tag:blogger.com,1999:blog-8942875942600600392024-03-13T10:05:14.165-07:00Arizona Trade Secret and Internet Law Blog<center>Internet law topics for developers, small business, lawyers, programmers, <br>
and the Arizona marketing community.</center>
<br>
<br>
<br>
<br>
<br><center>
<a href="http://www.dlhall.net">
Dennis L. Hall</a>
<br>
<a href="http://www.rcalaw.com/View-user-profile.php?qsln=b&user=336">Fredric D. Bellamy</a></center>Unknownnoreply@blogger.comBlogger54125tag:blogger.com,1999:blog-894287594260060039.post-71597628399933995192012-08-26T16:08:00.000-07:002012-08-26T16:43:40.385-07:00Preempt . . . Preempt . . . Preempt<div style="text-align: justify;">
So, you bring claims for Idea Misappropriation; Unfair Competition; Breach of Oral Contract; Breach of Implied Covenant of Good Faith and Fair Dealing; Negligence; Misappropriation of Trade Secrets; Conversion of Trade Secrets; and Promissory Estoppel. All claims are based on the same set of facts. Any problems?<br />
<br />
The Uniform Trade Secrets Act was designed, by the Commissioners, to “be applied and construed to effectuate its general purpose to make uniform the law with respect to the subject of this Act among states enacting it.” The general purpose has been stated as follows:<br />
<blockquote>
[T]o create a uniform business environment [with] more certain standards for protection of commercially valuable information, and to preserve a single tort action under state law for misappropriation of trade secret as defined in the statute and thus to eliminate other tort causes of action founded on allegations of misappropriation of information. </blockquote>
Other tort causes of action are the issue. One Federal Court judge has explained that finding something other than a trade secret and then applying other tort claims would destroy the general purpose of uniformity.<br />
<blockquote>
If the UTSA’s preemption provision only preempted claims of misappropriation of information that meets the statutory definition of a “trade secret,” the provisions purpose would be undermined. In every instance where a plaintiff could not meet the statutory requirements of the Uniform Act, the court would be forced to re-analyze the claim under the various common law theories. Such a result would undermine the uniformity and clarity that motivated the creation and passage of the Uniform Act.</blockquote>
<a href="http://www.blogger.com/blogger.g?blogID=894287594260060039" name="sp_999_2"></a><a href="http://www.blogger.com/blogger.g?blogID=894287594260060039" name="SDU_2"></a><a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=4637&rs=WLW12.07&tc=-1&rp=%2ffind%2fdefault.wl&findtype=Y&ordoc=2028389431&serialnum=2025834043&vr=2.0&fn=_top&sv=Split&tf=-1&referencepositiontype=S&pbc=95EE5412&referenceposition=1048&utid=3" target="_top">
<i>Firetrace USA, LLC v. Jesclard,</i> 800 F.Supp.2d 1042, 1048–49 (D.Ariz.2010)</a>. So, what does this all mean when I tell you my idea for a wrestling show, and then you do it without me?<br />
<br />
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<a href="https://encrypted-tbn2.google.com/images?q=tbn:ANd9GcS_A2o53ZapEVHsa3HS5kNO9BosADo6e8fX2jqIhFx0NK7NiiFVGA" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" src="https://encrypted-tbn2.google.com/images?q=tbn:ANd9GcS_A2o53ZapEVHsa3HS5kNO9BosADo6e8fX2jqIhFx0NK7NiiFVGA" /></a></div>
<br />
An Indiana Appellate Court say PREEMPT. The Indiana Court followed a famous Hawaii case and found that the majority of jurisdictions applied the USTA's
preemption provision as “abolish[ing] all free-standing alternative causes of
action for theft or misuse of confidential, proprietary, or otherwise
secret information falling short of trade secret status (
<i>e.g.</i> idea misappropriation, information piracy, theft or commercial information, etc.).” HDNET LLC v. North American Boxing Council
2012 WL 3250551, 4 (Ind.App.) (Ind.App.,2012); <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=4645&rs=WLW12.07&tc=-1&rp=%2ffind%2fdefault.wl&findtype=Y&ordoc=2028389431&serialnum=2022565788&vr=2.0&fn=_top&sv=Split&tf=-1&referencepositiontype=S&pbc=95EE5412&referenceposition=319&utid=3" target="_top"><i>BlueEarth Biofuels, LLC v. Hawaiian Elec. Co.,</i> 123 Hawai‘i 314, 235 P.3d 310, 319 (Haw.2010); </a> <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=4637&rs=WLW12.07&tc=-1&rp=%2ffind%2fdefault.wl&findtype=Y&ordoc=2028389431&serialnum=2006901237&vr=2.0&fn=_top&sv=Split&tf=-1&referencepositiontype=S&pbc=95EE5412&referenceposition=655&utid=3" target="_top"><i>Hauck Mfg. v. Astec Indus.,</i> 375 F.Supp.2d 649, 655 (E.D.Tenn.2004)</a>).<br />
<br />
The UTSA is intended to foster uniformity in the definition of state
laws, and a party may not read this design out of the statutory scheme
under the guise of “plain language” or any other rule of construction. </div>
Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-1864179432690367692012-08-19T14:36:00.000-07:002012-08-20T09:01:50.074-07:00Bad Faith: Trade SecretsThe existence of a trade secret and wrongful misappropriation are two important elements of a theft of trade secrets claim. The focus here is on the latter, misappropriation.<br />
<br />
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<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiNNbhwOLWLdESioWlvPOGp1xUnTbERx1wlhbRYfbpzg7cdYjGxPlK6aBX8khBtjYAGX9I0frDNYftrw9QQTshT2jx5tawRW55RuxTTecA7b8HA_zW0iGmqXLXaH3dmDk0PdypWVTDcwOVA/s1600/Screen+Shot+2012-05-30+at+12.53.30+PM.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" height="179" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiNNbhwOLWLdESioWlvPOGp1xUnTbERx1wlhbRYfbpzg7cdYjGxPlK6aBX8khBtjYAGX9I0frDNYftrw9QQTshT2jx5tawRW55RuxTTecA7b8HA_zW0iGmqXLXaH3dmDk0PdypWVTDcwOVA/s320/Screen+Shot+2012-05-30+at+12.53.30+PM.png" width="320" /></a></div>
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<br />
It is tempting for attorneys to bring trade secret claims, but doing so without good evidence of the wrongful act of misappropriation can result in an ugly award of attorneys' fees if you lose. It is becoming more common to assert trade secrets, but doing so without a sound understanding of what is a trade secret and what is a violation of trade secret law can backfire, and the amount of that backfire can be tremendous. Bring a theft of trade secrets claim without proper support can result in an ugly award of attorneys' fees against you a sanction. <br />
<br />
<br />
Misappropriation under UTSA includes acquiring trade secrets through
“improper means” or using trade secrets of another that were obtained
“from or through a person who owed a duty to the person seeking relief
to maintain its secrecy or limit its use....” "Improper means" includes theft, bribery, misrepresentation, <a href="http://www.blogger.com/blogger.g?blogID=894287594260060039" name="citeas((Cite as: 143 Cal.Rptr.3d 828, *834)"></a>breach or
inducement of a breach of a duty to maintain secrecy, or espionage
through electronic or other means. Reverse engineering or independent
derivation alone shall not be considered improper means. <a href="http://www.azleg.gov/FormatDocument.asp?inDoc=/ars/44/00401.htm&Title=44&DocType=ARS">A.R.S. 44-401</a><br />
<br />
In a recent California case, the plaintiff sued defendants based on the
<i>suspicion</i> that they must have misappropriated trade secrets
because the individual defendants left the employ of plaintiff to work for a
competitor, who subsequently took one of plaintiff's clients. The result? Let's look at the attorney fees statute in the trade secret context: <br />
<br />
<span style="color: green;">44-404</span>. <span style="color: purple;"><u>Attorney fees</u></span><br />
The court may award reasonable attorney fees to the prevailing party for any of the
following:<br />
1. A claim of misappropriation made in bad faith.<br />
2. A motion to terminate an injunction made or resisted in bad faith.<br />
3. Willful and malicious misappropriation.<br />
<br />
What is "bad faith?" The California courts have said: “[I]n enacting <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=1000200&rs=WLW12.07&docname=CACIS3426.4&rp=%2ffind%2fdefault.wl&findtype=L&ordoc=2028178878&tc=-1&vr=2.0&fn=_top&sv=Split&tf=-1&pbc=2421FC49&utid=3" target="_top">section 3426.4</a>
the Legislature was concerned with curbing ‘specious' actions for
misappropriation of trade secrets, and such actions may superficially
appear to have merit. We ... conclude that ‘bad faith’ for purposes of
<a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=1000200&rs=WLW12.07&docname=CACIS3426.4&rp=%2ffind%2fdefault.wl&findtype=L&ordoc=2028178878&tc=-1&vr=2.0&fn=_top&sv=Split&tf=-1&pbc=2421FC49&utid=3" target="_top">section 3426.4</a>
requires objective speciousness of the plaintiff's claim, as opposed to
frivolousness, and its subjective bad faith in bringing or maintaining
the claim.” <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=3484&rs=WLW12.07&tc=-1&rp=%2ffind%2fdefault.wl&findtype=Y&ordoc=2028178878&serialnum=2002110220&vr=2.0&fn=_top&sv=Split&tf=-1&pbc=2421FC49&utid=3" target="_top">(
<i>Gemini,</i> at p. 1262, 116 Cal.Rptr.2d 358.)</a><br />
<br />
Now, that does not help much. But this does: simply hiring another's employee and taking a client is not enough to support bringing a claim. The California court says " There is no evidence in the record supporting the claim that defendant
misappropriated SASCO's trade secrets. Defendants were not required
to conclusively prove a negative (i.e., that they did not steal SASCO's
trade secrets). Instead, under the “objectively specious” standard, it
was enough for defendants to point to the absence of evidence of
misappropriation in the record. It was perfectly legitimate for
Rosendin to hire the individual defendants and for the individual
defendants to leave the employ of SASCO in favor of a competitor,
Rosendin. (See <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=4645&rs=WLW12.07&tc=-1&rp=%2ffind%2fdefault.wl&findtype=Y&ordoc=2028178878&serialnum=2004859521&vr=2.0&fn=_top&sv=Split&tf=-1&pbc=2421FC49&utid=3" target="_top">
<i>Reeves v. Hanlon</i> (2004) 33 Cal.4th 1140, 1149, 17 Cal.Rptr.3d 289, 95 P.3d 513.)</a>
Speculation that the individual employees must have taken trade
secrets from SASCO based on their decision to change employers does not
constitute evidence of misappropriation. Nor does speculation that
Rosendin's success in obtaining the Verizon Tustin contract was based on
the theft of trade secrets constitute evidence of misappropriation. <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=227&rs=WLW12.07&tc=-1&rp=%2ffind%2fdefault.wl&findtype=Y&ordoc=2028178878&serialnum=1967111814&vr=2.0&fn=_top&sv=Split&tf=-1&pbc=2421FC49&utid=3" target="_top">(
<i>King v. Pacific Vitamin Corp.</i> (1967) 256 Cal.App.2d 841, 850, 64 Cal.Rptr. 486</a>
[Intent to “take away some of plaintiff's business did not prove their
actions to be wrongful. There is virtue in fair competition in
business even though a competitor is hurt”].)"<br />
<br />
An Indiana case (on Illinoislaw) states this more simply: "The appropriate test “requires the party seeking relief to establish
both that statements in the pleadings were untrue and that they were
made without reasonable cause,” <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=578&rs=WLW12.07&tc=-1&rp=%2ffind%2fdefault.wl&findtype=Y&ordoc=2028302372&serialnum=1985123577&vr=2.0&fn=_top&sv=Split&tf=-1&referencepositiontype=S&pbc=B63C1D77&referenceposition=626&utid=3" target="_top">
<i>Bouhl v. Gross,</i> 133 Ill.App.3d 6, 88 Ill.Dec. 305, 478 N.E.2d 620, 626 (Ill.App.Ct. 4th Dist.1985)</a> (citation omitted) (construing former <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=1000008&rs=WLW12.07&docname=IL735S5%2f2-611&rp=%2ffind%2fdefault.wl&findtype=L&ordoc=2028302372&tc=-1&vr=2.0&fn=_top&sv=Split&tf=-1&pbc=B63C1D77&utid=3" target="_top">735 Ill. Comp. Stat. § 5/2–611</a>), in light of “circumstances existing at the time of the filing,” <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=578&rs=WLW12.07&tc=-1&rp=%2ffind%2fdefault.wl&findtype=Y&ordoc=2028302372&serialnum=1993221912&vr=2.0&fn=_top&sv=Split&tf=-1&referencepositiontype=S&pbc=B63C1D77&referenceposition=430&utid=3" target="_top">
<i>Bennett & Kahnweiler v. American Nat'l Bank & Trust Co.,</i> 256 Ill.App.3d 1002, 194 Ill.Dec. 929, 628 N.E.2d 426, 430 (Ill.App.Ct. 1st Dist.1993)</a> (citation omitted) (construing <a href="http://web2.westlaw.com/find/default.wl?mt=NewLitigator&db=1000008&rs=WLW12.07&docname=ILSTSCTR137&rp=%2ffind%2fdefault.wl&findtype=L&ordoc=2028302372&tc=-1&vr=2.0&fn=_top&sv=Split&tf=-1&pbc=B63C1D77&utid=3" target="_top">Ill. Sup.Ct. R. 137</a>). Loparex, LLC v. MPI Release, LLC
2012 WL 3065428, 4 (S.D.Ind.) (S.D.Ind.,2012).<br />
<br />Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-22305523166642290282011-08-04T09:25:00.001-07:002011-08-28T14:45:57.399-07:00Protect Your Business Work Product: CopyrightUSI MidAtlantic, Inc. suffered a $22.5 million judgment for copyright infringement from competitor. A former employee of the competitor joined MidAtlantic and supplied them with binders of information about insurance products created by his former employer. Most lawyers would look to confidentiality agreements and trade secrets, but Graham, the competitor, had done something even better: they copyrighted the material. When MidAtlantic copied language from the binders into over 800 client proposals, they were found to indirectly infringe the copyrights.Graham recovered profits attributable to USI MidAtlantic's infringement, plus prejudgment interest.<br /><br />The lesson? Copyright can be used to protect business work product. The plaintiff proved lost profits: their task may have been easier if they had promptly registered their copyrights.<br /><br />The big legal issue in the case how far back can copyright damages go? Three years is the statute of limitations. The issue is, though, whether the statute of limitation runs three years from discovery or from when the claim "accrued," e.g. "occurred." Under the injury rule, a claim accrues, and the statute of limitations begins to run, when the plaintiff suffers the injury. If the discovery rule applies, the claim arises when the plaintiff discovers, or with reasonable diligence should have discovered, the injury. The difference: in this case the shorter limit resulted in $2 million in damages, the longer $20 million. <br /><br />The Third Circuit went with the Discovery Rule. "Although we have not previously addressed this issue, eight of our sister courts of appeals have applied the discovery rule to civil actions under the Copyright Act. See Warren Freedenfeld Assocs., Inc. v. McTigue, 531 F.3d 38, 44-46 (1st Cir.2008); Comcast v. Multi-Vision Elecs., Inc., 491 F.3d 938, 944 (8th Cir.2007); Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383, 390 (6th Cir.2007); Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 705-07 (9th Cir.2004); Gaiman v. McFarlane, 360 F.3d 644, 653 (7th Cir.2004); Lyons P'ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 796 (4th Cir.2001); Daboub v. Gibbons, 42 F.3d 285, 291 (5th Cir.1995); Stone v. Williams, 970 F.2d 1043, 1048 (2d Cir.1992)." <br /><br />Defense, it seems, often relies on some shred of hope in some case somewhere. On this issue, it is a New York District Court case that gives copyright defendants hope to limit the limitations to accrual. Auscape Int'l v. Nat'l Geographic Soc'y, 409 F.Supp.2d 235, 247 (S.D.N.Y.2004). And defendants want to broaden a Supreme Court case on FCRA statute of limitations to copyright. TRW Inc. v. Andrews, 534 U.S. 19, 122 S.Ct. 441, 151 L.Ed.2d 339 (2001). That dog, it seems, won't hunt. <br /><br />Here is the Third Circuit case: <a href="http://caselaw.findlaw.com/us-3rd-circuit/1161502.htm"> WILLIAM GRAHAM COMPANY v. HAUGHEY USI </a>Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-71635175838510724822011-08-04T09:25:00.000-07:002011-08-28T14:45:57.400-07:00Protect Your Business Work Product: CopyrightUSI MidAtlantic, Inc. suffered a $22.5 million judgment for copyright infringement from competitor. A former employee of the competitor joined MidAtlantic and supplied them with binders of information about insurance products created by his former employer. Most lawyers would look to confidentiality agreements and trade secrets, but Graham, the competitor, had done something even better: they copyrighted the material. When MidAtlantic copied language from the binders into over 800 client proposals, they were found to indirectly infringe the copyrights.Graham recovered profits attributable to USI MidAtlantic's infringement, plus prejudgment interest.<br /><br />The lesson? Copyright can be used to protect business work product. The plaintiff proved lost profits: their task may have been easier if they had promptly registered their copyrights.<br /><br />The big legal issue in the case how far back can copyright damages go? Three years is the statute of limitations. The issue is, though, whether the statute of limitation runs three years from discovery or from when the claim "accrued," e.g. "occurred." Under the injury rule, a claim accrues, and the statute of limitations begins to run, when the plaintiff suffers the injury. If the discovery rule applies, the claim arises when the plaintiff discovers, or with reasonable diligence should have discovered, the injury. The difference: in this case the shorter limit resulted in $2 million in damages, the longer $20 million. <br /><br />The Third Circuit went with the Discovery Rule. "Although we have not previously addressed this issue, eight of our sister courts of appeals have applied the discovery rule to civil actions under the Copyright Act. See Warren Freedenfeld Assocs., Inc. v. McTigue, 531 F.3d 38, 44-46 (1st Cir.2008); Comcast v. Multi-Vision Elecs., Inc., 491 F.3d 938, 944 (8th Cir.2007); Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383, 390 (6th Cir.2007); Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 705-07 (9th Cir.2004); Gaiman v. McFarlane, 360 F.3d 644, 653 (7th Cir.2004); Lyons P'ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 796 (4th Cir.2001); Daboub v. Gibbons, 42 F.3d 285, 291 (5th Cir.1995); Stone v. Williams, 970 F.2d 1043, 1048 (2d Cir.1992)." <br /><br />Defense, it seems, often relies on some shred of hope in some case somewhere. On this issue, it is a New York District Court case that gives copyright defendants hope to limit the limitations to accrual. Auscape Int'l v. Nat'l Geographic Soc'y, 409 F.Supp.2d 235, 247 (S.D.N.Y.2004). And defendants want to broaden a Supreme Court case on FCRA statute of limitations to copyright. TRW Inc. v. Andrews, 534 U.S. 19, 122 S.Ct. 441, 151 L.Ed.2d 339 (2001). That dog, it seems, won't hunt. <br /><br />Here is the Third Circuit case: <a href="http://caselaw.findlaw.com/us-3rd-circuit/1161502.htm"> WILLIAM GRAHAM COMPANY v. HAUGHEY USI </a>Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-10539048043420099052011-02-07T08:11:00.001-08:002011-08-28T14:45:57.400-07:00CD's? CD's still exist? The law tries to catch up . . .The trouble with technology and the law is that technology moves fast; the law does not. <br /><br />So, finally a ruling on whether promotional music compact discs can be resold without violating copyright. The answer? Yes, because of the first-sale doctrine. UMG Recordings, Inc. v. Augusto, Case No. 08-55998 (9th Cir., Jan. 4, 2011) (Canby, J.). <br /><br />UMG Records distributed promotional CDs. They sent them to critics, radio personnel, and others for promotion. Of course, they claimed the cd was only for those to whom they sent them: acceptance of the cd is a license; not for resale; promotional use only; resale or transfer is not allowed and may be punishable under federal and state laws. Very imposing.<br /><br />I had always wondered, since way back in the day, when a local general manager of a Fort Wayne tv/radio empire gave me a new Iggy Pop album sent to them for promotion, whether I had been the unwitting recipient of a copyright violation or some kind of crime. Cal wasn't worried; but, I never wanted to risk my neck for Iggy Pop. <br /><br />The question is answered. Despite the warning of the Dire Wolf on the recordings sent, unsolicited and for free, we need not beg "don't murder me record company, please don't murder me," although Mr Augusto was dragged to the Ninth Circuit. His sin? Ebay. <br /><br />The district court granted Augusto summary judgment finding his sale on Ebay of Big Bad Record Company's promotional cd's permissible under the first-sale doctrine. Lawfully acquiring title of a copyrighted work gives one the permission to transfer, sell, or dispose of that work without permission from the copyright owner. That's the first sale doctrine (which says the second sale is not a copyright violation). <br /><br />The Supreme Court created the first sale doctrine, which is very simple. Once you buy a car, you can resell it at any price. Why should copyright differ? In Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908), the Supreme Court said it should not. Describing its own case, the Supreme Court explained: "In that case, the publisher, Bobbs-Merrill, had inserted a notice in its books that any retail sale at a price under $1.00 would constitute an infringement of its copyright. The defendants, who owned Macy’s department store, disregarded the notice and sold the books at a lower price without Bobbs-Merrill’s consent. We held that the exclusive statutory right to vend applied only to the first sale of the copyrighted work..."<br /><br />The Big Bad Record Company said its distribution of promotional CDs constituted a license and not a “sale,” pointing to its promotional statements on the CDs. But, the first-sale doctrine applies not only to a sale, but also to any transfer after the copyrighted work being placed in the stream of commerce. And, as any contract law 101 would teach, the free, unsolicited distribution did not create a license. And the commentators had explained that "first sale" really means "first transfer:" Although this statutory limitation is commonly referred to as the first sale doctrine, its protection does not require a "sale." The doctrine applies after the "first authorized disposition by which title passes." 2 Nimmer § 8.12[B][1][a]. This passing of title may occur through a transfer by gift. See 4 William F. Patry, Patry on Copyright § 13:15 ("Since the principle [of the first sale doctrine] applies when copies are given away or are otherwise permanently transferred without the accoutrements of a sale, 'exhaustion' is the better description."); 2 Paul Goldstein, Goldstein on Copyright § 7.6.1 n.4 (3d ed.) ("[A] gift of copies or phonorecords will qualify as a 'first sale' to the same extent as an actual sale for consideration."). <br /><br />Best of all, there is a Unordered Merchandise Statute. Because the discs were unordered merchandise, the recipients were free to “retain, use, discard, or dispose” of them as they saw fit under the Unordered Merchandise Statute." That statute does, indeed, make unordered merchandise a gift. Kudos to the defense lawyers for this research. <br /><br />The 9th Circuit dismissed the infringement claim. I am safe for receiving Iggy Pop. And future lawyers will try to understand what was a cd . . . <br /><br /><a href="http://docs.google.com/viewer?a=v&q=cache:8KJV69uQVAIJ:www.ca9.uscourts.gov/datastore/opinions/2011/01/04/08-55998.pdf+UMG+Recordings,+Inc.+v.+Augusto&hl=en&gl=us&pid=bl&srcid=ADGEESi9i-UV3d6hIEvvu2TwbbC1F_VdD7T5ZmOY4mog0A5eYEGH2P6A8QloaaxXSunEpfwuY2oYhGm_LI-YmuzXq2FmYcV1FERmFbJEErnTzHS-BatqOuzsXKiYQ9_lqSXHg9dlmDAR&sig=AHIEtbRYCYZ9bHic18hl8XEEEwPWp9ZdAg&pli=1"><Case></a>Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-22579880342567821942011-02-07T08:11:00.000-08:002011-08-28T14:45:57.400-07:00CD's? CD's still exist? The law tries to catch up . . .The trouble with technology and the law is that technology moves fast; the law does not. <br /><br />So, finally a ruling on whether promotional music compact discs can be resold without violating copyright. The answer? Yes, because of the first-sale doctrine. UMG Recordings, Inc. v. Augusto, Case No. 08-55998 (9th Cir., Jan. 4, 2011) (Canby, J.). <br /><br />UMG Records distributed promotional CDs. They sent them to critics, radio personnel, and others for promotion. Of course, they claimed the cd was only for those to whom they sent them: acceptance of the cd is a license; not for resale; promotional use only; resale or transfer is not allowed and may be punishable under federal and state laws. Very imposing.<br /><br />I had always wondered, since way back in the day, when a local general manager of a Fort Wayne tv/radio empire gave me a new Iggy Pop album sent to them for promotion, whether I had been the unwitting recipient of a copyright violation or some kind of crime. Cal wasn't worried; but, I never wanted to risk my neck for Iggy Pop. <br /><br />The question is answered. Despite the warning of the Dire Wolf on the recordings sent, unsolicited and for free, we need not beg "don't murder me record company, please don't murder me," although Mr Augusto was dragged to the Ninth Circuit. His sin? Ebay. <br /><br />The district court granted Augusto summary judgment finding his sale on Ebay of Big Bad Record Company's promotional cd's permissible under the first-sale doctrine. Lawfully acquiring title of a copyrighted work gives one the permission to transfer, sell, or dispose of that work without permission from the copyright owner. That's the first sale doctrine (which says the second sale is not a copyright violation). <br /><br />The Supreme Court created the first sale doctrine, which is very simple. Once you buy a car, you can resell it at any price. Why should copyright differ? In Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908), the Supreme Court said it should not. Describing its own case, the Supreme Court explained: "In that case, the publisher, Bobbs-Merrill, had inserted a notice in its books that any retail sale at a price under $1.00 would constitute an infringement of its copyright. The defendants, who owned Macy’s department store, disregarded the notice and sold the books at a lower price without Bobbs-Merrill’s consent. We held that the exclusive statutory right to vend applied only to the first sale of the copyrighted work..."<br /><br />The Big Bad Record Company said its distribution of promotional CDs constituted a license and not a “sale,” pointing to its promotional statements on the CDs. But, the first-sale doctrine applies not only to a sale, but also to any transfer after the copyrighted work being placed in the stream of commerce. And, as any contract law 101 would teach, the free, unsolicited distribution did not create a license. And the commentators had explained that "first sale" really means "first transfer:" Although this statutory limitation is commonly referred to as the first sale doctrine, its protection does not require a "sale." The doctrine applies after the "first authorized disposition by which title passes." 2 Nimmer § 8.12[B][1][a]. This passing of title may occur through a transfer by gift. See 4 William F. Patry, Patry on Copyright § 13:15 ("Since the principle [of the first sale doctrine] applies when copies are given away or are otherwise permanently transferred without the accoutrements of a sale, 'exhaustion' is the better description."); 2 Paul Goldstein, Goldstein on Copyright § 7.6.1 n.4 (3d ed.) ("[A] gift of copies or phonorecords will qualify as a 'first sale' to the same extent as an actual sale for consideration."). <br /><br />Best of all, there is a Unordered Merchandise Statute. Because the discs were unordered merchandise, the recipients were free to “retain, use, discard, or dispose” of them as they saw fit under the Unordered Merchandise Statute." That statute does, indeed, make unordered merchandise a gift. Kudos to the defense lawyers for this research. <br /><br />The 9th Circuit dismissed the infringement claim. I am safe for receiving Iggy Pop. And future lawyers will try to understand what was a cd . . . <br /><br /><a href="http://docs.google.com/viewer?a=v&q=cache:8KJV69uQVAIJ:www.ca9.uscourts.gov/datastore/opinions/2011/01/04/08-55998.pdf+UMG+Recordings,+Inc.+v.+Augusto&hl=en&gl=us&pid=bl&srcid=ADGEESi9i-UV3d6hIEvvu2TwbbC1F_VdD7T5ZmOY4mog0A5eYEGH2P6A8QloaaxXSunEpfwuY2oYhGm_LI-YmuzXq2FmYcV1FERmFbJEErnTzHS-BatqOuzsXKiYQ9_lqSXHg9dlmDAR&sig=AHIEtbRYCYZ9bHic18hl8XEEEwPWp9ZdAg&pli=1"><Case></a>Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-87540187820720447462010-04-05T18:15:00.001-07:002011-08-28T14:45:57.401-07:00Fees . . fees. . . fees . .Section 505 of the Copyright Act provides:<br /><br />In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney's fee to the prevailing party as part of the costs.<br /><br />Seems simple. <br /><br />The court has two tasks in applying §505: first, deciding whether an award of attorney's fees is appropriate and, second, calculating the amount of the award. <br /><br />Simple again. <br /><br />When is an award appropriate? One must be a "prevailing party," meaning that ". . . one has to be awarded some relief by the court. Id. at 603, 121 S.Ct. 1835. The key inquiry is whether some court action has created a “material alteration of the legal relationship of the parties.” Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human Res., 532 U.S. 598, 604, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001). <br /><br />So, once one prevails, the analysis goes on because, even if a plaintiff or defendant "prevails," the Supreme Court in rejected a rule requiring attorneys' fees in copyright infringement cases as a matter of course, instead leaving the question of attorneys fees to the discretion of district courts. Fogerty v. Fantasy, Inc., 510 U.S. 517, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). The Supremes ruled that “attorneys' fees are to be awarded to prevailing parties only as a matter of the court's discretion.”).<br /><br />So, how does a Court determine its discretion? The Ninth Circuit tells the Court to look at factors. Five factors. They are: <br /><br /> (1) the degree of success obtained; <br /> (2) frivolousness; <br /> (3) motivation; <br /> (4) objective unreasonableness (both in the factual and legal arguments in the case); and <br /> (5) the need in particular circumstances to advance considerations of compensation and deterrence.<br /><br />But, remember: the applicable standard depends on the statute, and Section 505 simply authorizes fee awards to the prevailing party.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-49247680191955016032010-04-05T18:15:00.000-07:002011-08-28T14:45:57.401-07:00Fees . . fees. . . fees . .Section 505 of the Copyright Act provides:<br /><br />In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney's fee to the prevailing party as part of the costs.<br /><br />Seems simple. <br /><br />The court has two tasks in applying §505: first, deciding whether an award of attorney's fees is appropriate and, second, calculating the amount of the award. <br /><br />Simple again. <br /><br />When is an award appropriate? One must be a "prevailing party," meaning that ". . . one has to be awarded some relief by the court. Id. at 603, 121 S.Ct. 1835. The key inquiry is whether some court action has created a “material alteration of the legal relationship of the parties.” Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human Res., 532 U.S. 598, 604, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001). <br /><br />So, once one prevails, the analysis goes on because, even if a plaintiff or defendant "prevails," the Supreme Court in rejected a rule requiring attorneys' fees in copyright infringement cases as a matter of course, instead leaving the question of attorneys fees to the discretion of district courts. Fogerty v. Fantasy, Inc., 510 U.S. 517, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). The Supremes ruled that “attorneys' fees are to be awarded to prevailing parties only as a matter of the court's discretion.”).<br /><br />So, how does a Court determine its discretion? The Ninth Circuit tells the Court to look at factors. Five factors. They are: <br /><br /> (1) the degree of success obtained; <br /> (2) frivolousness; <br /> (3) motivation; <br /> (4) objective unreasonableness (both in the factual and legal arguments in the case); and <br /> (5) the need in particular circumstances to advance considerations of compensation and deterrence.<br /><br />But, remember: the applicable standard depends on the statute, and Section 505 simply authorizes fee awards to the prevailing party.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-68385423275464031412009-09-09T09:24:00.001-07:002011-08-28T14:45:57.401-07:00Derivative Works ExceptionHere is a corner of copyright law: the Derivative Works Exception. 17 U.S.C. §203(b)1), the Derivative Works Exception, presents a defense to a claim of infringement. It provides that a derivative work prepared under the terms of a license “may continue to be utilized under the terms of the [license] after its termination.”<br /><br /><img src=http://upload.wikimedia.org/wikipedia/en/0/02/Who%27s.jpg><br /><br />The Supreme Court explained in <i>Mills Music, Inc. v. Snyder</i>, 469 U.S. 153 (1985), that “an entitlement to continue to distribute derivative works under the Derivative Works Exception depends on the terms of the license.” Who's Sorry Now? That is the song which is the subject of the Mills Music case. It's author sold the renewal rights in the song to Mills Music and received an advance and 50% of future revenues on reproductions and a fee on sheet music. The author died, and his estate cancelled the transfer, causing almost all the rights in the copyright to revert to the estate. The exception? Under §304(c)(6)(A), a "derivative work prepared under the authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination." There were many sound recording of "Who's Sorry Now," so the dispute was about who received the continuing royalties from the recordings. The result? Since the recordings had been "prepared under authority of the grant" from the author to petitioner, the terms of the agreement that had been in effect prior to the termination governed the record companies' obligation to pay royalties, and that under those agreements petitioner and respondents were each entitled to a 50 percent share in the net royalty. <br /><br />What about architectural drawings? In a new case, Architettura licensed its site plans for an apartment complex in Fort Worth to the developer. Ultimately, another architect was chosen. Architettura wanted to be paid for its work, but the developer refused. Architettura claimed infringement. It was undisputed that Architettura owned the work and could revoke any licenses, which it did; but, the Court found that if another firm had used their work while developing the site plan, the new work was a derivative work. And the Plaintiff has a "Who's Sorry Now" problem. They argued that the Derivative Works Exception did not apply to a revocable license of limited duration, as here, but should only be applied to a statutory termination, as in Mills. The Court disagreed. <br /><br />The lesson? Beware of derivative works if you license a copyright.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-20787957132062209812009-09-09T09:24:00.000-07:002011-08-28T14:45:57.402-07:00Derivative Works ExceptionHere is a corner of copyright law: the Derivative Works Exception. 17 U.S.C. §203(b)1), the Derivative Works Exception, presents a defense to a claim of infringement. It provides that a derivative work prepared under the terms of a license “may continue to be utilized under the terms of the [license] after its termination.”<br /><br /><img src=http://upload.wikimedia.org/wikipedia/en/0/02/Who%27s.jpg><br /><br />The Supreme Court explained in <i>Mills Music, Inc. v. Snyder</i>, 469 U.S. 153 (1985), that “an entitlement to continue to distribute derivative works under the Derivative Works Exception depends on the terms of the license.” Who's Sorry Now? That is the song which is the subject of the Mills Music case. It's author sold the renewal rights in the song to Mills Music and received an advance and 50% of future revenues on reproductions and a fee on sheet music. The author died, and his estate cancelled the transfer, causing almost all the rights in the copyright to revert to the estate. The exception? Under §304(c)(6)(A), a "derivative work prepared under the authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination." There were many sound recording of "Who's Sorry Now," so the dispute was about who received the continuing royalties from the recordings. The result? Since the recordings had been "prepared under authority of the grant" from the author to petitioner, the terms of the agreement that had been in effect prior to the termination governed the record companies' obligation to pay royalties, and that under those agreements petitioner and respondents were each entitled to a 50 percent share in the net royalty. <br /><br />What about architectural drawings? In a new case, Architettura licensed its site plans for an apartment complex in Fort Worth to the developer. Ultimately, another architect was chosen. Architettura wanted to be paid for its work, but the developer refused. Architettura claimed infringement. It was undisputed that Architettura owned the work and could revoke any licenses, which it did; but, the Court found that if another firm had used their work while developing the site plan, the new work was a derivative work. And the Plaintiff has a "Who's Sorry Now" problem. They argued that the Derivative Works Exception did not apply to a revocable license of limited duration, as here, but should only be applied to a statutory termination, as in Mills. The Court disagreed. <br /><br />The lesson? Beware of derivative works if you license a copyright.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-8090951098019229262009-08-26T09:35:00.001-07:002011-08-28T14:45:57.402-07:00Who Gets Attorneys' Fees in Copyright Case?Failure to register a copyright keeps a copyright plaintiff from obtaining attorneys' fees and statutory damages. One has to register to proceed with litigation; but, registration of a copyright only allows statutory damages and attorneys' fees for infringements occurring after the registration. Section 412 of the Copyright Act provides that registration is a prerequisite for statutory damages and attorneys fees. Statutory damages and attorneys fees are governed by Sections 504 and 505 of the Copyright Act.<br /><br />John Fogerty of Creedence Clearwater Revival helps us on this issue. He penned "Run Through the Jungle," and then sold its rights to Fantasy, Inc. Later, he penned "The Old Man Down the Road," and Fantasy sued, claiming "Old Man" was the same as "Jungle." A jury said Fantasy was wrong, and that they were different songs. Mr Fogerty, of course, requested attorneys' fees. His request was denied because Fantasy's infringement suit was not brought frivolously or in bad faith as required by the Ninth Circuit for an award of attorney's fees to a successful defendant. The Ninth Circuit standard for awarding attorney's fees treated successful plaintiffs and successful defendants differently. Under that standard, commonly termed the "dual" standard, prevailing plaintiffs were generally awarded attorney's fees as a matter of course, while prevailing defendants had to show that the original suit was frivolous or brought in bad faith. <br /><br />In contrast, some other circuits followed the so called "evenhanded" approach in which no distinction was made between prevailing plaintiffs and prevailing defendants. The Court of Appeals for the Third Circuit, for example, had ruled that "we do not require bad faith, nor do we mandate an allowance of fees as a concomitant of prevailing in every case, but we do favor an evenhanded approach." Lieb v. Topstone Industries, Inc., 788 F. 2d 151, 156 (CA3 1986). <br /><br />The Supreme Court took the Fogerty case (Fogerty v. Fantasy, Inc. (92-1750), 510 U.S. 517 (1994)), noting that: "The Copyright Act of 1976, 17 U.S.C. § 505 provides in relevant part that in any copyright infringement action 'the court may . . . award a reasonable attorney's fee to the prevailing party as part of the costs.' The question presented in this case is what standards should inform a court's decision to award attorney's fees to a prevailing defendant in a copyright infringement action--a question that has produced conflicting views in the Courts of Appeals."<br /><br />It is the general rule in this country that unless Congress provides otherwise, parties are to bear their own attorney's fees. Alyeska Pipeline Co. v. Wilderness Society, 421 U.S. 240, 247-262 (1975). The British rule awards fees to the prevailing party. Looking at the statutory language, which uses the term "may," the Supreme Court ruled that the Copyright Statute adopted neither the American or British rule, or the dual approach rule. Instead, the Fogerty court instructs that "Prevailing plaintiffs and prevailing defendants are to be treated alike, but attorney's fees are to be awarded toprevailing parties only as a matter of the court's discretion. "There is no precise rule or formula for making these determinations," but instead equitable discretion should be exercised "in light of the considerations we have identified." Hensley v. Eckerhart, 461 U.S. 424,436-437 (1983)."<br /><br />The best summary? The Supreme Court's footnote: "Some courts following the evenhanded standard have suggested several nonexclusive factors to guide courts' discretion. For example, the Third Circuit has listed several nonexclusive factors that courts should consider in making awards of attorney's fees to any prevailing party. These factors include "frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence." Lieb v. Topstone Industries, Inc., 788 F. 2d 151, 156 (CA3 1986). We agree that such factors may be used to guide courts' discretion, so long as such factors are faithful to the purposes of the Copyright Act and are applied to prevailing plaintiffs and defendants in an evenhanded manner."Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-68426119410229478352009-08-26T09:35:00.000-07:002011-08-28T14:45:57.402-07:00Who Gets Attorneys' Fees in Copyright Case?Failure to register a copyright keeps a copyright plaintiff from obtaining attorneys' fees and statutory damages. One has to register to proceed with litigation; but, registration of a copyright only allows statutory damages and attorneys' fees for infringements occurring after the registration. Section 412 of the Copyright Act provides that registration is a prerequisite for statutory damages and attorneys fees. Statutory damages and attorneys fees are governed by Sections 504 and 505 of the Copyright Act.<br /><br />John Fogerty of Creedence Clearwater Revival helps us on this issue. He penned "Run Through the Jungle," and then sold its rights to Fantasy, Inc. Later, he penned "The Old Man Down the Road," and Fantasy sued, claiming "Old Man" was the same as "Jungle." A jury said Fantasy was wrong, and that they were different songs. Mr Fogerty, of course, requested attorneys' fees. His request was denied because Fantasy's infringement suit was not brought frivolously or in bad faith as required by the Ninth Circuit for an award of attorney's fees to a successful defendant. The Ninth Circuit standard for awarding attorney's fees treated successful plaintiffs and successful defendants differently. Under that standard, commonly termed the "dual" standard, prevailing plaintiffs were generally awarded attorney's fees as a matter of course, while prevailing defendants had to show that the original suit was frivolous or brought in bad faith. <br /><br />In contrast, some other circuits followed the so called "evenhanded" approach in which no distinction was made between prevailing plaintiffs and prevailing defendants. The Court of Appeals for the Third Circuit, for example, had ruled that "we do not require bad faith, nor do we mandate an allowance of fees as a concomitant of prevailing in every case, but we do favor an evenhanded approach." Lieb v. Topstone Industries, Inc., 788 F. 2d 151, 156 (CA3 1986). <br /><br />The Supreme Court took the Fogerty case (Fogerty v. Fantasy, Inc. (92-1750), 510 U.S. 517 (1994)), noting that: "The Copyright Act of 1976, 17 U.S.C. § 505 provides in relevant part that in any copyright infringement action 'the court may . . . award a reasonable attorney's fee to the prevailing party as part of the costs.' The question presented in this case is what standards should inform a court's decision to award attorney's fees to a prevailing defendant in a copyright infringement action--a question that has produced conflicting views in the Courts of Appeals."<br /><br />It is the general rule in this country that unless Congress provides otherwise, parties are to bear their own attorney's fees. Alyeska Pipeline Co. v. Wilderness Society, 421 U.S. 240, 247-262 (1975). The British rule awards fees to the prevailing party. Looking at the statutory language, which uses the term "may," the Supreme Court ruled that the Copyright Statute adopted neither the American or British rule, or the dual approach rule. Instead, the Fogerty court instructs that "Prevailing plaintiffs and prevailing defendants are to be treated alike, but attorney's fees are to be awarded toprevailing parties only as a matter of the court's discretion. "There is no precise rule or formula for making these determinations," but instead equitable discretion should be exercised "in light of the considerations we have identified." Hensley v. Eckerhart, 461 U.S. 424,436-437 (1983)."<br /><br />The best summary? The Supreme Court's footnote: "Some courts following the evenhanded standard have suggested several nonexclusive factors to guide courts' discretion. For example, the Third Circuit has listed several nonexclusive factors that courts should consider in making awards of attorney's fees to any prevailing party. These factors include "frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence." Lieb v. Topstone Industries, Inc., 788 F. 2d 151, 156 (CA3 1986). We agree that such factors may be used to guide courts' discretion, so long as such factors are faithful to the purposes of the Copyright Act and are applied to prevailing plaintiffs and defendants in an evenhanded manner."Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-40000201800145699652009-02-27T07:18:00.001-08:002011-08-28T14:45:57.403-07:00Obama . . . Poster from Picture . . . . Fair Use?It was a simple photojournalism picture, taken by an AP stringer, when a Los Angeles artist, Shephard Farley, found the image on the web and used it to produce his rendering as a poster:<br /><br /><img src=http://www.concurringopinions.com/archives/images/obama-image.jpg>. The poster has become ubiquitous, and the photo owners (there is a dispute there too about ownership) are now claiming infringement. <br /><br />This is a great case to think about fair use. If you emphasize the copyright owner's property rights, then you can emphasize the first three factors of the four factor test and rule against fair use. If you emphasize creativity and development of art, then you can emphasize the last factor, through the Posner analysis, and find for fair use. <br /><br />As you probably know, there are four factors which you look at when determining whether or not something qualifies as a "fair use":<br /> (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;<br /> (2) the nature of the copyrighted work;<br /> (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and<br /> (4) the effect of the use upon the potential market for or value of the copyrighted work.<br /><br />Justice Souter, in <i>Campbell v. Acuff-Rose Music</i> (the case dealing with 2 Live Crew's parody of Pretty Woman) weighs in on the purpose of copyright protection:<blockquote>The first factor in a fair use enquiry is "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." § 107(1). This factor draws on Justice Story's formulation, "the nature and objects of the selections made." Folsom v. Marsh, 9 F. Cas., at 348. The enquiry here may be guided by the examples given in the preamble to § 107, looking to whether the use is for criticism, or comment, or news reporting, and the like, see § 107. The central purpose of this investigation is to see, in Justice Story's words, whether the new workmerely "supersede[s] the objects" of the original creation, Folsom v. Marsh, supra, at 348; accord, Harper & Row, supra, at 562 ("supplanting" the original), or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is "transformative." Leval 1111. Although such transformative use is not absolutely necessary for a finding of fair use, Sony, supra, at 455, n. 40, [n.11] the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright, see, e. g., Sony, supra, at 478-480 (Blackmun, J., dissenting), and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.</blockquote>In contrast, Judge Posner has viewed fair use from an economic perspective. Judge Posner suggests, in <I>Ty v. Publications, 292 F.3d 512,</I> that:<blockquote>Generalizing from this example in economic terminology that has become orthodox in fair-use case law, we may say that copying that is complementary to the copyrighted work (in the sense that nails are complements of hammers) is fair use, but copying that is a substitute for the copyrighted work (in the sense that nails are substitutes for pegs or screws), or for derivative works from the copyrighted work, see 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.05[B][1], p. 13-193 (2002), is not fair use.</blockquote>He then goes on to trash the statutory test (and the Campbell formulation) by saying:<blockquote>We have thus far discussed the application of the fair-use doctrine in terms of the purpose of the doctrine rather than its statutory definition, which though extensive is not illuminating.</blockquote>I find the Posner approach more convincing. Here, the photo's value was small but for the poster. These are complements, and allowing this transformation benefits both parties and society.Unknownnoreply@blogger.com1tag:blogger.com,1999:blog-894287594260060039.post-14796976927187976502009-02-27T07:18:00.000-08:002011-08-28T14:45:57.403-07:00Obama . . . Poster from Picture . . . . Fair Use?It was a simple photojournalism picture, taken by an AP stringer, when a Los Angeles artist, Shephard Farley, found the image on the web and used it to produce his rendering as a poster:<br /><br /><img src=http://www.concurringopinions.com/archives/images/obama-image.jpg>. The poster has become ubiquitous, and the photo owners (there is a dispute there too about ownership) are now claiming infringement. <br /><br />This is a great case to think about fair use. If you emphasize the copyright owner's property rights, then you can emphasize the first three factors of the four factor test and rule against fair use. If you emphasize creativity and development of art, then you can emphasize the last factor, through the Posner analysis, and find for fair use. <br /><br />As you probably know, there are four factors which you look at when determining whether or not something qualifies as a "fair use":<br /> (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;<br /> (2) the nature of the copyrighted work;<br /> (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and<br /> (4) the effect of the use upon the potential market for or value of the copyrighted work.<br /><br />Justice Souter, in <i>Campbell v. Acuff-Rose Music</i> (the case dealing with 2 Live Crew's parody of Pretty Woman) weighs in on the purpose of copyright protection:<blockquote>The first factor in a fair use enquiry is "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." § 107(1). This factor draws on Justice Story's formulation, "the nature and objects of the selections made." Folsom v. Marsh, 9 F. Cas., at 348. The enquiry here may be guided by the examples given in the preamble to § 107, looking to whether the use is for criticism, or comment, or news reporting, and the like, see § 107. The central purpose of this investigation is to see, in Justice Story's words, whether the new workmerely "supersede[s] the objects" of the original creation, Folsom v. Marsh, supra, at 348; accord, Harper & Row, supra, at 562 ("supplanting" the original), or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is "transformative." Leval 1111. Although such transformative use is not absolutely necessary for a finding of fair use, Sony, supra, at 455, n. 40, [n.11] the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright, see, e. g., Sony, supra, at 478-480 (Blackmun, J., dissenting), and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.</blockquote>In contrast, Judge Posner has viewed fair use from an economic perspective. Judge Posner suggests, in <I>Ty v. Publications, 292 F.3d 512,</I> that:<blockquote>Generalizing from this example in economic terminology that has become orthodox in fair-use case law, we may say that copying that is complementary to the copyrighted work (in the sense that nails are complements of hammers) is fair use, but copying that is a substitute for the copyrighted work (in the sense that nails are substitutes for pegs or screws), or for derivative works from the copyrighted work, see 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.05[B][1], p. 13-193 (2002), is not fair use.</blockquote>He then goes on to trash the statutory test (and the Campbell formulation) by saying:<blockquote>We have thus far discussed the application of the fair-use doctrine in terms of the purpose of the doctrine rather than its statutory definition, which though extensive is not illuminating.</blockquote>I find the Posner approach more convincing. Here, the photo's value was small but for the poster. These are complements, and allowing this transformation benefits both parties and society.Unknownnoreply@blogger.com1tag:blogger.com,1999:blog-894287594260060039.post-89596584583063465022009-02-12T09:50:00.001-08:002011-08-28T14:45:57.403-07:00Failure to Register Copyright Before Infringment Cuts Damage OptionsStatutory damages and attorneys’ fees under the Copyright Act are not not available for infringement that commenced before registration -- or after the registration. The rule: register or lose statutory damages if infringement occurs before a registration. Period. <br /><br />In <span style="font-style:italic;">Shade v. Gorman</span>, in the Northern District of California, the Plaintiff conceded that he could not recover statutory damages or fees for any pre-registration infringement. But, he argued that he was entitled to statutory damages and fees for post-registration infringement. Wrong.<br /><br />Relying on the Ninth Circuit’s recent decision <span style="font-style:italic;">Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008)</span>, which held “in order to recover statutory damages, the copyrighted work must have been registered prior to commencement of the infringement, unless the registration is made within three months after first publication of the work,” the District Court rejected the claim for any statutory damages because the alleged infringement began more than three months before plaintiff obtained copyright registration. <br /><br />Register.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-29694572710898352912009-02-12T09:50:00.000-08:002011-08-28T14:45:57.403-07:00Failure to Register Copyright Before Infringment Cuts Damage OptionsStatutory damages and attorneys’ fees under the Copyright Act are not not available for infringement that commenced before registration -- or after the registration. The rule: register or lose statutory damages if infringement occurs before a registration. Period. <br /><br />In <span style="font-style:italic;">Shade v. Gorman</span>, in the Northern District of California, the Plaintiff conceded that he could not recover statutory damages or fees for any pre-registration infringement. But, he argued that he was entitled to statutory damages and fees for post-registration infringement. Wrong.<br /><br />Relying on the Ninth Circuit’s recent decision <span style="font-style:italic;">Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008)</span>, which held “in order to recover statutory damages, the copyrighted work must have been registered prior to commencement of the infringement, unless the registration is made within three months after first publication of the work,” the District Court rejected the claim for any statutory damages because the alleged infringement began more than three months before plaintiff obtained copyright registration. <br /><br />Register.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-91450515400232914652008-10-31T07:45:00.001-07:002011-08-28T14:45:57.404-07:00Protect Software!!!!!!!!! Register Copyrights . . .A prerequisite to bringing suit to enforce a copyright is that the copyrighted work is registered with the U.S. Copyright Office. 17 U.S.C. § 411(a). Let's repeat that: A prerequisite to bringing suit to enforce a copyright is that the copyrighted work is registered with the U.S. Copyright Office. 17 U.S.C. § 411(a).<br /><br />Registering a copyright brings a horde of benefits to the copyright owner, including statutory damages, but the best benefit is attorneys' fees rights in enforcing the copyright. From a litigation perspective, the threat of an award of fees significantly shifts the balance of power to the copyright owner.<br /><br />And the registration of copyrights must include registration of derivative works. "A 'derivative work' is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a 'derivative work'." 17 U.S.C. § 101. "The copyright in a . . . derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material." 17 U.S.C. § 103(b).<br /><br />When software revisions are issued, those revisions are derivative works. The original software should be copyrighted and registered, as should be the revisions. <br /><br />In Dalton-Ross Homes, Inc. v. Williams, 2007 WL 2461892 (D. Ariz. Aug. 29, 2007), the plaintiff sued claiming defendant had infringed a copyright which plaintiff held on architectural floor plans. Plaintiff had registered a copyright for a floor plan known as the “VDM plan” and claimed that a newer floor plan, known as the “Conley plan” was a derivative which was entitled to protection as well. The defendant had admittedly copied the Conley plan in designing a home. The court concluded as follows:<blockquote>The registration requirement in § 411(a) makes no distinction between derivative and original works. Whether a separate registration of a derivative work is a prerequisite to an action for infringement of that derivative work is a question of first impression in this circuit. However, we are persuaded that separate registration of the derivative work is required. See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112, 115 (2d Cir.2003) (“registration of a claim on an original work does not create subject matter jurisdiction with respect to a suit for infringement of the original’s unregistered derivative”); Murray Hill, 264 F.3d at 632 (6th Cir.)(“before an infringement suit can be sustained based on the derivative work,that derivative work must be registered”); Montgomery v. Noga, 168 F.3d 1282, 1292 (11th Cir. 1999); Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir.1997); cf. Litchfield, 736 F.2d at 1357 (“[t]o constitute a violation of section 106(2) the infringing work must incorporate in some form a portion of the copyrighted work”). These multi-circuit authorities,coupled with a plain reading of section 501(b) in conjunction with section 411(a), indicate that in order to file an action for infringement of a derivative work, the plaintiff must first register the copyright of that derivative work.</blockquote><br />Register, register, register. And that applies to originals and derivative works.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-35871051596221299772008-10-31T07:45:00.000-07:002011-08-28T14:45:57.404-07:00Protect Software!!!!!!!!! Register Copyrights . . .A prerequisite to bringing suit to enforce a copyright is that the copyrighted work is registered with the U.S. Copyright Office. 17 U.S.C. § 411(a). Let's repeat that: A prerequisite to bringing suit to enforce a copyright is that the copyrighted work is registered with the U.S. Copyright Office. 17 U.S.C. § 411(a).<br /><br />Registering a copyright brings a horde of benefits to the copyright owner, including statutory damages, but the best benefit is attorneys' fees rights in enforcing the copyright. From a litigation perspective, the threat of an award of fees significantly shifts the balance of power to the copyright owner.<br /><br />And the registration of copyrights must include registration of derivative works. "A 'derivative work' is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a 'derivative work'." 17 U.S.C. § 101. "The copyright in a . . . derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material." 17 U.S.C. § 103(b).<br /><br />When software revisions are issued, those revisions are derivative works. The original software should be copyrighted and registered, as should be the revisions. <br /><br />In Dalton-Ross Homes, Inc. v. Williams, 2007 WL 2461892 (D. Ariz. Aug. 29, 2007), the plaintiff sued claiming defendant had infringed a copyright which plaintiff held on architectural floor plans. Plaintiff had registered a copyright for a floor plan known as the “VDM plan” and claimed that a newer floor plan, known as the “Conley plan” was a derivative which was entitled to protection as well. The defendant had admittedly copied the Conley plan in designing a home. The court concluded as follows:<blockquote>The registration requirement in § 411(a) makes no distinction between derivative and original works. Whether a separate registration of a derivative work is a prerequisite to an action for infringement of that derivative work is a question of first impression in this circuit. However, we are persuaded that separate registration of the derivative work is required. See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112, 115 (2d Cir.2003) (“registration of a claim on an original work does not create subject matter jurisdiction with respect to a suit for infringement of the original’s unregistered derivative”); Murray Hill, 264 F.3d at 632 (6th Cir.)(“before an infringement suit can be sustained based on the derivative work,that derivative work must be registered”); Montgomery v. Noga, 168 F.3d 1282, 1292 (11th Cir. 1999); Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir.1997); cf. Litchfield, 736 F.2d at 1357 (“[t]o constitute a violation of section 106(2) the infringing work must incorporate in some form a portion of the copyrighted work”). These multi-circuit authorities,coupled with a plain reading of section 501(b) in conjunction with section 411(a), indicate that in order to file an action for infringement of a derivative work, the plaintiff must first register the copyright of that derivative work.</blockquote><br />Register, register, register. And that applies to originals and derivative works.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-53065375816672180442008-10-22T11:32:00.001-07:002011-08-28T14:45:57.404-07:00Distribution Required????<span style="font-style: italic;">Hotaling v. Church of Jesus Christ of Latter-Day Saints</span>, 118 F.3d 199 (4th Cir. 1997)holds that a library <span style="font-style: italic;">distributed</span> a work by adding it to the collection and listing it in the catalog, making the work available to the public. And <span style="font-style: italic;">distribution</span> is the key to infringement in the RIAA cases. Other courts are reluctant to follow <span style="font-style: italic;">Hotaling's</span> simplistic formulation, upping the ante in proof that must be offered by the RIAA.<br /><br />In the view of some courts, <span style="font-style: italic;">Harper & Row, Publishers, Inc. v. Nation Enters</span>., 471 U.S. 539 (1985), equates the term “distribute” with “publication”; and the Copyright Act in turn defines publication to include the “offering to distribute copies...to a group of persons for purposes of further distribution.”<br /><br />Listing music files for downloading on a P2P network may not infringe the distribution right. <span style="font-style: italic;">London-Sire Records, Inc. v. Doe</span> 1, 542 F. Supp. 2d 153 (D. Mass. 2008). And in <span style="font-style: italic;">Elektra Entertainment Group, Inc. v. Barker</span>, 551 F. Supp. 2d 234 (S.D.N.Y. 2008), the Court held that “publication” has been given a broad interpretation, but all publications were not necessarily distributions. Merely “making [copyrighted works] available” did not violate the distribution right. Rather, plaintiffs would have to prove defendant “offer[ed] to distribute copies or phonorecords to a group of persons for purposes of further distribution.”<br /><br />In<span style="font-style: italic;"> Atlantic Recording Corp. v. Howell</span>, 554 F. Supp. 2d 976 (D. Ariz. 2008), Judge Wake followed the approach of<span style="font-style: italic;"> London-Sire </span>and<span style="font-style: italic;"> Perfect 10 v. Amazon.com, Inc.</span>, 508 F.3d 1146 (9th Cir. 2007). It deemed that “the great weight of authority that § 106(3) is not violated unless the defendant has actually distributed an unauthorized copy of the work to a member of the public. … Merely making an unauthorized copy of a copyrighted work available to the public does not violate a copyright holder’s exclusive right of distribution.”<br /><br />We're waiting for appellate review on this issue.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-31170250882856184182008-10-22T11:32:00.000-07:002011-08-28T14:45:57.405-07:00Distribution Required????<span style="font-style: italic;">Hotaling v. Church of Jesus Christ of Latter-Day Saints</span>, 118 F.3d 199 (4th Cir. 1997)holds that a library <span style="font-style: italic;">distributed</span> a work by adding it to the collection and listing it in the catalog, making the work available to the public. And <span style="font-style: italic;">distribution</span> is the key to infringement in the RIAA cases. Other courts are reluctant to follow <span style="font-style: italic;">Hotaling's</span> simplistic formulation, upping the ante in proof that must be offered by the RIAA.<br /><br />In the view of some courts, <span style="font-style: italic;">Harper & Row, Publishers, Inc. v. Nation Enters</span>., 471 U.S. 539 (1985), equates the term “distribute” with “publication”; and the Copyright Act in turn defines publication to include the “offering to distribute copies...to a group of persons for purposes of further distribution.”<br /><br />Listing music files for downloading on a P2P network may not infringe the distribution right. <span style="font-style: italic;">London-Sire Records, Inc. v. Doe</span> 1, 542 F. Supp. 2d 153 (D. Mass. 2008). And in <span style="font-style: italic;">Elektra Entertainment Group, Inc. v. Barker</span>, 551 F. Supp. 2d 234 (S.D.N.Y. 2008), the Court held that “publication” has been given a broad interpretation, but all publications were not necessarily distributions. Merely “making [copyrighted works] available” did not violate the distribution right. Rather, plaintiffs would have to prove defendant “offer[ed] to distribute copies or phonorecords to a group of persons for purposes of further distribution.”<br /><br />In<span style="font-style: italic;"> Atlantic Recording Corp. v. Howell</span>, 554 F. Supp. 2d 976 (D. Ariz. 2008), Judge Wake followed the approach of<span style="font-style: italic;"> London-Sire </span>and<span style="font-style: italic;"> Perfect 10 v. Amazon.com, Inc.</span>, 508 F.3d 1146 (9th Cir. 2007). It deemed that “the great weight of authority that § 106(3) is not violated unless the defendant has actually distributed an unauthorized copy of the work to a member of the public. … Merely making an unauthorized copy of a copyrighted work available to the public does not violate a copyright holder’s exclusive right of distribution.”<br /><br />We're waiting for appellate review on this issue.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-39258464250256830022008-08-22T07:35:00.001-07:002011-08-28T14:45:57.405-07:00Cab Old Magazines Can be Digitized Without the Author's Consent?Should magazine publishers be allowed to republish their old works, even in a compilation, in digital form? The 11th Circuit said no; then it said yes. The defendant is the esteemed National Geographic Society. The plaintiff a poor photographer. Who has the rights to reproduce the photographer's work originally published in the National Geographic magazine? <br /><br />Section 201(c) of the Copyright Act (dealing with ownership of contributions to collective works), which provides as follows:<blockquote>Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series."</blockquote>Well, that sounds like the deck is stacked in favor of the photographer, does it not? Section 201(c) was a big change in 1976: Prior to 1976, whenever freelance authors contributed to a collective work, they risked losing their copyright in their individual works absent a printed copyright notice in the author’s name. The presumption now is that the author retains the rights to copyright when his or her work in included in a collective work. <br /><br />But, in the absence of the author expressly allowing future use, the publisher can still claim that the future work was a "later collective work in the same series." And that is what National Geographic asserted about its digital collection. What is the same and what is "new?"<br /><br />The Supreme Court in the NY Times Photographer case, Tasini, held that the New York Times went beyond the Section 201(c) privilege by compiling the text of all its articles in a searchable online database. That database allowed users to view the individual articles out of context from the other material originally compiled and published as part of the daily newspapers. It ruled that the database constituted a new use rather than a republication or revision of the collective work and, hence, infringed the copyrights of the authors of the individual contributions.<br /><br />What about the National Geographic digital use. National Geographic reproduced all of the contents of all of its issues, from the very first to the then most recent, including all of the articles and photographs, and even including the original ads, just as they appeared to readers in print form. So, "new" did not apply here. Decision: magazine. <br /><br />Here is the distinction, provided in a footnote: "In Judge Anderson’s dissent, he gives the example of placing the March 2000 monthly 18 edition of National Geographic devoted entirely to the geography and natural beauty of Africa<br />into a larger book entitled “The Complete Intellectual History of Africa from 1900 to 2008” as an impermissible reproduction. Under this opinion’s reasoning, that reproduction and/or distribution would not survive the contextual analysis either and I would reach the same result."<br /><br />http://www.intellectualpropertylawblog.com/greenberg%20v%20national%20geographic%20society.pdfUnknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-76037761320509257322008-08-22T07:35:00.000-07:002011-08-28T14:45:57.405-07:00Cab Old Magazines Can be Digitized Without the Author's Consent?Should magazine publishers be allowed to republish their old works, even in a compilation, in digital form? The 11th Circuit said no; then it said yes. The defendant is the esteemed National Geographic Society. The plaintiff a poor photographer. Who has the rights to reproduce the photographer's work originally published in the National Geographic magazine? <br /><br />Section 201(c) of the Copyright Act (dealing with ownership of contributions to collective works), which provides as follows:<blockquote>Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series."</blockquote>Well, that sounds like the deck is stacked in favor of the photographer, does it not? Section 201(c) was a big change in 1976: Prior to 1976, whenever freelance authors contributed to a collective work, they risked losing their copyright in their individual works absent a printed copyright notice in the author’s name. The presumption now is that the author retains the rights to copyright when his or her work in included in a collective work. <br /><br />But, in the absence of the author expressly allowing future use, the publisher can still claim that the future work was a "later collective work in the same series." And that is what National Geographic asserted about its digital collection. What is the same and what is "new?"<br /><br />The Supreme Court in the NY Times Photographer case, Tasini, held that the New York Times went beyond the Section 201(c) privilege by compiling the text of all its articles in a searchable online database. That database allowed users to view the individual articles out of context from the other material originally compiled and published as part of the daily newspapers. It ruled that the database constituted a new use rather than a republication or revision of the collective work and, hence, infringed the copyrights of the authors of the individual contributions.<br /><br />What about the National Geographic digital use. National Geographic reproduced all of the contents of all of its issues, from the very first to the then most recent, including all of the articles and photographs, and even including the original ads, just as they appeared to readers in print form. So, "new" did not apply here. Decision: magazine. <br /><br />Here is the distinction, provided in a footnote: "In Judge Anderson’s dissent, he gives the example of placing the March 2000 monthly 18 edition of National Geographic devoted entirely to the geography and natural beauty of Africa<br />into a larger book entitled “The Complete Intellectual History of Africa from 1900 to 2008” as an impermissible reproduction. Under this opinion’s reasoning, that reproduction and/or distribution would not survive the contextual analysis either and I would reach the same result."<br /><br />http://www.intellectualpropertylawblog.com/greenberg%20v%20national%20geographic%20society.pdfUnknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-20041276883749619522008-07-24T10:27:00.001-07:002011-08-28T14:45:57.406-07:00Register Those Copyrights!! But the Circuits Differ on When "Registration" OccursYou are barred from filing a copyright lawsuit without a copyright registration. Statutory damages, meaning that the copyright owner does not have to prove damages, but receives a fixed amount ($750 to $28,000 per infringement) and a chance to double that for willfulness, are available with registration. But, that registration must be completed before the first infringement. Probably more important is the right to attorney's fees, which also requires registration. <br /><br />It takes some number of months from the time of application until the U.S. Copyright Office issues a registration certificate. With an expedited registration, for which you pay more, the process takes weeks.<br /><br />Courts have recently decided that the statute requiring "registration" means a registration that has been issued by the Copyright Office, rather than a mere application. But, a federal court in Illinois recently decided that the completed application, and not the Copyright Office issuance, satisfied this requirment. <br /><br />One blog reports that five of the thirteen federal circuits have decisions holding that a completed application is sufficient to confer jurisdiction for filing a lawsuit. [First, Third, Fifth, Seventh, and Eighth Circuits. Foraste v. Brown Univ., 248 F. Supp. 2d 71, 77 n.10 (D.R.I 2003); Wilson v. Mr. Tee’s, 855 F. Supp. 679, 682-683 (D.N.J. 1994) and SportsMEDIA Tech, Corp. v. Upchurch, 839 F. Supp. 8, 9 (D. Del. 1993); Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991); Chicago Bd. of Education v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) and see Goss Int’l Ams., Inc. v. A-Am. Mach. & Assembly Co., 2007 U.S. Dist. LEXIS 88382, 2007 WL 4294744 (N.D. Ill. Nov. 30, 2007); Action Tapes, Inc. v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006).]<br /><br />The blog further reports that the Sixth, Tenth, and Eleventh Circuits follow the other approach and require the issuance of a registration. Hawaiian Village Computer, Inc. v. Print Management Partners, Inc., 501 F. Supp. 2d 951, 2007 U.S. Dist. LEXIS 7910, 2007 WL 431017 (E.D. Mich. 2007); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005); M.G.B Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 n.4 (11th Cir. 1990).<br /><br />The Second, Fourth, Ninth, and DC Circuits have yet to issue an opinion, but their district courts have adopted contrasting approaches. Compare Capitol Records, Inc. v. wings Digital Corp., 218 F. Supp. 2d 280 (E.D.N.Y. 2002) (complete registration) with Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F. Supp. 2d 147 (E.D.N.Y. 2002) (complete application); Compare Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362 (D. Md. 2005) (application and registration have distinct meanings) with Iconbazaar, L.L.C. v. Am. Online, Inc., 308 F. Supp. 2d 630, 633 (M.D.N.C. 2004) (application approach); Compare Loree Rodkin Management Corp., 315 F. Supp. 2d 1053 (C.D. Cal. 2004) (certificate approach) with Tabra Inc. v. Treasures de Paradise Designs Inc., 20 U.S.P.Q.2d 1313 (N.D. Cal. 1992) (application approach); Compare Strategy Source Inc. v. Lee, 233 F. Supp. 2d 1 (D.D.C. 2002) (complete registration) with International Kitchen Exhaust Cleaning Ass’n v. Power Washers of N. Am., 81 F. Supp. 2d 70 (D.D.C. 2000) (application approach).<br /><br />I found this research on Lexology, in an article by Alan J. Haus of Lewis Brisbois Bisgaard & Smith LLP. Thank you Alan; very nicely done.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-68115366438397903662008-07-24T10:27:00.000-07:002011-08-28T14:45:57.406-07:00Register Those Copyrights!! But the Circuits Differ on When "Registration" OccursYou are barred from filing a copyright lawsuit without a copyright registration. Statutory damages, meaning that the copyright owner does not have to prove damages, but receives a fixed amount ($750 to $28,000 per infringement) and a chance to double that for willfulness, are available with registration. But, that registration must be completed before the first infringement. Probably more important is the right to attorney's fees, which also requires registration. <br /><br />It takes some number of months from the time of application until the U.S. Copyright Office issues a registration certificate. With an expedited registration, for which you pay more, the process takes weeks.<br /><br />Courts have recently decided that the statute requiring "registration" means a registration that has been issued by the Copyright Office, rather than a mere application. But, a federal court in Illinois recently decided that the completed application, and not the Copyright Office issuance, satisfied this requirment. <br /><br />One blog reports that five of the thirteen federal circuits have decisions holding that a completed application is sufficient to confer jurisdiction for filing a lawsuit. [First, Third, Fifth, Seventh, and Eighth Circuits. Foraste v. Brown Univ., 248 F. Supp. 2d 71, 77 n.10 (D.R.I 2003); Wilson v. Mr. Tee’s, 855 F. Supp. 679, 682-683 (D.N.J. 1994) and SportsMEDIA Tech, Corp. v. Upchurch, 839 F. Supp. 8, 9 (D. Del. 1993); Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991); Chicago Bd. of Education v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) and see Goss Int’l Ams., Inc. v. A-Am. Mach. & Assembly Co., 2007 U.S. Dist. LEXIS 88382, 2007 WL 4294744 (N.D. Ill. Nov. 30, 2007); Action Tapes, Inc. v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006).]<br /><br />The blog further reports that the Sixth, Tenth, and Eleventh Circuits follow the other approach and require the issuance of a registration. Hawaiian Village Computer, Inc. v. Print Management Partners, Inc., 501 F. Supp. 2d 951, 2007 U.S. Dist. LEXIS 7910, 2007 WL 431017 (E.D. Mich. 2007); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005); M.G.B Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 n.4 (11th Cir. 1990).<br /><br />The Second, Fourth, Ninth, and DC Circuits have yet to issue an opinion, but their district courts have adopted contrasting approaches. Compare Capitol Records, Inc. v. wings Digital Corp., 218 F. Supp. 2d 280 (E.D.N.Y. 2002) (complete registration) with Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F. Supp. 2d 147 (E.D.N.Y. 2002) (complete application); Compare Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362 (D. Md. 2005) (application and registration have distinct meanings) with Iconbazaar, L.L.C. v. Am. Online, Inc., 308 F. Supp. 2d 630, 633 (M.D.N.C. 2004) (application approach); Compare Loree Rodkin Management Corp., 315 F. Supp. 2d 1053 (C.D. Cal. 2004) (certificate approach) with Tabra Inc. v. Treasures de Paradise Designs Inc., 20 U.S.P.Q.2d 1313 (N.D. Cal. 1992) (application approach); Compare Strategy Source Inc. v. Lee, 233 F. Supp. 2d 1 (D.D.C. 2002) (complete registration) with International Kitchen Exhaust Cleaning Ass’n v. Power Washers of N. Am., 81 F. Supp. 2d 70 (D.D.C. 2000) (application approach).<br /><br />I found this research on Lexology, in an article by Alan J. Haus of Lewis Brisbois Bisgaard & Smith LLP. Thank you Alan; very nicely done.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-894287594260060039.post-37818765199179480292008-06-28T11:29:00.001-07:002011-08-28T14:45:57.406-07:00"Imagine" This . . .For fifteen seconds of the song Imagine, Yoko and Julian and Sean sued the producers of <span style="font-style:italic;">Expelled: No Intelligence Allowed</span>. Infringement or fair use is the issue. <br /><br />Fair use factors? The purpose and character of the use; the nature of the copyrighted work; the amount and substantiality of the portion used; and the effect on the potential market. Not a hard case: although the purpose was commercial, and the song is a core copyright work, not much was used and it did not effect the potential market. <br /> <br />The court agreed with the defendants that it was highly transformative. Rejecting the plaintiffs’ argument that the use was not transformative because the excerpt was played in the film without any alteration, the court held that the selection of the particular portion of the song was made for purposes of social commentary, namely, to criticize the song’s diminution of religion. This selection, and the juxtaposition with video also supporting this criticism, rendered the use transformative. <br /><br />Transformative? Judge Pierre Leval developed the term in his article "Toward a Fair Use Standard," 103 Harv. L. Rev. 1111 (1990):<br /><br />"The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test; in Justice Story's words, it would merely "supersede the objects" of the original. If, on the other hand, the secondary use adds value to the original -- if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings -- this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society. Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses." <br /><br />Judge Richard Posner, in the beany baby case, points out that "The defense of fair use, originally judge-made, now codified, plays an essential role in copyright law. Without it, any copying of copyrighted material would be a copyright infringement." Note that how good was Ben Stein in the movie matters not at all. As Judge Posner explains, "But the fair-use doctrine is not intended to set up the courts as judges of the quality of expressive works. See Campbell v. Acuff-Rose Music, Inc., supra, 510 U.S. at 582-83, 114 S.Ct. 1164. That would be an unreasonable burden to place on judges, as well as raising a First Amendment question."<br /><br />What matters is that the first part of the four factors is not just about being commercial or non-commercial, but about the use. In the big case, the Supreme Court said that if the work "adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message," then it can be protected as fair use. "The goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works." <span style="font-style:italic;">Campbell v. Acuff-Rose Music, Inc.</span>, 510 U.S. 569, 579, 114 S.Ct. 1164, 1171 (U.S.,1994)Unknownnoreply@blogger.com0