The “Blue Monk” of this column’s title refers not to a memorably quirky 12-bar blues in B-flat by Thelonious Monk, but instead to His Eminence, Archbishop Gregory (George), leader of the Genuine Orthodox Church of America and founder of the Dormition Skete monastery in Denver, Colo. The archbishop recently found himself on the losing end of a complex copyright infringement case in the U.S. Court of Appeals for the First Circuit, Society of the Holy Transfiguration Monastery v. Archbishop Gregory of Denver,1 which revisits the treacherous four-way intersection where religious doctrine and organizational infighting meet copyright law and the Internet.

As in the Second Circuit’s 2002 ruling in Merkos L’Inyonei Chinuch v. Otsar Sifrei Lubavitch,2 the dispute concerned contemporary English translations of sacred ancient texts, copied and distributed by a rival religious group, and as in Merkos, the translations were ultimately held to be protectable, owned by the plaintiff, and infringed by the defendant. Unlike the defendant in Merkos, however, Archbishop Gregory raised some high-tech defenses to the claimed infringements, including a Digital Millennium Copyright Act (DMCA) “safe harbor” argument and a claim that he did not commit a “volitional act” in placing the infringing works on the web. He also alleged fair use and copyright misuse, and claimed that the plaintiffs’ copyrights were void because the original works had been published without notice.

Despite these creative arguments, the First Circuit’s ruling left Archbishop Gregory a very blue monk indeed by the end of the case. Though the facts of Society of the Holy Transfiguration may seem rather byzantine (no pun intended), the case demonstrates—and correctly resolves—a recurring fact pattern common among corporate copyright owners from film studios to Internet start-ups: dealing with a disgruntled former colleague who takes a company project elsewhere.

Background

Plaintiff, Society of the Holy Transfiguration Monastery Inc., was founded in Massachusetts in the early 1960s. In 1965 it affiliated with the Russian Orthodox Church Outside of Russia (ROCOR). Since its founding, the society’s members, approximately 35 monks, have translated many ancient religious texts from the original Greek into English. As these translations were in the process of being created through the 1960s and 1970s, the society made some of them available to select Orthodox parishes, to obtain feedback as to the quality and usefulness of the translations.

Archbishop Gregory was a monk at the society’s monastery for part of this time. In 1978, he obtained ROCOR’s permission to leave and establish his own monastery in Denver. In 2005, the archbishop started a website for the Denver monastery, www.trueorthodoxy.info, which posted religious texts free of charge for non-profit purposes. Between 2005 and 2007, the website posted seven translations that had been prepared by the society (the Works). The society was not amused.

In 2006, the society brought suit in Michigan for infringement of two Works. The Michigan action was settled by an agreement that provided the archbishop would not challenge the validity or ownership of the society’s copyright in the Works, and would not assist in the creation of any copies in any medium. Despite the agreement, the offending Works remained on the website and additional Works were posted in August 2007.

At the end of 2007, the society started a new action in the District of Massachusetts for infringement of seven Works, one of which had been part of the earlier Michigan action. The archbishop removed the Works from the site and moved to dismiss, which motion was denied. The archbishop then answered, asserting defenses based on ownership, protectability, publication without notice, fair use and the DMCA. The District Court, in two separate rulings, rejected these defenses and granted summary judgment to the society. On Aug. 2, 2012, a distinguished First Circuit panel, including retired Supreme Court Justice David Souter, sitting by designation, affirmed the District Court.

First Circuit Ruling

Writing for a unanimous court, Judge Juan Torruella first addressed the ownership issues. Because all of the Works were registered either before or within five years of their publication, the society enjoyed a statutory presumption of ownership, and the First Circuit agreed with the District Court that the archbishop did not provide evidence sufficient to overcome that presumption.

The archbishop’s main ownership attack was that ROCOR, and not the society, was the actual owner of the copyrights by operation of law. Noting an arid “desert of case law on the issue of copyright transfers by operation of law,” and lacking statutory guidance, the First Circuit analogized to corporate law and held that a transfer by operation of law, outside the bankruptcy context, “is a voluntary transfer done on the part of the copyright owner to another.”3 Here, there was no evidence of any such voluntary transfer by the society.

The archbishop argued that under the Monastic Statutes and Regulations of ROCOR, which allegedly governed the society at the relevant time, the society was obliged to convey its “possessions,” including the copyrights, to ROCOR upon the “closing or liquidation” of the society’s monastery. This argument failed on both counts. The society was not incorporated under the Monastic Statutes, held the court, but was established as a Massachusetts not-for-profit before its affiliation with ROCOR began. Moreover, the society did not “close or liquidate” when it ceased its connection with ROCOR in 1986, but instead continued to operate as an independent monastery. Also, the court observed that the registration certificates for the Works did not mention ROCOR as an owner of copyright in the Works. Accordingly, there was no evidence of a voluntary transfer to ROCOR and the society was the owner of the copyrights.

The archbishop’s allegation of publication without notice failed as well. Although the society did distribute copies of the Works to 12 orthodox parishes without copyright notice at a time when such lack of notice could be fatal, these distributions did not amount to a “general publication” of the Works. Instead, they were a “limited publication” because they were “to selected religious congregations” and at least in part “for the circumscribed purpose of literary feedback.”4 Elsewhere in its opinion the court recognized that the purpose of the distributions was “twofold,” serving to “meet the growing need for religious texts in the English language” as well as to provide comments to the society, but evidently this hybrid public/private purpose did not compel a finding of general publication, especially where the parishes were given specific instructions that no copies be made.

Turning to questions of originality and protectability, the First Circuit had little trouble finding the Works to be copyrightable, as it noted that the Copyright Act specifically recognizes the protectablility of derivative works including translations. The archbishop contended, without great specificity, that the Works were merely “a commixture of various ancient religious works” with the society making only “modest edits,” but following the Second Circuit’s Merkos decision the court held that there were “notable differences” between the Works and earlier translations, and thus there was “creativity in the [society's] word usage, structure, and overall translation.” Nor were the Works “merged” with the underlying Greek texts, because there are “many possible means” of translating the texts into English. Again quoting Merkos, the court suggested that the merger doctrine was perhaps never applicable to translations because “the art of translation involves choices among many possible means of expressing ideas.”5 The court’s language seems to suggest that translations might be almost per se copyrightable, similar to sound recordings.

The archbishop’s remaining defenses also failed. First, citing the Second Circuit’s ruling in Cartoon Network v. CSC Holdings,6 he argued that he was not directly liable for copyright infringement because he had not committed a “volitional act” in displaying the works publicly on his website. Rather, he argued, it was individual visitors to the site who caused the public display to occur, when they clicked on the site to access the Works. The court disagreed, finding that the archbishop “performed several acts to ensure that copies of the Works were available on his server and posted to his website,”7 such as owning the site, registering the site in his name, choosing the content to be posted, and closely supervising the work of the monk, Father Peter, who actually operated the computer to upload the infringing content to the server. Thus, “regardless of whether the law mandates a showing of volitional conduct to establish direct infringement, the Archbishop here engaged in sufficient acts of authority and control over the server and material actually posted that he may be held liable for direct infringement of the Works.”8

The archbishop’s DMCA “safe harbor” defense was deemed waived under Rule 8(c), Fed. R. Civ. Pro. because it was not pleaded, but it seems clear that such a defense would be inapplicable on the merits in light of the archbishop’s direct involvement in selecting the content that was posted to the site.

The fair use defense was not waived, but fared no better because the archbishop’s use of the society’s material was not in any way transformative, but was instead distributed for the very same purpose for which the material was intended, i.e., “to allow Orthodox Christians to sample and learn from the Works’ teachings on the Orthodox faith.”9 The court, citing an analogous Ninth Circuit case, Worldwide Church of God v. Philadelphia Church of God,10 held that even though the Works were given away for free, defendant “profited” by “standing to gain at least some recognition within the Orthodox religious community” for providing electronic access to translations of the ancient Greek spiritual writings.

The Works were held to be creative under the second fair use factor, and some were also unpublished, further tipping the second factor in favor of plaintiff. The third fair use factor, the amount of the taking, favored plaintiff because the translations were copied almost in their entirety. The archbishop argued that he copied only a small portion of the plaintiff’s entire corpus of translations, e.g., only one of 77 homilies attributed to St. Isaac, but the court responded by citing Learned Hand’s maxim that “No plagiarist can excuse the wrong by showing how much of his work he did not pirate.”11

Under the final fair use factor, harm to the plaintiff’s actual or potential market, the court reasoned that a ruling in the archbishop’s favor would “discourag[e] other institutions from investing in and expending the time, effort and resources necessary for producing works that, without modern translations, would remain predominantly inaccessible to other religious institutions and their members.”12

Finally, the court rejected the archbishop’s asserted defense of copyright misuse. The First Circuit has not yet recognized a copyright misuse defense, noted the court, but even under the principles adopted by several other circuits no misuse would be found here, because the society was not seeking to use the copyright in its original translations to monopolize access to the ancient orthodox texts. The texts are available in other English translations, noted the First Circuit. Moreover, as with the archbishop’s DMCA defense, the misuse defense “had never so much as breathed an appearance” in the record prior to the filing of the appeal, so the defense was waived in any event.

A petition for rehearing en banc was denied on Aug. 28, 2012, and the society’s motion for an award of attorney fees was denied. No cert. petition appears on the PACER docket.

Robert W. Clarida is a partner at Reitler, Kailas & Rosenblatt and is the author of the Copyright Law Deskbook (BNA). Robert J. Bernstein practices law in New York City in The Law Office of Robert J. Bernstein.

Endnotes:

1. 689 F.3d 29 (1st Cir. 2012).

2. 312 F.3d 94 (2d Cir. 2002).

3. 689 F.3d at 41.

4. Id. at 45.

5. Id. at 53.

6. 536 F.3d 121131-132 (2d Cir. 2008).

7. 689 F.3d at 56.

8. Id. at 57.

9. Id. at 60.

10. 227 F.3d 1110 (9th Cir. 2000).

11. 689 F.3d at 63, quoting Sheldon v. Metro-Goldwyn Pictures, 81 F.2d 49, 56 (2d Cir. 1936)(L. Hand., J.).

12. Id. at 64.