Let me start with a disclaimer.  This column is not really about intellectual property.  It’s about the unexpected – what happens when people stick to their principles and challenge the way it’s always been done.  Actually, this column is about a horse.  (But I’ll say something about intellectual property along the way.)

I have a second disclaimer.  I do not like horseracing.  It is physically stressful on the horses (who are mostly two and three–year olds) and they frequently get injured.  It is also a sport that often treats horses as disposable commodities; many racehorses are sent to slaughter after failed careers, although that is changing.  But this is a story with so much goodness, it has to be told.

First, the horse.  He is California Chrome.  He’s a three-year-old thoroughbred racehorse.  He now has a large fan club of “chromies” on social media everywhere.  The press calls him the Cinderella horse and the Sacramento Bee’s cartoonist Tom Meyer even portrayed him as a commencement speaker in Tuesday’s paper.  The press didn’t call him anything until he won the Kentucky Derby, the first leg of the Triple Crown, on May 3.  He was definitely under the radar, born and raised in California and starting his racing career here, in a sport dominated by Kentucky-bred horses.  Then there were those who said he couldn’t win the Preakness Stakes, the second leg of the Triple Crown.  On May 17, he won that one too, against a field of mostly fresh horses (horses who had not raced in the Kentucky Derby two weeks earlier and had had longer times to recuperate).

California Chrome is a chestnut colt with a white blaze and four white stockings.  Chestnut is a color like a shiny new copper penny.  The white markings are called “chrome” in horseracing.  His name was picked by a waitress out of several choices provided by the owners.

California Chrome was born in 2011 in Coalinga, California.  California Chrome’s sire (father) was Lucky Pulpit, who won some races in California.  His dam (mother) was Love The Chase, who won one of the six races she ran.  California Chrome was her first foal.

Trainers of other horses have observed that California Chrome has an easy-going personality, doesn’t get overly anxious going into the starting gate, and knows how to control his speed.  I could go on and on about this horse (or any horse for that matter), but I’ll move on. Continue Reading Best of Luck to California Chrome!

This column addressed the Ninth Circuit’s decision in the case Petrella v. Metro-Goldwyn-Mayer, Inc., et al., approximately 18 months ago.  The Ninth Circuit held that the equitable defense of laches could be asserted to bar a claim for copyright infringement even if it was filed within the three-year statute of limitations.  As the column pointed out at that time, Justice Fletcher concurred in the opinion only because that it was consistent with prior Ninth Circuit precedent but pointed out that there had been a split among the various circuits as to whether this was a proper result.  Earlier this week, the U.S. Supreme Court considered this circuit split and found that the Ninth Circuit erred in allowing the defense of laches to bar a claim for infringement that was brought within the three year statute of limitations.

A short recap of the facts of the case are as follows:  Jake LaMotta retired from boxing and with his friend, Frank Petrella, worked together to write a book and two screen plays concerning LaMotta’s life.  The works were registered with the U.S. Copyright Office.  One screen play in 1963, a book in 1970 and another screen play in 1973.  In 1976, Frank Petrella and LaMotta assigned their rights in the three works to a production company, which subsequently assigned the motion picture rights to MGM in 1978.   MGM released “Raging Bull” in 1980.

Mr. Petrella passed away in 1981 and his copyright renewal rights passed to his daughter Paula.  (Note: When an author dies prior to the beginning of a copyright renewal period, his successors get his or her renewal rights even if the author previously assigned the rights.)  Ms. Petrella filed a renewal application for the 1963 screen play in 1991.  She later retained an attorney who contacted MGM and others between 1998-2000 to notify them of Ms. Petrella’s copyright interest in the 1963 screen play and claiming that their exploitation of derivative works, including the motion picture Raging Bull, constituted infringement of her rights.  MGM responded by denying that it infringed on any of Ms. Petrella’s rights.  Ms. Petrella then waited almost a decade before filing suit against MGM and others in 2009.  Prior to trial, the district court granted summary judgment in the defendant’s favor on the basis of the doctrine of laches.  This was despite the fact that plaintiff had alleged that MGM had continued to infringe on her rights within the three year statute of limitation set forth in section 17 U.S.C. §507(b).  The Ninth Circuit affirmed the judgment based on laches in 2012 and plaintiff appealed that decision to the U.S. Supreme Court. Continue Reading Raging Bull Revisited – Copyright Infringement and the Laches Defense

On April 22, 2014 the United States Supreme Court heard oral arguments in the case of American Broadcasting Company (“ABC”) v. Aereo.  Although this case has been overshadowed by other matters on the Court’s docket and has received very little media attention, the Court’s decision will potentially have an impact on copyright law that is as significant as the vindication of the VCR in Sony v. Universal.

Aereo’s technology enables thousands of viewers to watch television online.  Aereo accomplishes this by assigning a tiny television antenna to each of its subscribers.  This tiny antenna is then connected to a private digital video recorder (“DVR”) located in a facility maintained by Aereo.  Aereo’s subscribers can access their private DVRs over the Internet to retrieve the content recorded through the use of their personal antenna.  Aereo’s technology has created an uproar from the television industry more raucous than Lars Ulrich’s response to Napster.  Fox Broadcasting even indicated that, should Aereo be permitted to remain in business, Fox may seriously consider getting out of the broadcast business entirely.

At issue is a dispute over the interpretation of a portion of copyright law centered on what activities amount to a “public performance” of copyrighted work.  Under United States Copyright law, performance of a copyrighted work may include “transmitting . . . the work . . . to the public, by means of any device or process.”  ABC, Fox and the other broadcasters claim that Aereo’s services amount to copyright infringement because Aereo’s services amount to “public performances” of copyrighted works.  In its defense, Aereo makes an interesting argument.  Aereo claims that it is not transmitting to the public at large, rather it is transmitting each of the copyrighted works thousands of times, directly to individual subscribers.  According to Aereo such a transmission is therefore not made “to the public.”  Aereo also argues that each of these “private” transmissions simply provides the Aereo subscriber with content that already was broadcast to the public without charge over public airwaves.  Aereo therefore asserts that it is merely allowing its subscribers to receive freely broadcast television content, store it in a private space at Aereo’s facilities, and later rebroadcast it to the subscriber through a secure internet connection at the time of the subscriber’s choosing.  Therefore, according to Aereo, its services are much more like “time shifting,” a practice that the Supreme Court approved when it decided the Sony v. Universal case in 1984.

The broadcasters claim Aereo’s activities act more like a cable company.  Cable companies receive freely broadcast content, then retransmit that content to cable subscribers.  Cable companies pay a license fee for the right to do this and, not surprisingly, broadcasters feel that Aereo should be required to pay this fee.  Aereo believes its model is distinguishable from a cable TV system.  Aereo claims it is only a replacement for the antennas that its users would otherwise put on their own rooftops.  They are not transmitting or retransmitting anything to the “public,” they are simply rebroadcasting private content recorded on a private DVR after being captured on a private antenna.

Obviously the outcome of this case could have a far-reaching impact on the types of services that are offered using the internet, or at the very least will have a significant impact on the cost of such services.  For now, we will keep watching and waiting for the Court’s ruling.  Stay tuned.

Under the WIPO Internet Treaties, member states are required to recognize in their national laws  the exclusive right of  authors of works to ‘‘make [the works] available’’ and ‘‘communicate [the works] to the public’’, including through interactive platforms, such as the Internet. The United States implemented the WIPO Internet Treaties through the Digital Millennium Copyright Act (‘‘DMCA’’) in 1998.  Based on advice received from the Copyright Office and others, Congress did not amend U.S. law to include explicit references to ‘‘making available’’ and ‘‘communication to the public,’’ concluding that the distribution right under the Copyright Act already covers those rights.  However, because of  the absence of express “making available” language in the Copyright Act, courts in file-sharing litigation have reached somewhat different conclusions as to whether the distribution right requires proof of actual dissemination.

Commentators on the subject have opined that the “making available” right is subsumed within the distribution rights set forth in Section 106 of the Copyright Act and that most courts have correctly interpreted the Act as such.  These courts have found that a defendant infringes the distribution right by making the work available without having proof that the work was actually accessed by others.  For example, in  A&M Records, Inc. v. Napster, the 9th Circuit held that “Napster users who upload file names to the search index for others to copy violate plaintiffs’ distribution rights”.  Also in UMG Recordings, Inc. v. Alburger, the United States District Court for the Eastern District of Pennsylvania held that “There is no requirement that plaintiffs show that the files were actually downloaded by other users from Defendant, only that files were available for downloading.”

However, it appears that some courts have concluded that an infringement of the distribution right under the Act does not occur in the absence of actual dissemination. For example, in Atlantic Recording Corp. v. Howell, the District Court of Arizona  held that “[the distribution right] is not violated unless the defendant has actually distributed an unauthorized copy of the work to a member of the public.”  Continue Reading Will The Copyright Act be Amended to Include a “Making Available” Right