Tag Archives: Copyright

Copyrighting the Official Annotated Statutes: Georgia v. Public.Resource.org

Patent

The Supreme Court has granted certiorari in the important public access case of Georgia v. PublicResource.org Inc. The case focuses on Georgia official statutory code with official annotations (the “Official Code of Georgia Annotated” or  “OCGA”).  OCGA includes the statutes, section titles, statutory histories, guidance from the Georgia Code Revision Commission, judicial summaries, and opinions by the State AG, for example.  PublicResources.org bought a copy of the OCGA, copied it, and uploaded it to the internet so that the public could have free access to the law.  Georgia then sued for copyright infringement.

The district court held OCGA copyrightable and the 11th Circuit reversed that decision — finding that the “government edicts doctrine” prohibits copyright in this case.  One difficulty with with that doctrine is that it was last discussed by the U.S. Supreme Court 130 years ago in Callaghan v. Myers, 128 U.S. 617 (1888) and Banks v. Manchester, 128 U.S. 244 (1888).

Question presented:

This Court has held, as a matter of “public policy,” that judicial opinions are not copyrightable. Banks v. Manchester, 128 U.S. 244, 253-254 (1888). Lower courts have extended that holding to state statutes. See, e.g., John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 38 (1st Cir. 2003). But the rule that “government edicts” cannot be copyrighted has “proven difficult to apply when the material in question does not fall neatly into the categories of statutes or judicial opinions.” Ibid.

The question presented is: Whether the government edicts doctrine extends to—and thus renders uncopyrightable—works that lack the force of law, such as the annotations in the Official Code of Georgia Annotated.

OCGA is published by LEXIS, but its contents are particularly controlled by the Georgia General Assembly and the Commission (a division of the Assembly).  The appellate panel found particularly that “the Commission exercises direct, authoritative control over the creation of the OCGA annotations at every stage of
their preparation.”

Although PublicResources won at the appellate court, it agreed that the Supreme Court should hear the case in order to clarify and simplify the law of public access to public information. Current case law “is confusing and outcomes are difficult to predict.”

Briefing in the case will continue over the summer and the Court will likely schedule oral arguments for late 2019.

When Congress Cancelled State Immunity for Copyright Infringement, Did it Violate the U.S. Constitution?

Patent

by Dennis Crouch

Allen v. Cooper representing North Carolina (Supreme Court 2019)

The Supreme Court has granted certiorari in a sovereign immunity copyright case.

Issue Presented: Whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act in providing remedies for authors of original expression whose federal copyrights are infringed by states.

Issue Restated in Opposition: The Copyright Remedy Clarification Act purports to abrogate the states’ sovereign immunity for alleged violations of federal copyright law. Did the Court of Appeals correctly hold that the Copyright Remedy Act’s abrogation of state sovereign immunity was invalid?

The case has a few interesting parts.  First off, the underlying issue stems from the discovery of the Blackbeard’s Pirate Ship Queen Anne’s Revenge off the North Carolina Shore where it sank in 1718. Intersal found the wreckage and hired Allen to document the salvage operation.  Allen registered the copyrighted works. Later, the State of North Carolina uploaded the videos online without Allen’s permission.  In order to insulate itself from infringement liability, the state passed Blackbeard’s Law,” which purported to place the uploaded videos in the public domain. (It’s not piracy if legal).

Allen then sued the State for copyright infringement — naming various individuals in their official elected capacity, including ROY A. COOPER, III, as Governor of North Carolina. The question in the case – is whether the State can be sued for copyright infringement.

On one hand is the U.S. Constitution — 11th Amendment to the U.S. Constitution seems quite clear – the Federal Courts have no power over “any suit … against one of the United States” brought by “citizens of another State.”

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

At the same time, Congress attempted to expressly “abrogate” this immunity in the Copyright Remedy Clarification Act with the following language:

Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person . . . for a violation of any of the exclusive rights of a copyright owner provided by [federal copyright law].

Here the statute is clear in its attempt to contravene the 11th Amendment. The only problem through is that statutes are ordinarily subject to the U.S. Constitution, not vice-versa.  The reality though is more complicated – at times the courts have permitted suits against states and have allowed Congress to abrogate state sovereign immunity by statute.

The basic test was spelled out in Seminole Tribe v. Fla., 517 U.S. 44 (1996):

Was the Act in question passed pursuant to a constitutional provision granting Congress the power to abrogate?

In its decision here, the 4th Circuit held that, although Congress does have power to create a copyright regime, it does not have power to abrogate state sovereign immunity for copyright infringement.  I’ll say that there is a good chance that the court will side with Allen against the State — holding that Congress has power to abrogate here because of the need for a “carefully crafted copyright regime.”

The CASE Act: Copyright Small Claims Court

Patent

by Dennis Crouch

Few patent litigators would file a lawsuit if the potential payout is less than $1,000,000 — that amount ordinarily does not cover the expected cost of litigation and risk of loss. Except in the most simple cases, copyright litigation can be similarly expensive.  What this means is that it can be difficult to earn a regular ‘living’ independently creating and licensing intellectual property.

A bipartisan group of legislatures are working on a small claims solution and have proposed the CASE Act: Copyright Alternative in Small-Claims Enforcement Act of 2019.

The basics: The statute calls for creation of a “Copyright Claims Board” empowered to decide infringement cases with a limit of $30,000 damage award per case and no injunction (except to enforce a settlement agreement) and no attorney fees (except for bad faith conduct).  Although the Board will be based in DC, hearings will be via the internet with very limited procedural requirements.

I like it in theory, but need to consider implementation aspects.  Small claims IP court in the UK has received a good amount of positive response — three tiers: Small Claims (<£10,000); Smallish Claims (<£500,000); and Everything Else.

Read the Bill: https://www.congress.gov/bill/116th-congress/house-bill/2426/text

 

 

For Digital Copyright First Sale Doctrine, “Move” Does Not Equal “Copy+Delete”

Patent

by Dennis Crouch

Capitol Records v. ReDigi (2nd Cir. 2018) [16-2321_opn]

ReDigi designed its business to take advantage of the first sale doctrine of copyright law — particularly creating a market for resale of lawfully purchased digital music files.  In the system, ReDigi first verifies that a song was lawfully purchased (e.g., via iTunes) and then migrates the digital file from the user to ReDigi servers. In the process, ReDigi first locks the song from use on the user’s system; then breaks the song into packets; deletes the song on the user’s computer; transfers the packets to the ReDigi system (copy + delete); and finally reassemble the packets on the ReDigi server.  Each packet is deleted immediately upon transfer — and so results in an unrecoverable failure if some of the packets don’t arrive at the destination. (In that case ReDigi compensates the seller).  The seller can keep using the song until it is sold — at that point the system effectively transfers possession to the new party.   Note here, that this is how the system is designed. Some folks have hacked around these precautions and so some duplicates are getting through — allowing the seller to keep listening to the music.

Recording companies sued  and won.  On appeal now, the 2nd Circuit has sided with the copyright owners — holding that the first sale doctrine does not apply here because DeRigi is making copies (first sale only applies to the actual copy sold).

In the course of transferring a digital music file from an original purchaser’s computer, through ReDigi, to a new purchaser, the digital file is first received and stored on ReDigi’s server . . . At each of these steps, the digital file is fixed in a new material object “for a period of more than transitory duration.” Cartoon Network. The fixing of the digital file in ReDigi’s server, as well as in the new purchaser’s device, creates a new phonorecord, which is a reproduction. ReDigi version 1.0’s process for enabling the resale of digital files thus inevitably involves the creation of new phonorecords by reproduction. . . .

We conclude that the operation of ReDigi version 1.0 in effectuating a resale results in the making of at least one unauthorized reproduction. Unauthorized reproduction is not protected by § 109(a).

The court then went on to hold that the use is also not a “fair use.”  In the analysis, the court correctly concluded that the ReDigi secondary market is likely to undermine the marketplace for new digital files from the Record Company.  However, I believe the court used the wrong baseline — the focus here should have been on whether the copy+move resale is a fair-use extension of the first-sale doctrine.

Modernizing Copyright Registration

Patent

The US Copyright Office (a branch of the Library of Congress) has published a Federal Register notice seeking comments on ways to improve (“modernize”) its copyright registration system:

The U.S. Copyright Office is building a new registration system to meet the demands of the digital age. As the Office develops a new technological infrastructure for this system, it is considering several legal and policy changes to improve user experience, increase Office efficiency, and decrease processing times. The Office is seeking public comment to inform its decisions on how to improve the regulations and practices related to the registration of copyright claims.

Some of the intended improvements include: better application tracking; improved user interface for electronic deposits; improved messaging system; and allowing users to view a draft registration certificate before final submission. Public comments due by January 15, 2019.

View the notice: NOTICE AND REQUEST FOR COMMENTS

Open Internet Saves Accused Copyright Infringer from Liability

Patent

Cobbler Nevada, LLC v. Gonzales (9th Cir. 2018)

This copyright lawsuit involves cute Adam Sandler movie titled The Cobbler.  In the movie, Sandler’s character free-rides off of the experiences of others by using a magical shoe-cobbling machine.  The movie copyright holders did not reciprocate that freedom when American Pirates began downloading and distributing the movie through BitTorrent.

Cobbler-Nevada was able to trace the Internet Protocol (IP) address associated with the infringing activity and then filed suit in a John Doe lawsuit.  Comcast responded to a subpoena in the case with information that the IP address was assigned to its customer Thomas Gonzales.   The Copyright holder then amended its complaint to name Gonzales — accusing him of copyright infringement as well as contributory copyright infringement (for failing to secure his internet connection).  Note here that Gonzales operates an adult care home and that the internet service was open to residents and visitors.

The appeal here focuses on the pleadings and whether the complaint states a claim.  In Iqbal, the Supreme Court explained that a complaint must be plausible — allegation of plausible facts that create a plausible “entitlement to relief.”  Reviewing the allegations here, the 9th Circuit found that the facts alleged against Gonzalez here are “not enough to raise a right to relief above a speculative level.” (quoting Twombly).

[S]imply establishing an [internet] account does not mean the subscriber is even accessing the internet, and multiple devices can access the internet under the same IP address. Identifying an infringer becomes even more difficult in instances like this one, where numerous people live in and visit a facility that uses the same internet service. While we recognize this obstacle to naming the correct defendant, this complication does not change the plaintiff’s burden to plead factual allegations that create a reasonable inference that the defendant is the infringer.

The only connection between Gonzales and the infringement was that he was the registered internet subscriber and that he was sent infringement notices. To establish a claim of copyright infringement, Cobbler Nevada “must show that [it] owns the copyright and that the defendant himself violated one or more of the plaintiff’s exclusive rights under the Copyright Act.” Ellison v. Robertson, 357 F.3d 1072 (9th Cir. 2004). Cobbler Nevada has not done so.

Regarding contributory infringement, the copyright holder here pursued a contributory infringement claim based upon a failure-to-police theory. The appellate court confirmed that theory is lacking:

Cobbler Nevada’s contributory infringement claim is premised on a bare allegation that Gonzales failed to police his internet service. This perfunctory allegation, without more, does not sufficiently link Gonzales to the alleged infringement.

Here, in particular, the complaint lacked allegations of any specific acts of active-infringement-encouragement.  As the Supreme Court explained in Grokster, contributory infringement must be based upon more than merely “failure to take affirmative steps to prevent infringement.”

= = = = =

The appellate court also affirmed the award of attorney fees to Gonzales.

Copyrighting Software: Case Likely Heading to Supreme Court

Patent

by Dennis Crouch

Google v. Oracle (Fed. Cir. 2018)

Google has now filed an en banc rehearing petition in its dispute with Oracle over copyrightability of the naming system for an application programming interface — namely Oracle’s Java API that Google copied.  [Oracle Am. v. Google LLC Rehearing Petition]

The basic issue here stems from Google’s program interface for Android App development.  Rather than creating its own set of functions and methods, Google decided to mimic the method-calls of Java.  At the time, Google’s third-party app marketplace was lagging far behind Apple’s, and the Java-API mimic was seen as a strategy to facilitate more rapid development of apps since the programming language was already so popular.  I previously explained:

As an example, Google used the Java method header “java.lang.Math.max(a,b).”  When called, the “max” function returns the greater of the two inputs.  In Android’s API, Google copied a set of 37 different Java “packages” (such as Math) that each contain many classes and method calls (such as “max()”).  Overall, Google copied the header structure for more than six-thousand methods.

Although Java was available for licensing, Google refused. Although Java’s originator Sun Microsystems was known for its lack of IP enforcement, that all changed when Oracle acquired the company.

In the most recent iteration of the case, the jury found that Google’s use was a “fair use” and thus not an infringement.  On appeal, however, the Federal Circuit reversed — finding the API the proper subject of copyright protection and not subject to a fair use defense in this case.  As Jason Rantanan wrote: “the court’s analysis all but says (expressly so!) that fair use can never apply.”

In its petition, Google raises both the underlying copyright challenge and the fair use question. Questions:

  1. Whether application programming interface (“API”) declarations—which are designed to invoke pre-written functions and methods of software—are systems or methods of operation and thus not entitled to copyright protection.
  2. Whether use of API declarations, but not implementing code, in a new and different context is protected by the fair-use doctrine.

The petition walks through a handful of copyright cases – explaining its position that the Federal Circuit’s position is “contrary to.”

  • Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) (on fair use, the transformation question is whether the work as a whole has been transformed — not just a focus on the copied portions);
  • Harper & Row Publishers v. Nation Enters., 471 U.S. 539 (1985) (fair use is a mixed question of fact and law – not simply a question of law);
  • Sony Computer Entm’t v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000) (functional requirements for comparability are not protected by copyright; protection is also limited by fair use);
  • Lotus Dev. Corp. v. Borland Int’l, 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided court, 516 U.S. 233 (1996) (menu hierarchy not entitled to copyright protection);
  • Sega Enters. v. Accolade, 977 F.2d 1510 (9th Cir. 1992) (See Sony).

The issues here are fundamental and I expect are likely to rise up to the Supreme Court.

DNC v. Russia: Hacking, Copyright Infringement, and Trade Secret Misappropriations

Patent

I teach internet law, and focus substantial time on computer privacy and cyber security law.  The core anti-hacking statute is the Computer Fraud and Abuse Act (18 U.S.C. 1030(a)). Although I’m somewhat surprised by the new DNC v. Russia lawsuit, it is not surprising that the CFAA serves as a primary basis for the lawsuit.

[Read the Complaint]

In addition to Russia, the Democratic National Committee (DNC) also joined Donald Trump Jr., Paul Manafort, Wikileaks Wikipedia, Julian Assange, Jared Kushner, Guccifer 2.0, and others as defendants alleging violations of a wide array of federal laws, including the CFAA, RICO the Wiretap Act, the Stored Communications Act, the DMCA, and the Defend Trade Secrets Act, as well as common law trespass and trespass to chattels.

The complaint begins:

In the run-up to the 2016 election, Russia mounted a brazen attack on American Democracy. The opening salvo was a cyberattack on the DNC, carried out on American soil.  In 2015 and 2016, Russian intelligence services hacked into the DNC’s computers, penetrated its phone systems, and exfiltrated tens of thousands of documents and emails. Russia then used this stolen information . . . supporting the campaign of Donald J. Trump (“Trump”), whose policies would benefit the Kremlin.

In the Trump campaign, Russia found a willing and active partner in this effort . . . Through multiple meetings, emails, and other communications, these Russian agents made clear that their government supported Trump and was prepared to use stolen emails and other information to damage his opponent and the Democratic party.

The intellectual property claims here are two-fold:

  1. Violation of the anti-circumvention provisions of the DMCA; and
  2. Trade secret misappropriation.

The DMCA’s anti-circumvention provisions provide a cause of action against someone who circumvents a “technological measure” used to control access to a copyrighted work:

No person shall circumvent a technological measure that effectively controls access to a work protected under this title.

17 U.S.C. 1201. Here, the argument is that the firewalls and passwords protecting the DNC computers were the “technological measures” used to protect the files, documents, and emails — all of which are copyrighted.

Similarly, the DNC argues that those files also contain trade secret material.  Here, the DNC argues that – although a non-profit – the DNC is in business.  “Specifically, the DNC is in the business of supporting Democratic political campaigns.” The stolen documents included important strategic information whose value required secrecy.

Although clearly politically motivated, it will be interesting to follow the development of the lawsuit.

JOLT – Special Issue on API Copyright

Patent

Just as the Federal Circuit was releasing its decision in Oracle v. Google, Harvard’s Journal of Law & Technology was also releasing its special issue on the topic: Protecting Software Interfaces with Copyright Law.

Oracle v. Google: The Federal Circuit goes all-in on copyright and software

Patent,

By Jason Rantanen

Oracle America, Inc. v. Google LLC (Fed. Cir. 2018) Read opinion

Panel: O’Malley (author), Plager and Taranto*

This is a huge decision on multiple levels, and the latest exchange in the long-running battle between Oracle (the copyright owner) and Google (the alleged infringer).  In the first appeal, the Federal Circuit rejected Google’s arguments that the Java “packages” at issue were unprotectable under copyright law.  The court remanded the case for further proceedings on Google’s fair use defense.  (15 U.S.C. § 107)  On remand, the district court held a jury trial on that issue.  The jury found in favor of fair use and the district judge denied Oracle’s motion for JMOL.

Oracle appealed and the Federal Circuit reversed, essentially going all-in on the issue of copyright infringement when it comes to software. First, fair use is a question that is largely addressed de novo by appellate courts, and second, when it comes to software, the court’s analysis all but says (expressly so!) that fair use can never apply.  This opinion comes on the shoulders of the same panel’s previous opinion concluding that Oracle’s API packages meet the requirements for copyright protection.  I see the court as going “all in” here both by its adoption of a nondeferential standard of review (keeping in mind that Ninth Circuit law is controlling), as well as the combination of its conclusions on protectability and inapplicability of fair use in this context.

Standard of Review

In a detailed discussion of the standards of review, the Federal Circuit concluded that, under Ninth Circuit case law:

  • the jury role in determining whether fair use applies “is limited to determining disputed ‘historical facts’ not the inferences or conclusions to be drawn from those facts” (Slip Op. at 24); “[a]ll jury findings relating to fair use other than its implied findings of historical fact must, under governing Supreme Court and Ninth Circuit case law, be viewed as advisory only.” (id. at 26).
  • we must assess all inferences to be drawn from the historical facts found by the jury
    and the ultimate question of fair use de novo, because the Ninth Circuit has explicitly said we must do so.

This framework should be familiar: it’s essentially the same approach that the court takes in reviewing nonobviousness determination, a fact that did not escape the court’s notice.  Slip Op. at 25, n. 4.  Since the meat of the fair use analysis is in the inferences drawn from the historical facts and the balancing of all the factors, the functional result of this standard of review was that the court largely reviewed the fair use determination de novo.

Fair Use Analysis

Much will be written about the court’s fair use analysis; most of it more insightful than anything I can offer.  The court’s analysis draws heavily on Ninth Circuit caselaw.  Here’s the gist:

  • Factor 1 (Purpose and character of the use): The Federal Circuit concluded that Google’s use was (a) Commercial; (b) Non-transformative.  In addressing the “commercial” aspect, the court drew heavily on the reasoning of Harper & Row and Am. Geophysical Union, and barely mentioned Campbell.  On the question of whether Google’s use was transformative, the court applied this requirement: “To be transformative, a secondary work must either alter the original with new expression, meaning, or message or serve a new purpose distinct from that of the original work.”  Slip Op. at 31.  There’s a lot of grist to grind here in the inevitable Supreme Court appeal.  Bad faith didn’t play a role because (1) it’s one-directional, weighing only against a finding of fair use, and (2) there was no basis for disturbing the jury’s implicit finding of no bad faith.
  • Factor 2 (Nature of the copyrighted work): The Federal Circuit concluded that this factor did weigh in favor of Google, but it was the only one that did.  Here, while the Java API may have met the minimum requirements for copyright protection, “reasonable jurors could have concluded that functional considerations were both substantial and important.”
  • Factor 3 (Amount and substantiality of the portion used): The Federal Circuit concluded that Google did not duplicate “the bare minimum of the 37 API packages, just enough to preserve inter-system consistency in usage,” thus copying only “only so much as was reasonably necessary.”  Instead, the court concluded: “We disagree that such a conclusion would have been reasonable or sufficient on this record.”  (Slip Op, at 46).  Furthermore, “(e)ven assuming the jury accepted Google’s argument that it copied only a small portion of Java, no reasonable jury could conclude that what was copied was qualitatively insignificant, particularly when the material copied was important to the creation of the Android platform.” (Slip Op. at 47)  (Is the court really saying that because the copied material was functionally important, therefore its copying was not fair use?)
  • Factor 4 (Effect upon the potential market): Either the most important factor or an equally important factor; maybe we’ll get more clarity on this in a Supreme Court opinion in this case.   This is basically the derivative/licensed market issue, which commentators can go in circles about.  The short of it is that the Federal Circuit reversed the district judge, agreeing with Oracle that the market harm was “overwhelming.”

Balancing: applying its de novo standard, the Federal Circuit concluded that Google’s use was not fair use.  “There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.”  (Slip Op. at 54).

All that said, the court concludes by refusing to say that fair use can never apply to software–although it’s statement simultaneously declines to cross that line while implying that’s what it’s reasoning leads to:

We do not conclude that a fair use defense could never be sustained in an action involving the copying of computer code. Indeed, the Ninth Circuit has made it clear that some such uses can be fair. See Sony, 203 F.3d at 608; Sega, 977 F.2d at 1527-28. We hold that, given the facts relating to the copying at issue here—which differ mate-rially from those at issue in Sony and Sega—Google’s copying and use of this particular code was not fair as a matter of law.

Stay tuned for the en banc petition–or perhaps direct request for certiorari.

*Note that this is the same panel as decided the earlier appeal in this case.  See 13-1021.Opinion.5-7-2014.1

Prior posts:

 

Federal Jurisdiction when Copyright/Patent Claim Found in Permissive Counterclaim?

Patent

Anne Schafly Cori v. Eagle Forum and John F. Shafly, 2018 WL 656598 (S.D. Ill. Feb. 1, 2018)

This is an odd case to raise the America Invents Act. It is a continuation of the break between Conservative Eagle Phyllis Schafly (d.2016) and some members of her Eagle Forum (including her daughter Anne Schafly Cori – the break was precipitated by Phyllis Shafly’s support of Donald Trump’s presidential campaign and ouster of dissenters (including the plaintiff) from the Eagle Forum.

The basic setup in this particular case is that the plaintiff (Schafly Cori) alleged breach of fiduciary duty, trademark infringement and unfair competition against the Eagle Forum. The defendants counterclaimed alleging copyright infringement along with trademark infringement, rights of publicity, unfair competition, and challenging the validity of a license to use certain trademarks. Rather than filing in Federal Court, the Plaintiff originally filed in Illinois State Court (Madison County) and the Defendants removed the case to Federal Court.

Not wanting to be in Federal Court, the plaintiff then amended her complaint to only assert state-law claims and asked for remand back to state court. This is where the America Invents Act comes into play. The AIA amended the federal removal statute 28 U.S.C.A. § 1454 to particularly allow for removal of civil actions where “any party asserts a claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.” The AIA also expressly removed jurisdiction from state courts – “No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.” 28 U.S.C. § 1338. Here, I expect that the defendants included the copyright claim primarily to get Federal Jurisdiction.

In its motion decision, the district court recognized the AIA requirement of removal of cases where one party asserts a copyright claim.** However, the district court ended up remanding the case – finding that the “core” of the plaintiff’s case is about ouster and legal control – not the particular materials being used. Based upon that disconnect, the court found the copyright counter claim “immaterial and made solely for the p purpose of obtaining jurisdiction.” Case remanded back to state court.

[ANNE SCHLAFLY CORI DECISION]

Note 1. It is clear that the district court missed some major steps in its analysis, although it might still have reached the correct conclusion. The statute is clear that a copyright infringement counterclaim gets the case federal jurisdiction, and the holding here suggests that there is leeway with that result. I don’t think so. Rather, the court should have determined whether the copyright claim should be properly dismissed and, if so, then remand.

Note2. ** The February 1, 2018 decision discussed here was based upon a request for rehearing. In its original decision, the court had incorrectly stated that “only the complaint may be considered when determining jurisdiction.” That ruling was based upon Holmes Group v. Vornado, 535 U.S. 826 (2002) that was overruled by the AIA statutory changes.

Are Copyright and Patent Overlapping or Mutually Exclusive in Protecting Software Innovations?

Patent,

Guest Post by Pamela Samuelson, Berkeley Law School.  Professor Samuelson’s newest article Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement, is forthcoming in the Berkeley Technology Law Journal.

“Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold.” So said the Supreme Court in Mazer v. Stein, 347 U.S. 201, 217 (1954).

In Oracle Am. Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014), the Federal Circuit invoked this language in rejecting Google’s “policy” argument that application program interface (API) designs were more appropriately patent, not copyright, subject matter. Id. at 1380-81. The Oracle decision seemingly accepted as unobjectionable the possibility of overlapping utility patent and copyright protections in program interfaces, and perhaps even of copyright as a gap filler for interface designs for which patents had not been obtained.

Because the contours of copyright and patent protections for software innovations remain unclear notwithstanding more than 50 years of experience trying to apply these intellectual property (IP) regimes to these utilitarian writings and virtual machines, the question of whether or to what extent copyright and patent overlap or are mutually exclusive continues to bedevil the field. The Federal Circuit’s Oracle decision is unlikely to be the last word on this subject.

Recently, I rediscovered the 1991 study that the Patent & Trademark Office (PTO) and the Copyright Office wrote about the software IP overlap or exclusivity issue. The Patent-Copyright Laws Overlap Study (May 1991) was prepared at the behest of the House Subcommittee on Intellectual Property and the Administration of Justice. The Study is more than 90 pages in length and has more than 50 pages of appendices.

[1991 Patent-Copyright Overlap Study]

Among the most significant of the Study’s software findings is that there is “no overlap in subject matter: copyright protects the authorship in a set of statements that bring about a certain result in the operation of a computer, and patents cover novel and nonobvious computer processes.” Letter from Ralph Oman and Harry F. Manbeck to the Hon. William J. Hughes, July 17, 1991 (transmitting the Study to the then Chair of the House Subcommittee).

Another finding is that “[p]atent protection is not available for computer programs per se,” which supports the Study’s conclusion that copyright and utility patent for programs are not “coextensive.” Study at iii (emphasis in the original). The Study identifies the doctrinal rationale for this exclusivity: program innovations “consist of mental steps or printed matter.” Id. at vii. Copyright and patent could, however, protect “totally different aspects” of program innovations. Id. at 2. The Study cited to the Supreme Court’s decision in Baker v. Selden, 101 U.S. 99 (1879) as the “bedrock opinion for the view that patent and copyright are mutually exclusive.” Id. at 19.

As for user interface designs, the Study reports that “[t]he mere display on a screen of commands, menus, questions and answers, forms, or icons is not generally considered patentable subject matter for utility patents” because “it is generally considered to be merely printed matter.” Id. at 45-46. Yet processes to produce user interface displays might be eligible for utility patenting. Id. at 47. (The Study discusses the possibility of design patent protection for icons. Id. at 46-47.)

Insofar as user interface screen displays have original expressive elements (e.g., videogame graphics), they would be eligible for copyright protection. Id. at 60-67. However, many aspects of user interface designs are akin to blank forms and lack originality. Id. at 68-69. Some aspects of user interfaces, such as lists of commands, are uncopyrightable under the doctrines of merger and scenes a faire and the words and short phrases exclusion. Id. at 70-71.

The Study recognized that some commentators had raised concerns about overbroad copyright protection for programs; yet, others, it noted, think that expansive protection is needed. Id. at 86-87. The Study concluded that this debate notwithstanding, it would be “premature” to conclude that the risks of overbroad protections were significant as there is “no overlap in subject matter” between copyright and patent. Id. at 88-90. The Study urged Congress to wait and see how the law evolved. Id. at 89.

“At the bottom of this debate,” said the Study, “it appears is the question of protection of functionality….” Id. at 87. It would be contrary to the statutory exclusions set forth in 17 U.S.C. § 102(b) for copyright to protect program functionality. (“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work.”) Study at 87. According to the Study, the protection of functionality “is assigned to patents where a much more rigorous test must be undergone and the barriers to entry in terms of time, cost, and complexity, are higher.” Id. at 88.

It is unfortunate that the Federal Circuit did not have access to this Study when deciding the copyrightability issue in the Oracle case, as its conclusions might have given the court pause about invoking the Mazer overlap-endorsing dicta in response to Google’s mutual exclusivity argument.

In a forthcoming article, Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement, I challenge the Federal Circuit’s conclusion that copyright and utility patent can provide overlapping IP protections for software innovations. The article notes that the Mazer dicta was made in the context of a real, if partial, overlap in copyright and design patent subject matters. Stein’s statuette qualified as a work of art under U.S. copyright law. However, used as the base of a lamp, the design was also eligible for design patent protection as an ornamental design of an article of manufacture.

The Court in Mazer was unequivocal about copyright and utility patents having separate domains. It cited approvingly to two of Baker’s progeny that had held “that the Mechanical Patent Law and Copyright Laws are mutually exclusive,” Mazer, 201 U.S at 215, n.33 (emphasis added). See Taylor Instrument Co. v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943) (no copyright in temperature recording charts because they were integral parts of previously patented machines) and Brown Instrument Co. v. Warner, 161 F.2d 910 (D.C. Cir. 1947) (accord). Overlaps in design patent and copyright subject matters had, by contrast, long been accepted. Mazer, 201 U.S. at 215, n.33.

The exact contours of utility patent and copyright protections for software innovations may not shimmer with clarity, but the 1991 Study adheres to the Supreme Court’s long-standing pronouncements in Baker and Mazer that copyright and utility patent are and should be mutually exclusive. Now if only the Federal Circuit can be made to understand this.

Register of Copyrights Selection and Accountability Act of 2017

Patent

In a largely bi-partisan vote, the US House of Representatives has passed H.R. 1695, the “Register of Copyrights Selection and Accountability Act of 2017.”  The Bill was introduced by Judiciary Committee Chair Bob Goodlatte (R-Va), and co-sponsored by Ranking Member John Conyers (D-Mich), among others.  The 378-48 vote included 46 Democratic Nays.  It is unclear whether the Bill will move forward in the Senate.

The proposal simply makes a structural change to the United States Copyright Office appointment process. Since 1897, the Register of Copyrights has been hired by the Librarian of Congress.  The proposal provides for Presidential appointment of the Reigster of Copyright, with advice and consent of the Senate. The position would be largely independent: having a ten-year renewable term with removal only for cause.

According to the Judiciary Committee Report: “The legislation ensures that all future Registers are chosen through this public process and also resolves constitutional concerns regarding the authority of regulations promulgated by the U.S. Copyright Office.”

Read the Bill

 

 

Register of Copyrights: Amending the Process of Selection

Patent

My proposal is to join the United States Copyright Office with the already existing United States Patent and Trademark Office to form a cross-doctrine United States Intellectual Property Office (USIPO).  Congress has other plans.

H.R.1695 – Register of Copyrights Selection and Accountability Act of 2017 – is moving forward in the house – being voted out of the Judiciary Committee earlier this week (27-1 vote).  The proposal would create a quasi-independent position of Register of Copyrights appointed by the US President for a 10-year term (with Senate confirmation) removable for cause.   An amendment approved by the Committee would limit Presidential appointment power. In particular, a six-member delegation of Congressional leadership plus the Librarian of Congress would recommend three qualified candidates for the President’s consideration.

The background for the changes stems from the recognition that the Register of Copyrights is currently seen essentially as an at-will employee of the Librarian of Congress – who is not really focused on IP Policy or Efficiency.

Supreme Court Cheers on Copyright Separability

Patent,

Screen-Shot-2016-05-02-at-2.27.31-PM1[1]by Dennis Crouch

Star Athletica v. Varsity Brands (Supreme Court 2017)

In a new Copyright decision, the Supreme Court has modified the doctrine of separability that allows for copyright of works of authorship associated with useful articles.

Under the statute:

The design of a useful article … shall be considered a [copyrightable] pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

17 USC 101.  Interpreting that statute, the Court here holds that the statute requires that an ‘artisitc feature’ of a useful article may be copyrighted:

if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.

In walking through this, the court held that two-dimensional surface decorations will not always be separable, but the ‘artwork’ applied to the cheerleader uniforms at issue here did pass the test.

The Star Athletica decision will further blur the line between the intellectual property spheres and savvy IP strategists will continue to layer overlapping IP rights.  A challenging aspect of the decision will be the “work of art” requirement.

Read the Decision: 15-866_0971

Google v. Oracle: Fair Use of a Copyrighted API

Patent,

by Dennis Crouch

Google v. Oracle (Fed. Cir. 2017) (pending software API copyright case)

In its return-trip to the Federal Circuit, the Oracle’s JAVA-Copyright case against Google appears have some chance of once again making interesting precedent.  I previously described the case as follows:

When Google wrote its program-interface (API) for Android, the company made a strategic decision to mimic the method-calls of Java.  Java was already extremely popular and Google determined that free-riding on Java popularity would facilitate its catch-up game in the  third-party app marketplace.  As an example, Google used the Java method header “java.lang.Math.max(a,b)”.  When called, the “max” function returns the greater of the two inputs.  In Android’s API, Google copied a set of 37 different Java “packages” that each contain many classes and method calls (such as “max()”).  Overall, Google copied the header structure for more than six-thousand methods.  Although Java is offered for both open source and commercial licenses, Google refused to comply with either regime.

Java’s originator Sun Microsystems was known for broadly sharing its creations without enforcing its IP rights.  That aura changed when Sun was purchased by Oracle.

Back in 2012, the N.D. Cal. district court ruled that the portions of Java structure that Google copied were not themselves entitled to copyright protection.  On appeal, however, the Federal Circuit reversed and ordered a new trial. In particular, the Federal Circuit panel led by Judge O’Malley held that the Java API taxonomy copyrightable as a whole and rejected the applicability of idea/expression merger doctrine. “Merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them.”

On remand, the jury sided with Google – finding that the accused use was a “fair use” and therefore not infringement.  On appeal, Oracle asks the court to overturn that verdict – both based upon the evidence presented and the additional evidence excluded.

Oracle has filed its opening brief that is supported by eleven additional amicus briefs. [Oracle Brief: 02-10-17_oracle-opening-brief-second-appeal].  Google’s will be due next month as well as amicus supporting the broader conception of fair use.

Although the briefs provide good arguments for the limited nature of fair use and the ‘creativity’ associated with API development, none of them squarely addressed how partial failings under 17 USC 102(b) should impact the fair use determination under Section 107.

102 (b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Although the API was found not to violate the limitations of 102(b), I would suggest that this close-call should have a relevant impact on the scope of fair use.  I would also suggest that platform-interoperability and being able to take advantage of a skilled work-force (i.e., Java Programmers) should be included within the fair use debate even if they don’t fully reach the 102(b) threshold.  Prof. Randy Picker works in this area and tries to tease-out what counts as legitimate restrictions on access and those that are illegitimate.

The Fair Use provision is written as follows:

107 [T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above
factors.

In walking through these factors, Oracle argues:

  1. Google’s purpose was purely commercial; not transformative; and not in good faith.
  2. API’s packages should be given strong protections because they are “undisputedly creative.”
  3. The API’s represent the “heart” of Java.
  4. The copying led to significant harms both to current and potential markets.

McNealy and Sutphin are former Sun Microsystems executives who helped develop and promote Java. In their amicus brief, the pair provide a nice overview of how Java works and its purpose.  The key portion of the brief here is the allegation that Google’s copying allowed it to “steal the legions of developers already using the Java platform.” The question for me is whether that is a harm protectable through copyright. [2017-02-17_mcnealy-sutphin_amicus-brief]  Software engineers Spafford, Ding, Porter, and Castleman add that the Java API should be given strong copyright protection because “design and expression of an API reflects the creative choices and decision-making of its author.” [2017-02-17_spafford-ding-porter-castleman_amicus-brief]

A group of 13 law professors have filed their brief in support of the copyright holder Oracle – arguing, inter alia, that (1) fair use is narrow by design; and (2) there is no special fair use test for copyrighted software.  Again here, the scholars do not address the 102(b) bar or the functional nature of the API – other than by noting that Google’s copying “achieve[d] the same functions as Oracle” and therefore was not transformative.   [2017-02-17_ip-scholars_amicus-brief]   Falling in-line, the RIAA suggests that the purpose-focused-transformation-test has no basis in the statute and should not be relied upon for fair use analysis.  [2017-02-17_riaa-amer-assn-of-publishers_amicus-brief]  Likewise, New York’s IP Law Association [2017-02-17_nyipla_amicus-brief] argues that a mere “change in context” cannot be seen as transformative for first amendment analysis.

The old Perfect-10 case almost seems to treat Google as if it is a library providing a major public service.  A number of briefs attempt to counter this pro-Google bias.  CCA (smaller mobile carries), for instance, argues that “Google’s current marketplace dominance with respect to mobile software platforms, online advertising, and online traffic is the result of many strategic decisions, including its decision to flout Oracle’s copyrights in Java – harming competition and CCA members.”  The ask her is simply: Treat Google as you would any other commercial market participant. [2017-02-17_competitive-carriers-assn_amicus-brief]

In perhaps the most moderate brief of this first round, the BSA argues that the equitable origins of the Fair Use analysis suggest favoring broad admissibility of evidence – unlike what happened in this case. [2017-02-17_bsa-the-software-alliance_amicus-brief].  Fair use should be limited to its origins as a “narrow and equitable tool for promoting public benefits like criticism, comment, news reporting, teaching, scholarship, or research.” [2017-02-17_paca-digital-licensing-assn_photographers_amicus-brief]. Former Register of Copyrights Ralph Oman agrees with this approach. “Google’s copying of the Java APIs is inconsistent with the historic goals of the Fair Use Doctrine.” [2017-02-17_ralph-oman_amicus-brief].

The MPAA, Screen Actors Guild and other combined efforts in a short brief arguing simply that the market for a copyrighted work should not be limited to the existing market for the work, but should also include “traditional, reasonable, or likely to be developed markets.” Quoting Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 930 (2d Cir. 1994). [2017-02-17_mpaa-ifta-sag-aftra_amicus-brief]. Here, the district court refused to consider (or allow the jury to consider) potential markets for JAVA including television, automobile, and wearabledevice markets. The Copyright Alliance agrees that the district court’s approach to looking at impact on current market (rather than potential market) in the fair use analysis is “particularly problematic for small businesses and individual creators . . . who may not have the resources to enter all potential or derivative marketes at once.”  [2017-02-17_the-copyright-alliance_amicus-brief]

 

Coming in 2017: Reforms to Copyright Law and the Copyright Office

Patent

First proposal:

  • While keeping the Copyright Office within the Legislative Branch, separate it from the Library of Congress.  I have previously suggested the more dramatic action of joining the Copyright Office with the Patent & Trademark Office to allow for better coordination of rights. 
  • Modernize copyright office technology. PLEASE DO THIS! 
  • [Copyright-Reform.pdf]

Mike Masnik (Techdirt) writes: Congress Proposes First Stages Of Copyright Reform, And It’s Not Good.

 

Copyright on a Useful Item

Patent

Screen-Shot-2016-05-02-at-2.27.31-PM[1]Today the Supreme Court heard oral arguments in the pending copyright case of Star Athletica v. Varsity Brands.  Although not a patent case, the issue involves the boundary line (if any) between patent and copyright and the “useful article” exception. Question Presented: What is the appropriate test to determine when a feature of a useful article is protectable under section 101 of the Copyright Act.  The statutory test under Section 101 states that “the design of a useful article . . . shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

Clothing has traditionally been seen as useful and therefore not itself subject to copyright protection.  Here, the subject matter is the design of a cheerleader outfit (see image at right).

Petitioner (Mr. Bursch) began with a provocative statement that probably says more about copyright law than the case itself: “Mr. Bursch: Congress did not intend to grant a century-long copyright monopoly in cheerleader uniform design.”

I expect that the court’s consideration of this case will also have some impact on its views regarding the coverage of design patents in Apple v. Samsung.

 

Read the transcript

 

Maria Pallante Out as Chief of Copyright Office: New Calls for Unified US Intellectual Property Office

Patent, ,

In some interesting news – On Friday Oct 21st, Maria Pallante was apparently removed today from her post as Register of Copyright within the Library of Congress and Karyn Temple Claggett moved up as Acting Register.  According to reports, newly installed Librarian of Congress Dr. Carla Hayden ordered the change that involved Pallante being locked-out of her computer Friday morning.

An oddity – the US Copyright Office is part of the Library of Congress and thus under direct administration of Congress rather than the President (and Congress is not very good at running administrative agencies).  Under the current structure, the Register position is quite weak.  That said, Congress has recently relied upon the Copyright Office to make increasingly important market determinations.  However, the structure means that the President and Executive Agencies cannot rely upon the US Copyright Office for advice about copyright law or rely upon the agency to shape its policy.

In a 2012 post, I suggested creation of a United States Intellectual Property Organization (USIPO) akin to the UK IPO, Canadian IPO, and World Intellectual Property Organization (WIPO).  The structure would essentially be an expansion of the USPTO under presidential control although obviously still required to follow law set by Congress.  In 2012 I wrote that:

From a theoretical standpoint, it is unclear whether the [current] fractured administrative structure leads to rights that are either too strong or too weak.  What we can tell is that the [current] structure leads to a lack of coordination in administration of the various IP systems within the US.

A big problem with the fractured administration is that many operating businesses relying upon intellectual property (IP) rights typically do not focus on a single form of IP rights but instead take a layered approach that includes some combination of patent, trademark, copyright, contractual, employment, trade secret, and design rights, for instance. Each form of protection has weak points and overlapping coverage provides a greater level of certainty.  That overlapping nature also creates difficulties for users that hope to rely upon the public domain and fair use.  The overlapping approach suggests the need for a more unified administration approach to help ensure that IP rights serve their policy goals.

In her role as Register of Copyrights, Pallante had advocated transforming the Copyright Office into an executive agency.  It is unclear, however, whether those statements relate to her recent removal.

 

Lawyer who copied and filed substantial portion of draft brief of co-party on appeal held to have violated copyright laws

Ethics, Patent

The court in Newegg Inc. v. Ezra Sutton, PA (CV 15-01395 TJH C.D. Cal. Sept. 2016) (here), faced some interesting facts.  Boiled down, a lawyer representing a co-appellee of Newegg at the Federal Circuit copied a substantial portion of a draft brief written by a lawyer for Newegg, and filed it.

According to news reports, after that, the lawyer withdrew that brief and filed a shorter one which, allegedly, still was based substantially on Newegg’s draft brief.  Newegg then registered copyright for its brief after they were filed, covering both the draft and final brief.  (My mind wonders… if you register copyright on a draft brief, what’s the scope of waiver?) Then Newegg sued the lawyer for copyright infringement.

Rather than raising fair use right away, the defendant lawyer late in litigation moved to amend the final pre-trial order to add fair use as an affirmative defense; and the plaintiff moved for partial summary judgment on infringement.  In an order granting the defendant lawyer’s motion to amend the final pre-trial order to add fair use, the district court held that there was no fair use on summary judgment.  Thus, the lawyer was liable.

This creates some very interesting problems for lawyers, and calls to my mind the case a few years ago where a patent prosecutor was sued for using language from a patent in a specification for another client.  I’m not a copyright lawyer, and so just raise this case for you to think.