Tag: formalities

Copyright Scholars Urge Reversal in SAS v. WPL

Fundamental copyright doctrines and procedures are presently on trial in the case of SAS Institute v. World Programming Limited, now on appeal at the Federal Circuit. Suffice to say, U.S. software developer SAS alleges copyright infringement by UK developer WPL, and these entities have been litigating on both sides of the pond for many years. But it almost doesn’t matter, for the purposes of this post, which entity ultimately deserves to prevail on the actual merits. Because according to a brief filed by ten copyright scholars, the district court in the Fifth Circuit bollixed up procedure and doctrine so badly that, if allowed to stand, the ruling would be harmful to copyright creators everywhere. And, as usual, the precedent would be highly prejudicial to small business and independent authors who are always at a disadvantage vis-à-vis the cost of enforcement of their rights.

At issue is one matter of settled copyright doctrine and one matter of settled court procedure, both of which the SAS court in Texas undermined with an unprecedented procedure of its own that it called a “Copyrightability Hearing,” which the scholars’ brief describes as “foreign to copyright law and threatens to impose additional costs and burdens on parties, moving the costs of vindicating their rights further out of reach for many creators and copyright owners.”

Doctrine: Unprotectable Elements Do Not Deprive Whole Works of Protection

It is axiomatic that nearly all copyrightable works contain unprotectable elements. For instance, the scholars’ brief cites nonfiction books as an archetypal subject matter that is unquestionably granted protection as whole works, despite comprising many facts, which are unprotectable. But to further illustrate the point, I would note that the average motion picture or TV series contains hundreds, if not thousands, of protectable elements intermingled with unprotectable elements.

In fact, the motion picture industry thrives on copyright’s limiting doctrines like the idea/expression dichotomy, merger, short phrases, and scènes-à-faire. Consequently, no filmmaker gets an exclusive to produce scenes depicting heroes running with guns or that first kiss as the music swells and the camera adjusts to reveal a romantic setting. But these limitations do not obviate copyright attaching to each motion picture as a whole work, or even segments of each film as original expressions of common ideas, themes, tropes, etc.

Now, imagine a trial in which the filmmaker alleges copyright infringement of a whole movie, or a substantial portion of the movie, but the defendant argues, “Well, the motion picture is full of unprotectable elements and is, therefore, deprived of all protection as a complete work.” Because that is essentially what WPL argued in its lawsuit with SAS, and the district court agreed, thus, upending doctrine by voiding copyright in the entire work. As the amici state:

The Court’s stated basis for rebutting the presumption of validity and holding the SAS copyrights invalid, i.e., that “at least some of the material is not entitled to protection,” is not only wrong, it is exactly the opposite of the correct standard. [Citation omitted]

I use the motion picture example to emphasize the point that if the only response required of a defendant were to recite a litany (as WPL apparently did in this case) of copyright doctrines  under which elements of a work may be unprotected,[1] much as I did a couple of paragraphs ago, in order to shift the burden to the plaintiff to re-prove protectability, that way lies madness. For instance, I happened to watch the new Suicide Squad this weekend and, even as a non-attorney, I could probably do ten pages or so breaking down the protectable and unprotectable elements just in Harley Quinn’s solo fight sequence.

But hypothetically placing the burden on the film’s producers to engage in such an exercise would be anathema to more than a century of legal doctrine and decades of court procedure. Yet, that is precisely what the court did in SAS when it found that, in general, the work at issue contained unprotectable elements and, therefore, the plaintiff bears the burden to re-prove copyrightability in that which is allegedly protectable.

Procedure:  Registration as Proof of a Valid Copyright

So, it is settled law that copyrightable works may comprise even large volumes of non-protectable elements and still meet the standard of originality for protection. Moreover, once a copyright application is approved, a certificate of registration issued by the Copyright Office is considered prima facie evidence of a valid copyright as a matter of law. In fact, the efficiency of this longstanding precedent is one of the key incentives to authors provided by Congress (in §410(c) of the copyright act) to register their works with the USCO. Here, the scholars’ brief argues that by shifting the burden to the plaintiff to re-prove copyright in its work, the district court has disturbed a presumption of copyright validity, stating:

This presumption is of vital importance to copyright owners, and is frequently cited as an inducement to register works although copyright protection attaches automatically upon fixation. The presumption is particularly important to individual authors and small entities who struggle to afford the costs of federal litigation to adjudicate copyright claims. Imposing the costs of a Markman-like evidentiary showing of originality in every litigation would effectively render even their timely-registered works judicially unenforceable.[2]

The Abstraction-Filtration-Comparison Analysis

A court may certainly write an opinion finding that a registered copyright in a work to be invalid, but not without thorough analysis and clear articulation of its reasoning. Here, the scholars’ brief argues that the district court compounded its errors by engaging in an incomplete and improper analysis of the work at issue and then exacerbated harm, not only shifting the burden to the plaintiff to re-prove copyrightability, but to do so within the context of this court’s erroneous analysis.

Not unlike the analyses for “substantial similarity,” the Abstraction-Filtration-Comparison (AFC) test is a judicial review which examines the work by filtering out the unprotectable elements and then comparing the remaining protectable elements to the allegedly infringing work. But here, the scholars’ brief notes examples whereby the court misconstrued features of the SAS work as a foundation for finding non-protection. One example cited is “open source elements,” which tends to confuse a lot of people because “open source” generally refers to software that is made freely available, but this attribute does not alter the copyrightability of the work. Thus, the scholars’ brief states:

…the Court’s attack on the protectability of SAS works is predicated on an alleged characteristic of the works that has nothing to do with copyrightability. Thus, by its own terms, the District Court filtered out what should be presumed to be copyrightable elements of Plaintiff’s work. This alone is reversable error.

As stated above, whether SAS or WPL should ultimately prevail on the true merits of each claim is immaterial to the issues raised in the scholars’ brief. And to be honest, I am not about to crawl through the thicket of facts, allegations, and responses presented in what looks like more than a decade of these two companies duking it out with one another. Some have referred to this case as a Google v. Oracle light, but at least in context to the brief discussed in this post, I would disagree.

In Google, the core copyrightability question (which the Supreme Court failed to adequately answer) was solely based on the merger doctrine, and whichever view one held of that argument, either could find purchase in the law. In SAS, it appears that the district court simply abandoned any foundation in law whatsoever. And for the sake of rightsholders working in all media, the Federal Circuit must reverse.

[1] The amici scholars refer to this litany as “the List” in their brief.

[2] Markman refers to judicial interpretations of specific words used in a patent description pursuant to a patent litigation.

Also see brief co-author Steven Tepp’s piece at IPWatchdog.

Photo by: AndreyPopov

Podcast – Formalities in U.S. Copyright with Steven Tepp

In this post, I wrote about some of the difficulties that U.S. formalities present to many independent creators, difficulties highlighted in the case Unicolors v. H&M. I cited a paper written by Steven Tepp for the Professional Photographers of America (PPA) and mentioned that I would follow up with a podcast to delve a little deeper into the subject of formalities–those pesky, administrative details that sometimes confound independent authors trying to protect their works under copyright.

Steven Tepp is the president and founder of the IP consulting firm Sentinel Worldwide. In his career, he has  served as Chief Intellectual Property Counsel for the Global Intellectual Property Center (GIPC) of the U.S. Chamber of Commerce and as senior counsel for Policy and International Affairs at the U.S. Copyright Office.  See Steven’s website here.

Episode Contents

  • 46:06 – Steven Tepp’s background
  • 01:42 – What are  formalities in U.S. copyright?
  • 06:06 – The relationship between formalities and the Library of Congress.
  • 08:05 – Consolidation of deposit copies at the Library of Congress.
  • 11:15 – U.S. partial breaks with formalities.
  • 19:28 – A copyright notice is not required, but…
  • 21:25 – The basics of complying with existing formalities.
  • 33:58 – AWF v. Goldsmith and registration of an unpublished work.
  • 37:22 – Unicolors v. H&M and mixing published and unpublished works.
  • 40:41 – The meaning of “published” as a question of law.
  • 45:45 – The difficulty of “publication” after preemption of common law copyright.
  • 50:29 – The well-intended doctrine of “limited publication.”
  • 53:46 – Unicolors’s challenge as a result of the “limited publication” doctrine.
  • 57:34 – One solution to the “publication” problem.
  • 01:06:00 – Formalities and the small-claim provision created by the CASE Act.

U.S. Copyright Formalities: Old Ideas in a Modern Age

In my post about Unicolors v. H&M, I tried to summarize a broader scope of issues than that the Supreme Court is likely to weigh in the case. The Court has agreed to resolve a narrow question: whether the Ninth Circuit erred by holding that the lower court was required to seek guidance from the Copyright Office “where there is no indicia of fraud or material error as to the work at issue….” And while it may be difficult for the Court to write that opinion without referring to the publication status of the works at issue, it seems unlikely that SCOTUS will say anything instructive about the underlying problem that we lack a unifying definition (or even a clear understanding) of “published” as a matter of copyright law.

Regardless of the eventual outcome in Unicolors, the difficulties this case highlights persist for many rightsholders—namely that the formalities required of American authors to secure enforceable protection of their copyrights are mired in a bog of historical precedent peculiar to the U.S. relative to comparable, copyright-rich nations. Although the United States is the leading producer of creative works by volume worldwide, it has often been a follower when it comes to modernizing copyright law and practice.

For instance, one of the most hotly contested aspects of the law—the duration of protection—is still portrayed in the blogosphere and corners of academia as an ever-expanding tide caused by major American media companies. But in truth, proposals that copyrights should last several decades after the author’s death was extant in European copyright doctrines, as a question of justice, no later than the mid-nineteenth century. The sixteen countries that first adopted the Berne Convention treaty in 1887 settled on a voluntary term of life of the author plus fifty years, which became mandatory under the terms of the convention in 1948, and was then extended by twenty years with formation of the European Union in the early 1990s.

Meanwhile, the reasons why the U.S. did not become a signatory to Berne for more than a century, finally joining in 1989, had little to do with philosophical opposition to its term lengths (the U.S. moved to the life plus fifty term in the 1976 Copyright Act) or certainly any reluctance to achieve parity in the trade of copyrighted works. It was American formalities which stood in the way and, so, abolishing or amending many of those formalities, in order to comport with Berne, was one of the major rationales for rewriting the copyright law beginning in the1960s and concluding with the Copyright Act of 1976.

Duration of protection was one subject that had to be addressed because the U.S. terms between 1790 and the current law—a fixed period with one optional renewal—was incompatible with Berne, which is why we now have a life-of-the-author-plus regime. Likewise, America’s original mandate to register a work and display a notice of copyright in order for the rights to vest in the author at all were unworkable formalities with Berne signatories who had no such rules.

To an extent, the current law embodies an incomplete break with formalities, which is why, for instance, American authors today are left to ponder the paradox that copyright attaches automatically to any U.S. work fixed after January 1, 1978 but that the rights are not enforceable through litigation without the formality of registration with the Copyright Office. And per the ruling in the Fourth Estate case (2019), legal action can only proceed after the Copyright Office has responded to the relevant application.

Registration is Something of an Anachronism

But as the Unicolors case emphasizes, it is the various rules and restrictions within the often-confusing registration process where history, statute, case law, and administrative practice have converged and calcified into a regime in need of further modernization. In fact, registration itself, while it may serve some useful purposes, actually derives from archaic practice in Anglo/American law whereby proto-copyright regimes of the sixteenth century in the London trade guild called The Stationers’ Company left traces of DNA in the U.S. Copyright Act of 1790.

Rather than register works with a trade organization—let alone one operated by the publishing industry—new American authors registered their works directly with the district courts in their home states until the Act of 1870 consolidated registration at the Library of Congress, a change instituted for the express purpose of growing the Library’s collection through the acquisition of deposit copies. But even the first Register of Copyrights, Thorvald Solberg, proposed abolishing mandatory registration during the drafting of the copyright act of 1909, arguing for a bill that, in his words:

… distinctly affirms that copyright is secured for all the writings of authors from the time of the making of their works and that copyright shall vest in the author of the work immediately upon its making and shall not depend upon the accomplishment of any conditions or formalities whatever.

So, the idea that copyright attaches at the moment of fixation, and that the law’s purpose is to secure a right that is held to exist absent formalities, hardly began with the drafting of the 1976 statutes. That quote of Solberg’s comes from a white paper written by Steven Tepp, (consultant and former senior counsel at the Copyright Office), which proposes abolishing the publication status from the registration process altogether. Written on behalf of the Professional Photographers Association (PPA), Tepp’s paper explains that although publication status is relevant in several ways in a lawsuit, it is not necessary for the Copyright Office to know or record that information at the time of registration. Tepp writes:

 From 1790 through 1977, first publication of a work was the signal act that extinguished state law (also known as common law) copyright and triggered the federal Copyright Act. Publication represented the author’s choice to distribute their work to the public: to forsake the privacy and absolute control over their work, as well as potentially perpetual copyright protection in exchange for the opportunity to exploit the work for economic gain.

The 1976 Act altered the bargain. State copyright protection was pre-empted and all works created since the 1976 Act took effect on January 1, 1978 are protected at the federal level from the moment of their creation by operation of law. Overnight, the copyright significance of publication diminished immeasurably.

Unpublished works were protected by common law copyright, and once an author chose to publish and avail himself of the federal protection, he was also required to meet all the formalities of registration, notice, etc. or risk losing protection under state and federal law. But as the categories of creative works grew well beyond the maps, charts, and books protected by the 1790 law, and the various ways to make works available expanded with technological development, the meaning of “published” naturally became detached from classical paradigms based on printing reproductions of works on paper. And the digital age has only further confused matters due to the myriad ways in which multiple parties might make works available, often without the original author’s knowledge.

Precedent That Used to Help Now a Difficulty

Most importantly, perhaps, is the uncertainty in the case law for creators—especially photographers who often register hundreds of images in group registrations—where the registration’s integrity depends upon a declaration that works in a group are either all published or all unpublished. Relevant in Unicolors is the allegation that the rightsholder registered published and unpublished works in the same group registration. And the argument that some works were unpublished turns on the likelihood that they fit the definition of “limited publication,” a judge-made doctrine originally intended to sustain justice for rightsholders. As Tepp writes:

The doctrine of limited publication has long been understood as a judicial attempt to mitigate the absolute loss of rights that could occur under the old formalities. Historically, distribution to a defined group for a limited purpose has been held to be limited publication, while distribution destined for the general public is a general publication.

So, here’s the nature of the problem revealed in Unicolors:  judicial precedent which originally prevented authors from losing their copyrights due to administrative technicalities could now serve to void Unicolors’s registration pursuant to its enforcement against H&M due to what amounts to administrative technicalities. And this despite the fact that H&M infringed one of the published works in the first place.

Hence, a central reason for a proposal like Tepp’s is that authors should not have to risk this kind of uncertainty for the sole purpose of providing the Copyright Office with information that is not germane to the registration of a work. As a follow up to this post, I am going to schedule a podcast interview with Steven Tepp for a more in-depth discussion about copyright formalities in U.S. law and how they create legal pitfalls, especially for independent and small creators.