Tag Archives: Copyright

May 16, 2020 · 6:51 pm

Are You Feeling Lucky, Brand?

“Whatever you do don’t be discouraged. Hear the words that I say. Something’s comin’ around the corner. This could be your lucky day.” Lucky Day by The Stone Coyotes

LUCKY BRAND BLUE JEANS OF AMERICA SIGNATURE LOGO ...

The copyright guru Arthur Levine is famous for his arsenal of jokes. Most earn solid laughs. Some reach higher heights, rising to iconic status. So it is with Art’s tale about one Morris “Lucky” Goldberg.

Here’s the Cliff’s Notes version: Walking down Main Street a man spots his old friend Morris Goldberg on the opposite sidewalk, who he hasn’t seen in a year. The man cries out. “Hey Morris Goldberg.” Goldberg waives him off, “there is no more Morris Goldberg. From now on I am Lucky Goldberg!” His friend asks, “so tell me, why are you now Lucky Goldberg?” “Lucky” then weaves an elaborate story about how he narrowly escaped death from a falling piano. “So I am now “Lucky” Goldberg!” he declares.'”

A year goes by. The man again spots his old friend across the street and greets him as “Lucky” Goldberg, only to hear the former Morris correct him, add a second “Lucky” to his name, and then recount another convoluted hair-raising brush with death. And each subsequent year, the same scene plays out, with Goldberg tacking another “Lucky” to his moniker.

As you may have guessed, it’s a Yiddish shaggy dog story of epic proportions and boundless possibilities. It’s a story that Art Levine, a master of timing, inflection, and accents, can drag out so long you’d think you were the hapless friend encountering “Lucky, Lucky, Lucky, Lucky Goldberg” year after year.

So you may ask yourelf, what does the saga of “Lucky” Goldberg have to do with trademarks? Plenty. Not only does the joke’s seemingly endless repetition seem to mirror our pandemic days, it also is a fitting metaphor for a trademark case decided last week by the U.S. Supreme Court involving, you guessed it, the brand “Lucky.” For over 20 years, Lucky Brand Dungarees (“Lucky”), with stores throughout the U.S. selling jeans and apparel, has been involved in its own shaggy dog of a litigation with Marcel Fashions, the owner of the trademark GET LUCKY.

The first case involved Marcel’s GET LUCK mark and ended in a 2003 settlement, with Lucky agreeing to stop using “Get Lucky,” and Marcel granting Lucky a release–i.e., a free pass, so to speak, regarding the use of LUCKY BRAND itself.

In the second round, in 2005, Lucky sued Marcel and its licensee for infringing Lucky’s trademarks. Marcel countered with counterclaims again charging Lucky with infringing Marcel’s GET LUCKY mark. But Marcel didn’t claim that Lucky’s other marks, such as LUCKY BRAND, infringed Marcel’s GET LUCKY trademark. Early in the 2005 case, Lucky claimed that the prior settlement blocked Marcel from suing over GET LUCKY. But Lucky didn’t pursue that theory at trial. Lucky lost the 2005 case and was permanently barred from using “Get Lucky.” No, Lucky didn’t change its name to Morris Goldberg Dungarees. But it continued using its LUCKY BRAND marks

Then came round three, in 2011. Marcel again asserted GET LUCKY. But this time, its target was all of Lucky’s other marks that contained the word “Lucky” besides GET LUCKY, because Lucky had already been enjoined from using “Get Lucky” in 2005. The trial court, however, wanted no part of this endless litigation. It granted summary judgment for Lucky, ruling that Marcel’s 2011 claims were a reboot of its unsuccessful 2005 counterclaims.

But the Court of Appeals for the Second Circuit disagreed, concluding that Marcel’s 2011 claims were distinct from its claims back in 2005 because those claims were for “earlier infringements” involving “Get Lucky,” while the 2011 action involved Lucky’s other marks. The Second Circuit vacated the district court’s summary judgment ruling and remanded the case for another round of litigation.

Back at the district court, Lucky unveiled a new defense. It argued for the first time that the release Marcel had given Lucky in the 2005 settlement blocked Marcel from now suing over Lucky’s use of its LUCKY BRAND and other LUCKY marks. Marcel countered that Lucky could have raised that defense in the 2005 action, didn’t, and therefore should be blocked from raising it now, years later. The district court agreed with Lucky, holding that the 2003 settlement agreement was indeed a complete defense.

But the Second Circuit had other thoughts. Relying on a doctrine it dubbed “defense preclusion,” the Second Circuit held that Lucky should have raised its “release” defense in the 2005 case between the same parties and that it was too late to raise it for the first time in the third round of litigation.

This unusual “defense preclusion” caught the eye of the Supreme Court, which granted certiorari to tackle this rare issue. In a unanimous decision penned by Justice Sotomayor, the Court held that so-called “defense preclusion” did not block Lucky from asserting its settlement agreement defense the 2011 action. Simply put, the Supreme Court recognized that the 2005 suit–round 2–concerned Lucky’s use of the GET LUCKY mark, while Round 3, the 2011 case, did not–it involved Lucky’s other marks. “At bottom, ” Justice Sotomayor wrote, “the 2011 Action involved different marks, different legal theories, and different conduct—occurring at different times. Because the two suits thus lacked a “common nucleus of operative facts,” claim preclusion did not and could not bar Lucky Brand from asserting its settlement agreement defense in the 2011 Action.”

So apparently ends the long, tortuous saga of Marcel and Lucky. But what of Lucky, Lucky, Lucky, Lucky, etc. Goldberg? Unlike with parties to a court case, our hero’s fate cannot be gleaned from a case book, treatise, or Internet blog. One must earn the right to learn the punchline from the veritable Chief Justice of jokesters, Mr. Levine himself. Spoiler alert, its not suitable for publication in a family legal blog. That’s Arthur, brother.

The case is LUCKY BRAND DUNGAREES, INC. v.MARCEL FASHIONS GROUP, INC.

Quote of the day: “I think we consider too much the luck of the early bird and not enough the bad luck of the early worm.”– Franklin D. Roosevelt

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April 2, 2020 · 4:15 pm

The Song Goes On Forever; Can the Copyright End?

“Standin’ on the highway with my coffee cup
A-wonderin’ who was gonna pick me up
I had my hopes up high, I never thought that I
Would ever wonder why I ever said good-by
I had my hopes up high” I Had My Hopes Up High music and lyrics by Joe Ely

Joe Ely - Letter to Laredo - Amazon.com Music

The path of a professional musician is rocky and strewn with obstacles. Many struggle to find an audience, to earn a living, to be picked up by a major record label. But even for those who make it, the road is still precarious. One reason is in the devils bargain they had to make to get their first recording contract.

The term “quid pro quo” had gone viral until a real virus took hold of our collective attention. But “quid pro quo” applies to more than just phone calls between heads of state. For most emerging singer/songwriters, the quid pro quo for getting a record deal was this: the record company demanded that the artist assign her copyrights to the label. And that demand came in the form of an offer the artists couldn’t refuse–either assign the copyrights or no deal–a classic case of one party to a deal holding all the cards and having all the leverage.

Congress, back in the day when bipartisanship and legislative compromise weren’t dirty words, recognized the artists’s dilemma and provided a fix. The fix is by no means quick. But is is real and potentially lucrative–the 1976 revision of the Copyright Act, Congress included a “termination right” so that artists like Joe Ely pictured above, Bruce Springsteen, Tom Petty, and others who had signed-away their copyrights at the start of their recording careers can take back their rights, lock, stock and barrel, after 35 years.

But, as Ringo sang, “it don’t come easy.” Artists must follow strict procedures about the timing and content of their termination notices. And as might be expected, the record companies, having given an artist a “big advance,” (like The Boss gets at the end of Rosalita), aren’t exactly keen to see the valuable copyrights revert to an artist whose career the company launched and helped sustain for decades. And so, some of the current corporate copyright holders have vowed not to give up without a fight and have refused to honor termination requests from Joe Ely and many others.

Mr. Ely, however, along with English musician John Waite, “won’t back down,” as Tom Petty sang. They are lead plaintiffs in a class action lawsuit against UMG, a major music corporation. In the lawsuit, Ely and Waite argue that UMG has not good reason or legal basis for rejecting their termination notices.

UMG, for its part, argues that the musicians never had a termination right because their original recording contracts included language that called the musician’s songs “works for hire.” So technically, UMG argues, artists like Mr. Ely never owned the copyrights in the songs they wrote and recorded while under contract to the recording companies. They further argue that the musicians should have sued over the “work for hire” issue decades ago, within three years of signing their contracts, so that the statute of limitations applies and bars their current claims.

Earlier this week, a federal judge rejected UMG’s theory, writing that denying the artists’ their termination right based on things they did or didn’t do over thirty years ago “at a time during which the artist and recording company may still have disparate levels of bargaining power — would thwart Congress’s intent and eviscerate the right itself.”

So the case continues on to a trial to determine whether Ely and the rest properly exercised their right of termination and can regain control of their copyrights.

The case is: Waite et al. v. UMG Recordings Inc. et al., case number 1:19-cv-01091, in the U.S. District Court for the Southern District of New York.

One of Joe Ely’s Texas Troubadour compatriots, Robert Earl Keen, sings “The Road Goes On Forever and The Party Never Ends.” This case will determine whether a record company’s party–it’s hold on copyrights it insisted on owning decades ago when it had superior bargaining power, will go on forever, or at least until the copyright expires many years in the future. The recent ruling shooting down UMG’s first line of defense leaves Mr. Ely and the other Plaintiffs with “their hopes up high.”

Quote of the day: “What have you done to me? Can’t you remove the spell you have cast over me?” Johannes Brahms

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March 26, 2020 · 1:07 am

Music Is Love

“Everybody’s saying it–music is love.” Music is Love” music and lyrics by David Crosby, from the album “If I Could Only Remember My Name.”

Brown and Black Gramophone

On a grey day, when sheltering in place begins to wear thin, a break from trademark themes seems in order. Trying to find the silver lining behind this dark cloud of Corona Virus may not be easy. But linings of silver are there to be discovered, whether its the chance to work side-by-side with one’s significant other and to discover what exactly it is that they actually do all day, to the opportunity to multi-task as dedicated work-at-homer and day-care provider, or one’s transformation from restaurant patron to intrepid pantry explorer–those dried beans were never going to hop into the Instant Pot themselves.

Among the few changes that have not been unpleasant has been the explosion of live musical performances being posted on social media and You Tube by artists and musicians across the musical spectrum. Neil Young shared an intimate mini concerts from his fireside, filled with gems and rarities. Willie Nelson and friends recast their cancelled Luck Reunion as an online musicthon. And many other artists and venues have followed suit, often tying their impromptu concerts with to a good cause, such as supporting fellow musicians or the dedicated staffs at venues and concert halls.

For the Internet concert curious, here are some lists complied by leading music publications to help you find tunes to ease a troubled mind:

https://pitchfork.com/news/the-isolation-check-in-week-2/

https://www.npr.org/2020/03/17/816504058/a-list-of-live-virtual-concerts-to-watch-during-the-coronavirus-shutdown

https://www.glamour.com/story/coronavirus-all-the-artists-offering-free-online-concerts-while-youre-stuck-at-home

https://www.stageit.com/ShutInandSing?fbclid=IwAR16ntCxx-Yf76bfOnmlvJIN0JIUr23nPHoOWfTC5HADgp5DYlI2gIM7NRc

So while music halls from Nashville to New York City remained shuttered, there are still plenty of ways to support live music, even from the couch. Perhaps you’ll make some new discoveries or reconnect with a favorite artist. Just a few years ago, none of this would have been possible. Today, our digital connectivity can help keep us connected with the healing power of music.

No Softrights post would be complete without at least some mention of intellectual property. So since this one concerns music, remember, artists make their living from their copyrights. So respect the artists and respect their creations by being a legit consumer–subscribe to a digital music service, buy CDs and other merchandise, and when Covid is history, buy a concert ticket, go to a festival, and enjoy music the way it was intended to be heard–live.

Quote of the day: “I think that live music is something that the Internet can never kill.” Jim James

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June 10, 2016 · 5:04 pm

Free Samples? Or Risky Riffs?

 

“I need a unit to sample and hold. But not the angry one. A new design.” Sample and Hold, music and lyrics by Neil Young

free sampleDigital sampling has become a staple of the recording industry. What’s sampling? It’s taking a snippet from one recording and splicing it into a new one. Typically, the sample is just a few bars, even a few notes. And it’s likewise typical for the producers and artists to digitally tweak those few bars or notes to alter their pitch or key and adding additional embellishments. As often or not, the listener is unaware that the “new” recording includes a “re-purposed” sample.

But is it kosher to lift a fragment from one copyrighted recording and implant into a new one?  That question has produced judicial sparring that rivals the most thorny of Talmudic conundrums.

Until last week, only one U.S. Circuit Court of Appeals, the Sixth Circuit, whose territory includes Nashville, aka “Music City,” had weighed in on this issue. It did so with Draconian precision, laying down a bright-line test. The case was Bridgeport Music Inc,. v. Dimension Films. The sample in question consisted of a chunk of guitar funk plucked from a recording of “Get Off Your Ass and Jam” by George Clinton. Specifically, a two-second sample from a four-second guitar solo was copied, the pitch was lowered, and the copied piece was looped and extended to 16 beats. Neither the brevity of the sample nor the transformation it underwent was enough to avoid a finding of copyright infringement.In the Sixth Circuits view: “[a] sound recording owner [and only a sound recording owner] has the exclusive right to ‘sample’ his own recording.”  And while a “de minimis” exception applies to other types of works (that, is, you likely can copy a phrase or two from a 400 page book without infringing the author’s copyright), the Sixth Circuit held that sound recordings are different. Samplers hoping to invoke the de minimis exception need not apply. In other words, if you want to sample, get a license and pay the piper.

But doesn’t that rule stifle creativity, which is what copyright law’s supposed to encourage? Not according to the Sixth Circuit. Leaning towards protecting the commercial interests of record labels and artists, the Court rejected a free-ride philosophy in favor of a market-driven approach. The Court identified two main reasons why musicians sample–either the sample adds value to a new recording because listeners recognize its original source, or it adds value by saving the cost or recording the same riff a second time. In either case, the sampler gets something of value, and should be willing to pay for it. Let the market decide the price.

But just last week, the Ninth Circuit Federal Court of Appeals, which includes L.A. within its jurisdiction, took the Sixth Circuit and its bright line approach to task. That case, VMS Salsous v. Ciccone (aka Madonna) also involved mining a prior recording for a musical sliver and then sliding it into a new track. In this case, the sliver was a .23 second “horn hit”–four trumpet notes forming a single chord, that originally appeared in the mega-hit dance track Ooh, I Love It (Love Break), recorded by producer Shep Pettibone in the early 1980s. In 1990, working with Madonna, Pettibone reached back to Love Breaks to salvage that same horn hit, doctoring it up in the process, transposing it to a new key, truncating it, and even adding other sounds to the chord itself.

If Pettibone and Madonna had worked this musical alchemy in Nashville and had been sued for copyright infringement there,  they would have been found guilty under the Sixth Circuit’s Bridgeport decision.  The Ninth Circuit, however, concluded that its sister court’s logic was badly flawed and that its refusal to apply the de minimis exception was dead wrong. The panel of three West Coast judges saw no basis in the Copyright Law or its legislative history to treat sound recordings any different from other works, such as books. That’s good news for recording artists who happen to be sued in L.A. or other places within the Ninth Circuit. But the Ninth Circuit’s ruling doesn’t change the Sixth Circuit’s decision, and it leaves artists in New York, Austin, Chicago, St.Louis, and other music towns on uncertain ground.

Such a  spat between two Courts of Appeal, however, may be the overture for the Supreme Court to step in and call the tune on digital sampling. Should music sampling be free, as the Ninth Circuit found? Or should producers have to pay to play, as the Sixth Circuit concluded? The answer may not be blowin’ in the wind, but its not exactly clear either. In other words, don’t be surprised if the Supremes refuse to decide whether digital samplers must “stop in the name of law” and leave the issue for Congress to sort out. And that could prove to be a “long and winding road.”

QUOTE OF THE DAY:  “People go back to the stuff that doesn’t cost a lot of money and the stuff that you don’t have to hand money to over and over again. Stuff that you get for free, stuff that your older brother gives you, stuff that you can get out of the local library.” Frank Black aka Black Francis.

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January 5, 2015 · 2:27 pm

Turtles to Satellite Radio: Get Sirius About Pre 72 Public Performance Royalties

“Got a idea tell you what let’s do
Let’s go out to that place on the Turtle Bayou
We’ll maybe get lucky, maybe get shot
It couldn’t be half of the trouble I got” Turtle Bayou by James McMurtry

You remember the Turtles? The mid ’60s group best known for the hit song “Happy Together?” The semi-parody love song that ended with the line “So Happy Together. How is the weather?” Not exactly the type of sheer profundity that propelled Lennon, McCartney, Dylan, and Paul Simon into Rock and Roll immortality. And yet, when it comes to the music of pre ’72 AM radio, the cornucopia of rock, soul, pop, psychedelic, country, and easy listening that all managed to coexist on stations such as WABC in New York and WFIL in Philly, the Turtles just may go down in history–not for their music, per se, but for their persistence in pursuing their legal rights.

It all has to do with the interplay between Federal Copyright law and state protection. In general, where Copyright is concerned, Federal law trumps state law under a doctrine called “preemption.” Simply but, when Congress passes a law to implement a constitutional right, like copyright or patents, the states generally can’t step in with laws of their own–otherwise, there could be overlap, inconsistencies, and confusion. But what about areas where Congress has chosen not to act? One of those areas concerns so-called “public performance rights” for songs recorded before 1972. Under current Federal Copyright law, when a satellite radio station plays a song recorded after 1972, the station pays royalties to the composer and to the performer. The latter royalty is called the “public performance right.” But this performance right applies only to songs recorded after 1972. Essentially, satellite radio gets to play pre-72 recording for free, according to Federal Law.

Many musicians with hit songs from before MTV object to this free-pass for old recordings. They claim that it robs them of income if not livelihoods. Facing the music, several states have passed laws to “correct” the situation. Not coincidentally, the biggest states to do this–New York, California, FLorida–are where many disgruntled makers of Golden Oldies live and work today.

Sirius satellite radio has been fighting these state laws; and the band that has been their defender is not the Beatles, the Rolling Stones, The Who, or any other giants of the Woodstock era. No, it’s the Turtles who have come out of music history’s shell to press the case for pre ’72 royalties under state law.

And like that mythical contest that pit a speedy and cocky frontrunner against a slow but steady underdog, the Turtles have been winning the race. Just last week a Federal Court in New York affirmed a ruling that the satellite radio must pay the tab for pre ’72 public performance royalties. Judges in California have reached the same conclusion, and a Florida court is expected to rule on the issue soon.

So when it comes to listing the most influential animal-themed bands of the 20th Century, the Turtles may be an afterthought after BYRDS, ANIMALS, EAGLES, CRICKETS, and BEATLES; but all of these groups have either disbanded, been decimated by the ravages of time, or are infamously acrimonious. With their legal legacy, however, the TURTLES appear to be still Happy Together.

QUOTE OF THE DAY: “One of the nice things about a favorite pop song is that it’s an unconditional truce on judgment and musical snobbery. You like the song because you just do, and there need not be any further criticism.” Henry Rollins

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August 25, 2014 · 3:24 pm

To Thy Selfie Be True: One Small Click For A Monkey, One Giant Leap For Copyright?

“You got yourself framed on the wall. And people come by and they look at your face. And they say it’s the fairest of all,” Your Picture by Camera Obscura

Monkeys, apes, and chimpanzees have had a long history in front of the camera on the silver screen and television. What would Tarzan have been without Cheeta? Reagan without Bonzo? Clint without Clyde? Charlton without his planet of them? And when it comes to TV, who can forget Peggy Cass, Jack Weston and their trio of adopted chimps on the 1961-62 series “The Hathaways?” Well, almost everyone. (Even I had a hard time remembering the premise of that show, which aired when I was 5. But it goes to show you–casting a non-human hominid in even a mediocre sitcom leaves a lasting impression.)

But a monkey behind the camera? Calling the shots, so to speak? Hard to imagine, despite the “infinite monkey theorem that posits “Give a thousand monkeys typewriters and infinite time and they will almost surely type Shakespeare’s plays.” But it’s actually happened, and it’s caused a copyright tussle that could be dubbed “Rumble in The Jungle II.”

Here’s the story: British wildlife photographer David Slater set off for a jungle shoot in Indonesia with thousands of dollars of equipment in tow. After setting up his gear, Slater walked away from his tripodded camera. As if on cue, a crested black macaque entered stage left and began snapping away. As described by Jay Caspian Kang in The New Yorker, “the result was hundreds of macaque selfies.” Most of the haphazard snaps were blurred. But the infinite monkey theorem prevailed, and one particularly affecting image–a headshot of a macaque sporting a goofy grin–went viral, to the delight of millions of viewers around the world looking for a respite from the grim news cycle and the fiasco of Bruce Jenner’s new hairstyle (which one pundit likened to Donald Trump’s morning pre-comb over mane.)

Everyone had a good laugh at the notion of a monkey selfie and the strangely compelling image it produced. Everyone, that is, except Slater.

He demanded that Wikimedia, which had posted to chimparrazzi’s handiwork, take down the offending snapshot, arguing that he, not, the monkey, owned the copyright. To Slater, a monkey pressing the shutter on cameras Slater lugged into the jungle is no different from an assistant pressing the button after Slater set everything up. But here, Slater had not held the camera or even composed the shot. The intermeddling monkey did.

Still, Slater has reason to be miffed. His plane ticket set him back a small fortune, not to mention the cost of his gear. Without his presence, the macaque would have been foraging for berries, not aping Richard Avedon. Yet as the images produced from his camera sweep the planet, Slater hasn’t earned a dime. In fact, this episode is costing him in legal fees to vindicate his position.

There’s one big problem for Slater, however. The U.S. copyright office backs the monkey! In a recent draft policy statement, the U.S. Copyright Office has clarified that it will not register works produced by plants, animals or “divine or supernatural beings.” Specifically tackling the flap between Slater and his meddlesome sidekick, the Copyright Office noted that it will refuse to register a claim if a human being did not create the work, and listed “a photograph taken by a monkey” and “a mural painted by an elephant” as examples of works that will not receive registration. And that policy jibes with the basic copyright principle that “she who presses the shutter owns the copyright.”

So it seems that, as so often has been captured on film for the movies and tv, a monkey and his hijinks have gotten the best of yet another homo sapien sap, once again proving the wisdom behind W.C. Field’s second most famous line “never work with children or animals.”

QUOTE OF THE DAY: “In the long history of humankind (and animal kind, too) those who learned to collaborate and improvise most effectively have prevailed.”
Charles Darwin

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April 11, 2013 · 7:30 pm

Reselling MP3s? RiDigi-lous, Judge Rules

“They took the credit for your second symphony. Rewritten by machine on new technology.” “Video Killed The Radio Star” by The Buggles.

I’ve spent many happy hours browsing through the bins of second-hand record stores. Used LPs and CDs–some rare, some foreign, some familiar, all at bargain prices–what’s not to like? And all made possible by a provision of U.S. Copyright law called the “First Sale Doctrine.” That’s the same First Sale Doctrine that the Supreme Court recently interpreted in Kirtsaeng v. John Wiley & Sons, which was the subject of a post on this very blog. In that case, the High Court applied the First Sale Doctrine to textbooks purchased abroad and shipped to the States for resale here. The First Sale Doctrine also applies to recorded music, or what the Copyright law calls “phonorecords.” Under the doctrine, when you pay for a record, a cassette, or a cd, you have the right to do what you wish with it–play it endlessly, use it as a coaster or doorstop, and sell it to others. And you can do all that without getting permission from the copyright owner. The first sale “exhausts” the copyright, leaving the purchaser free of copyright restrictions if he or she tires of it and wants to sell it. But making more copies is another story– the First Sale Doctrine does not permit that. If it did, we could all go into the record business, copying our Beatles and Mumford and Sons CDs for fun and profit.

But the music business has changed–as we all know from the explosion of iPods, iPhones, Androids, and The Cloud. Today, many, if not most, music consumers get their music digitally, in the form of MP3s. So does the First Sale Doctrine apply in the new digital frontier?

That’s the issue that a Federal Court grappled with in the case of Capitol Records v. ReDigi Inc. As NPR reported today “ReDigi is basically a digital version of a used-record store. You can sell the company your old MP3s, and you can buy “used” MP3s that other people have sold. ReDigi says its technology ensures that the person selling a used MP3 can only sell it once and can’t keep listening it after it’s been sold.” In ReDigi’s view, the First Sale Doctrine should be an equal opportunity provision that protects ReDigi as much as it protects the Record Annex in you local strip mall.

Capitol Records wasn’t buying ReDigi’s tune. In the lawsuit, it argues that MP3’s aren’t the same as records and cds. According to the record company, you can’t transfer an MP3 without making a new copy–and doing that is no different from copying a CD or LP and reselling it–it’s copyright infringement, the label contends.

According to NPR, the case raises such existential questions as:
“Do you really own something if it’s just a bunch of ones and zeroes on your computer? If you take a digital song and you move someplace else, did you actually move it or did you just make a copy and destroy the original?”

To answer these vexing questions, the court boldly went where few courts have gone before, to Star Trek:

THE COURT: I kept thinking about this, but — I’m not a Trekkie, but I kept thinking it’s the difference from Captain Kirk going from the Enterprise to the planet through that transporter thing, where he’s not duplicated, to the cloning where there’s a good and a bad Captain Kirk where they’re both running around. I think one is a copy and the other is — the other was transported and it’s only one Captain Kirk.

MR. MANDEL: Right. And, you know, that’s part of the problem we have at a basic level because it’s not Star Trek here, and I don’t think they’re really saying —

THE COURT: Wouldn’t it be cool if it were?

Ultimately, the Court sided with Capitol Records, ruling the First Sale Doctrine doesn’t apply to ReDigi because the digital music files it handles don’t just change hands like a CD, but are copied.

The judge did not categorically rule out the First Sale Doctrine for digital works; he concluded however, that
the doctrine only protects the sale of that ” ‘particular’ phonorecord, be it a computer hard disk, iPod, or other memory device onto which the file was originally downloaded.” As NPR put it “in other words . . . you can sell your old MP3s — as long as you sell them along with whatever device you used to download the MP3s in the first place.”

ReDigi plans to appeal the ruling. They also say they’ve got the new technology that solves their First Sale problem.

So stay tuned–perhaps there will be a secondary market for MP3s after all. Then, someone will have to invent a way to replicate the joy of browsing through dog-eared LPs while inhaling the musty air of a brick and mortar second-hand record store. That challenge might stump even Mr. Spock.

QUOTE OF THE DAY: “Now Mr. Spock, there’s really something about all this that I don’t understand, so maybe you could explain it to me, logically of course…” James T. Kirk, Star Trek.

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March 27, 2013 · 8:51 pm

Bring Us Your Tired, Your Poor, Your Textbooks?: First Sale Goes Global

“If you really like it you can have the rights,
It could make a million for you overnight.”  Paperback Writer, Lennon and McCartney

So you’ve come to the U.S. from Thailand to pursue a degree at an elite American college.  Things are looking up, until you’re hit with that first tuition bill and the accompanying rapid onset of sticker shock.  Financial aid and student loans are options, but you’re not enthralled by the prospect of leaving school a quarter million dollars in debt.  So what do you do?  If you’re Supap Kirtsaeng, a math student at Cornell and a Thai national, you think fast and do some simple arithmetic.  The textbooks for courses at Cornell and other schools can be bought for a fraction of the cost back home.  And the cost of shipping them to the United States barely eats into the prospective profits.   So, as Mr. Kirtsaeng did, it becomes a simple exercise to have relatives back home buy up textbooks for resale here. Kirstaeng reportedly netted over $100,000 through this international used-book program–enough to pay for two Ivy League semesters.

While Mr. Kirtsaeng was sailing through school, a major U.S. book publisher was stewing–and suing. John Wiley & Sons charged Kirtsaeng with infringing its copyrights. Wiley claimed that the law allowed it to “divide and conquer” the world markets, setting different prices for different markets–with the U.S. editions commanding this highest price tags. Wiley recognized that a provision of Copyright law called “the first sale doctrine” allows anyone who buys a copyrighted work, such as a book or cd, to resell it without permission from the copyright owner. But according to Wiley, the protections of the first sale doctrine ended at the U.S border.

The trial court and appeals court agreed with Wiley. Undeterred and showing the pluck that led him to conceive his bookselling strategy, Kirstaeng appealed to the Supreme Court, urging the nine justices to conclude that the law means what it says–that the first sale of a copy lawfully made under the U.S. Copyright law exhausts the copyright, regardless of where that sale takes place.

In a 6-3 ruling, the High Court sided with Kirstaeng, holding that because the books were Real McCoys “lawfully made” by the copyright owner, they were subject to the first sale doctrine.

Reaction to the Court’s ruling divided along predictable lines. Consumer groups praised it as ushering in new freedom for American consumers to shop worldwide for copyrighted materials. As one spokesperson told the New York Times “Americans [will] no longer be the chumps who pay the highest prices in the world . . .”

Others were chagrined, predicting drastic changes in the way content, such as books and software, will be distributed. As the Business Software Alliance wrote in its brief “Software authors will have little incentive to price their programs for foreign markets if they can simply be resold in the United States and thereby undercut the price of the domestic version.”

The Times even pondered whether “the decision might even hasten the near-demise of print–spurring publishers into a digital works where they can license their books rather than sell them . . .”

Two years ago, the Supreme Court could not decide whether the first sale doctrine allowed the importaion for resale of copyright-protected watches intended for foreign markets. Now, with its decision in the Kirstaeng case, the scope and international reach of the first sale doctrine no longer is in doubt. Proving once again that even with global forces aligned against you, sometimes all it takes is the old college try.

QUOTE OF THE DAY: “The love of one’s country is a splendid thing. But why should love stop at the border?” –Pablo Casals

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November 1, 2012 · 4:37 pm

Mississippi Burning Over Paris: Faulkner Sues Woody

“There’s a whole lot of magic when you’re in Paris. . . .I want to tell you ’bout all I see.  Stars in my eyes that you would not believe”  Midnight In Paris, Stephen Stills

It never occurred to me that Woody Allen and Stephen Stills shared the same aesthetic.  Stills, of course, achieved fame and notoriety as a member of The Buffalo Springfield and Crosby, Still, Nash and (sometimes) Young.  He’s written and sung anthems for his generation–(“For What It’s Worth, Carry On, Woodstock)–and his battles, on and off stage, are the stuff of legend, including an episode in the early ’80s when Stephen’s then-bandmate Bonnie Bramlett  reportedly punched Elvis Costello in a Ohio Holiday Inn bar.

Woody Allen, on the other hand, has always favored wits over fists.  When Stills was telling the crowd at Woodstock that he was “scared shitless” before breaking into Suite:Judy Blue Eyes, Woody was probably playing Dixieland clarinet at his regular weekly gig at Michael’s Pub in Manhattan while pondering  the absurdity of life.  The auteur claims to have been thrown out of college for cheating on his metaphysics exam (“I looked into the soul of the boy sitting next to me”).  In Annie Hall, when he dates the wispy Rolling Stone writer (Shelley Duvall), his absolute disdain for the entire Rock genre is palpable.

Yet when it comes to France’s City of Lights, Woody and Stephen see eye to eye, with Woody taking a title out of the Stephen Stills songbook.  Stephen’s 1976 solo album contained “Midnight In Paris,” with lyrics celebrating the joy and wonder of that magical place.  Woody’s 2010 film by the same name not only won praise from critics and audiences, but also exuded the same spirit of awe and wonder as Stills’ song about “stars in your eyes that you would not believe.”

Woody’s Paris, too, is populated by an unbelievable constellation of stars.  When struggling writer Gil Pender (Owen Wilson) is stranded by his shallow fiance on a gaslight Paris lane, he soon finds himself whisked upon a journey to past–to the literary salons and speakeasy of jazz age Paris, where he encounters a who’s who of the era’s cultural elite.  Hemingway, the Fitzgeralds, Picasso, Gertrude Stein, and even Dali!, populate Gil’s nightly jaunts.  When he returns to the present, aglow with  heady banter and bon mots, he’s eager to share his new-found enlightenment.  In one scene, Pender exclaims, “The past is not dead! Actually, it’s not even past. You know who said that? Faulkner. And he was right. And I met him, too. I ran into him at a dinner party.”

This line added to the picture’s panache, but hardly was a defining moment.   With so many literary and artistic heroes crowding each frame, and with the Hemingway character itching for a fight in every scene, Woody’s nod to Faulkner hardly stood out.

But it didn’t escape the attention of Faulkner’s estate.  And unlike Woody’s many fans, Faulkner’s folks did not see this as a laughing matter, even though the line merely paraphrased Faulkner and gave him attribution.  They’ve sued.  Faulkner Literary Rights, LLC, the owner of William Faulkner’s literary properties,  filed a complaint in the US District Court in Mississippi against Woody’s studio, Sony Pictures Classics, Inc. for copyright infringement, violation of the Lanham, and commercial misappropriation. Faulkner’s estate asks for “damages, disgorgement of profits, costs and attorneys fees.” The complaint states, “The Copyright Act grants Faulkner the exclusive right to reproduce and distribute the Book and the Original Quote.”  The complaint also alleges that, “The use of the infringing quote and of William Faulkner’s name in the infringing film is likely to cause confusion, to cause mistake, and/or to deceive the infringing film’s viewers as to a perceived affiliation, connection, or association between William Faulkner and his works, on the one hand, and Sony, on the other hand.”

Sony’s response so far has been terse and emphatic:   “There is no question this brief reference (10 words) to a quote from a public speech Faulkner gave constitutes fair use and any claim to the contrary is without merit.”

The merits of this literary/cinematic stand-off will now be played out in a Mississippi courtroom.  Whether it will be all sound and fury, signifying nothing remains to be seen.  But even though Woody Allen may appear diffident, Faulkner should not take him lightly.  As he showed when playing Fielding Melesh in Take The Money And Run, Woody can be a  formidable interrogator.   Perhaps Mr. Allen will invoke the literary conceit from Midnight In Paris and journey to the past himself to confront his accuser, where he’d surely use his signature line of cross-examination: Are you being coy, Mr. Faulkner?

QUOTE OF THE DAY: “It seemed the world was divided into good and bad people. The good ones slept better… while the bad ones seemed to enjoy the waking hours much more.” Woody Allen

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October 28, 2012 · 7:08 pm

“What, Me Worry About ©?” Mad-Made Law

“All around me are familiar faces.  Worn out places, worn out faces . . . no expression, no expression.”  “Mad World,” Gary Jules

I heard the new today, oh boy.  Mad Magazine,  that bastion of irreverent, sometimes imbecilic humor, turns 60 this year.  I hadn’t realized Mad was still being published, much less that it’s lasted this long.  Alfred E. Newman, pictured above, hasn’t looked a day older than, 16 since I used to read Mad religiously in the ’60s.

As I came of age, I moved on to other sources for literary laughs–National Lampoon, Spy, and, today, The Onion. But I never forgot Mad.  It’s iconic features like  the Cold-War classic–Spy vs. Spy, the spot-on TV and movie parodies, Dave Berg’s The Lighter Side, and all the rest remain comedy touchstones that influenced generations of humorists and infused them with the Mad sensibility for the absurd, the ironic, and, yes, the insightful.  The magazine taught generations of readers to filter the “truth” through humor’s unflinching lens.  Could Jon Stewart, Stephen Colbert, and The Simpson’s have wielded their political, social, and cultural rapiers if there had been no Mad?   No way.

Mad’s contribution to our warped world view is  undeniable.  Less remembered is Mad’s enduring contribution to the law.  As hard as it may be to picture Alfred E. in a three-piece pinstripe and tassel loafers, the irrepressible nudnik had a star-turn in the courtroom that shaped copyright law and paved the way for tuneful satirists like Weird Al Yankovik.

The year was 1964, and Beatlemania had gripped the land.  Yet Mad  was in a nostalgic mood, running parodies of classic songs.  The piece provided  Mad-ingly twisted lyrics and instructed readers to sing them “to the tune of” the targeted song.   In this way, Mad skewered 25 songs.   Among them was a parody of Irving Berlin’s “A Pretty Girl Is Like A Melody,”  which Mad retitled “Louella Schwartz Describes Her Malady.”

Readers thought this and the other song parodies were a scream.  Not Irving. Althouth he was known for such comedy gems as “Snookie Ookems,” Berlin, apparently, had no sense of humor when it came to others poking fun at his expense.  So he unleashed his lawyers to go after Mad, crying foul and claiming irreparable harm.  Fortunately for life, liberty, and the pursuit of laughs, the Second Circuit Court of Appeals disagreed, resulting in a ruling that went down in legal history as “the Mad exception.”  The Court wrote:

 the plaintiffs have not asserted that the music-buying public could have had any difficulty in differentiating between the works of plaintiffs and defendants. Neither is there a claim that defendants’ parodies might satisfy or even partially fulfill the demand for plaintiffs’ originals; quite soundly, it is not suggested that ‘Louella Schwartz Describes Her Malady’ might be an acceptable substitute for a potential patron of ‘A Pretty Girl Is Like a Melody.’

Stripping away the legalese, the Court said that Mad’s creative expression trumped Berlin’s rights.  While copyright is important, even more important is free speech.  After all, a society that can’t laugh at itself is doomed, if not to fail, then to bore itself into oblivion.  And we have Mad to thank for reminding us of that for the last 60 years.  Hopefully, Alfred E. Newman will continue to shine his gap-toothed countenance on us for generations to come.

QUOTE OF THE DAY: “The U.N. is a place where governments opposed to free speech demand to be heard!”  Alfred E. Newman

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