David Newhoff, Author at The Illusion of More

Taking a Cue from Aaron Moss, Further Thoughts about Miramax v. Tarantino

The blog Copyright Lately by attorney Aaron Moss is a must-follow for copyright nerds. His posts are always lively and filled with historic details or other arcana that will appeal to the true enthusiast, and in that spirit, Moss’s latest post got me thinking. It’s about the Battaille Royale between Quentin Tarantino and Miramax Pictures over Tarantino’s intent to sell seven exclusive NFTs based on high-resolution digital scans of selected handwritten pages from the original Pulp Fiction screenplay. “But while Miramax v. Tarantino is being billed as the first major legal dispute involving copyrights and NFTs, it really isn’t a dispute about NFTs. Frankly, it’s barely a dispute about copyrights,” Moss writes.

Describing the NFT aspect of the lawsuit as a distracting “shiny object,” Moss explains, “… this is primarily a contract dispute—a fight about whether the publication rights Quentin Tarantino reserved in his agreement with Miramax include the right to sell digital screenplay scans. While Tarantino happens to be selling the scans as NFTs, the principal legal issue in the case will be whether he has the right to create and sell them at all. This will hinge on the meaning of Tarantino’s reserved ‘screenplay publication’ rights.”

Tarantino reserves the right to publish the screenplay, and if the manuscript pages to be scanned are considered “published” segments of the script, Tarantino likely wins. If, on the other hand, the scanned pages (with bonus features) are considered merchandise, then Miramax likely wins because those rights are reserved by the studio. So, of course, Moss is right that this is barely a copyright case and that the NFT aspect is largely irrelevant, except, of course, that copyright law can tell us something about the nature of the works in dispute, and this may include how they will be made available.

Particularly because we do not have the proposed NFTs to examine, the questions are a bit murky as to what kind of works are ultimately in dispute. But let’s keep in mind that Tarantino reserves the right to publish the expression originally fixed as a screenplay, and what Miramax reserves is the right to prepare derivative works based on the expressions originally fixed in the motion picture, which would include merchandise. Miramax also owns the trademarks on Pulp Fiction, which it accuses Tarantino of infringing in the promotion of the NFTs.

“A Connecticut Yankee in King Arthur’s Court, page 1.” Chad Kleitsch, 2005. Used by permission.

This case made me think immediately of my friend Chad Kleitsch’s work in scanography (a term he might have coined) in which he uses a scanner rather than a camera to capture latent images, turning various objects into works of visual art. Using backlight in the scanning process and applying often painstaking work in post, Kleitsch generally prints his images in large scale, and in these prints, ordinary objects—from flowers to baby dresses—become artworks which are ineffably distinct from the artifacts themselves.

Among the objects Kleitsch has made into artworks are various culturally significant, handwritten documents, for instance, the first page of Chapter 1 of the manuscript for A Connecticut Yankee in King Arthur’s Court. Mark Twain’s writing is, of course, in the public domain, but even where the expression may be free to use, the right to reproduce objects like manuscript pages is vested in the owners of those objects, and this scan was made with permission of the New York Public Library, where the document resides. (In this regard, Tarantino is presumably the owner of the physical manuscript pages he intends to scan.)

Of course, Kleitsch’s scanographed works fit a classic paradigm when he meticulously prints the images and displays these prints in galleries where they are offered for sale. This familiar fine-art mode is arguably the opposite tradition of the NFT craze, and some might even call it outdated, though we shall see. Regardless, my point is that scanned manuscript documents can be unique works of visual art in which the expressive and cultural value of the handwriting on the paper is fixed anew in a manner that changes the context of the original object, often altering, transcending, or commenting upon the expression in the words themselves.

If Kleitsch were to come into possession (legally) of one of Tarantino’s manuscript pages, turn it into a singular work and sell that work at a gallery for a million dollars, not only would I expect him to buy lunch next time we meet, but I think copyright law would likely find that either the resulting visual work amounts to de minimis reproduction of the protected expression (the words on the page), or that the amount of copying of the protected expression is defended under the fair use doctrine for the purpose of making an entirely new work of visual art.

My point in highlighting Kleitsch’s work is to emphasize that a page of writing is simultaneously a fixation of protected expression and an object, which can be made into a new work of visual art, and in Miramax v. Tarantino, a relevant question may be whether the proposed NFTs are considered artified objects or solely reproductions of the expression in the original screenplay. To an extent, the handwriting element ads some weight to the former conclusion, but much depends, I think, on what is ultimately produced and how it is made available. In fact, what Tarantino proposes to create may be more akin to derivative works within the ambit of the motion picture franchise and reeking of merchandising. The Miramax complaint states the following:

The Press Release … described the Pulp Fiction NFTs as containing “one-of-a-kind” content that had “never been seen or heard before, . . . includ[ing]: the uncut first handwritten scripts of ‘Pulp Fiction’ and exclusive custom commentary from Tarantino, revealing secrets about the film and its creator.”

With that kind of promotion, one can at least see where Miramax might have reason for concern. Custom commentary and behind-the-scenes type material in a gimmicky package (and especially using the Pulp Fiction trademark in promotion) is reminiscent of merchandising derivative works based on the motion picture, which falls under Miramax’s reserved rights.

The NFT promos and the complaint imply that Tarantino will not be scanning seven non-consecutive single pages into unique works of visual art (a la Kleitsch) but that he will be scanning seven iconic scenes from the movie, each of which will comprise several pages totaling, perhaps, twenty-five or more, or nearly one-fifth of the screenplay. Arguably, the more pages Tarantino reproduces, even with commentary, the more the NFT would appear to fall within his publication rights. Further the handwritten pages are personal property, which he has the right to make into visual works. On the other hand, would Tarantino have the right to produce a gold-embossed, leather-bound, one-of-a-kind copy of the screenplay to sell at auction? Is that an edition of the screenplay or a unique piece of merchandise? Or is it both? In that sense, how are the proposed NFTs different?

So, although I would expect that the handwritten pages element combined with the publication rights tilt in Tarantino’s favor, a lot may depend on the overall package embodied in the NFT, how it is presented, and (perhaps) whether it is made available to anyone other than the individual buyers. Especially if the material winds up distributed to Pulp Fiction fans everywhere, the manner in which the proposed elements are arranged and presented may look a lot more like merchandise derived from the motion picture, than like publication of the expression embodied in the dramatic work called the screenplay.

So, what is Tarantino ultimately creating? A limited publication of a screenplay, a gimmicky piece of merchandise, or a new work of visual art? Without the works to analyze, it’s very hard to say. But based on the available evidence to date, the proposed NFTs may be all of the above. As such, perhaps this whole venture was best pursued as a collaboration. We shall see.

SAS v. WPL Litigation is of Great Importance to the Smallest Creators

Software companies SAS Institute of the U.S. and World Programming, Ltd. (WPL) of the UK have been litigants for more than a decade. By all accounts, WPL presents as a bad actor which lazily cloned SAS’s world-class analytics software. But before weighing the facts necessary to consider claims of IP infringement, the Federal Circuit Court of Appeals must first overturn the errors of copyright law applied by a Texas District Court, lest those holdings further weaken the already tentative position of independent rightsholders.

Presumption of Validity

I’ve spent a lot of time recently talking about formalities in U.S. copyright law (particularly with regard to the Unicolors and Valancourt cases), and it is recognized by those who care about indie creators that certain mechanisms in our copyright system already disadvantage entrepreneurial rightsholders. The individual or small-business creator can hardly be blamed for smirking at the fact that copyright attaches automatically to a work upon fixation, when that statutory provision barely vests her with any real power to enforce her rights. Enter the inducement to register.

The primary incentive to timely registration of works with the Copyright Office is that it allows the copyright owner to obtain statutory damages and legal fees upon successful litigation of an infringement claim. But another essential inducement to registration is the “presumption of validity,” meaning that a court will presume at the outset that the work at issue is properly a subject of copyright protection based solely on its having been issued a valid registration by the Copyright Office.

The reason the presumption of validity is critical, and decades-long precedent, is that it correctly places the burden on the defendant to prove a lack of copyright in the work(s) used, if non-copyrightability is to be presented as a defense. The district court in SAS reversed this principle, placing the burden on the plaintiff to prove copyrightability of register works at trial, and then aggravated this error by engaging in an extraordinary copyrightability analysis of its own design it named a “Copyrightability Hearing.”

Not only was the hearing itself an attempt to plough new ground by this court, but its analysis was improper, citing certain features of the work (e.g. open source), which do not inherently raise copyrightability questions, and then arrived at the untenable logic that the protection of a whole work may be undermined simply because it contains unprotectable elements.

Undermining Copyrightability Itself

As noted in my first post about this case, arguably all works contain unprotectable and protectable elements, and I cited the motion picture as a highly complex combination of such elements which are assembled to compose the finished movie. Among the copyright registrations made for the project will be the motion picture as a single unit, comprising its many parts—protectable original, protectable sublicensed, and unprotectable common elements—under a single title.

Imagine the cost and time if the owner of the motion picture were required to re-prove at trial the copyrightability of the entire film through analysis of the various components and then prove that the arrangement and use of those components is sufficiently original for copyright to attach in the first place. And that’s before proceeding to trial of an infringement claim.

Now, imagine that burden is borne by the independent illustrator, photographer, writer, or music composer, if this district court’s abrogation of the “presumption of validity” were allowed to stand. “The plaintiff would face the insurmountable task of proving a negative—that all of his work is not in the public domain or not an idea,” states the amicus brief filed by Copyright Alliance.

The opportunities for independent creators to enforce their copyrights are already hamstrung by the authors’ limited resources and our overly bureaucratic system. As a result, the overwhelming majority of American creators of works do not participate in the U.S. copyright system. And that is presumably what the copyright detractors want to see.

It is no surprise that those who scorn the existence of copyrights—either because weak protection is in their financial interest or because they are disciples of the Tao of Lessig—have endorsed the district court’s findings in SAS. Because if one hopes to further erode the rights of individual creators, or, perhaps, even industrial creators, enshrining this court’s rulings as precedent would be a very effective means to achieve that end.

Courts outside the Second and Ninth Circuits can be unpredictable when it comes to copyright law; but here, the Texas district court’s novel approach might fairly be described as eccentric, if not downright misguided. For the sake of creators much smaller and more vulnerable than SAS, the Federal Circuit must reverse that court’s multi-faceted errors of law before this case can proceed to the merits of the actual claim.

To Err is Human: Unicolors v. H&M at the Supreme Court

The Supreme Court on Monday heard oral arguments in the copyright case Unicolors v. H&M Hennes & Mauritz, L.P., a lawsuit bogged down in tiresome and tangential details, but which is important for independent creators. And speaking of tangential details, I noticed that Justice Sotomayor inadvertently used the term “patent trolls” during her brief interaction with counsel, and the reason I mention this minor gaffe is to say that if a Justice of the Supreme Court can make an honest mistake while speaking about the law, so can legal laymen. And that point is at the heart of this case.

The administrative and legal factors underlying this case are as follows: 1) timely and valid registration with the Copyright Office is required to fully enforce an infringement claim in federal court; 2) copyrights claimed in Group registrations may not comprise both published and unpublished works in the same Group; and 3) a registration may be invalidated at trial if the registration applicant knowingly provided inaccurate information and the inaccuracy, if known by the Office, would have caused the registration application to be denied. With that, I will restate the summary of the case from an earlier post.

Unicolors makes original designs for use in textiles, and in 2015, a jury found that retailer H&M copied one of its designs and, thus, awarded Unicolors damages and legal fees for copyright infringement. On appeal to the Ninth Circuit, however, H&M argued that the relevant Group copyright registration should be invalidated because the Group comprising 31 designs, included 9 designs that Unicolors had “confined,” meaning that they were temporarily exclusive to certain customers. H&M argues, therefore, that Unicolors registered these 9 works in the Group knowing that they would not be “published” simultaneously with the other 22 designs. The Ninth Circuit agreed with H&M. It reversed the jury decision and remanded with an order that the Register of Copyrights be consulted as to whether Unicolors’s error, if known at the time of application, would have caused the Copyright Office to deny registration for the Group filing.

So, the big to do here is not Unicolors’s fate per se, but the independent creator who is likely to use Group registrations at the Copyright Office and file her own applications without the aid of counsel. As discussed in this post and this podcast with Steven Tepp, the possibility that a photographer, for example, will inadvertently mix published and unpublished works in a Group registration—and not know about it until some defendant in a claim seeks to invalidate the registration—is actually rather high. This exact circumstance is further aggravated by the fact that the legal meaning of “published” is not entirely settled for legal experts, let alone authors of works, and as Tepp points out, is not something the Copyright Office really needs to know at the time of registration.

“Ignorance of the law is no defense is an old principle,” stated Justice Kavanaugh at one point in response to H&M counsel, Peter Stris. “It’s got a lot less force in regulatory areas, number one. But it especially has less force when the statute itself…folds the legal portion in.” [citation omitted]. If I can summarize almost 90 pages of transcript down to a key point, that would be it. The important question in this case is whether the statutory intent of Section 411 of the Copyright Act allows for errors in law but not errors in fact when submitting information to the Copyright Office.

Misstatements of fact (e.g. author’s identity) are grounds for invalidating a copyright, while misstatements of law (e.g. whether a work is published or is a derivative work) do not automatically meet the standard of “knowingly” providing false information. Not just in copyright, but throughout many areas of law, the distinction between innocent error and fraud is an essential matter of justice. To Justice Kavanaugh’s point, none of us can lay claim to a defense that we don’t know that grand theft is illegal, but ignorance about the arcane and administrative practices of government agencies is not only forgivable but would be downright suspicious if it were not common among nearly all of us. Or to quote Justice Gorsuch, “….no human alive can probably understand the whole of this chapter.”

Although there was some discussion as to whether Unicolors itself, having ample resources, ought to have known better at the time it submitted its registration application, it sounded like the Court was not terribly persuaded by this line of argument. Justice Alito did ask Unicolors’s counsel Joshua Rosencranz what benefit his client gains by the Group registration, and the answer underscores the absurdity of the unforgiving standard for which H&M is arguing. “…under the Ninth Circuit’s theory, we saved $65,” Rosencranz replied. And there you have it. What company knowingly files incorrect information and knowingly risks invalidating its copyrights in order to save $65? It’s prima facie silliness.

The Alleged “Troll Problem” in this Story

A group of 12 legal scholars filed an amicus brief in support of H&M on the grounds that if Unicolors were to prevail, the precedent set would exacerbate the “copyright troll problem.” But the brief stumbles over reality right out of gate, when it declares, “The copyright registration process underpins the modern copyright system. Maintaining the integrity of the registration process, particularly in light of the emerging threat posed by copyright trolls, requires adherence to the registration requirements.”

Aside from the fact that there is no clear evidence that we face an “emerging threat posed by copyright trolls,” abusive litigation in any area of law does not necessarily inform the construction or application of the law itself but is properly addressed through rules of civil procedure and/or bar ethics rules. Nevertheless, the professors’ brief argues that the Court should apply H&M’s legal standard for “knowing error” as a precedent that would mitigate against trolling in general.

The brief asserts two reasons for its position: 1) that the stricter standard for accuracy makes more work for putative copyright trolls; and 2) the possibility of invalidating registrations based on application filing error provides respondents with a defense against trolls. On the second point, I will note that the cost of discovery to arrive at that defense is likely higher than any settlement (just or unjust) the alleged troll is seeking. On the first point, even copyright skeptic Justice Breyer stated empathy for the legit author beavering away at his work and committing a filing error in contrast to alleged trolls about whom he said, “If there is one group of people that it’s going to be tough to make out a claim that they didn’t really know the law, it will be the real copyright trolls because they stay abreast of everything.” In other words, trolls don’t amend the scope of copyright law, but those complaining about them appear to be doing just that.

More broadly, let’s not overstate the registration process as the “underpinning of the system.” As it stands, the U.S. registration process is confusing, bureaucratic, and as we see emphasized in this case, bogged down in certain formal requirements that are not strictly necessary to the process. No other democratic nation with rich copyright systems maintains formalities akin to ours, and many of our formalities are relics of history, serve the purposes of the collection at the Library of Congress, and are testaments to our legislative stodginess.

Compliance with registration formalities is a bargain made by the copyright owner in exchange for the ability to fully enforce her rights, but we should not heap too much praise upon what amounts to a clerical process which is at least as bureaucratic as obtaining a driver’s license and, arguably, less necessary to the purpose at hand. As such, to the extent that Unicolors in this case stands in the shoes of all creators of works, the Court must find as a matter of justice that the statutory interpretation advanced by Unicolors maintains the consequences of lying without disturbing the principle that error is still human.

Photo by: colinn

Author: David Newhoff