Newsletter Issue 85 - March 2016
In this issue:
Songwriters can reclaim song publishing rights
Is publishing a work to a file sharing site 'publication' of
the work?
Supreme Court to consider design patent damages in Apple v
Samsung
Ask Dr. Copyright ...
I'm an aspiring musician. I write the songs that make the whole
world sing. Lately, it seems that I'm having to work much harder to
become an overnight success. After all, I write the songs that make
the young girls cry. Can you help?
Signed,
Mandy
Dear Mandy:
Woof! Wooof, grrrr. Woof! (But I digress...)
It is very hard to become an overnight sensation in the music "biz",
but keep at it! Under the U.S. Copyright Law you, like Sir Paul
McCartney, may be able to reclaim your early works from music
publishing companies after just 56 years. Sir Paul is doing that,
or, at any rate, half of that, right now. You see, he wrote almost
all of his Beatles' hits with John Lennon, and they were owned by
Northern Songs, the publishing company set up by the late Brian
Epstein. Epstein died in 1967, and Northern was sold to ATV Music.
In 1985, Michael Jackson bought ATV. In 1995, ATV merged with Sony,
taking half of Jackson's ownership. In 2009, Yoko Ono sold Lennon's
half to Sony. Last month, Sony bought the other half from Jackson's
estate. Simple, huh?
But under the Copyright Law (17 USC § 304(C )), a songwriter may
file a notice terminating transfers of publishing rights anywhere
from two to ten years prior to the 56 year reclaiming period. On
December 15, 2015, Sir Paul did that for 32 of the original
Lennon-McCartney/Northern/ATV/Jackon/Sony songs.
So, Mandy, if all goes well, then soon, and for the first time, Sir
Paul will actually own the rights to the songs he wrote - at least
the very early ones. As for the later ones? You might say that he
came, and he gave without taking, and will have to wait a while
longer to file more notices in the Copyright Office.
Have a question about intellectual property? Want to talk to someone
not named "Rico" about it? Ask the attorneys at LW&H. They help
creative types, and as I am sure that they'll tell you, you get what
you get when you go for it. Until next month...
The "Doc"
Posting Images on Flickr: Is it Publication?
During a recent presentation on copyright law to the Lehigh
Valley Photography Club, several members expressed an interest in
knowing whether posting images to a photo sharing site such as
Flickr.com was "publication" for purposes of copyright registration.
I expressed my opinion that it is publication. I thought it would be
useful to take a closer look at the issue to see whether there was a
definitive answer. Unfortunately, there is not.
To understand why there is no clear answer it's necessary to look at
the 1976
Copyright Act. Keep in mind that in 1976,
Flickr.com or similar sites did
not exist and the Internet was just being born. Because the
definition has not been updated since that time we have to determine
whether the definition still fits technological advances and
innovations developed after the law was enacted. Here's how the Act
defines "publication":
Section 101: "Publication" is the distribution of copies or
phonorecords of a work to the public by sale or other transfer of
ownership, or by rental, lease, or lending. The offering to
distribute copies or phonorecords to a group of persons for purposes
of further distribution, public performance, or public display
constitutes publication. A public performance or display of a work
does not of itself constitute publication.
The key concepts in the definition are "distribution," "sale," and
"transfer." Exchange of money is not required. "Offering to
distribute" for purposes of distribution, public performance, or
display also constitutes publication. The key word here is the term
"offering." Finally, the definition contains a single exception,
that is, "a public performance or display of a work does not of
itself constitute publication." So, if posting images online only
for purposes of display is the copyright owner's objective then
there is an argument under the definition that such conduct does not
constitute publication. The problem, however, is that the underlying
assumption of posting images to a photo sharing website is the
presumption that the images will be "shared," that is, being offered
to be distributed to the public (assuming public access to the
sharer's webpages). To make matters even more complicated is that
the very act of viewing photos, even on a web site not devoted to
photo sharing, creates a copy of the images in your device's memory.
Isn't that distribution and, if so, isn't that "publication?" So,
even the "public performance and display" exception may not be
applicable. This analysis appears to support our original conclusion
that posting to a photo sharing website is publication under the
Copyright Act.
Let's see what judges say about this. As you may have guessed, they
have been largely silent; there are few cases. In one case,
William Wade Waller Company versus Nexstar Broadcasting, Inc.,
plaintiff, Waller brought a federal copyright action contending that
17 photographs with its copyright watermark were removed or cropped
out in a television commercial produced by defendant. Waller
contended that the infringement was willful and sought damages. The
issue was whether plaintiff could pursue statutory damages if
registration is made within three months after the first publication
of the work. This is a requirement of the Copyright Act. The court
stated, without analysis, that "Plaintiff's act of posting the
pictures to the website making them accessible to others for
distribution is considered a publication." The court relied on a
2002 New York case that held that display of a webpage was
equivalent to publication.
In another case,
Rogers versus Better Business Bureau of Metro. Houston, the
issue before the court was whether the plaintiff's copyright
registration was valid because he said his website was
"unpublished." The court was reluctant to conclude that simply
uploading webpages to the Internet was "publication" under the Act
even though Wade and some other cases supported that proposition.
The court concluded that although the trend favored the finding of
"publication," the conclusion was fact dependent and absent binding
law or even a clear consensus the court was not inclined to negate
the presumption of validity by finding as a matter of law that
plaintiff distributed copies of the websites when he uploaded them
to the Internet." Instead, the court deferred to the Copyright
Office which did not object to the plaintiff's assertion in the
copyright application that the websites were "unpublished."
As noted by the court in Rogers, the end result is that there is no
definitive answer to the question of whether posting images is
equivalent to publication. Perhaps, the best advice is to err on the
side of publication; that way you get all the attendant rights as
well as a strong argument that the images were published upon
posting. Don't forget to register the copyrights of the images
within 3 months of posting them. That way you will insure that you
will have
access to statutory damages should the images be infringed.
Supreme Court Dabbles in Patent Law, Again
The first general rule is that whenever the Supreme Court accepts
a patent case, it will reverse the lower court decision and change
the law. The second general rule is that whenever the Supreme Court
decides a patent case the law is left in worse shape than it was
before.
This time, the Supremes have inserted themselves into the
Apple v Samsung litigation. In 2007, Apple under Steve Jobs took
a high-risk leap and launched the first iPhone. No one knew at the
time whether anyone would buy the new product or whether Apple would
slowly sink beneath the waves. The first iPad followed three years
later. Apple had the foresight to protect the appearance of the
iPhone and iPad with design patents. A 'design patent' protects how
a thing looks, not what it does or how it does it.
The iPhone and iPad were, of course, wildly successful, a fact not
lost on Samsung. In a later infringement action by Apple, a U.S.
jury found that Samsung willfully copied the appearance of the iPad
and iPhone in the early Samsung smart phones and tablet computers,
and in the process infringed Apple's design patents. The jury
awarded over $1 billion in money damages to Apple. The money damages
were subsequently reduced by the trial judge and now total $400
million.
There is no longer any question as to whether the Apple patents are
valid or whether Samsung infringed those patents -
the patents are valid and Samsung did infringe. The only issue
remaining is whether the method used by the lower courts to
calculate Apple's damages is correct.
Design patents have a special remedy that does not apply to utility
patents, and design patent law is as clear as the law gets:
"Whoever... applies the patented design or any colorable
imitation thereof to any article of manufacture for the purpose of
sale...shall be liable to the [patent] owner to the extent of his
total profit." 35 U.S.C. 289
The lower courts held that Samsung's total profit from the sale of
the infringing smart phones and tablet computers was the proper
measure of damages and the $400 million award is based on Samsung's
profits from the sale of infringing products.
Samsung argues that because the patented design is incorporated in a
component of the total product, then the damages should be the
profits from the sale of that component, not the entire product, and
that is the
issue that the Supreme Court has agreed to consider. Of course,
the profit from the sale of a $40.00 smart phone case is a lot less
than the profit from the sale of a $600.00 smart phone. This issue
has far-reaching ramifications and we expect a decision from the
Supreme Court later this year. We'll keep you posted.
