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montysimmons, Patent Prosecutor
Category: Intellectual Property Law
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Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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IP law - copyright question. I want to audio-record and post

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IP law - copyright question. I want to audio-record and post images from a book printed by hand, in 90 copies, in 1896-97. A "centennial" edition was brought out in 1996, which included a copyright claim on the whole. I contacted the publisher, who eventually referred me to their attorney, who disclaimed the text by aggressively asserted copyright on the images. Their argument: 1897 printing was a "limited publication," therefore common-law rights were preserved, therefore the 1963 publication was unauthorized, therefore they own everything. My reading of "limited publication" is that it requires notification of the limitation, in the book if a book, or by the "publisher" (such as an art gallery) if a display. No such notification can be found. They seem to claim that the few copies and the private distribution (without notification) are sufficient to establish "limited publication." The case they cite, 207 U.S. 284, seems explicit in requiring notification in the case of a book. // How can I get them to stop claiming rights to something that is in the public domain?
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  montysimmons replied 1 year ago.

I will be glad to answer this question for you. Before I do I will need to do a little research to reinforce my memory.

 

While I research the issue, please verify some facts.

 

(1) There was a book printed by hand in 1896-1897.

 

(2) The book was hand printed 90 times (i.e. 90 copies of the book were published).

 

(3) These 90 books were published when ?

 

(4) In 1963 there was an unauthorized publication of the book?

 

(5) A "centennial edition" was published in 1996.

 

(6) "They" (alleged owner of the copyright) are saying the 1996 publication was the first legal mass publication of this book?

 

Please verify my "facts" and provide an answer for question (3), (4) and (6).

Thanks

Expert:  replied 1 year ago.

Here is my Answer based on the facts as I understand them.

 

OK, so there was a book that was hand printed, 90 times, in 1896-1897, and distributed to someone (I am assuming the public).

 

If the books were published with copyright notice they are clearly now in the public domain. All books published before 1923 are now in the public domain (with notice or without notice).

 

So what if the 90 books were publicly distributed without notice? Would that small a number of books qualify as being “publicly distributed” to the point copyright rights are forfeited?

 

Let us look at § 405 of the copyright act.

 

§ 405 . Notice of copyright: Omission of notice on certain copies and phonorecords6

 

(a) Effect of Omission on Copyright. — With respect to copies and phonorecords publicly distributed by authority of the copyright owner before the effective date of the Berne Convention Implementation Act of 1988, the omission of the copyright notice described in sections 401 through 403 from copies or phonorecords publicly distributed by authority of the copyright owner does not invalidate the copyright in a work if —

 

  1. (1) the notice has been omitted from no more than a relatively small number of copies or phonorecords distributed to the public; or
  2. (2) registration for the work has been made before or is made within five years after the publication without notice, and a reasonable effort is made to add notice to all copies or phonorecords that are distributed to the public in the United States after the omission has been discovered; or
  3. (3) the notice has been omitted in violation of an express requirement in writing that, as a condition of the copyright owner's authorization of the public distribution of copies or phonorecords, they bear the prescribed notice.

 

Thus, as a general rule, any work publicly distributed by its owner prior to March 1, 1989, without notice of copyright, is injected into the public domain and not subject to copyright protection. 17 U.S.C. § 405(a). William A. Graham Co. v. Haughey (ED Pa 5/4/06)

 

So, YES, distribution of the 90 copies without notice would be a public distribution . . . but . . . did such distribution put the work in the public domain?

 

Yes it did, UNLESS, one of the safe harbors applies.

 

 

As presented above, §405 of the Copyright Act provides three exceptions to the general rule that public distribution of a work, prior to March 1, 1989, without notice of copyright injects it into the public domain.

 

Exception (3)

covers unauthorized distributions which would keep the unauthorized 1963 distribution from putting the work in the public domain.

 

Exception (1)

covers “limited distribution”.

 

OK, "limited distribution" possible here under your facts.

 

With regard to (statutory, via 405) “Limited Distribution”, there is no bright-line rule for making this determination. Ford, 930 F.2d at 295.

 

However, the courts have noted that one factor that a district court may consider is what percentage of the total distribution the copies made without notice of copyright represent. Id. at 296.

 

In Ford, 4 million copies were distributed without copyright but such amount only represented 4% of the total works distributed.

 

In Graham, only 25 to 30 works were distributed without copyright notice but that amount represented 100% of the works distributed. Thus, Graham cannot establish that the safe-harbor provision of §405(a)(1) saves the copyright for the material that was distributed to clients without notice of copyright prior to March 1, 1989.

 

 

In your case, it is my understanding that all 90 books (100%) were distributed without a copyright notification. Thus, based on Graham, it is unlikely the “Limited Distribution” safe-harbor provision of § 405(a)(1) applies.

 

 

LIMITED PUBLICATION

So now we need to consider the concept of “Limited Publication”.

 

Even if a work does not meet the requirements of the statutory safe-harbor provisions (such as “Limited Distribution”), it may still be saved from being deemed in the public domain by the “Doctrine of Limited Publication”.

 

Prior to 1989 (i.e. before the US passed the Berne Convention Implementation Act), there were three paths under the common law to which a work could be exposed to the public or enter the public domain:

 

(1) exhibition or performance of the work;

 

(2) limited publication; and

 

(3) general publication. Burke v. Nat'l Broad. Co., 598 F.2d 688, 691 (1st Cir. 1979).

 

Only one such path, however, would extinguish the creator's copyright in a work and the road to such loss is called general publication. Id.; see Brown, 498 F.3d at 23.

 

So limited publication would keep a work out of the public domain.

 

 

General Publication

A general publication is "when a work is made available to members of the public at large without regard to who they are or what they propose to do with it." Burke, 598 F.2d at 691. That is, a general publication consists of such a level of circulation within the public sphere that a work may be deemed "dedicated to the public and rendered common property." Id. Conversely, a limited publication "occurs when tangible copies of the work are distributed, but to a limited class of persons and for a limited purpose." Id. at 692.

 

Limited Publication

 

Under this doctrine, a publication without notice of copyright will not divest an author of copyright protection under § 405(a) if the author establishes he or she has done all of the following:

 

(1) "'communicates the contents of a [work] to a definitely selected group'";

 

(2) "'for a limited purpose'"; and

 

(3) "'without the right of diffusion, reproduction, distribution or sale.'" Brown v. Tabb, 714 F.2d 1088, 1091 (11th Cir. 1983) (quoting White v. Kimmell, 193 F.2d 744, 746-47 (9th Cir. 1952)); see also Unix Sys. Lab., Inc. v. Berkeley Software Design, Inc., No. Civ.A. 92-1667, 1993 WL 414724, at *13 (D.N.J. Mar. 3, 1993).

 

Notably, the number of individuals to whom the work passes is irrelevant to the inquiry of limited publication because a general publication can be found even though only one copy of a work passes to one member of the general public. Ford, 930 F.2d at 299-300.

 

Your Issue

 

I find it difficult to believe that the alleged copyright owner has evidence to support all three requirements of the doctrine of limited publication. He would have to have (1) proof as to the identity of the group the 90 books went to and that they were a “selected” group; (2) the distribution was for a limited purpose; and (2) proof of a non-disclosure type agreement.

 

All that from 1896. Right. Unlikely.

 

All that said, the alleged copyright owner can still sue and threaten to sue. All one can do is file for a Declaratory Judgment based on a reasonable apprehension of being sued.

 

Not cheap but you get to pick your forum (i.e. where the suit is prosecuted) instead of letting the copyright owner pick the forum.

 

montysimmons, Patent Prosecutor
Satisfied Customers: 234
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
montysimmons and 3 other Intellectual Property Law Specialists are ready to help you
Customer: replied 1 year ago.

506(c) or 512(f) remedy?


Monty-


I'm very impressed; excellent dissection! In the event, I don't think they can "prove" *any* of the three elements! First, only 20 of the 90 are known. Second and third, there is no evidence of any limitation of purpose nor limit on the rights. (If that is so, the 1963 publication, by one of the owners of one of the 90 copies from 1896, and after the death of the author, is moot, since the original would already have been then in the public domain.) // So let us say that we can all agree that the 1996 publishers fail to meet the "limited publication" standard for 1896, yet they continue to assert rights (as they do). Is there any remedy under copyright, such as under 506 (c) or 512 (f)? Is there any precedent for a member of the "public" to assert infringement by the copyright claimant on the "public domain"? Without muddying the issue, this would be analogous to what came to be known as "reverse domain name hijacking" or "reverse cybersquatting," in the case of trademarks and domain names. It seems unfair that an expensive suit should be the only remedy to a meritless claim.

Expert:  replied 1 year ago.

Copyright Misuse and "Copyfraud"

"Copyfraud" (search Jason Mazzone, http://www.copyfraud.com) is a form of copyright misuse wherein individuals and institutions illegally claim copyright ownership of a work in the public domain (as well as other breaches of copyright law).


Perhaps the biggest problem with US Copyright law today is that some unscrupulous persons and organizations are claiming copyrights in public domain works and some greedy copyright owners are actively trying to thwart fair and other lawful uses of copyrighted works.


It may be unfair, but unfortunately, there is virtually no penalty for unjustly claiming copyright for a work in the public domain. Since, there are few laws prohibiting / criminalizing false statements about copyrights, and the laws that do exist are weak, Copyfraud is often successful.


Section 506(c) of the U.S. Copyright Act does criminalizes fraudulent uses of copyright notices and Section 512(f) additionally penalizes using the safe harbor provisions of the Digital Millennium Copyright Act to remove material the issuer knows is not infringing.

 

506(c)
With regard to 506(c), there is no consensus on whether copyright misuse can be brought as an independent claim (as opposed to as an affirmative defense) and district courts come down on both sides of the issue. However, most seem to allow misuse as an independent claim. See, for example, Midwest Tape v. Recorded Books, No. 3:09 CV 2176, 2010 WL(NNN) NNN-NNNNat *1 (N.D. Ohio Mar. 26, 2010) (allowing an independent claim of copyright misuse "because the Complaint seeks declaratory judgment")



512(f)

As for Section 512(f), a DMCA take down must occur before this action become ripe. Amaretto v Ozimals, C 10-05696 CRB (N. Dist. Of California). Specifically, the reason the DMCA "did not apply" in Rock River - there was no "takedown notification" in the first place - removed the case entirely from the ambit of the DMCA.

 

A case for you to read

http://iplaw.hllaw.com/uploads/file/95223.PDF

 

Amaretto v Ozimals,


Ozimals filed a false DMCA complaint Amaretto. Amaretto second amended complaint alleged:

 

(1) declaratory relief;

(2) statutory and common law unfair competition;

(3) copyright misuse;

(4) defamation;

(5) trade libel;

(6) intentional interference with contract; and

(7) tortious interference with prospective business advantage.


The Court rules as follows:

  • Ozimals's Motion to Dismiss Amaretto's UCL claim is DENIED. The Court has already ruled on that issue, concluding that Amaretto has stated a UCL claim; ("The Unfair Business Practices Claim is Viable," the Court said that "Amaretto's Unfair Business Practices Claim is plausibly pleaded.)

 

  • Ozimals's Motion to Dismiss Amaretto's common law unfair competition claim for failure to state a claim is GRANTED; and

 

  • Ozimals's Motion to Dismiss Amaretto's tortious interference claim in Count 6 and Amaretto's other state law claims to the extent those claims are based on Ozimals's DMCA Takedown Notification is GRANTED.

 

Section 512(f) allows a party that believes its content was improperly removed from the internet to sue the person who sent the takedown notice. Although Amaretto pleaded that Ozimals's Takedown Notifications were knowingly false, this Court dismissed Amaretto's section 512(f) claim because no takedown occurred.

 

Conclusion

 

I see no cheap fix for addressing unscrupulous persons and organizations for claiming copyrights in public domain works or greedy copyright owners for actively trying to thwart fair and other lawful uses of copyrighted works.

 

However, if you are confident that another is claiming copyright in public domain works, you could just ignore him/her. When the cease and desist letter comes, then you consider your options. File for declaratory judgment, answer with your claims of invalid copyright and that it would be frivolous for such a person to file a copyright infringement suit and you will ask for attorney fees.

 

But who wants those headaches? Might be better to pay a small fee to the "copyright pirate".

 

 

 

 

 

 

 

 

montysimmons, Patent Prosecutor
Satisfied Customers: 234
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
montysimmons and 3 other Intellectual Property Law Specialists are ready to help you
Customer: replied 1 year ago.

I was with you right up until the very end! No way I'll pay a pirate. The problem with just ignoring them is that the reading service is ethical, limits its readers to "off copyright" works, and I cannot provide the assurance they require, given that the most available copy carries a *current* copyright notice. Thanks for your good research. P.S. I prevailed on an unjustified TM infringement by a "reverse cyber-squatter" some years ago. But there, of course, there is a specialized body that allows inexpensive defense. Thanks again.

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