Political Campaigns and Musicians: 5 Notable Clashes

by Matt Digan

Background

Political campaigns in the United States have had a long and storied history with music. From the inventive and effective “Tippecanoe and Tyler Too” that sang the praises of the Whig Party’s candidates for president and vice president in the 1840 presidential election, to John McCain’s use of Chuck Berry’s “Johnny B. Goode” in his 2008 run for president, music has played an integral role in political campaigns for centuries. Such widespread use of music in political campaigns raises the question of what role the actual artists have in controlling who may use their music and in what context.

The manner in which a campaign uses or intends to use a given song is arguably the most important element in evaluating this question. If a campaign merely intends to use a song to warm up crowds before rallies at various venues around the country, the campaign only needs to obtain a public performance license from a performing rights organization like Broadcast Music, Inc. (BMI) or the American Society of Composers, Authors, and Publishers (ASCAP).[1] Acquiring a license from one of these performing rights organizations does not involve directly contracting with the artists behind the songs and grants a campaign access to millions of songs, though, in the case of ASCAP, members may ask ASCAP to exclude specific songs from a particular political campaign’s license.[2] Campaigns do not usually stir up trouble making use of these types of licenses because they are overwhelming used for activities like playing songs for crowds while they wait for the candidate to come on stage—the uses are not particularly political or potentially controversial.

However, a campaign may seek to go beyond such an apolitical use and instead use a song in a more central role, such as a theme for the candidate and/or campaign message. In these instances, ASCAP recommends that campaigns reach out to the artists for permission because such uses implicate more than just copyright law.[3] An artist’s right of publicity, which provides image protection for famous individuals, and issues of false endorsement, which protects an individual from appearing to support or endorse a product, person, or message, may also be implicated by such a use.[4] The closer a song is tied to the image or message of the candidate or campaign, the more likely it is that the artist can successfully sue under these rights.[5] The list below includes several examples of attempts to connect a song with a campaign’s image or message.

Further, if a campaign wishes to use a song in an ad, they must usually obtain both a sync license and a master use license. To learn more about the various types of music licenses that exist, see our blog on the topic. The campaign will likely need to contract with the song’s publisher and the artist’s record label in order to obtain the necessary licenses. The publisher, record label, and artist can decide if and how they want the artist’s music associated with a particular political campaign. The list below contains an example of a campaign allegedly using a song in an ad without obtaining the necessary licenses.

A campaign could also attempt to use a song in an ad without licenses under copyright fair use principles. There is no clear line between what is a fair use and what is not; an evaluation of fair use involves considering: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use upon the potential market for or value of the copyrighted work.[6] However, testing a campaign’s copyright fair use of a song in a given ad would not come until a lawsuit was filed by the copyright owner; and campaigns—wishing to avoid unnecessary expenses and complications—are far more likely to seek the necessary licenses rather than risk litigation.

Finally, artists have the simple power of leveraging their fame and platform to pressure campaigns into ceasing the use of their music, either through the media, a cease and desist letter, or any other means to affect the desired outcome. In such instances, campaigns usually comply with the artists to avoid risking a public relations issue, to minimize embarrassment to the campaign or candidate, etc.

Here are five notable clashes between musical artists and political campaigns.

1. Bruce Springsteen v. Ronald Reagan, Bob Dole, Pat Buchanan, and All of America

Pretty much since the initial release of the Boss’ 1984 hit single, “Born in the U.S.A,” Americans of all stripes have been misinterpreting and misapplying the song. It is easy to mistake the song, with its rousing chorus, as a full-throated expression of patriotism and pride in being born in the United States, but the actual lyrics of the song espouse a darker and far more cynical outlook on American life. The song follows a young American from small town America, to the jungles of Vietnam, back to his small town, with all of the trials and tribulations along the way.[7]

Springsteen himself has long been associated with the Democratic Party and has repeatedly expressed his displeasure with Republican candidates for president using his songs—especially “Born in the U.S.A.”[8] President Reagan’s campaign asked Springsteen if they could use the song in the President’s 1984 reelection, but Springsteen refused—an example of a campaign hoping to center a song as a theme of the campaign. Bob Dole in 1996 and Pat Buchanan in 2000 each used the song until Springsteen publicly disavowed its use, and in response both campaigns stopped using the song. However, as long as we have Memorial Day parties, July 4^th parties, Labor Day parties, and political campaigns, people will likely continue to misinterpret “Born in the U.S.A.”

2. John Mellencamp v. Ronald Reagan, George W. Bush, John McCain

Much like Bruce Springsteen, John Mellencamp is often mistakenly identified as a conservative based on his music and the central place the American heartland has in that music. However, Mellencamp has described himself “as left-wing as you can get,” and has performed for Democratic political campaigns over the years.[9] That has not stopped the likes of Ronald Reagan, George W. Bush, and John McCain from wanting to use his songs—most notably “Pink Houses”—at their political events. Mellencamp discouraged Reagan from using “Pink Houses” in his 1984 campaign when representatives for the campaign reached out, and he requested that the John McCain campaign stop using “Our Country” and “Pink Houses” at his events during the 2008 Republican primary. Additionally, Mellencamp requested that Bush stop using “R.O.C.K in the U.S.A” in 2000, and in each of these instances, the campaigns agreed to either stop using the songs or not use them in the first place.[10]

3. Nickelback v. Donald Trump

In October 2019, President Trump tweeted out an edited clip from Canadian rock band Nickelback’s 2005 hit “Photograph” that depicted lead singer Chad Kroeger holding a photo of then-Vice President Joe Biden, his son, and a Ukrainian gas company board member.[11] Less than a day after being tweeted out, the clip itself was removed by Twitter after they received a copyright complaint filed on behalf of Nickelback by Warner Music Inc.[12] It would have been interesting to see whether President Trump’s clip amounted to a fair use of both the song and music video, but the use of Twitter’s copyright complaint system does not require an evaluation of fair use.

4. Sam Moore v. Barack Obama

During the 2008 presidential election, the Obama campaign took to playing Sam Moore’s “Hold on, I’m Comin” at rallies, during which attendees would sing, “hold on, Obama’s comin’.”[13] The soul music legend himself wrote a letter requesting that they stop using the song because he had not endorsed Obama for president and did not want their use of his song to be mistaken as such an endorsement.[14] The Obama campaign stopped using the song and Moore would eventually go on to perform at President Obama’s inaugural ball in 2009.[15]

5. David Byrne v. Charlie Crist

During his 2010 campaign for a Senate seat in Florida against Marco Rubio, former Florida governor Charlie Crist used the Talking Heads song “Road to Nowhere” in an attack ad against Rubio.[16] Talking Heads lead singer and songwriter, David Byrne, then filed a lawsuit against Charlie Crist for the unauthorized use of the band’s song, alleging that the Crist campaign had not acquired the proper licenses. In 2011, the lawsuit was settled between the two out of court, with Crist releasing a video to YouTube apologizing for the whole incident. In a statement released by Byrne alongside the announcement of the settlement, he confessed his surprise upon learning that the unauthorized use of pop songs in political ads was very common in the United States.[17] If only we had written this article nine years ago for Mr. Byrne, he would have been less surprised.

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[1] Using Music in Political Campaigns: What you should know, ASCAP (accessed Nov. 19, 2020), https://www.ascap.com/~/media/files/pdf/advocacy-legislation/political_campaign.pdf.

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] Ask the alliance, Copyright Alliance (accessed Nov. 19, 2020), https://copyrightalliance.org/ca_faq_post/political-campaign-music-other-copyrighted-works/.

[7] Josh Terry, Politicians Have Always Misunderstood Springsteen’s ‘Born in the U.S.A,’ Vice (Oct. 5, 2020), https://www.vice.com/en/article/pkyjvn/misunderstood-bruce-springsteens-born-in-the-usa-trump.

[8] Id.

[9] Eveline Chao, Stop Using My Song: 35 Artists Who Fought Politicians Over Their Music, Rolling Stone (Jul. 8, 2015), https://www.rollingstone.com/politics/politics-lists/stop-using-my-song-35-artists-who-fought-politicians-over-their-music-75611/bruce-springsteen-vs-ronald-reagan-bob-dole-and-pat-buchanan-28730/.

[10] Id.

[11] Emma Specter, Donald Trump vs. Nickelback: The Twitter Feud Nobody Was Expecting, Vogue (Oct. 3, 2019), https://www.vogue.com/article/donald-trump-nickelback-photograph-meme-takedown.

[12] Devan Cole and Donie O’Sullivan, Twitter removes Trump’s Nickelback video after copyright complaint, CNN (Oct. 3, 2019), https://www.cnn.com/2019/10/03/politics/twitter-donald-trump-nickelback-tweet-copyright-complaint-trnd/index.html.

[13] Eveline Chao, Stop Using My Song: 35 Artists Who Fought Politicians Over Their Music, https://www.rollingstone.com/politics/politics-lists/stop-using-my-song-35-artists-who-fought-politicians-over-their-music-75611/bruce-springsteen-vs-ronald-reagan-bob-dole-and-pat-buchanan-28730/.

[14] Stephen Davis, Do Rock Stars Dislike Democrats, Too?, Slate (Jun. 30, 2011), http://www.slate.com/blogs/browbeat/2011/06/30/has_a_rock_star_ever_sued_a_democrat_for_using_a_song_in_a_campa.html.

[15] Eveline Chao, Stop Using My Song: 35 Artists Who Fought Politicians Over Their Music, https://www.rollingstone.com/politics/politics-lists/stop-using-my-song-35-artists-who-fought-politicians-over-their-music-75611/bruce-springsteen-vs-ronald-reagan-bob-dole-and-pat-buchanan-28730/.

[16] Matthew Perpetua, David Byrne Wins Settlement Over Unauthorized Political Ad, Rolling Stone (Apr. 12, 2011), https://www.rollingstone.com/music/music-news/david-byrne-wins-settlement-over-unauthorized-political-ad-188523/.

[17] Id.

The Copyright Showdown Between Google and Oracle Finally Reaches the Supreme Court

by Matt Digan

On October 7, 2020, Google and Oracle finally had their day at the Supreme Court after a decade-long legal battle between the two tech giants. The issues before the eight-justice Supreme Court were:

(1) whether copyright protection extended to a software interface; and

(2) whether, as a jury found, the petitioner’s (Google) use of a software interface in the context of creating a new computer program constituted fair use.[1]

To understand how the companies found themselves arguing before the highest court in the land, it is useful to review the history of these legal proceedings.

How We Got Here

Oracle’s copyright infringement allegations stem from Google’s decision in the mid-2000s to re-implement the Java programming language for use in its then-upcoming Android platform rather than create a new programming language from scratch.[2]The decision was practical; Java was already widely known and used, so re-implementing it would allow “thousands of existing Java programmers to become Android developers without having to learn a new language.”[3]However, the re-implementation used the same names, organization, and functionality as some of Java’s application programming interfaces (APIs). An API is a collection of well-defined interactions in software programming that allow programmers to “build without having to reinvent the wheel.”[4]

In a lawsuit filed in 2010 in the Northern District of California, Oracle alleged copyright infringement against Google for copying 37 Java APIs, or about 11,500 lines of code out of Android’s estimated 12 million lines of code.[5] Two separate legal points were at issue: (1), whether the APIs were copyrightable; and (2), whether Google’s use was a fair use. The judge in the case ruled as a matter of law that APIs were not covered by copyright. He noted that, “when there is only one way to write something, the merger doctrine bars anyone from claiming exclusive copyright ownership of that expression. Therefore, there can be no copyright violation in using the identical declarations.”[6]The jury hung on the question of fair use.

Oracle then appealed the decision to the Federal Circuit, which in 2014 reversed the district court’s finding and held that Java APIs were copyrightable, but left open the possibility of a fair use defense for Google.[7] The case then returned to the district court for a trial on Google’s fair use defense, and in 2016 a jury unanimously agreed that Google’s use of the Java APIs was fair use. Oracle then filed another appeal, and in 2018 the Federal Circuit rejected the jury’s verdict and ruled that Google’s use was not fair use as a matter of law.[8] In January 2019, Google filed another petition asking the Supreme Court to review both of the Federal Circuit decisions, and in November 2019 the Court granted Google’s petition.[9]

Oral Arguments

One of Google’s primary goals in oral arguments was to demonstrate to the justices that there was something different about APIs as opposed to other computer code and that that difference was of legal significance. However, court observers noted that at least four justices—Alito, Gorsuch, Kavanaugh, and Thomas—expressed skepticism at Google’s position that APIs could not be copyrighted.[10] Those justices seemed far more amenable to Oracle’s position that APIs are no different than any other computer code, and therefore subject to copyright.

It is important to note here that for decades, it had been assumed in the industry that APIs were not subject to copyright.[11] It was taken for granted that competing companies could make use of each other’s software in order to enable products to work with each other and to propel the industry forward. For example, Oracle’s MySQL language was created as an iteration of IBM’s SQL and Oracle re-implemented Amazon’s S3 API for cloud services so customers who built software for Amazon’s cloud platform could easily switch to Oracle’s rival cloud platform.[12] A finding for Oracle could upend this foundational assumption that has existed at the core of the industry and supported its growth and development.

Justice Sotomayor noted that prevailing belief within the industry and that it did not seem sensible to upend it now. Oracle disputed the justice’s statement, noting that there has never been a case that has explicitly stated a difference between code that is copyrightable and code that is not.[13]

There was also the issue of whether or not Google’s use of the API was fair use. This issue could end up being resolved on procedural grounds, rather than an adjudication of whether Google’s use actually constituted fair use. Traditionally, factual questions are supposed to be decided by juries, not judges. Google argued that an evaluation of fair use is sufficiently fact-intensive and that the Federal Circuit should not have overturned the jury’s verdict. Several justices seemed open to this line of argument.[14]

Additionally, over 50 amici briefs have been filed in the case. Such industry giants as Microsoft, IBM, and Mozilla support Google, while Oracle has the amici support of the U.S. government, several former industry executives, and a broad range of copyright owner associations and professors of law, among others.[15]

What to Expect

If all four of those justices who expressed skepticism at Google’s argument that APIs were not copyrightable voted for Oracle, the best Google could hope for is a tie. A tie would still technically be a loss for Google as it would leave in place Oracle’s win at the appellate level, but it would not set a national precedent that APIs are copyrightable. If five or more justices side with Oracle on the issue of API copyrightability, then the country has a new precedent that could cause seismic shifts in how the industry operates.

Another possible outcome could be a narrow procedural win for Google on the issue of the Federal Circuit throwing out the jury’s finding of fair use. Such a ruling would permit the Court to skirt around the issue of API copyrightability entirely, kicking the case back down for further litigation. It remains to be seen whether the Court will rule on both issues or just one, for Oracle or for Google, but the software industry and copyright scholars alike await the Court’s decision with bated breath.

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[1]Google LLC v. Oracle America Inc., SCOTUSblog (last visited Oct. 16, 2020), https://www.scotusblog.com/case-files/cases/google-llc-v-oracle-america-inc/.

[2] Timothy B. Lee, Google’s Supreme Court faceoff with Oracle was a disaster for Google, Ars Technica (Oct. 8, 2020), https://arstechnica.com/tech-policy/2020/10/googles-supreme-court-faceoff-with-oracle-was-a-disaster-for-google/.

[3] Id.

[4] Sarah Jeong, The Supreme Court is taking on Google and Oracle one last time, The Verge (Oct. 6, 2020), https://www.theverge.com/2020/10/6/21504715/google-v-oracle-supreme-court-hearings-android-java.

[5] Id.

[6] Oracle America, Inc. v. Google Inc., 872 F.Supp.2d 974, 998 (N.D. Cal. 2012).

[7] Oracle v. Google, Electronic Frontier Foundation (last visited Oct. 16, 2020), https://www.eff.org/cases/oracle-v-google.

[8] Id.

[9] Id.

[10] Lee, Google’s Supreme Court faceoff with Oracle was a disaster for Google, https://arstechnica.com/tech-policy/2020/10/googles-supreme-court-faceoff-with-oracle-was-a-disaster-for-google/.

[11] Jeong, The Supreme Court is taking on Google and Oracle one last time, https://www.theverge.com/2020/10/6/21504715/google-v-oracle-supreme-court-hearings-android-java.

[12] Id.; Charles Duan, Oracle copied Amazon’s API—was that copyright infringement?, Ars Technica (Jan. 1, 2020), https://arstechnica.com/tech-policy/2020/01/oracle-copied-amazons-api-was-that-copyright-infringement/.

[13] Lee, Google’s Supreme Court faceoff with Oracle was a disaster for Google, https://arstechnica.com/tech-policy/2020/10/googles-supreme-court-faceoff-with-oracle-was-a-disaster-for-google/.

[14] Id.

[15] Jacob Baldinger, What’s at stake in the copyright dispute between Google and Oracle?, Subscript Law (Mar. 26, 2020), https://www.subscriptlaw.com/blog/amicus-positions-google-v-oracle.

Music Licensing: Brief Overview of Music Rights and Types of Licenses

by Matt Digan

The music licensing regime that exists in the United States is an interlocking landscape of various rights and licenses that can be overwhelming to a newcomer. However, if an individual or company seeks to make use of music in some fashion, it is almost a guarantee that the entity will be implicating one or more music rights and need to use one or more music licenses. This article provides a brief and by no means exhaustive overview of some of the various music rights and licenses that exist.

Music Rights

U.S. copyright law does not provide for one copyright in a song, but rather splits the song into a musical composition copyright and a sound recording copyright. Various music licenses are then employed to make use of one or both of these copyrights in a song.

The musical composition encompasses the music (i.e., the melody, rhythm, harmony) and any accompanying lyrics of a song. Composers, lyricists, and/or songwriters are usually the literal authors to musical compositions, but it is most common for publishing companies to own the rights. Owners of musical compositions have the exclusive right to reproduce the work, prepare derivative works, distribute copies to the public by sale, rental, lease, and lending, perform the work publicly, and display the work publicly.

The sound recording copyright covers the specific fixed, recorded version of the musical composition and is most often owned by record labels. Owners of sound recordings have the same exclusive rights as owners of musical compositions except that they do not have the right to display the work publicly because such a right is not applicable to sound recordings.

Though technically a single person or entity could own both copyrights to an individual song, the music industry is structured such that the musical composition and sound recording copyrights are often owned by different entities. That means anyone wishing to obtain one or more of the various licenses discussed below will likely have to contract with more than one party.

Types of Music Licenses

The four most common music licenses needed for use of a song are master use licenses, synchronization (sync) licenses, public performance licenses, and mechanical licenses. Some combination of those licenses is almost always required for the use of a song.

Master use licenses are needed for the use of a specific recorded version of a song (i.e., a sound recording) in either an audio or visual format. A master use license for a given song is most often obtained from the record label that owns the sound recording rights in that song. It is important to note that obtaining a master use license for a song does not cover the musical composition rights in that song. Another license is generally needed in conjunction with a master use license to cover all the implicated rights. Finally, master use licenses do not implicate public performance rights. One cannot obtain a master use license for a song and then perform that song publicly. While publicly performing a song is technically a use of a specific recording of a song, it is treated differently with its own license (see below).  

A sync license is required for use of a musical composition in an audiovisual format and is often obtained in conjunction with a master use license. The name is derived from the action of “syncing” audio with video. For example, if a company wanted to use a popular song in a television commercial for a car, it would need to obtain a sync license from the owner of the musical composition—usually a music publishing company—and a master use license. In practice, sync licenses are almost always used with master use licenses, but technically the two are not always necessary (e.g., a company could acquire a sync license for a musical composition and then record its own version, obviating the need for a master use license, but this is not common).

A public performance license may be the most widely used and issued music license, as it covers any playing or broadcasting of a song outside a small private group of friends or family. “Broadcast” is construed broadly and applies to any performance in a public place where people gather and to transmissions via radio, television, or the Internet. Bars and stores wanting to play music for their customers are prime examples of activity requiring a public performance license. This license is most commonly obtained through a performing rights organization (PRO), such as ASCAP or BMI.

Finally, a mechanical license is needed for any physical reproduction of a musical composition. This usually only applies to people or companies seeking to create a cover of an existing musical composition to be used in an audio-only format (CD, MP3, streaming, etc.). Additionally, almost any use of a song that requires a mechanical license will also require a master use license to cover all of the relevant rights. In the U.S., copyright law provides for compulsory mechanical licensing, which means that someone wishing to obtain a mechanical license does not need to obtain the express permission of the owner, but rather need only follow the necessary steps. In practice, most mechanical licenses are handled by companies like the Harry Fox Agency, which conducts mechanical licensing on behalf of musical composition owners.

Final Thoughts

Whatever the specific intended use of music is, rest assured that someone (read many people) has probably already used music in a similar way. Because of the widespread licensing of music over the decades, specific systems and procedures have formed to streamline the process as much as possible. Though it can still be a daunting process given the sheer number of rights and licenses, it is not impossible.

Also keep in mind that a use of music may not require a license or implicate others’ rights. Songs that are already in the public domain do not require licenses, though the selection might be slim. Some music and songs are made available through Creative Commons (not covered here). Additionally, there are companies that license pre-cleared music for common media uses (aka stock music). Finally, there is always the option of creating new music from scratch through commission and/or contract.

References

• U.S. Copyright Office, “Copyright Registration of Musical Compositions and Sound Recordings,” Copyright.gov, https://www.copyright.gov/circs/circ56a.pdf.
• ASCAP, “ASCAP Licensing,” ASCAP.com, https://www.ascap.com/help/ascap-licensing#:~:text=its%20social%20acquaintances).-,A%20public%20performance%20is%20also%20one%20that%20is%20transmitted%20to,the%20music%20or%20his%20representative.

Group Registration for a Fraction of the Cost

Alexa Rose Colangelo

On June 22, the U.S. Copyright Office issued a new rule permitting group registration of short online literary works. The new rule permits registration of up to fifty (50) short literary works through a single group application and filing fee.^[1] Previously, applicants had to file a separate application for each short literary work and pay a fee of $65 per application.^[2] Beginning on August 17^th when the new rule comes into effect, applicants will be able to save a significant amount on application fees as they will be able to pay a single $65 fee for the single group application.^[3]

Eligible short literary texts are those consisting solely of text, such as blog posts, social media posts, and short online articles.^[4] In order to qualify for group registration, the short literary works must i) each contain 50-17,500 words, ii) be created by the same author or authors, iii) each author must be named the copyright claimant or claimants, and iv) all works must be published within a three month period.^[5] The new rule excludes works for hire because the rule is meant to benefit individual writers with constrained resources rather than benefit corporate authors.^[6]

If registration is successful, each short literary work filed through the group application will be considered a separate work of authorship at a fraction of the cost!^[7]

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[1] Group Registration of Short Online Literary Works, 85 Fed. Reg. 37,341 (June 22, 2020) (to be codified at 37 C.F.R. pt. 201-02)

[2] Id at. 37,345.

[3] Id. at 37,346.

[4] Id. at 37,341.

[5] Id.

[6] Id. at 37,344.

[7] Id. at 37,341.

How Does Copyright Protect Tattoos and Graffiti as Embedded Works?

Shuyu Wang

Photo: Luis Villasmil / unsplash.com

Tattoos and graffiti are not quite the symbols of rebellion they once were. Now they have become an important part of street culture in America and enjoy greater popularity than ever before. It is now generally understood that tattoos and graffiti are also copyrightable work when they show original expression. However, tattoos and graffiti share one feature that distinguishes them from other types of art—they have to be in physical connection to certain substances, i.e., human skin or building surface, to fully present their artistic expression. This feature raises a legal question in practice: do tattoos and graffiti enjoy standalone copyright protection when displayed adjacently with other objects?

Which One Is Copied? The Tattoo or the Person?

The recent Solid Oak case^[1] from New York catches a lot of basketball and video game lovers’ attention. Several National Basketball Association (“NBA”) stars, including LeBron James, are involved in this case. This time however, it is not the players themselves, but their tattoos that have become a central issue.

The defendants, 2K Games, Inc. and Take-Two Interactive Software, Inc. (hereinafter collectively as “Take-Two”), are the developers of the video game series NBA 2K. The basketball simulation game features lifelike depictions of NBA players and their tattoos.^[2] In 2016, the plaintiff, Solid Oak Sketches, LLC (“Solid Oak”), alleged that Take-Two infringed its copyrights of the depicted tattoos. Take-Two then moved for summary judgment on the ground of de minimum use and fair use, and thus to dismiss the plaintiff’s claim.^[3]

The central inquiry was whether Solid Oak could exclude Take-Two from using the tattoos in the game. Solid Oak is a tattoo licensing company that purchases copyrights from independent tattooists. In this case, Solid Oak holds an exclusive license to each of the disputed tattoos, yet it is not licensed to apply the tattoos to a person’s skin. Neither does Solid Oak hold any trademark or publicity rights to the NBA player’s likeness.^[4]

On the other hand, Take-Two has obtained a license to exploit the player’s likeness from the NBA. The players have given the NBA the right to license their likeness to third parties. Moreover, the players also granted Take-Two permission to use their likeness.^[5]

The NBA 2K game includes many realistic components to provide an accurate simulation of an actual NBA game. The tattoos are thus included to “depict the physical likenesses of the real-world basketball players as realistically as possible.”^[6] However, these tattoos are not always clearly seen by game users. The game sets a distant camera angle that renders the tattoos at a relatively smaller size than in the real world. Also, the tattoos are further obscured by a player’s quick movements in the game, making them less noticeable by a game user.^[7]

After examining Take-Two’s evidence and the expert testimonies, the court found that the use of the disputed tattoos is de minimis. The tattoos will appear only after a user chooses three certain players from over 400 available options. Also, in the game they are so small and distorted that they often appear out-of-notice to the average game users. Therefore, Take-Two’s use of the tattoos falls below the quantitative threshold of substantial similarity.^[8]

Furthermore, the court also found an implied license for Take-Two to use the tattoos in the game as a part of the player’s likeness. The tattooists who created the work testified that they implicitly allowed the NBA players to copy and distribute the tattoos as elements of their likenesses, as they knew that the players were likely to appear in public and various forms of media. Then, the license to use such likenesses was passed from the players to the NBA, then to Take-Two. The court thus found no copyright infringement.^[9]

Lastly, the court acknowledged Take-Two’s inclusion of the tattoos is permissible as fair use. Even though the purpose of using the tattoos is to increase the commercial value of the game, the tattoos are incidental to such value because consumers do not buy the game for the tattoos. The commercial use is also undermined by the factual rather than expressive nature of the tattoos. The tattooists admitted that they did not intend much creativeness in the designs, but rather copied common tattoo motifs or pre-published materials.^[10] Besides, even though the tattoos were copied in the whole, their size is so reduced that the visual impact of their artistic expression is significantly limited.^[11] It is unlikely such use of Solid Oak’s tattoos can serve as a substitute in the tattoo market.^[12]

The Solid Oak decision provides some guidance for commercial use of a celebrity’s likeness when that celebrity’s tattoos are likely to be displayed along. However, this case does not address the protectability of tattoos per se, because it views the tattoos as part of the celebrity’s likeness. It remains an open question when and how we should separate a person’s tattoo from his likeness in a copyright infringement discussion.

Is a Piece of Graffiti “Part of” an Architectural Design?

Photo: Char Beck / unsplash.com

On the other hand, a case from California, another robust market for artists, reviewed the “part of” inquiry in a different context. The Falkner^[13] case from 2018 involves an automobile advertisement photograph featuring a street artist’s mural (graffiti) work in a parking garage. The defendant, General Motors LLC, used this photo in its social media campaign. Later on, the mural’s creator Adrian Falkner (also known as “Smash 137”) sued General Motors for copyright infringement, and General Motors moved for summary judgment to dismiss the case.

The core issue of the infringement claim was whether Falkner’s mural is an “architectural work” under section 102 of the Copyright Act^[14] to trigger a section 120 exemption. Section 120 of the Copyright Act^[15] permits pictorial representations of an architectural work, such as taking photos or painting images of a building. General Motors argued that the section 120 exemption applies to Falkner’s mural because it is “incorporated into a building.”^[16] However, by comparing the instant case to a precedent that involves visual depictions of streetwall towers in a movie, the court reached an opposite conclusion.

The instructive case that the court looked at is Leicester v. Warner Bros.^[17] The case arose from a superhero movie Batman Forever, which features the 801 Tower in downtown Los Angeles and four towers that form its streetwall. An artist Andrew Leicester registered the towers along with his other works in an adjacent courtyard space for copyright as a sculptural work, naming it Zanja Madre.^[18] Leicester argued that Zanja Madra should be viewed as an independent protectable work apart from the 801 Tower, and thus the section 120 exemption does not extend to Zanja Madre.^[19] However, the Leicester court found that the streetwall towers, even though physically separate, serve majorly a functional purpose to extend the property line under a municipal requirement.^[20] Thus, the streetwall towers are so incorporated into the overall architectural structure that they are subject to the section 120 exemption.

Yet, the Falkner court did not stop at the Leicester conclusion. It closely examined the facts from two cases to decide whether a mural/graffiti is “part of” an architectural work for the purpose of section 120. The court found several distinctions in the instant case from Leicester. First, the streetwall towers in Leicester incorporated a few decorative features that matched the 801 Tower, as an architectural element mandated by the state’s development agency.^[21] On the other hand, the Falkner mural is conceptually separated from the parking garage, and it is commissioned with complete creative freedom.^[22] Second, the Leicester streetwall towers serve the functional purpose of channeling traffic into the courtyard as metal gates,^[23] while Falkner was not given any functional instructions when creating the mural.^[24] Accordingly, the Falkner court found a lack of relevant connection between the mural and the garage to characterize the art piece as “part of” the architectural work. Therefore, General Motors failed their section 120 argument, and their motion for summary judgment was denied.^[25]

New Frontier in Copyright Litigation?

As street culture continues to thrive in urban centers, it is possible that we will see more cases from federal courts addressing the emerging topic of tattoos and graffiti. At least for now, artists, especially those who are fond of realistic works, should be cautious about depicting other copyrightable materials in their creations, no matter whether those are the main focus or not.

---

[1] Solid Oak Sketches, LLC v. 2K Games, Inc., 2020 U.S. Dist. LEXIS 53287, at *1 (S.D.N.Y. Mar. 26, 2020).
[2] Id. at *3.
[3] Id. at *4.
[4] Id. at *5.
[5] Id.
[6] Id. at *10.
[7] Id. at *11.
[8] Id. at *20.
[9] Id. at *22-23.
[10] Id. at *29-30.
[11] Id at *31.
[12] Id at *32.
[13] Falkner v. GM, LLC, 393 F. Supp. 3d 927 (C.D. Cal., 2018)
[14] 17 U.S.C. § 102(a)(8).
[15] 17 U.S.C. § 120.
[16] Alan Feuer, G.M. Used Graffiti in a Car Ad. Should the Artist Be Paid?, N.Y. Times (July 17, 2018), https://www.nytimes.com/2018/07/17/arts/design/general-motors-graffiti-artist-copyright.html.
[17] Leicester v. Warner Bros., 1998 U.S. Dist. LEXIS 8366 (C.D. Cal. May 29, 1998).
[18] Id. at *7.
[19] Id. at *23.
[20] Id. at *21-22.
[21] Id.
[22] Falkner, 393 F. Supp. 3d at 937.
[23] Leicester, 1998 U.S. Dist. LEXIS 8366 at *22.
[24] Falkner, 393 F. Supp. 3d at 937.
[25] Id.

DMCA Notice-and-Takedown System: Is It Still Effective Today?

Shuyu Wang

Image: John Cameron / unsplash.com

The year-long review of the Digital Millennium Copyright Act (“DMCA”)^[1] conducted by the Senate Judicial Committee IP Subcommittee continues to proceed in spite of the social and economic uncertainty brought by the global pandemic. The third hearing in a series, held on June 2, 2020, examined the effectiveness of the DMCA notice-and-takedown system in the 21st century.

Compared with the first two hearings in a series that were more academic in nature, the third one presented more practical aspects of the DMCA. Senator Thom Tillis started the hearing by recognizing that the Section 512 notice-and-takedown provision of the DMCA was a compromise between copyright owners and the emerging online service providers (“OSPs”). OSPs were supposed to follow certain criteria to curb online piracy in exchange for limited liabilities. However, Senator Tillis referred to the recent Section 512 report by the U.S. Copyright Office, which pointed out that “the grand bargain is no longer working.”^[2] The great expansion of Internet platforms generates significantly more online activities, which has placed greater burdens on the creators and artists to police their copyrights. Senator Tillis acknowledged that fixing the current framework is not enough to cure the problem. He hinted of the possibility of developing an entirely new system to combat online piracy.

Content Creators:
The Takedown System Does Not Work Meaningfully

The first panel began with the views of artists and authors. Famous musician Don Henley from the Eagles expressed his concerns for musicians that struggle to make a living as the enormous digital platforms facilitate millions of copyright infringements.^[3] According to Henley, the balance sought at the birth of the DMCA has tilted greatly towards OSPs. As the digital marketplace has matured from the one from two decades ago, digital platforms continue to use the Section 512 safe harbors as a negotiation leverage to pay license fees that are “well below market.”^[4] Currently, even when music creators flag infringing postings by sending notices to takedown one link, a dozen more pop up, and digital platforms continue to monetize and collect advertisement revenues from potentially infringing conduct.^[5] Henley condemned the fact that OSPs, which are capable of overseeing and controlling the content on their platforms, choose not to enforce meaningfully against online infringement at the fear of losing revenue.^[6]

Douglas Preston of the Authors Guild shared the concerns of Henley. Preston submitted that due to online book piracy, full-time authors have experienced a 42% drop in their writing income from a decade prior.^[7] Both online shopping sites and social media platforms offer thousands of illegal e-books for download.^[8] However, OSPs only need to take down infringing content in response to “specific notices” to take advantage of the DMCA safe harbors. Such notices require a specific address for each infringing item in order to trigger a meaningful takedown, resulting in a whack-a-mole situation for content creators to enforce their rights.^[9]

Independent Creators Suffer More
from the Unbalanced Burden of Enforcement

Content creator witnesses at the second panel further emphasized “how broken the DMCA is,”^[10] especially for small businesses and independent artists. Kerry Muzzey of Kirbyko Music used YouTube’s Content ID tool as an example to show the inefficiency of the notice-and-takedown system. He explained that even when a Content ID helps to match and locate unauthorized uses across the platform, the system only grants a ten-day period to file a lawsuit, and a rightsholder bears all burden to collect evidence to prove infringement. By the time a takedown notice is enforced, an independent artist like Muzzey has been drained of all the energy to create content, and there is no adequate remedy for the monetary losses.^[11]

Jeff Sedlik of Sedlik Photography echoed Muzzey, saying that the DMCA safe harbors have created an “untenable situation.”^[12] He had to devote his time to either enforcing his copyrights, or to creating new works enduring the devastating impact of online piracy. He then proposed twelve suggestions to bring the DMCA back to its intended balance.^[13]

Tech Industry:
DMCA Is Still Working Well

The technology industry presented an opposite view from the content creators that the DMCA notice-and-takedown system still fulfills its role despite how the recent Copyright Office report suggests. Jonathan Berroya of the Internet Association expressed that the report fails to take into account the changing landscape of the creative ecosystem and the positive collaborations between creators and OSPs.^[14] Berroya stated that OSPs have voluntarily created tools with greater flexibility to combat online piracy in different Internet sectors than the DMCA requirements.^[15] Also, it is the content creators who have better knowledge to decide whether an online posting is infringing, and the Section 512 system provides OSPs with more data to develop content monitoring algorithms by empowering creators to file good-faith notices.

Besides, Berroya noticed that the “overwhelming majority” of online infringement takes place outside the US. Thus, the best approach for the US may be working with foreign governments to contemplate DMCA-like treaties, rather than refining the domestic copyright legislation.^[16]

David Hansen of Duke University agreed that Section 512 generally works well for universities and libraries as both copyright holders and service providers.^[17] To better promote the creation and dissemination of knowledge, it is better to have a system that allows lawful content to stay online unless there is a strong indication of infringement.^[18] Nevertheless, the current notice-and-takedown system does not always work for this purpose. Publishers as stakeholders often make takedown efforts to remove content with pre-existing open access licenses, which can be very disruptive for authors.^[19] Also, such takedown efforts often conflict with the educational fair use that is permissible under the U.S. Copyright Act.^[20]

Changing the DMCA
May Undermine the Whole Tech Industry

The second panel discussion supplemented the hearing with more evidence that the DMCA should remain the status quo to ensure the vitality of the technology industry. Abigail Rives of Engine argued that many big techs today cannot thrive without the DMCA safe harbors. If stricter monitoring obligations were imposed, startups today would suffer from the unaffordable compliance requirements, leaving the safe harbors with little value.^[21]

Rives also pointed to the abusive use of the notice-and-takedown system, which can be “devastating” to startups. The current legal framework grants a two-week grace period to restore content after clearing an infringement allegation. Imposing an affirmative duty to monitor “would create new costs and risks that startups would be unable to bear.”^[22]

Meredith Rose of Public Knowledge agreed to the destructive impact of abusive notices. She carried the discussion beyond the copyright regime, that digital platforms do not merely serve as plazas for sharing creative content; they are also places for socializing, for working, for receiving daily news, and for many other purposes. Requesting a stronger enforcement mechanism merely from a copyright perspective is exchanging a tank for a nuke.^[23]

Rose went on to elaborate how the misuse of the DMCA notices can negatively affect free speech and access to broadband.^[24] She cited a study showing that about one-third of the takedown requests were “potentially problematic,” and that 4.5 million of those requests were “fundamentally flawed.”^[25] Hence, she concluded that the debate between content creators and OSPs should not happen in a vacuum, and the legislators should acknowledge other stakeholders’ perspectives to fully understand Congress’ intent to enact the DMCA.^[26]

What’s Next?

As to a stronger enforcement mechanism that the creative industry has long been seeking, Henley and Preston both advocated a notice-and-stay-down system.^[27] A stay-down system not only removes specific infringing postings, but also denies the infringer access to the platforms. Sedlik’s list also proposes similar suggestions for a stricter system to enforce against repeat infringers.^[28]

Even though Berroya underscored the positive collaboration between creators and OSPs, Henley and Preston were frustrated by the experience seeking collaboration with big tech companies like Google.^[29] Senator Blumenthal later commented that the old-fashioned collaboration methods do not seem adaptable to the modern development of digital platforms today.^[30]

In the end, Senator Tillis reiterated that modernization of the DMCA notice-and-takedown system is possible. As the Senate has heard views from both the academy and the industries, we will continue to follow the DMCA review as it moves toward the reform drafting process.

---

[1] 17 U.S.C. § 512.
[2] Eileen McDermott, Third Senate IP Subcommittee Hearing on DMCA: The ‘Grand Bargain’ is No Longer Working, IPWatchdog (June 2, 2020), https://www.ipwatchdog.com/2020/06/02/senate-ip-subcommittee-hearing-dmca-reform-grand-bargain-no-longer-working/id=122124/.
[3] Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?, Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (June 2, 2020) (Statement of Don Henley at 1), https://www.judiciary.senate.gov/imo/media/doc/Henley%20Testimony.pdf.
[4] Id. at 2.
[5] Id. at 2-3.
[6] Id. at 3.
[7] Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?, Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (June 2, 2020) (Statement of Douglas Preston at 4) [hereinafter Preston Statement], https://www.judiciary.senate.gov/imo/media/doc/Preston%20Testimony.pdf.
[8] McDermott, see supra note 2.
[9] Preston Statement at 11.
[10] Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?, Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (June 2, 2020) (Statement of Kerry Muzzey at 1), https://www.judiciary.senate.gov/imo/media/doc/Muzzey%20Testimony.pdf.
[11] Id. at 7.
[12] Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?, Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (June 2, 2020) (Statement of Jeff Sedlik at 2) [hereinafter Sedlik Statement], https://www.judiciary.senate.gov/imo/media/doc/Sedlik%20Testimony.pdf.
[13] Id. at 3-4.
[14] Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?, Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (June 2, 2020) (Statement of Jonathan Berroya at 2-3), https://www.judiciary.senate.gov/imo/media/doc/Berroya%20Testimony.pdf.
[15] Id. at 3.
[16] Id. at 7.
[17] Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?, Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (June 2, 2020) (Statement of David Hanson at 2), https://www.judiciary.senate.gov/imo/media/doc/Hansen%20Testimony.pdf.
[18] Id. at 3.
[19] Id.
[20] Id. at 4.
[21] Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?, Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (June 2, 2020) (Statement of Abigail Rives at 20), https://www.judiciary.senate.gov/imo/media/doc/Rives%20Testimony.pdf.
[22] Eileen McDermott, Startup and User Reps Square Off with Independent Creators in Panel Two of DMCA Hearing, IPWatchdog (June 4, 2020), http://www.ipwatchdog.com/2020/06/04/startup-user-reps-square-off-independent-creators-panel-two-dmca-hearing/id=122189/.
[23] Is the DMCA’s Notice-and-Takedown System Working in the 21st Century?, Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (June 2, 2020) (Statement of Meredith Rose at 6-7), https://www.judiciary.senate.gov/imo/media/doc/Rose%20Testimony.pdf.
[24] See Id. at 15-20.
[25] Id. at 3-4.
[26] Id. at 18.
[27] McDermott, see supra note 22.
[28] Sedlik Statement at 3.
[29] McDermott, see supra note 2,
[30] Id.

A European Lesson for the U.S. Copyright Law: How to Handle Digital Piracy?

Shuyu Wang

Photo: Joshua Fuller/unsplash.com

The Senate Judicial Committee IP Subcommittee kicked off a year-long review of the Digital Millennium Copyright Act (“DMCA”)^[1], aiming to examine whether the DMCA is adequate to address digital copyright infringement given the rapid development of Internet technology. Senator Thom Tillis led the second of the series hearings on March 10, 2020, titled “Copyright Law in Foreign Jurisdictions: How are other countries handling digital piracy?”.^[2] This hearing was aimed at examining several foreign approaches of combating online copyright piracy and assigning intermediate liability to Internet service providers (“ISPs”), and whether the DMCA needed to be updated to better serve its purpose.

Has DMCA Been Outdated?

When first enacted, the DMCA sought a balance of the growth of Internet technology and the thriving of creative industries. The balance has been maintained for a time by exempting ISPs from the liability of their users uploading copyrighted content to their online platforms.^[3] Such safe harbors and the accompanying notice-and-takedown system created by Section 512 of the DMCA have become the international norm for online copyright enforcement. However, this mechanism seems to fall short to keep the balance as the technology evolves faster than anyone could ever imagine.^[4]

Europe Provides an Insightful yet Impractical Lesson

In the past few years, one of the most important global updates in copyright law is the European Union Digital Single Market Directive (“the EU Directive”). The 2019 Directive pushes heavily towards the harm-prevention end of copyright law.^[5] The main focus of the hearing was Article 17 of the EU Directive, which establishes a strict liability regime for for-profit “online content-sharing service providers.”^[6] These ISPs are directly liable for their users’ sharing copyright-infringing content on their platforms unless they have made the best efforts to obtain licenses form right holders.^[7]

However, many panelists shared a view that Article 17 is not a good model for the US to follow. Professor Pamela Samuelson of the University of California Berkeley School of Law pointed out that Article 17 is internally contradictory and ambiguous. For instance, Article 17 implicitly requires that online content sites must adopt automated content recognition technologies to prevent infringing uploads, while not limiting the legitimate uses of copyrighted works. But automated tools often lack the ability to understand the context of a use to determine whether it is lawful.^[8] A European lawmaker, Julia Reda, a former member of the Pirate Party Germany in the European Parliament, said that currently no technology can accomplish what Article 17 requires. Automated algorithms may not be able to distinguish infringing content from legal uses such as parody or education fair use. As a result, ISPs may be caught up in between deleting too much or too little.^[9]

Moreover, Professor Daphne Keller of Stanford University sounded the alert to the distorting impact of Article 17 on the ISPs landscape. Article 17 places great burden on ISPs to develop licensing and on-going monitoring schemes that may not be tolerable for small businesses. Eventually, smaller-sized ISPs may be out-competed due to the demanding cost of legal compliance. Thus, the impact of Article 17 on the ISPs’ landscape in Europe remains to be observed.^[10]

Besides, Reda highlighted another difference between the US and European markets that further deters the US from adopting the Article 17 approach. She pointed out that Article 17 is designed to encourage collective bargaining for blanket licensing, which is common in Europe but not so much in the US. Given that there are millions of potential right holders out there, it is impractical for ISPs to know from whom to obtain licenses, and the cost of negotiation may further entrench the market power of the largest platforms.^[11]

Site Blocking May Provide a More Effective Enforcement Mechanism

During the Senate hearing, Senator Tillis also heard discussion as to the effectiveness of site blocking. Site blocking has been adopted in a number of countries as a no-fault injunctive relief against ISPs to disable access to pirate websites. A panelist from the industry, Stan McCoy of the Motion Picture Association, advocated the practice of site blocking as an effective mechanism to handle online privacy.^[12] As shown in studies in the UK and Australia, the consistent use of site blocking decreases overall piracy traffic and increases traffic to legitimate content sources.^[13]

Yet site blocking may not be a one-size-fits-all solution. Matt Schruers from the Computer and Communications Industry Association (CCIA) emphasized that the prevention of copyright piracy is not just enforcing against infringers. Policies should aim at promoting a well-functioning legal marketplace to boost the demand for lawful content. For instance, innovative new digital services have played a critical role in reducing piracy, since it improves the market conditions to facilitate lawful digital delivery of content.^[14]

The U.S. Copyright Office Calls for Refining DMCA

On May 21, the United States Copyright Office released a report that echoes with the panel discussions at the Senate IP Subcommittee. The report on Section 512 of the Copyright Act underscores several requirements that have been misused by courts to address the intermediate liability of ISPs for their users’ infringing conduct.

One key issue is the eligibility for safe harbor exemption for ISPs. The U.S. Copyright Office pointed out that courts have broadly construed the scope of Section 512 safe harbor, which “tilted askew” Congress’ originally intended balance.^[15] The report warns that a series of court rulings have stretched Section 512 to cover some services that are merely “related” to user uploads, further eliminating the chance of liability for ISPs. On the other hand, the DMCA has placed an outsized burden on right holders to chase after each infringing upload and to file takedown notices. That said, the report does not endorse a new notice-and-takedown system that would require ISPs to permanently ban certain content at the request of the entertainment industry.^[16]

Instead, the Office turned to address another issue that has been mishandled by courts—the knowledge requirement for taking down infringing content. The report calls into question rulings that “set too high a bar” for copyright owners to enforce. For example, the report examines the “red flag knowledge” interpretation by the Second Circuit in Viacom v. YouTube.^[17] The Viacom court determined that a mere red flag, without the knowledge or awareness of “specific instances of infringement,” does not exempt an ISP from the Section 512 safe harbors.^[18] The Office wrote that such a narrow interpretation minimizes an ISP’s duty to act upon online infringement, and it called for a reasonableness standard that accounts for each ISP’s relevant characteristics regarding the knowledge requirement.^[19]

While the panelists at the Senate hearing and the Copyright Office report reiterated potential solutions such as site blocking and stronger FTA provisions, they all called for further evaluation of the enforcement mechanisms adopted in other countries. On May 29, The Subcommittee sent a letter to the Copyright Office to get additional views as to how the Office would design section 512 from scratch. Meanwhile, the Subcommittee held the third hearing (a separate post on this hearing to follow) of reviewing DMCA on June 2, which examined the current effectiveness of the DMCA notice-and-takedown system in the 21st century. It is interesting to see how the DMCA review will proceed in the future.

---

[1] When enacting the DMCA, Congress amended 17 U.S.C. §§ 101, 104, 104A, 108, 132, 114, 117, and 701, and created 17 U.S.C. §§ 512, 1201–1205, 1301–1332, and 28 U.S.C. § 4001. The Senate hearing mainly focused on Section 512 and Section 1201. See 17 U.S.C §§ 512, 1201.
[2] Rebecca Tapscott & Eileen McDermott, Senate IP Subcommittee Examines Foreign Approaches to Digital Piracy in Second Hearing on U.S. Copyright Reform, IPWatchdog (March 11, 2020), https://www.ipwatchdog.com/2020/03/11/senate-ip-subcommittee-examines-foreign-approaches-to-digital-piracy-in-second-hearing-on-u-s-copyright-reform/id=119779/.
[3] Sen. Thom Tillis, Getting Back to Basics on the Digital Millennium Copyright Act, The Hill (Dec. 17, 2019 2:30 PM), https://thehill.com/blogs/congress-blog/technology/474918-getting-back-to-basics-on-the-digital-millennium-copyright-act?rnd=1576605068&fbclid=IwAR1MqLwblDXmFF0Dnq5MUsKThCEpTSrtoNXrkx20Cw-D8RLVAhBXxwu7Ai4.
[4] Copyright Law in Foreign Jurisdictions: How are other countries handling digital piracy? Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (March 10, 2020) (Statement of Professor Justin Hughes at 5), https://www.judiciary.senate.gov/imo/media/doc/Hughes%20Testimony.pdf.
[5] Copyright Law in Foreign Jurisdictions: How are other countries handling digital piracy? Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (March 10, 2020) (Statement of Professor Daphne Keller at 3) [hereinafter Keller Statement], https://www.judiciary.senate.gov/imo/media/doc/Keller%20Testimony.pdf.
[6] Copyright Law in Foreign Jurisdictions: How are other countries handling digital piracy? Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (March 10, 2020) (Statement of Professor Pamela Samuelson at 8) [hereinafter Samuelson Statement], https://www.judiciary.senate.gov/imo/media/doc/Samuelson%20Testimony.pdf.
[7] Id.
[8] Samuelson Statement at 12.
[9] Tapscott & McDermott, see supra note 1.
[10] Keller Statement at 11.
[11] Copyright Law in Foreign Jurisdictions: How are other countries handling digital piracy? Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (March 10, 2020) (Statement of Julia Reda at 5), https://www.judiciary.senate.gov/download/reda-testimony.
[12] Copyright Law in Foreign Jurisdictions: How are other countries handling digital piracy? Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (March 10, 2020) (Statement of Stan McCoy at 4) [hereinafter McCoy Statement], https://www.judiciary.senate.gov/imo/media/doc/McCoy%20Testimony.pdf.
[13] McCoy Statement at 4-5.
[14] Copyright Law in Foreign Jurisdictions: How are other countries handling digital piracy? Hearing before the Senate Judiciary Committee Subcommittee on Intellectual Property, 116th Cong. (March 10, 2020) (Statement of Matt Schruers at 3), https://www.judiciary.senate.gov/imo/media/doc/Schruers%20Testimony.pdf.
[15] Bill Donahue, Copyright Office Says DMCA Has ‘Tilted Askew’, Law360 (May 21, 2020, 12:55PM), https://www-law360-com.gwlaw.idm.oclc.org/articles/1275893/copyright-office-says-dmca-has-tilted-askew-.
[16] Id.
[17] Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012).
[18] United States Copyright Office, Section 512 of Title 17, A Report of the Register of Copyrights at 124 (May 21, 2020) (available at: https://www.copyright.gov/policy/section512/section-512-full-report.pdf).
[19] Id. at 125.

What is Copyrighted in a Video Game?

– David Ward

            Video games are a combination of many ideas, expressions, rules, and systems. Copyright, to put simply, only protects the expression of ideas, not the ideas themselves. For instance, the idea of a princess being saved from danger is not a protected copyright, otherwise nearly a whole genre of stories may be infringing on each other. However, specific elements, such as scenery, plot, wording, or other means of expression of that idea, can be protected. But what happens when ideas and expression are so closely linked, like a video game that matches objects together?

            The Western District of Washington in the 9^th Circuit looked at this exact issue in Spry Fox LLC v. LOLApps Inc.¹ In 2011, Spry Fox, a company that makes video game apps for mobile devices, approached the defendant, 6Waves, LLC, to help develop their tile-matching game Triple Town for iOS. Eventually, the two parties entered into a nondisclosure agreement, and 6Waves was granted privileged access to Triple Town.

            In December of 2011, 6Waves told Spry Fox that not only would it no longer develop an iOS version of Triple town, but it was releasing its own game called Yeti Town. The two games were at the very least within the same genre, and a 6Waves executive even claimed that Spry Fox was “not going to like [it] given its similar match-3 style.”²

            The two games were indeed similar. Both games were on a six-by-six grid, and placed objects in the squares on the grid to match up. When the player placed the objects such that three identical objects connected, they merged into one “higher level” object. For example, in Triple Town, three patches of grass became a bush, three bushes became a tree, and so on. In Yeti Town, three saplings became a tree, three trees became a tent, etc. Both games had enemies in the game that tried to thwart players placing objects; in Triple Town there were bears, and in Yeti Town there were yetis. The games also had similar mechanics beyond that, such as placing traps and an in-game store.

            So, the question is, what parts of the game are unprotected ideas and what are protected expressions of those ideas? And if there are protected expressions, does Yeti Town have a substantial similarity to those expressions such that it infringes on Triple Town’s copyright?

            Typically, courts examine the issue of copyright infringement to first see if there was access to the copyrighted work, and then test to see if substantial, copyrightable similarities exist between the two works.³ Since there was a previous agreement between 6Waves and Spry Fox for privileged access, there was no question that 6Waves had access. The only question became what copyrightable, protectable similarities existed.

            The court used existing 9^th Circuit precedent to show that a standard treatment of an idea, known as a scenes a faire, is not protectable.⁴ For instance, a video game about a karate tournament doesn’t prevent anyone else from making a video game where competitors wear karate garb and kick, chop, and punch. The idea of a karate tournament, like the idea of a match-3 tile game, is not protectable under copyright law as an idea.

            However, the actual expressed images, such as trees, and the wording of the dialogue in the game, were protected as expressions under copyright law. The court also observed that, while titles are typically not copyrightable, the fact that the two games both have “Town” in the name was potentially relevant.

            While the case was eventually settled out of court, this case still provides invaluable insight into splitting up what is and isn’t protected in video games. The court found that it was plausible that the actual objects in the game, such as trees and dialogue, could be protected, even if the underlying “match-3” idea and genre was not.

            Other decisions in other Districts since 2012 echoed this exercise of separating what is and isn’t protected in games. In 2013, the Southern District of New York found that a hangman word-game book’s lettering scheme and answers to the games were not protected, but the actual drawing of the hanging stick figures were copyrightable expressions.⁵ Similarly, in 2016, the South District of Texas found that a card game with similar sets of abilities and number of “life points” as rules in the game did not infringe on another, similar card game.⁶ This was because the rules and mechanics of games were underlying ideas only entitled to very thin, literal protection of their expression.

            These cases, however, all illustrate one thing: copyright doesn’t protect many of the mechanics and rules that are fundamental to the creation of video games. For copyright, what matters most is the expression of the idea, not the idea itself. While copyright is still undoubtedly an important aspect of protecting a video game’s intellectual property, it should only be one part of any prudent developer’s plan to protect their proprietary intellectual property.

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[1]No. 2:12-cv-00147-RAJ, 2012 WL 5290158 (W.D. Washington, Sep. 18, 2012).
[2] Id. at *1.
[3] Skidmore v. Zeppelin, 952 F.3d 1051, 1064 (9th Cir. 2020).
[4] SpryFox, 2012 WL 5290158, at *4.
[5] Ward v. Andrews McMeel Pub., LLC, 963 F. Supp. 2d 222, 230-34 (S.D.N.Y. 2013).
[6] Davinci Editrice S.R.L v. Ziko Games, LLC, 183 F. Supp. 3d 820, 843 (S.D. Tex. 2016).

How Has COVID-19 Affected Intellectual Property Filing Deadlines in the United States?

– David Ward

A lot changed in March 2020, when COVID-19 hit the United States. Most people have been working remotely and are adjusting to a new, distanced “normal.” The United States Patent and Trademark Office (USPTO) and Copyright Office are no exceptions, and thankfully the Coronavirus Aid, Relief, and Economic Security Act, or CARES Act, has provided some relief from the disruptions.¹ Here are how the different offices have been impacted, and steps that have been taken to fight back against the novel coronavirus.

USPTO

On March 15^th, the USPTO closed its doors to the public indefinitely due to the coronavirus outbreak.² The following day, it declared the coronavirus outbreak to be an “extraordinary situation” within a regulated meaning, which allowed for the suspension of some typical rules.³ With this declaration, some petition fees were waived for those who had patent and trademark applications affected by the outbreak.⁴ A few days after that, handwritten signature requirements were waived.

The true relief began when the CARES Act passed. On March 27^th, when the CARES Act was signed into law, the USPTO was allowed to extend the time allowed for certain patent and trademark filings.⁵ As of June 9, 2020, most domestic United States patent applications, reexamination proceedings, and proceedings before the Patent Trial and Appeal Board that were due between March 27, 2020, and May 31, 2020 (or June 30 for small and micro entities) will now be considered timely if filed on or before July 1, 2020. ⁶ Any impacted filings must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Similarly, most responses, statements, notices, priority filings, and renewals relating to trademarks that were due between March 27, 2020, and May 31, 2020, were considered timely if filed on or before June 1, 2020.⁷ Since then, the USPTO has stated that trademark owners who were unable to submit timely responses due to the outbreak will continue to have their petition fees for reviving applications or reinstating registrations waived when submitted with a COVID-19 related statement explaining the delay.⁸ The USPTO also indicated that parties involved in TTAB proceedings that were interfered with due to the outbreak can request or move for extensions, as appropriate.⁹

As of June 12, 2020, the USPTO also announced an extension of the time period for petitioning for rights of priority or benefit in a patent application that ended between March 27, 2020, and July 30, 2020.¹⁰ These petitions will now have their fees waived, and time period for petitioning extended to at least July 31, 2020.¹¹

Extending deadlines has not been the only USPTO response to the outbreak, however. In early May, the USPTO launched the COVID-19 Prioritized Examination Pilot Program to incentivize COVID-related inventions from small entities. This program allows the first 500 qualifying small- or micro-entity size patent applicants to apply for priority one-year examinations of inventions related to COVID-19.¹² Applicants must apply under the COVID-19 Prioritized Examination Pilot Program with Pilot Program Form PTO/SB/450.¹³

In the first month of the program, 83 priority COVID-related applications were filed, and 11 were granted priority status.¹⁴ As of June 15, 2020, the program was extended to allow trademark and service mark applicants to petition for prioritize initial examination of COVID-19 related marks as well.¹⁵

The USPTO also launched a centralized online COVID-19 Response Resource Center on June 3, 2020.¹⁶ This resource center includes a “Patents 4 Partnerships” IP user-marketplace platform, which connects inventors and potential licensees to expedite discovery and development of new COVID-19 treatments and tests.¹⁷ Also included in the Response Resource Center is the Prioritized Examination Pilot Program, and abundant resources on further relevant updates.

Copyright Office

            After the outbreak, the Copyright Office and Library of Congress have similarly closed their doors to the public. The CARES Act also granted authorization to the Copyright Office to modify their procedures as needed in response to the COVID-19 pandemic.¹⁸

            The primary change implemented by the Copyright Office affects the timing requirements for statutory remedies for infringement. Typically, a copyright owner is awarded set statutory damages if a work is registered either prior to the infringement, or within three months of the work’s first publication.¹⁹ This gives copyright owners incentives to register as soon as possible, since owners can generally receive greater infringement damages with a lower litigation cost if their copyright is already registered. However, with the COVID-19 disruptions, many registrations were delayed.

            In response to the issue, the Acting Register temporarily adjusted the statutory timing for people that could not submit electronic applications or physical deposits during the “disruption period,” which currently is until July 10, 2020.²⁰ For those unable to submit a required physical deposit, the eligible three month window after publication  will still be available as long as any required physical deposits are submitted within 30 days after the disruption ends.²¹ Any applicants unable to submit an electronic or physical application during the disruption will have their three month window tolled for the entire duration of the disruption. However, all adjusted timings require a sworn statement that the delay is due to the COVID-19 outbreak.²²

It is also important to note that copyrights can still be registered at any time, though. These adjustments only affect those who wish to claim statutory damages for infringement within three months of the initial publication and have not previously registered the copyright.

            Further adjustments were also made for notices and payments of compulsory music license royalties. Typically, when a musician receives a compulsory license to record copyrighted material, they are required to serve a notice of intention and deliver monthly statements of accounts with royalty payments to the original copyright owner. ²³ Any notices and statements that were previously sent in paper format have now been similarly tolled for the duration of the disruption if some alert is sent to the original copyright owner.²⁴ However, royalty payments are still required, unless a certified statement is made that payments cannot be made with supporting evidence.²⁵

Moving Forward

            As we are all more than aware, we receive more information and data about this ongoing pandemic seemingly daily. Thankfully, the emergency powers granted to the USPTO and Copyright Office by the CARES Act give the agencies broad authority to adjust and modify timings as needed to respond to the dynamic situation. Some of these deadlines may be further extended, or they may perhaps be allowed to expire and return to normal. But it is heartening to see these agencies take steps to tackle the ongoing issues with flexibility, as intellectual property will be crucial for fighting the coronavirus, as well as economic recovery.

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[1] Coronavirus Aid, Relief, and Economic Security Act, Pub. L. No. 116–136 (2020).
[2]USPTO notices regarding COVID-19, USPTO.gov, https://www.uspto.gov/coronavirus (March 15, 2020).
[3] United States Patent and Trademark Office, Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak, (March 16, 2020), https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf; see 37 CFR 1.183; 37 CFR 2.146.
[4] See 35 U.S.C § 41(a)(7); 37 CFR 2.66(a)(1), 2.145(d)(1)
[5] Coronavirus Aid, Relief, and Economic Security Act, Pub. L. No. 116–136, § 12004(a) (2020).
[6] Patents and Patent Trial and Appeal Board (PTAB) FAQs: Extension of Deadlines under the CARES Act, USPTO.gov, https://www.uspto.gov/patent/laws-and-regulations/cares-act-faqs (Updated June 9, 2020).
[7] United States Patent and Trademark Office, Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act, (April 28, 2020), https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf
[8] United States Patent and Trademark Office, May 2020 Update Regarding Certain Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Applicants, Registrants, and Others, (May 27, 2020), https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act-2020-05.pdf
[9] Id.
[10] United States Patent and Trademark Office, Notice of the United States Patent and Trademark Office’s COVID-19 Outbreak Relief Relating to Restoring the Right of Priority or Benefit to Patent Applicants, (June 12, 2020) https://www.uspto.gov/sites/default/files/documents/restoration-relief-2020-06.pdf
[11] Id.; see 35 U.S.C §§ 172, 119(a), (e).
[12] COVID-19 Prioritized Examination Pilot Program, USPTO.gov, https://www.uspto.gov/initiatives/covid-19-prioritized-examination-pilot (Updated June 4, 2020).
[13] Found at: https://www.uspto.gov/sites/default/files/documents/sb0450.pdf
[14] Supra, note 10.
[15] USPTO announces COVID-19 Prioritized Examination Program for certain trademark and service mark applications, USPTO.Gov, https://www.uspto.gov/about-us/news-updates/uspto-announces-covid-19-prioritized-examination-program-certain-trademark (Updated June 15, 2020).
[16] https://www.uspto.gov/coronavirus/uspto-covid-19-response-resource-center
[17] Patents 4 Partnerships: IP Marketplace Platform, https://developer.uspto.gov/ipmarketplace/search/patents (last visited June 10, 2020).
[18] 17 U.S.C. § 710.
[19] 17 U.S.C. § 412.
[20] Operations Updates During the COVID-19 Pandemic, Copyright.gov, https://www.copyright.gov/coronavirus/ (updated May 1, 2020).
[21] Id.
[22] Id.
[23] 17 U.S.C. § 115.
[24] Supra, note 14.
[25] Id.

Brexit – What Does it Mean for Intellectual Property?

David Ward

For those unaware, the United Kingdom officially left the European Union on January 31, 2020. With such sweeping changes to the geopolitical landscape, many were worried a deal would not be reached to bridge the gap between important issues, such as the status of intellectual property in a post-EU UK. Thankfully, the Withdrawal Agreement Act of 2020 passed just a week prior to Brexit.

This agreement sets up a one year “transition period” for the UK to implement their new policies and procedures alongside the current EU framework, and it applies to intellectual property as well.¹ The transition period, which lasts until December 31, 2020, aims to make as smooth of a transition as possible for intellectual property owners, but uncertainty still looms in some areas. Here is what that means.

Trademark:

During the implementation period, there is effectively no change in trademarks. The EU trademark system will continue to govern UK trademarks until December 31^st, 2020. This means that all EU trademarks will still be in effect for this year, and both UK and EU court precedents will govern UK judges.² What happens after this year, however, gets a slightly more complicated.

Thankfully, all registered EU trademarks will automatically receive a free corresponding UK trademark after the implementation period. All the filing, priority, and renewals dates should remain the same as the original trademarks.³ While marks will be converted from original EU trademarks, however, the new registrations will be fully independent UK trademarks going forward. Similarly, any trademarks that expire within 6 months of the end of the transition period (Dec. 31, 2020) will be converted to “expired” UK marks, making for a more straightforward renewal process in the UK even if the mark was recently expired.⁴ Pending EU trademarks at the end of the year, however, will not be automatically converted. Instead, owners of these pending trademarks will have 9 months to apply for a corresponding UK trademark, with applicable UK fees. ⁵

While there are of course more changes that will come to trademarks after the implementation period, the current transition period incentivizes anyone looking to register a trademark in the EU to do it sooner than later. Filing sooner means you will have a better chance of receiving an automatic and free corresponding UK trademark at the beginning of next year. If you wait too long and your application is pending at the end of the year, you may need to file again with the UK register.

Patents:

            The European Patent Office (EPO) was established under the European Patent Convention and is separate from the EU, so Brexit itself does not preclude the UK from participating in the current system. Currently, inventors seeking a UK patent can either file at the UK Intellectual Property Office, or through the EPO by designating which Member States they wish to apply for (which the UK still is and has not withdrawn from). Since the EPO is separate from the EU, the UK patent process should be largely unaffected by Brexit. The only change for patents in the future may be that any further EU efforts for Unified Patents will not include the UK. ⁷

Copyright:

Copyrights will operate similarly to trademarks in the transition period and beyond. Just like with trademarks, EU copyright laws will govern the UK until December 31, 2020, at which point things will transition over to the UK. However, it is likely that will mark the point at which EU and UK copyright law diverge, as UK courts will no longer be bound by European Court of Justice precedents (although they will likely still be considered).

The UK and EU copyright law paths can already be seen diverging, however. The EU Directive on Copyright in the Digital Single Market was recently passed by the EU, which imposes new liability on online service providers for hosting infringing copyrighted material, as well as reform current copyright licensing and limitations to create a unified EU copyright market.⁸ Member States have until June of 2021 to implement their versions of this law to comply with the EU directive, but since the UK will no longer be a part of the EU in any form at that point, the UK does not need to comply.[9] In fact, the UK government has directly said that there are no plans to implement the directive.[10] While this still leaves the door open for the UK to implement their own version of similar legislation, the current administration has already been vocally skeptical and critical about the effects of the EU legislation, and likely will wait and see before passing new UK legislation on the issue.

What does this mean?

In short, this means that not much should immediately change for intellectual property in the wake of Brexit. Trademark owners seem to have a relatively straightforward path to having both EU and UK trademarks at little or no additional cost at the end of the implementation period. Copyright owners should similarly have a relatively smooth transition but may want to be wary of differences in UK and EU law going forward as they begin to diverge from each other. Patents should also be largely unaffected. As of now, there seems to be a pathway in place for a straightforward transition at the end of 2020. How the paths diverge after that, only time will tell.

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[1] Nurton, James. “Brexit is Finally Happening: Here’s What to Expect for IP.” IP Watchdog, IPWatchdog, Inc., Jan. 31, 2020, https://www.ipwatchdog.com/2020/01/31/brexit-finally-happening-heres-expect/.
[2] Morelli, Laura. “Impact of Brexit on IP Rights.” The National Law Review, The National Law Forum, Feb. 10, 2020, https://www.natlawreview.com/article/impact-brexit-ip-rights.
[3] Id.
[4] Id.
[5] Id.
[6] Brownstein Hyatt Farber Shreck. “No Unified Patent Court or Unitary Patent for Post-Brexit UK.” JDSupra.com, JD Supra, LLC, March 4, 2020, https://www.jdsupra.com/legalnews/no-unified-patent-court-or-unitary-40536.
[7] Vincent Look. “What to Know in the Lead-Up to Brexit and the Unitary Patent System.” IP Watchdog, IPWatchdog, Inc., April 10, 2019, https://www.ipwatchdog.com/2019/04/10/know-lead-brexit-unitary-patent-system/id=108135/.
[8] Latham & Watkins. “What Does Brexit Mean for the Copyright Directive in the UK?” JDSupra.com, JD Supra, LLC, Feb. 6, 2020, https://www.jdsupra.com/legalnews/what-does-brexit-mean-for-the-copyright-28772/.
[9] Id.
[10] Bird & Bird LLP. “UK Government ‘has no plans’ to implement the Copyright Directive.” Lexology, Law Business Research, Jan. 24, 2020, https://www.lexology.com/library/detail.aspx?g=7cbde598-9ca2-421b-8bc3-eee4a836bb1e.