March 22, 2009

VARA Lawsuit Filed over Destruction of Burning Man Art Car

The creators of Burning Man art car “La Contessa” have filed a lawsuit under the Visual Artists’ Rights Act (one of my favorite corners of Title 17) against the Nevada farmer who torched the car.

It had been left on the rancher’s land for several years due to a broken axle, with the permission of one of the land’s tenants. But that turns out not to matter — the claim is under the VARA, which would preempt state laws about what you can and can’t do with things left on your property. 

The relevant section of the statute, 17 U.S.C. 106A(a)(3)(B), states in pertinent part:

Subject to section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art . . . subject to the limitations set forth in section 113 (d), shall have the rightsubject to the limitations set forth in section 113 (d), shall have the right . . . to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.

So we’re left with two questions: (1) is La Contessa “a work of visual art” under the statutory definition of that term, and (2) is La Contessa “a work of recognized stature”?

The first question is pretty straightforward. “Work of visual art” is a defined term in Section 101, and the definition includes “a painting, drawing, print, or sculpture, existing in a single copy.”  There’s only one Contessa, and I think it can fairly be termed a “sculpture,” so that requirement is satisfied.

But is it “a work of recognized stature”? There’s no statutory definition for that term. In Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303 (S.D.N.Y. 1994), the court held that the term called for a (rather obvious) two-pronged analysis: Does the work have “stature” (i.e., is it viewed as being meritorious)? If so, is that stature “recognized” (i.e., is there evidence that some relevant group of people viewed it as being meritorious)?  Good facts include the broad knowledge and admiration of La Contessa in the Burning Man art community.  The key bad fact: if it was a work of such recognized stature, why didn’t anybody go fix the axle and retrieve it in the several years it was sitting there?

There’s also a strong sense of “What was I supposed to do with it?” emanating from the land owner.  The statute’s prohibition on destruction, the land owner would argue, is premised on the idea that someone who owns a work of recognized stature won’t just leave it lying around.

This doesn’t strike me as an issue amenable to determination on summary judgment, so I think if this is fully litigated the case ends up being determined by a battle of the experts before the jury on the question of whether La Contessa was a “work of recognized stature.”

February 3, 2009

Big News: I’m Joining Durie Tangri Lemley Roberts & Kent LLP

My friends and colleagues Daralyn Durie, Ragesh Tangri, Mark Lemley, Clem Roberts, and Ryan Kent have formed a new law firm — and I’m joining them as their first (and, for the moment, only) associate.  The press release follows.


Google, Genentech and Ticketmaster Choose New Firm As Counsel

SAN FRANCISCO, Feb. 2, 2009 – The partners of Durie Tangri Lemley Roberts & Kent LLP are pleased to announce the formation of their new firm, effective today.

Durie Tangri focuses on diverse areas of complex civil litigation, including intellectual property (patent, trademark and copyright), complex contract and commercial matters, antitrust and unfair competition, class actions, appellate practice and professional liability.

Durie Tangri’s founding members were formerly with San Francisco’s litigation boutique Keker & Van Nest, LLP, and maintain a strong relationship with their former firm. “Ragesh, Daralyn, Mark, Clem and Ryan are great lawyers and we wish their new firm success,” Keker & Van Nest managing partner Chris Kearney said.

The respect is mutual. “John Keker and Bob Van Nest have been tremendously generous as mentors and leaders,” said Ragesh Tangri. “We hope to maintain that spirit, as well as the firm’s standard of excellence in law practice, in our new venture.” Daralyn Durie echoed those sentiments: “I couldn’t have been more fortunate than to have John [Keker] to teach me how to try cases. After more than 15 years, I will miss practicing with him and everyone else at the firm enormously, but I am very excited by the prospect of founding a new firm.”

Clients such as Google, Genentech and Ticketmaster have recognized the firm’s promise and chosen the firm as their counsel in several matters.

Daralyn Durie has been named one of the top 50 litigators under 45 in the United States by American Lawyer and the top 100 lawyers in California by the Daily Journal. Ragesh Tangri has been recognized as a leader in intellectual property law by Chambers and Partners and has been included in Best Lawyers in America’s commercial litigation section. Mark Lemley is the William H. Neukom Professor of Law at Stanford Law School and the Director of the Stanford Program in Law, Science and Technology. He has been named one of the top 50 litigators under 45 in the United States by American Lawyer and California Lawyer’s Attorney of the Year in intellectual property. Clement Roberts and Ryan Kent have achieved success at all levels of complex civil litigation, from winning summary judgment to obtaining successful jury verdicts.

Durie Tangri serves clients nationally from its offices in San Francisco, California. For more information, please visit

# # #

Keker & Van Nest is an amazing law firm filled with great lawyers who are also really good and interesting people.  I’m excited to take on the new challenges and rewards that the new firm will bring, but sad to leave Keker.

November 1, 2008

USF Fair Use Symposium: Panel 1 — Real Lawyers, Real Cases

I’m liveblogging today from the University of San Francisco School of Law Fair Use Symposium. The first panel is called “Real Lawyers, Real Cases.”  The panelists:

  • J. Thomas McCarthy (USF, Moderator)
  • Annette Hurst (Orrick)
  • Jason Schultz (Berkeley)
  • Corynne McSherry (EFF)
  • Bill Coats (White & Case)
  • Ray Nimmer (University of Houston Law Center)

First, Bill Coats:

User Generated Content and Copyright Issues from the Entertainment Industry Point of View.

He represents many content owners, including one Japanese anime producer whose Japanese-broadcast shows appear on the internet, with English subtitles, before they have a chance to subtitle them and show them on Cartoon Network themselves.

[He does a very good presentation on the latest issues in online copyright law, including inducement and the "making available" question. Unfortunately, he runs out of time before going into depth on issues of fair use.]

LucasFilm, his client, sponsors interesting UGC contests.

Next, Annette Hurst:

The parody branch of the fair use defense, focusing on Mattel v. Walking Mountain.

The client was Tom Forsythe. He took photos of Barbie in “compromising positions with vintage kitchen appliances.”  Most of his sales of art prints were to Mattel’s private investigators. He also had a postcard for sale. He also had it on his business card. The precipitating factor for the lawsuit was going up on the web.

Mattel brought copyright claims based on its sculptural work (“the head of the doll without adornment”), trade dress claims (the appearance of the doll with adornment), and trademark claims for the word mark “BARBIE.”

One key issue was whether the works were satire or whether they were parody. (This was spun out in the Dr. Seuss case.) For example, the Barbie Enchiladas photo, Forsythe said, embodied his view that Barbieis being sold to us as a consumer food concoction that we are to blindly internalize. It helped atmospherically that the work had been lauded in a competition by Guggenheim curators.

Mattel struggled to argue that it’s simply a doll, not a symbol with social importance. The struggle they had with this is porrayed best in connection with Cutting Board Barbie. Mattel argued that this was a distrubing image, but was forced to concede that there’s more to the doll than a hunk of plastic. Once the photos stop being about just the doll, the parody case is close to being won.

Is satire/parody a specrum or a binary? From whose perspective — the artist’s, the public’s? Message evaluation is more often seen in trademark cases. Indeed, Mattel put in a survey. But if you’ve got a survey, you’re gonna beat summary judgment. So they argued that parody is a question of law — and the Ninth Circuit agreed.

And how do you prove a negative to win on summary judgment on the fourth factor? They put in an economic expert based on Mattel’s existing works and licensed derivatives. The economist said they’re not in the same market. Mattel responded that they have licensed high-end photographic works in the form of coffee table books.

Lucasfilm has realized that if they harness the market for UGC, even for parodic works, they will have a very good case for defeating the fourth factor even for parodic works.

Next, Ray Nimmer:

“Fair Use: Major Markets or Small Victories”

There are several views of fair use — should you protect small incursions, or is this an exercise in information market engineering? That is, is it “no harm, no foul” or a market allocation principle that allocates part of the market to non-owners?

There is a divide between “global” arguments — that a given clas of conduct should always be immune from copyright liability — and individual arguments that are much more specific to the facts of the particular case.

The “market harm” prong can be tantamount to saying “I’m not there yet — steal it from me.”

He’s involved in Scientology v. Leterese, in which he’s suing Scientology for using a sales book. They said it was de minimis, fair use, and asserted laches.

He thinks fair use should be about personal beefs, not about allocating markets among large companies. It’s meant to create a safety valve for claims that are stupid.

Corynne McSherry and Jason Schultz:

“From Due Process To No Process?: The Role of Fair Use in DMCA Takedowns”


Not all fair use questions are impossibly vague. It can be fairly straightforward. Also, what does “fair” mean? Well, one of the things “fair” means is “due process.”

Before the DMCA, you had to file a lawsuit — and comply with Rule 11.

[He describes 512.]

[He discusses the Michael Crook, Electric Slide, Geller, and Truthiness/Falsiness cases.]


[She discusses the Dancing Baby case quite compellingly.]

Her proposal: OSPs should do human review when there is a counternotice, and immediately restore in the case of clear fair uses.

October 28, 2008

Settlement Reached in Authors Guild v. Google

Today, Google, the Authors Guild, and the Association of American Publishers announced the signing of a settlement agreement in the ongoing copyright litigation over the Google Library Project.

I’m proud to be a member of the legal team representing Google in this matter.

Class members can get information about the settlement here, and members of the public can get more information from Google here.  If you’re looking for more detail than those sites provide, the proposed class notice (39 page PDF) goes into greater depth, as does the brief in support of plaintiffs’ motion for preliminary settlement approval (48 page PDF).  And if you’re interested in the real nitty gritty, the proposed settlement agreement is available here.

March 27, 2008

The First Phonograph

Hackers have an extremely old joke about “write-only memory” — just like read-only memory, but the other way around.

It turns out that the first phonograph — a number of years before Edison’s well-known invention — was just such a system.  It could record sounds onto a piece of paper, but they couldn’t be played back.

Right around 1.5 centuries later, Édouard-Léon Scott de Martinville’s April 9, 1860 autophonogram of a woman singing “Au Claire de Lune” has finally been rediscovered and played back with the help of some serious image-processing work by scientists at Lawrence Berkeley National Laboratory.

Note that this sound recording is, believe it or not, still subject to state-law copyright protection in the United States until February 15, 2067.  17 U.S.C. 301(c).

January 26, 2008

Federal Court Doesn’t Quite Recognize Copyright in C&D Letter

Techdirt has a post on a rather triumphal press release put out by a law firm claiming that “[t]he US District Court for the District of Idaho has found that copyright law protects a lawyer demand letter posted online by the recipient.” That’s one way of interpreting the judge’s ruling, but I don’t think it’s the right way.

Here’s what happened. An anonymous poster (“Tom Paine”) said some things on a message board that a company called Melaleuca didn’t like. Melaleuca’s lawyers sent a letter to the message board’s administrators asking them to take down the posts to which they objected. Then, a second anonymous poster (“d2″) posted Melaleuca’s cease-and-desist letter to the message board.

Melaleuca wanted to know Tom Paine’s identity so that they could take some action against him. But bringing a John Doe lawsuit would be expensive and time-consuming. Then Melaleuca had a clever idea: because section 512 of the Copyright Act allows pre-litigation subpoenas to uncover the identities of anonymous online copyright infringers, they could get Tom Paine’s identity by (1) accusing d2 of infringing the copyright in their cease and desist letter, then (2) claiming that d2 and Tom Paine were the same person.

Well, it almost, sort of worked.

They were successful in getting d2′s identity, because the court found the test for issuance of a section 512 subpoena to be a lenient one: If the Copyright Office issues a registration, the court found, that’s all the copyrightability analysis a court must undertake in order to enforce a pre-litigation subpoena under section 512. The court did not say that the C&D letter was copyrightable, or that posting it was not fair use. Instead, the court merely said that Melaleuca had met the low bar of showing a prima facie case of infringement. As the court put it:

[T]he Court will not go into an in-depth analysis of the merits of a copyright infringement claim in determining whether to quash this subpoena. It is sufficient in this instance that Melaleuca has registered the Sheppard Letter with the Copyright Office.

Unlike the Patent and Trademark Office, the Copyright Office (for various very good reasons) does not perform an in-depth examination of each registration. As the lawyer who put out the press release notes, “a US copyright registration is usually ‘rubber stamped’ and obtained on an expedited basis in about five business days.” Close cases, such as an attempt to register a virtually purely functional work such as a legal demand letter, usually result in the issuance of a registration, the validity of which is later contested in court. The district court in this case decided that the validity of the copyright should be determined after the plaintiffs actually filed their lawsuit for copyright infringement. It did not, as the press release implies, make a conclusive determination of copyrightability.

Melaleuca was thwarted in its ultimate goal of unmasking “Tom Paine.” The court found that Melaleuca had presented insufficient evidence that “d2″ and “Tom Paine” were one and the same, and quashed that portion of the subpoena which sought Tom Paine’s identity. (The edited version of the decision on the web site of the lawyer who put out the press release conveniently leaves that part out, but it makes up a substantial part of the court’s decision, which is available here.)

January 2, 2008

9th Cir.: Karaoke versions are audiovisual works, not fair use

In an opinion published today in Leadsinger, Inc. v. BMG Music Publishing, the Ninth Circuit held that Leadsinger’s karaoke devices, which contain copies of lyrics for display on a TV screen, are not eligible for a license under 17 U.S.C. 115 because they are “audiovisual works,” not “phonorecords.”  This holding is the same as the Second Circuit’s holding on the same question in ABKCO Music, Inc. v. Stellar Records, Inc. 96 F.3d 60, 65 (2d Cir. 1996). This means that companies marketing karaoke versions of songs, when they display the lyrics, must separately negotiate licenses with the relevant music publishers rather than relying on the statutory license that would be available if the karaoke versions were marketed without the ability to simultaneously display lyrics.

Perhaps more interestingly, the court affirmed the dismissal with prejudice of the plaintiff’s declaratory judgment claim asserting noninfringement based on the fair use doctrine.  The court held that resolving the fair use inquiry on a motion to dismiss is proper when the facts alleged in the complaint, if true, resolve the fair use inquiry.

December 12, 2007

Fandom’s nonprofit: the Organization for Transformative Works

The world has a new good cause. A group of writers and academics with ties to the fanfic community has founded the Organization for Transformative Works.  As befits an organization with its roots in a deeply postmodern art form, the organization is a bit of a pastiche: part EFF, providing legal support to the fanfic community; part Participatory Culture Foundation, creating and disseminating software that furthers its policy goals; and part academic society, publishing a peer-reviewed journal on “fanworks and practices.”

I’m exicted to see what they do. They’re certainly well-represented on the legal side, as Rebecca Tushnet, the leading legal scholar on fanfic, is on the organization’s founding board.

November 22, 2007

Romantics Detail What They Don’t Like About Activision

As commented upon by Michael Madison, the Romantics have filed suit against Activision, alleging that the version of “What I Like About You” included in the Guitar Hero Rocks the ’80s video game (for which Activision got a license from the songwriters) sounds too much like the original recording.

In their complaint, available here as a PDF, the Romantics allege three counts: violation of the right of publicity, a somewhat vaguely outlined Lanham Act claim, and unjust enrichment. They can’t allege copyright infringement, since the defendants licensed the underlying musical work, and the copyright in a sound recording does not extend to recordings that merely consist of sounds that “imitate or simulate those in the copyrighted sound recording,” under 17 U.S.C. § 114(b).

The publicity claim would seem to turn on whether the Michigan common law right of publicity protects against vocal impersonations, as the Ninth Circuit held California law did in Midler v. Ford Motor Co. – and whether the court feels like having another crack at the thorny preemption issues raised by the interaction between such a common-law right and Section 114(b) of the Copyright Act.

UPDATE (20 December 2007): The Detroit Free Press reports (via Bill Patry) that the Romantics’ motion for preliminary injunction was denied. No written opinion is available as of this writing. The denial of a preliminary injunction doesn’t mean the case is over, only that Activision can keep selling the game while the suit is ongoing.  Perhaps the court felt that pulling Guitar Hero off the shelves this holiday season would cause too much strum und drang.

November 9, 2007

Followup on § 2257

I’ve received a number of emails asking for basic information about the ramifications of the Sixth Circuit’s decision in Connection Distributing case, discussed here.  I can’t say what the decision means for any particular person, but here are some helpful facts:

  • Who is this “Sixth Circuit”? The decision was issued by a three-judge panel of the United States Court of Appeals for the Sixth Circuit. The Sixth Circuit encompasses Kentucky, Michigan, Ohio, and Tennessee.
  • What happens now? The government can ask for rehearing by the full Sixth Circuit court sitting together (or “en banc”). If rehearing is denied, the government can ask the Supreme Court to review the case. In very few cases is en banc rehearing or Supreme Court review granted — but in very few cases does a Court of Appeals declare a federal statute unconstitutional. If the Supreme Court decides to review the case, its decision would have nationwide effect.
  • What does it mean if rehearing en banc and Supreme Court review are denied? It will mean that federal district (trial-level) courts in Kentucky, Michigan, Ohio, and Tennessee, as well as later three-judge panels of the Sixth Circuit Court of Appeals, will have to abide by the ruling.
  • What does it mean for jurisdictions outside Kentucky, Michigan, Ohio, or Tennessee? As a formal matter, not much. But federal courts look to other federal courts for guidance in deciding their cases, and no Circuit (other than, arguably, the D.C. Circuit) has affirmatively found Section 2257 to be constitutional. Other courts may look to Connection Distributing as a persuasive authority in deciding future cases about the constitutionality of Section 2257.

My practice doesn’t include any 2257 work, and I can’t help you with your recordkeeping compliance. But I hope that the above helps clarify what the Sixth Circuit’s decision means (and doesn’t mean).

Disclaimer Haiku:
West wind seems to say,
"This is not legal advice;
I'm not your lawyer."

(And if you're a client with whom I have a preexisting attorney-client relationship, this still isn't legal advice.)

In case you're wondering, this blog is also not intended as advertising, as a representation of anything but my personal opinion, or as an offer of representation.

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