Five Reasons Why You Should Register Your Works With the Copyright Office

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Note: Please be sure to read to the end for an important update regarding a 2019 Supreme Court decision regarding copyright registrations.

I was recently roped into a Facebook feed by a composer client and asked to opine on whether composers and songwriters (and other creative artists for that matter) should register their works with the U.S. Copyright Office. After all, it was pointed out, that under the current Copyright Act registration with the Copyright Office is not required to obtain a copyright in a work. Under Section 102(a) “[c]opyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed….” So depending upon how you write your music, as soon as you put the pencil down, hit save on your computer or print out the music from your notation program, you have a copyright. Section 408(a) states that registration is permissive rather than mandatory. And registration can be costly as the current fee to register works online is $55.00 and that can add up if you create a lot of new music (or other copyrightable works). So, you may ask, “why should I bother to register?”

After all, as some of the commenting composers pointed out, you can do what is sometimes called a “poor man’s copyright registration” by mailing a copy of your work to yourself so that the postmark would demonstrate when you created the work. And identifying your work as “(c) 2018 Jane Doe, all rights reserved” is always advisable to put people on notice, whether or not you also register with the Copyright Office.   Moreover, copyright registration is not required to register your works with a performing rights organization (PRO) such as ASCAP or BMI. While this is true and it’s essential for songwriters and composers to register their works with a PRO in order to get paid for public performances of their works, there are some very powerful incentives built into the Copyright Act as to why you should also register your works with the Copyright Office.

First, a copyright registration is the best evidence for what you wrote and when you wrote it. The Copyright Office has published a bunch of “circulars” (i.e., pamphlets) online which explain various aspects of copyright law in plain English. As explained in Circular 2 a copyright registration consists of the application, the fee and the “deposit copy,” which is a copy of the work that’s being registered. Under Section 410(c), “[i]n any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” In plain English, the registration provides evidence of what was registered, when it was registered, who created the work and who owns the work as all that information is contained in the application and then put into the registration. And the deposit copy is proof of what was registered.  Your self-mailed copy of your music doesn’t have that evidentiary weight in court and what happens if you have to open the envelope to prove your case? Unless you mail multiple copies to yourself you won’t be able to do that trick again.

Second, copyright registration is a prerequisite to filing a lawsuit. Section 411 states that you can’t file a copyright infringement action unless you’ve registered the work you want to sue over. That’s a pretty powerful incentive to register your works. As a practical matter without a registration you have a right (a copyright) without a remedy. For example, if a client comes to me claiming that somebody ripped off their song the first thing I ask is whether they registered their composition with the Copyright Office. Why? Because if I were to send a demand letter to the allegedly infringing party and they check the Copyright Office records online for a registration (and all copyright registrations since 1978 are available online) and they don’t find one for the work they know that I can’t sue them. This lowers my negotiating leverage. Without the ultimate ability to sue the likelihood of my negotiating a favorable settlement (i.e., making the infringer stop and pay a pile of cash for past infringements) is limited.

Third, certain remedies under the Copyright Act are unavailable unless you register your work prior to the infringement taking place. How do you know when you’re going to be ripped off? You don’t. This is another powerful incentive for folks to voluntarily register that’s built into the statute. As to what goodies you’re giving up if you didn’t register prior to being ripped off, Section 412 states you can’t get “statutory” damages under Section 504(c) and you can’t get the ne’er-do-well to pay your attorney’s fees under Section 505. Statutory damages are those assessed by the Court which can range between $750 and $30,000 per infringement and up to $150,000 if the infringement is deemed to be “willful” (i.e., really, really bad). Statutory damages are available because “actual damages” (losses suffered by the plaintiff and profits made by the defendant) are often difficult — and expensive — to prove. And sometimes actual damages are relatively modest so that without the prospect of statutory damages it isn’t cost-effective to pursue a claim. And copyright infringement actions are very expensive. They can run tens of thousands of dollars if the case is resolved prior to trial and hundreds of thousands of dollars — or more — if the case goes to trial and then is appealed. Having an infringer face the prospect of many thousands of dollars per infringement plus having to pay the plaintiff’s attorney’s fees is a very powerful inducement to pre-litigation settlement.  But don’t just take my word for it, Circular 1, Copyright Basics, has a section on the benefits of registration.

Fourth, registration is easy. For most registrations, particularly if your work is “unpublished” (and when you first complete writing your music, whether it’s just in notation or in recorded form, it’s unpublished), you can complete the application, including uploading digital files of your deposit copies, online. While I wouldn’t generally recommend that individuals try to do a trademark registration on their own, I frequently recommend that individuals do their own copyright registrations as the process is much simpler and involves fewer legalities and technicalities than trademark registrations.

Fifth, it’s cheap. While $55 a pop can add up quickly if you write a lot of songs (or create a lot of other works), in many instances you can register multiple works under a single application. In addition, there are circumstances where, for example, you can register both an underlying musical work and the master recording of that work in a single application.  For general rules regarding the registration of multiple works in a single application, see Circular 34. With respect to registering musical compositions, including questions about the difference between a registration of the music and the registration of the recording, as well as guidelines regarding deposit copies and when you can register multiple songs in a single application, see Circular 50. For information about registering master recordings check out Circular 56 and if you want to know when you can register both the song and the master in the same application, you’ll want to read Circular 56a. Basically, if you want to register multiple musical works in a single application the copyright claimant (owner) has to be the same for all works and the author (or at least one co-author) has to be the same for all works.

However, there is a catch regarding the cost-effective registration of works as a collection. As described in Circular 34, for purposes of statutory damages the collection is treated as a single work. So if a particular person or entity infringed upon more than one work in the collection you can only collect one assessment of statutory damages, not an assessment for each work as would be the case where each work is registered separately.  However, since it’s often the case that only one work in a collection is infringed, the benefits of a collective registration will often outweigh any potential loss of statutory damages. But if you believe that all the songs in your collection will generate a lot of income and get a lot of exposure making them potentially ripe for ripping off (if you’re signed to a major label, for example), then it may be worthwhile to register each work separately.

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Since I originally published this blog post on March 7, 2018, the U.S. Supreme Court issued a decision on when a copyright registration becomes effective for purposes of Section 411(a) of the Copyright Act.  On March 4, 2019, the high court issued its decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. This decision resolved a split among the circuits as to whether a copyright registration becomes effective for purposes of being able to file an infringement action in federal court when the application is submitted to the Copyright Office (as the Fifth and Ninth Circuits had ruled) or when the Copyright Office actually issues a registration (as the Tenth and Eleventh Circuits had held).

Writing for an unanimous Court, Justice Ginsberg wrote that a copyright “registration…has been made”  only at the time the Copyright Office issues a registration – and not merely when the application has been filed under Section 411(a):

Under § 411(a), “registration … has been made,” and a copyright owner may sue for infringement, when the Copyright Office registers a copyright. Section 411(a)’s first sentence provides that no civil infringement action “shall be instituted until preregistration or registration of the copyright claim has been made.” The section’s next sentence sets out an exception to this rule: When the required “deposit, application, and fee … have been delivered to the Copyright Office in proper form and registration has been refused,” the claimant “[may] institute a civil action, if notice thereof … is served on the Register.” Read together, § 411(a)’s opening sentences focus not on the claimant’s act of applying for registration, but on action by the Copyright Office—namely, its registration or refusal to register a copyright claim.If application alone sufficed to “ma[ke]” registration, § 411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous. What utility would that allowance have if a copyright claimant could sue for infringement immediately after applying for registration without awaiting the Register’s decision on her application? Proponents of the application approach urge that § 411(a)’s second sentence serves merely to require a copyright claimant to serve “notice [of an infringement suit] … on the Register.” This reading, however, requires the implausible assumption that Congress gave “registration” different meanings in consecutive, related sentences within a single statutory provision. In § 411(a)’s first sentence, “registration” would mean the claimant’s act of filing an application, while in the section’s second sentence, “registration” would entail the Register’s review of an application. We resist this improbable construction.

139 S.Ct 888-889 (citations omitted). While this approach resolves the circuit split the Court did note that it can take seven months or more from the time an application is submitted to when the Copyright Office issues a registration. Another reason to register as soon as possible to avoid any problems with the Copyright Act’s three-year statute of limitations under Section 507.

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As both this article and the Copyright Office circulars are intended to provide only general guidance, you should consult your local copyright lawyer with any specific questions about registrations.

 

 

Second Circuit Give Summary Victory to Songwriters

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Before getting to the Summary the Summary Order issued by the Second Circuit on December 19, a bit of a review is appropriate. The Second Circuit’s decision has to do with whether the consent decree under which BMI has operated for decades requires it to engage in “100% licensing” (also known as “full work licensing”) as the Justice Department argued or whether BMI (and ASCAP under its very similar consent decree) could engage in “fractional licensing” as both entities – and indeed the entire music industry – has done for decades.  As I’ve previously written extensively about this issue I won’t repeat the background here but I would implore my gentle readers to review my prior blog post, Why DOJ’s Mandate of 100% Licensing of Works by ASCAP and BMI is 100% Lunacy, for an explanation of what 100% and fractional licensing are and why the former, if adopted, would have upended decades of music industry practice and many thousands of individually negotiated contracts.  And to quote again from the U.S. Copyright Office’s  report on the issue:

In sum, an interpretation of the consent decrees that would require 100-percent licensing or removal of a work from the ASCAP or BMI repertoire would appear to be fraught with legal and logistical problems, and might well result in a sharp decrease in repertoire through these PROs’ blanket licenses. It would seemingly punish copyright owners who have chosen to exercise their rights under the Copyright Act to manage their separate interests through the PRO of their choice.

ASCAP and BMI adopted parallel strategies to deal with DOJ’s edict. BMI would seek judicial review in the Southern District of New York before Judge Louis L. Stanton, the judge overseeing the BMI consent decree. ASCAP would lobby Congress for a legislative fix.  As I again had previously written, on September 16, 2016, on what had been scheduled to be a pre-motion conference, Judge Stanton decided to hold an evidentiary hearing on the 100% licensing issue. He then issued a six-page summary opinion rejecting DOJ’s view that the BMI consent decree required works to be licensed on a whole work basis:

The phrase in Art. II (C) of the Consent Decree defining BMI’s repertory as “those compositions, the right of public performance of which [BMI] has… the right to license or sublicense” is descriptive, not prescriptive. The “right of public performance” is left undefined as to score or form, to be determined by processes outside the Consent Decree. The Consent Decree neither bars fractional licensing nor requires full-work licensing.

While BMI – and ASCAP were pleased with this result, DOJ was not. It appealed Judge Stanton’s order to the Second Circuit. Oral arguments on the appeal were held on December 1, 2017. A mere two weeks later, on December 19, 2017, the Second Circuit issued its seven-page Summary Order affirming Judge Stanton’s ruling.  The Court noted:

This appeal begins and ends with the language of the consent decree. It is a “well-established principle that the language of a consent decree must dictate what a party is required to do and what it must refrain from doing.” Perez v. Danbury Hosp., 347 F.3d 419, 424 (2d Cir. 2003); United States v. Armour & Co., 402 U.S. 673, 682 (1971) (“[T]he scope of a consent decree must be discerned within its four corners…”). “[C]ourts must abide by the express terms of a consent decree and may not impose additional requirements or supplementary obligations on the parties even to fulfill the purposes of the decree more effectively.” Perez, 347 F.3d at 424; see also Barcia v. Sitkin, 367 F.3d 87, 106 (2d Cir. 2004) (internal citations omitted) (The district court may not “impose obligations on a party that are not unambiguously mandated by the decree itself.”). Accordingly, since the decree is silent on fractional licensing, BMI may (and perhaps must) offer them unless a clear and unambiguous command of the decree would thereby be violated. See United States v. Int’l Bhd. Of Teamsters, Chauffeurs, Warehousemen & Helpers of Am., AFLCIO, 998 F.2d 1101, 1107 (2d Cir. 1993); see also Armour, 402 U.S. at 681-82.

(Opinion at p. 4).  The Second Circuit also noted that looking beyond the four corners of the consent decree was similarly of no avail:

Extrinsic evidence does not assist the DOJ. The decree was amended in 1994 at a time when fractional licensing was apparently common practice. “If the parties had agreed to such a prohibition, they could have chosen language that would have established the sort of prohibition that the Government now seeks.” Armour, 402 U.S. at 679.

(Opinion at p.5)

Not surprisingly, both BMI and ASCAP were delighted that the Second Circuit dispensed with DOJ’s purported mandate in the same summary manner as did Judge Stanton.  BMI, CEO, Mike O’Neill stated:

This is a massive victory for songwriters, composers, music publishers and the entire industry. We have said from the very beginning that BMI’s consent decree allowed for fractional licensing, and we are incredibly gratified that Judge Stanton and the Second Circuit agreed with our position. We thank all the songwriters, composers, publishers and organizations who supported us throughout this process, which unfortunately, has been a nearly two-year distraction from our original intent which was to update our outdated consent decree and modernize music licensing. We look forward to our continued efforts to protect and grow the value of music.

Similarly, ASCAP’s CEO, Beth Matthews, also applauded the decision:

The Second Circuit’s ruling today is an important victory for music creators across the country. The Court affirms what we have known all along, that the right of public performance allows for the fractional licensing of musical works in our repertories, and the consent decrees do not limit that right. ASCAP and BMI can now continue to offer blanket licenses to our hundreds of thousands of licensees that contain all the shares of works that are in our repertories and the livelihoods of our 650,000 ASCAP songwriter, composer and publisher members can continue to depend on a strong collective licensing system. ASCAP remains committed to making music licensing more efficient, effective and transparent for today’s digital music marketplace.

DOJ could try to seek review in the Supreme Court, a very uphill battle as that tribunal only elects to hear about 80 cases a year. Its only other option would be to seek review of ASCAP’s similarly worded consent decree in the Southern District of New York before Judge Denise Cote, who oversees that consent decree. And even if successful (a dubious proposition given the Second Circuit ruling on the BMI decree) such a ruling would only apply to ASCAP and would then be subject to appeal to the Second Circuit. Perhaps the 100% licensing issue has finally been dealt the death it so richly deserves.

Update: As of March 23, 2018, the deadline to file an appeal of the Second Circuit decision with the U.S. Supreme Court has passed.

Will the Fair Play Fair Pay Act Get a Fair Hearing This Time?

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On March 30, 2017, nearly two years ago to the day that they introduced the Fair Play Fair Pay Act of 2015, Reps. Nadler and Blackburn now re-introduce the bill as the Fair Play Fair Pay Act of 2017. Will this legislation go through or will it just be another “repeat and fade out?” My cursory review of H.R.1836 indicates that it is the same bill as the 2015 version, H.R.1733. Rather than re-inventing the wheel, I am re-posting my piece about the prior iteration of the bill from two years ago.

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On April 13,  H.R. 1733, The Fair Play Fair Pay Act of 2015 (FPFPA) was introduced by a group led by Reps. Jerrold Nadler (D-NY) and Marsha Blackburn (R-TN). This bill would make several amendments to the Copyright Act, the most noteworthy of which would be to provide a public performing right in sound recordings for terrestrial radio broadcasts. Most of the provisions in this bill are things that were previously proposed in others and many mirror recommendations in the Copyright Office’s recent 202-page music licensing report (the Report), which I summarized here.

For example, right before last fall’s government shut down, Rep. Melvin L. Watt (D-NC), introduced H.R. 3219, the Free Market Royalty Act, which, among other things, would’ve created a public performance right in sound recordings when played on AM or FM radio, something supported in the Report. What’s the big deal about a performing right in a sound recording? As many have pointed out, the US is among the less than handful of nations, including China, Iran and North Korea, that doesn’t have one.

So if you’re groovin’ to a recording of Fly Me To The Moon on AM or FM radio as part of the Sinatra centennial celebrations, the composer, Bart Howard, and his music publisher get paid but Ol’ Blue Eyes and his label get bupkis. However, if you listen to that same recording over Sirius/XM or stream it over the Internet, then everybody gets paid.  How’s that? Well, under amendments to the Copyright law in the 1990s, Congress created a performance right for recordings in digital transmissions but not for traditional radio and TV broadcasts.

The radio industry’s long-time rationale for not paying artists and labels is that airplay promoted the sales of recordings. However, in the current environment where the public is quickly moving from owning (e.g., CDs and downloads) to streaming (e.g., satellite radio, YouTube, Pandora), the “promotional” value of radio isn’t what it used to be. The performance itself is now the value proposition. And it kind of seems kind of unfair that labels and artists get paid for some performances but not others where the user experience is often virtually identical. This bill would provide “platform parity.”

So what else is in this bill? It fixes a loophole where some streaming services wouldn’t pay royalties on pre-1972 sound recordings because they’re not protected by federal copyright laws (although a couple of district court decisions recently told them otherwise). Addressing this situation, the Report recommended full copyright protection for pre-1972 recordings. And last year’s RESPECT Act would’ve provided for royalty payments on performances of these older recordings, but without providing full copyright protection. The FPFPA adopts the RESPECT Act approach and likewise provides for royalty payments without granting full copyright protection.

To make it more likely to pass, the bill has some protections for small broadcasters, capping royalties for stations with less than $1 million in annual revenue at $500 per year and at $100 a year for non-commercial stations, including public and college radio. Religious broadcasters, regardless of size, are exempted altogether.

The FPFPA also provides for royalty payments directly to artists even where the service does a direct deal with the labels if a statutory license were otherwise available. And these payments would be in the same proportion that SoundExchange currently pays on licensed services: 45% to the featured artist, 5% to the backing musicians and 50% to the label. This is a major protection for featured and side artists.

Moreover, there are also technical amendments to the rate-setting provisions for certain statutory licenses that attempt to provide a more uniform, market-based standard more evenly. Again, this issue was addressed in the Report and was handled somewhat differently in last year’s proposed Songwriter Equity Act. However, including statutory considerations like whether streaming is a substitute for sales of recordings or may otherwise interfere with or enhance a label’s revenue as well as the relative roles and value of the labels and streaming services could open a pretty big and murky can of worms.

Will this bill pass? Well, the National Association of Broadcasters (NAB) is vehemently opposing it. And the NAB is a pretty powerful lobby that’s long opposed paying royalties for broadcasting recordings. And while the music industry is largely concentrated in New York, Nashville and Los Angeles, every Congressional district has at least one radio station — and candidates need to advertise during elections.

 

 

BMI Rate Court Judge KO’s DOJ on 100% Licensing

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In what had been scheduled to be a mere pre-motion conference, the federal district judge overseeing the BMI Consent Decree, Louis L. Stanton, decided to hold a hearing on Friday, September 16. He then issued a six-page Opinion and Declaratory Judgment, ruling against DOJ’s interpretation of the decree which would have required 100% or “whole work” licensing:

The phrase in Art. II (C) of the Consent Decree defining BMI’s repertory as “those compositions, the right of public performance of which [BMI] has… the right to license or sublicense” is descriptive, not prescriptive. The “right of public performance” is left undefined as to score or form, to be determined by processes outside the Consent Decree. The Consent Decree neither bars fractional licensing nor requires full-work licensing.

Please read my prior post for more background, including a discussion on what is meant by the 100% or whole work licensing sought by the Justice Department as opposed to the fractional licensing regime under which ASCAP, BMI and the rest of the music industry operate.

Both BMI and ASCAP have operated on a fractional licensing basis for all of the 75 years since the consent decrees were entered into, offering licensees for only that percentage of a particular work that each respective performing rights organization (PRO) controls pursuant to its agreements with its member copyright owners and pricing their licenses accordingly. And both PROs declared the Court’s decision to be a major victory for songwriters.

After a brief recitation of the facts, including DOJ’s outlining its position last month and BMI’s seeking a declaratory judgment in support of fractional licensing, Judge Stanton began his discussion by stating: “Nothing in the Consent Decree gives support to the  [Antitrust] Division’s views.” He went on hold that the BMI Consent Decree “does not address the possibilities that BMI might license performances of a composition without sufficient legal right to do so, or under a worthless or invalid copyright, or users might perform a composition licensed by fewer than all of its creators.” The Court supported its conclusion by relying on Section XIV (D) of the Consent Decree, which reads as follows:

Nothing in this Article XIV shall prevent any applicant from attacking the aforesaid [rate court] proceedings or in any other controversy the validity of the copyright of any of the compositions in defendant’s repertory nor shall this Judgment be construed as importing any validity or value to any of said copyrights.

The Court construed this provision to mean that “[q]uestions of the validity, scope and limits of the right to perform compositions” are left, like the redress of copyright infringement, to determinations outside of the application of the Consent Decree. Neither DOJ in its statement, nor the Copyright Office in its memorandum addressing 100% licensing, nor BMI in its application for a declaratory judgment, cited Section XIV (D).

Judge Stanton then distinguished the situation where he had ruled in the Pandora case that the BMI decree forbids the partial withdrawal of rights by publisher members (i.e., where BMI would not be authorized to license performances online services like Pandora, leaving the publishers to license such services directly.  With regard to “partial withdrawal,” the Court, quoting its prior decision in the Pandora case, stated that “[t]he BMI Consent Decree requires that all compositions in the BMI repertory be offered to all applicants” that seek a license.

Judge Stanton’s quick and summary rejection of 100% licensing gives BMI a knockout victory over DOJ. However, this is not the end of the matter. ASCAP is governed by a separate but very similar Consent Decree that is overseen by its own Rate Court judge, Denise Cote, also of the Southern District of New York. Either ASCAP or DOJ could seek a declaration from Judge Cote, who could rule contrary to Judge Stanton. Similarly, DOJ could appeal Judge Stanton’s decision to the Second Circuit, regardless of whether Judge Cote rules on the issue. Moreover, as DOJ’s review of the ASCAP and BMI Consent Decrees encompassed several other issues besides 100% licensing, ASCAP has already started the process of seeking relief from Congress – something even DOJ suggested. BMI beat DOJ in the first battle but the war wages on.

The De Minimus Exception to Infringement is Now in Vogue for Sound Recordings

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On June 2, a divided panel of the Ninth Circuit affirmed the district court’s granting of summary judgment to defendants and vacated an award of attorney’s fees in the case of VMG SalSoul, LLC v. Ciccone. Plaintiff alleged that Madonna’s mega-hit, Vogue, infringed both the copyright in the composition and the copyright in the sound recording of the song, Love Break, recorded several years earlier by defendant, Shep Pettibone, who also worked on the recording of Vogue. Pettibone sampled, altered and incorporated the “horn hit” from Love Break into Vogue.

The “horn hit” consists of two forms, a single and a double hit, and occurs 27 and 23 times, respectively during the course of the 1982 recording of Love Break that is 7:26 in duration. By contrast, the “horn hit” sampled in Madonna’s 1990 recording of Vogue, is sampled solely from the single hit and is pitched a half tone higher than the original “horn hit” in Love Break. There are two versions of Vogue in issue: the “radio edit” that’s 4:53 in duration and contains one “single hit” and three “double hits” and the “compilation version” that’s 5:17 in duration and contains one “single hit” and five “double hits.” The single “horn hit” lasts less than a quarter of a second and the double “horn hit” also clocks in at less than a second in duration. The Court’s opinion includes the musical notation for both versions of the “horn hit” as heard in Love Break and in Vogue.  You can listen to the respective recordings here and here.

The Ninth Circuit had previously established the de minimus exception to copyright infringement for musical works in the 2003 case, Newton v. Diamond, where the court noted that the unauthorized use “must be significant enough to constitute infringement,” and that a plaintiff “must show that the copying was greater than de minimus.” Quoting Newton, the Court stated that a “use is de minimus only if the average audience would not recognize the appropriation.” After analysis, including listening to both recordings, the court held that the appropriation of both the underlying musical work and the master recording of the two versions of the “horn hit” was de minimus.

Addressing the alleged copyright infringement in the sound recording, the Court stated:

After listening to the audio recordings submitted by the parties, we conclude that a reasonable juor could not conclude that an average audience would recognize the appropriation of the horn hit. That common-sense conclusion is borne out by dry analysis. The horn hit is very short – less than a second. The horn hit occurs only a few times in Vogue. Moreover, the horn hits in Vogue do not sound identical to the horn hits from Love Break. As noted above, assuming that the sampling occurred, Pettibone truncated the horn hit, transposed it to a different key, and added other sounds and effects to the horn hit itself. The horn hit then was added to Vogue along with many other instrument tracks.  Even if one grants the dubious proposition that a listener recognized some similarities between the horn hits in the two songs, it is hard to imagine that he or she would conclude that sampling had occurred.

In applying the de minmus exception to sampling of sound recordings, the Ninth Circuit explicitly broke with the Sixth Circuit, the only other circuit to directly address the issue. In the 2005 case, Bridgeport Music v. Dimension Films, the Sixth Circuit adopted a bright-line rule, summarized by the Ninth Circuit as follows: “For copyrighted sound recordings, any unauthorized copying – no matter how trivial – constitutes infringement.”

Plaintiff, however, argued that there was a statutory basis for treating sound recordings differently from other copyrighted works and that the de minimus exception should not apply. The Court looked at Section 102, the list of copyrightable types of works, and found no basis to treat sound recordings differently from other copyrightable works, such as literary works. Similarly, in addressing the “bundle of rights” of Section 106, the Court concluded:

Again, nothing in that provision suggests differential treatment of de minimus copying of sound recordings compared to, say, sculptures. Although subsection (6) deals exclusively with sound recordings, that subsection concerns performances; nothing in its text bears on de minimus copying.

Plaintiff’s main statutory argument apparently was premised on the third sentence of Section 114(b), which reads as follows:

The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording. As the Court pointed out, this section is a limitation on a copyright owner’s rights and states that “sound alike” recordings that do not incorporate a separate master recording (i.e., no sampling) are permissible.

Addressing this provision dealing with sound-alike recordings, the Court stated:

But the quoted passage does not speak to the question that we face: whether Congress intended to eliminate the longstanding de minimus exception for sound recordings in all circumstances even where, as here, the new sound recording as a whole sounds nothing like the original.

The Sixth Circuit’s Bridgeport decision was premised on an interpretation of Section 114(b) that the Ninth Circuit explicitly rejected, knowing that doing so would create a split in the circuits and uncertainty in this area of the law. The Court noted that as a practical matter, the circuit split already exists as district courts outside the Sixth Circuit have almost uniformly declined to follow Bridgeport Music’s bright line rule.  However, the Court did reverse the award of attorney’s fees:  “It plainly is reasonable to bring a claim founded on the only circuit-court precedent to have considered the legal issue, whether or not our circuit ultimately agrees with that precedent.

In dissent, Judge Silverman defended the Bridgeport precedent:

I find Bridgeport’s arguments well-reasoned and persuasive. Equally compelling is, I think, Congress’s Silence in the wake of Bridgeport, especially in light of the fact that the Sixth Circuit explicity invited Congress to clarify or change the law if Bridgeport’s bright-line rule was not what Congress intended. While it’s true that congressional inaction in the face of judicial interpretation is not ironclad evidence of Congressional approval, it’s not chopped liver, either. In this case, Bridgeport has not been hiding out in the woods, waiting to be found; it has been governing the music industry in Nashville and elsewhere for eleven years.

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My own view is that the Ninth Circuit got it right here. There is no reason to treat sound recordings differently from other types of copyrighted works and the de minimus exception should apply where appropriate. Sampling is merely a form of aural collage art and there is no doubt that a court would find the incorporation of small snippets a copyrighted work of visual art such as a painting or photograph in another painting, photograph or sculpture either to constitute fair use or a non-actionable de minimus appropriation. In sum, Madonna has made de minimus usage as in vogue in copyright as she has long done with her clothing.

Interview on Music Publishing Podcast

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Before the Memorial Day holiday, I had the pleasure of being interviewed by my friend and colleague, the composer Dennis Tobenski. Our 90-minute talk, which was posted last week, covered a variety of topics applicable to composers, songwriters and other creators, including copyright principles, fair use, the role of PROs and estate considerations for artists.

Here’s how Dennis summarized our discussion:

In our conversation, we talked about:

  • basic tenets of copyright
  • the limits of what is copyrightable
  • the Poor Man’s Copyright
  • the benefits of and incentives to registering your copyrights
  • fighting infringements
  • folio registrations
  • working with living poets vs. dead poets’ estates
  • Performing Rights Organizations
    • selecting
    • collecting performance royalties
    • what PROs don’t do
  • estate planning for artists
  • international copyright issues
  • why you should get permission <strong>before</strong> setting a text
  • First Sale Doctrine
  • licensing vs. selling
  • copying licenses
  • Fair Use
    • Fair Use is not a right; it is a defense against an infringement accusation*
    • the four factors of fair use
    • transformative use vs. derivative works
    • the false “rules of thumb” of fair use

And here’s the link to our talk:

MPP #4: Copyright and Fair Use with Marc Ostrow

 

The Question Songwriters Should Ask Obama at SXSW

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This Friday, President Obama will be delivering the keynote address at this year’s South by Southwest (SXSW) Interactive Conference in Austin, Texas. Although originally just a music conference, SXSW now has three overlapping sections, Interactive, Film and Music. While it is doubtful that the President will be taking questions from the audience, songwriters and other musicians who may attend the Interactive portion of the should question him about what his Justice Department has proposed to do to them.

For over a year the Justice Department has been undertaking a review of the decades-old consent decrees that govern ASCAP and BMI, neither of which has been amended since the dawn of the digital age. Those of us who represent songwriters and publishers had been cautiously optimistic that the restrictions would be lessened. Indeed, in February 2015, the Copyright Office, in its comprehensive music licensing study and report, Copyright and the Music Marketplace (the “Music Study,” which I summarized and critiqued here), recommended several modifications.

However, last summer DOJ, of its own initiative, threw in a monkey wrench when it asked for comment on the possibility of ASCAP and BMI licensing entire works even where either performing rights organization (PRO) had only been assigned a portion of the copyright to the particular song by its members. This is referred to as “100% licensing.” Traditionally, music publishers and the PROs that represent them only license the percentage of the rights in a particular song that they own, which is referred to as “fractional licensing.”

On January 29, in response to a January 12 request of Rep. Doug Collins (R-GA), the Register of Copyrights, Maria A. Pallante, issued a 29-page report, replete with footnotes, Views of the United States Copyright Office Concerning PRO Licensing of Jointly Owned Works (the Report). The Report addresses the PROs and joint licensing more specifically than was done in last year’s Music Study. On February 4, Rep. Collins forwarded the Report to Attorney General Loretta E. Lynch for consideration by the Antitrust Division, which has oversight over the PRO consent decrees and is conducting the review of them.

In short, the Copyright Office stated in no uncertain terms that DOJ’s proposed 100% licensing scheme is a really bad idea that is based upon a misunderstanding of both the Copyright Act and plain old contract law, as well as long-standing music industry custom. The Copyright Office’s takedown of DOJ’s proposal is impressive. I’ll give you a few highlights below.

The Office believes that an interpretation of the consent decrees that would require these PROs to engage in 100-percent licensing presents a host of legal and policy concerns. Such an approach would seemingly vitiate important principles of copyright law, interfere with creative collaborations among songwriters, negate private contracts, and impermissibly expand the reach of the consent decrees. It could also severely undermine the efficacy of ASCAP and BMI, which today are able to grant blanket licenses covering the vast majority of performances of musical works – a practice that is considered highly efficient by copyright owners and users alike.

And that was just the top of page three! The Report goes on to discuss the divisibility of individual copyright rights and that the default rule is that each joint owner of a work may license the entire work subject to a duty to account to the other owners for their proportionate share of the proceeds. Against that backdrop, the Report states:

While the 1976 Act establishes default rules for joint works, it must be remembered that they are subject to the Act’s express provision that a copyright, and the exclusive rights thereunder, can be divided and separately owned. As a leading treatise explains, the default rules within the Act are merely a” starting point, “ with collaborators… free to alter this statutory allocation of rights and liabilities by contract.”

Addressing industry custom among co-writers of songs, the Report also noted:

The co-authors of jointly created musical works often enter into agreements that define the percentages of copyright ownership of each co-author and provide that each will retain control over his or her “share” of the work. For example, a typical clause might stipulate that each contributor “shall administer and exploit only [his or her] respective ownership share” of the work. The “administration” of the copyright is commonly understood in the music industry to encompass the right to issue licenses and otherwise exploit the song and collect royalties from those uses.

Turning specifically to the interpretation of the ASCAP and BMI Consent Decrees, the Report stated:

Even setting aside the express mandate of the Copyright Act, the decrees – like any contract – must be interpreted in light of the prevailing customs of the industry. Thus, while the consent decrees require ASCAP and BMI to license users to publicly perform their respective “repertoires,” each consent decree describes those repertoires in a manner that can, and should, be read consistently with the practice of fractional licensing.

Again turning to basic contract principles, the Report stated:

The PROs’ practice of fractional representation is consistent with the basic legal precept that one cannot validly convey rights to more than what one owns or controls….. Accordingly, the ability of ASCAP or BMI to license public performances for their respective members’ works is ultimately constrained by the terms of songwriter, publisher and administration agreements entered into by those members, which, as explained above, typically reflect understandings of divided ownership and fractional licensing.

And these choice comments only get us about half way through the Report! It goes on in this vein and addresses the practical concerns that ASCAP and BMI do not have contractual privity with non-members and are not able to account to any non-members for their interests in a 100% licensing regime. Here’s the heart of what I submitted to DOJ last November during the public comment period – about 27 pages shorter than the Report but making many of the same points:

While it is true that absent a written agreement to the contrary, an author of a joint work may license 100% of the rights in that work subject only to a duty to account to that author’s co-writers for their share of the proceeds, that is not how the music industry operates. For decades, songwriters and publishers have routinely entered into, and continue to enter into agreements where each party separately administers that party’s interest – and only that party’s interest — in the particular song.

In the area of synch licensing, music supervisors and other music clearance professionals know that they need to obtain permission from all parties that separately administer a portion of the copyright in the song. Similarly, mechanical licenses are issued on a fractional basis where multiple publishers separately administer their interest in a particular work. ASCAP and BMI likewise administer only their shares in the song and price their licenses accordingly.

ASCAP and BMI operate on a fractional licensing basis because contractually they cannot license greater rights than they are granted by the underlying rights holders, the music publishers. To require ASCAP and BMI to license on a 100% basis not only flouts decades of industry practice but vitiates the myriad agreements voluntarily entered into by songwriters and music publishers . It would also require songwriters and publishers to be involuntarily subjected to the licensing and payment terms of a PRO other than the one the parties chose to represent their interests in the particular works.

At a recent meeting of the AIMP [Association of Independent Music Publishers], we were informed that it in the Justice Department’s view, if the songwriters and publishers either do not – or cannot – agree to 100% licensing, ASCAP and BMI simply will not be able to represent the works where that is the case. If true, that would be a horrendous result, mandating that DSPs and other licensees would have to engage in the grossly inefficient process of directly licensing innumerable works from each individual rights holder. Given the way most popular songs are now written, this would require separate negotiations with multiple rights holders for the performance rights in each and every song rather than two or three PROs for all songs.

In sum, 100% licensing is contrary to longstanding industry practice and countless voluntarily negotiated contracts. It would turn a relatively straightforward and efficient licensing scheme for performance rights into one that is fractured, unwieldy and unworkable.

The Report reaches the same conclusion:

In sum, an interpretation of the consent decrees that would require 100-percent licensing or removal of a work from the ASCAP or BMI repertoire would appear to be fraught with legal and logistical problems, and might well result in a sharp decrease in repertoire through these PROs’ blanket licenses. It would seemingly punish copyright owners who have chosen to exercise their rights under the Copyright Act to manage their separate interests through the PRO of their choice.

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Songwriters are unique among artistic creators in that about 75% of their income is regulated by the federal government. The biggest chunk of income songwriters receive is from public performances licensed by the PROs, of which the two largest, ASCAP and BMI and accounting for about 90% of the market, operate under consent decrees. The second biggest chunk, income songwriters receive from the purchase of recordings (whether in the form of CDs, LPs or downloads), is subject to a compulsory license with rates set by the Copyright Royalty Board. By contrast, recording artists, filmmakers, novelists, dramatists, and other fine and visual artists are under few, if any, federal restrictions on their livelihoods.

There are myriad articles in the popular press about the paltry royalties songwriters receive from streaming services such as Spotify, Pandora and YouTube. Few address the fine points of the PRO consent decrees and other statutory licensing regimes that form the backdrop for these payments. The Copyright Office, in its Music Study, recommended changes to the current music licensing regime that would relax restrictions on songwriters and music publishers and enable them to obtain income that more closely reflects fair market value.

It is somewhat telling that the President will be speaking not at the SXSW Music conference for creators of music, but at the Interactive conference, dominated by companies that use music and benefit from a licensing regime that keeps fees low. So the question songwriters should ask is “when will the government, specifically your Justice Department, stop screwing us?”

Do Candidates Have The Right To Conscript Songs For Political Purposes?

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[Note: This piece was previously posted on NewMusicBox, a site for composers and fans of contemporary classical and other experimental music, on September 24, 2015.]

It’s another presidential election cycle and—in addition to PAC moneymen, countless commercials, polls, trolls, sound bites, and sniping—there’s the new tradition of one candidate or another pissing off some well-known recording artist by using the artist’s song without consent. Already we’ve had Neil Young trashing Trump’s use of “Rockin’ in the Free World.” REM is suing Trump, along with Sen. Cruz, over their use of “It’s the End of the World as We Know It (And I Feel Fine).” “Survivor” is suing over the use of “Eye of The Tiger” during Gov. Huckabee’s rally in support of Kim Davis, the county clerk who was jailed for refusing to issue any marriage licenses since she’d have to issue them to same sex couples. And the election is still more than a year away!

Are the artists’ claims likely to be successful? Readers of my prior posts can probably postulate that my answer will be “it depends.” Let’s see what you can and can’t do when using recordings of songs in connection with political campaigns. While some of the dos and don’ts involve some now-familiar copyright and music licensing principles, others potentially involve the federal trademark statute and various states’ laws on the right of publicity as noted in ASCAP’s FAQs on music in political campaigns.

Who can forget The Donald riding down the escalator to the Neil Young classic to announce his candidacy? That use is probably permissible. If a venue, such as a hotel, convention center, or other public gathering place has licenses from the PROs (ASCAP, BMI, and SESAC), then the use of the music is almost likely allowed and there’s not much the songwriters can do about it. The songwriters probably have a better case against Kim Davis and her cohorts, as the organizers of the impromptu outdoor post-prison rally probably didn’t obtain PRO licenses for the event.

Notice I mentioned songwriters and not recording artists. There has long been a public performance right in musical works and that right is codified in Section 106 of the Copyright Act. However, as I’ve mentioned in other posts, the US is one of less than a handful of nations, including North Korea and Iran, that doesn’t have a public performing right in sound recordings for traditional television and radio broadcasts or for playing the recording over loudspeakers. Although legislation has been introduced in recent years and the Copyright Office endorses such a right, currently the only public performance right in a sound recording is in “digital transmission,” i.e., internet streaming, and Sound Exchange is the U.S. collective that licenses those rights and pays out royalties on behalf of artists and labels.

Readers of my most recent post on fair use would not be surprised that the use of the clips of politicos and other notables on newscasts would be clear examples of fair use under Section 107 of the Copyright Act. Before you even get to the four factors of Section 107, the statute states that items like “criticism, comment, news reporting, teaching, scholarship, or research” are among the uses typically found to be fair. And TV networks and stations have PRO licenses to cover the music use.

Both songwriters and recording artists would have a compelling case under copyright law if a candidate used a song in a commercial without permission. Using pre-recorded music in any audio-visual work requires synch licenses from both the copyright owner of the song (the music publishers) and the copyright owner of the recording of the song (the label). As I explained in my last post, a fair use argument for this kind of usage would almost certainly fail, given that these uses are typically licensed. Nor could a candidate claim that the use of the music is permitted as First Amendment “political” speech. The First Amendment protects the right of individuals (and according to the Supreme Court, corporations) to freedom of expression, especially political speech. It doesn’t generally give you the unfettered right to use someone else’s expression, however.

But consideration of Copyright Act provisions isn’t the end of the inquiry here. Artists may also claim violations of Section 43(a) of the Lanham Act, the federal trademark statute. Although it’s generally applied to false advertising claims, the statute could be used to claim that the association with an artist creates a “likelihood of confusion” based upon a misleading “association… with another person, or as to the origin, sponsorship, or approval of his or her goods, services…” or in other words, a false or misleading endorsement of the candidate. So, regardless of PRO licenses, candidates would be well advised to get permission if they wanted to use anyone’s hit as a theme song.

Moreover, it’s possible that a candidate could violate an artist’s actual trademark, which would constitute a direct violation of the Lanham Act, which—like the Copyright Act—can subject an infringer to money damages and injunctive relief. While it’s not likely that a candidate would use a band’s trademarked logo, names and phrases associated with recording artists and other entertainers often are trademarked. Just see how fast Michael Buffer’s legal eagles will swoop down on you if you use the phrase, “let’s get ready to rumble” in any kind of commercial activity. Many artists, including Madonna, have trademarked their names, and Taylor Swift recently filed a whole bunch of trademark applications for phrases associated with her 1989 album. As any copyright maven knows, titles, names, short phrases, and slogans can’t be copyrighted. But they can be trademarked for all kinds of uses from apparel to greeting cards.

Then there’s the “right of publicity” (sometimes referred to as the right to privacy), which, unlike copyright and trademark, is governed by individual state’s laws. While many states have statutes governing this right, including New York and California, other states enforce these rights based on common law (judicial precedents). The right of publicity typically includes the use of an individual’s name and likeness for commercial purposes. That’s why songwriter, label, management, and other agreements typically have provisions granting the use of the person’s name and approved likeness and bio for a variety of uses. While most composers would hardly object to their music publisher or label using their name and image to promote their works, these rights don’t automatically flow with the copyrights to songs or recordings of them. A candidate’s using a song without permission could constitute a violation of the artist’s publicity/privacy rights.

And there’s another wrinkle to the right of publicity. In some states, like California, a celebrity’s right to exploit his persona extends beyond the grave. In others, like New York, the right terminates when the individual does. So, in addition to wills, trusts, and other documents, if you’re a celebrity, a very important aspect of estate planning is deciding upon your domicile at the time of your eventual demise.

So, what have we learned here? Campaigners, much like cover bands, should be careful about using songs. If you’re paying tribute to a band by simply performing covers of their songs in a venue that’s got PRO licenses, then you’re almost certainly okay. But if you start selling hats, T-shirts, and mugs emblazoned with the band’s logo, a picture of its members, or a well-known phrase from one of their songs, or use the songs to sell products or services, then you’d better be prepared to pay tribute in the form of cold cash as you could run afoul of trademark and publicity laws.

One would think that politicians and their advisors would know this by now. Given that there are artists on every point in the political spectrum, a candidate could simply solicit one sympathetic to their views and avoid all sorts of tsuris. So when it comes to using someone else’s stuff, whether in political campaigns or artistic collages, when in doubt, leave it out. Or as I’ve said before, you might want to seek consent of the rights holder (or the advice of competent counsel) before putting it in.

Are Transformative Fair Use Principles Foul To Musicians?

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[Note: This is part two of a two-part article that was previously posted on NewMusicBox, a site for composers and fans of contemporary classical and other experimental music, on September 17, 2015.]

In my previous post, I sped through the history of fair use from Justice Story to the current statute and strolled through a few examples of the analysis that’s typically used when applying the four factors of Section 107 of the Copyright Act, the statutory test for fair use.

But while courts always construe the statutory factors, the “real” fair use test—at least since the mid-1990s—is nowhere in the statute. Instead, the dispositive inquiry is whether the usage is “transformative.” So, what is “transformative use” and where did it come from?

A) Transformative Use, Music and Parody

The “transformative use” test comes from an influential 1990 Harvard Law Review article by Judge Pierre N. Leval. But since neither articles, books, nor blog posts have any legal effect unless adopted by a court (or legislature), it’s the Supreme Court’s casting of Judge Leval’s concept that defines “transformative use.” In the 1994 case, Campbell v. Acuff-Rose Music, the high court, citing the Leval article in its analysis under the first factor, defined “transformative use” as follows:

The central purpose of this investigation is to see, in Justice Story’s words, whether the new work merely “supersede[s] the objects” of the original creation (“supplanting” the original), or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” (Citations omitted).

If that sounds kind of vague, it is. And while ambiguity is often cultivated in the arts, it’s not so good in a legal standard. And as applied, it sometimes seems like a transformative use of Justice Stewart’s “I know it when I see it” test.

In Campbell, the Supreme Court established that parody can be a form of fair use. The case concerned 2 Live Crew’s use of part of the Roy Orbison hit, “Oh, Pretty Woman,” in their similarly titled song, “Pretty Woman,” despite being denied permission for the usage.  The band used the introductory guitar riff and the first part of the chorus before moving on to new material that was deemed to mock the original tune. The Court found that 2 Live Crew’s use of Orbison song was “transformative” in that it did not merely reproduce and appropriate the original composition.

In reaching this conclusion, the Court established guidelines for determining whether a use would be a “parody” in the legal sense, i.e., one for which permission of the copyright owner of the parodied work would not be required: first, only so much as is necessary to conjure up the original work was to be used; and second, the parody must comment in some way on the original work. In other words, it wouldn’t be a “fair use” parody to write new lyrics to an underlying song that talked about something else. And as the Supreme Court noted, a parody protected by fair use need not be funny or artistically successful.

In other words, one can’t write new lyrics to every line in a Michael Jackson song as an ode to multifarious foodstuffs and expect it to be a protected parody. That’s why Weird Al gets permission for his “parodies” even though he obliquely cites fair use on his website.

These principles were more recently applied in Bourne Co. v. Twentieth Century Fox Film Corp., a 2009 decision from the Southern District of New York (district courts being the federal trial courts) involving the Family Guy episode, “When You Wish Upon a Weinstein.” The show featured a song called “I Need a Jew” that used elements of the Disney classic, “When You Wish Upon a Star.” Defendants, including the show’s auteur, Seth MacFarlane, had sought permission from Bourne but were denied.

MacFarlane had the chutzpah to use it anyway and the court concluded that Peter Griffin’s plaintive pleading was a fair use parody of Jiminy Cricket’s crooning in Pinocchio. Relying on Campbell, the Supremes stated: “[t]he Court finds that the new work is transformative; consequently, the first factor weighs in favor of a finding of fair use.”

B) Transformative Use in Dramatic and Visual Arts Cases

But now let’s look at a 2015 parody case from the same court involving another of the performing arts. In Adjmi v. DLT Entertainment, Ltd, the Southern District held that an Off-Broadway stage play, 3C, was a fair use parody of the iconic seventies sitcom, Three’s Company. There, “[t]he parties agree that 3C copies the plot, premise, characters, sets and certain scenes from Three’s Company.” After applying the four factors, the Court held:

The Play is a highly transformative parody of the television series that, although it appropriates a substantial amount of Three’s Company, is a drastic departure from the original that poses little risk to the market for the original.

Apparently, as long as you’re not mocking music, it seems you can take an awful lot of material, including entire scenes, so long as you’re making some sort of statement about the original.

But most fair use cases don’t involve parodies. Moving to the visual arts, Blanch v. Koons, addresses notorious appropriation artist Jeff Koons’s incorporation of—among other images—a cropped, rotated, and altered portion of a copyrighted photograph of a woman’s legs and feet from a shoe ad into a massive collage painting. The Second Circuit (circuit courts being the federal appeals courts between the district courts and the Supreme Court) held that Koons’s use of the magazine ad photo was transformative in that his change of colors, background, media, and size of the objects had an entirely different purpose and meaning from the original, as Koons’s work was commenting on “the social and aesthetic consequences of mass media.”

In the 2013 case Cariou v. Prince, the Second Circuit moved the dial further towards finding transformative (and therefore fair) use in appropriation art. At issue were 35 of Cariou’s black and white photographic portraits of Jamaican Rastafarians that were published in a book and which Richard Prince incorporated into large-scale artwork that altered the images, including cropping, coloring, and obscuring faces with painted “lozenges.” Some of Cariou’s and Prince’s works were reprinted in the court’s opinion. The Court found fair use with respect to 25 of the photos, reversing the district court’s contention that the “transformative use” had to comment somehow on the original photos as in parody cases:

The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble to the statute.

As to the remaining five Cariou photos, the Court noted that “Prince did little more than paint blue lozenges over the subject’s eyes and mouth, and paste a picture of a guitar over the subject’s body.” What’s striking, however, is that even with respect to these uses, the Second Circuit thought that even they could be deemed to constitute fair use and kicked the case back to the district court to make that determination. As we’ll see, the Cariou court’s expansive view of transformative use has its critics.

The Second Circuit has also ruled that the copying of entire posters, albeit in greatly reduced size, in a 480-page coffee table book about the Grateful Dead was fair game. The images appeared along with timelines and commentary about the band. The Court’s opinion stated that “the first fair use factor weighs in favor of [defendant] because [defendant’s] use of [plaintiff’s] images is transformatively different from the images’ original expressive purpose and [defendant] does not seek to exploit the images’ expressive value for commercial gain.” In reaching this conclusion, the Court cited an earlier case which held a search engine’s use of thumbnail reproductions of images was highly transformative. In case you were wondering, this is why I’m pretty sure my reduced-scale cell phone photo of the Chutzpah game reprinted in last week’s post is likely a transformative fair use.

C) A Fair Use Remix: Applying the Standards From Non-Music Cases to Musical Examples

But as this post is running long and my readers’ patience is no doubt growing short, let’s see what happens when we apply standards from these other cases to a few music hypotheticals:

1. As we know, reproducing an entire visual work, although in greatly reduced size, can be considered a transformative, and ultimately fair, use. Now imagine posting an entire John Adams or John Corigliano score, or even the complete sheet music to a Taylor Swift song – in miniature – without permission.

2. We also know from the Three’s Company case that taking entire scenes from a TV show is now fair game if you’re doing a parody of the underlying work. Now envision using a whole scene from an Adams opera or Sondheim musical or an entire Beatles song in a musical parody.

3. We’ve also learned from the appropriation art cases that taking recognizable portions of copyrighted works and creating a collage or visual remix can be a transformative fair use. Now try claiming fair use when taking twenty seconds of a recording of “Satisfaction” or any other famous song and putting it into a film or sampling several snippets of it in your own recording.

4. As was demonstrated in the Koons and Cariou cases, the recasting—including changing the color and background of a work—can be a transformative use. Now picture “recasting” the setting of an orchestral work by “coloring” it for concert band.

I’m guessing that most of my musician readers are chuckling at these, knowing that it would take chutzpah to claim any of the above to be a “fair use” of the music. Working backwards, we call the fourth example making an “arrangement” for which permission is clearly required. The two uses in the third hypothetical are typical examples requiring synch and sampling licenses, respectively. As for the second hypothetical, we know from the Family Guy decision that the more restrictive standard set out in the 2 Live Crew case two decades earlier still applies to musical parodies. And anyone who posts an entire piece of copyrighted music stands a good chance of being subject to a DMCA takedown notice or worse, as reprints of only a few bars are typically licensed.

Mind you, I’ve only cited a handful of the myriad fair use cases and all of them so far have been from courts in New York City. While federal courts throughout the country hear copyright cases, the New York decisions are particularly influential because of the copyright-based industries centered there, such as publishing, music, theater, advertising, and fashion. And not surprisingly, Judge Leval, the progenitor of transformative use, served as a judge both in the Southern District and on the Second Circuit.

If you’ve read my arrangements post you may be thinking that this whole “transformative use” thing sounds a lot like making a “derivative work,” something the copyright owner has the right to grant or deny approval. You’re not alone and last year at least the Seventh Circuit, in finding fair use in another appropriation art case, agreed:

We’re skeptical of Cariou’s approach, because asking exclusively whether something is “transformative” not only replaces the list in §107 but could also override 17 U.S.C. §106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under §106(2). Cariou and its predecessors in the Second Circuit do not explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2). We think it best to stick with the statutory list, of which the most important usually is the fourth (market effect). [Citations omitted]

[Click here for my more recent and detailed discussion of tranformative fair use versus protected derivative works in light of Judge Leval’s Google Books opinion.]

So why does music seem to have more restrictive standards for fair use than other creative arts? A clue is in the quotes from the cases. With respect to music, there’s a well-established market for these uses, including licensing arrangements, reprints, synchs, and samples, all of which are treated as derivative works. And courts are very reluctant to disrupt the marketplace— even one as dysfunctional as music licensing. This goes back to the first principles of the Copyright Clause, to Justice Story’s fair use test from nearly 175 years ago (“…the degree in which the use may prejudice the sale, or diminish the profits…”) and the fourth factor of Section 107. Ironically, it was the famous Southern District “Thou shalt not steal” case that essentially created the sampling marketplace.

And given the steep decline in mechanical royalties and the paltry payments from streaming, permissions, synch, and sampling uses are among the few areas where musical creators can reasonably be compensated. Do we really want to change this in order to expand fair use? While doing so would greatly enlarge the creative pallet available for new works, it would deny the owners of existing works the fundamental right to say “no” to uses of their works they don’t like and limit the creators of both the underlying and new works to profit from them. Whether or not such a reshaping of the fair use landscape is a good thing or not is a policy debate to be had elsewhere.

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So what does our slog through the thicket of fair use jurisprudence tell us? Clearly, fair use is a continually evolving doctrine and in recent years some courts and commentators have viewed fair use broadly, like a “right” at least as applied to creative works other than musical ones. In fact, in a bit of hot news, on September 14, the Ninth Circuit in California issued a 34-page fair use opinion in the “dancing baby” case, the one where a mom posted a 29-second video on YouTube that showed her toddler dancing to Prince’s song, ”Let’s Go Crazy” and Prince’s publisher, Universal Music, told her to take it down.

The Court held that a copyright owner must consider whether the online usage is protected by fair use prior to sending a takedown notice under the Digital Millennium Copyright Act of 1998 (DMCA). In reaching this decision, the Ninth Circuit confronted the issue of whether a fair use is an “affirmative defense” or a “right” and, at least for purposes of the DMCA, views it more like a right as fair use is “authorized by law.” Of course, any “consideration” of fair use involves application of the detailed analysis discussed above, including the application of “transformative use” under the Section 107 factors and increasingly complicated case law.

So how should one determine if a use is fair or foul? Especially if you’re a musician, you should be guided by the preamble to Section 107 and focus on traditional areas like “criticism, comment, news reporting, teaching, scholarship, or research.” Otherwise, be prepared to seek permission or at least the counsel of an experienced lawyer so that you don’t take a gamble on fair use and make schlimazels of your collaborators, commissioners, publishers, and presenters.

Do You Have The Chutzpah To Take A Gamble On Fair Use?

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[Note: This is part one of a two-part article that was previously posted on NewMusicBox, a site for composers and fans of contemporary classical and other experimental music, on September 10, 2015.]

When I was a kid, my siblings and I played a board game called Chutzpah, which is a lot like Monopoly only the “properties” weren’t things like Boardwalk, Park Place, and Marvin Gardens but Son Marky’s Bar Mitzvah with Velvet Yarmulkes, Weekend in the Catskills, and Yacht Named Gevalt III. And rather than draw cards labeled Community Chest or Chance, you had four options: Schlemiel, Schlemazel, Chutzpah, and Do You Want to Take a Gamble. And instead of getting thrown in jail, you’d miss a turn if you landed on a “tsoris spot”—which is not the same as a tourist spot, I assure you!

For those of you who didn’t grow up in New York or laughing to Jewish comedians, here are brief explanations for these lovely Yiddish words. You’re at a dinner party and the guy next to you spills hot soup in your lap. The spiller is the schlemiel and you, the spillee, are the schlemazel. Tsoris means all manner of troubles, like getting the proverbial boil on your behind. And the concept of chutzpah (blandly translated as “guts” or “nerve” and more colorfully exemplified by variations on the theme of having a brass pair) is best illustrated with this classic example: a young man murders his parents and then pleads for mercy because he’s an orphan.

So, you wanna play? C’mon over to my place and I’ll break out the original 1967 edition. In the meantime, try your hand at the titular test, otherwise known as “Everything You’ve Heard about Fair Use is Probably Wrong.” It’s always a gamble as to whether something is or isn’t a fair use and, in my humble opinion, courts have recently shown a lot of chutzpah in making the determination.

Today’s “spot the fair use” game (not to be confused with “spot the looney”) consists of just two multiple choice questions:

1. How many of the following statements are true?

A) People have fair use rights.
B) There are specific rules on what is and isn’t a fair use.
C) Fair use determinations are governed by a particular provision of the Copyright Act.
D) Every determination of fair use must be made on a case-by-case basis.
E) Fair use is a defense to copyright infringement.

2. Assuming each example involves a use of a work still under copyright, which of the following constitutes fair use?

A) Reprinting or quoting four bars of music
B) Posting a 30-second clip of song or a movie on your web site
C) Putting only one line of a lyric on a T-shirt
D) Creating a painting that incorporates but modifies a pre-existing image
E) All of the above
F) None of the above
G) It depends

As for the first answer, the correct response is C, D and E. The answer to the second question is G. (That’s also the answer you’re most likely to get when you ask a lawyer a question, assuming he doesn’t first respond with two more questions.)

Now, in order to explain these answers, I’ll need to provide a little background with the caveat that, for true copyright mavens, my jaunt into the forest of fair use jurisprudence is kind of like the Classic Comics or Cliff’s Notes version of a copyright casebook.

Fair use was originally an English common law (case law) doctrine that was first incorporated into US law in the 1841 Supreme Court case Folsom v. Marsh. Writing for the Court, Justice Story (yes, that was his name) set forth a multi-factor test to determine fair use: “Look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.” Ever since the current federal Copyright Law became effective in 1978, a restatement of Justice Story’s fair use test has been codified in Section 107 of the statute, which states:

Notwithstanding the provisions of sections 106 and 106A, fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(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 upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

So what do we learn from parsing the previous paragraph? First, fair use is governed by a specific statutory provision. Second, as the Supreme Court made clear in the 1994 case Campbell v. Acuff Rose Music (concerning 2 Live Crew’s parody of the Orbison classic, “Oh, Pretty Woman” and which I’ll be discussing in my next post), a determination of fair use involves the application and weighing of the four statutory factors and therefore “is not to be simplified with bright line rules, for the statute, like the doctrine it recognizes, calls for case by case analysis.” Third, as Judge Easterbrook reminded us in a case from last year, “[f]air use is a statutory defense to infringement.” It’s not a “right,” despite whatever Prof. Lessig and his acolytes may write. So there’s your answer to the first question.

Explaining the answer to the second question involves applying the foregoing factors to each situation, although in the interest of brevity, I won’t apply all four to each example.

A. Reprinting or quoting four bars of music

Let’s look at the third factor first. Which four bars are you using? Is it the main hook in the chorus of your favorite pop song or four measures of the verse? Or for a classical work, would you be using four bars of the iconic brass theme from Fanfare for the Common Man or a few measures from the percussion parts? Not all four measures of a work are of equal importance—especially in songs. Let’s also consider the first factor. Are you reprinting four measures from a Beatles song in a scholarly article on their use of modal harmonies or are you taking the title hook from “She Loves You” and putting it in your own commercially released song (fourth factor as well)? In each example, the first use is more likely to be considered a fair use than the second.

B. Posting a 30-second clip of song or a movie on your web site

Again, considering the third factor, which thirty seconds are you using? It makes a difference whether you’re posting a critical “spoiler” scene from a newly released blockbuster (which also affects the fourth factor) as opposed to a clip from the official trailer which is intended for promotional purposes. Also, are you posting clips because you’re a fan of the band or the film and you’re linking to places where you can legitimately purchase the works or are you using these clips to link either to pirate sites or as a means to get eyeballs on your site to sell your own stuff? This involves consideration of the first and fourth factors.

C. Putting only one line of a lyric on a T-shirt

I’ll bet you can see where this is going: Which line—one from the chorus that includes the song’s title (although titles are not copyrightable) or a line from the middle of the third verse (third factor)? Are you selling these for profit or using them as an inspirational slogan to raise funds for a charity (first and fourth factors)?

D. Creating a painting that incorporates but modifies a pre-existing image

Okay, I’ll bet you’re getting pretty good at this game by now. Are you incorporating the entire image, the main focus of the image, or just something in the background of the image (third factor)? Are you incorporating a black and white photograph and adding color, changing the perspective, or distorting the image (second factor)? Are you selling your painting in a gallery or using it to demonstrate painting techniques to art students (first and fourth factors)?

*
All of the foregoing are examples of the analysis that lawyers and judges use in determining whether an unauthorized use of a copyrighted work constitutes infringement or fair use, and none are definitively permissible. No simple bright-line rules; just an ad hoc analysis fudging the application of four statutory factors.

Now what if I said that everything I just told you is wrong (or at least not entirely right) because the courts had the chutzpah to change the rules of the game? And what if I also told you that fair use is far more narrowly applied to music than to any other art form? Would you still want to take a gamble that your usage of somebody else’s stuff isn’t infringing? Getting it wrong could bring you a lot of tsoris. So tune in next week when I discuss how the application of the concept of “transformative use” sometimes seems like a “parody” of traditional fair use analysis.