Copyright Case Management -- Handouts.ppt · Bratz Pre-Trial Case Management Order A General...

1

Review

Patent ©

• can exclude competitors• no requirement of copying

• should not exclude competitors• copying required

thin

holes

scènes à faire?

Copyright Remedies

• Injunctive Relief

• impounding and disposition of infringing articles

• Monetary Relief

• actual damages; and

• Criminal Prosecution

• infringer’s profitsor • statutory damages

• No Electronic Theft (NET) Act

• Costs and Attorney Fees • prevailing party (w/i court’s discretion)

§412 (registration req’d))

2

According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. * * *

Injunctive Relief v.

eBay v. MercExchange, 547 U.S. 388 (2006)

This approach is consistent with our treatment of injunctions under the Copyright Act. Like a patent owner, a copyright holder possesses “the right to exclude others from using his property.” Fox Film Corp. v. Doyal, 286 U.S. 123, 127 (1932); see also id., at 127-128 (“A copyright, like a patent, is at once the equivalent given by the public for benefits bestowed by the genius and meditations and skill of individuals, and the incentive to further efforts for the same important objects” (internal quotation marks omitted)). Like the Patent Act, the Copyright Act provides that courts “may” grant injunctive relief “on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502(a). And as in our decision today, this Court has consistently rejected invitations to replace traditional equitable considerations with a rule that an injunction automatically follows a determination that a copyright has been infringed. See, e.g., New York Times Co. v. Tasini, 533 U.S. 483, 505 (2001) (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, n. 10 (1994)); Dun v. Lumbermen's Credit Assn., 209 U.S. 20, 23-24 (1908).

3

We hold today that eBay applies with equal force (a) to preliminary injunctions (b) that are issued for alleged copyright infringement.

Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010)

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Damages and Profits - §504(b)

• $50 – revenue forcreating an add-itional pattern

Actual Damages Profits

$29 m

$57 m



Actual Damages Profits$229 m

$57m

$172 m

ApportionmentSheldon v. MGM

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apportionment

Actual Damages Profits

$29 m

$57 m

$2 m

$2.35

.0001176%

Statutory Damages - §504(c)

$750 < court award < $30,000

• per work (all parts of a compilation or derivative workconstitute one work)

$150,000willful infringement

$200innocent infringement

• © must be registered prior to infringement (§412)

v.

MyMP3.com service

4700 records @ $25,000 per infringement = $118 million

settled for $53.8 million

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evaluating theprotectability ofeach element

filtering out theunprotected

elements

“Golden Nuggets”

then

then

leaving only

Infringement Analysis

the type of peopleto whom the works

seem similar

the nature ofthe similarity

the degree ofsimilarity thatamounts to“substantial”

which requiresconsideration of

and

and

“Sliding scale”:the fewer ways

there are toexpress an idea,the greater the

similarity must be

direct evidence

access

probative similarityaka

substantial similarity

striking similarity

“InverseRatioRule”

plus

is proved by

or by evidence of

or which arewhat thefact-finder considerswhenevaluating

dissecting theplaintiff’s workinto elements

is identified by

When the defendant denies usingthe plaintiff’s work, or claims that

the extent of the use is not infringing,infringement requires proof of:

substantialsimilarity of the twoworks as a whole

substantialsimilarity betweenan element of thedefendant’s work

and a “GoldenNugget” from the

plaintiff’s work

or ?

Copyrightprotected material

Substantialsimilarity

resulting inofActual copying

1. Factual Copying 2. Copying as a Legal Matter

The Cohens and the KellysAbie’s Irish Rose

Story - Main Idea

Plot Outline

Subplots

General Characters and Scenes

Text

Specific Character Elements

COMPARISON

ProtectableElements

8

Apple Mac OS System 1.1

1985

Windows 1.0(no overlapping windows)

MEMORANDUM

Threat to sue

To:

Licensing Agreement1. Microsoft may use and sublicense derivative works generated by Windows 1.0.

2. Microsoft will develop and release Word and Excel for Mac.

* * *

1983

9

Apple Mac OS System 3.0

Windows 2.03

1985 19881983

COMPLAINT

v.

)))

©

11

STANDARD FOR DETERMININGILLICIT COPYING

Virtual Identity

SubstantialSimilarity

Range of Protectable, Unauthorized Expression

BroadE.g., artisitic works

NarrowE.g., predominantlyfunctional works

Apple v. Microsoft (9th Cir. 1994)

13

Data East: Karate Champ Epyx: World Karate Champ

Data East v. Epyx, 862 F.2d 204 (9th Cir. 1988)

The fifteen features listed by the court “encompass the idea of karate.” These features, which consist of the game procedure, common karate moves, the idea of background scenes, a time element, a referee, computer graphics, and bonus points, result from either constraints inherent in the sport of karate or computer restraints. . . . The lower court erred by not limiting the scope of Data East’s copyright protection to the author’s contribution – the scoreboard and background scenes. In actuality, however, the backgrounds are quite dissimilar and the method of scorekeeping, though similar, is inconsequential. Based upon these two features, a discerning 17.5 year-old boy could not regard the works as substantially similar.

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1. © Work Made for Hire2. Assignment Agreement?

• California Labor Code § 2870

US CodeTitle 17

© CAL

IF

OR

NI

A

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Works Made for Hire1976 Act Regime

freelance artist

(1) employee

• within scope of employment

• agency relationship– multi-factor test:• Right to control work being performed• Skill required• Source of instrumentalities and tools• Location of work• Duration of relationship• Right to assign additional projects• Hired party’s discretion• Method of payment• Role in hiring and paying assistants• Regular course of employer’s business• Payment of employee benefits, taxes

(2) independent contractor

• “specially ordered or commissioned”

• within an enumerated category:

• written agreement signed by bothparties expressly stating “work madefor hire.”

• contribution to collective work• part of motion picture/AV work• translation• supplementary work• compilation• test• answer material for a test• atlas

(note: principally collaborative works)

Employee Confidential Information and Inventions Agreement

2. Ownership of Inventions

I agree to communicate to the Company as promptly and fully as practicable all inventions (as defined below) conceived or reduced to practice by me (alone or jointly by others) at any time during employment by the Company. I hereby assign to the Company and/or its nominees all my rights, title and interest in such inventions, and all my rights, title and interest in any patents, copyrights, patent applications or copyright applications based thereon. * * *

[a]

[b] As used in this Agreement, the term “inventions” includes, but is not limited to, all discoveries, improvements, processes, developments, designs, know-how, data, computer programs and formulae, whether patentable or unpatentable.

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California Labor Code § 2870

Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either:

(a)

(1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or

(2) Result from any work performed by the employee for the employer.

Exhibit CB11

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MGA Jade Doll Bryant “Jade” Drawings

Exhibit CB31

MGA Cloe Doll Bryant “Zoe” Drawing

2 Exhibit CB3

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MGA Yasmin Doll Bryant “Lupe” Drawing

3 Exhibit CB3

MGA Sasha Doll Bryant “Hallidae” Drawing

4 Exhibit CB3

19

Bryant Drawing

Bratz Group Illustration

Bratz Packaging

5 Exhibit CB3

Bryant Bratz Drawing Bratz Sculpt

6 Exhibit CB3

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Infringement Analysis:Abstraction-Filtration-Comparison

Story - Main Idea

Plot Outline

Subplots

General Characters and Scenes

Text

Specific Character Elements

LEVELS OF ABSTRACTIONUpon any work . . . a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his "ideas," to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can.

Nichols v. Universal Pictures Corp45 F.2d 119 (2nd Cir. 1930)

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ABSTRACTION

Works of Art: Fashion Doll

• robust protection

• modest protection

no protection

Concepts

Sketches

Studies

Drawings

Models

Sculpt w/Face Paint

ABSTRACTION

Works of Art: Fashion Doll

Studies

Drawings

Models

Sculpt w/Face Paint

Carter Bryant’s Work on Bratz(prior to MGA engagement)

Concepts• sassy, bratty fashion dolls• multi-racial/ethnic ensemble• big head/ big eyes/big feet/small body

Sketches • rudimentary; not instructional

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Protectable Expression

FILTRATION

• scenes à faire

• originality

• functional features

• merger

• inseparable features ofuseful articles

COMPARISON

ProtectableElements

Unprotected ElementsAir Brushed Out

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Bryant Bratz Drawing Bratz Sculpt

6 Exhibit CB3


FILTRATION

• scenes à faire

• originality


• merger


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FILTRATION

• scenes à faire

• originality


• merger


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What is the proper role for the jury?

How should a jury be instructed?

Infringement Analysis

What pre-trial process, if any, should the court engage in to frame the jury instructions?

Bratz Pre-Trial Case Management Order

A General Verdict FormA

Special Verdict Form; Jury Makes Ultimate Infringement Decision: The court plans to determine prior to trial what aspects of the Bratz drawings are not protectable and set forth those determinations in jury instructions. The jury will then be asked to make the ultimate infringement determination.

B

Special Verdict Form; Judge Makes Ultimate Infringement Decision: The jury will be asked to resolve only discrete factual issues (such as what is the scope and content of the prior art), leaving to the court the ultimate copyright infringement issue (assuming that Mattel owns the drawings in question, do the dolls infringe – i.e., is there substantial similarity of protected expression)?

C

OtherD

ABCDE

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Pre-Trial Hearing

Evidentiary Hearing: The court plans to hear percipient and expert witnesses regarding the protectability of the Bratz drawings.

A

Non-Evidentiary Hearing: The court plans to hear argument and will not make any evidentiary findings regarding the protectability of the Bratz drawings.

B

ABCDE

According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. * * *

Injunctive Relief v.

eBay v. MercExchange, 547 U.S. 388 (2006)

This approach is consistent with our treatment of injunctions under the Copyright Act. Like a patent owner, a copyright holder possesses “the right to exclude others from using his property.” Fox Film Corp. v. Doyal, 286 U.S. 123, 127 (1932); see also id., at 127-128 (“A copyright, like a patent, is at once the equivalent given by the public for benefits bestowed by the genius and meditations and skill of individuals, and the incentive to further efforts for the same important objects” (internal quotation marks omitted)). Like the Patent Act, the Copyright Act provides that courts “may” grant injunctive relief “on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502(a). And as in our decision today, this Court has consistently rejected invitations to replace traditional equitable considerations with a rule that an injunction automatically follows a determination that a copyright has been infringed. See, e.g., New York Times Co. v. Tasini, 533 U.S. 483, 505 (2001) (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, n. 10 (1994)); Dun v. Lumbermen's Credit Assn., 209 U.S. 20, 23-24 (1908).

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A constructive trust is an equitable remedy that compels the transfer of wrongfully held property to its rightful owner. Communist Party of U.S. v. 522 Valencia, Inc., 41 Cal.Rptr.2d 618, 623 (Cal.Ct.App.1995); see also Cal. Civ.Code § 2223 (“One who wrongfully detains a thing is an involuntary trustee thereof, for the benefit of the owner.”). A plaintiff seeking imposition of a constructive trust must show: (1) the existence of a res (property or some interest in property); (2) the right to that res; and (3) the wrongful acquisition or detention of the res by another party who is not entitled to it.

Mattel, Inc. v. MGA Entertainment, Inc.616 F.3d 904 (9th Cir. 2010)

A.

A constructive trust would be appropriate only if Bryant assigned his ideas for “Bratz” and “Jade” to Mattel in the first place. Whether he did turns on the interpretation of Bryant’s 1999 employment agreement, which provides: “I agree to communicate to the Company as promptly and fully as practicable all inventions (as defined below) conceived or reduced to practice by me (alone or jointly by others) at any time during my employment by the Company. I hereby assign to the Company . . . all my right, title and interest in such inventions, and all my right, title and interest in any patents, copyrights, patent applications or copyright applications based thereon.” (Emphasis added.) The contract specifies that “the term ‘inventions’ includes, but is not limited to, all discoveries, improvements, processes, developments, designs, know-how, data computer programs and formulae, whether patentable or unpatentable.” The district court held that the agreement assigned Bryant’s ideas to Mattel, even though ideas weren’t included on that list or mentioned anywhere else in the contract.

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B.The very broad constructive trust the district court

imposed must be vacated regardless of whether Bryant’s employment agreement assigned his ideas to Mattel. Even assuming that it did, and that MGA therefore misappropriated the names “Bratz” and “Jade,” the value of the trademarks the company eventually acquired for the entire Bratz line was significantly greater because of MGA's own development efforts, marketing and investment. The district court nonetheless transferred MGA's entire Bratz trademark portfolio to Mattel on the ground that the “enhancement of value [of the property held in trust] is given to the beneficiary of the constructive trust.” As a result, Mattel acquired the fruit of MGA’s hard work, and not just the appreciation in value of the ideas Mattel claims it owns.

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Injunctive Relief

CompensatoryDamages

split the baby in two

“It is not equitable to transfer this billion dollar brand-the value of which is overwhelmingly the result of MGA’s legitimate efforts-because it may have started with two misappropriated names. The district court’s imposition of a constructive trust forcing MGA to hand over its sweat equity was an abuse of discretion and must be vacated.”

“America thrives on competition; Barbie, the all-American girl, will too.”

Mattel, Inc. v. MGA Entertainment, Inc.616 F.3d 904 (9th Cir. 2010)

Judge Alex Kozinski

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PROTECTABLE/UNPROTECTABLE ELEMENTS: DOLL DRAWINGS

Protectable Elements Unprotectable Elements

The precise shape, size, and placement of the dolls’ anatomical features

The resemblance or similarity to human form (the presence of hair, head, eyes, a nose, mouth, lips, ears, a neck, legs, arms, and a torso),

The precise combination of features, like the combination of a particular hair style, face paint, make up, and outfit, or precise body proportions.

Exaggerated features, including but not limited to an oversized head, oversized almond-shaped eyes, large lips, oversized feet, slim arms, and a diminished nose

Hair style and color Idealized features, such as luscious lips, a slim waist, a small nose, and long limbs

Make-up style and color The idea of a young, fashion forward female with an attitude, and the expression traditionally associated with that idea, including but not limited to heavy make up (eye shadow, blush, and eye liner), an “urban” look, defiant poses, defiant gazes, angular eyebrows, trendy clothing, shoes and accessories

Precise fashions, clothing and accessories Features shared by a particular race or ethnicity (e.g., skin tone), postures that mimic the human form, and postures that are standard for the effective display of fashionable clothing.

PROTECTABLE AND UNPROTECTABLE ELEMENTS: SCULPTS AND SCULPT SKETCHES

Protectable Elements Unprotectable Elements

The precise shape, size, and placement of the dolls’ anatomical features

The resemblance or similarity to human form, anatomy, and physiology

Minute sculptural variations, including the precise angles at which the dolls’ anatomical features meet.

Exaggerated features, including but not limited to an oversized head, oversized eyes, large lips, oversized feet, slim arms, a diminished nose, and a long torsoIdealized features, such as luscious lips, high cheekbones, almond shaped eyes, a slim waist, a small nose, and long limbsPostures and poses that mimic the human form or are standard for the effective display of fashionable clothing, like arms that protrude outwards so that doll clothes and accessories can be easily removedFeatures necessary to make a fashion doll capable of mass production

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SUBJECTIVE “INTRINSIC” TEST

As to those works that have survived the objective or “extrinsic” test, you must now compare the works to the copyrighted works from the perspective of an ordinary reasonable observer. Whereas the objective test uses analytic dissection to compare specific elements of the works, this test considers the works as a whole, with a view to their total concept and feel.

The standard you must apply in comparing the works as a whole depends upon the copyrighted work at issue.

First, when comparing the final production sculpt (TX 17732 and/or TX 17733) to the original sculpt or sculpt drawings, you must determine whether the production sculpts (TX 17732 and/or TX 17733) is virtually identical overall to the original sculpt or sculpt drawings.

Second, when comparing any of the four first generation Bratz dolls (TX 12286, TX 17561, TX 17558, TX 17551), and two subsequent generation Bratz dolls (TX 17546, TX 17529) to the Bratz drawings and sketches, you must determine whether the Bratz dolls are substantially similar overall to the original drawings and sketches.

If Mattel fails meet the requirements of the subjective or “intrinsic” test as to any of the allegedly infringing works, you must reach a verdict of non-infringement that work. However, if Mattel meets the requirements of the subjective or “intrinsic” test as to a particular work, and in addition meets the objective or “extrinsic” test as to that work, then you must enter a verdict of infringement as to that work.

Did Prior Use Achieve Secondary Meaning?

Is trademark tacking an issue of law (judge) or fact (jury)?

v.Trademark Tacking

“[W]e have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.”

Hana Financial v. Hana Bank, 135 S.Ct. 907 (2015)

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v.Trademark Tacking

Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury. Indeed, we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer. See, e.g., United States v. Gaudin, 515 U.S. 506, 512 (1995) (recognizing that “ ‘delicate assessments of the inferences a “reasonable [decisionmaker]” would draw ... [are] peculiarly one[s] for the trier of fact’ ” (quoting TSC Industries, Inc. v. Northway, Inc., 426 U.S. 438, 450 (1976); first alteration in original)); id., at 450, n. 12 (observing that the jury has a “unique competence in applying the ‘reasonable man’ standard”); Hamling v. United States, 418 U.S. 87, 104–105 (1974) (emphasizing “the ability of the juror to ascertain the sense of the ‘average person’ ” by drawing upon “his own knowledge of the views of the average person in the community or vicinage from which he comes” and his “knowledge of the propensities of a ‘reasonable’ person”); Railroad Co. v. Stout, 17 Wall. 657, 664 745 (1874) (“It is assumed that twelve men know more of the common affairs of life than does one man, [and] that they can draw wiser and safer conclusions from admitted facts thus occurring than can a single judge”).

Hana Financial v. Hana Bank, 135 S.Ct. 907, 911 (2015)

Is trademark tacking an issue of law (judge) or fact (jury)?

Who is the relevant perspective for evaluating fair use? Is the inquiry objective or subjective?

The original artist (foreseeable uses)

The appropriation artist

The audience for the original work

The audience for the appropriation work

Who if any is the role for the jury?

Fair Use

Resolve factual disputes

Weigh the factors

At what stage is fair use ripe for resolution?

Summary Judgment Trial

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John Doe

V.

Motion to Quash

1. Improper Joinder

2. Undue Burden

3. Lack of Personal Jurisdiction

4. 1st A Right to Anonymity

On the Cheapv.

Does 1-5,011

)))

© Infringement

N.D. Cal.

If we do proceed to trial, our client will demand the maximum statutory damages . . . up to $150,000 [per work]

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2009 2010 2011 20120

50

100

150

200

Year

Nu

mb

er o

f S

uit

s F

iled

Number of Direct Infringement Suits Per Year

Number of New Alleged Doe Defendants by Year

2009 2010 2011 2012

100,00

25,000

50,000

38,088

70,096

11,919

35

Source: Matthew Sag, Copyright Trolling, An Empirical Study (2014)

Figure 3: Percentage of John Doe Law Suits by Circuit, 2001-03, 2004-06, 2007-09, 2010-12, 2013


Figure 4: Percentage of John Doe Law Suits in Selected Districts, 2010 to 2013

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Table 1: Top 20 Copyright John Doe Plaintiffs 2001–2013

By total number of defendants

LitigantCases Filed

Fewest defendants

Most defendants

Total defendants

Percentage of total

Patrick Collins, Inc 224 1 3757 11460 12.2%Third Degree Films 56 1 3577 8288 8.8%New Sensations, Inc 17 1 1768 7502 8.0%Braun 9 1 7098 7106 7.6%Digital Sin, Inc 19 1 5698 6476 6.9%Malibu Media, LLC 1367 1 81 5938 6.3%Discount Video Center, Inc 3 1 5041 5071 5.4%On The Cheap, LLC 1 5011 5011 5011 5.3%West Coast Productions 24 1 2010 4761 5.1%Diabolic Video Productions, Inc 2 2099 2099 4198 4.5%SBO Pictures 13 1 3036 3637 3.9%Zero Tolerance Entertainment 6 1 2943 3128 3.3%Openminded Solutions, Inc 17 1 2925 2979 3.2%Third World Media, LLC 7 1 1568 2977 3.2%Contra Piracy 1 2919 2919 2919 3.1%Hard Drive Productions, Inc 57 1 1000 2853 3.0%Media Products, Inc 24 1 1257 2550 2.7%Tcyk, LLC 119 1 131 2528 2.7%Combat Zone 35 1 1037 2165 2.3%Arista Records 301 1 143 2123 2.3%

Total 2302 93670 100%

By total number of defendants* Only Contra Piracy and Arista Records are not related to pornography. The 297 Arista Records suits were filed between 2004 and 2008.


Figure 5: John Doe Copyright Lawsuits 2010–2013 -- Selected Districts

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Figure 7: Average Number of Doe Defendants per Suit 2001 – 2013

The economics of pornographic copyright lawsuits

The Court is familiar with lawsuits like this one. These lawsuits run a common theme: plaintiff owns a copyright to a pornographic movie; plaintiff sues numerous John Does in a single action for using BitTorrent to pirate the movie; plaintiff subpoenas the ISPs to obtain the identities of these Does; if successful, plaintiff will send out demand letters to the Does; because of embarrassment, many Does will send back a nuisance-value check to the plaintiff. The cost to the plaintiff: a single filing fee, a bit of discovery, and stamps. The rewards: potentially hundredsof thousands of dollars. Rarely do these cases reach the merits.

The federal courts are not cogs in a plaintiff's copyright-enforcement business model. The Court will not idly watch what is essentially an extortion scheme, for a case that plaintiff has no intention of bringing to trial. By requiring Malibu to file separate lawsuits for each of the Doe Defendants, Malibu will have to expend additional resources to obtain a nuisance-value settlement—making this type of litigation less profitable. If Malibu desires to vindicate its copyright rights, it must do it the old-fashioned way and earn it.

Malibu Media, LLC v. John Does 1 through 102012 WL 5382304 (C.D.Cal. Jun. 27, 2012) (Otis Wright II)

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JoinderRule 20. Permissive Joinder of Parties(a) Persons Who May Join or Be Joined.

* * *

(2) Defendants. Persons—as well as a vessel, cargo, or other property subject to admiralty process in rem—may be joined in one action as defendants if:(A) any right to relief is asserted against them jointly, severally, or in

the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and

(B) any question of law or fact common to all defendants will arise in the action.

I didn’t know I wasstealing or distributing it. Ithought I was like listening to

MTV on the internet.

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1976 Act§ 106 Exclusive rights in copyrighted works Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords; * * *(3) to distribute copies or phonorecords of the

copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; * * *

Hmm –what constitutes“distribution”?

The $64 Billion Dollar Question: Why Did Congress Use “Exclusive Right . . . to Distribute”?

Is it related to/broader than/narrower than “right to vend” and “right to publish”?

Copyright owner must prove “actual distribution” to a third party in order to prevail – i.e., not merely that someone “uploaded” a file to a share folder

• the downloader must be someone other than an authorized investigator

Uploading is a form of distribution • distribution encompasses “publication”

And if that’s not enough, then circumstantial evidence suffices

And if not; then downloading by a forensic investigator proves distribution

• US adopted “making available” rightthrough ratification of treaties

• Hotaling v. Church of Jesus Christ of LDS, 118 F.3d 199 (4th Cir. 1997) (a librarydistributes when it places an unauthorizedcopy in its collection)

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Statutory Damages

Proof of Actual Distribution Required

Split of Judicial Authority

No Proof of Actual Distribution Required

Capitol Records, Inc. v. Thomas, 579 F. Supp. 2d 1210, 1218 (D. Minn. 2008)

Other Interpretations

London-Sire Records, Inc. v. Doe 1-27, 542 F. Supp. 2d 153, 169 (D. Mass. 2008)

Atlantic Recording Corp. v. Howell, 554 F. Supp. 2d 976, 981 (D. Ariz. 2008)

A&M Records, Inc. v. Napster, Inc., 239 F.3d. 1004, 1014 (9th Cir. 2001)

Universal City Studios Prods. LLP v. Bigwood, 441 F. Supp. 2d 185, 190 (D. Me. 2006)

Warner Bros. Records, Inc. v. Payne, 2006 WL 2844415, at *3 (W.D. Tex. July 17, 2006)

Atlantic Recording Corp. v. Brennan, 534 F. Supp. 2d 278, 282 (D. Conn. 2008)

Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1162 (9th Cir. 2007)

Arista Records LLC v. Greubel, 453 F. Supp. 2d 961, 968 (N.D. Tex. 2006)

Entm’t Group, Inc. v. Barker, 551 F. Supp. 2d 234 (S.D.N.Y. 2008) (distribution = publication)

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The $64 Billion Dollar Question: Why Did Congress Use “Exclusive Right . . . to Distribute”?

Is it related to/broader than/narrower than “right to vend” and “right to publish”?

Copyright owner must prove “actual distribution” to a third party in order to prevail – i.e., not merely that someone “uploaded” a file to a share folder

• the downloader must be someone other than an authorized investigator

Uploading is a form of distribution • distribution encompasses “publication”

And if that’s not enough, then circumstantial evidence suffices

And if not; then downloading by a forensic investigator proves distribution

• US adopted “making available” rightthrough ratification of treaties

• Hotaling v. Church of Jesus Christ of LDS, 118 F.3d 199 (4th Cir. 1997) (a librarydistributes when it places an unauthorizedcopy in its collection) Go Back to First Principles

• legislative history

Act of May 31, 1790

§ 6 [A]ny person or persons who shall print or publish any manuscript, without the consent and approbation of the author or proprietor thereof . . . shall be liable . . .

1790

§ 1 Any person entitled thereto . . . shall have the exclusive right:(a) To print reprint, publish, copy, and vend the copyrighted work;

1909 Act

1909

No requirement to prove “actual distribution”

No requirement to prove “actual distribution”

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Rights protected and “fair use.” – In general, the report proposes to retain the exclusive rights given to copyright owners under the present law – to make and publishcopies, to make new versions, to give public performances, and to make recordings.

1961

3. ANALYSIS OF PRESENT RIGHTS a. The right to make and publish copies

Section 1(a) of the present law provides for the exclusive right of the copyright owner to print, reprint, publish, copy, and vend the copyrighted work. These various terms are redundant. Printing and reprinting are modes of copying, and vending is a mode of publishing. As to vending, it is well settled that when publication has been authorized, the right to vend pertains only to the initial sale of a copy; the purchaser of the copy is then free to resell or otherwise dispose of it. On the other hand, when publication is not authorized, any vending of a copy is an infringement of the right to publish. In substance, as several courts have observed, the right embraced in the repetitive terms of section 1(a) is the twofold right to make and to publish copies. This right is the historic basis of copyright and pertains to all categories of copyrighted works. The copying embraced in this right is a broad concept.

2. SUMMARY OF PRESENT RIGHTS

(a) All categories of copyrighted works are protected against the making and publication of copies.

1961

43

4. RECOMMENDATIONS

(a) Subject to certain limitations to be discussed below, the statute should continue to accord to copyright owners the exclusive rights to exploit their works by (1) making and publishing copies * * *

1961

1961 1964

(b) The right to distribute copies and sound recordings. Copyright shall include the exclusive right to sell or otherwise transfer ownership of, rent, lease, or lend one or more copies or sound recordings of the work. * * *

§ 5. EXCLUSIVE RIGHTS COMPRISED IN COPYRIGHT. Subject to the provisions of sections 6 through 19, copyright under this title shall consist cumulatively of the following exclusive rights:(a) The right to copy or record. * * *

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1961 1964

Abraham L. Kaminstein, Chairman (Register of Copyrights)

Abe A. Goldman, Copyright Office

Edward A. Sargoy, American Bar Association

Abe A. Goldman, Copyright Office

The draft purports to follow the broad recommendation of the Register’s Report: that the rights recognized in section 1 of the present statute be retained in substance * * *

Subsection (b), I believe, would cover everything that’s covered in section 1(a) of the present law by reference to the terms “publish” and “vend”--broadened, I would say, to avoid any questions as to whether “publish” or “vend” is used in such a narrow sense that there might be forms of distribution not covered. I think the draft covers virtually all forms of distribution. Note the specific reference to “rent, lease, or lend * * * copies or sound recordings.”

broadened

1961 1964

45

Abraham L. Kaminstein, Chairman (Register of Copyrights).

Might I suggest that we * * * devote a few more minutes to (b) * * *

Edward A. Sargoy, American Bar Association

I am heartily in accord with the omission of the use of the words “published” or “publication.” I think that the use of the words “publication” or “published,” in hundreds of common law and statutory cases, dissertations, and otherwise, has made the terms archaic today in the light of our recent technological progress. Reference to such materials where the word derived its meaning from conditions existing in the 18th, 19th, and early part of the 20th century, will only lead to confusion. I think it is an excellent idea to use the word “distribute” and, just as the draft here has done, have “distribute” expressly include the right “to sell,” (which is strictly one of the rights of publication), “or otherwise transfer ownership of, rent, lease, or lend one or more copies or sound recordings of the work.”

1961 1964

1961 19641956 1965

A. BASIC APPROACH OF THE BILL

[O]f the many problems dealt with in the bill, those covered by the exclusive rights sections are most affected by advancing technology in all fields of communications, including a number of future developments that can only be speculated about.

Obviously no one can foresee accurately and in detail the evolving patterns in the ways author's works will reach the public 10, 20, or 50 years from now. Lacking that kind of foresight, the bill should, we believe, adopt a general approach aimed at providing compensation to the author for future as well as present uses of his work that materially affect the value of his copyright.

46

A real danger to be guarded against is that of confining the scope of an author's rights on the basis of the present technology so that, as the years go by, his copyright loses much of its value because of unforeseen technical advances.

For these reasons, we believe that the author’s rights should be stated in the statute in broad terms, and that the specific limitations on them should not go any further than is shown to be necessary in the public interest.

It has already become clear, however, that the unrestrained use of photocopying, recording, and other devices for the reproduction of authors' works, going far beyond the recognized limits of “fair use,” may severely curtail the copyright owner's market for copies of his work. Likewise, it is becoming increasingly apparent that the transmission of works by nonprofit broadcasting, linked computers, and other new media of communication, may soon be among the most important means of disseminating them, and will be capable of reaching vast audiences. Even when these new media are not operated for profit, they may be expected to displace the demand for authors’ works by other users from whom copyright owners derive compensation. Reasonable adjustments between the legitimate interests of copyright owners and those of certain nonprofit users are no doubt necessary, but we believe the day is past when any particular use of works should be exempted for the sole reason that it is “not for profit.”

1961 19641956 1965

Albums Salesper capita/annum

..

Note: Singles are converted to album equivalents at 14:1

Source: Stan Liebowitz (based on RIAA data)

A real danger to be guarded against is that of confining the scope of an author's rights on the basis of the present technology so that, as the years go by, his copyright loses much of its value because of unforeseen technical advances.

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e. Public Distribution

Clause (3) of section 106(a) would give the copyright owner the exclusive right "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” The language of this clause is virtually identical with that in the definition of "publication" in section 101, but for the sake of clarity we have restated the concept here.

1961 19641956 1965

1976

1976 Act§ 101 Definitions

“Publication” is 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.

1961 19641956

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1976

1976 Act

1965

Battle over Cable TV and Juke Boxes

No changes to §106

Statutory definition of “publication” expanded to include “offer to distribute copies for purposes of further distribution.”

1961 19641956

1976 Copyright Act§ 106 Exclusive rights in copyrighted works Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:(1) to reproduce the copyrighted work in copies or phonorecords; * * *(3) to distribute copies or phonorecords of the copyrighted

work to the public by sale or other transfer of ownership, or by rental, lease, or lending; * * *

ABCDE

106(3) encompasses placing © work in share folder Definition of “publication” includes “offer to distribute”Downloading by forensic investigator establishes liabilityCircumstantial evidence of downloading sufficientNo liability unless proof that file was downloaded

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1976 Copyright Act§ 106 Exclusive rights in copyrighted works Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:(1) to reproduce the copyrighted work in copies or phonorecords; * * *(3) to distribute copies or phonorecords of the copyrighted

work to the public by sale or other transfer of ownership, or by rental, lease, or lending; * * *

ABCDE

Legislative History Is DeterminativeLegislative History Is Pertinent, Permissible, and UsefulLegislative History Is IrrelevantLegislative History May Not be Considered

Diversey v. Schmidly, 738 F.3d 1196, 1202 n.7(10th Cir. 2013)

The appellees argue merely listing the workin the libraries’ catalog information systemdoes not violate Diversey’s distribution right. They say Diversey must (but has failed to)allege the libraries actually distributed an

unauthorized copy to a member of the public. They cite Atlantic Recording Corp. v. Howell, 554 F.Supp.2d 976 (D.Ariz.2008) to suggest “‘§ 106(3) is not violated unless the defendant has actually distributed an unauthorized copy of the work to a member of the public.’”

DiverseyDissertation

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Howell does reflect some dissensus, particularly among district courts, about the applicability of Hotaling’s holding to cases of Internet file-sharing. We need not delve into the file-sharing issue today. Hotaling, like this case, involves a public library making “the work available to the borrowing or browsing public.” Hotaling, 118 F.3d at 203. A patron could “visit the library and use the work.” See id. This is the essence of a violation of the copyright owner’s exclusive right to distribute his work via lending. See 17 U.S.C. §106(3); Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 552 (1985) (noting § 106(3) gives the copyright owner “the right to control the first public distribution ... of his work” (quotation omitted)); Peter S. Menell, In Search of Copyright’s Lost Ark: Interpreting the Right to Distribute in the Internet Age, 59 J. Copyright Soc’y U.S.A. 1, 52–66 (2011) (analyzing the legislative history regarding the distribution right and concluding the requirement of actual distribution of an unauthorized copy is unwarranted).

DiverseyDissertation

Diversey v. Schmidly, 738 F.3d 1196, 1202 n.7(10th Cir. 2013)

JoinderRule 20. Permissive Joinder of Parties(a) Persons Who May Join or Be Joined.

* * *

(2) Defendants. Persons—as well as a vessel, cargo, or other property subject to admiralty process in rem—may be joined in one action as defendants if:(A) any right to relief is asserted against them jointly, severally, or in

the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and

(B) any question of law or fact common to all defendants will arise in the action.

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No Laches Defense

Petrella v. MGM

1963

Petrellav.

MGM

)))

© infringement

Stewart v. Abend(1990)

Screenplayby

Frank Petrella

Raging Bull

1976 1981

Assignment© and

renewal rights Raging Bull

1980 1990

Renewal

Raging Bull

Paula Petrella

1998 2009

1998To: MGMExploitation of Raging Bull (e.g., video) infringes my ©.

Paula Petrella

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“in face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief.”

U.S. Copyright Act17 U.S.C. § 507

(b) Civil Actions.— No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.

Limitations on Actions

Petrella v. Metro-Goldwyn-Mayer, 134 S.Ct. 1962 (2014)

“It is hardly incumbent on copyright owners . . . to challenge each and every actionable infringement. And there is nothing untoward about waiting to see whether an infringer’s exploitation undercuts the value of the copyrighted work, has no effect on the original work, or even complements it.”

“in extraordinary circumstances, lachesmay, at the very outset of the litigation, curtail the relief equitably awarded. For example”

• where owners of a copyrighted architectural design, although aware of an allegedly infringing housing project, delayed suit until the project was substantially constructed and partially occupied, an order mandating destruction of the project would not be tolerable. See Chirco v. Crosswinds Communities, Inc., 474 F.3d 227, 236 (4th Cir. 2007).

• Nor, in the face of an unexplained delay in commencing suit,would it be equitable to order “total destruction” of a book already printed, packed, and shipped. See New Era Publications Int’l v. Henry Holt & Co., 873 F.2d 576, 584–585 (2nd Cir. 1989).

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Deluge of stale claims?

Origina ity?

1985

Jacobus Rentmeester

License Agreement

I hereby license the work to Nike for use in North American markets for two years.

Fee: $15,000.

© 1984 Jacobus

Jacob Rentmeeester

vs.

))))))

D Oregon

© Infringement

2015

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