The Volokh Conspiracy

I’m delighted to say that Bill Patry will be guest-blogging this week about his new book, How to Fix Copyright. I’ve known Bill for 18 years, from the time that he was copyright counsel to the U.S. House of Representatives Committee on the Judiciary. He has also been a Policy Planning Advisor to the Register of Copyrights, a full-time professor at the Cardozo School of Law, and a practicing copyright lawyer; and now he is Senior Copyright counsel at Google Inc. (though the book represents his personal views, and not those of his employer). He is also the author of an 8-volume, 6500-page treatise, Patry on Copyright (Thomson/West), a separate treatise on fair use (also West), a prior one-volume treatise on copyright that went through two editions (BNA Books), and many law review articles. Here’s an excerpt of the How to Fix Copyright summary:

The arrival of the Internet was revolutionary, and one of the most tumultuous developments that flowed from it — the upending of the relatively settled world of copyright law — has forced us to completely rethink how rights to a work are allocated and how delivery formats affect an originator’s claims to the work. Most of the disputes swirling around novel Internet media delivery systems, from Napster to Youtube to the Google Book Project, derive from our views on what constitutes a proper understanding of copyright. Who has the right to a work, and to what extent should we protect a rights holder’s ability to derive income from it? Is it right to make copyrighted works free of charge?

How to Fix Copyright offers a concise and pithy set of solutions for improving our increasingly outmoded copyright system. After outlining how we arrived at our current state of dysfunction, the book offers a series of pragmatic fixes that steer a middle course between an overly expansive interpretation of copyright protection and abandoning it altogether. We have to accept that we cannot force people to buy copyrighted works, but at the same time, we have to enforce laws against counterfeiting. Most importantly, we have to look at the evidence — what furthers creativity yet does not deny protection to those who need it to create? We should also reject the increasingly strident (and ill-informed) denunciations of delivery systems: Google Booksearch and DVRs are merely technologies, and are not the problem. Throughout, the book stresses that we need to recognize that the consumer is king. Law can only solve legal problems, not business problems, and too often we use law to solve business problems.

I recently noticed that some U.S.-based merchants, such as Amazon, are selling imported collections of U.S. jazz recordings from the 1950s and early 1960s at extremely cheap prices: Typically, sets of 8 different albums put on 4 CDs are being offered at $15 for the entire set. For example, there’s “Hank Mobley: Eight Classic Albums,” featuring 8 of Mobley’s Blue Note albums, on sale for $15.72; or, if you prefer, “Cannonball Adderly: Eight Classic Albums,” featuring 8 of Adderley’s albums, for $14.14. This seems to be a new development. The compilations mostly were released in the last few months, from labels with names like “Real Gone Jazz” and “101 Distribution.”

My question is, are these recordings lawful to purchase in the United States? I realize I’m old-fashioned in caring about complying with copyright law. To the hipsters, it seems, “buying music lawfully” is like wearing pleated pants. But my sense is that these recordings are not licensed by the copyright owners in the United States, where the works are still under copyright. Rather, my guess is that they are taking advantage of the fact that copyright in the EU has used a 50 year term, which is about to increase to 70 years. So recordings from the 1950s through 1961 are now in the public domain in Europe, as I understand it, and Europeans can therefore copy CDs, package lots of public-domain recordings together, and then sell them at very low cost to those in the U.S. through sites like Amazon.

So my first question is, am I right that this is what is happening? And second, if I’m right, does U.S. law prohibit purchasing recordings made where the items are in the public domain, albeit purchased from where they are still copyrighted, and then playing them in the U.S. where they are still copyrighted? Copyright nerds, what say you?

In several recent postings (here and here, for example) I called on all interested persons to come to the Internet’s defense against a spate of truly dreadful bills now making their way through Congress (the “Protect IP Act” and SOPA, the “Stop Online Piracy Act”). Larry Downes, always a thoughtful voice on tech matters, has an interesting piece in Forbes about the rather astonishing outcry that the bills have engendered. As someone who’s been doing Internet law for almost 20 years, I can’t remember any issue galvanizing public opinion in quite this way since the 1996 “Communications Decency Act” [outlawing "indecency" on the Net -- good luck with that!]. It’s quite gratifying, and something of a turning point, I think, in terms of the politics of the Net, and it’s gratifying to have played a small part to help generate the current outcry about these truly egregious bills (Mark Lemley, Dave Levine, and I having written a Law Professors’ Letter in opposition that generated over 100 signatures — and, according to the counter at Scribd.com, has been downloaded over 50,000 times already . . . ) I’m pretty gratified; once I saw the full-page ad in the Times a few weeks ago, signed by Google, eBay, Yahoo, Facebook, AOL, Twitter, Zynga, and several other tech giants, stating their opposition to these bills, I began think we might actually have a good chance of winning this one and saving — seriously — the Internet. I think the copyright interests may look back at this battle and realize that they overstepped; galvanizing Google, Facebook, Twitter, eBay, . . . into action is not going to help their cause much, I don’t think.

[And if you're not aware of how serious a threat these bills are to the Internet's technical, commercial, and economic infrastructure, consider this. Under SOPA, intellectual property rights holders can proceed vigilante-style against any allegedly infringing foreign websites, without the need for any court hearing or judicial intervention or oversight whatsoever. SOPA establishes a "notice and take-down" scheme under which an IP rights holder need only notify banks, credit card companies, Internet advertisers, and Internet search engine operators, in writing, that he/she has a “good faith belief” that an identified Internet site is “primarily designed or operated for the purpose of” infringement. The recipients of the notice will then have 5 days to cease doing any business whatsoever with the specified site, taking all “technically feasible” steps to prevent it “from completing payment transactions” with customers, from “making advertisements available” to the site, and from “being served as a direct hypertext link” from within any site under the recipient’s control. And all of this based on nothing more than a written notice delivered by the rights holder, which no neutral third party has even looked at, let alone adjudicated on the merits. If that's "law," I'm the Pope. Imagine if we had that in the non-virtual world:

A guy walks into a bank. He hands the teller a note. Sweat begins beading on the teller's forehead, and he takes the note to the bank VP. The note reads: "Jack Johnson's been stealing my hogs. Freeze his bank account." And the bank has five days to comply!!

It's not law - it's a kind of thuggery, and it will make the Net a much, much less vibrant place (and a teeny bit safer for copyright holders - if that) if it is enacted.

UPDATE: Marty Schwimmer, an experienced copyright and trademark attorney, sent me the following revision to my "guy walks into a bank" description of SOPA, which, in the interest of airing other views, I present below. Obviously, we disagree - I still believe a law permitting private parties to create liability for other persons based on nothing more than their say so and a "notice" is a form of lawlessness and thuggery - but here's Schwimmer's take on it:

I think that your note to the bank scans better, but I think that my version is a more accurate reflection of the motives of the IP holder and the circumstances under which they would attempt to utilize notice-and-takedown.

Here’s an interesting development: the ReDigi Used Digital Music Store. Application of copyright law’s “first sale doctrine” — which allows you to re-sell or give away copies that you have purchased of books, records, or other copyrighted works without the copyright holder’s permission (the doctrine that allows, for instance, used book stores or video rental stores to operate without payment of any additional royalties to the copyright holders) — to digital works has always been something of a puzzle. On the one hand, there’s a strong argument that the Copyright Act treats copies of works embodied in digital files the same way it treats copies of works embodied in print or on canvas; on the other hand, the fact that digital files are so preposterously easy to copy means that it’s awfully easy to circumvent the law by “re-selling” a digital file you’ve purchased while still retaining a copy for yourself – which is not within the protection of the first sale doctrine.

So along comes ReDigi. Their claim is that they’ll let you re-sell all that crappy music you downloaded during a drunken spree the other night — if you install their application on your computer, which will do a scan and certify that you haven’t kept any copies of the file around. [See the story in the NY Times here] Clever!! If you really have disposed of your copy of the file in question, it’s hard to see how the copyright holders can complain (though complain they will — book publishers still hate the 2d-hand bookstores . . .).

But there’s one thing I’m not clear about. Suppose I purchase a song at iTunes, stick a copy on my hard drive and a duplicate in my “locker” on the Apple iCloud server. Then, I resell the file at ReDigi — and once I delete it from my hard drive, the ReDigi application will never know that I’ve put a copy in the cloud, right? And if that’s the case, it’s really not a first-sale-doctrine-applicable transaction at all …

One of the obvious dangers of the Internet Age is that we’ll be so distracted by everything going on around us – lots of it interesting, complicated, and even important (not to mention all the stuff that’s idiotic and unimportant and fundamentally uninteresting) — that we will fail to recognize the truly important stuff when it comes along.

The IP bills that Congress now has before it — the Senate version of which is known as PROTECT-IP, the House version as SOPA (Stop Online Piracy Act), sometimes known as the “E-Parasite” bill — are deep and profound threats to the Net and to our freedom on the Net. If anyone has good ideas about how to fight back other than to stand on the street-corner, as I am doing now, and shouting to the rooftops, I’d be interested to hear them.

I helped draft a Law Profs Letter in Opposition, and I’ve blogged about it a number of times before, as have others — good places to start if you are unfamiliar with the issue are the EFF site, the CDT site, and Techdirt. But I’m going to keep at it because this is an issue that really needs more public traction than it is getting. I’m not going to stand here and say that this law will destroy the Internet as we know it, though I actually believe that to be true. I’m not going to say it, because predicting the future is impossible and I like to avoid doing it in public — though, like all of us, I have my own beliefs about what the future will bring. So I’ll put that aside and focus on the principles at stake; even if the damned thing weren’t going to destroy the Net as we know it, it is of surpassing ugliness, and if you care about freedom and liberty, you’ll agree with me.

Here’s the Internet we get after this becomes law. The prosecutor walks into a courtroom with evidence that a website — or, more likely, 1000 websites — are “dedicated to infringing activities.” If he/she can persuade the judge of that, those websites vanish from the Net (through a complex wave of judicially-mandated action that has to be obeyed by ISPs, domain name registrars, etc.). No need for messy “adversary proceedings,” “due process,” or similar niceties. No need to bother with details like “is there a defense to the charge?” No need even for the prosecutor, under the statutory terms, to prove what a copyright plaintiff would have to prove if this were an ordinary infringement suit: i.e., that the website operator in question had “actual knowledge of specific infringing files” on the site in question. None of that.

It’s nice of Congress, I suppose, to provide that a neutral judge has to have seen the evidence and issued an order before sites can be eliminated; I’m sure there are plenty of folks in Congress and the US Attorney’s Office who would like to eliminate that last bit of messiness and administrative inconvenience, too. But there’s a good reason why, except in truly extraordinary circumstances where public health and safety are imminently threatened, we don’t throw people in jail, or deprive people of their livelihoods, or divest them of their property, whenever a prosecutor and a judge agree that those are just punishments.

And it’s a lot worse than even that. Get this: The House version makes it unlawful (and subjects you to this elimination order) if you:

“tak[e] deliberate actions to avoid confirming a high probability of the use of the [website] to carry out acts that constitute a violation of [the copyright or trademark statutes].”

Take a careful look at what’s going on here. If the prosecutors have been snooping around on my website to find infringing material and I take “deliberate steps” that prevent them from “confirming” that I have such material on the site — perhaps I have this pet peeve about government agents crawling around what I might regard as private space and I have tried to keep them out — then I have violated the statute even if I don’t actually have infringing material on the site. That is, it’s an independent violation of law to keep the prosecutors from “confirming” that you’re violating the law — all the prosecutor has to show, to make you vanish from the Net, is that you’ve somehow tried to keep the prosecutor off of your website!

It violates principles I’m tempted to call sacred — and all for what?? To protect the rights of our intellectual property owners — to make the world safe for our record companies and movie studios and publishing houses. Even if it was going to work, if the price for protecting those rights is that we have to abandon due process, and the notion that there are 2 sides to every story, and the notion that government agents do not have an inalienable right to know everything that I am doing on the Internet or anywhere else, that price is way too high.

And of course it’s not going to work. I guarantee that. It’s too easy to circumvent — anyone who understands the technology will agree with that. Sure, it will ensnare many unlawful actors. But at Internet scale, ensnaring some of the bad guys does not and cannot appreciably affect the conduct in question. Think of it this way: If there are 10 bad guys out there, and you’ve got a way to catch, say, 5 of them, that’s usually a pretty good scheme. We’ll have 5 fewer bad guys, and who knows, maybe just by probabilistic chance you’ll catch all 10; after all, if you’re 50 percent likely on average to catch each bad guy, it’s unlikely but by no means impossible that you’ll get ‘em all.

But if there are 10 million bad guys and you get rid of half of them, there are still 5 million bad guys out there. And, with intellectual property, 5 million bad guys can do precisely as much “damage” to your intellectual property as 10 million. If “stamping out copyright infringement” looks like a nightmarish game of whack-a-mole that you can’t possibly win – well, I’m sorry about that, but that’s just the way the world is, so get over it. There’s more — much more — peer-to-peer file-sharing going on today than in the heyday of Napster and Grokster. Deal with it – not by killing my Internet, thank you very much.

UPDATE: Anthony Falzone over at the Stanford Center for Information and Society points out a couple of places where people can speak out about this — see his posting at here, the petition at whitehouse.gov, and the EFF’s “Write Your Congressperson” page

UPDATE 2: Thanks to Ryan Radia and others, who pointed out that this posting inadvertently conflates the two bills (SOPA and Protect IP) now floating around in the House and Senate, respectively, regarding the due process problems raised by the bills. SOPA has corrected some of Protect IP’s more egregious due process problems — eliminating the express invitation for court’s to issue orders based on ex parte hearings. So in a sense my post is focusing on the worst aspects of each bill — which is fair enough, I think, given that we could well end up with the worst aspects of each. I also happen to think that as a practical matter, the due process concerns are still alive in SOPA, which allows courts to enter “TROs, preliminary injunctions, and permanent injunctions in accordance with Rule 65 of the FRCP” against domain names after an in rem proceeding; given that the actual defendants are very likely to be overseas and not subject to in personam jurisdiction, this is likely to lead to a profusion of suits in which no true adversary proceeding is really possible as a practical matter.

A new copyright and trademark parody case, CCA and B, LLC v. F + W Media, Inc. (N.D. Ga. Sept. 22, 2011), which finds that defendants’ Elf off the Shelf parody is likely not an infringement of the copyright or trademark in plaintiffs’ Elf on the Shelf. The judge, by the way — Amy Totenberg — is the sister of NPR legal affairs correspondent Nina Totenberg.

So District Judge David O. Carter held Thursday in Mattel v. MGA (though I assume that the case will either be appealed, or will settle for something less than the total amount in lieu of an appeal). The Copyright Act specifically provides that the loser — whether plaintiff or defendant — may be ordered to pay the winner’s attorney fees and costs. Whether to award the fees and costs is in the court’s discretion, based on whether the award would sufficiently further the Copyright Act’s purposes (a mushy standard, to be sure). Here’s Judge Carter’s conclusion:

In this case, Mattel claimed that it owned valid copyrights in the concept sketches and sculpts for the “Bratz” line of dolls and that every generation of “Bratz” dolls released by MGA infringed those copyrights. The breadth of Mattel’s infringement claim corresponded with its request for “more than $1 billion dollars in copyright damages” and an “injunction prohibiting MGA from producing or marketing virtually every Bratz female fashion doll, as well as any future dolls substantially similar to Mattel’s copyrighted Bratz works.” This request for relief was predicated on Mattel’s mistaken expectation that it owned the “ideas” in the copyrighted works; and the mere specter of that relief may have clouded MGA’s business prospects, bolstered Mattel’s status, and changed the landscape of the fashion doll industry….

Mattel asserted a copyright claim that was stunning in scope and unreasonable in the relief it requested. The claim imperiled free expression, competition, and the only serious competitor Mattel had faced in the fashion doll market in nearly 50 years. MGA’s successful defense ensured that well-resourced plaintiffs cannot bend the law to suit their pecuniary interests. For these reasons, and pursuant to 17 U.S.C. § 505, the Court awards MGA $105,688,073.00 in attorneys’ fees and $31,677,104.00 in costs.

If you’d like more on the substantive dispute, read the Ninth Circuit’s 2010 opinion (which covers most of the issues; a later district court decision covered what remained). You can also read this L.A. Times article that discusses the trade secret counterclaim in the case, and the award it led to against Mattel. Note also that Judge Carter’s opinion is docket entry number 10,703.

Techdirt asks: Can A Monkey License Its Copyrights To A News Agency? Apparently, David Slater, a well-known nature photographer, left his camera on the ground in an Indonesian national park, and a macaque monkey walked over and snapped a bunch of photos, including this (remarkable!) self-portrait:

Two of the photos in the set of monkey self-portraits bear a copyright notice: “Copyright Caters News Service. Raising the odd but interesting question: who assigned the copyright to the News Service? Slater? Perhaps, but that can’t be a valid assignment, for the simple reason that he doesn’t own the copyright just because his camera was used to snap the photo.

That leaves the monkey.

The question is not an entirely ridiculous one — well, OK, it is a ridiculous one, but it is at least closely related to some very difficult and interesting copyright questions concerning the requirement (if there is one) that human creativity is a requirement for copyright to exist in a work of authorship — questions that come up in contexts ranging from the ridiculous (creations by psychics ostensibly “channeling” voices from beyond the grave, animal creations — monkey photos, elephant drawings, chimpanzee-created music) to the sublime (the copyright status of works “authored” by computer programs or Artifical Intelligence engines). (My friend and colleague Annemarie Bridy recently sent me a very interesting draft of an article exploring these issues, soon to be published, entitled “Coding Creativity: Copyright and the Artificially Intelligent Author”).

But what I love about this little story is that it plumbing its metaphysical depths clearly calls for analysis by someone with deep expertise in (a) primate behavior and (b) copyright law — and guess who that might be?! Yes, it’s true – having spent two years in the Kenyan bush back in the 1970s studying the feeding and ranging behavior of the yellow baboon, and a decade or so writing and teaching in the field of primatology and evolutionary biology, and then the last 15 years working on questions of copyright law and other IP matters, I finally have found the one question that I’m uniquely positioned to answer. I suppose my next step is to send the monkey a short note introducing myself and offering to represent him in his copyright battles with Slater and the Caters News Agency, demanding that his authorship rights be respected and recognized. I’d advise him/her to take a bushel of bananas (33% of which go to me, thank you very much) in return for a covenant not to sue and an irrevocable assignment of all copyright rights in the photos.

[Thanks to Fred Wilf and Diana Lin for the pointer]

So holds Fuentes v. Mega Media Holdings, Inc. (S.D. Fla. Jun. 29, 2011), adopting a Magistrate Judge’s Report and Recommendations, though of course in such fair use cases the decision is closely focused on the facts of the case, and offers only a limited precedent for future cases.

Note that there’s apparently some controversy about whether the plaintiff timely filed an objection to the magistrate’s report; the judge accepted the magistrate’s report thinking that the plaintiff wasn’t filing an objection, and plaintiff was surprised by this, since his lawyers apparently thought that the magistrate had given them more time to object. Plaintiff has therefore filed a motion for reconsideration, and objections to the report. It’s possible that the judge will therefore consider the matter again.

Precisely mirroring a hypothetical I have often used in my Intro to IP class, along comes the “Mike Tyson tattoo” case. Tattoo artist Victor Whitmill apparently designed a distinctive tattoo for Mike Tyson’s face (see photo here), and the tattoo adorning actor Ed Helms’ face in the upcoming Warner Brothers’ film “Hangover 2″ looks an awful lot like the Tyson tattoo. Whitmill sues for copyright infringement. What result?

To answer that, we need to figure out if tattoos can be protected by copyright at all — a question no court (until now), to my knowledge, has ever confronted. The Copyright Act sets out the requirements for copyright protection: you have to have an “original work of authorship,” and it must be “fixed in a tangible medium of expression.” There’s not much question that Whitmill’s design is an “original work of authorship” — if it were painted on canvas, for instance, there’s no doubt that it would receive copyright protection. The harder question is whether Mike Tyson’s face is a “tangible medium of expression.”

The statute says that a work is “fixed in a tangible medium of expression” when its embodiment in a material object is “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” By my reckoning, the tattoo here clearly fits the bill: once it’s on Tyson’s face, it can be perceived by others for more than a “transitory duration”; though the latter phrase could, I suppose, be so narrowed as to not include the “transitory duration” of, say, Mike Tyson’s life, that would be at odds with about a million copyright precedents. [The "transitory duration" language has been construed to eliminate things like a "buffer copy" of a file inside a computer, which is deleted after 0.01 seconds or so - or the evanescent images on a television screen, which vanish once they are projected onto the screen).

Indeed, I think Whitmill here, from the look of it, has a very strong infringement claim. He sought a preliminary injunction, enjoining any performance of the film until his claim was resolved - a very common tactic in copyright litigation. The court - wisely - denied it. Courts have allowed copyright plaintiffs to use this injunction tactic (which gives the plaintiffs, of course, an enormous bargaining club of a value far in excess of the value of the copyright claim itself) much too frequently in the past (a point made many years ago, if memory serves, in a very influential law review article by our own Eugene Volokh); at the same time, the court noted that Whitmill "had a “strong likelihood of prevailing on the merits for copyright infringement” and that most of the arguments put forward by Warner Bros. were “just silly.” So Whitmill is likely to prevail - but he'll get a couple of hundred thousand in damages (and not the $30 million (!!) he apparently sought in settlement discussions with Warner, when he still had hopes of obtaining an injunction against the film's release).

One interesting little side note: Esteemed copyright scholar David Nimmer submitted an odd affidavit on Warner's behalf, arguing (contrary to several statements published in his copyright treatise (Nimmer On Copyright)) that while the tattoo may be "fixed" on Tyson's face, the human face cannot be a "medium of expression" for purposes of the Copyright Act (citing, among other things, the 13th Amendment). [Perhaps this was one of the "silly" arguments the court was referring to].

Fellow Blogger Orin Kerr, in several comments on my posting yesterday, has asked some questions deserving a response:

David,

If DHS is just making a request and has no legal authority to enforce its request, then of course Mozilla is free to ignore the request. At the same time, I wonder: If you were in charge of enforcing the criminal copyright laws, what would you do about the many sites that exist to facilitate copyright infringement? What steps do you think are fair and appropriate ones — if any?

A couple of thoughts about this. First, about being “free to ignore the request.” If, say, a representative of the Department of Health and Human Services wrote to the Dean of a Law School and said: “We hereby request that you not hire any African-Americans or Jews for your faculty — oh, and not to worry, you’re free to ignore our request,” we’d all be (appropriately) outraged. Heads would surely roll. A request from the government is not like a request from your neighbor or colleague; it carries additional weight. Especially, I think, when it comes from the Dep’t of Homeland Security. It should carry additional weight; as a citizen, I care a great deal about the security of my homeland, and if the government asks for my help in that task, I’m inclined to give it, or at least to consider it. I happen to regard that as a simple consequence of citizenship – not that I’ll do whatever the government asks me to do, but that I will consider it. The more frequently they ask for things they have no right to ask for, the less inclined I am to take their requests seriously.

The DHS has no more legal authority to request that Mozilla disable MafiaaFire than does the DHHS to ask my Dean not to hire blacks or Jews. None.

If I were in charge of enforcing the criminal copyright laws, what would I do? I would not violate the due process rights of website operators by asserting a right to “seize” anyone’s domain name whenever some copyright holder persuaded a DHS functionary that the site was infringing copyright. I would design a process to actually “adjudicate” these claims — maybe not (almost definitely not) full-blown federal litigation, but a procedure whereby the purported infringer has an opportunity to be heard before a true neutral, and where little things like “burden of proof” and the like are respected. ICANN’s UDRP proceedings at least serve as some sort of model — by no means the right one for this task, but a starting point for discussion.

Finally, if I were in charge of enforcing criminal copyright law, I would recognize that enforcing copyright law, while important, is less important, as it were, than the Internet. If we’re going to have situations in which government agents are permitted to screw up the basic and fundamental principles of Internet addressing, they should be restricted to situations in which the stakes are really, really high. Enforcing the private rights of music and entertainment companies is not one of those situations.

The Dep’t of Homeland Security is indeed at it again. I’ve blogged about their campaign on behalf of US copyright holders to “seize” the domain names of websites (irrespective of the actual location of the site, provided that it is registered in one of the databases of a US domain name registrar or registry). It’s a really troubling new phenomenon — even putting aside how downright stupid, and outrageous, it is that DHS, which even in light of last week’s developments obviously has other important work that it should be attending to, is getting into the copyright-enforcement game.

But it appears to be getting worse. Now, they’re going after software providers. As reported by Nate Anderson at arstechnica, DHS recently approached the folks at Mozilla and “requested” that they remove/disable a popular Mozilla add-on, “MafiaaFire.” MafiaaFire is a (pretty simple) domain name redirector; if the website operating at wereallydon’tlikeIPlawyers.com moves to wewerejustkidding.org, a user with the MafiaaFire add-on who types “http://wereallydontlikeIPlawyers.com” into his/her browser window is automatically redirected to wewerejustkidding.org.

You can see what they’re unhappy about, I suppose; sites that have had their domain names “seized” have managed to get up and running in a matter of hours after the “seizure” by switching over to new domain names, and things like MafiaaFire make it easier for users to find the new site.

But screwdrivers, pencils, automobiles, bunsen burners, Frisbees, and many, many things are used by Bad Guys to do their Evil Deeds; that does not give the government the right to restrict the availability of those items (absent some specific statutory basis for doing so). It’s conventionally referred to as “the Rule of Law.” DHS has absolutely no legal authority (of which I aware, at any rate) to order Mozilla to take this action with respect to a lawfully-made and lawfully-distributed product that has, obviously, any number of perfectly legitimate uses, and their “request” is an outrageous end run around their legal authority. It pisses the hell out of me that they can get away with stuff like this (and that I’m paying them to do it, as a taxpayer).

Mozilla, thankfully, has not complied (this according to Harvey Anderson, a Mozilla lawyer); Mozilla sent DHS a set of pretty reasonable questions about what they were doing (to which DHS has not responded), viz.:

We’ll see if DHS responds. My bet is they won’t. They should really be ashamed of themselves.

[Thanks to Andrew Metcalf for the pointer]

As I’ve noted before on a number of occasions, a possible landmark copyright case is now before the 2d Circuit, Viacom et al. v. YouTube. On behalf of 44 co-signatory law professors, Annemarie Bridy and I wrote an amicus brief urging the court to affirm the lower court’s decision that YouTube is immune from copyright claims unless it has item-specific and location-specific information about infringing postings. The brief – which I think turned out quite well, and is, at the very least, a good example of decent legal prose — is available here. Briefs submitted by other amici (and there are lots of them) are available here.

I’ve reprinted below some of my comments from earlier postings about the case. I could be falling prey to a common syndrome: when you work as an advocate for one side in a case for a while, you begin to believe that you have truth and justice firmly on your side, that the opposing position is outrageous and contrary to all common sense and moral principle . . . . But I really do think this one matters, for the future of the Net.

It was a bit more of an adventure submitting this brief than it should have been — the 2d Circuit does not treat its “amici” in a very friendly fashion. Not only must you be admitted to the 2d Circuit bar to submit an amicus brief — no temporary admissions pro haec vice are permitted — but you also have to be sure to be hooked up to the latest version of the court’s electronic filing system; not huge problem, i suppose if you’re a lawyer or law firm practicing frequently in front of the 2d Circuit, but not something that a law professor, even if admitted to the court’s bar, is likely to be current with. And even if the parties themselves require electronic filing, the court does not – so in addition to getting all the aforementioned ducks in a row, you have to comply with the court’s rather arcane printing rules and deliver 6 hard copies to them. Seems all a bit overly formalized, and a means to discourage, rather than encourage, participation — I mean, they don’t have to even read the briefs that are submitted, so why make it so hard for people to submit them?

And one little humorous side note. As noted here, YouTube has changed its “repeat infringer” policy. The Copyright Act requires, as a pre-condition to asserting the immunity from infringement claims provided in section 512, that a service provider

“has adopted and reasonably implemented, and informs subscribers and account holders of the service provider’s system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers; and

YouTube has had such a policy for a while — more or less a “3 strikes and you’re out” kind of thing. [Indeed, one of the truly outrageous things I learned while working on this brief is that Viacom itself was actually thrown off of YouTube as a "repeat infringer" because its marketing department had posted thousands of files for promotional purposes, and its legal department issued hundreds of "takedown notices" with respect to many of them]. But now they’ll let you come back onto the system if you go to “copyright school” – watch a video and take a copyright exam [The video is pretty good -- good enough that I couldn't tell whether it was YouTube's copyright school or a parody of same . . .]

[thanks to Ben Mishkin and Steven Kim for pointers]
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from earlier postings

YouTube successfully defended itself against infringement claims brought by a host of content providers by asserting the “safe harbor” provisions of sec. 512(c) of the Copyright Act, and the case concerns the interpretation of that provision. The section 512 safe harbors have been of prodigious importance — by giving providers of online applications and services a defense to infringement claims arising out of their users’ activities (e.g., user postings of infringing files on YouTube), it has enabled the (astonishing) growth of “user-generated content” or “Web 2.0″ sites over the past decade — YouTube, Facebook, Craigslist, Tumblr, Twitter, Myspace, Blogger, and on and on and on. At the absurdly high volume at which these sites operate — 250,000 words a minute posted on Blogger, 40 hours of video a minute on YouTube, etc. — the liability risk without a safe harbor of some kind is truly astronomical, running into the billions of dollars a day. So you don’t get a YouTube, or a Facebook, or a Blogger, etc. without something like sec. 512; it’s no accident, as I’ve pointed out before, that all of the largest Web 2.0 sites on the global net are based here in the US. And, among other things, if you don’t have a YouTube, or a Facebook, or a Twitter, Hosni Mubarak is still the President of Egypt.

So there’s a lot at stake in how the 2d Circuit — widely regarded, along with the 9th Circuit, as the source of the most important copyright doctrine — interprets the statute. Precedent up to now (mostly in the 9th Circuit) has (correctly) given service providers very broad protection under the statutory immunity; to make a very long story short, the service providers (like YouTube) have no duty to find infringing material that may be present on their site, or to do anything about infringing material on their site, unless and until the existence of the infringement(s) is brought to their attention by the copyright holder. Once they receive such a notification from the copyright holder (through a detailed set of procedures laid out in the statute), they have to act — removing or disabling access to the offending material (and informing the user that they’ve done so). But without receiving the notice of infringement, they’re under no duty to act, and they’re within the safe harbor if the copyright holder subsequently asserts a claim against them.

The content providers don’t like it, needless to say. They’d like YouTube to, say, take down everything uploaded to the site that is labelled “The Daily Show,” for instance, or “Lionel Messi’s Fabulous Goal vs Arsenal,” on the grounds that they should know of the infringing nature of the postings, without having to be specifically informed of that by the copyright holder. If you want to know why that’s both wrong (as a matter of statutory construction) and absurd (as a matter of public policy), read the brief. [It’s pretty short — 18 pages or so of text — and the prose, of course, is crystalline).

If the 2d Circuit endorses the 9th Circuit position — and I fervently hope that it does — that battle, at least, is probably over; there’s not much copyright doctrine out there where the 2d and 9th Circuits are in agreement but some other circuit (or the Supreme Court, for that matter) takes an opposing view.

For those of you interested in this sort of thing or this issue, I’ve written (along with Annemarie Bridy at U Idaho) a “Law Professors’ Amicus Brief” in the appeal (before the 2d Circuit in NYC) in the Viacom et al. v. Youtube case. You can download it here: http://tinyurl.com/Youtube-Amicus-Brief.

I’ve blogged about this case before. Depending on what the court does, it could well be the most important case concerning copyright on the Net that gets decided this year. The issue couldn’t be much more important. YouTube successfully defended itself against infringement claims brought by a host of content providers by asserting the “safe harbor” provisions of sec. 512(c) of the Copyright Act, and the case concerns the interpretation of that provision. The section 512 safe harbors have been of prodigious importance — by giving providers of online applications and services a defense to infringement claims arising out of their users’ activities (e.g., user postings of infringing files on YouTube), it has enabled the (astonishing) growth of “user-generated content” or “Web 2.0″ sites over the past decade — YouTube, Facebook, Craigslist, Tumblr, Twitter, Myspace, Blogger, and on and on and on. At the absurdly high volume at which these sites operate — 250,000 words a minute posted on Blogger, 40 hours of video a minute on YouTube, etc. — the liability risk without a safe harbor of some kind is truly astronomical, running into the billions of dollars a day. So you don’t get a YouTube, or a Facebook, or a Blogger, etc. without something like sec. 512; it’s no accident, as I’ve pointed out before, that all of the largest Web 2.0 sites on the global net are based here in the US. And, among other things, if you don’t have a TouTube, or a Facebook, or a Twitter, Hosni Mubarak is still the President of Egypt.

So there’s a lot at stake in how the 2d Circuit — widely regarded, along with the 9th Circuit, as the source of the most important copyright doctrine — interprets the statute. Precedent up to now (mostly in the 9th Circuit) has (correctly) given service providers very broad protection under the statutory immunity; to make a very long story short, the service providers (like YouTube) have no duty to find infringing material that may be present on their site, or to do anything about infringing material on their site, unless and until the existence of the infringement(s) is brought to their attention by the copyright holder. Once they receive such a notification from the copyright holder (through a detailed set of procedures laid out in the statute), they have to act — removing or disabling access to the offending material (and informing the user that they’ve done so). But without receiving the notice of infringement, they’re under no duty to act, and they’re within the safe harbor if the copyright holder subsequently asserts a claim against them.

The content providers don’t like it, needless to say. They’d like YouTube to, say, take down everything uploaded to the site that is labelled “The Daily Show,” for instance, or “Lionel Messi’s Fabulous Goal vs Arsenal,” on the grounds that they should know of the infringing nature of the postings, without having to be specifically informed of that by the copyright holder. If you want to know why that’s both wrong (as a matter of statutory construction) and absurd (as a matter of public policy), read the brief. [It’s pretty short – 18 pages or so of text — and the prose, of course, is crystalline).

If the 2d Circuit endorses the 9th Circuit position — and I fervently hope that it does — that battle, at least, is probably over; there’s not much copyright doctrine out there where the 2d and 9th Circuits are in agreement but some other circuit (or the Supreme Court, for that matter) takes an opposing view.

So argued Kenneth M. Stern, a California lawyer; no dice, said the district court in Stern v. Does (C.D. Cal., decided Feb. 10, 2011 but just now made available on Westlaw). No dice, said the court, concluding that the message lacked the modicum of creativity required for copyright protection — because it was so short and dictated by functional considerations — and that the copying was a fair use. Both conclusions seem right to me, though the fair use conclusion is especially clear, given the utter lack of any likely effect on the value of plaintiff’s work.

In fact, the court said that the plaintiff’s claims were frivolous enough to warrant requiring plaintiff to pay attorneys’ fees — a remedy that the Copyright Act allows. (The court concluded that the defendants’ request for fees were insufficiently specific to support an immediate award, but allowed the defendants to refile their request.) The plaintiff is appealing.

Here’s an excerpt from the case, though if you’re interested in the court’s reasoning you should read the whole thing:

Plaintiff is an attorney. In September 2006, Plaintiff retained the forensic accounting firm White, Zuckerman, Warsavsky, Luna, Wolf & Hunt L.L.P. (“White Zuckerman”) to perform a mathematical calculation on behalf of one of his clients. In March 2007, after receiving a bill from White Zuckerman for this work, Plaintiff became concerned that the billed hours were excessive and that White Zuckerman had been churning his client’s file.

Continue reading ‘Forwarding a Sentence-Long Message from a Listserv = Copyright Infringement?’ »

As you probably all know already, on Tuesday Judge Chin (SDNY) rejected the Google Books settlement agreement. [The order and opinion are here] To be honest, I’m not sure I know how I feel about this development. I’ve followed the wrangling over the settlement during the past couple of years, though only out of the corner of my eye, as it were; and I haven’t yet had the chance to study Judge Chin’s order in detail — and, as with many issues of this kind, the devil often is in the details.

But here’s how I think about the Google Books question. I start from the proposition that successful completion of the project would be an incomprehensibly valuable boon to all of humankind. To have (virtually) all the world’s writings, instantaneously accessible from anywhere across the global network . . . what’s not to like about that? The benefits we would all gain from that are unimaginable and incalculable.

Now, there are a set of arguments here — let’s call them the “forward-looking arguments” — that say: Hold on, not so fast on that. There are reasons to think that the project wouldn’t be such an unmitigated good. What happens when Google knows pretty much what everyone is reading? What about Google’s competitors – are they put at an unfair disadvantage if Google is allowed to proceed here?

Those are serious objections, and they do give me pause. To the extent that Judge Chin found these to be problematic in light of the current agreement, I want to read his analysis carefully to see if he persuades me.

There’s another set of arguments against the project — we can call these the “backward-looking arguments.” These go something like this: The settlement is unfair to those authors whose copyright-protected works will suddenly be winging their way around the globe without the copyright holder’s permission. One of the major stumbling blocks to this settlement (and one that a glance through Judge Chin’s opinion indicates had significant weight in his analysis) concerned the so-called “orphan works” — works still protected by copyright, but works whose copyright holders can’t be identified or found. [Copyright protection, of course, lasts so absurdly long under current law that many works authored in the 30s, 40s, or 50s are still protected, though long out-of-print, and identifying the current copyright ownership status for vast numbers of such works is almost impossible]. The settlement agreement would have allowed Google to make certain uses of these orphan works (subject to the copyright holders coming forward, ex post, to “opt out” of the agreement), and the court seems to be saying: We can’t approve that, because that would, in effect, amount to a partial revocation of these copyrights, and only Congress can do that.

To the extent these “backward-looking problems” are the ones that are derailing the project, I’m much less sympathetic, and much more unhappy. Copyright is supposed to “promote the progress of science and the useful arts” – to make us all better off by stimulating the creation and dissemination of valuable works of authorship. It’s not doing that job if, because of the vast uncertainties surrounding questions of copyright ownership (in works that have been around for a long, long time), it is now preventing us from realizing this dream of a truly comprehensive global library. Jefferson had a phrase for this: “the dead hand of the past.” It always tries to control the future, and it is our job not to let it do so unduly. Judge Chin may be right about the institutional competence point — perhaps this is a problem that shouldn’t be handled through private litigation but the legislative process. But if so, I’d like to think Congress would act (though I doubt, given copyright holder clout, they will) to make some provision allowing all parties who wish to bring these works back to the public (not just Google, but anyone who can do this) to do so.

I haven’t had time to examine this in detail, but the Administration’s just-released “White Paper on Intellectual Property Enforcement” looks like a real horror show of major proportions. It contains the Administration’s legislative recommendations regarding a series of Intellectual Property matters, including recommendations to:

“Increase the U.S. Sentencing Guideline range for repeat intellectual property offenders”
“Clarify that, in appropriate circumstances, infringement by streaming, or by means of other similar new technology, is a felony”
“Create a right of public performance for copyright owners for sound recordings transmitted by over-the-air broadcast stations which, in part, will allow copyright owners to obtain overseas royalties that are now denied to them” [Yes, just what we need -- more copyright rights!!]
“Providing a two-level enhancement for defendants with a previous conviction for an intellec-tual property offense.” and, last but not least
“Give law enforcement authority to seek a wiretap for criminal copyright and trademark offenses”

Last week brought the news that the Supreme Court has granted cert in a pretty interesting copyright case case from the 10th Circuit, Golan v. Holder, that promises to raise some important questions at the ever-elusive copyright/first amendment boundary. The background is this: the US signed on to the Berne Convention on Literary Property, the leading multilateral copyright treaty, in 1989. Berne requires signatories to amend their domestic copyright laws in a number of important ways. First, Berne prohibits all copyright “formalities” — things like the requirement that copyright owners register their copyrights in order to obtain protection, or the requirement that you have to put a copyright notice on all distributed copies of copyrighted works. These had long been part of US copyright law, and we (more or less) got rid of them in the 1989 amendments to the Copyright Act, enacted as part of our accession to Berne. Berne also requires, in Article 18, that a country joining the Berne Convention must provide copyright protection to foreign works for as long as protection for those works exists in their country of origin, even if those works had fallen into the public domain in the country joining the Convention.

Many foreign works had fallen out of US copyright before 1989 precisely because their authors had not complied with the formalities in US law — Prokofiev’s Classical Symphony and Peter and the Wolf, Shostakovich’s Symphony 14 and Piano Concerto, Stravinsky’s Petroushka, Hitchcock’s 1932 film “Number 17″, . . . In 1994, as part of the Uruguay round of the GATT (it’s complicated . . . ), the US implemented Article 18 of Berne in the “Copyright Restoration Act,” restoring copyrights in foreign works that had fallen into the public domain in the United States (at least, if they had fallen into the public domain for reasons other than the expiration of their copyright term.

The case has an interesting posture, which bears on what it means. Plaintiffs (represented by the Center for Internet and Society at Stanford Law School — good work!!!) asserted that the restoration of copyright in works that were in the public domain abridged the First Amendment’s free speech guarantee. It’s a strong argument, for various reasons. Once a work is in the PD, anyone may use it in any way, for any purpose — copy it, publish it, perform it, . . . Restoring copyright clearly impinges on that — once copyright is restored, you can no longer perform Petrroushka in public without permission from the copyright holder. It’s hard to see how that does not at least raise an issue deserving of scrutiny under the First Amendment.

That is, however, what the district court initially held, in dismissing Plaintiff’s challenge: that the statute doesn’t even get any “heightened scrutiny” at all under the First Amendment. For this proposition, the court relied on Supreme Court’s opinion in Eldred v. Ashcroft (the copyright term extension case), where the Court did indeed seem to strongly imply that changes to copyright law, though they implicate “speech,” do not get any special 1st amendment scrutiny at all, because copyright already has the 1st Amendment “built in” to it (via the Fair Use defense, the exclusion for “ideas,” and other things like that). implications. So the district court here thought it was following Eldred - but the 10th Circuit reversed and remanded. It said that copyright law CAN implicate the 1st Amendment and trigger heightened scrutiny, at least when congress changes the “traditional contours of copyright protection” in some fundamental way. And that, the court said, is precisely what had happened here.

So back the case goes to the district court, which, heeding the 10th’s Circuit command, imposes heightened (“intermediate”) scrutiny — does the measure “advance important governmental interests unrelated to the suppression of free speech” without “burdening substantially more speech than necessary to further those interests.” — and finds that the statute does not meet the test. Back it goes to the 10th Circuit, where a different panel reverses again – holding that, while intermediate scrutiny IS appropriate, the statute here meets it.

Dollars to donuts says that the Supremes affirm — they have not shown themselves to be very friendly to these First Amendment arguments in the copyright context (though with Breyer, J., who has shown an interest in the First Amendment constraints on copyright, dissenting)). In fact, probably the only question that will really be interesting here is whether the Court endorses the notion that there is EVER a time when First Amendment scrutiny will be applied to a modification of copyright law, or whether Eldred really does stand for the principle that copyright law is, in some fundamental sense, immune from First Amendment attack. I’m hoping they do (though afraid that they may not).

Over at the New York Times, yesterday, Scott Turow and James Shapiro, both of the Authors’ Guild, penned a short piece in defense of stronger copyright law under the title “Would the Bard have Survived the Web?”

“Copyright, . . . linking authors, the printing press (and later technologies) and the market, would prove to be one of history’s great public policy successes. Books would attract investment of authors’ labor and publishers’ capital on a colossal scale, and our libraries and bookstores would fill with works that educated and entertained a thriving nation. Our poets, playwrights, novelists, historians, biographers and musicians were all underwritten by copyright’s markets.. . .

Yet today, these markets are unraveling. Piracy is a lucrative, innovative, global enterprise. . . . The rise of the Internet has led to a view among many users and Web companies that copyright is a relic, suited only to the needs of out-of-step corporate behemoths. Just consider the dedicated “file-sharers” — actually, traffickers in stolen music movies and, increasingly, books — who transmit and receive copyrighted material without the slightest guilt.

They are abetted by a handful of law professors and other experts who have made careers of fashioning counterintuitive arguments holding that copyright impedes creativity and progress. Their theory is that if we severely weaken copyright protections, innovation will truly flourish. It’s a seductive thought, but it ignores centuries of scientific and technological progress based on the principle that a creative person should have some assurance of being rewarded for his innovative work. . . .”

To begin with, how odd is it that they’d invoke Shakespeare in this context? “We need stronger copyright or else we won’t get the next Shakespeare” is like arguing “We need the designated hitter, or how will we ever get the next Babe Ruth?” In a copyright-free world — not that I’m advocating such a thing, but hey, you brought it up — we’ll get the next Shakespeare the way we got the last Shakespeare, in a copyright-free world. The first copyright statute, the Statute of Anne, wasn’t passed until 1709, long after Shakespeare was a-moulderin’ in the grave. [That's what we need a name for - this kind of absurdly misplaced historical argument]

I won’t go on about the larger, more substantive issues they raise, only because I’ve written about it a zillion times in the past. As Barack Obama reportedly said, at the very end of the last conversation he had with Hosni Mubarak before the latter resigned: ‘”I respect my elders. And you have been in politics for a very long time, Mr. President. But there are moments in history when just cause things were the same way in the past doesn’t mean they will be that way in the future.”

But one point they make deserves a more extended reply. Turow and Shapiro voice their support for the bill that was recently introduced in the Senate – the “Combatting Online Infringement and Counterfeits Act” — which would, in their words “target Web sites dedicated to stealing American intellectual property.” COICA, as the bill is known, is a monstrosity, another example of the copyright industries’ attempts to bend the Internet to their private gain. I blogged about it here, and authored a “Law Professors’ Letter in Opposition” posted here – and penned this op-ed piece this past weekend (which the Times chose not to publish):

How Not to Combat Online Infringement
David G. Post

On February 16, the Senate Judiciary Committee will hold hearings on S.3804, the “Combating Online Infringement and Counterfeits Act” (COICA). The bill authorizes the federal courts to issue injunctions against Internet sites that are “dedicated to infringing activities” – i.e., sites “primarily designed,” or with “no demonstrable commercially significant purpose or use other than,” to offer goods or services in violation of the federal copyright or trademark laws, based upon nothing more than an application by the Attorney General and an assertion that the sites in question are operating unlawfully. The injunctions would not actually be directed at the websites themselves (many of which may be located overseas beyond the jurisdiction of US courts), however, but at their domain names; they would require removal of a site’s domain name from the Internet’s central domain name registry databases, and from the “routing tables” used by Internet Service Providers to process Internet messages and route them to their appropriate destination.
If enacted into law, COICA would fundamentally alter U.S. policy towards Internet speech, and not for the better. Along with 50 other law professors, I signed a letter (available at http://tinyurl.com/COICALetter) urging the Senate to reject the bill, because of its dangerous consequences for free expression online, for the integrity of the Internet’s domain name system, and for the United States’ ability to support Internet freedom abroad.
To begin with, COICA authorizes the suppression of Internet speech without any meaningful opportunity for any party to contest the allegations of unlawful content. By styling these as actions to “seize” domain names (as opposed to actions against the individual(s) performing the allegedly illegal acts), the bill avoids the inconvenience of providing the affected party an opportunity to defend his actions or to receive a final judicial determination, after a full adversary proceeding, that the website in question contains infringing material. Relying solely on prosecutorial allegations of a violation of US law, Internet websites around the world would go “dark” – their content unavailable to Internet users anywhere because their domain names will no longer “resolve” properly in the central databases.
Not only does this violate the offending parties’ rights to fundamental due process and free speech – adequate notice and an opportunity to be heard before a neutral judge in an adversary proceeding before content is removed from circulation – it will inevitably suppress large amounts of entirely lawful speech, “burning down the house to roast the pig,” as the Supreme Court once put it. Recent “seizures” of domain names hosting allegedly infringing content by agents of the Department of Homeland Security, operating under the civil and criminal forfeiture provisions of federal law, illustrate the difficulties. Among the websites whose domain name was “seized” in a recent sweep was Rojadirecta.org, a Spanish site offering links to videos of sporting events available on the Internet; unbeknownst (presumably) to the federal agents or the judge issuing the seizure order, court proceedings over the course of several years in Spain had found that Rojadirecta.org was not infringing anyone’s copyright through its listings of available content.
By enlisting private ISPs to block Internet sites solely on the basis of their content, COICA would also represent a dramatic retreat from the US’s long-standing policy of allowing ISPs to focus on empowering communications by and among users, free from the need to monitor, supervise, or play any gatekeeping or policing role with respect to those communications. It is a policy that has not only helped make the United States the world leader in a wide range of Internet-related industries, but it has also enabled the Internet’s uniquely decentralized structure to serve as a global platform for innovation, speech, collaboration, civic engagement, and economic growth.
And perhaps most troubling of all, COICA would compromise the United States’ ability to continue to serve as a bulwark against censorship and other threats to freedom of expression, freedom of thought, and the free exchange of information and ideas on the Internet. At a time when dozens of foreign governments have dramatically stepped up their efforts to censor Internet communications in order to suppress legitimate dissent, to marginalize religious minorities, and to prevent citizens from obtaining information about the world outside their borders – efforts which, in light of the recent events in Egypt and Tunisia, are likely to intensify – the United States has always been a voice, and often the only voice, opposing these efforts. Our ability to defend the principle of the single global Internet – the Internet where all of humanity has equal access to knowledge and ideas, the Internet that looks the same to, and allows free and unfettered communication between, users located in Shanghai and Seattle and Santiago, free of locally-imposed censorship regimes – will be deeply compromised by enactment of S. 3804, which would enshrine in U.S. law for the first time the contrary principle: that all countries have a right to insist on the removal of content, wherever located, from the global Internet in service of the exigencies of local law. Nothing limits the application of this principle to copyright or trademark infringement, and nothing limits the application of this principle to actions by the United States; when all countries exercise this prerogative in support of their local legal regimes, as they surely will, we will have lost – or, more properly speaking, we will have destroyed – the single global inter-connected communications platform that we have built over the past several decades and that holds out so much promise for the improvement of human society across the globe.

From Rosenberg v. Zimet, 2010 N.Y. Slip Op. 20516 (Dec. 21):

This decision grapples with a struggle for the ownership and publication of the contents of “Schindler’s List.” As much of the public knows from the book and the movie, both titled “Schindler’s List’, by use of the List setting forth the names of his Jewish employees, Schindler was able to save hundreds of them from the death camps and ovens of the Holocaust.

Facts

The Court, having issued a temporary restraining order barring the sale and publication of the List’s contents, now addresses the instant motion for a preliminary injunction for the same relief. According to plaintiff’s affidavit, in the autumn of 1993, Schindler’s suitcase containing thousands of photos and documents, including the List of employees that Schindler presented to the S.S., stating that they were necessary to assist in his war effort of manufacturing ammunition for the German Army. The List is now at the Holocaust Museum Yad Vashem in Israel.

Another List was found in the boxes of materials collected by an author named Kennaly. This List was given to Kennaly by Leopold Pfefferberg, a worker in Schindler’s factory and depicted in the movie as the person who brought new recruits to Schindler for inclusion in the List. While differing slightly from the List at Yad Vashem, it is considered authentic, and is the object of this lawsuit.

When Schindler died, his wife, Emilie, was declared to be his sole heir. After Schindler died, Emilie met plaintiff Marta Erika Rosenberg, then an author of several books about Schindler. They became good friends, and during their relationship, Emilie assigned the contents of the suitcase, including the List, to Rosenberg. When she died, Emilie left a will nominating Rosenberg as her only heir.

The defendant is Gary Zimet, a principal of co-defendant M.I.T. Memorabilia, a dealer in historical items. It appears that one Nathan Stern was given an original Schindler’s list from his uncle who was Schindler’s accountant. Stern then retained defendants to seek a buyer for the List.

Continue reading ‘Copyright Law and Schindler’s List (the List, not the Movie or the Book)’ »

So let me get this straight: according to the Las Vegas Sun, the Fab Four, a Beatles ‘tribute band’ [a lousy generic descriptor for bands like this, imho - how about 'murder band' instead], is suing the Fab 4, a different Beatles ‘tribute band,’ alleging that The Fab 4 is “essentially identical in sound and appearance” to The Fab Four. Imagine that — why, they’re trying to cash in on the popularity of another band!

[Actually, all jokes aside, the Fab Four might have a credible cause of action here -- but only for trademark infringement, I would guess. Insofar as the Fab Four sound just like the Beatles, they have no copyright claim against anyone copying their sound - both because they have no "original" work to protect via copyright, and also because copycats can plausibly argue that they're copying the Beatles, not the Fab Four. But the name "The Fab Four" might well be a protectable trademark, infringed by "the Fab 4."]

[Thanks to Mark McKenna for the pointer]

A while back, I posted my early reaction to the SDNY’s decision in the long-running Viacom lawsuit asserting secondary copyright infringement on the part of Youtube. Here’s what I said then:

The case was/is enormously important — Youtube was asserting that it was immune under the Digital Millennium Copyright Act (specifically, Sec. 512(c)) from copyright infringement claims arising out of user postings. Sec 512(c) sets up a “notice-and-takedown” scheme under which website owners are immune from third-party infringements as long as they “respond expeditiously” when notified of specific infringements by copyright holders. Viacom was relying on a portion of the statute that denies the immunity if the website operator has “actual knowledge that the material . . . on the system or network is infringing” OR if “in the absence of such actual knowledge, [it is] aware of facts or circumstances from which infringing activity is apparent . . .”

The critical question in the case was: given that it is a matter of common knowledge that there’s lots and lots and lots of infringing activity on Youtube, does that make the infringing activity “apparent”? If so, the 512(c) immunity is unavailable for Youtube. The court — correctly, in my view — said no, it does not. The “facts and circumstances” to which the statute refers must be of “specific and identifiable infringements of particular items. Mere knowledge of prevalence of such activity in general is not enough.” Sec. 512, and the other immunities provided in the Act for online conduct, “place the burden of policing copyright infringement — identifying the potentially infringing material and adequately documenting infringement — squarely on the owners of copyright. We decline to shift a substantial burden from the copyright owner to the provider . . .”

One could easily argue that these copyright immunities in the DMCA were a critical feature allowing “Web 2.0″ and “user-generated content” sites (like Youtube, Facebook, Myspace, and many, many others) to flourish. This opinion (though it will probably be appealed) goes a long way to protecting those sites from further attack by the copyright police. Nice work, Judge Stanton!

In the aftermath of the decision, there’s been, predictably, a backlash from commentators inside (and occasionally outside) the entertainment industry, arguing either that the decision’s not really that important, or that it’s just plain badly reasoned. Ben Sheffner’s piece over on Copyrights & Campaigns criticism of the opinion is thoughtful, but ultimately wrong-headed. Sheffner makes an interesting observation:

Section 512(c) of the DMCA identifies two triggers for the obligation of the host to remove the subject material (if it wants to maintain the safe harbor). First is actual knowledge of infringement (which can be obtained through receipt of a facially valid takedown notice pursuant to Section 512(c)(3)). Second is where the host becomes “aware of facts or circumstances from which infringing activity is apparent.” Id. § 512(c)(1)(A)(ii). This latter situation is known as “red flag” infringement; the idea is that the host can’t claim the safe harbor if red flags are being waved in its face, suggesting the obvious presence of infringing activity. The Ninth Circuit gutted the red flag doctrine in Perfect 10 v. CC Bill, specifically in this thoroughly unconvincing paragraph:

Perfect 10 alleges that CCBill and CWIE were aware of a number of “red flags” that signaled apparent infringement. Because CWIE and CCBill provided services to “illegal.net” and “stolencelebritypics.com,” Perfect 10 argues that they must have been aware of apparent infringing activity. We disagree. When a website traffics in pictures that are titillating by nature, describing photographs as “illegal” or “stolen” may be an attempt to increase their salacious appeal, rather than an admission that the photographs are actually illegal or stolen. We do not place the burden of determining whether photographs are actually illegal on a service provider.

In other words, under Ninth Circuit precedent…, having material identified by its poster as “illegal” and “stolen” is not a red flag that infringing activity is taking place. One is left to wonder whether the panel would have ruled the same way had actual red flags been waved in the defendants’ faces.
Judge Stanton, incorrectly in my view, adopted CCBill’s holding without much analysis, further rendering red flag infringement a dead letter. The statute (and legistlative history) clearly indicate that some form of knowledge beyond that imparted via DMCA notices qualifies as knowledge of “facts or circumstances from which infringing activity is apparent,” thus triggering a site’s takedown obligation (on pain of losing the safe harbor). But after reading Judge Stanton’s opinion several times, I simply have no idea what would actually constitute such “red flag” knowledge. And, again, his opinion does not even scratch the surface of the evidence presented by Viacom on this issue, see, e.g, Viacom Br. at 5-24, 50-56, and explain why none of it would raise a red flag for a reasonable service provider in YouTube’s position.

Sheffner’s absolutely right — the courts are indeed in the process of making the “red flag” exception disappear. And good riddance to it.

[Incidentally, there should be a name for this rhetorical phenomenon -- where an opponent gives you, in the course of his criticism of a decision, ammunition for strengthening and even expanding its rationale. You see it a lot in dissenting opinions: "Under the majority's reading of sections 543(c)(1)(ii)--(vi), all a defendant need show to escape liability is blahblahblah . . ." - and then defendants start to argue (even citing to the dissent) that because they can show blahblahblah, they shouldn't be liable.]

Sec. 512 is a powerful defense precisely because it sets up a simple procedure: copyright owners find infringing material, they notify the host, the host takes it down, and the host is immune from liability. All steps along the way easily verifiable. “State of mind” inquiries — wasn’t it “apparent” from all the surrounding “facts and circumstances” that such-and-such was infringing? shouldn’t the host have known that? — are out of place here; among other things, they’re preposterously ill-suited to the scale of this problem. It would, I read recently, take you 15 years to watch the content uploaded to Youtube in a single day. What is, or is not, apparent to Youtube’s operators from this avalanche of material is not something we want to be arguing about, and it is not something I want web hosts to be worrying about. Judge Stanton got it spot on — the web host has no duty to act until the copyright owner identifies specific infringing material.

Do we want a powerful defense like this against claims of secondary copyright infringement on the Net? Damned right we do. I made the point in my earlier posting, and I think it’s interesting enough to reiterate. Virtually all of the wildly-successful 3d-party content sites on the Net — Youtube, Facebook, Twitter, Myspace, Flickr, Google News, Wikipedia, Blogger, . . . — come out of the U.S. Why is that? Why didn’t some college kid in the UK, or Italy, or Brazil, come up with the idea for Facebook? There are, I’m sure, lots and lots of factors at play — but I’m convinced that the existence of the immunity in sec. 512 in our copyright law is one of them. Even if Simon or Allessandra or Joao had the idea, and the technical wherewithal to pull it off, they’d be crushed before they got started – by many things, perhaps, but copyright liability is high on that list of crushers. Sec. 512 has meant that you can put your startup on line — even go to a bank or a VC and get financing — without worrying about potentially devastating copyright infringement liability. We don’t have many legislative successes in the copyright arena, so we should celebrate the ones we have.

[Thanks to Justin Gordon for one of the pointers]

Looking for opportunities to segue from my recent obsession with all things soccer-related to the more mundane matters of copyright law that I usually focus on here on the VC, and lo and behold . . . . Two opportunities, actually:

1. For the “Content Owners, Knee Jerk Protection Responses Of” file: I found the link to the Youtube clip of the horrible foul by Nigel DeJong on Xabi Alonso in Sunday’s final game, which I wanted to embed in one of my postings, but by the time I got there FIFA’s copyright police had already gotten YouTube to take the clip down. They’re within their rights, I know — though query how much copyright “originality” adheres in the broadcast file of the game, and why we usually unthinkingly assume that the broadcast is a protected work — but more to the point, does FIFA really think that they’re harmed in some way by the availability of the clip?

2. In his nice summing up of the Cup final, Jeff Klein at the NY Times blog, writing to congratulate the South Africans for a job well done in hosting the games, writes about one of “the many wonderful things South Africa has given the world (not counting vuvuzelas),” the song “The Lion Sleeps Tonight.” Not only does he include a link to the Youtube (audio) clip of the original 1939 South African recording (by Solomon Linda and the Evening Birds), as well as a link to the extraordinary article by South African journalist Rian Malan (“In the Jungle: How American music legends made millions off the work of a Zulu tribesman who died a pauper” lovingly detailing the amazing history of the recording (and the many, many, many copyright squabbles that erupted as its popularity spread around the world). Great stuff . . .

[thanks to Jerry Lewis for the pointer]

Judge Stanton in the SDNY has granted Youtube’s motion for summary judgment in in the long-running copyright infringement lawsuit brought by Viacom (and, in a nice soccer-related twist, The English Football Association’s Premier League was another (losing) plaintiff). [The full text of the decision is here]

The case was/is enormously important — Youtube was asserting that it was immune under the Digital Millennium Copyright Act (specifically, Sec. 512(c)) from copyright infringement claims arising out of user postings. Sec 512(c) sets up a “notice-and-takedown” scheme under which website owners are immune from third-party infringements as long as they “respond expeditiously” when notified of specific infringements by copyright holders. Viacom was relying on a portion of the statutory immunity, which denies the immunity if the website operator has “actual knowledge that the material or an activity using the material on the system or network is infringing” OR if “in the absence of such actual knowledge, [it is] aware of facts or circumstances from which infringing activity is apparent . . .”

The critical question in the case was: given that it is a matter of common knowledge that there’s lots and lots and lots of infringing activity on Youtube, does that mean that “infringing activity is apparent” and that, accordingly, the 512(c) immunity is unavailable for Youtube? The court — correctly, in my view — said no, that’s not what it means. The “facts and circumstances” to which the statute refers must be of “specific and identifiable infringements of particular items. Mere knowledge of prevalence of such activity in general is not enough.” Sec. 512, and the other immunities provided in the Act for online conduct, “place the burden of policing copyright infringement — identifying the potentially infringing material and adequately documenting infringement — squarely on the owners of copyright. We decline to shift a substantial burden from the copyright owner to the provider . . .”

One could easily argue that these copyright immunities in the DMCA were a critical feature allowing “Web 2.0″ and “user-generated content” sites (like Youtube, Facebook, Myspace, and many, many others) to flourish. This opinion (though it will probably be appealed) goes a long way to protecting those sites from further attack by the copyright police. Nice work, Judge Stanton!

[Thanks to Justin Gordon for the pointer]

I’ve been remiss, as the VC’s (sort-of) copyright/Internet law guy, in not commenting previously about a truly outrageous bit of executive branch over-reaching on Hollywood’s behalf. I am referring to the ongoing negotiations about ACTA, the multilateral “Anti-Counterfeiting Trade Agreement.” [See Jonathan Adler's posting earlier today about ACTA here] The US Trade Representative’s office has been conducting these negotiations entirely in secret (on some ridiculous trumped-up ‘national security’ rationale) for several years now on this Agreement; a current draft was recently leaked to the press, and it confirms many peoples’ worst fears. Here’s my attempt at a summary of what’s going on — if you’re interested in more details (and I hope you are), I’ve listed at the end of this posting some excellent sources of further information.

ACTA’s goal is to tighten up global intellectual property enforcement. Though it’s labeled an “anti-counterfeiting” agreement, which might make you think that it’s about international trade in counterfeit goods (fake Louis Vuitton handbags, unauthorized Viagra tablets, and the like), it covers much, much more than this; what it is really about is the tighter enforcement of copyright law on the Net. It is outrageous in substance, and in process.

Process first. There are many divergent views, of course, about what should be done about international copyright law and copyright enforcement in the Internet age. Some reasonable people believe that copyright needs strengthening; other reasonable people (like me) disagree. But that’s just the normal give-and-take of debate over a contentious issue, and it can only (and should only) be resolved the way such debates are always resolved in a democratic society — i.e., openly and with full public comment and discussion. It’s hard to know, then, which is more appalling: the fact that the Obama Administration has conducted the ACTA negotiations in secret, or that it has indicated that it plans to adopt the final Agreement as an “Executive Order,” one that does not require submission to or ratification by the Senate (or any Congressional action whatsoever) to become effective.

I cannot imagine what justifications the Administration might proffer for this affront to our constitutional law-making schemes. [Larry Lessig and Jack Goldsmith have an op-ed in today's Washington Post about this, which was the subject of Jonathan's earlier posting]. Those of us who follow copyright law have been here before, and we know what’s coming: the President signs the Agreement, and then changes to US Copyright law are introduced into the Congress and supporters will say something to the effect that the changes are required in order to bring our law into harmony with international norms and with our international obligations. It happened during the run-up to the 1998 Digital Millennium Copyright Act, and it will, I promise you, happen again here. It amounts, in effect, to presidential law-making, and if it isn’t (as Lessig and Goldsmith argue) unconstitutional, it damn well should be.

None of this would be of too much concern were the Agreement — as far as we can tell, given the veil of secrecy the Administration has thrown around it — full of substantively bad ideas and lousy law. Margot Kaminsky, over on Balkinization, has a good summary of the major points of the Agreement. Among them:

1) Paragraphs 2 and 3 mandate a statutory damages provision in civil copyright law, as under US law — so that copyright holders, even without the need to demonstrate any measurable harm whatsoever, can recover awards thousands of times greater than any possible damage they may have suffered.

2) ACTA Art. 2.5 mandates an especially swift response from courts in copyright infringement cases — nice for Hollywood, not so nice for everyone else.

3) IP Enforcement at the Border. The current draft contains a number of provisions that will allow – and in some cases mandate — more vigorous searching (of laptops, iPods, etc.) and seizing of devices containing copyright infringing material. The de minimis threshold for the quantity of goods that can be seized at the border, as set forthin the the TRIPS Agreement (the “Trade-Related Intellectual Property” treaty that became part of the GATT Trade Agreement) will be lowered; a potentially injured party may apply for the suspension of the release of potentially infringing goods for one year from the date of application; the Agreement also permits Ex Officio action at border crossing (i.e., seizure of goods by customs officials without any complaint being filed); mandating the release of “personally identifying information” of suspected infringers to copyright holders, even without any finding of actual infringement.

4) Expanding the definition of Criminal Copyright Infringement. ACTA expands the international definition of criminal copyright infringement to explicitly include Internet “piracy” done for personal benefit alone. Under TRIPS, countries must hold a person to have committed an act of criminal copyright infringement if he or she has willfully infringed on a “commercial scale”, which was understood to mean involving sale to others. ACTA expands the international definition of “commercial scale” to include “private financial gain,” and explicitly includes “significant willful infringements that have no direct or indirect motivation of financial gain.” Insofar as it is VIRTUALLY IMPOSSIBLE TO DO ANYTHING ON THE INTERNET WITHOUT INFRINGING SOMEONE’S COPYRIGHT, this will play serious havoc with the international legal system. Oh yes — and it mandates that “penalties that include actual sentences of imprisonment as well as monetary fines.”

5) ACTA member countries will be required to provide for third-party (Internet Intermediary) liability. This is not required by any of the major international IP treaties – not by TRIPS, nor the WIPO Copyright and WIPO Performances and Phonograms Treaty. However, US copyright owners have long sought this. (For instance, see page 19 of the Industry Functional Advisory Committee report on the 2003 US- Singapore Free Trade Agreement noting the need for introducing a system of ISP liability). (Previously available at http://www.ustr.gov/new/fta/Singapore/advisor_reports.htm.)

Second and more importantly, ACTA will include some limitations on Internet Intermediary liability. Many ACTA negotiating countries already have these regimes in place: the US, EU, Australia, Japan, South Korea. To get the benefit of the ACTA safe harbors, Internet intermediaries will need to follow notice and takedown regimes, and put in place policies to deter unauthorized storage and transmission of allegedly copyright infringing content. However, contrary to current US law and practice, the US text apparently conditions the safe harbors on Internet intermediaries adopting a Graduated Response or Three Strikes policy — disabling Internet access for anyone found to have been infringing three times (whether or not that was a judicial finding or merely in an administrative proceeding)

There’s more (see below). But even this summary makes it clear that, once again (see Clinton Administration) the Democratic Party has caved in to Hollywood’s demands regarding intellectual property enforcement. As David Fewer of the Canadian Internet Policy and Public Interest Clinic and the University of Ottawa noted, “if Hollywood could order intellectual property laws for Christmas what would they look like? This is pretty close.”

It’s time to fight back. There are some wonderful resources out there coordinating what one hopes will become a global effort to beat this monster back. Here are some of the better sites I’ve found:

AU’s Program on Information Justice and Intellectual Property has a major collection of papers, reports, and other ACTA-related items here

Michael Geist, up in Canada, has been following the ACTA debates for some time and has a number of useful contributions on his blog, e.g. here and here

Public Knowledge’s ACTA Page

Electronic Frontier Foundation’s ACTA page