Court To Film Director: You Must First Create An Infringing Work Before We Can Discuss Whether Or Not It's Actually Infringing
from the take-this-loaded-gun,-press-it-to-your-temple-and-await-further-instructions dept
Is there anything more gloriously effed-up than IP law? I submit to you there is not. Here's the sub-headline for Eriq Gardner's Hollywood Reporter article, which deftly sums up the predicament facing a filmmaker looking to make a movie based on an old Buck Rogers novella.
Don Murphy can only clear rights if he potentially violates them first.That's the ruling boiled down to a dozen words. The details, while enlightening, do nothing to change the underlying fact that Murphy may have to get sued for copyright infringement before he's allowed to prove he isn't infringing on anything.
That's not the only conundrum Murphy's facing. The other is this: no studio wants to touch the project until the rights have been sorted out. Murphy announced his plans to make a film based on "Armageddon 2419 A.D." at last year's Comic Con. The book was published in 1928. Murphy believes the copyright on the book and characters expired in 1956.
Quite obviously, the trust presiding over the original publisher's estate feels differently. The Dille Trust told Murphy the property must be licensed -- despite offering no proof that the copyright was still valid and despite one of the trust's beneficiaries (Robert Dille) being on board as a co-writer.
So, Murphy did what others have done: sued to have the work declared in the public domain. The problem is he hasn't infringed on the possibly uninfringeable work. The court, relying on a 2007 Supreme Court decision, basically tells Murphy he must start making this possibly-infringing work before it can start addressing his public domain claims.
Looking at the Buck Rogers case, Conti applies the Supreme Court's holding by questioning whether the dispute rises to an actual controversy from "immediacy" and "reality."
Regarding immediacy, Conti writes:The Supreme Court decision being cited to put Murphy in the awkward position of having to roll the dice on copyright infringement has nothing to do with copyright. It's all about patents. And it's actually a good decision.
"In this case, the amended complaint does not contain specific, or even approximate, allegations about when plaintiff could begin film production, let alone release the allegedly infringing film, assuming a declaratory judgment is entered in plaintiff’s favor. A dispute 'lacks immediacy' where there are no allegations about 'when, if ever,' the product will be 'used in a manner that could potentially infringe' the intellectual property rights of another. Plaintiff’s nebulous allegations that 'development of the [film] is well underway' and that 'further production efforts could be undertaken in short order' are conclusory and insufficient to show the immediacy required by Article III."
Examining reality, Conti continues:
"At this early stage, the production and release of plaintiff’s film are 'contingent future event[s]' that may not occur 'as anticipated' or 'indeed may not occur at all.' As pleaded by plaintiff, the film project is still in an inchoate stage. Plaintiff does not allege it hired or entered into preliminary agreements with the parties 'integral to the commencement of production'—let alone the release—of a 'major motion picture.'... Plaintiff received 'preliminar[y,] . . . firm interest' in the project from Warner Brothers and Sony. Without allegations of actual commitment or intent to commit—through, for example, letters of intent—plaintiff’s vague, equivocal assertions fail to demonstrate the reality of this dispute. Plaintiff does not allege it entered into finalized, or even preliminary, financing, acquisition, licensing, or distribution agreements with these companies in connection with its potential film."
The latest ruling is in the MedImmune/Genentech case looking at whether or not licensing a patent means you can't challenge its validity. Genentech (and plenty of other patent holders) claimed that once you licensed a patent, you were basically saying that you agreed to its validity, and could no longer challenge it. The lower court agreed. This is problematic in a lot of ways, especially with the rise in patent extortion lawsuits, where it's often cheaper to just license the patent rather than fight it. MedImmune licensed the patent early on, rather than waste money fighting it, but challenged it later on when the patent in question became much more important (and the license much more expensive). With an 8 to 1 decision, the Supreme Court sided with MedImmune, saying that licensing a patent shouldn't preclude challenging that patent's validity. Another small step in the right direction.And yet, here we are, looking at a director being asked to set himself for a lawsuit by the Dille Trust in order to prove he doesn't owe it anything. And in order to do that, he needs to convince a studio to walk across this IP minefield with him -- something no studio in its right mind would ever be willing to do.
The court has given him permission to file an amended complaint, but it's unclear what purpose that will serve under the Supreme Court's MedImmune decision. The only sensible response is to let the idea die. No studio will back a project based on a disputed property and no director is going to put the work in just to be hit with an injunction and statutory damages if the trust comes up with proof it still holds the copyright.
On the other hand, all the Dille Trust has to do is continue to insist it owns the property… even if it doesn't. That's it. Hail copyright.
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Filed Under: buck rogers, copyright, don murphy, public domain, standing
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Ruck Bogers?
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Re: Republishing an intentional ripoff
Given how screwed up copyright law is, particularly for old works (e.g. pre-1976), being confident that the work ought to be public domain is not enough. The only safe way for this work to be made is to succeed in the lawsuit that he just lost: get a court to declare the work's status, hopefully informed by any evidence the Dille Trust has and will submit as sworn records.
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Project Gutenberg thinks it's public domain already
I don't know if he's allowed to submit this as evidence though.
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Why not just create a real case or controversy?
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Publish
Just take the file from Gutenberg, run it off a local Xerox a few times. Sell one to his lawyer's friend. Petition the court.
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create a case but be smart about it
You have a good argument to get the actual damages set to one dollar if you get convicted and if not, you can make your film. And the judge gets a little bit of infringement to allow the case.
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That's not a problem with U.S. IP law, that's a universal feature of every legal system in history, right? Just making sure we're on the same page here...
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This is a constitutional issue, not a copyright issue
In this case, registration was mandatory. The problem here isn't a copyright issue, it's a constitutional issue. The federal courts won't give what they call "advisory opinions" not because copyright law won't let them, but because the constitution says they only have jurisdiction over a present "case or controversy."
It wouldn't (necessarily) be unconstitutional for executive or legislative branch entities (like the PTO or... say... the Copyright Office) to do something similar, though.
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Prior to the 1970s, it WAS the law that you HAD to register (and pay a fee) to receive copyright protection or your project was PD at publication...which is why so many never renewed their copyrights at the 28-year point for the second 28-year period.
Not worth the cost and too much effort.
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If it was really that valuable then you'd think that failure to file for an extension would the the minority, but if memory serves it was actually dead opposite, with the overwhelming majority not even bothering to do so.
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Copyright Renewal Rates 1958-1959
Books - 7%
Periodicals - 11%
Lectures, Sermons and other Oral Works - 0.4%
Dramatic Works - 11%
Music - 35%
Maps - 48%
Works of Art - 4%
Technical Drawings - 0.4%
Art Prints - 4%
Movies - 74%
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Thus, it would literally be impossible for the government to provide a database of copyrighted material in the way you suggest.
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In the absence of registration, the entire system becomes even more unworkable.
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Anthony Rogers, not Buck Rogers
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Looks like a conspiracy to me
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Re: Looks like a conspiracy to me
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Isn't this also the problem with Fair Use?
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Copyright law
Go figure
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Cost Benifit
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Another idea to loophole around this
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Re: Another idea to loophole around this
What would happen is some variation of this: the trust would not press a complaint about the cheapie short, but would about a commercially viable film.
The filmmaker might be able to get a preliminary ruling, but the trust would just say that the ruling only applied to the short and the commercially viable film must be considered separately.
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It is time that copyrights are actually registered with useful information. That all claims and subrights are clearly spelled out in 1 place, and failure to have these on file means you surrender them.
Everyone pretended that 'Happy Birthday' was owned, millions of dollars were collected for it.... and oh hey look.
They insist that everyone else bear the costs of protecting their copyrights online, the least they can do is show clear ownership so if someone wants to do things the right way it isn't down to 'well we might have some of the rights but we dunno and won't bother to look until you make it and then we can swoop in and demand huge rewards'.
Imagine a 10 yr program, update all of the copyright info in the central database or surrender them. You then only have to look in 1 place to see if you need to obtain rights, and who can authorize or deny your use of them.
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It is hard to call yourself a public service institution,
The position of the court is likely based on a deprecated economic viewpoint. A more modern view might be that public domain IP can be regarded similarly to "natural capital", and it's defense therefore a duty of the public trust.
The public wealth created in IP every year in the U.S. is huge. Open source software alone contributes billions of dollars in off-book national asset value to the public trust. This later contributes to on-book capital (GDP) in thousands of ways by facilitating commercial projects.
The issue is not whether public value is created, but whether it is recognized legally. The pushback against such recognition, is that business's are dependent on externalized expenses. (archaically termed "tradgedy of commons") And it hard to conceal crimes against the public, when you are compelled to account for externalized expenses. (think pollution)
Proprieterization of wealth inherent in public domain IP by means of false prosecution is no less a crime than polluting a public waterway. If he tore out the pages of the novel and threw them on the ground, could he not be cited for littering? Apparently the collectively owned soil is legally distinctive from the collectively owned speech on the individual pages?
This is not just a problem with IP, but with GAAP. This stuff is not being accounted for, because to do so would shine a light on so many criminal activities that exposing them would crash the economy.
So the courts play Captain Klink, and the economic bubble gets bigger. Needle anyone?
Overturn Citizens United. Reinstate Glass Steagal. Bust the Trusts.
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APUS
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