Tag Archive for Copyright

The “Godfather Works” and the Godfather of Soul – Contracts for Assignment and Licensing of Rights Often Require Predictions of the Future

March 9, 2012 articles Comments Off on The “Godfather Works” and the Godfather of Soul – Contracts for Assignment and Licensing of Rights Often Require Predictions of the Future

When authors and musicians grant movie and television rights to use their works, it is considered to be an emblem of their success, as they receive not only monetary gain but a big assist to their fame. As much as the artists agree to assignments of certain rights in the present, they must also anticipate how those rights could benefit them in the future. A contract that assigns all copyrights to a work without any reservation of rights by the artist could cut him or her out of a lucrative payday for products created from their original work in formats and on platforms that were not invented at the time of the assignment. Contracts granted in the 1960s by Mario Puzo for rights to use his book “The Godfather”, and by James Brown for rights to use his performance on a 1965 television program called “The TAMI Show” both generated litigation over the language used.

On February 12, 2012, Paramount Pictures sued the family of the author of the original novel, “The Godfather”, Mario Puzo, for copyright and trademark infringement. Mr. Puzo had assigned his entire copyright to the novel to Paramount in 1969, granting them, among other rights, “any and all copyrights therein and all rights now known and hereafter accruing therein and thereto, forever and throughout the world, together with the sole and exclusive right to use said work, in whole or part, in whatever manner the Purchaser (i.e., Paramount) may desire including, but not limited to, the sole and exclusive right: to make and cause to be made literary and dramatic and other versions and adaptations of every kind and character of said work or any part or parts thereof and/or any or all of the characters created therein … [and] to adapt, arrange, change, interpolate in, transpose, add to and subtract from said work to such extent as the Purchaser, in its sole discretion, may desire in connection with any use which the Purchaser may make of said work.”[1] Mr. Puzo did not reserve any rights to The Godfather, except the right to publish the original novel in book form. He did not reserve the right to publish a sequel based on the characters in the first novel.

The entire movie going public knows what happened next: the movie made of the book “The Godfather” went on to become one of the most popular, famous and well loved films of all time, in fact being rated by the Film Institute of America as the third best movie of all time.[2] Not only did the movie become famous, but the stylized script of the name “The Godfather” used on the novel and all the movies has come to identify the Godfather movies and book, and Paramount registered both the name and the distinctive design used for the logo as trademarks in the U.S. Patent and Trademark Office, comprising no fewer than twelve different registrations, referred to by Paramount as the “Godfather Marks”.[3] These trademarks have been used on not only the book and movies, but on a range of products marketed around the world. It could be argued that the trademark owned by Paramount that sprang from the name of the original novel is as valuable, if not more valuable, than the copyright originally sold to them by Mario Puzo.

The complaint points out that Paramount maintained a good working relationship with Mr. Puzo during the making of the three Godfather movies, and also after his death, when in an attempt to “accommodate” the Puzo Estate Paramount entered into an agreement with the Estate granting it the right to publish one (but only one) Godfather sequel novel written by new authors. That agreement also recited the Estate’s contention that it had the right to publish subsequent novels, and that Paramount contended to the contrary. The Estate went ahead with the first sequel novel, entitled “The Godfather Returns”, which had success, and good sales, but then without Paramount’s knowledge or consent published another sequel novel,[4] which did not do well in sales and received “mediocre reviews” according to Paramount’s complaint. The family has a third sequel novel ready for release in May 2012, to be called “The Family Corleone”.

Paramount then filed suit not only for copyright infringement, as they have the sole right under copyright law to prepare derivative works of the first novel[5], but for trademark infringement claiming tarnishment and consumer confusion of the Godfather Marks,[6] which the Estate has used on the second sequel and planned to use on the third. Because of the claimed inferiority of the unauthorized sequels, Paramount says it has and will suffer damages from the Estate’s use of the Godfather Marks which is likely to cause confusion, mistake, or deception of the public as to the source of the books. The essence of trademark law is to identify the source of goods and to help bolster the goodwill and value of the brand. Having spent countless millions on the establishment of the Godfather brand and its connection to the beloved Godfather movies, Paramount had no intention of allowing the Puzo Estate to tarnish the “integrity of the Godfather franchise”.[7] A trademark being used as an identification of a movie series and products based on that series is a legitimate, though not always recognized, derivative use of the original grant of rights. The independent development of the Godfather marks by Paramount to identify its copyrighted works is a collateral right necessarily granted by the language of the original contract between Paramount and Puzo, which grants not only copyrights but “all rights now known or hereafter accruing therein” and also the exclusive rights to “use said work … in whatever manner the Purchaser may desire” including the right to use “any and all of the characters created therein”. The copyright includes the title of the work, and it is able to be registered for trademark because it identifies a series of movies, not just one, which is not able to be the subject of a trademark.[8]

The popularity of the Godfather movies, and the use Paramount made of its grant of rights, gave the owners of the intellectual property rights a very lucrative franchise which Paramount has every right to preserve and benefit from. The theory of the Puzo family estate is in direct opposition to the rights assigned and sold by their patriarch in 1969, and the language of the contract does not seem to give them a loophole in which to claim the right to create their unauthorized sequels. Paramount is claiming willful copyright and trademark infringement, and it remains to be seen how the Estate will counter that strong claim in light of the seemingly clear contract language. Mario Puzo sold the rights to everything that could possibly be created from his novel, in perpetuity, leaving nothing that could be invented later to be exploited by him and his family.

The situation was somewhat similar for the Godfather of Soul[9], James Brown, with his case against a film company for copyright infringement. In James Brown v. Twentieth Century Fox Film Corporation[10], Mr. Brown challenged the use of a clip from his performance on the 1965 television show in the 1991 move “The Commitments”. His letter agreement with the producers of the TAMI Show in 1965 was an employment contract which granted the producers sole and exclusive rights in the reproduction of his performance on the show. The contract included perpetual rights of exploitation of all parts of the performance including “all or any part of your acts, poses, plays and appearances of every kind and nature made or done by you … all instrumental, musical or sound effects produced by you (that presumably included his distinctive exhortations of “Hey!” and other famous James Brown exclamations), made or done by you in connection with the Performances and your services hereunder”, and the right to “exhibit, transmit, reproduce, distribute, broad cast and exploit … or the advertising or exploitation thereof, in and by all media and means whatsoever.”[11] The contract also gave the TAMI Show producers “the right to use and display, and to license others to use and display, your name and likeness for advertising or publicizing the Performance in conjunction with and so called ‘commercial tie-ups’”. Mr. Brown was paid the sum of $15,000.00 for these grants of rights. Mr. Brown contended that the 1964 letter agreement was ambiguous whether the grant of rights included the rights to use his performance in films, film promotions and videocassettes. He urged the court to focus on the phrase “in connection with”, and argued that it limits the producer’s rights to using his performance only in connection with the original TAMI Show itself, and not entirely separate contexts such as a full-length motion picture.[12] Mr. Brown submitted extrinsic evidence to support his interpretation of the contract language, which is allowed under California law, of industry practices requiring that consent of performers be obtained before film footage clips are used, and that other companies secured consent to use the TAMI Show footage. However, even under the permissive California standard, extrinsic evidence cannot be used to advance an interpretation to which the contract is not reasonably susceptible. The court stated that the language of the agreement expressly permitted the reproduction of a “portion” of the performance, indicating that the contracting parties contemplated the later use of the performance as segments of other larger projects.[13] The contract prohibited “commercial tie-ups” but this phrase was interpreted to mean Mr. Brown’s name and likeness could not be used for product endorsements, to which he had always been strictly opposed.[14] Finally, James Brown argued that the grant of rights did not encompass the right to the videocassette market, since it was not specified, nor was it even in existence at the time of the 1964 agreement. The court, in citing a number of cases litigating that question, found that the contract language did not limit the use of the performance to a specific medium, and quoted Rooney v. Columbia Pictures Indus., Inc.[15] : “[w]here a party has acquired a contractual right which may be fairly read as extending to a media developed thereafter, the other party may not escape that part of the agreement by showing that the specific nature of the new development was not foreseen.”

The scope of use, including geographic extent and duration, and kinds of rights desired (TV, film, DVD, online, etc) should always be carefully considered in a grant of rights. With the advent of films, television shows and even books being offered in digital form online[16] and on wireless devices such as smartphones and I Pads, questions persist about how to compensate copyright holders for their music and other works in previously released and new films and shows. In film studio contracts, the language has been changed to “all media excluding theatrical” (AMXT) for new films so negotiations do not have to occur with each new technology platform. In addition, many television show contracts are being amended to provide for rights in perpetuity, instead of the formerly standard five year option.[17]

The two “Godfather” cases illustrate the need in contract drafting to be able to anticipate things that don’t exist now and may not even seem possible – other than Dick Tracy and his two way wrist radio, who would have predicted fifty years ago the many devices we now use for two way audio and video communication? In licenses and contracts granting rights to intellectual property, nothing should be left to chance. Collateral rights such as trademarks may be created once money begins flowing from the original grant of rights, and enforcement of copyrights usually also depend on how much money is being made on the original works.

 

© 2012 Mary Ellen Tomazic


[1] Paramount Pictures Corporation v. Anthony Puzo, As Executor of the Estate of Mario Puzo, Civil Action No. 12 CIV 1268, United States District Court, Southern District of New York, Count 2.

[2] AFI’s 100 Years, 100 Movies, AFI.com (last visited 3/8/2012).

[3] Paramount v. Puzo, Count 30.

[4] “The Godfather’s Revenge”.

[5] 17 U.S.C. § 106(2).

[6] 15 U.S.C. § 1114 and 15 U.S.C. § 1125(a).

[7] Paramount v. Puzo, Count 5.

[8] TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1202.08 (8th Edition 2011) available at tess2.uspto.gov/tmdb/tmep (last visited February 8, 2012).

[9] A footnote in the case quotes a statement in the complaint that “the plaintiff is known throughout the world as ‘The Godfather of Soul’, [and] alleges that he is one of the most influential living musicians in the world and is one of the greatest live performers of all time … and one of the original inductees into the Rock and Roll Hall of Fame”.

[10] 799 F.Supp. 166, 26 U.S.P.Q.2d 1626 (1992).

[11] Brown v. Twentieth Century Fox Film Corporation, 799 F.Supp 166, 26 U.S.P.Q.2d 1626 (1992).

[12] Id. at 170.

[13] Id.

[14] Id. at 171. Mr. Brown also lost his right of publicity claim in this case, as the court stated that “there is no allegation that plaintiff’s name or any aspect of his persona other than his appearance in the TAMI Show clip as it appears in the film was used by defendants to promote the product”. Id. at 172.

[15] 538 F.Supp. 211, 229 (S.D.N.Y.), aff’d without op., 714 F.2d 117 (2d Cir.1982), cert. denied 460 U.S. 1084, 103 S.Ct. 1774, 76 L.Ed.2d 346 (1983).

[16] For example, current television shows and movies are now offered for a monthly subscription fee on live streaming platforms such as Hulu and Netflix; millions of books are available for downloading to several types of “e-readers”.

[17] Melinda Newman, I Want My Mobile TV, Billboard, July 8, 2006, at 32.

 

There are Few Trademark-Free Alternatives for Advertisers at Super Bowl Time

February 2, 2012 articles Comments Off on There are Few Trademark-Free Alternatives for Advertisers at Super Bowl Time

Every commercial advertiser and broadcaster, as well as members of the public, are aware by now that the term “Super Bowl” is a trademark owned by the National Football League, and can only be used by those who pay for the privilege. “Super Sunday” is also part of the NFL’s intellectual property, and both are registered in the Patent and Trademark Office – “Super Bowl” in December 1967, and “Super Sunday” in August 1986. Even though both phrases are made up of merely descriptive or “generic” words, they now are “famous marks” possessing “secondary meaning”, making them incontestable under the Trademark laws.

The Trademark laws are codified as part of the federal Lanham Act, 15 U.S.C. Chapter 22. The system is based on use of words, phrases and images in commerce to identify the source of goods or services. Since trademarks are perpetual as long as they are used in this way, the laws have strict requirements to be able to be used exclusively by an owner to distinguish their goods from those of others. Trademarks, to be registered and protected on the Principal Register (15 U.S.C. § 1051) must be distinctive, and have a strong identification with the goods or services they represent. Protection can be given to trademarks in a range from weak (generic) to strong (fanciful). The weakest marks are words that are merely descriptive, and these cannot be protected because it would prevent their general use in the language. However, weak marks with generic-leaning words can be protected after a period of five years of exclusive and continuous use as a mark if they have become distinctive in connection with the applicant’s goods. Weak trademarks may be placed on the supplemental register (15 U.S.C. § 1091) if they are capable of distinguishing the applicant’s goods but are not distinctive enough to be registrable on the Principal Register. Then if, as a result of its use after five years with no successful contest by others, the mark is so strongly associated with a product or service that it becomes distinctive and acquires secondary meaning, it will be able to be registered on the PTO’s Principal Register and become incontestable by others attempting to register the mark. The NFL registered the term “Super Bowl” on the Principal Register in 1967. It was first filed as the name of a board game in 1966 on the Supplemental Register, assigned by the NFL to another party, and has been renewed twice since then. Super Sunday was first registered on the Supplemental Register as a service mark for the football game itself in 1986, and it is still on the Supplemental Register today, having been renewed by the NFL twice.

With that background, the NFL enforces its “Super Bowl” mark very aggressively, hunting down and squelching all uses of the phrase in advertising by companies which have not paid their high licensing fee. “Super Sunday” gets the same exclusive treatment and cannot be used in advertising without a license. Under the Lanham Act, trademark owners also have the right to refuse to grant a license to use their mark for other reasons, such as uses which disparage their mark or dilute its meaning. Association with “unsavory” or inferior products or services could hurt the reputation of the NFL built up over many years as “family entertainment”. Mostly, however, the NFL is protecting its revenue, and given Americans’ love of professional football, which generates billions of dollars in advertising, it is understandable that the NFL protects its lucrative marks.

The National Football League has stopped the use of their trademarks not only by advertisers selling  products like chips and beer to be consumed on “Super Sunday” during the watching of the game, but by bars and restaurants from advertising “Super Bowl parties” at their establishments. The NFL also owns the copyright to the games themselves, and has disallowed any establishment charging an admission fee to see the game, though the venue is allowed to sell food and drink during the watching of the game, as long as it is on less than a 55 inch screen.

Some alternatives have been regularly used to describe the game in advertising without using the trademark words in sequence. Ads mentioning “the Big Game” are probably the most prevalent; “Super Week” is another alternative that gets a lot of use by non-paying Super Bowl game advertisers. A phrase coming dangerously close, heard on local radio, is “make your game experience super.” Local and smaller advertisers often attempt to circumvent the Super Bowl and Super Sunday trademark restrictions, and probably would get away with “close calls” since the revenue involved is miniscule in comparison to products advertised nationally. Companies such as Papa John’s Pizza, Frito Lay and Budweiser beer pay millions for the right to be “official” Super Bowl sponsors and use the trademarked phrases.

With the global reach of the internet, cable TV, and radio these days, any advertiser would be wise to shy away from similar uses of the words “Super”, “Bowl” and “Sunday” in their campaigns associated with with the professional football championship game, because the NFL will track you down and stop you if you have not been granted the right by license.

 

© 2012 Mary Ellen Tomazic

Golan v. Holder, 565 U.S. __ (2012), decided January 18, 2012 – The Supreme Court Allows Equal Copyright Treatment of Foreign Authors

January 25, 2012 articles Comments Off on Golan v. Holder, 565 U.S. __ (2012), decided January 18, 2012 – The Supreme Court Allows Equal Copyright Treatment of Foreign Authors

 

Against the backdrop of legislative activity in the Congress aimed at curbing online piracy of copyrighted works, the Supreme Court has ruled in favor of an existing law that strengthens the protection of U.S. copyright works overseas by adherence to global treaties. In affirming the constitutionality of  §514 of the 1994 Uruguay Round Agreements, which codified the extension of copyright coverage to works still protected in their own countries but not in the United States, the Court ruled against the petitioners, including orchestra conductors, musicians, publishers and others who formerly enjoyed free access to works that §514 removed from the public domain. These parties asserted that a work that has entered the public domain, for whatever reason, must forever remain there.

The works in question never enjoyed copyright protection here for any of three reasons: the United States did not protect works from the country of origin at the time of publication; the United States did not protect sound recordings fixed before 1972; or the author had failed to comply with U.S. statutory formalities, which are no longer required as prerequisites to copyright protection. The Court allowed the restoration of the copyright protection foreign works would have enjoyed had the United States maintained copyright relations with the author’s country or removed formalities incompatible with the Berne Convention for the Protection of Literary and Artistic Works, which the U.S. joined in 1989. Foreign authors, however, did not get credit for the protection they lacked in the years prior to the enactment of §514, and therefore enjoy fewer total years of exclusivity than do their U.S. counterparts. The foreign works which had their copyrights restored “subsist for the remainder of the term that the work would have otherwise been granted if the work never entered the public domain.”

The decision emphasized that historical practice in the interpretation of the Copyright Clause has many examples of federal acts which accorded copyright protection to works that had lapsed into the public domain, or expanded the term of protection for copyrighted works. From the First Congress in 1790 which launched the uniform national system of copyright protection, to the Sonny Bono Copyright Term Extension Act of 1998, Congress has “recurrently adjusted the Copyright Law to protect works once outside the law’s protection.” The Congress did not view the public domain as inviolate – on occasion it has seen fit to protect works and inventions once freely available, without offending the Copyright Clause. The Court also uses examples of the restoration or granting of patents for inventions which were in public use at the time of the Copyright Act’s passage, “because the Clause empowering Congress to confer copyrights also authorized patents”, which confirms that Congress has not understood the Copyright Clause to preclude protection for existing works. The argument that the petitioners put forth insisting that the “limited term” used in the Clause means that a time limit, once set, becomes fixed or inalterable, was rejected by the Court in both this case and in Eldred v. Ashcroft, which upheld the Copyright Term Extension Act in 2003. The Court said in Eldred that “the word ‘limited’ does not convey a meaning so constricted, (but) rather, the term is best understood to mean “confine[d] within certain bounds”, “restrain[ed],” or “circumscribed.” The petitioners argued that the ‘limited time’ has already passed for works in the public domain, but the foreign works in some cases received a term of “zero” years protection in the United States, and the Court asserted that “ a limited time of exclusivity must begin before it can end.”

The Court agreed with the Tenth Circuit Court of Appeals that § 514 was narrowly tailored to fit the important government aim of protecting U.S. copyright holders’ interests abroad; it also corrects the inadequate compliance with §18 of the Berne Convention, which took effect in 1886, and is the principal accord governing international copyright relations. After the U.S. joined in 1989, Congress did not fully implement Berne’s enforcement requirements, but adopted a minimalist approach, which did not sit well with other Berne members. Other countries complained about the U.S.’s refusal to grant copyright protection to their authors’ works, and some balked at protecting U.S. works until the United States reciprocated with respect to their authors’ works. This changed in 1994 with the Uruguay Round Agreements on trade related aspects of intellectual property rights, out of which came the World Trade Organization, which mandated implementation of Berne’s requirements upon pain of tariffs or cross- sector retaliation for the subject member countries. The United States’ refusal to fully comply with Berne was damaging the credibility of the U.S. as a trade partner, and U.S. negotiators reported that “widespread perception of U.S. noncompliance was undermining our leverage in copyright negotiations.”  In response to the possibility of a trade enforcement proceeding, Congress codified § 514 of the URAA at 17 U.S.C. §104A and 109(a), extending copyright protection to works that garnered protection in their countries of origin, but had no right to exclusivity in the United States for the three reasons mentioned previously. Included in the new law were several concessions to “reliance parties” which had, before the URAA’s enactment, used or acquired a foreign work then in the public domain. Reliance parties were allowed to continue to exploit a restored work until the owner gave notice of intent to enforce, and after that the reliance parties could continue to exploit existing copies for a grace period of one year. The reliance parties who had created a “derivative work” based on a restored work before the enactment of the URAA could indefinitely exploit the derivation upon payment to the copyright holder of “reasonable compensation”, as set by a district judge if the parties could not agree. This gave more rights than currently allowed by §106 of the Copyright Act to parties other than the copyright holder to make a derivative work, since for current copyrighted works it is a negotiable license, and the holder may refuse to allow any such exploitation at all.

The last point of the petitioners was that the First Amendment prohibits the restoration authorized under § 514, not only because if the “limited time” portion of the Copyright Clause, but that it restricts the economic incentive to create and disseminate ideas. As in the Eldred case, the Court asserted that the “traditional contours of copyright protection, the “idea/expression dichotomy” and the “fair use” defense serve as built-in First Amendment accommodations, which were left undisturbed by the new law. The idea/expression dichotomy, codified at Copyright Act at 17U.S.C. §102(b), provides that copyright does not protect “…any idea, procedure, process, system, method of operation, concept, principle or discovery … described, explained, illustrated or embodied in [the copyrighted] work.” This section “strikes a balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting the author’s expression.” The second contour, the “fair use” defense, is codified at 17U.S.C. §107, and allows fair use of a copyrighted work for purposes of criticism, comment, news reporting, teaching, scholarship or research, and affords considerable latitude for those purposes and even for parody. The petitioners, who enjoyed unlimited use of copyrighted works before §514’s enactment, argued that the limited rights they retain under the copyright law’s “built-in safeguards” are no substitute for their previous free use. The Court rejected that view, reminding the petitioners that public domain works cannot be copyrighted, even by the creator, and that “once the term of protection ends, the works do not revest in any rights holder, [and] no one, after the copyright term has expired, acquires ownership rights in the once-protected works.”

The dissent focuses first on a claimed inhibition of dissemination of the restored foreign works due to higher consumer prices or administrative costs in finding the owner and striking a bargain. The restored copyright holders can now charge higher fees for works that consumers previously used free, and in the case of certain derivative works, can charge what the market will bear. As previously mentioned however, the new law assures that derivative works made from the restored work have a statutory right to continue to exploit the work in that way, while makers of any new derivative works using copyrighted works of  any type must negotiate with the rights holder and may be refused the right to make the work. The dissenters also put forth the argument that the new law will aggravate the “already serious problem of cultural education in the United States” due to school orchestras or other nonprofit organizations not being able to afford the new charges.

Despite the dissenters’ concerns, I found the constitutional and other arguments of the conductors, musicians and others to be convincingly addressed by the majority in Golan v. Holder, as they were in the companion case of Eldred v. Ashcroft. If the United States expects foreign countries to help expand the worldwide availability of their markets to U.S. authors, and invigorate protection against piracy of U.S. works abroad, the tradeoff of restoring some foreign works from the public domain is worthwhile. As the Court definitively holds, “neither the Copyright and Patent Clause nor the First Amendment makes the public domain, in any and all cases, a territory that works may never exit.”

© 2012 Mary Ellen Tomazic

Case Comparison – Entity Production Inc. v. Psychotic Records, Inc. and Bridgeport Music, Inc. v. Dimension Films – the Current State of Music Sampling

January 24, 2012 articles Comments Off on Case Comparison – Entity Production Inc. v. Psychotic Records, Inc. and Bridgeport Music, Inc. v. Dimension Films – the Current State of Music Sampling

Mary Ellen with Ed from Midnight Syndicate at Cinema Wasteland 3/31/12

Technology since the 90s has driven and ultimately reigned in the unauthorized use of copyrighted material, especially music. From the widespread use of unlicensed music samples in the early days of hip hop to the rise of clearinghouses for the licensing of samples currently, musical artists have become more willing to pay for others’ works used in their creations. Many musicians formerly espoused a “live and let live” philosophy when it came to enforcing their ownership rights in their compositions and recordings. However, when digital technology allowed individuals to upload, download and share their music collections and obtain music without paying for it through the internet, the record companies and artists started to feel the pinch. With reportedly millions of dollars in lost sales through organized sharing sites such as Napster and Grokster, some high profile artists launched a war against unauthorized distribution and use of their music, Metallica in particular. The Napster lawsuits led to agreements that benefited both the artists and satisfied the public’s desire for convenient access to music. Now Napster is a pay site and ITunes distributes more music than any record company on earth.

Similarly, musical artists grew weary of other artists using parts of their recordings without permission in their new recordings. Arguments that the excerpts taken were too small to be actionable (the de minimis claim) were common in copyright infringement cases, which required “substantial similarity” between the original composition and the new song. This standard was used in sampling cases until 2005, when the Bridgeport Music, Inc. v. Dimension Films, Inc. case was decided. The Bridgeport case established a bright line test for copyright infringement by music sampling, stating that no matter how minimal the amount taken, physical copying of any part of a sound recording constitutes infringement. The only issue is whether the actual sound recording has been used without authorization. The 6th District Circuit Court of Appeals based their analysis on section 114(a) of Title 17 of the U.S. Code, the 1976 Copyright Act, which sets out the exclusive rights of copyright in sound recordings, including reproducing the work in copies or phonorecords, and the right to prepare derivative works based upon the copyrighted work. In short, only the copyright owner of a song may sample any part of that song. IN Bridgeport, the defendants had used a two second sample of a guitar solo from a George Clinton and the Funkadelics song in a tune that was recorded and then used in a movie soundtrack. The lower court went into great detail about the distinctiveness of the riff taken, how it was looped and used in five parts of a new song. The appeals court threw that analysis aside in stating that once a copyrighted sound recording has been digitally sampled, there is infringement and no de minimis analysis should be undertaken. The test is still based on substantial similarity for compositions (recall the “My Sweet Lord”/”He’s So Fine case in the seventies), but the “physical taking” involved in sampling sound recordings amounts to copyright infringement no matter how small the part taken or how the parts may have been changed.

As mentioned, this case established a new rule that sampling is never accidental, and that if you want to sample, you had better get a license. Most music publishers and record companies have instituted licensing policies to avoid litigation over sampling. The court hinted at some possible “free” sampling opportunities with “a large body of pre-1972 sound recordings that are not subject to federal copyright protection.” The court acknowledges that some artists and companies will still choose to sample and take their chances. Such is the case claimed in an action filed recently in U.S. District Court for the Northern District of Ohio in Cleveland entitled Entity Production, Inc. v. Psychopathic Records, Inc., which involves the horror/goth band Midnight Syndicate suing the hip hop group Insane Clown Posse for copyright infringement by sampling. The case has not gone to trial yet, and is probably going to be heard in early 2012, but the complaint sets out a compelling argument of blatant unauthorized physical sampling. In an artfully crafted complaint, attorneys for Entity Production, Inc., which along with its music publishing division, Linfaldia Records, owns all rights to the Midnight Syndicate compositions and recordings, simply and powerfully detail what was done and who did it. Civil Rule 8 requires only that complaints contain a “short and plain statement” showing entitlement to relief, and Entity’s statements recite the copyright registration certificate numbers for the seven compositions and recordings and the fact that they were registered before the infringement. Ownership of the compositions and recordings is specifically claimed and identified through assignments by the musicians to their music publishing and record companies. The timeline goes from the discovery of the infringement in 2009 through the cease and desist letter sent to Psychopathic Records by Entity’s attorneys, which was ignored, through a new discovery of unauthorized use by sampling in 2011 on a new Insane Clown Posse recording. This no doubt led to the claim that the infringement was “malicious and purposeful”, especially since the defendants were warned to make a licensing agreement in the 2009 letter, and never did for any of the recordings taken, and even took a new sample in 2011 after the warning letter. The defendants are accused of taking “substantial excerpts” of seven Midnight Syndicate recordings, which were used in their original state with vocal overdubs and looped to repeat throughout the new recordings. The excerpts are easily recognizable and are not altered in any way, but are used as the entire musical beds for the new recordings. Insane Clown Posse even claimed copyright in the new recordings containing Midnight Syndicate’s recordings, with the legend “All Rights Reserved”! Direct and vicarious liability for infringement is placed squarely on the principals of Insane Clown Posse, Joseph Utsler aka Shaggy 2 Dope, and Joseph Bruce, aka Violent J, who run the entire ten million dollar a year operation consisting of sound recordings of several artists, merchandise of all types, and even professional wrestling. The complaint also lists the I.C.P. trademark for all the merchandise and recordings as evidence that the principals of I.C.P. personally sampled or directed the sampling of Midnight Syndicate recordings, and has direct financial interest in the exploitation of the infringing works as shareholders of Psychopathic Records.

Entity lists the sales figures from SoundScan for Insane Clown Posse and notes that the bands within the company all perform and sell merchandise in this district, simultaneously giving a reason for the venue being appropriate in Cleveland and setting up a claim for the maximum amount under the Copyright Act for statutory damages, or in the alternative, the opportunity to prove damages at trial. The statutory damages prayed for are $150,000 for each separate infringement of the seven compositions and the seven sound recordings, totaling $2.1 million.  IF the case goes to trial, the damages could conceivable be a lot more due to the harm to the market for Midnight Syndicate songs and the large amounts of revenue generated by the sale of I.C.P. recordings and merchandise, which could well be partially driven by the use of the infringing samples in the songs. The cease and desist letter also asks Psychopathic Records for a list of any licenses issued for the use of the recordings incorporating the infringing excerpts in motion pictures, television programs, commercials, and for any public performance revenues from the tunes containing the infringing samples.

The complaint paints such a strong picture of infringement it almost seems iron clad, and those who have compared the Midnight Syndicate songs with the Insane Clown Posse and other Psychopathic Records songs including the sampled excerpts have no trouble recognizing them in the infringing works. The evidence of infringement is so clearly mapped out in the complaint that I predict that the case will be decided against Psychopathic Records on the pleadings alone, or that there will be a settlement before the case goes to trial. If the case does go to trial, I expect a citation to the bright line test in Bridgeport case will be one of the main references in support of Entity Production’s position The amount and substantiality of the samples and the notice of infringement letter sent to the defendants will foreclose the defendant’s possible claim of fair use of the samples.

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