Copyright Law Blog: Exclusive Rights

Author Archives: Shourin Sen

Attorney Shourin Sen advises on a broad range of copyright trademark, licensing, trade secret, right of publicity, privacy, corporate representation and litigation matters. Prior to opening his firm, Mr. Sen worked on intellectual property and general corporate issues at an academic publishing house. In 2006, Mr. Sen was a Legal Intern for Chief Judge Khalida Rachid Kahn at the United Nations International Criminal Tribunal for Rwanda. Mr. Sen performed bass and taught music before he entered law.

Fair use cocaine lines and a donkey and elephant humping

Shourin Sen - 7 December 2008 – 8:15 pm

Filed under Fair Use, News

How’s that for a drudge headline?

I just received the greatest Christmas gift evah’, a copy of Goodnight Bush, by Erich Origen & Gan Golan. The book is dork-candy for anyone obsessed with politics and copyright. (Thanks Nancy!)

Anyway, Goodnight Bush presents itself as a parody of the children’s classic Goodnight Moon. Instead of a child saying “goodnight” to everything around (“Goodnight Cow. Goodnight Moon. Goodnight cow jumping over the moon. Goodnight light, a red balloon . . .”), Goodnight Bush features our President saying “goodnight” to legal constructs (“Goodnight Constitution. Goodnight evolution”).

Little, Brown & Co., the publisher of Goodnight Bush, takes a number of steps to make it more likely that, should they be sued for copyright infringement, their work would be shielded from liability under fair use. The publisher placed labels on the front and back cover (“This book is a parody and has not been prepared, approved, or authorized by the creators of Goodnight Moon or their heirs or representatives”) and an artistic explanation on the last page that details how Goodnight Bush targets Goodnight Moon.

Of more interest to me, though, is how the authors may have designed the pictures in the book to bolster a fair use claim. This brings us, once again, to my favorite topic: how copyright shapes the content of artistic works. In this case, cocaine lines and a stuffed donkey and elephant humping.

In Goodnight Bush, our President is shown redying for sleep in his bedroom. As the story progresses, you see Mr. Bush in the same room with minor deatail alterations. When we first visit President Bush, there are five lines of cocaine on his nightstand. Each time we revisit the scene, there is one less line, until they’re all gone on the third to last page (“Goodnight failures everywhere”).

Likewise, the stuffed animals are shown in different poses. First the elephant and the donkey are standing alongside each other (above). Then the elephant is humping the donkey. Toward the end of the book, the donkey is shown humping the elephant — ostensibly portraying the Democratic Party’s success in the 2006 election cycle.

Let’s take a step back for a moment to review why these two inclusions bolster the authors fair use claim. As a threshold question, to run a fair use analysis, a court would first have to decide whether Goodnight Bush deserved to be evaluated as a parody. The test for parody, as stated by the Supreme Court in Campbell v. Acuff Rose Music, is “whether a parodic character may reasonably be perceived.” For the purposes of this diary, we’ll assume that a court would find Goodnight Bush is a parody.

Once the threshold question of whether a work is a parody is satisfied, it would shape a court’s evaluation of the four fair use factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantially 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.

To shoot through the factors quickly, the (1) authors’ purpose for Goodnight Bush is commercial, but as the Supreme Court set forward in Campbell, the purpose of a work isn’t dispositive and doesn’t preclude an evaluation using the other three factors. The (2) nature of the copyrighted work isn’t “likely to help much in separating the fair use sheep from the infringing goats in a parody case, since parodies almost invariably copy publicly known, expressive works.”

In terms of (3) the amount and substantiality, Goodnight Bush mimics Goodnight Moon closely, but, as the Court described in Campbell, parody by necessity must incorporate a substantial amount of the preceding work. “When parody takes aim at a particular original work, the parody must be able to “conjure up” at least enough of that original to make the object of its critical wit recognizable.

So, the factor that is likely to be given strong weight in a potential parody case such as this is (4) the effect of the use upon the potential market for or value of the copyrighted work. As the Supreme Court noted in Campbell, the only harm that we are concerned about in a parody fair use evaluation is “the harm of market substitution. The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the like threat to the original market.”

The less likely Goodnight Bush is to act as a market substitute for Goodnight Moon, the more likely it would be found to be shielded from liability. So how could the authors make sure that the book was completely unsuitable for the Goodnight Moon’s target audience? How could they make sure that Goodnight Bush couldn’t be used by parents to read to their children?

Cocaine lines and stuffed animals humping. What a funny, strange world we live in.

As an end note, the Supreme Court in Campbell explicitly stated that courts shouldn’t evaluate whether “a parody is in good taste or bad” when running a fair use analysis. Quoting Holmes:

[I]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke.” Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (circus posters have copyright protection).

Did Ben Franklin write the Progress Clause?

Shourin Sen - 4 December 2008 – 10:04 pm

Filed under Academia

I’m working through David McCullough’s biography of John Adams, which really is as good as everyone builds it up to be. McCullough offers this gem when introducing Benjamin Franklin [p. 80]:

It was Franklin also who had led the way in establishing the American Philosophical Society, “for the promoting of useful knowledge,” with the result that Philadelphia had become the center of American thought and ideas.

Sure enough, an introductory page from the first publication (1771) of the monograph series “Transactions of the American Philosophical Society” stated the society’s goal:

The Promoting of useful Knowledge in general, and such branches thereof in particular… being the express purpose for which the American Philosophical Society was instituted; the publication of such curious and useful Papers as may, from time to time, be communicated to them, becomes of course, one material part of their design.

The second clause of Article I, Section 8, Clause 8, seems to mirror this language relatively closely:

The Congress shall have the power . . . To promote the Progress of Science and the useful Arts by securing for limited times to Authors and Inventors the exclusive right to their respective writings and discoveries.

This is hardly unequivocal proof, but this turn of phrase wasn’t in either the Statute of Anne (“An act for the encouragement of learning”) or the English 1624 Statute of Monopolies (“An act concerning monopolies and dispensations with penal laws and the forfeiture thereof”).

The construction also isn’t found in the other formulations suggested by Madison and Pickney for the clause. See Malla Pollack, What is Congress Supposed to Promote?: Defining “Progress” in Article I, Section 8, Clause 8 of the United States Constitution, or Introducing The Progress Clause, 80 Neb. L. Rev. (2002):

Madison:
- “To grant to literary authors their copy rights for a limited time”
- “To encourage by premiums & provisions, the advancement of useful knowledge and of discoveries.”
Pinkney:
- “To grant patents for useful inventions.”
- “To secure to Authors exclusive rights for a limited time.”
- “To establish seminaries for the promotion of literature and the arts & sciences.”
- “To establish public institutions, rewards and immunities for the promotion of agriculture, trades, and manufactures.”

Director of “Funny Face” survives motion to dismiss on suit targetting Audrey Hepburn Gap Commercial

Shourin Sen - 3 December 2008 – 10:52 pm

Filed under News

I’m not sure what to say about this case. It’s an in-house counsel’s worst nightmare: an oversight or lost contract from fifty years earlier, combined with creative litigation tactics to skirt the statute of limitations.

Donen v. Paramount Pictures Corp., CV 08-03383 DDP, 2008 WL 5054340 (C.D. Cal. Nov. 20, 2008).

Stanley Donen directed the movie “Funny Face,” which included a famous Audrey Hepburn dance scene. Enter the Gap, Inc., which created this commercial in 2006:

Mr. Donen alleged that he never executed an employment contract with Paramount for his work on the film. Donen claimed that he “acquiesced” to Paramount’s licensing of “Funny Face” for fifty years as an “entire” work for exhibition in theaters, television, and “subsequently developed media.” But he claimed that the Gap’s use of the movie in a commercial infringed his copyright because he never “acquiesced” for the film to be used in a third party’s advert. Donen brought suit for copyright infringement or, in the alternative, an accounting and breach of implied contract.

1. Standing

Paramount argued that Donen doesn’t have standing to assert copyright infringement because, under his employment agreement, he had assigned any rights in “Funny Face.” At the time Donen directed “Funny Face” he was under an exclusive contract with Loews, that assigned to the film studio all rights and proceeds from all of his work. But, according to the court, the contract didn’t address any work Donen performed for third parties. The court found that when Loews agreed to permit Paramount to contract with Donen for his work, there was no express assignment of Donen’s rights in his work.

Paramount argued that Donen’s employment was presumptively deemed a “work made for hire” or, alternatively, that his services were merely “loaned” without granting him the capacity to acquire rights to his work. The court rejected this argument noting that the Loews agreement states that Donen could be loaned “in any capacity,” which the court asserts “includes relationships beyond the traditional employer-employee or work for hire settings.”

2. Separate ownership of dance scene

Donen claimed three separate ownership interests in “Funny Face”: full ownership of the entire picture; co-ownership of the entire picture; and ownership of the dance scene. The Court dismissed Donen’s claim to ownership in the dance scene on the grounds that Paramount registered and renewed the copyright for the “entirety” of “Funny Face.”

3. Copyright ownership/creation of an implied trust

The court explained:

Under the 1909 Act, when a copyright was registered by a co-owner or non-owner of the right, the copyright registrant held an ownership interest “in trust” on behalf of the non-registering additional or “true” owner. Maurel v. Smith, 271 F. 211, 215 (2nd Cir.1921); see also Oddo v. Ries, 743 F.2d 630 (9th Cir.1984) (a co-owner’s duty to account to another co-owner comes from “equitable doctrines relating to unjust enrichment and general principles of law governing the rights of co-owners” (internal quotations omitted)). Similarly, a co-owner who renews alone under the 1976 Act takes legal title to the renewal copyright as constructive trustee on behalf of the non-renewing co-owner. Pye v. Mitchell, 574 F.2d 476, 480 (9th Cir.1978).

Paramount argued that the ’09 Act only creates a trust when a co-owner registers an undisputed joint work solely in the first author’s name. The court found no precedence for this reading and denied dismissal.

4. Statute of limitations/latches

The court sets out two interrelated tests for addressing the statute of limitations issue:

A claim for infringement must be commenced within three years after a claimant has “knowledge of a violation or is chargeable with such” (Roley v. New World Pictures, 19 F.3d 479, 480 (9th Cir.1994)); and
An “authorship” claim or or subsidiary claim for accounting is barred three years from “plain and express repudiation” of authorship Aalmuhammed v. Lee, 202 F.3d 1227, 1230-31 (9th Cir.2000).

Donen contended that Gap’s advertisement was released in 2006, thus satisfying the infringement SOL, and that there was no “plain or express repudiation” of his claim of authorship to trigger the authorship SOL. The Defendants argued that “Funny Face” was released with a copyright notice in its opening credits that exclusively mentioned Paramount, and that this should represent a “plain or express repudiation.” The court noted that it’s unable to consider evidence outside of the pleadings on a motion to dismiss; and that the registration of a federal copyright by itself does not provide “plain and express repudiation.” The court similarly refused to rule on the latches claim, stating that a decision would require use of extrinsic evidence.

5. Implied contract claim

The court denied the motion to dismiss the breach of implied contract claim, finding that Donen’s agreement with Loews didn’t expressly cover his work for Paramount.

Documents:

Krishnamurthy: The Statutory Mechanical License in India: Whose Version [of the Law] is Correct?

Shourin Sen - 29 November 2008 – 10:38 pm

Filed under Academia, Foreign, India, Mechanical royalties, Music

Nikhil Krishnamurthy, everyone’s favorite Indian practitioner/flamethrower, recently posted an article on the compulsory license in musical compositions. I wrote about one of Mr. Krishnamurthy’s other papers last week.

Apparently, Indian courts have split on whether an artist can cover a song under the Copyright Act’s compulsory license provision without first obtaining permission from the original author (provided that an authorized version of the song has been released for two-years). The relevant part of Section 52(1)(j) of the Indian Copyright Act states as follows:

The following acts shall not constitute an infringement of copyright, namely: (j) the making of sound recordings in respect of any. . . musical work, if . . .(ii) the person making the sound recordings has given notice of his intention to make the sound recordings, has provided copies of all covers or labels with which the sound recordings are to be sold, and has paid in the prescribed manner to the owner of rights in the work royalties in respect of all such sound recordings to be made by him, at the rate fixed by the Copyright Board in this behalf[;] Provided that. . . (iii) no such sound recording shall be made until the expiration of two calendar years after the end of the year in which the first sound recording of the work was made. . .

Mr. Krishnamurthy contends that permission of the original author isn’t required for a subsequent musician to record a cover, provided that an authorized version of the original was released two-years earlier. First, Mr. Krishnamurthy’s argues that Section 52(1)(j) would be redundant if permission were always required. Secondly, Mr. Krishnamurthy makes the historical argument that Indian copyright law has featured a compulsory license provision since the Copyright Act of 1957 incorporated the scheme of the English Gregory Report (report of the Copyright Committee of 1952). Mr. Krishnamurthy’s states that, absent any evidence to the contrary, there should be a presumption that Parliament didn’t intend “drastic” changes to a policy the Indian Copyright Act has contained since its foundation.

___________________________

I find the idea that it would be financially advantageous for the Indian recording industry to limit covers interesting, even if it’s only for a period of two years. There is no comparable holding-period under American copyright law. This seems like the type of limitation that the American recording industry could have pushed Congress to enact years ago if there was any impetus. This brings us to my favorite topic: how it may be beneficial for individual countries to have differing copyright structures, and inversely, how differing copyright structures may foster varying performance practices.

I can think of a number of reasons for why the Indian recording industry might want a two-year exclusivity period, when it wouldn’t be called for in the U.S.:

First, as suggested by Mr. Krishnamurthy in his article, the Indian music industry is centered around Bollywood musicals. Given that film is central to marketing, it’s not unreasonable to think that songs in India are more important to a recording’s success than they are in the U.S. I.e. in India, songs are the stars; in the U.S., performers have a comparatively larger effect than songs on album sales.
The absence of a performance right in sound recordings under U.S. copyright law provides a disincentive for American musicians to make cover recordings. Unless an American musician records songs that they write, they are closed out of radio related royalties. Indian copyright law grants performance rights to both composers and performers so that, even if an Indian performer records a song they didn’t write, they still receive some royalties for radio play.
Perhaps there are segments of the Indian market that give less credence to branding and are more accepting of sound-alike albums than many segments of the American market.
It may be more costly to track sales of cover recordings for royalty collection in India than it is in the United States. It may make more sense for Indian labels to limit all covers rather than spending money trying to track cover sales.

These are just my best guesses. If any of this blog’s Indian readers would like to evaluate or add to the potential rationales, I would love to hear any comments.

Nikhil Krishnamurthy, The Statutory Mechanical License in India: Whose Version [Of the Law] is Correct?, Manupatra Intellectual Property Reports, MIPR, Vol. 1, p. A-115 (March 01, 2007).

Baltimore Ravens’ use of logo in memorabilia held to be fair use in long-running dispute

Shourin Sen - 26 November 2008 – 12:19 am

Filed under Fair Use

Frederick E Bouchat v. Baltimore Ravens Limited Partnership, et al., MJG-08-397 (Nov. 21, 2008).

In the latest chapter of a decade-long dispute, the District Court of Maryland held on Friday that the Baltimore Ravens, the NFL, and NFL Films are not liable for damages stemming from their use of an infringing logo in public displays, films and memorabilia. The Court found that the defendants’ use of the logo was shielded by fair use.

The Plaintiff, Frederick E. Bouchat, is an amateur artist who drew pictures inspired by comic books. When Bouchat learned in 1995 that the Colts were moving to Baltimore he drew a series of logos for the incoming team. In April 1996, Bouchat faxed the Shield drawing (left) to the President of the Ravens along with a note stating: “If he would like this design if he does use it I would like a letter of recognition and if the team wants to I would like a adiograph[sic] helmet.” Through what the Court labels “a series of misunderstandings,” Bouchat’s drawing was sent to the Stadium Authority’s law office; then to the Ravens’ temporary headquarters; next to the NFL in New York; and finally to the commercial artists working on the project. According to the judgment, the Ravens and the NFL used the logo (right) under the belief that it was an original work.

Bouchat consulted counsel and registered his work shortly after he became aware of the infringing work. In May of 1997, Bouchat filed a copyright infringement action, Bouchat v. Baltimore Ravens, et al., MJG-97-1470. A jury found infringement, which was affirmed on appeal by the Fourth Circuit. In the damages phase of the trial Bouchat’s counsel sought actual damages and additional profits of the infringer. A jury found that there was no profit attributable to the infringement of Bouchat’s copyrighted work, also affirmed on appeal.

Bouchat was unable to seek statutory damages because the infringement of his work occurred prior to the registration of his copyright. See e.g. Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992) (“A plaintiff may not recover an award of statutory damages and attorney’s fees for infringements that commenced after registration if the same defendant commencd an infringement of the same work prior to registration.”)

Bouchat then filed actions against several hundred NFL licensees who sold merchandise bearing the infringing symbol, none of which resulted in damage awards. In this suit, Bouchat sought an injunction against the NFL and Baltimore Ravens from depicting the Flying B Logo in highlight films, action film clips, public displays of memorabilia, and photos. The Court held that the Defendant’s infringement was shielded from liability under fair use:

Purpose and Character: The court found that the defendants’ use was historical and not, “except in the most tangential sense,” commercial. Supporting this finding, the Court included a funny ten-page history of logos used by the colts at the beginning of the opinion.

Nature of the Work: Siding with the plaintiff, the Court found that the nature of the work was not the type that would be copied without express permission.
Amount and Substantially: The Court found that although the logo was included in its entirety it wasn’t a major component of the entire work used, “[w]hether in a display of inaugural season tickets, a photo of a former player or . . . a Raven’s highlight film.”
Potential Effect on the Market: The Court found that there is nothing to indicate that there is any present or foreseeable market for the Bouchat’s work.

__________________

Maryland IP Law has a nice discussion on a previous iteration of this dispute.

Filings:

Frederick E Bouchat v. Baltimore Ravens Limited Partnership, et al., MJG-08-397 (Nov. 21, 2008) (decision).

SDNY Filings: Curtis James Jackson, III, “50 Cent” v. Taco Bell Corp

Shourin Sen - 24 November 2008 – 3:09 pm

Filed under Music, News

A surprisingly fun suit is brewing in the SDNY between rapper Curtis Jackson and Taco Bell Corp. According to the complaint, Taco Bell released a letter (below) on the company’s website. Curtis James Jackson, III, better known as a musician under his trade name “50 Cent,” brough suit seeking over one million dollars in damages for trademark infringement, false designation of sponsorship, and dilution, and an assortment of New York state law claims. Summarized in the complaint:

. . . Taco Bell knew that it would likely have had to pay Jackson a multi-million dollar fee to get his endorsement, even if he had agreed to do it (which is in doubt). Rather than face rejection or pay fair value, Taco Bell chose to steal his endorsement and to enjoy all the publicity of being associated with a mega-star while bearing none of the costs. Jackson brings this action to force Taco Bell to pay for diluting the value of his good name and to recover the fair value of his stolen endorsement.

The Answer, which denies most of the factual allegations, uses the following introduction:

Plaintiff Jackson is a self-described former drug dealer and hustler. He is now a rap music performer who uses the term “50 Cent” to identify himself His work falls in the sub-genre of hip hop music known as “gangsta rap,” a style associated with urban street gangs and characterized by violent, tough-talking braggadocio.

I wonder if the tone of the Answer is intended to provoke publicity.

Filings:

Krishnamurthy: Sound Advice [Or What You Always Wanted to Know About Phonographic Performance But Were Afraid to Ask]

Shourin Sen - 21 November 2008 – 3:24 pm

Filed under Academia, Foreign, Legislation, Music

SSRN has a plethora of new academic papers that look yummy. l will try to get to a couple of them over the next few weeks. In particular a white paper by Nikhil Krishnamurthy on performance rights piqued my interest. Mr. Krishnamurthy is a Senior Partner at the Bangalore firm of Krishnamurthy & Co.

Performance rights is an issue that is personally close to my heart. Mr. Krishnamurhy’s paper reads like a legal article with an investigatory journalism slant. His main points:

American recordings are not granted performance rights under Indian copyright law because the United States doesn’t grant these rights domestically. Section 40 Clause 42 of the Indian Copyright Bill of 1955 states that India grants rights to works published outside of the country on a “reciprocal” basis.
Nonetheless, the Phonographic Performance Ltd. (PPL), an Indian licensor for public performance rights, is still collecting royalties from radio stations, hotels and bars. Says Mr. Krishnamurthy: “This state of affairs is certainly due to the ignorance of the law on the part of the music user and must be remedied at the earliest.”
Mr. Krishnamurthy then argues that the high licensing rates being applied by the PPL are “in gross abuse of its monopoly position” and “have no relation to worldwide practices of corresponding societies.” Furthermore, PPL is collecting licensing fees for music videos even though the organization is statutorily prohibited from “carrying on business in other works” such as working with videograms (music videos).
The paper takes a fun shot at the Clinton Administration for, in the author’s view, not adequately protecting the rights of Indian record labels under American copyright law, while simultaneously putting India on a watch list for not providing effective copyright enforcement for American works.
Lastly, the author suggests that Indian businesses should adopt a policy of exclusively performing American works as a bargaining chip to deprive the PPL of royalties and force more equitable licensing terms for Indian works.

Links:

Nikhil Krishnamurthy, Sound Advice [Or What You Always Wanted to Know About Phonographic Performance But Were Afraid to Ask] (June 1, 2007). Manupatra Intellectual Property Reports (MIPR), Vol. 2, p. A12, 2007.

Daily News Roundup: Nov 21, 2008

Shourin Sen - 21 November 2008 – 8:44 am

Filed under News

Apple included a copy protection scheme called High-bandwidth Digital Content Protection (HDCP) on the latest models of their MacBooks, released mid-October. HDCP prevents customers from playing content on external displays.
Bowling Green High School in Kentucky tries to teach “Digital Citizenship.” Al Gore deports students who fall asleep in class.
The EU launched an online library oh so creatively named Europeana (www.europeana.eu). Huzzah! The library includes such works as Beethoven’s 9th, Dante’s Divine Comedy and other stuff from people who are dead; a total of over two million works from one thousand libraries in twenty-seven EU States (we don’t call them countries anymore).
Utah District Court Judge orders the destruction of elk. He also awarded $50,000 in damages and $30,000 in attorneys’ fees for trademark and copyright infringement.
Judy McGrath, Chief Executive of MTV-Networks, comments that a “big part of [MTV's] future is working with advertisers and distributors and maximising intersting ways to involve them.” The reporter at the Economist hints that Ms. McGrath may be referring to “being more flexible when it comes to control over content on the web.”