Intellectual Property

Protecting the Benefit of a Seller’s Bargain in Real Estate Contracts

TLR BLOG

By Matthew Ingber*

Originally published in Volume 30 | Number 3 in 2014 in the Touro Law Review

*Matthew is an associate attorney at Brown Altman & DiLeo, LLP and handles all matters involving land use and zoning law, municipal law, commercial and residential transactional real estate, and commercial litigation.  Matthew has obtained municipal approvals throughout Long Island for national restaurant chains, gasoline station retailers, and alternative energy companies.  Matthew graduated summa cum laude from Touro Law Center in 2015.  He was a member of the Touro Law Review and served as an Issue Editor.

I. INTRODUCTION

Courts measure damages for breach of a real estate contract based on the difference between the contract price and the fair market value of the property at the time of the breach,[1] which seeks to protect the injured party’s expectation interest.[2]  This measure usually provides an injured seller with an adequate remedy in the event of a buyer’s breach[3] but “[i]n some cases, the actual loss suffered as a result of a breach exceeds the amount yielded by that formula.”[4]  In American Mechanical v. Union Machine Co.,[5] the buyer contracted to purchase the vendor’s real estate for $100,000.[6]  The property was then resold for $55,000, and the seller sought to recover the difference between the original contract and resale price.[7]  Although the court recognized that the general measure of damages sometimes inadequately protects the benefit of the injured seller’s bargain,[8] the court failed to formulate an alternative measure to address the problem.

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Solving the Riddle! Bridging the Gap in the Federal Circuit’s Definition of “Regular and Established Place of Business” to Prevent Patent Trolls from Forum Shopping

TLR BLOG

By Michael A. Morales*

Originally published in Volume 43 | Number 2 (Article 14) in the Touro Law Review, in 2018.

*Michael is the former Editor-In-Chief of the Touro Law Review. He graduated Summa Cum Laude as Salutatorian of the Part-Time Division in 2019. He is currently working as an associate attorney at Ropes & Gray, LLP, where he focuses on intellectual property law.

I. INTRODUCTION

Although patent trolls have manipulated the United States patent system, one way to discourage and prevent them from exploiting the weaknesses in the system, and ultimately harming innovation, is through the combination of reasoned policy analysis and patent venue reform.6 For many years, the United States District Court for the Eastern District of Texas has provided a haven for patent trolls to bring patent infringement lawsuits because it tends to favor patent- owners.7 Therefore, patent trolls typically file patent infringement lawsuits in the Eastern District of Texas instead of other more convenient districts to increase their likelihood of a favorable outcome.8 Such forum shopping, which is part of the patent troll business model, provides a litigation advantage to a party in a patent infringement lawsuit.9 This Note will argue that courts should apply venue law in a manner that limits a litigant’s ability to forum shop for a favorable forum, such as the Eastern District of Texas, in patent infringement lawsuits. This Note will propose several factors that courts should use to determine whether a party has filed a patent infringement lawsuit in a proper venue according to the patent venue statute.10 It will explain why each factor limits a patent troll’s ability to forum shop, thereby fostering innovation and supporting Congress’s goal for implementing the patent system.11

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The Blurred Protection for the Feel or Groove of a Song under Copyright Law: Examining the Implications of Williams v. Gaye on Creativity in Music

TLR BLOG

By Olivia Lattanza

 

I. Introduction

In Williams v. Gaye,[1] the Ninth Circuit largely affirmed the judgment of the district court entered after the jury verdict finding that Pharrell Williams and Robin Thicke’s hit “Blurred Lines” infringed Marvin Gaye’s song “Got to Give It Up.”[2]  Although the Ninth Circuit’s decision turned on procedural grounds, namely the court’s deferential standard of review of the jury’s decision,[3] this case does not exemplify a straightforward and simple application of copyright law for several reasons.

While the 2013 hit “Blurred Lines” is subject to the protections under the Copyright Act of 1976, Gaye’s song is protected under the Copyright Act of 1909 because it was composed prior to January 1, 1978.[4]  Specifically, Gaye recorded “Got to Give it Up” in 1976, and he registered the work with the Copyright Office in 1977 by depositing sheet music based on the recorded version of his song.[5]  After his death, Frankie Christian Gaye, Nona Marvisa Gaye, and Marvin Gaye III inherited the copyright in Gaye’s song.[6]  Notably, the difference in copyright protection under both acts is central in determining what aspects of the song are protected.[7]  Under the Copyright Act of 1976, the actual sound recording of “Blurred Lines” is protected.[8]  In comparison, the 1909 Act requires that the work be published with notice or a deposit be made with the Copyright Office.[9]  While the actual recording of “Blurred Lines” is protected under the 1976 Act, the only protection of “Got to Give it Up” under the 1909 Act is in the musical composition.[10]

As a result, the district court excluded the sound recordings of both songs in this case.[11]  This meant that the jury did not compare the recorded versions of both songs, but only compared the “musical compositions” of elements extracted by the experts.[12]  However, in identifying the musical features present in both songs, the Gayes’ expert relied on elements that are not individually protectable.[13]  The similarity between the songs is not within the melody, lyrics, or harmony, but rather in the overall sound, groove, and vibe.[14]  It has been argued that this case should not have been sent to the jury because the jurors may have inaccurately evaluated the similarity in groove instead of the protected musical elements in the songs.[15]  Thus, this decision is groundbreaking as it improperly reinforces the notion that creating the “feel” of another song constitutes copyright infringement even if the melody and notes are completely different.[16]

Consequently, the Ninth Circuit’s affirmance of the jury’s decision inappropriately expanded the scope of copyright protection to the feel or groove of a song.[17]  Virtually every song or musical work has been inspired at least in part by some other artist or musical genre.[18]  By protecting the feel or groove of a song, the creative output of artists will essentially be destroyed.[19]  This blog post will argue that as long as the essential elements of a song are not copied, such as the melody, harmony, rhythm, or lyrics, the overall feel of a song should not be protected.  Therefore, in music copyright infringement cases, the Ninth Circuit should create a clearer rule for determining the “total concept and feel” of a work with respect to the feel of a song in the intrinsic analysis stage and reevaluate whether it is appropriate for the jury to hear cases involving the groove of a song.[20]

II. Overview of Copyright Law

In the United States Constitution, the Framers encouraged the creation of works “[t]o promote the Progress of Science and useful Arts.”[21]  Under the Copyright Act of 1976, copyright protection is secured “in original works of authorship fixed in any tangible medium of expression.”[22]  The 1976 Act expanded copyright protection to include both “musical works”[23] and “sound recordings.”[24]  In contrast, works subject to the 1909 Copyright Act “had to be published with notice or a deposit had to be made in the Copyright Office.”[25]  Thus, “under the 1909 Act, the work had to be reduced to sheet music or other manuscript form.”[26]

To succeed on a claim of copyright infringement, it is necessary to show “ownership of a valid copyright” and “copying of constituent elements of the work that are original.”[27]  Generally, any work subject to copyright protection must contain both originality and creativity.[28]  Nevertheless, “the requisite level of creativity is extremely low” for a work to be considered original.[29]  For musical works, originality is evident by the composer’s own effort and contribution to the song.[30]  While novelty is not required, originality means that the party claiming copyright protection did not copy another work.[31]  Likewise, creativity is represented by the musician’s use of rhythm, harmony, and melody.[32]  However, it is often difficult to obtain direct evidence of copying in music copyright infringement suits.[33]  In these cases, “a plaintiff may prove copying indirectly, with evidence showing that the defendant had access to the copyrighted work and that the purported copy is ‘substantially similar’ to the original.”[34]

To prove access of a musical work, the plaintiff may show “that its work was widely disseminated through sales of sheet music, records, and radio performances.”[35]  To determine substantial similarity, the Ninth Circuit utilizes “an objective extrinsic test and a subjective intrinsic test.”[36]  When applying the extrinsic test, “analytic dissection and expert testimony” are admissible in order to analyze objective criteria in the musical works.[37]  After the extrinsic phase has been satisfied, the jury will then apply the intrinsic test.[38]  In the subjective intrinsic test, the jury is presented with “whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar.”[39]  Unlike the extrinsic test, expert testimony and analytic dissection are not admissible in this phase.[40]

III. Music Copyright Infringement Cases

To underscore the intricate and novel issue presented in this case, a brief application of copyright law in past music copyright infringement cases will be examined.  In some instances, a plaintiff may make a blatant and direct showing of copyright infringement.[41]  For example, in the song “Ice Ice Baby,” Vanilla Ice copied the bass line to the Queen and David Bowie song “Under Pressure” without asking for permission, resulting in a clear case of copyright infringement.[42]  However, absence of deliberate copying of another musical work does not prevent liability for copyright infringement.[43]  Specifically, George Harrison’s solo song “My Sweet Lord” was found to have subconsciously plagiarized the “pleasing combination of sounds” of “He’s So Fine” by The Chiffons.[44]  Although Harrison may not have deliberately copied the elements of “He’s So Fine,” the court held that Harrison was liable for copyright infringement since both songs were “virtually identical” and he had access to the song.[45]

In Selle v. Gibb,[46] Ronald Selle brought a copyright infringement suit against the Bee Gees arguing that their hit song “How Deep Is Your Love” copied his song “Let it End.”[47]  At trial, the expert witness testified that there were striking similarities between the songs, specifically in the Bee Gees’ use of identical rhythmic impulses and notes from Selle’s song.[48]  Although the jury found in favor of Selle, the judge granted the Bee Gees’ motion for judgment notwithstanding the verdict because Selle failed to show that the Bee Gees had access to his song.[49]  In fact, the Bee Gees introduced a work tape at trial showcasing their creative process of composing “How Deep is Your Love.”[50]  Thus, “a bare possibility” or mere speculation of access to a song is insufficient to prevail on a copyright infringement claim even if there is a striking similarity between songs.[51]

Moreover, in Three Boys Music Corp. v. Bolton,[52] the Ninth Circuit affirmed a jury verdict finding Michael Bolton’s 1991 song “Love is a Wonderful Thing” infringed the Isley Brothers’ 1964 hit of the same name.[53]  Evidence of access was provided and the jury found that Bolton was not only a fan and collector of the Isley Brothers’ music, but he also had access to the 1964 hit on both the radio and television.[54]  Next, the jury found infringement based on the substantial similarity of five unprotectable musical elements.[55]  Consequently, the Ninth Circuit applied judicial deference to the jury’s verdict in finding a case of copyright infringement.[56]

IV. Analysis

The Ninth Circuit’s decision improperly expanded the scope of copyright protection to the feel or groove of a song.[57]  In the dissenting opinion, Judge Nguyen stated, “The majority allows the Gayes to accomplish what no one has before: copyright a musical style . . . the majority establishes a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere.”[58]  The majority opinion, on the other hand, declared that unlike the limited protections under the 1909 Act in this case, most cases in the future will arise under the 1976 Act, providing protections for works in sound recordings.[59]  However, even if the protections under the Copyright Act of 1976 applied in this case, that does not change the fact that the groove or style of a musical genre “is an unprotectable idea.”[60]  Therefore, although “Blurred Lines” and “Got to Give it Up” have an overall similar feel and vibe, the copyrightable elements of melody and lyrics are completely different.[61]

Additionally, virtually all music is inspired by another genre, style, or musician in some way.[62]  In fact, “[i]n the field of popular songs, many, if not most, compositions bear some similarity to prior songs.”[63]  If artists are unable to draw on their musical influences due to fear of copyright infringement, the degree of creativity in music will be severely limited.[64]  Thus, it has been argued that:

To suggest that this verdict will encourage better songwriting is to misunderstand the history of the arts. The freedom of artists and other creators to borrow from each other is connected with the principle that ideas cannot be copyrighted, a notion that is essential to free speech and artistic expression.[65]

Therefore, the Ninth Circuit’s decision creates a dangerous impediment to musical creativity as musicians will not know whether drawing inspiration from a song will result in copyright infringement.

Moreover, the Ninth Circuit’s intrinsic analysis stage should be clearer in music copyright infringement cases examining the groove or feel of another artist or musical genre.[66]  In particular, given that there are only a limited number of possible notes and chords, the courts have recognized that some pieces will contain “common themes.”[67]  In fact, Judge Learned Hand stated, “It must be remembered that, while there are an enormous number of possible permutations of the musical notes of the scale, only a few are pleasing; and much fewer still suit the infantile demands of the popular ear.  Recurrence is not therefore an inevitable badge of plagiarism.”[68]  Specifically, when lay jurors determine the “total concept and feel” of a work in the intrinsic stage, there is no clear test to determine whether a song evokes a similar feel or whether it infringes another song.[69]  In this case, it is clear that “Blurred Lines” and “Got to Give it Up” are similar in their “sonic environment,” but the core elements of melody, rhythm, and lyrics are not similar.[70]  Therefore, in determining substantial similarity in musical works, the Ninth Circuit should create a clearer rule for determining the “total concept and feel of a work” so that musicians will know whether their inspiration and borrowing of another work constitutes copyright infringement.

V. Conclusion

The Ninth Circuit decision in Williams v. Gaye has serious implications for the future of creativity in musical works.  In upholding the jury’s verdict that Thicke and Williams infringed Gaye’s song, when there was no similarity in the melody, lyrics, or harmonies, the Ninth Circuit essentially declared that the groove of a song is subject to copyright protection.  While the majority opinion emphasized that this case hinged on procedural grounds, the protections under the 1909 Act, and a deferential standard of review, the implications on musical creativity in evoking a style foster new concerns for musicians and artists.  Specifically, it is nearly impossible to say that a song is completely original without drawing inspiration from another artist, style, or genre.  If the groove of a song is protected under copyright law, musicians will be overly cautious into drawing on the style of another artist or genre, thereby stifling creativity. Therefore, it is vital for the Ninth Circuit to reconsider the intrinsic analysis stage with respect to the groove or feel of a song to clearly signify the line between infringement and inspiration.  Consequently, in order to preserve the creativity of music, the feel of a song should not be protected under copyright law.

[1] 885 F.3d 1150 (9th Cir. 2018).

[2] Id. at 1183.

[3] Id. at 1182.

[4] Id. at 1165; see Dolman v. Agee, 157 F.3d 708, 712 n.1 (“The 1909 Act is the applicable law in cases in which creation and publication of a work occurred before January 1, 1978, the effective date of the 1976 Act.”).

[5] Williams, 885 F.3d at 1160.

[6] Id.

[7] Beth Hutchens, How Sweet it is to be Sued by You (for Copyright Infringement), IP Watchdog (Feb. 19, 2015), http://www.ipwatchdog.com/2015/02/19/how-sweet-it-is-to-be-sued-by-you-for-copyright-infringement/id=54955.

[8] Williams, 885 F.3d at 1165; see 17 U.S.C. § 102(a)(7) (2016).

[9] Williams v. Bridgeport Music, Inc., No. LA CV13-06004 JAK, 2014 WL 7877773, at *8 (C.D. Cal. Oct. 30, 2014).

[10] Hutchens, supra note 7.

[11] Williams, 885 F.3d at 1165.

[12] David Post, Blurred Lines and Copyright Infringement, Wash. Post (Mar. 12, 2015), https://www.washingtonpost.com/news/volokh-conspiracy/wp/2015/03/12/blurred-lines-and-copyright-infringement/?noredirect=on&utm_term=.128eb87d3b51.

[13] Williams, 885 F.3d at 1187 (Nguyen, J., dissenting).

[14] Post, supra note 12.

[15] Melinda Newman, Top Lawyers On What Songwriters Must Learn From ‘Blurred Lines’ Verdict, Forbes (Mar. 11, 2015, 12:18 PM), https://www.forbes.com/sites/melindanewman/2015/03/11/top-lawyers-weigh-in-on-the-blurred-lines-verdict-and-what-songwriters-must-learn/#327891976bfa.

[16] Taylor Turville, Emulating vs. Infringement: The “Blurred Lines” of Copyright Law, 38 Whittier L. Rev. 199, 199 (2018).

[17] See Tim Wu, Why the “Blurred Lines” Copyright Verdict Should Be Thrown Out, New Yorker (Mar. 12, 2015), https://www.newyorker.com/culture/culture-desk/why-the-blurred-lines-copyright-verdict-should-be-thrown-out.

[18] Turville, supra note 16, at 218.

[19] See Randy Lewis, More Than 200 Musicians Rally Behind Appeal of ‘Blurred Lines’ Verdict, L.A. Times (Aug. 31, 2016), http://www.latimes.com/entertainment/music/la-et-ms-blurred-lines-appeal-musicians-20160831-snap-story.html (“The friend of the court brief argues that the ‘Blurred Lines’ verdict was flawed and that if it remains on the books it would create a profound chilling effect in the creative community because the similarities . . . had more to do with the general feel rather than specific musical elements in common.”).

[20] See Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996) (“[T]he subjective ‘intrinsic test’ asks whether an ‘ordinary, reasonable observer’ would find a substantial similarity of expression of the shared idea.” (citation omitted)).

[21] U.S. Const. art. 1, § 8, cl. 8.

[22] 17 U.S.C. § 102(a) (2016).

[23] Id. § 102(a)(2).

[24] Id. § 102(a)(7).

[25] Hutchens, supra note 7.

[26] 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.05[A] (2018).

[27] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

[28] Nimmer, supra note 26, § 2.05[B].

[29] Feist, 499 U.S. at 345.

[30] Nimmer, supra note 26, § 2.05[B].

[31] Feist, 499 U.S. at 358.

[32] Nimmer, supra note 26, § 2.05[B].

[33] Copeland v. Bieber, 789 F.3d 484, 488 (4th Cir. 2015); see also Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (“Proof of copyright infringement is often highly circumstantial, particularly in cases involving music.”).

[34] Id. (citation omitted).

[35] 2 Paul Goldstein, Copyright: Principles, Law, and Practice § 8.3.1.1, at 91 (1989).

[36] Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004).

[37] Sid & Marty Krofft Television Prods. Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977).

[38] Three Boys Music, 212 F.3d at 485.

[39] Id. (quoting Pasillas v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991)).

[40] Krofft, 562 F.2d at 1164.

[41] See Joe Lynch, 8 Songs Accused of Plagiarism That Hit No. 1 on the Billboard Hot 100, Billboard (Mar. 12, 2015), https://www.billboard.com/articles/news/list/6501950/songs-accused-plagiarism-no-1-hot-100-blurred-lines (explaining that many hit songs sound similar to previous songs due to theft or coincidence).

[42] Jordan Runtagh, Songs on Trial: 12 Landmark Music Copyright Cases, Rolling Stone (June 8, 2016, 4:24 PM), https://www.rollingstone.com/politics/politics-lists/songs-on-trial-12-landmark-music-copyright-cases-166396/george-harrison-vs-the-chiffons-1976-64089/.

[43] Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177, 180-81 (S.D.N.Y. 1976).

[44] Id. at 180.

[45] Id. at 180-81; See Williams v. Gaye, 885 F.3d 1150, 1171 n.16 (explaining that while this case was under the 1909 Act, the commercial sound recordings were listened to by the factfinders).

[46] 741 F.2d 896 (7th Cir. 1984).

[47] Id. at 898.

[48] Id. at 899.

[49] Id.

[50] Id.

[51] Selle, 741 F.2d at 903.

[52] 212 F.3d 477 (9th Cir. 2000).

[53] Id. at 480.

[54] Id. at 483-85.

[55] Id. at 485; see Swirsky v. Carey, 376 F.3d 841, 849 (9th Cir. 2004) (stating that courts have considered different elements of a musical composition when determining substantial similarity).  “Music, like software programs and art objects, is not capable of ready classification into only five or six constituent elements; music is comprised of a large array of elements, some combination of which is protectable by copyright.”  Id.

[56] Three Boys Music, 212 F.3d at 482.

[57] See Wu, supra note 17 (“The question is not whether Pharrell borrowed from Gaye but whether Gaye owned the thing that was borrowed. And this is where the case falls apart.  For it was not any actual sequence of notes that Pharrell borrowed, but rather the general style of Gaye’s songs.  That is why ‘Blurred Lines’ sounds very much like a Marvin Gaye song.  But to say that something ‘sounds like’ something else does not amount to copyright infringement.”).

[58] Williams, 885 F.3d at 1183 (Nguyen, J., dissenting).

[59] Id. at 1182 n.27.

[60] Id. at 1185 (Nguyen, J., dissenting).

[61] Post, supra note 12.

[62] Turville, supra note 16, at 218.

[63] Nimmer, supra note 26, § 2.05[B].

[64] Brief for 212 Songwriters, Composers, Musicians, and Producers as Amici Curiae Supporting Appellants at 3, 10, Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018) (CA No. 15-56880).

[65] Wu, supra note 17.

[66] See Brief for Amici Curiae, supra note 64, at 12 n.4.

[67] Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir. 1988).

[68] Darrell v. Joe Morris Music Co., 113 F.2d 80, 80 (2d Cir. 1940).

[69] Brief for Amici Curiae, supra note 64, at 12 n.4.

[70] Post, supra note 12.

Court Case Has ‘Sirius’ Impact on Common Law Copyright in NY

TLR BLOG

By Luann Dallojacono, J.D. Class of 2018 Touro Law Review Junior Staff Member

It’s 1967, and the band The Turtles has a no. 1 hit.[1] “So Happy Together” has people imagining me and you day in and day out.[2]

Fast-forward almost five decades later, and in 2013, the song is the subject of several lawsuits pitting the 1960s band against satellite radio giant SiruisXM.[3] Flo & Eddie, Inc., the company that controls the Turtles’ music and that is owned by original band members Mark Volman and Howard Kaylan sued SiriusXM in California, Florida, and New York for playing the band’s songs without the company’s permission.[4]

Flo & Eddie filed three class action suits claiming copyright protection under state law.[5] The plaintiffs were independent artists and record companies, including Flo & Eddie. [6] The suits have since uncovered some confusion about the applicability of copyright law to sound recordings made prior to 1972 and whether certain state’s laws allow the owners of those songs to control performing rights for the recordings.[7] As the New York District Court put it, “The long and short of this is—Sirius makes multiple copies, temporary, permanent, whole or partial, during its broadcast process; and it performs the copies it makes. Furthermore, as to pre–1972 sound recordings, it does so without obtaining licenses or paying royalties.”[8]

The parties are in the process of settling in California after Sirius was found liable under California law.[9] Sirius agreed to pay at least $25 million for playing pre-1972 recordings without a license and $5 million for each victory in state court if Flo & Eddie won its cases in New York, California and Florida.[10] The settlement also includes $59 million for a 10-year license for recordings by the plaintiffs at a 5.5% royalty rate.[11]

But legal developments last month may have some questioning the settlement. In February, Sirius saw victory when the case was dismissed in New York, overturning rulings in 2014 by the U.S. District Court.[12] The dismissal also reduced the amount of the settlement reached in California by $5 million as per the settlement agreement.[13]

The New York District Court described the case as one about copyright in sound recordings, which are media in or on which a particular performance of a song is fixed.[14] Congress gave sound recordings copyright protection in 1971 and in 1995 added a “limited public performance right” for sound recordings to give copyright holders of sound recordings the “exclusive right . . . to perform the copyrighted work publicly by means of a digital audio transmission.”[15] However, the 1971 Act has an important limitation in that recordings made prior to February 15, 1972, do not qualify for federal copyright protection.[16] Congress left the issue of pre–1972 sound recordings to the states.[17]

The Turtles’ recordings were all fixed before that February date in 1972, leaving none eligible for copyright protection under federal law.[18] Thus, Flo & Eddie looked to state law.[19] In New York, the company argued that pre–1972 sound recording owners have rights and remedies under the common law, which covers pre–1972 sound recordings and prohibits reproducing and publicly performing the recordings.[20]

This past February, New York’s Second U.S. Circuit Court of Appeals accepted a December 20, 2016, ruling by the state Court of Appeals holding that New York common-law copyright does not protect public performance for creators of sound recordings made before 1972.[21] The issue came before the high court after the Second Circuit Court of Appeals certified the following question to the court: “Is there a right of public performance for creators of sound recordings under New York law and, if so, what is the nature and scope of that right?”[22] It was an issue of first impression for the Court of Appeals.[23] After an exhausting look at relevant case law, the court concluded that New York’s common law has not recognized a right of public performance for those who have created sound recordings prior to 1972. [24] The court noted that recognizing such a right would rattle societal expectations and carry with it extensive economic consequences as well as pervasive and widespread ramifications. [25] The issue would be more appropriately addressed by the legislature, the court added.[26] Judge Rivera dissented and came to the opposite conclusion. [27] She argued that the benefits of a right of public performance coupled with the creator’s desire to be compensated for his or her labor in making the recording pair well with society’s interest in protecting artists and their works from exploitation.[28] She also said that the right aligns well with increasing the public access to artists’ endeavors, the expectations of the music industry, and the fact that “Congress has placed a time limit on common-law protections for pre-1972 sound recordings while providing a limited right of public performance for all sound recordings made after February 15, 1972.”[29]

Sirius also won the Florida case in 2015, making its legal record 2-for-3.[30] Perhaps it is as the singer Meat Loaf would say: “Two out of three ain’t bad.”[31]

 

[1] See Ben Sisario, SiriusXM Agrees to Pay Up to $99 Million to Settle Turtles-Backed Copyright Suit, N.Y. Times (Nov. 29, 2016), https://www.nytimes.com/2016/11/29/arts/music/turtles-siriusxm-1972-copyright-settlement.html.

[2] The Turtles, So Happy Together (White Whale Records 1967).

[3] See Sisario, supra note 1.

[4] See Sisario, supra note 1.

[5] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 62 F. Supp.3d 325, 335 (S.D.N.Y. 2014); see Sisario, supra note 1.

[6] See Sisario, supra note 1.

[7] Ben Sisario, SiriusXM Agrees to Pay Up to $99 Million to Settle Turtles-Backed Copyright Suit, N.Y. Times (Nov. 29, 2016), https://www.nytimes.com/2016/11/29/arts/music/turtles-siriusxm-1972-copyright-settlement.html.

[8] Sirius, 62 F. Supp.3d at 334.

[9] In California, Flo & Eddie alleged violations of Cal. Civ. Code § 980(a)(2) and California’s Unfair Competition Law, Cal. Bus. & Prof. Code § § 17200, et seq., conversion, and misappropriation. The court granted the company’s motion for summary judgment on all causes of action insofar as the claims are based on Sirius XM’s public performance conduct. See Flo & Eddie Inc. v. Sirius XM Radio Inc., No. CV 13-5693 PSG RZX, 2014 WL 4725382 at *12 (C.D. Cal. 2014). See also Jonathan Stempel, Siruis XM Wins Dismissal of Turtles Copyright Lawsuit in New York, Insurance Journal (Feb. 21, 2017), http://www.insurancejournal.com/news/east/2017/02/21/442442.htm; Jonathan Stempel, Sirius May Settle Music Copyright Suit Brought by The Turtles for $100M, Insurance Journal (Nov. 20, 2016), http://www.insurancejournal.com/news/national/2016/11/30/433536.htm.

[10] See Sisario, supra note 1; Stempel, Sirius XM Wins Dismissal, supra note 9.

[11] See Sisario, supra note 1.

[12] Stempel, Siruis XM Wins Dismissal, supra note 9.

[13] Stempel, Siruis XM Wins Dismissal, supra note 9.

[14] 17 U.S.C. § 101; See Sirius, 62 F. Supp. at 335–36.

[15] 17 U.S.C. § 106; See Sirius, 62 F. Supp. at 336.

[16] 17 U.S.C. § 301(c); See Sirius, 62 F. Supp. at 336.

[17] See Sirius, 62 F. Supp.3d at 336.

[18] Id.

[19] Id.

[20] Id.

[21] See Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 28 N.Y.3d 583, 610 (2016); Stempel, Siruis XM Wins Dismissal, supra note 9.

[22] Sirius, 28 N.Y.3d at 589.

[23] Id. at 595.

[24] Id. at 594-603.

[25] Id. at 606.

[26] Id.

[27] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 28 N.Y.3d 583, 617 (2016) (Rivera, J., dissenting).

[28] Id. at 620-21.

[29] Id.

[30] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13-23182-CIV, 2015 WL 3852692 at *1 (S.D. Fla. 2015).

[31] Meat Loaf, Two Out of Three Ain’t Bad (Epic Records 1977).

 

GIFs and the Fair Use Doctrine

TLR BLOG

By Delaram Yousefi, J.D. Class of 2017 Touro Law Review  Staff Member

Graphics Interchange Format (“GIF”) is a graphic image file that is “animated by combining several other images or frames into a single file.”[1] Animated GIFs are primarily used by internet users to help them convey creative and entertaining responses to digital content that could not be expressed by using simple words alone.[2] GIFs are incorporated in several different ways as they appear throughout many online articles and are heavily utilized in social media messaging platforms. The vast majority of GIFs are short clips taken from copyrighted comedy or reality TV shows, animated sitcoms, talk shows, and even music videos. Thus, the creator of the underlying works that are featured in these GIFs may bring a copyright infringement action against the alleged infringer—the creator of the GIF— for violating the author’s exclusive rights to his or her content. Although there is no case law to support how the courts would decide this particular issue, it is very likely that the courts would hold in favor of the alleged infringer based upon the “fair use” defense.

Once an author has received copyrighted protection for the material that she has created, she is given exclusive rights to these works. This means that she has the right to be compensated when an infringer uses this material without her permission. However, an author’s exclusive rights are not unlimited. For instance, the fair use doctrine allows others to use copyrighted material without the consent of the original author. To determine whether the fair use defense has been established, the court must analyze the following four factors: “(1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used; and (4) the effect of the use upon the potential market for or value of the copyrighted work.”[3] Since several of these factors are broken down into additional subfactors, it is essential to examine each of these factors in further detail.

The first factor is divided into the following two subfactors. The court must first analyze whether the use of the secondary work is either for commercial or non-profit educational purposes. It must next determine whether the new work is “transformative” by looking to see whether the secondary work altered the original work by furthering its purpose or by adding a new message to it.[4] GIFs are freely accessible on most popular social media platforms and there is no compensation required to use these features. GIFs have no sound and are automatically played in a continuous loop. Moreover, they are sometimes accompanied by a group of words to further illustrate a specific expression being conveyed by an internet user. Since these GIFs will not likely be considered commercial in nature, this factor will weigh heavily towards the creator of the GIF. Furthermore, these types of alterations to the original content would likely be considered transformative because it adds enough new meaning to the original work to establish fair use.

The second fair use factor evaluates whether the nature of the copyrighted work is creative or factual, and also whether it is a published or unpublished work.[5] Within this very broad spectrum, an author has a much greater chance to shield his or her work against a fair use defense when the work is a creative published work rather than an unpublished biography. Since the majority of GIFs on the internet are based on creative published works, courts will have a difficult time favoring the alleged infringer under this factor. However, as further discussed below, when the court examines this factor in conjunction with the other three factors, there will be a significant preference towards finding for the alleged infringer.

The third factor for fair use utilizes the “quantitative and qualitative evaluation” to examine the portion of the copyrighted work that was used in respect to the entirety of the original work.[6] It is important to note that if the alleged infringer uses only a small portion of the author’s work, but that small portion is considered to be the “heart” or the main aspect of the entirety of the work, then the court will most likely find in favor of the original author.[7] GIFs, however, are only a few seconds long and are virtually incapable of capturing the heart of the original author’s work. For instance, if the court was to compare a GIF that lasts for only a few seconds to an original work—a work that could range in duration anywhere from three minutes for a music video and up to three hours for a movie—it would have a difficult holding that the two-second GIF infringed upon the “heart” of these longer works.

The fourth and final factor for fair use looks at the damage that the use of the author’s work will have on the market. There must be evidentiary proof that the use is harming the market or that such continued method of use will negatively affect the potential market.[8] It is unlikely that an author or a creator will have enough evidence to prove current or future harm caused by GIFs. Their intended use is to last no more than a few seconds, as its main purpose is to demonstrate a certain expression or reaction. After it has fulfilled its purpose, there is no further reason for its use. Thus, it has not harmed the author in any way. It could even be argued that these GIFs actually help to promote the shows and music videos featured in them. As people relate to these clips, they are more likely to start or continue watching that specific show. This trigger has a positive benefit for the author.

Since the ultimate purpose of the use of GIFs is to demonstrate a certain feeling, expression, or reaction, all four factors will ultimately favor the alleged infringer. Courts have not yet begun to tackle the issues that may arise from the use and share of GIFs, mainly because GIFs are new to the internet and social media world. However, the day will come when authors of a copyrighted content will demand compensation for the material being used on the internet without their consent. This issue may not arise directly out of the use of GIFs, but it may be based on similar applications with a comparable purpose. Thus, courts should consider the same type of analysis in determining whether a certain application satisfies the factors of the fair use doctrine.

[1] David William, What is a GIF?, Small Business trends, (Mar. 8, 2016), https://smallbiztrends.com/2016/03/what-is-a-gif.html.

[2] Id.

[3] 17 U.S.C. § 107 (1992).

[4]Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006).

[5] Blanch, 467 F.3d at 256.

[6] Wright v. Warner Books, Inc., 953 F.2d 731, 738 (2d Cir. 1991).

[7] Harper & Row, Publishers v. Nation Enters, 471 U.S. 539, 565 (1985).

[8] Rogers v. Koons, 960 F.2d 301, 312 (2d Cir. 1992).

The Clash Between Parody and Copyright Infringement

TLR BLOG

By Daniel Pojero, J.D. Class of 2017 Touro Law Review Senior Staff Member

Parody and copyright infringement are constantly at odds within intellectual property law because of their paradoxical relationship. While copyright protection ensures an author exclusive rights to his or her original work of authorship, a parodist may rely on the Fair Use defense to forestall any liability for infringement, even though the parodist has copied part of the original work.[1] A parody is a method of criticism that operates by closely imitating a work for comic effect or ridicule; so a parody necessarily makes use of another creative work.[2] This is where the conflict between the two concepts exists.[3] Where typically a license is required to make use of a copyrighted work, the author is unlikely to grant permission or a license to a parodist since a parody by its nature will make fun or ridicule the author’s work.[4] Thus, the parodist employs the Fair Use affirmative defense, which allows for a reasonable and limited use of the copyrighted work without the author’s permission.[5]

Recently, Dr. Seuss Enterprises, L.P. (“Dr. Seuss”) filed a complaint against, inter alia, ComicMix LLC (“Comicmix”) in the Southern District of California for Copyright Infringement, Trademark Infringement, and California statutory Unfair Competition, seeking to enjoin ComicMix from distributing its alleged infringing work, “Oh the Places You’ll So Boldly Go.”[6]   Relying on the sustained familiarity of Dr. Seuss books, the alleged infringing work juxtaposed the recognizable Dr. Seuss theme, illustration, and stylization with the Star Wars characters.[7] The complaint was filed on November 10, 2016, and the Defendant, ComicMix, has not yet filed an answer.[8] Dr. Seuss alleges that ComicMix has misappropriated protected copyright elements into the infringing work, such as the title, story arc, characters, and illustrations.[9] The infringing work appears to recreate entire pages from the Dr. Seuss books with meticulous precision.[10]

ComicMix is likely to assert that its work is a parody that falls within the parameters of the Fair Use doctrine.[11] The courts have struggled with parody cases when ascertaining whether the parody falls within the scope of Fair Use, or if it is instead an infringing work.[12] The Copyright Act articulates criticism as one of the purposes behind Fair Use.[13] A parody is a transformative use of a well-known work that critiques or ridicules the original.[14] Therefore, the issue becomes whether there is an implication that parody enjoys more latitude than other types of works when Fair Use is asserted. If parody fails to be protected by the Fair Use doctrine, then the result could be the disappearance of parody as an artistic form of social criticism and comment.

Consequently, it must be determined by the Courts what constitutes a valid parody under the Fair Use doctrine.   Copyright Act section 107 enumerates four factors that must be analyzed to determine whether a use of a copyrighted work is fair use.[15] The first factor analyzes the “purpose and character of use, including whether the use is commercially motivated or instead is for non-profit educational purposes.”[16] The court analyzes the first factor by evaluating to what extent the use is transformative.[17] The use of the copyrighted material must be productive and put forth the copied material in a different manner or with a different purpose from the original.[18]  Where the alleged infringing work can be a substitute or makes the purchase of the original unnecessary, it is highly unlikely that the court will sanction it as being fair use of the original.[19]

The second factor ascertains the nature of the copyrighted work.[20] This factor recognizes that certain types of works are more deserving of copyright protection than other types of works.[21] Creative works do not enjoy as large a scope as do informational works designed to inform or educate its audience.[22]

The third factor looks to the “amount and substantiality of the copying in relation to the copyrighted work as a whole.”[23] This factor evaluates whether the quality and value of the copied portions are reasonable in relation to the purpose of the copying.[24]   Unfortunately, no black line rule exists. Courts have held that use of an entire work constituted fair use, whereas in other instances using a mere fraction of the work did not qualify as fair use.[25] The Supreme Court, however, with respect to parody, has held that “[c]opying does not become excessive in relation to parodic purpose merely because the portion taken was the original’s heart.”[26] A parody enjoys more leniency here because it must use enough of the original work to conjure up a recognizable allusion to the work it is aiming to ridicule.[27]

The fourth factor evaluates the “effect upon the potential market or value” of the plaintiff’s copyrighted work.[28] The Second Circuit articulated this factor as a balancing between the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied.[29] If the adverse effect the alleged infringing use will have on the copyrighted work is minimal, then less public benefit need be shown to justify the use.[30] However, in the parody context, although a parody may aim at destroying the artistic or commercial value of the original work through its criticism, this sort of market effect does not produce a cognizable harm under the Copyright Act.[31] The Court must differentiate between fierce criticism that quashes demand and copyright infringement that usurps it.[32]

Whether ComicMix’s work satisfies the elements of fair use in the context of a parody will be the main issue decided by the court. ComicMix must show the juxtaposition of Dr. Seuss’s theme and stylization with the Stars characters conjures up the reasonable perception of a parody.[33] The fair use factors are a multifaceted analysis of assessing where the author’s exclusivity should stop to best serve the overall objectives of copyright law.[34] A dynamic interrelationship exists between the factors because the factors build upon each other to create the concept of fair use.[35]

[1] 4-13 Nimmer on Copyright § 13.05 (2015).

[2] Id.

[3] Id. On one hand, copyright protection does not permit copying of a work, and on the other, fair use allows for copying when the four factors of fair use are satisfied.

[4] See generally Rich Stim, Summaries of Fair Use Cases, Stanford University Libraries: Copyright and Fair Use (Nov. 26, 2016) http://fairuse.stanford.edu/overview/fair-use/cases. Weird Al, a parodist, relies on obtaining licenses to conduct his work, rather than relying on fair use, which begs the question if a parodist should be required to obtain a license since it is conceivable that an original author will license their work to parodists.

[5] Black’s Law Dictionary 676 (9th ed. 2011). 4-13 Nimmer on Copyright § 13.05 (2015).

[6] Pls.’ Compl. Dr. Seuss Enter., L.P. v. ComicMix LLC, No. 3:16-cv-02779-JLS-BGS at 1-4 (S.D. Cal. 2016) Complaint filed November 10, 2016.

[7] Id.

[8] Id.at 5-11.

[9] Pls.’ Compl. Dr. Seuss Enter., L.P., No. 3:16-cv-02779-JLS-BGS WL 274176015.5 (S.D. Cal. 2016).

[10] Id. at 6-9. Example images are provided within the Plaintiff’s Complaint.

[11] Id. at 10.

[12] 4-13 Nimmer on Copyright § 13.05 (2015).

[13] 17 U.S.C. § 107(2016).

[14] Black’s Law Dictionary 1226 (9th ed. 2011).

[15] 17 U.S.C. § 107(2016).

[16] Id.

[17] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591-92 (1994).

[18] Id.

[19] Peter Letterese & Assocs. v. World Inst. of Scientology Enters., 533 F.3d 1287, 1315 (11th Cir. 2008).

[20] 17 U.S.C. § 107(2016).

[21] Cambridge Univ. Press v. Patton, 769 F.3d 1232, 1268 (11th Cir. 2014). See generally Diamond v. Am-Law Corp., 745 F.2d 142 (2d Cir. 1984) (stating informational works may be more freely published).

[22] Id.

[23] 17 U.S.C. § 107(2016).

[24] Peter Letterese & Assocs. v. World Inst. of Scientology Enters., 533 F.3d 1287, 1314 n.30 (11th Cir. 2008).

[25] See e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566 (1985) (copying a few hundred words from a book was too much to quote from essentially what was the “heart of the book”; Bill Graham Archives, LLC. v. Dorling Kindersley Ltd., 386 F. Supp. 2d 324, 330–331 (S.D.N.Y. 2005) (reformatting the entirety of plaintiff’s images into thumbnail images constituted fair use.

[26] Campbell, 510 U.S. at 588 (1994).

[27] Id.

[28] 17 U.S.C. § 107(4).

[29] MCA, Inc. v. Wilson, 677 F.2d 180 (2d Cir. 1981).

[30] Id.

[31] Campbell, 510 U.S. at 591-92 (1994).

[32] Id. at 592.

[33] Id. at 582.

[34] Campbell v. Acuff-Rose: Justice Souter’s Rescue of Fair Use, 13 Cardozo Arts & Ent. L.J. 19, 22 (1994).

[35] Id. at 23. See Campbell, 510 U.S. at 577-78.

Redskins Delay of Game, Pending Further Review

TLR BLOG

By Christine DiGregorio, J.D. Class of 2017 Touro Law Review Senior Staff Member

The Washington Redskins were granted a delay for its oral arguments, originally scheduled for December 9, 2016, by the United States Court of Appeals for the Fourth Circuit.[1] The Redskins have been fighting a drawn out battle to regain trademark protection of their mark, the “Redskins,” since it was canceled in 2014.[2] The delay was granted as the court awaits further review of a similar case now pending before the Supreme Court of the United States that may have a substantial influence over the Redskins case.[3] This similar case involves an Asian American Rock Band, known as “the Slants,” who were denied trademark protection by the United States Patent and Trademark Office in 2011.[4] Similar to the Redskins, whose mark was canceled because it was deemed disparaging,[5] the band was denied trademark protection because the Patent and Trademark office believed the name was likely to disparage the Asian American population.[6]

Trademark protection is governed by the Lanham Act,[7] which was created by Congress in 1946 as a way to register and protect trademarks.[8] Under the Lanham Act, a mark must be registered unless it is deemed to fall within certain unprotected categories by the Trial and Appeal Board at the Patent and Trademark Office.[9] One such category is if the mark is deemed disparaging.[10] This category was the grounds for the denial of protection for The Slants and for the cancellation of registration for The Redskins.[11]

The Slants’ argument in its appeal of the denial of their trademark was twofold. First, Mr. Tam, the front man for the rock band, argues that the U.S. Patent and Trademark Office erred in finding that the mark was disparaging.[12] Second, he asserts that § 2(a) of the Lanham Act is an unconstitutional violation of the First Amendment.[13] Notably, Mr. Tam emphasizes that the purpose of using the name “The Slants,” was to reclaim the negative stereotype, and instead recognize the fact that he and his band members are proud of being Asian.[14] Fortunately for the Slants, the court held that “the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment.”[15] The United States Patent and Trademark Office filed a writ certiorari to the Supreme Court on April 20, 2016, appealing the decision.[16]

Unlike the Slants, the Redskins have not been as successful in their fight for trademark protection. Although originally granted trademark protection in 1967,[17] the Redskins mark was canceled on June 18, 2014, after the Trademark Trial and Appeal Board found that the mark “consisted of matter that both ‘may disparage’ a substantial composite of Native Americans and bring them into contempt or disrepute.”[18] The Redskins unsuccessfully challenged the cancellation, also asserting, among other arguments, that § 2(a) violates the First Amendment.[19] In contrast to the decision in In re Tam,[20] the court found that § 2(a) did not violate the First Amendment.[21] The court held that the cancellation of the Redskins mark does not “burden, restrict, or prohibit Pro Football Inc.’s ability to use the marks,” and therefore does not violate the First Amendment.[22] The court emphasized that the cancellation of the mark did not preclude Pro Football, Inc.’s use of the mark in commerce, or prevent sports fans from buying its memorabilia.[23] Rather, the cancellation of the mark simply means that the Redskins no longer have the right to the exclusive use of the mark, and therefore can no longer challenge other uses in federal court.[24] The Redskins appealed this decision to the United States Court of Appeals for the Fourth Circuit on October 30, 2015.[25]

The Supreme Court agreed to hear the Slants’ argument,[26] and will hear the oral arguments from both sides in the pending case Lee v. Tam[27] during its 2016-2017 session. Although a date has not been set, it is likely the Fourth Circuit will wait for a definitive ruling from the Supreme Court on the issue of whether § 2(a) is disparaging before deciding the matter of the Redskins’ trademark. The Supreme Court decision on the issue will provide the Fourth Circuit with binding precedent to follow in its decision in the Redskins case. Until then, the game remains delayed, and the Redskins continue to wait for the “referees’” final decision regarding its trademark protection.

[1] Robert Barnes, Timeout called in Redskins Name Case, The Washington Post (Oct. 18, 2016), https://www.washingtonpost.com/local/timeout-called-in-redskins-name-case/2016/10/18/b6b30dd0-908a-11e6-9c52-0b10449e33c4_story.html.

[2] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d at 451.

[3] Id.

[4] Ian Shapira, Supreme Court to Review Case Important to Redskins Trademark Fight, The Washington Post (Sept. 29, 2016), https://www.washingtonpost.com/politics/courts_law/supreme-court-to-review-case-important-to-redskins-trademark-fight/2016/09/29/acf63382-8638-11e6-a3ef-f35afb41797f_story.html.

[5] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d 439, 451 (U.S. Dist. 2015).

[6] In re Tam, 808 F.3d 1321, 1331-1332 (Fed. Cir. 2015).

[7] 15 U.S.C. §1051.

[8] In re Tam, 808 F.3d at 1328.

[9] Id. at 1329.

[10] See 15 U.S.C. §1052(a) (“No trademark … shall be refused registration on the principal of its register on account of its nature unless it consists of … matter which may disparage or falsely suggest a connection with a persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”).

[11] In re Tam, 808 F.3d at 1331-32; Pro Football Inc. v. Blackhorse 112 F.Supp. 3d at 451.

[12] In re Tam, 808 F.3d at 1332.

[13] Id.

[14] Id.

[15] Id. at 1358.

[16] Supreme Court of the United States, SCOTUSblog, http://www.scotusblog.com/case-files/cases/lee-v-tam/ (last visited Oct. 23, 2016).

[17] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d at 448.

[18] Id. at 451.

[19] Id.

[20] In re Tam, 808 F.3d at 1331-1332.

[21] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d at 457.

[22] Id. at 455.

[23] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d at 490.

[24] 15 U.S.C. § 1072, 1115, 1121.

[25] Opening Brief, amlaw.com, http://pdfserver.amlaw.com/nlj/Pro-Football%20opening%20brief.pdf (last visited Oct. 23, 2016).

[26] Supreme Court of the United States, SCOTUSblog, http://www.scotusblog.com/case-files/cases/lee-v-tam/ (last visited Oct. 23, 2016).

[27] Lee v. Tam, 2016 LEXIS 4462.