Friday’s Endnotes – 02/07/25

By , February 07, 2025.

“Torrenting from a corporate laptop doesn’t feel right”: Meta emails unsealed — “Emails discussing torrenting prove that Meta knew it was ‘illegal,’ authors alleged. And Bashlykov’s warnings seemingly landed on deaf ears, with authors alleging that evidence showed Meta chose to instead hide its torrenting as best it could while downloading and seeding terabytes of data from multiple shadow libraries as recently as April 2024.”

More Great Copyright Books Freely Available on Information Law Series Archive — “Following the successful launch of the Information Law Series Archive in September 2024, ten more volumes have been made freely available on the IViR website. These include the groundbreaking and much-cited dissertations by Martin Senftleben on copyright and the three-step test, Mireille van Eechoud on applicable law in copyright, and Ashwin van Rooijen on software copyright and competition law.”

US court says copyright termination applies globally, potentially causing ‘chaos’ for rightsholders — “Until now, it was generally understood that when an author exercises their termination right under US law, this applies only to US rights – international rights remain with the assignee (i.e., the publisher who bought the rights). However, a recent ruling by the US District Court for the Middle District of Louisiana upended this: The court concluded that a termination under US law applies globally – or, at least, in all the countries that participate in the Berne Convention, the international treaty that requires signatory countries to recognize copyrights created in other signatory countries.”

Inside the Copyright Office’s Report, Copyright and Artificial Intelligence, Part 2: Copyrightability — “Part 2: Copyrightability analyzes the type and level of human contribution sufficient for outputs created using generative AI to be eligible for copyright protection in the United States. It provides an overview of the technologies and discusses existing U.S. copyright laws, the policy implications of copyrighting AI-generated works, and whether legislative changes are needed. It also describes how other countries are approaching the question of copyrightability.”

DC Comics Sued Over Superman’s Foreign Copyright Protections — “The assignment of the rights to the Superman story under copyright law in countries like Canada, the United Kingdom, Ireland, and Australia automatically terminated 25 years after the author’s death, according to the complaint filed in the US District Court for the Southern District of New York”

Supreme Court De-na-na-na-na-na-na-na-na-nies Batmobile Appeal

By , April 11, 2016.

Last month, the Supreme Court denied review of a cert petition in DC Comics v. Towle, regarding whether the Batmobile can be protected by copyright. This in itself isn’t news—the Supreme Court only grants roughly 5% of all petitions it receives. But the subject matter of this litigation brought a fair amount of attention, so let’s take a quick look at last September’s Ninth Circuit decision, which now stands.

This litigation begins, as the court recounts, with defendant Mark Towle, who runs a business called Gotham Garage. Among other things, his business sells replicas of the Batmobile, as depicted in the 1966 television show and 1989 motion picture. He also sells kits which allow customers to modify their cars to look like these Batmobiles. DC Comics, the publisher of comics featuring Batman, sued Towle for copyright infringement, trademark infringement, and unfair competition for manufacturing and selling the replica Batmobiles. Both parties moved for summary judgment, and in a 2013 order, the district court granted summary judgment in favor of DC Comics on the copyright claim, finding that the Batmobile “was a character entitled to copyright protection.” On appeal, the Ninth Circuit affirmed, concluding that “the Batmobile character is the property of DC, and Towle infringed upon DC’s property rights when he produced unauthorized derivative works of the Batmobile.”

Under the Copyright Act, copyright protection subsists in works.117 U.S. Code § 102. But courts have long held that characters can be independently protected by copyright.2Rice v. Fox Broad. Co., 330 F.3d 1170, 1175 (9th Cir. 2003); Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231, 235 (2d Cir. 1983); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.12 (2015) (“Although there has been some conflict in the cases, it is clearly the prevailing view that characters per se are entitled to copyright protection.” (footnotes omitted).). It’s worth noting that trademark protection for characters may overlap with copyright protection for characters. See Jane C. Ginsburg, Licensing Commercial Value: From Copyright to Trademarks and Back 2-3 (Colum. Law Sch. Ctr. for Law and Econ. Studies, Working Paper No. 516, 2015); Kathryn M. Foley, Protecting Fictional Characters: Defining the Elusive Trademark-Copyright Divide, 41 Conn. L. Rev. 921, 939 (2009). Courts that have found characters independently copyrightable have done so when “the character appropriated was distinctively delineated in the plaintiff’s work,”3Salinger v. Colting, 641 F. Supp. 2d 250, 254 (S.D.N.Y. 2009), vacated on other grounds, 607 F.3d 68 (2d Cir. 2010) (quoting 1 Nimmer, supra note 16, § 2.12). or are “‘especially distinctive’ or the ‘story being told.’”4Rice, 330 F.3d at 1175. Examples include Amos ‘n’ Andy,5Silverman v. CBS Inc., 632 F. Supp. 1344, 1355 (S.D.N.Y. 1986), aff’d in part, vacated in part, 870 F.2d 40 (2d Cir. 1989). James Bond,6Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287, 1296 (C.D. Cal. 1995). Betty Boop,7Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 772 F. Supp. 2d 1135, 1147 (C.D. Cal. 2008). Freddy Krueger,8New Line Cinema Corp. v. Bertlesman Music Grp., 693 F. Supp. 1517, 1521 n.5 (S.D.N.Y. 1988). Godzilla,9Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1216 (C.D. Cal. 1998). Holden Caulfield from Catcher in the Rye,10Salinger, 641 F. Supp. 2d at 266. Jonathan Livingston Seagull,11Bach v. Forever Living Prods. U.S., Inc., 473 F. Supp. 2d 1110, 1118 (W.D. Wash. 2007). Scarlett O’Hara and Rhett Butler from Gone with the Wind, Tom and Jerry,12Warner Bros. Entm’t v. X One X Prods., 644 F.3d 584, 597 (8th Cir. 2011). Walt Disney’s Mickey Mouse and Donald Duck,13Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 757-58 (9th Cir. 1978). and characters from The Wizard of Oz.14Warner Bros. Entm’t, 644 F.3d at 597.

The fact that the Batmobile is an inanimate object and not a sentient being doesn’t prevent this protection. Courts have recognized that copyright could protect characters such as “Eleanor,” a 1967 Shelby GT-500 appearing in Disney’s 2000 film Gone in 60 Seconds, and Freddy Krueger’s glove.15Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1225 (9th Cir. 2008); New Line Cinema Corp. v. Russ Berrie & Co., 161 F. Supp. 2d 293, 302 (S.D.N.Y. 2001).

The most important question facing the Ninth Circuit was whether the Batmobile could be protected as an independent character despite not having a consistent appearance in all works. The car that appeared in the 1966 television show, after all, looked quite different from the car in the 1989 motion picture. But the court did not find this an impediment to copyright protection. It observed that “district courts have determined that James Bond, Batman, and Godzilla are characters protected by copyright, despite their changes in appearance.” And in each instance, it said,

[C]ourts have deemed the persistence of a character’s traits and attributes to be key to determining whether the character qualifies for copyright protection. The character “James Bond” qualifies for copyright protection because, no matter what the actor who portrays this character looks like, James Bond always maintains his “cold-bloodedness; his overt sexuality; his love of martinis `shaken, not stirred;’ his marksmanship; his `license to kill’ and use of guns; his physical strength; [and] his sophistication.” Similarly, while the character “Godzilla” may have a different appearance from time to time, it is entitled to copyright protection because it “is always a pre-historic, fire-breathing, gigantic dinosaur alive and well in the modern world.”

Having reviewed the existing precedent, the Ninth Circuit synthesized a three-part test for determining when a character like the Batmobile, which may span multiple works and vary in appearance, can be independently protected by copyright.

First, the character must generally have “physical as well as conceptual qualities.” Second, the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears. Considering the character as it has appeared in different productions, it must display consistent, identifiable character traits and attributes, although the character need not have a consistent appearance. Third, the character must be “especially distinctive” and “contain some unique elements of expression.” It cannot be a stock character such as a magician in standard magician garb. Even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard.

The Ninth Circuit then applied this test to the Batmobile, and concluded that the Batmobile met the standard. Its “bat-like appearance” is a consistent theme throughout its appearances in comics, movies, and television shows, making it recognizable as the same character whenever it appears. The character displays consistent, identifiable character traits and attributes; says the court, “No matter its specific physical appearance, the Batmobile is a ‘crime-fighting’ car with sleek and powerful characteristics that allow Batman to maneuver quickly while he fights villains,” and it “always contains the most up-to-date weaponry and technology.” Finally, the court found the Batmobile to be “especially distinctive,” noting “it is not merely a stock character.” Having established that the Batmobile is protected by copyright, it was short work to conclude that Towle’s Batmobile replicas infringed on DC’s copyright.

The Ninth Circuit’s holding is consistent with longstanding business practices. Many derivative works, like sequels or tie-ins, rely on the same characters but share no other similarities in terms of plot or expression of existing works.16Benjamin A. Goldberger, How the “Summer of the Spinoff” Came to Be: The Branding of Characters in American Mass Media, 23 Loy. L.A. Ent. L. Rev. 301, 302 (2003) (“Characters are central to the most common types of recycling and reuse in the entertainment business.”); see also 1 Nimmer, supra note 16, § 3.04[A]. As DC has done with the Batmobile and other Batman characters, it is common practice to license characters for use in new works.17See, e.g., Burroughs v. Metro-Goldwyn-Mayer, Inc., 683 F.2d 610, 611-12 (2d Cir. 1982) (involving license granting rights to produce original story with the character Tarzan); Fleischer Studios, 772 F. Supp. 2d at 1140 (referencing agreement that transfers interest in, inter alia, “all characters contained therein”). Such practices rely upon certainty, so having courts provide consistent and stable rules facilitates beneficial economic and cultural activities with these characters.

References

References
↑1 17 U.S. Code § 102.
↑2 Rice v. Fox Broad. Co., 330 F.3d 1170, 1175 (9th Cir. 2003); Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231, 235 (2d Cir. 1983); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.12 (2015) (“Although there has been some conflict in the cases, it is clearly the prevailing view that characters per se are entitled to copyright protection.” (footnotes omitted).). It’s worth noting that trademark protection for characters may overlap with copyright protection for characters. See Jane C. Ginsburg, Licensing Commercial Value: From Copyright to Trademarks and Back 2-3 (Colum. Law Sch. Ctr. for Law and Econ. Studies, Working Paper No. 516, 2015); Kathryn M. Foley, Protecting Fictional Characters: Defining the Elusive Trademark-Copyright Divide, 41 Conn. L. Rev. 921, 939 (2009).
↑3 Salinger v. Colting, 641 F. Supp. 2d 250, 254 (S.D.N.Y. 2009), vacated on other grounds, 607 F.3d 68 (2d Cir. 2010) (quoting 1 Nimmer, supra note 16, § 2.12).
↑4 Rice, 330 F.3d at 1175.
↑5 Silverman v. CBS Inc., 632 F. Supp. 1344, 1355 (S.D.N.Y. 1986), aff’d in part, vacated in part, 870 F.2d 40 (2d Cir. 1989).
↑6 Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287, 1296 (C.D. Cal. 1995).
↑7 Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 772 F. Supp. 2d 1135, 1147 (C.D. Cal. 2008).
↑8 New Line Cinema Corp. v. Bertlesman Music Grp., 693 F. Supp. 1517, 1521 n.5 (S.D.N.Y. 1988).
↑9 Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1216 (C.D. Cal. 1998).
↑10 Salinger, 641 F. Supp. 2d at 266.
↑11 Bach v. Forever Living Prods. U.S., Inc., 473 F. Supp. 2d 1110, 1118 (W.D. Wash. 2007).
↑12 Warner Bros. Entm’t v. X One X Prods., 644 F.3d 584, 597 (8th Cir. 2011).
↑13 Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 757-58 (9th Cir. 1978).
↑14 Warner Bros. Entm’t, 644 F.3d at 597.
↑15 Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1225 (9th Cir. 2008); New Line Cinema Corp. v. Russ Berrie & Co., 161 F. Supp. 2d 293, 302 (S.D.N.Y. 2001).
↑16 Benjamin A. Goldberger, How the “Summer of the Spinoff” Came to Be: The Branding of Characters in American Mass Media, 23 Loy. L.A. Ent. L. Rev. 301, 302 (2003) (“Characters are central to the most common types of recycling and reuse in the entertainment business.”); see also 1 Nimmer, supra note 16, § 3.04[A].
↑17 See, e.g., Burroughs v. Metro-Goldwyn-Mayer, Inc., 683 F.2d 610, 611-12 (2d Cir. 1982) (involving license granting rights to produce original story with the character Tarzan); Fleischer Studios, 772 F. Supp. 2d at 1140 (referencing agreement that transfers interest in, inter alia, “all characters contained therein”).

Friday’s Endnotes – 01/04/13

By , January 04, 2013.

Report links Google, Yahoo to Internet piracy sites — Leading off the new year is a new report from the USC’s Annenberg Innovation Lab which finds that Google and Yahoo run the top ad networks which finance commercial piracy sites. This article from the LA Times notes that jeans maker Levi’s was quick to respond when it discovered its brand was discovered on pirate sites, taking steps with its global ad agency to prevent future ads from showing up on such sites. The Hollywood Reporter confirms that Google has reached out to Jon Taplin, director of the Lab, in the wake of the report, and has expressed interest in solving the problem of funding the unauthorized exploitation of creators. Also be sure to check out commentary from the Trichordist, Chris Castle, and Ellen Seidler on this subject.

Most Popular Intellectual Property and Technology Law Blogs — Canadian attorney and blogger Barry Sookman has compiled a comprehensive list of popular blogs for those interested in IP and technology. The list breaks down the blogs by geographic focus and includes sites that concentrate on IP areas beyond copyright, like patents and trademarks. An incredibly useful list for active readers and practitioners of this area.

Warner Bros. Vs. Custom-Built Batmobiles: The Legal Battle Continues — Na na na na na na na na lawsuit. Eriq Gardner reports on an ongoing action by Warner Bros, who, through their subsidiary DC Comics, own the rights to Batman, and a maker of a replica Batmobile. Last year, the court denied a motion to dismiss copyright claims, saying it was possible that certain aspects of the auto could be protected under copyright law. Now, both parties have moved for summary judgment on the copyright issues, as well as trademark and other claims.

Oral Argument in the Second Circuit in Aereo Suggests that a Reversal Is in the Offing — Andrew Berger examines last month’s oral arguments in front of the Second Circuit (with a link to the transcript) in WNET v Aereo, involving internet broadcast retransmitter Aereo. The company argues that copyright liability should be dependent on what technology one uses to reproduce and transmit television programs. Berger concludes that the Second Circuit “is likely to find a way to reverse” the district court’s denial of a preliminary injunction against Aereo.

The ‘Digital Economy’ in 2012: A big noisy hole where money should be — Andrew Orlowski reflects on the past year and developments in technology and communications. “The most interesting development of the year was how the value of the individual is being rediscovered. In Nick Harkaway’s book, he points out that individual privacy rights – the ability to own your own data, or ‘habeas data’ as it’s been called – and individual property rights are one and the same. We need ‘an internet that forgets’ and an internet where value is returned to the creator. Both require the same thing: individual ownership to be defended and asserted.”

What Turned Jaron Lanier Against the Web? — The Smithsonian has a great profile/interview with Jaron Lanier this month. Highly recommended; for readers unfamiliar with Lanier, check out the article, and follow it up with a read of his 2010 book You Are Not a Gadget, a nuanced critique of the technological determinism that influences many strands of copyright skepticism today.

htmlComics: Domain Name Forfeiture Before Operation in Our Sites

By , September 07, 2011.

Before Operation in Our Sites, there was htmlComics.

Though the US Government’s seizure of over 100 domain names as property facilitating the commission of copyright infringement over the past year has received a lot of attention, the story of htmlComics has mostly stayed out of the limelight (except within the comics community).

The case of htmlComics.com is, as far as I know, the first time a domain name has been forfeited under 18 USC § 2323(a) as property “used, or intended to be used, in any manner or part to commit or facilitate the commission of” criminal copyright infringement. 1I’ve uploaded some of the court filings for this case to Scribd. The rest are available through PACER, or at the RECAP archive. For this reason, it’s worth taking another look at — although the circumstances are very different than the forfeiture case against the Rojadirecta domain names (the only domain name seized during Operation in Our Sites that has been disputed so far).

It’s just like a library

A man by the name of Gregory Hart (no relation) registered the htmlcomics.com domain in December 2008, and shortly after began creating a large library of digitized comic books. The site soon grew to include hundreds of thousands of complete copies of comics, attracting thousands of visitors and plenty of speculation over its legality.

Several online postings by Hart shed some light on his motivations for creating the site. In one, he says he’s never “read even one entire comic book!!!!!!!” and created the site as a sort of proof of concept of a large-scale digitized library project. In another, he asks about legal issues relating to the site, operating under the assumption that his site is no different from any public library.

htmlComics.com quickly attracted the attention of most major comic book publishers. Some sent cease and desist letters, but soon, a consortium of publishers — including Marvel Comics, DC Comics, Dark Horse Comics, Bongo Comics, Archie Comics, Conan Properties Int’l LLC, Mirage Studios Inc., and United Media — enlisted the aid of the FBI.

The Feds Get Involved

The FBI began an investigation of the site and Hart in July 2009. On April 20th, 2010, agents executed a search warrant on Hart’s residence, seizing various paper records and computer equipment. On May 27th, the FBI filed a complaint for forfeiture of the htmlComics.com domain name (along with five related domain names). A warrant for the seizure of the domain names was made the same day.

Like the forfeiture complaints filed against the domain names seized during Operation in Our Sites, 2Along with Rojadirecta, the US has filed a complaint against tvshack.net, movies-link.tv, zml.com, now-movies.com, thepiratecity.org, planetmoviez.com, and filespump.com. the htmlcomics.com complaint alleges that the domain name is subject to forfeiture under 18 USC § 2323(a) because it is property used to facilitate the commission of criminal copyright infringement.

Hart filed a claim as an owner of the domain names and represented himself in the forfeiture proceedings. He filed his answer to the complaint on June 29th, along with several counterclaims against the government. The answer denied any wrongdoing. Hart repeated his assertion that the site was just like any public library:

The presentation of htmlComics.com was not in violation of U.S. Statutory laws. If it is, then so too is every private library within an apartment community, libraries within private clubs, every schoolhouse library, every prison library, and every military base library.

Hart counterclaimed for violations of the First Amendment, Fourth Amendment, Privacy Protection Act (42 USC § 2000AA), and trespass to chattels.

The US moved to dismiss the counterclaims, arguing that they were a “legal nullity” — the defendant in an in rem proceeding is the property, not the claimant, and any claim the claimant may have against the government must be brought in a separate action. As for the constitutional counterclaims, the US further argued that

the only conceivable basis for the Court’s subject matter jurisdiction is Bivens v. Six Unknown Named Agents of the Federal Bureau of Narcotics, 403 U.S. 388 (1971), under which an individual may bring a cause of action “against a federal agent who, while acting under the color of federal law, has violated the constitutional rights of [the] individual. Bivens actions are brought directly under the Constitution, but damages can be obtained only when (1) the plaintiff has no alternative means of obtaining redress, and (2) no “special factors counseling hesitation” are present. In essence, a plaintiff must meet heightened pleading requirements to even pursue a claim under Bivens. Under this standard, the Claimant’s First and Fourth Amendment counterclaims are grossly deficient and must be dismissed.

The court granted the motion to dismiss Hart’s counterclaims. The only success Hart would have came early on, when the court dismissed the claim against one of the six domain names because, unlike the others, it pointed to a blank page.

By January 2011, the US and Hart reached a pretrial settlement agreement, where Hart agreed the remaining five domain names were subject to forfeiture and released any future claims against the US and the FBI. The court entered the final judgment of forfeiture on February 2, 2011.

htmlComics, Operation in Our Sites, and the PROTECT IP Act

The differences between this case and Operation in Our Sites are obvious. This was a singular action, investigated by the FBI, against a specific site while Operation in Our Sites constituted a broader, coordinated enforcement effort by ICE. htmlComics.com hosted infringing content on its own servers while many of the domains seized by ICE, including Rojadirecta, did not host the content themselves — though, under the language of the forfeiture statute, this is not as relevant a distinction as some critics of the operation make it out to be.

It’s the similarities, however, that I find interesting. Both involve the use of 18 USC § 2323 to forfeit the domain names of websites aiding piracy. Both htmlComics and Rojadirecta raised First Amendment arguments against the seizures — though not too much should be read into the failure of the argument in htmlComics since it flopped procedurally, and the outcome of Rojadirecta’s arguments are still pending. This case especially highlights the advantage of the forfeiture provision, added by the PRO-IP Act in 2008 — it gives the federal law enforcement agencies more options to carefully craft efforts to reduce online piracy. The FBI could have brought criminal charges against Hart himself or the comic book publishers could have sued Hart and his company in civil court. Instead, it proceeded in rem against the offending site itself, which is probably the most direct route. In the same way, ICE has targeted the domain names of rogue sites through the forfeiture process, making it more difficult for them to operate and profit.

Congress is back in session this week, and work on the proposed PROTECT IP Act is expected to begin shortly. The bill will give the US an additional option to use against pirate sites. Through a process similar to the in rem forfeiture proceedings used in htmlComics and Operation in Our Sites, the Attorney General will be able to request court orders against the often unwitting partners of pirate sites — advertising and financial service providers. This process is especially useful for taking the profit out of pirate sites where the operators are, unlike Hart and htmlComics, unknown or operating overseas.

References

References
↑1 I’ve uploaded some of the court filings for this case to Scribd. The rest are available through PACER, or at the RECAP archive.
↑2 Along with Rojadirecta, the US has filed a complaint against tvshack.net, movies-link.tv, zml.com, now-movies.com, thepiratecity.org, planetmoviez.com, and filespump.com.