Party Rock Anthem Not A Parody Of Hustlin'; Material Questions Remain Regarding Fair Use Defense

Roberts v. Gordy et al, No. 13-cv-24700 (S.D. Fla. dated Sep. 17, 2015).

The Court found that defendants are precluded at trial from arguing that Party Rock Anthem parodies the song Hustlin', but that summary judgment was inappropriate because questions of fact remain regarding whether Defendants' use, outside the parody context, was a fair use.  Specifically, material questions existed regarding the purpose and transformativeness of Defendant's use and the market impact of their use.

Fair Use Must Be Considered Before Sending DMCA Takedown Notices; 9th Circuit

Lenz v. Universal Music, No. 13-16106 (9th Cir. filed 9/14/2015) [decision].

Copyright owners must consider whether allegedly infringing use is "fair use" before sending takedown notices under the DMCA, holds the 9th Circuit.  In the so-called "dancing baby case," Plaintiff alleged that Universal Music violated 17 USC 512(f) by misrepresenting in a takedown notice that a home video of her son dancing to a Prince song and posted on YouTube constituted an infringing use of a portion of a "Prince" composition.  The Court held that the DMCA requires copyright owners to consider fair use before sending a takedown notice, and that failure to do so raises an issue of fact whether the copyright owner formed a subjective good faith belief that the use was not authorized by law.  Available theories of good faith belief are actual knowledge, and willful blindness.  "Universal faces liability if it knowingly misrepresented in the takedown notification that it had formed a good faith belief the video was not authorized by the law, i.e. did not constitute fair use." A prevailing plaintiff in such a case is entitled to nominal damages.  Ultimately, the 9th Circuit affirmed the district court's denial of the cross-motions for summary judgment, such that the case would proceed to trial on the issue of whether Universal had actual knowledge, and the amount of damages.

Film Festival Temporarily Enjoined From Screening Aretha Franklin Documentary

Franklin v. Nat'l Film Preserve, No. 15-cv-1921 (D. Colo. filed 9/4/2015) [Doc. 14].

The Court issued a temporary restraining order enjoining the Telluride Film Festival from screening a documentary film about Aretha Franklin, which consisted primarily of previously unreleased footage from a 1972 concert.  The deed granting the film producer rights in the footage required Ms. Franklin's consent to use the footage, which defendant did not obtain.

The Court found that Ms. Franklin has a strong interest in her rights of publicity, and to the use of her name/likeness.  She also had a federal statutory right to prevent bootlegging.  17 USC 1101(1).  The Court found that the film, which essentially recreated the entire concert experience, was not a fair use, and that a TRO would preserve the status quo.

New York Common Law Protects Public Performance of Pre-1972 Sound Recordings; NY Federal Court Joins California Federal Court

Flo & Eddie, Inc. v. Sirius XM, Inc., No. 1:13-cv-05784 (S.D.N.Y. filed Nov. 14, 2014) [Doc. 88].

Joining a California federal court in a parallel case, a New York federal court found that Flo & Eddie (the Turtles) have state common law claims against Sirius XM concerning the public performance of pre-1972 sound recordings.  "In short, general principles of common law copyright dictate that public performance rights in pre-1972 sound recordings do exist.  New York has always protected public performance rights in works other than sound recordings that enjoy the protection of common law copyright.  Sirius suggests no reason why New York -- a state traditionally protective of performers and performance rights -- would treat sound recordings differently."

First, the court found that plaintiff holds valid common law copyrights in the Turtles' sound recordings.  "The Turtles originally acquired a common law copyright in their sound recordings by expending time, effort, money and skill to create them.  That copyright was then transferred...eventually to Flo and Eddie, which now owns the sound recordings."

Second, the Court found that Flo and Eddie's common law copyright provides exclusive rights to reproduce and publicly perform Turtles recordings.  As to the absence of prior litigation on the matter, "acquiescence by participants in the recording industry in a status quo where recording artists and producers were not paid royalties while songwriters were does not show that they lacked an enforceable right under the common law -- only that they failed to act on it."  The court did not read too much into the fact that New York courts have never squarely addressed this particular feature of state copyright law in the context of sound recordings.

Third, the Court found that Sirius infringed plaintiff's common law copyright and engaged in unfair competition (misappropriation).  In reproducing Turtles recordings, Sirius acted without authorization.  Further, to the extent that distribution is an element of common law copyright, the Court found that publicly performing sound recordings is an act of distribution.

Moreover, even though the Court found that there is a common law fair use defense parallel to the federal fair use defense, Sirius XMs creation of multiple complete copies of the sound recordings could not be considered a fair use.  "It is a matter of economic commons sense that Sirius harms Flo and Eddie's sales and potential licensing fees (even if the latter market is not yet extant) by publicly performing Turtles sound recordings."

Lastly, the Court rejected Sirius XM's argument that plaintiff's claims are barred by the constitutional Dormant Commerce Clause, which provides that states may not interfere with interstate commerce.  U.S. Const. art. I, sec. 8.  The court found that the argument is a "red herring" because New York does not "regulate" anything by recognizing common law copyright.  Sirius objects to a "general principle respecting the liability of all persons within the jurisdiction of" New York, which under the 1876 (yes, 1876) Supreme Court decision Sherlock v. Alling, 93 U.S. 99,  is not a state-imposed regulation that might affect interstate commerce.

Use Of Rapper's Image On Website Constitutes Copyright Infringement And Violated Right Of Publicity; Questions Remain on Trademark And Third-Party Contribution Claims

Jackson v. Odenot, No. 09-cv-05583 (S.D.N.Y. filed March 24, 2014) [Doc. 150].

Rapper 50 Cent was granted summary judgment on his claims against a website for the unauthorized use of photographs that appeared on the masthead of the website.  50 Cent's claim for copyright infringement was based on a registration for a sound recording which included the relating artwork/photos, and exact copies were used by the defendants.  50 Cent's claim under New York state law for the right of publicity (Civil Rights Law sections 50-51) succeeded because: (1) the pictures "are recognizable likenesses of Jackson because someone familiar with Jackson would be able to identify him in each of the mastheads", and (2) defendants' waived their statute of limitations defense.  However, the Court found that there were questions of fact that precluded summary judgment on 50 Cent's claim under the Lanham Act for false endorsement, 15 USC 1125(a)(1), and also on his claim for common law unfair competition.  The Court did dismiss the defendants' affirmative defenses of fair use, implied license, equitable estoppel, and unclean hands, and found that the other affirmative defenses had been abandoned.  Lastly, the Court held that defendant could not recover on a contribution theory under copyright and trademark law against the third-party defendants, but could seek contribution under the New York state claims.

Green Day's Use Of Illustration During Concert Was Fair Use, But Attorney's Fees Denied

Seltzer v. Green Day, Inc. et al., No. 11-56573 [D.C. No. 2:10-cv-02103] (9th Cir. Aug. 7, 2013).

The 9th Circuits affirmed summary judgment in favor of the defendants, but vacated the attorney's fees award, in an artist's action alleging violations of the Copyright Act and the Lanham Act relating to the rock band Green Day's unauthorized use of an illustration ("Scream Icon") in the video backdrop of its stage show.

The Court found that use of the illustration in the video backdrop was a fair use under the Copyright Act: it was transformative, the illustration was a widely disseminated work of street art, the illustration was not meaningfully divisible, and the video backdrop did not affect the value of the illustration.  As to the trademark claims, the artist failed to establish any trademark rights.  In vacating the attorney's fees award under the Copyright Act, the Court found that even though defendant was successful on their fair use defense, the plaintiff did not act objectively unreasonably ("there is simply no reason to believe that Seltzer should have known from the outset that his chances of success in this case were slim to none.").

ReDigi Loses - Court Examines "Reproduction" & Distribution; Finds No "First Sale" For Digital Music

Capitol Records v. ReDigi, No. 1:12-cv-00095-RJS (S.D.N.Y filed 03/30/13) [Doc. 109].

The Court was faced with the question of whether the unauthorized transfer of a digital music file over the Internet – where only one file exists before and after the transfer – constitutes reproduction within the meaning of the Copyright Act. The Court holds that it does.  "Because the reproduction right is necessarily implicated when a copyrighted work is embodied in a new material object, and because digital music files must be embodied in a new material object following their transfer over the Internet, the Court determines that the embodiment of a digital music file on a new hard disk is a reproduction within the meaning of the Copyright Act."  Continuing, "the fact that a file has moved from one material object – the user’s computer – to another – the ReDigi server – means that a reproduction has occurred.  Similarly, when a ReDigi user downloads a new purchase from the ReDigi website to her computer, yet another reproduction is
created. It is beside the point that the original phonorecord no longer exists. It matters only that a new phonorecord has been created."

The Court also concluded that absent the existence of an affirmative defense, the sale of digital music files on ReDigi’s website infringes Capitol’s exclusive right of distribution.

The Court then considered ReDigi's affirmative defenses: fair use, and first sale.  With respect to fair use, "On the record before it, the Court has little difficulty concluding that ReDigi’s reproduction and distribution of Capitol’s copyrighted works falls well outside the fair use defense".  In sum, "ReDigi facilitates and profits from the sale of copyrighted commercial recordings, transferred in their entirety, with a likely detrimental impact on the primary market for these goods. Accordingly, the Court concludes that the fair use defense does not permit ReDigi’s users to upload and download files to and from the Cloud Locker incident to sale."

Turning to the first sale defense, the Court also disagreed.  First, the court found that "first sale" does not apply to the reproduction right, but only to the distribution right.  Second, the Court found that the music files were not lawfully made (they were unlawful reproductions) under the Copyright Act, and therefore not entitled to the first sale defense.

Third, the Court found that the first sale doctrine is limited to physical items. "Here, a ReDigi user owns the phonorecord that was created when she purchased and downloaded a song from iTunes to her hard disk. But to sell that song on ReDigi, she must produce a new phonorecord on the ReDigi server. Because it is therefore impossible for the user to sell her “particular” phonorecord on ReDigi, the first sale statute cannot provide a defense. Put another way, the first sale defense is limited to material items, like records, that the copyright owner put into the stream of commerce. Here, ReDigi is not distributing such material items; rather, it is distributing reproductions of the copyrighted code embedded in new material objects, namely, the ReDigi server in Arizona and its users’ hard drives. The first sale defense does not cover this any more than it covered the sale of cassette recordings of vinyl records in a bygone era".  The Court did note, however, that digital music on an iPod, computer or CD would be protected by the first sale doctrine ("Section 109(a) still protects a lawful owner’s sale of her “particular” phonorecord, be it a computer hard disk, iPod, or other memory device onto which the file was originally downloaded. While this limitation clearly presents obstacles to resale that are different from, and perhaps even more onerous than, those involved in the resale of CDs and cassettes, the limitation is hardly absurd – the first sale doctrine was enacted in a world where the ease and speed of data transfer could not have been imagined.")

Having made those determinations, the Court then found ReDigi directly and secondarily liable for copyright infringement of Plaintiff's reproduction and distribution rights.  Summary judgment was granted in Plaintiff's favor, except on its claims relating to Plaintiff's performance and display rights and common law infringement.

Sex Pistols Photo Infringed By Artist

Morris v. Young, No. 12-cv-00687 (C.D. Cal. filed 1/28/2013) [Doc. 29].

Plaintiff sued defendant seeking damages for copyright infringement and an injunction enjoining defendant from further infringement of Plaintiff's photograph of the musicians Sid Vicious and Johnny Rotten of the punk rock bank, the Sex Pistols.  Sometime in the mid-2000s, defendant created a series of works based on images of the Sex Pistols that he found on the Internet.  None of the images defendant used in this series contained copyright notices, and defendant therefore believed they were in the public domain.  Among the unmarked images defendant found on the Internet was the subject photograph.  Defendant used the image of the Subject Photograph he found on the Internet to create several works that are the subject of this case.  Prior to the initiation of this lawsuit, Young Defendant earned a total of $8,940 from sales of the accused works.

First, the Court found that plaintiff had established ownership of a valid copyright in the photograph.  Next, the Court focused on actionable copying.  Plaintiff can establish copying either by direct evidence of copying or by showing that defendant (1) had access to the work and (2) that the two works are substantially similar in idea and expression. It was undisputed that defendant found an image of the Subject Photograph on the Internet and copied it to make the Accused Works. "Accordingly, the Court need not rely on evidence of access and substantial similarity to determine whether a copying took place because the undisputed evidence shows that Young copied the Subject Photograph."

Next, the Court underwent a "fair use" analysis.  First, the commercial nature of the use weighed against a finding of fair use.  Additionally, the Court found that defendant's work added only marginal artistic innovation to the photograph to change the aesthetic expression of the work.  Moreover, it did not appear that defendant intended any distinct purpose or message when creating the works.  The use was, thus, not transformative.  Second, the court found that the nature of the copyrighted work was creative and thus weighed against a finding of fair use.  Third, the Court considered whether the amount of the work used was reasonable in relation to the purpose of the copying; defendant used most or all of the subject photograph to create his works and this weighed against fair use.  Finally, the Court considered the effect of the use on the potential market or value of the copyrighted work.

Accordingly, the court granted Plaintiff summary judgment on one of the works.  However, the Court found questions of fact on the fair use defense for another of the works.

Fair Use & Blogging

The NYTimes has an interesting article concerning bloggers excerpting portions of other news articles online.

The editors of many Web sites, including ones operated by the Times Company, post excerpts from competitors’ content from time to time. At what point does excerpting from an article become illegal copying? Courts have not provided much of an answer.

Brian Stelter, "Copyright Holders Challenge Sites that Excerpt," 3/1/09 New York Times, Business - Media and Advertising.

Fair Use & Political Speech

Browne v. McCain, No. 08-05334 (C.D.Cal. Nov. 2008)

Main issues:
-Copyright Fair use
-Lanham Act's application to political speech

see docs. 20 & 24

Ono/EMI Withdraw All Claims Against Premise Media

Article:

"Yoko Ono and EMI Records have withdrawn all claims filed against Premise Media. The dismissal follows failed attempts by Yoko Ono in federal court and EMI Records in state court to enjoin Premise Media’s documentary, “Expelled: No Intelligence Allowed,” because it uses a 15-second clip of a John Lennon song."

Prior Posts.

AP to Bloggers - Fair Use?

Saul Hansell, The Associated Press to Set Guidelines for Using Its Articles in Blogs, 6/16/08 New York Times - Business/Media:

The Associated Press, one of the nation’s largest news organizations, said that it will, for the first time, attempt to define clear standards as to how much of its articles and broadcasts bloggers and Web sites can excerpt without infringing on The A.P.’s copyright.


...which raises the question: can The AP define what infringes its copyright? Standards may provide guidelines to bloggers, but isn't it the Copyright Act (and the federal courts' interpretation thereof) that defines the standards as to what and what is not "fair use"?

More info here from the Electronic Frontier Foundation.

'Imagine' State Court Update

Despite Judge Stein (SDNY) denying Plaintiffs' motion for a preliminary injunction on fair use grounds, let us not forget that a related case is pending in New York State court (based on pre-'72 recordings).

Reviewing the papers filed in the state court action reveal that Defendants moved to dismiss the complaint under CPLR 3211. A hearing was requested for June 9, 2008 (9:30AM) in the Motion Submission Part, Room 130, located at 60 Centre Street, New York, New York 10007.

What consideration will the Honorable Richard B. Lowe give to the federal order and decision? How does Judge Stein's decision affect the state proceeding?

Preliminary Injunction Denied in Lennon Case

Lenon v Premise Media - PRELIMINARY INJUNCTION DENIAL - Upload a doc

Read this doc on Scribd: Lenon v Premise Media - PRELIMINARY INJUNCTION DENIAL

Commentary from the Wall Street Journal

Patry agrees with court's analysis.

Judge Stein Promises Quick Ruling in 'Imagine' Case

From the tipster wire:

"A judge has promised a fast decision in a lawsuit brought by Yoko Ono to get the song "Imagine'' taken out of a movie challenging the concept of Darwinian evolution after a lawyer for the film's distributors warned the litigation could wreck the movie's political message."

[Article.]

Would an injunction "muzzle" the film producer's free speech? They argue that the film is asking if John Lennon was right, and concludes he was wrong. "Why would you ask somebody for permission to criticize their work?'' their attorney asked. "It's not likely it's going to be granted.''

Lennon's attorney responded: "fair use is not about destroying the other person's market. It's about carving very, very limited exceptions to a copyright proprietor's monopoly.''

So, readers - is it FAIR USE?

Notably, Judge Stein only required plaintiffs post a $20,000 bond to cover any losses suffered by the film's producers as a result of an injunction. What standard to judges apply to determine potential damages resulting from a wrongful preliminary injunction in setting the bond?

'Fair Use Project" to Represent Expelled in 'Imagine' Suit

From the tipster wire:

Stanford Law School’s Fair Use Project to Represent Filmmakers in Lawsuit Brought by Yoko OnoPublication

STANFORD, Calif., May 1 , 2008—The Fair Use Project of Stanford Law School’s Center for Internet and Society today announced that it is signing on to defend Premise Media’s right to use a clip of John Lennon’s song “Imagine” in its documentary, "Expelled: No Intelligence Allowed,” for the purposes of commentary and criticism. The film, released in the United States on April 18, 2008, is about alleged discrimination against people who support alternative theories of evolution such as intelligent design. The song is played for roughly 15 seconds to illustrate and criticize the ideas suggested in it—that the world might be a better place without religion. Lennon’s widow Yoko Ono Lennon and sons Sean and Julian, along with EMI Blackwood Music, filed suit on April 22, 2008 claiming that Premise Media’s unauthorized use of “Imagine” violates copyright and trademark law. The suit, filed in the U.S. District Court for the Southern District of New York, alleges that Premise Media, C&S Production LP, Premise Media Distribution LP, and Rocky Mountain Pictures misappropriated the composition in violation of the Copyright Act, the Lanham Act, and New York state law. On the same date, EMI Records Ltd. and Capitol Records LLC filed suit against the same defendants in the Supreme Court of the State of New York, alleging violation of their rights in the sound recording under New York state law.

Premise Media contends it has the right to use the song under the fair use doctrine, which among other things permits the use of copyrighted material for the purpose of comment, criticism, and discussion. “The right to quote from copyrighted works in order to criticize them and discuss the views they may represent lies at the heart of the fair use doctrine,” said Anthony Falzone, executive director of the Fair Use Project. “These rights are under attack here, and we plan to defend them.” Falzone will serve as counsel on the case along with Stanford Law colleagues Julie A. Ahrens and Brandy Karl. The Stanford team will be joined by Roy Hardin and April Terry, partners at the Dallas office of Locke Lord Bissell & Liddell LLP. The producers of “Expelled” spent two years interviewing scores of scientists, doctors, philosophers, and public leaders, including University of Minnesota biology professor P.Z. Myers, who does not support alternative theories of evolution. The clip of “Imagine,” which is audible for approximately 15 seconds, is used in a segment of the documentary in which the film’s narrator and author Ben Stein comments on statements made by Myers and others about the place of religion. In the documentary Stein says: “Dr. Myers would like you to think that he’s being original but he’s merely lifting a page out of John Lennon’s songbook.” This is followed by an audio clip of Lennon’s song “Imagine,” specifically, the lyrics “Nothing to kill or die for, And no religion too.” “We included the ‘Imagine’ clip not only to illuminate Ben Stein’s commentary but to criticize the ideas expressed in the song,” says Logan Craft, chairman and executive producer of Premise Media. “Yoko Ono and the other plaintiffs are trying to redefine the Constitution and the free speech protection it affords,” Craft continued. “Our movie is about freedom—the freedom to discuss alternative views of how life began on our planet, the freedom to ask reasonable questions about the adequacy of Darwin’s theory, and the freedom to challenge an entrenched establishment. Now we find that we also have to fight for our free speech rights.”

The plaintiffs in both cases have filed motions asking the court to issue a nationwide injunction against showing the film in its present form. These motions are likely to be heard in the next few weeks.

Lennon - Complaint

Below is the complaint in Lennon et al. v. Premise Media Corp., L.P. et al., No. 08-cv-3813-SHS (S.D.N.Y. filed April 22, 2008). A couple highlights:

Paragraph 20 - noting the influence of Internet bloggers

Paragraph 23 - alleging that the defendants obtained synch licenses to use other songs in the film. Does this implicate bad-faith or willfulness? If Defendants' affirmative defense is Fair Use, there is split authority on whether bad-faith precludes a fair use defense. Judge Leval (and others) argue that a defendant's bad faith has no place in fair use analysis.

Paragraph 25 - end credits list Imagine, but do not state that permission was granted. Again, how does this implicate bad-faith or willfulness? Fair use?

Paragraph 36 - seeks permanent injunction and damages on copyright claim

THIRD CLAIM - is based on The Lanham Act sec. 43(a), infringement of unregistered mark. Does Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) foreclose this claim? Dastar holds that the section 43(a) does not apply to claims arising out of a failure to attribute or credit the origin of creative work; rather, such claims are cognizable under the Copyright Act. Are Plaintiffs making such a claim? See Contractual Obligation Productions LLC v. AMC Networks Inc., No. 04-cv-2867, 4/7/08 N.Y.L.J. "Decision of Interest" (S.D.N.Y. March 25, 2008). It appears that rather than alleging that Defendants are failing to credit the origin of Imagine, Plaintiffs' claim is a sponsorship claim.

Exhibits A & B - Noticeably absent is an SR registration. Imagine is a Pre-72 work; thus, Plaintiffs include publishers of the song, but not a record label. However, state common law copyright may protect Pre-72 recordings - why do Plaintiffs omit a common law claim from their complaint?

Read this doc on Scribd: Lennon v Premise Media Corp COMPLAINT

Fair Use? - 'Imagine' Suit Over Documentary

John Lennon's heirs - Sean, Julian, and Yoko Ono - and his publisher (EMI Blackwood) brought suit in the S.D.N.Y. against the filmmakers behind "Expelled: No Intelligence Allowed" for using John Lennon's "Imagine" in the film without authorization. Plaintiffs seek an injunction and damages.

In response to the suit, defendants cited fair use. "We are disappointed therefore that Yoko Ono and others have decided to challenge our free speech right to comment on the song 'Imagine' in our documentary film," they said in a statement.

Readers: any thoughts on fair use?

[Details on case to follow when available...]

Well, That's ONE Way to Get Publicity

The woman at the center of the Elliot Spitzer, aka Client 9, scandal has a Myspace page. The page is embedded with her own recording of an original composition, "What We Want".

Remarkably, but not surprisingly, the song has been played over two million (2,000,000) times and counting! [Stats as of 3/13/08 at 11:10AM] How many of those "plays" occurred in the past couple days -- since her identity was revealed?

Anyway, you CAN'T BUY PUBLICITY LIKE THAT! I wonder if she has representation?

Assuming, arguendo, that media outlets exploit/copy the sound recording, as they have the woman's pictures posted on Myspace, is this fair use?