Pre-72 Sound Recordings not subject to DMCA

Under New York state law a decision issued last week holds pre-1972 sound recordings are not subject to the DMCA safe harbor provisions and Grooveshark is liable for state law copyright infringement of UMG owned pre-1972 sound recordings.  UMG Recordings, Inc. v. Escape Media Group, Inc.  Opinion linked here.

The year the sound recording was released is key to UMG’s argument.  Prior to February 15, 1972 sound recordings were protected by state law copyright schemes.  All sound recordings released after February 15, 1972 are protected by Federal Copyright Law.

Grooveshark continues to hide under the protection of the DMCA (Digital Millennium Copyright Act) Safe Harbor provision claiming it didn’t know that content uploaded by third parties was infringing and had been uploaded without permission.   I believe the judges’ decision was correct.  If the pre-72 sound recording owners do not receive any of the protections of the Federal Copyright Act such as the ability to recover attorneys’ fees or sue for statutory damages, then why should an infringer receive defensive benefits from the Copyright Act?

Because this decision was issued by the New York State Appellate Court, that court had no obligation to follow a footnote in  Capitol Records, Inc. v. Mp3 Tunes, LLC, 821 F.Supp.2d 627 (S.D.N.Y. 2011) in which the court states in dicta:

This Court agrees with [Mp3 Tunes, LLC] the plain meaning of the statutory language makes the DMCA safe harbors applicable to both state and federal copyright claims. Thus, the DMCA applies to sound recordings fixed prior to February 15, 1972.

UMG made a great tactical decision in keeping their pre- and post-72 sound recordings separated in their legal filings.  A state court was the appropriate venue to decide if the DMCA applies to sound recordings that are not otherwise protected by the U.S. Copyright Act.

“When The Band Gets Divorced – Mediating The Band Partnership Dispute”

“When The Band Gets Divorced – Mediating The Band Partnership Dispute”
1 hr CLE pending

Join attorney/mediator Tamera Bennett at the Belo Mansion at Noon on Wednesday, March 27, 2013 for a discussion on common issues band members mediate when a member departs and/or the band dissolves.

We’ll be taking a look at the “Sugarland” partnership dispute, the recent “En Vogue” dispute, as well as the “J Geils Band” dispute and applying those fact patterns to structuring a successful mediation for your client.

Dallas Bar Association
Belo Mansion
2101 Ross Avenue
Dallas, Texas 75201
214-220-7400

Sherlock Holmes, Elementary, Copyright Protection and Trademarks

“It’s elementary my dear Watson, Sherlock Holmes might still have copyright protection.”  Not precisely the definitive answer one expects from Sherlock’s reasoning of all things – even the intricacies of copyright law.

The recent  lawsuit filed against the estate of Sir Author Conan Doyle might bring out  heirs of other great works created in the late 1800′s and early 20th century to see just how long copyright protection can be stretched.

The character of Sherlock Holmes  first appeared in publication in 1887 and was featured in four novels and 56 short stories spanning until 1927.  According to US Copyright Law, the works written and published prior to 1923 are in the public domain. That means the characters, story lines and plots are free for use.  The Estate asserts the works between 1923 and 1927 are infringed by the book In the Company of Sherlock Holmes scheduled for publication by Random House.  In order to head-off an infringement suit, author/editor Leslie Klinger filed a declaratory judgment action asking the Judge to find the copyright on certain works featuring Sherlock Holmes and certain elements of the stories has expired.

The Complaint filed does a great job laying out the facts regarding when certain elements were first used in the Sherlock Holmes stories and why those elements are in the public domain.

Read more from the The Hollywood Reporter ESQ blog and TechDirt.

Also visit the Conan Doyle Estate website to see which Sherlock Holmes projects have been “licensed” or “authorized.”

On another interesting note, the Conan Doyle Estate Limited has been busy filing  trademark applications for the brand SHERLOCK HOLMES.  In 2010 the estate filed six intent to use trademark application featuring the name SHERLOCK HOLMES.  Based on US Patent and Trademark office filings, none of these trademarks are currently in use by the Estate.  The image above of Holmes with the Pipe is a registered trademark of the The Sherlock Holmes Memorabilia Company.  According to the Conan Doyle Estate Website, the Estate is pursuing cancellation of this trademark registration.

Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot!

Get Hot — The US Copyright Office issued a ruling in June 2012 that yoga sequences are not protected by copyright.  Studios offering “hot yoga” should now be in the clear from lawsuits brought by Yogi  Bikram Choudhury so long as the name BIKRAM is not used.

Yogi Bikram Choudhury developed the “Bikram” style of hot yoga and according to records at the US Patent and Trademark Office has been using the brand name “Bikram” since 1971 in offering his yoga classes and instructional materials.  The craze of “hot yoga” (which even as a yoga student, I do not understand), has taken the US by storm.

Choudhury, diligent about licensing his rights to the BIKRAM trademark and instructional method, sues yoga studios offering “traditional hot yoga”  even if the name BIKRAM  is not used to describe the course.  Choudhury has multiple copyright registrations for his yoga instructional videos and materials.  He is claiming a copyright in the sequence which is a  compilation of 26 poses and two breathing techniques.

Two very different results were reached in recent court cases filed by Choudhury.  In the Central District of California (Western District), Choudhury sued the  studio Yoga To The People claiming copyright infringement of the sequence.  The suit, after discovery and mediation, settled in November 2012 with the defendant agreeing not to offer “hot yoga” at his studio.  Perhaps the defendant should have stuck it out with the case a bit longer as a different result was reached in a very similar case.

Choudhury sued Evolation Yoga, LLC also alleging copyright infringement of the Bikram sequence.  In a motion for summary judgment ruling, The Central District of California held:

There are two reasons why the Sequence is not copyrighted: 1) Choudhury’s copyrights cover his literary and audiovisual works—but only his expression of the facts and ideas contained within, and not the facts and ideas themselves; and 2) even though Choudhury’s works describe the Sequence (and teach one how to do it), a compilation of exercises or yoga poses itself does not fall into any of the copyrightable categories under 17 U.S.C. § 102(a) and is not copyrightable under § 102(b) because it is a system or procedure.

The Evolation Yoga case (Bikram’s Yoga Coll. of India, L.P. v. Evolation Yoga, LLC, 2012 WL 6548505 (C.D. Cal. Dec. 14, 2012))  continues with other issues not resolved by the Motion for Summary Judgment ruling.

Read more here and here.

 

Entertainment Law Update Podcast: Faulkner, Einstein and Superman

Join music lawyer and music mediator Tamera Bennett and film/tv/theatre lawyer Gordon Firemark for Episode 36 of the Entertainment Law Update Podcast.  It’s the podcast by entertainment lawyers for entertainment lawyers.

 

Copyright First Sale Doctrine Before Supreme Court

The US Supreme Court will decide in Kirtsaeng v. John Wiley & Sons, Inc.  if importing and re-selling copyrighted works originally intended only for sale in a  foreign territory is protected by the “First Sale Doctrine” or constitutes copyright infringement.

If the importation of what are deemed “gray market goods” and their resale  is protected by the “First Sale Doctrine,” book publishers, music owners, and other content owners argue the economic impact on the US market will be devastating. It will under-cut content owners’ ability to offer content for different price points in foreign countries, ie, books/music/films might be sold for a cheaper price in a foreign country than in the US.

Supap Kirtsaeng, a Thai national and former Cornell University student, had family members purchase authorized copies of textbooks in Thailand which he resold on eBay in the US for a profit. Evidence at trial suggests Kirtsaeng had a million dollar operation.  John Wiley & Sons, Inc. sued Kirtsaeng for copyright infringement and won at trial and the Second Court of Appeals upheld a $600,000 damage award.

Kirtsaeng argues his actions were not copyright infringement but protected by the first sale doctrine which provides an individual who knowingly purchases a copy of a copyrighted work from the copyright holder receives the right to sell, display or otherwise dispose of that particular copy.   See 17 U.S.C. § 109(a) & (c).

John Wiley & Sons argues unauthorized importation of the books constitutes copyright infringement in violation of the copyright owners’ distribution rights.  See 17 U.S.C.§ 602(a)(1).  Content owners argue such “gray market” goods or unauthorized imports are not lawfully made under the Copyright Act and the resale constitutes copyright infringement.

The case is ripe for Supreme Court review as the 2nd and 9th Circuits say the “first sale doctrine” does not apply and the 3rd Circuit says it does.

Music lawyer Tamera Bennett and film lawyer Gordon Firemark discussed the Kirtsaeng appellate court ruling on Episode 23 of the Entertainment Law Update podcast.

Copyright Renewal Vests in Sony not Roger Miller’s Heirs

For works published or copyrighted prior to January 1, 1978, the sixth circuit court of appeals made a landmark decision holding the copyright renewal term vests in the music publisher when the author dies during the twenty-eighth year after copyright was secured — the last year of the fist copyright term.

The history of the case can be found here and here.  Miller’s heirs have been in a litigation with Sony Music Publishing for years over who owns the songs that Miller wrote in 1964.  Miller died in 1992, the 28th year after writing songs such as “King of the Road” and “Dang Me.”

It takes a family with assets to pursue litigation to trial, appeal and back again.  The Miller estate has helped to clarify, at least in the sixth circuit, an unanswered question in copyright law.

Read the opinion here.

Sir Elton John Sued for Copyright Infringement

Twenty years after Guy Hobbs first thought Elton John’s hit “Nikiti” was lyrically too similar to Hobbs’ poem “Natasha,” Hobbs’ sued John, Bernie Taupin and Big Pig Music in federal court for copyright infringement on April 26, 2012.

Both the song and poem tell a story of a cold-war romance.  Hobbs’ poem, or he calls it his lyrics, was written in 1982 and registered for copyright in the UK in 1983.  In 1984 Hobbs forwarded the poem “Natasha” to Big Pig Music, the music publishing company that represents Elton John and Bernie Taupin.

Elton John released “Nikita” in 1985 on the album “Ice and Fire.” Hobbs alleges he first discovered the release of “Nikiti” in 2001.

Whether or not Hobbs can prove infringement is not the primary issue in this case.  Hobbs’ has admitted in his complaint he had actual knowledge in 2001 of the alleged infringement.  Further, the defendants could easily imply Hobbs should have had knowledge in 1985 when John released the album “Ice and Fire.”

The defense should succeed in this case on their defenses of statute of limitations and laches.  Hobbs simply waited too long to sue.  The statute of limitations for copyright infringement is three years.  Laches is a defense in common law created by judges, meaning not a law created by legislators, that says you can’t wait too long to sue.

There may also be some interesting procedural questions based on the fact that all the parties are residents of countries other than the United States.

Does Phone Call Equal Song Lyrics? Drake Sued by Ex As Co-Writer of Song

Grammy nominee Drake has been sued by an ex-girlfriend who claims she co-wrote the hit song “Marvin’s Room” and is entitled to part ownership in the copyright in the song; copyright in the sound recording; and payment of songwriter royalties.

The first  30 seconds of the song is a recording of a phone conversation with the ex-girlfriend and plaintiff, Erika Lee. Lee asserts that she and Drake had every intention to write the song together and that her contributions were intended to be incorporated into the final song.  Lee contends the intro “phone message” is key to the underlying song.

Lee’s complaint is somewhat confusing as issues of ownership of the sound recording are intermingled with claims asserting ownership in the underlying song.

The most interesting thing in the complaint to me is a cause of action for Breach of Fiduciary Duty.  Really, songwriters have a fiduciary duty to one another? If a record label doesn’t have a fiduciary duty to an artist, do we really think that one songwriter would owe the highest duty of utmost care to a co-writer?

Read the complaint here.

Newt Gingrich Sued Copyright Infringement “Eye of the Tiger”

Newt Gingrich’s campaign makes the news twice in a week for claims of copyright infringement of a song.   Rude Music Inc., owned by Frank Sullivan, a co-author of the song “Eye of the Tiger,” filed a copyright infringement lawsuit in federal district court in Chicago for Gingrich’s use of the song on the campaign trail.

As discussed last week, so long as Gingrich’s campaign secured the necessary public performance licenses, any song may be played at a campaign event without permission from Rude Music, Frank Sullivan or Rocky Balboa.

Rude Music complaint’s does raise an interesting point regarding videos of campaign events where “Eye of the Tiger” can be heard.  There may be a blush of a valid claim for copyright infringement related to these videos.  Reproduction and distribution of the video footage looks a lot less like a “public performance” and more like a synchronization of the song to the other visual images in the footage.

Volcano Records (parent company is Sony), the copyright owner of the underlying sound recording, is not a party to the lawsuit.

Happy reading:  Jump to the complaint.

Supreme Court Upholds Copyright Protection For Foreign Works

The U.S. Supreme Court decision released this week in Golan v Holder maintained copyright protection for millions of works created by foreign authors. Before 1989, many foreign authors’ works became public domain for not fulfilling requirements in the U.S. Copyright Act. In 1994, Congress passed the Uruguay Round Agreements Act restoring U.S. copyright protection for works published by foreign authors primarily between 1923 and 1964. The URAA brought the U.S. into compliance with the Berne Convention copyright treaty.

The Justices that dissented in the 6 to 2 decision expressed concern that upholding the pertinent section of the URAA denies the right of freedom expression and curtails the incentive to create new works.

Read more from the SCOTUS Blog.

Read more from The New York Times.

Read more from BMI quoting music lawyer Tamera Bennett.

Entertainment Law Update Podcast 26: Zombies, Crowds, & Trees

Take a listen to the latest edition of the Entertainment Law Update Podcast with co-hosts L.A.  film lawyer Gordon Firemark and Texas-based music lawyer Tamera Bennett.

I would like to give a personal shout-out and thank you to Gordon for bringing me on board for this great podcast.  I am looking forward to an amazing 2012 for the podcast and can’t wait to see who might be making a surprise visit as guest co-host!

Y.M.C.A. — Spells Copyright Termination

Victor Willis, the former lead singer of the group The Village People and the songwriter or co-writer on 32 songs performed by the group, is in a legal battle with the music publishers that currently own the copyright in the songs  to terminate the agreements granting ownership of the song copyrights to the music publisher.

Pursuant to section 203 of the 1976 Copyright Act authors (or certain heirs) may terminate  copyright assignments and reclaim copyrights 35 years after the work is first published.  There are strict statutory guidelines that must be followed and they are outlined in more detail in the article here.

The music publishers that own the songs made famous by The Village People have asked a judge to find the songs were created by Willis as “works for hire.”  Under the Copyright Act works created as “works for hire” are not subject to the termination provision because the employer, in this case the music publisher, would by law be deemed the author of the work.  But, songs are not specifically enumerated as a category of “works for hire,” so the music publishers would be required to prove that Willis was their employee in order for this argument to fly.

While the article from The Hollywood Reporter Esq. blog and The New York Times lay out the facts and the basics on termination law, they do not mention what might be the music publisher’s best argument to defeat the claim:  17 USC § 203(A)(1) requires that when a work, in this fact pattern a song, has more than one author, a termination of the grant may be effected by a majority of the authors who executed the original agreement conveying the rights to the copyright.  “Y.M.C.A” has four songwriters.  Three of the four songwriters must properly serve notice on the music publisher to meet the first hurdle in even attempting to terminate the grant. While the other co-writers may have filed their termination notices, this fact does not seem to be surfacing in the news reports.

Music lawyer Tamera Bennett and film lawyer Gordon Firemark discuss this case in detail in Episode 23 of the Entertainment Law Update Podcast.

Music Business Panel at Denton — 35 Conferette

Updated: March 14, 2011:

The Dallas Observer Blog has an interesting article on the “Music Business Legal Checklist” panel that was presented as part of the 2011 35 Conferette.

Click here for a summary of the topics discussed and resources you can review online.

_______________________________________________

Dallas and Fort Worth music lawyers team up for a “basics” music business legal issues panel on March 10, 2011 at Denton Banter as part of the Day Events for the 35 Conferette music conference.

Music Business Legal Check List: Five Things You Better Think About and Do
Sponsored by the Dallas Bar Sports and Entertainment Law Section
Thursday, March 10th from 3:00 PM – 4:30 PM at Banter, 219 West Oak Street, Denton, TX 76201

This free and open to the public  presentation will assist the new or established musician/artist/music business professional in navigating the ins-and-outs of legal issues involved in the music business. The panel will address 1) when key team members such as a manager, attorney or booking agent should become involved in an artist’s career; 2) who owns the content – songs, sound recordings, trademarks; 3) do you need a written agreement or is a hand-shake between the band members enough; 4) how do you raise money for the next record; and 5) what revenue streams are out there.

Moderator
Tamera H. Bennett: Attorney, Bennett Law Office, PC; President, Farm To Market Music, LLC, Lewisville, TX

Panelists
Megan M. Carpenter: Associate Professor & Director, Center for Law & Intellectual Property, Texas Wesleyan School of Law, Fort Worth, TX
Craig C. Crafton: Attorney, Cozen O’Conner, Dallas, TX
Catherine Hough: Attorney, Ferguson Law Group, PC, Plano, TX
Decker Sachse: Attorney, Sachse Law Group; Business Affairs, Kirtland Records, Dallas, TX

Stick around after the panel presentation for the 2nd Annual Music Mixer hosted by the Texas Board members of the Recording Academy (the Grammy folks).  Cash Bar.

Entertainment Law Update Podcast Episode 14

Dallas Music Lawyer Tamera H. Bennett and Los Angeles  Theater Lawyer Gordon P. Firemark discussed Mockumentaries, Downloads, Licenses, and First Sale issues in Episode 14 of the Entertainment Law Update Podcast.

If you are a licensed California attorney, CLE credit hours are available.  In most other states, listening to the podcast will qualify for “self-study” cle hours.

Podcast: Entertainment Law Update Episode 13

Lucky Episode 13 of the Entertainment Law Update Podcast with hosts  Los Angeles based film lawyer Gordon P. Firemark and Texas based music lawyer Tamera H. Bennett is available here.

Gordon and I had a lot of fun this month discussing multiple topics including:

Justin Bieber’s Twitter “prank”
Judge Gertner’s recent opinion in Sony v. Tenenbaum
Child labor laws and the production of “Kate Plus 8″
Fleeting Expletives
Don Johnson/Alan Ladd, Jr./Celedor — Profit Participation Wins

Take a listen to stay up-to-date on film law, music law, copyright law and trademark law.

Copyright Termination: 2009 and 2010 Cases of Interest

Copyright terminations under sections 203 and 304 are hot topics in the news and at the courthouse the past 12 months.  2013 will be the first year that terminations can be effective under 17 USC Section 203…. if notice of termination was proper.   For a general overview of the termination process click here for an article written by music lawyer Tamera H. Bennett for the Texas Entertainment Law Institute.

Some of the copyright terminations cases gaining  recent attention include:

• U.S. Supreme Court declines to hear appeal of John Steinbeck estate.  The Second Circuit  overturned a lower court’s decision and maintained copyrights assigned to Penguin Book Group from Steinbeck’s widow.  This extremely fact specific case turned on the fact that Steinbeck’s wife terminated and renegotiated Steinbeck’s 1939 agreement with Penguin.  This renegotiation in 1994 “cut-off” the rights of Steinbeck’s children from his first marriage.  Penguin Group (USA) v. Steinbeck, 537 F.3d 193 (2d Cir. 2008), cert. denied 2009. 
  

• A Southern District of New York judge  ruled the heirs of comic artist Jack Kirby, were subject to transactional jurisdiction under a New York statute by sending copyright transfer termination notices pursuant to 17 USC 304(c).  More information about the case is found here.  Marvel Worldwide, Inc. v. Kirby, 2010 WL 1655253 (April 14, 2010)

• Charlie Daniels’ “The Devil Went Down to Georgia,”was written in 1979, but Copyright Termination could be subject to agreements he signed with Universal Music Publishing Group pre-1978.  This possible “gap” in the copyright law between Section 203 and Section 304 is under review at the Copyright Office.

• Sherlock Holmes is not yet PD.  Some of the early Sherlock Holmes’ works are public domain, but many are not yet.  Some works were recaptured in 1981 and will remain under U.S. Copyright until 2023, although protection has long expired in the U.K.

• Superman sends valid copyright termination notices.  This blog post gives some great insight to what is required to send a valid notice of termination under 17 USC Section 304(c).  Siegel v. Warner Bros. Entertainment, Inc., CV-04-8400-SGL (RZx),  2009 WL 2512842 (C.D. Cal. 2009).

Entertainment Law Update Podcast Episode 12 Now Available

In the latest episode of the Entertainment Law Update podcast, Tamera H. Bennett and Gordon Firemark explore:

• Follow ups on Hot News
• Viacom loses suit against YouTube.
• Hurt Locker Suit(s)
• Idea Theft
• Tribute Band Names
• Celebrity Rights of publicity

To listen to the podcast, click here.

Universal v. Augusto First Sale Under Copyright Act Appeal

The question before the Seattle Court of Appeals is whether or not the offering for sale of promotional copies of music CD’s is an act of copyright infringement or a protected transaction under the First Sale doctrine of the US Copyright Act.

I blogged here about this case when the trial court ruled in favored of the defendant.

The Electronic Frontier Foundation has an interesting post regarding the appeal that will be heard on June 7, 2010.

Music Publishing and Divorce: No Extrinsic Fraud

by Tamera H. Bennett
posted June 3, 2010

The Court of Appeals of Texas, Fourth District, San Antonio, ruled there was no extrinsic fraud in divorce proceedings when one spouse conveys songs out of a community property music publishing company without the express knowledge of the other spouse.  Sanchez v. Sanchez, No. 04-09-00477-CV (Tex. Civ. App. — San Antonio, June 2, 2010).

Pursuant to a 2006 divorce decree, wife Maria Sanchez was awarded the music publishing company Planeta Latino.  Subsequent to the finalized divorce, Ms. Sanchez discovered certain copyrights were assigned out of the music publishing company prior to the divorce.

The court held this may have been an act of intrinsic fraud — relating to the merits of the issues that were presented and presumably were or should have been settled in the former action.  Basically, the wife, via due diligence prior to the divorce, could have discovered the fraud.

Extrinsic fraud —  is fraud that denied a party the opportunity to fully litigate at trial all the rights or defenses that could have been asserted.

Take away for the day — do your due diligence. Attorneys, make sure you have a paper trail for every song in the music publishing catalog prior to finalizing a divorce or an asset purchase agreement.