» copyrights

I recently has the pleasure and good fortune to be a panelist at Thomas Jefferson School of Law’s all-day entertainment law symposium: “From Deals to Disputes and Creators to Lawyers: Film, TV and Videogames in the Age of Remix”. The panel I participated in was called “TV Deals & Disputes: From Reality TV to Hot Litigation”. It was moderated by Judge Greg Mathis, host and star of the nationally syndicated “Judge Mathis” television show. I was very fortunate to share the panel duties with top-notch trial attorney John Shaeffer of Lathrup & Gage LLP in Los Angeles and Marisa Sommerville, an in-house attorney with American Idol Productions.

During my brief presentation, I posed what I thought were six of the most interesting legal questions about the television business I have dealt with in the past year and/or that I anticipate addressing in the coming year. They were:

#6: Copyright Termination: Are TV producers and studios at risk for losing control of some of their most valuable content?

#5: Defamation Claims: Do networks and producers have anything left to worry about in California as a result of California’s tough Anti-SLAPP statute which makes it harder than ever to successfully make a defamation claim?

#4: Copyright Infringement: Should TV content owners be utilizing the reverse-class-action strategies that have been employed by the adult entertainment industry in the last year to stop Internet piracy of TV shows fueled by bit-torrent technology?

#3: Theft of Idea Claims: Is the law changing in California to make it easier for creators of new show ideas to state legal claims for theft of their ideas based on breach of implied contract and breach of confidence theories?

#2: Can Reality TV Formats Be Protected By Trade Dress Law?

And my number 1 most interesting legal question for the TV industry:

#1: Reality TV Show Talent Contracts: Are they fair bargains or unconscionable over-reaching voidable contracts?

In the weeks to come I will try to summarize in future editions of this blog the lively discussions we had regarding these issues.

Back in “the good ol’ days”, Jack Kirby was one of the co-creators of such iconic comic book characters as The Incredible Hulk, Spider-Man and X-Men.  These characters have generated tens of millions of dollars in revenue over the last five decades from everything from comic books to movies to toys and collectibles.  And there is no end in sight.

Kirby passed away not quite twenty years ago, and recently his heirs exercise their right under U.S. copyright law to terminate the transfer to Marvel of his rights in some 45 characters.  [U.S. copyright law specifically gives authors and their heirs the right under certain circumstances to get a so-called "second bite of the apple"  by terminating copyright transfers that might have been made when the author was young, hungry and willing to give up what later became valuable rights for a pittance].

Marvel didn’t take kindly to the termination notices issues by the Kirby estate and fought back with a Federal Court lawsuit to determine whether or not the termination notices were valid and enforceable.  The key legal issue was whether Kirby’s work for Marvel was done on a “work-for-hire” basis and therefore NOT subject to termination under the law.  [A work-for-hire is one of the categories of works where the right of termination does not apply].

This week the Court in New York rendered its verdict:  Marvel wins and the Kirby estate loses.  In a well-written (regardless of which side of the case you support) 50 page legal opinion, the Judge detailed the history of the relationship between Kirby and Marvel and undertook a fairly detailed analysis of the facts and the applicable law on his way to rendering his opinion that Kirby’s work for Marvel was a work-for-hire and thus the transfer of rights was not subject to termination.

The Kirby estate has already announced that it will file an appeal to a federal appeals court.

Why is this case important?

1.  If you are interested in the history of some of the most famous comic book characters in history, the Court’s opinion is a treasure-trove of information.

2.  The case also details what should and shouldn’t be done both in terms of documenting the relationship between a creative working for an employer AND with respect to issuing copyright transfer termination notices.

3.  This opinion and the inevitable legal appeal will help to shed some light on the sometimes-difficult legal issue of what was a work-for-hire under the old Copyright Act of 1909 (effective until 1978) and the current Copyright Act.

Stay tuned for more developments.

We believe in the copyright law. It’s been part of our laws since the Constitution was enacted. It’s there for a good reason: “to promote the progress of science and useful arts”. We advised and represent quite a few copyright owners. But every so often an over-zealous copyright owner goes too far. This could be one of those cases.

Charles Harris wrote a booklet called “How America Elects Her Presidents”. During the 2008 election, Oprah read aloud on her tv show questions that were based on material in the book. Apparently one of the questions was literally taken from Harris’ book: “Which one of our presidents weighed the most?”. [Answer: William Howard Taft at over 325 pounds]. Harris filed a lawsuit which requested millions of dollars in damages. Oprah filed a Motion to Dismiss the lawsuit and the judge agreed when he ruled that the allegedly infringed parts of his book were not original, and that Oprah’s recitation of the Taft fact, even if she did take it from Harris’ book, was not an actionable copyright infringement.

This is the second in the series:

“IP TIP #2: YOUR EMPLOYEES AND EX-EMPLOYEES MAY BE OUT TO GET YOU:

Do you have employees – or better yet disgruntled ex-employees – who might be tempted to turn you in for a million dollar reward? If so, the Business Software Alliance (“BSA”) has for several years been offering “rewards” of “up to” $1 million to anyone who turns in a business that is using software that is not properly licensed. [The BSA is a trade association made up of a few little companies like Apple, Microsoft, Symantec, Adobe and about 10 others].

And what does the BSA consider to be “not properly licensed”? Even if you purchased the software you are using legitimately, if you haven’t kept the proofs of purchase, receipts, etc., then as far as the BSA is concerned you are guilty of copyright infringement and subject to financial damages of up to $150,000 per infringement. The BSA also considers Microsoft Office to be five (5) separate programs, so if you have an unauthorized copy of Office the BSA claims you are liable for up to $750,000 in damages.

The BSA has been very successful in scaring businesses into paying huge sums of money to avoid a lawsuit. The irony is that sometimes the BSA extracts financial settlements from businesses that exceed what the damages would be if the business went to court and then worked out a court-supervised settlement with the BSA.

Forewarned is forearmed. We have helped several businesses negotiate resolutions of these kinds of disputes with the BSA.

We recently wrote an article called “10 FOR ’10: TEN HOT IP TIPS FOR LAWYERS AND THEIR CLIENTS” which highlights ten interesting intellectual property law legal developments and topics. Rather than reprint the whole article here, we will post one of the tips every few days in order to give each of the tips some room to breathe and an opportunity for comment. Here is the first one:

“IP TIP #1: Photo-Shock:

Did your website designer grab some nice photos from somewhere to put up on your website? If so, it’s time to check the terms and conditions of the license your web designer entered into for you (or didn’t!) to make sure you have the right to use those photos for what you are using them for. Three large photo libraries (Corbis, Getty Images, and MasterFile)have recently embarked on a massive campaign which threatens big-time lawsuits in order to extract thousands of dollars (or more) from innocent businesses who have no idea they are using photos on their websites that aren’t properly licensed.

We have handled several of these cases just within the last year.

One of the main things about the U.S. Copyright Office application/registration is that in the U.S. you need either a pending copyright application on file or an actual issued copyright registration certificate IF you have to sue someone for copyright infringement – depending on which legal jurisdiction you have to file your lawsuit in. So…in our experience it’s better to file a copyright application sooner rather than later and it’s not a question of either filing with ASCAP/BMI/SESAC or the Copyright Office; it’s a matter of needing to do both.”One of the questions we frequently receive is whether it is necessary for a songwriter to register his/her songs with both ASCAP (or BMI or SESAC) and the Copyright Office. One of the main things about the U.S. Copyright Office application/registration is that in the U.S. you need either a pending copyright application on file or an actual issued copyright registration certificate IF you have to sue someone for copyright infringement – depending on which legal jurisdiction you have to file your lawsuit in. So…in our experience it is better to file a copyright application sooner rather than later and it is not a question of either filing with ASCAP/BMI/SESAC or the Copyright Office; it is a matter of needing to do both.

Of all the forms of intellectual property protection – patents, copyrights, trademarks, trade secrets – copyrights are the most affordable to register. Copyrights are the lifeblood of just about every creative type of business, entrepreneur and artist. The general rule in the U.S. is that the copyright in a work MUST be REGISTERED with the U.S. Copyright Office BEFORE a copyright infringement lawsuit can be filed. There are some exceptions to that general rule, most notably in the 9th Circuit due to a recent court decision here. The 9th Circuit consists of California, Alaska, Oregon, Nevada, Arizona, Idaho and Montana. Thus in the 9th Circuit a copyright infringement lawsuit can be filed if the copyright owner has merely filed a copyright APPLICATION, even if the registration certificate hasn’t issued yet. But in states where the general rule applies, it can be a real drag if you have to wait for the Copyright Office to process your copyright application before you can file your lawsuit. That can take anywhere from 8 – 18 months (or more) – UNLESS you want to pay a “Special Handling” fee of $760 on top of the regular $35 fee. The Special Handling fee will usually get the Copyright Office to register your copyright in about 10 days or less. When it comes to copyrights, our motto is: “Register early and often”.

For better or for worse, the wheels of justice can sometimes move at something less than lightning speed. Viacom Inc. filed a $1 billion federal court copyright infringement lawsuit against YouTube more than three years ago and only this week the judge in the case 86d Viacom’s complaint. [In technical legalese the judge granted YouTube's motion for summary judgment]. This doesn’t mean that the case is over, and Viacom may still get its “day in court” – but the granting of the summary judgment motion is a bad sign for Viacom. Now it will have to appeal the court’s decision to the federal court of appeals. We predict that the case will eventually end up in the U.S. Supreme Court. Here is a good article which describes the latest developments in this case in greater detail.

These days, there are so many various ways that musicians (recording artists), songwriters, record labels and music publishers can get paid (or not get paid – as the case may be) when recorded music is played on traditional AM/FM radio, satellite radio, Internet streaming, cable TV, etc., it can make your head spin. For example, for many years three organizations (ASCAP, BMI and SESAC) have collected royalties paid by traditional AM/FM radio stations for playing music and then distributed those royalties to the songwriters who wrote the songs and the music publishers who own the copyrights in them. But due to a long-standing tradition and legal exemption, the singers and musicians who perform on the records played on AM/FM radio stations – as well as the record labels who own the recordings – DON’T get paid any share of the royalties collected by ASCAP/BMI/SESAC from the radio stations. And to make it even more confusing, when those same songs are streamed over the Internet by the companies that own the AM/FM radio stations, everyone – span style=”font-style: italic;”including/span the recordings artists and record labels – DO get paid. Go figure.br /br /Needless to say, it’s a confusing situation for most recording artists, songwriter, music publishers and record labels. But as a starting point, we highly recommend that songwriters and music publishers affiliate themselves with either ASCAP, BMI or SESAC so that they can paid what they are due when the songs they write and publish get played on traditional AM/FM radio and in other public performances. We also recommend, of course, that songwriters and publishers REGISTER THEIR COPYRIGHTS with the U.S. Copyright Office.

We are also recommending that recording artists and record labels get familiar with a non-profit organization called Sound Exchange (click here) so that they can get paid when their songs are played on satellite radio such as SIRIUS/XM, Internet streaming radio stations, etc. We will have a more detailed report about Sound Exchange in an upcoming blog entry. In the meantime, please call or write if you have any questions about these kinds of issues.

U.S. copyright law protects a lot of content – everything from books and art to motion pictures, TV shows, sculpture and choreography – and lots in between. But certain things are not copyrightable: ideas, concepts, short titles and useful articles like clothing designs. But here is a recent article that explores the boundaries of the law regarding clothing designs. It addresses the question of whether those grandiose and fabulous Mardi Gras costumes way down in New Orleans are suitable (no pun intended) for copyright protection. We do not know if this issue will be tested in court or how a judge might rule if presented with the issue. But we do believe that these kinds of Mardi Gras costumes are way more than merely functional clothing designs and therefore they should be copyrightable. If that happens, however, is it just going to clog up the courts with more lawsuits when one Mardi Gras costumer designer decides that another costume design is too close to his or hers and constitutes copyright infringement? We will see.