Copyrights and Small Claims

Not only does legislation take a long time to gestate, so often we don’t even know it happened unless and until someone reads a thousand or pages of fine print in seemingly unrelated legislation. You may have heard that the United States Congress passed $900 billion coronavirus relief and stimulus spending package and a $1.4 trillion package to keep the government running through September 2021. Where else would you expect to find the Copyright Alternative in Small-Claims Enforcement Act (CASE)? The concept of a small claims resolution process for copyright infringement has been under consideration and subject to negotiations for 14 years. After all, most of the time when copyrights are infringed, the damages are relatively small, and it is difficult to find someone to prosecute the claim in Federal Court, because the cost of litigation is disproportionate to the amount of the claim. The Act essentially creates a small claims process that makes it easier for photographers, designers, songwriters, and other creative folks to protect their work against copyright infringement. The Act creates a Copyright Claims Board within the Copyright Office that will have the authority to adjudicate copyright infringement claims with damages up to $30,000 unless the defendant receives notice and opts out. The Board may issue monetary awards based on actual or statutory damages. The parties bear their own attorneys’ fees and costs except where there is bad faith misconduct. Once the matter is adjudicated by the Board, it cannot be relitigated in court of at the Board. The only challenges available are if (1) the decision was a result of fraud, corruption, or other misconduct; (2) the Board exceeded its authority or failed to render a final determination; or (3) in a default ruling or failure to prosecute, the default or failure was excusable. These challenges would be presented in Federal Court. The Act also allows the successful claimant to engage the Federal Court to enforce collection of an award within one year. You can read the full text of the Act here. H.R.2426 – CASE Act of 2019 Feel free to contact us for more information on Copyrights, Trademarks, and Entertainment-related issues.

Copyright Fair Use in School

The 9th Circuit U.S. Court of Appeals ruled in favor of a vocal music director at Burbank High School and others that a licensing company lacked standing to sue for copyright infringement for the use of copyrighted sheet music in arranging a show choir performance as to three of four works on the basis that the licensing company only held non-exclusive licenses to the work because it had only received the rights from some, but not all, of the co-owners of the copyrights.  As for the fourth work, the Court ruled that the use was noninfringing on the basis that the educational purpose of the use was an enumerated fair use purpose under 17 U.S.C. § 107. The Court also found that the purpose and character of the use, which was transformative, weighed strongly in favor of a finding of fair use.

According to the Court’s synopsis, while the “nature of the copyrighted work” weighed against fair use because the original arrangement of the song was creative, neither (1) the amount and substantiality of the portion used nor (2) the effect upon the potential market for or value of the copyrighted work weighed against fair use, the Court wrote that “it was especially swayed by the limited and transformative nature of the use and the work’s nonprofit educational purposes in enhancing the educational experience of high school students.”  The fact was that the music director used only a small portion of the song with portions of other songs to create sheet music for a new and different high school choir showpiece performance.  Fair Use!

The Court sent the case back to the District Court to determine the amount of attorney’s fees the defendants should receive, finding that the District Court abused its discretion in denying defendants attorneys’ fees under 17 U.S.C. § 505 because defendants prevailed across the board in the district court and won a ruling on their fair use defense on appeal.  Plaintiff’s arguments were deemed to have been “objectively unreasonable, and an award of fees would further the purposes of the Copyright Act.”

TRESÓNA MULTIMEDIA, LLC V. BURBANK HIGH SCH. VOCAL MUSIC ASS’N Opinion available here: https://cdn.ca9.uscourts.gov/datastore/opinions/2020/03/24/17-56006.pdf.

 

HIRING: IP & ENTERTAINMENT ATTORNEY

Our Santa Barbara firm is growing, and we are looking to immediately hire a full-time, career oriented attorney with 3 – 14 years’ experience to join the team. We have an eclectic practice, the foci of which are entertainment (filmed entertainment, music, publishing, and licensing), non-patent intellectual property (trademarks, copyrights, and trade secrets), Internet, business, and litigation in state and federal courts. We work with entrepreneurs, start-ups, and maturing companies, serving as outside general counsel, and represent a wide variety of businesses, including multi-media companies, music publishing companies, film and music producers, artists, photographers, songwriters, and others. We are looking for someone wanting a high quality, high energy, low key environment, who values relationships, innovation, and technology; is resourceful; and operates (or is willing to operate) on the principle that “THERE IS NO BOX.” Law review, great writing skills, and/or equivalent problem-solving and collaboration skills are highly valued here. We are willing and able to mentor the right person in any areas that may be needed. A book of business (small, medium, or large) is welcomed, although not necessary. This position is open now. Please let us know if you are the right person or know someone who is.  You may send resumes and writing samples to miblawgrp@gmail.com.  Please view our website at mbergerlaw.com and our LinkedIn profile at https://www.linkedin.com/in/matthewberger/ for more information about who we are and what we do.

Requirement for Designating Agent for Copyright Takedown Notices Under the DMCA

For those who allow users to generate content on your website, please note the following about the Copyright Office requirement for designating a person to receive take-down notices under the Digital Millennium Copyright Act:

Electronic System for Designating Agents under DMCA Launched December 1, 2016

The U.S. Copyright Office launched its new electronic system to designate and search for agents to receive notifications of claimed infringement under the Digital Millennium Copyright Act (DMCA). The final rule implementing the new system and governing what is required of service providers to designate an agent also comes into effect on December 1st.

As of December 1, all new designations must now be made through the online registration system. Additionally, any service provider that has previously designated an agent with the Office through the old paper-based system will have until December 31, 2017, to submit a new designation electronically through the new system. Until that time, an accurate designation in the old paper-generated directory will continue to satisfy the service provider’s obligations under section 512(c)(2), and the public will need to continue to search the paper-generated directory if the service provider is not yet listed in the new electronically generated directory.

Check out these links: https://www.copyright.gov/dmca-directory/; https://www.copyright.gov/rulemaking/onlinesp/NPR/; http://www.newmediarights.org/guide/copyright/how_register_dmca_agent

Idea Submission and Avatar: James Cameron and Lightstorm Prevail

There are several lessons to be learned from this idea submission and breach of contract case, where the plaintiff contends that his idea was misappropriated by James Cameron for the film Avatar, among which are the proof that one must have demonstrated in order to claim a similarity between the alleged infringing work and one’s own idea, and the questions of timing. An interesting analysis can be found here: http://www.loeb.com/publications-ipentertainmentcaselawupdates-20160325-rydervlightstormentertainmentincetal.

The unpublished opinion of the court can be found here: https://scholar.google.com/scholar_case?case=15675251615603331785&hl=en&as_sdt=6&as_vis=1&oi=scholarr

Are the Turtles Certifiable? Music Industry To Litigate Pre-1972 Public Performance Right

There’s an interesting case percolating in the Court of Appeals dealing with the Turtles and Sirius XM radio. Here is an excerpt from “Copyright Litigation Blog” by Ray Dowd (the entire blog post can be found here: http://archive.feedblitz.com/445362/~5153291/25405111/1462521c88182b58dcf7fc1a6dd57035):

 

Are The Turtles Certifiable? Music Industry To Litigate Pre-1972 Public Performance Right @ New York Court of Appeals In Albany.

 

On April 13, 2016, the United States Court of Appeals for the Second Circuit “certified” the question of whether New York common law provides a right of public performance to owners of pre-1972 sound recordings to the New York Court of Appeals, which is New York State’s highest appellate court.

The “Second Circuit” is a federal court, just below the U.S. Supreme Court, that has appellate jurisdiction over all of the U.S. District Courts in Connecticut, New York and Vermont. The “certification” came about because the band the Turtles complained that Sirius FM radio was copying, caching, and broadcasting their pre-1972 sound recordings.

The full decision in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 15-1164 (2d. Cir. 2016) can be found here: http://www.ca2.uscourts.gov/decisions/isysquery/553686b6-6886-4a6b-91b1-c3a464df341b/1/doc/15-1164_opn.pdf#xml=http://www.ca2.uscourts.gov/decisions/isysquery/553686b6-6886-4a6b-91b1-c3a464df341b/1/hilite/.

 

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“Certification” means that the Second Circuit asks the New York Court of Appeals to decide an important question of New York law.

Here is what the Second Circuit considers in determining whether to “certify” the question to the New York Court of Appeals:

(1) whether the New York Court of Appeals has addressed the issue and, if not, whether the decisions of other New York courts permit us to predict how the Court of Appeals would resolve it;

(2) whether the question is of importance to the state and may require value judgments and public policy choices; and

(3) whether the certified question is determinative of a claim before us.

 

Here is Judge Guido Calabresi’s explanation of the issue certified:

In 1971, Congress amended the Copyright Act to grant limited copyright protection to sound recordings fixed on or after February 15, 1972, while expressly preserving state-law property rights in sound recordings fixed before that date. See 17 U.S.C. § 301(c). Later, Congress created an exclusive performance right in post-1972 sound recordings performed by digital audio transmission. See 17 U.S.C. § 106(6). Performances of post-1972 sound recordings transmitted by other means, such as AM/FM radio, still do not enjoy federal copyright protection. Because Appellee’s recordings were fixed before February 15, 1972, they are protected, if at all, by state copyright law. While New York provides no statutory protection to owners of pre-1972 sound recordings, New York common law does provide certain rights to copyright holders in these recordings. See Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 563 (2005) (Naxos II). As a result, the issue before us is whether New York common law affords copyright holders the right to control the performance of sound recordings as part of their copyright ownership.

 

Judge Calabresi has left the “policy choice” as to whether to recognize the right to the New York Court of Appeals. Many law professors and folks in the broadcasting industry have filed amicus briefs, guaranteeing that the Amtrak to Albany will be booked on argument day.

Fashion and Copyright: Will the U.S. Supreme Court (SCOTUS) Address the Dress?

Here is a link to the Copyright Blog about the intersection of fashion designs, copyright, protection of useful articles, design patents for the ornamental design of a functional item, and the Supreme Court of the United States (SCOTUS): http://copyrightlitigation.blogspot.com/.  Enjoy.

Author’s Guild Case Against Google Dismissed

The case brought by the Author’s Guild and others against Google for copyright infringement relative to the Google Books and Library Project has been dismissed by the Court following the grant of summary judgment for Google.  The case sought damages on behalf of authors arising out of Google’s scanning of more than twenty million books, the delivery of digital copies to participating libraries, the creation of an electronic database of books, and the making of text available for online searching through the use of “snippets.”  Most of the books were protected by U.S. Copyright Law, and Google did not obtain permission from the copyright holders.

The Court (Circuit Judge Chin of the the United States District Court for the Southern District of New York [Manhattan]) granted Google’s Motion for Summary Judgment (and denied the Author’s Guild’s Motion for Partial Summary Judgment).  Assuming that the Author’s Guild had established a prima facie case of copyright infringement against Google under 17 U.S.C. section 106, the Court found that Google’s effort provided significant public benefits and, upon consideration of the four Fair Use factors set forth in 17 U.S.C. section 107, ruled that Google’s actions were Fair Use.

The entire opinion, which contains a very good analysis of the Fair Use defense, can be found through http://www.pacer.gov/, and likely will be posted by others soon.  The case name and number are Authors Guild v. Google, 1:05-cv-08136. More news articles are available on the Internet for your information.

We shall see whether the ruling is affirmed on appeal.