29 January 2014

[Legal] Castles Made of Sand

Two appellate decisions of significance for authors and other creative folk came down today, both of which reflect some legal advice and doctrine as firm and unyielding as a sandcastle... or, at minimum, the foundations thereof.

   First up, we have the actual castles made of sand: The right to use marks relating to Jimi Hendrix,1 in yet another of a long litany of cases regarding "ownership" of Hendrix. Many of those disputes arose because the estate's administration, disposition, and beneficiaries were less than clear; many of the others arose from what might politely be called "culture vulturism" — the knowing, willful use of someone else's rights/property to make a buck (or couple million of them), often originating in misguided fandom but often not, under the assumption that it's easier to beg forgiveness than seek permission. That latter aphorism may well work when borrowing the family car; with intellectual property, not so much.

A Nevada llc2 — without explicit, or indeed any, permission from the Hendrix estate — began operating a business in which it used not just images of Mr Hendrix (for which the company appears to have had the rights) but the name "Jimi Hendrix" and obvious derivatives of that name as its own commercial brand. That is, the company didn't just label the art with the factual statement that it depicted Jimi Hendrix, but went much farther.

[Hendrix estate's company] Experience Hendrix holds a number of trademarks associated with Jimi Hendrix, including the names “Hendrix” and “Jimi Hendrix” and Jimi Hendrix’s signature, as well as logos incorporating a “headshot” of Hendrix. Experience Hendrix uses these trademarks to market, sell and license Hendrix-related merchandise, including apparel, posters, and artwork sold to the public through Internet websites and brick-and-mortar retail stores throughout the United States, including the state of Washington.

Pitsicalis [the llc owner] has also used Jimi Hendrix’s celebrity status commercially. Pitsicalis owns, or has licenses to use, photographs and original pieces of art depicting Hendrix, as well as visual artwork created byHendrix himself. In 2008, Pitsicalis began licensing the right to use these images to produce and sell Hendrix-related merchandise, including apparel, posters and household items. Like Experience Hendrix, Pitsicalis’s licensees sold this merchandise over the Internet and in brick-and-mortar stores. Pitsicalis placed marks on his licensed products that used the names “Hendrix” and “Jimi Hendrix,” as well as Jimi Hendrix’s signature and a logo of Hendrix’s headshot with a guitar. In conducting his business, Pitsicalis also used two websites with the domain names hendrixlicensing.com and hendrixartwork.com.

Experience Hendrix v. Hendrixlicensing.com, No. [20]11–35858 (PDF), slip op. at 5–6.

The part of this opinion that is really of interest to authors (and other creative people) is not the body of the trademark-use section, which is quite unremarkable (slip op. at 15–38) if, due to the sheer number of subissues, rather wordy. The trial court was essentially confirmed on its substance rulings and reversed on many of its procedure-peculiar-to-trademark rulings, a result on appeal in favor of Experience Hendrix. However, the trial court had also gutted the entire action by holding that a state of Washington statute providing for post-death publicity rights was unconstitutional. The Court of Appeals reversed on the ground that the trial court had overstated the breadth of the statute in question, and then bootstrapped that overbroad statement into a problem with interstate application (slip op. at 10–14). That is, it doesn't matter that the Washington state statute might appear to regulate conduct in, say, New York — Hendrix's legal residence at the time of his death, which has explicitly refused to recognize postmortem publicity rights — because what was at issue in this case was conduct in Washington state itself: The estate's attempt to block Washington state vendors from selling allegedly infringing merchandise through the allegedly infringing means at issue, particularly when both parties agreed that the wording of the statute otherwise appears to apply.

This matters to creative folk for a variety of reasons... none of which should inhibit authors from properly using dead people in their works. The key point of the Washington statute is that it is limited to a right of publicity after death; it does not extend a right of privacy after death, nor any defamation rights after death. Thus, if I were to write either a nonfictional or fictional account of the origin of the Industrial Workers of the World (the "Wobblies") — a Washington-contact organization, notorious in the logging industry — and make statements in that work concerning alleged disreputable/unlawful/immoral/etc. conduct of any of the long-dead founders, there is no problem under the Washington statute. If I included the names of any of those founders even in the title of the book, there is probably no problem under the Washington statute precisely because that's merely descriptive. My problem might arise if I tried to sell the book through (entirely hypothetical) website commiehaywood.com and tried to contract a major delivery to the University Bookstore in Seattle, which does appear to appropriate William Haywood's postmortem right of publicity in Washington state. Similar shipments to, say, Ohio, would not implicate the Washington state statute... unless my shipping point was in Washington state, which creates a different question entirely.

Procedural morasses also govern the result in the other opinion of interest to authors, creative people... and computer programmers. In Brownstein v. Lindsay, No. [20]12–2506 (PDF), the Third Circuit fell in line with the Seventh Circuit and an older decision from the Ninth Circuit (discussed here not all that long ago) and held that a cause of action for copyright misappropriation by a third party, this time of computer code — especially, but not only, a joint author — does not accrue until there is "explicit repudiation" of rights of authorship... and that filing for copyright registration is not "explicit repudiation." This matters because the date of accrual is when the three-year statute of limitations (probably) begins to run.3 It's rather interesting to me that the Third Circuit does cite to Gaiman and Yuill, but not to the more-recent Seven Arts decision discussed in that link earlier in this paragraph... which runs at least orthogonally, if not directly the opposite direction, to the Third Circuit's approach here.

That's not the only procedural morass in Brownstein, however. One of the remedies that was potentially at issue was cancellation of the "improper" registration of copyright in the name only of one litigant. The Third Circuit concluded that courts do not have the authority to direct cancellation of a copyright registration; they have neither statutory power under the Copyright Act nor inherent power (because they're courts) to do so (slip op. at 39–43). The Third Circuit is careful to distinguish between invalidating a copyright claim in the legal instance from cancelling a registration of a copyright, which it believes is properly a purely administrative matter for the Copyright Office using its own procedures (albeit subject to the usual, highly deferential, court review for outrageous abuse). This is a necessary consequence of the US accession to the Berne Convention, although it also opens up a huge can of worms: Satellite litigation over alleged misconduct in obtaining registrations, which is probably a mere tort... and therefore might be within the jurisdiction of state courts and outside the scope of the Copyright Act itself. Just as not every publishing dispute is fully inside the Copyright Act, not every mere claim of ownership of a copyright is fully inside the Copyright Act (and therefore under exclusive federal jurisdiction under 28 U.S.C. § 1338). In short, this is a roundabout way for me to point at the continued insanity of the particular copyright registration system that we have.

So what should authors take away from Brownstein? That they are not responsible for monitoring the Register of Copyright for claims by others to their authorship, whether of coauthors acting purely as coauthors (this case) or of coauthor/publishers acting as publishers (Gaiman). In particular, multimedia/multiform contributors (e.g., comic-book contributors) are not on notice of an "explicit repudiation" of their authorship when a comic publisher (I'm thinking of a really big one with offices in New Jersey, and therefore subject to jurisdiction in the Third Circuit) files a copyright registration alleging work-for-hire status without having done the work-for-hire paperwork beforehand. Similarly, there are several commercial and educational publishers based in New Jersey and the Philadelphia area that seem to have learned their procedures from those comic publishers. But under the Brownstein/Gaiman doctrine, the registration is not by itself an "express repudiation" that either creates a cause of action or starts the statute of limitations clock. There needs to be something more.

  1. This has two entirely different connections to me personally: I grew up in the Seattle area, and my high school is quite near Mr Hendrix's grave; and a colleague was one of the managers of Henrix properties while he was working for a major record label during law school. And then there are the black-light parties in the dorm room in the late 70s/early 80s (unaccompanied by illicit substances — except, perhaps, the lingering aftereffects of an afternoon with organic solvents in the lab)...
  2. Although not a legal conclusion or legal advice, it has been my sad experience that when one sees "Nevada llc" in anything related to either true interstate activity or the entertainment industry excluding gambling — especially a company not actually based in Nevada — , one should immediately consult counsel... and a private investigator. A disturbingly high proportion of Nevada llcs is less than entirely forthright in identifying the actual control persons/entities, and it goes downhill from there. There are certainly legitimate Nevada llcs; it's just that there appears to be a cottage casino dubious industry of promoters in Nevada seeking to help minimize company taxes without regard to the underlying activity... or ownership. It's not quite inquiry notice to nonlawyers; it is, however, close enough that lawyers should inquire.
  3. However, the Supreme Court is considering a related accrual issue masquerading as an argument over laches in a copyright action this term, so this sentence may turn out to be absolutely correct, a slight overstatement, or wildly inaccurate within the next few months. See Petrella v. Metro-Goldwyn-Meyer, Inc., No. [20]12–1315 (argued 21 Jan 2014).