Tag Archive for: Supreme Court

Five Reasons Why You Should Register Your Works With the Copyright Office

/0 Comments/in , /by

Note: Please be sure to read to the end for an important update regarding a 2019 Supreme Court decision regarding copyright registrations.

I was recently roped into a Facebook feed by a composer client and asked to opine on whether composers and songwriters (and other creative artists for that matter) should register their works with the U.S. Copyright Office. After all, it was pointed out, that under the current Copyright Act registration with the Copyright Office is not required to obtain a copyright in a work. Under Section 102(a) “[c]opyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed….” So depending upon how you write your music, as soon as you put the pencil down, hit save on your computer or print out the music from your notation program, you have a copyright. Section 408(a) states that registration is permissive rather than mandatory. And registration can be costly as the current fee to register works online is $55.00 and that can add up if you create a lot of new music (or other copyrightable works). So, you may ask, “why should I bother to register?”

After all, as some of the commenting composers pointed out, you can do what is sometimes called a “poor man’s copyright registration” by mailing a copy of your work to yourself so that the postmark would demonstrate when you created the work. And identifying your work as “(c) 2018 Jane Doe, all rights reserved” is always advisable to put people on notice, whether or not you also register with the Copyright Office.   Moreover, copyright registration is not required to register your works with a performing rights organization (PRO) such as ASCAP or BMI. While this is true and it’s essential for songwriters and composers to register their works with a PRO in order to get paid for public performances of their works, there are some very powerful incentives built into the Copyright Act as to why you should also register your works with the Copyright Office.

First, a copyright registration is the best evidence for what you wrote and when you wrote it. The Copyright Office has published a bunch of “circulars” (i.e., pamphlets) online which explain various aspects of copyright law in plain English. As explained in Circular 2 a copyright registration consists of the application, the fee and the “deposit copy,” which is a copy of the work that’s being registered. Under Section 410(c), “[i]n any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” In plain English, the registration provides evidence of what was registered, when it was registered, who created the work and who owns the work as all that information is contained in the application and then put into the registration. And the deposit copy is proof of what was registered.  Your self-mailed copy of your music doesn’t have that evidentiary weight in court and what happens if you have to open the envelope to prove your case? Unless you mail multiple copies to yourself you won’t be able to do that trick again.

Second, copyright registration is a prerequisite to filing a lawsuit. Section 411 states that you can’t file a copyright infringement action unless you’ve registered the work you want to sue over. That’s a pretty powerful incentive to register your works. As a practical matter without a registration you have a right (a copyright) without a remedy. For example, if a client comes to me claiming that somebody ripped off their song the first thing I ask is whether they registered their composition with the Copyright Office. Why? Because if I were to send a demand letter to the allegedly infringing party and they check the Copyright Office records online for a registration (and all copyright registrations since 1978 are available online) and they don’t find one for the work they know that I can’t sue them. This lowers my negotiating leverage. Without the ultimate ability to sue the likelihood of my negotiating a favorable settlement (i.e., making the infringer stop and pay a pile of cash for past infringements) is limited.

Third, certain remedies under the Copyright Act are unavailable unless you register your work prior to the infringement taking place. How do you know when you’re going to be ripped off? You don’t. This is another powerful incentive for folks to voluntarily register that’s built into the statute. As to what goodies you’re giving up if you didn’t register prior to being ripped off, Section 412 states you can’t get “statutory” damages under Section 504(c) and you can’t get the ne’er-do-well to pay your attorney’s fees under Section 505. Statutory damages are those assessed by the Court which can range between $750 and $30,000 per infringement and up to $150,000 if the infringement is deemed to be “willful” (i.e., really, really bad). Statutory damages are available because “actual damages” (losses suffered by the plaintiff and profits made by the defendant) are often difficult — and expensive — to prove. And sometimes actual damages are relatively modest so that without the prospect of statutory damages it isn’t cost-effective to pursue a claim. And copyright infringement actions are very expensive. They can run tens of thousands of dollars if the case is resolved prior to trial and hundreds of thousands of dollars — or more — if the case goes to trial and then is appealed. Having an infringer face the prospect of many thousands of dollars per infringement plus having to pay the plaintiff’s attorney’s fees is a very powerful inducement to pre-litigation settlement.  But don’t just take my word for it, Circular 1, Copyright Basics, has a section on the benefits of registration.

Fourth, registration is easy. For most registrations, particularly if your work is “unpublished” (and when you first complete writing your music, whether it’s just in notation or in recorded form, it’s unpublished), you can complete the application, including uploading digital files of your deposit copies, online. While I wouldn’t generally recommend that individuals try to do a trademark registration on their own, I frequently recommend that individuals do their own copyright registrations as the process is much simpler and involves fewer legalities and technicalities than trademark registrations.

Fifth, it’s cheap. While $55 a pop can add up quickly if you write a lot of songs (or create a lot of other works), in many instances you can register multiple works under a single application. In addition, there are circumstances where, for example, you can register both an underlying musical work and the master recording of that work in a single application.  For general rules regarding the registration of multiple works in a single application, see Circular 34. With respect to registering musical compositions, including questions about the difference between a registration of the music and the registration of the recording, as well as guidelines regarding deposit copies and when you can register multiple songs in a single application, see Circular 50. For information about registering master recordings check out Circular 56 and if you want to know when you can register both the song and the master in the same application, you’ll want to read Circular 56a. Basically, if you want to register multiple musical works in a single application the copyright claimant (owner) has to be the same for all works and the author (or at least one co-author) has to be the same for all works.

However, there is a catch regarding the cost-effective registration of works as a collection. As described in Circular 34, for purposes of statutory damages the collection is treated as a single work. So if a particular person or entity infringed upon more than one work in the collection you can only collect one assessment of statutory damages, not an assessment for each work as would be the case where each work is registered separately.  However, since it’s often the case that only one work in a collection is infringed, the benefits of a collective registration will often outweigh any potential loss of statutory damages. But if you believe that all the songs in your collection will generate a lot of income and get a lot of exposure making them potentially ripe for ripping off (if you’re signed to a major label, for example), then it may be worthwhile to register each work separately.

*****

Since I originally published this blog post on March 7, 2018, the U.S. Supreme Court issued a decision on when a copyright registration becomes effective for purposes of Section 411(a) of the Copyright Act.  On March 4, 2019, the high court issued its decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. This decision resolved a split among the circuits as to whether a copyright registration becomes effective for purposes of being able to file an infringement action in federal court when the application is submitted to the Copyright Office (as the Fifth and Ninth Circuits had ruled) or when the Copyright Office actually issues a registration (as the Tenth and Eleventh Circuits had held).

Writing for an unanimous Court, Justice Ginsberg wrote that a copyright “registration…has been made”  only at the time the Copyright Office issues a registration – and not merely when the application has been filed under Section 411(a):

Under § 411(a), “registration … has been made,” and a copyright owner may sue for infringement, when the Copyright Office registers a copyright. Section 411(a)’s first sentence provides that no civil infringement action “shall be instituted until preregistration or registration of the copyright claim has been made.” The section’s next sentence sets out an exception to this rule: When the required “deposit, application, and fee … have been delivered to the Copyright Office in proper form and registration has been refused,” the claimant “[may] institute a civil action, if notice thereof … is served on the Register.” Read together, § 411(a)’s opening sentences focus not on the claimant’s act of applying for registration, but on action by the Copyright Office—namely, its registration or refusal to register a copyright claim.If application alone sufficed to “ma[ke]” registration, § 411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous. What utility would that allowance have if a copyright claimant could sue for infringement immediately after applying for registration without awaiting the Register’s decision on her application? Proponents of the application approach urge that § 411(a)’s second sentence serves merely to require a copyright claimant to serve “notice [of an infringement suit] … on the Register.” This reading, however, requires the implausible assumption that Congress gave “registration” different meanings in consecutive, related sentences within a single statutory provision. In § 411(a)’s first sentence, “registration” would mean the claimant’s act of filing an application, while in the section’s second sentence, “registration” would entail the Register’s review of an application. We resist this improbable construction.

139 S.Ct 888-889 (citations omitted). While this approach resolves the circuit split the Court did note that it can take seven months or more from the time an application is submitted to when the Copyright Office issues a registration. Another reason to register as soon as possible to avoid any problems with the Copyright Act’s three-year statute of limitations under Section 507.

*****

As both this article and the Copyright Office circulars are intended to provide only general guidance, you should consult your local copyright lawyer with any specific questions about registrations.

 

 

Back to the Future: Will the Seventh Circuit Transform Fair Use?

/0 Comments/in , /by

Last month, the Seventh Circuit in Kienitz v. Sconnie Nation signaled what may be a seismic shift in how “fair use” cases are judged. In order to see why, let’s briefly review the statutory and judicial framework.

First, fair use is not a “right” as some “copy-left “ advocates would argue, but is a defense to copyright infringement codified since 1978 in Section 107 of the Copyright Act. And contrary to popular belief, there are no bright line rules as to what is and is not a fair use. For example, there’s no magic number of bars of music you can borrow or any certain number of seconds of a clip you can post or, as we’ll see, a prescribed portion of a photographic portrait that one is automatically free to use.

Rather, as the Supreme Court reiterated in the 1994 case Campbell v. Acuff-Rose Music, fair use is determined by the courts on a case by case basis using the four factors of Section 107:

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2. the nature of the copyrighted work;

3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4. the effect of the use upon the potential market for or value of the copyrighted work.

In Campbell, the Supreme Court held that 2 Live Crew’s use of a portion of the Roy Orbison hit, Oh, Pretty Woman, in its similarly titled song, Pretty Woman, constituted a fair use parody of the Orbison song in that only so much of the original work as was necessary to comment on that original work was used in the 2 Live Crew recording. In its analysis of the first statutory factor, the Court cited with approval Judge Pierre N. Leval’s influential 1990 Harvard Law Review article, Toward a Fair Use Standard, as to whether the use of the Orbison in the 2 Live Crew work was “transformative,” in that “it adds something new, with a further purpose or different character, altering the first with new expression, meaning or message….” The Court, noted, however, that “transformative use is not absolutely necessary for a finding of fair use” but that “the goal of copyright, to promote science and the useful arts, is generally furthered by the creation of transformative works.”

Since Campbell, the Second Circuit, historically the nation’s second most important copyright court, took the “transformative use” ball and ran with it. Recent cases, such as the Google Books decision and Cariou v. Prince, held that copying of entire works constituted fair use on the basis that the use was “transformative.” Cariou, for example, involved Richard Prince’s alteration of entire photographs taken by Cariou. The Second Circuit held that the use was “transformative” and therefore a fair use, even though Prince’s works did not comment on Cariou’s, as was the case in Campbell. Any cursory Google search will yield a plethora of articles critical of Cariou.

This leads us to the Seventh Circuit and Kienitz. The case concerns a photo of the Mayor of Madison Wisconsin, Paul Soglin, taken by Kienitz. Soglin, with Kienitz’s approval, posted the portrait on the city’s website. The controversy arose because Soglin wanted to shut down an annual street party that he had once attended as a student many years before. Sensing some irony, defendant Sconnie Nation downloaded the headshot from the website, removed the background, changed the coloring and shading and added the slogan, “Sorry for Partying.” You can see the before and after pictures in the Court’s opinion. Sconnie Nation sold a total of 54 shirts, clearing a modest profit, and engendering the infringement action by Kienitz. Relying on Cariou, the parties argued whether or not defendant’s use of plaintiff’s photograph was “transformative”, with the District Court deciding that it was. Writing for the Seventh Circuit in his typically pithy manner, Judge Easterbook took a cynical view of this:

Fair use is a statutory defense to infringement. The Copyright Act sets out four non-exclusive factors for a court to consider. The district court and the parties have debated whether the t-shirts are a “transformative use” of the photo – and , if so, just how “transformative” the use must be. That’s not one of the statutory factors, though the Supreme Court mentioned it in Campbell v. Acuff-Rose Music, Inc. The Second Circuit has run with the suggestion and concluded that “transformative use” is enough to bring a modified copy within the scope of §107. Cariou applied this to an example of “appropriation art,” in which some of the supposed value comes from the very fact that the work was created by someone else.

We’re skeptical of Cariou’s approach, because asking exclusively whether something is “transformative” not only replaces the list in §107 but could also override 17 U.S.C. §106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under §106(2). Cariou and its predecessors in the Second Circuit do not explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2).

We think it best to stick with the statutory list, of which the most important usually is the fourth (market effect). [Citations omitted]

In the remainder of its 7-page opinion, the Court went through each of the four factors and affirmed the District Court’s finding of fair use, noting that while non-copyrightable elements, such as the Mayor’s face, were used in the Sconnie Nation shirts, the copyrightable expression in Kienitz’ photo was largely expunged: “Defendants removed so much of the original that, as with the Cheshire Cat, only the smile remains.”

Despite its rejection of the Second Circuit’s approach, the Seventh Circuit reached the same conclusion as under a transformative use analysis. It remains to be seen whether any other courts will adopt the Seventh Circuit’s retro approach in eschewing “transformativeness” as the touchstone of fair use. And if so, will they then find against fair use in cases, as in Author’s Guild v. HathiTrust and Cariou, where far more copyrightable expression was retained in the wholesale copying of works? In sum, adoption of this “new” approach may not necessarily signal a reversal of the trend to expand fair use.

Finally, it would be interesting to see what the Court would have done if Soglin, a public figure, had filed suit for violation of his right of publicity in the unauthorized commercial use of his likeness, albeit one with political overtones.

Raging Bulls, the Supreme Court and Running the Clock on Copyright Infringement

/0 Comments/in , /by

Yesterday, the U.S. Supreme Court issued its decision in Petrella v. Metro-Goldwyn-Mayer. This case is a copyright infringement action regarding the iconic MGM film, Raging Bull, which garnered Robert De Niro a Best Actor Oscar for his portrayal of boxer Jake LaMotta (but failed to win one for its director, Martin Scorsese). The key issue here in this case is whether the doctrine of “laches” bars a plaintiff from being able to bring a copyright infringement lawsuit. Spoiler alert: by a 6-3 decision, reversing the 9th Circuit, the high court decided that the doctrine did not bar the lawsuit, primarily because such actions are already subject to the Copyright Act’s three-year statute of limitations.

As a subplot, a lot of ink has already been spilled over how the Justices sided with respect to this decision. Justice Ginsburg, a member of the Court’s so-called Liberal wing, wrote the majority opinion and was joined by her Liberal colleagues, Justices Kagan and Sotomayor, as well as Conservatives Scalia, Thomas, Alito. Justice Breyer, who generally sides with the Liberals, wrote the dissent and was joined by Chief Justice Roberts, a Conservative, and Justice Kennedy, who is frequently the swing vote in 5-4 decisions. Unlike cases with particular social implications, such as those involving the free exercise of speech or religion under the First Amendment, decisions involving statutory construction are often decided 9-0, or with splits that don’t adhere to particular ideologies or political party lines.

Getting back to the main story, I’ll spare you the lengthy exposition which features the vesting of renewal rights in pre-1978 copyrights, the distinction between “legal” and equitable” remedies and the merger of law and equity in federal cases with the 1938 adoption of the Federal Rules of Civil Procedure. You can read the 39-page opinion for that.

Here’s what creators, assignees and licensees of copyrighted works, such as screenplays, films and music, need to know. First, for those who may not know, “laches” is the doctrine by which a court will, in extraordinary circumstances, deny plaintiff the right to proceed with a lawsuit where he unreasonably delays in bringing that lawsuit. Second, the Copyright Act’s three-year statute of limitations in section 507(b) might be described as applying on a “rolling basis.”

Generally, the clock begins to run on filing a copyright infringement action from the time the claim, “accrues,” which is usually when the first infringement takes place. For example, if a you’re a songwriter and someone steals your song and puts out a record in June, 2014, you would have three years from that time to file a copyright infringement action or forever hold your peace. Or would you? Let’s assume that the infringing record is a hit and remains in for print for more than 20 years, including re-releases in various new formats. Despite being aware of the infringements all along, you don’t file a lawsuit until 2034, twenty years after the initial release of the infringing recording and after the label has expended a lot of money in producing, distributing, marketing and re-issuing the record.

One might think that the statute of limitations would totally bar such a lawsuit. One would be wrong. You, as plaintiff songwriter, can still sue, but you can only base your claim on infringements that occurred during the prior three years, i.e., 2031-2034. Anything that happened between 2014 and 2031 would be time-barred. With that in mind, let’s look at the relevant facts in the Raging Bull case.

After retiring from the ring, Jake LaMotta collaborated with his friend, Frank Petrella, to tell his story. They wrote several versions, one of which was a 1963 screenplay which was registered with the Copyright Office with Mr. Petrella as sole author. Frank Petrella subsequently died, prior to the commencement of the “renewal” term for you copyright geeks, and the screenplay became the sole property of his daughter, plaintiff, Paula Petrella. Although Paula first had her lawyer contact MGM in 1998 regarding alleged infringement of the screenplay, she didn’t file suit until January, 2009, nearly thirty years after the release of Raging Bull, along with re-releases in VHS, DVD and licenses to cable and satellite TV companies.

Although Ms. Petrella only sought relief for infringements for the prior three years (and therefore anything that happened prior to 2006 was not involved), MGM viewed the lawsuit as the waste product of a raging bull and that laches should bar her complaint. MGM felt it unfair to have to defend a lawsuit that plaintiff could have brought decades earlier when memories fade, witnesses die and documents are lost. The District Court, Court of Appeals and the dissenting Supreme Court Justices agreed.

The majority of the Supreme Court, however, felt that laches was not a bar a lawsuit in light of their being an applicable statute of limitations. A plaintiff has a right to decide whether to pursue and infringement action, and subject to the statute of limitations, when to do so. Moreover, the same evidentiary concerns that MGM raised, also affect plaintiff, who bears the burden of proof. The Supreme Court did point out that the doctrine of “estoppel” could bar a copyright infringement action where the plaintiff engaged in deceptive or misleading conduct regarding the defendants.

So, just because the statute of limitations may have passed regarding first infringements, it doesn’t mean the clock’s run out on later ones. As always, if you think you have an infringement claim that you might want to pursue, you should consult your local copyright lawyer.

GoldieBlox and the Beastie Boys: Parody, Piracy or Publicity Ploy

/0 Comments/in , , /by

This article was originally posted on the ScoreStreet blog on November 27, 2013.

In case you’ve not tuned into the TV news, the blogosphere or social media in the past couple of days, you may have missed the uproar over a small company’s use of the Beastie Boys’ song Girls in a YouTube video ad that quickly went viral. Goldieblox, which describes itself as “building games for girls to inspire future engineers,” produced a video with young girls using the company’s products in a Rube Goldbergesque contraption. This was set to a re-recording of Girls, sung by young girls with the lyrics changed from the original to one of empowerment.

The Beastie Boys are well-known for refusing to allow their music to be used in commercials and it was widely reported that Adam Yauch had a provision in his will prohibiting such exploitation. So, it wasn’t surprising that Goldieblox did not seek permission to use Girls – particularly in a way that substantially altered the original.

Instead, GoldieBlox felt it was just right to file for a declaratory judgment, seeking a determination in federal court that their use of the song in the commercial did not constitute copyright infringement, claiming  “fair use” in the nature of a “parody.”  There already have been numerous blog posts analyzing the matter to varying degrees.  I simply want to use the Goldieblox – Girls situation to illustrate some fair use principles and to dispel some misconceptions.

First, there is no doubt that the use of the song by GoldieBlox without permission would constitute infringement unless there was a valid defense to the infringement. In that regard, “fair use” is not “right” as some like Larry Lessig and his acolytes have maintained. Rather, it is a defense to copyright infringement.  Moreover, there are no hard and fast rules as to what is, or is not, fair use. For example, it is not automatically a fair use to use 30-seconds or less of a recording or to copy four or fewer bars of a piece of music.  Unfortunately, what constitutes fair use has to be determined on a case-by-case basis in accordance with Section 107 of the Copyright Act, which reads as follows:

§ 107. Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

As for “parody” being a defense to copyright infringement, that was established in the 1994 U.S. Supreme Court decision, Campbell v. Acuff-Rose.  In that case, the band, 2 Live Crew, used a portion of the Roy Orbison hit, Oh, Pretty Woman,” in their song, Pretty Woman, despite having been refused permission by the copyright owner of Oh, Pretty Woman, Acuff-Rose Music.  In that case, the Court went through a lengthy fair-use analysis and found that 2 Live Crew’s use of Oh, Pretty Woman was “transformative” in that it did not merely reproduce and appropriate the original song.

In so doing, the Court set forth guidelines for determining whether a use would be a “parody” in the legal sense, i.e., one for which permission of the copyright owner of the parodied work would not be required. Among the criteria are 1) that only so much as is necessary to conjure up the original, parodied work was to be used and 2) that the parody must comment on the original work. In other words, it would not be a “fair use” parody to write new lyrics to an underlying song that talks about something else. That is why Weird Al gets permission for his “parodies.”  To constitute a parody protected by fair use, the “parody” need not be funny or artistically successful.

How does this apply to the GoldieBlox situation? It has been pointed out that the original Beastie Boys’ song is misogynistic and that the GoldieBlox version changes the lyrics to a message of female empowerment.  However, more than a mere conjuring of the original song was used. Basically, the whole song was used – and to shill a product, however positive the message embodied in the ad may be.

So, is the use a parody protected by fair use? You now have the tools to do your own analysis. My own view is that using substantially all of a song for an advertisement for a product should not constitute fair use. But, as I said, that determination must ultimately be decided by a federal district judge.  And as of now it seems unlikely that will happen. Apparently, GoldieBlox has changed its tune; the company uploaded a new video without music or lyrics and has issued an apology – of sorts– to the surviving members of the Beastie Boys.

Although we may not have a court decide whether the GoldieBlox use of “Girls” was parody or piracy, one thing is absolutely clear: it was a brilliant publicity ploy for the company.

Wanna Buy a Used Download?

/0 Comments/in , /by

While not nearly as exciting as the same sex marriage cases, it’s always noteworthy (at least to people like me) when the Supreme Court issues a decision about copyright. A recent high court case and an even newer one from the district court highlight some real differences between the physical and digital worlds for producers and consumers of copyrighted stuff. On March 19, the Supreme Court issued its opinion in  Kirtsaeng v. John Wiley & Sons (No. 11-697). This case involves a conflict between two provisions of the Copyright Act, the “first sale” doctrine” under Section 109(a) and the “importation” provision of Section 602(a)(1).

The “first sale” doctrine is what enables so much commerce at garage sales and  flea markets and the very existence of used book and record stores. In short, it says that once a copy of a copyrighted work, such as a book or CD, has been lawfully sold (or given away), the purchaser (or other lawful recipient) is free to dispose of that particular copy as he wishes. The copyright owner of the work no longer has a say in the matter. More on the “first sale” doctrine later.

The importation provision states that bringing a copyrighted work into the US without permission of the copyright owner violates that owner’s right to distribute copies of the particular work.  It’s easier to understand in the context of the Kirtsaeng case. Wiley is a publisher of text books. It’s common for a publisher to print different editions of texts in various geographic markets and at different prices. Often, these editions are printed overseas or licensed to an overseas publisher, printer and/or distributor.

Kirtsaeng was a graduate student who figured out that certain English-language texts published by Wiley for the Asian market were significantly cheaper than their domestic counterparts. So, he was able to finance his education by buying up foreign editions and selling them stateside for less than the US editions while still making a tidy profit. That is, until Wiley sued him for copyright infringement. Cutting to the chase of the typically lengthy and arcane Supreme Court opinion, complete with a dissent and concurrence, the Court concluded that despite the provisions of the import clause, the first sale doctrine applies to works lawfully made overseas.

Unless one is selling lots of stuff overseas or is setting out to be a text book arbitrageur, the Kirtsaeng decision is not likely to have an immediate impact on your life. However, another decision involving the “first sale” doctrine, Capitol Records, LLC v. ReDigi, Inc., (No. 12 Civ. 95 (RJS)), may have a more direct impact on music lovers. In this March 30 decision from the Southern District of New York, the court essentially held that digital really is different.

Let me explain. ReDigi is a recently launched service that claimed to allow people to sell their “used” downloads of music. A user would download the company’s software, which would go through their computer’s hard drive and locate eligible files, e.g., downloads lawfully purchased through iTunes and not ripped from a physical CD. The files would be uploaded to ReDigi’s cloud server so that customers could purchase the “used” recording at a discount. ReDigi would take a cut of the sale as its commission fee.

Capitol sued, claiming copyright infringement and other unpleasantness and ReDigi replied that it was lawfully facilitating a digitized record swap. In other words, since the downloads were lawfully purchased, the “first sale” doctrine applies, just like reselling physical copies of recordings at a garage sale. Without going into all the technicalities (and the techno-geeks among you should do so as the opinion contains a digestible discussion of the first sale, direct, contributory and vicarious infringement and fair use), the Court concluded that despite ReDigi’s claims, additional copies of the music were being made and distributed – even if the “seller” of the “used” file no longer had access to it. If the music is transferred first to the cloud, that’s one copy and if someone purchases and downloads the “used’ music file, that’s another copy. The “first sale” doctrine only applies to that particular copy; it doesn’t allow you to make and distribute more. Then, there’s the concern that ReDigi will only search the particular machine on which the software has been downloaded. Other copies of the “used” file could easily be saved on other devices.

ReDigi claimed that the Court’s analysis is a hypertechnical view of the law that prevents the first sale doctrine from operating in the digital world. The Court, however, was not convinced and cited examples of handing over your hard drive or your iPod if you want to legitimately resell your particular copy of a digital file. Because of the distribution of unauthorized copies of copyrighted works as part of its service, the Court found ReDigi guilty of direct, contributory and vicarious copyright infringement.  The Court concluded that whether these incidental copies and distributions should matter is a policy matter for the legislature – current copyright law is clear.

What does it all mean? You can bet there will be much lobbying of Congress as to whether and how the “first sale doctrine” should apply in the multinational and digital environments. But as for now, I wouldn’t advise opening a used download store.

Why My Friend Is Wrong on Gun Control

/0 Comments/in /by

The tragedy at the Sandy Hook Elementary School in Newtown, Connecticut has re-energized the debate on our nation’s gun policy. Most commentators in the media and the blogosphere have called for tighter gun laws. My friend Ron, who’s written a scholarly article on the Second Amendment, takes a contrary view. Ron is no gun nut. Since our law school days he’s been one of my best friends – despite our having very different political views – and is a thoughtful, intelligent guy. He owns several firearms which he keeps under lock and key. I do not own a gun but I have been target shooting with Ron and thoroughly enjoyed the experience – and would happily do it again.

Ron’s brief article against tightening our gun laws I believe, sets up a straw man and then, not surprisingly knocks it down.  Few people are calling for an outright ban on guns or the right of individuals to own them. Ron cites recent Supreme Court precedent supporting the proposition that the Second Amendment provides such individual guarantees and I do not dispute his analysis of the jurisprudence.

However, as Senator Schumer pointed out on Face the Nation, no amendment, not even the First, is absolute. The Courts have routinely upheld reasonable “content-neutral” restrictions (e.g., you can’t post notices in certain places irrespective of what the message might be).  And I’m sure Ron will correct me if I’m wrong, but gun registration laws and waiting periods are constitutional under the Second Amendment.

But simply demonstrating an individual’s Constitutional right to guns is not the end of the discussion. Even assuming this right, I don’t think my good friend would advocate for an individual’s right to own chemical weapons, a nuclear warhead, a fighter jet, tank or anti-aircraft launchers. So, it appears that the government, under the Second Amendment, can restrict individuals from obtaining some arms within reason.

Only the biggest fear-mongers among the NRA leadership and their acolytes would suggest that any legislature is looking to take away firearms reasonably used for hunting or self-defense.  I submit that there’s no sport in hunting with an assault rifle.  Nor is there any need to have semi-automatic weapons to defend one’s self or home. After all, if you shoot an assailant once or twice he’s likely disabled. No need to shoot him a dozen times.

Similarly, I do not understand the deterrent effect of allowing individuals to carry concealed weapons. If a would-be criminal sees someone with a gun in a holster or a rifle slung off the shoulder, that potential ne’er-do-well won’t even draw his weapon, whereas he might draw and even fire in the presence of concealed weapons.  I suspect crime deterrence is why most police officers wear uniforms.

Ron does acknowledge that the mentally ill should not be allowed to buy firearms. But the shooter in the Sandy Hook slaughter didn’t buy the guns – his mother did. And, again, a restriction barring the mentally ill from buying guns would appear not to run afoul of the Second Amendment.

Nor is it an answer to say that the Newtown killings would not have been prevented with stronger gun laws. True, no law can prevent mentally deranged individuals from attacking. However, if Adam Lanza were only able to get his hands on a pistol or a hunting rifle, he might have only killed two first-graders, not twenty.  And if mega-clips were not salable to individuals, would-be mass murderers would have to re-load more often, allowing people to either subdue the shooter (as has happened) or escape.  We can’t prevent a madman’s carnage, but we can certainly minimize it.

Ron cites a study that states which allow citizens to carry guns have lower crime rates. I’d counter with surveys from other industrialized nations, such as Japan, England, Canada and Germany. Firearms are not nearly as available there and the incidents of gun violence, not surprisingly, are a fraction of what we have here in the States.

Ron concludes that “[t]he Founders of America saw fit to place firearms in a highly exalted position in our framework of individual liberties.” True. Many of them also owned slaves.  Our Constitution is the highest law in the land but it is not sacred text. It’s been amended 27 times and we fought a Civil War over it.  Back in the Founders’ day, people could be property and women couldn’t vote.  The Constitution’s built-in amendment process demonstrates that the Founders of America recognized even rights enshrined in the Constitution be changed over time – although not easily.

So, what would I propose? Close the loopholes that allow people to avoid background checks at gun shows and other individual sales.  Reinstate the assault weapons ban for individual use.  Enact strict civil liability laws and amend the felony murder statutes to impose severe fines and imprisonment for people who allow access to guns where they are not registered to such individuals. That will create powerful incentives to have individuals keep their guns under lock and key – as my friend Ron does – so that the registered owner’s kids, friends and neighbors do not have access to them.  Yes, Ron, I’ll grant you there is an individual right to bear arms. But it must be balanced with the right to freedom from harm.