IP/Internet/New Media Blog

by George M. Borkowski[1]

Tthe actual performance of music and lyrics fixed in a recording medium, as opposed to the underlying composition – were not protected by federal copyright law until 1972

It may come as a surprise to some that sound recordings – the actual performance of music and lyrics fixed in a recording medium, as opposed to the underlying composition – were not protected by federal copyright law until 1972 – and then only prospectively.  The Copyright Office has now recommended that the Copyright Act be amended to encompass such sound recordings. 

The reasons for the exclusion of sound recordings from the Copyright Act until 1972 are not entirely clear.  To protect sound recordings created prior to 1972, record companies and other rights holders had to rely on a variety of state statutory and common law, which is specifically permitted by the Copyright Act.  In California, for example, Civil Code section 980 grants the author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, exclusive ownership of the sound recording until February 15, 2047. 

This situation obviously makes it more difficult for owners of pre-1972 sound recordings to protect their rights to those recordings.  State laws that may offer some protection have been described as a patchwork of often vague and inconsistent rights.  In addition, there is no presumption of validity that is accorded by a copyright registration from the Copyright Office, and chain of title thus may be more difficult to establish.  This is a significant limitation, given that these are older works and include, for example, recordings of old radio broadcasts.  It is also harder to have pre-1972 works that are being infringed on websites removed from those sites, given that the notice and takedown provisions of the DMCA (section 512 of the Copyright Act) apply only to copyrighted works.  Also, statutory damages (and often attorneys’ fees) are not available to plaintiffs in infringement actions of pre-1972 works.  Moreover, after February 15, 2067, the Copyright Act provides that all pre-1972 sound recordings will enter the public domain at once.  Ironically, this gives pre-1972 sound recordings – which are not protected by copyright – a longer term of protection than many old works that are subject to the Copyright Act for which protection expires after a set number of years.

In response to this issue, in 2009, Congress instructed the Register of Copyrights to conduct a study as to the “desirability and means” of extending federal copyright protection to pre-1972 sound recordings.  The Copyright Office took comments from numerous interested parties, including sound recording and other libraries, recording industry associations, broadcasters and satellite radio, music publishers, songwriters, universities, as well as other organizations and individuals.  It also conducted public hearings and met with interested parties.

The study has now been completed, and the Copyright Office has released several recommendations based on its results.  These recommendations include the following:

• Federal copyright protection should apply to sound recordings fixed before February 15, 1972.  (Special provisions will be needed to address ownership issues, term of protection, and registration.)
• All rights and limitations of the Copyright Act applicable to post-1972 sound recordings would apply to pre-1972 recordings, including a public performance right for digital audio transmissions, fair use, DMCA safe harbor for Internet service providers, and the anti-circumvention provisions of the DMCA.
• Authors of pre-1972 sound recordings would have the right to terminate grants of transfers or licenses of copyright that are made after (but not before) the date federal protection starts.
• The term of protection for pre-1972 sound recordings would be 95 years from publication, but in no event beyond February 15, 2067.
• A transitional period would be instituted during which owners of pre-1972 sound recordings would be able to seek statutory damages and attorneys’ fees in infringement litigation notwithstanding the lack of registration of those works prior to filing suit.

There are several other recommendations as well.  The full report can be accessed at http://www.copyright.gov/docs/sound/pre-72-report.pdf  If accepted, these recommendations should go a long way toward harmonizing copyright protection for all creative works of original authorship, regardless of the medium (and regardless of the reasons why pre-1972 sound recordings were treated differently to begin with).

Mr. Borkowski is a partner at Freeman Freeman & Smiley LLP.  He represents major entertainment and technology clients at the intersection of content creation and protection with technology, focusing on the impact of technology on traditional intellectual property rights and business models.  Mr. Borkowski has handled the full continuum of intellectual property, technology, and entertainment litigation, as well as anti-piracy and rights enforcement, and counseling.  He can be reached at george.borkowski@ffslaw.com  

Law Firm that Defends Online Reputations Bought 3,000 Domain Names

In a blog post from the ABA by Deborah Cassens Weiss, the author writes that a law firm that helps clients defend their online reputations has purchased 3,000 domain names to keep them from being co-opted by the wrong people.  John Dozier of Dozier Internet Law in Richmond, Va. believes purchasing the domain names is effective insurance.  The post goes on to note that John Dozier has written a book about online defamation called Google Bomb.

By Victoria Burke

On January 24, the Senate will have a procedural vote on the Stop Online Piracy Act (SOPA). The dynamics of SOPA are far-reaching and quite divisive. Supporters feel this legislation is the logical next step against foreign websites that circumvent current anti-piracy measures and those that offer counterfeit goods and pharmaceuticals. SOPA comes with the muscle of big name support. Some of the supporters include the MPAA, RIAA, NBA, MLB, NFL, as well as major studios such as Disney and CBS. Additionally, SOPA has the backing of the U.S. Chamber of Commerce, Microsoft, major pharmaceutical companies such as Pfizer, Eli Lilly and Company, and many others.

Yet, equally fervent are the opponents who worry about the resulting censorship from this Bill. Leading the charge in the opposition are Facebook, Twitter, Google, LinkedIn, Yahoo! and eBay to name a few. Besides vocalizing their objections, the opponents of SOPA are strategizing to make an attention grabbing protest. One idea involves an Internet blackout. Cnet describes this option as the “equivalent of a nuclear option.” Markham Erickson, executive director of NetCoalition (a trade association representing the leading global Internet and technology companies), confirmed to Fox News that such a blackout is under consideration. Erickson said, “a number of companies have had discussions about that.”

Currently, opponents have found success in boycotting SOPA supporters. When Go Daddy initially lent its support to SOPA (Stop Online Piracy Act), the company ended up suffering an exodus of domain customers. Those who feel the proposed legislation goes too far responded by sending Go Daddy a message. They spoke with their feet and left the company by transferring their domains to other providers. In order to stop the bleeding, Go Daddy released a statement withdrawing its support of SOPA. (Official statement from Go Daddy: http://www.godaddy.com/newscenter/release-view.aspx?news_item_id=378)

One article that breaks down the intricacies of this controversial legislation is: “What is SOPA Bill 2012? 7 Things to Know About Controversial Legislation” from the International Business Times. http://www.ibtimes.com/articles/272580/20111225/sopa-bill-2012-things-know-controversial-legislation.htm

By George M. Borkowski

A pending development in the Copyright Office will result in significant changes in the way an online service provider must designate an agent to receive notice of claimed copyright infringement under the Digital Millennium Copyright Act (DMCA).  As you will recall, an ISP that wants to invoke safe harbor protection under the DMCA for claims of copyright infringement by its users must, among other things, designate an agent to receive notice of claimed copyright infringement from content owners.  Failure to designate such an agent will make an ISP ineligible for DMCA safe harbor protection.

The current method of designating a DMCA agent is based on interim regulations that were promulgated by the Copyright Office when the DMCA was enacted in 1998.  Under the current rules, an ISP submits the name and contact information for its DMCA agent in a paper filing with the Office, which then maintains the information.  There is no enforceable requirement that this information be updated or maintained in a current state.  That obviously can create problems when designated agents change, or companies are bought or sold, or other changes occur at the ISP.

In recognition of these issues, the Copyright Office is proposing to amend its practices governing the designation of a DMCA agent by online service providers.  The proposal is to implement an electronic process under which service providers would designate DMCA agents to receive infringement notices.  If these new regulations are implemented, all online service providers would need to file new designations of agents within one year of the implementation of the new regulations.

The major proposed changes include the following:

• Implementation of an electronic (not paper) process, including an online submission form, by which service providers may designate agents to receive notice of claimed infringement, and the creation of an electronic database to search for designated agents.  ISPs that have already designated an agent under the current regulations will be required to file new designations.  The Office will no longer accept paper submissions.
• Any service provider that has filed an online designation of agent will be required periodically (most likely, every two years) to validate the information in its designation to keep the directory accurate.  Should an ISP fail to validate or amend its designation within the allotted time, the designation would expire and be removed from the directory.  This is significant, given that failure to have a designated DMCA agent will make an ISP ineligible for DMCA safe harbor protection.
• In addition to providing information about its designated agent, a service provider also would need to state its full legal name, physical address, and email address (in addition to that of its agent) so that the Copyright Office can send validation notifications to both the ISP and its designated agent.  Part of the reason for this proposal is to make it harder for rogue companies to hide from content owners who accuse them or their users of engaging in copyright infringement.
• The requirement of an actual signature would be eliminated.  The thinking is that, because all online filings will require the creation of an online account as well as payment of the accompanying fees with a credit card, checking account, or Copyright Office deposit account, the online system will reasonably be able to verify and authenticate the identity of the person submitting or amending the agent designation information.

There are additional proposals on more minor points that I have not mentioned here.  Whatever final regulations are implemented, it will be important for online service providers to submit and update DMCA agent information as required by the Copyright Office so as not to lose eligibility for the DMCA’s safe harbors.

The time for comments and reply comments closed on December 27, so we should expect new, final regulations in the not too distant future.  The proposed rules, plus comments from interested parties, can be found at the Copyright Office at this link:  http://www.copyright.gov/onlinesp/NPR/.

Mr. Borkowski is a partner at Freeman Freeman Smiley, LLP.  He  represents leading entertainment, video game and software companies and industry associations, as well as technology companies.

By Azita Mirzaian

Recently, representatives from the MPAA and The Net Coalition debated the merits of the proposed Stop Online Piracy Act (SOPA) legislation on Los Angeles public radio station KPCC’s AirTalk. Michael O’Leary, senior executive vice president of the Motion Picture Association of America, exchanged heated comments with Markham Erickson, executive director of The Net Coalition, an organization that represents leading global internet and tech companies such as Google and Amazon. While at times, the discussion devolved into snarky, off-topic accusations of who makes more profits and who is behaving in a more self-serving manner, the discussion was a good representation of the dichotomous positions of the tech industry and the film industry when it comes to SOPA.

The proposed SOPA legislation aims to aggressively protect copyrighted content on the internet by allowing the government to shut down and block access to offshore sites that enable online piracy of copyrighted content. During the discussion on AirTalk, the MPAA’s O’Leary insisted that the legislation is necessary to protect American jobs. He stated that the legislation not only protects creative communities such as the movie and music industries, but also protects consumers by ensuring that the pharmaceuticals, electronics, and fashion items that they purchase online are legitimate and safe.

The Net Coalition’s Erickson countered that although he is not opposed to stopping online piracy, the proposed SOPA legislation is an over-reaching, ineffective piece of legislation that will do little to stop online piracy while at the same time dangerously diminishing internet freedom. Erickson cited the example of Wikileaks to illustrate his point that that stopping payment processors and advertisers from working with offshore sites is an effective solution to the online piracy problem. But, he said, the SOPA legislation goes way beyond that by also having the government impose technological measures that would block users’ access to offshore sites. He stated his concern that this kind of over-regulation would damage the internet’s infrastructure, limit internet freedom, and hamper innovation.

You can listen to the full piece here

(http://www.scpr.org/programs/airtalk/2011/12/21/21848/online-privacy-act/).

Azita Mirzaian earned her J.D. from the University of Southern California Gould School of Law.  Her areas of interest include copyright protection, trademarks, and other intellectual property matters

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By Galen Gentry

As the sales of game consoles have waned, online games have gained popularity. Recently, Zynga Gain Network, Inc. was sued  in the Northern District of California (San Francisco).  Zynga is alleged to have shared personal information about Facebook users who play its online games.  Michael Aschenbrener, a Chicago based attorney has filed the complaint and he seeks to have the case certified as a class action.  The lawsuit claims Zynga violated federal law and Facebook’s own policy by causing the names of the users of its popular online games such as Farmville to be transmitted to advertisers and internet marketing companies.

Farmville allows members of Facebook to manage a “farm.”  Planting, growing and harvesting virtual crops, harvesting trees and bushes, and raising livestock. Farmville  has grown to be the social network’s most popular application, with over 62 million active users and over 24.6 million Facebook application fans as of September 2010 according to Wikipedia.org.

By Galen Gentry

Damian Culash has an interesting article in the Washington Post on Net Neutrality.  Read it here.  This article succinctly explains that powerful telecom interests could stifle the output of artists such as OK Go, Auto-Tune The News and the Gregory Brothers. It’s a quick and interesting read.

By Galen Gentry

On July 22nd the Ninth Circuit Court of Appeals overturned almost all of a Riverside federal court judge’s rulings and jury’s findings in the $100 million Bratz v. Barbie case. Judge Stephen Larson presided over the trial which ultimately found that Mattel Inc. had the rights to the Bratz dolls produced by rival MGA Entertainment Inc.

The appeals court ruled that most of the jury instructions and conclusions reached during the 2008 trial between Mattel and MGA were incorrect. “Because several of the errors we have identified appeared in the jury instructions, it’s likely that a significant portion – -if not all — of the jury verdict and damage award should be vacated, and the entire case will probably need to be retried,” said the appellate panel in an opinion written by Chief Judge Alex Kozinski. See our orgininal blog post on this topic here. 

The panel stated in the opinion“Even assuming that MGA took some ideas wrongfully, it added tremendous value by turning the ideas into products and, eventually, a popular and highly profitable brand.”   And went on to say “It is not equitable to transfer this billion-dollar brand, the value of which is overwhelmingly the result of MGA’s legitimate efforts, because it may have started with two misappropriated names.”

Wow. Talk about a difference of opinion. The trial judge and the appeals court saw this one very differently.

Galen Gentry

In an article in the Wall Street Journal yesterday, Justin Scheck, described the short lived trademark category for marijuana.  The article reports that the USPTO plans on ‘shutting things down’ by the end of the month, but apparently there was a brief period in which  the U.S. Patent and Trademark Office created a new trademark category dedicated to medical marijuana, spurring a hoards of applications from people and businesses in the 14 states where the drug is legal for medicinal purposes.  Among the trademarks: Chronic, Mellow Yellow, and Maui Wowie.  

The trademark agency said it was “highly unlikely” that the office would grant a medical marijuana trademark anytime soon because a product must be legal for interstate trade to be eligible for trademark protection…and so it goes.  An interesting but at least for now academic argument is whether whether long-used names for the drug could be trademarked if..uh it was legal it sell it.

The justices agreed with an appeals court that the method was too abstract to be patented. The Supreme Court used a different analysis to reach that conclusion, disagreeing with the legal test used by the lower court.   Read the Wall Street Journal article on the court decision.

By Galen Gentry

In City of Ontario, California v. Quon. The court held that a public employer’s examination of an employee’s personal text messages on a government-issued pager did not violate the Fourth Amendment. Justice Kennedy’s opinion for the Court remarked that a review of messages on an employer-provided device would similarly be regarded as “reasonable and normal in the private-employer context.”

A police sergeant was using a work-issued pager to send sexually explicit texts. The Supreme Court ruled Thursday that under the circumstances the police department was entitled to read his messages. In a unanimous decision, the high court said that even if police Sgt. Jeff Quon had an expectation that his pager messages would remain private, a police department audit of his messages was nonetheless reasonable.

“Because the search was motivated by a legitimate work-related purpose, and because it was not excessive in scope, the search was reasonable,” Justice Anthony Kennedy wrote for the court.

Quon’s employer asked its wireless service provider for details about the text messages sent and received by the city’s police officers, when their texts regularly exceeded the monthly limit for which the city had contracted. Quon was disciplined for violating police department rules when the city discovered that he sent numerous personal messages. He and the individuals with whom he communicated and who communicated with him sued the city, arguing that the city engaged in an unreasonable search in violation of the Fourth Amendment of the US Constitution, the privacy clause found in Article I, section 1 of the California constitution, and also the federal Stored Communications Act (SCA).

This is good news for employers and the case gives them guidance on the issue of employee privacy in this context:

Employers should establish the level of privacy expectations with a written policy that covers all the gizmos the company uses–telephones, cellular phone, sms text, and email.

Employers should avoid reviewing the content of sms messages, or emails or asking their service providers to do so, unless the employer has a clear work-related purpose such as an investigation of suspected wrongdoing or a non-investigative financial or administrative objective.

Content review should be done in a manner that limits privacy intrusions. The Quon decision states that this does not mean “least intrusive search practicable” but instead it must be a search reasonably limited to the employer’s legitimate, work related objectives.

A reasonable review of employee communications with realistic work related objectives can also serve as a defense against privacy claims by non-employees who communicated with the employee.

According to Rachel M. Zahorsky of the ABA  Journal Blog in the past five months, Virginia-based law firm Dunlap, Grubb, & Weaver has filed suits against thousands of individuals accused of illegally downloading independent films—an operation that could yield the firm and its clients over $15 Million.

Under the operative the U.S. Copyright Group, the lawyers seek out indie filmmakers and offer to sue anonymous movie pirates for no charge. The firm then subpoenas Verizon, AT&T and other ISPs to identify each John Doe user, and threatens to sue each person for $150,000 unless they agree to a $1,500 to $2,500 settlement fee, according to Ars Technica’s Law & Disorder blog and Techdirt. Defendants can pony up the cash on a website set up to accept checks and credit cards.

To identify illegal file-sharing, the firm uses a program that captures IP addresses based on the time stamp that a download has occurred and then checks it against a spreadsheet to make sure the downloaded content is the copyright-protected film and not a misnamed film or trailer, according to the Hollywood Reporter’s THR, Esq. blog

By Galen Gentry

On April 6^th  the District of Columbia Court of Appeal ruled that the Federal Communications Commission has no authority to determine how internet services providers manage traffic to their customers.  The case, Comcast v. FCC , is a blow to proponents of net neutrality.  In 2008 the FCC ruled that Comcast improperly discriminated against certain internet content when it blocked some of its customers from using the popular BitTorrent Inc. technology which allows users to download large files such as videos more easily.

Comcast appealed and the three judge panel unanimously found that the FCC overstepped its bounds in the 2008 ruling.  The court stated the FCC lacks direct authority from Congress to regulate internet traffic.  The ruling brings the issue of net neutrality back to the fore.  Some government and business leaders seek legislation which would prevent internet providers from curbing or charging higher prices for use of selected applications or access to certain websites. 

At issue is whether telecommunications companies should be allowed to manipulate how fast or slow websites pages load on customers computers.  Companies like Google support net neutrality which would prevent internet providers from curbing or charging higher prices for use of selected applications or access to certain websites.  The telecom giants such Verizon and Comcast are against such legislation.  President Obama supported previous efforts to enact net neutrality legislation and FCC chairman Julian Genachowski has made net neutrality a top priority. 

The issue of net neutrality is a partisan one.  It may take a long time for Congress to act.  In the interim the FCC may appeal the ruling or it may seek to reclassify high speed internet service so that it would be regulated like telephone services under existing laws.  The same companies which oppose net neutrality, the giant telecoms, would oppose such a move.  If the FCC makes an effort to reclassify high speed internet service the telecom companies are sure to challenge the action in court. 

 America needs competition among its high-speed internet providers. Open access has proved to be an effective way to do this in other countries. The FCC’s rules on net neutrality were an adequate substitute.  But with the Court’s ruling the United States now has neither.

The United States Patent Office issued a press release today stating that henceforth it would seek patent examiners by running ads in Playboy.  The Office went on to state that rumors that everything worth inventing had been invented now that the ipad was a reality were in fact true.