Visual Artists Rights Act - Right to Display Works That Do Not Yet Exist

The Massachusetts Museum of Contemporary Art sued Swiss artist Christoph Buchel over an installation called Training Ground for Democracy. Buchel is an installation artist who allegedly did not finish an installation piece. The MOCA wanted the right to display the unfinished installation that it had already spent $300,000 for.

In its brief in support of its summary judgment motion, Mass MOCA's counsel Skadden Arps found a couple of cases for the proposition that "VARA most decidedly does not cover works that do not yet exist." citing Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303, 329 (S.D.N.Y. 1994) rev'd on other grounds, 71 F.3d 77 (2d Cir. 1995) cert. denied, 517 1208 (1996) and Flack v. Friends of Queen Catherine Inc., 139 F. Supp.2d 526 (S.D.N.Y. 2001).

To find out whether the court agree with the argument that VARA did not cover non-existent works, I checked the PACER system for the U.S. District Court of Massachusetts. The court's decision was non-existent.

There was a notice of appeal, appealing from "a final order and/or judgment (or alternatively, order denying injunctive relief) announced from the bench on the 21st day of September, 2007 by the Honorable Michael A. Ponsor (1) denying Buchel's motion for summary judgment and request for injunctive relief under . . . . VARA . . . 17 U.S.C. Section 106A, and the Copyright Act Section 101 et seq. and (2) granting plaintiff's relief in its entirety, allowing it to display the work at issue with a disclaimer."

Practice Point: When a judge rules from the bench, counsel can do three things to get a piece of paper from which to appeal. First, order an expedited copy of the transcript from the court reporter. 1. submit the transcript to the judge and ask the judge to "so order" it; 2. submit a proposed order to the judge according to the judge's rules or 3. ask the judge whether the judge will be issuing a written order or decision so that you can appeal it.

Appeals generally require an appealable paper, that is, an existing written decision from a judge from which you appeal. It is analogous to the fixation requirement in copyright law.

Submitting a proposed order is generally the best and most elegant way of proceeding, and if it is not life or death and the court's discussion was lengthy, it will almost certainly help your accuracy to have the transcript. It allows you to get back to your office, clear your mind, and draft something that will make the court's decision clear. It also may be an opportunity to clarify an issue that you were not clear on from the court's oral comments.

I can't wait to see Mass MOCA's display of this non-existent work, to which VARA does not apply, and to see the disclaimer.

Some of the artist's demands in pursuing the work are found at Exhibitionist.

-The artist will not give permission to show an unfinished project nor will the artist allow the museum to show any work in progress, as the museum had suggested in previous discussion related to the postponed opening date.
- Money needs to be raised and in place to finish the project as it was proposed and completed.
- A projected budget for the second round will be sent, if an updated to punch list with very detailed photographs of the installation and the updated list of items that have been organized has been sent.
- The additional monies raised must cover the costs for ALL elements and ALL structural elements, which are clearly defined and which were much discussed. This money would have to cover the cost of the salaries, flights, per diem and housing for the 1st and 2nd round for assistants and the replacement crew and equipment to be hired.
- There is NO negotiation about the scope of the project. It will be realized as proposed.

Sounds like the non-existent Training Ground for Democracy has lessons for us all about the nature of democracy. The above photograph (of the non-existent exhibit) is found on Mass Moca's website. Does a photograph of a non-existent work exist? For more on Buchel, his work and the case, check out Anaba.

May Credit Card Processors Be Contributorily Liable for Copyright Infringement?

According to its Wikipedia entry Perfect 10 magazine ceased publishing and has gone solely to an online format. I visited the Perfect 10 website, which has generated a tremendous amount of copyright litigation. The photographs were a bit too racy to reference here.

In Perfect 10 v. Google, these purveyors of photographs of naturally beautiful women temporarily succeeded in enjoining Google from continuing its Google Images search. The Ninth Circuit, however, overturned the District Court's injunction, finding that Google's use of thumbnail images is highly transformative. My May 20, 2007 post on that case is here.

Perfect 10 recently went after credit card processing companies that facilitate transactions involving copyright infringement. Perfect 10, Inc. v. Visa International Service Assn., 494 F.3d 788 (2007). Visa won a 12(b)(6) motion to dismiss the claims against it for contributory and vicarious copyright infringement. The court found that the credit card processors, unlike a the swap meet organizer in the Fonovisa case, or the players in Napster or Grokster, did not actually get involved in the infringement process.

Judge Alex Kozinski entered a spirited dissent. He pointed out that Perfect 10 had alleged that infringers were operating offshore and reaching the U.S. through the credit card processors. If you are suing a copyright infringer who is operating offshore and profiting through use of credit cards, you should be aware of his well-reasoned dissent when you put your pleadings together.

Richard Prince - Practicing Without a License

In 2005, a Richard Prince photograph of a Marlboro cigarettes advertisement was auctioned for over $1.2 million - a world record. He photographed the Marlboro ad without permission removing the identifying marks. In a 1977 essay, Prince proclaimed that he was "practicing without a license" - referring to his practice of stealing other people's pictures and publishing them as his own.

Prince is having a one-man show at the Guggenheim museum, titled "Spiritual America". The title of the show comes from disturbing nude photograph of a prepubescent Brooke Shields taken by photographer Gary Gross that Prince "rephotographed" and presented in a gilt frame in a gallery on the Lower East Side. The photograph is part of the Guggenheim show and reprinted in its catalog.

Prince likened his taking of others' photographs to sampling someone else's 8-track tape, he could manipulate his "8 -track photographs" in the following way:

1. the original copy
2. the rephotographed copy
3. the angled copy
4. the cropped copy
5. the focused copy
6. the out-of-focus copy
7. the black-and-white copy
8. the color copy

Prince's show is interesting, disturbing, and challenging. In Nancy Spector's catalog essay, she likens Prince's acts to the act of Marcel Duchamps submitting a urinal as part of an art show (Duchamps called this "readymade") - and this act is widely considered with opening up and introducing the art of the 20th century. Is Prince a Warholian or Duchampian genius - or a fraud? If auction prices, income, and museum shows are a measure - Prince is a genius of the highest order. He certainly has his critics, though.

As we move into a world where digital photography and sophisticated consumer-level photo retouching software is available, appropriating and manipulating images has become a widespread phenomenon. His appropriation may foreshadow the copyright battles of the future, and a weakening of the visual artist's copyright.

But as you go up the Guggenheim spiral, you will note less wholesale appropropriation, and more borrowing of bits and pieces. Once an artist is successful and no longer judgment proof . . . remaining an outlaw becomes problematic. His latest series consists of scanning faces from the works of De Kooning and sticking pornographic cut-outs onto the bodies.

Maybe we will all see "moral rights" in a different light after this show. See it and judge for yourself.

Freelancers, Unregistered Copyrights and Electronic Database Litigation

Freelancers suffered a very tough blow in the Second Circuit's decision In re Literary Works in Electronic Databases Copyright Litigation, --- F.3d---, 2007 WL 4197413 (2d Cir. 2007). Dissents in the Second Circuit are fairly rare, but the Second Circuit's former Chief Judge John M. Walker, Jr. wrote a fairly thorough dissent.

In 2001 the U.S. Supreme Court decided New York Times v. Tasini, 533 U.S. 483, 488 (2001) which held that section 201(c) 0f the Copyright Act does not permit publishers to reproduce freelance works electronically when the publishers lack specific authorization to do so. In the wake of that decision, the In re Literary Works litigation was commenced as a class action to vindicate the rights of freelancers whose works were taken without their permission. After years of heated negotiation, the parties agreed to a class settlement. The settlement Classes were divided into subclasses A, B and C. Subclass A consisted of freelancers who had registered their copyrights (see my post of yesterday on advantages of registration). Subclass B registered after infringement, but before December 31, 2002. Subclass C never registered their works.

As discussed in my post of yesterday: for a U.S. copyright owner, registration is a prerequisite for commencing litigation. As the In re Literary Works decision sets forth: Class A is entitled to statutory damages and attorneys fees. Class B to actual damages. Class C .. well.... there's the rub.

The Defendants claimed that Class C (unregistered copyrights) were practically worthless. So a group of objectors (holders of unregistered copyrights) objected to the class settlement, which was likely to leave next to nothing or nothing for the Class C. Watch out what you ask for: the objectors brought the issue of the court's jurisdiction to the fore, and the Second Circuit scuttled any settlement in favor of the unregistered copyright holders. Why? They had not registered.

It seems that all of the parties spend a lot of time arguing the meaning of Section 411 of the Copyright Act, which makes it a requirement that registration to occur for a federal court to have jurisdiction. To dig into the highly technical nuances of the argument, it appears to me that the dissent makes the most sense: Section 411 doesn't create the pre-existing rights and should be treated solely as an enforcement mechanism.

And in the end, the result is not only unfair, but it renders Tasini a pyrrhic victory. As In re Literary Works states: "this jurisdictional failure likely affected more than 99 percent of the claims at issue."

Why unfair? Well, freelancers (a.k.a. ink-stained wretches) traditionally beat deadlines by minutes, turned in their work, got some beer money, and lived hand-to-mouth. They owned their work, and maybe, just maybe, someday they'd turn it into a book. Of course they owned their copyright, and when they saw "Copyright New York Times" they knew that the Old Gray Lady had taken care of the formalities of registration for them.

But in a case called Morris Business Concepts, Inc., 259 F.3d 65 (2d Cir. 2001) and in a decision denying a petition for rehearing 283 F.3d 502 (2002), all of that was taken away. Why? It was held that the newspaper owns the "collective copyright" but that if a freelancer wanted to consider a copyright registered, it would have to file a separate registration to indicate that all of the rights had not been transferred to the publisher. So every time the ink-stained wretch turned in a story, he or she was also supposed to file a registration with the Copyright Office.

Clearly, 99% of the freelancers did not have that understanding. They were relying on the publisher's registration.

So when we look at the In re Literary Works decision, the "unregistered copyrights" that were settled and under discussion were copyrights claimed by freelancers in registered collective works. Since copyright is an area of "complete preemption", this is clearly an area in which Congress intended to legislate - and whether the publisher's re-publication of a story without permission is deemed a breach of contract or a copyright infringement, it seems that there is sufficient grounds for litigation over whether it is a state or federal claim to permit a federal court to exercise supplemental jurisdiction over it in the settlement context. As Judge Walker correctly noted, there is certainly a "case or controversy" to give the freelancers standing in the constitutional sense.

As Judge Walker correctly noted, "... a plaintiff alleging copyright infringement has suffered an injury-in-fact whether or not he has registered his copyright." Professor Patry's lively discussion and link to the decision.

Copyright and Unregistered Berne Convention (non-U.S.) Works

I have recently been lecturing outside the U.S. - in Berlin, Germany and last month in Montreal. The question comes up: should owners of copyrighted works that are created outside the United States register those works in the United States? The first part of the answer is that if the copyright author created the work in a country that is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, the copyright owner does not have to register in the U.S. to protect their copyright or to have an action in the U.S. for infringement. The owner of an unregistered Berne Convention work may commence an action in U.S. courts without registering. The owner of a U.S. work must register to have standing to sue in a U.S. court.

So, owners of unregistered Berne Convention works may bring an infringement suit in U.S. courts. The implementing legislation eliminated the requirement of registration for non-U.S. works. Compare 17 U.S.C. §411 (registration a prerequisite for “infringement of the copyright in any United States work”).

But the second part of the answer may be more important to European, Asian, Canadian, Middle Eastern and other attorneys residing in countries that are signatories to the Berne Convention. Unregistered Berne Convention works are not eligible for statutory damages and attorneys' fees under 17 USC §4 12. 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, §7.16(c)(1), 7-183 (2006)(the loss of remedies under Section 412 due to failure to register is applicable to works of foreign origin as well as to domestic works).

So, if an attorney from a Berne Convention country wants a client to have what may be strong weapons in a copyright infringement litigation, the advice should be to register the works in the United States.

There is a very narrow possible exception to this general requirement that applies only to broadcasts - but even in that instance, registration will ultimately take place. Georgia Television Co. v. TV News Clips of Atlanta, Inc., 718 F. Supp. 939 (N.D.Ga. 1989) noted the availability of statutory damages for a plaintiff with respect to an unregistered work following implementation of the Berne Convention legislation. However, this case applied narrowly to works “consisting of sounds, images or both, the first fixation of which is made simultaneously with its transmission”. 17 U.S.C. § 411(b). Section 411(b) contains special registration requirements for works that cannot possibly be registered prior to transmission.

Can you wait to register? No. To enjoy the advantages of statutory damages and attorneys fees, a Canadian, British, German or Japanese copyright owner must register, as do U.S. owners, within three months of the first publication of the work or within 30 days of learning of an infringement, whichever date is earlier. 17 U.S.C. § 412.

But wait, there are even more reasons to register, reasons that corporate dealmakers will readily appreciate:

Registration and recordation provide additional advantages to the non-U.S. copyright owner. 17 U.S.C. § 205 provides that registration acts as constructive notice of the facts within the registration. In addition, any transactions involving registered works that have been recorded act to put the world on constructive notice of such a transfer. So if a client enters into a license agreement, a loan transaction, or any other transaction affecting title or rights to a copyright and records it, the world is on notice. Section 205(d) provides that in the case of conflicting transfers of copyright, if it is executed first, the recorded document will have priority in the event of a conflicting transfer if such document executed outside the United States is recorded within two months of such a transfer, or if it is recorded prior to 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.” 17 U.S.C. §205(d).

Accordingly, non-U.S. attorneys are correct in advising their clients of the considerable advantages to registering copyrights in the U.S. as early as possible, to conducting copyright searches before entering into significant license agreements, and to recording transactions involving copyrights promptly after execution.

Bardot, French Copyright and the First Amendment

I saw a collection of 5 Brigitte Bardot films in Barnes & Noble bookstore priced at $39.99. I didn't buy it, but I was glad to see that the French seem to be waking up to the possibility of exploiting their copyrights in the U.S. market in an attractively-packaged, competitively-priced way.

The United States has historically viewed French copyrights with suspicion. French laws have always included bells and whistles denied to our local authors and creators. They offend our puritan values by protecting frivolous things like fashion designs, designers, and the "moral rights" of artists and authors to the "integrity" of their works. Blank cassette tapes were taxed and rights paid to musicians' collecting societies because music would be copied to them without paying additional royalties.

But banish the thought that such prejudice prevails in Gotham: the Second Circuit is hip to French law. In Sarl Louis Feraud International v. Viewfinder, Inc., 489 F.3d 474 (2d Cir. 2007), the Second Circuit considered a situation where the district court threw out a French judgment without even looking at what the French law was. Neither the appellate nor the respondent briefed the Second Circuit on what French law it was that the district court found unconstitutional. The case involved a U.S. company that published photographs of French fashion designs on the internet. The U.S. company permitted a French judgment to be entered against it. The French court ordered a fine of 50,000 francs per day (France converted to the Euro on January 1, 2002). In the Southern District of New York, the Defendant succeeded in dismissing an action to enforce the French judgment.

The defendant, whose burden it was to show that the French law was repugnant to the law of the State of New York argued "there is simply no way for this Court to know what substantive law was actually applied in France and on what ground Defendant was found liable."

The court looked at the default judgment, which cites the French Intellectual Property Code. It then apparently sua sponte hopped onto the internet, and found the French Civil Code at http://www.legifrance.gouv.fr/. It then cited:

Article L122-4 Any complete or partial performance or reproduction made without the consent of the author or of his successors in title or assigns shall be unlawful. The same shall apply to translation, adaptation or transformation, arrangement or reproduction by any technique or process whatsoever.

Sacre bleu! Quel horreur! That certainly sounds repugnant. It took me some navigation on the French government website, but sure enough, after pressing the little British flag buttons under "Droit Francais" and next to "Les Codes" and drilling down FIVE levels, I too, found the provision under the rubric "Patrimonial Rights" in English

-->
Home > INTELLECTUAL PROPERTY CODE - Legislative Part

> PART I - Literary and Artistic Property

> BOOK I - Copyright

> TITLE II - Authors’ Rights

> CHAPTER II - Patrimonial Rights

But then the court cited another French Civil Code that has an odeur of "fair use":

Article L122-5 Once a work has been disclosed, the author may not prohibit: 1°. private and gratuitous performances carried out exclusively within the family circle; 2°. copies or reproductions reserved strictly for the private use of the copier and not intended for collective use, with the exception of copies of works of art to be used for purposes identical with those for which the original work was created and copies of software other than backup copies made in accordance with paragraph II of Article L. 122-6-1, as well as copies or reproductions of an electronic database; 3°. on condition that the name of the author and the source are clearly stated: a) analyses and short quotations justified by the critical, polemic, educational, scientific or informatory nature of the work in which they are incorporated; b) press reviews; c) dissemination, even in their entirety, through the press or by broadcasting, as current news, of speeches intended for the public made in political, administrative, judicial or academic gatherings, as well as in public meetings of a political nature and at official ceremonies; d) complete or partial reproductions of works of graphic or three-dimensional art intended to appear in the catalogue of a judicial sale held in France, in the form of the copies of the said catalogue made available to the public prior to the sale for the sole purpose of describing the works of art offered for sale. A decree by the Conseil d’Etat shall determine the characteristics of the documents and the conditions governing their distribution. 4°. parody, pastiche and caricature, observing the rules of the genre. 5°. acts necessary to access the contents of an electronic database for the purposes of and within the limits of the use provided by contract.

Can a court just hop on the internet and figure out the law of another country sua sponte? It seems un-American and likely to start a riot in Congress among the Freedom Fries crowd. The answer is yes. Although the Second Circuit didn't cite Rule 44.1 of the Federal Rules of Civil Procedure, it provides:

Rule 44.1. Determination of Foreign Law. A party who intends to raise an issue concerning the law of a foreign country shall give notice by pleadings or other reasonable written notice. The court, in determining foreign law, may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence. The court's determination shall be treated as a ruling on a question of law.

The Second Circuit agreed with the lower court's finding that copyright laws are "not matters of strong moral principle". But on the record before it, the court did not see a finding that the French law was "vicious wicked or immoral, and shocking to the prevailing moral sense."

The Second Circuit remanded for an analysis of "whether the intellectual property regime upon which the French Judgments were based impinged on rights protected by the First Amendment." Analogizing to libel judgments, the court held:

In deciding whether the French Judgments are repugnant to the public policy of New York, the district court should first determine the level of First Amendment protection required by New York public policy when a news organization engages in the unauthorized use of intellectual property at issue here. Then, it should determine whether the French intellectual property regime provides comparable protections.

The court noted that the fair use doctrine is coextensive with the First Amendment, and that the district court would have to determine whether the Defendant's use fell within the fair use doctrine as set forth in 17 U.S.C. 107.

Contracts Involving Copyrights and Forum Selection Clauses: Motions To Dismiss

A musician enters into a recording contract for an album. The forum selection clause specifies England as the exclusive forum to bring legal proceedings. The choice of law clause specifies English law. The musician provides sufficient tracks to release an album. The musician also provides enough additional tracks to launch a second album. The record company asks for permission to launch the second album. The musician refuses. The record company launches the second album.

Can the musician sue in the Southern District of New York? The Second Circuit tackled this question in Phillips v. Audio Active Limited, --- F.3d ---, 2007 WL 2090202 (2d Cir.). The answer is "yes" on copyright claims and "no" on contractual claims.

The musician sued in New York claiming breach of contract, copyright infringement and pendent state law claims. The defendant record company moved to dismiss pursuant to Rule 12(b)(3) - improper venue.

The Second Circuit applies a four-part analysis in deciding motions to dismiss based on a forum selection clause in a contract:

(1) was the clause reasonably communicated to the party resisting enforcement?
(2) is the language of the forum selection clause mandatory rather than permissive? (ie does the language require a lawsuit to be brought in the specified jurisdiction or merely permit jurisdiction)
(3) are the claims and parties involved in the suit subject to the forum selection clause?
(4) if the answer to the above three questions is "yes", the final question is whether the resisting party has rebutted the presumption of enforceability by making a sufficiently strong showing that (a) enforcement would be unreasonable or unjust or (b) the clause was invalid for such reasons as fraud or overreaching.

The District Court dismissed the entire action for improper venue. The Second Circuit affirmed the dismissal of the contract claims.

The Second Circuit reversed on the copyright claims, permitting the copyright claims to proceed in the Southern District of New York. The court looked to the language of the forum selection clause which applied to claims "arising out of" the contract. The court found that the copyright claims did not "arise out of" the contract. The court held that even though the defendant could invoke the contract as a defense, the plaintiff's claims were grounded in the Copyright Act and in his authorship of the works.

The Second Circuit explicitly rejected the approach of the Seventh Circuit in Omron Healthcare, Inc. v. Maclaren Exps. Ltd., 28 F.3d 600 (7th Cir. 1994), which interpreted similar language as "all disputes the resolution of which arguably depend on the construction of an agreement 'arise out of' that agreement." The Omron case involved a distributor selling off excess inventory of strollers bearing trademarks following termination of a distribution agreement. The Seventh Circuit sent the trademark infringement claims over to England.

In other words, applying Omron the Seventh Circuit would have dismissed the copyright claims for lack of venue as well, since determining the validity of the copyright claims would rely on construing the language of the contract.

The result in Phillips was that the plaintiff was permitted to file copyright infringement claims in the Southern District of New York and would have to file breach of contract claims in England.

Professor Patry expresses his dissatisfaction with the Phillips case here. Anyone who drafts copyright or trademark license agreements and does not want to be litigating claims in two separate fora should read the Phillips case and redraft their forum selection clauses.

German Copyright in US Courts

Wrapped Reichstag, Berlin 1971-1995 (Christo & Jeanne-Claude)

I am leaving shortly to go to Germany. I will give a joint lecture at the University of Konstanz's law school with Prof. Dr. Axel Nordemann of Boehmert & Boehmert on July 6. On July 9, I will be giving a lecture in Berlin to the Berlin Chapter of the German Intellectual Property Law Association.(DEUTSCHE VEREINIGUNG FÜR GEWERBLICHEN RECHTSSCHUTZ UND URHEBERRECHT).

In preparation, I have been thinking about what copyrights would be of interest to German students and attorneys. Judge Alex Kozinsky noted in Mattel Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) that Mattel's Barbie Doll was originally a "German street walker". In that case, the court found that trademark infringement and dilution claims asserted against the Danish band Acqua and their song "Barbie Girl" failed because a trademark owner doesn't have the right to control public discourse when the public imbues a mark beyond its source-identifying function. Barbie has spawned enormous litigation. For example, artist Tom Forsythe was awarded $1.8 milllion in attorneys fees and damages because of Mattel's meritless litigation against him for his "Food Chain Barbie" series of photographs. Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003).

One of my favorite German copyright disputes didn't involve a German copyright. The Copyright Office's Board of Appeals rejected Christo and Jean-Claude's application to register their wrapping of the Reichstag in Berlin as a "sculptural work". Re: Wrapped Reichstag, Berlin, 1971-1995 Control No. 60-504-9973 Decision of Appeals Board, U.S. Copyright Office, October 1, 1997. The image appears above. Christo and Jean-Claude own the copyright in the photograph shown above, but they do not have a copyright in the sculptural aspects of the wrapped Reichstag. A copy of this decision may be found at Franklin Pierce Law School's IP Mall.

Dr. Nordemann and I will discuss two cases in depth. One, Twin Books Corporation v. The Walt Disney Corporation, 83 F.3d 1162 (9th Cir. 1996), involves the initial publication in Germany in 1923 of the classic children's tale "Bambi, A Life in the Woods" without a US copyright notice.

The second, Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) involved a fashion photographer named Andrea Blanch visiting the Deutsche Guggenheim in Berlin and noticing that a photograph she'd taken had been painted into the latest work of the artist Jeff Koons (Koons and Barbie are jointly responsible for a good chunk of U.S. copyright law). Ms. Blanch returned from Berlin and sued Jeff Koons in New York, rather than in Berlin. Dr. Nordemann and I will discuss whether Germany might not have been a friendlier forum for her, and why.

A Westlaw search of "German copyright law" turned up only five cases in the ALLFEDS database. "German copyright" turned up only ten. "germany w/5 copyright" yielded 18 results, including the famous Wheaton v. Peters, 33 U.S. 591 (1834)("In Germany, where a free, perpetual copyright exists, books are cheaper than any where else in the world.")

But I think that we are going to see many more German copyrights exploited in the United States. I recently had the pleasure of watching Fritz Lang's "M" (1931) - a Criterion collection release. An amazing film.

And two years ago, I started representing the heirs of Fritz Grunbaum. Grunbaum was a Jewish cabaret performer and film star in Berlin who mocked Hitler mercilessly. He was one of the founders and stars of Vienna's Kabarett Simpl. Christopher Isherwood's "Berlin Stories" are said to be based on Fritz Grunbaum and his world, which in turn formed the basis for Kander & Ebb's "Cabaret". Grunbaum and many member of his family were murdered by the Nazis. His art collection, like the collections of so many victims of the Holocaust, ended up with a Nazi-owned Austrian transport and storage company called Schenker & Co AG that has never accounted for it. What happened to the artworks after they left Schenker and made their way to the walls of the world's museums is now a hotly disputed matter. According to Eberhard Kornfeld, owner of Galerie Kornfeld in Bern, Switzerland, the Egon Schiele self-portrait hanging in the Morgan Library belonged to Fritz Grunbaum. The Morgan Library's catalog From Berlin to Broadway: The Ebb Bequest of Modern German and Austrian Drawings claims that Kornfeld acquired it from Egon Schiele's estate.

Two years ago, when I googled Fritz Grunbaum I found very little on him. I did it again recently and found blog posts, a museum in Vienna devoted to him, a very respectable Wikipedia entry, and an IMDB filmography of his works. Checking out his film "The Theft of the Mona Lisa" (Der Raub der Mona Lisa) (1931), I discovered that he played the role "Adolph G" to make fun of Hitler and that the New York Times gave the film an amazing review in 1932, which I got to read.

Although Grunbaum's artworks vanished, his copyrighted celluloid image survived, his musical copyrights endured, and the German collecting societies steadily credited his estate with royalties over the years for his famous musical compositions.

Hollywood is hungry for remakes, and the appetite is only growing. Someone is going to want to remake the "Theft of the Mona Lisa" which was based on an actual incident in 1911.

As German films of the twentieth century become better known, catalogued, distributed and affordable, the market for and interest in German copyrights in the United States should grow.

Blogs on My Blackberry - No Iphone Necessary

Last Friday I was blocked from walking down the Fifth Avenue sidewalk in front of the Apple store. The Iphone madness was going on. I saw a television advertisement for the Iphone while at the gym showing the user playing around with the New York Times. I confess, I had a moment of Iphone envy. But if I bought a toy like that, I would never use it.

I have recently been playing around with some features on my Blackberry 8700. There is a browser called Opera Mini that you can download for free. It greatly speeds up the internet connection and makes searches much quicker. I had a hard time installing it, until I read the fine print on the help page that gave me very simple instructions on configuring the telephone.

The Opera Mini browser also collects RSS Feeds. The previous RSS aggregators I used did not include images. But in testing the Opera Mini browser, I subscribed to this blog and was delighted to see that the images posted were crystal-clear and in color, rivalling the display that the Iphone advertisements showed. Very pleasing to the eye. The Opera Mini also had high-quality color access to the New York Times with a very readable interface.

As video and photo quality improve, the PDA and cell phones will be at the forefront of copyright and royalty litigation.

Appropriation Art and Wikipedia

In preparing for a presentation I gave last week at the National Arts Club on "Copyright and Creativity" I found some great wikipedia entries that were very helpful. The wikipedia entry for Appropriation (art) is found here. Also the Art Intervention entry is found here.

Both movements involve using, modifiying, stealing or vandalizing someone else's artwork. Sometimes litigation ensues.

I have inserted Marcel Duchamps' L.H.O.O.Q. (1919), where he puts a mustache and goatee on the Mona Lisa.

Contemporary artists continue to annoy, harass, steal, disrupt and dismay us. Decades later, their works will be valued and celebrated. My favorite is http://www.whitneybiennial.com/. The artist Miltos Manetas stole the Whitney's name and a very good domain name and used it to build a version of the Whitney's 2002 Biennial that included his web-based artworks. He told the press that he was going to surround the Biennial with U-haul trucks with screens showing web-based art that he likes. He never did, but he created a huge uproar.

The social or artistic value of a work that borrows so heavily from another's work is not always apparent. For example, the "appropriation artist" Richard Prince photographed Marlboro advertisements, took out the wording of the advertisement, and blew up the photographs without any other modifications. Pure copyright infringement? One of his photographs reached a world record for photography when it auctioned in 2005 for over $1.2 million.

The artist Jeff Koons (who recently won a case against a photographer whose image he placed in a painted collage) has similarly caused scandal, litigation, and has eventually reaped tremendous financial rewards for reinterpretations - or outright taking - of works under copyright.

Blogging Chaps

I met a lawyer today from the Midlands region of England named Andrew Mills. He's the partner in charge of IP and Tech at a 65 partner firm (500 lawyers) named Freeth Cartwright based in Nottingham. Andrew had a bit of free time today in New York city, so he hopped on the internet to see if he could meet a fellow legal blogger. I had a spot open just before lunch, so Andrew and I got to meet.

We talked about copyright, trademarks and how the U.S. and British regimes varied. Andrew knew a few tricks about how U.S. trademark owners could improve their trademark registration portfolios and I think I shared a few strategies involving cease and desist letters in the U.S. that were interesting to him. He told me that in the past five years British litigation has died down quite a bit due to prelitigation mediation and pre-filing communication rules.

I am hoping to follow up on Andrew's visit with a visit of my own to Nottingham. Andrew says it's about 2.5 hours north of London. Check out Andrew's blog, http://impact.freethcartwright.com/. It's an interesting admixture of news, parliamentary debates, and other good ip fun.

Andrew is coming out with a book this fall, so keep an eye out for it!

Video Search Engines and Copyright Infringement: Rule of Thumb

If you go to http://www.ditto.com/ and type in "Napoleon Bonaparte" the video search engine will pull up twelve "thumbnail" images of the late, great Emperor. "Thumbnails" are small, low resolution images that since the Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) have been assumed by courts to be commercially valueless. An example is found at left.

Enter "Perfect 10" a producer of photographs of naturally-beautiful naked women. Perfect 10 sued Google because Google operates a video search engine that gathers thumbnails in response to search queries.

Perfect 10 argued that it had created a market for thumbnails: selling thumbnails to users of cell phones who wanted to use naturally beautiful naked women as wallpaper.

Perfect 10 convinced a California District Court judge to enjoin Google from using its video search engine pending the outcome of the trial. The court found that Google's use of the thumbnails was probably copyright infringement and not "fair use" because of Perfect 10's new commercial use for the hitherto worthless thumbnails.

On May 16, 2007, in Perfect 10, Inc. v. Amazon.com, Inc., ---F.3d---, 2007 WL 1428632 (9th Cir. 2007), the Ninth Circuit reversed. The decision analyzed very carefully why gathering thumbnails, which are mere URL instructions, is really not copying (doesn't violate "display" right and doesn't violate "distribution" right of copyright owner), and how the video search engine's use of the original copyrighted works is "highly" transformative. A careful look at Napoleon's face above might lead the average viewer to agree.

Folks who obssess over Napster, Grokster and all of that will have a field day reading this decision which then covers secondary liability (contributory and vicarious infringement) (Google raised the argument that its video search engine had a substantial non-infringing use). Essentially Perfect 10's argument was that people other than Google were posting Perfect 10 images to their websites without permission and that Google's search engine was then re-copying and re-distributing these infringing works. The Ninth Circuit found that "Google could be held contributorily liable if it had knowledge that infringing Perfect 10 images were available using its search engine, could take simple measures to prevent further damage to Perfect 10's copyrighted works, and failed to take such steps."

N.B. - The Ninth Circuit found that Perfect 10 had not really shown that their market for thumbnails was being harmed by Google or that Google users were using thumbnails to create their own wallpaper. When a plaintiff who can show these facts comes back to court in a few years, we may have a new rule of thumb.

Right to Radio and TV in Bars, Restaurants and Truckstops

You walk into a small barbershop. There's a transistor radio going with some oldies and a soundless sports game going on a small television. Copyright infringement? Under the Copyright Act's "homestyle" exception found at Section 110(5)(A), your barber's probably safe.

You own a commercial establishment, like a truck stop. Instead of playing the commercials supplied by ABC, you install an electronic sensor that detects the advertisements, and inserts your advertisements instead of ABC's. Does ABC have the "right to sell and append commercial advertising to the beginning, middle or end of a film, news show, sitcom, sporting event, or other program that is shown on television whether or not [ABC] own[s] the copyrights in those shows?"

A recent decision by Judge Deborah Batts explores the "homestyle exception" embodied in 17 U.S.C. 110(5)(A) and (B). American Broadcasting Companies, Inc. v. Flying J, 2007 WL 583176 (S.D.N.Y.). Section 110 is titled: "Limitations on exclusive rights: Exemption of certain performances and displays". To figure out whether the establishment is exempt, you need to read both sections "A" and "B" of the statute to see whether the establishment is small enough to qualify. Congress intended to "allow the use of ordinary radios and television sets for the incidental use of patrons in small businesses or other professional establishments, such as taverns, lunch counters, dry cleaners, doctors' office, etc."

Notwithstanding the provisions of section 106, the following are not infringements of copyright:

(5)
(A) except as provided in subparagraph (B), communication of a transmission embodying a performance or display of a work by the public reception of the transmission on a single receiving apparatus of a kind commonly used in private homes, unless—
(i) a direct charge is made to see or hear the transmission; or
(ii) the transmission thus received is further transmitted to the public;

(B) communication by an establishment of a transmission or retransmission embodying a performance or display of a nondramatic musical work intended to be received by the general public, originated by a radio or television broadcast station licensed as such by the Federal Communications Commission, or, if an audiovisual transmission, by a cable system or satellite carrier, if—
(i) in the case of an establishment other than a food service or drinking establishment, either the establishment in which the communication occurs has less than 2,000 gross square feet of space (excluding space used for customer parking and for no other purpose), or the establishment in which the communication occurs has 2,000 or more gross square feet of space (excluding space used for customer parking and for no other purpose) and—
(I) if the performance is by audio means only, the performance is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space; or
(II) if the performance or display is by audiovisual means, any visual portion of the performance or display is communicated by means of a total of not more than 4 audiovisual devices, of which not more than 1 audiovisual device is located in any 1 room, and no such audiovisual device has a diagonal screen size greater than 55 inches, and any audio portion of the performance or display is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space;
(ii) in the case of a food service or drinking establishment, either the establishment in which the communication occurs has less than 3,750 gross square feet of space (excluding space used for customer parking and for no other purpose), or the establishment in which the communication occurs has 3,750 gross square feet of space or more (excluding space used for customer parking and for no other purpose) and—
(I) if the performance is by audio means only, the performance is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space; or
(II) if the performance or display is by audiovisual means, any visual portion of the performance or display is communicated by means of a total of not more than 4 audiovisual devices, of which not more than one audiovisual device is located in any 1 room, and no such audiovisual device has a diagonal screen size greater than 55 inches, and any audio portion of the performance or display is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space;
(iii) no direct charge is made to see or hear the transmission or retransmission;
(iv) the transmission or retransmission is not further transmitted beyond the establishment where it is received; and
(v) the transmission or retransmission is licensed by the copyright owner of the work so publicly performed or displayed

In ABC v. Flying J, Judge Batts found that the owner of 130 truck stops infringed Plaintiff's copyrights by showing network programming downloaded from a satellite dish and using an apparatus to remove and replace the commercials. The court dismissed the unfair competition claim based on New York law as being preempted by the Copyright Act, 17 U.S.C. 301. The court found that the mere display of the television programming at the truck stops probably fell within section 110's homestyle exception. However, the court's copyright infringement analysis was based mainly on the fact that the brand new commercial technology to remove and replace advertisements did not qualify for the homestyle exception.

What sort of right exists in the spaces filled with advertising before, during and after television transmissions was not reached by the court, but the court made clear that the answer was to be found in the Copyright Act, rather than under state law.

Practice Tip: To get a good decision protecting the empty spaces before during and after their copyrighted programming, television industry plaintiffs may need the cooperation of advertisers who own the copyrights in the advertisements to ensure that they have standing in their next lawsuit against a defendant cutting out paid advertisements.

Contracts Involving Uncopyrightable Ideas

Copyright does not protect "ideas". It also doesn't protect facts. But if parties agree by contract that one is going to pay another for an idea, that contract may be enforceable. In my mind, prior to doing any research, the lead case on contracts involving ideas is Buchwald v. Paramount Pictures, 1990 WL 357611 (Cal. Superior), 13 U.S.P.Q.2d 1497, 17 Media L. Rep 1257 (Cal. Super. L.A. Co. 1990)(not reported in Cal. Rptr.). When I say "in my mind" - the story of columnist Art Buchwald submitting a 2.5 page treatment to Paramount Pictures, Paramount agreeing to pay him for the idea, and then reneging by making a film called "Coming to America" starring Eddie Murphy based on that idea without paying Buchwald is so memorable.

But when I conducted an "ALLFEDS" search on Westlaw, I found only one case citing the Buchwald case. Beal v. Paramount Pictures Corp., 20 F.3d 454 (11th Cir. 1994). I didn't check the state database. But there were 68 secondary sources citing Buchwald. So it's a case in which the peanut gallery of legal commentators have great interest, but in which the courts have no interest. Over the last month I read Fatal Subtraction: How Hollywood Really Does Business (The Inside Story of Buchwald v. Paramount) by Pierce O'Donnell and Dennis McDougal (Doubleday 1992). It's a pretty good story for a lawyer to read in terms of case strategy, not giving up, and taking risks on some long shot legal theories where a client has really been wronged. O'Donnell had Buchwald's contract involving the story idea upheld and enforced, then turned around and invalidated its "industry standard" net profits provisions as unconscionable (there is a Buchwald II decision).

Arthur Miller, in Common Law Protection for Products of the Mind: An "Idea" Whose Time Has Come, 119 Harv. L. Rev. 703 (January 2006) argues that courts generally require "concreteness" and "novelty" to enforce agreements involving ideas. He provides a good survey of the case law in the area and argues for more federal protection. He claims a gestation period for the article of 56 years - since he was a 2L.

In Cavagnuolo v. Rudin, 1996 WL 79861 (S.D.N.Y.) the court observed that California has no novelty requirement for contracts involving ideas (citing Desny v. Wilder, 299 P.2d 257 (Cal. 1956) nor does New York (citing Apfel v. Prudential-Bach Securities Inc., 81 N.Y.2d 470 (1993).

Where owners of a database used a "shrink-wrap" license to bar licensees from using the database for commercial mailings, the provision was upheld. ProCD Incorporated v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996). Michigan law doesn't require novelty in contract to submit ideas. Wrench LLC v. Taco Bell, 256 F.3d 446 (6th Cir. 2001). In a case criticized by Miller, at least one court let a contract block reverse-engineering because it was forbidden by the license agreement. Bowers v. Baystate Technologies, Inc., 320 F.3d 1317 (Fed. Cir. 2003)(permitting a party to "contract away" a fair use defense of reverse engineering).

California law will create an implied in fact contract in idea submission cases. Levin v. The Gap, 1998 WL 915897 (S.D.N.Y.). But California will require evidence of industry custom to pay for ideas before doing so. Dallier v. Levi Straus & Co., 86 F.3d 1149 (4th Cir. 1996)(unpublished). But for a court to let a plaintiff pursue an implied-in-fact contract, it should be set forth in the complaint. Willis v. Home Box Office, 57 Fed. Appx. 902 (2d Cir. 2003)(unpublished summary order).

Courts struggle with the problem of preemption: the extent to which Copyright law supplants state law in the area of protecting ideas. The law of trade secrets is a related area -protecting "ideas" unprotectable by copyright by keeping them secret or binding a select few through confidentiality agreements.

Copyright Injunctions - Fruit of the Infringing Tree Doctrine (Ch 11)

Chapter 5 of 17 U.S.C. provides for remedies for victims of copyright infringement. Section 502 permits injunctions:

§ 502. Remedies for infringement: Injunctions
(a) Any court having jurisdiction of a civil action arising under this title may, subject to the provisions of section 1498 of title 28, grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.
(b) Any such injunction may be served anywhere in the United States on the person enjoined; it shall be operative throughout the United States and shall be enforceable, by proceedings in contempt or otherwise, by any United States court having jurisdiction of that person. The clerk of the court granting the injunction shall, when requested by any other court in which enforcement of the injunction is sought, transmit promptly to the other court a certified copy of all the papers in the case on file in such clerk’s office.

Although the statute appears to give courts wide discretion in determining what terms of an injunction are reasonable, courts have narrowly tailored the available relief. The majority view is set forth in Kepner-Tregoe, Inc. v. Leadership Software, 12 F.3d 527 (5th Cir. 1994). That case was a "reverse-engineering case" in which a substantially similar infringing copy of licensed materials was created by a licensee. Then the licensee "surgically removed" infringing portions. The district court found, and the Fifth Circuit affirmed, that this "child of the infringement" could be enjoined from distribution because it still retained substantially similar selection and arrangement. But the Circuit court unequivocally struck down any attempts of the district court to enjoin future distribution of versions that might be non-infringing. A number of courts have struck down attempts to punish the infringer's "head start" gained by making infringing intermediate copies. See Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d 772 (5th Cir. 1999); Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000). The Fifth Circuit made clear in Kepner-Tregoe that even if a licensee breached a license agreement by engineering its own competing software, that portion of the license agreement forbidding such activity might be void because such contracts are preempted by the Copyright Act. 12 F.3d at 538 citing Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 268-70 (5th Cir. 1988). Overreaching with your copyright, such as using it to protect uncopyrightable devices, is "copyright misuse" and is grounds for striking down an injunction. See, e.g., Alcatel, supra.

A plaintiff may have success in getting courts to enjoin non-copyrightable benefits or "fruits" gained from its infringing actions. See, e.g., Epic Metals Corp. v. Souliere, 181 F.3d 1280 (11th Cir. 1999). However, the majority of cases reject this approach, particularly in the area of reverse engineering where an infringing copy was made to develop a competing product or compatible device. See, e.g., Kepner-Tregoe.

Practice Tip for Lawyers: In seeking an injunction, there is a temptation to ask for the moon. A narrowly-tailored request for relief that focuses on actual infringing activities and copies stands a greater likelihood of being granted. Overreaching, even where supported by contractual language may backfire and subject you to claims of copyright misuse, particularly where the contract contravenes the Copyright Act.

Copyright for Labor Lawyers: The Work for Hire Doctrine (Ch 7)

Does an employee, independent contractor, or corporate officer own original copyrightable materials authored by that person in conjunction with the relationship to the employer? We look to 17 U.S.C. Section 101 (the Copyright Act's definitional section) as a starting point:

A “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. * * *

So, the employer owns the work if it is made by an employee "within the scope of employment" or if there is a written agreement (for certain works). To determine whether an individual was an employee, we look to the federal common law of agency, which was spelled out in a copyright case involving a sculpture called Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). The factors (the "Reid factors") considered include:
- the hiring party's right to control the manner and means by which the product is accomplished;
- the skill required;
-the source of the instrumentalities and tools;
- the location of the work;
- the duration of the relationship between the parties;
- whether the hiring party has the right to assign additional projects to the hired party;
- the extent of the hired party's discussion over when and how long to work;
- the method of payment;
- the hired party's role in hiring and paying assistants;
- whether the work is part of the regular business of the hiring party;
- the provision of employee benefits;
- tax treatment of the hired party

The Second Circuit in Eisenberg v. Advance Relocation & Storage, Inc., 237 F.3d 111 (2000) applied the Reid factors (the federal common law of agency) to determine whether a hired person is an employee or independent contractor for purposes of applying the Civil Rights Act of 1964, 42 U.S.C. Section 200e ("Title VII"). In Eisenberg, the court noted that the parties could agree whether or not an employee would have intellectual rights to copyrightable work product, but that Title VII antidiscrimination protections could not be bargained away.

The work-for-hire provisions of the Copyright Act have been applied in a wide variety of employment contexts:

- rejecting a claim that the author of a screenplay was an employee of a purported co-author/co-producer, Price v. Fox Entertainment Group, Inc., 2007 WL 241390 (S.D.N.Y)(SAS)

- rejecting a claim that a woman who walked into a recording studio and sang a countermelody for Jay-Z created a "work-for-hire" (applying the 5 "strongest" of the 13 Reid factors) Ulloa v. Universal Music & Video Dist. Corp., 303 F. Supp.2d 409 (S.D.N.Y. 2004)

- rejecting a teacher's claim that his Fourth Amendment rights to be free from illegal seizures was violated by confiscation of teaching materials created while he was a teacher and finding no copyright interest, Shaul v. Cherry Valley-Springfield Central School Dist., 363 F.3d 177 (2d Cir. 2004

- in a case involving the executor of her will, analyzing choreographer Martha Graham's relationship to her eponymous foundation at varying points in her career and making different findings as to whether works were "works-for-hire" depending on how she worked and was paid during her lifetime, Martha Graham School and Dance Foundation, Inc. v. Martha Graham Center of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004)

- permitting copyright infringement claims against former employee who took, modified and sold on behalf of competitor a copy of software, Jamison Business Systems, Inc. v. Unique Software Support Corp., 2005 WL 1262095 (E.D.N.Y.)

- denying summary judgment motion made against police union employee who wrote songs such as "Rudy the Fox" and "Badillo Beat" for childhood abduction awareness programs. Brower v. Martin, 446, F. Supp.2d 232 (S.D.N.Y. 2006)

As former employers increasingly seek to use the Copyright Act's damages and attorneys fees for theft of corporate materials, labor and employment lawyers will be confronted with these issues.

First Sale Doctrine as A Defense to Copyright Infringement (Ch 12)

When you purchase a book, you can read it, then resell it to someone else. There's quite a traffic in used books. Other copies of works subject to copyright may be resold, such as a CD containing a sound recording.

In Brilliance Audio, Inc. v. Haights Cross Communications, Inc. ---F.3d ---, 2007 WL 188103 (6th Cir. 2007) a case discussed on the Patry Copyright Blog, the Sixth Circuit analyzed the first sale doctrine in both the trademark and the copyright context. Brilliance produced audiobooks. Haights Cross purchased a copy of Brilliance's sound recording. It then repackaged the copy, and offered the copy for rental.

Generally speaking, one may rent a copyrighted work that one has purchased. The two exceptions, elaborated at 17 U.S.C.A. Section 119 involve sound recordings and software. In other words, if you buy a musical recording or a copy of Microsoft Office, you can't rent those copies out.

The Sixth Circuit found that on the trademark claims, the plaintiff's actions fell within two exceptions to the trademark first sale doctrine: (1) the plaintiff alleged a repackaging without adequate notice to the consumer and (2) the repackaged materials using the plaintiff's trademark were materially different from those produced and labelled by the plaintiff.

The Sixth Circuit also found that Section 119's rental exception to the first sale doctrine did not apply to sound recordings based on literary works, but only sound recordings based on musical works. The lone dissenting judge pointed the majority to the plain language of Section 119 which appears to ban rentals of all sound recordings.

The Sixth Circuit noted that this was a case of first impression. It will be interesting to see whether a rental market will suddenly spring up around the works of Bill Cosby, George Carlin, Richard Pryor, Robin Williams and other works of comic genius that do not incorporate music.

Procedural Note: The District Court dismissed plaintiff's claims on a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure "because the defense of first sale appeared on the face of the complaint." The Sixth Circuit construed the complaint broadly and in the light most favorable to the plaintiff and reversed. The Sixth Circuit did not criticize the maneuver of moving to dismiss under Rule 12(b)(6) based on a defense appearing on the face of the complaint.

Practice Tip: Where your client has legally purchased copies of works that were manufactured with the authority of the copyright holder, you may assert the first sale doctrine. If factual allegations appearing on the face of the complaint support assertion of the first sale doctrine, consider a motion to dismiss. NB. Be careful about resales in the U.S. of products manufactured abroad. The first sale doctrine may not in certain circumstances extinguish all distribution rights of the copyright holder in these products.

Copyright Recapture By Authors and Heirs (Ch 7)

An exciting period of negotiating and litigating is starting to pick up: authors and heirs of authors are starting to exercise their rights to "recapture" copyrights that had already been sold to publishers, record companies and other content owners. Content owners will come under increasing pressure to squeeze value from copyrights in their waning years - - and projects involving recaptured properties will dot our cultural landscape for the coming years.

The cases to date have dealt with such important properties as Winnie-the-Pooh, Lassie, Captain America and certain Steinbeck works

For a great article on copyright termination from a living author's perspective (17 U.S.C. 203 - Termination of transfers and licenses granted by the author), check out Margo E. Crespin's "A Second Bite of the Apple: A Guide To Terminating Transfers under Section 203 of the Copyright Act" which is found at the Authors Guild website.

For a cookbook/questionnaire type approach that has a useful discussion of how to figure out whether or when you can get your client's copyright back, check out Creative Commons' ccLabs Termination of Transfer Tool. Read the FAQ - these are the questions that your clients will be asking you in coming years. 17 U.S.C. 304 governs terminations of grants of pre-1978 copyrights by authors and their heirs.

The Crespin article and the Tool are very helpful since the language and meaning of Sections 203 and 304 is very difficult to master.

Trusts and estates attorneys take note! The Copyright Act has a number of succession provisions that trump the language of an author's will. Federal law is said to "preempt" state law in this area.

Copyright Restoration Act - Locating Restored Works

Section 104A of 17 U.S.C. restored copyrights in certain foreign works that had fallen into the public domain due to a failure to carry a copyright notice. The restored copyright vests initially in the author or initial rightholder of the work. If an owner intends to enforce the copyright against someone who used the work in the U.S. based on that person's reliance on the work's public domain status, the owner must file a notice with the Copyright Office, which must in turn be published in the Federal Register.

To search the Copyright Catalog to find Notices of Intent to Enforce (NIE), go here.
To get the Copyright Office's Federal Register notices indexed by year and title or subscribe to an RSS feed to get them automatically, go here.To search the entire Federal Register for recent years go here.


To search the Code of Federal Regulations for any number of reasons, go here.