Bearcat Tire

In In re Outsidewall Tire Litigation, 2010 WL 2929626 (E.D. VA July 21, 2010), the court considered the question of whether a U.S. copyright owner could collect for infringements in China.   The court found that the Second and Ninth Circuits had permitted such recoveries where a predicate act of infringement had occured in the United States.   Here, a copyrighted tire design was copied in the U.S. then transported to China, where it was exploited.  The court permitted recovery of profits (not actual damages), even though the initial act of infringement fell outside the statute of limitations.

The court noted that both the Second and Ninth Circuits had permitted recoveries under similar circumstances and upheld the jury verdict.

The issue arose in the context of a motion pursuant to Rule 50 of the Federal Rules of Civil Procedure to determine whether the evidence adduced at trial was sufficient to support the jury's verdict.

Rule 50. Judgment as a Matter of Law in a Jury Trial; Related Motion for a New Trial; Conditional Ruling

(a) Judgment as a Matter of Law.
(1) In General.
If a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue, the court may:
(A) resolve the issue against the party; and
(B) grant a motion for judgment as a matter of law against the party on a claim or defense that, under the controlling law, can be maintained or defeated only with a favorable finding on that issue.
(2) Motion.
A motion for judgment as a matter of law may be made at any time before the case is submitted to the jury. The motion must specify the judgment sought and the law and facts that entitle the movant to the judgment.
(b) Renewing the Motion After Trial; Alternative Motion for a New Trial.
If the court does not grant a motion for judgment as a matter of law made under Rule 50(a), the court is considered to have submitted the action to the jury subject to the court's later deciding the legal questions raised by the motion. No later than 28 days after the entry of judgment — or if the motion addresses a jury issue not decided by a verdict, no later than 28 days after the jury was discharged — the movant may file a renewed motion for judgment as a matter of law and may include an alternative or joint request for a new trial under Rule 59. In ruling on the renewed motion, the court may:
(1) allow judgment on the verdict, if the jury returned a verdict;
(2) order a new trial; or
(3) direct the entry of judgment as a matter of law.
(c) Granting the Renewed Motion; Conditional Ruling on a Motion for a New Trial.
(1) In General.
If the court grants a renewed motion for judgment as a matter of law, it must also conditionally rule on any motion for a new trial by determining whether a new trial should be granted if the judgment is later vacated or reversed. The court must state the grounds for conditionally granting or denying the motion for a new trial.
(2) Effect of a Conditional Ruling.
Conditionally granting the motion for a new trial does not affect the judgment's finality; if the judgment is reversed, the new trial must proceed unless the appellate court orders otherwise. If the motion for a new trial is conditionally denied, the appellee may assert error in that denial; if the judgment is reversed, the case must proceed as the appellate court orders.
(d) Time for a Losing Party’s New-Trial Motion.
Any motion for a new trial under Rule 59 by a party against whom judgment as a matter of law is rendered must be filed no later than 28 days after the entry of the judgment.
(e) Denying the Motion for Judgment as a Matter of Law; Reversal on Appeal.
If the court denies the motion for judgment as a matter of law, the prevailing party may, as appellee, assert grounds entitling it to a new trial should the appellate court conclude that the trial court erred in denying the motion. If the appellate court reverses the judgment, it may order a new trial, direct the trial court to determine whether a new trial should be granted, or direct the entry of judgment.

 Purchase Copyright Litigation Handbook from West here  

10th Cir: Golan v Holder - First Amendment Challenge to Berne Convention's Taking Works Out of Public Domain Retroactively Fails

The 10th Circuit ruled yesterday against a group of distributors of foreign copyrighted works that had fallen into the public domain, but which Congress had restored copyright status by 1994 legislation implementing the Berne Convention, following the Uruguay Round of trade negotiations.

The group, represented in part by Prof. Lawrence Lessig and the Center for Internet and Society, included a man who had composed a marching band song based on a Shostakovitch symphony that had fallen into the public domain.

The situation arose because the US used to have a rule that if you didn't put a copyright notice on your work and register it with the US copyright office, it would fall into the public domain.   Many distributors of foreign copyrighted works failed to put proper notices on them or register them with the copyright office.  Notices and registration are known as "formalities".   For a while, the US was a rare country that required formalities, most didn't, pursuant to the Berne Convention.   The US enacted the Berne Convention Implementation Act in 1988 abolishing the requirement of formalities, but it did not restore copyright protection to foreign works that had fallen out of copyright.  In 1994, Congress restored copyright protection to these foreign works (it was not automatic and involved some bureaucracy).  People who'd used the works or created derivative works were supposed to work out reasonable license fees or have them fixed by the courts.

You can find the requirement of formalities in the Copyright Act of 1909.  I have included the entire 1909 Copyright Act for easy reference as an appendix to my Copyright Litigation Handbook.

The decision has a lot of interesting legislative history, and it's got a lot of litigation history.  (From my memory) it was in district court where plaintiff lost, there was an appeal that plaintiff won with instruction to perform a First Amendment analysis on remand, then plaintiff won again with the district judge holding that the statute violated the First Amendment.  Now, the 10th Circuit reverses, link to decision below:

10th Cir: Golan v Holder - First Amendment Challenge To Removal of Copyrighted Works From Public Domain Fails



Purchase Copyright Litigation Handbook from West here  

ACTA Update: Endorse A Petition Opposing ACTA

If you would like to voice your concern about the pending Anti-Counterfeiting Trade Agreement, a petition is going out soon, to view it and sign up, the link is below:

PIJIP: - American University Washington College of Law

My comments on ACTA here  and here.


Purchase Copyright Litigation Handbook from West here

Obama signals support for ACTA Copyright Treaty

Obama signals support for copyright treaty - The Hill's Hillicon Valley

International Copyright CLE Program Online

I recently participated in a continuing legal education program at the New York County Lawyers' Association called International Copyright: What the U.S. Practitioner Needs To Know.

The CLE session is available on DVD from NYCLA or online at Lawline here. We had a great panel, moderated by Jay Kogan of D.C. Comics that included Axel Nordemann and Christian Czychowski from Boehmert & Boehmert in Germany, Johnny Chen of Divx, and Mario Sorensen Garcia from Brazil. Faculty bios here.

The program covered not only the legal concepts of international copyright and interpreting the treaties, but had a number of "real life" stories about how businesses working internationally protect and enforce copyrights.

My topic was "Foreign Copyrights in U.S. Courts".

The course description below:

Since United States copyrights are a major export, many practitioners are called upon to protect clients’ interests worldwide and negotiate licensing agreements requiring a knowledge of copyright regimes around the world. In-house counsel and outside counsel are also often called upon to assist U.S. clients in solving copyright problems worldwide.
This program identified the problems that arise for U.S. clients and provided drafting tips, together with a survey of the analytical tools and resources necessary for a U.S. practitioner to effectively craft practical solutions.

May Credit Card Processors Be Contributorily Liable for Copyright Infringement?

According to its Wikipedia entry Perfect 10 magazine ceased publishing and has gone solely to an online format. I visited the Perfect 10 website, which has generated a tremendous amount of copyright litigation. The photographs were a bit too racy to reference here.

In Perfect 10 v. Google, these purveyors of photographs of naturally beautiful women temporarily succeeded in enjoining Google from continuing its Google Images search. The Ninth Circuit, however, overturned the District Court's injunction, finding that Google's use of thumbnail images is highly transformative. My May 20, 2007 post on that case is here.

Perfect 10 recently went after credit card processing companies that facilitate transactions involving copyright infringement. Perfect 10, Inc. v. Visa International Service Assn., 494 F.3d 788 (2007). Visa won a 12(b)(6) motion to dismiss the claims against it for contributory and vicarious copyright infringement. The court found that the credit card processors, unlike a the swap meet organizer in the Fonovisa case, or the players in Napster or Grokster, did not actually get involved in the infringement process.

Judge Alex Kozinski entered a spirited dissent. He pointed out that Perfect 10 had alleged that infringers were operating offshore and reaching the U.S. through the credit card processors. If you are suing a copyright infringer who is operating offshore and profiting through use of credit cards, you should be aware of his well-reasoned dissent when you put your pleadings together.

Copyright and Unregistered Berne Convention (non-U.S.) Works

I have recently been lecturing outside the U.S. - in Berlin, Germany and last month in Montreal. The question comes up: should owners of copyrighted works that are created outside the United States register those works in the United States? The first part of the answer is that if the copyright author created the work in a country that is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, the copyright owner does not have to register in the U.S. to protect their copyright or to have an action in the U.S. for infringement. The owner of an unregistered Berne Convention work may commence an action in U.S. courts without registering. The owner of a U.S. work must register to have standing to sue in a U.S. court.

So, owners of unregistered Berne Convention works may bring an infringement suit in U.S. courts. The implementing legislation eliminated the requirement of registration for non-U.S. works. Compare 17 U.S.C. §411 (registration a prerequisite for “infringement of the copyright in any United States work”).

But the second part of the answer may be more important to European, Asian, Canadian, Middle Eastern and other attorneys residing in countries that are signatories to the Berne Convention. Unregistered Berne Convention works are not eligible for statutory damages and attorneys' fees under 17 USC §4 12. 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, §7.16(c)(1), 7-183 (2006)(the loss of remedies under Section 412 due to failure to register is applicable to works of foreign origin as well as to domestic works).

So, if an attorney from a Berne Convention country wants a client to have what may be strong weapons in a copyright infringement litigation, the advice should be to register the works in the United States.

There is a very narrow possible exception to this general requirement that applies only to broadcasts - but even in that instance, registration will ultimately take place. Georgia Television Co. v. TV News Clips of Atlanta, Inc., 718 F. Supp. 939 (N.D.Ga. 1989) noted the availability of statutory damages for a plaintiff with respect to an unregistered work following implementation of the Berne Convention legislation. However, this case applied narrowly to works “consisting of sounds, images or both, the first fixation of which is made simultaneously with its transmission”. 17 U.S.C. § 411(b). Section 411(b) contains special registration requirements for works that cannot possibly be registered prior to transmission.

Can you wait to register? No. To enjoy the advantages of statutory damages and attorneys fees, a Canadian, British, German or Japanese copyright owner must register, as do U.S. owners, within three months of the first publication of the work or within 30 days of learning of an infringement, whichever date is earlier. 17 U.S.C. § 412.

But wait, there are even more reasons to register, reasons that corporate dealmakers will readily appreciate:

Registration and recordation provide additional advantages to the non-U.S. copyright owner. 17 U.S.C. § 205 provides that registration acts as constructive notice of the facts within the registration. In addition, any transactions involving registered works that have been recorded act to put the world on constructive notice of such a transfer. So if a client enters into a license agreement, a loan transaction, or any other transaction affecting title or rights to a copyright and records it, the world is on notice. Section 205(d) provides that in the case of conflicting transfers of copyright, if it is executed first, the recorded document will have priority in the event of a conflicting transfer if such document executed outside the United States is recorded within two months of such a transfer, or if it is recorded prior to the later transfer. “Otherwise, the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.” 17 U.S.C. §205(d).

Accordingly, non-U.S. attorneys are correct in advising their clients of the considerable advantages to registering copyrights in the U.S. as early as possible, to conducting copyright searches before entering into significant license agreements, and to recording transactions involving copyrights promptly after execution.

German Copyright in US Courts

Wrapped Reichstag, Berlin 1971-1995 (Christo & Jeanne-Claude)

I am leaving shortly to go to Germany. I will give a joint lecture at the University of Konstanz's law school with Prof. Dr. Axel Nordemann of Boehmert & Boehmert on July 6. On July 9, I will be giving a lecture in Berlin to the Berlin Chapter of the German Intellectual Property Law Association.(DEUTSCHE VEREINIGUNG FÜR GEWERBLICHEN RECHTSSCHUTZ UND URHEBERRECHT).

In preparation, I have been thinking about what copyrights would be of interest to German students and attorneys. Judge Alex Kozinsky noted in Mattel Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) that Mattel's Barbie Doll was originally a "German street walker". In that case, the court found that trademark infringement and dilution claims asserted against the Danish band Acqua and their song "Barbie Girl" failed because a trademark owner doesn't have the right to control public discourse when the public imbues a mark beyond its source-identifying function. Barbie has spawned enormous litigation. For example, artist Tom Forsythe was awarded $1.8 milllion in attorneys fees and damages because of Mattel's meritless litigation against him for his "Food Chain Barbie" series of photographs. Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003).

One of my favorite German copyright disputes didn't involve a German copyright. The Copyright Office's Board of Appeals rejected Christo and Jean-Claude's application to register their wrapping of the Reichstag in Berlin as a "sculptural work". Re: Wrapped Reichstag, Berlin, 1971-1995 Control No. 60-504-9973 Decision of Appeals Board, U.S. Copyright Office, October 1, 1997. The image appears above. Christo and Jean-Claude own the copyright in the photograph shown above, but they do not have a copyright in the sculptural aspects of the wrapped Reichstag. A copy of this decision may be found at Franklin Pierce Law School's IP Mall.

Dr. Nordemann and I will discuss two cases in depth. One, Twin Books Corporation v. The Walt Disney Corporation, 83 F.3d 1162 (9th Cir. 1996), involves the initial publication in Germany in 1923 of the classic children's tale "Bambi, A Life in the Woods" without a US copyright notice.

The second, Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) involved a fashion photographer named Andrea Blanch visiting the Deutsche Guggenheim in Berlin and noticing that a photograph she'd taken had been painted into the latest work of the artist Jeff Koons (Koons and Barbie are jointly responsible for a good chunk of U.S. copyright law). Ms. Blanch returned from Berlin and sued Jeff Koons in New York, rather than in Berlin. Dr. Nordemann and I will discuss whether Germany might not have been a friendlier forum for her, and why.

A Westlaw search of "German copyright law" turned up only five cases in the ALLFEDS database. "German copyright" turned up only ten. "germany w/5 copyright" yielded 18 results, including the famous Wheaton v. Peters, 33 U.S. 591 (1834)("In Germany, where a free, perpetual copyright exists, books are cheaper than any where else in the world.")

But I think that we are going to see many more German copyrights exploited in the United States. I recently had the pleasure of watching Fritz Lang's "M" (1931) - a Criterion collection release. An amazing film.

And two years ago, I started representing the heirs of Fritz Grunbaum. Grunbaum was a Jewish cabaret performer and film star in Berlin who mocked Hitler mercilessly. He was one of the founders and stars of Vienna's Kabarett Simpl. Christopher Isherwood's "Berlin Stories" are said to be based on Fritz Grunbaum and his world, which in turn formed the basis for Kander & Ebb's "Cabaret". Grunbaum and many member of his family were murdered by the Nazis. His art collection, like the collections of so many victims of the Holocaust, ended up with a Nazi-owned Austrian transport and storage company called Schenker & Co AG that has never accounted for it. What happened to the artworks after they left Schenker and made their way to the walls of the world's museums is now a hotly disputed matter. According to Eberhard Kornfeld, owner of Galerie Kornfeld in Bern, Switzerland, the Egon Schiele self-portrait hanging in the Morgan Library belonged to Fritz Grunbaum. The Morgan Library's catalog From Berlin to Broadway: The Ebb Bequest of Modern German and Austrian Drawings claims that Kornfeld acquired it from Egon Schiele's estate.

Two years ago, when I googled Fritz Grunbaum I found very little on him. I did it again recently and found blog posts, a museum in Vienna devoted to him, a very respectable Wikipedia entry, and an IMDB filmography of his works. Checking out his film "The Theft of the Mona Lisa" (Der Raub der Mona Lisa) (1931), I discovered that he played the role "Adolph G" to make fun of Hitler and that the New York Times gave the film an amazing review in 1932, which I got to read.

Although Grunbaum's artworks vanished, his copyrighted celluloid image survived, his musical copyrights endured, and the German collecting societies steadily credited his estate with royalties over the years for his famous musical compositions.

Hollywood is hungry for remakes, and the appetite is only growing. Someone is going to want to remake the "Theft of the Mona Lisa" which was based on an actual incident in 1911.

As German films of the twentieth century become better known, catalogued, distributed and affordable, the market for and interest in German copyrights in the United States should grow.

Blogging Chaps

I met a lawyer today from the Midlands region of England named Andrew Mills. He's the partner in charge of IP and Tech at a 65 partner firm (500 lawyers) named Freeth Cartwright based in Nottingham. Andrew had a bit of free time today in New York city, so he hopped on the internet to see if he could meet a fellow legal blogger. I had a spot open just before lunch, so Andrew and I got to meet.

We talked about copyright, trademarks and how the U.S. and British regimes varied. Andrew knew a few tricks about how U.S. trademark owners could improve their trademark registration portfolios and I think I shared a few strategies involving cease and desist letters in the U.S. that were interesting to him. He told me that in the past five years British litigation has died down quite a bit due to prelitigation mediation and pre-filing communication rules.

I am hoping to follow up on Andrew's visit with a visit of my own to Nottingham. Andrew says it's about 2.5 hours north of London. Check out Andrew's blog, http://impact.freethcartwright.com/. It's an interesting admixture of news, parliamentary debates, and other good ip fun.

Andrew is coming out with a book this fall, so keep an eye out for it!