On July 15th, the Copyright Office published a Federal Register Notice proposing to amend Copyright Office regulations governing mandatory deposit of electronic works that are published in the United States and available only online.

Under the present regulations the Copyright Office practice has been to exempt from the deposit requirement all electronic works that are published only online.  These regulations are applicable to Section 407 of the Copyright Act, which provides that the owner of a copyright in a work published in the United States is required to deposit two complete copies of the best edition of the work with the Copyright Office for the use or disposition of the Library of Congress.  A deposit under Section 407 must be made within three months after such publication.  Failure to deposit the copies does not affect copyright in the work, but it may subject the copyright owner to fines and other monetary liability if a demand for deposit of the work is made by the Register of Copyrights and the owner fails to comply with the demand.  As a result, in practice, these works are not normally submitted to the Copyright Office unless and until a demand is made by the Office.

Section 407 should not be confused with Section 408.  Section 407 applies to all copyrighted works that are not registered with the Copyright Office.  Section 408 applies to only those works that are registered with the Copyright Office and requires any work that is registered to be deposited.  More...

As noted earlier in this blog, two weeks ago the Supreme Court denied cert in the case of Cable News Network, Inc. v. CSC Holdings, Inc. (“Cablevision”).  That order leaves in place Cablevision’s appellate victory, allowing it (for now) to continue offering its “remote DVR” service to cable customers, without payment of additional royalties for the storage and delivery of that programming.  The result was somewhat surprising to experts, and many had expected the Supreme Court to hear the case.  But more than anything else, the result signals a looming battle over secondary liability principles – principles that the plaintiffs chose not to put into play in the Cablevision case – and how the landmark Universal Pictures v. Sony (“Betamax”) case will be applied to similar digital services.

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Yesterday, thanks to the video being mentioned on sites like boingboing, slashdot and several other sites, the trailer for SIIA's new anti-piracy video, titled Don't Copy That 2 (DCT2), went viral with over 30,000 hits in one day.   It even made its way to France.   Not surprisingly, the comments are quite similar to what we saw with the original Don't Copy That Floppy video about 17 years ago... the usual rants and anti-copyright, anti-corporate invective, mixed in with some thoughtful arguments defending the rights of content creators and enjoying excerpts from the video.  Many people can't seem to figure out whether the video is a parody or serious or something in between.  I guess they'll have to wait for the actual video to be released later this summer to find out.  For those of you unfamiliar with the history of the video or why, 17 years later, we decided to make a sequel, check out my prior blog.

Yesterday, President Obama nominated Second Circuit Judge Sonia Sotomayor to replace retiring Justice David Souter.  To no one’s surprise, newspapers, blogs and TV news programs across the country immediately began scrutinizing Judge Sotomayor’s personal and professional background, including her judicial record.  This blog is no different of course, except that it focuses on intellectual property issues and therefore will examine Sotomayor’s experience exclusively from an IP standpoint.

In looking at Judge Satomayor’s background and experience in IP cases, there’s really not many cases to look back on.  While sitting on the bench on the U.S. Court of Appeals for the Second Circuit she did issue decisions in numerous trademark disputes.  But none of these cases seems particularly noteworthy.  Nor did there seem to be any overarching viewpoint that can be gleamed from a quick review of these cases.   

However, Sotomayor has issued decision in a few very significant IP cases.  In 2002, she issued a decision in one of the first rulings involving the Anti-Cybersquatting Consumer Protection Act.  Her decision helped establish the parameters of how and where claims under the ACPA could be brought by trademark owners.  The Act, which was enacted in 1999, makes it illegal for someone to register a domain name that is either a trademarked term or an individual’s name with the sole intent of selling the rights to that domain name for a profit.  One important provision in the law allows trademark owners to bring an in rem suit (which is a suit against the domain name itself, instead of against the registrant of the domain name).  The 2002 ruling in Mattel Inc. v.Barbie-Club.com (which was discussed in a prior blog issued by Sotomayor clarified that such in rem jurisdiction only applied in the judicial district where the domain name register, registry or other authority is located.More...

According to Wikipedia, “Teamwork is a joint action by two or more people or a group, in which each person contributes with different skills...to achieve common goals.” Companies are founded on teamwork but often employees get caught up in the day to day duties of their jobs and forget that they are an integral part of a team. This is especially true when employees are allowed to purchase their own software without accountability.   I am not suggesting that companies engage in team building exercises, retreats or motivational speakers to fix the problem.  What I am suggesting is that companies create their own Software Management Team.

In past blogs, I have emphasized the importance of centralizing software purchases.  Certainly this is important, but we must take a step back and look at the bigger picture.  Every company should have a Software Management Team in place.  Representatives from Information Technology, Accounting, Purchasing, Legal, Human Resources should be included.  The heads of individual business units should also be present.  Each of these departments has a stake in the game and should not be left out when managing a company’s software assets.

Once a company has designated at least one person from each of these departments to be part of the team, the team should convene and set goals and directives.  Each department will be individually responsible to the team.  Goals may vary within each company but definitely should include a software audit.  IT will likely be responsible for selection and deployment of the audit tool.  After the results are analyzed, Accounting may advise as to an appropriate budget for software purchases for each department. Department heads certainly will want to have input.  The Legal department should draft User Policies and Procedures for employees to follow.  And Human Resources will need to communicate the plan to company employees and take corrective action if necessary.More...

For the first time, a federal court has held a copyright statute unconstitutional as violating the free speech provisions of the First Amendment.  In Golan v. Holder, 2009 U.S. Dist. LEXIS 28263 (April 3, 2009) on remand from the Tenth Circuit, the district court denied the government’s motion for summary judgment and granting the plaintiffs’ motion for summary judgment.  The United States District Court for the District of Colorado held that section 514 of the Uruguay Round Agreements Act (17 U.S.C. § 104A), is unconstitutional.  (Note: I represented a group of amici supporting the constitutionality of the statute, so my views are far from neutral.  These are entirely my views, not necessarily theirs.)

How did this case get to this point?  In (very) broad strokes, the Supreme Court upheld the copyright term extension act against two constitutional challenges.  The first, heavily distilled, was essentially that “copyright protection lasts too long.”  The court rejected that argument.  The second was that overly long copyright terms squashed the plaintiffs’ first amendment rights.  The Court rejected that argument as well, but in a more nuanced fashion.  It found that term extension raised no First Amendment issues due to the copyright law’s free speech safeguards, but warned that if Congress changed copyright’s “traditional contours,” more searching review would be appropriate.  The “traditional contours of copyright” language had never before appeared in a reported case.

The scope of these “traditional contours” formed the basis for challenging restoration.  Section 104A of the copyright act restores copyright to certain works by foreign authors that had fallen into the public domain for a failure to comply with the formalities that used to exist under United States law (such as affixing a proper © on publication.  Users that had relied on the public domain status of the work had a 1-year selloff period to get rid of any restored work once they received notice of intent to enforce.  A group of plaintiffs (represented by many of the same academics that challenged term extension), charged that Congress both lacked the power to take works out of the public domain and that the removal of such works violated the First Amendment.  Initially, the district court rejected both claims, but then the case went back to the Tenth Circuit.More...

I’d like you to take a trip back with me to the early 1990’s -- a time when the high tech industry was exploding with new and innovative hardware and software in the form of business applications, games, and much more.  Unfortunately, with these new innovations came rampant copyright violations.  Adults and kids were beginning to copy software, almost without thinking about it.  Some were doing so knowingly.  While others were simply not aware that their actions were illegal.

As any good trade association would do, SIIA (then known as SPA, the Software Publishers Association) jumped in and took immediate action.  We decided to embark on a broad education campaign to enlighten the public at large – particularly focusing on school kids.  Our message was simple – to teach kids the importance of copyright protection as a means for encouraging innovation and creativity and the dangers of software piracy.

The result of our efforts was the VERY popular video called “Don’t Copy That Floppy!”  

The video was a huge success in the schools in the 90’s.  Year after year, the video – along with the copyright lesson plans – were used by thousands of teachers across the country to educate their students to respect copyright and to not copy software illegally

Now, lets fast-forward to 2009.  Floppies are long gone.  SPA is now SIIA.  And people generally know much more about copyright -- thanks in large part to the likes of Napster, YouTube and John Doe lawsuits brought by the recording industry.

But, as they say, the more things change, the more they stay the same.  The high-tech industry continues to explode with new and innovative hardware and software in the form of business applications and games.  And, just like in the 90’s, if not more so, copyright violations continue to be rampant.  In fact, today it’s not just software that’s being pirated.  It’s music, movies and, of course, digital content (like newspaper and magazine articles, books, and test materials).

Even though floppies no longer exist and the video is very outdated, it continues to be as popular as ever.  You can find groups devoted to the video on facebook, discussion groups and various websites (where you can even buy your very own "DCTF thong!).  There are close to 100 versions of the video posted on YouTube. When you search for the video on Google you get tens of thousands of hits.  Perhaps, most importantly, despite being quite outdated, Don’t Copy That Floppy continues to be shown to students throughout the country.

Even now – 17 years after it was first launched --  the Don’t Copy That Floppy video is easily the most successful and most popular copyright educational video of all time.  If you don’t believe me just ask yourself – when was the last time someone actually copied a floppy. (insert laugh track here).

So, 17 years after we first released the original Don’t Copy That Floppy, after being swamped with requests, we have decided to make a sequel, aptly named Don’t Copy That Too (DCT2).  Even though the video won't be released until next month you can check out a preview of the new video.

In a previous blog entry I mentioned the recent letter by Senate Judiciary Committee leadership sent to the White House urging the  prompt appointment of someone to fill the newly create Intellectual Property Enforcement Coordinator (often referred to as the “IP Czar”) position.  While the two most frequently mentioned candidates for the position in the blogosphere are Shira Perlmutter and Victoria Espinel, it has become clear that the list of potential candidates for the IP Czar position contains several more names and may be growing.

While the IP Czar position may be the most talked about IP position to be filled, it is certainly not the only one.  With Gary Locke now confirmed as the new Secretary of Commerce, the Obama Administration is sure to focus on appointing someone to head the Patent and Trademark Office (PTO).  Apparently, two of the candidates – Q. Todd Dickinson, who is Executive Director of the American Intellectual Property Law Association (AIPLA) and also prior head of the agency toward the end of the Clinton Administration, and James Pooley, a prestigious Silicon Valley patent attorney -- were both recently interviewed by the Obama Administration.  Whoever is chosen by the Obama Administration to head the PTO, it is likely that that person will have to be at least somewhat supportive of efforts in the Senate to reform the patent system since the new PTO Director must be confirmed by the Senate Judiciary Committee – the same committee that is pushing the much-needed patent reform legislation.

 

In addition to IP-related positions at several of the other agencies, such as USTR, State and Justice, there may also be an IP position for an American at the World Intellectual Property Organization (WIPO).  Now that Francis Gurry has taken over as the Director General of WIPO he may be bringing on board several Deputy Director Generals of his choosing.  One of these deputies will be likely be an American --  possibly the DDG for Patents, as that was the position previously held by Gurry and is often considered to be the most important of the DDG positions.  It’s also possible that whoever does not get offered the PTO Director position may be the nominee for this position.  In any event, it’s likely that this will all shake out by the end of the month.

 

Check in later in the week and the coming months for more updates on these IP positions.

On March 9th, in Romero v. California Department of Transportation, the U.S. District Court for the Central District of California dismissed plaintiff’s complaint filed against the Defendant California Department of Transportation (“Caltrans”) on the basis that defendant was immune under the Eleventh Amendment to the U.S. Constitution. 

Romero is an artist who had painted a mural in Los Angeles underpass.  The mural was desecrated by graffiti so Caltrans, which is responsible for maintaining and repairing underpasses, walls and barriers along the highway, painted over the mural with grey paint.  Romero sued, claiming that Caltrans violated the Visual Rights Act of 1990 (“VARA”) (codified in section 106A of the Copyright Act by not notifying him before painting over the mural. 

Romero argued that “Caltrans had waived its sovereign immunity by accepting federal funds to build and maintain California’s highways.”  The court disagreed, holding that “one way for a state to waive its immunity is to accept federal funds … [h]owever, mere receipt of federal funds cannot establish that a State has consented to suit in federal court.”  The court went on to say that Romero “failed to point the Court to any provision in the relevant funding statute that manifests a clear intent to condition the State’s participation on its consent to waive its Eleventh Amendment immunity.” 

The court then turned its attention to the Copyright Remedies Clarification Act (CRCA), finding that --consistent with the Supreme Court decision in Florida Prepaid v. College Savings Bank, and the Fifth Circuit decision in Chavez v. Arte Publico  -- “although Congress expressed its unequivocal intent to abrogate the Eleventh Amendment enacting the CRCA, Congress did not have authority to exercise those powers under section 5 of the Fourteenth Amendment."

As reported previously in this blog, late last year President Bush signed into law, S. 3325, “the Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act of 2008.”  The bill creates an IP Enforcement Coordinator (IPEC) within the Executive Office of the President.  The IPEC – which is often referred to as the “IP Czar” – is to be appointed by the President and confirmed by the Senate. 

Last week, Senate Judiciary Chairman Patrick Leahy, ranking member Arlen Specter, and Senators Evan Bayh, and George Voinovich – all whom were strong advocates for the PRO-IP bill – sent a letter to President Obama urging him to promptly nominate an IP enforcement coordinator.  Earlier this year the U.S. Chamber of Commerce had drafted a similar letter urging that the IP Czar be appointed within the first 100 days of the Obama Administration.

Late last year and early this year, as is typical in DC, there were rumors swirling about several potential candidates for the position. After two months of mostly silence, those winds seemed to have settled on just a few, with the apparent leading candidates being Victoria Espinel, former assistant trade representative for intellectual property at the office of the U.S. Trade Representative and law professor at George Mason School of Law in Virginia, and Shira Perlmutter, formerly head of the office of Policy and International Affairs at the U.S. Copyright Office and law professor at The Catholic University of America in Washington, D.C.

Under the PRO-IP Bill, whomever the new IPEC is will be tasked with drafting a joint strategic plan for combating infringement and counterfeiting, including cooperation with foreign government agencies.  Once the IPEC is confirmed the National Intellectual Property Law Enforcement Coordination Council (NIPLECC) would be abolished and replaced with another interagency advisory committee under the control of the IPEC.