Please contact attorney Brent A. Sumner to have your recording contract analyzed in light of this decision.

Out links are probably what come to mind when discussing links, generally. An out link is a pointer contained on one web page that when clicked on, directs the user to another destination page. More specifically, an out link stores the electronic address of the destination page. By clicking on the out link, the out link sends the address to the user’s web browser, which in turn directs the user to the destination site. For example, clicking on this link will direct you, the reader, to the United States Patent and Trademark Office. Thus, an out link directs the user out of the original web page.

In-line links do the opposite. Instead of directing the user out of the original web page to the destination page, an in-line link pulls in a particular file (whether it be a document, an image, an audio clip or a movie) from the destination page and displays, or “frames” that file on the original web page. More technically, when the user visits the original page, HTML instructions on the original page direct the user’s browser to the file located on the destination page. The browser then downloads (or streams, as the case may be) that file and displays that file in a designated frame on the original page. For example, the inline link below frames a video, pulled from YouTube®, of Jay Rosen from NYU discussing “The Ethic of the Link”.

These related practices raise a wide variety of legal issues, many of which are beyond the scope of this particular series. For purposes of manageability, the discussion in this series is strictly limited to issues of direct copyright infringement.

As a starting point, the Copyright Act outlines the various and exclusive rights vested in a copyright owner. Section 106 states that the owner of a copyright under this title has the exclusive rights to do and to authorize any of the following:

(i) to reproduce the copyrighted work in copies or phonorecords (“Reproduction”);

(ii) to prepare derivative works based upon the copyrighted work (“Derivative Works”);

(iii) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending (“Distribution”);

(iv) in the case of literary, musical, dramatic and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly (“Performance”);

(v) in the case of literary, musical, dramatic and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly (“Display”); and

(vi) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission (“Digital Performance”).

Linking, as outlined above, could potentially implicate all of these rights. By in-line linking and framing a picture from the front page of the New York Times web site on my blog, it’s arguable that I’m distributing the picture and perhaps even reproducing it without the owner’s authorization. If I frame the picture in a way that’s inconsistent with the original presentation of the picture, I may be producing a derivative work. By in-line linking and framing a track from “The Way I See It” by Raphael Saadiq, it’s arguable that I’m performing the track without the authorization of Columbia Records or Universal.

With regard to the rights of Reproduction, Derivative Works, Distribution and Display in the digital context, the analysis is generally the same. On the Internet, content (such as text or a photographic image) is copied when it is transferred from one computers memory to another computers memory. (See e.g., MIA Sys. Corp v. Peak Computer, Inc.) In other words, a person ‘reproduces’ and/or creates a ‘derivative work’ of a copy when that person stores a copy on their computers memory from another computers memory. A person ‘displays’ and ‘distributes’ a copy, fixed in one computers memory, by using that computer to fill another computers screen with that same copy.

With regard to the use of images online, a useful example to help understand the distinction between ‘copying’ and ‘not copying’ is Google’s Image Search.

Users familiar with Google’s Image Search know that they can enter a search query for a volcano and Google will provide them with a series of images in the form of ‘thumbnails’. Thumbnails are miniature pictures representing possible matches to the users image search query. The images are created by Google to facilitate the users browsing of the possible matches to more easily identify the desired search result (imagine having to load a full sized picture to view each search result!). By clicking on a thumbnail, the users browser will be directed to the website hosting the image so that the full size image is available to view.

Technically speaking, Google’s use of thumbnails is copies the original image while the full size image that the users browser arrives at after clicking on the thumbnail is not. The difference is in where each image comes from. In order for Google to produce the thumbnails, it must store the original image on its computers and reformat the image in a smaller size and poorer quality. In order for Google to produce the full size image, it only needs to direct the users browser to the original site hosting the image. The image is hosted on that websites computer; Google never saves the image on its own computers. Discussing this issue, the United States Court of Appeals for the Ninth Circuit (case unavailable, but see Eric Goldman”s discussion) outlines the structure of a webpage and the use of thumbnails:

A webpage consists of text interspersed with instructions written in Hypertext Markup Language (HTML) that is stored in a computer. No images are stored on a webpage; rather, the HTML instructions on the webpage provide an address for where the images are stored, whether in the webpage publishers computer or some other computer¦.

When a user clicks on a thumbnail image, the users browser program interprets HTML instructions on Google’s webpage. These HTML instructions direct the users browser to cause a rectangular area (‘window’) to appear on the users computer screen. The window has two separate areas of information¦.The HTML instructions also give the users browser the address of the website publishers computer that stores the full-size version of the thumbnail [or redirects the user to the host computer]. By following the HTML instructions to access the third-party webpage, the user’s browser connects to the website publisher’s computer, downloads the full-size image, and makes the image appear at the bottom window on the user’s screen.

In other words, Google makes use of an “in-line link” to pull the full-size image from the host computer to the user’s computer. Considering the issue of whether Google’s practice of in-line linking constituted copying for purposes of copyright infringement, the Court ruled that “[p]roviding these HTML instructions is not equivalent to showing a copy”. The HTML merely gives the address of the image to the user’s browser. For these same reasons, my use of Jay Rosen’s video does not constitute direct copyright infringement (though the discussion on the use of video is slightly complicated by the use of ‘caching’, please see later posts in this series). My blog service merely provides HTML code to your web browser, which then retrieves the video from the host computer at YouTube®.

The above discussion handles some technically and legally complicated concepts rather simplistically. Those readers considering these issues seriously should consult with an attorney. I’m sure Ms. Lenz never anticipated the kind of legal hassle she encountered when she posted a video of her child dancing. For more on these issues, see later posts in this series.

NOTICE: The foregoing is not intended as legal advice, but rather introduces general issues to consider when seeking legal advice. You should consult with an attorney before acting upon any information provided in the foregoing. The choice of an attorney is an important one and should not be based solely on advertising or promotional material. For more informaiton, please read this (out-linked) Disclaimer

Back in August Google announced its revamped DMCA policy for Blogger, specifically designed to deal with this. Basically, the company tried much harder to communicate with users as to what was happening. Rather than just deleting whole blog posts, it would move them to draft mode, and then try to alert the bloggers via email and through the Blogger dashboard.

Rather than bloggers failing to recieve any kind of notification that their content has been removed pursuant to the DMCA’s takedown procedure, the issue this time seems to be that they did recieve notice but nonetheless felt “hopeless to respond.” In this way, Masnick’s criticism’s focus on the essential faults of the DMCA itself, rather than the difficulties encountered by it”s implementation. Masnick points out the “ridiculousness” of the DMCA”s approach to potential infringers:

It”s a “guilty until you”re innocent” type of measure. It effectively forces Google into a position where it needs to take down the content, until a blogger goes through the confusing process of filing a counternotice. It makes no sense, at all, why we don”t improve the process to allow for a notice-and-notice system, whereby the blogger is allowed to respond to the copyright holder before any content is removed.

As an initial matter, Masnick”s point that filing a counternotice is a confusing process appears well founded. Without being able to speak from personal experience, it would appear that the Blogger staff simply assumed that the Take Down notices are bona fide and accurate notices of infringement. From Blogger Buzz (the official buzz from blogger) on their new Take Down policy (August, 2009):

[M]usic bloggers are a large segment of our users and we know that for those who’ve received one or more DMCA complaints in the past, this may have been a frustrating experience. Please take care to remove the offending content once notified of the complaint, once you do, you can republish the original post so your audience will continue to have access to the other content contained in the post (emphasis added).

Nowhere in the commentary above does it state that bloggers may submit a counternotification as permitted by section 512(g)(3) of the Copyright Act. In this way, Masnick’s criticisms are well founded. However, Google otherwise explicitly states that a counternotification is permissible under their DMCA policy. Nonetheless, Blogger Buzz has more recently requalified its statement of it’s policy in a way that responds to Masnick’s concerns.

Masnick’s other concern that bloggers are not permitted to respond before their content is taken down touches more closely the heart of the compromise attempted by the DMCA’s Notice and Take Down procedure. Specifically, the DMCA strikes a compromise between the value we place in the freedom of expression and the value of online communication on the one hand and the need to effectively protect an individual’s copyrights on the other. Among other things, the “takedown first, ask questions later” approach reflects the need to protect the copyright owner”s first opportunity to exploit their intellectual property. The Supreme Court has concluded that the commercial value of the “right of first publication” primarily lies in its exclusivity. In the case where a a copyright owner wishes to control the initial distribution of the artist’s work, the unauthorized copying by another may frustrate those efforts to the owner”s commercial detriment. Currently, the “takedown first, ask questions later” approach acts a stopgap for those sorts of unauthorized activities, effectively minimizing the level potential commercial determint. Reversing the approach would require the online service provider to wait a period of time before removing the material in question. By the time the OSP acts, it”s probably too late to prevent the commercial determint suffered by the copyright owner.

At least that”s the assumption. To be fair, there are those that would like to suggest that the unauthorized distribution of a copyrighted work may actually commercially benefit a copyright owner, including Masnick. However, even assuming that this is true in some cases, it cannot be assumed for all cases. The problem with reversing the “takedown first, ask questions later” approach would be that it would vest the blogger,rather than the owner, with the determination of whether the unauthorized distribution is commercially beneficial or detrimental to the owner. Since the owner would be in a better position to make that determination, the “takedown first, ask questions later” approach makes more sense over the reverse scenario.

Blogger Buzz’s more recent comments about Google’s Notice and Take Down policy reflect a better understanding of the DMCA. To the extent that responding to a Take Down notice may be a confusing process, Blogger Buzz’s more recent comments are also helpful. While the “take down first, ask questions later” approach may effect some unfavorable consequences on bloggers and other content providers, it’s preferable to an approach that unreasonably vests the right of first publication in someone else besides the copyright owner.

For more information on the DMCA, please read Introduction to the Digital Millennium Copyright Act.

NOTICE: The foregoing is not intended as legal advice, but rather introduces general issues to consider when seeking legal advice. You should consult with an attorney before acting upon any information provided in the foregoing. The choice of an attorney is an important one and should not be based solely on advertising or promotional material. For more information, please read this Disclaimer.

Defenders of modern copyright law will argue Congress has struck ‘the right balance’ between copyright holders™ interests and the public good. They’ll suggest the current law is an appropriate compromise among interest groups. But by claiming the law strikes ‘the right balance’, what they’re really saying is that the Glee kids deserve to be on the losing side of a lawsuit. Does that sound like the right balance to you?

At the heart of Mulligan”s concern is the way that creative power is disproportionately allotted to copyright owners (or at least those purporting to act on their behalf) and that those seeking to use the owner”s work for purposes of creativity and learning are wrongfully disadvantaged. In a later comment, Mulligan clarifies:

Copyright has its place, but its current scope and structure inhibit a lot of the same creativity and education it’s supposed to motivate. While the Glee Club could acquire the licenses to perform songs traditionally (i.e. not remixed) through rights clearing organizations like ASCAP, BMI and SESAC, they could not easily negotiate for the rights to make the mash-ups and the video works, which are not covered by the available licenses. This is a problem with the scope of copyright protection “ how broad the right is. Rights to make derivative works like remixes and mashups can be difficult or impossible to acquire; the fine for making them without permission can be $150,000 per work infringed. This has the effect of discouraging creativity, the opposite of what the copyright clause and statute should strive to achieve.

Mulligan’s comments, while thoughtful and well articulated, portray a fairly unfortunate picture for those seeking to use copyrighted works for purposes of creativity and learning. However, this unfortunate picture should be qualified with a few additional considerations.

First, it’s entirely possible for the characters in Glee to conduct their glee club activities (performing music) lawfully. U.S. Copyright law does have some important features that mitigate against some of the harsh consequences being discussed in Mulligan’s post. In fact, it’s very likely that current copyright law would permit many of the activities on Glee. In this regard, It’s is important to focus on the two specific rights involved when discussing these activities (Mashups and Sue’s viral video aside).

The creation of sheet music involves the right of a copyright owner to make copies of their work. In order for somebody else besides the copyright owner to legally make copies of sheet music, they will need a print license from the copyright owner. Fair use *may* permit someone to make copies of sheet music without a print license, particularly for teaching/classroom purposes or purposes of criticism/commentary. Several factors are involved in the determination of whether such use is fair use. These factors include:

(i) purpose and character of the use (including whether it’s commercial);
(ii) the nature of the copyrighted work (whether it’s particularly creative, such as a song or painting);
(iii) the amount and subtantiality of the portion used, in relation to the work as a whole; and
(iv) the effect of the use upon the work’s potential market or value.
U.S.C. 107.

Given the facts in Glee, it’s likely that Will’s (the glee club coach) creation of the sheet music constitutes fair use (assuming he created it himself, if he didn’t then his infringement liability may be much smaller).

The performance of the sheet music implicates a copyright owner’s right of performance. In order for someone besides a copyright owner to legally perform a work, they need to obtain a performance license from the copyright owner. Generally speaking, venues which typically host music performers will address the issue of the performance license by purchasing a ‘blanket license’ from an established performing rights society (such as ASCAP, which operates as a central clearing house for performance rights conveyed to them by copyright owners). As with the print license above, it’s possible that somebody besides the copyright owner may legally perform a work, if the performance is considered fair use.

Further, it’s possible under these particular circumstances that the performance may otherwise be licensed by lawfully purchasing the sheet music by way of implied license. In this way, those who purchase a record from a record store are licensed to play the record (or perform it) in their home for personal use. Likewise, it would seem odd to lawfully sell sheet music without permitting the purchaser to perform the music, at least under certain limited circumstances.

For these reasons, it’s not so far fetched to believe that the characters in Glee are acting legally. Current copyright law could very easily side with Glee on this one.

Second, with regard to the mashups and music videos, it”s not as difficult to obtain the necessary licenses in advance as Mulligan argues. As somebody who works with clients daily in obtaining mechanical, sampling and synchronization licenses, I can vouch that the process can be much more manageable than portrayed in Mulligan’s post. Assuming that the use of another’s copyrighted work necessarily entails some kind of cost, the cost of using is much more manageable on the front end. And given the increasing body of independently produced music, those costs are decreasing day by day.

On a final note, neither this author or this firm endorses the practice of copyright infringement, nor do we endorse any other kind of unlawful behavior. However, if students insist on infringing by making unauthorized use of another’s work for creative or educational purposes, the added value of publishing that use online is questionable at best. Undoubtedly, sharing the use with classmates involved in the same endeavor can enrich the learning and creative process. The added value of sharing their material with people outside of the classroom is debatable, as these people are much less likely to enrich the student’s creative learning and are much more likely to harm the student’s interests. To the extent that students insist on mass publication, the likelihood of a suit increases. As the likelihood of a suit increases, the costs of use (measured by the cost of defending and possibly losing a lawsuit) increases.

Under these circumstances, the creative and educational value of a particular use levels off as the number of people that you share that use with increases. Learning how to create a mashup may be valuable, the added value of publishing the mashup online is negligible. Likewise with video performances. Students can just as easily share there creations with their immediate classmates via CD or disk.  Thus, it should be clear that the particular use contemplated (i.e. online/mass publishing) increases the cost of use tremendously while adding little to the creative experience.

NOTICE: The foregoing is not intended as legal advice, but rather introduces general issues to consider when seeking legal advice. You should consult with an attorney before acting upon any information provided in the foregoing. The choice of an attorney is an important one and should not be based solely on advertising or promotional material. For more information, please read this Disclaimer.

Contact:
Eric F. Kayira, Esq.
314-872-2141 (office)
314-872-2140 (Fax)

eric.kayira@kayiralaw.com

FOR IMMEDIATE RELEASE, September 22, 2010: Kia Motors America, Inc., David & Goliath, LLC, and others are being sued for a copyright infringement over its 2009 advertising campaign for the launch of the new Kia Soul crossover sports utility vehicle. The campaign, titled “A New Way To Roll”, made use of the song “Do What You Do” by synchronizing the song with a sixty-second video play featuring hamsters driving the Kia Soul while jamming to the song. In his complaint filed in Federal District Court, Southern District of New York, producer/songwriter, Jimmy Johnathan Pinto claims that Kia Motors America and David & Goliath, together with Chicago-based hip hop artist Zlatko Hukic, p/k/a “Marz”, Billion Dollar Ballers Entertainment, LLC, William Bryant Shook and others used his instrumental recording and composition without his permission, authorization or license in the creation of “Do What You Do” as well as “A New Way To Roll.” Both Marz and Shook claim credit as co-authors of “Do What You Do”.

“Tragically,” according to Pinto’s attorney, Eric F. Kayira, Esq.,1 “Marz and Shook’s claims in this regard are entirely false.” The song, “Do What You Do” had been derived from the original work of Jimmy Pinto, a young and independent producer of electronic musical compositions and sound recordings. Kayira states, “the cold facts are that in March of 2008, Jimmy produced an original beat titled “Feedback” that defendant Shook digitally hijacked from Jimmy’s online producer account to manufacture what would become the cornerstone and prize of Kia Motors’ critically acclaimed advertising campaign created and produced by David & Goliath agency.”

The hugely successful campaign, including the commercial featuring “Do What You Do,” contributed significantly to record setting sales of the Kia Soul. The campaign also garnered David & Goliath nationwide attention and accolades for the campaign. The campaign’s extensive exposure on television, in movie theaters, and online contributed to the elevation of both Marz and his label, Billion Dollar Ballers Entertainment, LLC. Marz recently released an album featuring “Do What You Do” titled “Marz Presents – Billion Dollar Ballers – Candy Days”

“The twenty first century digital landscape can afford companies and artists alike incredible opportunities for collaboration and mutual benefit,” Kayira explains, “but to the extent that artists are wrongfully excluded from those benefits, U.S. Copyright law provides very clear and established remedies.” The lawsuit seeks an undisclosed amount for damages, however, Kayira adds, “the damages to Pinto are grave and command substantial remedies.”

1 Kayira, LLP, is a full service Missouri‐based law firm with an emphasis in the widely emerging areas of creative content/ new media/intellectual property matters. Eric F. Kayira and Brent A. Sumner are the founding partners of the firm. Website: www.kayiralaw.com

In cases for copyright infringement, the application of the discovery rule can lead to some harsh consequences for plaintiffs. Under federal copyright law, no civil action shall be maintained under the provisions of the Copyright Act unless it is commenced within three years after the claim accrued. In determining when a claim accrues for purposes of the statute of limitations, courts apply the ‘discovery rule’ in the absence of a contrary directive from Congress. The discovery rule states that a claim accrues when the plaintiff discovers, or with due diligence should have discovered, the injury that forms the basis for the claim.

The rule is an easy enough one to state. However, problems arise in its application. This is particularly true in cases of joint authorship, where two people contribute to one work with the intention that their contributions form a single work. In these cases, joint authors become co-owners of the copyrighted work. Joint authorship typically occurs in music, where one person produces the music and the other person writes the lyrics. It can also occur between authors or bloggers. Co-owners own the copyright in a work together; each of them may exploit the work as if it were their own but are responsible to the other owners for monies received from the work. Co-owners of a song may split the royalties earned. Likewise, co-owners of a book may split the revenue generated from sales.

When one co-owner asserts exclusive ownership over a work, the excluded owner may sue for co-ownership under the Copyright Act. The exclusive assertion by one co-owner serves as the injury that forms the basis for a claim. Obviously, failure to account to the other co-owner can operate as an exclusive assertion of copyright ownership. Less obvious is the application for a certificate of registration from the Copyright Office by one co-owner to the exclusion of the other. If the offending co-owner obtains the certificate of registration, then the certificate could operate to notify the excluded co-owner of the injury. Since the registration certificate operates retroactively to the date that the application was filed, the effective date of the notification would be the date that the application was filed. That date would also serve as the start date for the three-year statute of limitations.

This was the holding in Jordon v. Sony BMG Music Entertainment Inc. (5^th Cir., 2009). In a dispute between two co-owners of a song (Sony BMG was actually a successor in interest to the original co-owner), the plaintiff sued the defendant for withheld accounting as well as for co-ownership of the song. The court held that the plaintiff’s co-ownership claim was time barred. Specifically, the plaintiff filed suit on May 16, 2006. The registration document for the song in question was dated September 25, 2002. Since May 16, 2006 is later than September 25, 2005, plaintiff was barred by the three-year statute of limitations.

Certain features of the registration process with the Copyright Office make this ruling problematic. First, if you’re submitting an application by mail, it can take up to twenty two months to obtain a registration document. Therefore, the registration document doesn’t even become available for the public until twenty two months after the effective date of registration. Suddenly, a three-year statute of limitations is effectively cut down to one year.

Second, it is debatable whether many people would think to check with the Copyright Office in order to determine copyright ownership. Personally, I’ve met clients that erroneously believe that services such as ASCAP and/or BMI are the be-all-end-all for copyright ownership. Commercially speaking, these services can provide much more value to a song owner.

Third, it isn’t clear that a registration document effects exclusive ownership on the listed parties. While it may indicate at least one party that claims a copyright interest in the listed work, it is possible to have multiple owners of a single work. From a logical perspective, it is just as likely that these multiple owners may file for registration individually (much like a security interest).

For these reasons, co-owners of a copyrighted work should be sure to consult with an attorney at the moment the work is created, possibly even before. It is important to determine the proper ownership status between the parties and to ensure that an application for registration is properly filed. By the time a party has decided to litigate, it is often too late to obtain the desired result. Jordan v. BMG Music Entertainment Inc. is illustrative in this regard.

NOTICE: The foregoing is not intended as legal advice, but rather introduces general issues to consider when seeking legal advice. You should consult with an attorney before acting upon any information provided in the foregoing. The choice of an attorney is an important one and should be not based solely on advertising or promotional material. For more information, please read this Disclaimer.