Prof. Randal C. Picker, The University of Chicago Law School
November 18, 2009

My favorite German word is festschrift.  What could be nicer than commemorative essays to celebrate an event?  The University of Chicago Law Review is publishing essays in celebration of Judge Frank Easterbrook’s 25th year on the bench.  My essay focuses on what students of copyright learn from Judge Easterbrook.

Three of his dozen or so copyright opinions turn up repeatedly in copyright casebooks: Nash v. CBS, Inc.; Lee v. A.R.T. Co.; and ProCD, Inc. v. Zeidenberg.1  This is a surprising success rate for a judge from the copyright-starved Seventh Circuit.  Judge Easterbrook has an eye for fundamental questions, writes opinions that are brief while treating issues fully, and has a distinctively lively Easterbrookian style, one that he preserves by refusing to outsource his opinions to his clerks.

Nash poses a key conceptual question: If only one person believes something to be a fact, is it a copyright fact?  We confront the idiosyncratic fact, that is, a claim of fact that may be believed by only one person and by no one else.  Nash believed that John Dillinger wasn’t killed by the FBI outside Chicago’s Biograph Theatre in 1934.  In Nash’s view — set out in detail in two books — Dillinger wasn’t present and went on to lead a full life.  That doesn’t raise a copyright issue of course, but when “Simon & Simon,” a CBS detective show, broadcast a similar story, Nash sued for copyright infringement.

Judge Easterbrook concluded that Nash was stuck: A fact for him meant that anyone else could use his fact just as a good ordinary fact can be used under Feist.2  Nash is casebook-worthy alone because of the factual situation it encompasses, as it is the law-school hypo come alive.  The opinion nails down a key conceptual boundary question for copyright: Copyright facts and actual facts may have little to do with each other.

Lee answers the age-old question: What does glue do?  Annie Lee created postcards of her original art.  A.R.T. Co. glued postcards to tiles and sold them.  In doing so, did A.R.T. violate Lee’s exclusive right to make derivative works as set forth in Section 106(2)?  Lee is a refreshingly brief opinion, little more than five columns in F.3d, yet, like Nash, it poses in simple fashion a basic question about the operation of copyright.

The opinion concluded that the notecard-on-a-tile was little more than a flush frame and that framing generically didn’t change the underlying work and therefore didn’t create a derivative work.  The opinion doesn’t linger on implicit questions on the role of price discrimination in derivative-works markets but instead considers the relationship between the derivative-works right and the status of moral rights in the United States.

Boundary cases are particularly important because legal analysis frequently builds off of what is taken as given: If x is right, then y must follow.  Lee does exactly that for derivative works, an area of increasing importance for copyright.

Finally.  ProCD is one of Judge Easterbrook’s best known decisions, studied by contract students and copyright students alike.  ProCD is also the opinion that the copyright casebooks love to hate.  ProCD sold information to different markets selling a professional version at a high price and a consumer version at a much lower price.  As the opinion notes, this is exactly the sort of price discrimination that we should expect for a good with a large fixed cost of creation and a zero marginal cost of duplication.

That wasn’t Zeidenberg’s concern.  Zeidenberg bought the consumer version and quickly commenced selling the information online.  That made Zeidenberg a direct competitor of ProCD and, unsurprisingly, ProCD didn’t plan on selling that right in either version of its product.  Judge Easterbrook validated the contract that limited the subsequent use of the ProCD database — the contracts world has conflicting views on that3 — and then wrestled with the tricky question of the interaction between copyright and contract.

Having found the contract between ProCD and Zeidenberg enforceable as a matter of state law, Judge Easterbrook still faced the question of whether Zeidenberg could weasel out of the contract by relying on Section 301 of the Copyright Act.  That turned on whether the contract created rights equivalent to copyrights.  The opinion said no: Copyrights are good against the world and the copyright holder doesn’t need to establish privity with the person against whom the copyright is asserted, while, in contrast, contractual rights usually only bind the parties to the contract.

That sufficed to break the equivalence of contract and copyright and thus made ProCD’s contract fully enforceable against Zeidenberg.  Zeidenberg could go dig up the facts on his own; what he couldn’t do was buy the consumer version and do an end-run on the license restrictions attached to it.

Students reading Judge Easterbrook’s copyright opinions learn to pay close attention to the text of the copyright statute and to appreciate how that text operates in critical boundary settings.  The opinions are written with a distinctive élan, with a little bit of law and economics thrown in, though less than you might expect given Frank’s deep academic roots.  Students should understand that the business of deciding cases is a different one than that of engaging in an abstract academic inquiry.  Easterbrook on copyright is somehow a work of interest and fun, yet disciplined, all at the same time.

You can find the full version of my essay here.  And be sure to look for the final volume from the University of Chicago Law Review.