This year's Sir Hugh
Laddie Annual lecture at UCL's Institute of Brand and Innovation Law
(IBIL) was given by the distinguished American judge Alex Kozinski,
lately Chief Judge of the US Ninth Circuit. In an introduction
given by Daniel Alexander QC (standing in for Sir Robin Jacob who had
been delayed), we heard that the Ninth Circuit covers an enormous
area stretching from Alaska to Arizona and to Hawaii and Guam with a
population of 60 million people within its jurisdiction.
But as Judge Kozinski
himself pointed out in his opening remarks, perhaps more
significantly the Ninth Circuit includes those two power houses of
American creativity and innovation, Hollywood and Silicon Valley. Not
for nothing is it also known as the Hollywood Circuit. This means
that a lot of important intellectual property cases have been decided
by the Ninth Circuit, along with quite a few less worthy ones. The
title of the lecture was IP and Advocacy, but it might have been
subtitled "Keep it simple, stupid". In an amusing all
singing (literally) lecture Judge Kozinski encouraged IP advocates
to keep their pleadings and submissions simple, and preferably
illustrated by means of helpful analogies which the bench could
relate to. I suspect that Sir Richard Arnold who was sitting in the
front row might have permitted himself a wry smile at this
suggestion. Judge Kozinski then followed his own preaching with an
example of what he meant. He cited the case of Galoob v Nintendo,
in which Nintendo had alleged that Galoob's add-on software named Game
Genie which alowed players to vary the way in which Nintendo's games
could be played, infringed Nintendo's copyright. He quoted from the
introductory paragraphs of Galoob's submission to the Appeal Court,
which was couched in terms of a story about a young teenage girl who
perfectly legally read the last page of her book before deciding to start from the beginning, once she was sure it had a happy ending; she subsequently watched
a video, and fast-forwarded to the part where she had finished
watching previously, and after this she plugged in the Nintendo game
cassette along with the Game Genie software and was able to alter
certain characteristics of the game, and also jump to a level she had
not previously reached. None of these actions resulted in any
alteration of Nintendo's code or made copies of it, just as reading
the last page of the book or fast-forwarding the video had not
infringed the respective copyright in those works. Judge Kozinski
said that by means of these few simple sentences, Galoob's counsel had
illustrated the futility of Nintendo's case, even though the
submission then ran on for another 50 pages or so.
Further amusing
examples were quoted, in which we were treated to such musical
delights as Johnny Mathis singing When Sunny gets Blue (Fisher v Dees), and Aqua singing
I'm a Barbie Girl. The latter was in the context of the case Mattel Inc v MCA Records in
which Mattel who make the Barbie doll, sued MCA Records over the Aqua
song, instead of realising this was excellent free publicity for
their product. Or in the words of Judge Kozinski, they should have
just sent over a bottle of Dom Pérignon
to MCA. This was the famous case in which the Ninth Circuit court
proffered the following advice within their opinion "the parties
are advised to chill". Clearly Mattel's lawyers thought
otherwise and petitioned the US Supreme Court although SCOTUS
declined to hear the case. Judge Kozinski made the point that too
often in IP cases the author of the work is too personally involved
and affronted by the alleged infringement and so overlooks the bigger
picture. He went on to develop the point by saying that seldom is it
the case that the dire consequences which plaintiffs argue actually
come to pass. From the time of Gutenberg, vested interests have
opposed virtually all technological advances, but their fears have
proved groundless. He didn't mention the RIAA and the major record
labels but few in the audience can have been unaware of the
unstated criticism.
Yet more examples were
used to illustrate the point: Vestron v HBO on the futility of
injunctions in some cases; Sony v Universal City Studios (the Betamax case)
on the contention that disasters predicted by plaintiffs seldom turn
out as bad as is first claimed - in that case the home theatre market
proved to be a goldmine for the creative industry, not its nemesis.
And as I predicted
elsewhere, Judge Kozinski then came to the Garcia v Google case.
This has been extensively reported here on 1709 and on the IPKat blog
and so I won't summarise the case here. However Judge Kozinski saw
this as yet another instance where the dire things claimed in
submissions never actually happened. This sounded a little like the
judge rowing back from his own first appeal court decision to injunct
YouTube over the Innocence of Muslims trailer. This was touched on in
a question at the end, when the Judge was asked if there had ever been
a decision he later changed his mind over. The response was that a
court's opinion stands still and reflects the facts at the time, but
person who makes the decision moves on and and may develop his views
over time.
The lecturer then went
on to discuss a couple of cases involving the Right of Publicity, of
which the California Celebrities Rights Act is
a more comprehensive example. Here the quoted cases were White v Samsung,
Wendt v Host International and
Douglas v Mattel.
He then mentioned the case of New Kids on the Block v News America Publishing Inc
in which the defendant ran a poll to find out which member
of the group New Kids on the Block was the most popular. This led to
News America being sued over issues of trade mark and false
endorsement, to which the Ninth Circuit, in an opinion written by
Judge Kozinski, developed the doctrine of 'nominative fair use'.
As perhaps befits a
judge from the Hollywood circuit it was a most entertaining evening
and a candid look at one face of the American IP legal machine at
work.
