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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Apple has spun a very integrate and systematic marketing web in its ill-advised stand against the FBI in the San Bernardino terrorism case. The San Bernardino case is the deadliest terrorist attack on U.S. soil since the 9/11 attacks. The terrorists were killed and the government needs information on one of their smartphones to discover evidence of the terrorist cell.

Apple’s flawed reasoning for withholding assistance in building a case against the terrorists, however, is filled with misinformation and outright lies. Apple has mounted a campaign that attempts to mold the facts to support a better image for Apple, one that has been fading since the death of its founder and cheerleader, Steve Jobs.scarecrow-on-bale-of-hay

Apple is, of course, no stranger to spreading marketing that inaccurately portrays their products and company in a good light. They have successfully convinced an entire generation into thinking they built the first smartphone when, in fact, smartphones of varying degrees have been around for years prior to the release of the iPhone. Every innovation that Apple conceives is portrayed as the first. Some might argue here that Apple just does it better, simpler, more stylish, etc. – and that admittedly may very well be true – but the facts seem to point to the conclusion that Apple is, for the most part, a follower in most of the actual technologies that it exploits.

So how does this tie in to the San Bernardino shootings and Court Order issued against them? The positions that Apple is taking in its refusal to comply with the court order are rooted in the same arrogance. Apple is portraying itself as the defender of data security and privacy in an effort to skirt the real issues.

The allegations of arrogance are clearly seen in Apple’s own “Message to Our Customers” posted February 16, 2016, beginning in the first paragraph:

The United States government has demanded that Apple take an unprecedented step which threatens the security of our customers. We oppose this order, which has implications far beyond the legal case at hand. This moment calls for public discussion, and we want our customers and people around the country to understand what is at stake.

The very first sentence of Apple’s plea is false. First, the step being ask of Apple in this case is decidedly not “unprecedented.” The FBI is asking for Apple’s assistance to “bypass or disable the auto-erase function” and “enable the FBI to submit passcodes” to the terrorist’s phone. Apple itself admits that it has complied with many such orders in the past, at least 70 times according to the FBI. This led to many allegations on the web from Apple-automatons blindly following their appointed savior, who suggest that the FBI is lying, as here.

It is actually Apple who is spreading the most lies regarding this issue. In a second statement in the February 10th message, Apple claims that “the FBI wants us to make a new version of the iPhone operating system, circumventing several important security features, and install it on an iPhone recovered during the investigation.” They claim that the new “operating system” would be a “master key, capable of opening hundreds of millions of locks – from restaurants and banks to stores and homes.” Really? That’s ballsy even for Apple.

What the government is asking is very clearly laid out in the judge’s Order of February 16, 2016 (note that, not coincidentally, this is the same date that Apple released its open statement). Instead of a “new version of the iPhone operating system,” Judge Pym ordered Apple to create a Software Image File that could be side loaded onto the terrorist’s iPhone. In complete denial of Apple’s claims, Paragraph 3 of the order specifically says “the SIF will load and run from Random Access Memory (“RAM”) and will not modify the iOS on the actual phone. . . .” Further, the judge says that the SIF will contain a “unique identifier of the phone so that the SIF would only load and execute” on the terrorist’s iPhone.

Apple lies are not limited to the current marketing campaign presented to the public, but permeate the testimony it has given in this and the New York case involving a similar fact pattern. In that case, Apple Senior VP of Worldwide Marketing said that it is literally “impossible” to unlock the current operating system on the iPhone.

Most of the families of the 14 victims in the attack have pleaded with Apple to comply with the order so that the government can bolster their case against the perpetrators, Syed Rizwan Farook and Tashfeen Malik, but those pleas have fallen on deaf ears, weakening the company’s assertions that they are “shocked and outraged” by the terrorist attack. Apple finds itself in the awkward position of being the underdog in its claims, as over 50% of the American public believes that they should comply with the order. Most also believe that assisting the FBI will have little or no effect on the security of personal data on other iPhones.

But that doesn’t mean that the unfounded marketing campaign isn’t effective. Several high ranking officials in both government and industry support Apple’s stance, for differing reasons and motivations. For example, one Congress person who should know better, Rep. Anna Eshoo, a ranking Democratic member of the Congressional Communications and Technology Subcommittee, ignores legal precedent in her assertion that “what Congress would not legislate, the FBI is now seeking to accomplish through the courts.” She quotes the now decease Supreme Court Justice, Antonin Scalia, who stated in Arizona v. Hicks, that “the Constitution sometimes insulates the criminality of a few in order to protect the privacy of all” in support of her position. Of course, in doing so, she thumbs her nose at her Commander-in-chief, Barrack Obama, who came out in support of the FBI’s position. In addition, Scalia’s statement should be taken in the context that such instances are rare when the rights of the few outweigh the rights of the many. Yes, there are times when that is the case, but our laws are built on the utilitarian principles that “what is good for the many is good for the few,” not the other way around.

The exaggerated claims of Apple’s key officials are perhaps best neutralized by the comments of Bill Gates, founder of Microsoft, on the subject, who recognized the FBI’s request as fairly routine. “Apple has access to the information, “they’re just refusing to provide access. . . . You shouldn’t call the access some special thing,” Gates said, in an obvious reference to their allegations that the government is asking them to build an entirely new operating system. Gates compared the FBI’s request to a search warrant issued against a bank or some other third party who possesses sensitive information. “There’s no difference between the information.”

Gates is alluding to the fact that courts have allowed search warrants in the past on all types of data contained in all sorts of format, including digital: banks, medical records, financial information, smartphones, etc. Requiring a bank to release financial information of one customer does not have any impact on the date of millions of other customers.

The statement of FBI Director, James B. Comey, confirms as much:

“We simply want the chance, with a search warrant, to try to guess the terrorist’s passcode without the phone essentially self-destructing and without it taking a decade to guess correctly,” Comey wrote on the website Lawfare, a prominent national security law blog. “That’s it. We don’t want to break anyone’s encryption or set a master key loose on the land.”

The real question here is what gives Apple the right to refuse to comply with a court order? What gives the company the right to become a standard bearer for digital privacy at the expense of our country’s security. No ordinary citizen would be entitled to refuse the court’s request without being subjected to criminal contempt charges and be locked in prison. If the officers of Apple continue in their refusals to comply, the same should happen to them.

By all accounts, Farook and Malik were part of a “homegrown, self-radicalized [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”][group of] individuals operating undetected before striking one of many soft targets in the U.S.,” according to the New York Times. The FBI has already uncovered and arrested at least one additional member of this terrorist cell, Enrique Marquez, Jr., their next door neighbor. The FBI and the San Bernardino County District Attorney, Michael Ramos, confirmed that their believed the iPhone in question belonged to Farook and was used to communicate information about the attack. They further believe it will contain evidence of a possible third shooter as well as a “dormant cyber pathogen,” i.e., malware, that could have been released into the government’s computer networks.

Knowing this, would not any reasonable person say that the needs of the people of the U.S. demand that Apple comply with the court’s order? The information is desperately needed to avert future attacks on U.S. soil and to prevent the spread of further terrorism. Apple responds that if they comply, the government “would have the power to reach into anyone’s device to capture their data” and “extend this breach of privacy and demand that Apple build surveillance software to intercept your messages….”  That is simply not true.  

Apple’s entire argumentative response falls squarely into the classical logical fallacy of the “straw man” argument, which attempts to refute a given proposition by showing that a inaccurate form of the proposition (the “straw man”) leads to absurd, unpleasant, or ridiculous consequences. Here, Apple sets up the argument that the FBI is requesting that they build a new version of the iOS, which will lead to unchecked government surveillance. The straw man argument relies on the audience failing to notice that the argument does not actually apply to the original proposition. In this case, all of Apple’s assertions contradict the actual language of the Court’s February 16th Order. Read it for yourself and see if you agree.  The Court’s order applies only to the single terrorist’s iPhone5 and does not ask Apple to build a new iOS for the phone.  This is the kernel of untruth that Apple is spreading through its marketing prowess.

The fact remains that Apple’s refusal to comply with the Court’s order is both arrogant and criminal.  They’re not selling iPad’s or iPhone’s here – it might be forgivable to spread false marketing claims in order to sell products, that’s the American way – rather, Apple is plainly impairing the ability of the U.S. people to defend themselves against terrorist attacks in the name of protecting the privacy of individuals, and that’s not American.  It’s time for Apple to do its civil duty and comply.


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

And did they put on a show.

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

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

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

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

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

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

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

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

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

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

 

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