Appellate Practice: Perfecting a Civil Appeal in Federal Court - Ninth Circuit

This is an exellent video explaining in simple language how to prepare an appeal in a federal civil case.   For anyone preparing an appellate argument, it is a good overview of the basics and a great way to remember how important it is to master the facts, prepare well, and to keep things clear and simple when arguing before the federal courts.

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

Obama Administration's 2010 IP Enforcement Strategic Plan

New report from the Obama Administration's IP Czar
2010 Joint Strategic Plan on IP Enforcement


 Purchase Copyright Litigation Handbook from West here  

DC Cir: RIAAA Must Pay Copyright Owners Late Fees - Ruling on Compulsory Licensing of Musical Works

In Recording Indus. Ass'n of America, Inc. v. Librarian of Congress, --- F.3d --- (D.C. Cir. June 22, 2010), the D.C. Circuit upheld the Copyright Royalty Board's imposition of late fees on the RIAA when it fails to pay copyright owners.

The issue arises in the case of "compulsory licenses" - that is where someone uses a musical work without the owner's permission.   Like a cover band recording a Led Zep tune without the band's permission.  The DC Circuit's decision has a nice explanation of compulsory licensing and how it works.  Excerpt below in italics:

Most songs played on the radio, sold on CDs in music stores, or digitally available on the Internet through services like iTunes embody two distinct copyrights-a copyright in the “musical work” and a copyright in the “sound recording.” See 17 U.S.C. § 102. The musical work is the musical composition-the notes and lyrics of the song as they appear on sheet music. The sound recording is the recorded musical work performed by a specific artist.



Although almost always intermingled in a single song, those two copyrights are legally distinct and may be owned and licensed separately. One party might own the copyright in the words and musical arrangement of a song, and another party might own the copyright in a particular artist's recording of those words and musical notes.


This case involves licenses in a limited category of copyrighted musical works-as opposed to sound recordings. Section 115 of the Copyright Act allows an individual to make and distribute phonorecords (that is, sound recordings) of a copyrighted musical work without reaching any kind of agreement with the copyright owner. That right does not include authorization to make exact copies of an existing sound recording and distribute it; if a musical work has been recorded and copyrighted by another artist, a licensee “may exercise his rights under the [§ 115] license only by assembling his own musicians, singers, recording engineers and equipment, etc. for the purpose of recording anew the musical work that is the subject of the [§ 115] license.” 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 8.04[A], at 8-58.5 (2009). For example, a § 115 licensee could pull together a group of musicians to record and sell a cover version of Bruce Springsteen's 1975 hit Born to Run, but that licensee could not make copies of Springsteen's recording of that song and sell them.


The § 115 licensing regime operates in a fairly straightforward manner. When a copyright owner distributes work “to the public,” § 115's provisions are triggered. 17 U.S.C. § 115(a)(1). Once that occurs, anyone may “obtain a compulsory license to make and distribute phonorecords of the work” under § 115 so long as the “primary purpose in making [the] phonorecords is to distribute them to the public for private use.” Id. Assuming the copyright has been registered with the Copyright Office, the licensee owes the copyright owner a royalty for every phonorecord “made and distributed in accordance with the [§ 115] license.” Id. § 115(c)(2). For purposes of the Copyright Act, a phonorecord is “distributed”-and an obligation to pay the copyright owner a royalty created-when “the person exercising the [§ 115] license has voluntarily and permanently parted with” the phonorecord. Id . In other words, the licensee's sale of its recording of the copyright owner's work triggers the royalty payment obligation. See Nimmer § 8.04[H][1], at 8-77.


Because the § 115 license issues without any agreement between the copyright owner and the licensee, the system needs a mechanism to figure out how much the licensee owes the copyright owner and what the terms for paying that rate should be. Although that mechanism has changed over time, the Copyright Royalty Board currently serves as the rulemaking body for this system. See generally Procedural Regulations for the Copyright Royalty Board, 70 Fed.Reg. 30,901 (May 31, 2005) (discussing the history of royalty ratemaking). The Board is a three-person panel appointed by the Librarian of Congress and removable only for cause by the Librarian.FN1 The Board sets the terms and rates for copyright royalties when copyright owners and licensees fail to negotiate terms and rates themselves. See Nimmer § 7.27[C], at 7-243.


FN1. RIAA has not raised a constitutional challenge to the method of appointment of the members of the Copyright Royalty Board. Cf. Intercollegiate Broad. Sys., Inc. v. Copyright Royalty Bd., 574 F.3d 748, 755-56 (D.C.Cir.2009); SoundExchange, Inc. v. Librarian of Congress, 571 F.3d 1220, 1226-27 (D.C.Cir.2009) (Kavanaugh, J., concurring).


As relevant here, the Copyright Act requires the Board to set “reasonable terms and rates” for royalty payments made under the § 115 license when the parties to the license fail to do so. 17 U.S.C. § 801(b)(1). When establishing terms and rates under that license, the Copyright Act requires the Board to balance four general and sometimes conflicting policy objectives: (1) maximizing the availability of creative works to the public; (2) providing copyright owners a fair return for their creative works and copyright users a fair income; (3) recognizing the relative roles of the copyright owners and users; and (4) minimizing any disruptive impact on the industries involved. Id. § 801(b)(1)(A)-(D).


At specified intervals, the Board holds ratemaking proceedings for licenses issued under the Copyright Act. Section 115 ratemaking proceedings can occur every five years “or at such other times as the parties have agreed.” Id. § 804(b)(4).

In 1996, the parties with an interest in the § 115 license (such as the Recording Industry Association of America, the Songwriter's Guild of America, and the National Music Publishers' Association) agreed on various terms and rates for the compulsory license. They also agreed that the settlement with respect to those terms and rates would expire 10 years later. In 2006, after the parties found they could not reach a new compromise, the Board instituted proceedings to set certain terms and rates governing the operation of the § 115 license. The process was long and complicated, involving 28 days of live testimony, more than 140 exhibits, and more than 340 pleadings, motions, and orders. See Mechanical and Digital Phonorecord Delivery Rate Determination Proceeding, 74 Fed.Reg. 4510, 4511 (Jan. 26, 2009).

 Purchase Copyright Litigation Handbook from West here  

ACTA Update: Obama Administration's IP Strategy Comes Under Fire From Tech Associations

For background on the Anti-Counterfeiting Trade Agreement, visit the excellent Wikipedia page.

Last week my post on ACTA was picked up in a very kind and thoughtful review by Mike Masnik, of Techdirt, here. Thanks, Mike!  I didn't know anyone read my blog.

My take on ACTA, agreeing with EFF that Anti-Counterfeiting Treaty is a Sham" here.

A great analysis (in a more subdued and more thoughtful - and thus credible - Washingtontonian way), from the Center for Democracy you will find here.   Looking past the measured language, they are accusing copyright lobbyists of wishing to get through ACTA what they might not get in the US, take over Third World governments and use ACTA as a means of cramming copyright content into those countries' media systems while completely depriving the citizens of those countries of rights equivalent to the First Amendment.

And below a link to recent developments on Capitol Hill - consumer electronics trade associations waking up to ACTA's implications: Consumer Electronics Association, TechAmerica and the Computer & Communications Industry Association

Three tech associations oppose Obama IP effort on anti-counterfeiting deal - The Hill's Hillicon Valley

Ben Scheffner's March 3, 2010 post of a letter from USTR Ron Kirk to Sen. Ron Wyden (D-Or) claiming that ACTA would not alter existing US law here.

Purchase Copyright Litigation Handbook from West here

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

ARIZONA:   E.T. GO HOME

B. FOR ANY LAWFUL CONTACT MADE BY A LAW ENFORCEMENT OFFICIAL OR AGENCY OF THIS STATE OR A COUNTY, CITY, TOWN OR OTHER POLITICAL SUBDIVISION OF THIS STATE WHERE REASONABLE SUSPICION EXISTS THAT THE PERSON IS AN ALIEN WHO IS UNLAWFULLY PRESENT IN THE UNITED STATES, A REASONABLE ATTEMPT SHALL BE MADE, WHEN PRACTICABLE, TO DETERMINE THE IMMIGRATION STATUS OF THE PERSON. THE PERSON'S IMMIGRATION STATUS SHALL BE VERIFIED WITH THE FEDERAL GOVERNMENT

IT IS UNLAWFUL FOR A PERSON WHO IS UNLAWFULLY PRESENT IN THE UNITED 14 STATES AND WHO IS AN UNAUTHORIZED ALIEN TO KNOWINGLY APPLY FOR WORK, SOLICIT 15 WORK IN A PUBLIC PLACE OR PERFORM WORK AS AN EMPLOYEE OR INDEPENDENT 16 CONTRACTOR IN THIS STATE


TRANSPORT OR MOVE OR ATTEMPT TO TRANSPORT OR MOVE AN ALIEN IN THIS 31 STATE IN A MEANS OF TRANSPORTATION IF THE PERSON KNOWS OR RECKLESSLY 32 DISREGARDS THE FACT THAT THE ALIEN HAS COME TO, HAS ENTERED OR REMAINS IN THE 33 UNITED STATES IN VIOLATION OF LAW. 34 2. CONCEAL, HARBOR OR SHIELD OR ATTEMPT TO CONCEAL, HARBOR OR SHIELD 35 AN ALIEN FROM DETECTION IN ANY PLACE IN THIS STATE, INCLUDING ANY BUILDING OR 36 ANY MEANS OF TRANSPORTATION, IF THE PERSON KNOWS OR RECKLESSLY DISREGARDS THE 37 FACT THAT THE ALIEN HAS COME TO, HAS ENTERED OR REMAINS IN THE UNITED STATES 38 IN VIOLATION OF LAW. 39 3. ENCOURAGE OR INDUCE AN ALIEN TO COME TO OR RESIDE IN THIS STATE IF 40 THE PERSON KNOWS OR RECKLESSLY DISREGARDS THE FACT THAT SUCH COMING TO, 41 ENTERING OR RESIDING IN THIS STATE IS OR WILL BE IN VIOLATION OF LAW. 42 B. A MEANS OF TRANSPORTATION THAT IS USED IN THE COMMISSION OF A 43 VIOLATION OF THIS SECTION IS SUBJECT TO MANDATORY VEHICLE IMMOBILIZATION OR 44 IMPOUNDMENT PURSUANT TO SECTION 28-3511. 45

Arizona Immigration Law

Obama signals support for ACTA Copyright Treaty

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

Copyright, Censorship and the First Amendment Salinger v. Colting (Catcher in the Rye)

Salinger v. Colting, 2010 WL 1729126, 9 (2d Cir. April 30, 2010)

Here is the court's holding (emphasis mine)

Therefore, in light of Winter and eBay, we hold that a district court must undertake the following inquiry in determining whether to grant a plaintiff's motion for a preliminary injunction in a copyright case.

First, as in most other kinds of cases in our Circuit, a court may issue a preliminary injunction in a copyright case only if the plaintiff has demonstrated “either (a) a likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the [plaintiff]'s favor.” NXIVM Corp., 364 F.3d at 476; see also, e.g., Faiveley Transp. Malmo AB v. Wabtec Corp., 559 F.3d 110, 116 (2d Cir.2009).

Second, the court may issue the injunction only if the plaintiff has demonstrated “that he is likely to suffer irreparable injury in the absence of an injunction.” Winter, 129 S.Ct. at 374. The court must not adopt a “categorical” or “general” rule or presume that the plaintiff will suffer irreparable harm (unless such a “departure from the long tradition of equity practice” was intended by Congress). eBay, 547 U.S. at 391, 393-94. Instead, the court must actually consider the injury the plaintiff will suffer if he or she loses on the preliminary injunction but ultimately prevails on the merits, paying particular attention to whether the “remedies available at law, such as monetary damages, are inadequate to compensate for that injury.” eBay, 547 U.S. at 391; see also Winter, 129 S.Ct. at 375 (quoting 11A C. Wright, A. Miller & M. Kane, Federal Practice and Procedure § 2948.1 (2d ed.1995), for the proposition that an applicant for a preliminary injunction “must demonstrate that in the absence of a preliminary injunction, ‘the applicant is likely to suffer irreparable harm before a decision on the merits can be rendered’ ”).

Third, a court must consider the balance of hardships between the plaintiff and defendant and issue the injunction only if the balance of hardships tips in the plaintiff's favor. Winter, 129 S.Ct. at 374; eBay, 547 U.S. at 391. Finally, the court must ensure that the “public interest would not be disserved” by the issuance of a preliminary injunction. eBay, 547 U.S. at 391; accord Winter, 129 S.Ct. at 374.

In analyzing the second prong, the court noted:

The plaintiff's interest is, principally, a property interest in the copyrighted material. See Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 661, 8 L.Ed. 1055 (1834). But as the Supreme Court has suggested, a copyright holder might also have a First Amendment interest in not speaking. See Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 559, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). The defendant to a copyright suit likewise has a property interest in his or her work to the extent that work does not infringe the plaintiff's copyright. And a defendant also has a core First Amendment interest in the freedom to express him- or herself, so long as that expression does not infringe the plaintiff's copyright.

*  *  *  and


Additionally, “[t]he loss of First Amendment freedoms,” and hence infringement of the right not to speak, “for even minimal periods of time, unquestionably constitutes irreparable injury.” Elrod v. Burns, 427 U.S. 347, 373, 96 S.Ct. 2673, 49 L.Ed.2d 547 (1976).FN10


The interplay of these rights: a First Amendment right to speak, a First Amendment right NOT to speak, and a First Amendment right to portions of the work that do not infringe - will be the fair use battleground of the future.

The problem with this case is that we can't get a copy of the book to see what it actually looks like.   I am skeptical that a book written about a 60-year old man named "Mr. C" could really be so likely to be copyright infringement.  The testimony of the English professors in favor of the defendant and the degree of Holden Caulfield literature out there, Holden's iconic status - and the lack of exploitation appear to be factors weighing in his favor. 

I am not persuaded that Salinger's "right not to speak" is implicated.  Back to the land analogy: if you let your land lie fallow for too long and it becomes overgrown, let someone else till it.  A hot new character in whom a corporate entity is pumping millions should be considered "strong" - like a well-advertised trademark.   But a "Mr. C" who is said to resemble a character not developed for 60 years?  That is a stretch to me.

More troubling to me is that the publicity or book jacket said it was a "sequel".  That is a problem and was probably a stupid mistake that could be remedied without censoring the book.

The case raises First Amendment issues for me unless the book really has major cuts and pastes from "Catcher".   But since I'm banned from reading it, my readers are irreparably harmed by my ignorance, and the poor judges involved are harmed by my skepticism that they are correct.

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

In Facenda v. N.F.L. Films, Inc., 542 F.3d. 1007 (3d Cir. Sept. 9, 2008), the Third Circuit tackles a major league set of questions. First, if a copyright owner in a video recording uses portions of the copyrighted sound recording containing a famous voice in promoting a video game, does the long dead famous football announcer's estate have claims for false endorsement under the Lanham Act? The answer is yes.

Second, if a copyright owner has the exclusive right to prepare a derivative work, doesn't this preempt any state-law right of publicity statute?

The answer is sometimes yes, sometimes no.

The NFL produced a 22-minute "documercial" (if you really want to know the difference between a documercial and an infomercial, you will have to read the 26-page decision). The documercial promoted the Madden '06 video game and used modified sound recordings of the legendary football announcer John Facenda's voice. Though he is long dead, Facenda's voice is still remembered, see his page on Wikipedia. Thanks, Wikipedia for the Madden 'O7 image accompanying this text. Madden '08 here.

Was the documercial "commercial speech"? Was it a product endorsement as Facenda's estate urged or was it a documentary? The court found that the video was an advertisement. Facenda had given the NFL a release shortly before his death that permitted the NFL the right to use his voice and image as long as it was not used to promote a product. The NFL's use was found to be a false endorsement in violation of section 43(a)(1)(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1). The court's discussion of the First Amendment's limitations on the Lanham Act is an interesting one.

Section 301(a) of the Copyright Act preempts legal and equitable rights that are "equivalent to" the exclusive rights protected by the Copyright Act. The court considered the cases that treat a person's "persona" as something independent of copyright's subject matter.

Essentially, in an excellent overview of the case law treating the extent to which a person who participate in the creation of a copyrighted work has surrendered their persona for promotional purposes, the court held that where the copyrighted work is excerpted to promote that expressive copyrighted work, such uses are preempted by the Copyright Act. But where a person's image, or in this case - their voice - is taken from one copyrighted work to promote another product, under certain circumscribed circumstances, which the court found in the Facenda case, such uses may violate that person's right of publicity.