Monday, May 31, 2010

9th Circuit: Through the Brooklyn Lorgnette - EDNY USDJ Sez Copyright Application is "Registration"

"Lady Caroline Lorgnette" from Los Angeles

In Cosmetic Ideas, Inc. v. IAC, No. 08-56079 (May 25, 2020), USDJ David G. Trager from the EDNY (Brooklyn), wrote a thoughtful and sensible opinion that eliminates one of the major annoyances facing copyright litigants in a rush, but who don't want to pay the Copyright Office's spectacularly high "special handling" fees.   The case involved a cosmetic jeweler's case against the Home Shopping Network.

The issue, recently brought to the fore in the recent Supreme Court case Reed-Elsevier, Inc. v. Muchnick, ___ U.S.___, 130 S.Ct. 1237 (2010), was this:

If you file an application with the Copyright Office, but the Register of Copyrights hasn't registered it, can you file a lawsuit before you get the registration certificate?

SCOTUS noted in Reed-Elsevier, Inc. v. Muchnick that the Circuit courts were divided over the issue, but it wasn't the precise issue before them, so declined to resolve it. Reed-Elsevier, Inc. v. Muchnick decided that the Copyright Act 17 usc 411's requirement that a copyright claimant's claim be registered was a "claim processing rule" and did not implicate the court's subject matter jurisdiction.

Cosmetic Ideas, Inc. v. IAC, the Ninth Circuit analyzed seemingly conflicting provisions in the Copyright Act for clues, but didn't find the answer.  Relying on a common sense practical approach, it went with registration occurring upon the filing of the application.

I have had a couple of cases before Judge Trager, and he taught my brother at Brooklyn Law School.  He is liked and respected among the local bar and bench.

Let's hope that the Second Circuit follows the Brooklyn approach adopted by the Ninth Circuit.

Practical Implications:  In the Ninth Circuit (and those Circuits following the application rule), just apply and get proof of receipt by the Copyright Office.  With that in hand, you can sue.  For the rest of us, unless you want to be a test case, get your certificate through the Copyright Office's Special Handling Procedures (Copyright Litigation Handbook Chapter 4)

 Purchase Copyright Litigation Handbook from West here  

Copyright Litigation Handbook - Contents and Overview

In the embedded Slideshare you can find an overview of the contents of Copyright Litigation Handbook. Some praise from copyright experts:

“The only book of its kind …. indispensable …”

Prof. Alan Hartnick, New York Law Journal

“a valuable resource for copyright litigators … it will be squeezed into trial bags for years to come."

Joseph Petersen, Kilpatrick Stockton LLP

“extraordinary for more reasons than I have space to enumerate … extremely valuable…”

Corey Field, Ballard Spahr Andrews & Ingersoll LLP

“for occasional dabblers … and experienced copyright litigators … the book I go to first when drafting a complaint …”

David Wolfsohn, Woodcock Washburn LLP

 Purchase Copyright Litigation Handbook from West here  

From EFF - "Anti-Counterfeiting Treaty Is a Sham"

What is counterfeiting?  In my humble estimation, it is knowingly making large quantities of exact copies of a trademarked, patented, or copyrighted good with the intention of selling such large quantities to defraud consumers and the rights holders.

Thus, any anti-counterfeiting treaty would have the elements:

1. exact copies or copies intended to be so similar that a consumer could not tell the difference;
2. protected goods;
3. large quantities (500?) (2,000?);
4. intent to defraud consumers and rights holders.

Some kid copying stuff to his Ipod is not counterfeiting.   Even 2,000 songs.

So anyone labeling a treaty "anti-counterfeiting" and that does not have the foregoing elements is trying to pull a scam on me.

So when I finally got around to reading the text of ACTA, I thought that I would find the concerns I'd seen floating around the internet to be a little overblown.

In fact, I think that the concerns of the EFF are understated.   I am not so concerned about confidential negotiations to give trade representatives some time to brainstorm.   But the text appears to be so one-sided as to appear to have been spoonfed by certain aggressive Hollywood rights-holders who don't think anyone can make fun of Mickey Mouse and that anyone crossing a border should be frisked for a fake Louis Vuitton handbag.

I am surprised that ISP's and technology users seem to have had so little input into the process.

A treaty that really is focused on anti-counterfeiting would have my support, if it is really necessary (Art 41 of TRIPS looks sufficient to me).  I really also don't see why we need to set up a new international bureaucracy to oversee this, the current institutions appear to be sufficient.

For a thoughtful, colorful analysis from the Canadian perspective, check out Canadian law professor Michael Geist's blog, particularly his audio powerpoint "The ACTA Threat".

A good discussion on the RIAA's wishlist at arstechnica here.

And if foreign Limewires are the concern, why not address that concern directly?

The text of EFF's action letter (reprinted in full below), together with an automated template for you to email a letter to your representatives in Congress can be found here.

As a matter of Capitol Hill etiquette, your letter should be cc'd to the USTR, or your concerns addressed to him in the first place.

EFF seems to be pretty much spot on in its analysis - it appears that US copyright holders are seeking to shift onto ISPs basically unlimited liability and the burdens for policing copyrights, subjecting US ISPs and intermediaries to liabilities in foreign jurisdictions for actions that federal judges have not held them liable for in the US.  The debate is difficult to follow, but wading through the January 18 draft I saw that the US Representative was advocating insertion of the words "substantially similar" in a particular provision.

What the hell is "inciting" copyright infringement?  Shouting "copy" in a crowded movie theater?

ACTA appears to be an attempt to tie Congress's hands in terms of domestic copyright legislation, rather than a legitmate attempt to pursue counterfeiting.

Before accepting the EFF's analysis whole hog, check out the USTR's website with a fact sheet here.  The USTR is Ron Kirk, whose website states:

•The ACTA is not about raising substantive standards of intellectual property protection (IPR) or specifying or dictating how countries should define infringement of those rights.

•The ACTA does not focus on private, non-commercial activities of individuals, nor will it result in the monitoring of individuals or intrude in their private sphere.


- Civil liberties would not be curtailed by the ACTA.
- There is no proposal to oblige ACTA Parties to require their border authorities to search travelers' baggage for IPR infringing goods or their personal electronic devices for IPR infringing downloads.

- There is no proposal to oblige ACTA Parties to require internet service providers (ISPs) to terminate users' connections on the basis of accumulated allegations of online IPR infringement (the so-called "three strikes" rule).

A tidbit from the Official Text (full text found here)


[1. ]In civil judicial proceedings concerning the enforcement of [copyright or related rights and trademarks] [intellectual property rights], each Party shall provide that its judicial authorities shall have the authority [subject to any statutory limitations under its domestic law] to issue [against the infringer an injunction aimed at prohibiting the continuation of the] [an order to a party to desist from an] infringement, including an order to prevent infringing goods from entering into the channels of commerce [and to law].14]

Option 2

[5. Each Party shall provide that its judicial authorities, [in appropriate cases], shall have the authority to order, at the conclusion of civil judicial proceedings [[at least in cases] concerning copyright or related rights infringement, [patent infringement,] or trademark counterfeiting] that the prevailing party be awarded payment by the losing party of court costs or fees and reasonable [and proportionate] attorney’s fees [, and any other expenses as provided for under that Party’s domestic law].15]


1. Each Party shall provide that:

(a) in civil judicial proceedings, its judicial authorities shall have the authority to order the infringer [who knowingly or with reasonable grounds to know, engaged in [infringing activity] of [copyright or related rights and trademarks] [intellectual property rights] to pay the right holder

(i) damages adequate to compensate for the injury the right holder has suffered as a result of the infringement; or

(ii) [at least in the case of copyright or related rights infringement and trademark counterfeiting,] [in the case of IPR infringements] the profits of the infringer that are attributable to the infringement, [which may be presumed to be the amount of damages] [and that are not taken into account in computing the amount of damages] [referred to in clause (i)]10

[which may be presumed to be the amount of damages referred to in clause (i)]; and

(b) in determining the amount of damages for [copyright or related rights infringement and trademark counterfeiting] [infringement of intellectual property rights], its judicial authorities shall consider, inter alia, any legitimate measure of value submitted by the right holder, which may include the lost profits, the value of the infringed good or service, measured by the market price, the suggested retail price, or [the profits of the infringer that are attributable to the infringement].

So if I understand correctly, if some Dutch kid emailed ONE copyrighted song to a Japanese kid, both the Dutch and Japanese ISPs would be shut down and each have to pay the RIAA for the injury plus the RIAA's attorneys fees?

The EFF letter:

EFF: Action Center
Log In
View Current Action Alerts
Tell A Friend
Tell Your Lawmakers: "Anti-Counterfeiting" Treaty Is a Sham

The U.S. Trade Representative has spent the past two years working with other developed nations on a secret agreement allegedly designed to reduce the flow of fake physical goods across borders. However, the Anti-Counterfeiting Trade Agreement (ACTA) is really a ruse that gives the entertainment industry its wishlist of Internet copyright regulations and enforcement power.

Just look at some of the "anti-counterfeiting" measures included in ACTA. ACTA would set up a global framework that could:

Require Internet service providers (ISPs) to disconnect individuals accused (not convicted) of repeated copyright infringement;
Require ISPs to hand over their subscribers’ identities to copyright owners without any due process or judicial oversight;
Require ISPs to make potentially expensive modifications to their networks in an effort to prevent copyright infringement;
Prohibit the U.S. Congress from reforming the Digital Millennium Copyright Act (DMCA), which makes it a crime to defeat copy protection even when making a copy is perfectly legal;
Require all countries to implement DMCA-like laws for their own populations, without the benefit of fair use or other legal exceptions that provide a modicum of protection for speech;
Threaten potential innovators with outrageous financial penalties for copyright infringement; and
Criminalize even non-commercial uses of copyrighted materials.

Sounds a lot like a copyright law, not an "anti-counterfeiting" agreement, doesn't it?

ACTA is being negotiated by a handful of countries behind closed doors and is on track to be finished by the end of this year. Despite its potentially far-reaching impact for consumers and the future of the open Internet, the U.S. Trade Representative has claimed that it can shut out Congressional oversight by treating ACTA as a "sole executive agreement" under the President's executive power, rather than a treaty.

We can't sit back and let this fake "anti-counterfeiting" agreement become law! If your congressional representative is on one of the committees below that has oversight over the U.S. Trade Representative, tell your lawmaker not to be fooled by this chicanery and demand that ACTA be limited to addressing international counterfeiting.

Senate Finance Committee

Max Baucus, Montana
Jay Rockefeller, West Virginia
Kent Conrad, North Dakota
Jeff Bingaman, New Mexico
John Kerry, Massachusetts
Blanche Lincoln, Arkansas
Ron Wyden, Oregon
Charles Schumer, New York
Debbie Stabenow, Michigan
Maria Cantwell, Washington
Bill Nelson, Florida
Robert Menendez, New Jersey
Thomas Carper, Delaware
Chuck Grassley, Iowa
Orrin Hatch, Utah
Olympia Snowe, Maine
Jon Kyl, Arizona
Jim Bunning, Kentucky
Mike Crapo, Idaho
Pat Roberts, Kansas
John Ensign, Nevada
Mike Enzi, Wyoming
John Cornyn, Texas

House Ways and Means Trade Subcommittee

John S. Tanner, 8th Tennessee
Sander M. Levin, 12th Michigan
Chris Van Hollen, 8th Maryland
Jim McDermott, 7th Washington
Richard E. Neal, 2nd Massachusetts
Lloyd Doggett, 25th Texas
Earl Pomeroy, 1st North Dakota
Bob Etheridge, 2nd North Carolina
Linda T. Sanchez, 39th California
Kevin Brady, 8th Texas
Geoff Davis, 4th Kentucky
Dave G. Reichert, 8th Washington
Wally Herger, 2nd California
Devin Nunes, 21st California

Targeted recipients based on your address
*Required fields
* Title:
Mr. Ms. Mrs. Miss Dr.
* First Name:

* Last Name:

* Your Email:

* Address 1:

Address 2:

* City:

* State / Province:
* ZIP / Postal Code:

Phone Number:

Yes, I would like to receive periodic updates and communications from EFF.

Remember me. What's this? Message
* Subject:

Dear [Decision Maker],

* Please personalize your message
As a consumer and constituent, I am very concerned about the Anti-Counterfeiting Trade Agreement (ACTA) being negotiated by the Office of the United States Trade Representative. The agreement's stated purpose was to coordinate a global effort to fight counterfeit products, but the language recently released by the U.S. Trade Representative -- after two years of secrecy vocally opposed by countless individuals like myself -- shows clearly that ACTA is really a copyright bill in disguise. This "wolf in sheep's clothing" could do serious harm to Americans' right to free speech and innovation on the Internet.

Just look at some of the "anti-counterfeiting" measures included in ACTA. ACTA would set up a global framework that could:

* Require Internet service providers (ISPs) to disconnect individuals accused (not convicted) of repeated copyright infringement;
* Require ISPs to hand over their subscribers' identities to copyright owners without any due process or judicial oversight;
* Require ISPs to make potentially expensive modifications to their networks in an effort to prevent copyright infringement;
* Prohibit the U.S. Congress from reforming the Digital Millennium Copyright Act (DMCA), which makes it a crime to defeat copy protection even when making a copy is perfectly legal;
* Require all countries to implement DMCA-like laws for their own populations, without the benefit of fair use or other legal exceptions that provide a modicum of protection for speech;
* Threaten potential innovators with outrageous financial penalties for copyright infringement; and
* Criminalize even non-commercial uses of copyrighted materials.

ACTA is being negotiated by a handful of countries behind closed doors and is on track to be finished by the end of this year. Despite its potentially far-reaching impact for consumers and the future of the open Internet, the U.S. Trade Representative has claimed that it can shut out Congressional oversight by negotiating ACTA as a "sole executive agreement" under the President's executive power, rather than a treaty.

Please don't be fooled by ACTA's dishonest name. ACTA is not about trade, and it is certainly not limited to counterfeiting. ACTA goes far beyond its original mandate of fighting counterfeit products, and it should not be allowed to damage the growth and development of American innovation. I urge you to protect the American public and insist that ACTA be limited to its purported purpose -- addressing counterfeit goods that pose serious health and safety concerns for consumers.

[Your Name]
[Your Address]
[City, State ZIP]

Saturday, May 29, 2010

Canadian Students Mobilize to Demand "Fair Copyright"

Thanks to Michael Geist's blog, new video on Canadian students mobilizing against copyright legislation pending in Ottawa.

Friday, May 28, 2010

BizMediaLaw Blog on Copyright Litigation

From Social Media Friday - a focus this week on copyright litigation at the BizMediaLaw Blog - thanks to my favorite NYC tech-savvy dealmakers Wahab & Medenica for the kind words!

New York Business Lawyers for Small Large Businesses-BizMediaLaw Blog

Top 30 Most Popular IP Law Blogs - Justia

1.   Patently-O  (33)
2.   IPKat (34)
3.   Patent Docs (41)
4.   IPBiz (62)
5.   IPThinktank (95)
6.   The University of Chicago Law School (104)
7.   Recording Industry vs The People (106)
8.   US Law Watch (117)
9.   Plagiarism Today (126)
10. 43(B)log (128)
11.  The TTABlog (135)
12.  Illinois Business Law Journal (138)
13.  The Trademark Blog (140)
14.   Two-Seventy-One Patent Blog (199)
15.   Philip Brooks' Patent Infringement (200)
16.   Patent Baristas (213)
17.   The University of Chicago Law School (230)
18.   Chicago IP Litigation Blog (234)
19.   Likelihood of Confusion (248)
20.   Orange Book Blog (251)
21    Technology & Marketing Law Blog (254)
22    Law & Disorder (264)
23.   IPWatchdog (276)
24.   Eastern District of Texas Federal (283)
25    ITC 337 Law Blog (293)
26.   Seattle Trademark Lawyer (301)
27.   Biz-Media-Law Blog (302)
28.   Copyright Litigation Blog (311)
29.   TechnoLlama (342)
30    Freedom to Tinker (344)

Source:  Justia Blawgsearch (accessed 5/28/2010 weekly stats ranking among Blawgs tracked by Justia).

Fair Use Fridays - Girl Talk - Overtime

Music and video sampling - pushing the limits of fair use?

Fair Use Fridays: The Disney Trap: How Copyright Steals our Stories

Discourse on the nature of parody, the public domain, James Joyce's Ulysses and copyright law.

Thursday, May 27, 2010

Know Your Meme: Growing Up With a New Gotti Haircut

Fair use, parody, internet commentary, the importance of Growing Up Gotti

Wednesday, May 26, 2010

Accused Terrorist Sues Sacha Baron Cohen and Letterman Over Bruno Movie

A man who appears in the Bruno movie as a terrorist member of Al Quaeda is suing Sacha Baron Cohen.

Copy of the complaint below.

Complaint against David Letterman and Sacha Cohen | Aita v. Sacha Cohen and David Letterman | Law Offices of David Benowitz - Maryland Criminal Defense Attorneys - JDSupra

SDNY: MobiTV Victory Over ASCAP for Delivery of Video To Cellphones

In re Application of Mobitv, Inc., 2010 WL 1875706, 1 (S.D.N.Y. May 11, 2010)

It is hard to overstate the importance of music in most of our lives. Every concert we attend, every song we listen to, virtually every entertainment we enjoy reinforces that lesson. The task at hand is to determine the fair market value of a blanket license for the public performance of music. The challenges of that task include discerning a rate that will give composers an economic incentive to keep enriching our lives with music, that avoids compensating composers for contributions made by others either to the creative work or to the delivery of that work to the public, and that does not create distorting incentives in the marketplace that will improperly affect the choices made by composers, inventors, investors, consumers and other economic players.

Judge Cote has written a very thoughtful opinion explaining the history of blanket licenses for musical compositions and how they relate to new digital media.  The opinion really explains how the industry works, the economics involved, and is a nice explanation of the history of the technology involved.

Mobitv scored a big victory, which is a good thing for this fledgling technology.   The issue at hand was how much Mobitv had to pay ASCAP and the court's job was to set a reasonable rate.  Since Mobitv had demanded a license from ASCAP, no copyright infringement was found.

Tuesday, May 25, 2010

My Old Kentucky Home Remixer Punk'd: Court Tosses Copyright Infringement Action For Failure To Disclose Pre-Existing Material

In Rich & Rich Partnership v. Poetman Records USA, Inc. 2010 WL 1978800, 1 (E.D.Ky. May 17, 2010) the court found that a copyright registration certificate that did not disclose that a work was a remix including a sound recording of the late Gov. Happy Chandler's "Old Kentucky Home" rendered the copyright unenforceable.   The plaintiff did not offer any excuse for the omission, such as a mistake (the case law is pretty forgiving).

Please note that 17 USC 409 (9) provides:

§ 409. Application for copyright registration

The application for copyright registration shall be made on a form prescribed by the Register of Copyrights and shall include —
(9) in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered;

Practice Tip:  In Chapter 4 of my Copyright Litigation Handbook I review how to correct mistakes in ownership and registration forms with the Copyright Office before going to court.  It is better to do this prior to bringing a litigation.

More from the decision:

“[W]hen an applicant knowingly fails to identify the derivative nature of the work, or the use of elements not of the applicant's own creation, the court may decline to enforce the copyright.” Lenert v. Duck Head Apparel Co. Inc., No. 95-31122, 1996 WL 595691, at *4 (5th Cir. Sept.25, 1996) (citing Russ Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F.Supp. 980, 987-89 (S.D.N.Y.1980) (court declined to enforce copyright where applicant knowingly failed to disclose pre-existing work); GB Mktg. USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F.Supp. 763, 774-76 (W.D.N.Y.1991) (knowing omission of derivative nature permits grant of summary judgment refusing to enforce copyright)). In other words, a “ ‘knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action ... or denying enforcement on the ground of unclean hands.’ ” Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d Cir.1984) (quoting Russ Berrie, 482 F.Supp. at 988). In 1998, David E. Rich registered a work entitled “The Kentucky Wildcat Basketball Experience.” R. 125, Ex. 1 at 1-2. In that registration, the nature of the copyrighted work was described as a “[c]ompilation of sound recordings of Kentucky Wildcat games and band recordings, with some new sound recording.” Id. at 1. The registration form asked Rich & Rich to “[i]dentify any preexisting work or work that this work is based on or incorporates.” Id. at 2. In response, Rich & Rich identified, “some sound recording.” Rich & Rich did not identify Chandler's original rendition of “My Old Kentucky Home” in its response. The Copyright Office, without knowing what the pre-existing work was and which track contained the remix, could never have determined whether Rich & Rich's contribution to the Chandler rendition qualified as a derivative work.FN1

FN1. Rich & Rich knew that it was taking a work from Chandler and putting it on its album. Cf. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (11th Cir.1982) (omission of pre-existing work did not invalidate the registration because of lack of scienter). That is not disputed and, hence, lack of knowledge cannot excuse the error here.

Courts can overlook immaterial mistakes in a registration. See Lenert, 1996 WL 595691, at *4 (collecting cases where the failure to disclose the derivative nature of a work did not invalidate the registration). But Rich & Rich has neither attempted to show evidence that this was a simple mistake nor provided an explanation of why the registration was done in this manner. See Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 n. 5 (3d Cir.1990) (“[A] misstatement or clerical error in the registration application if unaccompanied by fraud will not invalidate the copyright nor render the registration incapable of supporting an infringement action.” (quoting M. Nimmer & D. Nimmer, Nimmer on Copyright § 7.20, at 7-197-98)); see also Advisers, Inc. v. Wiesen-Hart, Inc., 238 F.2d 706, 708 (6th Cir.1956) ( “innocent misstatement ... in the affidavit and certificate of registration, unaccompanied by fraud” does not invalidate copyright).

Knowledge Management: Third Party Infringers Have No Standing To Challenge Assigment

KMMentor, LLC v. Knowledge Management Professional Soc., Inc., 2010 WL 1946339, 1 (D.Kan.) (D.Kan. May 13, 2010)

“Knowledge is a process of piling up facts; wisdom lies in their simplification.” FN1 This case involves several parties engaged in the knowledge management field, a field that creates and uses data and information to manage knowledge. The proceedings so far have been highly contentious, and the parties have compiled numerous facts but have not simplified the process.

So opens a case involving a bitter struggle among knowledge managers.  Defendant alleges that plaintiff's evidence is insufficient to show copyright ownership, relying on 17 USC 204(a).   204(a) provides
§ 204. Execution of transfers of copyright ownership

(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.

Problem was, the copyright owner (exclusive licensee) listed in the Complaint was not the owner registered with the Copyright Office.  The record owner/author had apparently given an exclusive license that had not been written down or recorded with the Copright Office.

The court said that a third party infringer couldn't invoke 17 usc 204(a) and relied on the following cases:

Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 592-93 (7th Cir.2003); Imperial Residential Design, Inc. v. Palms Dev. Group, Inc., 70 F.3d 96, 99 (11th Cir.1995). See also X-IT Products, 155 F.Supp.2d at 603-04.

Practice Tip:  We all get caught in certain situations and it's great to have some case law to pull us out.  But the better practice, and I'd say the far better practice is to marshal the evidence that your client owns a copyright, get it in writing, and record it before you start a lawsuit.  For a fuller discussion of these issues. Check out Chapter 3:  The Client Interview and Initial Investigation and Chapter 4:  The Copyright Office: Litigation Practice in my Copyright Litigation Handbook.

In Chapter 9: Motions Attacking the Complaint, I have a section called "Motions to Dismiss for Lack of Standing".  You will find there how to craft an assignment that deals with accrued litigations and what the assignment needs to say to give an assignee standing.

Will Andrew Cuomo's Successor Have The Courage To Follow California's Example and Help Victims in Nazi Art Looting Cases?

California's AG has stepped in to assist the heirs of a victim of Nazi art looting by filing an amicus brief.  New York's AG has unfortunately not assisted heirs of Holocaust victims here in New York, taking the position that it's a federal matter.  Not true, as Jerry Brown courageously argues against the Norton Simon Foundation.

Perhaps in a campaign season in New York, one of our AG candidates will take a similar courageous position on the issue. 

In New York, the Attorney General has jurisdiction over charities.  Traditionally, the AG ignores the issue of stolen property in New York museums.  This is a tragedy for Holocaust victims and their descendants.  While museums stonewall and watch the last of the World War II generation die, our politicians do nothing.

It's easier just to forget the Holocaust or pretend it never happened.  Particularly when it is politically expedient to not pick fights with rich museum trustees.

Article in CT Post

Monday, May 24, 2010

Pleadings and Iqubal - How Courts Are Interpreting Rule 12(b)(6)

Good article here in The Federal Lawyer on Iqubal in the Circuit courts by John McCarthy, President of the SDNY Chapter of the Federal Bar Association.

Disclosure: I am on the Editorial Board of The Federal Lawyer and serve as a Federal Bar Association Vice President for the Second Circuit.  I still think it's a good article.  McCarthy found 5,200 cases citing Iqubal, 242 of which were appellate decisions.

Sunday, May 23, 2010

Register of Copyrights Marybeth Peters in a Mashup

Copyright, TM and Counterfeit Chic: Fordham Law Launches Fashion Law Institute

Prof. Susan Scafidi, author of the Counterfeit Chic blog, is launching the nation's first-ever fashion law institute at my alma mater, Fordham Law School.  The web page is sexy and politically incorrect - if not Page Six - worthy - with boldface names like Dian Von Furstenburg and no equal time for men's footwear.   Who designed those shoes?  This is all a good thing.  A female model earns 7x to 9x what a male model does - it is a reality that does not - and should not - have the world up in arms.

I have represented fashion designers, fashion photographers, model agencies, fashion models, and a company called FashionTV for years - it is a whole different world and it is good to see a legal program launched that takes a serious look at this odd world where image is everything and buccaneers abound.   For about three years of my life in a federal proceeding I wrangled over whether the mark FASHIONTV infringed on the mark FASHION TELEVISION.   After winning summary judgment on the trademark claim, I won an unfair competition trial with Skadden Arps as my adversary.   As Cindy Adams would say, only in New York.

The Text of Arizona's Immigration Law: Unlawful Not To Snitch





Arizona Immigration Law

Saturday, May 22, 2010

Mashup: Arizona's Governor Urges Politicians To Read Immigration Law

Nice example of ripping the faces of politicians and mashing them to music.  This is what Arizona is spending its tax money on?  If you learn how to read, you will want to throw away the right to be free from unreasonable searches and seizures?

Thanks to

Free IP CLE: The First Sale Doctrine at IP Colloquium

Another supersmart IP Colloquium from Prof. Doug Lichtman, this time on the first sale doctrine and comparison with antitrust law.   This one was economics-heavy, and very interesting.  Unfortunately, there was not really any spirited pro-first sale doctrine point of view - everyone seemed to be perplexed as to its utility and origins - and Doug concludes basically that it should be tossed.  Let's get a libertarian in the next lineup, Doug!

The first sale doctrine says that if someone sells you a book, you can resell it without paying the copyright owner an additional royalty.   I think California is the only state with a resale right for works of fine art (known as a droit de suite).

The first sale doctrine basically tracks the common law invalidation of restraints on the alienability of property.

The droit de suite gives a creator the right to a piece of the action each time the object in which a copyrightable work is embedded is resold.

IMHO, and I have nothing against the French or even Californians, but tossing the first sale doctrine would subject us to eternal digital servitude to a copyright owner and machine-creating industry - the ditigal nightmare that so many technologists keep warning us about.  I think Doug's prognostications about maximizing consumer welfare won't work in reality.

But Doug, I'll still drink French and California wines.   And you were right about the result in the Tenenbaum case.   But I'm not going to support a new copyright toll bridge for consumers to cross if they want to dump their gear on Ebay, on the contrary, any industry resale restraints should be abolished and penalized.  There is already way too much tying and too many restraints on cross-platform interoperability for the average consumer.

SCOTUS will be considering the first sale doctrine in the upcoming Costco/Omega Watch case, so let's hope that fans of the first sale doctrine will articulate their case.

Check out IP Colloquium here.   Anyone listening and remembering the code words will get free CLE credit.

Product Endorsements on Blogs: New FTC Guidelines Explained

An excellent summary of the FTC regulations for blogs that endorse or discuss products from the DuetsBlog, written by Paul W. Mussell, Senior Counsel in Intellectual Property Group, Wells Fargo link below:

Retailer Ann Taylor Dodges FTC's First Endorsement Enforcement Bullet : Duets Blog

Friday, May 21, 2010

Alfred Flechtheim's Portrait By Rudolph Belling: Image Not Available at MoMA

The MoMA has not made an image of this bronze sculpture of Alfred Flechtheim available on the internet.  The sculpture was a 1950 gift of the Nazi agent Curt Valentin.   Aside from noting that the sculpture was a gift of Curt Valentin, no other provenance is given.

American museums agreed to publish images and provenances in 1998 to help Holocaust victims trace artworks.  Why has MoMA shirked this duty and no one complains?  Mayor Bloomberg and City Council Speaker Christine Quinn are on the Board of the MoMA - why have they not insisted on transparency on European works entering the U.S. after 1933 that were created before 1945?   Is there really no political will in this country to follow the Washington Principles?

There is not even an English-language Wikipedia page on Alfred Flechtheim, Germany's most important pre-war dealer in modern art.

Why has Flechtheim's image and history been obliterated?  Why have America's art historians and historians failed to honor Flechtheim's role in 20th Century art?   The artists of his time celebrated him, yet US art historians have not even granted him a footnote in history.

My earlier posts on Alfred Flechtheim here.

Above you see an essay in Italian by Konstantin Akinsha that you can find here called "Alfred Flechtheim's Nose:  Anti-Semitism and images of Nazi propaganda"

Above, from the Akinsha article, you see Alfred Flechtheim pictured with a cigar at the 1937 "Degenerate Art" Exhibition in Nuremberg, surrounded by the modern "degenerate art" that the Nazis hated.

The Nazis knew that Alfred Flechtheim was at the center of everything Jewish, modern and artistic that they hated.

So why has the MoMA and its confreres in the American Association of Museums obliterated Flechtheim's image from MoMA's website and his biography from the history of modern art?  Why do American art historians not discuss and celebrate his life and contributions and discuss the fabulous inventory that he had when his gallery was Aryanized by the Nazi Alexander Voemel in 1933?

Is there not one honest art historian working in an American museum today?  The damage Hitler caused in obliterating Jewish culture and contributions must be fought not by lawyers, but by art lovers and historians of good conscience who come forward and say enough is enough.  Pretending that Alfred Flechtheim did not exist is unacceptable.

Below, a beautiful work by Paul Klee that MoMA acquired in 1945.

Pastorale (Rhythms) (1927)

Paul Klee (German, born Switzerland. 1879-1940)
1927. Tempera on canvas mounted on wood, 27 1/4 x 20 5/8" (69.3 x 52.4 cm). Abby Aldrich Rockefeller Fund and exchange
Collection work meeting criteria specified in Introduction.


Rudolf Probst (Galerie Neue Kunst Fides; Das Kunsthaus), Dresden/Mannheim. Until 1928

Galerie Alfred Flechtheim, Berlin and Düsseldorf, then in London. 1928 – at least 1930 [likely until Flechthem’s death, in March 1937]

(J. B. Neumann (Jsrael Ber Neumann), New York. 1930. Agent for Flechtheim)

(Alex Vömel, Dusseldorf. Former Flechtheim Gallery, became Alex Vömel Gallery from March 1933. [Likely on consignement from Flechtheim, 1933 – 1934])

James Mayor Gallery, London. [Brought to London by Flechtheim when he started to work for the Mayor Gallery, c. 1934.] 1934 – 1935

For sale during Paul Klee exhibition at Kunsthalle Basel, 1935

(Paul Klee, Bern. Returned to him from above exhibition, unsold, 1935)

[Likely returned by Klee to Flechtheim in London]

Daniel-Henry Kahnweiler, Paris. [Likely acquired/on consignment from Flechtheim] by 1937 - by 1939

Mrs. Stanley B. Resor, New York. By 1941

Nierendorf Gallery (Karl Nierendorf), New York (New York gallery opened in 1937). Acquired from Stanley B. Resor, by 1945

The Museum of Modern Art, New York. Acquired from Nierendorf through Abby Aldrich Rockefeller Fund and exchange, 1945

Commissioned Shepard Fairey mural painted over in Kentucky - Boing Boing

Commissioned Shepard Fairey mural painted over in Kentucky - Boing Boing

SDCA: Perfect 10 v Rapidshare: Preliminary Injunction Denied Against Filesharer Despite Specfic Knowledge of Infringements

In Perfect 10 v. Rapidshare (SDCA 09 CV 2596) May 18, 2010, the District Court denied a preliminary injunction against filesharing service provider.

I visited the company's website and watched the video here.   It looks like a service that would be helpful in our law practice - we are dealing with transmittal of larger and larger files and always interested in bringing down the cost and making it faster.

I couldn't tell from watching the video on the Rapidshare homepage with the nice German accents or reading the decision exactly how the peer-to-peer filesharing (ie accessing someone else's copyrighted works) might work.

But the judge found facts radically different from those in the Limewire case, an example of a a filesharing service that appears to be a pretty good citizen and a plaintiff who seeks to put the burden of policing its content onto a neutral third party.

Perfect 10 v Rapid Share: Denial of Preliminary Injunction of Filesharer Despite Specific Knowledge of Infr...

Copyrights & Campaigns

Ben Sheffner posts SG Elena Kagan's amicus brief on behalf of the RIAA and talks about what music does not turn her on:

Copyrights & Campaigns

Fair Use Friday: How To Create A Music Mashup - Girl Talk

Google TV: A few of the future of content consumption on your television

Obama signals support for ACTA Copyright Treaty

Obama signals support for copyright treaty - The Hill's Hillicon Valley

Thursday, May 20, 2010

Was The Overheated Real Estate Market The Reason For Hitler's Downfall?

CAD Computer Software: No Artistic Sizzle, But After Filtration - Still Copyrightable Under Feist

Do you see anything copyrightable in the image that appears above?   This is the question that was faced by the Massachusetts court in Real View LLC v. 20-20 Technologies, Inc. 683 F.Supp.2d 147.   What do you think?

This image is a classic example of the merger doctrine and the scenes a faire doctrine in the computeer software context.  Here is how the court analyzed the image above under the merger doctrine, the scenes a faire doctrine and then as a compilation.

One kitchen modeling software maker ripped of another's software.  But was it copyrightable?

1st Cir: Implied Non-Exclusive License Survives Death of Architect

The First Circuit dealt with the question of whether an architect had granted an implied non-exclusive license, and if so, whether such non-exclusive implied license survived his death.

The architect had been a partner in a group that developed a property the development of which was planned according to his original plans.  Then he died.

Could the partners use the plan?  Yes, the circumstances implied a non-exclusive license.  Do such licenses survive death?  Yes.

1st Cir: Implied Non-Exclusive License In Architect's Plans After His Death

In Reversal, Random House Allows Sophie's Choice Author Styron Estate Electronic Publishing

Random House Allows William Styron’s Estate to Publish Electronically IP In BRIEF

Instructional Video on Stock Photo Rights

Instructional video on using images for commercial purposes from courtesy Plagiarism Today, article here.

Wednesday, May 19, 2010

New York Times Finally Starts Reporting On Nazi Looted Art Stories

The New York Times has steadfastly ignored the Nazi-looted art scandals confronting U.S. Museums.  Finally, Robert Edsel, author of Monuments Men has finally broken through and gotten them to report something (even though the story was reported elsewhere long ago).  The link is below.
Better late than never, and let's just pretend that this is not an old story.  Now let's see if the Old Gray Lady will start covering the stories right under its nose that are not spoonfed by some fancy publicist.

If it takes a Texas Republican to get Michael Kimmelman to start paying attention to all of the artworks stolen from Jews that are in US museums, again I say Bravo, Edsel!

See my earlier posts about Amb. Stuart Eizenstat's efforts to set up a US Restitution Commission and Robert Edsel's remarkable publicity drive.

Abroad - 13th Linz Album of Hitler’s Returned to Germany -

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Copyright Lawsuits Plummet in Aftermath of RIAA Campaign | Threat Level |

Copyright Litigation Handbook author Ray Dowd quoted in Wired Magazine:

Copyright Lawsuits Plummet in Aftermath of RIAA Campaign Threat Level

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Tuesday, May 18, 2010

Justia Ranks Copyright Litigation Blog in Top 10 Copyright Blogs

Of the 59 copyright blogs tracked by the Justia Blawsearch the Copyright Litigation Blog now ranks number 8 in popularity.   Below, the top 10 with their respective Justia Blawgsearch rankings:

1. IPKat 37
2. Recording Industry v the People 95
3. Plagiarism Today 117
4. Chilling Effects Clearinghouse 124
5. Nolo Presents the Law 183
6. Chicago IP Litigation Blog 207
7. Likelihood of Confusion 215
8. Copyright Litigation Blog 292
9. Lessig Blog 359
10. TechnoLlama 360

Unfortunately, Bill Patry stopped publishing his copyright blog, it was unquestionably the strongest player in the field.

Monday, May 17, 2010

Audio Debate: Should the US State Dept Form A Commission To Restitute Stolen Art Now In US Museums?

El Lissitzky's Proun 2 (1920) - Stolen from Germany (Provenance below)

An amazing debate that I was fortunate enough to attend earlier this year is now available in audio.  I hope that the Ethics Committee of the American Association of Museums, the American Association of Museum Directors and the College Art Association gives this a listen.   The link is here, courtesy of the American Society of International Law (you need to scroll down to the Friday program).

Tragically, the American museum community has played deaf dumb and blind when it comes to researching the stolen artworks in their collection:  artworks of European origin that entered the US after 1933 but were created before 1945.   After stuffing their collections with stolen artworks, they are hoping that the remaining Holocaust survivors will die before they are forced to reveal what is in their collections and return it to the rightful owners.   Hitler's actions were illegal for the winners of World War II: except to US museums who maintain that stripping Germany of its Jewish culture was perfectly legal.  Three generations of "art historians" have been produced in this nation's universities: almost no one has spoken out.  Is the issue cowardice or ignorance?

If US museums don't give back stolen artworks, the rest of Europe never will either.

Cultural Heritage and the Arts Interest Group: Wrestling the Dead Hand of History: Perspectives on a Proposed State Department Commission on Nazi Looted Art

Moderator: Jennifer Anglim Kreder Panelists: Stuart Eizenstat, Charles Goldstein, J. Christian Kennedy, Lucille Roussin

Date: Friday

***Provenance for Proun 2 (Construction) at Philadelphia Museum of Art

El Lissitzky (Eleazar Lissitzky), Russian, 1890 - 1941

Städtisches Museum Halle, Germany, purchased 1929 [1]; Hanover Provinzialmuseum/Landesmuseum, Germany, on loan from Städtisches Museum Halle, 1929(?)-1937 [2]; confiscated by the National Socialist authorities, 1937, EK register number 14283 [3]; with Karl Buchholz, Berlin; with Curt Valentin, Buchholz Gallery, New York, 1939 [4]; sold to A. E. Gallatin, New York, 1939 [5]; bequest to PMA, 1952. 1. See Andreas Hüneke, Die faschistische Aktion "Entartete Kunst" 1937 in Halle (Staatliche Galerie Moritzburg Halle, 1987), p. 38, no. 42; and Peter Nisbet, ed., El Lissitzky 1890-1941, exh. cat., 1987, Proun inventory no. 14, p. 160. The acquisition is also noted and illustrated in Museum der Gegenwart 1 (1930/1931), p. 13. The painting was one in a total of 46 oil paintings, drawings, and watercolors by Lissitzky purchased by the Halle museum in that year (see Im Kampf um die moderne Kunst: Das Schicksal einer Sammlung in der 1.Hälfte des 20. Jahrhunderts, exh. cat., Staatliche Galerie Moritzburg, [1985], p. 48 and p. 52). 2. Alexander Dorner, the director of the Hanover Provinzialmuseum until his forced resignation by the Nazis in 1936, recollected that Mondrian's "Composition in Blue" (1952-61-87) and Lissitzky's "Proun 2C," both later purchased by Gallatin, hung in the famous Abstract Gallery (Abstraktes Kabinett) of the Hanover museum designed 1927-28 by Lissitzky (Cauman, The Living Museum, 1958, p. 55, repr. p. 62 and p. 63, respectively, both horizontally). The information that the painting was on loan to, rather than owned by, the Hanover museum is supplied by a 1958 Art News article in which the author, Ella Winter, quotes a letter from Dorner's widow stating that 'the Lissitzkys you refer to hung in the Abstract Gallery; it [the gallery] was destroyed by the Nazis while my husband was opening the first Munich exhibition in London. When he returned he found that unique and beautiful room dismantled and himself accused of promoting "degenerate" art. The Lissitzky on loan was sold . . . and is now in the Philadelphia Museum' [ellipsis is the author's] (see "Lissitzky: A Revolutionary Out of Favor," April 1958, p. 63). In addition, this painting is not listed in the 1930 catalog of works owned by the Hanover Provinzialmuseum (Katalog der Kunstsammlungen im Provinzialmuseum zu Hannover, Bd. 1, 1930). 3. The "EK" (Entartete Kunst) or confiscation register number 14283 is stamped on a sticker on the back of the painting (the original confiscation register is housed at the Zentrales Staatsarchiv Potsdam; see Barron, ed., "Degenerate Art", exh. cat., 1991, p. 132, n. 15). It is clear from the letter quoted in the Art News article cited above that the Nazis confiscated the painting from the Hanover museum. It is not certain where the painting was stored after confiscation; Mondrian's "Composition with Blue" (PMA 1952-61-87), also confiscated from Hanover, was stored at the Schloss Niederschönhausen, the Nazi sales repository for "Entartete Kunst" confiscated from museums. 4. Four prominent German dealers were appointed to market the inventory of confiscated works, including Karl Buchholz. According to the EK register, this painting was assigned to Buchholz, owner of the Buchholz Gallery in Berlin. He was the mentor and pre-war partner of Curt Valentin (1902-1954) who named the New York gallery he opened in 1937 in Buchholz' honor. Between 1934 and 1937 Valentin ran his own gallery in Buchholz' dealership in Berlin (Nicholas, Rape of Europa, p. 3, 24; Yeide, AAM Guide to Provenance Research, p. 239, 290). Valentin, a German citizen, left Germany in 1937 to go into exile. However, he maintained contact with Buchholz, frequently travelling to Germany, where he acquired works from the Schloss Niederschönhausen and the Lucerne 1939 auction. According to Nicholas he "was able to obtain from this source [Germany] much of the inventory which established him as a major New York dealer" (Nicholas, p. 24). Hüneke, underscoring the connection between Buchholz and Valentin, refers to the latter's New York gallery as "a ready-made platform from which Buchholz could sell to America" (see "Missing Masterpieces," in Degenerate Art, p. 129). 5. Receipt from the Buchholz Gallery/Curt Valentin to Gallatin dated August 24, 1939, for purchase of both the Lissitzky and Mondrian's "Composition with Blue" (stamped "Paid" August 31, 1939).

My Favorite Fair Use Video Mashup: Mona Lisa Descending a Staircase

2d Cir: Tortious Interference and Conversion Claims Preempted By Copyright Act

Miller v. Holtzbrinck Publishers, L.L.C., 2010 WL 1932322, 1 -2 (2d Cir. May 14, 2010):

First, we consider Miller's claims against the third-party defendants. The Copyright Act preempts a state law claim when: “(1) the particular work to which the claim is being applied falls within the type of works protected by the Copyright Act under 17 U.S.C. §§ 102 and 103, and (2) the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights already protected by copyright law under 17 U.S.C. § 106.” Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir.2004). State law claims may proceed only if those claims contain “extra elements that make it qualitatively different from a copyright infringement claim.” Id. In applying this standard, “we take a restrictive view of what extra elements transform an otherwise equivalent [state law] claim into one that is qualitatively different from a copyright infringement claim.” Id . at 306; accord Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 851 (2d Cir.1997). More specifically, “[i]f unauthorized publication is the gravamen of [plaintiff's] claim, then it is clear that the right [she] seek[s] to protect is coextensive with an exclusive right already safeguarded by the [Copyright] Act” and thus that state law claim is preempted. Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 201 (2d Cir.1983), rev'd on other grounds, 471 U.S. 359 (1985) (holding that plaintiff's claims of tortious interference and conversion were preempted by the Copyright Act).

 Applying the above framework to this case, we conclude that the Copyright Act preempts Miller's claims of tortious interference and conversion. Here, as in Harper & Row, “unauthorized publication is the gravamen of [her] claim.” Id. As the District Court stated, “[h]er case rests on her theory that [the third-party defendants] tortiously interfered with her business relations and converted her literary work by publishing the book without authorization [by her] or credit [to her].” Miller v. Holtzbrinck Publishers, L.L.C., 2008 U.S. Dist. LEXIS 92038 at *8 (S.D.N.Y. Nov. 12, 2008). For this reason, we conclude that Miller's claims against the third-party defendants are preempted by the Copyright Act.