Fair Use Fridays: Stealing Ideas - Inception Video

Inception in a 60-second video above, courtesy BoingBoing. Inception, a film about stealing and planting ideas, having its title and "idea" stolen by a video. Video by Austrian Wolfgang Matzl.

More on copyright law's fair use doctrine here.


 Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

Defamation Claim Based on Copyright Registration Statement Part II

Malmesbury Bible courtesy Wikimedia Commons

Previously, I posted on a case involving a defamation claim based on copyright registration statement, link and link to case here .

Complaint by an alleged author, based on an unpublished underlying work, complaining that a published work was derivative of her work, and infringed on her copyright and her method of bible study.  Complaint here:

Morris v Atchity Complaint


I noted in my prior post that I hadn't bothered to check the docket sheet to figure out what statement in a copyright registration statement could support a claim for defamation.   My laziness and ignorance was rewarded by American University Washington College of Law student Mark Tratos picking up on the theme, on the Intellectual Property Brief blog here.

So, rather than have everyone speculate, I did what I should have done.  Kenneth Atchity's counterclaim for based on the following allegation:

"Margaret Morris wrote and represented to the United States Copyright Office, under penalty of perjury, that "A contract for this ghostwritten book was offered and my agent Atchity concealed it and allowed it to be illegally signed."

It would seem that Morris' statement would be privileged, since it is a quasi-judicial function and the federal government specifically invites copyright "claims" and requires that they be submitted under penalty of perjury.   Ordinarily, such statements enjoy immunity.

I found a couple of discussions of the Administrative Procedure Act in the case law that generally relate to this, but nothing really on point, see below.    I discuss the application of the Administrative Procedure Act in my Copyright Litigation Handbook 2010, available from West Publishing or Amazon.

Utica College v. Gordon, 2009 WL 3418136, 4 (N.D.N.Y. 2009) appeal denied here.


"...an application for the registration of a copyright is more akin to an administrative proceeding. See 17 U.S.C. § 701(a) (“All administrative functions and duties under this title, except as otherwise specified, are the responsibility of the Register of Copyrights as director of the Copyright Office of the Library of Congress.”) (emphasis added). Additionally, the decision to grant a copyright registration is subject to the Administrative Procedure Act. 17 U.S.C. § 701(e). Therefore, defendants are not entitled to attorneys' fees because even if plaintiff's applications for copyright registration were objectively unreasonable, the applications did not constitute civil actions brought under title 17.



Darden v. Peters, 488 F.3d 277, 283 -286 (4th Cir. 2007)

The Copyright Act provides that “all actions taken by the Register of Copyrights under this title are subject to the provisions of the Administrative Procedure Act.” 17 U.S.C. § 701(e).FN2 One routine function of the Register is to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and ... the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). If so, then the Register must issue a certificate of registration to the applicant, see 17 U.S.C. § 410(a); if, however, the Register determines that “the material deposited does not constitute copyrightable subject matter or that the claim is invalid for any other reason,” then the Register must refuse registration and notify the applicant of the reasons for refusal, 17 U.S.C. § 410(b). Because the Register's denial of a copyright registration application is, by the statute's plain terms, an action taken by the Register under the Copyright Act, the APA governs judicial review. See 17 U.S.C. § 701(e); Atari Games Corp. v. Oman, 888 F.2d 878, 879 & n. 1 (D.C.Cir.1989) (“ Atari I ”); Nova Stylings, Inc. v. Ladd, 695 F.2d 1179, 1182 (9th Cir.1983).
FN2. The Copyright Act excepts the Register's performance of a single function from APA review: authorization of, or refusal to authorize, copies or reproductions of “deposited articles retained under the control of the Copyright Office.” 17 U.S.C. § 706(b); see 17 U.S.C. § 701(e). This narrow exception is not at issue here.
The district court concluded that the proper standard of review under the APA is the familiar “abuse of discretion” standard whereby a reviewing court will “set aside agency action, findings, and conclusions” that are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. § 706(2)(A). This is consistent with the few federal decisions-most of which were issued by the same court-addressing the proper review standard under the APA for courts directly reviewing a registration decision. See Atari Games Corp. v. Oman, 979 F.2d 242, 243 (D.C.Cir.1992) (“ Atari II ”); OddzOn Prods., Inc. v. Oman, 924 F.2d 346, 347-48 (D.C.Cir.1991); Atari I, 888 F.2d at 881; Coach, Inc. v. Peters, 386 F.Supp.2d 495, 497 (S.D.N.Y.2005). See generally 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.11[B][3], at 12-208 (2005).
[2] Darden does not contest the general applicability of the APA to his claim; indeed, he expressly brought this action under the APA. Darden contends, however, that the district court incorrectly applied the abuse of discretion standard set forth in section 706(2)(A) of the APA. Darden suggests instead that section 706(2)(B) applies to a challenge of the Register's denial of a copyright registration application and mandates a de novo standard of review. Section 706(2)(B) directs that the reviewing court set aside agency actions the court finds to be “contrary to constitutional right, power, privilege, or immunity.” 5 U.S.C. § 706(2)(B). Under the APA, constitutional questions that arise during APA review fall expressly within *284 the domain of the courts. See 5 U.S.C. § 706 (requiring that “[t]o the extent necessary to decision and when presented, the reviewing court shall ... interpret constitutional and statutory provisions”) (emphasis added). Thus, judicial review of a claim that the agency's actions violated a claimant's constitutional rights is conducted de novo. See Western Energy Co. v. United States Dep't of Interior, 932 F.2d 807, 809 (9th Cir.1991).
[3] [4] [5] Darden cites no authority even remotely suggesting that any court has ever regarded the agency's routine decision to deny registration as having constitutional ramifications for the claimant. Darden derives the basis for his argument from Article I of the United States Constitution which grants Congress the power to provide copyright protection to the extent Congress sees fit. See U.S. Const. Art. I, § 8, cl. 8 (granting Congress legislative power “[t]o promote the Progress of Science and useful Arts, by securing ... to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). Congress is under no mandate from this clause, however, to provide copyright protection. See Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881, 883 (9th Cir.2005) (“As is clear from its text, that clause of the Constitution grants no substantive protections to authors. Rather, Congress is empowered to provide copyright protection.”). Copyright is solely a creature of statute; whatever rights and remedies exist do so only because Congress provided them. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 431, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). Thus, as there is no constitutional right to copyright registration, the Register's refusal to register Darden's claim cannot be “contrary to constitutional right” as it must be for section 706(2)(B) to apply.
[6] Darden next contends that because the Register's decision was based on the agency's incorrect resolution of a legal question, i.e., whether Darden's claim lacked sufficient originality to be registrable, the Register's decision is subject to de novo review. More particularly, Darden argues that the Register's refusal to find sufficient originality in his submitted works despite the “extremely low” amount of creativity required for a work to be copyrightable, Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), was an erroneous conclusion that must be set aside under the “not in accordance with law” provision of section 706(2)(A) of the APA. Additionally, Darden cites various decisions noting, in the context of copyright infringement litigation, “that copyrightability is always an issue of law” for the court. Gaiman v. McFarlane, 360 F.3d 644, 648 (7th Cir.2004); see Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 34 n. 5 (1st Cir.2001); Collezione Europa U.S.A. v. Hillsdale House, 243 F.Supp.2d 444, 452 (M.D.N.C.2003).
[7] We reject Darden's argument. Essentially, Darden is claiming that the Register simply reached the wrong result, not that the Register applied the wrong legal standard or misapprehended or ignored the controlling legal principles. See Turgeau v. Administrative Review Bd., 446 F.3d 1052, 1057 (10th Cir.2006) (explaining that under § 706(2)(A) “[f]ailure to apply the correct legal standard or to provide this court with a sufficient basis to determine that appropriate legal principles have been followed is grounds for reversal”) (internal quotation marks omitted). Review under section 706(2)(A) is “narrow” and the reviewing court is not permitted to substitute its own judgment for the judgment of the agency. *285 Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43, 103 S.Ct. 2856, 77 L.Ed.2d 443 (1983). Rather, the court is to determine “whether the decision was based on a consideration of the relevant factors,” West Virginia v. Thompson, 475 F.3d 204, 212 (4th Cir.2007) (quoting Citizens to Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402, 416, 91 S.Ct. 814, 28 L.Ed.2d 136 (1971)), or whether “the agency has relied on factors which Congress has not intended it to consider, [or] entirely failed to consider an important aspect of the problem,” Motor Vehicle Mfrs., 463 U.S. at 43, 103 S.Ct. 2856; see Thompson, 475 F.3d at 212.
Darden makes no assertion of this kind here; he merely argues that the agency should have concluded that the Maps and APPRAISERSdotCOM works contained the requisite level of creativity, citing Feist and other precedents. At every level of internal agency review, however, the Copyright Office recognized Feist as having established the contours of the originality element of a copyright claim. Because Darden has failed to identify any relevant factor or legal principle that the Register failed to consider, the agency's decision cannot be set aside as “contrary to law.”
[8] Finally, Darden argues that the Register's determination that a copyright claim lacked sufficient originality to warrant registration is subject to de novo review in the context of an infringement action under section 411(a) of the Copyright Act. He contends that de novo review of the copyrightability issue should also apply in the context of APA review for the sake of efficiency and predictability. We cannot agree.
Congress has afforded disappointed copyright applicants two separate methods of seeking redress for the decision of the Copyright Office not to register a copyright claim. First, as we explained previously, the applicant may file a review action under the APA against the Register of Copyrights for the sole purpose of having the denial of registration set aside. See 17 U.S.C. §§ 410(a), 701(e). Darden's action, of course, is such a case. Second, the claimant may seek judicial review of the rejected registration as part of an infringement action against an alleged infringer under section 411(a) of the Copyright Act.FN3
FN3. Registration is a prerequisite for a copyright infringement action. See 17 U.S.C. § 411(a). However, if “the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement if notice ... is served on the Register of Copyrights” who “may, at his or her option, become a party to the action with respect to ... registrability of the copyright claim.” Id.
[9] [10] Both kinds of actions involve, to one degree or another, consideration of whether a copyrightable claim has been presented. The Register has a statutory duty to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and ... the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). Whether the Register issues the certificate of registration or not, the Register necessarily makes a determination about the validity of the copyright claim. And, with respect to a copyright infringement action, the plaintiff must establish “ownership of a valid copyright and copying of constituent elements of the work that are copyrightable.” Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 407 (5th Cir.2004) (internal quotation marks omitted). Copyright ownership, in turn, requires “proof of originality and copyrightability.” *286 Id. at 408; see Feist, 499 U.S. at 361, 111 S.Ct. 1282.
Darden's argument notwithstanding, it is not a foregone conclusion that courts owe no deference whatsoever to the Register's decision in the context of an infringement action under section 411(a). Indeed, courts are split on this issue. Compare John Muller & Co. v. New York Arrows Soccer Team, 802 F.2d 989, 990 (8th Cir.1986) (applying abuse of discretion standard to infringement claim); Norris Indus. v. I.T. & T. Corp., 696 F.2d 918, 922 (11th Cir.1983) (same), with Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 414 (2d Cir.1985) (according no deference to Register's copyrightability conclusion); OddzOn Prods., 924 F.2d at 347-50 (same). We need not weigh in on this issue, however, as Darden brought this action against the Register under the APA seeking review of the denial of registration for insufficient originality in his works. Even if no deference is due to the Register's decision by courts adjudicating infringement actions under section 411(a), we must apply the standards set forth in the APA. To do otherwise would be to ignore the clear and unambiguous language of the statute, which we cannot do. Accordingly, we review the decision to register Darden's works for abuse of discretion.


This is a long way of saying that it seems to me that if someone else registers a claim to a work that you think you own, you file a competing registration claim that "defames" or "slanders the title" of the first claimant.   Since you are required to do so by law as a prerequisite to commencing suit in federal court, it would appear to me that any statements would be subject to absolute judicial immunity (subject to the limits of that doctrine).
Bible study was always a rough game.

Morris v Atchity Counterclaims

Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

My Old Kentucky Home Remixer Punk'd: Court Tosses Copyright Infringement Action For Failure To Disclose Pre-Existing Material

In Rich & Rich Partnership v. Poetman Records USA, Inc. 2010 WL 1978800, 1 (E.D.Ky. May 17, 2010) the court found that a copyright registration certificate that did not disclose that a work was a remix including a sound recording of the late Gov. Happy Chandler's "Old Kentucky Home" rendered the copyright unenforceable.   The plaintiff did not offer any excuse for the omission, such as a mistake (the case law is pretty forgiving).

Please note that 17 USC 409 (9) provides:

§ 409. Application for copyright registration


The application for copyright registration shall be made on a form prescribed by the Register of Copyrights and shall include —
(9) in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered;

Practice Tip:  In Chapter 4 of my Copyright Litigation Handbook I review how to correct mistakes in ownership and registration forms with the Copyright Office before going to court.  It is better to do this prior to bringing a litigation.

More from the decision:

“[W]hen an applicant knowingly fails to identify the derivative nature of the work, or the use of elements not of the applicant's own creation, the court may decline to enforce the copyright.” Lenert v. Duck Head Apparel Co. Inc., No. 95-31122, 1996 WL 595691, at *4 (5th Cir. Sept.25, 1996) (citing Russ Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F.Supp. 980, 987-89 (S.D.N.Y.1980) (court declined to enforce copyright where applicant knowingly failed to disclose pre-existing work); GB Mktg. USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F.Supp. 763, 774-76 (W.D.N.Y.1991) (knowing omission of derivative nature permits grant of summary judgment refusing to enforce copyright)). In other words, a “ ‘knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action ... or denying enforcement on the ground of unclean hands.’ ” Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d Cir.1984) (quoting Russ Berrie, 482 F.Supp. at 988). In 1998, David E. Rich registered a work entitled “The Kentucky Wildcat Basketball Experience.” R. 125, Ex. 1 at 1-2. In that registration, the nature of the copyrighted work was described as a “[c]ompilation of sound recordings of Kentucky Wildcat games and band recordings, with some new sound recording.” Id. at 1. The registration form asked Rich & Rich to “[i]dentify any preexisting work or work that this work is based on or incorporates.” Id. at 2. In response, Rich & Rich identified, “some sound recording.” Rich & Rich did not identify Chandler's original rendition of “My Old Kentucky Home” in its response. The Copyright Office, without knowing what the pre-existing work was and which track contained the remix, could never have determined whether Rich & Rich's contribution to the Chandler rendition qualified as a derivative work.FN1


FN1. Rich & Rich knew that it was taking a work from Chandler and putting it on its album. Cf. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (11th Cir.1982) (omission of pre-existing work did not invalidate the registration because of lack of scienter). That is not disputed and, hence, lack of knowledge cannot excuse the error here.

Courts can overlook immaterial mistakes in a registration. See Lenert, 1996 WL 595691, at *4 (collecting cases where the failure to disclose the derivative nature of a work did not invalidate the registration). But Rich & Rich has neither attempted to show evidence that this was a simple mistake nor provided an explanation of why the registration was done in this manner. See Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 n. 5 (3d Cir.1990) (“[A] misstatement or clerical error in the registration application if unaccompanied by fraud will not invalidate the copyright nor render the registration incapable of supporting an infringement action.” (quoting M. Nimmer & D. Nimmer, Nimmer on Copyright § 7.20, at 7-197-98)); see also Advisers, Inc. v. Wiesen-Hart, Inc., 238 F.2d 706, 708 (6th Cir.1956) ( “innocent misstatement ... in the affidavit and certificate of registration, unaccompanied by fraud” does not invalidate copyright).

Derivative Works: Photographs of Sculptural Works

In Schrock v. Learning Curve, 2009 WL 3644331, --- F.3d --- (7th Cir. Nov. 5 2009), the Seventh Circuit took up the question of whether a very simple straightforward photograph of Thomas the Train (above) is a derivative work, and if so, whether the product photographer could register his copyrights after his client's two-year license to use the photographs expired and the client continued to use the photographs.

The court found that the photographer had a narrow copyright in the photograph, that the photograph was a derivative work, and that once the copyright owner in Thomas the Train had given consent to have the work photographed, the photographer didn't require the permission of the toy company to register his copyrights.

If a court found originality in the photograph above, it sets the bar very low for photography for works of visual art because it is hard to think of a less original photograph of a toy train.

The Seventh Circuit noted that parties may limit by contract the rights of third parties to create and register derivative works and further found that the toy company, its distributor and the photographer's ultimate rights may be governed by license agreements that were not part of the record.   A clear warning to those drafting license agreements to pay attention to how products are promoted and distributed.

Visual Artists Rights Act - Right to Display Works That Do Not Yet Exist

The Massachusetts Museum of Contemporary Art sued Swiss artist Christoph Buchel over an installation called Training Ground for Democracy. Buchel is an installation artist who allegedly did not finish an installation piece. The MOCA wanted the right to display the unfinished installation that it had already spent $300,000 for.

In its brief in support of its summary judgment motion, Mass MOCA's counsel Skadden Arps found a couple of cases for the proposition that "VARA most decidedly does not cover works that do not yet exist." citing Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303, 329 (S.D.N.Y. 1994) rev'd on other grounds, 71 F.3d 77 (2d Cir. 1995) cert. denied, 517 1208 (1996) and Flack v. Friends of Queen Catherine Inc., 139 F. Supp.2d 526 (S.D.N.Y. 2001).

To find out whether the court agree with the argument that VARA did not cover non-existent works, I checked the PACER system for the U.S. District Court of Massachusetts. The court's decision was non-existent.

There was a notice of appeal, appealing from "a final order and/or judgment (or alternatively, order denying injunctive relief) announced from the bench on the 21st day of September, 2007 by the Honorable Michael A. Ponsor (1) denying Buchel's motion for summary judgment and request for injunctive relief under . . . . VARA . . . 17 U.S.C. Section 106A, and the Copyright Act Section 101 et seq. and (2) granting plaintiff's relief in its entirety, allowing it to display the work at issue with a disclaimer."

Practice Point: When a judge rules from the bench, counsel can do three things to get a piece of paper from which to appeal. First, order an expedited copy of the transcript from the court reporter. 1. submit the transcript to the judge and ask the judge to "so order" it; 2. submit a proposed order to the judge according to the judge's rules or 3. ask the judge whether the judge will be issuing a written order or decision so that you can appeal it.

Appeals generally require an appealable paper, that is, an existing written decision from a judge from which you appeal. It is analogous to the fixation requirement in copyright law.

Submitting a proposed order is generally the best and most elegant way of proceeding, and if it is not life or death and the court's discussion was lengthy, it will almost certainly help your accuracy to have the transcript. It allows you to get back to your office, clear your mind, and draft something that will make the court's decision clear. It also may be an opportunity to clarify an issue that you were not clear on from the court's oral comments.

I can't wait to see Mass MOCA's display of this non-existent work, to which VARA does not apply, and to see the disclaimer.

Some of the artist's demands in pursuing the work are found at Exhibitionist.

-The artist will not give permission to show an unfinished project nor will the artist allow the museum to show any work in progress, as the museum had suggested in previous discussion related to the postponed opening date.
- Money needs to be raised and in place to finish the project as it was proposed and completed.
- A projected budget for the second round will be sent, if an updated to punch list with very detailed photographs of the installation and the updated list of items that have been organized has been sent.
- The additional monies raised must cover the costs for ALL elements and ALL structural elements, which are clearly defined and which were much discussed. This money would have to cover the cost of the salaries, flights, per diem and housing for the 1st and 2nd round for assistants and the replacement crew and equipment to be hired.
- There is NO negotiation about the scope of the project. It will be realized as proposed.

Sounds like the non-existent Training Ground for Democracy has lessons for us all about the nature of democracy. The above photograph (of the non-existent exhibit) is found on Mass Moca's website. Does a photograph of a non-existent work exist? For more on Buchel, his work and the case, check out Anaba.