Today, websites, companies, and individuals around the country are participating in the largest online protest in history as they battle two proposed bills currently pending before Congress, the Stop Online Piracy Act (SOPA) and the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act (PROTECT IP Act or PIPA). Google, for example, has a black censorship box splashed over their logo today (pictured to the left), and Wikipedia has gone dark while providing information about how to contact you local representatives (if you just can’t live without Wikipedia today, the site is still available on mobile devices and smart phones, or by disabling JavaScript in your browser).  A full list of the many popular websites protesting SOPA and PIPA today is here. We’ve written before about SOPA and PIPA, and about how they’ve come under fire by mainstream media and civil liberties groups who believe the bills would shift too much responsibility onto ISPs, advertisers, and payment processors while also giving the U.S. government and trademark and copyright holders too much power to block allegedly infringing websites without sufficient due process. Despite the powerful opposition to the bills, both are still alive as of today, January 18, 2012.  Indeed, the Senate is set to vote on PIPA next week, and the House will resume their work on SOPA next month.  See here for more information about the bills, the background, and the next steps. The bills have strong supporters as well.  Chris Dodd, the chairman and CEO of the Motion Picture Association of America (MPAA), is one of these strong supporters and has stated that today’s online protest is “yet another gimmick, albeit a dangerous one, designed to punish elected and administration officials who are working diligently to protect American jobs from foreign criminals.”  See here for Dodd’s full statement. Whether today's online protest serves to raise awareness and alter the language or course of these bills, or merely serves as a "gimmick" remains to be seen, although it is clear that thousands or perhaps millions of people who have never heard of either SOPA or PIPA will discover at least some of the many issues surrounding the bills as they go about their day today.

I’ve written before about common law copyright protection of sound recordings made before February 15, 1972.  Although the Sound Recording Amendments to the 1909 Copyright Act extended federal copyright law to sound recordings, it only did so to sound recordings made on or after February 15, 1972.  Per the amendments, federal copyright law does not preempt state common law or statues regarding pre-1972 sound recordings until February 15, 2067. This has resulted in a meshwork of state common law copyright protecting – or not protecting – pre-1972 sound recordings.  In 2009, Congress instructed the Copyright Office to conduct a study on the “desirability and means” of extending federal copyright protection to pre-1972 sound recordings, and hearings on the subject were held throughout 2011. Late last month, the Copyright Office issued a report (“Federal Copyright Protection for Pre-1972 Sound Recordings”) recommending that pre-1972 sound recordings be brought under federal jurisdiction.  The Copyright Office asserted that not only is there very little information as to why Congress opted to omit pre-1972 sound recordings, bringing them under federal jurisdiction would “best serve the interest of libraries, archives and others in preserving old sound recordings and in increasing the availability to the public of old sound recordings.”  Further, it would bring clarity to this muddled area of copyright. A few interesting recommendations from the report regarding proposed terms of protection for pre-1972 sound recordings:

• The term of protection should be 95 years from publication or, if not published, 120 years from fixation, although no term should extend past February 15, 2067.

• In all cases, the term of copyright protection for all pre-1972 sound recordings cannot continue past February 15, 2067.

• Interestingly, for sound recordings published before 1923, the copyright owner would be able to obtain protection for 25 years from enactment of legislation that federalizes protection by: (i) making the work available to the public “at a reasonable price” and (ii) filing with the Copyright Office notice of the owner’s intent to secure protection.  This means that pre-1923 works will by default go into the public domain unless the copyright owner actively pursues protection.

• For sound recordings published between 1923 and 1972 and which are scheduled to expire before February 15, 2067, the copyright owner would be able to extend the term through 2067 by: (i) making the work available to the public “at a reasonable price” and (ii) filing with the Copyright Office notice of the owner’s intent to secure protection until 2067.  For example, a work published in 1925 would expire in 2020 under the federal scheme.  The copyright owner, however, could extend the term through 2067 by completing the listed steps.

For the fifth time, the Librarian of Congress (currently James Hadley Billington), upon the recommendation of the Register of Copyrights (currently Maria Pallante,), will conduct a rulemaking proceeding to determine whether certain prohibitions of the Digital Millennium Copyright Act (“DMCA”) adversely affect users of copyrighted works. Anti-Circumvention Provisions of the DMCA Among the many provisions of the DMCA, enacted in 1998, is a provision (17 U.S.C. § 1201(a)) which prohibits the circumvention of technological measures which control access to works protected by the DMCA.  For example, the anti-circumvention provision prohibits the use of software to bypass DVD encryption which prevents illicit copying. However, the same section of the DMCA provides that the anti-circumvention provision does “not apply to persons who…adversely affected by virtue of such prohibition in their ability to make noninfringing uses of that particular class of works under this title…”  In other words, the anti-circumvention provision will not apply to certain groups of people who are unable to make a valid noninfringing use of a work due to the technological measures, so long as the group is one of the groups identified by the Librarian of Congress. Triennial DMCA Rulemaking Proceedings Accordingly, the Librarian of Congress must “make the determination in a rulemaking proceeding…of whether persons who are users of a copyrighted work are, or are likely to be in the succeeding 3-year period, adversely affected by the [anti-circumvention] prohibition…in their ability to make noninfringing uses under this title of a particular class of copyrighted works.”  In other words, every three years the Librarian of Congress must determine and publish which classification(s) of people it has identified as unable to make a valid noninfringing use of a work due to technological measures controlling access to works. Since enactment of the DMCA, four such determinations have been made.  Following the most recent determination, the Librarian of Congress published on August 6, 2010 the following classifications of people exempt from the anti-circumvention provision of the DMCA:

• DVDs protected by a Content Scrambling System, when circumvention is to incorporate short portions into a new work for the purpose of criticism or comment, and where the circumvention is for: (i) an education use by college and university professors or film and media studies students; (ii) documentary filmmaking; or (iii) noncommercial videos;

• Computer programs enabling wireless telephone handsets to execute software applications for the sole purpose of enabling interoperability of such applications;

• Computer programs that enable used wireless telephone handsets to connect to a wireless telecommunications network;

• Testing for or investigating security flaws or vulnerabilities of video games accessible on personal computers

• Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete; and

• Literary works distributed in ebook format when all existing ebook editions of the work prevent the enabling either of the book’s read-aloud function or of screen readers that render the text into a specialized format.

Comment Period Open Through February 10, 2012 In September, the Copyright Office issued a Notice of Inquiry in the fifth anticircumvention rulemaking requested written proposals to designate classes of works from all interested parties in order to elicit evidence on whether noninfringing uses of certain classes of works are, or are likely to be, adversely affected by this prohibition on the circumvention of measures that control access to copyrighted works. Those proposals have been posted to the Copyright Office’s website, and the Copyright Office recently requested comments regarding these proposed classes of works, which include several new classes in addition to those adopted in 2010. Comments addressing the Proposed Classes of Works are due by 5 p.m. E.S.T., February 10, 2012 (via this form).  Reply comments addressing points made in the initial comments are due by 5 p.m. E.S.T. on March 2, 2012.

Case: CAMPINHA-BACOTE v. BLEIDT (S.D.Tex. 10-3-2011) What allegedly happened: A he-said / she-said case. A university professor (who has since resigned) claimed that he was authorized to use a 25 page survey, owned by the plaintiff in this case, on classes of incoming students for a certain period of time. On the other hand, plaintiff claimed that there was no authorization for the use of the survey by the "main defendant professor" and one of his co-workers. Most of the claims originally present in this case were dropped on sovereign immunity grounds because defendant are a state university, specifically Texas A&M's pharmacy college and a couple of its professors.* The defendants have also raised the defense of fair use of the survey (as will be discussed below), but the court's October 3rd opinion only deals with the issue of whether plaintiff authorized the defendants' use. Decision: The issue of whether there really was authorization to use the survey must be decided through a trial. Strategy Question: The short opinion mentions a license offer made by the copyright owner to one of the defendant professors:

[The author of the survey] responded that the cost would be $735 for 2010, and asked for documentation of the prior agreement with [the university professor]. The pharmacy school decided against using the survey during August 2010 orientation at least in part because it was too expensive.

The relevance of this $735 offer is not immediately clear, especially because the court was deciding a summary judgment motion on liability, and not deciding any damages issues.  The $735 figure was made by the copyright owner in the context of licensing and authorizing future use and did not directly relate to the unauthorized use at issue in this case, which had occurred prior to the $735 offer.** It may be that the court believed that the university, or the involved professors, could have settled this matter early by paying about $735 per semester of allegedly unauthorized use, but, if so, that may or may not be a realistic assumption. Fair Use: In disputes over copyrighted materials that are used for educational purposes, fair use is frequently raised as a defense.  Indeed, fair use has been raised, but not yet litigated, in this case. Some of the plaintiff's recent briefing shows that she continues to be concerned about this defense:

In an email dated as recent as September 16, 2010, [the main defendant professor] communicated with [a dean of the university], whereby he made mention of and implications that his use . . . of Dr. Campinha-Bacote’s survey was protected by fair use. . . . The second factual issue is that the College's fair use of a copyrighted survey instrument should not be much of an issue. There was no data collected for analysis purposes or for use in research; any use was for a nonprofit-educational purpose only. Apart from the fact that [the main defendant professor] actually uses the term “fair use,” he also identifies what he thinks the relevant fair use factors are by mentioning “nonprofit” and “educational purposes.” By this statement, it is clear that [the main defendant professor] has knowledge of the fair use doctrine. Consequently, it can be reasonably inferred that [the main defendant professor] is under the impression that his use, both in the past and in the future, would be protected by the “fair use” doctrine. Accordingly, Defendants are more likely to continue using Plaintiff’s tool if they are under the impression that such use is protected. Without an Order from this court granting Plaintiff her injunctive relief, Defendants will be free to use Dr. Campinha-Bacote’s surveys without paying a fee.

Footnote(s): *  More specifically, the claims against the university, and against the professors "in their official capacities" were dropped, leaving only claims against two of the professors in their non-official capacities.  The opinion does not specify as to whether the university has a continuing duty to defend the professors against the remaining claims that were not found to be amenable to summary judgment. **  It is not clear whether the copyright owner even knew about the allegedly unauthorized use at the time she made the $735 license offer.

Two related bills aimed at curbing rampant copyright and trademark infringement on the Internet are currently pending before the House and Senate.  While the bills have been endorsed by the RIAA and MPAA and have strong bipartisan support in Congress, they have come under fire by mainstream media and civil liberties groups who believe the bills would shift too much responsibility onto ISPs, advertisers, and payment processors while also giving the U.S. government and trademark and copyright holders too much power to block allegedly infringing websites without sufficient due process. The Senate PROTECT IP Act of 2011 (S.968) The bills began in the Senate, where Senator Patrick Leahy (D-VT) introduced the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act,” or the PROTECT IP Act (“PIPA”) in May of 2011 (S.968). The PROTECT IP Act would establish a system where the Justice Department could take down websites dedicated to copyright-infringing or counterfeit activities, including sites that solely promote distribution of illegal copies, counterfeit goods, or anti-DRM technology.  The Act would give the DoJ the ability to obtain court orders preventing financial transaction providers, Internet advertising services, Internet service providers, and information location tools from linking to or processing financial transactions to or from the “rogue site.” Trademark and copyright holders would also be able to apply for a court injunction against the domain name to compel financial transaction providers and Internet advertising services to stop processing transactions to and placing ads on the website, if they have been harmed by the activities of the rogue website. The PROTECT IP Act was recently reviewed by the Senate Judiciary Committee and is still pending in the Senate. The House E-PARASITE Act (H.R.3261) The “Enforcing and Protecting American Rights Against Sites Intent on Theft and Exploitation,” or E-PARASITE Act, was introduced on October 26, 2011 by Rep. Lamar Smith (R-TX) (the bill was formerly known as the Stop Online Piracy Act, or SOPA) (H.R.3261). The E-PARASITE Act would authorize the DoJ to initiate federal court procedures against criminal activities conducted on foreign infringing sites engaging in copyright infringement, counterfeit goods, or theft of trade secrets.  Again, courts could issue orders to ISPs, payment network providers, search engines, and advertising services to take “technically feasible and reasonable measures” to prevent access to the rogue site. Similar to the PROTECT IP Act, trademark and copyright holders would use a process similar to the Digital Millennium Copyright Act (DMCA) to seek limited injunctive relief against the rogue site. The E-PARASITE Act was recently sent to the House Committee on the Judiciary where it was referred to the Subcommittee on Intellectual Property, Competition and the Internet. Proponents and Critics Proponents of the bills, including the Recording Industry Association of America (RIAA) and the Motion Picture Association of America (MPAA), maintain that the legislation is vital in order to address the widespread copyright and trademark infringement on the Internet.  See, for example:

• “RIAA chief: Copyright bills won't kill the Internet” at CNET;
• “The PROTECT IP Act : What You Need to Know” (pdf) by Creative America; and
• Fightonlinetheft.com.

There are also numerous critics of the bills who are concerned about the suppression of speech without due process and the effect of the bills on the Internet’s infrastructure, among other issues.  See, for example:

• “Stop Online Piracy Act would stop online innovation” at the SF Chronicle;
• “Coming Clean on SOPA” by the Future of Music Coalition;
• “A bipartisan attempt to regulate the Internet?” at the LA Times; and
• “And Speaking of the Inalienable Right to the Pursuit of Happiness . . .” at The Volokh Conspiracy.

Musician and pop culture icon Stefani Germanotta – better known to her fans as “Lady Gaga” – has actively protected her ‘distinctive’ brand since entering the national scene.  For example, she has required that photojournalists at her concerts assign all copyrights in their photographs to her, and recently filed a trademark infringement lawsuit against a company attempting to register the marks “Lady Gaga” and “Lady Gaga LG.”  A few weeks ago, however, Lady Gaga learned that she did not have rights in the domain name “ladygaga.org.” In August, Lady Gaga filed a Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) complaint with the National Arbitration Forum (“NAF”) alleging that the domain violated her trademark rights and was intentionally registered in bad faith in order to capitalize on her fame.  Unfortunately for Lady Gaga, the NAF panel disagreed, finding that since the website hosted at ladygaga.org is a completely non-commercial fansite that disclaims any association with the musician, Lady Gaga had failed to show that the owner did not have a legitimate interest or right in the domain.  Lady Gaga’s legal team will undoubtedly be monitoring the site from this point forward, waiting for the day it involves or links to some commercial activity. Interestingly, the owner of the domain name, listed as “oranges arecool XD,” owns more than 2,000 domain names, including many related to celebrities (link). Take-Home Message While famous entities such as celebrities, companies, and universities usually have rights in domain names that attempt to take advantage of their fame, completely non-commercial “fansites” can be an exception.  To regain these domain names, the entity may have to consider alternatives to the UDRP process or litigation, such as offering to purchase the domain outright from the owner.

Upblog, my co-blogger Blaine linked a Daily Princetonian article that reported concern over some harm to "the scholarly industry." That phrase struck me, "the scholarly industry." What does it describe and evoke in a reader's mind? Is it a phrase that resonates positively, or negatively? It probably depends on the reader. "The Scholarly Industry" does suggest a pro-intellectual-property position in that it suggests that universities should be driving commerce and also the phrase evokes the classic industrial era, which was a time of growth under an intellectual property based legal regime.

The Open Access Movement is the name given to the trend among academics to retain copyrights in their scholarly work rather than assign them to a journal or other publishing entity.  One of the primary driving forces behind the movement is the desire to freely share information without pay-walls or other barriers. Princeton University recently joined this movement by formally adopting an open access policy for scholarly work produced at the university (see “Princeton University Faculty Commit to Open Access” and “Open access policy adopted”).  Under this policy, the faculty agreed to grant the University a “nonexclusive, irrevocable, worldwide license to exercise any and all copyrights in his or her scholarly articles published in any medium, whether now known or later invented, provided the articles are not sold by the University for a profit, and to authorize others to do the same.”  The policy is based on recommendations from a proposal (pdf) presented by the university’s Ad-hoc Faculty Committee to study Open Access earlier this year. Princeton joins several other universities who have similar open access policies.  Many of these universities recently formed the Coalition of Open Access Policy Institutions (“COAPI”), which hopes to “collaborate and share implementation strategies and advocate on a national level for institutions with open access policies.”

Earlier this year,135 university leaders across the country joined together in a pledge (pdf) to undertake greater efforts in commercializing university technology and to “ensure that the knowledge and technological breakthroughs developed through campus-based research was rapidly and broadly disseminated to advance the nation’s social and economic interests.” On September 16^th of this year – the same day that President Obama signed the America Invents Act into law – more than 40 of these universities released announcements discussing some of the specific efforts they have undertaken or plan to explore in response to their pledge.  A news release (pdf) from the Association of Public and Land-Grant Universities contains links to these announcements, including from New York University, SUNY Buffalo, and the University of Rochester, among others. A recent blog post from the Office of Science and Technology Policy at the White House (“America's Universities Growing the Economy With “Lab to Market” Initiatives”) further outlines some of the efforts planned by these universities.

Case:  CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP (W.D.Pa. 9-28-2011) What happened: Carnegie Mellon University tech transfer office circulated an invention disclosure relating to disc drives. The tech transfer office was informed that a different inventor from Seagate had previous worked on a similar technology, but the Seagate inventor stated that, “[The Carnegie Mellon professors’] invention is related, but goes beyond my work and is probably more interesting." It is unclear whether the tech transfer office knew that Seagate had already filed a patent application on the earlier work of its inventor. Perhaps not surprisingly given the encouragement of the Seagate inventor, Carnegie Mellon filed patent applications on the work of its inventors. In the fullness of time, Seagate got a patent for its early work and Carnegie Mellon got two patents for its later developments and refinements. Carnegie Mellon proceeded to sue Marvell for patent infringement. Marvell is defended based on the theory that many of the claims of the Carnegie Mellon patents were anticipated by the prior art Seagate patent. Decision: No summary judgment of invalidity because the claims of the Carnegie Mellon patents had certain limitations not disclosed in the Seagate patent. Comment: It does not appear that the Seagate work was cited to the U.S. Patent Office during examination of the Carnegie Mellon patents. If the Seagate work was not cited, then this may have been due to the fact that the Seagate application was not published (this was back in the 1990’s) and further because the Seagate patent had not yet issued (it would not issue until several years after the initial Carnegie Mellon application was issued). It is not clear how much the Carnegie Mellon tech transfer office even knew about the specifics of the earlier Seagate work when they were prosecuting the Carnegie Mellon patent applications. It is difficult to say whether Carnegie Mellon would have been in a better or worse position if the tech transfer office had investigated the early Seagate work as soon as they found out about it, and had explicitly dealt with the early Seagate work in the text of the Carnegie Mellon patent applications themselves. Importantly, the district court opinion does not suggest there was any duty to investigate the early Seagate work on the part of the Carnegie Mellon tech transfer office. From a practical perspective, things seem to be going well for Carnegie Mellon on these patents at least at this point.

Case: Board Of Regents Of The University Of Wisconsin System v. Phoenix International Software, Inc. (7th Cir., Aug. 5, 2011) What happened:

This case presents complex questions about the law of trademark and the law of sovereign immunity, as the latter applies to a state university. . . . Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.” Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.”

Decision: On the trademark issue, the appeals court held that the issue of trademark infringement by the university software product was sufficiently close such that a trial would be needed to decide that issue. On the sovereign immunity issue, the state university waived its sovereign immunity when it filed suit in the federal district court seeking to reverse a decision made by the Trademark Office. Comment: Be careful not to lose sovereign immunity by litigation conduct, such as the filing of lawsuits.

Article: At the Chronicle Of Higher Education website, Alex Campbell reports that UNC has put in place measures to prevent and minimize unauthorized file sharing by students. Specifically, computers that have file sharing software will not be allowed to connect to the campus network unless and until that student/computer is awarded a “hall pass.” This hall pass involves a student pledge to report illegal file sharing, and apparently some education on copyright law. Interesting Quote:

The university has already seen a big drop in the number of dorm computers that use file-sharing software, from about 1,000 last year to about 50 this year. Of those 50, about half have opted for the hall pass. The other half remain quarantined and unable to access the network, officials say.