This past summer there was a storm of discussion on the intertubes about whether fair use was a question that was appropriate for a jury, or whether it was exclusively the domain of judges. The question arose in Sony v. Tenenbaum when Judge Gertner asked the parties to brief whether “fair use was historically treated as an equitable defense and, if so, whether it is properly decided by the judge or a jury.”

The Court in Tennenbaum recognized that many courts have labeled fair use an equitable defense, and that generally equitable defenses, such as latches and acquiescence, historically were the province of judges, not juries.  The Tenenbaum Court, however, noted that authorities on the issue were “conflicting” or “imprecise,” and that there has been a string of decisions finding that fair use is appropriate for a jury:

Jartech, Inc. v. Clancy, 666 F.2d 403 (9th Cir. 1982) (upholding special jury verdict finding that defendants’ use of films was fair use); BUC INt’l Corp. v. Int’l Yacht Council, 489 F.3d 1129, 1137 (11th Cir. 2007) (noting that fair use defense was presented to the jury); New York Univ. v. Planet Earth Found, 163 Fed. Appx 13 (2d. Cir. 2005) (upholding the jury’s fair use finding; see also Roy Export Co. Estab of Vaduz Liech Black Inc. v. Columbia Broad Sys. Inc., 503 F.Supp. 1137 (D.C.N.Y. 1980) citing Meeropol v. Nizer, 560 F.2d 1061, 1071 (2d. Cir. 1977) (characterizing fair use as a question for the jury to decide)); Harris v. San Jose Mercury News, Inc., No. C 04-05262 CRB, 2006 WL 995151, at 1 (N.D. Cal. Apr. 10, 2006) (raising fair use as a mixed question of law and fact, yet declaring the issue more appropriately resolved by a jury even when facts were not in dispute.)

William Patry also weighed in at the time on Tenenbaum’s counsel’s blog, stating that “[t]he occasional statements about fair use being an equitable defense are, in my opinion ahistorical (Judge Leval agrees).”

Well, we can add another to the list of fair use jury cases. Bridgeport alleged that the song “D.O.G. in Me,” by the R&B group Public Announcement, a UMG recording artist, infringed George Clinton’s work “Atomic Dog.”A jury found UMG liable for infringement, rejecting a fair use defense.

On appeal, UMG argued that the District Court’s fair use charge was “erroneous” and “prevented the jury from considering its fair-use defense, i.e., that copying certain elements from “Atomic Dog” in “D.O.G. in Me” was intended as an homage or tribute and that a properly instructed jury would have concluded that the use of these elements for that purpose was fair.” The Sixth Circuit rejected the argument finding that the instructions were not erroneous:

Specifically, the defendant assigns error to the district court’s charge to the jury that an homage or tribute is “not necessarily fair use.” That charge is, however, an accurate statement of the law. See 17 U.S.C. § 107 (purpose and character of the use is only one factor); Campbell, 510 U.S. at 578-90 (weighing all factors in light of the purposes of copyright). Moreover, UMG failed to introduce any evidence that would have explained why the songwriter chose to include elements of “Atomic Dog” to honor George Clinton, nor was the purported tribute acknowledged in the credits or liner notes to the album.

HIT Entertainment granted Learning Curve a license, which was not part of the record, to make “Thomas & Friends” train toys.  Learning Curve hired a photographer to take promotional shots of the toys. After four years, the relationship between Learning Curve and the photographer soured. Learning Curve continued to distribute the promotional shots in advertisement and on the internet. The photographer registered the promotional photos and brought suit against Learning Curve and HIT alleging infringement.

The District Court granted summary judgment for Learning Curve finding that the images were a derivative work of the toys, and that the photographer needed both [1] permission from Learning Curve to make the photographs; and [2] permission from Learning Curve to have a copyright in the derivative works. Since Learning Curve never explicitly granted the photographer the right to make a derivative work, said the District Court, the photographer never had a copyright in the photos.

The Seventh Circuit reversed finding that, assuming there was no agreement to the contrary,  the photographer only needed permission to take the pictures, not permission to obtain a copyright in the works. The Seventh Circuit relied on their holding in See Liu v. Price Waterhouse LLP, 302 F.3d 749, 755 (7th Cir. 2002) (Kanne, J., writing), as opposed to language from Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983) (Posner, J., writing), which suggesting that explicit permission was required for an author to have a copyright in a derivative work, not just permission to make the work.

Originality and derivative works

The Seventh Circuit, assuming that the photos were derivative works for the purposes of the opinion, found that the promotional photos “possessed sufficient incremental original expression to qualify for copyright.” The Seventh Circuit opined that Gracen’s statement that “a derivative work must be substantially different from the underlying work to be copyrightable,” 698 F.2d at 305, “should not be understood to require a heightened standard of originality for copyright in a derivative work.” The Seventh Circuit instead looked to Buckew and found that “the only ‘originality’ required for [a] new work to be copyrightable . . . is enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguished from its predecessors.” Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 929 (7th Cir. 2003) (Ponser, J., writing).

Remand

The Seventh Circuit remanded the case for further findings on whether the photographer granted HIT and Learning Curve an oral non-exclusive license in the photos; and to see whether Learning Curve had the power to authorize the photographer to make the photos, under the licensing agreement between HIT and Learning Curve.

(H/t Rebecca Tushnet.)

Some of you may be aware  of an internet meme which took root in early September, “Is Glenn Beck the one responsible for raping and murdering a girl in 1990?” The inflammatory question, which is meant to play on Beck’s style of making accusations and then noting that they haven’t been refuted, began on a Fark board and spread like fire, finding a focal point within a day on the website glennbeckrapedandmurderedayounggirlin1990.com. Two days later, Beck filed an ICANN complaint through WIPO.

T.D. Ruth has written a three part series on the affair, Beck’s complaint, and the responsive pleadings at The Brown Tweed Society. The series is definitely worth a click-through:

• Rape, Murder, Rumor, and Rhetoric: The Strange Case of Glenn Beck, Part 1
• Rape, Murder, Rumor, and Rhetoric: The Strange Case of Glenn Beck, Part 2
• Rape, Murder, Rumor, and Rhetoric: The Strange Case of Glenn Beck, Part 3

[Hearing to consider pending nomination Part II begins, after introductions, at around 94:00]

Leahy (D-VT) [100:30:] If you were confirmed as the Intellectual Property Enforcement Coordinator, or IPEC, would you be willing to appear before the Committee and testify?

Espinel: Yes I would. As you know so well, this role was created and defined by legislation and this position is fully accountable to Congress. Among the duties that I would have if I were confirmed would be to submit an annual report to Congress that would report on the activities of the interagency committees that I would chair. If I am confirmed I look forward to working closely with this Committee, and ensuring that you receive information that is both timely and useful.

Leahy (D-VT) [102:30]: Is there anything that you would like to add to [the record]?

Espinel: I would say that I would like to thank the President. I would very much like to thank you Mr. Chairman Leahy and the members of the Committee. I am greatly humbled to be here and I would like to thank you for your leadership in creating this position and supporting the intellectual property that supports our country.

Feingold (D-WI) [121:10] Ms. Espinel, your prepared testimony is certainly a strong statement about the importance of enforcing intellectual property rights, and no one could really argue with that. You speak convincingly about the coordination among the various agencies that is needed to ensure the enforcement and protection are done efficiently. Can you give me an idea of what steps you will take to make sure that these enforcement activities do not undermine public
access to information that is so crucial for innovation and other priorities of the United States; and specifically, do you see it as part of your portfolio to coordinate with science and information library agencies on this issue?

Espinel: Thank you Senator. I think it’s part of this position to coordinate and find a consensus among all the different agencies and offices of the U.S. Government that are charged with protecting and enforcing intellectual property, and place importance on intellectual property.

I think intellectual property is a long-term strategy in many ways so that there will always be issues, as with all policy areas, where there will have to be balances found. One of the things that I think this position is poised to do is try to work with in a very open and transparent way all of the agencies and all of the stakeholders and the general public of the United States to try to develop a strategy that will protect intellectual property efficiently and effectively, but will do that taking into account the variety of views and opinions that exist.

Feingold (D-WI) [123:30]: So do you agree that overzealous enforcement of intellectual property rights could reduce our citizens’ legitimate access to information? And will you ensure transparency in policy development so that all of the ramifications of these enforcement activities can be accessed with the maximum public involvement?

Espinel: This Administration is very committed to transparency. If I am confirmed by the Senate, I will uphold that policy of transparency and take it very seriously. And I will look for the appropriate forum to do so within the office that I will head.

Franken (D-MN) [1:23:10]: The FCC recently put out a proposal for a more free and open internet. Net neutrality rules. I think what they’re doing is critically important. When Justice Sotomayor was in her hearings I raised this issue as a Constitutional issue of making sure that information flows freely on the internet. Ms. Espinel, I also want to prevent piracy, and you’ve talked about balance. So speaking of balancing, how should regulations balance the need to stop piracy with the need to protect the free flow of information on the internet?

Espinel: Thank you Senator. I think that is an excellent and very important question these days. Clearly internet piracy is a very serious problem our country is facing, and has serious ramifications for our economy. At the same time, openness on the internet is one of the reasons that the internet has been so successful and helpful to so many over the past few decades.

Openness however doesn’t apply to unlawful content. I believe there is way to ensure that the internet is open and we’re not restricting access to legitimate information to people, while trying to contain the very serious problem of internet piracy that we face. As you mention, the FCC is looking at this at this moment. If I were confirmed I would certainly be working with the FCC as well as the other relevant agencies to try to develop a strategy that would efficiently protect and try to stop internet piracy. But one that is consistent with this Administration’s policy of transparency and trying to ensure that we promote the internet.

Franken (D-MN) [125:40]: What do you see as some of the main tensions there? I would just like to get your thoughts on that because there’re all kinds of issues of maintaining your network — people trying to download enormous files — versus the free flow and no restrictions . . . What do you see as the tensions? Net neutrality and this whole issue of intellectual property?

Espinel: I don’t know that there necessarily have to be those tensions. I know that exist, but it seems to me that there has to be a way that we can find to move forward where we can ensure that the internet is open, ensure that there is reasonable management of networks, and at the same time, try to ensure that the internet is not being used as a means of distribution for all types of illegal content, including pirated content.

If I was confirmed, one of the issues that I would be grappling with in coordination with the other agencies is how we go forward in devising a strategy that accomplishes both of those goals.

The Central District of California denied Warner Brothers’ motion to reconsider its decision from late August construing 37 C.F.R. § 201.10(e)(1), the harmless error rule that comes into play when an author makes a mistake when filing a notice of termination. To briefly review, the heirs of the co-creator of Superman failed to identify two weeks of early comic strips in its notice of termination to the Copyright Office, which included tens of thousands of other works and stretched five hundred and forty-six pages.  The termination filing, however, included a catch all provision:

[E]ach and every work (in any medium whatsoever, whenever created) that includes or embodies any character, story element, or indicia reasonably associated with SUPERMAN or the SUPERMAN stories, such as, without limitation, Superman, Clark Kent, Lois Lane, Perry White, Jimmy Olsen, Superboy, Supergirl, Lana Lang, Lex Luthor, Mr. MXYZTPLK . . ., Ma and Pa Kent, Steel, the planet Krypton, Kryptonite, Metropolis, Smallville, or the Daily Planet. Every reasonable effort has been made to find and list herein every such SUPERMAN-related work ever created. Nonetheless, if any such work has been omitted, such omission is unintentional and involuntary, and this Notice also applies to each and every such omitted work.

The Court decided not to reverse its previous finding that the omissions did not invalidate the termination for the two weeks of the strip.  A taste from the decision:

[The] “constructive notice” effect so touted by defendants is not a concept to be bandied about in the abstract, as if it were an end unto itself. Such notice is informed largely by its purposes-it is a means to an end. To posit that any member of the public who was interested in exploiting Superman would somehow confine their review of the lengthy registration of the works in that character in the records of the Copyright Office to but a couple weeks’ worth of newspaper strips in January, 1939, is, from a practical business perspective, nonsense. Instead it would transform the harmless error inquiry into an entirely wooden enterprise, shaped entirely by and made subservient to the formalities of the rule itself. Should any third party be interested in exploiting those original copyrightable elements found in those strips, they would have also searched other works to successfully utilize them (works that were in fact listed in the termination notices), and upon doing so discover the termination notice (and the catch-all clause contained therein), putting them on inquiry notice that the termination notice also applied to those strips. The valuable copyrightable story elements to the Superman character contained in those strips (Krypton, Jor-L, etc.) do not exist in a vacuum. As defendants have repeatedly noted to the Court throughout this litigation, Superman is comprised of many different elements which, but for the results of this litigation itself, are considered and marketed part of an aggregate whole, not as tiny individual copyrightable bits (a red cape here, a particular villain there, x-ray vision and the ability to fly over here, an alter ego personality to peruse around the corner, or a far away doomed planet over the horizon). The copyright in the Superman character exists as a conglomerate representing the story that has been told of him through seventy years of exploitation.

What counts as a “good reason”? In addition to our two examples, take a look at what has been declared fair use by courts or legislatures. They include:

• Quotations of reasonable length
• Parody (but not satire)
• Use in news reporting
• Time-shifting (recording TV for later viewing)
• Thumbnailing (resizing) for image search engines
• Reverse-engineering for a new operating platform (figuring out what you need to do to write a game that works on a Sony Playstation)
• Limited copying for classroom or educational use

Wu proceeds to pin down why so many copyright pundits are fascinated by the Associated Press-Shepard Fairey copyright dispute, at least before the recent revelations about the assertions in Fairey’s complaint: It presents a new category that has yet to be evaluated:

Shepard Fairey’s case, setting aside his recent troubles for a moment, is one of these new areas. To “Warholize” someone else’s photo (if that’s the right verb) doesn’t fall within an existing category of fair use. So the question is whether it should.

Wu ends by explaining why the four factors Judge Story used in Folsom v. March, now embodied in law in 17 U.S.C. 107, often seem to play a marginal role when courts evaluate fair use today, outside of the context and era of the opinion:

Oddly enough—and, to my mind, for no particularly good reason—other thoughts of Story’s from 1841 on fair use remain the law. In Story’s time, the Supreme Court heard a copyright dispute over an abridgment of a long biography of George Washington. Story wrote “we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.” .  .  .

Is the [Hope image] fair use? Odds are, Story’s general principles didn’t answer the question for you. More probably, you have a gut reaction of some kind, which is, of course, how judging generally works—as Justice Oliver Wendell Holmes once put it, judges decide first and write their reasons later.

The Defendant allegedly sold answer to the Plaintiff’s engineering and accounting textbooks questions, via the internet.  The answer sets were identical to the Plaintiff’s instructor’s solutions manuals. Uneventful simple case of copyright infringement?  Such was not the case.

The Plaintiff never registered its copyright in its solutions manuals. The Plaintiff instead claimed that the defendant’s distribution of the answers were infringing derivative works of the textbooks themselves. The Court granted summary judgment in favor of the Plaintiff:

[The Defendant's answer sets do] not have independent economic value, and they are not by themselves economically viable. The Schedule is by nature derivative and it is meaningless without the Manual. It has no purpose on its own as it merely lays out a schedule with repeated references to the Manual, using terms that appear in the Manual and that have little meaning without reference to the Manual. Similarly, the Addendum is by nature derivative, as it merely provides additional samples of papers written by students and a booklet prepared for a science symposium, to be used with the Manual. Pavlica v. Behr, 03 Civ. 9628, 04 Civ. 8152, 2006 WL 1596763 at * 1, 3 (S.D.N.Y. June 12, 2006) (Chin, D.J.) (record citation omitted). In Addison-Wesley Publ’g Co. v. Brown, 223 F.Supp. 219, 221-24, 226-28 (E.D.N.Y.1963), the Court held that defendant’s publication and sale of a “Manual of Solutions” corresponding to the questions posed in plaintiff’s copyrighted textbook infringed on plaintiff’s copyright, explaining:

The solutions, for their part, have no independent viability. Without appropriation of the exact dimensions and magnitudes stipulated, in their context of the postulates propounded in plaintiffs’ problems, whatever the form or version into which defendants in their effort at disguise may have translated what they purloined, the solutions would exist in vacuo and be meaningless. What gives the solutions their value is that which, and only that which is already in the pirated works.

Addison-Wesley Publ’g Co. v. Brown, 223 F.Supp. at 220, 223-24; see, e.g., Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d at 145 (trivia book about the television sitcom, Seinfeld, “substitutes for a derivative market that a television program copyright owner such as Castle Rock ‘would in general develop or license others to develop.’ ”) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 592, 114 S.Ct. 1164, 1178, 127 L.Ed.2d 500 (1994)); Educ. Testing Serv. v. Simon, 95 F.Supp.2d 1081, 1089 (C.D.Cal.1999) (“Defendants have further violated [plaintiff's] right to create derivative works by incorporating the copied questions into a new work-defendants’ coaching materials-which add, among other things, suggested answers to the questions.”); Video Aided Instruction, Inc. v. Y & S Express, Inc ., No. 96 CV 518, 1996 WL 711513 at *5 (E.D.N.Y. Oct. 29, 1996) (study booklets and audio portions of an educational videocassette series were derivative works rather than separate works for purposes of statutory damages because their “viability [was] wholly dependent on the video-cassettes themselves”).FN5

FN5. See also, e.g., Midway Mfg. Co. v. Arctic Int’l, Inc., No. 80 C 5863, 1981 WL 1390 at * 9 (N.D.Ill. June 2, 1981) (“If defendant’s device is designed and used solely to modify plaintiff’s visual image, then plainly defendant’s device would only have value because of
plaintiff’s particular copyrighted audio visual work. Defendant, thus, by selling its device reaps the benefits of plaintiff’s artistic endeavor.”); Kepner-Tregoe, Inc. v. Carabio, No. 8-71025, 1979 WL 1072 at *17 (E.D.Mich. July 23, 1979) (materials used to train instructors to teach a program were “by nature derivative” because they could not“ ‘live their own copyright life’ “ and “would have no purpose” without the program); Procter & Gamble Co. v. Moskowitz, 127 U.S.P.Q. 523, 524 (E.D.N.Y.1960) (noting that “selling answers to a [copyrighted] puzzle contest [is]an unlawful interference with the plaintiff’s business and copyright”).

*5 Here, as in Pavlica and Addison-Wesley Publ’g Co., Nugroho’s instructor’s solutions manuals complement plaintiffs’ copyrighted textbooks, have no “independent economic value” and are “meaningless” without the textbooks because they merely provide answers to questions posed in the textbooks. Accordingly, this Court holds that Nugroho’s instructor’s solutions manuals are derivative works that infringe upon plaintiffs’ textbook copyrights.FN6

FN6. Nugroho relies upon Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F.Supp.2d 147 (E.D.N.Y.2002) (Weinstein, D.J.), aff’d, 354 F.3d 112 (2d Cir.2003), to argue that he did not infringe plaintiffs’ copyrights because (1) plaintiffs’ solutions manuals were not registered and (2) the solutions manuals he sold “failed to show any substantial similarity” to the textbooks. (Dkt. No. 38: Nugroho Br. at 2-4, emphasis omitted.) As plaintiffs aptly noted in their brief ( see Pls. Br. at 4-5), Nugroho’s arguments and Well-Made Toy Mfg. Corp. do not apply to this case because (1) plaintiffs are not arguing that Nugroho infringed its “unregistered instructors’ solutions manual[s]” and (2) plaintiffs are not arguing that Nugroho infringed their copyrights by selling a “substantially similar work” but instead are arguing that Nugroho infringed their copyrights by selling derivative works. (Dkt. No. 39: Pls. Reply Br. at 4-5.)

In China-IPR, the freedom of expression and trade-related intellectual property rights might have shared the same circumstantial space, but they did not make legal eye contact, let alone conduct a civilized juridical exchange. If there was such a meeting, it is not apparent from the Panel Report, and it is effortlessly denied. The Panel did not consider the human rights implications of its decision, either explicitly or implicitly. Indeed, it was not requested to do so by the US as complainant, nor was it encouraged to do so by any of the third-parties. This is reflective of the reluctance of the WTO’s Membership’s to integrate with non-WTO law, and the dispute settlement system’s consequent constraints in engaging with it. In this article I have not set out to either present or advocate an alternative approach; what is striking and noteworthy, however, is the ease with which this indifference to human rights law can be enacted by parties and Panels. To be sure, this is not necessarily a bad thing, and this exposition is not a judgmental one. Trade disputes do not exist in a political vacuum, and the WTO does have to consider its effectiveness in the area of trade law, and the continued legitimacy of its dispute settlement process among Members. However, the analysis shows that this indifference is not necessarily benign in its real implications for human rights.

There was an interesting decision issued in the federal district court in New Jersey that addressed the territorial limitations of the U.S. Copyright Act. The decision also contained a brief discussion of the new portions of 17 U.S.C. 602(a), as recently amended by the Pro-IP Act.

The Plaintiff, the leading distributor of sheet music in Europe,  alleged that the Defendant infringed its exclusive right to distribute music in the U.K. by exporting copies across the Atlantic. The Plaintiff was unable to allege that the Defendant infringed its copyright by making copies in the United States because the Defendant had a license to do so. The Court granted the Defendant’s motion to dismiss for lack of subject matter jurisdiction.

Said the Court in regards to the claim that the Defendant infringed the plaintiff’s 106(3) distribution right:

To be clear, the unauthorized distribution of a work in the United Kingdom, by mailing the work from the United States to the United Kingdom, does not constitute infringement under the Copyright Act. Section 106(3) creates a right of distribution in the United States only; any right of distribution that exists in the United Kingdom is a manifestation of British law. Plaintiffs treat the copyright laws of disparate nations as if they comprise a seamless ensemble, with infringement of any one’s law enforceable wherever the act was committed. Of course, this Court’s subject-matter jurisdiction is limited to cases arising under the Copyright Act; it has no power to vindicate violations of British law.

17 U.S.C. 602(a) as amended by the Pro-IP Act

The Pro-IP Act, which was signed into law in October of last year, amended, among other things, Section 602. The Act created a new exclusive right of exportation:

(a) INFRINGING IMPORTATION OR EXPORTATION.

(1) IMPORTATION—Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.

(2) IMPORTATION OR EXPORTATION OF INFRINGING ITEMS.—Importation into the United States or exportation from the United States, without the authority of the owner of copyright under this title, of copies or phonorecords, the making of which either constituted an infringement of copyright, or which would have constituted an infringement of copyright if this title had been applicable, is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under sections 501 and 506.

The Court asked for briefing on whether 602 as amended could create liability for the Defendant. Both parties agreed that it didn’t apply:

Here, there is no allegation that the infringing copies were made in violation of copyright; Plaintiffs allege only that the distribution of the (otherwise lawful) copies infringes upon their license. This position is certainly consistent with a plain reading of the statute, and since Plaintiffs agree that the exportation right does not apply here, the Court need not decide its scope.