To Register or Not to Register Copyright in Legal Briefs - That is the Question

Like many questions in the law, the answer is a conditional one - maybe, and maybe not. The question is not a new one, but the ease of distribution afforded to digital media has brought it to the fore once again. In White v. West Publishing Corporation et al, Case No. 12-1340 filed in the US District Court for the Southern District of New York, a class action suit filed by several subclasses of lawyers is challenging the right of Lexis-Nexis and West Publishing to collect (usually via download) legal briefs filed in cases, and then repackage them for sale, presumably to other lawyers. In a ruling issued on May 16th, U.S. District Court Judge Jed Rakoff dismissed the claim of the subclass of lawyers who had failed to register their briefs with the Copyright Office, on the grounds that, as he put it, "The statute is unequivocal that completing registration or pre-registration is a prerequisite to filing a claim".

Judge Rakoff's order does not address the validity of the claims of the other putative subclass - comprised of lawyers who did register their briefs.  While this decision, on its merits, seems unremarkable and consistent with long-established legal precedent, it does re-open the debate about the merit of the underlying claim - that lawyers have a right to, and should exercise their right, to register copyright ownership in their legal briefs. This presents the more interesting issues for discussion.

My review of previous commentary in this debate disclosed that two principal arguments seem to be advanced in opposition to registration - 1) all filings with a court are a matter of public record, which in turn means that briefs filed instantly go into the public domain, making registration impossible; and 2) absent someone directly copying a brief in its entirety, any subsequent re-packaging of a legal brief is a fair use, and therefore defensible against a subsequent infringement claim. 

The fact that court filings are a matter of public record doesn't mean that the contents of those filings are placed in the public domain. This is true of the legal briefs filed, and is made more evident if you consider that attachments to those briefs, particularly in intellectual property cases, often include material clearly protected by copyright registration. Filing a lawsuit claiming infringement of a motion picture script, where that script is attached as an exhibit to the complaint, doesn't result in a waiver of copyright protection for that script, merely because the script, as an exhibit, is now part of the public record.

The fair use argument presents a more complex problem, meriting a more detailed analysis. Is the nature of the use, in a legal brief, a commercial use, or a non-profit use? Is the use transformative? Is the nature of the work creative, thereby warranting greater protection? As is often the case in fair use defenses, it is impossible to posit a bright line answer to these questions, leaving lawyers to fall back to the dreaded "each case has to be separately analyzed on its own merits" answer, which gives little guidance to a practitioner faced with the decision of whether to raise the defense.

The fourth prong of fair use analysis, the effect of the use on the market for the original work, poses even more difficulties regarding legal briefs. The brief is not sold as a good itself, but rather represents the result of billable hourly work, which includes compensation for the research required, the time spent drafting and editing the brief, and the skill and experience of the author. None of these elements are subject to copyright protection.

Moreover, the attorney who drafts the brief is generally not in the business of selling the brief as an independent good, and the work is largely tailored to the specific facts of the case or needs of the client. Which of course raises another issue usually not discussed in this debate - while attorney work product belongs to the attorney, does the client have any ownership interest in the work which was created based on their case or need, and for which they paid the cost of its creation? And given these issues, is there really a strong argument that can be made that lawyers have an interest in marketing these briefs?

Since most of what is found in a legal brief isn't subject to copyright protection (ie:  the facts of the case, the case citations and the facts and quoted language from those authorities, the text of relevant statutes and prior orders in the case; the research efforts of counsel, and related items), what is left is the prose used by counsel to present the argument. It seems unlikely that the interest in this prose has enough value to make assertion of a protectable copyright interest worth pursuing - unless the universality of the issue and the high quality of the prose attracts the interest of an aggregator like Lexis-Nexis or West, who are thereafter able to make a sufficiently grand net profit from the resale of the text to warrant the claim.  Sounds unlikely to me - so let's wait to see the outcome of this class action suit to see if the District Court agrees.

Comics, Courts and Controversy

I'm back after an unexpectedly long hiatus. Part of the reason for my absence is the effort I've devoted to completing a lengthy new law review article: Comics, Courts and Controversy: The Cases of the Comic Book Legal Defense Fund, which has just been published by the Loyola Los Angeles Entertainment Law Review. You can download a copy at:  http://elr.lls.edu. 

Here's the abstract for the article:  

Cartoons and comics have been a part of American culture since this

nation’s formation. Throughout that lengthy history, comics and cartoons

have also been a subject of controversy, censorship, legislation, and litigation.

They have been viewed as a threat to society and a cause of juvenile

delinquency; they are scandalous, indecent, and obscene. The Comic Book

Legal Defense Fund (“CBLDF”), a New York-based non-profit organization,

provides legal defense for comic artists, collectors, distributors, and

retailers who face civil and/or criminal penalties for the creation, sale, and

ownership of comics, cartoons, graphic novels, and related works.

The Introduction to this article charts the history of the comic art form

and, in particular, its history in the United States. This section offers a

summary of the first efforts to restrict the content of comics via investigations

and Congressional hearings fueled by the dubious psychology and social

science theories of Dr. Frederic Wertham. These theories offer an example

of the kind of misguided fears that currently augment attacks on the

comic art form today. Finally, the Introduction explains the origin of the

CBLDF due to the prosecution of a comic storeowner.

The second section of the article provides a detailed discussion of Mavrides

v. Franchise Tax Board. In Mavrides, comic creator Paul Mavrides,

co-author of the notorious underground comic The Fabulous Furry Freak

Brothers, successfully battled the California Franchise Tax Board over the

taxation of comics. As a result, independent comic artists were free of undue

tax burdens that otherwise would have limited their ability to continue to create

comics with edgy political and social commentary.

The third section of the article focuses on the principal type of case the

CBLDF has worked on for the past two decades—fighting the U.S. Justice

Department and local state prosecutors’ efforts to censor the content of

comics, usually by alleging that the content is obscene or indecent. In particular,

the section focuses on the cases of Gordon Lee, a Georgia-based distributor

prosecuted for allegedly distributing an obscene graphic novel to a

minor, and Christopher Handley, an adult prosecuted under the PROTECT

Act for the mere possession of allegedly obscene Manga comics.

The final section of the article argues that the current American jurisprudence

imprisons creators, distributors, and collectors for the ideas they

express in graphic formats. It argues that the Supreme Court was wrong

when it decided that obscene materials are outside of the protection of the

First Amendment. Unfortunately, this decision has had a tremendous impact

on the rights of comic creators, distributors, and collectors. Furthermore,

the rationale for criminalizing explicit sexual material, to protect children

from the alleged harm exposure to these materials causes, is flawed.

The absence of any definitive proof of that harm leads to the recommendation

that at the very least, penalties for the creation, distribution, and ownership

of comics and cartoons with sexual content must be de-criminalized.

I hope you take the time to read it, and send me comments via this blog, or directly to me at mgreenberg@ggu.edu. Now that I'm back, more posts to come in the near future!

Seeing Red: Professor Susan Scafidi's Insights on the Louboutin v. YSL decision; and Other Highlights of the 10th Annual IP Law Conference at GGU

Fordham Law Professor Susan Scafidi, founder and director of the nonprofit Fashion Law Institute, spoke to an SRO crowd on Friday at the 10th Annual Conference on Recent Developments in IP Law and Policy, presented by the IP Law Center of Golden Gate University. Her topic - the controversial decision by USDC Judge Victor Marrero denying injunctive relief sought by famous shoe designer Christian Louboutin against Yves Saint Laurent America, Inc. for the latter's alleged infringement of Louboutin's signature trademark red soles on its designer shoes. YSL's defense challenged the validity of Louboutin's registered mark. According to Prof. Scafidi, the decision in Louboutin v. YSL, 11 Civ. 2381 (VM) (USDC. SDNY, 8/10/11), is already in the process of being appealed to the Second Circuit.

Judge Marrero's decision is another judicial foray into the dangerous and ill-defined waters of aesthetic functionality, an area of trademark law that confounds many courts and legal scholars. Here, he finds that "in the fashion industry color serves ornamental and aesthetic functions vital to robust competition", leading to his conclusion that the Louboutin trademark, even if the red sole has acquired secondary meaning, should not have been registered, and had this been a motion for summary adjudication, he would have cancelled the registration.

Prof. Scafidi was critical of several key aspects of the decision: she opined that it overlooks and fails to follow key elements of the Supreme Court's decision in Qualitex v. Jacobson, 514 U.S.159 (1995); that it unduly downplays the significance of the acquired distinctiveness and secondary meaning doctrines; that it discouraged trade dress protection across industries; and that it takes the U.S. another step away from harmonization with Europe on this issue.

The question of whether, and in what circumstances, a single color may serve as a valid trademark for goods and services has bedeviled many courts and trademark scholars for years.
It remains to be seen whether, through the appellate process, the dispute of these high end shoe designers will finally provide the platform (an admittedly bad pun) for a court to offer a definitive answer to this question.

Other noteworthy presentations at this years' Conference included Prof. Cynthia Ho (Loyola University Chicago School of Law), who offered fascinating insights into the difficult problems facing diverse stakeholders in the intersection between patent holders and the needs of public health in the global economy. She was candid in her acknowledgment that answers to these issues are hard to find, and offered attendees a cogent analysis of the competing interests. The similarly difficult set of issues involving rights of privacy in personal identity data were the focus of an engrossing presentation by in-house counsel for McKesson (Sharon Anolik) and TrustE (John Tomaszewski). The fast paced world of online gaming was also explored in presentations by Neil Smith (Ropers Majeski), Sharon Zezima (Electronic Arts), Shawn Faust (formerly with Booyah), and Jennifer Lam (Zynga). The Conference kicked off with a timely review of the key features of the America Invents Act, presented by veteran patent attorneys Robert Morrill and Justin Beck.

Planning begins Monday on next year's Conference. Don't miss it! For updates, see www.gguiplc.com.

GGU IPLC's 10th Annual IP Conference 9/30/11

Golden Gate University's IP Law Center hosts the 10th Annual Conference on Recent Developments in IP Law and Policy on Friday, September 30th from 9-5:15 in Room 2201 on the Mission Street campus in San Francisco. Six hours of MCLE credit for $75 for attorneys, only $35 for alumni, and $14 for students. Sign up at www.gguiplc.com. Featured speakers and panels include Fordham Law Prof. Susan Scafidi, Director of the nation's only Fashion Law Institute; a panel of online game company counsel, including in-house counsel from Zynga and other leading companies; two panels on patent law reform; and a panel on privacy and medical records. Don't miss this great event!

Of Trolls and Underground Comix

A series of recent articles in legal news and the popular press have focused on a very unfortunate new way for generating income from copyright ownership - the concept of copyright "trolls". The most recent source of this concept appears to be based on the well known tactic in the patent field, whose perpetrators became known as "patent trolls" - a term referring to companies or individuals who acquire rights to patents for the sole purpose of waiting for some unsuspecting person (and in some instances perhaps not so unsuspecting) to make use of the patent, which leads the troll to threaten a lawsuit, followed quickly by a relatively low-cost, nuisance value settlement proposal. I suppose the "troll" reference comes from fantasy literature - the troll as a creature who waits under or on a bridge, exacting tribute in exchange for the right to pass.

In the copyright context, the troll owns, either as a result of their own creation, or by acquisition, rights to a copyright protected work, usually a song, movie, book or piece of software. If their work is the subject of widespread unauthorized downloads, the trolls send out hundreds of demand letters, threatening suit for intentional copyright infringement and citing the maximum statutory recovery sum of $150,000, followed by a low-dollar settlement demand. This activity seems to be imitative of the infamous effort of the Recording Industry Association of American's to put a halt to illegal downloads by threatening costly copyright infringement suits, and offering to settle for $3500. In one article I saw, an elderly woman received such a threatening letter, apparently based on her having an unsecured wireless access point in her home, that someone else was using to download unauthorized content. Paying the settlement demand is often the path of least resistance, since hiring counsel to defend a case is usually more expensive than the amount demanded.

In addition to the obvious unfairness of this practice in those cases where the accused is ignorant of the use of their wireless portal, or even worse, is simply innocent, this practice has an even more pernicious impact. It is likely to have a negative impact in the hearts and minds battle to get people to stop violating copyright via unauthorized downloads and/or uploads. The content industries: music, movies and books face constant criticism that they are greedy and that their products are too high priced and deliver poor quality work - negative publicity about copyright troll abuses doesn't help.

And now for a shameless plug. My wife Kim Munson is a partner in a new company, Comic Art Productions and Exhibits, found at http://www.cape-comicart.com. The company, working with app developer Toura, LLC., has launched a great app for IPad (and soon to be released on Android and IPhone as well) that explores the world of underground comix. The app is called Comix Classics for iPad, you can find it at http://itunes.apple.com/app/comix-classics-underground/id448563049?mt=8; and it is described as:

"Experience —or re-live— the turbulent '60s and ‘70s with this brilliant collection of art from the era’s wild underground comix and graphic novel scene! Featuring: R. Crumb, Art Spiegelman, Will Eisner, Harvey Kurtzman and scores of others."

Now for the fun part - the ITunes store requires that you must be over 17 to buy the app, because it features the following: Infrequent/Mild Simulated Gambling; Frequent/Intense Sexual Content or Nudity; Frequent/Intense Mature/Suggestive Themes; Frequent/Intense Alcohol, Tobacco, or Drug Use or References; Frequent/Intense Cartoon or Fantasy Violence; Frequent/Intense Profanity or Crude Humor.

I can't imagine a better marketing campaign. Check it out - and if you're the first person to identify the speaker of the audio track narration, you'll win a prize!

Save the Children - Thoughts on the Impact of Media on Children

The Supreme Court's decision, announced yesterday, finding that California's legislative attempt to ban violence in video games violated the First Amendment rights of children to access creative works, regardless of the levels of violence or brutality found in those works, contains some strong language favoring freedom of expression. The Court held that while states can protect children from harm, they have no "free-floating power to restrict the ideas to which children may be exposed".

The Court rightly reasoned that imposing this kind of restriction on video games was the proverbial slippery slope - because violence exists in many forms of media, including classic stories like Snow White, and Saturday morning cartoons.

The Court also had to address the issue of why, since it had upheld laws restricting minors access to sexually explicit material, it should not extend that same logic to violent material. Justice Scalia, writing for the majority of five justices, rejected that argument, noting that unlike hard-core pornography, there is no "long-standing tradition in this country of specially restricting children's access to depictions of violence". He also rejected the argument that children viewing violence in media has any causal link to violent behavior. At best, that research simply shows that some children have more feelings of aggression after playing the games - but there is no direct correlation between those feelings and any action being taken by the players.

The Court's decision follows a long line of cases rejecting a causal connection between video games and other violent media and children's violent or aggressive behavior. Ten years ago I participated in a Silicon Spin television debate with an attorney who had filed a lawsuit against a series of videogame companies on the theory that watching violent video games caused the shooters in the Columbine massacre to become violent mercenaries. The suit was subsequently dismissed for lack of proof of a causal link.

In her excellent essay in the June 26th issue of the New York Times Magazine, entitled "The Ninny State', Emily Bazelon points out that this is the same debate that in 1954 led Congress, based on the alleged "scientific" evidence of Dr. Fredric Wertham, to investigate whether violent comic books were a primary cause of juvenile delinquency. Fifty-six years of comic book censorship, which ended just this year, had no effect on juvenile delinquency; however those who would rather find media the cause of violence, instead of the harder social issues to solve, like poverty, illiteracy, joblessness, under-supported schools and teachers, racial and other forms of discrimination, continue with laws like this California statute to scapegoat media - it's an easier target.

Bazelon notes that there is an overwrought level of fear that parents have about the effect on their children of what they see and participate with in social media. She points out that the overall rates of child sex crimes and of teen sex are down since the 1990s, as are juvenile crime, school violence and teen fighting. She quotes David Finkelhor, director of the Crimes Against Children Research Center at the University of New Hampshire, who calls the gap between parents anxiety and reality "juvenoia" , which he says reflects an "exaggerated fear about the influence of social change on children".

So while I agree with the Supreme Court's rejection of the California statute, I question the distinction Justice Scalia makes between media depictions of violence, and depictions of sexual activity. The social science claiming a causal link between depictions of sexual conduct in media, and behavior, by adults and children, is as equally fuzzy, vague and unsupported as the link between violent media and content. I am presently writing a law review article on this subject, and will share more of the results of my research in future blog posts and in the article, which I hope to publish either later this year, or in early 2012.

A New Case Worth Watching: The Puerto80/Rojadirecta Domain Seizure Dispute

Spanish web company Puerto80 filed suit recently in U.S. District Court in New York against the U.S. Government over the seizure, by the Department of Homeland Security and Immigration and Customs Enforcement (ICE), of its popular sports forums Rojadirecta.org and Rojadirecta.com, which were used to exchange links for live streams of U.S. sporting events. Presumably, the government action was based on the possibility that some of the linked sites were operating in violation of the sports leagues copyright ownership rights.

Puerto80 has successfully defended itself against similar claims made in home courts in Spain. In the U.S. lawsuit, filed by the Durie Tangri LLP law firm, which includes Stanford IP Law Professor Mark Lemley, Puerto80 denies any liability for any copyright infringement, both as to civil and/or criminal liability.

A significant issue in the case is the use by the Government of seizure law to shut down the URLs without any prior hearing. While this allows the government to act quickly on behalf of copyright owners, it arguably does deny due process rights to companies that may have a valid defense. Secondary liability cases are fraught with complexity (see last year's Viacom v. Google case for an example), and taking away the right to present a defense until after a seizure has occurred may result in significant financial losses (although Rojadirecta can still be found at Rojadirecta.es, the company claims to have lost 30% of its traffic as a result of the seizure of the URLs).

Setting aside the criminal law claims, I wonder why the civil law seizures don't require at least an ex-parte hearing procedure, with notice to the other side, and an opportunity to be heard, similar to injunction and claim and delivery proceedings in civil law. I'll be keeping an eye on this one, and will update this blog as the case develops.