Transcript
[0:00] It's entertainment law update episode 137 for September 2021.
[0:07] Music.
[0:13] Hi, everybody and welcome to this episode of Entertainment Law update. I'm Gordon Firemark from Los Angeles, California.
And hi, I'm Tamara Bennett from the Dallas Fort Worth Metroplex. And we are so glad that you are here with us.
This is our podcast about entertainment law where each month we pull together our roundup of legal and business news stories and share our opinions and commentary and analysis and
Sometimes our questions and those kinds of things and this time we'll actually last time we had a question about how,
A copying is determined under Canadian.
Copyright law, and we were, we asked if anybody out there who could tell us whether the requirement of access, was present, and Jeff Young.
Reached out to us and said that it is indeed a part of copyright infringement analysis the answer is yes he gave us excerpts of two cases one is Shiwan versus Canada
Another is Atomic Energy of Canada Limited versus Ariva NP Canada Limited.
And in both those cases they they used a similar analysis to what we do here in the US that access and similarity
Go hand in hand in a determination of infringement. So, Jeff is a lawyer, a bear insurance solicitor, and a trademark agent in Canada.
At as well as in California's licensed here as well.
[1:37] The firm is ultimate and company and they're in Vancouver. So, thank you for that, Jeff. We really appreciate your your reaching out with that little bit of information and we're grateful.
So.
[1:52] Let's just jump right in. We're both we've got both got crazy days so we'll skip the the usual chit chat. And and we'll get to it. Our first little story is a quick take just to talk about AA,
Law that was went into effect in California right after we recorded our our episode in August California Governor Gavin Newsom who,
Recently also survived a recall election signed SB 26 which finalizes the passage of the fair pay to play act
And that law allows college athletes to,
Control their names, images, and likenesses. The it applies throughout the University of California schools as well as the Cal State Schools and all the community colleges here in the state of California. This is basically bringing,
The law that had already been established on name image and likeness.
Into effect sooner than it had originally been planned it was I think it was supposed to go into effect in 2023 and this is just bringing it right into
You know, in the line with what's going on around the country. So, there are still some limitations, prohibitions against entering into contracts that would conflict with provisions of a teen contract so you can't go indoors, arrival product when you're
When the schools team has an endorsement with one company or those kinds of things and you do have to disclose your contracts to the school I I presume that.
[3:16] You know as they're made or as you join the schools teams so name image likeness stuff still in the news and California is now another state where students have control over those things that's great news.
[3:30] Yeah it's I think we'll be talking about it a whole lot as we continue to to move move forward with that in a suspect
Either the existing law or what got got signed into in addition to saying you've gotta disclose it to the school most of the.
[3:47] At least the university level requirements go beyond disclosure and the school has to prove it. Oh interesting.
So, it may, you know, may not be they're gonna approve their money amount but they do have to approve.
[4:00] Who the deal is with it to avoid these types of conflicts? Yeah, I wonder how that,
Plays with you know wanted to state school is the state,
Meddling in the contracts of its citizens somehow. I guess they states to do that all the time in one way or another but we're working it kinda.
Maybe talk about that. Well, and and here we go. This is that state sovereign immunity. Stuff that we we've talked about a couple of times. We have a couple of cases this
Time around the first is a
I'm not gonna call to resurrection but it's a new suit brought by the filmmaker in that case we talked about last year and and earlier this year dealing with the documentary footage of the ship
I was a Blackbeard's revenge or Queen Anne's revenge. Yeah, Queen Anne's revenge, the black beard, ship, the filmmaker,
Had you'll recall reached an agreement with the state of North Carolina to record the salvage of the ship.
Which extends we made him the copyright owner of the footage but then the state published the footage as well as stills from that effort and
The filmmaker sued the state of North Carolina the supreme court help that the state hadn't waved its sovereign immunity under the 11th amendment and found also that the the.
[5:18] Federal sort of carve out or requirement that states be bound just that they was among constitutional provision. So, the state hadn't waved at sovereign immunity and therefore, wasn't amenable to laws.
[5:32] Well, on August 18 of this year, a federal district court ruled that the Supreme Court had failed to consider whether the state's actions
Violated the filmmakers constitutional rights under the fifth and 14th amendment so the ruling now holds that the sovereign immunity can be overcome by a showing that such immunity would a fringe
Infringe upon those constitutional rights like.
[5:56] Unconstitutional taking and things like that so new life in the Blackbeard shipwreck copyright case and we'll see whether or not it's it's.
[6:06] Whether a sophomore community is a is a problem on a going for a basis will I'm sure we'll be talking about this more again in the future.
[6:14] Well and then we're gonna just slide over to texas to the fifth circuit and talk about a similar situation with Texas A and M. And this,
So my my nieces and Aggie were not Aggies but I don't didn't know the whole story about the 12th man and I apologize to all the Aggies out there who will be shuttering when I don't when I repeat this that I didn't know it but,
The university texas AM refers to its fans as the 12th man. The tradition dates back to 1922 and this is kinda cool and interesting trivia. When an A and M basketball player who
Formally was a football player had to suit up for the football team because there been a string of injuries and they were out of players and so he suits up to become the 12th man his name is
E King Gail famous in A and M Laure but there really hadn't been a whole lot I guess written about him and then
2010 a Birmingham based author decides to write a book about the athlete in his moracle university the
The author commissioned a biography of the player from a sports writer the author went on to contact A and M's athletic department,
And kind of was working with them had a deal to use some photographs
Any also included at you know a draft of the the book in a short bio that he provided to the athletic department.
[7:40] And then you can only imagine what they what did they do? They copied it all and used it for fundraising.
And then, they removed any reference to the author, changed the title, altered the byline, basically did everything they could to remove information about who was the the author and creator and owner of the book and then,
For 3 days it quote reached hundreds of thousands of people through social media before the university finally took it down.
[8:10] So let's take that out of the university setting does that sound like copyright infringement to you,
If it wasn't the state that was behind it yeah it's right so this is a state university the author sued
The representative and athletic department for copyright and friendship and violations of the US and Texas constitutions in 2019 the federal district
Court judge ruled that suing the athletic department was equivalent to suing the school not separate entities so then the sovereign immunity extended
Mm hmm. Relying in part on the case we just discussed which was blackbeards. Where the court found initially that aged defendant
Save for the representative enjoyed sovereign immunity.
So as to the defendants the case was dismissed the author appealed the decision arguing the athletic department was financially independent and not subject to the sovereign immunity holding the three judge panel held the athletic department was not a separate entity from the school and the school is a state entity
So they're sovereign immunity.
But one of the questions that I think it left is there a state remedy under the Texas takings claws.
[9:26] And will this come back up under that? You know, so so I even went back to, you know, law school brain and said, well, what is the takings claws cover?
We should private property shall not be taken for public use without just compensation okay.
Sure seems like that's what's going on here.
Right. It's not an easement or they're driving across the farm field or they're putting in a highway which that's what I think we think about.
For me the takings clause of of real property.
But copyright is a right. It is a property. There seems to be an inner play between right versus property.
And you know when when does the tikings claws apply,
Without just compensation but then I don't know how all of that overlaps and clearly so far it's been overlapping to say sovereign immunity winds.
[10:31] Yeah, I mean, we so we have that ruling in both the Allen case in North Carolina and now this this case too dealing with Texas A and M and in North Carolina, we've got a judge who has said, yeah, but the Supreme Court didn't get to this issue of,
Of takings in fifth and 14th amendment.
We have an open question whether the district judge in Texas is gonna do the same thing and you know, sort of allow it to reopen. So, we'll be watching. We'll be keeping you folks up to date on what's going on with this.
Seems like you know it's interesting.
[11:09] Well, yeah, I guess. Copyright coming into, not conflict with it exactly but we're relying on.
[11:18] But yeah the these other constitutional provisions to sort of.
[11:24] Circumscribe sovereignty. I don't know. Anyway, we'll we'll be reporting on it.
[11:30] Well, let's talk. This is a big one. People been hearing about this all month now. Earlier this month, Spencer Elden.
Filed a lawsuit against,
The the band Nirvana and their record label and so on. This is the guy he was photographed naked underwater,
When he was a baby for the 1991 album never mind he has not followed lawsuit claiming that he was a victim of child pornography,
Under a federal criminal child pornography statutes he's now 30 years old and he claims that the defendants knowingly produced possessed and advertise commercial child pornography
Depicting him and that they knowingly exchange the value in doing so and the alleges that they failed him take reasonable steps to protect him and prevent his widespread sexual exploitation and image trafficking
As a result he claims that he has suffered and will continue to suffer lifelong damages.
Including extreme and permanent emotional distress as well as interference with his normal development and educational progress and medical and psychological treatment.
The also claims that he had a reasonable expectation that the images depicting him would remain private and argued that his parents never signed a release authorizing the use of the images.
[12:45] He also claims that the album artwork was supposed to include a sticker strategically placed over the baby's genitals with the text if you're offended by this you must be a closet pedophile. However the sticker was never incorporated into the album cover.
I've never heard that before. Oh yeah, I had not heard heard that.
Part of the facts either. Yeah, yeah, Elden sued almost everyone connected with the album including the two surviving members of the band Dave Groll and Chris Novel. And,
The three people who oversee Kurt Cobain's estate that of course is Courtney Love as well as Gayo Syrian Heather Perry. Photographer Curt Weddle, art or director Robert Fisher and other record companies and distributors also included in the lawsuit. He's looking,
For $150000 in damages from each defendant plus other legal costs.
So the background is this that eldem's father apparently was a friend of Kirk Wattle the photographer and what'll offer to pay Rick his dad to take I'm sorry to pay.
[13:45] Elden offered excuse me weddle offered to pay $200 for the photographs of Elton in the pool
Some say there were multiple babies that were photographed but ultimately it was elders who was selected for the cover art. The photos shows them swimming naked going after a dollar bill that's dangled before him on a fish hook and,
You know, you just see his genitals in the in the picture. Just you know, barely. According to Jeff on records, art director, Robert Fisher,
Kurt Cobain was inspired by a documentary about babies that were born underwater and he wanted the album artwork to sort of be inspired by this. So,
Question in the cases whether or not the nude photograph of elder is enough to be considered child pornography. Well,
Lot of folks believe that this claim is going to be dismissed pretty quickly but a few are saying that it raises interesting questions about whether just the fact that the
Kid is naked makes it commercial child pornography,
Under the federal statute which is 18 USC 22 56 sub eight child pornography is to find as any visual depiction including any photograph film video picture or computer generated image or picture.
Of sexually explicit conduct. The key then is engaging in sexually explicit conduct. And to be considered sexually explicit.
[15:07] The image has to contain a lacivious exhibition of the genitals or pubic area and there's a multifactor analysis that looks at this.
Looks a weather the genitals are a focal point of the picture whether the setting or pose are suggestively or sexually suggestive whether the child is in an unnatural pose or an
Inappropriate attire considering the age of the child the amount of nudity and whether the image,
Suggest a willingness to engage in sexual activity and whether it is designed to elicit a sexual response in a viewer. So,
If you look at all those factors Eldon's claim is pretty unlikely to succeed because engaging in sexually explicit conduct,
Takes it a step further than mere nudity. That's the only sexual aspect of the never mind cover is that the baby is naked. So,
Unlikely that a judge or jury is gonna find the cover to be pornography most reasonable people wouldn't see anything sexual about this we see babies naked all the time and you know,
Maybe maybe except for the pedophiles nobody's getting aroused or or thinking that this is is overtly sexual and in its context. And Alden's gonna have some other issues too.
This album was published in 1991. So, he's 30 years old. You know, if he had really had a problem with it, he could have sued.
[16:27] Anytime before now and and over the years he has you know participated in the in the promotion of the album and in some ways and even sort of,
Use that as his own claim to fame. Hey, I'm the kid on the album. That kind of thing. His parents did this knowingly. That's another.
Strike against him there and and the fact that he himself embrace the photo
Sort out publicity for himself sad for interviews and even recreated the albums artwork as a teenager and an adult of the clothes for the 10th, 20th, and 25th anniversary is the album he even described how being the subject of the album of a cart.
A cover had opened doors for him. So.
I think he's gonna have a tough case. Now, as to his invasion of privacy claims, you know, what do you think? Is a record company likely to use a photo for an album cover without.
Making sure that there was some kind of a release. In 1991. Yeah.
I don't know. I mean, I would think not but it doesn't sound like anybody's produced or released. Unless simply the check,
Said by cashing this check you've released as you know as to the parents.
Yeah, good, good point. You know, I don't know. Cuz I think if there was a release, we would have already.
[17:53] Seen that. Yeah. Maybe. Well, okay. Good point. You know, Geffen Records.
[18:02] What where is where who has the release yeah well that would be the other question you know where is that release if it exists and and did the photographer get the release or did they go you know it it maybe that
Everybody assumed it was fine and that there was no release done although you know I think even in in 1991 it's 30 years ago but
You know, I was practicing, well, a year later and I would have thought, yeah, we need to release from them. Subject of the photograph.
[18:33] You know I don't know maybe the record label guys were they had bigger fish to fry at the time.
And frankly, album comes out and years go by. At some point, don't they get to sort of rely on, you know, stopple principles and things like that. What?
I don't think any of those principles start applying until Eldon becomes 18.
Setting aside. 13 years ago. Right. So, so we still have a long time period there but I don't think any of that.
Starts accruing until he's at least an adult.
Or or not no curling is is stayed until that's still not the right word. Thank you. Yeah. But until he's an adult. But his parents,
Authorize this. His parents were on board. They received a payment. Well, there's some questionable whether they receive the payment actually but.
I just heard that on a television interview yesterday with with Eldon's lawyer.
But you know it seems like there's an awful lot of support for the notion that there was some kind of an agreement.
And you know, Eldon's not even passivity but,
His sort of embracing of things all over all this time strikes me as as really problematic form so.
Is he just after money? I don't know. So, there's a there's a part of me that goes if we just.
[20:01] If we read the law one I don't I guess obviously this is a civil suit not a criminal suit,
Because he's bringing the suit. Right. So, so there's not a state actor in this. So, based on reading of the law.
[20:19] He probably doesn't have a claim but yet then there's this other part of me that goes I have to set aside,
Or I'm trying to mentally set aside the fact that maybe he has endorsed this by being involved in recreations over the years,
You know, does does that somehow change the nature of what happened in 1991? Should those facts be taken into consideration or should it simply just be here's the picture? Here's the law.
[20:51] Well, I don't know. Hey, hey, hey, hey, hey, hey, hey, hey, hey, hey, hey, hey, and does that, does that change anything? I mean, we're painting Elden.
Into a situation of well you you obviously you can send it after the fact but it's,
Are those part of the facts that need to be an evidence or is it here's the picture here's the law and and that's it.
Well, good question. I mean, I think that certainly his his.
Posture towards this up until now and the fact that he hasn't done anything until now there's a statue of limitations question there's an equitable stopple question latches those things certainly are gonna come into play you know.
And yeah I know there's a reliance issue here that leaving aside the the pornography aspect of which I think is more about the sensationalism than anything else.
Yeah you know I I think he admits that his parents agreed to have in photograph.
[21:58] Well and I and this goes who's gonna be post the number one on list is gonna be mom and dad what did you heard that,
I'm a little torn and I don't know if it's just just the mom in me versus the lawyer in me. No. And.
I'm just gonna be honest. 30 years ago, did I look at that and go huh, okay, probably not the best taste but didn't cross my mind as being.
Yeah yeah fast forward 30 years would anybody put out an album with a Nicki baby on it no. No they would not. Probably not in this day and age. Certainly not. No. Without.
A really solid well, yeah, they they would just wouldn't, you're right. Hey, they just wouldn't. Yeah. That's interesting. You know,
Yeah I'm I'm torn about this too there's a really cynical I I must call me a cynic.
[22:59] But could this all just be about publicity and maybe even good for the album and the 30th anniversary release.
[23:10] Yeah, could be. I mean, nothing I think that the the the band or the record label put him up to the lawsuit but,
You know, when he came along and said, hey, come on. Yo, pay me something. They said, yeah, go ahead, Sue. I said, it'll be good for the
For publicity value. Right. Marketing budget. Huh, we'll just move that over here. Sorry, sorry, camera and Gordon, the scenics here. Yeah.
Wilson. And I think part of the conversation that's out there is setting aside everything related to,
Nirvana the record label that the gentleman who's brought the suit does this help or hurt.
[23:55] Victims of child pornography.
And I I think that's part of the conversation that's also happening out there. Yeah. Right. And then there's some that say he was a true victim and and they support him in this and and that's where
You know, we're projecting or well, take me, projecting judgement one where the other. Yeah. And does it.
Could this be used as a vehicle to raise awareness or you know, so it's multiple things I think going on. Yeah, yeah. So, but we will see what, you know, it may simply boil down to.
Not an issue on pornography but an issue on documentation and release and the actions of the parties in.
It's gonna settle before any of those things are answered. It gets dismissed next week. You know,
On the first motion but,
Yeah I found myself wondering also could all of this expose the parents to some liability criminal liability maybe for the child pornography thing if you're gonna go in accuse nirvana of child,
Child pornography hate your mom and dad put you in that situation.
[25:12] You know my guess is no US turning and it's right mine is gonna bring that case but but you know it's it seems like it's a risky.
[25:23] Thing. To get into. It will end the statue of limitations. Make apply there as well. So, anyway, just lots of interesting stuff to unravel in this sort of
Peculiarly sensational story. So, anyway, well, let's move on to talk about this this case of Beasley versus Howard.
[25:41] It's a trade it's not a it's a trademark case.
Dealing with, well, let's get into it. This opinion came from the United States Court to appeal for the third circuit,
Back in mid September. The question is weather trademark cancellation proceedings in the TTAB have claimed preclusive effect against an infringement suit.
[26:05] And the court has ruled that it does not. So, one of the many bands that were part of the Philadelphia sound in the in the 1970s was the ebonys. They were founded by David Beasley in 1969 and they had some commercial success.
And after some of that success William Howard joined the band in the mid 90s so he was a late coming you know probably replacement for one of the voices in the band he was granted in New Jersey State service mark for,
The ebonys the name of the band well after years of performing together
Beasley and his I'm sorry Beasley was granted the the the trademark the service mark after years of performing together they eventually all broke up an hour,
I'm sorry they parted ways with Howard and both Howard and the remaining members band claimed the Ebony's name,
In 2012 howard applied foreign received a federal trademark registration for the Ebonies and this.
Ensued the the band Beasley and and the rest of the band claimed that his federal registration and his other behavior had interfered with.
[27:12] His business Beasley's business and alleged to that,
He had not been able to register a band website using the Ebonies and the domain name that Howard had prevented concert venues from booking Beasley's performances Howard attempted to collect royalties from Beasley's performances.
And howard claim to be the true founder of the band the evanies. So, Beasley,
Petition the trademark trials and appeals board trial and pillboard to cancel the mark claiming that Howard had defrauded the USPTO,
When the mark was applied for a granted so beasley filed suit and,
Howard made emotion and and the court in the district court ruled that claim preclusion prevented,
The case from going forward on the basis that there's earlier TTAB decisions and petition denials you know precluded the claims so the third circuit now recommended for determination of the scope of Beasley's claims,
So the the analysis is that the the TTAB has very limited jurisdiction only to
You know, to determine certain kinds of kinds of controversies and that it doesn't afford trademark owners, the full scope of trademark infringement remedies.
Doesn't allow trademark owners to pursue those infringement actions in the TTAB therefore cancellation proceedings in the TTAB don't have,
The effect of claim preclusion against those trademark infringement lawsuits.
[28:42] Retention is it doesn't say anything about issue proclusion. So, the court affirmed the dismissal of any claim that Howard had defrauded the USPT up. But didn't.
Didn't support the notion that the claims themselves the overall infringement claims were were invalid so I guess he gets a further day in court to prove that there's an infringement going on,
And I think that is correct. Yeah. Because the scope of a TTA proceeding is very very narrow. Yeah.
[29:18] You know, I have, I didn't go look at the cancellation proceeding but the fact that they filed for cancellation tells me that they did not proceed.
Beasley did not proceed. You know, immediately. Right. The mark was already registered. This was not an opposition proceeding to the application. So, you know, there's there's other factors that can be involved there as to.
You know, the evidence that god put into the record. Yeah. Just because they could not get it cancelled, doesn't mean it may not still be infringement.
[29:55] Right right and so you know the the validity of the registration has some.
What evidentry wait in an infringement case if you're claiming that the owner of the mark is actually infringing on how your trademark that that's a factor and so there may be like I said issue preclusion as to that. Is it a valid trademark?
[30:17] But yeah that's as far as it's gonna go. So yeah. Yeah.
[30:22] Well why don't you get us started talking about Flo and Eddie? And they're.
Yeah flowing over conclusion of this lawsuit. Yeah.
TimeWise taken up in our conversations but Flo and Eddie inc versus serious exam radio inc the band flow and Eddie was formed in 1971 by two,
Oh, sorry. Flo and Eddie ink was formed in 71 by two founding band members of the turtles.
And they control the rights to the band songs there iconic theme song Happy Together and,
There are songs where all recorded pre 1972 and so what what does that mean
There's no sound recording copyright for pre 1972 sound recordings and so when the songs are played on.
[31:19] Well, on terrestrial radio, nobody's getting sound recording public performance royalty but the question was when they're being played on satellite radios, you're 6 AM. Shouldn't they be getting paid?
For that digital public performance.
So in 2013 after making demand for playing the pre 72 recordings and without paying royalties flow and Eddie filed a lawsuit.
Saying that the 372 songs used without permission had violated California copyright law focusing on state law remedies because there wasn't a federal law
Remedy. They contended that the California Civil Code section 980 uses the term quote exclusive ownership, meaning,
They were entitled to compensation for the public performances of their copyright did recordings when performed on satellite radio.
There were suits filed under New York law, Florida wall, the federal district court in California, granted a partial.
Summary judgement finding section 980 did provide sound recording owners with the right of public performance and they were entitled to royalties the party settled before trial.
[32:40] And this was a.
Class action settlement which I I know we've talked about some lots of parties lots of copyright owners involved in the settlement
And serious agreed to pay for the past performance of pre 72 recordings and a change for exchange for a license of those recordings and what's important to know is that the there was a settlement,
Thin there was a kind of a,
Astrid to the settlement that said okay we've still got these appeals pending in New York Florida and California.
And if for any of these appeals that are won by Flo and Eddie 5 million dollars is gonna be added to the settlement agreement so there was a potential for 15 million dollars
Five times three to be added,
But Flore and Eddie lose on New York and Florida. So, no additional money to the settlement. Now, we're to the ninth circuit to see what they're gonna say about the California act.
And oh my goodness talk about a historical walk through the app.
Going back to 1834 18 (721) 908-1971 1982 and and the court goes all the way back to
To when the term exclusive ownership was first incorporated in 1872 into the California statue.
And saying that.
[34:08] They could not have comprehended under the derma exclusive ownership a right of public performance for,
A sound recording.
Good night. You know, that was not part of it. So in interpreting that and looking that day, making that decision,
The court said Flo and Eddie you lose. We're not gonna give you a ride of public performance for the sound recordings. Because it just simply doesn't fall within California,
California law but but what is that really mean?
[34:49] Moving forward. One, there's no additional bonus payment into the class action settlement fund which
Stinks cuz I have clients who could have benefited from that bonus money going in there the other thing we've got going on though is in the room in 2018 the music modernization act was passed.
[35:11] And it includes digital public performance royalties for pre 72 sound recordings so nail those are being compensated,
It's just there there is a window of time where you know money wasn't paid there could have been a greater compensation and there's just not gonna be this bonus payout of revenues
You know I I personally tracked and saw that.
[35:40] You know, a series XM for a long time. They just let things through that probably.
That were pre 72 then after the lawsuits got filed they pulled back on all of that but now they've got to pay.
[35:57] So, I think it's done. I don't I don't know why.
They would wife alone Eddie would appeal past this other than if we wanna get this definition interpretation of the definition changed,
And and the questions would that be a supreme court? Appeal or would that be a state supreme court appeal? Would this be a referral to the state supreme court for interpretation.
[36:24] Yeah I think it's a oh that's interesting cuz it is in Willis and the ninth circuit I'm assuming because of.
[36:34] Certainly the district record.
Was, you know, appropriate to an analyze this question but ultimately, if when it comes down to an interpretation of a state law.
Where does that appeal? Go, I don't know the answer. We've seen situations where federal courts have referred a question to the state courts.
[36:57] So, that would be a referral from court to court but that's not enough. Yeah, so a good day peel and well, who knows? I guess I could,
Maybe asking. Well, maybe or maybe ask for rehearing and and as part of that petition for that referral to get the state to decide what's covered. Although, it's enough of a federal question because the.
The federal copyright statue does address this as well. There's gonna be the, you know, issue. I mean, I guess you could really get into issues of supremacy clause and and occupying the field and and those kinds of things.
I think they answered that. I think they said because the federal law didn't cover it. They did not occupy the field. Right.
Good point. Now, it's a question I think with the MMA.
[37:48] While the MMA does not say pre 72 sound recordings are protected by copyright it based it says pre 72 sound recording shall have the benefits of.
Yeah. Which means getting paid this royalty.
[38:03] Yeah and and this is going on a really long time. I mean, even if they had one. Additional payment would that have paid for this lawsuit, you know?
Yeah. Yeah, I don't know. I don't know.
It just would have been nice if they had. Right. There were there would have been a little trickle down to some of the class members.
[38:28] In that money. Exactly. Yeah. So,
The the parties are not so happy together in in all of the outcome here but it it seems to be over and done. It's funny you mentioned this maybe one one of the longest running,
Cases that we've,
Been talking about on our show. I think we might have to do a special episode about our, you know, top five longest running stories. Just to extend it even further. Yeah. Well, it's it's this, it's right Haven. It's Jersey Boys.
Yeah.
Friends in the in YouTube. Right. Right. Yeah. Yeah. It's a nature of light. You know, these these big cases make the law going forward. So, we have a lot to talk about. Anyway, let's move on. Let's talk about.
Bell versus Wilmot storage services. This is a case involving
Copper it infringement in a photograph and the arguments had to do with the diminimous defense and some other technical defenses background on the case is this.
Photographer Richard Bell who is also an attorney in I believe it's Indianapolis had taken a photograph of the Indianapolis skyline and published it on the web
It doesn't work. Over the years, he had registered the photograph with the copyright office and in performing reverse image searches on his photo found more than 100 instances of infringement and he filed suit.
[39:53] Against all those infringers one of the sites that he had sued.
Was visit USA.com his image was only available to those who could find it
By entering a precise URL address on the web for the photo or performing that reverse image search. So, it wasn't just publicly accessible on the front page of the website or anything like that. But it was there.
Wilmart the defendant in this case had purchased that website in 2012 and in 2018 he note bell notified them that,
The site was displaying this photograph without permission and so they removed it while in 2019 the photo was still being.
Displayed on the web on the,
Slightly different web address the webmaster had apparently been intended to remove the photo but he changed the file name instead and so it wasn't until 2019 when they finally removed the photograph,
So Bell Sue's for infringement back in 2018 asserting the infringement of his right to display the copyrighted work,
Is theory argued that infringement occurred by making it accessible to the public by way of will not servers will not use the argument of diminimus,
As a defense in the case in the district court agreed yeah it's you know it was an identical copy but it was hosted it was only hosted in this you know sort of inaccessible spot and.
[41:21] And that was that. So, the disrecord basically found no infringement. The ninth circuit has now reversed the ruling. You wanna take it from here,
Yeah so the night circuit reversed and address the issue whether one quote publicly displays work when it's only accessible to the public
In this very narrow way of finding it that you just talked about. We we've gotta know where we're going to find it.
Or or we do a reverse image search which I'm just gonna put a little asteroid here to say for my photography clients that's what they do all the time.
Cuz they're looking for infringements or potential infringements. The ninth circuit looked at the perfect 10 server test president which that's the case with all of the thumbnails that were coming up and concluded that Wilmont
The defendant did indeed publicly display the photo.
And the court look at the minimum defense could not be used because the quote degree of copying was it it was 100% of the work that was that was copied and in other words a diminished.
I don't know why that's so hard for me to say today. Minimal use of a concedingly infringing work.
[42:39] And they also said hey we're not getting you on a you're not getting out on a quick technical violation which to me kinda means you should've you should've done matter that you didn't know it didn't quite come off the website but
Then Gordon I'm thinking we've discussed Attorney Bail and his Indianapolis skyline photo.
[42:58] And other infringement suits several times and I'm like but wait
There's more. Didn't wasn't there a court that found he wasn't the copyright owner of this photograph
Circuit. Mm hmm. Different circuit. Yes, this is ninth circuit in the seventh circuit. There was a case,
Against or Carmen commercial real estate and the jury the question put to the jury was did,
Alleged it was a work for hire for the law firm he was working for and the jury found he was not the copyright owner.
Of the work so,
This case in the ninth circuit the court did take judicial notice of the decision so it happened in the process.
And even ask the parties.
[43:57] Do you want us to recommend this for for the small purpose of determining,
The ownership based on this case. I but the court elected to determine the diminimous factor prior to the ownership validity,
For summary judgment purposes the court assumed the validity of the copyright.
[44:21] And so even though they had asked about it being sent back that,
The parties agreed not to do that because of what all would be raised on the validity issue and the court said they didn't make a mistake by determining diminimous prior to validity.
[44:39] To me that's that's the more interesting part. This decision. Yeah. And I also noticed that our friend and colleague
Paul Subnik. Hi, Paul. I know. I haven't, hello, I was glad to see your name. I'm sorry your client lost. He represented that the the defendant. Yes, okay. So,
Yeah so that to me was what was really fascinating was that in the inner room of the filings and what was going on the third circuit or sorry seven circuit decision came out,
More the jury held it was he did not own the copyright.
So that happened in the interim before I mean while the case was already underwater.
The decision was made on diminimus at the trial court and then on appeal if I read it correctly the appellate court said do you want us to remain this for the very narrow scope.
[45:41] And the decision was made not to do that. So, very interesting. Interesting. I I thought it was very interesting. So, you talk about.
A preclusion? Yeah. You've you've had one chord invalidate the I guess they didn't invalidate the copyright. It's a factual finding.
By the trial court so a different trial court could find a different result on the facts and it sounds like that issue may not have been presented in the it was not the court made the decision to not make that decision,
They could decide on the minimums. Versus validity. Interesting. So, what happens now? Does it go back?
[46:24] What's the procedural posture? Maybe there's another opportunity to argue ownership. If if it's sent for a trial.
Convince the jury. Oh, it was emotion for summary judgement. So, I don't know. I don't know what the next procedural. Well, is a summer judgement on the defense of Dominimus. So, so.
We still have question of is there infringement and or considerably impringing work I guess but is there still infringement and.
I guess the validity question can be still be post.
[46:58] On diminimus use. It means, hey, okay. Now, you gotta go have a trial on the on the merits of the infringement and the damages. So, guess what? Well, we are.
Yeah, we will win. Okay, Paul. Can you defile it? Yeah, Paul, we know you can't talk to us about it but alright.
Well, yeah, interesting and and Bell has been, you know, a serial plaintiff. I mean, obviously,
Lots of infringements. You you go after. But he's had a few rulings against him of one sort or another. If I recall, not just that one that you referred to, but there was another sort of other procedural kinds of things. So.
[47:37] We'll see. Yeah. We may hear more about the case. Let's move on. This is, this was big news right there at the beginning of the month of September. Did you ever use lowcast? Are you familiar with the service? I am not. You know, I've been,
Discussed how low tech I am so
You know, it's interesting. Just a few months ago, my good friend, Mike Privas, who listens to show hi, Mike. Turn me on to this service lowcast which allow it's a it's a streaming app that.
Allows users to access local television signals.
[48:14] From local antennas very much the way Ario did it has antennas and servers and a number of markets that receive and retransment local TV signals like Ario but it's set up as a mom profit in reliance on a carve out.
In the copyright act for what are called community antenna systems.
And little more about that thing. But anyway, as a nonprofit, Locust doesn't charge a fee for accessing its service. You could watch local TV broadcast just by downloading the app,
And then the system would interrupt you every 15 minutes or so and ask you for donations and then it would dump you out to a main menu so it's really pretty annoying to be watching a show and then after go like napigate back and find the rest of the show you wanna watch but anyway if you donate,
Five bucks a month you would get uninterrupted streams
For the rest of the month. Well, earlier this in September, a federal district court issued a preliminary injunction that was requested by the planets, ABC, CBS, Fox, and NBC. In their lawsuit against the service. Now, lowcast argues.
Because it only seeks donations and not fees and only enough donations to keep the business running it is exempt under that statue carve out,
From claims for copyright infringement it says it's adhering to the copyright law which permits boosters of local television broadcast signals and is and it is designed to boost the reach and accessibility of those signals.
[49:33] I think there was something in the area ruling that sort of reference to that that exception or exemption. So, they they sort of.
Sprung up. Hey, we see this. We'll try it this way. So, the judge took a look and noted that despite locusts claims about,
It's the scope of operations and the revenue is on. It actually made far more money from user charges than what was necessary just to defray its costs to maintain and operate the service which is
What the nonprofit structure was meant to do. It's also been expanding into new markets.
And the statue exemption actually provides that the income earned by the nonprofit can only be used to defray the actual reasonable cost of maintaining an operating service not expanding into new markets. So, the networks made their motion for permanent injunction.
After the surgery on September 1 rule preliminary junction stop what you're doing,
And and then the networks made emotion for permanent junction and the court.
Ordered the injunction it said that the defendants are permanently restrained and joined from operating local service and also say that entry of an injection now provides the opportunity for an appeal as conflicted by the the Gregos the party's agreed,
That will let it go up on appeal. So, September 15.
[50:54] The injunction permanent injunction goes into effect and now we wait for I think it's an almost inevitable appeal it's in the second circuit out of New York.
So we will be keeping folks posted on whatever follows if anything but in the interim I remember the day that the ruling happened I got,
An email from Locast and I turned it on on my TV and sure enough it said we're not operating right now. A couple of days later, they they took it further and said we're shutting down,
Wow. For the girls. And so it's interesting this.
[51:29] Don't nonprofits expand all the time. Yes. You know, I'm like, so why is this?
[51:40] Hey Facebook read that copyright the the code the booster exemption yeah I I don't know enough about it either my understanding is that the way the wording of that exemption is is you know you can run a,
A nonprofit booster service at this community antenna booster thing and you can charge fees to do for your cost.
[52:05] So
You know, if congress thought articulated that way, then, then, that's what you're sort of limited to. I think that's what's going on here. So, so, could the solution have been forming a separate nonprofit for each area in which they expanded.
Ooh.
And and only charging enough fees in that area to to support the opera. I think the part of it was that the service took off and was making a lot of money.
More than it needed. You know, to just keep operating. But yeah, I think you're right. What's to stop a local outfit?
You know, I mean, I think look, the court would look at, if locast then spun off all these little subsidiaries and each new market was its own company. If it was still owned and operated by lowcast,
I think that wouldn't help but what's to stop me and my community from setting up one of these these antenna systems and yeah.
Right but can I just as part of my cost of the expense for the one I'm gonna set up in Denton County Texas be a license fee of the technology from lowcast and.
[53:12] That's interesting. Yeah, if there's patentable technology involved. Oh, I won't or even even if it's not, I mean, whatever technology I get from them, there's license to trade,
NL license that all of those things nonprofits can do.
[53:30] Maybe the lowcast lawyers are listening. We already thought about all that. It doesn't work. And maybe they'll chime in and let us know if someone will chime in and let us know why it doesn't work.
[53:45] Well, let's move on to our next case. This is a an interesting, you know, my my field theater law. I love to,
Dive into this and this is an interesting situation. It's a sort of AA long convoluted set of fact. But.
[54:02] Here it is. You know, the case is called.
Here's editorial cultural inc and it's a long story. So, after four contracts, numerous summer judgement, two works passing into the public domain at jury trial to post trial motions and an appeal.
The author of
A stage adaptation of two stage adaptations of these two works that are now in the public domain has finally been recognized as the copyright owner of those works and it all comes down to people not doing their due diligence when they should have and,
You know and basically just not.
[54:39] Ignoring disregarding that that there are rules about these kinds of things. So, here's the background. Well, this is the case by the way out of the first circuit. It's in in Puerto Rico. Enrique Lager.
Is the author of two books La Yamarada and Ladasaka and those are they're old books. He died in 2005.
And his errors are are the part of the planet's team in the in this situation. Roberto Ramos Perrea,
Is a playwright who adapted those two books for the stage much more recently now.
[55:15] Well, I mean, what would you will get into it? So,
Editorial cultural ink is the company that published those adaptations stencilly under an agreement with
The state of the authors,
Of the author of the book. So, here's the trick. The books were written in 1934 and 1949. Respectively. Was registered in 1936 but not renewed and it was published without copyright notice.
Meanwhile a lot of soccer was never registered and nobody knows whether the notice that,
Was included was adequate. See up the upshot is that both of these works would have been in the public domain by the time the contracts involved were signed. The first contract was between La Garre and,
Which enter the new contract between.
Again it was between the the estate of the of the book author and this production company that authorized Ramos who was not a party to the agreement,
To create an adaptation of Larasaka,
He was gonna be allowed to retain the moral rights to the adaptation but he wouldn't have any financial copying or distribution rights and under the agreement like Gareth,
The estate would have the time like Air had the exclusive right to reproduce the playscript,
Ramos made the adaptation in 2001 and the contract was eventually extended out until 2010.
[56:41] Contract two in mid 2003 Ramos the the adapter the playwright made an agreement with the production company that would allow him to make,
And adaptation of la yamarada on the same terms as the original deal for lara saka that adaptation was completed that same year.
[57:01] Ramos registered the cop rights of his adapt both of his adaptations in 2015,
So contract number three comes along January 2 1002 Laguer entered into a contract with editorial cultural to print one edition of the adaptation for Larasaka for 7 years from the printing date.
[57:19] In 2003 we have the fourth contract where he made another agreement with editorial cultural print up to 25 thousand copies of La Yamarada,
And in exchange for royalties. Now, editorial cultural claims that it had the right to publish both adaptations but the contract was actually silent as to that part,
So Laguer dies in 2005,
Editorial cultural prince and cells about 20 thousand copies of the theatrical adaptations so not the underlying books which are in the public domain but theatrical adaptations of and lara saka,
Written by.
By Ramos. So, editorial cultural continues to publish print versions of the adaptations including a recent order,
In 2013 and that's what led to this location. So, 2015, the airs and the the playwright be at a adapter initiate this lawsuit against
Editorial cultural. Allegation is that ramos owned the copyright in the adaptations,
And that editorial infringes copyright when it printed and sold publications of those adaptations. Now, editorial claim that Laguer having reserved the
Printing rights exclusively meant that Ramos wasn't entitled to any damages. So, both sides move for summer. Judgement on the infringement claim.
And ultimately the court.
[58:42] Dismissed the planners that the works were either authorized by Lagara and the creative works,
Then blondearamas by virtue of the authorization or the baseworks were in the public domain and therefore no authorization was required.
Editorial move for summer judgement on an accounting claim claiming contracts were null and void because the works were in the public domain but that was dismissed it wasn't enough information
So the lower court grants the summer judgment to Ramos only looking at the contracts and not addressing,
The status of the original novels. Essentially,
Ramos had no right to publish the adaptations because they're in a contract he wasn't a party to it said he didn't have that right.
[59:25] And the third amended complaint in the case
Following that ruling substituted the heirs of Lagare for Ramos as the owner of the adaptation copyrights they received a verdict in in their favor 266 damage a 1000 in damages or so after a jury trial and then we have motions rule 50 motion
From editorial asking for judgement as a matter of law claiming that there was a lack of evidence showing that transfer,
From Lagar to the Airs and they won on that motion there was no evidence that the airs had actually.
[59:59] What's the word I'm looking inherited the estate that inherited the the copperheads or the,
I guess the contracts. Then there the airs filed another motion to alter our men the judgment claiming that editorials argument about that could have been made,
That that excuse me that did have been made to another party was untimely and should have been raised a trial that succeeded the jury verdict goes back into effect and editorial challenges this.
And pushes it up to the first circuit. Based on that rule 59 motion. Ramos challenges being kicked out as an improper copyright owner at this point. So.
[1:00:38] Everybody sues everybody. So,
In this decision now editorial argues we don't have to get to who is actually the owner of the copyright.
Because Ramos was too slow should have appealed sooner,
He waved his ability to appeal and so on and so on the court says no we are not this is not an interlockatory appeal we don't do those so it's okay that he waited it's ripe for an appeal now and all of the issues in the case get
Address. The air is made in there or argument said Ramos is the right flow owner of the adaptations.
And the editorial tried to point out some contradictions and the court doesn't like.
Doesn't like that. The court's pretty much against editorial at this point. The court says, these were works created. The books were works, created under the 19 oh nine act. First novel passed into public domain in 1964. Second,
Novel may have always been in the public to me because it was never registered but even if it had if they'd abided by the requirements everything would have passed into the public domain by 1977,
When the adaptations were made there was no copyright interest in the novels or any derivative work so almost didn't even need permission to do them.
[1:01:50] They say that means Ramos is the owner of the derivative works with the exclusive right to authorize their printing and sale.
[1:01:57] Ramos asserted that because Laguera sold as soon a help no rights when he signed the contracts with the production company those documents had no real legal effect.
Even though editorial was saying, well, Ramos transferred his publishing rights to LaGaire.
But Romas wasn't a party to that contract. He was named but he wasn't a signatory. He was just a an unnamed, you know, condition of the agreement. So, that contract has no effect on the matter. So, was there infringement?
[1:02:25] Editorial printed the adaptations they didn't have permission they only contended they had permission that was never proven so the ruling is Ramos is now deemed the prevailing plaintiff he substitutes in for the airs and that earlier judgement.
That denied him ownership at the time and so Rama says it stands up and says, okay, judge, I'm I'm good with that prior ruling. We don't need to take this any further. No need for a new trial
I'll take what the jury said since it's based on an order and checks and all that kind of stuff. Editorial at this point doesn't raise any argument.
And the air is also said fine we'll accept that and Ramos now steps into their shoes so the court finally affirmed.
The lower court on some points and ultimately.
Ramos is the copright owner as we would have expected. He's the he created the adaptation. So, do you have any practice pointers? Well, our listeners. John was kind enough to put the practice pointers in our notes. He says, practice pointer number one. Do diligence is important. Practice pointer number two. Do diligence is important and practice number three in all caps.
Do diligence is important.
Along the way editorial should have verified that it was dealing with a copyright owner of the material that was publishing.
This the airs should have been checking and making sure that they owned what they thought they owned. Ramos should have been on top of it sooner.
Nobody was doing their due diligence in this situation.
[1:03:50] As a result we have a long drawn out series of lawsuits and and appeals and all that so I guess for those of us lawyers that you know.
Do diligence is important? Yeah, I mean, it's a truly a chain of title.
[1:04:07] Issue. And nobody wants to admit these works. Have fallen into the public domain because of.
No on compliance under the 19 oh nine. Right.
[1:04:21] Hey and with happy birthday or any of these others we've kinda works we've talked about that.
You know, they were, they were, they were, they're close to going in the public domain. Anyway, but.
Procedurely things were not met in the copyright labs. Yeah.
Gotta watch out. Gotta do our thing. So, yeah. Alright. Well, here we have an interesting new case. This is the third circuit again. Holding that the right of publicity,
Is a form of intellectual property and therefore not subject to claim to to the section 230,
You know, exemption, protection that that online services hold. The situation is this. The case is hep versus Facebook.
And the court is holding that Facebook does not have the immunity provided under section 230 because there's this state that's a state of publicity excuse me a state,
Right of publicity claim.
[1:05:25] I'm stumbling over my words today. So, Karen Hepp, the plaintiff is a news host on Fox twenty-nine's Good Day Philadelphia. She has big social media following.
[1:05:36] And based on a reputation of, you know, moral and upstanding community leader. Facebook, injure, and read it are the defendants in the case. Injured were removed.
Because the district court didn't have personal jurisdiction over those companies but a case when I get with the went ahead against Facebook in 2018 some coworkers of hers informed her that a photograph,
Of her was circulating on the internet. It shows her in a convenience store smiling.
Who's taken without her consent and it was used in online advertisements for erectile dysfunction, medicine, and for dating websites. She didn't know the store's location or that a photograph was being posted online. She claims that the
Two posts of the photographer involved in the matter. The first one was the advertisement for first met which is a dating app. That appeared on Facebook and it encouraged users to meet and chat with single women near you
In the second post a reddit user linked the photo to Imjure a photo sharing website and it's spurred in decent user commentary and was uploaded over 100 times,
100 doesn't sound like a lot to me but so be it,
Anyway, so she Sue's Facebook Reddit and I'm alleging these two claims. One for violating pennsylvania's right a publicity statute and the second for violating common law
I guess privacy claims. The district court held that all three companies had immunity under section 230 and that state law is not applicable. Under 230 and relied on the ninth circuits approach.
[1:07:05] That section 230 E two applies only to federal intellectual property. So now we're in the third circuit in the court.
Is looking at section 230. Will it live? Yeah, section 230 is part of the communications decency act of 1996.
To help promote the internet and and make it easier for companies to grow and flourish.
It balances the unregulated free market online with sort of good smart and protection to block and screen offensive material and it bars attempts to treat websites as publishers or speakers of content posted by others.
In other words, you're not liable for third party content.
[1:07:45] And it has limitations that say basically it won't have any effect on intellectual property because as as we know you know
Other law is in effect that deals with in which well actually wasn't in effect at the time. Anyway, the limitation has similarity to federal criminal law, communications, privacy, and sex trafficking laws, all of which are not affected by section 230. So,
Doesn't cover in electrical property infringements. So Facebook appeals to the text of the statute and suggest that state law claims would only be included.
When specified the court says that the disinterpretation is an unrealistic reading of the statue.
Hey facebook says Hap's claims aren't intellectual property therefore they're covered by section 230 write a publicity is rooted in privacy law.
[1:08:32] Help argues know they arise under state law pertaining to intellectual property and contends that the right of publicity is in fact an intellectual property right because she has put time money and effort into building her brand.
So, the equating her right of publicity to sort of trademark kind of stuff. Well, the court used dictionaries and relied on case law with the writer publicity,
And held that it falls as well
Intellectual property they referred as zucchini versus scripts howard broadcasting where the supreme court explained that the right of publicity is an individual property right closely an alligus to patent and copyright,
Because it focuses on the right of the individual to reap the reward of his endeavors and has little to do with protecting feelings or reputation.
And in Edison versus Edison Polyform manufacturing a New Jersey case the court apologize the right.
In one's likeness to that of trademark so third circuit reverses the district court now leaves us with a circuit split because the district had followed the ninth circuits approach on 230 and.
Away we go. So the holding is Facebook did not have immunity under section 230.
[1:09:46] Because hips write a publicity state law claim equals an illustral property claim. Okay. Therefore Facebook now has to address the liability concerns under that red publicity claim.
Interesting. Yeah.
That feels right. I I don't think
I don't agree. Okay. To me, it's not intellectual property. It's a personal property right that's different in character.
[1:10:19] Your your face, your your your name, your likeness is not the result of your intellectual work. It's the result of your birth.
But yeah it's privacy. It.
[1:10:33] Not everybody's name imagine likeness has the same value so there is something beyond that enhances it.
[1:10:43] I mean, you know, as a consequence of this kind of ruling, of course, you know, we're gonna advise clients to always have a release and don't use photographs of people without their permission. You know, those kinds of things. So, I don't think it really changes the way we operate.
This was an unusual situation where how does this photograph of her make its way into advertising and then you know I don't know the the imagern red reddit things were commercial uses so that may have been.
Another thing, you know, where's the first amendment in this?
Hey, hey, hey, yeah, unread it. So, some bozo posted and people uploaded 100 times that I don't know that that's a commercial use them with you on that. Hey Facebook add a someone who'll regionally has.
[1:11:27] You know a.
[1:11:29] Right of publicity not you know notoriety that that begins to start feeling a little bit like a violation so.
[1:11:39] Yeah. Oh, yeah. Alright, my friend. I'm looking at the clock. Yeah, we gotta get it get out of here. It's time. So that's it for this episode. We have a couple of things to do. They were watching the potential Ayatsy strike is going to a vote.
In just a few days we'll talk more about that if and when it materializes it looks like it probably will and there's a big case going against Marvel over.
[1:12:01] More termination of transfers by early creators of comic book stuff so that stuff will be we'll be watching for in the next few weeks.
But that for now is the end of this episode of Entertainment Law update. We'll say thank you to our loyal listeners for spending your time with us and if you have feedback, send it to us. Our website at Entertainment Law update, we have a little voice widget. You can click on or,
Go to entertainment and send us email entertainment law update@Gmail.com and all update on Twitter and Tamara tell folks how to find.
You know what folks can find me online at T Benette Law.com or create protect.com most social media I'm at Tamara Bennett and I would love to connect with you guys
And I'm in Los Angeles names Gordon Firemark or the website is@Firemark.com.
Email G firemark@Firemark.com and G firemark is how you find me on social media. We'll say thank you to our crack team of volunteer contributors managing editor John Janiceek as well as
Malharosa john reppold charleston mark lindaman and acolas brenna arbuckle and carnel wilson old home did a great job getting our summaries together for us.
Any mistakes or ours are not theirs and if you would like to join our family of contributors reach out entertainment law update@Gmail.com is the way to do it.
And that's gonna wrap it up for this episode.
[1:13:20] Music.