Tag Archives: #copyright

Content in Quarantine: Copyright Best Practices During a Pandemic

By Scott J. Sholder

At a time when we are stuck at home, working or “working” (or, sadly for many, not working) the tenet that content is king has never been more relevant.  From Disney+ releasing “Frozen II” and “Onward” early to help placate restless youngsters, to DreamWorks releasing “Trolls World Tour” for “theatrical” in-house rental, to Instagram sensation DJ D Nice offering his “Club Quarantine” and “Homeschool” IG parties and Spotify playlists, there is something for everyone on one platform or another.  Musicians are even offering special live-streamed performances from their homes (thank you Dave Grohl, Billy Joe Armstrong, et al.).

While the Disney and DreamWorks releases were clearly authorized corporate decisions, the world of quarantine content becomes murkier when one turns their overly scrubbed fingers to the keyboard.  Of course, the lead singers of Foo Fighters and Green Day, respectively, likely have the rights to publicly perform music they wrote, and reports indicate that DJ D Nice made licensing deals to avoid copyright claims stemming from his streaming discotheques.  But in the further corners of social media, the always-gray field of copyright has spawned more than its usual fifty shades in the time of COVID-19.  So, what about musicians performing other artists’ songs?  Fitness instructors on Instagram Live with their playlists thumping in the background?  The Internet Archive[i] offering its own “Emergency Library” of digital copies of books (a decision decried by the Authors Guild and Association of American Publishers, but claimed to be fair use by archive.org)?  Or DJs who, unlike DJ D Nice, did not have permission to publicly perform or remix the music featured during that IG virtual dance party?

At least in the latter case, some DJs and performers streaming on Instagram Live have reported that they’ve had their streams cut short by copyright infringement claims over use of musical content without authorization.  Lesser-known and aspiring artists (who, like many, are out of work at this time) are having their online raves canceled mid-performance.  But at the same time, artists whose content is being used may also be out of work and may be incentivized, perhaps more than usual, to enforce their copyright rights and preserve their dwindling income streams.  This presents a sensitive nuance to an already delicate balance between online content usage and rights enforcement. 

There is no timelier example of COVID-era copyright enforcement than Richard Liebowitz, the infamous plaintiff’s lawyer behind more than 2,000 copyright infringement lawsuits filed by photographers over the last four years.  His business model – which he characterizes as fighting for photographers’ rights, and much of the digital media industry characterizes as “trolling” – has, like COVID-19, mutated to adapt to its new circumstances.  It was recently reported[ii] that, despite quarantine and widespread isolation (or perhaps because of it), Liebowitz’s filings have actually increased, with his firm filing 51 lawsuits between mid-March and early April (39% of all copyright infringement lawsuits filed since the World Health Organization declared a global pandemic).[iii]  Likewise, porn studio Strike 3 Holdings is also keeping busy during the pandemic, having filed a more modest 11 new lawsuits since mid-March.[iv]  The uptick in these types of cases is potentially correlated to the increased use of content during quarantine and the reduced number of opportunities for photographers and other content creators to earn a living.  So, what’s a pandemic hermit to do?

The short answer: the same thing you’d do in pre-COVID life.  Even in these strange times of social distancing and mandatory isolation, the same rules apply even when unauthorized content use is undertaken for seemingly laudable reasons such as alleviating boredom, distracting your kids, or entertaining your Instagram followers.  For better or for worse, there is no exception in the Copyright Act for what’s going on out there, so vigilance in defense as well as enforcement is paramount.  For instance, the test for fair use set out in section 107 of the Copyright Act of 1976 requires a lot more than benevolence in alleviating boredom or even supplementing one’s income during hard times to successfully fend off a claim of infringement.  One of the keys to establishing a viable fair use defense is “transformative use” – use of existing content that adds new expression, meaning, or message to the original underlying work.  Simply using the content as intended, even in an unprecedented environment, almost certainly will not be considered transformative.  As tempting as it may be to utilize others’ content for a seemingly good cause, good intentions do not a fair use make. 

Best practices for content usage remain largely unchanged.  The first-tier best solution is to use vetted licensed content (ideally pursuant to representations, warranties, and indemnification from the licensor) or seek permission, preferably in writing, directly from the copyright owner.  There are plenty of options out there for many types of content.  Licensing agencies like Getty Images, Shutterstock, Adobe, and Pond5 are stalwarts for visual content.  Many book and journal publishers are now offering resources[v] for newly minted home teachers.  Creative Commons licenses and use of public domain material are also viable options, particularly for photographic content, although may be less useful for things like popular music and are not always fool proof.  Music licensing is a unique beast that could fill an entire treatise, but suffice it to say that several licenses may be required depending on the nature of the use, including public performance licenses from performing rights organizations like ASCAP, BMI, SESAC, and Global Music Rights, “mechanical” licenses from music publishers and “master use” licenses from labels when content is downloadable, and synchronization licenses from publishers and record labels for music that is cued up with accompanying video content.  It’s certainly worth noting that some sites offer royalty-free and low-cost licensable music, such as Freeplay Music, Audioblocks, and Free Music Archive, without the added worry of the music licensing labyrinth.

Reliance on defenses like fair use should be a last resort, and in such cases, it is always wise to seek advice from an experienced copyright lawyer.  And, on the other side of the equation, if you believe your content is being used in a way that violates your copyright rights, platforms like YouTube and Instagram have DMCA takedown forms for removal of infringing content, but recent developments in the law require at least some consideration of whether the user has potential defenses (such as fair use) before submitting a takedown notice.

As we stay vigilant against the virus that is causing so much havoc worldwide, we must also make sure that we stay within the bounds of the law and mitigate our legal risks as we mitigate our health risks.  While troubled times such as these call for cooperation, collaboration, forgiveness, and flexibility, absent content owners and users working together to reach mutually beneficial arms-length deals, or the creation of a collective effort to allow free use of IP like that of Open COVID Pledge[vi] for health-based patents and technology, the rules remain as they were even if the world outside doesn’t.   

This article appeared in the May 1st issues of LAW360 Intellectual Property, LAW360 Media & Entertainment, and LAW360 Coronavirus.


[i] “Announcing a National Emergency Library to Provide Digitized Books to Students and the Public,” Internet Archive Blogs (Mar. 24, 2020), https://blog.archive.org/2020/03/24/announcing-a-national-emergency-library-to-provide-digitized-books-to-students-and-the-public/

[ii] Bill Donahue, “During Pandemic, Prolific Copyright Lawyer Keeps Suing,” Law360 (Mar. 27, 2020), https://www.law360.com/ip/articles/1257593/during-pandemic-prolific-copyright-lawyer-keeps-suing?nl_pk=db11a53e-b04f-44a7-96e1-76824544133d&utm_source=newsletter&utm_medium=email&utm_campaign=ip

[iii] See id.

[iv] See id.

[v] “What Publishers Are Doing to Help During the Coronavirus Pandemic,” Association of American Publishers, https://publishers.org/aap-news/covid-19-response/

[vi] Open Covid Pledge (Apr. 7, 2020), https://opencovidpledge.org/

CDAS IP Group and Partner Nancy Wolff Recognized in Chambers USA 2020


The highly regarded “Guide to the Top Lawyers and Law Firms” described CDAS as a “highly skilled boutique offering excellent capabilities handling trademark and copyright infringement cases, as well as substantial portfolio management matters. [CDAS] exhibits expertise acting for market-leading entertainment, media and digital platform clients.” In addition to recognizing the firm for Intellectual Property: Trademark, Copyright & Trade Secrets (New York), Nancy Wolff was also recognized as “a leading attorney in IP issues relating to digital media, counseling clients in a broad range of matters including disputes and licensing.”


Nancy Wolff Featured in ABA Grassroots Initiative Discussing the CASE Act

As part of ABA Day, Nancy participated in a CASE Act Introduction and discussed implications of The Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2019 and its creation of the Copyright Claims Board as an alternative forum to pursue low-value claims of $30,000 or less. Listen to the panel here.

S.D.N.Y. Holds that Publishers May Embed Content Publicly Posted on Instagram Platform — (Sinclair v. Ziff Davis, LLC et al.)

By Lindsay Edelstein

Since the emergence of social media, courts, content creators, and publishers alike have been grappling with legal issues concerning the practice of “embedding” copyrighted content.  Following the controversial February 2019 decision in Goldman v. Breitbart News, LLC – rejecting the Ninth Circuit’s “server test” and holding that an embed constitutes a “public display” exposing a content user to liability under the Copyright Act – the pendulum had seemingly swung in favor of content owners, creators, and licensors. 

Yesterday, however, Judge Kimba Wood of the U.S. District Court for the Southern District of New York, issued a ruling in Sinclair v. Ziff Davis, LLC et al, providing publishers and other content users with a defense to alleged copyright infringement premised on the practice of embedding in the context of social media platforms: a valid sublicense granted to the user by Instagram via the interrelated agreements available on its platform. 

Sinclair, a professional photographer, publicly shared her copyrighted photograph “Child, Bride, Mother/Child Marriage in Guatemala” on her public Instagram page, which was viewable by anyone.  Media and entertainment platform Mashable made an offer to license the photograph from Sinclair for use in an article entitled “10 female photojournalists with their lenses on social justice.”  Sinclair rejected Mashable’s offer, but Mashable proceeded to use Instagram’s application programming interface, or “API,” to embed Sinclair’s original Instagram post in its article.  The embed frame of Sinclair’s Instagram post, as it appeared in the Mashable article, was hosted on Instagram’s servers, linked back to Sinclair’s Instagram page, and included the photograph, Sinclair’s original caption, and the date of the original post.  The Mashable article specifically discussed Sinclair and her work above the embed.  Sinclair filed suit against both Mashable and its parent company Ziff Davis, LLC for copyright infringement.

Mashable’s chief argument was that Instagram’s integrated agreements (i.e., its Platform Policy, Terms of Use, and Privacy Policy) clearly granted it a sublicense to display the photograph.  Indeed, the Terms of Use stated that, by posting content to Instagram, the user “grant[s] to Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content that you post on or through [Instagram], subject to [Instagram’s] Privacy Policy.”  Pursuant to Instagram’s Privacy Policy, users can revoke Instagram’s sub-licensable right by designating the content at issue as “private.”  Because Sinclair posted the photograph publicly, Judge Wood opined, “Plaintiff made her choice.  This Court cannot release her from the agreement she made.” 

While the Court conceded that Instagram’s integrated agreements could be more concise and accessible, it declined to accept Sinclair’s contention that the agreements were unenforceable because they were purportedly “circular,” “incomprehensible,” and “contradictory.”

Judge Wood also touched upon a real dilemma faced by professional photographers: deciding whether to remain in “private mode” on one of the most popular public photo sharing platforms in the world, or to promote and share work publicly.  On the one hand, sharing content publicly allows widespread exposure and can be effectively used to market and promote one’s work.  Indeed, many photographers today use Instagram as a digital portfolio, showcasing their works to the masses.  On the other hand, if sharing content publicly grants a valid sublicense to publishers of digital content, the licensing value of such content may be diminished.

This holding is likely to send shock waves throughout the creative community as rights holders may be forced to rethink how they make their works available to the public.  Alternatively, for publishers and media entities, it allows use of publicly available content provided the publisher uses the embed API that links directly back to the Instagram account user’s full Instagram page. 

As with the Goldman case, the Sinclair holding is not binding on other courts and does not create a per se rule with respect to the practice of embedding, and each case will likely depend on the specific circumstances present. In Goldman, the photographer never posted to Twitter, but rather shared his image of Tom Brady in a private Snapchat, with one friend capturing a screen grab and further distributing it on the Twitter platform.  Twitter’s terms, unlike Instagram’s, do not grant publishers a sublicense to embed using the Twitter environment.  Users of content should note that the Instagram Privacy Policy requires the user to obtain consent before using content in an ad.

Moving forward, courts will likely consider the terms of service (including the content owner’s choice of privacy settings) and the type of embedding at issue (i.e., the “framing” of standalone images as in Goldman, versus the prototypical “embedding” using Instagram’s API as in Sinclair).  Courts may also consider the context of the use at issue as well, such as whether the use of the image transformed the purpose of the original work, or whether it is merely illustrative of the article.   Before considering embedding any content, publishers should carefully review all relevant terms of service and seek legal counsel as platform policies are not uniform and there is uncertainty in the law.

Allen v. Cooper: Supreme Court Upholds State Sovereign Immunity in Copyright Row Over State’s Unauthorized Use of Videos and Images of Blackbeard’s Famed Shipwreck

By Lindsay R. Edelstein

In a technical win for states facing federal claims under the Copyright Act, on Monday, March 23, 2020, the United States Supreme Court struck down the Copyright Clarification Act of 1990 (the “CRCA”), which had allowed states to be sued in federal court for copyright infringement.  Allen v. Cooper, No. 18-877, 2020 WL 1325815 (U.S. Mar. 23, 2020).  The Supreme Court, however, did not foreclose the possibility of later abrogating such sovereign immunity, should Congress draft a tailored, constitutional statute addressing infringement by states.  The decision is available here.

The underlying action was brought by videographer Frederick Allen, who was hired by marine salvage company Intersal, Inc. to document the recovery of Queen Anne’s Revenge, a vessel commandeered by Edward Teach (better known as Blackbeard), and shipwrecked nearly 300 years ago off the North Carolina Coast.  Allen registered the copyrights in all his works created during the ten-year excavation with the U.S. Copyright Office, including videos and photographs of guns, anchors, and other remains on the ship.

The state of North Carolina, which had engaged and contracted with Intersal to conduct the recovery efforts but did not have authorization or a license to use certain of Allen’s works, published some of Allen’s photographs and videos online and in a newsletter.  In response to the unauthorized publications, Allen sued the state for copyright infringement in federal district court.

North Carolina moved to dismiss, invoking the doctrine of sovereign immunity, which precludes federal courts from hearing suits brought by individuals against nonconsenting states.  According to Allen, however, the doctrine was abrogated in the copyright context by Congress with its enactment of the CRCA, which provides, in pertinent part, that states “shall not be immune, under the Eleventh Amendment [or] any other doctrine of sovereign immunity, from suit in Federal court” for copyright infringement.  17 U. S. C. § 511(a).  The district court agreed with Allen and denied North Carolina’s motion. 

North Carolina appealed the case to the U.S. Court of Appeals for the Fourth Circuit, which reversed the district court’s ruling, relying heavily on Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U. S. 627 (1999), which had repudiated the Patent and Plant Variety Protection Clarification Act (“Patent Remedy Act”); the Patent Remedy Act was modelled after the CRCA with identical language concerning sovereign immunity. While the district court had conceded that Florida Prepaid precluded Congress from using its Article I powers (the power to “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”) to take away a state’s sovereign immunity, it opined that abrogation of a state’s immunity could still be achieved under Section 5 of the Fourteenth Amendment, which authorizes Congress to “enforce” the commands of the due process clause. 

In reversing the district court’s ruling, the Fourth Circuit cited the requirement that a Section 5 abrogation be “congruent and proportional” to the Fourteenth Amendment injury.  Because the Supreme Court had previously rejected Congress’s attempt, in the Patent Remedy Act, to abolish the states’ immunity in patent infringement suits, the Fourth Circuit held that there was nothing to distinguish the situation in Allen in the context of copyright, which involved a statute with identical language, and related allegations of intellectual property infringement.  

In an opinion authored by Justice Kagan, the Court unanimously sided with the Court of Appeals, holding that “Florida Prepaid all but prewrote our decision today.”  The Court agreed that Article I did not give Congress the authority to enact the CRCA, per the reasoning in Florida Prepaid.  While Allen argued that the Court’s post-Florida Prepaid decision in Cent. Virginia Cmty. Coll. v. Katz, 546 U.S. 356 (2006) – abrogating sovereign immunity with respect to Article I’s bankruptcy clause – changed the analysis, the Court distinguished Katz as “a good-for-one-clause-only holding” that only concerned the bankruptcy clause.  

The Court’s central issue with the CRCA was informed by language found in Section 5 of the Fourteenth Amendment which requires that Congress enforce limitations on states’ authority when they violate due process with “appropriate legislation.”  The word “appropriate” in this context has been interpreted to mean that there must be “a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.”  Because, the Court explained, an infringement must be intentional, or at least reckless, to come within the reach of the due process clause, and because the CRCA would impermissibly abrogate states’ sovereign immunity for merely negligent infringement or honest mistakes (which would not violate due process, according to the Court), the CRCA was unconstitutional.  

Allen asserted that the CRCA’s legislative record – namely, a 1988 report by the then-Register of Copyrights arguing that individuals would suffer immediate harm if they were unable to sue infringing states in federal court – was enough to distinguish it from the Patent Remedy Act at issue in Florida Prepaid.  But the Court found the purported evidence of states’ infringement in that legislative record to be unimpressive because, despite undertaking an exhaustive search, the Register only came up with a dozen possible examples of state infringement, some of which were not corroborated.  The CRCA, the Court opined, was enacted to “guard against sloppiness,” not correct constitutional wrongs, and this justification was not sufficient to withstand constitutional scrutiny. 

Significantly, the Court did leave an opening for Congress to pass a valid copyright abrogation law and “effectively stop states from behaving as copyright pirates” or “digital Blackbeards” in the future, if it “appreciate[s] the importance of linking the scope of its abrogation to the redress or prevention of unconstitutional injuries – and of creating a legislative record to back up that connection.”

While the Allen decision certainly sets a limitation on an individual’s ability to prosecute certain copyright claims, it has left the door open for Congress to draft a statute abrogating state sovereign immunity where a state’s infringement is intentional or reckless.  Furthermore, because such a determination is often fact-specific, if such a statute is enacted, federal courts may see an increase in cases filed against states that proceed, at the very least, to the discovery stage.  But for now, copyright owners do not have any recourse against states for copyright infringement, which likely will cause concern to publishers and others in the creative community as to whether state governments will take advantage of the safe passage the Court has provided them at least in the short run.

Moving the Needle Part II: Court Inks Decision in Favor of Defendants in Solid Oak Sketches, LLC v. 2K Games, Inc. (S.D.N.Y.)

By Scott J. Sholder

Four years ago, we reported on a headline-worthy copyright infringement lawsuit filed in the U.S. District Court for the Southern District of New York dealing with tattoos in video games. The case was brought by a licensing entity for tattoo artists against the makers of the popular NBA 2K games over depictions of real-life basketball players’ tattoos on their digital game avatars.  Last week, after full discovery and extensive motion practice, Judge Laura Taylor Swain granted the defendants’ summary judgment motion dismissing the plaintiff’s copyright infringement claim on grounds of de minimis use and implied license and granted their cross-motion for a declaration that the depiction of the tattoos in the game constituted fair use.  This was the result that we speculated as being the likely outcome in light of the dearth of on-point case law, and it seems to be the correct decision both as a legal and practical policy matter.

2K Games’ NBA 2K series is an annual blockbuster that simulates professional basketball with lifelike depictions of teams, players, arenas, and the sights and sounds of a real NBA game.  The goal is a realistic and faithful rendering of the NBA experience.  One of the lifelike aspects of the game is the re-creation of players’ distinctive tattoos.  Plaintiff claimed that five tattoos for which it owns rights were depicted on NBA players Eric Bledsoe, LeBron James, and Kenyon Martin in the 2014-2016 versions of the game and that such public display violated the Copyright Act of 1976.  Solid Oak owns an exclusive license to the five tattoos but does not have permission to recreate them and does not have publicity or trademark rights in the NBA players’ likenesses.  On the other hand, the players provided the NBA with the right to license their likenesses to third parties, and the NBA granted such a license to defendants.

The court described the tattoos and explained that, for each one, the tattoo artist “knew and intended that when” the NBA player receiving the tattoo “appeared in public, on television, in commercials, or in other forms of media, he would display” the tattoo; that the artist intended that the tattoos would “become a part of [the player’s] likeness”; and that the player “was and is free to use as he desire[d], including allowing others to depict it, such as in advertisements and video games.”  The artists also admittedly knew that the men at issue were NBA players and would likely appear in the media, as well as in video games.

These admissions by the artists were critical to the court’s decision concerning implied license, a critical defense in the context of tattoo copyrights.  An implied license can be found “where one party created a work at the other’s request and handed it over intending that the other copy and distribute it.”  The court held that such was the case here, explaining that that tattooists admittedly granted the NBA players nonexclusive licenses to use the art as part of their likenesses, prior to granting any rights to Solid Oak, and in turn, the players (through the NBA) implicitly granted defendants the right to depict the tattoos as part of their likenesses.

The court also spent significant time explaining its de minimis infringement ruling.  To prove copyright infringement, the plaintiff must prove that the amount copied was not “so trivial as to fall below the quantitative threshold of substantial similarity.”  To make this determination, the court analyzed the amount copied; the length of time the work can be seen; and other factors such as focus, lighting, and prominence, as seen through the eyes of an ordinary observer.  The court held that all three factors weighed definitively in favor of the defendants and that “no reasonable trier of fact could find the Tattoos as they appear in NBA 2K to be substantially similar to the designs licensed to Solid Oak.” 

Laying the foundation of its analysis by describing the many graphical, visual, auditory, and dramatic elements of the 2K games, the court put the overall prominence of the tattoos into stark relief.  The five tattoos comprised between 0.000286% and 0.000431% of the total game data; were never depicted separately from the players (who comprised only 3 out of over 400 avatars); appeared between 4.4% and 10.96% of their actual size; and were only visible when a user selected a particular player, and even then were not fully visible, and were indecipherable during actual gameplay given the speed and erratic nature of the avatars’ movement.  The court, agreeing with the defendants’ statement of undisputed facts, characterized the tattoos as appearing as nothing more than “visual noise,” and found that, even in the rare event the tattoos were displayed, such display was “small and indistinct” and “cannot be identified or observed.”   

Finally, the court engaged in a fair use analysis, holding that all four statutory factors weighed in defendants’ favor.  As to the first factor (purpose and character of the use), the court held that the defendants’ use was undisputedly “transformative,” a critical element of fair use.  While the games depicted exact copies of the tattoos, its purpose in doing so was not the same as the tattoos’ original purposes of self-expression through body art.  Rather, defendants depicted the tattoos to accurately depict the players, notably without even making the details of the tattoos observable.  Moreover, the size of the tattoos was significantly reduced and distorted, such that the game offered no “more than a glimpse” of the tattoos’ expressive value and made up an “inconsequential portion of NBA 2K” on the whole.  And while NBA 2K was undoubtedly a commercial product, the tattoos were incidental to the commercial value of the game and were not used in the game’s marketing.

The court’s analysis of the second factor (nature of the copyrighted work), was more detailed than a typical analysis of this element of fair use.  The second factor asks whether the work is more expressive/creative or factual, and whether the work is published or unpublished, and is typically glossed over by courts as immaterial to the analysis.  While the published nature of the tattoos tipped the second factor in defendants’ favor, the court went on to hold that the tattoo designs themselves were actually more factual than expressive “because they are each based on another factual work or comprise representational renderings of common objects and motifs that are frequently found in tattoos.”  Downplaying the creative and expressive nature of each of the tattoos based on the circumstances behind their creation, the court observed that the tattooists had admitted that each work “copied common tattoo motifs or were copied from designs and pictures [the artists] themselves did not create.”

The third factor (amount and substantiality of the work used) is also typically glossed over, and this case was no exception.  The court noted that even copying the entire work sometimes will fail to weigh against fair use where, as here, the use is deemed transformative.  Even so, the court reiterated that the tattoo renditions were reduced in size and barely recognizable on the game screen.

The fourth factor (effect of the allegedly infringing work on existing or potential markets for the work) tends, like the first factor, to receive more weigh in the analysis, and the court found this factor to definitively favor defendants.  The court held that the game’s depiction of the tattoos was not a competing substitute for the original.  In light of the “transformative” use of the works, the tattoos featured in the games would not serve as market substitutes for the use of the tattoos in any other medium, and plaintiff even conceded that NBA 2K was not a market substitute for the tattoos.  The court therefore decided that potential purchasers of the tattoo designs were unlikely to “opt to acquire the copy [in the game] in preference to the original.”  Even so, the court found that there was no evidence in the record that a market for licensing tattoos for use in video games or other media was likely to develop. 

While the Solid Oak case proceeds because defendants’ counterclaim for fraud on the Copyright Office remains in play, a solid precedent has been set in the new frontier of tattoo-based copyright law.  While it is not yet binding (and would only be regionally binding if affirmed on appeal), this decision will be extremely important to digital media companies nationwide given its solid legal analysis and common-sense reasoning.  The Solid Oak opinion should be at the top of this year’s cases-to-know list when it comes to content clearance, vetting, and risk assessment, and should ease the concerns of those scratching their heads when facing the potential licensing nightmare that could arise from attempting to clear all body art depicted in popular media.  It will also likely prove to be a boon to the stock image industry during an era when tattoos are increasingly common and may appear in more images of people than ever before.   On the other hand, artists, and tattoo artists especially, may decry the opinion, in particular the second-factor analysis, which may be interpreted as diminishing the copyrightability of tattoos that depict certain “typical” artistic elements like faces, flames, wizards, and sports equipment.  But it is important to note that the ruling on that factor was context-specific, and every work of art will be different and will be created under unique circumstances.  Overall, any feared risk to future creators is minimal and is significantly outweighed by the practical benefits afforded to established as well as new and developing forms of media.

Gray v. Perry: The Pendulum Swings on Copyright Infringement Verdict against Katy Perry

By Scott J. Sholder

Following hot on the heels of the Ninth Circuit’s en banc decision clearing Led Zeppelin of copyright infringement allegations relating to the classic “Stairway to Heaven” (which we reported here), a California federal judge last week overturned a jury’s finding of copyright infringement against Katy Perry regarding the pop hit “Dark Horse.”  Songwriters still nervous in a post-“Blurred Lines” world will likely take solace in two decisions that – while in many ways different from Pharrell Williams’ and Robin Thicke’s case – solidify certain aspects of copyright law that may help musicians rest and write a bit easier.

The genesis of the “Dark Horse” case is not unlike any other you-copied-my-song litigation.  Plaintiffs, successful songwriters and musicians in their own right, sued pop star Katy Perry, several other songwriters, and the record labels and publishers behind “Dark Horse,” claiming that an eight-note ostinato – a “short musical phrase or rhythmic pattern repeated in a musical composition” – in “Dark Horse” was substantially similar to one in plaintiffs’ song “Joyful Noise.”  The alleged similarity between musical phrases as opposed to full musical compositions makes the “Dark Horse” case more like “Stairway to Heaven” than “Blurred Lines,” which dealt with infringement of an entire song.  This distinction informed the court’s legal analysis as well, as discussed further below.

After a two-week trial in the summer of 2019, a jury found the defendants liable for copyright infringement and awarded plaintiffs $2.8 million in damages, and the defendants moved for judgment as a matter of law (or for a new trial).  Courts will grant motions for judgment as a matter of law when there are no genuine factual disputes and “a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.”  The court found these standards to be satisfied.

The court primarily addressed the evidence presented in support of the jury’s finding that the defendants’ ostinato was “substantially similar” to that of plaintiffs.  As we discussed in connection with the “Stairway to Heaven” case [here], courts in the Ninth Circuit apply a two-step test to determine whether two works are substantially similar.  Part one, the “extrinsic” test, sets forth a question of law for the court (often aided by experts) whether protected elements of the plaintiff’s work are objectively similar to corresponding elements of the defendants’ work.  Part two, the “intrinsic” test, asks the jury to decide whether an ordinary reasonable person would find that the “total concept and feel” of the works was substantially similar.  The court spent most of its analysis on part one.

As a threshold matter, the court explained that, where the work at issue consists of a combination of unprotected elements, an enforceable right in that combination only exists if the “elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”  This nuance is particularly relevant in music cases; citing “Stairway to Heaven,” the court explained that where “there is a narrow range of available creative choices” (such as notes in a scale or pleasing combinations of sounds) copyright protection is “thin” and to infringe, the allegedly infringing copy must be virtually identical.  The difference between this case and the “Blurred Lines” case, according to the court, is that the “thin copyright” doctrine typically will not apply to entire musical works (as opposed to constituent elements).  Citing its obligation to balance the First Amendment against the Copyright Act, the court also noted that the inherent nature of music as an art form was to borrow and build upon what had previously been created given that “many if not most of the elements that appear in popular music are not individually protectable.” 

With this backdrop, the court first analyzed the constituent elements of plaintiffs’ ostinato, including the key, phrase length, pitch sequence, rhythm “shape,” and musical texture.  Finding these elements to be individually common or even ubiquitous in pop music, the court held that “the uncontroverted evidence points to only one conclusion: that none of these individual elements are independently protectable.”  This conclusion was supported by testimony from the plaintiff’s own expert musicologist.

The same conclusion was apparent when analyzing the elements taken together as combined: their selection, arrangement, and coordination was not original enough to warrant protection as an original work of authorship.  The court held that the ostinato in “Joyful Noise” did not contain enough musical elements arranged in a “sufficiently original manner to warrant copyright protection.”  While it is possible that a musical phrase as short as eight notes could be protected, the court noted the dearth of on-point cases where “an otherwise unprotected musical phrase, isolated from the rest of the musical composition, in fact warranted copyright protection.”  The court explained that it was undisputed in light of the evidence at trial that “the signature elements of the 8-note ostinato in ‘Joyful Noise’” including its pitch sequence and rhythm, were “not a particularly unique or rare combination,” and that prior works composed by the parties and many others contained similar elements.  The ostinato’s musical timbre, its “pingy synthesizer sound,”’ and its use of minor key did not tip the scales.

The court accordingly held that the ostinato did not constitute protectable expression and therefore the extrinsic test (step one) failed, entitling the defendants to judgment as a matter of law notwithstanding the jury verdict to the contrary.  Although arguably not strictly necessary in light of this threshold ruling, the court went on to explain that, even if the plaintiffs’ ostinato was protectable, the defendants’ ostinato was not substantially similar.  Owing to the “thin” nature of the protection that would have been afforded to the plaintiff’s composition had it been deemed copyrightable, the degree of similarity would have had to have been “virtually identical” for a finding of infringement, and the evidence did not support such a conclusion given “a number of undisputed objective distinctions,” as corroborated by plaintiffs’ own musicologist.

Interestingly, despite the court’s conclusion that defendants were entitled to judgment as a matter of law on the extrinsic test (arguably obviating the need to address the intrinsic test), the court proceeded to opine on the jury’s finding of intrinsic similarity.  Because the intrinsic test is fact-sensitive and a question solely for the jury, the court held that, despite the court’s reversal on extrinsic liability, a reasonable jury could have found that the “total concept and feel” of the two ostinatos were “intrinsically” similar.  This of course did not change the outcome of the decision.

The court also found that there had been enough evidence to support the jury’s conclusion that the plaintiffs had accessed the defendants’ song.  Citing “Stairway to Heaven,” the court noted that reasonable minds could find that defendants “had a reasonable opportunity to [hear] plaintiff’s work” particularly in light of the current ubiquity of musical content and ready access to digital media online.  In such circumstances access could be established “by a trivial showing that the work is available on demand,” and “Joyful Noise” had garnered more than 6 million plays online, hundreds of concert performances, and a Grammy nomination.  But again, this did not change the result.

The “Dark Horse” case follows in the footsteps of “Stairway to Heaven” in establishing stricter boundaries around what musical elements are protectable but indirectly diminishing the importance of access in light of digital media and technological advancements.  As the decision is applicable to song elements like ostinatos, and arguably by analogy guitar riffs or solos, basslines, synthesizer accompaniments and the like – as opposed to entire compositions – it will likely cabin future claims concerning these discrete musical structures and reduce the likelihood that a songwriter or performer will be hit with a multi-million-dollar jury verdict for creating a single song element.  Decisions like “Dark Horse” and “Stairway to Heaven” will likely provide some comfort to musicians in being able to rely on those who came before them in writing their parts, but at the same time the decisions leave undisturbed the lessons from “Blurred Lines” when it comes to similarity of musical compositions in the aggregate whether one agrees with the outcome of that case or not.

Marc Hershberg was cited in the Fordham IPM&E Law Journal

“Anything You Can Use, I Can Use Better: Examining the Contours of Fair Use as an Affirmative Defense for Theatre Artists, Creators, and Producers,” by Benjamin Reiser, Fordham Intellectual Property Media & Entertainment Law Journal, Vol. XXX, No. 3 (2020).  Find the article here.

Ninth Circuit Rules in Favor of Led Zeppelin, Laying A New Foundation for Music Cases to Follow

By Phillip E. Jackman

When the full Ninth Circuit Court of Appeals on en banc rehearing issued its opinion in the appeal of the widely reported Led Zeppelin Stairway to Heaven case on March 9, 2020, the court took a substantial step in providing guidance for future copyright infringement claims based on allegations of “substantial similarity” between songs. 

The music industry feared a potential seismic shift in how music could be created without exposure to copyright liability after a panel of Ninth Circuit judges voted 2-1 to uphold a jury verdict in favor of the heirs of Marvin Gaye on their claim against Robin Thicke and Pharrell Williams in the Blurred Lines case. In her strong dissent, Circuit Judge Jacqueline Nguyen said the decision let the Gayes “accomplish what no one has before: copyright a musical style,” and warned that the decision expanded the potential for further copyright litigation.

Around the same that the Blurred Lines trial commenced, another seminal case was filed that addressed essentially the same issue – whether basic uncopyrightable elements of song writing, if selected and arranged in a certain manner, could then be deemed copyrightable.

In May 2014, Michael Skidmore, serving as the trustee for the estate of Randy California, late front man for the band Spirit, filed a lawsuit against Led Zeppelin, accusing the band of copying the famous intro to Stairway to Heaven from Spirit’s 1967 instrumental ballad called Taurus.  Skidmore claimed the portion of Taurus protected by copyright is the song’s 8-measure descending chromatic scale intro, which is similar to the descending chromatic chord progression in Stairway to Heaven.  In Los Angeles federal district court, a jury ultimately sided with Led Zeppelin because Skidmore did not satisfy the “substantial similarity” test, finding that although Zeppelin had access to “Taurus,” the elements of the song that were shared by Stairway to Heaven were not original enough to be protected under copyright law.

Skidmore appealed the verdict to the Ninth Circuit, arguing, among other things,that the district court erred in its decisions to apply the Copyright Act of 1909 to Taurus and not allow Skidmore to play for the jury the actual recorded version of Taurus to buttress his argument of substantial similarity between the songs.  The district court had only permitted Skidmore to put into evidence the “bare-bones” sheet music of Taurus deposited at the U.S. Copyright Office to demonstrate that the intro to Stairway was “substantially similar” to Taurus because at the time of its creation and under the 1909 law, sound recordings were not protected by copyright, only musical compositions.  In September 2018, a three-judge Ninth Circuit panel sided with Skidmore, in part, and overturned the jury verdict due to its finding that the jury instructions failed to inform the jurors that unprotectable elements of a song could be protected by copyright law when “selected” or “arranged” in creative ways.

However, before the case went back to district court, the Ninth Circuit agreed to vacate the panel ruling and rehear the case en banc, indicating that the case presented many open questions for the future of music law.  In its decision, the full Ninth Circuit analyzed the two factors required by Skidmore to prove copyright infringement: (1) he owned a valid copyright in Taurus; and (2) that Led Zeppelin copied protected aspects of the work.

In consideration of the first factor, the court first had to decide whether copyright protection of Taurus would fall under the Copyright Act of 1909, or the 1976 revision and limited protection afforded sound recordings created after February 15, 1972.  This issue proved to be pivotal in the case because it was only with the passage of the 1971 amendment, followed by the Copyright Act of 1976, that Congress opened the door for artists (or labels) to obtain copyright protection over master sound recordings of musical compositions.  Up until this time, artists like Spirit could only submit sheet music for copyright registration under the 1909 Act.  The Ninth Circuit upheld the district court’s holding by concluding “that the 1909 Act controls and the deposit copy [registered in 1967] defines the scope of the Taurus copyright.”  With this finding the Ninth Circuit closed the door on Skidmore’s argument that he should be able to play the recorded version of Taurus for the jury, since Skidmore did not own a valid copyright in the sound recording.

Armed only with copyright protection in a single page of sheet music, the Ninth Circuit then turned to the facts applicable to whether Skidmore had put forth sufficient evidence to satisfy the test that Stairway to Heaven was similar enough to Stairway to Heaven for unlawful copying to have occurred.  The Ninth Circuit uses a two-part test to determine whether works are substantially similar.  The first part compares the objective similarities of specific expressive elements in the works at issue, referred to as the “extrinsic test” and typically involves expert witnesses. The second part, known as the “intrinsic test,” looks at similarity of expression from the standpoint of the ordinary reasonable observer, with no expert assistance.

At trial, the jury had found in favor of Led Zeppelin on the question of whether “original elements of the musical composition Taurus are extrinsically similar to Stairway to Heaven,” and as a result did not move on the intrinsic test.  The Ninth Circuit upheld the district court’s approach stating that “because the extrinsic test was not satisfied, the jury did not [need to] reach the intrinsic test.”

The final key issue in this case is that the full Ninth Circuit abrogated the “inverse ratio rule,” which had permitted a lower standard of proof to satisfy the “substantial similarity” test if a plaintiff could demonstrate that the alleged infringer had a high degree of access to the protected work.  During trial, neither party disputed the fact that, during the late-1960s/early-1970s, Spirit and Led Zeppelin played at various venues together on at least three occasions, but there is no evidence the groups never toured together.  One of Skidmore’s key arguments was that the district court erred by not submitting the “inverse ratio rule” to the jury.  The Ninth Circuit stated that “the Second, Fifth, Seventh, and Eleventh Circuits have rejected the rule”.  And, in agreement with the district court, the Ninth Circuit further stated that “[b]ecause the inverse ratio rule, which is not part of the copyright statue, defies logic, and creates uncertainty for the courts and the parties, we take this opportunity to abrogate the rule in the Ninth Circuit and overrule our prior cases to the contrary.”

The court’s elimination of the reverse-ratio rule is a significant development and substantial clarification of the law in California that will likely be seen as a boon to creators of modern music.  Access to music is now more ubiquitous than ever, so it stands to reason that plaintiffs would inevitably be able to seize on the lesser standard of similarity in cases involving modern music. Of course, for those cases arising out of “classic” works like Stairway to Heaven, the abrogation of the reverse-ratio rule, may be seen as one less arrow in the copyright protection quiver.  How creators synthesize this ruling, whether in defense or pursuit of copyright claims, remains to be seen, but the impact will likely be a significant one.

The case is Michael Skidmore v. Led Zeppelin, et al, case number 16-56057, in the U.S. Court of Appeals for the Ninth Circuit.

Judge in Amateur Photojournalism Case Rejects Lack of Originality Argument

By Sara Gates

In a decision that will likely be seen as a victory for photojournalism, a judge in the Eastern District of New York recently rejected the legal argument that an iPhone photograph, taken by a passerby who was in the right place at the right time, lacked originality.  The decision represents a turn away from what the photography community would undoubtedly perceive as a slippery slope, i.e., if a court embraced a broad view that photographs captured by amateur photographers on their iPhones are not entitled to copyright protection.

The case pitted Alex Cruz, a passerby who captured a photograph of police apprehending a terrorist attack suspect in the Tribeca neighborhood of New York City in October 2017, against Cox Media Group, which holds a large portfolio of TV and radio stations, newspapers, and websites.  After the photograph was posted to Instagram, Cruz licensed the image to media companies including CNN and NBC (https://www.nbcnews.com/slideshow/terrorist-truck-attack-shocks-new-york-city-n816236).  Cox, without seeking permission, published the photograph in a gallery on one of its websites, accompanying an article about the suspect, as well as on its social media channel.  Facing a copyright infringement claim, Cox later argued that Cruz’s photograph lacked sufficient originality to entitle it to copyright protection and support a copyright infringement claim.

Specifically, Cox alleged that Cruz did not make any creative choices in capturing the photograph, arguing that the photograph therefore did not possess a “modicum of creativity,” citing the oft-used language from Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991).  Judge Garaufis did not agree with this argument, finding that Cruz’s photograph reflected several creative choices, including timing (i.e., being in the right place at the right time) and his decision to take the photograph when he did (when law enforcement was apprehending the suspect, who was lying on the ground).

The judge applied the law of the Second Circuit, citing precedents such as Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005), in which the Southern District of New York held that a photograph may be original in three respects: (1) rendition, (2) timing, and (3) creation of the subject, and Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992), in which the Second Circuit recognized that “original” elements of a photograph may include “posing the subjects, lighting, angle, selection of film and camera, evoking the desired express, and almost any other variant involved.”

Though there may be instances in which a photograph is a slavish copy (such as in cases involving a photograph of a photograph), or a photograph serves a purely utilitarian purpose (such as showing what a standard Chinese menu item dish contains), where a photographer (whether amateur or professional) exercises any creative choices to capture the photograph, this decision supports the principle that photographers should be deprived of copyright protection.  Judge Garaufis recognized at least two creative choices relating to the timing of the photograph, but there were likely others, such as the angle and set-up of the shot.  With technological advances, the abilities of iPhone (or other mobile device) users to capture creative photographs with their devices, rather than a traditional camera, are greatly increased.  Aspects like depth of field, lighting, and frame can all be adjusted with a click of a button.  In this instance, notwithstanding whether Cruz used additional iPhone features to capture the photograph, the court found that he still exercised sufficient creative choices in deciding when, where, and from what angle to take the photograph to capture an inherently newsworthy event. Indeed, some of the most memorable moments of photojournalism are based on the photographer being at the right place at the time and knowing how to frame a compelling image (https://www.digitalphotomentor.com/20-most-famous-photographs/). 

Lack of originality is a difficult defense particularly in photo cases, as most photographs will be protected by copyright law, even if that protection is thin. Though judges should not place themselves in the situation of being arbiters of what is and is not art, oftentimes they are faced with the question of whether a work contains sufficient creative authorship to qualify for copyright protection, one of the prima facie elements of a copyright infringement claim.  This case represented a reasoned application of well-settled law despite an unconventional defense that may have prevailed under different circumstances and as applied to different forms of art.

This case is Alex Cruz v. Cox Media Group, LLC, Case No. 2:18-cv-01041-NGG-AKT (E.D.N.Y. March 13, 2020).