Thursday 25 June 2015

Sir Hugh Laddie Memorial Lecture: Alex Kozinski

I have written elsewhere recently about the undesirability of hero-worship. I think an old friend, with whom I have regrettably lost touch, might once have numbered Chief Judge Alex Kozinski among his heroes (but I won’t put words into his mouth). One day many years ago he left a message with my secretary in which he purported to be the judge. Not knowing the name, I was unimpressed.

I did learn the name not long afterwards. I came across his dictum in EffectsAssociates,Inc. v. Cohen 908F.2d 555 (9th Cir. 1990) in which he pithily summed up the defendant’s argument about the lack of documentation to support the existence of a copyright assignment: ‘Moviemakers do lunch, not contracts’. He also decided (if I remember correctly) Kremen v Cohen, in which a domain name was treated a property. Later I encountered him as the computer games reviewer for the Wall Street Journal, and of course the author of many impressive opinions.

I have, and need, only a passing acquaintance with US law, but Judge Kozinski looms large in what I do know. Perhaps that is at least in part because he sits in the Court of Appeals for the 9th Circuit, or the Hollywood Circuit as he apparently would have it, or the Internet circuit, or the fun circuit, according to the first chairman of the evening, Daniel Alexander QC (standing in for Sir Robin Jacob, who had another commitment and arrived only at the end of the lecture): the largest Circuit in the USA, with a population equal to that of the UK, and an area the size of India.

Kozinski is not only a judge but a prolific, gifted and careful author (and indeed a sometime blogger, though I recall his blog disappearing under mysterious circumstances). In one article, Lawsuit Schmawsuit, he (and Eugene Volokh – the chairman omitted to identify the co-author) discusses the use of the term chutzpah in litigation and the replacement of Latin with Yiddish in legal usage. (A questioner later asked how to translate chutzpah into Latin: “confidentia” seems to be the most likely candidate word.)

His Sir Hugh Laddie Memorial Lecture last night was accompanied by a comprehensive selection of images, and even musical excerpts, which illustrated one of his main themes (of which more in a moment). To begin with he showed us the Pasadena courthouse where he has his chambers and which is close to Hollywood, and the San Francisco one close to Silicon Valley, geographical facts which go a long way to explaining the reputation of the Circuit.

Remarking that IP in general is growing, and has become a bread and butter area for law firms and no longer an obscure speciality, he observed that while at one time patent attorneys had been merely geeks and wierdos they were now (and I’m paraphrasing slightly as my typing could not always keep up with his delivery, which at times was not as clear as I would have liked either) in the mainstream, although still geeks and wierdos. (Maybe if Sir Robin had been present we might have had a discussion about nerds, too.) It has always provided challenging and exciting cases for judges and they now also enjoy high visibility.

Much of the lecture jumped about in a slightly disjointed way. The judge spent a lot of the time talking about some of the most famous cases on which he say, beginning with his opinion in Facebook v Connectu (2011), which you can watch on YouTube here, the main importance of which seemed to be the thousands of cites and quotes of his opinion, including some in Romanian so he said he hoped his old schoolmates were eating their hearts out.

Presenting complicated arguments

Passing quite swiftly over the Bratz case, Mattel v MGA – the law in which he described as “dull stuff” which nevertheless received a great deal of publicity, and remarking (according to my imperfect transcibing) that “Blogs and tweets speak much more loudly than [pious] sentiments” (anyone with a better recollection please clarify – it seemed like a phrase that should be recorded for posterity, though the context has become lost), he came to the first big point in his lecture. The subject matter of these cases is often complicated, and it is difficult for the judges to grasp the facts, so:

The judge pointed to Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. 964 F.2d 965 as an example of how to simplify matters for the judge (though I think the brief to which he referred must have been prepared for the trial judge, and indeed Judge Kozinski did not sit on the appeal as far as I can see). In that case, Galoob made a device called the Game Genie which could be used to change the rules of a computer game (in suit, Super Mario 3). Nintendo sued for copyright infringement. In a brief which Judge Kozinski showed the audience on the screen but which I can’t find to show you, Jerry Faulk, counsel for Galoob, told the story of Debra, an 11 year old girl, who starts her afternoon reading Charlotte’s Web but cannot resist the temptation to jump to the end to check how the story ends: then watches Casablanca on a VCR (these cases are not new), fast-forwarding through the bits that don’t interest her, then finally (her brothers being at the beach) manages a rare computer game session, in which she chooses (using the Game Genie) to start in World 3 rather than at the beginning of the game. Why, counsel asked, should this last act infringe copyright when the others didn’t? Thwarting the author’s chosen order of events should not be an infringement – and the court (and the appeals court) held that indeed it wasn’t. But the speaker’s point, of course, was concerned with the story-telling not the outcome.

Moving on to Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986), which concerned the song ‘When Sunny Gets Blue’ made famous by Johnny Mathis (described by Kozinski as “on the saccharine side of sweet”) and what claimed to be a parody, ‘When Sonny Sniffs Glue’, he asked: “What good is it being a federal judge if you have to hum your own music?”. You can, it seems, despatch a law clerk to obtain recordings for you. (They can also write your opinion for you, once you have decided what the outcome ought to be.) He played extracts from both for our delectation.

Why sue?

The Fisher case led the speaker into the second big question of the evening: Why sue? Fisher was after someone who he thought had despoiled his creation. “He wanted us,” said the Judge, “to spank the guy”. Corporations are no better: take Mattell v MCA where the toy-maker sued for trade mark infringement in the song Barbie Girl by Aqua, a piece of music which was doomed to obscurity until Mattel gave it a boost. Judge Kozinski said there were several ways in which Mattel could have dealt with the upstart song: They could have sent round a large bottle of Dom Pérignon – thanking the group for keeping the Barbie name in the public eye. They could have bought up all copies of the sound recording for less than the cost of a lawsuit. Or they could have bought the rights to the song and ensured it was never heard again. But they sued: “The whole Megillah”, as he described it, bringing Hebrew into legal parlance and contributing to my education. (I’d noted it originally as “Magill”, for which any European IP lawyer of a certain age can surely be excused, and which rather baffled me at the time.) And at the end of the court’s opinion, after a summary of other steps the parties had taken in puruance of the dispute, the judge added famously: “The parties are advised to chill”. A few years later Mattel came out with a new commercial using a version of the song. “Why couldn’t they have done that to begin with?” Kozinski asked.

His explanation certainly resonated with me, and with many others I suspect: IP rights holders tend to be total control freaks. At every turn they fear the worst. Our speaker recommended a reading of an article entitled “Is the sky falling on the content industries?” by Mark Lemley, which I will do because he’s always an entertaining writer, although I do loathe the expression “content industry” (and indeed the use of the word “content”). Rightsholders, Kozinski pointed out, have opposed every technical advance since Gutenberg – photography, player pianos, gramophones, over-the-air tv, photocopying, and the VCR (in the Betamax case, Sony v Universal Studios – the link is to EFF’s resources page from which you can find the judgment). The studios feared that recording films off TV would lead to the death of cinema (or “theatre”, as they call it in the US). Then Hollywood discovered that VCRs were actually a goldmine for them – much bigger than the theatre market.

A similar fear lay behind another case,Vestron v HBO, involving the Oliver Stone film ‘Platoon’ (how much more apposite had it been Apocalypse Now). Vestron held the rights to home distribution but the studio decided nevertheless to distribute it through HBO. An injunction ws granted despite HBO saying it would destroy the market. Three months later the case settled, and the injunction was lifted. Variety reported that the pent-up demand created by the injunction would actually result in increased sales – the sky had not fallen. Kozinski observed that parties to litigation often make doomsday predictions and the judges have to keep them in check. A more recent example was Garcia v Google. Google argued that to uphold the plaintiff’s claim would be to destroy the internet and copyright law (though Google seem to me to do a pretty good job of the latter already, but that’s another story). Garcia argued she risked being killed. Neither has happened. (She lost because she had no copyright in her performance: Sir Robin Jacob later pointed out that English law would have provided her with better protection.)

Publicity rights and controlling thought

Moving on to talk about the right of publicity, a matter of State not federal law and particularly strongly protected in California, he explained that his dissent in White v Samsung had been designed to get into case books – his aim being “to get to law students before the professors get to them”. In Wendt and Ratzenberger v Host International two actors from the series Cheers sued a company that ran themed bars in airports and included in the get-up two animatronic figures supposed to resemble the plaintiffs. However, a copyright licence from the people who made the TV show weakened the case, Judge Kozinski failed to prevail over the other judges and the court supported actors. Some time later, during a layover at Kansas City airport, he called in at a Cheers bar. The animatronic figures were still there and looked nothing like the actors: the defendant’s lawyer should have brought them into court, he suggested (reverting to the “simplify, simplify, simplify” theme).

Mentioning Douglas v Mattel (the Beverley Hill Billies case), about which I noted very little, Judge Kozinski observed that these cases show the plaintiffs trying to control speech, and therefore indirectly and inevitably to control thinking. “The plaintiffs want people to pay money just to think about them.” A robust copyright law and free speech are difficult to reconcile, as the Gay Olympics case (SF Arts and Athletics v US Olympic Committee) of 1982 shows. It goes beyond normal trade mark law, conferring ownership of the word Olympic on the US Committee. The Court supported the US Olympic Committee, with Judge Kozinski dissenting. That this was an attempt to control thought was reinforced by the fact that use had been permitted for police Olympics, dog Olympics, and handicapped Olympics: to prohibit this new use amounted to controlling talking about gay rights. But the Supreme Court affirmed.

Nominative fair use

He turned next to what he called his single greatest contribution to IP law, New Kids on the Block v News America Publishing. The defendant had asked questions about the band and its members (which one would you most like to move in next door, and such like). Was this an infringement of the trade mark? While copyright (in the US at any rate) had exceptions for parody and fair use trade mark law did not, so there was no easy way out. But the name was not being used as a trade mark: it caused people to think about the band but was not trade mark use, a position which he found was supported by no case law. So how to get the case to come out right? His law clerk suggested calling it nominative fair use, and the judge said “Sounds good to me”. They wrote the opinion and the other two judges signed on. Twenty years later he came back to it and found a whole body of case law.

The Streisand effect and the limits of the law

Finally, he spoke of the limits of the legal system in resolving disputes. There might be a clear infringement but no way to get remedy. Bringing a lawsuit might do more harm than good – Barbie Girl was a case in point. So too is Monster v Vermonster (or more correctly I think Hansen Beverage Co v Rock Art Brewery). The husband and wife team who made the beer went to the court of public opinion: the video from which the judge showed us an extract is here (I had to restrain my inclination to applaud them when the clip finished) and they gained 17,000 Likes on Faacebook before Monster backed off. “Electronic pebbles”, as Kozinski called these weapons, “in hands of modern day Davids aimed at corporate Goliaths.”

The same could be said of the mock Kit Kat commercial which sought to force Nestlé to top buying palm oil: the company asked YouTube to take it down, and instead of the desired result it went viral. This is what is known as the Streisand effect, after the actress and singer took exception to having photos of her house shown on the Internet. Initially hard to find, her actions caused copies to pop up all over the internet. The same effect can be observed in the Plesner case, in which a Danish art student sought to draw attention to the gap between rich and poor with a tee-shirt design featuring a starving child with a Louis Vuitton bag. Not only did the infringement action fail, the bad publicity for the trade mark owner was huge – it would have been better had they embraced it and adopted the campaign (though perhaps they thought it was in part at least aimed at them, and their customers).

Part of the job of IP lawyers is to persuade clients to accept infringements. Often they are better off that way. They should move on (or chill?) and make the best of it.

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