United States Court of Appeals for the Second Circuit
June 23, 2011 4:00 p.m.
Daniel Patrick Moynihan U.S. Courthouse
Ceremonial Courtroom, 9th Floor
500 Pearl Street
New York, New York 10007
On June 23, 2011, the Second Circuit will be in session to entertain a motion sponsored by the Federal Bar Association, and co-sponsored by the Network of Bar Leaders, New York City Bar Association, New York County Lawyers’ Association, the New York State Bar Association and the Connecticut Bar Association to admit new members. A reception will follow in Room 850.
Pursuant to Local Rule 46.1 and the requirements set forth in the Attorney Admissions Application Form (available at www.ca2.uscourts.gov ), any attorney duly admitted to the practice of law and in good standing is eligible for admission to the bar of the United States Court of Appeals for the Second Circuit upon paying the filing fee of $190, reading Federal Rules of Appellate Procedure, the local rules of the Second Circuit, and completing the application. No prior admission to a federal district court is necessary.
The admission application is quick and simple. Space is limited, so applicants are urged to apply promptly to participate in this historic event.
Application Deadline: June 13, 2011 Submit the completed application to:
Thurgood Marshall U.S. Courthouse
c/o Admissions Clerk 40 Foley Square, Room 370
New York, New York 10007
TO RSVP or for more information, call: Aleksandra Kaplun at (212) 682-8811 or email akaplun@dunnington.com. If you would like the Federal Bar Association to act as your sponsor, please call Ms. Kaplun to make the arrangements.
In Hollander v. Steinberg, (10-1140 cv April 5, 2011), the Second Circuit applied the fair use doctrine, 17 USC 107 to filings in judicial proceedings. An author claimed that his essays were unpublished and that his adversary filing them in their entirety in a judicial proceeding was copyright infringement.
A "Summary Order" is proper when the panel believes that a decison should have "no jurisprudential effect". Issuance of summary orders is controversial, since our system of case law is based on precedent, not on the subjective belief of judges that their opinions ought to be ignored.
From the New York City Bar, full 1998 report criticizing a prior rule barring even citations to unpublished opinions that led to the currrent rule which permits parties to at least cite Summary Orders here:
The Federal Courts Committee believes that this complete prohibition on the citation of summary orders does not serve the interests of justice or judicial economy. The pervasive use of summary orders has created a vast body of unpublished decisions which are often pertinent to issues arising before the Court, but which cannot be brought to the Court's attention under the current rule. The Committee is aware of cases where the Court has previously ruled by summary order on the precise contention being made in a pending case, on indistinguishable facts, and of other cases where a summary order may be the only authority on point.
Of particular note in Hollander is that a copyright owner's market for a work would not be destroyed by publication of the work on the court's PACER system because retrieving it from PACER is cumbersome.
Finally, the fourth factor, “the effect of the use upon the potential market for or value of the copyrighted work,” 17 U.S.C. § 107(4), clearly favors Steinberg. With this factor, “[t]he focus . . . is on whether defendants are offering a market substitute for the original.” NXIVM Corp. v. Ross Inst., 364 F.3d 471, 481 (2d Cir. 2004). “[O]ur concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps the market of the original work.” Id. Should Den Hollander offer his essays for sale, it is highly unlikely that potentially interested readers would even be aware of the essays’ presence in a court file, let alone choose to acquire copies by the cumbersome methods of visiting a courthouse to make copies or using PACER. And in any event, Den Hollander has offered no evidence that Steinberg “usurped the market” for the essays by submitting them as exhibits in judicial proceedings.
So we have in Hollander a fair use decision that the Second Circuit has decided should be ignored.
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 Procedurewithout 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.
In United States v. Boyd, 2011 WL 285196 (2d Cir. Jan. 31, 2011), the Second Circuit vacated the district court's decision that a defendant did not have ineffective assistance of counsel in negotiating a criminal copyright infringement plea agreement. The Defendant tried to vacate his guiltly plea by claiming that his counsel was unware of the five-year statute of limitations applicable to criminal copyright infringement claims.
(a) Any person who violates section 506 (a) (relating to criminal offenses) of title 17 shall be punished as provided in subsections (b), (c), and (d) and such penalties shall be in addition to any other provisions of title 17 or any other law. (b) Any person who commits an offense under section 506 (a)(1)(A) of title 17— (1) shall be imprisoned not more than 5 years, or fined in the amount set forth in this title, or both, if the offense consists of the reproduction or distribution, including by electronic means, during any 180-day period, of at least 10 copies or phonorecords, of 1 or more copyrighted works, which have a total retail value of more than $2,500; (2) shall be imprisoned not more than 10 years, or fined in the amount set forth in this title, or both, if the offense is a felony and is a second or subsequent offense under subsection (a); and (3) shall be imprisoned not more than 1 year, or fined in the amount set forth in this title, or both, in any other case. (c) Any person who commits an offense under section 506 (a)(1)(B) of title 17— (1) shall be imprisoned not more than 3 years, or fined in the amount set forth in this title, or both, if the offense consists of the reproduction or distribution of 10 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of $2,500 or more; (2) shall be imprisoned not more than 6 years, or fined in the amount set forth in this title, or both, if the offense is a felony and is a second or subsequent offense under subsection (a); and (3) shall be imprisoned not more than 1 year, or fined in the amount set forth in this title, or both, if the offense consists of the reproduction or distribution of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000. (d) Any person who commits an offense under section 506 (a)(1)(C) of title 17— (1) shall be imprisoned not more than 3 years, fined under this title, or both; (2) shall be imprisoned not more than 5 years, fined under this title, or both, if the offense was committed for purposes of commercial advantage or private financial gain; (3) shall be imprisoned not more than 6 years, fined under this title, or both, if the offense is a felony and is a second or subsequent offense under subsection (a); and (4) shall be imprisoned not more than 10 years, fined under this title, or both, if the offense is a felony and is a second or subsequent offense under paragraph (2). (e) (1) During preparation of the presentence report pursuant to Rule 32(c) of the Federal Rules of Criminal Procedure, victims of the offense shall be permitted to submit, and the probation officer shall receive, a victim impact statement that identifies the victim of the offense and the extent and scope of the injury and loss suffered by the victim, including the estimated economic impact of the offense on that victim. (2) Persons permitted to submit victim impact statements shall include— (A) producers and sellers of legitimate works affected by conduct involved in the offense; (B) holders of intellectual property rights in such works; and (C) the legal representatives of such producers, sellers, and holders. (f) As used in this section— (1) the terms “phonorecord” and “copies” have, respectively, the meanings set forth in section 101 (relating to definitions) of title 17; (2) the terms “reproduction” and “distribution” refer to the exclusive rights of a copyright owner under clauses (1) and (3) respectively of section 106 (relating to exclusive rights in copyrighted works), as limited by sections 107 through 122, of title 17; (3) the term “financial gain” has the meaning given the term in section 101 of title 17; and (4) the term “work being prepared for commercial distribution” has the meaning given the term in section 506 (a) of title 17.
Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here
Dunnington Announces Raymond J. Dowd Named General Counsel of the Federal Bar Association
Dunnington, Bartholow & Miller, LLP, a leading New York City-based law firm established in 1921 that provides services including trusts and estates, corporate, taxation, litigation, real estate, construction, intellectual property and art law announced today that litigation partner Raymond J. Dowd was named General Counsel of the Federal Bar Association (FBA), the premier bar association serving the federal practitioner and the federal judiciary.
Mr. Dowd, who currently serves as the FBA’s Vice President for the Second Circuit, was appointed last week as General Counsel at the New Orleans annual convention. Mr. Dowd served as President of the FBA’s Southern District of New York Chapter and sits on the Editorial Board of The Federal Lawyer.
“At Dunnington, we have a proud and long-standing tradition of volunteerism and support of our local and national bar associations. We are very proud that Ray has been named General Counsel of the FBA,” said Carol Sigmond, the firm’s administrative partner.
Mr. Dowd’s litigation practice recently garnered national attention with a victory at the Second Circuit Court of Appeals. In Bakalar v. Vavra, Mr. Dowd represented descendants of Holocaust victims in recovering Nazi looted art, successfully arguing that New York law should trump Swiss law in determining title to stolen artworks. An experienced federal and state litigator, Mr. Dowd’s victories include summary judgment and a bench trial in trademark and unfair competition claims over the use of FASHION TELEVISION and litigation involving the estate of heiress Doris Duke, including removing the corporate fiduciary U.S. Trust Co. and upholding a $100,000 trust for her dogs.
Mr. Dowd has repeatedly been named a New York Superlawyer and is active in the Copyright Society of the U.S.A. and New York County Lawyers’ Association. He is author of Copyright Litigation Handbook (5th Ed. 2010), a Thomson West publication, the Copyright Litigation Blog, and is a former contributor to the New York Law Journal.
About Dunnington, Bartholow & Miller LLP The firm was established in 1921 in New York City and provides a broad range of legal services to individual and corporate clients. For more information, visit http://www.dunnington.com/.
About the Federal Bar Association The FBA is the premier bar association serving the federal practitioner and judiciary. For more information, visit http://www.fedbar.org/.
I have attached a checklist for practitioners who must file appeals with the Second Circuit. The Local Rules have changed, and with the changes wrought by electronic filing, it's a whole new world. I will participate in a CLE program today at 5:30 p.m. starring Catherine O'Hagan Wolfe, Clerk of the Second Circuit sponsored by the Federal Bar Association and the Second Circuit Judicial Council, you can find the program here. If I come across any new surprises tonight, I will post them.
The Federal Bar Association – SDNY Chapter and the
Second Circuit Judicial Council
Present
Brave New World: Filing Appeals in the Second Circuit Court of Appeals
Date: June 8, 2010 Time: 5:30 p.m. – 7:00 p.m. Place: United States Courthouse 500 Pearl Street, Room 850 New York, NY 10007-1312 Faculty: Catherine O'Hagan Wolfe, Clerk of Court for the Second Circuit Court of Appeals John G. McCarthy, Esq., Smith, Gambrell & Russell, LLP Raymond J. Dowd, Esq., Dunnington Bartholow & Miller LLP
NYS CLE Credits: Earns 1.5 credits in Professional Practice
Join our discussion to learn the nuts and bolts of prosecuting an appeal in the digital age. Learn how scheduling, motions and argument are handled by the Clerk's office.
Both the Federal Rules of Appellate Procedure and the Local Rules have recently changed. What are the new traps to avoid, and how does a practitioner keep in the Clerk's good graces? What are the most common mistakes? What resources are available? This program is appropriate for beginners prosecuting their first appeal as well as experienced practitioners who may not be familiar with new practices.
Space is limited. Register now at:
http://ww2.ca2.uscourts.gov/cle/login.aspx
Reception to follow
Co-Sponsors: Dist. of Connecticut and EDNY Chapters of the Federal Bar Association
The Federal Bar Association
The Federal Bar Association (FBA) is dedicated to the advancement of the science of jurisprudence and to promoting the welfare, interests, education, and professional development of all attorneys involved in federal law. Our members run the gamut of federal practice: attorneys practicing in small to large legal firms, in corporations and federal agencies, on Capitol Hill and members of the judiciary.
As the professional organization for private and government lawyers and judges involved in federal practice, the FBA has offered an unmatched array of leadership opportunities and services for more than 80 years. Whether its working with an oversight agency on new regulations that could impact federal practice or acting as an advocate on a particular initiative — the FBA advances effective practice before the federal bench and federal agencies.
SDNY Chapter of the FBA John G. McCarthy, President Simeon H. Baum, President-Elect Philip R. Schatz, Vice President Gareth de Santiago-Keene, Secretary William F. Dahill, Treasurer H. Raymond Fasano, National Delegate Roland M. Gell, Delegate, Network of Bar Leaders
District of Connecticut Chapter – Chris Drury, President EDNY Chapter – Gary Brown, President
Vice Presidents for the Second Circuit Raymond J. Dowd Amy Nussbaum Gell
The Federal Bar Association is the nation’s premier bar association for judges and lawyers involved in federal practice. The FBA publishes The Federal Lawyer - a monthly magazine for attorneys practicing in federal court and in the federal government. For more information on the Federal Bar Association, please visit http://www.fedbar.org/.
In Arista Records LLC v. Launch Media Inc., --- F.3d ---, 2009 WL 2568733 (2d Cir. August 21, 2009), the Second Circuit considered the case of an internet "radio" station on Yahoo called Launchcast. The Second Circuit is the first federal appeals court to rule on the issue.
Launchcast, like Pandora permits listeners to "create" their own radio stations. The Court's opinion does a great job of explaining how such "stations" work and the extent to which consumers' preferences are registered within Yahoo's service. Essentially, consumers have very limited control over the content and have veto power over songs that they don't like.
The court's opinion is a good explanation of both the technology and the legislative history. Noting that federal judges are appointed for life and thus have "varied" understandings of the technology involved, the court endeavored to make the inner workings of Launchcast's technology clear in plain English.
"Interactive service" is defined in the Copyright Act 17 U.S.C. Section 114(j)(7). Webcasting services that are not interactive must pay a statutory royalty set by the Copyright Royalty Board.
Interactive services, on the other hand, must also pay an individual license fee for each song in question to a performing rights society. The reason is that the copyright holder has the exclusive right to "to perform the copyrighted [sound recording] publicly by means of a digital audio transmission" 17 U.S.C. Section 106(6).
The Second Circuit agreed with the appellant BMG that the question of interactivity was a question of law for the court, not a jury question (the trial court put the question to the jury). But the Second Circuit then found against BMG in that the Launchcast service was not an "interactive service" within the meaning of the Copyright Act.
Last Christmas, I showed my mother how to create a radio station on Pandora that played songs like "Charlie Brown's Christmas". She has since become a big Pandora fan.
Freelancers suffered a very tough blow in the Second Circuit's decision In re Literary Works in Electronic Databases Copyright Litigation, --- F.3d---, 2007 WL 4197413 (2d Cir. 2007). Dissents in the Second Circuit are fairly rare, but the Second Circuit's former Chief Judge John M. Walker, Jr. wrote a fairly thorough dissent.
In 2001 the U.S. Supreme Court decided New York Times v. Tasini, 533 U.S. 483, 488 (2001) which held that section 201(c) 0f the Copyright Act does not permit publishers to reproduce freelance works electronically when the publishers lack specific authorization to do so. In the wake of that decision, the In re Literary Works litigation was commenced as a class action to vindicate the rights of freelancers whose works were taken without their permission. After years of heated negotiation, the parties agreed to a class settlement. The settlement Classes were divided into subclasses A, B and C. Subclass A consisted of freelancers who had registered their copyrights (see my post of yesterday on advantages of registration). Subclass B registered after infringement, but before December 31, 2002. Subclass C never registered their works.
As discussed in my post of yesterday: for a U.S. copyright owner, registration is a prerequisite for commencing litigation. As the In re Literary Works decision sets forth: Class A is entitled to statutory damages and attorneys fees. Class B to actual damages. Class C .. well.... there's the rub.
The Defendants claimed that Class C (unregistered copyrights) were practically worthless. So a group of objectors (holders of unregistered copyrights) objected to the class settlement, which was likely to leave next to nothing or nothing for the Class C. Watch out what you ask for: the objectors brought the issue of the court's jurisdiction to the fore, and the Second Circuit scuttled any settlement in favor of the unregistered copyright holders. Why? They had not registered.
It seems that all of the parties spend a lot of time arguing the meaning of Section 411 of the Copyright Act, which makes it a requirement that registration to occur for a federal court to have jurisdiction. To dig into the highly technical nuances of the argument, it appears to me that the dissent makes the most sense: Section 411 doesn't create the pre-existing rights and should be treated solely as an enforcement mechanism.
And in the end, the result is not only unfair, but it renders Tasini a pyrrhic victory. As In re Literary Works states: "this jurisdictional failure likely affected more than 99 percent of the claims at issue."
Why unfair? Well, freelancers (a.k.a. ink-stained wretches) traditionally beat deadlines by minutes, turned in their work, got some beer money, and lived hand-to-mouth. They owned their work, and maybe, just maybe, someday they'd turn it into a book. Of course they owned their copyright, and when they saw "Copyright New York Times" they knew that the Old Gray Lady had taken care of the formalities of registration for them.
But in a case called Morris Business Concepts, Inc., 259 F.3d 65 (2d Cir. 2001) and in a decision denying a petition for rehearing 283 F.3d 502 (2002), all of that was taken away. Why? It was held that the newspaper owns the "collective copyright" but that if a freelancer wanted to consider a copyright registered, it would have to file a separate registration to indicate that all of the rights had not been transferred to the publisher. So every time the ink-stained wretch turned in a story, he or she was also supposed to file a registration with the Copyright Office.
Clearly, 99% of the freelancers did not have that understanding. They were relying on the publisher's registration.
So when we look at the In re Literary Works decision, the "unregistered copyrights" that were settled and under discussion were copyrights claimed by freelancers in registered collective works. Since copyright is an area of "complete preemption", this is clearly an area in which Congress intended to legislate - and whether the publisher's re-publication of a story without permission is deemed a breach of contract or a copyright infringement, it seems that there is sufficient grounds for litigation over whether it is a state or federal claim to permit a federal court to exercise supplemental jurisdiction over it in the settlement context. As Judge Walker correctly noted, there is certainly a "case or controversy" to give the freelancers standing in the constitutional sense.
I saw a collection of 5 Brigitte Bardot films in Barnes & Noble bookstore priced at $39.99. I didn't buy it, but I was glad to see that the French seem to be waking up to the possibility of exploiting their copyrights in the U.S. market in an attractively-packaged, competitively-priced way.
The United States has historically viewed French copyrights with suspicion. French laws have always included bells and whistles denied to our local authors and creators. They offend our puritan values by protecting frivolous things like fashion designs, designers, and the "moral rights" of artists and authors to the "integrity" of their works. Blank cassette tapes were taxed and rights paid to musicians' collecting societies because music would be copied to them without paying additional royalties.
But banish the thought that such prejudice prevails in Gotham: the Second Circuit is hip to French law. In Sarl Louis Feraud International v. Viewfinder, Inc., 489 F.3d 474 (2d Cir. 2007), the Second Circuit considered a situation where the district court threw out a French judgment without even looking at what the French law was. Neither the appellate nor the respondent briefed the Second Circuit on what French law it was that the district court found unconstitutional. The case involved a U.S. company that published photographs of French fashion designs on the internet. The U.S. company permitted a French judgment to be entered against it. The French court ordered a fine of 50,000 francs per day (France converted to the Euro on January 1, 2002). In the Southern District of New York, the Defendant succeeded in dismissing an action to enforce the French judgment.
The defendant, whose burden it was to show that the French law was repugnant to the law of the State of New York argued "there is simply no way for this Court to know what substantive law was actually applied in France and on what ground Defendant was found liable."
The court looked at the default judgment, which cites the French Intellectual Property Code. It then apparently sua sponte hopped onto the internet, and found the French Civil Code at http://www.legifrance.gouv.fr/. It then cited:
Article L122-4 Any complete or partial performance or reproduction made without the consent of the author or of his successors in title or assigns shall be unlawful. The same shall apply to translation, adaptation or transformation, arrangement or reproduction by any technique or process whatsoever.
Sacre bleu! Quel horreur! That certainly sounds repugnant. It took me some navigation on the French government website, but sure enough, after pressing the little British flag buttons under "Droit Francais" and next to "Les Codes" and drilling down FIVE levels, I too, found the provision under the rubric "Patrimonial Rights" in English
But then the court cited another French Civil Code that has an odeur of "fair use":
Article L122-5Once a work has been disclosed, the author may not prohibit: 1°. private and gratuitous performances carried out exclusively within the family circle; 2°. copies or reproductions reserved strictly for the private use of the copier and not intended for collective use, with the exception of copies of works of art to be used for purposes identical with those for which the original work was created and copies of software other than backup copies made in accordance with paragraph II of Article L. 122-6-1, as well as copies or reproductions of an electronic database; 3°. on condition that the name of the author and the source are clearly stated: a) analyses and short quotations justified by the critical, polemic, educational, scientific or informatory nature of the work in which they are incorporated; b) press reviews; c) dissemination, even in their entirety, through the press or by broadcasting, as current news, of speeches intended for the public made in political, administrative, judicial or academic gatherings, as well as in public meetings of a political nature and at official ceremonies; d) complete or partial reproductions of works of graphic or three-dimensional art intended to appear in the catalogue of a judicial sale held in France, in the form of the copies of the said catalogue made available to the public prior to the sale for the sole purpose of describing the works of art offered for sale. A decree by the Conseil d’Etat shall determine the characteristics of the documents and the conditions governing their distribution. 4°. parody, pastiche and caricature, observing the rules of the genre. 5°. acts necessary to access the contents of an electronic database for the purposes of and within the limits of the use provided by contract.
Can a court just hop on the internet and figure out the law of another country sua sponte? It seems un-American and likely to start a riot in Congress among the Freedom Fries crowd. The answer is yes. Although the Second Circuit didn't cite Rule 44.1 of the Federal Rules of Civil Procedure, it provides:
Rule 44.1. Determination of Foreign Law. A party who intends to raise an issue concerning the law of a foreign country shall give notice by pleadings or other reasonable written notice. The court, in determining foreign law, may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence. The court's determination shall be treated as a ruling on a question of law.
The Second Circuit agreed with the lower court's finding that copyright laws are "not matters of strong moral principle". But on the record before it, the court did not see a finding that the French law was "vicious wicked or immoral, and shocking to the prevailing moral sense."
The Second Circuit remanded for an analysis of "whether the intellectual property regime upon which the French Judgments were based impinged on rights protected by the First Amendment." Analogizing to libel judgments, the court held:
In deciding whether the French Judgments are repugnant to the public policy of New York, the district court should first determine the level of First Amendment protection required by New York public policy when a news organization engages in the unauthorized use of intellectual property at issue here. Then, it should determine whether the French intellectual property regime provides comparable protections.
The court noted that the fair use doctrine is coextensive with the First Amendment, and that the district court would have to determine whether the Defendant's use fell within the fair use doctrine as set forth in 17 U.S.C. 107.
