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...

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.

If the beginning of 2009 is any indication, there seems to be a couple of new trends in copyright litigation.  The first trend is suits alleging copyright infringement against those who illegally access a copyright owner's website to view copyright content that they don't have permission to view.  Presumably, such illegal access violates the copyright owner's exclusive rights of display and distribution under the Copyright Act.   Examples of these claims can be seen in two cases:

• CoStar Realty Information sued Dumann Realty for copyright infringement in the U.S. District Court for the District of Maryland, alleging that the defendant’s managers illegally accessed the CoStar website by using another customer’s user information to access the site.  Through its website, CoStar provides its clients with real estate information by charging a subscription which costs hundreds of dollars a month.  In the complaint, CoStar argues that, by accessing its website illegally, Dumann’s managers engaged in the illegal distribution of CoStar’s content in violation of the Copyright Act.  Costar is demanding that Dumann pay $150,000 for each instance of infringement.

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On February 17th, in Associated Press v. All Headline News Corp., the U.S. District Court for the Southern District of New York denied defendants motion to dismiss several of AP’s claims, most significantly AP’s claim that defendant AHN was liable for “hot news” misappropriation and for violating the copyright management information protections provided under Section 1202 of the Digital Millennium Copyright Act (DMCA).  For those who have been living in a cave and are not familiar with the Associated Press (AP) -- it's an organization that --  through its employees, affiliates and subsidiaries --  engages in significant effort and expense to get access to news and to gather, report, package and transmit news stories throughout the world.  As stated in the court decision, All Headline News (AHN) scours the Internet for news stories and then either copies them or rewrites them for publication under the AHN banner.  Even though the stories are original AP content, AHN markets them as their own by, among other things, removing or altering the identification of the AP as author or copyright holder of the articles.  AP sued AHN for these activities and AHN moved to dismiss all the AP claims except the copyright infringement claim.  Although AHN prevailed in getting the trademark infringement and the Federal (but not state) unfair competition claims dismissed, the court refused to dismiss:  (1) AP’s claims of hot news misappropriation – holding that “[a] cause of action for misappropriation of hot news remains viable under New York law, and the Second Circuit has unambiguously held that it is not preempted by federal law;” and (2) AP’s claim that AHN violated Section 1202 of the DMCA by removing and/or altering copyright-management information – holding that there is no support for AHN’s position that this prohibition is limited to “the technological measures of automated systems” because no such requirement appears in the statute. More...

The House Judiciary Committee plans to abolish its Subcommittee on Courts, the Internet, and Intellectual Property.  Instead all IP issues will be taken up directly by the full committee.  The IP Subcommittee had been chaired by Rep. Howard Berman, but Berman will be giving up his chairmanship of the subcommittee to chair the House Foreign Affairs Committee.  The Judiciary Committee is chaired by John Conyers.  Rep. Lamar Smith is the ranking member.  Both are expected to continue these roles in the upcoming Congress.  With no clear heir apparent to take over the Subcommittee and the Subcommittee growing to a size almost as large as the full Committee this move seems appropriate.  Only time will tell whether IP issues get the full attention of the full committee or get pushed aside as more significant issues arise.

The President recently signed into law, S. 3325, “the Prioritizing Resources and Organization for Intellectual Property (PRO IP) Act of 2008.”  The bill had been passed bby the U.S. House by a suspension vote of 381-41.  (Those opposing included Reps. Boucher, Kucinich and Lofgren.  The vote was bipartisan, with Democrats voting 205-22 and Republicans voting 176-19.)  What was supposed to be a non-roll call vote on Saturday the 27th ended up being a roll call vote on Sunday, when a couple of members of Congress insisted on an up-and-down vote.  Being on the suspension calendar, S. 3325 needed a 2/3 vote to pass, and it did so easily.  Two days earlier the bill had passed by the Senate by voice vote. 

The final version of the bill would, among other things:More...