginsberg played a large role in the questioning to the extent that I would be somewhat surprised if she isn’t the author of the opinion. Many of Justice Ginsburg’s questions seemed to probe particulars on how to frame a decision, and not the broad questions of the dispute. As a side note, Justice Sotomayor, who was as an intellectual property practitioner before being appointed to the Southern District of New York, did not ask a question during the arguments. [Edit: SCOTUSBLOG brings word that Justice Sotomayor recused herself from the appeal. Justice Sotomayor presided over N.Y. Times v. Tasini, the dispute underlying Reed Elseveier v. Muchnick, when it was heard in the S.D.N.Y.]
Justice Ginsburg early on raised questions about the advantages and disadvantages of a hard-line case processing rule:
JUSTICE GINSBURG: Do you agree with the –with the government that it’s mandatory for the district court but prohibited to the court of appeals? The government has this hybrid where, because of the public purposes served by registration, not only can but the district court should raise the failure to register on its own, but then the government says once you have a final judgment in district court, it’s no longer open for the court of appeals to raise it on its own.
Do you agree with that or do you say it’s for the defendants to raise, and if they don’t raise it, too bad?
MR. SIMS [Ed: Mr. Sims represented the petitioner, arguing that 411(a) is a case-processing rule]: Justice Ginsburg, we certainly agree with the government with respect to the court of appeals. With respect to the district court, on the one hand, my clients don’t — are satisfied with the government’s position. On the other hand, as Justice Scalia’s decision, I think, in Day v. McDonough pointed out, the traditional default rule really is that defenses are up to defendants to raise.
But if the Court felt that the provision was important enough so that it wanted to impose on district courts the obligation of strict policing, I think it could. But as I say, I have been practicing copyright law for 25 years; I’ve never seen a defendant who either missed a defense or chose not to raise it.
In this particular kind of situation where there is no reason at all, I think, to suspect that defense counsel will not raise 411 whenever — none of the cases that Ms. Merritt raises for example, involve situations of waiver, where the issues weren’t raised until the court of appeals — I think that the Court can rely, frankly, on defendants and on the ability of district judges to nudge defense counsel when they need nudging.
Justice Ginsberg also pressed the advocate from the Solicitor General’s Office on whether a court should be able to raise registration sua sponte:
Ms. Anders: [411(a)] is not jurisdictional, but it should not be fully waivable. The provision does not speak to the power of the courts to decide cases and therefore it does not limit the court’s jurisdiction to adjudicate infringement suits.
But, because of this phrase and mandatory language, the requirement should be strictly enforced whenever the defendant asserts it, and because the requirement serves important public interest that are independent of the concerns of the parties to any individual suit –
JUSTICE GINSBURG: So your position is that the district court really should have dismissed this case at the outset?
MS. ANDERS: I think that, in the ordinary case, the district court should — when — when the defendant waives the requirement, which would be the rare case, when the defendant doesn’t assert it. When the defendant waives the requirement, the district court should consider whether accepting that waiver would undermine the public interest behind 411.
Now, in this particular case, it may not have been an abuse of discretion for the district court to consider those interests and decide that here it would have been acceptable to accept the defendant’s waiver and permit the resolution to go forward because, in this case, the periodicals that — that are involved — the works at issue were primarily already in the possession of the Library of Congress, because they had been registered as — the periodicals themselves had been registered.
So the Library’s interest is not as strongly implicated here. In addition, this is a case in which there was going to be settlement, so the Court wasn’t going to need to adjudicate the copyright claims and therefore the opportunity for the register’s views to be taken into account was less important.
More questioning from Justice Ginsburg on the topic:
JUSTICE GINSBURG: You were candid to say that this is in a hybrid category, that the government was taking an intermediate position. Do you know of any other provision where the district court has an obligation to raise the question on its own motion that is yet not jurisdictional?
MS. ANDERS: I believe this Court has recognized that waiver doctrines in general are discretionary, and so, particularly in the area of res judicata, the Court has recognized in the Plaut v. Spendthrift Farm and Arizona v. California that the Court has some discretion to enforce res judicata on its own motion.
JUSTICE GINSBURG: Very, very limited. I think Arizona didn’t say any time there’s — there’s a preclusion plea, the Court can raise it on its own.
MS. ANDERS: That’s correct. I think also the plain error rule presupposes that there are some errors that the district court has a responsibility to correct on its own, even though neither party has brought the error to its attention. So in other words, the district court has the obligation to issue a legal ruling that neither party has asked for, and I think that kind of regime is appropriate here because the public interest at issue, the Library’s interest and the interest in the public record of copyright, those don’t depend on the defendant’s litigation decisions — they shouldn’t depend on the defendant’s particular strategic decisions within a particular case.
Justice Scalia delivered a pithy line, evincing some reticence towards framing 411(a) as a rule that courts could raise sua sponte:
JUSTICE SCALIA: But how — how would we get to hold what — what you say is the law? It seems, to me, once we decide it’s not jurisdictional and once we agree with you, that it doesn’t — at least in this case — didn’t have to be raised sua sponte by the district court.
That’s the end of the case, and so why do we have to engage in the further discussion, well, ordinarily, the district court must raise it on its own and — you know, and, if it doesn’t ordinarily –you know, the appellate court should.
Why do we have to get into that?
MS. ANDERS: I don’t think you have to get into it, Justice Scalia. I think –
JUSTICE SCALIA: Which means we shouldn’t.
(Laughter.)
Justice Ginsburg also raised Perfect 10, inc. v. Amazon.com, inc, 508 F.3d 1146 (9th Cir. 2006), and similar cases, where courts have found that they have jurisdiction to issue an injunction even if a plaintiff has not registered her work:
JUSTICE GINSBURG: Do they — if they are just suing, not for money but for an injunction, do they have to register before bringing an injunction suit?
MS. JONES MERRITT [Ed. Professor Merritt was appointed by the Court to represent the Second Circuit's judgment]: Yes, Your Honor, they do. In order to bring any action — if the injunction is based on infringement. So we’re — if the plaintiff brings an action for infringement and the remedy they seek is an injunction, then the copyright must be registered first.
There are some cases in the lower courts in which we have a plaintiff who has a longstanding pattern of infringements that a particular defendant has been engaged in against that plaintiff. The Owen Mills case is an example. A local photography studio was upset because a photo duplicating shop kept copying their copyrighted photographs. They entered an action for infringement, had registered several of the photographs.
The Court issued an injunction that covered future works as well, but those were all works within the same judicial controversy. So an injunction could reach further than a single registered work as long as we are talking about one single controversy.
In this case we don’t have an injunction, we have damages, and we have thousands of different controversies. As the Court knows the class action rules do not change the substantive law or the rules of — of jurisdiction. We have here thousands of different controversies that have been aggregated for convenience under rule 23(b)(3), but the court must have jurisdiction over each of those controversies. Or if we take the alternative route of Hallstrom, the hybrid approach, and we say that this is a mandatory requirement. Congress has been quite clear about this mandatory requirement, and that mandate must be satisfied with respect to every controversy in this class action.
Recent scholarship from the 
