Sunday, November 30, 2008

In Memoriam Sir Hugh Laddie

Baruch dyan ha-emet. “Blessed is the Judge of Truth,” is an expression uttered when one hears news of a terrible loss, especially death. It is the expression I used when I heard of the death of Sir Hugh Laddie, zikhrono livrakha.

Sir Hugh was buried today in London. He was born in 1946. His mother is, I believe still alive at the age of 91. Though he didn’t learn a great deal of Yiddish, his mother was fluent in it: when her grandparents fled Russia to England, the only way to communicate with them was in Yiddish. His father died some time ago, but this last year was the first Kol Nidre he had missed, due to his health. Although Hugh did not accept the existence of a divine spirit, Kol Nidre had been for him a day of intense family bonding, and so the inability to go to it this last year was a source of regret.

When I stopped my blog, Hugh posted a comment urging me to resume. I haven’t resumed it , but the loss of my dear friend warrants a farewell.

Sir Hugh studied at Aldenham School and St Catharine's College, Cambridge. In 1980, he and his co-authors Peter Prescott and Mary Vitoria published the first edition of their landmark treatise, The Modern Law of Copyright and Design. (Last year a fourth edition was published). At the time it was seen as a quite courageous thing to do because the existing standard textbook in England - Copinger and Skone James - was taken for granted. At the time of Hugh’s treatise, there was no perceived need for anything else. Paul Torremans, reviewing the third edition in EIPR in 2001, described some of the chapters as revolutionary: they dared to have views that did not jibe with the status quo, and to express those views publicly.

After being called to the bar, Sir Hugh also performed valuable public service: in 1992 he was appointed Vice Chairman of the Copyright Tribunal, a statutory body that settles disputes between collecting societies and users of copyrighted works over royalty rates. In 1986, he was appointed a Queen’s Counsel (having been called to the bar in 1969). From 1981 to 1986, he served as a counsel for Her Majesty’s Treasury, a capacity in which he represented the British Government and the British Patent Office in all areas of Intellectual Property law litigation.

After 25 years as a successful IP barrister (during which he developed a well-deserved reputation as an expert patent and trademark lawyer too), he was appointed a Justice of the High Court in 1995, hearing cases in the Chancery Division and Patents Court (which includes copyrights).

On the bench, he continued the honesty and humor that was as much a part of his personality as his searing intellect and personal warmth. Here, for example, is an excerpt from a BBC story, about a dispute between two bands:

The judge in a court case involving two groups called Blue has been demonstrating his knowledge of the finer points of the pop and rock world.

Mr Justice Hugh Laddie is in charge of the case in which pop act Blue are being sued by a 1970s rock band of the same name. The original Blue want to prevent them from using the name, saying their own career and reputation is being damaged. They are suing the contemporary boy band and their label EMI/Virgin, for up to £5m.

As proceedings began at the High Court, Mr Justice Laddie defied the image of Britain's crusty, out-of-touch judiciary with some pithy examination of counsel. The judge - known for his broad taste in music - appeared surprised when the older band's barrister said their reputation was being threatened.

"Are you seriously saying that fans of one group would mistake one for the other?" he asked Charles Purle QC.

“There is somewhat a difference of appearance. One is aged like you and me, the other is a boy band." Mr Purle said: "My clients were a boy band in the 1970s."

The judge replied: "Oh no. Boy band is a style of music that is a bit more recent than the Charleston."

He resigned in 2005, the first High Court judge to do so in 35 years. His resignation caused a furor (in British spelling "furore," signifying a great degree of sturm und drang than the shorter, more base U.S. emotion). An article in the Times Online awhile after his resignation, a few wonderful quotes from Sir Hugh:

I was at the Bar for 25 years. I had a truly stupendous time. I still think, if you’re lucky and get a good practice, it’s a great job.” But with the heavy and tiring workload — “it was the only thing my wife and I would argue about” — he had no doubt about becoming a High Court judge. “There was only one direction — down. You can’t stay at the top for ever.”

For the first five years, he enjoyed it. But aspects jarred. “One thing is that you are really isolated. You can go all day without speaking to another judge.” So he set up a common room where judges could meet weekly for teas. Laddie, who was senior judge of the Patents Court, also believed strongly that the courts should serve litigants, not the profession. “That meant I was determined to try to cut costs to a point where I used to irritate people.

“Everyone has egos — it’s a matter of how difficult you find it to control.” Laddie did not endear himself to counsel when, at the start of a case, having read the papers, he would make clear his preliminary views. “Obviously I had provisional thoughts — it would be amazing if I didn’t. Some would say: he’s made up his mind. I hadn’t, of course.”

Laddie also objected to sitting on Chancery cases beyond his expertise. Had he taken a case outside his field at the Bar, he’d have left himself open to a negligence action, he says. But the moment he was a judge he was expected to do just that. “It was challenging — like high-wire walking — but I didn’t think it fair for clients to be learning at their expense.” Most worrying were the cases involving unrepresented litigants, with applications “ in an area of law that I knew nothing about”.

Nevertheless, despite the extremely hostile reactions of some of his colleagues to his resignation, in July of this year, Sir Hugh defended the British judiciary: "They were not people who used quill pens. They're computer literate, savvy, quite ordinary, nice people and not hidebound traditionalists.”

Rather than retiring to the country and practicing his fly-fishing technique, Sir Hugh joined the IP boutique Willoughby & Partners as a consultant. In that capacity, I had the great joy to hire him in 2007 as an expert on UK law for an amicus brief I filed in a case involving Uri Geller. Plaintiff asserted that a resident of Pennsylvania who was a critic of Geller’s committed a violation of UK law by uploading an allegedly infringing video on to YouTube’s servers, from which the video was hosted for others to view. Sir Hugh wrote in his report, however, that “a finding of infringement through authorization is dependent upon there being a finding that the person who was authorized, committed an infringement of United Kingdom copyright by performing, in the United Kingdom, one of the activities set out in section 16(1).” He concluded: “It follows from this that if the primary acts of which the plaintiff complains took place outside the United Kingdom there cannot be infringement of British copyright. Alleging authorization makes no difference to this. It is not an infringement to authorize a non-infringing activity.” After I filed Sir Hugh’s report, plaintiff did not even bother to file an answer and the case was settled.

In addition to being a consultant to the Willoughby firm, Sir Hugh became Professor Laddie when, in 2006, he became a Professor of Intellectual Property Law at University College London. There he founded the Institute of Brand and Innovation Law (IBIL). He wrote me a note recently about this post:

I thought that being a Professor entailed nothing more than walking around looking sombre while talking in obscure English. Apparently there's more to it than that. There are lectures, exams, exam-marking and begging people for support funds. At least on the last issue I got some help from a friend. I had sent out a number of begging letters to various firms of lawyers and was having dinner with this friend. I told him what I had done. .. . He asked me whether I had telephoned all the people to whom I had sent a letter. I was horrified. I didn't think it was part of my job to actually phone people up and ask. He pointed out, not unreasonably, that most people do not respond to letters asking for money and that really what you have to do is to speak to them either face-to-face or on the phone so that they feel too embarrassed to refuse. … I have got quite used to it now. I have developed an extremely thick skin and, by English standards, I think I have been rather successful.

In connection with the University’s Institute of Brand and Innovation Law , in June of this year, he gave an interview on the question of piracy in China and made these remarks. (I would love to know whether they made their way to USTR):

China has become a scapegoat for the West’s intellectual property problems, a leading lawyer said today. Sir Hugh Laddie, a former High Court judge, said that although China had issues with counterfeiting and other forms of intellectual property theft, there was a “complete misconception” about the scale of the problem relative to other countries. Sir Hugh said: “Of course there is counterfeiting in China, but the same goes on in the US and Europe. Pro rata, the biggest source of pirated computer software in the world in the US.”

Sir Hugh’s courage extended to his decisions on the bench, most famously in the Arsenal case. Marty Schwimmer described Sir Hugh’s actions in the case this way,

A vendor sold scarves with the Arsenal football club name and indicia. The issue turns on whether use of a team name in such way is trademark use in that sense that the team name designates the origin of the good, or is the team name and logo merely decorative use in the sense that the wearer of the scarf is merely communicating allegiance to that team. It's my understanding that Laddie himself tends toward the latter view ... . Laddie referred the case to the ECJ. Now that the ECJ has ruled that of course it's trademark use, Laddie has refused to follow its decision, apparently relying on the fact that the ECJ made fresh findings of fact, something it had no power to do.

The court of appeals reversed him. Reversal by a higher court doesn't of course mean HL was wrong, only that he had the courage to point out the dangerous usurpation by the EU, an "Emperor Has No Clothes" statement that must have embarrassed the court of appeals. May we all emulate him. Nor did his opinion stem from antipathy toward EU rights. Quite the contrary, in his earlier, 2001 Burrell Competition Lecture, "National I.P. Rights: A Moribund anachronism in a Federal Europe," 23 E.I.P.R. 402 (2001), he concludes "Now that we are in a single market, our domestic economy is Community-wide. So should our I.P. rights be. ... I can only hope that the Community trade mark will prove such a success that users will vote with their feet and will use it to the exclusion of national rights."

In the field of copyright, two of Sir Hugh’s articles should be laminated and placed on your desk so they may be re-read often. The first is his 1995 Stephen Stewart lecture, "Copyright: Over-strength, Over-regulated, Over-rated", published in 18 European Intellectual Property Review 253 (1996). Sir Hugh began the lecture this way:

The purpose of this lecture, given in honour of the memory of a clever and perceptive copyright lawyer, is to consider the current state of copyright law in this country. Does it meet current commercial needs? My purpose this evening is to ask questions and possibly raise doubts. Copyright is one of the quartet of monopolies which form the core of what is now known as intellectual property law. The others, of course, are patents, trade marks and registered designs. I suppose that since the introduction of the unregistered design right in the 1988 legislation, there really is a quintet of such rights. Each, in its own way, places a fetter on the right of others to compete in the market-place with the originator of the right or his employer. Therefore, to some extent, each distorts trade.

If this were all, these monopolies would work against the interests of the public at large. At the simplest level it can be said that the existence of a monopoly enables the monopolist to increase his prices or restrict supply as he pleases. Of course, we know that that is much too superficial a view. It ignores all the benefits to the public at large which can flow from the increased creativity and investment which are the product of a well-balanced monopoly system. But we must always bear in mind that monopoly legislation is the end result of a balancing act: is the restraint on competition justified by the benefits which it gives to society at large? In this lecture I would like to consider this basic balancing act as it applies to copyright.

One of the areas where he felt the balance was out of whack was with the length of copyright and the low standard for originality, seen in this passage:

[A]s a result of the Term Directive, the copyright in the first category of works, that is to say, literary works and so on, is now life of the author plus 70 full years. This additional 20 years has been imposed throughout the Member States of the European Union to bring us into line with the domestic law of Germany. As is now familiar in copyright law, the process was one of leveling up the protection rather than levelling down. The result of this new term is that if, for example, a young computer programmer writes a new piece of computer software, he generates a monopoly which will normally last for over 100 years. Depending on his longevity, it may last more than 150 years. Similarly, if a politician writes letters or speeches which are of general historic interest, they also may be protected for a century or more. Indeed, if a modern-day architect were to design a new Albert Memorial, he would have the satisfaction of knowing that his copyright is likely to be sprightly and in the prime of life long after the concrete and steel of his architectural creation have started to crumble.

The question to be asked is: what justification is there for a period of monopoly of such proportions? It surely cannot be based on the principle of encouraging artistic creativity by increasing the size of the carrot. No one is going to be more inclined to write computer programs or speeches, compose music or design buildings because 50, 60 or 70 years after his death a distant relative whom he has never met might still be getting royalties. It is noticeable that this expansion of term is not something which has only occurred in the last decade. On the contrary, it has been a trend which has been in evidence for the whole of this century. Before the 1911 Act, the term of copyright in artistic works extended to seven years after the author's death. In 1911 this was extended to 50 years after death. The growth of term is in fact greater than these figures suggest. Life expectancy in 1910 was far shorter than it is now. The result is that a monopoly which was expected to last about four decades in 1910 should now be expected to last on average more than three times as long.

Indeed, I believe that the same criticism of excessive duration can be leveled at the 50-year flat term which applies to films, recordings and broadcasts. It may be possible to pick out a few creations of exceptional artistic or commercial merit where one could argue for lengthy protection - for example, the recordings of Rostropovich or the Beatles - but is it right that all copyright should be protected on the basis of what might be thought justified for the exceptional few? Furthermore, it is possible to argue that these long copyright terms are not necessary to protect the commercial exploitation of the works themselves. Most works protected by copyright are exploited very rapidly, if at all. This is so whether we are considering films and records or literary works such as computer software. Even books such as those that win the Booker prize are only commercially successful for a short time and then, to all intents and purposes, pass away. Yet the dead hand of copyright lingers on, in most cases serving no useful purpose.

Another of the problems with copyright law is that, unlike inventions protected by patent or designs protected by registration, the requirements for qualification are so low as to be virtually non-existent. Virtually any written material, any sketch and any film footage or sound recording is automatically protected. This has practical consequences. In Elanco v Mandops, the Court of Appeal accepted, as it had to, that a label of instructions placed on the side of a barrel of herbicide was a copyright literary work. No doubt depending on the youth of the literary genius who wrote it, the label will be protected for more than a century and perhaps for as long as a century and a half - certainly well beyond the date when for safety or commercial reasons the product has been removed from the market. So one of the troubles with copyright, then, is that it springs up to protect nearly every creation of the human mind, be it ever so trivial. As another member of the judiciary put it, the fact that our system of communication, teaching and entertainment does not grind to a standstill is in large part due to the fact that in most cases infringement of copyright has, historically, been ignored.

He criticized the insane criminalization of the economic tort of copyright infringement: “We have … reached the stage where taxpayers' money is being used to enforce private rights which many might think are more than adequately protected by civil remedies. I should also mention that it appears that in most cases it is not the poor and weak who are using these criminal provisions but the rich and well organised.” Importantly for the current debates around the world on air use versus fair dealing, Sir Hugh came out in favor of fair use, beginning with criticisms of the 1988 UK Copyright Act’s enumerated and lengthy list of possible fair dealings:

These detailed and pedantic exceptions to copyright protection, and their predecessors in the 1956 Act, are not only difficult to understand in some cases, but they also reinforce the perception that virtually all reproductions of copyright works, no matter how innocuous, are infringements. Is it surprising then, that when, for the purposes of advertising the film "Carry on Cleo', a poster was created which was a harmless but humorous spoof of a similar poster for the Elizabeth Taylor/Richard Burton film "Cleopatra', it was held to infringe copyright.

It would be possible to go on criticising the width of our copyright laws, but perhaps I have said enough. It might be more useful to inquire why our law has developed as it has. I have mentioned already the value and size of the industries which now believe they need extensive copyright protection to safeguard their income stream. They, quite properly, lobby for their interests. But who lobbies against them? There is no trade union of copyright infringers. Support for any limitation on copyright is easily portrayed as support for pirates - the usual pejorative global expression for infringers. It is depicted as support for the parasites of industry. Is it surprising, then, that the scope of protection gets ever wider? I suggest that the drafting of the legislation bears all the hallmarks of a complacent certainty that wider copyright protection is morally and economically justified. But is it?

Sir Hugh’s second speech, his inaugural talk as a professor at UCL, was delivered on December 4, 2007; it is entitled “The Insatiable Appetite for Intellectual Property Rights.” Alas, I do not think it has been published or is available online. In this talk, Sir Hugh noted a point deliberately obscured by the property rights rhetoric, that competition, not ownership is the natural state of affairs:

We believe in competition. It is competition which, by and large, delivers better and cheaper goods and services to the consumer. Competition is the whip
which drives traders to offer more for less to their customers. … If they don’t they will lose market share and profits to competitors who do. In our system, competition is king. It is the enemy of complacency. …

So where do IP rights fit into this? After all, they appear to undermine the very basis of our economic success. They hinder by creating areas of exclusivity. What are they supposed to deliver which justifies this subversion of the free market?

Sir Hugh’s answer was this:

The function of IP rights is to provide an economic incentive to goods and services, which, absent the would not exist or would take many more years to reach the market. They make up for a defect in the competitive system by supplying an incentive where otherwise there would be none.

This answer is orthodox, but here is how Sir Hugh ties the orthodoxy into his views on competition:

IP rights are the carrot to competition’s stick. Their purpose is not to displace competition but to modify it, to create sufficient economic incentive to justify the labour and investment in new products or art, but, after that incentive has worked its magic, to allow the normal forces of competition to have their way. … [O]nce the incentive has had its effect there is no further justification for its retention. It has done its work and competition should be allowed to return.

It is this last point that the property rights rhetoric wish to deny, but which Sir Hugh won’t allow. Sir Hugh concluded as follows:

We should be trying to hone the system so that the greatest rewards and encouragement go to
those industries which need and deserve them the most. Where IP rights perform their function of advancing the science or arts, they should be encouraged to do so. Where or to the extent that they do not, they have no justification and the normal discipline of competition should apply. The gluttony which has resulted in the growth of completely unnecessary or excessively long IP rights undermines the system itself. As Shakespeare wrote in Richard II,
--“With eager feeding food doth choke the feeder.”

We have lost a great treasure; a man whose erudition and practical experience rightly gave his views tremendous influence; a man whose honesty and candor was as rare as it is essential. Sir Hugh faced death as he did life, and we can learn from him in this too. He did not have a fear of death for himself, but instead worried about how his death would upset his beloved wife Stecia and children. Shortly his death he told me:

I am as greedy as the next man and want more of the fun and love-filled days that I have enjoyed in the past. But all these things come to an end at some time and I am not in a position to complain. I have a wonderful wife, three great children, six challenging and fun-filled grandchildren, have had a remarkably enjoyable career and have achieved more than I deserved and, last but not least, have a collection of wonderful and generous friends. What more could I ask for?

Friday, August 08, 2008

Restoring Old Posts

The voice of the people has been heard. I will restore the posts, hopefully by tomorrow. This is not what I would prefer, but I respect that almost everyone else feels differently, other than those anonymous posters who were happy for the blog to go anyway. As I mentioned before, because I laboriously deleted the posts one-by-one, I needed a tool to capture the actual URLs for each post, which isn't as easy as it sounds since the URL did not always match the title of the blog. Thanks to Peter Ecklersley, who developed very cool tool to capture the URLs, and the great Blogger support team, almost all have been recaptured. They were recaptured as drafts though and there are posting limits that have to be overridden, so some work needs to be done yet. I will also try and cross reference those posts that were not captured and add them later.

Because so many people wrote asking for an archive, I will also compile an archive and send it to those who asked for it. That archive will not contains comments because the actual posts will be available for people to access. Deleting the comments from the archived posts will helpfully reduce the size of the archive, and avoid unanswered questions about the status of comments.

Thanks all of you for your kind words, and I hope restoring the links will show will my appreciation.

Wednesday, August 06, 2008

Archiving the Blog

It may sound trite to say I am overwhelmed by the response to ending the blog, but I am. I have read all the requests to either restore old posts or create an archive of them. As much care as I gave to the posts (well, most of the time), I regarded them as ephemera. In the past I weeded out old ones I thought unsuccessful. This time, I deleted them one by one, rather than just killing the blog in its entirety since if I had killed the blog in its entirety, that would have simultaneously killed the last post announcing the end of the blog too. But because I eliminated the posts one by one, to restore them, I would have to restore them one by one, by URL, rather than by name of the post. That's way too much work for something I am not wild about anyway.

But, since so many people asked, I am doing this: I am creating a file with most of the posts (weeding out really trivial one). I will organize them by subject matter too, like registration issues, or infringement issues, architectural works, photographs, or discrete policy issues etc. I will finish in a number of days and will happily send the file to anyone who wants it. (You can email me at: I am happy if anyone wants to take the file and host it. I am also happy for anyone to copy any or all of the cached copies and do whatever they want with it. I will also revisit the issue of posting again after I have had a break and if I can figure out the answer to the problems I noted.

Thank you all very much for your comments and support. I still have my day job doing copyright, I still have the treatise which I update twice a year, and I may have a book on copyright discourse if I can find something constructive to say.


Friday, August 01, 2008

End of the Blog

I have decided to end the blog, after doing around 800 postings over about 4 years. I regret closing the blog and I owe readers an explanation. There are two reasons.

1. The Inability or Refusal to Accept the Blog for What it is: A Personal Blog

I have been a full-time copyright lawyer for 26 years. My late mother, aleha ha-shalom, told me repeatedly that I had a religious obligation to learn every day, and I have honored her memory by doing exactly that. Learning also involves changing how you think about things; it doesn't only mean reinforcing the existing views you already have. In this respect, Second Circuit Judge Pierre Leval once said that the best way to know you have a mind is to change it, and I have tried to live by that wisdom too. There are positions I have taken in the past I no longer hold, and some that I continue to hold. I have tried to be honest with myself: if you are not genuinely honest with yourself, you can't learn, and if you worry about what others think of you, you will be living their version of your life and not yours.

I started the blog when I was still in private practice with the above goals in mind and one more: I felt there was no blog devoted to the geekery of copyright; meaning a blog where people who loved copyright could come and discuss copyright issues in a non-partisan way. In order to encourage open discussion I permitted not only comments but anonymous and pseudonymous comments. I did that because I wanted to encourage the largest number of people to participate, and after four years I believe that was the right decision. But it is also the right decision to end the blog. While in private practice I never had the experience of people attributing my views to my firm or to my clients. I moved from private practice to Google I put a disclaimer to the effect that the views in the blog (as in the past) were strictly mine. I also set a policy, which I strictly adhered to, of never discussing cases Google was involved in, and I refrained from criticizing those with whom Google was involved in lawsuits. I did not run ads, including not using Google's AdSense program. I cannot see what more I could have done to make what was a personal blog more separate from my employer.

For the first year after joining Google, with some exceptions, people honored the personal nature of the blog, but no longer. When other blogs or news stories refer to the blog, the inevitable opening sentence now is: "William Patry, Google's Senior Copyright Counsel said," or "Google's top copyright lawyer said... ." There is nothing I can do to stop this false implication that I am speaking on Google's behalf. And that's just those who do so because they are lazy. Others, for partisan purposes, insist on on misdescribing the blog as a Google blog, or in one case involving a think tank, darkly indicating also a la Senator Joe McCarthy, that in addition to funding from Google, there may be other sources of funding too. On Blogger, blogs are free. The blog had no funding because it doesn't cost anything, because I don't run ads, and because it was my personal blog, started before I joined Google.

On top of this there are the crazies, whom it is impossible to reason with, who do not have a life of their own and so insist on ruining the lives of others, and preferably as many as possible. I asked myself last week after having to deal with the craziest of the crazies yet, "why subject yourself to this?" I could come up with no reason why I should: My grandfather chose to be a psychiatrist, but I chose a different professional path, one that doesn't obligate me to put up with such nonsense.

In the end, I concluded that it is no longer possible for me to have a blog that will be respected for what it is, a personal blog. I don't draw any grand conclusions from this and hope others don't either. The decision was 100% mine. No one at Google ever asked, suggested, or hinted that I should end the blog. To the contrary, in keeping with Google's deep commitment to free speech, the company encourages blogs like mine, and has stood completely behind me.

2. The Current State of Copyright Law is too depressing

This leads me to my final reason for closing the blog which is independent of the first reason: my fear that the blog was becoming too negative in tone. I regard myself as a centrist. I believe very much that in proper doses copyright is essential for certain classes of works, especially commercial movies, commercial sound recordings, and commercial books, the core copyright industries. I accept that the level of proper doses will vary from person to person and that my recommended dose may be lower (or higher) than others. But in my view, and that of my cherished brother Sir Hugh Laddie, we are well past the healthy dose stage and into the serious illness stage. Much like the U.S. economy, things are getting worse, not better. Copyright law has abandoned its reason for being: to encourage learning and the creation of new works. Instead, its principal functions now are to preserve existing failed business models, to suppress new business models and technologies, and to obtain, if possible, enormous windfall profits from activity that not only causes no harm, but which is beneficial to copyright owners. Like Humpty-Dumpty, the copyright law we used to know can never be put back together again: multilateral and trade agreements have ensured that, and quite deliberately.

It is profoundly depressing, after 26 years full-time in a field I love, to be a constant voice of dissent. I have tried various ways to leaven this state of affairs with positive postings, much like television news shows that experiment with "happy features." I have blogged about great articles others have written, or highlighted scholars who have not gotten the attention they deserve; I tried to find cases, even inconsequential ones, that I can fawn over. But after awhile, this wore thin, because the most important stories are too often ones that involve initiatives that are, in my opinion, seriously harmful to the public interest. I cannot continue to be so negative, so often. Being so negative, while deserved on the merits, gives a distorted perspective of my centrist views, and is emotionally a downer.

So between the inability or refusal of some people to accept the blog for what it is -- a personal blog --- and my inability to continue to be Cassandra, I decided it was time to pull the plug. I thank profusely all those who have accepted the blog for what it is, and who have contributed so much to it and to my learning over the years. I intend to spend my free time figuring out a constructive way to talk about the difficult issues we face and how to advance toward their solution.

It was a Crime Alright but was it Pled Properly?

The Sixth Circuit just handed down a case that involves unusual questions of pleading in a criminal indictment, United States v. Teh. Defendant Thian Teh was arrested at the Detroit airport after flying in to the country from Malaysia. Customs had previously seized shipments of counterfeit DVDs sent to defendant's business in Oklahoma. When his luggage was searched at the airport, Customs officials found four boxes with 756 DVDs and 284 DVD sleeve packages. The DVDs were counterfeit and of poor quality. Defendant claimed he didn't know what was in the boxes and that a friend had asked him to deliver them to the friend's daughter. There was bench trial; defendant was convicted and appealed.

Defendant was charged with "fraudulently or knowingly import[ing] ... merchandise contrary to law." He was charges with violating 18 USC 545, which pretty much states what I just quoted. But what was the law that defendant acted contrary to? Obviously the copyright act, but the government never referred to any statute other than Section 545, nor specified at any time how the proof met the contrary to law element of Section 545. This failure, the court of appeals noted, "[w]ithout question ... caused considerable confusion for Teh, the government, and the district court." The indictment did allege that the DVDs were "counterfeit" and "in violation of ... copyrights," but as defendant pointed out "a copyright is not a law."

In the end, the court of appeals confirmed the conviction, as a kind of harmless error, but there is nothing harmless in this type of counterfeiting: it is a cancer on the motion picture industry, and a quite appropriate use of government resources to stop it. Hopefully, in light of the Teh case, some of those resources will be allocated to proper drafting of indictments.
H.T. to C.E. Petit.

Wednesday, July 30, 2008

Educators Forced to Become MPAA's Cops

On July 30th, the House and Senate conferees approved the Higher Education Act reauthorization conference report, H.R. Rep. 110-803, to H.R. 4137. The bill, expected to become law soon, includes the College Opportunity and Affordability Act. Some may recall efforts last year to condition federal aid to universities on those institutions employing filtering technology. Senate Majority leader Harry Reid would have also mandated that the Secretary of Education compile a 25 “worst offenders" list of those schools with the highest levels of illegal P2P file sharing. The idea wasn’t original, MPAA had already compiled its the top 25 list. MPAA head Dan Glickman put out this press release at the time:

Some college students are abusing powerful taxpayer funded computer networks to download and distribute movies and other copyrighted material which is why we are committed to working with universities to develop and implement plans to address this problem. We commend Senator Reid for his leadership in getting this important legislation passed through the Senate which will help encourage universities to do more.

At the time, Mr. Glickman estimated that downloading at universities cost the industry $500 million annually. Why not the Austin Powers ONE BILLION DOLLARS? Apparently members of Congress later failed to read the MPAA’s January 2008 admission that its numbers in a commissioned survey about the extent of alleged unauthorized file sharing on campus were way off, the result of alleged “human error.” But even the new number was phony and also failed to take into account the fact that most students live off campus.

This raises one of the features of Washington DC that rightly baffles those outside the Beltway: how is that a trade association gets an issue so wrong, but then still manages to get legislation passed that addresses a non-problem that the association deliberately concocted? The answer, supplied by Mr. Glickman, is: leadership.

MPAA’s initial efforts were defeated fortunately, and the history of the bill during late 2007 and early 2008 is recounted in a series of very informative posts by Anne Broache for Cnet here , here, and here. Congress, in the bill that just passed, instead of mandating filtering and bad boy lists, mandated various requirements for educators to undertake, all of which involve spouting MPAA and RIAA’s propaganda. Here are the relevant pages from the Joint Explanatory Statement of the Managers in the Conference Committee report describing the requirements:

Institutional and Financial Assistance Information for Students.

The Senate amendment and the House bill require institutions to make available to current and prospective students the institution of higher education's policies and sanctions related to copyright infringement, including a description of actions taken by the institution of higher education to detect and prevent the unauthorized distribution of copyrighted materials on the institution of higher education's technology system.

Both the Senate and the House recede with an amendment to replace language in (iv) with language requiring institutions to make available the development of plans to detect and prevent unauthorized distribution of copyrighted material on the institution of higher education's information technology system which shall, to the extent practicable, include offering alternatives to illegal-downloading or peer-to-peer distribution of intellectual property, as determined by the institution of higher education in consultation with the Chief Technology Officer or other designated officer of the institution.

The Conferees have combined elements from both bills to require institutions to advise students about this issue and to certify that all institutions have plans to combat and reduce illegal peer to peer file sharing.

Experience shows that a technology-based deterrent can be an effective element of an overall solution to combat copyright infringement, when used in combination with other internal and external solutions to educate users and enforce institutional policies.

Effective technology-based deterrents are currently available to institutions of higher education through a number of vendors. These approaches may provide an institution with the ability to choose which one best meets its needs, depending on that institution's own unique characteristics, such as cost and scale. These include bandwidth shaping, traffic monitoring to identify the largest bandwidth users, a vigorous program of accepting and responding to Digital Millennium Copyright Act (DMCA) notices, and a variety of commercial products designed to reduce or block illegal file sharing.

Rapid advances in information technology mean that new products and techniques are continually emerging. Technologies that are promising today may be obsolete a year from now and new products that are not even on the drawing board may, at some point in the not too distant future, prove highly effective. The Conferees intend that this Section be interpreted to be technology neutral and not imply that any particular technology measures are favored or required for inclusion in an institution's plans. The Conferees intend for each institution to retain the authority to determine what its particular plans for compliance with this Section will be, including those that prohibit content monitoring. The Conferees recognize that there is a broad range of possibilities that exist for institutions to consider in developing plans for purposes of complying with this Section.

Numerous institutions are utilizing various technology based deterrent in their efforts to combat copyright infringement on their campuses. According to a report of the Joint Committee of the Higher Education and Entertainment Communities, many institutions of higher education have taken significant steps to deal with the problem. Indiana University, for example, hosts an extensive "Are you legal?" educational campaign for students on the issues, and enforces campus policies on proper use of the network. It acts on DCMA notices by disconnecting students from the network and requires tutorials and quizzes to restore service. Second offenders are blocked immediately and are sent to the Student Ethics Committee for disciplinary action.

Audible Magic's CopySense Network Appliance provides comprehensive control over Peer-to-Peer (P2P) usage on a university's network. The CopySense Appliance identifies and blocks illegal sharing of copyrighted files while allowing other legitimate P2P uses to continue. It filters copyrighted P2P content by sensing an electronic fingerprint unique to the content itself, which is very similar to the way virus filters operate.

Red Lambda's "Integrity" is a network security solution dedicated to the management of file-sharing activities via protocols like P2P, IM, IRC, and FTP. This technology is able to detect all P2P, OS file-sharing, FTP, IM, proxy use, Skype and application tunneling over HTTP, HTTPS, DNS and ICMP protocols.

The University of Maryland, College Park, severely restricts bandwidth for residential networks and block certain protocols. It designed "Project Nethics" to promote the responsible use of information technology through user education and policy enforcement. A third violation can result in eviction from the university housing system. Montgomery College in Maryland enforces an Acceptable Use Policy on its wired and wireless networks.

Additional existing technological approaches can deter illegal file sharing by automatically processing notices sent by scanning vendors then taking actions such as messaging the user via browser redirection, applying the appropriate sanction and automatically re-enable browsing after a timeout or reconnect fee is paid. Other institutions use technology to appropriately manage their campus networks by limiting and/or shaping bandwidth, such as Packeteer's packet shaping technology.

This statement, in all likelihood written by MPAA, is extraordinary in many respects, especially for its detailed endorsement of private sector products. No general principles here like the text of the bill, and that of course is one of the abuses of legislative history that Justice Scalia and others rightly complain about: the tenor of the legislative history would never have been able to pass as legislative text. But the legislative history was inserted to serve a long-term agenda: there is likely to be an effort in the next Congress to mandate these technologies. The MPAA, with figures no better than the ones they retracted, will complain about universities’ alleged failure to be MPAA’s cops, and will lobby for mandated use of technologies, along with forfeiture of federal funding for not doing so. Why not throw in a 10 year federal prison term (no parole in the federal system, btw) for the President of a University that isn’t up to snuff. Or, how about adopting Sarbanes-Oxley for university officials who will have to swear on penalty of perjury (and imprisonment) that they have fulfilled MPAA’s requirements?

Here is the relevant statutory language:

4 Section 485(a) (20 U.S.C. 1092(a)) is amended—
5 (1) in paragraph (1)—
6 (A) in subparagraph (G)—
7 (i) by striking ‘‘program, and’’ and in
8 serting ‘‘program,’’; and
9 (ii) by inserting ‘‘, and (iv) any plans
10 by the institution for improving the aca
11 demic program of the institution’’ after
12 ‘‘instructional personnel’’; and
13 (B) by striking subparagraph (M) and in
14 serting the following:
15 ‘‘(M) the terms and conditions of the loans
16 that students receive under parts B, D, and
17 E;’’;
18 (C) in subparagraph (N), by striking
19 ‘‘and’’ after the semicolon;
20 (D) in subparagraph (O), by striking the
21 period and inserting a semicolon; and
22 (E) by adding at the end the following:
23 ‘‘(P) institutional policies and sanctions re
24 lated to copyright infringement, including—
25 ‘‘(i) an annual disclosure that explic
26 itly informs students that unauthorized
1 distribution of copyrighted material, in
2 cluding unauthorized peer-to-peer file shar
3 ing, may subject the students to civil and
4 criminal liabilities;
5 ‘‘(ii) a summary of the penalties for
6 violation of Federal copyright laws; and
7 ‘‘(iii) a description of the institution’s
8 policies with respect to unauthorized peer
9 to-peer file sharing, including disciplinary
10 actions that are taken against students
11 who engage in unauthorized distribution of
12 copyrighted materials using the institu
13 tion’s information technology system;
25 U.S.C. 1094(a)) is amended—
1 (i) in paragraph (23)—
2 (I) by moving subparagraph (C)
3 two ems to the left; and
4 (II) by adding at the end the fol
5 lowing:
6 ‘‘(29) The institution certifies that the institu
7 tion—
8 ‘‘(A) has developed plans to effectively
9 combat the unauthorized distribution of copy
10 righted material, including through the use of a
11 variety of technology-based deterrents; and
12 ‘‘(B) will, to the extent practicable, offer
13 alternatives to illegal downloading or peer-to
14 peer distribution of intellectual property, as de
15 termined by the institution in consultation with
16 the chief technology officer or other designated
17 officer of the institution.’’.

US Government Insists on Right to Violate DMCA

I previously did a posting on the US government’s successful invocation of sovereign immunity in a claim alleging copyright infringement and an anti-circumvention claim under the DMCA. The opinion in that case came from the Court of Federal Claims, a trial-level court. The decision has now been affirmed by the Federal Circuit, Blueport Company, LLC v. United States, 2008 WL 2854127 (CAFC, July 25, 2008)(No. 2007-5140), available here.

Congress abrogated the federal government’s sovereign immunity for copyright infringement in 28 USC 1498(c), but a DMCA anti-circumvention violation is not an infringement action; instead, chapter 12 of title 17 is a sui generis right, like semiconductor chips, bootlegging, and vessel boat hull protection. There is no express abrogation of sovereign immunity for DMCA violations, and thus the US government is free to – and appears quite happy to – engage in activity, which if done by individuals or companies, would be illegal, perhaps even criminal. The hypocrisy in the US government’s conduct is breathtaking given USTR’s vigorous efforts to peddle the DMCA internationally. Where are the IIPA, BSA, and other “pro-IP” groups on this scandalous treatment of creators? Will they now press for an amendment to 1498(b) to include violations of the DMCA?

The facts in the Blueport case fully support the sense of outrage we should all have over this situation. I will simply copy them verbatim from the CAFC’s opinion so there is no slanting of them. After reading them, ask yourself whether we should ever believe again government officials who talk about the importance of intellectual property:


In this case, Blueport claims that the Government-specifically the U.S. Air Force-infringed Blueport's copyright on a software program known as “the AUMD program.” The AUMD program was written by Air Force Technical Sergeant Mark Davenport. On March 6, 2000, Davenport assigned all his rights in the AUMD program to Blueport.

When Davenport wrote the AUMD program, he was employed as a manager of the Air Force Manpower Data System (“MDS”), a database containing manpower profiles for each unit in the Air Force. In his capacity as an MDS Manager, Davenport updated the MDS with new data and provided reports from the MDS to Air Force personnel upon request. Davenport was also a member of the Air Force's Manpower User Group, a group of manpower personnel from each of the Air Force's major commands who provided guidance on the use of the MDS. Based on his experience with the MDS, Davenport concluded that the software the Air Force used to run the MDS was inefficient and began seeking ways to redesign the software program. Davenport initially requested training in computer programming from the Air Force, but his request was denied. Undeterred, Davenport learned the computer programming skills necessary to write the AUMD program on his own time and with his own resources. Davenport then wrote the source code for the AUMD program while at home on his personal computer. Although he wrote the program solely at his home and at his own initiative, Davenport's intent in writing the program was that other Air Force manpower personnel would use it.

In June 1998, Davenport shared an early version of the program with a fellow coworker, and both tested the program on the MDS at work during regular business hours. Based on the results of this testing, Davenport made changes to the source code of the AUMD program on his home computer. Davenport did not at that time, or at any time thereafter, bring the AUMD program's source code to work or copy it onto Air Force computers.

After these initial tests, Davenport began sharing copies of the AUMD program with other colleagues. At first, Davenport shared the AUMD program with colleagues by giving them a computer disk containing the program or by personally installing the program on their computers. Later, Davenport posted the AUMD program on an Air Force web page so that Air Force manpower personnel could download it directly. As the program became popular within the Air Force manpower community, Davenport's superiors asked him to train additional personnel in its use. During this time, he continued to modify the program based on feedback he received and, as a result, improved its functionality and eliminated programming errors. At some point, Davenport added an automatic expiration date to each new version of the AUMD program so that users were required to download the newest version when the older one expired.

In September 1998, Davenport gave a presentation to senior Air Force manpower officers at an annual conference and, according to one of Davenport's superiors, “absolutely sold his audience” on the AUMD program. Davenport's performance report deemed him the “go to troubleshooter for [the] entire [Air Force] manpower community ... [and] the most knowledgeable database manager in [the] career field.” The performance report concluded with a recommendation to promote Davenport immediately.

Despite Davenport's success in creating the AUMD program and his willingness to share it, the Air Force eventually decided it was becoming too dependent on Davenport for access to the program. Accordingly, Davenport's superiors asked him to turn over the source code for the program, which Davenport had always kept on his home computer. When he refused to turn over the source code, his superiors threatened him with a demotion and a pay cut, and excluded him from the Manpower User Group's advisory authority.

Davenport then assigned all his rights in the AUMD program to Blueport. Subsequently, Blueport attempted to negotiate a license agreement with the Air Force. However, the Air Force refused Blueport's offer and solicited other contractors to recreate the AUMD program. The Air Force ultimately contracted with Science Applications International Corporation (“SAIC”). At the request of the Air Force, SAIC programmers modified the AUMD program's object code to extend its expiration date. This modification allowed Air Force manpower personnel to continue to use the AUMD program despite Davenport's refusal to provide the source code.

In 2002, Blueport brought the present claims against the Government for copyright infringement and violations of the DMCA. Specifically, Blueport argues that the Air Force infringed its copyright in the AUMD program. In addition, Blueport argues that the Air Force violated the DMCA by extending the expiration date in the AUMD program's object code-thus circumventing the measures taken by Blueport to prevent unauthorized use of the program. The CFC dismissed Blueport's claims for lack of jurisdiction on the ground that the Government had not waived its sovereign immunity for any of the claims. Blueport now appeals.

Tuesday, July 29, 2008

Is there such a thing as holding legal title to a registration?

The question in the title was posed by a decision filed yesterday in Tom Bean v. McDougal Littell (a division of the Houghton Mifflin Company) and R.R. Donnelley & Sons Company, No. 07-8063-PCT-JAT (D. Arizona (James Teilborg, Judge).

The relevant statutory provision is 17 USC 408(a)

— At any time during the subsistence of the first term of copyright in any published or unpublished work in which the copyright was secured before January 1, 1978, and during the subsistence of any copyright secured on or after that date, the owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim …

This provision, drafted by the Copyright Office, contains from the Office’s perspective a big problem, highlighted in bold. The problem is that the statute clearly permits the owner of a single exclusive right to file a claim of registration. From the Office’s perspective that’s a problem because it might lead to multiple registrations for the same work, and a cluttered public record. But the statute has not been amended since passage in 1976. The Office’s initial, immediate response was to solicit a letter from counsel for the Author’s Guild, the late Irwin Karp, that attempted to make the case for what might be called an indivisible registration for divisible copyright; in short, permitting only a single registration per work. That is the system that exists today, and it makes perfect sense; it certainly makes searches simple.

To register a claim you either have to be (1) the author, (2) the assignee of all rights, or (3) an agent for (1) or (2).

In regulations implementing this, we find:

For the purposes of this section, a copyright claimant is either:

(i) The author of a work;

(ii) A person or organization that has obtained ownership of all rights under the copyright initially belonging to the author.1

1 This category includes a person or organization that has obtained, from the author or from an entity that has obtained ownership of all rights under the copyright initially belonging to the author, the contractual right to claim legal title to the copyright in an application for copyright registration.

The kicker here is the footnote, which seems to conflict with the text of the regulation. The regulation refers to ownership of all rights. The footnote, by contrast, refers to a concept not found in the statute, a contractual right to claim legal title. What does it mean to have a contractual right to claim “legal title” to the copyright in an application for copyright registration? Must legal title be the ability to exercise rights, or, can it be merely an exclusive right to file for registration? This latter concept is not found in the statute. In asking this question, note that it is a different question than standing under Section 501(a), which reads in relevant part: “The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.” Here one must be the legal or beneficial owner of an exclusive right, and not merely possess a contractual right to claim legal title in connection with an application. Assignees of a single exclusive right would of course satisfy Section 501(a) and Section 408(a), but would they satisfy the Office’s regulations for registration purposes? Moreover, what if had such a contractual right to claim legal title but no right to actually exercise a Section 106 or 106A right?

This last issue arose in the Tom Bean case. The photographer plaintiff, along with 127 others, had signed a copyright registration agreement with Corbis, which granted Corbis “legal title” to the photographs “solely for the purpose of copyright registration.” Under the agreement, Corbis agreed “that it will promptly reassign legal title …. upon written request … .” The collective work registration obtained by Corbis was to extend to the individual photographs. Plaintiff sued defendants over claimed re-uses that were not licensed; defendants sought to dismiss the case for lack of subject matter jurisdiction based on an alleged invalid registration: Corbis allegedly could not be a proper registrant because it had only been conveyed the right to register the works and not the right to exercise any of the Section 106 rights. Corbis, in short, could not have brought an infringement suit, but could it have properly registered the works?

Judge Teilborg upheld the registration, but was perplexed by 37 CFR §202.3(a)(ii), writing that because that section “clearly intends to give registration rights to entities other than the author, and because no entities other than the author can have rights under Section 106A(a) “all the rights under the copyright owner originally belonging to the author cannot be taken absolutely literally lest it render 37 C.F.R. §202.3(a)(ii) superfluous.” I don’t know what the court is getting at here. For one thing, registration is not a requirement for VARA [Section 106A] rights. Another way to approach the issue would have been to interpret the regulation as creating two categories: ownership of exclusive rights, and, ownership of the contractual right to claim legal title in an application. But this begs the central question: what does legal title mean in this context? Why the footnote? How is the contractual right to claim legal title different from ownership of Section 106 and 106A rights, and if there is a difference, where in the statute does the statute authorize registration by the merely holder of such a contractual right? One way to look at this is that the Office’s regulations conflict with the statute from two directions: first, by not permitting the owner of a single exclusive right to register a claim to just that right, and second, by permitting a class of people to register that the statute doesn’t permit to register – the holders of a mere contractual right to claim legal title (assuming that right is different from a Section 106 or 106A right).

The problem for photographers is a practical one and one that has vexed Congress and the Copyright Office for quite awhile: how to enable photographers to obtain the benefits of registration while still preserving the integrity of the registration system. The Corbis agreement seems needlessly complex to me: why transfer something called a legal title to claim registration, which is then transferred back (how, by the way, do you transfer back a legal right to register a claim once the claim has already been registered?). A much simpler approach, and one the Office permitted under the 1909 Act, is to appoint Corbis (or any other organization) an agent. Agents can register claims for authors (law firms do this all the time).

Monday, July 28, 2008

Open Access and the NIH

In 1978, in enacting Section 105 of title 17, Congress faced a choice about what to do with copyrighted works that result from government funding, including basic research funding of scientific, technical, and medical (“STM”) journal articles. One approach was simply to preclude any assertion of copyright, treating such works the same way as works created by government employees within the scope of their employment. That approach would have been simple to apply, but might have inhibited the publication of some STM journals, at a time when hard copy ruled as the method of distribution. Congress chose a middle approach, discussed here in the 1976 House Judiciary Committee report:, which begins by referring to the definition of “work of the United States government”:

A more difficult and far-reaching problem is whether the definition should be broadened to prohibit copyright in works prepared under U.S. Government contract or grant. As the bill is written, the Government agency concerned could determine in each case whether to allow an independent contractor or grantee to secure copyright in works prepared in whole or in part with the use of Government funds. The argument that has been made against allowing copyright in this situation is that the public should not be required to pay a ''double subsidy,'' and that it is inconsistent to prohibit copyright in works by Government employees while permitting private copyrights in a growing body of works created by persons who are paid with Government funds. Those arguing in favor of potential copyright protection have stressed the importance of copyright as an incentive to creation and dissemination in this situation and the basically different policy considerations applicable to works written by Government employees and those applicable to works prepared by private organizations with the use of Federal funds.

The bill deliberately avoids making any sort of outright, unqualified prohibition against copyright in works prepared under Government contract or grant. There may well be cases where it would be in the public interest to deny copyright in the writings generated by Government research contracts and the like; it can be assumed that, where a Government agency commissions a work for its own use merely as an alternative to having one of its own employees prepare the work, the right to secure a private copyright would be withheld. However, there are almost certainly many other cases where the denial of copyright protection would be unfair or would hamper the production and publication of important works. Where, under the particular circumstances, Congress or the agency involved finds that the need to have a work freely available outweighs the need of the private author to secure copyright, the problem can be dealt with by specific legislation, agency regulations, or contractual restrictions.
H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 59 (1976).

With the advent of the World Wide Web, the National Institutes of Health, which provides about $30 billion in research grants, decided the public and other researchers would benefit from having STM articles it was funding placed in the National Library of Medicine’s PubMed Central on line archive. Acting responsibly, a NIH adopted a voluntary deposit policy several years ago, but participation was extremely low because STM publishers were opposed to it and the authors were not well informed about it. So, in the 2008 Labor-HHS Appropriations bill, Congress directed NIH to adopt a mandatory deposit policy. The STM publishers lobbied very hard against the bill, both in Congress and in the Administration (e.g., trying to convince HHS to withdraw support of the policy). Congress rejected the opposition, and enacted the mandatory deposit policy.

Under the policy, the grantee must ensure that a copy of the author’s final manuscript is electronically submitted to the PubMed Central archive, and that no later than 12 months after publication, the NIH may make the full text of the manuscript publicly accessible in PMC. The policy went into effect in April of this year, and with no apparent difficulty in compliance. As noted above, NIH provides about $30 billion in research grants, which amounts on average to about $400,000 per grantee. STM publishers require the authors/grantees to transfer the copyright as a condition of publication. The publishers manage the peer review process, but the peer reviewers generally aren't paid -- they are members of the community who do the peer review for free. Public institutions pay the salaries of the researchers and the hard costs of the building, lab, materials, energy etc., a very large amount. Publishers thus get the content for free, generally get the peer review for free, and don’t pay a penny toward the costs of the research. Under the current NIH policy, they have a 12 month period of exclusivity for individual articles, and a 95 year term of protection for the journal which they may also load up with all the DRMs their little hearts desire. Since time is usually of the essence in STM publishing, and subscriptions are sold by the year for a journal and not by individual article, publishers are provided with ample opportunity to recoup their investment and make a profit.

The American Psychological Association is reported to have to gone off the deep end on the issue. As reported in The Open Access News Blog on July 15, 2008:

The American Psychological Association may have the worst publisher policy to date for NIH-funded authors. Excerpt:

In compliance with [the NIH OA policy], APA will deposit the final peer-reviewed manuscript of NIH-funded research to PMC upon acceptance for publication. The deposit fee of $2,500 per manuscript for 2008 will be billed to the author's university per NIH policy....

Even after collecting the fee, the APA will not deposit the published version of the article, will not allow OA release for 12 months, will not allow authors to deposit in PMC themselves (and bypass the fee), will not allow authors to deposit in any other OA repository, and will not allow authors to retain copyright.

As a commentator pointed out on that blog:

Since there is virtually no cost associated with the mechanics of deposit itself, and the NIH policy allows an embargo on public availability of articles of up to one year in order to protect the traditional subscription market, it is hard to see what this policy is intended to accomplish other than to force an additional income stream out of the faculty authors who already provide the APA with free content. And there is heavy irony in the APA’s assertion that they can do this “as the copyright holder.” ...

The NIH policy has been raised most recently by a bill reported out by the Subcommittee on Labor, Health and Human Services, Education, and Related Services passed out of a provision for Fiscal Year 2009 appropriations which would continue the NIH policy. STM publishers are claiming that the issue is one that arises under the copyright law, and are attempting to have the Judiciary Committee intervene on their behalf. The claim that the NIH policy raises copyright issues is absurd. First, the policy does not reach the journal at all; only individual articles. Publishers’ investment is thus left untouched entirely. Publishers did not invest a dime in the individual articles, and thus have no investment to complain about. They still have a 12 month window of exclusivity for the articles, which is quite long enough to ensure that their only investment – in the journal – is protected. As reviewed at the beginning of this posting, Congress could have chosen to deny all protection to STM articles funded in whole or in part by the government. It is surprising by taking a less extreme, balanced approach, Congress is now being attacked by those who contributed nothing financially to the creation of the works.

Thursday, July 24, 2008

Infringement and the Foreign Sovereign Immunities Act

May a foreign government be sued in U.S. courts for infringement occurring in the United States? The answer, provided by the Foreign Sovereign Immunities Act, 28 U.S.C.A. §§ 1602 to 1611, is no. Section 1603 states: “Subject to existing international agreements to which the United States is a party at the time of enactment of this Act a foreign state shall be immune from the jurisdiction of the courts of the United States and of the States except as provided in sections 1605 to 1607 of this chapter.” Exceptions are provided in section 1605:

(a) A foreign state shall not be immune from the jurisdiction of courts of the United States or of the States in any case—
(1) in which the foreign state has waived its immunity either explicitly or by implication, notwithstanding any withdrawal of the waiver which the foreign state may purport to effect except in accordance with the terms of the waiver;
(2) in which the action is based upon a commercial activity carried on in the United States by the foreign state; or upon an act performed in the United States in connection with a commercial activity of the foreign state elsewhere; or upon an act outside the territory of the United States in connection with a commercial activity of the foreign state elsewhere and that act causes a direct effect in the United States.

Given the clear basic immunity, cases focus on the exceptions. One discussion of the exception is in Leutwyler v. Office of Her Majesty Queen Rania Al-Abdullah, Leutwyler v. Office of Her Majesty Queen Rania Al-Abdullah, 184 F. Supp. 2d 277 (S.D. N.Y. 2001), which involved a dispute between a photographer hired to take pictures of the Queen of Jordan. In reviewing the plaintiff's argument that the defendant's activities fit with the exceptions to FSIA immunity, Judge Lynch wrote:

[I]t is clear that Leutwyler has alleged that the Defendants engaged in at least two series of acts that were unmistakably commercial in nature. First, he argues that the Defendants entered into a contract for him to travel to Jordan to photograph the Royal Family and to grant Queen Rania a limited license to use the pictures for personal use and distribution to Middle Eastern print media. …

… If representatives of the Royal Family arranged for Leutwyler to photograph them, develop the prints, and assign to them rights over the resulting photos, that activity is indistinguishable from the garden-variety commercial transactions that families or business entities throughout the world enter into with photographers to obtain portraits for home or office display

… Second, Leutwyler argues that by allegedly furnishing photos taken by Leutwyler for use in the Jordan Diary, a publication that has been sold in the United States, the Individual Defendants facilitated a venture that was unmistakably commercial in nature. … Once again, while the purpose of publishing the diary may have been governmental (disseminating information about Jordan and encouraging tourism), the nature of the activity (publishing and selling books) is clearly commercial.

Leutwyler has therefore sustained his burden of demonstrating that the Individual Defendants engaged in certain “commercial activity,” as that term is defined in § 1603(e), that could give rise to subject matter jurisdiction under the FSIA.

Similarly, in Los Angeles News Service v. Conus Communications Co., Ltd., Los Angeles News Service v. Conus Communications Co., Ltd., 969 F. Supp. 579 (C.D. Cal. 1997), the court rejected a claim by the Canadian Broadcasting Corporation that its broadcast of the plaintiff's footage was not commercial within the meaning of the exemption.

The FSIA (not to be confused with the similarly acronymed FISA), was raised unsuccessfully again less than a week ago in Santilli v. Cardone, 2008 WL 2790242 (M.D.Fla. July 18, 2008)(No. 8:07-cv-308-T-23MSS). Here are the facts from the court’s opinion:

The pro se plaintiff sues the defendants Cornell University (“Cornell”), Instituto Nazionale Fisica Nucleare (“INFN”), and the Universita' Del L'Aquila (the “University of Aquila”). Cornell owns and operates arXiv, an Internet-based collection of physics manuscripts. The plaintiff alleges that after he attempted to post several of his manuscripts to arXiv's high energy physics section, the arXiv administrators relocated the manuscripts to the general physics section. Meanwhile, physicists Fabio Cardone (“Cardone”), Roberto Mignani (“Mignani”), and Alessio Marrani (“Marrani”) successfully posted their manuscripts to the high energy physics section. The plaintiff alleges that the physicists' papers “violate the most basic laws in physics,” plagiarize the plaintiff's works, and violate the plaintiff's copyrights. The plaintiff alleges that INFN provides financial support to Cardone, Mignani, and Marrani, and that the University of Aquila employs Cardone. Cornell, INFN, and the University of Aquila move to dismiss the plaintiff's claims in the third amended complaint, and the plaintiff responds in opposition.

The University of Aquila claimed immunity under the FSIA, arguing that it was an organ of the Italian government. As noted by the court:

The “organ of a foreign state” requirement commends consideration of (1) whether the foreign state created the agency for a national purpose, (2) whether the foreign state requires the hiring of public employees and pays their salaries, (3) whether the foreign state funds the agency, (4) whether the agency holds an exclusive right to some right in the state, and (5) whether state law treats the agency as dependent on the foreign state.

The University argued it was an organ of the States because it receives approximately seventy-five percent of its funding from the Italian government, because the Italian government oversees and controls the University's budget, and because the university “conducts research that serves a national purpose.” Not enough the court held. What was required was that:

(1) that the university's purpose of teaching and conducting research serves a national purpose, (2) that the Italian government actively supervises the university or requires it to hire public employees, (3) that the university holds exclusive rights, or (4) that Italian law treats the university as dependent upon the government.

In the end, this holding didn’t matter because the court found there was no personal jurisdiction and the copyright claim – for plagiarism, is not a legally supportable claim.