Knitwit BBC Goes After Dr Who Fans

Here's a fascinating UK legal analysis of an incident we see occurring all over the world: an over-eager rightsholder undermining Internet goodwill by pursuing their own fans for supposed IP infringements.

Andre Guadamuz, is a lecturer at the Edinburgh University school of law, and organizes the fantastic British conference on "geek law", Gikii. He was recently put in contact by the Open Rights Group with Mazzmatazz, a Dr Who fansite which posts knitting patterns of the current batch of Dr Who monsters, including those obedient servants of man, the Ood (see above).

BBC Worldwide, the commercial wing of the public service BBC, sent the site a demand to remove "any designs connected with DR WHO" -- even though the site was offering them free to anyone who wants to knit their own loveable Who-related terrors.

Guadamuz covers the legal ground, and suggests that, like many rightsholders, the BBC has less power to stop fans from creating their own transformative works than they might think. Sadly, that's not enough to save the woolly Ood designs which were taken down out of concern for just the threat of legal action.

As Guadamuz notes, the BBC and Dr Who production staff should know better than to pursue a campaign of online threats against their own fans. These are the people that kept the BBC's now-lucrative Who franchise going during years of neglect by its owners; these are the people who actively promote the current series; and, in the UK at least, these are the people who pay the bulk of BBC's salaries.

Like Dr Who's Ood, fans are happy to serve their favorite franchises when treated well. But if the BBC starts treating them like this, they can all too easily rise up and attack the very brand value the BBC is overzealously seeking to protect.

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House Passes Controversial PRO IP Act

Today, the House passed the controversial PRO IP Act (H.R. 4279) 410 to 11, with 12 representatives not voting.

While Public Knowledge and other groups successfully persuaded the House to remove the most damaging provision in the bill (seemingly written solely to increase damages in the RIAA's file-sharing lawsuit campaign), the bill would nonetheless significantly expand federal enforcement of copyright law.

The most outrageous provisions would create new and unnecessary federal bureaucracies devoted to intellectual property enforcement. None seems more ridiculous than language creating a Cabinet-level "IP enforcement czar" that would report to the President and coordinate enforcement efforts across government, a proposal that has been loudly opposed by the Department of Justice. Why is Congress spending our tax dollars on a new layer of officialdom that the cops themselves don't want or need?

Moreover, the bill also includes provisions — such as expanded forfeiture penalties and language "clarifying" that copyright registration is not required for criminal enforcement of the copyright -- that could be read to open the door to increased prosecution against individuals or innovators as well as large-scale commercial pirates.

The Senate has yet to introduce a companion bill, although some IP enforcement proposals in the Senate may serve as a basis for a bill. Stay tuned for more information should a bill turn up.

But there is a bright spot on the horizon -- Congress is finally revisiting important "orphan works" legislation that could expand the ability of technology users, archivists and libraries to store and exhibit works whose owners can't be found.

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Do You Own Your Software? WoW Glider Case Not Just About Getting to Level 70.

Unbeknownst to most software users, a lawsuit now at a critical stage could drastically expand the ability of software vendors to restrict how their customers can use their software.

Blizzard Entertainment, the company that makes the hugely popular massively multi-player online role-playing game World of Warcraft, sued Michael Donnelly, the developer of Glider, a program that helps WoW users raise their character level to 70 by “playing” for the user while the user goes to get a cup of coffee, read the paper, etc. The WoW licensing agreement ostensibly forbids using programs like Glider. Blizzard says that Donnelly illegally interfered with that agreement by selling Glider and, therefore, encouraging users to breach the license agreement by using the program.

Here’s the scary part: Blizzard also insists that because the license agreement forbids using Glider with WoW, Glider users are committing copyright infringement when they load copies of WoW into RAM in order to play the game. (Blizzard says Donnelly is contributing to that infringement.) If Blizzard’s theory were correct, Glider users could be on the hook for statutory damages, which could start at $750 per RAM copy. Blizzard’s theory would also give software vendors the power to stop the sale of software that interoperates with their product.

But Blizzard’s theory is wrong, because it confuses a copyright holder's intellectual property rights in the software it develops with a buyer's rights in the actual copy of the software. An owner of software has a right to copy it if that copy is essential to the customer’s use of the software. (See Section 117 of the Copyright Act.) This rule is a crucial part of the balance Congress crafted between the rights of the copyright holder to manage and benefit from its expressive work, and the rights of the public to innovate, recreate and otherwise use and build on that work.

Blizzard argues that players aren’t owners but merely software licensees, so section 117 doesn’t apply. But court after court has held that the question of whether a user is an owner for purposes of Section 117 depends the substance of the transaction, not just how one party wants to describe it. For example, if you buy the software, keep it on your own computer and don’t have to return it when you are done, you probably own it.

This is not to say that there might not be a contract, like the license agreement, that restricts use of the software. But violation of that agreement is a matter of contract law, not copyright, which means that different standards apply and there is no minimum statutory damages requirement.

Blizzard has filed for summary judgment on its claims. Given the facts of the case—Glider is, after all, a program that helps some folks cheat at WoW—there is a danger here that the court will lose sight of the implications of its ruling for all software users. Public Knowledge filed an amicus brief last week calling the court’s attention to those implications. We hope the court will take heed, and reject Blizzard’s absurd and overreaching copyright theory.

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Patent Reform Act Stalls in the Senate

Coauthored by EFF Activist Richard Esguerra

The progress Congress was making on the Patent Reform Act (S. 1145) has stalled and Senate Majority Leader Harry Reid has pulled the bill from the floor schedule.

The lack of progress is disappointing. Despite its flaws, the proposed legislation would make important and necessary changes to the patent law. In particular, the bill would limit damages for infringement so that they bear some relationship to the actual value of the damage to the patent owner.

S. 1145 would also have clearly defined situations in which defendants would be liable for willful infringement, which can result in treble damages for the losing party. Until the recent Federal Circuit Court of Appeals decision in In re Seagate Technology, the law allowed defendants to be found liable for willful infringement if they merely knew of the existence of the patent. As a result of that case, enhanced damages are now only available for willful patent infringement that is at least "objectively reckless."

One of the basic goals of the patent system is to get inventors to reveal the secrets of their technology — in published patent applications — so that others could build on it. The low threshold for a finding of willfulness, coupled with the threat of treble damages, chilled innovation by discouraging competitors from even reading each other's patents. In addition, many companies, especially small businesses, preferred to license patents of questionable validity rather than risk litigation.

The Wall Street Journal reported that negotiations between Senate Judiciary Committee members stalled over changes in the way damage awards would be made in patent infringement suits. Intellectual Property Watch also suggests that a political fight over the confirmation of federal judges may have played a role in the postponement.

At least the troubling portion of the draft committee report on post-grant review and third-party reexamination — the process by which the EFF Patent Busting Project fights bogus patents — is now off the table. Third-party reexamination allows organizations like EFF to protect the public interest, so we actively sought, with the community's help, to retain the procedures that provided for reexamination practice.

There's no schedule for when the bill will return. Most sources are reporting that the bill is not dead, but it appears that the committee members will have to resolve their differences before patent reform is to continue. Encouragingly, the committee chairman, Senator Leahy, expressed a strong interest in following through, saying in a statement: "Thousands of hours have been spent in negotiations to address the concerns of 100 Senators, hundreds of Representatives, and dozens of stakeholders. [...] I have said repeatedly that the time for patent reform is now. Unfortunately, some have yet to fully grasp this fact, and have stalled meaningful reform."

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Big Victory in Atlantic v. Howell: Court Rejects RIAA "Making Available" Theory

The district court in Atlantic v. Howell today denied the recording industry's motion for summary judgment against Mr. and Mrs. Howell, two lawyer-less defendants caught up in RIAA's litigation campaign against file-sharers. EFF filed an amicus brief on their behalf in the case and participated in oral argument.

In its order, the court delivers the most decisive rejection yet of the recording industry's "making available" theory of infringement (i.e., if someone could have downloaded it from you, you've violated copyright, even if no one ever did). Citing to the recent ruling in London-Sire v. Doe 1, the court concludes that "[t]he general rule, supported by the great weight of authority, is that infringement of the distribution right requires an actual dissemination of either copies or phonorecords." The court goes on to conclude that downloads by the recording industry's own investigator, MediaSentry, are not enough to establish distribution, at least based on the facts of this case (Mr. Howell maintains that, unbeknowst to him, the Kazaa software was sharing his entire hard drive). Finally, the court also suggests that P2P file-sharing may not implicate the distribution right at all, reasoning that what is really going on is a series of reproductions.

The likely next stop for Mr. and Mrs. Howell is a bench trial (neither party asked for a jury trial) in Phoenix, probably in September. EFF will continue to try to find them counsel.

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Liberate the B-24 Liberator!

Who owns the B-24, the bomber that helped win World War II? U.S. taxpayers paid for it, Consolidated Aircraft built it, U.S. military pilots flew it, but Lockheed Martin says it owns the bomber—or at least it owns the name.

Some readers may already be familiar with the case of John MacNeill, the respected graphic artist and illustrator who had several digital images of classic military aircraft removed from TurboSquid, a stock images site, after Lockheed Martin claimed the images infringed its trademarks. The central mark at issue? The term “B-24,” which Lockheed managed to register as a mark for use in connection with scale models of airplanes. That’s right, Lockheed Martin claims the right to control use of the term “B-24” in connection with models of, um, B-24s.

It is perplexing that this mark was granted in the first place, given that the term “B-24” is nothing more than a U.S. military model number used to describe the plane itself (descriptiveness is a traditional basis for rejection; that’s why you can’t register a trademark on the use of the term “cyberlaw” in connection with the practice of technology law). MacNeill’s situation is a perfect example of why we need that rule. If Lockheed had its way, no one could create 3-D images (or anything else that could be construed as a “model”) of famous military aircraft—from the B-24 to the F-117 Nighthawk, also known as the Stealth fighter.

But Lockheed should not have its way, because MacNeill’s images are protected by the nominative fair use doctrine. Nominative fair use means, in a nutshell, that it is OK to use a mark to accurately identify a product if using the trademark is necessary to identify the products, services, or company you're talking about, and you don't use the mark to suggest the company endorses you.

Unfortunately, the practicalities of the Internet make it all too easy for trademark owners like Lockheed to ignore fair use and shut down legitimate content. That is because online communication and commerce often depends on intermediaries like TurboSquid, who may not have the resources or the inclination to investigate trademark infringement claims. And, unlike the copyright context, there’s usually no counter-notice procedure. If targets of overreaching trademark claims can’t find counsel, they may have little or no recourse against a determined trademark owner.

Trademark owners—and the service providers they try to intimidate—need to learn that a trademark registration doesn’t give you a right to control everyday use of regular descriptive terms. Hoping to provide a little of that necessary education, we’ve sent an open letter to Lockheed’s licensing agency, demanding that they withdraw their improper objections so that Mr. MacNeill can go about his perfectly legitimate business.

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UMG Says Throwing Away Promo CDs is Illegal

In a brief filed in federal court yesterday, Universal Music Group (UMG) states that, when it comes to the millions of promotional CDs ("promo CDs") that it has sent out to music reviewers, radio stations, DJs, and other music industry insiders, throwing them away is "an unauthorized distribution" that violates copyright law. Yes, you read that right -- if you've ever received a promo CD from UMG, and you don't still have it, UMG thinks you're a pirate.

This revelation came in a brief for summary judgment filed by UMG against Troy Augusto. Augusto (aka Roast Beast Music Collectibles, eBay handle roastbeastmusic) buys collectible promo CDs at used record stores around Los Angeles and resells them on eBay. UMG sued him last year, claiming that the "promotional use only" labels on the CDs mean that UMG owns them forever and that any resale infringes copyright. EFF took Augusto's case to fight for the proposition that a copyright owner can't take away a consumer's first sale rights just by putting a label on a CD (after all, the Supreme Court first recognized the first sale doctrine when a book publisher tried the same thing with a label stating "may not be sold for less than one dollar," and we've seen patent owners trying the same trick on printer cartridges). In other words, EFF believes that if you bought it, or if someone gave it to you, you own it.

UMG seems to think that the "promotional use only" label somehow gives it "eternal ownership" over the CD. While this might make sense to a goblin living in Harry Potter's world, it's not the law under the Copyright Act. According to the first sale doctrine, once a copyright owner has parted with ownership of a CD, book, or DVD, whether by sale, gift, or other disposition, they may not control further dispositions of that particular copy (including throwing it away). It's thanks to the first sale doctrine that libraries can lend books, video rental stores can rent DVDs, and you can give a CD to a friend for their birthday. It's also the reason you can throw away any CD that you own.

For EFF's view of the reality of "promo CDs," and why it's absurd for UMG to claim to still own them, years after they mailed them out and deleted all records of who they were sent to, read our summary judgment brief on behalf of Augusto, also filed yesterday.

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EFF Asks Court to Limit What Is Patentable

In re Bilski is an appellate court case that provides an opportunity to eliminate business method patents and curtail efforts to claim monopolies on basic human skills, behaviors, and interactions. Bilski is challenging the rejection of his application for a patent on a method of managing the risk of bad weather through commodities trading. EFF submitted an amicus brief (in conjunction with The Samuelson Law, Technology & Public Policy Clinic at UC Berkeley Law, Public Knowledge, and Consumers Union) supporting the rejection of Bilski's patent application and setting forth a framework for determining patentable subject matter that focuses on the use of technology in the claimed invention.

The Court of Appeals for the Federal Circuit, which hears all patent case appeals, had taken the somewhat unusual step of ordering an en banc rehearing of the In re Bilski case. EFF's brief proposes that the patent office and the courts should determine whether an invention is technological before even considering it for patent protection and lays out a set of factors to help make that determination. This litmus test will help ensure that the patent system is not used to monopolize everyday interactions and other human behaviors. It will also provide a more intuitive demarcation of patentable subject matter so that innovators and the general public can avoid infringement.

Representative claim 1 of Bilski's patent application appears in the opinion of the Board of Patent Appeals and Interferences. We find that claims, like Bilski's, which are directed to mental methods are not technological and should not be considered patent-eligible subject matter.

The Federal Circuit, sitting en banc, will hear oral argument on May 8 at 2 p.m. in Courtroom 201. The outcome of this case could change the landscape of patent law.

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Making Available is Not Distribution, Says Court in London-Sire v. Doe

Same day, two federal courts, two different rulings on "making available."

As we mentioned yesterday, a New York court in Elektra v. Barker gave a boost to the recording industry by ruling that an offer to distribute a file on a P2P network can infringe the distribution right, even if no one ever actually downloaded it from you. Well, on the same day, a Massachusetts court in London-Sire v. Doe ruled just the opposite, holding that "merely exposing music files to the internet is not copyright infringement" (we just received the ruling today).

EFF filed an amicus brief in this case (formerly known as Atlantic v. Does 1-21), and our arguments appear to have found a more receptive audience in Boston that they did in New York City (the judge thanks us for our participation on page 11). The 52-page ruling is the most extensive analysis yet of the recording industry's "making available" argument, which claims that you infringe copyright merely by having a song in your shared folder, even if no one ever downloads it.

As we discussed yesterday, a key issue is whether a mere "offer to distribute" is enough to infringe the distribution right, in light of the fact that a mere offer can be enough to constitute "publication." Unlike the court in Elektra v. Barker, the judge in London-Sire v. Doe concludes that "distribution" and "publication" are not identical -- "even a cursory examination of the statute suggests that the terms are not synonymous." If you are interested in the details, the court's analysis is highly illuminating (p. 24-27), touching on a number of earlier rulings, such as Hotaling v. Church of Jesus Christ of Latter-Day Saints and A&M v. Napster (copyright nerds will recognize those as pivotal decisions in this area).

While this is an important victory, the decision may not change much for most individuals targeted for RIAA lawsuits. The judge concludes that evidence of an "offer to distribute" is enough to permit a lawsuit to move forward, even if it's not enough to decide the matter. That means that the RIAA will keep filing lawsuits based on the investigations of MediaSentry. Moreover, the court rejected EFF's argument that the distribution right does not reach digital networks at all.

In light of the disagreement between these two rulings, it's likely that these issues are headed for more consideration by other courts. But we're grateful that these judges (in both Elektra and London-Sire) are doing a thorough job considering these important questions, instead of just taking the RIAA's word on what the law is.

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Offering to Distribute = Distribution, says Court in Elektra v. Barker

Yesterday, a federal court ruled in Elektra v. Barker that "an offer to distribute ... for the purpose of further distribution" may be enough to violate a copyright owner's distribution right. This ruling opens the door open for civil attempt liability when it comes to distribution -- in other words, that having a song in a shared folder without authorization might be infringing, even if no one ever downloads it from you.

Back in January 2007, the court heard arguments in Elektra v. Barker, one of the thousands of cases brought against individuals by the recording industry. The briefing (amicus briefs were filed by EFF, CCIA, MPAA, and the United States) focused on the recording industry's "making available" argument in these cases. EFF has argued that "making available" really amounts to a new "attempted distribution" theory of copyright infringement, where the record industry can collect $750 per song even if no one ever made any copies of the songs in your shared folder.

In yesterday's ruling, the court appears to have been led astray by language in other decisions that treats "distribution" as synonymous with "publication" (which does include offers to distribute). While the two terms certainly shed light on each other in some circumstances, it is a mistake to treat them as identical in all circumstances. The concepts of "publication" and "distribution" serve very different purposes in the Copyright Act. Before the 1976 Copyright Act, federal copyright did not apply to a work until it was "published." So the moment of publication was critical both for calculating the duration of a copyright and for determining whether a work fell into the public domain for failure to comply with formalities (like including a copyright notice). By allowing mere offers to distribute to trigger publication, Congress was adopting a rule that limited the scope of copyright law. Just putting a book on sale would start the clock running on copyright. And if the book was even offered for sale without a copyright notice, you lost the copyright immediately. Those who were later sued for infringement wouldn't be put to the trouble of proving when the first copy was sold (which might have happened many years earlier).

When it comes to distribution, in contrast, including mere offers as acts of infringement expands the scope of the copyright, allowing copyright owners to reach mere attempts at distribution. There is no justification for this, since mere attempts do not actually harm copyright owners -- I can have thousands of songs in my shared folder, but if no one ever downloads any of them, how has the copyright owner been harmed? Moreover, when a copyright owner sues, the evidence should still be fresh (at least when compared with evidence regarding the initial publication of a work), making it unnecessary to allow a mere offer to stand in for actual evidence of distribution.

The good news is that this "offering to distribute" theory is still far from accepted in copyright circles, is at odds with the Ninth Circuit precedent (see Perfect 10 v. Amazon.com), and is rejected by all the leading copyright law treatises. In addition, the court did not reach EFF's additional argument that the distribution right does not apply to digital transmissions at all. We'll have to leave that fight for another day.

The next ruling to address the "making available" argument is likely to be in Atlantic v. Howell, which may shed some light on how much influence yesterday's Elektra v Barker ruling will have on other judges.

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