Copyright Attorney’s Fees

Thursday morning the U.S. Supreme Court unanimously decided Kirtsaeng v. John Wiley & Sons, Inc., per Justice Elena Kagan, the latest salvo in a fascinating copyright saga over John Wiley’s textbook business (see Slip, 1-2, where Justice Kagan tells the story of the plaintiff’s international entrepreneurial flair). The textbook company sued Kirtsaeng for copyright infringement, for illegally distributing their textbooks overseas (Copyright Act, §§106(3), 602(a)(1)), but he said the first sale doctrine applied in his defense. The case made  its way through the courts, and several years ago, the U.S. Supreme Court agreed that the first sale doctrine applied to allow the resale of foreign-made or domestically-made books (Slip, 2).

The Copyright Act (§505) allows a court to award attorney’s fees to the winning party in a copyright case. Having won, the plaintiff Mr Kirtsaeng had racked up about $2 million of legal bills, fighting his way through the courts and winning. The Court took up his case again to resolve a lower court split over how to calculate a reasonable attorney’s fee – give substantial weight to objective reasonableness (2nd Cir), look at the totality of circumstances (4th Cir), or simply presuming the winning party got its legal bill paid (5th Cir). The Supreme Court sent the legal bill back to the trial court for review, instructing them to effectively blend the lower court approaches and “giv[e] substantial weight to the reasonableness of Wiley’s litigating position, but also taking into account all other relevant factors” (Slip, 12) and noting “courts must view all the circumstances of a case on their own terms, in light of the Copyright Act’s essential goals” (Slip, 11).

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on entertainment law, copyright, trademark, and IP litigation issues. We work with authors, musicians, artists, photographers, bloggers, songwriters, filmmakers, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you with your entertainment law, copyright, or IP questions, please call (913-707-9220) or email (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2016, Stephen M. Johnson, Esq.

Art and War

The NYT and Daily Mail have this fascinating story about a family’s attempts to reclaim a Pissarro masterpiece looted by the Nazis during World War II. Like another family whose story is told in Woman in Gold, these cases hinge on a contract law claim. Here Claude Cassirer’s family accepted $13,000 in restitution for the painting after World War II. But it turns out the painting surfaced in 1951 in America and was circulated among private collectors. In 1993, the painting was one of many in a collection that a Spanish museum in Madrid bought from a prolific private collector for some $338 million. (It also raises the question of determining art’s ownership history – should a collector or museum have been suspicious if they saw “Berlin” stamped on a storage crate after the fall of the Third Reich?) So the Cassirer family sued the Spanish museum claiming the family actually owns the painting (the $13,000 being an admittedly paltry sum for an original Pissarro*). A California Court has ruled against the family, accepting the Spanish museum’s contract law claim, but importantly from a justice and equity perspective, urging the parties to “pause, reflect” and “work towards a mutually agreeable resolution” in light of Spain’s “commitment to achieve ‘fair and just solutions’ for victims of Nazi persecution” (Slip. Op. at 20).

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on copyright, entertainment law, and IP issues. My law firm will be traveling to the 2015 GMA Immerse music conference in Nashville, TN with a client and hope to see you there. @GMAimmerse We work with authors, musicians, artists, photographers, bloggers, songwriters, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you, your business, or nonprofit organization with your copyright and IP questions, please call (913-707-9220) or email us (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2015, Stephen M. Johnson, Esq.

*In a less emotionally charged context, IP licensing or royalty fees often miss the mark. The Tolkien Estate (heir to the literary rights to The Hobbit, the Lord of the Rings, the Simarillion, and other works by the late great J.R.R. Tolkien) has long been locked in a legal battle over royalties with the studio who made the movies. Tolkien himself self the film rights in 1969, before the filmmaking technology existed to make the Academy Award winning Lord of the Rings trilogy or the epic Hobbit trilogy, which grossed billions at the box office. As a result, the Tolkien family has seen little, if any, royalties from the movies.

Online Streaming: The Future of Music or the Death of Paid Downloads?

Spotify has pulled Taylor Swift’s entire music catalog from its website and streaming services at Ms Swift’s request. Why would the pop music sensation pull her music from the popular streaming website right after the successful release of her latest album, 1989? Business Insider has an intriguing theory – Taylor Swift’s record label (Big Machine Label Group) is trying to pump up its value for a possible sale and wants to limit the album’s streaming to force listeners to buy the CD or download it in iTunes. (And not surprisingly for a skilled artist, entrepreneur, and investor, Ms Swift is a minority shareholder in the record label.) More precisely, the theory goes, the record label execs think they (and Ms Swift) are getting the short end of the bargain on Spotify’s royalty rates to artists and record companies. (Which could explain why we haven’t seen takedowns of the Vevo, YouTube, Pandora, and other streaming versions of Ms Swift’s work – perhaps their royalty rates are more artist friendly?)

What do you think? Whither the CD (or even iTunes album)? Is online streaming the future of music? Does online streaming signal the death knell of paid downloads? Can paid content survive in the free for all world (with ads) of YouTube et al?

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on copyright and IP issues – whether protecting your creative art, defending you against cease and desist letters or IP litigation, or enforcing your IP rights. We work with authors, musicians, artists, photographers, bloggers, songwriters, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you, your business, or nonprofit organization with your copyright and IP questions, please call (913-707-9220) or email us (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2014, Stephen M. Johnson, Esq.

Literary Licensing as Extortion and Attorney’s Fees

From the How Appealing blog, we have news of this decision by Judge Posner of the 7th Circuit Federal Court of Appeals (Chicago). Judge Posner finds the Doyle Estate committing borderline “extortion” and hails the plaintiff as performing a “public service.” The Hollywood Reporter‘s Hollywood, Esq. blog has this post with commentary. We discussed Judge Posner’s recent Sherlock Holmes adventure in this post.

If my law firmJohnson Law KC LLC, can serve you, your company, or your nonprofit organization with copyright needs, please call (913.707.9220) or email me (steve@johnsonlawkc.com) to schedule a convenient free consultation.

(c) 2014, Stephen M. Johnson, Esq.

Duke v. Duke

The Daily Mail (UK) has this article about a trademark infringement lawsuit filed by the family of the late Hollywood legend John Wayne. The Wayne family wants to trademark the “Duke” name and image to sell specialty bourbon, since John Wayne was known for years as “the Duke.” But Duke University objects to the Wayne family’s proposed trademark. It will be interesting to read Duke University’s response (if any), but based on the Wayne family’s complaint, the Wayne family appears to have a strong case that their proposed trademark should be granted, since it’s in a different context (international class, in trademark lingo) than Duke University, and consumer confusion would be unlikely.

If my law firm, Johnson Law KC LLC, can help you with your copyright, trademark, or IP litigation needs, call me at (913) 707-9220 or email me (steve@johnsonlawkc.com) for a complimentary, convenient consultation.

(c) 2014, Stephen M. Johnson, Esq.

Dark Horse: Copyright Infringer?

News is circulating of this copyright infringement lawsuit filed in Missouri’s Eastern District federal court (in St. Louis) Tuesday, alleging that pop music star Katy Perry and some of her friends’ song “Dark Horse” (2013) infringed the copyright of a St. Louis based Christian gospel/rap artist song called “Joyful Noise” (2008).

Music Copyright 101

Music copyrights have 2 parts: (1) the actual musical recording and/or performance (what you hear) and (2) the underlying lyrics and/or musical score (what you see). An artist can copyright both parts or just 1 part. The “Joyful Noise” artist argues that “Dark Horse” illegally used his rap/techno beat (part 1) – judge for yourself here (Joyful Noise) and here (Dark Horse). Is the Dark Horse music beat close enough to the Joyful Noise beat to be an illegal copy?

It will be very interesting to see how the defendants – including Ms Perry and Capital Records – respond, and what the Court decides on this copyright infringement complaint.

Joyful Noise Infringing Dark Horse?

The Dark Horse defendants may have a good legal argument that the Dark Horse copyright actually preceded the Joyful Noise copyright. Until 1976, the mandatory registration rule controlled – an artist did not have a copyright until the work was registered with the Library of Congress. But the 1976 Copyright Act adopted the optional registration rule – an artist does has a copyright in the work the moment the work is created and set down on paper, computer, recording, or whatever.

The Registration Silver Bullet

But there’s a catch 22 – registering a copyrighted work with the Library of Congress is prima facie evidence of the copyright (if done within 5 years of publication) and copyright registration is required before filing a copyright infringement lawsuit (Circular 1, pg. 7). The lawsuit (Lawsuit pg. 4, ¶20) says Joyful Noise was created in 2007 and published in 2008 on an album (Lawsuit pg. 4, ¶23). But the Library of Congress registration is still pending, having only been filed last month, on June 3, 2014 (Lawsuit pg. 4, ¶21 – maybe a copyright lawyer’s after thought?), 6 years after the fact, so the 5 year publication deadline (for prima facie evidence) passed in 2013 (Circular 1, pg. 7). And recall Dark Horse was published in 2013 (Lawsuit pg. 4, ¶21). Joyful Noise’s pending registration wasn’t done within 3 months of publication (2008) or before the alleged infringement (2013), so only actual damages and profits are available to Joyful Noise’s owners (if they win), not statutory damages and attorneys fees (Circular 1, pg. 7). Dark Horse was registered on 24 October 2014 with the Library of Congress, so Dark Horse beat Joyful Noise to the punch on copyright registration. Ironically, is Joyful Noise actually infringing on Dark Horse?

If my law firm, Johnson Law KC LLC, can help you with your copyright, trademark, or IP litigation needs, call me (913) 707-9220 or email me (steve@johnsonlawkc.com) for a complimentary, convenient consultation.

(c) 2014, Stephen M. Johnson, Esq.

Aereo: Emerging Technology and Copyright Law

It’s that time of year again in Washington, D.C. The birds are chirping, the cherry blossoms are blooming, the heat and humidity are rising, and the Supreme Court’s issuing the final decisions of the year. This morning, the U.S. Supreme Court issued its 6-3 decision in American Broadcasting Companies v. Aereo.* Justice Stephen Breyer wrote for the majority, while Justice Antonin Scalia dissented. The Court’s opinion found that Aereo infringed TV broadcasters’ exclusive public performance rights under the Copyright Act (1976) by allowing subscribers to stream content (watch TV programs online) which other viewers watch the same programs on TV. Aereo’s technology involved the use of many mini antennae to essentially tap into an existing TV broadcast of a show, copy that show to a computer folder for the subscriber, and stream that show to the subscriber online in real time. So you could subscribe to Aereo, pick your show (say, Downton Abbey on PBS), and watch it online while other people were watching it at home on TV.

The Court found that Aereo violated the Copyright Act by publicly performing TV shows that only the TV broadcasters had rights to publicly perform. The Court saw Aereo as not a mere “equipment provider,” but “overwhelming[ly]” like and “highly similar” to a cable TV company, providing shows on demand, “targeted by the 1976 amendments [to the Copyright Act.]” The decision isn’t a huge surprise given the skepticism several Justices expressed at oral argument of Aereo’s business model. So Aereo’s fledgling business model is either shut down upon being declared illegal, or its development and evolution is dependent on what Justice Scalia calls “good lawyers” (“what we have before us must be considered a ‘loophole’ in the law. It is not the role of this Court to identify and plug loopholes. It is the role of good lawyers to identify and exploit them, and the role of Congress to eliminate them if it wishes. Congress can do that … in a much more targeted, better informed, and less disruptive fashion that the crude ‘looks-like-cable TV’ solution the Court invents today”) (Slip Dissent at 12).

Justice Scalia’s dissent argues that Aereo isn’t really like a cable TV company. He says Aereo doesn’t perform TV shows because it doesn’t choose the content (Aereo subscribers choose their individual content). He’s also concerned that the Court’s “cable-TV-lookalike rule” is “nothing but the’ol’ totality-of-the-circumstances test” – e.g. there’s no clear rule for whether a cloud or cable TV service does (or doesn’t) violate the broadcasters’ public performance rights.

Taking a step back from Aereo, part of the issue involves the Copyright Act’s age (38 years old) vis-a-vis the extremely rapid development of technology. In the proverbial phrasing, the Copyright Act is my grandfather’s copyright law – I have his marked up copy of the 1976 Copyright Act from his law practice. Yes, the copyright law has been interpreted to try and keep up with the times (e.g. email, YouTube, the Internet, the cloud, Facebook, etc). But the law’s terms of art and concepts haven’t changed much (if any) since 1976. I have a deep respect for history and tradition, but, given the state of the copyright art (or patent art) in 1976 vis-a-vis 2014, one must ask if a nearly 40 year old conception of technology still works today. The technological world, and the potential universe of copyright protection, has changed dramatically in the past year or two, let alone the past 40. In 1976, personal computers, email, mobile phones, digital cameras, texting, social media, Facebook, LinkedIn, Instagram, YouTube, video and file sharing didn’t exist. Businesses and people used typewriters, landlines, TV, and the U.S. Mail. We’ve come a long way as a society, some industries have been shaken, and others have come of age. And yet, our copyright laws may not reflect the brave new technological world we live in, the new economies of content and IP. Perhaps it’s time for Congress to take Justice Scalia’s hint and update the copyright law for our new century?

My law firmJohnson Law KC LLC, has experience working with individuals, companies, and nonprofits on state and federal trademarks. If I can help you navigate the waters of copyright law, give me a call (913-707-9220) or email me (steve@johnsonlawkc.com) for a free, convenient consultation.

(c) 2014, Stephen M. Johnson, Esq.

* Justice Breyer, a former Harvard Law professor, wrote a law review article called “The Uneasy Case for Copyright” (1970). Justice Breyer’s opinion was joined by Chief Justice John Roberts, and Justices Anthony Kennedy, Ruth Bader Ginsburg, Sonia Sotomayor, and Elena Kagan. Justice Antonin Scalia’s dissent was joined by Justices Clarence Thomas and Samuel Alito.