Copyright Litigation Handbook - Contents and Overview

Copyright litigation handbook contents and overview

View more presentations from Raymond Dowd.

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  

SDNY: Copyright Transfer Termination Notices Subject California Copyright Heirs To Jurisdiction In New York

Kirby & Roussos Courtesy Wikipedia

In Marvel Worldwide, Inc. v. Kirby, 2010 WL 1655253 (April 14, 2010), SDNY Judge Coleen McMahon found that two defendants, heirs of comic artist Jack Kirby, submitted themselves to transactional jurisdiction under New York's long-arm statute by sending copyright transfer termination notices pursuant to 17 USC 304(c).   The decision discusses acts by non-domiciliaries that may trigger jurisdiction over foreign defendants for the purposes of being subjected to claims relating to the transaction in New York and uses the "minimum contacts" of International Shoe and Worldwide Volkswagen.

The Kirby heirs sent a notice of termination and Marvel responded with a declaratory judgment action.  The heirs moved to dismiss and simultaneously filed an action in California.   The court distinguished transfer termination notices from cease and desist letters which, if properly drafted and addressed (see Copyright Litigation Handbook Chapter 6) ordinarily (there are exceptions and murky case law), absent other contacts with the forum, should not, standing alone, subject the sender to personal jurisdiction in a foreign jurisdiction.

The Marvel v. Kirby decision does not discuss the copyright venue statute, 28 U.S.C. 1400 which provides:

§ 1400. Patents and copyrights, mask works, and designs

(a) Civil actions, suits, or proceedings arising under any Act of Congress relating to copyrights or exclusive rights in mask works or designs may be instituted in the district in which the defendant or his agent resides or may be found.

(b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.

7th Circuit: $60,000 Sanction on Attorney for Bringing A Copyright Action

The United States had the "American Rule" for most of its history.  In recent years, the practice of law has been practically criminalized by judges imposing financial sanctions on attorneys.  Here is a case where sophisticated defense counsel gave repeated "warnings" (rather than making a Rule 11 motion), and then got a judge and a circuit court to sanction the attorney by going around Rule 11, sanctioning the attorney, giving the defendant a windfall.  Here's how:

In Tillman v. Newline Cinema, 2010 WL 1452500 (7th Cir. April 13, 2010), the 7th Circuit affirmed a lower court's decision to sanction both a client and an attorney.  The decision would be rather routine had the court proceeded under Rule 11 of the Federal Rules of Civil Procedure, which provides that a party seeking sanctions must first serve the person against whom sanctions are sought a copy of a motion seeking sanctions, and if the party withdraws the offending pleading, the Rule 11 sanctions motion can't be filed.

The Tillman court didn't rely on Rule 11, it relied on the court's inherent power to impose sanctions:

§ 1927. Counsel’s liability for excessive costs



Any attorney or other person admitted to conduct cases in any court of the United States or any Territory thereof who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.
 
Rule 11 (not discussed by the court at all), provides as follows:
 
Rule 11. Signing Pleadings, Motions, and Other Papers; Representations to the Court; Sanctions

(a) Signature.
Every pleading, written motion, and other paper must be signed by at least one attorney of record in the attorney's name — or by a party personally if the party is unrepresented. The paper must state the signer's address, e-mail address, and telephone number. Unless a rule or statute specifically states otherwise, a pleading need not be verified or accompanied by an affidavit. The court must strike an unsigned paper unless the omission is promptly corrected after being called to the attorney's or party's attention.
(b) Representations to the Court.
By presenting to the court a pleading, written motion, or other paper — whether by signing, filing, submitting, or later advocating it — an attorney or unrepresented party certifies that to the best of the person's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:
(1) it is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation;
(2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law;
(3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(4) the denials of factual contentions are warranted on the evidence or, if specifically so identified, are reasonably based on belief or a lack of information.
(c) Sanctions.
(1) In General.
If, after notice and a reasonable opportunity to respond, the court determines that Rule 11(b) has been violated, the court may impose an appropriate sanction on any attorney, law firm, or party that violated the rule or is responsible for the violation. Absent exceptional circumstances, a law firm must be held jointly responsible for a violation committed by its partner, associate, or employee.
(2) Motion for Sanctions.
A motion for sanctions must be made separately from any other motion and must describe the specific conduct that allegedly violates Rule 11(b). The motion must be served under Rule 5, but it must not be filed or be presented to the court if the challenged paper, claim, defense, contention, or denial is withdrawn or appropriately corrected within 21 days after service or within another time the court sets. If warranted, the court may award to the prevailing party the reasonable expenses, including attorney's fees, incurred for the motion.
(3) On the Court's Initiative.
On its own, the court may order an attorney, law firm, or party to show cause why conduct specifically described in the order has not violated Rule 11(b).
(4) Nature of a Sanction.
A sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated. The sanction may include nonmonetary directives; an order to pay a penalty into court; or, if imposed on motion and warranted for effective deterrence, an order directing payment to the movant of part or all of the reasonable attorney's fees and other expenses directly resulting from the violation.
(5) Limitations on Monetary Sanctions.
The court must not impose a monetary sanction:
(A) against a represented party for violating Rule 11(b)(2); or
(B) on its own, unless it issued the show-cause order under Rule 11(c)(3) before voluntary dismissal or settlement of the claims made by or against the party that is, or whose attorneys are, to be sanctioned.
(6) Requirements for an Order.
An order imposing a sanction must describe the sanctioned conduct and explain the basis for the sanction.
(d) Inapplicability to Discovery.
This rule does not apply to disclosures and discovery requests, responses, objections, and motions under Rules 26 through 37.

All of us have been frustrated with adversaries making frivolous motions and taking positions unwarranted by the law and the facts.  But the big firms almost never get sanctioned, it always seems to be the little guys.  Rule 11 gives attorneys almost no procedural protections and may create an ethical conflict between attorney and client.   It provides no real due process for an attorney.  Yet for all its weakness, it requires action of an adversary to impose a sanction.   I don't know why the court didn't issue the show-cause order required by Rule 11(c)(3).   Sanctions were imposed for 1. filing a long complaint; 2. filing an improper interlocutory appeal; 3. patently inadequate investigation of a conspiracy claim and 4. filing claims under 42 USC 1983 when there were no state actors.  There is not a law firm in the nation that didn't tack on an extra "in the alternative" claim in a complaint without thinking twice, or add an extra stupid claim that ought not to have been in the complaint - but this is usually thought to be prudent because one can't anticipate all of the facts one might find in discovery.

The Seventh Circuit's decision is a bad one for spirited and healthy advocacy (i.e. the American system).   Every attorney blunders in practically every case - by an act or omission - especially where resources are limited.   Where an attorney is inexperienced or simply makes a huge error - the adversary process permits the adversary to turn it to advantage.  There is no reason to impose criminal-like penalties on top of that.  This attorney may lose his house and his license for conduct that was found by the Seventh Circuit to be neither dishonest nor contumacious.  The courts should not be used to criminalize the practice of law and where Rule 11 sets out a mandatory procedure, the Seventh Circuit should not ignore it.  Sophisticated defense counsel sat on its hands rather than making a Rule 11 motion and should have waived the right to cash in at the poor lawyer's expense.

Copyright Act and the First Sale Doctrine - SCOTUS to hear Costco-Swatch copyright case | Reuters

I wrote about the Costco-Swatch case here.   It involved a manufacturer of Swiss OMEGA watches authorizing a sale in a foreign country.  The foreign authorized seller sold genuine watches to a person who then imported them into the US and sold them at Costco.

It is significant that the U.S. Supreme Court has taken on this issue of great importance to international trade. From Reuters:

U.S. top court to hear Costco-Swatch copyright case Reuters

11th Cir: Copyright Owners Deliver Artworks At Their Peril - Implied License Doctrine Swallows Copyright Act

The Copyright Act provides:

Detail from Todd Latimer's Midnight Rider - Full image here.

§ 202. Ownership of copyright as distinct from ownership of material object


Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

(emphasis supplied).

§ 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.


The 11th Circuit basically tossed out the bolded language in a recent decision captioned Latimer v. Roaring Toyz, Inc., 2010 WL 1253090 (11th Cir. April 2, 2010) and radically expanded the doctrines of implied license and constructive delivery.

Here's the scenario, wildly oversimplified: 

Artist paints artwork onto motorcycle.  Knows it will be used in photography, stream of commerce.  Motorcycle company gets no release.  Artist is not plaintiff, has nothing to do with the case, but 11th Circuit spends a lot of time on him.

Plaintiff is motorcyle photographer.  Takes photos at motorcycle company's request.  Orally grants certain publication rights and thinks he owns/reserves the rest.  Photographer has granted first publication rights to Two Wheel Tuner mag.   Instead of distributing his high quality digital files per his instructions, company distributes them to press who unwittingly publish them, including defendant Hachette's Cycle World.

Motorcycle company who uses photos claims that they were unauthorized derivative works because the photographer didn't have a release from the guy who made the paintings on the motorcycle.

11th Circuit finds that the fact that motorcyle photographer delivered photographs without clear reservation of rights grants an implied license to motorcycle company to do whatever it likes.   FURTHER finds that anyone downstream has "constructive delivery" from the photographer and can do whatever they like without getting written permission.

Here is the 11th Circuit's new rule:

"Thus, an implied license will be limited to a specific use only if that limitation is expressly conveyed when the work is delivered"

In other words, if you deliver your photograph to someone and YOU don't write down that they can't do whatever the heck they want with it, you lose your copyright to that person and to anyone they give it to.

This case is really a breathtaking blow to photographers who often deliver their works hoping that a potential client will fall in love and license them.   Since the photographer said he knew that Kawasaki "might" use them, the 11th Circuit threw out his affidavit as a "sham".

In other Circuits, one must generally obtain written permission to use a photograph, the implied license doctrine is narrowly construed.

In addition, the 11th Circuit held that the photographer must prove that he gave the motorcycle company a course in copyright law to prevail:

Kawasaki asserts that Latimer did not expressly communicate to Kawasaki any restrictions on the use of the photographs. However, Latimer contends that all of his communications with Kawasaki went through Roaring Toyz and that he granted Kawasaki permission to use the photographs for a specific purpose-a media display at Bike Week. Thus, the question here is whether Latimer delivered a warning adequate to put Kawasaki on notice that certain uses of Latimer's photos would constitute copyright infringement.


Latimer v. Roaring Toyz, Inc., 2010 WL 1253090, 11 (11th Cir. April 2, 2010).

It should be noted that the 11th Circuit purported to give a victory to the photographer, but the burdens of proof that have been spelled out are highly problematic and appear to be inconsistent with the plain language of the Copyright Act and a body of case law that generally puts photographers in the driver's seat when there is an unauthorized publication of their works.

The Photoattorney blog found some good news in the decision, read here.

For a wildly different view from Kevin Smith at Duke, look here.

A totally different angle at Exclusive Rights blog here.

Read on below:

LatimerVRoaringToyz

Two New Cases - Copyright Act: Infringement Plaintiff's Chain of Title Must Be Proven By Writings

Federico Fellini's La Dolce Vita From Wikipedia

Two recent cases underline the importance of being able to prove a written chain of title if you would like to bring a claim for copyright infringement.   If you wish to sue a gay pornographer for making a version of your film (Michael Lucas' La Dolce Vita).  In both International Media Films, Inc. v. Lucas Entertainment, Inc., 2010 WL 125358 (March 31, 2010) and  American Plastic Equipment, Inc. v. Toytrackerz, LLC, 2010 WL 1284471 (March 31, 2010), each copyright infringement plaintiff could not prove a chain of title showing ownership of the copyrighted work.

17 U.S.C. 204(a) says that transfers of exclusive rights need to be in writing.  There is an exception for non-exclusive writings and transfers "by operation of law".

The Fellini plaintiff had documents that looked liked they had been faked in Lichtenstein.

It looks like the American Plastic Equipment plaintiff did actually own the copyright, but didn't bother searching bankruptcy court records prior to judgment and waited until 60 days after judgment was entered against it to make a motion with "newly discovered evidence".

That is why it is so important to do research before bringing a lawsuit.   Document your chain of title and register your ownership with the Copyright Office.

 

Second Circuit - Architectural Works: Noninfringement of Copyright on A Rule 12(b)(6) Motion

In Peter F. Gaito Architecture, LLC v. Simone Development Corp., 2010 WL 1337225, 1 (2d Cir. April 5, 2010), the Second Circuit held for the first time that a district court may compare the registered copyrighted materials annexed to the complaint to the allegedly infringing materials, enter a finding of non-infringement as a matter of law, and throw the case out on a Rule 12(b)(6) motion for failure to state a claim.

Ordinarily the facts alleged on the face of a Rule 12(b)(6) motion are assumed to be true in the earliest stage of a litigation.

District courts within the Circuit had been throwing cases out for a while, using the Second Circuit's "good eyes and common sense" standard to determining whether any reasonable juror could find the infringing materials to be "substantially similar".

Although the court tried to limit the holding to the facts involving very dissimilar buildings, the holding is likely to have a much broader application.

New! Copyright Law for the General Practitioner Update - CLE on the Web Available on Lawlines

New copyright law update available through Lawlines here.

Raymond Dowd, Dunnington, Bartholow & Miller, LLP

Joseph Peterson, Kilpatrick Stockton LLP
David J. Wolfsohn, Woodcock Washburn

Program Chair:

Raymond Dowd, Dunnington, Bartholow & Miller, LLP

Description:

Learn from experienced litigators about the basics of copyright law and practice, including assignments, licensing, recording security interests, dealing with the Copyright Office, pre-litigation due diligence and litigation.

Lecturer Bios
David Wolfsohn, a trial lawyer, has tried numerous copyright, patent, trademark, unfair competition, and trade secret cases. On behalf of plaintiffs, he has obtained multimillion dollar verdicts and settlements, including a $19 million jury verdict in June 2006 in a copyright case (The Graham Company v. US! MidAtlantic) and a $5.8 million settlement of a trade secret case.


After graduating cum laude and order of the coif from the University of Chicago Law School in 1988, David served as a law clerk to the Honorable Walter K. Stapleton of the United States Court of Appeals for the Third Circuit. He then worked at a Philadelphia litigation firm for 16 years, handling commercial, governmental, and intellectual property disputes. David joined Woodcock Washburn in 2005, where he litigates intellectual property cases.

David was also lead counsel (pro bono) in the landmark case Nixon v. Commonwealth, in which the Pennsylvania Supreme Court struck down as unconstitutional a Pennsylvania statute barring persons convicted of minor crimes decades ago from all jobs in health care related fields. For this representation, David received the Equal Justice Award in 2004 from Community Legal Services.

David frequently lectures about trial tactics and intellectual property matters. A former concert pianist, David sits on the board of Astral Artistic Services, an organization dedicated to advancing the careers of young concert musicians. For four years, David was the solicitor for the Borough of Swarthmore, and now serves on the Swarthmore Borough Authority.

Joseph Petersen is a partner in the Intellectual Property group in the New York office of Kilpatrick Stockton LLP. Mr. Petersen has extensive experience in complex commercial litigation with particular expertise in intellectual property disputes such as copyright infringement, trademark infringement, trade secrets, litigation, patent infringement, and domain name disputes. He also regularly counsels clients on the protection, enforcement and licensing of their intellectual property assets.
Selected Experience
• Successfully represented the plaintiff in Yurman Design Inc. v. Diamonds and Time, 169 F. Supp. 2d 181 (S,D.NY. 2001) (granting plaintiff's motion for preliminary injunction in trademark infringement litigation).
• Represented leading manufacturer of ant-theft devices in successful motion for preliminary injunction in action pending before the United States District Court for the Southern District of Florida.
• Obtained temporary restraining order restraining defendant's enforcement of foreign injunction enjoining client from importing merchandise to defendant’s competitor during peak of holiday selling season.
• Represented client in successful motion to dismiss antitrust claims brought against a leading jewelry firm
• Represented leading cable television network in opposition proceedings before the Trademark Trial and Appeal Board.

Background
Admitted to practice before the U.S. Court of Appeals, Second Circuit; U.S. District Court for the Southern and Eastern Districts of New York; U.S. District Court, District or Connecticut; New York and Connecticut state courts.

Education
Law: Vanderbilt University, J.D. (1998)
Undergraduate: State University of New York, B.S., summa cum/aude (1991)
Bar Admission(s)

New York; Connecticut, U.S. Court of Appeals for the Second Circuit; Eastern District of New York; Southern District of New York

Raymond Dowd is a member of DBM's intellectual property, corporate, litigation and arbitration practice groups. He has broad commercial litigation experience in both federal and state courts, and has represented copyright, trademark and domain name owners, broadcasters, distributors and content providers in transactions and litigation, representing both plaintiffs and defendants. He has conducted numerous bench and jury trials and arbitrations. He has obtained, enforced, and collected judgments including conducting seizures. In addition, he has provided corporate and transactional representation entrepreneurial companies from the incorporation and startup phase through significant growth. Mr. Dowd represents collectors and dealers of fine art and has litigated disputes involving authenticity, forgery, ownership and provenance. Mr. Dowd regularly speaks to trade associations on copyright, fine art, trademark and litigation issues, and participates in organizing continuing legal education programs.

Memberships and Affiliations: Copyright Society of the U.S.A.; New York State Bar Association; Commercial and Federal Litigation Section; Intellectual Property law Section; President, Southern District of New York State Chapter of the Federal Bar Association (2006-2008); Federal Bar Association, Vice President for the Second Circuit (2008 - ); New York County Lawyers' Association; Board of Directors (2003 - 2006); Co-Chair, Entertainment Media, Intellectual Property and Sports Law Section (2000 - 2003); Continuing Legal Education (2003 - 2008); Committee on Committees ( 2003 - 2007).

Publications: Copyright Litigation Handbook, (West 3d Ed. 2008); former columnist, New York Law Journal; Copyright Litigation Blog. Member, Editorial Board, The Federal Lawyer (2007 - ).

Bar Admissions: New York (1993); U.S. District Court for the Southern and Eastern Districts of New York (1994); Northern U.S. Court of Appeals for the Second Circuit (1998);U.S. Supreme Court (2000); United States District Court for the Northern District of New York (2000); United States Tax Court (2007)

Education: Manhattan College (B.A. 1986); Fordham University School of Law (J.D. 1991)
Languages: French, Italian

Criminal Copyright Infringement: Rabidly Neurotic Music "Pirate" Acquitted

I recently posted about the use of the term "music piracy" in a criminal copyright infringement proceeding here.

The Tech Dirt Blog reports that the defendant Adil Cassim was acquitted by the jury and joins in the debate about the term "music piracy".

Cassim was allegedly part of "Rabid Neurosis" - group that allegedly ripped sound recordings prerelease.  More from Billboard.biz here.

Visual Arts and the Law Panel April 9 - Hofstra Law and NYSBA at the Cornell Club

Parthenon Selene Horse (source: Wikipedia)

ART LAW CANVAS(S):


AN EXAMINATION OF LEGAL ISSUES AFFECTING THE VISUAL ARTS COMMUNITY

FOR ARTISTS AND THE LAWYERS WHO HELP PROTECT THEM

When: Friday, April 9, 2010


Time: 12:00 p.m. – 5:00 p.m.

Location: CORNELL CLUB

6 East 44th Street,

New York, NY 10017

4 CLE Credits

Member CLE Cost: $175

Non- Member CLE: $200

Students/ Public: $25


12:00 p.m. Registration & Refreshments

12:30 p.m. Welcome & Introductory Remarks

EASL Young Lawyers Committee Co-Chairs - Stephanie Khalifa & Rachel DeLetto

President of Art Law & Culture Society - Monica Pham

Presented by:


THE ENTERTAINMENT ARTS & SPORTS LAW SECTION OF THE NEW YORK STATE BAR ASSOCIATION

and

ART LAW & CULTURE SOCIETY, PRESIDENT  MONICA PHAM
Portion of proceeds will be donated to

Haiti/Chile relief organizations.
12:40 p.m. The Art of Mediation- THE TRANSFORMATIVE APPROACH TO CONFLICT

Dealing with the Interaction not just the Transaction: Embedded within every transactional conflict, especially when creative properties are involved, is the history of the human interaction between the creative personalities involved. To address the transaction itself, without also addressing the interaction, may resolve the claims, but it will likely not resolve the residue of the poisoned interaction that gave rise to those claims. Transformative mediation offers a way to address both the transactional and interactional dimensions of conflict involving creative enterprises.

Prof. Robert Baruch Bush, Author of The Promise of Mediation, and Harry H. Rains Distinguished Professor of Arbitration and Alternative Dispute Settlement Law

1:10 p.m. Real or Fake? Warranties of Authenticity

A discussion of the relationship between the major international art auction houses Sotheby’s and Christies and small galleries. Art is an investment, but it is also part of our cultural heritage. What rights and obligations accompany the purchase and sale of art? The panel will discuss Thome v. Alexander & Louisa Calder Foundation, 890 N.Y.S. 2d 16 (2009) in which Judge Ramos held that the Calder Foundation had no duty to authenticate a work of art.

Moderator: The Honorable Charles Ramos, NYS Supreme Court, Commercial Division

Panelists: The Honorable Barbara Jaffe, NYS Supreme Court, Civil Division; Jay Safer, Esq., Partner, Locke, Lord & Bissell; John R, Cahill, Esq., Partner, Lynn & Cahill LLP; Jo Backer Laird, Esq., Of Counsel, Patterson Belknap Webb & Tyler LLP; Dennis Oppenheim, Artist.
2:00 p.m. Lunch Provided

Mesclun Salad of Field Greens with Housemade Vinaigrette, Traditional New York Style Cole Slaw, Black Forest Ham, Sliced Grilled Tarragon Chicken Breast, Smoked Pork Loin, Roast Beef, Mesquite Smoked Turkey Breast, Hummus and Pita Triangle Platter, Basket of Bread and Rolls

Grilled Vegetable Platter, Asian Chicken and Cashew Noodle Salad, Chicken Salad with Walnuts and Cranberries, Israeli Cous Cous Salad with Roasted Mushrooms, Horseradish Mayo, Red Pepper Basil Aioli Honey Dijon

Club-Baked Assorted Cookies, Basket of Whole Fruit to Include Apples, Oranges and Bananas

Coffee and Tea Service, Assorted Soft Drinks and Iced Tea
2:10 p.m. Copyright it: Protecting the fruits of your labor

A discussion of artistic authenticity and originality. What happens when an artist appropriates the work of another artist? This panel will address copyright issues that affect contemporary artists, including moral rights, resale rights, and the scope of fair use. When is an artistic expression protected by copyright and when does it infringe another’s copyright? Another angle of the "real" versus "fake" discussion is the idea of: "original" versus "copy" and whether an artist him/herself appropriated the work of another. Copyright Issues particularly pertinent to artists, moral rights and resale rights will be discussed. The following questions will be addressed: What is fair use? What is copying? How can an artist properly justify what he or she has originally created and what is “inspiration” from another source? How can artists protect themselves?

Moderator: The Honorable R. Bruce Cozzens (Civil Division)

Panelists: Raymond Dowd, Esq., Partner, Dunnington, Bartholow & Miller LLP; Sergio Munoz Sarmiento, Esq., Associate Director, Volunteer Lawyers for Arts; Jason Nardiello, Esq., Associate, Locke, Lord & Bissell; Amy J. Goldrich, Esq., The Offices of Amy Goldrich; Paul Ickovic, Artist
3:00 p.m. Sex, Art, and the First Amendment

A discussion of First Amendment rights and limitations on artistic expression. NEA v. Finley held that the statutory funding guidelines requiring the NEA to consider artistic excellence, merit, and general standards of “decency and respect” do not violate the First Amendment. Does it encourage discrimination in violation of the First Amendment's freedom of expression guarantees? How did it affect the Brooklyn Museum of Art and its legal battles with Mayor Rudolph Giuliani and the problem of conditions on government arts funding more generally?
Moderator: Prof. Eric M. Freedman, Maurice A. Deane Distinguished Professor of Constitutional Law, Hofstra University School of Law

Panelists: Imo Imeh, Artist, and Ph.d Candidate at Yale University; Dean R. Nicyper, Esq., Partner, Fleming, Zulack, Williamson, Zauderer LLP; Marjorie Heins, director of the Free Expression Policy Project or author of Not in Front of the Children: “Indecency,” Censorship & the Innocence of Youth, Prof. Leon Friedman, Joseph Kushner Distinguished Professor of Civil Liberties Law.

4:00 p.m. Coffee Break
4:10 p.m. Keynote Address – Art Law Problems in Search of Solutions: from Adverse Possession to World Art law Systems
Professor Herbert "Bert" Lazerow- Professor of Law and Director of the Institute on International and Comparative Law, at the University of San Diego will examine all issues discussed by all the panels.
5:00 p.m. Closing Remarks by Prof. Leon Friedman, Hofstra University School of Law
A Portion of the Proceeds will go to the following Organization:

IN THE HEART OF PORT-AU-PRINCE: GHESKIO RELIEF IN HAITI

GHESKIO establishes refugee camp and field hospital for thousands of earthquake survivors and continues AIDS care

For More Information please go to:

http://weill.cornell.edu/globalhealth/

General Public, Artists & Law students are encouraged to attend!!

4th Circuit: Fine Art Paintings from Photographs and Actual Damages For Copyright Infringement

In Hofmann v. O'Brien, 2010 WL 675006 (4th Cir. Feb 26, 2010), the Court of Appeals for the Fourth Circuit considered the following fact scenario following a jury trial:

1. Plaintiff Douglas Hofmann is a fine art painter who works from photographs.  Hofman staged numerous photographs involving ballet dancers.   He intended to paint fine art works from the photographs.   A low res example of Hofman's work from his website.

Douglas Hofmann Master Class

2.   John O'Brien is a deceased fine art painter.  During his lifetime he took one of Hofmann's photographs without Hofmann's permission and created a painting from the photograph that was essentially a copy.   His widow, Mary O'Brien posted an image of O'Brien's painting on his website and offered prints for sale.  An example of O'Brien's work:

John O'Brien Her First Ballet

3.   A trial was held.  The jury awarded $201,550 in actual damages based on claims of conversion and copyright infringement.   Hofmann's out of pocket costs to create the photograph were $1,550.

The main issue before the court was whether the jury instructions on damages were correct and whether the jury's damage award was supported by the evidence.   Since the photograph was presumably not registred timely, Hofmann was forced to prove "actual damages" under Section 504(b) of the Copyright Act.  Section 504(b) states:

(b) Actual Damages and Profits. — The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

The Fourth Circuit found that the artist had not proved actual damages sufficient to support the jury's award and reversed for remittitur or trial.   

Cases throwing out testimony relating to actual damages of a copyright are legion and proof of actual damages is notoriously difficult.    As the Fourth Circuit cautions "General claims of 'hurt feelings' or an owner's 'personal objections to the manipulation of his artwork' must not enter into the calculus'

[quoting Mackie v. Reiser, 296 F.3d 909, 917 (9th Cir. 2002)].

The decision doesn't tell us whether the widow knew that the work was infringing - a widow is not generally the best defendant, no matter what the merits of your case are.

This case reinforces the importance for artists of promptly registering copyrights with the Copyright Office so that they may be entitled to statutory damages and attorneys fees.    I discuss these issues further in Copyright Litigation Handbook - Chapter 15 - Evidence and Experts); Chapter 16 - Jury Instructions; Chapter 17 - Damages and Profits; and Chapter 18 - Costs and Attorneys Fees.

Reviews for Copyright Litigation Handbook on Amazon

Thanks for the wonderful reviews of Copyright Litigation Handbook on Amazon here.

Most Helpful Customer Reviews

5.0 out of 5 stars A great resource, October 8, 2009

By Joseph Petersen - See all my reviews
Raymond J. Dowd, an experienced trial lawyer and partner with Dunnington, Bartholow & Miller LLP, has written a long-overdue work. His Copyright Litigation Handbook provides a straightforward overview and is chockablock with insightful and practical information. Mr. Dowd is liberal in his inclusion of excerpts from relevant statutes, including not only the Copyright Act, but also the Federal Rules of Civil Procedure and the Federal Rules of Evidence, and his book provides numerous sample forms. Mr. Dowd's Copyright Litigation Handbook will long be a valuable resource for copyright litigators; I am confident that it will be squeezed into trial bags for years to come. Joseph Petersen, Kilpatrick Stockton LLP

Help other customers find the most helpful reviews

5.0 out of 5 stars Copyright Litigation Handbook, August 26, 2009

By Corey Field (Los Angeles, CA) - See all my reviews
I have read this entire book. It is extraordinary for more reasons than I have space here to enumerate. It is a book about copyright law for litigators, and it is at the same time a book about litigation for copyright lawyers. It is written for a broad audience of attorneys whose practice may touch upon copyright law, but it is also a great practice overview for an experienced copyright lawyer. It is organized in a logical way proceeding from case evaluation through trial. Throughout, it offers nuggets of advice that are extremely valuable - the sort of experienced advice that makes a huge difference in the development of one's legal abilities.

Corey Field

Ballard Spahr Andrews & Ingersoll, LLP

Los Angeles, CA Help other customers find the most helpful reviews

5.0 out of 5 stars An indispensable and unique copyright guide for the litigator, August 26, 2009

By David J. Wolfsohn (Philadelphia, PA) - See all my reviews
Until Raymond Dowd wrote this book, there simply was no litigation-friendly guide to copyright litigation. Thank goodness Mr. Dowd chose to devote the equivalent of several years of time and effort to write this book, and to update it with this 2009 edition. This is the book that both occasional dabblers in copyright should go to first (which I wish I had when I started out), as well as now-experienced copyright litigators like me. It is the book I go to first when drafting a complaint (or even when deciding whether to sue), and consult when beginning to prepare for trial. Everything is litigation oriented, so one doesn't need to wade through abstract theorizing to get a sense for how you can use the current state of the case law to your client's advantage. The forms for a complaint and other litigation papers are particularly useful. And the ideas for motions in limine are priceless, and as far as I know, a unique feature of this book. --David Wolfsohn, Woodcock Washburn LLP.

Oral Termination of License Agreements, Jury Instructions and the Copyright Act

Caballo Viejo - image courtesy Wikipedia - the song by Simon Diaz that inspired the Gypsy Kings' Bamboleo featured in a recent decision by the First Circuit Court of Appeals Latin American Music Company v. ASCAP, 2010 WL 324526 (1st Cir. 2010).

At issue:  we all know that Section 204 of the Copyright Act requires transfers of copyright ownership to be in writing, signed by the transferor.  Section 204 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.
(b) A certificate of acknowledgment is not required for the validity of a transfer, but is prima facie evidence of the execution of the transfer if —
(1) in the case of a transfer executed in the United States, the certificate is issued by a person authorized to administer oaths within the United States; or
(2) in the case of a transfer executed in a foreign country, the certificate is issued by a diplomatic or consular officer of the United States, or by a person authorized to administer oaths whose authority is proved by a certificate of such an officer.

In Latin American Music, the First Circuit considered the question of whether an exclusive license for a song, where the license agreement was silent on the duration of the license and how it would be terminated, could be terminated orally?

The case came before the First Circuit on appeal following a jury trial.   The court found that Section 204 of the Copyright Act did not apply to terminations of license agreements.   The court considered Section 203 (requiring that certain terminations of author's rights be in writing) and found that the Copyright Act was silent on the point.   The court rejected the argument that the Copyright Act preempted state contract law, and upheld the application of New York contract law to determine whether "reasonable notice" under New York law was given.   The court upheld the admissibility of a videotaped deposition at trial where an unavailable witness testified that he had orally terminated the license.

The decision also considered the propriety of jury instructions and evidence cited in a closing argument. The court reiterated that if attorneys have a problem with a court's jury instructions or with an adversary's closing, they must preserve their objections on the record.

Statutory Mergers Trigger Copyright Infringement: M&A Lawyers Beware!

In Cincom Systems, Inc. v. Novelis Corp., --F.3d ---, 2009 WL 3048436 (6th Cir. Sept. 25, 2009), the Sixth Circuit found that a statutory merger not approved by a software licensor triggered a copyright infringement against the remaining entity, a subsidiary of Novelis (formerly Alcan Aluminum).

State law encourages statutory mergers, which are often viewed by M&A lawyers as little more than internal housekeeping or tax planning. Statutory mergers are used for a variety of reasons and often do not require advance notice to shareholders or permission of regulators.

Ohio law deems all property of the merged entity transferred. The Sixth Circuit found that the federal common law governing intellectual property licenses trumped state law. So where a non-exclusive license requires the permission of a copyright owner for any merger or transfer, this language means what it says, giving owners of software a major seat at the table where corporations wish to engage in any mergers or transfers.

The opinion is a good discussion of the tension between state law (facilitating mergers) and federal law (protecting IP owners) - and concludes squarely that federal policy and law trumps state policy on this point. The court notes that it is extending case law from patent cases into the copyright arena.

The Sixth Circuit affirmed the district court's grant of summary judgment and damages of $459,530 (equal to the amount of the initial licensing fee).

Once again, M&A lawyers have to start reading these software license agreements.

Mergers and Acquisitions: Lack of Clarity in Copyright Assignments and Licenses Can Blow A Deal

In The SCO Group Inc. v. Novell Inc., --- F.3d ---, 2009 WL 2581735 (10th Cir. August 24, 2009) the Tenth Circuit Court of Appeals revisited a ten-year old transaction. In a transaction characterized as the sale of a "businesss", one party claimed that no copyrights were transferred. The other party claimed that copyrights were transferred. The $300 million 1995 involved the sale of a business.

This case ought to be made part of any curriculum for attorneys involved in mergers and acquisitions. A list of lessons to be derived from the case:

1. in corporate transactions, specify what copyrights are being transferred, if any - be as specific as possible;

2. if you don't understand what is being sold or transferred, no one else will;

3. where licenses are being transferred and one party retains certain powers, clearly define the powers in the transaction documents;

4. following the deal, amend any copyright notices and copyright registrations to conform to your understanding of the transaction;

5. if you are left in doubt (some quick deals necessitate this), insert a few hypotheticals to show how the contract is supposed to work ("for the elimination of doubt").

Much of the opinion deals with the court struggling with the meaning of the contract language, what rights are involved, what copyrights are involved, and how licenses work. The Copyright Act piece is a discussion of 17 U.S.C. Section 204(a) which requires a "note or memorandum" in writing and signed by the owner.

Where there is no question that a transfer of copyright was intended, but the scope of the transfer is ambiguous, the ambiguity will not invalidate the transfer, but opens the door for parol evidence.

The 10th Circuit reversed the lower court's grant of summary judgment and remanded on a number of issues. Where really smart lawyers and really smart federal judges can't figure out what a transaction means, it is a sure sign that the transactional lawyers dropped the ball.

Motion to Stay Imposition of Attorneys Fees Under the Copyright Act

I last wrote on the Renoir/Guino case decided by the Ninth Circuit creating perpetually unpublished works here. The defendants are now back in district court disagreeing with the Ninth Circuit's finding that the copyright is valid and pointing out that the Register of Copyrights might not have registered the work if she had been provided with accurate information on publication in the registration certificate.

In Societe Civile Succession Richard Guino v. Beseder Inc., 2009 WL 2497447 (D. Ariz. Aug. 13, 2009), the defendant made a motion to stay the determination of attorneys fees until the Court first inquired "whether the Register of Copyrights would have refused to copyright the works at issue if [she] had known of inaccurate information regarding the first date of publication contained in the copyright application pursuant to 17 U.S.C. Section 411."

A motion to stay is a last-ditch desperation shot. The district court shot it down.

Since I tend to root for the underdog, I have to point out that the district court's reasoning is flawed. In rejecting the motion, the district court reasoned that a finding of a "valid copyright" leads to an award of attorneys fees, and that if the Register said she wouldn't register, that would create an "irreconcilable conflict." The district court reasoned that this was a question "previously decided".

But just because a copyright is valid does not mean that attorneys fees are available for infringements. A failure to register disentitles a copyright plaintiff to attorneys fees and statutory damages.

You can have a valid copyright and no registration. And a valid copyright and no attorneys fees. Happens every day, as I advise many potential clients who have failed to register their copyrights.

If a copyright owner fails to register properly and promptly, statutory damages and attorneys fees are not available against an infringer.

Section 412 of the Copyright Act provides that registration is a prerequisite for statutory damages and attorneys and gives the particulars.

Statutory damages and attorneys fees are governed by Sections 504 and 505 of the Copyright Act.

If indeed the plaintiff made misrepresentations in obtaining a copyright registration, the defendants ought to read Fogerty v. Fantasy and its progeny and develop more nuanced arguments against an award of attorneys fees. In my Copyright Litigation Handbook I note the surprisingly unsettled area of law that is attorneys fees under the Copyright Act. There is much room for advocacy, the Circuits don't agree, and in a case that Prof. Patry called a "brain teaser," the defendants should not be tagged for full attorneys fees on litigating an unsettled or novel area of law if there was some degree of bad faith by plaintiff in registration.

But on the losing end of a case and getting whacked for attorneys fees, the adrenal glands have worked overtime, are blown out and it is tough to put in the time necessary to protect yourself. At the end of a hard-fought litigation, courts may be sympathetic to a party that really believed in its case. This is particularly true when your adversary is wealthier or has allowed himself to gloat. There are very serious cases declining to award attorneys fees, so a non-victorious party ought to marshal every factor possible to persuade a court to exercise its wide discretion in that party's favor.

Renoir Self-Portrait above.

The Federal "Discovery" Rule: Can you sue for infringements occuring more than three years ago?

In Graham v. Haughey, --- F.3d ---, 2009 WL 1564223 (3d Cir. June 5, 2009), the Third Circuit considered the question of whether a victim of copyright infringement may sue for infringements that occurred over three years prior to the commencement of the lawsuit.

At issue is the federal "discovery" rule for accrual of an action versus the "injury" rule. I discuss this distinction in Chapter 5 of my Copyright Litigation Handbook (West 4th Ed. 2009). I was pleased to see that the Third Circuit discussed the cases that I had cited on this conflict (by the way, this fourth edition of Copyright Litigation Handbook just shipped last week).

The question is whether a cause of action for copyright infringement "accrues" when the infringement takes place (the "injury" rule) or whether it accrues when the victim, exercising reasonable diligence, discovers the infringement (the "discovery" rule). Most circuits have ruled that the federal discovery rule applies. But some district courts in the Second Circuit, relying on a powerfully-reasoned decision by Judge Kaplan in Auscape Intern. v. National Geographic Soc., 409 F. Supp.2d 235 (S.D.N.Y. 2004), have applied the "injury" rule.

To illustrate: under the injury rule, a court would either dismiss or grant summary judgment on a pleading that alleged infringements over three years prior to the action being filed.

Under the discovery rule, a court would permit equitable defenses such as tolling for fraudulent concealment and factfinding to determine whether a plaintiff could have, did, or should have discovered infringements over three years old prior to filing suit.

These rules relate to "accrual" of the action. The statute of limitations is always three years under 17 U.S.C. 507(b).

Graham v. Haughey determined that the "discovery" rule applies and that the plaintiff could sue on infringements that occurred over three years prior to the commencement of the action. Graham v. Haughey digs into the legislative history and consists of a point-by-point refutation of the Auscape decision. It also has an excellent discussion of issues relating to burdens of proof on damages, the nexus neccessary for damages to be attributable to copyright infringement, and the role of a judge in reviewing a jury verdict of copyright infringement.

Graham's facts are interesting because the infringement was committed by an ex-employee. The new employee used the infringing documents to generate millions in profits, but the publications were in proposals kept confidential by both the infringer and the recipient of the proposals for many years. After these secret transactions were finally revealed, the copyright owner sued and obtained a jury verdict in excess of $16 million.

This case involved an ex-employee breaching a contract not to retain or use copyrighted materials, so is an important cautionary tale for both new employers who don't want millions in liabilities and old employers who wish to protect their materials.

This is the odd case where a "publication" was not "public".

The Third Circuit remanded on apportionment issues.

Graham's counsel David J. Wolfsohn of Philadelphia's Woodcock Washburn (who was successful on the appeal and is pictured above) informs me that the matter is in abeyance pending Haughey's cert petition (due Sept 3). Haughey was represented by Floyd Abrams of Cahill Gordon & Reindell.