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Another aspiring songwriter guided by uninformed wishful thinking seeks to cash in against a celebrity.  In this case, plaintiff Vincent Peters sued Kanye West claiming that Kanye copied his song “Stronger” from Peters, who argued at the trial court level that Kanye gained access to the plaintiff’s song of the same name through Kanye’s manager, John Monopoly.  United States District Court Judge Virginia Kendall of the Eastern District of Illinois dismissed Peter’s claim under Rule 12(b)(6) for failure to state a claim, finding that (i) the allegedly infringed elements of the plaintiff’s song were not protectable under copyright law, and (ii) an ordinary observer could not conclude that the plaintiff’s song and Kanye’s “Stronger” are substantially similar.  Peters appealed the district court’s decision.  Kanye’s attorneys filed their brief in support of his position on November 18.  It describes the case, in part, as follows:

Plaintiff has brought suit based upon a handful of alleged similarities between the lyrics of two songs. Plaintiff does not claim any similarity between the music of the two songs. Plaintiff concedes that the alleged lyrical similarities are unoriginal to him and, individually, unprotectable. Indeed, with the exception of one lyrical similarity (a reference to the “Supermodel” Kate Moss, which is not copyrightable), the remaining alleged similarities all concededly derive from a century-old maxim by Friedrich Nietzsche ["That which does not kill me only makes me stronger], a maxim that, as the district court found, “enjoyed a robust existence in the public domain.” Plaintiff bases his claim on the supposed copyrightability of the “combination” of these otherwise unprotectable words and phrases contained in completely different songs.

The maxim at issue originated with Nietzsche about 100 years ago and cannot, therefore, form the basis of an infringement claim by the plaintiff.  Aside from being in the public domain, the phrase has appeared in other songs that predate the plaintiff’s, such as “Only God Can Judge Me” by Tupac Shakur, and a derivative appears in Metallica’s “Broken, Beat & Scarred.”

The brief is well written and reasoned, and Kanye’s position finds solid support in the case law (I’m glad to have been able to contribute two of the decisions cited in the brief ).  It would be quite surprising if the Seventh Circuit does not affirm the trial court’s judgment.  A copy of the brief is below:

Peters v West

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Just a quick post to upload the paper that I presented at the 19th Annual Cutting Edge Music Business Conference in New Orleans last week.  It contains more detailed versions of prior posts on the Avela and Zediva cases and new posts on ASCAP v. Real Networks and No Doubt v. Activision Publishing.   Paper below.

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Defendants provide their customers with access to DVDs purchased by Defendants containing the Copyrighted Works. To operate their service, Defendants have purchased hundreds of DVD players and installed them in cabinets at a data center they lease in Santa Clara, California. Defendants also have purchased copies of Plaintiffs’ Copyrighted Works on DVD, and place those DVDs in their DVD players, with each DVD remaining in its respective DVD player while it is transmitted to Defendants’ customers on multiple occasions.

When a customer requests a particular Copyrighted Work, Defendants, through their Zediva service: (1) start the play process on a particular DVD player holding the requested Copyrighted Work; (2) convert the analog video signal from the DVD player into a digital signal using a video adapter; (3) feed the digital signal into a DVD control server which converts the digital signal to a form suitable for streaming across the Internet; (4) convert the digital signal to a format that can be viewed in the player created by Defendants and used on their website; (5) transmit the performance via the internet to the customer; and (6) provide the customer with a custom viewer necessary to view the video stream.

To begin this process, the customer “presses” a virtual button on Defendants’ website that was designed by Defendants. Defendants’ system then sends a request to their control server, which then begins a series of actions on various servers created and controlled by Defendants. Defendants’ customers never have physical access to the DVDs or the DVD players. In fact, the customers do not know which particular DVD player or DVD is used by Defendants to transmit the requested Copyrighted Work. In addition, the customers cannot access all the other features available on the DVD, such as deleted and extra scenes, or other special DVD features. Defendants maintain exclusive control of their servers, and the customers have no control whatsoever over the various servers that Defendants use to direct traffic among their stacks of DVD players

Defendants describe their service as allowing customers to “rent” a particular DVD and DVD player for 14 days. However, Defendants’ customers do not have access to or control over a specific DVD or DVD player. Instead, Defendants stream the content of the DVD to a customer for a maximum period of four hours, provided that the customer does not pause it for more than one hour during that time. After four hours of total “rental” time or an hour-long pause, whichever occurs first, Defendants use the DVD player containing the same DVD to transmit the Copyrighted Work to a different customer. When the first customer makes a request to resume viewing, the transmission may be sent from a different DVD or a different DVD player than the one originally used to transmit the Copyrighted Work in the earlier “rental” period. According to their website, if all of the copies of a particular Copyrighted Work are “rented out” when a customer wants to view it, that customer “can request to be notified, via email, when it becomes available.”

The MPAA moved for a preliminary injunction on the grounds that  Zediva’s service infringes the public performance right (17 U.S.C. 106(4)) of MPAA members.  Applying the definitions of “public place” (17 U.S.C. § 101(1)) and “transmit” (17 U.S.C. § 101(2)) to the facts at hand, U..S. District Court Judge John Walter determined that Zediva was “violating Plaintiffs’ exclusive right to publicly perform their Copyrighted Works by transmitting those Copyrighted Works to the public over the internet, without
a license or Plaintiffs’ permission, through the use of Defendants’ Zediva service.”   Judge Walter granted the MPAA’s motion, and ordered the parties to meet and confer and filed an agreed preliminary injunction consistent with the court’s order.  A copy of the Judge’s decision is below:

MPAA v. Zediva Preliminary Injunction

In 1939, Metro-Goldwyn-Mayer released two of the most famous films ever made, The Wizard of Oz and Gone With The Wind, and between 1940 and 1957 it debuted numerous Tom & Jerry short films (possibly my favorite cartoon of all time). Over the decades, the copyright interests in these properties have generated significant revenue for their various copyright owners, including current owner Warner Bros. Entertainment, Inc.

Prior to the completion of filming the two motion pictures, publicity photographs were taken of Dorothy, Tin Man, Cowardly Lion and Scarecrow from The Wizard of Oz, and Rhett Butler and Scarlett O’Hara from Gone With The Wind, all posing in costume. The photographs were reproduced in, and distributed in the form of, movie posters, lobby cards, still photos, press books and other materials by the original rights holder, Loew’s, Inc., MGM’s parent company. Similar publicity materials featuring the animated Tom and Jerry were also distributed. Some of the materials were included in high-circulation newspapers and magazines, such as The Saturday Evening Post, St. Louis Post-Dispatch, Chicago Tribune, Atlanta Journal, and Atlanta Constitution.

A.V.E.LA., Inc., X One X Productions, Inc., and Art-Nostalgia.com, Inc. (collectively “AVELA”) are companies that license vintage arts and entertainment images for merchandising. The dispute is set up by the court:

AVELA acquired restored versions of the movie posters and lobby cards for The Wizard of Oz, Gone with the Wind, and several Tom & Jerry short films. From these publicity materials, AVELA has extracted the images of famous characters from the films, including Dorothy, Tin Man, Cowardly Lion, and Scarecrow from The Wizard of Oz; Scarlett O’Hara and Rhett Butler from Gone with the Wind; and the eponymous Tom and Jerry. AVELA licenses the extracted images for use on items such as shirts, lunch boxes, music box lids, and playing cards, and as models for three-dimensional figurines such as statuettes, busts, figurines inside water globes, and action figures. In many cases, AVELA has modified the images, such as by adding a character’s signature phrase from the movie to an image modeled on that character’s publicity photograph. In other cases, AVELA has combined images extracted from different items of publicity material into a single product. In one example, a publicity photograph of Dorothy posed with Scarecrow serves as the model for a statuette and another publicity photograph of the “yellow brick road” serves as the model for the base of that same statuette.

Warner Bros. sued AVELA, claiming that such use of the extracted images infringes the copyrights for the films. Warner Bros. also asserted claims of, inter alia, trademark infringement and unfair competition. AVELA contended that the distribution of the publicity materials without copyright notice had injected them into the public domain, thus precluding any restrictions on their use. On cross-motions for summary judgment, the district court granted summary judgment to Warner Bros. on the copyright infringement claim and denied summary judgment to both parties on the trademark infringement and unfair competition claims.

At the time the films were authored, copyright ownership was governed by common law and the 1909 Copyright Act, a statute with some rather arcane provisions, the most controversial of which was the copyright notice requirement. Under the 1909 Act, failure to place a notice of copyright ownership on a work protected by common law copyright (something like: “© Copyright 1939, Loew’s, Inc., All Rights Reserved”) prior to general “publication” of the work caused the work to be injected into the public domain, making available for anyone to use without restriction.

The original owners of the copyrights in the films distributed the publicity materials without complying with the 1909 Act’s notice provisions, and Warner conceded it had no copyright ownership interest in the publicity materials. Warner also agreed not to assert copyright claims against the “unaltered reproductions of individual items of publicity material.” The district court thus chose not to consider whether the publicity materials were injected into public domain, holding instead that “even if the images were extracted from public domain materials, AVELA’s practice of modifying the extracted images for placement on retail products constituted infringement of the film copyrights.” Based on the district court’s finding of copyright infringement it entered a permanent injunction “against all use of publicity material images, except for exact duplication of individual items of publicity material.” AVELA appealed to the Eighth Circuit.

The Eighth Circuit’s analysis differed from the one employed by the district court, finding it necessary to first determine whether the materials were dedicated to the public domain.

Courts developed a “limited publication” doctrine to “lessen the sometimes harsh effect of the rule that publication destroyed common law rights.” Warner argued that the distribution of the publicity materials was merely a limited publication, not a general one. Drawing on decisions from the Ninth Circuit, the court considered whether the distribution of the images was “(1) to a definitely selected class of persons, (2) for a limited purpose, [and] (3) without the right of reproduction, distribution, or sale.” The court concluded that nature and scope of the distribution of the materials evinced an intent to dedicate the materials to the public.

The appellate court then turned to whether “AVELA appropriated original elements of the films, or solely elements that are in the public domain.” AVELA’s products were divided into three categories for analytical purposes: (i) exact reproductions of public domain materials, (ii) composite products comprising new arrangements of extracts from the public domain items, and (iii) three-dimensional products that are transformative representations of two-dimensional public domain materials (such as figurines or statuettes). The Eighth Circuit vacated the injunction as to the first category of products but affirmed the injunction with respect to the other two. The decision is below:

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Anatomy of a Copyright Infringement Case

Below is the third excerpt from a presentation I gave at the State Bar of Texas’ 16th Annual Entertainment Law Institute entitled “Legal & Business Aspects of Music, Film and Digital Entertainment” in October 2006 on the topic of copyright infringement.   This was written for a court in the Fifth Circuit Court of Appeals, and other circuits may treat some of these issues differently.  I don’t recall why, but I omitted discussion of inducement liability and, as you will see, did not discuss contributory copyright infringement or vicarious liability for copyright infringement in much detail.  As always, this is not intended to be, and should not be construed as, legal advice.

Theories of Liability

The division of rights and exploitation of any given copyright may involve numerous parties.  For example – in the context of a musical work – owners, licensees, songwriters, producers, recording artists, record labels, music publishers, administrators, and performing rights organizations.  Which of these are proper parties to an infringement lawsuit?  Is it just the creative personnel who actually composed the musical work containing the allegedly infringing material? Or can “upstream” rights owners and others also be held liable although they had no direct involvement in creating the work?  The answer is that liability can be imputed to those who had no direct involvement in creating an infringing work on the theories of contributory infringement and vicarious infringement, not just those who are directly responsible for the unauthorized copying.

A.        Contributory Infringement

Contributory liability for copyright infringement may be imposed upon “one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another. . . .”  Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d 772, 790 (5th Cir. 1999) (quoting Gershwin Publishing Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971)).  In other words, contributory infringement requires showing “that the secondary infringer ‘know or have reason to know’ of direct infringement.”  A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1020 (9th Cir. 2001).  See also Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984).

B.        Vicarious Infringement

Vicarious liability may be imposed upon employers for the acts of their employees under the doctrine of respondeat superior, and this concept is applicable in copyright law.  For example, the doctrine may apply to impose liability upon a design studio whose artist-employee copies without authorization an illustration owned by a third party.  This form of vicarious liability is an application of the doctrine of respondeat superior.  Importantly, the vicarious liability doctrine is extended beyond the employer-employee relationship in copyright law so as to impose liability on anyone who “has the right and ability to supervise the infringing activity and also has a direct financial interest in such activities.” Gershwin Publishing Corp., 443 F.2d at 1162.

I’ll post a more detailed section on secondary liability on a later date.

Richard C. Davis is the founder of Trademark Properties, a Charleston-based company that specializes in buying and rehabbing houses, then flipping them for a profit.  Davis contacted A&E Television Networks to discuss turning one of his concepts into a reality television series.  After negotiations between Davis and Charles Nordlander, one of A&E’s executives, the parties ultimately agreed to jointly develop a show that became the reality television series “Flip This House.”  The terms of the deal were, however, never documented in writing.

After filming a pilot and 13 episodes of Flip This House, a dispute developed between Davis and A&E.  Davis claimed that he and A&E agreed to split all net revenues generated by the show on a 50/50 basis.  A&E told Davis no such deal had been made, so Davis sued A&E for breach of contract.  At trial, Charleston jury agreed with Davis and rendered a $4 million verdict in his favor, representing approximately 50% of the net revenue.  A&E appealed to the Fourth Circuit Court of Appeals, contending that the evidence was legally insufficient to support a finding of an oral contract.

In an opinion written by Senior Judge Bobby Baldock, the Fourth Circuit recounted the trial testimony:

Plaintiff’s [Davis'] testimony reveals that he and Nordlander extensively negotiated, discussing production costs, production crew, production credits, real estate risk, raising revenue, and splitting revenue, among other things.  Nordlander stated his deal-breaker—bearing any risk for the real estate—and the one condition on going forward with production of the series—board approval.  And, Plaintiff stated his deal-breaker—splitting all revenue equally—numerous times in various ways, even illustrating this term of his offer with a lengthy recounting of a prior deal.  To this, Plaintiff testified Nordlander said “Okay, okay, I get it.”  He also testified Nordlander said their making the television series was contingent on board approval.  Tellingly, accordingly to Plaintiff, Nordlander did not indicate their deal was contingent on anything else or give any indication that Defendant would not accept a fifty-fifty split of revenue, only that such a split would likely not be a beneficial arrangement for Plaintiff.  Furthermore, no evidence suggests Nordlander explained that the board would only approve the series and the money to produce the series without approving  the agreement to split net profits equally.  And, Defendant eventually notified Plaintiff that “[t]he board approved the money for our series.”  Though the board approved the making of the show, it seems undisputed that the board neither considered nor approved any revenue sharing agreement.  Nothing in the record suggests that any of Defendant’s representatives conveyed to Plaintiff that the board approved “money for our series,” but did not approve a fifty-fifty agreement.  From this evidence, a reasonable jury could conclude a reasonable person in Plaintiff’s position after such extensive bargaining could plausibly interpret “Okay, okay I get it,” in conjunction with the statement that the only condition is board approval, as acceptance.

There was also testimony about the conduct of the parties that indicated the existence of an agrement, leading Davis to ask the trial court to instruct the jury that “a contract is an obligation which arises from actual agreement of the parties, manifested by words, oral or written, or by conduct.”  But the district court refused to give the instruction, “concluding the trial had revealed no conduct…that could be interpreted as constituting an acceptance by [A&E] of any offer made by [Davis] so as to make a contract.”  That left Davis with having to rely on the “Okay, okay, I get it” language to demonstrate the existence of  binding agreement.  This, it turns out, was sufficient.  As the Fourth Circuit explained:

[O]ur review of the record makes clear that Plaintiff [Davis] was only able to specify one statement of acceptance by Nordlander: “Okay, okay, I get it.”  We take Plaintiff’s word for it, as we must, that Nordlander said “Okay, okay, I get it.”  We can safely say that statement does not objectively convey unambiguous and unequivocal acceptance of Plaintiff’s offer.  We cannot say, however, that such a statement made in a certain tone of voice or in a given context could not plausibly mean “I accept.”  As we explained, if Plaintiff reasonably or plausibly understood Nordlander’s equivocal statement as an acceptance, then a contract was formed.

A complete copy of the decision is below:

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The biggest question is my mind is, why did A&E fail to document the terms of this deal in writing?

Now here’s a unique way to settle a case.

Charlie Crist, the former Governor of Florida, used the Talking Heads‘ song “Road To Nowhere” in advertisements for his Senatorial campaign.  The advertisements were posted on YouTube and on his campaign website.  Trouble was he failed to obtain a license for those uses.   Upon learning of the matter, Talking Heads’ lead singer David Byrne filed a copyright infringement suit against Crist.  The just settled, and although all details of the settlement haven’t been disclosed one detail that was important to Byrne is available right here:

<iframe title=”YouTube video player” width=”480″ height=”390″ src=”http://www.youtube.com/embed/s4k13LmlcUE” frameborder=”0″ allowfullscreen>

It’s not often that a politician acknowledges a mistake.  Kudos to Charlie Crist for having the courage to do so.

In what must be one of the most entertaining opinions ever to appear in a Federal Reporter, Judge Denny Chin of the Second Circuit Court of Appeals, sitting by designation in the Southern District of New York, granted summary judgment in favor of Twentieth Century Fox who was sued by an individual who claimed that a screenplay he wrote entitled  “The Lost Continent” was infringed in Fox’s “Alien v. Predator” film.

“The Lost Continent” tells the story of “a government-led expedition to the Antarctic to investigate a mysterious structure below the frozen surface, a secret plan by a group called the Freemasons to recover a powerful crystal from the ancient city of Atlantis, and attacks by stone gargoyles come-to-life.”  The plaintiff claimed that Fox and the other defendants received a copy of the screenplay in 1997 and 1998–through somewhat tortured chains of custody–and that the defendants must have copied the screenplay when they wrote and produced “Alien v. Predator,” which was released in 2004.  The plaintiff filed suit in 2008.

Judge Chin found that there was no access, no evidence of probative similarity, and that no reasonable jury could conclude that “The Lost Continent” and “Alien v. Predator” were substantially similar, and granted summary judgment in favor of the defendant.  Judge Chin’s opinion is spot-on; one of the best I’ve seen in cases with analogous fact patterns.  The opinion is lengthy, but worth a read.

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