Tag Archives: Copyright Act

CRO Smack Down: 2nd Cir. Holds 512 covers Pre-72

The Second Circuit delivered its highly anticipated decision in the Capitol Records v. Vimeo case. Various record labels sued UGC site Vimeo for copyright infringement of sound recording fixed prior to February 14, 1972, so-called Pre-72 recordings. The labels argued that the safe harbor provisions of Sec. 512 of the Copyright Act, which provides immunity to copyright infringement liability to UGC host sites subject to certain conditions, do not apply to Pre 72 recordings, which are not covered by the Copyright Act but rather are the subject to various state statutory and common law protections. Relying heavily on a 2011 report concerning the legal state of Pre 72 recordings from the Copyright Office, the federal district court for the Souther District of New York granted the labels’ motion for summary judgment.1  Vimeo appealed.

In discussing the origins of Sec. 512, the Second Circuit describes the “compromise” that Congress sought to establish between content creators and content users. That compromise provided creators with a ‘notice and takedown’ provision, which allowed creators to avoid filing individual copyright infringement actions against each and every unauthorized use online. That compromise provided users immunity from infringement claims and monitoring responsibilities, provided the user expeditiously remove content in response to a takedown request. This compromise, the Second Circuit concludes, would be illusory if Pre 72 recordings weren’t subject to the 512 safe harbor.

The Second Circuit begins by noting that  “the district court accepted without discussion the position taken by the United States Copyright Office in a report prepared in 2011 that the safe harbor does not protect against liability for infringement of pre-1972 sound recordings.” The Second Circuit then dissects the report and its shortcomings.

The Second Circuit points out that

The Report begins its analysis by asserting that § 512(c)’s term “infringement of copyright” is defined in § 501(a) as the violation of “any of the exclusive rights of the copyright owner as provided by sections 106 through 122.” Section 501(a), however, does not contain such a definition. The Copyright Act’s definitions are set forth in § 101, and do not include a definition for “infringement of copyright.

The Second Circuit rejects the Office’s conclusion, reasoning

The statement that one who violates rights identified in specified sections is an “infringer of copyright” does not purport to set forth an exclusive definition of “infringer of copyright.” … To state that conduct x violates a law is not the same thing as saying that conduct x is the only conduct that violates the law. (emphasis in original)

The Second Circuit concludes, therefore, that the safe harbor must include Pre 72 recordings or the entire “compromise” envisaged by Congress would be illusory.

what Congress intended in passing § 512(c) was to strike a compromise under which, in return for the obligation to take down infringing works promptly on receipt of notice of infringement from the owner, Internet service providers would be relieved of liability for user-posted infringements of which they were unaware, as well as of the obligation to scour matter posted on their services to ensure against copyright infringement. The purpose of the compromise was to make economically feasible the provision of valuable Internet services while expanding protections of the interests of copyright owners through the new notice-and-takedown provision. To construe § 512(c) as leaving service providers subject to liability under state copyright laws for postings by users of infringements of which the service providers were unaware would defeat the very purpose Congress sought to achieve in passing the statute.

 

 

Second Circuit Decision

Capitol Records v Vimeo (2nd Cir. Op)

Copyright Office Pre-72 Report

Copyright Office Pre 72 Report

  1. There were also questions of red flag knowledge that were decided under the Second Circuit’s prior YouTube decision, but I don’t find those particularly interesting or newsworthy.

100% Wrong

The Copyright Office (“CRO”) recently released what it called a response to a letter of inquiry by Rep. Doug Collins entitled “Views of the United States Copyright Office Concerning PRO Licensing of Jointly Owned Works (the “Views”),” which is provided below. For myriad reasons, this “response” appears to be totally contrived. For example, Rep. Collins sent his letter of inquiry on Tuesday, January 12, 2016. The CRO responded on Friday, January 29th – a mere 13 working days later. During these 13 days, the CRO was apparently able to (i) reach out to a sizeable number of PROs and music publishers, review potentially dozens of (confidential?) agreements between publishers and songwriters 1, and (iii) write 29 single-spaced pages of text supported by 153 footnotes! Within 4 business days of receiving this response for the CRO, Rep. Collins apparently had the idea that the Department of Justice might benefit from the CRO’s thoughts–given that the DOJ has been reviewing the consent decrees under which ASCAP and BMI operate, including the issue of whether these decrees require ASCAP and BMI to grant “100%” licenses to songs, even when the ASCAP or BMI-member songwriters are co-writers that control less than 100% of the underlying copyright in the musical work (so-called “fractional” licensing; songs for which the underlying copyright is “split” among two or more co-writers are sometimes referred to as “split works.”). The DOJ provides details of its investigation of the ASCAP and BMI consent decrees here: https://www.justice.gov/atr/antitrust-consent-decree-review-ascap-and-bmi-2015.

As is obvious from the sarcasm-laden prose above, I am highly skeptical that the above “facts” occurred as they appear. If you think my suspicions are misplaced, consider that just two weeks before the Views were released, the CRO released a report on the so-called “making available” right. That report was written in response to a letter of inquiry that was sent to the CRO by then Representative Mel Watt on December 13, 2013; i.e., while the CRO was able to draft a response to Rep. Collins in 13 working days, it labored for 801 calendar days to respond to Rep. Watt!

Even assuming the CRO miraculously crafted the attached in 13 days, it still suffers from fundamental flaws that make it completely unhelpful to the discussion of whether the blanket licenses that ASCAP and BMI offer — under requirements of their respective consent decrees — do and should provide 100% licenses to split works.

For example, the CRO begins by stating that “the fractional licensing of jointly owned musical works—a longstanding practice of the music industry—went unquestioned as a background fact by the many stakeholders who participated, including both licensors and licensees.” (Views p. 2). There are at least two significant problems with this statement. First, several of the citations in support of this “fact” appear to be taken wildly out of context.

  • Susan Chertoff of the RIAA does say “we’ve already discussed, is that most songs have fractional ownership,” but then goes on to discuss the practical implications of allowing fractional licensing: “let’s say you have a song that has ten owners and then there is an artist. So the [recording] artist wants it on Spotify and nine of the ten owners want it on Spotify. You’re talking about creating a situation where one owner would be able to withhold that song. … I don’t see how that’s workable when on the songwriter side you’re talking about fractional ownership.” (Transcript of U.S. Copyright Office Roundtable on Music Licensing,  New York University School of Law, June 24, 2014, pp. 145-46, available at http://copyright.gov/policy/musiclicensingstudy/transcripts/mls-nyc-transcript06242014.pdf).
  • Likewise, Spotify does state that “Although the Copyright Laws provide that a nonexclusive licensee of a co-author of a joint work may not be sued for copyright infringement, custom and practice in the music industry has developed such that each co-author of a musical work only licenses its proportionate share in the underlying work.” (Comments Submitted in Response to U.S. Copyright Office’s March 17, 2014 Notice of Inquiry at 4 (May 23, 2014), available at  http://copyright.gov/policy/musiclicensingstudy/comments/Docket2014_3/Spotify_USA_Inc_MLS_2014.pdf). Spotify’s quote, however, is in the context of its explanation of why fractional licensing is bad and why Sec. 115 of the Copyright Act should be amended to create a blanket license under which 100% licenses would be granted! (“This means that in order to avoid liability for copyright infringement – and the crushing statutory damages available under the Copyright Laws – Spotify must obtain licenses from each co-author owning a share in an individual work, no matter how small that co-author’s interest might be. … Spotify believes that the effectiveness of the Section 115 license can be ensured if uses of musical works were covered pursuant to a blanket license, in a manner similar to the Section 114 license.”) (pp. 4-6).

This leads to the second significant problem: the evidence regarding fractional licensing is in connection with individual music publishers licensing the reproduction (or synchronization) rights in their individual repertory to interactive services, not the blanket performance licenses issued by ASCAP and BMI, under which these same music publishers, who in a competitive market would be competing against each other on price to license services, jointly set a single price, which–absent the consent decrees–would be a violation of antitrust laws! Based on a series of statements regarding the licensing practices of individual publishers, each licensing only its particular catalog, the CRO, in a cagey (and totally disingenuous) slight-of-hand, then states “Despite the wide-ranging nature of the study and invitation to raise additional issues, none of the participants identified fractional licensing of musical works by the PROs as a practice that needed to be changed.” Do you see what the CRO does there? It notes that industry participants acknowledge that publishers, when licensing their individual catalogs — typically in connection with licensing reproduction or synchronization rights — license on a fractional basis, and from that concludes that the licenses granted by ASCAP and BMI, which are blanket licenses that aggregate the catalogs of thousands of individual publishers who would otherwise be competing against one another on price, must likewise be only granting fractional licenses.

Perhaps the most egregious example of the lengths to which the CRO goes to reach its desired conclusion — rather than the one dictated by the actual Copyright Act — is the following statement and supporting citations: “Because the industry practice of fractional licensing of performance rights … has been amply documented in the submissions of commenting parties in the DOJ’s pending review process, the below analysis assumes that fact and focuses primarily on the legal consequences that follow.” (Views p. 3). Do you care to guess which submissions the CRO cites in support of this “ample documentation”? If you guessed ASCAP, BMI and SESAC, you are correct.  2

Apparently the CRO failed to read the following submissions:

  • American Beverage Licensees, “Beverage licensees commonly understand that when they obtain a “blanket license” from a PRO, they have the right to use all the works in that PRO’s repertoire, irrespective of what may be considered a partial or “split work.” The very use of the term “blanket license” implies as much, and the ability to use all of the works in a PRO’s repertoire is one of the benefits that PROs tout when urging beverage licensees to pay for a license.” (Comments of American Beverage Licensees, at p. 2) (available at https://www.justice.gov/atr/public/ascapbmi2015/ascapbmi12.pdf).
  • Computer and Communications Industry Association, “… ASCAP and BMI’s existing licenses make no distinction between works that are wholly and partially administered …” (Comments of CCIA, at p. 4) (emphasis in original) (available at https://www.justice.gov/atr/public/ascapbmi2015/ascapbmi16.pdf).
  • National Association of Broadcasters, iHeartMedia, Inc., the National Cable & Telecommunications Association, the National Religious Broadcasters Music License Committee, Netflix Inc., Pandora Media, Inc., the Radio Music License Committee, Inc. (“RMLC”), Rhapsody International Inc., Sirius XM Radio, Inc., the Television Music License Committee, LLC, and Viacom Inc. (collectively the “Media Licensees”), “the express language of ASCAP’s and BMI’s own agreements with their respective members and affiliates, as well as their respective agreements with Media Licensees, provide for ASCAP and BMI to grant the right to publicly perform all of the works in the repertories of those PROs – irrespective of whether such works are owned solely by affiliates of the licensing PRO or constitute “split works,” one or more of whose joint owners may be affiliated with a separate PRO or with no PRO at all. Never in any of Media Licensees’ experience with ASCAP and BMI has any question arisen as to the nature and encompassing scope of this grant.” (Comments of Media Licensees, at p. 2) (available at https://www.justice.gov/atr/public/ascapbmi2015/ascapbmi19.pdf).
  • Music Choice, “There can be no serious question that the PRO licenses have always provided the right to play all songs in each PRO’s respective repertory, irrespective of whether the PRO represents all of the joint owners of a given song in the repertory.” (Music Choice’s Comments in Connection with the Department of Justice’s Review of the ASCAP and BMI Consent Decrees Regarding PRO Licensing of Jointly Owned Works, at p. 2 ) (available at  https://www.justice.gov/atr/public/ascapbmi2015/ascapbmi28.pdf). (“[T]he exact question at issue, whether a single PRO’s license provides the right to perform jointly-owned songs when that PRO represents less than 100 percent of the song’s owners, has already been answered by the courts. In Buffalo Broadcasting, the district court was confronted with this question and held that if both PROs had the same song in their repertories due to split ownership, a licensee had the option of licensing the song through either one of the PROs, without obtaining a license from the other. (In Re Application of Buffalo Broad. Co.), No. 13-95 (WCC), 1993 WL 60687, at *79 (S.D.N.Y. Mar. 1, 1993).” Id. at 5.).
  • Public Knowledge, “permitting music publishers the ability to both partially withdraw their catalogs from PROs, and amplify their market power by requiring licensees to obtain permission from all owners of a work (a practice at odds with the normal operation of copyright law), would be akin to blessing the very same concentration in market power that led the DOJ to bring antitrust actions against the PROs.” (Comments of Public Knowledge, at p. 4) (emphasis added) (available at https://www.justice.gov/atr/public/ascapbmi2015/ascapbmi15.pdf).

The CRO at least accurately states the basic principle of copyright co-ownership: “Co-owners of a joint work “[are] treated generally as tenants in common, with each coowner having an independent right to use [or] license the use of a work, subject to a duty of accounting to the other coowners for any profits.” Each co-owner may thus grant a nonexclusive license to use the entire work without the consent of other co-owners, provided that the licensor accounts for and pays over to his or her co-owners their pro-rata shares of the proceeds.” (Views p. 6) (internal citations omitted). Citing the copyright treatise Goldstein on Copyright, the CRO notes “the default rules within the Act are only a “starting point,” with “collaborators . . . free to alter this statutory allocation of rights and liabilities by contract.” Id. (emphasis added) It is striking that the following 23 pages deal with these contractual arrangements among copyright owners to alter the basic principle of copyright law; i.e., the ways in which a (supposedly) independent economic actor (a co-writer) uses private contractual provisions to restrict the exercise of the full panoply of rights enjoyed by another independent economic actor (her other co-writers).

This focus on what co-writers are permitted to do under the Copyright Act allows the CRO to completely ignore whether such actions might run afoul of antitrust laws. For example, the CRO states “As permitted under the 1976 Act, these contracts represent an agreement by the cowriters to divide and apportion as between themselves what would otherwise be the default equal and undivided interests in the copyright.” (Views p. 9) (emphasis added) Likewise, the CRO describes a contractual provision limiting co-owners’ ability to license 100% of a co-authored work as “as clearly permitted under the Act ….” (Views p. 10)

The biased nature of the CRO’s inquiry is further evidenced in its discussion of the intersection of the Copyright Act and the ASCAP and BMI consent decrees. The CRO states that, “Although [the definition of “repertoire” in the ASCAP and BMI consent decrees] neither specifically embraces nor rejects the concept of partial interests, because the consent decrees were amended after 1978, the definition of repertoire in each should be construed consistently with the 1976 Copyright Act, which allows for divided ownership of exclusive rights, including the right of public performance.” (Views p. 13). It is also true, however, that 1976 Act is also the source of the bedrock copyright principle that co-owners are tenants-in-common, each controlling an undivided partial interest in the entire copyrighted work. Presumably, the consent decrees need to be “construed consistently” with that principle as well.

Further, the CRO claims that, “given the definition of “repertoire” in the decrees (“those works the right of public performance [the PRO] has . . . the right to license”), to reject such an understanding [that the repertoire only includes the fractional interest of a member-songwriter] would mean that the ASCAP and BMI repertoires must exclude any work for which the PRO could offer only a partial license, since there would be no “right” to license the entire work.” (Views p. 14). Such a conclusion, however, is completely at odds with the standard membership / affiliation agreements into a songwriter enters with ASCAP / BMI, respectively. For example, ASCAP’s form writer agreement grants to ASCAP “the right to license non-dramatic public performances” of “each musical work” that the owner “wrote, composed, published, acquired or owned” “alone, or jointly, or in collaboration with others” and in which “the owner now has any right, title, interest or control whatsoever, in whole or in part.” BMI’s form writer agreement – while less detailed – likewise grants to BMI the right to license non-dramatic public performances of “all musical compositions … composed by you alone or with one or more co-writers.” (see Comments of Media Licensees’ at p. 7). In other words, in order to conclude that the definition of “repertoire” in the ASCAP and BMI consent decrees must mean only that fraction of a work controlled by a member-songwriter, the CRO had to completely ignore the actual agreements into which the PROs enter with songwriters that specifically grant to each PRO the right to license all of a co-written work.

One might wonder whether the CRO didn’t know about the existence of these ASCAP and BMI songwriter agreements. That might be a possibility except for the fact that on the very next page the CRO cites to the very ASCAP and BMI writer agreements I cite in the previous paragraph!

In fact, the prevarication gets even more blatant. The CRO states, “The practice of divided ownership and fractional licensing is also consistent with the ASCAP and BMI membership agreements and related documents. For example, the grant of rights by a writer or publisher to BMI extends only to rights “own[ed]” or “acquire[d]” by the member to perform “any part or all of the [member’s] Works.” The BMI writer agreement further provides that, upon termination of the agreement, if BMI “continue[s] to license your interest in any Work,” it will continue to make payments. While the ASCAP membership agreements are less clear on these points, ASCAP’s title registration system is indicative of fractional administration of works.” (p. 16)

The entire paragraph 4(a) of the BMI agreement reads, “Except as otherwise provided herein, you hereby grant to us for the Period: (a) All the rights that you own or acquire publicly to perform, and to license others to perform, anywhere in the world, in any and all places and in any and all media, now known or which hereafter may be developed, any part or all of the Works.” Thus, the grant specifically provides BMI with the right to license all of the “Work” that was written or co-written by the songwriter. You will also note that “Works” is a defined term, the definition of which is, “[(1)(b)](i) All musical compositions (including the musical segments and individual compositions written for a dramatic or dramatico-musical work) composed by you alone or with one or more co-writers during the Period.” Read together, it is clear that a BMI songwriter is granting to BMI the right to license all of a Work, even if that Work was written by more than that BMI songwriter.

The ASCAP songwriter agreement, far from being “less clear” on these points is, in fact, a model of clarity, making the CRO’s claims to the contrary that much more egregious. Section 1 of ASCAP’s Membership Agreement reads as follows:

“The [songwriter] grants to the [ASCAP] for the term hereof, the right to license non-dramatic public performances (as hereinafter defined), of each musical work:

Of which the[songwriter] is a copyright proprietor; or

Which the[songwriter], alone, or jointly, or in collaboration with others, wrote, composed, published, acquired or owned; or

In which the[songwriter] now has any right, title, interest or control whatsoever, in whole or in part; or

Which hereafter, during the term hereof, may be written, composed, acquired, owned, published or copyrighted by the[songwriter], alone, jointly or in collaboration with others; or

In which the[songwriter] may hereafter, during the term hereof, have any right, title, interest or control, whatsoever, in whole or in part.

The right to license the public performance of every such musical work shall be deemed granted to the [ASCAP] by this instrument for the term hereof, immediately upon the work being written, composed, acquired, owned, published or copyrighted.

The CRO’s decision to simply ignore all of this language, including the eight seperate instances in which joint authorship and/or partial ownership are specifically included in the works the member is dedicating to the ASCAP repertoire is, frankly, shocking.

The rest of the CRO letter is a recitation of the parade of horribles that will befall songwriters, publishers and PROs if the consent decrees are interpreted in a way that requires 100% licensing. Markedly absent from this parade are the reasons why licensees should bear the burden of costs associated with fixing these (potential) problems. For example, the CRO notes that,

[I]t appears that neither ASCAP nor BMI has in place a mechanism that would allow the PRO to track and account for payments to non-members on a broad basis, and that there would be significant obstacles to achieving this. In many cases, the PRO may not have current or reliable information concerning the current co-owners of a particular song, including how to contact them—let alone heirs or assignees. As the Office explained in its recent report, the music licensing marketplace is characterized by a lack of uniform data concerning song ownership and licensing. The ASCAP and BMI royalty payment systems presumably would need to be significantly enlarged (and largely crossduplicated) to generate payments for a multitude of non-members. Equally if not more overwhelming would be a scenario whereby individual authors and publishers receiving 100- percent payments from ASCAP and BMI would need to track down and pay royalties to coowners themselves. (Views p. 21)

To which a licensee might reasonably respond, “so?” The publishers and PROs chose to allow this system of individual fractional ownership coupled with 100% collective blanket licensing to evolve over the last 50 years. The same parties cannot now be heard to complain that they don’t like the system they’ve created and want someone else to pay to clean it up. The licensee community is certainly is a far less advantageous position to know how to contact all of the current owners of a particular song or make payments thereto.

More fundamentally, this entire exercise is being driven by the publishers’ desire to partially withdraw their performance rights from ASCAP and BMI to “hold up” digital music services for higher fees. This PRO system was able to evolve over the past 50 years precisely because the publishers viewed collective licensing as better than individual licensing. But collective licensing — which is otherwise a violation of antitrust law — comes at a cost. Now that the bill has come due, it appears that the songwriters, publishers and PROs want someone else to pay it.

Copyright Office – 100 Percent Licensing

 

  1.  The CRO states that in arriving at its conclusions it “reviewed representative contractual provisions between and among songwriters and music publishers.” p. 4. In the accompanying footnote, the CRO states “Of course, the Office’s review of industry contractual provisions could not be comprehensive. It is worth noting, however, that our examination of representative clauses in songwriter and publisher agreements from various sources revealed numerous references to fractional ownership and licensing and no provisions that appeared inconsistent with these practices.” fn. 14.

    “a provision reviewed by the Office addressed the interests of three songwriters, one affiliated with ASCAP, who received a 50 percent share of the copyright, and two affiliated with BMI, who each received a 25 percent share.” pp. 9-10.

    “one contractual provision reviewed by the Office awarded one of three co-writers a one-third share of the copyright, but prohibited that co-writer from granting even a partial (i.e., fractional) license in the work.” (p. 10).

    “one representative provision in a copublishing agreement reviewed by the Office stated specifically that where the songwriter “writes, owns, and/or controls less than one hundred percent (100%)” of a musical composition, the songwriter was granting the publisher rights only to the writer’s “fractional share” of the work. In another agreement, the songwriter granted rights to existing and future compositions only “to the extent written, composed, created, owned, controlled and/or acquired” by the songwriter.” (p. 11)

    one coadministration clause applicable to two songwriters reviewed by the Office provided that the parties would enter into agreements “solely with respect” to their respective interests and that all proceeds were to be paid “directly to (Party A) and (Party B) in the shares set forth (in the agreement).” (p. 12)

  2.  The CRO also cites the submission of the National Academy of Recording Arts & Sciences, whose submission was jointly prepared with 11 songwriters. Even including the NARAS, the citations listed by the CRO are anything but representative of the statements submitted to the DOJ.

Stairway to Heaven or Road to Nowhere?

Randy California (born Randall Wolfe) was a singer songwriter and original member of the 60s psychedelic rock band Spirit, best known for “I Got a Line on You,” from the band’s second album.

A portion of the intro to the song “Taurus,” an obscure track on Spirit’s eponymous 1968 recording, bears a resemblance to introduction of “Stairway to Heaven,” the 1971 release by Led Zeppelin that is counted among Rolling Stone magazine’s 500 greatest songs of all time.

You can listen to “Taurus” and decide for yourself.

What is more interesting to me than whether Jimmy Page lifted the intro of one of the most famous songs in rock history from one of its most obscure is an argument in Led Zeppelin’s motion to dismiss, which alleges that Randy California isn’t the “author” of the song and, therefore, lacks standing to sue. The argument–which appears quite strong–is based on Randy’s first songwriting agreement, executed in 1968 when he was only 16. That agreement, which is provided below, defines the relationship between Hollenbeck Music (the publishing company affiliated with Ole Records, to which Spirit was signed for an exclusive recording contract) thusly: “Publisher … employs Writer to render his services as a songwriter and composer …” This language appears to be classic “work made for hire” under which the Copyright Act treats the employer as the author of the copyrighted work. (See Sec. 101, defining a “work made for hire” as “a work prepared by an employee within the scope of his or her employment.”). Said differently, in this context the “work made for hire” doctrine treats the copyright in the song “Taurus” as if Hollenbeck had actually written the notes in question. Under the Copyright Act’s Sec. 501(b), only the legal or beneficial owner of an exclusive right under copyright has standing to sue for its infringement. Importantly, however, “[a] creator of a work made for hire does not qualify as a beneficial owner even if he or she is entitled to royalties.” Ray Charles Found. v. Robinson, 795 F.3d 1109, 1116 n. 7 (9th Cir. 2015). This appears to be fatal to Randy’s heirs attempt to sue Led Zeppelin for infringement!

ASIDE: If Jimmy Page did copy the intro to Stairway to Heaven, then Hollenbeck may have a claim for infringement, so succeeding on this motion to dismiss is not necessarily a lasting victory for Led Zeppelin.

The exclusive songwriter agreement is here.

Stairway to Heaven (Songwriter Contract)

The motion to dismiss is here.

Stairway to Heaven MTD (2!25!16)

Judge Shakes Off Swift Lawsuit

District Judge Gail Standish (C.D. Cal.) has issued a whimsical opinion dismissing without prejudice a songwriter’s claim that Taylor Swift’s “Shake It Off” copied lyrics from his song “Haters Gone Hate.” In her conclusion, Judge Standish quotes several of Swift’s songs:

At present, the Court is not saying that Braham can never, ever, ever get his case back in court. But, for now, we have got problems, and the Court is not sure Braham can solve them. As currently drafted, the Complaint has a blank space— one that requires Braham to do more than write his name. And, upon consideration of the Court’s explanation in Part II, Braham may discover that mere pleading BandAids will not fix the bullet holes in his case. At least for the moment, Defendants have shaken off this lawsuit.

While a nice humorous twist on the often staid language of a federal district court opinion, I did not find this language the most interesting — from a copyright infringement standpoint. Instead, I was drawn to the discussion of what constitutes protectable expression; i.e., sufficiently original. After a brief discussion of internet searches for lyrics containing “haters gonna hate” and/or “players gonna play,” Judge Standish notes, somewhat ominously, that “Braham should consider whether filing a new complaint claiming that his lyrics “Players Gonna Play” and “Haters Gonna Hate” are original would conflict with his duty under Federal Rule of Civil Procedure 11 not to make factually or legally baseless claims.”

Judge Standish’s opinion is below.

 

Brahman v Satv (Taylor Swift Lyrics) (CD Cal. 11-11-15)

Happy or Unhappy?

I recently came across two interesting articles that discuss whether the Copyright Act preempts state or common law performance rights in sound recordings fixed prior to 1972.

Ostensibly, Prof. Pulsinelli’s article is focused on the Legacy Sound Recording Protection Act (the “LSRPA”), which was introduced in the last session of the Tennessee state legislature. The LSRPA would grant owners of Pre 72 Recordings essentially the same rights in Tennessee that owners of sound recordings made after 1972 enjoy under the federal Copyright Act.

Prof. Ross’ article takes as its jumping off point two recent federal district court decisions, one in California and another in New York, which found an exclusive right in Pre 72 Recordings. See Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. CV 13-5693, 2014 WL 4725382 (C.D. Cal. Sept. 22, 2014); Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13 Civ. 5784, 2014 WL 7172270 (S.D.N.Y. Nov. 14, 2014).

Both articles focus analysis on whether state laws, whether statutory or common, that attempt to create a performance right in Pre 72 Recordings are preempted by the Copyright Act. Both articles begin by noting that sound recordings did not enjoy any federal copyright protection until the enactment of the Sound Recording Act of 1971, which established a reproduction and distribution right—but not a performance right—for sound recording initially fixed after February 15, 1972. When Congress completed its major rewrite of the Copyright Act in 1976, it included a very broad preemption clause embodied in § 301(a), which effectively preempts all state laws purporting to grant any right “equivalent to” any right provided in § 106. Not wanting to displace the reproduction and distribution rights in Pre 72 Recordings that many states historically provided to discourage record piracy, a.k.a. “bootlegging”, § 301(c) then goes on to exempt Pre 72 Recordings from the general preemption of § 301(a).

The ‘general’ preemption language in § 301(a) provides:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

The ‘exception’ to the general preemption language in § 301(c) provides:

With respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2067. The preemptive provisions of subsection (a) shall apply to any such rights and remedies pertaining to any cause of action arising from undertakings commenced on and after February 15, 2067. Notwithstanding the provisions of section 303, no sound recording fixed before February 15, 1972, shall be subject to copyright under this title before, on, or after February 15, 2067.

In order to determine whether performance rights for Pre 72 Recordings are preempted by the Copyright Act, the authors describe preemption and its primary forms. Preemption exists because of the Supremacy Clause of the Constitution (Article IV, Clause 2). There are two broad categories of preemption: express preemption and implied preemption. Express preemption occurs when the applicable statutory scheme contains a provision that expressly states that the federal statute is meant to preempt state law in a particular area. If the federal law does not contain an express preemption provision, the state law may nevertheless violate the Supremacy Clause under the theory of implied preemption if the federal statutory scheme is so detailed and pervasive that it “occupies the field,” leaving no room for state law to operate (so-called “field preemption”) or the state statute “‘stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.’” (so-called “conflict preemption”). The fact that a statute contains an express preemption does not mean that the statute cannot still be found invalid as impliedly preempted.

The most important Supreme Court guidance on preemption in the context of conflict between state and federal law is Goldstein v. California (412 U.S. 546 (1973)). In Goldstein, the Court considered the validity of a California law criminalizing record piracy; i.e., the unauthorized reproduction and distribution of sound recordings. The timing of the case is quite complicated: it involves sound recording fixed prior to February 15, 1972, arrived at the Supreme Court after the passage of the SRA in 1971, but before the passage of the 1976 Copyright Act that added the express preemption provisions. In Goldstein, the Supreme Court upheld the California law as a valid exercise of the state’s power, finding that the Copyright Act left sound recordings “unattended,” and thus states could choose to protect them.

Prof. Pulsinelli quotes the Goldstein Court for the proposition that the Copyright Act itself is a reflection of Congress’ interest in setting broad, national policy around protecting copyrighted works, stating “[t]he objective of the Copyright Clause was clearly to facilitate the granting of rights national in scope.” Prof. Pulsinelli also quotes the House Report accompanying the 1976 Act, “One of the fundamental purposes behind the copyright clause of the Constitution … was to promote national uniformity and to avoid the practical difficulties of determining and enforcing an author’s rights under the differing laws and in the separate courts of the various States. Today, when the methods for dissemination of an author’s work are incomparably broader and faster than they were in 1789, national uniformity in copyright protection is even more essential than it was then to carry out the constitutional intent.” Performance rights in particular implicate the problems of varying state regulation, as noted by a variety of courts and commentators.

Prof. Pulsinelli argues that “At least theoretically, the Copyright Act is sufficiently comprehensive as to “occupy the field” and leave no room for the states to operate.238 However, given the strong express preemption provided in § 301(a), such an analysis is generally unnecessary—any law that escapes express preemption because it falls outside the scope of § 301(a) is likely also to fall outside the “field” occupied by the statutory scheme.” Instead, he argues that state law protections of performance rights in sound recordings is likely preempted under the “conflict preemption” doctrine.

 

Pre 72 – Unhappy Together (Ross)

Pre 72 – Happy Together (Pulsinelli) by Christopher S. Harrison

‘Oh’ No You Don’t!

Jay Z won a motion to dismiss a copyright infringement case alleging that his alleged sampling and use of the word “oh” in an audio recording and music video entitled Run This Town. Jay Z allegedly sampled the recorded “oh” from the recording Hook &Sling Part I Eddie Bo and the Soul Finders. The “oh” in question appears once in Hook & Sling but allegedly appears 42 times in Run This Town. In a direct refutation of the Bridgeport Music case from the 6th Circuit, the SDNY court relied on 2nd Circuit precedent that distinguishes between “factual copying” and “actionable copying.” The former “requires only the fact that the infringing work copies something from the copyrighted work; the latter . . . requires that the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement . . . has occurred.” Judge Kaplan concluded that “In arguing that the Court should find qualitative significance simply because defendants have actually copied its work, plaintiff improperly conflates factual copying and actionable copying.”

Tufamerica v WB Music (Jay Z 'Oh' Copyright Infringement)

Don’t Fence Me In…

A magistrate judge has recommended that the lawsuit brought by VerStandig Broadcasting should be dismissed on jurisdictional grounds; i.e., for lack of Article III standing. In finding that the plaintiffs’ declaratory action failed to raise a justiciable controversy, the judge found that the issue of copyright liability is not “traceable” to SoundExchange because SoundExchange does not own or enforce copyrights Verstandig might infringe. As the judge stated: “Any dispute that may arise in that scenario is between the copyright owner and the broadcaster. Thus, the copyright owners themselves, who are ‘not party to this litigation, must act’ (or not act, as the case may be) in order for this particular injury to be cured.”

WTGD 105.1FM v. SoundExchange – Magistrate Report by Legal Writer

Don’t Fence Me In

An interesting lawsuit was recently filed by a group of radio stations over the digital retransmissions of terrestrial broadcasts.  VerStandig Broadcasting filed a declaratory judgment action against sound recording performance royalty collection society SoundExchange over a specific exception in the Copyright Act that limits the exclusive public performance right in sound recordings to be exclude retransmissions of AM/FM broadcasts within 150 miles of the original over-the-air transmission.  Specifically, Section 114(d) limits the scope of a copyright owner’s exclusive right in the public performance of sound recordings by means of a digital audio transmission.

The performance of a sound recording publicly by means of a digital audio transmission, other than as part of an interactive service, is not an infringement … if the performance is part of … a retransmission of a nonsubscription broadcast transmission: Provided, That, in the case of a retransmission of a radio station’s broadcast transmission … the radio station’s broadcast transmission is not willfully or repeatedly retransmitted more than a radius of 150 miles from the site of the radio broadcast transmitter … . 17 U.S.C. § 114(d)(1)(B)(i).

VerStandig claims that when Congress created the retransmission exception, “geo-fencing” technology, which is technology that “determines a recipient’s physical location by comparing a receiving computer’s IP address, WiFi and GSM access point, GPS coordinates, or some combination against a real world map of those virtual addresses,” wasn’t available to limit the recipients of AM/FM broadcasters’ retransmissions.  According to VerStandig, “When data is geo-fenced, only recipients physically located within the authorized locations can access the data over the Internet. Recipients who are physically located outside the geo-fence who attempt to access the data over the Internet receive a message explaining that the data is unavailable.”  Today, according to VerStandig, “Geo-fencing is a proven technology. It is used by the gaming industry to restrict access to online gambling to recipients physically located in jurisdictions where gaming is legal. And it is used by marketers for the direct advertising of products to persons physically located in targeted markets.”

VerStandig sent SoundExchange a letter notifying SoundExchange of VerStandig’s intention to stop paying royalties on performances of retransmissions within 150 miles of the original transmission.  SoundExchange apparently responded by stating that “the 150-mile exemption applies only ‘to retransmissions of broadcasts by cable systems to their subscribers or retransmissions by broadcasters over the air’ and that if the 150-mile exemption ‘did apply to [VerStandig’s] proposed simulcasting’ [VerStandig] would nevertheless need to pay royalties for copies or reproductions of the sound recordings in the FM broadcasts that it live streams.”

With respect to the first argument, the Senate Report on the Digital Performance in Sound Recordings Act appears to reject this conclusion.  The Senate Report says

Section 114(d)(1)(B)(i) (retransmission of radio signals within 150-
mile radius of transmitter)
Under this provision, retransmissions of a radio station within a
150-mile radius of the site of that station’s transmitter are exempt,
whether retransmitted on a subscription or a nonsubscription
basis, provided that they are not part of an interactive service.
This provision does not, however, exempt the willful or repeated
retransmission of a radio station’s broadcast transmission more
than a 150-mile radius from the radio station’s transmitter. The
Committee recognizes that the 150-mile limit could serve as a dangerous
trap for the uninitiated or inattentive. To ensure against
that possibility, section 114(d)(1)(B)(i) provides that a retransmission
beyond the 150-mile radius will fall outside the exemption
only if the retransmission is willful or repeated. The Committee
intends the phrase ‘‘willful or repeated’’ to be understood in
the same way that phrase was used in section 111 of the Act, as
explained in the House Report on the 1976 Act, H. Rept. 1476, 94th
Cong., 2d sess. 93 (1976).
Pursuant to section 114(d)(1)(B)(i)(I), the 150-mile limitation does
not apply when a nonsubscription broadcast transmission by an
FCC-licensed station is retransmitted on a nonsubscription basis by
an FCC-licensed terrestrial broadcast station, terrestrial translator,
or terrestrial repeater. In other words, a radio station’s broadcast
transmission may be retransmitted by another FCC-licensed broadcast
station (or translator or repeater) on a nonsubscription basis
without regard to the 150-mile restriction.

In addition to appearing to generally support VerStandig’s position, the highlighted language appears to capture TuneIn and iHeartRadio’s aggregation of simulcast transmissions.  As I understand it, the bulk of listening of retransmitted terrestrial broadcasts on services like iHeart are people listening to their old home-town station in their new town; e.g., I can listen to KDKA from Pittsburgh here in Oakland.

With respect to SoundExchange’s second argument (i.e., needing a license to make reproductions), this may run head-long into a very interesting fair use defense.  If Congress intended radio broadcasters to retransmit digitally their analog signals without paying a royalty under Sec. 114, could Congress have intended for the record labels to be able to demand a royalty (or sue for statutory damages for copyright infringement) for making ephemeral copies under Sec. 112?  My gut tells me that can’t be what Congress intended, but that might not matter is the law is otherwise unambiguous on this point.

The Complaint is here.