Copyright birth & death announcements
By Daniel L. Kegan. Kegan & Kegan, Ltd. daniel@keganlaw.com
Copyright © Daniel L. Kegan 2002.
Copyright death approaches for older unpublished works. Pre-1978 works that did not receive copyright protection before 1978 may, unless the works are published before January 2003, become public domain.
17 USC § 303 (a). Copyright in a work created before January 1, 1978, but not theretofore in the public domain or copyrighted, subsists from January 1, 1978, and endures for the term provided by section 302. In no case, however, shall the term of copyright in such a work expire before December 31, 2002; and, if the work is published on or before December 31, 2002, the term of copyright shall not expire before December 31, 2027.
The Sonny Bono Copyright Term Extension Act extended copyright terms by an additional 20 years, so the 2027 date in section 303(a) is currently extended to 2047.
Practice Tip. To extend copyright for pre-1978 unpublished works, ensure they are publicly disseminated before January 2003.
Section 203 transfer terminations. Under the 1976 Copyright Act, effective in 1978, the author of any work other than a work made for hire has an inalienable right to reclaim copyright 35 years after a transfer. 17 USC § 203(a). The termination of a transfer grant may be effected at any time during a period of five years beginning at the end of 35 years from the execution date of the grant. Termination does not impact copyright rights outside the United States. Add 35 to 1978 and terminations under the 1978 Act may be effective in 2013. Termination notices may be sent 10 years before the effective date. 17 USC § 203 (a)(4)(A). Thus, 2003 will see the first of the termination notices under the 1976 Act.
Of course, the 1909 Copyright Act had its transfer termination, now 17 USC § 304 (c), maturing 56 years after the statutory copyright first arose. Sound recordings, which were stealthily added to the statutory definition of works for hire and then removed, may or may not be covered by the 1976 Act.
Sonny Bono copyright term extension. The Supreme Court is scheduled to hear arguments in Eldred v. Reno, 74 FSupp2d 1 (DDC 1999), cert. granted, 01-0618, sub nom. Eldred v Ashcroft, on October 9, 2002. The Court is expected to decide many issues. Whether the recent 20-year extension of all copyright terms was constitutional? Does a retrospective extension promote the progress of science (in the eighteenth century meaning creative arts)? Was the extension constitutionally required to harmonize with European Union copyright terms?
In 1790 the maximum copyright term was 14 years with a 14-year renewal if the author was still living. Now copyright can easily exceed a century (life of the author plus 70 years). Our first Copyright Act was amended once in its first 150 years. In the past 40 years, the copyright term has been extended 11 times.
Internet issues. Napster did not fare well legally, but, perhaps akin to Columbus in 1492, it indicated there was a large potential market in that new territory. Now millions of visitors visit major music Web sites: BeMusic (Bertelsmann, 10 million in July 02), AOL (7 million), Clear Channel (6), Vivendi Universal Music (6), MTV (6), Launch (Yahoo, 5), Sony (4), Artist Direct (3), MSN (3), Lyrics (2), Warner Music Group (2), Winamp.com (2), Netscape (1) (New York Times C1, 2Sep02). Times author Saul Hansell suggests that with "radio controlled by a few chains and MTV playing videos less and less, the vanguard of music promotion has rapidly moved to the Internet." Plus, it is rumored even larger audiences travel the Internet for gambling and X-rated material. Where the public domain ends and proprietary rights begin is quite unsettled, not only in the USA but also the other hundreds of jurisdictions that overlay the Internet.
What's it all about, Alfie? Just in time to offer some perspective to this intellectual property confusion is the Spring 2002 issue of Daedalus (136 Irving St #100, Cambridge MA 02138, www.amacad.org/publications/ daedalus.htm). If you have any interest in the theory of intellectual property and why statutes are drafted as they are, Daedalus' hundred pages are well worth reading.
Adrian Johns, in "Pop Music Pirate Hunters," describes the crisis the music industry faced at the beginning of the new century. New technology and business practices challenged the copyright principles that long supported the industry. Pirates, using the revolutionary process permitting exact copying, replicate songs at a million copies a year or more. The public supports the pirates, disfavoring the monopolistic music industry, seen to exploit artist and public. The industry lobbies government to radically strengthen copyright law, and resorts to new tactics to combat the pirates. But wait, this is not Napster in 2001. It's the beginning of the twentieth century, when technologically, photolithography permitted inexpensive exact copies of original sheet music, and when socially, a piano mania swept late-Victorian England. It's an exciting detective story.
Judge Richard A. Posner contributes the lead article, "The law and economics of intellectual property." He suggests to "understand the law of intellectual property, and the muddle we're now in, you must first understand the law of physical property and the social objectives of that law." The marginal cost of intellectual property, the cost of adding one more user, is very low, and can be negative. Unlike land, which is "found," intellectual property is created. Limiting the duration of the property right is one way to reduce its value to the owner and thus to reduce the amount of rent seeking--an economic evil in which speculators rush to be first to claim an asset and which leads to "excessive investment." (Yes, there are echoes of Federal Reserve Chairman Greenspan's "irrational exuberance").
The social task for intellectual property, Judge Posner suggests, is "striking the right balance between the interest in encouraging the production of intellectual property and the interest in promoting its widespread use." Economist Posner suggests there are no conceptual problems in this balancing, "the problems are entirely empirical," measurement problems of benefits and costs.
James Boyle, "Fencing off ideas: enclosure and the disappearance of the public domain," starts with the English enclosure movement--fencing off common land and turning it into private property--in commenting on the Digital Millennium Copyright Act, the European Database Protection Directive, and other contemporary issues. He suggests we ought to "insist on considerably better empirical and economic evidence before signing on to the proposals of the second enclosure movement" (the Internet and related areas). He also suggests we need to "make clear the current dangers to the public domain, in the same way that environmental activists in the 1950s and 1960s made visible not only particular environmental threats but the very existence of 'the environment' itself."
The environmental movement gained much of its political power by pointing out that there were structural reasons why lawmakers were likely to make bad environmental decisions: a legal system based on a particular notion of what 'private property' entailed, and a technological tendency to treat the world as a simple, linear set of causes and effects, ignoring complex interrelationship among natural systems. In both of these conceptual systems, the environment actually disappeared; there was no place for it in the analysis. Small surprise, then, that lawmakers were not able to protect it properly.
Carla Hesse reaches back a bit further into history, with "The rise of intellectual property, 700 B.C. - A.D. 2000: an idea in the balance." She sees intellectual property as a child of the European Enlightenment, only possible after people started to believe that knowledge came from the human mind working on the senses rather than through divine revelation assisted by the study of ancient texts.
Daniel Kevles, "Of mice and money: the story of the world's first animal patent," recounts the history of the patented Harvard mouse. (With Internet mice increasing, Walt Disney's Mickey Mouse initial copyright life hanging by a Sonny Bono Extension thread, and current patentability advanced by the Harvard mouse, need we worry about the apparent mouse invasion?)
"Public vs. proprietary science: a fruitful tension?" spotlights conflicts by Rebecca Eisenberg and Richard Nelson of interest as the role of for-profit research expands within science, especially biotech and the human genome project. Also discussed, the practical permutation of the Bayh-Dole Act, by which businesses and universities can claim property rights to technology created under publicly funded programs.
Marcia Angell and Arnold Relman, "Patents, profits and American medicine: conflicts of interest in the testing and marketing of new drugs," suggest that investor-owned businesses sponsoring most of the clinical trials that bring newly patented drugs to market present multiple conflicts of interest for nearly everyone involved.
As bonus material to the IP professional, don't forget the short-end articles. WG Runciman, "On Darwin and sociological theory today," Leo Breiman, "On McCarthyism at Berkeley: the enemy is us," and Wendy Doniger, "On the Kamasutra."
Constitution.com: U.S. constitutional
arguments in ICANN arbitration hearings
By Christopher Loweth. cloweth@wwfirm.com Wallenstein & Wagner
Is there a constitutional right in the United States to register a domain name? The Uniform Domain Name Dispute Resolution Policy (UDRP) was adopted on August 26, 1999. When drafted, it was intended to serve as an framework for international arbitration that would affect domain name rights across the world.
However, as more and more arbitration hearings are being held, more and more parties are asserting rights based on the U.S. Constitution. In preparing briefings for domain name arbitration, counsel may encounter a respondent, or even possibly a client, who asserts a right to a domain name based on the U.S. Constitution.
Here is a brief summary of recent arbitration decisions which consider constitutional concerns. Generally, arbitrators give short shrift to constitutional arguments. Nevertheless, a growing line of cases are considering free speech and fair use rights in denying transfer of domain names.
ICANN dispute policy intended to be forum neutral
When initially drafted and promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP was neutral as to what country's law would apply. The UDRP was intentionally drafted to be implemented across the world. It was anticipated that arbitration panels would draw from people across the world. It was also anticipated that administrative proceedings could be held in any language that was used by a Domain Register.1
The drafters of the UDRP also realized that courts of different countries would have jurisdiction over different domain names. The UDRP intentionally informs domain name holders that they are subject to the jurisdiction of other courts. According to the UDRP:
All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory arbitration proceeding provisions. . . shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.
Clearly the UDRP was drafted to be forum and choice of law neutral. Which raises the following question: how are constitutional arguments getting into ICANN arbitration proceedings?
General trend--constitutional concerns beyond scope of proceeding
A frequently cited ICANN arbitration opinion is Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000), which stands for the general principle that issues of free speech are outside the scope of ICANN arbitration. This seems fair and reasonable, but becomes more curious when one realizes that neither party in the KwaSizabantu case resided or did business in the United States. Nor did either party raise any free speech arguments.
Nevertheless, this decision is often cited by other arbitration panelists when dispensing with arguments based on U.S. Constitutional rights. See Robo Enterprises Inc. v. Tobiason, FA0010000095857 (NAF Dec. 24 2000); New York Times Co. v. New York Internet Services, D2000-1072 (WIPO Dec. 5 2000); Northwest Airlines Inc. v. Jorgensen, FAO102000096586 (NAF March 28, 2001). In short, ICANN arbitrators are just as quick to dismiss constitutional arguments as respondent cyber-squatters are to raise them.
Signs of change
However, other arbitration decisions reflect a new awareness of constitutional rights in domain names. The ground for this change was paved by a Second Circuit Court of Appeals decision which stated that with regard to free speech rights:
Domain names . . . per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquire is one that fully addresses particular circumstances presented with respect to each domain name...." Namespace Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2nd Cir. 2000).
Using this "particular circumstances" doctrine, various panelists have considered constitutional arguments in arbitration decisions. See Bridgestone Firestone Inc. v. Myers, D2000-0190 (WIPO July 6 2000); Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24 2000); TMP Worldwide v. Potter, D2000-0536 (WIPO Aug. 5 2000); North American Wilderness Recovery Inc. v. Citizens With Common Sense, FAO1040000097058 (NAF July 1 2001).
Most surprising of these decisions is Bridgestone, which denied transfer of a confusingly similar domain name based on free speech interests. The decision was based primarily on the fact that the respondent domain name owner did not use a <trademark.com> domain name, but instead the <.net> level domain name. This line of decisions is likely to come into collision sooner or later with the line of decisions which put free speech and fair use rights outside the scope of arbitration decisions.
Conclusion
In conclusion, constitutional free speech and fair use rights in registering a domain name are up in the air, at least as they relate to ICANN arbitration. As the new year arises, look for more ICANN arbitration decisions to consider, and possibly agree with, constitutional arguments based on free speech and fair use.
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1. According to the Rules for implementing the UDRP "the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the panel to determine otherwise."
By Adria Morris. Catchword.adria@catch-word.com
If anyone blinked in June 2001, they might have missed the cursory press coverage of the ICANN quarterly meeting in Stockholm. For anyone that is involved in the domain name industry, which many of us are, a few items deserve special attention.
(1) A working group of the ccTLD (country code top level domain) constituency of ICANN's Names Council voted 31 to 0 to withdraw from the Domain Name Supporting Organization (DNSO). Among the reasons cited in the preliminary report was lack of representation in the council, and thus no voice in DNSO policy shaping. Nevertheless, ICANN gleans almost 25 percent of its budget from the ccTLDs--one registry reported receiving bills form ICANN for "unspecified services." the minutes on this meeting will be posted on the ccTLD Web site at www.wwtld.org. this has potentially serious implications for the future of Internet cohesion, assuming we can say that it is relatively cohesive now.
(2) In the wake of the VeriSign/ICANN/DOC (Department of Commerce) deal to split the gTLD (global top level domain) registries agreement into three separate contracts with VeriSign retaining the .com and .net registries for the next several years), ICANN set out parameters for selecting a new administrator for the <.org> registry. Should ICANN choose, the decision allows for the creation of a new non-profit entity for this job. This entity would be subsidized by a contribution from VeriSign of $5 million. ICANN empowers the Names Council to set forth "policies for the entity's operation of the <.org> top-level domain (to the extent they are not to be established by the entity)."
The splitting off of the <.org> registry, designed as a first step towards breaking the VeriSign monopoly, seems to be only superficial.
(3) The DOC has not granted VeriSign anti-trust immunity--in the hopes (supposedly) that this will encourage VeriSign in turn to encourage competition in the registrar industry. The DOC has mandated that an independent audit be conducted annually to ensure that VeriSign's registry and registrar operations are well insulated from each other. Strangely, however, the independent auditor will then issue a report to ICANN, who then will "pass on" the report to the DOC, Department of Justice, and the public.
ICANN's preliminary report from the Stockholm meeting is posted at <http://www.icann.org/minutes/prelim-report-04jun01.htm>.
By Daniel Kegan. Kegan & Kegan, Ltd. Chicago
Copyright (c) Daniel Kegan 2002.
The Official Gazette for Patents stopped paper publication September 25, 2002; electronic publication on CD-ROM began October 1, 2002.
The third edition of the Trademark Manual of Examining Procedure (TMEP 3d) has been issued by the PTO, replacing the second edition.
Effective June 24, 2002, if an electronic form is available in the PTO's TEAS system and the applicant files an equivalent paper document by Express Mail, the filing date will be the date it is received by the PTO. The PTO amended 37 CFR § 1.10(a). The TTAB, currently, still provides filing dates for properly mailed Express Mail documents.
Some copyright office fees increased July 1, 2002. Registration applications remain $30; mask work applications remain $75; renewals increase from $45 to $60; Vessel Hull registrations from $75 to $200; recordation increases from $50 plus $15 per group of 10 titles to $80 plus $20 per group of ten titles; bibliographic and reference work increases from $65 to $75 per hour; expedited service surcharge increases from $75 per hour to $200 per hour; plus various other changes.
The Swiss Intellectual Property Office revoked the registration of the bin Laden trademark after reviewing the brand name in view of the September 11, 2001 attacks in New York and Washington DC. The registrant is Falcon Sporting Goods.
Using photographic copies of plaintiff's copyrighted works in a collector's guide may be fair use if it is the only way to prepare such a guide. Ty Inc v. Publications International Ltd, 63 USPQ2d 1055, (7th Cir. 2002).
The Ontario, Canada, bankruptcy court held the trustee cannot sell the bankrupt's assigned copyrights in musical works, without dealing with the composer, whose royalty rights are protected under the Bankruptcy Insolvency Act. The trustee may be able to sell copyrights in recordings, if they were made by the producer, despite contractual provisions requiring consent before assignment, or terminating the contract upon bankruptcy. In the Matter of the Bankruptcies of The Song Corporation, O.J. No. 13 (Ont. Sup. Ct; J Spence).
Some MC Escher graphics were in the public domain, being published without notice as required by the 1909 Copyright Act, but were restored to copyright protection, 17 USC § 104A. Plaintiff granted partial summary judgment on liability. Cordon Holding B.V. v. Northwest Publishing Corp., 63 USPQ2d 1013 (SD NY 2002).
Plaintiff Ronald Protas, heir to dancer Martha Graham's estate, had claimed exclusive rights to use Graham's name, teachings, repertory, and related theatrical properties. Judge Miriam Cedarbaum disagreed, ordering him to pay the Martha Graham Center of Contemporary Dance over $240,000 for licensing fees unnecessarily paid and for materials owned by the Center he sold to the Library of Congress (WSJ D8, 28Aug02). Last year the court held Protas could not prevent the Center from using its founder's name or from teaching her dance methods. This year the court found the Center held copyrights to 45 dances, claimed by Protas, and related settings and costumes.
Plaintiff's claims for declaratory judgment of copyright ownership and for copyright infringement were both bared by laches. The 30 years caused both evidentiary and expectations-based prejudice, and there was no evidence of willful infringement nor fraudulent concealment by defendants. Mappa Music Co. v Universal-Polygram International, 62 USPQ2d 1582 (CD CA 2001; song "Gonna Get Along Without Ya Now).
A cache of personal writing attributed to Malcolm X was offered for auction on eBay, disturbing both family and scholars (NYTimes A1, 7Mar02). The owner acquired the papers from a self-storage center's auction, a frequent proceeding after renters die or default on payments.
The law of secured transactions has changed. Security interests will need to remain continuously perfected to have priority over competing creditor claims. Transition dates differ for four states--Alabama, Connecticut, Florida, and Mississippi. Security interests in intellectual property have been tricky in the past, and the rules just changed.