Monday, August 29, 2011

Music Publishers Settle with YouTube...

In a similar lawsuit to the Viacom v. YouTube dispute, music publishers had sued YouTube for copyright infringement.

However, the court found that YouTube was not an infringer because it responded to notices. The decision was appealed but now the National Music Publishers Association has settled its claim. Apparently, the settlement will allow for a collection of royalties to Harry Fox where ads from YouTube appear with user generated videos featuring a songwriters and publisher’s music.

YouTube will use information provided by the NMPA to identify the copyrighted works. No word on whether or what type of license has been arranged between the parties regarding the information provided by the NMPA. (Viacom has accused YouTube of requiring licensing which allows YouTube to use the submissions for far more than just the mere purpose of identifying infringement and infringing works. See previous blog entry.)

Does this mean that a settlement is in the near future for Viacom and YouTube? Highly doubtful given the acrimony between the parties.

Friday, August 26, 2011

Bond...One Really Big Bond

In the never ending saga of the Bratz case, there is a new decision in the case. First, Mattel was able to in essence put MGA out of business until the Ninth Circuit reversed the decision for Mattel and ordered a new trial. At the new trial, MGA was successful and Mattel was order to pay hefty damages.

Now if Mattel wants to appeal to the Ninth Circuit, it will require a $315 million dollar bond. (Mattel’s damages totaled $310 million.) Mattel has until August 23, 2011 to post the bond.

Monday, August 22, 2011

8th Circuit Decides the 3rd Dimension Adds Character

Recently, the 8th Circuit decided an appeal in Warner Bros. v AVELA.  AVELA makes memorabilia such as snow globes, puzzles, t-shirts and other products primarily from movies.  Warner Bros. sued AVELA for copyright infringement for use of materials associated with Gone With The Wind, The Wizard of Oz and Tom & Jerry.  Some of the images were based on posters and still photographs which AVELA alleged fell into the public domain.  These promotional pieces were created before the motion pictures were published.  These works were all subject to the 1909 Copyright Act.  The Eighth Circuit agreed that several of the images were published even though there were restrictions on the use of the promotional works, the predecessors in interest to plaintiff intended the works to be provided to the public.  Some of the works were published without any copyright notice.  Prior to 1989, copyright notices were required.  Several works fell into the public domain due to the failure to put a copyright notice on the works.  In addition, some of the works fell into the public domain because the works were not renewed.  (Under the 1909 Act, copyrighted works were required to be renewed every 28 years to maintain the registration.) 

A copy of the decision is available here

There are 2 troubling aspects of the decision.   (Full disclosure:  I previously worked on this brief before the district court.)

First, the Court decided that where the press photos such as Judy Garland as Dorothy in The Wizard of Oz which were created before the movie was complete were in the public domain.  However, the Court found that the combination of the photo with the phrase, “There’s no place like home,” constituted copyright infringement of the Warner Bros. character.  This does not make sense.  Clearly, the phrase, “There’s no place like home” is not copyrightable in and of itself.  (Short phrases are not copyrightable.)  Further, a similar phrase “There is no place like home” was used in the Frank L. Baum novel from which the movie is based.  (The Frank L. Baum book was published in 1908 – which places the book in the public domain since before AVELA started creating the memorabilia.)    

Second, the Court decided that the 2-dimensional works such as puzzles and t-shirts that are based on the works that fell into the public domain were not infringing and thus AVELA should not be permanently enjoined.  However, 3-dimensional works such as snow globes based on works that fell into the public domain were infringing and thus subject to a permanent injunction.  The Court reasoned that the 3- dimensional works were based on the characters from the movies (owned by Warner Bros.). 

This seems contradictory.  Clearly, derivative works based on works in the public domain are subject to copyright protection.  However, the Court finds that AVELA infringed Warner Bros. copyright for adding a third dimension to the posters and pictures in the public domain.  The Court comments about the length of a nose unable to be determined in a 2-dimensional work. Even if true (which I have some doubt – there is such a thing as scale and proportion and multiple angles which may create some level of determination), why wouldn’t these considerations be considered scenes a faire or subject to an artist’s interpretation and thus, capable of its own separate copyright? 

Given the recent Bratz decision limiting the infringement of derivative works for the different faces of the different generations of Bratz dolls because there were only a limited number of ways to create faces and facial expressions, the Eighth Circuit seems to disagree.  Cf.  Mattel, Inc. v. MGA Entm’t, Inc., 2010 U.S. App.  LEXIS 26937, *22 - *32 (9th Cir. 2010).  There is only so many ways which the back of a head or the dimensions of article of the characters’ clothing or costumes can be drawn. 

What the Eighth Circuit has done is not only remove the works from the public domain (in the instance of the posters / pictures used in connection with short phrases) but also has effectively claimed that copyrights in characters can extend to prevent derivative works in the public domain if the derivative works are three-dimensional.  Yet if both the original work in the public domain and the derivative work are both two-dimensional, then there is no infringement. 

A finding that a copyright in a character extends to prevent the creation of three dimensional derivative works based on two-dimensional works in the public domain does not make sense.   Such line-drawing fits no purpose.  It creates not only a bad rule and precedent but an impossibility, limiting the creation of new works.  Preventing derivative works from being made from works in the public domain was not the intended result of the Copyright Act.   

Friday, August 12, 2011

Follow-up on ICE Domain Name Seizure

As blogged previously, the U.S. Customs has seized domain names from those who post infringing works on their websites.  One of the seizures was for and owned by Puerto 80 Projects S.L.U. (“Puerto”). It is alleged that the two referenced websites collected a list of third party links to live sporting events and pay-per-view events. 

Puerto sought to obtain the domain names back seeking immediate release of the seized property. The U.S. government argued that Puerto could not show substantial hardship and giving back the domain names would only lead to further criminal acts. 

Puerto claims harm because of a reduced number of visitors. (Puerto operates other websites such as that were not seized.) The Court rejected this as substantial harm. Puerto also raised the First Amendment; however, the court rejected this argument finding that the forums for comment are not the purpose of the websites seized. The court finds the purpose of the two seized websites is to catalog links to copyrighted materials.  See the Court's August 4, 2011 order here.

The court did not reach the question of whether giving back the domain names would only foster criminal activity but may take up the question when Puerto’s motion to dismiss is heard next month.

Thursday, August 4, 2011

Things to Know about Copyright and your Website

Copyright protects the expression in tangible form of original works of authorship.  A website – like a brochure, an advertisement, a press kit, or a press release – is a valuable asset and marketing tool which merits protection.
  1. Create and use your own images. The best way to avoid infringement claims against your website is to create your own original images for display. If you are not creating your own images...

    1. Get permission before copying internet images. Copying images from the internet is controversial. If the owner of the image gives permission, you can use the image. Many times, however, the purported owner of the image is not the actual owner (i.e. the image was obtained falsely), which can lead to an infringement claim. The copying of images created by third parties without permission is infringement. See, Inc. v., Inc., 679 F. Supp. 2d 312 (E.D.N.Y. 2010) (where defendant used over 900 copyrighted images from Plaintiff's website).

    2. Follow the terms of the images’ license agreement. Taking images from purchased software (i.e. Microsoft Word Clip-Art) is not necessarily infringement. By purchasing the software, you have accepted the license agreement terms. It is imperative to review the license to find out how the images may be used. For example, sample language from the Microsoft Service Agreement states that Microsoft product users that have access to media images, clip art, and the like, “may copy and use the media elements in projects and documents.” They may not, however, “(i) sell, license, or distribute copies of the media elements by themselves or as a product if the primary value of the product is the media elements; (ii) grant your customers rights to further license or distribute the media elements; (iii) license or distribute for commercial purposes media elements that include the representation of identifiable individuals, governments, logos, trademarks, or emblems or use these types of images in ways that could imply an endorsement or association with your product, entity or activity; or (iv) create obscene works using the media elements.”  The use of licensed images from the internet may not be infringement, as long as you follow the terms of the license. See v. Engle, 10-CV-00588-MSK-MEH (D. Col. Feb. 18, 2011) (where the use of a copyrighted photo on a website without a license was a violation of the plaintiff’s copyright).

  2. If possible, use only original text. When preparing text for a webpage, the text should be original, written specifically by the creator. The use of another’s written work without permission is copyright infringement. See Cvent v. Eventbrite, Inc., 96 USPQ2d 1798 (E.D. Va. 2010) (where the defendant’s online directory information was “scraped”, or copied, from plaintiff’s website)

  3. Avoid making source code available for public use. The source code of a website can also be registered for copyright protection. The copying of registered website source code is an infringement. See Hermeris v. Brandenburg, 10-2531-JAR (D. Kan. Jan. 23, 2011) (where the defendant’s copying of content and source code of the plaintiff’s online document preparation business was copyright infringement).

  4. Video and/or sound recordings should be copyrighted separate from the website. If a website contains video and or sound recordings (such as background music), they should be separately copyrighted (apart from the website itself) as these materials could be easily lifted separately and may have their own independent worth.
  6. Web designers should operate under a work-for-hire contract. To determine whether a work is made for hire, one must first establish whether the work was made by an employee or an independent contractor. See Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). If the work is made by the employee, then the work is generally considered to be a work made for hire, and the employer retains control of the work. If the work is created by an independent contractor, then the work is only a work made for hire if (1) it falls within one of the nine enumerated categories of works in Section 101 of the Copyright Act, and (2) the parties specifically agree in a written document that the work is one made for hire. If these provisions are not met, then the work is not a work made for hire, and the independent contractor is considered the “author” of the work. It is therefore essential to create a written agreement with an independent website designer to ensure that the designer assigns all copyright ownership to the website owner. Companies should also be advised that if their website is created by an independent contractor, there should be indemnification clauses in the assignment to ensure that the work, including the source code, is original.

  7. Register, register, register. U.S. companies are required to obtain copyright registrations in order to bring an infringement action in the United States. In registering copyrights, website owners should identify the portions of the site that are being copyrighted. In addition, if a copyright owner files for registration within three months of the work’s publication, he is entitled to several remedies in a case of infringement potentially including attorney’s fees.

  8. If a copyright owner decides to file a complaint for copyright infringement... Broad language, such as “all texts, photographs, selection, arrangement and compilation”, would be insufficient against a copyright infringement claim. See Salt Optics v. Jand, SACV 10-0828 (C.D. Cal. Nov. 2010) (where specific indication of the infringed portions of a website were necessary to bring an infringement claim).