GoalsOfGreenTech

Cheerleader Outfit Designs ARE Covered by Copyright

Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., 580 US ___, a newly (22 March 2017) decided copyright case, finds that the design elements of a cheerleading outfit can be covered by copyright.

According to the syllabus of the case, SCOTUS holds: “A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated. That test is satisfied here.”

This case is interesting because it tells us where lies the line between industrial design, which is not protected by copyright (it may be protected by patent), and artistic design, which is. Courts have disagreed where that line lies.

Here, the District Court held that the designs did not qualify for protection under copyright because the designs served the useful purpose of identifying the outfits as “cheerleading uniforms.” The designs are therefore utilitarian, cannot be separated out to stand on their own, and therefore cannot be protected by copyright (you can read the District Court’s opinion at 2014 WL 819422 (WD Tenn., Mar. 1, 2014)).

The US Court of Appeals for the Sixth Circuit disagreed; they held, with one dissent that upheld the District Court’s opinion, that the graphic designs are indeed “separately identifiable” because a cheerleading costume without design is still identifiable as a cheerleading costume, so the graphics on such a garment can indeed be separated out and separately displayed and are thus protectable under copyright (read the 6th Circuit’s opinion at 799 F. 3d 468, 471 (2015)).

The Supreme Court affirms the 6th Circuit.

So what does this case teach us? We now know that designs on clothing CAN be separated out from the clothing, making the design on the clothing, even if the design relates to the function of the clothing, protectable under copyright.

We know that “The statute … provides that the “design of a useful article” can include two-dimensional “pictorial” and “graphic” features, and separability analysis applies to those features just as it does to three-dimensional “sculptural” features.”

We know that “…a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.”

Copyright remains one of the most case-by-case determinations around. The findings of this case have yet to be tested on utilitarian items other than clothing; we’ll watch this with some interest to see what, if anything, happens.

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Copyright Rulemaking on Moral Rights

“The U.S. Copyright Office has published a Federal Register notice extending the deadlines for public comment in connection with the Office’s study on the moral rights of attribution and integrity. Public comments are now due no later than 11:59 p.m. Eastern time on March 30, 2017, and reply comments are now due no later than 11:59 p.m. Eastern time on May 15, 2017.

For more information, click here to visit copyright.gov

So … what are “moral rights”?

Moral rights provide an author with the ability to control the eventual fate of their works. In the US, these rights are limited to visual arts (other countries allow other, more general, moral rights). You can find the statute at 17 USC 106A, commonly called the Visual Artists Rights Act of 1990 (VARA). Under VARA, an artist has the right to control the use of his/her name in connection with a work (including NOT using his/her name in connection with works s/he did not create), prevent the use of his/her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation, prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.

For an example of how moral rights work, say you bought a painting by a famous artist working today. This artist is known for his/her French landscapes in the style of Monet; very peaceful, very verdant, very proper. Your idiot stepson, whom you never liked, then decides to spray paint graphic obscenities on the work. The artist, although you actually own the work, can now dissociate him/herself from that work; thus, the work can no longer be sold under Artist’s name with the obscene spray painting. You thus no longer own a work by Artist; if Artist’s name adds value to the work, your painting has just plummeted in value even more than it did with the addition of spray paint.

“The [US Copyright] Office is commencing its study to review how existing U.S. law, including provisions found in Title 17 of the U.S. Code and other federal and state laws, protects the moral rights of attribution and integrity and whether any additional protection is advisable in this area. To support this effort and provide thorough assistance to Congress, the Office is seeking public input on a number of questions. “

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A Christmas Copyright

Home Free, an a cappella singing group, put out this beautiful rendition of “Angels We Have Heard On High” a couple of years ago.

The basic song itself, melody and words, is in the public domain. Anyone can perform “Angels We Have Heard On High” anytime without paying any royalties to anybody. Home Free is thus … well, home free as they perform this lovely piece.

However, the melody and words are just one layer of the rights involved here.

  • Someone wrote the harmonies we hear in the video. That person has copyright in the music of the harmonies they composed.
  • The group performed the song. They have copyright in their performance.
  • There was a sound engineer who did some mixing here. That sound engineer has copyright in the sound mixing s/he did to produce this video.
  • There was a videographer who did the camera work for the video. That videographer has copyright in the video s/he did to produce this video.
  • Finally, someone holds copyright in the final production as a whole.

There are lots and lots of layers and stakeholders in a video performance copyright.

Have a joyous holiday season!

GoalsOfGreenTech

What Is the DOJ Thinking?????!

The Department of Justice has basically denied songwriters a living wage from their hard work. 

Yuck. There is some light at the end of this tunnel, I don’t see a lot of it.

This is administrative law. Admin rulings like this can be appealed at the District Court level, but not for content per se; only for abuse of power. Since there is 60-year-old precedent in place, and since federal courts are all about precedent, it will (not “would”; “will”) take a really good litigator to convince the judge to rule against the DOJ (that’s not me; I’m a transactionalist). Once it’s in the court system, it can proceed through the appeals process like any other case.

Even though I am not a litigator, it’s always fun to do some backseat driving in cases like this. I’d do a bit of forum shopping before I would take this to the District Court. Whoever brings the admin appeal to the District Court should be sure to bring it in either the US District Court for the Southern District of New York (that court is king of copyright and performing arts) or in the US District Court that covers L.A. and Hollywood (that court is the other king of performing arts). That shouldn’t be a tough one; songwriters live in droves in those places. The lawyer would just need a local client to bring this to the attention of one (or both) of those two courts. If it gets brought in both places (two different plaintiffs), hope to God the rulings disagree with each other. That makes the appeal easier to get through the chinks, especially if they appeal to the 2nd and 9th Circuits and those rulings disagree. That could turn it into a SCOTUS case … if SCOTUS grants certiorari. That’s a big “if.”

 

Copyright©

Google Books Is Protected by the Fair Use Doctrine

The US Court of Appeals for the Second Circuit has handed down the ruling that the Google Books project does not infringe the authors’ copyrights in their various works. Under Author’s Guild v. Google. Inc., docket no. 13-4829-cv, the Google Book project falls under the fair use doctrine.

The fair use doctrine is about the grayest of all gray areas of law. The idea behind it, of course, is that there are uses for which no permission from the copyright holder is needed to use the copyrighted work. 17 USC 107 lays out the groundwork for the fair use analysis. The work can be used without infringement for purposes “…such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” The statue also lays out the four factors that come into play when analyzing whether a use is fair use or not:

“(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.”

No one factor is determinative; the results of the factors are looked at as a whole, then the judge is required to make a decision based on that analysis of the four factors taken together. This makes fair use an incredibly case-specific determination. There is no really good way to tell beforehand whether a particular use is fair use or not.

Evidently, Google Books’ use of many, many copyrighted works is fair use. I wonder whether this decision might be motivated in part by the sheer volume of copyright infringement suits that could be brought against Google if the decision had come down differently? Sometimes, federal judges can be pragmatic; the volume of copyright infringement suits that could hit the courts might indeed flood the court system since Google Books uses snippets from most published works of authorship. This influx of copyright infringement cases would interfere with other matters and completely clog the courts.

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“Happy Birthday To You” Is Apparently Public Domain

For years now, we have labored under the impression that a valid copyright exists on “Happy Birthday To You.” Evidently, that copyright’s validity is … um … questionable.

It’s not often that a big, dramatic revelation happens in a court case, but in Good Morning to You Productions Corp. et al. v. Warner/Chappell Music, Inc. et al., currently before the US District Court for the Central District of California, a new piece of evidence has just turned up that turns the copyright on “Happy Birthday” on its ear. Evidently, “Happy Birthday” is a derivative of a song called “Good Morning to You,” which was published under the 1909 Copyright Act — without notice of copyright. Today, notice means little in the world of copyright, but under the 1909 Act, notice was everything. If notice of the copyright wasn’t published with the work, the copyright in the work was void.

Interestingly, the important subtitle on the song’s manuscript was blurred in the version given by Warner/Chappell to Good Morning to You Productions as a document produced in discovery (late, I might add). That made people curious. With some good document analysis, the truth came out: the work was published without notice and therefore without copyright.

This case is still ongoing at Docket #2013-CV-04460; no court has actually invalidated the copyright on “Happy Birthday To You,” but I don’t think we need to wait too long for the Central District of California to enter judgment on behalf of Good Morning to You Productions, voiding the copyright. We will soon be able to sing “Happy Birthday” without worrying about paying a royalty.

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Changes Coming for Copyright…

This year’s two-year Congressional House Judiciary Committee’s review of copyright “focused on music licensing, discussing recently introduced legislation that has the backing of the music industry. One proposal, the Fair Play, Fair Pay Act, would establish a performance right and also require all radio formats to pay royalties for the performance of pre-1972 recordings.

These changes to copyright are, for obvious reasons, supported by the musicians and recording artists. Royalties for playing their pre-1972 songs on the radio, in all radio formats no less, are a really good thing for them in that the royalties add additional income to the songwriter’s purse, enabling them to have at least a larger subsistence. It might even enable some of them to leave their day jobs to write music full time, which would add bounty to the music of the culture for which they write.

But wait. Let’s look at the radio stations for a minute. Radio is still a viable medium, but the radio industry has changed from the FCC-recognized model of the station and the broadcast tower and the receiver to the internet. There are literally thousands of shows run by people who want to do a radio show for whatever reason; some of those shows are talk shows, and some are music shows, and some are just junk. I worry about the music shows that play the oldies under this new law. These folks do not, as a general rule, follow the intricacies of the changes to copyright law, and, without proper publication and warning about this new royalty requirement, they could be caught in a vise from which they do not have the means to escape. I can see coming down the pike a reenactment of the RIAA vs. Music Downloaders huge number of cases of the early 2000s. That didn’t work well then; I see no reason why it would work better today.

Don’t get me wrong. I support this addition to the Copyright Act. I want to see songwriters get paid fairly for their contributions to the world, and I think that pre-1972 music should be compensated just as much as post-1972 music. However, I support the addition with the proviso that the public be thoroughly and completely noticed using communication means that they simply cannot miss getting something through even the foggiest radar about this new law. I want to see and hear discussion of this new copyright provision on the news, in the newspapers, on the radio, on PSAs, and all over Facebook and Twitter, and I want to see multiple iterations of the warnings that this new law can, and probably will, cause liability for a careless radio show host for a large bundle of preventable judgment money and attorneys’ costs. This new liability will be in effect even for a fly-by-night internet radio show host. These are the folks who stand to lose the most and who therefore need to see the warning of the effect of this new addendum to the Copyright Act.

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The FTC Finally Targets an IP Troll

For any who don’t know, a “troll” is a company (and its lawyers) that sends out thousands of cease-and-desist letters threatening a lawsuit against a supposed infringer of that company’s supposed intellectual property. It’s a nasty practice that has brought the trolls (and their lawyers) many hundreds of thousands of dollars over the years. Finally, the Federal Trade Commission is beginning to protect the innocent public against these unscrupulous “licensing” demands.

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American Broadcasting Companies vs. Aereo, Inc.

A couple of weeks ago, overshadowed by the Hobby Lobby decision, SCOTUS handed down a copyright decision that may substantially limit the ability of transmitters to transmit copyrighted broadcasts without a license to do so.

In American Broadcasting Cos. v. Aereo, Inc., 573 US ___ (2014), Aereo is a subscription broadcasting service that sold “…to its subscribers a technologically complex service that allows them to watch television programs over the internet at about the same time as the programs are broadcast over the air.” Slip Op. at 1. The technology is detailed in the case, so I do not reproduce it here; suffice it to say that through a complex series of technological events, each Aereo subscriber ends up having his or her own dedicated antenna through which copyrighted content is streamed to one computer only. The US District Court for the Southern District of New York, affirmed by the US Court of Appeals for the Second Circuit, found that this technology does not infringe the rights of the copyright holders of the shows that Aereo streams to its users because, first, Aereo does not “perform” within the meaning of the Copyright Act and, second, even if it does “perform,” it does not do so “publicly” because there is a dedicated antenna connected to only one computer, making the streaming a private showing, thus falling outside the “public” performance requirement of the Act to qualify as infringement.

SCOTUS disagrees. In a 6-3 decision delivered by Justice Breyer (the dissent comprises Justices Scalia, Thomas and Alito; all others concur in the majority opinion), the Court decreed that the 1976 Copyright Act was put in place, in large part, to overturn their decision in Fortnightly Corp v. United Artists Television, Inc., 392 US 390 (1968), which held that community-antenna television falls outside of the scope of the Copyright Act of 1952. Given the clear intent of Congress to make such activities fall very definitely within the scope of the Copyright Act, and given that Aereo’s activity are not substantially different from those of Fortnightly, the Court felt duty-bound to overturn the Court of Appeals for the Second Circuit’s holding that Aereo’s activities do not infringe copyright. SCOTUS holds for the plaintiff in determining whether (a) Aereo “performs” within the meaning of the Act and (b) Aereo performs “publicly” within the meaning of the Act.

There is language in the case that indicates that this case can be read narrowly, but this case puts rebroadcasters on notice: The act of rebroadcasting is a “transmission” within the meaning of the Act, and the viewer and broadcaster “perform publicly” within the meaning of the Act.

I advise my clients that it’s always easiest, best, cheapest to get a license to use the copyrighted works of others. This case just goes to show that this advice is still good.

The oral arguments on both sides are actually interesting for those of us who like copyright matters.

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Raging Bull Laches On

The US Supreme Court has issued a decision in the Petrella v. MGM, 572 US ___ (2014).

The equitable doctrine of laches says that if a plaintiff waits too long before bringing a lawsuit, that suit cannot be heard. It’s a common-law version of a statute of limitations. Under a statute of limitations, a case can be forever dismissed because a case was brought too late. Under the equitable doctrine of laches, a case can be forever dismissed because the plaintiff failed to timely bring suit and the defendant was unduly prejudiced by the delay.

In Petrella, the movie Raging Bull (1980) is accused of infringing the copyright in a screenplay written and registered with the US Copyright Office in 1963. Raging Bull is, of course, based on the life of Jake LaMotta. LaMotta had a friend, a writer named Frank Petrella, who co-authored several works on which Raging Bull was based; the copyrights in those works were properly registered in the 1960s and 1970s. While Frank Petrella and his co-author of that screenplay assigned rights and renewal rights to United Artists (now a subsidiary of MGM) in 1979, when Frank died in 1981 (during the first term of the copyright on the Raging Bull screenplay), renewal rights reverted to Frank’s estate under Stewart v. Abend, 495 U.S. 207 (1990), and ultimately to his daughter and heir, Paula Petrella. Paula renewed the copyright in the only one of the three works on which Raging Bull is based in which she could do so, and is now the sole owner of that copyright. In 1998, Ms. Petrella sent notice to MGM that Raging Bull infringes her copyright and threatened suit. In January, 2009, that suit materialized with Ms. Petrella seeking monetary and injunctive relief limited to acts of infringement occurring on or after January 6, 2006 (that is, all acts that occurred within the three-year statute of limitations). MGM promptly answered with the defense of laches, claiming that the delay in filing from 1998 to 2009 was unreasonable and unduly prejudicial. The US District Court for the Central District of California granted the defense and dismissed the case on those grounds. Petrella appealed to the US Court of Appeals for the Ninth Circuit, who affirmed the District Court’s decision. She then appealed to the US Supreme Court, who granted certiorari.

The High Court reversed the decisions below. In a 6-3 decision, the Court decided:

The Ninth Circuit erred, we hold, in failing to recognize that the copyright statute of limitations, §507(b), itself takes account of delay. … [A] successful plaintiff can gain retrospective relief only three years back from the time of suit. No recovery may be hadfor infringement in earlier years. Profits made in those years remain the defendant’s to keep.

Brought to bear here, §507(b) directs that MGM’s returns on its invest­ment in Raging Bull in years outside the three-year win­dow (years before 2006) cannot be reached by Petrella. Only by disregarding that feature of the statute, and the separate-accrual rule attending §507(b), see supra, at 4–5, could the Court of Appeals presume that infringing acts occurring before January 6, 2006 bar all relief, monetary and injunctive, for infringement occurring on and after that date. See 695 F. 3d, at 951; supra, at 9–10.13 Moreover, if infringement within the three-year look-back period is shown, the Act allows the defendant to prove and offset against profits made in that period “deductible expenses” incurred in generating those profits.§504(b). In addition, the defendant may prove and offset “elements of profit attributable to factors other than the copyrighted work.” §504(b). The defendant thus may retain the return on investment shown to be attributable to its own enterprise, as distinct from the value created by the infringed work. See Sheldon v. Metro-Goldwyn Pictures Corp., 309 U. S. 390, 402, 407 (1940) (equitably apportioning profits to account for independent contribu­tions of infringing defendant). See also infra, at 19–22 (delay in commencing suit as a factor in determining contours of relief appropriately awarded).

Last, but hardly least, laches is a defense developed by courts of equity; its principal application was, and re­mains, to claims of an equitable cast for which the Legisla­ture has provided no fixed time limitation. See 1 D. Dobbs, Law of Remedies §2.4(4), p. 104 (2d ed. 1993) (here­inafter Dobbs) (“laches . . . may have originated in equitybecause no statute of limitations applied, . . . suggest[ing] that laches should be limited to cases in which no statute of limitations applies”). Both before and after the merger of law and equity in 1938, this Court has cautioned against invoking laches to bar legal relief. See Holmberg v. Armbrecht, 327 U. S. 392, 395, 396 (1946) (in actions at law, “[i]f Congress explicitly puts a limit upon the time for enforcing a right which it created, there is an end of thematter,” but “[t]raditionally . . . , statutes of limitation are not controlling measures of equitable relief ”); Merck & Co. v. Reynolds, 559 U. S. 633, 652 (2010) (quoting, for its current relevance, statement in United States v. Mack, 295 U. S. 480, 489 (1935), that “[l]aches within the term of the_statute of limitations is no defense [to an action] at law.”); County of Oneida v. Oneida Indian Nation of N. Y., 470 US 226, 244, n. 16 (1985) (“[A]pplication of the equitable defense of laches in an action at law would be novel indeed.”)

 The holding that laches cannot be used as an equitable defense within the period of the statute of limitations was made by only six of the Justices; the remaining three, who sit at the conservative end of the bench, disagree, stating:

[Laches] applies in those extraordinary cases where the plaintiff “unreasonably delays in filing a suit.” National Railroad Passenger Corporation v. Morgan, 536 US 101, 121 (2002), and, as a result, causes “unjust hardship” to the defendant. Chirco v. Crosswinds Communities, Inc., 474 F.3d 227, 236 (CA6 2007) (emphasis deleted). Its purpose is to avoid “inequity.” Galliher v. Cadwell, 145 US 368, 373 (1892). And, as Learned Hand pointed out, it may well be

“inequitable for the owner of a copyright, with full notice of an intended infringement, to stand inactive while the proposed infringer spends large sums of money in its exploitation, and to intervene only when his speculation has proved a success.” Haas v. Leo Feist, Inc., 234 F. 105, 108 (SDNY 1916).

Today’s decision disables federal courts from addressing that inequity.

In this case, I actually agree with the majority’s decision. I agree with Learned Hand’s comment that it’s not nice for a copyright holder to let the proposed infringer take the risk then swoop in to reap the rewards, but that is not what happened here. Raging Bull came out in 1980. MGM invested heavily in the film in the late 1970s and early 1980s. While yes, they still market the film today and they market it based on new technologies, the marketing expense has decreased dramatically because of the film’s popularity, awards status, and fame. Really, all MGM has to do is produce the film on a new technology and sales are virtually guaranteed. Also, Petrella does not seek damages for infringement that may or may not have occurred in the 1980s, 1990s or even the early 2000s; her suit seeks damages only within the confines of the statute of limitations, which I think moots the dissent’s quote of Judge Hand.

We certainly do not want to impose an unneeded inequity on any defendant, but I don’t think this decision does that. The inequity of delay is addressed through the statute of limitations. There is a time-certain period outside of which a defendant cannot be successfully sued. That limitation is placed on the plaintiff by statute. Today’s decision does not allow a plaintiff to sue outside of the statute of limitations, which keeps the delay to a minimum.