IPSC Panel 14 – Copyright Authorship & Ownership

Timothy J. McFarlin, A Copyright Ignored? Mark Twain, Mary Ann Cord, and the Meaning of Authorship

Twain used the story of formerly enslaved cook Mary Ann Cord, changing her name to Aunt Rachel. Told story “repeated word for word as I heard it.” Letter: “I have not the altered the old colored woman’s story except to begin it at the beginning, instead of the middle, as she did—and traveled both ways.” He said it had no humor in it (recounted her history, including seven children who were separated from her by enslavers). He also sets the scene, so 20% is that, but 80% is her words as he remembered them.

Taking him at his word: Did Twain infringe her common-law copyright? Would that still exist today? [Federal preemption.] Atlantic Monthly first published Twain’s work, credited to him alone, in 1874. Searching for any surviving descendants.

Cord told Twain the story in NY, which is governed by Hemingway’s Estate v. Random House (NY Ct App 1968). Twain thought he should have ownership of his lectures—“my lecture was my property.”

No evidence of express consent; is telling it in front of him implied consent for him to publish it in his name w/no payment? Seems unlikely. Twain gave her a signed & inscribed copy after publication, which descendants donated to UMd decades back. Inscription: “to Aunty Cord with his kindest regards,” says it’s a “libelous portrait” but well meant; perhaps referring to stereotypical illustration that accompanied publication.

If no consent, then arguably no fixation, then no federal preemption under 301(b). Adverse possession doesn’t fit b/c of lack of exclusivity. Statute of limitations/laches has been watered down federally by Petrella, but perhaps NY state court would apply it more strictly—or could accept a claim for equitable relief, like attribution, going forward. Unsettled; hard to say Cord & family intentionally or even negligently sat on their rights. Did Twain make fair use? There’s some transformation in organization; used entire work/market substitute so Cord wouldn’t be able to sell her narrative a publisher. If a household worker had listened to Twain tell a story and published it, would we think it was fair use?

Crux: was Cord an author? Fits into “slave narrative” genre, which influenced Twain. Twain called it “a curiously strong piece of literary work to come unpremeditated from lips untrained in the literary art.”

Betsy Rosenblatt: 2 questions worth separating—is Cord an author and is Twain an author are different important questions. They’re both authors. What do we do with that? It’s not clear that giving Cord’s estate ownership would be social justice, but that’s a question worth asking.

Shani Shisha, Copyright Pragmatism

Formalities provoked a strong pragmatic reaction from courts. Prototypical 19^th case: Publishing agreement is silent on ownership; publisher complies w/formalities and author doesn’t. The choice is invalidate the © for failure to comply with formalities, or hold that author implicitly assigned the © to the publisher, saving the © in its hands. Problem: statute appeared to require written assignments, recorded in clerk’s office. Determined to prevent forfeiture, courts found—often on very thin evidence—that authors implicitly transferred rights, defying statute. Pulte v. Derby: Author didn’t want a 3d edition published; publisher said it was the owner, court agreed because, though the agreement was silent, without publisher’s efforts to comply, the © would have been abandoned to public. Publisher thus got the © and the evidence of that was published “under the eye of the complainant. He, therefore, sanctioned it.”

There’s a parallel line of cases reaching the opposite conclusion when compliance w/formalities isn’t at issue. In some contexts (e.g., paintings), courts effectively flip the default; there’s an assumption of assignment unless the parties agreed otherwise. SCt provides an ex post rationalization: before the author registers the rights, the author doesn’t have a ©, so the statutory requirement of written assignment doesn’t apply before registration.

To prevent forfeiture, some courts create equitable co-ownership: Registrant is the formal proprietor, but author is equitable co-owner and there’s a constructive trust w/registrant trustee on behalf of author.

What should we make of this? First, tradition of aggressive pragmatism turning almost entirely on forfeiture; courts laundered facts and defied statutory directives. Also, issue of doctrinal drift—rules on implicit transfer grew from this specific context. And we should be talking more about implied permission, not © ownership per se. The court understood that what the author meant to do was to give the publisher an implied license to use/distribute work; given the risk of forfeiture, they had to frame these facts as an issue of assignment.

Zvi Rosen: Wheaton v. Peters starts out very formalist—you didn’t separately deliver the copies that you delivered to the gov’t, so no protection. Signed letter from Librarian of Congress wasn’t enough: very formalist. 1834 Act didn’t make written assignment mandatory, just rules for bona fide purchases. These aren’t copyright cases, but common law copyright cases—courts are using assignment rules b/c they think they aren’t statutory cases. So you should go more into common law/statutory distinction. Copyright Office had a report on contributions to periodicals in the 1960s—there was an old case saying that there was no ©, which made everyone unhappy.

A: my point is exactly that: that these cases are about contracts/implied consent. A lot of them involve courts thinking about statutory copyrights. Courts look to the statute, understand the statute to be controlling, but still do this. Definitely true that they weren’t entirely pragmatic. Sometimes formalities compelled forfeiture. As for 1834 Act, it did say an unrecorded assignment was fraudulent and void—and these were read into the contracts by the courts ex post. [Rosen says: void against subsequent BFP, not void in general]

Michal Shur-Ofry: do we see a larger trend of shift between pragmatism and formalism in other areas of the common law?

Sarah Polcz, Coauthorship for Minor Contributors: Empirical Evidence of Efficiency

Focusing on songs. Rules about what counts as coauthorship used to be good for songs, bad for movies; now they’re good for movies, bad for songs. Minor contributors to films would likely have qualified as coauthors under existing law; courts thus changed the law. [Interesting characterization; courts themselves wouldn’t have said they were changing anything, but that’s certainly not dispositive!] New test: coauthor must have had control over the whole work.

Some scholars say default ownership share should be proportional to contribution. In songwriting, that’s not how people prefer splits. Of 1.2 million cowritten songs, 63% of musical groups treat lesser contributors equally. But maybe an inefficient norm has taken hold. No impact on # of albums released. Equal credit=much more likely to be in top decile of sales, highly significant even controlling for other factors. Coauthorship for lesser contributors significantly predicted that a band that had one gold album would go on to have other gold albums.

Providing evidence against courts’ key empirical assumption that equal shares for lesser contributors will harm creative works via demotivating majority contributors. Equal rewards for lesser contributors are actually positive; creators’ preferences are driven by prior relationships. These results can guide creators and attorneys even in the absence of congressional or judicial action.

Equality and friendship are linked. Role labels help us organize relationships. Balance in an equality relationship depends on equality in allocation, but not on measuring contributions. People strongly desire certain relationships to be equality-based. Market pricing model focuses on measuring contributions and shapes other relationships. They’re incommensurable. Equality is a specific moral demand, not about generosity/asymmetry.

Prior friendships impact whose contributions count and what they’re worth. Prior friendship significantly influences split allocation where the hypo is that subject writes a song and other person provides suggestions and refinements. If they started a band with a friend, nearly 70% preferred equal split, while under 50% picked an equal split when it was not with a friend. Those who chose equality, whatever condition they were in, used equality matching (which isn’t limited to friendship). They know they’re mostly responsible for the song, but feel a moral relationship dominates.

In the gold record set, coded prior friendship or none. For uneven songwriting contribution bands, most significant factor for equal shares was prior relationship. Stable over time though magnitude of effect may change over time.

Friendship can help us predict whether equal shares would be preferred. Should replace control doctrine with industry-based rules that can provide predictability.

Andrew Gilden: does friendship mean friendship or intimate connection—dating, family

A: it’s a peer relationship. Used public data on whether they said they were friends, neighbors, schoolmates, preexisting peer relationship before the economic venture. Initially coded family members differently but there was no difference—they were almost all siblings, and they were peer relationships.

Rosenblatt: compare credit to avoid copyright disputes. Credit might have a different relationship to quality and friendship. People may be willing to share proceeds if they’re already pretty popular. Ed Sheeran already has money from “Shape of You.” Maybe music is better and therefore more popular if the people making it already know each other.

A: Interesting result: hard to renegotiate an initial split, and people became friends when they spent all that time together, but didn’t necessarily renegotiate.

Andres Sawicki: effects of nonmonetary compensation? Usually disproportionately allocated across band members—lead singer/guitarist versus bassist/drummer. So how does that dimension factor in; are they spitting the financial proceeds in ways that are balanced in the fame dimension?

What else might be driving success? How long the people have been making music together?

A: controlled for a lot of that, including who gets the lion’s share. Guitarist who is the songwriter may be more reluctant to split equally with the main singer.

Chris Buccafusco: might be able to tease out causality—does unequal share degrade friendships? How do the bands persist or not over time?

Trevor Reed: why?

A: some people who didn’t share equally said that they didn’t want to share royalties so they could pursue side hustles; if they shared equally then the group would want their full time commitment, which might be related to prior relationships.

Eva E. Subotnik, Dead Hand Guidance: Deconstructing the Posthumous Control of Visual Art

Following aesthetic instructions after death: law and theory. There don’t seem to be many clearcut examples of visual artists trying to micromanage work posthumously; more literary examples. But there does seem to be need/desire for more guidance to be given by artists in that successors want to have that guidance. We should encourage artists to be more specific but not to create binding instructions; guidance is not the same thing. Literary and visual art works are not sufficiently distinct to justify different treatment; enforcing interests from the grave can create conflicts with ©. E.g., can parts of a triptych be reproduced separately? Living generations are often not interested in fulfilling those wishes, making them practically unenforceable (gave Van Gogh virtual exhibit as an example); should not misrepresent to artists the likelihood of specific instructions being binding.

Guy Rub: sometimes it can be helpful for the artist to blame “the lawyers” or “the business” for control claims and perhaps vice versa?

A: these companies tout themselves as helping artists/taking work out of their hands. E.g., advice to reserve one piece of art per year or series to have a representative sample of your work that you could keep as a collection. Business of managing visual artists’ estates has just seemed to explode, and it’s not entirely clear why.

Bita Amani: Theberge case in Canada—transferred authorized paper backed posters to canvas for resale. Deals with © and moral rights, first sale, users rights.

Guy Rub, The Challenges of Posthumous Moral Rights

Exist in Europe, but not as such in US, except for works created & never sold before VARA’s effective date; coauthored work where an author remains alive; the year in which the artist dies. Presumably, the heir can sue, maybe. Probably can waive it too. Found one case in which deceased coauthor’s heirs sued w/the living coauthor.

Five states provided postmortem rights before VARA; assumption was that states would continue to do so. That was a compromise. No state has joined those five, and they’re rarely used. One decision found: a failed California claim by heirs.

Also of course economic rights can provide partial protection for postmortem moral rights.

EU didn’t and probably won’t harmonize moral rights, unclear why. Some countries provide postmortem rights tied to economic rights duration: Germany, Netherlands, Austria. France and Italy provide perpetual protection. These rights are not absolute, especially postmortem rights. German takes an approach of “fading of rights.” French approach: Victor Hugo’s grand-grand-grandson sued an author for a sequel to Les Miserables, in which the villain is neither dead nor the horrible person of the Broadway musical. Court said: after economic rights expire, you can’t just block sequels. Balance with freedom of expression. At the same time, European harmonization maybe should mean that harmonized exceptions to © apply to moral rights. Open question when you can make fun of a character, for example.

Moral rights can be, and often are, cleared and generate a lot of income, which may seem odd given that they’re supposedly nonwaivable. Clearing rights becomes more difficult after the artist’s death: there were 15 Hugo heirs, and the court held that any one of them could assert his moral rights. There are also dead hand issues: you’re supposed to implement Victor Hugo’s rights, not the opinions of his heirs—and Hugo made conflicting statements about what he wanted. So practical concerns about what would offend him arise. Normatively concerning; risk of stagnation.

Waiting for Godot: Initially cross-gender casting was held to violate the estate’s moral rights, but this appears to be eroding. Why?

Removing Confederate statues: moral rights claims if the rights were perpetual? Other examples of racially offensive art placed by public authorities in public places.

Expanding moral rights, especially postmortem, would require us to think very carefully about balancing. There aren’t VARA fair use cases, though technically it applies; there isn’t a very good fit b/t fair use and original works. Is it worth the candle? Not for personality interests, and interests in preservation don’t fit well with moral rights.

RT: Question: does waiver/clearance by one person continue when they die and the moral right descends to their heirs? Or does clearance have to be done all over again?

A: He thinks the answer is yes. Blanket licenses aren’t allowed; you need to approve specific alterations. But his intuition is yes that when there is a waiver/approval, it applies to heirs.

Michal Shur-Ofry: how many of your arguments also apply to postmortem economic rights?

WIPIP, PLENARY SESSION 1 — Race, Gender, and IP

Dan Burk, University of California, Irvine School of Law

Racial Bias in Algorithmic IP

Unpacking bias: divergent meanings: statistical bias (sampling), design (wrong type of model, model created for one purpose used for another), the fact that “raw data” is an oxymoron, social bias (inappropriate social outcome—different than the bias that designers often talk about, so they may talk past each other even if there’s overlap). This can make some responses beside the point: transparency, auditing, “human in the loop”—those are mostly attempts at better technical accuracy. That’s a red herring. Example from criminal justice: parole determinations. Zip code is a major factor in these, and that’s correlated with poverty and race. It’s a really good predictor, but that’s the wrong question: why do we put up with that connection/digital redlining? An AI patent examiner that rejects/narrow claims based on race of inventor, that’s not inaccurate to past practice. It’s wrong in the sense of being immoral and [supposedly] socially unacceptable.

Machine bias may be the wrong question. Let’s deal with the bias in the system; it doesn’t matter whether it comes from a human or from an AI trained on the past practices of humans. But there are differences in practice: Illusion of objectivity; humans put too much faith in numbers, Donna Haraway’s “God trick” in which the human is no longer visible in the picture. E.g. overweighting of numerical evaluations. Algorithmic performativity: they enact what they assume and create their own social facts. The yearly ranking of law schools by USNWR. Wendy Chun suggests: we should use these systems as diagnostics. We don’t think a weather forecast is diagnostic or that it can be used to create better weather; we can use AIs to find out what our biases are.

Ann Bartow, University of New Hampshire Franklin Pierce School of Law

Ruth Bader Ginsburg’s Copyright Jurisprudence (with Ryan Vacca)

Strong copyright and liberal politics. As a DC Circuit judge and SCt Justice, she authored sixteen opinions in © cases, ten majority, four concurrences, two dissent, and joined 11 others, ten majority, five of which were unanimous, and one concurrance. Mostly owner-favorable and Goliath over David, which may seem surprising. Five opinions favor authors: Tasini, Eldred, Golan, Reid (WFH), and arguably Muchnick, the followup to Tasini. Many were in favor of owners: Petrella, Nat’l Cable TV Ass’n v. Copyright Royalty Tribunal, Atari v. Oman (2x). Concurred in Grokster & Star Athletica; fiery dissent in Kirtsaeng. But did favor accused infringers sometimes: Fourth Estate v. Wall-Street.com & OddzOn v. Oman as well as concurring in Quality King. She joined Campbell, Fogerty v. Fantasy, Feltner, and several others.

Unpersuasive explanations: widely known love of opera and art (other Justices have those too); Jane Ginsburg’s uncontested expertise (Ginsburg fille isn’t particularly highly cited by Ginsburg J. and Breyer cited her against a Ginsburg opinion).

Better: Incrementalism—if judges reach unnecessary issues, this creates instability/undue stress on judiciary. Evident in gender equality work and critique of reproductive rights litigation based on lack of incrementalism. Intergovernmental deference: evolution/interpretation of law shouldn’t be diatribe against Congress, President, admin agencies, or states, but as dialogue. Courts have instiuttional capacity constraints and must do this to be effective. Lily Ledbetter Fair Pay Act after loss at Scotus; Petrella opinion recounts back and forth with Congress and courts. Atari v. Oman: Sent it back to Office twice and told them to look at Feist.

Eldred and institutional capacity: worried about whether the courts were the right institutions to decide duration. How does Breyer know his economic analysis is right? [Framed as “where is his economics degree from? And Lemley in chat says “Oxford.”]

Some divergence in © jurisprudence: seemed to favor alternative remedies in ©--In Tasini, suggested court shouldn’t issue injunction preventing inclusion of the disputed articles, but instead compulsory licenses/consent decrees. She was much more skeptical of alternative remedies, like a lesser military school for women instead of VMI, for gender discrimination.

Ryan Vacca: responding to chat point that citing Jane Ginsburg isn’t a great proxy for being influenced by her, and they acknowledge this.

Dalindyebo Shabalala, University of Dayton School of Law

Solomon Linda, Traditional Knowledge Pirate? Mbube, “The Lion Sleeps Tonight” and Traditional Knowledge

Challenging the originality of Linda’s work as potential cultural threat. The story: popularized in the 1950s including by Pete Seeger from a pop music record in South Africa. That song, story goes, was composed by Solomon Linda, who died penniless while millions were made. 2000 article resurrected the story of misappropriation and injustice; led to a suit against Disney. Settlement elided the basic question of who really created it. He argues it should be tested in court because it’s a key issue in TK: What happens when a traditional piece of music gets translated, derived from, built on, recorded, and moved into the © system? The classic TK story is an outsider coming in and taking it into the © system. Story of Linda is, he suggests, a much more traditional trajectory: an insider who traverses the boundary of the community to the outside and acts as the translator, then lays claim themself to the TK. Musicologically the origin story is more complicated, and the question of what rights insiders should get is much more complicated than misappropriation by record companies.

Linda was an originator of a style. Urban music/dance, built on tradition of rural Zulu style. He took a wedding song sung by village girls. Developed in a sharing/building/borrowing culture. How should that affect what we think the world owes Linda? Community rules may continue to bind insiders when they try to exploit works outside those communities. We should not think of this as a new problem. © has always been bound up with nationalism. The problem to be solved was misappropriation across borders. The problem for traditional communities is very much the same. Should think about solutions for insiders who flee.

Bita Amani, Queen’s University Faculty of Law

Law, Race, and Alchemy: Exclusion(s), Existential Crises, and the Transformative Possibilities of Intellectual Properties

Operationalizing privilege through law presented as formally equal. Curricula/cultural materials are an important part of naturalizing privilege. “Exclusivity” of rights: IPRs are part of broader colonial legal regimes, so why would we expect anything other than disparate impact in rights acquisition and enforcement? Authorship in fact v. authorship in law is gendered/raced; work v. play distinction means some of us are disenfranchised from labor/means of production while others become owners.

Carys Craig, Osgoode Hall Law School, York University (with Anupriya Dhonchak)

A Feminist Theory of Moral Rights: Creative Agency and Voices from the Margin

Not surprising that feminism would have something to say about a right conceived of as intensely personal. Dichotomies: public/personal; economic/moral; rational/emotional; masculine/feminized; valued/devalued: so moral rights are the feminized Other. Personhood rationales have therefore tried to masculinize/propertize the justifications. The image of the artist is that of the solitary male genius, individualized author. Hegel, proponent of moral rights, held that women were not capable of art. Kant likewise thought that knowledge unfitted women for their places. Not clear why a feminist would start from Kant and Hegel! Moral rights rhetoric is also filled with references to paternity; patriarchal metaphors of birth without women, right to control offspring. We need a better ontology of authorship.

A feminist relational theory of authorship locates creativity in cultural situations and social relationsh; creative capacity is enabled by relational web. Relational autonomy, capacity to make meaning is the foundation of authorial rights. Authorship as dialogue/relationships of communication. Every text is multivocal; for feminists, this invites exploration and activating of the unvoiced, exiled world of women (Mary O’Connor).

Could say that integrity right ensures dialogue is a real one, but we think that clings to the romantic idea of there being a single meaning bestowed on work by author, and dialogism refutes that at the core. Risk of weaponizing moral rights against those who critique the dominant culture. Integrity right misundersands relationship b/t author, text and public in way that casts disruptive dialogic engagement as moral and legal wrong; not consistent w/feminist politics of confrontation, resistance, and social reform. Example: Fearless Girl attacked as violation of moral rights of bull sculpture’s sculptor.

But: attribution right deserves attention through feminist lens. Tracing who is speaking, from where, on behalf of whom can be about feminism and authorship. De-Kanting acknowledgement: Kant thinks that the harm is compelled speech, but feminist theory is that the harm is the silencing, the refusal to acknowledge that someone has spoken. The power to make knowledge claims v. the people who have been erased from/made invisible in our narratives. Attribution is a call against erasure.

Caveat: it doesn’t follow that © is the right space to achieve political goal of amplifying marginal voices given the bluntness of legal tools and power needed to wield them. Empowering communities of practice is the goal. Moral rights don’t occupy a moral high ground; they’re based on the same patterns of exclusion and control as ©, but can benefit from feminist reeimagining.

Moderator: J. Glynn Lunney, Texas A&M University School of Law

Lemley: AI does expose some fundamental contradictions in what we think of as inequality: a broader problem of how we measure equality and how we want to balance procedure and substance. Making that explicit can be useful.

For Bartow: Don’t shy away from the harm she did in throwing out Sony in her Grokster concurrence, Petrella and its authorization of a wave of © lawsuits forever, etc. There are interesting agency/courts/etc. metrics to all of these, it is still worth noting that she ends up on the side of the © owner and he doesn’t think that’s a coincidence.

Burk: all human tech may be prosthetic: cars are feet prosthetics; AIs may be cognitive prosthetics, but bring all human baggage. Amplifying and disclosing may be the useful parts—using them as diagnostics to figure out where we’ve been screwing up. But they are our messes to solve.

Bartow: yes, and that’s painful about this project.

Betsy Rosenblatt: For Shabalala: Norms are good at governing in communities, but they are really bad at governing outside of communities. Natural takeaway might not be that everyone owns TK but that no one does, but that may be imposing a norm on the group from outside. Maybe that’s exactly where we need laws (when it moves outside the community) but then whose rules should we adopt as the law?

Shabalala: This is the key part of the project. The premise has to be cultural sovereignty: the only communities with a strong claim have to build on a preexisting political sovereignty, b/c the right to regulate citizens’ lives is built on sovereignty. Rosenblatt says that’s a very American way of looking at sovereignty, but Shabalala responds that African nations have wholeheartedly adopted it, although there are sub-sovereign, sub-metropolitan communities that are clearly left out of this formulation, and that is a real problem. Reaching outside the community is required to regulate exploitation, but TK may not be the answer.

Amani: Note that in the US the definition of an Indian comes from the federal government; the problem is complementarity of structural inequality that is imposed.

RT: for Craig: Is this a right/interest of the author or a right/interest of the audience? Consider anonymity; women writing as men; whites writing as natives.

Craig: it’s about relationships, with text as vehicle for dialogic engagement. Ideally we’d know who is speaking, but wouldn’t insist upon removing anonymity. Risk of silencing voices with removal of anonymity matters. [RT: we valorize some kinds of contestation, but there are situations where the speaker treats the audience as marks to be exploited—good to think about those situations when conceptualizing moral rights.]

CopyrightX: UGC panel

Panel One: User-generated Content, Digital Labor, and Collaborative Authorship

Moderator: Bethany Rabe

Rebecca Tushnet: Fanworks, Fair Use, and Self-Actualization Through Transformative Expression

Title assigned a few months ago is a little misleading because I actually wanted to take the opportunity to talk about the Copyright Office’s recent report on moral rights, though I’m happy to talk about anything fanwork related during the panel discussion and Q&A.  I was one of the founders of the nonprofit Organization for Transformative Works.  OTW runs the Archive of Our Own, which hosts noncommercial transformative works by fans of existing works, of people, or really of anything about which one might create new art. From our recent fact sheet I can tell you that we have over 1.2 million registered users and 4.7 million fanworks, as well as tens of millions of visits per week. “Our open-source code was built from the ground up by fans for fans…. Our users are fans of every sort—teenagers and grandparents, first-time writers and professional authors—from all around the world, creating fanworks” for nearly 32,000 different fandoms.  From the beginning, it was a priority to be ad-free and noncommercial, not under the control of advertisers.  Instead, the priority was authorial control: AO3 was designed to give creators the ability to post and edit their works flexibly, to orphan their own works to preserve access to them without connecting them to the author, and to exclude search engines or non-Archive users from reading.

One of the most distinctive features of the Archive is the curated folksonomy used to tag individual works: “Users are able to tag in whatever format is most useful or natural to them, and our team of over 350 tag wranglers link these tags together into easily searchable concepts.”  If you misspell Harry Potter’s name—or put it in kanji—we’ve got you covered.  Creators can use tags to allow other users to find exactly what they want to see—or to exclude exactly what they don’t. “[U]sers can easily create specific searches, including all Sherlock Holmes works posted in 2018 that are exactly 221 words long and Lord of The Rings/Game of Thrones crossovers that don't include either Frodo Baggins or Arya Stark.” “Related concepts are also linked: Space Opera and Space Battles are both found under the metatag Outer Space, along with other related terms like Astronauts, Spaceships, and even Space Whales.”

Fanworks provide incredible benefits in literacy, sexuality education, language learning, community building, and other good things that come from making something you love and sharing it with other people who might just love it too.

On the content v. tech distinction that Maria Strong made: we consider ourselves content folks who use tech.  But importantly, we rely on fair use: our basic purpose is to host transformative noncommercial works. Gives us a particular perspective on various copyright controversies.  For example, recent Copyright Office report on moral rights, which you’ve just heard about.  The Office did a lot of good work pulling together the legal background both internationally and in the US, covering many issues that go beyond copyright into other regimes that affect authors.  A moral right of integrity that would protect authors against uses of their works they found offensive would be incompatible with US fair use and the First Amendment and the Office didn’t suggest any basic changes to that system, to the Office’s great credit.

It is definitely true that norms of fairness matter a lot in authorship, including attribution in many circumstances—but not necessarily in the rigid categories formal law might use.  For example, fans regularly describe authors of books, but generally identify performers of songs rather than songwriters. More generally, attribution practices in and out of fandom are highly context specific—what works for one group might not work for another.  Hollywood screenwriters have an arbitration system for assigning credit that is often needed because fights regularly break out.  Similarly, the Office pointed out that, “in legal writing, attribution norms for academic articles are quite rigid, whereas practicing lawyers routinely copy without attribution ‘the form and language of legal instruments.’” Attribution turns out to be the kind of inquiry that isn’t well suited to the American legal system, because modern copyright statutes and regulations tend to make big, specific lists of required information.  The Office wisely recognized that antiplagiarism norms work about as well as anything can work, and that the context of attribution would be essentially impossible to write into law.

Nonetheless, and without showing that there was a noticeable unmet need for new protections, the Copyright Office has just suggested that the federal Lanham Act can & should be used against unattributed copying of digital works, in defiance of the Supreme Court’s decision in Dastar and its own stance on digital first sale.  [I should note I think the Office is completely right in saying (1) §43(a)(1)(B) claims should survive Dastar where false attributions are material to consumers and (2) Dastar applies to in-copyright works as well.  It’s just disingenuous at best in endorsing a distinction between nondigital and digital copies that does not make sense of the Supreme Court’s interpretation of “origin,” especially in light of the Office’s (correct) position in discussions of first sale that a digital copy stored on a computer is a reproduction.  The “origin” of a digital copy is the host computer, and maybe stretching it could be the sending computer, but there is a physical instantiation and that instantiation is what the Lanham Act covers in “origin” under Dastar.  Specifically, the origin of the creative work contained in that copy is not the same thing as the origin of the physical copy, no matter whether the copy is on a general-purpose computer, a videotape, or a DVD, and thus failure to attribute the origin of the creative content is not actionable under §43(a)(1)(A) per Dastar.]

It also stated that Congress might want to consider amending the Lanham Act to create new causes of action to cover false representations regarding authorship of expressive works, even without a showing of harm to consumers. The Office suggested amending the Copyright Act to provide damages when a defendant knowingly removed or altered copyright management information (“CMI”) with the intent to conceal an author’s attribution information even if there was no intent to conceal infringement, and possibly even adding a federal right of publicity.  In addition, the Office suggested some changes to the more limited Visual Artists Rights Act. 

Aside from the suggestions about VARA, the rest of the Office’s ideas are a classic case of proposing to use a missile against a gnat—likely to the detriment of small and noncommercial creators, who are the ones who can neither afford to bring claims nor fight claims brought against them.  And the specific suggestions lack exactly the kind of context sensitivity the Office acknowledged was needed—for example, the proposed CMI provision on its face makes it illegal for an app to remove identifying information of people submitting anonymous videos of police brutality—and if you think that enterprising prosecutors wouldn’t use this law against the ACLU, you haven’t been paying attention.  [The CO says that the intent requirement would mean that automated removal wouldn’t be actionable unless it was designed to remove authorship information … but anonymous reporting apps are designed to do that. And for what it’s worth, the complaints the CO reported receiving about removing authorship information were mostly about automated processes—the proposed remedy doesn’t even match the thing that’s being complained about.]

It’s also worth pointing out the solution that the Copyright Office didn’t suggest for congressional intervention: although its discussion of authors’ rights mentioned attribution and integrity rights secured by labor law and collective bargaining, both in the US and elsewhere, the Office didn’t suggest that strengthening authors’ positions could be achieved by strengthening the position of workers, even though the most vulnerable authors are labor and not management.   The problems the Office identified in securing attribution for certain groups, like freelancers, are labor problems—authors after all make copyrighted works, and we should not allow the concept of the “work” to disappear as if authors were mystical beings with no connection to other forms of labor, other forms of production, that do things in the world.  Our desire to highlight the process of creation was in fact one of the reasons that we called our nonprofit the Organization for Transformative Works: whether made for profit or not, creative works are the product of labor.  Remembering the inherent dignity of that labor, and its value whether or not there is a market for the resulting creativity, is a goal that the OTW shares with the Copyright Office.

Stacey Lantagne: Internet Memes, Fanworks, and Copyright’s Authorship Challenges

Memes regularly involve © works; one opinion expressed: the public “owns” the meme because the public authors the meme even if not the underlying photo.  Fox defended an infringement case juxtaposing 9/11 and WWII images—court didn’t like the fair use defense b/c didn’t see the transformativity, but it turns out that the range of “memes” is very broad.  Knowyourmeme has no definition.  When Trump (or a Trump fan) adds CNN’s logo to a clip of wrestling so that it looks like Trump is beating up “CNN,” that’s what’s adding the meaning especially after it’s been shared by Trump himself. Similarly, Pepe the Frog became a white nationalist symbol and created contests over ownership w/initial artist and those who altered it. Gab now uses a frog logo and claims that frogs have been symbols of free speech for a long time (narrator: they have not), and it’s a reference but not all that similar to Pepe.  Then the distracted boyfriend meme, which comes from a stock photo with a © owner, who is fine with most uses but not w/objectionable ones (which may be censorial).  As the distracted boyfriend meme develops, responses to it/reworkings of it are based on transforming the meme rather than on the photo alone, which has become subsumed into the meme and the idea of the meme. 

The internet thus exposes that the mastermind narrative of single creation is wrong. We knew that but dealt with it mostly by contract, and then we have this control test for noncontractual situations but it still wrongly assumes that there is a “boss” in control of everything. When you don’t have contracts, when you don’t have lawyers, we don’t know what we’re doing in terms of ownership. Garcia v. Google: opinions don’t make sense internally and are conflicting all over the place.

Capitalism makes everything worse/more exploitatitve: Swedish company used distracted boyfriend meme for job searching and ad regulator called it sexist and said it couldn’t be used in ads. There is a pending case against a MAGA poster by Pepe’s original creator Matt Fury; there’s a fair use argument but also the defendant argues that Fury abandoned the © (which is not a thing).  There’s a lot of unsettled territory here.

Hilary Richardson: Google Open Source and Collaborative Authorship

Writing a casebook on open source legal issues: opensource.google.com/docs/casebook: you can send us edits or additions in a GitHub pull request.  Current joint authorship standards give equal rights to all authors.  Some projects list all “authors” giving them shared control. Some may have 100% consensus, but for a growing project that can be unsustainable, and some institutions may not want the potential liability/disputes that comes from open source authors’ potential for contestation.  Current doctrine (Al-Muhammad etc.) looks for a mastermind—important contributions can still avoid being authorial. Court was concerned about discouraging future editing/feedback if joint authorship was a possible consequence. Creative control/direction mattered, versus value of contributions and impact on final version. Spike Lee had the control (although it was a work for hire) and the court found that determinative.  Other jurisdictions also use editorial control over final piece as part of the test, but with more focus on intent to be co-author.  Control can be evidence of intent, but intent could also be evidenced by, e.g., registering the © in a person’s name.

Clarity can come from legal agreements: two popular mechanisms, developers’ certificate of origin (Linux) which doesn’t say anything about retaining © but does grant an explicit license.  Is everyone a joint author?  Contributor license agreement: says that © stays with contributor but they grant a license.  That makes it clear that people aren’t considered joint authors.  More light-weight approaches: root license of a project is used to cover contributions. Can be used to imply effects on individual contributions; sometimes licenses say “if you contribute, you do it on these terms.”  The Stuff case about contributing special effects to a larger film: helps explain the effects of an implied license to use a contribution.

Katrina Geddes: Should User-Generated Content Be Compensated?

UGC: just about everything you find on the internet.  Childish Gambino’s This is America was a canrivalesque commentary on police brutality, fetishization of black performers, modern-day minstrelsy. People responded w/, e.g., This is Nigeria: commentary on police brutality, corruption, poverty, Boko Haram, and other Nigerian issues. Similar music and choreography but different lyrics (both set in warehouse).  Why do we value things like fan fiction?  People get to see themselves where they don’t get to see themselves in mainstream works: LGBTQ people, people of color. Challenge racial and social assumptions of mainstream works; challenge the monopoly on cultural production of large producers. Can also maintain the cultural relevance of works, such as maintaining interest in the Star Trek universe.  Satisfies demands for variation and personalization, rather than works manufactured for a huge audience. Democratizes creativity—authorship is diverse and diffuse.  Meme authorship can often be indeterminate. 

Content ID: used algorithmically mostly for commercial content.  400 hours to YouTube uploaded per minute. Fanmade videos for Harlem Shake were matched to the song, allowing the song © owner to generate millions of revenue with no allocation between the music and the video created by fan labor. Under 1% of Content ID matches are disputed.  Fair use can’t reliably be done by algorithms; Content ID is black box governance, unaccountable—even when the uses removed or monetized may be perfectly lawful.  Expands scope of © by making it difficult for users to rely on exceptions like fair use.

Locke and labor theory: just reward of labor should extend to fan creations that are monetized.  Eric Posner etc. have argued that not just UGC but our labor online, clicking and producing valuable data, should be understood as compensable.

Canadian UGC provision: protects UGC made by an individual, though there’s usually more than one author.  Also protects UGC only when © subsists, which bakes in originality.  Requires noncommerciality—no pro-rated advertising revenue.  Also bars anything with a vague, broad “adverse effect, financial or otherwise” on the © owner—that could include offending the original © owner.

Should users be compensated?  The labor of users should be recognized and respected, and possibly compensated. But commercialization is part of the fair use inquiry; it may weigh against fair use.  Commercialization may result in reduction in expressive diversity: anticipation of paid markets may affect content and willingness to participate/be spontaneous in creativity.  Distinguishing when compensation would be paid would require resources, negotiation in allocation between different owners. Right now it’s 100% to the original claimant, but other points on the spectrum are possible. Don’t just assume that everything with a match should be 100% monetized by the © owner.  We could ask users to categorize their works to claim a share; this would allow more information and an algorithm could at least look for percentages/set things up for human review.

Q: fair use is important; from litigator’s perspective, one downside is expense to determine.  Oh, the Places You’ll Boldly Go! was found to be fair use on summary judgment, but not at the MTD stage which was 1½ year earlier.  Is there a way to get to fair use faster?  Market harm may require discovery—that’s the most expensive part of most lawsuits.

RT: sadly, not a lot.  There are uses that are fair as a matter of law, including parodies.  Big data, purpose-transformation uses are for better or worse somewhat easier to identify as fair use as a matter of law.  Sometimes you are going to have to evaluate the transformativeness of an individual work.  [We can have rules that help, like the Second Circuit’s rule that you can’t avoid a fair use finding by offering  a license for something that is in fact transformative—that helps draw the sting of some market evidence.] Small claims: 40% of Americans can’t come up with $400 for an emergency.  A “small claims” court that allows $30,000 in statutory damages is not a small claims court. It’s just another way to harass individuals.  [I forgot to add: best practices in fair use for different fields—also very helpful.]

Lantagne: education, nonprofits like OTW/EFF.

Geddes: Canadian UGC exemption needs some time to develop.  Education is also important.  People want rules like “30 seconds is ok.”

Richardson: people do want rules: are 3 lines of code ok?  Depends on what the 3 lines are!

Kimberly Isbell: proposed 1202A.  The reason we made it a new provision is b/c it’s narrower and specifically exempts criminal enforcement.  The only person who could bring a claim would be the uploader. The ACLU has terms of use: if you provide content it will be anonymous.

RT: Disagree.  The statutory language is “any person injured by a violation,” and the police will say they’re injured by the inability to investigate the circumstances under which the video was taken further.  The injured person doesn’t have to be the author (or heirs) under this proposal.  There is a long tradition of (mis)using civil awards to silence speakers, e.g. NYT v. Sullivan.  The proposal does not exempt information submitted by someone who wants to be anonymous or who doesn’t know or care about stripping of metadata [nor does it limit enforcement to the author, which would also be a potential fix, though I still don’t see the evidence that an additional cause of action is needed].

Q: software should just be patentable, not copyrightable.

Richardson: the law says copyrightable and she’s ok with that.

Q: memes & defamatory content. There are a lot of really awful Helen Keller memes out there.  What should happen when there’s a historical figure & derogatory content.

Lantagne: a lot of times people bring © claims that should be more personal tort based.  She hasn’t come across non-© meme cases, but she wasn’t specifically looking for them.  Unless publicity rights outlast death, there are few remedies for the dead.

Richardson: revenge porn is an example of where © was deployed even though it wasn’t intended for those situations; you shouldn’t need to register an explicit photo to deal with the problem of revenge porn, and new laws and platform policies are recognizing that.

Reading List: The Copyright Wars

Peter Baldwin, The Copyright Wars: Three Centuries of Trans-Atlantic Battle (2014)

Baldwin’s basic proposition is that there has been a long history of struggles between creators, distributors and the public, and a related struggle between the idea of Continental authors’ rights (fundamentally moral) and UK/US copyrights (fundamentally economic).  The book is full of tidbits about copyright and authors’ rights.  For example, I did not know that the French word for ghostwriters is “nègres,” which is amazing.  More detail, from JakeLamar at The Root: 

The French started calling ghost writers nègres back in the 1700s, just as colonialism and the slave trade were gaining momentum. The idea was that writing under someone else’s name, erasing your own identity, was thankless servitude on a par with the labor of colonialism’s black subjects and victims.  

Speaking of slavery, the US was a pirate nation for a long time, refusing to grant rights to foreign authors, and during the Civil War the South found time to enact a more protective copyright law, “[t]o distinguish itself from the North, cultivate an aristocratic and nonmercantile national identity, and appeal to the British.”  It didn’t work.

I liked Baldwin’s argument that, if, as some authors claim, the ability to own Blackacre in perpetuity justifies the ability to own Black Beauty in perpetuity, then authors should also have to pay property tax every year. He’s trying to understand what might seem to be a perplexing phenomenon: While authors gained more rights over the past few centuries, our commitment to absolutism in real property rights has declined with the acceptance of the social aspects of private property, operationalized in zoning, rent control, health and safety regulation, etc.

Other things I didn’t know: German composers were free to set poems to music until 1965, when the poets’ lobby achieved a law preventing this, perhaps connected to the decline of Lieder, “the once archetypical German musical art form.”  The US’s refusal to protect foreign authors made American edition print runs as big or bigger than British print runs even when the US had only half Britain’s population.  In 1775, almost as many copies of Blackstone’s Commentaries had been sold in America as in England, and Dickens was later serialized on the back of railroad times tables.  Baldwin suggests that higher prices in the UK were somewhat offset by its lending libraries, whereas the greater distances separating people in the US meant that books had to be bought rather than borrowed.  I loved the statement of Senator John Daniel of Virginia, opposing international copyright in 1891: “It is a bastile [sic] of letters which is here constructed, and not a republic.”  Separately, but not unrelatedly, Wordsworth insisted that his friends not lend copies of his books to anyone who could afford to buy them.

Moral rights, Baldwin shows, emerged in fascist Europe, part of the self-contradictory conception fascists had of authors as cultural icons of the state, both worth protecting (when they produced the right stuff) and ultimately subordinate to the needs of the community.  Authors’ honor deserved protection, but honor was defined by the community rather than by the individual.  Baldwin doesn’t consider this a knockout strike against moral rights; after all, he notes, Germany outlawed the death penalty at the prompting of a far-right party hoping to spare Nazis.  Moral rights were in part a response to technological change, holding out hope for the author to fix meaning.  They were also, especially in France, a response to specific legal issues, like divorce and inheritance—surely a child, an ex-wife, or a creditor shouldn’t just get to change an artist’s work to make it more marketable!  This relatively autonomous legal character may be connected to the fact that the authors’ rights/copyright conflict doesn’t map well onto any traditional left/right divide: copyright loves the ideology of the market, but also the public domain; authors’ rights sneer at the market but support cultural conservatism.

But perpetual moral rights lead to bizarre situations.  “In 1988 the sole lineal descendant of the painter Achille Deveria (died 1857) secured a court decision against the French magazine L’Express for printing a portrait of Franz Liszt from 1832, removing its bottom part and adding some color.”  Also, the Danish director Jens Jørgen Thorsen made a film on the life of Christ, enhanced “in the tediously predictable way of would-be provocateurs—with brothels and orgies, Mao and Uncle Sam.”  Result? “The Danish parliament and public asked whether the project was blasphemous and if it violated the moral rights of the authors of the gospels of Matthew, Mark, Luke, and John (whoever they were).”

This leads Baldwin to a more significant theoretical point: moral rights begin as highly individualistic, reinforcing “the author’s claim to enforce the singularity of his vision even after death.”  But time marches on, despite the claims of descendants and heirs.  Ultimately, some representative of the broader society steps in “to preserve what by now—if he remained of interest—had become the author’s position in a canon.… [C]ultural bureaucrats safeguarded not his individual vision, but a socialized understanding of where he fit in the pantheon.”  Authors’ rights hardened in Europe in the 1950s and 60s, when “France and Germany sought to distinguish their nascent postwar democracies both from their totalitarian predecessors and from what they and their facist forbears alike saw as the Anglophone world’s crass commercialization of culture.”  They abandoned the fascists’ populism and embraced a moral rights of elitism, preventing any debate on balancing the interests of the author and the audience for a long time after WWII. 

By contrast, Britain and America had an audience focus; “[r]ights of aesthetic control were shunned as fanciful and needless concessions to foppish artistes.”  Only when the US became such a major content producer that economic realities drove us to accede to Berne did we pretend to recognize moral rights.  Hollywood enthusiastically embraced the strong rights and long terms of Europe, without moral rights.  But, though expansive copyright is often considered an American export, it can also be seen as a Europeanization of rights, just as the U.S. ultimately adopted the European first-to-file patent regime (and, though he doesn’t mention it, a more registration-based trademark system).  As Baldwin points out, American positions actually lost out in GATT on performers’ rights (included) and favoritism for local cultural productions (preserved, as a bastion against American media intrusion).  Meanwhile, the magpie/collaborative nature of film forced Europe to adjust its former model of the individual author and the printer, bringing Continental and Anglo approaches closer together.  And then digitization unsettled balances all over—including on the Continent, where skeptics such as the Pirate Party have finally asked whether authors’ rights have gone too far.

Baldwin takes the long view, arguing that technological disruptions have occurred before, as has the democratization of media, often to the same laments/predictions of utopia just around the corner.  Washington Irving’s “The Mutability of Literature” announced the age of “excessive multiplication,” where freedom from parchment and quill made “every one a writer, and enabled every mind to pour itself into print, and diffuse itself over the whole intellectual world”—in 1819.  In 1933, a French observer lamented that recorded music was omnipresent, yet authors hadn’t been “rewarded in proportion to this enormous expansion of consumption.” Truly, there is nothing new under the sun.

Baldwin sees the aim of Google Books as Dionysian—to dissolve all books into a greater carnival of knowledge, and he’s a bit suspicious, though not condemnatory.  In fact, he’s suspicious of all sides, who generally look out for their own interests as readers, authors, publishers, intermediaries, etc. and not for the overall good.  And watch out, Twilight and Fifty Shades critics: “At no moment do we more date our selves than when we draw the line between culture and barbarism. Your artistic abuses are your children’s classics.”

One nit to pick when he gets to American academics, whose generally restrictionist views he attributes to not needing to sell books to make a living—Carol Rose is not, as he strongly implies, a “retooled humanities PhD[], refugee[] from the academic downturn of the 1980s and ‘90s,” nor would I consider her “heavily influenced by literary theories from English and comparative literature departments.”  She’s one of our most eminent property scholars and as hard-nosed a realist as one might hope to find.  

In Baldwin’s view, the lack of elite/academic support for less expansive authors’ rights regimes in Europe meant that resistance, when it did come, was even more populist, in the form of Pirate Parties.  Of course, the U.S. also got Google arguing in more corporatist terms in favor of “balanced” copyright.  To Baldwin, the Anglo perspective is not just that of crass commerce, but also populist/democratic; both of those  features lead to pressure to limit authors’ rights and see copyright as an economic bargain.  I’m reminded of the time I heard proud expansionist Hugh Hansen decry the expansion of the franchise from white male property owners because the rest of us were more likely to want to limit IP rights. 

Somewhat inexplicably to my mind, Baldwin claims that in the U.S., “it was the salaried intelligentsia which dominated the airwaves” in discourse about copyright, since “[n]o well-organized class of literati had sprung forth in nineteenth-century America.”  But that’s only true if you only focus on writers of texts, as opposed to performers, directors, etc., who do very well for themselves in arguing for more rights.  And, as he later points out, most authors can’t survive on royalties in any Western country, no matter how strongly it protects authors’ rights; patronage and self-patronage is the usual name of the game, so that can’t really explain the Anglo/Continental divide in academic perspectives.  His conclusion that only the salaried can advocate for freedom misses voices like Cory Doctorow and Becky Boop, and appears tied to his apparent belief that self-interest underlies everyone’s positions.  (Because claims about the economic impact of copyright are so common, I did like his point that “American colleges and universities employ ten times as many people as the motion picture and recording industries.”)

I also liked Baldwin’s point that, in fighting English hegemony online, the French turned to claims for “diversity” rather than claims for the preeminence of French language and culture. Ironically, American films fund French ones because the French government taxes media, then subsidizes French media; that intertwines the two cultures in a very practical way.  In another irony, French objections to Google Books meant that the project became even more English-heavy, rather than more evenhanded—German books make up more than 12% of Harvard’s collection, and if fully digitized would match the entire University of Heidelberg library.  But French and German books were removed because of publishers’ objections.  Google’s project violates French law because its short quotation exception didn’t apply to random snippets, and presenting excerpts violated the moral right of integrity; in a bit of hypocrisy, the French court determined that publishers, not authors, held the rights to digital dissemination and thus could sue even though such blanket transfers are generally not approved in European law.  

Baldwin reserves his greatest condemnation for the greediness of the big publishers, mostly European, who monopolize scientific publishing, with profit margins of 35-40%, as well as for the German publishers who charge large amounts to publish Ph.D dissertations, since publication is required to make the dissertation official.  He doesn’t have very nice words for the French version of orphan works legislation, either; the stringent requirements make the provision essentially useless, since it’s limited to certain institutions, who must first conduct a diligent search, and must still pay writers and publishers (somebody else’s money, by definition).  Authors could refuse permission to digitize, and a senator explained that an author who’d written something regrettable during the occupation by the Nazis should be able to prevent it from reappearing.  “Rarely had the unappetizing aspects of moral rights been so baldly stated.” Ultimately, he concludes rather mildly that there’s room for more pro-public reform, but the real value here is in the journey.

Dastar-barred claims can't be repled as false advertising claims

Friedman v. Zimmer, No. 15-502 (C.D. Cal. Jul. 10, 2015)

 

Richard Friedman sued Hans Zimmer and others, alleging that the score to 12 Years a Slave infringed his copyright to a composition, To Our Fallen.  Friedman also alleged violation of the Lanham Act through misrepresentation of the score’s authorship in advertising and promotion.  He further asserted claims for violation of his moral rights under the German Copyright Statute of 1965, which provides that an “author shall have the right of recognition of his authorship of the work,” and under the French Code of Intellectual Property of 1992, which provides “the right of respect for the name of the author.”

 

The court first rejected defendants’ argument that the complaint wasn’t specific enough about who did what in terms of copyright infringement, alleging that they all “produced and distributed” the Film “in the United States and throughout the world,” even though the Copyright Act does not apply extraterritorially and even though some of the defendants might not have made reproductions of or distributed the score. “Before discovery, Plaintiff has no reasonable means of determining the roles that the Moving Defendants played in producing and distributing the Film.”  If some of the defendants lacked a role in reproducing/distributing the score, they could put that in their answers and the issue could be resolved on summary judgment.

 

The Lanham Act claim, however, failed.  Friedman alleged that defendants falsely advertised the film as featuring “Music by Hans Zimmer.” This claim would plainly be Dastar-barred had it been brought under §43(a)(1)(A), and you can’t get around that bar, which is based on concern for avoiding a perpetual copyright/patent, by pleading a violation of §43(a)(1)(B) instead but based on the same operative facts.

 

Yes, the Supreme Court mentioned §43(a)(1)(B) in dicta, hypothesizing that a producer who gave consumers “the impression that the video was quite different from [the other] series” might be guilty of false advertising.  But that just means that a misrepresentation that led consumers “to believe they were buying one product when they were really buying another” could be actionable. “[G]iven the Court’s concerns about creating overlap between the Lanham Act and other intellectual property regimes, it would have made little sense for the Supreme Court to reject the Dastar plaintiff’s claim under 15 U.S.C. § 1125(a)(1)(A) but permit the same sort of claim to be asserted under a different prong of the same statute.”

 

The Ninth Circuit already reasoned this way in Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), which held that alleged misrepresentations about the licensing status of karaoke songs didn’t implicate the “nature, characteristics, or qualities” of the products, which would have to be “characteristics of the good itself, such as the original song and artist of the karaoke recording, and the quality of its audio and visual effects.”  Friedman argued that Sybersound’s reference to the “artist” made his claim viable, but that wouldn’t avoid the Lanham/Copyright Act overlap.  The court elaborated: Sybersound’s discussion

 

means only that a seller cannot falsely advertise a recording as being performed by one artist when it is really performed by another.  For instance, a seller cannot advertise a CD as containing “All Along the Watchtower” sung by Jimi Hendrix when it actually contains a recording of Bob Dylan singing the same song.  That would give consumers the impression that the CD they were buying was “quite different” from what it actually was, which would be a misrepresentation of the nature, characteristics, or qualities of the good.  Those are not the facts alleged here. 

 

Query: Suppose Friedman really did write the full score and the CD says Zimmer did.  Nonetheless, the score itself is the same—it’s just the attribution that’s wrong.  But if the performer is different, the court seems to be saying, the performance is different too, and therefore the proper subject of a false advertising claim.  But what if this had been a Milli Vanilli type lawsuit, where some performer alleged that he was the stunt double voice for the performer whose name is on the record?  I think this court would have wanted to kick that claim out too.  Is it because the performance would be no different, it’s just got the wrong name on it?  Is it because of materiality?

 

Friedman argued that the Ninth Circuit approved a similar claim in Photomedex, Inc. v. Irwin, 601 F.3d 919 (9th Cir. 2010), in which the plaintiff alleged that the defendants violated the Lanham Act and California unfair competition laws by representing that one of the defendants invented a medical device when he had not.   The Ninth Circuit found that the defendant was not the sole inventor, and thus held that the claim might have been misleading. However, the Dastar issue wasn’t raised either at the district court or on appeal, which explains why the court didn’t cite or discuss Dastar or Sybersound—the court was only asked about misleadingness and didn’t assess “whether [the] statement, misleading or not, related to a nature, characteristic, or quality of a good.”  To the extent that Photomedex allowed a Dastar claim under §43(a)(1)(B), it was inconsistent with Dastar and Sybersound and not controlling.

The court also dismissed claims relating to moral rights under German and French law.  Friedman might be able to assert those rights with respect to infringing conduct that occurred in France or Germany, but US courts aren’t compelled to entertain such claims.  The court here wasn’t going to do so given the fact that moral rights had “no clear parallel” in US law. There is also authority for declining jurisdiction.  “American courts should be reluctant to enter the bramble bush of ascertaining and applying foreign law without an urgent reason to do so”:

 

Enforcing foreign laws that are materially different from U.S. laws raises public policy and separation of powers concerns.  These concerns are particularly salient in the context of moral rights.  When Congress enacted the Berne Convention Implementation Act of 1988, it had the opportunity to broadly grant authors the same moral rights that they would enjoy in any other nation in accordance with the terms of the treaty. But faced with “an avalanche of opposition to moral rights” from even “the bill’s most vociferous advocates,” Congress expressly declined to enact that aspect of the treaty.    We think it prudent to decline to exercise supplemental jurisdiction where Plaintiff seeks to enforce rights that Congress has clearly and deliberately decided not to provide under U.S. law.

 

Also, judicial economy favored declining supplemental jurisdiction, since a US court would have to consume far more resources figuring out moral rights law than French or German courts, familiar with those rights, would.  Also, “the significant risk of jury confusion in a trial involving both domestic and foreign law copyright claims may require us to conduct a separate trial for Plaintiff’s moral rights claims.”  So the court kicked them out instead.

 

 

IP in the UK

Sir Robin Jacob, Daniel Alexander QC, and Matthew Fisher, Guidebook to Intellectual Property (6th ed.): With dry humor, this book surveys British IP law for nonlawyers/business student types.  I’m not in a position to comment too much on substance.  In any event, the book repeatedly takes the position that when IP rights are at issue it’s often better to settle/go away than to fight even if the claimed right is of dubious validity, which is a position to which I am constitutionally opposed although I understand its practicalities (until you find out that there are no names left available for your business, anyway …).  According to the authors, limits on damages in UK law somewhat mitigate this risk, but this conclusion on patents is typical: “The great majority of patents go through their lives in peace, with nobody really convinced they are valid, but nobody prepared to take the risk of infringing them. Commercially they are just as useful as if they had been valid. Thus, even an invalid patent is often valuable enough to make it worthwhile keeping on bluffing until the bitter end. And there is a lot of truth in the old adage ‘a weak patent in strong hands is worth more than a strong patent in weak hands.’”  Gotta love a good chiasmus.

I appreciated the grace notes of the writing.  “Almost unbelievably, there are now two sorts of unregistered design right …. Unbelievably (again!) there are two sorts of registered design ….”  As for the moral right of paternity, “it may be thought that this is a physiologically and psychologically implausible term, as well as being sexist. Indeed, this is so.”  The following trenchant observations aren’t specific to UK/EU law: “as is coming to be more usual in IP legislation, the draftsman has been careful not to use words that mean anything very definite, either to a lawyer or to anyone else.”  And as for private drafters, “[i]t should in particular be assumed that any agreement drawn up by business people will prove difficult for lawyers (including judges) to sort out; for lawyers and business people have quite different ideas both as to the way they use language and as to the sort of things that agreements ought to provide for.”  Truer words indeed.

Kirtsaeng

I don't have much to say about Kirtsaeng, but I was struck by this passage from Justice Ginsburg's dissent, addressing the effect of her preferred result on the display right:

Limiting §109(c) to U. S.-made works, however, does not bar art museums from lawfully displaying works made in other countries. Museums can, of course, seek the copyright owner’s permission to display a work. Furthermore, the sale of a work of art to a U. S. museum may carry with it an implied license to publicly display the work. See 2 Patry §5:131, at 5–280 (“[C]ourts have noted the potential availability of an implied nonexclusive licens[e] when the circumstances . . . demonstrate that the parties intended that the work would be used for a specific purpose.”). Displaying a work of art as part of a museum exhibition might also qualify as a “fair use” under 17 U. S. C. §107. Cf. Bouchat v. Baltimore Ravens Ltd. Partnership, 619 F. 3d 301, 313–316 (CA4 2010) (display of copyrighted logo in museum-like exhibition constituted “fair use”).

Finally, Justice Ginsburg has met a limit on copyright she likes! Well, maybe. At least possibly, if the museums can’t get permission (of course if permission is denied, the implied license seems … unlikely, unless permission is implied as a matter of law). If museum display is fair use, is bookseller display? What about display by an individual? If public display of an imported work lawfully made under some other country’s law triggers the display right, then could finding fair use in the average museum situation--where the display right is likely most significant--satisfy the three-step test under TRIPS? I end up doubtful that Justice Ginsburg would actually be sympathetic to a fair use claim if a foreign author objected to public display—indeed, allowing control over public display would then be granting extremely strong moral rights of divulgation/withdrawal to foreign works, though not domestic ones.

Overclaiming of moral rights by the PTO?

Apparently Cindy Lee Garcia isn't the only one claiming that international protections for performers' rights are self-executing in the US--according to the GAO, the PTO told it that the Berne Convention and the WIPO Performances and Phonograms Treaty provide Indian artisans with moral rights, and then VARA "also" grants rights.  (See p. 25 & n. 40.)  The GAO says the PTO reviewed the report and agreed with it.  What am I missing? 

Not sure I would have done this in a moral rights jurisdiction

A Québécoise reports: my local news report did a report on pedophiles and this is the picture they used:

If you're a Supernatural fan, this is instantly recognizable as a picture of Dean Winchester, played by Jensen Ackles, mugging for his mug shot (and, apparently, standing on a platform wishing he was 6'3") in episode 2x19, Folsom Prison Blues:

So, how would the moral rights analysis go?

When does the right of publicity trump a TM?

Mercado-Salinas v. Bart Enterprises Intern., Ltd., 2012 WL 3716721 (D. Puerto Rico)

Since this opinion comes from a motion to alter or amend the judgment, it skips over a lot of things, as will I, but one part of the holding is of significant interest—read on for a cautionary note on drafting a license to use a name.  Bart had a license from Mercado (whose continuing validity was in question) to use Mercado’s name and likeness. When a dispute arose, Mercado sued for, among other things, violation of his publicity rights.

The court found that Bart only had the right, pursuant to the license, to use Mercado’s name and likeness for existing or new materials related to Mercado’s psychic and astrological services.  New materials were defined as materials “relating to Mercado's psychic and astrological services of whatever nature whatsoever,” but that turned out to be insufficient.

In the modern economy, services can change fast.  Bart’s co-defendant used Mercado’s name and license for waltermercado.net, providing interactive astrological and psychic consultation through the internet, including some daily horoscopes published under Mercado’s name as well as live psychic readings. Likewise, co-defendant Waltervision entered into a contract allowing another company, SCI, the right to use the Mercado mark in connection with various 800 numbers, prepaid paid calling cards and pay per call live astrological and psychic readings through 900 numbers, including the creation of a new website, Telewalter.com, and the use of Mercado's name and likeness to advertise the astrological and psychic services being sold.  SCI produced gift cards featuring Mercado's name and likeness and a press release for the launch of “Walter Mercado's Psychic and Astrology Network, starring Walter Mercado.”  Defendants also operated an SMS/text-messaging service using his name and likeness with horoscopes not created by Mercado.  Co-defendant Walter Int’l published horoscopes using Mercado’s name and likeness in a Mexican newspaper; Mercado didn’t write them.

The court found that these weren’t New Materials under the contract because they didn’t relate to Mercado’s psychic and astrological services.  “This is not necessarily contingent on Mercado providing personal services to Bart, but New Materials must relate to psychic and astrological services provided by Mercado himself.”  The contract’s use of the term “produce” didn’t mean “create,” since the contract itself was written “in a manner that distinguishes between the two verbs. The Preexisting Materials provision uses the verbs ‘created or originated,’ while the New Materials provision does not use the verb ‘created.’”  Thus, the right to develop new materials “contemplates a product already in existence that is related to Mercado's psychic and astrological services. It does not give Bart the right to create new materials using Mercado's Name and Likeness. If the parties had intended to grant Bart such a right, the parties could have used the verbs ‘create’ or “originate,’ as they did in the Preexisting Materials section.”

Because of the limitation of the contract, even though defendants might own the mark, they were unable to expand the scope of their services without violating Mercado’s right of publicity.  I leave as an exercise for the reader how this might have been fixed, from Bart's perspective. 

When the court turned to the false advertising claims, matters grew even more complicated.  Bart, as owner of the mark, might have the right to use the mark to advertise its services even if it didn’t have the right to use Mercado’s name and likeness.  The court considered the mark to be “a type of endorsement.”  Bart, as owner, could use its own mark as an endorsement for advertising purposes without becoming liable for false endorsement.  Endorsement doesn’t require actual involvement in or development of the sponsored product.  (What about the FTC Guidelines, then?)

However, “endorsing a product and saying a product is created by the endorser are two different things.”  Thus, even as owner, Bart couldn’t advertise Mercado as the source of its products, except for the preexisting materials and the new materials that were in some way Mercado’s work product.  (Great example for Mark McKenna’s investigation of the meaning of Dastar.)  For example, the website featured Mercado's photo and signature with a message that read “Live consult with my most profound psychics.”  The court ruled that defendants couldn’t use this photo and signature to promote the website, nor could they refer to “Mercado's most profound psychics.”  Instead, if they owned the mark, they could use it to refer to the business—e.g., “‘profound Walter Mercado psychics’—but Bart cannot say it is selling the work product of Mercado.”  (Are consumers likely to understand this distinction?  What about the domain name?)

Likewise, ads for the SMS service couldn’t use Mercado’s name and likeness.  Further, defendants couldn’t “advertise the SMS Services as if Mercado himself were authoring the horoscopes and messages or has personally selected the psychics authoring the same.… However, advertising consults from ‘Mercado's powerful psychics’ or that consumers ‘will be connected with the good energy of Walter Mercado’” would be allowed if Bart owned the mark.  (Hunh?  How is that not using his name?)

Mercado also claimed a violation of his moral right to avoid attribution.  But Puerto Rico law only provides an attribution right, not a right against attribution for work not the author’s: “[t]he author or beneficiary of a literary, scientific, artistic and/or musical work has the right to benefit from it, and the exclusive prerogatives to attribute to him/herself or retract its authorship, dispose of his/her work, authorize its publication and protect its integrity ...”