You're Staring at My Story's Package (1)

This set of musings — which will probably extend over several entries, not necessarily consecutive — has little to do with salacious imagery... except insofar as copyright law in the US almost always involves the actual, human creator(s) getting kneed in the groin. Recent litigation and attempts to amend the Copyright Act — and, by "recent," I mean since the US joined the Berne Convention — have pretty uniformly reflected a meme that is not supported by the IP Clause,¹ Berne Convention² or other treaty obligations,³ or the Copyright Act⁴ itself.

Lemma: The dominant factor in determining the outcome of any dispute over creative IP rights is the package in which those rights are presented to end-users, regardless of distinctions found (or not found) within the legal framework that creates and protects those rights.

This is, perhaps, most apparent in the way that written works have been treated in litigation in the last fifteen years.

First, there was the ineptly handled Tasini matter,⁵ which concerned only copyrighted/copyrightable textual works that appeared in periodicals. As Tasini was not a class action, it ran into a two-element buzzsaw of bad civil procedure decisions in the Second Circuit, before the Supreme Court "clarified" matters. Muchnick⁶ is an attempt to expand the Tasini cause of action to include a class settlement; unfortunately, Muchnick is at least in part governed by the Second Circuit's ill-reasoned decision in Morris,⁷ one of the poster children for agency capture and self-interest by bureaucrats overwhelming the underlying legal authority.

At the opposite extreme, we've got the GBS litigation,⁸ which concerns only works published in nonperiodical text-on-paper form. Ironically, many individual works that appeared in periodicals at one time also appeared in books at another, which leads to some interesting fact patterns and maneuvering over remedies.

One example of the publishing package problem appeared in Ellison,⁹ which concerned unauthorized electronic display of Mr Ellison's copyrighted works as they had appeared in bound collections. Most of the individual stories concerned had been previously published — and individually registered, I might add — in periodicals. One package-related question that this raises, but that (due to the settlement reached after the Ninth Circuit decision) was not actually litigated: Is the collection Deathbird Stories — one of the infringed collections (and in that edition) — one unit (the book), 19 units (the individually registered stories), or 20 units (the stories plus the new material added to the book)? Then, too, there's the currently unanswered question of how Deathbird Stories is properly treated under the proposed GBS settlement, and indeed under the lawsuit itself. Consider, for example, whether Mr Ellison would be required to prove the provenance of an infringing copy of the story "The Deathbird" that appears somewhere on Google's servers (not just via index pointers). On the one hand, if it could be proven that it was from the book version — and that it was the version scanned by Google itself under the Google Library Project — it might be covered under the GBS settlement, and therefore liability had been already released (assuming Mr Ellison was both a proper and in fact member of the settlement class, which is another issue entirely). Conversely, one might question whether the provenance of the infringing copy was a different book edition of Deathbird Stories that was not included in the Google scanning, or to any of many other anthologies containing the story, or indeed to original publication in The Magazine of Fantasy & Science Fiction (which might — at least in theory — fall under Muchnick!). None of those possibilities, though, concerns the fact of infringement or the nature of the work itself — they concern only the delivery package, and subsequently the infringement package.

Another example, although perhaps a bit less obvious, is the Harry Potter Lexicon matter.¹⁰ In the Lexicon matter, nothing was filed until the proprietor of the Lexicon attempted to convert it from a diffuse set of webpages to a printed volume. Warner then interceded and brought Joanne Rowling along as a public face, considering (rightly) that people would be even more likely to direct their ire at a greedy film producer than at a greedy author. As I remarked at the time, though, the giveaway of what is really going on can be found in the copyright notices printed in the more-recent US editions of the novels:

Text copyright 2007 by J.K. Rowling
Illustrations by Mary GrandPre copyright 2007 by Warner Bros.
HARRY POTTER & all related characters and elements are TM of and copyright WBEI
Harry Potter Publishing Rights copyright J.K. Rowling
All rights reserved.

This makes excrutiatingly clear that we're really concerned, in the Lexicon lawsuit, with the form of the original works compared to the form of the alleged infringement. In short, all anyone really cares about is the package... and that is a consideration that is not relevant to the Copyright Act, which — except for works made for hire — does not distinguish among packages for textual works. The Copyright Act does distinguish among packages for certain types of nontextual works, such as phonorecordings; but we'll burn that bridge when we get to it.

That's all for today; I need another footnote, and I've self-imposed a limit of ten footnotes per entry.

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1. U.S. Const. Art. I, § 8, cl. 8 ("[The Congress shall have power to] promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries").
2. Berne Convention for the Protection of Literary and Artistic Works.
3. See, e.g., the WIPO Copyright Treaty.
4. 17 U.S.C. § 1 et seq.
5. New York Times, Inc. v. Tasini, 533 U.S. 483 (2001).
6. Reed Elsevier, Inc., et al., v. Muchnick, No. 08–103 (argued (U.S.) 07 Oct 2009; decision pending at this writing).
7. Morris v. Business Concepts, Inc., 259 F.3d 65 (2d Cir. 2001), abrogated and replaced by 283 F.3d 502 (2d Cir. 2002).

   The agency capture lurking behind this decision was reflected in the Register of Copyrights' support for the defendant's position that each individual copyrightable element of a periodical must be separately registered; under that reasoning, the publisher's registration of the entire issue of a periodical does not cover the individual works appearing therein, unless the copyright of those works belonged to the publisher at the time of registration (as was required under the 1909 Act). Leaving aside the inconsistency between this analysis and the Berne Convention's derogation of formalities — and leaving aside the illogic of it all — the Register's position reflects an attempt to protect the Copyright Office's income stream from registrations. Cf. generally Conrad Peter Schmidt, Changing Bureaucratic Behavior: Acquisition Reform in the United States Army (2000) (esp. ch. 3) (PDF); John Hendry, Beyond Self-Interest: Agency Theory and the Board in a Satisficing World, 16 Brit. J. Mgt. S55 (Spr. 2005); Dan Kahan, Democracy Schmemocracy, 20 Cardozo L. Rev. 795 (1999).

8. The Author's [sic] Guild, et. al. v. Google, Inc., No. 2005–8136 (filed 20 Sep 2005), class settlement proposed. n.b. If you're reading this essay on my blawg, I probably don't have to tell you that I've harshly criticized both the underlying lawsuit and the proposed settlement from the beginning.
9. See, e.g., Ellison v. Robertson, et al., 189 F. Supp. 2d 1051 (C.D. Cal. 2002), rev'd in part and remanded sub nom. Ellison v. America Online, Inc., 357 F.3d 1072 (9th Cir. 2004). n.b. I was lead counsel for plaintiff Harlan Ellison in the matter; the caption in the Google scan of the West reporter for the appellate decision is wrong, as the Ninth Circuit itself had redesignated the matter Ellison v. AOL for all purposes.
10. Warner Bros. Entertainment, Inc. v. RDR Books, Inc., 575 F. Supp. 2d 513 (S.D.N.Y. 2008). This was less a copyright suit than a trademark suit that borrows copyright remedies... which reinforces the point of this already extended essay.