by Madeline Rains, edited by BNSesq

The backbone of Marvel Comics has always been the wealth of intellectual property possessed by the company. Its success was based around complete ownership of its characters, until Marvel ultimately sold its film rights for select characters to other studios in the 1990’s, following financial turmoil. Marvel’s struggle to regain those film rights illustrates the intrinsic value of licensing in the entertainment industry and the importance of protecting the rights of intellectual property. Marvel’s history, ongoing struggle to gain control of its character catalogue, and connection to Disney, makes it the perfect example of what can happen if intellectual property rights are not protected.

In 1939, Timely Comics was founded on the hopes that it could cash in on the growing popularity of comic books in America. At the beginning, Timely Comics created many characters that modern audiences would recognize today, including the Human Torch and, of course, Captain America. The characters and the comic strips they graced became wildly popular, and the comic book industry boomed. But by the early 1950’s the “Golden Age” of comics was over and readers lost interest in superheroes. Timely Comics pivoted in genre, changed the company’s name to Atlas Comics, and stayed afloat until DC Comics burst onto the scene with its superheroes in 1956. After seeing the revival of the superhero industry Atlas Comics changed the name once again to Marvel Comics in the 1960’s. During this subsequent “Silver Age” of comics, Marvel and DC reigned supreme as arch rivals in a competitive craft.[1]

Image result for captain americaMarvel would soon became a powerful force with which to be reckoned, as Stan Lee, Jack Kirby and Steve Ditko joined the company and created outlandish characters, bold storylines and eye-catching art.[2] Marvel’s trio of writers and artists harnessed a creative spark that allowed Marvel’s content to become king in the comic industry. The recently deceased Lee, along with Kirby and Ditko had the origins of an idea that would affect generations to come through comics such as The Fantastic Four, The Amazing Spider-Man, X-Men and The Incredible Hulk.[3] Lee, Kirby, and Ditko created some of today’s most iconic characters through their work for Marvel. While many comic books have an underlying story of good and evil that cannot be protectable by copyright, the storylines, characters and the designs were protected by copyright law under the consideration of work-for-hire. Marvel’s story arcs and characters became its most valuable asset.[4] Comics became collectors’ items during the 1980’s with consumers buying up vast numbers in the hope that one day they would be worth a fortune. As the industry boomed, Neil Gaiman, writer of the Sandman series, predicted the bubble would burst. DC and Marvel ignored his predictions and continued to sell comics that practically flew off the shelves and in 1989 Ron Perelman purchased Marvel for $82.5 million.[5]

In 1993 the bubble burst and the comic book industry collapsed under its own weight. Some accused Perelman’s footloose business tactics of jeopardizing the market and causing the collapse. Comic sales crashed by 70% and by 1995 Marvel found itself in crippling debt. As a last-ditch effort to right a sinking ship Perelman combined his other business interests to create Marvel Studios in hopes that the characters that so many people loved would make it to the silver screen and reignite the industry.[6] But to carry this out, Marvel had to make a deal with the devil–the movie studios of the time. Marvel sold the film rights of some of its most well-known characters for quick cash to dig itself out of bankruptcy. What was once Marvel’s most valuable asset, its characters, were now in the hands of other companies that had complete artistic control over new film adaptations. Marvel sold Spider-Man and his rogue’s gallery to Sony Pictures, Iron Man was taken by New Line Cinema, 20th Century Fox received all the characters associated with the X-men and the Fantastic Four, and Universal Pictures purchased the Hulk and Namor with the contingency of heavyhanded clauses.[7] The terms of character licensing allowed Marvel to partition out the aspects of the exclusive rights of their intellectual property that it wished to sell to the studios and limit them solely to that usage. The movie studios could only make films with those characters and were barred from using them to manufacture toys or create video games, for example.[8] Marvel’s silver screen dreams were finally realized, but its catalogue of valuable characters was fragmented almost to the point of being unusable.

By 2005, Marvel regained financial stability and put its plans into motion to create films under its own moniker after seeing how successful other film companies were becoming with Marvel’s characters.[9] The company was able to grapple the rights to Iron Man away from New Line Cinema whose option had expired after their inability to bring a film to the big screen and the rights to the Hulk from Universal Studios thanks to the time sensitive clauses built into the negotiations.[10] Marvel Studios began to blossom as Kevin Feige was employed to oversee the future of the Marvel cinematic universe. In 2008, Marvel Studios burst onto the scene with a $585 million dollar blockbuster in Iron Man. Marvel’s ambition caught the attention of Disney, who in 2009 bought the fledgling film studio for a staggering $4.3 billion, a far cry from the $82.5 million that Perelman spent in 1989. With Disney backing Marvel’s endeavors the comic giant was able to reclaim the intellectual property rights it sold on the verge of bankruptcy.[11] Since Marvel characters began to grace the silver screen in 1986 the catalogue of superhero films have generated $12 billion in total gross revenue and shows no signs of slowing down.[12]

The value of Marvel’s characters shot it to stardom, delivered it from bankruptcy and earned it billions in film revenue. Without its strong characters, storylines, branding and quick decision to sell its rights Marvel would have been another comic company that succumbed to the market crash. Marvel’s struggle speaks volumes about the intrinsic value of intellectual property and the importance of licensing.

Madeline Raheadshot ins is a senior at Belmont University majoring in Entertainment Industry Studies and minoring in Business Administration. This article was written with her love of the film and television industries in mind. She is a lifelong Tennessean and loves the city of Nashville. She plans to stay local as she transitions from Belmont into the workforce.

 


[1] DeForest, Tim. “Marvel Comics.” Encyclopædia Brittanica. Encyclopædia Brittanica, Inc.,September 6,2018. Accessed October 26, 2018.

https://www.britannica.com/topic/Marvel-Comics.

[2] Ibid.

[3] Lambie, Ryan. “How Marvel Went From Bankruptcy to Billions.” Den of Geek. April 17, 2018. Accessed October 26, 2018. https://www.denofgeek.com/us/books-comics/marvel/243710/how-marvel-went-from-bankruptcy-to-billions.

[4] Sudhindra, Nicole J.S. “Marvel Superhero Licensing.” WIPO. WIPO, June 2012. Accessed October 26, 2018.

http://www.wipo.int/wipo_magazine/en/2012/03/article_0005.html.

[5] Lambie, supra.

[6] Lambie, supra

[7] Perilstein, Zach. “A Visual Guide to Explain the Evolution of Marvel Character Rights.” Boardwalk Times. Boardwalk Times. Accessed October 26, 2018.

[8] Rob Aft and Charles-Edouard Renault. “From Script to Screen: The Importance of Copyright in the Distribution of Films.” World Intellectual Property Organization. Accessed October 26, 2018.

http://www.wipo.int/edocs/pubdocs/en/copyright/950/wipo_pub_950.pdf

[9] Johnson, Derek. 2012. “Cinematic Destiny: Marvel Studios and the Trade Stories of Industrial Convergence.” Cinema Journal 52 (1): 1–24. Accessed October 26, 2018. https://bunchproxy.idm.oclc.org/login?url=https://search.ebscohost.com/login.aspx?direct=true&db=aph&AN=82990603&site=ehost-live.

[10] Sudhindra, supra.

[11] Lambie, Ryan. “How Marvel Went From Bankruptcy to Billions.”

[12] “Marvel Comics.” Box Office Mojo. Box Office Mojo, n.d. Accessed October 26, 2018.

https://www.boxofficemojo.com/franchises/chart/?id=marvelcomics.htm.

 

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Editors Note:  Today we begin an intriguing series of articles regarding the relevance of intellectual property concepts in an age in which the likes of John Perry Barlow, founder of the EFF, have declared that because everything can be reduced to digital existence, the need to protect creations of the mind is irrelevant.  We disagree.  We hope you enjoy this thoughtful series of articles by my intern, Lucas Evans.

Why should we care about intellectual property right now?   That’s an easy one. IP law matters right now for two compelling reasons: the ubiquity of the internet, and the burgeoning use of artificially intelligent machines in workplaces.

The internet has changed the way we think about ideas and their spreading. Content and media are accessed in the click of a button, lightning-fast. And while we used to access creative works in relation to their physical embodiment, we now access them in relation to a series of 1s and 0s that have been converted into recognizable content by our machines. This has thrown off our conception of what it means to own an idea or a creative work.[1]

On a different and perhaps more anxiety-inducing note, AI has made a grand entrance into our economy. Because of the impact artificially intelligent agents will have on our world in the coming years, tasks typically reserved for humans will increasingly become turned over to robots.[2] If robots can perform physical and remedial mental tasks that humans have traditionally performed throughout history, what will humans do? What will our ‘work’ look like? The value we bring to the workplace and to the world will increasingly be defined by our capacity to be creative. Our ideas and creative works of the intellect will be even more commoditized than they are now. It is not unreasonable to assume that at some point, robots will perform most of the duties we currently perform, and we will have to ‘get creative.’

And what is the body of law that governs the creations of the intellect? Ah, it’s IP. Copyrights, Patents and Trademarks. These laws and policies that account for issues that creators deal with will become more important to a broader range of the population in the coming decades.

For this reason, we are going to take a deep look at the concept of Intellectual Property: its history, its struggles and disruptions, and current state in the age of the internet and AI. This is the first of three installments dealing with this important body of law.

Origins

The idea of owning property is intimately tied to the American conception of liberty. To show this, a thought-experiment is in order:

Say that a 1600s settler decides to build for himself a cabin in a remote forest somewhere in Colonial America. He chops up the wood and he nails boards together. He stacks everything in a neat and organized way so as to create a shelter. Surely this cabin is his property. But what about the cabin makes it his? It’s not the wood in itself. He has no more right to ‘wood’ than anybody else.  And it’s not some natural law that protects the cabin. In the absence of government, nothing would prevent a gang of bandits from killing him and taking it. Instead, it is the creation made from the wood that he owns, which, if it is to be protected, will be done so by a governing body. And it follows that he then owns the actual wood because it is the physical manifestation of his idea of the house.

The reasoning that anchors our conception of property can be traced directly to Enlightenment thinker John Locke, who in his “Two Treatises of Civil Government” argues that, “every man has a property in his own person: this nobody has any right to but himself. And the labour of his body, and the work of his hands, we may say, are properly his.”[3] We have the right to the fruits of our labors. If we didn’t, what incentive would there be for anyone to work or create things? What value could a human possibly add to a society? We must at a minimum be able to own the fruits of our own labors if we are to be a society in which the members are truly free.

Now consider: doesn’t it seem to follow that we have property in any creation of the mind which is manifested in physical form? This would include novels we author, songs we write, inventions we design, and many more things. To the founding fathers, the consensus seemed to be a mitigated ‘yes.’

James Madison had a broad understanding of property, and defined it in a 1792 essay as such:

“That dominion which one man claims and exercises over the external things of the world, in exclusion of every other individual… In its larger and juster meaning, it embraces every thing to which a man may attach a value and have a right; and which leaves to every one else the like advantage. In the former sense, a man’s land, or merchandize, or money is called his property. In the latter sense, a man has a property in his opinions and the free communication of them.” [4]

That someone could legally protect the flow of their ideas was something practiced primarily in England, where this issue was largely settled under common law and the Statute of Anne. Madison was a proponent of the government protection of the communication of ideas, such that the ability to speak freely was one of the rights fundamental to a free society. Indeed, for Madison, “as a man is said to have a right to his property, he may be equally said to have a property in his rights.”

Thomas Jefferson, on the other hand, was much more skeptical of the government protecting creative expressions. In a famous letter written to Isaac McPherson in 1813 (which is often cited by proponents of broad copyright reform), Jefferson discusses the problem he sees with legally protecting ideas – namely, that they are inherently unconstrained:

“ It would be curious then, if an idea, the fugitive fermentation of an individual brain, could, of natural right, be claimed in exclusive and stable property. If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property.”[5]

Indeed, as Jefferson says, ideas are, in nature, non-rivalrous. That is to say that one person’s use does not diminish another’s. My reading of John Locke’s ideas does not take away someone else’s ability to read him. And my ability to read instructions to create a Lego house does not diminish someone else’s ability to use that same idea. Additionally, ideas have limited exclusivity. I can only exclude someone from using my idea insofar as I keep it to myself. As soon as I divulge it to the world, I can’t stop people from using it. Jefferson realizes these properties of ideas and is thus skeptical of the government protecting them. But he goes on to say,

“Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody. Accordingly, it is a fact, as far as I am informed, that England was, until we copied her, the only country on earth which ever, by a general law, gave a legal right to the exclusive use of an idea. In some other countries it is sometimes done, in a great case, and by a special and personal act, but, generally speaking, other nations have thought that these monopolies produce more embarrassment than advantage to society; and it may be observed that the nations which refuse monopolies of invention, are as fruitful as England in new and useful devices.”[6]

It’s worth noting that this letter was written in reference to a specific patent lawsuit Jefferson was involved in, and so the generalizability of his statements to the whole body of IP may be too big a leap. But from this passage it seems that Jefferson is at best ambivalent to the notion of ‘society’ giving its citizens exclusive rights in their ideas. He recognizes that societies can and do reserve monopolies for authors and inventors, and that this may indeed foster innovation.

In any event, the product of Madison and Jefferson’s deliberations in the 1780s was a clause in our Constitution specifically dedicated to patents and copyrights, the original tenets of intellectual property law:

Article 1, Section 8, Clause 8 provides that Congress may “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.”

The founders gave us the right to limited monopolies on our creative works and inventions, where for a limited amount of time we are the exclusive owners of the expressions of our creative ideas. From this clause Patents and Copyrights were born. Statutes were enacted by Congress, and the Copyright and Patent & Trademark Offices became arms of our legislative branch. Since then, we have seen myriad technological innovations which have tested the strength of these legal mechanisms. From the time when Jefferson and Madison debated it, throughout all of these disruptions, though, the balancing act has remained the same: should ideas be subject to pure utilitarianism and not protected by law? Or is Madison’s framing of ideas and opinions as hallowed property better for society as a whole? Madison’s version made it into the Constitution, and since then it seems that the structures put in place have been largely successful in fostering innovation and creativity. The internet, however, has posed a new problem: ideas are even more perfectly and indefinitely copied, and it is harder to tell the expression from the idea itself.

The next post in this Intellectual Property series will be concerned with how the body of law has molded and transformed and grown throughout the many technological disruptions of the past one-hundred years. Thanks for reading!


[1] https://www.wired.com/1994/03/economy-ideas/

[2] https://learnmore.economist.com/story/57a849c338ba0ee26d98a68d

[3] http://oll.libertyfund.org/titles/locke-the-two-treatises-of-civil-government-hollis-ed#chapter_16239

[4] http://press-pubs.uchicago.edu/founders/documents/v1ch16s23.html

[5] http://www.let.rug.nl/usa/presidents/thomas-jefferson/letters-of-thomas-jefferson/jefl220.php

[6] Ibid

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The plight of the “starving artist” is timeless and history is replete with stories of songwriters and artist being exploited for their intellectual contributions. In the mid 1800’s, when Stephen Foster wrote The Suwannee River, Oh! Susanna, Camptown Races, Jeanie with the Light Brown Hair, and Old Kentucky Home, tImage result for stephen foster songshe 1790 Copyright Act only protected “maps, charts and books” and thus did not extend to musical compositions. The only way Foster could conceive of earning an income from his craft was to sell his sheet music to traveling troubadours and minstrel shows, such as “Christy’s,” that traveled the country. The strategy worked in terms of getting his music exposure, but without adequate protective remedies, it created an environment where unscrupulous and dishonest publishers “bootlegged” his work and sold copies for their own profit. While most of the country knew Foster’s work (even today) because of this exploitation, he died a pauper in 1864 with less than a dollar to his name.  So much for the post-Napster argument that illegally downloading and streaming music actually makes money for its creator by giving it wider exposure!

About 10 years following Stephen Foster’s death, mechanical sound recording technology was developed allowing reproductions of musical performances and thus began a revolution. Just over 50 years following that, transmission of sound waves via broadcast technology was invented and perfected, giving us the “music industry” as we knew it for over a hundred years. Had Foster lived another 20 years or so, he may have made millions of dollars as a result of his creations.

As a result of these nfostertombewfangled and emerging technologies, and at least in partial deference to Stephen Foster’s unfortunate demise, Congress finally passed the 1909 Copyright Act which provided copyright protection for musical compositions, giving them an initial term of 28 years with one 28-year renewal period for the purpose of “prevent[ing] the formation of oppressive monopolies” which might limit those rights. See, H.R. Rep. No. 2222, 60th Cong., 2nd Sess., p. 7. Now, these newly protected musical compositions could be performed and embodied in sound recordings (although sound recordings were still not protected by federal law at this time), which could themselves be performed in broadcasts over the radio waves. It was an exciting time in the music business, which saw the rise of music publishers, record labels, radio stations, Harry Fox and all three performance rights organizations, ASCAP, SESAC and BMI, in that order.

The industry became a powerhouse. The radio stations played the sound recordings, inspiring their listeners to buy the product distributed by the record labels. The performance rights organizations would collect the royalties for performance of the musical compositions, and pay the music publishers and the songwriters. Everyone was happy, or so it seemed. Still there were flaws in the system.  The sound recordings – the the actual performances of a musical compositions fixed onto records – would not receive copyright protection for another 60 years when Congress passed the Sound Recording Amendment of 1971, and even then received only limited rights: derivative, distribution and reproduction. Five years later, the Copyright Act of 1976 created a specific category for sound recordings, and Congress has since given the authors of sound recordings the right to receive digital performance royalties, although they are still not entitled to terrestrial performance royalties, as are songwriters and publishers.

So, prior to February 15, 1972 when the SR Amendment took effect, the performances of the featured artists and musicians on those recordings were not entitled to any performance royalty, but rather were only paid the meager artist royalties that they received from the record labels, if they received anything at all. That deficiency left a significant gap for sound recordings created from circa 1874 until 1972, which were only protected under state and common law regimes – varying widely from state to state if they are even recognized at all – containing divergent scopes of protection, limitations and exceptions. Many attempts have also been made by the recording industry and other stakeholder to urge Congress to pass such acts as the Fair Play Fair Pay Act (H.R. 1836) which would add terrestrial royalties to their list of rights and revenue streams.

As may be expected, this kind of legislative confusion has led to a great deal of state lawsuits as creators of pre-1972 sound recordings attempt to enforce their rights through state courts. In one such case brought by my good friend, Mark Volman of the Turtles, a court ordered SirrusXM to pay almost $100 million to settle a class action lawsuit brought in California, Florida and New York based on state laws governing pre-1972 recordings. In a similar case, the internet service Grooveshark had its business model decimated and was finally forced into bankruptcy as a result of its fight against labels over its use of pre-1972 recordings and whether the Digital Millennium Copyright Act’s safe harbor provision applied.

Such high-profile lawsuits often motivate legislators, who are in turn motivated by what motivates their constituents. As a result, last month, Congressmen Jerrold Nadler (D-NY) and Darrell Issa (R-CA) of the 115th Congress introduced House Resolution 3301, the CLASSICS Act, an acronym for the Compensating Legacy Artists for their Songs, Service, and Important Contributions to Society Act. See, the full text here. The bill has six sponsors, among them is Tennessee’s Representative from the 71st District, Marsha Blackburn.

While the bill addresses the orphan status of pre-1972 gap sound recordings by providing them with the rights currently enjoyed by post-1972 recordings (i.e., reproduction, distribution, digital performance, and derivative rights), it stops short of full federalization of those recordings and continues to ignore the terrestrial royalty issue. The CLASSICS Act is short by today’s standards, addressing only a few key points.  Nonetheless, it is a step in the right direction.  

In short, the CLASSICS Act addresses two of the significant issues raised by the two examples of litigation cited earlier: it makes very clear that the rights of pre-1972 sound recordings are on parity with later sound recordings; and that the DMCA notice and takedown regime is applicable. Notably, Section 1401(d)(1) of the CLASSIC Act “shall not be construed to annul or limit any rights or 9 remedies under the common law or statutes of any State for sound recordings fixed before February 15, 11 1972.” In other words, state law claims are still permissible.

H.R. 3301 is still “only a bill,” and is, as of now, “sitting [t]here on Capital Hill.” As we learned from Mr. Bill in that School House Rock classic written by Dave Frishberg and performed by Jack Sheldon, “it’s a long, long wait while [it’s] sitting in committee,” but a least we can “hope and pray” that one day it’ll be a law!  You can follow whatever progress it makes on Congress.gov.

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By Drew Harris

How delicious are those 11 “secret herbs and spices” assembled by Harland Sanders in 1930 for his popular “Kentucky Fried Chicken” sold at his local service station? It was so “finger lickin’ good” popular that the Governor Ruby Laffoon proclaimed him a “Colonel” and he started franchising his chicken business. But rather than patent the recipe, he chose instead to keep it a “secret” in order to protect it. The KFC Original Recipe is, in fact, perhaps the most famous and notable trade secrets in history.

image
In order to protect the ingredients, the secret original recipe, handwritten and signed by Colonel Sanders himself on a now yellowing piece of paper, is held in a special segregated company vault in Louisville, KY, along with 11 viles of the ingredients for good measure. Throughout time, it has only been seen by a handful of employees (all of whom must, of course, signed ironclad pledges of confidentiality). The vault itself, which can be accessed by only two people working in tandem, is monitored around the clock by video and motion-detection surveillance systems.

To further insure that the secret remains so, the 11 herbs and spices are mixed in separate halves – one half by Griffith Laboratories and the other by McCormack – and then combined together all at once by the latter to ensure that nobody outside of the companies should ever know the incredibly lucrative blend.

Many have claimed to have discovered various versions of the Original Recipe, one of which was published in the Chicago Tribune, however KFC maintains that those are not even close. The ability to maintain the secrecy of the Original Recipe is paramount to the business of KFC, and establishing it as a trade secret offers the fast food giant the best protection. If KFC (or their parent company, Yum! Brands) were to have patented the Original Recipe, the recipe would’ve been published, and made available to the public after the expiration of the patent, allowing anybody to copy the secret recipe verbatim, which would dramatically devalue the KFC brand.

The story of KFC illustrates that trade secrets are very lucrative commodity to U.S. companies such as McDonalds, Coca-Cola, and many others. That is why the Defend Trade Secrets Act of 2016 (the “DTSA”) was an important piece of legislation. The DTSA is a powerful tool for companies like them that ferociously defend their trade secrets.

A Brief History of Trade Secret Protections in the United States

Protecting Intellectual Property has long been important in the United States, and indeed internationally as well, however trade secret law has historically taken the backseat to copyright, trademark and patent law on a federal level. Until 2016, with the passage of the DTSA, trade secret law was handled exclusively on a state-to-state basis, with statutory law differing in respect to statutes of limitations, definitions, application, and other relevant criteria. Companies were required to jump through certain hoops established variously by state legislation and court precedent to establish a trade secret.

Some progress was made toward uniformity in 1980, the Uniform Trade Secrets Act was approved by the American Bar Association. Nearly every state that has enacted a trade secret law has adopted the UTSA (New York and Massachusetts being the two states with trade secret law that have not). Another reference is the Restatement of Trade Secrets, which provides a summary of the varying trade secret laws passed in states throughout the US.

In 1996, Congress passed the Economic Espionage act (EEA), the target of which was stopping trade secret theft by foreign governments, individuals, and entities in general. While the EEA did provide a step in the right direction concerning Federal legislation regarding trade secret theft, instead of provide a private cause of action the EEA instead relied on the U.S. Attorney’s office, which was already strained.

Finally, in 2016, the DTSA greatly altered the way in which U.S. companies can seek remedy for trade secret misappropriation and changed the legal landscape of trade secret enforcement in the following ways:

1. U.S. Companies can now hire their own lawyers

Under the DTSA, rather than relying on enforcement actions of the U.S. Attorney General’s Office, companies now can file private legal actions to protect their trade secrets and seek remedies from individuals or companies that infringe, steal or misappropriate them. The DTSA provides the necessary “teeth” to enforce these valuable rights.

As noted above, under the EEA any company in need of litigation regarding the misappropriation of their trade secret had to go through the U.S. Attorney’s office. By allowing the owners of trade secrets the ability to hire their own counsel, companies are in control of their own enforcement of intellectual property. Companies can also seek out lawyers that have a greater wealth of knowledge pertaining to trade secret law, providing them a benefit that a prosecutor in the U.S. Attorney’s office might not afford. Furthermore, the office of the U.S. Attorney juggles myriad cases at once involving many national issues – it thus cannot consistently give a company in need of trade secret litigation undivided attention. If the company hires its own private counsel, they can choose one who has the appropriate work ethic, knowledge and motivation to pursue the case. Thus, companies that take legal action regarding their trade secrets now are afforded the possibility of more attentive, accountable, and (quite possibly) knowledgeable attorneys- at least in the field of trade secret litigation.

2. There is now a federal (national) standard to use for trade secret cases. Much simpler than before.

The DTSA provides much needed uniform definitions for certain critical terms, most notably “trade secret” and “misappropriation.”

The DTSA definition of trade secret, for example, is rather broad. It allows protection of a wide range of proprietary information, specifically: “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if (A) the owner thereof has taken reasonable measures to keep such information secret; and (B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.” This is very similar to definitions found in prior laws dealing with trade secret, such as the one found in in 18 U.S. C. 1839(3).

Acts that constitute misappropriation are also specifically explained in the DTSA, giving guidance to litigants as follows:

acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or

disclosure or use of a trade secret of another without express or implied consent by a person who—

  • used improper means to acquire knowledge of the trade secret;
  • at the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret was (a) derived from or through a person who had used improper means to acquire the trade secret; (b) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or (c) derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade secret; or

before a material change of the position of the person, knew or had reason to know that—

  • the trade secret was a trade secret; and
  • knowledge of the trade secret had been acquired by accident or mistake.

3. U.S. Companies Can Seize Assets and Freeze Business of individuals or entities that misappropriate their trade secrets (if they can make a strong enough case for it)

In addition to these uniform definitions and the ability to retain private counsel, section 2 of the DTSA granted owners of trade secrets the very powerful, though specific, right to seizures of personal property in order to enforce their rights. They may now act through court order to seize the assets and freeze the business activity of an individual or entity who is potentially misappropriating their trade secret, or disseminating information stolen from that company. This type of civil seizure generally occurs ex parte (meaning only one of the parties to the lawsuit, in this case the plaintiff, is in the court room) prior to a court formally finding misappropriation in the actions of a company against which a claim was filed. The court grants a TRO and seizure order. This seizure, though very useful and necessary in certain situations, must meet a laundry-list of criteria, in order to make reasonably certain that this ability is not used maliciously or in bad faith.[fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][i] These seizures are important as they provide previously unavailable legal strategies for protecting trade secrets.

In Conclusion…

The most noticeable effect of the DTSA will be the ability of companies to privately pursue legal action against individuals or business entities that misappropriate their trade secrets. While the ex parte seizures (civil seizures) are exceptionally noteworthy, the instances in which they can be used are exceptionally rare, making them a useful, though seldom-used ally.

The passage of the Defend Trade Secrets Act of 2016 might not have made the front page, but it has radically changed the legal reality for U.S. companies that need to defend the trade secrets their business relies on.

The Entire Language of the Defend Trade Secrets Act of 2016 can be found here.

Drew Harris Drew Harris is a rising junior at the University of Tennessee and an summer intern at Shrum & Associates.  Drew’s goal is to attend law school and possibly practice entertainment law upon graduation.

 

 

 

 

 


 

[i] The following is the criteria necessary to be granted a court ordered ex parte seizure under the DTSA:

– Order following Fed. R. Civ. P. 65 or some other equitable relief would have to be insufficient in order to obtain this order

– Must be immediate and irrecoverable damage done if the seizure is not ordered and carried out

– A denial of the seizure order must harm to applicant, and that harm must: (A) be greater than the harm to the person/entity against whom/which the seizure is ordered; and (B) significantly outweigh the harm done to any third party by such a seizure

– Chance of success of applicant in showing that the person against whom the seizure was ordered indeed did misappropriate or conspire to misappropriate his trade secret is highly likely

– The request by the applicant is reasonably particular as to the property in need of seizure, location, basically the extent necessary under the circumstances

– The person against whom the seizure is ordered would attempt, or be successful at destroying, moving, hiding, or making his property unavailable through other means if he was served a notice by the court

– Finally, the applicant has not already publicized his request for a seizure, which would counteract the purpose of an ex parte/ civil seizure in the first place[/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]

 

By Erin Thiele and Barry Neil Shrum, Esq.

In the mid-1980s, Donald Trump approached Tony Schwartz to ghost write his autobiography.  At this point in time, Trump was in his early 30s and did not have a great deal of life experiences about which to write a personal biography.  So, according to Schwartz, he suggested instead that writing a book discussing Trump’s deal-making acumen was a better idea, and offered up the title, “The Art of the Deal.”  So that’s what they agreed to do.  The collaboration ended up on the New York Times best-seller list in 1987 and remained there for almost a year.

That Trump and Schwartz collaborated on the book is no secret, since Schwartz received prominent credit on the front cover.  Legally, that takes this project out of the realm of pure “ghostwriting” and places it firmly in the area of joint authorship as defined at 17 U.S.C. 201.

I often explain to my “co-write obsessed” songwriter clients in Nashville that when you enter into a collaboration of this nature with another author, it’s a lot like being in a long-term relationship in that 50% of them end in divorce!   That’s why it always good to have some form of written understanding in place whether you are co-writing or ghost writing.

Fast-forward to present day America where there is a decidedly unpopular duo of presidential candidates which includes Trump’s name on the Republican ticket, amidst a constant whirlwind of controversy and media circuses.  Trump has many times referenced The Art of the Deal on the campaign trail and ranks it among one of his greatest accomplishments.

Schwartz, for his part, obviously feels distraught and remorseful for putting the “T” in Trump.  So, he jumped into the fray suddenly, appearing on Good Morning America with nothing but unfavorable things to say about Art of the Deal and, perhaps more to the point, about his co-writer, Donald Trump.

Schwartz claims he “wrote every word” of the manuscript, further alleging that Art of the Deal is filled with fictional accounts of the deals created in his own mind. Trump’s lawyers strongly deny these charges, insisting in their cease and desist letter to Schwartz that the deals are real, and that it was Trump, not Schwartz, that actually made the deals described in the book and that Trump is solely responsible for its success.  The cease and desist requests, among other things, a return of all the royalties Schwartz has made on the book. 

This reaction was no shock to Schwartz who, in reply, says:

“I . . . almost immediately [fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][received] this cease and desist letter delivered to me by FedEx and it’s nuts, . . . completely indicative of who he is. . . .  I fully expected him to attack me because that is what he does, so I can’t say I’m surprised.  But I’m much worried about his becoming president than I am about anything he might try to do to me.”

From what can be gleaned from news stories related to the controversy, the original agreement between Schwartz and Trump provided that each author would receive half of the book’s $500,000 advance from Random House, as well as half of the royalties from Trump’s agreement with the publisher. This substantiates what the Trump camp has been saying, i.e., that Schwartz has made a great deal of money off the best-selling work:  so much so, in fact, that Schwartz and Trump inked a deal for the audio version less than 3 years ago.

       So, the question becomes was there anything that Trump could have done to prevent these kinds of actions by Schwartz.  More broadly, is there anything one joint author can do to prevent the other joint author from denigrating their work?  The answer, you might suspect, lies in the language of the written agreement between the authors.

       Let’s start there.  Anytime you collaborate with another author, you should insist on a written collaboration agreement.  Anytime you want to hire a ghost writer to draft your memoirs, insist on a ghost writing agreement.  There, I got that out of my system.

       But this is apparently a trickier question when it comes to the Schwartz/Trump agreement, since this agreement between the two of them appears more like a collaboration agreement than a ghost writing agreement.  A glance at the copyright database indicates that Donald Trump is the owner of the copyright, while Schwartz is listed as an author alongside, or “with” Donald Trump.  So, perhaps the agreement is some sort of hybrid between to two.  

When it comes to ghost writing arrangements, there are several grey areas that one should address in the written agreement with the person writing it. But first and foremost, the issue of who owns the work should be specified.  Usually, in the ghost writing situation, the person hiring the writer is considered the “employer for hire” and the work is then considered a “work made for hire.” 

In contrast, in a joint authorship or collaboration agreement, the authors usually own the work together, each holding an “undivided” interest in the copyright (meaning they can exploit 100% of it) and share an equal percentage of the royalties as well as an obligation to account to the other for receipt of any royalties.

Needless to say, in either situation, if one party wishes to be the sole owner of the copyright, there must be a written contract that is specifically states that the author does not own an interest in that copyright, has assigned that copyright, or has performed the work as an employee for hire. The justification for allowing this kind of transaction are too varied to go into here, but primarily if the originator of the idea funds the completion of the work, that person, NOT the ghostwriter, should own the copyright.

              Another preventative negotiating point in either situation would be a provision in the contract that neither author will do anything either during the term of the agreement or afterward that would be “harmful” to the work.  For example, the person hiring the ghostwriter might insist on a “non-disparagement” provision providing that neither party will intentionally be involved in any conduct or activity that may reasonably be anticipated to harm the other party or the work itself.  This type of clause may also have provisions that include liquidated damages and even allow for injunctive relief.  Any of these could have been available to Trump in this situation.

              In addition, especially in ghostwriting situations, the non-disparagement clause combines with confidentiality and non-disclosure clauses which prevent an author from disclosing information about his/her work on the book.  This contract provision has been effective for years, as many great works of authorship have been written in the shadows whilst their authors remain quiet.  John Kennedy’s famous work, Profiles in Courage, for example, was ostensibly written by his chief speechwriter Ted Sorensen, according to the latter’s autobiography released many years after Kennedy’s death when he was no longer subject to the provision.  The key purpose of these types of clauses is that the authors can control what the other author, particularly a ghost writer, can, and more importantly, cannot say about the work.

Needless to say, Trump could have prevented much of the negative publicity that Schwartz is generated if he had more cautiously drafted agreement that addressed these issues and kept The Art of the Deal and Trump’s reputation protected from allegations, true or not.

              Regardless if you are co-writing or ghostwriting, you should explain your situation to a well-informed entertainment attorney and obtain a well-drafted contract to protect your specific situation, as well as your intellectual property. 

  

A special thanks to my intern Erin Thiele for her helpful contributions to this piece.  Erin attends Belmont University’s Mike Curb School of Music and Entertainment Business.

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The first of the month (August 2016), the Department of Justice issued a summary of findings with regard to two court orders that govern the operation of two of the U.S. performing rights organizations (the “PRO’s”), ASCAP and BMI.  If it stands, the decision will also affect the third PRO, SESAC.

Songwriters and music publishers around the country were horrified with the DOJ findings, as were the PRO’s, with many songwriters claiming that they would now have to refrain from co-writing with songwriters belonging to one of the sister PRO’s.  This article will examine the logic of the reaction by the music community.  Is the proverbial sky falling, or will this event pass into obscurity and irrelevance?  We’ll sort out what all this means in this article.

As an aside, if you were not fortunate enough to tune into last night’s episode of my friends Heino and Scott with The Music Row Show on WSM 650, go to their website and check out the archives, as much of the information we share here was talked about in that radio program.  My appearance and conversation with The Music Row Show made me realize just how confused many songwriters will be about all of this legal maneuvering.  

Background

Before we look at the court orders, referred to as “Consent Decrees,” a little historical background will be helpful.  As I said, there are primarily three PRO’s, ASCAP, SESAC and BMI, and they were created in that order.   The two largest US PRO’s, ASCAP and BMI, make up the majority of the industry.  SESAC, by most accounts, has between 10-20% market share (although it is growing exponentially).

This is because ASCAP and BMI were both created out of controversy and strife and that highly competitive environmental produced some robust and resilient entities.  ASCAP arouse out of the Tin Pan Alley days.  Several of the key songwriters, IRVING BERLIN, VICTOR HERBERT and JOHN PHILLIPS SOUSA, began to see their songs being performed in restaurants, hotel lobbies and other venues, and they realized that they were not receiving royalties from these performances, a right that was first granted in 1897 and then incorporated directly into the 1909 Act.  These famous writers banded together to form the first coalition of songwriters and publisher, the American Society of Authors, Composers and Publishers.

Their efforts may have been received well in the music community, but the entities that used the music did not share that enthusiasm.  Certain NYC restaurant and hotel magnets, namely Shanely and Vanderbilt, questioned whether they were required to pay the composer for performance of a song in their establishments, even though they charged no admission for those performances.  The music, they maintained, was just a side show and not the main focus of what their customers were paying for.

The case, Herbert et al. v. Shanley et al. went all the way to the Supreme Court.  Writing for the majority, Justice Oliver Wendell Holmes ruled in favor of ASCAP and songwriters, saying:

Music is part of the total for which the public pays and the fact that the price of the whole is attributable to a particular item which those present are expected to order is not important.  It is true that music is not the sole object, but neither is the food, which probably could be got cheaper elsewhere.

As a result, ASCAP had the stamp of approval from the highest court in the land.  They started an aggressive campaign to acquire licenses from venues where performances of music occurred, including broadcasters like television and radio stations. 

BMI arose as a direct result of ASCAP’s aggressive licensing activities.  From 1931-1939, ASCAP increased its royalty rates to radio and television stations over 400%, to the point where a group of broadcasters decided to get together and form Broadcast Musicians Incorporated in 1939.  They started signing their own composers and begin licensing non-ASCAP works for their catalog.  After a few years, most radio and television stations stopped using ASCAP music and would only use BMI-licensed music.

BMI and ASCAP have been adversaries ever since.  ASCAP, of course, had the upper hand, since they were first to market and arose out of the Tin Pan Alley environment.  ASCAP did not take kindly to being shut out of the lucrative broadcast market and the two organizations began a decades long fight for the music users.  This conflict ultimately caught the attention of the DOJ, who sued each entity under the Sherman Act (anti-trust) to address their comparative market power and balance the weight of power.  The result of the DOJ’s involvement were the consent decrees that, to this day, govern how terrestrial radio (Either AM/FM) digital rebroadcasts, and/or venues such as bars and arenas, license the performance of compositions.

SESAC, a European PRO at first licensing mostly classical, slipped into the U.S. in 1939 amidst all of this sibling rivalry and began licensing in the U.S., but as a private entity as opposed to operating as a non-profit like ASCAP and BMI.  They are not subject to any consent decrees and to this day remain under the radar, although the DOJ periodically audits them as well.

The ASCAP/BMI consent decrees defining what the PRO’s can and cannot not do – most notably, it requires them to issue “blanket licenses” to certain users.  These have been amended in 2003 and 1994 respectively.  The decrees also require that both entities offer licenses are similar terms and to similar clientele.  Importantly, for this discussion, the consent decree require that the PRO’s license to a user like Pandora one a request for license is made, regardless of whether a rate has been negotiated.  If the PRO’s and the user cannot agree on a rate, it is then presented to the “rate court” set up by the consent decree to decide.  The catch is that while all of this legal wrangling is going on, services like Pandora can continue performing the music.

The Recent DOJ Ruling

The gravamen of this issue happened in 2013 when several large music publishers, SONY ATV, EMI and Universal, among others, withdrew their “new media” licensing rights from ASCAP and BMI, leaving them to collect only their terrestrial right (read broadcasted radio or television).  They did this for a couple of reasons:  first, the consent decree do not allow the PRO’s to negotiate a market rate with digital streaming services; so, secondly, they did it in order to negotiate better deals directly with Pandora.  In 2013, Pandora negotiated a favorable percentage rate with Sony and Universal based on their gross revenues.

With their hands tied and major publishers going direct to digital stream services, ASCAP and BMI had no choice.  Streaming revenues have been increasing for years, and without these major players bringing in revenue, their revenues were decreasing.  So, in short, ASCAP and BMI went back to the DOJ seeking clarification with regard to the consent decrees with regard to operation and effectiveness.  Among other things, ASCAP/BMI ask that the decrees be modified to allow publishers/songwriters to “partially withdraw” their works.  This prompted a new review of the Consent Decrees by the Department of Justice that begin in 2014.  The DOJ released its findings on August 4, 2016 of this month.

The DOJ said that the ASCAP consent decrees doesn’t allow a publisher to withdraw partial shares.  It stated that consent decrees require a PRO “license to perform all the works in [fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][its] repertory…” That meant, according to the DOJ, that it could not “rewrite the decree” to let publishers pick and choose how works are licensed and allow fractional shares.  This has great impact on the existing deals already negotiated with Pandora.  Specifically, the DOJ said:

The licensing of works through ASCAP is offered to publishers on a take-it-or-leave-it basis.

Specifically, the DOJ ruled:

1)  That the consent decrees would not be modified or abolished

2)  That the consent decrees to DO NOT allow “fractional” licenses that convey only fractional shares and required additional (read other PRO) to perform the works, i.e, the DOJ interpreted the consent decrees to require “full-work” licensing.

This new and dramatically different interpretation requires the PRO’s to convey licenses to radio, television, bars and digital music services giving them the right to public perform “100%” of their repertoires without the risk of adverse infringement.  This new “full-work licensing” principal applies even if ASCAP or BMI only represent a small fraction of a song’s copyright, which is almost always the case.  The problem, of course, is that ASCAP and BMI do not generally have the legal right to convey 100%!

Ironically, the DOJ findings state that “the current status quo system [used by the PRO’s]. . . has served the industry well for decades and should remain intact.”   This is confusing, since historically the PRO’s have licensed fractional shares, contrary to the DOJ’s findings.  A single song most often is written by multiple songwriters and those songwriters are generally affiliated with different performance rights organizations and only own a fractional interest in that song.  When a song such as All-American Girl, is written by Carrie Underwood, whose performance is licensed by BMI, with two other ASCAP songwriters, traditionally BMI would license 33.33% of the song and ASCAP would license the other 66.66%.  Now, according to the DOJ, either BMI and or ASCAP would have to license 100% of the song and report and pay the royalties for the other songwriters to the other PRO.  Imagine how these historic competitors view that prospect!

Herein lies a big part of this current problem.  If we look to copyright law, as we must, the answers may be clearer.  Under section 201(a), the author of song is the owner of the song.  But as all songwriters in Nashville are prone to collaborate, we have to factor in a second author/owner.  When that happens, the copyright law treats each owner as a tenant-in-common, just like two spouses who jointly own a house.  In other word, each one owns 100%.  So what does that mean?

That means that “[e]ach co-owner may thus grant a nonexclusive license to use the entire work without the consent of other co-owners, provided that the licensor accounts for and pays over to his or her co-owners their pro-rata shares of the proceeds.” United States Copyright Office, Views of the United States Copyright Office Concerning PRO Licensing of Jointly Owned Works (2016).  Of course, the songwriters can alter this default situation through signing a collaboration agreement, but no one ever does because that would “harsh the songwriting vibe.”

Furthermore, in a joint author situation, either author of the work may enforce the right to exclude others from using the work.  So, each author of a joint work “has the independent right to use or license the copyright subject only to a duty to account for any profits he earns from the licensing or use of the copyright.” Ashton-Tate Corp., 916 F.2d at 522 (9th Cir.1990). Accordingly, a joint copyright owner may not exclude other joint owners or persons who have a license from another joint owner. 

But there is another part of this analysis that can’t be ignored, and that is the doctrine of indivisibility.  Under the prior, 1909 Copyright Act, the author(s) could NOT divide the copyright, meaning that if the copyright was licensed, the entire copyright had to be licensed, not just one of the exclusive rights.  So, I would not be able to issue a print license apart from a license to perform the work.  The 1976 Act eliminated this doctrine and effectively made the copyright divisible.  Specifically, Section 201(d)(1) of the Act states that the ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law.  Further, the following section 201(d)(2) specifies that this principle of divisibility applied to each of the exclusive rights – print, adaptation, distribution, reproduction and performance – which could be divided, transferred and owned separately.

Now, for the first time, an author could license only the performance rights.  But more specifically, the author could license only a portion of his/her performance rights.  So, you see, the idea of transferring fractional shares of a copyright, or one of the exclusive rights of a copyright, is actually built into the copyright act.  This is something the DOJ ruling completely ignored in its analysis when it interpreted the Consent Decrees to require the PRO’s to offer 100% licensing of their catalog. 

The DOJ, however, was focused primarily on the user of the music, completely ignoring the creators.  For the user, the DOJ felt it was egregious to have to go to all three PRO’s to get a license to perform one work.  To be fair, the PRO’s have tiptoed gingerly around this issue for years.  A license from one songwriter/publisher to perform a work should, in theory, be sufficient.  That is, after all, the meaning of a non-exclusive license.  The industry has avoided the user aspect of partial rights grants for years, requiring each user to obtain a “blanket license” from all three PRO’s in order to perform each PRO’s catalog (and consequently, glossing over the fact that a license to perform one individual work from the owner of copyright would suffice to perform the work).  In this way, each PRO could distribute the royalties collected on the benefit of their members to each one respectively according to their own algorithms. 

That process may change if the DOJ’s consent decree remains in effect.  Each PRO would have to agree who collects for a particular license, and then credit the other with their share.  This would require each one to adjust their rates accordingly and account to and pay some of the royalties received to the other PRO’s.  While it can’t be stated definitively, one just feels that this process will somehow negatively impact the songwriters and publishers, and not the PRO’s or the venues.

Most people in the industry predict that application of this “full-work” licensing approach will throw the music industry in complete and utter chaos – and they’re probably correct.  But, as I said earlier, all hope is not yet lost.  First, the DOJ gave ASCAP and BMI one year to get their act together and start operating on the 100% licensing principle they outlined.   Second, for perhaps the first time in history, ASCAP and BMI are bedfellows (you know what they say of politics) in that they have agreed to a course of reaction:  BMI is appealing the DOJ’s ruling while ASCAP is lobbying Congress for relief.   ASCAP and BMI both announced that they would join forces to fight this common foe.

The president of BMI, Michael O’Neill, was quoted in the Tennessean in response:

The DOJ’s interpretation of our consent decree serves no one, not the marketplace, the music publishers, the music users, and most importantly, not our songwriters and composers who now have the government weighing in on their creative and financial decisions.  Unlike the DOJ, we believe that our consent decree permits fractional licensing, a practice that encourages competition in our industry and fosters creativity and collaboration among music creators, a factor the DOJ completely dismissed.

For her part, CEO of ASCAP, Elizabeth Matthews stated that:

The DOJ decision puts the U.S. completely out of step with the entire global music marketplace, denies American music creators their rights, and potentially disrupts the flow of music without any benefit to the public.  That is why ASCAP will work with our allies in Congress, BMI and leaders within the music industry to explore legislative solutions to challenge the DOJ’s 100 percent licensing decision and enact the modifications that will protect songwriters, composers and the music we all love.

Most people outside the industry will have no idea how significant it is that both of this PRO’s are cooperating with each other on this issue.  ASCAP’s and BMI’s joint efforts may serve to put pressure on Congress to address an aging Copyright Act and implement some of the recommendations made by the Copyright Office in 2015, namely, the creation of a mega “Music Rights Organization” or MRO that, among other things, licenses all exclusive rights of the copyright owner, including both performance and mechanical rights.  The Copyright Office also recommended an elimination of the Consent Decrees.  U.S. Rep. Bob Goodlatte, R-Virginia, who is chairman of the House Judiciary Committee, is expected to recommend changes to the Copyright Act that could be taken up on the 2017 Congress.

In the midst of all of this activity, SESAC is again quietly biding their time, acquiring Harry Fox (mechanical rights) and Rumblefish (a “record label” including digital performance rights) in preparation for becoming perhaps the first effective “MRO.”

No one truly knows the ultimate outcome of all of this but one thing is certain:  the history of performance rights organizations in America continues to evolve.  The copyright law is very complex and have evolved over the years since its passage in 1976.  That law took almost half a century to pass and there is no reason to believe that a new revision wouldn’t take just as long given the multiple competing and often conflicting interests of various stakeholders.  But patience is not the songwriter’s only recourse here:  write your elected representative in Washington and plead your case, as free speech is the only right that will make a difference in this fight.

 

 

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by Erin Thiele and Morgan Wisted

           NASHVILLE, TENNESSEE.  Casey Dienel is suing Justin Bieber and his producer, Sonny Moore, p/k/a Skrillex, (among other defendants) for copyright infringement involving her song, Ring the Bell, from which she claims the Bieb stole musical riffs for his hit Sorry.  She claims that the vocal riff she created in 2014 is unique and is the musical hook of her original composition.  Here a link to the complaint, filed in the Middle District Federal court in Nashville, and styled Casey Dienel v. Warner-Tamerlane Publishing et al. So, I guess the question of the day is, “Should Justin Bieber be ‘sorry’ for Sorry?  

            Let’s take a breathe and consider whether, in fact, there is something to apologize for!  Dienel’s stage name is White Hinderland.  In her complaint, Dienel claims that Bieber and his producer, Skrillex, stole part of her song Ring the Bell that was released in 2014.  So the real question might be, “What legal elements of copyright infringement will be relevant to determine this issue?”

            Basically, infringement of song occurs when someone other than the author takes any part of that song without permission, provided that what is allegedly taken is entitled to copyright protection. The elements of copyright infringement, simply stated, are

  1.  Ownership of a valid copyright;
  2.  Access; and
  3. Misappropriation.  

   That may sound easy enough, but proving each of those elements in a court of law can get a little tricky.

OWNERSHIP

            Ownership of a copyright is easy enough to prove.  Do you have a copyright registration certificate?  If so, the court will give you a “presumption,” i.e., it will assume you own the copyright and you don’t have to prove anything else.  That shifts the burden of proof to the defendant, who then is required to present evidence that you do not own the copyright. Since the devil is in the details of the remaining two elements, often the ownership element of the case is “stipulated,” or agreed upon by the parties before they ever get to court.

ACCESS

            As for the second element, “access,” the “trier of fact” (either the judge or the jury – we’ll continue to call this the “court”) will attempt to determine whether the person allegedly infringing the song had access to the original song, the rationale being that if the person allegedly stealing material does not know the song exists, there is no way it can be stolen.  So this element is pretty critical:  if the alleged infringer has never heard the song, it’s likely the song had no influence on his creation.  That’s a principal called simultaneous or independent creation.  That principal is used to prove not only access, but substantial similarity as well.  How does all of this add up for the Bieb?  As with all cases, the opposing parties are making different claims:

            Specifically, Dienel alleges that Bieber infringed a four-note riff at the beginning of her song Ring the Bell, using the same melodic riff in Sorry. In fact, she believes that the two riffs are so similar that the only possible conclusion that can be reached is that the Bieb and company copied the riff verbatim and used it throughout the entirety of the song Sorry.  Listen for yourself:

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            Few responses have been generated by Bieber, Skrillex and the opposing party.  The only ripple from that camp regarding the issue occurred, of course, in social media, in a tweet by Skrillex, who said point blank: 

SORRY, but we didn’t steal this.

To that tweet, Skrillex attached a quickly constructed and attached the following video of how he produced that riff in Bieber’s song:

Skrillex Video on Twitter Feed 

            Keep in mind, of course, that this video produced by Skrillex may or may not have any legal effect, since it was produced by one of the parties after the fact.  Remember that important 2nd element of access?  Bieber and Skrillex claim that they never heard of the artist “White Hinderland” prior to her making these allegations, and, of course, claim that they never heard the song that they have allegedly infringed.  In other words, they are claiming that they did not have access to “Ring the Bell.”  If that claim is true, then Bieber should be sorry for nothing. On the other hand, if Ring the Bell indeed was the influence for Sorry, then it might be “too late to say I’m sorry” (pun, but no infringement intended) – only a number in the checkbook will do.

   But there are always two sides to any legal argument, and we shouldn’t just take Bieber at his word simply because he’s the Bieb.  In her complaint, Dienel alleges that she wrote the original song in 2014, and that Ring the Bell was the first song released off of her third album Baby, which achieved success on her label, Dead Oceans, a subsidiary of the group Secretly Canadian.  The song has, in fact, been streamed almost a million times.  In addition, the song received critical acclaim in many industry media outlets, including one mention in Rolling Stones magazine, which, in the February 13, 2014 edition, listed it as one of their “favorite” songs.  It just so happens that this edition of Rolling Stones also contained a feature article about none other than Skrillex. Those facts can be easily verified.  So, this little bit of chronology puts a bit of a damper on the defendants’ “never heard of her” arguments in regard to access in that a court could very easily determine that claim to be disingenuous and self-serving.

            For her part, Dienel’s social media campaign is in full swing as well and is standing on her arguments that Bieber and Skrillex had plenty of access to her work.  In her social media buzz, she states her desire that Bieber, as a fellow creator, should have just obtained a license to sample her riff.  Dienel has been quoted numerous times stating, “Like most artists that sample music, Bieber could have easily licensed my song for use in Sorry, but he chose not to contact me.”

            So, the element of “access” will turn out to be a dog fight, as it usually does, with both parties presenting their respective opinions.

MISAPPROPRIATION

            The third element the court will examine is whether the parts of the song allegedly stolen are entitled to copyright protection at all, in this case the four-note riff.  That’s called misappropriation.   The rationale is simple:  in order for someone to collect money damages for infringement of a creative work, the work has to be entitled to exclusive protection.

              More specifically, in order for the riff to be entitled to copyright protection, it must possess a “modicum” of creativity, according to the Supreme Court.   This is not a high standard to meet.  Is four notes sufficient to meet the Supreme’s criteria for creativity?  At least one court, the 6th Circuit has found that, in cases of a sound recording copyright, even three notes can be sufficient.  See,  Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005).  That’s not the always the last word of course, but if a court determines the requisite amount of creativity is present in the four notes, then the riff most certainly could be misappropriated.   One interesting factoid here is the this case is being tried in the Middle District Court of Tennessee, which is governed on appeal by the 6th Circuit, meaning that it must follow the opinions of that higher court.  Incidentally, Dienel is claiming infringement of both her sound recording and her musical composition, so this decision will be extremely relevant to the outcome.

   Another factor considered when looking at misappropriation is how similar the two competing works are.  The courts sometimes refer to this as substantial similarity.   Once access is established, substantial similarity is a threshold beyond where that copying wrongfully appropriates the plaintiff’s protected expression.   Courts look at this subelement both qualitatively and quantitatively to determine if the copyright is “striking” or “substantial” – something beyond a so-called “de minimis” use – but it is important to realize that such similarity can exist where the portion of the original work copied is small, but nonetheless constitutes the “heart” of the work, as Dienel is claiming here.

CONCLUSION

            So there are some important take aways for artists, songwriters, and the minions that love them:  (1)  NO ACCESS – NO INFRINGEMENT.  What someone doesn’t know won’t hurt him, literally, because there is no access;  (2) DON’T RIP SAMPLES.  If Bieber’s claim is true – that did not steal the riff but rather created it on his own – then it may be time for Dienel to say Sorry.  But if Dienel can prove out the claims in her complaint, she will have a pretty good defense against the Bieb’s denial;  (3) IF YOU HEAR SOMETHING AND SAY “LOVE IT, GOT TO USE IT,” GET A LICENSE.  Always, when in doubt, get a license if you are sampling a sound recording, particularly if you live in the jurisdictions of the 6th Circuit.  If Bieber and Skrillex did sample the riff, but had obtained a license, then there would be no lawsuit.  It’s that simple.  Licenses are always cheaper than defending a copyright infringement action in Federal court!

            Is this a case of monkey (Bieb) see, monkey (Bieb) does? (Yes, I had to do it!).  Or is this more a case where the monkey (Bieb) “hears no evil, does no evil”?  This lawsuit is why I love copyright law so much:  it has many angles and there are several ways to look at it.  Lawsuits always have a least two sides!  While it may be easy to jump on the bandwagon of the underdog, it has yet to be determined whether Bieber owes Dienel an apology (and tack on a few million), or does she owe him one?  What do you think?  Email us at info@shrumlaw.com or Tweet me @bshrum.

Erin Theile    

Written by guest bloggers, Erin Thiele and Morgan Wisted, edited by BNSesq.  Erin and Morgan are students a Belmont Unversity’s Mike Curb School of Entertainment and Music Business program and intern at Shrum & Associates.


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“[fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][E]very man has a property in his own person. This nobody has any right to but himself. The labour of his body, and the work of his hands, we may say, are properly his….”[1] John Locke – a political and social philosopher of 17th Century Enlightenment England and the father of “Classical Liberalism” – was the most influential advocate of natural rights and social contract theory. He believed that in order to establish a civil society, men must give up some of their natural power to the society in exchange for the guarantee of their God-given natural rights. A civil and just government must become a type of “social watchdog” that is charged20087270_jl (2)
with the protection of the individual’s inalienable rights, including, life, liberty and property. These concepts, inspiring in thought and revolutionary in action, were the single most important influence that shaped the founding of the United States. Influenced by Lockean thought, intellectual property – the products of the mind – possessed a value that arose during the framing of both the Declaration of Independence and the U.S. Constitution and would later influence modern day copyright law.

Locke directly influenced the author of the Declaration of Independence and the framers of the Constitution with his central political principle that rights in property are the basis of human freedom and government exists to protect them and preserve public order. Locke’s theory stemmed from the commonly accepted concept of “Natural Law” under which it was believed that every person has natural rights, not given by a ruler but rather derived from a higher power which, in the case of Locke, was the God of the Bible. These rights, according to Locke, were “inalienable,” i.e., they cannot be taken away.

In Locke’s understanding of Natural Rights, the right of property is paramount. For him, “property” encompassed not only physical possessions, but intellectual capital as well. Locke proposed that within any organized community, there is a type of “Social Contract” between all members of the community in order to gain collective advantages that the members of the body politic would not be able to secure individually. This contract forms the basis of the equitable distribution of rights and obligations between the people and their government. The political power of the government is granted to it by the people and is, therefore, a “trust” for the benefit of the people. In turn, the people give this power so that their own welfare is increased and their individual property is protected in a way not possible in what Locke calls the “State of Nature,” where the will of the stronger (or the many) is often forced upon the will of the weaker (or the few).[2]

Locke’s ideals of the “Contract of Society” and “Contract of Government” formed the basis of Thomas Jefferson’s passionate believes conveyed clearly in the Declaration of Independence:

“We hold these truths to be self evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness. – That to secure these rights, Governments are instituted among Men, deriving their just powers from the consent of the governed, –“[3]

Having been bound by the monarchy, Jefferson understood the importance of this radical, yet equitable and sensible, way of thinking. Locke’s ideas were widely circulated and debated throughout the Colonies by this point, and Jefferson would later confess that while writing the Declaration, he “…did not consider it a part of my charge to invent new ideas, but to place before mankind the common sense of the subject.”[4] Jefferson admits to referencing Locke and simply being the tool to communicate and apply the sensibility to the newly independent colonies.

Locke’s influence on American principals can also be seen in his work, A Letter Concerning Toleration. In it, he develops a means of understanding moral truths with strong political implications. Although420-founding-fathers-madison-jefferson_imgcache_rev1308943458862
his letter focuses primarily on the separation of church and state (something that also had a great impact on Jefferson), it has wider implications in that it provides the philosophical foundation for free speech and freedom of action that follows from free and independent thought. This, in turns, provides a basis for a future understanding of the protection of independent thought as intellectual property. The only precondition of thought, truth, creativity or innovation is political freedom. While in Locke’s letter this freedom of thought refers to specifically to religious ideas, it clearly develops the principal that government is not in the business of enforcing morality but rather protecting an individual’s personal rights from being violated by the collective society.

In a society governed by Locke’s social contract, then, laws established by the government are intended to provide safety and security of the commonwealth as well as every individual’s goods and person.[5] Later, the newly formed United States would incorporate Locke’s freedoms of expression in the First Amendment of the Constitution: “Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging, the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the government for a redress of grievances”[6] Although the First Amendment, just like Locke’s letter, does not reference ownership of property, it will be referenced time and time again in court rulings securing our freedoms of expressions, and will play a crucial role in the development of copyright law in America.

A year after writing the letter referenced above, Locke published the Second Treatise On Civil Government. In it, Locke wrote that the basis of the equality, independence and ultimately the freedom that exists between all individual men, is their mutual possession of reason.  He asserted that through Natural Law, God has given the world to every man in common and he has given them reason to make use of it to the best advantage of life and convenience.[7] This is reflected clearly as Jefferson pens the word of the Declaration: “… the powers of the earth the separate and equal station to which the Laws of Nature of Nature’s God entitle them….”[8]

Locke continued to expand on the idea that man has a natural right to take advantage of the Laws of Nature by explaining that the labor of the body or the mind, and the resulting work of the hands, are the property of the individual and anything that nature has provided and man has joined to it makes it his property. Once man has removed it from the common state of nature, mixed it with his physical or intellectual labor, he is therefore annexing it and excluding it from the common right of other men.[9]

Locke further developed these ideas by providing insight into unilateral appropriation, the idea that there is something individuals can do on their own to establish rights over natural resources that others have a moral duty to respect.[10] In American jurisprudence, the idea of unilateral appropriation is used to justify private property rights and morally binding restrictions and limitations that are perhaps with greater authority than any other social agreement, to wit, there is a universal justification for people owning what is theirs. The implication of Locke’s universal appropriation theory is that a person owns his or her labor and any un-owned thing he mixes it with. This labor can improve resources, adding value through the pains of individual labor. Through this labor and improvement of natural resources more natural resources are available for others. Hence appropriators are entitled to some type of unconditional right to produce their own subsistence.[11] In the U.S., Locke’s concepts are incorporated in §102(b) of the Copyright in the form of our “idea/expression” dichotomy, in that a person is free to incorporate common and universal ideas into their own individual expressions.

A little over 100 years later, both Thomas Jefferson and James Madison would embrace the ideology presented by Locke in the Second Treatise, although Jefferson at first struggled with the idea that the protection of intellectual property might somehow become a monopoly and thereby denying others access to a natural flow of information and innovation. This is reflected in a letter to Isaac McPherson on August 13, 1813, often cited by opponents to the concept of intellectual property, in which Jefferson ultimately argues the notion that inventors and their heirs have a natural and exclusive right to their inventions. In the letter, Jefferson insists an idea in nature is excluded from exclusive property stating, “the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it.” Jefferson continued that “ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition.” He compares an idea to the air we breathe, “incapable of confinement or exclusive appropriation.”

There are two things to note about the famous quotation of Jefferson. First, he clearly notes that it is ideas that exist in nature that cannot be possessed, but implicitly does not stray from the Lockean idea that once a person mixes labor with it it, it can be possessed. He ultimately agrees with Locke that the one who initially possess as well as expresses the idea should have, “exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility.”[12] Because of the Colonies’ past experience with England, Jefferson’s principal intellectual conflict over the concept of ideas as property was the threat of monopolizing anything, including intellectual ideas.

Unlike Jefferson, however, Madison, the primary architect of our Constitution, fully embraced the idea of the protection of intellectual property and recognized that the nature of an individual piece of intellectual property is such that it could be useful to all people and yet could be owned by one person. When writing the Fifth Amendment, “No person shall… be deprived of life, liberty, or property, without due process of law; nor shall private property be taken for public use, without just compensation,” Madison was directly referencing Locke’s idea of appropriation and preservation of their estate[13]

On the other hand, Madison did agree with Jefferson that ownership of property in general could amount to indefinite monopolization of that property by the owner. But Madison nonetheless recognized and later persuaded Jefferson, that intellectual property was a thing of value to all of society and was susceptible of being appropriated in the public interest without just compensation to the individual who was the inventor or author. In Madison’s words “….the (creative) few will be unnecessarily sacrificed to the (greedy)many”[14] (notations added). In these words, Madison ingeniously combined Locke’s idea that a person is entitled to the fruits of their labor as applied to the state of nature with the much more politically accepted notion of utilitarianism that laws should benefit the majority.

So even though Madison sought to protect and provide compensation for intellectual property, he agreed with Locke’s thought that there was a limitation to this protection. Locke describes this limitation as follows: “as much as any one can make use of to any advantage of life before it spoils, so much he may by his labor fix a property in. Whatever is beyond this is more than his share and belongs to others.”[15] Although Locke’s comment here refers specifically to tangible natural resources as mixed with the labors of man, the premise is nonetheless later used by Madison when writing, Article I, Section 8, Clause 8, of the Constitution, which provides that “…Congress shall have Power … 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.”[16] This Constitutional provision, birthed in the ideas of Locke in 1690, encapsulated by Jefferson in the Declaration of Independence in 1776, and later drafted into the United States Constitution by Madison in 1788, continues to form the basis for the protection of intellectual property in the United States today.

This is the historical and philosophical evolution of Article I, Section 8, Clause 8, the so-called Progress Clause, which is and always has been the basis for U.S. copyright law. The Progress Clause is the only clause in the Constitution that grants power to Congress and specifies the means to accomplish its stated purpose. The exact limitations of this clause have been the subject of countless U.S. Supreme Court cases. One case in particular, Petrella v. MGM, is a United States Supreme Court copyright decision that references Locke and Madison’s ideas on the limitation of intellectual property ownership. In Petrella, retired boxer Jake LaMotta and his friend Frank Petrella (Plaintiff) wrote a story about his career which resulted in three copyrighted works: a screenplay, written in 1963, the book Raging Bull: My Story, published in 1970 and yet another screenplay, written in 1973.

In 1976, LaMotta and Petrella assigned the copyrights in their works, including renewal rights, to Chartoff-Winkler Productions, Inc., which assigned them in 1978 to United Artists Corporation, which later became a subsidiary of Metro-Goldwyn-Mayer. In 1980, as a result, MGM released (and registered copyright in) the film Raging Bull, which achieved popular and critical success. Petrella died in 1981, during the initial terms in the three original works (these works will still under the auspice of the 1909 Copyright Act). After his death, the renewal rights in the works reverted to his heirs.

In 1991, Petrella’s daughter sought to renew the copyrights, but was unable to timely file except with respect to the 1963 screenplay. Approximately seven years later, she advised MGM that its exploitation of Raging Bull violated her copyright and threatened suit. Another 9 years after that notification, on January 6, 2009, Petrella finally filed her infringement suit against MGM, seeking monetary and injunctive relief limited to acts of infringement occurring on or after January 6, 2006.

MGM understandably moved for summary judgment, arguing that, under the equitable doctrine of laches, an unreasonable delay by the plaintiff in bringing the claim, Petrella’s 18-year delay in filing suit was unreasonable and prejudicial to MGM. The District Court granted MGM’s motion, holding that laches did in in fact bar Petrlla’s complaint.[17]

In this example, we see the interplay of the Locke/Madison ideology concerning the limitation of intellectual property rights and the checks and balances of our judicial system, and the effect of laches on those rights. Although Petrella fell within her legal right under legislation regarding the transfer of the copyrights, she was stymied by her unreasonable delay in bringing the claim that resulted in her loss. This is an example of how our legal system and doctrines serve to protect the ideas of Locke and our Founding Fathers that there be limits on intellectual property, preventing it from being held hostage for an indefinite period of time.

John Locke is America’s intellectual founding father, imparting knowledge and enlightened thinking to our Founding Fathers and leaving his philosophical fingerprints all over our founding documents. The human right to property, including intellectual madisonproperty, was understood by the Framers of the Constitution and evidenced in the Declaration. In order to advance society, the progress of science, creativity and innovation, i.e., intellectual property, must be encouraged with the protection under the law. Although Jefferson argued that thought is free flowing and feared “ideas” might become a monopoly, he had a greater passion for advancing the illumination of minds and the disseminating knowledge through a growing nation. Madison clearly understood that the continuum of existing knowledge to invent and innovate must be protected within the confines of the law so that the newly-created Republican majority didn’t take advantage of the individual’s rights. What began as radical enlightened thinking in the mind of Locke over three hundred years ago, implemented 100 years later by our Founding Fathers when securing the unalienable rights of the people, continues to encourage innovation under the protection of the law over 200 years later.

The author, Madison Brinnon, is an Entertainment Industry Studies major at Belmont University, minoring in Mass Communication.  She will be in Brazil and Argentina during Spring 2015 studying culture and music of Brazil while doing coursework in Music and International Business.  Through the summer she travels with the Turtles on their Happy Together Tour as an intern, and returns to college in the Fall at Belmont’s Los Angeles Campus.  Ms. Brinnon has also traveled to several countries in Europe and to a small medical clinic in Zimbabwe where she presented medical supplies that she collected through a small philanthropic organization in California that she helped found.   Madison indicates that her inspiration for this article, originally turned in as a research paper for Mr. Shrum’s Copyright Law class, was fueled a love for history, especially American History, and states, ”So many times we take our rights for granted and never consider the impact our founding fathers have on our lives today.  It is important to understand the foundation upon which modern day law, and in this case, copyright law is based.”


[1]John Locke. Two Treatises on Government. London, 1821. PDF e-book. 209.

[2] George Stephens. John Locke: His American and Carolinian Legacy.” In John Locke Foundation. Raleigh: John Locke Foundation.

[3] “The Declaration of Independence: A Transcription.” National Archives and

Records Administration. Accessed April 14, 2015.

http://www.archives.gov/exhibits/charters/declaration_transcript.html

[4] Richard J. Behn “Declaration of Independence Preparations Drafting Declaration Independence.” Accessed April 13, 2015. http://lehrmaninstitute.org/history/declaration-of-independence.html.

[5] Chuck Braman. “The Political Philosophy of John Locke, and Its Influence on the Founding Fathers and the Political Documents They Created.” 1996. Accessed March 28, 2015. http://www.chuckbraman.com/political-philosophy-of-john-locke.html.

[6] “First Amendment – U.S. Constitution” Findlaw. Accessed April 14, 2015. http://constitution.findlaw.com/amendment1.html.

[7] George Stephens. John Locke: His American and Carolinian Legacy.”

[8] “The Declaration of Independence: A Transcription.” National Archives and

Records Administration. Accessed April 14, 2015.

http://www.archives.gov/exhibits/charters/declaration_transcript.html

[9] Chuck Braman. “The Political Philosophy of John Locke, and Its Influence on the Founding Fathers and the Political Documents They Created.”

[10] Karl Widerquist. “Lockean Theories of Property: Justifications for Unilateral

Appropriation.” Public Reason 2, no. 1 (June 2010): Accessed March 28, 2015.http://www.publicreason.ro/articol/21.

[11] Chuck Braman. “The Political Philosophy of John Locke, and Its Influence on the Founding Fathers and the Political Documents They Created.”

[12] Thomas Jefferson, “Article 1, Section 8, Clause 8: Thomas Jefferson to Isaac McPherson.” Accessed March 28, 2015.

http://press-pubs.uchicago.edu/founders/documents/a1_8_8s12.html

[13] “Fifth Amendment – U.S. Constitution” Findlaw. Accessed April 14, 2015.

http://www.law.cornell.edu/wex/fifth_amendment.

[14] Howard W. Bremer., JD. “Chapter NO. 3.9 U.S. Laws Affecting the Transfer of Intellectual Property Editor’s Summary, Implications and Best Practices.” Accessed April 09, 2015. http://www.iphandbook.org/handbook/ch03/p09/eo/.

[15] Chuck Braman. “The Political Philosophy of John Locke, and Its Influence on the Founding Fathers and the Political Documents They Created.”

[16] “Article 1, Section 8, Clause 5.” Article 1. Accessed April 14, 2015. https://www.law.cornell.edu/constitution/article1.

[17] Petrella. v. Metro-Goldwyn-Mayer, Inc., (U.S. 9th Circuit Court of Appeals).[/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]

My associate, John Inniger, does a nice job of covering the basics of the Thicke/Williams litigation against the estate of Marvin Gaye in this LOR post. But since a jury verdict in favor of the Gaye Estate rendered a $7.1M verdict earlier this month, the social media and blogosphere has been abuzz with commentary pro and con on the merits of the case.  So an editorial post-mortem is in order.

One example of the Internet ramblings is Moses Avalon, one of my fellow bloggers and a self-styled “music business expert.”  Mr. Avalon denounced the verdict both in print and in an interview on Fox as being based on the “sound of the Gay recording, featuring a somewhat similar bass line.” On his blog, he makes the assertion that “[fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][a] bass line has never been considered part of a composition’s copyright.” You can read Moses’ article here on his website.  I generally find Moses’ articles and newsletters to be entertaining and informative, and always applaud the efforts of a fellow member of the community who makes great strides in communicating with the public as he does.  I must say, however, that I disagree with Moses’ assessment of the outcome in this case as well as with his characterization of it as based on a “sound.”  He is also wrong about bass lines, by the way, but more on that later.  I will say that the one thing Avalon did say in the referenced article that is correct is his conclusion that the only group of people “in the world [who] can tell you if you stole a song— [is] called a civil jury.”  So that’s where we’ll begin.

In regard to jury trials, this is one area of the law where “lay people,” i.e., people who are not lawyers, get confused when it comes to verdicts like this one, perhaps as a result of watching too many episodes of Law & Order, Boston Legal (for the Shatner/Spader fans)  or L.A. Law  (for those who go as far back as I do).  Real jury verdicts are not generally based on emotions and drama, but rather on a particular set of (sometime mundane) facts, introduced into evidence through witnesses, whose credibility and reliability are evaluated by those jurors in the deliberation.  So, before someone criticizes a jury’s verdict for being based on “the legacy of a beloved artist [such as] Marvin Gaye,” as Mr. Avalon did here, it would be beneficial to review the evidence that was submitted to that jury and try to get into their minds to determine how they arrived at that decision.

Not to belabor this point, but in a jury trial, the jury evaluates the fact and the judge rules on the law.  As for copyright infringement cases, not to oversimplify it, the plaintiff must offer evidence that proves the following: (1) that he/she is the copyright owner; (2) that the alleged infringer had access to the work; and (3) that protected elements of the original work were misappropriated. These elements would be presented to the jury at the beginning and end of a trial, in the form of jury instructions from the judge, and they would make a determination as to whether the facts support these elements.  Of course, as an aside, there are many related elements contained within those prongs, such as whether the works are “substantially similar,” or whether the two works were created independently, or whether the similarities are based on basic building blocks, i..e., elements that cannot be protected by copyright.  Apparently, the latter defense is what swayed Avalon to come down on the side of Thicke/Williams.  Moses believes that the jury verdict was based on a mere “bass line” and rhythm, which are ostensibly only building blocks and can never be protected. But this assessment would be incorrect:  there are times when these elements meld into the melody and/or become distinctive enough, as the experts here testified they did.  For example, in the seminal case involving parody, Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994), the Supreme Court spent a great deal of the opinion discussing the “characteristic” bass line of Pretty Woman, describing it as the “heart” of the song, and on remand ask the lower court to retry the issue of whether too much of the bass line was used to achieve the transformative purpose of the parody (ultimately, Acuff-Rose licensed the song to 2 Live Crew in a settlement).  In the case at hand, there was testimony from an expert witness that the bass line from the Marvin Gaye song was an unusual variety in Motown music and very characteristic of Gaye’s style.

But before we delve too deeply into the evidence presented to the jury, there is another aspect of the Thicke case that is often mischaracterized by bloggers, media and press.  Many imply or even report that it was the Gaye family who started this litigation.  Let clear that up:  this is not an infringement action filed by the Gaye family, but rather this case was filed by Robin Thicke and Pharrell Williams, among others, against Marvin Gaye’s estate, not the other way around.  In a somewhat aggressive move by their flamboyant California lawyer Howard King, they filed a preemptive action for declaratory relief, asking the court to declare that they song was not an infringement.  At the very least, this move was risky – as can be seen from the outcome – and at worst, it was arrogantly misguided. This “strategic” move, perhaps inspired by the Gaye family’s inquiry to its publisher after reading Thicke’s comments on the song, has also been hotly debated in the blogs and on the Internet as well:

Robert Jacobs, co-chair of entertainment & media at Manatt, Phelps & Phillips, had this to say about the declaratory judgment:

The move could have been precedent setting if Thicke and Williams had prevailed, then other songwriters and lawyers may have started using the pre-emptive lawsuit as a strategy to push back on spurious claims.

This “pre-emptive” strategy is reminds me of the tactic employed by some lawyers using the procedures in F.R.C.P. Rule 11 involving frivolous lawsuits as an overtly offensive strategy to persuade their opponents to drop certain allegations in a case or various counts in the complaint.  This tactic has become commonplace in both State and Federal courts and is sometimes rewarded by more conservative judges.  Harvey Geller, with the Los Angeles law firm of Gradstein & Marzano, agreed King’s unorthodox strategy here might be an interesting approach, but seriously questioned the strategy:

If they want to settle and you instead sue, you are guaranteeing yourself a long and nasty legal battle. It was a really odd procedural maneuver. When you sue somebody, the one thing you can practically guarantee is you will get a cross complaint.

My local home boy and fellow member of the Nashville bar Richard Busch, attorney for the Gaye family, agreed that the strategy backfired, saying:

I was surprised. When Robin Thicke and Pharrell Williams decided to launch a lawsuit seeking declaratory relief that “Blurred Lines” wasn’t a copyright infringement of Marvin Gaye’s “Got to Give It Up,” I didn’t know they’d do this. My opinion is that they believed the Gaye’s didn’t have resources and the wherewithal to fight. My belief then was they were being bullies. I bet now they regret it.”

So now that we have those strategic and political back stories aired, let’s examine the evidence presented to the jury.

Perhaps the most damning type of evidence in any case is an admission from the alleged perpetrator that he/she is guilty. This case is not an exception. Long before to the litigation arose and before the Gaye Estate was alerted to the similarities, Robin Thicke bragged in an interview in GQ magazine about how much of a fan he was of Marvin Gaye. In fact, the rumor was that Thicke had a “fixation” on Gaye. Thicke continued to pontificate about how he had literally instructed Pharrell Williams to write a song just like Got to give it up. In fact, he said that Williams even “pretended” that he was Marvin Gaye as he wrote Blurred Lines. Starting with that confession, a jury doesn’t really need a lawyer telling them that they will find in favor of Gaye as to all three elements: ownership, access and misappropriation.

Of course, by the time the litigation was in full swing in April 2014, Thicke was claiming in a deposition that he was drunk and high on Vicodin when he recorded Blurred Lines and that he barely remembered anything, and was barely involved in its production.  He claimed that Williams wrote “almost every single part of the song.” As for his claims in GQ, he attempted to discount their validity, stating that he was jealous and “wanted some of the credit.” To make matters worse, when he testified in court, Thicke tried to generate jury sympathy with a self-deprecating characterization of himself, testifying that he had lied repeatedly in interviews and in sworn legal documents in an attempt to claim co-writing credit for the song that is the biggest hit of his career thus far.  That kind of dishonesty doesn’t play well with a jury, as it’s difficult to know which statements made by the witness are true and which are false.  It’s King’s worse nightmare and a dream come true for Bosch.

In King’s opening comments of the trial he emphasized how artists needed wide berth in their creative pursuits, trying to implant in the minds of the jury the theme he had set out as fact in the complaint, that “[t]he intent of “Blurred Lines” was to evoke an era” and therefore the songs were “starkly different.” During his opening statement, he reinforced his theme of his case just as he, Williams and Thicke had reinforced it publicly in the press, on the Internet, and social in media: “We’re going to show you what you already know: that no one owns a genre or a style or a groove. To be inspired by Marvin Gaye is an honorable thing.”  In fact, the team is still pushing this idea that being an inspiration to current artists is an honorable thing.  While that statement is definitely true, what they ultimately discovered is that this inspiration looks a whole lot different than misappropriation.  By virtue of the Progress Clause of the Constitution, artists already have wide berth to be inspired by the creative ideas of others – indeed that is the very purpose of Copyright Law – but that does not mean that they can appropriate the expression of those ideas and call them their own!

Throughout this ordeal, Williams seems to be the most honest and sincere of the bunch, which is a tribute to his character, especially considering that Thicke basically threw him under the bus on multiple occasions during the course of the litigation. In his own testimony, Williams estimated that he has written thousands of songs in his 20-year career and believed that although Blurred Lines may have the “feel” of Gaye and the that genre of the late ’70s, it was nonetheless a wholly original creation.  Unfortunately for Pharell, however, Thicke and King had already set him up failure on this score by promoting their theme of the case on every social media outlet and online media that would print it.  While it may track well with the “all-information-on-the-Internet-should-be-free” crowd, the idea that Blurred Lines was a tribute to a generation, rather than an appropriation of Gaye, did not align with the facts at all, particularly the expert testimony we’ll examine below.

The exploitation of King’s case theory prior to the trial may have been successful from a publicity standpoint, but it gave Busch a significant advantage when it came to trial strategy and preparation, as can be gleaned from Busch’s assessment here:

[I]t was our opinion that Pharrell Williams and his lawyer Howard King wanted to litigate this in the press by continually saying that all they did was take a feeling. And if they did any copying, it was only a genre. We didn’t view it like this at all. Yes, it involved a big, popular song, but this was a straight-up copyright claim over com positional elements that we believed had been taken.

Once Thicke and Williams filed suit against them, the Gaye family counter sued, as almost anyone would expect, alleging that the song Blurred Lines misappropriated multiple protected elements of Got to Give it Up.  But these efforts were stymied early on by judge’s ruling on a summary judgment proceedings in the case.  Gaye’s attorney, Busch, filed a “mash up” of recordings of the two songs, claiming that the two “sound[ed] like a perfect, natural match because it blend[ed] sonically” and that the mash up was a “concrete musical illustration of the substantial similarities” between the two songs.

But in his response, King threw up the curveball argument that the Gaye family did not own their father’s commercially released sound recordings featured in the mash up, but instead owned the composition contained in the “lead sheet,” the sheet music that was filed with the application as the best copy.  The Gaye recordings belong to Motown Records, which is owned by Universal, which in turn owns Interscope — the record company that released Blurred Lines and a defendant in the Gayes’ countersuit.

Judge John Kronstadt agreed with King in a ruling in January and reaffirmed the ruling following an appeal from the Busch. His decision enforced that the Marvin Gaye recordings of “Got To Give It Up” and “After The Dance” couldn’t be heard in court. Instead, he required that the attorneys use only stripped-down instrumentals of both songs.  This was a significant victory for the Thicke team, as presentation of their recording against the banal sheet music of the original would most certainly reinforce the theme of their case that they were trying to replicate an era, not a song.  Further, it ostensibly hamstruck Busch, who could not longer let the jury hear some of the most obvious similarities between the recordings.

Busch said of this about the disability:

image “[W]e tried this case with one-and-a-half arms tied behind our back thanks to the judge’s ruling to not allow the full Gaye recording to be played to the jury. The court held that our claim was limited to elements found on the lead sheet deposited with the Copyright Office, and had we lost, there certainly would have been an appeal. But we were able to overcome the disadvantage by preparing excerpts from the recording of what the court found to be arguably protected and have it compared to excerpts from “Blurred Lines.” In the end, this focused the jury on the music and allowed for a good comparison.”

“The court’s ruling may have contributed to the other side’s biggest mistake in my view,” Busch continued. “They focused heavily on allegedly specific note-for-note differences between the lead sheets and the recording.

So what was initially a huge defeat for the Gaye family actually turned in their favor, again thanks to the ill-fated theme of the case developed by King.  That brings us to the “always-present-in- copyright- infringement-actions” dueling musicologists! Copyright infringement actions traditional rely heavily on the testimony of such experts and this case was no exception.  The Gaye Estate relied on Berkeley professor and music expert, Judith Finnell & Harvard professor of African-American music Ingrid Monson, while the plaintiffs relied on Sandy Wilbur. And as Busch pointed out, due in large part to the theme of the case we’ve discussed above, the expert for Thicke and Gaye focused heavily on the “trees,” whereas the experts for the Gaye family took a broader approach, combining to focus on the “forest” as it were.

The jury heard testimony from Finell alleging that the two songs were substantially similar in a number of regards, despite the characterization by many, including Wilbur, that any similarities were relegated to common building blocks like drum beats and bass notes.  To begin, Finnell examined melodies and lyrics to several lines of both songs: “I used to go out to parties” in Gaye’s Got To Give It Up” and the chorus opener “And that’s why I’m gon’ take a good girl” in Blurred Lines.  She found the similarities in the melodies to those two phrases “pretty stunning” and “highly unusual.”  Both begin with a repetition of the same note, she opined — “one of the most important considerations in comparing melodies” — and end with a single word (“girl” and “dancing”) sung over several notes.  This effect is called a melisma, or the singing of a single syllable of text while moving between several different notes in succession.

Finell also noted that thematically the songs were similar in that they both described a type of transformation. The narrator of Got To Give It Up transforms from a wall hugger to an enthusiastic dancer, while in Blurred Lines, “the ‘good girl’ transforms into a more sexually liberated girl,” according to Finell.  Line by line, the Wilbur and Finell continued to compare the lyrics to song, including the line from Gaye “move it up / Turn it ’round / Shake it down” which is similar in melody and lyric to Thicke’s “Shake around / Get down / Get up.”

In his testimony, Williams, who wrote the lyrics to Blurred Lines, denied that “Shake around, get up, get down” closely resembled Gaye’s line “Move it up, turn it round, shake it down,” saying that “[i]n the average black family of the Seventies, that’s what we do when a song comes on. That’s what my dad used to say.”image

Next, the expert compared what was variously described as the “signature phrases” of the two compositions: “Take a good girl” in Got to Give it Up and “Keep on dancin’ in Blurred Lines.”  Finell argued that “[i]n the case of these two hooks, the key words of the hook, the money words — ‘good girl’ and ‘dancing’ — [each] come immediately after the bar line,” referring to the timing of the lyrics. She also noted that the two phrases share three of their four notes.

Using example after example, Finell continued to drive home the fact that the similarities in the lyrics were too substantial to be any other than actual copying, dispelling the Thicke team’s mantra that they were simply copying a “feeling.”  The rap verse in Blurred Lines begins and ends, she testified, at the same point in the song as the Gaye song’s “parlando” — a lyrical chanting Finell described as “a precursor to rap.” Busch and Finell compared lyrics from the parlando and the rap verse, pairing Gaye’s “Let me step into/ to your erotic zone” with the repulsive line “I’ll give you something big enough to tear your @#$ in two”

After exhaustively parsing the lyrics and melodies, the experts finally arrive at what Avalon and most others focus on in this case, the interplay between the keyboard, bass and drums.  Both songs, Finell testified, feature remarkably similar bobbing keyboards and bass lines playing to similar rhythms and moments of silence. Finell noted that both of these underlying melodies use the E and A chord progressions and, of course, noted these similarities are also so extreme as to be beyond coincidence. Plaintiff’s expert Wilbur pointed out that chord progressions aren’t identical at all, since Got To Give It Up uses eight chords while Blurred Lines uses just two.  In an attempt to diminish the similarities, Thicke, during during his turn on the stand, played a medley of pop songs on a keyboard in order to demonstrate that many share the same chord progression and therefore can sound similar.

Now we come to my favorite part.  Since the theme of King’s case – i.e., that the two songs only possessed a similar style because Williams was “inspired” to create a tribute to the genre – had been widely publicized through their own efforts, this afforded Bosch the opportunity to build a counter attach. Wisely, in direct response, Busch brought in an expert to contradict this theory, and it is perhaps her testimony that helped sway the facts in favor of the jury’s finding of substantial similarity. The Gayes’ additional musical expert, Harvard professor of African-American music Ingrid Monson, bolstered Finell’s arguments about the similarities between the rhythm and bass line.  Monson testified that Gaye’s bass line, paired with a reggae- or ragtime-influenced keyboard melody, was highly unusual in Motown music, and very unique to Gaye.  That testimony made it difficult for the jury to accept the claim that Williams was merely influenced by a genre or generation of music in general instead of the Gaye’s composition specifically.  Monson opined that the similarities in this regard were substantial, leading her to suggest that while Blurred Lines was being written, Got To Give It Up was likely playing in the background. Since she wasn’t present when Blurred Lines was written, the judge sustained King’s objection and that remark was stricken from the record.

Finally, Finell also testified that there were additional strong melodic similarities. In her expert report and testimony, she identified a short, recurring melodic line she labeled “theme X,” heard over Gaye’s lyrical phrase “dancing lady” under the main vocal.  Finell identified this as the same melody Thicke sings under lyrics “OK, now he was close” and “But you’re an animal.”  Significantly, she identified one very recognizable note in “theme X’ that happened to be sung out of key.  This is reminiscent of the rest note that ultimately decided the George Harrison case regarding subconscious infringement, Bright Tunes Music v. Harrisongs Music 420 F. Supp. 177 (S.D.N.Y. 1976).  On that note, Finell drove home the substantial similarities between the songs, concluding that they are “… the same musical material. It’s the same notes, the same rhythm, just … the same.”

Miller responded to this damaging testimony by asserting that Thicke’s vocals don’t match the Gaye sheet music, but rather that any similarity between the songs is found in the recordings, thus repeating King’s theme of the case to the end.  But Finell pointed out that this discrepancy is a result of the fact that Thicke’s theme X matches a harmony that is implied in Gaye’s lead sheet, even though it is not written.  “It’s represented as one melodic line when really there’s three that occur,” she noted.

In the end, it is critically important to see this case through the eyes of the jury when evaluating the outcome.  Those eight people – five women and three men – saw the mountain of evidence, heard the dueling opinions, listened to the testimony of Williams and Thicke, and carefully evaluated and weighed the credibility of all that testimony and evidence to determine if Busch had met his obligation to prove ownership, access and misappropriation.  After careful deliberation, they believed the evidence indicated substantially similarities not only in the keyboard, drum and bass interplay, but also in the themes, melodies and lyrical construction.  The very unique musical elements used by Gaye, and no other Motown artists, were the same as those found in Blurred Lines.  Since access was admitted by Thicke and, to some degree, by Williams, the jury didn’t buy the shallow defense that this was a homage to 70’s R&B music.  Rather, it was a misappropriation of Gaye’s original song.   They believed Thicke’s early admission against interest in the GQ article that he had instructed Williams to write a song similar to Got to Give it Up, rather than he self-serving testimony that that admission was, in fact, a little white lie.  In the end, a jury of their peers determined that Thicke and Williams should pay $4 million in copyright damages plus profits attributable to infringement, which for Thicke was determined to be $1.8 million and for Williams was determined to be $1.6 million. While that total amounted to almost $7.4 million, one of the highest awards in history, it should be noted that the song has generated more than double that amount, so it is not unreasonable.  Busch immediately asked that the court suspend sales of the song.

After the trial, the Plaintiffs issued the following statement:

While we respect the judicial process, we are extremely disappointed in the ruling made today, which sets a horrible precedent for music and creativity going forward. “Blurred Lines” was created from the heart and minds of Pharrell, Robin and T.I. and not taken from anyone or anywhere else. We are reviewing the decision, considering our options and you will hear more from us soon about this matter.

Of course, they decided to appeal the verdict, so we will have to hear what the 9th Circuit has to say about it.  In typical fashion, King announced the appeal on the Fox networks, repeating the now familiar themes:

We owe it to songwriters around the world to make sure this verdict doesn’t stand.  We are going to exercise every post-trial remedy we have to make sure this verdict does not stand. … Just because eight people think two songs are similar doesn’t mean they are. I think this is a horrible decision that is going to affect whether or not record labels provide the necessary funds for new music to be created.

In the end, King and his clients are still ignoring the evidence and leaning on the theme of his case, seeming even soliciting the support of friend like John Legend to denounce the verdict.   Of course, Legend was not present for the evidence.  Rather than “respect[ing] the judicial process,” they have mounted another social media campaign deriding the decision as a “horrible precedent” and a “horrible decision” for creativity.  You might admire them for that, but I would remind them that appeals courts tend to heavily favor the jury, who had the opportunity to impartially weight the credibility of the evidence and made their determination on that basis. If I had been sitting on that jury, this evidence likely would of swayed me in the same direction. Infringement, even unintended, is still infringement.

More importantly, I would remind everyone that this is the type of decision that actually encourages creativity.  If an artist know that his creation cannot be misappropriated, that artist will continue to create.  The day that we allow the unfettered use of creative expression without appropriate penalty is, in the words of Don McClean, the day the music died.[/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]

Robin Thicke  and  Pharrell Williams spent 2013 on the top of the charts with their hit  Blurred Lines, but due to allegations of copyright infringement suit leveled by the children  of legendary singer Marvin Gaye they also spent much of 2014 in a court proceedings.

And did they put on a show.

The saga began in early 2013, when the Gaye family approached its publisher, EMI April, about protecting Gaye’s 1977 hit, Got to Give it Up from what it perceived as infringement.  The request put EMI between a rock and hard place, however, since the company is now owned by Sony/ATV, which manages both catalogs of songs.  The company was reluctant to take any action.  There are plenty of YouTube videos, like this one, that play the songs side by side for you to judge.

The controversy has created a viral buzz on the Internet, which was fueled in part because Thicke admitted that Gaye was one of his childhood idols.  He bought his first Gaye recording when he was only 8 years of age and has consistently maintained that Got to Give it Up was one of his favorite songs of all time.  Rumors on the web also indicate that when he and Williams discussed the song, he encouraged Williams to make something that “sounded like” the Gaye song.

In view of the controversy, Thicke and Williams took preemptive action and filed for a declaratory judgment in August 2013 asking a Los Angeles district court to issue a ruling that their song Blurred Lines was not infringing, but rather was inspired by the sound of the late 70’s era of “funkadelic” music.  In its response to their complaint, Gaye’s family filed a  countersuit claiming that Thicke and Williams specifically infringed Got To Give It Up.  The estate also named EMI-Sony/ATV as a defendant, claiming that it breached its fiduciary duty to them by refusing to resolve the conflict.

Each party  brought out their best musicologists and mash-ups,  but it was the deposition that got the best of Thicke, who consistently refused to listen to the comparison “mash up” played by the attorney, claiming that listening to minor chords over major chords was like “chalk on a [fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][explitive] blackboard.” Read excerpts from the  deposition  here via The Hollywood Reporter. It produced gems like:

“Q:         Were you present during the creation of ”Blurred Lines”?

Thicke:     I was present. Obviously, I sang it. I had  to be there.

Q:         When the rhythm track was being created, were you there with Pharrell?

Thicke:     To be honest, that’s the only part where —  I was high on Vicodin and alcohol when I showed up  at  the studio. So my recollection is when we made the song, I thought I wanted — I  — I wanted to be more involved than I actually was by the time, nine months later, it became a huge hit and I wanted credit.  So I  started kind of convincing myself that I was a little more part of it than I was and I — because I didn’t want  him — I wanted some credit for this big hit. But the reality is, is that Pharrell had the beat and he wrote almost every single part of the song.”

Despite Thicke’s throwing Williams under the bus from a legal standpoint, and his poor composure during the writing of the song and deposition, the trial took a turn in his favor when the judge rejected a summary judgment motion filed by the Gaye family.  The court felt that the elements of similarity between the two songs were only present in the audio recordings, but because submission copies under the 1909 Copyright Act, under which Gaye’s work fell, were required to be written lead sheets, the similarities were not as obvious.  The judge denied summary judgment because there was insufficient evidence  to  prove  that  Thicke  and  Williams  infringed.  Despite the technicality, the  two songs were found to be substantially similar and Thicke and Williams both admitted to having previously heard the work.

In January 2014, Sony/ATV settled its portion of the lawsuit with the Gaye estate, the terms of which are, of course, not public.  As for the remaining claimes, plan on both parties pulling out all the stops for  the trial, which is set for February 20th. The Gaye family will be seeking damages and Thicke and Williams will be hoping to only have to pay a licensing fee.  Stay tuned to Law on the Row for more information as it becomes available.

 

Written by John Inniger, edited by BNS.  John is a student at Belmont University’s Mike Curb School of Music.[/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]