The open access debate goes well beyond the world of academia, and what follows is only a brief summary.  Many open access advocates support both free online access to works as well as the granting of a license that permits copying and redistribution of the work.  They underscore the broad societal benefits that would flow from broad public access to such information.  Opponents of the movement have argued that true open access is impossible because publishers could not then recover the costs of their work, and that all but a few scholarly journals would cease to exist.  The usual response to this criticism is that the journals could simply charge the authors fees to cover their costs in publishing such works (and, in turn, that the fees would likely be paid by the authors’ university employers).  Perhaps this counterargument is less attractive given the current global economic downturn.

I think the fundamental question is the following: what motivates academic authors to write and publish journal articles? 

My sense is that they do so primarily in order to garner scholarly acclaim and, at least at first, to secure tenure.  It therefore seems to me that such authors would obtain the maximum benefit from the broadest possible distribution of their articles.  Professor Shavell applies these conclusions to all academic works.  However, I understand why the arguments may not hold with respect to other academic publications such as textbooks, given the more predominantly economic reasons for which academic authors might undertake such projects. 

I am, of course, curious as to whether the abolition of copyright in either form (for academic journal articles, or for all academic works) would be of concern to this blog’s readers.

In 1992, Native-American activist Suzan Harjo, on behalf of herself and six others, petitioned the Trademark Trial and Appeal Board (TTAB) to cancel six trademark registrations granted to the Redskins beginning in 1967. (Although team had used the name “Redskins” since 1933, it did not attempt to register the trademark until 1967.)

The gist of Harjo’s argument was that the TTAB had erred in registering the trademark because it violated section 2(b) of the federal Lanham Trademark Act, which prohibits the registration of a mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  The Redskins (who do business as Pro-Football, Inc.) defended on grounds that the trademark was not offensive and that such an interpretation of the Lanham Act unconstitutionally violated the team’s rights under the First and Fifth Amendments to the United States Constitution.

In 1999, seven years after the initial claim, the TTAB ruled in favor of Harjo, finding that the trademarks “may be disparaging of Native Americans to a substantial composite of this group of people,” and “may bring Native Americans into contempt or disrepute.”  Consequently, it scheduled the cancellation of the offending marks.  The ruling was appealed to the United States District Court for the District of Columbia, which in 2003 ruled that the complainants had failed to establish that the marks were in fact disparaging and that in any event their failure to bring the claim in a timely fashion—25 years passed between the first registration and the initial complaint—resulted in it being barred by the equitable doctrine of laches.

On the appeal of that decision, the Court of Appeals for the District of Columbia ruled in 2005 that the laches defense was valid for six of the seven petitioners, but remanded the action to the District Court for a determination whether or not the defense was valid as applied to petitioner Mateo Romero who was only one year old when the mark was first registered in 1967.  It retained jurisdiction over the “disparagement” claim without ruling whether the TTAB or the District Court were correct.

Upon reconsideration the District Court concluded that the laches defense applied to Romero as well, given his understanding of the issues involved prior to reaching the age of majority and his failure to object to the registration until almost eight years after reaching the age of majority.  This conclusion was upheld by the Court of Appeals in May of 2009, and it was this decision that the Supreme Court decided today not to review.

There are apparently plans, however, to re-file the challenge to the registration but this time using Native American challengers who have just reached the age of majority.  The earlier Circuit Court of Appeals decision suggested that such plaintiffs would not be barred by the laches defense.  Such a case will presumably reopen the question of the propriety of the Redskins trademark.

Of course a reprisal of the original TTAB ruling would not prevent the Washington team from continuing to use the name “Redskins.”  It would, however, prevent the team (and the NFL) from excluding others from making use of the name.

A subsequent post will examine the historical background of the team name, Washington Redskins.

I’ve been too busy to blog recently about the Hope poster case, but aside from the AP’s answer to Garcia’s claims of ownership, not much has happened. And frankly, given my schedule, I was hoping it would stay that way for a while.

No such luck. AP just issued a press release on recent developments in the case—and it’s a bombshell. It starts off slow, as though the AP was just tendentiously describing some deposition testimony. But then it gets to this:

Fairey’s counsel has now admitted that Fairey tried to destroy documents that would have revealed which image he actually used. Fairey’s counsel has also admitted that he created fake documents as part of his effort to conceal which photo was the source image, including hard copy printouts of an altered version of the Clooney Photo and fake stencil patterns of the Hope and Progress posters. Most recently, on October 15th, Fairey’s counsel informed The AP that they intended to seek the Court’s permission to withdraw as counsel for Fairey and his related entities.

Whoa!

Don’t believe the AP? Fairey’s lawyers—the Stanford Law School Center for Internet and Society and the new firm of Durie Tangri LLP—have filed a motion to amend Fairey’s complaint and answers that says much the same thing. (The legal ethics of a filing like this are delicate, to say the least; but impossible to fully assess without knowing what transpired between lawyers and client. All I can say is that October 2—the day all this apparently came to light—must have been a very stressful day for Fairey’s counsel.)

To bring everyone up to speed here, one aspect of this dispute that has been argued about since the beginning is which photo Fairey actually used to create his poster. Two photos from the same event, both taken by photographer Mannie Garcia, have been cited: the AP claimed the source was a headshot of Obama, much like the poster; Fairey claimed in his complaint that it was a different photo, with George Clooney also in the frame, which he then cropped. This had some modest amount of significance because if Fairey cropped the photo, that aids his case because the cropping would reflect Fairey’s creative choice rather than Garcia’s.

But really, it was a minor issue; certainly not worth fabricating evidence over. I looked at this issue more closely in a blog post in February, shortly after the filing of the complaint, in which I compared overlays of the poster on the two photos and concluded that Fairey’s claim was “highly implausible”:

Perhaps Fairey has just had a memory lapse. But if not, and he’s engaged in a little retroactive wishful thinking, it’s not for very much benefit; I think the strongest arguments in his favor have nothing to do with the framing of the original photo. Furthermore, to the extent a judge or jury comes to the same conclusion, it just plain looks bad to have a misstatement like this in the complaint.

That’s true—and it looks even worse if you destroy evidence to cover it up. And it looks even worse than that if you manufacture evidence. All for very little benefit. Fairey’s behavior here reminds me of insider trading cases where some billionaire risks prison in order to avoid a loss of $20,000.

It’s also too bad for us copyright professors who were interested in the doctrinal issues here. I can’t see this case going much farther, and even if it does, the chances we’ll get a clean holding on fair use, copyrightability, or substantial similarity seem thin.

[Cross-posted at Madisonian.net]

Other posts in this series:

• Why did Fairey file in the Southern District of New York?
• Does AP actually own the copyright in the Garcia photo?
• Is Fairey’s suit doomed to fail before it even gets off the ground?
• What’s the “original” photo?
• What does the complaint say about the poster creation process?
• The AP strikes back
• What’s a “visual reference”?
• Mannie Garcia joins the suit
• Fairey’s spoliation bombshell—This post

Students of sports history primarily remember him as the winning pitcher in one of the most famous games in baseball history, the New York Giants 5-4 victory in the 1951 one-game play-off with the Brooklyn Dodgers that determined the Senior Circuit’s representative in that year’s World Series.  This was the game that featured Giants outfielder Bobby Thomson’s dramatic walk off  home run in the bottom of the ninth inning, the so-called “Shot heard ‘round the world.”  Jansen had pitched a scoreless top of the ninth for the Giants.

During his nine-year major league career, Jansen won 122 games and lost 89 with an earned run average of 3.58, solid but not exceptional totals.  However, his career began in a blaze of glory.  After winning 30 games in 1946 for the San Francisco Seals of the minor league Pacific Coast League (a feat matched only once by any professional pitcher at any level during the subsequent 63 years), Jansen was purchased by the New York Giants.  After going 21-5 as a rookie, he recorded 18, 15, and 19 wins over the next three seasons, before compiling a 23-11, 3.04 record in the Giants championship year, 1951.

What almost no one remembers is that Jansen was also the name plaintiff in an early right of publicity case that contributed to the development of personal publicity rights as a form of “property” at a time when the future of that right was quite uncertain.  But for an even more significant decision handed down the same year in the same state, historians of the right of publicity might remember Jansen’s case as one of the most significant decisions of the post-World War II era.

In the summer of 1952, a number of New York vendors were placing cardboard photographs of New York Giant baseball players in bags of popcorn and packaging them with chewing gum.  (Presumably, they were doing this with Dodger and Yankee players as well.)  This practice was separate and apart for the baseball cards that were sold that summer by the Bowman and Topps companies that were packaging the cards with chewing gum under licenses obtained from major league players.

On August 14, 1952, with their team sitting in second place, eight games behind their archrival Brooklyn Dodgers, Jansen and six of his teammates (Bobby Thompson, Sal Maglie, Wes Westrum, Montia Kennedy, Dave Koslo, and Bill Rigney ) obtained a show cause order from New York Supreme Court Justice Samuel M. Gold requiring the Hi Lo Packing Company, Inc. (rendered Hilo in the subsequent judicial decision) and Theatre Concessions, Inc. to show why they should not be barred from continuing their practice of placing the plaintiffs’ photographs in bags of popcorn that were sold to the public without permission from the players.

Jansen and his colleagues also demanded $50,000 in damages.  Even though Jansen had won 96 games for the Giants the previous five years, postwar major league salaries were so low that players usually had to work at regular jobs in the office season.  Jansen was no different, and each fall and winter he worked in a pharmacy in Jackson Heights, New York.  There is little doubt that the extra money would have come in handy.

As luck would have it, at the Polo Grounds the next day, Jansen blew a 2-1 lead in a game with the Boston Braves when he allowed three unearned runs in the ninth inning.  (Jansen himself and Bobby Thompson both made errors that inning.)  In fact, after he filed the lawsuit, Jansen’s career went into a tailspin.  He failed to win another game during the 1952 season and never again had a winning season in the major leagues.  (Presumably, this was just a coincidence.)

Jansen and his teammates were represented by Jonah J. Shapiro, a well-known New York sports and entertainment lawyer.  By the time the case went to trial, Harry Horowitz’s businesses Model Airplanes, Inc. and Hit Parade, Inc. had been joined as defendants, at least one of whom was packaging player photographs with chewing gum without permission from the players.

Jansen’s suit was technically not a right of publicity action—that term would not be coined until the following year.  His action was brought under Section 51 of the New York Civil Rights law which was usually characterized as the New York “privacy statute,” and which provided as follows:

Any person whose name, portrait or picture is used within this state for advertising purposes or for the purposes of trade without [such person's] written consent …  may … sue and recover damages for any injuries sustained by reason of such use.

The defendants responded by filing a motion to dismiss on the grounds that the plaintiffs players had failed to state a cause of action, because the baseball players, as public figures, had “waived” their right to be left alone, which was, they argued, the sole purpose of the statute.  At issue were the implications of the decision of New York’s highest court, the Court of Appeals, in Gautier v. Pro-Football, 304 N.Y. 354, which had been decided on July 15, 1952, less than a month before Jansen and his teammates filed their action.

In that case, Gautier, an animal trainer, sued the Washington Redskins and others for allowing his act, performed at the half-time of an NFL game in 1948, to be televised by the ABC television network which was also broadcasting the game.  The court ruled in that case that no violation of Section 51 had occurred.  Although the court’s rationale was a bit convoluted, there was language in the opinion that seemed to suggest that professional entertainers, like animal trainers and presumably major league baseball players, waived their right to sue for invasion of privacy under Section 51 because they clearly sought out the public spotlight.

The hearing on the motion to dismiss occurred on November 14, 1952, before a Judge Cavagan.  In a brief opinion, 202 Misc. 900 (1952), Cavagan agreed with Jansen’s attorney that the Gautier decision had not ruled out actions under Section 51 when the likenesses of baseball players were clearly being used to aid in the sale of non-baseball related items.  In that regard, he found the present case similar to, and still controlled by, an earlier New York case, Lane v. Woolworth Co., 171 Misc. 66, aff’d 256 A. D. 1065 (1939), in which the actress Judy Lane had successfully argued that Section 51 prevented Woolworth’s from including her photograph without her permission in inexpensive lockets sold in its five and ten cent stores.

Judge Cavagan’s ruling was appealed by the defendants, but the ruling was affirmed by the Appellate Division of the Supreme Court slightly more than a year later, on November 17, 1953.  In a memorandum opinion, the five-judge court unanimous confirmed the decision of the lower court without further elaboration.  282 A. D. 935 (1953).

However, by the time that the appellate division issued its ruling, the United States Circuit Court of Appeal for the Second Circuit had handed down its landmark right of publicity decision in Haelan Laboratories v. Topps Chewing Gum, 202 F.2d 866 (1953), another case in which lawyer Jonas J. Shapiro served as counsel.  In Haelen, the court ruled that baseball players had not just a right of privacy under Sec. 51 but also a common law property right in their name and images.  As a result, the Haelan decision rendered the final decision in the Jansen case less significant than it might have been.  Without Haelan, Jansen’s case likely would have seemed much more important and might well have played a much more visible role in the development of the right of the publicity in its formative era.

It is also not clear if Jansen ever benefitted directly from the decision in his case.  By the time the final decision was handed down, he was pretty much finished as a pitcher.  In 1954, he pitched in only 13 games for the Giants (after averaging 39 games per season the previous seven years), and on July 12, 1954, he was unceremoniously released by the Giants and had to return to the minor leagues.  It seems unlikely that anyone was going to rush to get in line to pay Larry Jansen for the right to put his photo in popcorn bags after the 1953 season.

As a case, Jansen v. Hilo Packing Company has not been completely ignored.  It has been cited in six subsequent judicial opinions, including the landmark right of publicity decisions Palmer v. Schonhorn Enterprises, Inc., 96 N. J. Super 72, 232 A.2d 458 (Ch. Div. 1967) and the recent C.B.C. Distrib. & Mktg. v. Major League Baseball Advanced Media, L.P., 443 F. Supp. 2d 1077 (E. D. Mo. 2006).  It has also been cited in six law review articles and the Restatement 2d of Torts.

In many ways, the case of Jansen v. Hilo Packing resembles the baseball career of Larry Jansen.  At one point, it looked like both the pitcher and the case were headed for historical significance.  Instead, they both ended up as important parts of the respective historical records of major league baseball and the right of publicity, but in the end neither turned out to be of Hall of Fame caliber.

These controversial rules—which sought to limit the number of continuation applications, a type of patent application that claims priority back to an earlier filed application—had prompted vociferous opposition from the patent community because it would limit strategic choices related to patent prosecution.  Indeed, I derived the title of this blog from comments posted today on the Patently-O Blog.

I had long threatened a blog post that advised newly appointed Commissioner Kappos what he should do in response to the issues posed by Tafas.  Conveniently, Commissioner Kappos actually undertook the strategy that I would propose—rescinding the rules, filing a motion to dismiss the case, while at same time seeking to vacate the federal district-court decision (a motion joined by one of the plaintiffs, GlaxoSmith Kline).  As I have discussed in an article published last year (First Things, First: A Principled Approach to Patent Administrative Law, 42 John Marshall L. Rev. 29 (2008)), the decision of the district court was filled with a number of mistaken premises about the nature of substantive notice-and-comment rulemaking in the patent administrative state.

Notably, the issues raised by Tafas may still remain very much with us.  First, one of the plaintiffs, Mr. Tafas, has refused to join in the government and GSK’s joint motion, precisely because he wishes that precedent to stand.   Second, the problems that prompted the issuance of these rules still stand.  A former Marquette student, Kevin Rizzuto, in our most recent issue of the Marquette Intellectual Property Law Review (13 Marquette Intell. Prop. L. Rev. 411), undertook an empirical analysis of continuation practice.  Kevin concluded that continuation practice needed to be substantively revised to prevent long-pending applications and to limit non-divisional continuation applications.  Finally, the conflict at the heart of Tafas—the appropriate role of the USPTO in governing the new administrative state—will continue to recur given the increasing complexity of the patent administrative state.  Section Two of the Patent Act (which was based on administrative practice of the USPTO in the 1870s) may have finally outlived its usefulness in terms of structuring the USPTO’s governing authority.  Like any nightmare, then, the conflicts that drove Tafas may still be with us, as we awake in the morning.

There’s bound to be some comment on how this is helpful precedent for YouTube, but I think the cases are importantly different. I’ve noted repeatedly that I think Viacom’s best fact—indeed, possibly the decisive factor in bringing the suit—is that YouTube at one point seemed to be selectively offering to filter uploaded content. See my analysis of this issue from earlier this year.

It doesn’t appear that UMG had anything like this fact to hang its case on.

Rather, the case seems to have been motivated by UMG’s frustration that Veoh was displaying its videos without paying for them. But that frustration doesn’t seem to have translated into a clear legal argument. Judging from the decision (which is not always a reliable method), UMG’s arguments had a kitchen-sink quality to them. For example, UMG seems to have pressed hard on the idea that Veoh had “actual knowledge” of infringement because, essentially, Veoh could have inferred it from the activity on their site. That argument seems pretty weak; whatever “actual knowledge” is, it shouldn’t have to depend on inferences. I’m of the view that legal arguments aren’t strictly cumulative; throwing a weak one on top of a stronger one actually weakens the strong one. (UMG also got rapped for raising “disputed issues of fact” that in fact were not disputed.)

One promising, although difficult, avenue might have been to argue that Veoh purposefully refrained from using widely available filtering technology in order to profit from infringement, demonstrating either knowledge of red flags or vicarious liability. But whatever sympathies this argument might have generated were drained when Veoh implemented UMG’s preferred filtering technology a month after the suit was filed in 2007. That’s not necessarily fatal, but it doesn’t appear that UMG’s arguments were limited to conduct before that time, which makes the overall narrative of why UMG should win unclear. The main thrust of the arguments seems to have been that, despite the notice-and-takedown regime in Section 512, for various reasons site owners are essentially strictly liable for infringing content posted to their sites by third parties. That’s just contrary to the overall purpose of 512, however, and unless clearly required by the text such a “gotcha” argument seems like a long-shot.

[Cross-posted at Madisonian.]

 I would like to add to this discussion by sharing the comments of my brother, Jim Fallone, on the foregoing debate.  I am aware, of course, of the popular movie Adaptation, “co-written” by screenwriter Charlie Kaufman and his fictitious brother Donald.  In that movie, Charlie Kaufman takes the screenwriting process itself as the film’s subject, and plays with post-modern theories of authorship.  Let me assure you that, unlike Donald Kaufman, Jim Fallone is a real person.  Moreover, Jim Fallone has over 20 years of experience as an executive in the publishing industry, currently with Andrews McMeel Publishing in Kansas City, and is a published illustrator.  While this experience makes him dependent upon copyright law for his meal ticket, it also gives him some valuable insights into the creation and marketing of literary characters.

What follows, then, are the comments of Jim Fallone:

Ed, to begin with, you are fundamentally wrong (as is Professor Hylton).

It is true that The Catcher in the Rye can be viewed as art and as such can be viewed as a gift in the Lewis Hyde tradition.  However, there are moral and cultural value rules that separate a gift from usury, and that line of separation is not clearly defined and may vary from culture to culture. These rules are directly related to the broader context that exists within the society at the time.

When Cervantes wrote Don Quixote, authors of fictions and stories rarely got paid. It was the printer who tended to make the money, both by pirating printings of the original work as well and by commissioning and even writing many of the sequels to Quixote. You can argue that economically Cervantes was much like today’s blogger or fan fiction writer. The many fake sequels became viral marketing that built demand for the “official” sequel. This all helped to build Quixote awareness and to strengthen its brand.

But this is not the same context with which we view The Catcher in the Rye. This latter book is a successful and a real and viable commercial revenue generator. It is a business, and the livelihood of the author is directly dependent on the book’s own reputation as literature—as well as the mystery surrounding the author and his purposely limited output. Additionally the work was created as a commercial venture. It was intended as a commodity. It was created and sold for a price and intended to be resold for a price to the general public.

Cervantes we see today as an artist who created something new and who never received much money or benefit from it.  However, at the time of his book’s creation that is what he desperately sought.  Don Quixote was immensely successful but, because there were no laws to protect Cervantes, everyone but the author cashed in (both on the original and its varied unauthorized sequels). Don Quixote’s value as literature as we understand it today was only achieved after the author’s death. During his lifetime, it was viewed as the literary equivalent of Harry Potter, making the author’s poverty all the more tragic.

Professor Hylton chose Edward Bellamy’s 1888 Utopian novel Looking Backward, 2000-1887 to focus his comparison on. His first mistake was using a Utopian novel — there are no good Utopian novels unless you count books like 1984, Fahrenheit 451, and Brave New World which are about how there are no good utopias. Secondly Bellamy’s book was a parable for a political and philosophical movement. Each sequel was addressing the socialist model which was the protagonist. The characters and back story of the book were less than secondary and little more than clip art on a PowerPoint presentation. The very nature of the book was to prompt philosophical discourse on the author’s political views.

Looking Backward was successful. It made the author wealthy and had a measurable value as a commodity, but much of the author’s revenue actually came from the lecture circuit. The failure here is that there was no real intellectual property of value. The main character of the book– Julian West– held no exploitable value and the only character of any value was Bellamy’s socialist model. Bellamy was not Edgar Rice Burroughs, and the possibility of writing Julian West’s Adventures on Mars was not jeopardized by another author beating Bellamy to the punch. There would never be Julian West action figures. The cardboard characters of Looking Backward were proxies for the reader to observe the author’s socialist utopia. The character was merely a device.

In the case of Salinger– again looking beyond the words on the page– a significant reason for the work’s reputation and value as art is precisely the unusual absence of further exploration and exploitation. The mystery surrounding the reclusive author and the unknown future of Holden Caulfield are part of the whole that is The Catcher in the Rye. The value of the novel’s theme of a boy’s alienation and angst about the future are all the more poignant and urgent precisely because we don’t know what becomes of him. This allows us all to identify with Holden and use him as a prism for our own awkward adolescence.

The Catcher in the Rye should be considered a great work of literature and art in the same sense that Quixote is art, but the context when it was published and the marketplace and nature of intellectual property at the time of its publication make all of the difference. Salinger’s work is great literature, but it is also incredibly successful and it generates significant income for both the author and the publisher. Unlike Looking Backward, the measure of value inherent in the property and characters of The Catcher in the Rye are in part derived from the rarity of its exploitation and the intentionally unknown future of the main character Holden Caulfield.

Holden has become a recognizable likeness much like Batman, Homer Simpson, Harry Potter or Luke Skywalker. Permitting works by any other author that created an unauthorized canon to the world that Salinger created in The Catcher in the Rye would be the equivalent of writing a sequel to Star Wars in which Luke has a previously unknown bastard child with Leia, who subsequently becomes a fat alcoholic fascist ruler of the Empire and dooms the rebels to continued mediocrity for generations. There is no way that LucasFilm would allow their carefully created and detailed universe to be devalued, thereby jeopardizing the reputation of its brand.

This value goes beyond the movies to the action figures and lunch boxes. Both the massive world of Star Wars and the tight and reclusive world of The Catcher in the Rye rely upon the integrity of their vision and on the property’s reputation and myth for a major portion of their value. It’s not just telling a new story about Luke that is at issue, it is the creation of new characters and their designation as Star Wars characters. In the current context of publishing and retailing, it damages The Catcher in the Rye’s potential place in school adoption programs across the country if we permit others to add to the canon or to create confusion as to what should be in the canon.

The current system of publishing allows the good to rise and to be licensed and exploited to its fullest.  The bad will go out of print, where the rights will revert and eventually become public domain. Try to find Looking Backward in any Barnes & Noble book store today. The author made lots of money and the book was a bestseller, but most of the general public today couldn’t tell you who Edward Bellamy was.  Four hundred years from now, The Catcher in the Rye will still be considered a classic and taught alongside Don Quixote.  Allow Salinger the protection to insure that he receives the compensation for his work that Cervantes never had. Once Salinger has been dead long enough, and only then, the work will revert to public domain.

Until the current publishing model ceases to exist (and if you look at the music industry, it may not be long) there is no need to change what has worked just fine. No great work of creation is being inhibited or restrained by the copyright laws. The author of a sequel to The Catcher in the Rye had only monetary gain as a goal. If he has some great scholarly or critical contribution to make, there already exist fair use precedents that adequately allow for his ideas to be communicated. The desire to communicate these ideas as an organic continuation of Salinger’s work is the basest form of usury and as far removed from a gift as one can get.

Highlights of the issue include:

* Jessica Litman’s wonderful and innovative Nies lecture on current copyright reform;

*  Interesting articles by Vanessa Rollins, Amy Tindall, Dmitriy Vinarov (and me, but I am not wearing that hat today!) on diverse subjects such as trademark fair use, the impact of the Seventh Amendment on patent litigation, and the re-thinking of patent fraud enforcement in light of current congressional reform;

*  Our initial entry in the Emerging Scholars Series, which highlights works of intellectual property scholars in the first three years of their career, by Marketa Trimble, on cross border injunctions in the United States; and

* Our Annual Intellectual Property Law Review Banquet Speech, by the General Counsel of the Subway Advertising Trust Fund, Mary Jane Saunders, on her practitioner’s life in copyright.

In particular, I want to highlight the scholarship of two our students—Renee Metzler and Kevin Rizzuto—who in their comments, undertook innovative scholarship on grace periods in patent law as well as an empirical look at fixing continuation application at the United States Patent and Trademark Office.

I look forward to the work of incoming Board in the new school year!

But Bellamy’s case is also an atypical case. As I said, I’ve read Looking Backward, and the actual fiction in it seems almost beside the point; even more than most science fiction, it’s really a political tract in novel’s clothing. That makes it more prone to criticism and commentary in the form of follow-on works than most other novels would be. In other words, I think cases like Looking Backward should be handled by an exception to the general rule against unauthorized sequels (fair use), not by abolishing the general rule altogether.

Once you move away from clear cases like Looking Backward, the line between sequels that primarily comment and sequels that primarily exploit becomes really hard to draw. And courts have tried to cram commentary cases into the “parody” category, for reasons that escape me. That means that fair use, which is often not easy to predict, may be particularly unclear for this class of cases. Salinger might be a case that’s close to the line. (It would depend on what’s in both works, neither of which I’ve read.) But I can imagine much easier cases that argue in favor of the general rule.

Suppose there is no copyright protection against anything except verbatim (or near-verbatim) copies. It’s 1995, and J.K. Rowling is shopping around her manuscript for Harry Potter and the Philosopher’s Stone, saying she envisions a series of seven books if the publisher is interested. She sends the manuscript to Bloomsbury Publishing; but they say they are not interested. However, that’s not quite true. They are very interested in publishing the Harry Potter series; they are convinced it will sell well. They just don’t want Rowling to be the author. So they call in one of their favorite children’s authors, hand him the manuscript, and say, “Write seven of these, one for each year of Harry Potter’s experiences at Hogwarts, using the same characters and locations; just don’t use any of the events depicted in the manuscript.” And he does, and it sells like gangbusters, and is made into multimillion-dollar movies. Rowling never gets a penny.

Shouldn’t Rowling have a legal right to stop this? Copyright exists in part so that copyright owners will feel free to distribute their works with a minimum of other, burdensome protections, such as confidentiality agreements or eyes-only review. And even those protections wouldn’t work against a rival, bigger publisher that gets a hold of a work with small distribution and floods the market with sequels. No author or artist would be signed to multi-work deals in such circumstances; and to the extent the author wanted to continue spelling out her vision, her leverage in future negotiations would be vastly decreased.

In addition, if all that matters is literal copying, it’s not clear what becomes of movie rights and other adaptations of works, which are often far from literal depictions. The Harry Potter movies are notoriously close to the text in order to satisfy the rabid fan base of the books, but take other movie adaptations, such as Total Recall, which departs widely from the original short story. (The original short story, if I recall correctly, had whales being essential to the survival of the Earth somehow, à la Star Trek IV; and nothing about Mars.) Should Carolco have had to pay Phillip K. Dick to make Total Recall?

I think so. There’s no perfect place to draw the line. But it seems to me that encouraging artists to continue exploring the universes they created is the right policy.

Looking Backward is the story of Julian West, a man who falls asleep in 1887 at a time of great industrial strife and who wakes up in the year 2000 when the problems of industrialism have been solved by a collectivist government that manages all industrial production for the benefit of society as a whole.  At the time of the book’s publication, Bellamy was a 38-year old writer and one-time lawyer from western Massachusetts.  Looking Backward quickly turned out to be one of the best-selling books written in the United States in the nineteenth century, selling several hundred thousand copies in the years immediately following its publication.  It was translated into dozens of different languages and was also a publishing sensation in Europe.

The novel also prompted an international debate over both Bellamy’s vision of the future and his contemporary political views. 

(Bellamy supported the Populist Party in 1890, and many so-called “Nationalist Clubs” were established to advance his ideas.)  In addition, novels by other writers continuing the story of Julian West in the twenty-first century began to appear almost immediately. 

At least six “sequels” were published in the United States in 1890 alone:  John Bachelder, A. D. 2050: Electrical Development at Atlantis; Donald McMartin, A Leap into the Future, or How Things Will Be: A Romance of the Year 2000;Richard C. Michaelis, Looking Farther Forward; W. W. Saterlee, Looking Backward And What I Saw; C. H. Stone, One of Berrian’s Novels [Berrian is a novelist of the future in Looking Backward]; and Arthur Dudley Vinton, Looking Further Backward.

Some of these sequels — the ones by McMartin and Stone, for example — embraced Bellamy’s vision of the future and embellished the favorable depiction of life in socialistic 2000.  The other sequels cited sought to paint Bellamy’s vision of the future as a dystopian nightmare.   

Additional sequels by other writers were a fixture of the next two decades.  Ludwig A. Geissler’s, Looking Beyond: A Sequel to “Looking Backward” by Edward Bellamy, and an Answer to “Looking Further Forward” by Richard Michaelis (1891) was a sequel to a sequel.  In Geissler’s story, the unappealing aspects of Bellamy’s year 2000 reported in Michaelis’ book are revealed to be nothing more than occurrences in one of Julian West’s bad dreams. The collectivist future was in fact a utopia, and its shortcomings were only imagined.  By the end of the novel, the technologically advanced Martians have decided to abandon their previous policy of ignoring the Earthlings because they now believe that they can learn lessons from their planetary neighbors.

Other Looking Backward sequels included Conrad Wilbrandt’s Mr. East’s Experiences in Mr. Bellamy’s World (1891, and published the previous year in German in Germany); J. W. Roberts, Looking Within: The Misleading Tendencies of “Looking Backward” Made Manifest (1893); Rabbi Solomon Schindler, Young West: A Sequel to Edward Bellamy’s Celebrated Novel “Looking Backward”(1894); an anonymously published British version, My Afterdream: A Sequel to the Late Mr. Edward Bellamy’s Looking Backward (1900); and Harry W. Hillman, Looking Forward: The Phenomenal Progress of Electricity in 1912 (1906), the latter a pro-Bellamy novel that reveals that mass electrification is the key to a peaceful, collectivist future. According to literary historian Krisham Kuman, at least sixty-two novels based on Looking Backward were published in the United States between 1888 and 1900.

All of the sequel writers made use of Looking Backward’s story line, and most employed Bellamy’s main characters: Julian West, the man from 1887, Dr. Leete, the twentieth-century scientist who awakens West and serves as his guide to the future, and Edith Leete, the doctor’s beautiful daughter with whom West falls in love (and who turns out to be the great-grand-daughter of the fiancé that he left back in 1887).  As far as I can determine, none secured a license to do so from Bellamy.

Bellamy himself re-entered the fray in 1897 with his own sequel to Looking Backward, entitled Equality, in which he addressed many of the issues raised by the authors of the less than sympathetic sequels, including the future of education and women’s rights.  Unfortunately, Bellamy’s own sequel was not nearly as successful as the previous volume, and he died of tuberculosis the next year at the age of 48.

Although the pace slowed in the twentieth century, there were almost one hundred  Looking Backward  sequels, prequels, and re-imaginings published after 1900, apparently culminating in the off-beat Edward Bellamy Writes Again, a 1997 novel by New Age Christian writer Joseph R. Myers who sought to combine the insights of Bellamy with those of the American psychic Edgar Casey.  For a more detailed discussion of the history of Looking Backward and its sequels, one can consult Justin Nordstrom, “Looking Backward’s Utopian Sequels, Fictional Dialogues in Gilded Age American Thought,” Utopian Studies, Vol. 18 (2007) and  Krishan Kuman, Utopia and Anti-Utopia in Modern Times (1997), and the works cited therein.

The copyright point here is that the ability to use Bellamy’s story line and characters made it possible to have a rich ongoing debate in the world of fiction over the merits of Bellamy’s vision of the future. Had Bellamy tried to control his characters Julian West and Edith Leete in the same manner that J. K. Rowling has controlled Harry Potter and Hermione Granger, or J. D. Salinger wishes to control Holden Caulfield, the intellectual life of late nineteenth- and early twentieth-century America would have been much less rich. 

I’m not sure to what extent the Copyright Act of 1870 (in force when Looking Backward was published) protected literary characters.  Even if it did provide protection, Bellamy would have been unlikely to have used it to suppress the publication of the many sequels to his work.  As someone more interested in a better world than his own financial enrichment, he was no doubt delighted that his novel had inspired so many of his supporters and his critics to pick up their pens and continue his story.  He certainly made no effort to prevent their publication.

Legal protection against verbatim copying of the text was enough for Edward Bellamy; I don’t see why it shouldn’t be enough for Miguel de Cervantes and J.D. Salinger as well.

However, I also want to offer a contrary view on a couple of points that Ed raises. First, Ed concludes that copyright’s commercialization of creative works is a problem. One solution, Ed proposes, is to eliminate copyright protection for literary characters. I disagree with both sides of this equation. There’s an emerging problem with copyright law, but it’s not commercialization of creativity. Commercialization of creativity is the entire reason copyright law exists. And eliminating copyright protection for sequels across the board would create far more problems than it would solve.

First, the nature of the problem. As Ed explains, there’s a tradeoff involved in the copyright system. One of the purposes of copyright (some would say the only purpose) is to incentivize the creation of new works. Copyright does this by creating a property right in the works that result. There are some costs, however. One cost is that there will be some works that would have been created and distributed without any copyright protection at all, and yet public access to those works may be restricted. And for those works that would not have been created or distributed but for copyright or some other means of public support, there’s an offset against the benefit—namely, that not all uses of the work will be possible for the duration of the copyright (which is now extremely long).

Ed views the costs of this tradeoff as particularly high. He believes that “[e]very act of creation should be viewed as a gift from one person to all people.” In essence, then, copyright makes us pay for gifts. “It is only if we view the act of creation as a ’sale’ from the author to the rest of us that it makes sense to allow the author to place conditions on the use of his creation.” That’s true. It’s also the entire point of having copyright in the first place. The copyright system rejects the notion that every act of creation is a gift. It creates a market for acts of creation in order to allow large numbers of small benefactors to pay for works ex post as opposed to ex ante. This system might seem onerous now, but it’s worth comparing it to the system it replaced: support for artists from wealthy patrons. A legal system that gives the option of support from a broader array of people allows a greater number and diversity of expensive works to be created.

Of course, this doesn’t tell us where to draw the line between acts that infringe on the owner’s copyright and acts that don’t, and Ed is not alone in proposing that the line should be drawn particularly close to verbatim copying. But the idea that filthy lucre somehow sullies the creative enterprise doesn’t get us all the way there.

Nor do I think Ed’s proposed solution is workable. Character copyright is an incredibly vexing issue. Copyright is supposed to vest in works, and characters are not works, they are pieces of works—sometimes pieces of several works in which the character has subtly evolved from one work to the next. When confronted by one of these multi-work characters, it’s difficult to say what exactly is being protected, which has perhaps led courts to essentially throw up their hands when considering such questions. It has also, I think, led Congress to shy away from allowing the first versions of any modern cultural icons from entering the public domain. No one knows what would happen.

But the Salinger case is not just about the use of a single character in a new work, it’s about a sequel—a classic example of a derivative work. (That’s assuming it’s not a parody, in which case it would probably be a fair use.) The question here is much simpler than the extent to which characters should be separately protected. The question is whether there should be any exclusive right to prepare derivative works at all.

It’s pretty clear that the ability to control sequels and adaptations is part of the incentive package for modern creators of works. Hollywood studios somewhat notoriously look for, at least in certain genres, scripts that will generate a whole series of films rather than just one. Many authors intend to write an entire series of books, or sell the film or television rights, or both. J.K. Rowling was in part spurred on to complete the first Harry Potter because she knew she had six more behind it if it did well. Songwriters expect revenues from anyone who records their song, not just the first person.

Of course, to some extent this is self-reinforcing. Authors expect these revenues today in part because they’ve gotten these revenues in the past. It’s worth noting that patents have a different system: a patent owner does not own all follow-on inventions. Copyright’s different take on follow-on works I think reflects a recognition that the authors of fictional works create not simply single works, but entire universes. Copyright over sequels and adaptations is part of the reward for creating an attractive universe in the first place. Works without their own universes, such as music, databases, or histories, enjoy much less expansive derivative works rights. Your history of the First Battle of Bull Run gives you no rights to a history of the Second Battle of Bull Run.

This policy of awarding exclusive rights in follow-on works to authors actually works to the advantage of smaller authors and distributors. Without it, larger players could simply wait to see what books or movies seemed to do well in small markets, then flood much larger markets with sequels and adaptations. Indeed, they would have an incentive to do that rather than develop or buy their own works; in essence, small players would wind up doing free market-testing. That’s hardly fair.

It’s true that J.D. Salinger is unlikely to be hurt in this way from “J.D. California’s” sequel. No one is likely to consider the sequel authoritative in such a way that it would compete with an actual Salinger sequel. Which leads to another point: this case is an odd one for defending the derivative works right, because Salinger is hardly a typical author. Salinger seems to be fighting not to preserve his ability to write a sequel, but to preserve the option of having no sequel at all. But the justification for derivative works rights is that most authors are not going to be like Salinger. Most are going to write sequels, or at the very least authorize others to write sequels, when their universes catch on. Sure, there’s a risk of curmudgeons like Salinger, but it’s a low risk, one worth bearing in order to keep the rule (exclusive rights in derivative works) relatively simple.

That’s not to say there is no problem with modern copyright law. But it’s not commodification or the expansion of copyright by large media companies into fair use. Some prominent copyright critics share Ed’s concern that the creativity of ordinary individuals is somehow stifling the creativity of ordinary individuals. But I think the evidence is to the contrary. There’s an explosion online and offline of users making their own web pages, videos, recordings, poems, games, fiction, artwork, and what have you, and distributing it to anyone who’s interested. I think this points at what the problem is: it’s not expansion, it’s collapse. The boundary between individual users and professional publishers has crumbled, forcing both together like some madcap variation on the old Reese’s Peanut Butter Cup commercials. (”Your individual expression is in my exclusive rights! Your exclusive rights are in my individual expression!”) The copyright universe is imploding. The solution will no doubt involve some reconceptualization of copyright law. But simply paring back on owners’ rights won’t do the trick.

Some observers of the case have focused on its unusual grant of the plaintiff’s request for an injunction — this is a rare instance of U.S. law allowing a prior restraint on publication.  Other observers have debated the intersection of First Amendment rights and copyright protections implicated by the lawsuit.  In contrast, when I heard about the case, my thoughts turned to Don Quixote.

 Through end of the sixteenth century and into the beginning of the seventeenth century, the appropriation of characters and plots from earlier authors was a common literary practice.  In England, Shakespeare wrote plays that retold stories that had been told by other playwrights, and other authors in turn recycled Shakespeare’s plots.  Several different versions of Hamlet entertained Elizabethan audiences, although I believe that Shakespeare’s is the only version that survives to our day.

At the same time, in Spain, multiple authors were publishing books that detailed the adventures of the same characters.  Particularly popular were books about Tirant Lo Blanch, a brave knight who rescued fair maidens and battled horrible beasts.  There was no legal concept of ownership of this character in Spain, just as in England there was no concept that Shakespeare “owned” the character of Hamlet.

The first copyright laws date only to 1518, and they took the form of a monopoly that granted exclusive rights to a printer to publish a particular text.  It appears that copyright law was invented as a way of protecting the nascent printing industry.  It originally provided no legal protection to authors at all.  However, that would soon change.

 The novel Don Quixote was published in 1605 by Miguel Cervantes.  It introduced two iconic characters: a comical old man, who thinks himself a chivalrous knight errant, and his humble sidekick Sancho Panza.  It also slyly critiqued a social order in Spain that was dominated by both unproductive nobles and a repressive Catholic clergy.  The book was a huge success, and ten years later, in 1615, Cervantes published Don Quixote Part Two (thus proving that Hollywood did not invent the sequel).

One of the most famous parts of Don Quixote Part Two is its prologue, written in Cervantes’ own voice, which contains a vicious attack on a certain Alonso Fernandez de Avellaneda.  It seems that in the ten year interval between the publication of Parts One and Two, Avellaneda (which is probably a pseudonym) had published his own continuation of the adventures of Don Quixote and Sancho Panza.  In his prologue to Part Two, Cervantes insults Avellaneda without mercy, comparing him, for example, to a madman who commits imaginative and distasteful acts on the rear ends of dogs.

 The brutality of Cervantes’ verbal attack, and its literary quality, transformed Avellaneda’s own version of Don Quixote into an obscure historical footnote, forgotten by all but the most determined students of Spanish literature.  Ironically, a close reading of Avellaneda’s much ridiculed work demonstrates that it has real literary merit in its own right (as discussed here by my former Professor James Iffland of Boston University).  In particular, Avellanda’s version patronizes the character of Don Quixote and treats him as clearly insane, thus impliedly rehabilitating the portrayal of the existing social order in the first book and defending it from a damaging critic.  

Miguel Cervantes’ written attack on Avellanda’s use of his characters was unprecedented because it portrayed the derivative work as an intentional injury to the original author.  Moreover, the severity of Cervantes’ indignation suggested to the reading public that the harm Cervantes had suffered was very real.  People began to think about the rights of authors to control the use of their characters in a different way.  In 1709, the Statute of (Queen) Anne for the first time gave authors a legal monopoly on the reproduction of their work for a set period of years.  Thus was born modern copyright law.

So what is wrong with giving authors the right to control the use of their characters?  Copyright law is intended to provide an economic reward to the original creator, by granting him the legal right to prevent the use of his characters in ways that might diminish their value.  However, copyright law comes with an associated cost.  The fact that Colting’s novel may never be published in the United States illustrates that cost.  All of us bear the opportunity cost of all the derivative acts of creation that will never take place as a result of granting copyright protection to the original author.

It is true that some derivative uses of someone else’s characters are allowed, notwithstanding copyright protection.  Parodies and critical commentaries using established characters are permitted under the First Amendment.  However, this seems like an almost arbitrary exception to the original creator’s exclusive right to control his characters.  Other derivative uses of an established character can enrich our common culture as much as a parody or a critical analysis.

Why allow someone else to write a parody of The Catcher in the Rye, but prohibit a Holden Caufield sequel?  The sequel might be puerile trash, but it just might be a masterpiece in its own right.  Why not allow a third author to write a Holden Caufield opera?  Or a ballet?  I doubt that people would stop reading The Catcher in the Rye.  In fact, the sales of Salinger’s novel might increase.

One answer is that it is unfair for others to use Mr. Salinger’s character in order to make a profit for themselves.  But existing law allows some exceptions for parodies and critical commentaries that can earn a profit for their authors.  In addition, the law now extends the life of copyright protection beyond the life of the creator.  In light of this fact, it is difficult to argue that the protection of the creator’s exclusive ability to enjoy the monetary benefits flowing from his creation is the primary concern of the law.  

Every act of creation should be viewed as a gift from one person to all people.  Should J.D. Salinger have the right to gift our culture with an iconic character, and at the same time claim the ability to dictate how this gift can be used?  Even if his gift is misused or abused by others, Salinger has no moral basis to complain.  Arnold Weinstein, a professor of comparative literature at Brown University, was quoted as follows in a Wall Street Journal article about the case:

 The concept of authorship as a controlling authority is intellectually bogus.  Literature constantly reworks older things – authors send their characters out into the world.

It is only if we view the act of creation as a “sale” from the author to the rest of us that it makes sense to allow the author to place conditions on the use of his creation.

This is the crux of the problem.  Over time, the existence of copyright law has commodified the act of creation.  It is no coincidence that this process began in 1518 with the technological innovation of the printing press.  The commodification process accelerates with each new technological advance.

In our digital age, every consumer can purchase and enjoy a vast universe of cultural artifacts at the press of a button.  However, rarely do we spend any of our time engaged in the act of creation itself.  Most of us spend little or no time each day playing music, telling stories, or painting pictures.  Why should we bother, when it is far more convenient to purchase the creations of others?  The irony is that we are increasingly surrounded by our culture, but at the same time we are increasingly alienated from it.  By treating the creative act as a commodity, copyright law has facilitated this trend.

Today, our children are taught beginning in elementary school that it is illegal to use cartoon characters without first obtaining a license.  When my son was in first grade, I had to assure him that it was not against the law for him to draw pictures of Spider Man with his crayons.  I have no doubt that the holders of copyright in our country, the large media corporations that benefit from the commodification process, are behind the effort to encourage teachers to adopt a curriculum that exposes our children to the fundamentals of copyright law.

We have forgotten that our culture belongs to all of us.  We mistakenly think of “culture” in historical terms, and confine it to dusty books and ancient musical recordings that have “aged out” of copyright protection.  In reality, a culture is how a civilization defines itself in the present day.  We define our place in our contemporary world through stories, song and dance.

The key to profit in a service economy is to convince the public to pay for something that they used to expect to get for free.  We didn’t always pay such a high price for our culture.  The “fair use doctrine” once permitted a broad use of another author’s creations so long as no monetary benefit was received.  The initial success of Salinger’s lawsuit demonstrates how narrow the fair use doctrine has become.  This exception to copyright protection has been under a sustained assault by copyright holders for decades.  Like the western prairie before it, the “public domain” is slowly being fenced in and parceled out to the highest bidder.     

It doesn’t have to be this way.  We should eliminate copyright protection for literary characters.  If J.D. Salinger feels that his beloved character has been ill treated by others, then he can always respond in the same way as Miquel Cervantes: he can publish his own sequel.  Like Cervantes, Salinger can even include a vituperative attack on the upstart artist who has offended his creation.

If the public sees no merit in Colting’s creation, then Colting’s book will soon be forgotten.  However, let the rest of us decide for ourselves whether there is real merit in Colting’s creation.  Copyright law, as it is now structured, allows one artist to deny each and every one of us the possibility of other worthy works of art.

Tafas, later joined by GlaxoSmithKline, challenged the validity of the new regulations, and the United States District Court for the Eastern District of Virginina granted summery judgment for him (and GSK), enjoining the USPTO from implementing and enforcing the new regulations.  Much to the dismay of most patent practitioners, on appeal, the Court of Appeals for the Federal Circuit affirmed, in part, and reversed, in part, that decision.  The CAFC only agreed with the district court that Rule 78 was invalid and remanded the case to the district court for further consideration of the remaining issues.  Then, on July 6, 2009, the CAFC granted Taffas and GSK’s petition for rehearing en banc.

Well, all of the parties involved now want to wait and see what will happen since David Kappos has been nominated as Under Secretary of Commerce for Intellectual Property and Director of the USPTO.  If Kappos is confirmed after his Senate Judiciary Committee nomination hearing, which is scheduled to begin tomorrow, July 29, 2009, then Kappos could moot the entire case by rescinding the rules at issue.

Accordingly, last Friday, July 24, 2009, in their Joint Consent Motion for a Stay of En Banc Proceedings, all of the parties in the case asked the court to stay all en banc proceedings, including briefing and oral arguments, until 60 days after Kappos’s confirmation.  Hopefully, Kappos is confirmed; hopefully, he rescinds the new rules; and, hopefully, he does so quickly.

What I find intriguing about these responses is that they are all based on analogizing Kindle e-books to physical books located in your house. 

It’s often argued that copyright disputes are primarily, perhaps entirely, due to the fact that large media companies refuse to admit it’s a changed world out there; they just need to adapt. But I think controversies like the one over the Kindle indicate that this problem is universal. Everyone is calibrating their rights by looking backwards; no one likes the future.

David Pogue at the New York Times summed up the conceptual landscape nicely:

As one of my readers noted, it’s like Barnes & Noble sneaking into our homes in the middle of the night, taking some books that we’ve been reading off our nightstands, and leaving us a check on the coffee table.

Jack Balkin adopts this perspective as well. Balkin notes that “[f]or centuries, . . . owning books came with certain rights, including the right to keep what we purchase and to use it, mark it up, and sell it in any way we like.” Among other things, “[b]ecause [an ordinary book] is a physical copy, nobody would think that the publisher of the book would have the rights to enter your house and remove the book.” But “Amazon’s Kindle system upends all of these expectations.”

If Kindle ebooks are basically the same as physical books, then destroying them would seem to violate core expectations we have about retailers and books. But why is that the right analogy? Why aren’t they like websites? If Amazon was providing access to “1984″ on its servers instead of on the Kindle, and suddenly without warning deleted them off the servers, it is doubtful there would be much of any controversy here. That’s true even if the access was supposed to be permanent and was in return for payment of a one-time fee. The only issue would be Amazon’s abruptness in canceling access without sufficient warning to anyone who had taken notes that might be deleted. (Let me be clear: if I was one of those users, I’d be extremely annoyed at how Amazon handles copyright clearance problems.)

The core difference between a website and a Kindle ebook is where we think the object is located. We think of the Kindle as like a book, located in the device in our hands. We think of the website as being located on the server. But this just begs the question: we think of the Kindle as the same as a book because we think of the Kindle as the same as a book. In fact, copies of the information in both cases is located in multiple places: on the Kindle, and on Amazon’s servers; on the web servers, and a temporary cache on the user’s own computer. Physical location is not by itself determinative any more.

Many of the commentators on the Kindle issue have darkly noted the threat ebooks pose to the first-sale doctrine in copyright law—the right of purchasers of a copy of a work to resell that copy without permission from the copyright owner. Works like Kindle ebooks or video games that are tethered to a particular user can’t be sold without the permission of the tethering service.  But the idea that the first sale doctrine is important right worth saving in the first place may be another example of reflexively viewing the future in terms of the past. First sale makes sense in a world of physical books and copies–how else are you going to clear your house of junk you don’t need if you can’t sell it? Even throwing it away could be viewed as a transfer of ownership, and therefore a distribution. Requiring clearances for such sales impinges upon personal space with pointless transaction costs.

But not only is first sale harder with tethered digital works, it’s not clear what the point is. If you’re worried about hard drive space, you can just delete it. The only thing supporting first sale in such a situation is the fact that users have had first sale rights for time immemorial.

Balkin, Zittrain, Pogue’s readers, large media companies, legislators, and others are therefore correct: the networked digital world threatens to upend everything we take for granted about creative expression in the physical world. No one has a monopoly on surprise.

Based on the economic conditions of the last couple of years, I am amazed that companies are willing to allow others to freely practice inventions which would otherwise generate licensing revenues.  However, some companies have done exactly that.

Obviously, the member companies are not pledging patents that cover core technologies that embody their flagship products.  However, the member companies are all patent savvy.  They invested resources to file applications covering the inventions and pursue the applications through prosecution and patent grant, whereby it is reasonable to assume that the companies found at least some value in the inventions.

The original member companies are IBM, Nokia, Pitney Bowes, and Sony, which collectively pledged 30 patents into the Eco-Patent Commons, at its inception.  Since then, five other companies have joined by pledging at least one patent and there are 95 patents held within the Eco-Patent Commons.

It will be interesting to see if the Eco-Patent Commons continues its growth in the near future.  Or, perhaps increases in “green technology” implementation will prove that these patents can be monetized and entice companies to aggressively seek potential licensees.

Copyrights in India? Cool! But hang on a second—what’s that about “brands”?

Ah, I see, it’s another journalist confused about the difference between patents, copyright, and trademarks. (The title of this post is the punchline of a joke told by Paul Goldstein about this problem.) It matters, to me at least, because copyright has enough of a public image problem without getting blamed for patent and trademark controversies as well.

This seemed very similar to an issue in copyright law that I touched on at the end of my very long post yesterday. One of the troubling aspects of many photograph copyright cases is the amount of randomness that often enters into photographs and videos. Copyright protects the expression of ideas. To qualify as expression, the material has to convey some idea or purpose to its audience; it has to mean. Randomness, however, seems to undermine meaning. Mannie Garcia unintentionally expressed the tension nicely when he described how he captured his now-famous photograph of Obama: “And then it happened: Boom, I was there, I was ready.” To the extent the “boom” outweighs the “I was ready,” it also seems to outweigh meaning. Abraham Zapruder did not intend to convey any message at all about the Kennedy assassination; he was simply there recording when it happened.

There may be another parallel between copyright and sentencing. There are recent copyright decisions expressing the view that an author can go too far in the other direction. To the extent that a set of data is rigidly determined, not by randomness, but by a set of rules or external constraints, courts have held that such data fails to “mean” as well, and again is not copyrightable. This would appear to mirror the recent turn in the constitutionality of sentencing. Random sentences are bad; but so are sentences in which all discretion is removed from the sentencing judge. The Supreme Court has never put it this way, to my limited knowledge, but the intuition might be that such sentences also fail to mean anything; they are not expressions of society’s determination of the seriousness of that particular offense. Meaning, like perhaps all of life, appears to lie in the border between order and chaos.

[Update (7/23): The court granted Garcia's motion to intervene, which was unopposed. AP's and Fairey's answers are due Aug. 14, fact discovery will continue until October, and the next status conference in the case will be Nov. 20, meaning we will most likely not get a summary judgement hearing until 2010.]

With the crunch at the end of the semester, my series on the Obama Hope poster case petered out unexpectedly. Among the events I noted silently to myself in the interim were Fairey’s answer to AP’s counterclaims and a trio of NPR interviews on the case with Shepard Fairey, Mannie Garcia, and law professor Greg Lastowka.

There’s nothing like a fresh filing to get one out of the doldrums, however. On Thursday, the other shoe in this case dropped when Mannie Garcia, the photographer who shot the Obama photograph at issue, filed a motion to intervene in the case as a defendant. (Quick, Civ Pro students: what rule?) Garcia’s proposed answer, counterclaims, and cross-claims assert that the photograph is copyrightable, that Garcia, not AP,  is the copyright owner in the photograph, and that Fairey infringed his copyright. I’ll focus on two interesting aspects of the filing after the jump.

To get a couple of procedural issues out of the way, Garcia’s motion will very likely be granted. He claims ownership of the photo, and this litigation will, among other things, determine AP’s ownership rights in the photo and whether Fairey infringed it. Not only is he a mandatory intervenor under Fed.R.Civ.P. 24(a), but he’s likely a necessary party under Rule 19(a)(1)(B)(i). Also, he’s fulfilled the requirements of 17 U.S.C. § 411 by registering the copyright in his photo (Proposed Ans. ¶ 53). Garcia must have paid the $685 expedite fee for his registration because it was approved in at most 2 months, remarkable speed given the Copyright Office’s current backlog. However, Garcia mistakenly asserts that he is entitled to statutory damages and attorneys fees if he wins on his infringement claim against Fairey. (Proposed Ans. ¶ 93.) Unfortunately not, because the infringement “commenced after first publication of the work and before the effective date of its registration,” unless he can somehow argue that AP’s group registration should suffice, even though it was apparently for a compilation.

Now for the two substantive points I want to focus on. First, as I’ve discussed in a prior post, the ownership issue between Garcia and AP is interesting in its own right. To sum up that earlier post, it seems that Garcia has a pretty good case that he was not an AP employee at the time he took the photo. If not, then the only way that AP could own the copyright is if Garcia assigned it to them in writing. Alternatively, the AP could try to argue that Garcia’s photos were “specially ordered or commissioned for use as a contribution to a collective work,” the “collective work” being the batch of photos that the AP registered the Obama photo as part of. (See Peter Hirtle’s comment here.) But that would still require a signed, written agreement “that the work shall be considered a work made for hire.” Garcia claims in his pleading that he was not an employee and “never agreed to assign his copyright rights in his photographs to the AP.” (Proposed Ans. ¶ 56.) Unless AP can produce some sort of writing, I think they may be in trouble.

Second, Garcia has shed a little further light on what’s copyrightable about his photo. In his counter- and cross-claims, Garcia expressly adopts the AP’s statement of the creative elements of his photograph: (1) his selection of that specific moment to take the photo; (2) his choice of lens and lighting; and (3) his composition of the photograph. (Proposed Ans. ¶ 58, quoting AP Ans. ¶ 58.) Garcia himself breaks this down into a few more elements: “angle, focus, pose, lighting, depth of field and his selection of the proper facial expression, manner and demeanor of his subject.” (Id. ¶ 82.) In his NPR interview, Garcia describes the moment (starting at 6:25):

I’m on my knees, I’m down low, and I’m just trying to make a nice, clean headshot. And I’m waiting, I’m looking at the eyes, I’m sure there’s focus, and I want the background to be a little bit soft, I wanted a shallow depth of field, I’m looking, I’m waiting, I’m waiting for him to turn his head a little bit, I’m just patiently making a few pictures here and there, and I’m just looking for a moment when I think is right and I’m taking some images as I’m going along. And then it happened: Boom, I was there, I was ready.

There’s enough creative choices here, it seems to me, to make the photograph copyrightable. Garcia chose where to place himself—the “angle”—although there were likely constraints on that. He chose which lens to use, shutter speed, aperture, and possibly whether or not to use a flash—all of which affected the “lighting” and framing of the shot. (Some commentators have correctly pointed out that the room lighting was not under Garcia’s control, but the amount of light he let into the camera certainly was.) He framed the shot vertically around Obama’s head and shoulders, and gave it a shallow depth of field to mute the background (which was, in part, an American flag—which was possibly intentional on Garcia’s part).

There’s a couple of other significant elements of choice. First, Garcia chose the moment to take the photograph. His interview with Terry Gross indicates that he was waiting for just such a moment to occur when he snapped the shot. This involved a little more discretion than taking as many photos as possible. As I’ve learned to my chagrin, every taken photo is a missed opportunity to take the shot a split-second later. There’s therefore some amount of judgement involved in deciding exactly when to take the photo. (Or “make” the photograph, as Garcia puts it.)

Second, Garcia made another selection later that day. In reviewing the 275 photos Garcia took at the press briefing, he chose 16 to send to the AP. I.e., he selected the photo above and 15 others as being the best of the lot. (Aside: as Garcia explains in the NPR interview, this is why he didn’t recognize his own photo: he takes thousands of pictures a year.) Prior caselaw in the Second Circuit suggests that these selections alone may be enough for at least a thin copyright, see, e.g., Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991); Key Publications, Inc. v. Chinatown Today Publ’g Enters., Inc., 945 F.2d 509 (2d Cir. 1991), and Garcia’s other choices add to the creativity involved. Among the judgement that went into his selection was one of whether to include Obama at all, since, as Garcia notes in his interview (4:56), it was 2006 and the assignment was actually to cover George Clooney, not Barack Obama.

The complaint played down the significance of Garcia’s choices, portraying him as little more than a picture-taking machine. According to complaint, Fairey took Garcia’s “literal depiction” that merely “document[ed] the events that took place at the National Press Club that day in April 2006″ and “transformed” it into a “stunning” image the purpose of which was ” to inspire, convince and convey the power of Obama’s ideals, as well as his potential as a leader.” (Compl. ¶ 18.) None of those qualities, in other words, are present in the original photo. But this seems clearly wrong, and I don’t think the plaintiffs will win in their attempt to portray the Garcia photograph as minimally copyrightable. As a professional photographer, Garcia no doubt understood the meaning of his choices. Being down below a subject makes him or her seem more significant and regal; the fuzzy flag background added a suggestion of patriotism; Obama’s slightly upward gaze and three-quarters profile reflected thoughtfulness rather than inattention. With the exception of the effects added by the poster-like coloration in the Fairey poster, the same qualities are present in both images.

There’s obviously also some amount of serendipity in Garcia’s photo, as captured by the conclusion of the quotation above: “Boom, I was there, I was ready.” “I was there, I was ready,” expresses the fact that, like a poker player, Garcia had deliberately put himself in a position to capture a good shot (in his judgement) if one occurred. But the “boom” expresses the fact that events were not fully under his control, as is true of most photography. This has troubled photograph copyrights since the beginning; how much of the photograph is due to the photographer, and how much to the subject or chance events? Abraham Zapruder set up a primitive movie camera to film a presidential motorcade, had trouble tracking the shot, and did not even realize until later that he had captured Kennedy’s assassination. Ansel Adams was driving down a desert road and happened to see a great shot out the window. He couldn’t find his exposure meter in time, and guessed. He tried to take a second exposure, but within a few seconds the sun had moved on and the lighting changed. The value of Zapruder’s film seems almost entirely due to the event, and very little to do with his choices. It seems to lie at the periphery of copyrightable materials, if it is copyrightable at all. But Adams’ famous “Moonrise” photograph was also significantly affected by chance, yet it is probably within the core of copyrightable materials. Where is Garcia’s photograph? It seems to me that it is closer to Adams than Zapruder.

Other posts in this series:

• Why did Fairey file in the Southern District of New York?
• Does AP actually own the copyright in the Garcia photo?
• Is Fairey’s suit doomed to fail before it even gets off the ground?
• What’s the “original” photo?
• What does the complaint say about the poster creation process?
• The AP strikes back
• What’s a “visual reference”?
• Mannie Garcia joins the suit —This post
• TK: What if anything is copyrightable about the photo? Does the poster infringe on that?
• TK: Is the poster subject to a fair use defense?

Although others have made this sort of argument before (e.g., copyright giant Alan Latman in a 1960 legislative study, and Mike Madison in a 2004 article), Samuelson is cutting deeply against the grain of modern copyright scholarship in her conclusion. As she notes, the opinion is nearly unanimous among modern copyright scholars (including, I confess, me) that fair use is profoundly unpredictable, a crap shoot. As Larry Lessig has pithily quipped, “Fair use is the right to hire a lawyer.”

For me, one of the most interesting questions that arises from Samuelson’s article is, if she’s right, how could so many copyright scholars have gotten it wrong? And what does that have to do with teaching Civ Pro?

Samuelson doesn’t really address the question of where everyone else has gone wrong. But she drops a hint in noting with approval Barton Beebe’s recent conclusion: “[M]uch of our conventional wisdom about fair use case law, deduced as it has been from the leading cases, is wrong.” [2543, emphasis added] By “leading cases” Barton and Samuelson mean the Supreme Court’s decisions on fair use in cases such as Harper & Row and the Betamax case. [2542 n.29] In other words, if all you focus on is the Supreme Court, and not the mass of lower-court decisions, fair use looks pretty confusing.

This exactly mirrors a concern I have when I teach personal jurisdiction in Civil Procedure. The personal jurisdiction section of most casebooks is essentially a tour of the development of Supreme Court caselaw on the issue since 1877. I’ve been frustrated, and the students have been too, by this focus: essentially, the Supreme Court hasn’t really been able to spell out a coherent story about when personal jurisdiction exists for about a century now. Cases seem to veer crazily from one case to the next. What I think the students miss during this review of the caselaw is the sense that, when you get down to the circuit court level, personal jurisdiction analysis is much easier. There is more caselaw that fills in the gaps, and it often provides clearer tests that annotate the delphic pronouncements from the Supreme Court.

The best example of this that leaps to mind is the Supreme Court’s somewhat anomalous decision in Calder v. Jones, in which the Court seemed to abandon International Shoe and rant for a couple of pages about why National Enquirer employees should be held to answer for libel in California. (The Supreme Court was on an anti-libel-defendant rampage: Keeton v. Hustler was decided the same day.) Several circuits have broken the Court’s short but rambling opinion down into a 3-part test, and have added some useful direction on when each of the parts is satisfied. In other words, like Samuelson has concluded about fair use, I think personal jurisdiction clusters into more predictable patterns when you look at a more routine, “normal science” array of cases.

Unfortunately, there simply isn’t time in Civil Procedure to delve into each sub-issue in that amount of detail. It’s occurred to me that it might be possible, however, to teach at least the personal jurisdiction portion of Civ Pro by focusing on the law of just one state and circuit—e.g., Wisconsin and the Seventh Circuit, where we happen to be located. I already do this to some extent, but there are a couple of concerns that I have about skipping the Supreme Court opinions entirely. One is the amount of time it would take to assemble a whole chapter on personal jurisdiction from scratch. But the other is that such an approach might give rise to a different problem, missing the forest for the trees. For the moment, I’m sticking with the strategy of teaching the “magic words” of personal jurisdiction, and just assuring my students that when they get into practice and have to research the law of any given jurisdiction, the truth will be out there.

In Kappos’s capacity as VP and assistant general counsel for IP at IBM, his views on many substantive patent law issues are well known.  For example, he is not a fan of pure business method patents (preferring, for example, the machine-or-transformation test).  He also generally supports harmonization efforts, including “opposition-like” post-grant review procedures.  His opinions on such issues have been praised by many and criticized by some.  Interestingly, some have also criticized his nomination for not emphasizing his potential to fix various problems of the USPTO, but instead focusing on his knowledge of the patent system in general. 

I, on the other hand, am relieved that his nomination has been surrounded by discussions of his general knowledge of the patent system. 

If the opposite were true and Kappos’s nomination was overwhelmed by discussions of plans that detailed exactly how he will fix the USPTO, I would be greatly concerned.  How is he supposed to know how to suitably resolve these issues before having an intimate knowledge of the organization from within?

Notwithstanding this, there are certainly clues regarding what aspects or procedures of the USPTO that Kappos may tinker with or try to fix.  For example, like the rest of the patent bar, Kappos finds the backlog of patent applications and corresponding pendency time before first actions on the merits to be unacceptably long.  He has publicly voiced that the USPTO desperately needs an information technology system overhaul to help increase examining efficiency and (hopefully) reduce the backlog and pendency times.  Increasing USPTO efficiency alone would be a welcome change. 

I am very much looking forward to having a Director with substantial practical knowledge of, and appreciation for, the patent system.

Irene’s post

What interests me about copyright is not copyright law in itself, but copyright law as a subject. Over the past few years, I’ve come to realize that my interest in copyright law and Internet law predates law school. It’s part of my general interest in ideological transitions, and in particular turbulent ideological transitions. I’m interested in copyright law for the same reason I’m interested in vigilantes and alterations in foreign policy and systems accidents.

All of these phenomena result from sudden shifts in the contextual terrain that expose the limits of the prevailing mental maps—the ideological frameworks—of one or more groups in society. Conflicts arise that can’t be resolved according to the old rules. Groups are brought into conflict that previously were kept separate.

This is what is going on in copyright law right now, although hopefully with less catastrophic consequences than a plane crash or lynch mob. The technology of publishing has changed drastically in the last 30 years, collapsing the boundary between two separate spheres: publishers and consumers. Now one set of rules and norms must apply to everyone. No one, in my opinion, has really adjusted to this new terrain. And, like most cases of boundary collapse, the friction between the two formerly separate spheres is generating a considerable amount of heat. Representatives of both sides believe that their most cherished liberties are in peril.

That’s what interests me about copyright law—it’s a conflict brought on by a sudden transition, one symptom of which is doomsday rhetoric seemingly out of all proportion to the stakes involved. And that is one salient feature of the copyright debates occurring  now. Some of my current work, which I’ll discuss in future posts, attempts to figure out why.

This “great” debate of the Eighties morphed, though, in the Nineties, into a more interesting debate about, strangely enough, the performance artist’s relationship to copyright. Michael Jackson often sought to own publication rights to songs and maintained that as a source of revenue. Famously, in the mid-1980s, Jackson purchased half of the Beatles catalog for 47 million; he later sold that property to Sony for 90 million, and indeed at his death, that catalog alone is potentially worth 500 million.  He also owned the separate catalog of his work. He did not exercise, however, his performance rights as extensively. Notably, at the time of his death, the actual funding for his contract tour was provided by outside investors.

Prince, on the other hand, fought a very public battle (remember his five-year career as The Artist Formerly Known as Prince?) with Warner Brothers to be released from both his publishing and recording contracts. After the end of that fight, he moved onto innovative ways of distributing his work so as to build an audience for his touring (which he views as his primary way to make money). Prince also began to exercise much more control over his image (did you know that the name Prince is now trademarked?) Indeed, the “Prince” model–increasing independence from record labels with one’s primary source of income deriving from concerts and other uses of their image–is often suggested as a way for artists to command income in the era of digital downloads.

Publish or Perform? The question as we look today at Michael’s death: did Prince win after all?

And don’t get me started on Madonna and The Right of Publicity!

IP is about logos, trademarks, advertising, and product distribution, and thus I constantly can relate to it when I go shopping, work in my house, drive to work, or just watch TV. IP is about technology, any kind of it, from pharmaceuticals to electronics, so I think of it when I use any equipment, think (or listen to my husband or my dad suggesting) how to improve machinery, take a pill, or just wonder why drugs and health care are so expensive in this country or what we can do about it. IP also is about authors and creative work, so I think of it when I read books or watch videos, go to a museum, or wonder which design could be the best for a new jewelry or dress. And IP is about so much more than that; no matter what you are looking at or thinking of, there is something that relates to IP.

But, as I said, IP is not just about cakes, dresses, movies, and video-games. It can be about life saving drugs, new varieties of seeds that can be pest resistant and could help fight famine around the world, cheaper and better communication for people in the globe, etc. In other words, it can be “light,” and fun (and some days I just need that), but it also very serious, and incredibly important to make a difference in many areas of business and society in general (and we all want to make a difference, or to be part of it, right?). IP is also about policy and theory, one of my hidden passions, but it can become one of the most technical and detailed laws I have ever practiced (want to know whether the book “Gone With The Wind” is in the public domain? The answer will be long while we navigate all the extensions, renewals, etc., of copyright law in the past century, and even many great IP lawyers can get lost in this sea of details).

In sum, IP is, and has, something for every one, the scientist, the artist, the business man, and the average person on the street. So, no matter how you look at it, there will be always an aspect of your every day life that has something to do with IP . . . and that is why I like it so much!