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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:

 

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.

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.