The Patry Copyright Blog

The Patry Copyright Blog

by William Patry

April 28, 2005

This is the first posting for what I hope will become a non-ideological place for people interested in copyright to discuss topics of common interest. A few items to set the tone. Here's a short, trenchant opinion issued yesterday by SDNY Judge Miriam Cedarbaum (who knows more than a thing or two about copyright), denying a motion to dismiss for lack of subject matter jurisdiction. The apparent basis for the motion was a belief that two non-citizens cannot bring an infringement action for alleged acts of copyright and trademark infringement that occurred in the United States. While Judge Cedarbaum cites 28 USC 1331, it is not clear to me why she doesn't rely on the specific provision in 28 USC 1338(a). In any event, her rebuke is a good warning to do one's own homework. Here's the opinion in full in Hopeton Overton Browne v. Greensleeves Records, Ltd., 2005 U.S. Dist. LEXIS 7177 (S.D.N.Y. April. 27, 2005).

"This is an action for damages and injunctive relief arising principally under the United States Copyright Act, 17 U.S.C. 101 et seq., and section 43 of the Lanham Act, 15 U.S.C. 1125. Plaintiff settled his claims against defendants Take-Two Interactive Software, Inc. and Rockstar Games, Inc. On the eve of trial, the remaining defendant, Greensleeves Records, Ltd. ("Greensleeves"), moved to dismiss for lack of subject matter jurisdiction.Greensleeves' attorney, Louis S. Ederer, contends that this court is without subject matter jurisdiction to entertain a suit between Browne, a Jamaican national, and Greensleeves, [*2] a United Kingdom corporation. Specifically, Mr. Ederer argues that:
while it is clear that the federal courts cannot entertain a suit between two aliens based upon diversity jurisdiction, it is not entirely clear whether the same rule applies to a case involving rights arising under the U.S. Copyright Act, i.e., where the jurisdictional basis is a federal question. Specifically, Greensleeves could locate no case where a court denied a motion to dismiss an action between two aliens because the jurisdictional basis was a federal question. Accordingly, it is respectfully suggested that the Court examine this issue, and if it believes that [there is no subject matter jurisdiction,] it should dismiss this action..." Defendant's Memorandum of Law at 12.The Judiciary Act of the United States, 28 U.S.C. § 1331, provides as follows: "The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States." 28 U.S.C. § 1331. Every member of the Bar of this Court is expected to read the Judiciary Act before moving to dismiss for lack of subject matter jurisdiction. [*3] Moreover, every member of the Bar of this Court is expected to examine the law conscientiously and not to abdicate that important duty to his client by delegating it to the Court. This frivolous motion is denied."

If I understand the matter, her decision is correct: so long as the alleged infringement occurred in the Untied States and national eligibility exists under Section 104, it matters not at all whether the parties are foreign. Indeed, if the work is of foreign origin, it need not have been registered (although the lack of registration will result in loss of statutory damages and attorney's fees).

Also yesterday, President Bush signed into law the first piece of copyright legislation in the 109th Congress (P.L. 109-9). Here's a link to the GPO's version of the bill http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=109_cong_bills&docid=f:s167es.txt.pdf

The Act has four titles. The first is a new criminal provision in 18 USC 2319B for unauthorized recording of motion pictures in theatres. The second is the "Family Movie Act of 2005," a provision amending section 110 of the Copyright Act and inserted on behalf of Utah-based ClearPlay. The provision exempts ClearPlay from liability for selling filters that parents may use to automatically skip over or mute passages deemed offensive. Title III reauthorizes the National Film Preservation Board, thereby permitting the Librarian of Congress to continue to pick his top 25 movies. Title IV makes corrections to Section 108(i) of the Copyright Act to permit libraries to make copies of so-called "orphan works" under certain circumstances.

The legislation is a mixed blessing for the motion picture industry, which badly wanted title I but badly wanted deletion of title II. But that's horse-trading: you ride the one that's leaving the stable, not the one you want. There are also on-going efforts to cobble together a larger legislative effort directed at issues surrounding digital music licensing, with House IP Subcommittee Chairman Lamar Smith beng reported as wanting something before the Supreme Court's Grokster opinion is handed down, presumably in June. That may be difficult given all the interests involved.

After Grokster is handed down (here's a link to the transcript of the oral argument: http://www.supremecourtus.gov/oral_arguments/argument_transcripts/04-480.pdf,) there may be a push by the losing party to recoup its loss legislatively. That may not be so easy though, especially given the anticipated battles in the Senate over judicial nominees and the likelihood of a Supreme Court vacancy which will consume the "Upper Body" for the summer and possibly beyond. At a Copyright Office NY State Bar Association panel on Grokster that I moderated last Thursday, I asked a representative for the content owners what a realistic "victory" would be in Grokster. He replied remand for trial on the "Sony" part of the case. That sounds reasonable as a wish, but even so one cannot rule out language on Sony that might knock out the particular defendants in that case but be helpful to future P2P providers who use the opinion as a roadmap to avoid liability. One also cannot rule out, and some anticipate, an affirmance but with rejection on the Ninth Circuit's clear misreading of Sony.

In any event, it should be a long, interesting summer on the copyright front.

Bill, April 28th

12:40 PM

About William Patry

Partner, Thelen Reid & Priest, New York City, specializing in copyright trial litigation and appellate advocacy. Former copyright counsel to the U.S. House of Representatives, Committee on the Judiciary; Policy Planning Advisor to the Register of Copyrights; Law Professor Georgetown Law Center (adjunct), Benjamin N. Cardozo School of Law (full-time faculty member, founding director L.L.M in Intellectual Property program), author of numerous treatises and articles (including one on fair use with Judge Richard Posner), including a forthcoming multi-volume treatise on copyright.