Copyright Terminations: Amicus Brief For Authors Guild et al. In Dispute Over Film Rights To John Steinbeck’s Grapes of Wrath

On April 29, 2020, we filed an amicus curiae brief on behalf of The Authors Guild, The Dramatists Guild, The American Society of Journalists and Authors, and former Register of Copyrights Ralph Oman at the United States Supreme Court.  The case involves a dispute among John Steinbeck’s heirs over who should benefit from copyright termination rights under Sections 203 and 304 of the Copyright Act.  The brief argues that a number of federal courts have misinterpreted provisions of the Copyright Act of 1976 and the Copyright Term Extension Act of 1998 that permitted authors to terminate copyright grants and to recapture the copyrights for the periods of time that Congress extended the copyrights.   According to the brief, Congress intended to benefit authors and their heirs when Congress extended copyright terms in 1976 and again in 1998.  Amici curiae argue that the federal courts have frustrated Congressional intent by upholding prior copyright grants that the plain language of the Copyright Act permits authors to invalidate.   Check out the brief here.


www.dunnington.com
 Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2019-2020) by Raymond J. Dowd
 

Dunnington Partner Raymond J. Dowd to Speak on Stolen Art at ABA Annual Meeting in Boston on August 8, 2014

Dunnington Partner Raymond J. Dowd to Speak on Stolen Art at ABA Annual Meeting in Boston on August 8, 2014

 

            Raymond J. Dowd, a partner in the New York law firm Dunnington, Bartholow & Miller LLP, will join a panel of museum and legal experts to discuss:  “Stolen Art: Who Owns the Art Hanging on the Wall?”  The panel, to be held on August 8, 2014 at 8:30 a.m., is part of  IPCENTRAL, a program organized by the American Bar Association Section of Intellectual Property Law from August 7-10 at the Boston Marriott Copley Place Hotel.

            IPCENTRAL is a two-day gathering of the world’s leading IP professionals. Topics of discussion range from the impact of the America Invents Act on patent challenges to the portrayal of IP law in pop culture to recent Supreme Court decisions on patent cases.  Mr. Dowd and his fellow panelists will discuss recent technological and case law developments affecting the traffic in stolen art, including heightened legal and reputational risks now faced by museums and galleries, provenance policies required to ensure proper chain of title to art collections, and increased efforts to facilitate the return of art stolen during World War II.  Mr. Dowd will discuss his success before the New York Court of Appeals in obtaining the return to the Pergamon Museum in Berlin, Germany of an ancient Assyrian tablet excavated from the Temple of Ishtar. For the full IPCENTRAL program brochure please click here.

            Mr. Dowd’s practice focuses on litigation in federal and state trial and appellate courts, as well as arbitration and mediation.  Mr. Dowd is the author of Copyright Litigation Handbook (West 7th Ed. 2013-2014)(updated annually).  Mr. Dowd has handled cases involving art law, copyrights, trademarks, cybersquatting, privacy, trusts and decedents’ estates, licensing, corporate and real estate property.  Mr. Dowd lectures frequently on copyright and art law at events and locations around the world, including the 2009 Prague Conference on Holocaust-Era Assets, the Jewish Museum in Berlin, Yad Vashem in Jerusalem, the National Arts Club, the Pennsylvania Academy of the Fine Arts, the San Francisco War Memorial, and the U.S. District Court for the District of Columbia.

            Mr. Dowd currently serves on the Board of Directors of the Federal Bar Association, having served as General Counsel (2011-2012) and as President of the Southern District of New York Chapter (2006-2008).  In 2007, he co-founded the Art Litigation and Dispute Resolution Institute at New York County Lawyers’ Association.

            Dunnington, Bartholow & Miller LLP was selected as a 2014 Top Ranked Law Firm for Intellectual Property by Corporate Counsel/ALM/The American Lawyer.  Dunnington is a full-service law firm providing corporate, litigation, intellectual property, real estate, taxation and estate planning services for an international clientele.  Find out more at www.dunnington.com.

Nov 22 The Art Law Event of the Year: NYCLA Art Litigation & Dispute Resolution Institute - Sign Up Now

For more information on this program, or on NYCLA, click here.

To download a registration form, click here.



www.dunnington.com
 Copyright law, fine art and navigating the courts. All practice, no theory.Copyright Litigation Handbook (Thomson Reuters Westlaw 2012-2013) by Raymond J. Dowd
 

Copyright Litigation Blog Turns Five

Today the Copyright Litigation Blog has been in existence for five years.  It was launched as an adjunct to my book Copyright Litigation Handbook (West 2010).  Over the years my posts have changed in character and style and I have tackled a few subects outside the purview of copyright litigation.   In 2005 I took on Bakalar v Vavra which became the first Holocaust-era art trial in a US federal court.  Accordingly my practice and blogging took on the topic of art theft.   I am now on my second trip to the Second Circuit on Bakalar v Vavra.

The Copyright Litigation Handbook has grown in depth and subect matter over time as well.  It garnered top reviews in the New York Law Journal, on Amazon and many practioners from around the country have expressed their appreciation for a book that they find practical.  I use it almost daily in my practice and update it annually.

The Copyright Litigation Blog has also broken many stories both in the blogsphere and in the mainstream press.  I am thankful to those who have quoted me and have appreciated those journalists who have consulted me.  Being bombarded with tough questions is helpful to me in keeping up with what is going on.

I have also received speaking invitations as a result of blogging as well as invitations to write articles.  I have made numerous blogging friendships and good acquaintances.  A few scuffles over time, but heck life would be boring if we all agreed all the time.  I hope no one holds a grudge.

People always ask whether I have gotten clients through blogging.  The answer is yes.  It is a powerful medium for the new generation and it has added significantly to my firm's bottom line.  I have gotten referrals from both local and foreign attorneys, been hired as local counsel, been hired to consult or litigate in faraway jurisdictions, and been approached directly by good clients needing quality service.  

When I started blogging I knew that this would be a powerful medium.  I am persuaded that it is growing in power in a way that can be felt almost on a monthly basis.  It has been a great experience to be involved and as each post goes out, I can only imagine who it will touch and who will be affected by it.  They say that only a tiny percentage of those who read give feedback, I suppose that this is a good thing since the feedback has been overwhelming and overwhelmingly positive.

I have posted rankings showing the Copyright Litigation Blog to be in the top ranked IP blogs by traffic and relevance.  I don't try to keep up with breaking news all of the time and my blogging tends to be seasonal.  When I am updating my book, I blog a lot. When I am really busy with work or just plain lazy, I don't.  The guilt-free and subjective formula seems to have worked out just fine.

If you Google or Bing "copyright litigation" the Copyright Litigation Blog is the number one result.   I hope that is in part a reflection of quality and relevance but I know that it also is a reflection of quantity and perseverance, which are not necessarily the best characteristics to showcase on the internet.  Still I am thankful for the standing.  In a competitive profession, it is nice to be number one, however fleetingly and whether or not it is deserved.   A change in the Google algorithm and it could all be dust!

I am looking forward to the next year and excited about this year's update of Copyright Litigation Handbook.   I visited the Copyright Office in Washington DC and am looking closely at the new world of copyright registration online.    I hope that you will continue to Like, Retweet and otherwise refer my posts to those who may be interested.   Feel free to follow me on Twitter @raydowd.  I hope to keep you informed, entertained and occasionally outraged in the years to come.

Copyright Law: Donglegate - Fifth Circuit Shreds DMCA, Tosses Damages Experts

Mini Bluetooth Dongle

Here's a scenario for a copyright plaintiff's lawyer:

Client comes to you.  Potential defendant has cracked (infringing) copies of your client's software on its system.  Client uses a "dongle" to protect the software:  you can't access or operate the software without the dongle.  The cracked copies of the software can run without using your client's dongle key: bypassing the encryption system.   You sue. Judge gives you an injunction, infringer proceeds to ignore it, keeps using copies and fails to account for missing laptops.  Defendant is big, profitable company, made lots of $$ using your infringements.

Enter the Digital Millenium Copyright Act:

17 USC § 1201. Circumvention of copyright protection system



(a) Violations Regarding Circumvention of Technological Measures. — (1)(A) No person shall circumvent a technological measure that effectively controls access to a work protected under this title. The prohibition contained in the preceding sentence shall take effect at the end of the 2-year period beginning on the date of the enactment of this chapter.

From Wikipedia:
 
A dongle is a small piece of hardware that connects to a laptop or desktop computer for the purpose of copy protection or authentication of software to be used on that system.[1]
Electrically, dongles mostly appear as two-interface security tokens with transient data flow that does not interfere with other dongle functions and a pull communication that reads security data from the dongle. These are used by some proprietary vendors as a form of copy protection or digital rights management, because it is generally harder to replicate a dongle than to copy the software it authenticates. Without the dongle, the software may run only in a restricted mode, or not at all. As of July 26, 2010 it became legal in the United States to use programs protected by this method without needing a dongle as according to the United States this technology is obsolete.

(no citations for that last proposition)

You have a SLAM DUNK, in collecting big damages right?   Not in the Fifth Circuit, and not if you have screwed up your damages claim.

Enter MGE UPS Systems v. GE Consumer and Indus. Inc., 2010 WL 2820006 (5th Cir. July 20, 2010). You can find the decision here.

Deciding an issue of first impression, the Fifth Circuit Court of Appeals found that the dongle wasn't used by the infringer to bypass copyright protections to make infringing copies, it was bypassed simply to use the infringing copy, so didn't violate 17 USC 1201.  That is now the law of the Fifth Circuit interpreting 17 U.S.C. 1201.   The Fifth Circuit reasoned that once you bypassed the dongle, there wasn't ANOTHER layer of protection, so using the cracked software was AOK under 17 U.S.C. 1201.   Also, the infringer's possession of a cracked copy was not sufficient to show that the DEFENDANT had bypassed the technology.

Ordinarily in copyright law, showing access plus an infringing copy is enough to prove direct copying - videos of people actually cracking software are pretty rare.   So the general rule is when a copyright owner busts someone with a lot of cracked software, it's pay up or shut up time.  Not in the Fifth Circuit!

But for the poor copyright owner, it gets worse.  Rule 26 of  the Federal Rules of Civil Procedure requires a litigant to calculate damages upfront.  This is usually impossible prior to discovery, so litigants usually put in something pro-forma and then try to amend/update as possible or necessary as early as reasonably possible.  In this case, the plaintiff put in that it would rely on its expert.  The expert calculated only the Plaintiff's losses based on theories that the trial court threw out.  The expert NEVER SOUGHT OR CALCULATED ACTUAL PROFITS RELATING TO THE INFRINGEMENT.

The result?  Since the expert's hokey theories were thrown out, plaintiff's lawyers were left with the gross sales of the infringer.  But it gets worse.  They never present to the jury the revenues that they claim are RELATED TO THE INFRINGEMENT.

Result?   The Fifth Circuit threw out all jury awards, granted plaintiff injuntive relief plus a "take nothing judgment" (those are the Fifth Circuit's actual words).

Time for a book plug, because obviously the message is not getting through.   When you start a copyright litigation, please buy my book Copyright Litigation Handbook.  I took three years to write the book combing the case law for examples of lawyers running afoul of the Federal Rules of Civil Procedure as applied to claims under the Copyright Act.  Nimmer it ain't.  Patry it ain't.  It is SHORT and USEFUL.  It doesn't try to replace or compete with a treatise on copyright law.  It's a little over $200.  Unlike any other publication on copyright law, each Chapter is chock full of screwups for the litigation practitioner to avoid. When you get to your Rule 26 disclosures on damages and experts, read three relatively short chapters:  Chapter 14 Discovery; Chapter 15: Evidence and Experts and Chapter 17:  Damages and Profits.  They are short chapters, it won't kill you.

I am reading more and more case law where experts are coming in with goofy theories and getting tossed out by judges.   You may need to pursue a few different theories in discovery and be prepared for at least one to be tossed as outright nonsense (economists, industry comparisons, etc.).  And if you can't get those billions you think your case is worth, it's better to take home at least the value of your legal fees and costs.



Purchase Copyright Litigation Handbook from West here  

Copyright Blogs: Top Copyright Blawgs - Justia

This week's ranking of top Copyright Blogs from Justia Blawg Directory:

1. IPKat (62)  Alexa 453,723
2. Recording Industry vs The People (153) Alexa 288,637
3. Plagiarism Today (188) Alexa 98,910
4. Likelihood of Confusion (233) Alexa 1,384,049
5. Chilling Effects Clearinghouse (235) Alexa 17,035
6. Copyright Litigation Blog (247) Alexa 632,947
7. Copyright Reform (310)  Alexa 11,832,939
8.  Chicago IP Litigation Blog (320) Alexa 2,053,979
9.  Ruling Imagination: Law and Creativity (338) Alexa 2,182,191
10.TechnoLlama (397) Alexa 961,095
11. Excess Copyright (522) 2,055,389
12.  Nolo Presents the Law in Plain English (558) Alexa 5,489,995
13.  Video Game Law Blog (565) Alexa 1,014,265
14.   Internet Cases (602) Alexa 952,632
15.   The Patry Copyright Blog (606) Alexa 1,656,580



The number in parentheses is the popularity of each site compared to all other Blawgs this week (by Justia).  I put the Alexa numbers next to each.

Justia's list has 64 Copyright Blogs.  Justia has an Alexa ranking of 11,293.  If Blogs don't self-identify as Copyright Blogs, they are not included.  According to Justia, the most popular Blawg is Above the Law, which has an Alexa ranking of 29,575.

According to the Alexa numbers, the EFF's Chilling Effects Clearinghouse is by far the most popular site, they really must have tremendous traffic, people are really interested in cease and desist letters.  I wrote a chapter in my Copyright Litigation Handbook that is devoted to cease and desist letters.  I think it may be the only comprehensive discussion of the first-to-file rule, problems arising from cease and desist letters, and the issue of declaratory judgment actions filed in response to cease and desist letters.

For more on Copyright Litigation Handbook (what West calls an "author-generated summary), go here.

For a list of top Intellectual Property Blawgs and an explanation of statistics, go here.

 Purchase Copyright Litigation Handbook from West here  

10th Cir: Golan v Holder - First Amendment Challenge to Berne Convention's Taking Works Out of Public Domain Retroactively Fails

The 10th Circuit ruled yesterday against a group of distributors of foreign copyrighted works that had fallen into the public domain, but which Congress had restored copyright status by 1994 legislation implementing the Berne Convention, following the Uruguay Round of trade negotiations.

The group, represented in part by Prof. Lawrence Lessig and the Center for Internet and Society, included a man who had composed a marching band song based on a Shostakovitch symphony that had fallen into the public domain.

The situation arose because the US used to have a rule that if you didn't put a copyright notice on your work and register it with the US copyright office, it would fall into the public domain.   Many distributors of foreign copyrighted works failed to put proper notices on them or register them with the copyright office.  Notices and registration are known as "formalities".   For a while, the US was a rare country that required formalities, most didn't, pursuant to the Berne Convention.   The US enacted the Berne Convention Implementation Act in 1988 abolishing the requirement of formalities, but it did not restore copyright protection to foreign works that had fallen out of copyright.  In 1994, Congress restored copyright protection to these foreign works (it was not automatic and involved some bureaucracy).  People who'd used the works or created derivative works were supposed to work out reasonable license fees or have them fixed by the courts.

You can find the requirement of formalities in the Copyright Act of 1909.  I have included the entire 1909 Copyright Act for easy reference as an appendix to my Copyright Litigation Handbook.

The decision has a lot of interesting legislative history, and it's got a lot of litigation history.  (From my memory) it was in district court where plaintiff lost, there was an appeal that plaintiff won with instruction to perform a First Amendment analysis on remand, then plaintiff won again with the district judge holding that the statute violated the First Amendment.  Now, the 10th Circuit reverses, link to decision below:

10th Cir: Golan v Holder - First Amendment Challenge To Removal of Copyrighted Works From Public Domain Fails



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Synchronizing Art to a Sound Recording: Do Financial Incentives Demotivate Creativity and Problem Solving?

HT to Mike Masnick of Techdirt.  Not only is Dan Pink's video by RSA Animate (embedded below) thought-provoking and relevant to whether or not money stimulates creative activity.  It is also relevant to the core purpose of the Copyright Act and arguments raised in defense of draconian copyright: whether or if financial incentives stimulate creativity.  Studies by the Federal Reserve and MIT raise the question of whether financial incentives actually decrease creativity.

Anyone trying to get more productivity out of an organization without spending more money ought to take these studies very seriously.

Far Copyleft folks see copyrighted works as mere free raw materials for creating new works.  The far Copyright folks see a copyrighted work as a sacred, inviolable and untouchable iconic thing that may only be accessed when, how, for how long and as often as the copyright owner dictates.

Far Copyright folks see a copyright as a complete monopoly from which windfall profits are to be extracted every time a new technology emerges to make a consumer's old licensed copy of a work obsolete or every time a consumer wants to use or dispose of the copy as he or she sees fit. The first sale doctrine lets us resell a car we've purchased without paying the manufacturer. Restraints on the alienation of property are disfavored in the common law because this blocks free economic activity.

Should we have to pay a German copyright holder because we want to make fun of Hitler using the German copyright holder's ridiculously earnest economic exploitation of the Hitler theme in the film Downfall? Or does the exploiter of a theme have to take crap from people who want to laugh at them or laugh at sometimes serious, sometimes silly themes using them?

The issue I think was wrongly decided in Dr. Seuss v. Penguin Books, a Ninth Circuit case decided in 1997.  Here is how the court handled the issue of parody?
It is the rule in this Circuit that though the satire need not be only of the copied work and may . . . also be a parody of modern society, the copied work must be, at least in part, an object of the parody, otherwise there would be no need to conjure up the original work. . . . By requiring that the copied work be an object of the parody, we merely insist that the audience be aware that underlying the parody there is an original and separate expression, attributable to a different artist.

* * *
We now turn our attention to The Cat NOT in the Hat! itself. The first two pages present a view of Los Angeles, with particular emphasis on the connection with Brentwood, given the depiction of the news camera lights. The story begins as follows:



A happy town Inside L.A. Where rich folks play The day away.
But under the moon The 12th of June. Two victims flail Assault! Assail! Somebody will go to jail!
Who will it be? Oh my! Oh me!


The third page reads: "One Knife? / Two Knife? / Red Knife / Dead Wife." This stanza no doubt mimics the first poem in Dr. Seuss' One Fish Two Fish Red Fish Blue Fish: "One fish / two fish / red fish / blue fish. Black fish / blue fish / old fish / new fish." For the next eighteen pages, Katz writes about Simpson's trip to Chicago, the noise outside Kato Kaelin's room, the bloody glove found by Mark Fuhrman, the Bronco chase, the booking, the hiring of lawyers, the assignment of Judge Ito, the talk show interest, the comment on DNA, and the selection of a jury. On the hiring of lawyers for Simpson, Katz writes:


A plea went out to Rob Shapiro Can you save the fallen hero? And Marcia Clark, hooray, hooray Was called in with a justice play.
A man this famous Never hires Lawyers like Jacoby-Meyers. When you're accused of a killing scheme You need to build a real Dream Team.
Cochran! Cochran! Doodle-doo Johnnie, won't you join the crew? Cochran! Cochran! Deedle-dee The Dream Team needs a victory.
These stanzas and the illustrations simply retell the Simpson tale. Although The Cat NOT in the Hat! does broadly mimic Dr. Seuss' characteristic style, it does not hold his style up to ridicule. The stanzas have "no critical bearing on the substance or style of" The Cat in the Hat. Katz and Wrinn merely use the Cat's stove-pipe hat, the narrator ("Dr. Juice), and the title (The Cat NOT in the Hat! ) "to get attention" or maybe even "to avoid the drudgery in working up something fresh." Acuff-Rose, 114 S. Ct. at 1172. While Simpson is depicted 13 times in the Cat's distinctively scrunched and somewhat shabby red and white stove-pipe hat, the substance and content of The Cat in the Hat is not conjured up by the focus on the Brown-Goldman murders or the O.J. Simpson trial. Because there is no effort to create a transformative work with "new expression, meaning, or message," the infringing work's commercial use further cuts against the fair use defense. 9 Id. at 1171.


So if I want to draw former President George W. Bush as Mickey Mouse and parody him by placing him in a Mickey/Minnie scenario, by this logic Disney can stop me from engaging in this core political speech because I am not making fun of Mickey, only of the former President.

How to permit political speech, promote creativity and maximize economic welfare for both copyright creators and society in general are questions implicated in these debates, with the cultural pendulum slowly swinging towards the Remix culture camp. There are a few signs that legal culture is moving in that direction, with judges taking a more expansive view of fair use.

When the Copyright Society had its convention in New Orleans a few years back, I was struck by the plight of Jazz musicians: they didn't have the right to a compulsory license.   So a bunch of white kids doing an exact cover of a Led Zep tune can force Led Zep to license the song at a cheap rate.  

But Jazz - which remixes, rearranges and is an art form that is derivative - can't get a compulsory license, and the changes and modifications to the original can't be protected without an additional license from the copyright owner - even though a sound recording in a cover song can.

According to the jazz musicians, the licensing practices of copyright owners have put them out of making a living and basically strangled their creativity.  It was a heartbreaking presentation. Jazz and its successors which rely on sampling, borrowing, remixing - all activities emanating from African-American traditions - have been severely penalized, to the point of practical extinction.




The Remix movie- with a white kid p/k/a Girl Talk at its center - shows how new technologies open up new creative possibilities.   And as white kids start looking to play a kind of American jazz with video, it is more likely that the courts will be more reluctant to penalize and criminalize that activity.

The video below is also a great example of using art to make a sound recording come alive through a new layer of creative labor.



 Purchase Copyright Litigation Handbook from West here 

Copyright Litigation Blog on Google - Number One "Copyright Litigation" Search

Search results from Google put Copyright Litigation Blog and Copyright Litigation Handbook at number one in search engine results for the search "copyright litigation".

Thanks, Google, and thanks to everyone who enjoys the content, your readership, comments and feedback are all appreciated.

 Purchase Copyright Litigation Handbook from West here  

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

"Lady Caroline Lorgnette" from Los Angeles Iptrademarkattorney.com

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

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

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

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

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

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

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

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

 Purchase Copyright Litigation Handbook from West here  

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

Obama signals support for ACTA Copyright Treaty

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

Copyright Lawsuits Plummet in Aftermath of RIAA Campaign | Threat Level | Wired.com

Copyright Litigation Handbook author Ray Dowd quoted in Wired Magazine:

Copyright Lawsuits Plummet in Aftermath of RIAA Campaign Threat Level Wired.com

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

Graham v. Haughey: Prejudgment Interest Granted on Old "Secret" Infringements

What happens when you in 2005 for infringements that you didn't know about running from 1992 through 2004? Usually, the three-year statute of limitations of the Copyright Act will preclude you from a remedy.  17 USC 507(b).  But what if the infringements were secret and concealed from you as a trade secret?

I wrote about the Graham v Haughey case here . End result, infringer whacked for 20 million clams.

But do you get prejudgment interest? Another $4.2 million smackers, the May 12 decision below.  The $20 million judgment below that.

Graham v Haughey - Prejudgment Interest Granted on Old "Secret" Infringements

Fair Use Friday: An Old Favorite - Fair(y) Use Tale

This explanation of copyright and fair use has been viewed almost 10 million times on YouTube, so you've probably seen it.   But it's great and fits in well with my two previous fair use video posts here and  here.

Reminder, fair use is an unsettled field, expensive to litigate, be careful out there from the US Code Chapter 17 (the Copyright Act): 

§ 107. Limitations on exclusive rights: Fair use


How Current is This? Notwithstanding the provisions of sections 106 and 106A, 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.

2d Cir: No Attorneys Fees Under Copyright Act For Ad Hominem Attacks

Bauer v Yellen, 2010 WL 1740815 (2d Cir. May 3, 2010)

The Second Circuit reduced the attorneys fees assessed against a losing defendant because of counsel's ad hominem attacks on the defendant.  Excerpts from the Court's opinion, including the nastygrams that the losing defendant did not have to pay for:

Under the Copyright Act, see 17 U.S.C. § 505, “the award of attorney's fees is within the sound discretion of the court.” N.A.S. Import, Corp. v. Chenson Enters., Inc., 968 F.2d 250, 253 (2d Cir.1992). There is “no precise rule or formula” for determining when such an award is merited. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994) (internal quotation marks omitted). Instead, “equitable discretion should be exercised in light of the [relevant] considerations,” which include “frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.” Id. at 534 & n. 19 (internal quotation marks omitted); accord Crescent Publ'g Group v. Playboy Enters., Inc., 246 F.3d 142, 147 (2d Cir.2001).

* *  *
In awarding defendants attorney's fees, the district court explicitly considered the Fogerty factors. It concluded not only that Bauer had been “preoccup[ied] with collateral issues and frivolous discovery disputes” during the course of the litigation, Bauer v. Yellen, 548 F.Supp.2d 88, 96 (S.D.N.Y.2008), but also that her claims of copyright infringement were objectively unreasonable given that (1) defendant Linda Yellen had registered five different versions of the allegedly infringing script with the Writers Guild of America before ever reviewing Bauer's script, see id. at 94; and (2) “A Rose Is a Rose Is a Rose,” Bauer's script about the relationship between Gertrude Stein and Alice B. Toklas, and “The Hive,” defendants' script about five male artists living in a Paris tenement, were so obviously different that no reasonable juror could conclude that they contained similarities probative of copying, see id. at 95-96. In light of our observation that “objective reasonableness is a factor that should be given substantial weight in determining whether an award of attorneys' fees is warranted,” Matthew Bender & Co. v. West Publ'g Co., 240 F.3d 116, 122 (2d Cir.2001), this record manifests no “erroneous view of the law or ... clearly erroneous assessment of the evidence,” In re Sims, 534 F.3d 117, 132 (2d Cir.2008), sufficient to support the conclusion that the district court abused its discretion in awarding fees.

 While we are mindful that attorney's fees should only rarely be awarded against plaintiffs proceeding pro se, such an award is appropriate where, as here, the district court's determination that the plaintiff's “claim was frivolous, unreasonable, or groundless, or that the plaintiff continued to litigate after it clearly became so,” finds support in the record. Hughes v. Rowe, 449 U.S. 5, 15 (1980) (internal quotation marks omitted). Nevertheless, our review of the record indicates that defendants' briefing below relies on ad hominem attacks not relevant or helpful to the court's expeditious resolution of the dispute, which attacks necessarily augmented the fee demand.FN2 Accordingly, we vacate the portion of the district court's order finalizing the amount of the fee award and remand for the court to reduce the total fee by deleting amounts incurred in mounting ad hominem attacks.

FN2. The record is replete with such attacks, particularly during discovery. We cite only a few examples:

• “Ms. Bauer's [May 21 letter to the Court] is of a kind with her reckless initiation and malicious prosecution of her baseless lawsuit, namely it is tainted by her dishonesty, deviousness, and disingenuousness.” Def's Response to Ptf's Excuses for Disobedience of Court Orders (ROA Doc. # 18, at 2).

• “Ms. Bauer's shameless begging for the sympathy of the court on the grounds that she is a pro se litigant ‘in over her head’ is a devious attempt to avoid the consequences of her arrogant disregard of three unequivocal Orders of the Court.” Def's Response to Ptf's Excuses for Disobedience of Court Orders (ROA Doc. # 18, at 3).

• “Every minute this case remains undismissed by you is an affront to the legal system and due process. We insist on meeting face-to-face IMMEDIATELY, as ordered, to explain to you why you have no case, why you are likely to be assessed our client's attorneys' fees, and why you should be held in contempt. You ignore our demand and the Court Order at your great peril. You are right only about one thing, you are in ‘way over your head.’ “ May 21, 2007 Email from Def. Counsel to Bauer (ROA Doc. # 19, Ex. 1).

• “Your refusal to meet up to NOW after you have had the ample opportunity to confirm that you have NO CASE is a violation of the May 2 Order for which we will seek sanctions including DISMISSAL, CONTEMPT, and the AWARD OF DEFENDANTS' ATTORNEY'S FEES.” May 22, 2007 Email from Def. Counsel to Bauer (ROA Doc. # 19, Ex. 2).

• “Ms. Bauer has pursued this case blindly, recklessly, vindictively, maliciously and without a shred of evidence to support her wild and deluded claim of copyright infringement.... Ms. Bauer's opposition papers mirror the nasty, mean-spirited approach she has taken in prosecuting this matter.” Def's Reply on MSJ, at 8-9 (filed Nov. 9, 2007).

We have considered Bauer's remaining arguments on appeal and conclude that they are without merit. For the foregoing reasons, the judgment of the district court is AFFIRMED in part, VACATED in part, and REMANDED for further proceedings consistent with this order.

Copyright Infringement Public Service Announcement - "Cloned"

Second Circuit - Arista Records v Doe 3: Copyright Infringement Trumps Anonymity and First Amendment

In Arista Records v. Doe 3, --- WL --- 172107 (2d Cir. April 29, 2010) the Second Circuit permitted a record company to subpoena the anonymous defendants' internet service provider, the State University of New York at Albany.   Doe 3 tried to quash the subpoena, arguing that Doe 3 had a First Amendment right to anonymous speech through the internet.   The court acknowledged the First Amendment right to anonymous speech, but noted that the interest or "qualified privilege" was outweighed by the rights of a copyright owner that had made sufficiently specific allegations of copyright infringement.   In getting there, the court applied a test devised by then-District Court Judge Denny Chin (who is now on the Second Circuit):

1. the concreteness of the plaintiff's showing of a prima facie claim of actionable harm;
2. the specificity of the discovery request;
3. the absence of alternative means of obtaining the subpoenaed information to advance the claim; and
4. the objecting party's expectation of privacy.

The subpoena listed 236 works, with specific owners and songs, among them Beastie Boys' Licensed To Ill.  The Urban Dictionary defines "illin" here, and in relevant part:

3. illin

buy illin mugs, tshirts and magnetsDoing stuff you shouldn't be doing (aka bad shit) while hanging out with friends, like drugs or vandalism.


Donna: "What are the plans for tonight, Fred?"


Fred: "Oh Hangin', Chillin'.... Little bit a illin."


chilling chillaxing hanging causing ruckus creating trouble

Doe 3 and the kids at SUNY Albany been illin.  Decision below.

Second Circuit - Arista Records v Doe 3 Copyright Infringement Trumps Anonymity and First Amendment

2d Cir: Statutory Damages - Rejects "Independent Economic Value" Test

In Bryant v. Media Right Productions, Inc., --- F.3d ---, 2010 WL 1659113 (2d Cir. April 27, 2010), the Second Circuit considered the question of how many statutory damages awards may be granted for an infringement of an album comprised of ten songs.

The court made clear that if the copyright owner published a work as a "compilation" - or album, only one award would be available under 17 USC 504(c).

If a defendant took ten songs from ten different albums and published them as one compilation, ten awards would be available because the copyright owner had not published the works as a compilation.

The decision was written by Judge Kimba Wood sitting by designation.  It relied on plain language and legislative history arguments regarding Congress's limitation on the number of awards of statutory damages in enacting the Copyright Act.

Bryant explicitly rejected the "independent economic value" test adopted by the 9th, 11th and DC Circuits in determining whether copyrighted works within a compilation could support additional awards of statutory damages.   The other Circuits have not explicitly dealt with the question of songs and albums but television shows (9th and 11th) and individual poses of Mickey Mouse (D.C. Cir.).