On July 27, Google Inc. asked U.S. Circuit Judge Denny Chin to dismiss a lawsuit from the Authors Guild over the company’s plan to digitize books and provide excerpts through their search engine service. Google filed a motion seeking dismissal and arguing their actions fall under fair use and also provide a benefit to the public and the authors themselves. The Authors Guild also filed for summary judgment. Both parties’ motions are set for oral argument on Oct. 9.
The case has been ongoing since The Authors Guild, along with The American Society of Media Photographers and other parties, sued Google in 2005 claiming the company’s plan to create an online literary database was carried out without permission from copyright holders. Google estimated it has already scanned more than 20 million books and posted excerpts from over 4 million. The process began when Google entered agreements with public and university libraries to digitize and upload information for their Google Books service. So far, Google says works have been scanned from Harvard University, Oxford University, Stanford University, the University of California, the University of Michigan, and the New York Public Library. Judge Denny Chin began hearing the case as a trial judge and has retained jurisdiction after being elevated to the Federal Appeals Court in 2010.
The Authors Guild believes that Google’s actions constitute massive copyright infringement. Google argues, however, that their Google Books service actually furthers the objectives of copyright law by providing significant public benefits. Google believes their service even provides a benefit to the authors themselves and argues the authors have failed to prove Google Books displaced any book sales whatsoever. Google Books, the company argues, actually makes the authors’ works more easily available and may have even increased sales. Additionally, Google argues that Google Books constitutes fair use since it creates significant benefits without diminishing the value of the copyrighted works in question.
Previously, in March 2011, Judge Chin rejected a $125 million settlement reached between the plaintiffs and Google. While this may seem unreasonable, the Judge believed the proposed settlement was far too broad. Judge Chin accused Google of using the settlement to implement a business plan that would leave them with a monopoly to copy works without permission. The settlement went beyond the bounds of the litigation and would strengthen Google’s control over the search engine market. The United States, Amazon.com, and Microsoft had raised antitrust concerns following the first proposed settlement. Further talks to reach an alternate settlement between the parties were unsuccessful. In May, the judge granted class-action status to the plaintiffs, allowing photographers and graphic artists to join the suit.
Formerly, the seal’s use was governed by a variety of financial and administrative restrictions including a written agreement. The FBI’s update now allows the seal to be downloaded for free from their website. Under the new regulation, the Anti-Piracy Warning Seal is available for use by all copyright holders who meet specific conditions. Unlike the original APW Seal program, which restricted the Seal’s use to five associations, the new regulation will enhance the Seal’s availability. The new regulation includes the following conditions:
The APW seal is authorized for use on copyrighted works including films, audio recordings, electronic media, software, books, photographs, etc.
The APW Seal shall only be used on copyrighted works subject to U.S. Criminal Code protection, including 18 U.S.C. Sections 2319, 2319 (A), & 2319(B)
The APW Seal must be accompanied by the Authorized Warning Language included in the regulation, or alternate language authorized by the Director of the FBI in writing.
No additional communication or information may be represented as approved by the FBI.
The APW Seal must be obtained from the FBI’s official website: http://www.fbi.gov
The APW Seal may only be altered in black and white or grayscale. Any other animation or alteration is prohibited.
Copyright holders who use the APW Seal are encouraged to use copyright protection or anti-piracy measures.
The APW Seal may not be used in any manner that suggests FBI approval, authorization or endorsement of any information other than the authorized warning language.
The APW Seal may not be used on any illegal work including infringing material, child pornography, or obscenity.
Any unauthorized use or use that violates the regulation’s conditions may be punishable under 18 U.S.C. Sections 701, 709, or other applicable law.
These new conditions protect the use of the seal and allow it to be used more broadly. Instead of being used only by the previous five industry associations, the APW Seal can now be used by any copyright holder. Since the copyright itself does not even need to be registered, the APW Seal can now protect a wider variety of copyrighted works, including smaller, independent copyright holders. This widespread grant informs the public about criminal penalties and the FBI’s involvement.
Despite some criticism, the majority of feedback to the regulation was positive. Some comments urged the FBI to take a more comprehensive approach, but the FBI pointed out that the APW Seal is only a small part of their larger efforts to curb and punish copyright infringement. The new regulation should help a variety of copyright holders; for example, independent films and sports broadcasts will both benefit from the ease of using the APW Seal to discourage piracy and inform the public. The FBI took into account all comments on the proposed regulation and addressed any concerns expressed.
Some of these comments criticized the regulation as continuing the FBI’s current weak and ineffective APW Seal use. Broader use, they argue, will only serve to further dilute the Seal and will not prevent any infringement. The FBI disagreed, however, and they argue that the regulation was created after a large volume of requests from individual copyright holders. Rather than weaken the APW Seal, the broader grant for use should promote the FBI’s goal of preventing piracy and informing the public about its criminal nature. Additional comments expressed concern that the APW Seal program will dilute the seal generally, but the FBI believes the benefits will outweigh any such risks. The FBI also points out that the APW Seal is protected from misuse by criminal statutes.
This article is not intended as legal advice. If you are a copyright holder and would like to use the FBI’s APW Seal, contact an attorney to ensure you comply with the new regulation’s conditions. While the FBI would like to see the Seal used by all copyright holders, unauthorized use is punishable by law. Stone Law, P.C. is available to guide you through the process of using the APW Seal.
The Kirtsaeng case follows the Supreme Court’s December 2010 decision in Costco Wholesale Corp. v. Omega, which centered on the first-sale doctrine, which usually entitles the owner of a lawfully produced copyrighted work to resell it without permission from the copyright holder. The Supreme Court split 4-4, with Justice Elena Kagan not taking part. The court did not issue a written opinion, but held that the first-sale doctrine did not apply to foreign goods. The Second Circuit’s Kirtsaeng decision relied on the Supreme Court’s Costco ruling.
In the present case on appeal, Supap Kirtsaeng, a graduate student at the University of Southern California, sold John Wiley textbooks on eBay. The books were purchased in Asia by his family and friends and shipped into the U.S. to be sold on eBay. The Second Circuit upheld a verdict against Kirtsaeng and held that the first-sale doctrine only applied to goods manufactured in the U.S. The decision by the Second Circuit may have some strange implications that give foreign manufacturers greater control over their products than U.S. manufacturers. In particular, the Association of Art Museum Directors is concerned that museums may be barred from displaying foreign works of art.
According to the brief, the American museums believe they could lose their ability to acquire and display foreign-made, copyrighted pieces. Under the ruling, the museums argue, any gallery that displays a foreign work is potentially infringing on a copyright. The museums were long protected under Section 109, but would now have to rely on fair-use arguments with little precedent.
The museums also argue that any foreign works protected by copyright law should also be subject to the law’s limitations. Section 109 limits the protections under the Copyright Act by allowing owners to manage lawful copies of a copyrighted work without permission from the copyright holder. Normally, public performance without permission is a clear violation of copyright, but Section 109(C) provides an exception for owners of lawful copies:
(c) Notwithstanding the provisions of section 106 (5), the owner of a particular copy lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.
This exception allows museums to display works publically without obtaining a license from the copyright holder, a practice that could be prohibitively expensive. The museums may have no choice when it comes to foreign art, however, since the Second Circuit ruled that Section 109 applies only to American-made works. In addition to being wildly expensive, licensing could be impossible for museums when the copyright holder is unknown or unavailable.
One argument made in the amicus brief is that Section 104 of the Copyright Act makes all eligible works subject all protections and limitations of the act. There is no distinction for works based on origin in the act; therefore, Section 109 limits the rights of every copyrighted work, regardless of where it was produced. The court below, according to the brief, erred by finding that the text of Section 109 was ambiguous. Instead of finding ambiguity and selectively interpreting the text of the Copyright Act, the court should have read Section 104 as establishing that all protections, remedies, and limitations of the entire Copyright Act apply to all works and all copies by extension.
The brief also argues that the broad interpretation of Section 109 does not conflict with Quality King Distribs., Inc. v. L’anza Research Int’l, Inc., 523 U.S. 135, 150 (1998). In that case, the Supreme Court left open the possibility that all copies that receive protection under U.S. law are subject to the limitations of Section 109. The exception for foreign works, the museums argue, is a result of unnecessary judicial interpretation. The brief argues that no foreign work should receive more or less than a domestic work since there is no clear grant in the statute, since, in the few times Congress has prescribed special treatment for foreign works, they have done so with explicit language. For example, the brief argues that Congress could have chosen the words “lawfully made in the United States,” rather than “lawfully made under this title,” for Section 109. Therefore, there is no reason to interpret the statute differently for foreign made works than for domestic ones.
In its conclusion, the brief pleads for the Supreme Court to reverse the decision below. The museums believe that the court should find that if the copyright owner authorized the first distribution abroad, then imported foreign copies can be distributed or publicly displayed within the U.S. without permission. Doing so would preserve the statutory exception that allows museums across the country to display works of art without fear of unnecessary copyright litigation.
On July 3, the Library Copyright Alliance filed an amicus brief with the Supreme Court as a result of their decision to review the Second Circuit’s decision in John Wiley & Sons v. Kirtsaeng. The decision interpreted the first-sale doctrine, which allows legal owners to resell, lend, or dispose of copyrighted works after purchase, to apply only to works manufactured in the United States. As a result, foreign manufacturers have greater control over their products under U.S. law. Many organizations like libraries and museums have submitted amicus briefs urging the Supreme Court to reject this interpretation since they depend on the first-sale doctrine to operate.
In December 2010, the Supreme Court faced a similar issue in Costco Wholesale Corp. v. Omega. In that case, the Supreme Court held that the first-sale doctrine only applied to U.S. manufactured works. The unwritten ruling was based on a 4-4 split by the court. Justice Elena Kagan did not take part, since she was involved in the issue as the Solicitor General. When Kirtsaeng reaches the Supreme Court next year, however, she could be the deciding vote that finally determines the issue.
In the Kirtsaeng case, the Second Circuit upheld a jury award of statutory damages to John Wiley & Sons, after Supap Kirtsaeng sold foreign copies of their books on eBay. Kirtsaeng’s family and friends mailed him books purchased abroad, which he sold on eBay to U.S. customers. Relying heavily on the Supreme Court’s Costco ruling, the Second Circuit ruled that the first-sale doctrine did not apply since the books were manufactured abroad and that Kirtsaeng could be held liable.
While the outcome of the case certainly has important implications for public services like libraries and museums, many companies or businesses that deal in foreign-made goods, including CostCo Wholesale Corp. and the National Association of Chain Drug Stores, have also submitted briefs to the court urging them to overturn the decision. The Supreme Court’s decision has a great impact on the lawful, yet unofficial, sale and trade of goods. Also known as the gray market, these unofficial sales are a $63 billion industry. The court’s decision could cripple the industry’s ability to avoid liability for a variety of unauthorized transactions by the owners of legal copies. Much like the Library Copyright Alliance, these businesses could be exposed to litigation due to extra rights afforded to foreign manufacturers under the Second Circuit’s decision.
The libraries maintain that the decision effectively outlaws the way they operate by taking away their ability to lend any foreign books. It does not make sense, they argue, for the law to differentiate between owners’ rights merely based on the location their legitimate copies were produced. Under the Second Circuit’s interpretation, the law would also reward and incentivize sending publishing or production to other countries. The libraries believe Congress would never have intended this kind of reward for outsourcing.
According to a press release by the American Library Association, U.S. libraries currently contain over 200 million books from foreign publishers that would be in jeopardy if the decision is upheld. Even more books from U.S. publishers may have been printed elsewhere, and libraries would be in danger of copyright liability if they lent out any books that did not indicate they were printed in the U.S. While it’s unlikely that copyright holders would bring claims, the libraries do not want to engage in unlawful conduct just because the chances of getting caught are low.
The libraries would like the Supreme Court to overturn the decision and find that the “lawfully made” language in Section 109 of the Copyright Act applies to all works protected under it, but that would protect Kirtsaeng from liability under the first-sale doctrine. If the court chose not to accept this approach, the libraries urge them to adopt the Denbicare exception. The Denbicare exception, from a 1996 Ninth Circuit case, allows parties to assert a first-sale defense if foreign copies are authorized for domestic sale. This interpretation would likely result in liability for Kirtsaeng since he was not authorized to sell the books in question by John Wiley & Sons.
In Dish Network LLC v. American Broadcasting Cos et al, a U.S. District Judge in Manhattan, Laura Taylor Swain, granted a motion by Fox to dismiss copyright and contract claims by Dish. The claims result from Dish’s new AutoHop feature, which allows viewers to skip commercials. In order to achieve a more favorable ruling, Dish filed preemptively in New York, only hours before claims by CBS, Fox, and NBC were filed in California. Dish’s New York dispute involves ABC, CBS, Fox, and NBC.
After the judge’s ruling, the issue will be tried in both New York and California on several different issues. Dish’s claims against Fox, and copyright claims against CBS and NBC were all dismissed to be heard in California. Dish’s contract claims against CBS and NBC, however, will proceed in New York since the companies failed to assert those claims in California. All claims by Dish against ABC also remain in New York.
Dish filed the suit in New York District Court primarily to preempt suits by CBS, Fox, and NBC in California. In fact, the networks filed suits against Dish in Los Angeles only hours after the New York case was filed. The networks are concerned that Dish’s ad-skipping feature will result in a severe decline in advertising and believe that it violates their copyrights and licensing agreements with Dish.
In court, Dish argued that the case should be tried in New York since they filed first and the contracts with ABC and CBS required it. Dish’s New York filing sought a declaratory ruling that their AutoHop service does not violate copyright law, but the judge said Dish did not specify the copyright or licensing agreements that may have been violated. The judge also said that part of the claim belonged in California and that Dish filed primarily to avoid a case there. As a result, the judge believed Dish’s filing was improperly anticipatory and dismissed some of the claims. The judge also ordered the parties to coordinate the trials to avoid inefficiencies.
Dish likely tried to have the case litigated in New York partly because of a favorable Second Circuit ruling in Manhattan. In Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008), the court granted summary judgment for Cablevision that their proposed RS-DVR system did not infringe as reproductions or public performances. In examining the potential audience, the court found that single subscribers using a DVR did not constitute a Public Performance. Presumably, Dish thought this ruling made New York a more favorable venue to hear the copyright issues that arise from their DVR’s AutoHop capability.
In the trial, Dish will also rely on the Supreme Court’s ruling in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984). Known as the “Betamax Case,” the Supreme Court decision ruled that individual time shifting or recording complete television programs constitutes fair use. The court held that VCR manufacturers could not be held liable for infringement, and the case has been at the center of recent technological copyright issues like file sharing. While there is a clear parallel between VCRs and DVRs, Dish’s case is complicated by the AutoHop’s alteration of the broadcast since, in the original Betamax ruling, the court noted that the entire work was merely reproduced at a different time in its entirety. Dish has maintained, however, that the AutoHop does not alter the broadcast signal or delete commercials. According to Dish, the AutoHop skips commercials by fast-forwarding them, not by removing them.
On May 30, 2012, a Federal District Court in New Jersey granted summary judgment to Tetris in an infringement case against Xio Interactive, Inc. for their iPhone game “Mino.” In Tetris Holding, LLC v. Xio Interactive, Inc., the judge ruled that Xio infringed upon Tetris’ copyright and trade dress. The decision is an important gain for game developers, who are often offered little protection against infringement by game studios who produce clones of popular games for profit.
Many game developers have trouble protecting their intellectual property rights against companies who create clone games to cash in on successful designs. Clones copy the look, feel, and mechanics of a popular game for a profit, but, until recently, the original developers had trouble proving these clones crossed the line into copyright infringement. Often, developers like Xio successfully argued that they copied only functional elements of the game, such as the underlying rules or theme, and not that game’s particular expression of them. The New Jersey court ruled for Tetris, however, holding that Xio’s clone copied various parts of “Tetris” that may have been acceptable individually, but, taken together, constituted infringement.
While the holding is well argued, the court may also have ruled for Tetris after Xio openly admitted to downloading Tetris’ own iPhone game when seeking to create “Mino.” While they did not copy the actual underlying coding for Tetris’ game, Xio did not deny widespread copying of Tetris’ features and design. Additionally, Xio did not deny spending money to research copyright law and concluding they could imitate “Tetris” if they stuck to the game’s functional elements.
For this conclusion, Xio leaned heavily on the merger and scenes a faire doctrines to conclude that most of Tetris’ content could not be protected. Since only expression is copyrightable, the underlying ideas of a game are not protected. For example, while “Mario” is protected from wholesale copying, creating a game around an Italian plumber who saves a princess might not be copyright infringement. Stemming from this expression/idea theory, the doctrine of merger limits copyright protections when there are few ways of expressing a given idea. Since the expression and idea are so closely related, if the law offered standard copyright protection, the copyright holder would receive a near monopoly on the idea. To avoid these idea monopolies, the merger doctrine reduces copyright protection when an idea and its expression merge. Similarly, Scenes a Faire limits expression that is widely used and commonly associated with a given genre. Relying on these two doctrines, Xio argued that any expression found in “Tetris” is unprotectable since it is so closely related to the game’s underlying rules and ideas.
The judge disagreed, however, and held that Xio’s theory would only preclude protection for expression that is inseparable or integral to an idea. Xio’s articulation of merger and Scenes a Faire is dangerously broad and could have precluded any protection whatsoever for game developers. The court’s adoption of a narrow view ensures that developers will be protected while also preserving merger and Scenes a Faire for difficult cases where an idea and expression are almost inseparable.
Specifically, the judge found Xio copied the individual Tetris pieces, the dimensions of the playing field, the display of garbage lines, the appearance of shadow pieces, the display of the next piece, the color changes when pieces land, and the playing field automatically filling in when a player loses. The court found this expression was not inseparable from the underlying ideas of the game, and while taking a single one of these elements may not have been infringement, Xio’s wholesale replication constituted copyright infringement.
The court also held that Xio infringed on Tetris’ trade dress in creating “Mino.” Trade dress is a legal protection designed to protect consumers from purchasing goods that imitate another product. Trade dress tries to prevent knock-offs and counterfeits from being sold as the genuine product. Xio similarly sought to argue that Tetris’ trade dress was functional and did not deserve protection. The court also rejected this argument and held that many of the design choices in Tetris are not related to function.
While many have expressed concerns that the decision will stifle creativity and encourage copyright holders to pursue frivolous lawsuits, the decision will help protect copyright holders against clone producers like Xio. Given Xio’s unapologetic, wholesale reproduction of “Tetris,” there is a good chance that this decision will not harm genuinely new creative games that simply share elements or inspiration with their predecessors.
On July 6, the U.S. Court of Appeals for the District of Columbia Circuit found that the Copyright Royalty Board violates the Appointments Clause of the Constitution. The Copyright Royalty Board is a board of three judges appointed by the Librarian of Congress to set the rates paid for copyright licenses. Since the market for copyright licenses can be very unique, the Board balances a variety of considerations to ensure that licensing prices remain fair.
The Appointments Clause of the Constitution requires that “principal officers” be appointed by the President with the advice and consent of the Senate. Intercollegiate Broadcasting System, Inc. argued that the Judges of the Board exercised power as principal officers without being appointed constitutionally. The court agreed that the judges could be considered principal officers, but solved any constitutional issues by eliminating limitations on the Judges’ removal. If the Librarian of Congress can remove the Judges at will, then the Judges of the Board can be considered inferior officers and avoid violating the Appointments Clause.
While the Librarian of Congress oversees the Copyright Royalty Board to a degree, the Board enjoys a great deal of independence. The Librarian can only approve their procedural regulations, issue their ethical rules, and oversee logistics. Also, the librarian can only remove a judge for misconduct or neglect of duty. The Register, also appointed by the Librarian, can interpret copyright laws and provide written opinions to the Board on novel material questions of law and reviews any legal errors in the Board’s decisions.
Intercollegiate, a group of college radio stations that operate online, challenged the Board’s rates for educational and noncommercial webcasters. As part of their claim, Intercollegiate presented two arguments that the Copyright Royalty Board’s structure violates the Constitution’s Appointments Clause, art. II, § 2, cl. 2:
The judges are principal officers who must be appointed by the President with Senate confirmation since they exercise significant ratemaking authority without any restrictions by a superior.
If the judges are inferior officers, the Librarian of Congress is not a Head of Department in whom Congress may vest appointment power.
The court agreed with Intercollegiate’s first argument but rejected their second. After accepting the argument that the judges are primary officers, the court tried to provide a remedy that would bring the appointments in line with the constitutional requirements with as little disruption as possible.
Since the Librarian can only remove Judges from the Board for limited reasons and the Board is not subject to the supervision of a principle officer, the court agreed that the Judges can be considered principle officers who are not appointed constitutionally. In order to solve this issue, the court simply invalidated the limitations on the Librarian’s power to remove a judge. If the Librarian is a Head of Department and can remove Judges from the Board without cause, then the Judges could be considered inferior officers.
While some previous cases have stated that the Library of Congress is not an executive department and cannot be considered a Department under the Appointments Clause, the court held that the Library of Congress meets the definition of Department since it exercises a variety of executive powers and the Librarian is appointed by the President with the advice and consent of the Senate. As a result, the Librarian of Congress can be considered a Head of Department. Therefore, if the restrictions on removal are invalidated, the Librarian can appoint Copyright Royalty Judges constitutionally.
Having resolved the constitutional issues, the court remanded the case back to the Board to determine suitable copyright licensing fees.
Thanks to a New Jersey court ruling, if you’re one of the many people who check their personal email at work, you might be concerned. Forgetting to log off a public computer could be even more stressful after a jury found that failing to log off constituted tacit authorization to snoop around. The case, Marcus v. Rogers, included excerpts from the emails in question.
On June 28, a New Jersey Appellate Court affirmed a lower court’s ruling in a digital snooping case in an unpublished opinion. The court found no error in a trial judge’s refusal to grant summary judgment for the plaintiffs based on the evidence presented throughout the trial.
The defendant, a teacher, sat down in the computer lab of the school to check his email before work. When he put down his drink on the desk between two computers, he woke up the inactive computer next to him and revealed another teacher’s private email. After noticing some of the messages in the Yahoo inbox mentioned him, the defendant read and printed the emails. He then confronted the plaintiffs with the emails. The plaintiffs filed a claim under N.J.S.A. 2A:156A-27, which prohibits unauthorized access of computer files or emails.
At several points during the trial, the plaintiffs moved for summary judgment, but the trial judge refused to grant them based on the evidence. A jury eventually heard the questions of whether the defendant had “tacit authorization” to access the account and whether the defendant exceeded such authorization. All seven jurors found that the defendant had been granted tacit authorization to view the email after the plaintiff failed to log out, and six of the seven jurors found that the defendant did not exceed the tacit authorization by accessing and printing the messages.
The court also found that the various motions were properly denied since there was little evidence of any damage to the plaintiffs. All plaintiffs remained employed and were reelected to their teachers’ association positions. The appellate court said that the jury was free to discredit any testimony presented by the plaintiffs that their reputations were harmed.
The Appellate Court found that the evidence throughout the trial did not support a grant of summary judgment for the plaintiffs and refused to address the plaintiffs’ remaining objections in a written opinion. The court ruling will certainly make people check twice before getting up to leave a public computer, and although the ruling might seem like a grant to read through your friends’ email, it’s best to stay on the safe side and keep out.
You might wonder “What can I copyright?” There are several restrictions on individual works, but copyright protections for compilations of multiple individual works have been controversial, even among courts and agencies that regularly deal with copyright law and policy. Compilations have always been considered copyrightable, but recently, the requirements for a compilation to be copyrightable have been under question. Effective June 22, 2012, the U.S. Copyright Office issued a statement of policy clarifying copyrightable compilations. While it also clarifies the wider policy of the U.S. Copyright Office pertaining to compilations, the statement specifically addresses the controversy over whether sequences of exercises, such as yoga poses, are copyrightable.
The statement by the Copyright Office was issued as a result of pending litigation in a California District Court over the use of a company’s yoga methods by former instructors. The lawyers for the former instructors pointed to a previous statement by the office that yoga routines were ineligible for copyright, and the office decided to issue a complete and detailed statement of their policy toward compilations, such as yoga pose routines.
Compilations have been recognized as copyrightable in the past, but the U.S. Copyright Office issued the current policy statement to clarify a number of previous theories on compilation copyrights. The Copyright Act itself includes compilations as a copyrightable authorship. The act defines a compilation as “work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. 101. This definition extends copyright protection to some otherwise unacceptable elements if they are arranged as an original work.
Furthermore, The Supreme Court has offered some insight into this definition of compilation. In Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346 (1991), the Supreme Court concluded that not all groupings of facts or uncopyrightable material are eligible for protection as compilations. The court interpreted the statutory definition to include three requirements for a copyright registration as a compilation:
The collection and assembly of pre-existing material, facts, or data
The selection, coordination, or arrangement of those materials
The creation, by virtue of the particular selection, coordination, or arrangement , of an “original” work of authorship.
In Feist, the court decided that works needed sufficient originality or creativity to be copyrighted as compilations of otherwise ineligible materials.
In their June 22 statement, the U.S. Copyright Office further restricts the compilations eligible for protection to those works that fall under at least one of the categories listed in 17 U.S.C. 102(a). The U.S. Copyright Office will refuse registration of a work unless it falls under one of the following 102(a) categories:
Literary works
Musical works, including any accompanying words,
Dramatic works, including any accompanying music,
Pantomimes and choreographic works,
Pictorial, graphic, and other audiovisual works
Sound recordings,
Architectural works
Since section 103 of the code restricts the protection available to compilations if the pieces themselves are unlawfully used, the Copyright Office considers compilations as a subcategory also subject to the above statutory categories from section 102(a). Although these categories are explicitly qualified as not limiting, the Copyright Office’s statement concluded that this is not a grant of power to the court or the Copyright Office to create new categories. Instead, the categories are left open to extension to further categories by Congress itself. Therefore, courts are granted flexibility in determining the scope of these categories but cannot create novel ones. The U.S. Copyright Office interpreted this to extend to their power and concluded that they also cannot create new copyrightable categories.
Ultimately, the U.S. Copyright Office issued the statement to definitively state that the office will refuse registration to compilations of materials that do not fall within the statutory categories.
As applied to yoga routines specifically, the U.S. Copyright Office concluded copyright protection is available only to specific photographs, drawings, or representations of a group of yoga poses under one of the statutory categories from 17 U.S.C. 102. Under the office’s policy, a request to register a yoga pose routine will be refused since the poses themselves are public domain and exercises are not considered an acceptable category under 102. Additionally, the office refuses to register any grouping of functional physical movements under the choreography category, including sports movements, exercises, and routine motor activities.
The U.S. Copyright Office further restricts registration to compilations that are not precluded under one of the categories of unacceptable work under 17 U.S.C. 102(b). Under 102(b) copyright protection is refused for:
Ideas
Procedures
Processes
Systems
Methods of operation
Concepts
Principles
Discoveries
The U.S. Copyright Office applied this to yoga routines and concluded that such compilations are ineligible for copyright protection since they are functional systems or processes under 102(b) regardless of any other aesthetic or artistic elements or value. The only copyright protection available for registration with the office is distinct, expressive descriptions, illustrations, or instructions under one of the 102(a) categories. This makes things like yoga pose instructional videos or books copyrightable, but the routines contained therein are still ineligible for copyright protection.
The U.S. Copyright Office recognized that this relationship between the 17 U.S.C. 101 definition of compilation and the categories and restrictions in 17 U.S.C. 102 was previously overlooked. Since this distinction was previously unenforced, the office recognized that some compilations or arrangements of exercises were issued copyright registrations in error.
The U.S. Copyright Office’s statement has immediate impact on pending litigation, since a U.S. District Court in Los Angeles, CA. is currently hearing suits by Bikram Choudhury, the owner of Bikram’s Yoga College of India, to prevent former instructors from using his methods. The pending case is Bikram’s Yoga College of India L.P. v. Yoga to the People Inc., 11-cv-07998, U.S. District Court, Central District of California (Los Angeles). In the litigation, the lawyers representing Yoga to the People presented a previous statement by the U.S. Copyright Office that yoga routines were ineligible for copyright protection. As a result, the U.S. Copyright Office issued this new statement to clarify the previous, incomplete information on the issue. The new statement will most likely favor the former instructors’ ability to continue to use yoga routines under the copyright claims, but other claims in that trial may be a different story.
As a result of The U.S. Copyright Office’s new statement, copyright registration is restricted to the 102(a) categories established by Congress for both individual works and compilations.
While the current Supreme Court term will undoubtedly be remembered for the recent ruling on the Affordable Care Act, the court also issued an important ruling on Congress’ ability to reissue copyright protections for works currently in the public domain. The case, Golan v. Holder (132 S.Ct. 873), was decided in January and offers copyrights to previously unprotected foreign works. The dissent expressed concerns about the use of public domain works online and the spread of public domain knowledge across the world.
The Supreme Court’s ruling comes as a result of efforts to synchronize U.S. copyright law with a variety of international laws and agreements. In 1994, the U.S. passed a federal law to implement a global trade agreement, the Uruguay Round Agreement. The court ruled 6-2 against a constitutional challenge of the law with Justice Elena Kagan not taking part. The challenge was based largely on an argument that placing public domain works back under protection violates the first amendment free-speech rights of individuals who used the work when it was unprotected in the public domain.
The public domain includes works like books, songs, movies, and art that are no longer protected under intellectual property laws and are available for use without permission. Generally, works enter the public domain when their protection expires, but sometimes an author will place works in the public domain to make them available for use by the public. There are a variety of rules for public domain status.
The majority opinion, written by Justice Ruth Bader Ginsburg, held that there is no personal right to use, copy, or perform a work without copyright protection under the Constitution. Rejecting the challengers’ argument, the court stated that only the creator or author holds legal rights pertaining to copyrighted materials. Since there is no right to access or use materials that have lost copyright protection, there is no right to protest if any protections are restored. If a copyright is restored, the work can still be used, the court argued, but like any other copyrighted material, any use must be approved by the copyright holder.
Alternatively, the challengers argued that the Copyright Clause did not give Congress the authority to restore copyright protections to works that have entered the public domain. The court rejected this argument and stated that nothing in the Copyright Clause itself or the body of U.S. copyright law supported this reading of the Copyright Clause.
The majority also noted that Congress decided to adopt the law in question to bring U.S. copyright policies into harmony with foreign ones and, as a result, obtain increased protection for U.S. copyright holders in other countries. The majority stressed that the law merely offered foreign creators the same protections for their hard work as U.S. ones. The 1994 law guarantees protection under U.S. copyright laws to works with foreign protection for the duration of their protection in their home country. Since these works were unprotected in the U.S., they were previously available for use or copy for free. While the law allowed for a grace period, it discontinued any free use and instated protection for the foreign works. While the law would now require payment for the performance of some previously unprotected works, the court argued that many other protected works requiring payment are still routinely performed without difficulty. In addition, the majority pointed out that the previously unprotected works are not given any recompense for their past use. The copyright holders are only afforded protection against future use.
The majority opinion relied on a previous opinion also written by Justice Ginsburg, Eldred v. Ashcroft (123 S. Ct. 769). In that case, the court upheld Congress’ power to lengthen the protection of copyrights that are already in effect. The majority in Golan extended Congress’ power further by holding Congress could extend copyright protection to works that never received protection; however, they insisted that the same constitutional principles applied in both cases.
The dissenting opinion, written by Justice Stephen G. Breyer and joined by Justice Samuel A. Alito, Jr., focused on the unorthodox nature of the decision by Congress to remove work from the public domain. Although reinstating protections is not unprecedented, the dissent believed that this was reserved for rare situations. The dissent also argued that the 1994 law did not satisfy the Copyright Clause since it provided protection to work created previously and failed to encourage any new work. Justice Breyer expressed concerns that the 1994 law frustrated efforts to make a variety of public domain material available online. The law disrupts the spread of knowledge across the world and does not provide any offsetting benefit by encouraging the production of any new work. The dissent also contended that the 1994 law unfairly requires performers to hunt down the copyright holder for old works that had uncertain or unknown ownership. Finding the owners for such orphaned works, the dissent agued, is a difficult task. Justice Breyer criticized the 1994 law as removing much of the freedom available through the public domain without offering any countervailing benefit to the deprived artists and creators.
In her majority opinion, Justice Ginsberg rejected the dissent’s orphaned works argument. While this is certainly a difficulty, the majority did not believe it was fatal to the 1994 law. The hardship in finding the copyright holder should be left to Congress’ consideration. In addition, the law allowed for parties who were using the public domain works to continue their use until or unless they received a complaint from the copyright holder.
Overall, the majority claims that the 1994 law only extends existing copyright protections to foreign artists, writers, and creators. The treaty, implemented by the law, also ensures robust protection for U.S. copyright holders abroad. The dissent, however, raises legitimate concerns about the precedent that is set by the decision, especially in light of recent copyright controversies like SOPA.