Copyright Case And Legislation

COPYRIGHT CASES AND LEGISLATION AFFECTING THE MUSIC INDUSTRY BY THOMAS R. LEAVENS CHICAGO, ILLINOIS

I.

OWNERSHIP OF COPYRIGHT A.

Acquisition and duration of rights.

Federal copyright protection in a musical composition or sound recording arises immediate and automatically upon the creation of that work.

17 U.S.C. § 302(a)

(hereinafter, unless otherwise indicated, all statutory citations are to the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq.). “A work is ‘created’ when it is fixed in a copy or phonorecord for the first time.” § 101. “A work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration.” § 101. Registration with the Copyright Office of any claim to a copyright in a composition or sound recording is not a condition to copyright protection. § 408(a). The term of copyright protection for works created after January 1, 1978, is the life of the author, plus 70 years. § 302(a). In the case of a joint work that was prepared other than as a work-for-hire, the period is the life of the last survivor, plus 70 years. § 302(b). B.

Work-for-hire.

The copyright in a composition or a recording prepared “in-house” may belong to the person for whom the composition or recording was prepared if the work was prepared

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(1) by an employee within the scope of his employment or (2) was specially ordered or commissioned for use as a part of a motion picture or other audio-visual work if the parties so agree in writing. §§ 101(b) and 201. See, e.g., Picture Music, Inc. v. Bourne, Inc., 314 F. Supp. 640 (S.D.N.Y. 1970) (employee lyricist of music publisher obtained no interest in written lyrics). Whether one is an “employee” will depend principally on the general common law test of agency and control. Community For Creative Non-Violence v. Reid, 490 U.S. 730 (1989). A person may be an employee even if his payment is in the form of an advance on royalties. Fred Fisher Music Co. v. Leo Feist, Inc., 55 F. Supp. 359 (S.D.N.Y. 1944). The term of copyright protection for a work made for hire is the shorter of 95 years from publication or 120 years from creation. § 302(c). In 1999, Congress amended the Copyright Act to specifically include sound recordings within the classes of works that could be created within a work-for-hire arrangement, as the original Copyright Act of 1976 does not include sound recordings within the definition of specially ordered or commissioned works. Intellectual Property and Communications Omnibus Reform Act of 1999, Pub. L. No. 106-113, app. I, § 1011(d), 113 Stat. 1501, 1501A-554. After a firestorm of dissent from the artistic community, this revision was repealed retroactively, without prejudice to either artists or the record companies. Work Made For Hire and Copyright Corrections Act of 2000, Pub. L. No. 106-379, 114 Stat. 1444. Courts have said that the contribution of a recording engineer, co-producer, and mixer fall within ambit of sound recording authorship. Diamond v. Gillis, 357 F. Supp.2d 1003 (E.D. Mich. 2005). C.

Scope of claim.

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Copyright ownership attaches to what is original with an author. § 102(a). It is irrelevant whether an author’s contribution to a composition or recording is new, novel, or unique. Vargas v. Pfizer, Inc., 418 F. Supp.2d 369 (S.D.N.Y. 2005). The test is only whether the contribution originated with the author. If the author’s effort to create a work is independent, the work will be accorded copyright protection no matter how similar it may be to a prior work. Sheldon v. Metro Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936)(“[I]f by some magic a man who had never known it were to compose anew Keat’s Ode on a Grecian Urn, he would be an ‘author’, and, if he copyrighted it, others might not copy that poem, though they might of course copy Keat’s”). Also, copyright protection only extends to the particular expression fixed in a composition which is original with the author. Copyright does not protect any idea, concept, plan, or discovery which might be revealed in the expression. § 102(b). Further, an author who has rearranged or adapted a particular composition or created a compilation of separate works, such as a song folio or revue, gains copyright protection only in the original material, such as the selection and sequence of compositions, contributed by the author to the rearrangement, adaptation or compilation. § 103(b). As a result, more than one author can compose a song about a certain event or idea (Stratchborneo v. Arc Music Corp., 357 F. Supp. 1393 (S.D.N.Y. 1973)) or take a melody or verse from the public domain and express it in his own original fashion. Plymouth Music Co. v. Magnus Organ Corp., 456 F. Supp. 676 (S.D.N.Y. 1978); Scott v. Paramount Pictures Corp., 449 F. Supp. 518 (D.D.C. 1978); aff’d, 607 F.2d 494 (D.C. Cir. 1979); Whitney v. Ross Jungnickel, Inc., 43 F. Supp. 744 (S.D.N.Y. 1960); Newcomb v. Young, 43 F. Supp. 744 (S.D.N.Y. 1960); Withol v. Wells, 231 F.2d 550 (7th Cir. 1956) (version of Russian folksong

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protected). However, to gain protection in an arrangement of a work already in the public domain, the author’s contribution must be more than a trivial addition or variation. Smith v. George Muelebach Brewing Co., 140 F. Supp. 729 (W.D. Mo. 1956). Finally, the scope of copyright in a sound recording is limited to the actual sounds fixed in the recording. So-called “sound-alike” recordings, if independently fixed, do not infringe the copyright in prior recordings no matter how closely the prior recordings are imitated or simulated. § 114(b). D.

Collaboration.

Whether co-authors will separately own or control their respective contributions to a song or recording or whether they will co-own the song or recording as a single unitary work is a question of intention. If their intention is that their contributions be merged, or they have worked in furtherance of a preconcerted common design, the composition or recording will be considered a joint work which they own as co-owners. §§ 101 and 201(a). This intention must be present at the time the work is co-authored or at the time the author makes his contribution, not later. H. Rep. No. 1476, 94 th Cong., 2d Sess 120 (1976). See also Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406 (2d Cir. 1946). Lyricists and composers involved with dramatic productions often expressly agree that their respective contributions to a stage play will not merge until the play has been performed for a certain minimum number of performances, thereby permitting each contributor to use his material in another situation if the play is not produced or is produced unsuccessfully. E.

Assignments.

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An author may transfer complete ownership of a copyright or any exclusive rights in the copyrighted work. § 201(d). However, all transfers of copyright, other than by operation of law, must be in writing. § 204. Papa’s-June Music, Inc. v. McLean, 921 F. Supp. 1154 (S.D.N.Y. 1996). A non-exclusive license of any copyright does not transfer ownership. § 101. It is thus possible for a composer, for example, to sell, rather than license, stage or screen rights to his composition while retaining all other rights. The remedies available to an author in the event a transferee defaults is an important consideration in the decision whether to license or sell rights. Failure to pay royalties may give rise to an action for damages, but might not be sufficient grounds for a court to order rescission of the contract and to reassign the copyright to the author. See, e.g., Nolan v. Williamson Music, Inc., 300 F. Supp. 1311 (S.D.N.Y. 1969). For this reason, songwriter agreements frequently provide that, in the event a commercial recording of a composition is not secured by the publisher within a certain period or royalties are not paid, all right shall be reassigned to the composer. See, e.g., The Songwriters Guild of America Popular Songwriters Contract ¶¶ 6(a), 8, and 12 (1978). D.

Termmination. 1.

The Copyright Act permits an author or his heirs to terminate any

transfer or license of a copyright, or any right under a copyright, made by that author for a work other than a work made for hire. §§ 203 and 304(c). This right of termination is an absolute right which is unaffected by any agreement to the contrary. §§ 203(a)(5) and 304(c)(5). In the case of a grant executed by the author on or after January 1, 1978, termination may be effected at any time during a five year period after thirty-five years from execution of the grant, or, if the grant covers the right of publication, the earlier of

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thirty-five years from publication or forty years from execution of the grant. § 304(c)(3). This latter provision in effect gives an author or his heirs the right to renegotiate for the use of his work for the additional 19 year period added to the renewal term of works copyrighted under the Copyright Act of 1090 by the Copyright Act of 1976. The Copyright Act describes those eligible to exercise the termination right and the procedures for and consequences of effecting termination. 2.

An important exception to the right of termination is that derivative

works which are prepared under the authority of a grant may continue to be utilized according to the terms of that grant after termination. §§ 203 (b)(1) and 304(c)(6)(A). In the case of Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985), the Supreme Court held that a copyright assignee that issued a pre-termination grant to a third party to prepare a derivative work (in this case a music publisher, acquiring rights from the songwriter by assignment and thereafter issuing a mechanical license to a record company) could continue to receive the royalty income derived from such grant after the original grant from the songwriter to the publisher had been terminated. In Woods v. Bourne Co., 60 F. 3d 978 (2d Cir. 1995), the court held that a publisher was entitled to continue to receive royalties from post-termination performances of musical arrangements contained within an audiovisual work, regardless of whether the musical arrangement would qualify independently as a derivative work. Further clarification with respect to the termination right was provided by the court in Fred Ahlert Music Corp. v. Warner/Chappell Music, Inc., 155 F.3d 17 (2d Cir. 1998), which held that the author, and not the publisher, controlled the right to authorize new uses of a pre-termination derivative work after termination, in this case the post-termination mechanical licensing of the song “Bye Bye

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Blackbird” (as recorded by Joe Cocker prior to termination) in the soundtrack album for the movie “Sleepless In Seattle”. II.

EXPLOITATION OF RIGHTS A.

Rights of Copyright Owners. The exclusive rights of a copyright owner of

a musical composition or sound recording are set forth in § 106: (1)

to reproduce the copyrighted work in copies or phonorecords;

(2)

to prepare derivative works based upon the copyrighted work;

(3)

to distribute copies or phonorecords of the copyright work to the

public by sale or other transfer of ownership, or by rental, lease, or lending; (4)

in the case of literary, musical, dramatic, and choreographic works,

pantomimes, and motion picture and other audio-visual works, to perform the copyrighted work publicly; and (5)

in the case of literary, musical, dramatic, and choreographic works,

pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audio-visual work, to display the copyrighted work publicly. In addition, the anti-bootlegging provisions of the Uruguay Round Agreements Act of 1994 (Act of Dec. 8, 1994, Pub. L. No. 103-465, Sec. 512, 108 Stat. 4809), which are found at § 1101(a) of the Act, bar the unconsented recording, transmission, sale, or rental of copies of live musical performances.

Corresponding criminal liability is

codified at 18 U.S.C. 2319A. These provisions have been enforced against a constitutional challenge. Kiss Catalog v. Passport Intern. Productions, 405 F. Supp.2d 1169 (C.D. Cal. 2005).

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The foregoing rights of copyright owners are made subject to exceptions set forth in §§ 107 through 118 of the Copyright Act which are described more particularly below. B.

Right of Performance. 1.

Background. Copyright owners were first granted the exclusive

right to perform their musical compositions publicly for profit under the Copyright Act of 1909. 17 U.S.C. § 1(e)(1970). The American Society of Composers, Authors and Publishers (ASCAP) was formed in 1914 to enforce this right for composers, and the Society of European Stage Authors & Composers (SESAC) and Broadcast Music, Inc. (BMI) were formed in 1930 and 1939, respectively, for the same purpose. Since 1941, ACSAP and BMI have operated under consent decrees which, inter alia, limit their authority to the non-exclusive licensing of non-dramatic performances and establish procedures for setting license rates and conditions. United States v. ASCAP, 1940-1943 Trade Cas. ¶56,104 (S.D.N.Y. 1941); United States v. ASCAP, 1950-1951 Trade Cas. ¶62,595 (S.D.N.Y. 1950); United States v. BMI, 1940-1943 Trade Cas. ¶56,096 (E.D.Wis. 1941); United States v. BMI, 1966 Trade Cas. ¶71,941 (S.D.N.Y. 1966); United States v. Broadcast Music, Inc., 1996-1 Trade Cas. ¶71,378 (S.D.N.Y. 1994).

These three

organizations now license for composers, on a non-exclusive basis, the non-dramatic performance rights in almost all domestic compositions to commercial radio and television stations, restaurants, clubs, on-line music services, and other such establishments usually through blanket licenses of their entire repertoire. Until 1948, ASCAP also licensed theater operators and exhibitors for the performance of music in motion pictures. That practice was ended by court order in the case of Alden-Rochelle, Inc. v. ACSAP, 80 F. Supp. 888 (S.D.N.Y. 1948). The right to perform music in motion

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pictures by way of theatrical exhibition is now acquired directly by motion picture producers.

The performance rights to the same music when the motion picture is

transmitted by other means, such as by broadcast or satellite, are still controlled by the performing rights organizations. 2.

What constitutes “non-dramatic performances”? (a)

It has long been held that performance of music in such

places as hotels (Remick Music Corp. v. Interstate Hotel Co., 58 F. Supp. 523 (D. Neb. 1944), aff’d, 157 F.2d 744 (8th Cir. 1946), cert. denied, 329 U.S. 809 (1947)) and restaurants (Leo Feist, Inc. v. Lew Tendler Tavern, Inc., 267 F.2d 494 (3d Cir. 1959)), on radio and television (Buck v. Jewell-LaSalle Realty Co., 283 U.S. 191 (1931)) by means of the playing of musical recordings (Associated Music Publishers, Inc. v. Debs Memorial Radio Fund, Inc., 141 F.2d 852 (2d Cir.), cert. denied, 323 U.S. 766 (1944)), and staging karaoke performances (Morganactive Songs v. K&M Fox Inc., 77 U.S.P.Q.2d 1064 (S.D. Ind. 2005) constituted a performance for which the copyright owner was entitled to compensation. On the other hand, playing a radio broadcast to the public in a commercial establishment by means of “a single receiving apparatus of a kind commonly used in private homes” is not a performance of music for which payment is due under an ASCAP, BMI, or SESAC license unless there is a charge to see or hear the transmission or the transmissions is retransmitted.

§ 110(5).

The limits of this exemption are

described in Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975); Sailor Music v. Gap Stores, Inc., 516 F. Supp. 923 (S.D.N.Y. 1981), aff’d, 668 F.2d 84 (2d Cir. 1981), cert. denied, 456 U.S. 945 (1982); Broadcast Music, Inc. v. United States Shoe Corp., 678 F.2d 816 (9th Cir. 1982), and Broadcast Music, Inc. v. Claire’s Boutique’s, Inc., 949 F.2d

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1482 (7th Cir. 1991), cert. denied, 504 U.S. 911 (1992). See also The Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) for an analysis of whether the transmission of audio-visual programming to a customer of Cablevision’s remote storage digital recording system comprised a public performance of such programming. In 1998, Congress passed the Fairness in Music Licensing Act (Act of October 27, 1998, Pub. L. No. 105-298, 112 Stat. 2827), essentially expanding the exemptions available to restaurants and other establishments from the requirements of obtaining public performance licenses from ASCAP, BMI, and SESAC. (b)

Whether a performance of a composition is non-dramatic

and is thus authorized under a grant of “small” performance rights from ASCAP, BMI, or SESAC or is dramatic and thus requires a separate grant of “grand” or dramatic rights from the author will depend on the amount of dialogue, scenery, costumes, stage business and other elements accompanying the composition which might constitute a story line or plot which is advanced by the performance of the composition. See Gershwin v. The Whole Thing Co., 208 U.S.P.Q. 557 (C.D. Cal. 1980); Robert Stigwood Group Limited v. Sperber, 457 F.2d 50 (2d Cir. 1972); Rice v. American Program Bureau, 446 F.2d 685 (2d Cir. 1971); April Productions v. Strand Enterprises, 221 F.2d 292 (2d Cir. 1955). 3.

Performance Rights in Sound Recordings.

While the owners of

compositions have been entitled since 1909 to compensation when recordings of their composition are publicly performed, neither the producers of those recordings nor the performers featured in the recordings were able to receive any payment for such performance until the passage of the Digital Performance Right In Sound Recordings Act in 1995, which

added § 106(6) to the Copyright Act giving the owners of sound

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recording copyrights the right to publicly perform such sound recordings by means of digital audio transmissions (which at the time were principally digital cable transmissions). Act of Nov. 1, 1995, Pub. L. No. 104-39, Sec. 1, 109 Stat. 336. Three years later, Congress passed the Digital Millennium Copyright Act (“DMCA”)(Act of October 28, 1998, Pub. L. No. 105-304, Sec. 405(a), 112 Stat. 2860), which among other provisions amended Section 114 of the Copyright Act to provide a compulsory license of such performance right for non-interactive digital audio transmissions (§ 114(d)(2)), or webcasting. C.

Synchronization Rights.

The right of musical composition owners to

control the right to have their compositions reproduced in timed sequence in an audiovisual work is derived from the owner’s exclusive right of reproduction. § 106(1). Even if the audiovisual work itself is in the public domain, one who commercially reproduces the public domain work can be subject to an obligation to license the music incorporated in the work. Maljack Productions, Inc. v. Good Times Home Video Corp., 81 F.3d 881 (9th Cir. 1996). The sound recording reproduction right (§ 114(b)) also includes a synchronization right, which requires a producer to obtain authorization from the owner of a sound recording before reproducing that recording in the soundtrack of an audiovisual work. Agee v. Paramount Communications, Inc., 59 F.3d 317 (2d Cir. 1995). D.

Restraint of Trade and Copyright Misuse. 1.

Background. The blanket licensing practices of ASCAP and BMI

have been challenged on antitrust and copyright misuse grounds in several actions, one of the most significant being Columbia Broadcasting System, Inc. v. American Society of Composers, Authors and Publishers, 400 F. Supp. 737 (S.D.N.Y. 1975), rev’d., 562 F.2d

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130 (2d Cir. 1977), rev’d sub nom, Broadcast Music, Inc. v. Columbia Broadcasting System, Inc., 441 U.S. 1 (1979), aff’d on remand, 620 F.2d 930 (2d Cir. 1980), cert. denied, 450 U.S. 970 (1981). In CBS, ASCAP’s and BMI’s blanket licenses were upheld as they are applied to broadcast television networks. The Second Circuit, examining the blanket licensing practices on remand under the rule of reason analysis ordered by the Supreme Court, found that blanket licenses with the networks did not unreasonably restrain competition because the networks had a reasonable alternative to such licenses. The Second Circuit found that the networks, in great part because of their market power, could realistically obtain music performance rights directly from copyright owners or program suppliers and consequently were not being forced to deal with ASCAP and BMI. Thus, reasoned the court, if there was a lack of price competition under the practice of blanket licensing it was the result of customer (network) preference. The ASCAP blanket licenses were also upheld with respect to local broadcasters in the case of Buffalo Broadcasting v. American Society of Composers, Authors and Publishers, 744 F.2d 917 (2d. Cir. 1984), cert. denied, 469 U.S. 1211 (1985), which involved as a class all local broadcast television stations except those stations owned and operated by the networks. Blanket licenses as applied to small establishments offering music, such as bars, nightclubs, and restaurants, also have been upheld (Broadcast Music, Inc. v. Moor-Law, Inc., 527 F. Supp. 758 (D. Del. 1981), aff’d, 691 F.2d 490 (3d Cir. 1982)), as have the blanket licensing practices of a single publisher of religious music granting performance and reprint rights to Catholic parishes, principally on the grounds that the churches had alternative grounds for acquiring the individual songs which were

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offered under the blanket license.

F.E.L. Publications, LTD. v. Catholic Bishop of

Chicago, 214 U.S.P.Q. 409 (7th Cir. 1982). The following are some opinions in rate-setting proceedings held pursuant to the terms of the consent decrees applicable to ASCAP and BMI: United States v. ASCAP (Capital Cities/ABC), 157 F.R.D. 173 (S.D.N.Y. 1994)(network television). United States v. ASCAP (Salem Media), 981 F. Supp. 199 (S.D.N.Y. 1997)(radio) United States v. Broadcast Music, Inc., 426 F.3d 91 (2d Cir. 2005)(MusicChoice) E.

Copyright Office Rate Adjudication. The Copyright Act of 1976 originally established the Copyright Royalty

Tribunal as a permanent body to set royalty rates for mechanical, cable television system secondary transmission, and jukebox compulsory licenses, and to distribute and settle controversies over the distribution of compulsory license royalty fees paid by cable television system and jukebox owners. In 1993, Congress passed the Copyright Royalty Tribunal Reform Act of 1993 (Public Law 103-198, 107 Stat. 2304) to replace the Copyright Royalty Tribunal with copyright arbitration royalty panels (or CARPs).

In

2004, Congress passed the Copyright Royalty and Distribution Reform Act of 2004 (Pub. L. No. 108-419, 118 Stat. 2341), which abolished the system of arbitrators and replaced it with three full-time Copyright Royalty Judges. See 17 U.S.C. §§ 801 through 805. 1.

Mechanical Licenses. The royalty rates set for mechanical

licenses under the compulsory licensing provisions of the Copyright Act of 1909

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eventually became the prevailing standard in most privately negotiated mechanical license agreements. This is so because both publishers and users of music knew that if they did not come to terms, the user could elect to pay to the publisher the statutory rate for a recording of the publisher’s song once a recording of that song had been released domestically. These rates were initially raised by the Copyright Act of 1976 and have been adjusted periodically since. The rates for physical phonorecords are currently set as follows: “For every phonorecord made and distributed on or after January 1, 2006, the royalty rate payable with respect to each work embodied in the phonorecord shall be either 9.1 cents, or 1.75 cents per minute of playing time or fraction thereof, whichever amount is larger.” Mechanical and Digital Phonorecord Delivery Rate Adjustment Proceeding, 63 Fed. Reg. 7288 (1998). 2.

Secondary Transmissions by Cable Television Systems.

The Copyright Act of 1976 established a compulsory license permitting cable television system owners to retransmit, for a fee paid to the Copyright Office, the broadcast signals of television stations. § 111(d). The Copyright Royalty Panel distributes the collected compulsory license fees principally to representative common agents, such as the Motion Picture Association of America, ASCAP, or BMI, which in turn redistribute the fees to the copyright owners whose compositions have been so retransmitted. The current rate is set forth at 37 C.F.R. § 258.4. 3.

Jukeboxes.

The Copyright Act of 1976 eliminated the

prior statutory exemption from copyright liability for music played on jukeboxes and established an compulsory license for jukebox operators. § 116. The Act also established an initial $8.00 annual fee for each machine to be paid to the Register of Copyright.

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Operation of a jukebox without paying this fee is a copyright infringement. Broadcast Music, Inc. v. Fox Amusement Company, Inc., 551 F. Supp. 104 (N.D. Ill. 1982). The current annual rate for each jukebox is $63.00. 37 C.F.R. § 254.3.

The collected

jukebox royalties are distributed to ASCAP, BMI, SESAC and any person unaffiliated with a performing rights society that proves entitlement. F.

Print Rights. While uncontested performances of a composition are

permitted under certain educational, religious or not-for-profit situations (§ 110), these exemptions “contemplate that the misused work is performed from memory or from legal copies”. F.E.L. Publications, LTD. v. Catholic Bishop of Chicago, 214 U.S.P.Q. 409, 411 (7th Cir. 1982). The right to reprint the composition itself as sheet music requires separate permission from the author. See, e.g., Nom Music, Inc. v. Kaslin, 227 F. Supp. 922 (S.D.N.Y. 1964), aff’d, 343 F.2d 198 (2d Cir. 1965). G.

First Sale Doctrine.

It is a long and well settled principle of copyright

law that a copyright owner, having sold an authorized reproduction of his work, cannot control, merely by virtue of his copyright, any subsequent use of the work, including any subsequent resale or rental. Bobbs-Merrill Co. v. Straus, 210 U.S. 1908); Independent News Co. v. Williams, 293 F.2d 510 (3d Cir. 1961). In the early 1980s, as home duplication technology improved and the compact disc was introduced, the business of renting prerecorded audio records appeared, for which the first sale doctrine appeared to provide legal authority. In response, Congress passed the Record Rental Amendment to the Copyright Act (Act of October 4, 1984, Pub. L. No. 98-450, 98 Stat. 1727) in 1984 to bar the rental of phonorecords. § 109(b)(1)(A). Efforts by record companies to restrict the resale of promotional recordings it supplies non-commercially have also failed on the

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basis of the first sale doctrine. UMG Recordings, Inc. v. Augusto, 555 F. Supp.2d 1055 (C.D. Cal. 2008). H.

Importation.

Under the Copyright Act of 1909, copyright owners had the

right to seek to bar importation of works which infringed their copyright. 17 U.S.C. § 109 (1970). Under the Copyright Act of 1976, this right was continued and significantly expanded to define the importation of any copyrighted works into the United States without the authority of the copyright owner as a copyright infringement subject to all the remedies provided for in the Act. § 602. Courts have held that the distribution and sale of imported records in the Unites States without the authority of the copyright owner, even though such records are lawfully acquired by the defendant, constitutes a copyright infringement. Columbia Broadcasting System, Inc. v. Scorpio Music Dist., 569 F. Supp. 47 (E.D. Pa. 1983), aff'd, 738 F.2d 421 (3d Cir. 1984). In Scorpio, the court specifically held that the first sale doctrine found at § 109(a) of the Copyright Act extended only to a “third party buyer of copies which have been legally manufactured and sold within the United States and not to purchasers of imports…”. 59 F. Supp. at 49. An infringement claim against wrongfully imported products can be pursued against any party in the distribution chain, not just the importer.

UMG Recordings, Inc. v. Disco Aztecha

Distributors, Inc., 446 F. Supp.2d 1164 (E.D. Ca. 2006). I.

The Problems of New Technology.

The

rapid

development

of

communications technology has consistently stressed copyright law. At a point when the Copyright Act of 1976 had only been in effect for six years, one court had already remarked that the statute was “enacted in the technological milieu of an earlier time.” Eastern Microwave Inc. v. Doubleday Sports Inc., 691 F.2d 125, 127 (2d Cir. 1982), cert.

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denied, 459 U.S. 1226 (1983).

Courts have been required to apply the Act to

circumstances and uses of works not necessarily considered by its drafters, and to interpret agreements that may or may not have anticipated newly developed means of exploitation. The shift in the balance between copyright protection and erosion that is caused by new communications technology was famously illustrated by the Supreme Court’s conclusion in the “Betamax Case” that home taping of broadcast television signals constitutes fair use and is thus not an infringement.

Sony Corp. v. Universal City

Studios, 464 U.S. 417 (1984), pet. for recon. denied, 465 U.S. 1112. The Court held that private, noncommercial time-shifting in the home was protected activity, and that “the sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial noninfringing uses....” Id. at 442. While the decision initially sparked a number of legislative proposals seeking to financially redress content owners, ultimately it provided the basis for the growth of the home electronics business that has been generally beneficial. The new format and marketing possibilities made possible by new communications technology has also caused practical business and licensing problems, as old agreements need to be interpreted to determine whether prior grants of rights include new applications of content. See, e.g., Reinhardt v. Wal-Mart Stores, Inc., 86 U.S.P.Q.2d 1496 (S.D.N.Y. 2008); Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481 (2d Cir. 1998) on remand, 53 U.S.P.Q. 2d 2021 (S.D.N.Y. 2000); Philadelphia Orchestra Ass’n v. Walt Disney Co., 821 F. Supp 341 (E.D. Pa 1993); Lee v. Walt Disney

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Co., (CA Super Ct. No. S039681); Platinum Rec. Co. v. Lucasfilm, Ltd., 566 F. Supp 226 (D.N.J. 1983)(license of songs for motion picture included marketing of motion picture in videocassettes and videodisc format). III.

COPYRIGHT INFRINGEMENT AND DEFENSES. The Copyright Act defines infringement simply as the violation of any rights of

the copyright owner provided by §§ 106 through 118.

§ 501(a).

To establish an

infringement claim, it is necessary to prove (1) ownership of a copyright and (2) copying by the defendant.

Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361

(1991). Copying is usually proved by establishing that (1) the defendant had access to the plaintiff’s work and (2) the copyrighted work and the accused work are substantially similar. 4 Melvin Nimmer & David Nimmer, Nimmer On Copyright, § 13.01[B] (1997). It is unnecessary to show intent to copy. Indeed, subconscious copying can result in liability. Three Boys Music Corp. V. Bolton, 212 F.3d 477 (9th Cir. 2000), cert. denied, 531 U.S. 1126 (2001); ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988 (2d Cir. 1983); Fred Fisher, Inc. v. Dillingham, 298 F. 145 (S.D.N.Y. 1924). The test for infringement is the same whether the two works appear in the same or different media. Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327 (9th Cir. 1983). The mere authorization of infringing activity does not constitute actionable infringement. Venegas-Hernandez v. Asociacion de Compositors y Editores de Musica Latino Americana, 424 F.3d 50 (1st Cir. 2005). The physical limitations to the creation of music are a consideration whenever an infringement claim is being weighed: The average composer who indulges in songs has a limited number of tones at his disposal. The combinations and permutations of the thirteen tones give the amazing total

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of 6,227,020,800 combinations, of which one a small fraction may be used ordinarily. Popular songs, in particular, lie within a very small radius. In a confined space, similarity of tone construction is inevitable. Practically every original idea the composer can think of has appeared somewhere before; it is a matter of probabilities, and every day the number of new possibilities grows less. Since it is generally agreed that the original fund of melodic ideas has been exhausted, serious composers, and others, have turned to the other important elements of music – harmony and rhythm. In the use and treatment of these there is a certain originality to be attained; but even that is necessarily limited by obvious physical limitations. Of the three essential elements – rhythm, harmony, and melody – the first two are usually emphasized, whereas the third is taken as a matter of course; and when it is impossible to invent new melodic ideas, the composer may display his skill in the means he uses to develop what theme he has. A.Shafter, Musical Copyright (2d ed. 1030), reprinted in A. Latman & R. Gorman, Copyright for the Eighties p. 328 (1981). -------With the relatively few musical intervals that exist and the vast amount of music in the public domain it is rash to infer that a sequence that may be found in a melody is copied from any particular song containing the same sequence, rather than taken from other sources. When we are confronted with the fact that similarities between these songs cannot be readily detected by the lay ear, but can only be discovered by what Judge Hough aptly called “dissection,”…we can find no infringement. Technical analysis “is not the proper approach to a solution; it must be more ingenuous, more like that of a spectator, who would rely upon the complex of his impressions…” Without proof that there is similarity in a substantially sense there can be no finding of infringement…. There must be an appropriation that is substantial and capable of apprehension by the music loving public to justify such a finding. Arnstein v. Broadcast Music, Inc., 137 F.2d 410, 412 (2d Cir. 1943). ----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. Darrell v. Joe Morris Music Co., 113 F.2d 80 (2d Cir. 1940). A.

Test for copying. 1.

Access.

When access to a composition or recording by the

defendant cannot be shown by direct evidence or admission, it may be inferred by wide

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dissemination of the copyrighted work (Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)), by the similarity of the works, (Cholvin v. B. & F. Music Co., 253 F.2d 102 (7th Cir. 1958)), or other circumstances evidencing a reasonable possibility, and not just a bare possibility, that the defendant had an opportunity to hear or view the protected work. Jorgensen v. Epic/Sony Records, 73 U.S.P.Q.2d 1463 (S.D.N.Y. 2004), aff’d, 157 Fed. Appx. 427 (2d Cir. 2005); Testa v. Janssen, 492 F. Supp 198 (W.D. Pa. 1980); Tisi v. Patrick, 97 F. Supp. 2d 539 (S.D.N.Y. 2000)(no access found despite wide circulation of demonstration recordings to record companies). Courts have referred to the similarity examined for purposes of determining access as “probative similarity”, or “similarities between the two works (whether substantial or not) that, in the normal course of events, would not be expected to arise independently in the two works and that therefore might suggest that the defendant copied part of the plaintiff’s work.” Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 357, 370 (5th Cir 2004), quoting A. Latman, “Probative Similarity” as Proof of Copying: Toward Dispelling Some Myths in Copyright Infringement, 90 Colum. L. Rev. 1187, at 1214 (1990). Also, there is an inverse relationship between access and probative similarity – the stronger the proof of similarity, the less the proof of access is required. Jorgensen v. Epic/Sony Records, 73 U.S.P.Q.2d 1463 (S.D.N.Y. 2004), aff’d, 157 Fed. Appx. 427 (2d Cir. 2005). 2.

Similarity.

If access can be shown, an accused work will

infringe an original work if the accused work is substantially similar to the original. Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp 177, 180 (S.D.N.Y. 1976). The eyes through which substantiality is judged are those of an ordinary observer,

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or the general audience for whom the copyright work was intended, and not experts in the field. Broadcast Music, Inc. v. Moor-Law, Inc., 484 F. Supp 357 (D.Del. 1980). “In determining whether two works are substantially similar, we employ a twopart analysis: an objective extrinsic test and a subjective intrinsic test…. The extrinsic test considers whether two works share a similarity of ideas and expression as measured by external, objective criteria. [citation] The extrinsic test requires "analytical dissection of a work and expert testimony." [citation] "Analytical dissection" requires breaking the works "down into their constituent elements, and comparing those elements for proof of copying as measured by 'substantial similarity.' " Rice v. Fox Broad. Co., 148 F. Supp. 2d 1029, 1051 (C.D. Cal. 2001), reversed on other grounds, 330 F.3d 1170 (9th Cir. 2003)…. Because the requirement is one of substantial similarity to protected elements of the copyrighted work, it is essential to distinguish between the protected and unprotected material in a plaintiff's work.” Swirsky v. Carey, 376 F.3d 841 (9th Cir. 2004), at 845. Experts may be used to assist the court in its determination of similarities. See, e.g., Repp v. Webber, 132 F.3d 882 (2d Cir.1997), cert. denied, 525 U.S. 815 (1998); Arnstein v. Porter, 154 F.2d 464 (2d Cir 1946). If access is not shown, copying may nevertheless be shown if the plaintiff can prove that the accused work is “strikingly similar” to the original, which is a heavier burden. “To prove that similarities are striking, plaintiffs must demonstrate that ‘such similarities are of a kind that can only be explained by copying, rather than coincidence, independent creation, or prior common source.” Testa v. Janssen, 492 F. Supp 198, 203 (W.D. Pa. 1980). See also Jones v. Supreme Music Corp., 101 F. Supp 989 (S.D.N.Y. 1951).

If similarity is shown, it becomes the defendant’s burden to explain the

similarities, which the defendant can do by evidence that the similarities are coincidental (Northern Music Corp. v. Pacemaker Music Co., Inc., 147 U.S.P.Q. 358 (S.D.N.Y. 1956)), that the similarities are simple or trite and thus likely to occur spontaneously, (Darrell v. Joe Morris Music Co., 113 F.2d 80 (2d Cir. 1940)); or by evidence or prior musical

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phrases to show that the similarities are ordinary or common occurrences. Boone v. Jackson, 206 Fed. Appx. 30 (2d Cir. 2006), cert. denied, 128 S. Ct. 159 (2007); Johnson v. Gordon, 409 F.3d 12 (1st Cir. 2005); Granit Music Corp. v. United Artists Corp., 532 F.2d 718 (9th Cir. 1976); Heim v. Universal Pictures Co., 154 F.2d 480 (2d Cir. 1946). In a well-known case involving the Bee Gees (Selle v. Gibb, 567 F. Supp 1173 (N.D. Ill. 1983), aff’d, 741 F.2d 896 (7th Cir. 1984)), the plaintiff was unable to prove direct access by the Bee Gees to his song but argued that the “near identity of the two songs on a note-by-note, measure-by-measure basis as to 12 of the 26 bars”, Id. at 1178, proved copying had occurred. His case was supported by unrebutted expert testimony that the songs could not have been independently created, and the mistaken identification of the plaintiff’s song as the Bee Gees’ song by one of the Bee Gees. The jury’s verdict was in favor of the plaintiff, but the court granted the defendants’ motion for judgment NOV on the grounds that, because it was undisputed that the defendants had never heard of the plaintiff or his music, [T]he inferences [of access] on which plaintiff relies is not a logical, permissible deduction from proof of “striking similarity” or substantial similarity; it is “at war with the undisputed facts”, Marcoux v. Van Wyk, 572 F.2d 651, 653 (8th Cir. 1978), and it is inconsistent with the proof of nonaccess to plaintiff’s song by the Bee Gees at the time in question. Id. at 1183 C.

Fair Use.

The fair use doctrine is a court-created, equitable defense

that permits unconsented uses of a copyrighted work on certain public policy grounds. Fair use, as codified in the Copyright Act of 1976, permits unconsented uses “for purposes such as criticism, comment, new reporting, teaching…, scholarship or

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research.” § 107. Four factors set forth in § 107 determine if a use is fair and thus not an infringement: (1)

the purpose and character of the use, including whether such use is of a

commercial nature or is nor non-profit educational purposes; (2)

the nature of the copyrighted work;

(3)

the amount and substantiality of the portion used in relation to the

copyrighted work as a whole; and (4)

the effect of the use upon the potential market for or value of the

copyrighted work. The following are examples of cases involving music in which the fair use defense was successfully interposed: 1.

Lennon V. Premise Media Corp. L.P., 556 F. Supp.2d 310 (S.D.N.Y.

2008)(15 second use of song “Imagine” held fair principally on the basis that such use was critical of song’s message and did not usurp market for licensing the song for nontransformative uses). 2.

Bill Graham Archives LLC v. Dorling Kindersley Ltd., 386 F. Supp2d 324

(S.D.N.Y. 2005)(use of photographs of posters and tickets in book held fair principally on the basis that such use was transformative and not financially harmful). 3.

Italian Book Corp. v. American Broadcasting Cos., 458 F. Supp 65

(S.D.N.Y. 1978)(television broadcast of film and sound recording of parade band performing plaintiff’s composition held fair on the basis of no harm to plaintiff). 4.

Karll v. Curtis Publishing Co., 39 F. Supp 836 (E.D. Wis. 1941)

(publication of plaintiff’s composition held fair on the basis of implied consent).

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5.

Keep Thomson Governor Committee v. Citizens for Gallen Committee,

457 F. Supp 957 (D.N.H. 1978)(use of song identified with one candidate in political campaign by his opponent in the opponent’s responding commercials held fair). 6.

Shapiro, Bernstein & Co. v. P.F. Collier & Son Co., 26 U.S.P.Q. 40

(S.D.N.Y. 1934)(reprinting or lyrics from play in fictional serial in which characters in serial hear performances of the play while listening to radio broadcast). 7.

Broadway Music Corp. v. F-R Pub. Corp., 31 F. Supp 817 (S.D.N.Y.

1940)(publication of portions of song in article about death of actress with whom song was associated). A court has recently held that the fair use defense must be considered by the copyright owner before issuing a take-down notice under the Digital Millennium Copyright Act. Lenz v. Universal Music Corp., 572 F. Supp.2d 1150 (N.D. Ca. 2008). D.

Parody.

Parody is a form of fair use. The success of a

parody depends upon its perceived relation to a familiar object, person, or work, so parodists are permitted a somewhat greater freedom to borrow in order to “recall or conjure up” the original work as needed to link conceptually the parodist’s work to the work being copied. In the case of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), the Supreme Court stated that, to the extent a parody does not take as the object of its criticism the work being copies, it diminishes the fairness of the borrowing but held that “parody, like other use, has to work its way through the relevant [fair use] factors, and to be judged case by case, in light of the end of copyright law.” Id. at 581. The Court ruled that “It was error for the Court of Appeals to conclude that the commercial nature of 2 Live Crew’s parody of “Oh Pretty Woman” rendered it presumptively unfair.”

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Id. at 594.

The following are other examples of cases involving music in which the

parody defense was successfully interposed: 1.

Elsmere Music, Inc. v. National Broadcasting Co., 482 F.

Supp. 741 (S.D.N.Y. 1980), aff’d, 623 F.2d 252 (2d Cir. 1980)(use of “I Love New York” advertising jingle in NBC Saturday Night Live sketch as “I Love Sodom”). 2.

Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d Cir.

1964), cert. denied, 379 U.S. 822 (1964)(publication of satirical lyrics which copied the meter of plaintiff’s songs with directions to the reader to mentally supply the melodies). E.

Other Infringement Issues. 1.

Title. Song or record titles will not be protected under

copyright principles but, if they have achieved secondary meaning, may be protected under theories of unfair competition. Jubilee Industries, Inc. v. Roulette Records, Inc., 153 U.S.P.Q. 431 (N.Y. Sup. Ct. 1967); Glory Records, Inc. v. RCA, 213 N.Y.2d 875 (1961); Robert Stigwood Group Ltd v. Sperber, 457 F.2d 50, 56 (2d Cir. 1972). See also Life Music, Inc. v. Wonderland Music Company, 241 F. Supp. 653 (S.D.N.Y. 1965) (protection of word “supercalafrajalisticespecaladojus” against use in dissimilar song denied). 2.

Wrongful Merchandising.

The packaging of recordings

in a false or misleading manner may give rise to an action under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). Some early cases include Benson v. Paul Winley Record Sales Corp., 452 F. Supp. 516 (S.D.N.Y. 1978); Rich v. RCA Corp., 390 F. Supp. 530 (S.D.N.Y. 1975); CBS, Inc. v. Gusto Records, Inc., 403 F. Supp. 447 (M.D. Tenn. 1974); Decca Records v. Musicor Records, 314 F. Supp. 145 (S.D.N.Y. 1970); Mercury Record

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Corp. v. Buckingham Record Co., 226 F. Supp. 427 (S.D.N.Y. 1963). Further, the use of a well known mark in a record’s title or lyrics might also give rise to an action under Section 43(a). Culliford v. CBS, Inc., 222 U.S.P.Q. 497 (D.D.C. 1984)(owner of “Smurf” name and character entitled to enjoin dance record entitled “The Smurf”); General Mills v. Mellis, 203 U.S.P.Q. 261 (S.D.N.Y. 1979)(“pop rocks” candy protected against use in song title). Deceptive merchandising may also give rise to an action under state law (Bonner v. Westbound Records, Inc., 364 N.E.2d 570 (Ill. 1977)) or for breach of contract. Granz v. Harris, 198 F.2d 585 (2d Cir. 1952). However, release of “sound-alike” recordings or imitations without deception or likelihood of confusion is permissible.

§ 114(b).

Deceptively acquired material might also give rise to a cause of action if published (Walters v. Shari Music Publishing Corp., 185 F. Supp. 408 (S.D.N.Y. 1960)) or weigh in the analysis of fair use. Shady Records, Inc. v. Source Enterprises Inc., 73 U.S.P.Q.2d 1954,1972-3 (S.D.N.Y. 2005). Finally, a failure to properly promote a record may give rise to an action for damages. Contemporary Mission, Inc. v. Famous Music Corp., 557 F.2d 918 (2d Cir. 1977). 3.

Right of Publicity.

The right of publicity can be defined

as the right of a celebrity to the exclusive exploitation of the publicity value of his name, likeness, or other personal attribute. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977). In the case of Midler v. Ford Motor Company, 849 F.2d 460 (9th Cir. 1988), in which Ford, after Bette Midler declined to participate in its advertisement, used the recording of an artist performing a song associated with Midler in a style that imitated her, the Ninth Circuit held that “when a distinctive voice of a professional singer is

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widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California.” Id. at 463. In the case of Waits v. Frito-Lay, Inc., 978 F. 2d 1093 (9th Cir. 1992), cert. denied, 506 U.S. 1080 (1993), the Ninth Circuit also recognized that imitation of a performer, in this case of the voice of Tom Waits for a Doritos commercial, could be the basis of a claim for false sponsorship or endorsement under Section 43(a) of the Lanham Act. However, claims that a particular recording or song has become so identified with an artist that a secondary meaning has developed granting that artist trademark rights have failed. See, e.g., Oliveira a/k/a Gilberto v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. 2001); Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. 1970), cert.denied, 402 U.S. 906 (1971). A different result was achieved however in the case of Lombardo v. Doyle, Dane & Berbach, 396 N.Y.S.2d 661 (1977), where a recording was one piece of several elements associated with performer Guy Lombardo that were imitated in an advertisement. The use of a person’s name or likeness, if not for a commercial purpose, may be defensible on First Amendment grounds. Valentine v. C.B.S., Inc., 698 F.2d 430 (11th Cir. 1983). However, the First Amendment may not be sufficient by itself to protect the use of a celebrity’s name in the title of a song. Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003), cert. denied, 540 U.S. 1074 (2003). Band names can also be used editorially without liability. See, e.g., New Kids on the Block v. News America Publishing, 971 F.2d 302 (9th Cir. 1992).

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4.

Credit.

The accordance of credit in the entertainment

industry is a matter of great importance, with much attention given to the manner and frequency of a credit, and the remedies when a credit is incorrect or missing. In the case of Dastar v.Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), the Supreme Court held that § 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) did not address the misappropriation of authorship, which in that case involved a “reverse passing off” claim concerning repackaged public domain content that did not credit those originally involved with the content. The Court ruled that the word “origin” in § 43(a) did not include the intellectual contribution made to a good or service but only the producer of the product or service. Since that decision, courts have invalidated claims concerning misattribution of credits brought under the Lanham Act. See, e.g., Williams v. UMG Recordings, Inc., 281 F. Supp.2d 1177 (C.D.Cal. 2003). Further, failure to properly accord credit is not a violation under the Copyright Act. UMG Recordings, Inc. v. Disco Azteca Distributors, 446 F. Supp.2d 1164, 1178 (E.D. Cal. 2006). See also King v. Ames, 179 F.3d 370 (5th Cir. 1999)(claim that individual falsely accorded himself credit on packaging of CDs to be producer of live recordings rejected). 5.

Harmful Content.

Not all claims asserting wrongful

content involve intellectual property. In the case of McCollum v. CBS, Inc., 202 Cal. App. 3d 939 (C. App. Cal.1988), the plaintiff unsuccessfully sought to impose tort liability on a record company and music group under the concept of culpable incitement, asserting that the lyrics of the group Black Sabbath, particularly the song “Suicide Solution”, were the cause of the suicide of their son. IV.

OTHER LITIGATION ISSUES.

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A.

Registration. While registration of a copyright claim is not a prerequisite

to protection, it is a prerequisite to any civil action for infringement. § 411. Registration prior to infringement is also a prerequisite to an award of statutory damages or attorneys fees. § 412. A certificate of registration made within five years of publication is prima facie evidence of the validity, ownership, and the date of creation of the copyright. § 410(c). B.

Preemption.

Common law copyright was abolished under the Copyright

Act of 1976, effective January 1, 1978. Since that time, the federal courts have had exclusive jurisdiction for the enforcement of any right within the general scope of copyright as specified in the Act and for the subject matter of copyright as also specified in the Act. § 301(a). See generally Richie a/k/a Kid Rock v. Williams, 395 F.3d 283 (6th Cir. 2005). For jurisdiction to be proper, the primary and controlling purpose of an action must be for copyright infringement. Claims which in essence are ones solely to settle title (Peay v. Morton, 571 F. Supp. 108 (M.D. Tenn. 1983)), for breach of contract (Keith v. Scruggs, 507 F. Supp. 968 (S.D.N.Y. 1981)), for royalties (Hall v. Inner City Records, 212 U.S.P.Q. 272 (S.D.N.Y. 1980)), or for conversion of material embodying the intangible right constituting the copyright such as a master recording (Uncle Jam Records v. Warner Brothers, 1983 Copyright Law Dec. ¶25,580 (S.D.N.Y. 1983)) are not preempted and, standing alone, will not give rise to jurisdiction under the Act. On the other hand, a claim asserting a conspiracy to violate copyright is preempted (Irwin v. ZDF Enterprises GMBH, 79 U.S.P.Q.2d 1338 (S.D.N.Y. 2006)), as was a claim that use of an artist’s recorded performance, licensed from her record company to another, misappropriated her voice and name in violation of her common law right to privacy and

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her statutory right of publicity. Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006), cert. denied, 127 S. Ct. 1371 (2007). Because sound recordings were not protected under federal copyright law until 1972, common law protection for such recordings continues to exist. Capitol Records Inc. v. Naxos of America, Inc., 372 F.2d 471 (2d Cir. 2004); Capitol Records Inc. v. Naxos of America, Inc., 830 N.E.2d 250 (N.Y. Ct. App. 2005). State criminal laws requiring that producer information be included on the packaging of phonorecords are also not preempted. See, e.g., People v. Williams, 876 N.E.2d 235 (Ill. App. 2007); Briggs v. State, 638 S.E.2d 292 (Ga. Sup. Ct. 2006). C.

Vicarious Liability.

Liability for infringement of copyright, as with any

other tortuous acts, may extend to persons other than the direct performer or publisher of the infringing work. Under the concepts of vicarious or contributory liability, a promoter that was aware that its artist performed unlicensed compositions and which advanced those performances was held liable for infringement. Gershwin Publishing Corp. v. Columbia Artist Man., Inc., 443 F.2d 1159 (2d Cir. 1971). Operators of flea markets where infringing material is sold have been found liable (see, e.g., Arista Records Inc. v. Flea World Inc., 78 U.S.P.Q.2d (D.N.J. 2006)), but an organizer of a professional trade show was not. Artists Music, Inc. v. Reed Publishing (USA), Inc., 31 U.S.P.Q.2d 1623 (S.D.N.Y. 1994). Further, a manager of an infringing radio station was held vicariously liable for infringement on the grounds that he was in a position to control the activities of the primary infringer and had a direct financial interest in the activities. Boz Scaggs Music v. KND Corp., 491 F. Supp. 908 (D. Conn. 1980).

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D.

Standing.

A copyright claim may be brought by either the legal or

beneficial owner of the copyright. § 501(b). In the case of Moran v. London Records, Ltd., 827 F.2d 180 (7th Cir. 1987), the Seventh Circuit held that a creator of a work under a work-for-hire arrangement (in this case voice-over recordings used in a commercial later incorporated in sound recordings) cannot have standing as a beneficial owner, notwithstanding any retained economic or control interests the creator may have. A single co-owner of a copyright does not have to join other owners in order to pursue an action. Davis v. Blige, 505 F.3d 90 (2d Cir. 2007). To pursue a claim, one must have properly acquired any necessary underlying rights incorporated in the material for which protection is being sought, such as proper composition licenses for sound recordings. See, e.g., Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193 (10th Cir. 2005). However, there is no standing under the Copyright Act for a non-owner to complain that a competitor has not obtained the proper licenses to market their products. Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008). E.

Remedies.

Damages are awarded on basis of number of copyrights

infringed, not on number of infringing works. WB Music v. RTV Communications Group, 445 F.3d 538 (2d Cir. 2006). In the case of Smith v. NBC Universal, 86 U.S.P.Q. 2d (S.D.N.Y. 2008), the court held that emotional damages may be included within the scope of an infringement claim, if such damages were foreseeable. Attorney fees may also be awarded to the prevailing party, either plaintiff or defendant, at the discretion of the court. Fogerty v. Fantasy, 510 U.S. 517 (1994). V.

DIGITAL MUSIC – FROM ATOMS TO BITS. The development of the means

to record, distribute, and transmit sound digitally has caused greater disruption and

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dislocation than any other event since sound began to be recorded. Reproduction and distribution of sound recordings is no longer centralized, expensive, detectable, and controlled – it is now ubiquitous, inexpensive, undetectable, and private. Consumers have the means, and the power, to duplicate, transmit, alter, and compile digital recordings and with this power have elevated the values and needs of the consumer – speed of access, reduced costs, portability, and convenience – over the control interests of music owners. Content providers have been forced to recognize an anomalous shift in their business models – strength and revenue are derived from giving away power and content. A.

Sampling.

Early music cases involving digital music concerned the

reproduction of portions of existing recordings in new recordings, which could be short singular uses or recurring loops of sound.

One of the first reported cases was Grand

Upright Music, Ltd. v. Warner Bros. Records, Inc., 780 F. Supp. 182 (S.D.N.Y. 1991), which held that the looping of some piano chords from a recording of the song “Alone Again (Naturally)” was an infringement of both the prior recording and the underlying composition. Since that time, courts appear to have drawn a distinction between the rights of the owner of a composition and the owner of a master recording. Defendants accused of sampling a musical composition are entitled to interpose a defense that the use was de minimis (Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003)), while any sampled use of a sound recording, no matter how short, will be subject to liability. Bridgeport Music, Inc. v. Dimension Films, et al, 410 F.3d 792 (6th Cir. 2005). B.

Peer-To-Peer Systems.

Beginning in 1999, freely available software

enabling the duplication and transmission through the Internet of digital music files from

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one private computer to another became the primary face of the challenges posed by digital music. In the case of A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001), the court held that users of the Napster peer-to-peer system to upload and download digital music files infringed the reproduction and distribution rights of the copyright downers, and that Napster was liable for contributory copyright infringement on the grounds that it controlled the means by which such files were traded. The Aimster system was later found to be infringing (In re: Aimster Copyright Litigation, 334 F.3d 643 (7th Cir. 2003), cert. denied, 540 U.S. 1107 (2004)), as was the Grokster system (Metro-Goldwyn-Mayer Studios, Inc, et al v. Grokster, Ltd., 545 U.S. 913 (2005)), in which the Supreme Court established a new basis for copyright liability, “holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.” Id. at 936-7. In addition to pursuing infringement claims against peer-to-peer software providers, the recording industry mounted a campaign of lawsuits against individual users of such software. See, e.g., BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005), cert. denied, 126 S. Ct. 2032 (2006); Capitol Records, Inc. v. Foster, 86 U.S.P.Q.2d 1203 (W.D. Okla. 2007). An emerging issue in the most current cases is whether the act of merely making digital music files available to users of peer-to-peer software from one’s computer, without proof of actual distribution of such files, constitutes copyright infringement. See, e.g., Interscope Records v. Duty, 79 U.S.P.Q.2d 1043 (D. Ariz. 2006); Atlantic Recording Corp. v. Howell, 86 U.S.P.Q.2d 1796 (D. Ariz. 2008); and Elektra Entertainment Group Inc. v. Barker, 87 U.S.P.Q.2d 1427 (S.D.N.Y. 2008). Issues have

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also arisen with respect to the difficulty of identifying actual individual infringers. See, e.g., Virgin Records America, Inc. v. Does 1-35, 79 U.S.P.Q.2d 1061 (D.D.C. 2006). The recording industry strategy of pursuing individual users has not gone without comment, even from the bench.

See, e.g., Elektra Entertainment Group, Inc. v.

Santangelo, 78 U.S.P.Q.2d 1702 (S.D.N.Y. 2005). Copyright infringement is also a crime (§ 506), and since the passage of the No Electronic Theft Act in 1997 (105 P.L. 147; 111 Stat. 2678 1997), a crime is committed even when there is no monetary profit or commercial benefit from the infringement. C.

Music Services.

The technological confluence of compressed music

files, greater storage capacity, and faster Internet connections created the opportunity for commercial music services to launch, thus sparking a fight over which copyright rights were implicated by the various music service models coming on-line. MP3.com offered an unlicensed “locker” service, whereby one could listen to streamed recordings of songs appearing on CDs supposedly owned by the user. The company’s fair use defense was rejected by the court (UMG Recordings, Inc. v. MP3.com, Inc. 92 F. Supp.2d 349 (S.D.N.Y. 2000)), and the company was eventually purchased by Universal Music Group. See also Country Road Music, Inc v. MP3.com, Inc., 279 F. Supp.2d 325 (S.D.N.Y. 2003) (rejecting a defense that a performance license shields the defendant Internet service from infringement of the separate reproduction right required for server copies). Universal Music Group itself launched a streaming music service (Jimmy & Doug’s Farm Club), arguing that the mechanical licenses it had obtained for the release of physical products also covered the server copies required to facilitate the streams. This argument was rejected by the court in The Rogers and Hammerstein Organization, et al v. UMG

Copyright 2009 Thomas R. Leavens

Recordings, Inc., 60 U.S.P.Q.2d 1354 (S.D.N.Y. 2001).

The performing rights

organizations had also argued that downloads of music files implicated the performance right in the songs included in the files and thus claimed license fees were due for download sales. The ASCAP rate court however disagreed in U.S. v. ASCAP, In the Matter of the Application of AOL et al., 485 F. Supp.2d 438 (S.D.N.Y. 2007). Disagreement also exists whether ringtones are covered by compulsory licensing provisions of §115. While the Copyright Office has concluded that they are (Mech. & Digital Phonorecord Delivery Rate Adjustment Proceeding, 71 Fed. Reg. 64,303 (U.S. Copyright Office Oct. 16, 2006)), music publishers have refused to issue licenses under such terms. www.harryfox.com/public/infoFAQRingtones.jsp Rate setting for the use of musical compositions and sound recordings in new digital music services has occupied much attention and resources, as models for the music business going forward are evolving. An example of a comparatively early webcasting rate case is Beethoven.com LLC v. Librarian of Congress, 394 F.3d 939 (C.D.C. 2005). Proposed rates for conditional downloads and streaming are set forth at Mechanical and Digital Phonorecord Delivery Rate Determination Proceeding, 73 FR 57033 (Oct. 1, 2008)(proposed 37 CFR § 385). D.

Devices. The Audio Home Recording Act of 1992 (“AHRA”) added

Chapter 10, entitled “Digital Audio Recording Devices and Media,” to Title 17. Act of October 28, 1992, Pub. L. No. 102-562, Sec. 1, 106 Stat. 4248. Chapter 10 essentially provides that a royalty will be collected from the sale of each digital audio recording device for distribution to record companies, publishers, recording artists, and music trade organizations. “A ‘digital audio recording device’ is any machine or device of a type

Copyright 2009 Thomas R. Leavens

commonly distributed to individuals for use by individuals, whether or not included with or as part of some other machine or device, the digital recording function of which is designed or marketed for the primary purpose of, and that is capable of, making a digital audio copied recording for private use…” § 1001(3). In the case of Recording Industry Association Of America v. Diamond Multimedia Systems,180 F.3d 1072 (9th Cir. 1999), the defendant’s Rio portable digital music player was found to fall outside the scope of the AHRA, as computers (from which the player received its music files) were not digital audio recording devices.

Copyright 2009 Thomas R. Leavens