Why Are We Paying for Public Domain Photos?

You may have recently heard of an interesting lawsuit filed by photographer Carol Highsmith who has sued Getty Images for $1 billion in damages. The suit stems from a letter sent to Highsmith demanding that she pay for the use of a particular photograph uploaded to her personal web site. One problem: Highsmith herself had taken the photograph. Understandably angry over being asked to pay for using a photograph that she herself had taken, Highsmith did a little investigating and discovered that the photo was one of thousands she took and allowed the public to use for free. As it turns out, Getty charges consumers for the use of these photographs Highsmith has dedicated for free public use and also charges consumers for the use of thousands more photos in the public domain due to the expiration of the copyright term of protection, the failure of the owner to renew a copyright, or due to the photo’s status as a government work (which are unprotected as a matter of statute).
The story resonated with me because I had discovered in unrelated research that Getty was routinely charging consumers $120 dollars a year for web site use of public domain photos. For example, you can download a nice unprotected picture of author Rudyard Kipling on the Wikimedia Commons for free and do whatever you want with it, or you can go to the Getty web site and fork over $120 per year for using exactly the same picture.
Now, I’m firmly of the opinion that it’s immoral for Getty to charge so much, but is it illegal? Well, Getty does not claim to own the copyright in the public domain photos it sells, so that makes fraud harder to argue, although it nowhere reveals that its goods can be obtained for free elsewhere. It claims to be making photos easier to find, and it will, apparently, promise to defend you if you are sued for using an image you obtain from Getty. Although it’s hard to see why its efforts are worth $120, we don’t have a general legal doctrine that prevents sellers from over charging. And there’s certainly no rule against charging consumers for access to public domain goods. I just recently paid $1.99 for 8 public domain Alexandre Dumas novels digitized for my Kindle. I could have gotten many of them for free at Project Gutenberg, but it was so much easier just deal with Amazon.
My book experience is illustrative. First, it shows that there should be no general rule against charging for public domain works. Many who repackage and provide access are doing a public service. One’s hesitancy about endorsing Getty’s practice is probably driven by its fees in relation to the value added by its services. A second point is more subtle. Most people, even if they are not copyright lawyers, know that The Three Musketeers is in the public domain. They are unlikely to overpay for a new edition. This is not true with photographs, where massive problems exist in trying to determine public domain status.
Imagine you see a photo from a 1940 issue of Life magazine that you’d like post on your web site. Is it protected by copyright or is it in the public domain? First, the date of publication of the photo will probably not be listed, making it difficult for you to determine whether the copyright is expired. Second, was the copyright in the photo registered or renewed? Well, my research shows that from 1924-41, only 2037 photographs were properly registered and renewed. Since the Corbis web site offers 64,578 photos for license that were taken between 1924-41, it would seem that only a tiny percentage of photos from that era still protected. But, of course, you want to be sure, because willful infringement of a single registered copyright can carry with it damages of up to $100,000.
Unfortunately, you’ve got a massive problem making sure. First, renewal and registration records for works from this era are not on-line, so you’ll have to pay the Copyright Office $200 per hour to search the records. And guess what, that search might take a while because the actual photo it is searching for is not sitting in the Copyright Office filing system. The records are by title, so if the photo from Life you want is of Franklin Roosevelt, good luck guessing whether a work recorded in the Copyright Office under the title “Franklin Roosevelt” is really the one that you want to copy.
Of course, this state of affairs is shameful and maybe even unconstitutional. How can you justify a property rights recordation system where the public cannot find out the scope of rights? Worst of all, it creates the opportunity for Getty to exploit a public that faces serious hurdles in informing and protecting itself.

Interview About Led Zepplin Case

Paul Heald is the Richard W. and Marie L. Corman Professor of Law at the University of Illinois and an expert in patent, copyright and international intellectual property law. He spoke withNews Bureau business and law editor Phil Ciciora about copyright infringement lawsuits in popular music, including a recent lawsuit brought by the estate of the late Randy Wolfe, aka Spirit guitarist “Randy California,” who is suing Led Zeppelin’s Jimmy Page and Robert Plant for allegedly stealing the intro of “Stairway to Heaven” from Spirit’s “Taurus.” Why has there been a proliferation of lawsuits alleging copyright infringement of popular music? I held a roundtable with musicians and musicologists in England last summer to talk about this issue. What struck me is that every single musician I met thinks every single one of these music copyright infringement cases is wrong. Which is counterintuitive, because the only reason we have music copyright is to protect composers and arrangers. The whole idea is to provide an incentive for them to write music, but they think the law generates wrong results. What musicians say is that they borrow from each other all the time. Musicians have been working and composing together for hundreds of years and have really well-established norms of what you can and can’t take. And those norms don’t match up with the law at all. So the law is really out of step with music-borrowing norms, and this scares musicians. Why is there this disconnect between music composition and the law? It has to do with the jury instructions given in music copyright infringement cases. The test for infringement is derived from a Cole Porter case from 1947, and it has to do with the defendant wrongfully appropriating what is “pleasing to the ears of lay listeners.” There are a couple of real problems with that. For starters, it gives no guidance as to what is a “wrongful appropriation” – how do we determine what is “wrong,” and how much is too much? But the biggest problem is this focus on what is pleasing to the ears of lay listeners. Who cares what lay listeners hear? Music copyright isn’t about protecting the audience. It’s about protecting composers. It gives one composer the right to sue another composer. What an audience hears is irrelevant and affirmatively misleading because lay listeners hear all sorts of similarities in music. Those similarities can be because it’s in the same genre, has the same rhythm, or both songs share a common public domain root. Most pop songs have virtually the same chord progressions and, thus, all sound alike. So, sure, there’s borrowing, but it’s the exact kind of borrowing that’s been going on for a hundred years, and music works only because musicians can do this kind of borrowing. So this bizarre focus on the audience prevents judges from listening to musicians and deciding cases the way musicians would like them decided. It’s no coincidence that the “Blurred Lines” case was brought by the estate of Marvin Gaye, who would have never sued Robin Thicke in a million years because Thicke did exactly what Marvin Gaye did many times before. What is your take on the “Stairway to Heaven” case? Through my lay-listener ears, it’s not even a close case for the estate of Randy California, and it looks more like a cash grab by the estate than anything else. All of these lawsuits revolve around the infringement of the written musical composition. It doesn’t matter how Randy California played “Taurus.” The only way you can infringe on a sound recording is to make a counterfeit copy. So the jury should never be allowed to hear the sound recording of “Taurus.” The only protectable work in the lawsuit is the sheet music that Randy California wrote. So what we’re analyzing is what Led Zeppelin did against the Spirit sheet music. Ironically, other research indicates that juries can be misled by playing two sound recordings side-by-side. When a computer program played two songs, a mock jury found infringement in less than 30 percent of the cases. But then the researcher had jurors listen to performances of the exact same notes but played in a different genre or style. Say, reggae or country style. The infringement findings went up to 70 percent. So juries can be hoodwinked by similarities in unprotectable musical elements like style, which is why courts should be confining their focus to the similarities that are on the page. Will this litigation have a chilling effect on musicians? To the extent that it raises anxiety among musicians about borrowing, yes. It may lead to musicians documenting their musical process more than they would otherwise, which adds time and money. So it’s either going to chill or add costs to composing. Just in the same way that firms jump through hoops to prove that their software programmers aren’t copying anyone else’s code. And it’s not a defense for a musician to say, “I’m observing the normal borrowing norms of my trade.” Which is weird, because that’s the defense in almost every kind of damage action. If your doctor operates on you and you die on the table, he’s not automatically liable. He’s only liable if he violated the professional norms for surgeons. Same thing with architects, engineers and hairdressers. It’s almost always a complete defense to behave reasonably and observe the rules that govern your professions. Except for composers. Composers can do all that and still be held liable. It’s very strange to me, and it’s a historical anomaly. What changes would you make? The American Society of Composers, Authors and Publishers should include in their standard membership agreement that musicians arbitrate, not litigate, infringement cases before a panel of musicologists or professional musicians. There’s no musician who wouldn’t be thrilled to have a panel of musicians judging their case rather than a jury. It’s easier to make reforms in that direction rather than trying to have the courts do anything.

Monkey Selfies!

Well, if you’ve seen them on Facebook or some other fringe media outlet, you now know that monkey selfies are all the rage.  That’s right, British photographer David Slater handed a camera to a madly grinning Macaque in Indonesia and like any other self-absorbed Millennial it immediately took a series of selfies.  Such compelling pictures, in fact, that they’ve been copied all around the world.  Taking umbrage at this exploitation of the Macaque, the organization People for the Ethical Treatment of Animals has filed a lawsuit in (where else!), San Francisco, demanding that all proceeds from the distribution of the images be collected for the benefit of the monkey.  PETA claims that the monkey is the author and owner of the photo under U.S. copyright law.

Now, Congress does have the power to pass laws for the benefit of non-humans, but the judge in a preliminary ruling has held that nothing in the Copyright Act suggests that monkeys can be copyright owners.  And the Copyright Office, in a recent regulation, agrees.  Well . . . fair enough, I suppose, but what about the claim of Slater that he, the owner and lender of the camera, is entitled to a copyright in the photos?

Here’s where things get interesting, and we have to travel back to the very first photograph case considered by the Supreme Court.  In the 1880’s, Napoleon Sarony staged a famous photo of dramatist and mega-wit Oscar Wilde.  Shortly thereafter, he was ripped off by a lithographer who copied the photo.  The infringer claimed that Sarony’s camera had merely captured a pre-existing reality—Wilde, with a pensive expression, sitting down with a book in his hand.  The photo, therefore, was unoriginal and could not be protected.  This was an argument against the protectability of photography in general, and the Court rejected it, noting the original choices made by Sarony in setting the lush background scene, posing Wilde, and lighting the set, it found the photo original and protected.

Interestingly, the Court refused to hold that all photos are necessarily protected.  The “ordinary” production of a photo might not pass the originality test.

So, we must consider whether David Slater made significant original choices in staging the monkey selfie.  The facts surrounding the now-famous photo are a bit slim, but if he merely handed his camera over to the Macaque and encouraged him to go at it, he probably cannot claim to have made an original contribution.  I don’t think that we can predict future courts would adopt a total copyright ban on animal camera handlers, however.  One could imagine a moviemaker creating a highly original set, purposefully lighting it, and then strapping a carefully-calibrated camera on the back of a dog or cat.  That might be enough original input from the movie maker to secure him or her a copyright in the resulting product.

Interestingly, Slater claims that his English copyright has already been secured, and this rings true, given that the UK originality requirement is so low as to be merely a ban on plagiarism.  The telephone white pages, for example, are sufficiently original to be protected by UK copyright, while here the Supreme Court has declared they are not.

I’ll conclude by noting that differences in the protection of fact-based works like the phone book between here and Europe are non-trivial.  Here, facts are unprotected.  A fact is not original and anyone can appropriate it.  The EU has special protection for databases that can extend to facts.    In the US, for example, I can scour the web pages of local newspapers and establish a useful movie times web site because facts are not original.  If I do the same in the EU, I’m a law breaker.

Hmmm . . . I think we can guess now why the Macaque was grinning so crazily.

100 Shades of Gray Market Goods

Have you ever thought hard about the billions of dollars of consumer goods that are imported into the United States every year?  A lot of factors effect that flow:  the relative strength of the US dollar, the level of tariffs imposed by the US government, the strictness of border control measures that regulate the safety of imports, and the enforcement of security regulations all play a role.  One factor seldom considered, however, is the level of intellectual property protection that we afford the owners of US trademark, copyrights, and patents.  In other words, when can a US rights holder stand at the border and keep out goods?

The answer for counterfeit goods is easy:  Any registered owner can keep out bogus goods.  But what about legitimate goods originally manufactured overseas with the permission of the American owner, what we call gray market goods?  Well, life gets quickly complicated.

Let’s start with copyright goods, like books.  Two years ago the Supreme Court made this simple in a case involving an enterprising student in Florida who bought up cheap American textbooks in Thailand, imported them into the US, and sold them for much less than the US copyright owner.  No problem, said the Court in Kirtsaeng v. Wiley.  As long as the publisher consented to the Asian press run, the books can be imported here.  Justice Breyer’s opinion is telling—he worries about the 100’s of billions of dollars worth of goods imported into the United States that contain copyrighted software (think of cars) or that bear some sort of protected artwork in their logo.  Do we want all those goods kept out?

With trademarked goods (which is pretty much all consumer goods), things get a little weird.  If a US owner merely licenses the overseas production of the goods, then he or she can keep them from being imported.  However, if the US owner and the overseas manufacturer have some sort of formal corporate relationship (imagine the overseas manufacturer is a subsidiary or affiliate of the US firm or they are both controlled by the same corporate parent), then the goods get in over the objection of the US rights holder.  Sound like a trivial exception?  Well, such goods account for more than $50 billion annually in imports.

The story with patents is significantly more twisted, and the US Supreme Court has recently been asked to straighten things out.  In 2005, the Federal Circuit Court of Appeals held that US patent owners could keep out all gray market patented goods made overseas, even if they were legitimately made with the permission of the US patent owner.  And it reaffirmed the holding two months ago.  Just the opposite of the new rule for copyright goods.  Imagine a Japanese car loaded with dozens or more patented parts.  The case gives each owner of each patent the right to prevent importation of the car.  Remember this is precisely the nightmare scenario that led Justice Breyer to deny such a right to copyright owners!

To make matters worse, or at least more inexplicable and annoying, the 2005 decision never discussed or cited the only relevant precedent from the entire 20^th Century that found patent owners had no statutory right to keep out legitimate goods.  Why was their only one appellate case on this point in the 20^th century, you ask?  Well, because everyone knew what the rule was!  If a patent owner wanted to keep goods out, then he or she would have to write contracts with foreign manufacturers forbidding import into the US.

Now, you might have noticed that we still have plenty of Japanese cars puttering about.  Japanese firms have good attorneys, and they make patentees promise to allow importation or they won’t purchase their technology.  But not all firms are so prescient, and we can only hope that the Supreme Court hears the newly filed appeal and returns us to the former rule which prevents importers from being surprised at the border by a patentee of a tiny component vigorously waiving a patent registration.

Trump & Trademarks

The question is not whether Donald Trump can make America great again, but whether he can legitimately register MAKE AMERICA GREAT AGAIN with the U.S. Trademark Office.  And, oh boy, does that question lead to a lot of misinformation from the media.

First, let’s distinguish between a clever phrase and a trademark.  By definition, a trademark identifies the source of a good or service to a consumer.  When you hear the two delicious words, Papa Del’s, you may think of a pizza restaurant in Champaign, rather than some fatherly Italian fellow who might live down the street.  And if enough of you think about a specific place for pizza when you hear the two words, then they function as a trademark, and the restaurant’s owner will have the power under federal law to prevent you from selecting the same name for your restaurant in Central Illinois.  You see, Papa Del’s has what trademark experts call “secondary meaning” in this market, which means that when most people hear the words, they associate them with the restaurant.

Can someone else open a Papa Del’s pizzeria in Seattle?  Well, if no one there has heard of the place there, then probably so.  But there may be a lot of Illini graduates in the Northwest and that combined with the nationwide shipping of the pizza in its frozen form might have established secondary meaning even in Seattle.

The important thing to remember is that trademark rights only exist when the symbol actually identifies the source of goods or services to the public.  And the rights only extend as far as that recognition.  Yes, I can sell Papa Del’s tear gas with no fear of violating trademark law.

This helps us understand why clever phrases standing alone are not protected by trademark law.  For example, after Pat Riley won his third consecutive title with the Lakers, he is said to have coined the phrase, “Threepeat.”  That’s an awfully nice bit of wordsmithing, but no one associates that phrase with a product or service being offered in commerce.  When you hear the word do you think of a restaurant or canister of propone?  A barber shop or shoelaces?  No.  You think of Riley or maybe what sports teams do when they win three times in a row.  That’s not to say that Riley could not open a propane business and call it “Threepeat Grilling Supply.”  He could build up consumer associations over time and merit protection in this narrow market.  Maybe he should give it a shot . . .

This, of course, brings us to t-shirts and back to Trump.  If we see “Threepeat” or “Make America Great Again,” do we see the name of the company who made the t-shirt?  Or do we see a clever phrase or generic patriotic plea?  It seems to me that if we want to know who made the t-shirt, we’ll flip up the collar and read Munsingwear, Fruit of the Loom, or Under Armor.

Clever phrases on apparel seldom function as trademarks (although the trademark will frequently register unenforceable works office in order collect fees).  Some examples are obvious.  Through millions of dollars of advertising, Nike associated “Just Do It” with swoosh in consumers’ minds with its products.  When it appears on a t-shirt made by Nike, consumers are likely to think it comes from Nike

But do consumers expect t-shirts and hats bearing generic slogans like Make America Great Again, a common political turn of phrase most recently popularized by Ronald Regan, to originate with Donald Trump?  They may associate the phrase with the candidate, just as we might associate Threepeat with Pat Riley, but that’s not the same as perceiving the phrase to be a source identifier of goods.

In the interest of full disclosure, I must reveal that Trump has succeeded in obtaining a registration for Make America Great Again for “political action committee and campaign services.”  Maybe consumers draw the requisite association there, but another trademark doctrine comes to our rescue:  Only confusing uses of trademarks are prohibited, so Hilary Clinton can claim to make America Great too, as long as no one confuses her with The Donald.

My Judge . . .

Although I normally comment on intellectual property issues, the movie Selma has recently jolted my musings in the direction of Civil Rights Law.  You see, after finishing law school, I had the great honor and privilege of clerking for the Honorable Frank M. Johnson, Jr., the judge played by Martin Sheen in the movie who lifted the injunction and authorized the great Selma march.  A fellow judge in Johnson’s Montgomery Courthouse summoned him to his chambers to get a better view the event and beamed at him, “Frank, this is your parade… you might has well have a good seat to watch!”

The Selma episode was neither the first, nor the last, highlight of a spectacular career which in his first months on the bench saw he him cast the deciding vote in Browder v. Gayle, the Montgomery Bus Boycott case that gave Rosa Parks her seat at the front of the bus.

In its full page New York Times obituary in July of 1999 (King Hussein of Jordan only got a half-page on the same day), Robert McFadden wrote that “Judge Johnson loomed as a towering figure — an uncompromising defender of civil liberties who came to be known as the Federal judiciary’s most influential, innovative and controversial trial jurist.”

He desegregated the Alabama highway patrol and the Alabama teachers system.  He ordered the desegregation of parks, swimming pools and many other public accommodations  He also desegregated Alabama juries in terms of both race and gender (women were not allowed to serve as jurors until his ruling in 1966).  He sent Klan members to jail under federal civil rights law for the murder of Viola Liuzzo, a mother of five who was gunned down while returning from the Selma march.  A state jury had earlier set the killers free.

No wonder he was featured on the cover of Time magazine in 1967 with an article entitled, “The real governor of Alabama.”  No wonder he once received a letter addressed simply to “that judge in Alabama.”

And no wonder he was protected 24 hours a day by federal marshals for over a decade, which wasn’t enough to prevent the firebombing of his mother’s house.

But it was in the area of remedies where he was most innovative and most controversial.  One of the cases he was most proud of addressed the medieval-like conditions in Alabama’s mental hospitals, described by a Montgomery, Alabama, newspaper as no better than Nazi concentration camps.  In Wyatt v. Stickney, the first case to find that patients in mental hospitals had any constitutional rights at all, Judge Johnson determined that as a minimum standard patients were entitled to a humane environment (e.g. adequate food and a bed) and qualified staff in sufficient numbers (e.g. more than the 3 doctors and 1 psychologist for over 5200 inmates).

At first, he simply found a constitutional violation and asked Alabama to remedy it.  Nothing was done.  When he threatened his contempt power, he learned that many Alabama officials were appalled and desperate to help, but they lacked funds due to a cowardly legislature’s refusals to raise taxes.  Eventually, the Judge had no choice but to appoint a board of Alabama professionals to run the hospitals. They spent money and forced the hand of the legislature who could blame that Goddamn Judge in Montgomery for hiking their taxes.  Democracy is strange sometimes, isn’t it?  His reluctant takeover of the mental health system (he did the same for the prison system on similar grounds), forced reform that right-thinking people in Alabama could not achieve on their own.  He was not an activist—he always gave the state the chance to comply with the clear dictates of the Constitution before he reluctantly ran the state’s business from his courtroom.

The civil rights movement, of course, owes its power to the foot marchers on the front line, but without a judiciary willing to enforce rights, non-violent change is hard to bring about.  Just consider the would-be Ghandi’s and King’s of Stalin’s Russia or Mao’s China who were quietly liquidated before we ever heard their voices.

Trans-Pacific Partnership of Copyright Doom

Right now, the Trans-Pacific Partnership trade negotiations and the renewal of the president’s fast track trade authority are squarely in the news.  As a free trader (with some reservations), I’m generally happy to give the President freedom to negotiate with confidence.  NAFTA, for example, has had an inarguably significantly positive effect on the GDP of all three trading partners.  One can, of course, point to massive wealth inequalities within the U.S. and Mexico, but that’s the fault of those two governments failure to adequately tax those who profit the most from economic integration and their failure to adequately police environmental and labor standards.  If you don’t like what you see, don’t blame NAFTA, blame Congress for not assuring that the growing pie is sensibly shared.  That said, it is in the best interest of our own economy (and social justice) to build environmental and labor standards into trade agreements (the reservation I noted a moment ago).

So what does the Trans Pacific Partnership have to do with copyright law?  Well, by all accounts, we are trying to impose our inefficient and broken copyright regime on a long list of potential Pacific trading partners.  I say “by all accounts,” because the negotiations are being conducted in secret with no input from the public or NGO’s.  The US government is, apparently, trying to get our friends to make the same colossal error Congress made in 1998 when it froze the growth of the public domain.

In 1998, at the urging of Disney and other large copyright owners, Congress retroactively extended the term of copyright for 20 years to existing works.  Nothing has fallen out of copyright since then and recent research shows just how detrimental the term extension has been.  A recent study of the availability of new books on Amazon.com shows just how dire the situation has become.  A random sample of 2000 books on Amazon shows, not surprisingly, that 25% of them were originally published between 2000 and 2010.  Ten percent were originally published between 1990 and the year 2000.  Before 1990, the drop-off in availability is steep.  For example, only about 3% of the sample are books originally published in the 1980’s.

The research, however, shows a dramatic increase in availability for books originally published before 1923, the magic date before which all works are in the public domain.  Ten percent of the sample are from 1900 to 1910 and another 10 percent from 1890-1900.  In other words, we have access to three times as many books from the 1890’s than the 1950’s, and that’s not accounting for the fact that way, way fewer books were published the 1890’s!  Why this distortion in the market?  Well, the vast majority of post-1923 books have fallen out of print and are no longer being made available by their copyright owners.  Until their terms expire, we can’t get them on Amazon.  An Atlantic Monthly article summarized the Amazon research:  The Hole in our Collective Memory:  How Copyright Made Mid-Century Books vanish.

And, not surprisingly, the story gets worse.  Not only do we have access to fewer books, other studies demonstrate the significant cost increase associated with copyright (just compare the prices of the public domain and copyrighted books in your Penguin Classics collection).

Sadly, to ensure the steady flow of consumer dollars to Disney and members of ASCAP, the RIAA and the MPAA, the Obama administration is working its hardest to require our trading partners to make the same mistake we did, to retroactively extend copyright terms and freeze the public domain.  And worst of all, these provisions in the proposed TPP are not even in the spirit of free trade, just greed at the public’s expense.

Too Gaye or Too Thicke?

Do you ever watch the singing contest show The Voice?  One of its stars, singer-songwriter and producer, Pharell Williams has been recently been found liable ((along with co-writer Robin Thicke), for infringing the copyright in the song Got to Give it Up owned by the estate of the late great singer Marvin Gaye.  The jury awarded a record $7.3 million judgment against the Williams and Thicke mega hit Blurred Lines.   If you’re the judgmental type, you might conclude that maybe there’s something wrong with the affable and intelligent Williams.  My guess, however, is that something  is wrong with music copyright law instead.

To understand the problem, we need to recognize that sound recordings embody two separate copyrights:  one in the underlying sheet music of the song and one in the performance as recorded.   Williams and Thicke were only accused of violating the copyright in the sheet music as written by Marvin Gaye, the copyright statutes says that one can only violate the separate copyright in a sound recording by being a pirate, by ripping yourself free copies of the recording.  If instead you hire a band and make your own exact sound-alike recording, then you are not an infringer of the sound recording you imitate, only the underlying music written by the composer.

This, of course, means that just because two recorded songs sound alike does not mean that they are infringing.  The similarities may well come from voices of the singers, the style of instrumental and vocal performance, the choice of instrumentation and mood, and other things sometimes not designated in pop music scores like rhythm, percussion, and tempo.   In other words, Blurred Lines should only be infringing if Williams copied too much of what was on the page of Marvin Gaye’s published sheet music.

For this reason, the judge correctly refused to play for the jury a mash-up made by the plaintiffs showing how much the songs sounded alike when played over each other.  In this case, where Williams’ admitted to trying to capture the uncopyrightable “vibe” or “sound” or “mood” of Got to Give it Up, keeping the actual Marvin Gaye recording from the jury is critical.  However, the court did allow some sort of performance of the song—from the news reports we don’t know exactly what–and that performance may have unduly influenced the jury.  One commentator has concluded that:

“Blurred Lines” relied neither on that progression nor on any progression recognizable in “Got to Give it Up.” It didn’t share any of the same notes or lyrics. The jury’s ruling was based on a shared “sound” or “feel.”

A recent human subjects experiment by Jamie Lund captured the problem nicely.  She established several panels of mock juries that heard identical evidence from real music infringement cases.  The group that heard the most popular recording of the plaintiff’s song along with the defendant’s accused recording found infringement in 80% of the cases.  When mock juries where confronted with the exact same facts but with a computer program playing the plaintiff’s exact score and the defendant’s music side-by-side, the results were reversed.  The defendant won over 70% of the time.  In other words the, initial impulse of the court in the Williams case to deny the jury access to the Marvin Gaye recording was clearly correct.

Now, why does this matter?  Well, musicians have a clear sense about how much borrowing is too much.  All musicians borrow—all of them, especially some of our most famous names from history like Bach and Hayden.  They have long established community norms about what constitutes legitimate inspiration and how much constitutes wrongful misappropriation.  Music copyright law is about protecting them and their interests.  Shouldn’t we defer to the borrowing norms of the very community that the law is supposed to protect from borrowing?

In Farrell’s case, and cases like it, musicologists on both sides are asked to testify as to whether what was taken by the defendant was “too much of what was pleasing to the ears of a lay listener.”  That’s an invitation for experts to trick an unsophisticated jury to base liability on similarities that they hear.  Why not establish for the jury instead what is considered acceptable borrowing by musicians in a particular genre?

Left Shark!

Kind readers, I must address the most profound legal controversy to have yet emerged in this new century.  No, it’s not Ferguson or Marriage Equality, but rather a much more urgent issue:  Does Katy Perry have a protectable legal interest in the hilarious dancing sharks in her Super Bowl halftime show?  You may laugh, but the perky young singer has had her lawyers send a cease and desist letter to Fernando Sosa, the guy who made the 3-D printed shark and who is making his design plans available on-line.  That’s right!  If you have a 3D printer, you can make your own dancing left shark (unless Sosa caves in to Ms. Perry’s threats).

But Sosa may not have to remove his plans from circulation!  My good friend, NYU law professor Chris Sprigman has taken on Sosa as a client and is engaging in a battle of words with Perry’s lawyers.  The controversy has gone viral over the internet.

Underneath the bluster, however, is a very interesting legal issue:  To what extent are costumes protected by copyright law?  The generally accepted position is that clothing is not protected by copyright.  The copyright act contains a long list of what’s protected:  literary works; musical works; plays; choreographic works; pictorial, graphic, and sculptural works; movies; sound recordings; and architectural works.  Where would clothes fit?  Well, the best you can do is sculptural works—they are sort of thin 3D sculpture.  However, within that category, costume designers run into a problem called the “useful article” doctrine which disqualifies utilitarian sculptural works.  This is why your cool office chair, for example, is not protected as a sculptural work.  It is generally accepted that clothing is unprotected for the same reason.  Its design is intrinsic to its function.  Oddly, a perfect blend of form and function is by definition unprotectible under the useful article doctrine.

But, of course, this is copyright law, so we have to have another complicating twist.  It turns out that sometimes, we can conceptually separate the aesthetically pleasing part of a design from the useful part of a design.  Think of your chair.  Maybe it has an intricate scrolly pattern carved into its wooden back.  Can your brain separate the functional aspects of the chair from the aesthetic function of the carving?  Well, federal judges can, so the carving, but only the carving, is protected.  Same with the cool picture of Che Guevara on your t-shirt.  The shape of your shirt isn’t protected, but the embossed picture is.  This explains why a beautifully proportioned dress is unprotected while the deathshead on the back of your biker jacket might be.

Well, that brings us back to the dancing sharks at the Super Bowl.  Can we conceptually separate the aesthetic features of the plush shark from the useful ones?  The sharkiness from the costume-i-ness?

Well, browsing through the case law today, I found a little bit of help.  It turns out that many courts have accepted stuffed animals as protected soft sculptures.  If copyright protects a stuffed horse name “Spark Plug” and a chimp named “Zippy,” then why not a dancing shark named by acclamation of the internet as “Left Shark”?  [There seems little doubt that an originally crafted large stuffed shark sold by FAO Schwarz in its toy store would be protected by copyright, albeit thinly (anyone else could independently create their own shark—copyright only protects against actual copying after all).]  So, why should an otherwise protectable soft sculpture, like our large plush shark, be rendered unprotectible just because we hollow out the inside to fit a person and add some legs?  Imagine the process . . . can you, in your head, conceptually separate what’s aesthetically pleasing about the result from what’s useful?

This rapidly turns pretty esoteric, as you can see, but the Second Circuit Court of Appeals provided some help a couple years ago by focusing on the intent of the designer asking how many of the design choices were driven by functional considerations.  As far as Left Shark goes, it seems to me that only the legs are driven by the need to dance.  The rest of the design seems the result of creative choices.  Of course, this just means that I think the costume may be protectable.  Given that Ms. Perry doesn’t claim to have designed it, she’s still got trouble ahead.

Radio Stations No Longer “Happy Together”

Oh dear, another post about music, but this is just too juicy!

Sometimes a quiet little lawsuit opens up a can of worms that crawls all over the copyright landscape and starts sliming decades old assumptions about the law.  Such a wormy suit has surfaced in California and quickly burrowed over to New York much to the likely consternation of radio stations all over America.

Call this story:  “The Turtles Want to Get Paid.”  You remember The Turtles and their string of 1960’s hits terminating including the iconic “Happy Together.”  Well, they discovered a while ago that Sirius XM Radio was not paying them any royalties when their recordings were being played.  Sirius took the position that it was under no obligation to pay anyone any royalties for playing any pre-1972 recordings.  Why?  Well, according to federal copyright law, digital broadcasters only have to pay the holders of federal copyrights when they stream music, and by definition, owners of pre-1972 recordings aren’t owners of federal copyrights.  Huh?  Say what?  But the digital broadcasters are right.  Congress did not bother to protect sound recordings until 1972.  A 1973 album is protected by federal copyright law; a 1971 album is not.

Congress, however, did not forget the owners of existing recordings when it acted in 1972; it specifically preserved state law rights for those old recordings.  Most states, not surprisingly, before 1972 had laws preventing the piracy of recordings, and no one has questioned the illegality of making of making counterfeit copies of pre-1972 recordings under those laws.

But what about the performance right as opposed to the reproduction right?  Sirius XM was not making copies of Turtles songs, it was just playing them.  Did/does state copyright protection give owners the right to receive a royalty when their songs are performed by Sirius XM?  This turns out to be a tricky question.  Normally, the right to perform a work is one of the five statutory rights guaranteed to copyright owners, but Congress in 1972 denied that right to owners of federally copyright sound recordings.  Yeah, that’s right.  When your local broadcast radio station plays the latest hit by Pharell Williams, it only has to pay the composer of the song NOT the owner of the sound recording.  And that goes for all terrestrial radio stations in the U.S.  Oddly, and this is what prompted the law suit, Congress changed its mind about performance rights in the digital context a couple of years ago, and legislated that Sirius, Pandora, Spotify, etc., do have to pay both composers and owners of sound recordings, but it changed nothing for terrestrial radio stations like your local broadcaster.

Alright, let’s circle back to the case. The Turtles needed to find something in state law that would give them a performance right enforceable against Sirius XM, and they, suing under the legal name of “Flo & Eddie” have successfully convinced courts in the two most important media jurisdictions in the United States:  California and New York.  One court interpreting the California statute and another interpreting New York common law have held that Sirius XM must pay.

The first bit of fall-out is really quite minor.  Sirius, Pandora, and Spotify have to start paying, but they are used to doing that with post-1972 recordings and a collecting rights organization called Sound Exchange will make it all quite tidy.  They will adjust and we shouldn’t perceive much of a change.  Maybe more ads.

The second bit of fall-out could deprive us from hearing some of our favorite pre-1972 artists being played on terrestrial radio.  You see, the reasoning of the New York and California opinions apply equally to your local broadcast radio station and all other broadcasters.  Suddenly, for the first time in history, all stations, at least those in CA and NY, will have to start paying royalties to the owners of sound recordings.

Now, there’s a couple of things profoundly weird about this.  First, there is still no obligation for terrestrial stations to pay the owners of post-1972 recordings.  Why should The Turtles get paid by your local broadcast radio station but not Pharrell?  When Congress grandfathered in state law copyright, could it really have meant this strange result?  Second, the New York opinion makes clear that this state law performance right has always existed, it was just never asserted.  In other words, some of the most sophisticated people in the entertainment business and their lawyers left billions of dollars in royalties sitting on the table for decades.  The first radio station in New York began to broadcast in 1916.  It apparently should have been paying royalties from day one—and the normally greedy recording industry just forgot to ask—for almost 90 years.

Now, maybe we should all be Happy Together for the Turtles, but the complete lack of any recognition of a performance right in sound recordings for decades is pretty good proof than no one thought that there was one.  Congress has debated the issue many times in the context of a federal right, and nobody thought to say, “Hey, New York established this right 80 years ago!”  Let’s hope the fall-out from these opinions is not the disappearance of iconic songs from the airwaves, dropped by radio stations that either cannot afford to pay or cannot locate the 1000’s of owners whose rights they might be violating.