Music Publishing Rights Dispute Throws Lady Marmalade Songwriter’s Royalties into a Black Box, a Lesson in Music Publishing

My mom gave me an AM radio with an earplug when I was 10. There I discovered summer pop music and the positive girl vibe of Lady Marmalade.  While Patti LaBelle’s 1974 earworm of a performance made Lady Marmalade famous, the lyrics and music were created by co-songwriters Bob Crewe and Kenny Nolan. Nolan wrote numerous famous songs during the 1970s as a singer-songwriter, and co-writer with Crewe and other songwriters. Many of the songs, including Lady Marmalade and My Eyes Adored You, the Frankie Valli chart topper, were huge hits. (more…)

Recovery of Fees and Costs in Copyright Litigation: Supreme Court Sets Limits

Costs recoverable by a prevailing party in a copyright infringement case are limited to the specific categories of costs allowed under the general federal status authorizing the award of costs by federal district courts. So says the U.S. Supreme Court in its unanimous decision in Rimini Street, Inc. v. Oracle USA, Inc. (March 4, 2019).

Oracle successfully sued Rimini Street for infringing Oracle’s copyrights. A jury awarded damages, and the district court awarded fees and costs, including a disputed $12.8 million for litigation expenses, such as expert witnesses, e-discovery, and jury consulting. The Ninth Circuit recognized that this award covered expenses not included within the general statute, but split with other circuit courts of appeal and held that the award was proper because Section 505 of the Copyright Act granted the district court the discretion to award “full costs” to a prevailing party in copyright cases. (more…)

A Tale of Two Cakes: Can Copyright Law Protect this Cake Design?

Duff Goldman of Charm City Cakes, one of our hometown heroes in Baltimore, a.k.a. the Ace of Cakes, created a striking cake for President Obama’s 2013 inauguration. The cake design caught the eye of the incoming presidential administration that ordered a different pastry chef, Buttercream Bake Shop, to create a replica of the Ace’s creation.

Can the pastry chef that produced the replica cake be held liable for stealing the Ace’s cake design?

In theory, a three-dimensional design may be protected under copyright or patent law. Patent law generally protects utilitarian inventions but a designer may obtain a design patent that protects the ornamentation of the design for 15 years. To obtain such patent protection, the designer must successfully ‘prosecute’ a design patent application until the Patent Office is satisfied – a costly several yearlong process.

Copyright law intends to be more user-friendly and less costly. Copyright protection ‘attaches’ to the design upon fixation in a tangible medium. Copyright does not require the designer to first register the copyright, or meet other formalities, so protection is immediate and free. The cake design is fixed upon the drying of its icing and copyright protection attaches. Easy, right?

Not so fast. Bringing a lawsuit for copyright infringement requires a valid copyright registration. Yes – I did say copyright attaches without formalities, but copyright law requires registration of copyrights prior to litigation for three reasons. A copyright registration provides (1) proof of ownership of the copyright; (2) a presumption the copyright is valid; and (3) the option to elect to recover statutory damages if the registration date precedes the infringement. Opting to request statutory damages as a remedy allows the court to decide the amount and calculation of damages without proof of the owner’s losses or the infringer’s profits from the design. However, if a copyright registration was not filed prior to infringement, the owner may request expedited registration from the Copyright Office and seek actual damages and any additional profits of the infringer in federal court.

So if the Ace filed an application for copyright registration in 2013, the allegedly infringing cake design created in 2017 could immediately be called into court for copyright infringement, and if the Ace proves that there is copyright infringement, statutory damages would be available. Great fact, the second pastry chef admitted she was commissioned to reproduce the original design on the cake that the President and Vice President would cut with a ceremonial sword. Slam-dunk!

Again, not so fast. A valid copyright must be protectable copyright subject matter and meet minimum standards of creativity. Copyright law does not protect functional features, geometric shapes, including cylinders, stripes, color, or lines. Layer cakes as food are functional.

Unlike some of the Ace’s fanciful sculptural cakes, this inaugural cake design is unlikely to comprise copyrightable subject matter. The cake deploys stacked cylindrical layers, solid color layers, striping, narrow bands of color, stars, and coin-shapes that are not protectable. This leaves the bunting, presidential seal, and the seals of the army, navy, marines, air force, and coast guard. The government seals belong to the federal government and are forbidden for non-official use; and bunting is unprotectable as ‘scene au faire‘ in connection with government galas.

Moral rights (rights protecting the integrity of an artist’s name and designs, depending on applicable law) might protect the Ace’s cake design but not in the United States. U.S. Copyright law provides limited moral rights to protect certain eligible artworks by visual artists. Cake design is not an eligible artwork.

1/24/2017 Correction: The original cake was created in 2013 and the replica cake was created in 2017. Also, if a copyright registration was not filed prior to infringement, the copyright owner may obtain copyright registration, file in federal court, and request actual damages. H/t Kevin Madigan for pointing this out.

Get thee to the Copyright Office: take steps now to preserve your DMCA safe harbor protection

The U.S. Copyright Office announced yesterday its new online registration system for designated agents. Online service providers designate agents to receive notifications of claimed copyright infringement. As of December 1, 2016, the Copyright Office no longer accepts paper applications for agent designation. Service providers who previously designated agents in the existing directory have until December 31, 2017 to register in the new online directory.

Online service providers, including websites and online platforms that allow users to store material on their systems, risk liability for direct or contributory copyright infringement from third party materials posted by users without permission.  Since users often do not understand or care about copyright law, an unwary service provider (who often appears to have deeper pockets) may have a rude awakening when it finds itself the sole defendant in a copyright litigation over unauthorized photos or other user generated content posted on its website by a user.

Congress passed the Digital Millennium Copyright Act (“DMCA”) to balance the rights of copyright owners with the needs of online service providers in the face of rapidly developing technology. The DMCA provides a safe harbor from copyright infringement liability in 17 U.S.C. 512 for qualifying service providers who agree to remove copyright infringing content and eject infringing users from their platforms. The DMCA safe harbor protects burgeoning technology such as streaming music platforms.  In order to qualify for DMCA safe harbor protection, a service provider must have an appropriate copyright policy in its terms of use, designate an agent to receive notifications of claimed copyright infringement, register the designated agent with the Copyright Office, and understand and comply with the DMCA notice and take down procedures.

Second Circuit: copyright infringement of Pre-1972 sound recordings covered by DMCA Safe Harbor

Superheros donning black robes save website operators from liability for users’ copyright infringement of sound recordings fixed prior to 1972.

The Second Circuit Court of Appeals ruled today that the safe harbors provided by the Digital Millennium Copyright Act (DMCA) protect qualifying website operators from liability from such pre-1972 recordings, even though they are not covered by federal copyright law. This decision overrules a finding by the District Court for the Southern District of New York that section 501(a) of the Copyright Act “defines” the term “infringement of copyright” used in section 512(c) to define the scope of the DMCA safe harbor provision for qualifying website operators as limiting the safe harbor to materials infringed under federal copyright laws.

The Second Circuit disagrees, saying Section 501(a) does not provide an exclusive definition of “infringement of copyright” and given that the purpose of the DMCA  “was to make economically feasible the provision of valuable Internet services while expanding protections of the interests of copyright owners through the new notice-and-takedown provision. To construe § 512(c) as leaving [website operators] subject to liability under state copyright laws for postings by users of infringements of which the [website operators] were unaware would defeat the very purpose Congress sought to achieve in passing the statute.” Capital Records, LLC, et al., v. Vimeo, LLC, Docket No. 14-1048/1049/1067/1068S, page 29, (CA 2 Argued Nov. 6, 2015, Decided June 16, 2016).

TIP: Like the idea of having the protection of the DMCA Safe Harbor? Review section 17 USC 512 to learn about the requirements needed to qualify for the safe harbor, including a copyright policy that informs users who infringe copyrights that they will be blocked, a designated agent and understanding the notice and takedown procedure for allegedly infringing material.

 

 

To understanding the copyright protections of pre-1972 sound recordings you have to Keep on Truckin’ with Hot Tuna and the sounds of the 60s

Keep on truckin' (creative commons with attribution to frankieleon)

Keep on Truckin’ (creative commons with attribution to frankieleon)

Do music streaming services need to pay royalties to play classic rock? It’s actually an open question. Some services have refused to pay performance royalties for all pre-1972 recordings. For many years, a false rumor persisted that because pre-1972 recordings are not protected by federal copyright law, they are not protected at all, and one need not pay royalties to use such recordings. To understand why that rumor is false, one needs to understand something about the history of legal protection for sound recordings in the U.S.

Prior to 1972, the Copyright Act of 1909 protected songwriters, but did not accord copyright to sound recordings on the federal level, and instead permitted each state to maintain its own common law of copyright. In 1972, Congress amended the 1909 Act to create an exclusive right for sound recordings produced after February 15, 1972. 17 U.S.C. Sec. 5(n) (1909 Copyright Act (Rev’d to 1973)). (more…)