Filewrapper® | A patent, trademark, and copyright law blog - Copyrights

Copyright Office issues new DMCA exemptions: iPhone jailbreaking, noncommercial use of DVD snippets

Mon, 26 Jul 2010 19:40:00-0500

Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA"). As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works. For example, it is arguably a violation of the DMCA to use a program to "break" the content scrambling system ("CSS") encryption used for standard DVDs in order to make a copy of the DVD, even if making such a copy would otherwise be considered fair use under copyright law (although a recent decision by the Fifth Circuit arguably holds to the contrary). The purpose of the exemptions is to adapt to any unintended consequences of the DMCA, such that lawful uses of copyrighted works are not unduly restricted.

Today, the Copyright Office issued the list of exemptions in this go-around of the triennial rulemaking process. Included among the newly-granted exemptions are circumvention of the above-mentioned CSS encryption to use "short portions" in new works for the purpose of criticism or comment, when the use is educational, noncommercial, or for documentary filmmaking. This is an important exemption, as it arguably covers the majority of videos on sites such as YouTube where short portions of movies, televisions shows, and the like are posted as a portion of a remix or other creative work.

In addition, unlocking a mobile phone to allow software to be run (commonly called "jailbreaking") is also exempted from the DMCA. Notably, this does not prevent phone providers (such as Apple) from placing the restrictions on a phone in the first instance, it simply makes it not a DMCA violation to remove the restrictions.

The Office also permitted circumvention of prohibitions on "read-aloud" functionality of e-books. Some e-books have been sold with a limitation that prevents the user from using their e-reader's "read-aloud" function, essentially turning the e-book into an audio book. This is now not a violation of the DMCA anti-circumvention provisions.

The Copyright Office revisits these exemptions every three years. Click below for the full text of the exemptions granted, or head to the Copyright Office website for the full release.

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Ninth Circuit: Filing copyright application sufficient to bring suit under Section 411(a)

Thu, 03 Jun 2010 13:40:00-0500

In a decision last week, the Ninth Circuit held the filing of an application for registration with the copyright office is sufficient to meet the requirement that a copyright be "registered" before suit is brought under 17 U.S.C. § 411(a). In the first circuit court decision on the subject since the Supreme Court's Reed Elsevier decision (holding the registration requirement of § 411(a) is not jurisdictional), the Ninth Circuit took the position that the statute was ambiguous, and that the "application" approach better comported with the purpose of the registration requirement.

The decision deepens the circuit split on the subject, with the Fifth, Seventh, and Ninth Circuits following the "application" approach, and the Tenth and Eleventh following the "registration" approach. This continues to be an issue that would benefit from either Congressional action or a definitive ruling from the Supreme Court, something the Court declined to do in Reed Elsevier.

More detail of Cosmetic Ideas, Inc. v. IAC/InteractiveCorp after the jump.

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Supreme Court: Registration requirement of 411(a) not jurisdictional for copyright claims

Tue, 02 Mar 2010 12:32:00-0500

Today the Supreme Court decided Reed Elsevier, Inc. v. Muchnick, a case regarding whether the registration requirement of 17 U.S.C. § 411(a) is jurisdictional or a claim processing rule. The Court held the requirement to be nonjurisdictional.

The case involves a class action for copyright infringement by freelance journalists based on republication of works in electronic databases that originally appeared in, for example, newspapers. Some members of the class had copyright registrations, some did not. Nevertheless, the district court certified the class and approved the proposed settlement agreement. The Second Circuit sua sponte raised the issue of jurisdiction, and eventually held the district court lacked jurisdiction to enter an order regarding the unregistered copyrights by virtue of § 411(a).

The Supreme Court disagreed, and held the registration requirement of § 411(a) did not prevent a court from entering an order affecting unregistered copyrights. Specifically, the Court held there was nothing in the statute that indicated Congress intended the requirement to be jurisdictional. Notably, the Court observed § 411(a) did not "clearly state[]" that its requirement was jurisdictional, and also explicitly permits claims involving unregistered works in certain circumstances. This was inconsistent with a jurisdictional requirement, and therefore the district court had jurisdiction to approve the settlement agreement even though it adjudicated claims for unregistered copyrights.

The Court left the question as to whether district courts should sua sponte dismiss copyright cases where the Plaintiff is asserting an unregistered copyright for another day.

More detail of Reed Elsevier, Inc. v. Muchnick after the jump.

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Fourth Circuit: Plagiarism detection service is fair use of students' copyrighted papers

Mon, 26 Oct 2009 14:27:00-0500

In a recent decision by the Court of Appeals for the Fourth Circuit, the court decided that the anti-plagiarism service provided by iParadigms at turnitin.com, did not constitute copyright infringement of high school students' papers submitted via the service. Instead, the court held the service was a fair use of the copyrighted works and therefore not infringement under § 107. However, the court reversed and remanded to a district court on the issue against a student for liability under the Computer Fraud & Abuse Act for allegedly unauthorized access to its servers based on one student's use of a password meant for students from another school obtained via the internet.

More on A.V. v. iParadigms, LLC after the jump.

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Seventh Circuit: Notice requirement to Copyright Office when registration refused not jurisdictional

Tue, 22 Sep 2009 13:25:00-0500

In a recent decision, the Seventh Circuit affirmed a district court's grant of summary judgment that a plaintiff could not prevail in her copyright claim. The court first addressed whether the plaintiff complied with the necessary procedural requirements to have her claim heard. The plaintiff had filed for a copyright registration and had been rejected (thereby satisfying part of the requirements of § 411). However, when filing suit, she did not notify the Copyright Office she was doing so, and thus did not meet this second requirement applicable to those who bring suit after being refused registration.

This fact notwithstanding, the Seventh Circuit concluded it could hear the case, given the plaintiff had her registration refused. The court characterized the notification requirement as a case processing rule, and observed the copyright office had granted a registration in the interim, and thus the purpose of the notification requirement (to permit the Copyright Office to address the issue of registrability) was satisfied.

On the merits, the court noted the plaintiff's claim failed because she did not allege copying of any of the actual materials protected by copyright, but rather her ideas for better educating students. The court affirmed the long standing rule that copyright protection does not extend to ideas, but rather the original expression of an idea.

More detail of Brooks-Ngwenya v. Indianapolis Pub. Sch. after the jump.

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Digital Britain: The UK Government's vision for a 21st century digital economy

Tue, 07 Jul 2009 10:11:00-0500

Last month, the UK Department for Culture, Media, and Sport released Digital Britain, a report regarding the future of communications infrastructure in the UK, how to deal with challenges of a digital economy (such as copyright infringement), and containing policy recommendations regarding how to move forward. Click below for our thoughts on the report and associated documents.

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Pirate Bay operators guilty of criminal infringement in Sweden; no webcast of US file sharing case

Fri, 17 Apr 2009 13:28:00-0500

In the past day, there has been two interesting bits of news in the world of cases alleging copyright infringement by way of peer-to-peer file sharing.

The first is that the individuals who operate and maintain the servers that host The Pirate Bay, the world's largest bittorrent tracker, were held to have committed criminal copyright infringement by a Swedish court. The four individuals were each sentenced to a year in prison, and ordered to pay a combined 30 million kronor ($3.6 million) in damages, substantially less than the $17.5 million in damages requested by the media companies. The Pirate Bay has video press conference on its site. The individuals are calling the verdict a win, vowing to appeal their conviction. As an author who wrote a book about the Swedish piracy movement stated:

If they're convicted, they'll be martyrs and the "piracy" movement will continue working for what they believe in, even more strongly. If they win, the signal to the public is that file sharing isn't illegal and The Pirate Bay will basically have achieved its goal.

The issue is far from over, with an appeal of the convictions upcoming, the leader of Sweden's Pirate Party issued a statement to the BBC that the verdict was a "gross injustice," and that:

This wasn't a criminal trial, it was a political trial. It is just gross beyond description that you can jail four people for providing infrastructure. There is a lot of anger in Sweden right now. File-sharing is an institution here and while I can't encourage people to break copyright law, I'm not following it and I don't agree with it. Today's events make file-sharing a hot political issue and we're going to take this to the European Parliament.

Despite the convictions, The Pirate Bay's website will continue operation, as the servers hosting it have been relocated outside Sweden.

The other development is a decision yesterday by the First Circuit reversing a district court's decision in a U.S. file sharing case. In that case (In re Sony BMG Music Entertainment), the district court granted the defendant's request that pretrial hearings be made available via webcast over the objections of various recording company plaintiffs. The First Circuit held this was not permitted based on the policy of the judicial conference of the United States and the district court's local rule 83.3. All relevant court documents may be found on the Recording Industry vs. the People blog, which is operated by Ray Beckerman, an attorney who has represented file sharing defendants.

All in all, a busy 24 hours in the world of file sharing cases.

Tenth Circuit: Insufficient proof of access dooms copyright infringement claim

Wed, 04 Mar 2009 12:44:00-0500

In a recent decision, the Tenth Circuit affirmed a district court's finding of no copyright infringement after a bench trial and the findings for the defendants on related claims. The district court held there was insufficient evidence of copying, specifically that there was no evidence the defendants had access to the copyrighted work. The copyright infringement claim was the basis for claims under the Lanham Act and New Mexico Unfair Trade Practices Act, and the district court accordingly found for the defendants on these claims as well.

The Tenth Circuit affirmed, finding no clear error in this determination. The court held that while there was a "bare possibility" that the defendants had access to the plaintiff's copyrighted work, there was insufficient evidence to reverse the district court's factual determination of no access. Further, the alleged copies were insufficiently similar to meet the "striking similarity" standard which permits access to be presumed. Accordingly, the court affirmed the finding of no copyright infringement.

Because the copyright infringement claim was the basis for the Lanham Act and New Mexico Unfair Trade Practices Act claims, the Tenth Circuit also affirmed the district court's findings for the defendants on these claims.

More on La Resolana Architects, PA v. Reno, Inc. after the jump.

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United States did not waive immunity for copyright infringement claim brought by prisoner

Thu, 05 Feb 2009 17:05:00-0500

In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction. The plaintiff is a federal prisoner who created various coyprightable works while in federal prison. He brought suit alleging copyright infringement after his works were distributed by Federal Prison Industries.

The Court of Federal Claims dismissed the case for lack of subject matter jurisdiciton, holding the government had not waived its sovereign immunity from suit in this context. The Federal Circuit affirmed, holding that because the calendars were created using government-furnished computers while the prisoner was in the "service" of the United States, sovereign immunity had not been waived under 28 U.S.C. § 1498(b). As a result, the Court of Federal Claims correctly held it lacked jurisdiction to hear the case.

More detail of Walton v. United States after the jump.

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Eleventh Circuit: Similarity of architectural plans depends largely on arrangement of features

Fri, 02 Jan 2009 15:57:00-0500

In a recent decision, the Eleventh Circuit affirmed a district court's grant of summary judgment of non-infringement in an architectural copyright case. The appellant had argued that the district court had effectively heightened the standard for infringement by performing an element-by-element comparison focusing on the differences between two floor plans. The Eleventh Circuit held the comparison was appropriate given the thin nature of architectural copyright and that, given the differences noted by the district court, summary judgment was appropriate in this case.

More detail on Intervest Constr., Inc. v. Canterbury Estate Homes, Inc. after the jump.

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Ninth Circuit: Pre-1923 published foreign works may still be copyrighted, depending on notice

Mon, 15 Dec 2008 13:27:00-0500

In a decision last week, the Ninth Circuit affirmed a district court's grant of summary judgment in favor of the plaintiff in a copyright case. The works at issue, sculptures by the famed artist Renior and coauthored by one of his assistants, Richard Guino, were created between 1913 and 1917, and first published in France no later than 1917. However, because they were not published with a U.S.-type copyright notice before 1978 (when the 1976 Copyright Act became effective).

The Ninth Circuit found this fact significant. It held that because the works were not published with such a notice until after the effective date of the 1976 Act, they were never subject to U.S. copyright under the 1909 Copyright Act, and therefore could not have fallen into the public domain in the U.S. As a result, the work fell under 17 U.S.C. § 303(a), which covers works that were created before January 1, 1978, but not previously in the public domain or copyrighted, rather than § 104A, which covers foreign works not in the public domain in their country, but, for one of various reasons, in the public domain in the United States. Given this, the work was entitled to protection for the life of the author plus 70 years, which in this case is 2043 (70 years after Guino's death in 1973). Because the work was still under copyright, the court affirmed the district court's summary judgment to the plaintiff.

This holding is particularly interesting because, as the Ninth Circuit noted, "[t]he year 1923 is significant because the 1976 Act . . . and the 1998 Copyright Extension Act operate together to create a bright line rule for which works are now in the public domain: works published before January 1, 1923 are generally in the public domain." This rule is even noted in Copyright Office Circular 22. This holding complicates that issue, confirming that one must be more careful when attempting to determine the copyright status of an unpublished foreign work.

More detail of Societe Civile Succession Richard Guino v. Renoir after the jump.

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Ninth Circuit: Copyright owner's ambiguous reservation of rights clarified with extrinsic evidence

Mon, 08 Dec 2008 15:51:00-0500

In a recent decision, the Ninth Circuit reversed a district court's grant of summary judgment that a copyright holder did not have standing to sue for copyright, trademark, unfair competition, and related declaratory judgment claims. The case involved the film Gone in 60 Seconds, produced and directed in 1974 by H.B. "Toby" Halicki, and remade in 2000. The key issue was the construction of a 1995 Agreement that provided an option to remake the movie, and assigned certain of Halicki's rights to Hollywood Pictures (a division of the Walt Disney Company and producer of the 2000 film), and more specifically what rights were reserved to Halicki's wife (who obtained Halicki's rights after his death). Based on the district court's construction of the agreement, the Plaintiffs did not have standing because they assigned all relevant rights in the Agreement, and specifically the rights to the remake of the famed Ford Mustang "Eleanor."

The Ninth Circuit reversed, holding the agreement between the parties lacked explicit details about what rights the plaintiff might have in a derivative work – namely a remake of Eleanor. However, the court found that the agreement was "reasonably susceptible to the interpretation" that the plaintiff had retained rights to the remake of Eleanor. When combined with other extrinsic evidence not considered by the district court, it was clear to the court that plaintiff owned the rights to remake Eleanor, and therefore reversed the district court's holding of no standing to bring the copyright claim.

The court also highlighted several errors by the district court regarding trademark standing. First, the district court held the plaintiff did not have standing to claim infringement of the "Eleanor" mark because she did not own a registration in the mark. This was the wrong legal standard, because a plaintiff may also have standing to claim infringement if they are the owner of an unregistered mark. The district court also held that the plaintiff did not have standing to sue on the "Gone in 60 Seconds" mark because her registrations were for toy cars and baseball caps, while the alleged infringement was for use of the mark on actual cars. The Ninth Circuit noted the district court confused the test for infringement with the test for standing: to establish standing under the Lanham Act, a plaintiff must only demonstrate that they are the owner of a mark for any class of products. Because the plaintiff owned a registration for the Gone in 60 Seconds mark (even for different goods), she had standing under the Lanham Act to bring an infringement claim against the defendant.

More on Halicki Films, LLC v. Sanderson Sales & Mktg. after the jump.

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Second Circuit: Copyright license of indeterminate term improperly read to be perpetual

Fri, 07 Nov 2008 14:59:00-0500

In this appeal from the United States District Court for the Northern District of New York, the Second Circuit reversed the dismissal of a copyright claim based on ambiguity in a contract, but affirmed dismissal of the antitrust claims because the plaintiff's proposed market definition was not plausible.

The district court dismissed the copyright claims based on a contract granting the defendants the right to copy the plaintiff's materials with no time limit. The district court held this was unambiguous, and granted a perpetual license to the defendants. The Second Circuit held the contract ambiguous, in part because under New York law "contracts which are vague as to their duration generally will not be construed to provide for perpetual performance." As a result, the court remanded the case for the district court to determine the duration of the license granted by determining the parties' intent.

The Second Circuit agreed with the district court that the plaintiff defined the relevant market in an implausible manner, and affirmed the dismissal of the antitrust claims. The plaintiff's proposed market definition did not encompass all interchangeable substitute products, even under the facts in the light most favorable to the plaintiff, and therefore dismissal was proper.

More detail of Chapman v. New York State Div. for Youth after the jump.

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Tenth anniversary of the Digital Millenium Copyright Act

Tue, 28 Oct 2008 10:56:00-0500

On October 28, 1998, President Clinton signed the Digital Millenium Copyright Act into law. The Act is probably best known for two of its provisions: (1) the anti-cirumvention provsion, which prohibits circumventing a "technological measure that effectively controls access to" a copyrighted work, and (2) the online "safe harbor" provision, which generally insulates parties that host material online from liability for infringement provided they follow the prescribed notice and takedown procedure.

Depending on your point of view, the success of these two provisions are often seen to be inversely correlated: content providers generally favor the anti-circumvention provsion, as it has permitted the maintenance of various DRM schemes, such as CSS for DVDs, FairPlay on iTunes, and the various DRM systems associated with Blu-ray discs (such as AACS and BD+), although it has not prevented those schemes from being overcome by various programmers. The safe harbor provisions have been largely successful from the perspective of online companies, having fostered the development and growth of sites hosting user-submitted content, such as YouTube, although it has not been without its issues, such as the ongoing litigation between Viacom and YouTube regarding whether YouTube may be liable for user-posted content even if the notice-and-takedown procedures are followed.

Several sites are discussing the DMCA on its anniversary:

Ninth Circuit: Absent evidence of intent to the contrary, custom software purchaser retains license

Thu, 25 Sep 2008 11:02:00-0500

In a recent decision, the Ninth Circuit affirmed a district court's decision that a software developer's delivery of customized software includes a grant of an unlimited, non-exclusive, implied license to use, modify, and retain the source code of the programs in the absence of written agreements to the contrary. The Ninth Circuit also affirmed the district court’s determination that the license granted by the transfer defeated the developer’s trade secret claim based on the source code of the software as the license to modify the source code implicitly allowed access to the trade secrets in the source code.

More on Asset Mktg. Sys., Inc. v. Gagnon after the jump.

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