The Lawletter Vol 38 No 4

Tim Snider, Senior Attorney, National Legal Research Group

Under the "first sale doctrine," the owner of a copyrighted item, such as a book or a recording, is free to use it, sell it, lend it, or give it away under whatever conditions the owner chooses to impose.  This doctrine derives from a long line of jurisprudence, see Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908), and is now embodied in the Copyright Act, 17 U.S.C. § 109(a) ("[T]he owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.").  Until now, the extent of the application of the first-sale doctrine to books sold overseas and then imported into the United States remained an open question.

Kirtsaeng v. John Wiley & Sons, 133 S. Ct. 1351 (2013), has now resolved that question.  John Wiley & Sons, Inc., an academic textbook publisher, often assigns to its wholly owned foreign subsidiary (Wiley Asia) rights to publish, print, and sell foreign editions of Wiley's English-language textbooks abroad.  Wiley Asia's books state that they are not to be taken (without permission) into the United States.  When Supap Kirtsaeng moved from Thailand to the United States to study mathematics, he asked friends and family to buy foreign edition English‑language textbooks in Thai book shops, where they sold at low prices, and to mail them to him in the United States.  He then sold the books, reimbursed his family and friends, and kept the profit.  Wiley sued Kirtsaeng, claiming copyright infringement. 

Wiley prevailed in the district court and in the Second Circuit.  The Supreme Court reversed.  The majority in a 6-3 decision concluded that nothing in the language of the statute would require that copyrighted works imported from overseas should be treated any differently than goods that are initially sold domestically.  Furthermore, as a practical matter, an application of the Copyright Act that would require buyers of copyrighted works to ascertain their provenance is simply unworkable.  The volume of foreign trade in which the United States engages is simply too large for enforcement to be feasible.  The burden of requiring those importing copyrighted goods into this country for a variety of purposes, such as exhibitions of works of art or acquisitions by museums, to seek out the copyright owners to obtain a license would be onerous.  Thus, an interpretation of the Copyright Act that would treat goods initially acquired outside the United States differently from those that are acquired domestically, for purposes of the first-sale doctrine, would be unenforceable.

July 11, 2013

Jeremy Taylor, Senior Attorney, National Legal Research Group

The Court of Appeals of Wisconsin recently applied the economic loss rule in a products liability action by a homeowner's property insurer against the manufacturer of an allegedly defective water softener that leaked and damaged drywall, flooring, and woodwork in the home.  See State Farm Fire & Cas. Co. v. Hague Quality Water, Int'l, 2013 WI App 10, 826 N.W.2d 412.  The insurer, State Farm, brought only tort claims against the manufacturer.  The manufacturer defended on the basis that Wisconsin's economic loss doctrine precluded recovery under the plaintiff's theories.  The trial court granted the manufacturer's motion for summary judgment.  The court of appeals rejected the manufacturer's argument, holding that the insurer was entitled to proceed under its tort theories.

At the threshold, the court of appeals noted that the economic loss doctrine bars recovery of purely economic losses through tort remedies when the only damage is to the product purchased by the consumer.  Hence, the doctrine does not apply when a defect in the product causes personal injury or damage to "other property."  It was the "other property" exception with which the court was concerned in the case at hand.

The court noted that Wisconsin engages in a two-part analysis to determine whether damaged property constitutes "other property," so as to allow the pursuit of tort remedies.  First, courts consider whether the defective product and the damaged property are part of an "integrated system."  If they are, then the damaged property is considered to be the product itself and is not "other property."  If they are not, the court then examines the expected function of the product and asks whether the purchaser should have foreseen that the product could cause the damage at issue.  If so, then the damaged property is not "other property."  In order to be "other property," the damaged property must survive both tests.

As to the integrated-system test, the court of appeals concluded that the consumer's water softener was not part of an integrated system, because it had a function apart from the drywall, flooring, and woodwork in the home.  In other words, in order to come within the economic loss doctrine, a defective product must be part of a larger system, and if it lacks a function apart from its value in such a system, it is not "other property" for damage to which an action will lie in tort.  The court noted that property has been deemed to be part of an integrated system precluding a tort recovery when, for example, it consisted of cement that was part of pavers that had been damaged, a replacement gear in a printing press, and windows in a home.

Brett R. Turner, Senior Attorney, Family Law

On June 26, 2013, the U.S. Supreme Court held in United States v. Windsor, No. 12-307, 2013 WL 3196928 (U.S. June 26, 2013), that section 3 of the Defense of Marriage Act, 1 U.S.C. § 7, is unconstitutional.  Section 3 provides that for purposes of federal law, same-sex marriages are not recognized.  Windsor held that in determining the marital status of same-sex couples, as in determining the marital status of opposite-sex couples, the federal government must defer to state law.

While state law is now controlling, many situations will arise in which state law is conflicting.  This short note will take a preliminary look at choice-of-law issues in a post-Windsor world.  The note is based upon a morning's worth of research, but not upon an exhaustive review of the entire field.  As additional relevant points appear, the note will be kept updated. 

At a very minimum, Windsor must mean that when a same-sex couple gets married and continues to live in a state that recognizes same-sex marriage, they have a valid marriage under federal law.  Thus, they are entitled to federal benefits available to married persons, such as the right to file a joint tax return. 

What if a same-sex couple gets married in a state that allows same-sex marriage but moves to a state that does not?  Under federal tax law, "[f]or the purpose of establishing eligibility to file a joint Federal income tax return, the marital status of the two individuals is to be determined under the laws of the State of their residence."  Von Tersch v. Comm'r, 47 T.C. 415, 419 (1967) (citing Rev. Rul. 58‑66, 1958‑1 C.B. 60); Lipton v. Comm'r, T.C. Summ. Op. 2007‑36, 2007 WL 686349, at *4 (2007). 

The practical setting of Revenue Ruling 58-66 was common-law marriage.  Most American states have abolished common-law marriage, but a small number of states retain it.  See generally Nadine E. Roddy, Interstate Recognition of Common Law Marriages, 9 Divorce Litig. 200 (1997).  Revenue Ruling 58-66 stated: 

The marital status of individuals as determined under state law is recognized in the administration of the Federal income tax laws. Therefore, if applicable state law recognizes common‑law marriages, the status of individuals living in such relationship that the state would treat them as husband and wife is, for Federal income tax purposes, that of husband and wife.

The foregoing position of the Internal Revenue Service with respect to a common‑law marriage is equally applicable in the case of taxpayers who enter into a common‑law marriage in a state which recognizes such relationship and who later move into a state in which a ceremony is required to initiate the marital relationship. Accordingly, a taxpayer who enters into a common‑law marriage in a state which recognizes such marriages is entitled, under the provisions of section 151(b) of the Internal Revenue Code of 1954, to an exemption of $600 for his common‑law wife in making a separate income tax return, provided that, for the calendar year in which the taxable year of the taxpayer begins, she has no gross income and is not the dependent of another taxpayer. Also, for the purpose of filing a joint income tax return under section 6013(a) of the Code, a common‑law wife in a state which recognizes such marriages will be considered to be the taxpayer's spouse. 

The Lawletter Vol 38 No 4

Jim Witt, Senior Attorney, National Legal Research Group

On Tuesday, October 23, 2012, the Court of Appeals of New York, in a 4‑3 decision, ruled that lap dances do not qualify for the same sales tax exemption as do other "dramatic or musical arts performances," such as a Madonna concert or a Broadway show.   677 New Loudon Corp. v. State Tax Appeals Tribunal, 979 N.E.2d 1121 (N.Y. 2012).

The court's ruling stemmed from a 2005 audit of the Nite Moves strip club in Latham, New York.  After an investigation, the New York Tax Appeals Tribunal demanded $124,921, based on unpaid sales taxes on cover charges and "performance fees," which were construed to mean fees for private dances.  The petitioner/appellant, the operator of an adult "juice bar," contended that the admission charges and private dance performance fees that it collected from patrons were exempt from state sales and use taxes.  The court of appeals agreed with the appellate division's ruling that the petitioner had failed to meet its burden of proof that a tax exemption applied to those charges.

The portion of the sales tax in question imposes a sales tax on "'[a]ny admission charge' in excess of 10% for the use of 'any place of amusement in the state.'"  Id. at 1122 (quoting N.Y. Tax Law § 1105(f)(1)).  The legislature defined places of amusement that are subject to this tax to include "[a]ny place where any facilities for entertainment, amusement, or sports are provided."  Id. (quoting N.Y. Tax Law § 1101(d)(10)).  As the court of appeals observed, the tax therefore applies to a vast array of entertainment, including attendances at sporting events such as baseball, basketball or football games; collegiate athletic events; stock car races; carnivals and fairs; amusement parks; rodeos; zoos; horse shows; arcades; variety shows; magic performances; ice shows; aquatic events; and animal acts.  Plainly, no specific type of recreation is singled out for taxation.

The court went on to explain that the legislature had created the exemption from taxation for admission charges to "dramatic or musical arts performances," N.Y. Tax Law § 1105(f)(1), for the purpose of promoting cultural and artistic performances in local communities.  The petitioner argued that performances regarded as "adult entertainment" qualified for the exemption because exotic stage and couch dances were musical arts performances.  The court, pointing out that it was the petitioner/taxpayer's burden to prove the applicability of any exemption from taxation, ruled that a determination by the Tax Appeals Tribunal could not be overturned unless "erroneous, arbitrary or capricious."  979 N.E.2d at 1123 (quoting Grace v. N.Y. State Tax Comm'n, 332 N.E.2d 886 (N.Y. 1975)).  The court found that given the fact that the performances in question were carried out in "private rooms," the petitioner had failed to prove that the performances qualified as choreographed dance routines presented in a stage performance. 

The court further concluded that it was not arbitrary, capricious, or an error of law for the Tax Appeals Tribunal to have discredited the petitioner's expert witness's opinion that the private performances qualified for the exemption because they were the same as the routines presented on the main stage.  The evidence showed that the witness had neither seen nor had personal knowledge of what occurred in the private areas.  As the court stated:

[S]urely it was not irrational for the Tax Tribunal to conclude that a club presenting performances by women gyrating on a pole to music, however artistic or athletic their practiced moves are, was also not a qualifying performance entitled to exempt status.

The Lawletter Vol 38 No 4

Brett Turner, Senior Attorney, National Legal Research Group

     Data collected by the government have traditionally been presented to the public through official government publications.  As the world moves deeper into the Age of the Internet, however, governments have increasingly stopped printing data reports.  Instead, data reports are often published on an official government website.  This fundamental change poses an evidentiary challenge for parties seeking to rely upon government-collected data.

     A good example from the field of family law is the consumer price index ("CPI"), an index of price data produced monthly by the federal Bureau of Labor Statistics ("BLS").  It is not uncommon for a support provision in a divorce settlement to include a provision increasing the payments periodically, based upon changes in the CPI.  Some states do not allow the court to insert such an escalator clause into its own order, but settlement agreements containing self-modifying support provisions are generally enforceable.  See In re Marriage of Strieby, 255 P.3d 34 (Kan. Ct. App. 2011); West v. West, 891 So. 2d 203 (Miss. 2004); Payne v. Payne, 635 S.W.2d 18 (Mo. 1982).

     When an escalator clause is based upon the CPI, how can the CPI be proven?  This question was presented to the North Carolina Court of Appeals in the unpublished decision of Blackburn v. Bugg, 723 S.E.2d 585, 2012 WL 1332728 (N.C. Ct. App. 2012) (unpublished table disposition).  The plaintiff in that case went to the website of the BLS, http://stats.bls.gov, and simply printed a list of the CPI for different years and months.  The defendant objected that the printout had not been properly authenticated and was in any event inadmissible hearsay.

     The trial court disagreed, and the appellate court affirmed:

[W]e discern no abuse of discretion in the trial court's admission of Plaintiff's CPI evidence.  Plaintiff offered testimony, including the exhibits at issue, to prove the amount of CPI payments owed by Defendant at the time of trial. Defendant offered no evidence of his own CPI calculations, nor evidence to dispute Plaintiff's calculations.  Plaintiff's exhibits consisted of computer printouts—which Plaintiff testified she obtained from a website operated by the United States Department of Labor—and her own handwritten calculations, which she computed using the CPI figures obtained from the government website.  Plaintiff's testimony, in addition to the "UNITED STATES DEPARTMENT OF LABOR BUREAU OF LABOR STATISTICS" heading displayed on the printouts, was sufficient to prove that the computer printouts were what Plaintiff purported them to be.  See N.C. Gen.Stat. § 8C-1, Rule 901 (2011).  Moreover, we note that the CPI information set forth in the computer printouts is public information readily available and subject to judicial notice.  See N.C. Gen.Stat. § 8C-1, Rule 201 (2011).

2012 WL 1332728, at *4.

     To summarize, the computer printout was properly authenticated by the plaintiff's testimony that she had printed the document from an official government website.  The official heading at the top of the document was also evidence that the document was what it claimed to be.

The Lawletter Vol. 38 No. 3

Fred Shackelford, Senior Attorney, National Legal Research Group

In many states, one of the elements of the tort of malicious prosecution is initiating or procuring the institution of a criminal proceeding.  See generally Restatement (Second) of Torts § 653.  This element focuses on whether the alleged tortfeasor had probable cause at the time he or she initiated or procured the criminal action against the plaintiff.  What if probable cause exists initially, but during the course of the criminal prosecution it becomes clear that there is no probable cause to continue the action?  Is there any liability when a party maintains the action thereafter?  In a case of first impression, the Hawaii Supreme Court recently addressed this issue.

In Arquette v. State, 290 P.3d 493 (Haw. 2012), the respondents initiated an action in 2004 against the petitioner (Arquette) and others, alleging that Arquette had participated in a scheme to sell long-term deferred annuities to elderly consumers through unfair or deceptive acts.  The scheme allegedly involved Arquette and an insurance agent, an attorney (Wong), and others, who were accused of using Wong's name and law practice on mailings that offered information about elder law.  Individuals who responded to the mailings were then contacted at their homes, where Arquette and others falsely identified themselves as "paralegals" working for Wong.  After personal and confidential financial information was obtained from the persons who were contacted, Arquette and others allegedly marketed annuities to them without providing them with the information necessary for making an informed decision.  In 2006, the action against Arquette was dismissed without prejudice.

In 2008, Arquette sued the respondents for malicious prosecution and other causes of action, based on both initiation and maintenance of the 2004 action.  The trial court granted summary judgment for the respondents as to the claim for maintaining the 2004 action, and the Hawaii Intermediate Court of Appeals affirmed, ruling that Hawaii does not recognize a tort action for maintaining a prosecution when probable cause to continue no longer exists.

On appeal to the Hawaii Supreme Court, the court noted that such a cause of action has been recognized in Restatement § 674 and in 13 other states.

Explaining the rationale for this cause of action, the court explained:

Although litigation may be warranted in the eyes of the plaintiff at its commencement, if that plaintiff becomes aware that the litigation is no longer justified, then the plaintiff should terminate the litigation.  Indeed, "litigation 'has a profound effect upon the quality of one's life that goes beyond the mere entitlement to counsel fees.'"  [Young v. Allstate Ins. Co., 119 Haw. 403,] 421, 198 P.3d [666,] 684 [(2008)] (quoting Aranson v. Schroeder, 140 N.H. 359, 671 A.2d 1023, 1028 (1995)).

If a plaintiff fails to terminate litigation when he or she knows it would be appropriate to do so, then the same harms are inflicted on the defendant's quality of life that would have been inflicted if the plaintiff knew that the litigation was unjustified in the first instance.  In order to properly guard against the harms associated with protracted litigation, the tort of maintaining malicious prosecution should be recognized.

Id. at 501.

The Lawletter Vol 38 No 3

John Buckley, Senior Attorney, National Legal Research Group

On January 25, 2013, the U.S. Court of Appeals for the District of Columbia Circuit held that President Obama lacked authority under the Constitution to fill three of the National Labor Relations Board's ("NLRB") five seats through "recess appointments" made on January 4, 2012.  Canning v. NLRB, 705 F.3d 490 (D.C. Cir. 2013).  The President attempted to fill the seats after Congress began a new session on January 3 and while that new session continued.  The court's decision emphasized the Constitution's use of the word "the" in the phrase "the Recess" in the Recess Appointments Clause of Article 2.  Under this Clause, the President has the power to make recess appointments only between sessions of CongressCso‑called "intersession appointments," according to the court.  This decision is significant not only for the NLRB, but also for all federal agencies.  

The controversy arose after three seats on the Board came vacant between 2010 and 2012.  President Obama tried to fill all three seats on January 4, 2012, when the Senate had declared it was in session, but the President claimed that Congress was in a recess because the Senate was operating only pro forma sessions every three business days from December 2, 2011 through January 23, 2012. 

The court's ruling resulted from an appeal by the corporate employer Noel Canning, a division of the Noel Corporation, which argued that a quorum of three NLRB members did not exist on the date the Board rendered an order adverse to the employer.  Specifically, the NLRB had ruled that the employer had violated the National Labor Relations Act by failing to reduce to writing and execute a collective bargaining agreement reached with Teamsters Local 760.  A quorum was lacking, according to the employer, because only one member voting for the decision had been confirmed by the Senate; the other two owed their positions on the Board to the challenged recess appointments.

Specifically, the Recess Appointments Clause provides that "[t]he President shall have Power to fill up all Vacancies that may happen during the Recess of the Senate, by granting Commissions which shall expire at the End of their next Session."  U.S. Const. art. II, § 2, cl. 3.  The employer argued that the phrase "the Recess" refers to the intersession recess only.  The Board argued that "the Recess" also includes intrasession recesses, noting that the Eleventh Circuit has interpreted the language in that fashion.  The District of Columbia Circuit agreed with the employer, stating:  "As a matter of cold, unadorned logic, it makes no sense to adopt the Board's proposition that when the Framers said 'the Recess,' what they really meant was 'a recess.'  This is not an insignificant distinction.  In the end, it makes all the difference."  705 F.3d at 500.

Moreover, the court noted that for nearly a century after the Constitution was ratified, no president had ever attempted intrasession recess appointments, and for decades thereafter such appointments were exceedingly rare.