Majors obtain summary judgment against Grooveshark, finding copyright infringement liability.
Google Books and Rap Genius
Judge Denny Chin, formerly of the SDNY and now the Second Circuit, has issued his opinion in the Google Books case. (Judge Chin kept a few of his cases when he moved up to the appeals court.). For those unfamiliar with the case, in 2005 Google undertook to digitize entire libraries of books, scanning the entire book in optical text recognition format. Many of the books Google scanned were under copyright and Google never sought permission from copyright owners prior to making its digital copies. Several authors filed a purported class action suit against Google.
After Judge Chin rejected a proposed settlement in 2011, the parties filed cross motions for summary judgment, with Google arguing that its digitization of entire books as ‘fair use’ under § 107. Judge Chin agreed with Google and granted its summary judgment.
Because they typically are the most relevant in deciding a fair use claim, I focus on the first and last of the 4 fair use factors provided in § 107: whether the use is transformative and whether the use reduces the market for the original. Judge Chin found both of these factors weighed in Google’s favor.
Judge Chin determined that “Google’s use of the copyrighted works is highly transformative. Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers, and others find books. … The use of book text to facilitate search through the display of snippets is transformative.” Judge Chin compared Google Books to providing thumb-nails of images, citing approvingly Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) and Bill Graham Archives v. Darling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006).
The display of snippets of text for search is similar to the display of thumbnail images of photographs for search or small images of concert posters for reference to past events, as the snippets help users locate books and determine whether they may be of interest. Google Books thus uses words for a different purpose — it uses snippets of text to act as pointers directing users to a broad selection of books.
Judge Chin focused on the fact that Google’s scanning “transformed book text into data for purposes of substantive research, including data mining and text mining in new areas, thereby opening up new fields of research.”
I wonder if Judge Chin would have made the same conclusion based on the scanning of a single book. Or even scanning several hundred books. It appears that his logic stems from the fact that millions of books were scanned, thereby enabling the searching that made the scanning transformative in the first place. This is at least suggestive that massive copying might be transformative, where limited copying might not be. As discussed below with respect to Rap Genius, I can imagine ways in which Judge Chin’s decision might influence business models that involve digitizing and indexing copyrighted works.
With respect to the last § 107 factor—the effect of the copying on the market for the original—Judge Chin concluded that “a reasonable factfinder could only find that Google Books enhances the sales of books to the benefit of copyright holders. An important factor in the success of an individual title is whether it is discovered … Google Books provides a way for authors’ works to become noticed, much like traditional in-store book displays.” Because “Google provides convenient links to booksellers to make it easy for a reader to order a book … there can be no doubt but that Google Books improves books sales.” I didn’t review the motions for summary judgment, so I don’t know if there was evidence (empirical or anecdotal) presented regarding Google Books actual impact of sales, but this seems like a pretty bold statement if it lacks evidentiary support. Given that many books were on sale prior to Google Books, it seems at least some evidence could have been presented showing either an increase or decrease in sales of particular titles after the introduction of Google Books.
For those who pay attention to this kind of thing, Judge Chin was the district court judge who originally granted summary judgment in favor of the copyright owners in the Cablevision case. Judge Chin’s decision was overturned by the Second Circuit in what became a bellwether for technology companies designing services that transmitted copyrighted works. Judge Chin was the dissenting vote in the Aereo case, where the Second Circuit upheld the principles articulated in Cablevision. I find it interesting that Judge Chin is so sure that services like Cablevision’s remote DVR and Aereo’s rebroadcast of over-the-air television transmissions are infringing technologies, while Google Books is not.
The Google decision is here.
So, what does Google Books have to do with Rap Genius? I recently read that Rap Genius has signed a license with music publisher Sony ATV. If you’ve checked out Rap Genius, you might wonder why it felt the need to get a license from a music publisher. I would argue it is a highly transformative service—a la Google Books. It is a searchable database of lyrics (though, unlike Google Books, it provides the entire lyrics, whereas Google Books only provides up to 90% of a text). But in addition to transcribing the lyrics, Rap Genius annotates the lyrics with possible explanations of what the writer meant. Rap Genius’ annotations include space for comments, so people can provide their own thoughts regarding the meaning of their favorite rap lyrics.
For example, check out Nas’ song “The World Is Mine.” I’ve listened to that song 100 times, and I love this line because of the way Nas emphasizes “PIPE” at the end – “The fiend of hip-hop has got me stuck like a crack pipe.” According to Rap Genius, this line either refers to “fans are fiending for his music, or if he himself is compelled to write rhymes.” Rap Genius also tells me that this line is a “subtle shout out to Nas’ one time mentor, Rakim who was known as the Microphone Fiend.” If Google Books is transformative—and all Google is doing is digitizing books—then Rap Genius should clearly be transformative—digitizing lyrics AND providing annotations.
All of this got me to thinking about a draft article by Ben Depoorter & Robert Kirk Walker’s called Copyright False Positives, an electronic copy of which is available at: http://ssrn.com/abstract=2337684. Depoorter and Walker argue that (a) the scope of copyright protection cannot be determined a priori, (b) copyright infringement entails statutory damages, and (c) defending copyright infringement claims is expensive. Because of these factors, copyright owners may over-enforce their copyrights, leading to “copyright enforcement false positives, where rights holders erroneously believe that their interests in a particular work extend beyond the bounds of what is actually protected. These false positives often “motivate copyright owners to seek enforcement of rights that are nonexistent or outside the scope of copyright. Such misguided enforcement actions impose significant social costs…”
Two of these significant social costs are obvious in our examples. First, in the Google Book case, Google had to spend millions of dollars litigating what a federal district judge ultimately determined was a fair use of copyrighted works. Second, in the Rap Genius case, the website took a license rather than risk the very litigation expenses Google was able to afford, even though Rap Genius’ use of the copyrighted works is arguably transformative. In both instances, society is worse off, but in one instance a publisher is better off.
Marvin Gaye’s estate has answered Robin Thicke’s declaratory judgment suit over Gaye’s “Got to Give It Up” and Thicke’s uber popular song “Blurred Lines” by filing counterclaims, including alleged infringement of additional Gaye songs, including the Marvin Gaye song, “After the Dance,” in the Thicke song “Love After War.”
Thicke’s own words were used against him, as Gaye’s counterclaim cited a May, 2013 interview Thicke gave GQ magazine in which he said,
Pharrell and I were in the studio and I told him that one of my favorite songs of all time was Marvin Gaye’s ‘Got to Give it Up.’ I was like, ‘Damn, we should make something like that, something with that groove.’ Then he started playing a little something and we literally wrote the song in about a half hour and recorded it.
Thicke repeated this claim in a July interview with Billboard,
Pharrell and I were in the studio making a couple records, and then on the third day I told him I wanted to do something kinda like Marvin Gaye’s ‘Got to Give it Up,’ that kind of feel ’cause it’s one of my favorite songs of all time. So he started messing with some drums and then he started going ‘Hey, hey hey .. ‘ and about an hour and a half later we had the whole record finished.
Frankly, even a cursory listening makes it hard to argue these songs are substantially similar. The case reminds me of the Vanilla Ice initially claiming that “Ice Ice Baby” didn’t sample Queen / David Bowie’s “Under Pressure.”
The Gaye family alleges that EMI breached its fiduciary duty tp and obligations of good faith and fair dealing with the family by siding with Pharrell Williams, an EMI-affiliated writer and one of Blurred Lines co-writers. According to the Gaye family, Gaye’s administration agreement with EMI grants EMI the exclusive right to bring infringement claims, but when the Gaye family told EMI about the alleged infringement of Got to Give It Up, EMI refused to pursue a claim against Williams.
Among the nefarious actions alleged is the salacious claim that the chairman of EMI called a legal representative of the Gaye family suggesting that–notwithstanding the fact that Thicke had already filed his dec action against them–they not to pursue this action because Marvin Gaye’s children were “tarnishing” and “ruining an incredible song” (“Blurred Lines”) and”killing the goose that laid the golden egg,” The EMI chairman claimed that the Gaye family’s accusations that Blurred Lines was based on Gaye’s song was responsible for “Blurred Lines” not receiving an MTV Video Music Award and might kill any chances of “Blurred Lines” winning a Grammy Award for Song of the Year.
Based on these alleged breaches, the Gaye family is seeking to rescind its publishing agreement with EMI.
The counterclaims are here.
The 4th Circuit delivered a knockout punch in a copyright infringement claim against Mayweather, affirming a district court’s granting of summary judgment dismissing a songwriter’s claim for infringement damages.
Anthony Dash claimed that he wrote the composition of a song Mayweather used as a “theme song” during several appearances at WWE events and sued for infringement. Because Dash had not filed for copyright registration until after the alleged infringement, Dash was only able to seek actual damages under §504(b). The district court bifurcated the proceedings between liability and damages and Mayweather filed a motion for summary judgment that Dash was not entitled to damages. Dash responded by filing an expert report that listed four benchmark licensing fees paid to other artists for the use of their music at Wrestlemania XXIV. Based on those fees, Dash’s expert concluded that Dash “would have earned a maximal sum of $3,000 for the use of his musical composition.” Mayweather argued that Dash’s expert opinion was too speculative on which to base an award.
The 4th Circuit began by noting that “the primary measure of recovery is the extent to which the market value of the copyrighted work at the time of the infringement has been injured or destroyed by the infringement.” One measure of the fair market value is the licensing “fee the owner was entitled to charge for [the infringer’s] use” of his copyrighted work.” In order to recover, the copyright owner “must prove the existence of a causal connection between the alleged infringement and some loss of anticipated revenue.”
Dash’s expert attempted to determine what the license fee would have been by considering 4 songs that the WWE did license: 1 by the Red Hot Chilli Peppers, 1 by Fuel and 2 by Snoop Dogg. Dash’s expert concluded that, “[b]ased on these benchmarks, it is safe to conclude that [Dash] would have earned a maximal sum of $3,000 for the use of his musical composition.”
The 4th Circuit seized on Dash’s expert’s reference to the maximum amount Dash would have earned as evidence that Dash might not have earned anything. (“By referencing [Dash]’s maximal value—without any actual mention of a minimum value—[Dash’s expert] failed to satisfy this burden. Rather it appears to have concluded only that, to the extent [Dash’s work] had a market value, such value was no more than $3,000.”) The Court also concluded that the selection of benchmarks–representing licenses with well-known artists–were too removed from the unknown Dash to be reliable.
The Court then turned to Dash’e entitlement to WWE’s profits from using the work and noted that “in order to meet his initial burden under § 504(b), a plaintiff must not merely present proof of the amount of the claimed revenue streams, but must also provide “more than mere speculation as to the existence of a causal link between the infringement and the claimed revenues.” The Court noted that the causal link need to be direct–it must only be hypothetically possible. Here, Dash had stipulated that he had no evidence that the playing of his composition at Wrestlemania XXIV increased any of the WWE revenue streams. By making such stipulation, Dash admitted there was not even hypothetically possible to show the performance of his song created profits WWE would not have earned but for playing the song.
The decision is here.
Rock River Communications v UMG, No. 12-55180 (9th Cir. 2013)
Rock River’s lawsuit alleged that UMG inappropriately blocked Rock River from distributing its album of Marley remixes by wrongfully threatening to sue Rock River’s distributors. UMG persuaded the district court that unless Rock River had proof that its chain of licensing rights was valid – dating all the way back to the initial musicians and producers – then UMG could not be liable, because there is no liability for interference with an invalid business expectancy.
According to the 9th Circuit, UMG is only half right. Although there can be no liability for interfering with a business expectancy that is invalid or illegal, the defendant (UMG in this case) has the burden to prove the invalidity or illegality of the business expectancy. UMG cannot obtain summary judgment based on the holes in Rock River’s claim to a valid license when the validity of UMG’s own licensing rights is equally spotty.
The facts of the case are pretty straight forward. In 2006, Rock River entered into a licensing agreement with San Juan Music Group, Ltd. (San Juan), to “sample” or 16 recordings performed by Bob Marley and the Wailers. San Juan is a music licensing company that, since 1980, has been licensing recordings by Marley through an agreement with Lee Perry, the producer of many of Marley’s early recordings. Rock River eventually produced an album of 12 of these remxies entitled Roots, Rock, Remixed, which it intended to sell through normal sales channels.
In October 2007, however, UMG sent a cease-and-desist letter to Rock River claiming that UMG owned exclusive licensing rights to all the Recordings remixed on the album “Roots, Rock, Remixed” and that Rock River therefore could not release its album without a license from UMG. UMG sent letters to Apple to block sales of the album on iTunes, to Fontana (a UMG subsidiary) to stop distributing physical units in the US, and to EMI (now a UMG label) to stop international distribution.
Rock River sued UMG in January, 2008, alleging violations of the Sherman Act, 15 U.S.C. § 2, and the Clayton Act, 15 U.S.C. § 18, intentional interference with contract, intentional interference with prospective economic advantage (IIPEA) and misrepresentation in violation of 17 U.S.C. § 512(f). On UMG’s first motion for summary judgment, the district court dismissed all of Rock River’s claims except for its IIPEA claim.
UMG, in moving for summary judgment, argued it cannot be held liable for interfering with an illegal business expectancy, such as album sales of an album that violates copyright law. As the 9th Circuit explained,
“The ingenuity of this theory, although we ultimately reject it, is that it seeks to allow UMG to prevail without requiring UMG to actually establish that Rock River’s album infringed on anyone’s licensing rights. Instead, it casts the licensing rights issue as an essential part of Rock River’s case-in-chief.”
The 9th Circuit reasoned that because San Juan had been openly licensing Marley Recordings for 30 years, including the famous “Trenchtown Rock,” to roughly 40 companies, including to divisions of UMG, without ever being sued, there was at least some evidence that San Juan did have the right to license Rock River.
The 9th Circuit’s opinion is here.
As readers of this blog will recall, aging rockers Flo & Eddie filed three separate lawsuits alleging that Sirius XM has infringed certain state- or common law copyrights of a class of owners of sound recordings fixed prior to 1972. Sirius XM has filed a motion to transfer the California case, which was transferred from state to federal court, and the Florida case to the Southern District of New York. While this legal maneuver is relatively uninteresting, the motion does indicate at least one defense that is likely to feature prominently in this and the related case filed by the so-called “major” record companies, – titled Capitol Records, LLC et al. v. Sirius XM Radio Inc., No. BC520981 – in California state court raising similar issues: laches.
Laches, an equitable defense based on the doctrine of estoppel, is the unreasonable delay in pursuing a right or claim that prejudices the opposing party. According to Sirius XM’s motion,
Plaintiff apparently has become aggrieved by the distinction drawn by Congress in withholding copyright protection from its Pre-1972 Recordings; thus now, after decades of inaction while a wide variety of music users, including radio and television broadcasters, bars, restaurants and website operators, exploited those Pre-1972 Recordings countless millions of times without paying fees, it asserts a purported right under the law of various states to be compensated by Sirius XM for comparable unlicensed uses. Plaintiff’s multiple court filings constitute a form of lawsuit lottery in search of an elusive new state-law right that would radically overturn decades of settled practice.
The laches defense raises a number of interesting issues. For example, since at least the late 1980s, almost all terrestrial radio stations have used digital copies stored on servers to originate performances; i.e., the days of “disc jockeys” spinning vinyl have been gone for decades. Presumably, under Flo & Eddie’s complaint, these terrestrial radio broadcasters needed a license to make copies of Pre-72 recordings and, potentially, to perform them.
Terrestrial radio stations have been simulcasting performances over the internet for nearly 20 years, presumably implicating the right of performance by digital audio transmission that Flo & Eddie allege exist under certain state laws for Pre-72 recordings. Has SoundExchange, which collects and distributes royalties under certain statutory licenses for the public performance of sound recordings by digital audio transmission, been collecting royalties from these terrestrial radio broadcasters and remitting such payments to Pre-72 artists? Because federal copyright doesn’t apply to Pre-72 recordings, if SoundExchange were collecting such royalties it would owe the terrestrial radio simulcasters a refund. If SoundExchange hasn’t, why hasn’t Flo & Eddie sued terrestrial radio?
Flo & Eddie will undoubtedly respond that they had no way of knowing that they weren’t getting paid by Sirius XM until the most recent Copyright Royalty Board proceeding, at this pre-72 recordings were a significant issue.
[The allegations raised by SoundExchange against Sirius XM that Sirius XM was inappropriately deducting revenue from its royalty calculation to account for Pre-72 recordings are inapplicable in the context of a per-song royalty, where each Pre-72 recording can be identified and appropriately excluded from royalty calculations. Per-song royalties have existed since at least 2008.]
The motion is here.
In the aftermath of the copyright infringement litigation involving Hangover 2 and Mike Tyson’s face tattoo, the NFL Players Association is apparently urging players to obtain releases from tattoo artists to prevent future infringement actions.
According to this article in Forbes, the NFLPA is worried that this current batch of heavily inked players – some of whom use their art as their image – will encourage tattoo artists to sue the NFL, advertisers or video game makers for unauthorized reproduction of their art.
UK label Ministry of Sound has filed suit against Spotify, alleging that Spotify users are creating playlists that are identical to compilations created by MOS. Apparently, Spotify users are creating playlists that mirror MOS compilation albums, at times even using MOS in the name of the playlist.
According to the story in The Guardian, “The case will hinge on whether compilation albums qualify for copyright protection due to the selection and arrangement involved in putting them together. Spotify has the rights to stream all the tracks on the playlists in question, but the issue here is whether the compilation structure – the order of the songs – can be copyrighted.” That might be the case in the UK, but in the US I think the question is different.
The Copyright Act clearly protects compilations–a defined term in Sec. 101 (“A “compilation” is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”). The question I have is whether Spotify can be liable for the playlists created by its users. This strikes me as a claim of secondary liability – since Spotify isn’t undertaking any volitional action in the creation of the playlist. There might be an opportunity to issue a DMCA takedown request, but Spotify actually has the rights to stream the songs in question.
Readers will recall a previous post (here) discussing the United States District Court of the Eastern District of Wisconsin finding that Comedy Central’s use of the Samwell’s viral video entitled “What What (In the Butt)” (“WWITB”) was fair use. The copyright owner of WWITB, Brownmark Films, appealed the decision, arguing, among other things, that an unpleaded affirmative defense of fair use is an improper basis for granting a motion to dismiss under Rule 12(b)(6). In an opinion written by Judge Cudahy, the 7th Circuit affirmed the District Court’s ruling.
Much of the 7th Circuit’s opinion is like a First Year Civil Procedure lecture, full of discussions regarding whether Comedy Central’s filing was a 12(b)(6) motion, a 12(c) motion, or a motion of summary judgment. In the end, the 7th Circuit determined that “district court could properly consider an affirmative defense in the context of a motion for summary judgment, which it did here, regardless of the caption [Comedy Central] used.”
Central in the 7th Circuit analysis was the fact that the only 2 pieces of evidence required by the district court to make its decision were the 2 versions of the WWITB videos, which the district court had. In a hilarious footnote, Judge Cudahy reveals himself as an avid South Park viewer:
Adopting [a summary judgment approach] would have given [Comedy Central] greater freedom in setting out its fair-use defense. In its reply brief, Brownmark makes much of the fact that [Comedy Central] mentions Butters’ naïveté, but had not introduced evidence on Butters’ innocent nature. While we do not feel that this case turns on any such naïveté, [Comedy Central] could have introduced previous South Park episodes to show that Butters has repeatedly demonstrated a lack of understanding of sex. See, e.g., Butters’ Very Own Episode (Comedy Central television broadcast Dec. 12, 2001) (perceiving sex as wrestling), see also Cartman Sucks (Comedy Central television broadcast Mar. 14, 2007); Stupid Spoiled Whore Video Playset (Comedy Central television broadcast Dec. 1, 2004). Indeed, in one of these episodes, Butters is dressed in the same teddy bear costume he wears in the WWITB video. Stupid Spoiled Whore Video Playset (Comedy Central television broadcast Dec. 1, 2004).
I can imagine Judges Easterbrook and Posner scatologically discussing the import of Butters sexual innocence in the context of Saddam Hussein and Satan as gay lovers, existentialism in the repeated the death of Kenny, and whether feminists can enjoy the show due to some of its misogynistic characters.
BTW – Samwell is riding this Butt song as long and as hard as he can. He even has an iPhone app!
The 7th Circuit’s opinion is below:
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Thierry Guetta, a/k/a Mr. Brainwash, is back in court for allegedly using photographs of famous musicians without authorization. This time, however, he’s managed to drag Google into his mess.
By way of background, Guetta was sued in 2010 in the Central District of California by Gene Friedman, a photographer who took one of the most iconic photographs in hip hop, featuring Run DMC:
Guetta made several derivative works, which he commercialized on t-shirts and postcards, including:
To create the Broken Records Work, Guetta caused a digital image of the Photograph to be altered so as to remove most of the detail from its subjects, leaving an outline of the group’s features. … Guetta then had the image projected onto a large piece of wood and painted the image onto the wood. Thereafter, Guetta glued more than 1,000 pieces of broken phonograph records onto the painted wood. The result was a three-dimensional image of Run-DMC created entirely from broken records. (Defendant’s Motion for Summary Judgment)
Guetta claimed that his derivative works were either transformative (and, therefore, fair use under § 107) or did not use copyrightable portions of Friedman’s original (and, therefore, could not constitute infringement).
In this case, the District Judge disagreed with Guetta. Regarding the question of whether the portions of the photograph copied were copyrightable, Judge Pregerson concluded the Friedman “selected and arranged the subjects. Although the court believes that no more is
required, the court also notes that [Friedman] made related decisions about light and shadow, image clarity, depth of field, spatial relationships, and graininess that were all represented in the copyrighted Photograph. [Friedman] also selected the background
and perspective of the Photograph, and all of these particular artistic decisions commulatively result in the Photograph.” Having found the photo copyrightable, Judge Pregerson quickly concluded that Guetta had, indeed, infringed Friedman’s copyright.
Regarding Guetta’s claim that his use was fair because the works were transformative, Judge Pregerson again disagreed, concluding that “[Guetta] has not offered a transformative alternative use of the Photograph image. Both [Friedman] and [Guetta] are artists, and the image was used by both in works of visual art for public display. Although the statements made by those respective artworks and the mediums by which those respective statements were made differ, the use itself is not so distinct as to render Defendant’s use a transformation of Plaintiff’s copyright.”
Judge Pregerson’s opinion is below.
Now, Guetta finds himself a defendant again, this time being sued by the estate of James Marshall for allegedly doing exactly the same thing with Marshall’s photographs as he did with Friedman’s; i.e., taking the photo and manipulating it to look different, while still being able to recognize the artist-subject matter. (Marshall v. Guetta, 12-cv-3423-SJO (C.D. Cal.). So why is Google on the hook? According to the complaint, Google held an event to launch its music service at Guetta’s studio, where Guetta installed a backdrop using blown-up derivative works of Marshall’s photos of John Coltrane and Jimi Hendrix.
And, what does all this have to do with Girl Talk? Peter Friedman argued here that the reason mash-up artist Girl Talk has not been sued by the record labels is because the argument that Girl Talk “transformed the copyrighted materials sufficiently that his work constitutes non-infringing fair use is just too good.” Judge Pregerson’s opinion appears to undercut such arguments. For example, Guetta’s transformation was such that the underlying work was still identifiable (i.e., Guetta’s intent was for viewers to recognize his art as depicting Run DMC or Coltrane or Hendrix, thus capturing the essence of the original photo). The same is obviously true for Girl Talk, who relies on listeners’ recognition of the underlying songs to make his music more popular. Extending Pregerson’s logic, both Girl Talk and the recording artists he samples are are “artists” and though “the statements made by those respective artworks and the mediums by which those respective statements were made differ, the use itself is not so distinct as to render Defendant’s use a transformation of Plaintiff’s copyright.”
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