Back!

kayakIt has been much too long since I posted, but I am looking forward to posting again in earnest.  Feel free to send me an e-mail with any topics you would like to see in 2014.

Until then, Happy New Year to everyone!

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How To Find & Monetize Valuable Copyrights On University Campuses

Copyright licensing is probably the last thing on students’ minds as they return to college campuses across the country.  Yet with the increasingly difficult financial problems facing universities, there has been a renewed urgency to find ways to monetize inventions, discoveries and other work coming out of academia.

Technology transfer offices and the school’s legal counsel are adept at obtaining patents and shopping those patents around, but not as much thought has been given to other intellectual property such as copyrights and “know-how” generated by academia.

I had the good fortune recently of getting to talk  at an AUTM conference — the Association of University Technology Managers — about how some universities are successfully monetizing their copyrights.  Click here for the presentation slides.

I would be interested in hearing about companies or universities who have taken another look at their copyrights and are discovering ways to monetize them.

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Only An Author Can Create A Copyright — That’s No Monkey Business

The author who creates a work initially owns the copyright in the work.  The writer who writes the next novel, the painter who magically makes the canvas come alive, the musician who records the next hit all initially own the copyright in their work.

But who is an author?  Or rather, can an author be an “it”?  A few days ago, I laughed as I read about a macaque monkey who snapped away with an unattended camera and took this self-portrait.  The blog techdirt wondered who owns the copyright in the photograph.

As an avid photographer, I am sympathetic to photographers and the issues that they face.  But, photographer David Slater probably never owned the copyright to the photographs that the monkeys took.  Carter News paid him for the photographs regardless so for Mr. Slater, he probably doesn’t care too much one way or the other.

So getting back to techdirt’s question, who does own the copyright?  Probably nobody.  Copyright protects “original works of authorship fixed in any tangible medium of expression.”  Although the copyright statutes never define who an “author” is, the language of the statute consistently refer to “persons”, “natural persons” and other language that limits copyright protection to those works created by people.

Every once in a while, a court is faced with the question of who owns a copyright in a book “authored” by non-human spiritual beings.  The courts hold that copyright laws do not protect the creations of works by non-humans — whether spiritual beings, aliens or the like.  Sadly, if E.T. created any works during his short stay on earth, U.S. copyright will not protect those works.

Actually, this does come up more often when discussing computer programs and computer-generated works.  But, to answer techdirt’s question, only works created by humans receive copyright protection.  Different arguments may arise if Mr. Slater had directed the monkeys, but it doesn’t sound like he did so here.

Anyone want to make the case that U.S. copyright law protects the monkey’s masterpiece?

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How To Stop Copyright Infringement Of Movies. Follow The Strategy The Music Industry Abandoned?

The flooding along the Missouri and Mississippi Rivers will soon pass, but we should be on the lookout for the next flood of copyright infringement cases now that the courts are starting to authorize subpoenas that will identify tens of thousands of people who have downloaded movies from peer-to-peer (P2P) networks.  Expect to see copyright infringement lawsuits filed over the next couple of weeks citing illegal downloads of The Expendables, B-list movies and porn.

It is reminiscent of the old days when the music industry decided that it would sue anyone and everyone who it thought illegally downloaded a song off of Napster and its prodigy of P2P networks.  It was lucrative for some lawyers as they would process thousands of claims by settling for a few thousand dollars a claim.  Few cases ever went to trial.  The lawsuits did get the word out to many that there could be consequences for illegally downloading a song, but, it was a public relations disaster and the music industry shifted its strategy away from filing thousands of lawsuits against individual copyright infringers.

The movie industry, for the most part, was able to sit along the sidelines and watch because unlike songs, it was difficult to share the large files that movies demand.  But, with more efficient technology to transfer large files and greater Internet bandwidth available to everyone, more and more people are illegally downloading entire movies.

That some in the movie industry are taking action is not a surprise.  What is a surprise is that some independent film makers through the U.S. Copyright Group, a business operated by a law firm, appear to be following the music industry’s now abandoned response of filing batches of lawsuits against individuals who it said were infringing their copyrights by downloading music files illegally.  The Motion Picture Association of America, International Film & Television Alliance and the large studios have not adopted this strategy, but are said to be taking a wait-and-see attitude.

This strategy may work for pursuing those who download porn films as there is not likely to be much outcry about the lawsuits — I imagine the accused will be more eager to settle just to keep one’s name out of the public.  Also, it is doubtful that these studios particularly care if they receive bad publicity and may even crave any publicity at all.  Likewise, the law firm’s private company can process thousands of alleged infringers on a contingency-fee basis and make a tidy profit.  Supposedly, a company in Europe was able to recover $800,000 this way.

But, I don’t see the mainstream movie industry moving forward with this strategy.  The movie industry has had the benefit of watching the music industry and saw what has worked and has not worked.

Don’t get me wrong.  The movie industry has every right to go after those who infringe their copyrights, but I suspect that it will more likely follow the music industry’s current strategy of working with Internet-service providers rather than joining in filing lawsuits against individual copyright infringers.

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If Mr. Tenenbaum Beats Sony & The RIAA, Do Artists & Other Creatives Lose?

“I don’t want to know the law.  Give me your best, bad argument.”  This was the critique of one of my first memorandum that I drafted after leaving the world of federal law clerks and joining the world of large law firms.

And so it is with Joel Tenenbaum.  Mr. Tenenbaum admittedly downloaded songs (30 were at issue although it appears he downloaded closer to 1,000 songs) from a peer-to-peer network, ignored warnings from the plaintiff, his dad, friends and the university that he attended to stop downloading songs.  He also switched servers as they were shut down because of the copyright infringement.  On top of that, despite getting a sympathetic judge, the judge and at least one commentator considered his legal counsel to be a disaster.  If true, Mr. Tenenbaum did not have much upon which to hang his hat on appeal.

Except for that pesky $675,000 damage award that the judge reduced to $67,000.  The statute provides that the jury was entitled to award the plaintiffs between $750 to $150,000 for each infringement because Mr. Tenenbaum was considered a willful infringer.  The amount of the award against an individual for copying and distributing songs makes for exciting headlines if you ignore that Mr. Tenenebaum acted willfully.  I think this is where appellate counsel for Mr. Tenenbaum made it’s “best, bad argument.”

I say it is his best argument because the facts, i.e. Mr. Tenenbaum’s actions, work against him, the law is not in his favor and he may not have preserved important points for appeal.  All he likely had left to argue was the amount of the award.

In essence, his counsel argued on Monday that the copyright statute does not specifically provide for statutory damages against individuals who are not seeking to make a profit (non-commercial users).  Because there are no cases against a non-commercerial user, Mr. Tenenbaum argues that Congress could not have had non-commercial users like Mr. Tenenbaum in mind when it authorized statutory damages of up to $150,000 against willful infringers.  You can listen to the oral arguments before the First Circuit here.

The reason why I believe the argument will fail and why his best argument is still a bad one, is that the statutory language and the legislative history don’t support the argument.  The statute simply does not distinguish between “commercial” and “noncommercial” users.  Nor are there any definitions in the copyright statute to define the two.  Likewise, the history of the legislation that raised the statutory damages for willfulness to $150,000 shows that Congress was aware that the Internet was a game-changer in terms of enforcing copyrights.

It is true that very high awards could result if Mr. Tenenbaum willfully infringed 1,000 songs and the jury determined that each willful infringement was worth $75,000.  But, as the Department of Justice argued, if the award is too high, then the court has the ability to reduce damages to an appropriate amount through remittitur. And the court did reduce the award.  One could argue whether the award is still too high, but that argument goes to whether or not Congress made bad policy — there just doesn’t seem to be a convincing constitutional argument that the statutory scheme should only apply to a subset of those who infringe copyrights.

If Mr. Tenenbaum’s arguments win, then are those who work to create paintings, music, literature, plays, photographs, computer programs and other works nearly powerless to pursue those who knowingly infringe their works because the infringer was not a business or otherwise trying to make money from the infringement?  The copyright owners could always seek their actual damages, but is that enough?  What do you think?

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So You’re An Artist? Time To Learn Copyrights, Contracts & Business Formation.

There is the saying about the man who one night dreamed in sequences of five. Five swings, five trees on a hill, five people running for mayor . . . .  Throughout the rest of the day, he wondered what the dream meant because certainly the number 5 in his dream meant something.  Then, all it once, it came to him. He hurried down to the racetrack and arrived precisely at 5:55 — just in time to bet on the fifth race.  He ran to the fifth window and placed all the money he had on him ($55.55) on the fifth horse. He watched the race with incredible anticipation and as the horses crossed the finish line he looked up at the standings board to see that his horse finished fifth . . . .

There are a lot of things in law that are not intuitive and yet, the wrong assumption is one you may regret for a long time.  For example, a common misperception about copyrights is that “if I change X% (you pick the percent, but I’ve heard anywhere between 20-40%) of the original work, I’m safe”, i.e. the original owner can’t successfully sue for copyright infringement.  Yet, the fair use defense to a copyright claim is much more nuanced than that.  Today, artists need to be more than talented.  They also need a firm understanding of the business and legal side of the art world.

I had the good fortune this weekend to spend time talking to some very talented artists about the misperception of when someone can use fair use as a defense and other misperceptions at a seminar through the KCArtistsLink.  My session? It was Zen and the Law of Art: business structure, intellectual property, and basic legal issues facing artists.  Certainly not as sexy as the latest printing technique or tricks to quickly create musical loops.  Yet, the Beatles need to wait until 2018 before they can begin to reclaim the copyright in some their songs (longer for others) and many other artists have run into problems over one or more of these issues.

If you are an artist, look to join a Volunteer Lawyers and Accountants for the Arts organization which put on low-cost or free workshops and can put artists in touch with a network of lawyers and accountants.  (Disclaimer:  I’m a board member of the KCVLAA). If there isn’t a VLAA near you, look for other local organizations that serve artists like KCArtistLink, or join an organization that serves your specialty like the Professional Photographers of America.  However you decide to do it, take a workshop or two to learn the business and legal side of creating and selling your art.  Once you learn some basics, you can focus again on creating new and exciting art!

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Cat’s Don’t Talk, But A False Advertising Lawsuit Says Plenty

It is not every day that news about a false advertising law suit between the leading sellers of cat litter generates much interest outside of the feline trade industry.  Church & Dwight (the makers of Super Scoop) claims that television ads which show cats rejecting the Super Scoop cat litter in favor of Clorox’s Fresh Step cat litter are disparaging.  The law suit created quite a buzz in the media and even the Wall Street Journal couldn’t resist a pun or two about the case.

One commenter opined that Church & Dwight’s law suit was ridiculous and qualified as an “exceptional” case under the Lanham Act to warrant the award of attorney fees to the makers of Fresh Step.

But, will the case be dismissed as quickly as the commentator suggests? The Lanham Act provides for a cause of action for a false or misleading description or representation of a product. To prove the claim, the makers of Super Scoop will need to prove:

  • the ad was false or misleading;
  • that it was material in its effect on buying decisions;
  • that there is a connection with interstate commerce; and
  • the ad actually or likely will injure the plaintiff.

The key is what the consumer takes away from the ad. If the television ad simply said:  “We think your cat will agree that Fresh Step is the best cat litter anywhere in the universe ” then the commentator might have a better argument that a judge or jury would find the ad is sheer puffery and the false advertising claim should fail.

But, that’s not what the ad said.  Watch the television ad for yourself to see if you agree with the plaintiff’s argument that the entirety of the ad goes beyond puffery and makes or implies claims as to specific characteristics of the product.  The plaintiff argued in the Complaint that:  “The Clorox advertisements are unambiguous that the judges of whether Fresh Step is superior at eliminating odors are cats, not people. . . .  But cats do not talk, and it is widely understood in the scientific community that cat perception of malodor is materially different than human perception. . . . It is not possible scientifically to determine whether cats view one substance to be more or less malordorous than another substance.”

When the television ad flashed the phrase: “Based Upon Lab Tests”, it became a lot more difficult for Clorox to argue that the claims are puffery. Instead,  Judge Deborah Batts will likely focus on whether Clorox’s tests of eight cats were sufficiently reliable to permit a consumer to conclude with reasonable certainty that the results show that cats prefer Fresh Step.

Who do you think wins?

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Some Answers Are Not So Hard In The Copyright Debate. Or Are They?

One of my favorite sports columnists is Joe Posnanski who writes for Sports Illustrated and periodically, for the Kansas City Star.  But, as insightful and funny as he is about sports and life, he’s not the first place to turn for intellectual property issues.  I don’t think Posnanski would disagree.

So why am I reading a copyright article written by one of my favorite technology columnists, David Pogue?  I guess that I can’t help myself.

One of Pogue’s posts, “No Easy Answers In The Copyright Debate” highlights the never-ending debate about whether it is okay to download someone’s creative work without their permission.  The blog post described a song writer’s efforts to stop people from downloading his sheet music for free.

The song writer, Jason Robert Brown, was frustrated by the thousands of people who were trading his work for free when he was trying to make his living by selling the sheet music. His correspondence with one teenager who had a different view is not only an interesting read in that it highlights many of the arguments made by both sides of the debate, but also sheds some light on the cultural issues as well.  A post by Digital Society provides another view supporting the song writer.  But, Pogue’s post raises one argument that I had not heard before.

In the post, he quotes a classical pianist who justifies his downloading of sheet music without permission as an effort to preserve works that would otherwise be lost to the ages of time.  Of course, anyone could justify illegal downloading on this basis.  Nobody would have to honor a copyright if all that he had to say was that his intentions were pure and he was simply acting as his own Library of Congress.

Yet, Pogue does end the post with an interesting question:  Is digital piracy justified if it is difficult or impossible to figure out if the item is for sale?  I think another way of asking the question is  should you be able to use a work if the copyright owner cannot be found?

I don’t think one gets to use a work for free just because it is difficult or even impossible to find the artist or copyright owner of the work.  It is frustrating, however, when a work does not identify the copyright owner.  Unfortunately, after several attempts, Congress has not been able to agree on Orphan Works legislation – resolving how someone can use a copyrighted work when its owner cannot be realistically determined.

The failure of Congress to act doesn’t justify violating a copyright, but does this debate suggest the need to revisit passing Orphan Works legislation?

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Less Hope For Shepard Fairey In Obama Hope Poster Case?

If the street artistShepard Fairey, initially thought the copyright litigationover the Obama Hope poster would be a good-natured pillow fight with the Associated Press, he probably knew that it was going to get ugly once it came to light that he was less than truthful to the court in representing which photograph he used to create the Hope poster.

Mr. Fairey sued the AP last year asking the court to declare that the Hope poster does not infringe any of the AP’s rights.  The AP countersued for copyright infringement and others have joined or been brought in as well.  It is now getting uglier for Mr. Fairey.  An earlier post describes Mr. Fairey’s confession, but the saga continues. The court has shown that it is receptive to allowing discovery not just on which photograph Mr. Fairey actually used, but also on making him name names.

Specifically, Judge Alvin Hellerstein ruled on April 5, 2010 that Mr. Fairey must disclose who was involved in destroying documents in an effort to hide how the Hope poster was actually created:  “Plaintiffs shall disclose the identities of those who did the deletion and destruction and of those who knew about such deletion and destruction.”  Mr. Fairey will have to disclose who performed the destruction, who supervised it and who knew about the destruction.

The court’s April 5th order itself may not elicit much excitement, but it raises several questions:  why did the court agree to allow discovery on the destruction of documents?  Although documents bearing on the creation of the Hope poster would be relevant, Mr. Fairey has already admitted that he used the photograph that the AP believed he used.  Does the discovery go to potential sanctions against Mr. Fairey and others who assisted in the destruction of documents?  If so, does the court intend to impose sanctions on top of the related criminal investigation?  Is such discovery relevant to undercut Mr. Fairey’s fair use defense?  Neither the court’s order nor the joint letter that the parties submitted to the court address the relevancy of the discovery.

Regardless, the potential that others may have helped destroy documents on Mr. Fairey’s behalf means that we may have more twists and turns to come in this case.

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Supreme Court Rules On Copyright Registration: What Does It Mean?

previously wrote that I was hoping the United States Supreme Court’s decision in Reed Elsevier Inc. v. Muchnickwould finally answer the question of whether copyright registration is necessary for courts to have subject matter jurisdiction. We now have a ruling – it is not jurisdictional — but the impact of the decision is somewhat unclear.  Certainly, some will cheer (can anyone say Google?) the decision, but for the vast majority of copyright cases, will the decision matter? Maybe, but probably not.

The courts have been split as to whether to dismiss copyright cases for the lack of subject matter jurisdiction if the plaintiff has not registered its copyrighted works. The Supreme Court ruled that registration is not jurisdictional because Section411(a) did not “clearly state” that it is jurisdictional.

Instead of jurisdictional, registration is a precondition to filing a lawsuit or similar to a “claim-processing rule.” In other words, a plaintiff needs to comply with the requirements of the statute to proceed, but the failure to do so does not deny the court subject matter jurisdiction.

Presumably, if the plaintiff sues for a work that is not yet registered, a defendant will now bring a motion to dismiss the claim for the failure to state a claim. If you are in a jurisdiction that previously dismissed cases for lack of subject matter jurisdiction, a court may likely still dismiss the case although the reason for dismissal will change to “failure to state a claim.” Only the label or rationale change. Likewise, if you are in a jurisdiction that took a different approach to registration, the court will likely continue to apply that approach.

The instances of where it does matter are probably few and far between. The background of the Reed Elsevier case illustrates at least one category of cases, i.e. settlements of certain class actions, that will feel the impact of this case.

In Reed Elsevier, a group of publishers who wanted to publish certain works digitally reached a settlement with almost all of the members of a class of freelance authors – some of whose works were registered and some whose were not. When the district court approved the settlement, some freelance authors objected and appealed. The Second Circuit held that the district court did not have authority to approve the settlement because some of the works were not registered. The Supreme Court reversed and in effect, allowed the district court to approve the settlement even though some class members never registered their copyrights.

Sounds pretty narrow. Who else would care? The thousand-pound gorilla of copyright – Google. If the Supreme Court had said that a court cannot approve a settlement of copyright claims whose class included unregistered works, how would have changed the proposed Google Books Search Settlement?  If the final settlement proposal does not include unregistered works (except foreign works), then perhaps not much.  But, does anyone think that the book search is the last expansive project Google will take on?  I doubt it.

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