The Monkey Selfie Returns

When I was in law school, a final exam question presented a scenario involving a squirrel who falls into an open container of gasoline on private property, scurries to another property where a cinder from an outdoor fire ignites him, and then proceeds to run into a pile of dry leaves on the first property, ultimately causing the whole damn neighborhood to burn down. I was directed to “discuss liability.” After hitting all the expected theories of liability and defenses, I proceeded to discuss the rights and liabilities of the squirrel. I got an ‘A’ but the professor wrote in the margin of my squirrel discourse, in giant red letters, “We need to talk!” When I met with him in his office, he explained that he wasn’t sure if I was trying to make a mockery of tort law or if I was so truly insane that I actually believed animals have standing to sue to vindicate legal rights. I wish I could travel back in time and have a little chat with him now.

The “monkey selfie” saga began in 2011 when British nature photographer David Slater traveled to Indonesia and set up a camera on a tripod. He left the remote trigger accessible to a macaque monkey, who then proceeded to take “selfies” with it. Later, someone uploaded the images to Wikimedia Commons. Slater, claiming copyright infringement, demanded either payment for the photographs or their removal from the site. Wikimedia Foundation refused, asserting that the images are in the public domain because they were not created by a human being.

According to some British attorneys, the photographs may be protected by European intellectual property laws. The United States Copyright Office, however, has issued a statement that works created by non-human animals, including monkeys, are not protected by copyright.

People for the Ethical Treatment of Animals (PETA) then entered the fray, filing a lawsuit in federal court against Slater and others for infringing the monkey’s copyright. Naturally, PETA also asked to be put in charge of administering proceeds from the photographs.

In 2016, the federal district court judge dismissed the lawsuit, adopting the U.S. Copyright Office’s position that copyright protections do not extend to non-human animals. PETA appealed the decision to the 9th Circuit Court of Appeals. Oral arguments were heard on July 12, 2017. According to reports, Slater has gone broke defending against the lawsuit.

So, Professor Goldberg, is PETA making a mockery of tort law or are their attorneys insane for believing animals can own property? What do you think?

No More Royalties for “Happy Birthday”

Birthday Song
(from court documents)

Restaurants, business owners, authors and producers no longer have to pay a copyright royalty to perform the “Happy Birthday” song. A federal district court judge has ruled that Warner/Chapelle Music Inc., which has been claiming ownership of the copyright in the song – and charging royalties for its use — does not own the copyright, after all.


Patty and Mildred Smith wrote a song called “Good Morning To All” in the nineteenth century. Originally intended for use in a kindergarten classroom, the lyrics were: “Good morning to you / Good morning to you / Good morning, dear children / Good morning to all.” They published the song in a book, and assigned the copyright to their publisher, the Clayton F. Summy Company.

The Summy Company registered a copyright claim to the song, “Happy Birthday To You” in 1935. Warner/Chapelle succeeded to that claim.

Warner/Chapelle argued the 1935 registration secured ownership of copyright in the lyrics as well as the music. The judge ruled, however, that even if the Summy Company acquired rights to the melody, there was no evidence the Summy Company ever acquired the copyright to the lyrics.

Melody vs. lyrics

The melody for the famous birthday song has been in the public domain for over half a century, the copyright registration having expired in 1949. This meant that anyone could use the song in their business, or in a greeting card, musical composition, sound recording or audiovisual work, provided they used different lyrics. Because Warner/Chapelle claimed ownership of the copyright to the lyrics, the company maintained that anyone wishing to publicly perform, publish or record the words to the song (“Happy birthday to you,” etc.) needed to pay a royalty. Warner has collected millions of dollars of royalties for the lyrics to this song.

Very likely in the public domain

Many reporters are saying the song is now “in the public domain.” This is not accurate. The ruling means that Warner/Chapelle has failed to establish a right to claim royalties for the song, or the lyrics to it. The fact that the Hill sisters did not convey the copyright to the lyrics to the Summy Company simply means that the long-time lyrics rights-claimant Warner/Chapelle cannot assert ownership. It does not mean that nobody else can. In theory, if it can be proven that someone else wrote it, and that the first authorized publication occurred  after 1923, and that all copyright requirements that existed at all relevant times have been met, then that person, or his  successor(s) in interest, may own the copyright to the lyrics. That will not be an easy thing to do, given the existence of a songbook containing the lyrics to “Happy birthday to you,” purporting to have been published “with permission,” with a publication date of 1922 appearing on it.

How much copying is ‘fair use’?

Which of the following statements is/are true?

(a) Copying up to 25 words is fair use.
(b) Copying less than 10 percent is fair use.
(c) Copying 25 words or 10% is fair use.
(d) Copying only a small amount is fair use.
(e) If you don’t make money on it, it’s fair use.
(f) It’s fair use if it’s for an educational purpose.
(g) Non-profit organizations can’t be sued for copyright infringement.
(h) It’s fair use if there’s no copyright notice on it.
(i) If the author is dead, you can copy anything he wrote.
(j) As long as you give credit to the author, it’s fair use.
(k) “Fair use” is a myth. There is no such thing.

If you answered (a), (b), (c), (d), (e), (f), (g), (h), (i), (j), or (k), then you failed the test. You’re in good company, though; nearly everybody believes at least one of these things is true.

Fair Use has been called “the most troublesome in the whole law of copyright,”1 and for good reason. With the exception of some narrowly limited statutory exemptions, there are no “bright line” tests for determining what is fair use. The bulk of the law on fair use has been left to the courts to develop. Unfortunately, they have not established any specific “bright line” tests, either.

The four-prong test

17 U.S.C. § 107 provides that copying material “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright….” It then directs courts to consider four factors when deciding whether a particular use should be permitted as fair use:

(i) the purpose and character of the use;
(ii) the nature of the work;
(iii) the amount and substantiality of the portion used; and
(iv) the effect of the use on the market for the work.

Taken together, it is clear that Congress intended courts to treat commentary, criticism, news reporting, teaching, scholarship, and research as uses that will satisfy the first prong of the test. This doesn’t mean these are the only kinds of uses that may qualify, though. Nor does it mean that every use of copyrighted material for one of the specified purposes is fair use. The other three prongs must still be considered.

Under the fourth factor, even an educational use may be disqualified from “fair use” protection if it competes in the same market with the original work. If, for example, a teacher were to photocopy and distribute a textbook to students, students would no longer have a need to buy copies of the textbook for themselves. Such a use would have a negative impact on the market for the textbook. In this scenario, a teacher asserting “fair use” as a defense to infringement probably would not be successful.

2 Live Crew, Pretty Women, and the birth of the Transformative Use doctrine

In the 1990’s, 2 Live Crew was sued for copyright infringement for using “samples” of a substantial amount of Roy Orbison’s “Oh Pretty Woman” in a recording of their own. (Although the band had asked, permission had been refused for reasons having to do with protecting artistic integrity. 2 Live Crew therefore went ahead and copied the original recording anyway, ultimately making a nice bundle of money on it.) The case went all the way the United States Supreme Court.

To the surprise of many copyright attorneys, the U.S. Supreme Court ruled in favor of 2 Live Crew. In so doing, the Court established a precedent for “transformative use” as a factor emanating from the other four factors, or coming within the penumbra of the other four factors. Not only that, but according to Justice Souter (who wrote the opinion for the Court), the extent to which a use is transformative was henceforth to be regarded as  the most important consideration in the fair use analysis.2 The more transformative a new work is, the more likely it is to be fair use.  The fact that a work is transformative, the Court declared, outweighs all the other factors. Thus, the Court ruled that even though 2 Live Crew had engaged in a substantial amount of copying; had copied “the heart” of the song; and had commercially exploited the song in a way that negatively impacted the market for the original, the use nevertheless qualified as “fair use” because it was a “transformative” use.

Creating a new internal conflict in copyright law

The Court’s ruling seems to be at odds with the Copyright Act’s grant of an exclusive right to the author of a copyrighted work to make derivative works from it. The Copyright Act defines a derivative work as “any form in which a work may be recast, transformed, or adapted.”3 The language of the statute seems to be pretty clear that Congress intended to ensure that authors would have the exclusive right to transform their works into something else. According to the U.S. Supreme Court, however, it is fair use for other people to transform an author’s work into something else without the author’s permission.

While no definition of transformative use is set out in the Copyright Act, it basically includes any use that alters the purpose, meaning or function of a work, or a portion of it. In other words, it is any use that makes the work serve a purpose, express a meaning, or function in a way that is different from the original purpose, meaning or function of the work.


Parody is one kind of transformative use that has long been treated as “fair use.” This is because a parody, by definition, comments on, and is a criticism of, the original work. As such, it falls squarely within two of the purposes Congress has identified as the most deserving of “fair use” protection. On balance, other factors tend to support its classification as “fair use,” primarily because parody normally does not displace the market for the original. The segment of the market that is likely to buy the original normally is not the same segment of the market that is likely to buy a work that is critical of it. (Fans are not likely to be in the market for products mocking the things they adore.)

“Entirely different aesthetic”

Historically, courts treated the fact that copying of a work was for purposes of criticism and commentary as being central to “fair use” analysis in cases where no other Congressionally identified purpose (research, education, news reporting) existed. This was why unauthorized copying for a satire (which doesn’t use material from the original for purposes of commentary or criticism of the original work) is not as likely to qualify for “fair use” protection as a parody is. After the 2 Live Crew decision, however, courts seem to be trending toward interpreting “transformative” fair use in an increasingly broad way. In Cariou v. Prince,4, for example, the Second Circuit Court of Appeals held that an artist’s incorporation, into his paintings, of entire photographs that other people had taken was a sufficiently transformative use to qualify as fair use. The Court reasoned that the new work created “a different aesthetic” from that imparted by the original work. In so holding, the court expressly rejected the notion that the new work must criticize or comment on the original in order to be a protected fair use.

It is difficult to square this case with other court decisions that have denied fair use status to satire specifically because satire does not criticize or comment on the original work. Most satire certainly does create a different aesthetic from the original. An orginal work may project a somber, philosophical aesthetic; a satire of it most likely will create the opposite kind of aesthetic, i.e., a light, humorous one.

It is also difficult to square the Cariou decision with the exclusive right of the author to make derivative works from his work. The artist in this case clearly copied the work and then modified it. That is exactly what it means to make a derivative work. There is nothing in the Copyright Act that explicitly requires a derivative work to have the same “aesthetic” as the original work. The rule now, though, at least in the Second Circuit, seems to be that an author has an exclusive right to make derivative works only to the extent the derivative work has the same “aesthetic” as the original work.

The potential import of this ruling is not yet known. For example, how great a difference will qualify as “entirely different”? Since judges are not art experts, will the testimony of expert witnesses qualified to form opinions about aesthetics be necessary in fair use cases? If so, what standard relevant to copyright principles should they employ to decide whether a particular work has an “entirely different” aesthetic versus, say, only a “partially different” aesthetic?


While some courts seem to be applying increasingly expansive definitions of fair use, not all judges are in in the mood to whittle away authors’ rights. “Judges do not share a consensus on the meaning of fair use.”5 It has become what Judge Pierre Leval has described as “a disorderly basket of exceptions to the rules of copyright.”6

You can gamble on the possibility that a court will determine your proposed use of copyright protected material is “fair,” if you wish. If you are interested in following the safest course, however, then you should try to get permission from authors, composers, artists, and recording companies before appropriating the fruits of their labor.


  1. Dellar v. Samuel Goldwyn, 104 F.2d 661 (2nd Cir. 1939.)
  2.  Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994).
  3.  17 U.S.C. § 101, emphasis added.
  4. 714 F.3d 694 (2d Cir. 2013)
  5. Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990)
  6. Ibid.

It’s a Wonderful Blog List

(RKO release poster, 1946)

(RKO release poster, 1946)

Those in the over-thirty crowd probably have many fond and/or maddening memories of flipping channels throughout the Christmas season to decide which network broadcast of It’s a Wonderful Life to watch. The reason it was on so many channels is that television stations could broadcast it royalty-free. So they did. A lot.

Why could they broadcast it royalty-free? Surprisingly, it seemed to be in the public domain. Before the Copyright Act of 1976 established a single-term copyright measured by the life of the author plus 50 years (later extended to 70), copyrights only lasted for a period of 28 years from the date of first publication. They could be renewed for a second 28-year term, but the renewal had to take place during the last year of the original term. If that didn’t happen, then it entered the public domain, meaning that anyone could copy it, distribute it, and broadcast it without having to pay any royalties to the actors, director, writer, or anyone else. The company that acquired the rights to It’s a Wonderful Life neglected to renew the copyright. That’s why television networks began broadcasting it as often as they could, beginning in the 1970’s.

The party came to an end in the 1990’s when the company asserted a claim to the copyright in the underlying literary work on which the movie was based (a pamphlet called The Greatest Gift.) For the past few years, the movie has been licensed only to NBC for television broadcast.

The requirement that copyright renewal must occur during the 28th year of the original term – and only during the 28th year of the original term — has caused quite a wealth of copyrighted matter to enter the public domain accidentally or unexpectedly. Although the Copyright Act of 1976 did away with the renewal system, it did not apply retroactively.

For those with an interest in this arcane topic, here is a non-comprehensive list of movies that appear to have entered the public domain.1

• Angel and the Badman (1947) (failure to renew)2
• The Animal Kingdom (1932) (failure to renew)3
• Algiers (1938) (failure to renew)4
• Beau Brummel (1924) (failure to renew)5
• Beau Ideal (1931) (failure to renew)6
• Behind Office Doors (1931) (failure to renew)7
• Bird of Paradise (1932) (failure to renew)8
• Birth of a Nation (1915) (expired)
• Birth of the B-29 (ca. 1943) (U.S. government work)9
• Blood on the Sun (1945)10
• The Brain That Wouldn’t Die (1962) (published without copyright notice)11
• Brideless Groom (1947) (failure to renew)12
• Carnival of Souls (1962) (published without copyright notice)13
• Charade (1963) (published without full copyright notice)14
• Check and Double Check (1930) (failure to renew)15
• Combat America (1943) (U.S. government work)
• Conspiracy (1930) (failure to renew)16
• The Dance of Life (1929) (failure to renew)17
• Danger Lights (1930) (failure to renew)18
• The Deadly Companions (1961) (missing copyright notice)19
• Debbie Does Dallas (1978)20
• Detour (1945) (failure to renew)21
• Disorder in the Court (1936) (failure to renew)22
• Dixiana (1930) (failure to renew)23
• D.O.A. (1950) (failure to renew)24
• Father’s Little Dividend (1951) (failure to renew)25
• A Farewell to Arms (1932) (failure to renew)26
• The Fight for the Sky (1946) (U.S. government work)
• The General (1927) (failure to renew)27
• The Gold Rush (1925) (failure to renew)28
• Gulliver’s Travels (1939) (failure to renew)29
• Half Shot at Sunrise (1930) (failure to renew)30
• Hemp for Victory (1942) (U.S. government work)
• His Girl Friday (1940) (failure to renew)31
• Hook, Line and Sinker (1930) (failure to renew)32
• The Impossible Voyage (1904) (expired)
• Intolerance (1916) (expired)
• Inside the Lines (1930) (failure to renew)33
• It’s a Wonderful Life (1946) (failure to renew)34
• The Lady Refuses (1931) (failure to renew)35
• A Lady to Love (1930) (failure to renew)36
• Last Clear Chance (1959) (not registered)37
• The Last Time I Saw Paris (1944) (failure to renew)38
• Lawful Larceny (1930) (failure to renew)39
• Letter of Introduction (1938) (failure to renew)40
• Life with Father (1947) (failure to renew)41
• The Little Princess (1939) (failure to renew)42
• The Little Shop of Horrors (1960) (failure to renew)43
• Lonely Wives (1931) (failure to renew)44
• Love Affair (1939) (failure to renew)45
• Malice in the Palace (1949) (failure to renew)46
• March of the Wooden Soldiers (1948) (failure to display copyright notice)47
• McLintock! (1963) (failure to renew)48
• Mr. Imperium (1951) (failure to renew)49
• My Favorite Brunette (1947) (failure to renew)50
• Nanook of the North (1922) (expired)
• Night of the Living Dead (1968) (omission of copyright notice on copies)51
• Nothing Sacred (1937) (failure to renew)52
• The Outlaw (1943) (failure to renew)53
• The Painted Hills (1951) (failure to renew)54
• The Pay-Off (1930) (failure to renew)55
• The Perils of Pauline (1914) (expired)
• The Phantom Carriage (1921) (expired)
• The Phantom of the Opera (1925) (failure to renew)56
• Rain (1932) (failure to renew)57
• Rebecca of Sunnybrook Farm (1917) (expired)
• Reefer Madness (1936) (improper copyright notice)58
• Rock, Rock, Rock! (1956) (failure to renew)59
• The Royal Bed (1931) (failure to renew)60
• Santa Fe Trail (1940) (failure to renew)61
• The Secret Hour (1928) (failure to renew)62
• Sherlock Holmes Baffled: The Enchanted Drawing (1900) (expired)
• Sin takes a Holiday (1930) (failure to renew)63
• Sing a Song of Six Pants (1947) (failure to renew)64
• Sinners in Paradise (1938) (failure to renew)65
• Smouldering Fires (1925) (failure to renew)66
• A Star Is Born (1937) (failure to renew)67
• Swing High, Swing Low! (1937) (failure to renew)68
• Teenagers from Outer Space (1959) (failure to renew)69
• The Terror (1963) (no registration?)70
• Three Came Home (1950) (failure to renew)71
• Three Guys Named Mike (1951) (failure to renew)72
• Till the Clouds Roll By (1946) (failure to renew)73
• Topper Returns (1941) (failure to renew)74
• A Trip to the Moon (1902) (expired)
• Vengeance Valley (1951) (failure to renew)75

Remember that even if a movie is in the public domain now, the literary text on which it is based might not be. And the same is true of any musical compositions performed in a movie. So before you start making your own version of Night of the Living Dead, or selling tickets to a public performance of Debbie Does Dallas, be sure to investigate the copyright status of the musical and literary works embedded in them first.


  1.  This list only applies to the motion picture itself. Other works embedded in it, such as a musical composition, or a book on which the movie is based, may still be protected by copyright.
  2. Pierce, David Legal Limbo: How American Copyright Law Makes Orphan Films (March 29, 2001.) Orphans of the Storm II: Documenting the Twentieth Century. Retrieved January 5, 2012.
  3. Pierce, David. “Forgotten Faces: Why Some of Our Cinema Heritage Is Part of the Public Domain.” Film History: An International Journal 19 (2): 125–43 (June 2007.)
  4. Id.
  5. Id.
  6. Id.
  7. Id.
  8. Id.
  9. Works created by the U.S. government are not protected by copyright.
  10. Pierce (2001), supra note 2.
  11. At one time, publishing copies of a work without the copyright notice on them could cause the work to enter the public domain. This requirement was abolished for works first published on or after March 1, 1989.
  12. Hogan, David J. Three Stooges FAQ: Everything Left to Know about the Eye-Poking, Face-Slapping Head-Thumping Geniuses (2011).
  13. Blake, Marc. Writing the Horror Movie 91 (2013)
  14. Pierce (2007), supra note 3.
  15. Id.
  16. Pierce (2007), supra note 3.
  17. Id.
  18. Id.
  19. Erickson, Hal. “Early Salvos from ‘Bloody Sam’: New DVDs, Peckinpah’s Deadly Companions and Major Dundee,” New York Times (May 10, 2013)
  20. M & A Associates v. VCX, 657 F. Supp. 454 (E.D. Mich. 1987)
  21. Herzogenrath, Bernd. The Films of Edgar G. Ulmer 151 (2009).
  22. Hogan, supra note 12.
  23. Pierce (2007), supra note 3.
  24. Researching the Copyright Status of a Work,
  25. Pierce (2007), supra note 3.
  26. Id. Remakes of this movie may not be in the public domain.
  27. Fishman, Stephen. The Public Domain: How to Find & Use Copyright-Free Writings, Music, Art & More 174-180 (5th ed. 2010.)
  28. Id.
  29. Miller, John M. “Mr. Bug Goes to Town aka Hoppity Goes to Town,” Turner Classic Movies (June 14, 2015); Kehr, David, “Classics From Disney and a Lilliputian Competitor,” New York Times (March 6, 2009.) Retrieved October 26, 2013.
  30. Pierce (2007), supra note 3.
  31. Fishman, supra note 27.
  32. Pierce (2007), supra note 3.
  33. Id.
  34. Id.
  35. Id.
  36. Id.
  37. Prelinger, Rick. The field guide to sponsored films 52 (National Film Preservation Foundation 2006.)
  38. Researching, supra note 24.
  39. Pierce (2007), supra note 3.
  40. Id.
  41. Erickson, Hal, “Life with Father Overview,” New York Times (June 14, 2015)
  42. Pierce (2007), supra note 3.
  43. Fishman, supra note 27; Pierce (2007), supra note 3.
  44. Pierce (2007), supra note 3.
  45. Id.
  46. Hogan, supra note 12.
  47. Pierce (2007), supra note 3.
  48. Fishman, supra note 27 at 337; “Court Rules for ‘Goodtimes’ in McLintock! Case,” Billboard 73 & 82 (May 14, 1994)
  49. Pierce (2007), supra note 3.
  50. Pierce (2001), supra note 3.
  51. Boluk, Stephanie; Lenz, Wylie. Introduction: Generation Z, the Age of Apocalypse. In Boluk, Stephanie; Lenz, Wylie. Generation Zombie: Essays on the Living Dead in Modern Culture 5 (2011).
  52. Fishman, supra note 27.
  53. Pierce (2007), supra note 3.
  54. Id.
  55. Id.
  56. Id.
  57. Pierce (2001), supra note 2.
  58. Anderson, Patrick, High in America: the true story behind NORML and the politics of marijuana 101 (1981); Shaye, Robert. Graduation 2003 (May 22, 2003)
  59. Pierce (2007), supra note 3.
  60. Id.
  61. 7 Filmmakers Newsletter (Suncraft International Inc. 1973)
  62. Pierce (2007), supra note 3.
  63. Id.
  64. Hogan, supra note 12.
  65. Pierce (2007), supra note 3.
  66. Id.
  67. Id.; Fishman, supra note 27. Remakes may not be in the public domain.
  68. Pierce (2007), supra note 3.
  69. Fishman, supra note 27.
  70. Ray, Fred Olen, The New Poverty Row: Independent Filmmakers as Distributors 51 (1991).
  71. Erickson, Hal, “Three Came Home Overview,” New York Times (June 14, 2015)
  72. Pierce (2007), supra note 3.
  73. Id.
  74. Id.
  75. Id.

State law copyright claims

(Photo: "485 Schildkröten - cutted". Licensed under CC BY-SA 2.5 via Wikimedia Commons -

(Photo: “485 Schildkröten – cutted”. Licensed under CC BY-SA 2.5 via Wikimedia Commons)

Most people assume copyright protection is governed exclusively by the federal Copyright Act. For the most part, this is true. The Copyright Act does assert that federal copyright law preempts state copyright law:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.1

The statute, however, also disclaims any intention to preempt state laws and remedies with respect to:

(1) subject matter that does not come within the subject matter of copyright;

(2) any cause of action arising from undertakings commenced before January 1, 1978;

(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106;

(4) state and local landmarks, historic preservation, zoning, or building codes, relating to architectural works protected under section 102(a)(8);

(5) sound recordings fixed before February 15, 1972. Federal preemption with
respect to sound recordings fixed before then does not begin until February 15,

Contract claims

State law claims are preempted by the Copyright Act, then, only if they protect rights equivalent to the exclusive rights protected by federal copyright law. A claim is preempted only if it is of a kind that comes within the general scope of federal copyright law. If it doesn’t, then the claim is not preempted.

This has come to be known as the “extra element” test. If violation of the state law requires proof of some element in addition to or instead of the exclusive rights federal copyright law affords (i.e., rights to copy, adapt, distribute, display or perform a work), then the state law claim is not preempted by federal copyright law. For this reason, breach of a contract involving a copyrighted work is still actionable under state law.

If the contract is only an agreement not to infringe a copyright, then the state law claim would be preempted. A breach of that kind of contract would be the same thing as violating rights protected under federal law. A cause of action for breach of this kind of contract adds no additional element to an infringement claim.

If the contract provides for a royalty payment to the author in exchange for a publisher’s agreement to print and sell his book to the public, a breach of that contract would be actionable under state contract law. Federal copyright law does not guarantee royalties to authors. Because the royalty agreement is an “extra element,” the state law claim survives federal preemption.

Works not within the subject matter of federal copyright law

State law claims of intellectual property rights in works that are not within the subject matter of federal copyright also survive federal preemption. This is sometimes called the “subject matter” requirement of federal copyright preemption.

An example would be works that are not yet fixed in a tangible medium. Federal copyright law only protects works that are fixed in a tangible medium. An extemporaneous speech is an example of a work that is not fixed in a tangible medium. A sound recording of the speech, or a written transcription of it, would receive federal copyright protection, but an impromptu, unwritten, unrecorded spoken-word performance would not.

A band that comes up with a new song while jamming in the guitar player’s garage does not get federal copyright protection until they write it down on paper or record it in some tangible medium such as a tape recording or a digital recording of some kind.

State law may or may not provide a remedy for infringing these kinds of works. Federal law does not create or “approve” any particular state law remedies. It merely identifies what areas of the law states are still free to regulate. It is up to each state to decide whether, and in what way, it will protect intellectual property rights in works that are not of a kind that are protected by federal copyright law.

Pre-1972 sound recordings

Before 1972, sound recordings were not within the subject matter of federal copyright law. Accordingly, the federal Copyright Act provides that state law claims for infringement of rights in a pre-1972 sound recording may be pursued notwithstanding the general rule that federal copyright law preempts state copyright law.

The recent decision in Flo & Eddie, Inc. v. Sirius XM Radio, Inc.3 illustrates this rule. The musical group The Turtles recorded the song, “Happy Together” and a number of other songs in the 1960’s. Two of the founding members later created Flo & Eddie, Inc., which now owns all rights to The Turtles’ master sound recordings. Satellite radio and Internet broadcaster Sirius XM Radio, Inc. publicly performed some of these recordings. Flo & Eddie, Inc. had not granted it a license to do so. Since 1960’s sound recordings do not receive federal copyright protection, the Turtles would lose unless state law offered them some protection. As it turns out, California is one of a small number of states that provides statutory protection for intellectual property rights in pre-1972 sound recordings. California Civil Code § 980(a)(2) provides:

The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound recording.

The court interpreted the rights of “exclusive ownership,” as used in this statute, as giving the owner of a pre-1972 sound recording the exclusive right to publicly perform the recording.

It should be noted that the California statute only protects rights in the recording of the song, not rights in the song itself. A cover band could legally perform its own version of “Happy Together” and neither federal nor California state law would provide a remedy to the recording’s owner, Flo & Eddie, Inc. The cover band could still be liable to the songwriter, though, if the song has been fixed in tangible form, such as sheet music, and if the sheet music (as distinguished from a sound recording of a performance of it) is otherwise protected under federal copyright law.


It is a mistake to rely exclusively on the federal Copyright Act, as some practitioners do, to determine the extent of copyright protection to which a creative work may be entitled. Every copyright issue should involve a three-part analysis: (1) Does the federal Copyright Act protect the work? (2) What kinds of protection might state law provide? (3) Are state law protections preempted by federal law?

Postscript: Shortly after the California decision, Flo & Eddie, Inc. succeeded on a summary judgment motion against the same defendant in New York on the basis of New York state’s common law protection of copyrights.4

  1. 17 U.S.C. § 301 (2015)
  2. Id.
  3. CV 13-5693 PSG (RZx), C.D. Cal., September 22, 2014)
  4. Flo & Eddie, Inc. v. Sirius XM Radio, S.D.N.Y. No. 13 Civ. 5784 (CM)

Now you too can write Sherlock Holmes mysteries! (Maybe)

Holmes_-_Steele_1903_-_The_Empty_House_-_The_Return_of_Sherlock_Holmes(Illustration by Frederic Dorr Steele, 1903, PD-US)

Do you have a restless urge to write Sherlock Holmes mystery stories? If so, the U.S. District Court for the Eastern Division of the Northern District of Illinois has some good news for you: Holmes, Watson, and even Professor Moriarty are now in the public domain. In fact, all Arthur Conan Doyle detective stories published before 1923 are in the public domain.  This means that you are now free to write, publish and sell Sherlock Holmes mystery stories without having to secure a license or permission from the Doyle estate.

The ruling was issued in a case commenced by Leslie S. Klinger to determine his rights to copy and make derivative works using certain elements in the series of Sherlock Holmes detective stories originally penned by Sir Arthur Conan Doyle. Klinger is the co-editor of In the Company of Sherlock Holmes, a collection of Sherlock Holmes stories written by various authors. According to the complaint, Pegasus Books had decided not to go forward with publishing the book after it received a letter from the Doyle estate advising that it would seek to prevent the book from being sold by retailers unless it received a monetary payment. Klinger filed a complaint requesting a declaratory judgment that  the Sherlock Holmes characters are in the public domain. Chief Judge Ruben Castillo ruled in his favor, and granted the request. <<>>

The ruling is subject to two important caveats. First, it only applies to Sherlock Holmes stories that are in the public domain. Although all of Doyle’s Sherlock Holmes stories are already in the public domain in Britain, not all of them are in the public domain in the U.S. In the U.S., only those stories that were published before 1923 are in the public domain. Any new information about Holmes, Watson, or any of the other characters in the detective series, remains protected by copyright, to the extent it was first disclosed in a story published after 1923. For example, the detail that Watson had a second wife is still protected by copyright. An American writer aspiring to be “the next Arthur Conan Doyle,” therefore, should take care to ensure that any dialogue, character and sequence elements he wishes to copy were either published before 1923, or entered the public domain since then.

Determining when a literary work that received copyright protection at some time in the past has entered the public domain is not always easy. Different rules apply depending on when and how the work was created (there are special rules about joint authorship, works for hire, and works written anonymously or under a pseudonym), and also depending on whether and when the work has been published or registered. In general (and assuming full compliance with all relevant copyright notice requirements), the copyright term for an uncommissioned work authored by one non-anonymous person was 28 years, renewable for a second term of 28 years, if the work was published or registered before January 1, 1978. Congress extended the length of the second term to 47 years for all copyrights that were still in existence on January 1, 1978. On October 27, 1998, Congress extended the second term to 67 years, for those copyrights that were still in existence at that time. Applying these rules, any such works published before 1923 are now in the public domain. And since Doyle’s last Sherlock Holmes mystery was published in March, 1927, they all will have entered the public domain by 2023.

The second caveat is that a character or other element of a literary work may be protected under other law even if it has entered the public domain for purposes of copyright law. For example, an author who ghostwrites Sherlock Holmes stories and tries to pass them off to the public as having been written by Mr. Doyle himself faces potential liability under state and federal trademark, fraud and unfair competition laws. And even an author who publishes Sherlock Holmes stories under his own name might be liable for trademark dilution if the famous Sherlock Holmes character is determined to be a trademark and if the author’s writing diminishes its value to the trademark owner.

Of course, you can avoid these risks altogether by simply creating your own characters, dialogue and plot sequences. Who knows? You may even come up with an idea for a story, or a series of stories, with so much lasting literary merit that someday you will be the author whose works other people are clamoring to copy.