The Laboratorium
April 2012

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GBS: A Timeline

Things are picking up again in the Google Books litigation. Here’s a timeline with all of the upcoming dates and deadlines. I’ve posted a copy of this to the Public Index homepage, and will keep the dates there updated as the case progresses.

  • May 3: Oral argument on standing and class certification in Authors Guild and ASMP.

Authors Guild v. Google

  • May 4: Opening expert reports due
  • May 24: Rebuttal expert reports due
  • May 28-June 8: Expert depositions
  • June 14: Motions for summary judgment due
  • July 23: Oppositions to motions for summary judgment due
  • August 13: Replies in support of motions for summary judgment
  • September 6: Oral argument on summary judgment

ASMP v. Google

  • June 13: Class certification motion due
  • July 11: Opposition to class certification due
  • July 25: Reply in support of class certification
  • August 13: Fact discovery complete
  • October 1: Expert discovery complete
  • October 29: Summary judgment motions due
  • November 26: Opposition to summary judgment motions due
  • December 10: Reply in support of summary judgment motions

Authors Guild v. HathiTrust

  • May 11: Reply in support of motion for partial summary judgment due
  • May 20: Discovery complete
  • July 20: Fully-briefed motions complete
  • November: trial

The ACTA Debate Gets Ugly

Tamlin H. Bason, Online Infringement Legislation Fuels Furious Debate at New York Conference, BNA Patent, Copyright, and Trademark Journal (Apr. 23, 2012) (subscription only, sorry):

One day later, at a separate panel focusing on the need for enforcement to back up international intellectual property rights, the president of the Hungarian Copyright Council, Mihály Ficsor, compared the fervent opponents of ACTA to Nazis.

As to the ACTA opponents, Ficsor criticized “the fear-mongering style, the absence of seriousness, and the lack of honesty of the slogans of the organizers of the hysterical mob.” He said, “If a big mislead crowd repeats the same lie [and] enthusiastically supports the same stupidity,” then the result can manifest in social and political dangers.

This tops even Hugh Hansen’s unintentionally revealing argument that democracy is incompatible with intellectual property.

On Tenure

This afternoon, the faculty of New York Law School voted to recommend me to the Board of Trustees for promotion to full professor with tenure. I have been floored by the outpouring of warmth from my colleagues and my friends. But one comment in particular, from Randy Picker on Twitter, has stuck with me:

@grimmelm Big congrats! And at this point I go all Saving Private Ryan on you: Earn it. Tenure is about the work to come year in, year out.

That, I think, is exactly right. There’s a joke, trite and tired but no less true for it: Making partner is like winning a pie-eating contest where the prize is more pie. So too for tenure; it is bestowed not as a reward for one’s past work, but in expectation of the work to come. Security of position is conferred so that the scholar may undertake the uncertain, may speak truth to power, may follow the facts wherever they lead, may heed the greater good and the longer term. My field is law, with an unofficial minor in computer science, but it is really the same everywhere. Increase knowledge, teach those would learn, serve humanity.

This is hard work, a lifetime’s worth and more. But it is not lonely work. I have been inspired by the encouragement of my senior colleagues; sustained by the kindness of my peers; uplifted by the enthusiasm of my students. Thanks to you, I open my office door each day with curiosity, rather than with dread. Thank you, all, more than I can say.

It’s been a lot of pie, and there’s far more to come. I count myself lucky to have been born with an academic sweet tooth, and to have been invited to this feast.

GBS: Oral Argument May 3

Judge Chin issued a brief order setting oral argument for May 3, 2012 at 10:00 AM on Google’s motions to dismiss and on the author plaintiffs’ motion for class certification.

The order also addresses a few other housekeeping matters. Google asked for permission to file a “surreply” brief to respond to the arguments in the authors’ brief replying to Google’s objections to class certification. Permission denied. It also looks like Google complained about the Edelman and Gervais expert reports. Judge Chin didn’t let them take depositions from the experts immediately, but did say he’d let Google object to the expert reports as part of the oral argument.

Fun times.

Me and My (Copyrighted) Shadow

As reported by the Law and Magic blog the famously silent magician Teller is suing a Dutch magician for copyright infringement. The suit concerns Teller’s remarkable trick illusion Shadows, in which he cuts the shadow of a rose, causing petals to fall off of the real rose that is casting the shadow.

The leading academic paper here is Jacob Loshin’s Secrets Revealed. (He also gave a wonderful talk at New York Law School as part of our “IP Surprise” lecture series on intellectual property in unexpected industries.) He argues that magicians rely on informal enforcement mechanisms because copyright is a bad fit for magic tricks. The leading case is Rice v. Fox Broadcasting, aka, the “Mystery Magician” case, although it’s not really quite on point. It was a copyright infringement case brought by “the “Mystery Magician,” who sold a videotape showing how various tricks were done, against Fox, which aired a series of how-tricks-are-done TV specials. He lost. The idea of showing how tricks are done is too abstract and too commonplace to support a copyright; “an overall mood of secrecy and mystery” is inherent in a show on the subject. Everything else about the Fox specials, from the dialogue to the character of the magician, was sufficiently different that there was no infringement.

I’ve uploaded the complaint in the case, along with the copyright registration for Shadows. They’re both short and readable. Some observations:

  • The defendant, a professional magician with a long-term engagement at a hotel in the Canary Islands, made a YouTube video (now offline thanks to a DMCA takedown) of himself performing Shadows, which he described as “my version”of the “great Penn & Teller performing a similar trick.”
  • How similar is his version? It’s impossible to say without the video. From the low-res pictures in the ad, it appears that the details of the staging may be different. No cheesy red curtains for Teller.
  • The version described in the copyright registration (pages 5-6) consists of stage directions and a single illustration. This raises a subtle question of what the “work” protected by copyright is, and whether Teller’s registration can support anything beyond the four corners of the stage directions. That would potentially exclude a lot of telling, highly characteristic details from the similarity comparison.
  • The Copyright Act of 1976 confers copyright on many categories of works, including pantomimes and choreographic works. I’m unaware of any cases under the Act about pantomimes, so this may well be the first. But the lawsuit refers to it as a “dramatic” work.
  • The complaint argues that the defendant is planning to “sell” the trick for $3000. I don’t speak Dutch, so I can’t quite tell what is being sold. $3000 seems incredibly high for a video, so I doubt it’s that. If it’s the secret behind the trick, I don’t see how there could be a copyright infringement. As Loshin points out, these are uncopyrightable ideas.
  • Perhaps he’s selling a kit to enable you to do the trick yourself. That wouldn’t infringe either; it’s not substantially similar to the the stage directions, nor is it a market substitute for them. You could make a derivative works argument, perhaps akin to the Seinfeld Aptitude Test case, but I think you would still lose: a kit wouldn’t be a copy of the expression in the trick itself. And in any event, there’s a Baker v. Selden problem: any expression in the the kit is necessarily incident to the idea of how the trick is done, and is therefore uncopyrightable.
  • Teller offered to buy the defendant out, but they couldn’t come to terms.
  • Is Teller upset at having the secret to the trick revealed? That seems uncharacteristic, given the glee with which Penn and Teller show the audience how (some) tricks are done. Is he upset that his rendition of the trick is being mimicked? He shouldn’t be: no one is going to be able to come close to the way he can raise an eyebrow with profound emotional effect. Does he want to keep anyone else from doing a rose-and-shadow trick? That would be … unfortunate.
  • The complaint also includes a Lanham Act § 43(a) claim for false designation of origin or false statement of fact, which I can only describe as “dead on arrival” in light of Dastar. This is precisely the situation Dastar was designed to address: Teller’s § 43(a) claim is based on exactly the same conduct—unauthorized performances of Shadows—as his copyright claim. Teller is not the “origin” of Shadows.
  • I can’t imagine that the defendant, a Dutchman who works in Spain, is eager to defend himself in the District of Nevada. The jurisdictional issues here could be interesting.

I will be watching the case with interest, but my initial sense is that Teller has an uphill fight on his hands, should the defendant choose to contest the case.

UPDATE: After some time with Google Translate, I think he’s selling a kit. “Volledig zelfwerkend!” was the giveaway phrase.

UPDATE: In the comments, Jay Doughtery quite correctly points out that I missed an even more on point piece about magic and copyright: his own “Now You Own It, Now You Don’t: Copyright and Related Rights in Magic Productions and Performances.” It’s also published in Law and Magic. My apologies to Jay and to my readers.

Rules Are Relative

It’s a commonplace to say that while some provisions of the Constitution may employe diffuse standards (“due process of law”), there are others that are perfectly crisp and rule-like. The age requirements, for example:

No person shall be a Senator who shall not have attained to the Age of thirty Years …

Simple enough, right? There’s no ambiguity about the content of “attained to the age of thirty Years,” is there? There is.

Take a fifteen-year-old, toss her in a spaceship, accelerate it to a relativistic speed with a Lorentz factor of 2, and let it cruise outwards for ten of our Earth years. Turn the ship around and bring it home at the same speed. When our returning astronaut steps down the gangplank, twenty years will have elapsed in the Earth’s reference frame; it will be thirty-five years after her birth. But from her perspective, only ten years of subjective time will have elapsed; she was born twenty-five years ago. Has she “attained to the age of thirty Years?” Good question.

The difference between “due process of law” and “thirty Years,” then, is merely one of degree. If you think that any text is perfectly free from ambiguity, it’s only because you haven’t thrown a hard enough hypothetical at it.

Oh, Judge Kozinski

It took me a while to get this one.

Judge Denman was still at it in 1952, when, as Chief Judge, he complained about “[t]he cavalier refusal of the court to consider the contentions of the corporation’s petition” and “[t]he shabby treatment of the litigant and his counsel in refusing to consider their contentions and authorities … .” W. Pac. R.R. v. W. Pac. R.R., 197 F.2d 994, 1018 (9th Cir. 1951) (Denman, C.J., dissental) (not a divorce case).

Alex Kozinski & James Burnham, I Say Dissental, You Say Concurral, 121 Yale L.J. Online 601, 604 n.20 (2012)

GBS: To Certify a Class

The briefing is complete on the plaintiffs’ motion to certify a class of authors. The most important documents are Google’s opposition brief and the plaintiffs reply brief in support of the motion, plus the letter of academics in opposition coordinated by Pamela Samuelson. Maybe it’s just in comparison to the earth-shaking groundbreaking settlement, but I felt that the arguments for and against class certification were a little anticlimactic. (See also my earlier discussion of class certification.)

Simplifying slightly, Google raised three kinds of objections.

Unrepresentative Plaintiffs: Google’s first argument is that the named class representatives—Joseph Goulden, Jim Bouton, and Betty Miles—aren’t adequate representatives for the class of authors whose books Google has scanned. Google backed up this argument in a surprising, and fairly clever way: it commissioned a $100,000 survey of authors to see what they thought about Google Books. Starting from a list of 142,000 published authors in the United States, a survey firm tried to reach about 10,000 authors by phone and another 5,000 by email, and ultimately was able to get 880 responses. Some key findings:

  • 58% of authors surveyed approve of Google’s scanning; 14% object to it.
  • 74% of authors surveyed think there’s no financial impact from scanning and snippet display; 19% think it hurts authors, and 8% think it benefits them.
  • 45% of authors think Google Books improves demand for their books; 4% think it harms demand.

Google, unsurprisingly, argues that these numbers show that the majority or vast majority of authors approve of Google Books, and wouldn’t approve of a lawsuit to stop the scanning. Since the representative plaintiffs are bringing just such a lawsuit, Google says, this is a “fundamental conflict” preventing them from being adequate representatives.

The plaintiffs, unsurprisingly, dispute everything Google says about the survey. They argue that the survey itself is flawed, because it asked leading and incomplete questions, and because of its low response rate. They also argue that the survey—no matter what it found—is irrelevant, because it didn’t ask respondents what they would want to happen if the lawsuit succeeds. (This last argument strikes me as casuistry, given that the survey asked whether they “approve of” or “object to” Google’s scanning—but it is noteworthy that the survey never asked about attitudes towards the lawsuit.)

This gets at a deep, fundamental question about the nature of class actions. What should a court do when some class members like the defendant’s conduct and others don’t? The authors here have a ready answer: allow the lawsuit to go forward as a class action, because any class members who approve of Google’s actions can opt out. But that just kicks the question up a level of abstraction. Should authors have to opt out of Google Books, or should they have to opt out of the class action? Neither default is entirely satisfying.

Alongside this general argument—“A representative cross-section of authors like Google Books”—there is also the argument that academic authors in particular like Google Books, both as authors and as readers. Given that Judge Chin’s opinion held that the plaintiffs there had not adequately represented the interests of academic authors, I was surprised that Google didn’t make more of this point. Samuelson’s letter, on the other hand, hammers it powerfully, emphasizing that they disagree with the decision to bring the lawsuit, with the legal theory on which the lawsuit is based, and with the relief the author plaintiffs request as a result of the lawsuit.

The author plaintiffs, in reply, argue that there is no dichotomy between academic and other authors, that they can always opt out, and that they’re making the argument as users of the search engine, rather than “from the position of class members whose copyright interests are undeniably affected int he same way as the named plaintiffs.” There follows a paragraph that manages to be both nonresponsive and patronizing:

Further, the late husband of plaintiff Betty Miles was a Columbia University professor, and her copyright interests include those in his textbooks. She testified that “he was an academic author” who “wrote textbooks,” and that she is an adequate class representative for all authors, because, “I know a great many academics, as I know a great many plain authors and I know that no matter what kind of book they are writing, they are all concerned about their copyright and the rights of holders of copyright to control their books.” Miles Dep. at 93-94. See also Bouton Dep. at 80-81 (“Whether it is a gardening book or a history book or academic textbook or a baseball book, we are all protected by copyrights.”); Goulden Dep. at 59 (as a non-fiction writer, Mr. Goulden, like academics, must do “in-depth research” for his books).

Where to start? First, there’s Miles’s reference to “academic” and “plain” authors, as though there were something unusual about academics. Then there’s her unwarranted assertion that all authors are “concerned about their copyright and the rights of holders of copyright to control their books,” a claim that doesn’t accurately represent how scholars concerned with the cumulative development of knowledge think about copyright. Bouton’s statement is a legal conclusion, not an actual statement of shared interests. And Goulden’s point is true enough but has nothing to say to the Samuelson letter’s point that “the main reward we wish to attain from our intellectual labors is the satisfaction of contributing to the ongoing dialogue about issues of concern to us.”

In short, I think the paragraph would have been better off omitted from the brief. I’m surprised that not one of the six lawyers on the brief noticed how hollow it rings. It demonstrates, in a remarkably short space, precisely the point it tries to disprove: that the named plaintiffs don’t understand academic values or share academics’ goals.

Copyright Ownership

Google’s second major argument is that a class action is inappropriate because there will be too many individual issues regarding ownership of the copyrights. Here, Google goes into some detail to set out the wide range of publishing contracts and the different kinds of terms they contain. Some publishing contracts transfer promotional rights (which is how Google characterizes snippet display); others don’t. Some books are works made for hire by authors who never hold a copyright interest; others aren’t. Some books are registered promptly; some aren’t. All of these issues, and more, which Google calls “a fact-intensive, individualized inquiry that must be undertaken on a book-by-book basis,” bear on whether a given author has a viable claim against Google.

The plaintiffs reply, and I think quite convincingly, that very few of these complexities will actually beset the lawsuit. There’s no serious question that many authors are copyright owners with standing to sue. As the brief explains:

It is completely unnecessary to determine who had the responsibility to register a copyright, whether legal title to an exclusive right has or has not yet “reverted” from a publisher to an author, and whether or not a book is in-print. Whether a book is in-print or out-of-print, reverted or not, an author with royalty rights (like all the authors in the contracts Google attached to its papers) is a beneficial owner entitled to sue an infringer like Google, who had no license to use any of the books it reproduced, distributed and displayed.

This strikes me as right, as do the pages of detailed argument that follow. It will be “administratively feasible” to make an initial determination of which authors are class members on the basis of relatively simple copyright registration records. A great many class actions require some level of self-certification on the part of class members who submit claims, e.g. “I bought a Roto-Widget before August 25, 2008 and paid at least $25 for repairs within the Warranty Period.” Sometimes documentation is required; sometimes it isn’t. These bureaucratic niceties of sorting out membership don’t derail the fundamental suitability of the Roto-Widget product defect litigation for class-action treatment. So here. Ownership is not a contested legal issue that divides class members against one another or will force a million sub-trials; it is a threshold question that affects which authors are entitled to join in the victory lap if the plaintiffs win.

Fair Use

Google previews its forthcoming fair use arguments by arguing that fair use will require individualized treatment. What kinds of differences will be implicated? Google gives a few examples:

  • Fiction, non-fiction, and other kinds of books will have stronger and weaker claims to fair use in the second factor: the nature of the copyrighted work.
  • The fair use case for in-print and out-of-print books looks very different; even classifying a book as one or the other will be hard. (Strangely, it wasn’t so hard when it was one of the tasks required by the proposed settlement…)
  • A snippet is a large fraction of a short book than of a long book.
  • Snippets from informational books may contain no copyrightable expression at all.
  • The effect on the market for particular books will depend on evidence about those particular books’ sales and licensing. Here, the survey makes a return appearance: as evidence that the perceived economic effects vary by author.

These arguments increasingly strike me as small beer. Some are just silly: snippets are short enough that the difference between a snippet of a 428-page book and a snippet of a 32-page book will not make much of a difference. And others, while serious, can be addressed with a relatively small number of subheadings in a potential opinion. Slicing the world up into in-print and out-of-print books might even be sufficient on its own for a fair use ruling. There are enough cases out there with broad fair use holdings (both for and against) that there doesn’t seem to be an insuperable judicial obstacle to considering Google’s uses against a wide array of books all at once.

The plaintiffs’ reply here is … interesting. The five pages in which they discuss fair use and common questions are partly an argument that these supposedly fact-specific questions can indeed be resolved on a class-wide basis. But much of the discussion is taken up with arguments on the merits: that what Google is doing is categorically, across the board, unfair. “There are no true individual questions here,” seems to be the message, “because the case against Google is so overwhelming in each and every individual case.”

The plaintiffs do have a powerful point about the uniformity of Google’s practices: it scans books en masse, makes a single index, runs a unified search engine, and ships copies back to libraries en masse. It would be perverse indeed if the legal system lacked a mechanism for generating “common answers” as to the legality of those practices. Class actions aren’t the only possible such mechanism, but they’re certainly a plausible-sounding one.

Still, I wonder about the tendentiousness of arguing the fair use question in the class certification motion. I understand the desire to get in first before a judge in framing the forthcoming arguments. But Judge Chin already has thought about fair use issues in this case; indeed, his earlier opinion touches on them briefly. And putting the argument in the class certification brief gives Google a nice preview of what lies ahead.

Case in point: the experts. The author plaintiffs’ filings include expert reports from two professors: Harvard’s Ben Edelman and Vanderbilt’s Daniel Gervais. Edelman opines that the threat of security risks from scanning projects reduces the market value of books; Gervais opines that if the court rules for the plaintiffs, the market or Congress will develop a collective licensing solution. Neither of these issues bears significantly on the class-certification issue. And yet the plaintiffs filed their expert reports now, well in advance of the deadline. Perhaps there’s a reason why this tactical advantage was already gone, but this seems like an example of firing well before the whites of Google’s eyes were visible.

The expert reports are a little strange in other respects, too. Edelman doesn’t claim that Google’s or libraries’ systems for books are actually insecure. Nor does he claim that a possible security breach would, if it happened, reduce the market value of books. Instead, he reaches a much stronger conclusion: if Google wins, “the market for books will be adversely impacted by the potential for security breaches.” Given that his report starts by describing current, actual widespread unauthorized distribution of digital books, one wonders how much difference the fear of hypothetical security breaches would make.

Overall Thoughts

Having seen the full briefing now, I’m more sympathetic to the class certification motion than I expected to be. Neither the ownership nor fair use issues strike me as presenting the kind of difficulties that would preclude class treatment. The only serious issue—and it remains a very serious one—is whether the named plaintiffs can truly represent this class. The survey evidence that authors have mixed feelings about Google Books is interesting; I’m still digging through caselaw to try to understand how relevant (or irrelevant) it is. And the academic authors’ letter makes a strong, sharp point, one not effectively answered by the plaintiffs.

I hope to post soon about the new scheduling order, previewing the next few months in this and the other Google Books cases.

Impeach Earl Roberts

Progressives are seriously worried about where the Supreme Court will go in striking down the Affordable Care Act. They’re not worried enough.

There are three constraints on how far a Court can go in pushing a new vision of what Constitutional law ought to look like. It needs a working majority of Justices, a supply of novel and credible-enough legal arguments to overturn or distinguish past precedents, and sufficient popular support to protect it against whatever backlash its rulings inspire. The current Court has the first, thanks to Justice Kennedy. It has the second, thanks to scholars like Randy Barnett. And it has the third, thanks to the Republican party and its base.

How much anger can a Supreme Court generate without being shaken from the decisions it wants to issue? A lot. The Warren Court was reviled. Until we get to the point when Justice Scalia is being regularly hung in effigy, the Supreme Court will still have all the political headroom it needs.

What Is “Commingling,” Alex?

Azam Ahmed and Ben Protess, Clients Raise Questions About MF Global Checks, New York Times DealBook (Apr. 1, 2012);

Building a criminal case has proved difficult for federal prosecutors. It is unclear whether anyone at MF Global knowingly tapped customer money to cover the overdraft at JPMorgan. MF Global, like other firms dealing in futures, kept a buffer of its own money in customer accounts to facilitate day-to-day operations, and may have dipped into the customer money without knowing it.

Wait, what? Everyone knows that putting client money in your own account is problematic. That’s commingling. It makes accurate accounting much harder, and misappropriation much easier. But putting your own money in a client account is also problematic, because it’s also commingling. There’s a reason that professional responsibility laws prohibit lawyers from commingling funds in either direction. With a rigid separation between a client account and the lawyer’s own account, there is never a justification for a transfer in or out of the client account except in connection with a client’s business. Break that separation, and there go your audit trails, there go your internal controls.

In other words, the general anti-commingling principle is designed to prohibit precisely what MF Global did, because of precisely the risk that what would later happen would happen. In the best case, MF Global was negligent; negligent in a way that wouldn’t have led to ruin without commingling. In the worst case, MF Global was criminal; criminal in a way that would have been far easier to prove without commingling.

How on earth did Wall Street come to treat this as normal, acceptable practice? How on earth did regulators decide that it’s permissible? Can anyone cite me any justification for putting non-client funds in a client account?