I will be working on a project for the next few weeks that will monopolize my blogging time. At the risk of being presumptuous, I wanted to let Exclusive Rights’ more regular readers know that I won’t be posting until around the second week of May. Now’s a good moment to thank all of you who have been kind enough to read my blog over the past five or six months.
Monthly Archives: April 2009
Great moment in lawyering?
Filed under News
The fine print on the back of this single by the Obits would read the following (if you had better eyes):
This is a Sub Pop Records brand medium-fidelity listening device. To obtain sound recordings contained hereon, please do not double-click. Do not physically force this 7″ vinyl device into computer or portable hard drive (unless, angrily, you wish to damage any/either, in which case give video documentation of this action to internet). Fully backwards compatible with most turntable devices, typically at 45 rpm. You might also try 33. Not a CD. Play loud.
Happy Patriots’ Day.
Judge Posner weighs in on Reed Elsevier v. Muchnick
Filed under Jurisdiction, Registration
Brooks-Ngwenya v. Indianapolis Public Schools, 2009 WL 996998 (7th Cir. 2009)
The First Circuit’s decision on webcasting in Tenenbaum wasn’t the only copyright news made yesterday. In what was an otherwise mundane appeal, the Seventh Circuit (Posner, Williams, Tinder) indirectly addressed the Supreme Court’s upcoming oral argument in Reed Elsevier v. Muchnick. The order was written per curium, so I suppose we don’t really know if it was Posner writing. (But it was Posner writing.)
The facts of Brooks-Ngwenya v. Indianapolis Public Schools are rather uneventful. A former classroom assistant brought an action against a school system for, among other things, copyright infringement of an educational program that she created. Brook-Ngwenya’s infringement claim failed because, instead of trying to prove copying of any of her materials, she attempted to show copying of the ideas underlying the teaching program. As the Seventh Circuit wrote, “[i]t is not the idea that is protected, but rather the original expression of the idea.”
The Seventh Circuit, however, also addressed the issue of whether a failure to follow the registration requirements set forth in 17 U.S.C. 411(a) is a prerequisite for subject matter jurisdiction. Brooks-Ngwenya was denied copyright registration by the Register of Copyrights. Having applied for registration and been rejected, Brook-Ngwenya was able to bring suit under 411(a), provide that she notify the Register of Copyrights of the suit, which she failed to do. Notification is required under the statute so that the Register of Copyrights can intervene during the litigation, if she elects to do so.
The issue of whether compliance with the Copyright Act’s registration requirements is a prerequisite for a court to have subject matter jurisdiction over a copyright case is the same issue, albeit in a different context, that is presented in Reed Elsevier v. Muchnick. The Seventh Circuit found that ”federal courts have exclusive jurisdiction of copyright cases, 28 U.S.C. § 1338(a); I.A.E., Inc. v. Shaver, 74 F.3d 768, 774 n. 4 (7th Cir.1996), and section 411(a) simply prescribes the manner in which courts exercise that jurisdiction.”
The Supreme Court has granted certiorari to decide whether compliance with the registration requirements is a precondition to the subject-matter jurisdiction of the federal courts. In re Literary Works in Electronic Databases Copyright Litigation, 509 F.3d 116 (2d Cir.2007), cert. granted (U.S. Mar. 2, 2009) (No. 08-103). But however that issue is resolved, the Copyright Office had acted on Brooks-Ngwenya’s application before she filed this lawsuit, and section 411(a) is explicit that an applicant refused registration may still sue for infringement. 17 U.S.C. § 411(a); Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir.2004); Torres-Negrón v. J & N Records, LLC, 504 F.3d 151, 160 (1st Cir.2007).
But the applicant must notify the Register of Copyrights. For 17 U.S.C. § 411(a) provides (emphasis added) that
in any case … where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue.
The notification requirement is undemanding: the complaint must merely be sent by registered or certified mail to the general counsel of the Copyright Office. Complaints Served on the Register of Copyrights Pursuant to 17 U.S.C. § 411(a), 37 C.F.R. § 205.13. The requirement “merely provides that the Office must be accorded a second opportunity to express its views on the claim’s validity after suit is filed if it has refused to recognize the claim before the suit is filed. Of course, the court is not bound by the views expressed by the Register in a case in which suit is filed despite his refusal to register the claim.” S. Rep. No. 100-352, at 14 n. 2 (1988), 1988 U.S.C.C.A.N. 3706, 3719 n. 2.
There is no evidence that Brooks-Ngwenya gave notice of her suit to the Register of Copyrights. So if serving notice on the Register is a jurisdictional requirement, we must enforce it even if the parties and the district court ignored it. Arizonans for Official English v. Arizona, 520 U.S. 43, 73, 117 S.Ct. 1055, 137 L.Ed.2d 170 (1997); United States v. Smith, 438 F.3d 796, 799 (7th Cir.2006). If instead it is simply a case-processing rule, we still must decide whether the district court should have insisted on strict compliance. Korsunskiy v. Gonzales, 461 F.3d 847, 849 (7th Cir.2006).
The Supreme Court has cautioned that “jurisdiction” is a word with “ ‘many, too many, meanings,’ “ Steel Co. v. Citizens for a Better Environment, 523 U.S. 83, 90, 118 S.Ct. 1003, 140 L.Ed.2d 210 (1998) (quoting United States v. Vanness, 85 F.3d 661, 663, n. 2 (D.C.Cir.1996)), and admonished litigants and courts alike not to describe every mandatory rule as “jurisdictional.” Kontrick v. Ryan, 540 U.S. 443, 455, 124 S.Ct. 906, 157 L.Ed.2d 867 (2004). “The law is full of rules that are mandatory in the sense that courts must enforce them punctiliously if a litigant insists. Rules are not jurisdictional, however, no matter how unyielding they may be, unless they set limits on the federal courts’ adjudicatory competence.” Farzana K. v. Indiana Department of Education, 473 F.3d 703, 705 (7th Cir.2007).
The federal courts have exclusive jurisdiction of copyright cases, 28 U.S.C. § 1338(a); I.A.E., Inc. v. Shaver, 74 F.3d 768, 774 n. 4 (7th Cir.1996), and section 411(a) simply prescribes the manner in which courts exercise that jurisdiction. Moreover, “the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue.” 17 U.S.C. § 411(a). The suit proceeds with or without his participation and therefore the statutory notification provision does not prescribe what class of cases the court may hear.
Even though nonjurisdictional, the notification requirement is a prerequisite to suit. Congress wanted to ensure that the Copyright Office could intervene and defend its refusal to register a work, In re Literary Works, 509 F.3d at 131 (dissenting opinion); S. Rep. No. 100-352, at 14 n. 2, 1988 U.S.C.C.A.N. 3706, 3719 n. 2, as in other statutes that require notification of and an opportunity for intervention in a private suit. Examples are qui tam actions under the
False Claims Act, United States ex rel. Lujan v. Hughes Aircraft Co., 67 F.3d 242, 245 (9th Cir.1995), and a federal employee’s obligation to notify the Equal Employment Opportunity Commission before bring a suit for employment discrimination. Forester v. Chertoff, 500 F.3d 920, 928 (9th Cir.2007). While not “strictly jurisdictional” these requirements are nevertheless “mandatory.” Hallstrom v. Tillamook County, 493 U.S. 20, 31, 110 S.Ct. 304, 107 L.Ed.2d 237 (1989).
But courts enforce mandatory (though nonjurisdictional) rules-even if the parties do not raise them-in a variety of ways. If the failure to follow the statutory procedure has caused irreparable harm, the suit should be dismissed. United States ex rel. Pilon v. Martin Marietta Corp., 60 F.3d 995, 1000 (2d Cir.1995). If not, no sanction may be necessary. United States ex rel. Lujan v. Hughes Aircraft Co., supra, 67 F.3d at 245. Similarly, if the attorney general was not notified of a constitutional challenge to a statute, belated notification might satisfy the requirement of notification. Tonya K. ex rel. Diane K. v. Board of Education, 847 F.2d 1243, 1247 (7th Cir.1988); In re Young, 82 F.3d 1407, 1412 (8th Cir.1996).
The district court should have insisted on Brooks-Ngwenya’s compliance with the requirement that she notify the Copyright Office about her lawsuit. Otherwise the Register would have no opportunity to choose to defend the decision to deny registration. But the point is now academic, because the Register did weigh in during the litigation, not by intervening but by granting Brooks-Ngwenya’s renewed application. Copyright Catalog, http:// cocatalog.loc.gov. We are free to recognize that fact even though the district court was incorrectly persuaded by IPS that it could not. Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir.2005) (concluding that court may take judicial notice of registry). The purpose of the notification requirement having been fulfilled, we can proceed to the merits.
Jury instructions in infringement suit over Menopause, the Musical’s theater program not grounds for new trial
Filed under Jury Instructions, Registration
Thornton v. J Jargon Co., 2009 WL 980804 (M.D. Fla. 2009)
“Menopause, the Musical” is a poplar stage show. According to Wikipedia, which is never wrong, a “significant” portion of the show’s audience consists of members of the Red Hat Society. (As best I can tell, the Red Had Society is a cross between the tea baggers and the Hells Angels.) The plaintiff in this action alleged that the theater programs for “Menopause, the Musical” contained a one-page “Take the Age Test” that was an unauthorized reproduction of his work, the “Official Baby Boomer Qualifying Exam.”
After a six day trial, a jury returned a verdict finding no direct or contributory copyright infringement. The Plaintiff moved for a new trial arguing, among other things, that the Court improperly refused to issue a supplementary jury instruction in response to jury question. The Court explained:
During their deliberations, the jury asked the Court the following question: “Is copyright retroactive from date of application? Should it matter?” Plaintiff requested that the following answer be given: “[C]opyright protection comes into existence the day that it’s authored and that registration is merely a formality.” The Court declined to issue a supplemental instruction and instead referred the jury to the Court’s Jury Instructions.
* * * * *
In the instant motion, Plaintiff argues that because Defendants distributed the Age Test in theater programs before Plaintiff registered his copyright, the jury erroneously thought that Plaintiff’s copyright was not protected at the time of the alleged infringement. However, the Court’s Jury Instructions implicitly answered the jury’s question because the instructions provided: “The Court has determined, as a matter of law, that the plaintiff owns a copyright in [the BBQE], as registered with the U.S. Copyright Office.” (Dkt. 183 at 7). In addition, in stating the two elements of direct infringement, the Court instructed the jury: “[First element] Plaintiff owns a valid copyright in the work (which the Court has already determined).” This left for the jury’s consideration only the second element of whether Defendants copied constituent elements of the BBQE that were original. As discussed, there was sufficient evidence supporting the jury’s finding that Plaitniff did not meet his burden on this element.
The “extent and character of additional instructions is within the sound discretion of the trial court” and “the judge may sometimes simply refer the jury back to his earlier instructions.” United States v. Mejia, 82 F.3d 1032, 1037 (11th Cir.1996). For the above stated reasons, the Court denies Plaintiff’s motion for a new trial based on the failure to issue a supplemental instruction on the retroactivity of Plaintiff’s copyright.
To the extent Plaintiff argues that this Court should have given Plaintiff’s Proposed Jury Instruction[s], pursuant to Rule 51 of the Federal Rule of Civil Procedure, a party objecting to an instruction must do so on the record and may assign as error only those errors to which the party properly objected. Fed.R.Civ.P. 51(c)-(d). “This rule exists ‘to prevent unnecessary new trials because of errors the judge might have corrected if they had been brought to his attention at the proper time.” Ford ex rel Estate of Ford v. Garcia, 289 F.3d 1283, 1288 (11th Cir.2002) (quoting Pate v. Seaboard R.R., 819 F.2d 1074, 1082 (11th Cir.1987)). The only exception to this rule is when there is plain error affecting substantial rights. Fed.R.Civ.P. 51(d). For the reasons set forth, the omission of Plaintiff’s Proposed Jury Instruction No. 1 did not affect Plaintiff’s substantial rights, as the jury was instructed that Plaintiff had held a valid copyright, as a matter of law.
Conway-Jones: Safeguarding Hawaiian Traditional Knowledge and Cultural Heritage
Filed under Academia
The dockets are rather slow, probably because of the holidays. I apologize in advance to all who were looking for new updates on case law. This offers a good opportunity, on the other hand, to catch up on some of the academic work I haven’t had the chance to address in the past few weeks. Danielle Conway-Jones, a professor of law at University of Hawaii at Manoa, has posted a thought piece at SSRN that was originally published in 2006, so file this in the “new to me” category. In “Safeguarding Hawaiian Traditional Knowledge and Cultural Heritage: Supporting the Right to Self-Determination and Preventing the Commodification of Culture,” Professor Conway-Jones argues that providing “Western” incentive structures to advance Hawaiian tradtional knowledge is ineffectual, and may even be fundamentally inconsistent with Hawaiian traditional knowledge itself.
48 How. L.J. 737, 741-42 (2005):
As an initial matter, when academics speak of traditional knowledge or folklore of Indigenous Peoples, they speak of genetic resources, indigenous creations, indigenous practices, and possibly oral accounts of spiritual stories. Interestingly enough, whenever Western academics come together to discuss this topic, they usually find themselves speaking to each other without the benefit of attendance and participation of traditional healers, cultural practitioners, and elders. Even more interesting is the heavy emphasis by many academics on the significance of trade and trade related aspects of traditional knowledge and folklore. Typically, the conversation engaged in by these groups of Western individuals or organizations focus on one of several goals: defining folklore or traditional knowledge from a Western perspective: providing model protections for traditional knowledge from a Western perspective, presumably under existing intellectual property regimes; protecting traditional knowledge or folklore collections owned by Western art museums and other dealers in antiquities; balancing the economic and research needs of multinational corporations and their governments with the asserted rights of Indigenous Peoples in their traditional knowledge; and protecting traditional knowledge in the face of widespread and continued efforts at globalization.
These efforts may seem necessary to the eduction of those in control of the Western intellectual property regime when considering how Western policies of intellectual property ownership impact Indigenous Peoples, but in observing the protocol and practices of Native Hawaiians, these efforts are irrelevant to Native Hawaiian responsibility to protect and perpetuate traditional knowledge and cultural heritage. In fact, the more time and effort spent on analyzing methods to converge Western intellectual property regimes with Indigenous Peoples’ traditional knowledge just brings more attention to the issue that any attempt at convergence creates a breeding ground for the comodification of culture and, thus, magnifies the reality that Western intellectual property laws promote economic and cultural oppression. From an observer’s perspective, to do justice to the issues and concerns facing Native Hawaiians and the world’s Indigenous Peoples in the information age, it is imperative that the rhetoric and discourse for protecting and safeguarding traditional knowledge be cast in terms of the Native Hawaiian and Indigenous Peoples’ worldviews, not from the Western perspective, which idolizes trade, individualism, and radical free markets.
If Disney ever sells the movie Snow White . . .
Filed under News
it’s going to have to include a covenant not to sue for copyright infringement in the agreement:
A quick aside: the Snow White dance sequence certainly has stood the test of time.
Westbound Records awarded 688k in punitive damages for Notorious B.I.G. sample
Filed under Damages, Sound Recordings
Westbound Records, Inc. v. Justin Combs Publishing, Inc., 2009 WL 943516 (M.D. Tenn. 2009)
Judge Todd J. Campbell issued an order last Friday that may mark the end of the legal saga originally titled Bridgeport Music, Inc. v. Justin Combs Publishing. To review, in his masterpiece Ready to Die, Notorious B.I.G. sampled a five second clip from Singin’ In the Morning by the Ohio Players. Ready to Die was released by Bad Boy Records, a label headed by Sean Combs.
Bridgeport brought suit under the federal Copyright Act for infringement of the underlying composition; Westbound under New York State law for infringment of the sound recording (because Singin’ In the Morning was released pre-1972).
Combs never raised fair use as a defense. Why? Athony Falzone at the Stanford Center for Internet and Society suggested, at the time of the case’s appeal, that the tactic may have been based on a reluctance to risk encouraging fair use as a defense in sampling suits:
Was it inadvertence? I doubt it. Was it a “strategic decision?” Perhaps, but if so, it was a bad one in hindsight. Or was it simply a reluctance to raise a defense that lots of music publishers and record labels fear — one that supposedly threatens their “control” over their music, and by extension, over future creativity and musical expression?
A jury launched the defendants, awarding Westbound $366,939 in compensatory damages, and $3.5 million in punitive damages. Bridgeport elected statutory damages under the federal Copyright Act and received the maximum award of $150,000.
On appeal, the Sixth Circuit found that Westbound’s punitive damages award was unconstitutionally excessive and violated due process. The Circuit remanded with instructions to remit the amount of the punitive damages “closer to” a 1:1 or 2:1 ratio to the compensatory damages.
Last Friday, Judge Campbell found that the “reprehensibility of Defendants” conduct was serious enough to justify a 2:1 ratio of punitive damages, ” and awarded punitive damages totaling $688,523. The Court’s support for the award is somewhat interesting. First Judge Campbell noted that a 2:1 award was consistent with the statutory damages provision of the Copyright Act:
Comparing the 2:1 ratio to civil penalties in comparable situations, the Court notes that statutory penalties for other economic torts usually amount to treble damages or a 3:1 ratio. And, as the Sixth Circuit noted, federal copyright laws provide statutory compensatory damages of no more than $30,000, but up to $150,000 for willful infringement, considerably more than a 2:1 ratio.
Judge Campbell further found that the Defendant’s were on notice that the work could be considered infringing because they had attempted to obtain a license for another unrelated music sample, and because they re-release the album after they had received multiple cease-and-desist notifications:
This Court finds that the reprehensibility of Defendants’ conduct was serious enough to justify a 2:1 ratio of punitive damages. For example, the record reflects that Defendants specifically requested permission to use another unlicensed sample (Jimi Hendrix’s “Power of Love”), were refused that permission, and then used Plaintiff’s sample (Ohio Players’ “Singing in the Morning”) without attempting to get a license for that use. Defendants, by seeking permission, were on notice that their use of the unlicensed sample could be considered copyright infringement.
In addition, the record reflects that Plaintiffs contacted Defendants repeatedly to advise that Plaintiffs considered Defendants’ use of the unlicensed sample to be illegal and to request that Defendants cease such use. Defendants made no response. The record further reflects that not only did Defendants ignore Plaintiff’s repeated demands to cease the infringement, but also Defendants re-released the album knowing that it contained an unauthorized sample and continued to deny liability up until opening statements at the trial.
Samuelson & Wheatland: Statutory Damages in Copyright Law: A Remedy in Need of Reform
Pamela Samuelson, Professor of Law at Berkeley, and Tara Wheatland, a Research Fellow for the Copyright Principles Project, have posted a new article at SSRN about statutory damages and potential for reform via “sound jurisprudence” and legislative changes. The abstract:
U.S. copyright law gives successful plaintiffs who promptly registered their works the ability to elect to receive an award of statutory damages, which can be granted in any amount between $750 and $150,000 per infringed work. This provision gives scant guidance about where in that range awards should be made, other than to say that the award should be in amount the court “considers just,” and that the upper end of the spectrum, from $30,000 to $150,000 per infringed work, is reserved for awards against “willful” infringers. Courts have largely failed to develop a jurisprudence to guide decision-making about compensatory statutory damage awards in ordinary infringement cases or about strong deterrent or punitive damage awards in willful infringement cases. As a result, awards of statutory damages are frequently arbitrary, inconsistent, unprincipled, and sometimes grossly excessive.
This Article argues that such awards are not only inconsistent with Congressional intent in establishing the statutory damage regime, but also with principles of due process articulated in the Supreme Court’s jurisprudence on punitive damage awards. Drawing upon some cases in which statutory damage awards have been consistent with Congressional intent and with the due process jurisprudence, this Article articulates principles upon which a sound jurisprudence for copyright statutory damage awards could be built. Nevertheless, legislative reform of the U.S. statutory damage rules may be desirable.
UGA in copyright war over marijuana decriminalization student group’s use of a cartoon bulldog
The Red and Black, the school newspaper at the University of Georgia has a story about an escalating hullabaloo between the school’s administration and a student group that advocates the decriminalization of marijuana. The University of Georgia is claiming that the National Organization for the Reform of Marijuana Laws (NORML) violated the University’s copyrights by printing a cartoon bulldog on 50 shirts and the group’s website without prior approval. Reports Carey O’Neil:
[The program adviser of the Center for Student Organizations] said after Legal Affairs notified her of the problem, she sent e-mails to the student officers, asking them to return unsold shirts and remove the image from their Web site by the following evening. . . “There were two opportunities for the group to take action,” he said, but when the logo was still on the Web site at the deadline, Legal Affairs was notified and Enterprise Information and Technology Services was asked to block the site.
* * * * *
[The leader of NORML said]: “If you prosecute us over this image, it would be like prosecuting Andy Warhol for his painting of Campbell’s Soup.” Stone said at the hearing that he didn’t look at University images as inspiration for drawing. “For my primary model for my version of the bulldog I used a Looney Toons version,” he said. [The student leader] said anyone who saw the drawing would immediately recognize it as a parody or satire. He said his group was being unfairly targeted.
The hearing ended Tuesday evening without resolution and will reconvene next Thursday.
Chain of title unclear in infringement suit over classic Marx action figures
Filed under Assignment
American Plastic Equipment, Inc. v. Toytrackerz, LLC, 2009 WL 902422 (D. Kan. 2009)
There was an order last week that illustrates how a plaintiff must provide a written instrument to show chain of title. Louis Marx & Co. was a toy company that, between 1964 to 1970, sold 1:6 scale action figures that it registered the copyrights for in its name. (A picture of one of the figures, Chief Cherokee, is on the left.) Louis Marx was bought by Quaker Oats; which sold the company to Dunbee-Combex; which reorganized (no one is sure how) as Dubee-Combex-Marx; which went into bankruptcy and had its assets repossessed by Chemical Bank of New York; which sold the copyrights “if any” to American Plastic Equipment, the plaintiff in this action, for ten dollars. Got it? The bill of sale contained the following language:
The Property has been repossessed by the Seller from Louis Marx & Co. or its affiliated companies in the exercise of its rights under a security agreement.
American Plastic brought a copyright infringement action against Toytracerkz, alleging that the company had infringed its copyrights in eleven of the action figures. 
Magistrate Judge David J. Waxse of the District of Kansas granted Toytrackerz summary judgment finding that the “chain of title” was unclear:
For the chain of title to be secure, Plaintiff would have to present a written document, signed by the then owner, transferring the copyrights to Chemical Bank. It is not enough that the Bills of Sale indicate that the copyrights were “repossessed by the Seller [Chemical Bank] from Louis Marx & Co. or its affiliated companies in the exercise of its rights under a security agreement.”
The decision had a nice discussion of the differences between 17 U.S.C. 204(a)’s requirement of an executed writing and the statute of frauds:
Under § 204(a) of the Copyright Act, “[a] transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” While Section 204(a)’s signed writing requirement is sometimes called the “copyright statute of frauds,” it is in fact different from a statute of frauds. Section 204 “is a prerequisite to a valid transfer of copyright ownership, and not merely an evidentiary rule.” A transfer of copyright is simply not valid without the required written instrument. A mere claim that a written document exists is not enough to cloud the title; the written document transferring the rights and signed by the owner must be submitted into evidence.
The writing in question “doesn’t have to be the Magna Charta; a one-line pro forma statement will do.” Nor does the writing have to contain any particular language.FN42 It must, however, clearly show an agreement to transfer the rights in the copyright.
The writing requirement serves several purposes. First, it ensures that a copyright will not be inadvertently transferred.FN44 Second, it “forces a party who wants to use the copyrighted work to negotiate with the creator to determine precisely what rights are being transferred and at what price.” Third, it provides a guide for resolving disputes; the parties can look to the writing to determine whether a use is improper.FN46 In these ways, the writing requirement “enhances predictability and certainty of copyright ownership-‘Congress’ paramount goal’ when it revised the [Copyright] Act in 1976.” [citation omitted]
Recent scholarship from the 
