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Twist to Claiming Copyright Protection

Posted on October 27, 2021October 27, 2021 by Delain Law Office

Valancourt Books, LLC v. Perlmutter et al.

Well … it seems US District Judge Amy Berman Jackson, sitting in the US District Court for the District of Columbia (that would be in Washington DC) has added a new twist to the claiming of copyright protection. You have to register the work with the US Copyright Office to include notice of copyright protection in the work.

This could have … ahem … interesting fallout for things like websites and blogs.

You can read the opinion here.

Brief Background

Valencourt Books, LLC (“Valencourt”) is a very small (as in home-based), independent publisher that publishes rare, neglected, or out-of-print fictional works on demand. The works that Valencourt prints bear a copyright notice, but Valencourt does not register any copyright in the works it publishes with the US Copyright Office. Valencourt put copyright notice in its published books, but did not register that copyright and did not provide the Copyright Office with its requisite two copies. Under such circumstances, the Copyright Office takes the view that the claimant is claiming the protection of federal law without complying with the requirements of federal law. They can send out a demand letter and issue fines ranging from $250 per unregistered-but-claimed work to $2500 per unregistered-but-claimed work.

The Copyright Office issued its demand.

Valencourt replied that the requirement for copies runs afoul of the Takings Clause of the Fifth Amendment to the US Constitution and that no, it would not provide the requisite two copies to the Copyright Office because doing so was an undue burden on a very small business.

The Copyright Office, pre-litigation, countered this complaint by offering to accept electronic copies of the works, even though the works had been published (ordinarily, the Copyright Office requires printed copies to be provided for published works). However, Valencourt rejected the offer because they didn’t want any special treatment from the Copyright Office … the settlement proposed by the Copyright Office is an exception to the requirement and does not change the Office’s requirement for physical copies from other small publishers … and because the works were not already accessible in electronic format and getting them into that format would be an undue burden on Valencourt’s owners and employees.

Valencourt sued the US Copyright Office (Shira Perlmutter is the Register of Copyrights) claiming that the deposit requirement violates the First and Fifth Amendments to the Constitution. The Copyright Office countered with the claim that Valencourt was claiming copyright protection without complying with the requirements for that protection.

Valencourt alleges that the Copyright Office’s deposit requirement is an unconstitutional taking of private property because “…the government is demanding copies of publishers’ works for its own use without providing compensation to the affected parties.” Compl ¶ 1; Pl.’ Mom. at 18. Judge Jackson didn’t buy it. Citing Ruckelshaus v. Monsanto Co., 467 US 986, 1007 (1984), she explains that SCOTUS precedent establishes that “…a statute that confers a “benefit” [like copyright protection – comment added] on a citizen may condition the receipt of that benefit on the submission of private property in exchange without running afoul of the Takings Clause.” Slip Op. at 11. So … the Copyright Office can indeed “take” the two best copies of the work to be copyrighted in exchange for copyright protection without violating the Takings Clause. This is no surprise; deposits of copyrighted materials have been required since the first US copyright law came into existence in the 1790s.

Deposit Requirement and Free Speech

This section of the case contains no surprises. The deposit requirement is not subject to strict scrutiny because it is entirely … ENTIRELY … content-neutral. The deposit requirement does not attempt to limit speech; the requirement is the same for any work being registered regardless of the content of that work. Also, the burden imposed upon the copyright claimant by the deposit requirement is hardly unreasonable in relation to the benefit the requirement confers on the public.

Copyright, Registration, and Notice

The interesting part of the case is the issue of the copyright notice in publications that are not registered with the Office. The Court hides this in its discussion of the Takings Clause, but it’s important.

Valencourt includes copyright notice in its books and thus (1) informs the public that the works are copyrighted, (2) deters potential infringers, and (3) removes any innocent infringement defense. The claiming of copyright is just as voluntary as is the registration for copyright, and, since the enforcement of copyright protection is limited to those who have registered their works (see 17 USC 411), copyright in unregistered works cannot be enforced. Because plaintiff does not volunteer to register copyright in the works and certainly does not volunteer to send copies of the works to the Copyright Office, Plaintiff does not get to claim, by including notice of copyright in the published works, the benefits conferred by its notice of copyright.

This is huge. Just think of all those websites and blogs out there that have a copyright notice on them that are unregistered. Suddenly, it’s clear that the existence of the notice can trigger the demand letter from the Copyright Office and the subsequent fines.

Wow.

Court-Mandated COVID-19 Vaccination Could Cause Constitutional Chaos

Posted on October 5, 2021October 5, 2021 by Delain Law Office

I got an email today from the New York State Bar Association with this text therein:

“Chief Judge Janet DiFiore, during her coronavirus update today, responded to the pending lawsuits from several unions challenging the state court system’s mandatory vaccination requirement.

“…[W]e look forward to demonstrating that the vaccine requirement is fully within our legal powers as a responsible, appropriate and necessary response to the serious threat that COVID-19 poses to the health and safety of our workforce, and the public we serve,” said DiFiore. “And while we hope that the legal challenges will be resolved shortly, it is important for everyone to know and understand that the employees represented by the unions that have secured temporary relief at this point will continue to undergo COVID testing on a weekly basis, so as to ensure a safe and healthy environment to the best of our ability.”

“DiFiore said she was encouraged by the fact that 97% of court staff who are not parties to the lawsuits have submitted proof of vaccination or a request for a medical or religious exemption. She said “almost all” of the state’s judges have submitted proof of vaccination or an exemption request. The court system’s vaccination mandate went into effect last Monday.

“Kudos to every single one of them for setting the example for our entire branch of government and demonstrating their commitment and leadership in doing what is right and responsible to safeguard the health and safety of the folks they work with, and the many thousands of court users and visitors who enter our buildings,” said DiFiore.

“DiFiore also had a message for the “small minority” of employees who have refused the vaccination.

“[W]e understand and respect that they may have different views on this issue, but I want to make it absolutely clear that we have exhaustively studied, examined and discussed the vaccination question, and the bottom line is that all of the data and every factor we look at – whether it relates to science and public health or law and ethics – points to the same conclusion: vaccination of our judges and nonjudicial workforce is the responsible, proper and necessary course of action for our institution,” said DiFiore.”

This may get very interesting very quickly. The issue is that the New York State court system is a state agency; the courts are not a private enterprise. This state agency is requiring its employees to get a medicine pumped into their bodies … and it’s a medicine that not all of them want to receive. Thus, the problem of government interference with private matters … like healthcare … can easily come into play here. That interference can quickly rise to a constitutional issue under several of the Bill of Rights amendments. Court employees do, after all, have rights.

But just how far do our rights extend? Do we actually have the right to choose not to get vaccinated in the face of a world pandemic?

Let me point out that there are ample examples of mandated vaccination in the annals of US history, going all the way back to George Washington’s mandate to the people of the newly formed United States of America to get inoculated against smallpox (and that inoculation did not get nearly the testing that even the COVID19 mRNA vaccines got because the science to do the testing was not yet available). The mandates continue today through the school-based inoculation requirements (kids have to be vaccinated against several childhood diseases to attend public school). We dutifully get our flu shots each year (I’ve gotten mine for the 2021-22 flu season already).

Through mandatory vaccination, we have dramatically lessened the impact of several former scourge diseases. Smallpox lives only in a few vials in a couple of biohazard level 4 labs; measles, diphtheria, tetanus, mumps, rubella, and all the rest of the legion of childhood diseases against which we now vaccinate no longer kill or maim the vast numbers they used to do. Influenza still exists … and still kills … because that bug mutates very very quickly and the flu vaccine is an annual crap shoot as to which strains will be most active in the upcoming flu season.

Now we come to COVID19. This is a new bug. We haven’t seen it before 2019, and it took the world by storm. Millions of people have gotten sick; many have died; many have been left with long-term effects; many have recovered completely. Many are now vaccinated with a vaccine that appeared to be very quickly developed and approved … it took the COVID shots about ten months to wend their way through the Food & Drug Administration’s (FDA) minefield of approval processing where it takes most new drugs several years. The patent world is abuzz with new COVID-related inventions; the trademark world is delightedly registering COVID19 drug names by the boatload.

The speed of that FDA approval process seems to be the problem for those many who have not gotten their COVID vaccines. And I get it. The theory is that this is a new drug … heck, an mRNA vaccine is a whole new type of drug … that we’re injecting into our bodies with little testing. Okay. That can be seen as a valid argument in the face of things like the thalidomide disaster in the 1950s and 1960s.

But the COVID vaccine is not thalidomide; mRNA is, in fact, a chemical manufactured by our bodies; it’s equivalent to the cars that bring cargo to a train; mRNA brings the amino acids that build our proteins to the protein manufacturing line (the “m” stands for “messenger”). The minimal risk an individual faces of developing a serious side effect from having an mRNA vaccine injected pales when compared to the threat to public health that unvaccinated people present. COVID is a proven killer; why would we not, en masse, take every conceivable precaution against transmitting and catching the disease? Are we really so self-absorbed that we cannot see our way clear to take steps to avoid infecting our families, friends and neighbors who may be especially susceptible to COVID effects?

As I have pointed out, there is a long history of public-health vaccination mandates regarding the containment of the spread of disease. COVID is just another example of a public-health vaccination mandate.

I’ve had my COVID shots. I felt rotten for a couple of days after the second shot. I have not yet gotten a booster because I am not yet eligible for a booster. That I am fully vaccinated is not a political statement; it is a public health statement. I do not want to infect others, and I do not want to be infected myself. The COVID19 virus does not care what side of the aisle you espouse; it infects Republicans with the same enthusiasm with which it infects Democrats.

It’s entirely your choice whether or not to follow the mandate and vaccinate yourself and your loved ones, but as the parent of an immunocompromised and very productive member of society, I will have something to say to you if my kid comes down with COVID and dies (and no, I do not exaggerate; my pulmonary-compromised kid is more likely than are many to go into COVID-related ARDS and leave the planet; she already has an ARDS history) because you decided to exercise your “right” to be a shedding germ factory.

The “right” is there for you to exercise control over what goes into your body. Your “right,” however, ends where mine begins. And I have the right to remain healthy, especially since we now have an effective vaccine. If you want to avoid vaccination, fine; wear your mask, keep your social distance, wash your hands very very often, and don’t infect me and mine.

The US Copyright Office Can Be Reasonable…

Posted on August 18, 2021August 18, 2021 by Delain Law Office

The US Copyright Office spent several days … 12-17 August 2021 … updating their servers. During that time no one could get onto the eCO servers to register a new copyright or to maintain a currently registered copyright.

They’re doing something about that. The Register has issued an accommodation for anyone who tried to access the eCO system during the outage. Click here for more information on how to access the accommodation.

Upcoming Copyright Office Event on 2/17/2021 to Honor RBG

Posted on February 16, 2021February 16, 2021 by Delain Law Office

This should be well worth attending. Sadly, I will miss the live stream, but I look forward to the YouTube event.

From the Copyright Office’s blog post:

“To celebrate Justice Ginsburg’s impact on copyright, join the Copyright Office on February 17 from 1:00 to 2:30 p.m. eastern time for “Copyright Office Presents: The Enduring Legacy of Justice Ruth Bader Ginsburg.” This virtual event will feature a conversation between Paul Goldstein of Stanford Law School and Jane Ginsburg of Columbia Law School on Justice Ginsburg’s jurisprudence. Cohen, West, and Wang will also discuss how Justice Ginsburg inspired their own copyright-protected works. While the advanced registration to attend the Zoom event has closed, the Copyright Office will also live stream the event on its YouTube Channel. No registration is required to view the live stream. If you miss the event, the video will later be available on the Office’s YouTube Channel.”

A Touch of the Public Domain

Posted on January 29, 2021 by Delain Law Office

On 1 January 2021, the works that were published and protected by copyright in 1925 entered the public domain. These works are now free for the public to use as the public wishes to use them.

The US Copyright Office’s blog says, “The critical role of the public domain in human culture is easily illustrated by the fact that so many new works are based on public domain works, such as the works of William Shakespeare, Jane Austen, Bram Stoker, Louisa May Alcott, the Brontë sisters, and Sir Arthur Conan Doyle.”

Copyright is about protecting not an idea (we are not, after all, the Thought Police), but the EXPRESSION of an idea. For example, there are piles of ways for star-crossed lovers to get themselves into trouble; “Romeo and Juliet” expresses one way; “West Side Story” expresses another way. The idea … star-crossed lovers … is the same, but Romeo never sang “Maria … I just met a girl named Maria …” and Maria never told her man “Deny thy father and refuse thy name!” The two expressions of the star-crossed lovers theme are very different.

The public domain Shakespeare work inspires the musical. The musical is protected by copyright to the extent that the work is actually original expression of its authors and not taken from Shakespeare.

Oh, The Places You Shouldn’t Boldly Go!

Posted on December 30, 2020December 30, 2020 by Delain Law Office

Dr. Seuss sued Star Trek because Dr. Seuss wrote a book entitled “Oh, The Places You’ll Go!” It’s a popular graduation gift. Star Trek did what they called a “parody” of that book, calling it “Oh, The Places You’ll Boldly Go!” and using Star Trek characters in a Seuss-like literary environment. The drawings evoke Seuss; the text evokes Seuss; certainly the title evokes Seuss. The Spock character’s pointed ears and the uniforms evoke Star Trek.

The US District Court where the trial was held found in favor of Star Trek; the parody was indeed a parody. However, it seems the 9th Circuit, which is the intermediate court between the District Courts and SCOTUS in several western states, disagrees. They held, on review of the evidence, that “Boldly” is not transformative enough for a parody and thus it is infringement, not “fair use.”

I’ve said many times that fair use is the murkiest of all murky areas of law. When is it ok to use others’ work in your own? Well, you can license the use of the original work; getting permission to use the original is the clearest path through the fair-use jungle. Or you can roll the dice and hope the courts agree with you. That’s not always the best option.

To determine fair use, the court weighs four factors, each on a sliding scale:

The purpose and character of the use, including whether it is of a commercial nature or for nonprofit educational purposes

Here, the work is of a commercial nature, definitely written for profit. That leans AWAY from fair use.

The nature of the copyrighted work

Is it fiction or fact? Facts can’t be protected by copyright, fiction is highly protectable. Clearly, this is a work of fiction. That the original work is highly protectable leans AWAY from fair use.

The amount of the portion used in relation to the copyrighted work as a whole

Well, Star Trek clearly did a take-off on the title, and it clearly did a take-off on Theodor Seuss Geisel’s writing and drawing styles. This new work invokes the original. The actual text is not the same, but the tone and feel sure are. That one also leans away from fair use.

Had Star Trek used just the title without the drawings or text in the style of Seuss, that may have been ok; had they used the title and either the writing OR the drawing style, that would have been less likely to be ok. But they did all three. The Star Trek work clearly takes off on the Seuss work. That was not ok.

The effect of the use upon the potential market for or value of the copyrighted work

Seuss’ book is a popular gift for graduations. Lots of high school and college graduates have a dusty copy sitting on their shelves because some aunt gave it to them when the kids collected their diplomas. Now, though, fewer kids have the original sitting on their shelves; its corner on the market has been eroded by the Star Trek version.

Seuss claims the Star Trek work cut into the market for Seuss’ book; in other words, the new work competes rather than complements. Definitely, that leans AWAY from fair use.

Muddy the waters

When that weigh-in is complete, things get really muddled. The court then takes the totality of the circumstances surrounding each of the works and adds in the weight that individual judge chooses to give each of the four factors and determines whether the new work infringes the old.

Basically, a fair use determination can spin on the whim of the federal judiciary. And therein, my friends, lies the silt floating up from the bottom of the basin of fair use jurisprudence.

Seuss-Star Trek Mash-Up Crashes and Burns at Ninth Circuit

Sojourner Truth and Copyright Innovation

Posted on December 9, 2020 by Delain Law Office

Sojourner Truth Portrait — Sojourner Truth

I refer you to the Copyright Office’s blog, on which is an interesting post about Sojourner Truth’s contribution to copyright law.

Interesting stuff! I never knew this about Sojourner Truth. I knew she was a powerhouse in history, especially black history, I knew she was enslaved as a child and young adult, I knew she was a strong advocate against slavery. I never, ever knew she was an innovator in copyright law.

Some Inventions Are Turkeys

Posted on November 19, 2020November 19, 2020 by Delain Law Office

In the spirit of Thanksgiving, I thought I’d share some of my favorite turkey patents.

US Patent 10,363,772 is entitled “Turkey Fan Favorite.” It teaches “[a] display device for spreading a turkey’s tail feathers in a fan-like display is provided. The device consists of a U-shape with 3 rubber quill clips, 1 located at the top, 1 located on one end of the device and 1 located on remaining end of the device. The rubber clips allow the quills in the middle of the fan as well as the quills near the base on opposite sides to be used to hold the turkey fan in a set position. When installed the device is invisible to view. This device is a multipurpose toot and can be used for taxidermy use in preserving the turkey fan. This device may be used as a mounting mechanism for wall display. A mounting mechanism may further be provided for the mounting of an object to the turkey fan such as the beard, or a pole for the use of the fan as a decoy in the field or a mount on the wall or shelf.” I guess you can show off the feathers of the bird on the table … hmm.

US Patent D861,828 teaches a design for a Turkey Hammock. I guess the bird needs to put its feet up after a long Thanksgiving meal.

US Patent D882,034 teaches a design for a Turkey Decoy. The turkey must be a bit desperate…

And on that note, I wish each of you a Happy Thanksgiving!

Remember, if these inventions are patentable, yours very well might be patentable also!

Inventions are Either Dogs or Cats

Posted on October 7, 2020 by Delain Law Office

Some inventions actually are dogs. You’ve met the dog I’m talking about. It’s that big, friendly, in-your-face, social charmer who wants — nay, needs — to be the center of attention. They wear their hearts on their shoulders (dogs don’t generally wear sleeves) and you know exactly what this dog … of whatever breed … is thinking.

A dog-invention is one that, once introduced, you can reverse engineer. You know what it’s made of, and you know what it does. It becomes clear from tinkering with the invention just exactly how the invention works.

A dog-invention is something you need a patent to protect. You cannot protect a dog-invention in any other way. For a patent to issue, the best mode of making and using the invention must be disclosed at the time of filing the application for patent. No problem! The dog-invention’s best mode is disclosed when you publish the dog-invention to the world. You can’t hide it; its very nature is to be a big, friendly, in-your-face invention.

Some inventions are cats. You’ve met the cat I’m talking about. It’s that shy, skittish kitty that hides from the world and watches with distrustful eyes as you try to tease it out of its spot. The very last thing it wants in the world is to be the center of attention. It is the diametric opposite of a friendly dog. It is secretive.

A cat-invention can also be protected by patent, but we need to remember that a patent is an exercise in disclosure, which is the diametric opposite of this cat-invention’s nature; for a patent to issue, the best mode of making and using the invention must be disclosed in the application … which is then published to the public. We also need to remember that a patent’s enforceability is finite; it expires, at most, 20 years from the date you file the application. This cat-invention might be happier, and its profitability could potentially last much longer, if you simply keep it as a trade secret and let it do what cat-inventions do — hide from the world, watching with distrustful eyes as others try to tease it out.

ATTRIBUTION: The dog photo is a free download from pexels.com (since I don’t have a dog); the original filename is pexels-pixabay-97082.jpg. The cat is a photo of of my class-clown-cat, Linus.

The Day The Music Died

Posted on September 19, 2020September 24, 2020 by Delain Law Office

US Supreme Court Associate Justice Ruth Bader Ginsburg (3/15/1933-9/18/2020), the unlikely rock star and cultural icon known affectionately as “Notorious RBG,” who loved her family, loved the law, loved the opera, and loved her country (not necessarily in that order), left this earth yesterday. She had just reached the halfway point between 87 and 88.

Words cannot express how her passing saddens me. I never met Justice Ginsburg (though I did see her on the SCOTUS bench on the day I was admitted to practice before SCOTUS), but I certainly knew her. I knew her through the humanity reflected in her decisions. I knew her through her fast friendship with her SCOTUS foil Antonin Scalia. I knew her through the many quips and quotes that trickled down from her lips to the public’s lives. I knew her for the gargantuan impact this tiny woman had on the law and on the world. I miss her. I join the world in praying for her and her family.

One of my cats is named Ginsburg, after her; that cat’s littermate is named after Justice Scalia. When they came into my life two years ago, I thought it would be fun to commemorate that unlikely friendship with these kittens’ names.

I can’t remember the Notorious RBG in any better way than in her own words. CBS News did a good interview with her when she was only 83 years old. Here’s the segment of that interview that is available on YouTube.

Rest in peace, Justice Ginsburg. If anyone deserves a rest, you do. You leave us with one hell of a great legacy.