Copyright Society: recent developments (but not the most recent)

This panel had the misfortune to occur just as the Second Circuit released HathiTrust.  More on that to come, obviously.

Recent Developments in Copyright Law
Panelists: Robert W. Clarida, Reitler Kailas & Rosenblatt LLC
Thomas Kjellberg, Cowan Liebowitz & Latman, P.C.
Snow glitter globe copyright: Pan v. Kohl’s (S.D. Ohio 2013).  Sculptural work was registered. 12(b)(6) motion was denied on copyrightability/substantial similarity.  §43(a) claims as well.   
Though it’s just a Santa, and we have to filter out the stereotypical elements of a Santa, there could still be copying of the specific elements.  Even after filtering, there are myriad ways to portray a Santa.  There could be substantial similarity because of virtually identical shape, height, circumference, hats, scarves, eyes, noses, mitten hands—an ordinary observer would overlook the differences.
Pan’s Santa

Kohl’s Santa
Hobbs v. John (7th Cir. 2013).  Elton John’s “Nikita”: affirmed 12(b)(6) dismissal.  P wrote song “Natasha,” on similar theme.  Idea/expression, scenes a faire, etc.  Combination of elements that aren’t protectable can be protectable, but that doesn’t mean that you can’t dismiss the case.  Why was a UK plaintiff against a UK defendant in a jurisdiction with hostile case law?  Like Nikita, we’ll never know.
Petrella: fine for © owner to defer suit until she can estimate whether the game is worth the candle.
Court expressly doesn’t reach claim accrual, though 9 circuits have adopted discovery rule and not injury rule.
Capitol Records v. Harrison Greenwich (Sup. Ct. N.Y. County 2014): statutory period for NY copyright is 6 years.  Restaurant used Bee Gees music as background on website without license.  Found out in 2009, didn’t sue until 2012.  Harrison argued the suit was untimely, citing 3 year statute of limitations for injury to property.  Judge said there was a catchall clause for “an action for which no limitation is specifically prescribed by law.”  That was for common law copyright.
Anderson v. LaVere (Miss. 2014): underlying facts are lost in the mists of time—Robert Johnson, legendary figure.  Father of blues and also father of many children.  Producer LaVere arranged with Johnson’s half sister to exploit the two known photos said to be of Johnson.  LaVere collected $1.5 million in royalties, but in the 90s Johnson had a commercial resurgence and others started to lay claim to be his rightful heirs.  One, Claude Johnson, was found to be his sole rightful heir/son by the Miss. S.Ct.  Claude Johnson’s claims for fraud: barred by statute of limitations; copyright SOL mentioned, absolutely incomprehensibly.  So now Claude Johnson is the heir.
HarperCollins v. Open Road Integrated Media (SDNY 2014): do old rights grants to publisher encompass ebook rights?  1971 contract: court finds it did give HarperCollins ebook rights.  Book at issue: Julie of the Wolves.  Three critical clauses: exclusive right to publish “in book form.”  Rosetta Books focused on that clause, and D here really tried to say “in book form” isn’t ebooks; but in some cases it might be enough.  Have to look at facts/circumstances.  Also says “sell, lease, or make other disposition of subsidiary rights in which it has an interest.” Doesn’t solve the problem.  Finally: notwithstanding, the publisher shall grant no license without the written consent of the author w/r/t “use thereof in storage and retrieval and information and/or whether through computer, computer-stored, mechanical or other electronic means now known or hearafter invented,” and net proceeds to be split 50/50 with author and publisher.  Not well drafted: what is that “and/or” doing?
D proposed a 50/50 deal with the author; author went to her existing publisher and asked for the same deal, HC said let’s do 75/25 even though the contract says 50/50. So she went with D and got an indemnification deal with D.  D sold 1600 ebooks, thousands of dollars at stake.
Court says this is a contract question.  Extrinsic evidence is likely irrelevant.  Guided by new use precedent like Boosey & Hawkes v. Disney—do movie rights encompass home video/TV.  Question is whether new use may reasonably be described to fall within the medium described. No default rule. Impossible to reconstruct actual intent of 40 years ago; author has since died. Foreseeability isn’t a sine qua non of finding a grant encompasses new technology.  HC has a right to license electronic publishing, but not to publish electronically itself.
Not like Rosetta Books, which explicitly referenced the right to “print.”  Court said the final paragraph enabled HC to issue licenses for uses broad enough to reach ebooks. But it’s a limit and not a grant.  He thinks the contract was saying that if you don’t have ebook rights you have to come to the author.  Maybe it implies a right to license, maybe not, but the only exclusive right in the contract is the right to publish, not to license. Court found that distinction irrelevant, though. Question was whether HC had exclusive right to license ebooks.  But here, the author licensed the publishing; the D only published!  Footnote: court offers no opinion on whether HC breached its contract by offering 75/25 split.
Still something unworkable about the result: HC has the right to license, and it won’t if the author insists on 50/50, so the ebook won’t come out. The court was mindful of the market implications. Risk of deadlock was high. But the parties explicitly split the rights and gave the author a veto right. He thinks there’s more gray than the court acknowledged. 
Finally: court expressed hope that the language was antiquated and the problem would never come up again.
Craigslist v. 3Taps Inc. (ND Cal. 2013): scraping case.  D scraped Craigslist listings, wholesale.  Reformatted visually.  Padmapper ordered data geographically to help people find apartments. But Craigslist just takes listings people send them—how does it have standing for a copyright claim?  Court found that for a short period, in anticipation of litigation, Craigslist changed ToS to acquire exclusive rights in everything submitted to Craigslist—became the copyright owner between July 16 and Aug 8 2012.  Court allows that only for the period when the ToS claimed exclusive rights.  There are no magic words that need to be included in a transfer.  No discussion of whether clicking on a button could be a signed writing under §204.
But Metro. Reg’l Info. Sys. v. Am. Home Realty Network (4thCir. 2013) answered that question. Rather than subscribe to a MLS and get the feed, D took photos and made them directly available to users.  P compiles data/photos from various real estate agents and brokers.  Terms clicked through assigned P all rights, and P registered database every 90 days.  Court rejects need for very specific itemization of every photographer/etc.  But main issue is whether clickthrough was signed writing.  First, this provision isn’t intended for benefit of third party infringer, but more importantly, e-Sign Act says electronic signatures are valid for all federal purposes with exceptions not relevant here.
Gary Friedrich Enters v. Marvel Characters (2d Cir. 2013): Ghost Rider comic character. Created 1968; tried to self-publish and created written synopsis of origin story. Didn’t get anywhere; eventually got Marvel interested.  P supervised entire publication.  Published 1972 with © notice in Marvel’s name, “conceived and written by Gary Friedrich,” but no written agreement.  Agreement in 1978, when Marvel thought it should get some paperwork.  Boilerplate WFH language about commissioned for collective work.  Belt-and-suspenders: if not WFH, assigned.  Agrees not to contest Marvel’s exclusive ownership.
Friedrich sued over Marvel’s renewal registration/new uses.  But what about that “forever” language?  District court said “forever” had to include renewal term, even if he was the sole author and it wasn’t a WFH.  Second Circuit remanded.  Main reason: ambiguities in contract/strong presumption against conveyance of renewal term rights. Strain of paternalism. Renewal rights = new estate.  Need content of whole agreement: Second Circuit finds agreement ambiguous, opaque, unclear.  “Forever” isn’t ambiguous, but when you read it, it seems only to cover work submitted after the date of the agreement, some language to the contrary.  “have been and will be” is in there, but the court isn’t willing to stretch that back to 1971 self-publishing. A Marvel witness who hadn’t seen the agreement before even read it in deposition and thought the language was forward-looking, which was evidence of ambiguity.  No magic words “renewal term.” Genuine dispute on intent: result in remand.
Still no section 203 termination cases: predicted trainwreck hasn’t materialized.
Section 304: Jack Kirby, freelancer, but under 1909 Act instance and expense test his works could nonetheless be (and were) for hire.  Assignments were still given by Marvel; Marvel could and did reject some of his artwork; there was some evidence that work sessions resembled an employment arrangement.  “Expense” was a more difficult question, because Marvel paid a flat rate, only for pages that Marvel accepted.  But he expected payment and mostly it happened, so expenses was satisfied. Presumption of WFH arose that could be rebutted only by an explicit agreement to the contrary, and the heirs didn’t have it.  All they had was a 1975 agreement that used both WFH and assignment language; that wasn’t enough.  Marvel paid w/checks that included assignment, not WFH, language, but that also wasn’t enough.  No termination because no transfer.
Copyrightability: Teller v. Dogge (D. Nev. 2014): first pantomime case!  No longer argued as copyright in magic trick.  This was an illusion.  Dogge argued that his method of performing the trick was different, but the court found that didn’t matter.  Doesn’t matter whether it’s real magic.  The performances appear identical.  (Actually, were it real magic, wouldn’t §102 exclude it as the inherent result of patentable subject matter?)
Note that these cases involve weird hybrid performances on YouTube: possibly the wave of the future?
Azaria v. Bierko (C.D. Cal. 2014): Comedian Hank Azaria, voice on the Simpsons, traveled in same social circles as comedian Craig Bierko. Since 1986, Azaria has done a baseball announcer character for his friends’ amusement.  In 1990, he was at a party and met Bierko, who also had a baseball announcer voice, and they had a great time riffing off each other. Bierko left a message on a friend’s answering machine tape, though it’s been destroyed and no one can remember the contents. They got together and riffed again and again.  Azaria then wanted to use the baseball voice in a project, and Bierko said no.  In 2010, Azaria did a Funny or Die video, which gave the character a name, Jim Brockmire, and had actual ESPN sports announcers say they stole from Brockmire.
Questions for litigation: copyrightability of each character, infringement, and contract.
Copyrightability: Brockmire, yes, he has attributes that are fixed and he is the story being told. Although that’s really beside the point since Azaria isn’t suing for infringement.
But the Bierko character is too vague—40ish, white male announcer with psychological issues.  We know Brockmire has a lucky pen, by contrast.  And what we do know about Bierko’s character isn’t fixed in a tangible medium.  A voice is not copyrightable.
No implied contract because disclosure of voice in 1990 wasn’t disclosed for sale; and phone call in 1997 where Azaria allegedly asked permission the voice had already been disclosed. The two elements, disclosure and proposing terms for sale, implicitly have to be simultaneous.
Garcia v. Google: Garcia was lied to; had minor role in film.  Bad movies make bad law.  (I’d never seen the clip: wow, that was a terrible dubbing event, content aside.)  Kozinski: She was the copyright owner of her performance. Implied license was exceeded.  Kozinski assured us that these facts would not come up again.  “I know this is bad law, but this woman’s life is in danger and we need to do something.” Similar to his reasoning in the Network Solutions case: we need to provide a remedy.  Dissent makes good points about performance and fixation and copyrightability.  Loses credibility by saying it could be a WFH—but she’s not an employee and there’s no writing.
Am. Inst. of Physics v. Schwegman Lundberg & Woessner (D. Minn. 2013): summary judgment to patent law firm on fair use of copies of articles disclosed as prior art.
Kienitz v. Sconnie Nation LLC (W.D. Wis. 2013): “Sorry for partying” case: sold 54 T-shirts with gross profit of $910: robustly transformative, citing Cariou.
Faulkner Literary Rights v. Sony Pictures (N.D. Miss. 2013). Used fair use factors to determine de minimis/substantial similarity (crowd hisses).  It’s fair use and there’s no substantial similarity, or there’s no substantial similarity because it’s fair use, or something.  (She’s my sister and my daughter!)
Seltzer v. Green Day (9th Cir. 2013): P’s own deposition testimony said that the image was tainted, reassociated, changed by D’s use, which doomed the claim.  Court adopted incredibly lax standard for transformativeness: new expressive content is apparent.  Reversed grant of attorneys’ fees, finding case not objectively unreasonable.
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