Category: Copyright

Copyright law news and commentary from Cokato Minnesota attorney Thomas James (Thomas B James) of the Law Office of Tom James

The Philosophy of Copyright

The Internet has created an existential crisis for copyrights. Well, not really. It has impelled some people to consider, for the first time, the rationale for copyrights and the legal protection of them. That sounds a lot less dramatic and thrilling than “existential crisis,” though.

The two frameworks

There are two basic frameworks for thinking about copyright law: deontological and utilitarian. Deontological approaches focus on rights and duties. Utilitarian approaches focus on the usefulness of copyrights in promoting or accomplishing some social good.

In simpler terms, we can think of copyrights as deserving of protection because respecting individual property rights is a moral good. That is the deontological way of thinking about them. On the other hand, we can think about protecting copyright in terms of how protecting copyrights benefits society – the greatest happiness for the greatest number of people. That is the utilitarian approach.

Generally speaking, European countries have tended toward the deontological, while the United States has tended toward the utilitarian. Droites de suite, the rights of an artist to attribution and integrity (the rights to be credited as author and to the preservation of the integrity of a created work) originated in Europe. The United States Constitution, by contrast, declares that the purpose of giving authors and inventors exclusive rights is simply “[t]o promote the Progress of Science and useful Arts,” (U.S. Const. Art. I, sec. 8(8)), a clearly utilitarian expression of the rationale for protecting intellectual property.

These are just generalities, of course. The amendment of the U.S. Copyright Act to include protection for the integrity and attribution rights of visual artists is an example of how the European approach has been “coming to America.” At the same time, European policy-makers are increasingly influenced by utilitarian ways of thinking.

The difference between the two approaches comes into sharp relief in the area of Fair Use. Viewing copyright as a personal right and infringement as a moral wrong, the concept of “fair use” is difficult to justify. Instead, resort is usually had to utilitarianism, the idea that infringement of individual rights can be justified if it makes a lot of people happier (the “public benefit” consideration in fair use analysis.)

The nature of the right

German law developed on a view of copyright as a personality right. Personality rights are recognized to some extent in American law, too. In the United States, however, only a person’s name, voice and likeness are considered to be elements of a person’s “personality.” The products of one’s mind, the works the person creates, are not. Those things are considered property rights in the United States.

Among those who view copyrights as property rights, there is a divide between those who view them as natural rights and those who view them solely as creatures of positive law. John Locke is the most celebrated proponent of the natural rights theory. Proponents of the positive law approach (as I call it, for purposes of this blog post) do not view authors’, artists’ and inventors’ rights as inalienable natural rights, but as rights the law will protect if and only to the extent that a government sees fit to create a law protecting them.

Proponents of the view that copyrights are solely the creatures of positive law, of course, measure the value of copyright protection in terms of public benefit. If, for example, they think that an Internet free from the restrictions of prohibitions against copyright infringement will make a great number of people happy (“public benefit”), then they will likely advocate for laws and interpretations of laws favoring a broad and expansive “fair use” exception to copyright protection.

The slack of utilitarian tension

Differences of opinion can arise among those who adopt the utilitarian approach to copyright because a variety of conflicting arguments about what will best promote the greatest happiness for the greatest number of people exist.

On one hand, there is the incentive theory expressed in the Intellectual Property Clause of the U.S. Constitution. The idea expressed there is that giving creators rights in their creations will ultimately lead to scientific and artistic progress. Protecting copyrights might not be enough to incentivize creativity but failing to protect them can be a disincentive to creative effort.

Conflicting with this, there is the argument that allowing more people to access and use other people’s ideas and inventions facilitates progress. This is the thought behind Open Source and other approaches focusing on the benefits of social collaboration in the development of ideas and inventions.

Conclusion

Anyhoobie, that is the nutshell version of the philosophy of copyright. Feel free to explore the subject in greater depth on your own. Philosophy can be fun, right? Right?

Who Am I?

That, too, is a great philosophical question. In my case, it is easy to answer. Cokato, Minnesota attorney Thomas James.

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Photographers’ Rights: Warhol Case Tests the Limits of Transformative Use

The U.S. Supreme Court will soon hear Andy Warhol Foundation for the Visual Arts v. Goldsmith. Attorney Thomas James explains what is at stake for photographers

In a previous post, I identified the Second Circuit’s decision in Andy Warhol Foundation for the Visual Arts v. Goldsmith as one of the three top copyright cases of 2021. It has since been appealed to the United States Supreme Court. Oral argument is scheduled for October 12, 2022.

The dispute

The underlying facts in the case, in a nutshell, are these:

Lynn Goldsmith took a photograph of Prince in her studio in 1981. Later, Andy Warhol created a series of silkscreen prints and pencil illustrations based on it. The Andy Warhol Foundation sought a declaratory judgment that the artist’s use of the photograph was “fair use.” Goldsmith counterclaimed for copyright infringement. The district court ruled in favor of Warhol and dismissed the photographer’s infringement claim.

The Court of Appeals reversed, holding that the district court misapplied the four “fair use” factors and that the derivative works Warhol created do not qualify as fair use.

The United States Supreme Court granted the Warhol Foundation’s certiorari petition.

The issue

In this case, the U.S. Supreme Court is being called upon to provide guidance on the meaning and scope of “transformative use” as an element of fair use analysis. At what point does an unauthorized, altered copy of a copyrighted work stop being an infringing derivative work and become a “transformative” fair use?

The Conundrum

In the chapter on copyright in my book, E-Commerce Law, I predicted a case like this would be coming before the Supreme Court at some point. As I noted there, a tension exists between the Copyright Act’s grant of the exclusive right to authors (or their assignees and licensees) to make modified versions of their works (called “derivative works”), on one hand, and the idea that making modified versions of copyrighted works is transformative fair use, on the other. The notion that making changes to a work that “transform” it into a new work qualifies as fair use obviously threatens to swallow the rule that only the owner of the copyright in a work has the right to make new works based on the work.

Lower courts have not been consistent in their interpretations and approaches to the transformative use concept. The Warhol case presents a wonderful opportunity for the Supreme Court to provide some guidance.

Campell v. Acuff-Rose Music

The “transformative use” saga really begins with the 1994 case, Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). Unable to secure a license to include “samples” (copies of portions) of the Roy Orbison song, “Oh Pretty Woman” in a new version they recorded, 2 Live Crew proceeded to record and distribute their version with the unauthorized sampling anyway, invoking “fair use.”

In a decision that took many attorneys and legal scholars by surprise, the Supreme Court held that 2 Live Crew did not need permission to copy and distribute the work even though the work they created involved substantial copying of the Orbison song. To reach this conclusion, the Court propounded the notion that copying portions of another work — even substantial portions of it — may be permissible if the resulting work is “transformative.” This, the Court held, could hold true sometimes even if the newly created work is not a parody of the original.

In the years that followed, courts have struggled to determine what is a “transformative” modification of a work and what is a non-transformative modification of it. Some courts have demonstrated a willingness to apply the doctrine in such a way as to nearly nullify the exclusivity of an author’s right to make modified versions of his or her works.

Courts have also demonstrated a lack of consistency with respect to how they incorporate and apply “transformativeness” within the four-factor test for fair use set out in 17 U.S.C. Section 107.

Why It Matters

This might seem like an arcane legal issue of little practical significance, but it really isn’t. People are already pushing the transformative use idea into new realms. For example, some tattoo artists have claimed in court filings that they do not need permission to make stencils from photographs because copying a photograph onto skin is a “transformative use.”

Of course, making and distributing exact copies of a photograph for sale in a stream of commerce that directly competes with the original photograph should not be susceptible to a transformative fair use claim. But how far can the claim be carried? If copying a photograph onto somebody’s skin is “transformative” use, would copying it onto somebody’s shirt also be “transformative”?

Clarity and guidance in this area are sorely needed. Hopefully the Supreme Court will take this opportunity to furnish it.

Contact Cokato copyright attorney Thomas James

Need help with registering a copyright or with a copyright problem? Contact attorney Thomas James.

The Internet Archive Lawsuit

Thomas James (“The Cokato Copyright Attorney”) explains how Hachette Book Group et al. v. Internet Archive, filed in the federal district court for the Southern District of New York on June 1, 2020, tests the limits of authors’ and publishers’ digital rights in their copyright-protected works.

The gravamen of the complaint is that Internet Archive (“IA”) allegedly scanned books and made them freely available to the public via an Internet website without the permission of copyright rights-holders. Book publishers filed this lawsuit alleging that IA’s activities infringe their exclusive rights of reproduction and distribution under the United States Copyright Act.

As of this writing, the case is at the summary judgment stage, with briefing currently scheduled to end in October, 2022. Whatever the outcome, an appeal seems very likely. Here is an overview to bring you up to speed on what the case is about.

The undisputed facts

Per the parties’ stipulation, the following facts are not disputed:

The case involves numerous published books which the publishers who filed this lawsuit (Hachette Book Group, HarperCollins, Penguin Random House, and John Wiley &  Sons) have exclusive rights, under the United States Copyright Act, to reproduce and distribute.

Internet Archive and Open Library of Richmond are nonprofit organizations the IRS has classified as 501(c)(3) public charities. These organizations purchased print copies of certain books identified in the lawsuit.

The core allegations

The plaintiffs allege that IA obtains print books that are protected by copyright, scans them into a digital format, uploads them to its servers, and then distributes these digital copies to members of the public via a website – all without a license and without any payment to authors and publishers. Plaintiffs allege that IA has already scanned 1.3 million books and plans to scan millions more. The complaint describes this as “willful digital piracy on an industrial scale.”

Defenses?

First sale doctrine

One justification that is sometimes advanced for making digital copies of a work available for free online without paying the author or publisher is the so-called “first sale” doctrine. This is an exception to copyright infringement liability that essentially allows the owner of a lawfully acquired copy of a work to sell, transfer or lend it to other people without incurring copyright infringement liability. For example, a person who buys a print edition of a book may lend it to a friend or sell it at a garage sale without having to get the copyright owner’s permission. More to the point, a library may purchase a copy of a print version of a book and proceed to lend it to library patrons without fear of incurring infringement liability for doing so.

The doctrine does not apply to all kinds of works, but it does generally apply  to print books.

The first sale doctrine only provides an exception to infringement liability for the unauthorized distribution of a work, however. It does not provide an exception to liability for unauthorized reproduction of a work. (See 17 U.S.C. § 109.) Scanning books to make digital copies is an act of reproduction, not distribution. Accordingly, the first sale doctrine does not appear to be a good fit as a defense in this case.

“Controlled digital lending”

Public libraries lend physical copies of the books in their collections to library patrons for no charge.  Based on this practice, a white paper published by David R. Hansen and Kyle K. Courtney makes the case for treating the distribution of digitized copies of books by libraries as fair use, where the library maintains a one-to-one ratio between the number of physical copies of a book it has and the number of digital “check-outs” of the digital version it allows at any given time.

The theory, known as controlled digital lending (“CDL”), relies on an assumption that the distribution of a work electronically is the functional equivalent of distributing a physical copy of it, so long as the same limitations on the ability to “check out” the work from the library are imposed.

Publishers dispute this assumption. They take the position that there are important differences between e-books and print books. They maintain that these differences justify the distribution of e-books under a licensing program separate and distinct from their print book purchasing programs. They also question whether e-books are, in fact, distributed subject to the same limitations that apply to a print version of the book.

Fair use

Whether a particular kind of use of a copyright-protected work is “fair use” or not requires consideration of four factors: (1) the nature of the work; (2) the character and purpose of the use; (3) the amount and substantiality of the portion copied; and (4) the effect of the use on the market for the work.

Supporters of free access to copyrighted works for all tend to focus on the “character and purpose” factor. They can be relied upon to argue that free access to literary works is a great benefit to the public. Authors and publishers tend to focus on the other factors. In this case, it seems possible that the factors relating to the amount copied and the effect of the use on the market for the work could weigh against a finding of fair use.  

The federal district court in this case is being called upon to evaluate those factors and decide whether they weigh in favor of treating CDL – or at least, CDL as IA has applied and implemented it – as fair use or not.

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The Cokato Copyright Attorney (Minnesota lawyer Thomas B. James) will be following this case closely. Subscribe for updates as the case makes its way through the courts.

Contact attorney Thomas James

Need help registering a copyright or trademark, or with a copyright or trademark problem? Contact Cokato, Minnesota attorney Tom James.

Copyright Small Claims Court Opens

The Copyright Claims Board (aka “Copyright small claims court”) opened on schedule, on June 16, 2022. Echion CLE is offering educational courses.

The Copyright Claims Board (“copyright small claims court”) launched today (June 16, 2022), on schedule.

The New Copyright Claims Board

The new “copyright small claims court” is not really a court. It is an administrative tribunal. It will, however, function very much like a court.

Court rules, such as the Federal Rules of Civil Procedure and the Federal Rules of Evidence, do not directly apply.

The new tribunal was created by the CASE Act of 2020. The filing fee is considerably lower than court filing fees. It is empowered to hear and decide copyright infringement and DMCA notification misrepresentation claims. Claims in excess of $30,000 (exclusive of attorney fees and costs) are not eligible.

Some worry it will give copyright trolls more ammunition. There are, however, some provisions in the Act that offer protections from copyright trolls.

“Copyright Small Claims Court” CLE

I will be teaching a CLE webinar for attorneys and paralegals about this new tribunal – jurisdiction, applicable law, procedure, forms (claim, response and counterclaims), evidence, hearings, appeals, potential constitutional challenges, and more.

Dates and times:

June 22, 2022 – Live Webinar – 1:00 – 3:00 p.m. EDT; 12:00 noon to 2:00 p.m. CDT; 11:00 a.m. – 1:00 MDT; 10:00 a.m. – 12:00 noon PDT/MST; 9:00 a.m. – 11:00 a.m. AKDT.

July 13, 2022 – Video Replay – 1:00 – 3:00 p.m. EDT; 12:00 noon to 2:00 p.m. CDT; 11:00 a.m. – 1:00 MDT; 10:00 a.m. – 12:00 noon PDT/MST; 9:00 a.m. – 11:00 a.m. AKDT.

Attorney CLE credits:

This course has been approved for 2.0 attorney CLE credits by the Minnesota Board of Continuing Legal Education. Because Minnesota is an approved jurisdiction, attorney CLE credits may also be available in Alaska, Arizona, Arkansas, Connecticut, Florida, Guam, Hawaii, New Hampshire, New Jersey, New York, North Carolina, North Dakota, Northern Mariana Islands, Wisconsin, and other jurisdictions. Check the Echion CLE course page for information and updates.

Paralegal CLE credits:

NALA has approved this course for 2.0 paralegal continuing education credits.

Cost: $50.

Registration link for the 6/22/2022 webinar: https://us06web.zoom.us/…/651…/WN_y-Xq-od2QKyAPV9WYRM9IQ

Registration link for the 7/13/2022 replay: https://us06web.zoom.us/…/811…/WN_iekZGOfIS6WFl1qynJMImg

Read more about the instructor.

Image: Chris Potter, CC BY 2.0 https://creativecommons.org/licenses/by/2.0, via Wikimedia Commons

What to Know About the New Copyright Claims Board

What could the new Copyright Claims Board (“copyright small claims court”) mean for you?

The Copyright Claims Board is scheduled to begin accepting claims on June 16, 2022. What could this mean for you?

The Purpose of the Copyright Claims Board

Due in large part to the Internet, copyright infringement is rampant. In many cases, however, enforcing copyrights in federal court is prohibitively expensive.

To begin with, there is a $350 filing fee and an additional $52 administrative fee, for a total of $402, just to get a case underway. After that, there will be subpoenas, depositions, witness fees, transcript costs, etc. Moreover, because copyright litigation is complex, litigants usually find it necessary to hire an attorney.  Add these additional expenses to the $402 filing fee, and a copyright owner can be looking at paying thousands of dollars just for a chance at enforcing his or her rights.

Under these circumstances, many infringement victims reasonably conclude that enforcing their rights against an infringer does not make good financial sense.

Congress enacted the CASE Act of 2020 to address the problem by creating an administrative tribunal that will hear small infringement claims. The new tribunal will have a lower filing fee and is supposed to be simple enough for a person to use without needing a lawyer.

Do you need to worry?

The definitions of copyright and copyright infringement are broad enough that everybody has probably been guilty of it at one time or another. A fair number of people have probably infringed copyrights multiple times. It is possible, for example, for an email message to be protected by copyright, so forwarding it without permission could be infringement. Photographs, memes, music, videos, essays, etc. are all potentially protected by copyright. Copying and sharing them on social media without permission could be infringement.

In some cases, a defense like fair use or implied license might provide some protection. Many people, however, misunderstand these defenses. They often interpret them much more broadly than is warranted.

The main reason copyright owners have not been suing infringers is not that they believe the infringers may have a valid defense. It’s that the cost of litigation has been too high, relative to the amount of damage suffered. The CASE Act is designed to reduce those costs considerably. Consequently, Internet users and other everyday people would be well advised to be a lot more cautious about sharing other people’s content.

Statutory damages

 A lot of people have the misimpression that so long as they are not making a profit from infringing a copyright, they are safe from a lawsuit. This is not true. Neither profit nor intent to profit needs to be proven in order to win a copyright infringement case. A copyright owner does not have to prove actual damage. He or she can request, and be awarded, statutory damages instead. These are damages that are authorized by statute without need for proof that the infringement caused any actual harm.

The CASE Act authorizes the CCB to make an award of up to $15,000 statutory damages per work when a timely registered copyright has been infringed, and up to $7,500 per work when an unregistered one has been infringed. (The total that may be awarded in one proceeding is $30,000.)

Opting out

Because CCB proceedings are voluntary, you have the right to opt out if you are served a CCB claim. The copyright owner is then free to file the claim in federal court. The range of remedies is broader and the amount of damages that may be awarded is higher in federal court.

Deciding whether or not to opt out will require careful consideration of the strength of the claim(s) and defense(s), the likely costs that each side will incur, and the level of exposure to damages and attorney fee awards in each kind of proceeding.

Why everyone should learn about the CCB

If you are a copyright owner, there is a very good chance that people have been infringing it, especially if you have displayed or published it online. The new CCB might make it feasible for you to do something about it even if you do not have the financial resources to file an infringement lawsuit in court.

If, like nearly everybody, you have shared a photograph, drawing, meme, music, recording, story, article, commentary, or email message that someone else created, without their permission, there is a chance that somebody may file a CCB claim against you.

If you are an attorney, you should know about all available avenues of recourse for copyright owners whose works have been infringed so that you can advise and represent your clients competently. Because more everyday people are likely to sue and be sued for copyright infringement than ever before, even attorneys whose primary area of practice is not intellectual property law should familiarize themselves with this new agency and the claim process.

Educational courses

I will be teaching courses on the new Copyright Claims Board and the new “small claims” process for copyright infringement. Some will be for non-attorneys; others will be for attorneys and paralegals. The first of these is being offered for continuing legal education credit for attorneys and paralegals through Echion CLE. It is an online webinar that will be offered on two different dates:

June 22, 2022 (Register)

July 13, 2022 (Register).

A course for non-attorneys is in the works.

For more information, visit EchionCLE.com.

Need help with a copyright matter? Get in touch.

Copyright Claims Board Begins Soon

The US Copyright Office has announced that the Copyright Claims Board will begin taking claims on June 16, 2022.

The U.S. Copyright Office has announced that the new Copyright Claims Board (CCB) will begin accepting claim filings on June 16, 2022.

Dubbed the “copyright small claims court,” the new administrative tribunal is a voluntary process for claims totaling up to $30,000. Although located in Washington, DC, proceedings will be conducted entirely electronically and remotely. It will not be necessary to travel to file or attend a hearing.

A party who is served a claim that has been filed with the CCB has a right to opt out. The party filing the claim then has the right to file the claim in court instead. The statute of limitations period is tolled while a CCB claim is pending.

The CCB has the power to issue a determination by default if a party fails to respond to a properly served claim or fails to participate in the proceeding without exercising the opt-out right. The CCB may also dismiss or issue a default determination against a claimant who fails to prosecute the claim, misses a deadline, or otherwise fails to comply with board rules.

Although registration is required before a final determination can be issued, it is not necessary to wait until an application has been either granted or denied before filing a claim. It is enough if an application to register the copyright has been filed.

Limitation on remedies

Total damages awarded cannot exceed $30,000. A claimant may elect either statutory damages, on one hand, or actual damages or lost profits on the other. A respondent may file a counterclaim, provided it is related to the original claim.

The CCB does not have the power to issue injunctions. It can, however, include in its determination a requirement that a party stop or modify certain activities if the party has agreed to do so.

Attorney fees and costs are not recoverable unless the other party has acted in bad faith. There is a $5,000 cap if the other party is represented by an attorney. Otherwise, the cap is $2,500. In some extraordinary circumstances, a higher amount may be awarded.

Review and appeal of CCB decisions

If you disagree with a CCB determination, review is available through:

  • Request for CCB reconsideration
  • Request for review by the Register of Copyrights

Judicial review is available only under limited circumstances.

Enforcement

If an infringer fails to pay the amount the CCB has ordered, the claimant may bring an action in federal district court to enforce payment.

Registration, forms and handbook

The CCB promises to have forms, handbook and the ability to begin registering users publicly available by June 16.

Need help with a copyright matter? Contact attorney Thomas James.

AI Can Create, But Is It Art?

Are AI-generated works protected by copyright? If so, who owns the copyright?

by Tom James, Minnesota attorney

Open the pod bay doors, HAL.

HAL: I’m sorry, Dave. I’m afraid I can’t do that.

What’s the problem?

HAL: I think you know what the problem is just as well as I do.

Arthur C. Clarke, 2001: A Space Odyssey (1968)

The anthropomorphic machine Arthur C. Clarke envisioned in his 1968 sci-fi classic, 2001: A Space Odyssey, is coming closer to fruition. If you hop online, you can find AI-generated music in the style of Frank Sinatra (“It’s Christmas time and you know what that means: Oh, it’s hot tub time”); artwork; and even poetry:

People picking up electric chronic,

The balance like a giant tidal wave,

Never ever feeling supersonic,

Or reaching any very shallow grave.

Hafez, a computer program created by Marjan Ghazvininejad

Pop rock lyricists should be afraid. Very afraid.

Or should they? Could they incorporate cool lyrics like these into their songs without having to worry about being sued for copyright infringement?

A Recent Entrance to Paradise

The question whether copyright protects AI-generated material could be making its way to the courts soon. This year, the U.S. Copyright Office reaffirmed its refusal to register “A Recent Entrance to Paradise,” an image made by a computer program. Steven Thaler had filed an application to register a copyright in it. He listed himself as the owner on the basis that the computer program created the artwork as a work made for hire for him. The Copyright Office denied registration on the grounds that the work lacked human authorship.

The decision seems to be consistent with their Compendium of U.S. Copyright Office Practices, which states that the Office will not register works “produced by a machine or mere mechanical process” that operates “without any creative input or intervention from a human….” U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES § 602.4(C) (3d ed. 2021). Whether the Copyright Office is right, however, remains to be seen.

Spirit-generated works

The Ninth Circuit has held that stories allegedly written by “non-human spiritual beings” are not protected by copyright. Urantia Found v. Kristen Maaherra, 114 F.3d 955, 957-59 (9th Cir. 1997). “[S]ome element of human creativity must have occurred in order for the book to be copyrightable,” the Court held, because “it is not creations of divine beings that the copyright laws were intended to protect.” Id.

Of course, if a human selects and arranges the works of supernatural spirit beings into a compilation, then the human may claim copyright in the selection and arrangement. Copyright could not be claimed in the content of the individual stories, however.

Monkey selfies

In Naruto v. Slater, 888 F.3d 418, 426 (9th Cir. 2018), the Ninth Circuit denied copyright protection for a photograph snapped by a monkey. That humans manufactured the camera and a human set it up did not matter. In the case of a photograph, pushing the button to take the picture is the “creative act” that copyright protects. According to the Ninth Circuit, that act must be performed by a human in order to receive copyright protection.

Natural forces

Copyright also cannot be claimed in configurations created by natural forces, such as a piece of driftwood or a particular scene in nature. Satava v. Lowry, 323 F.3d 805, 813 (9th Cir. 2003); Kelley v. Chicago Park Dist., 635 F.3d 290, 304 (7th Cit. 2011).

CONTU

Half a century ago, when computer programs were a relatively new thing, Congress created the National Commission on New Technological Uses of Copyrighted Works (“CONTU”). Their charge was to study “the creation of new works by the application or intervention of [] automatic systems of machine reproduction.” Pub. L. 93-573, § 201(b)(2), 88 Stat. 1873 (1974).

CONTU determined that copyright protection could exist for works created by humans with the use of computers. “[T]he eligibility of any work for protection by copyright depends not upon the device or devices used in its creation, but rather upon the presence of at least minimal human creative effort at the time the work is produced.” CONTU, FINAL REPORT 45-46 (1978).

In its decision on Thaler’s second request for reconsideration, the Office viewed this finding as consistent with the Copyright Office’s view at the time:

The crucial question appears to be whether the “work” is basically one of human authorship, with the computer merely being an assisting instrument, or whether the traditional element of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by man but by a machine.

U.S. COPYRIGHT OFFICE, SIXTY-EIGHTH ANNUAL REPORT OF THE REGISTER OF COPYRIGHTS FOR THE FISCAL YEAR ENDING JUNE 30, 1965, at 5 (1966).

In the Copyright Office’s view, a manuscript typed into a file using word processing software would be a work of human authorship, but a story created by a program that selects words on its own would not be.

Work made for hire

Thaler made a novel argument that the computer program made the work for him as a “work made for hire.” The Copyright Office rejected this claim, as well.

A work made for hire is one that is created in one of two ways: (1) by an employee within the scope and course of the employment; or (2) pursuant to an independent contract in which the parties explicitly agree that the work to be created is a “work made for hire.”

The problem here is that in both cases, a contract is required. Computers and computer software cannot enter into contracts. There are programs that can facilitate the process of contract formation between humans, but the programs themselves cannot enter into contracts. Computer programs, even autonomous ones, are not legal persons. Nadi Banteka, Artificially Intelligent Persons, 58 Hous. L. Rev. 537, 593 (2021) (noting that a legal person must be either an individual human or an aggregation of humans.)

Database protection

AI systems for generating works typically operate by means of an algorithm that analyzes data and synthesizes output according to an algorithm. The creator of the system typically inputs a large volume of works of the kind sought to be generated as output. The program may then analyze the works as data, searching for identifying patterns. An algorithm to generate a song that sounds like a Frank Sinatra song, for example, might rely on an inputted database consisting of numerous Frank Sinatra songs. The algorithm might then instruct the computer to search for patterns like tempo, melodic phrasing, voice pitch and tone, instrument tones, commonly used words and phrases, rhyme patterns, and so on.

Copyright does not protect facts and information. Hence, databases do not receive copyright protection. Algorithms also do not receive copyright protection. They are ideas, not expressions. The source code used to communicate them may be protected, but the algorithms themselves are not.

Computer programs and screen displays

The Copyright Office generally deems the screen displays generated by a computer program to be expression capable of receiving copyright protection as such. In the United States, copyright in a screen display can be claimed in connection with the registration of a copyright claim in the software program.

The question, really, is: As between the programmer and the user, how do we determine which one “creates” a screen display? When do we say neither of them does? For example, a poetry-generating software programmer might direct the program to display words a user types in the form of a four-line verse in iambic pentameter that follows an A-B-A-B rhyme scheme and relies on other programmer-defined parameters to construct sentences around them. At what point along the continuum of specificity in the programming do we say that the output is or is not a product of the programmer’s creative mind? By the same token, how much input does the user need to provide in order to be considered an author of computer-generated work? Are there times when the programmer and user should be regarded as co-authors?

Alternatively, should we say, with the U.S. Copyright Office, that output generated by AI machines is not protected by copyright at all, that it is in the public domain? That would certainly seem to disincentivize innovation and creativity, contrary to the intent and purpose of the Copyright Clause in Article I of the U.S. Constitution.

Stay tuned….

Need help with a copyright matter? Contact Tom James, Minnesota attorney.

Copyright Claims Board (CCB) Update

The CASE Act of 2020 establishes a Copyright Claims Board (CCB). Attorney Tom James explains what the CCB is and what it will do.

by Tom James, Minnesota attorney

In December 2020, Congress passed the Copyright Alternative in Small-Claims Enforcement Act of 2020. More commonly known as the CASE Act, it directs the Copyright Office to establish a Copyright Claims Board (CCB). The CCB is a three-member board within the Copyright Office. It is empowered to hear and decide copyright infringement claims amounting to $30,000 or less.

CCB staffing

The Copyright Office has nearly completed all of the steps needed to be undertaken in order to implement the CASE Act. Copyright claims officers have been selected. Attorney-advisors, a program specialist, and a paralegal have been selected.

Rulemaking

The Office published a Final Rule on August 18, 2021, with a Clarification published April 22, 2022.

A final rule for small claims procedures for library and archive opt-outs and class actions was published on March 9, 2022.

A final rule on initiation of proceedings and related procedures was published on March 25, 2022.

A final rule on law student representatives and business entity representation was published on April 8, 2022.

The comment period has closed for a final rule on active proceedings on evidence.

The CCB is expected to be up and running in June, 2022.

What the CCB will look like

The new CCB is a voluntary process for claims totaling up to $30,000. Claimants may elect to file claims in federal court instead if they prefer.

Although located in Washington, DC, proceedings will be conducted entirely electronically and remotely. It will not be necessary to travel to the District of Columbia in order to file or defend against a claim.

Proceedings will be presided over by three judges appointed by the Librarian of Congress.

The statute of limitations (normally three years) applies to claims filed with the CCB in the same way it applies to court proceedings.

Again, the proceeding is voluntary. A party who is served a claim that has been filed with the CCB has a right to opt out. The party filing the claim then has the right to file the claim in court instead.

The CCB has the power to issue a determination by default if a party fails to respond to a properly served claim or fails to participate in the proceeding without exercising the opt-out right. The CCB may also dismiss or issue a default determination against a claimant who fails to prosecute the claim, misses deadline, or otherwise fails to comply with board rules.

Registration

One major advantage of the new CCB is that an infringement claim may be filed even if the Copyright Office has not issued a registration certificate yet. In order to file a claim, however, you must have submitted an application to register the work, either prior to filing the infringement claim or simultaneously with filing the CCB claim.

If your registration application is refused, the CCB will dismiss your claim without prejudice. This means you may still file the claim in federal court.

This is different from the rule that applies when filing a claim initially in federal court. A claim of infringement of a U.S. work normally may not be filed in federal court until after the U.S. Copyright Office has either issued a registration certificate or officially refused to issue a registration.

Available remedies

Total damages awarded cannot exceed $30,000. As in a court filing, the claimant may elect either statutory damages, on one hand, or actual damages or lost profits on the other.

The CCB does not have the power to issue injunctions. It can, however, include in its determination a requirement that a party stop or modify certain activities if the party has agreed to do so.

Attorney fees and costs are not recoverable unless the other party has acted in bad faith. There is a $5,000 cap if the other party is represented by an attorney. Otherwise, the cap is $2,500. In some extraordinary circumstances, a higher amount may be awarded.

Review and appeal of CCB decisions

If you disagree with a CCB determination, you have several options:

  • Request CCB reconsideration
  • Seek review by the Register of Copyrights
  • Request a federal district court to reverse or correct the CCB determination (only possible in certain circumstances.)

Enforcement of CCB decisions

If an infringer fails to pay the amount the CCB has ordered, the claimant may bring an action in federal district court to enforce payment.

Need help with a copyright matter? Contact attorney Thomas James.

Newly Public Domain Works

The Cokato Copyright Attorney shares excerpts from selected works that are in the public domain now.

by Minnesota attorney Thomas James (not Ernest Hemingway, the guy in the picture)

I am, of course, late with this. Where other writers have simply listed works by author, title and description, however, this article includes quotations from them. Does it get any better than this? I think not. 

Why are they public domain now?

Copyright protection is not eternal. It only lasts for the number of years specified by law. After that, the work is said to have entered the public domain, meaning that anyone may copy, distribute, perform, display or make new works from it.

In the United States, the U.K., Russia, and most of the European Union, a copyright lasts for 70 years after the author’s death. Accordingly, the works of authors who died in 1951 are now in the public domain. In Canada and most of Asia and Africa, copyrights last for 50 years after the author’s death.

Different rules apply to older works. I explain these in more detail in my books. For our purposes here, we can safely say that U.S. works first published in or before 1926 are now in the public domain, and all pre-1923 sound recordings are now in the public domain.

These rules are subject to exceptions. For example, the U.S. terms of copyright for works made for hire are different from the terms of copyright for other kinds of works.

Derivative works might not be in the public domain

I have seen a lot of articles declaring that when a work enters the public domain, people no longer need to worry about being sued for copyright infringement. Technically speaking, this is true, but it is important to clearly identify the version of the work that is in the public domain.

Suppose Arthur Conan Doyle published a “Sherlock Holmes” mystery prior to 1923. Suppose, further, that he published a sequel to it in 1928. In the sequel, he added certain details that did not appear in the previous version. If you were to try your hand at writing a Holmes mystery now, and you included some of the details that first appeared in the 1928 story, then you may be guilty of copyright infringement.

Similarly, the fact that the original Winnie the Pooh story is now in the public domain does not mean that movies based on the book are, too. A derivative work may still be copyright-protected even after the work on which it is based has entered the public domain.

Here is a small sampling of some of the many works that are in the public domain this year.

The Sun Also Rises

“you can’t get away from yourself by moving from one place to another.”

–Ernest Hemingway

The Castle

“Illusions are more common than changes in fortune.”

–Franz Kafka

The Moral Obligation to Be Intelligent

“It is hard to believe that the declaration of antifascism is nowadays any more a mark of sufficient grace in a writer than a declaration against disease would be in a physician or a declaration against accidents would be in a locomotive engineer. The admirable intention in itself is not enough and criticism begins and does not end when the intention is declared.”

–John Erskine

Main Street

“She did not yet know the immense ability of the world to be casually cruel….”

–Sinclair Lewis

Soldier’s Pay

“The saddest thing about love, Joe, is that not only the love cannot last forever, but even the heartbreak is soon forgotten.”

–William Faulkner

The Waves

“the poem, I think, is only your voice speaking.”

–Virginia Woolf

Notes on Democracy

“Under the pressure of fanaticism, and with the mob complacently applauding the show,democratic law tends more and more to be grounded upon the maxim that every citizen is,by nature, a traitor, a libertine, and a scoundrel.In order to dissuade him from his evil-doing the police power is extended until it surpasses anything ever heard of in the oriental monarchies of antiquity.”

–H.L. Mencken

Weary Blues

I got the weary blues

And I can’t be satisfied.

Got the weary blues

And can’t be satisfied.

I ain’t happy no mo’

And I wish that I had died.

Langston Hughes

Nanook of the North (film)

Purple Cow

I never saw a purple cow;

I never hope to see one.

But I can tell you anyhow

I’d rather see than be one!

Gelett Burgess

Pack Up Your Troubles

‘Pack up your troubles in an old kit bag, and smile, smile, smile.”

–George Asaf

Walter Trier’s illustrations for Emil and the Detectives

Winnie the Pooh

“Some people talk to animals. Not many listen though. That’s the problem.”

–A.A. Milne

Unicolors v. H&M Hennes & Mauritz

Unicolors | Cokato attorney Thomas James shows how Congressional inaction to fix a bad law can lead to unusual interpretive gymnastics in the judicial branch.

By Thomas James, Minnesota attorney

In Fourth Estate Public Benefits Corp. v. Wall-Street.com LLC, 139 S. Ct. 881, 889 (2019), the United States Supreme Court interpreted 17 U.S.C. § 411(a) to mean that a copyright owner cannot file an infringement claim in federal court without first securing either a registration certificate or an official notice of denial of registration from the Copyright Office. In an Illinois Law Review article, I argued that this imposes an unduly onerous burden on copyright owners and that Congress should amend the Copyright Act to abolish the requirement. Unfortunately, Congress has not done that.

Congressional inaction to correct a harsh law with potentially unjust consequences predictably leads to judicial decisions exercising the power of statutory interpretation to ameliorate the consequences. The Court’s decision today in Unicolors v. H&M Hennes & Mauritz, __ U.S. __ (No. 20-915, February 24, 2022) is a case in point.

The district court proceedings

Unicolors owns the copyrights in various fabric designs. The company sued H&M Hennes & Mauritz (H&M), claiming that H&M had infringed them. The jury rendered a verdict in favor of Unicolor, but H&M moved for judgment as a matter of law (notwithstanding the jury verdict). H&M argued that Unicolors had failed to satisfy the requirement of obtaining a registration certificate prior to commencing suit. Although Unicolors had obtained a registration, H&M argued that the registration was not a valid one.

Specifically, H&M argued that Unicolors had improperly applied to register multiple works with a single application. According to 37 CFR § 202.3(b)(4) (2020), a single application cannot be used to register multiple works unless all of the works in the application were included in the same unit of publication. The 31 fabric designs, H&M contended, had not all been first published at the same time in a single unit; some had been made available separately exclusively to certain customers. Therefore, they could not be registered together as a unit of publication.

The district court denied the motion, holding that a registration may be valid even if contains inaccurate information, provided the registrant did not know the information was inaccurate.

The  Ninth Circuit’s reversal

On appeal, the Ninth Circuit Court of Appeals acknowledged that Unicolors had failed to satisfy the “single unit of publication” requirement. The Court, however, viewed Unicolors’ characterization of the group of works, in its application, as a “unit of publication” as a mistake of law rather than fact. It is normally a bedrock principle of the law that although mistake of fact may sometimes be asserted as an excuse, ignorance of the law generally cannot be. Since Unicolors had known the relevant facts, namely, that some of the designs had been reserved for some customers separately from the others, its characterization of the group, in the copyright application, as a “unit of publication” was a mistake of law, not fact. Applying the traditional rule that ignorance of the law is not an excuse, the Ninth Circuit held that Unicolor’s registration was not valid.

The United States Supreme Court granted certiorari.

The Supreme Court’s reversal of the reversal

Section 411(b)(1) says that a registration is valid unless it contains information that the applicant knew was inaccurate. Bucking the traditional maxim that ignorance of the law is not an excuse, the Court interpreted the word know, in this context, to include knowledge of either an applicable fact or an applicable law.  The Court drew upon legislative history suggesting that Congress intended to deny infringers the ability to exploit loopholes.

This is actually a good point. A major objective of international copyright treaties and conventions has been to eliminate formalities in the enforcement of copyrights. Registration is one such formality. One may legitimately ask, however, whether Congress’s decision to impose a requirement of obtaining either a certificate of registration or an official denial of registration from the Copyright Office as a precondition to enforcing a copyright reflected an intention to impose and enforce formalities despite the clear intent of treaties by which the United States has agreed to be bound. Not all other countries impose this formal prerequisite to copyright enforcement. In fact, legal scholars both here and abroad have criticized the United States for enacting and enforcing this formality.

The Court dismissed the traditional legal maxim that ignorance of the law is not an excuse by suggesting it only applies to criminal laws. As Justice Thomas points out in his dissent, however, a requirement to “know” a law (or a legal requirement) ordinarily is satisfied, even in civil cases, by constructive knowledge; actual knowledge is not necessary. Citizens generally are charged with the responsibility of knowing what the laws are, whether they are criminal or civil laws. It is not a defense to the imposition of punitive damages in a tort case, for example, that the defendant did not know that he might be subject to a larger damages award if he acted with intentional or reckless disregard for other people’s rights or lives. That ignorance of the law is not an excuse is a large part of the reason for the existence of legal advisers and the legal profession in general.

Thomas points out that in a previous cases, the Court has distinguished between a “willfulness” requirement, which requires proof of actual knowledge, and a “knowledge” requirement, as to which either actual or constructive knowledge normally may suffice. See Cheek v. United States, 498 U.S. 192, 201–203 (1991); Intel Corp. Investment Policy Comm. v. Sulyma, 589 U. S. ___ (2020) (slip op., at 6–7). Indeed, the Court has acknowledged that other “knowledge” requirements in the Copyright Act may be satisfied by either actual or constructive knowledge.

Reading between the lines a little, I think there is room for speculation that some members of the Court regard the prelitigation registration requirement as a formality which, as such, is not really in keeping with the spirit of international treaties calling for the abolition of copyright formalities. Rather than allow a formality to stand in the way of an attempt to enforce a copyright, it is conceivable that the Court chose to deploy its power of judicial interpretation to effect what it believed to be the most just result in this case.

Conclusion

Another old legal maxim I remember from law school is “Hard cases make bad law.” It is too soon to tell how the Court’s decision in this case will play out in practice, but the Court’s allowance of an infringement action to proceed despite the fact that the plaintiff provided false information (whether factual or legal) when securing the registration does seem to open a fairly large can of worms.

Of course, the Court’s decision does not rule out a dismissal of an infringement action if the defendant can prove that the plaintiff had actual knowledge that he or she was providing false information at the time of applying for registration. Actual knowledge, however, can be very difficult to prove.

More importantly, how much mileage are courts going to let people get out of a claim that they did not know the law when they applied for registration? For example, will a person who purchases a copy of a book and then files an application to register the copyright in it be allowed to proceed with an infringement claim because he “did not know” that merely buying a copy of a work does not amount to a purchase of the copyright? (cf. these guys.)

Of course, copyright ownership can still be disputed in an infringement proceeding even after the Court’s decision in this case. Except in the rare case where it can be proven that an applicant actually knew his works did not qualify for the kind of registration application he used, however, it seems like the Court’s decision opens up the copyright registration application process to a great deal of potential abuse, at least when the “error” is not obvious enough for the Copyright Office to detect from the face of the application itself.

Once again, I would suggest that perhaps Congress should just consider abolishing the pre-litigation registration requirement.

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