Saturday, January 22, 2011

Defamation Claim Based on Copyright Registration Statement Part II

Malmesbury Bible courtesy Wikimedia Commons

Previously, I posted on a case involving a defamation claim based on copyright registration statement, link and link to case here .

Complaint by an alleged author, based on an unpublished underlying work, complaining that a published work was derivative of her work, and infringed on her copyright and her method of bible study.  Complaint here:

Morris v Atchity Complaint

I noted in my prior post that I hadn't bothered to check the docket sheet to figure out what statement in a copyright registration statement could support a claim for defamation.   My laziness and ignorance was rewarded by American University Washington College of Law student Mark Tratos picking up on the theme, on the Intellectual Property Brief blog here.

So, rather than have everyone speculate, I did what I should have done.  Kenneth Atchity's counterclaim for based on the following allegation:

"Margaret Morris wrote and represented to the United States Copyright Office, under penalty of perjury, that "A contract for this ghostwritten book was offered and my agent Atchity concealed it and allowed it to be illegally signed."

It would seem that Morris' statement would be privileged, since it is a quasi-judicial function and the federal government specifically invites copyright "claims" and requires that they be submitted under penalty of perjury.   Ordinarily, such statements enjoy immunity.

I found a couple of discussions of the Administrative Procedure Act in the case law that generally relate to this, but nothing really on point, see below.    I discuss the application of the Administrative Procedure Act in my Copyright Litigation Handbook 2010, available from West Publishing or Amazon.

Utica College v. Gordon, 2009 WL 3418136, 4 (N.D.N.Y. 2009) appeal denied here.

" application for the registration of a copyright is more akin to an administrative proceeding. See 17 U.S.C. § 701(a) (“All administrative functions and duties under this title, except as otherwise specified, are the responsibility of the Register of Copyrights as director of the Copyright Office of the Library of Congress.”) (emphasis added). Additionally, the decision to grant a copyright registration is subject to the Administrative Procedure Act. 17 U.S.C. § 701(e). Therefore, defendants are not entitled to attorneys' fees because even if plaintiff's applications for copyright registration were objectively unreasonable, the applications did not constitute civil actions brought under title 17.

Darden v. Peters, 488 F.3d 277, 283 -286 (4th Cir. 2007)

The Copyright Act provides that “all actions taken by the Register of Copyrights under this title are subject to the provisions of the Administrative Procedure Act.” 17 U.S.C. § 701(e).FN2 One routine function of the Register is to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and ... the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). If so, then the Register must issue a certificate of registration to the applicant, see 17 U.S.C. § 410(a); if, however, the Register determines that “the material deposited does not constitute copyrightable subject matter or that the claim is invalid for any other reason,” then the Register must refuse registration and notify the applicant of the reasons for refusal, 17 U.S.C. § 410(b). Because the Register's denial of a copyright registration application is, by the statute's plain terms, an action taken by the Register under the Copyright Act, the APA governs judicial review. See 17 U.S.C. § 701(e); Atari Games Corp. v. Oman, 888 F.2d 878, 879 & n. 1 (D.C.Cir.1989) (“ Atari I ”); Nova Stylings, Inc. v. Ladd, 695 F.2d 1179, 1182 (9th Cir.1983).
FN2. The Copyright Act excepts the Register's performance of a single function from APA review: authorization of, or refusal to authorize, copies or reproductions of “deposited articles retained under the control of the Copyright Office.” 17 U.S.C. § 706(b); see 17 U.S.C. § 701(e). This narrow exception is not at issue here.
The district court concluded that the proper standard of review under the APA is the familiar “abuse of discretion” standard whereby a reviewing court will “set aside agency action, findings, and conclusions” that are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. § 706(2)(A). This is consistent with the few federal decisions-most of which were issued by the same court-addressing the proper review standard under the APA for courts directly reviewing a registration decision. See Atari Games Corp. v. Oman, 979 F.2d 242, 243 (D.C.Cir.1992) (“ Atari II ”); OddzOn Prods., Inc. v. Oman, 924 F.2d 346, 347-48 (D.C.Cir.1991); Atari I, 888 F.2d at 881; Coach, Inc. v. Peters, 386 F.Supp.2d 495, 497 (S.D.N.Y.2005). See generally 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.11[B][3], at 12-208 (2005).
[2] Darden does not contest the general applicability of the APA to his claim; indeed, he expressly brought this action under the APA. Darden contends, however, that the district court incorrectly applied the abuse of discretion standard set forth in section 706(2)(A) of the APA. Darden suggests instead that section 706(2)(B) applies to a challenge of the Register's denial of a copyright registration application and mandates a de novo standard of review. Section 706(2)(B) directs that the reviewing court set aside agency actions the court finds to be “contrary to constitutional right, power, privilege, or immunity.” 5 U.S.C. § 706(2)(B). Under the APA, constitutional questions that arise during APA review fall expressly within *284 the domain of the courts. See 5 U.S.C. § 706 (requiring that “[t]o the extent necessary to decision and when presented, the reviewing court shall ... interpret constitutional and statutory provisions”) (emphasis added). Thus, judicial review of a claim that the agency's actions violated a claimant's constitutional rights is conducted de novo. See Western Energy Co. v. United States Dep't of Interior, 932 F.2d 807, 809 (9th Cir.1991).
[3] [4] [5] Darden cites no authority even remotely suggesting that any court has ever regarded the agency's routine decision to deny registration as having constitutional ramifications for the claimant. Darden derives the basis for his argument from Article I of the United States Constitution which grants Congress the power to provide copyright protection to the extent Congress sees fit. See U.S. Const. Art. I, § 8, cl. 8 (granting Congress legislative power “[t]o promote the Progress of Science and useful Arts, by securing ... to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). Congress is under no mandate from this clause, however, to provide copyright protection. See Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881, 883 (9th Cir.2005) (“As is clear from its text, that clause of the Constitution grants no substantive protections to authors. Rather, Congress is empowered to provide copyright protection.”). Copyright is solely a creature of statute; whatever rights and remedies exist do so only because Congress provided them. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 431, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). Thus, as there is no constitutional right to copyright registration, the Register's refusal to register Darden's claim cannot be “contrary to constitutional right” as it must be for section 706(2)(B) to apply.
[6] Darden next contends that because the Register's decision was based on the agency's incorrect resolution of a legal question, i.e., whether Darden's claim lacked sufficient originality to be registrable, the Register's decision is subject to de novo review. More particularly, Darden argues that the Register's refusal to find sufficient originality in his submitted works despite the “extremely low” amount of creativity required for a work to be copyrightable, Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), was an erroneous conclusion that must be set aside under the “not in accordance with law” provision of section 706(2)(A) of the APA. Additionally, Darden cites various decisions noting, in the context of copyright infringement litigation, “that copyrightability is always an issue of law” for the court. Gaiman v. McFarlane, 360 F.3d 644, 648 (7th Cir.2004); see Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 34 n. 5 (1st Cir.2001); Collezione Europa U.S.A. v. Hillsdale House, 243 F.Supp.2d 444, 452 (M.D.N.C.2003).
[7] We reject Darden's argument. Essentially, Darden is claiming that the Register simply reached the wrong result, not that the Register applied the wrong legal standard or misapprehended or ignored the controlling legal principles. See Turgeau v. Administrative Review Bd., 446 F.3d 1052, 1057 (10th Cir.2006) (explaining that under § 706(2)(A) “[f]ailure to apply the correct legal standard or to provide this court with a sufficient basis to determine that appropriate legal principles have been followed is grounds for reversal”) (internal quotation marks omitted). Review under section 706(2)(A) is “narrow” and the reviewing court is not permitted to substitute its own judgment for the judgment of the agency. *285 Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43, 103 S.Ct. 2856, 77 L.Ed.2d 443 (1983). Rather, the court is to determine “whether the decision was based on a consideration of the relevant factors,” West Virginia v. Thompson, 475 F.3d 204, 212 (4th Cir.2007) (quoting Citizens to Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402, 416, 91 S.Ct. 814, 28 L.Ed.2d 136 (1971)), or whether “the agency has relied on factors which Congress has not intended it to consider, [or] entirely failed to consider an important aspect of the problem,” Motor Vehicle Mfrs., 463 U.S. at 43, 103 S.Ct. 2856; see Thompson, 475 F.3d at 212.
Darden makes no assertion of this kind here; he merely argues that the agency should have concluded that the Maps and APPRAISERSdotCOM works contained the requisite level of creativity, citing Feist and other precedents. At every level of internal agency review, however, the Copyright Office recognized Feist as having established the contours of the originality element of a copyright claim. Because Darden has failed to identify any relevant factor or legal principle that the Register failed to consider, the agency's decision cannot be set aside as “contrary to law.”
[8] Finally, Darden argues that the Register's determination that a copyright claim lacked sufficient originality to warrant registration is subject to de novo review in the context of an infringement action under section 411(a) of the Copyright Act. He contends that de novo review of the copyrightability issue should also apply in the context of APA review for the sake of efficiency and predictability. We cannot agree.
Congress has afforded disappointed copyright applicants two separate methods of seeking redress for the decision of the Copyright Office not to register a copyright claim. First, as we explained previously, the applicant may file a review action under the APA against the Register of Copyrights for the sole purpose of having the denial of registration set aside. See 17 U.S.C. §§ 410(a), 701(e). Darden's action, of course, is such a case. Second, the claimant may seek judicial review of the rejected registration as part of an infringement action against an alleged infringer under section 411(a) of the Copyright Act.FN3
FN3. Registration is a prerequisite for a copyright infringement action. See 17 U.S.C. § 411(a). However, if “the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement if notice ... is served on the Register of Copyrights” who “may, at his or her option, become a party to the action with respect to ... registrability of the copyright claim.” Id.
[9] [10] Both kinds of actions involve, to one degree or another, consideration of whether a copyrightable claim has been presented. The Register has a statutory duty to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and ... the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). Whether the Register issues the certificate of registration or not, the Register necessarily makes a determination about the validity of the copyright claim. And, with respect to a copyright infringement action, the plaintiff must establish “ownership of a valid copyright and copying of constituent elements of the work that are copyrightable.” Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 407 (5th Cir.2004) (internal quotation marks omitted). Copyright ownership, in turn, requires “proof of originality and copyrightability.” *286 Id. at 408; see Feist, 499 U.S. at 361, 111 S.Ct. 1282.
Darden's argument notwithstanding, it is not a foregone conclusion that courts owe no deference whatsoever to the Register's decision in the context of an infringement action under section 411(a). Indeed, courts are split on this issue. Compare John Muller & Co. v. New York Arrows Soccer Team, 802 F.2d 989, 990 (8th Cir.1986) (applying abuse of discretion standard to infringement claim); Norris Indus. v. I.T. & T. Corp., 696 F.2d 918, 922 (11th Cir.1983) (same), with Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 414 (2d Cir.1985) (according no deference to Register's copyrightability conclusion); OddzOn Prods., 924 F.2d at 347-50 (same). We need not weigh in on this issue, however, as Darden brought this action against the Register under the APA seeking review of the denial of registration for insufficient originality in his works. Even if no deference is due to the Register's decision by courts adjudicating infringement actions under section 411(a), we must apply the standards set forth in the APA. To do otherwise would be to ignore the clear and unambiguous language of the statute, which we cannot do. Accordingly, we review the decision to register Darden's works for abuse of discretion.

This is a long way of saying that it seems to me that if someone else registers a claim to a work that you think you own, you file a competing registration claim that "defames" or "slanders the title" of the first claimant.   Since you are required to do so by law as a prerequisite to commencing suit in federal court, it would appear to me that any statements would be subject to absolute judicial immunity (subject to the limits of that doctrine).
Bible study was always a rough game.

Morris v Atchity Counterclaims

Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

Thursday, January 20, 2011

Art Litigation: Nazi-Era Art Restitution - Legal Update Jan 24 New York State Bar Association

Nazi-Era Art Restitution Legal Update NYSBA EASL Jan 24 2011

On Monday January 24, 2011 I will be part of a panel organized by the New York State Bar Association' Entertainment Arts and Sports Law Section, flyer above, direct link and program description below.


This program will address recent cases brought by heirs of Holocaust victims concerning the ownership of
artworks claimed to have been looted or sold under duress during the Nazi era. When the art resurfaced –
often decades later – in the hands of museums, collectors, galleries and auction houses, ownership disputes
have raised complex procedural, substantive, and policy issues. This panel includes lawyers representing
both sides of several high-profile cases, including the eleven-year battle which resulted in a $19 million
settlement with the Leopold Museum in Vienna in the Egon Schiele - Portrait of Wally case and the
seven-year battle with the Republic of Austria, which resulted in the restitution to the family of Holocaust
victims of a number of important works by Gustav Klimt, valued, in the aggregate, in excess of $300
million. The esteemed panelists will also discuss cases involving the Museum of Fine Arts in Boston, the
Norton Simon Museum in Pasadena, and descendants of families who are laying claim to works by Picasso,
Pissarro, Schiele, Kokoschka, Klimt, and Lucas Cranach the Elder

 Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

Monday, January 17, 2011

Art Law & Beer - SDNY Federal Bar Association Jan 26 at Gallery Henoch - Free Networking Event

Art Law & Beer - Federal Bar Association The Younger Lawyers Division of the Federal Bar Association Southern District of New York Chapter


Free Event
January 26th
6:30 - 8:30 PM
555 W. 25th Street

DAVID KASSAN, Figurative Artist
LILLIAN LASERSON, Copyright and Entertainment Lawyer and Former General Counsel of DC Comics
DANIEL FISHER, Beer Blogger and Craft Beer Advocate

RSVP to Michael Zussman

Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

Fair Use Doctrine in Copyright Law: Producer's Use of Clip in Jersey Boys is Fair Use

In Sofa Entertainment Inc. v. Dodger Productions, Inc., 2010 WL 4228343 (C.D. Cal. July 12, 2010), a seven-second video clip from The Ed Sullivan Show was used in the play Jersey Boys without permission.   Jersey Boys is the story of The Four Seasons, a rock bank led by Frankie Vallie.   The Jersey Boys got a critical boost from playing numerous times on The Ed Sullivan Show.

It was undisputed that the clip depicted an important moment in the career of the Four Seasons.
Copyright law's fair use doctrine is embedded in 17 USC 107, which provides:

§ 107. Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A [a copyright owner's exclusive rights to publish and distribute copyrighted works] , the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Factor 1.  Purpose and character of use. In the Jersey Boys case, the parties disputed whether the work was a fictionalized account or a biography of the Four Seasons, since this would have an effect on the first factor.   The court found that Jersey Boys was meant to entertain, whether or not it was biographical.  This factor weighed in Plaintiff's favor.

Factor 2.  Transformative use.   The court found a transformative use because the clip was used merely as an historical reference point in a play.  It did not serve the same entertainment purpose as the original Ed Sullivan Show appearance of the Four Seasons.  This factor weighed in Defendant's favor.

Factor 1.   Commercial use.   Although the court found the use to be commercial, the transformative use and the very short amount borrowed rendered the commercial use slight and not to be accorded great weight.

Factor 3.   Amount and substantiality of portion used.  The court found that Jersey Boys did not borrow the "heart" of the original work: The Four Seasons' performance, but merely borrowed Ed Sullivan's introduction, which was not the heart of the underlying work.   The court found the performances by featured talent to be the "heart" of these shows.

Factor 4.   The court found that there was no evidence of a market for the clip and that use of the clip, which did not contain the original Four Seasons' performance, was not a commercial substitute for the underlying work, which contained the Four Seasons' performance.  Given the lack of market evidence, this factor weighted against the Plaintiff.

Weighing and balancing the factors, the court found that use of the clip was "fair use".   On Sept. 29 2010, an appeal was filed before the Ninth Circuit that is still pending.

More on the fair use doctrine here

Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  
Enhanced by Zemanta

Copyright Infringement: Attorneys Fees Denied for Prevailing Party in Roger Miller Case

Roger Miller Music Inc. v. SONY/ATV Publishing LLC, 2010 WL 4180814 (M.D. Tenn. Oct. 19, 2010).

Although it is often said that there is a presumption that attorneys fees are awarded to the prevailing party, obtaining attorneys fees is tricky.   Just because you won the case doesn't mean that your time entries can be submitted willy-nilly for every effort made in the case.   Because there are so many minefields, I devoted a whole chapter of Copyright Litigation Handbook to the topic.

In Roger Miller Music, the plaintiff prevailed, but didn't recover fees.   But the fee application did not argue the Fogerty factors:

1. whether the non-prevailing party's claims were frivolous;
2. the non-prevailing party's motivation;
3. the factual and legal unreasonableness of the non-prevailing party's position;
4. the need to advance considerations of compensation and deterrence.

From Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994).   The takeaway:

1  fee applications should address the Fogerty factors;
2. fee applications should distinguish between time spent on successful and unsuccessful efforts;
3. fee applications should not ask for fees related to unsuccessful efforts.
4. fee applications should argue the "big picture" questions of policy and deterrence.

In Roger Miller, plaintiffs unsuccessfully appealed one of the trial court determinations, then failed to break out the time expended on that appeal.    The trial court found that plaintiff's failure to submit evidence that the Fogerty factors were satisfied warranted denial of attorneys fees.

More on attorneys fees here.

In sum, simply winning isn't enough to recoup your attorneys fees.
Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  
Enhanced by Zemanta

Copyright Litigation: Defamation Claim Based on Copyright Registration Filing Survives Summary Judgment

In Morris v. Atchity, 2010 WL 4181452 (C.D. Cal. Oct. 15, 2010), the court declined to grant a summary judgment motion dismissing a claim for defamation based on statements made in a copyright registration.   This is an unusual claim, but the decision does not explain what the allegedly defamatory statement made was.

Any slander of title-type of claim would appear to be preempted by the Copyright Act:  anyone can file a competing claim, this is the point of the copyright registration process.   I didn't dig into the docket sheet to figure out what possible statement might be defamatory.

In Morris v. Atchity, Plaintiff Margaret Morris alleged that her work "Jesus Augustus: From Imperial Cult to Christianity" was infringed by a novel based on the work "The Ashes of Christ/The August God".

Plaintiff alleged that she submitted the work to defendant and had an implied contract.   The court declined summary judgment on the implied contract, finding that material questions of fact precluded a dismissal based on preemption.

Defendants argued that the works share only a similar historical theory.   In denying the motion, the court found that "reasonable minds might differ as to whether there are substantial similarities between the two works with respect to the protected expression of ideas contained in Plaintiff's literary work."

Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  
Enhanced by Zemanta

Tuesday, January 11, 2011

How To Testify Before Congress: It's a Whole New World - January 13

Samuel L. Clemens -  Mark Twain - Congressional Gadfly
Image Courtesy Wikipedia

Please join us this Thursday to get Bill LaForge's great new book:  How To Testify Before Congress.

The book features Samuel Clemens (p/k/a Mark Twain)'s testimony before Congress on copyright, which is a big hoot.

Thursday, January 13, 2011, 6:00 PM – 9:00 PM
3 MCLE Credits: 1.5 Skills; 1.5 Professional Practice
New York County Lawyers' Association
Testifying before Congress is different from giving testimony in any other forum – including courts of law – because the rules are different and the deck is stacked. This CLE will cover preparation and delivery of
congressional testimony from A to Z: the

• context and climate of the committee hearings process;
• how hearings are organized and staged;
• who should testify and how to get invited;
• the types of hearings and committee hearing players;
• preparation of a stellar written statement;
• rehearsal of the witness;
• key ingredients to superbly delivered oral testimony;
• how to respond to committee questions, including handling hostile inquiries and interrogators;
• how to excel as a witness with adequate preparation; and,
• strategies to maximize (or minimize) testimony impact and how to mitigate potential communication crisis.

This program provides a must have tutorial on preparing and delivering testimony before Congress and in Congressional hearings for use by lawyers, agencies, associations, corporations, military personnel, NGO’s
and state and local officials.

Attendees at the program will receive a copy of Testifying Before Congress, by William N. LaForge, The Capital.Net, Inc. ©2010.
Program Co-Sponsor: Southern District of New York Chapter of the Federal Bar Association

Program Chair and Moderator: Raymond Dowd, Dunnington, Bartholow & Miller LLP

Faculty: William N. LaForge, Winstead PC, author of Testifying Before Congress
Luke McGrath, Dunnington, Bartholow & Miller LLP
Jeff Richardson, Starkman Associates

Link to flyer with full information here:

 Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here