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.

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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.