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    COPYRIGHT LAW PRIMER

    September 19th, 2016

    Pt. 6 – Conclusion

    Over the course of several issues, Music Insider Magazine’s “Copyright Law Primer” has given a brief overview of “fair use,” an often-misunderstood defense to copyright infringement that involves a case-by-case consideration of the following factors:

    Legal Protection word cloud conceptFACTOR 1 – The Purpose & Character of the Use: Using a copyrighted work in a way that “transforms” its original purpose typically weighs in favor of finding that the use was fair, while using the work for direct or indirect financial gain (i.e., “commercial” use) typically weighs toward liability for infringement.

    FACTOR 2 – The Nature of the Copyrighted Work: Creative works receive a higher amount of protection under the law, and so using them (as opposed to more factual, uncreative content) can look a lot more like infringement than fair use.

    FACTOR 3 – The Amount and Substantiality of the Portion Taken: Consideration is also given to whether the entire original work was used; and if not, whether the portion used represented an important piece of the whole (i.e., the “heart” of the original).

    FACTOR 4 – The Effect On the Market (or Potential Market) for the Original Work: If your use of a copyrighted work impairs the copyright owner’s ability to make money or sell the original work, even potentially, then it is less likely that your use will be considered “fair.”

    With this background, you should have a better idea of the various considerations that are given to the question of whether your use of someone else’s work is technically “fair use.” However, it is always crucial to remember that “fair use” is fact-specific — no one factor can establish or preclude this defense.

    To illustrate this point, and to conclude the “Copyright Law Primer,” here are several examples of noteworthy fair use cases involving music, with a play-by-play of how each factor was treated by the court (with the exception of Factor 2, which was not in dispute in these cases).

    “Fair Use” Cases

    In Italian Book Corp., v. American Broadcasting Co., a television news group covering an Italian festival in NYC recorded a band’s live performance of the song “Dove sta Zaza” and replayed part of the recording during its news broadcast. Ultimately, this was found to be “fair use” of the song, based on the following:

    Factor 1: This was considered an “incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported.”

    Factor 3: Though not integral to the court’s decision, only a portion of the song was used in the broadcast.

    Factor 4: The use of the song on an evening television news programs is not competitive with the commercial use plaintiff seeks to make of the song, and causes no loss of profit or lessening of the song’s value.

    In Keep Thomson Governor Comm. v. Citizens for Gallen Comm., a political candidate used a 15-second portion of his rival’s official campaign song in an advertisement promoting his own campaign, which was found to be a “fair use” of the original.

    Key Factors – #1, 4: The court held that the use of the plaintiff’s song was “clearly part of a political campaign message, noncommercial in nature” and also protected by the First Amendment. Additionally, the effect on the value or potential market of the work was found to be minimal, with the court noting that the original recordings “have sold and are continuing to sell” without any loss to the owner.

    In Fisher v. Dees, the composers of the song “When Sunny Gets Blue” sued the creator of a short parody song titled “When Sonny Sniffs Glue,” which altered the initial lyric line and borrowed six bars from the original song. The court determined that the defendant’s actions constituted “fair use.”

    Key Factors – #1, #3, and #4: Although the court held that the parody song was commercial in nature, creating a presumption against fair use, it also found that no more of the original song was taken than was necessary to accomplish the purpose of the parody, and that the parody was not likely to substitute the original on the open market.

    “Not Fair Use” Cases

    In BMG Music v. Gonzalez, an individual was sued for downloading songs using “peer-to-peer” file sharing software. The defendant argued that this activity was “fair use” because she was using the software to determine whether or not to later purchase the songs, but the court disagreed and held that this defense was not available.

    Key Factors – #1 and #4: The court held that the defendant was not engaged in a “non-commercial” use, since she was downloading and keeping whole songs that she otherwise would have spent her own money on. The court also held that Gonzalez’s activity had a negative impact on the potential market for the original work, stating that “[m]usic downloaded for free from the Internet is a close substitute for purchased music” and noting that P2P sharing programs conflict with traditional means of marketing songs (such as radio).

    The case Bridgeport Music, Inc. et. al. vs. Dimension Films et. al., pitted the makers of the movie I Got The Hook Up against the owners of the copyrights in the song “Get Off Your Ass and Jam,” which was used in a song on the movie’s soundtrack. While this was not technically a “fair use” case, the defendant did attempt to argue that the “de minimis” amount taken from the original song defeated any claims of copyright infringement. it still highlights how differently courts might treat each factor.

    Key Factors – #1 and #3: Although only a 2-second sample of an arpeggiated chord was sampled from the original song, this sample was “copied, the pitch was lowered, and the copied piece was “looped” and extended to 16 beats…[and] each looped segment lasted approximately 7 seconds” in five different places on the track.

    As you can see, there are few bright-line rules in this area of law, and sometimes the difference between “fair use” and infringement can come down to minor facts and details. If you’re unsure whether your particular use will land you on the wrong side of a lawsuit judgment, it may be safe to assume that you’ll need to ask permission before taking and appropriating someone else’s work.

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    Copyright Law Primer Part 5

    January 11th, 2016

     

    Here’s a quick recap of Music Insider Magazine’s “Copyright Law Primer” so far:

    • Part 1 gave a very general overview of “fair use,” a defense to copyright infringement available to accused infringers in certain circumstances (but fewer than you may think).

    Part 2-4 covered the four primary factors used to decide whether someone accused of copyright infringement can avoid liability under this defense:

    • Part 2 covered the “purpose and character of the use” — Using a copyrighted work for direct or indirect financial gain (i.e., “commercial” use) weighs toward liability for infringement; using a work in a way that “transforms” its original purpose typically weighs in favor of finding that the use was “fair.”
    • Part 3 discussed the “nature of the infringed work” — Creative works receive a higher amount of protection under the law, and so using them (as opposed to more factual, uncreative content) can look a lot more like infringement than fair use.
    • Part 4 covered the “amount and substantiality of the portion taken” — Consideration is also given to whether the entire original work was used; and if not, whether the portion used represented an important piece of the whole (i.e., the “heart” of the original).

    The effect of use on the market or potential market for the original work

    The final factor for consideration is how your use of a copyrighted work affects the current and potential profitability of that work. Under this factor, courts will typically take a detailed look at the audience of the original work, as well as the different ways in which the copyright owner could potentially use the work in the future.

    If your use of a copyrighted work impairs (or could impair) the author’s ability to make money, then it’s less likely that the fair use defense is available. If, on the other hand, your use is aimed at a completely different audience, the demand for the original work isn’t affected by your actions, and the original author probably couldn’t have profited from using the work the way you are, then this factor likely weighs in favor of fair use.

    To illustrate how this factor works, consider the following cases:

    In Twin Peaks v. Publications Int’l, Ltd., the plaintiff (Twin Peaks Productions, Inc.) owned the television serial drama “Twin Peaks,” which was first televised in 1990. The defendant (Publications International, Ltd.) published a book titled “Welcome to Twin Peaks: A Complete Guide to Who’s Who and What’s What,” which was based on the first eight episodes of the television series, contained content discussing various aspects of the series (including the series’ characters, creators, producers, location, music and popularity), as well as a chapter devoted to the detailed recounting of the first eight episodes’ plots.

    Ultimately, the court in this case held that the defendant’s use of the “Twin Peaks” characters and story was not fair use, in part because the book affected the market/potential market for the “Twin Peaks” show. The court found that show viewers could potentially have used the defendant’s detailed plot synopses as a substitute for viewing particular episodes of the series and noted that the plaintiff had already licensed at least two “Twin Peaks” books and had plans to license more — demonstrating that the defendant’s book competed in the plaintiff’s current and potential markets.

    In another case, Campbell v. Acuff-Rose Music, Inc., the Supreme Court considered whether 2 Live Crew’s use of lyrics from Roy Orbison’s “Oh, Pretty Woman” in its rap song, “Pretty Woman,” was fair use of Orbison’s work. Here’s a brief comparison of the lyrics from both:

    Lyrics to Roy Orbison’s “Oh, Pretty Woman”

    Pretty Woman, walking down the street,

    Pretty Woman, the kind I like to meet,

    Pretty Woman, I don’t believe you, you’re not the truth,

    No one could look as good as you

    Lyrics to 2 Live Crew’s “Pretty Woman”

    Pretty woman walkin’ down the street

    Pretty woman girl you look so sweet

    Pretty woman you bring me down to that knee

    Pretty woman you make me wanna beg please

    Ultimately, the court held that 2 Live Crew was able to assert the “fair use” defense. During its analysis of the fourth “fair use” factor, the court noted that 2 Live Crew’s song “comprises not only parody but also rap music,” and that there was no evidence that their use affected any potential “market for a nonparody, rap version” of Orbison’s “Oh, Pretty Woman.”

    As stated in previous articles, it is vital to remember that “fair use” is fact-specific — no one factor can establish or preclude this defense. Accordingly, it is important to always make sure to consult an attorney or request permission from the copyright owner before using a work.

    About Justin Haddock:

    JustinHaddockJustin Haddock is an associate in King & Spalding’s Austin office, and joined the firm in July of 2015. Justin focuses his practice on trademark, copyright, and other intellectual property matters, assisting primarily with domestic trademark prosecution and enforcement.

    Specifically, Justin’s enforcement work focuses on social media, and he works with clients on developing user policies best practices for company social media accounts, as well as IP enforcement strategies for infringing activity on Facebook, Twitter, Instagram, Pinterest and other major platforms.

    He also has significant experience clearing trademarks for domestic use and registration, as well as experience in preparing and prosecuting applications with the United States Patent & Trademark Office and the U.S. Copyright Office.

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    Copyright Law Primer Part 4

    September 2nd, 2015

    Amount and substantiality of portion taken

    So far, Music Insider Magazine’s “Copyright Law Primer” has covered the following: Part 1 gave a very general overview of “fair use,” a defense to copyright infringement that is available to accused infringers in certain circumstances (but fewer than you may think).

    Part 2 and Part 3 discussed two of the four main factors considered under the law as relevant in deciding whether or not this defense is available in a particular infringement dispute. Specifically:

    • Purpose and character of the use — Courts will consider whether the use in question was “commercial” (i.e., for direct or indirect financial gain) as well as whether the purpose of the original work has been “transformed” in some way.
    • Nature of the infringed work — Creative (as opposed to factual) works and/or content are typically more protectable and thus less subject to “fair use.” Furthermore a work’s prior publication or general availability to the public may weigh in favor of finding “fair use.”

    Part 4 covers how much of a work you can use that will be considered “fair use.”

    Fair use factor 3: The amount and substantiality of the portion taken

    The third factor for consideration is the amount and substantiality of the portion of the work used. This involves primarily looking at how much of the original work was used, in relation to the “whole work,” and may delve into whether more of the work was used than was needed for the intended purpose of that use.

    Amount used in relation to the whole work

    As a general rule of thumb, the more of the “whole work” you use, the less likely it is that your use will be considered “fair use.” However, taking even a small amount of copyrighted material may still result in liability for copyright infringement (and the substantial damages you may have to pay the copyright owner), for a couple of reasons.

    First, the “whole work” may not be exactly what you think. Consider the current issue of Music Insider Magazine, for example. It would be easy to assume this relatively short article, or a picture appearing on one of these pages, would be considered only a small portion of the “whole work” (i.e., this entire issue). However, as discussed in previous issues, copyright law affords protection to any original work fixed in a tangible medium of expression, the moment that work is created. Accordingly, keep in mind that in many cases, the “whole work” may consist of a single article, photograph, drawing or other work, even if it appears within a larger work.

    Second, using the “heart” of the original work (i.e., the most memorable or important part(s) of that work) is generally less defensible under “fair use,” no matter how small it is compared to the rest of the work. Think of the difference between (1) a song that features the opening riff from Led Zeppelin’s “Stairway to Heaven” (which many, if not most, people would recognize immediately), and (2) a song that features the four-chord progression from the Beatles’ “Let It Be,” (which is used in hundreds of popular songs, including practically any 50s doo-wop hit).

    To illustrate these points, consider Elvis Presley Enterprises, Inc. v. Passport Video. In that case, the defendant produced a documentary featuring clips of filmed footage of Elvis Presley (among other works owned by the plaintiff). In its opinion (affirming the lower court’s decision that this was not “fair use” of these works), the Ninth Circuit Court of Appeals highlighted the relationship between the quantity and importance of content taken from an original work:

    “[A]lthough the clips are relatively short when compared to the entire shows that are copyrighted, they are in many instances the heart of the work. What makes these copyrighted works valuable is Elvis’ appearance on the shows, in many cases singing the most familiar passages of his most popular songs. Plaintiffs are in the business of licensing these copyrights. Taking key portions extracts the most valuable part of Plaintiffs’ copyrighted works.”

    Proportionality of amount used

    This factor also may involve looking at the relationship between the amount of content used and the amount needed to achieve the purpose of the intended use – as you may imagine, using only as much of the work as is needed will generally weigh in favor of “fair use,” while using more than is needed is less defensible.

    In Lennon v. Premise Media Corp., for example, the defendant was sued by several parties for its use of approximately 15 seconds of John Lennon’s song “Imagine” in a documentary about intelligent design. Premise Media asserted that its use constituted “fair use,” while the plaintiffs claimed that the clip (although short) was “immediately recognizable” and was thus the “heart” of the original work. Holding that the defendants were likely to succeed in asserting a “fair use” defense, the Federal District Court for the Southern District of New York noted that Premise Media’s purpose was to criticize the original message of Lennon’s song, and thus held that “the amount and substantiality of the portion used is reasonable in light of defendants’ purpose.”

    As stated in previous articles, it is vital to remember that “fair use” is fact-specific — no one factor can establish or preclude this defense. Accordingly, it is important to always make sure to consult an attorney or request permission from the copyright owner before using a work.

    About Justin Haddock:

    Justin Haddock is an associate in King & Spalding’s Austin office, and joined the firm in July of 2015. Justin focuses his practice on trademark, copyright, and other intellectual property matters, assisting primarily with domestic trademark prosecution and enforcement.

    Specifically, Justin’s enforcement work focuses on social media, and he works with clients on developing user policies best practices for company social media accounts, as well as IP enforcement strategies for infringing activity on Facebook, Twitter, Instagram, Pinterest and other major platforms.

    He also has significant experience clearing trademarks for domestic use and registration, as well as experience in preparing and prosecuting applications with the United States Patent & Trademark Office and the U.S. Copyright Office.

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    Copyright Law Primer, Part 3

    July 8th, 2015

    The second ‘fair use’ factor

    Copyright tag cloudPart 1 of Music Insider Magazine’s “Copyright Law Primer” gives a very general overview of “fair use,” a defense to copyright infringement, which alleged infringers of protected works may be able to assert under certain circumstances.

    Part 2 discusses the “purpose and character of the use,” which is one of the four primary factors courts typically use in determining whether “fair use” applies. This factor includes whether the use in question is “commercial,” and whether it “transforms” the original work.

    Under the fair use doctrine, a court will next consider the nature of the copyrighted work itself (Part 3).

    How protectable is the work?

    Some works consist of protectable content, while others consist of material prone to “fair” use. If the content being borrowed from an original work involves a high level of creativity and is less factual or textual in nature, it is likely more protectable, and unauthorized use of that content is less likely to be considered “fair.” On the other hand, if the portion of the work borrowed is minimally creative, and consists primarily of facts or text, then this material would likely be less protectable and more subject to fair use by other people.

    For instance, in SOFA Entertainment, Inc. v. Dodger Productions, Inc. in 2013, the defendant used a seven-second clip of “The Ed Sullivan Show” (the plaintiff’s work), showing Ed Sullivan’s introduction of the Four Seasons, in its musical “Jersey Boys.” In finding that the defendant’s use of this clip was fair use, the court noted that “[w]hile the entire episode of The Ed Sullivan Show or the individual performances may be near to the core of copyright, the clip conveys mainly factual information — who was about to perform.”

    As readers of Music Insider Magazine, it might be safe to assume that any copyright disputes you may encounter will likely involve works or content that is more creative and protectable in nature (e.g., music recordings, album artwork, song lyrics). However, it is important to note that some creative works can contain factual elements (and vice versa). As an example, the presentation and design of a CD jacket may as a whole appear to be an artistic and creative work, but the track listing and production credits listed on the back of the jacket, by themselves, are factual in nature and more subject to fair use.

    Has the work been published?

    The court may also look to whether or not the original work being copied has been published. Because of the law’s concern with giving the author of the work the right to control its first public appearance, the scope of “fair use” may be narrower for works that have not yet been made available to the public.

    In Salinger v. Random House  in 1987, the defendant’s biography of author J.D. Salinger contained paraphrases of large portions of Salinger’s unpublished letters. The court held that the use of these excerpts was not fair use, in part, because Salinger had never authorized reproduction of the letters (even though they could be read at a university library).

    Depending on the level of creativity embodied in a copyrighted work, and its availability to the public, your unauthorized use of a copyrighted work may or may not be considered “fair” under this second factor.  However, as stated in previous articles, it is vital to remember that “fair use” is facts-specific — no one factor can establish or preclude this defense. Accordingly, it is important to always make sure to consult an attorney or request permission from the copyright owner before using a work.

    Justin Haddock, an IP associate in Norton Rose Fulbright’s Austin office, can be reached at +1 512 536 3024 and justin.haddock@nortonrosefulbright.com. One of the world’s largest legal practices, Norton Rose Fulbright represents preeminent corporations and financial institutions in their most important matters. With more than 3,800 lawyers in over 50 cities worldwide, Norton Rose Fulbright is known for its depth and breadth of experience in the following key industry sectors: financial institutions; technology and innovation; energy; life sciences and healthcare; transportation; and infrastructure, mining and commodities.

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    Copyright Law Primer: Part 2: The first ‘fair use’ factor

    March 9th, 2015

    Copyright

    Part 1 of Music Insider Magazine’s “Copyright Law Primer” gave a very general overview of “fair use”. This issue covers one of the four primary factors that a court would consider when determining whether or not a particular use of another person’s copyrighted work constitutes “fair use” of that work.

    Under the fair use doctrine, a court will first consider the way in which you use the copyrighted work. The two most relevant considerations are:

    Are you making “commercial use” of the original work?

    As discussed in Part 1, your use of a copyrighted work may not be fair use, even if you are not making any money from it. However, any commercial benefits you receive from your use, whether direct or indirect, are still relevant. Direct commercial benefits include (as you might have guessed), any monetary compensation paid to you as a direct result of your use of the copyrighted work. Examples include direct profits, subscription fees and pay-per-order revenue. Indirect commercial benefits can include anything (other than direct sales) that increases your profitability or notoriety in the profession, as well as revenue received from merchandising or advertising.

    Are you “transforming” the original work?

    Whether or not you are benefitting commercially, a court will also consider the extent to which your use transforms or alters the original work and the purpose for which it was created. In other words, ask yourself whether and to what extent your use of new work adds something to the original work, or changes its expression, meaning or message.

    In Bill Graham Archives v. Dorling Kindersley Ltd., the defendant had used images of Grateful Dead concert posters in a book about the band. In the book, the posters had been reduced to thumbnail-size reproductions along a timeline showing the band’s history. Due in large part to the fact that the size of the original works had been greatly reduced and were being used for a different purpose than originally intended (namely, as historical pictograms and not promotional designs), the U.S. Court of Appeals for the Second Circuit found that the defendant’s use of these images constituted fair use.

    In a similar vein, take into account whether your use may be considered a “parody” of the original work. The U.S. Supreme Court has held that parodies constitute transformative works and may qualify as fair use under the Copyright Act. However, be mindful that “parody,” which sheds light on and comments or criticizes the original work, is quite different from “satire,” which uses the original work to criticize something else and is not usually considered fair use.

    In Leibovitz v. Paramount Pictures Corp., for example, Paramount Pictures was sued for its use of a picture of a naked pregnant woman superimposed with actor Leslie Nielsen’s face and featuring similar lighting and angles as the famous Vanity Fair photograph of Demi Moore taken by Annie Leibovitz. The Second Circuit held that this use was transformative and thus fair use, as it was a parody that copied the style and content of the original work for comedic effect.

    The more transformative or non-commercial your use of a copyrighted work, the more support you have for a fair use argument. However, remember every “fair use” determination is facts-specific, and just because one factor or circumstance may weigh in your favor, does not mean that copyright law is on your side. Accordingly, it is important to always make sure to consult an attorney or request permission from the copyright owner before using a work.

    Justin Haddock, an IP associate in Norton Rose Fulbright’s Austin office, can be reached at +1 512 536 3024 and justin.haddock@nortonrosefulbright.com. One of the world’s largest legal practices, Norton Rose Fulbright represents preeminent corporations and financial institutions in their most important matters. With more than 3,800 lawyers in over 50 cities worldwide, Norton Rose Fulbright is known for its depth and breadth of experience in the following key industry sectors: financial institutions; technology and innovation; energy; life sciences and healthcare; transportation; and infrastructure, mining and commodities.

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    Copyright Law Primer: Part 1: What is fair use?

    October 27th, 2014

    Previous issues of Music Insider Magazine have covered the basics of trademarks and copyrights, including the differences between these two types of intellectual property, as well as the possible penalties for committing trademark or copyright infringement. Following along these lines, this issue introduces a concept in copyright law that is often mentioned and rarely understood completely: the doctrine of “fair use.”

    Word cloud for Public domainThe term “fair use” is often mistakenly used to casually justify the unauthorized use of someone else’s songs, lyrics, photos or other works. For many uninformed musicians, simple actions like printing and distributing gig posters that incorporate a former bandmate’s artwork are mistakenly considered “fair use,” simply because no money is exchanged. Generally speaking, many uses of existing works of art commonly thought of as “fair” can (and often do) constitute copyright infringement under federal law. As explained in previous articles, this can be an extremely expensive misunderstanding.

    Simply put, “fair use” is a defense to copyright infringement. It provides the users, copiers and/or distributors of copyrightable works (articles, books, songs, etc.) with some protection against liability for infringing another person’s copyright. In other words, if you get sued for using the cover artwork from The Beatles’ “Sgt. Pepper’s Lonely Hearts Club Band” on your website, but the court determines that this was fair use of that artwork, then the money that would otherwise be awarded to Apple Corps., Ltd. (the owner of the copyright registration for this work) will likely stay in your pocket.

    Unfortunately, determining what uses qualify for this defense can get tricky. Because fair use is generally decided on a case-by-case basis, there is no guarantee that your use of a copyrighted work will qualify as fair, no matter how allegedly harmless or well-intended that use may be. And while the U.S. Copyright Actdoes list some uses of copyrightable works that are generally considered fair (specifically, uses for purposes such as “criticism, comment, news reporting, teaching … scholarship, or research”), the defense of fair use really only applies to certain, narrow situations and should never be used as a “fallback” justification for using someone else’s creative works.

    Over the course of the next five issues, we will break down what fair use really is by examining the four factors that courts consider in making this determination:

    (1)    The Purpose and Character of the Use.

    (2)    The Nature of the Work.

    (3)    The Amount of the Work Used.

    (4)    The Effect on the Market for the Original Work.

    Even if these four factors appear straightforward at first glance, keep in mind this is one of the trickiest areas of copyright law, and millions of dollars are often spent by parties litigating this issue. What many people might consider solid justifications for using someone else’s work without permission, often are still not enough to defend them from liability in court. Posting the iconic Sgt. Pepper’s artwork on your band’s website, for example, might still constitute copyright infringement, even if you received no money from using the artwork and nobody visited your website.

    By clearing up some of the common misconceptions surrounding this murky legal doctrine and examining each of these factors in detail, we hope to give you some general guidelines to help you navigate this commonly-misunderstood legal doctrine going forward. As you will see, knowing how to distinguish “harmless use” from “fair use” could be the difference between liability-free promotion of your music and a $150,000 check made out to the Lonely Hearts Club Band.

    Stay tuned.

    Justin Haddock, an IP associate in Norton Rose Fulbright’s Austin office, can be reached at +1 512 536 3024 and justin.haddock@nortonrosefulbright.com. One of the world’s largest legal practices, Norton Rose Fulbright represents preeminent corporations and financial institutions in their most important matters. With more than 3,800 lawyers in over 50 cities worldwide, Norton Rose Fulbright is known for its depth and breadth of experience in the following key industry sectors: financial institutions; technology and innovation; energy; life sciences and healthcare; transportation; and infrastructure, mining and commodities.

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    Trade Dress

    June 13th, 2014

    Product or packaging design protection

    Most of you are familiar with standard trademark forms — namely, words, slogans and phrases, and logos. These typical forms of indicia help you (or any other consumer) separate different goods and services from the individuals and companies that offer them to you.

    word cloud - trademarkHowever, trademarks can take less familiar forms. For instance, colors (e.g., use of the color red on Louboutin shoes) and sounds (e.g., the NBC three-chime jingle) can both serve as trademarks.

    Additionally, federal law protects certain forms of “trade dress,” meaning the visual appearance of a product or its packaging. The purpose of this protection is to eliminate confusion that can result when consumers are presented with products (or packaging) that are designed to imitate others.

    You may already be acquainted with the following product designs, which are registered as trademarks with the U.S. Patent and Trademark Office:

    U.S. Trademark Reg. No. 3,976,202:

    Trademark1

     

    U.S. Trademark Reg. No. 4,107,670:

    Trademark2

    U.S. Trademark Reg. No. 3,908,147:

    Trademark3

    U.S. Trademark Reg. No. 3,889,103:

    Trademark4

    If you’re particularly astute, you may recognize these drawings as guitar designs. But what may be less obvious is that they are distinct features of guitars made by Gibson Guitar Corp., who owns these designs as protectable intellectual property.

    By granting trademark protection to the visual aspects of Gibson’s guitars, the law aims to prevent you (the consumer) from purchasing another company’s guitar under the mistaken belief that it is, say, one of Gibson’s Les Paul® or Melody Maker® models (note that these two names are registered trademarks as well).

    Before any of you rush out to file a federal trademark application, know that not just any designs can serve as trademarks. To receive trademark protection, your trade dress must at least meet the following requirements:

    • Functionality. The trade dress cannot be “functional,” in other words, the design or packaging of the product at issue cannot serve a purpose other than to create recognition in a consumer’s mind as to the source of the product. The shape of the guitar head in Registration No. 3,976,202, for example, is shaped that particular way not necessarily because it gives the guitar a better sound, but because Gibson wanted a unique design that would convey a message to purchasers that “this is a Gibson® guitar.”
    • Distinctive. The trade dress must be distinctive, in other words, it must actually indicate the source of the product. As far as product design (as opposed to packaging) is concerned, distinctiveness can only be “acquired,” meaning gained through actual use of the design in the marketplace, to the point where consumers have learned to associate that product design with aspecificproducer or manufacturer. To help you visualize the idea, think about your associations when you see an iPhone , or a square burger patty.

    Gibson has gotten into several legal battles over guitar designs, the most notable of which is Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, in which Gibson sued Paul Reed Smith for trademark infringement of both: (i) its registered trademark in the two-dimensional Les Paul guitar shape (which features a single cutaway at the neck-to-body joint), and (ii) its non-registered or “common law” trademark rights in the Les Paul guitar model as a whole.

    While that particular battle ended in favor of Paul Reed Smith, the court’s decision ultimately rested on the determination that Paul Reed Smith’s guitars were not likely to cause confusion with Gibson’s, and not whether Gibson had trademark rights in the guitar designs.

    Even if this information is not particularly relevant to your everyday life, it’s at least worth knowing that companies like Gibson invest heavily in their brands, which can take numerous forms. And whether or not you are aware, playing a live show with a distinctively-designed instrument may just add to that investment.

    Justin Haddock, an IP associate in Norton Rose Fulbright’s Austin office, can be reached at +1 512 536 3024 and justin.haddock@nortonrosefulbright.com. One of the world’s largest legal practices, Norton Rose Fulbright represents preeminent corporations and financial institutions in their most important matters. With more than 3,800 lawyers in over 50 cities worldwide, Norton Rose Fulbright is known for its depth and breadth of experience in the following key industry sectors: financial institutions; technology and innovation; energy; life sciences and healthcare; transportation; and infrastructure, mining and commodities.

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    Copyright Infringement

    May 15th, 2014

    How to enforce your rights

    Last month’s issue of Music Insider Magazine dealt with some of the differences between trademark law and copyright law, including the kinds of penalties that may come from infringement of either type of intellectual property.

    Word cloud for Copyright infringementOne additional facet that warrants explanation is the importance of choosing a method by which you — the trademark or copyright holder — can and/or should enforce those rights against potential infringers.

    In particular, it’s worth knowing how to have content removed from someone else’s website or social media profile that potentially infringes your copyright(s), and why the difference between trademark and copyrights may be an important piece of knowledge when you’re trying to remove this content.

    Beware of copycat websites

    Let’s say, for instance, that you want to know how much traction your band has on the Internet. A Google search for your band’s name yields several noteworthy results, including a Facebook profile purporting to be a promotional page for your band, but it’s not run by anyone connected with your band. Moreover, the unofficial page features your band’s name and logo, album artwork, pictures of you and other members, and provides links that direct users to websites where they can listen to your songs for free.

    Understandably, you want these pages taken down. And lucky for you, Facebook (like most major websites with user-generated content) provides “takedown” notice forms, which create official reports that some content on the site may infringe your copyrights in violation of the Digital Millennium Copyright Act (DMCA). Facebook (or its administrators and/or lawyers) would then examine the page and decide whether or not to remove the infringing content or take down the page altogether.

    Know your rights

    Before you start filling out these forms, make sure you know which rights are being infringed. According to a recent ruling from the U.S. District Court for the Northern District of California, an incorrectly filled out DMCA takedown notice may itself be a violation of the DMCA.

    In fact, the DMCA holds that any proprietor who materially misrepresents that certain material infringes its copyrights is liable for damages incurred by the alleged infringer (Title 17 of the U.S. Code Section 512(f)).

    In CrossFit, Inc. v. Alvies, plaintiff CrossFit, Inc. (the company that created the very popular CrossFit® fitness training program) brought a trademark infringement action against Jenni Alvies, in part for content posted on Alvies’ “CrossFit Mamas” Facebook page, on which she posted daily workout routines and on which other individuals would post updates on their workout progress. Alvies additionally sold nutritional shakes through the blog and paid for Google AdWords advertising for her websites, all allegedly without CrossFit, Inc.’s authorization.

    Before filing the suit, CrossFit sent a takedown notice to Facebook under the DMCA, requesting the removal of Alvies’ “CrossFit Mamas” page, which Facebook subsequently did take down.

    In response to CrossFit’s lawsuit, Alvies counterclaimed that CrossFit made a “material misrepresentation” by using a DMCA takedown notice to assert its trademark rights, which the act does not cover. In other words, Alvies alleged that by asserting trademark rights under the DMCA — which provides remedies only for copyright infringement — CrossFit was itself violating the DMCA.

    CrossFit moved to dismiss this counterclaim, arguing that Alvies did not suffer any damages, but the court denied the motion, holding that Alvies allegedly received income from her activities and arguably suffered damage when the source of this income was removed via an improper DMCA takedown notice.

    Prevent monetary losses

    Notwithstanding any future appeal, this decision may allow some social media users who have infringed another’s copyright or trademark rights to place monetary liability on the holders of those rights who don’t carefully select the method for enforcing the rights to their marks or copyrighted works.

    Therefore, if you seek to remove material from any website that you believe is infringing, make sure to read carefully which procedures to follow for the types of rights you’re asserting, and make sure your copyrights — and not your trademarks and/or any other rights your band has — are being infringed.

    Fortunately, Facebook isn’t the only website with simple, easy-to-fill-out DMCA-takedown mechanisms in place. For easy reference, the following links (current as of this article’s date) provide information on procedures and requirements for assertion of intellectual property rights violations by social media users:

    Want to protect your assets? Ultimately, it’s your responsibility to enforce your rights and follow the proper process to take down copyright infringers.  Most websites make this a fairly simple task.  Keep in mind, however, that this task can be made much simpler if you know the exact nature of your assets, and what you’re entitled to do to prevent them from being misappropriated.

    Justin Haddock, an IP associate in Norton Rose Fulbright’s Austin office, can be reached at +1 512 536 3024 and justin.haddock@nortonrosefulbright.com. One of the world’s largest legal practices, Norton Rose Fulbright represents preeminent corporations and financial institutions in their most important matters. With more than 3,800 lawyers in over 50 cities worldwide, Norton Rose Fulbright is known for its depth and breadth of experience in the following key industry sectors: financial institutions; technology and innovation; energy; life sciences and healthcare; transportation; and infrastructure, mining and commodities.

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    Trademark vs. Copyright

    April 17th, 2014

    Legal tips to prevent money loss

    Trademark and Copyright

    Do you know the difference between trademark and copyright law? As a musician or businessperson, I think it’s in your best interest to know and protect your work — and to avoid infringing on other people’s rights. Here are some helpful pointers and compelling reasons why you should become familiar with both of these types of law.

    Trademark law

    A trademark is any word, name, phrase, logo, symbol, design or other indicia (distinctive marks) from which a purchasing consumer can identify the source of certain goods or services offered in the marketplace. Trademark law grants the owner(s) of trademarks the exclusive right to use their marks for certain goods or services.

    The following might be covered by trademark law:

    • Band/artist names.
    • Band/artist logos.
    • Album names.
    • Advertisement/commercial jingles.

    The purpose of trademark law, moreover, is to protect the consumer from confusion in the marketplace. In other words, by granting one person or company the exclusive right to use a trademark for, say, live concert performances, the law seeks to avoid the possibility that a purchaser would, for example, see two concert posters advertising different performances by “Van Halen” at two different venues on the same night.

    Copyright law

    Copyright, on the other hand, is the protection given under the law to original works of authorship that are “fixed in a tangible medium of expression,” such as musical compositions, books, photographs and works of art.

    The following might also be covered by copyright:

    • Song scores.
    • Song lyrics.
    • Album artwork.
    • Concert posters.

    In contrast to trademark law, which aims to protect the consumer, federal copyright law is designed to encourage the creation of original works of art. It does so by granting the author of a work the exclusive right(s) to:

    • Reproduce the work.
    • Prepare derivative works.
    • Distribute copies of the work.
    • Publicly perform the work.
    • Publicly display the work.

    Why these types of law matter

    You may not have been in many situations where the distinction between copyright and trademark law is particularly important. However, this distinction is worth noting and may prevent plenty of future headaches and money losses.

    Legal ramifications: Consider the legal ramifications of violating another person’s (or group’s) trademark or copyright. While the owners of trademarks often may only enjoin infringers from using their mark, copyright infringement can have severe monetary consequences, especially if the copyright holder owns a registration for the works at issue (up to $150,000 per work).

    In 2009, this was illustrated all too well, when a federal jury in Capitol Records, Inc. v. Thomas-Rasset returned a verdict of $1.9 million in statutory damages against the defendant, who had allegedly illegally downloaded 24 songs belonging to the plaintiffs.

    Infringement protection: Another big reason to consider the difference is for your own protection against potential infringement. As I have noted in past articles, without a trademark registration, your ownership of your mark derives only from the places where you were the first to use that mark for your goods or services. Copyright, on the other hand, works differently. Copyright vests in the author of a creative work the moment that work is created. Even without a registration, the author and co-authors of a musical score, a recorded song, lyrics or album artwork can enforce their copyrights in those works. However, obtaining a copyright registration does give the author certain advantages, including to the ability to sue under federal law for statutory damages, which can range anywhere from $750 to $150,000 per work, depending on the nature of the infringement.

    There are many other practical differences between these two areas of law (including the methods of enforcement of these rights online), which will likely provide fodder for future articles. But for now, it is important that you at least be aware of these two major areas of law, because they pervade the music industry — and the longer you spend in this industry, the more likely you are to encounter issues involving trademark, copyright or both.

    Justin Haddock joined the Austin office of Norton Rose Fulbright LLP as an associate in September 2012. He is a member of the intellectual property group, focusing on U.S. trademark and copyright law.

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