Monthly Archives: October 2009

Court finds that answers to textbook questions are an infringing derivative work

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Shourin Sen - 30 October 2009 – 9:00 am
Filed under Derivative Work

Pearson Educ., Inc. v. Nugroho, 2009 WL 3429610 (S.D.N.Y. 2009)

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

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

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

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

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

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

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

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

The China-Intellectual Property Rights Enforcement Dispute And the Freedom of Expression

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Shourin Sen - 28 October 2009 – 9:00 am
Filed under Academia, Berne

Tomer Broude, Senior Lecturer at the Hebrew University of Jerusalem, has posted an article at SSRN titled “It’s Easily Done: The China-Intellectual Property Rights Enforcement Dispute And the Freedom of Expression.”  The article presents a provocative analysis of  the U.S.-China WTO intellectual property dispute.  A paragraph from the conclusion:

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

Friday copyright fun: The Downfall meme becomes copyright self aware

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Shourin Sen - 23 October 2009 – 9:00 am
Filed under News

You could argue about the merits of the subtitles . . . Or you could just marvel at copyright law’s ability to inspire dorkiness. (H/t Ron Coleman.)

Court finds that distribution of sheet music to the U.K. that is made under license in the U.S. is nonifringing

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Shourin Sen - 22 October 2009 – 9:00 am
Filed under Distribution Right, Extraterritoriality, Pro-IP Act

Music Sales Limited, et al., v. Charles Dumont & Son, Inc., 09-1443 RMB-JS (D. N.J. 2009)

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

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

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

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

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

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

(a) INFRINGING IMPORTATION OR EXPORTATION.

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

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

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

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

NPR targets same-sex marriage campaign with a cease-and-desist and take down

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Shourin Sen - 21 October 2009 – 9:00 am
Filed under DMCA, News

The Portland Press Herald brings word of a brewing copyright dispute. National Public Radio has sent a cease-and-desist to Stand for Marriage Maine over the groups use of NPR content in one of its television adds. NPR, apparently, also sent a takedown notice to Youtube and Hotdaddy.

NPR asserts that Marriage in Maine’s commercial infringes a story “Massachsuetts Schools Grapple with Including Gay & Lesbian Relationships in Sex Education,” from its program All Things Considered. Says NPR’s senior vice president for marketing, communications, and external relations:

NPR did not license use of this story or its content, and would certainly not have licensed or permitted it if we had been asked . . .NPR is a highly respected news organization and does not allow its content to be used by political or advocacy groups. Such use is harmful to the integrity and independence of NPR. NPR does allow – even encourage — personal, non-commercial use of our content, so long as it is not modified, and not used in a manner that suggests NPR promotes or endorses a cause, idea, Web site, product or service. The use made by Stand for Marriage Maine violated all of these terms.

The Copyright Act as a race-notice statute

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Shourin Sen - 20 October 2009 – 9:00 am
Filed under Registration, Transfers

Banco Popular de Puerto Rico v. Latin American Music, 2009 WL 3294789 (D. P.R. 2009)

What happens if a party purchases a copyright from a copyright owner, and then the now former copyright owner turns around and sells the copyright again to a third-party? 17 U.S.C. 205 governs these situations and all of their messiness:

As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice under subsection (c), within one month after its execution in the United States or within two months after its execution outside the United States, or at any time before recordation in such manner of the later transfer. Otherwise the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.

This provision essentially makes the Copyright Act a modified race-notice statute. If there are conflicting transfers, the person who first recorded their acquisition with the Copyright Office prevails provided that they were a bona fide purchaser for value, and they had no notice of the previous transfer.

There was a case in the federal district court in Puerto Rico on October 8 that addressed what happens when a person’s notice of transfer to the Copyright Office is defective. UMG acquired a copyright, that was later also assigned to Latin American Music. LAM provided notice of the transfer to the Copyright Office before UMG did, but, perhaps trying to save money on the Copyright Office fees, its notice covered a group of songs, not just one song. UMG cried foul, arguing that the notice was invalid. The Court rejected the argument finding that the Latin American Music’s filing gave it priority, even if it didn’t meet the specificity requirements set forth in 205(c):

Universal also points out that the recorded document in this case lists too many songs for it to conform with the specificity requirements of 17 U.S.C. § 205(c). However, that disposition merely deals with whether or not a recordation document in the Copyright Office may give constructive notice of the facts stated therein. Such disposition is inapposite as to whether or not LAMCO’s transfer takes priority over EMLASA’s, an issue that is governed by 17 U.S.C. § 205(d).

It may be difficult to reconcile the Court’s finding with a plain language reading of Section 205, but the Court’s finding is hardly surprising. The federal courts don’t take kindly to the Copyright Act’s paperwork requirements. This is but one instance forming a broader trend of federal courts looking past paperwork provisions so as to achieve what they see as just decisions.

Monday Copyright Roundup

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Shourin Sen - 19 October 2009 – 9:00 am
Filed under Academia, Daily Copyright Roundup, News, Termination

Doug Lichtman has released a new podcast in his IP Colloquium series. The details:

Title: Can Content Survive Online?

Guests: Brad Smith (General Counsel, Microsoft); Scott Martin (Executive Vice President, Paramount Pictures); Dan Cooper (Vice President of Business & Legal Affairs, MySpace).

Description: The music, publishing and motion picture industries are each today struggling to identify new business models that might replace existing mechanisms for funding professional content. In this edition of the Intellectual Property Colloquium, we consider the legal and strategic roadblocks that might be standing in the way. Guests include: Brad Smith, General Counsel, Microsoft; Scott Martin, Executive Vice President, Intellectual Property, Paramount Pictures; and Dan Cooper, Vice President, Legal & Business Affairs, MySpace. UCLA law professor Doug Lichtman hosts.

O‘Melveny and Myers attorneys Christopher Murray and Paul Iannicelli have posted an article at Mondaq and their firm’s website on how the Copyright Act’s termination provisions may impact I.P. transactions. A snipit:

Although [Sections 203 and 304 of the]  Copyright Act seem reasonably clear on their face, it is often the case that in actual application they can become quite complicated. As the judge in the Siegel case noted, “The 1976 Copyright Act contains many intricate formalities that an author (or his or her heirs) must navigate to successfully terminate” a grant. As one example, both Sections 203 and 304 provide that a grant can be terminated when the statutory right ripens “notwithstanding any agreement to the contrary,” in order to prevent an unsuspecting author, or one with little leverage, from waiving the right at the time of the grant or before its value can accurately be measured. But what if the author or his heirs have subsequently entered into an agreement with the grantee after the work has been exploited, in a manner that takes into account the demonstrated value of the work? Should those be considered “agreements to the contrary” that have no bearing on the validity of the termination right? Or should they be upheld as waiving the termination right, on the basis that they have effectively fulfilled the public policy of providing the author or his heirs the chance to re-negotiate from a position of knowledge and possibly strength?

Robin S. Lee, an Assistant Professor of Economics at the Stern School of Business, New York University, and Tim Wu, Professor of Law at Columbia University Law School have posted a new article at SSRN titled Subsidizing Creativity Through Network Design: Zero Pricing and Net Neutrality. The abstract:

Today, through historical practice, there exists a de facto ban on termination fees – also referred to as a “zero-price” rule (Hemphill, 2008) – which forbids an Internet service provider from charging an additional fee to a content provider who wishes to reach that ISP’s customers. The question is whether this zero-pricing structure should be preserved, or whether carriers should be allowed to charge termination fees and engage in other practices that have the effect of requiring payment to reach users. This paper begins with a defense of the de facto zero-price rule currently in existence. We point out that the Internet, as an intermediary between users and content providers, exhibits pricing dynamics similar to other intermediaries in “two-sided markets.” In particular, we posit that the Internet’s absence of payments from content creators to users’ ISPs facilitates the entry of content creators. In that respect, the rule provides an alternative implementation of the policy goals provided by the intellectual property system and achieves functions similar to copyright and patent law. The rule also helps avoid the problems of Internet fragmentation, in which content providers who do not reach agreements with ISPs cannot access all customers, and consumers on a single ISP are foreclosed from processing their content.

Copy shop liable for direct infringement from student on-premises copying of course packets

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Shourin Sen - 16 October 2009 – 9:00 am
Filed under Contributory Infringement, Contributory Liability, Secondary Liability

Blackwell Publishing Group, Inc. v. Excel Research Group, LLC 07-12731 (E.D. Mich. 2009).

The Eastern District of Michigan issued a decision on Wednesday that is sure to be controversial. A group of publishers brought suit alleging that a copy shop had infringed thirty-three of their works. The copy shop had accepted course packets from professors; ensured that the course packets were in proper form to be copied; given the packets to students upon request; and provided copy machines for the students to copy the packets.

The twist

If you were looking at this case from afar, you’d probably expect the Court to find the copy shop was secondarily liable for infringing copies made by the students. Instead the Court found the copy shop directly liable for infringement of the publishers 106(1) right to make reproductions and 106(3) right to distribute. Why?

For  four of the thirty-three allegedly infringed works the students were arguably authorized to make copies. The university the students attended had entered into licensing agreements with the publishers that allowed “student copying.” So for at least some of the works, the Court ostensibly believed it had to find that the copy shop directly infringed the publisher’s works to find the copy shop liable.

The Court may have also felt that it could not find the students directly liable for the remaining twenty-nine works under a fair use evaluation.  There can be no secondary liability without direct liability. The copy shop, then, couldn’t be liable without a finding that the students directly infringed the works. I’m not convinced that the outcome of a fair use evaluation, regardless of the outcome, should change in this circumstance if it is being conducted from the point of view of the students or the copy shop, but reasonable minds can reach a contrary conclusion.

106(1) right to reproduce the copyrighted work

In a section labeled “Direct Infringers” the Court wrote the following:

Excel next argues that because it is the students who do the copying, they are the purported infringers and therefore the publishers cannot establish that Excel is an infringer. While “[t]he Copyright Act does not expressly render anyone liable for infringement committed by another,” Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 434 (1984), Excel’s argument ignores the circumstances of the copying.

First, although students press the start button and make a copy of the coursepack, Excel is the source of the reproduction. Excel controls the entire copying process. It retains the “master,” maintains its quality, gives it to a student to copy, and accepts payment. Excel also owns and supplies all of the elements of reproduction – the venue, the copy machines, the paper, and the utilities. Excel staff members are available to assist students in the copying process and also provide binding services if requested. This scenario is vastly different from a student, who happens to obtain a coursepack from a friend or other third party and comes into Excel’s premises and makes a copy. Under this scenario, whether Excel would be liable is a different question. Here, however, it is clear that this is not mere student copying.

From this paragraph and context provided by the rest of the decision we can deduce that the Court found that the copy shop was directly liable for the student copying — that the copy shop was actually making the copies, not the students.  (When the Court conducted its fair use evaluation, it considered the direct infringement by the copy shop and not by the students.)

This creates a groundbreaking and potentially troublesome extension of direct liability. It should be noted that the publisher’s amended complaint primarily asserts infringement claims under secondary liability. There is only one boilerplate sentence that mentions directly liability.

Direct liability verses secondary Liability

Edit: Peter Hirtle raises interesting questions about this case at the LibraryLaw Blog. He points to a provision in the Copyright Act, 17 U.S.C. 108(f), that I should paid more attention to before posting. 108(f) shields libraries from liability stemming from the “unsupervised use of reproducing equipment located on [their] premises,” provided that they post a warning on their duplication machines stating that an individual may be personally liable for using the machine to make infringing copies.  I’ve changed this paragraph to reflect the provision. Mr. Hurtle questions whether this decision eliminates the safe harbor for libraries under 108(f):

It is common for libraries to receive from a faculty member a copy of a course pack and place it on reserve (much as faculty members provided copies of their course packs to Excel).  If a student then borrowed that course pack and copied it on a library photocopy machine, would the library be liable?  Section 108(f) of the Copyright Act protects libraries from charges of contributory infringement for copying done by patrons on library equipment, but could this decision be extended to suggest that libraries, just like Excel, have direct, not contributory, liability  for infringing copies made by students?  If so, the “safe harbor” of 108(f) would evaporate.

I think this analysis is spot on. The Court in Blackwell found that when an entity “retains the ‘master,’ maintains its quality, gives it to a student to copy, and accepts payment,” it is the party making duplications; not a third-party, be it supervised or unsupervised. 108(f) is drafted in broad terms and doesn’t explicitly just provide a shield against secondary liability. But I think that it is possible to make a strong argument that Blackwell has essentially eliminated the 108(f) safe harbor.

106(3) right to distribute copies

The Court also found that the copy shop directly infringed the publisher’s 106(3) distribution right by “renting” their copy of the course packets to the students, even though the students never left the copy shop’s premises. This actually presents a more interesting issue than may appear at first blush.  17 U.S.C. 106(3) grants a copyright owner the exclusive right to “distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” The Copyright Act, however, does not define “distribute.”

William Patry contends that the operative language in 106(3)  is “distribute copies . . . to the public” not “sale or other transfer of ownership, or by rental, lease, or lending.” This makes a difference in the context of selling a house that infringes a copyright owner’s architectural work. If “distribute copies . . . to the public” is the operative language, invoking some kind of motion, then a sale of house, which is merely a change of title, would not be considered an infringing act.

Would the copy shop’s on-site supply of the course packets be considered a distribution under Patry’s reading of 106(3)? For that matter, is Patry’s proposed definition of 106(3) viable in all contexts?

(h/t Mary Minow at Fairly Used Blog)

Court finds that putting photos on the internet doesn’t make them U.S. works

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Shourin Sen - 14 October 2009 – 9:00 am
Filed under Jurisdiction, Publication, Registration

Moberg v. 33T LLC, 2009 WL 3182606 (D. Del. 2009)

There was a relatively important decision issued in the federal District of Delaware last week that addressed whether posting unpublished photos on the internet made them U.S. works. The Plaintiff was a Swedish photographer who put up a series of photos on a German art gallery’s website. The Defendant ran a site that offered customizable website designs for sale. According to the complaint, at some point in December 2007, the Defendant used some of the Plaintiff’s photos as stock images in some of its web designs. The Plaintiff sent the Defendant a cease-and-desist, and when it was partially ignored, it filed suit alleging copyright infringement and violation of the DMCA.

The fireworks

The Defendant moved to dismiss the copyright claim on the grounds that the Court didn’t have subject matter jurisdiction. The omnipresent, omnipotent Section 411(a) of the Copyright Act states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 411(a) essentially creates a two-tiered structure, requiring that copyright owners of U.S. works must register their works prior to bringing suit; but allowing copyright owners of foreign works to bring suit without registration.

The Plaintiff had brought suit sans registration on the theory that its works were not United States works since they were first published on a German website. The Defendant argued that the Plaintiff’s photos were United States works:

Defendants contend that plaintiff’s photographs, which were created undisputably outside the United States, are United States works because when they were posted on a German website, they were “published” simultaneously in Germany and in the United States. 17 U.S.C. § 101 (“[A] work is a ‘United States work’ only if-(1) in the case of a published work, the work is first published-… (B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States.” FN7). Defendants argue that it is “well settled that Internet publications are published everywhere simultaneously, regardless of the location of the server hosting the website.” (Def. Br. at 7.) Therefore, because the posting of a photograph on a website simultaneously “publishes” the photograph “everywhere,” including the United States, it is a “United States work,” and as such, it must be registered prior to filing suit for infringement.

I’m aware of only one previous case where a court considered whether distributing a work on the internet constituted a publication, Getaped.com, Inc., v. Cangemi. In the case the S.D.N.Y. found that posting a website on the internet constituted a publication. Getaped may be of limited precidential value because the court seemed to use the concepts of distribution and publication interchangeably.

Back to Moberg: The Court rejected the easier out (a finding that the Plaintiff’s distribution didn’t constitute a publication) and instead found that treating the photos as United States works, and not foreign works, would “pervert” U.S. copyright law and “would be contrary to the Berne Convention.” The Court, thus, found that regardless of whether posting a work on the internet constitutes a publication, if a foreign author puts a work up on a foreign website, it’s not a publication in the United States.

The Court first stated that it would be contrary to the purpose of the Berne Convention to hold that publishing a work on the internet “automatically, instantaneously, and simultaneously causes that work to be published everywhere in the world.”:

“The overarching purpose of the Berne Convention is to provide protection to authors whose works will be published in many countries.” Christopher Sprigman, Reform(aliz)ing Copyright, 57 Stan. L.Rev. 485, 544 (2004). “Berne’s proscription of mandatory formalities is a rational response to the difficulty of complying (and maintaining compliance) with differently administered formalities that may have been, absent the Convention, imposed in dozens of national systems, some with registries, some without, and none of which shares information.” Id. (explaining that “[e]vidence for this view can be found in the origins of the Berne Convention”). Thus, if the publishing of plaintiff’s photographs on the German website simultaneously caused them to be published in the United States, and such publication transformed the work into a United States work, plaintiff would be subjected to the very formalities that the Berne Convention eschews. To hold otherwise would require an artist to survey all the copyright laws throughout the world, determine what requirements exist as preconditions to suits in those countries should one of its citizens infringe on the artist’s rights, and comply with those formalities, all prior to posting any copyrighted image on the Internet.

Next the Court noted that if posting a work on the internet made a work a United States work, American citizens  could infringe foreign works without fear of retribution:

While not all Americans would exploit such an advantage, the misappropriation of intellectual property remains a significant problem and there is no principled reason why domestic users should be able to act with such impunity.

Finally, the Court found that such a finding would be contrary to the policy underlying U.S. copyright law:

Third, the United States copyright laws, in accord with the Berne Convention, provide for protection of foreign works in the United States without requiring the artists to undertake any formalities in the United States. See 17 U.S.C. § 408(a) (2000) (“[R]egistration is not a condition of copyright protection.”); Kuklachev v. Gelfman, 600 F.Supp.2d 437, 473 (E.D.N.Y.2009) (citing Muchnick v. Thomson Corp., 509 F.3d 116, 133 (2d Cir.2007)) (“Under the clear language of the statute, which refers only to ‘any United States work,’ foreign works originating in countries party to the Berne Convention need not comply with § 411.”); Cotter, supra, at 1743-44, (explaining that “U.S. copyright subsists in unpublished works … from the moment of creation, wherever those works happen to be created. Upon publication, … U.S. copyright continues to subsist in the work … if, “on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or sovereign authority of a treaty party, or is a stateless person, wherever that person may be domiciled”). The adoption of defendants’ point of view would be contrary to that law.

Notes:

The proposition that all works become U.S. works under the Copyright Act if they are first published on the internet is somewhat strange, but the outcome created by such a reading is hardly onerous. Expedited “special handling” of copyright registration takes at most two weeks and is the same cost as regular registration if litigation is looming, under the new regulations established by the Copyright Office.

Samuelson and Sheffner on Due Process challenges to peer-to-peer statutory damages awards under Gore

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Shourin Sen - 13 October 2009 – 9:00 am
Filed under Academia, Damages

PENNumbra, the University of Pennsylvania Law Review’s ezine, has published a point-counterpoint by Pamela Samuelson and Ben Sheffner on whether the recent peer-to-peer statutory damages awards violate the Due Process clause of the Constitution, as interpreted in BMW v. Gore. Readers here may recognize Pamela Samuelson from her article with Tara Wheatland, Statutory Damages in Copyright Law:  A Remedy in Need of Reform, and Ben Sheffner from his blog Copyrights and Campaigns.

I’d be remiss if I didn’t mention the form of the essays: Both run under two thousand words and remind me of some of the delightfully short writings found in some European IP journals. PENNumbra is a forum that, in this case, offers a nice middle-ground between full length journal essay and blog post.

Some clips from the series:

Samuelson said:

The only plausible explanation for the outlandishly large jury awards against Thomas-Rasset and Tenenbaum was the jury’s desire to punish them for the sins of all file sharers at the direct or indirect urging of the recording industry plaintiffs.  See Pamela Samuelson & Tara Wheatland, Statutory Damages in Copyright Law:  A Remedy in Need of Reform, 51 Wm. & Mary L. Rev. (forthcoming 2009) (manuscript pt. I-B), available at http://ssrn.com/abstract=1375604 (explaining that courts and commentators are increasingly recognizing that statutory damage awards, especially at the high end of the range, are punitive in intent and punitive in effect).  Under the Supreme Court’s due process jurisprudence, juries seem to be punishing these individuals for the acts of millions of other file sharers who are “strangers to the litigation” on behalf of copyright owners who are also “strangers to the litigation” as to copyrighted works that are not before the court.  Williams, 127 S. Ct. at 1063 (“[T]he Constitution’s Due Process Clause forbids a State to use a punitive damages award to punish a defendant for injury that it inflicts upon nonparties or those whom they directly represent, i.e., injury that it inflicts upon those who are, essentially, strangers to the litigation.”).  Because there are insufficient constraints on jury awards of statutory damages, courts should draw upon the Court’s due process jurisprudence by reducing grossly excessive statutory damage awards in peer-to-peer music file-sharing cases either to the $750 minimum, which seems to have become the norm in the reported cases, or to something much closer to the minimum.  See, e.g., Cooper Indus. v. Leatherman Tool Group, Inc., 532 U.S. 424 (2001) (directing de novo review of excessive jury awards).

Sheffner said:

. . . Gore guideposts two and three don’t work at all with copyright statutory damages. In many copyright cases (Thomas-Rasset and Tenenbaum included), it is impossible to compare actual to statutory damages because, as noted above, it is difficult or impossible to measure actual damages. Indeed, statutory damages exist in part to relieve copyright owners of the burden of proving up actual damages where, as a practical matter, they cannot. See F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, 231 (1952). And it makes no sense to speak of comparing the actual damages with “the civil or criminal penalties that could be imposed for comparable misconduct,” Gore, 517 U.S. at 583; statutory damages are the “civil… penalties” that Congress has chosen to impose on copyright infringers. If we’re going to debate the constitutionality of statutory damages, we’re going to have to do so under the much more deferential standard set forth in St. Louis, Iron Mountain & Southern Railway v. Williams, 251 U.S. 63 (1919)—under which, as far as I am aware, no award has ever been invalidated.

Reasonable people can disagree over the proper amount of statutory damages for individual non-profit infringers like Thomas-Rasset and Tenenbaum. I, for one, would likely be willing to trade a significantly lower range of available damages for a cheap and streamlined process for adjudicating such cases. See, e.g., Mark Lemley & R. Anthony Reese, Reducing Digital Copyright Infringement Without Restricting Innovation, 56 Stan. L. Rev. 1345 (2004) (“Another way to reduce the cost of enforcement is to create some sort of quick, cheap dispute resolution system that enables copyright owners to get some limited relief against abusers of peer-to-peer systems….”). But these are essentially legislative choices.