Tag Archive for: copyright

Pubs and PROs: Making Sure Your Live Gig is Properly Licensed

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A couple of weeks ago, a friend of mine called to pick my brain about music licensing. She lives in an old town in the Hudson Valley that has a burgeoning music and arts scene. She’s a jazz singer and, possessing an entrepreneurial bent, she produced a series of live jazz concerts at a local restaurant. Given that her day job is in publicity and marketing, it wasn’t surprising the performances were well attended — and well received. Everyone, my friend, the performers, the restaurant owner and the patrons, seemed happy.

Then my friend told me that the restaurant started getting phone calls and letters from the three performing rights organizations (PROs), ASCAP, BMI and SESAC. For the uninitiated, PROs license the right of public performance in copyrighted (i.e., non-public domain) musical works, a right granted under the US Copyright Act. More specifically, they license “non-dramatic” rights, so musicals, operas, ballets and other “dramatic” works aren’t works that the PROs license (although individual songs from such works often are – yes, this can get complicated). PROs license radio and TV stations, web sites, arenas, concert halls, nightclubs and, more to the point, bars, restaurants and other similar establishments where music is performed. While there are certain exemptions for having to pay for using recorded music under very limited circumstances, where a restaurant or bar is playing live music, the PRO piper must be paid.

Now, the three PROs each do the same thing, albeit in slightly different ways and some songwriters will prefer one over the others. Think of them as Ford, Chevy and Dodge. They issue “blanket” licenses to licensees, such as a restaurant or club, which entitles the licensee to play any or all of the songs in that PRO’s repertoire however often it likes, all for a set fee based upon the establishment’s music usage. It’s kind of like buying a ticket to an all-you-can eat buffet. But, the key is no one PRO has a majority of the popular repertoire in any genre, so a venue frequently has to take a license from all three of them. But that’s still way more efficient than trying to get individual licenses from the owners of dozens, if not hundreds, of songs.

As an aside, my friend mentioned that one of the musicians said that he was a member of ASCAP and that therefore he could perform all the music that ASCAP licenses, kind of a gratis blanket license. I said that wasn’t quite correct. The PROs obtain “non-exclusive” rights from their members. So, if a musician is performing his own songs, he can do so freely without the venue having to take a license. But, that doesn’t mean he can license public performances of songs by Jerome Kern, Thelonious Monk, or Bob Dylan, writers, represented by ASCAP, BMI and SESAC, respectively.

As someone who once was a legal beagle at BMI as a card-carrying member of the “copyright police” who would prosecute infringement actions against venues that performed music – and it was always live music we went after and only after numerous attempts to get the owners to take a license– I know that the staffs at the PROs are doing their best to collect the public performance royalties the songwriters are entitled to under federal law so that they can earn a living, pay their bills and continue to write the music we want to hear.

My friend said that even though the owner was happy to have the live music, he didn’t want to pay for the licenses. I suggested that they have a cover charge, a portion of which would go to the owner to pay for the licenses over time, and the rest to the performers. She said that neither she nor the owner wanted to do that as many patrons simply wanted to have a meal and might go elsewhere if there were a music charge. I then suggested that she continue to do what she’s done (as is common in many clubs) that instead of a cover charge, she passes the hat around to the patrons who make voluntary contributions to the musicians but, as with a cover charge, a certain percentage would go to the restaurant off the top to pay for the licenses over time and the rest would go to the musicians.

In fact, I suggested that this could even be a selling point in that she make a short announcement, including a suggested donation amount, stressing that they’re doing the right thing to ensure that not only the performers of the music, but the people who wrote the music, get paid their due. She thought it was a great idea. Unfortunately, the restaurant owner didn’t. So, when I followed up about a week after making my brilliant suggestion, my friend said that she was going to stop being an impresario for the time being.

That made me sad. The PROs want music to be performed. They’re not in the business of saying “no,” but the writers they represent are entitled by law to be paid. So, it’s a major bummer when musicians lose a gig because the owner doesn’t want to pay the freight. But what can my enterprising friend do?

Here’s one possibility: There are lots of venues, bars, clubs, etc. that regularly perform live music and have licenses from the PROs. That’s a sunk cost for them. She might find a venue where they don’t have music at a particular time (e.g., 6pm as most shows don’t start until 9pm) or a night such as a Sunday or Monday when the place is silent. Maybe the atmosphere won’t be ideal, but the owner can maximize the value of the license it’s already paying for (although the fees are somewhat calculated based upon how many nights the venue has live music).

The venue might also see it as an opportunity to experiment with other genres, such as an early set of jazz and standards at a place that typically plays covers of classic rock or country and thereby increase its customer base. Because the PROs want their licensees to get maximum value for their license fees (so that they’ll continue to pay and have music), the General Licensing departments of the PROs could actually be a resource to suggest venues for that kind of situation.

I’m curious to know if any of you have any other suggestions for my friend. And if you’re curious about how and why ASCAP, BMI and SESAC license bars, restaurants and clubs (what they refer to as “General Licensing”), please click here, here and here. And you might also read my post about how the CEOs of the PROs feel about upcoming challenges and opportunities for their business.

Stax of Songs in Competing Claims to Produce a Jukebox Musical

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Some of the most successful recent Broadway shows have been “jukebox” musicals. You know, shows that consist of taking a well-known recording artist’s hits and then staging them with a strung-together story. Think Jersey Boys, Motown: The Musical and Beatiful:The Carole King Musical. Shows like these are popular with producers because of the perceived minimized risk in promoting known musical quantities with a built-in audience.

However, producing such shows are not without risk, particularly when it appears that somebody may have either forgotten or conveniently ignored the distinction between copyright in a sound recording and copyright in the underlying song that’s embodied in the sound recording. I’ve previously written about these two separate copyrights in the synch licensing context:

To use pre-recorded music in an audio-visual work, whether it’s a feature film, TV show, video game or a video on a web site, like YouTube, you need the permission of both the copyright owner of the recording (typically a record label) and the permission of the copyright owner(s) of the underlying song that’s embodied in the recording (typically one or more music publishers).  Why? Because the Copyright Act says so.  The permission that you need is called a “synchronization” license – as you’re synchronizing music to picture – or a synch, for short.

So, for example, if you wanted to put the classic Otis Redding recording of (Sittin’ on the) Dock of the Bay in your next feature film, you’d need to get the permission both from the copyright owner of the song (Irving Music) and the permission of the record label (Stax). However, if you simply want to cover the song (as many artists, such as Sara Bareilles, have done), either live or on a recording, you only need the permission of the publisher, here obtained through BMI for a live gig or through Harry Fox to release a cover record.

This brings us to Evergreen Media Holdings, LLC v. Wood Creek Capital Management, LLC, a lawsuit that was recently filed in federal district court in Connecticut. This action involves competing plans to create a jukebox musical from megahits recorded on the legendary Stax label, such as songs written and recorded by Otis Redding and Isaac Hayes. The plaintiffs allege that they have obtained exclusive rights to create a stage show of songs recorded on Stax from the music publisher, Rondor Music, which controls the copyrights to the songs.

Defendants are alleged to have made a deal for both a live stage show and a film musical with Concord, which apparently owns the rights to many of the master recordings originally released on Stax – but not with Rondor. Defendants issued a press release touting their upcoming project and plaintiffs were naturally none too pleased by this.

Although the right to use copyrighted works are at the core of the dispute, the lawsuit is not a copyright infringement action as no theatrical production has yet been created or produced. Rather, the complaint alleges tortious interference by defendants, violations of the Connecticut Unfair Trade Practices Act and seeks a declaratory judgment that plaintffs have the sole right to create a Stax musical .

Taking the complaint at face value, it appears that with respect to the creation and performance of a live show, plaintiffs have obtained the rights to the songs (but not to any recordings of the songs) while defendants have permission to use the recordings but not the songs embodied in them. The creation of a book musical requires that the producers obtain so called “grand” or dramatic public performing rights to the songs. Such dramatic rights are controlled and licensed directly by the copyright owners of the songs (music publishers) and not through ASCAP, BMI or SESAC, which license only “small” or non-dramatic public performing rights. Small rights licensing by performing rights organizations include performing songs in concert or by way of broadcast or internet transmission. No permission from the record label is needed.

So, it would appear that plaintiffs have a pretty strong case as it looks like they have the necessary rights to put on a show and defendants don’t. However, defendants would not be without their own bargaining chips. Concord may well control the right to use the Stax name and logo and plaintiffs would be hard-pressed to market their musical without reference to the label. It’ll be interesting see if these parties can ultimately reach a harmonious accord.

Raging Bulls, the Supreme Court and Running the Clock on Copyright Infringement

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Yesterday, the U.S. Supreme Court issued its decision in Petrella v. Metro-Goldwyn-Mayer. This case is a copyright infringement action regarding the iconic MGM film, Raging Bull, which garnered Robert De Niro a Best Actor Oscar for his portrayal of boxer Jake LaMotta (but failed to win one for its director, Martin Scorsese). The key issue here in this case is whether the doctrine of “laches” bars a plaintiff from being able to bring a copyright infringement lawsuit. Spoiler alert: by a 6-3 decision, reversing the 9th Circuit, the high court decided that the doctrine did not bar the lawsuit, primarily because such actions are already subject to the Copyright Act’s three-year statute of limitations.

As a subplot, a lot of ink has already been spilled over how the Justices sided with respect to this decision. Justice Ginsburg, a member of the Court’s so-called Liberal wing, wrote the majority opinion and was joined by her Liberal colleagues, Justices Kagan and Sotomayor, as well as Conservatives Scalia, Thomas, Alito. Justice Breyer, who generally sides with the Liberals, wrote the dissent and was joined by Chief Justice Roberts, a Conservative, and Justice Kennedy, who is frequently the swing vote in 5-4 decisions. Unlike cases with particular social implications, such as those involving the free exercise of speech or religion under the First Amendment, decisions involving statutory construction are often decided 9-0, or with splits that don’t adhere to particular ideologies or political party lines.

Getting back to the main story, I’ll spare you the lengthy exposition which features the vesting of renewal rights in pre-1978 copyrights, the distinction between “legal” and equitable” remedies and the merger of law and equity in federal cases with the 1938 adoption of the Federal Rules of Civil Procedure. You can read the 39-page opinion for that.

Here’s what creators, assignees and licensees of copyrighted works, such as screenplays, films and music, need to know. First, for those who may not know, “laches” is the doctrine by which a court will, in extraordinary circumstances, deny plaintiff the right to proceed with a lawsuit where he unreasonably delays in bringing that lawsuit. Second, the Copyright Act’s three-year statute of limitations in section 507(b) might be described as applying on a “rolling basis.”

Generally, the clock begins to run on filing a copyright infringement action from the time the claim, “accrues,” which is usually when the first infringement takes place. For example, if a you’re a songwriter and someone steals your song and puts out a record in June, 2014, you would have three years from that time to file a copyright infringement action or forever hold your peace. Or would you? Let’s assume that the infringing record is a hit and remains in for print for more than 20 years, including re-releases in various new formats. Despite being aware of the infringements all along, you don’t file a lawsuit until 2034, twenty years after the initial release of the infringing recording and after the label has expended a lot of money in producing, distributing, marketing and re-issuing the record.

One might think that the statute of limitations would totally bar such a lawsuit. One would be wrong. You, as plaintiff songwriter, can still sue, but you can only base your claim on infringements that occurred during the prior three years, i.e., 2031-2034. Anything that happened between 2014 and 2031 would be time-barred. With that in mind, let’s look at the relevant facts in the Raging Bull case.

After retiring from the ring, Jake LaMotta collaborated with his friend, Frank Petrella, to tell his story. They wrote several versions, one of which was a 1963 screenplay which was registered with the Copyright Office with Mr. Petrella as sole author. Frank Petrella subsequently died, prior to the commencement of the “renewal” term for you copyright geeks, and the screenplay became the sole property of his daughter, plaintiff, Paula Petrella. Although Paula first had her lawyer contact MGM in 1998 regarding alleged infringement of the screenplay, she didn’t file suit until January, 2009, nearly thirty years after the release of Raging Bull, along with re-releases in VHS, DVD and licenses to cable and satellite TV companies.

Although Ms. Petrella only sought relief for infringements for the prior three years (and therefore anything that happened prior to 2006 was not involved), MGM viewed the lawsuit as the waste product of a raging bull and that laches should bar her complaint. MGM felt it unfair to have to defend a lawsuit that plaintiff could have brought decades earlier when memories fade, witnesses die and documents are lost. The District Court, Court of Appeals and the dissenting Supreme Court Justices agreed.

The majority of the Supreme Court, however, felt that laches was not a bar a lawsuit in light of their being an applicable statute of limitations. A plaintiff has a right to decide whether to pursue and infringement action, and subject to the statute of limitations, when to do so. Moreover, the same evidentiary concerns that MGM raised, also affect plaintiff, who bears the burden of proof. The Supreme Court did point out that the doctrine of “estoppel” could bar a copyright infringement action where the plaintiff engaged in deceptive or misleading conduct regarding the defendants.

So, just because the statute of limitations may have passed regarding first infringements, it doesn’t mean the clock’s run out on later ones. As always, if you think you have an infringement claim that you might want to pursue, you should consult your local copyright lawyer.

Higher Costs for Creators to Protect Their Rights

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It seems like individual creators just can’t catch a break. As of yesterday, it became much more expensive for the majority of creative artists, particularly songwriters, recording artists and multi-media artists, to protect their works by registering them with the U.S. Copyright Office. While one does not need to register to obtain copyright protection, there are a couple of key incentives in the copyright law that make registration strongly advisable. First, registration is a prerequisite to filing a lawsuit for copyright infringement. Second, you can only obtain statutory damages and attorney’s fees if the work was registered prior to the infringement taking place. How do you know when you’ll be infringed? You don’t, hence the incentive to register as copyright lawsuits are very expensive and statutory damages are often preferable to actual damages which may be either too modest to make a lawsuit practical or too difficult to measure.

The Copyright Office published a new schedule of fees that went into effect as of May 1, 2014. A basic online registration still costs $35.00. So far, so good, right? Unfortunately, that $35.00 fee applies only to: “single author, same claimant, one work, not for hire.” What if you’re a songwriter who wants to register a whole bunch of works? Or what if you’re a lyricist who collaborates with a composer? Or what if you create mixed media works or remix works? You used to be able to register most of these for that same $35.00 fee.  Now, unless you are the sole creator and copyright owner of a single work that online registration is now going to run you $55.00. That’s a pretty big jump.

The Copyright Office certainly has the right to raise fees from time to time and these increases are supposedly to account for the cost of providing the various services, such as registrations, recording transfers, searches, etc., that the office provides.  Fair enough, but I wonder if the Copyright Office simply applied these increases across the board. Or, did they consider keeping fees for registrations lower to help individuals and small businesses while more substantially raising other costs that typically apply only to litigants and big businesses, such as those listed under “Optional Services Related to Registration”? Just a thought…

Anyway, it’s now much more costly for creators to protect their rights.

 

 

Synching Up Copyright, Contracts, Amazon and Warner Music Group

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A little over a week ago, I attended through meetup.com, a panel discussion on synchronization licensing. As a refresher, synchronization licensing, or “synch” licensing, is the permission required to incorporate copyrighted music into audio-visual works, such as films TV shows, ads, videogames and, yes, YouTube videos. The panel was put together by Legal Hackers and included computer types, artists (including one who produced a video of a 7-foot clown singing – quite well, I might add, a cover of Lorde’s “Royals”) a music publisher and a copyright lawyer.

If this discussion had occurred a few years ago, I would have expected it to have a copy-left, copyright-is-bad slant. However, in this digital, DIY climate, even the video remix artist on the panel recognized the importance of copyright and was quite knowledgeable about synch licensing. Everyone seemed to agree that artists should be paid, but obtaining synch licenses is a real obstacle because of what economists would call high “transactions costs.”

Proposed solutions included compulsory licenses, as with audio-only “mechanical” licenses” like those issued by The Harry Fox Agency and/or some form of “blanket” license similar to those that ASCAP and BMI provide. The problem is, many artist contracts have approval rights for synchs because unlike a simple cover, putting their music to video, especially if it’s to a product, service or cause they don’t like, can drastically change the meaning of the music. So, there’s no clear solution yet, but it will probably involve technological improvements in song identification and licensing procedures.

Speaking of contracts that make it more difficult for creators to earn income from their works, Amazon is launching a new streaming service to compete with the likes of Spotify, Pandora and YouTube. I was recently asked by a client to advise as to whether he should sign up. Having reviewed the Amazon contract, the executive summary of my advice, in which others concur, is “don’t.” Among other things, Amazon states it can change the royalty rates at any time. That’s bad enough. But the contract also says you can’t take your works out of their service unless you also take your music down from all the other services. That’s even worse.

Amazon is obviously a 900 pound gorilla with very clever lawyers but I think they may be a little too clever here as other lawyers are pointing out that these provisions are perhaps a tad overreaching. But going back to basic economics, moral outrage from the blogosphere won’t make Amazon change its terms. That will only happen if content owners refuse to sign up and Amazon doesn’t have enough music to offer to be able to compete.

And speaking further of contracts, it’s just been reported that Warner Music Group’s labels have entered into a $11.5 million settlement with various artists, including Sister Sledge, relating to payment for distributions of downloads and mastertones (ringtones). This class action lawsuit focused on whether these distributions were “sales” or “licenses” of the artists’ master recordings. In a typical recording contract, sales are typically paid in a 10-15% of the sale price and subject to all forms of deductions and recoupment, depending upon the language of the contract. License fees, on the other hand (such as a synch license for using the song in a film or TV show, for example), are typically split 50-50% between the label and the artist. In older recording contracts, the language may not be clear as to how these newer technologies should be handled. You can guess which side made which argument.

The takeaway: you – or at least your lawyer – should always carefully read any contract.

The Good Wife and the Parody Defense

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Imagine my surprise when I tuned in to yesterday’s episode of The Good Wife, expecting the usual sexual and political intrigue and found myself in the middle of a copyright infringement case that seemed to have elements of the Supreme Court’s  decision in Campbell v. Acuff-Rose Music (the case where the high court held that 2 Live Crew’s use of the Roy Orbison hit, “Oh, Pretty Woman” was a parody of that 1960s classic), Glee and the recent furor over the Goldiblox ad using The Beastie Boys’ song, Girls. What fun!

Although the technicalities of these types of cases were somewhat glossed over for dramatic effect, things like “parody”, “transformative use”, “derivative copyright” and “compulsory license” were bandied about in the middle of the battle between Alicia Florrick’s client and that of her nemesis, former lover and head of her former firm, Will Gardner.

The fictional case involved a duo that had done a “cover” of sorts of a rap tune where they kept the original rap lyrics but wrote a new melody for the song, “transforming” it into a bouncy pop tune. This version was, in turn, “covered” by yet another artist and was broadcast on a fictional Glee-like show.

Now, those of you who’ve read my previous blog posts both on here and on ScoreStreet, are already familiar with these concepts. But, for you fans of The Good Wife who want to know what all the fuss was about as these legal terms went whizzing by, here’s a brief explanation of some of what was going on in the case where one party was portrayed by F. Murray Abraham (who won an Oscar for his role as the composer, Salieri, in the film, Amadeus), and where the judge was Dominic Chianese, Uncle Junior of The Sopranos  fame and someone who released a recording of Italian songs. Kudos to the casting department for the inside jokes!

The manager for the budding pop duo spoke about getting a “compulsory” license. This, is in fact,  known in the music biz as a “mechanical” license. Typically, a record label (on behalf of its recording artist) obtains this license from the copyright owner of the song to be “covered,” which is usually a music publisher. It is a compulsory license under Section 115 of the Copyright Act in that once a song has been commercially recorded and released, any artist can “cover” that song and the copyright owner  must grant permission (hence, the “compulsory” license), provided that the artist (or more likely, their label) pays the “statutory” rate, which is currently 9.1 cents unit distributed for a song that is 5 minutes or less in duration. So, if an artist sells 100,000 downloads of a song that’s less than 5 minutes long, the record label owes the publisher $9,100.00.

Compulsory mechanical licenses only give the artist rights to make an audio-only recording. And while an artist under the mechanical license can arrange the covered song to his own style, he can’t make fundamental changes such as material alterations to the song’s lyrics. The right to make other uses of the song requires additional rights – as was noted during the show. This is where this “derivative copyright” stuff comes in.

A copyright owner has a “bundle of rights” including the right to make and distribute copies and to create – or authorize others to create – “derivative works.” What’s a derivative work? You can look it up in Section 101 of the Copyright Act, but arrangements, translations, adaptations and the like are derivative works. For example, making a film from a novel is creating a derivative work of that novel. So is making a video of a song or doing a new arrangement of a song, such as keeping the lyrics but writing an entirely new melody to them, as was done in The Good Wife. Such derivative uses are often viewed as being “transformative,” in that the new work has recast and re-purposed the original work.

Most derivative uses of a copyrighted work need to be authorized or licensed by the copyright owner of the underlying work. For example, if a producer wants to use a hit song in an upcoming TV show, they need to get a “synchronization” license from the copyright owner of the song (typically, a music publisher) and permission from the copyright owner of the recording of that song (typically, the artist’s label).

However, there is an exception under the doctrine of “fair use” for a “parody” of a work. An artist may use another’s copyrighted work without permission if the new work  is commenting in some manner on the underlying original, as was held to be the case with 2 Live Crew and “Oh, Pretty Woman.”  Such a “parody”  is said to be a “transformative” use of the work, and under certain circumstances, no permission would be required and the use, even without permission, would not constitute copyright infringement.

But there’s a catch:  what was not made clear in last night’s episode, probably for dramatic purposes, is that in order to have a fair use “parody” of the work, one can only use so much of the underlying work as to “conjure” the original. One cannot simply take the entire underlying work and use it wholesale, such as taking an entire lyric and writing a new tune to it. In the “Oh, Pretty Woman” case, 2 Live Crew only used a portion of the original song and the rest was original material, thereby creating a “transformative” use of the Orbison hit. Got that?

Who knew that copyright and music licensing could be so dramatic!

A Small Claims Court for Copyright Claims?

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Although the shutdown of the federal government has justifiably grabbed most of the headlines, and despite this week [October 3] being labeled “Hell Week” for classical music, something potentially good for composers, self-produced recording artists, visual artists and other artistic creators was announced: On September 30, just before the government shut-down, the Copyright Office released a 155-page report – plus appendices – outlining recommendations for the equivalent of a voluntary small claims court for copyright claims, primarily infringement.

The full report is available here. The majority of the report deals with legal niceties such as constitutional authority for a copyright small claims tribunal, subject matter and personal jurisdiction issues, analogues to other specialized tribunals and the scope of clams this copyright tribunal would handle.

However, the Copyright Office summarized its recommendations as follows:

  • Congress should create a centralized tribunal within the Copyright Office, which would administer proceedings through online and teleconferencing facilities without the requirement of personal appearances. The tribunal would be staffed by three adjudicators, two of whom would have significant experience in copyright law – together having represented or presided over the interests of both owners and users of copyrighted works – with the third having a background in alternative dispute resolution.
  • The tribunal would be a voluntary alternative to federal court. Its focus would be on small infringement cases valued at no more than $30,000 in damages. Copyright owners would be required to have registered their works or filed an application before bringing an action. They would be eligible to recover either actual or statutory damages up to the $30,000 cap, but statutory damages would be limited to $15,000 per work (or $7,500 for a work not registered by the normally applicable deadline for statutory damages).
  • Claimants who initiated a proceeding would provide notice of the claim to responding parties, who would need to agree to the process, either through an opt-out mechanism or by affirmative written consent. Respondents would be permitted to assert all relevant defenses, including fair use, as well as limited counterclaims arising from the infringing conduct at issue. Certain DMCA-related matters relating to takedown notices, including claims of misrepresentation, could also be considered, and parties threatened with an infringement action could seek a declaration of noninfringement.
  • Parties would provide written submissions and hearings would be conducted through telecommunications facilities. Proceedings would be streamlined, with limited discovery and no formal motion practice. A responding party’s agreement to cease infringing activity could be considered by the tribunal and reflected in its determination. The tribunal would retain the discretion to dismiss without prejudice any claim that it did not believe could fairly be adjudicated through the small claims process.
  • Determinations of the small claims tribunal would be binding only with respect to the parties and claims at issue and would have no precedential effect. They would be subject to limited administrative review for error and could be challenged in federal district court for fraud, misconduct, or other improprieties. Final determinations could be filed in federal court, if necessary, to ensure their enforceability.

Addressing the extremely burdensome time and expense for creators to pursue a copyright claim is a good thing and this report is definitely a step in the right direction. For example, the report states that for a copyright case that’s worth less than $1 million, it typically costs over $350,000 to litigate it and around $200,000 of that is spent on “discovery”, i.e., document requests, depositions and interrogatories. Most artists, including composers, don’t have the resources to pursue a copyright infringement claim – or defend one — unless they qualify for representation by VLA or a similar organization.

Wearing my various hats as creator, copyright lawyer and administrator of other’s creative works, I do have some concerns about the report’s recommendations. For example, centralizing the small claims tribunal within the copyright office, even with most matters handled by written submissions and video-conferencing seems impractical. While there is reluctance among the federal judiciary (and copyright claims are exclusive to the federal courts) to create specialized tribunals, it would make more sense, both for the convenience of the parties and to distribute the administrative burden, to have these streamlined procedures available in each federal district.

Alternatively, one might consider the approach for the “circuit rate court proceeding” under Section 513 of the Copyright Act to have the small claims tribunal available in the district court that is the “seat” of each of the 12 Circuit Courts of Appeals (e.g., New York, Chicago, Denver, San Francisco). This did not seem to be addressed in the Copyright Office report.

Another concern is that with a voluntary proceeding, a well-funded party, such as a major corporation, may simply opt out of these proceedings and force a plaintiff to spend resources he or she doesn’t have. On the other hand, there should also be provisions to ensure that frivolous claims are swiftly dismissed and that creators don’t use these procedures to attempt to try to get a windfall in unwarranted copyright damages where the “notice and takedown” procedures under the DMCA would be sufficient.

The recommendation for some form of small claims proceeding is a welcome one, albeit one that should be subject to further refinements. However, given the current Congressional climate, it’s also unlikely to be acted upon anytime soon.

This article was originally published on the ScoreStreet Web Site on October 3, 2013.

Happy Birthday, You’re Sued!

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The mere filing of a copyright case doesn’t usually make a major splash in the media but when it involves the most performed song in the world, even The New York Times takes notice.  Apparently, filmmaker, Jennifer Nelson, was making a documentary about the song, “Happy Birthday to You” and didn’t like the idea that Warner/Chappell Music insisted on her taking a $1500 license to use the song in the film as she – and probably most people – think it’s in the public domain.  So yesterday, Ms. Nelson filed a birthday suit of sorts: an action in federal court seeking a declaratory judgment that the song is, in fact, in the public domain and no permission is needed to use it.

So, in little more than the time it takes to sing the song, I’m going to use it as a way to review a few basic copyright law principles that are sometimes misunderstood. Let the questions begin!

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.

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, Richard 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.

Wanna Buy a Used Download?

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While not nearly as exciting as the same sex marriage cases, it’s always noteworthy (at least to people like me) when the Supreme Court issues a decision about copyright. A recent high court case and an even newer one from the district court highlight some real differences between the physical and digital worlds for producers and consumers of copyrighted stuff. On March 19, the Supreme Court issued its opinion in  Kirtsaeng v. John Wiley & Sons (No. 11-697). This case involves a conflict between two provisions of the Copyright Act, the “first sale” doctrine” under Section 109(a) and the “importation” provision of Section 602(a)(1).

The “first sale” doctrine is what enables so much commerce at garage sales and  flea markets and the very existence of used book and record stores. In short, it says that once a copy of a copyrighted work, such as a book or CD, has been lawfully sold (or given away), the purchaser (or other lawful recipient) is free to dispose of that particular copy as he wishes. The copyright owner of the work no longer has a say in the matter. More on the “first sale” doctrine later.

The importation provision states that bringing a copyrighted work into the US without permission of the copyright owner violates that owner’s right to distribute copies of the particular work.  It’s easier to understand in the context of the Kirtsaeng case. Wiley is a publisher of text books. It’s common for a publisher to print different editions of texts in various geographic markets and at different prices. Often, these editions are printed overseas or licensed to an overseas publisher, printer and/or distributor.

Kirtsaeng was a graduate student who figured out that certain English-language texts published by Wiley for the Asian market were significantly cheaper than their domestic counterparts. So, he was able to finance his education by buying up foreign editions and selling them stateside for less than the US editions while still making a tidy profit. That is, until Wiley sued him for copyright infringement. Cutting to the chase of the typically lengthy and arcane Supreme Court opinion, complete with a dissent and concurrence, the Court concluded that despite the provisions of the import clause, the first sale doctrine applies to works lawfully made overseas.

Unless one is selling lots of stuff overseas or is setting out to be a text book arbitrageur, the Kirtsaeng decision is not likely to have an immediate impact on your life. However, another decision involving the “first sale” doctrine, Capitol Records, LLC v. ReDigi, Inc., (No. 12 Civ. 95 (RJS)), may have a more direct impact on music lovers. In this March 30 decision from the Southern District of New York, the court essentially held that digital really is different.

Let me explain. ReDigi is a recently launched service that claimed to allow people to sell their “used” downloads of music. A user would download the company’s software, which would go through their computer’s hard drive and locate eligible files, e.g., downloads lawfully purchased through iTunes and not ripped from a physical CD. The files would be uploaded to ReDigi’s cloud server so that customers could purchase the “used” recording at a discount. ReDigi would take a cut of the sale as its commission fee.

Capitol sued, claiming copyright infringement and other unpleasantness and ReDigi replied that it was lawfully facilitating a digitized record swap. In other words, since the downloads were lawfully purchased, the “first sale” doctrine applies, just like reselling physical copies of recordings at a garage sale. Without going into all the technicalities (and the techno-geeks among you should do so as the opinion contains a digestible discussion of the first sale, direct, contributory and vicarious infringement and fair use), the Court concluded that despite ReDigi’s claims, additional copies of the music were being made and distributed – even if the “seller” of the “used” file no longer had access to it. If the music is transferred first to the cloud, that’s one copy and if someone purchases and downloads the “used’ music file, that’s another copy. The “first sale” doctrine only applies to that particular copy; it doesn’t allow you to make and distribute more. Then, there’s the concern that ReDigi will only search the particular machine on which the software has been downloaded. Other copies of the “used” file could easily be saved on other devices.

ReDigi claimed that the Court’s analysis is a hypertechnical view of the law that prevents the first sale doctrine from operating in the digital world. The Court, however, was not convinced and cited examples of handing over your hard drive or your iPod if you want to legitimately resell your particular copy of a digital file. Because of the distribution of unauthorized copies of copyrighted works as part of its service, the Court found ReDigi guilty of direct, contributory and vicarious copyright infringement.  The Court concluded that whether these incidental copies and distributions should matter is a policy matter for the legislature – current copyright law is clear.

What does it all mean? You can bet there will be much lobbying of Congress as to whether and how the “first sale doctrine” should apply in the multinational and digital environments. But as for now, I wouldn’t advise opening a used download store.

On Presidents, Copyright and a King

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As we all know, today was the ceremonial inauguration of Barack Obama for his second term as President (although the official one was yesterday). Many have pointed out how fitting that the inaugural of our first African American President would occur on the day honoring Martin Luther King, Jr.   But while Mr. Obama took the oath of office on one of Dr. King’s personal bibles and alluded to his ideals, the President did not choose to quote Dr. King as he did the Declaration of Independence.

And what if someone wanted to make an artistic statement quoting speeches by President Obama or Dr. King? Anyone who may be inspired to incorporate any of President Obama’s speech it into a musical or other creative work should not have any difficulty doing so. Section 105 of the Copyright Act states  “[c]opyright protection under this title is not available for any work of the United States Government.” Section 101 defines a “work of the United States Government” as “ a work prepared by an officer or employee of the United States Government as part of that person’s official duties.”  Certainly, the President is an officer of the United States Government. And while the  Constitution doesn’t require the President to deliver an inaugural address (unlike the State of the Union address), every President since Washington has done so.

However, many would be surprised that Dr. King’s very publicly delivered “I Have a Dream” speech is protected by copyright and has been registered in the U.S. Copyright Office. And while Dr. King, like President Obama, was a public figure who delivered many noteworthy speeches, he was not a government officer or employee. As with every other private citizen, Dr. King (or his estate) was entitled to obtain copyright protection for the fruits of his creative labors.

Now, I’m not suggesting that the President chose not to quote Dr. King because of copyright considerations.  A small quotation, along the lines of what Mr. Obama used from the Declaration of Independence would undoubtedly have constituted fair use.  But it would be a different matter altogether if someone wanted to incorporate Dr. King’s speech in musical composition or other artistic work.

And while quoting from most government documents probably won’t make for great artistic achievement (although John Adams did try with “Doctor Atomic”), some Presidential utterances are worth remembering.   So, feel free to liberally quote President Obama’s inaugural address – or those of Presidents Reagan or either Bush if you’re so politically inclined (although you may still need to get permission for any audio or video recordings of them), but be careful  when dealing with the public speeches of private citizens.  If you want to use portions of the “I Have a Dream” speech or any of Dr. King’s other well-known (and copyrighted) works, in your own creative endeavors you will probably need to obtain permission – a topic I’ve previously written about.