Let’s Go Crazy, Just Not This Way

Micahmedia at en.wikipedia [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons[Photo: Micahmedia at en.wikipedia [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons]

Minnesota’s proposed new publicity rights law

Minnesota is poised to enact a sweeping new publicity right into law. Publicity rights legislation has been needed in Minnesota for a long time, but this isn’t the way to do it.

Background

Publicity rights are a matter of state law, growing out of the common law right of privacy.1

Although initially springing from the common law cause of action for invasion of privacy, misappropriation of personality (a person’s name or likeness) developed along a different path. The other causes of action – intrusion upon seclusion, false light, and publication of private facts – continue to be concerned with the indignity, the emotional suffering, that an invasion of privacy causes. Misappropriation of personality has drifted away from that focus. The modern trend is to treat publicity rights (i.e., the exclusive right exploit one’s own name, likeness, voice, etc. commercially) as a kind of intellectual property. The concern now is with the unfair use of another person’s identity to make money, not so much with the indignity suffered when one’s name is used for base commercial purposes. This has been good news for celebrities. It is not very often that a modern-day celebrity is in a position to contend that being associated with mercantilism is embarrassing or repulsive to him/her.

Today, most states recognize, either by court decision or statute, a right to recovery for unauthorized use of a person’s name, likeness, voice, etc. In Minnesota it was established by court decision.2 The question that remains unanswered, in Minnesota and several other states, is just how many of the attributes of a property right it will take on.

The question whether the right continues to exist after a person’s death forces the issue. If the cause of action is a personal one, designed to make a person whole for indignities suffered, then it cannot. Dead people feel no pain. (Or at least, there is no known way to prove that they do.) Prompted by the death of Prince, who was indisputably the most commercially successful musical artist the state has ever produced, the Minnesota legislature is set to take action on a proposal to enact a statute that would both clarify and codify existing case law, while at the same time greatly expanding it.

The Minnesota bill

The Senate version of the bill is attracting a good deal of attention. In part, this is because of the retroactive postmortem protection provisions it contains These kinds of provisions aren’t new. They have been enacted in several states now, including Washington (former home to Jimi Hendrix.) Those states, however, have imposed finite term limits, like 50 or 70 years, tending to correspond, roughly, to copyright terms. The Minnesota bill, by contrast, calls for post-mortem publicity rights of potentially infinite duration. This means that sometime in the future (after 2086), assuming Prince’s heirs haven’t abandoned the right by then, a tribute band could freely exploit Prince’s music so long as it didn’t mention him by name. Instead of marketing their albums or performances under the banner, “The Knock-Off’s play Prince’s greatest songs,” they would have to say something like, “The Knock-Off’s play the greatest songs of some dude we can’t name.”

The “fair use” provision in the Senate version is the more worrisome part, though. As written, it provides an exception from liability for when a person’s name, likeness, photograph, etc. is used for “a news, public affairs or sports broadcast or account.” This leaves out entire categories of reverential uses, like editorials and opinion pieces, not to mention fan sites — regardless of how respectful they are of copyright and trademark rights.

The bill does say that the mere fact that a website has paid advertising on it isn’t enough to establish commercial use. Instead, it is left to the courts to decide, on a case-by-case basis, whether the name or likeness appearing on the website is “connected” with a website’s sponsorship or paid advertising. Great. So what will a court do about personal blogs and websites with Google AdSense on them? Since AdSense correlates revenues to the number of visits to a site, all of the content on these sites is “connected” with paid advertising. If the number of visits to a blog site increases after a guest blogger posts an elegy for a beloved artist (resulting in increased revenue of, say, $0.02), couldn’t a court say the mention of the artist’s name was “connected” to advertising revenues, thereby making the elegy a “commercial” use?

(By the way, why are news and sports broadcasts given special dispensation? What about comedy, online book club discussions, movie reviews, and so on? It seems unlikely that this distinction could withstand First Amendment scrutiny.)

And then there is the clause providing that not only can a court order the impoundment and destruction of infringing goods, but the State can use its police power to seize “all instrumentalities used in connection with the unauthorized use” for “forfeiture to the state.” So not only can someone get a court to issue an order for the destruction of all the T-shirts with the word “Prince” on them that you’ve been selling, but now the police will have the authority to come into your house and take away your computer and modem. Not for the benefit of an aggrieved person or his heirs, mind you, but simply to add to the State’s collection of the many other assets it is already confiscating from its citizens under other laws.

Yes, it is disgusting to see people who never had anything respectful to say about Prince while he was alive trying to cash in on his popularity now that he is dead. And yes, codification and clarification of the law of misappropriation of personality to specifically address the question of postmortem rights is needed in Minnesota. But we also need First Amendment freedoms. Without them, Prince’s musical genius would not have been able to flourish in the first place.

Believe it or not, we can have both. It will just take a little more thinking, that’s all.

 

  1. Nizer, The Right of Privacy – A Half Century’s Developments 39 MICH. L. REV. 526, 535-36 (1941).
  2. See Lake v. Wal-Mart Stores, Inc., 582 N.W.2d 231 (Minn. 1998).

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.

Background

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’?

copyright-symbol
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

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?

Conclusion

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, http://chart.copyrightdata.com/ch17.html
  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.

Stemming the tide of DMCA abuse

copyright-symbolTo protect web-based services providers from liability for infringing content that is uploaded by users of their services, the Digital Millennium Copyright Act has established a set of notice-and-takedown-procedures. The Act provides that if a service-provider complies with DMCA requirements, it is insulated from liability for contributory infringement when a user uploads infringing content without the provider’s knowledge. To qualify, the provider must, among other things, promptly remove or disable access to content upon receiving a proper notification of a claim that it infringes a copyright.

Because of the ease with which this provision may be invoked, it is frequently abused as a way to suppress information and opinions even when no infringement has actually occurred. Google, for example, claims that a very large portion of the millions of DMCA notifications it receives every year are unfounded.

The Act provides for a cause of action against any person who knowingly makes false or misleading statements of fact in a take-down notification. Although attorney fees and damages are recoverable, this provision is not often invoked because most service-providers, bloggers and other website-service users do not find it worth the time, expense and effort to “make a federal case” out of this sort of thing. Instead, they usually take the hit, remove the content, and move on.

Until recently, that is.

In August, 2013 a student journalist named Oliver Hotham published an interview with Nick Steiner, the press officer for Straight Pride UK. That outfit had sent the interview to him in a document titled “Press Release,” which he then proceeded to publish on his WordPress blog. The blog post was clearly more sympathetic to LBGT rights than to Straight Pride UK’s cause. Straight Pride UK then used the DMCA’s notice-and-takedown procedure to try to force Automattic (the company that runs WordPress) to remove the interview. Automattic decided not to roll over this time. Instead, it initiated a lawsuit against Straight Pride UK alleging it was guilty of misrepresentation in connection with a take-down notice. This year, a district court in California entered judgment against Straight Pride UK for $1,860 damages and $22,264 in attorney fees.

Although the amount of the recovery is not significant, it may be hoped that it will serve as at least a small deterrent against the widespread abuse of the DMCA’s notice-and-takedown procedure to censor the free flow of ideas and opinions on the Internet.

Is Fixing Your Car Copyright Infringement?

System-Mechanic-California

(Photo: T.Voekler (Own work) [CC BY-SA 3.0 ], via Wikimedia Commons)

At one time in the not-so-distant past, a car was a relatively simple machine. Owners could easily do a lot of the repair and maintenance work themselves. Technological advancements have changed all that. Today, cars rely on a complex cyber-network that controls everything from steering, acceleration and braking to opening and closing doors and windows.

Throwing a monkey wrench into this development is the fact that a computer program is a form of intellectual property that is protected by copyright. Among other things, this means that only the copyright owner – not the car owner or his mechanic — may make modifications to the computer programs that are installed in the car. It also means the car manufacturer may take measures to prevent owners from “tinkering” with the computers that are installed in their cars. To protect the rights of copyright owners, Congress has enacted an anti-circumvention statute that prohibits even a lawful owner of a product in which a copyrighted work is embedded from disabling those measures. The statute is enforceable both civilly and criminally, and the penalty can be as much as a half million dollar fine and 5 years in prison for a first offense.

Reverse engineering is permitted for the purpose of “identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs.” This would not apply to most auto mechanics and do-it-yourselfers.

As scary as all this may sound, though, the anti-circumvention law is not really as big a problem for auto mechanics as some have imagined it to be. It doesn’t mean you can’t do any repair work on a car at all. Copyright law only protects intellectual property. It generally does not protect the physical property in which the intellectual property is embedded. Destroying a book, for example, does not violate the copyright owner’s rights, nor does it have the effect of destroying the copyright. By the same token, totaling a car, or replacing a headlight or a brake pad on it, would not infringe the copyright in the computer program. The copyright owner’s exclusive right to make modifications (“derivative works”) is limited to the computer program itself, not the entire car.

Software licensing is the bigger threat to consumers and independent mechanics. General Motors already requires purchasers to sign license agreements for use of GM’s telematics and infotainment systems. In theory, it could do the same thing with respect to all of the computerized components that are needed to make your car run. Licenses may be drafted to prohibit sub-licensing and assignments. That could be a real problem for a car owner who wants to sell his car, or who wants to allow a friend or family member to drive it.

Whether a car manufacturer would find it beneficial to include such terms is not known. It is very possible, though, that car companies could begin requiring buyers to enter into licensing agreements that condition a driver’s use of the software upon an agreement to only bring the car to a manufacturer-authorized technician for service.

Car companies have quite a bit of bargaining power in this respect. Cars have become inoperable without the necessary software. The power to prevent buyers from allowing others to drive the car, or to sell the car, or to have anyone but a dealer or a manufacturer-authorized service technician repair it, gives big car companies considerable leverage to insist on whatever terms they would like in purchase agreements.

The issue is complicated by consumer protection and safety concerns. If copyright limitations are lifted so that car buyers can modify the programming, then buyers of used cars could end up purchasing cars with altered programming. Some such alterations could be dangerous, yet not readily apparent — such as a disabled airbag.

For this and other reasons, it is difficult to predict what the Copyright Office will do. It is currently reviewing comments. A decision is expected in July.

Unfortunately, the source of the Copyright Office’s rule-making authority in this instance is limited to the anti-circumvention statute. It does not have the power to issue a rule preventing car manufacturers from dictating onerous software licensing terms to customers.

Congressional action to clarify this aspect of the law and to protect consumers and small businesses could be helpful.

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,
2067.2

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.

Conclusion

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)

Author’s Guild v. HathiTrust

Author’s Guild, et al. v. HathiTrust, et al., no. 12-4547-cv, (2d Circ., June 10, 2014)

The second in a set of lawsuits commenced by the Author’s Guild in an attempt to stem the tide of mass violations of the copyrights of book authors, this one seems to be a much more reasonable application of the “fair use” doctrine than the Second Circuit’s decision in Author’s Guild v. Google last year was.

In 2004, the University of California at Berkeley and a few other universities embarked upon a program to create scanned digital copies of the books in their collections. Four years later, the HathiTrust was set up to manage this digital library. By 2013, more than 80 institutions were participating in the program, and over 10 million works had been added to the collection. Since permission to reproduce these books had not been obtained, the program appeared to involve as many as 10 million copyright violations. The Court held, however, that the copying fell within the “fair use” exception to copyright protection.

HathiTrust makes its digital collection available free of charge to readers with “print disabilities,” i.e., people whose physical condition (such as blindness or inability to hold a book) makes them unable to read printed books. The Court reviewed the legislative history demonstrating Congress’s intention to allow, as “fair use,” free copies of copyrighted works to be made available to blind individuals. The Court extended the rationale for this rule to bring individuals with any kind of “print-disability” within the “fair use” doctrine.

The Author’s Guild also complained that HathiTrust furnishes digital copies to libraries to replace lost, stolen or destroyed physical copies. The Court dismissed this latter set of claims for lack of standing and ripeness.

Next, the Author’s Guild made the same kind of claim as it did in the Google case, that copying for the purpose of creating a searchable database of books infringes on the rights of individual copyright owners. Unlike Google Books, though, HathiTrust search results do not display pages-long “snippets” of text. In fact, no text at all is displayed. Instead, the user is only told if and how often the term appears. The Second Circuit Court of Appeals appropriately ruled this to be a transformative use that is permitted as “fair use” of copyrighted material. This limited kind of use does not involve unnecessarily excessive copying , and does not dilute the market for the works.

It is difficult to argue with the Court’s decision in this case. Accordingly, the Second Circuit is now one-for-one on its decisions relating to the permissibility of engaging in mass copyright violations for the purpose of creating searchable databases of copyrighted works.

 

 

Authors Guild v. Google: Is Fair Use Fair?

Google

On November 14, 2013, U.S. Circuit Court judge Denny Chin (sitting by designation in the U.S. district court for the southern district of New York) concluded 8 years of copyright infringement litigation with an order dramatically expanding the “fair use” defense. Seemingly somewhat out-of-sync with the Napster decision a few years ago, the order permits Google to continue to freely copy the entire contents of millions of copyright-protected books and distribute them, or at least significant portions of them, to the public free of charge, without either getting permission from the authors or paying them royalties for their works.

The Google Books project may well be the greatest boon to researchers there has ever been. In the old days, you would need to make a lot of telephone calls and perhaps drive a long distance to a library to track down, say, an exact quotation from a particular nineteenth century physics textbook. With Google, you simply type the name of the text and a few key words into a search bar, and within seconds a link to a copy of the page of the book on which the quotation you seek appears on your screen. Follow the link and the quotation, along with a considerable amount of additional text from the book, instantly appears on your screen. It is a researcher’s dream come true. But what about the rights of authors? Is it fair to them to allow people to read unauthorized copies of their books without having to pay for them? Certainly there can be no  complaint about works that are so old as to have entered the public domain. But what about books that are still protected by copyright?

The Copyright Act prohibits the reproduction of copyright protected books. 17 U.S.C. § 106(1) (2013). It also prohibits the distribution of books that are protected by copyright.  17 U.S.C. § 106(3) (2013). And it prohibits the unauthorized display of protected works. 17 U.S.C. § 106(5) (2013). As part of its “Library Project,” Google digitally scanned millions of books in the Library of Congress, the New York Public Library and several university libraries, and then made them available to the public to view and download for free. Not having obtained permission from the authors and publishers of these books, Google committed millions of violations of each of these laws. The upshot was a class action copyright infringement lawsuit by the Authors Guild on behalf of book authors everywhere.

After more than eight years of litigation, a U.S. district court judge determined that Google had indeed infringed the copyrights of scores of books authors, but refused to hold the company liable for it. Instead, the judge ruled that the massive copying and distribution program upon which Google had embarked came within the “fair use” defense to copyright infringement.

The “fair use” doctrine permits limited use of copyrighted works under some circumstances, in the interest of fostering the development of arts and science.  Because of it, no permission is needed to copy small amounts of  a book for the purpose of criticism, comment, news reporting, teaching, scholarship or research. What Google did went far beyond that, though. Google’s activities involved copying, distributing, and in some cases displaying the entire contents of copyright protected books without permission.

The company was able to secure a favorable ruling by invoking the four-prong “fair use” test set out in the Copyright Act. Under 17 U.S.C. § 107 (2013), an infringing use of copyright protected work is permitted “fair use” if the following factors, on balance, favor unauthorized use of the work:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The judge found that, on balance, the factors weighed in favor of Google’s massive copying and distribution project. He emphasized the great benefit to the public of having access to a large number of works all at the same time. He rejected the authors’ argument that Google’s scans serve as a market replacement for the books, depriving authors of payment for their work. “Google does not sell its scans,” he noted.

Of course, this ignores the fact that the purpose of copyright is not simply to prevent others from profiting, but to ensure authors a fair return for their labor. According to the judge, though, Google Books actually helps authors sell their books because “patrons use Google Books to identify books to purchase.”

Do people really use Google search to locate nonfiction books to buy? Or do they only read so much of the text as they want or need at that particular moment, thereby alleviating the need to buy the whole book? And does having all the text of a book available for free online remove, or at least decrease, the incentive for libraries to acquire copies for the use of their patrons?

Well, but the judge has this to say:

“[Google Books] has become an invaluable research tool that permits students, teachers, librarians, and others to more efficiently identify and locate books…. It has given scholars the ability, for the first time, to conduct full-text searches of tens of millions of books.”

Creating a searchable index of books clearly is a transformative use. As such, it should easily fall squarely within the “fair use” doctrine. Had Google simply created an index that displayed a list of books in which the search terms appear, without displaying the actual text of these books, there would be no question that the creation of the indexing system would have been a fair use. Enabling users to also read entire pages from the books — and in some cases, the entire book — after identifying and locating them, without anybody having to actually pay anything for a copy of the book is a different story.

Predictably, librarians, Internet surfers and Google officials are thrilled with the decision. Authors, not so much. An appeal is almost certain, although all indications are that the Second Circuit probably will affirm the decision.

You can read a copy of Judge Chin’s ruling here:

http://publishersweekly.com/binary-data/ARTICLE_ATTACHMENT/file/000/001/1887-2.pdf