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When Danish woodcutter Thomas Dan carved out the fuzzy-haired troll doll in 1959 because he was too poor to buy his daughter a birthday gift, he probably never imagined his creation would wind up in a legal debate in the United States. But 45 years later, in a New York courthouse, the trolls have ended up in two copyright infringement lawsuits using an 8-year-old copyright restoration law that’s protected everything from Godzilla’s voice to Escher’s never-ending stairs to the music of “Peter and the Wolf.” The law, known as the Uruguay Round Agreement Act of 1994 (URAA), which took effect in 1996, has sparked a constitutional debate among legal scholars and intellectual property lawyers who argue over a key sticking point: Should something that’s slipped into the public domain ever be taken out? Under the URAA, foreign works that had been allowed into the public domain in the U.S. as a result of failure to follow U.S. copyright formalities are now eligible for automatic copyright restoration. Works that were once a free-for-all for artists and entertainers in the U.S. are now off limits. Colette Vogele, a copyright attorney with Stanford Law School’s Center for Internet and Society who is currently challenging the constitutionality of the act, believes that restoring copyrights to works that have been in the public domain stunts cultural development and creativity by artists. Vogele said 48,000 individual works of art have been affected by the restoration act, with artists claiming the works are subject to copyright restoration and should be removed from the public domain. “To create new works, authors, composers and writers use things that are in the public domain regularly,” said Vogele, who is representing a Denver composer suing over the loss of rights to perform various musical compositions taken out of the public domain by the URAA. Golan v. Ashcroft, 310 F. Supp. 2d 1215 (D. Colo.). “They build on that history that has been developed over many centuries. And by taking a land grab of works out of the public domain — it’s setting a kind of precedent that we think is very dangerous.” Vogele added, “[W]e have this generation of children who will never hear these great works of composition because they will not be in the public domain.” But not all artwork should be up for grabs, argued copyright attorney Patrick Perkins, who in 1996 successfully sought copyright restoration for Dutch artist M.C. Escher in what was the first restoration suit filed under the 1996 act. Cordon Art B.V. v. Walker, 40 U.S.P.Q. 2d 1506 (S.D. Calif. 1996). “It’s always been baffling to me — the notion that creativity is fostered by allowing people to copy other people’s creative expression. Create a new character. Write a new story. Don’t copy somebody else’s,” said Perkins, a partner at New York’s Fross Zelnick Lehrman & Zissu. “The framers of the Constitution made it clear that the intent of the copyright clause was to encourage creativity. Ultimately, creativity is encouraged by the ability to reap the benefits of your creations,” Perkins said. Craig Mende, a copyright attorney with Fross Zelnick who is handling the troll lawsuits, said the story of the trolls is a clear-cut example of how the URAA helps prevent art piracy. The trolls inadvertently fell into the public domain in the United States 40 years ago through a loophole in laws governing international copyright protection. They became freely produced in the United States and lost licensing revenue. But with the URAA amendments to the U.S. Copyright Act, the trolls regained their copyright protection and the Troll Co. started going after companies that had taken advantage of their public-domain status. Under the URAA, an artist must meet three criteria for copyright restoration status: � The work must not be in the public domain in its source country due to expiration, and cannot have been published first in the United States. � The work must be in the public domain in the United States due to a failure to comply with copyright law formalities. � The author must have been a national of a participating country when the work was established. Companies or artists whose copyrights have been restored are urged to send a Notice of Intent to Enforce to anyone who may have used their works when they were in the public domain, and continues to do so. According to Mende, the Troll Co. met all those requirements, and since the passage of the amendment has successfully stopped more than a dozen companies from selling and distributing the trolls. It also has resolved legal disputes with Walt Disney Co., which had to get a license to use the trolls in the “Toy Story” movies, and Warner Bros., which also had to get a license to continue using the trolls as props on “The Drew Carey Show.” “Once the restoration came into effect in the beginning of 1996, our clients’ rights were restored, but there were a number of companies that nonetheless went out and created and sold trolls,” said Mende. In the last two months, the Troll Co. filed two copyright infringement lawsuits in federal court in New York, and it plans to file a third in the near future, Mende said. These troll cases have piqued the interest of many IP lawyers nationwide. Troll Company APS v. Street Players Holding Corp. and David Seagull, No. 04 CV 5614 (S.D.N.Y.). “The trolls have made amazing comebacks. They just keep coming back from the dead,” said IP attorney Parker Bagley, a partner at New York’s Milbank, Tweed, Hadley & McCloy who in the past has helped the Hummel figurine company protect its copyright status. One of the defendants in the troll lawsuits is Street Players Holding Corp., a California-based toy company that, Mende said, is about to market “mopheads,” a version of the troll doll. The Street Players’ lawyer, Jeffrey Nagin of Rosenfeld Meyer & Susman in Beverly Hills, could not be reached for comment. As the troll lawsuits move forward, efforts have been under way to declare the law unconstitutional. Some are still ongoing. Others have failed. For example, on June 19, the U.S. District Court for the District of Columbia rejected arguments by a music publishing company and a film preservation company that the restoration of foreign copyrights under the Uruguay act are unconstitutional. Luck’s Music Library v. Ashcroft. Restoration rights got another boost last year from the Fifth Circuit U.S. Court of Appeals, which on May 19, 2003, ruled in favor of a group of Mexican copyright holders who sued over the copyrights of 88 Mexican films from the 1930s and 1950s that were distributed in the United States. The U.S. Supreme Court refused to hear a further appeal. Alameda Films v. AARC, 331 F. 3d 472 (5th Cir. 2003). Meanwhile, the Stanford Center for Internet and Society is moving forward with its effort to have the URAA declared unconstitutional on behalf of the Denver conductor seeking to perform compositions taken out of the public domain by the URAA. Denver attorney Hugh Gottschalk of Wheeler Trigg & Kennedy, one of several lawyers assisting with the case, said one of the biggest obstacles is “getting our arms around the scope and extent of the harm that’s occurred” as a result of work leaving the public domain. “Taking works out of the public domain is not consistent with the concept of protecting creative works,” Gottschalk said. “If they’ve been in the public domain, you’re not really serving the public interest by taking them out.” Professor Dennis Karjala, who teaches international IP and copyright law at Arizona State University College of Law, echoed that sentiment, calling the Uruguay act a “mistake” that stifles creative thought. “The public domain is getting choked off and the public domain is the source of new creativity and that’s the problem,” Karjala said. “When Disney takes a Grimm story and Disneyfies it, it’s a better story, it’s a valuable contribution.” Vogele said she plans to cite several cases in which courts recognize that once material is in the public domain, it remains there forever. For example, she said, in Bridge Publications Inc. v. F.A.C.T.Net Inc., 183 F.R.D. 254 (D. Colo. 1998), the court found that “[o]nce a work enters the public domain, it remains there irrevocably.” And in Jacobs v. Robitaille, 406 F. Supp. 1145 (D.N.H. 1976), the court ruled that “[o]nce a work has been injected into the public domain, all of its copyright protection is lost permanently and cannot be restored or reclaimed.” Mende doubts the Stanford group will have much luck in overturning the URAA, “mostly because it’s a high hurdle to show that something is truly unconstitutional. “I don’t think it’s going to go very far. This U.S. statute was passed in part so that the U.S. would comply with the original international treaty, and I think courts will be very reluctant to undo obligations under a treaty,” Mende said. And as for copyright restoration deterring artistic growth, Mende called the argument “specious.” “The people who are out there trying to take advantage of former public domain status are not people who are adding greatly to the world of creative works,” Mende said. “They’re more likely trying to make a quick buck than adding something new and creative to the world . . . especially in cases where you’re reproducing collectibles and knickknacks.” Tresa Baldas is a reporter with The National Law Journal, a Recorder affiliate based in New York City.

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