Sunday, December 28, 2008

Nondisclosure Agreements and Software Development: Where To Sue?

You are in Illinois. You file an action in state court. The adversary removes the action to federal court. In federal court, the adversary moves to transfer to California. You move to remand to state court in Illinois. The federal judge doesn't decide your remand motion, but decides to transfer the action to California. What are your options?

In re Limitnone LLC, -- F.3d---, 2008 WL 5254359 (7th Cir. December 19, 2008) gives us the answer. You may properly file a writ of mandamus. The decision on Findlaw is here. The original petition for a writ of mandamus is filed directly with the Court of Appeals, in this case the Seventh Circuit.

The factual underpinnings of the case are of great interest to software developers. Google and Limitnone signed a nondisclosure agreement ("NDA"). The NDA related to a program Limitnone had developed to move information from Microsoft Office apps to Google's competing apps. The program was called gMove. The NDA had a dispute resolution clause that venued all disputes in California.

Limitnone provided a Beta version of its program to Google. The Google employee had to click "I accept" on a "Beta License Agreement" to use the Beta version of the gMove. Months passed, and Google announced that it was launching an app that did what gMove did and would give it away for free. The Beta License Agreement specified Illinois courts and Illinois law.

The district court and Seventh Circuit found that the Beta License Agreement was not valid because it was not signed and was not in writing, and thus transferred the case to California. The odd thing is that the basis for the removal to federal court was that was that the Copright Act preempted the Illinois trade secrets statute relied on by Limitnone.

The Seventh Circuit held out the possibility that Limitnone might still make a motion for a remand.

If the action was improperly removed to federal court, then Limitnone might end up in a state court after all.

Friday, December 26, 2008

Copyrights in Floor Plans are "Thin": Summary Judgment Granted

Intervest Construction, Inc. v. Canterbury Estate Homes, Inc., --- F.3d ---, 2008 WL 5274274 (11th Cir. December 22, 2008). The Eleventh Circuit considered a copyright infringement case involving two similar floor plans for a four-bedroom homes. The district court judge granted summary judgment in favor of the defendant. On appeal, the appellant argued that the lower court had inappropriately focused on the dissimilarities between the two floor plans and had not properly analyzed the similarities.

The Eleventh Circuit that architectural works such as floor plans are necessarily compilations of many standard elements, such as"common windows and other staple building components." Thus, what is protectible is an architect's arrangement of such standard features. Citing the U.S. Supreme Court's Feist decision, the court found the author's copyright in such a compilation to be "thin" and limited to the selection and arrangements of non-copyrightable elements. Thus, a "narrow analysis" of only the original arrangement is appropriate. In such a case, where there is a "substantial dissimilarity" of the potentially protectable elements, summary judgment is appropriate.

The Eleventh Circuit found that the district court appropriately did not consider the similarities in the plans which related mainly to such standard features, and instead properly analyzed the arrangement of such features, which was the potentially protected copyrightable contribution of the architect. Agreeing with the district court that "no reasonable, properly instructed jury could find the works substantially similar", the Eleventh Circuit affirmed.

Sunday, December 21, 2008

Can A Car Be a Copyrighted Character in a Film?

In Halicki Films LLC v. Sanderson Sales and Marketing, 547 F.3d 1213 (9th Cir. Nov. 12 2008), the Ninth Circuit Court of Appeals considered a dispute over the rights to merchandise the rights to a car named Eleanor in the 1974 film "Gone in 60 Seconds". The owner of the rights to the 1960 film licensed the rights to make a remake of the film (a "derivative work" under the Copyright Act). But the owner retained the right to "manufacture, sell and distribute merchandise utilizing the car known as 'Eleanor' from the Original [Gone in 60 Seconds]". The main question presented was whether the license agreement retained the rights to merchandise the "Remake Eleanor". The court found that the owner had retained the rights to "Remake Eleanor". An additional question presented was whether a car in a film could be a copyrighted character. The court discussed the caselaw distinguishing literary characters from comic book characters. Literary characters, such as Sam Spade are "difficult to delineate and may be based on nothing more than an unprotected idea". But comic book characters have "physical as well as conceptual qualities [and are] more likely to contain some unique elements of expression."
The Ninth Circuit found that "the Eleanor character"..."can be seen as more akin to a comic book character than a literary character." The court found that Eleanor "displays consistent, widely identifiable traits" and is "especially distinctive". The court based its finding on the fact that whenever a human tried to steal Eleanor, it became very difficult, and because the main human character referred to his long history with Eleanor. The Ninth Circuit remanded for a finding of whether Eleanor is entitled to copyright protection and for the district court to "examine whether Eleanor's physical as well as conceptual qualities and ... unique elements of expression" qualify Eleanor for copyright protection.
So the perfect gift for the copyright litigator who has everything? A DVD of the original 1974 and the 2000 Gone in 60 Seconds Spend your holidays discussing whether Eleanor is a copyrighted character. Compare Chitty-Chitty-Bang-Bang, Herbie the Love Bug and Stephen King's murderous Plymouth "Christine Plymouth "Christine". While Rudolph the Red-Nose Reindeer has my vote as a copyrighted character-component of Santa's sleigh, it is hard for me to see the copyrightable expression of a Ford Mustang outside its existance as an object, and no matter what the actions of humans surrounding the Ford Mustang may be, I can't see how that can be attributed to Eleanor.

Saturday, December 20, 2008

Renoir-Guino: Interminable Foreign Copyrights

A series of sculptures was created and published by Pierre-Auguste Renoir in 1917 in France. Renoir died in 1919. The sculptures were published without a copyright notice. Guino died in 1973. In 1973 (56 years later) Guino (or his estate) obtained a determination in a French court that he was co-author of the sculptures, and was awarded a one-half interest in the sculptures.
In 1984, a company representing the joint interest of certain Renoir family members and the Guino family ("Societe Civile Succession Richard Guino") obtained US copyright registrations based on a claim that the sculptures were unpublished or first published in 1983.
In 2003, Jean-Emmanual Renoir, a great grandson of Renoir, sold "some of the sculptures, or molds or castings thereof" to a gallerist in Scottsdale, Arizona.
The Societe Civile Richard Guino sued Renoir's great-grandson for copyright infringement. Since works published prior to 1923 are all in the public domain, how could this possibly happen?
The Ninth Circuit took a case called "Twin Books" involving publication of the story of Bambi in Germany in 1923 without notice and again in 1926 with notice. The Ninth Circuit made a number of extrapolations from the Twin Books case. I won't go through the reasoning which involves the interplay of the 1909 Copyright Act, the 1976 Copyright Act and the Copyright Restoration Act, but suffice it to say that the Ninth Circuit's rule is that if an ancient Greek vase is discovered tomorrow, its copyright term would be the "finite term of seventy years after the death of the last author [under sections 303(a) and 302(a) and (b)] or December 21, 2047 whichever is later."
The case appears to hold that any foreign publication of a work without copyright notice is to be treated as if the work was not published.
The case is Societe Civile Succession Richard Guino v. Renoir, -- F.3d ---, 2008 WL 5142844 (9th Cir. December 8, 2008). Poor great-grandson Renoir and the gallerist to whom he sold the works also lost Lanham Act claims for false advertising. Rebecca Tushnet's here, and Michael Atkins here. William Patry, who calls the case a "brain-teaser" here. Renoir-Guino photos found here.

Saturday, November 08, 2008

Right of Publicity in a Famous Voice: Copyright and False Endorsment Claims from the Grave

In Facenda v. N.F.L. Films, Inc., 542 F.3d. 1007 (3d Cir. Sept. 9, 2008), the Third Circuit tackles a major league set of questions. First, if a copyright owner in a video recording uses portions of the copyrighted sound recording containing a famous voice in promoting a video game, does the long dead famous football announcer's estate have claims for false endorsement under the Lanham Act? The answer is yes.
Second, if a copyright owner has the exclusive right to prepare a derivative work, doesn't this preempt any state-law right of publicity statute?
The answer is sometimes yes, sometimes no.
The NFL produced a 22-minute "documercial" (if you really want to know the difference between a documercial and an infomercial, you will have to read the 26-page decision). The documercial promoted the Madden '06 video game and used modified sound recordings of the legendary football announcer John Facenda's voice. Though he is long dead, Facenda's voice is still remembered, see his page on Wikipedia. Thanks, Wikipedia for the Madden 'O7 image accompanying this text. Madden '08 here.
Was the documercial "commercial speech"? Was it a product endorsement as Facenda's estate urged or was it a documentary? The court found that the video was an advertisement. Facenda had given the NFL a release shortly before his death that permitted the NFL the right to use his voice and image as long as it was not used to promote a product. The NFL's use was found to be a false endorsement in violation of section 43(a)(1)(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1). The court's discussion of the First Amendment's limitations on the Lanham Act is an interesting one.
Section 301(a) of the Copyright Act preempts legal and equitable rights that are "equivalent to" the exclusive rights protected by the Copyright Act. The court considered the cases that treat a person's "persona" as something independent of copyright's subject matter.
Essentially, in an excellent overview of the case law treating the extent to which a person who participate in the creation of a copyrighted work has surrendered their persona for promotional purposes, the court held that where the copyrighted work is excerpted to promote that expressive copyrighted work, such uses are preempted by the Copyright Act. But where a person's image, or in this case - their voice - is taken from one copyrighted work to promote another product, under certain circumscribed circumstances, which the court found in the Facenda case, such uses may violate that person's right of publicity.

Sunday, November 02, 2008

Nazi Looted Art, Fernand Leger and the Minneapolis Institute of Arts

Last week the Minneapolis Star Tribune reported that the Minneapolis Institute of Arts had restituted Fernand Leger's 1911 painting "Smoke Over Rooftops" to the heirs of Alfonse Kann. The article is here. According to the article, it took the heirs ten years of researching and working with the MIA to achieve restitution.
Why such a delay? Many archives are not accessible, much research remains to be done. And there is very little research into a central figure in Nazi art looting: Curt Valentin. Valentin was mentioned in passing in Lynn Nicholas's excellent and groundbreaking work The Rape of Europa (now a film available on DVD).
Curt Valentin left Berlin in 1937 to establish an art gallery in New York City. The gallery was named after Karl Buchholz, one of the four art dealers appointed by Hitler to liquidate art considered "degenerate" by the Nazi regime. I have included a jpeg image above of a letter dated November 14, 1936 from the Reich Chamber of Fine Arts to Curt Valentin stating the following:
Re: Your letter of 22 September 1936
The President of the Reich Chamber of Fine Arts instructed me to tell you that it would be of no objection to him if you make use of your connections with the German art circle and thereby establish supplementary export opportunities, if [this is done] outside Germany. Once you are in a foreign country, you are free to purchase works by German artists in Germany and make use of them in America. ###
The letter bears a stamp with an eagle clutching a wreathed Swastika and is found in the Jane Wade papers, Archives of American Art, microfilm reel #2322, frame 929.
The collections of the Philadelphia Museum of Art (see provenance of El Lissitzky's Proun 2 here, the Museum of Modern Art (a search of the website finds over 40 results for Valentin including a Beckmann here) and many others are full of works purchased from Curt Valentin. When art dealer Otto Kallir came to the United States from Vienna, Austria in 1939, he went to Curt Valentin's gallery on 57th Street in New York City to pick up artworks safely transported out of Nazi Austria. Boston's Museum of Fine Arts has a Beckmann portrait of Valentin here.
Curt Valentin was also the art dealer of choice for Alfred Barr, the founder of the Museum of Modern Art. As Alice Goldfarb Marquis, author of Alfred H. Barr Jr.: Missionary for the Modern, wrote to the New York Times here,
On June 30, 1939, the Fischer Gallery in Lucerne auctioned 150 items. Many dealers boycotted the sale of these stolen works. One of the bidders was Curt Valentin, a German refugee dealer, who owned the Buchholz Gallery in New York. He was there at the behest of Alfred Barr, director of the Museum of Modern Art in New York, who provided money donated to the museum.
Mr. Valentin bought five works: Andre Derain's "Valley of the Lot at Vers," stolen from the Cologne Museum; E. L. Kirchner's "Street Scene" and Wilhelm Lehmbruck's "Kneeling Woman," both taken from the Berlin National Gallery; Paul Klee's "Around the Fish," pilfered from the Dresden Gallery, and Henri Matisse's "Blue Window," seized from the Essen Museum.

So why don't all of the other museums return the stolen artworks that they purchased through Curt Valentin? Why don't the other museums frankly acknowledge Curt Valentin's status as a Nazi agent from 1936 through the end of the war?

On Saturday, September 16, 1944, the Federal Register published an Executive Order dated May 29, 1944 describing a seizure of enemy property by the Alien Property Custodian (a U.S. official empowered by the Trading With the Enemy Act). The seizure was of Karl Buchholz's property, destined for Curt Valentin's gallery on 32 East 57th Street. The list (it looks like over 200 artworks) includes the following artist: Ernst Barlach, Max Beckmann, Marc Chagall, Edgar Degas, Otto Dix, Werner Gilles, Erich Heckel, Carol Hofer, Heinrich Campandonc, Gerhard Marcks, Otto Mueller, E.V. Nay, Emil Nolde, Gaston Louis Roux, K. Schmidt-Rottluff, Renee Sindonis, Alex Jawlensky, Oskar Kokoschka, George Kolbe, Kaethe Kollwitz, Alfred Kubin, Wilhelm Lembruck, Fernand Leger, and August Macke.

If you wish to have a moment of tranquility in New York City, you can to to the MOMA's beautiful garden. You'll find August Rodin's Monument to Balzac (1898). It was presented in memory of Curt Valentin by his friends.

Saturday, November 01, 2008

Copyright, Software Programmers and The Implied Unlimited License to Use and Modify

In Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (9th Cir. Sept. 9, 2008), the Ninth Circuit found that a computer programmer granted AMS an "unlimited, nonexclusive license to retain, use, and modify" custom software that the programmer Gagnon dba "Mister Computer" had designed. AMS is a company located in San Diego engaged in, inter alia, "information technology consulting". When AMS employees booted up, they saw a copyrighted "Mister Computer" notice. During the course of dealing between the parties, the issue of AMS using the software after the ongoing consulting relationship was not expressly addressed. At a late point in the relationship, the parties exchanged proposed contracts and written statements reflecting their respective understandings (which differed). AMS eventually terminated the contract, hired most of Mister Computer's employees, and moved happily ahead. During the course of negotiations, Mister Computer variously made exorbitant demands for the continued use of his copyrighted software programs, asserted that the source code was a trade secret, and belatedly registered his copyrights. The legal action started when AMS sued in state court on employment claims, Gagnon removed and counterclaimed for copyright. I am not sure how, but the state claims to have gotten remanded (leaving only federal counterclaims), and then AMS appears to have dropped the now remanded claims in state court and then asserted its state law claims as "counter-counterclaims" to Mister Computer's federal counterclaims in the federal action. Whew!
The court's decison turns around the mysterious language of 17 U.S.C. Section 204(a). Section 204(a) requires that a transfer of copyright be in writing, signed by the owner. The case law has not required a writing for a transfer of a non-exclusive license. I discuss non-exclusive licenses as a litigation defense at Section 13:12 of Copyright Litigation Handbook (3d Ed. West 2008).
The 9th Circuit had previously considered implied licenses in the context of movie special effects and architectural drawings. To illustrate: someone is paid $56,000 for special effects film footage, delivers it, then claims the film company can't use it. Effects Assocs. Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (link courtesy This is the "Moviemakers do lunch, not contracts" case.
But in this very hot area of work-for-hire disputes - the implied license doctrine has now been applied to software, substantially reducing the leverage that outside consultants may wield over clients who have not protected themselves in acquiring custom software.
An implied license may be found where (1) licensee requests creation of a work; (2) the creator makes the work and delivers it to the licensee who requested it; (3) the licensor intends that the licensee-requestor copy and distribute his work.
The AMS court found that Mister Computer intended, through "objective manifestations" that AMS "use, retain and modify" the software programs as well. Mister Computer should have put a better warning on his material. Now large and sophisticated software users, too, can do lunch, not contracts.

Sunday, October 26, 2008

Declaratory Judgments on Unregistered Copyrights: A Cobbler's Dilemma

Stuart Weitzman LLC v. Microcomputer Resources Inc., 542 F.3d 859 (11th Cir. Sept. 12, 2008).
What happens when your custom computer programmer sends you a cease and desist letter telling you that you have the right to use the software they built for you, but that you do not have the right to possess the source code and that it "cannot be modified, changed or reverse engineered by anybody."
Well, the Stuart Weitzman people responded with a declaratory judgment action. They claimed that they were being accused of copyright infringement, that the subject matter was completely pre-empted, that there was a "case or controversy", that the court had federal jurisdiction. Seems pretty simple, right?
Wrong. The computer vendor had not registered the copyright in the software program, and Weitzman did not contest that the vendor owned the copyright. Nor could the Weitzman folks think up any state-law claims that they could seriously be sued for, which might raise a federal question to be decided (interpretation of the copyright act). Weitzman argued that the "federal question" raised was an anticipated copyright infringement action, and asked the court to construe Weitzman's defenses under 17 U.S.C. Section 117 (you are allowed to copy a computer program if such copying is necessary to run the program).
So the case was dismissed on subject matter jurisdiction, simply because the computer company had neither sued nor filed a copyright registration. This result appears to be anomalous and not in the spirit of other declaratory judgment cases. It is not clear that Weitzman showed how the business would be immediately and irreparably harmed by the cease and desist letter or that the controversy was "ripe".

Sunday, October 19, 2008

The Pro-IP Act of 2008: Copyright and Trademark Enforcement

On October 13, President Bush signed into law the Prioritizing Resources and Organization of Intellectual Property (PRO-IP) Act. The bill was introduced by Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.).

The legislation was vigorously opposed by the Department of Justice, find their position here courtesy of the EFF. The main objection is that the DOJ will now have the power to bring civil actions and is forced to turn the proceeds over to private industry, essentially making what is now a private system of enforcing copyright and trademark laws a government function. The DOJ also felt that appointment of an IP Czar with the duties described in the legislation would violate the principle of separation of powers between the Executive and Legislative branches of government.

An excerpt from Senator Leahy's website:

Title I
· Title I enhances civil intellectual property rights laws and improves remedies. First, it adds a harmless error provision to the registration requirement for instituting a suit, so that an infringer cannot avoid liability based on a harmless error in a registration.
· Second, it gives copyright owners the same rights as trademark owners to impound records documenting the infringement, while including protections to ensure a court will issue an appropriate protective order.
· Third, title I increases statutory damages in counterfeiting cases and applies them not only to those who intentionally use a counterfeit mark, but also to those who supply goods necessary to the commission of a violation of the Trademark Act, if they intend that the recipient of the goods or services would put the goods or services to use in committing that violation.
· Finally, Title I applies the copyright laws not only to imported goods, but also to exported items.
Title II
· Title II improves and harmonizes the forfeiture laws governing intellectual property rights violations. It creates a new forfeiture section for both civil and criminal forfeiture, building off the model in the Protecting American Goods and Services Act passed in the 109th Congress. It protects against the possibility that third party information may be disclosed by including protections to ensure a court will issue an appropriate protective order with respect to information found on items seized.

[there is a fuller description on Sen. Leahy's site]

Here is the text of the Senate version of S.3325 courtesy of Wired. From the private litigant's perspective, note that 17 U.S.C. Section 411 is amended to permit infringements where the registration has certain inaccuracies, 17 U.S.C. Section 503 now permits seizure of the books and records of an infringer (subject to a mandatory court-issued protective order), a weapon that trademark plaintiffs have long had. For trademark cases, 15 U.S.C. 1117 has been amended to enhance statutory damages and to treble damages plus attorneys fees and prejudgment interest. Section 602 is amended to make exporting infringing goods a violation.

The press has picked up on the aspect of the legislation that appoints an Cabinet-level IP Czar called an IPEC. There are also extensive governmental agency reporting requirements on programs to exhort state and federal law enforcement authorities to learn and enforce IP laws.

Copyright is an area of the law in which federal law has completely preempted state law. Copyright and trademark laws have real teeth. Law enforcement officials and private practitioners are highly skilled in working together on these issues, particularly in combating piracy in the domestic U.S. IP laws are very confusing and hard to follow for people who do not have serious training. Senator Leahy should not be sending state troopers onto this well-trodden ground.

Let's hope the new President has a sensible approach to these issues.

Saturday, October 18, 2008

International Copyright and the First Sale Doctrine: Costco Can't Import Genuine Watches From Switzerland

According to the Omega watch company's website,

"When Daniel Craig reprises his role as James Bond in Quantum of Solace, he will be wearing an OMEGA Seamaster Planet Ocean 600m Co-Axial Chronometer with a black dial [ ...]. Bond fans and OMEGA enthusiasts will know that 007 has been wearing Seamasters featuring blue dials since 1995 so the black watch face on the Seamaster Planet Ocean in Quantum of Solace marks a departure for James Bond. "

The first sale doctrine is codified at 17 U.S.C. Section 109 (a) says that if you own a copy of a copyrighted work "lawfully made under this title", you can sell or "otherwise dispose of" it. Section 109(b) says that even if you own copies of phonorecords or software, you can't rent them.

The language seemed pretty clear. So when Costco bought genuine Swiss Omega watches through someone who purchased them from an authorized dealer in Switzerland, Omega thought it perfectly legal to sell them in the U.S. The U.S. district court judge agreed, awarding Costco hefty legal fees when Omega claimed that such importation of authentic, genuine, non-piratical watches that it owned.

Copyright owners often set up territories throughout the world and appoint distributors for various territories. When a purchaser from a high-cost territory buys the copyrighted work in a low-cost territory, this is known as "gray market" goods. Retailers save money by buying from the lower-cost territory.

In Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008), the Ninth Circuit reversed the district court and found that Omega could use Section 106(3) and 602(a) of the Copyright Act to claim copyright infringement for unauthorized distribution.

For the first sale doctrine to apply, there must be an authorized first sale in the United States. For a copy to be "lawfully made under this title [17 U.S.C.]" - it means made in the U.S.

The result is that even if you buy genuine copyrighted works from a foreign representative of a copyright owner, you infringe copyright if you import and sell them in the U.S. without the copyright owner's permission.

Will James Bond get busted for pawning his Swiss-purchased Omega in the U.S.?

Sunday, September 28, 2008

Encyclopedias of Facts About Fiction: J.K. Rowling and Harry Potter

Warner Bros. Entertainment Inc. v. RDR Books, --- F. Supp.2d ---, 2008 WL 4126736 (9/8/2008) S.D.N.Y., Patterson, J.
A Harry Potter fan created a lexicon, available on the internet. The lexicon was popular with everyone, including J.K. Rowling and the people who made films about her books. Rowling wrote on her website "This is such a great site that I have been known to sneak into an internet cafe while out writing and check a fact rather than go into a bookshop and buy a copy of Harry Potter (which is embarrassing)." But when the fan published a book with the website's contents, Rowling sued, claiming copyright infringement. The defense was "fair use".
The court found that the defendant copied from the Harry Potter books, and indeed, copied too much and too clumsily to qualify for the fair use. The defendant failed to properly use quotation marks to indicate "borrowed" text. Also, the defendant borrowed too much expression from the originals. Significantly, Rowling had already prepared two lexicon-type works "Fantastic Beast & Where to Find Them" and "Quidditch Through the Ages", and the defendant had borrowed verbatim many of Rowling's own definitions relating to her Harry Potter fantasy world.
The court noted that there is a usefulness and a demand for reference guides to fictional worlds written by third parties, such as Paul F. Ford's Companion to Narnia: A Complete Guide to the Magical World of C.S. Lewis's The Chronicles of Narnia.
After closely weighing the "fair use" factors, the court issued a permanent injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure against publication of defendant's book. The court found that where a prima facie showing of infringement was made, irreparable harm is presumed, but questioned whether that presumption had survived the U.S. Supreme Court's decision in eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006).
From the decision, it appears that the court was quite sympathetic to the defendant's apparent underlying goal of publishing a reference guide without Ms. Rowling's consent and was cognizant of the social utility of this type of publication. If the publisher had done a better packaging and editing job, had worked with the plaintiff to remove the more extensive borrowings, provide better citations and added a bit more "scholarly" commentary, it appears that the court would have found fair use.
As in most of these fair use cases, the devil is in the details.

Saturday, September 13, 2008

Film Production, Rights of Publicity and Borat

Lemerond v. Twentieth Century Fox Film Corp., 2008 WL 918579, 87 U.S.P.Q.2d 1219 (S.D.N.Y.)(LAP). Psenicska v. Twentieth Century Fox, 07 Civ. 10972 S.D.N.Y, September 3, 2007 (Preska, J.) found here courtesy of How Appealing.
When you make a film, do you need a person's permission before you put that person's image in your film? Can you "commercialize" the person's image without their consent? And if you do obtain a "release" from the person, are there limits to what you can use the image for?
Not surprisingly, Sacha Baron Cohen of Borat and Da Ali G Show fame has pushed everyone's limits on these issues.
In making the film Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan, Cohen went out into the streets dressed up as his fictional Borat character, accosted a man in the streets of New York City, and included the footage of the encounter in both the film and the trailer. Is that ok?
New York's Civil Rights Law Section 51 creates a cause of actions for "[a]ny person whose name, portrait, picture or voice is used within [New York] for advertising purposes or for the purposes of trade without" their written consent. There is a broad "newsworthiness" exception to the statute. In dismissing plaintiff's claims, Judge Loretta Preska found that Borat's childish and vulgar character was engaging in a commentary on American society and was accordingly, newsworthy.
In the Psenicska case, numerous plaintiffs executed releases that were sprung on them at the last minute before filming. The releases were detailed and indicated a consent to participate in a "documentary-style" film. During each segment, each plaintiff was subjected to offensive, humiliating and outrageous behavior from Cohen. Analyzing the question under New York contract law, the court found the term "documentary-style" - to accurately portray the Borat film's content. The court dismissed the fraudulent inducement claims, noting that such claims were specifically waived by the language in the release.
In producing a copyrighted work such as a film, one must take care to ensure that it consists of underlying content that is obtained properly. Had these issues not been litigated in New York, or release not been obtained, the result would surely have been different. The broad language of New York's Civil Rights law is narrowed substantially by the case law.

Tuesday, September 09, 2008

Direct Infringement and Digital Video Recorders: Catch as Cache Can

Cartoon Network LP v. CSC Holdings, Inc., --- F.3d ---, 2008 WL 252614 (August 4, 2008). Instead of taking a satellite signal and broadcasting it straight into your home at the time dictated by the broadcaster, your local cable company sets up a very fancy digital box (Digital Video Recorder or “DVR”). A DVR permits you to use your remote control, point it at the television, and program that digital box to copy a future broadcast. When the broadcast comes in, the digital box copies the broadcast for you. When you want to view the broadcast at a different time, you and your family can access the copy on the digital box.

Most of us think of a DVR as something we buy, put underneath the television, puff out our chests and think “fair use” as we make a personal use copy.

But what if the box is miles away from your home, is owned by your local cable company, and is a massive computer monster that invites everyone to make copies from it. Has the cable company made a copy? Or did you make a copy? And if you play your copy by hitting the remote and putting the copy in the digital box in motion, did you infringe?

Well, one would have guessed that the cable company had engaged in copyright infringement, one way or another. And that’s what the local district court found. But on appeal, in an August 4, 2008 decision that will make happy those who really dig the technological questions involved in litigation over devices that make copies, the Second Circuit Court of Appeals reversed.

Why? Well, most of us acting as a plaintiff who owned a copyright would have alleged that the cable company had engaged in both direct copying and indirect or contributory infringement. Really, that DVR seems like a very Napster-like infringing mechanism that permits people who pay the cable company to make infringing copies and for the cable companies to profit.

But in a very thoughtful decision that really delves into the technology involved and the legislative history involved, the Second Circuit really digs into the question of what constitutes a copy, what is necessary for fixation of the copy and how much time a copy must exist to be a copy, with a very thorough survey of the law related to various ephemeral copies, such as a copy of a program made that boots up into your computer’s RAM. The Second Circuit found that “fixation” of the copy imposes both an “embodiment” requirement and a “duration” requirement. The Second Circuit found that the machine’s buffering system, which made a copy of .1 seconds of each channel’s programming at any one time and such content did not last for more than 1.2 seconds. The Court found that the plaintiff’s copyrighted material was not “fixed” in the buffers for an amount of time sufficient to satisfy the "duration" aspect of fixation and therefore that the buffers did not make an infringing copy.

The most interesting part of the decision discusses the question of whether or not the cable company is directly liable for creating the copies. And in a discussion of copy shop cases and the Supreme Court’s Sony v. Universal Films case, the Second Circuit emphasized that the U.S. Supreme Court and the Copyright Act really make a distinction between direct copying and contributory liability for someone who actively induces an infringement.

So the court found that it is the actual consumer who makes the copy by pre-programming the digital box to capture the incoming broadcast for later use. In the case, the plaintiffs for some reason did not allege that the cable company engaged in contributory infringement, so the lower court’s decision was reversed. The Second Circuit explicitly kept open the question of whether the cable company was liable as a contributory infringer.

On the issue of whether playing the new copy at a different time by the consumer constituted a “performance” which required a license from the plaintiff copyright owners, the court’s answer was “no”.

This is an important, difficult and complex case, and worth reading. It is likely to be influential in litigations involving services that make potentially copyrighted materials available to consumers.

Saturday, September 06, 2008

Creative Commons, Open Source, Copyright and Contract Law

For a number of years, activists dismayed at how commercial enterprises exploited copyright agitated to change the nature of how copyrighted works affected creative collaboration. They imagined a world of greater creative collaboration where everyone would still be able to make a living.
Authors, artists and musicians who wished to have their works used in others' materials could signify their interest.
Information and tools to understand this movement, including the "creative commons" marking and sample licenses are available at the Creative Commons website.
Wikipedia is a stunning example of this type of creative collaboration.
But what about the making money part? If you put your work on the internet and tell everyone that they can use it, are these very creative "creative commons" licenses going to eventually help you make a living? Can these licenses be enforced? And if someone ventures beyond the terms of the license, is that a breach of contract or is it copyright infringement?
The issue went from an interesting and hotly debated academic question to a tremendous commercial reality with the advent of the "open source" software movement, which adopted a creative commons-type license. Essentially, software programmers put up programming code that anyone can download, modify, use and distribute for free, as long as the "borrowed" or "open source" code is clearly indicated and enabled for the distributee to copy, download and use.
On August 13, 2008, the Court of Appeals for the Federal Circuit decided Jacobsen v. Katzer, 2008 WL 3395772, a decision that reviewed a district court's denial of a preliminary injunction to the owner of programming code who sued a person who downloaded his code, removed the identifying materials, and sold a new software package commercially.
The district court found that the open source license was an intentionally broad non-exclusive license unlimited in scope. Rather than being a matter of "copyright infringement", the issue became one of "breach of contract". The district court's holding meant that the owner of the open source code would be stripped of powerful rights and remedies available in federal court to copyright owners who are victims of copyright infringement, including the right to injunctive relief.
Generally, a copyright owner who grants a nonexclusive license to use copyrighted materials waives the right to sue the licensee for copyright infringement. But where a license is limited in scope and the licensee acts outside the scope, the licensor can sue for copyright infringement.
The Court of Appeals framed the issue as follows: if, under California law the terms of the open source license were "conditions" for the use of the copyrighted materials, then use outside such conditions would be copyright infringement. If, however, the terms of the open source license were "covenants" under state contract law, then the open source owner would be limited to remedies for breach of contract.
Analyzing the terms of the open source license, the Court of Appeals found that its provisions were "enforceable copyright conditions" for the use of the copyrighted material and that copyright remedies would be available to the owner.
The Court of Appeals decision contains an excellent discussion of the commercial benefits flowing from open source collaboration that cannot be measured in terms of traditional royalties. This is a well-reasoned opinion that is a strong victory for the owners of these copyrighted works. According to Creative Commons, it is estimated that approximately 100,000,000 works are licensed under various Creative Commons licenses. The court noted that both Creative Commons and the Wikimedia Foundation filed friend of the court (amicus curiae) briefs in support of the appeal.
While the question of how or if many of these copyright owners will seek or achieve returns on their investments is an open one, this case is a clear victory for the rights of copyright owners who want to make their works available through the digital commons.

Monday, September 01, 2008

Associated Press v. Moreover: Hot News, Linking and Getting Legal Documents From Pacer

Associated Press v. Moreover, a recently-settled copyright infringement and "hot news" misappropriation case in the Southern District of New York, brought up the issue of what search engines can take when displaying the content of others. Moreover is a news aggregator that searches 3.5 million blogs and news sources for content and delivers links to its clients. When Moreover links to AP's content (without asking), Moreover includes 255 characters from the underlying content with the link.

Moreover filed a motion to dismiss on November 7, 2007. A review of the docket sheet shows that AP never responded to the motion and apparently after many extensions of time, agreed on some undisclosed basis to dismiss the action. In the memorandum of law in support of the motion to dismiss, the hot case cited was Perfect 10 v. Amazon, 487 F.3d 701 (9th Cir. 2007), a case I have discussed previously that extolled the virtues of a video engine search.

In this age of Electronic Case Filing, anyone can search a federal court's docket sheet for a civil action through and pull down electronically-filed documents. The documents are in PDF format, and by hitting "Save As" you can copy a document to your computer's directory. There is a modest charge associated with getting an actual document (I think that the Moreover memorandum cost me $2.97). But if you want the blow-by-blow on a case, checking a docket sheet doesn't cost anything and can quickly let you know if you've missed anything.

According to AP's 8/18/2008 press release: "AP is pleased to have resolved the litigation in an amicable manner and appreciates VeriSign and Moreover's efforts to resolve AP's concerns," said AP Vice President and General Counsel Srinandan Kasi.

I looked at the filings dismissing the Moreover case and there was nothing to show how or why it settled.

Friday, August 29, 2008

User-Generated Video Uploads Veoh, Napster, Google and Safe Harbors

In Io Group, Inc. v. Veoh Networks, Inc., No. C06-03926 (HRL), a decision dated August 27, 2008 by Northern District of California Judge Harold Lloyd, discussed by PC Magazine here, the court found that the video uploading service found at is not liable for copyright infringement.
The Veoh website permits users to view and upload their own videos and to share revenues generated from advertising revenues with Veoh. Veoh automates the process, so Veoh is not engaged in reviewing content before it goes up. You can also watch television shows made available by Veoh's "content partners". I note such shows as CSI and Ugly Betty from Veoh's home page.
The plaintiff sued Veoh claiming that its copyrighted films were posted on Veoh without bothering to give Veoh notice beforehand.
The decision has a great discussion of the technology involved in the uploading and storing process. It also has a thorough discussion of Veoh's user policies and the legislative history relative to the Digital Millenium Copyright Act that provides a "safe harbor" to online service providers who take reasonable measures to ensure that they are not helping copyright infringers. There is an informative discussion of why Veoh's case differs from the facts of Napster, although the underlying facts of Napster were not fully fleshed out. In today's New York Post, the Veoh case was reported as "Copyright case may aid Google".
Judge Lloyd found Veoh's policy to be reasonable, and rejected arguments that a stronger policy which would be more effective in barring people from creating new false user names was mandated as a condition for avoiding copyright infringement liability. He rejected the argument that the possibility of a banned user creating new false user names amounted to no policy at all. He also made clear that the law was designed to permit different approaches to developing an anti-infringement policy.
Certainly, this flexible approach has to be encouraging to Google, whose policies were not 100% effective against people who actively sought to foil them.

Thursday, August 21, 2008

Document Production During Discovery: Search and Redact with Acrobat 8 Pro

Redaction is the process of removing information from documents. You can see from the attached image, which is a slide that I recently used in a litigation, I have redacted the title of the slide using Adobe Acrobat 8 Pro.
One of the most tedious and time-consuming jobs in litigation is producing privilege logs and redacting sensitive proprietary information such as trade secrets, medical information, credit card and social-security information from documents. Mistakes are often made, even by the largest and most sophisticated law firms. Computers and technology can ease the problem, but in the end, any mechanical device will make errors that need to be checked by thinking, trained humans.
The combination of high-speed scanning and electronic filing requirements in many courts have forced the electronic age onto many litigators, and now the game is figuring out how to sort through, organize and work efficiently with large quantities of documents in PDF format.
Fortunately, Adobe has created some powerful tools to save time and money. Let's say you have documents that need to potentially be produced to the adversary. Scan them. You can Bates-number them right in Acrobat (Advanced/Document Processing/Bates Numbering/Add). You probably want to break the documents down into PDFs of manageable size. Under the Acrobat "Document" dropdown menu, use "Recognize text using OCR". OCR is optical character recognition. It means that your computer will read the text contained in the PDF as text, rather than as an image. If a PDF is saved as an image, your computer will not pick up any of the words in the text.
To create a privilege log, in looking for attorney/client or work product-privileged documents, one could simply search, say an attorney's name and go through one-by-one each mention. This is a slow process. If you go to the "Advance" dropdown menu, hit Redaction. Then "Search and Redact". A search on the attorney's name will now mark every instance in the document that the attorney's name appears and give you a handy table so that you can jump to each instance the name appears. Since you probable want to eliminate more information than just the attorney's name, you would mark for redaction (see below) all of the privileged information.
To "blacken out" information that you wish to redact, once you have scanned and saved the PDF, go to the "Advanced" dropdown menu. Click on "Redaction". Click on "Show redaction toolbar". Now you can search the entire document to find every instance of a particular word, "Mark for Redaction" and then "Apply Redactions". Make sure to read the help features. Also make sure to save the document with a new name and to make sure to delete metadata as you are leaving the document (a self-explanatory screen pops up as you leave the document).
Why is this redaction function so important? Well, according to Adobe, it really gets rid of the underlying information so that a tech person cannot figure out a way around it. There are some famous instances, reported here and here of people thinking that they'd blacked out information, but people were able to simply look behind the blackened-out portion to find confidential personal information and important government secrets.
Caveat: read the help screens and warnings carefully. OCR is not perfect, and it will not pick up handwriting, images, or text that is not properly aligned. For example, the image above of Chief Inspector Benesch contained both text (the title) and a provenance of the artwork that had been scanned as an image. So if I searched the word "Benesch" to redact, the search function would not pick up the word "Benesch" from the image portion of the slide.
DO NOT WORK FROM ORIGINALS. You must make sure that you have an entire original set saved somewhere safe, because redaction actually removes information, thus destroying the original file. Adobe puts warning screens in to remind you of this. There is no technological shortcut that will bypass a trained set of eyes conducting the review, but proper use of this powerful tool should be a big timesaver.

Friday, August 15, 2008

Of Mice and Men - Copyright Termination Rights

The Second Circuit just reversed a district court decision that had permitted the heirs of John Steinbeck to terminate a copyright grant to Penguin Group.
The issue arose from a termination right granted to authors and their heirs that corresponded to the extension of the copyright term. The logic was that if copyright terms were extended, publishers should not receive an unfair windfall without letting authors or their heirs renegotiate. An historic logic for letting authors terminate is that young authors would often enter into unfavorable agreements and giving them a chance to renegotiate later would compel publishers to reckon with the mature authors' better bargaining power.
Steinbeck's widow had renegotiated a 1938 rights grant in 1994. The Second Circuit found that the 1994 renegotiation was a complete termination of the 1938 rights grant. Steinbeck's widows heirs tried to exercise their termination rights in 2004.
But the Second Circuit found that, applying New York contract law, the 1938 grant had been terminated, giving the widows heirs no pre-1978 rights grants to terminate. Essentially, an author or heirs get one crack at renegotiating.
--- F.3d ----, 2008 WL 3376654 (2d Cir. 2008).

Sunday, May 25, 2008

Quoting Copyrighted Material In User-Generated Videos

If you represent someone who has gotten into trouble over making YouTube videos, there is an interesting and provocative report out by the Center for Social Media called "Recut, Reframe, Recycle: Quoting Copyrighted Material in User-Generated Video." You might want to make it part of your defense case, or at least try to use it in early settlement discussions.

From the title, you can get a sense of how the authors view fair use: copyright hardliners use the word "stealing" instead of quoting. The Report reviews the types of uses of copyrighted works in online videos:

- parody and satire
- negative or critical commentary
- positive commentary
- quoting to trigger discussion
- illustration or example
- incidental use
- personal reportage or diaries
- archiving of vulnerable or revealing materials
- pastiche or collage

The Report distinguishes people who simply make copies of popular and widely available copyrighted works and simply forward them for fun. We all agree that's stealing and will get you in trouble.

The Report makes reference to many videos available on YouTube, many of them interesting and funny. It is clear that the writers of the report believe that this video revolution is a good thing, and I agree with their assessment that this is the type of activity that the copyright laws were meant to encourage. I am glad that they are doing what they are doing and think that they did an excellent job with the Documentary Filmmakers' Statement of Best Practices in Fair Use. I am not as certain that the general proposition that "'quoting copyrighted works of popular culture to illustrate an argument or point' can be fair use" has been entirely vindicated by the courts since 2005, and to the extent that it has, there is lingering contrary authority out there that may be used to trap the unwary.

The case cited as a "prime example" is Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006). It is the only case cited in the Report. That case involved a book published using a small image of a Grateful Dead concert ticket on a timeline illustrating the Grateful Dead's history. It was the only use in the entire book.

Another excellent example of "quoting" being permitted is Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006), which involved artist Jeff Koons using a photograph of a woman's foot from a fashion magazine in a collage painting. But this "quoting" story has a sad ending: the artist got stuck with a million-dollar bill for legal fees even though he was successful in defending his work from a copyright claim. On May 9, 2007, Judge Stanton decided in Blanch v. Koons, 485 F. Supp.2d 516 (S.D.N.Y. 2007) that Koons would be stuck paying his own legal fees:

This case involves an "appropriation" artist. Appropriation artists take other artists' work and use it in their own art, appropriating it and incorporating it in their own product with or without changes. Because of this appropriation, often (as in this case) done without giving credit to the original artist, the appropriation artists can expect that their work may attract lawsuits. They must accept the risks of defense, including the time, effort, and expenses involved. While that does not remove the appropriation artist from the protection of the statute, litigation is a risk he knowingly incurs when he copies the other's work.That is particularly the case with defendant Koons, who was aware of these risks from his personal experience in Rogers v. Koons, 960 F.2d 301 (2d Cir.1992) and other cases arising from an earlier work "in which Koons slavishly recreated a copyrighted work in a different medium without any objective indicia of transforming it or commenting on the copyrighted work." Blanch v. Koons, 467 F.3d at 262 (Katzmann, J., concurring). As Judge Katzmann stated in his concurring opinion on the appeal in this case (id. at 263): This is our Circuit's second encounter with Koons' work. His work, like that of other appropriation artists, inherently raises difficult questions about the proper scope of copyright protection and the fair-use doctrine. I would continue to answer those questions as necessary to decide particular cases, mindful that the fair-use inquiry is a fact-specific one that is "not to be simplified with bright-line rules." Campbell, 510 U.S. at 577, 114 S.Ct. 1164, 127 L.Ed.2d 500.This case, as well as the fact-specific issue of fair use on which it was ultimately decided, had other distinctive aspects. Most striking was the fact that Blanch did not suffer any damages. She did not suffer, nor sue to recoup, a monetary loss. When she first saw the portion of her work displayed in Koons's painting, her immediate reaction was one of gratification. If Koons had offered Blanch a fee for using her art, it typically would have been $750 or less. Koons's painting did not interfere with any of Blanch's intended uses of her photograph, nor decrease its value. And there were issues other than fair use in the case. Defendants' motions for summary judgment also rested on the statute of limitations, claimed non-infringement due to lack of substantial similarity, and unavailability of punitive damages as a matter of law.The Court of Appeals' primary and concurring opinions, with headnotes and exhibits, require nineteen pages in the 467 F.3d report: pp. 244-263. Defendants' fee application demonstrates their belief that the defense of the case merited well over $1 million in attorneys' fees, including more than $24,000 for computer research.[4] Applying the Fogerty factors as a guide to discretion in this unusual case, one can say that (1) it was not facially frivolous, (2) Blanch's motivation was reasonable, although it was less to recoup a monetary loss than to punish an artist who seemed to have embarked on a series of appropriations of others' work without credit or payment, (3) the legal precedents regarding Koons's work looked favorable, and (4) the particular circumstances do not demonstrate a need for imposition of fees as a deterrent to such suits. On the whole, this is not a case calling for an exercise of discretion in favor of granting attorneys' fees.[5]

Blanch v. Koons 485 F.Supp.2d 516, 518 (S.D.N.Y.,2007). I think the subtext here is that the Judge probably feels that Koons is highly successful and profits immensely from these controversies, win or lose, whereas Blanch is a working photographer whose lawyer probably got carried away. In an earlier decision, the court noted that she had never resold any of her photographs, which appeared in Allure magazine.

The fact that many of the people making YouTube mashups are not making money at it or doing it as hobbyists is probably the most important factor in gauging the dangers lurking in these "do it yourself" videos. A couple of the examples seemed to be corporate-created or used as vehicles to highlight a product or carry advertising. That is going to be the flash-point of the future.

If this is depressing to fair use proponents, a great case to mention is Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003), involving the Danish band Acqua's hit "Barbie Girl". In that case, the artist recouped his legal fees since Mattel kept suing him in violation of his First Amendment rights.

A good case on "quoting" copyrighted works is Perfect 10 v. Inc., 487 F.3d 701 (9th Cir. 2007) which found that making thumbnail low resolution copies of entire photographic works for a video search engine was "highly transformative".

But there is some very very bad precedent out there. Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997) involved a television production that had a poster in a background shot. The poster was made by the High Museum in Atlanta. On the poster was an image of artist Faith Ringgold's Quilt. In the television show, the poster was never clearly visible, one could see up to 80% of it in the background during scenes of about 20 seconds. The district court found the use "de minimus". The Second Circuit reversed and held that there is no "de minimus" exception to the Copyright Act.

Dr. Seuss Enter., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997) cert. dismissed 521 U.S. 1146 (1997) is a very bad parody case. A parody called "The Cat Not In the Hat" was removed from the market by Dr. Seuss. The court felt that the author was only using Dr. Seuss to make fun of O.J. and was not making enough fun of Dr. Seuss to qualify as speech protected by the First Amendment. By the same reasoning, I can't put on Mickey Mouse ears and make fun of President Bush because I am not directly making fun of Mickey.

There are also some very mean copyright and trademark owners out there, lots of takedown notices and serious financial threats. For people who have to pay their lawyers and worry about losing their homes, exploring the boundaries of free speech is fraught with perils.

When I tried to click on some of the links to the videos cited in the Center for Social Media's Report, I found that they were links to YouTube that had been taken down. Why didn't they just copy them from YouTube and host those copies on their server? If "quoting" these works is key to understanding the Center for Social Media's work, and I think it is, they should rip them from YouTube, copy them, preserve them and make them available to scholars of the future.

Sunday, February 24, 2008

Bates Numbering with Adobe Acrobat 8 Pro

I have just mastered the Bates-numbering function of Adobe 8 Pro. It enables you to Bates-number large quantities of PDF files. Given that most cases are now filed electronically, this makes it that much easier to never see paper in the office. Adobe lets you place a large number of PDFs into one window, reorganize them, then insert a Bates-number into the first page of the first document that then continues throughout the rest of the batch. You can also easily search for documents by Bates number.

Working in a complex international case, I fought for a long time to convince my European counterparts of the wisdom of Bates-numbering. Now that documents number in the thousands, they are convinced of the wisdom!

I don't know how long lawyers have been seriously Bates-numbering documents, but I recently had occasion to review the Nuremberg trial exhibits in the USGPO publication Nazi Conspiracy and Agression (1946). It seems that each international team of prosecutors was using a unique Bates-style system to stamp hundreds of thousands of documents as they were received.

Probably only lawyers could get so worked up about page numbers, but there is nothing worse than collecting useless evidence because you can't tell what a witness was looking at, or fumbling around with mis-numbered or unnumbered pages in a courtroom.

Some Bates-numbering background and history from Wikipedia:

Bates numbering (also known as Bates stamping or Bates coding) is used in the legal, medical, and business fields to place identifying numbers and/or date/time-marks on images and documents as they are scanned or processed (for example, during the discovery stage of preparations for trial or identifying business receipts). Bates Stamping can be used to mark and identify images with copyrights by putting a company name, logo and/or legal copyright on them. This process provides identification, protection, and auto-increment numbering of the images.
Bates numbering is commonly used as an organizational method to label and identify legal documents. During the discovery phase of litigation, a large number of documents might necessitate the use of unique identifiers for each page of each document for reference and retreival. Bates numbering (named for the Bates automatic numbering machine), assigns an arbitrary unique identifier to each page. Such "numbering" may be solely numeric or may contain a combination of letters and numbers (alphanumeric). There is no standard method for numbering documents. Examples of Bates numbers schemes used in tobacco cases may be found here.
Manual Bates stamping uses a self inking stamp with numbered wheels (5, 6, and 7-wheeled models are common) that automatically increment each time the stamp is pressed down on a page (some stamps allow for duplicate documents by only incrementing after two or more presses). Today, preprinted, self-adhesive labels are common as is electronic document discovery (EDD) software that can electronically "stamp" documents stored as computer files by superimpsoing numbers onto them.
The Bates Automatic Numbering Machine was patented in 1891-93 by the Bates Manufacturing Company of Edison, NJ.[1]
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Sunday, February 17, 2008

Copyright and Publishing Online Program

If you would like to earn CLE (Continuing Legal Education) credits online, my publisher, West has made available online a course I delivered in Eagan, Minnesota. Below, you can find a video excerpt.

Anyone putting up a website or a blog is a "publisher" these days, so it helps to know the principles involved. What can you publish? What will get you in trouble? How do you analyze problems that arise in using content created by others?

Copyright Law and Publishing
Content Provider: Clarion LegalDuration: 2 hours 0 minutes
Program Description: This session is comprised of practical, hands-on examples designed to give participants the analytical tools with which to confront copyright issues facing publishers.

If you would like more information or want to enroll in this program, click on the program title listed above or paste this link into your web browser:

Sunday, February 10, 2008

Cooper Union and Marcel Duchamp

I gave a lecture on copyright and fine art last week at Cooper Union. The audience was an interesting mix of fine art and engineering students and the questions were varied and challenging. I learned more about my art examples - a student corrected me on the source photograph for a Vik Muniz memory drawing, and the program's Director, Robert Thill, happens to be particularly well-informed on Marcel Duchamp's artworks and career.
In my lectures, I cite Marcel Duchamp as the originator of the "Readymade" - which is generally credited with sparking the major debate of "what is art" that characterized the last half of the 20th Century. I show a photograph of the urinal (known as the "Fountain") that Duchamp submitted to an art show, which was famously refused.
Professor Thill referred me to an online journal called: "Tout-fait: The Marcel Duchamp Studies Online Journal, found at He referred me to an article called Marcel Duchamp: A readymade case for collecting objects of our cultural heritage along with works of art. by Rhonda Roland Shearer.
The article and journal is sponsored by the Art Science Research Laboratory on Greene Street. This group has studied all of the objects that Duchamp claims that he simply purchased from mass production and then used as artworks. From the little I read, it appears that Duchamp may have actually constructed the urinal himself, as well as many of the other objects that he claimed he simply found.
In my lecture, I use the Duchamp Fountain/urinal as an example of an artwork which is questionably a work of art and not protectable by copyright, both because it is a useful object and because it lacks protectable original authorial expression. The Tout-Fait journals are fascinating reading, and fascinating to know that Duchamp may have sculpted that urinal, since there was no urinal of that description commercially available at the time. Thanks, Cooper Union!

Saturday, February 09, 2008

Copyright, Architecture and McMansions

Architectural Works & Copyright Law:
Would you like fries with that McMansion?
A Joint Meeting of the Construction Law
Committee and the IP Subcommitteeof EMIPS

Date: Tuesday, February 26, 2008

Time: 6:00 pmLocation: NYCLA, 14 Vesey Street; Board Room

Presenters: Raymond Dowd and Braden Farber
Please join us for a discussion of Axelrod & Cherveny v. Winmar Homes(E.D.N.Y. March 6, 2007)< > and howcopyright law applies to architectural works under the Architectural WorksCopyright Act.
Our guest speaker, Braden Farber, was lead counsel in theAxelrod case. Pictures of the architectural works at issue are available at
Biographies:Raymond J. Dowd is a member of Dunnington, Bartholow & Millers's corporate,litigation and arbitration practice groups. He has broad commercial litigation experience in both federal and state courts, and has representedcopyright, trademark and domain name owners and content providers intransactions and litigation of almost every type, representing bothplaintiffs and defendants. He has conducted numerous bench and jury trials,and arbitrations, and has obtained, enforced, and collected numerousjudgments. In addition, he has provided corporate and transactionalrepresentation for a number of entrepreneurial companies from theincorporation and startup phase through significant growth. Mr. Dowd regularly speaks to trade associations on copyright, trademark andlitigation issues, and participates in organizing continuing legal educationprograms. Additionally, Mr. Dowd is the author of the Copyright LitigationHandbook. (
Braden Farber is a partner at Farber, Brocks & Zane. Mr. Farber specializesin representing architects, engineers, other design professionals andcontractors in construction related matters, and also serves as counsel tomany design firms, property owners, real estate developers and contractors.Mr. Farber is a member of several design professional organizations andsocieties, is a frequent lecturer on relevant topics of interest, and alsoprovides accredited continuing education courses. Mr. Farber also handlesgeneral liability and environmental claims for private and municipal property owners, contractors and other business owners.(
*From a New York County Lawyers' Association bulletin. Architecture and copyright is a hot topic. Many builders and architects don't know their rights and how to protect themselves. As we head into a recession, we should see many litigations relating to construction hitting the federal courts under the guise of copyright. Special thanks to EMIPS Chair Olivera Medenica and Construction Law Committee Chair Carol Sigmond for putting this together and getting us NYCLA's prestigious Board Room.

Sunday, January 20, 2008

Journal of the Copyright Society of the USA

Not too long ago, I received my Fall 2007 issue of the Journal of the Copyright Society of the USA. This is a benefit of paying the Copyright Society's membership fee. The Journal issue contained a nicely printed copy of "Recent Developments in Copyright - Selected Annotated Cases" by Bob Clarida and Tom Kjellberg of Cowan Liebowitz & Latman. It reminded me of Bob and Tom's presentation at each Annual Meeting of the Copyright Society of the USA. In a lively style, using pictures and music, they go over important, interesting or outrageous copyright cases of the preceding year. It is a good way to keep up on developments in a rapidly-changing field, and they really make an effort to obtain the materials that the judges were looking at or listening to so that you can understand what was decided.

The meeting is held each June and has traditionally been situated at the Sagamore Hotel on Lake George in upstate New York. This year, for the first time, the meeting will take place June 8-10 in Newport, Rhode Island. Annual meetings kick off with a special cocktail reception for new attendees, and the organization's officers make a real effort to make newcomers feel at home. The programming is diverse and entertaining, and speakers are really top-shelf.

Marybeth Peters, the Register of Copyrights, always attends, along with the top people from her office, and all major content industries are well-represented.

The field of copyright is full of oddball specialties. Attendees come from all over the US, with some foreign participation (unlike the trademark world, the foreign contingent is not particularly large). Copyright lawyers tend to have backgrounds in music, art, film, literature - and thus this gathering is usually more entertaining than most legal conferences.

The Copyright Society also has chapters. Last year I gave presentations to the San Francisco and Philadelphia Chapters. The New York Chapter has monthly luncheons (1 hour CLE credit) that are usually sold out.

If you need a painless way to pick up CLE credits this year, think about the Copright Society. I won't make it to the mid-winter meeting in Dana Point, California (Feb 7-9), but I will be in Newport in June.