Mar 30 2014

DMCA 512 may have some bite for copyright owners - but very small


  Section 512 and the interpretation courts have given it have shifted too much of the burden to the rights owners. Every little step back to a better balance is welcome. In that spirit, the court’s decision in   Columbia Pictures Industries, Inc. v. Fung, 710 F3d. 1020 (9th Cir.  2013) is welcome.


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Mar 22 2014

"Transformative fair use" compared to "transformative purpose infringement", some cases get this totally wrong including in Google Books

In Acuff v. Rose, 510 U.S. 569, 114 S. Ct. 1164 (1994), the Supreme Court set out the rule that transformative use (copying) of a small part of a work could be fair use even if done for commercial purposes (the case involved a parody). Since then, the idea of transformative fair use has been the most important issue in contested fair use cases. It is clear that the Court was referring to copying of part of a work and using it to create a new work of expression. This is different in concept and kind from the decisions that morph the concept into one that protects comprehensive copying so long as the copies are used for a different purpose than the author's original purpose for the work. Properly understood, this comprehensive copying is simply "infringement".

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Mar 12 2014

WNET was wrong and should be reversed

A system captures broadcast signals and makes them available to potentially millions of the system's subscribers without a license from the copyright owners; is the system engaging in a public performance of the copyrighted works involved? The obvious answer is yes. But a divided (2-1) panel of the Second Circuit held that the capture and retransmission did not constitute a "public" performance. Go figure. If transmission to a potential audience of millions is not distribution to the public, what is? Continue Reading
Aug 8 2011

Trademarks used functionally and not as a mark

Trademark law gives the mark owner a right to protect against conduct that is likely to create confusion about sources or sponsorship of a product or service. But trademark law does not give the mark owner control over all use of the image, word, or phrase that constitutes its mark. Volumes of reported cases and billions of dollars of litigation have gone into drawing the distinction and the amounts have increased in the digital information age. There are many doctrines used. Now, apparently, the Ninth Circuit has reincarnated another – functional use of a mark.

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Jan 30 2011

Ninth Circuit rejects Chamberlain places DMCA back on a proper track

In 2004, in the Chamberlain case, the Federal Circuit unaccountably grafted a non-statutory element on the access control provisions of the DMCA, requiring that there be some connection to preventing infringement for there to be protection against circumvention of a technology control on access to a copyrighted work. The Ninth Circuit, in the MDY case, expressly rejects Chamberlain, returning the statute to its intended purpose – creating a right to protect controls on access to works in digital contexts.

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Jan 25 2011

Ninth Circuit in Vernor got first sale doctrine right

The Ninth Circuit revisited the ownership question involved in copyright first sale in Vernor v. Autodesk, Inc., 2010 WL 3516435 (9th Cir. 2010) and got it right, adopting a variation of the Federal Circuit’s DSC decision and the approach taken by all other Circuit Courts that have looked at the question.  The terms of the contract control whether the transferee becomes the owner of the copy.

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Apr 23 2010

Has the worm turned on transformative use?


A while ago, I commented about the misreading that courts were doing with respect to fair use, especially with respect to so-called “transformative use.” Maybe they heard, but at least they have begun to figure it out. The worm may have begun to turn.

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Apr 18 2010

Indirect Trademark Liability - who takes the risk?


Online aggregators, site operators and search engines are in a seemingly endless conflict with content providers and rights owners. This extends to trademark law. The confrontation relates to deciding what obligations aggregators (and others) have to police and prevent advertising and sale of counterfeit products or services through their systems. A recent Second Circuit case leaves one pondering the answer where at least some of the advertised products or services from third parties are counterfeits.

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Nov 8 2009

The Limits of First Sale Doctrine

One clear message of intellectual property law is that mere possession, or even ownership, of a product or a copy does not vitiate the rights-owner’s interest in and right to control use or disposition of the product or copy. First sale doctrine carves out a very limited exception to this.

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Oct 24 2009

Posting as Implied License


Merely posting a work online does not relinquish all rights. As in other environments, merely placing property in public does not release property rights. The Internet context, however, may indicate that some actions with respect to the work are implicitly permitted. 

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Sep 1 2009

Should Google be a regulated utility under its "Settlement"?


The Google Book Settlement (GBS) would give Google unprecedented power over hundreds of thousands of copyright owners and control of an asset that may become essential to 1) book publishers, 2) book authors, and 3) any entity that desires to operate a search or archive function regarding published books. The Settlement should not be approved unless it ensures all competitors and others access and fairly protects the copyright owners who were not represented at the “settlement” discussions and whose property is being stolen.

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Aug 25 2009

Google Book "Settlement" is Bad for Law, Copyright owners and Users

Many have asked my opinion of the Google Settlement. I join the broad opposition to the “settlement”: This is a bad deal for everyone other than for Google (which will become an entrenched monopoly). It is also bad precedent, taking legislative prerogatives, the property rights of millions of people, and important commercial choices, and placing them in the hands of a few lawyers, a few companies, non-representative organizations, and a judge.

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Aug 15 2009

Content Protection and Copyright

Amid the information explosion brought on by digital technology, some important, content industry business models are failing. Indeed, we are in the midst of what may be a failure of some of business models of content industries such the traditional newspaper industry; significant economic stress is also being placed on other content-oriented industries.

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May 13 2009

"Good faith" in DMCA take-down notice should mean simple honesty.

DMCA Section 512 gives copyright owners an efficient means of responding to online infringements and provides a safe harbor protection for online providers.  But some courts suggest that “good faith” in sending a take-down notice may require the copyright owner to evaluate whether the online copying is fair use, these decisions undermine the notice and take down system.

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Sep 6 2008

Copyright content providers lose control of a DVR market to cable companies.

Who should derive revenue from remote DVR systems?  According to a panel of the Second Circuit Court of Appeals Cartoons case, the revenue should not go to the content providers.  This decision, grounded in three very narrow interpretations of the Copyright Act, works a shift of potentially significant revenue away from content providers.  Hopefully, it will be challenged and reversed on rehearing.

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Aug 29 2008

Some courts are getting fair use analyses about transformative works wrong

Some courts mistakenly view transformative use as merely using a work in a way different from that which the copyright owner currently does.  The true meaning is that transformative use is a use that transforms portions of the original into an entirely new work that does not simply supersede the original in a market or use to which the original may not yet have been applied.

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Aug 11 2008

When does distribution of a copy occur on the Internet?

The answer should be when a copy is placed (distributed) into an environment from which third parties are invited and expected to acquire their own copies by downloading or otherwise.

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Jul 13 2008

The Supreme Court walked up to the edge, but left first sale and exhaustion doctrine intact.

The Supreme Court in Quanta Computer, Inc. v. LG Electronics, Inc., 2008 WL 2329719, 86 USPQ2d 1673 (US 2008)  confirmed both the importance of patent exhaustion as a doctrine and the appropriate limitations of that doctrine – the doctrine does not apply to transactions that are conditional in nature.  That means, simply, that the terms of a contract determine when or if exhaustion or first sale occurs.  That is how it should be.

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Dec 31 2007

Does the future of patent law portend compulsory licensing by judicial fiat?

I hope not, but that is one risk created by the Supreme Court’s decision in the Ebay case and by the actions of some courts who have denied permanent injunctions in successful infringement cases.  But the fact that a permanent injunction does not issue after a judgment of infringement does not mean that the infringer (by losing the case) obtains a right to use the patent owner’s property in the future.  It simply means that the court declined to add the coercive force of an injunction to the statutory right to exclude as to future infringing conduct.

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Dec 26 2007

Are numbers protected expression?

No.  At least not according to three judges of the Second Circuit.  And as a result, one company’s valuable market estimates expressed in numerical form were subject to comprehensive misappropriation by a competitor.  But the court allowing this result forgot that numbers can be as expressive as words and sometimes are much more communicative.

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Nov 22 2007

First sale limits at risk - they should not be

The Supreme Court has accepted cert in the LG Electronics case.  The issue involves patent exhaustion doctrine.  This is an opportunity for the Court to affirm the right of a patent (or copyright) property owner to control the terms on which its invention or work is provided to the public – by license or sale.  But unless the rights-owner community pitches in, the Court may get it wrong.

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Sep 24 2007

Standards Setting Organizations: deference to the market

Many industries function under technological standards that shape the technology, the products, and the focus of competition. But standards-setting groups have become competition focuses themselves, such as in the debate about “open document” vs “open xml” as a standard. The standards groups should follow a simple premise: standards-setting organizations should not dictate among competing technologies vying for market dominance.


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Jul 8 2007

Market effect analysis in fair use must consider potential markets

The Ninth Circuit failed to acknowledge the relevance of obvious future markets when it ruled in favor of Google in Perfect 10, Inc. v., Inc.  In doing so, it effectively awarded to Google and others a market that that rightfully belongs to the copyright owner.


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May 31 2006

Nimmer is new dean of U. of Houston

I have accepted the interim deanship at the University of Houston Law Center. I am eleated at the opportunity this creates. With the help of others, this will be an exciting time. I attach my first thoughts.

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May 16 2006

Patents are like other property

The U.S. Supreme Court rendered its much-anticipated ruling in Ebay v. Merchexchange and the U.S. remains safe for property rights, although more complex. The Court held that injunctions are an appropriate remedy for infringing a patent, but not in all cases.

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Feb 12 2006

Can I download it to try out the music?

No, not unless the copyright owner permitted or invited that. The idea that downloading a file is permitted because it is so easy on Internet is simply wrong. Downloading is copying and infringement. Indeed, it can have massive adverse effects on copyright owners.

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Dec 2 2005

Inducing copyright infringement

The Supreme Court in Grokster established an action for "inducing" copyright infringement. This changes the context of debate between "rights enforcers" and "rights restrictors" and benefits protection of property rights. But the rule raises questions about its scope and how it affects other relationships.

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Oct 3 2005

Google lawsuit begins; fair use

The inevitable lawsuit has been filed against Google. The Authors' Guild and others assert in the complaint that the Google Print Project infringes their copyrights. That lawsuit should succeed. As portrayed in the statements of the company, the Google project broadly infringes the copyrights of numerous companies and individuals for Google's own commercial purposes.

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Sep 6 2005

Rights and restrictions in copyright: debate continues

In a world that enables rapid and widespread duplication and transfer of information, law needs to adjust to preserve and protect social values and legal rights. All of those that provide incentives for the creative works that have contributed to the explosion of works that drives the information age. That being said, there are a large number of people who apparently believe that ownership of a copyright should mean relatively little when compared to the desire to allow virtually anyone to copy and distribute a work with or without permission if that is made possible by new technology. These people are arguing for immediate gratification at a sacrifice of long-term social benefits.

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Sep 6 2005

Shrink-wrap license not preempted by fair use

In Davidson & Associates v. Internet Gateway, the Court of Appeals held that a shrinkwrap license that barred reverse engineering was not preempted by federal fair use law. The court thus joined the chorus of courts that enforce licenses for software and data, regardless of whether the terms of those licenses match limitations in copyright law. These courts make the distinction between property law on one hand, and contract law on the other. While reverse engineering is sometimes protected by a defense to a claim copyright infringement, the possible existence of that defense to a claim of infringement of a property right does not preclude an agreement to not reverse engineer.

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