Tag Archives: Copyright


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Entertainment Law Update Podcast – Episode 47

bennett tamera color close crop Gordon FiremarkFilm/TV lawyer Gordon Firemark and Copyright/Trademark lawyer Tamera Bennett cover a “Motley Crew” of topics this month including trademark, copyright, film and tv legal issues surrounding the “Counting Crows,” “Raging Bull,” “Insane Clown Possee,” and “Sherlock Holmes” …. to name a few.  Click here to listen.

Sherlock Holmes – Some Copyright, Some Not

In a 10-month-long dispute between the Conan Doyle Estate and writer/editor Leslie Klinger, the trial court ruled 50 of the Sherlock Holmes stories, all published prior to 1923, are in the public domain.  Ten stories published after 1923 are protected by copyright in the US.

The court held elements introduced in the Sherlock Holmes stories published after 1923, such as Watson having a second wife, remain under copyright in the United States.

The UK copyright for all the Sherlock Holmes stories expired in 1980.  According to UK law, the term of copyright protection is the life of the author plus 50 years.  Mr. Doyle died in 1930.

Even though the works were originally published in England, they still receive copyright protection in other countries. The protection in the US, is based solely on US law.  So why is 1923 the magic year in the US, the short answer is with implementation of the Copyright Term Extension Act it was determined that works published prior to 1923 are in the public domain. “Because of legislation passed in 1998, no new works will fall into the public domain until 2019, when works published in 1923 will expire. In 2020, works published in 1924 will expire, and so on.”

Read more about the history of the  dispute and ongoing trademark issues here.

Hear film lawyer Gordon Firemark and copyright lawyer Tamera Bennett discuss the case on the Entertainment Law Update Podcast Episode 47 and Episode 43.

Top Trademark/Copyright/Entertainment Law Posts of 2013

Just a quick note to let you know our blog has a new home.  Click here for all the new content for the Create Protect blog and subscribe to the RSS feed.

As we say goodbye to 2013, it’s always fun to look back and see what our readers enjoyed. There’s a great mix of trademark, copyright and music publishing cases.

Most visited posts in 2013 (no matter original post date):

Number 5:  Johnny Football vs Juanito Futbal Trademark Likelihood of Confusion
Number 4:  Do I Need A Music Lawyer?
Number 3:  Music Publishing: A Good Investment
Number 2:  New Recording Artist Checklist: What Every Artist Should Think About
Number 1:  Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot

and a little variation on a theme – the Most visited posts that were originally posted in 2013:

Number 5:  Drybar vs Blow Dry Bar – Trademark for Blow Drying Hair
Number 4:  Sherlock Holmes, Elementary, Copyright Protection and Trademarks
Number 3:  Duck Dynasty – What Contract Clause Did Phil Violate?
Number 2:  Johnny Football vs Juanito Futbal Trademark Likelihood of Confusion
Number 1:  Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot

Copyright Grant Termination Can Undo Songwriter Estate Plan Part 1

Ray Charles planned ahead and gave each of his 12 children $500,000 in trust as their inheritance and required a release of any future claims against his estate.  What he didn’t plan on was his heirs (children) exercising their ability under the U.S. Copyright Act to file notice of termination of the copyright assignments for Charles’ songs and reclaim those revenue streams.  Charles left the bulk of his estate, including his copyright assets, to The Ray Charles Foundation for the benefit of hearing and seeing impaired persons.

There are two schemes for termination of copyright grants under the U.S. Copyright law and they arise from works created and published pre or post January 1, 1978.  Ray Charles’ wrote songs and signed copyright assignments falling into both categories, which makes this a very rich fact pattern.  The specific timing requirements for the notices are covered in detail here.

In a legal opinion focused primarily on the applicability of California’s Anti-Slapp statute, you’ll find some great nuggets on the intersection of estate planning and copyright law.

1.  A copyright grant termination notice is not “a claim against the estate” if probate on the estate has closed.   Which raises the questions: what if probate is still pending? or probate never occurred and the window of time under state law probate proceedings has past? or filing a notice of termination would be timely while probate is pending? or the heirs must file the termination notices before the probate proceedings end to fall with the notice window?

2.  If copyrights were created as “Works for Hire” then the copyrights were never part of the author’s estate and filing the notice of termination could not be a claim against the estate.  Of course, no heir wants to argue “work for hire” because anything created as a work for hire does not have a right of termination.

3.  A termination right is inalienable because under the statute, “termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or a future grant.”  Does this mean there is no way for an author to control post-death what happens to his/her copyrights?

The opinion in this case was rendered in early 2013.  While notice of an appeal was filed, there has been no additional recorded court activity.  I suspect The Ray Charles Foundation and the heirs are entering into some form of negotiation.  Which leads to Part 2 of this post (coming soon) which addresses why The Ray Charles Foundation needs the Charles’ heirs to maximize the value of the Foundation.

I’ve written numerous times about heirs reversing an estate plan via their statutory rights granted under the U.S. Copyright Act in relationship to Renewal of Copyright and Termination of Copyright Grants.  Read more here, here, and here.

Applicable code sections: 17 U.S.C. 203, 304.

Case cite: The Ray Charles Foundation v. Robinson, 2:12-cv-02725-ABC-FFM, (USDC Cal. 2013).

Malcom X Heirs Sue for Copyright Infringement and Injunction

The Heirs of Malcom X sue to stop the publication of key portions of Malcom X’s diaries.  While the diaries were donated to the New York Public Library, the family argues no copyright transfer has occurred to allow defendant, Third World Press, to print all or any portion of the diaries.    The family, via the entity X Legacy, LLC, seeks emergency injunction relief to stop the publication.  To add to the confusion, one of Malcom X’s daughters is an editor of the project and seems to be defending the actions of Third World Press.

Donating of papers to a library or other organization is a common practice of high-profile individuals.  The act of donation does not constitute a transfer of the copyright.  At a minimum, in accordance with the terms of the donation or loan agreement, the donee may have the ability to display the materials for research purposes or public review.

At this stage in the litigation process, it is unclear on what grounds Third World Press, LLC is claiming they have the right to reproduce and distribute the diaries.

Making Money In A Digital Age: Bootcamp On Digital Royalty Strategies

Making Money in a Digital Age:   Maximizing your client’s film and music revenues with various digital options available at our fingertips.  Join the Sports & Entertainment Law Section of the Dallas Bar Association for a Boot Camp all about digital distribution for film, music, & television. Learn how to maximize you or your client’s film, music, or tv revenues with various digital options available at our fingertips.When: Friday, 18 OCT 2013 at 1:00pm
Where: Texas Theatre, 231 W. Jefferson Blvd, Dallas, TX 75208,  214-948-1546$25 for lawyers (MCLE Pending)
$20 for non-lawyers

To purchase tickets, please go to: http://www.prekindle.com/promo/id/22815447475413408

Music Panelists
Steven Corn – Los Angeles, California
Co-owner with BFM Digital

Andy R. Jordan – Dallas, Texas
Music producer for interactive media and documentary films

Lee Mezistrano – Seattle, Washington
Lawyer with Starbucks – Digital Ventures

Evan Stone – Dallas, Texas
Lawyer with FUNimation Entertainment and Partner at Stone and Vaughn PLLC

Film Panelists

Steven Masur – New York, New York
Lawyer, Venture Law Group Cowan Debaets Abrahams & Sheppard LLP

Ken Topolsky – Dallas, Texas
Producer, Dallas TV Show

Lise Romanoff – Los Angeles, California
Managing Director/CEO , Vision Films

Copyright and Trademark Filings Still Accepted – Government Shut Down

UPDATED 10/7/2013 – The USPTO is currently unable to process credit cards.  If your filing deadline is today, you must use an alternative payment/filing method.

ORIGINAL POST – The U.S. Copyright Office shut down at 12:01 am October 1, 2013.  According to their website, new Copyright Applications may be filed via the online eCo system.  We will assume that applications will not be processed until the government reopens.  Registration dates should not be impacted as the effective date of registration is the date the Copyright office receives the application, filing fee and deposit material.  If at all possible, use the eCo system to upload your deposit to insure the date of receipt of the deposit.

The US Patent and Trademark Office has reserve funds to operate for approximately 4 weeks. At this time processing of documents should continue uninterrupted.  As always, we recommend filings be made online via the TEAS or TEAS Plus systems.

Entertainment Law Update Podcast 42 – For IP Lawyers

Film lawyer Gordon Firemark and music lawyer Tamera Bennett bring you a mid-Summer podcast covering film, tv, trademark, copyright and employment law issues.

Click here for the July 2013 Entertainment Law Update Podcast.  Be sure to subscribe to the podcast in the iTunes store and share a review.

EMI Entertainment World, Inc. v. Karen Records, Inc. – Who is the right plaintiff in a copyright dispute

EMI Entertainment World, Inc. learned the hard way  that making sure you name the correct plaintiff in a lawsuit is pretty important to winning.

EMI sued Karen Records, Inc., Karen Publishing, Inc. and the owners of these entities for copyright infringement and won a $100,000 verdict.

Too bad EMI did not listen to Karen’s attorney and verify who actually owned the copyright in the songs/sound recordings that were infringed by Karen. Because EMI refused to join in the lawsuit one or more of EMI’s subsidiaries as the proper party and owner of the copyrights, the case was dismissed by the judge for lack of jurisdiction.  EMI did not have standing to file the suit on behalf of the EMI subsidiaries.  EMI was notified of this potential deficiency in the lawsuit and refused to fix the problem.

Copyright litigation practice tip –  Name the actual copyright owners as the parties to the lawsuit. EMI won, but actually lost.

Here’s a link to the Opinion.

Copyright Basics FAQ

Copyright FAQ

The US Copyright Office has a wealth of information available at their website on the copyright registration process.

What is a copyright?  Copyright is an original work of authorship fixed in a tangible medium of expression — such as a song, book, or sound recording.

What is the difference between a trademark and a copyright?  A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Examples of well-known trademarks include NIKE, CHANEL and ZYRTEC.  Click here to read more about trademark basics.

What is a “Poor Man’s Copyright?”  The practice of mailing a copy of your own work to yourself is sometimes called a “Poor Man’s Copyright.”  There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration. In the event of an infringement lawsuit it may not even be admissible to prove creation and ownership of the work.

Do I need a lawyer to file a copyright application?  NO. Anyone may complete and submit an application to the Copyright Office.

Where do I file a copyright application?  Copyright applications may be filed through the U.S. Copyright Office.  More information is available at:  http://www.copyright.gov.

Which copyright form should I use?  The Copyright Office has transitioned to an online filing system to replace the old TX, SR, PA paper forms.  To use the eCO Online Filing system click here.

What does it cost to file a copyright application?  The current filing fees charged by the Copyright Office are $65 per hard copy application or $35 per eCO Online Filing application.

Do I need to register my work to have copyright protection?  The short answer is No. Copyright protection arises at the moment of creation — when you fix an original work in a tangible expression. Follow through with a copyright application to gain additional protections.  Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney’s fees in successful litigation. Finally, if registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law.

Creative Commons is all the protection I need, right?  Creative Commons Licenses do not give you copyright protection. The licenses available from Creative Commons are simply that … licenses to help you define the rights and obligations by which other people can use your works.  Creative Commons is simply one option available to you for licensing your works to third parties.

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.

Will Play for Tips: Legal Tips for Musicians/Artists/Songwriters at 35 Denton

208015_356082524466629_644788678_nSATURDAY, MARCH 9TH at 35 Denton
3:00 PM – 4:30 PM (UNT on the Square)

Will Play for Tips: 5 Legal Tips for Musicians/Artists/Songwriters

Join the Dallas Bar Association Sports & Entertainment Law Section for a panel presentation on March 9 from 3:00 PM – 4:30 PM at UNT on the Square, 109 N. Elm St. Denton, TX 76201.This introduction to legal issues in the music business panel will help you answer questions such as Who owns my song? Do I need a lawyer? How do I protect my brand? That’s “fair use,” right? and Can’t we all just get along? Join us for a discussion covering copyright law, trademark law, business structure for the band and other music business legal basics.Participants in the panel include:Tamera H. Bennett, Bennett Law Office, PC/Farm to Market Music, LLC;  Catherine Hough, Ferguson Law Group; Evan Stone, Law Offices of Evan Stone; Kevin Harrison, Kevin Harrison Law.

Free and open to the public. 1.5 hour MCLE pending.

GRAMMYs At The Texas Capitol 2013 – update #txgrammys

The Recording Academy® Texas Chapter’s first bi-annual event, GRAMMYs At The Texas Capitol, took place yesterday, February 26, at the State’s Capitol. Approximately 30 participants lobbied on behalf of the membership including Chapter Trustee, Paul Wall, National Vice Chair of the Board Of Trustees, Christine Albert, Chapter Governor, Terry Lickona, as well as GRAMMY® winner Ray Benson, country music artists Jack Ingram and Josh Abbott, as well as NBC’s The Voice finalist, Nakia. The resolution in the Senate and House deemed February 26, 2013 as Texas GRAMMY Music Day.  This special day was sponsored by Texas Senators: Robert Deuell (R) and Leticia Van de Putte (D), and Texas Representatives: Myra Crownover (R) and Ryan Guillen (D).

Led by group members Todd Dupler, Director of Government Relations for The Recording Academy; Advocacy Chair Tamera Bennett; Advocacy committee members R.C. Rondero de Mosier and Ricky Anderson; and Sr. Executive Director Theresa Jenkins—the Texas Chapter met with policy makers to lobby for economic development and support for Arts education in public schools. Additionally, the group raised awareness about The Recording Academy’s concern for Intellectual Property and Piracy issues in the state of Texas.

Read more here.

Sherlock Holmes, Elementary, Copyright Protection and Trademarks

Updated 2/10/14

In a 10-month-long dispute between the Conan Doyle Estate and writer/editor Leslie Klinger, the trial court ruled 50 of the Sherlock Holmes stories, all published prior to 1923, are in the public domain.  Ten stories published after 1923 are protected by copyright in the US.

The court held elements introduced in the Sherlock Holmes stories published after 1923, such as Watson having a second wife, remain under copyright in the United States.

The UK copyright for all the Sherlock Holmes stories expired in 1980.  According to UK law, the term of copyright protection is the life of the author plus 50 years.  Mr. Doyle died in 1930.

Even though the works were originally published in England, they still receive copyright protection in other countries. The protection in the US, is based solely on US law.  So why is 1923 the magic year in the US, the short answer is with implementation of the Copyright Term Extension Act it was determined that works published prior to 1923 are in the public domain. “Because of legislation passed in 1998, no new works will fall into the public domain until 2019, when works published in 1923 will expire. In 2020, works published in 1924 will expire, and so on.”


“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!

The Create Protect Blog has a new home.  Click here to read Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot.

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.

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.

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.


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