Tag: copyright infringement

Protection for Voice Actors is Artificial in Today’s Artificial Intelligence World

As we all know, social media has taken the world by storm. Unsurprisingly, it’s had an impact on trademark and copyright law, as the related right of publicity. A recent case involving an actor’s voice being used on the popular app TikTok is emblematic of the time. The actor, Bev Standing, sued TikTok for using her voice, simulated via artificial intelligence (AI) without her permission, to serve as “the female computer-generated voice of TikTok.” The case, which was settled last year, illustrates how the law is being adapted to protect artists’ rights in the face of exploitation through AI, as well as the limits of current law in protecting AI-created works.

Standing explained that she thinks of her voice “as a business,” and she is looking to protect her “product.” Apps like TikTok are taking these “products” and feeding them into an algorithm without the original speaker’s permission, thus impairing creative professionals’ ability to profit in an age of widespread use of the Internet and social media platforms.

Someone’s voice (and aspects of their persona such as their photo, image, or other likeness) can be protected by what’s called the “right of publicity.” That right prevents others from appropriation of one’s persona – but only when appropriation is for commercial purposes. In the TikTok case, there was commercial use, as TikTok was benefiting from use of Standing’s voice to “narrate” its users’ videos (with some user videos apparently involving “foul and offensive language”). In her Complaint, Standing alleged TikTok had violated her right of publicity in using her voice to create the AI voice used by TikTok, and relied upon two other claims:  false designation of origin under the Lanham Act and copyright infringement, as well as related state law claims. The false designation of origin claim turned on whether Standing’s voice was so recognizable that another party’s misappropriation of it could confuse consumers as to whether Standing authorized the Tik Tok use. The copyright infringement claim was possible because Standing created the original voice files for a company that hired her to record Chinese language translations. TikTok subsequently acquired the files but failed to get a license from Standing to use them, as TikTok was legally obligated to do because Standing was the original creator (and therefore copyright owner) of the voice files.

As with other historical technological innovations (one of the earliest being the printing press), the law often plays catch-up, but has proven surprisingly adaptable to new technology. Here, Standing was able to plead three legal theories (six if you count the state statutory and common law unfair competition claims), so it seems artists are well-protected by existing law, at least if they are alleging AI was used to copy their work or persona.

On the other hand, the case for protecting creative expression produced in whole or in part by AI is much more difficult. Some believe AI deserves its own form of copyright, since innovative technology has increasingly made its own music and sounds. Currently, protection for these sounds is limited, since only humans can be identified as authors for the purposes of copyright. Ryan Abott, a professor of law and health science at the University of Surrey in Britain, is attempting to bring a legal case against the U.S. Copyright Office to register a digital artwork made by a computer with AI as its author. The fear, says Abott, is that without rights over these sounds, innovation will be stifled — individuals will not have incentive to create AI works if they cannot protect them from unauthorized exploitation.

Article By Jeanne Hamburg of Norris McLaughlin P.A.

For more communications, media, and internet news,  click here to visit the National Law Review.

©2022 Norris McLaughlin P.A., All Rights Reserved

What You Don’t Know Can’t Hurt You: SCOTUS Rules Inadvertent Legal Errors Cannot Overturn Copyright Infringement Decisions

“No harm, no foul.” That was the message the U.S. Supreme Court delivered Feb. 24 in ruling that a copyright infringement verdict should not have been overturned because of inaccurate information in the copyright registration asserted. The Court’s 6-3 opinion vacates a Ninth Circuit decision that threw out an infringement verdict on the ground that the registrant should have known the law regarding filing multiple works within one registration, a practice referred to as group registrations.

In Unicolors Inc. v. H&M Hennes & Mauritz LP, a jury found that Unicolors’ fabric pattern copyrights were violated and the district court entered judgment for H&M to pay nearly $800,000 for selling jackets that infringed on Unicolors’ copyrights.  H&M moved for judgment as a matter of law that Unicolor’s copyright registration was invalid because for group registrations, all works in the applications must be published “in the same unit of publication.”  Unicolor released some of the garments containing the protected patterns to private customers, and released the others to the public at a different time.  Thus, the asserted registration did not technically satisfy the requirements.  The district court denied H&M’s motion and found that safe harbor provision of the Copyright Act allows for innocent mistakes of fact and law.  In this case, Unicolor was not aware that all works in a group registration had to be published “in the same unit of publication.”

The Ninth Circuit overturned this ruling, siding with H&M that Unicolors’ copyright registration was invalid because of legal errors in the application, saying a safe harbor provision for copyright registration errors only applies to factual mistakes, not unintentionally misreading the law. Justice Stephen Breyer, writing for the majority, pushed back on this idea:

“In our view, however, §411(b) does not distinguish between a mistake of law and a mistake of fact. Lack of knowledge of either fact or law can excuse an inaccuracy in a copyright registration,” he wrote.

Justice Breyer also noted that many copyright applicants are often “novelists, poets, painters, designers, and others without legal training” and said Congress never intended to make it more difficult for those non-attorneys to successfully apply for a copyright. “Given this history, it would make no sense if §411(b) left copyright registrations exposed to invalidation based on applicants’ good-faith misunderstandings of the details of copyright law,” he said.

The Supreme Court’s decision is s a victory for creators’ rights and provides some peace of mind for those creators filing copyright applications without the assistance of an attorney.  However, this decision will focus discovery on whether any errors in a registration—be them factual or legal—were made “with knowledge that [the error] was inaccurate.”

Copyright © 2022 Womble Bond Dickinson (US) LLP All Rights Reserved.
For more articles about the U.S. Supreme Court, visit the NLR Litigation section.

Beauty and the Little Pig: French Judges Find Jeff Koons Guilty of Copyright Infringement Once Again

The Paris Court of Appeal confirmed a previous decision that found Jeff Koons guilty of copyright infringement for one of his “Banality” sculptures. The Paris Court of Appeal even increased the amount of damages and costs that were initially awarded in the first instance. Beyond the fact that, fortunately, it is quite rare that a famous artist is found guilty of plagiarism, this case is also interesting because Jeff Koons used more or less every defense in the (French) book.

At the end of 2014 and beginning of 2015, the Pompidou Modern Art Museum organized a retrospective of the work of Jeff Koons, which attracted thousands of visitors but gave rise to several lawsuits.

On March 9, 2017, the Paris District Court found that for one of his Banality sculptures, Jeff Koons had reproduced the original features of a French photograph created by Jean François Bauret, which had “saved him creative work.”

The retrospective also prompted another French artist, Franck Davidovici, to sue Jeff Koons personally over an allegedly infringing sculpture. Davidovici also sued Koons’ company, the Pompidou Museum, and Flammarion, a top French publishing house which published a book containing a reproduction of the sculpture in question.

This time, the plaintiff had designed an advert in 1985 for a French fashion company called NAF-NAF. The advert, reproduced below, was published in several well-known magazines, such as “Elle” and “Marie Claire.”

“Naf Naf” is the French name of one of Disney’s Three Little Pigs, the brave and smart one who builds a house with brick and mortar which can resist the wolf’s attack. The title of the advert — “Fait d’hiver” (which means literally “winter event”) — is a play on words since “fait divers” means events, such as accidents, which are reported in local newspapers. The word “winter” also refers to the NAF-NAF autumn-winter collection, which included the jacket worn by the brunette. This photograph is quite striking because the little pig is wearing a small barrel of the type rescue dogs wear.

The Koons sculpture in question was another piece of the Banality series also entitled “Fait d’hiver,” and is reproduced below.

Davidovici claimed that Jeff Koons had violated his moral rights by using the work without his permission and infringed upon his copyright.

Jeff Koons tried almost all defenses that can be raised in this kind of case but none of them was persuasive to the judges and on 8 November 2018 Jeff Koons was found to have infringed Davidovici’s copyright. Jeff Koons appealed but the Paris court of appeal reached the same conclusion and increased the amount of damages and costs awarded.

The Parody Defense: Tried Again, Failed Again

As before the first instance judges, Jeff Koons argued that the sculpture fell within the parody defense.

This defense is set out in the French Intellectual Property Code but is, in fact, the implementation of article 5 §3 (k) of the 2001/29/CE Copyright Directive. The Court quoted a decision rendered by the European Court of Justice that stated that for the exception to apply, the work of art must evoke an existing work but differ notably from that previous work and express humor or mockery.

An example of what would certainly qualify as a parody is the painting by Dali of Mona Lisa with a moustache.

Jeff Koons argued that the humor in his sculpture stemmed from the incongruity of the scene: the woman is lying in the snow, dressed with a sexy fishnet gown and the animal who comes to rescue her was a pig, a farm animal which symbolizes banality. That pig is there to free the young woman from the “fashion diktats” and to free the public from the “good taste diktats” of the so-called “Great Art.”

The Court held that even assuming that the sculpture might be seen as an expression of humor, the advert was not effectively notorious for the sculpture to be regarded as a parody.

The Freedom of Expression Defense: Tried Again, Failed Again

Koons tried once again to rely on freedom of expression as set out in Article 10 of the European Convention of Human Rights but the judges followed the same reasoning as in the Bauret case and also relied on the decision rendered by the European Court of Human Rights in the Ashby Donald case.

Jeff Koons argued that he had added flowers and penguins, which symbolize spring and life, and that his intention was to convey the message that each individual must have faith in his/her own personal tastes. Before the first instance court he had provided as an exhibit a copy of a decision rendered by the U.S. Court of Appeals for the Second Circuit in the Andrea Blanch case in which Koons successfully relied on the “fair use” defense. The French judges could have put this case aside by stating that the “fair use” doctrine simply does not exist under French law but interestingly, they noted that the U.S. case was different in that Koons had not used a substantial part of Blanch’s work. On appeal, the U.S. case was not discussed.

The French judges followed the European case law and stated that they had to balance on the one hand the interests of Davidovoci and on the other hand, Koons’s freedom of expression. Their conclusion was that it was not disproportionate to allow the plaintiff to enforce his rights.

Freedom of expression was therefore not a valid defense in this case.

The Cost of this Banality

A total amount of 207,000 euros had been awarded by the first instance court by way of damages and legal fees and the co-defendants, including the Pompidou Museum, were held jointly liable to pay that amount, which is fairly usual in copyright infringement cases. On appeal, the total amount payable was increased to 344,000 euros, which is quite high according to French standards.

Koons would have been well advised not to appeal but it is harder to predict the outcome of a judicial battle than that of a fairy tale.

© Copyright 2020 Squire Patton Boggs (US) LLP

ARTICLE BY Catherine Muyl of Squire Patton Boggs (US) LLP
For more articles on copyright infringement, visit the NLR Litigation / Trial Practice section.

No Copyright Case Too Small: Content Creators Rejoice or Casual Infringers Beware?

An office jokester emails a funny meme she copied off Google to a colleague. A tourist snaps a picture of a painting in an art gallery and posts it to his travel blog. A teacher prints copies of a recently published Internet article and distributes to his class. A teen reposts his friend’s Instagram picture on his own social media page. To these casual infringers, no harm has been done and there’s certainly no reason to “make a federal case out of it.” But to the copyright owners, these small acts of infringement mean something. Perhaps not enough to justify the expense and time required for a federal claim, but action may be worth pursuing on a smaller scale.

Enter the pending CASE Act, intended to protect the “creative middle class,” and a potential boon to small businesses and individual content creators, while simultaneously presenting a threat to the “micro-infringements” committed by the ordinary person throughout the day. Last week, the US House of Representatives approved the Copyright Alternative in Small-Claims Enforcement Act of 2019 (CASE Act) by a landslide 410-6 vote. The bill is intended to create a Copyright Claims Board within the US Copyright Office that would hear copyright claims of up to $15,000 per work infringed, with statutory damages capped at a total of $30,000.

If passed by the Senate, the CASE Act is likely to be a welcome avenue for graphic designers, bloggers, photographers, authors, vloggers, and other individual and small business copyright owners to protect their works. Currently, pursuing copyright infringement litigation is limited to filing suit in federal courts, the cost of which can be prohibitive for many small businesses. The proposed Copyright Claims Board provides a more affordable avenue—effectively, a copyright small claims court—to enforce copyright ownership.

Supporters say that small businesses have long needed a more efficient and affordable means to enforce their copyrights. To this point, much of the unauthorized exchange and use of Internet-based works or smaller-scale copyrighted works has been difficult to police. In fact, June Besek, the executive director of the Kernochan Center for Law, Media and the Arts at Columbia Law School, recently told the ABA Journal that many infringers knowingly exploit copyrighted material because they are confident they will never be challenged. (Anyone remember the flagrant use of Napster and LimeWire by teens in the late 1990s and early 2000s to illegally download music—excuse me, “file share”—with little fear of repercussions for their “small-scale” acts of infringement?). A number of organizations, including the American Bar Association, have expressed support for the CASE Act.

But that support, while widespread, is not universal. The American Civil Liberties Union opposes the proposed CASE Act on the grounds that it will stifle free speech and the open sharing of information. Other critics say that by lowering the threshold for infringement claims, lawmakers also are opening the door for “copyright trolls” to file nuisance infringement claims with the Copyright Claims Board. And many are less than keen on the idea that inadvertently unanswered copyright infringement complaints could cost ordinary Americans up to $30,000 in default judgments per proceeding—perhaps a small sum to a business, but potentially life-changing to many individuals—with very limited ability to appeal, under the currently proposed language of the Act.

Notably, as currently written, the small-claims tribunal established under CASE will be entirely voluntary, meaning the complaining party can elect to use the Copyright Claims Board, and the defending party may choose to opt out. But critics point out that the opt-out window is only 60 days long, and easily could be missed by an unwitting defendant.

Next, the Senate will consider the CASE Act, but observers believe it will pass with bipartisan support. The final language of the Act may be somewhat different from its current form, so stay tuned for more updates as the CASE Act makes its way through the legislature.

What the proposed CASE Act could mean for you:

Would-be plaintiffs (or defendants) appearing before the proposed Copyright Claims Board are encouraged to do so with licensed legal representation. Some have suggested that this small claims court format will allow parties to represent themselves without needing to incur the fees of legal representation. However, it is important to remember that, though the monetary stakes may be lower than in federal court, the complex legal nuances of copyright law, not to mention jurisdiction, service, discovery, evidence, joinder of parties, and expert testimony, remain the same and are best addressed by experienced legal counsel.

Owners of large copyright portfolios may find the CASE Act to allow greater leeway in defending their works against smaller-player infringers. Businesses with larger portfolios may wish to take stock of their protected works and develop an enforcement strategy, taking into account this more accessible avenue for enforcement.

Smaller companies or individual content creators, too, may find the proposed CASE Act to provide the freedom to assert their copyrights more aggressively than they have done previously. These companies and individuals also are encouraged to take stock of their copyright portfolios, and consider setting up infringement alerts through their legal representatives or third party vendors in order to take a more offensive stance.

On the opposite side of the court room, copyrighted work users are cautioned to think carefully about their use of protected works. Businesses and schools may want to consider updating policies on use and distribution of protected works, with a more conservative mindset. The relative ease of filing suit with the Copyright Claims Board may give rise to a more litigious “creative middle class.” And while the damages may be smaller-scale, the attendant legal costs may not be, and damages from multiple suits may add up quickly.

 

Copyright © 2019 Womble Bond Dickinson (US) LLP All Rights Reserved.

ARTICLE BY Kristin Lamb of  Womble Bond Dickinson (US) LLP.
For more copyright infringement regulation, see the National Law Review Intellectual Property law page.

A Week of Surreal Headlines: A Charging Bull Smashed by Man Wielding Banjo, A Stolen 18-Karat Gold Toilet, and a $20 Million Consignment Decided by a Game of Rock, Paper, Scissors

UNITED STATES

Mercedes-Benz Suit Against Street Artists Allowed to Proceed

Mercedes-Benz brought a declaratory judgment action against four street artists who saw their work prominently displayed on social media as background for the automaker’s G-Class track ads. Mercedes is seeking a declaration that its use of the artworks was not a copyright infringement as it was either fair use or because the claim is precluded by the Architectural Works Copyright Protection Act (1990).

After a hearing last week, a Detroit court denied the artists’ motions to dismiss Mercedes’s claims. The artists contended, among other things, that Mercedes’s claim was not ripe as the artists have not yet registered their copyrights. Distinguishing the U.S. Supreme Court’s recent decision in Fourth Estate v. Wall-Street.com, this court concluded that copyright registration is not a prerequisite for an action seeking a declaration of non-infringement.

Los Angeles Police Department Seeks to Reunite Recently Discovered Artworks with Their Owners

The LAPD has uncovered a trove of more than 100 antiques and artworks that have been missing since a spree of thefts in 1993, including works by Pablo Picasso and Joan Miró. Two individuals involved in the thefts were captured in 1993, but it was not until this summer that an auctioneer’s tip led to the discoveries.

Charging Bull, a Symbol of Wall Street Power, Damaged by a Man with a Banjo

A man armed with a metal banjo bashed the famous Charging Bull on Wall Street, leaving it with a six-inch gash and several scratches. The attacker, who was arraigned and released without bail, gave no motive for his actions. He is due back in court on October 16. The artwork was installed in December 1989 by sculptor Arturo Di Modica, intended as a symbol of optimism after the Black Monday stock market crash in 1987.

EUROPE

Works of Art from the Collection of Nazi Collaborator Hildebrand Gurlitt to Be Exhibited in Israeli Museum

Artworks amassed by Hildebrand Gurlitt, noted Nazi collaborator, will go on view for the first time at the Israel Museum later this month. The collection includes works by Pierre-Auguste Renoir, Édouard Manet, Otto Dix and Max Ernst, among others. The show will include works declared “degenerate” by the Nazis and acquired by Gurlitt during the war, as well as works that have no red flags that might indicate ties to the Nazis. The exhibition, called “Fateful Choices: Art from the Gurlitt Trove,” reveals the historical circumstances behind the fate of art during the Third Reich and is intended to generate discussion about art and ethics.

Extreme Weather Leads to the Reemergence of a “Spanish Stonehenge”

This summer, an extreme drought in the Extremadura area of Spain has revealed the “Dolmen de Guadalperal,” a series of megalithic stones that were previously submerged. The Dolmen are 7,000 years old and are located in the Valdecañas Reservoir. They were last seen in 1963. A local group is working to move the Dolmen before they submerge again.

Police on the Hunt for Maurizio Cattelan’s 18-Carat Gold Toilet

Maurizio Cattelan’s America (2016), a fully functioning 18-carat gold toilet, was stolen from an exhibition at Blenheim Palace in Oxfordshire, UK. Blenheim Palace is the 18th Century home and ancestral seat of the Duke of Marlborough. The burglars caused significant damage and flooding while removing the toilet.

Gagosian Gallery Adds Estate of Simon Hantaï to Its Roster

Gagosian Gallery added the estate of postwar abstractionist Simon Hantaï. Gagosian will host its first Hantaï show in October at its gallery in France. Hantaï, who is well known for his surrealist and abstract expressionist works, died in 2008. He is beloved in France and represented the country at the Venice Biennale in 1982.

Arrests Made in Connection with a String of Forgeries of High-Profile Old Master Paintings

An arrest was made and an additional warrant issued in connection with a high-profile string of suspected forgeries of Old Master paintings uncovered in 2016. The scandal has involved such institutions at the Louvre, London’s National Gallery and the Metropolitan Museum. The forgery ring may have been involved in as much as $255 million in sales of fake Old Masters.

Banksy Gallerist Calls It Quits

Steve Lazarides, who started out as the driver, photographer and later dealer for street artist Banksy, is leaving gallery life. Lazarides said that he entered the art world to “promote a subculture that was being overlooked, and that’s gone now.” His first project post-gallery life is to sort through the 12,000 photographs he took over 11 years with Banksy and publishing a book titled Banksy Captured.

ASIA

Art Recovery International Calls for the Return of a Painting They Allege Was Stolen from a UK Residence in 1984

Art Recovery International seeks intervention from the International Council of Museums (ICOM) in the return on a painting, The Portrait of Miss Mathew, later Lady Elizabeth Mathew, sitting with her dog before a landscape, which was allegedly stolen from the home of Sir Henry and Lady Price in East Sussex in 1984. The painting is currently located at Tokyo’s Fuji Art Museum, an ICOM member. The museum is contesting the claim.

The Pushkin State Museum of Fine Arts Will Soon Take Over Russia’s National Centre for Contemporary Arts

Russia’s National Centre for Contemporary Arts (NCCA), which consists of nine branches, has begun merging with the Pushkin State Museum of Fine Arts in Moscow as part of Pushkin’s ambition to open a “Pushkin Modern.” Vladimir Medinsky, Russia’s minister of culture, announced the merger in July, saying that NCCA staff had requested the merger after a series of ideological and financial scandals.

How a $20 Million Consignment Was Decided by a Game of Rock, Paper, Scissors

In the spring of 2005, a Japanese electronics giant decided to auction off works from its art collection worth about $20 million. The collection included works by Paul Cézanne, Camille Picasso, Vincent Van Gogh, Paul Gauguin and others. Unable to choose whether to consign with Sotheby’s or Christie’s, the company president decided that representatives from each company would meet at the Tokyo office and compete in a game of rock, paper, scissors. Christie’s chose scissors and Sotheby’s chose paper, and we all know scissors cut paper

© 2019 Wilson Elser

Bronze, Shape, Glow: A Copyright Tale Destined For Broadway

Stores like Aldi are increasingly popular with UK consumers as a result of offering “copycat” products of well-known brands at drastically lower prices. However, with this rise in popularity, brand owners and creatives are being increasingly frustrated by finding their products and ideas at the mercy of imitation products.

One such aggrieved party was well-known makeup brand Charlotte Tilbury (Tilbury), who found their “Starburst” lid design and the “Powder Design” of their “Filmstar Bronze and Glow” set had provided the ‘inspiration’ for Aldi’s own “Broadway Shape and Glow” set. Tilbury filled a UK High Court claim for copyright infringement over the products shown below, with Aldi adamantly rejecting that any copyright had been infringed in their ‘inspired’ makeup set.

The main difficulty Tilbury faced was the fact that it is notoriously hard to claim copyright in mass produced 3D products as English Courts have historically been reticent to consider them “sculptures” or “works of artistic craftsmanship”.

However, Tilbury was successful in arguing that the “Starburst” lid design and the “Powder Design” on their product were original artistic works and as such the product was protected by copyright. Tilbury were able to establish their artistic copyright as “a work need only be ‘original’ in the limited sense that the author originated it by his efforts rather than slavishly copying it from the work produced by the efforts of another person.” Once establishing the existence of copyright in the artistic work the Court had little difficulty in finding that it had been substantially copied by Aldi for its “Broadway Shape and Glow” set and summary judgement was granted in Tilbury’s favour.

This case not only marks a success for the aggrieved brands and creatives who feel short changed by “Like brand inspiration” products but also provides some interesting learning opportunities for brand owners in the quest to protect their designs. Tilbury was successful in arguing copyright infringement due to the original artistic “starburst” element in its product design, the elements where the copyright lay. Brand owners may consider incorporating similar artistic elements into their products to act as a form of protection against imitators or at least provide ammunition for a copyright infringement claim should they need it.

Click here for the Judgement.

Copyright 2019 K & L Gates

Article by Serena Totino and  Daniel R. Cartmell of K&L Gates.
For more copyright cases see the Intellectual Property law page of the National Law Review.

Will the Supreme Court Weigh in on the Copyright Lawsuit of the Decade?

When two tech titans clash in court, the outcome can reverberate widely. In what has been dubbed the “copyright lawsuit of the decade,” Oracle sued Google in 2010 for infringing its copyrights in 37 Java Application Programming Interface (API) packages used in Google’s Android software platform for mobile devices (as explained further below, API packages consist of pre-written computer programs that perform specified functions).

At the first trial in 2012, a jury found that Google infringed Oracle’s copyrights. The judge, however, concluded that the Java API packages were not copyrightable as a matter of law. In 2014, the Federal Circuit reversed and remanded for a second jury trial on Google’s fair use defense. Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014). The Supreme Court denied Google’s cert petition.

In 2016, a second jury found in favor of Google on its fair use defense, and the trial court denied Oracle’s motion for judgment as a matter of law. In 2018, the Federal Circuit overturned the jury’s verdict, concluding that Google’s use of the 37 Java API packages was not fair use as a matter of law. Oracle Am., Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018).

On January 24, 2019, Google petitioned the Supreme Court for a writ of certiorari. It identified the issues presented as:

(i) whether copyright protection extends to a software interface; and

(ii) whether Google’s use of a software interface in the context of creating a new computer program constitutes fair use.

The Federal Circuit’s rulings sent shockwaves through the software industry, and fifteen parties—ranging from corporations like Microsoft to software-related associations, and intellectual property scholars—filed amicus briefs in support of Google’s petition. Microsoft warned that the Federal Circuit’s approach “threatens disastrous consequences for innovation” in the software industry by depriving third parties of access to and reuse of functional code used to “facilitate interoperability across myriad software platforms and hardware devices.” An association representing over 70,000 software developers worldwide asserted that the Federal Circuit’s conclusions had spawned confusion concerning whether longstanding practices such as sharing libraries of common software functions constitute copyright infringement. Likewise, Professor Peter S. Menell and Professor David Nimmer (the editor of Nimmer on Copyright) maintained that the Federal Circuit had “upended nearly three decades of sound, well-settled, and critically important decisions of multiple regional circuits on the scope of copyright protection for computer software.”

On March 27, 2019, Oracle filed its opposition to the petition. The tech giant identified the issues as:

(i) Whether the Copyright Act protects Oracle’s computer source code that Google concedes was original and creative, and that Oracle could have written in any number of ways to perform the same function?

(ii) Whether the Federal Circuit correctly held that it is not fair use as a matter of law for Google to copy Oracle’s code into a competing commercial platform for the purpose of appealing to Oracle’s fanbase, where Google could have written its own software platform without copying, and Google’s copying substantially harmed the actual and potential markets for Oracle’s copyrighted works?

After Google filed its reply, the Supreme Court invited the Solicitor General to file a brief expressing the views of the United States. This is where the case presently stands.

The Java Programming Language

Oracle’s predecessor, Sun Microsystems, Inc. (“Sun”) developed the Java programming language to allow programmers to write programs that run on different types of computing devices without having to rewrite the programs from scratch for each type of device. To that end, Java’s motto is “write once, run anywhere.”

To provide programmers with shortcuts for executing specific functions, Sun created the Java API, which consists of packages (akin to a bookshelf in a library), classes (akin to books on the shelves), and methods (akin to “how-to” chapters in each book). See Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974, 977 (N.D. Cal. 2012), rev’d and remanded, 750 F.3d 1339 (Fed. Cir. 2014).

Each method performs a specific programming function (for example, choosing between the greater of two integers). The key components of a method are: the “declaring code” that defines the package, class and method names, form of inputs and outputs, and the “implementing code” that provides instructions to the computer concerning how to carry out the declared function using the relevant inputs.

Google began negotiating with Sun in 2005 to license and adapt Java for its emerging Android software platform for mobile devices. After those negotiations failed, Google decided to use Java anyway, and copied verbatim the declaring code in 37 Java API packages (consisting of 11,500 lines of code), as well as the structure and organization of the packages (referred to as the SSO). However, Google wrote its own implementing code for the relevant methods.

In 2007, Google began licensing the Android platform free of charge to smartphone manufacturers. It earned revenue—$42 billion from 2007 through 2016—from advertising on the phones. In 2010, Oracle acquired Sun, and promptly sued Google for infringement.

The Copyright Question

In 2014, the Federal Circuit reversed the lower court’s ruling that the declaring code and SSO were not entitled to copyright protection. Importantly, while the Federal Circuit only has jurisdiction over patent-related matters, it handled the appeal because Oracle’s complaint had also included patent claims (which the jury rejected). The Federal Circuit, however, applied Ninth Circuit law to the copyright questions presented.

The Federal Circuit began by noting that “copyright protection extends only to the expression of an idea—not to the underlying idea itself.” Moreover, to the extent the particular form of expression is necessary to the use of the idea, then using the expression to that extent is not copyright infringement. This is known as the “merger doctrine” which states that if there are a limited number of ways to express an idea, the idea is said to “merge” with its expression—and the expression becomes unprotected. Further, the “scenes a faire doctrine,” bars certain standard, stock, or common expressions from copyright protection.

Thus, to use a simple example, while a book on arithmetic can be copyrighted, the idea of adding, subtracting, multiplying, and dividing cannot be. Moreover, if using symbols like “+” and “x” are necessary or commonly used to express the concepts of adding and multiplying, those expressions are not copyrightable.

Applying these principles, the Federal Circuit first observed that copyright protection extends to expressive elements of a computer program. It then rejected Google’s argument that Oracle’s expression merged with unprotectable ideas, noting that Oracle had unlimited options as to the selection and arrangement of the declaring code that Google copied. The Federal Circuit also rejected Google’s reliance on the scenes a faire doctrine. Because at the time the code was written, its composition was not dictated by external factors like “mechanical specifications of the computer” or “widely accepted programming practices within the computer industry.”

The Fair Use Question

After determining that Oracle’s declaring code and SSO were subject to copyright protection, the Federal Circuit remanded for a jury trial on Google’s fair use defense. As noted, the jury found that Google had established the defense, but the Federal Circuit overturned that verdict.

The fair use defense is a judge-made doctrine that has been incorporated into the federal copyright statute as Section 107, which provides that “the fair use of a copyrighted work…for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” To determine whether particular copying constitutes fair use, the statute identifies the following factors as:

(1) “The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.”

(2) “The nature of the copyrighted work.”

(3) “The amount and substantiality of the portion used in relation to the copyrighted work as a whole.”

(4) “The effect of the use upon the potential market for or value of the copyrighted work.”

The Federal Circuit ultimately concluded that because Google’s copying was for a highly commercial purpose, was not qualitatively insignificant, and substantially harmed Oracle’s own licensing efforts; the copying was not fair use as a matter of law, notwithstanding the jury’s verdict to the contrary.

Because APIs are key to broad acceptance of standardized software functions, IMS computer and software expert Dr. John Levy believes that were the Supreme Court to affirm the Federal Court’s ruling, it may severely limit the spread of useful API’s to important code bases. As an example, Dr. Levy notes that a small company will usually want to make its declaring code available to all users and developers, so that the underlying application code will get the broadest possible use and market share. The developer counts on having a competitive set of implementing code to make money.

According to Dr. Levy, the Federal Circuit may have been influenced by the fact that Google made so much money using the copied declaring code. But as evidenced by the large number of amicus briefs, the broader software industry cares more about defending a broad reading of “fair use” than assessing damages against companies who make money from copied declaring code.

Dr. Levy sees the issues in the Oracle case as similar to those in a case he worked on as an expert back in the 80386 chip days. In that case, Intel owned the instruction set of the 386 chip. But because Intel customers didn’t want to be limited to a single source for these Intel-compatible processors, Intel licensed the instruction set to other chip manufacturers.

“One licensee produced chips that performed the Intel-owned instruction set. Intel sued that licensee for copyright infringement of the underlying microcode (the implementation of the instruction set in the chip designed by the licensee company),” recalled Dr. Levy.

A federal court ruled that the microcode (firmware) was indeed copyrightable, but that there was no infringement under the “limited expression” doctrine explained above. There simply were not many ways to implement the licensed instructions in microcode, and therefore the licensee’s implementation did not infringe Intel’s own implementation. In the Oracle case, however, the Federal Circuit concluded that there were many ways for a programmer to select and arrange the declaring code that Google copied.

© Copyright 2002-2019 IMS ExpertServices, All Rights Reserved.

This article was written by Joshua Fruchter of IMS ExpertServices.
For more copyright cases, see the National Law Review Intellectual Property law page.

Iron Man Composer Battles Tech Giant Sony and Ghostface Killah

copyright infringementThe US Court of Appeals for the Second Circuit ruled in favor of the composer of the 1960s Iron Man theme song, finding material facts in dispute as to whether the song was commissioned as a work for hire. Jack Urbont v. Sony Music Entertainment, Case No. 15-1778-cv (2d Cir., July 29, 2016) (Hall, J).

In 1966, Jack Urbont wrote the theme songs for various characters in the “Marvel Super Heroes” television show, including Iron Man. In 2000, hip hop artist Dennis Coles (known as Ghostface Killah), Sony and Razor Sharp Records produced and released the album “Supreme Clientele” featuring the Iron Man theme song on two tracks, prompting Urbont’s June 2011 copyright infringement lawsuit against Sony, Razor Sharp Records and Ghostface Killah. At trial, the district court found that the defendants had standing to challenge Urbont’s ownership of the copyright under the “work for hire” doctrine, and granted the defendants’ motion for summary judgment on standing, finding that the Iron Man song was a “work for hire” composed at Marvel’s instance and expense, and that Urbont had not presented evidence of an ownership agreement with Marvel sufficient to overcome the presumption that the work was for hire. Urbont appealed.

Third-Party Standing to Assert Right to Hire Defense

On appeal, Urbont cited the US Court of Appeals for the Ninth Circuit’s 2010 holding in Jules Jordan Video v. 144942 Canada,which rejected third-party standing under the work for hire doctrine. The Second Circuit rejected Urbont’s argument, explaining that in that case both potential owners of the copyright were parties to the lawsuit, neither of which disputed ownership. Here, Marvel was not a party to the suit, and a plaintiff in a copyright infringement suit bears the burden of proving ownership of the copyright when ownership is challenged either by an employer or a third party. Citing Island Software & Computer Serv. v. Microsoft, the Court explained that Sony, a third party to an alleged employer-employee relationship, did have standing to raise the “work for hire” defense to try to refute Urbont’s alleged ownership of the copyright.

The Copyright Act Claim

Under the Copyright Act, an employer is considered an “author” of a copyrightable work in the case of works made for hire. Citing to its 2013 case Marvel Characters v. Kirby, the Second Circuit explained that absent an agreement to the contrary, a work is made for hire when it is “made at the hiring party’s ‘instance and expense,’” i.e., when the employer induces the creation of the work and has the right to direct and supervise the manner in which the work is carried out.

In reversing, the Second Circuit credited the district court’s reliance on evidence supporting the assertion that the song was a work for hire developed at Marvel’s instance, including that Urbont had not previously been familiar with the Marvel superheroes and had created the work from material given to him by Stan Lee, who had the right to accept or reject his song. However, the Court concluded that Urbont’s evidence that he retained all creative control over the project and that Lee was not permitted to modify the work, coupled with his testimony that he approached Lee, not the other way around, weighed against finding that the work was created at Marvel’s instance.

As for the expense factor, Urbont claimed that he created the song with his own tools and resources, including renting a recording studio, supported his assertion that it was he, not Marvel, who bore the risk of the work’s success. Although the $3,000 payment Urbont received weighed in favor of a finding that the work was created at Marvel’s expense, Urbont’s testimony that he also received royalties undermined such a conclusion. The Second Circuit explained that while a hiring party’s payment of a specific sum in exchange for an independent contractor’s work satisfies the “expense” requirement, the payment of royalties weighs against finding a “work for hire” relationship. The Court thus found that a genuine issue of material fact remained as to whether the Iron Man composition was a work for hire created at Marvel’s instance and expense.

Finally, the Second Circuit found that the district court erred in concluding that Urbont failed to produce evidence to rebut the presumption that Marvel owned the work, noting that on summary judgment, the district court was required to accept Urbont’s testimony in support of his position.  The Court reversed and remanded the case back to the district court.

ARTICLE BY Andrea Coronado of McDermott Will & Emery

© 2016 McDermott Will & Emery

Led Zeppelin Prevails in Copyright Infringement Case: Now on Appeal in Ninth Circuit

Led Zeppelin Copyright InfringementIn May 2014, the Trust acting on behalf of the estate of Randy Wolfe (a/k/a Randy California) of the rock group Spirit filed a copyright infringement suit against Led Zeppelin related to the first chords in the band’s most famous song, “Stairway to Heaven.” See Skidmore v. Led Zeppelin, 15-cv-03462, U.S. District Court, Central District of California(Los Angeles). The Trust brought the case against Led Zeppelin after a 2014 Supreme Court decision opened the door for a broader interpretation of the time frame to seek damages for copyright infringement under the U.S. Copyright Act. See Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014). The Petrella decision limited the application of the defense of laches and permitted lawsuits to be brought involving older copyrighted works with more recent acts of infringement that fall within the statute of limitations pursuant to 17 U.S.C. § 507(b). Hence, in the Skidmore case, despite the decades-old circulation of “Stairway to Heaven,” the plaintiffs decided to bring suit against Led Zeppelin within three years after the release of a re-mastered version of the famous song.

In Skidmore, the crux of the plaintiffs’ case was that Led Zeppelin (with Jimmy Page and Robert Plant as co-authors) allegedly stole the opening passage of “Stairway to Heaven” from “Taurus,” an instrumental by Randy Wolfe that can be found on Spirit’s 1968 debut album. The dispute largely concerned a brief musical passage 45 seconds into “Taurus.” It was alleged that the iconic opening guitar sequence of “Stairway to Heaven” (which was released in 1971, three years after “Taurus”) was copied from “Taurus.”

The Trust also sought an injunction against the release of any additional albums containing the song “Stairway to Heaven” in an attempt to obtain a writing credit for Wolfe, who died in 1997. This case was not the first time Led Zeppelin had been accused of copying another artist’s work. The Trust’s lawsuit listed other songs for which Led Zeppelin had paid settlements over songwriting credits, including “The Lemon Song,” “Babe I’m Gonna Leave You,” “Whole Lotta Love,” and “Dazed and Confused.”

On April 11, 2016, Los Angeles District Judge Gary Klausner ruled that there were enough similarities between “Taurus” and “Stairway to Heaven” for a jury to decide the claim. On June 23, 2016, following a trial, an eight-member panel jury unanimously found that the similarities between the songs did not amount to copyright infringement. The decision came one year after a jury (in a lawsuit filed in the Central District of California before Judge John A. Kronstadt) ruled that Robin Thicke’s “Blurred Lines” (produced by Pharrell Williams) infringed Marvin Gaye’s “Got to Give It Up.” In the Blurred Lines case, Thicke and Williams were ordered to pay $7.4 million (reduced to $5.3 million) and ongoing royalties to Gaye’s family. The Blurred Lines decision is currently on appeal in the Ninth Circuit.

The Trial

Jurors in the Led Zeppelin case had to decide two issues: First, was it plausible that members of Led Zeppelin had sufficient opportunity (i.e., access) to hear “Taurus” before they wrote “Stairway to Heaven”? Second, if so, were the opening chords of “Stairway to Heaven”  “substantially similar” to “Taurus”?

Issue 1: Access

Led Zeppelin’s guitarist, Jimmy Page, singer, Robert Plant, and bassist, John Paul Jones, all took the stand to testify about their recollections of Spirit and whether they attended Spirit performances, listened to Spirit music or recalled playing the same shows. The Led Zeppelin band members also were questioned by the plaintiffs’ counsel on how “Stairway to Heaven” was created 45 years ago. The jurors sided with the plaintiffs on the issue of access, finding that Page and Plant would have been familiar with “Taurus.” Specifically, the jury relied on the evidence presented in court that (1) Page had the Spirit record in his collection of more than 10,000 records and CDs, (2) Spirit had appeared as an opening act for Led Zeppelin and (3) other members of Spirit testified to encounters with Led Zeppelin members.

Issue 2: Substantial Similarity

The jury next had to determine whether the famous opening to “Stairway to Heaven” was substantially similar to the instrumental opening portion in “Taurus.” Both sides presented expert musicologists, who offered divergent opinions on the musical composition of “Taurus.” Defense experts testified that the two songs shared little in common other than a chord sequence that dates back 300 years. Plaintiffs’ experts said there were significant other likenesses, including the use of arpeggios, similar note combinations, pitch and note durations.

However, the jury never heard the original recording of “Taurus,” notwithstanding its conclusion that Led Zeppelin had access to the recording. The original recording of “Taurus” was made prior to 1972, when sound recordings were not subject to federal copyright protection. The Sound Recording Act of 1971 (effective February 15, 1972) changed federal copyright law to include protection for sound recordings. Instead, jurors had to hear and rely on expert renditions of the sheet music (i.e., the underlying musical notes) for “Taurus” to assess and decide the issue of “substantial similarity” to “Stairway to Heaven.”

Notably, the Trust’s expert played the sheet music on guitar, the instrument used in recorded versions for both “Taurus” and “Stairway to Heaven,” whereas Led Zeppelin’s expert decided to play the sheet music on piano. Irrespective of similarities in the sound recordings, theSkidmore case was decided based on the only protectable aspect – the musical composition of “Taurus” and not the sound recording. During deliberations, the jurors asked to see clips of each expert rendition more than once. Ultimately, the jury returned a unanimous verdict in favor of Led Zeppelin.

Comparisons and Impact: Blurred Lines and Led Zeppelin Cases

The “Stairway to Heaven” infringement decision came one year after a jury ruled Robin Thicke’s “Blurred Lines” infringed Marvin Gaye’s “Got to Give It Up.” In the Blurred Lines case, the eight-member jury also returned a unanimous decision based on the musical composition of “Got to Give It Up” and not the actual recorded version of Gaye’s song. However, the outcome for Led Zeppelinwas decidedly different from the Blurred Lines ruling.

The Blurred Lines decision, and its large award of damages, has been followed by a noticeable uptick in copyright infringement claims surrounding popular songs and recordings. Well-known artists such as Sam Smith, Ed Sheeran, Robin Thicke and Justin Beiber are making news for copyright infringement claims being brought against them. However, the recent verdict in favor of Led Zeppelin suggests that limitations inherent in protected music can limit a determination of infringement. Even though the jury sided with the plaintiffs regarding Led Zeppelin’s access to Spirit’s “Taurus,” the jury concluded that the protected elements of “Taurus” − the musical composition in the sheet music and not the sound recording − were not “substantially similar” to “Stairway to Heaven.” It is too soon to say whether the Blurred Lines outcome or the Led Zeppelinresult will be the norm.

Notwithstanding the appeal, the Led Zeppelin case reinforces the notion that different aspects of an entire song, specifically the musical composition, the instrumentation and the final recording, each are subject to analysis in a potential copyright infringement claim, and the analysis can dictate different outcomes in claims of infringement.

As for the appeal, the Trust’s attorneys are challenging the jury verdict in the Ninth Circuit. The notice of appeal reads:

Please take notice that Plaintiff Michael Skidmore, Trustee for the Randy Craig Wolfe Trust, hereby appeals to the United States Court of Appeals for the Ninth Circuit from the final judgment entered on June 23, 2016, as well as any and all interlocutory rulings, decisions, and orders that gave rise to the judgment and are merged therein.

The filing does not provide legal arguments for why the case should be reconsidered, making it difficult to anticipate the basis for appeal. Furthermore, Led Zeppelin’s publishing company is seeking more than half a million dollars from the Trust in legal fees already incurred for the defense, triggered by a 2016 U.S. Supreme Court decision that allows prevailing parties in copyright cases to seek legal fees. See Kirtsaeng v. John Wiley & Sons, Inc., 136 S.Ct. 1979 (2016). Given the appeal, these fees will only increase. This case and the Blurred Linescase are ones to watch as their outcomes could impact the music industry and copyright law in general.

ARTICLE BY Lamis G. Eli of Wilson Elser Moskowitz Edelman & Dicker LLP
© 2016 Wilson Elser

Band Led Zeppelin Says Song Chords Too Common to Copyright

Can you say “Stairway to Heavy Royalties?” You may have imagined the old Led heads, Robert Page and Jimmy Plant, sitting in a grungy garage somewhere back in the seventies striking those iconic four chords for the first time and truly crafting the song “Stairway to Heaven” from whence there was none. Now you may have to change that image and imagine them sitting in the front row of a Spirit concert feverishly jotting chord progressions down on a notepad. That’s what a former member of the band Spirit is claiming in a lawsuit over a song that has allegedly grossed in excess of $525 million.

Led Zeppelin, Music, CopyrightHave you even heard of the seventies band Spirit? Apparently Led Zeppelin used to tour with them back in the 1960’s and former Spirit band members claim they often saw Page and Plant sitting in the front row at their concerts—with perfect front and center seating to rip off a catchy riff. Robert Wolfe, who wrote the song “Taurus,” which opens with the legendary riff, reportedly thought about suing for copyright infringement as far back as the 1980’s, but his family stated he could not afford it. It’s fun to ponder the type of expert vetting we might do in this case: “Did you attend Woodstock?” “Where were you in proximity to the stage?” “Were you able to grasp a true ‘concept and feel’ for the music?” You may find that comical, but that is the exact question the judge pinpointed as the key issue in this matter—“a subjective assessment of the ‘concept and feel’ of the two works”—a determination he believes he is no more qualified to make than a jury, which is why the case is going to trial.

Another interesting aspect of this case is also the age of the music. In 2016, we’re nearing fifty years since “Stairway to Heaven” was written. Meaning, the case could have wide implications for the music industry as a whole. If a ruling comes back that Led Zeppelin ripped off a copyright, it may embolden many other wayward artists out there who may be carrying a long-time grudge and feel their songs were swiped as well. In short, a ruling in favor of Spirit could potentially boost spirits and spark many copyright suits. Established record labels and big icon artists who have been raking in the royalties for decades have plenty to worry about with this trial.

Led Zeppelin has countered, claiming a descending chromatic four-chord progression is so common in the music industry that it simply cannot be copyrighted. Meaning, it doesn’t matter how obviously similar the songs may be or whether they have the same ‘concept and feel,’ because the riff is too common to copyright. If this argument holds, Spirit has nothing to protect. But if you’re playing the intro to “Stairway to Heaven” in your mind right now, I’ll bet you find it unique enough to try to defend.

If you can’t conjure the song on your own, I’ll bet you’re eager now to hear the two songs side-by-side? So is the jury. Go on. You can jam out on the job as long as it’s still considered “work.” Give it a listen.

ARTICLE BY Annie Dike of IMS ExpertServices

© Copyright 2002-2016 IMS ExpertServices, All Rights Reserved.