COPYRIGHT LITIGATION UPDATE NBI, INDIANAPOLIS MARCH 25, 2008 Sara Anne Hook, M.L.S., M.B.A., J.D. Professor and Associate Dean IU School of Informatics, IUPUI
TOPICS FOR TODAY
Overview of copyright law
Common causes of action and defenses
Valuing the damages
Relevant legislation and case law update
COPYRIGHT LAW: A CONSTITUTIONAL PRINCIPLE
First case of copyright law: St. Columbo, 567?: “to every cow his calf”
Based on Statute of Anne, 1710
Constitution, Article I, Section 8, : To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Inventions
Balancing of rights between creators (incentive) v. society (needs/future development)
History: technology drives copyright
Current trend: control over content v. means of distribution
Original works of authorship
Fixed in a tangible medium (includes emails, web sites, art work, slides, videos, but not oral communications unless they are preserved in some fashion)
Minimal amount of creativity (telephone books and forms – famous cases, databases - unsettled)
Expression only, not data or facts
Formalities of registration and notice no longer needed, but useful in event of litigation
WHO OWNS WHAT?
Original creator of the work
Copyright can be assigned or transferred (author contracts, for example)
Work-for-hire: important concept for employees
See your institution’s intellectual property policies
Independent contractor (important: have a written contract that includes who owns copyright)
Intellectual property and institutional policies
WHAT ARE THE RIGHTS?
Digital transmission of sound recordings
“ Moral rights” (foreign countries, some states, protects attribution and integrity of a work, can protect in state court through contract law, privacy, defamation and unfair competition doctrines, unique, limited edition works of visual arts in the U.S. may be protect by VARA)
DURATION OF COPYRIGHT PROTECTION
Sonny Bono Copyright Term Extension Act changed this (extended by additional 20 years) – intended to keep the U.S. in step with the European Union – sponsored by Rep. Bono – fear that American goods would suffer abroad if they were not shielded with the same protections.
Caution: even things you think are so old that they are no longer protected, probably still are
For works created after 1978:
Life of the author plus 70 years
Work-for-hire: 95 years from publication or 120 years from creation
Special and complex rules for unpublished items
Also check specific rules for items published before 1978
An exception to the exclusive rights of the author
Current tensions in the definition and application of fair use: producers and vendors would like it narrowed – is the digital world different than print?
Four part test: but no “bright line”
Purpose: commercial v. scholarly or non-profit, but think ahead
Nature: fact-based v. creative (like poetry)
Amount: ratio plus “substantiality of the work”
Effect: on the potential market
If copyright protection is now automatic…
But: certain benefits if you register
Statutory v. actual damages
Court costs and attorney’s fees
Prima facie evidence of copyright ownership
“ Innocent infringer” defense may be lost
Notice given to others
Work is captured in LC sources and databases
Forms are on the U.S. Copyright Office web site
Forms are simple and contain step-by-step instructions
Fee to register is only $45
Only other requirement is a deposit of one or two copies
COPYRIGHT MYTHS: SOME CLIENTS STILL BELIEVE THAT…
Proper citation satisfies copyright
Everything on the web is “public domain”
If no “c” in a circle on the material, it is not protected by copyright
Copyright applies to print materials only
Fair use – we’re a non-profit organization, so we are safe
Underestimate length of time before an item is in public domain
Cutting and pasting (or sampling) makes a new creation
The big companies (“The Man”) are rich and can spare my free download (copy, etc.)
Big government (“Big Brother”) protects big business, so it is my civic duty to challenge this by infringing
NEW TWISTS FROM THE COURTS: VARIOUS CASES, RESULTS…
“ Thumbnails” – okay, “Inlining” – infringes?
Framing – creates a derivative work? – then infringes – also a display – not fair use
“ Deep linking” – in most cases, seen as protected by the First Amendment. But many sites now ask you not to do it or request that you ask permission first. For-profit entities most concerned – bypasses main page with advertising. Early cases focused on unfair competition. Trespass, misappropriation, property rights and trademark law also used. New concept of “virtual trespass.”
For your clients own web sites, have logo or name on every page and add a back button to every page to direct users back to the main page of the web site.
But be careful to advise clients not to link to sites that they know or suspect are infringing someone else’s copyright
PRACTICAL SUGGESTIONS FOR CLIENTS TO AVOID INFRINGEMENT
Assume protected until proven otherwise
Anticipate future uses
Find alternatives in public domain
Use minimum amount of other work: just enough to get point across
Transformative use: value-added, creates new utility
Simple link: okay, but do not use company’s graphic or logo as “button”
PRACTICAL SUGGESTIONS: CONT.
Watch amount used: courts have held journal article to be entire work
In linking, give credit or provide annotation – many web sites want you to seek permission or want reciprocal linking. Avoid linking to information that is illegal or infringes another’s copyright – contributory infringement
Make a good faith effort to determine who owns copyright and document this – a risk-benefit analysis
Limits on access: firewall, counter, time limits, do not advertise site
Plan ahead: don’t let your client hide under fair use exception, especially if materials might be used later for a profit
PRACTICAL SUGGESTIONS: CONT.
Photographs: photographer plus letter of release from subjects (right to privacy, right of publicity if famous person)
Performance: composer, producer, conductor, performers – permissions and releases
Disclaimers if medical/legal information
Important: encourage clients to register their own creative materials or at least provide a notice (“innocent infringer”)
DIGITAL MILLENNIUM COPYRIGHT ACT (DMCA)
Signed into law on October 28, 1998
A response to new information technologies
Implements WIPO treaties: protection of certain works and anti-circumvention measures
Liability for OSPs (Online Service Providers) or ISP (Internet Service Provider) – learn specifics if your school/institution offers access
Circumvention of technological measures
Special exemptions for educational institutions
Special exceptions for educational institutions
Allowed to circumvent in making good faith effort whether to they want to obtain authorized access (for library collection, classroom use)
Also allowed to circumvent if development and testing of:
Copyright Management Information (CMI)
Distribution of false CMI and removal or alteration of CMI
Responds to ease in which one can “cut and paste” to make a new web site that infringes
Both intentional and unintentional (although can be mitigating factors that would reduce penalties)
Penalties are high: both civil and criminal (federal), even fines and imprisonment (educational institutions: civil penalties only)
Important: it may now be easier (and more profitable in terms of damages) for suits to be brought for manipulation/removal of CMI than for copyright infringement itself
Remind clients not to “cut and paste” when developing web sites and multimedia materials, but to give full credit for work of others, to seek permission or to develop their own original content
CAUSES OF ACTION
Violation of DMCA
Violation of VARA
Violation of No Electronic Theft Act of 1997
State law claims – contracts, rights of publicity as examples
Proof that the work was copied
Access to copyrighted work: ideas and expression
Substantial similarity of works
Proof that work was illicitly copied
One may lawfully copy unprotected elements
Substantial similarity of original expression
Qualitative and quantitative dimensions
Total concept and feel
No defenses, such as fair use
TESTS FOR SUBSTANTIAL SIMILARITY
Literary works ( Shaw v. Lindheim , The Equalizer case): Objective-subjective
Also known as Extrinsic-Intrinsic
Access, title, theme, plot and sequence of events, mood, setting and pace, characters and dialogue
Music : Expert testimony-Intended audience/lay observer
New scientific test: the Mega-Element Analysis of comparing sound waves
RECAP: THINGS OUR CLIENT SHOULD NEVER DO…
Wholesale unauthorized copying of copyrighted works
Creating unauthorized derivative works
Going beyond license restrictions
Impermissible linking, framing and inlining
Peer-to-peer file sharing
Removing Copyright Management Information (CMI)
Cracking copyright protection measures
THINGS OUR CLIENT MIGHT BE ABLE TO DO
Use software elements not protected by copyright
Copy web elements not protected by copyright
Copy elements in the public domain
Purely functional items
Words, titles, slogans
Works where copyright has expired
Works dedicated to the public domain
U.S. government works
Create similar works independently
Copy within the bounds of fair use
DEFENSES TO COPYRIGHT INFRINGEMENT
the original material was not protected by copyright
the use was authorized by a license or transfer
our client did not own the copyright
the time period for our client to bring the suit is over ("statute of limitations")
our client intentionally delayed bringing the suit
our client knew the defendant was using her original material and yet did nothing to stop it
no access to our client’s work
works are not substantially similar
the work was in the public domain
educational and library copying
our client’s work qualifies for only “thin” copyright protection
our client’s work does not qualify for copyright protection at all – due to merger (idea/expression) or functionality
Actual damages (damages and/or profits)
No double recovery (direct competition, lost sales may equal defendant’s profits)
Statutory damages ($750-$30,000)
Willful infringement ($150,000 per infringed work)
Innocent infringement (not less than $200)
Attorney fees and other costs
Contempt ( MGE UPS Systems, Inc. v. Titan Specialized Services, Inc .)
Impounding and destroying infringing work
CRIMINAL PROSECUTION FOR COPYRIGHT INFRINGEMENT
Willful copyright infringement is a federal crime
Even if not done for financial gain
If done for financial gain, up to $250,000 in fines and up to 10 years in prison for multiple offenses
Contact U.S. Attorney’s office for details.
VALUING THE DAMAGES
The ease or difficulty of determining actual damages will vary in terms of:
the nature of the work that was infringed
the size of the market for the work
the availability of financial information about the market
For a unique piece of our client’s artwork:
we may need to hire an appraiser to judge the value
the customer base
the sophistication of customers
the future harm to the market for her piece and her reputation as a whole.
VALUING THE DAMAGES, CONT.
Anyone who has ever watched Antiques Roadshow or read the auction reports on the sale of string instruments may marvel at the wide range of values placed on items.
Trends in the market for the client’s work and the work of similar artists
“ What’s hot and “what’s not” in the fickle word of art collecting
may make determining an amount to request for our client’s loss very difficult.
On the other hand, it may be easier to assess the true loss to an author or publisher when a popular work of fiction becomes the victim of a market flooded with pirated copies.
Likewise, copyright infringement of web sites may be difficult to place a value on for litigation purposes.
STRATEGIES AND APPROACHES
Determine scope of the problem
Assess strength of evidence
Potential damage to sales, reputation, etc.
Gather all information – be sure copyright registration(s) in place – if not, expedited filing may be warranted ($685) – see U.S. Copyright Office Circular 10
STRATEGIES AND APPROACHES, CONT.
Cease and desist letter(s)
Can request payment for profits previously made from the infringement
Offer a license agreement
Get the infringer to stop future infringing behavior
Mediation as an alternative
Special procedures for online infringements
Notice of claimed infringement to ISP
Copyright owner’s response to counter-notice
STRATEGIES AND APPROACHES WITH INDIVIDUAL CREATORS
Creative work = person
Distinguishing “idea” from “expression”
Ownership of physical item v. ownership of copyright
Strange dichotomy: “stealing” their work v. unfettered right to take and use the work of others
Attribution = copyright compliance
Registration = $45.00 is a lot of money for some artists
Derivative works – digital imaging, sampling
Lack of business acumen
Work-for-hire issues, employment agreements
Organization and documentation
Rule 1.3 Diligence
Rule 1.4 Communication
Rule 8.3 Reporting Professional Misconduct
Rule 8.4 Misconduct
Rule 3.1 Meritorious Claims and Contentions
Rule 3.3 Candor Toward the Tribunal
Rule 3.4 Fairness to Opposing Party and Counsel
ETHICS – SOME INTERESTING CASES AND OPINIONS RELATED TO COPYRIGHT
Bernstein v. Glavin , 725 N.E.2d 455 (Ct. App. Ind. March 15, 2000) (copyright case)
To prove a legal malpractice claim, must show:
Employment of an attorney (duty)
Failure by the attorney to exercise ordinary skill and knowledge (breach)
Proximate cause (causation)
Loss to the plaintiff (damages)
MGE UPS Systems, Inc. v. Titan Specialized Services, Inc. , 2006 WL 3524502 (M.D. Tenn Dec. 6, 2006).
Ohio Ethical Opinion 2003-2, issued April 11, 2003
It is improper for a lawyer or law firm to provide statistics to attorneys, business clients and potential business clients regarding the number of intellectual property matters won, lost and settled by the law firm because it is both
Misleading - unverifiable
Self-laudatory - creates unjustified expectations
It is improper for a lawyer or law firm to offer money-back guarantees to clients on intellectual property matters.
Lawyer acquires a prohibited proprietary interest in a cause of action
Creates a conflict of interest between the lawyer and the client
Creates an unjustified expectation that the lawyer has improper control or influence over the legal system.
License Negotiations (article by William Thomashower in The Computer & Internet Lawyer, Vol 20, #12, Dec. 2003, pp. 21-25)
“ The exponential growth of the Internet has magnified the opportunities for intellectual property exchanges, as well as conflicts.”
Conflicts of interest
Truthful negotiating and zealous representation
Knowledge of facts undermining the licensed property
Exceptional cases due to inequitable conduct
Unique aspect of intellectual property licensing arena, in which the value of licensed property may depend on its validity and enforceability, which may depend on information known to the licensor or its attorney and not known by the licensee.
Example: A copyright registration may actually be invalid or subject to attack because it is solely derived from a public domain work with no separate originality or selection, although the application by the client did not disclose that fact.
Many licenses have written representations by the licensor as to validity and enforceability. If the lawyer has such a knowledge, then he cannot negotiate a license because he knows that the representation will be false.
Nebraska State Bar Association (Interpretation of Canon 27, Advertising, and Canon 46, Notice to Local Lawyers)
The proposed announcement should be rephrased from “specializing in Patent, Trademark and Copyright Law” to “practice limited to”.
It is proper for the members of such law firm to announce the opening of a new office in another state.
It is proper to announce the name, and the association with the firm of a Registered U.S. Patent Attorney.
The announcement may be properly sent by mail to other lawyers, but only in cities wherein the law firm maintains its offices; and may not be sent to other lawyers in the states where it maintains offices.
The law firm may also publish in a local legal journal in each of the cities where it maintains offices, a brief and dignified announcement of its availability to serve other lawyers in the limited fields set forth.
South Carolina Ethics Advisory Opinion 81-02
Whether it is permissible an out-of-state lawyer specializing in Patent, Trademark and Copyright Law to serve as “Of Counsel” to an in-state firm.
A lawyer who is described as being Of Counsel to another lawyer or law firm must have a continuing (or semi-permanent) relationship with that lawyer or firm and not a relationship better described as a “forwarder-receiver of legal business”.
Close association, like that of a retired lawyers, in regular, if not daily, contact – who remains available to the firm for consulting and advice - the type of services rendered and the fees received fit within the definition.
Firm letterhead must reflect the jurisdiction in which he was licensed to practice.
H.R. 2033/S 1957 - Design Piracy Prohibition Act
S. 2317 - The Intellectual Property Enforcement Act of 2007
S. 2591 To amend chapter 1 of title 17, United States Code, to provide an exemption from exclusive rights in copyright for certain nonprofit organizations to display live football games, and for other purposes
H.R. 1689 - Curb Illegal Downloading on College Campuses Act of 2007 (Introduced in House)
H.R. 4789/S. 2500 – Performance Rights Act
H.R. 4279 Prioritizing Resources and Organization for Intellectual Property Act of 2007
In addition to cases in written materials, see also:
Torres-Negrn v. J & N Records , LLC, 504 F.3d 151 (1 st Cir. 2007)
Davis v. Blige , 505 F.3d 90 (2 nd Cir. 2007)
Bridgeport Music, Inc. v. Justin Combs Publishing , 2007 U.S. App. LEXIS 24262 (6 th Cir. 2007).
Each year, I teach a course at the IU School of Informatics, IUPUI, called N480 Technology and the Law. The written materials for Trademark and Copyright Litigation Update are taken from my course, which in turn is heavily based on the two required textbooks for the course, particularly the 4 th and 5 th edition of Fishman. The Fishman book is particularly good, since it includes a CD of sample forms and templates.