Justin Bieber and Usher Might Soon Need “Somebody to Love”

In the recent case of Copeland v Bieber (Fourth Circuit Court of Appeals) (Available Here), the Court was faced with an appeal by Devin Copeland, after the lower court ruled against him. Copeland alleged that three recorded songs by the defendants, each titled “Somebody to Love,” infringe upon his copyright over his own, earlier song of the same name. The district court granted the defendants’ motions to dismiss on the ground that no reasonable jury could find Copeland’s song and the defendants’ songs sufficiently similar to give rise to liability for infringement.

In 2008, together with his songwriting partner Mareio Overton, Copeland began writing and recording songs to perform on his upcoming album, My Story II. Among them was “Somebody to Love,” the song that is the subject matter of this case (the “Copeland song”). Copeland registered a copyright for the My Story II songs, including “Somebody to Love,” later that year. Copeland’s song was presented to Usher, who indicated a desire to bring him on tour, including the re-recording of the album. Subsequently after that meeting, User released a demo song titled “Somebody to Love”. Although it was not commercially released by Usher, he then gave it to Justin Bieber, who recorded his own version and released it on the My World 2.0 album, also titled “Somebody to Love.”

Copeland sued for copyright infringement. The district court applied the Fourth Circuit precedence which requiring copyright plaintiffs to prove two distinct forms of similarity: “extrinsic” similarity, an objective match between the copyright-protectable elements of an original work and a purported copy, often based on expert testimony; and “intrinsic” similarity, a more subjective and “essentially aesthetic judgment” as to whether the intended audience of two works would experience them as similar in overall effect. The District Court only reviewed intrinsic similarity, and the overall appeal of the two works to their intended audience. It found that the relevant “intended audience” in this case is the general public, as the expected ultimate market for Copeland’s song. And the general public, the court concluded, would not “construe the aesthetic appeal of the songs as being similar,” for despite some shared elements, the “mood, tone, and subject matter” of the songs differ “significantly.” It found that no reasonable jury could find the songs substantially similar under the intrinsic prong. The Court failed to review the extrinsic prong.

Bieber and Usher do not dispute that Copeland had a valid copyright and that they had access to his work. Instead the appeal hung on the concept of substantially similarity. The Appeal Court noted that the intrinsic and extrinsic test was correct, but that both must be reviewed. The Court explained:

The “extrinsic inquiry is an objective one,” looking to specific and “external criteria” of substantial similarity between the original elements (and only the original elements) of a protected work and an alleged copy. Because the inquiry is objective, expert testimony often will be relevant. And because it is focused only on the original elements of the copyrighted work, a court examining extrinsic similarity must first engage in a process we sometimes call “analytic dissection,” separating out those parts of the work that are original and protected from those that are not.

Intrinsic similarity, by contrast, is a subjective inquiry that centers on the impressions of a work’s “intended audience,” usually the general public. So under the intrinsic prong, we analyze works as cohesive wholes, without distinguishing between protected and unprotected elements, just as the works’ intended audiences likely would encounter them in the marketplace. We often have described intrinsic similarity as measuring the “total concept and feel” of the works in question.

Copeland sought to have the Appeals Court find that under the intrinsic prong, the analysis be confined to original elements and preceded by analytic dissection. However, the Court noted that it previously decided, along with the Second and Eighth Circuit Court of Appeals, that analytic dissection is inapplicable to the intrinsic analysis, because a work’s intended audience “does not make th[e] distinction” between protectable and unprotectable elements and instead encounters a work “as one object.”

Copeland also seeks the Court to decide that intrinsic similarity is a question reserved for the trier of fact, and only the extrinsic similarity prong can be grounds for dismissal at the summary judgment and pleading stages. The Court declined to review that request, noting that “even assuming that a motion to dismiss may be granted on the ground that no reasonable jury could find intrinsic similarity, the district court erred in doing so here.”

The Court instead chose to focus on summary judgment, and began by reviewing intrinsic similarity. This specifically included a targeted analysis of “intended audience.” The Court explained “So where the market for a given work consists of a discrete and specialized class, the reactions of a generic ordinary observer will not be particularly relevant. But in most cases, we cautioned, the general public is in fact the intended audience, and “a court should be hesitant” to find otherwise.”

The Court goes on to explain, with caution that the formulation matters: “There is a reason that the Dawson formulation uses the word “audience,” rather than “buyer” or “recipient”: Ultimate marketability is not always determined by the impressions of a first-hand purchaser or recipient, but may sometimes rest on the impressions of third parties — the work’s actual “audience” — whose preferences the buyer or recipient has in mind when acquiring the work.”

The Court finally reached the last and largest review that it needed: “Whether the songs at issue, assessed from the perspective of the intended audience — here, the general public — and taking into account their “total concept and feel,” are sufficiently intrinsically similar to give rise to a valid infringement claim.” The Court noted that the only way to accomplish this was to play all the songs in their entirety back to back.

When making the actual comparison of the songs, the court reviewed as follows: The district court acknowledged that the Usher and Bieber songs “have some elements in common” with the Copeland song. But for the district court, what was dispositive was a significant difference in the overall “aesthetic appeal” of the respective songs. We cannot agree. In our view, that analysis attaches too much weight to what the district court termed a difference in “mood” and “tone,” and too little to similarities between the “element” of the songs — their choruses — that is most important.” The Court applied the concept that mood and tone likely meant genre, and if so, that cannot be dispositive under copyright law.

Additionally, the Court noted that the works are dissimilar in many ways. “And if substantial similarity were a purely quantitative inquiry, asking only whether the majority of the works in question overlapped, we would agree with the district court that no reasonable jury could find the requisite intrinsic similarity.” The Court however reaches its crescendo and states: “But what that analysis fails to account for, we think, is the relative importance of these differences as compared to what the songs reasonably could be heard to have in common: their choruses.”

The Court found that their choruses are similar enough and also significant enough that a reasonable jury could find the songs intrinsically similar, based on the most obvious similarity, the shared chorus lyric and mirrored in the songs’ titles: “I [] need somebody to love.” As a result, the Court arrives at its end, and finds: “Whether a member of the general public could experience these songs primarily through their choruses and thus find them substantially similar, notwithstanding the differences catalogued above, is in our view a close enough question that it cannot be disposed of as a matter of law and should instead be decided by a jury.”

Contractual Copyright Attorneys Fees in the Ninth Circuit

In a case of first impression for the Ninth Circuit Court of Appeals, the court reviewed whether the Copyright Act of 1976 would preclude enforcement of a contractual attorneys fees provision in copyright-based litigation. The case of Victoria Ryan v Editions Limited West, Inc. (9th Cir. May 19, 2015)(available here) tackled this issue, as well as whether the court abused its discretion in calculating the fees.

Ryan is a pastel artist who entered into an agreement with Editions Limited West, Inc. (ELW) to receive a license to publish a limited number of her works in exchange for royalties. The agreement permitted ELW to produce posters of Ryan’s original works, it was silent on subsequent use of those posters for production of derivative works. Ryan believed that her works were improperly being used as derivatives, and made inquires to ELW. Those inquires allegedly went unanswered and she initiated th lawsuit.

In separate motions, ELW filed and was awarded summary judgment on all of Ryan’s claims. However, Ryan filed competing motion for summary judgment seeking afinding that she was the prevailing party within the meaning of the Agreement, despite the fact that ELW obtained judgment on all claims.  Ryan appealed once, and the Court affirmed all summary judgment orders, except for the contributory and vicarious copyright infringement claims, with the instruction: “I the district court finds that ELW is liable for contributory or vicarious infringement, it should reconsider whether Ryn is the prevailing party under the broad language of the contract, and whether she is entitled to a permanent injunction against ELW.”

    Upon return to the District Court, and prior to the bench trial, Ryan filed motion for sanctions based on alleged spoilation by ELW of evidence. This was denied by the lower court. After the bench trial, th court found in favor of Ryan on her contributory infringement claim, but that she could not substantiate a claim to any portion of ELW’s profits or any other damages award. The lower court also ruled that she was the prevailing party under the Agreement. She submitted an affidavit of fees from her counsel, and the court apportioned her request of $328k down to $51k, claiming this represented those fees in connection with the contributory infringement claim.  

    Ryan conceded that she was not entitled to fees under 17 U.S.C. 412, and instead sought fees under the fee shifting provision of the Agreement. The 9th Circuit began its review by discussing preemption. Specifically, the Court discussed whether the Copyright Act would preempt the state law allowing for the execution and enforcement of contractual fee-shifting provisions. The Court concluded the Copyright Act did not preempt Ryan’s rights under th Agreement and in accordance with California state law.

False Endorsement Under the Lanham Act – Unauthorized Use of Bob Marley Image

In Fifty-Six Hope Road Music, Ltd. et al. v. A.V.E.L.A., Inc. et al., Case No. 12-17502, Feb. 20, 2015 (9th Cir.) the Ninth Circuit Court of Appeals found that the district court did not err in denying defendant’s motion for judgment as a matter of law on plaintiff’s Lanham Act Section 43(a) false endorsement claim.  Defendants were found to have (a) used Bob Marley’s image (b) on their t-shirts and other merchandise and (c) in a manner likely to cause confusion as to plaintiff’s sponsorship or approval of the t-shirts or merchandise.  The Ninth Circuit recognizes a § 1125(a) (Lanham Act § 43(a)) claim for misuse of a celebrity’s persona.  

The likelihood of confusion factors considered in celebrity cases include: (1) the level of recognition that the celebrity has among the segment of the society for whom the defendant’s product is intended, (2) the relatedness of the fame or success of the celebrity to the defendant’s product, (3) the similarity of the likeness used by the defendant to the actual celebrity, (4) evidence of actual confusion, (5) marketing channels used, (6) likely degree of purchaser care, (7) defendant’s intent on selecting the celebrity and (8) likelihood of expansion of the product lines.  The evidence in this case supported a finding of a likelihood of confusion.  The Ninth Circuit stated that the § 43(a) claim did not establish a “federal right of publicity,” rather a false endorsement claim, which requires that the use be likely to confuse as to the sponsorship or approval of defendant’s goods.  

The Court further found that defendants waived several defenses to the plaintiffs’ claims by failing to properly raise them in the district court.  These defenses included aesthetic functionality (raised in its answer but never developed at trial), Copyright Act defense under Dastar Corp. v. Twentieth Century Fox Film, Corp. (that the Bob Marley image had fallen into the public domain and could not be resurrected under federal unfair competition law) and the First Amendment defense under Rogers v. Grimaldi.

Further, the Ninth Circuit found that the trial court did not err in calculating and awarding to plaintiffs the net profits of defendants.  Defendants willfully infringed, because the vice president of licensing knew that plaintiffs had the right to merchandise Marley’s image before defendants began selling similar goods.  A claim for profit disgorgement under §1117(a) is equitable in nature and a jury traditionally does not calculate these profits.  The trial court correctly awarded to plaintiffs, defendants’ profits ($781,427) from Marley merchandise.  AVELA failed to meet its burden to prove deductions from its gross profits, as its claimed royalty fee arrangement was not an arm’s length transaction.  Rather the sole shareholder of the licensor was a girlfriend of one of the defendants.  The Appeals Court also found that the district court did not err by denying plaintiffs an increased award of profits as generally, actual, proven profits will adequately compensate the plaintiff.  

The Ninth Circuit found that the district court did not abuse its discretion in ordering defendants AVELA to pay plaintiffs’ attorneys’ fees ($1.5 M) because (a) plaintiffs were the prevailing party and (2) the case was exceptional as defendants’ conduct was willful.  There was significant evidence that AVELA defendants were aware their conduct conflicted with plaintiffs’ rights.  The court did not abuse its discretion in denying attorneys’ fees as to defendants Jem and Freeze, because the evidence of their willfulness was too weak to merit an award of attorneys’ fees.

In support of defendants’ positions, the Ninth Circuit affirmed the trial court’s grant of summary judgment to defendants on the right of publicity claim, because the state statute clearly provides that a publicity right successor waives its publicity rights when it fails to timely register its rights.

Altered Mayor’s Photo on T-shirts was Transformative Fair Use and Not Infringement of Copyrighted Photo

In Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin, LLC, 766 F.3d 756 (7th Cir. 2014) (available here), Defendant Sconnie Nation made some t-shirts and tank tops displaying the image of Paul Soglin’s face, the Mayor of Madison, Wisconsin, and the phrase “Sorry for Partying.”  Mayor Soglin’s photographer, Michael Kienitz, brought suit against Sconnie Nation for copyright infringement because Kienitz dod not give Sconnie permission to use Mayor Soglin’s photo.

The U.S. Court of Appeals for the Seventh Circuit affirmed the District Court’s grant of summary judgment in favor of the Defendants, holding that Sconnie Nation made fair use of the Mayor’s photo.  Sconnie Nation altered the photo by posterizing it, removing the background, turning the Mayor’s face lime green and surrounding it with multi-colored writing.  Sconnie Nation put the altered photo on t-shirts for a 2012 Block Party in the college town of Madison, Wisconsin and sold 54 t-shirts.

In its analysis, the Seventh Circuit Court recited the law pertaining to the defense of fair use.  Fair use is a defense to infringement and the Copyright Act sets out four non-exclusive factors for the court to consider.  17 U.S.C. §107.  In determining whether the use made of a work in any particular case is a fair use the factors to be considered 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 Seventh Circuit acknowledged that in the case of Cariou v. Prince, the Second Circuit found that a “transformative use” is enough to bring a modified copy within the scope of §107.  However, the Seventh Circuit was skeptical of Cariou’s approach, because asking exclusively whether something is “transformative” not only replaces the list in §107, but also overrides another provision of the Copyright Act, 17 U.S.C. §106(2), which protects derivative works of the original artwork.  The Seventh Circuit failed to see how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2).  

In analyzing the case under the fair use factors, the Seventh Circuit turned to the fourth factor and asked whether the contested use is a complement to the protected work (an allowed use of the copyrighted original work) rather than a substitute for it (a prohibited use of the original).  The Seventh Circuit found that a t-shirt or tank top is not substitute for the original photographic work.  In connection with the third factor, the Seventh Circuit found that Defendant Sconnie Nation removed so much material from the original that only the non-copyrightable outline of Mayor Soglin’s face remained.  Accordingly, Defendants use qualified as a fair use of the original photo under the Copyright Act.        

Use of Photograph, Transformed by Artist into Paintings and Collages, is Copyright Fair Use

In Cariou v. Prince et al., 714 F.3d 694 (2nd Cir. 2013) (Available Here), the U.S. Court of Appeals for the Second Circuit found that the Copyright Act does not require that the secondary or derivative use of an original work relate back, in a historical sense, to the original work or that the secondary work critically refer back to the original work in order for the secondary (derivative) work to be transformative.  Once the secondary work is transformative of the original work, the secondary work does not infringe the original author’s copyrights since the secondary work falls with the Copyright Act safe harbor – fair use provisions of the Act.

In 2000, plaintiff Patrick Cariou published Yes Rasta, a book of classical portraits and landscape photographs that he took over the course of six years spent living among Rastafarians in Jamaica. Defendant Richard Prince is a well-known appropriation artist.  Prince’s work, going back to the mid-1970s, involved taking photographs and other images that other original artists produced and incorporating the original art into paintings and collages.  Prince then presents, in a different context, his own paintings and collages which include the original artwork.

Prince altered and incorporated several of Cariou’s Yes Rasta photographs into a series of paintings and collages, called Canal Zone, that Prince exhibited in 2007 and 2008. The portions of Yes Rasta  photographs used, and the amount of each artwork that they constitute, vary significantly from piece to piece.  Cariou sued Prince alleging that the Canal Zone works and exhibition catalog infringed Cariou’s copyrights in the original Yes Rasta photographs.   The District Court granted summary judgment in favor of plaintiff Cariou and entered a permanent injunction against Defendant Prince.

On appeal, Prince contended that the Canal Zone work was transformative and constituted fair use of Cariou’s copyrighted photographs and that the district court imposed an incorrect legal standard.  Prince argued that the trial court incorrectly concluded that, in order to qualify for a copyright fair use defense, Prince’s work must comment on Cariou, or comment on Cariou’s Photos, or comment on aspects of popular culture that is closely associated with Cariou or the Photos.

The Second Circuit found that the Copyright Act imposes no requirement that a work comment on the original artwork or the original author in order to be considered transformative, and a secondary work may constitute a fair use under the Copyright Act even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble of the Fair Use provisions of the Act. 17 U.S.C. sec. 107.  

The Second Circuit’s observation of Prince’s artworks themselves was convincing of the transformative nature of all but five of Prince’s secondary works. Prince’s composition, presentation, scale, color palette, and media are fundamentally different and new compared to Cariou’s photographs, as is the expressive nature of Prince’s work.  The focus of the Court’s infringement analysis was primarily on the Prince artworks themselves, and the Appeals Court saw twenty-five (25) of Prince’s secondary works as transformative as a matter of law.  

In twenty-five (25) of his artworks, Prince did not present the same material as Cariou in a different manner, but instead Prince added something new and presented images with a fundamentally different aesthetic compared to Cariou’s original artwork.  

The Second Circuit then went on to analyze the four fair use factors.  (17 U.S.C. sec. 107 factors: (1) The purpose and character of the use, including whether such use is of 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 Court found that although there is no question that Prince’s artworks were commercial in nature, the Court did not place much significance on the fact of commercialization due to the transformative nature of the work.  As for the fourth factor, the Court found that neither Prince nor the Canal Zone show usurped the market for Cariou’s photographs.  As for the nature of the work, the Court found that there was no dispute that Cariou’s work was creative and published, however, just as with the commercial character of Prince’s work, this factor is of limited usefulness where, as here, the creative work of art of Cariou was being used for a transformative purpose.   Prince used key portions of certain of Cariou’s photographs. In doing that, however, the Court determined that in twenty-five (25) of Prince’s artworks, Prince transformed Cariou’s photographs into something new and different and, as a result, this factor weighed heavily in Prince’s favor.  Accordingly, the Court found that all but five (5) of Prince’s artworks made fair use of Cariou’s photographs.

Waiting Too Long to Bring Copyright Infringement Suit – Laches No Bar Claim If Any Infringement Within Three Years

The Supreme Court, in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), (available here), held that the defense of laches was not available to preclude adjudication of copyright infringement action brought within 17 U.S.C.S. § 507(b)’s 3-year limitations period for civil action under Copyright Act (17 U.S.C.S. § 101 et seq.).

The allegedly infringing work is the motion picture Raging Bull.  In 1976, the original authors assigned the screenplay, which was later acquired by United Artists, a subsidiary of Metro-Goldwyn-Mayer, Inc. (“MGM”).  In 1980, MGM released, and registered a copyright in, Raging Bull.  Petrella acquired the renewal rights to the screenplay as an heir to the author.  The renewal rights reverted to the heirs, who could renew the copyrights unburdened by any assignment previously made by the author.  In 1991, Petrella renewed the copyright.  Seven after the renewal, Petrella in 1998 advised MGM that Raging Bull violated her copyright.  Some nine years later, on January 6, 2009, Petrella filed an infringement suit limited to acts occurring on or after January 6, 2006.  MGM moved for summary judgment that Petrella’s 18 year delay in filing suit was unreasonable and prejudicial to MGM.  The District Court granted MGM’s motion holding that laches barred Petrella’s suit.  The Ninth Circuit affirmed.  The Supreme Court reversed.

The Supreme Court found that in the face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief.  Petrella sought no relief for conduct occurring outside § 507(b)’s three-year limitations period. The Court also found that there is nothing untoward about a copyright owner delaying suit and waiting to see whether an infringer’s exploitation undercuts the value of the copyrighted work, has no effect on the original work or even complements it.  In addressing MGM’s arguments, and in distinguishing between laches and estoppel, the Court stated that when a copyright owner engages in intentionally misleading representations concerning his abstention from suit, and the alleged infringer detrimentally relies on the copyright owner’s deception, the doctrine of estoppel may bar the copyright owner’s claims completely, eliminating all potential remedies.  However, the courts below did not address the estoppel plea.

This present case was not extraordinary where the consequences of a delay in commencing suit maybe of sufficient magnitude to warrant, at the very outset of the litigation, curtailment of the relief equitably awardable.  The Court found that Petrella notified MGM of her copyright claim before MGM invested millions of dollars in creating a new edition of Raging Bull.  And the relief sought, disgorgement of unjust gains and an injunction against future infringement, would not result in “total destruction” of the film or anything close to it.   

Copyrightability and Fair Use of the Google Android Operating System – Oracle v Google

In a lengthy decision covering historical computer copyright case law, the Court of Appeals for the Federal Circuit ruled on the copyright dispute over the Android smart phone operating system in Oracle America Inc. v. Google Inc., Fed. Cir. Case No. 2013-1021 (May 9, 2014) (available here).  The Court reversed the district court’s decision on the non-copyrightability of the Java code used by Google and remanded the matter for a new trial on the issue of fair use.

The copyright dispute involved 37 packages of computer source code. “The parties have often referred to these groups of computer programs, individually or collectively, as ‘application programming interfaces,’ or API packages, but it is their content, not their name, that matters.  Many software developers use the Java language, as well as Oracle’s API packages, to write applications (commonly referred to as ‘apps’) for desktop and laptop computers, tablets, smartphones, and other devices.”  opn. pg. 4.  Oracle alleged that Google’s Android mobile operating system infringed Oracle’s patents and copyrights.  The Federal Circuit handled the appeal due to the presence of a patent infringement claim but the appeal involved copyright infringement.  The Federal Circuit was therefore obliged to apply Ninth Circuit copyright law. The jury had found that Google did not infringe Oracle’s patents.

The parties agreed that the jury would decide infringement, fair use, and whether any copying was de minimis and the district judge would decide copyrightability and Google’s equitable defenses.  The jury found that Google infringed Oracle’s copyrights in the 37 Java packages and a specific computer routine called ‘rangeCheck,’ but returned a noninfringement verdict as to eight decompiled security files. The jury deadlocked on Google’s fair use defense.  After the trial, the district court granted Oracle’s motion for judgment as a matter of law (JMOL) and found that: (1) Google admitted to copying the eight files; and (2) no reasonable jury could find that the copying was de minimis.  Shortly thereafter, the district court issued its decision on copyrightability, finding that the replicated elements of the 37 API packages—including the declaring code and the structure, sequence, and organization—were not subject to copyright protection.

Oracle’s Java platform includes the Java development kit (JDK), javac compiler, tools and utilities, runtime programs, class libraries (API packages), and the Java virtual machine.  These packages, which are the application programming interfaces a issue in this appeal, allow programmers to use the prewritten code to build certain functions into their own programs, rather than write their own code to perform those functions from scratch. They are shortcuts.  Oracle offers three different licenses: a free, open source General Public License (users must contribute back innovations to the public), a specification license and a commercial license (for use of the entire code and to keep the code secret).  Oracle and Google could not agree on a license because Google wanted a ‘write once, run anywhere’ operating system. Google wanted other programmers to write apps for the Google Java-based smart phone.

“To achieve this ‘write once, run everywhere’ result, Google copied the declaring source code from the 37 Java API packages verbatim, inserting that code into parts of its Android software. In doing so, Google copied the elaborately organized taxonomy of all the names of methods, classes, interfaces, and packages — the ‘overall system of organized names—covering 37 packages, with over six hundred classes, with over six thousand methods.’” opn. pg. 10 – 11.

“Although [Google] acknowledged that the overall structure of Oracle’s API packages is creative, original, and resembles a taxonomy, the district court found that it is nevertheless a command structure, a system or method of operation — a long hierarchy of over six thousand commands to carry out pre-assigned functions — that is not entitled to copyright protection under Section 102(b) of the Copyright Act. In reaching this conclusion, the court emphasized that, [o]f the 166 Java packages, 129 were not violated in any way. And, of the 37 Java API packages at issue, ‘97 percent of the Android lines were new from Google and the remaining three percent were freely replicable under the merger and names doctrines. On these grounds, the court dismissed Oracle’s copyright claims, concluding that the particular elements replicated by Google were free for all to use under the Copyright Act.”  opn. pg. 14 (quotations and record citations omitted).

Per the Federal Circuit, “It is undisputed that Google copied 7,000 lines of declaring code and generally replicated the overall structure, sequence, and organization of Oracle’s 37 Java API packages.”  opn. pg. 15.

The Copyright Act provides protection to original works of authorship fixed in any tangible medium of expression, including literary works. 17 U.S.C. § 102(a). It is undisputed that computer programs —  defined in the Copyright Act as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result,” 17 U.S.C. § 101 — can be subject to copyright protection as literary works. See Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 838 (Fed. Cir. 1992).

Copyright protection extends only to the expression of an idea — not to the underlying idea itself. Mazer v. Stein, 347 U.S. 201, 217 (1954).  The idea/expression dichotomy traces back to the Supreme Court’s decision in Baker v. Selden, 101 U.S. 99, 101 (1879).

“It is well established that copyright protection can extend to both literal and non-literal elements of a computer program. … The non-literal components of a computer program include,
among other things, the program’s sequence, structure, and organization, as well as the program’s user interface.” opn. pg. 20.

“Although the parties agree that Oracle’s API packages meet the originality requirement under Section 102(a), they disagree as to the proper interpretation and application of Section 102(b). For its part, Google suggests that there is a two-step copyrightability analysis, wherein Section 102(a) grants copyright protection to original works, while Section 102(b) takes it away if the work has a functional component. To the contrary, however, Congress emphasized that Section 102(b) ‘in no way enlarges or contracts the scope of copyright protection’ and that its ‘purpose is to restate . . . that the basic dichotomy between expression and idea remains unchanged.’ Feist,
499 U.S. at 356″ opn. pg 22.

The Federal Circuit adopted the abstraction-filtration-comparison test.  “In the abstraction step, the court first breaks down the allegedly infringed program into its constituent structural parts. In the filtration step, the court sifts out all non-protectable material, including ideas and expression that is necessarily incidental to those ideas. In the final step, the court compares the remaining creative expression with the allegedly infringing program.”  opn. pg. 23 – 24 (quotes omitted).

“In all circuits, it is clear that the first step is part of the copyrightability analysis and that the third is an infringement question. It is at the second step of this analysis where the circuits are in less accord.”  opn pg. 24

“In the Ninth Circuit, while questions regarding originality are considered questions of copyrightability, concepts of merger and scenes a faire are affirmative defenses to claims of infringement. Ets-Hokin, 225 F.3d at 1082; Satava v. Lowry, 323 F.3d 805, 810 n.3 (9th Cir.
2003)” opn. pg. 25.

“Under the merger doctrine, a court will not protect a copyrighted work from infringement if the idea contained therein can be expressed in only one way. Satava v. Lowry, 323 F.3d 805, 812 n.5 (9th Cir. 2003).”

“First, we agree that 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. See Satava, 323 F.3d at 812 n.5 (‘Under the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the copyrighted work can be expressed in only one way, lest there be a monopoly on the underlying idea.’). The evidence showed that Oracle had ‘unlimited options as to the selection and arrangement of the 7000 lines Google copied.’ Appellant Br. 50.”

“The scenes a faire doctrine, which is related to the merger doctrine, operates to bar certain otherwise creative expression from copyright protection. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994). It provides that ‘expressive elements of a work of authorship are not entitled to protection against infringement if they are standard, stock, or common to a topic, or if they necessarily follow from a common theme or setting.’ Mitel, 124 F.3d at 1374. Under this doctrine, ‘when certain commonplace expressions are indispensable and naturally associated with the treatment of a given idea, those expressions are treated like ideas and therefore [are] not protected by copyright.’ Swirsky v. Carey, 376 F.3d 841, 850 (9th Cir. 2004). In the computer context, ‘the scene a faire doctrine denies protection to program elements that are dictated by external factors such as ‘the mechanical specifications of the computer on which a particular program is intended to run’ or ‘widely accepted programming practices within the computer industry.’‘ Softel, 118 F.3d at 963 (citation omitted).”  opn pg. 35.

“Like merger, the focus of the scenes a faire doctrine is on the circumstances presented to the creator, not the copier. See Mitel, 124 F.3d at 1375 (finding error to the extent the trial court discussed ‘whether external factors such as market forces and efficiency considerations justified Iqtel’s copying of the command codes’). The court’s analytical focus must be upon the external factors that dictated Sun’s selection of classes, methods, and code—not upon what Google encountered at the time it chose to copy those groupings and that code.”  opn. pg. 37.

“[T]he trial court was correct to conclude that the scenes a faire doctrine does not affect the copyrightability of either the declaring code in, or the SSO [sequence, organization and structure] of, the Java API packages at issue.”  opn pg. 37.

“The district court found that the SSO [sequence, organization and structure] of the Java API packages is creative and original, but nevertheless held that it is a ‘system or method of operation . . . and, therefore, cannot be copyrighted’ under 17 U.S.C. § 102(b). Copyrightability Decision, 872 F. Supp. 2d at 976-77. In reaching this conclusion, the district court seems to have relied upon language contained in a First Circuit decision: Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d without opinion by equally divided court, 516 U.S. 233 (1996).  In Lotus, it was undisputed that the defendant copied the menu command hierarchy and interface from Lotus 1- 2-3, a computer spreadsheet program ‘that enables users to perform accounting functions electronically on a computer.’ 49 F.3d at 809. The menu command hierarchy referred to a series of commands—such as ‘Copy,’ ‘Print,’ and ‘Quit’—which were arranged into more than 50 menus and submenus.”  opn. pg. 37 – 38.

“More importantly, however, the Ninth Circuit has not adopted the court’s ‘method of operation’ reasoning in Lotus, and we conclude that it is inconsistent with binding precedent. Specifically, we find that Lotus is inconsistent with Ninth Circuit case law recognizing that the structure, sequence, and organization of a computer program is eligible for copyright protection where it
qualifies as an expression of an idea, rather than the idea itself.”  opn. pg. 39 – 40.

“While it does not appear that the Ninth Circuit has addressed the precise issue, we conclude that a set of commands to instruct a computer to carry out desired operations may contain expression that is eligible for copyright protection.”  opn. pg. 42-43.

“Given the court’s findings that the SSO is original and creative, and that the declaring code could have been written and organized in any number of ways and still have achieved the same functions, we conclude that Section 102(b) does not bar the packages from copyright protection just because they also perform functions.” opn. pg. 45.

As for Google’s arguments that it does not infringe because the Google code’s interoperability with other Java apps, those arguments are directed to Google’s fair use analysis.  Interoperability is ‘irrelevant’ to the copyrightability analysis.  opn. pg. 45.  The district court concluded that Google took only what was necessary to achieve interoperability, and relied primarily on two Ninth Circuit decisions: Sega Enterprises v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), and Sony Computer Entertainment, Inc. v. Connectix, Corp., 203 F.3d 596 (9th Cir. 2000).  “As noted, both cases were focused on fair use, not copyrightability.  In Sega, for example, the only question was whether Accolade’s intermediate copying was fair use. The court never addressed the question of whether Sega’s software code, which had functional elements, also contained separable creative expression entitled to protection. Likewise, although the court in Sony determined that Sony’s computer program had functional elements, it never addressed whether it also had expressive elements. Sega and Sony are also factually distinguishable because the defendants in those cases made intermediate copies to understand the functional aspects of the copyrighted works and then created new products. See Sony, 203 F.3d at 606-07; Sega, 977 F.2d at 1522-23.”  opn. pg. 47.

The jury was hung on the issue of whether Google’s use of the code was fair use and the district court refused to order a new trial. “‘Section 107 requires a case-by-case determination whether a particular use is fair, and the statute notes four nonexclusive factors to be considered.’ Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549 (1985). Those factors are: (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.’ 17 U.S.C. § 107. The Supreme Court has explained that all of the statutory factors ‘are to be explored, and the results weighed together, in light of the purpose[] of copyright,’ which is ‘[t]o promote the Progress of Science and useful Arts.’ Campbell, 510 U.S. at 578, 575 (internal citations omitted).”  opn. pg. 53 – 54.

A use is transformative if it adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.  “A work is not transformative where the user ‘makes no alteration to the expressive content or message of the original work.” opn. pg. 57.

The Federal Circuit remanded the case back to the district court on the fair use question and requested a new trial. “First, although it is undisputed that Google’s use of the API packages is commercial, the parties disagree on whether its use is ‘transformative.’ Google argues that it is, because it wrote its own implementing code, created its own virtual machine, and incorporated the packages into a smartphone platform. For its part, Oracle maintains that Google’s use is not transformative because: (1) ‘[t]he same code in Android . . . enables programmers to invoke the same pre-programmed functions in exactly the same way;’ and (2) Google’s use of the declaring code and packages does not serve a different function from Java. Appellant Reply Br. 47. While Google overstates what activities can be deemed transformative under a correct application of the law, we cannot say that there are no material facts in dispute on the question of whether Google’s use is ‘transformative,’ even under a correct reading of the law. As such, we are unable to resolve this issue on appeal.”  opn. pg. 60.

Copyright Plaintiffs Recovery Limited To Three Years – U.S. Supreme Court

The U.S. Supreme Court has capped all copyright infringement damages by limiting those damages to a three year period prior to the filing of suit.  Petrella v. Metro-Goldwyn-Mayer, Inc., case no. 12-1315 (May 19, 2014) (available here).  Moreover, the doctrine of estoppel may bar all claims entirely.

“The Copyright Act provides that ‘[n]o civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued.’ 17 U. S. C. §507(b). This case presents the question whether the equitable defense of laches (unreasonable, prejudicial delay in commencing suit) may bar relief on a copyright infringement claim brought within §507(b)’s three-year limitations period. Section 507(b), it is undisputed, bars relief of any kind for conduct occurring prior to the three year limitations period. To the extent that an infringement suit seeks relief solely for conduct occurring within the limitations period, however, courts are not at liberty to jettison Congress’ judgment on the timeliness of suit. Laches, we hold, cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window.”  opn. pg. 1.

A claim accrues when a plaintiff has a complete and present cause of action. Bay Area Laundry and Dry Cleaning Pension Trust Fund v. Ferbar Corp. of Cal., 522 U. S. 192, 201 (1997).  “In other words, the limitations period generally begins to run at the point when ‘the plaintiff can file suit and obtain relief.’ A copyright claim thus arises or ‘accrue[s]’ when an infringing act occurs.”

However, the Copyright Act defines multiple, different violations (for example, sale, copying and distribution are all separate violations).  Under the separate-accrual rule “when a defendant commits successive violations, the statute of limitations runs separately from each violation. Each time an infringing work is reproduced or distributed, the infringer commits a new wrong. Each wrong gives rise to a discrete ‘claim’ that ‘accrue[s]’ at the time the wrong occurs.6 In short, each infringing act starts a new limitations period. See Stone v. Williams, 970 F. 2d 1043, 1049 (CA2 1992) (‘Each act of infringement is a distinct harm giving rise to an independent claim for relief.’).” opn. pg. 5.

When a defendant engages in a series of discrete infringing acts, the copyright holder’s suit will be timely under §507(b) with respect to the more recent acts of infringement.

“[A] successful plaintiff can gain retrospective relief only three years back from the time of suit. No recovery may be had for infringement in earlier years. Profits made in those years remain the defendant’s to keep.” opn. pg. 11.

Further, “[a]lthough registration is ‘permissive,’ both the certificate and the original work must be on file with the Copyright Office before a copyright owner can sue for infringement.” opn. pg. 18.

As for excessive delays by the copyright owner, estoppel may bar relief.  “The defendant [] may retain the return on investment shown to be attributable to its own enterprise, as distinct from the value created by the infringed work. See Sheldon v. Metro-Goldwyn Pictures Corp., 309 U. S. 390, 402, 407 (1940) (equitably apportioning profits to account for independent contributions of infringing defendant).” opn. pg. 11.  “[W]hen a copyright owner engages in intentionally misleading representations concerning his abstention from suit, and the alleged infringer detrimentally relies on the copyright owner’s deception, the doctrine of estoppel may bar the copyright owner’s claims completely, eliminating all potential remedies.”  opn. pg. 19.

Looseleaf Booklet With Sheets of Photographs Showing Sculpture is Sufficient to Register Copyright

The Seventh Circuit Court of Appeals concluded that loose photographs of a sculpture, stuck in a book, were sufficient to be classified as a copyrightable “collection.” Neri v. Monroe, et al., Case No. 12-3204 (7th Cir. August 12, 2013) (available here).  Plaintiff Quincy Neri designed a glass sculpture called “Mendota Reflection,” which was installed in the ceiling of Linda Hughes’s condominium by Architectural Building Arts (“ABA”).  The ABA is owned by Defendant Melinda Monroe.  Leslie Sager designed the lighting.  Hughes gave Eric Ferguson permission to take photographs of the project.  ABA and Monroe posted copies of the sculpture photos on its website and used the photos in its newsletter. Sager posted copies of the sculpture photos on her website and Ferguson posted the photos on his Flickr webpage.  Neri sued, arguing that they violated her copyright in the sculpture.  A magistrate judge dismissed the case, finding that Neri lacked a copyright registration and the sculpture.  In the Copyright Office, Neri had submitted a collection of photographs of her unpublished works, including the sculpture, for registration.  Neri received a copyright registration but the lower court concluded that the application was defective and therefore the copyright certificate was invalid.  Neri appealed.  The Seventh Circuit vacated the dismissal.

A collection of unpublished works is defined, under the Copyright Office regulations, when each copyrightable work is self-contained and a number of works are combined into a single unpublished “collection.”  “For these purposes, a combination of such elements shall be considered a ‘collection’ if: (1) The elements are assembled in an orderly form; (2) The combined elements bear a single title identifying the collection as a whole; (3) The copyright claimant in all of the elements, and in the collection as a whole, is the same; and (4) All of the elements are by the same author, or, if they are by different authors, at least one of the authors has contributed copyrightable authorship to each element. Registration of an unpublished ‘collection’ extends to each copyrightable element in the collection and to the authorship, if any, involved in selecting and assembling the collection.” 37 C.F.R. §202.3(b)(4)(i)(B).

Neri clearly met three of the requirements: the collection had a single title; she claimed a copyright in each sculpture and in the collection as a whole; and she was the only author.  However, the magistrate judge found that Neri’s submission was not in an “orderly form.”  Neri’s submission was a book of photographs of several sculptures, and some loose photographs.  The sculpture subject tot he lawsuit was among the loose photos.  Thus, the magistrate judge concluded that the submission was not orderly and was not a collection of unpublished works entitled to copyright registration.

The Seventh Circuit tried to review Neri’s submission (the copyright deposit) but it was not in the record.  Thus, the magistrate judge had come to his conclusion based on deposition testimony.  Neri had described her submission the same way as the magistrate judge did, but also argued later that a photo of the sculpture was in the book.  “The problem may be terminological; Neri may have used the title ‘Mendota Reflection’ for more than one sculpture. But it is hard to understand how a court could conclude that a given submission is not ‘in an orderly form’ when the submission cannot be examined.”  Neri, Slip Op. P. 4.

Even though Neri’s deposit copyright deposit material submission was not in the record, she did have the copyright certificate.  Thus, Defendants had to show why the court should disregard the registration.  If the appeals court followed the magistrate judge’s line of reasoning, only a single bound book is an “orderly” way to present photographs of sculptures, and if the sculpture is in the book then the registration is valid. However, the Seventh Circuit did not see why only a single document could be considered orderly. The Copyright Register found Neri’s submission to be adequate and a district court should not find otherwise without a compelling reason.  Further, the magistrate judge did not rely on any legal authority to show how much order was required in a collection submission.

“Since the ‘orderly form’ requirement implements a statute allowing the [Copyright] Register to require ‘other information’, the key question must be whether the submission is organized well enough to permit users and courts to pin down the ‘information’ on which copyright enforcement depends.”  Neri, Slip Op. P. 5.  Thus, as long as the loose photographs were labeled in some way so that each work was readily identifiable, then Neri’s submissions should be considered orderly.

“Any organization that enables a court to associate a work underlying the suit with a work covered by a registration ought to do the trick. If a booklet (or PDF file) with page numbers is orderly enough—as the magistrate judge thought—a sequence of loose but numbered or named photographs should be enough too.”  Neri, Slip Op. P. 6.  However, if Neri did not submit photos of the sculpture, then the copyright registration does not support this lawsuit.

Defendants also argued that Neri was not the author of the sculpture: Fritz Schomburg is a glass-blower (a gaffer) who made the glass elements of the sculpture, but Neri only made the molten glass available as Schomburg needed it.  Defendants’ argument was that a change in form from drawings to glass creates intellectual property rights.  This is the same argument as saying that a typesetter owns the copyright to a book because the author did not type it personally.  Neri created the sculpture by designing it, choosing the glass, picking out the shapes and colors, etc.  As a result, the Seventh Circuit vacated the dismissal of Neri’s suit and remanded it for further proceedings.

Articles Copied Without Authorization In Patent Applications Is Copyright Fair Use

A Magistrate Judge for the District Court of Minnesota recommended that the District Court grant a defendant’s motion for summary judgment, finding that the defendant was entitled to fair use protection under the Copyright Act for using portions of scientific articles in patent applications.  American Institute of Physics, et al. v. Schwegman Lundberg & Woessner, P.A., et al., Case No. 12-528 (RHK/JJK) (D. Minn., July 30, 2013) (available here).  Plaintiffs American Institute of Physics (“AIP”) produce and distribute scientific journals containing scholarly articles.  Defendant Schwegman Lundberg & Woessner, P.A. (“Schwegman”) is a law firm specializing in prosecuting patent applications.  Schwegman copied 18 of AIP’s articles from the United States Patent and Trademark Office (“USPTO”) and other sources.  AIP sued, alleging copyright infringement asserting that Schwegman’s downloading, storing, making internal copies of, and distributing AIP articles by email constituted infringement.  Schwegman and the USPTO argued that its copying of the articles constituted fair use under the Copyright Act and moved for summary judgment.  The District Court requested a report and recommendation from the Magistrate Judge.  The Judge concluded that Schwegman established its fair use defense and recommended that the District Court grant Schwegman’s motion for summary judgment.

The Judge began by stating that Schwegman’s use of the articles was directly connected to Schwegman’s practice as a patent prosecution law firm.  Thus, the patent application process and the USPTO requirements are relevant.  The USPTO requires a patent application to disclose all known information that may affect the patentability of an invention, which is known as “prior art.”  If a patent application is filed along with a disclosure statement, that lists the prior art, that statement must include a copy of each publication.  “Thus, when a patent applicant files a disclosure statement, the USPTO’s regulations require the applicant to submit copies of publications, in whole or in part, that are material to the applicant’s claims of patentability for her inventions.”  American Institute of Physics, Slip Op. P. 7.  Schwegman provided copies of the articles to the USPTO in order to comply with this duty to disclose the prior art.

Next, the Judge considered the intended audience for the articles.  AIP publishes its articles to inform their readers, which include academics, researchers, and the general public.  Thus, AIP argues that patent attorneys and investors should be within AIP’s target audience.  AIP had issued nine licenses to various law firms to allow these firms to copy AIP’s articles.  Schwegman argued that the academic journals were a two-way market: authors submit their articles in hopes of being published, and readers benefit from the content.  Schwegman’s expert witness, economist Dr. Jean-Pierre Dubé, testified that patent attorneys read these articles for a different purpose than AIP’s target audience; patent attorneys read the articles to determine whether they should be disclosed as prior art.  As such, Schwegman argued, patent attorneys are not within the target audience.

Schwegman obtained 11 of the 18 articles by downloading them from the USPTO’s website.  The remaining 7 articles were obtained different ways, such as from an email attachment or a university website.  Schwegman kept copies of the articles on its electronic file management system.  This system allows the attorneys at Schwegman to access documents stored on the firm’s server.  The system does not place restrictions on who can see the articles, or how the articles can be used, but it does not allow people to search the text of the articles.  AIP argued that this electronic file management system is essentially an electronic library.

Schwegman moved for summary judgment, arguing that its use of AIP’s articles was fair use. There are four non-exclusive factors for courts to consider when analyzing a fair use defense: “(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.” 17 U.S.C. § 107.

First, the purpose and character of Schwegman’s use of the articles was to comply with the legal requirement to provide prior art to the USPTO.  Schwegman provided a copy of each article and cited to each article in each of its patent applications.  Thus, Schwegman’s use was different than AIP’s use.  Even though Schwegman’s use of the articles was not transformative, because the articles were copied and not changed, the first factor still weighs in favor of Schwegman.  “[R]eproduction of an original without any change can still qualify as a fair use when the use’s purpose and character differs from the object of the original, such as photocopying for use in a classroom.” American Institute of Physics, Slip Op. Pp.  24-25.  Thus, the first factor weighs in favor of Schwegman.

Second, the Judge considered the last factor of the effect on the potential market for the articles, because it is related to the first factor involving the purpose and character of the use.  If Schwegman’s use of the articles does not usurp the market for the articles, then the fourth factor weighs in favor of fair use.  “[AIP] present[ed] no evidence that the patent lawyers’ use of the scientific Articles to meet their obligations to disclose prior art to the PTO adversely affects the traditional target market for these Articles, i.e., academics, physical scientists and researchers, engineers, educators, students, and members of the general public who want to read peer-reviewed scholarly, highly specialized articles about the physical sciences and other scientific disciplines.”  American Institute of Physics, Slip Op. P. 31.  Further, AIP presented no evidence to counter Dr. Dubé’s testimony that Schwegman was outside of AIP’s target market.  The only evidence AIP presented was that it lost revenues from patent attorneys who did not pay the licensing fee to obtain copies of the articles.  “But this is not the sort of negative effect on the market that weighs heavily against a finding of fair use. If it were, then the market factor would always weigh in favor of the copyright holder and render the analysis of this factor meaningless.”  American Institute of Physics, Slip Op. P. 32.  Therefore, the fourth factor weighs in favor of Schwegman.

Third, the nature of the articles was considered.  Generally, a “creative” work receives more copyright protection.  The Judge concluded that the nature of AIP’s articles weighs slightly in favor of Schwegman because the articles “are factual or informational,” primarily communicating very technical information about the results of scientific research.

Fourth, the Judge examined the amount and substantiality of the articles used by Schwegman.  Copying a work in its entirety does not prevent a defendant from claiming fair use protection.  The amount of the copying is related to how the copying furthered the purpose and character of the use.  Schwegman copied the articles in their entirety.  However, this copying was necessary for Schwegman’s purpose to disclose prior art on patent applications.  This purpose was different than AIP’s purpose in publishing the articles.  Thus, “Schwegman’s copying is consistent with the purpose and character of Schwegman’s new and different use of the Articles,” and therefore weighs in favor of fair use.  American Institute of Physics, Slip Op. P. 38.

AIP also argued that a finding of fair use was inappropriate because Schwegman did not have an authorized or licensed copy of the articles.  The Court found no legal authority supports this contention.  Further, there was no evidence presented that Schwegman acted in bad faith in copying the articles.  As such, the Judge concluded that Schwegman was entitled to the fair use defense.