Podcasting: What Video Streamers, Podcasters, Webcasters (and the Like) Should Know About Copyright Law

Originally posted on December 26, 2006

By Martin Medeiros [1]

Never before has the power of production and distribution of intellectual property been so great, and the related costs so low. The Internet is the distribution tool for the masses. This does not mean, however, that legal principles have been thrown out the door. Indeed, the intent of the founding fathers of America, and the western concept of intellectual property law that was forged on the anvil of Medieval Europe is almost identical to the one today. The facts have changed dramatically, and are much more interesting, but the right to incentives for a creative class of citizens is the hallmark of intellectual property.

There are important concepts regarding the choice of content such as using images of others, portrayal of images, libel, slander, defamation, privacy and its expectations and obscenity. All of these concepts are not addressed in this article, which is intended to be a brief discussion of the area of law.

A number of cases applying these new, fast-evolving facts are making this area of the law interesting although, perhaps, confusing to some producers and distributors as old laws, new laws and new facts collide. This distinction and many others, govern the nexus between copyright law and the Internet.

1.0 What is Covered by Copyright

Copyright exists the moment expressive ideas are affixed in tangible form. These tangible forms (such as writings, recording, still photographs and motion pictures) confer on the creator six exclusive rights: the rights to copy, make derivative works, display, perform, distribute and to perform audio works digitally.

The enabling right is found in the first part of the United States Constitution.[2] The essence of the copyright law is exclusivity of control over one’s content. First, one should know what is protected. While ideas are not protected in copyright law, facts and ideas may be protected on free speech grounds under the First Amendment.[3] Registration with the U.S. Copyright office affords various benefits, among them, it creates a presumption that the work is that of the registrant, allows more financial recovery in the form of damages and legal costs, and permits the Customs Service to seize infringing goods before they enter the stream of commerce.

2.0 Contracts Matters

2.1 A Bundle of Rights. In copyright law, well-drafted contracts can trump many ambiguous common law or statutory rights. We should think of the copyright as a bundle of rights that can be sold or licensed one at a time. A contract that conveys limited rights to the various “sticks” in the “bundle” of rights given to you at law is called a “license.” Gone are the days when copyright applied only to books, maps and charts, as in the formative years of the United States of America. Now, this bundle of rights has increased by statute to include motion pictures, sound recordings and, most recently, digital rights. Effective agreements must address all of the various rights in modern productions, such as synchronization rights[4], performance rights and others. The issue of what rights are conferred is important as some are afforded copyright protection, and others are not. There is a misconception that all rights are implied in a contract.

2.2 Some Limits to a License. A similar misconception is that general music licenses include synchronization rights to images and even different audio works. When you use music from others, you must know how you are permitted to use it. Litigation can result if the rights licensed are not clear[5]. Synchronization licenses typically address two separate elements: permission to reproduce the music in connection with a particular visual work (e.g., a movie, a video recording of a concert); and limits on how the audiovisual work may be used. These limits may restrict the medium (e.g., Internet, broadcast, or cable), the territory (e.g., United States of America) and the duration of the license (e.g., one year). Sometimes, statues do fill gaps in terms, including royalties in the compulsory licensing dynamic. Other rights are left to the contract and the marketplace, for example, a synchronization license.

2.3 Synchronization Example Expanded. This license may be financially rewarding, as rights are set in the free market or between two bargaining parties, unlike a mechanical license, which permits reproduction of the music by using a mechanical device[6], which is set by federal statute. A mechanical license permits the reproduction of music in a form that may be heard with the aid of a “mechanical” device, without visual images.

2.4 Recurring Problems in Licenses Generally and Webcasters Specifically. Most cases that lead to litigation involve three scenarios between the copyright owner and the person using the copyright: (1) the license as drafted by the parties was not clear or precise enough to specifically involve digital copies, digital broadcasting, and data distribution; (2) one party regrets the transaction and seeks to get more or give less than stated in the license; or (3) someone is infringing, and has no agreement and no contractual right but relies on a statutory or common law right to infringe, such as fair use.[7] Webcasters are no exception to these generalities. Often the first attack in a copyright case challenges the subject matter of the copyright. As mentioned above, ideas themselves are not copyrightable, but facts and legal allowances can complicate things. In this context, the question is whether the content is expressive, or just and idea or data?

3.0 Can Data on the Internet Be Protected if Pushed by Webcast?

Even if the data is in the public domain, meaning the intellectual property right expired or does not exist, the compiler of data can limit the dissemination of that information through contracts.[8] Also, the investment made and time of delivery may confer additional rights depending on the facts and contractual relationships.

An example illustrating how data, facts or information are protected arises in certain “real time” data displayed on the Internet. In these cases, the proprietary compilation of data is evanescent. In one case, the investment and system management of a data-capturing network allowed the ownership of facts for thirty minutes exclusively (pursuant to a contract) or anytime before those facts went into the public domain when broadcast or published on the Internet.[9] This right sprung not from copyright law, but from a proprietor’s right to control access to its private events at a private venue.[10] While this right is similar to a trade secret[11] there is no real “secrecy” component, but there is a market value and competitive advantage component. These laws are based on the “ticker cases[12]” at the genesis of real-time stock quotations at the beginning of the twentieth century. The facts in those cases differ, but the controversy is the same: what is the right to one’s ownership of facts, or the right to publish those facts from private venues to the public. One of the most important public knowledge areas highlights the conflict between the rights granted by the First Amendment of the United States Constitution, conveying rights to the press, free speech and copyright law. Now that everyone can have a “press” in the form of a Blog, bulletin board or Web Site, what are the limits? What if the news is really important? Are you a “news” reporter?

4.0 Five Conditions of “Hot News” Claims[13]

While the public good favors making facts available as soon as possible, the law does protect those who spend money and put effort into getting facts to the public. A “hot news” misappropriation claim may survive preemption by federal copyright law. There are generally five conditions central to allowing protection for those who accumulate facts, the so-called “hot news” exception. Those conditions are: the plaintiff generates or collects information at some cost or expense; the value of the information is highly time-sensitive; the defendant’s use of the information constitutes free-riding on the plaintiff’s costly efforts to generate or collect it; the defendant’s use of the information is in direct competition with a product or service offered by the plaintiff; and the ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.[14] This exception is important on the Internet as many things are “shared” without notice or acknowledgement of the intellectual property rights of the creators.

5.0 Is Webcasting “Broadcasting”?

Again, the law steps in where contracts fail or are silent. The Supreme Court is clear in distinguishing the Internet from broadcasters.[15] However, since that decision, much new legislation, and more new facts have come into the law. Since the Digital Performance Right in Sound Recordings Act of 1995, copyright owners enjoy the exclusive right in performances of their works by digital audio transmission. These rights were extended in 1998 by the Digital Millennium Copyright Act (DMCA) of 1998[16] to cover webcasters.

Like so many other agreements, the scope of the right matters. Generally, “non subscription broadcast transmissions” from digital audio transmission performance copyright coverage do not cover simultaneous Internet streaming of AM/FM broadcast signals. The issue here is the license granted to broadcasters by the Federal Communications Commission, does not license webcasters. Broadcast transmission is operated by what we think of as radio transmission facilities, and not webcasters. [17] Therefore, webcasting, even if simultaneous with a terrestrial radio broadcast of AM/FM, does not qualify under copyright law for an exemption from the digital audio transmission performance right. [18] So a contract that permits transmission via broadcast does not include webcasting, unless the contract specifically states otherwise.

6.0 Conclusion: What are My Webcasting Rights Worth?

Generally the free market will determine the rates – what people are willing to pay makes and controls the market. However, the DMCA promulgated a process to follow when parties cannot agree. After six months of negotiation[19], the Librarian of Congress may convene a Copyright Arbitration Royalty Panel (CARP) to set rates and terms.[20] The parties may appeal the resulting terms. While the appeal deals with cases of reasonableness, unfortunately, the Librarian may ignore real market data, as was the case in a recent dispute.[21] To limit this risk, and expense of the arbitration, parties may consider working out a deal is their best option.

More broadly, your rights are worth the care you take in creating evidence demonstrates you do care about their value. Accessing the enhanced protections available by registering the copyrightable materials is a start. Documenting permissions of those whose works you incorporate into your webcasts, and getting permissions of all those who appear in your works is also advisable. Finally, there is no substitute for a well-drafted license and “terms of use” on your website or webcast.

[1] Martin Medeiros is a Partner at Swider Medeiros Haver LLP; Chairman of the Oregon State Bar Computer and Internet Law Section; and Board Member, Vice President and Treasurer of Portland Community Media.[2] “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” U.S. Const., Art. I, sec. 8, cl. 8. [3] See, Video Pipeline, Inc. v, Buena Vista Home Entertainment, Inc., 192 F.Supp. 2d 321, 346 (D. N.J. 2002) citing, Harper & Row v. Nation Enters., 471 U.S. 539 (1985), at 559-569. [4] These rights are granted by the copyright holder, generally the songwriter, until those rights are given away. This involves the timing or synchronization of music with visual images. [5] See, e.g., Freeplay Music, Inc. v. Cox Radio, Inc. (S.D. New York 2005). [6] For example, a tape or compact disk. [7] Fair use “creates a limited privilege in those other than the owner of a copyright to use the copyrighted material in a reasonable manner without the owners consent.” Fisher v. Dees, 794 F.2d 432, 435 (9th Cir. 1986). [8] ProCD Inc. v. Zeidenberg, 86 F.3d 1447, 1451 (7th Cir. 1996). [9] In the Court allowed the exclusive holder of the publication rights in “real time” of golf scores to own the data, if only for thirty minutes, the time required in exclusivity of score publication. Morris Communications Corporation v. PGA Tour, Inc., 235 F.Supp.2d 1269 (M.D. Florida 2002). [10] Id. At 1281. [11] Trade Secret is a scion of unfair competition and is governed by state and federal law. The Uniform Trade Secrets Act (“U.T.S.A.”) was promulgated by the National Conference of Commissioners on Uniform State Laws. “Trade secret” means information, including a formula, pattern, compilation, program device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. U.T.S.A. § 1 (4) (1985). [12] See, e.g., Board of Trade of the City of Chicago v. Christie Grain and Stock Company, 198 U.S. 236 (1905); Moore v. New York Cotton Exchange, 270 U.S. 593 (1926). [13] See, National Basketball Ass’n v. Motorola, Inc. 105 F.3d 841, 852 (2d Cir. 1997). [14] Id. at 854. [15] The three distinctions include, (1) the Internet has not historically been regulated by an agency familiar with the medium, (2) available frequencies on the Internet are not scarce as they are on radio; and (3) affirmative steps are required to access information on the Internet. See Reno v. American Civil Liberties Union, 521 U.S. 844 (1997). [16] DMCA, Pub.L. No. 105-305; see 17 U.S.C. § 114(f)(2). [17] Bonneville International Corporation v. Peters, citing 17 U.SW.C. § 114(d)(1)(B). [18] 17 U.S.C. 106(6). [19] 17 U.S.C. § 114(f)(2)(A). [20] 17 U.S.C. § 114(f)(2)(B). [21] Beetoven.com LLC v. Librarian of Congress, 394 F.3d 939 (D.C. Cir. 2005).

Retelling Old Children’s Stories – Copyright and the Public Domain

Originally posted on October 4, 2007

By Kohel Haver

A walk through the children’s book section of a bookstore will reveal new children’s stories with wonderful illustrations. Among them will be retellings- new versions of old stories; these newer versions are commonly revived with updated illustrations. This raises the question, as a matter of US copyright law, what is a contemporary artist free to use and how circumspect should an illustrator or author be regarding copyright issues and copyright infringement with the retelling of old stories? How is a contemporary author or illustrator to know what they can and they can not use?

Most answers, with regard to copyright law and children’s stories are prefaced by “depending on all of the facts.” This is why: the root of the US copyright law, and the copyright law of most nations, is to grant authors illustrators the monopoly right to control the reproduction, in its many forms, of their original works or authorship for the duration of the copyright. The law favors their contribution and the right to profit from their original work. The law also figures ideals of free speech and free expression into the formula. A copyright is secured only for a limited time.

How long does copyright protection last?

In the US, the term of the protection has changed over the years from a just few years in 1800’s – in the 1909 revision the exclusive right lasted 28 years and was renewable, and since 1976 the protection lasts beyond the life of the author. Many children’s stories are original to the author, and original works of authorship written in the United States are now protected under the US copyright law for the life of the author plus 70 years. Original works of authorship are protected for a long time. But recall that the copyright law is a balance between the exclusive rights of the authors and the rights of everyone else to freely share in our common heritage – the public domain. When the work is no longer protected under copyright it enters the public domain – free for anyone to use. A general rule of thumb is that if the book was published over 75 years ago it is likely no longer protected by copyright law in any country.

Public Domain and Folktales

As well as originating in other countries, many children’s stories are based on traditional stories passed down through families and are by their nature in the public domain, free for the public to use. If they ever were, they are no longer protected under copyright law, which means they are free to anyone to tell and interpret without license or paying a royalty. Most authors of children’s books know that there are many themes for stories that have been around for many years. How is a new author to know whether their work is original and completely their own, or when it is based on a traditional story? What happens when their repetition is the product of some unconscious connection with a childhood story? Where is the line? What if one retells a traditional story but with original illustrations – in that latter case is the modern author entitled to exclusive ownership of only what they bring to the story? And what happens when that story inadvertently turns out not to be as original to the author as the author intended?

How does Disney do it?

As an example, the Disney Company has been bringing their versions of traditional children’s stories to the public for many years in the form of animated films. Many of these stories have their basis in the public domain, stories that are no longer protected under copyright and anyone is free to produce their version of the story. The Disney Company had been quite successful retelling old public domain stories. Lewis Carroll wrote the original Alice in Wonderland, Carlo Collodi wrote Pinocchio, The Grimm Brothers wrote Snow White and Cinderella, Rudyard Kipling wrote the Jungle Book, Victor Hugo wrote the Hunchback of Notre Dame, Hans Christian Andersen wrote The Little Mermaid, Kenneth Grahame wrote The Wind in the Willows, and AA Milne wrote Winnie the Pooh.

All of these examples illustrate that even when the initial story is in the public domain, a new author can own what they add to the story. Of all of those Disney films, Disney animation created versions of the stories unique to them, and Disney has a copyright interest in all of their animation. It’s also true that anyone is permitted to tell and publish his or her own interpretation of Snow White, but must do so without referencing the Disney animation. Playing in a theater this month is a teen story called “Sydney White.”

On the subject of duration of copyright, you can’t always rely on the statute. In the case of Peter Pan, when the copyright protection expired, the UK Parliament made a special exception for the law because the royalties for the copyright is held by the trustees of the Hospital for Sick Children, Great Ormond Street, in London. The copyright for that work is now, in effect, perpetual under the Copyright, Designs and Patents Act 1988, section 301, although the copyright technically expired in 1987.

No One Owns Fact

Another area where a new author would be free to use source material is when that source material is based on fact. The facts that a seed grows into a plant, ants live with some social order, bees make honey, squirrels are furry, and seals bark are all facts and as facts those characteristic points are available for anyone to write about. However, the precise manner of expressing those facts can be owned by one author – but only to the extent that the story goes beyond the facts (that is the protectable part.) So in the story “Our Furry Friend the Squirrel” about the squirrel that we call Fred Crackers who lives in the oak tree in our yard – the author can own anything that is not about a generic squirrel, oak trees and yards. Anyone can write their own story about a squirrel, but this author owns the amusing anecdote about Fred Crackers stealing a ride in the travel box on top of the car to the supermarket, where Fred goes through the open doors, jumps up on the peanut display, fills his mouth with nuts and runs back to the car roof waiting for his ride home.

There are other areas where copyright law presents some uniquely interesting issues – such as math and science stories. The general rule is that the facts are not protectable includes math and science facts. Bobby has one apple and Billy has five apples together they have six apples is mostly facts. One plus five equals six is a fact, and not protectable. Would this be true if the problem took five pages to explain? Here we must be able separate the facts, or the science, from the creative embellishment. Facts are in the public domain but the story may not be. This concept is made more difficult if the second author did not know about the work of the first. The question arises – is there only one way to describe that problem?

What is Infringement?

To understand the trouble you should know a little about copyright infringement lawsuits. The easy case of copyright infringement is with the unauthorized interference with the author’s exclusive right to control the copy, display, or preparation of derivative works of an original work of authorship that occurs when the infringer knowingly makes a copy of some protected material and sells it. If you make copies of that Disney DVD, without their permission, and sell them in the parking lot – that is certainly copyright infringement. Copyright infringement is a sort of a strict liability problem – meaning that it does not help your case that you didn’t know that what you did was wrong. If you made and distributed copies, you are liable for infringement, although the penalties might be less if you are innocent.

How much did you use?

While it would be unnecessary to remind an author that copying someone else’s work would likely be infringement, you also know that ideas are not protectable. Similarly taking a very small amount, a minimal amount, of published work might also be acceptable under a section of the law called “Fair Use”. Fair Use is a feature of the copyright law – it defines certain situation where one can use a small and reasonable amount of work without permission. News reporting, commentary (reviews) scholarly work are all considered a fair use of copyrighted work. The law also offers four considerations when making the decision if fair use applies. The considerations are 1. What kind of work was taken, 2. How much of it was used. 3. How are you using it? (what is the type of profit or non profit venture) and 4. What was the effect on the market for the original? Using this analysis if the new work is a substitute for the original that won’t be a fair use if it takes only what one would need to reference the original work that is likely to be fair.

Did you see it or hear before you copied it?

If the infringer had access to the original work and intentionally violated the rights of the author – the infringer will have liability. But what happens when the infringer does not have access – has never seen the original work but still comes up with a copy. It’s unlikely that this will happen, but to prove infringement you need to prove the infringer had access to the original work, copies were made and that the works are similar. If there is proof of access, the amount of similarity required to make the case is a lesser standard. If it is a completely independent coincidence that the two works are similar, both can exist without infringing the copyright of the other. George Harrison made that argument when he was accused of infringement in his song My Sweet Lord – it was too similar to the song He’s So Fine by the Chiffons. The case turned on the fact that a musician of his stature had likely heard the Chiffons tune, and while he didn’t recall doing so, that tune was copied in his song. The case settled. If you read a lot of children’s books and are a professional, the inference will be made that you had access to the original and that you intentionally or otherwise copied it.

Does that mean you are foreclosed from using the ideas or influences of another work? Certainly not – only the expression is protected. The ideas, like the facts and like the stories in the public domain, are all there for you to use.

It’s Not Complicated.

The rules you should follow are not that complicated, and if you follow them you will write something that you can publish without concern that you will receive that nasty letter telling you to cease and desist stealing from another children’s book author.

Taking Advantage of Web 2.0 and the DMCA Safe Harbor For Online Service Providers

Originally posted on October 25, 2007

By Tom Graves

INTRODUCTION

The phenomenon that has been dubbed “Web 2.0” offers a plethora of new avenues for communication, cooperation and innovation. The first major wave of mainstream Internet use saw the fast deterioration of certain “barriers to access” in publishing and other forms of media distribution. As more and more individuals become Internet savvy, and as new developments in technology allow richer forms user generated content to be shared over the Internet, online communities have grown in number, complexity and variety.

The ease of access to such a versatile and powerful media outlet has naturally led to more and more individuals trying their own hands at creating online forums and fostering online communities, whether for personal, financial or political advancement. The opportunities are vast, and these individual efforts promise to enliven the Internet space even further, but proper steps must be taken to ensure that legal snares do not hinder the progress of a fledgling online community, or the continued viability of an established one.

One legal area that has been a hot topic ever since the mass-market web browser was first launched involves copyright law. First there was text, then visual images, then music, then video and multimedia. There is hardly a form of copyrightable content that has not been significantly impacted by the development of the Internet. With stiff criminal and civil penalties for copyright infringement still firmly on the books (e.g. the recent $220,000 verdict won by the RIAA against a single file-sharer), it goes without saying that those who create and maintain frameworks for the reproduction and distribution of copyrightable content would be wise to take whatever steps are available to steer clear of such devastating consequences.

Thankfully, copyright law itself provides at least one proactive way for online service providers to avoid liability for copyright infringement in cases where the infringing activity was instigated by a third-party user. This protection is known as the “safe-harbor” or “notice-and-takedown” provision of the Digital Millennium Copyright Act (DMCA) and can be found in Section 512 of the Copyright Act.

WHAT DOES IT COVER?

Although there are technically four different DMCA safe-harbor provisions, the one most pertinent to the Web 2.0 phenomenon is set forth in subsection 512(c) of the Copyright Act, and is entitled “Information Residing on Systems or Networks at Direction of Users.” This provision protects online service providers when infringing content is “stored on a system or network controlled or operated by the service provider,” but only when the infringing content was stored “at the direction of a user.”

WHAT OTHER CRITERIA MUST BE MET TO GAIN PROTECTION?

In order to qualify for protection under the DMCA safe-harbor provision set forth in subsection 512(c), the online service provider must also meet the following four criteria:

The online service provider must not have actual knowledge that the content is infringing, or be aware of facts or circumstances that would indicate infringing activity, without promptly removing or disabling access to the infringing content;
In cases where the online service provider has the right and ability to control infringing activity, the online service provider must not receive a financial benefit directly attributable to the infringing activity;
Upon notification of claimed infringement, the online service provider must promptly remove or disable access to the infringing content.
The online service provider must designate an agent to receive notifications of claimed infringement, whose contact information must be provided to the Copyright Office and made publicly available through the service;
The online service provider must adopt and reasonably implement a policy that provides for the termination of subscribers and account holders of the service provider’s system or network who are repeat infringers, and must inform subscribers and account holders of the policy.

WHAT CONCRETE STEPS DOES AN ONLINE SERVICE PROVIDER NEED TO TAKE TO BE PROTECTED BY THE DMCA SAFE HARBOR PROVISION?

The first step an online service provider must take in order to take advantage of the DMCA safe harbor provision is to designate an agent to receive notifications of claimed infringement. This must be done through the U.S. Copyright Office, which currently provides a one-page form to be filled out and sent to the Copyright Office along with a fee of $80. This relatively simple process is described in greater detail on the web site of the Copyright Office at http://www.copyright.gov/onlinesp/, and the form can be found at http://www.copyright.gov/onlinesp/agent.pdf.

After designating an agent to receive notice of claimed infringement, the online service provider must be prepared to remove or disable infringing content upon notification of the infringement. When possible, the architecture of the web-based service should be designed to allow the simple removal of infringing content without shutting the entire service down. This type of architecture is important for obvious reasons.

After taking those two steps, the online service provider is less likely to be unpleasantly surprised by a copyright infringement lawsuit based on third-party content, as copyright holders are provided with a simple way to notify the service provider that it is hosting infringing content. However, an online service provider must bear in mind that designating an agent to receive notice of claimed infringement, and removing or disabling infringing content upon such notification, are only two of the DMCA safe harbor requirements. The online service provider must also appropriately monitor third-party use of its online service, avoid receiving a direct financial benefit by hosting infringing content, and develop a policy for terminating the accounts of repeat infringers. The nature of each of these measures will depend on the particular online service, and the assistance of an attorney may be necessary to ensure compliance.

U.S. Copyright Office Launches New E-Filing, Reduced Fees and Combined Registration Form

Originally posted on October 15, 2008

By Kohel Haver

New Combined Registration Form CO

This last summer (August of 2008) the US copyright office revised its registration forms combining the various forms which previously required a separate filing for Literary Works TX, Visual Arts VA, Sound Recordings SR and Performing Arts PA (Compositions and Screenplays) into one form with a checkbox for each type of work. You will no longer need to decide which form is appropriate but instead which checkbox to mark. For those whose habits die hard, the check boxes correspond to the prior various forms. The information collected on the new form, CO, is substantially the same as before.

E filing now available – The copyright office is also promoting electronic filing as the primary registration method with the new Electronic Copyright Office (eCO). As an incentive the online filing fee is discounted to $35.

To file a claim to a copyright in your work, we recommend you use the Copyright Office online system.

Advantages include:

Lower filing fee of $35 for a basic claim (for online filings only);
Fastest processing time;
Online status tracking;
Secure payment by credit or debit card, electronic check, or Copyright Office deposit account; and
The ability to upload certain categories of deposits directly into eCO as electronic files.

The old paper registrations are now called the “Alternate Registration Methods”

How does the new system work?

Registration with the on line Fill-In Form CO.

The next best option for registering basic claims is the new fill-in Form CO, which replaces Forms TX, VA, PA, SE, and SR. Using 2-D barcode scanning technology, the Office can process these forms much faster and more efficiently than paper forms completed manually. Simply complete Form CO on your personal computer, print it out, and mail it along with a check or money order and your deposit. The fee for a basic (old school) registration on Form CO is still $45. The following steps still apply. Complete and sign the application – enclose the $45 filing fee payable to Register of Copyrights and include the Deposit – the required copy or copies of your work

The following tips may be useful:

What to send

First – if you are unfamiliar with the copyright registration process before you register your work review the appropriate circulars on the Copyright Office website, www.copyright.gov, for detailed information about how to register particular types of works and the requirements for what copy or copies of your work to send. Consider using the electronic Copyright Office (eCO) for faster service and a lower filing fee.

What may be included?

The following may be included in one registration on Form CO:

• Unpublished works: works by the same author(s) and owned by the same copyright claimant(s), organized in a collection under a collection title.

• Published works: works published in a single unit of publication and owned by the same copyright claimant.

How to use the 2d barcode form

• Complete this form online and then print it out or the special coded information won’t be added to the barcode. Do not print out a blank form. ( Form CO is available only online.)

• Always print out a second copy for your records. Do not save the form online.

• Never alter the form by hand after you print it out. The information you enter is stored in the barcodes on the form.

• Both single- and double-sided printing is acceptable.

• Important printer information: To achieve best results, use a laser printer. Inkjet printer copies require enlarging if you use the shrink-to-fit-page option. I am sure that only collectors have one but Dot-matrix printer copies are not acceptable.

• Unpublished works: one complete copy.

• Published works: generally, two complete copies of the “best edition.” There are exceptions for certain types of works. See Circular 1, Copyright Basics, for details.

Send all three elements in the same envelope or package to:

Library of Congress
Copyright Office
101 Independence Avenue, SE
Washington, DC 20559-****

The secret “plus four” code key: Use the appropriate four-digit zip code extension to expedite the processing of your claim. In place of ****, use the following:

Literary work: -6222
Visual arts work: -6211
Performing arts work: -6233
Motion picture/AV work: -6238
Sound recording: -6237
Serial issue: -6226

Always keep a copy of the application, the deposit material and the certificate of registration in your file. You never know if or when you may need it when filing an infringement lawsuit.

Harry Potter Lexicon Casts a Spell of “Fair Use” But Fails

Originally Posted on October 28, 2008

by Kohel Haver

The publisher of a Harry Potter “Lexicon” was permanently enjoined from printing the book because they failed to establish that the publication would survive claims of copyright infringement and prevail on a fair use defense argument. The court awarded author J.K. Rowling $6,750 in statutory damages. Warner Bros. Entertainment Inc. and J. K. Rowling v. RDR Books et al, __ F.Supp.2d __, 2008 WL 4126736, S.D.N.Y., September 8, 2008 (NO. 07 CIV. 9667 (RPP)).

The Lexicon was written by Steven Vander Ark, and is an encyclopedia of the people, places, objects, and events of the seven-book Harry Potter series. According to testimony the Lexicon originated as a fan based web site, derived from the middle school library media specialist’s notes and launched in 1999 and made public in 2000. There was testimony that Rowlings herself would refer to the site to check a fact while writing the later books. According to the record, Vander Ark had received positive feedback, including from Rowling and her publishers, about the value of the Lexicon website as a reference source. In May 2004, Vander Ark read a remark by Rowling posted on her website praising his Lexicon website as follows: “This is such a great site that I have been known to sneak into an internet café while out writing and check a fact…”

Court records indicate that initially Vander Ark did not intend to publish the Lexicon in book form, but later changed his mind when RDR publisher Rapoport reassured him that he had looked into the legal issue and determined that publication of content from the Lexicon website in book form was legal. Rapoport agreed to stand by this opinion by adding an atypical clause to the publishing contract providing that RDR would defend and indemnify Vander Ark in the event of any lawsuits.

After a volley of demand letters Rowling and Warner Brothers (the copyright rights holder) filed suit to stop the publication of the book. Why did the court come to the conclusion to enjoin publication of the Lexicon? The court was persuaded by the large amount of copying in the Lexicon – the 450 pages of a manuscript come primarily from the 4,100-page Harry Potter series. Additionally the Lexicon’s 2,437 entries are made up from direct quotations, plot details, or summaries of scenes from the novels. The Lexicon itself makes clear that the only source of its content is the work of J.K. Rowling. The first page of the Lexicon manuscript states: “All the information in the Harry Potter Lexicon comes from J.K. Rowling, either in the novels, the ‘schoolbooks,’ from her interviews, or from material which she developed or wrote herself.” There is no dispute that the Lexicon actually copied from Rowling’s copyrighted works. Vander Ark openly admitted that he created and updated the content of the Lexicon by taking notes while reading the Harry Potter books and by using without authorization scanned, electronic copies of the Harry Potter novels and companion books.

The court also considered that Rowling had already written and published a book on the sport Quidditch Through the Ages (2001), and another entitled Fantastic Beasts & Where to Find Them (2001) an A-to-Z encyclopedia of the imaginary beasts and beings that exist in Harry Potter’s fictional world. Both appear in the Harry Potter series as textbooks that the students at Hogwarts use in their studies, and the companion books are marketed as such. The companion books were written as chronicles, expanding on fictional facts that unfold in the Harry Potter series. Vander Ark relied on these other published Rowling works as well. According to Vander Ark, additional content is drawn from outside reference sources, including Bullfinch’s Mythology, Field Guide to Little People, New Shorter Oxford English Dictionary, and online encyclopedias such as Encyclopedia Mythica.

There was testimony that prior to any discussions with RDR Books about publishing portions of the Lexicon website as a book, Vander Ark was aware of Rowling’s public statements regarding her intention to write a Harry Potter encyclopedia upon completion of the seventh book in the series.

While the court found the use “transformative” in part because the Rowling work was entertainment. The court said the Lexicon is a reference work meant to make information about the intricate world of Harry Potter readily available to readers, the transformative character of the Lexicon is diminished because it was not consistent, and in any event, “A finding of verbatim copying in excess of what is reasonably necessary diminishes a finding of transformative use.”

The court did take notice regarding reference guides in general as both useful and in demand, and the work the Lexicon purports to be and whether it qualifies as such (no doubt in part due to its title), fits in the narrow genre of non-fiction reference guides to fictional works. Defendant’s expert testified that the Harry Potter series is a multi-volume work of fantasy literature, similar to the works of J.R.R. Tolkien and C.S. Lewis. Such works lend themselves to companion guides or reference works because they reveal an elaborate imaginary world involving many characters, creatures, and magical objects that appear and reappear across thousands of pages. (The expert testified that she found 19 or 20 companion guides to J.R.R. Tolkien’s works, and about 15 guides to C.S. Lewis’s works.)

Judge Patterson rejected J. K. Rowling’s argument that the Lexicon would impair the market for an encyclopedia she planned to write. Judge Patterson ruled that “the market for reference guides to the Harry Potter works is not exclusively hers to exploit or license, no matter the commercial success attributable to the popularity of the original works.” Judge Patterson added that “[t]he market for reference guides does not become derivative simply because the copyright holder seeks to produce or license one.” Part of what the court found problematic was the wholesale copying of long passages, songs and poems from the books but left the fair use door open with this advice, paraphrased: a guide’s author must take care not to copy more “highly aesthetic expression” than necessary to achieve the guide’s educational purpose. Moreover, the guide’s author must exercise even greater care when copying material from reference works created by the original author.

As in the case of the Seinfeld Aptitude Test, (Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc. 150 F.3d 132 (2d Cir. 1998)) when court held that a trivia book which tested the reader’s knowledge of “facts” from the Seinfeld series copied protected expression because “each ‘fact’ tested by [the trivia book] is in reality fictitious expression created by Seinfeld’s authors” it follows that the same qualitative conclusion, where each “fact” reported by the Lexicon is actually expression invented by Rowling. The court ultimately followed prior decisions denying the fair use defense when a book takes too much from the original, essentially usurping the market that is reserved for the original author.

Finally, the court ruled since the Lexicon has not been actually published and thus Plaintiffs have suffered no harm beyond the fact of infringement, the Court awarded Plaintiffs the minimum award under the statute for each work with respect to which Plaintiffs have established infringement. Plaintiffs were awarded statutory damages of $750.00 for each of the seven Harry Potter novels and each of the two companion books, for a total of $6,750.00. Scholars have pointed out that while the plaintiff did prevail there was significant acknowledgement and understanding of “fair use” in the court’s analysis, punctuated by the award of the minimum damages for infringement.

RDR Books has until Nov. 7 to file a notice of appeal.

Music Groups – Legal Considerations

By Spencer Trowbridge, Swider Medeiros Haver LLP

Originally posted on September 1, 2009

If you play in a band or are involved in creating or performing music, an understanding of certain legal principles will (a) help you protect the rights you have, (b) help you stay out of trouble (by not infringing others’ rights), and (c) make you aware of steps you can take today that may prevent certain problems from arising in the future (or that may at least put you in a much better position to deal with those problems, should they arise). This article highlights some of the legal issues that are relevant to members of music groups.
What You Own: Copyright Law

The Copyright Act of 1976 gives copyright holders certain exclusive rights in works. Musicians should note that the Copyright Act provides protection for both sound recordings and musical compositions (these are two distinct copyrights). The exclusive rights belonging to copyright holders under the Copyright Act include the right to reproduce the work, the right to distribute the work, and the right to prepare derivative works based on the work. Subject to certain statutory exceptions, if you are the owner of a copyright, others will need to obtain your permission before using your work, and, conversely, if you want to use someone else’s work, you will generally need permission first.

Once an original work of authorship is fixed in tangible form, it is automatically protected under the law. But, there are a variety of benefits to registering a work with the United States Copyright Office, including: (1) a presumption of ownership, (2) the ability to seek statutory damages (these may be much higher than the actual damages sustained) against an infringer, and (3) the ability to seek recovery of attorney fees in actions against an infringer. In addition, you must have a valid copyright registration in order to file a lawsuit for copyright infringement. It is always a good idea to register your works, and registration can be done online.

Your Name and Brand: Trademark Law

The Lanham Act provides certain protections for words, marks, and symbols used in commerce to designate the origin of goods or services. Unlike the case with copyrights, trademark protection does not arise merely through the creation of a mark, but instead develops as and when the mark is actually used in commerce. In addition, there is state-level protection for trademarks (and the registration is easy and inexpensive). However, like in the case with copyrights, federal registration will afford the rights holder with certain additional benefits. For instance, once your name acquires federal protection, you are given nationwide priority of use (other than in territories where someone else has previously acquired and continues to hold rights to the mark), even in states where your band has not yet performed, sold merchandise, or otherwise used the mark.
If your band name (or business name) is owned by you and subject to nationwide federal trademark protection, you will be better-positioned to prevent others from using that same name in a manner that is likely to cause confusion in the marketplace. This is an important right that will help you protect the goodwill and recognition that your band’s name has acquired. Additionally, with the prominence of nationwide online music sales, securing federal trademark protection is more important than ever before.

The Band: Business Entities and Band Agreements

If your band has never legally formed any kind of a limited liability entity (e.g., an LLC, a limited liability partnership, a corporation, etc.), your band would likely be considered a general partnership under the law (whether your band considers itself to be a partnership or not). This has important legal consequences. For example, each band member can bind the band to agreements with others. In addition, each band member is personally liable for actions of the band (and other members) in the course of the band’s business. Forming a limited liability entity may help limit liability to the assets of the band (as opposed to personal assets), provided that the band continues to effectively operate as a separate legal entity. A business attorney can help you decide which entity-type is most appropriate for your band (including whether to form a limited liability entity) given the facts and circumstances of your situation.

In any event, it is a very good idea for most bands to have some form of a written intra-band agreement setting forth rights and obligations of the band members. An intra-band agreement can, for example, set forth the royalty percentage each band member receives, the number of votes required for a band action, a procedure for addressing the situation where a member quits, a provision governing ownership of the band name if the band breaks-up, etc. It is important that you address these types of things in writing early on, since it is much easier to work through them when everyone is on friendly terms, and it can help avoid disputes later on down the line.

Registering with Performance Rights Organizations

For musicians there are two important public performance rights. First, owners of musical compositions have the exclusive right to publicly perform their musical compositions. Second, owners of sound recordings have the exclusive right to publicly perform their sound recordings by means of digital audio transmission (e.g., streaming).

If you are a songwriter, or music publisher, you should consider registering with a Performance Rights Organization in order to collect certain royalties that may be payable for the public performance of your musical compositions. In the United States, the three main organizations representing performance rights in musical compositions are ASCAP, BMI, and SESAC. In addition, performers and sound recording copyright holders should consider registering with SoundExchange, a performance rights organization that administers royalties for certain digital public performances of sound recordings (e.g., non-interactive Internet-radio).

Contracts

The music industry is built on contracts. There are a variety of contracts that a band may be presented with over the course of its career. Some of the contracts that you may encounter include management agreements, recording agreements, performance agreements, distribution agreements, and merchandising agreements.
You should always get your agreements with others in writing. While contrary to popular belief, many oral contracts are enforceable, it is often very difficult to prove the existence of an oral contract. It is best to have a formal agreement in writing, setting forth the rights and responsibilities of the parties. However, even a brief email exchange, outlining basic terms, may be significantly more beneficial than having no written agreement at all.

The signing of a new agreement can mark the beginning of a new chapter of growth for a band’s career, and it is natural to get excited when a company expresses interest in your music. However, signing a bad agreement – or even a good agreement with the wrong company – can have devastating consequences. Therefore, you should always have an experienced entertainment attorney look over any agreement that you are considering signing, and you should be cautious about the people or companies with whom you enter into agreements. To that end, while a newer, less well-established company may in some cases be able to devote more time and energy towards your band, you should be especially cautious about entering into agreements with people or companies that do not have an established track record of success.

Conclusion
As illustrated by this article, there are a variety of legal issues that are relevant to members of music groups. Addressing certain issues, such as those mentioned in this article, early can help prevent problems from arising later on (when they are generally much harder to deal with). An experienced entertainment attorney can be of great assistance in helping you work through these issues.
NOTE: The information in this, and any other article on this website, is for information, discussion and academic purposes only and should not be relied on as legal advice. Seek legal and financial counsel in your jurisdiction before acting on any ideas presented in this website. This article does not create an attorney-client relationship.

Social Media for Government Lawyers: Contracts, Meetings and Public Records

By Martin Medeiros

Originally posted on October 30, 2009

The United States of America established a government by the people to “form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defense, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity.”[1] So where in the Constitution of the United States do we fit in “public outreach … communicate with citizens… encourage feedback” as the new federal Gov 2.0 guidelines mention as a primary goal[2]? And who should government lawyers and employees “friend” on Facebook to meet this iconic goal? Answers: nowhere and everywhere; nobody and everybody.

The so called web 2.0, which goes beyond information utility and infrastructure of the internet to arrive at human networks and community, has brought great change in our society: the disruption if not marginalization of the traditional print periodicals; growth of importance of intellectual property; and the rapid efficiency of information flow. But it also has complexities that must be attended to and not overlooked by its ease of use and entertaining value. The most promising offspring of Web 2.0 is the so called “social media.” Consider a working definition of social media as any web presence that relies on a community of users as a primary operating function, and for content creation and communication. There are a number of examples, such as Scribd.com, Facebook.com, Twitter, Linked-In, etc. Observing this media and working with it can be entertaining for everyone, including public servants. However, the attorneys who serve the interest of the state must readdress the solemnity of their office and appreciate the risks in misuse of this powerful media whose story will not be fully written for years to come.

Recent changes in social media have presented certain fact patterns that neither our founders nor today’s government lawyers know how to easily deal with. Social media has become a great allocator of information, commonality, and may be a vehicle to “establish justice” or “promote the general Welfare.” But several governmental units have discovered its capacity to do the opposite of these seminal directives. Moreover as commercial operations such as YouTube, Facebook, MySpace, LinkedIn, Wikipedia, Twitter, RSS feeds, and Second Life have triggered multiple disputes in tort, contract, judicial and legislative issues, and public meetings, both government attorneys and the larger legal community must recognize that the laws still apply. The only difference is the fact patterns.

1.0 Contracting In The Social Media Context
There are at least two levels of potential dispute when contracting online. One are the host’s terms of use, these are the terms you must click on in order to avail yourself of the website. The second is the potential of contract formation among interest groups users; for example, terms stating that “in order to be a part of the Highway 101 improvement project you must be a government employee directly involved with the project or a contractor and agree to our group’s privacy polices” Hosted social networking sites may or may not allow modification of their terms of use.

Contract law has not changed with the advent of the internet. The basic requirements for contract formation are the same: offer, acceptance and consideration. It is immaterial whether you call something a contract, terms of use, policy or other document. The basic contractual requirements and tests will apply. Electronic interactions are sufficient objective manifestations for evidence of a meeting of the minds to occur. Involving primarily two laws, the so called Uniform Electronic Transactions Act[3] adopted by the majority of states’[4] and the Federal E-Sign Act[5], one can no longer challenge the enforceability of a contract by the simple fact it is conducted electronically.

A long litigated issue has been the enforceability of “shrink wrap” licenses, those pasted on the box of software, and later, “click-wrap” licenses whereby a user must click the “I agree” button after reading the terms of use contract. Today, it is generally settled law that click-wrap is enforceable. The first case on the merits in 1998 held that a Terms of Service contract in click-wrap format could be enforceable in court.[6] But not all of these online contracts are enforceable.

The higher risk clauses that are litigated deal with issues such as consumer contracts that amount to unreasonable contracts of adhesion. Generally, the first thing litigated is the jurisdiction clause, followed by forum selection and venue clauses. If the transaction is minor, a significant right is waived, such as a jury trial, prior to knowledge of a dispute, and uneven bargaining power, these clauses will be attacked and in relatively rare cases, not enforced if the consumer is harmed.

The best practices in online contracting can be summarized as “the dearer the right, the greater the overt act of acceptance that is required.” This comes down to whether the “I agree” checkbox seen at the bottom of the contract is unselected, or the “I do not agree” checkbox is pre-selected whereby the user must click on the “I agree box” and simply cannot go any further with the download or use of the site until that overt act occurs. A greater level of overt act requires the user to scroll down the entire contract until the “I agree box” is able to be selected. The user must have an opportunity to print the agreement and be given either notice of changes or of their duty to check the terms of use for updates. Material changes must have some sort of notice which is fairly straight forward for most user accounts.

Social media contracts and contracts between users can be made. So too can intellectual property rights be infringed. Intellectual property includes copyright, patent, trademark and trade secret. The use and misuse of these can lead to potential liability. One of the greatest risks for social media users is copyright infringement; governmental bodies seeking to use the medium are well advised to comply with the Online Copyright Infringement Liability Limitation Act (OCILLA) or the so-called notice and takedown provisions, where a specific process is followed in the event of alleged infringement.[7] A safe harbor filing provides protection and is a filing that all entities should make with the United States Copyright office as the fees are relatively small, but the protections against copyright infringement are great. The registration fees for Online Service Provider designation (which is the recordation of an interim designation of agent to receive notification of claimed infringement under section 512(c)(2)) are minimal.[8] Here, the “group” may qualify as an online service provider.

Torts can be committed online. These generally involve privacy torts, such as defamation or portrayal in a false light or use of image without permission; and economic torts, interference with business expectancy and contractual relations . Government lawyers must know that anything posted may trigger certain liabilities.

2.0 Public Records
The public records law in Oregon applies to every public body, as defined, which includes the governmental unit and any agency thereof, boards and commissions.[9] A “Public Record” essentially is a writing that contains information regardless of form.[10] All government employees must accept the fact that everything is potentially discoverable, and even if an exception is claimed, there is a very strong presumption in favor of disclosure, meaning the public or a judicial body can request, or order, disclosure.[11] The identity, motive or need for disclosure is irrelevant.[12] I major cities[13] migrating to third party email systems as society moves to so-called “cloud computing,” arguments claiming privacy are more difficult. By necessity, the private email account that deals with anything involving policy should be presumed to be a public record.

It matters not whether the account of the record is a governmentally sponsored system or a private email account.[14] Even home computers are subject to discovery.[15] The issue is the conduct of use, if it in any way involves the conduct of the public’s business, consider even private home computers to be discoverable.

Exemptions are not determined by a bright line test, and the public records will be released unless the “public interest” requires non-disclosure.[16] Conditional exemptions include things like trade secrets, civil rights investigations, locations of archeological sites, documents created pursuant to a litigation that may qualify as work product by the public entity, or exemptions related to public safety issues.

3.0 Public Meetings
Oregon favors that “decisions be arrived at openly” which means public debate by a Government body, which consist of two or more members, with authority to make decisions for or recommendations to a public body or administration. [17] Notice must be “reasonably calculated to give actual notice to interested persons including news media which have requested notice, of the time and place for holding regular meetings.”[18]

The issue of notice is important as online notice is not as inclusive for public meeting standards as it may seem. There are many individuals who do not have access to the Internet, by choice or circumstance. For a government agency to think this is broad reach is a misconception. For example, there is some data on click through regarding banner ads which indicates 8% of Internet users click are responsible for 85% of all clicks.[19] There may be certain justice requirements if individual rights are allocated or policy is made solely by electronic meeting or electronic notice of the meeting.

3.1 Inadvertent Quorum
If a governmental body forms a quorum, which could be two or more who can make recommendations on policy, the public meeting statues are triggered and policies arrived upon could be subject to attack on a number of grounds; as described above, lack of actual notice to the public may be one of them. The word “quorum” is a function of bylaws or organizational charters whereby the minimum number of governing body members is specified. In the absence of such specification, the “majority” may do, “in the absence of a special definition of ‘quorum’’ the statutory definition[20] of “three or more persons” may apply according to the Oregon Attorney General’s Manual.

3.2 Archiving and Data Migration Issues
Government agencies must archive records. Social media, if meeting the requirements of public meetings or meeting the archive requirements, must be retained.[21] One large problem with cloud computing is the data migration issue. For example, if one moves a group from one social networking site to another, those proprietary systems may be less able, or more likely, impossible to port data.

4.0 Conclusion
The essential nature of social media may be permanent or may be replaced by something else but what is important is the facts will shape the law. Whether or not this is the wave of the future, or our version of the Citizens Band radio fad of the 1970’s, or something in between, we will see as these cases wend their way through our judicial system.

[1] Preamble, United States Constitution.

[2] Guidelines for Secure Use of Social Media by Federal Departments and Agencies, Information Security and Identity Management Committee (ISIMC) Network and Infrastructure Security Subcommittee (NISSC) Web 2.0 Security Working Group (W20SWG)
(September 2009).
[3] 1 Promulgated by the National Conference of Commissioners on Uniform State Laws.
[4] States that have not accepted the uniform act but have chosen their own include: Georgia: Ga. Code Ann., § 10-12-1; Illinois: 5 ILCS 175/1-101; New York: NY CLS State Technology § 301 et seq.; Washington: http://apps.leg.wa.gov/RCW/default.aspx?cite=19.34
[5] Pub. L. No. 106-229, 114 Stat. 464 (2000) (codified at 15 U.S.C. § 7001 et seq.).
[6] Hotmail Corp. v. Van$ Money Pie Inc., No. C-98 JW PVT ENE, C 98-20064 JW, 1998 WL 388389 (N.D. Cal., 1998).
[7] 17 USC § 512.
[8] Current fee schedule may be found at: http://www.copyright.gov/docs/fees.html
[9] ORS 192.410(3).
[10] ORS 192.410(4)(a).
[11] See, ORS 192.420(1).
[12] Smith v. School District No. 45, 63 OR App 685 (1983).
[13] http://weblogs.baltimoresun.com/news/technology/2009/10/los_angeles_moving_to_gmail_an.html
[14] ORS, 192.001(b).
[15] Nike v. City of Beaverton,
[16] ORS 192.501 et. seq.
[17] ORS 192.610(3).
[18] ORS 192.640.
[19] The results of an update to the comScore highly publicized “Natural Born Clickers” research, conducted two years ago with Starcom USA and Tacoda, indicate that the number of people who click on display ads in a month has fallen from 32% of Internet users in July 2007 to only 16% in March 2009, with an even smaller core of people (representing 8% of the Internet user base) accounting for 85% of all clicks. http://74.125.155.132/search?q=cache:E0bm9WAqyRsJ:www.mediapost.com/publications/%3Ffa%3Darticles.showarticle%26art_aid%3D115210+85%25+of+click-throughts&cd=2&hl=en&ct=clnk&gl=us

[20] ORS 174.30.
[21] ORS 192.005.

Do I have to pay for “publicly performing” ringtones? U.S. District Court Says No to Public Performance Fees for Ringtones

By Spencer Trowbridge, Swider Medeiros Haver LLP

Originally posted on November 17, 2009

The U.S. District Court for the Southern District of New York recently granted summary judgment in favor of Verizon on the question of whether Verizon was liable for public performance fees for ringtones. [1] ASCAP, one of the primary performing rights organizations in the United States, had opposed Verizon on the issue.

At issue, in part, was whether Verizon’s transmission of a ringtone to a user’s cellular phone constitutes a public performance. The parties focused on the second part of the definition of the term “publicly” in 17 USC § 101, which reads in part:

(2) to transmit or otherwise communicate a performance…by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

The court ruled in favor of Verizon on the issue, saying that the transmission itself was not a public performance, further noting that “[e]ven if the customer could listen to the download as it was being received, and contemporaneously perceive it as a musical work, that would not constitute a public performance.”

The court then turned to ASCAP’s argument that a public performance occurs when a cellular phone plays a ringtone, and that Verizon is liable (both secondarily and directly) for such public performance. In addressing the issue of secondary liability, the court turned its attention to the Copyright Act’s exemption for performances occurring within “the normal circle of a family and social acquaintances” and the Act’s additional exemption for:

[any] performance of a nondramatic literary or musical work otherwise than in transmission to the public, without any purpose of direct or indirect commercial advantage and without payment of any fee or other compensation for the performance to any of its performers, promoters, or organizers, if [ ] there is no direct or indirect admission charge…

According to the court, the first exemption would apply to the playing of a ringtone in the presence of family and friends. Further, with respect to instances where there is the presence of a broader audience, the court said that the second exemption would apply, emphasizing that customers do not have any expectation of profit in connection with the playing of a ringtone.

The final portion of the court’s ruling addressed the issue of direct liability for Verizon. ASCAP’s theory was that when a ringtone plays in public on a cellular phone, Verizon is engaging in a public performance. As was the case with the other theories of liability at issue, the court dispensed with ASCAP’s argument, noting that “Verizon’s only role in the playing of a ringtone is the sending of a signal to alert a customer’s telephone to an incoming call.” The opinion further noted that “[t]hat signal is the same whether the customer has downloaded a ringtone or not,” and that “[t]he other components of Verizon’s putative ‘control’ over the playing of the ringtone in public are too attenuated from the ‘performance’ to render Verizon liable.”

Note that this ruling concerns only public performance rights. In the ruling the court readily acknowledged that mechanical rights are implicated in the reproduction and distribution of ringtones. The current statutory mechanical royalty rate for a ringtone download is 24 cents.

NOTE: The information in this, and any other article on this website, is for information, discussion and academic purposes only and should not be relied on as legal advice. Seek legal and financial counsel in your jurisdiction before acting on any ideas presented in this website. This article does not create an attorney-client relationship.

[1] The ruling is available at https://www.eff.org/files/filenode/US_v_ASCAP/ASCAP%20v%20Verizon%20Order.pdf

How Are Music Publishing Licenses Handled for Digital Uses of Music Abroad? Understanding the Laws and Customs for Clearance of Music in Territories Outside the United States

By Spencer Trowbridge, Swider Medeiros Haver LLP

Originally Posted On March 12, 2010 ·

1.0 Introduction
Royalties for the sale or other use of musical compositions can be an important source of revenue for some songwriters. Prior to the onset of the Internet, foreign music publishing royalties never came into play for many artists. However, with the advent of digital music, any artist can now sign up with a digital distributor and have their music made available, for example, through iTunes in Japan, Amazon in the UK, and Napster in Germany. Two important publishing rights that are implicated by digital distribution of music are (a) the right to publicly perform the work (“public performance rights”), and (b) the right to make and distribute copies of the work (“mechanical rights”).

2.0 Performance Rights
For public performance rights, the administration of royalty collection abroad is very similar to public performance royalty administration in the United States. In the United States, digital music services in many instances license musical composition performance rights through the relevant performing rights organizations (“PROs”). Abroad it works largely the same way. Moreover, PROs in the United States have reciprocal arrangements with the local collection societies in many territories throughout the world. These arrangements allow US-based PROs to collect, on behalf of their members, royalties that were originally distributed to the local collection society in the applicable country.

3.0 Mechanical Rights
In the United States, online music services typically rely on their licensors[1] to clear mechanical rights in connection with permanent downloads. Abroad however, digital music services typically obtain all mechanical licenses (including mechanical licenses for permanent downloads) from the applicable collection society(ies) in the relevant territory. In addition, licenses from these collection societies may in some cases be mandatory, meaning that the digital music services must generally obtain a license directly from the applicable collection society. If a publisher is not a member of the applicable collection society, royalties that the society collects for the exploitation of that publisher’s musical composition(s) may go into what is known as a “black box” (where they would typically remain for a specified period of time during which they may be claimed). In addition, mechanical licenses are typically issued on a per-album basis (as opposed to a per-song basis), and royalties for certain digital configurations may be set as a percentage of the retail price to the customer. Like in the case with PROs in the United States, the Harry Fox Agency[2] has reciprocal arrangements with collection societies in other territories.

4.0 Conclusion
Whether you are an artist whose content is being distributed outside the United States, or have a business that provides digital music to users outside the United States, having a strong understanding of the customs and mechanisms for rights clearance abroad is very important. Copyright law can be very complex. Accordingly, if you have any questions, you should consult an attorney who is well-versed in this area.

NOTE: The information in this, and any other article on this website, is for information, discussion and academic purposes only and should not be relied on as legal advice. Seek legal and financial counsel in your jurisdiction before acting on any ideas presented in this website. This article does not create an attorney-client relationship.

[1] E.g., record labels, digital distributors, and other persons or entities from whom digital music services acquire rights for digital music sales.
[2] HFA is an organization that administers mechanical rights (by issuing licenses and collecting royalties) on behalf of a large number of music publishers in the United States