Tag: copyright law

Let’s Stop Analogizing Human Creators to Machines

Of course, policy discussions usually begin with the existing framework, but in this instance, it can be a shaky starting place because generative AI presents some unique challenges—and not just for the practice of copyright law.

[Guest post by David Newhoff, author of The Illusion of More and Who Invented Oscar Wilde? The Photograph at the Center of Modern American Copyright.]

Just as it is folly to anthropomorphize computers and robots, it is also unhelpful to discuss the implications of generative AI in copyright law by analogizing machines to authors.[1] In 2019, I explored the idea that “machine learning” could be analogous to human reading if the human happens to have an eidetic memory. But this was a thought exercise, and in that post, I also imagined machine training that serves a computer science or research purpose—not necessarily generative AIs trained on protected works designed to produce works without authors.

In the present discussion, however, certain parties weighing in on AI and copyright seem to advocate policy that is premised on the language and principles of existing doctrine as applicable to the technological processes of both the input and output sides of the generative AI equation. Of course, policy discussions usually begin with the existing framework, but in this instance, it can be a shaky starting place because generative AI presents some unique challenges—and not just for the practice of copyright law.

We should be wary of analogizing machine functions to human activity for the simple reason that copyright law (indeed all law) has never been anything but anthropocentric. Although it is difficult to avoid speaking in terms of machines “learning” or “creating,” it is essential that we either constantly remind ourselves that these are weak, inaccurate metaphors, or that a new glossary is needed to describe what certain AIs may be doing in the world of creative production.

On the input (training) side of the equation, the moment someone says something like, “Humans learn to make art by looking at art, and generative AIs do the same thing,” the speaker should be directed to the break-out session on sci-fi and excused from any serious conversation about applicable copyright law. Likewise, on the output side, comparisons of AI to other technological developments—from the printing press to Photoshop—should be presumed irrelevant unless the AI at issue can plausibly be described as a tool of the author rather than the primary maker of a work of creative expression.

Copyright Office Guidance Highlights Some Key Difficulties

To emphasize the exceptional nature of this discussion, even experts are somewhat confused by both the doctrinal and administrative aspects in the new guidelines published by U.S. Copyright Office directing authors how to disclaim AI-generated material in a registration application. The confusion is hardly surprising because generative AI has prompted the Office to ask an unprecedented question—namely, How was this work made?

As noted in several posts, copyrightability has always been agnostic with regard to the creative process. Copyright rights attach to works that show a modicum of originality, and the Copyright Office does not generally ask what tools, methods, etc. the author used to make a work.[2] But this historic practice was then confronted by the now widely reported applications submitted by Stephen Thaler and Kris Kashtanova, both claiming copyright in visual works made with generative AI.

In both cases, the Copyright Office rejected registration applications for the visual works based on the longstanding, bright-line doctrine that copyright rights can only attach to works made by human beings. In Thaler’s case, the consideration is straightforward because the claimant affirmed that the image was produced entirely by a machine. Kashtanova, on the other hand, asserts more than de minimis authorship (i.e., using AI as a tool) to produce the visual works elements in a comic book.

Whether in response to Kashtanova—or certainly anticipating applications yet to come—the muddiness of the Office guidelines is an attempt to address the difficult question as to whether copyright attaches to a work that combines authorship and AI generation, and how to draw distinctions between the two. This is not only new territory for the Office as a doctrinal matter but is a potential mess as an administrative one.

The Copyright Office has never been tasked with separating the protectable expression attributable to a human from the unprotectable expression attributable to a machine. Even if it could be said that photography has always provoked this tension (a discussion on its own), the analysis has never been an issue for the Office when registering works, but only for the courts in resolving claims of infringement. In fact, Warhol v. Goldsmith, although a fair use case, is a prime example of how tricky it can be to separate the factual elements of a photograph from the expressive elements.

But now the Copyright Office is potentially tasked with a copyrightability question that, in practice, would ask both the author and the examiner to engage in a version of the idea/expression dichotomy analysis—first separating the machine generated material from the author’s material and then considering whether the author has a valid claim in the protectable expression.

This is not so easy to accomplish in a work that combines author and machine-made elements in a manner that may be subtly intertwined; it begs new questions about what the AI “contributed” to a given work; and the inquiry is further complicated by the variety of AI tools in the market or in development. Then, because neither the author/claimant nor the Office examiner is likely a copyright attorney (let alone a court), the inquiry is fraught with difficulty as an administrative process—and that’s if the author makes a good-faith effort to disclaim the AI-generated material in the first place.

Many independent authors are confused enough by the Limit of Claim in a registration application or the concept of “published” versus “unpublished.” Asking these same creators to delve into the metaphysics implied by the AI/Author distinction seems like a dubious enterprise, and one that is not likely to foster more faith in the copyright system than the average indie creator has right now.

Copyrightability Could Remain Blind But …

It is understandable that some creators (e.g., filmmakers using certain plug-ins) may be concerned that the Copyright Office has already taken too broad a view—connoting a per se rule that denies copyrightability for any work generated with any AI technology. This concern is a reminder that AI should not be discussed as a monolithic topic because not all AI enhanced products do the same thing. And again, this may imply a need for some new terms rather than the words we use to describe human activities.

In this light, one could follow a different line of reasoning and argue that the agnosticism of copyrightability vis-à-vis process has always implied a presumption of human authorship where other factors—from technological enhancements to dumb luck—invisibly contribute to the protectable expression. Relatedly, a photographer can add a filter or plug-in that changes the expressive qualities of her image, but doing so is considered part of the selection and arrangement aspect of her authorship and does not dilute the copyrightability of the image.

Some extraordinary visual work has already been produced by professional artists using AI to yield results that are too strikingly well-crafted to believe that the author has not exerted considerable influence over the final image. In this regard, then, perhaps the copyrightability question at the registration stage, no matter how sophisticated the “filter” becomes, should remain blind to process. The Copyright Office could continue to register works submitted by valid claimants without asking the novel How question.

But the more that works may be generated with little or no human spark, the more this agnostic, status-quo approach could unravel the foundation of copyright rights altogether. And it would not be the first time that major tech companies have sought to do exactly that. It is no surprise that an AI developer or a producer using AI would seek the financial benefits of copyright protection; but without a defensible presence of human expression in the work, the exclusive rights of copyright cannot vest in a person with the standing to defend those rights. Nowhere in U.S. law do non-humans have rights of any kind, and this foundational principle reminds us that although machine activity can be compared to human activity as an allegorical construct, this is too whimsical for a serious policy discussion.

Again, I highlight this tangle of administrative and doctrinal factors to emphasize the point that generative AI does not merely present new variations on old questions (e.g., photography), but raises novel questions that cannot easily be answered by analogies to the past. If the challenges presented by generative AI are to be resolved sensibly, and in a way that will serve independent creators, policymakers and thought leaders on copyright law should be skeptical of arguments that too earnestly attempt to transpose centuries of doctrine for human activity into principles applied to machine activity.

[1] I do not distinguish “human” authors, because there is no other kind.

[2] I say “generally” only because I cannot account for every conversation among claimants and examiners.

Newly Public Domain Works 2023

Thousands of books, movies, songs and other creative works entered the public domain in the United States in 2023. Here is a partial list compiled by Cokato Minnesota attorney Thomas James.

Thousands of books, movies, songs and other creative works enter the public domain in the United States this year. Here is a partial list. (Click here for last year’s list).

Sherlock Holmes

Last year, it was Winnie the Pooh. This year, Sherlock Holmes officially enters the public domain. Pooh’s release from copyright protection sparked some creative uses of A. Milne’s fictional bear, from a comic strip in which Pooh Bear appears completely naked (i.e., without his red shirt on) to a slasher film called Winnie the Pooh: Blood and Honey, coming soon to a theater near you.

Sherlock Holmes and his sidekick, Dr. Watson, have actually been in the public domain for a long time, since Arthur Conan Doyle began publishing stories about them in the late nineteenth century. The copyrights in those works had already expired when Congress extended copyright terms in 1998. Legal controversies continued to arise, however, over which elements of those characters were still protected by copyright. New elements that were added in later stories potentially could still be protected by copyright even if the copyrights in previous stories in the series had expired. Now, however, the copyright in the last two Sherlock Holmes stories Doyle wrote have expired. Therefore, it appears that all elements of Doyle’s Sherlock Holmes stories are in the public domain now.

One can only imagine what creative uses people will make of the Holmes and Watson characters now that they are officially in the public domain, too.

Sherlock Holmes, public domain character in attorney Tom James article

The Tower Treasure (Hardy Boys)

The Tower Treasure is the first book in the Hardy Boys series of mystery books that Franklin W. Dixon wrote. As of this year, it is in the public domain.

Again, however, only the elements of the characters and the story in that particular book are in the public domain now. Elements that appeared only in later volumes in the series might still be protected by copyright.

Steppenwolf

Herman Hesse’s Der Steppenwolf, in the original German, is now in the public domain. This version is to be distinguished from English translations of the work, which might still be protected by copyright as derivative works. It is also to be distinguished from the classic rock band by the same name. It is always important to distinguish between trademark and other kinds of uses of a term.

The Bridge of San Luis Rey

Thornton Wilder’s Pulitzer Prize winning novel about an investigation into the lives and deaths of people involved in the collapse of a Peruvian rope bridge has now entered the public domain.

Mosquitoes

William Faulkner’s satiric novel enters the public domain this year. This work is to be distinguished from the insect by the same name. The insect, annoyingly, has been in the public domain for centuries.

The Gangs of New York

Herbert Asbury’s The Gangs of New York is now in the public domain.

Amerika

Franz Kafka’s Amerika (also known as Lost In America) — was published posthumously in 1927. It is now in the public domain.

The Jazz Singer

The Jazz Singer is a 1927 American film and one of the first to feature sound. Warner Brothers produced it using the Vitaphone sound-on-disc system and it featured six songs performed by Al Jolson. The short story on which it is based, “The Day of Atonement,” has already been in the public domain for some time. Now the film is, too.

The Battle of the Century

The Laurel and Hardy film, The Battle of the Century, is now in the public domain. Other Laurel and Hardy films, however, may still be protected by copyright.

Metropolis

Science fiction fans are most likely familiar with this 1927 German science fiction silent movie written by Thea von Harbou and Fritz Lang based on von Harbou’s 1925 novel. It was one of the first feature-length movies in that genre. The film is also famous for the phrase, “The Mediator Between the Head and the Hands Must Be the Heart.”

The Lodger

Alfred Hitchcock’s first thriller has entered the public domain.

“We All Scream for Ice Cream”

The song, “I Scream; You Scream; We All Scream for Ice Cream” is now in the public domain. Don’t worry if you uttered this phrase prior to January 1, 2023. Titles and short phrases are not protected by copyright. Now, it would be a different story if you’ve publicly performed the song, or published or recorded the song and/or the lyrics. Merely uttering those words, however, is not a crime.

“Puttin’ on the Ritz”

This song was originally written by Irving Berlin in 1927. Therefore it is now in the public domain. Taco released a performance of a cover version of this song in 1982. This version of the song made it all the way to number 53 in VH1’s 100 Greatest One-Hit Wonders of the 80’s special. Note that even if the original musical composition and lyrics are in the public domain now, recorded performances of the song by particular artists may still be protected. The copyrights in a musical composition and a recording of a performance of it are separate and distinct things. Don’t go copying Taco’s recorded performance of the song without permission. Please.

“My Blue Heaven”

This song, written by Walter Donaldson and George Whiting, is now in the public domain. It was used in the Ziegfeld Follies and was a big hit for crooner Gene Austin. It is not to be confused with the 1990 Steve Martin film with that name, which is still protected by copyright.

“The Best Things In Life Are Free”

This song was written by Buddy DeSylva, Lew Brown and Ray Henderson for the 1927 musical Good News. Many performers have covered it since then. The (ahem) good news is that it is now in the public domain.

Caveats

The works described in this blog post have entered the public domain under U.S. copyright law. The terms of copyrights in other countries are not the same. In the European Union, for example, Herman Hesse’s Der Steppenwolf is still protected by copyright as of January 1, 2023.

And again, remember that even if a work has entered the public domain, new elements first appearing in a derivative work based on it might still be protected by copyright.

The featured image in this article is “The Man with the Twisted Lip.” It appeared in The Strand Magazine in December, 1891. The original caption was “The pipe was still between his lips.” The drawing is in the public domain.

The Top Copyright Cases of 2022

Cokato Minnesota attorney Tom James (“The Cokato Copyright Attorney”) presents his annual list of the top copyright cases of the year.

My selections for the top copyright cases of the year.

“Dark Horse”

Marcus Gray had sued Katy Perry for copyright infringement, claiming that her “Dark Horse” song unlawfully copied portions of his song, “Joyful Noise.” The district court held that the disputed series of eight notes appearing in Gray’s song were not “particularly unique or rare,” and therefore were not protected against infringement. The Ninth Circuit Court of Appeals agreed, ruling that the series of eight notes was not sufficiently original and creative to receive copyright protection. Gray v. Hudson.

“Shape of You”

Across the pond, another music copyright infringement lawsuit was tossed. This one involved Ed Sheeran’s “Shape of You” and Sam Chokri’s “Oh Why.” In this case, the judge refused to infer from the similarities in the two songs that copyright infringement had occurred. The judge ruled that the portion of the song as to which copying had been claimed was “so short, simple, commonplace and obvious in the context of the rest of the song that it is not credible that Mr. Sheeran sought out inspiration from other songs to come up with it.” Sheeran v. Chokri.

Instagram images

Another case out of California, this one involves a lawsuit filed by photographers against Instagram, alleging secondary copyright infringement. The photographers claim that Instagram’s embedding tool facilitates copyright infringement by users of the website. The district court judge dismissed the lawsuit, saying he was bound by the so-called “server test” the Ninth Circuit Court of Appeals announced in Perfect 10 v. Amazon. The server test says, in effect, that a website does not unlawfully “display” a copyrighted image if the image is stored on the original site’s server and is merely embedded in a search result that appears on a user’s screen. The photographers have an appeal pending before the Ninth Circuit Court of Appeals, asking the Court to reconsider its decision in Perfect 10. Courts in other jurisdictions have rejected Perfect 10 v. Amazon. The Court now has the option to either overrule Perfect 10 and allow the photographers’ lawsuit to proceed, or to re-affirm it, thereby creating a circuit split that could eventually lead to U.S. Supreme Court review. Hunley v. Instagram.

Tattoos

Is reproducing a copyrighted image in a tattoo fair use? That is a question at issue in a case pending in New York. Photographer Jeffrey Sedlik took a photograph of musician Miles Davis. Later, a tattoo artist allegedly traced a printout of it to create a stencil to transfer to human skin as a tattoo. Sedlik filed a copyright infringement lawsuit in the United States District Court for the Southern District of New York. Both parties moved for summary judgment. The judge analyzed the claims using the four “fair use” factors. Although the ultimate ruling was that fact issues remained to be decided by a jury, the court issued some important rulings in the course of making that ruling. In particular, the court ruled that affixing an image to skin is not necessarily a protected “transformative use” of an image. According to the court, it is for a jury to decide whether the image at issue in a particular case has been changed significantly enough to be considered “transformative.” It will be interesting to see how this case ultimately plays out, especially if it is still pending when the United States Supreme Court announces its decision in the Warhol case (See below). Sedlik v. Von Drachenberg.

Digital libraries

The book publishers’ lawsuit against Internet Archive, about which I wrote in a previous blog post, is still at the summary judgment stage. Its potential future implications are far-reaching. It is a copyright infringement lawsuit that book publishers filed in the federal district court for the Southern District of New York. The gravamen of the complaint is that Internet Archive allegedly has scanned over a million books and has made them freely available to the public via an Internet website without securing a license or permission from the copyright rights-holders. The case will test the “controlled digital lending” theory of fair use that was propounded in a white paper published by David R. Hansen and Kyle K. Courtney. They argued that distributing digitized copies of books by libraries should be regarded as the functional equivalent of lending physical copies of books to library patrons. Parties and amici have filed briefs in support of motions for summary judgment. An order on the motions is expected soon. The case is Hachette Book Group et al. v. Internet Archive.

Copyright registration

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. As I said in a previous blog post, Congressional inaction to correct a harsh law with potentially unjust consequences often leads to exercises of the judicial power of statutory interpretation to ameliorate those consequences. Unicolors v. H&M Hennes & Mauritz.

Unicolors, owner of the copyrights in various fabric designs, sued H&M Hennes & Mauritz (H&M), alleging copyright infringement. The jury rendered a verdict in favor of Unicolor, but H&M moved for judgment as a matter of law. 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 properly 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 Court of Appeals reversed. The Court held that characterizing the group of works as a “unit of publication” in the registration application was a mistake of law, not a mistake of fact. The Court applied the traditional rule of thumb that ignorance of the law is not an excuse, in essence ruling that although a mistake of fact in a registration application might not invalidate the registration for purposes of the pre-litigation registration requirement, a mistake of law in an application will.

The United States Supreme Court granted certiorari. It reversed the Ninth Circuit Court’s reversal, thereby allowing the infringement verdict to stand notwithstanding the improper registration of the works together as a unit of publication rather than individually.

It is hazardous to read too much into the ruling in this case. Copyright claimants certainly should not interpret it to mean that they no longer need to bother with registering a copyright before trying to enforce it in court, or that they do not need to concern themselves with doing it properly. The pre-litigation registration requirement still stands (in the United States), and the Court has not held that it condones willful blindness of legal requirements. Copyright claimants ignore them at their peril.

Andy Warhol, Prince Transformer

I wrote about the Warhol case in a previous blog post. Basically, it is a copyright infringement case alleging that Lynn Goldsmith took a photograph of Prince in her studio and that Andy Warhol later based a series of silkscreen prints and pencil illustrations on it without a license or permission. The Andy Warhol Foundation sought a declaratory judgment that Warhol’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 U.S. Supreme Court granted certiorari and heard oral arguments in October, 2022. A decision is expected next year.

Because this case gives the United States Supreme Court an opportunity to bring some clarity to the extremely murky “transformative use” area of copyright law, it is not only one of this year’s most important copyright cases, but it very likely will wind up being one of the most important copyright cases of all time. Andy Warhol Foundation for the Visual Arts v. Goldsmith.

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

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

Dune It Wrong

The crypto group Spice DAO shelled out €2.66 million – about $3 million – for a rare book. The group announced that it had plans to digitize the book and distribute it to the public, produce an animated series based on the book for a streaming service, “support derivative projects,” and burn the book as an “incredible marketing stunt.” What could possibly go wrong?

by Thomas James Minnesota attorney

Dune is a widely-acclaimed 1965 science fiction novel by Frank Herbert. It is set in the future, at a time when feudalism exists on an interstellar scale. A wildly popular novel, Herbert wrote five sequels to it.

In 1974, director Alexander Jodorowsky resolved to adapt the book to film. The plan, however, ultimately was scrapped for lack of funds. It is not hard to see why. Jodorowsky envisioned an hours-long film with a score by Pink Floyd and appearances by such luminaries as Orson Welles and Mick Jagger. Weird artist Salvador Dali signed on to play a part, reportedly asking to be paid $100,000 per minute of screen time.

Before the project was scrapped, however, Jodorowsky compiled a book of concept art to present to studio executives. It included a storyboard sketched by the famous French cartoonist Moebius, along with set and character designs. Only a limited number of copies of it were made, and it is believed that only ten copies still exist today.

In November, one of these copies went up for auction at Christie’s. Appraisers expected it to sell for around $40,000. In the past, a copy of the book sold for $28,000 at auction. The crypto group Spice DAO, however, shelled out €2.66 million – about $3 million – for it. The group announced that it had plans to digitize the book and distribute it to the public, produce an animated series based on the book for a streaming service, “support derivative projects,” and burn the book as an “incredible marketing stunt.”

What could possibly go wrong?

It was a grand plan, except for one thing: Buying a copy of a book does not transfer the copyright along with it.

In general, you are free to do anything with the physical copy of a work you purchase – read it, decorate your restaurant or coffee shop with it, shred it, let your children color it. You are not free, however, to do anything you want with the intangible property embodied in it. When you buy a book, you do not acquire a right to make copies and distribute them to the public. You also do not acquire the right to make derivative works (new works based on the original work) or the right to “support derivative projects.” For these things, you would need to acquire either a license or outright ownership of the copyright from the copyright owner. If you don’t, then you may be liable for copyright infringement.

What about burning the book?

As I said, buying a copy of a book generally gives you the right to do whatever you want with the physical copy (as distinguished from the intangible property embodied in it.) I imagine many college students and zealous guardians of public morals will be delighted with this news, if they do not already know it.

There is an important exception to this rule, however. The Visual Artists Rights Act of 1990, 17 U.S.C. § 106A (“VARA”), is a U.S. law that gives the author of a work of the visual arts the rights to (a) claim authorship of the work; and (b) prevent the use of his or her name as the author of any work of visual art which he or she did not create. In addition, the author of a work of the visual arts has the right to prevent the use of his or her name as the author of the work in the event of a distortion, mutilation, or other modification of the work. Further, the author has a right to “prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.” Id.

VARA is clear that these rights are personal to the author. Even if you acquire both a physical copy and ownership of the copyright, you do not acquire the right to destroy a work of visual art, if it is protected by VARA.

For purposes of VARA, a protected “work of visual art” is a drawing, painting, print or sculpture existing either in a single copy or in a limited edition of 200 or fewer copies that are signed and consecutively numbered by the author.

If the copy at issue here falls into this category – if it is was signed and consecutively numbered by the author – then burning the book would be unlawful.

Conclusion

Consulting with an attorney before making a significant purchase of intellectual property – or what you think is intellectual property – can be worthwhile at times.

Contact Thomas James, Minnesota attorney

Need help with a copyright matter? Contact Cokato, Minnesota attorney Thomas James at the Law Office of Tom James.

The Top Copyright Cases of 2021

by Minnesota attorney Thomas James

I initially had set out to put together a “Top 10” list. Really, though, I think the list can be boiled down to three. Admittedly, this is only my personal opinion. Time will tell. Nevertheless, for what it’s worth, here is my list of the 3 Top Copyright Cases of 2021.

Google v. Oracle America

Google v. Oracle America, __ U.S. __, 141 S. Ct. 1183 (2021)

This United States Supreme Court decision is the culmination of many years of litigation between tech giants Google and Oracle.

At issue was Google’s copying of 11,500 lines of code of the Java SE API. Illustrating the murkiness of the “fair use” concept, the United States Supreme Court declared that this was fair use.

The case highlights the relatively weak protection that copyright offers for computer programs. The functional aspects of a computer program are better protected by patent than copyright.

It is dangerous to read too much into the decision, though. It does not mean that computer program copyrights are worthless To the contrary, the case was decided on the basis of fair use. Google’s copying of the code was infringement. “Fair use” simply means that a court came to the conclusion that a particular defendant should not be held liable for a particular kind or instance of infringement. Another court could come to a different conclusion in a different case involving different parties, a different kind of computer program, and a different kind of use of it.

Warhol v. Goldsmith

Andy Warhol Foundation for the Visual Arts v. Goldsmith, No. 19-2420 (2nd Cir. 2021).

This case is notable primarily because of the celebrities involved. Lynn Goldsmith took a photograph of Prince in her studio in 1981. Andy Warhol created a series of silkscreen prints and pencil illustrations based on it. Goldsmith sued for infringement of the copyright in the photograph. The district court found in favor of Warhol, citing the transformative use doctrine. The Court of Appeals reversed, asserting that the district court misapplied the four “fair use” factors.

Reversals of “fair use” findings on appeal are not uncommon. They illustrate the nebulous nature of the four-factor test that courts use to evaluate fair use claims.

Design Basics v. Signature Construction

Design Basics v. Signature Construction, No. 19-2716 (7th Cir. 2021).

Design Basics holds registered copyrights in thousands of floor plans for single-family homes. The company attempts to secure “prompt settlements” of infringement claims. The court ruled against the company on an infringement claim, finding that these designs consisted mainly of unprotectable stock elements, much of which were dictated by functional considerations and existing design considerations.

Architectural designs are protected by copyright, but the protection is thin. Only a “strikingly similar” work can give risk to an infringement claim. In other words, infringement of an architectural work requires a showing of extremely close copying.

    Need help with a copyright registration or a copyright matter? Contact the Cokato Copyright Attorney Tom James.

    Copyright as Killjoy: Can You Be Sued For Sharing a Joke?

    Take my joke.
    Please.
    I could use the statutory damages.

    Take my joke.

    Please.

    I could use the statutory damages

    by Thomas James, Law Office of Tom James

    You might have noticed that Spotify has removed a lot of comedy performances recently. You might be wondering what is going on. Did Jim Gaffigan offend someone? Are Kevin Hart and John Mulaney defecting to form an underground comedy railroad with Dave Chappelle? No, it isn’t either of those things. Yes, somebody probably was offended, but that is not the reason behind Spotify’s decision. It’s copyright.

    The problem arises from the fact that when a company licenses the right to share recorded performances, it is really licensing the rights in at least two different works: the sound recording and the underlying composition. The performance and the thing performed. When a person writes a song, he or she owns a copyright in the composition. If someone makes an authorized recording of a performance of it, then that person owns a copyright in the sound recording. The songwriter owns the copyright in the music; the producer and performing artists own copyright in the sound recording.

    In the music world, different agencies manage the licensing of these two kinds of copyrights. SoundExchange manages a lot of the licensing of sound recordings; agencies like ASCAP and BMI handle the licensing of musical compositions. Historically, performing rights organizations like ASCAP and BMI have focused on music. They have not collected royalties on behalf of spoken word creators. Recently, however, new organizations have sprung up to fill this need. One of them is Spoken Giants. The organization reportedly has acquired an impressive roster of clients – Jeff Foxworthy, Lewis Black, Patton Oswald, Tom Segura, the estate of Don Rickles. According to their website, the company represents tens of thousands of works.

    Spotify has removed a lot of spoken word content because an impasse has been reached in negotiations over spoken word copyright licensing. The Copyright Royalties Board, pursuant to a consent decree, sets songwriter royalty rates for various kinds of uses of musical compositions, which agencies like ASCAP and BMI use when administering music licenses. Until recently, however, no one has gone to bat for writers of spoken word performances. There are no governmentally established royalty rates for them. They must be privately negotiated. Spotify has pulled many spoken word performances from its offerings because a negotiated agreement has not been reached yet.

    Should your dad be shaking in his boots?

    The U.S. Copyright Act allows for the recovery of statutory damages even if no actual damage can be proven to have resulted from an infringement. Liability for infringement can exist even if no one profited from it or intended to profit from it. This would seem to make everyone potentially liable for repeating a joke they heard someone else tell. Is it true? Can a person be sued for repeating a joke someone else made up?

    Copyright protection for jokes

    In theory, it is possible for a joke, or at least a particular telling of it, to be protected by copyright. There are some important limitations on liability, however.

    Fixation

    First, of course, there can be no infringement if there is no copyright. It must be established that the joke is, in fact, protected by copyright. A copyright in a work does not exist unless and until the work is fixed in a tangible medium. If you hear someone telling a joke that nobody has ever recorded or written down, and the telling of the joke was not recorded, either, then no copyright exists. No copyright, no infringement.

    Originality and creativity

    Copyrights cannot be acquired by copying someone else’s work. If, for example, Paula, without securing an assignment of the copyright or at least a performance license, repeats a joke she read in a book, and Henny hears and repeats it, Paula should not win if she sues Henny for infringement. The owner of the copyright in the book might have a claim, but Paula would not.

    The independent creation doctrine is another obstacle to copyright protection for jokes. If two people independently create the same joke, and neither one copied the other – not even subconsciously – then they each own a copyright and neither one is guilty of infringing the other.

    Public domain

    If a joke is so old that the copyright has expired, then it is in the public domain. In that case, anyone can use it any way they want. Currently, the term of most (not all, but most) copyrights is 70 years plus the life of the author. In many cases, this would easily put your dad in the clear.

    By the way, if you are looking for some good medieval humor, try Poggio Barcciolini’s Facetiae.

    Expression vs. facts

    Copyright only protects expression; it does not protect facts or information. Consequently, the facts stated in a joke, if any, are not protected by copyright. For example, consider the joke, “There is a scale that measures not only weight but also body fat, bone mass, and water percentage. Now you can choose four different reasons to be ashamed.” Most of that joke conveys factual information. That part is not protected by copyright. The only question is whether the punch line is.

    Idea vs. expression

    Since copyright only protects expression, it makes sense that an idea also does not get copyright protection.

    The distinction between an idea and an expression might be the biggest obstacle to copyright protection of a joke there is. A situation with humorous implications is considered an unprotectable idea. This was established in the case of Nichols v. Universal Pictures Corp, 45 F.2d 119 (2d Cir. 1930). There, a writer sued a production company for creating a comedy show involving a Jewish man marrying an Irish-Catholic woman, with characters demonstrating stereotypical characteristics of members of those demographic groups. Although the writer had created a story based on the same premise, he lost the case. The court ruled that the ideas on which a story was based are not protected by copyright.

    This can present a formidable problem for comedy writers. Even if they come up with a great idea for a joke or comedy routine, they will not be able to prevent other comedians from using it, so long as these other comedians come up with sufficiently different ways of telling it.

    The idea-vs-expression dichotomy is made even more difficult to surmount by virtue of the merger doctrine. This is a legal principle that says that if there are limited ways to express an idea, the idea will merge with the expression of the idea and the expression will receive no copyright protection. The classic examples are a recipe or a set of rules for a game. A recipe is an idea. A set of rules for a game is also an idea. Therefore, to the extent a recipe merely states what is needed to know to make the concoction, it is not protected by copyright.

    To the extent a rules list merely explains how the game is played, it is not protected by copyright. In these cases, the idea is said to have “merged” with the expression, so the expression does not receive copyright protection. The only expression in a recipe or a set of game rules that gets copyright protection is that which is not necessary to the preparation of the dish or the playing of the game. (This probably explains why so many recipe publishers include extraneous anecdotes and fluff in them.)

    You can imagine how this could present a problem for a gag-writer. Jokes express ideas, hopefully amusing ones. For this reason, a bare-bones pun, or a one-liner like the ones that Henny Youngman and Rodney Dangerfield would tell, are less likely to be protected by copyright than are comedy routines that involve a lot of extraneous detail.

    Fair use

    The Fair Use Doctrine is a defense to copyright that may present an obstacle to the enforcement of a copyright in a joke sometimes. In general, the doctrine says that people may use copyrighted material in commentary, reporting, teaching, research, and sometimes other uses, if four broadly worded factors weigh in favor of allowing such use without liability for infringement:

    • The purpose and character of the use
    • The nature of the work
    • The amount and substantiality of the portion copied
    • The effect of the use on the market for the work.

    Unfortunately, “fair use” is not a well-defined concept. Courts are not always in agreement about how to balance these factors. Appellate reversals of district judge opinions on the matter are not uncommon.

    Epitaph

    Just kidding.

    Recognizing the rights of comedy writers does not have to mean the death of fun. For one thing, it is important to keep in mind what “infringement” means and what it does not mean. There are lots of uses a person can make of copyrighted material without putting himself or herself at risk of being sued for infringement. If you buy a copyrighted painting or print, you can display it in your home, so long as you do not open your home to the public and you do not charge a fee for your guests to view it. The same is true of a movie on DVD. You can play a DVD recording that you purchased as many times as you want to in your own home, so long as you do not invite the public in and so long as you do not charge a fee.

    Similarly, there should be no problem with re-telling a joke to family and friends in private. Although even limited reproduction and distribution of a copyrighted work can result in infringement liability, an unauthorized performance or display only becomes infringement, in the United States, when it is a public one. Re-sharing a joke in a public forum could be a problem, if none of the obstacles to infringement enforcement that I have discussed in this article apply. Re-telling a joke to members of your family or a small circle of friends for no fee, on the other hand, is not likely to get you into hot water.

    Not for copyright reasons, anyway.

    Minnesota attorney Thomas James is a lawyer at the Law Office of Tom James in Cokato, MN. He is the author of several law review articles and books, including E-Commerce Law and Website Law. In his spare time, he likes to look for spare time.

    Corbello v. Valli: Copyright Estoppel and Asserted Truths

    You can claim a copyright in fiction, but no one can claim a copyright in facts. What happens if somebody copies something you claimed to be fact but it turns out to be fiction? Can you sue for infringement?

    by Thomas B. James, copyright attorney at the Law Office of Tom James in Cokato, Minnesota

    It is black letter law that copyright only protects expression. No one can claim a copyright in facts. As long as you use your own words, you are free to repeat factual information that someone else has reported, even if the report is protected by copyright.

    What happens, though, if the information you copy, although purportedly factual, turns out to be fictional?

    Logically, you might think that the copying could be infringement  In some cases, depending on what and how the material is copied, it might be. Under the copyright estoppel doctrine, however, copying material that the author/publisher represented to be factual is not infringement even if the purported facts are not true.

    The Ninth Circuit recently had occasion to expound upon this principle.

    Corbello v. Valli

    Corbello v. Valli et al., Case No. 17-16337 (9th Cir., September 8, 2020) was a copyright infringement suit brought by the estate of a co-author of an autobiography of Tommy De Vito, one of the original members of the Four Seasons. The work was never published, De Vito, however, gave a copy of it to Frankie Valli. Valli was working on Jersey Boys, a Broadway play based on the band’s history. The plaintiff claimed that various scenes in the play were copied from the unpublished autobiography.

    After trial, the jury found that infringement had occurred. The judge, however, entered judgment as a matter of law for the defendants, holding that the alleged infringement involved historical facts. As such, the judge ruled, they were not protected by copyright.

    On appeal, the plaintiff argued that the copied scenes included embellishments that were not historical facts. As such, counsel argued, they should be treated as fiction rather than facts. The Court disagreed. It didn’t matter if the scenes presented in the autobiography were actually true or not, the Court ruled. Under the doctrine of copyright estoppel, which the Court renamed “the asserted truth doctrine,” neither actual facts nor material that is presented as factual are protected by copyright.

    Copyright estoppel is a well-established copyright defense. It holds that if an author represents a work to be factual, or historically accurate, then he or she cannot later claim, in court, that the work, or parts of it, are fictional. The principle is predicated on the idea that readers of purportedly nonfiction works should be entitled to rely on the author’s representations about the truthfulness of the matters asserted in them.

    Asserted Truths

    Because the term estoppel is bound up with the concepts of culpability and detrimental reliance, the Court decided the term does not accurately reflect the nature of the defense in copyright law. In copyright law, a defendant may invoke the defense without having to make a showing that the author intended to make a false representation on which other people would rely. It also is not necessary to prove that any particular person was actually deceived. It is enough to show, simply, that the author intended readers to think the work was factual.

    Published vs. unpublished works

    Because a showing of detrimental reliance is not necessary, it does not matter if the work is published or unpublished. The pertinent question is simply whether the material, as written, purports to be factual.

    Truthfulness as a literary device

    Sometimes a work of fiction will be presented in what looks like a traditional nonfiction format. A short story writer, for example, might choose to tell the tale through a series of imagined newspaper articles. A screenplay might include a scene where a fictional news anchor reports a plot development as if it were a breaking news story. Orson Welles gained notoriety for using truthfulness as a literary device in his radio play, “War of the Worlds.” He told the fictional story through a series of what sounded like actual news broadcasts. Fictional works that use truthfulness as a literary device do not come within the meaning of “purported facts.”

    The question in all cases is how the work, taken as a whole, is presented. Although many people mistook Welles’ play for actual news broadcasts, he included multiple disclaimers during the broadcast to the effect that it was just a fictional story made up for entertainment purposes. It was not presented as fact.

    Unbelievable facts

    The Court correctly observed that material may be excluded from copyright protection when it is presented as factual even if people are not likely to believe it. The alleged “facts” reported in a  purportedly autobiographical account of being abducted by aliens, for example, may be repeated without fear of copyright infringement liability. The pertinent question is not whether the information presented in a work is, in fact true.  What matters is whether it is presented as a true statement of fact.

    Conclusion

    Corbello is only precedential in the Ninth Circuit. Nevertheless, because it builds logically upon a cogent exposition of the asserted rights doctrine (nee copyright estoppel), courts in other jurisdictions are likely to consider it persuasive.

    The key take-away: Copyright protects expression, not ideas, facts, or purported facts.

    Contact Thomas James at the Law Office of Tom James.

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