Elsevier involved a class action copyright case.  A class of freelance journalists was certified by the district court (SDNY) to finalize a settlement agreement involving class copyright claims against online publishers and electronic databases.  The class included both journalists who had registered their work with the US Copyright Office under 17 USC 411(a), and journalists who had not registered their work.

On appeal, the Second Circuit Court of Appeals raised a subject matter jurisdictional challenge to composition of the class, sua sponte, refusing to recognize class certification.  The US Supreme Court reversed, affirming the class certification.

17 USC 411(a) provides, inter alia and with certain exceptions, that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”  

The Court explained this precondition is part of the Copyright Act’s remedial scheme. “It establishes a condition—copyright registration—that plaintiffs ordinarily must satisfy before filing an infringement claim and invoking the Act’s remedial provisions.”

On the other hand, the term “jurisdiction” refers to a court’s adjudicatory authority. “Accordingly, the term ‘jurisdictional’ properly applies only to ‘prescriptions delineating the classes of cases (subject matter jurisdiction) and the persons (personal jurisdiction)’ implicating that authority.’”

While perhaps clear in theory, the distinction between jurisdictional conditions and claim-processing rules can be confusing in practice. Courts—including this Court—have sometimes mischaracterized claim-processing rules or elements of a cause of action as jurisdictional limitations, particularly when that characterization was not central to the case, and thus did not require close analysis.

In Arbaugh v. Y & H Corp., the US Supreme Court described the general approach to distinguish “jurisdictional conditions” from “claim-processing requirements” of a claim:

If the Legislature clearly states that a threshold limitation on a statute’s scope shall count as jurisdictional, then courts and litigants will be duly instructed and will not be left to wrestle with the issue. But when Congress does not rank a statutory limitation on coverage as jurisdictional, courts should treat the restriction as non-jurisdictional in character.

The Court then considered whether §411(a) “clearly states” that its registration requirement is “jurisdictional;”  and ruled that it does not.

First, and most significantly, §411(a) expressly allows courts to adjudicate infringement claims involving unregistered works in three circumstances: where the work is not a U. S. work, where the infringement claim concerns rights of attribution and integrity under §106A, or where the holder attempted to register the work and registration was refused.

Separately, §411(c) permits courts to adjudicate infringement actions over certain kinds of unregistered works where the author “declare[s] an intention to secure copyright in the work” and “makes registration for the work, if required by subsection (a), within three months after [the work’s] first transmission.” 17 U. S. C. §§411(c)(1)–(2).

It would be at least unusual to ascribe jurisdictional significance to a condition subject to these sorts of exceptions.

In concluding that the District Court had jurisdiction to approve the settlement, the Supreme Court “expressed no opinion” on the settlement’s merits.  The Court also declined to address whether §411(a)’s registration requirement is a “mandatory precondition to suit.”

The Court’s opinion was delivered by Mr. Justice Clarence Thomas.  The Court’s other conservative members joined the opinion: Justice Roberts, Justice Scallia, and Justice Alito.  Justice Kennedy also joined the majority opinion.   Justice Ginsberg filed a concurring opinion that was joined by Justice Breyer and Justice Stevens.  Justice Sotomayor did not participate.

• SCO owns the UNIX software copyrights; and
• Novell slandered SCO’s title in the UNIX software copyrights by publicly claiming ownership of the copyrights, even though Novell actually knew copyright ownership was held by SCO. 

Under a ruling issued today by the trial court, Judge Ted Stewart, these questions will be decided by the jury.

In its most recent effort to dismiss the slander of title claim before trial, Novell filed a motion in limine to disallow evidence or argument by SCO on slander of title under the “mandate rule.”  Judge Stewart denied this motion.

The “mandate rule” was already discussed by Judge Stewart in an earlier decision that denied Novell’s motion for summary judgment.   According to Judge Stewart:

The mandate rule is an important corollary to the law of the case doctrine. The mandate rule is a “discretion-guiding rule” that generally requires trial court conformity with the articulated appellate remand, subject to certain recognized exceptions.

While a district court is bound to follow the mandate, and the mandate controls all matters within its scope, a district court on remand is free to pass upon any issue which was not expressly or impliedly disposed of on appeal. Further, the Court may decide issues that were necessarily implied by the mandate. 

However, the mandate rule prevents a court from considering an argument that could have been, but was not, made on appeal.

Before the case was appealed to the Tenth Circuit, Judge Dale Kimball’s opinion found that Novell was sole owner of the UNIX copyrights.  Judge Kimball entered summary judgment in favor of Novell on various of SCO’s claims that depended on ownership, including the slander of title claim.

As Judge Stewart explained in his Memorandum Decision today, “copyright ownership issue was the sole basis” for the Judge Kimball’s earlier ruling on SCO’s slander of title claim.

Because the sole basis for Judge Kimball’s earlier summary judgment ruling against SCO on slander of title was lack of copyright ownership, and because the Tenth Circuit Court reversed that decision and remanded for trial, the Tenth Circuit Court’s opinion necessarily remanded for trial the claims whose resolution turned on the sole issue of copyright ownership– including slander of title.

Also see related article: Trial Judge Removes Final Obstacles to Trial in SCO v. Novell Slander of Copyright Title Case.

Attorney Kyle-Beth Hilfer has written an excellent article on the subject; recommended reading for anyone whose business involves social networking on sites such as LinkedIn (my favorite), Facebook or Twitter. Her article is here.

The short answer to whether Tweets are given copyright protection is “probably no.” 

First, as Ms. Hilfer explains, copyright law protects only “original expression.” It is hard (though not impossible) to find much original expression in short Tweets–most are reordering of words, short summaries of news events or mundane recital of facts (e.g., “I’m going to the store now.”)  Ms. Hilfer quotes an explanation from Nimmer on Copyrights about how the length of an expression affects its copyright protectability:

The shorter the expression, the harder it is to establish originality and creativity… There is a reciprocal relationship between creativity and independent effort. The smaller the effort (e.g., two words) the greater must be the degree of creativity in order to claim copyright protection. [citation omitted]

Second, copyright law allows “fair use” copying of someone else’s original work, under certain conditions.  Most Twitter broadcasts probably qualify as fair use. 

Generally, commentary on an underlying work is fair use, as long as the use does not cross the line from “commentary” to commercial misappropriation. 

For example, a Nation Magazine article about Pres. Gerald Ford’s memoirs crossed the line when the magazine exploited the headline value of President Ford’s memoirs before his book was published, thereby misappropriating the commercial value of the news event of the book release. (Harper & Row v. Nation Enterprises)

By contrast, the rap group 2 Live Crew’s parody song of Roy Orbison’s 1964 hit song, “Oh, Pretty Woman” did not cross the line from commentary to misappropriation, where the commercial value of the Orbison song remained intact, and the 2 Live Crew song was social parody on the dismal life of “nameless streetwalkers” glamorized in the Orbison song. (Campbell v. Acuff-Rose Music)

In today’s networked world, commercial music mashups are probably not fair use, while Twitter broadcasts probably are fair use.

A great number of Twitter broadcasts seem to be commentary on other events.   These Twitter broadcasts probably qualify as fair use commentary of another author’s work, just as 2 Live Crew’s rap parody of “Oh, Pretty Woman” qualified as social commentary fair use.  

Another great number of Twitter broadcasts are mundane announcements of personal comings and goings.  Under the second factor determining fair use (the value of the materials used), this category of Tweets probably has little inherent commercial value.  Therefore, rebroadcast of these Tweets might be fair use for lack of inherent commercial value.

Some Twitter broadcasts might have actual commercial value—such as the Tweets of celebrities.  A celebrity might argue that his or Tweets have inherent commercial value.  A rebroadcast of celebrity Tweets or compilation of Tweets might fail the fair use test if the rebroadcast is for commercial purposes and “market harm” (the fourth fair use factor) can be shown by the celebrity.

There are other reasons why Twitter broadcasts might not be copyright protected, such as the limitations of terms of use in the Twitter license agreement.  Ms. Hilfer’s article discusses these issues in some detail.

In today’s networked world, one should expect that Twitter broadcasts are not copyright protected for a number of possible reasons: (a) lack of original expression, (b) the content is social commentary, (c) the content lacks inherent value, or (d) licensing restrictions.

Jury trial is set for March 8, 2010 in Utah Federal District Court.

In the first ruling, the court denied Novell’s motion to set aside a judgment that was entered before appeal of a summary judgment decision to the Tenth Circuit, but not made part of the appeal.

In the second ruling, the court held that SCO’s special damages claims for slander of copyright title against Novell may include lost sales, but may not include any decrease in stock value resulting from the alleged slander of title.

If SCO prevails on claims that Novell slandered its copyright title in UNIX (by claiming ownership when it knew that ownership had already passed to SCO), attorney’s fees associated with removing the cloud placed on the title of the copyrights would be recoverable; while fees not associated with removing the cloud placed on the title would not.

Background

In July 2007, Judge Dale A. Kimball ruled on summary judgment that Novell owned copyrights to the UNIX operating system.

UNIX is the enterprise-level computing platform used by most large companies. UNIX is also the platform that Linux tries to emulate—and replace.  For this reason, ownership of the UNIX copyrights is broadly relevant in the enterprise computing marketplace.

On summary judgment, Judge Kimball further ruled on the amount of certain royalty payments that SCO owed Novell under a separate agreement.

SCO APPEALED the copyright ownership issue to the Tenth Circuit, but Novell DID NOT appeal the trial court’s order regarding the royalty payments.

In August 2009, the Tenth Circuit Court of Appeals REVERSED the summary judgment on the copyright ownership issues, finding issues of fact that must be decided by a jury. The case was remanded for trial, currently scheduled for March 8, 2010.

On remand, Judge Kimball recused himself and Judge Ted Stewart is the new trial judge.

The Mandate Ruling

Novell filed its motion to set aside the earlier summary judgment on the royalty issue under a Rule 60(b) motion.  Judge Stewart denied the motion  under the “mandate rule” governing cases after appellate remand.

The mandate rule generally prevents a court from considering an argument that could have been, but was not, made on appeal.

Judge Stewart explained that the argument raised by Novell regarding royalty payments “could have, and should have, been raised on appeal.”

Novell could have easily argued to the Tenth Circuit that, if the decision concerning ownership of the copyrights was reversed, the decision concerning royalties should similarly be reversed. It did not.

Judge Stewart also explained the limited nature of the mandate issued by the Tenth Circuit governing proceeds on appeal. The Tenth Circuit’s mandate is as follows:

[W]e AFFIRM the district court’s judgment with regards to the royalties due Novell under the 2003 Sun-SCO Agreement, but REVERSE the district court’s entry of summary judgment on (1) the ownership of the UNIX and UnixWare copyrights; (2) SCO’s claim seeking specific performance; (3) the scope of Novell’s rights under Section 4.16 of the APA; (4) the application of the covenant of good faith and fair dealing to Novell’s rights under Section 4.16 of the APA. On these issues, we REMAND for trial.

This is not a general mandate. The mandate is very specific. The Tenth Circuit has remanded this matter to the Court for trial on those four specific issues identified in the mandate. Because of the specific nature of the mandate, the Court is not free to explore matters outside of it. Even
if the Court could do so, the Court is not inclined to allow the parties to litigate this case anew.

Jury trial on SCO’s slander of title claim and the general UNIX copyright ownership matter is set to begin in Utah Federal District Court on March 8, 2010.

The Special Damages Ruling

SCO has alleged, among other things, that Novell slandered its UNIX copyright title by improperly claiming ownership to UNIX.

These claims will go to trial along with the general ownership issues.  As noted above, SCO’s special damages for the slander of title claims may include the resulting lost sales, but may not include any resulting diminished stock price.

But Michael Gillis is not alone. The ease of combining two or more digital tracks has lead to an explosion of mashup songs and videos on YouTube.

Many online commentators say only that mashups fall into a “gray area” of copyright law.

However, the 1994 landmark US Supreme Court case, Campbell v. Acuff-Rose Music, provides a fairly clear roadmap to evaluate 3 of the 4 factors for deciding whether music mashups and other compilations are “fair use” under copyright law.

In Acuff-Rose Music, the rap group 2 Live Crew had based a song on Roy Orbison’s 1964 hit song, “Oh, Pretty Woman.” The Supreme Court focused largely on the first fair use factor: “the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes.”

Under the “purpose and character of the use” factor, the Supreme Court found 2 Live Crew’s song to be a fair use parody of the Orbison song. The court found the 2 Live Crew song was “clearly intended to ridicule the white-bread original and remind us that sexual congress with nameless streetwalkers is not necessarily the stuff of romance and is not necessarily without its consequences.” The court explained:

For the purpose of copyright law, the nub of the definitions…is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works.

The court thus saw 2 Live Crew’s song as “social commentary” on the lives of nameless streetwalkers; commentary on Orbison’s underlying work that was parody and allowed under copyright law as fair use.

The court then distinguished fair use parody from plain vanilla copying, which the court described as:

Commentary with no critical bearing on the substance or style of the original composition, which the alleged infringer merely used to get attention or to avoid the drudgery in working up something fresh. The claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish) and other factors, like the extent of its commerciality loom larger. Parody needs to mimic an original to make its point…

While there is no “bright line test,” it nevertheless seems that music mashups and digital sampling nowadays are typically not social commentary on an author’s work, but rather involve straight-forward, albeit very creative, borrowing of another’s work.

Since the normal case of mashups is a straight-forward borrowing of other music it would seem, under Acuff-Rose Music, that the claim to fairness in borrowing from another’s work diminishes accordingly–if it does not vanish.  Other factors, like the extent of its commerciality, therefore ”loom larger.”

Based on this analysis, typical mashups and digital sampling are probably not protected under the first factor for determining fair use.

We turn to the other 3 factors for fair use as directed by the US Supreme Court, particularly “the extent of its commerciality.”

The second fair use factor, “the nature of the copyrighted work,” “draws on Justice Story’s expression, the ‘value of the materials used.’ This factor calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied.” Acuff-Rose Music, 510 US at 586.

In Acuff-Rose Music, the US Supreme Court that the Orbison’s original creative expression falls within the core of the copyright’s protective purposes.” Indeed, the Copyright Act §102 states:

Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: … (2) musical works, including any accompanying words; … (6) motion pictures and other audiovisual works; (7) sound recordings.

Undeniably, songs created by musicians are copyright protected as original creative expression that falls within the core of the copyright’s protective purposes. It seems difficult for mashup and digital sampling artists to advance any meaningful argument to the contrary. The second fair use factor probably then favors artists whose works are “borrowed” in any case against a mashup artist, at least insofar as parody is not involved.

The third fair use factor is, “in Justice Story’s words, whether the quantity and value of the materials used” are reasonable in relation to the purpose of the copying. In reviewing the quantity and value of the Orbison song used by 2 Live Crew, the Supreme Court in Acuff-Rose Music found a repetition of the bass rift lifted from Pretty Woman and used by 2 Live Crew. However, the court expressed no opinion whether the bass rift was excessive copying.

In the mashup and digital sampling world, the musical art involved is re-combining several underlying songs into one new song. Typically a substantial portion of the underlying musical work is imported and re-combined with other musical works. A fascinating dynamic of this process is that the more different songs that are used in the mashup, the proportionally less quantity any single song involves.

By comparison, in Acuff-Rose Music, 2 Live crew’s song copied the original song’s first line, “but then quickly degenerated into a play on words, substituting predictable lyrics with shocking ones.”

However, unlike the case of 2 Live Crew, virtually all of a mashup artist’s work involves the work of other people—there is virtually nothing original except the way the music is compiled. Therefore, the third fair use factor would also seem to favor artists whose works are used in any case against a mashup artist.

The fourth fair use factor is “the effect of the use upon the potential market for, or value of, the copyrighted work.” Courts must consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also “whether unrestricted and widespread conduct of the sort engaged in by the defendant would result in a substantially adverse impact on the potential market for the original.” Nimmer on Copyrights § 13.5[A][4], p.13-102.61.

In Acuff-Rose Music, the Supreme Court noted that a “presumption” of market harm will only apply in a case of verbatim copying of the original work in its entirety for commercial purposes, such as in Sony Corp. v. Universal City Studios. The court found that the 2 Live Crew song was not a case of verbatim copying; the court therefore remanded the case for a market analysis of the fourth fair use factor.  (The case thereafter settled and market analysis was never completed.)

If a mashup is found to be verbatim copying, the presumption of market harm will apply.  See, e.g., Leadsinger v. Bmg Music (karaoke music was not fair use).  If a mashup is found not to be verbatim copying, there will be no presumption of market harm, and the “market harm” analysis of the fourth fair use factor will come into play.

In a mashup case, the extent of a mashup’s commerciality undoubtedly varies from case to case.

For example, Wikipedia notes that Girl talk has produced 4 LPson the record label Illegal Art, and EPs on 333 and 12 Apostles. To casual observation, this looks like material commercial activity. Undoubtedly many other mashups fall into a category of hobbyist activity with little commercial focus.

An important question in each case, however, is not just the market for mashup music, but also “whether unrestricted and widespread conduct of the sort engaged in by the [mashup artist] would result in a substantially adverse impact on the potential market for the original.  Even non-commercial mashup activity might, in some cases, adversely impact the potential market for the original.

Summary

Unquestionably, mashup and digital sampling music compilations require significant creative talent. However what is the nature of the talent involved? It seems that the talent is in compilation. The mashup artist has a creative skill to compile underlying works in a new and original way.

In this regard, mashup music is a derivative work based on two or more underlying copyrighted works.   The derivative work cannot be performed without license to the underlying work, unless the fair use defense applies.  However based on the above analysis, the fair use defense does not seem very strong.

Fair use is an affirmative defense that must be raised and proved by the mashup artist against any claim for infringement brought by authors of the underlying works.

1. The fair use defense for mashups, in the typical case, does not seem to involve parody or commentary, and therefore probably would not easily persuade under the first fair use factor: the “purpose and character of the use.”
2. Protection of the underlying musical works is unquestionably a core purpose of copyright law, and therefore a mashup artist probably would face an equally difficult persuasive task under the second factor for fair use.
3. The entirety of a mashup involves the substantive creative work of two or more other people, with no originality except in its compilation. Therefore a mashup artist also faces a difficult challenge of persuasion under the third factor for fair use, evaluation of the quantity and value of the borrowed work.
4. The fourth factor for fair use, the ”market harm” analysis depends first on whether copying is verbatim, in which case market harmis presumed.  Without verbatim copying, the extent of commercialization and impact on the market must be analyzed in each case. 

Based in large part on Campbell v. Acuff-Rose Music, it appears that typical mashup musical works may  not prevail in a “fair use” defense under at least three of the four copyright fair use factors.