recent developments in copyright la inc. v. aereo, inc. and wnet, thirteen, fox television stations,...
TRANSCRIPT
© 2011
Recent Developments in
Copyright Law
Kevin Meek
Partner, Intellectual Property
Baker Botts L.L.P.
Austin, Texas
Topics Today
Supreme Court
Streaming TV
Fair Use
Porn Troll
Sampling
This just in…
Supreme Court
Supreme Court on First Sale
Supreme Court took Kirtsaeng v. John Wiley &
Sons, Inc. to resolve a circuit split
Foreign-made products can be resold in U.S. . . .
never (2nd Circuit) (national exhaustion)
sometimes (9th Circuit)
owner approves prior sale in U.S.
always (3rd Circuit) (int'l exhaustion)
Second Sale
Manufacture
First Sale
Kirtsaeng v. Wiley, Majority Opinion (Breyer)
Result: decided 6-3 to reverse 2nd Circuit,
International Exhaustion now the law for
copyright
Key issue: determining what "lawfully made under
this title" means
Reasons for opinion
Similarity with Quality King
Literal reading of language
Statutory context
Parade of Horribles
Response to Arguments
Part of Quality King was dicta
Dividing markets wasn't protected
Kirtsaeng v. Wiley, Dissent (Ginsburg)
Agrees Quality King statement was dicta, but
would follow that statement
Plain meaning of "under"
Includes 3 sections in her analysis
106 (right of distribution); 109 (first sale doctrine); 602
(unauthorized importation)
Section 602
Under majority opinion,
loses any weight
history favors her view
US international stance
Parade of horribles is fake
Kirtsaeng v. Wiley, Concurring Opinion
Justice Kagan
It wasn't me! Don't misinterpret this statute because
Quality King was bad...
Justice Jockeying
Old School (e.g. Ginsburg)
"Although Justice Kagan's concurrence suggests that
Quality King erred in [its holding,] that recent unanimous
holding must be taken as a given."
New School (e.g. Kagan)
"[The dissent] would swap one
(possible) mistake for a
much worse one."
Kirtsaeng to extend to Patents?
Supreme Court denied cert in Ninestar
Technologies
Still may wade in at some point
Many expect Federal Circuit to revisit the issue
Specialists on both sides of guessing where Fed.
Cir. may go
Take direction from Supreme Court?
Yeah, right
Fed. Cir. often takes pro-patent stance
Raging Circuit Split -
Laches v. Statute of Limitations
Supreme Court will hear Petrella v. MGM
17 U.S.C. § 507(b) prescribes a three-year
statute of limitations for copyright claims
Circuit split over whether the defense of laches
can bar a copyright claim filed within copyright
law's three-year statute of limitations.
Three circuits: No laches defense available
Two circuits: Laches restricted to exceptional
circumstances only
One circuit: Presumption in favor of applying laches to
continuing copyright infringements
Streaming TV
Aereo Streaming TV Service
Encoder
ABC, Inc. v. Aereo, Inc. and WNET, Thirteen, Fox
Television Stations, Inc. v. Aero, Inc.
3/1/2012 - Suits filed against
Aereo in NY Federal Court
7/11/2012 - District court
denied preliminary injunction
based decision on Cablevision
case (stated that without that
case in place, would have
granted injunction)
11/30/2012 - Oral argument at
2nd Circuit seeking to
overturn decision denying
preliminary injunction
Majority:
Affirms district court
Considers the first prong of preliminary injunction
"likelihood of success"
Is Aereo's service a public performance?
No. Similar to Cablevision for two key reasons
Unique copies
No one else could see copy
Stare Decisis
Dissent
Different from Cablevision
Aereo has no license
Viewers could already see content in an authorized way
ABC, Inc. v. Aereo, Inc. (2nd Cir.)
ABC, Inc. v. Aereo, Inc. - The Aftermath
ABC sought En Banc review - denied
5/6/2013 - Aereo files DJ action against CBS to
prevent copyright suits in other jurisdictions
10/10/2013 - Massachusetts federal judge denied a
preliminary injunction against Aereo
10/11/2013 - ABC filed cert petition at Supreme
Court
Present - Fox now arguing violation of fair use
provision
Commercial competition between Aereo and Fox
No volitional conduct by Aereo subscribers when using
"Watch Now" feature.
Alki David started the "technologically analogous"
service to Aereo in California, Aereokiller (now
known as FilmOn)
The four major US TV networks sued FilmOn in
federal court, moved for preliminary injunction
Judge Wu granted the preliminary injunction
9th Cir. law says infringe
2nd Cir. not binding,
but limits scope of injunction
DC District Court granted preliminary injunction
nationwide . . . except 2nd Circuit
Fox Television Stations Inc. v. Aereokiller LLC
Dish ... Ad-Skipping and Streaming
Dish - Ad-Skipping
March 2012, Dish launched new service that
included an ad-skipping feature
TV Networks filed for preliminary injunction
Judge Gee denied motion
Found that networks unlikely to succeed
on merits for most claims
Quality control copies could infringe but
de minimis
Affirmed by 9th Circuit
9th Circuit reviewed fair use factors and
found ad-skipping to be fair use
Fox has requested en banc review
Dish - Streaming Video
The Hopper also allows a user to stream their
shows to mobile devices
Has a feature to make copies of the recorded
shows on mobile devices to take and watch where
internet is not available
Fox pushed for preliminary injunction (2/22/2013)
Dish said Fox knew of concept when agreement
was made
District court refused to grant injunction
Fair Use
Fair Use as a Defense
Statutory Factors - 17 U.S.C. § 107
1. Purpose and Character of Use
Second most important
2. Nature of the Copyrighted Work
3. Substantiality of the Portion Used
4. Effect on the Potential Market
Most important
SOFA Entertainment Inc. v. Dodger Productions, Inc.
Broadway musical Jersey Boys used clip from Ed
Sullivan Show introducing the Four Seasons
District Court found fair use at summary judgment
and granted attorneys' fees
9th Circuit Affirmed
Work is transformative (Cites to Elvis case)
Nature of work is factual (who is performing)
Amount taken was minimal; cannot copyright Ed
Sullivan's charisma
Not a substitute in market for original clip
SOFA should have known better
Why? It was a two-time loser!
Cariou v. Prince
Patrick Cariou published a book, Yes Rasta, of
classical portraits he took during his six years
spent living among Rastafarians in Jamaica
Photos were "extreme classical photography [and]
portraiture"
Book was 9.5" x 12"
Richard Prince took some of the photos from
Cariou's book and incorporated them into a
variety of pieces of artwork in an exhibit called
Canal Zone
Many were hodge-podges of various works, including
several provocative works
On a very large scale (10-100x larger than book page)
Cariou v. Prince
Cariou v. Prince - District Court
District court found that Prince's work infringed
Cariou's copyright in the photographs
District court standard: use must "comment on,
relate to the historical context of, or critically refer
back to the original works"
District court applied wrong fair use standard
"[A] new work must generally alter the original
with 'new expression, meaning or message.'"
Own observations show transformative use of 25
of 30 works as matter of law
Don't care what Prince said, what
a "reasonable observer" would think
Points to composition, presentation,
scale, color palette, and media
Remanded last 5 to district court
Cariou has appealed to Supreme Court
Cariou v. Prince - 2nd Cir. Majority Opinion
Judge Wallace (sitting by designation from 9th
Circuit) dissented
Agreed with nearly all legal arguments of majority
Should remand all, not decide 25 and send 5 back
Should listen to evidence of what
Prince said
South Park was procedurally
weird, and parody, should not
extend the case this far
"[This judgment call] would be
extremely uncomfortable for me to
do ... in my appellate capacity, let
alone my limited art experience."
Cariou v. Prince - Dissent
Copyright Infringement by Patent Firms
Four patent firms sued by academic
publishers for providing articles to
the patent office
Claim for infringement for providing the
articles to the PTO dropped
Claimed infringement for internal firm
use
Decisions in 3 of 4 cases
Winstead - won (N.D. TX)
Schwegman - won (D. MN)
Hovey Williams - voluntarily dismissed
(D. KS)
MBHB - pending (N.D. IL)
Fair Misuse?
Between the Lines v.
Lions Gate
Entertainment
Lions Gate accused of using Twilight copyrights to
squelch fair use by independent filmmakers,
parodists and other artists
Claims
Sham cease-and-desist notices
Prohibited trademark and service mark registrations
Between the Lines says their parody film was fair use of
the Twilight material
$500M lawsuit - Clayton Act claim
Google Books
2004 - Google begins scanning books in earnest
2005 - Copyright lawsuits filed against Google
2008 - Settlement reached, rejected
2010 - Settlement amended
2011 - Settlement rejected
2012 - Author class certified - appealed
2013 - 2nd Cir. decertified class
First consider whether scanning was fair use before
certifying class
2nd Cir. hinted that deciding fair use would decide the
case
HathiTrust Case
Not Google but related
Book scanning for purpose of making books
searchable deemed fair use by district court
2nd Cir. appeal pending
YouTube
YouTube v. Viacom
On remand, district court again found that YouTube
was protected by DMCA (April 2013)
Viacom has appealed
Viacom wants a new judge this time around
Judge used a "perverse" approach
Lessig v. Liberation Music Party Ltd.
Copyright misuse suit for removing Lessig's lecture
from YouTube
Pending in D. Mass.
Porn Trolling
PHE, Inc v. Does 1-105
PHE, the parent of Adam & Eve, brought suit
against 105 Doe defendants for downloading
"Buffy the Vampire Slayer XXX: A Parody" via
BitTorrent
Judge dropped 104 of the Does
No judicial economy, only overlap is copyrighted
work involved and
how work accessed
Many defendants with
varied defenses
See also Safety Point
Productions v. Does
Ingenuity13 LLC v. John Doe
Series of companies (AF Holdings, LLC, Ingenuity
13, LLC, etc.) acquire porn films and monitor
BitTorrent, sue on screenshot of downloading
Always run by the same 5 lawyers, various law
firms and business entities
Would file law suits and try and get settlement
around $4k (including pressure by posting name
on Anti-Piracy Law Group page
if no rapid settlement)
Simply copy and paste court
documents, including discovery
responses
Ingenuity13 LLC v. John Doe
Judge Otis D. Wright II was not happy
Refused to let case go away, instead
ordered to show why no sanctions
Rule 11
Lack of investigation into infringement
Lack of investigation into infringer's identity ("an old-
fashioned stakeout may be in order")
Local Rule 83-3
Failure to comply with
discovery order
Fraud on the court
Calling Alan Cooper?
Ingenuity13 LLC v. John Doe
After hearing, orders sanctions (order 5/6/2013)
Under findings of fact
"attorneys with shattered law practices"
"stole the identity of Alan Cooper" (groundskeeper)
Sanctions
No Rule 11 Sanctions, using inherent authority
Sanctions for $80k (just below cost of appeal)
Referring lawyers to bars
Referring matter to US Attorney
for RICO investigation and to IRS
Appealed to 9th Cir., fined $7k/day
sanctions not paid (5/22/2013)
Ingenuity13 LLC v. John Doe
What happens to trolls
Prenda partner claims poverty, can't pay share of
the sanctions
Prenda dissolved (July 26)
Ordered to pay more attorneys' fees
and court costs in July
Copycat - Malibu Media v. Doe
Federal judge in Wisconsin sanctioned
Malibu for using adult films that it didn't own to "harass
and intimidate" alleged downloaders into agreeing to
settlements.
Sampling
Sampling is infringement
Two district court cases in the 90's established
that sampling is infringement
Grand Upright Music v. Warner Bros.
Sampling is willful infringement
Jarvis v. A&M Records
Focused analysis on whether
the copying is substantial
enough to constitute improper
appropriation of the copyrighted
work
Sampling Defenses
Fair Use
Campbell v. Acuff-Rose
Sampling for parody can be fair use
Bridgeport Music v. UMG
No fair use, even though the use was transformative and
the scope of use was small
De Minimis
Newton v. Diamond
6-second, 3-note sample
Sampling was de minimis and not actionable.
Bridgeport Music v. Dimension Films
4- second, 3-note sample
No de minimis inquiry for sampling cases - it's
infringement!
Upcoming interesting sampling cases
VMG Salsoul v. Madonna
New argument: the claimed sample (single horn chord,
0.2-seconds) was not copyrightable - no originality
Pending in C.D. Cal.
TufAmerica v. Diamond
Another de minimis defense
1-second and a 3-second samples
Pending in S.D.N.Y.
This just in!
Quick review of some new
topics
Smart phone jailbreaking
Transformative use
Scope of the public domain
Lawyers and copyright holders
behaving badly
Cell Phone Unlocking
Unlocking cell phones used to be covered by an
exemption to the DMCA
Librarian of Congress removed the exemption
earlier this year
Washington is scrambling to fix it
Unlocking Technology Act of 2013
White House petition response
FCC private deal
Commerce Department petition to FCC
Midnight in Copyright Law
Faulkner estate sued Sony over a reference to a
Faulkner quote in Midnight in Paris
District court ruled the use transformative and a
fair use and dismissed the claim
It's not so elementary, my dear Watson
Klinger v. Conan Doyle Estate
At issue: when some works that establish a character
and world are in the public domain but others are not,
what is the extent of the copyright protection?
Author has filed a declaratory judgment action to have
most of the Sherlock Holmes canon declared public
domain.
Pending in the N.D. IL
Please sue me!
"Has anyone had any experience with McMorris
cpas White Zuckerman churning or over billing?"
Attorney claims breach of privacy, CFAA, and
copyright infringement for another atty copying
his one sentence comment on a message board.
District Judge Gee
dismissed suit
9th Circuit found against
him on all claims
Now he has filed a cert petition
at the Supreme Court
Even Kung Fu won't save this case
An artist accused Dreamworks of copying his idea
for Kung Fu Panda
Case was dropped
Artist used a Lion King coloring book as inspiration
Shredded evidence
One final note about Fair Use
This presentation is fair use.
Fair use factors - 17 U.S.C. § 107
Purpose and character of the use, including whether
such use is of a commercial nature or is for nonprofit
educational purposes
Nature of the copyrighted work
Amount and substantiality of the portion used in relation
to the copyrighted work as a whole
Effect of the use upon the potential market for or value
of the copyrighted work.
Except for this:
"Has anyone had any experience with McMorris cpas
White Zuckerman churning or overbilling?"
