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Choose Your Own Litigation

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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Secret Blend of 11 Herbs: Three Things to Know about the 2016 Defend Trade Secrets Acts

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]

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The Cat’s in the Cradle: The adventures of child sensation Maddie Ziegler

 

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.  

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Monkey See, Monkey Do?

 

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 [email protected] 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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Lockean Theory of property and its impact on the Declaration of Independence, U.S. Constitution and modern day Copyright Law
[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]


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Gorilla Photographer:  When is a photograph original?
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]


, , , 
Leopardi’s Common Denominator appears in bright lights in the Big Apple
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.


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Jay Leopardi to produce new television series, Common Denominator
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]


, , 
Will the real Sarah Palin please standup?: Interplay between Right of Publicity and Trademark
OR, What’s in a Name? Personal Names as Trade Names REMIXED.


By Barry Neil Shrum, Esquire (with Ashley Trout)


“That which we call a rose by any other name would smell as sweet.”


You may know this quote from William Shakespeare’s classic play Romeo and Juliet or from the more “pop-culture” reference by Anne Hathaway in The Princess Diaries, but chances are you’ve heard it countless times before. A name is a sense of originality and persona. It is what gives us our sense of identity and belonging. Some psychologists and sociologists believe that people with certain names, such as Curt, David and Jeff, receive more positive affirmations in life than persons with less desirable names, such as Agatha, Edgar and Mabel, which are more likely to evoke negative messages from teachers, professionals and acquaintances.  One study reported in the Journal of Educational Psychology used elementary teachers to grade identical papers on which random positive and negative names were attached and, as you may have guessed already, the papers with the negative names routinely received the lower grade.  Now you don’t have to wonder why supermodels and handsome actors have the most unique and appealing names!  But Shakespear was perhaps trying to imply that it is the essense of the rose that matters, not its name.


One of the more popular articles on my blog dealth with this issue: What’s in a Name? Personal Names as Trade Names, written by my then-colleague, James H. Harris III for what was then a physical newsletter version of Law on the Row.  In it, Jim elucidates the user of personal names a marks or trade names in business.  I felt it was time to reexamine the issue in the light of celebrities, and extend the discussion to the rights of publicity sometimes also associated with a name.  So, the subtitle of this article is appropriately What’s in a Name? Personal Names as Trade Names REMIXED.


PalinThe bottom line is that some names are more unique than others, but your name is what makes you uniquely “you.” So, what happens when someone “steals” our name?  With the billions of people in the world, the chances significant that there is at least one other person who is walking around with the same name as you.  Is there anything that a person can do to protect their “unique” identifier?


What happens, for example, when someone tries to take a name like “Heidi Klum” or “Albert Pujols”?  Key figures or celebrities that, when you say their name, a certain image comes to mind.   Or, perhaps the name evokes an event:  mention the name Charlie Sheen, and you will likely think not only about his image, but more about his recent escapades surrounding his departure from Two and Half Men.  


A very good example of this power of a name to evoke strong messages is the name “Sarah Palin.” Whatever your political opinion, whether you love Sarah Palin the Alaskan Governor/Vice Presidential candidate or whether you hate her, the name “Sarah Palin” evokes very strong thoughts, associations and yes, feelings. Look at the photographs associated with this article.  What kind of feelings does that evoke in you?  If you thought either was the real Sarah Palin, you are wrong. They are both actually impersonators – and different ones to boot!  Yet, the images evokes the association and the feelings that make you think of the real Sarah Palin and her personal idiosyncrasies.


Sarah Palin is, of course, an American politician, formerly governor of Alaska, but best known as John McCain’s “choice” as the Vice President candidate for the Republican Party in the 2008 election. She is best remembered for her “cowgirl” image, folksy humor and distinctive, if annoying “wink”:   but she is often also associated with her completely ineffective interview with Katie Couric that some say cost the Republican party the election that year – an interview greatly publicized by an impersonator.


Since the 2008 election, Palin has become a fixture on the Fox News networks. Whether she is expressing her opinions about issues such as abortion or gun control, Palin is anything but shy in making her voice heard. The result of all this puimageblicity, of course, is that her television and cable “Q Score” has increased significantly.


With a character as polarizing as Palin, the result is often a proliferation of impersonators. It did not take long in the case of Palin – immediately subsequent to the interview – for Tina Fey to begin imitating the Couric interview on the Saturday Night Live. Impersonators, of course, trade off the personalities and idiosyncrasies of the imitated celebrity or public figure.  Since the days of Rich Little, and his current replacement Frank Caliendo, the art of imitation has been a popular part of American pop culture.  There is no doubt that Ms. Fey’s notoriety increased as a result of her performances. Imitation may be the most sincere form of flattery, but can it go too far?  According to Sarah Palin and her handlers, it already has!


Tina Fey was just the first in a long line of Sarah Palin impersonators. Many people have since taken it upon themselves to impersonate Sarah Palin and trade on her persona, including perhaps the best known of the tribe, Patti Lyons and Patsy Gilbert.  See, infra.  So, the question is “Can Palin stop this type of activity?”


Not to sit on the fence, but the answer is maybe! Perhaps more precisely, she will be able, in a somewhat limited way, to enforce certain aspects of her persona and, in an even more limited way, the use of name in connection with certain services and/or goods.


We must first look to trademark, not copyright, for the answer to our quest.  According to the U.S. Patent & Trademark Office, a trademark is a “word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” Whenever you see the Golden Arches looming in the air, you immediately associate it with the burgers made by Mickey D’s – both trademarks of the McDonald’s corporation.


Likewise, whenever you hear the name “Sarah Plain,” chances are you picture a woman with long brown hair, most likely pulled back, thigh-length boots, and a pair of Kazuo Kawasaki 704 designer eyeglasses. Perhaps you see that aforementioned hackneyed wink she was so fond of using during the televised vice-presidential debates with VP Joe Biden. Whatever you see, the image of Sarah Palin is a very unique and distinctive image. And, more importantly, it is an association engrained in our minds.


So, since the image and name are so synonymous, does it follow logically that Sarah Palin can copyright her name? According to U.S. Copyright Law and historical interpretations thereof, it is well-established answer is “no, she cannot.”  Since its creation by our Forefathers, the Copyright law has never protected mere “ideas.” In fact, Jefferson stated flat out that “[fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][ideas] cannot, in nature, be a subject of property. Specifically, things like titles, names, short phrases and slogans fall into that category, and thus are not eligible for copyright. Anything that can be treated as a building block – musical notes, letters, words – fall outside the scope of copyright’s protection. 


But this doesn’t mean Palin is without protection all together.  In the United States, celebrities like Palin and others can protect their name, through trademark laws, and their persona, at least in 28 of the 50 states, through state laws governing rights of publicity. 


Sarah Palin has opted, at least initially, to use trademark law to protect here interests in her moniker.  In an article by the Christian Science Monitor , she acknowledged filing for a trademark application for her name in International Classification 41 for “educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business and values” and in IC35 for “Information about political elections; Providing a website featuring information about political issues.” The application is Serial Number 85170226 and the mark was approved for publication and the review of that publication was completed on April 12th. Likely the marks will issue within the next few months.


The thing to understand here is that it is not an uncommon practice among celebrities who want to enforce their intellectual properties, namely their persona or publicity rights, and prevent others from using their identifying features in similar trades and endeavors.  Filing a trademark application for use of their name in connection with certain services and goods is, in fact, extremely common for celebrities and I often advise my clients to take such action. 


Currently, back in Sarah Palin’s world, there are two well-known figures impersonating her: Patti Lyons and Patsy Gilbert. Patti Lyons seems the most aggressive of the two, although both have been successful. In a Yahoo article, it was reported that Lyons showed up at a recent event in Washington, D.C. knowing that Palin would not be present.  Lyons impersonated Palin by dressing like her and making an appearance.  At the event, she deceived the crowd into thinking she was Palin.  Lyons spoke with her “fans” at the event and even those people were unable to detect the ruse. Lyons travels the country doing the impersonation with “fair and balanced” political comedy, and allegedly appeared onstage with Bill Clinton and Barack Obama. Lyons also has a website dedicated to her Sarah Palin impressions and is in negotiations with A&E for a special. Other impersonators, like Patsy Gilbert for example, have similar websites. 


But even if Sarah Palin is successful in registering her trademark on the Primary Register, does that enable to prevent these impersonators from practicing their trade?  Maybe, maybe not. As our examination of protection moves further down the tracks, we have to reference a person’s right of publicity. Unlike copyrights, trademarks and patents, there is no uniform federal law that governs the intellectual property right of the right of publicity.  This right is based partly in common law, but also, as noted earlier, has statutory representation in 28 states. The problem is that there is very little uniformity among these state statutes, which range from 50 years in Illinois Cf. Ill. Comp. Stat. § 1075/30 – the most protection – to as little as 10 years at a time in Tennessee, for example.  Illinois’ neighbor, Indiana, gives protection for as long as the publicity rights are continuously transferred! Cf. Ind. Code § 32-36-1-16.  To quote another celebrity, can you say “to infinity and beyond?”  But don’t get me started on the rights of cartoon figures, lest I digress.


The right of publicity is essentially the inherent right of every human being to control the commercial use of his or her identity, in some state even after their death!  Some courts view this as a “moral” right, in line with the natural rights philosophy of John Locke, arguing that a celebrity’s identity is the fruit of his or her labor and creates property entitled to legal protection. See McFarland v. E & K Corp., Civil No. 4-89-727, 1991 U.S. Dist. Lexis 1496, at 4 (D. Minn. 1991).    Using this property right, celebrities may protect the commercial use of their persona, including their name, voice and personal characteristics, limiting their exposure and/or seeking compensation for their use.


Many of these laws, however, only prevent limited types of commercial use. Tennessee has a right of publicity statute which gives Tennessee residents “ a property right in the use of his name, photograph or likeness in any medium and in any manner.” Cf. Tenn. Code Ann. §47-25-1103, et. seq. In a case of first impression, Tennessee’s Supreme Court examined the statute in the context of a Beatles tribute band, i.e.¸a group of impersonators. The imitators dressed liked the Beatles, performed – remarkable close in sound – to the Beatles and, most importantly, advertised their concert using a pose similar to the one the actual Beatles use on the American version of the album, A Hard Day’s Night. The impersonators called themselves “1964 as the Beatles.” 


The court ultimately ruled that the band could perform as impersonators, but could not use printed advertisements that evoked the persona and look of the original Fab 4. The court found that the impersonators’ use of the mark, The Beatles, in their name, and their use of the composition of the famous album cover in their marketing materials, was likely to create confusion for consumers. The court therefore issue an order containing prohibitions on using of the names “John,” “Paul,” “George,” and/or “Ringo” in advertisements, using their likenesses in advertisements, or using their famous mark, “The Beatles” in advertisements. The prohibition, the use of the mark, was extended to apply to the live performances, or stage name, of the impersonators. The band subsequently changed its named to “1964 the Tribute” and has gone on to moderate success.


The Tennessee court relied heavily on a New York case involving Jackie Onassis and Christian Dior.  Jacqueline Kennedy Onassis v Christian Dior, 472 N.Y.S.2d 254 (1984). The latter had used an impersonator of Onassis for a print advertisement. In the ruling the court stated:


We are dealing here with actuality and appearance, where illusion often heightens reality and all is not quite what it seems. Is the illusionist to be free to step aside, having reaped the benefits of his creation, and permitted to disclaim the very impression he sought to create? If we were to permit it, we would be sanctioning an obvious loophole to evade the statute. The essential purpose of the statute must be carried out by giving it a common sense reading which bars easy evasion.


The court found that the designer had violated Ms. Onassis’ right of privacy under the New York right of publicity statute


So, what is the bottom line for Sarah Palin. Once she successful obtains the registration of her marks, will she be able to prevent Ms. Lyons and her ilk to stop using her persona and her name? Again I say, maybe yes, maybe no. She will most certainly be able to prevent others from benefiting commercially from the use of her trademark and service mark in connection with her specified goods and services. But there is one more factor that may come into play with regard to Ms. Palin. In America, we uphold certain Constitutional principles to be paramount to property monopolies, particularly those of the intellectual types, such as copyright, trademark and, last but not least, rights of publicity. The First Amendment’s guarantee of freedom of speech and the Copyright concept of “fair use” come to mind immediately.


Sarah Palin is more than just a celebrity, she is a politician. Ms. Lyon is more than just an impersonator, she is a political humorist. Therefore, in the event that Ms. Palin ends up suing Ms. Lyon in an effort to enforce her newly obtained trademarks, she may very well have to overcome the defenses fair use and freedom of speech. Ms. Lyons has a constitutional right to imitate Ms. Palin in an effort to “comment upon” the state of politics in this country. However, her website, wisely, does not address politics or political issues, it merely offers her services as a humorist – notably a different service from that marked by Ms. Palin. Her URL is “www.imagesarahpalinimpostor.com,” while Ms. Gilbert’s URL is “www.sarahpalinimpersonator.com,” arguably not likely to confuse anyone into thinking these are associated with the real Ms. Palin – in fact, they arguable connote the opposite! So it will be unlikely that the real Sarah Palin will be able to prevent their usage of her name in that context.


But this is where it gets interesting. Reread the New York court’s comment above, and you will struck with its concept that an impersonator should not be allowed to create “an obvious loophole to evade the statute.” Exactly what will Ms. Palin be able to prevent. Do the images of Lyons and Gilbert that appear on their respective websites fall into the same category as the Onassis image and the Beatles cover art? The final answer is that it probably depends on the court and, ultimately, upon which law applies. Some states have more expansive rights of privacy and trademark protections. This will certainly be an interesting case to follow as it winds its ways through the courts.


Guest co-author, Ashley Trout, is a sophomore at Belmont University’s Mike Curb School of Music with an emphasis in music business.  Ashley graduated Freeburg Community High School (Illinois) in 2009.  She prepared the original draft of this article as part of an assignment for Mr. Shrum’s Copyright Law class.   She enjoys all things Disney and Harry Potter!


Get 50% off your first 3 months at audible.com![/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]


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Solutions for the Orphaned Works of Copyright: Google Books Decision Highlights Need for Action


The recent decision presented by the honorable Judge Chin on the matter of copyright infringement in the case The Authors Guild v. Google Inc. raised numerous issues in the arena of Intellectual Property. In addition to opposing the “opt-out” stipulation written into the settlement, Judge Chin also contested the way Google Inc. approached and viewed “orphan works” in relation to digitizing books where no copyright owner or recipient could be located or reached. In Judge Chin’s opinion, the matter of orphan works should not to be decided by private enterprise, but is rather a matter for Congress to decide. In so deciding, Judge Chin refers to certain opinions issued by the Copyright Office, as well as legislation that was originally proposed back in 2008. 


"Orphaned works" are defined as copyrighted works for wSAVEORPHANShich the owner cannot be identified, but which someone wants to use. In other words, works for which the potential user cannot locate or identify the actual owner of the work in order to seek proper permission. Under the current legal structure, even if a potential user makes a diligent effort to find the owner in order to seek permission, the user’s risk of copyright liability for such use is not eliminated because there is always a possibility, however remote, that a copyright owner could bring an infringement action after that use has begun. Although it is difficult to know precisely how many orphaned works are around, one 2009 study conducted by the JISC (Strategic Content Alliance) in the United Kingdom calculated that as many as 25 million such works existed in the libraries, museums and archives of that country. In such situations, productive and beneficial use of the work – something the concept of copyright is designed to encourage – is impeded.  It is such a real problem that many organizations, like the Society of American Archivists, have issued statements of best practices to assist their members in dealing with orphaned works.  But many potential creators are not members of such an organization and don’t know how to approach clearing an orphaned work for use.


Based on a report on orphaned works prepared by the Copyright Office in 2006 at the requests of Senators Orrin Hatch and Patrick Leahy, the “Shawn Bentley Orphan Works Act of 2008” (S. 2913) was ultimately introduced by Senator Leahy on April 24, 2008. It quickly passed by a unanimous vote on September 26, 2008. The act was referred to the House Judiciary Committee, where it unfortunately lies dormant or, more likely, has stalled or died in committee chambers, suffering the fate of many good laws. Several earlier actions which served the same purpose, such as Copyright Modernization Act of 2006 (H.R. 6052) suffered similar fates.  The proposed 2008 act outlined specific guidelines for individuals pursuing and currently using orphan works. The following is a brief overview of the proposed bill and its major provisions.


Under the proposed legislation, in order to use an orphan work, a person would be required to follow very specific steps in order to avoid financial and legal liability for infringement. These rules fall under the section entitled “Conditions for Eligibility,” which outlines the following as steps the person utilizing the orphaned works would need to takes in order to limit liability: 


    

  1. provide extensive evidence that the infringer performed a detailed search in “good faith” to locate and identify the copyright holder and was unable to locate the copyright holder; 
    2. 

  2. acknowledge the copyright holder in an appropriate manner, assuming the copyright holder was known with a reasonable amount of confidence (a form of "moral rights"); 
    3. 

  3. provide a mark or symbol in some regard indicating the work is used under this section; 
    4. 

  4. assert in an initial pleading the eligibility for such limitations; and 
    5. 

  5. provides documentation for the search undertaken to locate and identify the copyright holder. 
    6. 



The exceptions to the above guidelines for limited remedy collection do not apply to an "infringer" if: 1) the infringer receives notice of infringement and fails to negotiate in good faith with the claimant or 2) fails to provide payment for the use of the infringed material in a reasonable time period after reaching an agreement with the copyright holder.


Additionally, the individual must search with what the legislation described as "diligent effort” to locate the copyright holder. The phrase "diligent effort" requires, at a minimum: 1) a search of the records at the Copyright Office through the medium of the Internet 2) a search of “reasonably available sources of copyright authorship and ownership information” 3) use of intangible and tangible tools and publications, and where necessary, assistance of others and 4) use of databases available to the public, including those accessible by the Internet.


If someone utilizing an orphaned work follows these guidelines, any award for monetary relief “may not be made other than an order requiring the infringer to pay reasonable compensation to the owner of the exclusive right under the infringed copyright for the use of the infringed work.” Injunctive relief remains an additional remedy offered to the owner in order to prevent or restrain any further infringement action.


The act apparently died its quiet death because of opposition from many copyright groups and, in particular, notable expert Lawrence Lessig, who opposed the bill because of its vague definition of the "diligent efforts" required to avoid liability. Some of these opposition groups even referred to the proposed legislation as a “license to steal.”  The Register of Copyrights at the time, Marybeth Peters, believes to the contrary that the orphans works situation is a problem that is "overdue" and that the "pending legislation is both fair and responsible (See Marybeth Peter’s open letter).


This issue is particularly of concern for musicians and artists, since a large number of old recordings are no longer commercially available because of an uncertainty as to who owns them. In addition, creators of new recordings must often abandon projects if a work is "orphaned," for fear of liability. This is a loss not only for the artists, but for the public and our collective culture, i.e., the continuum.


Officially, legislator still deem the legislation to be "pending."  In his speech in 2009 in from of the World Copyright Summit, Senator Orrin Hatch state he “continue’s to be very active on passing orphan works legislation.”  He continued to say:




For years, I have been working with industry stakeholders and copyright experts, including Marybeth Peters, Register of Copyrights, to pass orphan works legislation. The bill seeks to unite users and copyright owners, and to ensure that copyright owners are compensated for the use of their works. I couldn’t agree more with Register Peters when she said, “A solution to the orphan works problem is overdue and the pending legislation is both fair and responsible.




Judge Chin felt that the Google settlement would have given Google an effective monopoly over orphan works, and that was one of his primary rationales in deciding the way he did.  His rejection of the Google settlement highlights this important issue and brings it to the light of public awareness again.  Anyone with an interest in intellectual property should contact their senators and representatives and ask why a more diligent effort, no pun intended, has not been made to address a problem that still exists, despite the fact that there has been no movement on the bill in three years.  With President Obama’s pro-intellectual property agenda, the time may right to solve this incredible hole in U.S. Copyright law.





				
				


				
			


		









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