Magic Words for Copyright Transfer

Last week the 8th Circuit Court of Appeals (which covers Minnesota) ruled in Thomsen v. Famous Dave’s of Am., a case involving a copyright infringement claim by an independent signage designer that designed and built various signs and interior elements for Famous Dave’s Restaurant around the Twin Cities. Following a prior dispute between the parties, where Thomsen alleged infringement of his copyright (no work for hire agreement or other assignments were entered into), the parties entered into a settlement agreement. As a part of that settlement, the parties agreed that:

    Thomson “. . . is releasing all copyright, proprietary design and sign work to [Famous Dave’s] in all other restaurants that he has worked on with the exception of . . .”

Adopting language from the 9th Circuit, the Bench ruled that

      ” A transfer of ownership requires no “magic words” to satisfy copyright law; even “a one-line pro forma statement will do.” (citing, Radio Television Espanola S.A. v. New World Entm’t, Ltd. ,

183 F.3d 922

    , 927 (9th Cir. 1999)).

While not earth-shattering, this opinion is interesting in that it appears to be the first opinion in Minnesota that explicitly adopts the position that simple wording in a copyright transfer can meet the necessary language needed to assign a copyright under Section 204(a) of the Copyright Act as long as the basic terms are of the transfers are spelled out.

For Creatives, this opinion makes clear the importance of having clear and understandable agreements in place. Reliance on technicalities is not in the best interest of the parties. While some aspects of copyright transfers and assignments require “magic words,” other aspects can be transferred or otherwise affected by ill-fitting language and contradictory clauses. Having a contract reviewed by an attorney can help by providing trained eyes to help make sure that what you think you are signing is what you are actually signing.

Does theTwitter ToS dedicate everything you post to public domain?? – NO!

I use to say that it was a myth that if it was on the Internet it was free to use. While still a myth, photojournalist Daniel Morela may have reason to question whether this in fact still true.

Morla was recently sued by Agence France Presse (AFP) for “antagonistic assertion of rights” for accusing AFP of violating his copyright in several photos taken following the January earthquake – Morela has counter sued for copyright infringement. AFP has asked for summary judgment that it did not infringe on Morela’s copyrights (complaint). AFP’s claims are interesting because, in part, they note that since Morela used Twitter to distribute the photos (which he did not – he used Twitpic), the Twitter Terms of Service (ToS) granting Twitter the right to distribute the photos should be extended to AFP as well. Besides the fact that AFP appears to have little understanding of the facts of their own case, this reading of the Twitter ToS is a little odd.

The Twitter ToS provide that:

    You retain your rights to any Content you submit, post or display on or through the Services. By submitting, posting or displaying Content on or through the Services, you grant us a worldwide, non-exclusive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such Content in any and all media or distribution methods (now known or later developed).

    You agree that this license includes the right for Twitter to make such Content available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such Content on other media and services, subject to our terms and conditions for such Content use.

While it is possible that AFP is making the argument that the second clause which allows Twitter to make the content available to partners and that they in fact are partners, it is clear from anyone’s reasonable reading that this scenario is not what is intended by this agreement.

The much sparser Twitpic ToS has a similar clause, but its sparser writing style makes the intent of these types of clauses much more clear. The Twitpics Terms of Services specifically notes:

    By uploading your photos to Twitpic you give Twitpic permission to use or distribute your photos on Twitpic.com or affiliated sites

    All images uploaded are copyright © their respective owners

While I believe that AFP’s arguments are weak (though other claims raised by AFP may have more merit), they do help to illustrate that Creatives that use various forms of social media or SaaS solutions related to the creation or distribution of their work should be aware of, and understand, the ToS for those sites. Otherwise, you risk obscure boilerplate agreements giving away your work for free – or at least claims to that effect by multinational corporations.

Public Performance and Ringtones

As if to demonstrate why the general public continues to question the validity of all copyright claims in music, ASCAP recently provided us with one of the stupidest and greediest copyright cases in the recent past. (opinion at www.eff.org). After being sued in relationship to the reasonableness of its blanket licenses (related to its antitrust exemption), ASCAP argued that when someone’s cell phone rings with a musical ringtone, the ring is a public performance of the composition and therefore the phone companies owe licensing fees for each call. The Electronic Freedom Foundation, who filed an amicus brief in the case, noted that: “Under this reasoning from ASCAP, it would be a copyright violation for you to play your car radio with the window down!” While I am not sure it is quite this bad, the arguments advanced by ASCAP do require a great deal of legal gymanstics in order to work.

While the law of copyright is intended to be largely technology neutral, with any newer technologies, the courts are often called upon to interpret how copyright applies in new circumstances. – ringtones are no exception. For example, a few years back the recording industry obtained clarification from the Copyright Office over whether a mechanical royalty was necessary for creating the digital files that make up ringtones – the outcome was a decision that ringtones were in fact subject to a statutory/mechanical license payable by the makers of the ringtones. The arguments made by ASCAP for performance licenses, however, are much less persuasive than those made for mechanicals. ASCAP made several legal arguments to support its position, some more technical than others, but all them largely coming down to a discussion of whether the activation of the ringtone by an incoming call constitutes a public performance that is not exempt for claims of copyright infringement. ASCAP basis its arguments on two separate theories: 1) that the downloading of the ringtone is the same as a public performance, and 2) that sending the signal activating the ringtone is part of a performance authorized by cell phone companies.

Downloading Ringtones is Not a Performance
ASCAP argues that under the “Transmission” clause of Section 101, which provides that the transmission of a protected work that is made available to the public is an act of infringement. ASCAP first argues that the Verizon allows its customers to download songs, and that these downloads are public transmissions. Wisely, the court points out that the download is being made to one party and is not to the public at large. ASCAP, however, goes an additional step and argues that the download is also the first step in a two step process whereby the performance is shifted to such times as when a phone company customer receives a telephone call which others may overhear. In an odd bit of irony, this argument strikes me as ASCAP attempting to use a time-shift argument FOR infringement.

Playing of compositions: Direct and Secondary Liability
ASCAP also argues that even if the transmission by the cell companies is not infringement, the playing of the music by the owner of the phone is, and that the phone company is either directly or indirectly liable for the infringement due to its participation in the process of the music being played. Perhaps the strangest argument made by ASCAP is the one that the court notes is their primary argument – ASCAP argued that the playing of any ringtone was in effect a direct performance by Verizon on the basis that Verizon sends a signal that triggers the playing of the music and therefore they are the instigators and the source of the performance in some Rube Goldberg like manner. ASCAP’s second argument is based on secondary liability, which requires a finding that there has been a direct or primary infringement by one party (the cell phone owner), and is aided in some way by the second (Verizon).

While the court addressed many sub-issues related to their claims and every theoretical possibility, the majority of its analysis were based on a finding that playing of ringtones are generally just intended for use by person who’s phone it is on, and is therefore not a public performance as defined by Section 101. The court backed this argument up by noting that even if the playing of the ringtone was loud enough to be heard by a general audience and constitute a public performance; Section 110(4) exempts the public performance from liability if there is no commercial intent in making it public.

Conclusion
ASCAP cited many cases to support its position in this case – the majority of which were cases involving mechanical rights to reproduce a copyrighted work rather than ones dealing in issues of performance, which the court points out are not in dispute and in fact have already been paid. While in many cases the payment of performance royalties in addition to mechanical is entirely proper and appropriate, the attempt of ASCAP to apply a secondary license in this context is clearly overreaching, and it is this type of overreach that causes the general public to begin to question all copyright protections, which in turn only serves to hurt the very people that ASCAP is suppose to be working for – the artists.

Public Performance

What is a performance license?

One of the exclusive rights of composers of songs is to control the right to publicly perform the song publicly. Of course with the way that the music industry has developed, it is not practical in most cases to go to the composer each time a radio station or concert hall wants to play a song for their customers. Coming to the rescue (Debatable, but that’s another post) are the folks at ASCAP, BMI, and SEASAC (and a few others). These organizations, commonly referred to as Performing Rights Organizations (“PROs”), have entered into agreements with thousands of composers and music publishers for the right to represent them and to license their music to radio stations and venues. While technically everyone involved (DJ, sponsor, and venue) can be held to jointly infringe a copyright, in practice the venue and promoter is most often the one that is expected to have obtained a license for music performed.

What is public?

The trick comes in when deciding what a “public” performance is. Section 101 of the U.S. Copyright Act notes that:

    To perform or display a work “publicly” means to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered. . .

As a result, most weddings, bat mitzvahs and the like would typically fall into this category of non-public performance and would not require approval by the composer and no PRO license would be necessary. With this said, a party involving 500 people who include many friends of friends or one in which some form of admission is charged will likely not fall into the category of “normal” and the use of admission will demonstrate “open to the public.”

Bottom line

Performers or venues that play to audiences other than “normal” families and their acquaintances should consider obtaining a blanket license form the PROs – an ounce of prevention is worth a pound of cure.

Bratz Revisted

In the continuing case of the Bratz doll, the Ninth Circuit recently ruled in the case of Art Attacks Ink, LLC v. MGA Ent’mt. Inc. While the case dealt with several issues, of interest to me is the portion of the ruling dealing with whether Art Attacks had proved adequate access to their character that they sold at fairs and on their website.

In the opinion, the court went out of its way to note technical weaknesses of the website as evidence of the small likelihood that there has been any access to the designs. In particular, the court noted that it “took a full two minutes” for the website to fully load; and that the website did not use meta tags that contained the words “Spoiled Brats.” The court then drew the conclusion that:

    A website with such limitations could not have widely disseminated the copyrighted Spoiled Brats material.

It is not clear from the opinion how this analysis of load times and meta-tag relevancy was conducted. While I would agree that it is relevant if the load times mentioned were from 2009; it appears that the time referenced is from the late 1990’s, when the site first went live. Consumer’s patience with load times has un-questionable changed over that time period and a two minute wait may have been perfectly reasonable in 1996. Additionally, it is not clear why the court thinks that information must be contained in meta-tags in order to be relevant to search engines (a fact many SEO folks I’m sure would like to question.)

While I have doubts that Art Attacks could prevail in its underlying case, the court using this questionable understanding of the how meta-tags and search engines works, and their current day expectations of speed, really create a flawed ruling. It would be unfortunate if trial courts recognized this opinion as a demonstration that a website must contain specific terms in its meta-tags to be relevant in showing possible access in copyright litigation.

UPDATE: Court issues injunction related to enforcement of decision.

Music Publishing Administrator

I recently had the opportunity to consider whether a US artist with airplay in Europe would be better served to find a publisher or to simply hire an agency to administer his rights overseas. While it is hard for any self-reliant musician to pay an extra percentage for doing something that they do themselves in the US, not considering such an arrangement might be leaving money on the table.

These agencies can provide independent musicians and small publishers with instant international reach, which includes their bookkeeping expertise, use of sub-publishers in other countries, administrative services to register the copyrights and to affiliate with performing rights groups, and options related to their services in shopping the music for other uses.

What to look for

When considering these groups, I recommend that you ask them about the following:

  • Do they have experience with your type of music? (Yes)
  • Will they register the copyright in the songs on your behalf? (Yes)
  • Will they handle the administration of registering you with U.S. rights societies? (Yes)
  • Will they collect mechanicals from foreign labels? (Yes)
  • Do they have affiliates in other countries where your music is popular? (Yes)
  • How often will they send statements (Quarterly)
  • Shopping (don’t expect it, but it can be added)

Foreign Administrative groups can be of great help in dealing with quirks of local/ non-US laws related to how royalties are calculated and paid. Having them work through the process on your behalf has its advantages and likely outweighs the extra percentage.

Work for Hire

One issue that people often overlook when drafting agreements involving creative works is the copyright concept of “work for hire.” Failing to come to a clear understanding of the parties intention can cause unnecessary conflict that neither party really benefits from.

What is Work for Hire
Simply put, work for hire addresses issues of copyright ownership when the work has been created for the benefit of someone other than the creator. Typically, the owner of a copyrighted work is the person who creates it, however, if a work is deemed to be a Work for Hire then ownership belongs to the hiring party. Work for hire situations occur in two basic ways; 1. works created by employees and 2. works created by independent contractors.

Federal law states that Works Made for Hire is:

    (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. (17 U.S.C. sec 101)

Employee Presumption
Works created by employees in the scope of their employment are presumed to be works for hire and are owned by the employer. The main question in these situations is whether the work was created in “the scope” of the employee’s employment. For example, the janitor of a publishing company is not not responsible for writing manuscripts, however, he might be responsible for maintaining training materials related to his job – the manuscript would be outside the scope of his employment, while the training materials would belong to the company as a Work Made for Hire.

Contractors
However, many works are created in situations other than employee/employer relationships. In the case of professionals like graphic artists, photographers, or web page designers a work may be created under the terms of a contract. In these cases, if the work falls within certain categories of works (it may also be a work for hire. These guidelines require that the work be of a certain type, specifically created for the hiring party, and that the parties must explicitly state in writing that they intend for the work to be a work for hire.

For the creative professional, the distinction of what is and is not a work for hire is important. Clarification of the issues from the start is a great method of avoiding misunderstandings down the road.

Forum Selection in Creative Commons Licenses

Users of Creative Common’s licenses beware!

Chang v. Virgin Mobile USA, LLC
2009 WL 111570 (N.D.Tex. January 16, 2009)

Texas plaintiffs posted a photo to a popular picture sharing website using a Creative Commons licenses. The photo was then down loaded by an Australian company who used the photo inconsistent with the Creative Commons 2.o license and Plaintiff’s wishes. Plaintiff sued Defendant in a Texas court and Defendant moved to dismiss for lack of jurisdiction. While many factors were considered, of particular note is how to court pointed out that the license did not require the license to take place in Texas.

In fact, the Creative Commons license used specifically does not contain either a forum selection clause or a choice of law clause that would outline where cases should be heard and under what state law a dispute will be analyzed. T he Creative Commons FAQ specifically notes that the selection of jurisdiction in the license

These clauses are commonly used in most transactions to provide some guidance to the parties to know where and under whose laws a dispute will be heard – to avoid problems such as the one in the Chang case.

While I understand the passion for Creative Commons licensing, it is this type of outcome that highlights for me why licensing parties should take a step back and make sure they really understand what they are doing when using these licenses. It also raise the question in my mind of whether licensors should consider making some additions to these terms such as adding in something stating the residency of the licensor, that the license is entered into under the laws of licensor and that all disputes will be heard in the licensor’s state/forum.

An Oldy But Goody: Copyright & Fireworks

The following is from a response I made to a listserv (remember those?) over ten years ago. I got to thinking about the subject again yesterday after The Colbert Report made a reference to a fireworks display I worked on a long time ago.

      From: Kenneth L. Kunkle XXXXXXXXXXXXXXXXXXXXXXXXXX
      Date: Tue, 06 Oct 1998 22:59:52 -0500
      I regret that I have not been looking at the list for a few days, as this is a topic I may be able to shed some light on.
      For background, prior to entering law school I was employed by a firework display firm with my primary responsibility being in the area of… you guessed it… choreography and design of large scale displays set to music (referred to as pyromusicals).
      It was standard for all of our work to be submitted to the copyright office for registration and to my knowledge they were always accepted. There is a great deal of work that goes into choreographed displays, timing colors, patterns, rhythm, intensity, placement, sound and so on are all factors that are put into artistic displays. In other words, a great deal of expression is put into the work. This information can then be put into a variety of script forms (for computer or electric push buttons) for the display to be fired by technicians in the field in a manner that is choreographed to the pre-selected music. As a result designers develop reputations and styles. Some companies develop unique combinations of songs to specific types of fireworks. Indeed, there are competitions for displays all over the world.
      As for some of the comments made so far.
      Can a display be fixed? Yes… a script is written containing information regarding when and what is fired. This can be analogized to both the computer script and the ballet.
      Is a display repeatable? Absolutely! the show you see in NY may be also used in FL. Or it may be repeated every night of a state fair. The best example is Disney (the nations largest consumer of fireworks) which has developed elaborate firing systems to place the shells (a.k.a. bombs) EXACTLY in the same place each night.
      Will the copyright office take a registration for this? Yup.
      Now does this mean that every display on the 4th is copyrightable? I doubt it. In reality the bulk of displays are done in an impromptu manner by hand shooters with only basic planning going into pacing, which is usually dictated by a safety factor of how fast can they be fired without causing injury, while dragging it out long enough that the customer feels they got a good show. However, a great deal of planning can go into a choreographed display. An example of the difference is: shooting 100 salutes (the loud ones) at the end of God Bless America is pretty standard fair, but firing 20 shells custom made to fit into a two minute song fired from multiple locations and scheduled to explode at precise moments during assorted crescendos while keeping in mind how it will look from a 3 mile radius from street level to the tops of buildings probably is.
      As for the notice that started this thread… I’ve never heard of a company trying to enforce their rights like this, however, it seems to me that if a photographer takes a photo that exploits the designs of a “designed” display (e.g. shell placement, color, etc) the designer should have a right to compensation. Additionally, if a designer has an original way of expressing something (e.g. a new way to choreograph a song) it seems to me that other companies shouldn’t be able to come along and copy it. There is no reason why a display should be treated any different that a song, ballet, or painting. While choreography is the easiest thing analogize this to, in fact the art of display design is similar to musical creation, sculptural works (you must design a display in 3 dimensions to be seen from all angles), a painting (often the colors hanging in the sky in patterns or combination is the intent of the design), or a dance (rhythm, placement, and pacing).
      As a side note I should mention that some shell builders have also attempted to copyright the designs of their shells. This is particularly true of pattern shells (i.e. shells that explode and display a pattern such as a heart, star, fish, or a letter of the alphabet).

As time has passed since then, and I am no longer involved with these displays, I note that I have changed my position on this a bit. While I maintain that the display is clearly subject to copyright, it is highly likely that most photographs of a display would incorporate a fair use appropriation of the display and would not infringe.

Kinda fun looking through old posts though.

Barbie v. Bratz: Scope of employment and tainted copyrights

Think that idea that you put together in your free time is free for you to use? Think again. While not binding in any court here in Minnesota, the legal battles between Barbara Millicent Roberts (Yes, that’s her full name) and Cloe, Sasha, Yasmin, and Jade recently took a turn for the worse for Bratz manufacturer MGA Entertainment Inc. and are a good example of why creative professionals need to understand what their employers view as their work responsibilities, and why companies hiring creatives need to make sure they know the origins of those great ideas coming from new employees.

After a large number of Mattel employees, including Bratz designer Carter Bryant, defected and came to work at MGA and MGA launched its Bratz line, Mattel filed suit claiming the Bratz dolls were designed on their dime and therefore they held the copyright for their design. After a jury trial that resulted in a jury finding that the original four Bratz dolls where the property of Mattel, District court Judge Stephen Larson ordered MGA to stop producing MOST of its dolls and accessories and to stop selling them in February 2009 (with remaining stock to be recalled and destroyed). Additionally, Judge Larson (who earlier this year wrote a decision involving the heirs of Superman co-creator Jerry Siegel) ordered that early drawing produced by Carter Bryant that were created while he was employed at Mattel be turned over to Mattel.

This case illustrates two interesting issues in copyright law. (1) if you are an employee, work performed in the course of your employment is the property of your employer; and (2) ownership of a copyright includes the right to make derivative works.

Scope of Employment
Under U.S. Law, works created in the scope of your employment are considered to be the property of your employer. Seems fairly cut and dried, but for Carter Bryant the issue was a little more convoluted. Mr. Bryant’s design responsibilities at Mattel were limited to hair and fashion design. After leaving Mattel in 1998 for a stint in retail sales, Bryant claims to have conceived the dolls, he then returned to Mattel in 1999, only to defect with other Mattel employees in 2000. While eventually coming to the conclusion that the original Bratz were developed during Bryant’s employment with Mattel, it is interesting to note that the jury felt that these designs fell into the scope of his employment of hair and makeup design.

Derivative Works
In his ruling, Judge Larson said “Mattel has established its exclusive rights to the Bratz drawings, and the court has found that hundreds of the MGA parties’ products, including all the currently available core female fashion dolls Mattel was able to locate in the marketplace, infringe those rights,” Even though only four dolls were found by the jury to be the original property of Mattel, the fact that hundreds of subsequent derivative products were created based on those products means that ownership in the copyrights belong to Mattel.

This result of this case illustrates that while internal segmentation of job responsibilities exist in large corporations, companies may not rely on such designations when it comes to claiming ownership of multi-billion dollar product lines, and that once the door is open and a product line has been tainted with an infringing copyright, the entire product lines might end-up being destroyed and the manufacturing floor will go silent.