Category Archives: Noncopyrightable Material

Fair use cannot be raised sua sponte, 11th Cir.

2
Shourin Sen - 6 April 2010 – 9:00 am
Filed under Derivative Work, Fair Use, Noncopyrightable Material, Useful Article

Latimer v. Roaring Toyz, Inc., 2010 WL 1253090 (11th Cir. 2010)

The facts of this case are somewhat convoluted. Kawasaki engaged a motorcycle shop to customize two ZX-14 motorcycles for use in promotional material. The customization shop hired a third-party designer to paint the bikes using his own graphics and color scheme. The owner of the cycle customization shop also hired a noted motorcycle photographer, at the bequest of Kawasaki, to take pictures of the customized ZX-14s. The customization shop never entered into written agreements with either the paint job designer or the photog.

The photog claimed, but it was disputed, that the customization shop assured him that the photos would only be used on placard besides a showing of the ZX-14s at Daytona Bike Week and that the photos would not be leaked before the release of a forthcoming issue of Two Wheel Tuner, which feature pictures of his of the bikes from a different photo shoot. Instead, Kawasaki used the photos in a press release which they distributed to the media, the customization shop distributed the photos on its website, and the motorcycle publication Cycle World published three of the photos that were included in Kawasaki’s press kits.
The photographer brought suit alleging, inter alia, that (1) the customization shop unlawfully  distributed his photos on its website; (2) Kawasaki unlawfully distributed his photos as part of its press kits, and (3) the publisher of Cycle World magazine unlawfully distributed his photographs in the magazine.

The defendants moved for summary judgment arguing that the photographs were “unauthorized derivative works based upon protectable preexisting works” of the third-party artist who painted the bikes. The district court granted summary judgment to Kawasaki and the publisher of Cycle World finding that the phtog granted Kawasaki an implied license to use the photographs in its press release materials, and that Cycle World’s subsequent publication of the photographs was fair use (the District Court raised the issue of fair use sua sponte). The District Court also found that the photographs were not derivative works of the third-party artist’s paint design.

The Eleventh Circuit delved into a discussion of whether a photograph is a derivative work but ultimately found that the third-party paint artist had granted a non-exclusive license to the photog. The Court found that the third-party artist knew that the ZX-14 that he was customizing was ultimately for Kawasaki’s promotional purposes. The Circuit found that it was “reasonable to infer” that the third-party artist intended that his artwork be photographed and distributed by Kawasaki, the motorcycle customization shop, and the media.  The Circuit thus found that the photographs were not infringing, and sidestepped the need to answer the question of whether the photographs were derivative of the the third-party artist’s paint work.

Fair use

The Court also addressed the issue of whether fair use can be raised by a court sua sponte. The defendant-appellees elected not to assert fair use in their answer or in their motion for summary judgment.  In a series of rather peculiar events, fair use was first raised by the district court sua sponte in its summary judgment order. It later vacated the order to allow the parties to brief, among other things, the issue of fair use. In the defendants brief on the second motion for summary judgment they stated “Defendants respectfully suggest that this Court need not go as far as fair use analysis in order to determine, as a matter of law, that [Cycle World's] use of the photographs was lawful.” On reconsideration the district court for a second time entered summary judgment in favor of the publisher of Cycle World on the issue, finding its distribution of the photos were a non-infringing fair use.

The photog on appeal argued that, as an affirmative defense, fair use must be pled in an answer. The Eleventh Circuit found that the district court erred in raising the defense sua sponte. The Circuit, however, did not decide the question of whether the defense was waived. The Circuit found that although an affirmative defense usually must be raised in an answer, courts recognize exceptions to the general proposition. The Circuit also stated in a footnote that if factual questions in any resulting fair use analysis “are in dispute, these must be resolved by the jury.”

11th Cir. finds medical forms lack sufficient originality; rejects standard from Feist

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Shourin Sen - 23 February 2010 – 9:00 am
Filed under Noncopyrightable Material, Originality, Preemption

Utopia Provider Systems, Inc. v. Pro-Med Clinical Systems, LLC, 2010 WL 569892 (11th Cir. 2010)

We’ve discussed this case previously in May and, on damages, in December. Utopia alleged, inter alia, that Pro-Med infringed its copyright in a series of charts for a physician to use to record a patient’s medical history and symptoms. The district court granted Pro-Med summary judgment on the copyright claim finding that the charts were not copyrightable subject matter. Utopia appealed.

Were the charts copyrightable subject matter

The Court looked to whether the headings on the forms were expected on similar medical templates and, secondly, to whether the terms actually conveyed information to the treating physician. The Court found that the medical forms called for “the same information that any responsible physician would ask a patient with the given ailment.” The Court further found that the “selection and arrangement of the terminology” did not convey information that was sufficiently original. The Court, thus, affirmed the district court’s finding that the medical forms did not constitute copyrightable subject matter.

The real fireworks in this case came in a footnote where the Court appeared to reject the “modicum of originality” standard from Feist in favor of a “conveys information” standard. Utopia argued that Feist modified the Eleventh Circuit standard announced in John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 971 (11th Cir.1983) by specifying that compilations need only minimal creativity to be copyrightable; that compilations are copyrightable “so long as [choices as to selection and arrangement] are made independently by the compiler and entail a minimal degree of creativity.” Feist Pubs., Inc. v. Rural Tel. Svc. Co., Inc., 499 U.S. 340, 348 (1991). Stated the court:

Utopia ignores, however, that Feist dealt with how to resolve the tension between facts generally not being copyrightable and factual compilations being copyrightable. Feist held that a factual compilation may be copyrightable “if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement.” Id. at 350-51, 111 S.Ct. at 1290 (emphasis added). Feist did not imply in any way that the rule concerning the creativity in selection of facts was a standard that applied to anything but factual compilations or impacted the blank forms rule. While we note that the creativity in the selection of terms on the ED Maximus forms bears on whether the forms convey information, the “convey information” standard-not a creativity in selection or arrangement standard-still governs blank forms and was not altered by the Feist decision concerning factual compilations. Utopia’s argument that the selection and arrangement of terms in the ED Maximus templates show “extraordinary degrees of creativity and originality,” therefore, is relevant only to the extent that it shows the forms convey information.

The Court’s opinion also contained an interesting discussion of what it viewed as the Ninth Circuit misreading Eleventh Circuit precedence:

Some courts have adopted a “bright-line” rule regarding blank forms; that is, they hold that blank forms inherently do not convey information and are not copyrightable. The Ninth Circuit took this approach in Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104 (9th Cir.1990). The court rejected the argument that a blank form could satisfy the “convey information” test by containing possible categories of information, thus indicating which information was important. Id. at 1107. If categories of information were sufficient to “convey information,” according to the court, the copyrightability of blank forms would be “potentially limitless. All forms seek only certain information, and, by their selection, convey that the information sought is important. This cannot be what the Copyright Office intended by the statement ‘convey information’ in 37 C.F.R. 202.1(c).” Id.

The majority of circuits have rejected Bibbero ‘s bright-line approach. See, e.g,, Kregos v. Associated Press, 937 F.2d 700, 709 (2d Cir.1991) ( “[A]ll forms need not be denied protection simply because many of them fail to display sufficient creativity.”); Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1242-43 (3d Cir.1986) (noting that the Third Circuit, “like the majority of courts that have considered this issue … ha[s] held that blank forms may be copyrighted if they are sufficiently innovative that their arrangement of information is itself informative”). Although the Ninth Circuit characterized the Eleventh Circuit’s approach in Clarke Checks as adopting the “bright-line” approach that blank forms cannot be copyrighted, the Ninth Circuit’s reading of Clarke Checks does not comport with our reading of it. Bibbero, 893 F.2d at 1107. The Clarke Checks court’s statement that “blank forms which do not convey information … are not copyrightable” does not indicate a view that blank forms cannot convey information. 711 F.2d at 971. Moreover, the court’s analysis went beyond identifying the check stub at issue as a blank form; the court analyzed whether it conveyed “information beyond that contained on previously existing check stubs,” indicating that it would be possible for a check stub, although a blank form, to convey information. Id. at 972. We therefore look to the “convey information” test to analyze whether ED Maximus is copyrightable, and do not end the analysis merely by labeling it a blank form.

CAD software user interface copyrightable as a compilation of public domain elements

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Shourin Sen - 16 February 2010 – 12:36 pm
Filed under Noncopyrightable Material, Originality, Scenes a Faire, Software, Unfair Competition

Real View, LLC v. 20-20 Technologies, Inc., 2010 WL 455459 (D. Mass. 2010)

Real View and 20-20 Technologies sold competing CAD software that enabled consumers to model kitchens. 20-20 sent Real View a cease-and-desist letter, which Real View responded to by filing a complaint seeking a declaratory judgment that it has not infringed 20-20′s copyrights. 20-20 filed counterclaims for copyright infringement, trade dress infringement, unfair competition, intentional interference with advantageous relations, and violations of Massachusetts General Laws Chapter 93A.

The District Court of Massachusetts (Saris, J.)  held a preliminary hearing to determine whether 20-20 Design contained expression that merited copyright protection, and if so, which parts. The Court’s decision is interesting for its attempt to synthesize the “abstraction, filtration, comparison” test, adopted by the Second Circuit in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) (plaintiff claiming non-literal infringement), and the First Circuit’s decision in Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 820 (1st Cir.1995) (plaintiff claiming literal infringement) that criticized the “abstraction, filtration, comparison” test for obscuring the fundamental question of whether a work merited copyright protection at all.
20-20 presented the court with a list of fifty-four elements that it contended merited copyright protection. The Court found that this allowed it to skip directly to the filtration portion of the “abstraction, filtration, comparison” analysis:

Since 20-20 has offered a list of specifically protected elements, this Court need not engage in the abstraction process described in Altai and eschewed in Lotus. See MiTek Holdings v. Arce Eng’g Co., 89 F.3d 1548, 1555 (11th Cir.1996) (“[I]f the copyright holder presents the court with a list of features that it believes to be protectable …, the court need not abstract further such features.”); ILOG, Inc. v. Bell Logic, 181 F.Supp.2d 3, 11 (D.Mass.2002) (declining to “abstract” and proceeding to “filter” when parties identified elements of a computer program that were allegedly copied). Nevertheless, sitting in a Lotus position, the Court must read Altai through the lens of Lotus and thus filter out elements based on § 102(b) before filtering on the basis of merger, scenes a faire, or public domain.

Analysis

The Court found that many of the elements of the program design did not merit copyright protection when viewed in isolation. The Court however found that a compilation of the individual components, as viewed on the screen display, was protectible. The Court also found that a particular dialog box that enabled users to specify characteristics of kitchen items placed into a design was copyrightable as a compilation of factual information (based on unique selection and arrangement).

Individual components that were found to be in the public domain when not evaluated as part of a compilation

  • The sequence of sub-windows on the left side of the screen: information box, edit box, hierarchical catalog box, drag and drop listing, and search box.
  • The items in various dialog boxes.
  • “Save as Image” function.
  • A row of command categories on the top of the screen display (File, Edit, View, Place, Project, Design, Notes, Dimensions, Render, Preferences, Window, and Help).
  • The ability to add notes via a dialog box.
  • Three methods used to add a wall. One of the methods was consisted of using a menu command function; a second, pressing a button on a toolbar.
  • An “idiosyncratic” sequence of mouse clicks through which a user could draw walls (regardless of the novelty of the sequence).
  • The ability to terminate a wall sequence through a single left mouse click behind the most recent wall drawn.
  • An edit box and default room configuration users can use to create walls.
  • A submenu that allows a user to move, rotate, extrude, and delete a wall.
  • A dialog box that allows users to modify the appearance of a wall or a placement zone.
  • A drop and drag method of placing items such as cabinets; a method through which a user can select an item from a list and click “place”; and a method through which a user can input coordinates.
  • Two means through which a user could resize windows and doors Options for editing countertops, e.g, “Add Bevel,” “Notch,” and “Rotate.”

10th Cir.: Court reporters do not own a copyright in the transcripts that they prepare

7
Shourin Sen - 26 August 2009 – 9:00 am
Filed under Noncopyrightable Material

United Transp. Union Local 1745 v. City Of Albuquerque, 2009 WL 2573815 (10th Cir. 2009)

There was an interesting little unpublished decision issued by the Tenth Circuit (McConnell, Tymkovich, O’Brien writing) this past Friday. An attorney represented a group of plaintiffs in a suit against the City of Albuquerque. The district court appointed a Special Master to conduct hearings, for which the City of Albuquerque ordered and paid for transcripts. The attorney for the plaintiff used the Inspection of Public Records Act, N.M. Stat. § 14-2-1 to 14-2-12, to obtain copies of the transcripts directly from the City, instead of paying the court reporter a higher fee.

The City and the court reporter complained to the district court and, after the case settled, the district court ordered the plaintiff’s counsel to pay the reporter a little over four thousand dollars. The attorney for the plaintiffs appealed in his individual capacity. The 10th Circuit overturned finding that to require the counsel to pay the fee would effectively give the court reporter a copyright in his transcripts:

We have found no authority to justify requiring plaintiffs, and derivatively their attorney . . . to pay a fee to a court reporter for a transcript copy the reporter did not make but, rather, that they legally obtained from another source by independent means. On the contrary, both broad principle and particular holdings undermine the notion that court reporters may demand a “missed fee” whenever someone obtains a copy of a transcript that can be traced back to an original transcript the reporter had made—and was paid for making—for someone else.

In broad terms, [the court reporter's] fee claim rests on the tacit premise that court reporters in some legal sense own the content of the transcripts they prepare, such that they are entitled to remuneration whenever a copy of a transcript is made (even if they played no role in making the copy). To accept this premise would effectively give court reporters a “copyright” in a mere transcription of others’ statements, contrary to black letter copyright law. See 2 William F. Patry, Patry on Copyright, Ch. 4 Noncopyrightable Material, § 4.88 (Updated Sept. 2008) (court reporters are not “authors of what they transcribe and therefore cannot be copyright owners of the transcript of court proceedings”).

And there is a line of cases holding that transcripts independently accessed (such as by simply requesting the case file from the court clerk) may be viewed and copied as an alternative to purchasing a copy from the court reporter. See Kinan v. City of Boston, 112 F.R.D. 206, 208 (D. Mass. 1986); Hawley v. Hall, 131 F.R.D. 578, 583 (D. Nev. 1990); C.P.C. P’ship Bardot Plastics, Inc. v. P.T.R., Inc., 96 F.R.D. 184, 185 (E.D. Pa. 1982); see also Stanley v. Henderson, 590 F.2d 752, 753 (8th Cir. 1979) (noting counsel may obtain copies of appeal transcript from clerk); Schroer v. United States, 250 F.R.D. 531, 535-37 (D. Colo. 2008) (rejecting, under post-2000 Rules (see supra note 1), party’s effort to require immediate filing of transcript with clerk to enable informal copying, not because copying is improper but because party failed to justify burdening the court with filing of as-yet-unused transcripts).