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Interview on Music Publishing Podcast

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:

 

The Question Songwriters Should Ask Obama at SXSW

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.

***

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?”

All About The 100-Page White Paper on Remixes, First Sale and Statutory Damages

Last week, the Commerce Department’s Internet Policy Task Force issued its White Paper on Remixes, First Sale and Statutory Damages, a 100-page report with nearly 600 footnotes, plus appendices. To paraphrase the opening voice over to the recently-canceled TV show, The Soup, I’ve read the report so you don’t have to. And just like the vignettes from the reality shows that were the main staple of The Soup, the White Paper, to paraphrase another long-running show, was mostly a long discussion about nothing – not that there’s anything wrong with that, as we’ll see.

Here’s the top line spoilers: (a) as to remixes, no changes in the current law were recommended but fair use guidelines would be helpful; (b) as to the first sale doctrine, the White Paper concluded that it shouldn’t be extended to digital deliveries; and (c) with respect to statutory damages for copyright infringement, the only recommendations were to amend the statute slightly to include mandatory factors for consideration, increase the applicability of lower damages for innocent infringement, and to allow online bulk users of copyrighted works (e.g., streaming services) to be assessed damages other than on a per-work basis.

The White Paper is the culmination of a the Task Force’s digesting a year’s worth of written comments and round table discussions among various stakeholders, including the usual suspects from the motion picture, recording, music, online media and software industries as well as academics, librarians, attorneys and staff from the Patent & Trademark Office as well as the Copyright Office. However, it appears that not many individual artists were among the participants.

A. Remixes

Remixes are works where a creator incorporates elements or portions of other pre-existing copyrighted works into his new creation. The White Paper broadly defines remixes to include a variety of audio and audio-visual samplings and mash-ups as well as physical and digital collage art. Some examples are user-generated content (UGC) such as fan videos with added audio tracks, fan fiction based on popular characters like those from the Harry Potter books and digital manipulation of photographic images.

The White Paper makes three recommendations regarding remixes:

– The development of negotiated guidelines providing greater clarity as to the application of fair use to remixes
– Expanding the availability of a wider variety of voluntary licensing options
– Increasing educational efforts aimed at broadening an understanding of fair use

Like mom and apple pie, it’s hard to argue against these.

The White Paper discussed various considerations and potential distinctions, including for-profit v. non-profit, amateur v. professional, as well as creating fair use exemptions or compulsory licenses for various uses types of remixes. However, the Task Force points out that whatever lines may be drawn for various distinctions are increasingly blurred. For example, many amateur musicians and filmmakers actively seek to become professionals and non-profit uses may be later monetized in for profit goods and services.

Moreover, certain industries, such as music, have well-established licensing schemes and technologies are evolving to make micro-licensing more feasible. Other stakeholders pointed out that a creator should still have the right to say “no” to uses of her work she finds objectionable, that may constitute hate speech or may devalue or denigrate her work, where fair use is not applicable. And it was the consensus view that fair use would apply to many remixes, such as those that offer political or social commentary.

However, fair use is notoriously difficult to determine. Accordingly, the White Paper proceeds to a discussion of guidelines regarding fair use and remixes, noting the distinction between “single sector” and negotiated guidelines. Single sector guidelines are those prepared by a community of either rights holders or users, such as software developers, librarians, record labels and the like. Single sector guidelines are of limited value if they are not accepted by all stakeholders. For example, if librarians promulgated a set of remix guidelines that the book publishing industry did not agree with or if documentary filmmakers issued guidelines that the music industry found objectionable. Such guidelines have been criticized as merely attempting to legitimize practices that a user group favors.

Negotiated guidelines, where both the rights holder and user communities agree, are more valuable but a consensus is often difficult, if not impossible, to achieve. And some commentators noted that any guidelines could be misconstrued by some users as being statements of the law. However, the White Paper did list several guidelines for the creation of fair use guidelines (meta-guidelines?) for remixes:

– Guidelines should be developed by both the owner and user communities
– To maximize legitimacy, the discussions should be facilitated by a disinterested but knowledgeable body such as a government agency
– Guidelines should be tailored to specific types of remixes
– The goal should not be a comprehensive code of guidelines
– Guidelines should be in plain English for use by non-lawyers
– Guidelines should be periodically reviewed and updated

The White Paper rejected any changes to the current law, such as specific remix exemptions or a compulsory licensing scheme. However, the Task Force did endorse increased development and availability of various voluntary licensing mechanisms, including micro-licensing, collective licensing (as is done with music performing rights) and intermediary licensing, such as YouTube’s providing a licensing scheme for UGC.

B. First Sale and Digital Transmissions

The first sale doctrine, codified in Copyright Act § 109, states that once a copy of a work is lawfully made and obtained, the owner of that copy can dispose of it at will without the copyright owner’s consent. It’s the reason why used book and record stores exist and why I can use a Justin Bieber CD as a coaster, lend it to a friend for target practice or simply toss it in the trash. But as the discussion on remixes would indicate, the first sale doctrine doesn’t apply to the creation of derivative works and, as discussed below, it doesn’t apply to transactions that look like, but aren’t actually, sales.

The doctrine has many benefits, including creating a secondary market for those who want the used copies (particularly if they can’t afford new ones), keeping the cost of new copies down and allowing owners of copies to upgrade to newer formats (e.g., LP to CD and videocassette to DVD) while potentially recouping some of their costs.

However, the first sale doctrine, at least according to one reported decision dealing with a service for selling used MP3 downloads, doesn’t apply in the online arena. One reason is the ability for a user to make unlimited perfect, non-degradable copies at virtually no cost. The other main reason is that when a user clicks “purchase” on a web site and downloads a song, a book or software, there’s no actual sale; rather the user is obtaining a license in accordance with some mind-numbingly long and dense end user license agreement (EULA) that one routinely agrees to but never actually reads.

The online licensing regime has been criticized as limiting the further legitimate distribution that consumers expect, such as transferring copies from one device to another and “lending” copies to family members and libraries have voiced legitimate concerns about the ability to lend ebooks. However, the White Paper noted that the distributors of books, films and music are increasingly incorporating mechanisms to allow digitally downloaded copies to reside on more than one device and are also continuing to work with libraries and other institutions to address their concerns. Moreover, the software industry relies on the license paradigm to be able to have an ongoing relationship with the customer such as providing automatic updates and patches to fix bugs and increase the security of devices against viruses.

The content community also pointed out that physical copies of books, movies and music remain available and the continuing growth of streaming services indicate a change in consumer preferences from ownership to access of works, obviating the need for the first sale doctrine in the digital space. The White Paper also noted the concern that applicability of a digital first sale could hamper the further development of new delivery methods and that current technology does not make a digital first sale feasible. However, the Task Force did recommend additional consumer education as to the applicability and meaning of EULAs regarding their online “purchases.”

There was some concern regarding the gifting of devices, such as laptops that contain files of licensed works, including music and software. As a practical matter, licenses are often tagged to a device rather than a particular individual and content owners would not have much incentive to track and go after subsequent owners of laptops and other devices where no further copies of the files on the devices are being made.

C. Statutory Damages

Copyright Act § 504 provides that a plaintiff can choose to recover either (a) the actual monetary damages sustained and the profits of the infringer, or (b) statutory damages between $750 and $30,000 per work infringed and up to $150,000 per infringement if the defendant’s conduct was “willful,” a term that is not defined in the Act. The main concern with the applicability of assessing statutory damages to online infringements is that, as with statutory damages for real-world infringements, there are no uniform standards and the range is wide. While model jury instructions exist, they are not uniformly used throughout the federal court system. Another concern with the current statutory scheme is the potential for being sued by “copyright trolls” who file many actions with the goal of extracting quick settlements.

The task force rejected any changes to the range of dollar amounts to the statutory scheme, such as a cap on damages. However, it did endorse a small claims forum, which would have expedited procedures and a ceiling on the damages it could award, as was described last year by the Copyright Office in its voluminous Music Licensing Report, which I summarized here. However, the Copyright Office noted that because of constitutional constraints, the small claims forum would have to be voluntary. I believe a voluntary small claims forum would not serve the purpose of allowing individual creators to protect their rights as a wealthy corporate defendant could simply refuse to participate.

The White Paper did note the potential chilling effect that per-work statutory damages could have on the launching of new online services as such awards against services that offer libraries of music, film and other works could be astronomical. Accordingly, it recommends that courts be permitted to assess statutory damages other than on a per work basis for these users. It also noted the extremely limited applicability of the “innocent infringer” provisions as they are inapplicable where the work involved includes a copyright notice. The Task force therefore recommended amending the statute to provide that a copyright notice is a factor to be considered, but not a bar to an innocent infringer defense.

Many commentators suggested that statutory damages must bear some proportion to actual damages. However, this defeats the purpose of statutory damages as actual damages are often nominal or difficult to prove. Imagine if an individual photographer had to sue a corporate defendant where a license for the use of the picture might be $100 or less.  Who would bring a claim for an award of four times the license fee? Deterrence is a necessary and reasonable component of statutory damages.

With these considerations the Task Force recommended that Section 504 be amended to include nine mandatory factors to be considered when determining a statutory damages award. They are:

1. The plaintiff’s revenues lost and the difficulty of proving damages
2. The defendant’s expenses saved, profits reaped, and other benefits from the infringement
3. The need to deter future infringements
4. The defendant’s financial situation
5. The value or nature of the work infringed
6. The circumstances, duration and scope of the infringement, including whether it was commercial in nature.
7. In cases involving infringements of multiple works, whether the total sum of damages, taking into account the number of works infringed and the number of awards made, is commensurate with the overall harm caused by the infringement
8. The defendant’s state of mind, including whether the defendant was a willful or innocent infringer
9. In the case of willful infringement, whether it is appropriate to punish the defendant and if so, the amount of damages that would result in an appropriate punishment.

Of course, the first two factors undercut the very reason for having statutory damages: that actual damages are difficult and costly to prove.

****

The White Paper is a thorough and thoughtful discussion of the issues relating to remixes, the first sale doctrine and statutory damages in the digital environment. Ultimately, its authors concluded that no sweeping changes are needed at this time and recommended only the promulgation of guidelines and a few tweaks to the statutory damages provisions of the Copyright Act.

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

[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.

Did the Joker Write the Ninth Circuit’s Batmobile Decision?

In DC Comics v. Towle, the Ninth Circuit recently upheld the district court’s summary judgment determination that the Batmobile, as it appeared in at least two very different iterations created more than twenty years apart, constitutes a single copyrighted “character.” No joke.

The case involved Towle’s creating and selling Batmobile replicas, specifically the car used in the campy 1960s series starring Adam West as the Caped Crusader and the one used in the 1989 feature film starring Michael Keaton. Both the original vehicles and Towle’s replicas are pictured in the appedices to the Court’s opinion, which I strongly encourage my gentle readers to examine before proceeding further.

The Court commenced its learned discourse by exclaiming, “Holy copyright, Batman!” Following that was a discussion of the copyrightability of characters, citing such precedents as James Bond, Godzilla and Batman himself, all of whom have appeared in various guises over the years. Curiously, nowhere does the Court refer to any particular copyright registration for the Batmobile (or even one for any particular comic book issue depicting it, for that matter) despite summarily rejecting Towle’s argument on that point in a footnote.

The Court distilled its discourse on copyright in a character into a tripartite test:

We read these precedents as establishing a three-part test for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection. First, the character must generally have “physical as well as conceptual qualities.” Second, the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears. Considering the character as it has appeared in different productions, it must display consistent, identifiable character traits and attributes, although the character need not have a consistent appearance. Third, the character must be “especially distinctive” and “contain some unique elements of expression.” It cannot be a stock character such as a magician in standard magician garb. Even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard. (Citations omitted).

Now let’s briefly examine how the Court determined that the Batmobile satisfies this standard. The Court found that the Batmobile has “physical as well as conceptual qualities” in that the car is always “sufficiently delineated” in that it’s “equipped with high-tech gadgets and weaponry used to aid Batman in fighting crime” and that is “almost always bat-like in appearance.” The Court also noted that “[n]o matter its specific physical appearance, the Batmobile is a ‘crime-fighting’ car with sleek and powerful characteristics that allow Batman to maneuver quickly while he fights villains.” The Court further stressed: “Equally important, the Batmobile always contains the most up-to-date weaponry and technology.”

Let’s unpack this for a moment by substituting “Buick” for “Batmobile.” Does anyone really believe the state-of-the art technology in a 1966 Buick even remotely resembles that of a 1989 or 2015 model? And while the Batmobile “almost always” has bat-like features, how much does a 1966 Buick Regal bear any resemblance to its 1989 counterpart other than in its name? Or in copyright speak, assuming there was a registration for the design of the 1966 car, what copyrightable elements (expression) are incorporated into the 1989 version to merit it being considered a derivative work of the prior model? Indeed, do the two cars in question in this case look anything alike other than both being long and black? Moreover, the Court noted that Towle’s replicas did not exactly copy the originals used in the TV show and the film, although he did sell kits and accessories to customize the cars to more closely resemble them.

What the Court is describing sounds more like the “idea” of the Batmobile rather than any particular expression of it. The Court’s justification for copyrightable status seems to fly in the face of idea/expression dichotomy, codified in Section 102(b) of the Copyright Act in that ideas can’t be copyrighted, but only the particular expression of them. And that’s the problem in granting copyright protection to characters, especially those with non-speaking roles.

Plaintiff’s tiff with Towle seems to have been driven by his calling his replicas “Batmobiles” and trading upon that name, including using the domain name, batmobilereplicas.com. That, of course, is the province of the trademark law, not that of copyright, as names, titles and short phrases aren’t copyrightable. DC Comic’s complaint, did, in fact, allege trademark infringement and a cursory review of the PTO’s online database shows no fewer than four live registrations under the “Batmobile” moniker.

But assuming the Joker did not write the opinion, the Ninth Circuit hath now decreed that the Batmobile is a copyrighted character. So as the Riddler would say, riddle me this:

Since the Court did not identify any specific copyright registration, how long does the copyright in the Batmobile last? Assuming we can pin a date on any early version, it would seem that an ancient avatar would eventually fall into the public domain, although original, copyrightable features added to later iterations could not freely be used so long as they remained under copyright — at least following the Sherlock-like logic of Judge Posner’s 2014 opinion in Klinger v Conan Doyle Estate, Ltd. In other words, at some point the 1960s Batmobile will be free for joy rides across the public domain while the 1989 model may not be.

And as I’m assaying the character of the Riddler, I’ll throw one out that my criminal colleague, the Joker, would truly enjoy:

We know from the Supreme Court’s decision in Campbell v. Acuff Rose Music, that parody is a form of fair use. And recent decisions have held that in some circumstances entire characters and scenes as well as entire works of visual art can be copied for fair use purposes, including parody. Since we know that Towle didn’t copy the copyrighted cars completely, what if instead of black, he had painted his replicas pink with purple polka dots and called them Clown Caper Cars instead of Batmobiles? Couldn’t that be construed as a comedic commentary on the serious, macho characteristics of the Caped Crusader and his avenging automobile?

And let’s magnify the mischief by assuming that Towle whispers in his buyer’s ear that she can paint the clown car black once it’s paid for and she drives it off the lot. Wouldn’t that be an application of the first sale doctrine under Section 109(b) in that “the 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.” At least viewed through the lens of the Ninth Circuit’s brand new dancing baby case, a fair use of a work, such as “transforming” it into a protected parody, constitutes a new work that is “lawfully made.” Perhaps a future Special Guest Villain will have better luck if he avails himself of clever legal counsel prior to producing copycat cars.

Finally, if the Batmobile is now a copyrightable character, will Wonder Woman’s bracelets and Thor’s hammer be appearing as characters in cases at a courthouse near you?

Unfortunately, we can’t tune in tomorrow for the solution to these copyright conundrums as they will be riddles for future courts to unravel.

A Happy Birthday to a New Public Domain Song

I originally wrote about Marya v. Warner/Chappell Music, Inc., the “Happy Birthday To You” case, in June 2013 when the case was originally filed in the Central District of California. Last week, Chief Judge George H. King, in a 43-page opinion, granted plaintiffs’ motion for summary judgment in their declaratory judgment action, holding that the song is in the public domain. The suit only concerned the lyrics as the parties agreed that the melody to the song had long ago entered the public domain. The dispute arose when filmmaker, Jennifer Nelson, wanted to use the ditty in a documentary about the song and  Warner/Chappell wanted a $1500 fee to it in her film. Like most of us, she felt the song was in the public domain and the lawsuit ensued.

The case is interesting from an evidentiary point of view because Judge King disallowed the usual presumption of the validity of the 1935 copyright registration for a piano arrangement of the song. The registration referenced new material to an existing work (i.e., a derivative work registration) and the parties agreed that sole author listed for the new material did not write any of the lyrics to the song.

The Court denied plaintiff’s motions on the basis that copyright to the lyrics was either forfeited by a 1922 publication of the song without a copyright notice or was somehow abandoned  by the Hill sisters, who wrote the original version of the song in 1893. However, the Court ruled that the Hill sisters never transferred the copyright in the lyrics to Summy Co., Warner/Chappell’s predecessor-in-interest. Accordingly, the copyright registration relied on by Warner/Chappell covers only the particular piano arrangements of the song and not the underlying lyrics.

I’m reproducing the heart of my 2013 post below, not to show how prescient I was in predicting the outcome, but because I used the case involving the universally known song to review a few basic principles of copyright law. As we’re still near the start of the school year, now is as good a time as any to review them again.

What is the public domain? The public domain is the body of works, music, novels, plays, texts, etc., that is no longer (or never was) protected by copyright and is therefore free for anyone to use or adapt.

When is a song in the public domain? As they say in Facebook status land, “it’s complicated.”  For songs written since 1978, a U.S. copyright lasts for the life of the author (or last surviving author if there’s more than one) plus seventy years. If there’s no author, such as a work-for-hire, the term is 95 years. For older works, the U.S. used to have a system of an initial term and then the copyright had to be renewed for, you guessed it, the “renewal term.” For these older copyrights, the initial term was 28 years and the renewal term, through various extensions, was increased to 67 years, for a total of 95 years.  There’s more to it than this, but basically, if a work was written prior to 1923, it’s most likely in the public domain here. Maybe you’re thinking that’s an awfully long time when the Constitution says that copyrights are supposed to be “for limited times.” Larry Lessig thought so when he challenged the 1998 Sonny Bono Copyright Term Extension Act but the U.S. Supreme Court strongly disagreed.

Do I need to get a license to sing “Happy Birthday to You” to my kid at my backyard barbecue? Even assuming the song is still under copyright – and as we’ll soon see that’s a big assumption – the answer is still “no.” U.S. Copyright law gives copyright owners a certain bundle of rights. Among them is the exclusive right to authorize “public performances.” A backyard barbecue, a birthday party in your basement and most other gatherings among “a normal circle of a family and its social acquaintances” is a private performance for which no permission is needed.

What if I sing the song at a gig or at a party of 500 of my closest friends and acquaintances? You’re probably safe to sing the song – or any other copyrighted song. Most public venues where music is performed (concert and catering halls, clubs and stadiums) or broadcast (TV and radio stations) have licenses from “performing rights organizations” such as ASCAP,BMI and SESAC. These companies issue “blanket” licenses to venues and broadcasters (and web sites, too) which allow the licensee to perform all the works in their respective repertories as much as they want.

Why would a filmmaker need a license? The permission that Warner/Chappell sought from Ms. Nelson for her film is known as a “synchronization” or “synch” license because the user is synchronizing music to picture. Whenever a pre-existing copyrighted song is used in any audio-visual work, such as a film, TV show, TV ad or videogame, a synchronization license is required from the copyright owner, usually a music publisher. If you’re using pre-recorded music, then you need permission from both the music publisher of the song and the copyright owner of the recording, typically a record label.

What if I post a video of my kid dancing to a Justin Bieber song? Putting aside issues of taste, technically, you’d need synch licenses from the music publisher(s) of the song and from The Bieb’s label although the actual performance of the video may be covered if the site has licenses from the performing rights organizations. As a practical matter, unless your home video is generating millions of views or you’re selling truckloads of DVDs it’s unlikely that anyone will come after you for a technical violation [unless it’s a video involving a Prince tune and a dancing baby].

So, is “Happy Birthday to You” in the public domain? That’s for the court to decide, but if the facts are as alleged in the complaint and as cited in the  news reports and elsewhere, it seems that the song would be “PD” as we music types say.  The melody is said to come from a song called “Good Morning to All” written in 1893 and, the combination of music and lyrics is said to have appeared in print in 1912, possibly earlier. By my reckoning, if these are the facts, both 1912 and 1893 are prior to 1923. At least one legal scholar, Robert Brauneis, has written a 68-page article (with 320 footnotes!) in which he concludes that the song is in the public domain.

How can Warner / Chappell claim the song is still under copyright? Again, the facts will play out in the lawsuit, but it seems that W/C has a 1935 copyright registration, crediting different writers as the creators of the song. The complaint alleges that this registration is for a piano /vocal arrangement of the song.  Another of the things in the “bundle of rights” a copyright owner gets is the right to make a “derivative work” of the underlying work, such as an arrangement or adaptation. Turning a novel into a film constitutes making a derivative work, which is why the novelist gets paid when the film is made.

For example, the song “Simple Gifts” is a Shaker hymn from the nineteenth century.  Most people know it from Aaron Copland’s arrangement of the tune in his ballet, “Appalachian Spring.” As the original song is PD, anyone can perform the original melody and lyrics or make their own arrangement. But, if you want to use Mr. Copland’s treatment of the work you’ll need permission from Copland’s publisher, Boosey & Hawkes.  So, if the underlying song, “Happy Birthday to You” turns out to be in the public domain, anyone can use it and make their own arrangement of it, as long as they don’t use any particular copyrighted arrangement of the work, such as ones owned by Warner / Chappell.  And, of course, you can write a new song, with your own melody and lyrics, and call it “Happy Birthday to You” as titles are not copyrightable

It will be interesting to see if Warner/Chappell appeals. If not, all of us, including restaurant employees everywhere, can freely sing the “Happy Birthday” song without fear of facing infringement liability.

No, You Don’t Own Your Arrangement of That Hit Song

[Note: A slightly edited version of this post has been published in Vol.35, No.9 of The Licensing Journal (Wolters Kluwer, October 2015)]

A guitarist contacted me recently. He creates arrangements of popular songs and puts the PDFs of the music for sale on his website. The first thing I asked him is whether he got permission from the copyright owners of the songs to post his arrangements, being pretty sure he hadn’t. He was quite surprised and disappointed when I told him that what he was doing was flat-out illegal. So many well-meaning musicians still either don’t know about, or don’t understand the concept of, derivative works.

Section 101 of the Copyright Act defines a derivative work as follows:

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work”.

Note that “musical arrangement” is right near the top of the laundry list. And of course copyright mavens know that Section 106 sets forth the “bundle of rights” that a copyright owner possesses. These include the exclusive right to, or authorize others to, “prepare derivative works based upon the copyrighted work.”

So that means our guitarist, however well-intentioned, doesn’t “own” his arrangements of pop tunes and he can’t sell or even give away copies of them, whether they’re in the form of a lead sheet, guitar tabs, a fully scored chart or ancient runes – unless he gets permission from the copyright owner (More on that later).

But talking about derivative works and rights bundles of intangible property is kind of esoteric and doesn’t always convince wrongdoers of the error of their ways. So I’ll remind these folks that nobody would give a rodent’s posterior about “your” arrangement but for the fact that the song was written, recorded and made famous by someone else. So when you’re using somebody else’s music and trading off their art and good will, it’s only fair that you get their permission and give them a piece of the action.

But, my guitarist exclaimed, there’re all these other sites out there that do this – what about them? I explained that individual music publishers, as well as organizations like the Music Publishers Association, in conjunction with the National Music Publishers’ Association (yes, I know, it’s kind of like the People’s Front of Judea versus the Judean People’s Front for Life of Brian fans), have sent DMCA take down notices to many unlicensed sheet music, guitar tab and lyric sites. Simply because some infringing sites are still up doesn’t mean they won’t be taken down later or even sued for copyright infringement.

And as I’ll often explain, just because a rights holder doesn’t go after some infringers, it doesn’t mean they can’t go after you. It’s like complaining to the cop who pulls you over for speeding about all the other cars he could’ve pulled over and didn’t.

However, not “owning” an arrangement of a copyrighted musical work isn’t the end of the story. There are actually lots of things you can do without getting permission. For example, you can perform your version for your own amusement – or for that of your friends and relatives. Section 106 grants copyright owners only the exclusive right to public performances. That’s why it’s no infringement to sing in the shower – even if your private performances constitutes an aesthetic infraction. Copyright Act Section 101 defines a public performance as one at “a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.” The definition also includes broadcasts and streaming.

Our gutsy guitarist can even publicly perform his arrangement, provided the venue has licenses from the appropriate performing rights organizations (PROs), ASCAP, BMI and SESAC. PROs license venues to perform the songs in their respective repertoires and artists are free to perform their own renditions of the songs. So if our guitar guy gets a gig at a local club that’s properly licensed he’s good to go. [2017 update: a colleague contacted me regarding reliance upon PRO licenses for orchestral arrangements, as opposed to those performed just by members of a cover or tribute band. Even assuming the public performances are covered (and the ASCAP license has a specific restriction), the creation, copying and distribution of the sheet music to this derivative work to hired musicians would, as discussed below, require permission from the copyright owner, i.e., the music publisher.]

And our guitarist could even make and distribute a recording of his arrangement – provided that he gets a compulsory “mechanical” license under Section 115 of the Copyright Act or the equivalent either directly from the copyright owner(s), usually one or more music publishers, or The Harry Fox Agency (HFA). HFA is a clearinghouse many publishers use to issue mechanical licenses on their behalf. Since the license is compulsory, the copyright owner can’t say “no” so long as the recording artist (i.e., guitar guy), pays the statutory royalties, currently 9.1 cents per unit distributed for a recording of a song that’s five minutes or less.

The Section 115 license specifically allows artists doing cover recordings to record their own arrangements of the work:

A compulsory license includes the privilege of making a musical arrangement of the work to the extent necessary to conform it to the style or manner of interpretation of the performance involved, but the arrangement shall not change the basic melody or fundamental character of the work, and shall not be subject to protection as a derivative work under this title, except with the express consent of the copyright owner.

Minor variations in the melody are generally OK. As for what constitutes a change in the “fundamental character” of the song, that’s not clear except that it’s well established that you can’t change lyrics without permission.

However, the compulsory mechanical license only applies to audio-only recordings like CDs and MP3s. Our gutsy guitarist still couldn’t legally post a video of his performance or use his arrangement of the song in a movie, TV show, video game or other audio-visual work unless he got permission from the owner of the arranged song to do so. That permission is called “synchronization” or “synch” license, since you’re synching sound to picture. YouTube does have synch deals with some, but by no means all, of the music publishers.

But what if our guitarist actually wanted to get permission to print and distribute his arrangement of the song? He would need to contact the music publisher(s) of the work for permission. ASCAP, BMI and SESAC all have searchable databases and if you put in the title of the song you can usually find out who controls the rights to it as well as contact information for the publishers listed.

Armed with that information, our intrepid guitarist should then send a request, including a copy of the arrangement, to the “permissions” or “business affairs” department of the publisher who has the right to say yea or nay and to set the terms for the license to arrange. The process for getting a synch license (or clearing a sample, or reprinting lyrics) is much the same as getting permission to arrange. Find the publisher(s) on the PRO databases, and send a written request to the “business affairs” or “licensing” department explaining what you want to do and how much of the work you intend to use.

So in sum, while there are some things you can’t do without permission (e.g., sell sheet music or post videos), there’s still a lot you can do legally with an arrangement of a song – even though you don’t “own” it.

The Director’s Cut Out of the Copyright by the Second Circuit

In its June 29 opinion in 16 Casa Duse, LLC v. Merkin, the Second Circuit, citing the Ninth Circuit’s en banc decision in Garcia v. Google, held that a director does not have an independent copyrightable interest in a motion picture. In addition to affirming the District Court’s granting of summary judgment in favor of plaintiff producer, the Court’s 40-page decision also affirmed the plaintiff’s award of costs and attorney’s fees.

Plaintiff’s principal, Robert Krakovski, is the producer of a short film called Head’s Up. Krakovski purchased the film rights from the author of the underlying work and asked defendant, Alex Merkin, to direct the film for a fee of $1500.

Krakovski then proceeded to do what producers do: he assembled the film’s crew of about 30 people, including additional producers, cameramen, technicians and actors. He made all final hiring decisions. All personnel except Merkin entered into written work-for-hire agreements which stated that plaintiff would own and control all of the results of their collective efforts, including the worldwide copyrights to the film.

Krakovski clearly intended that Merkin sign a similar work-for-hire agreement while Merkin balked at this by refusing to respond to Krakovski’s emails. Meanwhile, Krakovski moved forward with the production, including scheduling, and scouting locations. Krakovski was still trying to get Merkin to sign an agreement a week before shooting was to commence. Despite the lack of a written agreement, Merkin directed the three days of shooting for the film.

Thereafter, with the main work-for-hire agreement still not signed, Krakovski asked Merkin to edit the film and the parties, sometimes directly and sometimes through Merkin’s lawyer, Reichman, attempted to negotiate a “media agreement,” which would have included the work-for-hire language. Krakovski provided Merkin with a hard drive of a rough cut of the film for Merkin to edit — despite their being no finalized agreement.

Notwithstanding his concession that Krakovski owned the rights to the screenplay, Merkin asserted that he owned the rights to the “rough cut” of the film and that Krakovski could not use Merkin’s work in the final film without his permission. While the dispute continued, Merkin registered a copyright in the “raw footage for the film Head’s Up” without informing Krakovski and listing himself as the sole author.

Krakovski submitted the film to various festivals and scheduled a private screening in New York City, which was to be followed by dinner at a nearby restaurant which he reserved with a non-refundable deposit. However, Merkin  crashed the party with a purported “cease and desist” notice to the screening venue, which made the venue cancel the screening, which, in turn made Krakovski lose his deposit with the restaurant. The lawsuit followed.

Plaintiff sought a judgment declaring: a) that plaintiff did not infringe defendants’ copyright; b) that defendants owned no copyright interest in the film; and (c) that Merkin’s copyright registration was invalid. Plaintiff also asserted state-law claims for tortious interference as well as attorney’s fees under both Section 505 of the Copyright Act and 28 U.S.C. § 1927. Defendants asserted various claims, including a judgment that a director of a film is an “author” for purposes of copyright.

The District Court granted summary judgment to plaintiff on all claims and assessed attorney’s fees against Merkin and sanctions against his attorney, Reichman. After some additional motions and submissions, the District Court entered a final order assessing damages from the canceled screening event in the amount of $1,956.58 and costs and attorney’s fees of $185,579.65, $175,634 of which Merkin and Reichman would have joint and several liability, with the remaining $9,945.65 assessed solely against Reichman. Merkin and Reichman appealed.

The Second Circuit framed this issue as follows:

This case requires us to answer a question of first impression in this Circuit: May a contributor to a creative work whose contributions are inseparable from, and integrated into, the work maintain a copyright interest in his or her contributions alone? We conclude that, at least on the facts of the present case, he or she may not.

Turning to the copyright claims, the Court first stated that the parties agree that they are not “joint authors” under §101 of the Copyright Act as joint authorship requires the intent of the parties to create a merged, unitary whole and such intent was clearly lacking. A finding of joint authorship (which would include one of joint ownership since the copyright would vest in the film’s authors) would preclude any claims of either infringement or tortious interference since you can’t infringe (or interfere with) your own work against your co-owner. The parties also agreed that Merkin’s efforts cannot be deemed a work-for-hire as he never signed a written agreement to that effect as required by statute.

Having disposed of the copyright preliminaries, the Court then turned to the key issue as to whether Merkin’s contributions to the film could be separately copyrightable:

We have never decided whether an individualʹs non‐de minimis creative contributions to a work in which copyright protection subsists, such as a film, fall within the subject matter of copyright, when the contributions are inseparable from the work and the individual is neither the sole nor a joint author of the work and is not a party to a work‐for‐ hire arrangement. We answer that question in the negative on the facts of the present case, finding that the Copyright Actʹs terms, structure, and history support the conclusion that Merkinʹs contributions to the film do not themselves constitute a ʺwork of authorshipʺ amenable to copyright protection. (citation omitted).

The Court bolstered its conclusion by endorsing the Ninth Circuit’s recent en banc decision Garcia v. Google which reversed Judge Kosinski’s opinion holding that an actor may have a separately copyrightable interest in her performance:

We agree. Filmmaking is a collaborative process typically involving artistic contributions from large numbers of people, including—in addition to producers, directors, and screenwriters—actors, designers, cinematographers, camera operators, and a host of skilled technical contributors. If copyright subsisted separately in each of their contributions to the completed film, the copyright in the film itself, which is recognized by statute as a work of authorship, could be undermined by any number of individual claims.

The Court  therefore concluded these contributions are not independent “works of authorship” under the Copyright Act, unlike free-standing, independent original works such as dances or songs that may be incorporated into a film.

Having disposed of Merkin’s claim to copyright in his contribution to the film, the Court then turned to his claim to own the copyright in the raw footage from which the final film was to be fashioned. Since the parties are not “joint authors,” the analysis then turned to which party was the “dominant author” of the film.

The Second Circuit agreed with the District Court that notwithstanding Merkin’s significant contributions (e.g., camera work, lighting, blocking, actor’s delivery of lines, wardrobe, etc.), Casa Duse “exercised far more decision making authority” particularly with respect to its “agreements with outsiders” noting that plaintiff executed all relevant third-party agreements for the production. As dominant author, the Court concluded that plaintiff owns the copyright in the finished film  — as well as the underlying raw footage.

The Court did throw Merkin a bone, finding that he did not engage in tortious interference with business relations under New York law. Finally, the Court upheld the joint and several liability for costs and attorney’s fees against Merkin and Reichman. First the Court noted that even though plaintiff did not file the copyright registration in issue and sought a declaration of non-infringement (as opposed to seeking damages for copyright infringement), attorney’s fees were nonetheless available under §505 of the Copyright Act. And the joint and several liability was appropriate under 28 U.S.C. §1927.

The holdings of both this case and the Ninth Circuit’s Garcia decision that inseparable, integrated contributions to a motion picture are not independently copyrightable will probably have somewhat limited application as actors, directors and other contributors routinely sign work-for-hire agreements.  And the Second Circuit took pains to limit its holding to the particular facts presented. It will be interesting to see how these holdings may be applied to other collaborative efforts, such as creating and recording popular songs, although work-for-hire agreements are commonplace there as well. As for disputes between “collaborators” who are clearly not joint authors, the Second Circuit’s guidance (even absent a specific test) as to who is a “dominant author” and therefore the owner of the copyright in the work, should be helpful.

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

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.

 

 

The Broad Comedy and Broader Parody of Three’s Company

What’s worse than sitting through seven episodes of Three’s Company? Reading a federal district judge’s summaries of them. And yet that CliffsNotes analysis, including delving into the cultural significance of the fluffy sitcom, takes up much of the 56-page opinion recently issued by Loretta Preska, Chief Judge of the Southern District of New York. In Adjmi v. DLT Entertainment, Ltd., the court held that plaintiff’s Off-Broadway play, 3C, is a fair use parody of the entire TV series.

Although styled as a Rule 12(c) motion for judgment on the pleadings, the voluminous exhibits to those pleadings included DVDs of all 9 seasons of the series (owned by DLT) as well as Adjmi’s script to 3C, curiously referred to as the “screenplay” throughout the opinion. Judge Preska is no stranger to parody cases, having written the opinion that was affirmed by the Second Circuit in Liebovitz v. Paramount Pictures, which held that a photo of a seemingly pregnant Leslie Nielson of The Naked Gun fame was a fair use parody of the famous Vanity Fair cover of a nude and pregnant Demi Moore.

For you younger readers, Three’s Company, which aired from 1977-1984, focused on Jack Tripper (John Ritter), who pretends to be gay so he can share an apartment with sensible brunette, Janet Wood (Joyce DeWitt) and ditzy blonde, Chrissy Snow (Suzanne Somers, the current TV twirler and former Mistress of the Thighmaster). Rounding out the cast were the nosy neighbor landlords, Mr. and Mrs. Roper.

The Court began its discussion, stating: “[t]he parties agree that 3C copies the plot, premise, characters, sets and certain scenes from Three’s Company.” The parties also agreed that, as in the TV series, the male lead in 3C is an aspiring chef, the blonde is the daughter of a minister and the brunette is a florist. At least the characters’ names are different in plaintiff’s play, although the Court sometimes mistakenly refers to the names of Three’s Company characters in its discussion of 3C. So, there’s undoubtedly access and an awful lot of substantial similarity, the basic elements of a copyright infringement action.

In ruling on the Rule 12(c) motions (plaintiff’s for declaratory judgment and DLT’s on its counterclaim for infringement), the Court stated that discovery, which had been stayed, would not be necessary. Indeed, the decision reads like one for summary judgment as Judge Preska took pains to point out that her opinion is based not so much on the pleadings themselves but on the “raw materials” of the Three’s Company DVDs and the 3C script.

As with any parody case, the Court’s analysis started with the seminal 1994 Supreme Court case, Campbell v. Acuff Rose, which held that 2 Live Crew’s use of a portion of the Roy Orbison hit, Oh, Pretty Woman in the band’s similarly titled song, Pretty Woman, constituted a fair use parody of the work as it only used so much of the original work as was necessary to comment on it. Following Campbell, the Court here went through a fairly rote review of the four fair use factors of Section 107:

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.

And as in Campbell, the Court focused most on the first factor and whether or not Adjmi’s use of the sitcom’s material was “transformative,” citing Judge Leval’s influential 1990 Harvard Law Review Article. As the Supreme Court stated, a use is transformative when “it adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.”

However, as I’ve written, the Seventh Circuit recently rejected the “transformative” analysis in fair use cases. In that case, Judge Easterbrook noted that any transformative use would constitute a derivative work, the authorization of which is the right of the copyright owner under Section 106(2) and that it’s best to stick with the four statutory factors.

So, how, exactly is 3C a transformative protected parody of Three’s Company? The main distinction is that in 3C, Brad, the male roommate, is really gay. He’s a gay man pretending to be a straight man who’s pretending to be gay. Got that? Moreover, the Court distinguishes 3C from Three’s Company by focusing on the play’s “heavy” tone, which features drug abuse and Mamet-like use of expletives, including gay-bashing slurs:

There is ample evidence to discern the tone of Three’s Company. It can be described as a happy, light-hearted, run-of-the-mill, sometimes almost slapstick situation comedy…. As demonstrated by select quotations…, 3C proceeds in a frenetic, disjointed and sometimes philosophical tone. It is often difficult to follow and unrelentingly vulgar. The same cannot be said of any episode of Three’s Company.

In other words, 3C is as dreary as Three’s Company is cheery. The Court concludes that “[t]he 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.” Fair enough. And having recently failed to sit through a single episode of Three’s Company, even one featuring Loni Anderson, it’s clear to me the show deserves to be parodied.

However, in reaching its conclusion, the Court seems to allow 3C to incorporate far more of Three’s Company than is needed to conjure up the original. In particular, the Court’s view of unprotectable elements like “stock characters” such as a ditzy blonde to include the character’s specific biography — as well as entire scenes lifted from several episodes of the series —  seems unnecessarily broad. The Court also closed with some seemingly “copy-leftist” dicta: “The law is agnostic between creators and infringers, favoring only creativity and the harvest of knowledge.” Say what? The Copyright Act imposes pretty stiff penalties against infringers.

Under this analysis, anything short of pure plagiaristic pilfering of prose would appear to be protected parody so long as the new work somehow “commented” on the prior one. This could have broad implications for other valuable series and their characters, from feature films to fan fiction. Think about applying this standard to the Star Wars franchise, although The Phantom Menace is its own parody.