Copyright Law Blog: Exclusive Rights

Bear-themed pacifier holders not substantially similar, 11th Cir.

Shourin Sen - 10 August 2010 – 9:00 am

Baby Buddies, Inc. v. Toys “R” Us, Inc. (10th Cir. 2010)

The Eleventh Circuit (Dubina, Bowen, Tjoflat writing) issued an opinion a couple of weeks ago that addressed whether two bear-themed pacifier holders were substantially similar. Baby Buddies produced a pacifier holder (on left in image) that sold over a half-million units at Toys R Us.

Baby Buddie (left); Toy R Us (right)

The retailer decided to market a themed pacifier holder under its own label, and enlisted a consultant to design several different holders. In communications to a subcontractor the consultant stated that “I need a new animal design. [Toys R Us] likes [Baby Buddies'] bear but I do not want to produce the same exact thing. Can you please work on a similar design?” The resulting product is the pacifier holder on the right.

Baby Buddies brought suit alleging, inter alia, infringement of the copyright in its pacifier holder. On October 3, 2008, the Middle District of Florida granted Toys R Us summary judgment on the infringement claims, finding that no genuine issue of material fact existed as to the fact that the two pacifiers were not substantially similar.

The Eleventh Circuit affirmed:

Overall, these features combine to create distinctly different bears from an aesthetic perspective. The Baby Buddies bear is smaller, is more finely sculpted, and has more clearly defined anatomical features such as a muzzle, toes, and paw pads, giving it a more refined appearance overall. The Toys R Us bear, with its larger size, fewer details, and cruder representations of anatomical features, has a distinctly abstract, cartoon-like, and almost bloated appearance. No properly instructed juror could find these bears substantially similar.

The Circuit commented:

We step back for a moment to observe that if someone copies the particular expressive elements from Baby Buddies’s pacifier holder, Baby Buddies can of course invoke copyright protection and try an infringement case before a jury. That is not this case, though. Baby Buddies is trying to invoke the protection of the copyright laws to prevent a competitor from using the idea of putting a sculpted teddy bear and a color-coordinated bow on a ribbon tether to create an aesthetically appealing pacifier holder. But this type of creative competition is entirely consistent with the copyright laws. Baby Buddies has the right to prevent others from copying its creative expression, but not from expressing similar ideas differently. If Baby Buddies has found the most appealing way to express its idea, the marketplace will reward it accordingly.

The mystery of the copyright deposit piles

Shourin Sen - 26 July 2010 – 9:00 am

Filed under: Registration

A couple of months ago, I posted a picture from the Library of Congress Prints and Photographs Division. The picture, from the late 1800s, shows piles of copyright deposit materials on the floor in the Thomas Jefferson Building.

At the time, I joked about whether this was evidence of a registration backlog at the Copyright Office from a century ago. This turns out (drum roll) not to be the case.

I had the good fortune to be in Washington, DC for a short stretch this month. I took a brief trip to the National Archives in College Park, MD to look over some of the old files on Department of Justice copyright prosecutions. Among the various documents was a memo from H.L. Godfrey, an attorney at the DOJ in the late ’40s and early ’50s. I’ve included the memo below, which is somewhat interesting in it’s own right. The real gem, at least for solving this mystery, was the memo’s citation to hearings by the Librarian of Congress from early in the 1900s.

Librarian Of Congress from “Copyright Hearings — Bills S. 6330, S. 2499, S. 2900, H.R. 19853, H.R. 243, H.R. 11794–June 1906, December, 1906, March 1908,” pages 14 and 15:

The other matter is that of’ copyright deposits, the volume of these is now prodigious. During the last year alone the articles deposited exceeded 200,000 in number. A large proportion of these are of great value to the library and are drawn up into it. The rest remain in the cellar. The accumulations in the cellar now number a million and a half items. Many of these would be useful in other Government libraries; for instance, medical books in the library of the Surgeon General’s Office. Some of them might be useful in exchange with other libraries. A few might have value in exchange with dealers. The remainder are a heavy charge upon the Government for storage and care. The ought to be returned to the proprietors of the copyright if they want them, or, if not wanted, destroyed. [Emphasis added.]

So there we have it. The piles of deposits were apparently post-registration documents in which the Library of Congress had no interest — a turn of the century collection of bad art that wasn’t quite good enough to make the cut. So, so sad.

The solving of one mystery just leads to another. What happened to all of the works?

This has to be the greatest collection of bad art in the history of humankind. Did the Library light a giant bonfire and dance around the works bidding them adieu? Did they carry them to the trash in bags, one by one. Did it take years, months, decades?

Are they still there?

Someone out there must know the answer to this little mystery.

Inquiring minds want to know.

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Massachusetts Act on automobile diagnostic and repair info

Shourin Sen - 25 July 2010 – 9:00 am

Filed under: News

Last week the Washington Post reported on a bill, Sen. No. 2268, that is making its way through the Massachusetts legislature (included below). The Bill would make car companies provide independent owners and repair shops with the same information and tools that they make available to their authorized dealers, on the same terms.

The Post portrays the Bills as a conflict between “mom-and-pop repair shops” and manufacturers such as Honda who have “vigorously opposed the right-to-repair bill on the federal level and in other states, such as New Jersey and Arizona.” A spokesman from a car trade group, in opposition, claimed the Bill would enable aftermarket parts companies to make “inexpensive parts in foreign countries without incurring research and development costs.”

The Bill would grant car owners and repair shops the right to bring an M.G.L. 93(a) (consumer protection and unfair trade practices) claim against an auto manufacturer for treble damages and attorneys’ fees if they do not make the following available on a “reasonable and nondiscriminatory basis and cost as compared to the terms and costs charged to an authorized dealer:

The same information for the diagnosis, service, or repair of any motor vehicle that the manufacturer makes available to its authorized dealers and authorized motor vehicle repair facilities.

The same tools and software capabilities, including wireless capabilities, related to the diagnosis, service, and repair of a motor vehicle that the manufacturer makes available to an authorized dealership or an authorized motor vehicle repair facilities of the motor vehicle.

Car companies would also have to provide aftermarket tool companies with information that would allow them to manufacture tools with the same functional characteristics as those tools made available by the manufacturers to authorized dealers or to an authorized motor vehicle repair facility — I assume this means schematics.

Comments:

I find the mechanics of this bill fascinating, though I’m not sure what type of affect it will have, if any. The Supreme Court has found that offering only a collection of movies to theaters violates antitrust laws. Loews, Inc. v. U.S., 334 U.S. 131 (1948) (“The antitrust laws do not permit a compounding of the statutorily conferred monopoly.”) That is, an intellectual property rightsholder is not insulated from claims targeting anticompetitive behavior just because they Copyright or Patent Acts grant owners exclusive rights. So, there does not appear to be an immediate preemption issue.

The requirement that car companies make information available to aftermarket tool companies is also interesting. One wonders if there will be many copyright suits brought targeting potentially infringing goods that were manufactured from car company specs. We may end up seeing a lot of cases on whether a specific part is a useful article that does not merit copyright protection.
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Announcing copyright termination calculator and website

Shourin Sen - 18 May 2010 – 11:18 am

Filed under: Meta, Termination

Dear Readers,

I recently launched a sister website http://copyrighttermination.net that centers on copyright grant terminations, as the title suggests. The gem of the site is a copyright termination calculator, the design of which took more than a little time and a large amount of programming help. (Thanks!) The calculator will run a user through the questions and permutations necessary to evaluate when and under what conditions and statutory provisions a copyright grant may be terminated.

The program does not cover all the steps necessary to evaluate a potential termination. I haven’t tried to address the technical issues involved with accessing whether a majority of the author or authors is present to serve a valid termination notice.

The calculator does what it does well, though, and should be substantially more useful than some of the other similar programs on the internet. It cross references statutes and covers remote permutations such as the Copyright Office’s recent comment request on how to handle grants that were made before January 1, 1978 on works that were completed after January 1, 1978.

If any of you have any requests, suggestions or corrections, please feel free to email me or leave them in the comments.

SDNY finds sending copyright termination notices subjects individuals to personal jurisdiction

Shourin Sen - 18 May 2010 – 9:00 am

Filed under: Personal Jurisdiction, Termination

Marvel Worldwide, Inc. v. Kirby (S.D.N.Y. 2010)

Two children of a comic book illustrator sent a series of copyright grant termination notices to Marvel Comics. Marvel contended that the illustrator’s drawings were works made for hire, and as such, the children were not able to terminate the grants. After unsuccessful negotiations, Marvel brought suit seeking a declaratory judgment finding that the works were made for hire. The two children moved to dismiss the New York action arguing that the court lacked personal jurisdiction, and filed a second suit in the Central District of California.

New York’s long arm statute provides that a party is subject to personal jurisdiction if it “transacts any business in the state or contracts anywhere to provide goods or services in the state” if the cause of action arises from the transactions or business. CPLR 302(1). The S.D.N.Y. (McMahon, J.) found that the two children had transacted business in the state by virtue of sending the termination notices. According to the Court:

Defendants dispatched a multitude of self-executing Termination Notices to Marvel entities and licensees in New York in September 2009. This constitutes “transacting business” under section 302(a)(1). By virtue of having mailed the transaction notices to Marvel [the two Kirbys who live in California] “project[ed] themselves into New York and the local stream of commerce.” John Wiley & Sons, Inc., 2009 WL 1766003 at *5.

Costco v. Omega and the definition of importation

Shourin Sen - 26 April 2010 – 10:00 am

Filed under: Distribution Right, First Sale, Supreme Court

As I mentioned in my previous post on Costco v. Omega, I would not be surprised if the Supreme Court’s opinion addresses issues that are outside of the narrow confines of the question presented. One of the issues that the Court may address is the definition of importation in Section 602 of the Act. Omega alleged that Costco committed copyright infringement directly under Section 106(3), and through importation of the watches under 602(a), which invokes the Section 106(3) exclusive right of distribution.

The interesting thing about this play is that Costco didn’t import the watches under a traditional use of the term. Costco acquired the watches from a third-party who brought the watches into the United States. The Copyright Act does not define importation or exportation, or distribution for that matter. According to Omega’s Renewed Motion for Interlocutory Summary Judgment:

Any party in the chain of distribution may be held liable for copyright infringement otherwise a distributor could avoid liability simply by using a straw to import the unauthorized copies. UMG Recordings, Inc. v. Disco Azteca Dist., Inc., 446 F. Supp. 2d 1164, 1173 (E.D. Ca. 2006) (“Disco Azteca”), citing Columbia Broadcasting Systems, Inc. v. Scorpio Music Dist., Inc., 569 F. Supp. 47, 48-49 (E.D. Pa. 1983) (“CBS”). Lack of intent or knowledge of the infringement is no defense to infringement. Educational Testing Service v. Simon, 95 F. Supp. 2d 1081, 1087 (numbered paragraph 33) (C.D. CaL. 1999). See also Parfums Givenchy, Inc. v. Drug Emporium, Inc., 38 F.3d 477, 482 (9th Cir. 1994) (“Parfums Givenchy”).

In C & C Beauty, the plaintiff owned a copyright in a two-dimensional artistic design on the box containing Amarige perfume which was manufactured abroad. 832 F.Supp. at 1381. Defendant was an importer of grey market products who imported and distributed the perfume products including the box containing the copyrighted design. Id. at 1382. The court recognized the validity of the plaintiffs copyright based on the prima facie evidence of the copyright registration. Id. at 1383. The Court looked at the pleadings and affidavits and found no question of fact regarding the actions of the defendant importing and distributing the perfume .
with the copyrighted box acquired abroad, without plaintiffs consent. Id. The Court found the test for infringement under § 602(a) had been met. ¡d. (Parfums Givenchy is based on the same set of facts as C&C Beauty. Id. at 1382.)

The Ninth Circuit did not address the issue of whether the receipt of unauthorized imported goods was an importation because it was outside of the scope of the appeal. The District Court had found that all of the claims were barred by the first-sale doctrine, sidestepping the importation issue.

I think raising the argument was a strong tactical play regardless of whether it’s successful. By arguing that Costco’s actions were an importation, Omega forced the District Court, Ninth Circuit and Supreme Court to evaluate how the meaning of Section 109 is informed by Section 602.

Weekly arts and IP Events: April 26-May 2

Shourin Sen - 26 April 2010 – 9:00 am

Filed under: Events

IP, Entertainment and Art Law Events

When	What

April, 2010
April 26, 2010 7:00 pm 9:30 pm	St. Louis, MO: Career Planning: The Sequel [link] 6128 Delmar, St. Louis, MO
April 27, 2010 5:30 pm 7:30 pm	Houston, TX: Estate Planning for Artists Seminar [link] TALA is pleased to offer an estate planning for artists seminar presented by Mary Galligan of Galligan and Manning. The session will be held on Tuesday, April 27, 2010 from 5:30 pm to 7:30 pm at the Caroline Collective space at 4820 Caroline Street, Houston, TX 77004. To register, please email < info[at]talarts.org >. Space is limited. Caroline Collective 4820 Caroline Street Houston, TX 77004
April 28, 2010 1:00 pm 2:30 pm	Webcast: Death of Major Label Distribution: Birth of DIY [link] Part of the ABA Forum on the Entertainment and Sports Industries 2010 Teleconference Series. Henry W. Root (Moderator), Esq., Partner, Lapidus, Root, Franklin & Sacharow, LLP, Santa Monica, CA Todd W. Brabec, Esq., Author, “Music, Money & Success” and Entertainment Industry Consultant, Los Angeles, CA Dara L. Gelbtuch, Esq., Manager of Digital Business Development, Sony Music Entertainment, New York, NY J Martin Lett, Esq., Partner, Register \| Lett LLP, Atlanta, GA Webcast/ Teleconference
April 28, 2010 4:00 pm 7:00 pm	Pittsburgh, PA: So You Wanna’ Be a 501c3? [link Setting up a 501(c)(3) involves a lot more than you may think. It’s a tricky and costly process and it might not be the best choice right now. Learn about the incorporation process and alternatives that may be more appropriate. You’ll learn about nonprofit governance and management issues and legal requirements. You’ll leave this class with homework, information and an outline to guide you through the next steps. Presenters Bob Moll, Executive Service Corps Jack Owen, Esq, Rhoades & Wodarczyk, LLC Yvonne Van Haitsma, MSW, ESC Program Coordinator, BCNM Fee: $65 (Early bird $55 if paid by April 21) - Consider this the first capital expense toward making your arts dream a reality! Please register online or by calling 412.397.6000. Bayer Center for Nonprofit Management Regional Enterprise Tower, 425 Sixth Avenue, Ste 2610
April 28, 2010 6:00 pm 8:00 pm	Miami, FL: What’s New and Next with Miami-Dade Art in Public Places [link] Public Places and tips for submitting a successful application. A LECTURE AND Q&A FEATURING BRANDI REDDICK, ARTISTS AND COMMUNICATIONS MANAGER FOR ART IN PUBLIC PLACES. Miami-Dade Art in Public Places program implements site-specific art installations in civic areas at various sites throughout Miami, including Adrienne Arsht Center for the Performing Arts, fire and police stations, Port of Miami, libraries, parks, Miami International Airport, public housing developments, Metrorail and Metromover stations, and community health centers. These collaborative, innovative projects involve the thinking of artists, architects, engineers, historians, and landscape architects. About the Presenter Brandi Reddick, Artists and Communications Manager for Art in Public Places, coordinates the program’s management of artists and communications, from advisory committee and artist orientation meetings to public art project publicity and publications. Please join LegalArt as Brandi discusses recent public art commissions, the Call to Artists Process, and an overview of upcoming opportunities for local artists, including the Verde Gardens Affordable Housing Development, the Caleb Center Courthouse, the Kendall Soccer Park and the Northeast Branch Library, among others. EMAIL legalartprograms[at]gmail.com TO REGISTER. Special thanks to our host SPINELLO GALLERY SPINELLO GALLERY 155 NE 38th Street, No. 101 Miami, FL 33137
April 28, 2010 7:00 pm 8:30 pm	Santa Monica, CA: NEGOTIATING THE PRODUCER AGREEMENT DESCRIPTION: The producer is considered to be one of the key decision makers in the feature film world. The producer’s responsibilities are often divided into two roles: the “creative producer” and the “line producer.” . . . Understanding the producer agreement is an essential knowledge set for producers, directors, writers and anyone interested in the film business. This workshop will outline and discuss the basic terms of the producer agreement along with important issues to consider when negotiating the deal. SPEAKER: Akua Boyenne, Esq. is a Los Angeles-based entertainment attorney specializing in motion picture and television transactions. Her clients include award-winning and up-and-coming writers, directors, producers and production companies that work in both the studio and independent systems. ADMISSION: General Admission: $20, Members of CLA, Santa Monica Residents and Co-sponsors: $10, Senior Citizens & Students: $5! REGISTRATION: Call CLA at (310) 998-5590, or email Angela (please include your contact info and specify the workshop date(s)) at: clasocaled [at] aol.com. Ken Edwards Center, 1527 Fourth Street, Santa Monica, CA 90401
April 28, 2010 7:00 pm 8:30 pm	San Francisco, CA: Setting-up a Simple Bookkeeping System for Creative Artists [link] This workshop will explain how to set-up a simple and effective bookkeeping system for creative artists. With Gabriela Lujan, C.L.A.’s Business Manager and Bob Pimm, C.L.A.’s Chief Learning Officer and Director of Legal Services. Fort Mason Center, Building C, Room 265
April 29, 2010	NY, NY: 26th Annual Joint Patent Practice Seminar [link] Keynote Speaker, Honorable Pauline Newman, Circuit Judge United States Court of Appeals for the Federal Circuit $420.00 Registration Fee-if payment is received by April 16, 2010 $450.00 Registration Fee-if payment is received after April 16, 2010 The Hilton New York, Grand Ballroom, 1335 Avenue of the Americas (between W53rd & W54th), New York, NY
April 29, 2010 12:30 pm 1:30 pm	Cambridge, MA: Taming Multiplicity in the Post-Print Era: Law Librarians, Legal Scholarship, and Access to the Law [link] Taming Multiplicity in the Post-Print Era: Law Librarians, Legal Scholarship, and Access to the Law Richard A. Danner, Senior Associate Dean for Information Services and Archibald C. and Frances Fulk Rufty Research Professor Of Law at Duke Law School RSVP requested http://tinyurl.com/dannertalk Sponsored by the Harvard Law School Library, the Office for Scholarly Communication, and the Berkman Center Professor Richard Danner has been at the forefront of the open access to legal scholarship movement and has also recently written about the role of academic law librarians in supporting faculty scholarship. He will discuss “Taming Multiplicity in the Post-Print Era: Law Librarians, Legal Scholarship, and Access to the Law”. Lamont Forum Room, Lamont Library, Harvard Yard Harvard University Cambridge, MA 02138
April 29, 2010 1:00 pm 3:00 pm	Seattle, WA: WRITERS & FREE SPEECH: IMPORTANT FIRST AMENDMENT CONSIDERATIONS [link] Does the First Amendment permit you to write freely whatever comes to your mind? You may decide not to worry about what others think of the substance of what you write; at what points and for what reasons should you be seriously concerned you might be sued? Do the circumstances change depending on whether you write fiction or news, in-print articles or online blogs? Join attorney Signe Naeve and Washington Lawyers for the Arts for a discussion about how the First Amendment applies to what you write; The discussion will include privacy laws, slander, libel, copyright and trademark, fair use and parody, and when the content of your writing and the forum in which you publish may have legal implications. FEE: In advance: $40 attorneys and paralegals; $15 artists and students At the door: $45 attorneys and paralegals; $20 artists and students Want to attend all three? Pay with a check in advance to the WLA office (701 5th Ave, Ste 4100, Seattle, WA 98104), get three for the price of two: $80 attorneys and paralegals; $30 artists and students. REGISTRATION: To register, click here to visit Brown Paper Tickets online, or call 800.838.3006. To pay at the door, RSVP to Washington Lawyers for the Arts at 206.328.7053. Please note that the event is subject to cancellation; visit thewla.org or call 206.328.7053 for more information. CLE Credit: 2.0 CLE credits pending Signe Naeve: Following several years of practicing intellectual property and media litigation at Perkins Coie LLP in Seattle, Signe is now the Associate Director for the Graduate Program in Intellectual Property Law and Policy at the University of Washington School of Law where she teaches First Amendment and Intellectual Property. Richard Hugo House, 1634 11th Ave, Seattle, WA 98122
April 29, 2010 1:00 pm 2:30 pm	Webcast: Hollywood Calling: Transactions in the Adapting a Book into a Film [link] Part of the ABA Forum on the Entertainment and Sports Industries 2010 Teleconference Series. Eric S. Brown, Franklin, Weinrib, Rudell & Vassallo, P.C., New York, NY Michael I. Rudell, Franklin, Weinrib, Rudell & Vassallo, P.C., New York, NY Webcast/ Teleconference
April 29, 2010 5:30 pm 7:00 pm	Nashville, TN: Gallery Relationships: A Legal Perspective for Visual Artists Ever thought about showing your artwork in a gallery but didn’t know where to start? This seminar will discuss legal issues artists should know about when showing with a gallery, including the nature of the artist-gallery relationship, inventorying artwork and consignment agreements. This program is a must for every visual artist and attorneys who represent them! BONUS: Stay after the program to visit the Frist Center galleries, which are open late on Thursdays. The Frist is graciously providing complimentary admission (and free parking) for seminar attendees! Reserve your spot today by RSVPing to: VLPA [at] abcnashville.org or (615) 743-3055. Cost: $10 – ABC Members, $15- Non Members CLE (1.5 hours): $50 – ABC Attorneys, $75 – Non Member Attorneys Frist Center for the Visual Arts (919 Broadway)
April 29, 2010 6:00 pm 8:00 pm	NY, NY: CopyRight and Risk in Film Practice CLE: The Copyright Society of the U.S.A. is a NY CLE Approved Provider. This course is Transitional and Nontransitional, and provides 1 Credit (based on 60 minutes). Please join us for a free, jointly-sponsored evening of cocktails and film discussions on Thursday night, April 29th, 2010 from 6-8 PM at the Benjamin N. Cardozo School of Law. Whether you are young or simply young-at-heart, the Young Professionals Division of the Copyright Society of the USA and the New York State Bar Association’s Entertainment, Arts and Sports Law Section are excited to invite you to come, network and hear from some experts in the film industry. And, thanks to the generous support of the Cardozo Intellectual Property Society enjoy an open bar and snacks as well. CopyRight and Risk in Film Practice This panel will provide a look into business and copyright aspects of the film production, finance and distribution. Topics may include mitigation of production and distribution risk, chain-of-title, errors and omissions insurance, and determination of copyright infringement damages. The panel may also address the controversy surrounding the proposed Cantor Exchange which, if approved by federal regulators, will provide a platform for trading of derivatives based on domestic box office receipts. SPEAKERS: We are privileged to present respected practitioners Ezra Doner and Dennis Angel and our moderator Professor Derek Bambauer (Brooklyn Law School). To attend this exciting panel discussion, please complete the registration form, and mail or fax it to: The Copyright Society of the U.S.A., 352 7th Ave., Suite 739, NY, NY 10001, Fax # (212) 354-2847, by Tuesday April 27th. We look forward to seeing you on April 29th! The Benjamin N. Cardozo School of Law, 55 Fifth Avenue, New York, NY
April 30, 2010 Until May 2, 2010	Napa, CA: SFIPLA: Spring Seminar 2010 [link] Meritage Resort and Spa, 875 Bordeaux Way, Napa, CA 94558
April 30, 2010 Until May 1, 2010	Cambridge, MA: ROFLCON II [link] Another two days and two nights of the most epic internet culture conference ever assembled. Informed commentators suggest that this may be the most important gathering of humanity since the fall of the tower of Babel. And yes, we’re still looking to get Goatse. The Massachusetts Institute of Technology
April 30, 2010 10:00 am 5:00 pm	NY, NY: Self Defense for Writers and Filmmakers [link] Speaker: Mark Litwak This seminar explains how writers and filmmakers can prevent problems from arising by properly securing underlying rights, and by encouraging the other party to live up to agreements by adding performance incentives, default penalties and arbitration clauses. In the event of a dispute, participants learn what remedies are available to enforce their rights. * 8 New York CLE Credits Available (Professional Practice, Non – Transitional Only) Manhattan, TBA
May, 2010
May 2, 2010 5:00 pm 6:00 pm	Santa Monica, CA: CLA’s Third Annual Artistic License Awards California Lawyers for the Arts invites you to join us for our Third Annual Artistic License Awards event at the William Turner Gallery in Santa Monica on Sunday, May 2nd. We will also be celebrating our 35th year of services to the arts. C.L.A.’s Santa Monica event will honor California First Lady Maria Shriver; U.S. House Representative Diane Watson, founding board member of C.L.A.; Geffen Playhouse for their Education and Outreach Program; law firm Munger, Tolles & Olson and attorney Elsa Ramo for their pro bono assistance to arts and arts organizations; and sculptor Robert Graham (in memoriam). This special event will consist of a reception, silent/live auction, awards ceremony, and music/entertainment program celebrating this year’s honorees. Family, friends, and colleagues are also welcome to join us for this outstanding and festive celebration. Feel free to pass this invitation on to your networks! http://www.mynewsletterbuilder.com/email/newsletter/1410281945 To RSVP, download our reservation form here or call our Santa Monica office at (310) 998-5590. For more information, please visit our website at http://www.calawyersforthearts.org. Invitation to follow for the companion event in San Francisco on Friday, May 14th. Honorees include Speaker of the House Nancy Pelosi, the San Francisco Symphony, law firm Fenwick & West, Rhodessa Jones of Cultural Odyssey, and museum executive Henry Hopkins (in memoriam). William Turner Gallery, Bergamot Station, 2525 Michigan Avenue, E-1, Santa Monica, CA 90404

Attorneys’ fees evaluations in unpublished decisions

Shourin Sen - 23 April 2010 – 9:00 am

Filed under: Attorneys' Fees, Useful Article

Lanard Toys, Ltd. v. Novelty, Inc. (9th Cir. 2010) (unpublished)

The Ninth Circuit recently affirmed a jury decision finding that, among other things, a slingshot was not a noncopyrightable useful article. (H/t Raymond Dowd.) I thought I would briefly address the Circuit’s attorneys’ fees analysis since fees are apparently the topic of the week.

After determining the appropriate defendants to access attorneys’ fees against, the Circuit wrote one sentence on whether the District Court’s granting of fees was appropriate: “An award of attorneys’ fees on appeal is appropriate in this case pursuant to 17 U.S.C. 505, to further the purposes of the Copyright Act — i.e, to protect copyrights and deter infringement.”

If I’m allowed to be nit-picky about an unpublished memorandum issued by an overburdened Circuit, the Copyright Act’s directive is to Promote the Progess of Science. Graham v. John Deere Co., 383 U.S. 1 (1966) (adopting Richard Crosby De Wolf‘s disjunctive reading of the Progress Clause.) The deterrence of infringement is a means to an end, not an end in and of itself. The Supreme Court has noted that attorneys’ fees should be awarded, at the court’s discretion, to encourage “meritous” infringement claims, and to encourage clearly demarcated boundaries of the Copyright Act. Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (reversing the Ninth Circuit and finding that a prevailing defendant cannot be held to a more stringent standard than a prevailing plaintiff in an attorneys’ fee evaluation under the Copyright Act.)

This begs a pair of question: If one of the purposes of awarding attorneys’ fees is to encourage clearly demarcated boundaries, are parties being denied neutral application of the Copyright Act when a Circuit elects to issue an unpublished opinion. How can litigants be rewarded for assisting in the demarcation of boundaries when a Circuit elects to issue an unpublished opinion?

The idea/expression dichotomy in Chinese copyright law

Shourin Sen - 21 April 2010 – 9:00 am

Filed under: Academia

Stephen McIntyre, a 3L at Duke Law School, has posted a nice piece of scholarship on the idea/expression dichotomy in Chinese copyright law. The abstract:

The idea/expression dichotomy, which holds that copyright protection extends only to expression, but not to ideas, is internationally recognized as a basic principle of copyright law. Yet despite the doctrine’s fundamental importance, China has not codified it in its general copyright statute. This legislative failure threatens to undermine the public-oriented goals of copyright and presents a dilemma to Chinese courts, which are not authorized to make or develop doctrine through recognition of judicial precedent.

This Article provides the first in-depth study in English of the idea/expression dichotomy in Chinese copyright law. It demonstrates that, even though the doctrine is not codified, it is widely acknowledged among Chinese academics and regularly applied in Chinese courts. The doctrine has faced linguistic, cultural, and conceptual challenges in China, and early court decisions left much to be desired. Nonetheless, an analysis of recent judicial opinions reveals that modern courts understand the idea/expression dichotomy and apply it in a reasonably coherent and defensible manner. Their exposition of the doctrine is largely, although not entirely, consistent with its underlying purpose of promoting free speech and safeguarding the public domain.

The courts’ relative success in filling this statutory hole suggests that Chinese judges play an underappreciated, but crucial, lawmaking function. This finding in turn raises intriguing questions as to the authority and function of China’s judicial system generally.

Supreme Court grants cert in Costco v. Omega

Shourin Sen - 20 April 2010 – 9:00 am

Filed under: Extraterritoriality, First Sale, Importation, Supreme Court

On Monday (Patriots Day in New England) the Supreme Court granted certiorari in Costco v. Omega. I’ve provided a rundown of the case in late March so I will dispense with the background. A couple of comments on the Supreme Court’s decision to grant cert:

The most interesting part of blogging cases is watching the conversation between the different branches of government and the many layers of our judicial system. I was somewhat surprised when the Supreme Court invited the Solicitor General’s Office to brief cert but upon reflection it made sense. Congress, in enacting the Pro-IP Act, arguably re-framed a core component of copyright law without substantial debate before passage. The invitation by the Supreme Court may have been an attempt to force the Executive to take a position on an issue that was not given discussion before enactment.

To that end, I question whether the Supreme Court’s decision to grant cert in Costco is rooted in forcing debate on the contours of the first-sale doctrine. Oral arguments will provide a spotlight, even if the Supreme Court has no intention of disturbing the Ninth Circuit’s (and all of the other district courts’ that have addressed the issue) interpretation of Sections 109 and 602. If Congress does not amend the provisions in the near future it will likely become a lasting component of American copyright law, given the momentum it takes to pass any law in the U.S. The granting of cert, then, could be an attempt by the Supreme Court to ensure that the contours of the first sale doctrine accurately reflects current Congressional intent before momentum takes hold.

I would not be surprised if the Supreme Court’s opinion contains language on issues that are not directly at bar, such as whether parties can raise 109(a) as a defense in cases involving foreign-made copies so long as a lawful sale has occurred, or about the viability of the defense of copyright misuse.

The Solicitor General’s Office led with the argument that cert should be denied because there was no circuit split, instead of with its statutory analysis. The petitioners made the argument in opposition that the Court should grant cert because there was no circuit split, and unless the issue was addressed post-haste, it would likely become accepted cannon. I made the observation in my previous post on Costco that the Supreme Court appears to grant cert in copyright cases for issues that fundamentally affect the structure of copyright law, and circuit splits play a modest part of the evaluation process. The decision of the Supreme Court to grant cert in Costco provides more support for this contention.

The American Federation of Musicians, which is affiliated with the AFL-CIO, presumably favors the Ninth Circuit’s interpretation that Section 109 does not limit distribution rights in works manufactured outside of the United States. But the Ninth Circuit’s decision, Costco argued, will negatively impact American manufacturing, which I would assume is closer to the core of the AFL-CIO’s lobbying efforts. The AFL-CIO (AFM) elected not to brief on cert. It will be interesting to see if they jump in on merits. A petition could provide a signal of how much, if at all, labor unions are concerned about the Ninth Circuit decision’s possible negative impact on American manufacturing.

Previous posts on Costco v. Omega:

Court Documents: