PARODY OR RIP OFF?: Don Henley Won’t Take It Easy
Former Eagles drummer and co-lead singer Don Henley has just agreed to settle a lawsuit that he filed against Duluth Trading Co., the clothing retailer best known for its goofy cartoon ads on television. The crux of Henley’s lawsuit was that Duluth Trading, without Henley’s permission, sent out email advertisements (shown in the photo accompanying this post) for henley-style shirts (a “henley” is a type of shirt that resembles a collarless polo shirt) with the following text: “DON A HENLEY AND TAKE IT EASY.” While the song “Take It Easy” was not written by Henley (it was co-written by Jackson Browne and Eagle Glenn Frey who also sang lead on it), it was a huge hit for the Eagles. Henley claimed that the ads for the henley shirts purposely were designed to commercially exploit Henley’s name and persona, thus violating both his right of publicity and his trademarks. Henley owns two Federal trademark registrations for his name.
The right of publicity (which is the subject of a prior blawg post) is a state law right that protects various aspects of a person’s name, likeness and persona. The scope of the protection varies from state to state and the right is not recognized in every state. There is no uniform Federal right of publicity (like copyright law).
The case against Duluth was filed by Henley last October. It alleged that Duluth’s ad “deliberately invoke[d] Mr. Henley’s name and his association with the Eagles (via an Eagles hit song title) to sell its apparel.” Duluth Trading responded at the time by arguing that the “obvious joke” was not a violation of Henley’s publicity rights or trademark rights and was protected by the First Amendment as free speech. For its part, Duluth pointed out that the “henley” is named for the English town of Henley-on-Thames, not for the musician. Duluth Trading claimed that its use was a “transformative use” of portions of Mr. Henley’s name and, thus, constituted fair use. The concept of a “transformative use” is an element of a copyright concept called “fair use” and is not one that has been applied to right of publicity or trademark cases in the same way. (For a broader discussion of the Copyright Act’s Fair Use Doctrine, see my blawg posts of February 20, 2013 and November 21, 2013.) Since this case settled before the court issued a ruling on this issue, whether or not the court in this case would have applied the concept of a “transformative use” beyond the scope of a copyright claim is not clear.
As part of the settlement, Duluth Trading has publicly apologized to Henley on its Facebook page and on its website. In the apology, Duluth Trading claimed that the henley shirt ad, like its other advertisements, was intended to be a funny pun. Duluth apologized for using Henley’s name without his permission and also agreed to make a donation to one of Henley’s favored charities.
The lesson to be learned from this case is that celebrities increasingly are asserting their publicity rights to prevent third parties from commercializing products using their names, likenesses or personas. Businesses who desire to create parody advertisements need to consider how far they can go and also should factor into their decision the litigious reputation of the party whom they are going to parody. Don Henley, who has a long history of assorted legal battles against various members of the music industry, was apparently not going to keep his shirt on for this one.
BLURRED LINES: Robin Thicke’s and Pharrell Williams’ Infringement Clear Enough to the Jury
A Los Angeles Federal court jury decided this week that singer Robin Thicke’s and singer/producer Pharrell Williams’ megahit, Blurred Lines, infringed upon Marvin Gaye’s 1977 hit Got to Give It Up. The jury’s verdict, reached after eight days of trial testimony, awarded the Gaye family $7.4. $4 million of that award represents the estimated license cost for the right to use the Gaye-penned song, $1.8 million were profits earned by Thicke from his exploitation of it, and $1.4 were profits earned by Williams from his exploitation of it. This is one of the largest jury awards for a music copyright infringement case. Most of these cases, like the recently settled Sam Smith/Tom Petty copyright infringement dispute, are settled out of court or are dismissed by the court as a matter of law on summary judgment. This case is notable not only for the size of the verdict, but the strategies employed by the lawyers for both sides.
This case also illustrates the difference between the copyrights to a musical composition (which protects the chords, melody and lyrics of a song and is normally owned by a songwriter or musical publisher) and the copyrights to a sound recording (which protects the performances of the artist and recording engineer/producer as captured on a recording and is normally owned by an artist or record label). That distinction was a critical part of the case.
Interestingly, the case started with a filing by Thicke and Williams seeking a declaratory judgment that Blurred Lines did not infringe Got to Give It Up. Last October, the U.S. District Court in Los Angeles failed to grant Thicke and Williams a judgment based on summary judgment. However, the judge ruled that, under the Copyright Act of 1909, the copyright statute that was in effect as of the time of the publication of the Marvin Gaye recording in 1977 (the current Copyright Act of 1976 did not become effective until January 1, 1978), the Gaye family had not made the necessary deposits of the sound recording of Got to Give It Up with the US Copyright Office and, as such, could not claim a copyright on the sound recording. Subsequently, Williams and Thicke filed a motion with the court right before the trial was scheduled to begin to bar the sound recording from being played. Gaye’s family argued that the musical composition (the copyright status of which was not in dispute) is embodied in Gaye’s sound recording of it and that it was good evidence of Williams’ and Thicke’s infringement of the musical composition copyright. The court was not persuaded by that argument and, in a very unusual ruling, barred the playing of the Marvin Gaye sound recording at trial. Instead, the only thing that the court allowed the jury to hear was the sheet music of Got to Give It Up played on a keyboard and sung exactly as written. That sheet music lacked a good deal of the elements that seemed to be most similar between Blurred Lines and Got to Give It Up, in particular the unique percussion and Marvin Gaye’s distinctive vocal delivery (both of which arguably seem to be copied in Blurred Lines).
Thicke, whose credibility at trial really became an issue, admitted in depositions that he had lied to the media and was high on Vicodin and drunk during the recording sessions for Blurred Lines. While Thicke is credited as a co-writer of Blurred Lines, at trial he admitted that Williams had done virtually all of the writing of Blurred Lines. For his part, Williams claimed that he did not copy the Gaye classic, but rather only took its “feel” (that “late 70’s feeling”) to create an entirely new song. Williams testified that he is a huge Marvin Gaye fan and he claimed that he was inspired by Gaye’s music, but did not copy it.
The attorney for Williams and Thicke (and a third defendant, rapper T.I., whose rapping also appears as part of the Blurred Lines recording), emphasized that the Gayes only owned compositional elements that were reflected in the sheet music for Got to Give It Up, and that their rights did not extend to the other well-known elements of Marvin Gaye’s recording of that song, including the distinctive percussion and his vocal style. That attorney brought in a musicologist as an expert witness who testified as to the differences between the two songs and to show similarities between other famous songs.
Faced with this tactical obstacle, the lawyers for the Gaye family brought in their own musicologist to assess the similarities of the two songs. That musicologist testified to similarities in a “signature phrase” for each song, the “hook” in each song, the keyboard-bass interplay in each song and the themes and lyrics of each song.
As a trained musician, I have listened to both songs, although I have not listened to the stripped down version of Got to Give it Up that was played for the jury. Listening to the two recorded versions, you can hear certain similarities, although I thought that it was mostly just because the two songs share the same basic feel or groove. Those general elements of similarity normally are not enough to constitute copyright infringement. Remember, the jury did not have the ability to listen to the Marvin Gaye recording, but rather only a playing of the more stripped down sheet music for the song.
Despite the fears by the Gaye family that the judge’s ruling of the inadmissibility of the recording, the jury found that Thicke and Williams improperly used copyrighted elements of Gaye’s composition and ordered the payment of damages. While the decision is likely to be appealed, both Williams’ and Thicke’s reputations have been damaged, not to mention their respective bank accounts.
NOTHING BUT NET NEUTRALITY: Proponents Score First
In a 3-2 vote along party lines, on February 26, 2015, the United States Federal Communications Commission voted to approve the so-called “net neutrality” rules. By treating all Internet traffic equally, these rules are designed to preserve online competition. FCC Chairman, Democrat Tom Wheeler (reflecting the position of the Obama Administration), announced that broadband access to the Internet was to be classified as a “telecommunications service” and, as a result, the FCC would be applying Title II of the Communications Act of 1934 (which prior to now has applied to telephone carriers) to Internet service providers. With this ruling, the FCC declared that there would be governmental enforcement of the concept of “net neutrality.”
While the detailed rules were not released at the time of the FCC’s announcement, the FCC did announce a few key elements of its ruling. First, and most profoundly, the FCC has stated that it will regulate the Internet, just as it regulates other telecommunications and broadcasts. Second, the newly approved rules prohibit Internet service providers (“ISPs”), such as Comcast, Verizon, AT&T, etc., from blocking or slowing the traffic of their rivals. Third, and probably most significantly, the rules prohibit ISPs from imposing new fees for faster download speeds that would create paid prioritization (or “fast lanes”) for certain Internet traffic. The FCC’s ruling seeks to protect smaller websites and Internet services who could not compete with larger, more commercially successful websites if they could not afford to pay higher fees to ISPs who imposed a “fast lane” fee. The FCC also felt that allowing for such “fast lane” fees would lead to higher charges to consumers because the companies who chose to pay those fees would simply pass along the increased costs to its customers.
What does this all mean? For companies that rely on the ability to move massive amounts of data over the Internet quickly (such as Netflix), this ruling means that ISPs like Comcast (which also is a competitor of Netflix for streaming movies through its Xfinity service) cannot charge higher fees to Netflix than it charges to any other customer, even though Netflix uses enormous amounts of bandwidth.
Proponents of net neutrality (which includes representatives of many in the technology industries) have argued that FCC enforcement of net neutrality was essential to ensure that there would be a “level playing field” for small companies to compete in the Internet space. By prohibiting the large ISPs from deciding whether to allow faster downloads of certain sites, these proponents argued that net neutrality would protect Internet entrepreneurs, small websites and consumers, by enabling greater competition and consumer options. These proponents seem comfortable with the U.S. government taking a role in regulating the Internet.
While there are many supporters of net neutrality (the FCC reportedly received over four million comments from the public supporting it), the FCC’s newly announced rules are not universally being applauded. In fact, it is highly likely that they will be challenged in court (AT&T already has announced that it will be filing such a suit) and the Republican-controlled Congress may introduce new legislation to overturn the rules. Interestingly, free speech advocates seem to fall on both sides, depending on their view of what interests are being protected by these rules.
The opponents of the net neutrality rules have various reasons for opposing them. Some feel that it will be the first step to a government takeover of the Internet in the U.S. While other countries (such as Russia and China) long have advocated and imposed governmental control over access to the Internet by its citizens, the US historically has sought to preserve an open and unregulated Internet. Second, Title II of the Communications Act, say the opponents, was never designed to be used with 21st century cyber-technology; rather, it was enacted in 1934 to regulate the telephone companies. Third, the opponents fear that these rules will allow the FCC to set rates that can be charged and by imposing burdensome regulations, both of which will lead to increased costs to consumers. Finally, and perhaps most significantly, the opponents fear that these rules will stifle competition in the Internet space by discouraging investment by the larger ISPs in new technologies.
The proponents of net neutrality have won the first round. However, given the changed makeup of Congress following last November’s mid-term elections and the likely litigation challenging these rules, it is clear that the net neutrality debate is far from over.
THE TURTLES & SIRIUS XM: Not Happy Together
| Sirius XM Radio (which claims to be the largest radio broadcaster in the United States) features several niche “oldies” music stations, including those for the 40s, 50s, 60s and 70s. Sirius XM understands the nostalgic pull of classic tunes from days gone by and has programmed channels specifically to capture the audience of fans of music from those eras. However, a recent California decision soon may alter that. | |
| Flo & Eddie, Inc. (“Flo & Eddie”) was formed and is owned by Howard Kaylan (aka “Flo”) and Mark Volman (aka “Eddie”), two of the founding members of the 60s and 70s band, The Turtles. Today, Flo & Eddie owns all of the rights to The Turtles’ master recordings, including their number one hit in 1967, Happy Together. Sirius XM routinely has broadcast and streamed The Turtles recordings on its 60s and 70s channels and has never paid any public performance royalties to Flo & Eddie with respect to those performances.
Flo & Eddie filed suit in Los Angeles Superior Court (a California state court) alleging that these performances violated the provisions of a California state statute. The case was removed to Federal District Court in California based on Federal diversity of citizenship jurisdiction. This is important to note because at issue is an interpretation of California state copyright law, not an issue of Federal copyright law. The Federal District court had to interpret the meaning of the California copyright statute. A little background on music copyrights is in order. A recording of a song actually consists of two separately copyrighted works: (a) the “musical work” (i.e., the music and lyrics); and (b) the “sound recording”, (i.e., the actual performance of the song as captured on the record). Musical work copyrights normally are owned by music publishers (or songwriters, if unpublished). Sound recording copyrights normally are owned by record companies (or artists, if they self-release an album). The protection afforded to these two types of works differs under the U.S. Copyright Act. Specifically, there is a “public performance right” for musical works, but NOT for sound recordings (unless the public performance is a digital performance, such as internet radio). Even for digital performances, the Copyright Act provides NO protection for sound recordings first created prior to 1972. A 1971 amendment to the Copyright Act (which became effective on February 15, 1972) states specifically that recordings made prior to that date were not subject to Federal statutory copyright protection. So, in the case of “Happy Together” (which was written in 1967), when the song is performed by a band live, or played on the radio, public performance royalties are payable to the music publishing owners. Public performance royalties with respect to musical compositions are paid through ASCAP, BMI or SESAC. However, when the Turtles’ original recording of that song is played on the radio, no royalties are paid to Flo & Eddie because they do NOT own the copyrights to the musical composition, only the recording of it. (While changes to the Copyright Act which were enacted in 1998 as part of the Digital Millennium Copyright Act provided some protection for digital performances of sound recordings, those changes had no impact whatsoever on pre-1972 recordings which still do not enjoy a public performance right, analog or digital, under the Copyright Act.) The 1971 amendment made clear that, unlike most of US copyright law that DOES pre-empt any equivalent state laws on point, the Federal Copyright Act will not pre-empt state protection for sound recordings until 2047. So, state laws still matter in this one area. At the present time, 49 states have enacted or extended state law protections to pre-2/15/72 sound recordings. (Only Vermont has no state law in this area.) Most of these laws, however, are anti-piracy statutes, designed to prevent unauthorized copying of recordings. These state laws do not apply to the over-the-air broadcast performance of sound recordings. In fact, all but one of the 49 states offering protection to older sound recordings have explicit carve outs specifying that the laws do not create any public performance right in broadcasting. (Tennessee is the lone exception on this front.) The primary issue in the Flo & Eddie cases is whether those state statutes protect any non-broadcast “public performances” of the recordings such as digital streaming services and other digital performances of the type provided by Sirius XM, Pandora, Spotify, etc. Flo & Eddie (acting on their own and on behalf of a class they had certified) decided to file suit against Sirius XM alleging a violation of their rights under the California statute. Their argument is that the California law that granted them “exclusive ownership” of their pre-1972 sounds recordings includes the exclusive right to control and be paid for digital performances of those recordings. While the case eventually was removed to Federal District Court, it still was decided on the basis of California state law, not Federal law. Flo & Eddie also filed similar lawsuits in New York and Florida alleging violations of those states’ laws protecting pre-1972 sound recordings. On their heels, major record labels (who own the lions’ share of these pre-1972 recordings) also have filed suits against Sirius XM and against Pandora. Two weeks ago, the U.S. District Court for the Central District of California granted Flo & Eddie’s motion for summary judgment on their California sound recording claims insofar as the digital public performances are concerned. The basis for the Court’s decision was its interpretation of Section 980(a)(2) of the California Civil Code. That section expressly vests “exclusive ownership” of any pre-2/15/72 recording in the recording’s copyright owner. Sirius XM had argued that since Section 980(a)(2) does not explicitly include a right of public performance they did not owe Flo & Eddie any money, even though they did not deny digitally broadcasting Flo & Eddie’s pre-1972 recordings. The Court disagreed with this position and held that the concept of “exclusive ownership” in this context includes the exclusive right to digitally perform those recordings, even though the digital public performance right is not explicitly listed in the statue. Consequently, the Court ruled that Sirius XM’s repeated playings misappropriated Flo & Eddie’s property interest in the sound recordings under California law and will entitle them to damages (which will be another phase of the case). So what impact will this California case have? All of the Flo & Eddie cases, including those filed in New York and Florida, are class actions. It is likely that other similarly situated sound recording owners will jump into the fray to try to recover substantial damages for past royalties that should have been paid. It is important to keep in mind, however, that the Flo & Eddie Court’s ruling was by a Federal judge interpreting a California statute. So, for example, the Flo & Eddie Court’s opinion could be contradicted by a California state court hearing a similar case if it were to hold that the Federal court misinterpreted California law. Also, there is no assurance that courts in other states, including Florida and New York, will agree that the “exclusive ownership” language under their respective state statutes should be viewed as broadly as the California law has been interpreted. Further, Sirius XM has already prevailed in a separate but similar lawsuit, also in California, filed by record labels. So even this case could go away. In the short run, however, the Flo & Eddie decision could have a major impact on digital broadcasters, such as Sirius XM, which have niche “oldies” channels that consist almost entirely of pre-1972 sound recordings. (Flo & Eddie have just filed suit against Pandora in California based on the Sirius XM decision there.) The number of recordings that potentially are impacted by this Flo & Eddie decision is huge, including not only the Turtles, but also the Beatles, the Rolling Stones, Jimi Hendrix, Led Zeppelin, the Beach Boys, Elvis Presley, Roy Orbison, the classic Motown acts, and the classic “British Invasion” bands, to name just a few. These artists, and their recordings, still are popular today, more than forty years after the initial release of their recordings. So, unless the case is overturned, at the very least, Sirius XM will now have to pay royalties when it has not been doing so. We’ll have to wait to see what impact this decision this will have on their willingness to continue to offer this programming, or on the costs that they try to pass along to their subscribers. Finally, there is nothing stated in the Flo & Eddie decision that limits the scope of the California statue to violations of public performance by means of digital audio transmission (such as those made by Sirius XM and Pandora). Therefore, the Flo & Eddie ruling might be viewed broadly to give sound recording copyright owners a general public performance right in pre-February 15, 1972 sound recordings (i.e., analog, as well as digital public performances), a broad right that expressly is not recognized under current Federal copyright law. That means that traditional “over-the-air” radio and television broadcasters, who currently are expressly exempted under Federal copyright law from paying public performance royalties with respect to post-February 15, 1972 sound recordings, may be the next group targeted. |
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RECORDED MUSIC: Swan Song for the Music Industry?
As the owners of iPhones know, the band U2’s latest album, Songs of Innocence, was recently loaded automatically and without charge on all Apple devices with iTunes accounts. U2’s decision to give away this music for free (we’ll discuss that notion in a second) has been met with a variety of reactions. Some people were angry that Apple could simply “load” the music onto their devices without their permission. Some in the music industry have reacted angrily to U2’s doing so as a sign that even they, as artists, placed no commercial value on recorded music. Still others see it as another sign of the slow and painful death of the recorded music industry. Finally, there are those who see U2’s decision as a clever way to create new income streams for themselves, notwithstanding, the “free” giveaway.
It is no secret that sales of recorded music, especially album (CD) sales, have been on a steady decline for many years. The reasons for the decline are varied. For instance, the 33 1/3 LP featured often beautiful artwork covers that were considered an integral part of the album. When CDs became popular, the smaller size seemed to lessen the importance of album artwork and that made the experience of owning an album less enjoyable for some people. Although some felt the sonic clarity of the CD format was a valuable tradeoff to the smaller and less elaborate album covers, others decried the sterile sound of the all-digital format.
A much more profound blow to the traditional “album” came with the advent of mp3s. This new format, which allowed a user to easily carry around hundreds and then thousands of recordings on a device no larger than a cell phone (and later, mostly ON a cell phone) came with some significant costs. For music purists, it spelled poorer quality music because the already sterile digital sound was being compressed in order to allow for larger and larger quantities to be stored and because music was now being played through tiny ear buds instead of large speakers. The digital download craze further diminished the importance of album artwork. From a musical standpoint, because the music could now be readily acquired one song at a time, much less emphasis was placed on creating a cohesive “album” as opposed to a mere aggregation of songs. Artistically, this was a major step backwards to the times before the mid-1960s when thematically cohesive albums (such as The Beach Boys’ Pet Sounds and The Beatles’ Sgt. Pepper’s Lonely Hearts Club Band) raised the album concept to new heights. Even classic jazz albums, like Miles Davis’ Kind of Blue, were built on the concept of an album as opposed to a mere aggregation of random compositions.
Digitizing music so that it was translated into a series of 1’s and 0’s not only made it easy to carry around in large quantities, it made it easier to steal. Many people who would never steal a physical object because it was morally wrong saw nothing wrong with downloading and swapping music with their friends without paying the record companies or artists. Gene Simmons, the self-promoting but often astute bass player in the band Kiss, recently proclaimed that “rock music is dead,” blaming it on illegal downloading and file sharing.
Record companies also bear their share of blame. The emphasis on great creative masterworks (think of albums like Stevie Wonder’s Songs in the Key of Life, Michael Jackson’s Thriller and Donald Fagen’s The Nightfly) was greatly reduced. Nurturing the development of new and existing artists creatively was de-emphasized. For these reasons, many – myself included – feel that the quality of recorded music has declined greatly. Simmons blames record executives for focusing on “mindless, synthetic dance/pop” and claims that the industry’s focus on that formula has discouraged musicians from learning their craft and advancing the art form. Certainly, in the case of the major labels, there is a lot of truth in what he says. Even the so-called “indie labels” are full of releases featuring artists and songs that are indistinguishable from one another.
While illegal downloading still remains a serious problem, even legitimate, legal downloading services, such as iTunes, have continued to erode sales of albums.
On the heels of both illegal and then legal downloading (which failed to generate the same type of artist royalties that had been earned from albums and CDs), the next blow came from streaming music services such as Pandora and Spotify which pay artists even less. These advertiser supported subscription services have become very popular with music fans because of the ready access to enormous variety and quantity of music on any device that connects to the Internet. Unfortunately, the royalties that are paid to recording artists from streaming (as opposed to album sales) are miniscule. The services claim that they cannot afford to pay larger royalties either to the songwriters/music publishers or artists/record labels.
While this ready access to music may seem like the “golden era of recorded music” to fans, I fear that there eventually will be a price to be paid: if artists are no longer fairly compensated for their artistic works, they will cease to produce them.
This brings me back to U2. Bono and company publicly claimed that they were not making money on the sale of physical CDs anyway, so why not just give it away to their fans for free? First, U2’s position is misleading, if not outright deceptive. True, those with the iOS (at least through mid-October) are receiving the album for free. However, the New York Times has reported that in order to obtain the right to release U2’s album free, Apple paid the band and Universal Music an unspecified fee as a blanket royalty and committed to a marketing campaign for the band worth up to $100 million, according to several people briefed on the deal. Considering the very lackluster sales of U2’s previous album and its desire to once again seek to market itself to music fans, perhaps U2 will make a great deal more money on this deal. Even apart from that huge payday, the band hopes that the widespread distribution of the album will serve as a springboard for another mega-tour in which they will make many times that amount from live performances.
The real issue, however, is that the recorded music industry is still struggling to find a sustainable revenue model in the new digital era, and many in the industry are very unhappy with this U2/Apple “Fremium” giveaway. Labels routinely require that recording artists sign so-called “360 Deals” in which the labels share in the artists’ revenues from live touring, merchandising and music publishing—three areas that traditionally were outside of the earnings reach of record labels. They also charge management fees because the labels now claim to be taking a more active role in the overall handling of their artists’ careers. They justify this new position by stating that they are doing more than ever to manage their artists and that the economics of the modern recording business demand it. Many artists have responded to this by self-releasing albums or doing indie releases that are with labels which don’t insist on this type of a 360 deal.
The music business certainly looks dramatically different today than it did twenty or even ten years ago. How things will shake out over the next ten years is anybody’s guess.
