In Copyright Infringement, Availability Does Not Equal Distribution

In a recent court ruling, a judge said that the Recording Industry Association of America could not sue for copyright infringement simply because someone gave others access to a computer directory. There must be evidence that someone actually downloaded copyrighted material. However, in the same case, the judge ruled that the RIAA could have its investigators download songs from such a directory, and that would be proof of infringement.

The lesson to take is this: if you find your copyrighted material available for download someplace like Amazon.com, download a copy of your own materials as proof that it was made available. Then you can happily make your case, assuming that you've registered copyright.

Newspapers Using Blogs Without Permission?

Generally you might think that bloggers often take copyrighted material and reproduce them without permission online. But a UK blogger found that the Sunday Mail reproduced one of his entries without even asking for permission. The author sent a letter to the paper:

Not having worked for the Mail on Sunday before, and a stated wordage figure proving elusive, I pluck a conservative amount out of the air and stick it on the bottom of an invoice, which goes off via the kind auspices of the G.P.O. To the Mail on Sunday’s credit, they pay me my two hundred quid quicker than most biggish companies would, and John Wellington sends me his (what I am sure are sincere) apologies.

Good for him - but one graph of the reply from the paper (outside of the check) was disturbing:

We generally take the view that blogs published on the internet have already been placed in the public domain by their authors and, in case of amateur writers, most people are happy to have their work recognised and displayed to a wider audience.

There is apparently some history of this happening in the UK, once again the Mail on Sunday. And in some cases, it appears that bloggers are finding writing or even graphics used by papers without permission but then thinking they were fortunate. This commentary in the Guardian Unlimited (online presence of the Guardian in the UK) is correct in stating that online work also is intellectual property.

But in the United States, that doesn't help you a bit unless you have registered your copyright. Registering after infringement lets you take legal action, but you can only go after the actual profits made off your work, and you cannot ask for legal fee reimbursement. No, the only practical way to go is to register either before the infringement, or within three months of the first publication (which, in the case of blogs, means when it first appears online). If you are not registering the copyright of your new blog entries every three months, you are running the risk of someone using them and being unable to do much of anything about it.

The Magic of Fair Use

I've seen a lot of discussion about the Harry Potter copyright infringement suit. But for all the certainty lay people have, the experts are saying that, as with many fair use arguments, the case is a crap shoot. This article in the Hollywood Reporter is worth reading for those in the writing business, becasue you can never know enough about the conditions that control your fortunes - or lack of them.

Are States and State Employees Immune from Copyright Suits?

A February District court case in California invalidated part of US copyright law. The particular statue is the following:

Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal Court by any person, including any governmental or nongovernmental entity, for a violation of any of the exclusive rights of a copyright owner provided by sections 106 through 122, for importing copies of phonorecords in violation of section 602, or for any other violation under this title.

In the case Marketing Information Masters v. The Trustees of the California State University, the Pacific Life Holiday Bowl (organization that puts on the Holiday Bowl football game) had hired the plaintiff company in the past to undertake a survey to show the economic impact of the game on its home of San Diego. When the company tripled its fees for the 2004 survey, the organization instead turned to San Diego State University to instead do the research.

Given a copy of the previous work, the school had been told to use the same format of layout - which is something that has a copyright. The school did, the company found out, and it sued the university trustees and the professor, both of whom filed a motion to dismiss the suit under the 11th Amendment of the U.S. Constitution, which states:

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

The company argued that the part of copyright law at the top of this post precluded such a defense. The court ruled that part of the law unconstitutional because, essentially, the Constitution generally trumps legislative attempts to specifically limit it.

Does that mean if a state uses your work without asking, you are out of luck? Not exactly. Although the deep pockets of the state itself may be off limits, state employees are only protected to the extent that they are acting within their official capacity. If they infringe copyright, they are breaking the law, and if they are breaking the law, they cannot be acting within their official capacity, so you would sue the individual.

Why You Can't Sue for Copyright Infringement If Someone Doesn't Pay

The thought of suing a publisher for copyright infringement if it doesn't pay is tempting. I once asked my publishing lawyer about the concept (not for a specific reason, but just because it's good to know about these things before you actually need them). He said that, in general, a court would not accept that approach and, instead, view the issue as a breach of contract.

I hadn't thought that much about the concept until someone brought it up on a writers' board. I passed on what I had heard and was asked by someone who had the same initial thought as I why this wouldn't work. Here's what I answered, though, please remember it's my own ramblings here, not the explanation of someone really qualified in legal issues.

The problem is that copyright infringement happens when one party uses another's copyrighted material without permission. However, in a dispute over a publishing contract, there *is* permission. Causing the conflict is that one side has not upheld its side of the contract (which is actually a private law drawn up between the two parties - this will become important in a moment). Therefore, the court focuses on that dispute as the one needing resolution.

If the writer were able to sue for infringment, he/she would be free to back out of the very same contract, changing terms after the fact, which is the egregious action of the publisher. That reduces the private law - the contract - to something with no power to compel people to meet the terms. Looking to an analogy for a moment, just because someone breaks the law by robbing a bank doesn't give the state authority to also ignore the law and use unreasonable search and seizure in prosecuting the crime. To say that the framework of law no longer applies when one party disregards its obligations is to say that we live in a world of chaos, because law will be out the window every day.

Now, my lawyer did say that there could be cases under which a writer *might* withdraw permission. For a contract to be valid, there are some basic assumptions. One is that there is a commercial transaction - the reason why if you're giving away something through a contract, you may require the payment of a dollar, because then there is something given on both sides. Another is that both parties enter the contract in good faith.

You'd pretty much have to show a pattern of such behavior on the part of the publisher to demonstrate that it entered the contract in bad faith. Then a court could find that there was never a contract in the first place, and you might be able to sue for infringement. However, that is an extreme situation that a court will be naturally reluctant to enable. You would be asking the court to assume that you, the writer, would be truthful and absolutely correct on first principles. As virtuous as I'm sure you are, you don't want a court to assume that, because then it could just as easily assume that the publisher was the party presumed to be accurate and honest. Instead, the court sees the possibility that there might have been a mistake, or some problem that caused a breach, and that's not the same as bad faith.

In short, to have the automatic right to sue for copyright infringement because of a payment dispute would essentially be to give everyone the right to act as though a contract had never been signed because of virtually any disagreement. And there's no court that wants to go down a slippery slope, let alone a slippery vertical drop.

Reference Sites for Publishing Law

It's good to have some places to learn about publishing law, as that is a vital part of running your writing business. I've just added a couple of links to my "Other Other Sites":

• Ivan Hoffman Hoffman has been in publishing and entertainment law for decades and has a great collection of articles on aspects of contracts, rights, coypright, and doing business. I periodically go in and see what new articles he has listed and catch up on my reading.


• PublishLawyer.com This is another site by an attorney, Daniel N. Steven. It has more of a tutorial feel to it and also has features like the Quick Guide to Book Contract Trouble Spots.

If you're serious about running your writing business, you should be learning as much as you can about contract and publishing law. You don't have to become a lawyer to start improving the way you look after your own interests.

When Is It Worth Chasing Online Infringement?

At a UK journalism site, there's an interesting Q&A with a lawyer about when it's worthwhile going after online infringement. Notice that the issue isn't whether you can, but whether you should bother. It's couched in terms of corporations, but just scale down the considerations (and the enforcement budgets), and there's something to learn for freelancers.

You could actually bring to this the idea of asymmetric threats, that you hear so often in a terrorism context. In this case, there is a low barrier to entry, both in money and time, for someone to infringe on copyright. And yet, protecting copyright faces a slope that quickly steepens, with costs of taking most legal action quickly going out of the reach for smallfry infringers that don't have deep pockets.

I think we could start to develop a methodology for deciding how and when to take action:

1. Review whether you have registered copyright for the item, or if you're still within the three month window of first publication. If the latter is the case, then immediately register the item, and don't wait until you "get around" to doing a group registration to save yourself a few dollars. If it wasn't registered and you've passed that three month period, then the best you can possibly do is use a DMCA take-down notice (check under Writers Resrouces on my blog site) to have the ISP remove the material, and maybe try bluffing to get some money.


2. Look at the infringer and decide whether it is an individual, small business, or mid-sized or large business.


3. Is the person or organization actually making money off your work, either by charging for it or using it as marketing?


4. Start with contacting the offender. If the person just seems to be a fan, either have them ask for permission and provide a link to your own site, or ask them to remove it. If the person doesn't, use a DMCA take-down notice. If the ISP is not in the United States, then you are out of luck and it's not worth pursuing any further.


5. If the site owner is a company making a business use of your work, send a demand letter, by certified mail, with an invoice for what you want to charge. Make removal of the material contingent on keeping the cost down (unless they decide to license it). If they want to settle for some smaller amount, take it and then use a DMCA take-down to get the material removed.


6. If the company is bigger than a mom-and-pop undertaking, then consider pressing your demand more strongly. But check wtih a lawyer how much it would cost to head to court. You may still decide that a DMCA action is the most effective use of your time.

Why reduce things to a specific process? Because that can take the gut knotting out of deciding what to do and let you quickly get to a point of knowing how you are going to handle a given situation.

So, all you conscientious and contentious writers and other creatives out there, does that make sense? Any sugestions for modifications?

Freelance Class Action Settlement Gets Tossed Out

Word came out late today that the US Court of Appeals for the Second Circuit, in a three-judge panel, has vacated the settlement approval and sent the matter back to the District Court, calling for "proceedings consistent with this opinion." (Thanks to the Authors Guild for notifying people and publishing the decision, and for reader Debra Cash to have passed over word.) Here's a key point of the decision:

We have held, albeit outside the class action context, that district courts lack statutory subject matter jurisdiction over infringement claims arising from unregistered copyrights. ... The District Court never specifically addressed this potential jurisdictional flaw.

As the decision notes, this issue had come up during mediation - the defendants in the class action (the publishers) arguing that the Copyright Act states that "no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” And then the publishers argued that the District Court couldn't a case covering any unregistered works, let alone such an overwhelming number.

It was the desire on the publishers' part to get out of the mess that brought them to agree to include non-registered works. Unfortunately, "[t]he District Court never considered whether it had jurisdiction to certify a class consisting mostly of claims arising from unregistered copyrights, or to approve a settlement resolving those claims."

I'm no lawyer, but this is about as bad as it could get. The issue now is not whether the authors with unregistered works have been adequately cared for, but whether any of them can sue to get anything. The answer is no, and all the arguments that some have made about the total value of the infringed works being a billion dollars or more go completely out the window. The people with registered works could get together and sue, if any of the lawyers are still interested. The groups involved in the suit and settlement could also appeal to an en banc hearing of the Court of Appeals, meaning that all the judges sit to hear the argument. At best that's going to add, what, another year? And there's no telling how it would come out.

One judge did dissent, citing some recent cases that the technical underpinnings of the majority decision might be wrong, and that the need for registration might only go so far as "a cause of action for damages, but not a prerequisite to the possession of constitutional standing [to sue]." It seems like a strong argument, but will everyone keep going? At this point, I don't know.

I've disagreed with the objectors for various practical reasons. I know and like a number of them, consider them colleagues and friends, and understand the abhorrence about the default loss of rights to writers. But I've been concerned - and have argued in various places - that for the settlement to get tossed would end up becoming a de facto green light for publishers to do as they want and to ignore the vast number of writers who hadn't registered copyright.

What we are seeing now is a classic case of good and noble intentions on the part of most bringing unintended consequences. By objecting, they opened the case to review that has overturned the settlement on grounds that were never brought up in the objection. The practical outfall, I fear, is that the settlement is over and no one will get a penny. That, in turn, will embolden the publishers, because any retaliation would be virtually impossible.