In 2005, Musical artist Anthony Lawrence Dash composed a track titled, “Tony Gunz Beat.”  Floyd Mayweather, Jr., arguably the greatest professional boxer of all time, used a variation of that track with lyrics added as his entrance music during two World Wresting Entertainment “WWE” events, WrestleMania XXIV in 2008 and on WWE RAW in 2009.

Although Dash created Tony Gunz Beat in 2005, the track was not copyrighted until October 2009, after both of Mayweather’s WWE’s appearances.  Because Dash waited until after the copyright infringement occurred to file his copyright application, he was unable to seek automatic statutory damages and instead was required to prove actual damages to the court.

At the District Court, the case was bifurcated to first determine whether Dash was entitled to damages before reaching the question of infringement.  Dash filed an expert report which concluded that (i) other performers whose songs were played earned a maximum of $3,000 in licensing fees; and (ii) based on the net profits of the events, Dash was entitled to more than $1 million in  damages.

The District Court disagreed, holding that Dash had failed to prove a causal connection between the alleged infringement and actual damages.  Regarding the net profits of the event, the District Court held that Dash had not demonstrated that his music was in any way related to the events profits.  Regarding the amount of other licensing fees paid to other performers, the District Court — seemingly unfairly — held that Dash was not “similar situated” to the other performers (presumably because the other performers are well known).

On appeal, the Fourth Circuit Court of Appeals upheld the District Court’s ruling.  The Court held, that Dash did not provide sufficient evidence to demonstrate damages.

[C]ourts have recognized several methods for calculating the compensable loss suffered by a copyright owner as a result of infringement. It is generally accepted that “the primary measure of recovery is the extent to which the market value of the copyrighted work at the time of the infringement has been injured or destroyed by the infringement.” Fitzgerald Publ’g Co., Inc. v. Baylor Publ’g Co., Inc., 807 F.2d 1110, 1118 (2d Cir. 1986); Mackie v. Rieser, 296 F.3d 909, 917 (9th Cir. 2002) (quoting Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 512 (9th Cir. 1985)). The fair market value of a copyrighted work is derived from an objective, not a subjective, inquiry. Mackie, 296 F.3d at 917 (general claims of “hurt feelings” or an owner’s “personal objections to the manipulation of his artwork” do not factor into the determination of the work’s fair market value).

The Court of Appeals recognized that there are many methods to value the “injury” to a copyrighted work’s market value, but found that Dash had not provided evidence to support any of these methods.

Injury to a copyrighted work’s market value can be measured in a variety of ways. The first possible measure is the amount of revenue that the copyright holder lost as a result of infringement, such as his own lost sales of the work. Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 708 (9th Cir. 2004). Another cognizable measure is the fair market value of the licensing “fee the owner was entitled to charge for [the infringer’s] use” of his copyrighted work. On Davis, 246 F.3d at 165 (“If a copier of protected work, instead of obtaining permission and paying the fee, proceeds without permission and without compensating the owner, . . . the owner has suffered damages to the extent of the infringer’s taking without paying what the owner was legally entitled to exact a fee for.”). “In order to make out his claim that he suffered actual damage because of the infringer’s failure to pay the fee, the owner must show that the thing taken had a fair market value.” 6 Id. at 166.

The Court of Appeals found that Dash’s calculations were purely speculative and that he failed to “prove the existence of a causal connection between the alleged infringement and some loss of anticipated revenue” (quoting Thoroughbred Software Int’l, Inc. v. Dice Corp., 488 F.3d 352, 358 (6th Cir. 2007)).  The court concluded that no evidence was provided to demonstrate that Dash’s music had any market value.  In reaching this conclusion the Court of Appeals conveniently disregards the evidence that the Tony Gunz Beat was actually used during the WWE events, providing support that Dash’s work was equal in value (and “similarly situated”) to the other musical works which were used.

 Nor is the fact that music, in general, has value to the WWE sufficient to show that Dash’s beat, in particular, had such value. Under such reasoning, any piece of music, regardless of its quality or reputation, would necessarily have a fair market value to Appellees. Were such evidence sufficient to rebut a properly supported motion for summary judgment, a copyright holder would need to show only that the infringer generally values the type of copyrighted material infringed, without any evidence that the specific work had a fair market value. Such a result is untenable and contrary to the well-established principles regarding actual damages under § 504(b). While the term “actual damages” should be “broadly construed to favor victims of infringement,” a copyright holder “must show that the thing taken had a fair market value.” On Davis, 246 F.3d at 164, 166 (emphasis added). That some music has value to the WWE, even great value, is not enough to establish that TGB had a fair market value.

Ouch.  So the fact that Dash’s music was purportedly used, even hand selected by boxing superstar Mayweather, was insufficient to demonstrate that the music was worth anything?  This ruling is particularly harsh considering this was an appeal from summary judgment where all reasonable inferences should have been drawn in by the court in favor of Dash.

While Mayweather clearly won this legal battle, it is unknown how many thousands or tens of thousands of dollars were spent by Mayweather on this litigation and appeal.  Assuming arguendo that Dash’s Tony Gunz Beat was used by Mayweather, how much less would it have cost Mayweather to simply reach a settlement?  Especially considering that other artists were paid about $3,000 to use their music.  Perhaps Dash was simply asking for too much in damages because of the notoriety and popularity of Mayweather.  Because settlement discussions are usually held confidentially behind closed doors, we may never know.

Under the 1976 copyright act, artistic works still in their initial term of copyright protection on January 1, 1978 were given two terms of protection.  An initial term of 28 years and a renewal term of 67 years.

Gary Friedrich, the creator of the popular Ghost Rider comic book character first published by Marvel Comics in 1972, sued Marvel claiming copyright infringement of by Marvel for publishing Ghost Rider works after 2000, the expiration of the initial 28 year copyright term for Ghost Rider.  Friedrich claimed that any transfer of his copyright in the works applied only to the first twenty-eight year copyright term, and not to the renewal copyright term.

The District Court granted Marvel’s motion for summary judgment, finding that Marvel had obtained all rights from Friedrich.  On Appeal, Friedrich argued that he did not transfer the renewal copyright term and therefore after the expiration of the initial 28 year copyright term, the rights in the works reverted to him.

On Appeal, the Second Circuit noted that the renewal copyright term is a separate property right,

The renewal term of a copyright is “not merely an extension of the original copyright term but a ‘new estate . . . clear of all rights, interests or licenses granted under the original copyright.'” P.C. Films Corp., 138 F.3d at 456-57 (quoting G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469, 471 (2d Cir. 1951)). Its purpose is “to ‘provide authors a second opportunity to obtain remuneration for their works'” and “‘to renegotiate the terms of the grant once the value of the work has been tested.'” Id. at 457 (alteration omitted) (quoting Stewart v. Abend, 495 U.S. 207, 217, 218-19 (1990)).

Moreover, the court noted, while an author may assign his renewal rights during the copyright’s initial term, there is a strong presumption against such a conveyance.

An author may assign his renewal rights during the copyright’s initial term, but “there is a strong presumption against the conveyance of renewal rights.” Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679, 684 (2d Cir. 1993). This presumption may be rebutted by an express assignment of “renewals of copyright” or “extensions of copyright,” or by “general words of assignment,” such as “forever,” “hereafter,” or “perpetual,” if the parties’ clear intent was to convey renewal rights. P.C. Films Corp., 138 F.3d at 457 (quoting Corcovado Music Corp., 981 F.2d at 684-85; Siegel v. Nat’l Periodical Publ’ns., Inc., 508 F.2d 909, 913 (2d Cir. 1974))

The Court of Appeals held that the language used in the Ghost Rider contract was at best ambiguous, in particular as to whether it conveyed renewal rights.  The court held that, “[t]he contract contains no explicit reference to renewal rights and most of the language merely tracks the 1976 Act’s definition of ‘work made for hire.’ ”

The Court of Appeals there reversed the District Court’s grant of summary judgment finding genuine issues of material fact regarding the parties’ intent to assign renewal rights in the agreement.

The Plaintiffs Luvdarts LLC and Davis-Reuss, Inc. produce and sell greeting card style messages which are sent using a mobile phone’s Multimedia Messaging Service (MMS).  Within the electronic greeting cards is a notice that the greeting card may be shared only once.  There is not, however, any copy protection preventing someone from sharing the greeting card numerous times.  Not surprisingly, users ignore the one-time share notice and share the greeting cards with lots of people.

Luvdarts decided to sue the mobile phone carries for vicarious and contributory copyright infringement for providing the means that its customers use to share the electronic greeting cards.

As the Supreme Court has observed, the Copyright Act does not explicitly render a third person liable for another person’s infringement. Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417, 434 (1984). The doctrines [of contributory and vicarious liability] pressed here “emerged from common law principles and are well established in the law.” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). Vicarious infringement occurs when one profits from direct infringement while declining to exercise a right to stop or limit it, and contributory infringement liability requires “inducing or encouraging” direct infringement. Id.

Luvdarts first tried to argue that the carriers were liable for vicarious liability.

 Vicarious liability attaches if the Carriers had both the (1) “right and ability to supervise the infringing activity” and (2) “a direct financial interest” in the activity.

Here, Luvdarts argued that while the carries do not supervise the infringing activity, they could easily do so with a “metadata system of digital rights management.”  The court disagreed that this satisfies the “right and ability to supervise” prong.

Luvdarts fails to cite any authority to support this proposition, which runs contrary to our precedent. In Napster, this court held that “right and ability to supervise” should be evaluated in the context of a system’s “current architecture.” Napster Inc., 239 F.3d at 1024. Moreover, as we noted in Perfect 10, Inc. v. Amazon.com, Inc., resting vicarious liability on the Carriers’ failure to change their behavior would tend to blur the distinction between contributory liability and vicarious liability. 508 F.3d 1146, 1175 (9th Cir. 2007) (“[I]n general, contributory liability is based on the defendant’s failure to stop its own actions which facilitate third-party infringement, while vicarious liability is based on the defendant’s failure to cause a third party to stop its directly infringing activities.”).

Because Luvdarts failed to support the first prong of vicarious liability, the court declined to address the second prong, i.e. whether the carries have a direct financial interest in the activity (which — in the case of over-priced multimedia text messages — the carriers absolutely have a direct finical interest).

Defendant Donald W. Warrick, who teaches in the organizational development field, copied the diagram and incorporated it in his course materials after receiving a copy from a student.  At the trial court, Warrick moved for summary judgment arguing that the diagram was not entitled to copyright protection.  The trial court granted the motion and dismissed the case. The Plaintiff appealed.

Warrick argues that Plaintiff’s diagram is not entitled to copyright protection as it lacks the request creativity to merit copyright protection and consists primarily of “ideas, concepts, principles or discoveries” that are not copyrightable.  The Tenth Circuit Court of Appeals disagreed.  The court held that because there are many different ways to express the facts and ideas expressed in the diagram, the diagram itself is a creative work entitled to copyright protection.

Warrick argues Lippitt’s diagram is not eligible for copyright protection because it consists only of unprotectable ideas or expression so intertwined with the underlying ideas as to lose their protection under the merger doctrine. In Warrick’s view, Lippitt’s diagram expresses a “fundamental” idea about organizational change and development. (Answer Br. 25.) It is, he says, a “statement about objective reality, not a work of fiction or the imagination.” (Id.)

Warrick misses the point. Although Lippitt’s diagram may express an idea, Warrick could express the same ideas in his own fashion. He might have organized the components in a pie-chart-style format to show how each is a component of a larger whole. He could have approached the concept in a two-column format, listing each defect in the left column and the missing component in the right column. He could have simply described the concepts in prose, as he did in his motion for summary judgment. He could have used his own words to describe the components. He might have broken down or combined the components in a different way. He could have expressed the absence of one of the components with an “X” over the component, as did another writer’s sample diagram; one Lippitt attached as Exhibit 10 to her response to Warrick’s summary judgment motion. (Appellant’s App’x 247-52.)

Defendant Warrick further argues that the elements of the diagram are not sufficient for copyright protection.

 Warrick says the elements of Lippitt’s diagram—short labels, shapes, symbols, and selection of typeface— are not eligible for copyright protection. See Arica Inst., 970 F.2d at 1072-73 (noting individual words and short phrases are generally not copyrightable); Atari Games Corp. v. Oman, 979 F.2d 242, 247 (D.C. Cir. 1992) (noting “simple geometric shapes and coloring alone are per se not copyrightable”) (quotations omitted); 37 C.F.R. § 202.1(a) (“familiar symbols” and “mere variations of typographic ornamentation” are not copyrightable). In essence, Warrick claims the diagram lacks the “minimal degree of creativity” necessary to qualify for copyright protection, even though “the requisite level of creativity is extremely low.” Feist Publ’ns, 499 U.S. at 345; see CMM Cable Rep, Inc. v. Ocean Coast Props., Inc., 97 F.3d 1504, 1519 (1st Cir. 1996) (listing examples of expression lacking the requisite creativity).

Again, the Tenth Circuit disagreed.

Warrick’s view misses the forest for the trees. Any copyrightable work can be sliced into elements unworthy of copyright protection. See CMM Cable Rep, 97 F.3d at 1514. Books could be reduced to a collection of non-copyrightable words. Music could be distilled into a series of non-copyrightable rhythmic tones. A painting could be viewed as a composition of unprotectable colors. Warrick’s impulse to unpack Lippitt’s diagram into ever-smaller and less-protectable elements is understandable, as copyright jurisprudence tends toward dissection.

Nevertheless, a limiting principle constrains this reductionism. We must focus on whether Lippitt has “selected, coordinated, and arranged” the elements of her diagram in an original way. Feist Publ’ns, 499 U.S. at 358; Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1004 (2d Cir. 1995); see also Feist Publ’ns, 499 U.S. at 349 (“[I]f the selection and arrangement are original, these elements of the work are eligible for copyright protection.”).

The Appeals Court reversed the trial court’s grant of summary judgment and remanded the case where it will proceed with discovery and then on to a trial on the merits.

After filing suit, the content owners moved for a preliminary injunction to shut down the Aereo service.  The district court found in favor of Aereo and the content holders appealed to the United States District Court for the Second Circuit.

The Second Circuit noted that the outcome of this case comes down to whether Aereo violated the content holder’s public performance right.  The court found the Cablevision case dispositive of this issue. In Cablevision, a cable company offered its customers a remove DVR system accessible through their cable box.  For each program which a customer selected to record a separate copy of that program would be stored.  The second circuit in Cablevision held that the remote DVR did not violate copyright law and the recording and replaying of content was not a “public performance.”

the Cablevision court concluded that Cablevision’s transmission of a recorded program to an individual subscriber was not a public performance. Id. Each transmission of a program could be received by only one Cablevision customer, namely the customer who requested that the copy be created. No other Cablevision customer could receive a transmission generated from that particular copy. The “universe of people capable of receiving an RS-DVR transmission is the single subscriber whose self-made copy is used to create that transmission.” Id. at 137. The transmission was therefore not made “to the public” within the meaning of the Transmit Clause and did not infringe the plaintiffs’ public performance right. Id. at 138.

The court held that the Aereo system where an individual antenna was allocated to each subscriber was similar to the facts in Cablevision.

When an Aereo customer elects to watch or record a program using either the “Watch” or “Record” features, Aereo’s system creates a unique copy of that program on a portion of a hard drive assigned only to that Aereo user. And when an Aereo user chooses to watch the recorded program, whether (nearly) live or days after the program has aired, the transmission sent by Aereo and received by that user is generated from that unique copy. No other Aereo user can ever receive a transmission from that copy. Thus, just as in Cablevision, the potential audience of each Aereo transmission is the single user who requested that a program be recorded.

The content holders attempted several arguments at distinguishing Aereo’s service from Cablevision.  Including the fact that Cablevision had a license to transmit programming where Aereo had no license.

The court, however, rejected all of these arguments, including the license argument, holding that Aereo’s transmission are not “public performances” and therefore Aereo does not require a license.

Aereo’s transmissions of unique copies of broadcast television programs created at its users’ requests and transmitted while the programs are still airing on broadcast television are not “public performances” of the Plaintiffs’ copyrighted works under Cablevision.

Moreover, the Aereo panel was unwilling to overrule Cablevision another panel decision by the Second Circuit.

Though presented as efforts to distinguish Cablevision, many of Plaintiffs’ arguments really urge us to overrule Cablevision. One panel of this Court, however, “cannot overrule a prior decision of another panel.” Union of Needletrades, Indus. & Textile Employees, AFL-CIO, CLC v. U.S. I.N.S., 336 F.3d 200, 210 (2d Cir. 2003). We are “bound by the decisions of prior panels until such time as they are overruled either by an en banc panel of our Court or by the Supreme Court.” United States v. Wilkerson, 361 F.3d 717, 732 (2d Cir. 2004).

The Second Circuit therefore affirmed the district court’s order denying the preliminary injunction and allowed Aereo to continue to operate while the content holder’s action proceeds in court.

One of the judge’s dissented finding Aereo’s technology platform a “sham.”

The system employs thousands of individual dime-sized antennas, but there is no technologically sound reason to use a multitude of tiny individual antennas rather than one central antenna; indeed, the system is a Rube Goldberg-like contrivance, over-engineered in an attempt to avoid the reach of the Copyright Act and to take advantage of a perceived loophole in the law. After capturing the broadcast signal, Aereo makes a copy of the selected program for each viewer, whether the user chooses to “Watch” now or “Record” for later. Under Aereo’s theory, by using these individual antennas and copies, it may retransmit, for example, the Super Bowl “live” to 50,000 subscribers and yet, because each subscriber has an individual antenna and a “unique recorded cop[y]” of the broadcast, these are “private” performances. Of course, the argument makes no sense. These are very much public performances.

In contrast to the authorized cable TV service at issue in Cablevision, the dissenting judge found that Aereo’s service is not authorized by the content providers and therefore runs afoul of the copyright act.

Aereo is doing precisely what cable companies, satellite television companies, and authorized Internet streaming companies do — they capture over-the-air broadcasts and retransmit them to customers — except that those entities are doing it legally, pursuant to statutory or negotiated licenses, for a fee. By accepting Aereo’s argument that it may do so without authorization and without paying a fee, the majority elevates form over substance. Its decision, in my view, conflicts with the text of the Copyright Act, its legislative history, and our case law.

The dissenting judge would have enjoined Aereo finding that, “Aereo’s transmission of live public broadcasts over the Internet to paying subscribers are unlicensed transmissions ‘to the public.'”

The content providers have appealed the panel decision to the full Second Circuit.  The content providers ask for a reconsideration of the panel decision based on their interpretation of the Copyright Act.  It will be interesting to see what the Second Circuit decides to do.

The Ninth Circuit Court of Appeals first reviewed the definition of fair use.

17 U.S.C. § 107 states, “[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research [] is not an infringement of copyright.” It lists four factors to guide courts in their analysis:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

The court, in analyzing the factors agreed the use of the clip was fair use.  Regarding the first factor, the purpose and character of the use, the court agreed the Jersey Boys use of the clip was “transformative” since it added something new to the existing work.

Dodger references the Four Seasons’ performance on the January 2, 1966 episode of The Ed Sullivan Show to mark an important moment in the band’s career
…
SOFA’s argument that the clip was used for its own entertainment value is not supported by the record. Moreover, because Dodger’s use of the clip is transformative, the fact that Jersey Boys is a commercial production is of little significance. Campbell, 510 U.S. at 579. Therefore, the first fair use factor heavily favors Dodger.

Regarding the second factor, the nature of the copyrighted work, the court found that the contents of the clip itself were factual.  The court held, “the clip conveys mainly factual information – who was about to perform. Therefore, the second factor also favors Dodger.”

Regarding the third factor, the amount of the work used, the court held that the seven second clip was not “qualitatively significant.”  In fact the court noted that, “It is doubtful that the clip on its own qualifies for copyright protection, much less as a qualitatively significant segment of the overall episode.”

Regarding the fourth factor, the market effect, the court found that Jersey Boys has no effect on The Ed Sullivan Show,

The clip is seven seconds long and only appears once in the play. Dodger does not reproduce Jersey Boys on videotape or DVD, which would allow for repeated viewing of the clip. Dodger’s use of the clip advances its own original creation without any reasonable threat to SOFA’s business model. Therefore the fourth factor also favors a finding of fair use.

The court then concluded that the use of the seven second clip was fair use.  The court went on to uphold the award of attorney’s fees to Dodger.

In July 2007, Clark Rockefeller kidnapped his daughter during a bitter divorce.  As it turned out, the name Clark Rockefeller was merely an alias and Mr. Rockefeller’s life, a lie.  Law enforcement officials used Harney’s photograph on a wanted poster.  After a nationwide manhunt, and substantial media coverage the father and daughter were located six days later.

Sony Pictures produced a made-for-tv movie based on the story called “Who is Clark Rockefeller?”  As part of the production, Sony recreated the Harney’s photograph using the actors from the movie.

Regarding Harney’s photograph, the court notes,

Harney selected the lens, camera settings, flash lighting, and camera angle so that the church would be present and in-focus in the background and later edited the photograph on his computer. (See Harney Aff. ¶ 4, Docket # 18 Ex. 1.) Reigh sits on Clark’s shoulders, holding a palm leaf. He holds a program from the church service. They are centered in the frame, visible from the middle of his chest upward, and close to the camera. A tree and the church steeple loom above, and shadows streak across the frame.

Regarding Sony’s photograph, the court notes,

the actors who played the Rockefellers clothed and posed in a manner similar, but not identical, to that of their real-life subjects in the Harney Photograph are visible during the film and in one promotional commercial. They do not hold a palm leaf or church program, they are set against a backdrop of densely-leaved tree branches, and the scene is uniformly lit.

While the photographs were superficially similar, the district court held that the similarities were “factual” in nature rather than “artistic.”

Harney captured a moment in time of a father and daughter passing through Beacon Hill. The Rockefellers were not models. Harney did not select their clothes, give them a church program and palm leaf as props, or ask them to pose. Those aspects of the Rockefellers’ appearance are factual realities that exist independently of any photo. They are not Harney’s original expression, and they are not copyrightable elements of his photograph.

There is, however, significant creative input in the photograph. The combination of the Rockefellers in the foreground, holding the church program and palm leaf, and the church in the background evokes the essence of Beacon Hill on Palm Sunday. The lighting in the photograph highlights the church and the young daughter and displays the long shadows of early spring.

When the Harney Photograph and the Sony Images are compared, they share the factual content but not Harney’s expressive elements. The clothing and pose are similar, but the Sony Image does not include the palm leaf held aloft by Reigh. The backdrop and lighting are different; in particular, the Sony Image eliminates the church. The only shared element for which Harney can claim responsibility is the position of the individuals relative to the boundaries of the photo, although in the original Clark Rockefeller’s face is closer to the camera and less of his body is visible.

The district court therefore granted summary judgment in favor of Sony Pictures.

Plaintiff Gary Blehm is the creator of series of stick figures named “Penmen” (pictured on the left).  The defendants, Albert and John Jacobs, created their own series of stick figures named “Jake” (pictured on the right).

Blehm developed the Penmen characters in the 1980’s and had several posters of the Penmen characters copyrighted.  Around 1994 defendant John Jacobs first drew Jake.  Initially Jake was just a head, but later a body was added to Jake along with the slogan “Life is good.”

Coincidentally (or intentionally according to the plaintiff) Jake was placed in a number of poses and activities strikingly similar to the Penmen.  Blehm identified sixty-seven Jake images that were very similar to Penmen images.  Perhaps there are only so many poses and activities a stick figure can do, but the resemblance between some of the images is uncanny.

While it appears that the defendants are “copiers” are they “infringers”?  Is the idea of putting a stick figure into various poses and activities protectable?

“In order to prove copying of legally [protectable] material, a plaintiff must typically show substantial similarity between legally [protectable] elements of the original work and the allegedly infringing work.” Jacobsen, 287 F.3d at 942-43. This commonly stated rule raises two questions: First, what elements of a copyrighted work are legally protectable? Second, how do courts determine whether a copyrighted work’s legally protectable elements are “substantially similar” to an accused work?

Copyright protects original works of authorship with a minimal degree of creativity.  But not all elements of a copyrighted work are protectable.

Section 102(b) provides, “In no case does copyright protection . . . extend to any idea . . . [or] concept . . . regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b). This provision enshrines the “fundamental tenet” that copyright “protection extends only to the author’s original expression and not to the ideas embodied in that expression.” Gates Rubber Co., 9 F.3d at 836; see also Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547 (1985) (explaining that copyright protection extends only to “those aspects of the work—termed ‘expression’—that display the stamp of the [plaintiff’s] originality”); Rogers v. Koons, 960 F.2d 301, 308 (2d Cir. 1992) (“[I]n looking at . . . two works of art to determine whether they are substantially similar, focus must be on the similarity of the expression of an idea or fact, not on the similarity of the facts, ideas or concepts themselves.”).

Here, the Court of Appeals for the Tenth Circuit held that Penmen and Jake are not substantially similar.  Moreover, the similarities between the two sets of stick figures (i.e. the poses and activities) not protectable under copyright.

Copying alone is not infringement. The infringement determination depends on what is copied. Assuming Life is Good copied Penmen images when it produced Jake images, our substantial similarity analysis shows it copied ideas rather than expression, which would make Life is Good a copier but not an infringer under copyright law.

The idea of a stick figure giving a peace sign and the idea of a stick figure catching a Frisbee is simply not protectable creative expression.  So while it appears that the defendants copied the plaintiff, they infringed ideas and themes rather than protectable expression.  And so the court ruled in favor of the defendants, and life was good for them.

In Kernel Records v. Mosley, the United States Court of Appeals for the Eleventh Circuit, the court attempted to sort out whether the song Acidjazzed Evening was published, and if so, if it was simultaneously published in every country of the world the instant it was (allegedly) posted to an Australian website.

Under U.S. Copyright Law, a work first published in the United States (or simultaneous in the United States and one or more foreign nations), is a “United States work” which must be registered prior to (or applied for) to have standing to bring a copyright lawsuit. (See 17 U.S.C. § 101).

A work first published in a foreign country does not require registration prior to commencement of a lawsuit.  Although foreign works can, and in many cases, should be registered in the United States.

The defendant in Mosley argued that Acidjazzed Evening was first posted on an Australian website and that posting the song on a website constituted simultaneous world-wide publication, including in the United States.  The defendant moved to dismiss arguing that without a registration certificate, the plaintiff lacked standing.

The plaintiff argued that what is now primarily a website was originally a CD magazine, which was distributed on CD Rom in Australia.

The court explains that the term “publication” has a specific definition in the copyright act.

“[P]ublication is a legal word of art, denoting a process much more esoteric than is suggested by the lay definition of the term.” Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211, 1214 n.3 (11th Cir. 1999) (quotations omitted). The Copyright Act defines “publication” as:

the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

However, proof of distribution or an offer to distribute, alone, is insufficient to prove publication. Central to the determination of publication is the method, extent, and purpose of distribution. See Estate of Martin Luther King, Jr., Inc., 194 F.3d at 1214-1216 (discussing general and limited publication); cf. 17 U.S.C. § 101 (defining publication as distribution to the public).

In the end, the case was decided primarily due to the lack of evidence (by either side) as to whether Acidjazzed Evening was posted to a website or alternatively was distributed on CD Rom in Australia.

It was uncessesary for the court to determine wheter simultaneous worldwide publication occurred, and, if so, whether that makes the work a “United States work” under the Copyright Act.  The court stated,

Because the record lacks sufficiently probative evidence of simultaneous worldwide publication, we need not determine what effect simultaneous worldwide publication would have under 17 U.S.C. § 101’s definition of a United States work.

In Rogers v. Better Business Bureau, the United States District Court for the Southern District of Texas, provided a nice synopsis of District Court cases dealing with the issue as to whether posting a work on the internet, amounts to publication of the work.

The Court in Rogers sums up the current state of the law by concluding, “although the current trend appears to favor finding works posted on the internet to be published, the reasons for finding publication varies from case to case and is fact dependent.”

In other words—sometimes, but it depends.  The Court in Rogers summarized the District Court cases as follows:

In Getaped.com, Inc. v. Cangemi, 188 F. Supp.2d 398, 402 (S.D.N.Y. 2002), the district judge found that a website, similar to photographs, music files, or software, was published when posted on the internet. The court stated: By accessing a webpage, the user not only views the page but can also view–-and copy–-the code used to create it. In other words, merely by accessing a webpage, an Internet user acquires the ability to make a copy of that webpage, a copy that is, in fact, indistinguishable in every part from the original.  Consequently, when a website goes live, the creator loses the ability to control either duplication or further distribution of his or her work. Id.32

A 2006 opinion out of the same court stated that, assuming that the internet posting of a digital file of a show performance constituted distribution, it lacked the element of commercial exploitation required for publication. Einhorn v. Mergatroyd Prods., 426 F. Supp.2d 189, 197 (S.D.N.Y. 2006).

In a more recent opinion, the same district court stated that posting images on a website was not publication. McLaren v. Chico’s FAS, Inc., No. 10 Civ. 2481(JSR), 2010 WL 4615772, at *1 (S.D.N.Y. Nov. 9, 2010)(unpublished). In 2009, another district court avoided the issue, finding it to be “unsettled” and unnecessary to that court’s ruling. Moberg v. 33T LLC, 666 F. Supp.2d 415, 422 (D. Del. 2009).

The Northern District of California made a passing remark in a case dealing with the jurisdictional effect of application for registration that reflects the view that making a website available to the public on the internet was publishing it. See Sleep Science Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770, at *6 (N.D. Cal. May 10, 2010)(unpublished).

…

Citing Getaped.com, Inc., the Eastern District of Arkansas found that photographs that were accessible online to others who could download them freely were published. William Wade Waller Co. v. Nexstar Broad., Inc., No. 4-10-CV-00764 GTE, 2011 WL 2648584, at *2 (E.D. Ark. July 6, 2011).

Without discussion or explanation, another district court stated that the defendant “published a You- Tube video of a musical work.” Erickson v. Blake, 839 F. Supp.2d 1132, 1134 (D. Or. 2012).

Rogers, pp. 14-16 [additional paragraph breaks added; removed overruled district court case in Kernel v. Mosley].

Jammie Thomas-Rasset was accused by various record companies of using the file sharing program KaZaA to commit copyright infringement.  During the trial Thomas-Rasset claimed she had never heard of the file-sharing program KaZaA.  The record companies, however, put on evidence that showed Thomas-Rasset replaced the hard drive in her computer after being notified of the copyright infringement claims.  A jury found Thomas-Rasset guilty of willfully infringing copyrights of twenty-four songs.  The jury awarded damages of $222,000.

Several months later the court sua sponte raised the issue of an incorrect jury instruction.  the judge decided that the jury instructions incorrectly stated that “the Copyright Act forbids making sound recordings available for distribution on a peer-to-peer network, regardless of whether there is proof of ‘actual distribution’.”  A new trial was granted.

After the second trial, a second jury found Thomas-Rasset guilty of copyright infringement and awarded damages of $1,920,000.  The judge changed the award to $54,000 on the grounds that the jury award was “shocking.”  The record companies declined the remitted damage award and a new trial was ordered just on damages.  The third jury award damages of $1,500,000.  The judge again reduced the award to $54,000 finding that the $1.5M award violated the Due Process Clause of the Fifth Amendment.

The record companies appealed the judge’s reduced award to the United States Court of Appeals for the Eighth Circuit and requested that the original jury award of $222,000 be reinstated.  Specifically the record companies wanted a ruling that the court erred by holding that an individual does not infringe a copyright by making a copyrighted work available to the public without authorization.

Thomas-Rasset cross-appealed that any award of statutory damages was unconstitutional. In particular, Thomas-Rasset requested that the first damage award of $222,000 be reinstated, but then requested that the appeals court find that amount unconstitutional.

The Eight Circuit, however, refused to address the issues raised by the record companies — namely, is making a copyrighted work “available” a violation of the Copyright Act.  Instead, the appeals court found that the trial court should have enjoined Thomas-Rasset from making copyrighted works available to the public and that statutory damages of $222,000 were constitutional.

For the reasons set forth below, we conclude that when the district court entered judgment after the verdict in the third trial, the court should have enjoined Thomas-Rasset from making copyrighted works available to the public, whether or not that conduct by itself violates rights under the Copyright Act. We also conclude that statutory damages of at least $222,000 were constitutional, and that the district court erred in holding that the Due Process Clause allowed statutory damages of only $54,000. We therefore will vacate the district court’s judgment and remand with directions to enter a judgment that includes those remedies. The question whether the district court correctly granted a new trial after the first verdict is moot.

Regarding the extent of the injunction, the appeals court found that it was error for the district court judge not to issue an order that prevented Thomas-Rasset from making sound recording available for distribution.

After the third trial, the district court entered an injunction that prohibits Thomas-Rasset from “using the Internet or any online media distribution system to reproduce (i.e., download) any of Plaintiffs’ Recordings, or to distribute (i.e., upload) any of Plaintiff’s Recordings.” The recording companies urged the district court to amend the judgment to enjoin Thomas-Rasset from making any of their sound recordings available for distribution to the public through an online media distribution system. The district court declined to do so on the ground that the Copyright Act does not provide an exclusive right to making recordings available. The court further reasoned that the injunction as granted was adequate to address the concerns of the companies.
. . .
We conclude that the district court’s ruling was based on an error of law.
. . .
The recording companies rightly point out that once Thomas-Rasset makes copyrighted works available on an online media distribution system, she has completed all of the steps necessary for her to engage in the same distribution that the court did enjoin. The record also demonstrates the practical difficulties of detecting actual transfer of recordings to third parties even when a party has made large numbers of recordings available for distribution online. The narrower injunction granted by the district court thus could be difficult to enforce.

For these reasons, we conclude that the district court erred after the third trial by concluding that the broader injunction requested by the companies was impermissible as a matter of law. An injunction against making recordings available was lawful and appropriate under the circumstances, even accepting the district court’s interpretation of the Copyright Act.

Regarding damages, the court found that the statutory damages of $9,250 for each song did not violate the Due Process Clause.

The Supreme Court long ago declared that damages awarded pursuant to a statute violate due process only if they are “so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.” St. Louis, I.M. & S. Ry. Co. v. Williams, 251 U.S. 63, 67 (1919). Under this standard, Congress possesses a “wide latitude of discretion” in setting statutory damages. Id. at 66. Williams is still good law, and the district court was correct to apply it.
. . .
Applying the Williams standard, we conclude that an award of $9,250 per each of twenty-four works is not “so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.” 251 U.S. at 67. Congress, exercising its “wide latitude of discretion,” id. at 66, set a statutory damages range for willful copyright infringement of $750 to $150,000 per infringed work. 17 U.S.C. § 504(c). The award here is toward the lower end of this broad range. As in Williams, “the interests of the public, the numberless opportunities for committing the offense, and the need for securing uniform adherence to [federal law]” support the constitutionality of the award. Id. at 67.

While the court in dicta indicated that a hypothetical multi-million dollar award for non-commercial copyright infringement might be unconstitutional, such was not the case before the court.  And so the Eighth Circuit vacated the district court’s judgment and reinstated the original damages award of $222,000 along with an expanded injunction that prevents Thomas-Rasset from making any of the record company’s songs available for distribution to the public.