Grayson campaign ad apes 'Sopranos' opening; Henley v. DeVore redux?

The campaign of Rep. Alan Grayson (D-FL) has released a clever new ad -- one that closely mimics the opening of The Sopranos, only with Orlando rather than Northern New Jersey as the setting:



I don't think there's much of a copyright issue with the visuals in the Grayson spot; as far as I can tell, there's no copying of actual HBO footage, and I doubt HBO has a copyright in the idea of a montage of urban scenes from a driver's perspective. The much tougher issue for the Grayson campaign is the music, which appears to be a re-recording of the Sopranos theme (a song called "Woke Up This Morning" by British band Alabama 3 (aka A3)), with new lyrics that mock Grayson's opponent Daniel Webster (R). As to the music, the facts appear to be very similar to those in the Henley v. DeVore case, where the defendant also took a well known song and re-recorded it, substituting new lyrics attacking his political opponents. The court in the DeVore case soundly rejected the defendants' fair use argument, largely on the grounds that the campaign's use was satirical (using the work to poke fun at something else) rather than parodic (poking fun at the work itself). See Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994) (explaining parody/satire distinction).

Here's some background from the Orlando Sentinel.

CDT releases report on campaign uses of copyrighted material

The Center for Democracy and Technology has released a new report documenting political campaigns' uses of third-party materials, and the copyright battles that sometimes ensue. Readers of this blog will be familiar with many of the incidents described in the report, but the author, CDT Policy Analyst Andrew McDiarmid, also unearths a few I was not aware of. While I might quibble a bit with the emphasis the report places on the notice-and-takedown provisions of the DMCA, I agree with its overall conclusion that too often content owners, particularly news organizations, have sought to enforce their copyrights out of concern for their reputational interests -- a form of damage that is really not cognizable in copyright law. Definitely read the whole thing.

Could 'Cruel Summer' campaign video lead to a cruel copyright lawsuit?

A Republican House candidate from New Hampshire has used over a minute of the 80s hit "Cruel Summer" in a campaign video attacking his Democratic opponent, Rep. Carol Shea-Porter. The video from the campaign of Sean Mahoney -- which identifies itself as a "political parody" -- argues that the economic policies of Shea-Porter and the Obama Administration "have given us a cruel summer."

I have inquiries in to the Mahoney campaign as well as what I believe to be the copyright owners (Sony/ATV for the publishing and London Records for the master), to confirm what I strongly suspect: that the campaign did not get licenses for this use. (I will update this post when and if I hear back.) The self-imposed "parody" label notwithstanding, I think the copyright owners would have a very strong claim if they decided to pursue this. California Senate candidate Chuck DeVore (R) had a much more plausible claim to parody than does Mahoney -- and it was still a loser.

Billboard: 'The Legal Issues Behind The Slowed-Down Justin Bieber Track'

My Billboard piece on super-slow Justin Bieber. Bottom line: his label says it's fine ("and Justin thinks it’s great"!). EMI, one of the publishers, declines to comment.

Viacom v. YouTube: A disappointing decision, but how important?

I've now had a chance to re-read and digest last week's summary judgment ruling in Viacom v. YouTube. A few thoughts:

1) A disappointing opinion
Put aside, for a moment, whatever you may think of Judge Stanton's ultimate holding absolving YouTube of copyright infringement. Purely as a matter of judicial crafting and analysis, I found the court's order to be extremely cursory. While I certainly don't equate quality with quantity, this opinion was just too damn short to do justice to the complex, heavily-litigated issues in the case. It was nominally 30 pages, but about 11 of those were just long block quotes from Section 512 of the DMCA and its legislative history. Both parties amassed, and cited, thousands of pieces of evidence. The court was of course under no obligation to discuss them all individually. But it barely mentioned them at all! What about all the evidence of specific -- not just general -- knowledge on YouTube's part of infringing Viacom works on its system? See Viacom Motion at 25 n. 15 (citing Statement of Undisputed Facts Paras. 32, 59, 69, 105, 110, 116-17, 122, 130, 132, 165) (e.g., March 2006 memo from YouTube co-founder Jawed Karim: "As of today episodes and clips of the following well-known shows can still be found: Family Guy, South Park, MTV Cribs, Daily Show, Reno 911, Dave Chapelle. This content is an easy target for critics who claim that copyrighted content is entirely responsible for YouTube's popularity."). Judges have almost complete freedom to craft their opinions as they see fit, but I think the court fell short here by failing to engage the evidence, especially the evidence garnered by the party against whom it granted summary judgment. Judge Stanton issued his opinion barely a month after briefing was completed -- a very quick result. I don't think I've ever said this about a judge before, but I wish he had taken a lot longer.

2) What in the world is "red flag" infringement?
As I noted last September when a court in the Central District of California granted summary judgment to Veoh in the copyright suit brought by UMG, Section 512(c) of the DMCA identifies two triggers for the obligation of the host to remove the subject material (if it wants to maintain the safe harbor). First is actual knowledge of infringement (which can be obtained through receipt of a facially valid takedown notice pursuant to Section 512(c)(3)). Second is where the host becomes "aware of facts or circumstances from which infringing activity is apparent." Id. § 512(c)(1)(A)(ii). This latter situation is known as "red flag" infringement; the idea is that the host can't claim the safe harbor if red flags are being waved in its face, suggesting the obvious presence of infringing activity. The Ninth Circuit gutted the red flag doctrine in Perfect 10 v. CC Bill, specifically in this thoroughly unconvincing paragraph:

Perfect 10 alleges that CCBill and CWIE were aware of a number of "red flags" that signaled apparent infringement. Because CWIE and CCBill provided services to "illegal.net" and "stolencelebritypics.com," Perfect 10 argues that they must have been aware of apparent infringing activity. We disagree. When a website traffics in pictures that are titillating by nature, describing photographs as "illegal" or "stolen" may be an attempt to increase their salacious appeal, rather than an admission that the photographs are actually illegal or stolen. We do not place the burden of determining whether photographs are actually illegal on a service provider.

In other words, under Ninth Circuit precedent..., having material identified by its poster as "illegal" and "stolen" is not a red flag that infringing activity is taking place. One is left to wonder whether the panel would have ruled the same way had actual red flags been waved in the defendants' faces.

Judge Stanton, incorrectly in my view, adopted CCBill's holding without much analysis, further rendering red flag infringement a dead letter. The statute (and legistlative history) clearly indicate that some form of knowledge beyond that imparted via DMCA notices qualifies as knowledge of "facts or circumstances from which infringing activity is apparent," thus triggering a site's takedown obligation (on pain of losing the safe harbor). But after reading Judge Stanton's opinion several times, I simply have no idea what would actually constitute such "red flag" knowledge. And, again, his opinion does not even scratch the surface of the evidence presented by Viacom on this issue, see, e.g, Viacom Br. at 5-24, 50-56, and explain why none of it would raise a red flag for a reasonable service provider in YouTube's position.

3) The interplay between the DMCA safe harbor and inducement
Can a site induce infringement by third parties, and yet still claim safe harbor under Section 512? At least two courts have said no. See Columbia v. Fung at 43 ("inducement liability and the Digital Millennium Copyright Act safe harbors are inherently contradictory. Inducement liability is based on active bad faith conduct aimed at promoting infringement; the statutory safe harbors are based on passive good faith conduct aimed at operating a legitimate internet business."); Arista v. Usenet at 17 ("if Defendants...encouraged or fostered such infringement, they would be ineligible for the DMCA’s safe harbor provisions."). But Judge Stanton appears to have rejected the holding of Fung (from the CD of Cal.) and Usenet (from his court in the SDNY). At page 23 of his order, Judge Stanton appears to be saying that a site that takes down infringing material upon receipt of DMCA notices qualifies for the safe harbor, even if it is inducing that very infringement. For immediately following his discussion of Grokster and inducement, Judge Stanton concludes, "To such a provider [i.e., one that complies with DMCA notices], the DMCA gives a safe harbor, even if otherwise he would be held as a contributory infringer under the general law." (my emphasis).

But that can't be true, at least as so broadly stated. Can a site really run banners saying, "Upload the top 20 movies, TV shows, and songs here! And everyone else: watch and listen!" And then walk away from a copyright suit as long as it complies with DMCA notices regarding those very works whose infringement it induced? Judge Stanton's words certainly suggest so. But I think that's contrary to the statute (Section 512(c) only applies to material on a system "by reason of the storage at the direction of a user," which is not the case when the site induces the infringement), as well as the legislative history and common sense. Perhaps there was sufficiently conflicting evidence on the issue of inducement that Judge Stanton could not make a finding that YouTube induced infringement (as he suggests on page 22), but I don't think it was correct as a matter of law for him to conclude that YouTube was not liable even if it induced infringement. I expect this to be a major issue on appeal.

4) How important is this decision?
No doubt, it puts an end (for now) to a massive potential liability hanging over YouTube's head. And that's important in and of itself. But this decision is probably not as important as everyone appears to have concluded in the initial analysis last week. First, Viacom has already said it's appealing, and I think it's likely that the Second Circuit will at least modify parts of Judge Stanton's rather thin opinion. Second, keep in mind something I wrote just after the first round of briefing in March: Viacom effectively dropped any claim based on YouTube's activities after May 2008, when, according to Viacom, YouTube began filtering for Viacom content without requiring Viacom to license its videos. In other words, Viacom is (relatively) OK with the way YouTube operates now; the worst of the conduct, which provided much of the most damning evidence against YouTube, occurred well before that. As long as YouTube continues to operate its content ID system -- and I have no reason to believe that it won't -- even Viacom has effectively conceded that it's not worth suing over YouTube's current practices (though the Premier League plaintiffs appear to disagree).

And keep in mind that of the six major film/TV studios, and the four major record labels -- none of whom are exactly shy about litigating to protect their copyrights -- Viacom is the only one that actually pulled the litigation trigger against YouTube. The others, due to a combination of private enforcement, business deals, technology, and ownership of their own UGC sites, appear to have reached a form of détente with YouTube. They may not like YouTube, and the fact that it profits from infringement of their works. But for a variety of reasons, each decided not to sue. And I suspect even a victory by Viacom in this case would not have caused them to do so.


Disclosure: As I've previously noted, I work at NBC Universal, which signed on to an amicus brief in this case, though I did not work on it. As always, the views expressed here are my own.

YouTube wins Viacom copyright suit

Wow -- that was quick. Today Judge Louis Stanton granted summary judgment to YouTube and Google, holding that its activities in hosting and disseminating user-uploaded videos was protected by the safe harbor found at Section 512(c) of the DMCA. More later...

It's official: Don Henley wins summary judgment over Chuck DeVore on copyright claims

It's been a very bad month for Chuck DeVore. On June 8, the Republican Assemblyman from Orange County finished third in the GOP primary for the right to take on Sen. Barbara Boxer (D). And then, just a few days later, federal Judge James Selna issued his formal ruling on Henley's copyright and Lanham Act claims regarding DeVore's videos that used Henley's songs to mock Boxer and President Obama, soundly rejecting DeVore's fair use defense. While I haven't done a line-by-line comparison of the tentative and final rulings, it appears that the one substantive change favored DeVore and his co-defendants. In the tentative ruling, Selna determined that the defendants had committed willful copyright infringement, but in the actual order, he declined to grant summary judgment in favor of either party on that issue.

I assume there will be a jury trial on the issue of willfulness and damages, unless the parties are able to reach a resolution.
Order on Motion for Summary Judgment in Henley v. DeVore

'We Con the World' video kerfuffle: When Middle East politics meets the parody/satire divide

What do you get when you mix Middle East politics with ignorance of copyright law? Utter nonsense claiming that YouTube and Warner/Chappell Music have "censored" a pro-Israel music video -- a video that is very likely infringing.

The kerfuffle involves a video called "We Con the World" produced for Latma, a "media satire website" edited by journalist Caroline Glick. The video uses the tune from "We are the World" but substitutes a new set of lyrics mocking the supposedly "humanitarian" mission of the Gaza flotilla. Music publisher Warner/Chappell apparently sent DMCA takedown notices to YouTube, which removed some (though not all) copies of the video.

Now the pro-Israel and conservative blogosphere is up in arms, claiming that this incident is an example of "Israel's enemies ... trying to silence us," and "YouTube ...com[ing] down against the Israeli side in its editorial decisions," and even "a blatant act of Jew-hatred." Utter and complete nonsense. First of all, YouTube -- with extremely rare exceptions -- simply removes videos upon receipt of facially valid DMCA notices, no questions asked, and no legal analysis performed. YouTube -- which receives a very large volume of DMCA notices -- doesn't evaluate the political content of videos when acting on infringement notices; it simply removes the videos. And do these people attacking YouTube seriously believe that a company whose parent was founded by Sergey Brin and Larry Page (both Jewish), and a music publishing company whose parent is run by Edgar Bronfman, Jr. (son of a former president of the World Jewish Congress), were motivated by anti-Israel bias or "Jew Hatred"? Seriously?

Moreover, defenders of the video are wrong on the law. Glick insists that the video is a "parody" and says:

Copyright experts we advised with before posting the song told us in no uncertain terms that we were within our rights to use the song because we did so in accordance with the Fair Use Doctrine. The Fair Use Doctrine, copied and pasted below from the US Copyright Office stipulates that it is legal and permissible to use copyrighted material under the fair use doctrine for purposes of parody.

Glick doesn't identify the "copyright experts" with whom she consulted, but I'd be surprised if anyone truly expert in US copyright law and fair use would advise, as Glick says, that Latma's use was "clearly lawful." She and others can call "We Con the World" a "parody" until they are blue in the face, but under the Supreme Court's opinion in Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994), it almost certainly isn't. Campbell distinguished between "parody" and "satire" as follows:

For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works. See, e. g., Fisher v. Dees, supra, at 437; MCA, Inc. v. Wilson, 677 F. 2d 180, 185 (CA2 1981). If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger. Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim's (or collective victims') imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.

(Footnotes omitted.) Or, put simply: a parody comments on the work itself; a satire uses the work to comment on something else. I think a court would most likely find that , under Campbell, the "We Con the World" video is a satire -- not a parody. It uses the "We are the World" composition to comment on the Gaza flotilla, "to get attention or to avoid the drudgery in working up something fresh"; any claim that it's actually commenting on the original song is weak at best. (It's not as if Israelis can't come up with catchy yet bellicose songs on their own; this ditty has been stuck in my mind since the 2006 Lebanon War.) The recent (still tentative) ruling in the Don Henley v. Chuck DeVore copyright suit is closely on point. There, Senate candidate DeVore (R-CA) took Henley's songs, and subbed in his own lyrics, which attacked Sen. Barbara Boxer (D) and President Obama (D). The court (again, tentatively), rejected DeVore's argument that the use of Henley's songs constituted parody, and concluded that the use of the entire compositions was not fair. (Campbell doesn't exactly say, "If it's a parody, it's fair use; if it's a satire, it isn't." But that's how such cases usually play out.)

Glick and others are right on one thing, however: it's hard for any copyright owner to effectively scrub the Web of all copies of an allegedly infringing work. Others have re-posted the Latma video, and it's going to be tough for Warner/Chappell to chase down every last copy.

Intra-libertarian IP war: Rush v. Rand Paul

As first reported in the Louisville Courier-Journal, the libertarian-minded Canadian band Rush is battling the libertarian-minded Kentucky Republican Senate candidate Rand Paul over the latter's use of Rush songs in his campaign. Rush's attorney Robert Farmer has provided me the cease-and-desist letter he sent to the campaign May 25, demanding that Paul "immediately stop all use of Rush’s music and remove all references to Rush and their music in all campaign materials." Farmer's letter makes claims regarding three separate uses of Rush's songs by the campaign, each of which needs to be analyzed separately, and which I'll address in turn:

1) Use of songs in videos/ads. I haven't seen the videos (the one YouTube video referenced in the letter has been removed), so I'm reluctant to say for sure whether the uses at issue are infringing. But the general rule is that to incorporate music into an advertisement, one needs a license from the owner of both the sound recording (the record label), and the musical composition (the music publisher) -- which Farmer's letter certainly suggests the campaign lacked. If the campaign simply used Rush songs as the soundtrack for its videos/ads, it's unlikely it would have a successful fair use defense. Rush's claim here is likely valid.

2) Quoting from a song in a speech. Farmer's letter demands that Paul stop quoting lines from Rush songs in his campaign speeches. I don't know how extensive such quotations were. But let's assume they were just a few lines. If that is the case, it's hard to imagine any court would consider the use of such brief quotations in a non-commercial context anything other than fair uses. This would likely be a very weak claim.

3) Playing of songs at campaign events. This to me is the most interesting of Rush's claims. Normally, to play a song at an event, a campaign either needs to ensure that the venue has a public performance license, typically obtained from ASCAP, BMI, and SESAC, or it can obtain one itself. (When I worked on the McCain presidential campaign, we had ASCAP and BMI licenses.) Such licenses give the licensee permission to play any of the millions of songs in the PROs' catalogs.

"The Spirit of Radio," the song referenced in Farmer's letter, is licensed for public performance through SESAC. But what's interesting is Farmer's contention in his letter that "The public performance of Rush’s music is not licensed for political purposes: any public venue which allows such use is in breach of its public performance license and also liable for copyright infringement." I've looked at SESAC's licenses, and there's simply no exclusion for political uses (nor is there in ASCAP or BMI's). When I asked Farmer via email to explain his position, he was reluctant to go into much detail, but did tell me this:

Keep in mind that there is a chain of rights issue with the licenses issued by performing rights societies – they can only issue licenses for the rights they have obtained from the writer/publisher and subject to any limitations or exclusions.

In other words, Farmer is suggesting that the license that the writers/composers of Rush's songs issued to SESAC specifically excluded political uses. I haven't seen the agreement between those writers/composers and SESAC, so I can't say that he's wrong. But I can say that I've never heard of any contract with a PRO containing such an exclusion, and neither had several other copyright attorneys I asked.

But let's assume the songwriters/composers of Rush's songs actually did have such an exclusion in their contracts with SESAC. Farmer is correct: SESAC can't grant rights it doesn't have. So if SESAC couldn't grant rights (either to the venue or the campaign) for political uses, then those uses would indeed be infringing (though the venue or campaign might then have a claim against SESAC for misrepresenting that it had sufficient rights to allow them to publicly perform the songs). Of course, if neither the venue nor the campaign had a SESAC license, then the campaign is simply outta luck.

So what does the Paul campaign have to say about all this? Not much. The campaign has not responded to an email I sent this morning seeking comment. Farmer told me yesterday that the campaign had not responded to his letter. And Paul's campaign manager would only tell the Courier-Journal this:

The background music Dr. Paul has played at events is a non-issue. The issues that matter in this campaign are cutting out-of-control deficits, repealing Obama Care and opposing cap and trade.

Well, I'm sure the campaign would rather focus on subjects other than music licensing. But if it continues its current practices, especially with regard to ads and videos, it may not have much choice in the matter.

Tentative ruling favors Henley over DeVore on copyright claims, rejecting 'parody' argument

According to a report on KTTV's web site, federal judge James Selna has tentatively ruled for Don Henley over Senate candidate Chuck DeVore (R) on his copyright claims, rejecting DeVore's arguments that his campaign videos that took Henley's "The Boys of Summer" and "All She Wants to do is Dance" and substituted new lyrics attacking Sen. Barbara Boxer (D-CA) and President Obama were fair use "parodies." Update: Here's the tentative ruling. According to the Fox station's report:

Selna [tentatively] ruled that DeVore's case for fair use is stronger for "The Hope of November" because he uses Henley's song to parody what he contends is Henley's support for liberal causes, but it fails because it primarily focuses on criticizing Obama.

The judge said DeVore's case is much weaker for "All She Wants to Do Is Tax," because the lyrics have nothing to do with Henley. Selna said it more closely resembles satire, as opposed to parody, and the standard for using such material without paying for it is higher for satire than it is for parody.

***

DeVore attorney Chris Arledge argued that the judge's ruling, if it stands, would send a chilling effect on free speech by politicians because it would make all political speech "commercial speech."

While the tentative went for Henley on his copyright claim, KTTV's report says Selna sided with DeVore on Henley's Lanham Act claim, which was premised on the allegation that the use of his songs falsely implied that the liberal singer had endorsed the conservative Republican's campaign. (Didn't someone predict exactly this result?)

Again, keep in mind that Judge Selna's ruling is tentative, and he is free to change his mind before issuing a final ruling.
Tentative Summary Judgment Ruling in Henley v. DeVore

Henley, DeVore file reply briefs in 'parody' battle

Don Henley and Chuck DeVore have filed their respective summary judgment reply briefs in the copyright and Lanham Act suit over DeVore's campaign videos that took Henley's "The Boys of Summer" and "All She Wants to do is Dance" and substituted new lyrics attacking Sen. Barbara Boxer (D-CA) and President Obama. Here's Henley's brief and DeVore's. Again, the focus in the briefs is whether, under Campbell v. Acuff-Rose, the videos are fair use parodies that target the songs themselves, or infringing satires that merely use the works to comment on something else. As I've said before, I think DeVore faces a steep uphill battle to prevail on this point, given the facts and the existing law, but he has a much stronger argument on Henley's Lanham Act claim.

Kudos to both sides for what I thought were very well-argued briefs. The hearing on the cross motions for summary judgment is set before Judge James Selna in Santa Ana June 1 in this case that will help set the rules of the road for campaign uses of third-party material.

Viacom's friends lend support in YouTube case

Two groups supporting major copyright owners have filed amicus briefs in support of Viacom in its copyright suit against Google and YouTube:

The first, filed on behalf of a coalition including ASCAP, BMI, SESAC, Disney, NBC Universal, Warner Bros., and others, makes three main points:

1. Congress enacted the DMCA to combat -- not protect -- copyright infringement;
2. The DMCA Section 512(c) safe harbor does not provide a defense to inducement liability; and
3. Section 512(c)(1)(B)'s language denying the safe harbor where a site derives "a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity," should be interpreted consistent with the "right and ability to control" standard from common law vicarious liability.

The second, from the free market-oriented Washington Legal Foundation, focuses on the legislative history and purpose of the DMCA's safe harbors, arguing that the law mandates a "shared responsibility" among copyright owners and online service providers in addressing infringement, and does not relieve sites like YouTube of all obligations to fight illegal use of others' works, especially while profiting from it.

Disclosure: I work at NBCU and have written an article for WLF, though I was not involved in filing either of these briefs.

DeVore, Henley file oppositions to summary judgment motions; Henley shocker: I'm no 'liberal'

Don Henley and Chuck DeVore have each filed their oppositions to the other side's summary judgment motions in their battle over DeVore's campaign videos that took "The Boys of Summer" and "All She Wants to do is Dance" and substituted new lyrics attacking Sen. Barbara Boxer (D-CA) and President Obama. Here's DeVore's brief, and Henley's. And here's DeVore's motion, and Henley's.

The briefs again focus on DeVore's fair use defense, and specifically whether the videos are protected "parodies" or infringing "satires." For reasons I've previously stated, I believe these videos fall on the "satire" side of the divide, and that the court is unlikely to find DeVore's uses fair. And nothing in this new round of briefing alters my prediction on that point. A few highlights from the briefs:

• DeVore does a good job of minimizing (if not eliminating) the importance of Henley's "parody" expert, Mark Rose, an English professor at UCSB. I agree with DeVore that Rose's opinion that the videos are not parodies really isn't relevant here. Campbell v. Acuff-Rose Music and its progeny define "parody" for legal purposes, and the law is clear that the determination of parody vel non is a legal question for the judge. See, e.g., Mattel v. Walking Mountain Productions, 353 F.3d 792 (2003) ("every court to address the issue whether a defendant's work qualifies as a parody has treated this question as one of law to be decided by the court"). I just don't think an expert was necessary on this point.

• DeVore argues that the fourth factor (market harm) favors him. Because Henley has chosen not to license his songs for any purpose, so the argument goes, there is no market to be harmed. I'm actually not sure which way Henley's decision not to license his songs at all cuts. The "no actual market, so no harm" argument has appeal. But it was pretty soundly rejected by the Second Circuit in Salinger v. Random House, 811 F.2d 90 (2d Cir. 1987) ("the need to assess the effect on the market for Salinger's letters is not lessened by the fact that their author has disavowed any intention to publish them during his life-time.... He is entitled to protect his opportunity to sell his letters, an opportunity estimated by his literary agent to have a current value in excess of $500,000."). (I acknowledge that, unlike this case, Salinger involved unpublished works, which weighs strongly against fair use.)

• On Henley's Lanham Act claim, I thought DeVore's brief was very persuasive both legally, and factually, in picking apart Henley's expert's survey purporting to show a large number of people confused into thinking that Henley supports DeVore's Senate campaign.

• One of DeVore's arguments has been that he chose to "parody" Henley's songs because of the performer's well-known association with liberal and Democratic causes, and that this choice weighs in favor of fair use. I thought Henley's brief persuasively rebutted this point. Notably, just last week the Second Circuit in Salinger v. Colting upheld the district court's conclusion that "Campbell and its progeny define the limits of parody to include only those elements which criticize or comment upon the source author's works, rather than the author himself." I just don't find it plausible that DeVore's videos comment on the works themselves (as opposed to commenting on Boxer and Obama). (Henley also says that he does not consider himself a "liberal" and in fact has publicly voiced support for Sen. John McCain (R). Br. at 9. Who knew?)

Just a last point on the Lanham Act arguments, which I've given somewhat short shrift. I predict DeVore will prevail on this claim, and I think he should. And I think copyright owners should in fact be rooting for DeVore here. For if Henley prevails, it will in fact harm copyright owners' ability to license their works. Here's a hypo: say a music publisher owns rights to a song, and licenses it (via ASCAP or BMI) for public performances in tens of thousands of venues. The owner of a bar or restaurant or dance hall should be confident that he now has the right to play the song, free of claims. He should not have to worry that one of the performers (who likely doesn't even own the copyright) can come along and say, "Hey -- I'm strongly identified with my song. And I strongly dislike your restaurant, and don't want to be 'associated' with it. You're violating my rights under the Lanham Act, and my right of publicity as well. Pay up." That's not materially different from what Henley is claiming here, and, if he's successful with his argument, it could really gum up the works in licensing. And that's about the last thing the already overly complicated world of music licensing needs right now. Dastar warned against "a species of mutant copyright law that limits the public's federal right to copy and to use expired copyrights" (internal quotation marks omitted); I think that admonition applies with equal force to uses of copyrights that are either licensed or fair.

Reply briefs are due May 17, and a hearing is set before Judge James Selna in Santa Ana June 1.

UMG files Ninth Circuit brief in Veoh case

User-generated web video site Veoh has filed for bankruptcy, but its copyright litigation with Universal Music Group lives on. Last September, Judge Howard Matz granted Veoh's motion for summary judgment, finding that the site qualified for the safe harbor found at Section 512(c) of the DMCA. And now, UMG has filed its brief in the Ninth Circuit, arguing that Matz got just about everything wrong. From UMG's summary of argument:

Properly construed, the DMCA provides no protection for Veoh for several reasons. First, Veoh’s copyright infringement liability is not by reason of the “storage” of material at the direction of a user but instead arises from Veoh’s further and separate acts of reproducing, displaying, publicly performing, and distributing via downloads the material that is uploaded by its users. The District Court erred in holding to the contrary when it denied UMG’s motion for partial summary judgment.

Second, even assuming Veoh’s activities meet the threshold qualification for protection under Section 512(c), the District Court erred in granting Veoh’s motion for summary judgment that it satisfied the remaining elements of the “safe harbor.” Specifically, the District Court erred when it held that there were no genuine issues of fact that Veoh lacked actual knowledge of the infringement on its service and awareness of any facts and circumstances from which infringing activity was apparent. Further, the court below improperly found no genuine issues of fact existed as to whether Veoh obtained direct financial benefits from the infringement on its service when it had the right and ability to control such activity, including through the display of paid advertising driven by infringing content.

The District Court’s summary judgment rulings turn copyright law on its head in the context of the internet. If they are not reversed, activities that clearly give rise to liability in any other context would be permitted on the internet. The District Court’s opinion absolves Veoh of responsibility for conduct as, or arguably more, egregious than that which led to liability for prior services such as Napster, Grokster, or Kazaa. Napster, Grokster, and Kazaa offered indices that helped their users find infringing content and obtain it from other users. But they never stored the infringing files themselves nor directly engaged in the distribution of infringing content, as Veoh does.

Moreover, the District Court’s opinion upends the careful balance of interests between service providers and copyright holders that Congress sought to establish in the DMCA. Under the law as construed by the District Court, it is the responsibility of every copyright holder to constantly monitor and notify Veoh and all of the other internet sites that massively infringe copyrights and profit from such infringement – otherwise these sites can display infringing material with abandon. In the wake of the District Court’s opinion, businesses like Veoh will rationally eschew licenses from content companies and avoid implementing effective measures on their websites that can stop or limit infringement.

Corporate Counsel has additional detail on UMG's brief. And here is my earlier take on the District Court's ruling.

Porn Purveyors Post Piracy PSAs

The porn industry has a serious piracy problem. And its trade association is doing something about it. The Free Speech Coalition has launched an "Anti-Piracy Action Program," which includes use of automated content ID technology from Vobile. And it has posted to YouTube two public service announcements featuring Ron Jeremy and other porn stars speaking about the harm piracy does to their business -- ads not too different from the MPAA spots that had grips, set painters, and other below-the-line workers speaking about the threat to their jobs from illegal downloads. Enjoy:

Postcast on Viacom v. YouTube case

A few weeks ago I participated in a podcast with Prof. Andrew Beckerman-Rodau of Suffolk University Law School about the Viacom v. YouTube copyright case. Here it is, available (for free) via iTunes. Lessons: podcasting, unlike blogging, doesn't allow you to go back and triple-check everything before hitting "publish" (though, thankfully, I don't think I made any noticeable errors). And I say "sort of" too much.

District of Massachusetts may amend local rule to permit courtroom broadcasts

Last April, the First Circuit barred the live webcast of proceedings in the major record labels' copyright case against Joel Tenenbaum. The Court of Appeals' decision rested not on the wisdom of courtroom broadcasts, but on its interpretation of District of Massachusetts Local Rule 83.3, which addresses "recording, or mak[ing] any broadcast" from a courtroom. While he concurred in the decision overturning a previous order by Judge Nancy Gertner permitting the webcast, Judge Kermit Lipez urged that the rule prohibiting courtroom broadcasts "be reexamined promptly."

The District of Massachusetts has now taken up Judge Lipez's suggestion, and on February 17 distributed for public comment a proposed new Rule 83.3, which would allow any judge to permit "the photographing, recording, or transmission of any civil proceeding" in his or her courtroom, "after notice and an opportunity to interested persons or entities to be heard."
District of Massachusetts proposed new L.R. 83.3

The new proposed Rule 83.3 does include a number of restrictions, including prohibitions on photographing jurors and sidebar conferences, and it grants any witness or party the right to opt out of allowing "photographing, recording, or transmission of that person’s recognizable images." The proposal also provides that judges "may impose such limitations and restrictions on the use or further dissemination of recordings or images." That power (found in proposed Rule 83.3(d)(2)) concerns me; once a recording has been lawfully made, it seems awfully invasive of First Amendment interests to allow a judge to unilaterally decide how that recording may be "use[d]" or "disseminate[d]." Could a court order that a webcast be shown only in its full, unedited state? Or only played on TV, but not on that pesky Internet? Would its orders bind others who might take the raw footage, and edit it for their own purposes?

But overall, the new rule would be a giant step forward, and I hope it is adopted. I don't know the process for the promulgation of new rules in the District of Massachusetts, but the Court is inviting public comment on the proposed amendment; comments are due April 16 (but, unfortunately, seem to be accepted only by snail mail).

Disclosure: I signed on to an amicus brief in the First Circuit in support of the webcast.

Cabell v. Zimmerman: The case of the phantom Section 512(f) claim

I hadn't intended to blog about this decision because it's so bizarre. But it's gotten some mainstream attention, and I wanted to point out what makes it so bizarre, and to correct the record.

Plaintiff Robert Cabell allegedly owns the copyright in a video called "Pretty Faces." Defendant is the former president of Actors Equity Association, the labor union for stage actors. AEA apparently enforces copyrights on behalf of its members, and in that capacity sent a DMCA takedown notice to YouTube regarding Cabell's "Pretty Faces" video. But it turns out AEA made a mistake; it admitted this and apologized in an email to Cabell. Cabell, upset about the improper takedown, sued, first in state court (unsuccessfully) and then in federal court.

On March 12, SDNY Judge Colleen McMahon granted Defendant's motion to dismiss. The decision features two holdings: 1) it is not copyright infringement to interfere with a third party's exploitation of the plaintiff's work; and 2) a claim under DMCA Section 512(f) over an improper takedown notice requires "actual knowledge" of the notice's lack of merit; mere negligence is insufficient to sustain a cause of action. Both of those holdings are well supported by the statute and case law.

But here's the bizarre part: I'm 99% sure that Cabell's complaint did not even include a Section 512(f) claim. I say only "99% sure" because I have not seen the complaint itself; for some reason it's not on PACER. But I went and read the motion to dismiss, opposition, and reply, all of which include extensive discussion of Cabell's apparently six causes of action. Those include copyright infringement, and a variety of New York state-law torts, including libel, "lost business opportunity," "unlawful seizure of property," and intentional interference with contract. But nowhere in any of the three briefs is there any mention of 17 U.S.C. § 512(f), and in fact Judge McMahon's listing of the causes of action on page 3 of her order does not mention that section.

What Judge McMahon appears to have done in her order is say, in essence: "The gravamen of Cabell's complaint is that AEA sent an improper takedown notice. The statute that addresses such a cause of action is Section 512(f) of the DMCA. But, even assuming that Cabell had brought a claim under Section 512(f), he would still lose because he alleged only negligence on AEA's part, not intentional misrepresentation."

Lastly, a brief note about improper takedown notices. Given the fallibility of human beings, and the vast amounts of infringement on the web, they are bound to occur. Nobody is perfect. (Though AEA's claim of one known mistake among "100,000's" of takedowns, if true, ain't shabby.) But there are quick, constructive ways to deal with the problem, and slow, ineffective, and expensive ways. Cabell chose the latter. As the email from AEA cited at page 8 of the order demonstrates, the organization quickly admitted its mistake and apologized. (Though it's unclear whether it actually retracted its takedown notice, which it could have and should have done.) In a rational, reasonable world, that would have been the end of the matter. Instead, Cabell brought not one, but two separate lawsuits, under deeply flawed legal theories. Wouldn't it have made sense just to accept AEA's apology and move on?

Don't forget the Premier League v. YouTube case

Lost in all the attention paid to the briefs filed last week by Viacom and YouTube is the fact that there is a separate, though similar, copyright case pending against YouTube in the same court, filed by the English Premier soccer league and a number of other sports leagues and music publishers. Those plaintiffs -- who are also seeking class action status -- filed their own brief, asking the court to rule that Section 512 of the DMCA does not provide a safe harbor to YouTube. While the Premier League's brief is similar to Viacom's, there are differences, including the fact that these plaintiffs -- unlike Viacom -- are alleging infringement post-May 2008. See Br. at 3 n.1. Also keep in mind that YouTube's much-discussed evidence that Viacom itself uploaded videos to YouTube does not affect these other plaintiffs, at least not directly. (YouTube filed the same summary judgment motion against both Viacom and the Premier League plaintiffs.)

Separately, the Premier League plaintiffs' motion for class certification is due March 26, YouTube's opposition May 7, and plaintiffs' reply June 11. Those papers should be unsealed about 10 days after each filing.

Here's what I believe is a full list of the plaintiffs in this case:

• The Music Force LLC
• Cal IV Entertainment, LLC
• Cherry Lane Music Publishing Company, Inc.
• The Football Association Premier League Limited
• Robert Tur
• National Music Publishers' Association
• The Rodgers & Hammerstein Organization
• Edward B. Marks Music Company
• Freddy Bienstock Music Company
• Alley Music Corporation
• X-Ray Dog Music, Inc.
• Federation Francaise De Tennis
• The Scottish Premier League Limited
• The Music Force Media Group LLC
• Sin-Drome Records, Ltd.
• Murbo Music Publishing, Inc.
• Bourne Co.

The Viacom v. YouTube briefs: after the dust has settled

I've been swamped and haven't been able to give the summary judgment briefs in the Viacom v. YouTube case the attention they deserve. I just wanted to make a few points that I think have gotten lost among all of the attention (justifiably) paid to the loads of interesting factual revelations gathered in the course of three years of intense discovery. (For good examples of those, see here, here, here, here, here, here, and here.)

Remember the procedural posture
The parties have filed separate cross-motions for summary judgment. They will each get the chance to file briefs in opposition to the other side's opening brief, and then reply briefs in support of their motions. In other words, though it's tempting to view the two briefs unsealed last week as arguments against each other, they really aren't. In fact, they were filed simultaneously, so they couldn't respond to each other. Both sides made lots of factual accusations and legal arguments. But we have not yet seen direct responses from the other side to any of them. For that, we will need to wait until about May 10, when opposition briefs will be unsealed. Just remember: arguments usually sound their best before the other side has had the chance to tear into them.

It all comes down to specificity
If there's one legal issue that I believe will determine the outcome of the case, it's this: How specific must YouTube's knowledge of infringement be in order for it to fall outside the safe harbor provided by Section 512(c) of the DMCA? In its motion, Viacom provided overwhelming evidence that YouTube knew about infringing videos on its site. Some of this knowledge was general. As YouTube co-founder Steve Chen said in a now-infamous 2005 email to a VC at Sequoia Capital, "you can find truckloads of ... copyrighted content" on YouTube. Viacom Motion at 7. Or, as Chad Hurley emailed, "aaahhh, the site is starting to get out of control with copyrighted material." Id. at 8. But Viacom has evidence of YouTube's knowledge of specific infringements as well. See id. at 25 n. 15 (citing Statement of Undisputed Facts Paras. 32, 59, 69, 105, 110, 116-17, 122, 130, 132, 165). After all, where does one get knowledge of "truckloads" of infringements if not from knowledge of (lots of) specific infringing videos? (YouTube flatly denies that it had knowledge of specific infringing videos. See YouTube Motion at 32.)

So what's the law on specificity of knowledge? Start with the statute. I think there's a common misconception that the DMCA is only about takedown notices, and the knowledge of infringement they impart to the host. That's wrong. Section 512(c) of the DMCA actually identifies two triggers for the obligation of the host to remove the subject material (if it wants to maintain the safe harbor). First is actual knowledge of infringement (which can be obtained through receipt of a facially valid takedown notice pursuant to Section 512(c)(3)). Id. § 512(c)(1)(A)(i). Second is where the host becomes "aware of facts or circumstances from which infringing activity is apparent." Id. § 512(c)(1)(A)(ii). This latter situation is known as "red flag" infringement; the idea is that the host can't claim the safe harbor if red flags are being waved in its face, suggesting the obvious presence of infringing activity. Viacom argues that YouTube had red flag infringement -- in spades:

As the undisputed facts set out above make clear, to say there were red flags everywhere on YouTube is a gross understatement. Defendants were not merely aware of red flags signaling rampant infringement; they rallied around them. Their own documents are contemporaneous admissions that they knew infringing videos generated 54 to 80 percent of the traffic on YouTube that YouTube's business plan intentionally rested on such infringement-driven traffic. This is exactly the kind of intentional guilt the Supreme Court condemned in Grokster. And Grokster liability inherently defeats the DMCA:

inducement liability [under Grokster] and the Digital Millennium Copyright Act safe harbors are inherently contradictory. Inducement liability is based on active bad faith conduct aimed at promoting inhngement; the statutory safe harbors are based on passive good faith conduct aimed at operating a legitimate internet business. Here, as discussed supra, Defendants are liable for inducement [under Grokster]. There is no safe harbor for such conduct.

Fung, slip op. at 43; accord Usenet, 633 F. Supp. 2d at 142 ("if Defendants . . . encouraged or fostered . . . infringement, they would be ineligible for the DMCA's safe harbor provisions").

Viacom Motion at 50-51.

YouTube's argument to the contrary is at 32-38 of its brief. And it bolsters its case with its contention that Viacom's "widespread use use YouTube to market and promote [its] content...defeats any notion that the presence of their material on YouTube creates a fact or circumstance from which infringing activity is apparent." YouTube Motion at 39. Very few cases have probed the boundaries of red flag knowledge of infringement; as far as I'm aware, Columbia v. Fung is the only case where a court has actually found that red flag knowledge existed. On this point, YouTube relies heavily on UMG v. Veoh. Both cases are from the Central District of California; neither is binding on Judge Stanton. Viacom also bolsters its case with reference to Grokster, which it cites for the proposition that the Ninth Circuit's requirement of "specific knowledge of infringement" for inducement liability to attach was "error." Viacom motion at 24-25.

The concession that might win the case for Viacom
For some time, I've been telling anyone who asked me about this case that the biggest obstacle for Viacom isn't the statute or the caselaw. Rather, it's the fact that YouTube has become so wildly popular, and such an established part of the entertainment, social, and political landscape. And relatedly, there are no doubt millions of perfectly non-infringing videos on the site. Given those facts on the ground, it's difficult to imagine any federal district judge saying, in essence, "YouTube is illegal. And I hereby order you to shut it down."

But Viacom gave Judge Stanton an easy out in footnote 1 of its brief. In that footnote, Viacom says it is not pursuing any claim based on YouTube's activities after May 2008, when, according to Viacom, YouTube began filtering for Viacom content without requiring Viacom to license its videos. While Viacom is careful not to formally concede that YouTube's post-May 2008 activities are not infringing, it's effectively letting YouTube off the hook as of that date. I think this was a very smart move on Viacom's part. Given Viacom's concession/limitation of claims, Judge Stanton can now write an opinion that says something like this:

YouTube was once a very bad actor. It had 'truckloads' -- YouTube's word -- of infringing videos on its site. And those trucks flew red flags as they drove right by YouTube's top execs. YouTube knew that its users came to the site largely to view infringing videos. And Google bought YouTube knowing full well about all the infringement, and in fact hoped to profit from it. Therefore, YouTube cannot find safe harbor in Section 512(c) of the DMCA, and must now pay Viacom $734,916,732.18 (which I'm sure Sergey and Larry can find hiding between the cushions of their respective couches).

However, Viacom effectively concedes in footnote 1 of its motion that YouTube cleaned up its act by May 2008, and has indeed taken affirmative steps to cleanse itself of infringements. Therefore, I decline to impose damages for any infringements that occurred after that date, and decline to issue any injunction against YouTube.

That way Judge Stanton could make clear that YouTube may not profit by tolerating infringement, without killing a hugely popular site that has plenty of legitimate uses.