Legal Blog

Online Service Providers Take Note – The New Requirements for Designating a DMCA Agent Apply to New and Existing Agents

One of the Digital Millennium Copyright Act’s (“DMCA”) cardinal features is protection for internet service providers against copyright infringement claims based on content provided by third parties (the “Safe Harbor”).  Without the DMCA Safe Harbor, countless websites that allow their users to upload or post content would risk liability for the actions of those users.  In order to take advantage of the DMCA Safe Harbor, however, service providers must observe a number of formalities, including registering an agent with the US Copyright Office to receive copyright complaints (commonly dubbed DMCA Takedown Notices).

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Ninth Circuit Affirms Right of Publicity Claims Over Online Photo Licensing Are Preempted By Copyright Act (Maloney v. T3Media)

On April 5th, in a victory for visual content creators and licensors, the Ninth Circuit affirmed the dismissal of a lawsuit brought by former college athletes alleging that T3Media had misappropriated their names and likenesses by selling licenses to photographs from the NCAA Photo Library. The Ninth Circuit held that the athletes’ claims for right of publicity and unfair competition under California law were preempted by the federal Copyright Act.

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Don’t Spy on Me, ISPs: New Law Rolls Back Internet Privacy Rules

On April 3, 2017, President Trump officially signed into law a controversial new bill that repeals the Internet privacy rules adopted by the Federal Communications Commission (“FCC”) in late 2016 (the “FCC Rules”).  The FCC rules, which were set to go into effect in late 2017, required Internet service providers (“ISPs”), such as Verizon, AT&T, and Comcast, to obtain permission from their customers (i.e., obtain “opt-in” consent) before selling or sharing certain sensitive information about such customers’ Internet usage to third parties, including web browsing history, geo-location data, health, child and financial information, social security numbers, app usage history, and the content of emails and other digital messages.  The FCC Rules also required ISPs to take more substantial measures to protect against, and notify customers of, data breaches.  Under the new law, the FCC is also now prohibited from passing any additional privacy restrictions related to the use of customer data.

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Supreme Court Finds Decorative Elements of Cheerleading Uniforms Eligible for Copyright Protection (Star Athletica, LLC v. Varsity Brands, Inc.)

In an opinion issued last week, the Supreme Court held that a “pictorial, graphic, or sculptural” feature incorporated into the design of a useful article—in this case, a cheerleading uniform—is eligible for copyright protection if it satisfies a two-part test: (1) the element can be perceived as a two- or three-dimensional work of art separate from its underlying useful article; and (2) the element would otherwise be protectable if it were perceived in this manner.

By articulating its own version of the “separability test,” the Court has sought to address and resolve the uncertainty and “widespread disagreement” previously surrounding application of the test by providing a uniform, nationwide standard.

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Fox Television Stations, Inc., et al. v. Aereokiller, LLC, et al.: Ninth Circuit Holds FilmOn X Not a “Cable System” Entitled to Compulsory License; Implicates Federal Agency Deference Doctrines

In 2014, the United States Supreme Court, in American Broadcasting Companies v. Aereo, Inc., held that unlicensed re-broadcasts of copyrighted content over the Internet constituted public performances of copyrighted works in violation of content owners’ exclusive rights under the Copyright Act; as part of its discussion, the Court analogized services like Aereo’s to “cable services.”  Emboldened by the Court’s comparison, Aereo competitor FilmOn X (formerly Aereokiller) took the “cable services” ball and ran with it.  FilmOn X has sought to brand itself as a “cable service” under § 111 of the Copyright Act, a status that would entitled it to re-transmit performances of copyrighted works without securing prior consent if it complies with certain regulations and pays a minimal statutory fee – the “compulsory license.”  FilmOn X is now fighting high-stakes copyright battles before several federal appellate courts around the country.  On March 21, the Ninth Circuit dealt a blow to FilmOn X’s western front, becoming the second federal court of appeals (along with the Second Circuit in WPIX, Inc. v. ivi, Inc.) to hold that Internet re-transmitters do not constitute “cable systems” under the Copyright Act. Continue reading

C‐Corp vs. LLC – Tips for Choosing the Right Entity Structure for Your Business

Congratulations!  After months of dreaming about turning your great idea into a real business, you have finally decided to take the plunge and form a company.  After doing some initial research, you have decided to form your company as either a C-Corporation (“C-Corp”) or Limited Liability Company (“LLC”) since both entity structures offer personal liability protection against your company’s debts (meaning creditors of your company are not be able to come after your personal assets for repayment).  However, how do you know which of these two entity structures to choose?

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Flo & Eddie, Inc. v. Sirius XM Radio, Inc.: New York State’s Highest Court Finds No Public Performance Right for Pre-1972 Sound Recordings at Common Law

In a case of first impression, New York’s highest court ruled that New York common law does not include a right to control public performances of pre-1972 sound recordings.

The ruling arises from a years-long legal battle between The Turtles, the 1960s rock band most famous for the hit song “Happy Together,” and Sirius XM, the nation’s largest digital satellite radio service.  In 2013, members of The Turtles (through their company, Flo & Eddie, Inc.) brought a class action lawsuit against Sirius XM in the United States District Court for the Southern District of New York, alleging that Sirius XM violated New York’s common law right of public performance by broadcasting and streaming copyrighted pre-1972 sound recordings, including The Turtles’ songs, without a license.  Sirius XM admittedly broadcasts pre-1972 sound recordings to its paying subscribers without a license, but contends that no license is required – raising a legal question that has been the subject of much dispute in recent years:  whether, and to what extent, copyright law protects the public performance of these decades-old sound recordings. Continue reading

Life is Beautiful, but Trademark Overreach is Not: Attempted Monopolization of Unused Trademarks Costs Mr. Brainwash His Ability to Sue

In a trademark and copyright infringement case brought by Amusement Art, LLC (“Amusement Art”), a company owned by artist Thierry Guetta, most commonly known as Mr. Brainwash, against Life is Beautiful, LLC (“LIB”), a California federal judge ruled that Amusement Art fraudulently utilized the trademark registration system to attempt to secure a monopoly over its artwork and designs. The consequences were severe: the judge dismissed all of Amusement Art’s trademark claims.

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Copyright Termination: A Primer


Copyright termination refers to the termination of a grant—or transfer—of one’s copyright rights. Following termination, those rights that were transferred under the grant return to the creator of the copyrighted work. This termination right allows content creators to renegotiate the terms of their original agreements, or enter into new agreements, effectively giving them a second chance at a better deal when they may not have had the opportunity previously. Not all rights return, however: derivative works previously created under authority of the grant before its termination can continue to be exploited. And, only creators’ U.S. rights revert; to the extent a grant of copyright rights includes foreign rights, such foreign rights do not return to the creator upon termination.

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Star Trek Fan Fiction Copyright Decision Stuns Usefulness of Summary Judgment on Substantial Similarity for Plaintiffs in Ninth Circuit

On Stardate Tuesday, January 3, 2017, Judge Klausner of the Central District of California filed the Court’s summary judgment decision in Paramount Pictures Corp. v. Axanar Productions, Inc., Case No. 2:15-CV-09938-RGK-E.  The ruling, which denied the parties’ dueling motions, is the most important decision for the fictional universe in which Paramount’s Star Trek properties are set since Starfleet’s court martial of Captain James Tiberius Kirk in Season One, Episode 20 of the original Star Trek series.  While the Court’s ripeness and fair use analyses are relatively straightforward, its ruling on substantial similarity could tilt the playing field on the issue towards copyright infringement defendants.  The Court noted that no case in the Ninth Circuit has found for Plaintiffs on substantial similarity at summary judgment and that out of the Ninth’s Circuit’s brace of extrinsic and intrinsic substantial similarity tests, the latter must be reserved for a jury.  Unless that point is clarified at the Circuit level, parties’ litigation budgets should allow for the strong possibility that a jury must weigh even the most obvious instances of substantial similarity. Continue reading