Fair Use Fridays: Publishers Sue Universities Over "E-Reserves"

From Ars Technica, a fair use kerfluffle here. 


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Second Circuit - Joint Authorship in Copyright Law: Time-Barred Copyright Ownership Claims Bar Later Copyright Infringement Claims

In Kwan v. Schlein, (2d Cir. Jan. 25, 2011)(decision below), the Second Circuit determined that a time-barred copyright ownership claim barred a later copyright infringement claim.   The decision sorts through the facts involving an editor (Kwan/appellant) who was offered co-author credit by a book publisher.  The book's author protested.  The book was published, giving the editor no authorship credit, with copyrights registered in the author and publisher's name.   This publication, together with the author cashing a royalty check, was held to trigger a three-year statute of limitations on a copyright ownership claim.   Once the editor failed to pursue the ownership claim in a timely manner, her right to pursue any copyright infringement claims was cut off.

Once the defendant got summary judgment on the editor's claims, he voluntarily dismissed his counterclaims pursuant to Rule 41(a) of the Federal Rules of Civil Procedure without prejudice with leave of court.   Editor/Kwan attacked the district court's appoval of the without prejudice dismissal.

The Second Circuit analyzed the factors permitting such a without prejudice dismissal.  In this case, the defendant's representation that he would not pursue the counterclaims unless he was sued again if Kwan won the appeal and that the counterclaims had been asserted as a defensive measure in the first place were sufficent to satisfy the Zagano factors referenced in the court's opinion.

The defendant's voluntary dismissal of its counterclaims was a neat trick:  it forced Kwan to bear the burden of appealing, rather than proceeding to a trial on the counterclaims.

I deal with issues involving statutes of limitations in Chapter 5:  Calculating Dates Prior To Commencing Litigation in Copyright Litigation Handbook.   Chapter 8:  Copyright Ownership and Licensing Litigation delves further into issues of authorship and ownership.

More on Copyright Litigation Handbook on Westlaw here

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Kwan v Schlein decision below.
Copyright Litigation - Kwan v Schlein

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Copyright and The Story of the Long-Armed Buddhist Penguin

If a Penguin gains enlightenment, is he an all-present universal Buddha?

In the first reign of the Lord Obama the Hopeful, Grand Master Dan-Nay set out on the path to bring the power and light of the Master Penguin to the far reaches of the Lord's Empire and even beyond to the barbarian and unenlightened hordes populating the universe.

I wrote on Penguin Group v. American Buddha, 09-1739-cv (June 15, 2010), a case involving New York's long-arm statute and addressing the issue of whether a copyright holder located in New York can sue in Manhattan for an infringement that takes place anywhere in the universe here.

Andy Berger, sympathetic to Penguin, digs in further and has posted Penguin's briefs for easy reading here.

I would appreciate anyone bringing thoughts, articles or posts on this topic to my attention.  This is an important and difficult issue involving due process, the Constitution, the essence of a copyright, and the extent to which New York courts will subject the world to its jurisdiction.  In a rare area of federal law that completely "preempts" state law, our Second Circuit Court of Appeals has made clear that it will defer to New York State's Court of Appeals.  I am curious as to what the really smart law professors will have to say and whether American Buddha will have any amici.

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Copyright Litigation Blog on Google - Number One "Copyright Litigation" Search

Search results from Google put Copyright Litigation Blog and Copyright Litigation Handbook at number one in search engine results for the search "copyright litigation".

Thanks, Google, and thanks to everyone who enjoys the content, your readership, comments and feedback are all appreciated.

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Unregistered Foreign Copyrights in US Courts: No Statutory Damages and Attorneys Fees

In Elsevier B.V. v. United Healthgroup, Inc., S.D.N.Y. January 14,2010, Judge William Pauley considered a plaintiff's claim that a provision of the Copyright Act requiring copyrights to be registered prior to an infringement violated the Berne Convention and thus was "preempted" by the U.S. Constitution.

The plaintiff commenced a declaratory judgment action that Section 412 of the Copyright Act violated Article IV of the U.S. Constitution because Section 412 conflicted with Article 5 of  the Berne Convention.

The problem comes up in the following context:  many foreign publishers of copyrighted materials do not register their copyrights in the United States, even if they publish or sell copyrighted works in the United States.   So when their works are infringed, they do not enjoy the protections of the sections of the Copyright Act that give statutory damages and attorneys fees to persons who have timely registered their works (Sections 504 and 505).

Elsevier provides access to a database on which many of the unregistered copyrighted works can be accessed.  Elsevier alleged that the defendant permitted others to access the database in violation of a subscriber agreement.

The provision challenged was Section 412 of the Copyright Act, which provides:

§ 412. Registration as prerequisite to certain remedies for infringement12



In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for —

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

Find Section 412 and the rest of the Copyright Act here.

The doctrine of "preemption" is used in a number of different ways in copyright practice, but here the Plaintiff was arguing that the doctrine of preemption provides that where the Exective Branch has validly committed the U.S. under treaty powers and Congress has ratified such commitments, any inconsistent laws are "preempted" by the treaty.

The Plaintiff pointed to  Article Five of the Berne Convention which states:  “the enjoyment and the exercise of [rights under the Convention] shall not be subject to any formality.”   Find the full text of the Berne Convention here.

The District Court analyzed whether the Berne Convention was "self-executing" and found that it was not.  In other words, for any provisions of the Berne Convention to be binding, enabling legislation has to be adopted by Congress.  The Court looked at the legislation implementing the Berne Convention and noted that Congress decided not to change Section 412.

Noting that no federal appellate court has ruled on the question of whether the Berne Convention is self-executing, but that other courts in the district found it not to be self-executing, the Court found that it cannot serve as a basis for a preemption claim under Article IV of the US Constitution.

Since the District Court found the Berne Convention not to be self-executing, it found that Article 5 could not serve as the basis for a preemption.    The question of whether Article 5 and Section 412 conflict were not reached, leaving the question in the hands of diplomats.

Artwork in Artist Biography Fair Use: A Monstrous Copyright Decision

You are an artist, an architect, a photographer or anyone working in the creative arts. You'd like to use works you've created in a career retrospective, autobiography, part of your portfolio. You are writing a biography of someone who works in the creative arts. Do you have to pay to license full color images of the works?

The leading case is Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006), involving a book on the Grateful Dead. In that case, images reduced and put on a timeline in a book about the Grateful Dead were held to be fair use, even though the publisher tried to license the works and was rejected.

But what about large color reproductions? A recent fair use case from the Eastern District of Pennsylvania by District Judge Bayleson, Warren Publishing v. Spurlock, 2009 WL 2412542, --- F. Supp.2d --- (August 4, 2009) tackles the issue in a thoughtful, thorough and monster-sized decision.

Basil Gogos illustrated cover art for monster movie magazines such as Creepy and Eerie. Spurlock wanted to write a biography of Gogos and show images of his poster art.

The decision goes into issues regarding the work-for-hire doctrine, the Copyright Act of 1909, the bankruptcy of the original publishers, battles of the experts, in all of the case's horrific details.

In the end, the use of full-color and large images of background art were found to be fair use in an artist's biography. The original magazines were about promoting Bela Lugosi and Dark Shadows, not Basil Gogos.

For those who claim that artists have been taken advantage of by greedy corporations who keep their out-of-print content under lockdown, this is a clear, resounding victory and a well-reasoned decision.

An important factor in the court's decision was the publisher's failure to exploit the coffee-table market for a perior of 22 years. In the age of Google, the culture of "use it or lose it" is taking hold.

The Copyright Wars proceed apace with a new folk devil to create a moral panic.

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