Mr. McCormack is a technology lawyer and Seattle native with noteworthy international experience. He received his B.A. in Speech Communication with an emphasis on rhetorical analysis (cum laude) from the University of Washington (1994), and a Doctorate of Jurisprudence from the University of Oregon School of Law (1997) with a special certificate of study in the area of intellectual property. His practice covers varied intellectual property issues, including copyrights, trademarks, trade secrets, patents, unfair competition, licensing, entertainment law, and litigation. Represented clients include: Getty Images, Microsoft, Washington Shoe Company and many other well-known businesses.

Hosted Email Exchange Server

Looking at the question of overhead, it seems to me that cloud computing combined with personal computer technology can decrease overhead. For example, in my practice I use a hosted email exchange server. This is a third-party vendor that hosts a mainframe that we tie into across the internet. Because this is a hosted email exchange server we pay a per-user license every month and have all of the bells and whistles that the latest edition of Outlook can provide. Now, Microsoft and other vendors offer hosted email Exchange server technology on a subscription basis, available to even solo practitioners

See several choices of vendors below:

I remember only a few years ago that if a small firm wanted to have the full functionality of Outlook, which can only be achieved through the use of an Outlook Exchange server, you had to buy such a server. Although the price of computers and technology has come down, such a server might cost between $5,000 and $10,000. In addition, there is the cost of maintenance, updates, upkeep, etc. As a result, most small and medium-sized firms chose not to use Outlook in its fullest form. They simply installed Outlook on their personal computers and used what function was there as best they could. Outlook, by the way, even in its non-Exchange environment, is still an amazing program. The big firms, however, had hosted Exchange servers and IT departments and all the bells and whistles that that package provided, including increased coordination of scheduling, increased communications, and information technology across the firm.

It is my personal belief that an email-hosted Exchange server has the potential to increase law firm productivity in a significant way. That has been my personal experience. Although these services are not advertised as “cloud computing”, that is exactly what they are.

In fact, hosted email Exchange servers are, in this practitioner’s opinion, the most well developed and sophisticated implementation of “cloud computing” that is on the market today.

Off-site Backup of Data

Another area of development that I have seen in the area of cloud computing is on-line storage. Backup of computer systems across a firm, even if the firm is a solo practitioner with one attorney and staff, has always been a problem. Computers fail. Data gets corrupted. While there are many safeguards that can be taken to help protect business data, the most obvious is an off-site backup of the data.

Until recently, an off-site backup of data meant having an automated .data drive or other similar media connected to a central server where files and information were stored to run on a daily or weekly basis, and then taken off site by a staff or an attorney in the event of a fire or water damage, or hard drive failure. This is an extra administrative burden on staff and attorneys, an additional overhead cost for setting up and maintaining the system, troubleshooting the system when it fails. And this all assumes that the system works as planned, and that if something does happen, the data is able to be fully restored. In short, data backup systems have been a pain-in-the-rear.

Recently, there have been developments in the cloud computing arena that allow off-site storage of data across the internet. Of course, it should be noted that the transmission of data packets is fully encrypted by most of these vendors in such a way that not only can a third-party not access them as the packets are traveling across the internet, but the vendor themselves cannot access them without your code key.

I have personal experience with one such application. When we installed the application, everyone in the office believed it was one of the coolest things they had ever seen. Several times when a file went missing or was accidentally deleted, with a few clicks of a mouse we were able to restore the file to its original or altered state. We did not need to call the IT department. We did not need to find which backup tape it was on. We didn’t need to follow any elaborate procedures for restoring the data. We simply right clicked on the folder and said “restore.”

Cloud computing is new, however, and its newest applications are still not perfect. I experienced problems with traditional backup methods. I experienced problems with this new on-line method, as well.

In fact, one of my hard drives failed. Although the vendor that I was using was backed by a substantial company and was a leader in the industry, this company ultimately had trouble restoring all of the data as promised. I found this to be amazing. Fortunately, the data loss was limited because when we suspected the hard drive was beginning to fail, we took the precautionary step of backing it up on an external hard drive ourselves. All of the money we spent on off-site storage backup with that company was refunded to us. I would have preferred the system to work.

My point here is that “cloud computing” or on-line backup services is neither bad nor good. In my opinion, the potential to increase productivity and increase data security is greatly increased by the advances in the use of off-site internet-enabled data backup. However, the technology is still relatively new and it would not be wise, in my experience, to rely solely on that technology. As the technology develops in the next three to five years I believe it will probably completely replace the older more traditional methods of data backup. But, in my experience, it’s not quite there yet.

On-line Storage

A similar story can be told about on-line storage. Of course, all law firms, small or large, have a computer where files reside and are shared between attorney or attorneys and staff. This is typically referred to as the file server. Cloud computing represents the possibility of having a virtual file server. A server based somewhere else that the attorneys and staff can save files to and share files from. The advantages to this approach are many. For example, it solves the off-site backup problem because the files themselves are off-site and presumably being backed up by the file storage vendor.

The ability to share files in this way also opens many doors in terms of remote access and computing. If files can be shared securely from any authenticated PC anywhere in the world, a lawyer or staff can easily work on files from home or anywhere in the world. In some ways this is a scary thought.

The question I ask is this: Is such a technology helpful or harmful to the long-term happiness and productivity of attorneys and staff? I think if you polled most young attorneys and staff they would say they welcome the increased flexibility of remote access to their client files and matters. However, I question the wisdom of such a conclusion. Assuming that the client has needs that must be met and deadlines that cannot be avoided, the requisite number of hours to get that work done is finite.

If it’s going to take 40 attorney hours and 20 staff hours to get the job done that number is not going to be increased or decreased by remote access to files. In fact, remote access and working from home might increase the hours requested based on travel and distractions. If the burden rests on an associate to get the bulk of that work done, will that associate be more effective working from home with remote access or more effective in the office getting the work done there? Ultimately the answer to that question is probably different for different people. Some people would have their overall happiness and productivity increased based on the increased flexibility, while others would likely have their productivity decreased from the flexibility.

Another model of cloud computing uses your software licenses, such as for Microsoft Office, and loads them onto its servers. You access the software through a browser whether Internet Explorer, FireFox, Chrome, or Safari. Interestingly, you can use Apple iMACs using Safari to use Windows software with this model. The vendor is Legal Workspace.

At my firm we do not use on-line file servers. Like the off-site storage backup, the technology is not as advanced as most vendors would have you believe. In fact, one very well known service provided by one of the world’s largest providers is so inherently flawed that one can only upload individual files. This means that if you have a folder with ten files in it, you cannot simply upload the folder to this online server, you have to upload each individual file. This is, of course, a ridiculous limitation. The reason I point this out is because it demonstrates the nascence of this technology in its current implementation.

I have talked with other practitioners who swear the technology is useful to them and they have gotten great benefit from it. I can imagine a time in the not distant future where everybody will be using cloud file servers. In my personal opinion, it is still too early.

Remote Access Of PCs From Home Or Other Locations

Some of the other panelists have more experience and have detailed some of the ins and outs of accessing computers remotely from home or other places. There are different ways to accomplish this goal. Many of the operating systems, including XP Professional, Vista Professional and Windows 7 Professional, have built-in VPN technology. VPN is “Virtual Private Network.” This technology is relatively easy to set up. Although, in my experience, it does typically require a dedicated IT person to set up and maintain. I have also had experience with third-party vendors such as GoToMyPC.com and PCNow.com. While these third-party vendors charge monthly subscriptions on a per user license, if this kind of remote access is needed in a small office, in my experience, it is easier and more reliable to use the third-party vendors. The concerns I raised above relating to whether this technology increases the economic return of a small, medium or large-sized firm is open.

If the firm has an on-site file server and the associate partner has access to the firm’s network via remote PC access, work can be done at home or while traveling, which as noted above, can be either good or bad. While the technology associated with remote PC access is certainly not new, it does represent the ability to harness the power of a worldwide network, the Internet, to help run businesses. My experience with remote PC access has been good and if used and monitored wisely, I believe the technology can increase a firm’s overall productivity and employee retention.

A cautionary note, however, in my experience this technology should not be used across the board for all attorneys and staff. I think this technology should be used sparingly and as an exception to the rule that one must come into the office to do work. Of course, that completely changes if you’re running an entirely virtual office.

Other “Cloud” Computing Technologies

Although not labeled as “cloud” computing, many great technologies might well fit into the rubric of the cloud concept. Services such as voice over IP phones, electronic faxes (sending and receiving), and even legal research through vendors like Westlaw and Lexis, represent advances in information technology that benefit small businesses like law firms.

Electronic faxes and digital voicemails are easily integrated into the hosted or non-hosted Outlook environment. A fax and email, a filing with federal court and a voicemail, do not become discreet sections of a file, rather they become integrated “information” that can be tapped, harnessed, categorized, and searched while the attorney or staff sits at their desk.

Westlaw / Nexis and Westlaw NEXT

Westlaw, which has offered on-line computer services for many years, is also another good example of a very traditional implementation of the “cloud computing” theory. When one is signed up for Westlaw or Nexis, one potentially has access to every case, statute, encyclopedia or secondary source of legal information that is available at any law library.

In fact, Westlaw NEXT offers the ability to search the entire Westlaw holding and review summaries of the results at no additional change (you pay a flat fee for the search access and for documents retrieved in full). Without Westlaw NEXT, the need and price of subscriptions dictate the scope of information available, but with lawyers more and more narrowing their practice into specialties or subspecialties, the ability to slice or subscribe to specific data or legal research segments makes subscription to these services more and more cost effective. The idea of having access to all legal materials – everywhere, is becoming a reality. In most cases, lawyers and law firms, large and small, will not be able to compete (quality and price) without using this technology to the fullest extent.

VoIP Phones

In my office, we recently implemented voice over IP phones through one of the local vendors. And our phone system went from four phones to seven phones. We went from four lines to the ability to handle up to 20 calls simultaneously. The price we are paying is increased but the increase in price is hardly proportionate to the increase in capacity. Interestingly, we can take any one of our phones, call our third-party vendor and have them adjust it to be in telecommute mode. Although we have yet to test this technology, we are told that phone could then be put in a suitcase, taken anywhere in the world that has connection to an internet and be used as though the person were sitting in the office next door. Anyone in the office (or anywhere) can call their extension and speak to them directly. Staff can also transfer a phone call to them at that extension or they can call out from the phone and appear as though they are calling from their office.

Conclusion

Technology is here. Use it. Be careful. Think about whether use of a particular technology makes sense. Is it safe? Is it cost effective? Does it increase the quality or the amount of work that gets done? Does it help the business, including lifestyle and retention issues? An open question: Does the use of such technology make a lawyer more or less competitive and/or efficient? If so, is that increase (or decrease) reflected in the billing rate? Are there ethical issues about being “competent” as a lawyer as it relates to the use of mandatory and optional technologies in the law office setting?

Mr. McCormack is a technology lawyer and Seattle native with noteworthy international experience. He received his B.A. in Speech Communication with an emphasis on rhetorical analysis (cum laude) from the University of Washington (1994), and a Doctorate of Jurisprudence from the University of Oregon School of Law (1997) with a special certificate of study in the area of intellectual property. His practice covers varied intellectual property issues, including copyrights, trademarks, trade secrets, patents, unfair competition, licensing, entertainment law, and litigation. Represented clients include: Getty Images, Microsoft, Washington Shoe Company and many other well-known businesses.

WHEN RUBBER MEETS THE ROAD – PRACTICAL APPLICATIONS AND CAVEATS ABOUT “CLOUD COMPUTING”

The “Potential” of Cloud Computing

While some of this technology is not necessarily new, it is new in terms of its price point and rollout for small and medium-sized businesses. Large firms have had this technology for some time. But, as the price comes down, “cloud computing” or cloud computing implementation as it relates to all information technology (email, phones, faxes, remote access, legal research), really represents the potential leveling of the technology playing field, allowing small firms to leverage those technologies to compete more effectively with some of the large firms.

As smaller firms, we are generally going to have lower overhead and more nimble practices. If we can be backed by the latest and greatest technologies, it can potentially allow us to compete more effectively for the best and the brightest young attorneys and staff, the best clients, and increase our own happiness and productivity while at the same time making more money. That is the “potential” of cloud computing.

The Practical Application of “Cloud Computing” – Is it Good or Bad?

As attorneys, whether we are solo practitioners, mid-sized firms, or departments in larger firms, we, like our clients, are governed by the laws of economics.(*) Setting aside the issues of providing the best service a professional can and is expected to give, as a service industry, our goal is to maximize billed service hours and minimize overhead costs.

At the same time we must keep ourselves, our attorneys and our staff healthy, happy and productive. In some ways the advent of the personal computer has changed the way law firms operate and also how the economics of the service industry are perceived. The advent of the personal computer has decreased the amount lawyers, particularly young lawyers, who dictate. Correspondingly, there is an increase in the number of lawyers who type everything they do. General wisdom indicates that a lawyer skilled in dictation is much faster and more efficient than a lawyer who types everything themselves. I dictated this paper. Dictation is great. Interestingly, I used a digital recording device and emailed the file to an off-site word processor who emailed me back the paper for my editing. I could have dictated this paper right into my word processor using the speech recognition built into Windows, although I have never taken the time to figure that out For now, I still prefer an actual person to unscramble my dictation.

The personal computer has made it easier for lawyers to type letters themselves, format pleadings, and even communicate via email. In other ways the personal computer has increased the modern lawyer’s efficiency. Our staff is more efficient, our research is faster and, literally, we need to get up from our desk less often. And this measure of productivity is inversely proportional: the more we integrate technology into our practices, the less often we are required to get up from our desks. Beware: surfing the web does not count!

An interesting question in my mind is whether there has ever been a net increase in efficiency based on the advent of the personal computer, or a net decrease in efficiency based on the personal computer? A follow-up question is, have our billing rates as attorneys correspondingly adjusted to reflect the increased efficiency or deficiency?

This same line of thought is applicable to the newest developments in personal computing, which is the topic of this CLE panel discussion, namely, “cloud computing.”

As a technology lawyer and practitioner who uses personal computers and cloud computing, I am not sure that cloud computing itself represents an advance in the efficiency of attorneys. I think this is an open question.

I do believe, however, that it potentially represents an advance in decreasing overhead and increasing, or potentially increasing, attorney and employee happiness, which relates to long-term profitability and retention. Setting lawyer and employee happiness aside, which involves too many intangibles to address in this context, just because an attorney or an employee wants to stay at home and do work does not necessarily mean that having that ability will increase their happiness or their productivity.

In my opinion, there is still no substitute for coming into the office and doing work. Doing work from home can be distracting and difficult.(**) That being said, as lawyers and legal professionals, we are sometimes tasked with protecting our client’s interests, a task that cannot always be accomplished between the hours of 9:00 and 5:00.

If we can use technology to allow ourselves to be more flexible in spending time with our families and meeting our personal obligations, while at the same time, first and foremost, serving and meeting our client’s needs, then use of the facilitating technology should result in an increased long-term profitability based on attorney and employee happiness and productivity.

Rich Lawyer / Poor Lawyer

Other good uses of a lawyer’s time (when not spent supporting information technology) include:

1) Being a great lawyer;

2) New business development;

3) Firm leadership and planning;,

4) Collection of delinquent accounts.

These four touchstones of good law firm practice and management all seem to have a higher economic return than information technology support. My guess is that even if we went back to typewriters and a supposedly less efficient way of practicing law, if we could keep ourselves focused on these four touchstones, we would do better work and make as much or more money than with all of the advances in personal computing, internet, and cloud computing.

That’s not to say, however, that the technology advances are not helpful, welcomed or good. Rather, as business people, we can’t forget about the economic mandates of our business. I am about to make some controversial statements. Please take these with a grain of salt and as they are intended – to provoke thought. E.g., Imagine being most efficient using technology and watching your fees shrink. Why? If it takes less time to accomplish tasks using technology, the hours that you bill will decline. Said another way, technology begs the question of whether to use flat fee and fixed rate arrangements more often.

Ultimately, a happy and productive lawyer is a rich lawyer. If you are a rich lawyer and still unhappy, no amount of computer technology or remote access is going to help you. If you’re a lawyer who does not do great work, find new clients, plan for the future, and collect on the work that you do, you will likely be a poor lawyer. No amount of information technology or cloud computer will help you.

Outside Vendors vs. In-House Specialists

Other important threshold considerations are these: Does a small law firm try to roll these technologies out with the help of staff or attorneys in-house? Or, do you hire a part-time IT vendor or use third-party vendors to implement the technology?

This again is an economic question. In my opinion, the lawyer in a small firm is like the captain of a ship. The captain of a ship needs to be driving the ship. The captain can’t be working in the engine room. The lawyers need to be focusing on deadlines. Lawyers need to be focusing on billing. The question to ask is: What is the return on one hour of lawyer billing versus the cost of one hour of IT support? Lawyers need to have as much uninterrupted work flow as possible. They need to focus on their work, their lawyer work, and not be managing or tinkering with technology. Setting aside the basic economics, if the technology piece gets assigned to an attorney or staff person in-house, what happens when that person is on vacation?

All that being said, the captain of a ship needs to know his or her ship. A good captain will know where the engine room is and likely what kind of engines are in the engine room. And, in some cases, how the engines work. See “Rich Lawyer / Poor Lawyer” above.

What about assigning information technology to the paralegals or the staff? In a small firm this is almost inevitable. Again, the question should be asked: is this wise? Is this efficient? Is there a better way? I think that question is open and can be answered in different ways depending on the people, the firm and the culture involved.

One thing is certain, however, a law firm staff needs to understand how to use their equipment. Functioning in the modern practice of law includes mandatory on-line filing of pleadings and exhibits in federal court, and the soon to be prolific or mandatory on-line filings in many state courts require technology. In my opinion, one cannot function in this modern law environment without knowing how to scan documents, create PDFs, manipulate PDFs on the computer, reduce the file size of PDFs, use email, and search email. Those are just the basics. These and other emerging skills arguably should be part of an ongoing in-house training regimen championed by a staff person..

Even if the firm is large enough to find a qualified staff or paralegal that can act as a part-time IT technician, that itself is a hard role to fill. One of the exciting developments of cloud computing is that there appears to be an increased number of qualified companies and third-party vendors offering services to small businesses. When a small company can rely on a third-party vendor with a good service record and the ability to make implementation easy, quick and non-technical, many of the problems associated with IT support are minimized.

These third party vendors include the hosted email Exchange server, the off-site file storage and backup companies, the off-site file servers, and the remote PC access vendors.

TO BE CONTINUED — LOOK FOR PART II!!

(*)Needless to say, we are also governed by the law, including the Washington State Bar Association, authorized by the Supreme Court, and the Rules of Professional conduct. This paper tries to focus on the business issues we face as lawyers and how technology can help or hurt those business endeavors. Said another way, we are not looking at the practice of law, we are looking at the business of law along with the technology and economic forces that can impact the business.

(**)A home-based office can be set up to accommodate the feeling of a separate office, and I have had good experience with that.

**This is important information for the Intellectual Property Community in Seattle and around the world. This is the first opinion of its kind.

Bernardo Burstein, Burstein & Associates PA, Jesus Sanchelima, Sanchelima & Associates, Miami, FL, for Plaintiff.

Timothy B. McCormack, McCormack Intellectual Property Law Business Law P.S., Seattle, WA, Tom John Manos, Tom J. Manos PA, Miami, FL, for Defendant.

Opinion

*1 This matter is before the Court on Plaintiff Olem Shoe Corp.’s Motion for the Issuance of Request to Register of Copyrights Pursuant to 17 U.S.C. § 411(b)(2) (D.E.# 76). Defendant Washington Shoe has accused Olem Shoe of infringing two of its copyrights. Olem Shoe alleges that Washington Shoe’s copyrights are invalid because Washington Shoe submitted inaccurate information to the Copyright Office when registering the copyrights. In the present motion, Olem Shoe asks the Court to submit a series of questions to the Copyright Office for an advisory opinion as to whether the Register of Copyrights would have refused registration if it had known of the allegedly inaccurate information. The parties have submitted numerous briefs regarding Olem Shoe’s questions, and the Court held two hearings on the motion on June 9, 2010 and on August 11, 2010. For the reasons stated during the hearings and below, the Court grants in part and denies in part Olem Shoe’s motion.

I. Background

Olem Shoe and Washington Shoe both sell women’s boots. This case is about two of Washington Shoe’s boot designs called “Ditsy Dots” and “Zebra Supreme.” As the names suggest, Ditsy Dots boots are polka-dotted, and Zebra Supreme boots have a patterned design like a zebra’s black and white striped skin. Washington Shoe sent Olem Shoe cease-and-desist letters accusing Olem Shoe of selling “knock-off” versions of the boots and infringing Washington Shoe’s intellectual property rights. Olem Shoe brought this suit for a declaratory judgment that its boots do not infringe Washington Shoe’s intellectual property rights. Washington Shoe answered and counterclaimed for, among other things, infringement of its federally registered copyrights covering the two-dimensional patterned designs on the faces of the Ditsy Dots boots (Registration No. VAu000756950, registered August 9, 2007) and the Zebra Supreme boots (Registration No. VAu001007893, registered January 8, 2010).

Washington Shoe moved for summary judgment on its copyright infringement counterclaims. In its opposition to the motion for summary judgment, Olem Shoe asserted, among other things, that the copyright registrations are invalid under 17 U.S.C. § 411 because Washington Shoe submitted inaccurate information to the Copyright Office with the registrations.

Subject to certain exceptions, 17 U.S.C. § 411 requires copyright holders to register their works in accordance with the requirements of the Copyright Act before bringing a claim for copyright infringement. See id. § 411(a).1 Thus, a party ordinarily must have a valid copyright registration in order to bring a claim for copyright infringement. See Reed Elsevier, Inc. v. Muchnick, — U.S. —-, —-, 130 S.Ct. 1237, 1242, 176 L.Ed.2d 17 (2010).2 Parties accused of copyright infringement often argue that inaccurate information submitted in an application for registration invalidates the copyright registration. In 2008, as part of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (PRO IP Act), however, Congress amended § 411 to provide that a certificate of registration satisfies the section’s requirements, “regardless of whether the certificate contains any inaccurate information, unless” the following two requirements are met:

*2 (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and

(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. § 411(b)(1). The PRO IP Act also created a procedure for district courts to seek the advice of the Register of Copyrights as to the effect of allegedly inaccurate information on the validity of a copyright registration. Section 411(b)(2) provides:

In the present motion, Olem Shoe has asked the Court to seek the advice of the Register of Copyrights under § 411(b)(2) regarding the effect of the inaccurate information that Olem Shoe alleges Washington Shoe submitted with its copyright registrations. Olem Shoe’s motion included a series of questions for the Court to submit to the Register of Copyrights. The Court held two hearings on the motion on June 9, 2010 and on August 11, 2010. As the Court discussed at the hearings, Olem Shoe’s original questions were unclear and suffered from several problems. The Court asked Olem Shoe to submit revised questions. After a couple of iterations, Olem Shoe submitted its latest set of questions on August 19, 2010. (See D.E. # 141-4).

II. Legal Analysis
A. Seeking the Advice of the Register of Copyrights Under 17 U .S.C. § 411(b)(2)

Before reaching the merits of Olem Shoe’s proposed questions, a discussion of 17 U.S.C. § 411(b)(2) is necessary. The interpretation of § 411(b)(2) appears to be an issue of first impression in the Eleventh Circuit. In fact, the parties (and the Court in its own research) have only been able to find one instance in which a court-the District of Puerto Rico-issued a request to the Register of Copyrights under § 411(b)(2). See Velazquez-Gonzalez v. Pina, No. 07-1512CCC (D.P.R. June 1, 2009); see also 5 WILLIAM F. PATRY, PATRY ON COPYRIGHT § 17:125.50 (2010) (“Few litigants or courts have been aware of the provision, and as a result it has been used, I believe only once.”). Nevertheless, the language of § 411(b)(2) is rather straightforward. A party must allege (1) that inaccurate information was included on an application for copyright registration with knowledge that it was inaccurate, and (2) that the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration. If a party makes these allegations, the statute requires the Court to seek the advice of the Register of Copyrights.

Washington Shoe has advanced several arguments why the Court should not request the advice of the Register of Copyrights. In its opposition brief (D.E. # 90), in addition to arguing about the merits of Olem Shoe’s questions, Washington Shoe argues (1) that a request to the Register of Copyrights under § 411(b)(2) is an “extremely unusual” measure that only one court has taken; (2) that the issues raised by Olem Shoe have already been fully briefed in connection with Washington Shoe’s motion for summary judgment and are ripe for adjudication by this Court; and (3) that a request would only result in undue delay and increased expense. The Court disagrees. For one thing, just because a request under § 411(b)(2) may be “extremely unusual” does not obviate the Court’s duty to comply with the statute. And because the statute was enacted in 2008, it is not surprising that only one court has submitted a request under § 411(b)(2). More fundamentally, the statutory language-“shall request”-is mandatory. Simply because the parties have already briefed the issues raised by Olem Shoe does not permit the Court to disregard the compulsory language of the statute.

*3 In its sur-reply (D.E.# 106), Washington Shoe argues that the Court’s duty to request an opinion from the Register of Copyrights is only triggered if Olem Shoe proves the two requirements in § 411(b)(1). In other words, Olem Shoe must “show” that Washington Shoe included information on its applications that it knew was inaccurate, and that the inaccurate information was “so material” that, if known, it would have caused the Register of Copyrights to refuse registration. But that is not what the statute says. Rather, the Court’s duty is triggered where “information described under paragraph (1) is alleged.” 17 U.S.C. § 411(b)(2) (emphasis added).3

Olem Shoe alleges that Washington Shoe inaccurately characterized the Ditsy Dots and Zebra Supreme designs as unpublished when it filed the copyright registrations. According to Olem Shoe, Washington Shoe published the boots by displaying them at a public trade show in Las Vegas from July 30, 2007 to August 1, 2007, and in the case of Zebra Supreme, by selling the boots in retail stores. However, when Washington Shoe filed the Ditsy Dots registration on August 9, 2007, and the Zebra Supreme registration on January 8, 2010, it did not say that the boots had been published. Olem Shoe asks the Court to submit the following questions regarding publication:

1. Whether the Copyright Register would have refused registration No. VAu 756-950 for the two-dimensional unpublished work entitled Ditsy Dots had the Copyright Register known that the boots depicted in the photographs deposited for the 2-dimensional artwork had been previously published by [Washington Shoe]?
….

6. Whether the Copyright Register would have refused the registration No. VAu001007893 for a two-dimensional unpublished work entitled Zebra Supreme-Olem had the Copyright Register known that the boots depicted in the photographs deposited for the 2-dimensional artwork had been previously published by [Washington Shoe]?

(D.E. # 141-4 at 2.)

The Court views the topic of these questions to be appropriate under § 411(b)(2). Even Washington Shoe’s counsel conceded during the August 11 hearing that Washington Shoe appears to have published the boots before it filed the copyright registrations. (See D.E. # 140, Hr’g Tr. at 8, Aug. 11, 2010.) Therefore, the Court will seek the advice of the Register of Copyrights on this subject. However, even after the Court has provided Olem Shoe multiple opportunities to revise its questions so that they are understandable to a person who is not familiar with this case, the Court is not satisfied that Olem Shoe has done so. Accordingly, it will re-phrase the questions as follows:

*4 1. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu000756950 for 2-dimensional artwork applied to 3-dimensional rain boots (“Ditsy Dots,” filed August 9, 2007) if the Register of Copyrights had known that, although Washington Shoe characterized the work as unpublished, Washington Shoe displayed the boots at a public trade show before filing the registration?

2. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu001007893 for 2-dimensional artwork applied to 3-dimensional rain boots (“Zebra Supreme-Olem,” filed January 8, 2010) if the Register of Copyrights had known that, although Washington Shoe characterized the work as unpublished, Washington Shoe displayed the boots at a public trade show and sold the boots in retail stores before filing the registration?

ii. Questions 2 and 7 Regarding Alleged Creation by a Third Party

Olem Shoe also alleges that Washington Shoe’s copyright registrations are invalid because the patterned fabric used to create Washington Shoe’s boots was created by a third party manufacturer not known to Washington Shoe. Olem Shoe asks the Court to submit the following questions:

2. Whether the Copyright Register would have refused the [Ditsy Dots] copyright application had the Copyright Register known that the pattern on the fabric of the boot depicted in the photographs deposited by the copyright claimant had been affixed to said fabric by a third party not known to [Washington Shoe]?
….
7. Whether the Copyright Register would have refused [the Zebra Supreme] registration had the Copyright Register known that the pattern on the fabric of the boot depicted in the photographs deposited by the copyright claimant had been affixed to said fabric by a third party not known to [Washington Shoe]?

(D.E. # 141-4 at 2.)

As best the Court can tell, Olem Shoe’s theory is as follows:

1. Washington Shoe employees created the Ditsy Dots and Zebra Supreme patterned designs on computers.
2. Washington Shoe then sent electronic files with the designs to China.
3. A manufacturer unknown to Washington Shoe, and not under Washington Shoe’s control, affixed the designs to the fabric that Washington Shoe’s boot supplier used to manufacture the boots.
4. The act of affixing Washington Shoe’s designs to the fabric is a separate copyrightable event.
5. Thus, the unknown manufacturer that affixed the designs to the fabric-and not Washington Shoe-owns the copyrights on the boots depicted in the photographs Washington Shoe submitted to the Copyright Office.

Olem Shoe’s theory seems to reflect a fundamental misunderstanding of copyright law. Under Olem Shoe’s theory, artists would lose the rights to their works unless they utilized their own manufacturing facilities to turn their works into end-use products. For example, a book printer, not the author, might own the copyright to a book. The Court expressed doubt about Olem Shoe’s theory during the hearings and asked Olem Shoe to submit cases to support its theory. In a supplemental brief, Olem Shoe cites just two cases, neither of which is relevant here. Olem Shoe cites Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), for the unremarkable proposition that copyright law protects only the expression of an idea, not the idea itself. See id. at 217. This would be relevant if Washington Shoe had simply asked a manufacturer to design fabric with, for example, zebra stripes, and the manufacturer created the designs itself. Obviously, Washington Shoe could not then copyright the idea of boots with zebra stripes. Here, however, Washington Shoe created specific designs, complete with dimensions, to be physically applied by others to its boots. Washington Shoe’s copyrights cover those designs. The Chinese manufacturer’s act of manufacturing fabric with those designs was not a separate copyrightable event.

*5 The other case Olem Shoe cites, MGB Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir.1990), is similarly irrelevant. In MGB Homes, the Eleventh Circuit denied a homebuilder’s claim of coauthorship of a copyrighted advertising flyer depicting the floorplan of a home. The homebuilder was the “author of the concept” for the home depicted in the flyer. Id. at 1487 n. 2. However, the homebuilder’s only contributions to the final drawings were a “thumbnail sketch of the floor plan he desired … and approval authority thereafter.” Id. at 1493. Someone else actually created the flyer and the floorplan depicted in the flyer. Just as with Mazer above, MGB Homes might be relevant if Washington Shoe had asked someone else to create the designs for its boots based on an idea or a rough sketch. But that is not the case. Washington Shoe created the final patterned design for its boots.

Because Olem Shoe’s questions are based on a flawed theory, it has failed to allege that Washington Shoe submitted inaccurate information to the Copyright Office. Accordingly, because they are irrelevant, the Court will not submit Questions 2 and 7 to the Register of Copyrights.

iii. Question 3 Regarding Derivation of Ditsy Dots

Olem Shoe also alleges that Washington Shoe submitted inaccurate information with the Ditsy Dots copyright registration because it failed to disclose that the boots depicted in the photographs submitted the Copyright Office were derived from a pre-existing drawing. Olem Shoe asks the Court to submit the following question:

Olem Shoe’s theory here seems to be that the 3-dimensional boots were derived from Washington Shoe’s previous 2-dimensional drawing, and that Washington Shoe should have disclosed the existence of the 2-dimensional drawing when it filed its Ditsy Dots registration. Perhaps this theory would have merit if the Ditsy Dots copyright registration at issue here were for a 3-dimensional work. However, the copyright registration is for the 2-dimensional artwork on the boots. Accordingly, Olem Shoe fails to allege any inaccurate information Question 3, and the Court will not submit it to the Register of Copyrights.

iv. Question 9 Regarding Derivation of Zebra Supreme

Olem Shoe also alleges that Washington Shoe submitted inaccurate information with the Zebra Supreme copyright registration because it failed to disclose that the design was derived from another similar design. Washington Shoe’s art director first created a design called “Rose Zebra Supreme” that had roses superimposed on zebra stripes with a silver lining. He then used the Rose Zebra Supreme design to create the Zebra Supreme design by removing the silver lining from the stripes and by removing the roses. (D.E. 79-1, Affidavit of Roel Salonga ¶ 3.) Washington Shoe registered the Rose Zebra Supreme design with the Copyright Office on May 21, 2009 (Reg. No. VAu000988278). When Washington Shoe registered the Zebra Supreme design in January 2010, however, it did identify Zebra Supreme as a derivative work, and it did not list Rose Zebra Supreme as preexisting material. Olem Shoe asks the Court to submit the following question:

*6 9. Whether the Copyright Register would have refused the application had the Copyright Register known that the claimant created the pre-existing work (Rose[ ] Zebra Supreme) Reg. No. VAu 988-27[8] for the same design except the roses and from which the work (Zebra Supreme-Olem) subject of Reg. No. VAu001007893 was derived?

(D.E. # 141-4 at 3.)

The Court views the topic of this question to be proper under § 411(b)(2). Accordingly, the Court will submit it to the Register of Copyrights, but it will rephrase the question as follows:

3. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu000756950 for 2-dimensional artwork applied to 3-dimensional rain boots (“Ditsy Dots,” filed August 9, 2007) if the Register of Copyrights had known that, although Washington Shoe did not identify the work as being a derivative work, Washington Shoe created the artwork by altering its previously registered copyright Registration No. VAu000988278 (“Rose Zebra Supreme,” filed May 21, 2009)?

v. Questions 4 and 5 Regarding “Reconstruction” of Ditsy Dots

Finally, Olem Shoe makes much of the fact that Washington Shoe apparently re-filed photographs for the Ditsy Dots copyright registration in 2009. According to Washington Shoe, the Copyright Office lost the original photographs submitted in 2007 and asked Washington Shoe to submit new photographs. Olem Shoe characterizes this procedure as “unorthodox” and alleges that Washington Shoe’s submission in 2009 was an improper “reconstruction” of the registration. Olem Shoe asks the Court to submit the following two questions:

4. Whether claimant’s filing of two “new” photographs in 2009 for the 2007 copyright registration (Ditsy Dots) would have been refused by the Copyright Register as an improper reconstruction?

5. Whether claimant’s filing of two “new” photographs in 2009 would have been refused by the Copyright Register even if it were to clarify or amplify the registration filed on August 9, 2007?

(D.E. # 141-4 at 2.)

Completely lacking from these questions is any allegation of inaccurate information. Olem Shoe does not allege that Washington Shoe submitted inaccurate information when it responded to the Copyright Office’s request. Moreover, the questions do not even make senseOlem Shoe wants the Court to ask the Copyright Office if it would have accepted photographs that it has already accepted. The Court will not entertain such nonsense. Accordingly, the Court will not submit Questions 4 and 5 to the Register of Copyrights.

III. Conclusion

For the foregoing reasons, it is hereby ORDERED that Olem Shoe’s motion is GRANTED IN PART, DENIED IN PART. Subsequent to this Order, the Court will issue a request under 17 U.S.C. § 411(b)(2) for the Register of Copyrights.

DONE and ORDERED.
Parallel Citations
2010 Copr.L.Dec. P 29,968

The Register notes the court’s concern regarding the structure of 17 U.S.C. § 41l(b)(2) and the potential that the provision might be abused by litigants. See, Footnote 4 of the Order on Motion for Issuance of Request to Register of Copyrights. Since the Office played an instrumental role in the amendment of 17 U.S.C. § 411(b)(2) as part of the Prioritizing Resources and Organization for Intellectual Property Act of 2008, the Register takes this opportunity to relay its insight regarding the provision. The amendment to 17 U.S.C. § 41l(b)(2) was adopted in order to address situations in which courts of appeals have misunderstood Copyright Office registration practices and came to erroneous conclusions about alleged misstatements on applications for registration. See Raquel v. Education Management. Corp., 196 F.3d 171, 177 (3d Cir. Pa. 1999), vacated and remanded, 531 U.S. 952 (2000)(1). See also Greenberg V. National Geographic Society, 244 F.3d 1267. 1273 (11th Cir. Fla. 2001)(2). As a result of these decisions, 17 U.S.C. §411(b)(2) was amended to ensure that no court holds that a certificate is invalid due to what it considers to be a misstatement on an application without first obtaining the input of the Register as to whether the application was properly filed or, in the words of § 411(b)(2), “whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.” The Register readily admits that in many, and perhaps even most, cases in which it is alleged that there is a misstatement on an application that might lead a court to conclude that the registration cannot be relied upon as satisfying the statutory prerequisite for an infringement suit, there may be little need for the assistance of the Register because the answer will be apparent. However, 17 U.S.C. § 411(b)(2) was enacted because a court will not always know what information would or would not make a difference in the Register’s determination whether to register a copyright.

While 17 U.S.C. § 41 l(b)(2) requires the court to seek the Register’s advice when there is an allegation that an application contains inaccurate information, the Register observes that the statute says nothing about the timing of the request. The Register suggests that, at a minimum, the court retains the power to delay the request until a factual record has been developed, e.g., through affidavits or discovery. The Register believes that if a court concludes that the bare allegations are unsupported by any facts, the court would be free to refrain from issuing requests to the Register. The court could, for example, entertain a motion for partial summary judgment prior to referring certain questions to the Register. If the court concludes that there is no factual basis for certain allegations, such as an allegation that the plaintiff is not the author or copyright owner of the work in question, the court might come to a conclusion on such issues as a matter of law, in which case there may be no need to refer the question to the Register. In other words, before asking the Register whether she would have refused to register a copyright if she had known about a particular alleged misstatement of fact on an application, a court should feel free to determine whether there is in fact a misstatement of fact.(3) In addition, the Register agrees with the Court’s conclusion that a court will not be bound by the Register’s response to a request made pursuant to § 411(b). However, since the issue is whether the inaccuracy of the misstatement on the application would have caused the Register to refuse registration, the Register respectfully submits that it would be appropriate for the court to give deference to the Register’s response in such matters, since the Register is in the best position to state what the Register would or would not do under the stated circumstances.

Dated: October 14, 2010

_____________________________
MARYBETH PETERS
Register of Copyrights

(1) In Raquel, the Supreme Court vacated the Third Circuit’s decision that concluded that a statement regarding the “nature of this work’” on an application was inaccurate and would have occasioned the rejection by the Register of Copyrights of Raquel’s application for copyright registration if the Register had realized it was inaccurate. The case was remanded for further consideration in light of the position asserted by the Solicitor General in his brief for the United States, as amicus curiae, filed September 20, 2000, and the Copyright Office’s July 5, 2000, Statement of Policy, 65 Fed. Reg. 41508, both of which identified the Third Circuit’s misunderstanding of longstanding Copyright Office registration practices.
(2) In that case, the Eleventh Circuit misunderstood the Copyright Office’s longstanding registration
practices regarding identification of authorship identified in an application for registration.
(3) The Register cautions, however, that if that issue depends even in part on interpretation or understanding of the Copyright Office’s registration practices, the more prudent practice – and the practice anticipated in §
41 l(b) – would be to refer the question to the Register. For example, in Raquel, supra, the court
misunderstood the purpose of the “Nature of this Work” space on the copyright registration application and concluded that the copyright claimant had made a false statement of fact in completing that part of the application. The court’s conclusion was based on an misunderstanding of the function of the “Nature of this Work” space on the application, a misunderstanding that could have been corrected if the court had sought the guidance of the Register.

The following computer programming elements are not likely to be copyrighted and thus can be copied without obtaining authorization.

Computer Languages

No court in the United States has ruled on whether high-level computer languages like C++ or Java can themselves be protected by copyright. The Copyright Office, however, refuses to register a work consisting solely of a computer language.(51)

Algorithms

An algorithm in the most general sense is an uncopyrightable idea. As used below, the term “algorithm” refers to a “finite sequence of instructions, each of which has a clear meaning and can be performed with a finite amount of effort in a finite length of time.”(52) For example, an algorithm for Christmas shopping could be: (1) find appropriate gift, (2) purchase gift, (3) wrap gift, and (4) present gift to recipient. “When viewed from the highest level, algorithms represent the very essence of abstract ideas; as such, algorithms are ineligible for copyright or patent protection. . . . [and] always remain in the public domain.”(53)

Other Non-Protected Elements

i. Command Structures of Menus in Computer Applications

The command structure of menus such as pull-down menus in computer applications are not protected under copyright law. (The analogy that courts have accepted in not recognizing copyrights for pull-down menus is based on their “button-like” nature). One court specifically compared pull-down menus to the buttons on a VCR. An example of the type of pull down menu that is not protected under copyright law is shown below.

EDIT
Undo Typing
Repeat Typing
Cut
Copy
Paste

ii. Overlapping Windows on a Computer Display

In Apple Computer, Inc. v. Microsoft Corp., 24 U.S.P.Q.2d 1081 (N.D. Cal. 1992), aff’d, 35 F.3d 1435 (1994), the court held that the look-and-feel of the Macintosh GUI (Graphical User Interface) was given only limited copyright protection because: (1) the desktop metaphor was found to be functional (rather than artistic); (2) the GUI was primarily designed to facilitate use of the computer; and (3) many of the GUI features (e.g., overlapping windows, use of manipulatable icons, etc.) were found to be standardized across competing products for functional considerations and thus unprotectable ideas rather than protectable expression.(55)

Expired Copyrights and Works in the Public Domain

Copyrights that have expired or works that are otherwise in the public domain are not protected by copyright. A detailed discussion of when a work expires or otherwise enters the public domain appears below, under “Copyright Defenses.”

(51)1 Michael D. Scott, SCOTT ON COMPUTER LAW § 3.47 [C][11] (1998); U.S. Copyright Office, COPENDIUM OF COPYRIGHT OFFICE PRACTICES II, at 300-26 (1984).
(52)A. Aho, J. Hopcraft & D. Ullman, Data Structures and Algorithms 2 (1983).
(53)4 Melville B. Nimmer et al., NIMMER ON COPYRIGHT § 13.03[f][1] (1998).
(54)See Lotus Development Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided Court, 116 S. Ct. 804 (1996).
(55)See also Lotus Development Corp. v. Borland Int’l, Inc., 49 F.3d 807 (1st Cir. 1995), aff’d by an equally divided Court, 116 S. Ct. 804 (1996) (addressing interoperability concerns); see also 1 Michael D. Scott, SCOTT ON COMPUTER LAW § 3.47 [C][1] (1998).

The Idea/Expression Dichotomy is an important concept in copyright law. It helps to explain why a particular computer program is subject to copyright while the underlying idea of the program is not. The merger doctrine provides a possible defense to copyright infringement when the ways of expressing a particular idea are limited. Moreover, independent creation of a work (such as via a clean room) can avoid copyright infringement for the copied work because only the ideas are copied.

Proving copyright infringement during litigation can be very complex. An easy case might involve a “smoking gun” where direct proof of copying exists. A more complex case might involve a detailed three-part analysis, known as the abstraction-filtration-comparison test. When trying to figure out what can be copied and what cannot, it is best to err on the side of caution and ask an attorney.

Not all elements of a computer program are subject to copyright. This is because various defenses exist such as merger, fair use, and copyright expiration. All defenses should be considered when determining whether a particular work is protected by copyright and whether you may copy all or part of the work in question.

The most widely used defense is the “fair use” defense. The fair use defense involves the following factors: (1) the purpose and character of the use (e.g., commercial versus nonprofit or educational purposes),(74) (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use on the potential market for or value of the copyrighted work. Unfortunately, the case law is scant on how courts will apply the four fair use factors
mentioned above in the realm of software development.(76)

An example of the fair-use defense applied in a non-software context is Harper & Row Publishers, Inc. v. Motion Nation Enterprises.(77) In Harper & Row, the Supreme Court held that using 300 words excerpted from an unpublished manuscript written by President Gerald R. Ford as his autobiography was not a fair use. The Supreme Court found that all four fair use factors weighed against a finding of fair use. The court found that the purpose and character of the infringing use was commercial in nature. The “scooped” material from the President’s autobiography, for example, was intended to sell magazines and conversely was not for a nonprofit or educational purpose.(78) The court also found that the nature of copyrighted manuscript (i.e., that it was unpublished) weighed against finding fair use. Specifically, the court reasoned that the infringing use interfered with the author’s interest in confidentiality and creative control of his own, yet unpublished, work.
Regarding the amount and substantiality of the copyrighted work used, although only 300 words were taken from an entire manuscript, the 300 words taken were among the “most interesting and moving parts of the manuscript.” Lastly, the court found that use of the infringing excerpt would directly compete for a market share of the President’s autobiography. The court noted that the last fair use factor is undoubtedly the single most important consideration when determining if a particular use is fair.

In a different case, the Supreme Court found that recording copyrighted television shows for home viewing on a video tape recorder was fair use.(79) The court reasoned that most people use their video recorders to record television programs for viewing at a later time (i.e., “timeshifting”). Considering the fair use factors: (1) the timeshifting use is not commercial in nature; (2) the copyrighted television shows are broadcast free of charge; (3) the entire program is recorded, including the commercials; and (4) the timeshifting use increases the value of the copyrighted work because it actually increases the viewing audience.

Because the courts have decided issues of fair use on a case-by-case basis, and because the cases addressing fair use in the context of computer programs are few, specific questions regarding the use of the fair use defense should probably be addressed to a knowledgeable attorney.

(75)See 1 Michael D. Scott, SCOTT ON COMPUTER LAW § 3.28 [B][3] n.543.2 (1998) citing Marcus v. Rowley, 695 F.2d 1171, 1176 (9th Cir. 1983) (“wholesale copying of copyrighted material precludes application of the fair use doctrine”). As discussed earlier in this memorandum, appropriating only a small amount of copyrighted material or making unauthorized copies for a short duration of time or just making a “few” copies of a particular word does not necessarily alleviate one from liability for copyright infringement. See SAS Inst., Inc. v. S&H Computer Sys., Inc., 605 F. Supp. 816 (M.D. Tenn. 1985) (finding copyright infringement when only 14 lines of source code were copied out of a total of 186,000 lines of code).
(76) One case applying the fair use factors to the question of video game copyrights held that making temporary alterations to certain characteristics of copyrighted Nintendo video games was a fair use. Lewis Galoob v. Nintendo of America, 780 F. Supp. 1283 (N.D. Cal. 1991). See also 1 Michael D. Scott, SCOTT ON COMPUTER LAW § 3.28 [B][3] (1998). In the realm of computer programs, the fair use defense has perhaps been addressed most widely in the context of reverse engineering.
(77)Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985).
(78)The commercial nature of a work is not always dispositive but weighs in favor of finding a particular use was not fair. Cf. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (commercial use can still be fair use).
(79)Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984).

A copyright can be abandoned, forfeited, or both, and a copyright owner can sometimes be prevented from asserting their rights. Abandoning a copyright requires some manifestation of an intent to abandon. Mere inaction will not constitute such a manifestation.(73)

Forfeiture is usually associated with the publication of a work without the proper notice (required under prior Copyright laws) or can occur when a copyright owner decides to dedicate a work to the public domain.

(73)See, e.g., Lottie Joplin Thomas Trust v. Crown Publishers, Inc., 456 F. Supp. 531 (S.D.N.Y.), aff’d, 592 F.2d 651 (2d Cir. 1978).

The seminar will be at the WSBA-CLE Conference Center at Century Square 1501 4th Ave., Suite 308 in Seattle.

The all-day seminar includes other programs. We have attached the flyer and registration form below. You can also read more about the seminar here

We look forward to seeing you there.

Registration Form

Two computer programs can be identical and yet there will be no copyright infringement if both were created independently of each other. One common way of doing this is by creating a “clean room.”

One may independently develop a competing program by having a first team produce design documentation of inputs and desired outputs after lawfully analyzing a first program from which the competing program is to be developed. A second team then writes code for the competing program based on the created design documentation. The competing program, even if substantially similar to the first program will not likely infringe any copyrights because of its independent creation.