When I heard the Author’s Guild claim that Amazon’s new Kindle 2 text-to-speech feature violated an author’s copyright, all I could first think of was . . . good grief.  And being a lawyer with a good stable of Yiddish terms, the phrases “oy vey” and “meshugenah” came to mind also.  This nifty feature allows the Kindle to read the e-book’s text to the user in a computer-generated voice.  But Paul Aiken, the Guild’s Executive Director, stated very matter-of-factly:  “They don’t have the right to read a book out loud.”  

There’s something inherently silly about this statement which makes me want to unequivocally proclaim: “That’s ridiculous!”  After all, when you buy a book, you certainly have a right to read it out loud, whether to yourself, your children, your colleagues, or to the friends in your book club.  This is a “fair use.”  Is it really that different if a machine does it for you—at least in this limited instance?

You probably already know that you don’t have the right under copyright law to publicly perform a literary work.  You can’t, for example, hold a public gathering open to all and begin reading salient portions of a book out loud for all to hear solely for the purpose of disseminating it (and for no other reason).  This would almost certainly constitute infringement.  And you also couldn’t record yourself reading the book out loud to your children or friends and then sell or give away the recording.  That would be infringement also.

Aiken, however, isn’t raising the public performance or the recording issues (at least not directly).  Rather, he’s claiming that the Kindle’s speech feature creates a “derivative work.”  This seems like a bit of a stretch, but not a wholly unreasonable one.  As I’ve said before, intellectual property law is a highly nuanced area of practice, and many courts don’t see eye-to-eye on these issues.  Easy answers are usually elusive, even though common sense may compel a rush to judgment.  Let’s take a look at the issue.  Under the Copyright Act, a derivative work is defined as:

A work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.

17 U.S.C. § 101 (emphasis added).  At first blush, it doesn’t seem to me that a device which reads a book’s text out loud to a person who lawfully possesses the copy would meet the “original work of authorship” test. 

For example, it makes sense why translating a book from one language to another is a derivative work.  It takes a certain degree of deliberate judgment and choice on behalf of those translating a book for a different audience to convey what the author is trying to express.  This would meet the minimum level of creativity needed for originality.  But that’s not the case here with the Kindle.  (For the moment, I’ll sidestep the more difficult question of whether automatic translation software creates a derivative work.  If the Kindle was translating the book AND then reading it aloud, it would present a more complicated issue.)

But the originality question here is a deceptively simple one, and some of the analyses I’ve read so far—in their somewhat understandable quest to show that common sense should dictate that the law respond with a resounding, “NO” in this instance—overlook subtle distinctions which need to be analyzed carefully.

Michael Kwun of the Electronic Frontier Foundation takes the position that there’s no way a derivative work could be created due to the originality requirement.  While he may ultimately be correct in the result, his analysis fails to take into account several factors.  For example, he confidently cites the case of Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 964 F.2d 965 (9th Cir. 1992), for the proposition that a derivative work “must incorporate a protected work in some concrete or permanent ‘form,’” which he argues that the Kindle’s audio feature fails to do as no recording is ever made. 

While the Galoob court stated this, it also noted that, “[a] derivative work must be fixed to be protected under the act . . . but not to infringe.” (emphasis in original).  Thus, in order for it to be copyrightable, the derivative work has to be fixed, but if it infringes it doesn’t have to be—yet it must be in some “concrete or permanent form.”

If this distinction seems fleeting to you, you’re not alone.  Kwun fails to note that other courts have disagreed with the 9th Circuit’s approach.  For instance, in Lee v. Deck the Walls, Inc., 925 F. Supp. 576 (N.D. Ill. 1996), an Illinois district court expressly rejected this rationale:

Respectfully, the Ninth Circuit’s determination of a dual definition (1) “risks that courts will naively apply this broad definition to find activities infringing that are more properly viewed as altogether beyond the scope of copyright,” . . . and (2) ignores the definition of a “derivative work” found in § 101, in which Congress specifically included an originality requirement.

In affirming the Lee court’s holding, the 7th Circuit (in Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997)) also found the 9th Circuit’s approach to be lacking: 

If Lee (and the ninth circuit) are right about what counts as a derivative work, then the United States has established through the back door an extraordinarily broad version of authors’ moral rights, under which artists may block any modification of their works of which they disapprove.

Moreover, the 9th Circuit seems to have significantly loosened the originality requirement for derivative works in Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988).  There the court found that a company which purchased legitimate copies of the plaintiff’s artwork and glued them onto ceramic tiles, which it then resold, was creating illegal derivative works.  This case has also been met with significant criticism by courts and commentators due to the lack of creativity and originality that such activities by the defendant actually entailed.

Other courts have also declined to follow the 9th Circuit’s approach.  In Precious Moments, Inc. v. La Infantil, Inc., 971 F. Supp. 66 (D.P.R. 1997), the district court noted:

Reading Galoob in conjunction with Mirage, however, it appears that the Ninth Circuit also relaxes the originality requirement when considering whether a work is a derivative work for purposes of infringement. Even if Galoob was correct with regard to fixation, Mirage reads the originality requirement out of the definition of “derivative work.”

Thus, while Kwun may have ultimately arrived at the correct result, 9th Circuit precedent doesn’t firmly support his position. 

Indeed, if the Precious Moments court is correct, originality isn’t even a requirement when creating a derivative work and  “open[s] the door for the most trivial of modifications to generate an infringing derivative work.”  Consequently, notwithstanding Kwun’s belief that the 9th Circuit’s standard immunizes Amazon from liability, the Kindle 2’s text-to-speech feature could potentially be “trivial” enough to be deemed an infringing derivative work under another formulation of the 9th Circuit’s approach.  As discussed below, the 2nd Circuit (where suit would most likely be brought) appears to have expressly rejected this rationale.

Moreover, there are also some practical considerations that Kwun fails to take into account.  As noted above, standards of originality vary from circuit to circuit, and Kwun makes the implicit and unsubstantiated assumption that if the Guild were to sue Amazon, it would sue in Washington state, where the 9th Circuit’s test would be applied.  This is unlikely.  As a litigator, I often wrestle with forum and venue issues and their importance shouldn’t be underestimated—it can make all the difference in the world.

While Amazon is located in Seattle, the Author’s Guild is located in New York, which is the 2nd Circuit’s jurisdiction.  The 2nd Circuit would apply its own test and isn’t bound by anything that the 9th Circuit does.  (And even though the 9th Circuit handles many intellectual property cases due to Silicon Valley and Hollywood, it’s still the most reversed circuit by the Supreme Court—about 86% in 2007—and its rationale would likely be met with considerable skepticism in New York.)  So if the Guild were to sue, it would almost certainly bring suit in a jurisidiction favorable to itself, and that’s not the 9th Circuit.

In fact, in Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir. 1980), the 2nd Circuit appears to have rejected the 9th Circuit’s questionable dual approach to derivative works:

First, to support a copyright the original aspects of a derivative work must be more than trivial. Second, the scope of protection afforded a derivative work must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material.

Thus—assuming that the court doesn’t distinguish between copyrightability and infringement (and the Lee court cites to the 2nd Circuit in this regard)—in order for the Kindle’s speech feature to be deemed non-infringing under the 2nd Circuit’s test, Amazon would have to show that: (1) the speech feature is “trivial,” even if it constitutes original expression; or (2) there is no “scope of protection” for the text-to-speech feature because even though it relies upon the author’s preexisting expression in order to generate its audio, no recording is ever made (as discussed shortly) and it therefore doesn’t affect any exclusive rights in the preexisting material.  (As the test is conjunctive, Amazon only has to show that it fails to meet one of the elements to succeed in its defense.)

It is this last point upon which the Guild appears to be focusing.  It seems concerned that this feature could somehow impact audio book sales and therefore affect an author’s ability to commercially exploit the audio aspects of the work.  Several commentators, however, have correctly noted that it’s unlikely an unfeeling, monotone computer-generated voice could ever replace an audiobook read by a live person.  I’ll take a book read by James Earl Jones any day over one read by the HAL 9000.

Another commentator, Nilay Patel, states that what the Guild is essentially arguing in a roundabout way is that while Amazon has the right to sell you the electronic version of the book, it can’t sell you a recording of the book, which the speech feature emulates.  He notes that the claim isn’t as “ridiculous as it seems.”

While Patel states that the Kindle’s “text-to-speech feature blurs the line between books and recordings,” sound recordings under the Copyright Act are defined as  “works that result from the fixation of a series of musical, spoken, or other sounds . . . .”  17 U.S.C. § 101 (emphasis added).  Fixation is absent here.  As Kwun correctly notes, the Kindle 2’s sounds are not fixed but “immediately trail away into the ether.”  So under the statute, it’s not technically a sound recording.  But that doesn’t make it a “ridiculous” claim either.

Finally, as mentioned earlier,  “fair use” would be a major—and likely successful—defense if the Guild ever sued Amazon.  Amazon would almost certainly cite the ubiquitous “substantial non-infringing use” rule from Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984).  It’s practically a staple defense in every technology lawyer’s arsenal these days.  And it may prove to be a persuasive one.  

Surely the legion of customers who may want to listen to a computer-generated voice in the privacy of their own homes should be allowed to do so, shouldn’t they?  The technology does appear to have substantial non-infringing uses along the same lines as video recorders and “time-shifting” of programs did in the Sony case.  Instead of reading to themselves, consumers are simply “voice-shifting,” i.e., letting the Kindle read to them. 

Ultimately, the Guild’s position seems like a weak claim, but not one devoid of merit.  It could have some teeth if presented in the proper context, but the Guild would have an uphill battle.  As a litigator, I enjoy a good lawsuit (yes, there are such things!) when there are interesting and significant issues at stake. 

Alas, however, Amazon doesn’t seem to think so.  At least not at the moment.  The company announced that while it was convinced the audio feature was legal and didn’t violate copyright law, it would give authors and publishers the right to determine, on a book-by-book basis, whether the audio feature would be enabled.  According to one report, Amazon may have retreated from its position due to the contracts that publishers (particularly large publishers) had with their authors over e-book rights.

Sigh.  It would have been an interesting and possibly ground-breaking case in copyright law.  And a good fight besides.  But I’m sure that the next one is right around the corner.  Hey, a lawyer can dream, can’t he? 

Fart.  Fart.  Fart.  It’s not often a lawyer gets to use that word in a courtroom once, let alone repeatedly.  But sometimes the practice of law in these modern times lends itself to some unusual—dare I say fun?—cases that are not your traditional fare.  Or perhaps I should say, “iFart,” which is a bit more apropos here.  

Flatulence—or more specifically, fart noises—is apparently big business in software today, especially for the iPhone.  Who knew?  And this story underscores the lengths that some companies will go to protect their trademarks and brands in this digital age.  It seems that two companies which make competing “flatulence noise simulation software” for the iPhone have gotten themselves into a bit of a, uh, legal stink. 

InfoMedia, which makes “iFart Mobile,” a popular novelty application for the iPhone, has filed for a declaratory judgment in a Colorado district court against Air-O-Matic (”AOM”), which makes “Pull My Finger,” a competing application which was apparently the leading fart simulation software before iFart, uh, exploded onto the scene.  A copy of the complaint can be viewed here.  I, for one, had no idea that digital fart simulation technology had advanced so rapidly.

AOM filed for a trademark on the term “Pull My Finger” at the Patent and Trademark Office (”PTO”) in December of 2008.  The application is pending.  InfoMedia alleges in its complaint that its use of the term “pull my finger” in its advertising and other marketing constitutes a “fair use” under trademark law and does not and will not infringe upon any of AOM’s trademark rights.   It also wants the court to declare that “Pull My Finger” is a “descriptive” phrase and therefore doesn’t qualify for protection.

According to letters and e-mails between the parties, in addition to using “pull my finger” in press releases, AOM has also accused InfoMedia of posting a YouTube video prominently using the term, posting false negative reviews and testimonials of “Pull My Finger” (while extolling the virtues of iFart), and spamming AOM customers on Twitter with ads for iFart.  While I’m not exactly sure what makes one fart application better than another—and my expertise is strictly limited to my own personal experiences with flatulence—these differences are apparently quite significant.

So what did InfoMedia do?  Exactly what it should have.  It beat AOM to the punch and filed for a declaratory judgment in its home state of Colorado.  Even though AOM is located in Florida, it now has to defend itself in a Colorado court.  That’s not necessarily a bad thing, but InfoMedia now has the “home field” advantage and AOM doesn’t have the option of suing in Florida.  It now has to find a Colorado law firm.

I’ve only seen InfoMedia’s complaint and attachments and not AOM’s response, so I’ll reserve my opinion on the case’s merits.  Trademark law can be quite complex anyway, and intellectual property cases in general can turn on factual or legal nuances.  If, however, this case was only about InfoMedia using “pull my finger” descriptively in some of its press releases, then it would probably have a strong case that it didn’t infringe. 

But if InfoMedia kept using “Pull My Finger” in fake testimonials and reviews and ran a deceptive ad campaign on Twitter, than AOM’s claim could be stronger.   As noted by AOM’s counsel:  “InfoMedia’s efforts have been directing at merging Pull My Finger and iFart in the consumers’ minds, so that searches for Pull My Finger pull up the iFart application.”

Of course, all of this depends upon whether or not the court finds “Pull My Finger” to be protectable.  InfoMedia has alleged that the term is “descriptive” and doesn’t qualify for registration.  So what does descriptive mean?  According to the PTO’s Trademark Manual of Examining Procedure:  “A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

InfoMedia correctly notes in its complaint—and cites that most revered of internet sources, Wikipedia—that the term “pull my finger” is synonymous with flatulence.  The company is essentially alleging, among other things, that the term merely describes the function or feature of AOM’s software. 

So is “Pull My Finger” descriptive?  It’s hard to say.  The PTO notes that the ”great variation in facts from case to case prevents the formulation of specific rules for specific fact situations.  Each case must be decided on its own merits.”  Translation:  The court will have to make the call after carefully considering all of the flatulence-related evidence.

If the term is found to be descriptive, AOM would then have to show that the phrase has acquired “secondary meaning” in order to get it registered.  Secondary meaning is defined as “proof that [the mark] has become distinctive as applied to the applicant’s goods or services in commerce.”  In other words, ”it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.” 

Thus, AOM would have to show that customers primarily associate the term, “Pull My Finger,” with AOM and not just with the application itself.  This isn’t easy to do, especially if a product just entered the marketplace and hasn’t been in use for a long period of time, and been extensively marketed and advertised. 

So we’ll have to wait and see what happens.  The parties may very well settle and not take the risk that litigation often entails—somebody’s got to lose, after all.  I hope they don’t settle, though.  I would love to read a court opining on flatulence and fart noises.  It would be quite entertaining.  You know, a real gas.

When I first heard about the Associated Press (”AP”) accusing Shepard Fairey, the artist who created the ubiquitous red and blue Obama poster emblazened with the word “HOPE,” for copyright infringement, the first thing I thought of was “fair use,” most notably the concept called “transformative use.”  The AP alleged that Fairey infringed its photograph of Obama when he developed his poster.

Then I read the story shortly thereafter about Fairey filing a “declaratory judgment” lawsuit in New York asking a federal court in Manhattan to “declare” that he was not infringing the AP’s photograph.  Fairey doesn’t deny that he based the painting on the photograph, but claims that it was a fair use, which is a defense against copyright infringement. 

Although I haven’t had a chance to read the complaint yet, transformative use is the principal part of Fairey’s defense.  And it’s a meritorious one that will make for an interesting legal analysis—assuming the case gets that far.  So what is “transformative use” exactly?  The Supreme Court addressed this issue most recently in Campbell v. Acuff-Rose Music, Inc. in 1994.  The Court described a transformative use as follows:

The enquiry here may be guided by . . . looking to whether the use is for criticism, or comment, or news reporting, and the like. The central purpose of this investigation is to see . . . whether the new work merely “supersede[s] the objects” of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”  Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. . . . and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.  (emphasis added)

So the court will be focusing on to what extent Fairey’s painting adds something new to the original AP photograph, i.e., its “expression, meaning, or message” and thereby “transforms” it.  While a fair use analysis can be quite lengthy and complicated (and is very fact-specific), Fairey will certainly be able to make a credible argument that his colorful and abstract painting combined with the word “HOPE” alters and transforms the photograph’s meaning or message. 

In fact, it’s unclear to me exactly what message the original photograph would be communicating by itself.  Is Obama looking confident?  Reflective?  Poised?  Attentive?  Presidential?  It’s somewhat subjective and it will be interesting to see how the AP characterizes the picture’s message.  It’s really more a question of opinion, which works strongly in Fairey’s favor.  (And what does “hope” consist of anyway?)  So Fairey has a strong defense in this regard.  But one thing that I learned about litigation over the past 15 years or so is that it’s a very fluid and dynamic environment and can change rapidly.  Unforeseen things happen.

So in practical terms, what’s the lesson to be learned here?  Here’s the basic one:  Contacting a party or sending a cease and desist letter can be risky business sometimes.  In any type of infringement action—whether it’s patent, trademark, or copyright—notifying the other side that you believe it’s infringing on your intellectual property rights gives them the ability to go running into federal court and seek declaratory relief.  After all, you’ve just told them that a problem exists.

Your notification to them of possible infringement creates what’s called a “justiciable controversy” and can give them the ability and standing to go into court to seek a declaration that they’re not infringing, just as Fairey has done.  Of course, each federal circuit has its own rules as to what creates a justiciable controversy, so Massachusetts may use a different standard than another state—although the standards will usually not differ all that much.

So why is this a problem?  If you’re located in Boston, Massachusetts and the possible infringer is located in California, that party can now go into a federal court in California and file its action and get the “home field” advantage.  The court would very likely have jurisdiction over you.  So in addition to now having to hire counsel in California to defend yourself, you would also be forced to go there to give and take depositions and engage in other forms of “discovery.”  It can be very incovenient and expensive.  That’s the point.

This is why whenever somebody contacts me about either sending a cease and desist letter or is the recipient of one, it’s crucial to really sit down and strategize as to what your next move should be.  If litigation is a probable outcome and you’re dealing with a well-financed adversary, then it may be best to strike first and file an action in your home state where it would be most convenient for you.  (It’s been my experience, however, that many clients—especially those who have never been through the litigation process before—are somewhat leery of filing litigation first given its potential expense and duration.) 

Of course, these are general guidelines only and each situation will have its own facts and nuances that will dictate how best to proceed.  The practice of law doesn’t usually lend itself to easy answers, particularly where issues of infringement are concerned.  Many factors need to be taken into consideration.

So, Fairey did the smart thing.  Rather than wait and let the AP sue him—especially given the meritoriousness of his case—he struck first.  It will be interesting to see how things develop.  And it’s always possible that the case will settle before the court has a chance to rule.  In many instances, filing an action such as this is simply designed to show the other side that a person is serious about protecting his/her rights and that a compromise might be in everyone’s best interest.  But Fairey has a strong case.  We’ll have to wait and see.

Does the flood of information ever end?  Do we have to know everything about everyone—in real time?  While location-tracking software is not new (well, not too new, anyway), Google’s expected move into this market only further reinforces Scott McNealy’s eerily prophetic saying, “You have zero privacy anyway.  Get over it.”  But now when you “get over it,” all of your friends will be able to see exactly where you were and when.

Google just launched its Latitude software that lets mobile phone users share their mapped location with their network of contacts—if they so choose.  This is nothing new, per se, given the existence of other companies such as Loopt, BrightKite, and Dopplr (for example), as well as most people’s familiarity with GPS, but Google’s entry into the marketplace provides further evidence that the technology is becoming even more widespread.  Maybe too much so.  But when the 800 pound gorilla talks, everyone listens.

According to the article, Google “hopes it will help people find each other while out and about and keep track of loved ones.”  Those are helpful and noble intentions.  What parents wouldn’t want to know where their teenagers are?  Or be able to direct a lost friend to your precise location?  But hope is a fickle thing.  And what Google hopes for and how Latitude will actually be used are two entirely different things.  We all know what the road to hell is paved with.  Lawyers make their living off of it (more on that in a moment).

Google requires that people expressly sign-up for the service and gives them the opportunity to tailor their preferences as to who they can share their location with, as well as the type of information shared.  While that gives the user some degree of control, it’s probably only a matter of time before a bored 16 year-old in hacks into the system and tracks people. 

Even if this doesn’t occur anytime soon, a disgruntled ex-husband may be able to track his ex-wife who forgot to take him out of her “network.”  While entire companies have sprung-up offering this type of GPS-based (and typically illegal) service, now a person can do so without any special equipment whatsoever.  Just a little bit of software and a forgetful spouse.  It goes without saying that stalking is a very real problem in this digital age and tools that used to be available only to law enforcement are becoming increasingly more common.

The fact that such software is even available is part of the larger privacy debate that will be with us for quite some time.  There are no easy answers in a society that never seems to have enough information about others.  Yet from a litigation perspective, few people may realize that all of this location data is stored by a provider for varying degrees of time and subject to subpoena and disclosure in the proper circumstances. 

Thus, in criminal or civil cases where a person’s time and location is an issue, it provides yet one more tool for lawyers to pursue when representing their clients.  Just ask those divorce attorneys in Massachusetts and elsewhere about getting all of that “E-Z Pass” toll information to discover cheating spouses.  Modern convenience has its costs.

So the age old Perry Mason question, “Where were you on February 4, 2009?” now becomes, “Why were you on the corner of 53rd and 7th Avenue at 3:12 p.m. on February 4, 2009?”  And while it may—may—help lawyers such as myself get to the truth faster in a courtroom, the human part of me (and yes, that still exists) finds it it to be unsettling.  So bad grammar aside, the question, ”Where you at?” now becomes, “Why you there?”  Ah technology . . . .