Loyola Professor Explores How and Who Makes Copyright Policy in Washington

Professor Justin Hughes, William H. Hannon Distinguished Professor of Law, recently published a pair of essays clarifying the level of copyright law expertise in the U.S. Patent & Trademark Office. Rebutting claims made by an entertainment attorney in an op-ed that appeared in The Hill, Hughes notes that “that USPTO currently has a bench of copyright expertise as least as deep as the team at the Copyright Office.” Read his full essays:

• The Hill 
• The Media Institute (expanded)

The Shadow Tells a Story: Teller Gets Summary Judgment for Copyright Infringement of His “Shadows” Illusion

By Professor Jay Dougherty

As I wrote about in a blog in 2012, magician, Teller, half of the famous “Penn & Teller” duo, brought an interesting and perhaps unprecedented copyright infringement claim against a Dutch magician, Gerard Dogge, who made of video of a “strikingly similar” illusion, posted it on Youtube and offered to sell DVD’s and reveal the “secret” of the illusion (which, in this case he appears to claim is different from Teller’s method). After several procedural rulings since then, in a decision on March 20,2014, Judge Mahan in the U.S. District Court for the  District of Nevada gave summary judgment to Teller on the copyright infringement claim, finding that Dogge had essentially admitted access, and there was not even a genuine issue of material fact on “substantial similarity” under both the “extrinsic” (objective) and “intrinsic” (more subjective, “total concept and feel”) tests used in the Ninth Circuit.  Teller v. Dogge (2:12-CV-591 JCM)(D.Nev., 2014).

Magicians incur many obstacles in trying to protect their illusions by copyright law. The “method” or “system” embodying the illusion won’t be protected (although some have qualified for patent protection), nor will the abstract “ideas” and commonplace “scenes a faire.” As Judge Mahan pointed out here, “While Dogge is correct that magic tricks are not copyrightable, this does not mean that ‘Shadows’ is not subject to copyright protection... The mere fact that a dramatic work or pantomime includes a magic trick, or even that a particular illusion is its central feature does not render it devoid of copyright protection.”

Attraverso: Supreme Court to hear major gray-market case

By Professor Jeffery Atik

On Monday, Oct. 29, the U.S. Supreme Court will hear arguments in *Kirtsaeng v. John Wiley & Sons, Inc.*, a case that promises to resolve (finally) whether the first-sale doctrine applies to copyrighted works produced and sold abroad and then imported into the United States. It is no small surprise that this is an open question, as the current U.S. copyright act has been in place since 1976. And the copyright first-sale doctrine is older than that.

Compare the situation in Europe, where the European Court of Justice has long ago established that exhaustion (corresponding to the first-sale doctrine) occurs with full effect throughout the European territory, notwithstanding the national character of most European IP rights. A copyright holder which sells a book in France may not use its German copyright to block the importation or resale of that book in Germany.

But not so with respect to IP protected goods first sold outside of Europe: these goods may be blocked by the IP right holder when introduced to the European market. Thus, it is said that the Europeans practice regional exhaustion (first-sales within European cut off IP rights), but not international exhaustion (IP right holder retain rights with respect to goods first sold outside Europe).

Stealing Shadows?

By Professor Jay Dougherty

A complaint filed by the magician Teller of the team Penn & Teller against a Dutch magician has been receiving much press and attention lately. Read more about the case here. It presents some fascinating issues and if they are not resolved on other grounds it could lead to the first decision regarding a category of works added expressly to the 1976 Copyright Act, namely those of "pantomime." I've written the leading article on the subject, "Now You Own It, Now You Don't: Copyright and Related Rights in Magic Productions and Performances," which was published in a book called "Law and Magic: A Collection of Essays." (The book is available on Amazon.) Professor Jim Grimmelman has posted a nice blog about it, hitting some of the issues.

Here's one link to Teller's copyright registration for his illusion, "Shadows." The claim is a "pantomime drama." The registration might have presumptive validity. As discussed more fully in my article, there's no statutory definition of pantomime, but the Compendium II of Copyright Office practices defines "pantomime" in part as: "the art of imitating or acting out situations, characters, or some other events with gestures and body movement." From what I've read of Teller's piece, and the illustrated "script" for it that was attached to his registration, it sounds like that could apply here. If so, copyright law gives him an exclusive right (in the U.S.) to "publicly perform" it, "publicly display" it, or "prepare derivative works" adapted from it. (It's not clear how one would "display" a pantomime, maybe in a still photo? There's a case finding which proves that still photos could infringe a choreographic work.) Of course, a court won't give copyright to the mere "idea" of the illusion, and since the YouTube video of the defendant's act has been removed I haven't compared the two. Also, the "method" or "system" of the illusion--how it is actually effectuated--might not be protected, although this can be a complex issue. There is also the "useful article" problem, but it would be interesting to see how a work that "portrays the appearance" of cutting a rose by cutting its shadow would be assessed. There would probably be some "thin" protection, but if the defendant's work is too similar in its expression, coupled with the presumption of validity, this suggests that Teller has more than a ghost of a chance!

Occupy the public domain

By Professor Jennifer Rothman

This op-ed, which discussed the implications of the Supreme Court's decision in Golan v. Holder on the public domain, originally appeared in the Feb. 6, 2012 edition of the San Francisco Chronicle.

If you celebrated Martin Luther King Jr. Day by watching the "I Have a Dream" speech on YouTube, you broke the law. Or at least that's what the Martin Luther King Jr. estate contends. It claims that if you want to legally watch a video of the Rev. King's copyrighted speech - one of the most important speeches in our country's history - you need to pay its foundation $10.

Instead of providing for sharing such important moments, our government has been complicit in endorsing a vision of copyright law in which nothing is free for use by the public. Recently, the same King foundation demanded that the federal government pay $800,000 to use King's words and image on the memorial statue of him in Washington, D.C. Rather than asserting the importance of this monument for our culture and its status as a public, nonprofit use of his name and words, the government caved.

Read the complete op-ed in the San Francisco Chronicle.

Supreme Court limits First Amendment scrutiny of copyright laws in Golan v. Holder opinion

By Professor Jay Dougherty

On Jan. 18, the Supreme Court issued its highly anticipated decision in a case challenging the constitutionality of 17 U.S.C. §104A, which restored copyright to millions of foreign works and granted federal copyright to pre-1972 foreign sound recordings. As the Court did previously in Eldred v. Ashcroft, upholding the constitutionality of the 1998 Copyright Term Extension Act that extended all existing copyrights for 20 years, it exhibited great deference to legislative decisions as to the extent of copyright, notwithstanding the constitutional language that appears to limit legislative power to grant copyrights in order to "promote the progress" of knowledge and only for limited times. The plaintiffs, orchestra leaders and others who had relied on the public domain status of various foreign works argued that, unlike the CTEA, the restoration statute removed works from the public domain. The Court rejected their arguments. According to the majority, Congress can accord copyright protection in circumstances that do not elicit the production of new works of authorship--it is the system of protection generally that must promote progress. The government argued here that it benefits U.S. authors for the U.S. to more rigorously comply with its copyright treaty obligations, even if the new law did not elicit creation of new works (or accord any protection to U.S. works). Because the restored foreign copyrights would not last any longer than they would have, had they not entered the public domain in the first place, the statue did not violate the constitutional limited times restriction any more than the CTEA did.

Perhaps more significantly, the Court clarified the class of copyright legislation that would alter the traditional contours of copyright and thus be subject to First Amendment scrutiny. Clearly, copyright laws "abridge speech," in a sense. In Eldred, the Court had rejected a First Amendment challenge except in cases where legislation alters the traditional contours of copyright. This was because copyright law contains its own internal protections of free speech interests, namely the exclusion of copyright protection for ideas and the fair use defense that permits the use of another's copyrighted expression in some situations, e.g. for purposes of commentary or parody. A panel of the 10th Circuit Court of Appeals earlier in the development of this case had interpreted the USSC's language such that a law that removed works from the public domain would also alter the traditional contours of copyright. After all, the traditional contour of copyright protection is that works receive protection until they enter the public domain, but can thereafter be freely used by anyone. In the new decision, the Court clarified that only legislation that impacted the denial of copyright for ideas or limited fair use would alter traditional contours and require stricter First Amendment scrutiny.

[Read a longer piece of commentary on the history of the case and the oral argument before the Supreme Court last fall.]

Justices Breyer and Alito dissented. Essentially, they argued that copyright laws must be justified by a utilitarian rationale as they have historically. Also that they elicit creation of new works for the ultimate benefit of society. Removing existing works from the public domain does not elicit any new creation, and also impacts free speech interests of the public. Hence, they argued, such a law should be scrutinized to see that it served some important copyright-related purpose. Even if solidifying the U.S. position in the international copyright system is important, the treaties actually permit less restrictive alternatives than the approach chosen by the legislature. Encouraging dissemination of works (rather than creation of new works), which the majority argued would promote knowledge, could be argued to authorize Congress to remove the Bible from the public domain, according to the dissenters. They concluded that the restoration statute exceeded Congress' power under the Constitution.

U.S.S.C Hears Oral Argument in Golan v. Holder

By Professor Jay Dougherty

EXECUTIVE SUMMARY:

Recent extensions of copyright have generated much controversy. Some of these controversies have led to important judicial decisions (on the Supreme Court level) concerning Congress' power to legislate in the copyright arena and the interplay between copyright laws and freedom of speech and expression. Most challenges have failed, with the courts signaling a judicial deference to Congress. In the most recent battle, Golan v. Holder, plaintiffs who have relied on the public domain status of certain foreign works challenged a law that restored copyright to those works. Assertions that the restoration exceeded Congressional power were fairly routinely rejected at the lower court levels after the U.S.S.C.'s decision in Eldred v. Ashcroft, 537 U.S. 186 (2003) (affirming the 1998 Term Extension Act), but a claim that restoration violated the First Amendment seemed to have some traction. The Supreme Court accepted cert in Golan, and recently heard oral argument. In Eldred, the Court had said that a law that altered the traditional contours of copyright law would be subject to First Amendment scrutiny, and one 10th Circuit panel in Golan had held that the restoration statute would be subject to such scrutiny. The district court on remand held that the restoration statute failed First Amendment scrutiny, but that decision was reversed by another 10th Circuit panel. One might have expected the oral argument to focus on related unsettled issues, such as the level of scrutiny and requirements for its satisfaction, which would have added clarity and certainty in future disputes regarding the relationship between copyright laws and the First Amendment. Unfortunately, in this author's view, the plaintiffs spent most of the oral argument beating the dead horse of Congress' copyright legislative power and missed an opportunity to persuade the Court on appropriate First Amendment scrutiny. That might have led the Court to find that the restoration statute did not satisfy scrutiny, for example, and that there should have been more protection for reliance parties who had developed businesses utilizing public domain foreign works. It is of course still possible that the Court in its decision will address those issues. The decision, which will determine the U.S. copyright status of thousands of foreign works, will presumably be issued sometime in 2012. Below is a more detailed review of the case and the U.S.S.C. oral argument.

On October 5, 2011, the U.S. Supreme Court heard oral arguments in the most recent case challenging the constitutionality of a provision of the Copyright Act added in 1994 by the Uruguay Rounds Agreement Act (URAA) that restored copyright to certain foreign works that had lost their U.S. copyright through a failure to comply with formalities. That section, §104A, also granted federal copyright to certain foreign sound recordings first fixed before Feb. 15, 1972, and provided for copyright in certain foreign works whose origin is a foreign country whose works are not subject to U.S. copyright, when the U.S. enters into copyright relations with that country.

Ninth Circuit Oral Arguments Today in Keller v. Electronic Arts: A Challenge to EA's Popular College Football Video Game

By Professor Jennifer Rothman

Today the Ninth Circuit will consider a First Amendment defense to Electronic Arts' (EA) use of former and current college players' identities in a popular video game. The case once again raises the issue of a conflict between the First Amendment and the right of publicity - a state law that protects the name, likeness and other indicia of identity of a person from being used without consent. Because this right limits what others can say, or put in a comic book, or a commercial or even a news broadcast, it raises a host of First Amendment issues. In particular, the district court held that EA had no First Amendment defense because the use of the players' identities was not transformative. The district court adopted a very narrow reading of transformativeness - one that appears to limit a First Amendment defense to circumstances in which a player's appearance and information is significantly altered, such as turning a player into a "half-human, half-worm," as one comic book did with the identities of two well-known musicians.

It is no surprise that such a narrow reading of transformativeness in the right of publicity context has caused uproar among major newspapers, television networks and movie studios. If courts do not consider the broader context of the use in a transformativeness analysis, then realistic portrayals and references to athletes, celebrities and anyone else may not receive First Amendment protection.

As a First Amendment matter, the transformativeness test seems ill-equipped to handle disputes between free speech and the right of publicity; the narrow gloss that the district court put on transformativeness sets a dangerous precedent that the Ninth Circuit will hopefully strike down. But whatever test the circuit ultimately adopts, it's not clear that EA has a great First Amendment defense. In contrast to the fantasy sports leagues, which are tied to the performance of actual players during a particular season, the EA video games do not need to be linked to particular players' identities. They may be more successful commercially if they are, but the functionality of the games does not depend on their realism.

This case on remand, however, may not ultimately turn on First Amendment protections. Although many of the briefs in the case focus on alternative First Amendment tests that could be used - other than transformativeness - to evaluate free speech limits on publicity rights, there are other significant conflicts in the case that have not yet been litigated. Related cases reveal that the college athletes signed their publicity rights over to the NCAA. Moreover, the NCAA owns the copyrights in the televised games. The NCAA therefore arguably had permission to license the use of the images and names of the college athletes. The legitimacy of the implicit and explicit assignments of publicity rights to the NCAA by college athletes will likely be the next chapter in this on-going and hotly contested dispute.