Copyright Law Blog: Exclusive Rights

Monthly Archives: December 2008

Neil Netanel: The WIPO Development Agenda and Its Development Policy Context

Shourin Sen - 14 December 2008 – 1:56 pm

Filed under Academia

Oxford University Press is publishing a volume titled The Development Agenda: Global Intellectual Property and Developing Countries, now available for pre-order on Amazon. The collection of papers, edited by Neil Netanel, includes works by contributors with diverse backgrounds. As Netanel explains: “Our contributors hale from 14 counties, some developed, some developing, some emerging. They include political scientists, economists, lawyers, historians, policy analysts and diplomats.” Mr. Netanel’s introduction to the collection is posted at SSRN.

More specifically:

Chapter I: The Development Agenda and the International IP Regime: Henrique Choer Moraes & Otavio Brandelli; Daniel J. Gervais;
Chapter II: The Development Agenda in Historical and Institutional Context: Pedro Roffe & Gina Vea, Craolyn Deere;
Chapter III: The Development Agenda: Cautionary Notes from Two Directions: Ruth L. Okediji; Keith E. Maskus;
Chapter IV: Intellectual Property and Development: A Comparative Analysis: Hong Xue; Yi Qian; B. Zorina Khan & Kenneth L. Sokoloff;
Chapter V: Accesws to Medicine: Carlos M. Correa; Sudip Chaudhuri; Fancsco Laforgia, Fabio Montobbio, & Luigi Orsenigo;
Chapter VI: Cultural Industries: Diana V. Barrowclough; Nagla Rizk; Michael D. Birnhack;
Chapter VII: Industry Sturcture, Innovation and Access: John H. Barton; Leonardo Burlamaqui;
Chapter VIII: Intellectual Property and Developing Country Citizens’ Freedom: Madhavi Sunder; P. Bernt Hugenholtz & Ruth L. Okediji.

Explaining the direction of the volume, Netanel notes:

The Development Agenda decisively rejects [WIPO's previously held] IP-centric view. It posits that strong intellectual property protection does not consistently promote create activity, facilitate technology transfer , or accelerate development. The Development Agenda accordingly places the benefits of a rich and accessible public domain, development goals, curbing of IP-related anti-competitive practices, and the need to balance the costs and benefits of intellectual property protection firmly within WIPO’s central mission. The Development Agenda by no means abandons the idea that intellectual property rights can fuel creativity, innovation, and development under some local conditions. But for the first time in WIPO’s history it places the need for balance, flexibility and a robust public domain on par with promoting IP protection in all WIPO matters affecting developing countries.

* * * * *

Second, the Agenda calls into question whether economic development and wealth creation are the sole metrics for measuring development. The Agenda itself and the developing country campaign to bring the Agenda before WIPO have been informed by a new development framework that seeks to attain social, material, and political conditions conducive to human freedom, of which economic growth is an important contributing factor, but not an end in and of itself.

* * * * *

[I]t is apparent that the neoliberal one-size-fits-all approach to property and markets has no more purchase as it pertains to intellectual property than it does with respect to development generally. Thus, to determine how the Development Agenda should be implemented, WIPO officials, national governments, nongovernmental organizations and scholars need to focus on granular, empirical study. . . . This book aims to further that granular stud. It’s contributors address issues of intellectual property and development from a variety of disciplinary and national perspectives. The contributors use case study, empirical research, and sector and country-specific analysis to shed light on how intellectual property can impact development.

Yummy. I’m looking forward to the full publication.

Links:

Neil W. Netanel, “Introduction: The WIPO Development Agenda and its Development Policy Context,” in Neil W. Netanel, ed., THE DEVELOPMENT AGENDA: GLOBAL INTELLECTUAL PROPERTY AND DEVELOPING COUNTRIES (Oxford University Press 2008) [SSRN].

Three major labels float idea of university student licensing system

Comments Off

Shourin Sen - 9 December 2008 – 7:30 pm

Filed under Music, News

Wired is reporting some exciting copyright news. Apparently three of the big four labels have signed on to a plan that would create a royalty collection system for college ISPs. In exchange for a small tuition fee, students would be granted the right to download, share with other students, and manipulate music.

Nonprofit technology advocate Educates is shopping a version of the unlimited music plan on behalf of Warner and the other major labels to several high-profile American universities including Cornell, Columbia and the University of Chicago (see slideshow). Although talks are in the early stages, they could lead to ISP-level music licenses offered to the general public.

* * * * *

In return for a university paying fees to Choruss [a non-profit royalty collection agency], its students would be able to continue downloading as they have been – bit torrent, Limewire and so on – without fear of legal reprisal. Unlike previous plans that require the use of onerous digital rights management, this one would allow students to download music in the unprotected formats they prefer, using the hardware, software and networks of their choice.

The proposed unlimited music service, as late in coming as it is, could make more sense to both labels and fans than the current system of download-and-sue, and it would allow for edge-of-network licenses for mashups, playlists and so on, with no DRM. As long as the system is priced fairly – and from what we’ve heard, the monthly per-student price would be south of $5 per month – it could provide a blueprint for larger ISP-level music sharing licensing. At this point, universities are still assessing the plan.

“Cornell is participating with the other universities in discussions to try to understand the Warner Music Group proposal,” a university spokesman told Wired.com. Techdirt’s source said the slideshow was shown at Columbia, Cornell, MIT, Penn State, Stanford, University of California at Berkeley, University of Chicago, University of Colorado, University of Michigan, University of Washington and University of Virginia.

Above all, I’m struck by how Warner’s proposed system would be both more efficient and effective than the recording industry’s current enforcement tactics. Given the widespread occurrence of infringing file sharing, it’s next to impossible to make the argument that the major labels’ litigation is achieving their desired goals. This doesn’t even take into account what I imagine must be frighteningly high attorneys’ fees.

Furthermore, when the majors use suits to police infringement, like they have, they can never let up. It’s not like there’s a tipping point around the corner where people would stop file sharing; and given the benefits of file-sharing in some contexts, I’m not sure that’s an end we especially want to reach.

The devils in the details, but I’m curious to see how the proposed business plan shakes out. Choruss may offer a permanent solution to a lingering and costly issue — for both labels and students.

S.D. Fla. holds that imporation of software from Jordan infringes Microsoft’s 106(3) rights

Shourin Sen - 8 December 2008 – 11:21 pm

Filed under First Sale

Microsoft Corp. v. Big Boy Distribution LLC, et al., 07-80296-CIV, 2008 WL 5100849 (S.D. Fla Dec 3, 2008).

Via their Ireland affiliate, Microsoft distributed software in Jordan through Educational Solutions and Technological Development, Inc (“EdSol”). The Kingdom of Jordan’s Ministry of Education acquired a license from EdSol to use Microsoft’s Student Media software for its faculty, staff and students. According to the Ministry’s license, it was not authorized to transfer its license to other users except under limited circumstances, and only with Microsoft’s written consent.

The Court found that, according to non-contradicted evidence presented by Microsoft in support of its motion for summary judgment, Big Boy imported approximately 10,000 units of Student Media software, obtained from the Kingdom of Jordan’s Minister of Education, and then sold the copies to non-student end users in the United States.

In this suit, Microsoft alleged that Big Boy LLC was (Count 1) liable for infringement of Microsoft’s distribution right for the resale of Microsoft software in the U.S.; and (Count 2) liable for infringement of Microsoft’s distribution right for the importation of Microsoft’s software under 17 U.S.C. 602(a). The Court granted summary judgment in Microsoft’s favor on both claims.

In regards to Count 1, Big Boy LLC asserted the first sale doctrine as a defense, “which holds that once a copyright owner consents to the sale of particular copy of his work, he may not thereafter interfere with subsequent sales or distribution of that particular copy.” Microsoft contended that § 109(a) didn’t apply because, although the Student Media software at issue was copyrighted in the United States, the software was manufactured and first distributed overseas.

The Court found that the first sale doctrine only acts a defense to copyright claims that involve domestically made copies of U.S. copyrighted works, and not works that are manufactured overseas. Explained the Court:

The rationale here is that the first sale doctrine protects only resales of works lawfully made “under this title,” a phrase which is generally interpreted to mean works legally made in the United States. That is, the first sale doctrine has no application to copyrighted works manufactured abroad because such works are not made “under this title.” See Parfums Givenchy, Inc. v. Drug Emporium, Inc., 38 F.3d 477, 481-92 (9th Cir.1993); Swatch SA v.. New City, Inc., 454 F.Supp.2d 1245 (S.D.Fla.2006) (Huck, J.) (because Swatch watches were manufactured and first sold abroad, defendant’s importation of watches violated Swatch’s right to prevent importation under 602(a).

Big Boy LLC further asserted that they they were not bound by the terms of Microsoft’s distribution license, because the Jordanian Ministry of Education never entered Microsoft’s licensing agreement. The Court conducted an evaluation of the contract, finding that Big Boy was bound by the terms of the agreement. (Somewhat surprisingly, the Court used U.S. law to evaluate the contractual defense. I’m curious if there were choice of law provision in Microsoft’s licensing agreement with the Kingdom of Jordan.)

The Court also granted summary judgment for Microsoft in regards to their second claim, finding that the importation of the software, as an act in and of itself, infringed Microsoft’s 106(3) right via 17 U.S.C. § 602(a).

Documents:

Counsel:

Microsoft Corporation: Holland & Knight LLP; Yarmuth Wilsdon Calfo
Big Boy Distribution LLC: McDonald Hopkins Co PA; Ryan and Ryan Attorneys, P.A.

Fair use cocaine lines and a donkey and elephant humping

Shourin Sen - 7 December 2008 – 8:15 pm

Filed under Fair Use, News

How’s that for a drudge headline?

I just received the greatest Christmas gift evah’, a copy of Goodnight Bush, by Erich Origen & Gan Golan. The book is dork-candy for anyone obsessed with politics and copyright. (Thanks Nancy!)

Anyway, Goodnight Bush presents itself as a parody of the children’s classic Goodnight Moon. Instead of a child saying “goodnight” to everything around (“Goodnight Cow. Goodnight Moon. Goodnight cow jumping over the moon. Goodnight light, a red balloon . . .”), Goodnight Bush features our President saying “goodnight” to legal constructs (“Goodnight Constitution. Goodnight evolution”).

Little, Brown & Co., the publisher of Goodnight Bush, takes a number of steps to make it more likely that, should they be sued for copyright infringement, their work would be shielded from liability under fair use. The publisher placed labels on the front and back cover (“This book is a parody and has not been prepared, approved, or authorized by the creators of Goodnight Moon or their heirs or representatives”) and an artistic explanation on the last page that details how Goodnight Bush targets Goodnight Moon.

Of more interest to me, though, is how the authors may have designed the pictures in the book to bolster a fair use claim. This brings us, once again, to my favorite topic: how copyright shapes the content of artistic works. In this case, cocaine lines and a stuffed donkey and elephant humping.

In Goodnight Bush, our President is shown redying for sleep in his bedroom. As the story progresses, you see Mr. Bush in the same room with minor deatail alterations. When we first visit President Bush, there are five lines of cocaine on his nightstand. Each time we revisit the scene, there is one less line, until they’re all gone on the third to last page (“Goodnight failures everywhere”).

Likewise, the stuffed animals are shown in different poses. First the elephant and the donkey are standing alongside each other (above). Then the elephant is humping the donkey. Toward the end of the book, the donkey is shown humping the elephant — ostensibly portraying the Democratic Party’s success in the 2006 election cycle.

Let’s take a step back for a moment to review why these two inclusions bolster the authors fair use claim. As a threshold question, to run a fair use analysis, a court would first have to decide whether Goodnight Bush deserved to be evaluated as a parody. The test for parody, as stated by the Supreme Court in Campbell v. Acuff Rose Music, is “whether a parodic character may reasonably be perceived.” For the purposes of this diary, we’ll assume that a court would find Goodnight Bush is a parody.

Once the threshold question of whether a work is a parody is satisfied, it would shape a court’s evaluation of the four fair use factors: (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 substantially 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.

To shoot through the factors quickly, the (1) authors’ purpose for Goodnight Bush is commercial, but as the Supreme Court set forward in Campbell, the purpose of a work isn’t dispositive and doesn’t preclude an evaluation using the other three factors. The (2) nature of the copyrighted work isn’t “likely to help much in separating the fair use sheep from the infringing goats in a parody case, since parodies almost invariably copy publicly known, expressive works.”

In terms of (3) the amount and substantiality, Goodnight Bush mimics Goodnight Moon closely, but, as the Court described in Campbell, parody by necessity must incorporate a substantial amount of the preceding work. “When parody takes aim at a particular original work, the parody must be able to “conjure up” at least enough of that original to make the object of its critical wit recognizable.

So, the factor that is likely to be given strong weight in a potential parody case such as this is (4) the effect of the use upon the potential market for or value of the copyrighted work. As the Supreme Court noted in Campbell, the only harm that we are concerned about in a parody fair use evaluation is “the harm of market substitution. The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the like threat to the original market.”

The less likely Goodnight Bush is to act as a market substitute for Goodnight Moon, the more likely it would be found to be shielded from liability. So how could the authors make sure that the book was completely unsuitable for the Goodnight Moon’s target audience? How could they make sure that Goodnight Bush couldn’t be used by parents to read to their children?

Cocaine lines and stuffed animals humping. What a funny, strange world we live in.

As an end note, the Supreme Court in Campbell explicitly stated that courts shouldn’t evaluate whether “a parody is in good taste or bad” when running a fair use analysis. Quoting Holmes:

[I]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke.” Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (circus posters have copyright protection).

Did Ben Franklin write the Progress Clause?

Shourin Sen - 4 December 2008 – 10:04 pm

Filed under Academia

I’m working through David McCullough’s biography of John Adams, which really is as good as everyone builds it up to be. McCullough offers this gem when introducing Benjamin Franklin [p. 80]:

It was Franklin also who had led the way in establishing the American Philosophical Society, “for the promoting of useful knowledge,” with the result that Philadelphia had become the center of American thought and ideas.

Sure enough, an introductory page from the first publication (1771) of the monograph series “Transactions of the American Philosophical Society” stated the society’s goal:

The Promoting of useful Knowledge in general, and such branches thereof in particular… being the express purpose for which the American Philosophical Society was instituted; the publication of such curious and useful Papers as may, from time to time, be communicated to them, becomes of course, one material part of their design.

The second clause of Article I, Section 8, Clause 8, seems to mirror this language relatively closely:

The Congress shall have the power . . . To promote the Progress of Science and the useful Arts by securing for limited times to Authors and Inventors the exclusive right to their respective writings and discoveries.

This is hardly unequivocal proof, but this turn of phrase wasn’t in either the Statute of Anne (“An act for the encouragement of learning”) or the English 1624 Statute of Monopolies (“An act concerning monopolies and dispensations with penal laws and the forfeiture thereof”).

The construction also isn’t found in the other formulations suggested by Madison and Pickney for the clause. See Malla Pollack, What is Congress Supposed to Promote?: Defining “Progress” in Article I, Section 8, Clause 8 of the United States Constitution, or Introducing The Progress Clause, 80 Neb. L. Rev. (2002):

Madison:
- “To grant to literary authors their copy rights for a limited time”
- “To encourage by premiums & provisions, the advancement of useful knowledge and of discoveries.”
Pinkney:
- “To grant patents for useful inventions.”
- “To secure to Authors exclusive rights for a limited time.”
- “To establish seminaries for the promotion of literature and the arts & sciences.”
- “To establish public institutions, rewards and immunities for the promotion of agriculture, trades, and manufactures.”

Director of “Funny Face” survives motion to dismiss on suit targetting Audrey Hepburn Gap Commercial

Shourin Sen - 3 December 2008 – 10:52 pm

Filed under News

I’m not sure what to say about this case. It’s an in-house counsel’s worst nightmare: an oversight or lost contract from fifty years earlier, combined with creative litigation tactics to skirt the statute of limitations.

Donen v. Paramount Pictures Corp., CV 08-03383 DDP, 2008 WL 5054340 (C.D. Cal. Nov. 20, 2008).

Stanley Donen directed the movie “Funny Face,” which included a famous Audrey Hepburn dance scene. Enter the Gap, Inc., which created this commercial in 2006:

Mr. Donen alleged that he never executed an employment contract with Paramount for his work on the film. Donen claimed that he “acquiesced” to Paramount’s licensing of “Funny Face” for fifty years as an “entire” work for exhibition in theaters, television, and “subsequently developed media.” But he claimed that the Gap’s use of the movie in a commercial infringed his copyright because he never “acquiesced” for the film to be used in a third party’s advert. Donen brought suit for copyright infringement or, in the alternative, an accounting and breach of implied contract.

1. Standing

Paramount argued that Donen doesn’t have standing to assert copyright infringement because, under his employment agreement, he had assigned any rights in “Funny Face.” At the time Donen directed “Funny Face” he was under an exclusive contract with Loews, that assigned to the film studio all rights and proceeds from all of his work. But, according to the court, the contract didn’t address any work Donen performed for third parties. The court found that when Loews agreed to permit Paramount to contract with Donen for his work, there was no express assignment of Donen’s rights in his work.

Paramount argued that Donen’s employment was presumptively deemed a “work made for hire” or, alternatively, that his services were merely “loaned” without granting him the capacity to acquire rights to his work. The court rejected this argument noting that the Loews agreement states that Donen could be loaned “in any capacity,” which the court asserts “includes relationships beyond the traditional employer-employee or work for hire settings.”

2. Separate ownership of dance scene

Donen claimed three separate ownership interests in “Funny Face”: full ownership of the entire picture; co-ownership of the entire picture; and ownership of the dance scene. The Court dismissed Donen’s claim to ownership in the dance scene on the grounds that Paramount registered and renewed the copyright for the “entirety” of “Funny Face.”

3. Copyright ownership/creation of an implied trust

The court explained:

Under the 1909 Act, when a copyright was registered by a co-owner or non-owner of the right, the copyright registrant held an ownership interest “in trust” on behalf of the non-registering additional or “true” owner. Maurel v. Smith, 271 F. 211, 215 (2nd Cir.1921); see also Oddo v. Ries, 743 F.2d 630 (9th Cir.1984) (a co-owner’s duty to account to another co-owner comes from “equitable doctrines relating to unjust enrichment and general principles of law governing the rights of co-owners” (internal quotations omitted)). Similarly, a co-owner who renews alone under the 1976 Act takes legal title to the renewal copyright as constructive trustee on behalf of the non-renewing co-owner. Pye v. Mitchell, 574 F.2d 476, 480 (9th Cir.1978).

Paramount argued that the ’09 Act only creates a trust when a co-owner registers an undisputed joint work solely in the first author’s name. The court found no precedence for this reading and denied dismissal.

4. Statute of limitations/latches

The court sets out two interrelated tests for addressing the statute of limitations issue:

A claim for infringement must be commenced within three years after a claimant has “knowledge of a violation or is chargeable with such” (Roley v. New World Pictures, 19 F.3d 479, 480 (9th Cir.1994)); and
An “authorship” claim or or subsidiary claim for accounting is barred three years from “plain and express repudiation” of authorship Aalmuhammed v. Lee, 202 F.3d 1227, 1230-31 (9th Cir.2000).

Donen contended that Gap’s advertisement was released in 2006, thus satisfying the infringement SOL, and that there was no “plain or express repudiation” of his claim of authorship to trigger the authorship SOL. The Defendants argued that “Funny Face” was released with a copyright notice in its opening credits that exclusively mentioned Paramount, and that this should represent a “plain or express repudiation.” The court noted that it’s unable to consider evidence outside of the pleadings on a motion to dismiss; and that the registration of a federal copyright by itself does not provide “plain and express repudiation.” The court similarly refused to rule on the latches claim, stating that a decision would require use of extrinsic evidence.

5. Implied contract claim

The court denied the motion to dismiss the breach of implied contract claim, finding that Donen’s agreement with Loews didn’t expressly cover his work for Paramount.

Documents: