When is a fictional character copyrightable? Certainly main characters are. But what about lesser characters – even ones that do not have even a single line?

Protected intellectual property

Judge Ronald S.W. Lew faced this question in DC Comics v. Towle in February 2013 regarding the Batmobile. Defendant Mark Towle runs Gotham Garage a custom car business. He has been selling kits that allow people to customize their vehicles into the Batmobile. DC Comics sued for copyright and trademark infringement.
Like most of Batman’s fights, the outcome was not in much doubt. Batman wiped the floor with Towle. Judge Lew found that Towle violated DC Comics’ copyright and trademark rights in the Batmobile. Judge Lew found that the public is likely to be deceived by Towle’s product, and also that the Batmobile had enough “artistic features” to be protected under copyright law.
Batmobile certainly a unique image that justifies protection, if only because there is a demand for kits to fit out a car as a Batmobile. However, the line delineating what is protectable intellectual property starts getting very fuzzy as characters get less distinctive. Supporting characters and henchmen are almost always anonymous, or nearly so, and have little intellectual property protection. In Nichols v. Universal Pictures, 45 F.2d 119 (2d Cir. 1930), the legendary judge Learned Hand found that “the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly” in ruling that two plays featuring a Jewish person marrying a Catholic person in New York were not so similar as to constitute copyright infringement. Copyright protects expression, not ideas. Luckily, “Holy _____” is not long enough to constitute protected expression.

Photo By Joy Acharjee (Flickr) CC-BY-2.0, via Wikimedia Commons

What has Sonny Wrought?

How did you celebrate Public Domain Day, January 1st? I celebrated in suitable fashion, among 90,000 celebrants in red and white. Of course, in the United States, not much has entered into the public domain for the last 14 years or so, since the Sonny Bono Copyright Term Extension Act went into force, extending individual copyrights by 20 years, and works for hire by 25 years.

The balance in copyright between producers and consumers has been warped in favor of producers for a long time. Copyright protection is designed to encourage the production of new material — not reward the makers of old material. As Justice Steven Breyer stated in his dissent in Golan v. Holder:

“In order ‘[t]o promote the Progress of Science’ (by which term the Founders meant ‘learning’ or ‘knowledge’), the Constitution’s Copyright Clause grants Congress the power to “secur[e] for limited Times to Authors . . . the exclusive Right to their . . . Writings.’ Art. I, §8, cl. 8. This ‘exclusive Right’ allows its holder to charge a fee to those who wish to use a copyrighted work, and the ability to charge that fee encourages the production of new material.”

However, when copyright terms go from 14 years (the original term in 1790), to 28 years (1831), to life of the author plus 50 years (the original provision in the 1976 Copyright Act) to life of the author plus 70 years now, what new incentive to an author is there? Will studios make any more movies because copyrights on works-for-hire are now 95 years, instead of 70? I just don’t see someone saying that they’ll make this work if the copyright lasts until 2108, but not if it lasts only until 2083. In the meantime, many works are left ignored, because it costs too much to re-release them.

In 1974, Frank Capra’s classic It’s a Wonderful Life went into the public domain, after languishing on various studios’ back shelves for more than two decades. When I first saw it in 1981 on film, there was still some cost involved in preparing and shipping the film. Now, however, there are no costs to copying — it is available on YouTube, and millions of people can enjoy Jimmy Stewart saving Clarence (and the town of Bedford Falls), and discovering Zu-zu’s petals. By attempting to grab every last penny of worth in a work in an era in which the cost of good-quality copying approaches zero, producers’ over-reliance on copyright may cause the entire copyright regime to fail.

The Economist has another good examination of copyright law, which examines the sorry state of the public domain. No one wants to discourage artists and authors from creating new works, but it is in no one’s interest to have

Photo credit: By Peter Denton [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons

Your phone rings, and it is your friend from the PTA: your name is listed in the local paper for having skipped jury duty last month. Your friend informs you that you may be subject to jail time and/or a fine. You were called for jury duty awhile ago, but you checked the website, and you didn’t have to go in — but when was that? Last year? The year before? Your friend sounds worried, but tells you that there is a number to call, and you get the number. Now your fingers are shaking a little bit as you dial.
Your fingers start shaking a little more as you listen to the recorded message tell you the bad news that you may face a thirty day jail term and a $500 fine — but then you hear that this is all just a joke, but you can use the number to mess around with the head of one of your friends. What the —?

No joke. Photo courtesy of Photos-public-domain.com

This is really happening in Pennsylvania, as the Administrator for the Courts, Zygmont Pines (yes, that is his real name) is warning about the hoax. The only question is how soon it will spread to the jokers here in California. As much of a drag that jury duty is, it is vitally necessary for our justice system. If one of your friends tries to play this one on you, just tell him its really not funny.

The copyright trolls had a bad day at the beginning of September, as Judge Phyllis Hamilton of the Northern District of California found that wireless router owners do not have a duty to secure Internet connections from outsiders.
The issue in AF Holdings v. Doe (Hatfield), US Dist Court, ND Cal. C12-2049 (PJH)  is negligence. Can the owner of an Internet connection (like a wireless router, for example) be negligent in preventing third parties from using the connection to access and copy copyrighted content?
For there to be negligence, there first may be a duty. Automobile drivers, for example, have duties both to their passengers and third parties that they might encounter, not to injure them in any way. Employers have duties to their employees not to use machinery in a dangerous manner. However, Judge Hamilton ruled that there is no duty of the owner of an Internet connection to the owner of copyrighted content:  ”AF Holdings has not articulated any basis for imposing on Hatfield a legal duty to prevent the infringement of AF Holdings’ copyrighted works, and the court is aware of none.”
Judge Hamilton put a further stake in the heart of AF Holdings’ argument by finding that federal law regarding copyright and the Communications Decency Act supersede, or preempt, state and local law, meaning that local laws regarding negligence have no effect in terms of negligence for maintaining an internet connection.
Judge Hamilton’s ruling does not mean that wireless router owners are now free to take off password protection from their wireless routers. Acting recklessly, knowing that somebody will use the router to download prohibited content, legally acts as a “knowingly” allowing someone to use your internet connection illegally, and that can be considered contributory copyright infringement. Moreover, allowing lots of people to use your connection will inevitably slow down the access that you paid for. Lastly, if someone is committing a crime using your wireless connection, you could have SWAT teams invading your home, and even Martha Stewart can tell you that that’s NOT a good thing.

If you had any doubts, the New Scientist has published a report that says that most torrent downloaders have their internet protocol (“IP”) addresses logged within three hours of the download.

The article wonders whether the information will be reliable enough to be admitted in a court of law, but another legitimate question is whether there are many who can afford to fight the evidentiary battles. The owners of copyrighted content are very good at targeting the price points where it is cheaper to settle than to fight.
BitTorrent is seen as a godsend to many illegal downloaders, but it should be seen for what it is: a trap. To participate in a “swarm,” you have to give up your IP address, so that the other members of the swarm can copy from and to you. If you don’t want to leave your home address with the owners of the content, then do not use BitTorrent. The End. Finis. Owari.

Thanks to Annette Freeman, one of the world’s leading intellectual property authorities, I read an interesting article about insurance for intellectual property plaintiffs. Small companies worried about the cost of protecting their IP can buy this insurance, which will subsidize the cost of enforcing IP rights in court.
The devil is in the details, of course, so the policy has to be read quite closely to see what is covered, and what happens if you win.

“[S]ome of these policies may require you to reimburse the carrier for the cost of the litigation (although not all policies require this). This reimbursement obligation is triggered when you receive any type of benefit as a result of the case—not just a financial benefit. For example, if your case won an injunction that stopped the infringer (but didn’t recover money) then you obtained a benefit, and you would need to repay the carrier for what it paid for the prosecution of the litigation.”

In order to get the insurance company to pay for the litigation, the insurance company hires a “neutral” IP lawyer who decides if the case has merit. If the neutral’s review concludes the case is likely to win, the insurance company will finance the litigation — with a “copay” of course — and probably does not recognize the hourly fees regularly charged by IP litigators, so be prepared for a double co-pay.

There are lots of caveats, such as the IP has to be registered, so trade secrets are not protected. Still, in a world in which many defendants can rely upon insurance for “advertising injury,” wronged IP plaintiffs have a way of paying to protect their IP.

The Economist reports that China is getting more serious about protecting intellectual property:
“[T]he changes are also the result of China’s legal system getting better. Two decades ago, many judges were political or military appointees and ill-equipped to try technical cases. Thanks to better training, particularly in Shanghai, Beijing and Shenzhen, that is now much less common.”
As China moves from passively receiving intellectual property to creating IP, China will increasingly value it in court. China’s development reminds me of another country that followed the route from IP rogue to IP mainstay.
In the 1830s and 1840s, Charles Dickens’ books were popular on both sides of the Atlantic, but he got nothing from his books when they were published in the United States. He was subjected to extensive copyright infringement, as others profited from publishing his works. To turn the tide of money toward him, he toured extensively in the US, and was one of the first to discuss international copyrights.

The Supreme Court will be taking another crack at solving the grey market conundrum in a copyright infringement case that started here in California.
In 2010, the Supreme Court granted certiorari in Costco v. Omega, a Ninth Circuit case in which the maker of Omega watches sued Costco for legally buying Omega watches overseas at a far lower price, then importing them to sell to Costco customers in the US. The Supreme Court deadlocked at 4-4 — Justice Kagan had recused herself because she had worked on the matter while she was the federal government’s Solicitor General. While that upheld the Ninth Circuit’s ruling in favor of Omega, it did not do anything to dispel the many shades of grey involved in this grey market question.
In Kirtsaeng v. John Wiley and Sons, John Wiley & Sons published textbooks overseas that were sold in Thailand at a fraction of the cost found here in the United States — but seemed to be identical to those published and sold here in the US. Mr. Kirtsaeng was a graduate student at USC. In 2007 and 2008, he had his family buy the textbooks in Thailand (and printed outside the US) and sent them to him to sell here in the United States on eBay and similar sites. The publisher then sued him in New York, and won a judgment of $75,000.
The Second Circuit affirmed the judgment, finding that section 602 of the Copyright Act, forbidding the importation of copyrighted works, takes priority over section 109, which allows the buyer of a copyrighted work to dispose of the work without interference from the copyright owner. This is called the “First Sale” Doctrine, and allows you to resell videos, books, and the like without needing the permission of the copyright owner.
Mr. Kirtsaeng’s will likely turn on whether he could argue the First Sale Doctrine in an era when some items are made in the United States, while identical copies are made overseas. When is an article “made” under American copyright law — when it is prepared in the United States, or when it is printed in a foreign country? Under current law, the US copy could be resold after being bought overseas, and the foreign copy (because it had not been subject to American jurisdiction before) could not. In an era when producing and moving goods between countries is growing ever cheaper, the production location distinction is quickly losing its validity — at the cost of American consumers and workers. We’ll see if this grey market issue will turn Justice Kagen’s hair grey.

© Bay Oak Law, 2012

Maybe its your company’s simple yet addictive game. Or perhaps it’s the new song your band wrote that is flooding the airwaves. Maybe its just your smartphone video of your pet yapping in time to a song. You immediately register your American copyright, yet within a few hours the Internet reveals that your work is being copied from Albania to Zimbabwe. How do you enforce your copyright?
Unfortunately, American law ends where American sovereignty ends. You cannot sue here in the United States for a copyright infringement that occurs in another nation. However, that does not mean you are helpless.
First, just because an infringement starts in another nation does not mean that American laws never apply. If a work is imported into the United States, it becomes subject to American law. Thus, if someone ports an infringing copy of your pet video onto YouTube’s servers, it becomes subject to American requirements under the Digital Millenium Copyright Act, including being taken down if the copyright owner demands it.
Still, most foreign infringements will not enter the United States, and there is no international copyright registration agency. However, your American registered copyright can still be enforced in the foreign country itself, if that foreign country has joined the Berne Convention for the Protection of Literary and Artistic Works. Almost all major countries have joined the “Berne Convention” to protect their country’s copyrighted works in other countries. (Countries that have not signed onto the Berne Convention include Afghanistan, Iran, Iraq, Burma, Cambodia, Laos, Somalia, and Ethiopia).
If someone infringes your copyright in a foreign country, your remedy is to sue the infringer where the infringement occurred, under the laws of that country. Under the Berne Convention, you are entitled to the same legal rights for your American-registered copyright as you would have if you had registered your work in that country. You will need to rely upon the legal processes of that country, so you will need competent legal advice there. Bay Oak Law cannot represent you in the foreign country, but we can help you find competent legal assistance if you need it.

It is always a good idea to note the copyright, even (or, especially) if you are not registering the copyright. Once you make your expression available to the world, you have rights under copyright. If someone is profiting from the expression that you worked so hard to create, you have a right to those profits, even if the profiteer/infringer is in a different country.

Way back in the paleolithic era, also known as September 1984, I was driving cross-country to a Congressional internship. I was listening to a local radio station that was broadcasting live from a campaign event for then-President Reagan. To warm up the crowd, the campaign played Bruce Springsteen’s “Born in the U.S.A.,” and in the background I could here the crowd scream the refrain. (I’m not sure it is the same event, but an article on the Ronald Reagan Rock in Hammonton, New Jersey sums things up pretty well.)
The sheer obliviousness shocked me: even a quick listen to the lyrics reveals that “Born in the U.S.A.” is not an affirmation of the greatness of the United States, but an exclamation against the shortchanging of a large portion of the American people: even though the song’s narrator was “Born in the U.S.A.,” “the first kick I took was when I hit the ground,” and since Vietnam it’s been “ten years down the road, nowhere to run, ain’t got nowhere to go.” This was not the storyline for an incumbent’s re-election campaign. Springsteen complained, and the campaign stopped using the song.
It is a presidential election year once again, and once again, the presidential campaigns’ choice of music is getting them into trouble. Former Speaker of the House Newt Gingrich and his campaign have been sued for using Survivor’s anthem, Eye of the Tiger, from the movie Rocky III. (Worse, Survivor frontman Dave Bickler retaliated by reading from Gingrich’s latest book “A Nation Like No Other”). Rep. Michelle Bachmann used Tom Petty’s “American Girl” until he got wind of it. Four years ago, Jackson Browne sued the Republican Party and John McCain for copyright infringement and false endorsement for using “Running on Empty” without permission.
There are issues of both copyright infringement and trademark infringement. Artists and other copyright owners are entitled to royalties when their works are played – that is what copyright is all about. However, for politically active artists, having those they disagree with using their works could tarnish the artist’s “brand.” Browne’s claims for false endorsement and a likelihood of confusion survived a motion to dismiss by Sen. McCain and the other defendants, who eventually settled the case.
National Public Radio has a good article on the pitfalls of campaign music: since they play the music in various locales, campaigns need licenses to legally play the songs. Both President Obama’s and Gov. Romney’s campaigns have created their own official campaign music lists, and have (presumably) cleared their use with the copyright holders. Former Senator Clinton’s 2008 Presidential campaign even had people vote for the official campaign song.
Campaigns use music the same way most of us do: to inspire, to create a connection. Speaker Gingrich probably wanted voters to associate him with Rocky, fighting against the odds after having taken a hard fall. However, what works in our personal lives doesn’t always translate well in a public venue. Political campaigns have gradually come to realize that ignoring the rights (and lyrics) of copyrighted songs doesn’t work.