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Abstract
Plus ça change, plus c'est la même chose Footnote1
With the advent of the Internet, content is available at almost all times in almost all formats. The scope of what may be used is determined by contract, a fact that has not been appreciated well by all parties. This is not a new phenomenon. It has been going on since parties have licensed rights to one another for dramatic plays and motion pictures. Yet, amazingly, it continues to be an issue with ‘new uses’ and the ‘new technology.’ This paper will look at disputes related to television, motion pictures, newspapers, musical compositions, magazine articles, and books. It asks what is a ‘revision,’ what is a ‘new market,’ and when is a new clause or contract required? With ‘eBooks’ not being considered ‘in book form’ as was held in Random House v. Rosetta Books, contract language is of utmost importance to all parties in order to know who has which rights and who may commercialize content.
Notes
Attributed to Jean-Baptiste Alphonse Karr (November 24, 1808 – September 29, 1890) in the January 1849 issue of his journal, Les Guêpes (‘The Wasps’). Literally, ‘The more it changes, the more it's the same thing.’ See, Cambridge Dictionaries Online, available at: http://dictionary.cambridge.org/dictionary/british/plus-ca-change-plus-c-est-la-meme-chose. (Last visited on August 10, 2011).
See Burrow – Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) (holding that a photograph was a ‘writing of an author’ and, therefore, the proper subject of copyright protection).
See White – Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1 (1908) (holding that a player piano roll was not a ‘copy’ of the underlying embodied musical composition).
See Rosette v. Rainbo Mfg, Corp., 354 F. Supp. 1183 (S.D.N.Y. 1973), aff'd, 546 F.2d 461 (2d Cir. 1976) (holding that the distribution of a sound recording was not a ‘publication’ of the underlying musical composition, either investing one with copyright or divesting one of copyright). But see La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir.), cert. denied, 516 U.S. 927 (1995) (rejecting Rosette and holding that the sale of sound recordings was the act of ‘publication’ of the underlying musical composition). In November of 1997, Congress endorsed the holding in Rosette and overruled La Cienega by enacting Section 303(b) of the Copyright Act of 1976, which provides that the sale of sound recordings prior to January 1, 1978 – the effective date of the Copyright Act of 1976 – does not constitute a publication of the underlying musical composition. See 17 U.S.C. § 303(b). In 2010, Congress further amended Section 303(b) by striking ‘the musical work’ and inserting ‘any musical work, dramatic work, or literary work’. See S.3689 – Copyright Cleanup, Clarification, and Corrections Act of 2010. See also 17 U.S.C. § 303(b). For a discussion of the issue of publication under the 1909 Act, see generally, Landau, Michael B. 2000. ‘Publication,’ sound recordings, and the Copyright Act of 1909: still crazy after all these years. Vanderbilt Journal of Entertainment Law & Practice 2, no. 29.
See Bartsch v. Metro-Goldwyn-Mayer, Inc., 270 F. Supp. 896 (S.D.N.Y. 1967). In Bartsch, the Southern District of New York held that there could be no recovery by the plaintiff for the television broadcast of a motion picture based upon his work since the 1930 conveyance of motion picture rights authorizing defendant to ‘project, transmit and otherwise reproduce certain musical play or any adaptation of version thereof visually and audibly by the act of cinematography of any process analogous thereto’ transferred television rights).
See Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417 (1983) (holding that Sony was not liable for contributory infringement for the manufacture and sale of the Betamax videotape recorder).
The Audio Home Recording Act of 1992 was enacted to resolve a dispute between the record companies and the manufacturers of digital audio recorders and digital audio recording media. It provided for authorized home audiotaping for the first time. See 17 U.S.C. § 1001 et seq.
See Metro-Goldwyn-Mayer Studios, Inc v. Grokster Ltd., 545 U.S. 913, 125 S.Ct. 2764 (2005) (holding Grokster liable for active inducement of copyright infringement); see also A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2002) (holding that the uploading and downloading of digital music files was copyright infringement; the case was remanded for the purpose of fashioning a more narrow injunction); see also UMG Recordings, Inc. v. mp3.com, 92 F. Supp. 349 (S.D.N.Y. 2000) (holding that the copying and storage of copyrighted music files by mp3.com was infringement, even though the end users actually owned copies of the recordings); Recording Industry Ass'n of America v. Diamond Multimedia Systems, Inc., 29 F. Supp.2d 624 (C.D. Cal. 1998) (holding that the manufacture of sale of a portable device for storing mp3 music files was not contributory infringement; also holding that a personal computer was not a ‘digital audio recording device’ under the Audio Home Recording Act).
See Clean Flicks of Colorado, LLC v. Soderbergh, 433 F.Supp.2d 1236 (D. Colo. 2006) (holding that the editing of films to make them more ‘family friendly’ by removing sex, violence, and language was infringement.)
See Random House, Inc. v. Rosetta Books LLC, 150 F.Supp.2d 613 (S.D.N.Y. 2001), aff'd, 283 F.3d 490 (2d Cir. 2002) (holding that certain e-Books were not ‘in book form’ under the standard Random House contract, and therefore the publication of them did not infringe.) The Random House case is discussed, infra.
See United States v. American Society of Composers, Authors, and Publishers (‘ASCAP’), 627 F.3d 64 (2d Cir. 2010) (holding that the downloading of a digital music file over the Internet does not constitute a ‘public performance’ of the work embodied in that file).
See Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701 (9th Cir. 2007), amended on reh'g, Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir.2007) (holding that the reproductions of ‘thumbnail’ sized images in search-engine results on a web page was protected by fair use); see also Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir.), cert. denied, __U.S.__, 131 S.Ct. 647 (2010) (running listings and advertisements for counterfeit ‘Tiffany’ merchandise was not trademark infringement).
See Los Angeles Times, Amazon: consumers buying more Kindle e-books than print books, May 19, 2011, available at http://latimesblogs.latimes.com/technology/2011/05/amazon-says-it-now-sells-more-kindle-ebooks-than-print-books.html. Last visited 16 July 2011.
Most of the digital content is free. However, some publications have charged or experimented with a partially-for-free/partially-for-pay system. See Pérez-Peña, Richard. 2010. The Times to charge for frequent access to its web site, January 20, 2010. Starting in January 2011, a visitor to NYTimes.com will be allowed to view a certain number of articles free each month; to read more, the reader must pay a flat fee for unlimited access. Subscribers to the print newspaper, even those who subscribe only to the Sunday paper, will receive full access to the site without any additional charge. For the full story, see http://www.nytimes.com/2010/01/21/business/media/21times.html
See, Neuburger, Jeffrey D. 2011. New media, technology and the law: a summary of key legal developments affecting technology and emerging business models, 1034 PLI/Pat 193, 201 – 02 (discussing copyright and new forms of distribution); see generally, Kaufman, Kenneth M. 2011. Copyright and Content Licensing, 1035 PLI/Pat 377.
Harper Bros v. Klaw, 232 F. 609 (S.D.N.Y. 1916).
Idem at 611-12.
At the time that K & E wanted to produce their motion picture, all motion pictures were silent films. ‘Talkies’ or motion pictures with synchronized sound came about later. In 1926, Warner Brothers released ‘Don Juan’, the first motion picture to have a pre-recorded score and synchronized sound effects. <http://www.xroads.virginia.edu/~ug00/3on1/movies/talkies.html>. Warner Brothers' risky investment Western Electric in the ‘Vitaphone’ sound system brought huge profits at the box-office with this landmark talkie. The Jazz Singer success will in large part responsible for transforming Warner Brothers into Hollywood's hottest film factory. The commercialization of sound-on-film, and the transformation of the industry from silent films to talkies became a reality with the success of this film. Although it was not the first Vitaphone (sound-on-disk) feature, it was the first feature-length Hollywood ‘talkie’ film in which spoken dialogue was used as part of the dramatic action. It is, however, only part-talkie (25%) with sound-synchronized, vocal musical numbers and accompaniment. The first ‘all-talking’ (or all-dialogue) feature-length picture was Warners' experimental entry – the gangster film Lights of New York (1928). http://www.filmsite.org/jazz.html, last visited 15 August 2011.
Idem.
Idem at 612.
Manners v. Morosco, 252 U.S. 317 (1920)
Idem at 326
Idem.
Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1988).
Idem.
Idem at 853 (emphasis added).
Idem.
Idem.
Idem.
Idem at 854.
‘The parties both acknowledge this fact and it is noted in the order of the district judge. Thus, in 1969 – long before the market for videocassettes burgeoned – Cohen could not have assumed that the public would have free and virtually unlimited access to the film in which the composition was played; instead, he must have assumed that viewer access to the film ‘Medium Cool’ would be largely controlled by theatres and networks. By the same token, the original licensee could not have bargained for, or paid for, the rights associated with videocassette reproduction' Idem. This is a strange conclusion. Even though VCRs were not invented for home use, they could have been covered by the license through the inclusion of ‘new use’ language, such as ‘as developed in the future.’
Platinum Record Co., Inc. v. Lucasfilm, Ltd., 556 F.Supp. 226 (D.N.J. 1983).
Lucasfilm, Ltd. and Rooney v. Columbia Pictures Industries, Inc., 538 F. Supp. 211 (S.D.N.Y. 1982), aff'd, 714 F.2d 117 (2d Cir. 1982), cert. denied, 460 U.S. 1084 (1983).
Idem at 227 (emphasis added). The language is similar to the forward-thinking language contained in Section 102(a) of the Copyright Act of 1976:
Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. (17 U.S.C. §102(a), emphasis added) | |||||
Idem at 227.
Rooney v. Columbia Pictures Industries, Inc., 538 F. Supp. 211 (S.D.N.Y. 1982), aff'd, 714 F.2d 117 (2d Cir. 1982), cert. denied, 460 U.S. 1084 (1983).
Idem at 229.
Idem at 228.
Idem at 223 (emphasis added).
Idem at 228. For a discussion of other motion picture/video cases, see Boosey & Hawkes Music Publishers, Ltd. V. Walt Disney Co., 145 F.3d 481 (2d Cir. 1998) (holding that the license included the distribution of videocassettes); Bloom v. Hearst Entertainment Inc., 33 F.3d 518, 524-25 (5th Cir. 1994) (holding that the grant of movie and television rights to a book encompassed the video rights); Rey v. Lafferty, 990 F.2d 1379, 1390, 91 (1st Cir. 1993) (holding that the license to portray Curious George in animations for ‘television viewing’ does not extend to the release of videocassettes). See also Nagano, Neil R. 1982. Past copyright licenses and the new video software medium. U.C.L.A. L. Rev. 29: 1160, 1184.
New York Times Co. v. Tasini, 533 U.S. 483, 121 S.Ct. 2381 (2001). For a discussion of Tasini's aftermath, see O'Rourke, Maureen A. 2003. Bargaining in the shadow of copyright law after Tasini. Case Western L. Rev. 53: 605; see also, Mtima, Lateef. 2004. Tasini and its progeny: the new exclusive right or fair use on the electronic publishing frontier? Fordham Intellectual Property, Media And Entertainment Law Journal 14: 369; Springer, Colby B. 2002. Ownership of electronic publishing rights in collective works: New York Times Co. v. Tasini. Santa Clara Computer and High Technology Law Journal 18: 341; Naini, Amir A. 2002. New York Times Co. v. Tasini. Berkeley Technology Law Journal 17: 9.
For a detailed discussion of the ‘works made for hire’ doctrine, and the cases leading to the resolution of the issue by the Supreme Court, see Landau, Michael B. 1990. Works made for hire after Community for Creative Non-Violence v. James Earl Reid: the need for statutory reform and the importance of contract. Cardozo Art and Entertainment Law Journal 9: 107.
Copyright ownership of the article would remain with the original author, and the most that the publisher could claim is an ‘implied license’ based on the intent and behavior of the parties. See, Effects Assocs., Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990).
17 U.S.C. § 204.
The New York Times has adopted a new policy under which the Times will only accept articles from freelance authors on the express written condition that the author transfers all rights to the work to the newspaper.
533 U.S. at 483.
Tasini v. New York Times Co., 972 F. Supp. 804, 807 (S.D.N.Y. 1997), reconsideration denied, 981 F. Supp. 841 (S.D.N.Y. 1997), rev'd, 206 F.3d 161 (2d Cir. 2000), aff'd, Tasini v. New York Times Co., 533 U.S. 483, 111 S. Ct. 2381 (2001).
The district court held that the legends on the checks were insufficient to fulfill the writing requirement necessary to have a transfer of rights in § 204. The court found that prior to Newsday's sending the checks to the authors, there was no evidence of any discussion of a transfer of electronic rights. Moreover, Newsday's statement that the legend was a confirmation of the parties' ‘understanding’ was found to be disingenuous because all of the authors denied that they ever intended to allow their articles to be used online. The court held that Newsday could not attempt to rely on its check legends ‘to give retroactive effect to supposed unspoken agreements’ concerning electronic rights in plaintiffs' articles. Idem.
972 F. Supp. at 807.
Section 201(c) of the Copyright Act of 1976 provides as follows: § 201 Ownership of Copyright (c) Contributions to Collective Works.—Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.
It should be noted that a mere change of medium does not necessarily mean that there cannot be a revision. Including each and every page of a newspaper on microfilm, in which the original arrangement of the stories is preserved for archival purposes, would probably qualify as a ‘revision.’ It is also important to note that the web-pages that contain the daily editions of newspapers were not at issue in this case. There is a strong argument that posting all of the contents of a newspaper on web-pages would also be a revision. Factors to be considered are whether each daily edition is a discreet unit, or whether all stories are put together in one huge database.
17 U.S.C.A § 201(c).
533 U.S. at 499-500.
17 U.S.C. §§ 106(1) – 106(6).
The Supreme Court, by finding that the new larger electronic compilations were not ‘revisions’ then – as did the Second Circuit – found it ‘unnecessary’ to address the issue of whether the privilege to make revisions may be transferred by the creator of the original collective work or compilation to third parties. That issue is still open.
Statutory damages and attorneys' fees are available if the copyright owner registers the work in a timely fashion. See 17 U.S.C. § 412.
Section 412 of the Copyright Act of 1976 provides as follows: §412 – Registration as prerequisite to certain remedies for infringement. In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney's fees, as provided by sections 504 and 505, shall be made for – (1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work. | |||||
533 U.S. at 492-93.
Greenberg v. National Geographic Soc., 244 F.3d 1267 (11th Cir. 2001), cert. denied, 534 U.S. 951, 122 S. Ct. 347 (2001); See, Gruber, Alan. 2002. Interpretation of ‘revision’ under the Copyright Act spells trouble for publishers: Greenberg v. National Geographic Society, Tulane Journal of Technology and Intellectual Property 14: 233; Livingston, Jennifer L. 2002. Digital ‘revision’: Greenberg v. National Geographic Society. University of Cincinnati Law Review 70: 1419.
Idem at 1275.
Idem at 1273.
Idem at 1274.
See Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 349, 111 S. Ct. 1282 (1991) (discussing the copyright standard for compilations – originality in the selection, arrangement, and coordination).
New York Times v. Tasini, 533 U.S. 483, 121 S. Ct. 2381 (2001).
Greenberg v. National Geographic Society, 497 F.3d 1213 (11th Cir. 2007), reh'g en banc, 533 F.3d 1244, (11th Cir. 2008), cert. denied, ___U.S.___, 129 S.Ct. 727 (2008).
Greenberg v. National Geographic Society, 533 F. 3d 1244, 1258, (11th Cir. 2008), cert. denied, ___U.S.___, 129 S.Ct. 727 (2008).
Idem at 1258 – 1281.
Faulkner v. National Geographic Enterprises Inc., 409 F.3d 26 (2d Cir. 2005), cert. denied, 546 U.S. 1076, 126 S. Ct. 833 (2005). Several of the other plaintiffs in Faulkner filed their own petitions for certiorari, which were also denied. See, for example, Psihoyos v. National Geographic Enterprises Inc., 546 U.S. 1076, 126 S. Ct. 833 (2005); Ward v. National Geographic Enterprises, Inc., 546 U.S. 1076, 126 S. Ct. 833 (2005).
Faulkner v. National Geographic Society, 220 F. Supp. 2d 237 (S.D. N.Y. 2002), aff'd, (2d Cir. 2005), cert. denied, 546 U.S. 1076, 126 S. Ct. 833 (2005); see generally, Hundstad, Allison. 2006. Faulkner v. National Geographic's effect on author's rights in electronic transfer. Richmond. J. L. & Tech. 13: 8; Sivalingam, Shan. 2006. Broadening the scope of electronic reproductions: the interpretation of Section 201(c) in Faulkner v. National Geographic Enterprises, Inc. Shidler J. L.Com. & Tech. 3: 1.
Auscape Intern. v. National Geographic Soc., 409 F. Supp. 2d 235 (S.D. N.Y. 2004), reconsideration denied, 2004 WL 1987242 (S.D.N.Y. 2004).
Auscape Int'l v. National Geographic Society, 409 F.Supp.2d 235, 240–241 (S.D.N.Y. 2004), reconsideration denied, 2004 WL 1987242 (S.D.N.Y. 2004).
Random House, Inc v. Rosetta Books LLC, 150 F. Supp.2d 613 (S.D.N.Y. 2001), aff'd, 283 F.3d 490 (2d Cir. 2002).
William Styron, Kurt Vonnegut, and Robert B. Parker are some of the authors with whom Rosetta Books contracted. The books included Sophie's Choice, The Confessions of Nat Turner, Slaughterhouse-Five, Breakfast of Champions, Cat's Cradle, Player Piano, and Promised Land. Idem at 614.
Idem at 615.
Idem.
Idem at 617. For a more detailed discussion of the case, see, Gillespie, Megan M. 2003. To whom does a new use belong?: An analysis of the new use doctrine and the protection it affords after Random House v. Rosetta Books. Wm. & Mary Bill Rts. J. 11: 809; see also, Seringhaus, Michael. 2009-2010. E-book transactions: Amazon ‘kindles’ the copy ownership debate. Yale Journal of Law & Technology 12: 147.
Idem at 615-16.
Idem.
Idem.
Idem at 621.
Idem.
Idem at 623.
Idem at 620.
http://www.digital-digest.com/news-63055-Sony-Movies-Taken-Off-Netflix-Due-To-Contract-Dispute.html, last visited on 14 July 2011: See also, http://www.thewrap.com/tv/article/judge-denies-disneys-motion-against-dish-network-27927, last visited 3 June 2011.
Netflix Instant is the streaming service of Netflix, not the disc-through-the-mail service.
Idem.
http://www.digital-digest.com/news-63055-Sony-Movies-Taken-Off-Netflix-Due-To-Contract-Dispute.html, last visited on 14 July 2011: See also, http://www.thewrap.com/tv/article/judge-denies-disneys-motion-against-dish-network-27927, last visited 3 June 2011.
Idem. The case is Viacom International Inc et al v. Cablevision Systems Corp et al, U.S. District Court, Southern District of New York, No. 11-04265.
Idem. Time Warner Cable has argued there is no difference between an iPad and a portable TV because the iPad app can only be watched at home. There are 32 channels on Time Warner's app, including Viacom Inc. (VIA/B)'s MTV, Discovery Communications Inc. (DISCA)'s Animal Planet and Comcast Corp.'s Bravo and CNBC. Sounds familiar, doesn't it?
See, Landry, Thomas K. 1996. Columbia-VLA Journal of Law & the Arts Roundtable on Electronic Rights. Columbia-VLA Journal of Law & the Arts 20: 605.