CASE & LEGISLATION UPDATES

CopyirghtGuru’s Case Updates section provides short summaries of recent intellectual property and entertainment law cases. I have tried to include cases which are important, controversial, interesting and sometimes even entertaining. In addition to summarizing the cases, in some instances I have also included comments about the practical implications of the cases. Where possible, I have provided links to the actual court decisions and other legal documents (e.g., complaints, briefs, etc.) related to the lawsuits.  Please note that some of these cases are still pending or subject to appeal. Many cases end up being settled by the parties prior to trial so it is possible that there will never be a court decision in some cases.  Please feel free to check back as more case summaries will be added from time to time.

Most of the actual court decisions are in pdf file format which requires the Adobe Acrobat Reader software for viewing. Many computers come with Adobe Acrobat Reader software already installed so check your computer’s Program Files to see if you already have it. If not, Adobe Acrobat Reader can be downloaded for free. Click on the icon below to go to the Adobe website and follow the instructions.

Copyright Cases

Cases Filed (Lawsuit filed, but no court decision has been issued yet)

Robinson v. Knowles, Destiny's Child Complaint - Producer Terrence "T-Robb" Robinson, is suing Beyonce Knowles, her father/manager and members of Destiny's Child, claiming the hit song "Survivor" is an infringement of a song he wrote called "Glorious." Robinson states that produced "Glorious" in June 2000 and provided it to Mathew Knowles, Beyonce Knowles' father and manager. Mr. Knowles has stated that this is the third lawsuit involving this song and that Destiny's Child wrote the lyrics while the music was left to a different producer, Anthony Dent.

Recently Decided Cases

Copyright Infringement/File-Sharing

Recording Industry Association of America v. Aimster, Deep v. Recording Indus. Assoc., 2004 U.S. LEXIS 91 (2004)

Comment: See Chapter 14 of Music Copyright For The New Millennium, p. 171 for an explanation of the Aimster case. Aimster, an online file-swapping service somewhat similar to Napster, was (like Napster) sued by the record industry as well as the movie industry for copyright infringement.  In addition to this lawsuit, Aimster was also involved in a trademark dispute with AOL Time Warner over its name and Internet domain, which AOL Time Warner claimed was an infringement of AOL's trademark for its AIM instant messaging software. A ruling was issued against Aimster in an arbitration proceeding under the Internet Corporation for Assigned Names and Numbers (ICANN) domain dispute resolution procedure.  Aimster appealed this ruling to a federal court in Virginia, but reached a court-approved settlement at the end of 2001.  Under the settlement, Aimster is no longer Aimster.  Instead, it is now known as Madster (these folks are very creative in selecting names).  On January 13, 2004, the U.S. Supreme Court denied Aimster's appeal petition. This means that the injunction issued by the District Court in 2001 and upheld by the 7th Circuit Court of Appeals in 2003 stands. Aimster had essentially contended that because the files shared using its software were encrypted, Aimster could not know what copyrighted music was being traded by its users and could therefore not be guilty of contributory infringement.  However, both the district and appeals courts disagreed with Aimster's contention finding that Aimster could not escape liability by intentionally making it hard to detect infringement. Although the Aimster software, like any file sharing software, has potential non-infringing uses, the 7th Circuit noted that Aimster had not presented any evidence of non-infringing uses. Additionally, in Aimster's tutorial, the only examples given were of file sharing of copyrighted music which the court viewed as encouraging users to commit copyright infringement. The Supreme Court denied Aimster's petition for certiorari without explanation so there is no written decision.

• District Court Decision - In Re Aimster Copyright Litigation

• RIAA's Complaint - www.riaa.com/pdf/aimster_complaint.pdf

Recording Industry Association of America, Inc. v. Verizon Internet Services, Inc., No. 03-7015 (D.C. Cir. December 19, 2003)

This case hinges on a technical provision of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. §§ 512(h), which allowed copyright owners (or organizations representing them such as the RIAA) to obtain subpoenas ordering Internet service providers to identify subscribers believed to be engaged in copyright infringement through file-sharing. The RIAA had been using the DMCA subpoenas to discover the names of people who they believe to be trading large numbers files containing copyrighted music using peer-to-peer file-sharing software. Verizon, an Internet service provider, refused to comply with two RIAA subpoenas to identify two Verizon subscribers who the RIAA believes to be sharing many copyrighted music using peer-to-peer software such as KaZaa. The District Court ordered Verizon to comply with the subpoenas. Verizon appealed and the Court of Appeals reversed the District Court's decision holding that section 512(h) of the DMCA does not authorize the issuance of a subpoena to an ISP acting solely as a conduit for communications the content of which is determined by others. In somewhat simplified terms, what this means is that the subpoena provided for by § 512(h) of the DMCA only applies when a copyright owner seeks the identity of an alleged infringer who has posted infringing material on the ISP’s server. However, with the peer-to-peer file sharing software at issue in this case, the allegedly infringing music files were not posted to Verizon’s servers and Verizon was merely a conduit for files transferred by its subscribers.

Comment: This case has received a large amount of media coverage and its holding has been misinterpreted by many who seem to believe that it somehow validates file-sharing of copyrighted works using peer-to-peer software such as Kazaa or puts an end to the lawsuits filed by the RIAA against individual file-sharers. While this case is a procedural setback in the recording industry's battle against illegal file-sharing, the practical effect is that it will make identifying file-sharers a bit harder. Instead of relying on the DMCA subpoena, the RIAA and copyright owners will have to file John Doe lawsuits to obtain the identity of file-sharers. This will be considerably more time consuming and costly. The downside to this is that the additional costs will likely be passed on to file-sharers who are ultimately identified. Prior to this ruling, the RIAA had reportedly been willing to settle copyright infringement claims against file-sharers for $1000 to $3000 in most cases which probably reimburses the RIAA's legal costs. Since the legal costs will go up as a result of this ruling, I think its likely that the RIAA will be less willing to settle as cheaply in future.

Metro Goldwyn Mayer Studios, Inc._v_Grokster, Ltd. (U.S. District Court, Los Angeles)

Summary: After the court ruling against Napster and the Napster file sharing service’s shutdown for failure to comply with the court’s injunction order, a new generation of peer-to-peer file sharing services have developed and become very popular. On October 2, 2001, the recording industry (represented by the RIAA) and the movie industry (represented by the MPAA) filed copyright infringement lawsuits against two of these services, Grokster and Morpheus. One difference between these services and Napster is that while Napster used its own Internet servers to maintain an index of available files, Grokster and Morpheus are decentralized, meaning they do not use their own servers to store any files or even list files. Instead, they allow individual users to connect to each other directly through their computers. As a result, Grokster and Morpheus claim that they have no way of knowing what files their users are sharing (even though it seems obvious that the vast majority of files traded contain unauthorized copyrighted music, movies and other materials). The decentralized nature of these file sharing services proved to be crucial as the District Court ruled that unlike Napster, Grokster and Morpheus are not liable for the infringements committed by their users (the court did state that individuals using these services to trade copyrighted files are committing copyright infringement). This case is currently under appeal.

Arista v. MP3Board - Arista and other record label members of the RIAA sued MP3Board, a website which provided links to unauthorized MP3 files of copyrighted sound recordings. The RIAA contended that by providing the links, MP3Board was facilitating the direct infringements by its website's users and should therefore be liable as a contributory and/or vicarious infringer. (For an explanation of contributory and vicarious infringement, see chapter 10 of Music Copyright For The New Millennium). The District Court denied the RIAA's motion for summary judgment since the court believed that the written pleadings were not sufficient to absolutely prove that MP3Board's users committed direct infringements (although acknowledging that there was strong statistical evidence that users were doing so). The court emphasized the distinction the mere accessibility of infringing files and dissemination of those files to the public, which in the court's view would be necessary for infringement of the copyright owners' distribution rights. The Court also denied MP3Board's motion for summary judgment holding that the information it provided did not qualify as fair use. Consequently, it appears this case will go to trial to decide whether MP3Board is liable for contributory or vicarious infringement.

Comment: The court seems to be saying that there must be unauthorized distribution for infringement to occur online. This is somewhat odd since distribution is one of five exclusive rights. Generally, the unauthorized exercise of any one of these rights constitutes infringement. Consequently, even if there was no distribution (e.g., downloading and MP3 file), a user's unauthorized reproduction of a copyrighted sound recording (i.e., uploading and MP3 file) alone should be enough to constitute infringement.

A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) - Appeals Court's decision in the Napster case affirming preliminary injunction against Napster.

Comment: See Chapter 14 of Music Copyright For The New Millennium, pp. 165-170 for an in-depth explanation of the Napster case. Since the book's publication, the original Napster was shut down after the District Court ordered Napster to monitor its system for copyrighted music files and remove access to those files.  Obviously, Napster didn't want to do this since without wide availability of popular music, it appeal would be much more limited.  Napster claimed that it was impossible to monitor its system to prevent infringement and subsequently sought bankruptcy protection to avoid liability for the millions of copyrighted infringements the court had ruled it was likely to be liable for. Napster's assets were bought by Roxio which has since introduced a legal music download service called Napster 2.0.

Copyright Infringement/Sampling

James W. Newton v. Michael Diamond (the Beastie Boys), 9th Circuit Court of Appeals (April 7, 2003)

The Beastie Boys sampled a copyrighted sound recording of jazz musician James Newton's instrumental composition "Choir." The sample consisted of a six-second, three-note sequence which was looped (repeated continuously) throughout the Beastie Boy's song "Pass the Mic." The Beastie Boys had obtained a license from ECM Records (Newton's record label)  which allowed them to use the sample from the sound recording. However, they did not obtain a license for use of the musical composition. Newton sued the Beastie Boys for copyright infringement claiming that the Beastie Boys should have obtained a license from him for use of his musical composition as well as the license from ECM to use the sound recording. Although normally licenses from the copyright owners of both the sound recording and musical composition are required for sampling, the Appeals Court upheld the District Court's ruling that in this situation a license for the use of the musical composition in addition to the sound recording was not required. The District Court had found that the short three-note sample )consisting of the notes  C, D flat and C over a held C note) was not sufficiently original to be copyrightable (although the composition in its entirety is copyrighted). The Appeals Court held that even if the sampled portion of Newton's composition was original, the Beastie Boys' sample was a "de minimis" (i.e., very small and unrecognizable by the average audience) use which does not constitute infringement. 

Jorgensen v. Epic/Sony Records, 2nd Circuit Court of Appeals (Dec. 3, 2003)

Musician/songwriter Jorgensen wrote a song entitled "Long Lost Lover" which he claimed was infringed by two songs - the Celine Dion hit "My Heart Will Go On" from the movie "Titanic" and "Amazed" by country group Lonestar. Jorgensen's song was never commercially released and the defendants moved for summary judgment, claiming that they did not have access to Jorgensen's song. Jorgensen's only evidence of access consisted of his unsolicited mailings of his song to a various record companies including BMG and Sony. Although executives of BMG and Sony admitted that they received recordings from Jorgensen, there was no evidence that these recordings were ever forwarded to the writers of the two songs alleged to be infringing. The Appeals Court upheld the District Court's grant of summary judgment for BMG since there was no reasonable opportunity for the writers of Amazed to have heard Jorgensen's song and that the "bare corporate receipt" of Jorgensen’s song by BMG was not sufficient to prove access. However, the Appeals Court remanded the District Court's grant of summary judgment for Epic/Sony since it believed that, although unlikely, it was possible that the writers of "My Heart Will Go On" may have had access to Jorgensen's song.

Comment: This case illustrates the difficulty in proving access in copyright infringement claims brought by owners of unpublished and relatively unknown works. Without sufficient proof of access, you are extremely unlikely to succeed in a copyright infringement claim. Jorgensen seems to believe that many successful recording artists copy his songs, as illustrated by the fact that he also unsuccessfully (due also to lack of access) sued Eric Clapton claiming that his song "Change The World" infringed one of his songs.

Elvis Presley Enterprises, Inc. v. Passport Video (pdf file) - "The King is dead. His legacy, and those who wish to profit from it, remain very much alive." This copyright infringement case involves the application of the fair use doctrine to a film which includes video clips, photographs, and music without permission from the copyright owners in a biography about Elvis Presley.

Criminal Copyright Infringement

U.S. v. Slater (7th Cir. November 7, 2003) - this appellate court decision affirmed a district court's conviction of 2 college students for conspiracy to commit copyright infringement under section 506 of the Copyright Act. The students were members of "Pirates With Attitude," an organization dedicated to making large amounts of copyrighted computer software freely available online. In addition to being liable for $1,424,640, the two will serve jail sentences of up to 2 years.

Some Older But Important Copyright Cases

Note: For a list of all Supreme Court copyright cases since 1990 and links to the Court's decisions, Click Here 

Copyrightability of Compilations

• Feist Publications, Inc. v. Rural Telephone Service Company, Inc. - The Supreme Court held that compilations can be protected by copyright if they reflect originality in the selection, coordination and arrangement of the materials compiled.  In this case, a compilation consisting of telephone directory white pages was not copyrightable since the selection of material (based on customers in the local phone company's territory) and arrangement of material (i.e., alphabetical order) were not sufficiently original. A competing telephone directory publisher was therefore permitted to copy all of the white pages telephone listings.

Idea v. Expression Distinction

• The National Basketball Association v. Motorola, Inc. - Second Circuit Court of appeals holds statistics from an NBA basketball game are facts that are not subject to copyright protection.

Duration of Copyright

• Eldred v. Ashcroft - The Supreme Court ruled that the Copyright Term Extension Act of 1998 which added 20 years to the terms of copyright was not unconstitutional.

For links to all of the documents (court orders, motions and briefs - including amicus ("friends of the court" who are, more often than not, interested parties) briefs, see http://www.eldred.cc/legal/supremecourt.html.

Exclusive Rights

• New York Times Co. Inc. v. Tasini - Supreme Court decision in a case brought by 6 freelance authors who contributed articles to several periodicals (including the New York Times).

Fair Use

• Harper & Row Publishers, Inc. v. Nation Enterprises - Supreme Court held fair use defense not applicable where excerpts were copied from President Gerald Ford's memoirs prior to their publication.

• Princeton University Press v. Michigan Document Services, Inc. - A 6th Circuit Court of Appeals decision finding no fair use when a photocopying service made coursepacks (i.e., compilations of reading material) for students at the University of Michigan.

• Sony Corp. of America v. Universal City Studios, Inc. - Commonly referred to as the "Betamax Case," this case involved a lawsuit by the movie industry to prevent Betamax video recorders from being sold due to the fact that they could be used for illegal home copying.

• Campbell v. Acuff-Rose Music, Inc. - Supreme Court held 2 Live Crew's parody of the song "Oh, Pretty Woman" a fair use. This decision somewhat clarified the fair use test as applied to situations involving parody.

• Suntrust Bank v. Houghton Mifflin Company - A 2001 decision in a case brought by the estate of Margaret Mitchell (author of Gone With The Wind) against the publisher of a book by Alice Randall called The Wind Done Gone. Randall's book took characters and scenes from Gone With The Wind and used them as part of a critique of Gone With The Wind's depiction of slavery and the Civil-War era American South. The 11th Circuit Court of Appeals held that Randall's book was a fair use, primarily due to its transformative nature for the purpose of criticism and comment on Gone With The Wind.

Trademark Cases:

Playboy Enterprises v. Netscape Communications - The 9th Circuit Court of Appeals held that search engines cannot use trademarked terms in pop-up advertisements that are not related to the trademarks. Playboy sued Netscape and Excite for selling advertisers the use of the terms "playboy" and "playmate," both of which are trademarks owned by Playboy, as part of banner ads. This practice, known as "keying," allows websites to earn money by increasing the number of times online surfers click on the ads. The 9th Circuit remanded the case back to the District Court to resolve the issue of whether most online surfers believe ads generated by trademarked search terms originate from the trademark owner. If Netscape and Excite can prove that there is not much confusion is very minimal, the case could be dismissed.

Comment: The 9th Circuit's decision seems to be a good one since companies such as search engines that use famous trademarks as search terms or metatags are using trademarks simply to draw people to their advertisements or websites. It seems likely that this will cause confusion among surfers since most people who search using a trademark such as "playboy" are likely looking for a website or information associated with Playboy Enterprises, the trademark owner. The primary objective of trademark law is to prevent such confusion.

Note: Shortly after the 9th Circuit Court's ruling, the parties settled this case.  For more information, see this article about the settlement.

Right of Publicity Cases:

Parks v. LaFace Records, et al. - Civil rights icon Rosa Parks sued recording artist OutKast and his record label over the rap duo's hit song entitled "Rosa Parks" claiming that their use of her name violates her right of publicity (Note: This is not a copyright infringement claim since names and titles are not protected by copyright).

Pending Legislation

The Database and Collections of Information Misappropriation Act

The Database and Collections of Information Misappropriation Act (HR3261) would make it a civil offense for someone to copy and redistribute a substantial portion of data collected by commercial database companies and list publishers. Under copyright law, information and ideas are not protected although an author’s original way of expressing information and ideas is protected. The bill is supported by the Software and Information Industry Association and publishers of legal databases (Westlaw and Lexis/Nexis). Database companies often invest large amounts of money in compiling information and want to prevent others from appropriating the information to compete with them. It is opposed by various organizations including the American Association of Libraries, Bloomberg, Charles Schwab, Yahoo and Google.

Critics say the bill would make it possible for companies to own facts and to restrict the free flow of information necessary for an informed public.  Arguably at least, some of the bills’ critics have overestimated the danger it poses. For instance, in order to violate the Database and Collections of Information Misappropriation Act, one would have to copy a "substantial portion" of a database and use it to cause commercial harm to the database owner. Conversely, if one were to take only a small portion or even a relatively large portion for a non-commercial use (e.g., research, educational, etc.), there would be no violation. However, the bill does not define what a "substantial" portion would be and there is still a possibility that large commercial database companies would use the bill to prevent others from using information they have compiled regardless of the amount used or the purpose for which it is used.

The bill also contains exceptions for: independently generated or gathered information; certain reasonable use by nonprofit educational, scientific and research institutions; hyperlinking one online location to another; and making such information available for the primary purpose of news reporting.

Artists Rights and Theft Prevention Act

This proposed legislation, sponsored by Senators John Cornyn (R-Texas), Dianne Feinstein (D-Calif.) and Judiciary Committee Chairman Orrin Hatch (R-Utah), which will increase criminal penalties for copyright infringement committed by making copyrighted movies and music available online before the works are officially released.

In 2003, there was a growing trend involving movies and music recordings being made illegally available over the Internet before they were officially released. Examples include summer 2003 blockbusters "The Hulk" and "The Matrix Reloaded" which were available through online file-sharing services before they were released to theaters. Similarly, recordings by superstar artists such as Jay-Z have been made available online before their release date which forces record companies to bump up release dates. Since movie studios and record companies plan multimillion dollar marketing campaigns around release dates, unauthorized distribution prior to a release can have very detrimental consequences. Also, since making a single copy of a copyrighted work available online can result in an unlimited number of copies being made by people who download the work, a single act of piracy can potentially result in millions of dollars in damages to the copyright owner.

Comment: This bill was introduced in the Senate in November, 2003 and will not be seriously considered until the 2004 Congressional session. Although the copyright industries usually face extreme opposition in their efforts to get Congress to pass stricter laws, there is a good chance this bill will not be as strongly opposed since it would be targeted at specific instances of infringement rather than prohibiting use of any technology. At the same time, the movie and music industries risk losing huge amounts of money if this form of piracy persists and Congress is likely to want to protect these industries which contribute positively to the U.S. economy.

Recent Legislation

The Tennessee Protection of Minor Performers Act (TPMPA) - Passed in 2003 by the Tennessee Legislature, this Act is intended to insure that minors (under 18) are not taken advantage of in entertainment industry contracts. It applies to actors, dancers, musicians, singers, songwriters, comedians, models, producers, writers, directors, choreographers and other performers and entertainers. Several other states such as California and New York also have statutes designed to protect minors working in the entertainment industries. Companies contracting with minors should make sure they comply with any applicable state laws.