Tag: Copyrights

■ Adam E. Szymanski

In Lenz v. Universal Music Corp., Nos. 13-16106 and 16107 (9th Cir. Sept. 14, 2015), a panel of the 9th Circuit held that the Digital Millennium Copyright Act (DMCA) requires a copyright holder to consider fair use before sending a takedown notice to an online service provider, like YouTube® or Google®. Failure to consider fair use, the court determined, raises a triable offense issue as to whether the copyright holder formed a subjective good faith belief that the use was authorized by law.

The claim arose when Universal Music Corp. sent a takedown notice to YouTube to remove a video uploaded by Stephanie Lenz. The 29-second video, entitled “Let’s Go Crazy’ #1”, showed Lenz’s two young children dancing to the song Let’s go Crazy by Prince. YouTube removed the video after notification from Universal and told Lenz on June 5, 2007. Two days later, Lenz sent a counter-notification to YouTube, seeking to reverse the removal of her video. Universal protested and reasserted that the video infringed its copyright. Universal, however, failed to mention fair use. Lenz sued Universal under 17 U.S.C. §512(f) of the DMCA, alleging that Universal misrepresented that her video was infringing its copyright. That section of the DMCA allows an accused infringer to collect damages, including attorneys’ fees.

17 U.S.C. §512(c) sets forth the DMCA’s takedown procedures, which allow service providers to avoid copyright infringement liability for removing allegedly infringing material after receiving a takedown notice. 17 U.S.C. §512(c)(3)(A)(v) requires that a takedown notice include, among other things, a statement of a good faith belief that the allegedly infringing use is “not authorized by the copyright holder, its agent, or the law.” 17 U.S.C. §512(f), under which Lenz sued, provides that anyone who knowingly misrepresents that a material or activity is infringing may be liable.

At issue was whether fair use constitutes an authorization under law—pursuant 17 U.S.C. §512(c)(3)(A)—or, rather, an affirmative defense excusing copyright infringement. Looking to the fair use test codified in 17 U.S.C. §107 as a “limitation on exclusive rights”, the court determined that Congress created a specific type of non-infringing use, thereby authorizing it:

“Although the traditional approach is to view ‘fair use’ as an affirmative defense…it is better viewed as a right granted by the Copyright Act of 1976. Originally, as a judicial doctrine without any statutory basis, fair use was an infringement that was excused—this is presumably why it was treated as a defense. As a statutory doctrine, however, fair use is not an infringement.”

Thus, the court held that fair use is an authorization under law for the purposes of 17 U.S.C. §512(c)(3)(A)(v).

The court refused to impose an objective good faith belief requirement to the existing subjective one, as advocated by Lenz, reasoning that Congress could have done so when enacting the DMCA. The court held that the willful blindness doctrine may be used to show that a copyright holder misrepresented a good faith belief regarding fair use. The court ultimately concluded that “[c]opyright holders cannot shirk their duty to consider—in good faith and prior to sending takedown notification—whether allegedly infringing material constitutes fair use, a use which the DMCA plainly contemplates as authorized by law.”

■ Wendy M. Bratten

In a September decision out of the U.S. District Court for the Central District of California in Los Angeles, music group The Turtles triumphed over Sirius XM Radio, Inc., the largest radio broadcaster in America. Flo & Eddie, Inc., owned by founding members of The Turtles, filed a class action suit against Sirius alleging $100 million dollars in unpaid royalties for performance of pre-1972 recordings, including The Turtles’ chart-topping song “Happy Together.” At issue in the case was whether ownership of pre-1972 sound recordings includes the exclusive right to publicly perform the recording. The court granted Flo & Eddie’s motion for summary judgment, ruling that Sirius infringed the band members’ copyrights under California law and creating “a legal earthquake in the music industry,” according to The Hollywood Reporter.

While the decision raised more questions than it provided answers, on October 15, Sirius was dealt an even bigger blow in a similar California case brought by the Recording Industry Association of America (RIAA), which controls recordings by such iconic artists as The Beatles, The Rolling Stones, and Bob Dylan, among others. Together, the two cases are generating a lot of buzz about a sea change on the horizon that could lead to a major overhaul in the way music is licensed and support for proposed legislation establishing performance royalties for recordings made before 1972.

When Congress passed the Federal Copyright Act in 1976, it expressly stated that song recordings fixed before February 15, 1972, were unaffected. As a result of this carve-out from preemption by federal law, public performance of songs recorded before 1972 is not protected by federal copyright law, and the only element of a pre-1972 sound recording offered federal protection was the underlying composition. This loophole in federal copyright protection created a patchwork of state common law doctrines designed to prevent creation of pirated copies of recordings.

In its case against Sirius, Flo & Eddy argued that California’s Civil Code provides for “exclusive ownership” to the author of sound recordings fixed prior to February 15, 1972, and that ownership right includes the exclusive right to public performance. While Sirius argued this statutory interpretation was too broad and in opposition with legislative intent because public performance is not expressly mentioned in the Civil Code, the court found that a plain reading of the text supports that sound recording ownership is inclusive of all ownership rights that can attach to intellectual property, including the right of public performance. The court agreed in RIAA’s case against Sirius, further emphasizing the legislature specifically adopted only one exception to the exclusive ownership of recordings, namely the recording of “cover” songs, and no such exception was adopted for public performance.

Sirius stated it would be happy to pay older artists, but that the change in the law should be coming from the legislature and not from the bench. The satellite radio giant may just get its wish if the RESPECT Act (H.R.4772) is passed. The bill introduced earlier this year would require digital radio services to pay royalties to classic artists, and has generated widespread support from recording legends through the Project 72 movement. With the pending bill, imminent appeals from Sirius in both recent California cases, and multiple cases pending against Pandora Internet Radio, it could be some time before the recording industry and digital radio are happy together.

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