Thursday, April 28, 2016

Copyright Law: Seventh Circuit Slaughters True Crime Writer On Motion To Dismiss

When a plaintiff sues you for copyright infringement but does not attach the allegedly infringed materials to the complaint, but refers to the materials in the complaint, can you move to dismiss the complaint under Rule 12(b)(6) of the Federal Rules of Civil Procedure?

The Seventh Circuit seems to say both "no" and "yes" in Sissom v. Snow, --- Fed. Appx. --- (October 1, 2015).

In this case, the district court considered the copyright claims of a journalist Carol Sissom who'd written a 2006 book called the LaSalle Street Murders about her investigation of a cold case that led to the case being reopened.

In 2012, defendant Robert Snow wrote Slaughter on North LaSalleSlaughter told the story of Sissom's investigation, subsequent developments and was critical of Sissom.   At the heart of Sissom's copyright claims were passages in Slaughter recounting and paraphrasing the investigation described in Sissom's book.

A problem for Snow's lawyers:  how to get rid of the case quickly and show that there was no copyright infringement when Sissom had failed to attach the allegedly infringed materials and the allegedly infringing materials?

Snow's defense lawyers relied on the "incorporation by reference" doctrine to bring a motion to dismiss the complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure:

Rule 12. Defenses and Objections: When and How Presented; Motion for Judgment on the Pleadings; Consolidating Motions; Waiving Defenses; Pretrial Hearing

(b) How to Present Defenses. Every defense to a claim for relief in any pleading must be asserted in the responsive pleading if one is required. But a party may assert the following defenses by motion:
(1) lack of subject-matter jurisdiction;
(2) lack of personal jurisdiction;
(3) improper venue;
(4) insufficient process;
(5) insufficient service of process;
(6) failure to state a claim upon which relief can be granted; and
(7) failure to join a party under Rule 19.
Rule 12(b)(6) is a big shortcut.   It saves the defendant the time and money of having to prepare a responsive pleading (answer and counterclaims).
So Snow's lawyers made a motion to dismiss the complaint pursuant to Rule 12(b)(6) and attached Sissom's book, Snow's book and did a comparison showing that there was no copyright infringement.
The district court granted the motion and dismissed the case.  Relying on the "incorporation by reference" doctrine, the district court relied on the books referred to in the complaint, but actually supplied by Snow's motion to dismiss.   Sissom appealed to the Seventh Circuit.
The Seventh Circuit found that the district court erred by considering materials not attached to the complaint on a Rule 12(b)(6) motion and stated that the motion should have been considered as a motion for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure.
The Seventh Circuit found the error to be harmless, and affirmed the dismissal of Sissom's claims against Snow with prejudice.
Not mentioned in the Seventh Circuit's decision is Rule 12(d) of the Federal Rules of Civil Procedure which says:
(d) Result of Presenting Matters Outside the Pleadings. If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56. All parties must be given a reasonable opportunity to present all the material that is pertinent to the motion.
Using the incorporation by reference doctrine is, as the Seventh Circuit's decision shows, a tricky path.  Practice Tip:  In making a motion to dismiss pursuant to Rule 12(b)(6), consider asking in the alternative (in case your motion is not granted) for permission to move for summary judgment also under Rule 56.  This will give the court the flexibility to move the case quickly if it feels that additional evidence should be reviewed.   Moving for summary judgment requires some additional work and time (preparation of a list of undisputed facts and law for example) and a longer briefing schedule, but may be a surer route to a quick and lasting victory.
My book Copyright Litigation Handbook (Thomson Reuters West 2015-2016) contains many practice tips designed to assist attorneys in making litigation decisions and engaging in motion practice.  Unlike other works dedicated to copyright law, it seeks to aid the practitioner by showing how to work with clients and investigations, and to navigate the Copyright Office and courts in handling litigation-related matters.
 Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd
 Copyright Litigation Handbook on Westlaw

Saturday, April 23, 2016

Copyright Law: What the Practitioner Needs to Know - Sign Up Today!

Live Broadcast on May 5, 2016
This course covers the fundamentals of what a lawyer needs to know to identify, register and make claims to copyrighted materials, how to identify and negotiate deals involving copyrightable subject matter, and how to deal with the U.S. Copyright Office with respect to licenses, assignments and pre-litigation practice. Attendees will learn practice procedures related to cease and desist letters and DMCA takedown notices. We will also discuss how to manage client expectations before pursuing a copyright claim in court and how to assess the all-important question of whether statutory damages or attorneys’ fees will be available. Related professional ethics are covered for each topic. Whether you are tackling basic copyright issues for the first time or are an advanced practitioner seeking fresh ways to look at the ever-changing legal landscape in light of recent case law developments, this practice-oriented course offers value for you.
This course is co-sponsored by the Federal Bar Association.
Key topics to be discussed:
  • Principles of Copyright Law
  • Registering, Supplementing and Correcting Copyright Claims
  • The Logistics of the Copyright Lifecycle
  • License Agreements: What the Dealmaker Needs to Know
  • Work For Hire Agreements
  • Legal Ethics: Investigation and Attorneys’ Fees
  • Cease and Desist Letters and Takedown Notices
  • Ownership or License Litigation
  • Copyright Infringement
  • Motions, Trials, Hearings, Settlements

Date / Time: May 5, 2016
  • 1:00 pm – 5:30 pm Eastern
  • 12:00 pm – 4:30 pm Central
  • 11:00 am – 3:30 pm Mountain
  • 10:00 am – 2:30 pm Pacific

Choose a format:
  • Live Video Broadcast/Re-Broadcast: Watch Program “live” in real-time, must sign-in and watch program on date and time set above. May ask questions during presentation via chat box. Qualifies for “live” CLE credit.
  • On-Demand Video: Access CLE 24/7 via on-demand library and watch program anytime. Qualifies for self-study CLE credit. On-demand versions are made available 7 business days after the original recording date.
For more information and to sign up, click here
 Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd
 Copyright Litigation Handbook on Westlaw

Thursday, April 21, 2016

Copyright Law In Cleveland's Kitchens: Sixth Circuit Says Recipe Book Not Copyrightable

In Tomaydo-Tomahhdo, LLC v. Vozary, --- Fed.Appx. --- (6th Cir. October 20, 2015), the United States Court of Appeals for the Sixth Circuit considered the claims of a Cleveland restaurant Tomaydo-Tomahhdo owner suing a former co-owner whom she claimed copied her recipe book in launching a new catering business, Caterology.  As part of a buyout, the former owner had been required to return all menu-related materials.

Copyright law covers only original works of authorship.  It does not cover recipes.  It does not cover lists of ingredients.  It does not cover instructions, because "functional directions" are not copyrightable.

However recipe books can show originality and obtain copyright protection "if the authors lace their directions for producing dishes with musings about the spiritual nature of cooking or reminiscences they associate with the wafting odors of certain dishes in various stages of preparation." (citation omitted).

The Sixth Circuit doesn't say much in its opinion about the materials that it was looking at and it states that the plaintiff didn't point out anything creative or original in the materials.

The case law is littered with plaintiffs seeking to use copyright law to obtain relief that should have been obtained through contract or relief that - if warranted- might be more appropriate under the law of unfair competition.

My book Copyright Litigation Handbook (Thomson Reuters 2015-2016) discusses the difference between contracts involving copyrighted materials and questions arising under the Copyright Act.
Anyone looking to break up a business should think about the copyright consequences and consult this important video before consulting a lawyer:
 Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd
 Copyright Litigation Handbook on Westlaw

Monday, April 18, 2016

Are The Turtles Certifiable? Music Industry To Litigate Pre-1972 Public Performance Right @ New York Court of Appeals In Albany

On April 13, 2016, the United States Court of Appeals for the Second Circuit "certified" the question of whether New York common law provides a right of public performance to owners of pre-1972 sound recordings to the New York Court of Appeals, which is New York State's highest appellate court. 

The "Second Circuit" is a federal court, just below the U.S. Supreme Court, that has appellate jurisdiction over all of the U.S. District Courts in Connecticut, New York and Vermont.  The "certification" came about because the band the Turtles complained that Sirius FM radio was copying, caching, and broadcasting their pre-1972 sound recordings. 

The full decision in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 15-1164 (2d. Cir. 2016) can be found here.

Federal courts are often called upon to answer questions of state law.  What is "certification"?   Why would the highest federal appeals court in New York "certify" a question to the highest appellate court in New York State?

Before answering those questions, I would like to review some basics that are important to attorneys asserting copyright-related claims in federal and state courts.   If a case "arises under" the Copyright Act, it may be asserted in federal court under federal question jurisdiction.   If it is a breach of a license agreement (a contract) involving copyrights, the question may be a pure question of state law and may not "arise under" the Copyright Act.

 Lawsuits in federal court may generally be based on "federal question" jurisdiction.  That is, the case involves questions of federal law, permitting a litigant to file its claims in federal court.

28 U.S. Code § 1331 - Federal question

The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States.

Federal courts also have "diversity" jurisdiction.  When residents of different states (or of a foreign country) sue each other, the federal courts may, under certain circumstances, entertain cases involving purely state law.

(a) The district courts shall have original jurisdiction of all civil actions where the matter in controversy exceeds the sum or value of $75,000, exclusive of interest and costs, and is between—                    
(1) citizens of different States;                    
(2) citizens of a State and citizens or subjects of a foreign state, except that the district courts shall not have original jurisdiction under this subsection of an action between citizens of a State and citizens or subjects of a foreign state who are lawfully admitted for permanent residence in the United States and are domiciled in the same State;                    
(3) citizens of different States and in which citizens or subjects of a foreign state are additional parties; and                    
(4) a foreign state, defined in section 1603(a) of this title, as plaintiff and citizens of a State or of different States.

Then there are cases that are so close to federal law that it may take interpreting federal law questions to understand the state law question or whether federal and state law overlap or conflict with each other.  Below is part of one of the statutes that "opens the door" to federal courts answering state law questions.  I have inserted in brackets "federal question" and diversity to make the statute more easily understandable:

(a)Except as provided in subsections (b) and (c) or as expressly provided otherwise by Federal statute, in any civil action of which the district courts have original jurisdiction [FEDERAL QUESTION JURISDICTION], the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution. Such supplemental jurisdiction shall include claims that involve the joinder or intervention of additional parties.                
(b) In any civil action of which the district courts have original jurisdiction founded solely on section 1332 of this title [DIVERSITY JURISDICTION], the district courts shall not have supplemental jurisdiction under subsection (a) over claims by plaintiffs against persons made parties under Rule 14, 19, 20, or 24 of the Federal Rules of Civil Procedure, or over claims by persons proposed to be joined as plaintiffs under Rule 19 of such rules, or seeking to intervene as plaintiffs under Rule 24 of such rules, when exercising supplemental jurisdiction over such claims would be inconsistent with the jurisdictional requirements of section 1332.

(c) The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if—
(1) the claim raises a novel or complex issue of State law,                    
(2) the claim substantially predominates over the claim or claims over which the district court has original jurisdiction,                    
(3) the district court has dismissed all claims over which it has original jurisdiction, or                    
(4)in exceptional circumstances, there are other compelling reasons for declining jurisdiction.                    

So.  Back to the questions: "what is certification?" and "why certification?"

The Second Circuit's Local Rule 27.2: Certification of Questions of State Law provides as follows:

(a) General Rule. If state law permits, the court may certify a question of state law to that state's highest court. When the court certifies a question, the court retains jurisdiction pending the state court's response to the certified question.

(b) Motion or Request. A party may move to certify a question of state law by filing a separate motion or by including a request for certification in its brief.

"Certification" means that the Second Circuit asks the New York Court of Appeals to decide an important question of New York law.

Here is what the Second Circuit considers in determining whether to "certify" the question to the New York Court of Appeals:

(1) whether the New York Court of Appeals has addressed the issue and, if not,whether the decisions of other New York courts permit us to predict how the Court of Appeals would resolve it;
 (2) whether the question is of importance to the state and may require value judgments and public policy choices; and
(3) whether the certified question is determinative of a claim before us.

Here is Judge Guido Calabresi's explanation of the issue certified:

In 1971, Congress amended the Copyright Act to grant limited copyright protection to sound recordings fixed on or after February 15, 1972, while expressly preserving state-law
property rights in sound recordings fixed before that date. See 17 U.S.C. § 301(c). Later,
Congress created an exclusive performance right in post-1972 sound recordings performed
by digital audio transmission. See 17 U.S.C. § 106(6). Performances of post-1972 sound
recordings transmitted by other means, such as AM/FM radio, still do not enjoy federal

copyright protection. Because Appellee’s recordings were fixed before February 15, 1972,
they are protected, if at all, by state copyright law. While New York provides no statutory

protection to owners of pre-1972 sound recordings, New York common law does provide certain rights to copyright holders in these recordings. See Capitol Records, Inc. v. Naxos of
Am., Inc., 4 N.Y.3d 540, 563 (2005) (Naxos II). As a result, the issue before us is whether
New York common law affords copyright holders the right to control the performance of
sound recordings as part of their copyright ownership.

Judge Calabresi has left the "policy choice" as to whether to recognize the right to the New York Court of Appeals.   Many law professors and folks in the broadcasting industry have filed amicus briefs, guaranteeing that the Amtrak to Albany will be booked on argument day.

My book Copyright Litigation Handbook (Thomson Reuters West 2015-2016) discusses at length how to choose the forum in which to assert copyright claims and analyzes the various substantive and procedural hurdles to successfully pursuing a copyright owner's rights and remedies.

 Copyright Litigation Handbook on Westlaw