In December 2004, Google announced its plan to digitally scan the entire contents of four university libraries and one public library, with the ultimate goal of enabling Internet users to search that content online.  In exchange for permission to digitize the works in the libraries and make "brief excerpts" of the works available on its site, Google promised to give the libraries a digital copy of the contents.  Although Google had already reached an arrangement with major universities (Michigan, Harvard, Stanford, and Oxford) as well as the New York Public Library, many authors and publishers quickly concluded that their copyright interests were not being protected.  Lawsuits were filed in the Southern District of New York in the fall of 2005, arguing that Google’s attempts to scan and index wholesale works infringed on copyright protections.  See The Authors Guild, Inc., et al. v. Google Inc., No. 05 CV 8136 (S.D.N.Y. filed Sept. 20, 2005); The McGraw-Hill Cos., Inc., et al. v. Google Inc., No. 05 CV 8881 (S.D.N.Y. filed Oct. 19, 2005).  Negotiations to resolve the dispute began in 2006, and, two years later, a framework has emerged that both sides agree will protect the interests of authors and publishers and give Google the right to digitize millions of works.Continue Reading The Google Book Digitization Settlement: The Fair Use Question Remains

The Ninth Circuit recently handed manufacturers a gift.  In a decision which, at first blush, might seem at odds with well-established Supreme Court jurisprudence, manufacturers are now able to use copyright law to keep their products from being imported to the United States, if lawfully manufactured and first sold abroad.
Continue Reading First Sale Doctrine Not Applicable To Foreign Imports Manufactured And First Sold Abroad

Open source licensing of software got a recent boost from an unlikely source, the Court of Appeals for the Federal Circuit.  The CAFC normally decides patent and trademark issues but rarely deals with copyrights.  In an appeal from the Northern District of California, the CAFC reversed and remanded for further factual findings after holding, as a matter of law, that provisions in an open source license of certain software, which allows model railroaders to program decoder chips that control model railroads, were conditions, not covenants.  Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir. 2008).  Accordingly, failure to comply with the "conditions" resulted in actions outside the scope of the license which were, in turn, an infringement of the software copyright.  The trial court had held the software terms were covenants so that a breach could only be enforced by a money judgment.  Since open source, or "public" licenses, are by their nature free of charge, such a breach failed to yield any recognizable damages.  Finding no copyright infringement, the trial court thus denied the plaintiff’s motion for a preliminary injunction.Continue Reading Open Source Licensing Finds Protection Before The CAFC

In a decision that could have far-reaching implications for technology licenses of all types, the U.S. District Court for the Central District of California recently held that the first sale doctrine permits a recipient of promotional CDs to sell them online without violating the license pursuant to which the CDs were distributed and without being liable for copyright infringement.  UMG Recordings, Inc. v. Augusto, No. CV 07-03106, slip op. (C.D. Cal. June 10, 2008).  The court granted the defendant’s motion for summary judgment and rejected Universal Music Group’s (“UMG”) argument that the labeling on the promotional CDs created a license without transferring title.Continue Reading UMG v. Augusto: Allowing the Sale of Promotional CDs Under the First Sale Doctrine Could Affect Much More than the Music Industry

Since the Supreme Court’s decision in eBay v. Merc-Exchange, IP plaintiffs who plan on relying on the presumption of irreparable harm when seeking injunctive relief (whether a TRO, preliminary or permanent) may want to rethink that strategy.  The days of relying on a general "presumption" of irreparable harm, without actual proof of such harm, are essentially over—at least for cases that fall squarely within the eBay decision (i.e., patent infringement cases where injunctions are sought).  Less clear is eBay‘s holding to other traditional areas of intellectual property, like trademark and copyright infringement cases.  Nevertheless, the vigilant IP owner should be prepared to prove irreparable harm by way of compelling evidence.  Even if the court ultimately applies the presumption of irreparable harm, the effort will certainly pay off and may preclude attacks on appeal.Continue Reading Injunctions in Trademark and Copyright Infringement Cases: Trending Against the Irreparable Harm Presumption?

The Register of Copyrights has issued a formal opinion finding that, in most instances, musical ringtones for cell phones and related mobile devices fall within the scope of the statutory license under Section 115 of the Copyright Act.  See Docket No. RF 2006-1.  The Register rendered its opinion at the request of the Record Industry Association of America (“RIAA”), which had sought clarification that musical ringtones, typically comprising of ten-to-thirty-second “snippets” of full-length musical works, are subject to Section 115 of the Copyright Act and, thus, may properly be made and distributed under the compulsory license afforded by that Section.  Analyzing the language of Section 115 as well as the legislative history related to changes to that Section with the enactment of the Digital Performance Right in Sound Recordings Act of 1995, the Register concluded that “ringtones that are merely excerpts of a preexisting sound recording fall squarely within the scope of the statutory license.”Continue Reading Developers of musical ringtones may benefit from using the statutory license created by Section 115 of the Copyright Act

The Copyright Office recently issued a press release in their "Newsnet," Issue 341, April 14, 2008, announcing what everyone else already knew. The Copyright Office is getting seriously behind in processing copyright applications and issuing registration certificates. In fact, the official time lag for receiving a certificate is now "up to 8 months." This is not an inconsiderable pendency since as recently as a year ago certificates were being issued within 4 to 6 months. The problem of pendency becomes even worse in relationship to when the information actually appears on the public records which may be some time after the registration issues. This means that the public which is bound by the legal effects of the copyright registration as of the original filing date, may not even be aware that an application has been filed, or have any way of easily investigating online, for up to a year after such filing date which is, legally speaking, also the "effective date of a copyright registration" under Section 410(d) of the Copyright Act.Continue Reading The Copyright Office Makes An Improvement For The Worse