Many of you may remember reading a “Choose your own Adventure” book in your childhood, and being fascinated by the different trajectory a story could take as you made different selections in the story line. R.A. Montgomery created the children’s book series entitled “Choose Your Own Adventure” in the late 1970’s. The original Bantam series sold more than 250 million copies from 1979 to 1998, when computers naturally took over the divergent path idea. In 2003, Montgomery formed Chooseco, LLC in 2003 to breathe new life into the series and expand into new media. Chooseco now owns the trademark CHOOSE YOUR OWN ADVENTURE in over 15 different international classification of goods and services, including the production of television programming (the “Mark”).

chooseyourownadventure (1)More recently, in January of 2019, Chooseco instituted a multimillion-dollar lawsuit against streaming giant, Netflix, for several causes of action relating to trademark and trade dress infringement. Chooseco claims that an episode of Netflix’s show Black Mirror, which feature a young programmer who creates an adventure video game called Bandersnatch based on a “choose your own adventure” book of the same name, infringes and dilutes the Mark. 

Netflix’s Bandersnatch is an interactive film that allows its viewers to make choices which ultimately decide the plot and ending of the film. The main character is a video game developer who adapts a fantasy “choose your own adventure” novel into a video game. Bandersnatch “dark and, at times, disturbing content” which, according to its complaint, is in stark contrast to Chooseco’s own CHOOSE YOUR OWN ADVENTURE books, which are lighthearted and targeted at audiences between the ages of seven and fourteen. They argue that Bandersnatch, which contains, including “murder, mutilation of a corpse, decapitation, and other upsetting imagery” dilutes and/or tarnished their mark.

Chooseco further points out that it engaged in extensive negotiations with Netflix regarding licensing the Mark for use in the episode, but that negotiations fell through and Netflix chose to go forward and use the Mark regardless. Netflix does not deny these allegations. 

In response, Netflix filed a motion to dismiss the suit on several bases. Principally, Netflix argues that a media in which the reader or viewer makes decisions which ultimately affect the outcome of the story, is a storytelling device, which is not protectable by trademark law. Netflix notes that trademark law protects “symbols or devices used to identify a product in the marketplace” and do not protect ideas. Borrowing a page out of copyright law and precedent, Netflix concludes that a narrative storytelling device, like the one employed in Chooseco’s Choose Your Own Adventure series, is an idea and thus is not protected by trademark law.

The federal judge in Vermont assigned to the case has yet to make any definitive rulings in the case, but it seems that Chooseco faces an uphill battle. As noted by Netflix in its motion to dismiss, artistic works CYA01_Box_sample_largelike Bandersnatch receive special protection from trademark litigation under the First Amendment – think Andy Warhol’s use of the Campbell soup can or Marilyn Monroe’s image. Under the cited Second Circuit case, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), for example, the use of a trademark in an artistic work is constitutionally protected unless it either “has no artistic relevance to the underlying work whatsoever, or explicitly misleads as to the source…of the work.” The threshold for proving that a work has at least some artist relevance to the underlying work is extremely low and should easily be satisfied by Netflix in this case.

The constitutional free speech protection provided by the First Amendment requires an “especially compelling case of consumer confusion” to satisfy the other prong of the Rogers standard. Id. Here, Chooseco will need to provide sufficient evidence of consumers who were confused into believing that Bandersnatch was somehow affiliated with its Choose Your Own Adventure Trademark and compelling reasons for why other consumers will continue to be confused by Netflix’s use of the Mark. Chooseco may be unable to do either or both.

As with a choose your own adventure book (or television show), there are several different pathways this litigation could take, whether the two sides hash it out in federal court or quickly settle out of court, but it is hard to imagine any ending where Chooseco takes this case to trial and successfully litigates the case on the merits.

 

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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.

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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]






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 Barry Neil Shrum, Esq.

From the reality television show, Dance Moms to best-selling Sia album covers (including Chandelier, Elastic Heart, Big Girls Cry and Cheap Thrills), Capezio commercials, to featured judging on So You Think You Can Dance, 13-year old dancer Maddie Ziegler is the hottest teen sensation right now, and appears to be the face of the publicity avoiding singer/songwriter, Sia.

The Pittsburg-native Ziegler began her career performing in Paula Abdul’s reality television flop, Live to Dance, which was cancelled before it ever aired.  So, in 2011Ziegler and her mother made their debut appearance as featured dancers on the Lifetime show Dance Moms, a reality tv show about Abby Lee Miller’s elite competition team.  According to New York magazine writer, Rebecca Milzoff, Ziegler quickly “emerged” as a “polished standout.”  Ziegler begin her foray as the face of Sia in the artist’s video Chandelier, which was released in 2014.

It might seem that her involvement with Sia was a natural next step in her career path, however, it was actually more like being struck by lightning (or in this case, Twitter).  Sia took note of the young dancer’s abilities and informally tweeted to Ziegler, asking her to star in her new video.  At first, as any normal adolescent girl would assume, Ziegler thought the tweet was some sort of prank and didn’t believe that she was being approached by the “real” Sia.  With hindsight as our guide, we now know that the tweet was, indeed, real.  From that rather humble yet fortuitous beginning, Ziegler has now been featured in four music videos for Sia. 

Now Ziegler’s image on the cover of Sia albums is featured everywhere, from Pandora and Sonos, to iTunes and Shazam.  From being a young girl dancing on reality television show to having your photo plastered all over the music scene and everywhere else, Ziegler’s net worth has skyrocketed to well over $2-million. As with all well-placed marketing, using her image is extremely successful at building a brand.  

Her dancing history, combined with her acting abilities, are propelling Ziegler’s current buzz, which only promises to grow louder.  She has been featured as an actor in several Disney videos and television shows, as well as many other network shows.  Ziegler also stars in the upcoming feature film, The Book of Henry, to be release in September, as well as Sister, a full-length movie being directed by her alter ego, Sia.  Last year, Ziegler was named as one of Time magazines “Most Influential Teens,” a title which she continues to build upon.

All of this success is no accident.  It would appear that Ziegler and her mother, Melissa, have had this plan for her life in mind from the day she signed up for the Abby Lee Dance Company at the tender age of two years old.   For the most part (one exception noted later), it would appear from an outsider’s vantage point that her and her mother are doing an admirable job navigating the sometimes turbulent waters of success at such a tender age, even though her mother went through bankruptcy and divorce while most of this was going on.  What lessons can be learned from Ziegler and her mother?

One priority is to comprehend and understand exactly what intellectual properties the child owns and figure out how to protect them.  For Maddie, she possesses not only her rights of publicity, which translate into endorsements and sponsorships, but certain other intellectual assets such as her acting and dancing abilities, which can translate into potential copyrights (choreography is one of the specific works noted as being entitled to copyright in the 1976 Act).  All of these various intellectual properties are licensed and/or exploited through some form contractual arrangement.  In the case of a copyright, a written document is essential to transfer any rights. 

So all you dance moms listen up! You daughter may not be on the album of the next big hit but the likelihood of her being the image for a tights or other dance wear organizations is high. Make sure your contracts are beneficial and legally binding.  Read and understand the contract, more importantly make sure you understand. If you do not, find a qualified entertainment attorney who can help you understand. Don’t sacrifice your child’s legal rights in order to be famous.

Which brings us to the next set of issues related to the age of the child celebrity.  For example, can Maggie Ziegler legitimately enter into contracts on her own behalf, or must she rely on her mother to execute agreements?  Are there ethical and moral issues involved when a parent allows their child to be portrayed in sexually compromising scenes and videos?

With regard to the ability of a child celebrity to sign a contract, each state has different laws regarding the age at which a person can legally enter into a contract.  That age is referred to as the “age of majority.”  Until the child reaches that age, 18 in most states, he or she is considered to be suffering from the “disability” of being a minor.

This has serious implications for the parent who signs on their behalf.  If a parent enters into an agreement on behalf of the child without taking appropriate steps have that “minority” status removed, the child can repudiate the contract when they reach the age of majority in certain circumstances.  In that instance, the parent may become liable for any of the obligations undertaken on behalf of the child celebrity.

Brooke Shields is a shining example of what can happen if this issue is not carefully considered:  In 1975, photograph Garry Gross entered into an agreement with Shields’ mother to take photographs of the 10-year old Brooke for Playboy Press.  Later, in 1983, Brooke was embarrassed by the exploitation of the photographs, and sought an injunction against the photographer from further exploitation.   Even proper execution of a contract by a minor’s parents can cause them great grief later in life. 

Similarly, if the proper steps are not taken to enter the contract, the child may be able to simply repudiate the contract when he or she reaches the age that a state declares them to be an adult.  LeAnne Rime sued Curb Records to repudiate her deal signed by her and her parents in 1995.  Curb sought removal of her disability through Tennessee Courts, since the forum selection clause of her contract listed Tennessee as the choice of law.  Rime claimed, however, that she was a Texas resident at the time and therefore the removal process should have occurred in her home state of Texas.  The court disagreed with Rimes and she ultimately renegotiated her contract with Curb, which may have been the ultimate end game anyway.

In many states, Tennessee (§29-31-101) for example, the so-called “emancipation” of a minor can be performed by certain legal proceedings such that the child can enter into the contract on his or her own behalf.   These procedures sometimes involve the appointment of a guardian ad litem to review the proposed agreement and “bless it,” or in some circumstances the court itself may be the only review required.  A decree is then issued that “emancipates” the minor and removes the disability.  Some states, including Tennessee, allow for a “blanket” type decree, that empowers the minor to do all things necessary to further their career, such as entering into contracts, suing and being sued. 

There is another very real concern the laws address with regard to child celebrities, and that is the money earned while they under the age of majority.  Many states, among them Tennessee, California and New York, require that a certain percentage of that income be placed in a set-aside trust for the child until they obtain that legal age.  But that is, perhaps, a topic for a later blog.

Which brings us to the more delicate issue of morals and ethics.  Maddie appeared in a skin-colored leotard in Sia’s Elastic Heart video opposite a 30-year old male dancer, Shia LaBeouf, who was wearing nothing but boxer-length shorts.  According to Rolling Stone, the two dancers were “cage fighting” in an attempt to portray Sia’s two “warring self-states.”  The release of the video immediately set of a viral barrage of complaints about sexual prevision and pedophilia, which Sia claimed she “anticipated.”  One fan on Twitter tweeted that the video “Smacks of child molestation.”  For herself, Maddie explained that the director and Shia kept insisting that she “bite him harder” and “slap him harder.”

Music videos have always “pushed the boundaries” of what is acceptable, often inspiring trends in popular culture that are outside the norms of society.  Research over the years has drawn a direct correlation between certain types of music lyrics and videos and undesirable behavior and psychological impact in children.  See, for example, Impact of Music, Music Lyrics, and Music Videos on Children and Youth, Pediatrics, Nov. 2009, Vol. 124, Issue 5.  I want to make it clear here that I am not condemning or passing judgment on Maddie and her mother.  My intent is to point out that in certain situations, the child celebrity needs the parent to make the critical decision more than ever.

 If one thing is clear about child celebrities, it is that if they have loving and supportive parents who help them lead balanced lives, they are likely to make valuable contributions to society.  If they don’t, the stress placed upon these teen sensations usually leads to all sorts of problems such as regression, depression, ala Lindsay Lohan, drug and substance abuse, ala early Drew Barrymore, or even worse, suicide, ala Dana Plato.  Parents of child celebrities should make time for them to be “normal” children, helping them to draw the appropriate lines between who they are as the child in the family, and who they are as the “star.”  For every example I can give you of a child star “gone bad,” I can give you two examples of child stars who became well-adjusted adults who are still performing and contributing greatly to the benefit of society, ala Marie Osmond and her Children’s Miracle Network.

History is replete with “momangers” who run, and sometime ruin, the careers of their children.  Just as frequently, an overbearing father can be the source of stress for a child celebrity.  Most often, those stories end in years of grief for their children, who may never overcome the psychological struggle. 

A word to wise “dance mom” or dad would be to brace for a long journey, and prepare early only to be the supportive and loving parents, taking every opportunity you have to cherish your child and create normal experiences for them outside their chosen craft.  Most of all, don’t become greedy or vindictive.   Lindsay Lohan’s parents often fought out her many troubles in the media, which will most certainly fuel the flames.  That’s not good for anyone.

Finally, it can help to find trustworthy professional advisers – legal, financial and even psychological – that can steer you clear of problem contracts and other situations that can cause grief.  In short, be a good parent and carefully decide what your goals are, involving your child in those decisions.  Sometimes the tried and true methods never change.  

  

A special thanks to my intern Erin Thiele for her helpful contributions to this piece.  






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]

Written by Amber Shultz*

Edited by Barry Neil Shrum, Esq.

A recent headline on the BBC News was “Jersey Gorilla Turns Photographer at Durrell Park.” The story was about a silverback gorilla at Durrell Wildlife Park in New Jersey named Ya Kwanza, who was given a high-definition camera in an indestructible box. While examining the bazaar looking box, the gorilla inadvertently took a seriesgorilla of self portraits. Can these photographs, indisputably taken by Ya Kwanza, be described as original and creative? If so, are they entitled to protection pursuant to U.S. copyright law, thus giving certain rights to the gorilla?

This begs the question, “What makes a photograph original and protectable under copyright?” This query has perplexed copyright lawyers and courts since photography became protectable under copyright law. Traditionally, the courts have used the concept of an idea/expression dichotomy in order to set the perimeters of an expressed idea within the art of photography.

clip_image002.jpgOne of the first cases analyzing the protection of photography under copyright law is the 1884 case of Burrow-Giles Lithographic Co. v. Sarony. In this case, a well-known photographer, Napoleon Sarony, filed a lawsuit against Burrow-Giles Lithographic Company for marketing his photographs of the writer Oscar Wilde without his permission. The court ruled in favor of Sarony, upholding the section of the Copyright Act of 1870 that extended copyright to photographic works. In its defense, Burrow-Giles argued that photography was not “art” but rather, mere mechanics. The court disagreed and found that Sarony’s photo of Wilde was an original expression of an idea. In doing so, the court found that the scene set by Sarony in his photo, including the way he posed Wilde, the background he chose, and similar factors, moved the photograph closer to an original expression than a mere idea. This decision was an early precursor to using expression in a photographic work as a means of identifying which works are protected under copyright law.

Photography is a medium of art that can stretch our concept of “originality” and the idea/expression dichotomy. While it may be true that the act of making a photo is mostly mechanics, it is also true that the act of photography can, in some cases, be considered an art. Courts have consistently applied these principles, not only stopping others from directly copying a photograph but also from creating an imitation of a photograph by copying the style, angle, lighting, and any other artistic or expressive notions the photographer might have used in his photograph. Courts also apply this to derivative works based on photographs, such as statutes or paintings imitating the photograph.
According to copyright lawyer Steven Ayr, “courts have set up a system to describe the various ways a photograph can be original and therefore the various ways in which it’s protected by copyright.” Ayr states that there are three ways in which a photograph is original and therefore protected under copyright law: timing, rendition, and creation of the subject. Timing, he says, is the most basic and least original aspect of a photograph, and provides the least amount of protection for a photograph. Timing basically means that the photographer was in the right place at the right time; the photographer took the photo at the exact perfect time for his photo to be a beautiful piece of art. But what Ayr seems to miss in this analysis of “timing” is its relationship to the element of exposure selected by the photographer. While a lot has to do with being at the right place at the right time, an equal emphasis might be placed on the photographer’s ability and knowledge in selecting the exact right exposure to capture the moment he or she is attempting to capture. By grouping the element of exposure into the second factor, addressed below, Ayrs overlooks the undefinable element of synchronicity that makes this element more critical.

The second element, according to Ayrs, is “rendition,” which has to do with the aesthetic elements the photographer chooses to use in the photograph, such as special effects, the angle, lighting, and the type of camera or lens used to shoot the photo. In many court cases, infringement is determined by the amount of these types of choices made by the plaintiff, which are compared to the accused work to determine how closely related, or similar the copy is to the original photograph.

The third element Ayrs identifies is something he calls “creation of the subject,” by which he essentially means that the photo is original in the way that the creator sets the scene for the photograph. According to Ayrs, the subject selected in creation may achieve sufficient originality to allow the photographer to obtain protection over the subject itself, whereas timing only allows the protection of the reproduction of the subject, and rendition only protects the view of the subject.

These three concepts of originality in a photograph proposed by Ayr interact to form the basis of protection. For example, he identifies two instances in which the originality of a work can be determined quite easily and result in infringement of another photographers work: the first is when someone duplicates the original photograph and the second is when the photographer’s creative choices, such as angle, lighting, positioning, are imitated. In terms of copyright law, in other words, when the copy incorporates protected elements of the original. The first can be illustrated by the court case of Burrow-Giles Lithographic Co. v. Sarony. The second instance can be found in numerous court cases, but one that is particularly applicable is the case of Mannion v. Coors Brewing Co.

clip_image004.jpgIn Mannion, a freelance photographer sued Coors for copying his photograph of Kevin Garnett in SLAM magazine. Coors created, “a manipulated version of the Garnett photograph and superimposed on it the words ‘Iced Out’ (“ice” is slang for diamonds) and a picture of a can of Coors Light beer…” The Mannion court used the three concepts identified by Ayrs in finding the Garnett photograph to be original. The Court used the concept of rendition when it declared that “originality . . . does not depend on creation of the scene or object to be photographed… [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”][but] resides [instead] in such specialties as angles of shot, light and shade, exposure, effects achieved by means of filters, developing techniques etc.” Using what has traditionally been described as the “total look and feel” methodology for determining if something has been misappropriated, the Court found that the Garnett photograph was protected based on how Garnett was portrayed, not merely the fact that he had been portrayed. In applying this concept of rendition, the court found the Garnett photo was very original in its application of angle and lighting.
Though the Mannion court also gave a nod to Ayr’s timing concept when it stated that “the memorability of [the photograph]… is attributed in significant part to timing of its creation.” In the end, however, the Court did not directly apply the concept of timing to the case.

clip_image006_thumb.jpgLastly the Mannion court found that originality occurs when a photograph creates of the subject, the final and most important of Ayr’s concepts. When the Mannion court applied this concept to the plaintiff’s photograph, it found that Mannion’s photo was a “composition – posing man against sky – [that] evidences originality in the creation of the subject.” Accordingly, this protected not only the portrayal of what was being photographed, but the scene or subject that was created by the photographer when he took the photograph, allowing Mannion to “prevent others from duplicating that scene in a photograph or other medium.” In the end, the court ruled in favor of Mannion and declared Coors photo an infringement of Mannion’s original photo.

The originality elements of a photograph are further illustrated in the court case of Eastern America Trio Products, Inc. v. Tang Electronic Corp. In this case, Eastern America sued Tang Electronic for copyright infringement of some of the product photographs in their catalogs and flyers. Although the defendant acknowledged copying some of the photographs in the catalogs, they stated the similarities of their pictures to the plaintiff’s photographs did not constitute copyright infringement, because the subjects were not original, nor were the photographs.

The Eastern America court disagreed, ruling that the elements of the photographs met the requirements for “originality,” and could therefore be protected by copyright. The photographer “supervised the layout-out of the items that were photographed, positioned them in what she thought [was] an attractive manner, selected particular angles and lighting, and in some cases even had the images enhanced by a computer to achieve the desired outcome.” The court found that the defendant infringed the originals, in as much as it had access to the original flyers and catalogs and that many of the defendant’s photographs were, in fact, copies of the plaintiff’s originals.

clip_image007_thumb.jpgWhile these courts clearly uphold the principal that originality can be achieved in photography, there are other courts that hold a contrary view and do not consider the photograph a protectable means of expression. These contrarian courts use a more abstract approach, finding that the elements of the expression are not original enough to be protected by copyright law. One such example is the case of Kaplan v. Stock Market Photo Agency, Inc. which has a very similar fact pattern to Mannion. In Kaplan, Peter Kaplan, the plaintiff, took a photograph named “Wing Tips Over the Edge,” depicting “a businessperson standing perilously on the ledge or roof of a tall building, looking down onto a car-lined street. It is taken from the viewpoint of the businessperson.”

Kaplan copyrighted his photograph and published in a compilation with other photos called “The Creative Black Book.” Kaplan submitted his photograph to a contest held by an ad agency to find artwork for a client who manufactured camera lenses. Kaplan sent in his photograph to the ad agency, but they choose another photographer’s work that depicted a very similar scene to Kaplan’s photograph. The winning photograph used the same perspective. Kaplan sued the winning photographer stating that the similar concept infringed his copyright. The court acknowledged plaintiff’s copyright, but found that the only similar elements between the two photos were not entitled to copyright protection and therefore, the defendant had not misappropriated. In other words, the similarities between the original and the alleged copy was an “idea,” and not a protectable expression, so the defendant did not infringe Kaplan’s copyright. The court summarized that “…after a careful examination of the two photographs at issue here, [we] conclude that the differences between [the two photographs] far outweigh the similarities, quantitatively and qualitatively, such that no reasonable jury could find that the two works are substantially similar.” Therefore, the court ruled for the defendant. This case illustrates that one may have an expression of idea that is not original.clip_image008.jpg

So how do we determine the originality of a photograph? While it may be easy to see similarities between a few photos, coincidence does not particularly mean that there is actual copying, much less actual infringement. Elements of a photograph that are closer to ideas or concepts are not protectable by copyright, and as such are not considered original expressions. A photograph is, at its essences, merely a mechanical and/or chemical reaction to reflected light. In fact, it is the very nature of photography that makes it hard to determine the originality of a photograph. It is the photographer’s creative expression of those mechanics that make the difference, just as a painter’s creative application of pigments can create an original expression.

If the photographer is creative in the selection of subject matter, lighting, rendition, and how he or she arranges the scene of their photograph, the photographer may create an original expression, one that he or she might be able to protect. But still too many courts have difficulty determining whether an element of a photograph is an idea or an expression. In these instances, some judges seem unqualified to make substantive artistic choices, or are simply not creative. While there are some guidelines for defining “originality” of a photograph, such as those of timing, rendition, and the creation of the subject as proposed by Ayrs, there is no guarantee as to the outcome. Courts still struggle to determine the originality of a photograph, especially when determining where the elements of the original photograph fall along the idea/expression dichotomy continuum. In considering photography and its relation to the idea/expression continuum, the closer a particular element in a photograph moves along the continuum from a mere idea to an expression, the more likely it is to be original and protected in court and by copyright. The more artistically attuned a court can be, the more accurate its decision.

 

*Amber was a top student in my Copyright Law class at Belmont University’s Mike Curb School of Music Business in Spring 2013.[/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]

TimesSquare

If you look closely at the bottom of photograph to left, you’ll see my client, Jay Leopardi, and his new show Common Denominator, featured in the bright lights in New York City.  None other than Times Square!  Congrats to Jay and president of IC Places, Inc., owners of PunchTV, who will fund and host the new show, featuring Jay interviewing various moguls of industry Napolean Hill style!

Learn more about the show here.

CD

My client and long term friend, Jay Leopardi continues to build a remarkable brand.  Not only is Jay working the THE Shark, Daymond John on several projects, but he just landed a tr emendous opportunity in the world of entertainment.  Jay has agreed to produce a series of interviews with various bu siness leaders to take his viewers on a journey to discovery what makes the highest achievers and the greatest business people succeed.  Readers of Napolean Hill’s Think and Grow Rich will recognize the familiar plot.  Jay’s series will be called Common Denominator and is slated to air on PunchTV this fall.

“I met Jay Leopardi on the set of Sony Studios in Los Angeles. It was instantly clear that Jay has the “it” factor, or shall I say Hit factor. The guy has a personality mix of Steve Jobs, Donald Trump and is Robert Downey Jr’s doppelganger,” said Steven Samblis, Chairman of IC Places, Inc, who recently acquired PunchTV.. “As we talked outside the sound stage, studio tours where stopping and taking pictures of Jay obviously thinking he was Robert. As we talked about what Jay does in the arena of branding and his magnitude of experience, I knew something was there.”

The following interview with Daymond John inspired the series:

[youtube https://www.youtube.com/watch?v=ofn5ZXUyEbQ]