CAN’T POST THAT: YouTube’s Curious Decision to Take Down Video Game Reviews
This past week, YouTube sent out thousands of notices to parties who have posted video game reviews (including game play walk throughs) on YouTube. While the vast majority of these “reviewers” are amateurs who are video game enthusiasts who simply like to share their experiences with YouTube’s viewers, many are serious, well-funded enterprises who have operated as “professional” reviewers of video games and have monetized that activity. What Siskel & Ebert were to movies these folks are to the world of video gaming.
What caused YouTube to take this action? To be sure, these game reviews and game play walk throughs contain actual video game audio and video—both protected by copyright. However, by all accounts, the owners of the copyrights, the game publishers, were not the driving force behind YouTube’s decision. It appears that YouTube simply decided on its own accord to remove the content, just in case the copyright holders were to decide to pursue claims against them.
This is odd for several reasons. First, under the Digital Millennium Copyright Act, YouTube, as an “internet service provider” under the Act, enjoys immunity for copyright infringement with respect to postings made by others on its site as long as it provides for a mechanism to remove infringing posted materials if the copyright owner of such materials sends the internet service provider a notice demanding that such materials be removed from the site. This is known as a “Takedown Notice.” Second, most video game publishers have welcomed the publicity that these game reviews bring to their games. They have viewed it as a form of advertising for their games and, in many cases, even provide the games to the more professional reviewers specifically for the purpose of creating reviews to be posted on YouTube. Finally, “reviews” have long been a favored type of use under the Copyright Act’s “Fair Use Doctrine” (which I have discussed previously on this blawg: Homage or Rip-Off? and Go Ahead and Copy It). While it is true that many of these reviewers earn a good deal of money as a result of ad sharing revenues from YouTube, the fact that they are earning money from these reviews which incorporate copyrighted content does not negate the applicability of the fair use doctrine.
Even more bizarre in this case is that most of the game developers have NO idea why reviews of their games are being taken down. The video game developers did not send Takedown Notices to YouTube claiming that their copyrighted works were been posted illegally. Some suspect that YouTube’s notices informing the video game reviewers that their reviews/gameplay walkthroughs were taken down was the result of an automated program instituted by YouTube that sniffs out copyrighted content and automatically generates a notice removing such content, regardless of the manner in which it is used or even if it is used with permission.
For companies who have been earning a living from the revenues generated from their game reviews, this is more than a bit troublesome—it could be a “bet the business” kind of moment. I know of at least one such company that has moved its reviews to a different platform as a consequence of this action by YouTube.
Certainly, YouTube (and any other content host, such as Facebook, Instagram and Google) can decide if it will host any content. It could change its longstanding revenue model of sharing ad revenues with those parties who post content on the site and simply rely on other non-infringing content that is uploaded by users who do not expect to be paid anything. This would certainly make the creators of content such as movies, television shows and music happy, as they would no longer have to worry about their product being given away for free on YouTube. However, the video game industry is a bit different. By and large, game developers and publishers have seen these game reviewers and game play posters not as parties who are violating their copyrights but, rather, as effective publicists for their games.
If this wave of Takedown Notices simply was the result of a software algorithm gone bad, perhaps YouTube will straighten it out and once again welcome the posting of this type of content. On the other hand, if this was a conscious business decision made by YouTube, perhaps it will rethink that decision. The community of professional and amateur game reviewers are eagerly waiting to see what YouTube’s next step will be.
MY NEW ALBUM: FIRST LISTEN
For those of you new to Gurwin’s Keyboard, in addition to my work as a technology and entertainment lawyer, I also am a professional jazz musician. I am working on a new album, to be entitled Old Friends, New Acquaintances. I’ve just completed the first track, Shoho Love Song. You can listen to it by clicking the link below.
http://davidgurwin.bandcamp.com/track/shoho-love-song
GO AHEAD AND COPY IT: Google Gets Its Victory (For Now)
An expensive nine year legal battle between Google and The Authors Guild, the nation’s largest organization of published authors, has ended in a victory for Google. Federal Judge Denny Chin, of the influential U.S. District Court for the Southern District of New York, awarded a summary judgment to Google with respect to copyright infringement claims brought by the Authors Guild and several other named authors as a result of Google’s mass digitization of literary works for its “Google Books” project. In legal parlance, a “Summary Judgment” is a judgment rendered by the court prior to a verdict because no material issue of fact exists and one party or the other is entitled to a judgment as a matter of law. In other words, the facts that are material to the decision are not disputed by the parties and, therefore, the judge can render a decision based on the relevant law.
So what started this massive lawsuit? For several years now, Google has embarked on a massive project, called Google Books, to make digital copies of entire books (not just portions of them) to enable full-text searching of the texts. While many of the books are no longer protected by copyright, an enormous number of them still are. So far, Google has digitized approximately twenty million books. The Authors Guild and the group of individual authors (collectively, the authors) sued Google, claiming that such copying amounted to a massive copyright infringement of millions of books.
The District Court held that Google’s use of digital copies for full-text searching was “transformative” (I’ll explain that in a minute) and thus constituted “fair use.” As a result, the court held that Google may make full digital copies of the works without authorization of the Authors.
I have discussed the Copyright Act’s fair use doctrine in a previous post. It continues to be one of the most litigated issues in copyright law. Just to recap from that earlier post, the Copyright Act sets forth a non-exhaustive list of four elements that the courts must consider in determining if any unauthorized use of a copyrighted work is a “fair use.” They are: (1) the purpose and character of the work (which is claimed to be a fair 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. In addition to those four factors, the statute states that the court may consider other factors it deems relevant to the analysis.
As a result of the landmark 1994 U.S. Supreme Court decision in the case of Campbell v. Acuff-Rose Music (a case involving rapper Luther Campbell’s unauthorized cover version of Roy Orbison’s classic song, Oh, Pretty Woman), the courts have established another element to be considered: whether or not the unauthorized use is a “transformative use.” As I noted in the previous post, while some consider this to be a new “fifth element” to be considered, most legal scholars consider the “transformative work” test to be an element to be considered as part of the analysis of the first of the four statutory factors, i.e., the purpose and character of the work.
The Campbell Court stated that a derivative work becomes a “transformative work” (and, thus, entitled to fair use treatment) if it uses a source work in a completely new or unexpected way. In other words, even though the statute says that a copyright owner may stop others from preparing derivative works based on their copyrighted work, if that new work is “transformative” enough, the copyright owner may not be able to stop the use, even if the other four fair use factors set forth in the statute weigh against a finding of fair use. One thing that has led to quite a bit of confusion over the years is that the definition of a “derivative work” includes a work that is “transformed.” The test often applied is whether the new work “supplants” the original work. If so, it is not transformative.
OK, so how did the Google court apply the fair use analysis? Incorrectly, in my opinion.
In analyzing the first factor, i.e., the purpose and character of the Google works, the court concluded that Google’s use was “highly transformative” and, thus, that factor weighed heavily in favor of a finding of fair use. The court was impressed by Google’s digitization as a transformation of the books into a comprehensive word index that is designed to allow people to search through entire texts based on inputting search terms for any terms contained within that text. I fail to see how simply making copied text searchable is “transformative.” (I suspect the court of appeals might agree with me.) The court seemed to place a great deal of weight on the fact that Google’s scanning makes it easier for students, teachers, researchers and the public to find books. While the court acknowledged that Google’s use was commercial (which would tend to weigh against a finding of fair use) it nonetheless was impressed that researchers could use the indexed text without direct payment. What the court conveniently overlooked was that Google is a commercial enterprise and it generates millions of dollars in revenue as a result of ads and traffic on its site, including the Google Books pages.
The next factor the court discussed, the nature of the copyrighted work, i.e., books, once again would seem to weigh against a finding of fair use. However, the court said that the vast majority of the digitized books were non-fiction and thus entitled to little protection. Again, I disagree with that. While facts contained in non-fiction books are not protected by copyright, the choice of the way to express those facts is. While certain non-fiction works (for example, parts catalogs and phone directories) may have a very “thin” layer of copyright protection, other non-fiction works are highly creative. For example, does the court really think that Truman Capote’s classic, In Cold Blood, is not worthy of strong copyright protection just because it is not a work of “fiction?”
In analyzing the third factor, i.e., the amount and substantiality of the portion used, the court decided to use reason and stated that Google’s digization of entire works did weigh against a finding of fair use, but only “slightly” because Google takes steps to keep people from viewing complete copies of books online (even though the entire text is searchable).
In applying the final fair use factor, namely, the effect of the use on the market for the underlying work, the court opined that since Google does not sell the digitized versions, and only allows “snippets” of books to be viewed, Google Books are not a substitute for the original and will actually boost sales for the original works. The court stated that Google Books has given “new life” to “out-of-print and old books that have been forgotten in the bowels of libraries.” While Google’s legion of fans may love the convenience of being able to search millions of books this way, it is important to keep in mind that the authors feel that they have been economically harmed by this, notwithstanding the court’s view that the authors would benefit from it.
Judge Chin felt that the value of Google Books to researchers and other academics was compelling, stating that “Google Books provides significant public benefits.”
What is the impact of this decision (assuming that it is not overturned on appeal)? The decision gives a legal greenlight to search services that include images, text and other portions of works in the search results. Already, the courts have held that use of thumbnail images as part of a search engine is fair use. So long as such a search result does not act as a substitute for content by showing readers all of it, and instead simply shows where to find the rest of the content, the usage will be permitted.
Frankly, the court’s decision left me scratching my head wondering how it could reach some of these conclusions. My criticism of the decision is not so much the end result of a finding of fair use, but, rather, the court’s position on each of the four factors that led to that result. It is important to keep in mind that this decision (strangely taking nine years to get to summary judgment) likely will be appealed. I suspect that the court of appeals will agree with me and overturn this decision, but one thing that I have learned in my 28 years of law practice is that, when it comes to fair use cases, expect the unexpected. You can be certain that I (and others) will be watching this case closely.
AFTER THE LOVE IS GONE: Whose Name is it Anyway?
Often the first order of business for a newly formed band is the all-important selection of the band’s name. Sometimes, the name of the group includes the surname of one or more of the band members. A few notable examples are Bon Jovi, Hall & Oates, The Brian Setzer Orchestra, Simon & Garfunkel and Van Halen.
The next order of business SHOULD BE to decide who will own the chosen band name in the event of a breakup of the band or a change in personnel. Though these eventualities are probably the last thing on the minds of the members of a brand new band, they carry important consequences.
The ownership of the band name can be critical to the ability to continue to tour and merchandise. Many of the legendary Big Bands (e.g., The Glenn Miller Orchestra, The Buddy Rich Band, Woody Herman & the Thundering Herd), as well as classic Motown groups (e.g., The Spinners, The Four Tops, The Miracles) and even rock groups (The Animals, Pure Prairie League, Yes), just to name a very few, are comprised by many people who were never part of the original group (who may have died or just chose to leave the group). In some cases (known as “Ghost Bands”), none of the original members remain but through a series of ownership transfers a new party has acquired the rights to use the band name. These changes in personnel and ownership transfers can create disputes about the right to use the original band name.
One notable example of a dispute of the ownership of a band name involved competing versions of the band, Yes. Guitarist Steve Howe toured with one version of Yes. Keyboardist Rick Wakeman toured with his own version of Yes. Both of these versions of “Yes” were touring the United States at the same time and there was considerable confusion as to which version, Howe’s or the Wakeman’s, would be the one to play in the local arena. This battle of the bands led to extensive litigation over who owned the rights to the name “Yes.” These problems might never have arisen had these issues been settled when the band formed their legal entity.
Now there is a new twist on the “who owns the band name” issue: The ex-wife of Alex Van Halen, Kelly Van Halen, is being sued for using the name “Van Halen.” She is not using the name as the name of a new band, but as the name of businesses that intend to produce furniture and other household goods and clothing and to engage in the construction and interior design businesses. Van Halen, the band, was formed in 1972 by guitarist Eddie Van Halen and his brother, drummer Alex Van Halen . In 1984, Alex Van Halen married Kelly Carter and she legally took his name, going thereafter as Kelly Van Halen (the name she continues to use today as her legal name).
The Van Halen brothers formed an entity to hold their intellectual property rights—E.L.V.H., Inc. E.L.V.H. filed for and obtained numerous U.S. trademark registrations for the “VAN HALEN” name not only for entertainment services, but also for a broad variety of merchandise and goods, including recordings, musical instruments, books, posters, printed materials, clothing, etc.
In 1992, after twelve years of marriage, Alex and Kelly divorced. Now, almost twenty years after the divorce, E.L.V.H. has decided to sue Kelly to prohibit her use of the name she has used since 1984, Kelly Van Halen, in connection with her businesses. Kelly attempted to secure her own U.S. trademark registrations for “KELLY VAN HALEN” for use in connection with a broad variety of goods and services (based on a bona fide intent to use the mark in this way) for goods ranging from furniture and bedding, to clothing items, and to construction and interior design services. The lawsuit, filed in Federal District Court in California, seeks to block those registrations and to force Kelly to cease from using the “Van Halen” name in connection with any of these businesses.
While the U.S. Supreme Court has previously held that a person’s name is a form of their own property, the right to use that name is not without limitation. Under traditional trademark law, E.L.V.H. would not have to prove that the two names are identical, but only that there is a “likelihood of confusion” between its use of “VAN HALEN” and Kelly’s use of “KELLY VAN HALEN” in connection with her goods and services. Even if E.L.V.H. cannot prove that there is a likelihood of confusion, under the fairly recent law of “trademark dilution,” if it can prove that the “VAN HALEN” mark is famous and has been or is likely to have that fame diluted by Kelly’s use, it could prevail under that theory. Finally, if E.L.V.H. can prove that Kelly’s use of the “KELLY VAN HALEN” name falsely implies that there is some connection, affiliation or sponsorship between her goods and services and those of the famous band, E.L.V.H. may prevail under the theory of “unfair competition.”
Essentially, E.L.V.H. will have to prove that Kelly’s use of the “KELLY VAN HALEN” name, not in connection with a band or other entertainment enterprise, but in connection with the goods and services listed in those applications, is trading upon the goodwill in the “VAN HALEN” named owned by E.L.V.H.
So, I guess there are two morals to this story: First, be careful in deciding who in the band will own the name in the event of the departure of one or more of the founders from the band. Second, if you are in a band named after yourself and you decide to marry, will you allow the person you marry to take your name?
Pre-nup, anyone?
STOP IN THE NAME OF THE LAW: A Copyright Termination Victory For the Policeman
Victor Willis, lead singer and the “policeman” in the 1970s disco group, The Village People, has won back his portion of the copyrights to 33 of the songs that he co-wrote for the group, including the omnipresent YMCA. As a co-writer of these songs (there is currently some debate as to whether he had one or two other co-writers), Mr. Willis, by virtue of having written the musical compositions, held copyrights on these musical compositions (i.e., the songs themselves, not the recordings of the songs whose copyrights always have been owned by the record company). He then entered into a publishing agreement with respect to his song catalog. Like other standard music publishing agreements, under his agreement he assigned his copyrights to the music publisher, in return for the payment of royalties generated by the publisher’s commercial exploitation of the songs.
The case, filed by Mr. Willis in Federal court in Los Angeles, was limited to a determination of his rights in the musical compositions; the rights in the sound recordings created by the band were not at issue and remain with the record company or its assignees. After thirty-five years, Mr. Willis (and his co-owners) had the right to terminate these copyright assignments in the musicial compositions and to regain his rights in the 33 songs. This right is grant by Section 203 of the Copyright Act, a little known provision of the US copyright law; under this law, copyright assignments, exclusive licenses and non-exclusive licenses, if executed after January 1, 1978, may be terminated by an author of the work (or, if that person is no longer alive, by his or her heirs) any time during the period beginning 35 years after the date of the original assignment or license and terminating five years later. In essence, the author -or his heirs- has been given a statutory “second bite at the apple” with respect to his portion of the work. The termination right applies even if the author had signed a document expressly waiving the termination right. Songs whose copyrights were licensed or assigned prior to January 1, 1978 are not eligible for this treatment. The creation of this termination right was a key part of the Copyright Act of 1976 (which became effective with respect to works first created after January 1, 1978). It was enacted in response to the belief that many popular songwriters in the 1940s and 1950s had “given away” the rights to the renewals on their song copyrights by not fully understanding the old copyright mechanism under the pre-1978 law which had an original term of 28 years and a renewal term of an additional 28 years.
There is one important exception to this right: it does NOT apply to “works made for hire.” Under the Copyright Act, “works made for hire” are those prepared by an employee within the scope of their employment, as well as works prepared by independent contractors if there is a written agreement to treat the work as a work for hire AND the work falls into one of nine enumerated categories of work. When talking about creative works, the primary categories of works that might be eligible for “work for hire” treatment are: 1) contributions to collective works; or 2) as part of a motion picture or other audiovisual work. For example, if a group of writers worked collaboratively on a song and they all agreed in writing to treat their collective efforts as a work made for hire for another party (i.e., the agreement was not just among themselves), the termination right likely would not apply.
In this case, Mr. Willis did have co-writers, but there was no signed work for hire agreement with the music publisher or record label as to song ownership. The party currently holding the rights to those songs argued that Mr. Willis and his co-writers were “employees” of the publisher. The judge hearing the case did not agree. As a result, Mr. Willis now controls his percentage interest in the work (there is some debate as to whether there are two or three other co-writers) and is entitled to his prorata percentage on those works.
Mr. Willis, now emboldened by his recent victory (after a five year legal battle), has stated that he may prohibit the current touring version of The Village People (which is comprised of different members from when he was the lead singer of the group) from performing his works. In fact, his view is that he can now prevent all public performances of the work (which is part of the bundle of exclusive rights owned by a copyright owner), even the performances of YMCA that have become such a staple of stadium sporting events. However, since Mr. Willis did not write the compositions alone, but instead jointly with other authors, he cannot prevent those other authors (or their assignees) from granting non-exclusive licenses to perform the works. Copyright law provides that all joint owners must consent to an assignment of the work (a transfer of copyright ownership) or to an exclusive license (an agreement granting rights solely to one person), but any joint owner of the copyright may grant non-exclusive licenses without the consent of the other joint owners. If such a non-exclusive license is granted, there is a duty to account to those joint owners for their prorata share of the earnings. Thus, it is possible that the works could continue to be licensed by Mr. Willis’ joint owners (which may include the publishing company if the other individual or individuals who were co-writers do not exercise their termination rights), as long as the licenses are non-exclusive. Either way, Mr. Willis can look forward to receiving royalty checks that he has not seen for the past 35 years, and he can now probably afford not to stay at the YMCA.
