Flo & Eddie’s California Dreams Still Alive

I’ve been writing since 2014 about the quest by Flo & Eddie, the former Turtles, to win copyright royalties under state law for their pre-1972 records which federal copyright law doesn’t protect. The latest chapter ended yesterday when Judge Gutierrez in California denied Sirius XM’s motion to stay Flo & Eddie’s certified class action there. Sirius wants the lawsuit frozen until the Ninth Circuit court of appeals decides Pandora’s appeal of Flo & Eddie’s victory against them.

Sirius asked for the stay last November arguing the Pandora appeal involved the same “class members, the same claims, the same law, and even the same pre-1972 recordings.” After Judge Gutierrez certified Flo & Eddie’s class action last year, however, Sirius was turned down by the Ninth Circuit in August on a request to review the certification.

An effort to get all the judges of the Ninth Circuit to review the class action certification failed in November. The Sirius stay motion denied yesterday was their next move. When a federal class action is certified, you’re off to the races of costly and time-consuming discovery.

Sirius emphasized all the judicial turbulence involving the questions of whether three state’s laws gave pre-1972 sound recording rights. They beat Flo & Eddie in Florida and that case is on appeal to the Eleventh Circuit. Sirius lost in New York, and that appeal to the Second Circuit has oral argument set for February 2. Sirius also cited nine Flo & Eddie copycat cases filed in California federal courts alone.

One of Sirius’ main arguments was that freezing the class action until a ruling possibly this year in the Pandora appeal would conserve judicial resources. Class actions can impose a great deal of work on a federal judge. A stay would also protect Sirius from the legal expense and disruption of the class action which could be a total loss if the Ninth Circuit rules in Pandora’s favor on the merits.

Flo & Eddie’s response early this month makes Sirius sound like an army using a ceasefire to quietly take back territory. They argued the stay request came from “SiriusXM’s desire for an unsupervised playing field upon which to continue its campaign of crippling the certified class by engaging in improper communications with class members and entering into piecemeal settlements outside of the purview of class counsel and the Court.”

Sirius wasn’t pleased, but its response doesn’t exactly deny they were talking to class members. They stressed there have been no improper communications and that record company licensors, apparently the people they’ve been talking to, are sophisticated businesses who know what they’re doing.

The court’s order yesterday says nothing beyond the stay motion is denied. The opportunity to conserve judicial resources wasn’t seized, but the court’s reasoning is a mystery. Sirius may try again for Ninth Circuit help while the Pandora case is pending.

But one event may have helped persuade the court to keep the class action moving ahead. Last June, Sirius filed a report with the Securities Exchange Commission saying it was paying $210 million to the three major record companies and ABKO records to settle their me-too Flo & Eddie lawsuit against it and get pre-1972 song rights to their catalogs.

I wrote at the time the “SiriusXM deal may mean that Flo & Eddie won’t try to settle and instead go for a jury trial on the amount of damages their class members are entitled to.” That seems to be playing out. And it’s not the worst place for Flo & Eddie to be. They’re in the judicial district where a jury awarded Marvin Gaye’s heirs $7.3 million against Pharrell Williams and Robin Thicke for “Blurred Lines.”

 

 

Posted in Copyright, Sound Recordings | Tagged | 2 Comments

NIST Releases Important Update on Cybersecurity for Industrial Control Systems

Updated link to NIST Guide to Industrial Control SystemsMost of us have heard the alarms about cyber threats and the vulnerabilities of US factories, electric utilities, the petroleum industry and other vital parts of our infrastructure. If you’re concerned or working on this issue, you may want to look at an update to the Guide to Industrial Control Systems [ICS] Security issued this afternoon by the Commerce Department’s National Institute of Standards and Technology.  

The report makes an important distinction about cybersecurity when it comes to ICS. The biggest difference is what can happen. While our focus always must be on IT security, industrial control systems pose unique issues not faced in most IT environments. If responses to an ICS attack fail to address it in real-time and almost immediately, people can be injured or killed and the environment can suffer extreme harm.  

Most cybersecurity damage comes in the forms of loss of privacy or cash. We usually face complex tasks of analyzing what happened, what agencies and third parties must be notified, what protections to implement, and how to defend litigation. They are serious enough, but what can happen when ICS is attacked is another order of magnitude.

 Industrial control systems last far longer than most IT. ICS often involves legacy systems lacking password protection, error logs, and can’t be encrypted. They frequently are proprietary systems understood only by skilled specialists who work on particular industry control systems and nothing else.

One of the major additions in this update is a new ICS overlay for utilities, chemical companies, food manufacturers, and automakers. An executive overview introduces the full 247 report titled NIST Special Publication 800-82 Revision 2. Public comment periods are set and feedback is requested.  

Living in an era of constant threats, it makes sense to have someone invest time in this update at most organizations with substantial industrial control systems. As soon as the report was released I sent it to my son who is a chemical engineer and has worked on control systems at refineries around the world. He knows how fast and how bad things can get. If you read this far, you probably do too.

 

 

 

NIST Guide to Industrial Control Systems

Posted in Uncategorized | Leave a comment

Second Circuit Protects Artist Copyright Termination Rights by Reading the Contracts

Santa Claus is Comin’ to Town was written in the 1930’s and recordings of it are playing on radio stations and in stores and restaurants right now. I’ve written often about the complex sections of the Copyright Act that are supposed to allow artists and their heirs to regain the copyrights they signed away decades in the past.

In Baldwin v. EMI Feist Catalog, the Second Circuit this fall gave a lesson about the barriers thrown up in the music industry to stop termination rights from working as intended—and how federal courts can allow artists a chance to jump the barriers.

Fred Coots and Haven Gillespie signed their rights away to Leo Feist, Inc. in 1934 and the company promptly got a copyright registration for the song. Feist was one of the largest music publishing companies in the world at the time and MGM bought a controlling interest in it a year later. Control of the Feist catalog continued to change hands after that, and there were new contracts with the composers in 1951 and 1981.

The Baldwin decision traces the many attempts to give copyright termination notices under the two sections of the Copyright Act which have different rules depending on when the “grant” of rights was made. Note they don’t depend on when a song was written or recorded. What counts is the date of the contracts.

If an author grants or licenses rights before January 1, 1978, there is a 56 year waiting period before the author or her heirs can get the rights back through termination. 17 U.S.C. §304(c). But if the agreement being terminated was signed on or after January 1, 1978, the wait is only 35 years for termination. 17 U.S.C. §203(a). Yes, it’s counterintuitive.

Musical compositions and recordings still making money decades after their debut are not happily turned over to artists or their heirs by the publishing and recording companies who have been enjoying the lucrative longevity of the music. These are often companies with vast catalogs, deep pockets, and excellent lawyers. You can guess which side of the dispute thought the heirs should wait 56 years instead of 35 years.

Artists and their heirs rarely can match the resources they face, and they must be prepared to run a legal marathon. The Coots heirs lost at the district court but kept going. The Second Circuit reversed the district court and a year from now they will regain the rights their ancestor signed away.

The Second Circuit’s decision is forty pages long but not packed with citations to legal precedent. That is because most of the opinion is Judge Livingston’s painstaking analysis of what the 1951 and 1981 contracts actually say and mean under  New York state rules for contract interpretation.

Each copyright termination story has its own unique combination of events and agreements. Although the drafters of the 1976 Copyright Act who gave us the termination provisions presumably wanted to create simple and virtually automatic procedures, they did little to insure that would be the reality starting decades after the Act became law. And the complexity of applying the knotty termination sections to a unique set of facts gives those opposing a termination of rights much raw material for creative arguments.

Lawyers are prone to focus on mastering the details of the Act and relying on the small body of legal precedents on copyright termination to argue that termination is or is not appropriate. They often generalize about how copyright law applies to a situation when the real question is what the operative contracts say and how the court should interpret them. It is surprising how often both sides in the dispute throw caselaw at each other when they should focus on a few words in an agreement. Congratulations to the Second Circuit for going past the generalizations and looking at the deals themselves.

Posted in Uncategorized | Leave a comment

Pinkus to Present at the Center for Intellectual Property Law and Innovation

cpinkusBose McKinney & Evans LLP partner Craig Pinkus will present at the Center for Intellectual Property Law and Innovation during “The Roberts Court and Its Impact on Intellectual Property Law” presentation on October 27 at the Indiana University Robert H. McKinney School of Law in Indianapolis.

Pinkus will be joined by Robert H. McKinney School of Law’s Professor Gerard Magliocca and Professor Samuel Rosen for the discussion, which begins at 12:45 p.m. in Inlow Hall in Room 259. There is no fee to attend the event, but registration is required. To register for the event, visit http://mckinneylaw.iu.edu/events/current.cfm?eid=369.

A partner in the Intellectual Property Group of Bose McKinney & Evans, Pinkus serves as a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, commercial contracts and other complex business disputes.

In addition, Pinkus leads the firm’s Data Breach Response Team. The Data Breach Response Team works with organizations before an immediate threat is identified to prevent possible data breaches, and to advise clients after sensitive information has been compromised by attacks or accidental leaks.

Pinkus has been recognized with several awards and recognitions. For example, he is a recipient of the American Bar Association Silver Gavel Award, which recognizes those working with communications media that have been exemplary in helping to foster the American public’s understanding of the law and the legal system. He has been listed for more than 20 years in The Best Lawyers in America® (biotechnology, entertainment, and technology).  He also has an AV® Peer Review rated by Martindale-Hubbell.  In addition, he was the subject of the 2004 cover story, “Lawyer of Invention,” for the inaugural Indiana Super Lawyers® and has been listed in subsequent editions.

Posted in Intellectual Property | Tagged , , , | Leave a comment

Amateurism Lives To Fight Another Day in O’Bannon v. NCAA

This five year old lawsuit asked if the NCAA’s amateurism rules against compensation for student athletes were in violation of the antitrust laws. The core that made the litigation possible in the first place was the expanding willingness of state legislatures and courts to recognize and enforce rights of publicity─the right to control commercial exploitation of your life if the public is even slightly interested in it. No one questioned the idea that big time college athletes, their faces, numbers, uniforms, and moves were valuable.  

Last year the federal district court in the case decided the amateurism rules violated antitrust law and went beyond that to order a detailed deferred compensation scheme of up to $5000 a year for top football and basketball players to be held in trust and paid to them after they leave school. The Ninth Circuit Court of Appeals today agreed there was an antitrust violation, but the compensation scheme is gone. 

Bose McKinney & Evans LLP attorney Gary R. Roberts is also Dean Emeritus & Gerald L. Bepko Professor of Law at the Indiana University McKinney School of Law. He’s been involved in sports and antitrust law throughout his career and is spending the day today talking to media about the decision.  

He shared this quick comment with me between calls, and if you wonder what the decision really means for the future please read this: 

“Even though the NCAA and its Division I member institutions will breathe a sigh of relief that they now do not have to create those $5,000 per year trust funds for all their football and men’s basketball players (so it’s essentially status quo for now), the decision portends a difficult future for the NCAA in that it finds that any rule the NCAA adopts that limits what student-athletes can do or what they can receive is subject to being held illegal under the antitrust laws if a federal judge thinks a “less restrictive” rule is more fair or better policy. Unless the Supreme Court takes up this case and reverses this decision (which would be a long shot), I think there will now be a big push for Congress to grant some type of antitrust exemption to protect college athletics from an avalanche of antitrust lawsuits beyond the many already filed.”

O’Bannon v NCAA 9th Circuit decisions Sept 30 2015

Posted in Uncategorized | Tagged | Leave a comment

The Tortuous Path to Fashion Design Copyright Protection

There is a steady stream of music copyright cases in federal court. Lawsuits over clothing designs are few and far between. Depending on the source, US music industry revenue is about $15 to $30 billion. Clothing industry revenue in the US is at least ten times more. Knock-off clothing designs are a way of life. Why aren’t there ten times as many copyright lawsuits in the fashion industry?

Part of the answer may be popular hits are as short-lived as the latest fashion design, but the music can keep playing and producing money for decades while old clothing designs must be hunted down in estate sales and vintage clothing shops. Until the designs come back in updated versions.

But the biggest reason fashion design infringement lawsuits are rare is the Copyright Act. It gives apparel no respect. Designers can try to protect their creations under trademark law too, but today’s post is just about the Act.

It covers eight categories of creations or “works.” Music gets two of the eight, “musical compositions” and “sound recordings.” Fashion designs get none.

Companies determined to protect their designs must force them into the category called “pictorial, graphic, and sculptural works.” To make it as hard as possible, the designs must be identifiable “separately from” and be “capable of existing independently” from the “utilitarian” aspects of the useful article. 17 U.S.C. §101,102 (a). They must be a fish that can live out of water.

The European Union has the Regulation on Community which allows registration at the Office for Harmonization in the Internal Market (OHIM) and gives monopoly protection to original designs for renewable periods of five years for a maximum of 25 years. And there is an unregistered right which is automatic and protects against deliberate copying for three years. So everything is protected.

Despite the degree of difficulty under the Copyright Act, Varsity Brands sued Star Athletica for knocking off its cheerleader outfits. And despite a trial court loss, Varsity persevered and was rewarded with a victory at the Sixth Circuit Court of Appeals last month which revived the lawsuit just in time for football season. Varsity Brands, Inc. et al. v Star Athletica LLC, No. 14-5237 (6th Cir. Aug. 19 2015). It goes back to the trial court for another round.

Judge Karen Nelson Moore’s meticulous decision is a roadmap of all the dead ends and detours a design must navigate to get copyright protection. After surveying the approaches to the issue in the various federal appeals courts, she offers a five-question procedure for deciding if a design is protectable.

The five questions sound easy until you realize you’re not dealing with the ordinary meanings of words. The questions use words as they are defined in the Copyright Act and interpreted by the courts.

First, you ask if the design is a pictorial, graphic, or sculptural work. The Act’s definition of the phrase is full of questions with terms like “artistic craftsmanship”

If the answer to the first question is Yes, you must ask if you’re dealing with something with “an intrinsic utilitarian function.” Clothing should give you a Yes, but what does a bow tie do? That is question three, what are the utilitarian functions?

The fourth question asks if a viewer can identify the pictorial, graphic, or sculptural work separately from the utilitarian functions. The last question asks if the separately viewable work can “exist” independently. This all makes great sense if you have a PhD in philosophy, but you must go through it since it’s the only, stingy gift of the Act to apparel.

The decision, over dissent, recognizes the cheerleader outfits as protected by copyright primarily because the protectable elements are mostly fabric design. Fabric designs are the reasons for the oldest European laws which are the ancestors of the EU community regulation.

So if you think you’re about to launch a fashion hit and you want to go after the knock-offs while the hit lasts, the design of the fabrics you use could be the critical factor.

“I know it when I see it” is a 50 year old classic from the pornography wars that immortalized Justice Stewart. Jacobellis v. Ohio, 378 U.S. 184 (1964). It is about as unhelpful as law can be as a guide for the future. And it may be as close as federal courts can get to generalize about copyright protection for fashion designs until the Copyright Act is changed to explicitly protect them.

Blog Varisty Brands cheerleading costume copyright 6th Cir August 19 2015

Posted in Uncategorized | Leave a comment

Village Person Wins Legal Fees in Key Copyright Termination Case

Victor Willis is a songwriter and original member of the Village People. He wore the police and naval officer costumes. His writing credits include “Y.M.C.A.” Like most then and many now, he transferred his copyrights to others.

Village People songs are still valuable. Spotify shows 13 million plays of “Y.M.C.A.” by Village People alone. The Copyright Act allows creators to cash in on lasting success by getting their rights ownership back after a minimum of 35 years. Willis sent copyright termination notices in 2011 to do just that.

The idea behind the right to terminate copyright grants was partly to fix the old copyright act’s failure. There was a “renewal term” that was supposed to give copyright ownership back to the creators. After business people got to exploit the works for a first term, the creators were to get their chance in the renewal term. It didn’t work that way. Publishers, record labels, managers and others in the music industry got the creators to sign away their renewal term rights most of the time.

When the current law was written, the termination procedure was supposed to be a slam dunk for creators. So what happened when Willis sent his termination notices as required by the law? He got sued.

Trying to recreate what happened 35 years ago, there are going to be missing pieces. Legitimate questions come up about who wrote what and who played what. Memories and resumes get embellished. In this case, there were questions about what percentage of songs Willis owned and what percentage belonged to co-authors.

But the people whose rights were being terminated sued Willis and claimed he was entitled to nothing. That was only the beginning.

After defeating the argument he could not unilaterally terminate his copyright grants despite the fact the law says he can, he had to win a series of summary judgment motions saying the statute of limitations killed his rights or he just waited too long. He had to win a jury trial on most of the songs earlier this year.

The Copyright Act allows for the “prevailing party” to be awarded legal fees. Fees are not automatic. It’s up to the Court. Two days ago, Judge Moskowitz who is the chief federal judge in San Diego, ordered the parties that fought the Willis terminations to pay him every penny he requested for four years of litigation, more than half a million dollars. The order is careful to say that the parties resisting the terminations did not act frivolously, with an improper motive, or make unreasonable factual or legal arguments “on the whole.”

Judge Moskowitz’ explanation of a key factor favoring an award of legal fees to Willis comes straight out of congressional hearings almost forty years ago when the current law was on the table. They say the termination section was designed to “safeguard authors against unremunerative transfers” and address “the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited.”

The people who must pay the legal fees may appeal or try to work out a deal with Willis to take less. It would hardly be surprising if the fight goes until there are no legal options left. Yet it seems clear that if termination rights under the current law are to succeed where the old renewal term failed, creators must be able to enforce their rights without getting more than half a million dollars of legal help to do it.

Blog Willlis Fee Award Order September 15 2015

Posted in Uncategorized | Tagged | Leave a comment