Supreme Court affirms 100+ Year Period for Copyright Damages

In Warner Chappel Music, Inc., v. Sherman Nealy, [22–1078] (May 9, 2024), the Supreme Court finally clarified copyright’s 3-year statute of limitations (17 U. S. C. §507(b)), holding that a copyright plaintiff who timely brings a copyright infringement claim, can recover damages for the entire period of infringement, and not limited to the three year period before suit was brought.

Sherman Nealy and Tony Butler formed Music Specialist, Inc., which recorded and released one album and several singles, including the works at issue. Nealy went to prision, and Butler (unbeknownst to Nealy) entered into an agreement with Warner Chappell Music, Inc. to license the works. In 2018, following his second prison stint, Nealy sued Warner Chappell for copyright infringement, alleging that held the copyrights to Music Specialist’s songs and that Warner Chappell’s licensing activities (dating back to 2008) infringed his rights.

Warner Chappell argued that damages were limited to the 3-year period before suit was filed. The district court agreed, relying on a decision from the Second Circuit, and held that even when claims for old infringements are timely, monetary relief is “limited” to “the three years prior to the filing” of the action. The Court of Appeals for the Eleventh Circuit reversed, rejecting the notion of a three-year damages bar on a timely claim (assuming for the purposes of answering the certified question that all of Nealy’s claims were “timely under the discovery rule).

The Supreme Court granted certiorari on the question “whether, under the discovery accrual rule applied by the circuit courts,” a copyright plaintiff “can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit.” The Supreme Court found the answer in the Copyright Statute:

The text of the Copyright Act answers that question in favor of copyright plaintiffs. The Act’s statute of limitations provides in full: “No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” §507(b) . . . That provision establishes a three-year period for filing suit, beginning to run when a claim accrues—here, we assume, upon its discovery. And that clock is a singular one. The “time-to-sue prescription,” as we have called it, establishes no separate three-year period for recovering damages, this one running from the date of infringement.

    The Supreme Court noted that Second Circuit’s contrary view, on top of having no textual support, was essentially self-defeating. On one hand, the court recognizes a discovery rule, thus enabling some copyright owners to sue for infringing acts occurring more than three years earlier, but with the other hand, the court takes away the value in what it has conferred, by preventing the recovery of damages for those older infringements.

    Thus, a copyright owner could theoretically recover damages for activities extending back 100 years or more given copyrights term of the life of the author plus 70 years (the shorter of 95 years from first publication or 120 years from creation for anonymous work, a pseudonymous work, or a work made for hire). The Supreme Court, to the chagrin of the dissent, expressly did not decide whether the discovery rule (where the limitations period runs from when the copyright discovered the infringement or reasonably should have discovered the infringement) is the correct rule for applying the statute of limitations. The dissent forcefully argued against the Discovery Rule, which coupled with today’s decision, could result in 100+ years of copyright damages as the title of this post suggests, something that a statute of limitations should not allow.

    Copying for Compatability, Rather than Creativity, is Fair

    The Supreme Court finally resolved the dispute between Google and Oracle over Google’s copying of 11,500 lines of declaring code from nearly 3 million lines of code from Sun Java API was copyright infringement. Dodging the question of whether such code is even copyrightable, the Supreme Court fount that the copying of the code, for the purpose of making Android programming similar to other Java programming was a fair use.

    The Supreme Court found that the Federal Circuit correctly identified Fair Use as a mixed question of law and fact, but ultimately held that the Federal Circuit was wrong as a matter of law when it reversed the jury’s determination of fair use. The Court thoroughly analyzed the four factors identified in 17 USC 107 before concluding that on balance, accounting for the functional nature of computer software, Google’s use was a non-infringing fair use.

    The Nature of the Copyrighted Work

    The Supreme Court said that the technology at issue had three essential parts: First, the API includes “implementing code,” which actually instructs the computer on the steps to follow to carry out each task.  [Google wrote its own implementing code].  Second, the Sun Java API associates a particular com­mand, called a “method call,” with the calling up of each task. [Oracle did not argue that the use of these commands by programmers itself violates its copyrights.]  Third, the Sun Java API contains computer code that will associate the writing of a method call with particular “places” in the computer that contain the needed imple­menting code. This is the declaring code that Google copied.

    The declaring code is inextricably boundup with the use of specific commands known to program­mers as “method calls” that Oracle did not con­test, and it is also boundup with the implementing code, which Google did not copy.  The Court noted that the declaring code (inseparable from the programmer’s method calls) embodies a different kind of creativity. Sun Java’s creators tried to find declaring code names that would prove intuitively easy to remember to attract programmers who would learn the system, help to develop it further, and prove re­luctant to use another.  The declaring code was designed and organized in a way that is intuitive and understandable to developers so that they can invoke it.

    These considerations meant that, as part of a user interface, the declaring code differs from the mine run of computer programs. Like other computer programs, it is functional in nature. But unlike many other programs, its use is inherently bound together with uncopyrightable ideas (general task division and organization) and new cre­ative expression (Android’s implementing code). Unlike many other programs, its value in significant part derives from the value that those who do not hold copyrights, namely, computer programmers, invest of their own time and effort to learn the API’s system. And unlike many other programs, its value lies in its efforts to encourage program­mers to learn and to use that system so that they will use(and continue to use) Sun-related implementing programs that Google did not copy.  The Court concluded that in its view the declaring code is, if copyrightable at all, further than are most computer pro­grams (such as the implementing code) from the core of cop­yright.

    The Purpose and Character of the Use

    In the context of fair use, the Court noted that it has considered whether the copier’s use adds something new, with a further purpose or different character, altering the copyrighted work with new expression, meaning or message, i.e. whether it is transformative. In determining whether a use is transformative, the court said that one we must go further and examine the copying’s more specif­ically described purposes and character.

    The Court said that Google’s new product offers pro­grammers a highly creative and innovative tool for a smartphone environment. To the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was con­sistent with that creative progress that is the basic Con­stitutional objective of copyright itself.  The Court found that Google copied the API (which Sun created for use in desktop and laptop computers) only insofar as needed to in­clude tasks that would be useful in smartphone programs, and it did so only insofar as needed to allow programmers to call upon those tasks without discarding a portion of a familiar programming language and learning a new one.  These and related facts convinced the Court that the “purpose and character” of Google’s copying was transformative—to the point where this factor also weighed in favor of a finding of fair use.

    Even though Google’s use was a commercial endeavor — this was not disposi­tive, particularly in light of the inherently transformative role that the reimplementation played in the new Android system. The Court also questioned whether bad faith has any role in a fair use analysis, but in the end simply concluded that it was not determinative in the present case.

    The Amount and Substantiality of the Portion Used

    While when considered in isolation, the quan­titative amount of what Google copied was large — totaling approximately 11,500 lines of code, considering the entire set of software material in the Sun Java API, the quantitative amount copied was small. The total set of Sun Java API computer code, includ­ing implementing code, amounted to 2.86 million lines, of which the copied 11,500 lines were only 0.4 percent.  While even a small amount of copying may fall outside of the scope of fair use where the excerpt copied consists of the “heart” of the original work’s creative expression, copying a larger amount of material can fall within the scope of fair use where the material copied captures little of the material’s creative expression or is central to the copier’s valid purpose.

    The Court said that a bet­ter way to look at the numbers was to take into account the several million lines that Google did not copy. The Sun Java API is inseparably bound to those task-implementing lines — its purpose is to call them up. The code Google copied was “not because of their crea­tivity, their beauty, or even (in a sense) because of their purpose.” Google copied them because programmers had already learned to work with the Sun Java API’s system, and it would have been difficult, perhaps prohibitively so, to at­tract programmers to build its Android smartphone system without them. Further, Google’s basic purpose was to cre­ate a different task-related system for a different computing environment (smartphones vs. desktop and laptop computers) and to create a platform—theAndroid platform—that would help achieve and popularize that objective. The Court concluded that the “substantiality” factor will generally weigh in favor of fair use where, as here, the amount of cop­ying was tethered to a valid, and transformative, purpose.

    Market Effects

    The Court acknowledged that consideration of market effects where computer programs are at issue can be complex. Potential loss of revenue is one consideration, but not the whole story. The courts must also take into account the public benefits the copying will likely produce.  The Court noted that the jury could have found that Android did not harm the actual or potential markets for Java SE.  The jury was repeatedly told that devices using Google’s Android platform were different in kind from those that licensed Sun’s technology.  The Court found that taken together, the evidence showed that Sun’s mobile phone business was declining, while the market increasingly demanded a new form of smartphone technology that Sun was never able to offer.

    The Court said that a substantial part of the value may come from the fact that users, including program­mers, are simply used to it, and there was no indication that the Copyright Act sought to protect third parties’ investment in learn­ing how to operate a created work.  The Court said that allowing protection of Sun Java API’s declaring code was a lock limiting the future creativity of new programs, and that this lock would interfere with, not further, cop­yright’s basic creativity objectives.


    The Court held that where Google reimplemented a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google’s copying of the Sun Java API was a fair use of that material as a matter of law.

    Will Netflix have a Devil of Time Defending Suit Brought by Satanic Temple?

    The Satanic Temple sued Netflix, for using a computer-generated image of Baphomet in the Chilling Adventures of Sabrina, that was allegedly that was apparently copied directly from a statue created for The Satanic Temple by sculptor Mark Porter.

    While the images of Baphomet are similar, the similarities can be attributed to a drawing  of Baphomet by a 19th-century French occultist named Eliphas Levi. However a distinctive detail added by Mark Porter are two adoring children, a feature in Netflix’s version as well.

    According to Rolling Stone, The Satanic Temple send a cease and desist letter, demanding action by November 9, 2018, but then jumped the gun and filed suit on the 8th.  But then again, who really trusts Satan?


    Copyright Claim from Out of the Blue

    Leslie Weller has sued Gillian Flynn, author of the book Gone Girl, and a host of others for infringing Wellers’s copyright in a novel titled Out of the Blue.  What is interesting about this case (aside from the fact that every successful movie seems to be based upon copyright infringement) is the case for access by defendant.  Plaintiff emailed her script to a consultant whose books were edited by who was represented by the Levine Greenberg  who also represented defendant Flynn

    Plaintiff’s claim is on its face plausible, but so convoluted, that defendant may be able to break the chain.  However, this Complaint, and others like it, are a reminder of the importance of keeping records of development, whether its a story as here, or a computer program or some other work, to be able to prove independent creation.

    Plaintiff’s Complaint does identify a number of similarities in between Gone Girl and Out of the Blue, and it will be interesting to see the defendants response.  If there was no infringement, hopefully defendants have records to show the independent creation.


    For God’s Sake, Copyright Does Not Protect Ideas, Only Expression

    On December 6, 2107, Judge Louis Stanton dismissed Randy Brown’s copyright law suit again Time Warner, Turner Broadcasting, Cartoon Network, and others, based upon the claim that the television series Black Jesus infringed his short story Thank You Jesus.

    Judge Stanton’s opinion concisely stated what every copyright owner needs to remember:

    It is a principle fundamental to copyright law that a copyright does not protect an idea, but only the expression of the idea.

    Judge Stanton found that there are “no similarities between the two works beyond the abstract and unprotected idea of an African American male protagonist named Jesus who believes that he is the Son of God.”  Review plot, characters, setting, themes and total concept and feel, he concluded that the concept of an African American Jesus who engages in allegedly “un-Jesuslike” conduct is an abstract idea, which is illustrated and expressed differently by entirely different stories in each work.  Judge Stanton found that no reasonable jury, properly instructed, could finding that the expressions of Thank You Jesus are substantially related to Black Jesus.

    While the law does provided limited protection for ideas under certain circumstances, copyright does not.  Merely because a second work is based upon the same idea as a first work does not mean it infringes the copyright in the first work.


    Not All Pirates are in the Caribbean

    On November 14, 2017, Arthur Alfred II, Ezequiel Martinez, Jr., and Tova Laiter sued The Walt Disney Company in the District of Colorado, alleging copyright infringement, and claiming that the Pirates of the Caribbean franchise of films, video games, theme park attractions, merchandising, casino games, literature and other related items infringe their screenplay of the same name.  The focus of the Complaint is that the Captain Jack Sparrow character in the Disney productions is substantially similar to the character Davy Jones in their screenplay.

    Plaintiffs claim that Jack Sparrow is “an expression of a uniquely new ‘pirate.'”  Interestingly, the “idea” of humorous pirates may have been the idea of the rides original designer, Marc Davis, who realizing actual pirates were not particularly glamorous, opted for a more whimsical and romanticized approach that was less threatening to younger audiences.  Moreover Johnny Depp has claimed that his portrayal of Jack Sparrow was his own invention, and almost got him fired.

    The court will have to decide whether Jack Sparrow and Davy Jones are similar because they are embodiments of the same idea or because they share the same expression.

    He Who Lives by the Suit, Dies by the Suit

    CBS Broadcasting Inc. has sued photographer Jon Tannen for posting still images from the Gunsmoke episode “Dooley Surrenders,” first aired on March 8, 1958. On line posting of images from classic television is fairly common, leaving one to wonder whether there isn’t more to the story, and it turns out there is.  As CBS Broadcasting explains in Paragraph 1 of its Complaint: “Tannen hypocritically engaged in this act of infringement while simultaneously bring suit against Plaintiff’s sister company, CBS Interactive Inc., claiming it had violated his own copyright.”

    Tannen sued CBS Interactive in February, claiming that the online division of CBS had used two of his photographs without permission to illustrate an article about high school football player Sofian Massoud.

    Despite being created by statute (17 USC 107) the only thing certain about copyright fair use is that it not as broad as everyone thinks it is.  Grabbing pictures from Google image searches to make a point or make a joke is common, but not every such use is technically a “fair use.” Although the widespread use of images in this manner probably is broadening the definition of fair use.  The Tannen v. CBS v. Tannen situation is a reminder that not all online uses of images are fair uses, and more importantly, if you are going to complain about something, you better not be doing what you are complaining about.



    Out-of-CTRL C

    CTRL C, CTRL V (copy,paste) are widely used keyboard commands to add interesting content to emails, newsletters, and slide decks.  Everyone does it, so it must be o.k., right?  Not quite.  Copying existing text or images can constitute copyright infringement, if the copied material is copyrighted.  The problem is that almost everything is copyrighted.  There is an exception for certain fair uses — uses for criticism, comment, news reporting, teaching, scholarship, or research. But many uses in a commercial enterprise do not qualify as fair uses.

    The following guidelines can help minimize the risks when putting together publications for internal or external distribution:

    Give a Man Cupcake Sushi, and He’ll Have Dessert for a Day; Teach a Man to Make Cupcake Sushi, and He’ll Rip You Off

    Lori Shubert and her company Cupcake Sushi, LLC filed an interesting lawsuit against Santiago and his associates doing business as Sushi Sweets, for patent infringement, trademark infringement, misappropriation of trade secrets, common law trademark infringement, federal and state unfair competition, and trade dress infringement. Shubert claims to have invented a unique confectionery dessert cake: cupcake sushi. Shubert has apparently built a thriving business in Key West Florida.  According to the complaint, Santiago, a former licensee and employee of Cupcake Sushi, absconded with product, equipment and Cupcake Sushi’s trade secrets.

    Shubert clearly had an interesting and appealing idea, and while she took some steps to protect it, she probably should have formed a more comprehensive plan at the outset.  As she pleads in her lawsuit she applied for a utility patent (14/487364), she allowed the application to abandon.  She also applied for and obtained a design patent (D789,025) but filed the application several years after she claims to have developed her product.  Even if this patent validly protects a later design, she left her earlier designs exposed. While she did register her CUPCAKE SUSHI name and logo (Reg. Nos. 4471750 and 4770652), she might have also tried to protect her products names and appearances.

    Resources are always tight in start-ups, and it is easy to second guess the allocation (or lack thereof) to lawyers, as entrepreneurs always seem to have other fish to fry. Shubert probably could have done more and done it sooner.  Shubert did take a number of appropriate steps to protect herself, and if those rights have been violated, then hopefully she will be able to enforce them and this won’t represent the fish that got away.  However, a more comprehensive approach might have made enforcement like shooting fish in a barrel:

    Shubert may have learned another important lesson about protecting confidential information.  A confidentiality agreement does not make a dishonest person honest. The most important steps in protecting confidential information is limiting disclosures to people who can be trusted.

    Shubert may have to also have to face the fact that no matter how comprehensive your intellectual property protection, there will always be some way for other to compete.  Good luck to Ms. Shubert, but if things don’t work out, there are always other fish in the sea.

    Lawsuit Attempts to Finish the Job that the Iceberg Started

    Stephen Cummings has sued James Cameron for turning his life story into the hit movie Titanic.  Mr. Cummings claims that Leonardo DiCaprio’s character Jack Dawson “is based solely/wholly/only” on his life.  Cummings claims violation of Right of Publicity, Unjust Enrichment, Copyright Infringement; and Trespass to Chattels/Conversion, and seeks $300,000,000 and a 1% royalty in perpetuity for each of three counts.

    According to Mr. Cummings: “EVERYTHING, which went into to film, ORIGINATED with only myself, including the vessel, -via only my own remarks, and about the vessel/incident of its sinking).”  While conceding that Cameron did photograph the vessel, but that these were mere tools “to tell only MY OWN, story.”

    While it seems doubtful that Cummings will be able to sink this Titanic, it is important for creators to document their creative process to be able to establish their independent creation, because it seems as if every time there is a successful product or movie, there is someone claiming he or she thought of it first.