Accused Infringer Attacks Copyright Registration Forms to No Avail

MP3tunes was an online music service that allowed users to search the Internet for free songs and to store those songs in the users’ MP3tunes personal online storage lockers.  EMI Inc., a music publishing company, sued MP3tunes and its founder, Michael Robertson, for copyright infringement.  Trial for this case is set to begin in late February 2014.

For one of his pretrial motions, defendant Robertson moved to exclude evidence regarding copyright registrations for cover art for sound recordings, arguing that sound recording (SR) registrations cannot include cover art and that some copyright registration forms were not correctly filled out.  Excluding evidence from being presented at trial means that that evidence cannot be used by a party to establish a claim or defense.  The idea is to exclude certain key evidence or exclude enough evidence to prevent an opposing party from establishing her case.

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Co-Author’s Copyright Registration Does Not Strip Other Co-Author’s Rights

Two issues of first impression came before the Third Circuit in Brownstein v. Lindsay.  “First impression” means that it is a new legal issue for that court.  The first issue of first impression addressed the point in time at which a joint authorship claim under the Copyright Act arises and accrues. In other words, when does the statute of limitations start running for joint authorship claims?  The second issue addressed whether courts have the authority to cancel copyright registrations.

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Spank Author’s Estate Whacks Music Publishers on Appeal

This case centers on rights to the musical composition “Spank.”  Ronald Louis Smith, Sr. wrote Spank in the late 1970s.  Smith’s estate later sent a cease and desist letter to one of the music publishers and filed copyright grant termination notices.  Smith’s estate followed up by suing the music publishers and others in federal court.  The Eleventh Circuit faced this question:  Can the author of a musical composition rely on the registration filed by the publisher for standing to sue under the Copyright Act, when the author assigned his rights in the sound recording to a different publisher in exchange for royalties, but that agreement is silent regarding the ownership of the musical composition rights?  The Eleventh Circuit ruled that, yes, the author does have standing to sue under such circumstances and reversed the district court’s ruling.

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District Court Sometimes Required to Consult With Register of Copyrights

Mark Swift entered into a partnership with Michael Schaltenbrand and Joey Siddle.  They agreed that Medicate Pharmacy, a retail pharmacy owned by Schaltenbrand, would provide mail-order services to customers found by DeliverMed, a marketing firm owned by Swift.  The parties agreed to use the DeliverMed name to identify the services the partnership provided to customers.  Swift hired Deeter Associates to design a logo for the partnership to use in marketing its services.  Allan Kovin orally agreed with Linda Deeter, Deeter Associates’ Executive V.P., to perform the logo work as an independent contractor.  Kovin created a graphic design of a house and pestle and was the sole creator.

A dispute erupted among the partnership members.  Swift sued Schaltenbrand, Siddle and Medicate for federal and state law claims.  DeliverMed, Deeter Associates and Linda Deeter also sued the defendants, alleging trademark infringement claims for the defendants’ use of the logo.  Deeter Associates and Linda Deeter agreed to file the suit in exchange for a cash payment and expenses reimbursement from Swift.  DeliverMed applied to register a copyright for the logo.  DeliverMed represented to the Copyright Office that Linda Deeter was the author of the logo and that she transferred her copyright to DeliverMed by written agreement.  One week later, Deeter actually did sign a transfer of ownership agreement.  DeliverMed, Deeter Associates and Linda Deeter then amended their complaint to include a copyright infringement claim.  The district court ruled in the defendants’ favor on the copyright infringement claim and invalidated the copyright registration.  The Seventh Circuit Court of Appeals affirmed the district court’s ruling on the infringement claim, but determined that the district court erred in invalidating DeliverMed’s copyright registration.

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Admitted Copier of Diagram on the Hook for Copyright Infringement

Mary Lippitt has pursued excellence in the organizational management field for many years.  In 1987, she created a diagram “to encapsulate and communicate the results of her research on the failures of complex organizational change initiatives.”  (Opinion pdf page 2).  The diagram provided a visual depiction of her determination of the most basic variables and likely outcomes.  She registered her copyright in the work containing the diagram.  At the time of this litigation, she no longer had a copy of the work she originally registered.  She registered other versions of the diagram as part of other works she created in 2000 and 2003.

Donald W. Warrick teaches in the organizational development field.  He admitted to copying Lippitt’s diagram and even credited her at the bottom of some of his versions of the diagram.  Lippitt sued Warrick for copyright infringement.  Warrick brought a motion for summary judgment, arguing that Lippitt could not prove ownership of a valid copyright, that the diagram was not copyrightable and that Warrick’s diagram did not infringe protectable expression in Lippitt’s diagram.  The district court granted Warrick’ motion for summary judgment without issuing a written opinion.  The Tenth Circuit Court of Appeals reversed, ruling that Lippitt’s expression did not merge with the underlying ideas, that Lippitt selected, coordinated and arranged the elements of her diagram in an original way and that Lippitt did meet the statutory registration requirement.

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Copyright Owner Fails To Establish Foreign Publication of Work, Loses Case

Kernel Records Oy owns the copyright for a song entitled Acidjazzed EveningKernel sued Timothy Mosley and others for infringing Kernel’s copyright in Acidjazzed Evening with the song entitled Do It.  Kernel did not register its copyright in Acidjazzed Evening with the U.S. Copyright Office before filing suit against Mosley in the U.S. or before the district court made its final decision.  Kernel argued that Acidjazzed Evening was first published as a foreign work, so that registration in the U.S. was not required for Kernel to sue Mosley for copyright infringement.  Mosley argued that Acidjazzed Evening was first published on the Internet, was therefore simultaneously published throughout the world, and that registration in the U.S was required before Kernel could sue Mosley for copyright infringement in the U.S.

The district court agreed with Mosley and granted Mosley’s motion for summary judgment.  The Eleventh Circuit Court of Appeals ruled that there was a genuine issue of material fact regarding the publication of Acidjazzed Evening and that the district court erred in granting Mosley’s motion for summary judgment.  The Eleventh Circuit upheld the district court’s decision in Mosley’s favor on the alternative ground that Kernel did not present sufficient evidence to show that it complied with the statutory requirements regarding publication.

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Marybeth Peters Speaks About Ongoing Copyright Issues

This week I had the opportunity to hear former United States Register of Copyrights Marybeth Peters speak about ongoing copyright issues in the United States.  Her talk was entitled “Looking Back and Moving Forward:  Copyright’s Biggest Issues.”  Ms. Peters spoke at a Lewis & Clark Law School lunch in Portland, Oregon.  The lunch was co-sponsored by the Intellectual Property Section of the Oregon State Bar and the Copyright Society of the U.S.A., Northwest Chapter.  Lewis & Clark Law School is nationally recognized for its intellectual property law program, something I did not realize until I heard Dean Robert Klonoff’s remarks.

Ms. Peters must be the ultimate authority on events occurring at the Copyright Office since 1966, when she began working there.  It was fascinating to hear her speak about copyright issues.  Anyone who has a chance to hear Ms. Peters speak should jump at the opportunity.

Ms. Peters was the Register of Copyrights from 1994 to 2010.  The Register of Copyrights is the director of the Copyright Office of the Library of Congress. 17 U.S.C. §701

Ms. Peters stressed that copyright is a balance of interests and that compromise is essential in reaching that balance.  Here are some of the major issues she sees moving forward:

  • Recording artists’ public performance rights in the non-digital broadcasts of their sound recordings
  • Orphan works
  • Section 108 Reproduction by libraries and archives
  • Termination of rights
  • Section 104A restoration of copyrights for foreign works
  • Registration of photographic works by photograph licensing companies

Musical recordings are complicated because there are a number of independent copyrights associated with a single song.  Currently, recording artists and companies have no public performance right in non-digital broadcasts of their sound recordings.  17 U.S.C. §114.  Royalties for music broadcasts by a radio station, for example, go to the copyright owners of the musical compositions, but not to the recording artist or production company.  Recording artists and production companies are compensated through the sale of their recordings, but since there are now many ways to listen to a song without buying it, the possible revenue streams for recording artists are shrinking.  The Administration’s White Paper on Intellectual Property Enforcement Legislative Recommendations that I discussed in my post entitled “Illegal Streaming” a Felony? White House White Paper Directed at Activity that is Already Criminal proposes creating a right of public performance for copyright owners for sound recordings transmitted by over-the-air broadcast stations.

Orphan works are works for which the copyright owner cannot be located.  The problem is that these works are still protected by copyright law, even though their owners cannot be found, and are protected to the same extent as works for which the copyright owner is known.  The Importance of Orphan Works Legislation further describes the magnitude of the orphan works problem.

17 U.S.C. §108 allows libraries to reproduce copyrighted works under limited circumstances.  The problem is that the statute was designed to address reproduction by photocopying and does not adequately address the prevailing practice of making digital copies.

Termination of rights under 17 U.S.C.§203 was the subject of my blog post entitled Termination of Transfers Provision Applies to All Authors, Not Just Musicians.  This statute provides a mechanism for authors to terminate transfers or licenses granted on or after January 1, 1978, thirty five years from the date the grant was made.  Ms. Peters’ questions included:  What is an author?  What law governs works created after January 1, 1978, for contracts signed before that date?  Are the rights granted when a contract is executed or when the works are created?  The answers to the two previous questions determine whether the 1909 Act or the 1976 Act applies.  The Acts differ in important respects, so it matters which Act applies.

Section 104A restores lost copyrights to foreign authors under certain conditions.  In essence, it removes works from the public domain and gives foreign authors back their copyrights in those works.  It was enacted to bring the U.S. into compliance with the agreement on Trade Related Aspects of Intellectual Property (TRIPs).  Golan v. Holder challenges the restoration of copyrights to foreign authors under the Copyright Clause and on First Amendment grounds.  It is currently set for review before the U.S. Supreme Court.

The issue regarding the registration of photographic works by photograph licensing companies, such as Corbis Images, is that these companies were allowed to register photographs in batches, without listing each photographer individually.  The validity of some of these registrations is now being challenged.  Many of these photographers did not independently register their works.  Copyright exists from the moment a work is fixed in a tangible medium (17 U.S.C. §102), so these photographers still have their copyrights in these photographs.  Statutory damages are what is at stake in this issue.  17 U.S.C. §412(2) provides that statutory damages are not available unless the work was registered within three months after the first publication of the work.  If statutory damages are not available, the copyright owner must prove her actual damages and the infringer’s profits (17 U.S.C. §504), a fact intensive and extremely expensive process.

Ms. Peters discussed the Google book settlement case in the context of the orphan works and the §108 library reproduction issues.  She stated that the Google book settlement case has changed the way people view copyright throughout the world.  See my blog post entitled Google Book Settlement Rejected – For Good Reason for the highlights of the Google book settlement case.  Related to the Google book settlement case, but not directly involving Google, is a lawsuit filed by author groups against the HathiTrust and several universities for creating digital copies of books without the permission of the authors or other copyright holders.  Ms. Peters pointed in particular to the part of the lawsuit that objects to the HathiTrust’s plans regarding orphan works.  Authors, Copyright, and HathiTrust by Kenneth Crews briefly summarizes the issues involved in the litigation and provides numerous relevant links.

Ms. Peters obviously enjoys discussing copyright issues and is an entertaining speaker.  It was well worth my trip to Portland from the Seattle area to hear her speak.