Recent Developments & Case Law
U.S. SUPREME COURT DENIES CERTIORARI (REVIEW/RECONSIDERATION) OF JACK DANIEL’S AND “THE MOODSTERS” CASES
https://www.jdsupra.com/legalnews/supreme-court-update-scotus-denies-1631733/
INTRODUCTION:
Last month, the U.S. Supreme Court denied review of two highly-observed IP cases on petition from the 9th Circuit Court of Appeals – Jack Daniel’s Properties, Inc. v. VIP Products, LLC and The Moodsters Company v. Walt Disney Company.
BACKGROUND of Jack Daniel’s Properties, Inc. v. VIP Products, LLC:
Jack Daniel’s Properties involved a dog toy made by VIP Products, named the “Bad Spaniels Silly Squeaker, and which was modeled after the Jack Daniel’s Old. No. 7 bottle. A district court rejected the argument that because the toy was an expressive work entitled to First Amendment protection under Rogers v. Grimaldi, it did not infringe Jack Daniel’s IP rights.
The 9th Circuit reversed and remanded for further proceedings the portion of the district court’s ruling that found VIP Products had infringed Jack Daniel’s trademark and trade dress. It held that the court had erred by not requiring Jack Daniel’s to satisfy at least one of the two prongs of the Rogers test, which requires Plaintiff to show Defendant’s use was either:
1) Not artistically relevant to the underlying work, or
2) Explicitly misled consumers as to the source or content of the work.
CONCLUSION of Jack Daniel’s Properties, Inc. v. VIP Products, LLC:
The primary question presented to the U.S. Supreme Court in Jack Daniel’s petition for certiorari was whether a commercial product using humor is subject to the same “likelihood of confusion” analysis or is entitled to heighten First Amendment protection, requiring the brand owner prove the use is either not artistically relevant or explicitly misleads consumers.
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BACKGROUND of The Moodsters Company v. The Walt Disney Company:
The Moodsters Company involved an arrangement of characters designed to help children explore their emotional intelligence, which The Moodsters Company accused Disney of infringing when Disney used color-coded characters of its own, also associating each with a specific emotion, in the Pixar movie Inside Out.
The district court granted Disney’s motion to dismiss, which asserted that The Moodsters Company had failed to meet the minimum legal standard for copyright in a character, essentially ruling that The Moodsters are not copyright protectable.
The 9th Circuit Court of Appeals affirmed, with its panel finding “The Moodsters, lightly sketched anthropomorphized characters representing human emotions, did not qualify for copyright protection because they lack consistent, identifiable character traits and attributes and were not especially distinctive.” In addition, the Court held that the characters “did not qualify for copyright protection under the alternative ‘story being told’ test.”
CONCLUSION of The Moodsters Company v. The Walt Disney Company:
The primary questions presented to the U.S. Supreme Court in The Moodsters petition for certiorari were:
1) whether originality is the proper standard to determine character copyrightability; and
2) whether “copyrightability”—for a character or any work—is a question of fact, or involves questions of fact, ill-suited for resolution on a Rule 12 motion.
CONCLUSION…Conclusion:
As much as it might drive many of us crazy, the Supreme Court is not required to publish or otherwise issue its reasoning for denying review.
LAWFUL STREAMING ACT PASSED
https://www.natlawreview.com/article/protecting-lawful-streaming-act-signed-law
INTRODUCTION:
A new Section 2319C has been added to Title 18 of the U.S. Code by the “Protecting Lawful Streaming Act”, included in the Consolidated Appropriations Act signed into law by former President Trump on December 27th. It addresses what has often been referred to by copyright owners as the “felony streaming loophole” for almost 10 years while lobbying for Congress to address the fact that, under the criminal code, infringing acts of reproduction and distribution can trigger felony penalties, but public performance infringement is treated as only a misdemeanor.
THE LAW:
Section 2319C closes this loophole by applying to persons who willfully, and for purposes of commercial advantage or private personal gain, offer or provide to the public a “digital transmission service” that 1) is primarily designed or provided for the purpose of publicly performing copyrighted works without lawful authority via digital transmission; 2) has no commercially significant purpose or use other than to publicly perform copyrighted works without lawful authority via digital transmission; and 3) is intentionally marketed to promote the service’s use in publicly performing copyrighted works without lawful authority via digital transmission.
LEGISLATIVE HISTORY AND THE LAW’S INTENT:
The law’s legislative history indicates that it is not intended to subject mainstream streaming services or internet service providers or their customers to felony penalties, but instead targets particular types of commercial enterprises available to the public for this unlawful purpose.
TRADEMARK MODERNIZATION ACT PASSED TOO
INTRODUCTION:
Also signed into law by former President Trump on December 27th, the Trademark Modernization Act, or “TMA”, makes it easier for a trademark owner to obtain injunctive relief.
BACKGROUND, CHANGES, AND THEIR EFFECTS:
Previously, courts required the trademark owner to prove that “irreparable harm” will occur if the infringer is not enjoined from further use of the infringing mark. Now, under the TMA, after proving infringement, a trademark owner will enjoy a legal presumption that the harm caused by continuing infringement will be irreparable. This necessarily increases the likelihood that such a trademark owner will be granted injunctive relief.
The TMA also requires that the United States Patent and Trademark Office implement new procedures to allow third parties to more readily challenge pending applications, as well as issued registrations, that may be spurious.
• Currently, challenges to pending applications are limited in scope and challenging issued registrations entails costly cancellation proceedings. The TMA calls for a broader scope of evidence a third-party may submit for consideration during examination of a pending application, including evidence of non-use, as well as a streamlined procedure for challenging issued registrations. These changes are intended to help clear the way for legitimate trademark users to obtain registration of their marks.
In addition, the TMA is requiring the Government Accountability Office to conduct a study on the problem of false and inaccurate claims of use in trademark applications and, based on the results of the study, report to Congress with recommendations of changes to trademark law to improve accuracy of the Trademark Register and/or reduce inaccurate or false claims of use.
Finally, and in addition to the increased and some entirely new fees implemented on January 2nd, the USPTO will now charge a fee to registrants who seek to maintain or renew a registration but then requests removal of certain goods or services from that registration due to non-use.
CONCLUSION:
Due to rising concern about applications and registrations for trademarks that are not actually in use in United States commerce and keeping in line with the USPTO’s apparent mission to rid its records and the world of erroneous registrations, it seems the USPTO is finally getting it’s shhh...stuff together and the TMA should prove to be a positive step in the right direction for trademark owners and the consuming public, alike.
AN EMERGING TREND: INSTAGRAM EMBEDDING IS FAIR USE…MAYBE
https://www.law360.com/articles/1325111/embedded-instagram-post-is-fair-use-judge-says
https://www.eff.org/deeplinks/2018/02/federal-judge-says-embedding-tweet-can-be-copyright-infringement
INTRODUCTION:
Plaintiff photographers filing complaints under Section 501 of the Copyright Act, alleging that defendant celebrities, famous sports stars, and news reporting websites are committing copyright infringement by reproducing and publicly displaying photographs without consent and to the detriment of these photographers, has become a common trend.
ONGOING CASES:
Some examples include:
1) Photographer Michael Boesen suing United Sports Publications, LTD (owner of LongIslandTennisMagazine.com) for displaying his photograph of professional tennis player Caroline Wozniacki on its website via an embedded Instagram post first published by Wozniacki;
2) A photographer suing Houston Texans quarterback Deshaun Watson for republishing the photographer’s content on his social media accounts and;
3) Photographer Robert O’Neil suing model Emily Ratajkowski for posting a photo of herself (taken by O’Neil) to her Instagram story.
DISTINCTIONS:
One primary distinction between the Deshaun Watson and other cases is that the works concerning Wozniacki and Ratajkowski were first published on the individuals’ own Instagram accounts (before Defendant United Sports Publications for Wozniacki’s case and seemingly not at all by O’Neil for Ratajkowski’s case, citing the photograph as unmarketable as it does not show her face). Another distinction, and one emphasized by defendants in the Wozniacki case, is that United Sports Publications is a news reporting organization and the article at issue actually reported on her retirement. On the other hand, Watson and Ratajkowski are professional individuals, Watson simply republishing a photographer’s content on this social media accounts and Ratajkowski alleging her use of the photograph at issue serves “to comment on her perception of the predatory nature of [O’Neil’s] practice”, her face being covered up by a bouquet of flowers.
CONCLUSION:
Whatever the final outcomes of these cases may be, each defendant has alleged and focused on fair use being a complete defense. However, facts of each case have required a specific and distinct analysis by the defendants and the content being “merely embedded” based on another individual’s use on social media is still an issue.
NEW CHICK-FIL-A LOGO IS GIVEN A “NO-GO” FOR COPYRIGHT REGISTRATION
https://www.copyright.gov/rulings-filings/review-board/docs/cfa-logo-design.pdf
INTRODUCTION:
On June 24th, the Review Board of the United States Copyright Office issued a letter to CFA Properties, Inc. (Chick Fil-A), affirming the Registration Program’s prior refusal to register a similar but modified version of the company’s red and white “C in the form of a chicken head” logo. The letter was in response to Chick Fil-A’s second request for reconsideration of “the Work”.
“THE WORK”:
According to the Copyright Office, and difficult to dispute in certain respects, the Work is little more than a cropped version of Chick Fil-A’s preexisting and, by this time, already registered logo design – depicting “a chicken’s profile, which consists of a swirl for the head, a circle for the eye, a triangle for the beak, and four oblong circles for the combs.”
The Office appreciates and concedes that the applied for Work is set in (or its background against the white/negative space) is a softer red than Chick Fil-A’s previous design, features a repositioned beak, and that its combs and eye shapes are spaced to appear larger. However, the Office ultimately considered it to be a cropped version of the company’s preexisting designs, lacking the requisite authorship necessary to sustain a claim to copyright. “The Work” and Chick Fil-A’s preexisting logo designs are as follows:
Trademark Registrations Featuring the Design at Issue:
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:m6kkr4.4.6
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:m6kkr4.4.12
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:m6kkr4.4.21
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:m6kkr4.4.22
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:m6kkr4.4.23
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:m6kkr4.4.24
COPYRIGHT OFFICE’S ANALYSIS:
The Board found that the “new expression” consists of “merely trivial” revisions, without the “modicum of creativity” required to merit registration as a derivative work. As Chick Fil-A stated in an email on August 16, 2020, the Work is derived from preexisting, published logo designs:
“[A]n altered shape of the chicken head design, altered facial features of the chicken head design (new and repositioned beak; altered, repositioned, and cropped comb; and altered spacing of features), and cropped elements; the artwork also includes a new square background that crops the comb and head of the chicken, and, as a result of the cropping, does not depict a letter ‘C’ as did the prior artwork.”
Accordingly, a copyright claim in the Work covers only new authorship (not previously published material) and the Office contended that the new expression consists solely of repositioned and resized preexisting elements—circles, triangles, and a swirl, as well as a minor change in color.
CHICK FIL-A’S “IT IS A DERIVATIVE WORK” ARGUMENT:
CFA argued that simply cropping a preexisting image amounts to sufficient creative authorship. Citing dicta from a district court decision, CFA stated that “[t]he decision to crop and reframe a pre-existing work in a manner that creates a new and original composition represents original creative expression and more than a merely trivial variation that is entitled to copyright protection.” Second Request at 3 (citing SHL Imaging, Inc. v. Aristan House, Inc., 117 F. Supp. 2d 301, 306 (S.D.N.Y. 2000) (“A cropped photograph of an earlier photograph is a derivative work.”)).
In addition, CFA invited the Board to compare the new authorship in the Work with changes made to the derivative work in Eden Toys, Inc. v. Florelee Undergarment Co., Inc. 697 F.2d 27, 35 (2d Cir. 1982). There, the Second Circuit held that the alterations made to the Paddington drawing (see below, bottom) created a sufficiently original derivative work from the original (see below, top).
COPYRIGHT OFFICE’S RESPONSE:
The Office acknowledged that, while it is conceivable that a photograph could be cropped in such a way as to “recast, adapt[], or transform[]” it, the cropping in this case results in only minor, de minimis changes to the original designs. As this does not transform the source works in any meaningful way, it therefore does not contain authorship that is separately protectable from those underlying works.
In response to the Paddington example, The Board notes that registration decisions are made “on a case-by-case basis” and further finds the Paddington derivative work to include more and a greater variety of expressive modifications that are simply not present in CFA’s adjusted logo (e.g., “the changed proportions of the hat, the elimination of individualized fingers and toes,” which the Eden Court relied on in granting protection of the derivative work).
CONCLUSION & TAKEAWAY:
Simply put, because the new contributions, according to the Office, are in the form of a combination of “trivial alterations to the preexisting shapes that are too few and too minor to make the Work distinctive from the preexisting logo designs in a meaningful way,” registration is denied. The “modicum of creativity” standard remains elusive. So, don’t let your own copyright registration in a logo design bar you from obtaining protection for an updated one.
PETITIONS FOR CERTIORARI IN “STAIRWAY TO HEAVEN” AND INSIDE OUT CASES
INSIDE OUT
https://insidethemagic.net/2020/08/inside-out-copyright-lawsuit-tm1/
https://www.ipwatchdog.com/wp-content/uploads/2020/07/Moodsters-Cert-Petition.pdf
SCOTUS Blog -The Moodsters Company v. The Walt Disney Company Pending petition
INTRODUCTION:
On August 3rd, the 9th Circuit Court of Appeals sided with Disney in a copyright infringement lawsuit brought by Carla Jo Masterson over the Disney-Pixar movie Inside Out. Masterson alleges that the movie infringed on her poetry book, What’s on the Other Side of the Rainbow (A Book of Feelings), as well as the movie script The Secret of the Golden Mirror. While both works contain characters representing different human emotions, the Court affirmed a lower court’s decision by finding that Inside Out and the works of Masterson are not substantially similar.
BACKGROUND:
This is the second copyright infringement case in which the 9th Circuit has found for Disney over this film this year. The first was brought by child development expert Denise Daniels, claiming that Disney and Pixar infringed the copyright of her television show idea, The Moodsters, by including in Inside Out her idea of having different colored characters represent the human emotions of happiness, sadness, anger, and fear. Interestingly, Daniels stated that pitches were made to several Disney-Pixar executives between 2007-2009, including a pilot episode. Production of Inside Out began in 2010.
FINDING:
Judge Margaret McKeown stated, “Developing a character as an anthropomorphized version of a specific emotion is not sufficient, in itself, to establish a copyrightable character…Daniels cannot copyright the idea of colors or emotions, nor can she copyright the idea of using colors to represent emotions where these ideas are embodied in a character without sufficient delineation and distinctiveness.”
WHAT’S REALLY HAPPENING HERE?
Whether a pattern of opportunistic claims or the Court rightfully sticking to its guns and the legal standards of substantial similarity and copyrightability, the facts in Daniels are notably similar to a case the 9th Circuit recently reopened, involving Disney’s Pirates of the Caribbean franchise. Both allege Disney began developing its own version of a story recently pitched to it by the original authors.
“STAIRWAY TO HEAVEN”
https://www.hollywoodreporter.com/thr-esq/supreme-court-asked-review-stairway-heaven-fight-1307260
https://twitter.com/Bill__Donahue/status/1293912628863971329?s=20
INTRODUCTION:
On August 6th, Michael Skidmore, trustee for the Randy Craig Wolfe Trust, filed a Petition for a Writ of Certiorari with the U.S. Supreme Court, requesting that it review the 9th Circuit Court of Appeals “Stairway to Heaven”/“Taurus” copyright infringement case, Skidmore v. Zeppelin (9th Cir. 2020).
BACKGROUND:
Randy “California” Wolfe, singer-songwriter of the rock band Spirit (which also toured with Led Zeppelin in the late 1960s), wrote a song called “Taurus”, which he alleges and many find to be very similar in structure to the opening movements of Led Zeppelin’s “Stairway to Heaven”.
In 2016, Led Zeppelin came away with a win at the district court level and, in March of this year, the 9th Circuit Court of Appeals held that no retrial was necessary.
Skidmore’s Arguments:
Skidmore alleges that a crucial reason he lost at trial is the trial judge held that only what was deposited with the U.S. Copyright Office had the benefit of protection under the 1909 Copyright Act. In other words, he argues that it was wrong for the jury to not be allowed to hear the sound recording or “true” version of Taurus, so as to have the ability to properly assess the case and decide whether copyright infringement had taken place.
Another big reason Skidmore claims he lost at trail is that the trial judge did not properly instruct the jury on “originality.” Musical notes, themselves, are not copyrightable, and commonly used combinations of musical notes belong to the public domain. However, when something unique is achieved in the selection and arrangement of these notes, that can be afforded copyright protection. Because the judge did not tell the jury this before they began deliberating, the petition paints the 9th Circuit Court of Appeals’ en banc opinion as a "disaster for the creatives whose talent is often preyed upon" and one that "baselessly redefine[s] originality as a high bar to gaining copyright protection."
In Reality:
What the 9th Circuit Court of Appeals formally ruled is that, because Skidmore never presented the selection and arrangement theory at trial, he forfeited such an objection to jury instructions. The 9th Circuit Court of Appeals didn't even disagree with the selection and arrangement theory – first articulated by the Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co., Inc. (1991). Rather, the Court stated that it was up to Skidmore to provide more explanation.
As the opinion reads, "Presenting a 'combination of unprotectable elements' without explaining how these elements are particularly selected and arranged amounts to nothing more than trying to copyright commonplace elements."
Skidmore's attorney writes, "Cases under the 1909 Act are common, and will continue to be for the foreseeable future, necessitating that this Court address the Ninth Circuit’s holding before the damage becomes irreversible."
CONCLUSION:
There is a reason why the 9th Circuit took two turns on this case and the U.S. Department of Justice publicly took a side in this case – the pointed legal issue of whether the scope of copyright protection is actually defined by what is deposited with the U.S. Copyright Office awaits a much needed decision.
The petition warns that if the scope of copyright is defined by what's deposited, "Most songs composed before 1976 are going to lose protection," and, "This will most heavily impact historically disenfranchised communities (black blues artists, for example, which Led Zeppelin heavily 'borrowed' from and sometimes had to settle with) where the composition of music was not done on paper."
PUBLIC SERVICE ANNOUNCEMENT:
Don’t Forget to Clarify Whether Your Property May or May Not be Used to Film Pornography in Your Residential Leases!
INTRODUCTION:
Don’t forget to claim credit and royalties for any of your art in your house that may or may not be used in the production of or featured in any pornographic films that happen to be filmed there. Otherwise, you may have to bring suit to leave satisfied.
BACKGROUND:
Leah Bassett, owner and furnisher of a delightful home in Martha’s Vineyard, rented the property to Defendant Joshua Spafford for personal residential purposes. As it turns out, the homestead became the set for numerous pornographic videos, photographs, housing for cast and crew members, and God knows what else. So, Bassett brought 11 causes of action against Spafford, as well as several people and entities supposedly involved in the production and distribution of these prurient flicks.
• Asserting she owns the copyrights in 21 drawings, paintings, and photographs, 22 handsewn slipcovers, pillows, and wall hangings, and 10 pieces of furniture, “solely being used to add decorative touches to [Bassett’s] personal home in a manner that [she] felt would be warm and aesthetically pleasing”, this is a real case being fought before the U.S. District Court for the District of Massachusetts.
• Bassett will not be entitled to statutory damages or attorneys’ fees, as she did not register the copyrights in these works until after the infringing conduct had commenced. However, in Bassett v. Jensen, et al. this past May, the Court denied Defendants’ motion for summary judgment on most of the copyright claims and allowed Bassett’s claims to proceed.
• The motion for summary judgment on the copyright claims was based on a variety of grounds, including: (1) that Bassett’s copyright registrations were flawed because she registered them as unpublished works even though they had been published on her website or online store; (2) that some works were not original enough to merit copyright protection; (3) that any use was "de minimis"; (4) that any use was fair use; and (5) that Bassett cannot possibly show damages.
HOLDING:
In her decision, Judge Patti Saris held that Defendants had not submitted any evidence that Bassett’s works had been published (at least as that term is understood in the copyright context) and, accordingly, refused to dismiss the claims based on any flaw in copyright registration. She also found most of Bassett’s works to meet the low originality bar for copyrightability, only dismissing those based on slipcovers and pillows that used fabrics created by others.
• On the “De Minimus” Defense - The Court noted that, at least in the First Circuit, de minimis copying is not a separate defense to copyright infringement but rather relates to the strength of plaintiff's proof of substantial similarity. The Court then went on to discuss the Second Circuit's seminal decision in Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997), where copyright infringement was found when a well-known artist's work was shown in the background of a movie a total of nine times for a total duration of 26.75 seconds, in such a way that the work was plainly visible and recognizable, as well as a series of subsequent decisions finding a use to be de minimis when the original work was obscured, out of focus and generally unnoticeable.
º For example, in Sandoval v. New Line Cinema Corp., the Second Circuit held that the inclusion of copyrighted photographs in a film was de minimis (even though they were visible for more than 35 seconds) where “due to poor lighting, great distance, and lack of focus, the photographs were not displayed with sufficient detail for the average lay observer to identify even the subject matter of the photographs, much less the style used in creating them.”
º Concluding that it could not determine as a matter of law whether the use of Bassett’s works was de minimis, it ordered her to supplement the record with detailed documentation of her works being used in the films, for how long, and to what level of detail.
• On the “Fair Use” Defense - The Court applied the four-factor test from the copyright statute, finding the first 3 factors to favor Bassett, but the fourth, often described to be the most important, to favor Defendants. This is because Bassett never intended to sell her works and, as a result, there was no impact on the potential market.
• Regarding Damages - Finally, the Court rejected Defendants' contention that Bassett could not possibly show damages. This is because Bassett might be eligible for lost license fees and/or a portion of Defendants' profits attributable to the infringement.
RECENT DEVELOPMENTS:
As ordered by Judge Saris, Bassett has since filed documentation showing how her copyrighted works were used. Much of this is being filed under seal, but Bassett claims to have compiled more than 10,000 screenshots from Defendants' 8 films, including more than 175 minutes of unauthorized and infringing uses. Basset emphasizes that this total greatly exceeds uses held to be de minimis in other cases.
9TH CIRCUIT COPYRIGHT DAMAGES DECISION
INTRODUCTION:
The 9th Circuit has officially expanded the availability of attorneys’ fees to “any civil action under” the Copyright Act.
PROCEDURAL HISTORY:
• District Court - In Doc’s Dream, LLC v. Dolores Press, Inc., et al., involving a dispute over video recordings of a deceased minister’s sermons, a district court held that attorneys’ fees were not available to the accused infringer because the declaratory judgment claim it was granted summary judgment on did not require construction of the Copyright Act.
• 9th Circuit Court of Appeals - The 9th Circuit reversed, holding that the Copyright Act explicitly allows for the award of attorneys’ fees at the judge’s discretion. While the Court held that this discretionary award is limited to “any civil action under this title” (the Copyright Act), it found the request for declaratory relief to raise multiple aspects of and, thus, invoked the Copyright Act.
TAKEAWAY:
Any action that “turns on the existence of a valid copyright and whether that copyright has been infringed” necessarily invokes the Copyright Act, and its Section 505 fee-shifting provision applies to “any civil action under” it, so as to allow for the discretionary award of attorneys’ fees.
Public Service Announcement: SETTLEMENT FOR MUSICIANS
http://www.sessionartistroyaltysettlement.com/
https://www.digitalmusicnews.com/2020/06/01/afm-sag-aftra-session-musicians-46-million-settlement/
Unclaimed Royalties List: https://www.afmsagaftrafund.org/covered-rec-title_SR_Master.php
INTRODUCTION:
Certain session musicians and background vocalists may receive nearly $46 million in owed, but yet unpaid, royalties as part of a proposed settlement with the American Federation of Musicians & SAG-AFTRA.
BACKGROUND:
Through the Intellectual Property Rights Distribution Fund (IPRDF), AFM & SAG-AFTRA collects and distributes millions of dollars in royalties to session musicians and background vocalists each year. In 2019, roughly $62 million passed from the Fund to hardworking singers and musicians.
However, because the organization often lacks personal information, such as names and addresses required to identify and contact non-featured performers who are owed compensation, the amount of unidentified IPRDF session musicians and background vocalists has increased to over 61,000. These individuals are entitled to a significant portion of the roughly $46 million that has accumulated from their in-studio work.
PROGRESS MADE:
As a result, and with assistance from Quilling, Selander, Lownds, Winslett & Moser, P.C., and Jeeves Mandel Law Group, P.C., a class action settlement has been reached, entitling these artists to a portion of the roughly $46 million accumulated from their in-studio work.
HOW TO GET YOUR MONEY:
To broaden awareness of the settlement and the mechanics of claiming royalties, the parties sought the assistance of Digital Music News. Paul Resnikoff published a guide to educate musicians and vocalists on the pertinent points of the settlement, and help them secure the money they are owed. This guide can be found at digitalmusicnews.com and covers what every musician needs to know to finally secure the money due to them, and includes:
A Straightforward Means of Determining Eligibility;
The Quick and Easy Way to Obtain Money from the Settlement;
How Much Will Each Eligible Individual Receive; and
Concerns About the Economy and Music Community Experiencing Hard Times Amid the Coronavirus (COVID-19) Crisis.
IMDB DECISION CONFIRMED BY APPELLATE COURT
INTRODUCTION:
This past Friday (June 19th), the 9th Circuit Court of Appeals affirmed U.S. District Court Judge Vincent Chhabria’s decision in February, siding with IMDb, by finding California’s SAG-AFTRA-backed Assembly Bill 1687 to be unconstitutional.
BACKGROUND:
The bill would require IMDB, upon request by “IMDbPro” members, to remove the ages or birth days of public figures in the entertainment industry from its site. The bill’s purpose was to mitigate age discrimination, but Judge Chhabria granted IMDb’s Motion for Summary Judgement, which argued that AB 1687’s effect is unconstitutional censorship of free speech.
ANALYSIS:
Though the 9th Circuit found reducing incidents of age discrimination to be a compelling government interest, it also concluded the bill was inherently subject to strict scrutiny. It found that the content of IMDb profiles is not commercial speech, does not facilitate illegal conduct, and does not implicate privacy concerns, and the state failed to explore less restrictive and more narrowly tailored methods of addressing the issue that would not compromise free speech.
"Here, the State has not explored, or even considered, a less restrictive means to combat age discrimination in the entertainment industry before resorting to the drastic step of restricting speech. Because the State 'has various other laws at its disposal that would allow it to achieve its stated interests while burdening little or no speech,' it fails to show that the law is the least restrictive means to protect its compelling interest. That failure alone dooms AB 1687."
"AB 1687 restricts only websites like IMDb.com while leaving unrestricted every other avenue through which age information might be disseminated. This presents serious concerns here because AB 1687 appears designed to reach only IMDb."
CONCLUSION:
Finding the statute to be also be under-inclusive, in that it only applies to those who both subscribe to IMDbPro and request that IMDb remove information about their age, Circuit Court Judge Bridget S. Bade writes, "This malady means that the statute is not narrowly tailored, and thus, is unconstitutional."
"At bottom, the State’s and SAG’s discovery requests reflect a fundamental misunderstanding about the State’s burden in justifying restrictions on speech. Here, it does not matter that AB 1687 would accomplish what it sets out to do. An unconstitutional statute that could achieve positive societal results is nonetheless unconstitutional."
IN ADDITION:
Judge Bade disagreed with SAG-AFTRA’s argument that it was an abuse of discretion for District Court Judge Chhabria to decide to deny discovery before ruling on the summary judgment motion. She found no information requested could "unsettle" the Court’s conclusion that AB 1687 is a content-based restriction on speech.
SUPPOSEDLY TO COME:
In a press release issued that same day, SAG-AFTRA responded to the decision, including a statement from President Gabrielle Carteris, “We’re very disappointed by the decision, but it changes nothing about SAG-AFTRA’s commitment to change IMDb’s wrongful and abusive conduct," she said. "Neither I nor our members will stop speaking out until this outrageous violation of privacy used to facilitate discriminatory hiring ends."
“Stairway to Heaven” Copyright Infringement Case
https://www.rollingstone.com/music/music-news/led-zeppelin-stairway-to-heaven-retrial-879298/
https://variety.com/2019/biz/news/stairway-to-heaven-copyright-case-9th-circuit-1203346055/
https://www.rollingstone.com/music/music-news/led-zeppelin-stairway-to-heaven-appeal-retrial-889336/
Recap on Parties: Estate of Randy Wolfe (Plaintiff) v. Led Zeppelin (Defendants)
INTRODUCTION/BACKGROUND:
You will recall that in May, 2014, an heir of the band Spirit songwriter Randy Wolfe sued Led Zeppelin, claiming that “Stairway to Heaven” infringes Spirit’s 1968 instrumental piece “Taurus.” Jimmy Page and Robert Plant defeated the suit in June, 2016, in which a jury found that Led Zeppelin members had heard “Taurus” before creating “Stairway to Heaven” but that the two works were not substantially similar. In September, 2018, the 9th Circuit ordered a new trial. The panel found 1) that the jury instructions about unprotectable musical elements and originality were improper, and 2) that even though “Taurus” was created before sound recordings were protected by federal copyright law and should not be used to establish substantial similarity, the jury should have been able to hear “Taurus” to observe Page’s demeanor while listening to it.
PARTIES’ ARGUMENTS:
Seeking to avoid a second trail over whether the band copied “Taurus,” Led Zeppelin’s attorney, Peter Anderson, argued:
"Respectfully, the decision errs in faulting the district court for omitting a selection-and-arrangement instruction even though plaintiff objected to the district court giving it, and for instructing — correctly — that copyright does not protect public domain elements. The decision also errs because, more likely than not, the verdict would have been the same. The errors warrant en banc review because, if left uncorrected, they allow a jury to find infringement based on very different uses of public domain material and will cause widespread confusion in copyright cases in this Circuit."
Advocating for the second trail to take place, Skidmore (the accusing heir)’s attorney, Francis Malofiy argued:
"Nearly every song composed from 1909 to 1978, excepting classical music, was composed on instruments, not sheet music. The lead sheets submitted to the Copyright Office are complete enough to identify the songs, but almost never consist of all the notes in the musical compositions. ... There is no evidence, no statutory text, and no reason to believe that Congress ever intended that an author converting his common law copyright to a federal copyright by registration could possibly shrink or modify the scope of his already existing copyright."
Oral Arguments in the en banc review of the Stairway to Heaven case were held on September 23rd, and the 11-judge panel did not seem convinced a new trial over the Led Zeppelin song “Stairway to Heaven” is necessary.
PLAINTIFF (ESTATE OF RANDY WOLFE OF SPIRIT)’S ARGUMENT:
Plaintiffs’ attorney Francis Malofiy argued that a new trial is justified and jurors should be allowed to hear the recorded versions of the two songs at issue, Led Zeppelin’s 1971 hit “Stairway to Heaven” being allegedly stolen from Spirit’s 1968 song “Taurus.”
Making it a certainty that this particular Monday for Malofiy was a bad one, the judges spent most of the hearing incredulously focusing on his argument that the copyrighted composition of “Taurus” should include the song as it is performed, not just as it was written down and deposited with the U.S. Copyright Office.
TASTY BITS OF THE HEARING:
To get a sense of Malofiy’s experience and the hearing, in general, here are some of the questions as asked and answered about the case:
1) Judge Hurwitz: “You’ve got to get your sound recording in to win, don’t you? You lose the case unless you do. A hundred times out of a hundred.”
Malofiy: “The album version of “Taurus” is far more similar to “Stairway to Heaven” than the sheet music, which was a poor transcription. While the 1909 copyright law that covers “Taurus” protects the sheet music as deposited with the U.S. Copyright Office, legal precedent allows a look to other evidence, the best evidence, better evidence, and that a song’s recorded version can be considered.”
2) Judge Hurwitz: “I’m asking you a question: ‘What work in your view is entitled to copyright protection?’ It should be simple.”
Malofiy: “I don’t think it’s the sound recording that’s copyrighted, I think it’s the composition embodied in the sound recording.”
3) Judge McKeown: “You want to take the sound recording and essentially reverse-engineer what would be the sheet music for the sound recording?”
Malofiy: “I think you could look at it that way, yes.”
Also weighing in at the hearing, Government attorney Daniel Tenny stated:
“It’s clear that copyright owners were told... that all you’re getting protection for is what you deposited with us.”
CURRENT STATUS:
Since several high-profile copyright cases, like Williams v. Gaye over “Blurred Lines” and Gray v. Perry over “Dark Horse,” have recently been major news for the music industry and even mainstream media, the appellate review of Michael Skidmore v. Led Zeppelin has received significantly more attention than in its first time around. This is also because the 9th Circuit is positioned to restate or create anew the legal framework for how, when, and why music can be protected under existing copyright law, not simply whether Led Zeppelin stole a guitar riff from “Taurus.”
While it would be the first time the Supreme Court has ever heard to decide on the scope of copyright in music vs. what was deposited with the Copyright Office, there is also the possibility that the case is kicked up to the U.S. Supreme Court. We can expect a ruling sometime in 2020.
PRACTICE POINTER: KATY PERRY DARK HORSE PREJUDGEMENT INTEREST BALLOONS DAMAGES
https://www.digitalmusicnews.com/2019/11/22/katy-perry-dark-horse-damages-swell/
INTRODUCTION:
Back in August of 2019, a jury found that Katy Perry, Capitol Records, and other partners had substantially and willingly committed copyright infringement of 2008 rap song “Joyful Noise” by Flame (aka Marcus Gray) in creating the Katy Perry song “Dark Horse.” While Perry, Dr. Luke, Max Martin, Juicy J, Kobalt, Capitol Records, and others seemed to have been hit with a straightforward $2.89 million damages verdict, a closer reading of the ruling reveals that it includes “possible accrued interest since the date of infringement.” Of course, Perry’s attorneys are fighting to nullify the latter portion of the ruling – “pre-judgment interest,” as it is referred to by the Court – to prevent it from causing the ultimate damages verdict to reach $3-4 million.
CURRENT STATUS:
In their filings with the U.S. District Court for the Central District of California, Perry’s attorney’s claim that Marcus Gray and his team caused considerable delays in bringing their infringement action, thus allowing such potential, additional damages to unnecessarily accrue. In addition, they make the point that the initial award both “more than adequately compensates Plaintiffs for any infringement the jury may have found” and is only loosely based on infringement damages. Furthermore, the filing stresses the point that “by waiving any claim for an award of actual damages attributable to the infringement, Plaintiffs conceded that the creation of ‘Dark Horse’ caused no damages.” A separate filing contains specific tables of U.S.-based benchmark interest rates, which may suggest that the Court has moved on to the question of how much prejudgment interest should be enforced. However, Perry and her team are actively challenging the entire ruling, so we will likely just have to wait and see on this one.
MUSIC MODERNIZATION ACT THREATENS FLO & EDDIE LAWSUIT AGAINST PANDORA
INTRODUCTION:
In 2013, Turtles members Flo & Eddie claimed that Internet radio and streaming services, like SiriusSM and Pandora, were violating state law by not paying them for the performance of “Happy Together” and their other hit songs. They couldn’t sue for copyright infringement under federal law at the time because, before the passage of the Music Modernization Act, federal law did not cover pre-1972 sound recordings. Moreover, the Ninth Circuit certified a question about California’s scope of protection to the California Supreme Court, as other appellate courts in the nation concluded that other states, like New York and Florida, do not protect public performance.
EFFECT OF THE MUSIC MODERNIZATION ACT:
However, with federal lawmakers familiar with the how the widespread confusion had developed over pre-1972 sound recordings and the MMA being signed into law, the Ninth Circuit Court of Appeals on Thursday directed a lower federal court to reconsider Pandora’s bid to escape a class action lawsuit concerning its streaming of pre-1972 sound recordings. This is largely due to the fact that the MMA makes these works eligible for digital performance royalties.
CURRENT STATE OF AFFAIRS:
The appellate court notes in Thursday’s order that the MMA preempts state-law claims, as long as the service in question pays the royalties required by the Act. Thought the panel says it is unable to answer whether the MMA applies to and preempts Flo & Eddie’s claims, the Ninth Circuit finds Pandora’s attempt to strike the lawsuit and escape from the class action warrants revival and reconsideration.
JOHNNY DEPP SETTLES - A CAUTIONARY TALE FOR LAWYERS
INTRODUCTION:
In October, 2017, Johnny Depp sued his former attorney, Jake Bloom, claiming that Bloom wrongfully collected over $30 million based on an oral contract between the actor and the founder of Bloom Hergott law firm. Bloom responded by countersuing, claiming that Depp had yet to fulfill his Bloom Hergott invoices.
PROCEDURAL HISTORY AND THE SETTLEMENT:
Over a year after Judge Terry Green ruled in Depp’s favor, finding the agreement void because it was not in writing, Bloom Hergott settled with Depp for an undisclosed eight-figure sum at the end of October.
Bryan Freeman, representing Bloom Hergott, stated the following about the settlement:
“The former law firm of Bloom Hergott, with the help of its insurance carrier, has favorably settled the litigation with Johnny Depp for a fraction of his original demand. While the firm was confident it would prevail at trial, we are nonetheless pleased with this resolution as it expedites the firm’s winding down process and allows it to get off the endless Johnny Depp litigation train.”
TAKEAWAY:
This high-profile case should and will likely serve as a cautionary tale for attorneys practicing in the entertainment industry. While entertainment attorneys are largely used to the “industry standard” of deal making in the form of handshake or oral agreements, this case will likely encourage longer form, written contracts. This will better protect all parties and reduce the risk of litigation, especially between transactional entertainment attorneys and talent like Depp, and otherwise.
ORAL ARGUMENTS HELD IN LED ZEPPELIN “STAIRWAY TO HEAVEN” CASE
https://www.rollingstone.com/music/music-news/led-zeppelin-stairway-to-heaven-retrial-879298/
https://variety.com/2019/biz/news/stairway-to-heaven-copyright-case-9th-circuit-1203346055/
INTRODUCTION:
Oral Arguments in the en banc review of the Stairway to Heaven case were held on September 23rd. And it didn’t look good for the appellants…
The 11-judge panel did not seem convinced a new trial over the Led Zeppelin song “Stairway to Heaven” is necessary.
PLAINTIFF (ESTATE OF RANDY WOLFE OF SPIRIT)’S ARGUMENT:
Plaintiffs’ attorney Francis Malofiy argued that a new trial is justified and jurors should be allowed to hear the recorded versions of the two songs at issue, Led Zeppelin’s 1971 hit “Stairway to Heaven” being allegedly stolen from Spirit’s 1968 song “Taurus.
Making it a certainty that this particular Monday for Malofiy was a bad one, the judges spent most of the hearing incredulously focusing on his argument that the copyrighted composition of “Taurus” should include the song as it is performed, not just as it was written down and deposited with the U.S. Copyright Office.
TASTY BITS OF THE HEARING:
To get a sense of Malofiy’s experience and the hearing, in general, here are some of the questions as asked and answered about the case:
1) Judge Hurwitz: “You’ve got to get your sound recording in to win, don’t you? You lose the case unless you do. A hundred times out of a hundred.”
Malofiy: “The album version of “Taurus” is far more similar to “Stairway to Heaven” than the sheet music, which was a poor transcription. While the 1909 copyright law that covers “Taurus” protects the sheet music as deposited with the U.S. Copyright Office, legal precedent allows a look to other evidence, the best evidence, better evidence, and that a song’s recorded version can be considered.”
2) Judge Hurwitz: “I’m asking you a question: ‘What work in your view is entitled to copyright protection?’ It should be simple.”
Malofiy: “I don’t think it’s the sound recording that’s copyrighted, I think it’s the composition embodied in the sound recording.”
3) Judge McKeown: “You want to take the sound recording and essentially reverse-engineer what would be the sheet music for the sound recording?”
Malofiy: “I think you could look at it that way, yes.”
Also weighing in at the hearing, Government attorney Daniel Tenny stated:
“It’s clear that copyright owners were told... that all you’re getting protection for is what you deposited with us.”
BILLIONS LAWSUIT BEATEN BY SHOWTIME
https://www.hollywoodreporter.com/thr-esq/showtime-beats-billions-lawsuit-1245844
INTRODUCTION:
This past January, Denise Shull sued Showtime over actor Maggie Siff’s character, Wendy Rhodes, in the show Billions. Shull claims that the character is based on her and was copied from her book, Market Mind Games. She also alleges that she was wrongfully never compensated for helping co-creator of the series Andrew Sorkin develop the character.
U.S. DISTRICT COURT’S DECISION:
After Showtime asked the U.S. District to toss the complaint, arguing that the works and women characters are nothing alike, the Court granted the request. Judge George Daniels found the two works, an academic book that uses fiction to keep readers’ attention and a series on the “age old trifecta of money, power, and sex, to be not substantially similar. The same goes for Shull and Billions character Wendy Rhodes:
"Although Shull is well known in the performance coaching world, it cannot be said that she can copyright the idea of a female in-house performance coach…the characters of Denise and Wendy do not resemble one another in the slightest.”
Shull’s state law claims arising from the copying allegations were also dismissed, as were her breach of implied-in-fact contract and unjust enrichment claims for failing on the merits.
POSSIBLE APPEAL:
On October 14th, Shull made a lengthy public statement that she plans to appeal the decision "to fight for what is fair for me but also to advocate on behalf of everyone who has had their work co-opted by those with more wealth and power.”
“WHATEVS”: ST. LOUIS BREWERY FIRES BACK AFTER FRENCH FIRM’S TRADEMARK THREAT
INTRODUCTION:
On July 1st, French brewery Brasserie Meteor, in a cease and desist letter to Earthbound Brewery, demanded that Earthbound rename its “Meteor” IPA. While the letter ultimately states that Brasserie Meteor has an international trademark on “meteor” and, as a result, Earthbound must stop using it on its products, Earthbound’s response was... less than abiding.
THE SCOOP:
Aside from the company’s legal response letter, Earthbound’s “Presiding Comrade” Stuart Keating also posted the following to the company’s Facebook page:
“lmao we received a lawsuit threat from Brasserie Meteor, a French macrobrewery. Our response included for laffs and edification. WHATEVS.”
Perhaps because Keating is a lawyer married to an intellectual property lawyer, his response mocking Meteor’s request comes as less of a surprise. Still, his position amounts to more than a simple dismissal:
• He argues that because Earthbound does not sell and is not considering selling its beer in France and Meteor does not appear to be prepared to sell beer in the U.S., there is little, if any, risk of consumer confusion.
• He also pokes fun at his own company to support his point that no consumer would mistake Earthbound’s marketing for that of such an esteemed French brand as Meteor, stating in his response:
“You are a nation-spanning brewery with 500 years of history, we are a bunch of DIY goof-offs that like partying and we once spent $300 on a print advertisement that said ‘lol we bought an ad’ with our logo on it.”
• While Keating concedes that the French conglomerate might still sue to enforce its wishes, he draws more attention to the company’s intention (or threat) to “turn every development in the case into a media circus.”
MORE TO COME (AND HOPEFULLY END), BUT A HELPFUL TAKE-AWAY:
Keating notes that cease and desist letters from Meteor have been a recurring issue over the years, as multiple breweries have reached out to Earthbound, stating that they’d received identical letter from the company in the past.
• For example, Mother’s Brewing Company was forced to change the name of its products, even after some spelling changes, because Meteor told them it was “too close.”
• As avoiding conflicts can be difficult, even with diligent searches, Tyler Hoke of Lost Signal Brewing Company on College Street recommends searching websites and apps like Untappd before naming a beer.
KATY PERRY LOSES “DARK HORSE” CASE
RELATED NOTE 1: Stairway to Heaven Gets Amicus Brief
https://www.digitalmusicnews.com/2019/08/02/led-zeppelin-amicus-brief/
RELATED NOTE 2: Gaga Gets Hit Too!
https://www.foxnews.com/entertainment/lady-gaga-ready-to-fight-possible-shallow-lawsuit-lawyer-says
https://www.vox.com/2019/8/12/20802471/lady-gaga-shallow-copy-lawsuit-ronsen
INTRODUCTION:
On Monday, July 29th, a jury in Los Angeles federal court found Katy Perry liable for copyright infringement, by copying the underlying beat of Marcus Gray’s 2008 Christian rap song “Joyful Noise” and using it in her hit single “Dark Horse.” Perry’s collaborators on “Dark Horse”, Lukasz Gottwald (Dr. Luke), Karl Martin Sandberg (Max Martin), Henry Walter (Cirkut), Jordan Michael Houston (Juicy J), and songwriter Sarah Hudson, as well as Capitol Records, Warner Bros. Music Corporation, Kobalt Publishing, and Kasz Money, Inc. were also found liable.
PROCEDURAL HISTORY:
• In 2014, Gray (aka Flame), along with co-writer Emanuel Lambert and the beat’s creator Chike Ojukwu, sued Perry and her collaborators, claiming they used the beat from “Joyful Noise” in “Dark Horse” without permission.
• Gray sought millions in damages and an injunction against distribution of “Dark Horse,” claiming that Perry, being a former gospel singer who publicly renounced her Christian faith, tainted “Joyful Noise” and Gray’s reputation by using lyrics about the Illuminati and other allusions offensive to Christians. A joint request for a bifurcated trial was then granted by Judge Christina A. Snyder, July 29th’s judgment concluding the liability portion of the suit.
• After a seven-day trial, in which the Plaintiffs attempted to prove that Perry and her co-defendants either knowingly or unknowingly copied the “Joyful Noise” beat for use in “Dark Horse,” the jury ultimately sided with Gray and his co-plaintiffs. The damages portion of the trial began the following day (July 30th) and, after two days of testimony, the jury ordered Capitol Records to pay $1.2 million and Perry to pay $550k of the total $2.7 million to be paid to Gray by all defendants.
THE TRIAL:
This decision comes after the 2015 landmark decision over Robin Thicke’s “Blurred Lines,” in which a jury ordered Thicke and his co-writer/producer Pharrell Williams to pay Marvin Gaye’s estate a whopping $7.4 million for copyright infringement of Gaye’s 1977 song “Got to Give It Up.” While both “Dark Horse” and “Got to Give It Up” ended up being massively popular hits, considerable differences exist between the two cases, including the availability of each plaintiff’s song.
Perry’s Side:
- Unlike the worldly success, distribution, and recognition of Gaye’s “Got to Give It Up,” “Joyful Noise” is a Christian rap song that never enjoyed the same mainstream popularity or significance. This lack of availability was a fundamental point argued by Perry and her team.
- Perry, Dr. Luke, and co-writer Max Martin testified they had never heard “Joyful Noise” before being sued. Their defense argued that, out of trillions of YouTube views between 2008-2012, writers of “Dark Horse” were extremely unlikely to have come across Gray’s religious-themed “Joyful Noise.”
- Because Ojukwu created the beat independently and later licensed it to Gray, the defense argued “Joyful Noise” was itself a derivative work, precluding plaintiffs from having any legitimate copyright claim to the beat, on its own.
- Perry’s short-lived career as Christian pop singer in the early 2000s and her being the child of two pastors was another angle used by Gray and his team – implying that Perry was predisposed to have come across “Joyful Noise.” Perry testified that, even during this phase of her career, she was, “mostly always listening to… secular music anyway.”
Gray’s Side:
- Gray, co-plaintiffs Lambert and Ojukwu, Gray’s wife and manager Crystal Gray, and musicologist Todd Decker took the stand, as well. Decker determined, independently, that Perry and her co-defendants had “borrowed” the beat of “Joyful Noise” for “Dark Horse.”
- Of course, Perry and her team used their own expert, New York University musicologist Lawrence Ferrara, to rebut and counter this testimony. Ferrara testified that “Dark Horse” was not substantially similar to “Joyful Noise” and that it contained basic elements and those common across countless other tunes, such as “Mary Had a Little Lamb,” Jolly Old St. Nicholas,” and “Merrily We Roll Along.”
THE RULING’S IMPLICATIONS:
Perry was not present for the reading of the verdict, but the federal jury’s decision basically amounts to a finding that she and her collaborators stole six notes – a musical pattern that strikes many as so common and monotonous that a metronome could have produced it – from a Christian rapper’s relatively obscure song. This finding is troubling to the music industry, causing many to fear that this trend will produce a new type of writer’s block – nervousness that the simplest musical motif might be found by a jury to belong to someone else.
Lady Gaga:
- A similar danger exists for Lady Gaga over her Academy Award winning A Star is Born movie hit “Shallow.” Though a suit has not yet been filed, singer-songwriter Steve Ronsen accused her earlier this month of stealing a three-note progression from his 2012 song “Almost.”
- It is reported that lack of access should be easy to prove, based on the virtually nonexistent distribution of “Almost,” and that there is nothing remarkable about either of the two songs’ melodies at issue – both using the most elementary sequence of notes any musician learns: Do-Re-Mi.
Countless Others, and Perhaps Why:
- No less than four of the eight songs nominated for Song of the Year at this year’s Grammys were already in copyright lawsuits, with two of the remaining four under threat of litigation. This is on top of the already numerous Top Ten hits already targeted, including Miley Cyrus’ “We Can’t Stop,” Ariana Grande’s “One Last Time,” Justin Bieber’s “Sorry,” Demi Lovato’s “Stars,” and Ed Sheeran’s “Photograph” and “Thinking Out Loud.”
- Jury members, often with no musical background, education, or training, seem to be difficult to convince that, while some tone-and-rhythm sequences are original enough to warrant copyright protection, others are not. These other sequences are common and simply exist as musical building blocks or “vibes” that don’t belong to anyone.
A SIGN OF HOPE IN SETTING (AT LEAST SOME) OF THE RECORD STRAIGHT - Skidmore v. Led Zepplin:
• In another famous and recent case, Skidmore v. Led Zepplin, the jury seemed to understand this and went the other way. While the “simple motif” upon which the claim was dismissed was far more complex than the line at issue in “Joyful Noise,” that jury found that an A minor chord and descending bassline were not copyrightable. An 11-judge panel has since decided to take another look and listen, which is currently pending, but the original decision was based on the fact that such an arrangement is common in many compositions going all the way back to Bach.
• In addition, the United States has officially advised (and many music and legal scholars agree) that, because Spirit’s (Skidmore) song “Taurus” was authored in 1968, it is subject to the 1909 Copyright Act’s deposit requirements and the case should not be overturned.
• Whatever the reasoning ends up being, hopefully this case will be put back on the books soon and serve as useful precedent on what musical elements will be protected in the future.
YOUTUBE CHANGES ITS RULES IN AN EFFORT TO HELP CREATORS
https://youtube.googleblog.com/2019/07/live-from-vidcon-creating-new.html
https://gizmodo.com/youtube-announces-some-changes-to-its-infamously-screwe-1836233860
INTRODUCTION:
Earlier this month, YouTube chief product officer Neal Mohan announced that new monetization features, including vast merchandise opportunities, paid stickers for live stream chats, and different channel membership tiers, have been added to help creators earn from their “YouTubing” efforts.
NEED FOR CHANGE:
As ads, and their associated income for creators, can cease to exist for a number of reasons, YouTubers have come to realize that they simply can’t rely on YouTube’s advertising model to sustain their careers.
• Their videos can be shut down by questionable copyright claims, they can be penalized for violating YouTube’s selectively enforced rules, or a fellow YouTuber can even do things to cause advertisers to pull money from the platform.
• This is why a creator’s ability to earn income directly from fans is so important. It can supplement their income, while insulating them from the uncertainty of a single and inherently unpredictable revenue stream.
• However, the most concrete change and new feature, and the most likely to prove beneficial in practice, is the update to its policies concerning copyright infringement claims.
COPYRIGHT INFRINGEMENT CLAIM PROBLEM:
The new policy requires that rights holders define the exact location where their content appears in a video with timestamps, rather than being able to issue a blanket claim of infringement.
• This practice has previously been extremely frustrating and unduly burdensome for many creators, who previously had to sift through several minutes (and sometimes hours) of content to find where the alleged infringement may have occurred. Now, purported owners of copyrighted content will have to be far more specific in issuing their claims of copyright infringement.
• Features to bring videos into copyright compliance, like muting all sound while a claimed song plays, use “one of our free-to-use songs from the YouTube Audio Library,” and cutting the relevant section out already existed. However, the required timestamps will not only facilitate in enabling allegedly infringing creators to clearly locate the issue, but will also allow them to easily edit out or modify the relevant content. The already-existing features have also reportedly been streamlined.
• This is a leap forward from the uncertainty and often long blackout periods of content that used to accompany such discrepancies, as creators were formerly left in the dark as to whether what they addressed was the correct piece of content and what allegedly needed to be addressed.
CONCLUSION:
Many criticize these changes as being not enough to level the playing field between rights holders and creator-individuals, claiming fair use of material for purposes such as satire, education, news, or criticism.
• While this may be a credible assertion, it will undoubtedly help the problem of copyright holders haphazardly, and often arbitrarily, flagging entire videos on a whim.
• The DMCA’s “notice and takedown” system requirement has proven not enough, in itself, so these improvements are undoubtedly a step in the right direction - both for a content provider like YouTube and the content-creators who sustain it.
BUT WHAT ABOUT THE STATUTE? CAN YOUTUBE IMPOSE STRICTER REQUIREMENTS ON COPYRIGHT HOLDERS THAN §512 DOES? DOES THIS AFFECT THEIR SAFE-HARBOR PROTECTION, IF THEY ESTABLISH A POLICY LIKE THIS?:
§512(c)(1)(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.
(3)Elements of notification.—
(A) To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:
(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
“STAIRWAY TO HEAVEN” DISPUTE GETS REPLAY IN APPEALS COURT
https://www.hollywoodreporter.com/thr-esq/stairway-heaven-dispute-gets-replay-appeals-court-1217210
INTRO/BACKGROUND:
You will recall that In May, 2014, an heir of the band Spirit songwriter Randy Wolfe sued Led Zeppelin, claiming that “Stairway to Heaven” infringes Spirit’s 1968 instrumental piece “Taurus.” Jimmy Page and Robert Plant defeated the suit in June, 2016, in which a jury found that Led Zeppelin members had heard “Taurus” before creating “Stairway to Heaven” but that the two works were not substantially similar. However, in September, 2018, the 9th Circuit ordered a new trial. The panel found 1) that the jury instructions about unprotectable musical elements and originality were improper, and 2) that even though “Taurus” was created before sound recordings were protected by federal copyright law and should not be used to establish substantial similarity, the jury should have been able to hear “Taurus” to observe Page’s demeanor while listening to it.
RECENT DEVELOPMENTS:
Both parties requested a rehearing, each taking issue with different parts of the 9th Circuit’s decision. On June 10th, the 9th Circuit announced that by vote of a majority of its active and non-recused judges, it will rehear the case en banc. The rehearing is likely to focus on the issue of whether juries should hear sound recordings in disputes over songs before such recordings gained federal copyright protection.
PARTIES’ ARGUMENTS:
Seeking to avoid a second trail over whether the band copied “Taurus,” Zeppelin’s attorney, Peter Anderson, argues:
"Respectfully, the decision errs in faulting the district court for omitting a selection-and-arrangement instruction even though plaintiff objected to the district court giving it, and for instructing — correctly — that copyright does not protect public domain elements. The decision also errs because, more likely than not, the verdict would have been the same. The errors warrant en banc review because, if left uncorrected, they allow a jury to find infringement based on very different uses of public domain material and will cause widespread confusion in copyright cases in this Circuit."
Advocating for the second trail to take place, Skidmore (the accusing heir)’s attorney, Francis Malofiy argues:
"Nearly every song composed from 1909 to 1978, excepting classical music, was composed on instruments, not sheet music. The lead sheets submitted to the Copyright Office are complete enough to identify the songs, but almost never consist of all the notes in the musical compositions. ... There is no evidence, no statutory text, and no reason to believe that Congress ever intended that an author converting his common law copyright to a federal copyright by registration could possibly shrink or modify the scope of his already existing copyright."
Oral arguments are scheduled for the week of September 23, 2019.
DC COMICS LOSES SUPERMAN TRADEMARK FIGHT IN INDONESIA
(IT’S A SMALL WORLD CLARK KENT)
INTRO:
PT Marxing Fam Makur is a Surabuya-based food and beverage company that produces and distributes Super-man-themed chocolate wafer biscuits. These wafer biscuits are reportedly a popular snack for those who grew up in Indonesia in the 1990s, where it was often sold at kiosks in and around schools. Due to an already existing Superman trademark of PT Marxing, DC Comics failed to register their “super-famous” Superman trademark in Indonesia.
COURSE OF EVENTS:
DC Comics responded to this denial by filing a lawsuit in the Central Jakarta Commercial Court, claiming 1) that Superman is a character and brand known worldwide and 2) that Marxing possibly had malicious intent in registering the trademark without DC’s permission or approval.
Demonstrating how much IP owners in parts of the world other than the U.S. value their IP, Marxing defended their rights to the Superman brand by maintaining that they had the trademark registered over 25 years ago, in 1993.
The Central Jakarta Commercial Court ruled against DC Comics.
RESULT:
… and DC Comics appealed to the Supreme Court, but that appeal was denied. The Supreme Court stated, “[t]he plaintiff’s lawsuit cannot be accepted because it is obscure.” While the term “obscure” is typically used in the context of U.S. trademarks to describe rare surnames, and in the international trademark context to describe word marks that have no meaning to the relevant consumer because they are in a foreign or dead language, it seems the Supreme Court either agrees with the lower court’s decision or doesn’t have time for such super-shenanigans, or both.
“MORAL RIGHTS” OF COPYRIGHT… IN THE UNITED STATES?
https://www.copyright.gov/policy/moralrights/
INTRODUCTION:
In the United States, moral rights concerning intellectual property has long been an issue, but has yet to make its way into Federal codification or be officially recognized as an enumerated right of rightsholders under federal law. While many countries, including India, China, and Canada, protect the moral rights of authors through their national copyright laws, moral rights in the United States are largely implemented only through a variety of individual state laws.
WHAT “MORAL RIGHTS” ARE AND BRIEF HISTORY OF MORAL RIGHTS IN THE UNITED STATES:
The term “moral rights” refers to particular non-economic rights that are generally considered more personal to an author than those traditionally granted under the United States’ statutory regime, such the right to make and sell copies, create derivative works, and perform or display works publicly. Moral rights take two primary forms, both in the United States and abroad: 1) the first is the right of attribution and 2) the right of integrity. The right of attribution is the right of an author to be credited as the author of their work, while the right of integrity is the right to prevent others from prejudicially distorting a work. Moral rights have a long history in the legal framework of international copyright law, but not until the late 1980s did the United States even consider formal adoption of moral rights as it prepared to join the Berne convention in 1989. Still, the United States stipulated that the Convention’s moral rights provisions were sufficiently addressed by other statutes, like those covering slander and libel.
AND NOW?: NEW REPORT
The emphasis on the protection of financial reward over creative attribution continues in the United States, but the U.S. Copyright Office has just submitted its report on a comprehensive study of attribution and integrity in the United States. In preparation, The Office co-hosted an all-day symposium on moral rights in April, 2016 and issued a notice of inquiry for public comments in January, 2017, for which 62 comments were filed by interested parties by the March 30, 2017 deadline. It contains an extensive review of the U.S. moral rights regime, particularly considering legal and technological advancements since it joined the Berne convention thirty years ago.
The Copyright Office concluded that there is room for improvement and identified three important principles in its review of the current U.S. moral rights legal framework: 1) respecting foundational principles of U.S. law, including the First Amendment, fair use, and limited terms, 2) appreciating the importance creators place on their attribution and integrity interests, and 3) recognizing and respecting the diversity among industry sectors and different types of works.
CONCLUSION:
The report offers recommendations for extending moral rights protections if Congress decides to do so. One is amending the Visual Artists Rights Act (VARA) and the Lanham Act to better protect attribution and integrity interests. Another is expanding authors’ recourse for removal or alteration of copyright management information in §1202 of Title 17. In addition, the Office suggests areas where preferred interpretations of judicial decisions could further moral rights protection for authors and suggests that Congress may want to consider the adoption of a federal right of publicity to reduce uncertainties and ambiguities created by diverse state right of publicity laws.
FOLLOW UP ON MMA: SPOTIFY, AMAZON, PANDORA, AND GOOGLE NOTICES OF APPEAL TO THE D.C. COURT OF APPEALS OVER ROYALTY PAYMENTS
https://www.copyright.gov/rulemaking/pre1972-soundrecordings-schedules/
https://www.copyright.gov/rulemaking/mma-115-techamend/
After last year’s decision to raise mechanical statutory royalty rates for 2018-2022 from 10.5% to 15.1% of revenue, and which was finalized last month by the Register of Copyrights, Spotify, Google, Pandora, and Amazon are apparently not celebrating as much as songwriters and publishers were over this decision. Earlier this month, the four (4) goliath streaming services filed their notices of intent to appeal the Copyright Royalty Board’s rate determinations. Though the grounds and what aspects of the CRB’s final ruling they will be basing their appeal on will not be revealed until the actual appeal is filed, this will mark the first time that Section 115 rate determinations for music publishing rates have ever been appealed.
All we have now is the following statement, issued jointly by Google, Pandora, and Spotify, on March 7th:
"The Copyright Royalty Board (CRB), in a split decision, recently issued the U.S. mechanical statutory rates in a manner that raises serious procedural and substantive concerns. If left to stand, the CRB's decision harms both music licensees and copyright owners. Accordingly, we are asking the U.S. Court of Appeals for the D.C. Circuit to review the decision."
The only major streaming service that has not filed a notice of intent to appeal is Apple Music. Interestingly, on February 15th, George Johnson, a Nashville-based indie songwriter who participates in most of the CRB proceedings, also filed a notice of his intent to appeal.
EU REVOKED MCDONALD’S “BIGMAC” TRADEMARK (AND BURGER KING HAS FUN AT MCDONALD’S EXPENSE)
Back in January of this year, McDonald’s lost its “Big Mac” trademark in the EU. This came as the result of a lawsuit filed by McDonald’s against a much smaller burger company, the Irish chain Supermac’s. The EUIPO was persuaded by Supermac’s petition to cancel McDonald’s use of the “Big Mac” trademark (which it trademarked in 1996) and ruled that McDonald’s had not proven genuine use of the mark during the five years leading up to the case.
As McDonald’s had previously argued that similarity between “Supermac” and “Big Mac” would confuse customers, McDonald’s registration had previously discouraged Supermac’s ambitions to expand beyond Ireland and into the EU. McDonald’s apparently has a history of bullying Supermac’s. McDonald’s trademarked “SnackBox,” one of Supermac’s most popular products, even though it never offered such a product or otherwise used the mark. However, in a “use it or lose it” smackdown by the EUIPO, Supermac’s prevailed and McDonald’s was left without its famous “Big Mac” mark.
To make matters worse, or at least more humorous, McDonald’s long-time rival Burger King decided to have some fun with this in its Swedish operations. Surely at no small expense (but apparently decided to be definitely worth it) the company completely revamped its menus in Sweden to make fun of McDonald’s loss. The revisions are numerous, but just to name a few:
1) “NOT BIG MAC’S” as the menu header;
2) “Burger Big Mac Wished It Was”;
3) “Like a Big Mac, But Actually Big”; and
4) “Big Mac-ish But Flame-Grilled of Course.”
Unable to stop themselves there, Burger King began offering people in the vicinity of a McDonald’s one-cent Whoppers, using its Burger King app. If a user was standing near a McDonald’s location, he or she would be directed to the nearest Burger King to collect on the deal.
The CEO of Burger King’s Swedish operations, Iwo Zakowski, stated in a press release, “McDonalds just lost its trademark for the Big Mac for suing a much smaller player. It’s too much fun for us to stay away.”
LUCASFILM INTERVENES AFTER FAN OUTRAGE AT SHADY MONETIZATION CLAIM BY WALT DISNEY MUSIC AND WARNER CHAPPELL
https://youtu.be/Ey68aMOV9gc (The video… Pretty good!)
INTRODUCTION:
On December 21, 2018, Star Wars-fan YouTube channel Star Wars Theory posted a 16-minute video entitled “Vader Episode 1: Shards of the Past.” The video was produced and paid for by the channel’s creator, Danny Ramirez, and has since been viewed nearly 9 million times and accumulated nearly 600,000 likes. The fan-film depicts well-known Star Wars characters, light-sabers, and of course, music. Not surprisingly, Warner Chappell and Walt Disney were not happy about this.
BACKGROUND:
Before making the film, Ramirez contacted LucasFilm about the project, asking the company’s permission to produce the video and either crowdfund or, otherwise, monetize the video, in order to be reimbursed for what would be spent producing it. According to Ramirez, LucasFilm gave him permission to produce the video, as long as he did not crowdfund or monetize it. So, he did just that, to the tune of about $100,000 of his own money.
THE CONTROVERSY:
The real controversy involves the action purportedly taken by Walt Disney Music and Warner Chappell after the video was posted on the Star Wars Theory channel: claiming themselves as owners of the video, in its entirety, and the monetary claimants on the channel’s page. This was followed by threats to have the channel struck and the video deleted if Ramirez or Star Wars Theory challenged the claim. Following a flood of fan outrage pressuring LucasFilm to intervene, the company stepped in to have Warner Chapell and Walt Disney Music removed as claimants from the video.
CURRENT STATE OF AFFAIRS:
In respect of the original agreement between Star Wars Theory and LucasFilm, “Vader Episode 1: Shards of the Past” is not being monetized. Star Wars Theory reports that “Episode 2” will be coming soon and that it, also, will not be monetized.
USPTO PRACTICE POINTER ABOUT FRAUDULENT AND MISLEADING TRADEMARK NOTICES
https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices
INTRODUCTION:
As attorneys, we have long warned our clients about fraudulent notices or other contact they are likely to receive after publicly registering their business, trademark, or anything for that matter. However, the rate at which trademark owners, and even fresh applicants, receive these solicitations has ramped up over the past few years.
Not all who take advantage of public information do so with bad intentions, but the practice of scheming the public record and the existence of bad people is nothing new. In March 2017, the operators of a private company—the Trademark Compliance Center—were convicted of money laundering in a trademark renewal scam. Companies like these look for new business, trademark, and other registrations, and use information that an everyday person would view as private or official (like application and registration numbers) to fool the owner.
Generally, these private entities attempt to:
1) bill the owner for something they do not owe;
2) solicit services the owner is not required to complete and often wouldn’t benefit from; and/or
3) imply they are affiliated with the government or the USPTO registration process and that non-payment would disadvantage the owner, in one way or another.
For example, a notice from “The World Trademark Compliance Coalition” might imply that you owe it a fee for something when you do not, or offer “assistance” for an exorbitant, or even hidden, fee.
These solicitations vary widely in both appearance and request, from one-time payments to those of a repeated, “renewal” nature. It is important to keep in mind that these notices are virtually always from private companies that are not affiliated with, much less, a part of the government. Trademark applicants and owners should be suspicious of all types of offers and notices not from the USPTO.
TAKEAWAY:
Even a seasoned attorney will often have to take a second look at some of these notices, and a business owner who is unfamiliar with this practice is likely to be fooled by them. Not all solicitations are fraudulent and some of these private companies provide legitimate services, such as assistance with a response to a USPTO Office Action. Just make sure your client is informed of the actual costs normally associated with such a service. The safest practice is to follow the USPTO’s instruction to be wary of these solicitations and remember that all official correspondence about your trademark application or registration will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, and all emails will be from the domain “@uspto.gov.”
SCOTUS SAYS NO TO DE HAVILLAND’S LAWSUIT
JX: U.S. Supreme Court
INTRODUCTION: Effectively upholding a California appeals court’s decision to throw out the case, the Supreme Court declined to hear Olivia De Havilland’s lawsuit against Ryan Murphy and FX earlier this month.
PROCEDURAL HISTORY:
• In June 2017, De Havilland sued FX and Bryan Murphy for infringement of common law right of publicity, false light and unjust enrichment. The suit concerns Catherine Zeta Jones’ portrayal of De Havilland’s character, in the FX series Feud: Bette and Joan, as a vulgar gossip and hypocrite.
• In September 2017, a Los Angeles Superior Court rejected FX’s effort to dismiss the lawsuit on free speech grounds, finding that De Havilland was likely to prevail.
• However, in March, 2018, a California appeals court concluded that the portrayal was not highly offensive to a reasonable person and that, even if it was, De Havilland had failed to demonstrate that she could prove actual malice. As a result, the appeals court ruled that California law and the First Amendment required that the lawsuit be dismissed.
• In July, 2018, De Havilland lost her bid in the California State Supreme Court. She and her lawyer then petitioned the U.S. Supreme Court, seeking a reversal of the appeals court ruling and a jury trial.
• The issue purportedly hoped to be decided by the Supreme Court is whether the First Amendment creates an absolute immunity from suit for publishers of “docudramas” or if this format is governed as all other formats are: by the actual malice standard found in New York Times v. Sullivan. Unfortunately for De Havilland, those efforts are now moot.
IMPLICATIONS OF THE SUPREME COURT’S DISMISSAL:
Though De Havilland, for nearly the past two years, vehemently maintained that the miniseries 1) damaged her professional reputation, 2) violated her own free speech rights by deliberately misrepresenting her, and 3) that her likeness was illegally used without her permission or consultation, the Supreme Court dismissed her case without comment.
Many fear this ruling could open the doors for studios to wield too liberal a creative license when depicting real people. As De Havilland’s attorney, Suzelle Smith, states:
“The appellate court set out a rule that means everyone is at the mercy of the entertainment and news media. Living people can be falsely portrayed because the public may have an interest in the story, whether accurate or a pack of lies.”
On the other hand, many view the fact that De Havilland is a public figure as the determining issue in this case and the Supreme Court’s dismissal not all that surprising. As UCLA Law professor, Eugene Volokh, explains, public figures do not have exclusive control over their name and likeness:
“They do when it comes to commercial purposes, like advertising, but that isn’t the case here. The question before the Supreme Court is not whether the [appellate] decision was wrong but whether it conflicts with decisions regarding the First Amendment in other states.”
THE MUSIC MODERNIZATION ACT
https://www.congress.gov/bill/115th-congress/house-bill/1551/text
Introduction: In the most recent effort to update it for the digital age, tech companies, music publishers, songwriters, musicians and radio broadcasters, working together, have succeeded in assembling and having signed into law an ambitious overhaul of U.S. music copyright law. Marking one of the most high-profile events for the music industry in history, President Trump signed the eagerly anticipated Music Modernization Act (MMA) into law this past November. The Recording Academy calls it the biggest update to music legislation in 40 years, as it replaces a number of long-standing items in the industry. Putting 180 pages into a nutshell…
What will it do? The MMA seeks to update music copyright law for the modern, digital era with three primary objectives:
1. To make sure sound recording copyright owners for recordings made prior to February 15, 1972 have certain benefits and protections of the Copyright Act; and setting a firm date for these sound recordings to join the public domain;
2. To properly allocate and pay digital performance sound recording royalties for music producers; and
3. To update licensing and royalty rules for streaming services to pay rights-holders in a more streamlined fashion.
These objectives are planned to be accomplished through a new, non-profit, independent and centralized entity: The “Mechanical Licensing Coalition” (MLC).
The MLC is intended to offer:
1. A “one-stop-shop” or “blanket license” for streaming services to get songwriters’ licenses for all songs they wish to stream; and
2. A way for songwriters and music publishers to receive appropriate funds.
Under the MMA, the hope and belief is that music creators will have a more reliable way of collecting money owed to them.
How the MMA will change the business:
• Digital music and music streaming, in particular, has become problematic because artists and songwriters aren’t being properly paid royalties for the music they perform or write. The mission of the Music Modernization Act is to standardize an industry in desperate need of uniformity.
• Right now, it isn’t easy for songwriters or publishers to collect royalties or for streaming services to comply with the law because it’s just so difficult. The burden of identifying and compensating songwriters has, in the past, been on the streaming services. However, under the new law:
a) The governing agency, the nonprofit Mechanical Licensing Coalition, will create a database of the owners of mechanical licenses of sound recordings with major music publishers expected to assist.
b) It will also form blanket royalty rates to pay composers and songwriters when a song is streamed, collecting and disbursing the funds and making it easier for rights holders to be paid.
c) The MMA establishes new guidelines for when older recordings not covered by the U.S. Copyright Act can filter into the public domain.
d) In addition, producers, mixers and sound engineers who were part of the creative process and development of a recording are eligible to receive royalties.
THE SATANIC TEMPLE AND NETFLIX SETTLE
Satanic Settlement Reached in 'Chilling Adventures of Sabrina' Statue Suit
Intro: What began as a single, threatening cease and desist letter and quickly developed into a $50 million lawsuit, has now been amicably resolved in a settlement agreement.
The Former Suit:
• This past November, The Satanic Temple sued Netflix and Warner Brothers, claiming a statue displayed in the Netflix series Chilling Adventures of Sabrina infringed its copyright in a monument of the deity, Baphomet.
• The Satanic Temple also accused Netflix and Warner Brothers of misleading consumers as to the statue’s origin, stating that it originally designed and commissioned its statue of the deity, “to be a central part of its effort to promote First Amendment values of separation of church and state and equal protection.”
• TST also wasn't happy with having its statue associated with certain themes of the show, specifically the "prominent use of this symbol as the central focal point of the school associated with evil, cannibalism and murder." The final cause of action was injury to business reputation. The Satanic Temple argued that the way the Netflix show associates it with evil tarnishes not only Baphomet’s reputation, but also The Satanic Temple’s.
The Settlement: Though The Satanic Temple was previously requesting an order to enjoin Netflix and Warner Brothers from any future reproduction or distribution of the show with its Baphomet statue, it now seems to be satisfied with credit for the unique elements of the Baphomet statue being given in the already filmed episodes’ credits. The remaining terms of the settlement are subject to a confidentiality agreement.
SABRINA’S SATANIC COPYRIGHT DISPUTE
BACKGROUND:
Chilling Adventures of Sabrina, a Netflix show produced by Warner Brothers, tells the story of Sabrina Spellman who attends “The Academy of Unseen Arts.” The series’s shots of the school depict a statue of Baphomet, a goat-headed, part-male, part-female deity, belonging to The Satanic Temple, also known as the United Federation of Churches.
• Baphomet has historically involved a goat’s head, also known as the “Sabbatic Goat,” on a female body associated with Lilith, a figure from Jewish mysticism sometimes considered a “goddess of the night.”
Just as the show debuted on Halloween, The Satanic Temple sent a demand letter to Netflix and Warner Brothers, demanding that the companies:
1) remove any advertisements featuring the Baphomet statue,
2) refrain from using its likeness in any and all works, and
3) produce the origins of the statue used in the series.
THE LAWSUIT:
Only a week later, these demands have evolved into a $50 million lawsuit, the Satanic Temple alleging misappropriation of copyright, defamation of its deity, and reputational injury to the church.
• The Satanic Temple claims copyright registration on its sculpture of Baphomet and that this is a “textbook example of the hornbook explanation of copyright protection that copyright law protects unique expressions, but not the ideas themselves.”
The Satanic Temple also faults Netflix and Warner Brothers for misleading consumers as to the statue’s origin, stating that it originally designed and commissioned its statue of the deity, “to be a central part of its effort to promote First Amendment values of separation of church and state and equal protection.”
• The Satanic Temple argues that the way the Netflix show associates it with evil tarnishes not only Baphomet’s reputation, but also that of The Satanic Temple.
Despite allegations of copyright infringement, the final cause of action is injury to business reputation. However, The Satanic Temple also requests an order enjoining Netflix and Warner Brothers from any future reproduction or distribution of the show with its Baphomet statue.
Warner Brothers has yet to comment on the suit.
THE GIRL SCOUTS HAVE SUED THE BOY SCOUTS
https://www.marketwatch.com/story/girl-scouts-sue-boy-scouts-for-trademark-infringement-2018-11-06
BACKGROUND:
In October, 2017, the Boy Scouts of America announced it would be opening its doors to girls, starting in 2019. A year later, the Girl Scouts are now suing them for trademark infringement and interference with economic prospects. The Girl Scouts claim that this new “inclusive rebranding” has caused consumer confusion, ranging from mistaken Boy Scouts enrollments to the misconception that the two organizations have merged.
POSITION TAKEN BY THE GIRL SCOUTS:
The Boy Scouts of America had no right under state or federal law to rebrand itself as “the Scouts” or use the words “scouts” or “scouting” in connection with services offered to girls. This caused the false message to be sent that the Boy Scouts are now the exclusive organization providing leadership development services to girls. If the Boy Scouts want to broaden their base, it cannot do so at the Girl Scouts’ expense.
EXAMPLES OF CONSUMER CONFUSION OFFERED BY THE GIRL SCOUTS:
1) Minnesota families looking to sign up their girls were erroneously told the Girl Scouts and the Boy Scouts have merged; and
2) In Indiana and South Dakota, parents mistakenly signed up their daughters to girls’ programs in the Boy Scouts.
THE MUSIC MODERNIZATION ACT SIGNED INTO LAW
https://www.rollingstone.com/music/music-news/trump-signs-music-modernization-act-736185/
BACKGROUND/HISTORY: WHY THE FUSS?
For over a decade, the music industry has proposed a motley series of copyright reform bills to Congress, only to see them fail, time and time again. However, in the most recent effort to update it for the digital age, tech companies, music publishers, songwriters, musicians and radio broadcasters, working together, have finally succeeded in assembling and having signed into law an ambitious overhaul of U.S. music copyright law. Marking one of the most high-profile events for the music industry in history, President Trump signed the eagerly anticipated Music Modernization Act (MMA) into law earlier this month. He was accompanied by Mike Love, Kid Rock, Jeff “Skunk” Baxter of the Doobie Brothers, and other music moguls for the signing ceremony.
THE ACT: WHAT WILL IT DO?
The MMA seeks to update music copyright law for the modern, digital era with three primary objectives:
to make sure songwriters and artists receive royalties on songs recorded before 1972;
to properly allocate royalties for music producers; and
to update licensing and royalty rules for streaming services to pay rights-holders in a more streamlined fashion.
This is planned to be accomplished through a new, non-profit, independent and centralized entity: The “Mechanical Licensing Coalition” (MLC).
The MLC is intended to offer:
a “one-stop-shop” or “blanket license” for streaming services to get songwriters’ licenses for all songs they wish to stream; and
a way for songwriters and music publishers to receive appropriate funds.
Under the MMA, the hope and belief is that music creators will have a more reliable way of collecting money owed to them.
The MLC will:
Administer, collect, distribute, and audit mechanical royalties paid by digital service providers (DSPs) in connection with interactive digital streaming on services like Spotify, Apple Music, and Pandora;
Create and maintain a publicly accessible database of copyright information for all songs, match musical compositions with sound recordings, and track down missing copyright claimant information;
Hold unclaimed royalties for three (3) years while tracking down the respective copyright claimant information, after which it will distribute the unclaimed royalties on a market-share basis; and
Have the ability to audit DSPs, to ensure proper reporting and payment, and pursue them for infringement of rights, should they fail to meet their reporting and royalty payment requirements
Copyright owners can audit the MLC with respect to their payments, as well.
BETTER MATCHED AND INCREASED ROYALTIES:
Royalty rates will determined on a free market, willing buyer/seller basis;
No more administrative fees for simply distributing songwriter royalty; and
Songwriters required to receive at least 50% of all royalties for any unmatched work (sound recording for which ownership in underlying, musical work has not been identified).
IMPROVED REPRESENTATION:
The MLC board will have 14 seats: 4 major music publishers, 6 independent music publishers, and 4 self-published songwriters;
Songwriters will have equal representation on the advisory committee overseeing unclaimed royalties; and
Songwriters will have equal representation on the dispute resolution committee overseeing and resolving disputes of copyright ownership and royalty distribution.
IMPROVED COURT PROCEEDINGS FOR PERFORMANCE ROYALTY RATES:
Another important change made by the MMA is that rate court judges will now be randomly assigned and rotated through rate proceedings that ASCAP and BMI are subject to, rather than the same judge who decides their rates being assigned to the proceedings. This should ensure fairer outcomes and prevent DSPs and other licensees from being able to “game the system” by going to a judge they believe will give them a more favorable rate. Judges will also now be able to consider other market rates, like sound recording royalties, when setting ASCAP and BMI performance royalty rates for streaming.
NO MORE “NOTICE OF INTENT” LOOPHOLE:
For many years, the system for licensing a songwriter’s copyright has been a mess. Streaming services, also known as Digital Service Providers or DSPs, have reportedly had trouble identifying the owners of music rights, which has led to songwriters not getting paid and streaming services repeatedly being sued for non-payment. Whether this “inability” to identify copyright owners was claimed in good faith or not didn’t matter much with the use of “Notices of Intent” (NOIs). Rather than determining how to properly make payments, NOIs served as a lucrative and exceedingly utilized loophole for DSPs to play music while avoiding paying songwriters and publishers. However, under the MMA, NOIs are no more. DSPs are now required to pay for all uses of copyrighted works, regardless of whether they can find an owner, to the MLC.
PRE-1972 RECORDING ROYALTIES:
The MMA changes the way copyright law treats pre-1972 sound recordings. Previously, the composer of a song recorded before 1972 could get copyright protection but a recording artist was forced to resort a patchwork of state-level laws, some of which afforded quasi-copyright protection and others, nothing at all. Under the MMA, sound recordings made before 1972 will receive royalties for digital and satellite exploitation, 50% of which will be paid to the owner of the sound recording and the remaining 50% to the artist.
The MMA also brings older recordings into the public domain sooner. Under pre-MMA federal law, the state-level protections would eventually be preempted by 2067. However, now, song recordings made before 1923 will no longer receive copyright protection after a 3-year grace period, 1923-1956 recordings will enter the public domain over the next several decades, and only recordings made in 1957 or later will continue under copyright until 2067.
Finally, the MMA contains an “orphan works” provision, which should allow for increased use of old recordings, even if the rightsholder can’t be found. After filing a notice with the copyright office and making sure the recording is not in commercial use, anyone can use a pre-1972 recording for non-commercial purposes. The rightsholder then has 90 days to object and, if they do, the user can still argue “fair use.”
PAYMENT OF ROYALTIES TO PRODUCERS AND SOUND ENGINEERS:
Under the MMA, SoundExchange will directly compensate studio professionals for the digital performance of recordings that artists have agreed to give a portion of their royalties to and give them a direct legal process for collecting these royalties.
BREAKING NEWS:
Yesterday, October 16th, the Copyright Office issued an interim rule and notice of inquiry regarding sound recordings fixed before February 15, 1972:
As required by the MMA, the interim rule establishes a mechanism for rights owners to file schedules listing their pre-1972 sound recordings with the Office, for individuals to request timely notification of when such filings are indexed into the Office’s public records, and for the submission of contact information by entities publicly performing pre-1972 sound recordings by means of digital audio transmission as of October 11, 2018.
In the notice of inquiry, the Office seeks public comment regarding the MMA’s noncommercial use exception. The Office is soliciting comments regarding the specific steps that a user should take to demonstrate she has made a good faith, reasonable search to determine if a pre-1972 sound recording is being commercially exploited. The Office also solicits comments regarding the filing requirements for the user to submit a notice of noncommercial use, and for a rights owner to submit a notice objecting to such use.
LYNYRD SKYNYRD: REVERSAL FROM THE APPELLATE COURT
https://www.hollywoodreporter.com/thr-esq/appeals-court-reverses-ban-lynyrd-skynyrd-movie-1151074
RECAP: In 2017, heirs of Ronnie Van Zant and Steve Gaines, two members of band Lynyrd Skynyrd who were killed in the infamous 1977 plane crash, sued Cleopatra Films, producer of Street Survivor: The True Story of the Lynyrd Skynyrd Plane Crash, over the company working with Artimus Pyle, a former drummer in the band, allegedly in violation of a previous settlement agreement and Consent Order. An injunction against the making of the film had the press and other free speech advocates squealing about prior restraints. However, the Second Circuit Court of Appeals lifted the injunction earlier this month.
BACKGROUND: According to popular folklore, the survivors of the plane crash took a blood oath to never use the Lynyrd Skynyrd name after the crash. This agreement was tested nearly a decade later, in 1987, in a lawsuit over a “Lynyrd Skynyrd Live” album and tour. The parties in that litigation, including Pyle, entered into a settlement agreement, later adopted as a Consent Order, prohibiting the production of a movie on the history of the band, while, at the same time, permitting Pyle to make a movie that describes his experiences and refer to the band, so long as it does not serve as a history of the band.
In August, 2017, U.S. District Court Judge Robert Sweet prohibited Cleopatra from moving ahead with the film, even though it is said to focus on Pyle and his relationship with the band, rather than a being a film about Lynyrd Skynyrd.
ISSUES AND DISCUSSION ON APPEAL: An appeal came soon after and presented the issues of 1) whether release of the movie would violate the settlement; and 2) whether this would be enough to stop the release of the film.
Interestingly, the Reporters Committee for Freedom of the Press and 13 media organizations saw the district court’s ruling as dangerous, arguing, “if this Court were to permit an injunction permanently preventing the publication of speech in this instance, such a precedent could be used to permanently enjoin the press from publishing information from a source on the bases of the source’s agreements with other entities.”
However, to this concern, the appellate court does not seem to view district court judge Sweet as a government entity, stating, “No government entity has obtained a court order to prevent the making or release of the Film…not does this case involve a claim of defamation or invasion of privacy as to which the First Amendment imposes special requirements.” So, in other words, this is not a First Amendment violation involving an unlawful prior restraint.
The three circuit judges do say the case “implicates free speech concerns” and counsels judges to be careful about permitting an expressive work to be enjoined, at least outside the context of copyright law, where built-in free speech safeguards are generally enough to address First Amendment concerns.
CONCLUSION: However, because 1) the Consent Order permits Pyle to make such a film, 2) the injunction restricts actions of an entity not a party to that contract in the first place (Cleopatra), and likely 3) in light of Cleopatra becoming aware of its existence before spending significant money to make the film, the court found the injunction was not adequately supported:
“That crash is part of the 'history' of the band, but it is also an 'experience' of Pyle with the band, likely his most important experience," notes the Second Circuit. "Provisions of a consent decree that both prohibit a movie about such a history and also permit a movie about such an experience are sufficiently inconsistent, or at least insufficiently specific, to support an injunction."
“Blurred Lines” Case
https://www.hollywoodreporter.com/thr-esq/appeals-court-wont-rehear-blurred-lines-case-1126253
Williams v. Gaye
JX: U.S. Court of Appeals for the 9th Circuit
REFRESHER: In 2015, Marvin Gaye’s family prevailed in a jury trial against Robin Thicke and Pharrel Williams (and originally rapper T.I.) for infringement of Marvin Gaye’s song, “Got to Give It Up.” This judgment was largely affirmed by the 9th Circuit Court of Appeals this past March. As a result, Thick and Williams must fork over $5.3 million, plus a 50% running royalty on future exploitation of the song “Blurred Lines.”
“Blurred Lines” was the biggest hit 2013 and was claimed by the Gaye family to be the product of copying “Got to Give It Up.” Lucky for rapper T.I. (aka Clifford Harris, Jr.), who wrote and rapped a verse of the song, the appeals court did reverse the district court’s finding of liability on his part.
• The 9th Circuit Court of Appeals voted to deny a rehearing of the controversial “Blurred Lines” case. Circuit Judge Milan D. Smith found that Gaye’s song was entitled to broad protection and that the trial judge did not abuse discretion in allowing certain testimony from the Gaye’s music experts, which allegedly included some opinions regarding non-copyrighted elements. As the appeal largely turned on an evidentiary challenge rather than a constitutional issue, it is unlikely the Supreme Court will hear the case, should any petition be filed.
• Interestingly, the 9th Circuit Court of Appeals amended its opinion last week. The holding is the same, but it ditches any mention of the “inverse ratio rule.”
• There is (or many, at least, believe there ought to be) an inverse relationship between probative similarity and substantial similarity.
• Probative similarity requires evidence of copying, along with proof of access.
• Substantial similarity, on the other hand, goes to whether what was copied is too much of the wrong thing, often “the heart of the work.”
• Basically, the more probative similarity there is, the less access you need to prove copying. At the same time, the more access there is, the less probative similarity you need to prove access.
• Instead of copying (with its probative similarity) and misappropriation (for lack of a better term with its substantial similarity), the 9th Circuit has “external similarity” and “internal similarity”; external being objective evidence of similarity (analogous but not the same as probative similarity), and internal being the jury’s gut instinct (also analogous but not the same as substantial similarity).
• The Thicke-Williams parties had to concede access, but access continued to be used against them via the inverse-ratio rule. Since access was conceded, a thumb was placed heavily down on the “substantial similarity” side of the scale, so that even small amounts of similarity would suffice. In its original opinion, the 9th Circuit relied somewhat on the inverse-ratio rule to affirm the jury verdict and must have recognized it muffed it up and the resulting unfairness to the Thicke-Williams parties, as applied. The analysis of the inverse-ratio rule being unnecessary with Thicke-Williams’ admission of access, the Court decided to cut it out of the opinion.
Dissent: Judge Jacqueline H. Nguyen harshly criticized the decision as one that “allows the Gayes to accomplish what no one has before: copyright a musical style.” She further warned that the decision “establishes a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere.”
Potential for “chilling effect” on the music industry:While there are many critics that concur with Judge Nguyen’s dissent, Judge Milan D. Smith, Jr. in the majority opinion makes a somewhat surprising and important point. He rejects the idea that the verdict would harm creativity, and suggested that the case hinged more on the skills of lawyers: “Far from heralding the end of musical creativity as we know it,” Judge Smith wrote, “our decision, even construed broadly, reads more accurately as a cautionary tale for future trial counsel wishing to maximize their odds of success.”
Monkey Selfies
https://aldf.org/article/en-banc-review-requested-in-monkey-selfie-copyright-case/
Naruto v. Slater
JX: 9th Circuit Court of Appeals
So, after all that was said and the surprising amount done, monkeys do not have standing to sue under the Copyright Act. However, they do have standing to seek legal relief under Article III of the Constitution.
Refresher: Back in 2011 a crested macaque named “Naruto” snapped several pictures of himself with a camera belonging to wildlife photographer David Slater, while Slater was working in Indonesia. According to Slater, he strategically placed and adjusted the camera’s setting in an effort to get close up shots that, due to the macaques’ shy nature, were otherwise too difficult to capture.
• Dispute over the photo’s ownership originally arose in 2014 when it was posted on Wikipedia’s free-to-use website and, after Slater asked them to take it down, Wikipedia responded by stating the photo is uncopyrightable because an animal took it. Slater also included these photos in a book he published in 2014, Wildlife Personalities.
• In 2015, People for the Ethical Treatment of Animals (PETA) sued Slater and self-publishing company Blurb on Naruto’s behalf.
PETA’s Argument: Publishing and selling the photographs taken by Naruto infringed Naruto’s rights under the Copyright Act.
Defendants’ Argument: As a monkey, rather than a human, Naruto cannot own a copyright.
2016 District Court Ruling: The trial judge dismissed the action on the basis that even if Naruto did take the pictures by “independent, autonomous action,” the suit cannot continue as animals do not have standing in a court of law and, thus, cannot sue for copyright infringement.
Appellate Review: PETA appealed the District Court’s dismissal, before it was ultimately dismissed by the 9th Circuit Court of Appeals. “Our court’s precedent requires us to conclude that the monkey’s claim has standing under Article III of the United States Constitution. Nonetheless, we conclude that this monkey – and all animals, since they are not human – lack statutory standing under the Copyright Act.” In other words, U.S. Copyright law does not allow animals to sue, even though it does recognize the right of non-human beings to seek legal relief, generally.
The Court did not address who (if anyone) does own a copyright in the monkey selfie.
Because a monkey cannot perform any of the duties associated with property ownership, like policing or otherwise protecting its use (which PETA did for Naruto in this case), the court rejected PETA’s argument that Naruto could own intellectual property.
Not all rights have associated duties. For example, the 13th Amendment immunizes us from slavery. However, there is no associated duty for individuals, we are simply assured by the constitution that it cannot happen.
However, the Court may have strategically avoided answering the difficult question of who, if anyone, does own a copyright in the photo since the parties settled before the case’s ruling.
Implications of Naruto v. Slater for Recent and Increasing Advancements in Artificial Intelligence:
Naruto as Patient Zero for embarking on broader copyright protection - Naruto serves as patient zero for a problem that, with developments in artificial intelligence, will inevitably become increasing pertinent: are works created by non-human authors protected by copyright?
The position held by the United States Copyright Office is that copyright is an exclusive right of man. As a result, works produced by nature, animals, or plants are not protected by copyright.
The Naruto v. Slater case questioned this, but Slater wasn’t necessarily interested in whether a monkey can own copyrights. He wanted to prove his own copyright in a photo taken with his camera, with the insistence that he played a pivotal role in its creation.
The Court disagreed with Slater’s assertion that he owns a copyright in the photo, but also expressly ruled that neither does Naruto.
Artificial Intelligence - There have been some recent cases involving, not copyright being potentially held or not held by animals, but copyright by computer programs or artificial intelligence (AI). Of course, we are far from a computer, computer software, or a computer program or algorithm being considered a “human being” for the purposes of laws like the Copyright Act, or even a “person” for the purposes of the U.S. Constitution. (Jon J. Note: but AI do have citizenship rights in Saudi Arabia).
• Personal theory on AI advancement in the legal context: Addressing the court’s denial of PETA’s argument, the ability of a “being” to perform duties can be likened to the behavior of computer programs. A human being fulfilling duties associated with a right is really just a response to a set of conditions, like filing a lawsuit as a response to the condition of someone infringing/wrongfully exploiting your work. This is the fundamental definition of a computer program, in that a computer program’s code and, more specifically, every “0” or “1” of its binary code, is essentially a “yes” or a “no” to a condition or set of conditions. Without emotional, irrational, and other frontal-lobe complications, AI may soon be (if it isn’t already) more capable of fulfilling this duty than most humans are.
Olivia DeHaviland Update - California Supreme Court refuses to revive, so she’s takin’ it to the USSC
https://www.lowelaw.com/california-supreme-court-puts-de-havilland-case-to-rest
De Havilland v. FX Networks, LLC
JX: SCOTUS
SUMMARY/RECAP:
Ever since the 1964 Supreme Court Decision in New York Times Co. v. Sullivan, public figures must demonstrate “actual malice” in order to prevail in a defamation case. Accordingly, this means “knowledge of falsity” or “reckless disregard of the truth.” As a result, this high standard has allowed journalists considerable leeway when reporting on prominent individuals. However, what about those who make movies or television shows based on real life and using characters based on real people, but are ultimately works of fiction? This is the question 102-year-old actress Olivia de Havilland seeks to put before the USSC in the petition for writ she plans to file later this month.
PROCEDURAL HISTORY:
• In June 2017, De Havilland sued FX and Bryan Murphy for infringement of common law right of publicity, false light and unjust enrichment. The suit concerns Catherine Zeta Jones’ portrayal of De Havilland’s character, in the FX series Feud: Bette and Joan, as a vulgar gossip and hypocrite.
• In September 2017, a Los Angeles Superior Court rejected FX’s effort to dismiss the lawsuit on free speech grounds, finding that De Havilland was actually likely to prevail.
• However, in March, 2018 a California appeals court concluded that the portrayal was not highly offensive to a reasonable person and that, even if it was, De Havilland had failed to demonstrate that she could prove actual malice.
• De Havilland’s attorney states that a petition for writ will be filed in the USSC this month.
ISSUE TO BE DECIDED:
Whether the First Amendment creates an absolute immunity from suit for publishers of “docudramas” or if this format is governed as all other formats are: by the actual malice standard found in New York Times v. Sullivan.
LIKELY OUTCOME:
The petition will come just as Viacom goes to trial over alleged defamation in the VH-1 docudrama CrazySexyCool, where Perri “Pebbles” Reid (former manager of the 1990s R&B group) is seeking $40 million for being depicted as an unsavory, manipulative manager.
• In 2016, a Georgia Judge rejected Viacom’s motion for Summary Judgment, later denying a bid for reconsideration in 2017. The significance is that after Viacom made the argument that the judge had erred on his analysis of actual malice, the judge responded by stating that he wouldn’t permit any rule “requiring a subjective showing of actual doubt.”
• De Havilland might be able to use this decision to show that there is a split in the Circuit courts in interpreting and analyzing “actual malice” in the context of docudramas.
LeBron James: "I Always Thought That I Had the Right to License What I Look Like" (Tattoo Copyright revisited)
Solid Oak Sketches, LLC v. 2K Games, Inc. and Take-Two Interactive Software, Inc.
JX: US District Court of the Southern District of NY
SUMMARY/RECAP:
The ongoing case between Take-Two Interactive Software and Solid Oak Sketches has raised questions about the depiction of body art in games, films, and other media. Under US copyright law, permission from the copyright owner is not required when the use of copyrighted material is “limited or fleeting” enough to constitute fair use or “de minimis.”
• Take-Two argues that its use of real tattoos depicted on well-known players, like LeBron James, in its video game NBA 2K falls under these definitions.
• Purported copyright owner of many of these tattoos, Solid Oak Sketches, argues that it does not and that permission was required before the tattoos could rightfully be depicted in the video game.
PROCEDURAL HISTORY:
• In February 2016, Tattoo studio Solid Oak Sketches filed a lawsuit against videogame company Take-Two Interactive Software, claiming it owned copyrights to tattoo designs depicted on the likeness of multiple NBA players in Take-Two’s videogame, NBA 2K.
• In March 2018, a New York federal judge rejected Take-Two’s motion to dismiss the case on fair use or “de minimis” grounds.
• On August 23, 2018, NBA star LeBron James testified in the US District Court for the Southern District of NY, stating:
1) “In the 15 years since I’ve been playing professional basketball, this is the first time that anyone has suggested to me that I can’t license my likeness without getting the permission of the tattooist who inked my tattoos”;
2) “my tattoos are a part of my persona and identity; if I am not shown with my tattoos, it wouldn’t really be a depiction of me”; and
3) that because he granted Take-Two permission to use his likeness in the game, his body art is included as a necessary part of his likeness.
• Take-Two’s attorney, Dale Cendali, in her brief supporting Take-Two’s motion for summary judgment, goes through the development of various tattoos, including those featured on the bodies of Eric Bledsoe and Keyon Martin. It cites:
1) declarations from James and other NBA players regarding their tattoos, including James’s statement that when he got a tattoo of a lion’s head, he supplied a picture of a lion that was on the back of a deck of cards from a hotel he once stayed at; and
2) the views of tattoo artist Thomas Ray Cornett, whose work is among the tattoos in question – “the position Solid Oak has taken is completely inconsistent with how I feel my work should be used, and quite candidly, I feel that Solid Oak’s claims are ridiculous.”
ISSUE(S) TO BE DECIDED:
Whether Take-Two’s use of NBA players’ body art in its depictions of the NBA players in its game NBA 2K is permissible under fair use or “de minimis,” or required Solid Oak Sketches’s permission.
[Take-Two also requests the judge decide whether Take-Two’s use of tattoos was authorized and whether Solid Oak Sketches can establish the tattoos’ originality.]
LIKELY OUTCOME:
If the judge does not agree with the views held by James, Cornett, and many others, the case is likely to go to trial and may forever change the use of cosmetic details of a person, like body art, in media.
DISNEY’S CAUTIONARY CASE MOVES FORWARD:
Rearden LLC v. Walt Disney Company, Crystal Dynamics, Inc., Twentieth Century Fox Film Corporation, Paramount Pictures Corporation
JX: U.S. District Court for the Northern District of California
• Rearden, a visual effects firm founded by Silicon Valley entrepreneur Steve Perlman, alleges in its copyright infringement suit against Walt Disney, Crystal Dynamics, Twentieth Century Fox, and Paramount Pictures that Hollywood has used stolen facial motion-capture technology and is demanding that these motion pictures be impounded and destroyed. On June 18th, Federal Judge Tigar signed off on Rearden’s vicarious and contributory copyright infringement claims after Rearden pursued a novel copyright theory.
• The theory: Rearden asserts that its CGI program, Contour, is an original literary work of authorship fixed in a tangible medium of expression when stored on computer hard drives. As such, he looks to hold the studios vicariously liable for infringement, in that they are a position to police and/or had the right and ability to supervise and control the performance of Digital Domain 3.0.
• Digital Domain 3.0 is a firm Rearden previous succeeded against in a fight over software known as the MOVA Contour Program, which has been used to capture the motion of the human face to create computer graphic images in movies.
• In his order, Judge Tigar writes, “Rearden alleges that DD3 provided services pursuant to contracts that gave each studio the ‘unrestricted right to cancel any portion of the Services.’ Thus, Rearden alleges that the Studios had the right to prevent DD3 from engaging in the infringing activity because they had the unrestricted right to cancel the use of the MOVA Contour program. Unlike in Amazon.com, where Google only had the right to terminate the Adsense partnership – which would not have stopped direct infringement by third parties – the studios could have ended the direct infringement by cancelling the use of the MOVA Contour program. As a result, Judge Tigar states that Rearden has made a plausible showing that the studios received direct financial benefit in exploitation of Rearden’s copyright in the Contour program.”
REN VENTURES' "SABAAC" HAS SUFFERED A DEFEAT
Lucasfilm LTD. LLC v. Ren Ventures LTD.
JX: U.S. District Court for the Northern District of California
• In a summary judgement filed on June 29th, U.S. District Court Judge Richard Seeborg ruled that Ren Ventures, the maker of an app that lets Star Wars fans play a card game of Sabacc, has violated copyrights belonging to Disney’s Lucasfilm. However, unwilling to rule out the possibility of innocent infringement, the judge is reserving only the question of willful infringement for a jury, stating that even though it wasn’t reasonable for Ren Ventures to assume Lucasfilm did not own Star Wars-related rights, “evidence of defendants’ awareness of the Works falls short of establishing actual awareness of infringing activity.”
"BLURRED LINES" THE APPEAL GETS A HARD "NO"
https://www.hollywoodreporter.com/thr-esq/appeals-court-wont-rehear-blurred-lines-case-1126253
Williams v. Gaye
JX: U.S. Court of Appeals for the 9th Circuit
• In another victory for Marvin Gaye’s family, the 9th Circuit Court of Appeals has voted to deny a rehearing of the controversial “Blurred Lines” case. Circuit Judge Milan D. Smith found that Gaye’s song was entitled to broad protection and that the trial judge did not abuse discretion in allowing certain testimony from the Gaye’s music experts, which allegedly included some opinions regarding non-copyrighted elements. As the appeal largely turned on an evidentiary challenge rather than a constitutional issue, it is unlikely the Supreme Court will hear the case, should any petition be filed.
• Interestingly, the 9th Circuit Court of Appeals amended its opinion last week. The holding is the same, but it ditches any mention of the “inverse ratio rule.” There is (or many, at least, believe there ought to be) an inverse relationship between probative similarity and substantial similarity. Probative similarity requires evidence of copying, along with proof of access. Substantial similarity, on the other hand, goes to whether what was copied is too much of the wrong thing, often “the heart of the work.” Basically, the more probative similarity there is, the less access you need to prove copying. At the same time, the more access there is, the less probative similarity you need to prove access.
• Instead of copying (with its probative similarity) and misappropriation (for lack of a better term with its substantial similarity), the 9th Circuit has “external similarity” and “internal similarity”; external being objective evidence of similarity (analogous but not the same as probative similarity), and internal being the jury’s gut instinct (also analogous but not the same as substantial similarity).
• The Thicke-Williams parties had to concede access, but access continued to be used against them via the inverse-ratio rule. Since access was conceded, a thumb was placed heavily down on the “substantial similarity” side of the scale, so that even small amounts of similarity would suffice. In its original opinion, the 9th Circuit relied somewhat on the inverse-ratio rule to affirm the jury verdict and must have recognized it muffed it up and the resulting unfairness to the Thicke-Williams parties, as applied. The analysis of the inverse-ratio rule being unnecessary with Thicke-Williams’ admission of access, the Court decided to cut it out of the opinion.
NO RE-HEARING RE OLIVIA DE HAVILLAND
Olivia de Havilland v. FX Networks, LLC
JX: Court of Appeal of the State of California Second Appellate District, Division Three
• On July 11th, the California Supreme Court denied de Havilland’s petition to review the California’s 2nd District Court of Appeals’ decision to throw out her case on 1st Amendment grounds. In her lawsuit against FX and producer Ryan Murphy, de Havilland claims that the use of her identity and the depiction in the series “Feud: Bette and Joan” was unauthorized and inaccurate. With her only recourse now being to petition the U.S. Supreme Court, it will be interesting to see if de Havilland, now 102, decides to do so.
EU SAID NO TO THANOS SNAP COPYRIGHT REFORM
https://www.politico.eu/article/european-parliament-votes-to-block-copyright-reform/
JX: Europe
• On July 5th, the European Parliament voted to reject a set of new copyright rules. These rules would have forced companies like Google and Facebook to monitor their platforms much more closely for copyright infringement and afforded more power to license holders, like publishers, media companies, and record labels. The debate has been controversial, with both sides waging fierce lobbying campaigns in the days leading up to the vote. The bill, now rejected, will be sent back to Parliament for further discussion, all 751 European lawmakers free to submit amendments to the text.
THIS IS WHY YOU CHECK YOUR PHOTOGRAPHERS
https://www.cnn.com/style/article/statue-of-liberty-stamp-lawsuit/index.html
Robert S. Davidson v. The United States (Acting through the USPS)
JX: U.S. Court of Federal Claims
On June 29, 2018, Judge Bruggink for the U.S. Court of Federal Claims ruled that the Postal Service owes Robert Davidson $3.5 million for a Mix-up, infringing his copyright in a replica of the Statue of Liberty.
Facts:
In 2008, when the Postal Service was looking for new images for their Forever stamps.
It’s then-manager, was looking for an image of the Statue of Liberty that was “different and unique”
Fun fact: it’s been used in over 20 different stamps.
The Postal Service found the image of Davidson’s work on a photo service and reportedly purchased a license of that photograph.
However, the Postal service was not aware that the image was not the real Statue of Liberty.
In 2010, instead of using a photo of the actual Statue of Liberty, the U.S. Postal Service released its Forever stamps featuring a close up of Davidson’s much smaller replica that stands on the Las Vegas Strip in front of the New York-New York Hotel & Casino in Las Vegas, Nevada.
About three months and nearly 3 billion stamps later, the Postal Service learned about the mix-up.
Instead of issuing an apology or admitting a mistake of any kind, the Postal Service publicly stated,
“we really like the image and are thrilled that people have noticed.”
After about 4.9 billion stamps sold, which amounts to about $2.1 billion in sales, the stamp featuring Davidson’s Lady Liberty was discontinued.
In 2013, Davidson filed suit, claiming the sculptor was original and therefore protected and, thus, the Postal Service had infringed his work. The government argued that because the statue is a replica of the true Lady Liberty in New York, it doesn’t contain original work and Davidson’s claimed copyright in the sculptor is invalid.
However, the court disagreed. Judge Bruggink ruled that Davidson’s work is original, in that he made the statue “his own creation, particularly the face. Because we find that Mr. Davidson’s work was original and because the Postal Service’s use of it was not permitted by statute, he is entitled to compensation in the amount of $3,554,946.95, plus interest.”
Ruling:
As one might expect, the suit depended on whether Davidson’s statue was sufficiently original to be considered an original work and, thus, afforded protection under U.S. copyright law.
After citing multiple differences, many of which were originally offered by Davidson, including her eyes, upper lip, and overall more feminine face, the court sided with Davidson.
As Judge Bruggink states, “The portion used was entirely of what we consider to have been the original work contributed by Mr. Davidson. The government’s only real defense is that its use did not particularly harm plaintiff’s business as an industrial sculptor. That may be true, but we also note that it certainly did not benefit him. The Postal Service offered neither public attribution nor apology.”
Cue the benchslap: “A necessary element to any infringement claim is not just that the work as a whole is original but also that the part copied by the defendant actually be original (from Harper & Row v. Nation Enterprises, U.S. 1985). Defendant argues that infringement cannot be assumed simply because the two works are found to be different. The government points to the fact that the Postal Service did not notice the difference between the two faces itself until notified months after producing many millions of stamps. The conclusion for defendant is that nothing original must have been copied. This is nonsense.
Lesson:
• As a practical lesson, don’t be like the Postal service, do the clearance work when you license content.
LENZ V. UNIVERSAL MUSIC CORP.
JX: US 9th Circuit Court of Appeals
Prince and Universal v. Infamous Nemesis - “Dancing Baby”
After over ten years of litigation, it looks like Prince and Universal are finally calling it quits at “going crazy” over 13-month-old dancing baby, Holden.
• In 2007, Stephanie Lenz posted a video of her 13-month-old baby, Holden, dancing to Prince’s song “Let’s Go Crazy” on YouTube.
• After she posted her video, Universal Music registered a takedown with YouTube, claiming a copyright violation.
• In response, Lenz sent YouTube a counter-notification, stating that her video did not infringe Universal’s copyright and, as such, the video should be reposted.
• Following the video being offline for weeks, Lenz was assisted by attorneys at the Electronic Frontier Foundation, who saw her situation as a perfect test-case in the booming world of social media, and filed suit.
o She claimed that Universal had violated the Digital Millennium Copyright Act (DMCA) by misrepresenting its copyright in failing to recognize or consider that the video was a non-infringing fair-use.
• In 2014, a panel of judges of the 9th Circuit Court of Appeals ruled that copyright owners must consider fair use before sending takedown notices.
o Still, the federal appellate court agreed with Universal that if a copyright owner forms a subjective good-faith belief that allegedly infringing material does not constitute fair use, this is enough to shield it from liability for misrepresentation.
o The waters, yet again, left muddy, the Supreme Court invited acting solicitor general, Jeffrey Wall to weigh in on the controversy. Five months after being invited to give input, he told the Supreme Court that a “significant legal error” had been made, in that copyright owners should not be liable “simply because an unknowing mistake is made.” Even so, he advised the Supreme Court to pass on the case and in June 2017, Holden now dancing in grade school, it denied a review.
• With a minute order by the Appellate court indicating the parties have reached a settlement in principle, it seems no later trial will be had.
• Though presumably good for the parties, with so much left unsettled, it seems a lot has been lost: 1) the opportunity to find truth in Universal’s subjective beliefs about the video, 2) to nail down the definition of “knowingly” in regard to copyright misrepresentations for similar cases, and 3) the opportunity to establishing clear, followable precedent for an occurrence that will inevitably repeat itself in one form or another.
FERRICK V. SPOTIFY USA, INC.
JX: New York Southern District Court
Spotify Class Action Settlement - Better Asking for Forgiveness Now Than Permission Then
On May 17, 2018, Federal District Court Judge for the Southern District of New York, Alison Nathan, granted her final approval to a $112.5 million settlement of a class action against Spotify.
• The suit began as a pair of class actions about three years ago, one led by David Lowery and the other by Melissa Ferrick.
• Both alleged that Spotify failed to adequately complete the steps required for compulsory licenses of their song composition, including payment, before allowing the songs to be available on their online platform, all the while reaping the benefits.
• The two actions were then consolidated and a proposed settlement of $112.5 million was reached between Spotify and the songwriters involved. It includes an immediate cash payment of $43.55 million to class members and a commitment to pay ongoing royalties.
• Though an “agreement” was reached regarding the proposed settlement (to be proposed to the Court for approval), it was not without controversy.
o Wixen Publishing Group, whose artists include Tom Petty, Rivers Cuomo of Weezer, and Rage Against the Machine’s Tom Morello and Zach De La Rocha, states in a filing, “the Settlement Agreement is procedurally and substantively unfair to Settlement Class Members because it prevents meaningful participation by rights holders and offers them an unfair dollar amount in light of Spotify’s ongoing, willful copyright infringement of their works.”
o Wixen and other objectors told judge Nathan that the proposed deal gives Spotify a 98.7% discount for non-willful infringement and a discount of virtually 100% or a “free-pass” for willful infringement, in light of statutory damages. Such statutory damages allow up to 150k/work for willful infringement and 30k/work for non-willful infringement.
o Wixen even went on to file its own lawsuit, asserting $1.6 billion in damages, around the same time Spotify made plans to go public official.
• However, after a fairness hearing, Judge Nathan granted the proposed settlement and overruled all objections by Wixen, finding that they no longer had standing to challenge the settlement after opting out of it.
o Judge Nathan expressed her reasoning as follows: “The combination of the immediate and future monetary relief, along with the non-monetary benefits provided, constitutes a significant recovery. Ultimately, the Court is persuaded that determining how many infringements occurred or defining the exact size of the class at this stage would undermine the benefit of the settlement in reducing litigation burden. As noted, if Plaintiffs proceeded with litigation, it is far from clear that they would have been able to establish liability or damages – or damages as significant as the recovery established in the settlement.”
• About 35,000 copyright registrations are currently involved among the class members who have elected to opt-out.
• The Music Modernization Act (MMA) is on the horizon, unanimously passing in the House of Representatives and expected to do the same in the Senate.
o As the Act will make it easier for Spotify and other music-streaming services to obtain mechanical reproduction licenses, as well as limit copyright owners suing over mechanical reproduction, Spotify may not need to worry so heavily about those who have opted out of the settlement.
o However, as the truth of this statement and other procedural safeguards promised by the MMA can only be seen in practice, it will be interesting to see how this settlement measures up in the future.
THE MUSIC MODERNIZATION ACT
Facts:
- The Music Modernization Act (MMA), or bill HR 5477, unanimously passed in the US House of Representatives on April 25, 2018, with all 415 votes in favor of the Act. The MMA, introduced by co-sponsors Robert Goodlatte (R-VA) and Jerrold Nadler (D-NY), not only has bipartisan support in the house, but is also overwhelming supported by the music industry.
- On May 10, 2018, Senator Orrin Hatch (R-UT) introduced the MMA to the US Senate in its nearly identical form, Senate bill S.2823. There was a hearing on the bill on May 15, 2018, where stars like Smokey Robinson and Mary Wilson of the Supremes, attended and offered their own words in support of the Act.
- The currently proposed MMA legislation combines four (4) unique, previously introduced bills:
o The Allocation for Music Producers (AMP) Act,
o The CLASSICS Act,
o The Fair Play Fair Pay Act, and
o A songwriter-specific version of the Music Modernization Act.
- The AMP Act allows for the formalization of SoundExchange, by paying producers and engineers to receive their royalties from sound recordings, which were previously paid by the artist or their respective record label.
- The CLASSICS Act provides payment for recordings issued before February 15, 1972, which is not required under the law as it is currently written. This is because sound recordings were not protected by Federal Copyright Law until February 15 1972, currently leaving only a hodge-podge of state copyright laws for artists and record labels to use in fighting bootleg recordings and piracy of those legacy recordings.
- The legislative purpose of the bill is to overhaul the U.S. Copyright Act in relation to music licensing and fair compensation, by developing a streamlined, uniformed method to ensure music content owners, creators, and users are treated fairly. The bill’s unusually rapid progress, thus far, has been the result of a joint effort among music publishers, songwriters, artists, record labels, radio, digital services, producers, and engineers, alike.
- Rep. Ted Deutch (D-FL) notes that the bill doesn’t address everything, notably omitting performer payment for radio airplay, but stresses that it does make significant improvements. Congressman Goodlatte summed up those improvements as being in four (4) specific areas, saying it will:
o Improve a dysfunctional mechanical licensing system “that seems to generate more paperwork and attorneys’ fees than royalties”;
o Ensure royalty protection for pre-1972 performances;
o Provide a statutory right to recognition for adjunct creators, including producers, sound engineers, and mixers; and
o Address the lack of a unified rate standard for music royalties;
- The MMA combines four (4) separate legislative initiatives into a single bill that will update how music rates are set and how songwriters and artists are paid.
- A key provision of the bill include is for Congress to establish the equivalent of a SoundExchange for songwriters to track edits and distribute royalties when digital services use their work. Other changes embraced by the industry are the switch to a market-based rate standard for artists and writers, closing the pre-1972 loophole that denied digital compensation to legacy artists and the addition of copyright royalties for producers and engineers.
Quotes:
- Smokey Robinson at Senate Judiciary Committee hearing on Tuesday, May 15th:
o “My message is simple. Musicians who recorded before February 15, 1972 deserve to be compensated the same way as those who recorded after that date.”
o “I know a lot of musicians and producers and writers who have fallen on hard times and who could really use that money. It’s a livelihood thing.”
o “The records of the ‘50s and ‘60s aren’t called classics because of their age, they’re called classics because of their greatness. They still resonate today. They define the America sound.”
o “It would be like if you went to the grocery store or the supermarket and the owner was in there and you said, ‘OK, I’m going to get groceries from you for the next 10 years, but I’m not going to pay you.’ It’s the same thing.”
- David Israelite – President of the National Music Publishers Association (NMPA):
o “The bill improves both on how and how much songwriters are paid while increasing transparency and enabling digital music platforms to thrive. The MMA represents unprecedented consensus around necessary updates to how music creators are valued, and we look forward to seeing it become law.”
- Michael Huppe – President and CEO of SoundExchange:
o “On behalf of the 150,000+ music creators represented by SoundExchange, we are grateful to Senator Hatch for building this consensus legislative package that will benefit the entire music ecosystem.”
- Congressman Robert Goodlatte of Virginia:
o “The bill brings early 20th century music laws for the analog era into the 21st century digital era. Music is no longer written on piano rolls, and our laws shouldn’t be based on that technology either. The problems and failures in our nation’s music laws have imposed real financial costs upon artists and creators.”
Opposition:
- At present, Siruis XM and background music service Music Choice represent the only notable opposition. Sirius XM protests its perspective as a broadcaster being “excluded from discussions,” while Music Choice expresses worry about business being stifled for smaller music service firms. Still, the majority of other broadcasters and small music service firms are calling the MMA bill a much-needed update to “convoluted” and “out-of-date” licensing laws.
Issues:
- Implementation of the Copyright Office recording provision could be a very burdensome process on the Pre-72 Sound Recording Owners, not to mention the potential injury that could be incurred by those who are unaware they need to comply with the provision.
- The U.S. Copyright Office has a history of struggling with technological change and implementation of the MMA’s recording provision may present yet another “challenge” for it to sluggishly overcome.
- Critics of the bill emphasize that the purported “consensus” doesn’t include smaller artists and publishers, most of whom will lose money if the MMA becomes law. They point to an “extremely unfair” compensation scheme for collecting royalties, one that automatically pays bigger publishers money on unclaimed royalties. As such, if a smaller artist doesn’t claim a work, that money vanishes after a relatively short period of time (3 years), enriching mega-publishers like Sony/ATV and Warner Chapell.
- The current version of the MMA calls for larger publishers to collect all unclaimed royalties based on previous market share figures, which will happen through a government-sanctioned body called the Mechanical Licensing Collective (MLC).
- An estimated 25-35% of mechanical royalties paid the MLC under the MMA will be unclaimed, largely because smaller artists will be unaware of the MLC’s existence. This lack of awareness will likely be fueled by conflicting interests among MLC stakeholders. Specifically, industry critics note that an NMPA-controlled MLC will have little incentive to notify unsigned or indie artists, simply because any and all unclaimed royalties end up being paid to the NMPA after three years.
Outlook:
- The basic precepts of the MMA are expected to meet little resistance in the Senate, moving to a full vote and then to President Trump’s desk for a final signature.
OLIVIA DE HAVILLAND V. RYAN MURPHY & FX
Last year, actress Olivia de Havillard sued Ryan Murphy and FX over the series Feud: Bette and Joan, claiming the show violated her rights of privacy and publicity by inaccurately depicting her as a vulgar gossip, played by Catherine Zeta Jones. The network and Murphy asked a LA Superior Court to toss out the case under California’s anti-SLAPP statute. Judge Kending, sitting for the court, found that Havilland demonstrated a minimum probability of prevailing on her claims and allowed the case to proceed.
However, in March, that ruling was overturned by a California Appeals Court appellate panel, following oral arguments focusing largely on whether Catherine Zeta Jones’ depiction of Havilland was negative and whether the term “bitch” remains a highly offensive term. As a result of the California Court of Appeal’s reversal of the trial court’s denial of FX’s anti-SLAPP motion, FX succeeded in striking Havilland’s claims on First Amendment grounds.
Well the 101-year-old actress isn’t giving up. In a petition for review filed by her attorney, Suzelle Smith, Havilland asks California’s high court to determine whether the appellate ruling renders the state’s anti-SLAPP statute unconstitutional. She also requests that it be determined whether the use of a living celebrity’s name and likeness in a realistic portray can possibly be considered “transformative” under the law.
Havilland and her attorney argue that the 2nd District Court’s findings that 1) Havilland was obligated to present credible evidence and 2) that the plaintiff actress must prove knowing and reckless falsehood by direct, rather than circumstantial, evidence were both incorrect. It is also noted in the petition that the court has yet to address publicity and false light claims in connection to anti-SLAPP procedures, and requested that the court do so. Attorney for FX and Murphy, Kelley Klaus, has not commented on the petition.
Havilland vows to appeal the appellate decision, should the petition for review be unsuccessful. However, the appellate decision should not go unheeded, as its implications, at the very least, present problematic uncertainty for those seeking to bring similar causes of action in the future. At a reasonable-inferred most, it may deny the actress and others similarly situated (or anyone seeking to bring a defamation case in California) their 7th Amendment right to a jury trial in defamation cases.
THE SHAPE OF WATER COPYRIGHT INFRINGEMENT LAWSUIT: WHAT OUTCOME TO EXPECT WHEN COMPARED TO HBO'S "BALLERS" SUIT
I. “Ballers” and “Off-Season”:
On February 22, 2018, the 9thCircuit affirmed a District Court’s finding that “only vague similarities exist” between HBO comedy series “Ballers” and a screenplay previously pitched to the network called “Off-Season.” “Off-Season” had not been produced and the screenplay was not even finished, for comparison purposes. The “substantial similarities” standard was applied to writers Everette Silas and Sherri Littleton’s treatments, screenplays, and trailers.
The District Court, as affirmed by the 9thCircuit, found the plots, characters, themes, moods, setting, pace, dialogue, and sequences of events, “similar in only the broadest of strokes” and that the same falls under “scenes a faire.” Silas and Littleton shopped allegedly the same idea to the producers of Ballers but did not enter into a contract because of/over the condition that their names not be accredited. So, it can at least be said that there was access of someone at HBO to “Off Season”, as far as what was pitched at these meetings, though the eventual producers of “Ballers” were, reportedly, none of the same people Silas and Littleton pitched “Off-Season” to.
A) Substantial Similarity:
To win a claim of copyright infringement in civil or criminal court, a plaintiff must show he or she owns a valid copyright, the defendant actually copied the work, and the level of copying amounts to misappropriation. Under the doctrine of substantial similarity, a work can be found to infringe copyright even if the wording of text has been changed or visual or audible elements are altered.
Confusion arises because some courts use "substantial similarity" in two different contexts during a copyright infringement case. In the first context, it refers to that level of similarity sufficient to prove that copying has occurred once access has been demonstrated. In the second context, it is used after it has been shown that a defendant had copied to determine if what had been copied is legally actionable or amounts to misappropriation.
B) Striking similarity
Direct evidence of actual copying by a defendant rarely exists, so plaintiffs must often resort to indirectly proving copying. Typically, this is done by first showing that the defendant had access to the plaintiff's work and that the degree of similarity between the two works is so striking or substantial that the similarity could only have been caused by copying, and not, for example, through "coincidence, independent creation, or a prior common source". This inquiry is a question of fact determined by a jury.
Courts have relied on several factors to aid in a striking similarity analysis, including:
- Uniqueness, intricacy, or complexityof the similar sections.
- If the plaintiff's work contains an unexpected or idiosyncratic elementthat is repeated in the alleged infringing work.
- The appearance of the same errors or mistakes in both works.
- Fictitious entries placed by the plaintiff that appear in the defendant's work. For example, fake names or places are often inserted in factual works like maps or directories to serve as proof of copying in a later infringement case since their appearance in a defendant's work cannot be explained away by innocent causes.
- Obvious or crude attempts to give the appearance of dissimilarity.
Siles and Littleton advocated for a lower standard based on this “access” (the Krofft Test) but were ultimately denied a lower standard of proof. The Court stated that, even if lower standard were applied, the similarities were still not enough to prove infringement. In doing so, Silas and Littleton contend that the district court ignored the Krofft test for determining substantial similarity and committed clear error.”However, the 9thCircuit stated that football players and the City of Miami were common to both works, but that the “themes and concerns were widely different.” The Court found that only common football story elements were present in both work, the tones were completely different, and that viewing both works side-by-side was ultimately the most telling of dissimilarity (gritty, criminal, underground-club tone of “Off-Season” vs. sun-splashed, light-hearted, tone of “Ballers”)
II. The Shape of Water and Let Me Hear You Whisper
As of Febraury 21, 2018, David Zindel is suing film director Guilermo Del Toro, producer Daniel Kraus, Fox Searchlight Pictures, Inc., Twentieth Century Fox Film Corporation, and other respective associates of the film The Shape of Water. Mr. Zindel alleges that the producers of The Shape of Water (particularly, Daniel Kraus) effectively copied a play originally written by his father, Paul Zindel, called Let Me Hear You Whisper. The Complaint cites over 60 similarities between his father’s play and the film that he alleges, taken together, undeniably amount to infringement. Among other things, the Complaint asks for relief in the form of a permanent injunction, profits, and all costs of litigation.
Paul Zindel’s play, Let Me Hear You Whisper, centers on a lonely janitorial cleaning woman, Helen, who works the night shift at a secret scientific laboratory facility that performs animal experiments for sinister, military purposes in the 1960s (during the height of the Cold War). Helen works with a talkative, humorous cleaning woman who complains about her marriage to her former husband, whereas Helen is quiet, introverted and keeps to herself. Inside one of the laboratories, she discovers an aquatic creature of advanced intelligence (a dolphin) confined to a glass tank, and begins a loving relationship with the creature, discovering that it can indeed communicate – but chooses to do so only with her. When she learns that authorities at the laboratory plan to kill the creature via “vivisection,” ostensibly in the name of scientific progress, Helen hatches a plan to sneak the creature out of the lab in a laundry cart and release him at a dock on an urban river that feeds into the ocean, where he will finally be free.
Del Toro’s picture, The Shape of Water, centers on a lonely janitorial cleaning woman, Elisa, who works at a laboratory facility that performs marine experiments for sinister, military purposes in the 1960s (during the height of the Cold War). Elisa works with a talkative, humorous cleaning woman who complains about her marriage to her husband, whereas Elisa is mute and introverted. Inside one of the laboratories, Elisa discovers an aquatic creature of advanced intelligence (an amphibian man) confined to a glass tank, and begins a loving relationship with the creature, discovering that it can indeed communicate – but chooses to do so only with her. When she discovers that authorities at the laboratory plan to kill the creature via “vivisection,” ostensibly in the name of scientific progress, Elisa hatches a plan to sneak the creature out of the lab in a laundry cart and release him at a dock on an urban canal that feeds into the ocean, where he will finally be free.
Below is a non-exhaustive list of particularly idiosyncratic similarities cited in the Complaint:
1) Helen is depicted as a conscientious hard worker, “immediately moving her equipment into place and getting down on her hands and knees to scrub the floor,” including scraping gum off the floor in the NET Production of the Play. Elisa is depicted as a conscientious hard worker, moving her equipment into place and getting down on her hands and knees to scrub gum off the floor.
2) In one of the laboratories that Helen cleans, she finds that there is a fascinating aquatic creature (a dolphin), held captive inside a closed and claustrophobic glass water tank. In one of the laboratories that Elisa cleans, she finds that there is a fascinating aquatic creature (an amphibian man) held captive inside a closed and claustrophobic glass water tank.
3) Despite being set in the 1960s, the Play prominently features music popularized by Hollywood musicals from the 1930s and 1940s. Despite being set in the 1960s, the Picture prominently features music popularized by Hollywood musicals from the 1930s and 1940s.
4) Helen’s scrubbing to “Let Me Call You Sweetheart” evokes a famous Gene Kelly routine from the 1943 film Thousands Cheer, in which Kelly dances to “Let Me Call You Sweetheart” with a mop as his partner. Elisa’s dancing with the mop parallels the same Gene Kelly routine from the 1943 film Thousands Cheer, in which Kelly dances to “Let Me Call You Sweetheart” with a mop as his partner.
5) Helen’s discovery that the lab will kill the creature provides a “ticking clock literary device that drives the plot, wherein Helen must now find a way to rescue the creature before time runs out. Elisa’s discovery that the lab will kill the creature provides a “ticking clock literary device that drives the plot, wherein Elisa must now find a way to rescue the creature before time runs out.
6) Helen defends the creature’s right to live by comparing him to a “mute” human being, insisting, “Some human beings are mute, you know. Just because they can’t talk we don’t kill them.” Elisa defends the creature’s right to live by comparing him to herself, a mute human being, signing: “And what am I? I move my mouth – like him – and I make no sound – like him. What does that make me?”
7) Helen decides that she will sneak the creature out of the laboratory and set it free at the dock on the river that feeds “to the sea” (the Atlantic Ocean). Elisa decides that she will sneak the creature out of the laboratory and set it free at the dock on the canal that feeds “to the sea” (the Atlantic Ocean).
8) To spring the creature from the lab, Helen plans to hide him in a large rolling laundry cart. To spring the creature from the lab, Elisa plans to hide him in a large rolling laundry cart.
9) In a suspenseful and dramatically resonant moment, Helen is seen tenderly embracing the creature as she lifts it out of the tank to free it from captivity. Helen’s embrace of the creature is behind a curtain pulled across the tank like a shower curtain. In a suspenseful and dramatically resonant moment, Elisa is seen tenderly embracing the creature as she lifts it out of the tank to free it from captivity. Later, Elisa embraces the creature behind a shower curtain.
While every copyright infringement suit in Hollywood should be taken with many grains of salt and often go beyond what is reasonable to allege (such as Zindel claiming that audiences’ connection to, and the ultimate success of The Shape of Water, would not have been possible absent his father’s play) there may be more damning evidence. For instance, Daniel Kraus is on record as an admirer of Zindel’s work and the “idea” came to him the same year a TV adaptation of Zindel’s play aired. Zindel’s play was widely broadcast in 1969 and 1990 TV reproductions, there are more than 10 print editions, and it is widely taught in American schools and staged productions. This will likely prove Kraus had access to the prior work. Also, the Complaint cites some incriminating statements made by Kraus on social media. During an online question-and-answer session with fans in 2016, KRAUS was asked about his “research resources” for a book he wrote. KRAUS answered: “I stole (grave robbed?) from everything I could.” Finally, and perhaps most importantly, the Complaint cites numerous social media and other instances in which audiences have either interpreted The Shape of Water as a being based on Zindel’s play Let Me Hear You Whisperor actually confused it for another film adaptation of it. The audience comments include both questions about it inspiration from the play and criticisms for not accrediting Zindel in the film.
Even if only half of the similarities alleged between The Shape of Water and Let Me Hear You Whisperand other facts about its producers stated in the Complaint prove to be true, it will be interesting to see how this suit pans out...