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Happy Birthday to All

      “Happy Birthday to You” (“Happy Birthday”), the catchy tune notoriously sung at birthday parties around the world, received a legal victory on September 22nd. Judge George H. King, of the U.S. District Court for the Central District of California, conclusively ruled that the lyrics so synonymous with cake and candles, belongs to the people.

      The action arose in 2013 when Rupa Marya, singer of the band Rupa & The April Fishes, tried to include in her new album a live soundbite of an audience singing to her “Happy Birthday”. Warner/Chappell Music, Inc. (“Warner/Chappell”) then asserted that it owned all of the rights in and to that song and demanded that Marya pay Warner/Chappell a licensing fee for its use. Rather than complying, Marya filed a Declaratory Judgment action, contending that Warner/Chappell did not own a copyright in the “Happy Birthday” lyrics and that they should be compelled to return the “millions of dollars of unlawful licensing fees” they have wrongly collected over the years.

      The origins of the song “Happy Birthday” are a bit murky, but it appears the song originated with two Kentucky sisters, Mildred and Patty Hill. The sisters composed a song titled “Good Morning to All” in the late 19th century that featured an identical melody to be sung with lyrics similar to the now near universally known “Happy Birthday.” In 1893, the Hill sisters assigned their rights to the manuscript containing “Good Morning to All,” along with several other songs, to the Clayton F. Summy Company (“Summy Co.”). That same year, Summy Co. published the manuscript and filed for copyright registration of a songbook entitled “Song Stories for the Kindergarten.” Under the Copyright Act of 1909, works were only able to receive copyright protection for two consecutive 28-year terms. Subsequently, in 1921 a third Hill sister, Jessica, filed for renewal of the copyright to “Song Stories,” which then expired in 1949. At the time the song was written, “Good Morning to All” did not contain lyrics referring to birthdays. However, over the years, lyrics referring to birthdays began to appear, first being referenced, but not appearing, in a 1901 article from the Inland Educator and Indiana School Journal. The lyrics to what we now know as “Happy Birthday,” were first apparently published in 1911, but the author of the lyrics was not credited. Throughout the early to mid-1900’s, “Happy Birthday” appeared in a multitude of places, being published in songbooks and appearing in movies, but without any claim to authorship. Then, in 1933, “Happy Birthday” was performed in a play entitled As Thousands Cheer, which gave rise to a lawsuit from Jessica Hill for copyright infringement.

      Both parties mutually agreed that the musical component of the song was part of the public domain, and had been for some time. Therefore, the ultimate question to be decided by Judge King was the status of the lyrics. Judge King looked at a variety of issues, including a presumption of validity in the contested registration from the Copyright Office, the true author of the lyrics, whether or not the lyrics were abandoned or lost some time after being written, and if there was a valid transfer of rights from the Hill sisters to Summy Co.

      The court looked at three agreements between the Hill sisters, the Hill Foundation, an organization ostensibly created by the Hill sisters which was then assigned the rights to the lyrics before transferring them to Summy Co., and Summy Co. From looking at these three agreements, Judge King held that none of the contracts actually assigned the rights to the lyrics from the Hill sisters to Summy Co., as the First Agreement was limited to sheet music, the Second Agreement contemplated piano arrangements, and the Third Agreement did not explicitly assign the lyrics to “Happy Birthday,” or transfer any of the Hill sisters’ common law rights in said lyrics to Summy Co.

    Judge King thus held that because Summy Co. never acquired the rights to the “Happy Birthday” lyrics, Warner/Chappell, as Summy Co.’s purported successors-in-interest, did not own a valid copyright in those lyrics. As such, pending a successful appeal, this is a decision worth celebrating!

PHOTO: ©Ruth Black Used with permission of Fotolia

“Let’s Not Go Crazy” About Lenz v. Universal Music Corp. et al.

 

In a highly anticipated decision, on September 14, 2015, the Ninth Circuit in Lenz v. Universal Music Corp. et al. ruled that copyright holders must consider fair use prior to sending a takedown notice under the DMCA or they may run the risk of being held liable for nominal damages under 17 U.S.C. § 512(f).  Yet, what implications does this decision have for copyright holders, who are already struggling to enforce their rights as the Internet and technology rapidly progresses?  Although the decision mandates that copyright holders partake in a fair use inquiry prior to issuing a takedown notice, which technically-speaking is an added step, many copyright holders, particularly those who have engaged the regular aid of a legal team, already take this step and thus, this ruling is not as onerous as it may seem at first glance.

Specifically, the case involves a twenty-nine second home video of Plaintiff Stephanie Lenz’s two children dancing to Prince’s “Let’s Go Crazy”.  Plaintiff had initially posted the video to YouTube, but it was taken down after YouTube received a takedown notification from the legal department at Universal.  Although Universal’s legal department monitored YouTube daily and assessed what videos should be taken down based on specified guidelines, the key inquiry is whether or not Universal considered fair use, which, now after the Ninth’s Circuit affirmed the denial of the parties’ cross-motions for summary judgment, is a question for the jury.

Importantly, the Ninth Circuit held that Universal, along with all other copyright holders, must consider fair use prior to issuing a takedown notification, as 17 U.S.C. §  512(c)(3)(A)(v) requires a takedown notification to include a “statement that the complaining party has a good faith belief that the use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law”, and the Court held that fair use is a use authorized by law through 17 U.S.C § 107.  Yet, the Court explicitly noted that a copyright holder need only form a subjective good faith belief that the use is not fair and that the consideration of fair use need not be “searching or intensive”.   A copyright holder only faces liability for nominal damages if it makes a knowing misrepresentation in its takedown notification that it has a good faith belief that the use is not fair or otherwise authorized by the law.

Further, the Court noted that the consideration of fair use through automated computer programs, coupled with the review of any remaining information by some sort of legal department like that employed by Universal, may be acceptable.  Thus, although copyright holders are faced with an overabundance of content to sift through, automated computer systems may help to ease this burden.  As the Court aptly notes, Section §512(c) of the DMCA already requires copyright owners to initially review potentially infringing content prior to sending a takedown notice and as such, the Court’s decision serves to clarify that the fair use inquiry must be part of that initial review.

UPDATE: On Tuesday, October 20, 2015, both parties filed petitions for rehearing.  On the one hand, Plaintiff/Appellee Stephanie Lenz has petitioned the Ninth Circuit to address the question of “Whether Congress, in drafting the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”), intended to grant private parties the practical power to censor speech based on an unreasonable belief that a copyright has been infringed, as long as that belief is (like all beliefs) subjectively held” (emphasis added).  Meanwhile, on the other hand, Universal has petitioned for rehearing to address whether or not Lenz in fact suffered an injury-in-fact sufficient to give rise to jurisdictional standing.

Kate Spade’s Bright Colors Pay off In Spades

Kate Spade LLC (“Kate Spade”) recently weathered an attempt by Saturdays Surf LLC’s (“Saturdays Surf”) to enjoin Kate Spade’s use of the trademark “Kate Spade Saturday” in connection with clothing.  Kate Spade filed a declaratory judgment action against Saturdays Surf seeking a judgment that Kate Spade’s “Kate Spade Saturday” trademark did not infringe Saturdays Surf’s “Saturdays Surf NYC” trademark.

The court found in favor of Kate Spade for several reasons.  First, each party’s clothing was marketed to a different demographic, men v. women, and 40% of Kate Spade’s “Kate Spade Saturday” line consisted of dresses.  The majority of Saturdays Surf’s clothing were designed for men.  The court analyzed the clothing items and concluded that the bright palates used by Kate Spade would unlikely be confused with the neutral shades used by Saturdays Surf.

While the court recognized similarities in the marks, namely, the term “Saturday”, the court ultimately felt that the dissimilarities, such as the use of the famous house mark KATE SPADE, outweighed the similarities of the two marks.  The court rejected Saturdays Surf’s claim of reverse confusion because the KATE SPADE brand is associated with women’s fashion and accessories, not men’s.

Even though the court determined the “Saturday” term used in both marks was suggestive, the crowded field of users diminished Saturdays Surfs’ ability to assert exclusive right in the term. Also, the court found that consumers of each party’s fashionable, high quality/high priced clothing were sophisticated consumers, not making impulse purchases.

The court ultimately denied Saturdays Surf’s injunction finding Saturday Surf failed to show a likelihood of confusion because of the difference in apparel offered by both parties and the relative weakness of the term “Saturday” as used in the party’s marks.

Jersey Boys’ Use of the Ed Sullivan Clip Qualifies as a Fair Use

Plaintiff SOFA Entertainment, owner of the licensing rights to the “Ed Sullivan Show”, was attending the Broadway show Jersey Boys when he noticed that a seven second clip from the “Ed Sullivan Show” appeared in the show.  The Jersey Boys show is loosely based on the Four Seasons band and the lives of its members.  The seven second clip featured the Four Seasons band getting ready for their “Ed Sullivan Show” performance.  After the show ended, plaintiff filed a copyright infringement suit against the Jersey Boys producers.

The Ninth Circuit disagreed with plaintiff and found that the clip in the Jersey Boys show constituted a fair use.  First, the purpose and character of the use was “transformative” because it added something new to the clip’s original meaning or message.  The clip was not shown for entertainment value.  Instead, it was shown to provide a reference point in rock and roll history. Continue reading

Veoh Wins Again…

Another battle in the war between file-sharing websites and the the music and film studios. Veoh Networks, owner and operator of the ‘Veoh’ media-hosting website, has won its latest battle against Universal Music Group.  Universal had filed suit for copyright infringement claiming that the Veoh website – on which users can post video and music clips – contained infringing material, and that Veoh had stored the infringing clips.  Veoh denied the claims arguing that it had complied with the requirements for ‘safe harbor’ protection given to internet providers and websites under the Digital Millennium Copyright Act (DMCA) because it acted quickly to remove material when an allegation of infringement was received, and that it did not have ‘actual knowledge’ that the materials in question were infringing.

Finding that Veoh Networks was entitled to the protection afforded by the ‘safe harbor’ provisions of the Digital Millennium Copyright Act (DMCA), the Ninth Circuit Court of Appeals sided with Veoh.  Judge Raymond C. Fisher for the Court stated that “merely hosting a category of copyrightable content, such as music videos, with the general knowledge that one’s services could be used to share infringing material, is insufficient” to establish liability for copyright infringement on the part of the website.  As such, Veoh did not have the “substantial influence on the activities of users” for a finding of liability.

The case is UMG Recordings Inc. v. Veoh Networks Inc., 10- 0955902, U.S. Court of Appeals for the Ninth Circuit, and can be viewed at: http://cdn.ca9.uscourts.gov/datastore/opinions/2013/03/14/09-55902.pdf

 

Anchors Away! No More Safe Harbors for Pre-1972 Sound Recordings!

Ahoy! Calling owners of copyrights in sound recordings fixed prior to February 15, 1972! According to the New York Supreme Court, Appellate Division in its April 23, 2013 decision (UMG Recordings, Inc. v. Escape Media Group, Inc.), it’s going to be hard for infringers of these works to stay Afloat using the DMCA Safe Harbor provisions.

Grooveshark to Apple and Google: We're legal, licensed, and ready to disrupt, a photo by joe.ross on Flickr,  used under a Creative Commons Attribution-ShareAlike license http://creativecommons.org/licenses/by-sa/2.0/In 2012, Universal Music Group (UMG) sued Escape Media Group, Inc. (parent company of Grooveshark, an Internet-based music streaming service), for the common law copyright infringement of UMG’s pre-1972 sound recordings which had been uploaded to Grooveshark. Escape’s defense was that as an ISP, it is shielded from liability for infringement by the section 512(c) of the DMCA (safe harbors). UMG’s primary argument was that the DMCA’s safe harbors didn’t apply to pre-1972 sound recordings, because those recordings are not covered by the Copyright Act (which was amended in 1971 to include sound recordings fixed before February 15, 1972).

On July 12, 2012, New York State Supreme Court Judge Barbara R. Kapnick took a bite out of UMG’s argument, relying on Capitol Records, Inc. v. MP3tunes, LLC, 821 F. Supp. 2d 627 (SDNY 2011), in which the Federal District Court found the DMCA did in fact embrace sound recordings fixed before February 15, 1972, stating that “there is no indication in the text of the DMCA that Congress intended to limit the reach of the safe harbors provided by the statute to just post–1972 recordings.”

Refusing to Walk the Plank, UMG appealed and, as of Tuesday, it appears that the Appellate Division has Jumped Ship, Capsizing the decision of the trial court. In its opinion, the court accepted UMG’s argument that if the DMCA were to apply as Escape argued, it would directly violate section 301 (C) of the Copyright Act, which expressly extended federal copyright protection only to recordings fixed AFTER February 15, 1972 – “[w]ith respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this Title until 2067″. If the DMCA were to apply to a pre-1972 sound recording, the owner would no longer be able to sue under the common law or statutes of any State; the only remedy available would be service of a takedown notice on the infringer – i.e. a LIMITATION on the owner’s remedies.

For the court to find in favor of Escape, it would have to conclude that Congress intended to modify section 301(c) when it enacted the DMCA. However, as the court stated, statutes are not deemed to repeal earlier ones without express words of repeal, and the DMCA could not be held to repeal section 301(c) of the Copyright Act, especially in light of the fact that the statutes can reasonably co-exist. Congress explicitly separated the universe of sound recordings into two categories – one for works “fixed” after February 15, 1972, to which it granted federal copyright protection, and one for those fixed before that date, to which it did not. Accordingly, absent anything in the Copyright Act itself, or its legislative history, it was clear to the court that Congress meant to apply the DMCA to the former category, but not to the latter.

Reading the Copyright Act as a whole, as is required, the court interpreted the DMCA’s references to “copyright” and “copyright infringer” to specifically refer to those works that are covered by the DMCA – i.e. post-1972 works.

In rejecting Escape’s argument that the very purpose of the DMCA – to promote efficiency in Internet operations – will be thwarted if it is deemed not to apply to pre-1972 recordings because Grooveshark and similar ISPs would be forced to proactively research the history of every work before permitting it to be posted, the court pointed out that there are, in fact, two explicit Congressional priorities in the statutory language:

To promote the existence of Intellectual Property on the Internet; and
To insulate pre-1972 sounds recordings from federal regulation.
In the final line of the decision, the court Baited Congress to clarify its intent: “[u]nder such circumstances, it would be far more appropriate for Congress, if necessary, to amend the DMCA to clarify its intent, than for this Court to do so by fiat”.

Looks like it’s a Pirates’ Life for Escape… New York State has thrown a Line out to all pre-1972 copyright holders, and the implications may really keep common law copyright infringement claims Flooding in. But the real question is whether it will be All Hands on Deck in Congress to re-Navigate the murky wording of the DMCA.

In other “Maritime” news… Fleet week in New York has been cancelled this year. It appears that this concrete jungle is really Weighing Anchor and washing anything left in the Harbors out to Sea.

SEEING RED

The Second Circuit’s March 8, 2013 decision has swank shoe designer Christian Louboutin (and likely the rest of us) seeing RED.

Back in September, the Second Circuit “kicked” out the District Court’s ruling that a single color could never serve as a trademark in the fashion industry, holding that Louboutin’s red lacquered outsole has acquired limited “secondary meaning”, but still stopped the litigious Louboutin in his tracks, issuing a Mandate providing:

“Pursuant to 15 U.S.C. § 1119 the Director of the United States Patent and Trade [sic] Office shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.”

See September 5, 2012 Opinion HERE

In accordance with the Second Circuit’s mandate, the USPTO proposed the following amended description of the mark for U.S. Trademark Reg. No. 3,361,597:

“The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’). The dotted lined are not part of the mark but are intended only to show placement of the mark.”

Seeking to “heel his soles”, Christian Louboutin asked the USPTO to adopt alternative language, insisting that the Court of Appeals intended to only exclude red monochrome shoes. Mr. Louboutin proposed the following amendment:

“The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lined are not part of the mark but are intended only to show placement of the mark.”

The USPTO refused to “step on the court’s toes”, indicating that the USPTO does not have discretion to deviate from the terms of a court’s §1119 mandate.

Thereafter, Louboutin “tap, tap, tapped” his way back into court requesting that the Second Circuit modify its mandate. The court “booted” Louboutin’s request, citing authority which would require the court to recall the mandate only under “exceptional circumstances”. The court concluded that, “Louboutin has made no showing that any of the factors favor recall and modification of the mandate.”

See March 8, 2013 Opinion HERE

Redefines the term 'high heels' [009 of 365], a photo by KaiChanVong on Flickr,  used under a Creative Commons Attribution-ShareAlike license httpcreativecommons.orglicensesby-sa2.0

This doesn’t mean that the red sole is going to become “as common as an old shoe” but it does mean that we may see an influx of red-soled red shoes given that “use of red lacquer on the outsole of a red shoe of the same color is not a use” of Louboutin’s mark. It remains to be seen if Louboutin will take this “in stride” or attempt to broaden its rights to cover a red sole that contrasts with the color of “any visible portions of the shoe”.

Tiffany…Generic?

Recently Tiffany filed a complaint against Costco in the United States District Court for the Southern District of New York for trademark infringement and related claims. According to the complaint, for many years Costco has sold diamond rings, describing them as “Tiffany” rings. However, Tiffany never authorized Costco to sell its goods and Costco never actually sold Tiffany products. This, Tiffany argues, has resulted in “hundreds if not thousands of people who mistakenly believe they purchased and own a Tiffany engagement ring from Costco.” Rather than throwing in the towel, Costco has counterclaimed, arguing that “Tiffany” is generic for a style or type of ring setting.

This could get interesting.

Tiffany & Company and Tiffany (NJ) LLC v. Costco WholesaleCorp, U.S. District Court, Southern District of New York, 13-1041 Continue reading

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