Media Wonk: Will Sotomayor vote for cert. in Cablevision?

Back in January, before President Obama had actually taken office, the Supreme Court asked the Department of Justice to weigh in on whether it should grant cert. in the Cablevision case, in which major copyright owners sought to enjoin the MSO's proposed "remote-storage DVR." Almost six months later, we're still waiting.

Writing on his "Media Wonk" site, Paul Sweeting wonders about the impact of Sonia Sotomayor's nomination to the Court:

[T]wo of the nine justices, Chief Justice John Roberts and Justice Samuel Alito, recused themselves from the case for reasons unstated but presumably because of stock ownership in one or more of the parties.

That left seven justices to decide the case should the court decide to hear it. It takes four votes to grant cert. in a case, and with only seven justices participating it may have been hard to come up with the four votes needed. Thus, the delaying tactic of seeking input from the solicitor general (who, ironically was herself one of the four final candidates for the open seat on the court and probably would have had to recuse herself as well).

As it happens, the justice Sotomayor has been nominated to replace, David Souter, is a noted and self-professed Luddite, who still writes his opinions long hand and has a strong aversion to gadgetry of all kinds and who may not have been keen to take the Cablevision case, especially as both the district and appellate courts got pretty deep into the technical weeds in their opinions as to how the remote DVR system functions.

Just speculating here, but I wonder if Sotomayor, who is clearly comfortable in cyberspace, might provide another critical vote for cert. in Cablevision.

I have no idea whether Sweeting is right. Sotomayor was on the Second Circuit when it decided Cablevision (though she wasn't on the panel). If she disagreed with the decision so strongly, wouldn't she have raised a stink then, calling for en banc and writing a dissent from the denial? And Souter may be a technophobe, but it's not as though he's totally incapable of writing opinions that involve technology. See, e.g., Grokster.

(Disclosure: I worked on the Cablevision case while an attorney at Fox.)

WSJ: IP 'a major focus for the high court.' Seriously?

This Wall Street Journal article plows over some familiar ground in recounting Sonia Sotomayor's experience as an IP litigator and a judge adjudicating copyright and trademark disputes. It also includes the following sentence:

Intellectual-property law has emerged as a major focus for the high court amid growing concern about the scope and practical application of intellectual-property protections.

IP law is a "major focus for the high court"? Seriously? Is there even a shred of evidence to support that statement? The Court hears about 70 cases per term. In recent years, one or maybe two of those have been IP cases. I call that a "tiny fraction" -- not a "major focus."

Sotomayor: copyright statutory damages must be sufficient to deter infringement

Shourin Sen of Exclusive Rights is following through on his promise to post all of Supreme Court nominee Sonia Sotomayor's IP opinions, further confirming that the former copyright and trademark litigator has a deep understanding of the issues in this field. I've skimmed the copyright cases Sen has posted so far, and I'm impressed by her careful and thorough approach, as well as her fidelity to the statute and case law.

A few interesting tidbits:

In Top Rank, Inc. v. Allerton Lounge, Inc., 1998 WL 35152791 (S.D.N.Y. 1998) then-District Judge Sotomayor rejected the magistrate judge's report and recommendations on statutory damages as insufficent, stressing the need for deterrence:

The Court agrees with the Magistrate Judge that the facts of this case do not warrant a high end statutory damage award. A wilful infringement, which the Magistrate Judge found, combined with a wilful default, however, warrant an award greater and more significant than one which corresponds so closely to an estimated loss to the plaintiff. The Court agrees with the defendants that statutory damages must be sufficient enough to deter future infringements and should not be calibrated to favor a defendant by merely awarding minimum estimated losses to a plaintiff.

In Peer Int'l. Corp. v. Luna Records, Inc., 887 F.Supp. 560 (S.D.N.Y. 1996), Judge Sotomayor imposed liability on the owner of the defendant corporation -- personally:

[2] Individuals who have the right and ability to supervise infringing copyright activities and a direct financial interest in such activities are not shielded from liability even though they have no actual knowledge of the infringement. The Second Circuit has held that the imposition of vicarious liability, even in the absence of actual knowledge, on those who fail to supervise the conduct of primary infringers better effectuates the policies of federal copyright law. Gershwin, 443 F.2d at 1162; Shapiro, 316 F.2d at 307.

[3] The statements Abel De Luna made while being deposed indicate that he is vicariously liable, jointly and severally with Luna, for any copyright infringement committed by Luna. He is president of Luna, and he concedes that he “determine[s] what is done and what isn't done in the corporation.” De Luna Dep. at 12, 21, 150. He is also Luna's sole shareholder and director. De Luna Dep. at 12-13, 21. Moreover, Abel De Luna admits that he did nothing to stop the distribution of the compositions at issue after he was served with the Complaint in this action. De Luna Dep. at 66-68, 154-55. I therefore find that Abel De Luna is individually liable for Luna's copyright infringement because he had the right and ability to supervise Luna's activities and a financial interest in the exploitation of the copyrighted materials.

And again she recognized that statutory damages are about deterrence -- not only compensation for actual loss:

Congress's provision allowing for a greater award where willful infringements are found, however, indicates that statutory damages serve the dual purposes of the Copyright Act-compensation and deterrence.
***
Because of defendant Abel De Luna's willful infringement of plaintiffs' copyrights and his continued infringement after the initiation of this action, I find that substantial statutory damages are warranted to deter him from future misconduct.

I look forward to reading the rest of Judge Sotomayor's copyright opinions. So far, I like what I see.

Mark Steyn: 'The Limits of Sotomayorian Empathy'; is Tasini nominee's achilles heel?

The right hasn't quite settled on their line of attack against Supreme Court nominee Sonia Sotomayor. Could it be her views on...copyright? Mark Steyn thinks so:

The Limits of Sotomayorian Empathy [Mark Steyn]

I was interested to see that Sonia Sotomayor was the judge in the New York Times v. Tasini case, a case close to my heart....

Judge Sotomayor cheerfully sided with the Times, a ruling that (as appears to be not uncommon with this jurist) was subsequently overturned at the Supreme Court — 7-2 (with David Souter being among the seven). Despite being a "wise Latina" enjoying all the benefits of "the richness of her experiences," she was sadly unable to empathize with the impoverished writers in their garrets eking out a thin crust from their freelance contributions to the appallingly low-paying Sulzberger GloboCorp Inc.

... [A]lmost all "diversity" issues have a "property rights" component. I don't think Justice Sotomayor will be any great friend of the latter. And, alas, there will now be no David Souter to overturn her decisions.

For the record, I don't think it's quite fair to judge Judge Sotomayor's copyright record based solely on her Tasini decision. She has demonstrated an admirable zeal in addressing infringement, and her Seinfeld Aptitude Test opinion evidences a true respect for copyright owners' rights. I'm told Judge Sotomayor has about 73 other copyright decisions. I look forward to reading them all.

Sonia Sotomayor, destroyer of infringing goods

The Wall Street Journal's Washington Wire blog has the scoop:

By the mid-1980s, [Sotomayor's law] firm [Pavia & Harcourt] had accumulated thousands of the illegal knockoffs [of Fendi handbags] through seizures, and was looking for a way to show the U.S. public that the brand name was being protected.

With Sotomayor in charge, the firm decided in 1986 to stage a bonfire – to be known as the “Fendi Burn” – in the parking lot of the Tavern on the Green restaurant. There was a catch, however: the New York Fire Department refused to permit it.

So the firm decided on the next best thing, crushing the items in garbage trucks, in an event that came to be known as the “Fendi Crush.”

“In the presence of the press…we threw masses and masses of handbags, shoes, and other items into these garbage trucks,” [Managing Partner George] Pavia recalled today. “It was the pinnacle of our achievement, and Sonia was the principal doer.”

Read the whole thing for some fascinating detail on Sotomayor's previous life as an IP litigator.

Judge Sotomayor on the 'fact/expression dichotomy' and fair use: good news for copyright owners

Thanks to THR, Esq., I am reminded that Judge Sonia Sotomayor wrote at least one significant copyright opinion while on the District Court [UPDATE: in addition to Tasini]. And, while we shouldn't draw too many conclusions from just one decision, after re-reading her opinion in Castle Rock Entertainment v. Carol Publishing Group, Inc., 955 F.Supp. 260, 274 (S.D.N.Y.1997), aff'd, 150 F.3d 152 (2d. Cir. 1998). I think it's fair to say that copyright owners should have nothing to fear from, and should probably be quite pleased with, President Obama's pick. Let's take a closer look.

The case involved The Seinfeld Aptitude Test ("SAT"), a trivia book consisting of 643 trivia questions testing readers' knowledge of the events and characters depicted in the TV show Seinfeld. SAT's publisher, Carol, never got permission from Castle Rock, which owns the copyright in the show. Castle Rock sued for copyright infringement and related Lanham Act/unfair competition claims. Judge Sotomayor's opinion addressed the parties' cross motions for summary judgment on the copyright and unfair competition claims, which she said "raise a variety of difficult and interesting questions concerning the proper scope of copyright protection as it extends to popular television programming."

Judge Sotomayor first addressed the threshhold issue of whether Carol copied protected expression. Carol argued that it only copied "uncopyrightable facts about the Seinfeld show." But Judge Sotomayor rejected that theory, I think correctly:

SAT does not pose "factual" questions about the Seinfeld show; it does not ask who acts in the program, who directs or produces the show, how many seasons it has run, etc. Instead, SAT poses questions about the events depicted during episodes of the Seinfeld show. The facts depicted in a Seinfeld episode, however, are quite unlike the facts depicted in a biography, historical text, or compilation. Seinfeld is fiction; both the “facts” in the various Seinfeld episodes, and the expression of those facts, are plaintiffs creation. Thus, while defendants' book does not report plot developments and digest programs, as in Twin Peaks, SAT is devoted to questions concerning creative components of Seinfeld. In other words, by copying "facts" that plaintiff invented, SAT "appropriate[s] [plaintiffs] original contributions."

Next, Judge Sotomayor found willfulness in Carol's infringement:

The parties have not briefed the question of damages, and the Court is hesitant to make a finding of willfulness outside the context of the damages question which it implicates. Nevertheless, the record provides clear evidence, at a minimum, of defendants' reckless disregard for the possibility that their conduct amounted to copyright infringement. See Twin Peaks, 996 F.2d at 1382. First, defendants were on notice that Seinfeld is a protected work: each televised episode commences with a copyright notice.... Also, all the defendants are sophisticated with respect to such matters. Defendant Golub is an attorney. Mr. Shragis, Carol's publisher, testified that his company has had experience with the copyright laws, and that he is familiar with the requirements of those laws.... Finally, Carol continued to publish and distribute SAT after receiving actual notice from plaintiff demanding that Carol cease and desist publication.... In other words, defendants continued in their infringement even “after receiving a specific warning.” See Twin Peaks, 996 F.2d at 1382.

Judge Sotomayor next conducted a thorough and sophisticated fair use analysis. On the first factor, she found that SAT was transformative -- but that that was not the end of the story. Judge Sotomayor smartly explained that a work can be "transformative," but still be an infringing derivative work:

The Court's finding that SAT is a transformative work, though important, is not dispositive in defendant's favor. Indeed, it is a basic axiom of copyright law that the unauthorized production of derivative works can give rise to a successful claim of infringement. See 1 Nimmer § 3.06, at 3-34.4; see also Rogers v. Koons, 751 F.Supp. 474 (S.D.N.Y.1990) (rejecting fair use claim raised by defendant charged with unauthorized creation of a derivative work), aff'd 960 F.2d 301 (2d Cir.), cert. denied, 506 U.S. 934 (1992). And a derivative work, by definition, transforms an original. See17 U.S.C. § 101 (defining a “derivative work” as one which is “based upon,” but which “recast[s], transform [s], or adapt[s],” an original); see also Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir.1980) (explaining that in order to be classified as a derivative, a work must contain some “substantial, not merely trivial, originality”). Thus, to hold that the transformative nature of a work automatically shields it from a successful claim would be to reject an unassailable proposition-i.e., that the unauthorized production of a derivative can support a claim for infringement. The question of whether a work is transformative must therefore be most decisive when answered in the negative. If a work is not transformative, “fair use should perhaps be rejected without further inquiry into the other factors.” Pierre N. Leval, Toward a Fair Use Standard, 103 Harv.L.Rev. 1105, 1116 (1990). Where, as here, a work is transformative, the crux of the fair use analysis remains: the Court must proceed with a careful consideration of the remaining three factors, while merely granting defendants an advantage at the outset.

(footnote omitted).

On the second factor, she easily found that the work was fictional, and on the third, that although the SAT took a relatively small quantitative portion of Seinfeld, it "appropriates essential elements of Seinfeld," thus supporting a finding for the plaintiff on that factor.

On the fourth factor, Judge Sotomayor correctly honed in on the proper inquiry:

[T]he Court must consider not only whether SAT detracts from interest in Seinfeld, or even whether SAT occupies markets that plaintiff intends to enter; the analysis is whether SAT occupies derivative markets that plaintiff may potentially enter.

And she determined that the market for trivia books about Seinfeld is properly the exclusive domain of Seinfeld's copyright owner -- even though it had not (at least not yet) actually produced or licensed any such books:

In a manner of speaking, plaintiff has exercised its control over derivative markets for Seinfeld products, if only by its decision to refrain from inundating those markets. Indeed, artists express themselves not merely by deciding what to create from their original work, but by deciding what not to create as well. Cf. Harper & Row, 471 U.S. at 559 (“freedom of thought and expression ‘includes both the right to speak freely and the right to refrain from speaking at all.’ ”) (citations omitted). It would therefor not serve the ends of the Copyright Act-i.e., to advance the arts-if artists were denied their monopoly over derivative versions of their creative works merely because they made the artistic decision not to saturate those markets with variations of their original. Where nothing in the nature of criticism or parody is at issue, this creative choice must be respected.

Summing it all up, Judge Sotomayor concluded:

Though there are numerous competing considerations which make this decision a difficult one, the Court is persuaded that, on balance, SAT does not represent a fair use of Seinfeld. Only one of the four statutory factors favors defendant, and then, only by a generous understanding of what it means for a work to be “transformative.” Plaintiff prevails with respect to each of the remaining three factors: Seinfeld is a work of fiction, and such works are accorded special status in copyright law; SAT draws upon “essential” elements of Seinfeld, and it draws upon little else; and, most importantly, SAT occupies a market for derivatives which plaintiff-whatever it decides-must properly be left to control. In short, SAT does not make fair use of Seinfeld, and plaintiff must accordingly be granted summary judgment on its claim of copyright infringement. See Wright, 953 F.2d at 740 (“a party need not ‘shut-out’ her opponent on the four factor tally to prevail.”).

On appeal, the Second Circuit affirmed -- though it disagreed with Judge Sotomayor's conclusion that SAT was indeed "transformative."

All in all, Judge Sotomayor's Castle Rock opinion is very solid, and demonstrates a deep understanding of copyright. She may be on the left politically, but nothing in this opinion suggests she is on the copyleft.

Obama picks IP litigator for High Court; only 8 justices for Tasini redux?

National Journal's Tech Daily Dose has the scoop. In sum, from 1984-1992 Judge Sotomayor was an associate and then partner at Pavia & Harcourt, a NY boutique that represents rights owners:

We also develop and manage anti-counterfeiting programs and litigate matters involving famous trademarks and copyrighted works and e-commerce, including designs applied to industrial manufacturing and fashion. Our attorneys have developed and managed enforcement programs at the national and international levels for trademark and copyright owners in fields ranging from video games to high fashion clothing and accessories. We have successfully brought civil actions against counterfeiters and infringers of trademarks and copyrights, we have executed civil seizure orders throughout the United States and we have obtained judgments for damages and injunctive relief.

Language like that isn't going to thrill my friends on the copyleft. According to her official bio, Sotomayor's "focus at the firm was on intellectual property issues and international litigation and arbitration of commercial and commodity export trading cases."

The Dose also notes that Sotomayor handled the Tasini case while on the District Court, ruling in 1997 that newspapers and electronic databases were within their rights under 17 U.S.C. § 201(c) to reproduce freelancers' articles. Judge Sotomayor's opinion was reversed by the Second Circuit, and the Supreme Court later upheld the court of appeals' decision. This history has implications should Sotomayor be confirmed. The Tasini case is headed back to the Supreme Court for a second time in the fall (now as Reed Elvesier, et al., v. Muchnick, et al.), and I believe Sotomayor's recusal would be required, leaving only 8 justices to decide the case. [UPDATE: a knowledgeable lawyer tells me the cases are actually separate, and thinks Sotomayor would not be required to recuse.]

If anyone has additional information about Sotomayor's experience at Pavia & Harcourt, or about her copyright opinions, please respond in the comments or email me at copyrightsandcampaigns [at] gmail.com.