Celebrity Wedding Photo Fights Then and Now: Own the Copyrights

Originally posted on Bose Intellectual Property Blog:

On June 27, 1993, two talented people were married north of Indianapolis and drove to what was called Deer Creek Music Center for a concert by one of them. The couple was Julia Roberts and Lyle Lovett. He put on a great show and she appeared on stage in her wedding gown. Despite strict measures by the venue to prevent photography, a stringer from People magazine got his gear inside and jumped up to take photos from one of the front rows. The film was seized and an emergency hearing held in federal court two days later.

On January 3, 2007, two talented people were married in Las Vegas, and went on with their lives keeping the wedding a secret even from their own families. The couple was Noelia Lorenzo Monge and Jorge Reynoso. Three photographs of the ceremony and three of their wedding night were taken at their request and kept private until a driver found…

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Private Entities Liable For Attorneys’ Fees For Opposing Public Access

In a decision earlier this week, a slim 3-2 majority of the Indiana Supreme Court held that private entities who intervene to oppose access to public records are subject to liability for the attorneys’ fees of the party who successfully sues for access under the Indiana Access to Public Records Act (“APRA”).

The case is Shepard Properties Co. v. International Union of Painters & Allied Trades District Council 91. This link will take you to the opinion.

It is not unusual in APRA cases for a private party to oppose the release of documents and information provided to a public body. The Supreme Court’s decision makes it clear that those private parties have more “skin in the game” than the disclosure of the information itself and will be subject to a fee award when they wrongly oppose public access.

In Shepard Properties, a union sought payroll records relating to a public works project from a School District. A subcontractor on the project, Shepard Properties, opposed the disclosure and encouraged (through threats and otherwise) the School District to resist disclosure. After the union filed an APRA lawsuit, the Subcontractor intervened in the action and continued, along with the School District, to oppose disclosure.

The trial court ruled in favor of the union and awarded it its attorneys’ fees jointly and severally against the School District and the Subcontractor. On appeal, the Indiana Court of Appeals reversed the fee award against the Subcontractor, reasoning that APRA did not expressly authorize a fee award against a private party intervenor.

The Supreme Court vacated the Court of Appeals’ decision and agreed with the trial court’s fee award against the Subcontractor. The Supreme Court reasoned that APRA’s fee award provisions mandate a fee award to a plaintiff who succeeds in a lawsuit to compel access to public records, but is silent as to who is liable for such fees. The Court looked to the purpose of the APRA in order to interpret the law in light of that silence:

To shield private entities from liability for attorney’s fees would thwart, rather than further, the public policy underlying the APRA. Here, the legislature has made it clear that the APRA must be “liberally construed to implement” the policy of full access to public records and transparency of government affairs. I.C. § 5-14-3-1. And the legislature clearly contemplated the involvement of private parties in APRA litigation. Removing from private entities any fear of liability for attorney’s fees would deter persons seeking to inspect public records from filing APRA actions, as the private entities could assert non-meritorious defenses to avoid disclosure and drive up litigation costs. In light of the “liberal” construction mandate and the underlying policy of the APRA, we construe Indiana Code section 5-14-3-9(i) as permitting private-party liability for a prevailing plaintiff’s attorney’s fees.

The opinion was written by Justice David and joined by Justices Rucker and Sullivan. Chief Justice Dickson and Justice Massa dissented without opinion.

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FCC Regulation of George Carlin’s Seven Dirty Words: What’s So Vague About That?

George Carlin’s comedy routine about the seven words that can’t be said on television is (to me at least) as funny today as it was decades ago, and, indeed, is still relevant. Carlin has a gift for humorous social commentary. Here’s how he introduces his seven-dirty words schtick:

I love words. I thank you for hearing my words. I want to tell you something about words that I uh, I think is important. I love..as I say, they’re my work, they’re my play, they’re my passion. Words are all we have really.

We have thoughts, but thoughts are fluid. You know, [humming]. And, then we assign a word to a thought, [clicks tongue]. And we’re stuck with that word for that thought. So be careful with words. I like to think, yeah, the same words that hurt can heal. It’s a matter of how you pick them.

There are some people that aren’t into all the words. There are some people who would have you not use certain words. Yeah, there are 400,000 words in the English language, and there are seven of them that you can’t say on television. What a ratio that is. 399,993 to seven. They must really be bad. They’d have to be outrageous, to be separated from a group that large. All of you over here, you seven. Bad words. That’s what they told us they were, remember? ‘That’s a bad word.’ ‘Awwww.’ There are no bad words. Bad thoughts. Bad Intentions.

The FCC begs to differ. For decades, the FCC has enforced decency standards on public airwaves between the hours of 6 AM and 10 PM under federal law, 18 U.S.C. Section 1464. The FCC has promulgated regulations defining what constitutes indecent material, including profanity and nudity.

George Carlin does figure into this story because his “seven dirty words” routine was at issue in the seminal United States Supreme Court opinion in FCC v. Pacifica Foundation, 438 U.S. 726 (1978). In Pacifica, the Supreme Court upheld the FCC’s ruling that Carlin’s routine was indecent against constitutional challenge.

Fast forward to 2012. Just last week, the Supreme Court overturned the FCC’s enforcement actions against the Fox and ABC broadcasting networks for broadcasting indecent material in violation of federal law. The opinion in FCC v. Fox Television Stations, Inc., et al. is available here. The case addressed FCC enforcement action stemming from Fox’s broadcast of the Billboard Music Awards in 2002 and 2003. Cher, an award recipient in 2002, and Nicole Richie, a presenter in 2003, apparently didn’t get the memo, or chose to disregard it, and spontaneously used the “king” of the seven forbidden words, the f-bomb. Unlike George Carlin fans everywhere, the FCC was not amused and cited Fox for violating decency standards, although it imposed no fine.

The case against ABC involved a brief segment in a 2003 episode of NYPD Blue that showed the nude buttocks of an adult female character for about seven seconds and an even shorter view of the side of her breast. Unlike with Fox, the FCC imposed a forfeiture against ABC totaling nearly $1.24 million.

In a rare 8-0 unanimous decision (Justice Sotomayer did not participate) in the habitually fractured US Supreme Court, the Court invalidated the FCC’s actions against Fox and ABC as a violation of constitutional Due Process. The Court examined the history of FCC regulation of indecency, specifically its earlier announced guidelines making “whether the material dwelled on or repeated at length the offending description or depiction” a key consideration in determining indecency. Opinion, p. 13. The Court reasoned:

[The FCC’s] regulatory history . . . makes it apparent that the Commission policy in place at the time of the broadcasts gave no notice to Fox or ABC that a fleeting expletive or a brief shot of nudity could be actionably indecent; yet Fox and ABC were found to be in violation. The Commission’s lack of notice to Fox and ABC that its interpretation had changed so the fleeting moments of indecency contained in their broadcasts were a violation of § 1464 as interpreted and enforced by the agency failed to provide a person of ordinary intelligence fair notice of what is prohibited. This would be true with respect to a regulatory change this abrupt on any subject, but it is surely the case when applied to the regulations in question, regulations that touch upon sensitive areas of basic First Amendment freedoms.

Opinion, p. 13 (citations and quotations omitted).

The Court noted that its decision was based on the Due Process Clause, not the First Amendment. Nonetheless, the Court pointed out repeatedly that the void for vagueness doctrine must be rigorously applied when speech is involved lest ambiguity chill protected expression. Opinion, p. 12, 13.

So where does this leave the FCC’s new policy of fleeting, momentary and spontaneous indecency in future cases? You got it: up in the air. The Court’s opinion concludes thusly:

Here, the Court rules that Fox and ABC lacked notice at the time of their broadcasts that the material they were broadcasting could be found actionably indecent under then-existing policies. Given this disposition, it is unnecessary for the Court to address the constitutionality of the current indecency policy as expressed in . . . subsequent adjudications. The Court adheres to its normal practice of declining to decide cases not before it.

Opinion, p. 17. In other words, stay tuned.

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YouTube “Gets Tubed” by Internal E-Mails Showing Knowledge of Copyright Infringement

It never ceases to amaze me what even sophisticated business people will write in an e-mail.  The executives of YouTube obviously are sophisticated, both in business and technology, yet e-mails that surfaced in a major copyright lawsuit with Viacom have seriously damaged YouTube’s defense and could have major repercussions for the company.

In Viacom Int’l, Inc. v. YouTube, Inc., No. 10-3370 (2d Cir.), Viacom is suing YouTube for copyright infringement.  The Digital Millenium Copyright Act (DMCA) grants YouTube and other internet companies a “safe harbor” from copyright liability when members of the public upload copyrighted material to those companies’ servers for viewing by other users.  However, the DMCA “safe harbor” is unavailable to a company that has actual knowledge of specific infringing material on its system.

YouTube won the case on summary judgment in the trial court.  Under the standard applied by the trial court, YouTube was eligible for safe harbor protection from liability unless it knew of “specific and identifiable infringements of particular individual items.”  Essentially under the prevailing standard applied by the trial court, an internet company like YouTube could await a “takedown notice” from the copyright owner before removing infringing material.  The United States Court of Appeals for the Second Circuit modified the standard, but key to that decision were e-mails by YouTube’s management showing that YouTube welcomed infringing material being uploaded to its website.

For example, when one of YouTube’s founders urged his colleagues “to start being diligent about rejecting copyrighted / inappropriate content,”and mentioned an infringing clip taken from CNN, one of those colleagues wrote back by e-mail:

but we should just keep that stuff on the site. i really don’t see what will happen. what? someone from cnn sees it? he happens to be someone with power? he happens to want to take it down right away. he gets in touch with cnn legal. 2 weeks later, we get a cease & desist letter. we take the video down.

A different executive responded that he liked the CNN clip.  He directed that YouTube could “remove [the CNN clip] once we’re bigger and better known, but for now that clip is fine.”

These e-mails and other internal communications of a similar vein were the key pieces of evidence that led the Second Circuit to reverse the judgment in favor of YouTube and to send the case back to the trial court for a trial.

The Second Circuit’s decision has major significance for copyright enforcement and application of the all-important DMCA safe harbor.  (Click here for the link to the Court’s opinion.)

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Village People Artist Prevails on Copyright Termination

Copyright termination rights are an old idea designed to benefit the creators of works who gave their copyrights to the business side of a project in the form of a publisher, record company, movie producer, etc. The idea was that after a business has gotten a good long ride to exploit and profit from the rights, creators or their heirs should get them back. The first sentence says “designed” because the old copyright law had a renewal term which was supposed to be when creators got their rights back, and it didn’t work. Standard contracts throughout the time the old law was in effect had artists give up all copyrights, including the renewal term.

When most of our copyright law was overhauled in the 1970’s, specific copyright termination sections were built in so that artists would finally be able to get back rights when the time came, no matter what. The law’s determination to get it done this time is seen in the fact that artists could terminate rights “notwithstanding any agreement to the contrary” 17 U.S.C. §203(a)(5).

Though the new copyright law isn’t exactly new, what is new is that after a 35 year waiting period copyright terminations for works created since January 1, 1978 are just underway. To send the termination notices required by the law and Copyright Office regulations, artists or their heirs have to track down the current owners, do research to locate documents, and try to recreate what happened more than 30 years ago. This can be complex and expensive all by itself.

But notices are going out and peaceful rights turnovers are happening. Some terminations are accepted and then former owners and the artists work out brand new deals. The law has provisions on how this process must work. Although notices must be filed with the Copyright Office, what happens from there is usually private.

It all becomes public when businesses say “Never!” and file lawsuits against the creators. That’s what happened to Victor Willis, original lead singer of the iconic Village People. He didn’t just sing and do choreography in costume. He was an author or co-author of such hits as “YMCA,” “In the Navy,” and “Go West.” And he wanted his copyrights back in accordance with the law.

The music publishers sued him and made many technical and some surprising arguments against the rights return. They said that Willis’s termination notices were defective under the  law because they had to be signed by a majority of the creators involved in each tune. The arguments were complex and many issues were briefed. But Chief Judge Barry Moskowitz of the federal court in San Diego basically boiled them down with one simple fact—Mr. Willis was the only person to sign the agreements giving up his rights. The court concluded he was the only person who had to sign the notice terminating those agreements.

The publishers argued that Mr. Willis had no termination rights because his work was all “work made for hire.” This is a very difficult issue in the music business that will eventually have to be resolved once and for all. But not in this lawsuit. The publishers withdrew the argument.

Perhaps the most surprising argument was that if the court agreed Mr. Willis got back his copyrights, he was limited to getting an interest at the same percentage as his royalties under the agreements being terminated. The court had no trouble rejecting that one. Judge Moskowitz ruled that Mr. Willis gets the copyright interest back that he gave up 30+ years ago, and his compensation under the agreements being terminated had nothing to do with what that interest was. Not cited in the opinion, this looks like one of those “notwithstanding any agreement to the contrary” moments.

Finally, the chief judge kept an eye on the idea behind the termination rights. He recognized “The purpose of the Act was to ‘safeguard[ ] authors against unremunerative transfers’ and address “the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited.” H.R. Rep. No. 94-1476, at 124 (1976).

This decision vindicated the rights of one artist. Will copyright terminations be fought in the courts more times than not if valuable rights are at stake? Will artists again be in an “unequal bargaining position” because they can’t afford those fights? Will businesses  focus instead on accepting terminations and working out new deals? Time will tell.

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Burberry v. Bogart and the Patchwork of Right of Publicity Laws

I learned from IPLaw360 that iconic and excellent British luxury brand Burberry filed a declaratory judgment lawsuit yesterday against the entity asserting rights of publicity in the persona of acting legend Humphrey Bogart. Burberry Ltd. v. Bogart LLC, 12-cv-3491 (S.D.N.Y.). Burberry’s Facebook pages have a timeline of its history including images of notable moments when its products graced famous people. Until a few hours ago, an entry for 1942 displayed the trench-coated Bogart in the last scene of the all-time classic Casablanca.

Bogart, LLC apparently did not think it was the beginning of a beautiful friendship. The complaint recites that Burberry received cease and desist as well as payment demands, and the dec action was filed on federal trademark, right of publicity, and various common law grounds apparently referred to in Bogart’s communications. Around 9 this morning, noir images of Robert Mitchum and Tyrone Power were the placeholders for the 1940’s and Bogie was gone.

Burberry’s major argument seems to be its First Amendment right to talk about history. It asks the court to declare that it can talk about the fact of Bogart wearing Burberry no matter what state right of publicity law applies, and cites both New York Civil Rights Law §51 and California Civil Code §3344.1. Burberry’s home base in the US is on Madison Avenue in Manhattan, and Bogart LLC is based in California.

If the court rejects Burberry’s First Amendment argument, however, it will be thrown into the patchwork of inconsistent state RoP laws that could determine the outcome. Burberry is not selling a line of trench coats called Bogart or running ads for their classic juxtaposed with an image of him. If Bogart has a trademark infringement claim based on the timeline, it may be at the outer edges of that protection while a right of publicity claim may fit the facts better. But what law should apply?

The RoP patchwork is well illustrated by New York and California law. In New York, Bogart is completely dead. In California his persona is very much alive. The New York statute is the grandparent of all the others. It still only allows fame to be exploited as a commodity during a famous person’s life. California, starting with the Fred Astaire Amendment, has long protected and recently expanded the scope of its post mortem RoP protection. Indiana’s may be the most extreme of the many other states that allow post mortem actions.

Lacking a national publicity statute, the Burberry v. Bogart lawyers may have to devote their skills to persuading the court why a Facebook timeline equally accessible in every state is actually more of a New York thing or more of a California thing. The idea that publicity rights pertaining to social media start or end at state boundaries makes no sense. The only nationwide way to address the subject is on the defense. We share one First Amendment, and we need one way to assert publicity rights anywhere in America.

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Toward A General Theory of Copyright–Part 1(a)

Exploring our lack of basic consensus on copyright , I wrote in Part 1 that “while the news was still all about the dramatic Megaupload arrests for massive internet copyright infringement, a major record company agreed to a proposed class action settlement for underpaying artists copyright royalties on, of all things, internet downloads.” That was just the tip of the download litigation iceberg.

Billboard reported today on one case seeking a Steve Jobs deposition in another that hints at the size of the iceberg below the water line. F.B.T. Productions v. Aftermath Records is going to trial in LA. The plaintiffs produced hits by Eminem and the defendant is part of the giant Universal group of record labels. It has already gone to the Ninth Circuit which issued a major decision interpreting standard record contract language favorably for artists and very unfavorably for labels. B.T. Productions, LLC v Aftermath Records, 621 F.3d 958 (9th Cir. 2010). The Supreme Court refused to review the decision.

The trial is about how much the label owes the producers. One  piece of evidence is a Steve Jobs deposition which might give unique insights into the iTunes deal with Universal. iTunes made the first successful and legal music download business. They got licenses from the record labels, and pay them for downloads. Eventually artists started asking what the labels were doing with that money. That’s the question in class litigation against Universal by named plaintiffs Rob Zombie and the Rick James estate. They want the F.B.T. Job’s deposition and more. Apple’s resistance is the subject of the Billboard story.

The class action mentioned in my Part 1 was against Sony and posed the same question about the money. It was headlined by the Allman Brothers Band and is playing out in New York. There are more like it. Texas attorney Tamera H. Bennett among others compiled a list of download royalty lawsuits on her WordPress blog. Many famous legacy artist names are listed.

Settlements may eventually result in a sizeable number of artists and their teams receiving additional download royalties. How much of the universe of copyrighted sound recordings they will represent remains to be seen, but a relatively small number of artists produces the majority of paid downloads and damage awards. 

Both the zealous pursuit of copyright infringers, and the less zealous payment of the artists that created the infringed works, brings us back to the mini-series question.  What is the purpose of Article 1 Section 8 Clause 8’s grant of power to the Congress  “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”?

“Authors” was expanded long ago to include the business organizations that are not so much authors as bankers of authors. The Supreme Court refreshed some of our understanding of Article 1 Section 8 Clause 8 in January in Golan v. Holder, 132 S.Ct. 873 (2012). It rejected an attack on bringing foreign public domain works back under US copyright law protection to complete our implementation of the Berne Convention.

In Golan, the Court recognizes again that the dissemination of copyrighted works is as much a goal of the constitutional grant as is the creation of new works. That underscores the importance of the record label contribution, but the decision does not detract from the prime importance of artists making the works that are distributed.

What if our understanding of copyright law was less atomized and we agreed that both needed to benefit? Could the next revision of copyright law grant more tools to pursue infringers only if it benefits creators too? Sounds naive I know, but copyright law has long specified how much artists get in certain circumstances. This won’t make the technology community happy all by itself, but it’s a way of thinking about the subject that could lead to more consensus on what we too loosely think of as the “content” part of the process.

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