Sunday, May 31, 2009

RIAA GC: Nesson seeks to 'gut the copyright laws,' stage 'three-ring circus,' foment 'revolution'

Ars Technica, which recently gave space to Harvard Law School professor Charles Nesson to take on the record labels' litigation campaign against individual peer-to-peer users, has now done the same for RIAA general counsel Steven Marks. Marks uses most of his piece to describe the general state of the music industry and its transition to Web-based distribution, but does also directly address Nesson's defense of accused infringer Joel Tenenbaum:
[T]hat’s exactly what the Tenenbaum case is: a crusade waged by a Harvard professor to gut the copyright laws that protect creators and his attempt to transform a courtroom into a "three-ring circus." Professor Nesson seeks a revolution, not a resolution or a real defense of his client. For a music community severely harmed by illegal music downloading, including thousands of working class folks out of jobs, this is no ivory tower exercise.

Even against a backdrop of an entire community suffering—hundreds of artists dropped from rosters, billions of dollars and thousands of jobs lost during the last ten years—we have strived to implement our legal campaign in a fair and reasonable manner. Professor Nesson likes to throw out astronomical damages awards but his theories are detached from reality. We’ve never once sought maximum damages in our court cases against individual downloaders. We let courts and juries decide the appropriate dollar amount for any case that reaches that far stage.

The circus is set to open July 20 in Boston.

Friday, May 29, 2009

DOJ to Supreme Court: Don't take Cablevision case

More than five months after the Supreme Court asked the Department of Justice to weigh in on whether whether it should grant cert. in the Cablevision "remote-storage DVR" case, DoJ has finally given its answer: No.

In a 22-page brief whose lead author is Solicitor General Elena Kagan, DoJ argues that none of the the Second Circuit's "specific holdings in this case conflicts with any holding of this Court or another court of appeals," and thus the chief justification for a Supreme Court hearing -- a circuit split -- is not present:
Network-based technologies for copying and replaying television programming raise potentially significant questions, but this case does not provide a suitable occasion for this Court to address them.
The brief also notes that the parties' agreement to take both indirect liability and fair use off the table "distorts the questions that remain and would prevent the Court from seeing whole the fundamental controversy in this case," making it an "unsuitable vehicle for clarifying the applicable legal framework."

On the merits, the brief gives a somewhat tepid endorsement of the Second Circuit's opinion, which reversed the district court's grant of summary judgment in favor of the copyright owner plaintiffs. It describes the court of appeals' decision as "reasonable" and "narrow." And it criticizes the Second Circuit's analysis of the plaintiffs' public performance claim as "problematic":
Some language in the court of appeals’ opinion could be read to suggest that a performance is not made available “to the public” unless more than one person is capable of receiving a particular transmission. See, e.g., Pet. App. 36a (“under the transmit clause, we must examine the potential audience of a given transmission by an alleged infringer to determine whether that transmission is ‘to the public.’ ”); id. at 41a (“we find that the transmit clause directs us to identify the potential audience of a given transmission”). Such a construction could threaten to undermine copyright protection in circumstances far beyond those presented here, including with respect to VOD services or situations in which a party streams copyrighted material on an individualized basis over the Internet.
Of course, DoJ does not get the last word; its brief is only a recommendation, which the Supreme Court is under no obligation to follow. That said, the Court does accord considerable respect to the solicitor general's opinions, and the chances of cert. being granted -- a long-shot in any case -- just dropped dramatically.

One last thing: the brief notes, "The Assistant Attorney General is recused in this case." I believe this is a reference to Tony West, the AAG in charge of the Civil Division. West is a former partner and Morrison & Foerster who in the 90s worked at Main Justice and as an AUSA in San Francisco. I don't know why his recusal was required here.

UPDATE: Mary Jacoby of Main Justice got to the bottom of West's recusal:
Justice Department spokesman Charles Miller confirmed that West is the official who recused himself. West is a former partner at Morrison & Foerster, which represented The National Music Publishers’ Association. The music publishing group filed an amicus brief in support of review, Miller said. He added that West wasn’t involved in the litigation.
Disclosure: I worked on the Cablevision case when I was an attorney at Fox.

(h/t LA Times Technology Blog)

Court: no ruling on constitutionality of statutory damages until decision is 'unavoidable'

In Sony BMG v. Cloud, one of the record labels' cases against an individual alleged p2p infringer, the defendant -- just like Joel Tenenbaum -- moved to dismiss the plaintiffs' claim for statutory damages, on the grounds that the maximum of $150,000 per work is constitutionally excessive. The labels and the government opposed.

Today the court denied the motion to dismiss, while declining to rule on the constitutional challenge to statutory damages, "under the doctrine of constitutional avoidance" (citing Spector Motor Co. v. McLaughlin, 321 U.S. 101, 105 (1944) ("If there is one doctrine more deeply rooted than any other in the process of constitutional adjudication, it is that we ought not to pass on questions of constitutionality...unless such adjudication is unavoidable.")).

I agree with the court's decision. As of today, any damages award -- let alone an unconstitutionally excessive one -- is a mere hypothetical possibility. If there is an eventual verdict for the plaintiffs and a subsequent award of statutory damages, the defendant could then move to reduce the damages as constitutionally excessive. And even if the defendant is correct that the BMW/State Farm punitive damages factors apply to statutory damages (a hotly contested issue), the court now has no facts before it to evaluate for alleged reprehensibility. In run-of-the-mill torts cases, courts apply
BMW/State Farm only after trial (and a damages award); I don't see why it should be any different in a copyright case (assuming BMW/State Farm applies at all).

(h/t Recording Industry vs. The People)

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.)

C-SPAN: use of clip in political ad OK

The Conservative Party of Canada is running an ad that includes a 9-second clip from C-SPAN that depicts Liberal Party leader Michael Ignatieff. The Liberals tattled to C-SPAN. C-SPAN's reaction:

[General Counsel Bruce] Collins said the network never gave the Tories permission to use the clip, but doesn’t see any point in pursuing a claim.

“There's nothing legal to do with it, Collins said. “Given the way video is used throughout the world, with YouTube, it would be fruitless.”

Collins says he watched the ad and believes it falls within the fair-use provisions in copyright law because of the short length and subject matter.

“It's the highest form of speech -- political speech,” he said, adding there would be no economic loss to C-SPAN resulting from the ad.

Good for them.

Thursday, May 28, 2009

Why copyright protection is politically popular

Spend a few minutes on the Internet, and you'd think copyright is about as popular as the plague. Back in the real world, however, the PRO-IP Act passed the House last year 410-11, and by unanimous consent in the Senate. Why the disconnect? There are many reasons, chief among them that legislators simply don't buy the copyleft's argument that piracy is no big deal.

This Financial Times article is a reminder of another: having management and labor on the same side of an issue creates an almost unstoppable force:
Unions on both sides of the Atlantic are joining forces with media companies to lobby for tougher action against piracy, as rising unemployment levels focus their attention on the threat to members’ jobs and incomes from copyright breaches.

Representatives from media unions, including the the Federation of Entertainment Unions and the Broadcasting, Entertainment, Cinematograph and Theatre Union (Bectu), joined rights owners at a London conference this month to co-ordinate their approach to the government’s Digital Britain report on the future of the UK’s creative industries.


“It has become crystal clear that the issue of fighting piracy and counterfeiting is a jobs issue and is about the economy,” said Rick Cotton, general counsel of NBC Universal. The co-ordination with unions has been “a tremendous multiplier” of media companies’ lobbying efforts, he said.

“Politicians like to see management and labour together so they don’t have to pick sides,” said Mike Mathis, a 20-year Teamsters union veteran now running an independent labour consultancy.

Solidarity forever....

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."

My Slate piece: 'Collusion Course: Does today's hush-hush meeting of newspaper executives violate antitrust law?'

I have a new piece in Slate discussing the antitrust implications of recent meetings of newspaper execs at which they discussed the possibility of charging for online content. A taste:
The newspaper world has temporarily diverted its gaze from its collective navel to Rosemont, Ill. That's where, reports James Warren in the Atlantic, top executives from major papers have gathered to plot the future of their business. Machers from, among others, the New York Times, Gannett, E.W. Scripps, Advance Publications, McClatchy, Hearst Newspapers, MediaNews Group, the Associated Press, Philadelphia Media Holdings, Lee Enterprises, and Freedom Communication Inc. were scheduled to gather for a "discreet" "discussion about content models," including the possibility of charging for Web content. This comes barely a month after a similar meeting in San Diego, where CEOs at the "Newspaper Association of America convention [held] a clandestine meeting to discuss, among other topics, whether and how to start charging readers to view articles and other content online."

Warren likens the Rosemont confab to the Yalta conference or, perhaps, the infamous 1957 mob summit in Apalachin, N.Y. But if the news honchos aren't very, very careful, the more apt analogy may be a 1994 meeting in a Hawaii hotel room at which representatives of agricultural-products giants gathered under the guise of a trade-association meeting to fix prices for a chemical called lysine—a story that ended up with federal criminal convictions and Archer Daniels Midland and others paying hundreds of millions of dollars in fines (not to mention a movie starring Matt Damon).
Go read the whole thing. And click on some ads, so they don't have to start charging for access (again).

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.

Tenenbaum trial set for July 20

It's going to be a very busy summer for the record labels -- and Team Tenenbaum.

Judge Nancy Gernter today issued an order setting the trial for accused peer-to-peer infringer Joel Tenenbaum for July 20 in Boston -- barely a month after the June 15 re-trial of Jammie Thomas-Rasset in Minneapolis. Judge Gertner made the July 20 date contingent on two things: 1) her granting Plaintiffs' Motion to Dismiss Counterclaims, thus "eliminating the need for additional discovery"; and 2) her denial or deferral until after trial of Defendant's constitutional challenge to the plaintiffs' claim for statutory damages. Those two issues will be considered at a hearing June 5 (this was the hearing that Tenenbaum sought unsuccessfully to have webcast).

This is reading tea leaves, but I think Judge Gertner is signaling here that she intends to dismiss Tenenbaum's counterclaims for abuse of process and to defer ruling on the constitutional challenge to statutory damages unless and until there is a plaintiffs' verdict and damages award to evaluate for alleged excessiveness. It is black letter law that courts should avoid ruling on constitutional issues unless and until necessary, and she can easily avoid ruling unless and until there is a statutory damages award staring her in the face. I also think she is signaling that she will not permit Tenenbaum to amend his answer so late in the game to add a fair use defense -- a defense that would be futile in any event.

Judge Gertner also set a deadline for summary judgment motions of June 23 and oppositions July 7 (there goes that lovely 4th of July weekend on the Cape!), though she suggested the parties may wish to wait: "Given the limited nature of this case, it may be appropriate for the parties to seek resolution of any legal issues at the time of trial, rather than before, pursuant to a Motion for Judgment as a Matter of Law under Fed. R. Civ. P. 50(a)."

With overlapping sets of attorneys on both the plaintiffs' and defendants' sides set for trials only a month apart, I would not be shocked if one or both sides moved for a continuance.

(h/t Recording Industry vs. The People)

I sure hope they have a good antitrust lawyer in the room

James Warren:

Shhhh. Newspaper publishers are quietly holding a very, very important conclave today. Will you soon be paying for online content?

Here's a story the newspaper industry's upper echelon apparently kept from its anxious newsrooms: A discreet Thursday meeting in Chicago about their future.

"Models to Monetize Content" is the subject of a gathering at a hotel which is actually located in drab and sterile suburban Rosemont, Illinois; slabs of concrete, exhibition halls and mostly chain restaurants, whose prime reason for being is O'Hare International Airport. It's perfect for quickie, in-and-out conclaves.

There's no mention on its website but the Newspaper Association of America, the industry trade group, has assembled top executives of the New York Times, Gannett, E. W. Scripps, Advance Publications, McClatchy, Hearst Newspapers, MediaNews Group, the Associated Press, Philadelphia Media Holdings, Lee Enterprises and Freedom Communication Inc., among more than two dozen in all. A longtime industry chum, consultant Barbara Cohen, "will facilitate the meeting."

Or if they can't afford a good lawyer, I suggest they at least take a few minutes to read this Powerpoint.

(h/t Romanesko)

Wednesday, May 27, 2009

Note to documentary makers

Be very, very careful not to depict someone you show on screen as an intravenous-drug-using gay man with HIV/AIDS -- unless you're really, really sure that he is. And don't expect California's anti-SLAPP statute to save you if you're wrong.

(h/t Loeb & Loeb)

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.

Merits briefs urge reversal of Second Circuit in Tasini follow-on; say Section 411(a) is 'mandatory but not jurisdictional'

Many thanks to Shourin Sen of Exclusive Rights, who has posted the petitioners' and respondents' merits briefs in Reed Elsevier, Inc. v. Muchnick, which is set for oral argument in the Supreme Court this fall. This is second time this case has been to the High Court. In the first, as New York Times v. Tasini, the Court held that newspapers and electronic databases were not entitled to reproduce freelancers' works under 17 U.S.C. § 201(c). The parties entered into a class action settlement, but the settlement was rejected by the Second Circuit, on the grounds that Article III courts lack jurisdiction to adjudicate claims involving unregistered works. The Second Circuit's decision rested on 17 U.S.C. § 411(a), which provides:
no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.
This is the odd case where the petitioners' and respondents' brief both argue for the same result (because both want the settlement to be approved). To keep things sporting, the Court appointed Ohio State University law professor Deborah Jones Merritt to argue the other side, i.e., that Section 411(a) is jurisdictional and the Second Circuit should be affirmed.

My prediction? I think the Supreme Court will accept the petitioners' argument that Section 411(a) is not jurisdictional, and will reverse the Second Circuit, thus paving the way for approval of the settlement. After all, in her Tasini opinion, Justice Ginsburg all but ordered the parties to go settle:
The parties (Authors and Publishers) may enter into an agreement allowing continued electronic reproduction of the Authors’ works; they, and if necessary the courts and Congress, may draw on numerous models for distributing copyrighted works and remunerating authors for their distribution.
Having urged settlement, I suspect the Court now feels obligated to find a way to make it happen.

Tuesday, May 26, 2009

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 "r
aise 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]

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Monday, May 25, 2009

Fisking Charlie Nesson: What about Joel?

Ars Technica has "offered Professor [Charles] Nesson the chance to lay out what's at stake" in the Joel Tenenbaum case "in his own words." I hereby offer myself the chance to fisk Professor Nesson's words, in my own. Here goes...
My client is Joel Tenenbaum, a 25-year old physics graduate student at Boston University, and he's being sued by the music companies for sharing seven songs back in 2003 using KaZaA, a file-sharing network comprised of millions of his peers doing likewise.
False. Tenenbaum is not being sued for "sharing seven songs." Rather, as the record label plaintiffs have said:
Plaintiffs sued Defendant based on substantial evidence that Defendant used the KaZaA file sharing program to upload (distribute) more than 800 sound recordings—including many of Plaintiffs’ copyrighted sound recordings—to potentially millions of other users on the file sharing network. Plaintiffs also allege that Defendant used KaZaA to download Plaintiffs’ copyrighted sound recordings from other KaZaA users.
(emphasis added); see also Complaint at Par. 11 (referring to hundreds of additional "Copyrighted Recordings" listed in Exhibit B). Plaintiffs have not indicated the number of songs on which they intend to seek damages at trial (or in a motion for summary judgment).
The case has probably spent more time being discussed among the public than it has spent before judges. And, quite frankly, that is the point.
I don't begrudge Professor Nesson and his team seeking publicity -- and I'm certainly one member of "the public" who has spent probably too much time "discuss[ing]" this case. But isn't "the point" of his representation supposed to be to get the best possible result for his client? Seems to me that would be achieved by negotiating as low a settlement as possible -- not by creating a world-famous martyr with a large judgment hanging over his head.
The Recording Industry Association of America (RIAA), which directs these lawsuits, will seek to prove that Joel downloaded those songs willfully and must therefore pay up to $1,050,000 to the record labels.
This sentence is carefully worded, but it certainly leaves the impression that the labels are seeking the maximum statutory damages of $150,000 per song. That is false. Here's what the labels themselves say:
Plaintiffs...have never sought $150,000 per sound recording in any P2P filesharing case against an individual, and it has been widely reported that they were, and remain, willing to settle this case for significantly less than the minimum statutory damages.
It's worth noting that in the first Jammie Thomas trial, the labels did not ask for a specific amount, instead leaving the award within the discretion of the jury (as bound by the statute). See Trial Transcript at 606. Plaintiffs' counsel has sworn under oath that they offered to settle the entire Tenenbaum case for $4,500, to which Tenenbaum countered with $3,000, and the labels made a "final offer" of $4,000. This should have settled a long time ago.
Joel has already been interrogated for nine hours straight in a forced deposition; has been made to endure the depositions of his mother, father, sister, and friends; and will be compelled to submit his current computer and his privacy to an "expert" of the RIAA's choosing so they can make a mirror image of the hard drive for forensic analysis.
This "interrogat[ion] in a "forced deposition" is the kind of deposition that goes on in probably thousands of law firm conference rooms every day. I've listened to just about all of it, and I got the distinct impression that Tenenbaum was enjoying himself as he attempted to outsmart the labels' lawyer and drag out the proceedings with condescending smarminess:
“It would help if your client just answered questions directly instead of saying ‘it’s a 3-by-5 white device that plays video’ instead of just saying ‘it’s an iPod,’” Matthew Oppenheim, a counsel for the recording industry, informed Nesson during a break in questioning well over an hour into the deposition. “Those sorts of games really draw these things out.”
No doubt it was unpleasant for Tenenbaum to have his friends and family deposed. But if he was so concerned about that, he could have stipulated to his own p2p activities, rather than have the labels' seek evidence through others. And as for his computer, it will be examined under a quite strict protective order, whose very purpose is to safeguard Tenenbaum's privileged and irrelevant files. Would he prefer to turn over the entire thing directly to the plaintiffs and their counsel, and let them search for the relevant material themselves?
Imagine a law which, in the name of deterrence, provides for a $750 fine [the lower threshold for statutory damages] for each mile-per-hour that a driver exceeds the speed limit, with the fine escalating to $150,000 per mile over the limit if the driver knew she was speeding.... Imagine that the fines are not publicized, and most drivers do not know they exist. Imagine that enforcement of the fines is put into the hands of a private, self-interested police force that has no political accountability, that can pursue any defendant it chooses at its own whim, that can accept or reject payoffs on the order of $3,000 to $7,000 in exchange for not prosecuting the tickets, and that pockets for itself all payoffs and fines.
I've already addressed the "$150,000" red herring. But a few other points: this is a civil case (as are the vast majority of all copyright cases in the US). Ignorance of the law (and I very much doubt Tenenbaum was ignorant of it) is no defense. The plaintiffs can't do any "enforcement" on their own. Like all civil plaintiffs, they must make their case to the court, and convince it that the law and facts support a judgment in their favor. And yes, they should be able to "pocket[]" any damages they are awarded, just like any other tort plaintiffs.

The intersection between technological norms and law that governs social norms is one of the most academically interesting and practically frustrating issues professionals have grappled with in a long time. Tenenbaum is representative of his born-digital generation in every way. A problematic tension remains between our antiquated copyright laws and the social reality of "digital natives," a term my colleagues John Palfrey and Urs Glasser coined to describe the generation that grew up immersed in digital technologies and for whom a life fully integrated with digital devices that are by design free and open is the norm.

Surely, just because the laws of copyright have not yet fully acknowledged and addressed the ubiquity by which protected information is readily—and freely—available on the Internet, does not make good law moot. But this case illustrates a civil sea change rooted in the transformative nature of technology, of code as law.

The idea of "code as law" is quite profound. I bet it would make for quite an interesting book -- perhaps even one dedicated to Professor Nesson....

Justice demands, however, that one man not be pilloried without the process due him as a civil right, without good counsel, and without the most rigorous proof that he has committed the wrongs alleged.

I think it's a good thing that Tenenbaum has counsel, and he has every right to make the plaintiffs prove their case. I do think it's fair to ask, however, whether Tenenbaum's counsel is serving his client -- or, rather, his cause. In this case, the two are not necessarily the same.

Many have argued that if we want to challenge the status quo, changing the law is better pursued via the legislature, not the courts. So why do we choose to fight in court when we could potentially affect policy in other ways? The answer is simple. We did not choose the courts as a venue; the RIAA did when it waged its massive litigation campaign.

True, Prof. Nesson did not choose this venue. But once in this venue, I think his attention should be focused on getting Joel Tenenbaum out of this jam -- not on a quixotic, and likely unsuccessful, attempt to change the law.

I believe [the RIAA] ... chose to abuse our legal process by using courtrooms and judges as small claims courts.

I don't believe the RIAA is "abus[ing] our legal process." But I do think Nesson has a point about small claims courts. There is no such thing as federal small claims court, and maybe there should be. I'm also intrigued by Prof. Mark Lemley's proposal for "some sort of quick, cheap arbitration system that enables copyright owners to get some limited relief against abusers of p2p systems." But for now, regular old federal court is all we've got.

Academics and professionals have described my style as unconventional and have accused me of creating an unnecessary circus around this case. But just as Joel is David in his battle against the recording industry's Goliath, so too am I, in the fight against traditional legal norms. Hordes of professors and professionals vehemently disagree with the position I take when it comes to "fair use" in copyright law. I have also raised more than a few eyebrows with my untraditional approaches in court and the openness on my blog and Twitter feed.

Don't stop tweeting -- please!

After all, David would never have beaten Goliath if he had not taken a chance with his slingshot while all Israel looked on.

I'm confused. Didn't we learn three paragraphs earlier that "Goliath defeats David every time"?

But ... every day we fight [] my students educate hundreds of individuals about the fundamental unfairness that underlies Joel's case. If I can teach my students to educate others about justice and fairness, then we are on the path to winning a much bigger battle.

But isn't the relevant question whether Professor Nesson is on the path to winning Joel Tenenbaum's case? Signs of that are sorely lacking.

Saturday, May 23, 2009

Must YouTube re-post videos following a counternotice?

Warning: this post will soon head deep, deep into the DMCA weeds. It may interest no one but me and the Masked Analyst. But here goes...

Here's the issue: if the subject of a DMCA takedown notice sends a counternotice, and the copyright owner declines to sue within the statutory 10-14-business-day window, do YouTube and similar hosts have a legal obligation to re-post the allegedly infringing material?

I think the answer is no. If YouTube prefers to permanently remove all videos subject to a takedown notice -- whether or not the copyright claim is valid or the poster submits a valid counternotice -- I believe it can do so without risk of liability.

Here's why: when we think of the DMCA safe harbors, we think of the safe harbors for the hosts or ISPs, i.e., defenses from infringement claims by copyright owners. But the DMCA counternotice provision, 17 U.S.C. § 512(g), is different. Section 512(g) provides a safe harbor from claims not from copyright owners, but from "subscribers," e.g., the people who post videos to YouTube. (I'm assuming arguendo that YouTube qualifies for the DMCA safe harbor, this minor matter notwithstanding.) Let's start with the statute (which is a true headache-inducer):
No liability for taking down generally.— Subject to paragraph (2), a service provider shall not be liable to any person for any claim based on the service provider’s good faith disabling of access to, or removal of, material or activity claimed to be infringing or based on facts or circumstances from which infringing activity is apparent, regardless of whether the material or activity is ultimately determined to be infringing.
Note that 512(g)(1) refers only to liability for "disabling of access to, or removal of, material." It's only the subscriber -- not the copyright owner -- who might be annoyed by the removal, and might potentially have a claim for which the host would desire a safe harbor. And if the statute isn't a model of clarity, the legislative history provides further support for my point. The House committee report (p. 59) provides:
In such instances, to retain the immunity set forth in new subsection ([g])(1) with respect to the subscriber whose content is taken down, the service provider must take three steps.
(My emphasis; the report refers to a version of the bill before Section (f) became (g).) The Senate committee report (p. 60) is in accord:
In such instances, to retain the immunity set forth in subsection ([g])(1) with respect to the subscriber whose content is taken down, the service provider is to follow up to three steps.
(emphasis added; same point re (f) and (g)). The statute goes on to set forth the steps that the host must take if it wants a safe harbor against a claim from a subscriber: 1) notify the subscriber of a takedown notice; 2) accept counternotices and forward them to the copyright owner and "and inform[] that person that it will replace the removed material or cease disabling access to it in 10 business days"; and 3) replace the material after 10-14 business days, unless the copyright owner sues in the meantime.

But remember: the host only needs a safe harbor from the subscriber if that subscriber would (absent the safe harbor) have some claim against the host. But what claim could a YouTube "subscriber" (really a misnomer, since users don't pay a dime) possibly have against YouTube for removal of a video, whether infringing or not? YouTube/Google has good lawyers, and they made sure that subscribers agree that YouTube can remove (and keep down) videos for pretty much any reason YouTube chooses:
YouTube expressly disclaims any and all liability in connection with User Submissions.... YouTube reserves the right to remove Content and User Submissions without prior notice.
Similar sites are even more explicit. Here's MySpace:
MySpace may reject, refuse to post or delete any Content for any or no reason, including Content that in the sole judgment of MySpace violates this Agreement or which may be offensive, illegal or violate the rights of any person or entity, or harm or threaten the safety of any person or entity.
(my emphasis). And Veoh:

Veoh reserves the right to suspend its performance of the User and +Video Content or any aspect thereof under these TOU at any time, without giving prior notice, for any act which Veoh, in its sole discretion, determines to be harmful to any end user of the Veoh Service, the Veoh Service itself or which Veoh determines in good faith violates or fails to comply with any applicable law or regulation. Veoh may, without notice to You, remove or block any Video Content from the Veoh Service.
I can imagine a hosting site that has a different sort of contract with its subscribers (particularly ones who pay), such that it might be in breach if it removes a subscriber's material and would face liability absent the safe harbor provided in Section 512(g). But a typical free-to-the-user UGC site like YouTube or MySpace has no need for the 512(g) safe harbor, because it faces no risk of liability from a user if it removes his or her video; the terms of use already provide a solid defense to such claims. Thus there's no real obligation to follow the steps set out in 512(g) -- including the re-posting provision.

Now, as a matter of policy and practice, sites like YouTube generally do re-post videos 10-14 business days following a counternotice, unless the copyright owner sues in the meantime. (But note YouTube only says it "may" -- not "will" -- replace the video (my emphasis).) Why? To keep their users happy. And maybe even to mollify pesky bloggers.

Am I wrong? If so, why?

'What is the Highlight of Your Day?'

Glad to be of service.

Friday, May 22, 2009

Detour from Duluth?

I had assumed that the re-trial of accused p2p infringer Jammie Thomas (now Jammie Thomas-Rasset) would take place in Duluth, Minnesota -- just like the first trial.

But apparently not. An order issued today by Chief Judge Michael Davis indicates:
The trial shall commence on Monday, June 15, 2009, at 9:00 a.m. and will be held in Courtroom 15E, United States Courthouse, 300 South Fourth Street, Minneapolis, Minnesota.
I hear the Radisson is pretty good...

Toughest job in the world

Gawker's libel lawyer.

Doesn't "Sometimes we get a tip that's just so fun that we can't bear to check it and find out that maybe it was just made up by some loon and/or convicted sexual predator" + publishing that tip = we have "reckless disregard of whether it was false or not"?

UPDATE: Fred von Lohmann of EFF suggests in the comments that Gawker is protected here by Section 230 of the CDA. Is he right? I'm not so sure.

Why Kiwi Camara will get shut down

In the less than a week since he came on as Jammie Thomas' new defender, controversial "legal Doogie Howser" Kiwi Camara has made numerous pronouncements about the strategies he will employ as he takes on the record labels. While it's impossible to say definitively what he intends from just a few quotes in the press, Camara has suggested that he will: 1) "attack the RIAA’s litigation strategy"; 2) argue fair use; and 3) seek "return [of] the $100M+ that it [the RIAA] obtained as a result of its unlawful campaign."

I don't think Camara will even be permitted to make any of these arguments at Thomas' June 15 re-trial. Here's why:

1) Attack on RIAA's Litigation Strategy. David Kravets of Wired reported that Camara and his team
think the key to victory is to attack the RIAA’s litigation strategy, which ha[s] spawned 30,000 lawsuits over five years, most of which have settled out of court for a few thousand dollars.

“We think the jury is going to reject this strategy,” Camara said. “The RIAA strategy here is not to try any of these cases.”

As I've explained before, I think the labels' suits against other p2p users are irrelevant to their claims against Thomas, and the court should not permit her to turn this trial into a referendum on whether the labels' litigation strategy is wise or just. But Camara has a serious additional problem if he wants to make this argument: in Thomas' first trial, her attorney moved to exclude such evidence -- and succeeded! Here's what happened: the labels wanted RIAA president Cary Sherman to testify about the harm caused by p2p piracy in general. Thomas' then-counsel Brian Toder objected, on the grounds that such testimony was not relevant to the case at hand:
We had one motion in limine that was sort of glossed over. It had to do with bringing in evidence of other people's suits and I don't -- I believe that what's happening with other people's suits generally, as a general proposition, the way this whole [RIAA litigation] system works is irrelevant and I would ask that they not be allowed to put that kind of evidence in in the form of Mr. Sherman.
Trial transcript at 478 (my emphasis). The court agreed with Toder and refused to let Sherman testify. Id. at 482. Seems to me that, having argued and won the point that evidence of other similar lawsuits is irrelevant, Thomas is now judicially estopped from arguing that it is relevant. Judicial estoppel is a somewhat flexible doctrine, but I suspect most judges would not permit such a clear reversal of positions within the same case.

2) Fair use. Fair use is an affirmative defense to a claim of copyright infringement. See, e.g., Harper & Row v. Nation Enters. Like all affirmative defenses, it must be pled in the answer, or else it is waived. See FRCP 8(c). Here's Thomas' answer. See any reference to fair use? I would be shocked if the court now permitted her to amend her answer (three years on), thus allowing her to argue fair use (putting aside the issue whether it is even an appropriate issue for a jury). Put simply, fair use (which has been rejected on the merits in the p2p context by the courts of appeals in BMG v. Gonzalez and Napster) is waived here.

3) Return of the "$100 million+" This claim is from Camara's web site (go to "practice" and then "pro bono") and refers to a case involving accused p2p infringer Brittany English -- not Thomas. It's so ludicrous that I don't even know what to say. Under what theory can the defendant in Case A seek to recover settlements paid by unrelated defendants in Cases B, C, and D? Beats me.

I suspect Camara and his team will be spending a lot of their time over the next month responding to motions in limine. Good thing they've sworn off sleep...

Thursday, May 21, 2009

Founding Bloggers prevails over CNN as YouTube restores 'Tea Party' video critique

In a victory for political bloggers over abusive copyright claims, YouTube has re-posted a video produced by the conservative site Founding Bloggers that had been removed following an April 17 DMCA notice from CNN. Observers across the political and copyright spectrum have criticized CNN's takedown of the video, which incorporates 1 minute 20 seconds of CNN footage in order to criticize the interviewing tactics of reporter Susan Roesgen at an April 15 "Tea Party" protest in Chicago -- a paradigmatic example of a non-infringing fair use.

The restoration of Founding Bloggers' video -- along with 3,000 comments -- comes a full 34 days after CNN sent its notice, and 28 days after Founding Bloggers disputed CNN's claim by submitting a DMCA counternotice. In the meantime, numerous others, led by Patterico, had re-posted the video, thwarting CNN's attempt to silence criticism of its Tea Party coverage. CNN could have sued Founding Bloggers to block re-posting, but -- wisely -- declined.

So is this incident over? Not necessarily. As I've previously explained:
Even after the re-posting, the target of a DMCA notice can sue the sender of a bogus takedown notice under 17 U.S.C. § 512(f), which provides a cause of action for "knowingly materially misrepresent[ing] under this section...that material or activity is infringing." (This is what happened in Lenz v. Universal.) In theory, CNN could also still sue Founding Bloggers for copyright infringement. But I consider that highly unlikely, for at least three reasons: 1) CNN would almost certainly lose, given the strength of Founding Bloggers' fair use defense; 2) even if CNN won, such a "victory" would actually harm its interests as a news organization that makes fair use of others' video countless times every day; and 3) by failing to go after the numerous others who have re-posted the same video, CNN has signaled that it wants this all to just go away -- quietly. The question remains: will Founding Bloggers let them?
In its post announcing the video's restoration, Founding Bloggers says, "The only questions left are…what now? What comes next?" We'll be watching...

DeVore moves to dismiss Don Henley's false endorsement/association claims over campaign video 'parody'

California state Assemblyman Chuck DeVore (R) has moved to "strip away some clutter" from Don Henley's suit against him over the use of "The Boys of Summer" and "All She Wants to do is Dance" in "parody" videos intended to promote DeVore's campaign against Sen. Barbara Boxer (D), moving to dismiss Henley's Lanham Act Section 43(a) and California Business & Professions Code section 17200 claims.
DeVore Motion to Dismiss
The allegations relevant to this motion are that DeVore and his campaign's web guru Justin Hart, by making a video that used the tune to "All She Wants to do is Dance" but replaced the lyrics with attacks on Boxer, falsely implied that Henley -- a long-time liberal activist who has donated at least $9,000 to Boxer's campaigns -- had endorsed or was affiliated with DeVore and his campaign. DeVore argues that the false association claims fail because Henley has not alleged use of his "distinctive attributes" -- a factor that made viable "sound-alike" suits like those brought by Tom Waits and Bette Midler.

DeVore argues that this case is more like Nancy Sinatra's suit against Goodyear Tire for its use in an ad of "These Boots Are Made for Walkin'" -- a song with which she is associated but does not own the copyright. (Irrelevant personal aside: my grandfather is the founder and still CEO of Criterion Music Corp., which does own the copyright in "Boots" and, as the Ninth Circuit noted, licensed the composition for use by Goodyear.) In Sinatra, the Ninth Circuit held that to allow her to pursue a state-law unfair competition claim would "clash with federal [copyright law] law." DeVore also relies heavily on the Supreme Court's 2003 Dastar decision, which warned against permitting Lanham Act claims to expand into a form of "mutant copyright law" with no temporal limit.

Notably, DeVore did not move to dismiss Henley's copyright claims over the use of "The Boys of Summer," which he wrote and whose copyright he owns (Henley does not claim copyright ownership in "Dance"). Presumably DeVore will at some point assert fair use on the copyright claims, but did not believe that a motion to dismiss was the most effective vehicle for that argument.

My previous coverage of the DeVore/Henley dispute can be found here, here, and here. attempts diagnosis of Nesson, wrestles with not-so-bizarre sheep hypothetical

The very interesting evaluates Harvard Law School professor Charles Nesson's argument that actual damages and statutory damages "are presumed to be equivalent to one another" and asks the question "Is Nesson Crazy?"

Geniocity butts heads directly with Nesson's infamous sheep metaphor:
It would be a bizarre statute indeed that offered two completely unrelated remedies within the same section: we imagine, for example, that the Court would be baffled by a statute that granted a plaintiff the choice between two remedies, one of which granted actual damages and lost profits, and the other of which granted plaintiffs the right to drive a flock of sheep across federal property on the third day of each month.
Geniocity's take?
It [Nesson's sheep hypo] doesn’t strike me as so bizarre. Statutory damages often serve the purpose of providing a remedy for a proven violation of law where the lawmakers have concluded it would be too burdensome to also require proof of damages, particularly in cases in which damages might be difficult to prove. It does not seem bizarre to believe that Congress in enacting the Copyright Act concluded that situations precisely like the one Nesson is defending — blatant individual infringements that cumulatively could have an impact on an industry but the individual effects of which are difficult to ascertain — should be subject to some liability. In addition, even if the statutory remedy bears no relationship to actual damage it can still serve a legitimate function: deterrence.
And the final diagnosis:
So where is Nesson coming from. I confess: I can’t tell.
You're not alone...