31 March 2010

Overlapping Wave Patterns

The last few days have included some interesting intellectual property law decisions that will have an impact on authors. Some of the effects are less than obvious; some are — as anyone reading this blawg will sardonically anticipate — downright obscure.

The biggest "news" is that the jury finally ruled on one of the few remaining factual controversies in Novell v. SCO. Although there's still some way to go in that case, the ownership of copyrights in Un*x may finally be close to getting a judicial resolution. Although the writeup at Groklaw is slightly breathless, it does a vastly better job of looking at the gamut of responses from interested parties than any of the commercial media writeups even attempt. Authors should care about this case for several reasons:

  • Many writers' tools are indirectly "at risk" if SCO wins its claim to the Un*x operating system. OpenOffice — my preferred formatted-word mangler — only appears to be a completely new project; one can trace its progeny, including its file-reading and file-writing subsystems (which are fairly important!), back to a strong family resemblance to Un*x variants and subsystems from Sun. (No, not Blue Sun... although sometimes one must wonder.) That was from just a quick look at the source code for OpenOffice, which as the name implies is an open-source project. And OpenOffice is far from the only open-source writer's tool out there; depending upon your system, you're probably reading this based upon some form of open-source and/or Un*x-descended software (Firefox, for example; or, if you're using an OS-X Mac, the entire bloody operating system).
  • But enough of toolkits. How about the mechanics of the lawsuit? What was really at issue is what it takes to transfer a copyright (in fact, because it was decided on summary judgment, part of that question is pending certiorari right now). As is all too typical in publishing, the contracting was extraordinarily sloppy. The jury decided yesterday that, whatever documents SCO did have, they did not amount to a transfer of copyright from Novell. (OK, it's a little more complex than that, but most of the curlicues concern predecessors in interest... a not-inconsiderable issue in itself.) This links back into Tasini; the overly pedantic — like me — will recall that one of the publishers' theories in that case (rejected outright by then-District Judge Sotomayór) was that a back-of-the-check indorsement attempt by the publishers transferred copyright from the freelancers to the publishers.

    In the long run, this is the aspect of SCO v. Novell that is most directly relevant to writers. Too often — hypothetically in the world of "breaking news," but disturbingly often elsewhere in publishing — publishers proceed irrevocably to publication without a proper written agreement transferring the appropriate (or often any) copyright interest, which violates the Copyright Act. Section 204(a) provides that:

    A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.

    In this instance, the equivalent of the publisher (SCO) obtained only a broad, but nonetheless limited and nonexclusive, license to Un*x from Novell... and for the purposes of this lawsuit, it needed the whole copyright, not a limited nonexclusive license. Or, at least, that's what the jury agreed; and that's what Judge Kimball1 (PDF at 42–63) and the Tenth Circuit (PDF at 11–35) earlier found on summary judgment motions, and what is at issue in that petition for certiorari I linked to a paragraph ago.

    If there is a moral to this story, it is that sometimes lawyers really are necessary in negotiating the scope of copyright licenses and transfers... if only to ensure that everybody understands what is being transferred. The various agreements bear considerable sign of having been thrown in front of an inexperienced attorney at the last moment for a mere sanity check, if any counsel was sought at all. The parties thus ran into the Fram Oil Filter problem: The legal fees they're incurring now are a whole new engine, not just an oil filter. If that sounds to you an awful lot like what small-press publishing contracts (and too many Big Six publishing contracts) end up being, you're right.

  • And more subsidiary issues than I can shake a software end-user license agreement at. In no particular order, they include the validity of post hoc rationalizations of what "must" have been transferred in a copyright licensing agreement; the effect of intervening bankruptcies when assets were not properly, or not at all, scheduled in the bankruptcy proceeding; the effect of laches on copyright transfer interpretation; and enough other juicy bits to make for a dozen or so law review articles before they begin repeating each other.

Slightly less newsworthy — and slightly less obvious — there's the issue of whether gene patents are valid (PDF). Although that sounds a long way away from anything that might concern authors, its reasoning is parallel to what "originality" means in copyright law — at a constitutional level. In the Myriad lawsuit, the direct question was whether patents on two existing-in-nature-but-newly isolated human genes related to certain varieties of cancer were proper subject matter for a patent. The Patent Act excludes mere discoveries of material "found in nature" (35 U.S.C. § 101; see also Diamond v. Chakrabarty, 447 U.S. 303, 307–10 (1980))), however "inventive" the steps taken to that discovery. This parallels the "originality" requirement in copyright law, most-obviously stated in Feist Pubs., Inc. v. Rural Tel. Svc. Co., Inc., 499 U.S. 340 (1991).

Professor Crouch rightly notes that Myriad is going to be appealed to the Federal Circuit, and plausibly predicts that the Federal Circuit will reverse (finding that the genes were, in fact, patentable subject matter) — setting up a Supreme Court decision. I think, though, that the constitutional analysis behind Feist controls in Myriad, and that the Supreme Court will then reverse the Federal Circuit.

OK, that was probably sufficiently obscure. The key point is this: "originality" (and its patent analog "novelty") have not just statutory, but constitutional, dimensions. Any change in the constitutional analysis of one of them will necessarily have an effect on the constitutional analysis of the other. And that means that the copyright rights in "mash-ups," derivative works, commentary, etc. are all indirectly at issue in the patent litigation over human genes. It may sound like a bad science fiction movie (or, perhaps, good science fiction novel), but this object is much closer (and larger) than it appears in the mirror.

  1. Judge Kimball has sinced recused himself; the matter is now being heard, including the recently concluded jury trial, by Judge Stewart.