Principle that copyright belongs to creator may not apply if song was created while employed by record company.

A federal lawsuit filed recently in U.S. District Court in Pennsylvania alleges that the copyright in the classic song “War” recorded by reggae legend Bob Marley belongs to its co-author rather than its its record company. According to the Hollywood Reporter, songwriter Allan Cole co-wrote “War” and believed that Tuff Gong Music, Mr. Marley’s label, had registered the copyright on his behalf. The complaint alleges that the songwriter was never employed by the record company.

The question of employment is likely to be at the center of the litigation. The general rule in copyright law is that from the moment a creative work is fixed in a tangible form—set in a print or electronic manuscript, a sound recording, a computer software program, or other such concrete medium—the copyright becomes the property of the author who created it. But when a work is created by an employee within the scope of his or her employment, then it is by definition a “work made for hire.” 17 U.S.C. § 101. As the Copyright Office explains, if “a work is made for hire, an employer is considered the author even if an employee actually created the work. The employer can be a firm, an organization, or an individual.” [ Continue Reading ]

Ninth Circuit finds sufficient non-functionality and originality in 3-D object for case to proceed to trial

It’s never a good thing to find yourself face-to-face with something you thought you were still waiting for your client’s approval to produce sitting on a retail shelf. Your contact keeps telling you the deal will be done any day now, and then you find they’ve cut you out of the deal and had someone else make the finished product for less.

In the recently-decided case of Direct Technologies, LLC v. Electronic Arts, Inc., the Ninth Circuit Court of Appeals described exactly that unpleasant situation as happening to the CEO of Direct (“DT”), which believed it had contracted with Electronic (“EA”) to make USB flash drives based on its copyrighted “PlumbBob” symbol used in the popular computer game “The Sims.” According to the published opinion, DT’s prototype fit the memory sticks into a plastic diamond-shaped case, a 3-D version of the symbol and a design that EA approved. But the DT proto then found its way to a Chinese company, which produced a match that EA must have considered close enough, especially at $0.50 less per unit. Like the flash drive when clicked into its PlumbBob container, DT’s fate as vendor on the project was apparently sealed at that point. No. 14-56266, at 5-6 (C.D. Cal. Sept. 6, 2016).

DT sued, claiming itself to be a joint author of a copyrighted work and seeking an equal share of profits related to the PlumBob USB included in a “Collector’s Edition” of The Sims. But the company lost in the lower U.S. District Court for the Central District of California. There, the court concluded that DT’s contribution to the flash drive (its design for the 3-D PlumbBob) were either trivial or functional.

Copyright in derivative works depends on functionality and originality

On appeal, the Ninth Circuit reversed. The appellate court explained that DT could claim a copyright in its contribution to the derivative work of the symbol if it “contributed material ‘distinguished from the preexisting material employed in the work.'” Id. at 8-9 (citing 17 U.S.C. § 103(b) (internal quotations omitted)). The court then applied the two-step test for determining when a derivative work is sufficiently original to be protected by copyright. Under that test, the court looks first at “whether any aspects of the work seeking copyright protection ate purely functional, utilitarian, or mechanical.” Id. at 9 (internal quotations and citations omitted). Any functional aspects of the derivative work are set aside. The court then looks at the remaining aspects, asking “whether sufficient artistic differences exist to constitute ‘originality.'” Id. The original aspects must be more than trivial (but not much more). They must also avoid “affect[ing] the scope of any copyright protection in the preexisting material”–the work from which the new material is derived. Id. at 14-16. In other words, the creator of a copyrightable derivative work has a copyright only in its unique contribution, not in the preexisting material.

Reversing the lower court’s contrary holding, the Ninth Circuit reasoned that “the manner in which DT designed the USB drive to fit into the PlumbBob object” could be artistic and non-functional. Id. at 15. Aesthetic considerations were part of the design decisions behind DT’s work, the court noted, so there was a chance that a jury could find that “the unique and creative manner in which DT designed the USB drive to fit into the PlumbBob was nonfunctional and could potentially qualify for copyright protection.” Id. at 13.

Inspiration Spaceship is a Portland creative law firm representing designers, artists, and other creators in copyright and related creative legal matters. Please contact the firm with any questions about this post.

Complaint for direct, vicarious, and contributory infringement seeks money damages, injunction, and attorneys’ fees.

Copyright infringement in music is the subject of a suit filed recently in the District Court for the Central District of California. Plaintiff musician Alexander John Greggs sued defendants Ariana Grande, Apple. Inc., and Universal Music Group, Inc., among others. Greggs, known professionally as “Alex Greggs” or “Alex G”, alleges that the song “One Last Time” recorded by Grande is substantially similar to his song “Takes All Night”, a Skye Stevens recording released in 2012. In releasing and performing “One Last Time” along with videos and international versions of that song, the Complaint claims, the defendants violated the exclusive rights of creation of derivative works, distribution, and public performance protected by the Copyright Act, 17 U.S.C. § 106.

In copyright cases involving music, a “plaintiff must prove (1) ownership of the copyright; and (2) infringement—that the defendant copied protected elements of the plaintiff’s work. Three Boys Music Corp. v. Bolton, 212 F. 3d 477, 481 (9th Cir. 2000). Unless the plaintiff has direct evidence of copying, proof of infringement is based on proof that the defendant had “‘access’ to the plaintiff’s work and that the two works are ‘substantially similar.'” Id.

Access means a reasonable opportunity to copy the plaintiff’s work, such as the opportunity provided by the defendant’s access to the work through his or her record company or by the broad distribution of the work. “[I]n music cases the ‘typically more successful route to proving access requires the plaintiff to show that its work was widely disseminated through sales of sheet music, records, and radio performances.'” Id. at 482 (quoting 2 Paul Goldstein, Copyright: Principles, Law, and Practice § 8.3.1.1., at 91 (1989)). The Complaint alleges that the Greggs song “was widely disseminated, receiving widespread radio and television airplay, internet distribution (including YouTube), club play, and high rankings on various Billboard and other charts.”

Proof of substantial similarity requires that the plaintiff first identify concrete elements based on objective criteria. The jury then asks “whether the ordinary reasonable person would find the total concept and feel of the works to be substantially similar.” Pasillas v. McDonald’s Corp., 927 F. 2d 440, 442 (9th Cir.1991) (internal quotations and citations omitted).

The Complaint alleges that the “choruses in the two songs use a similar melodic contour” and that among other similarities “there is substantial similarity on the most important rhythmic placement of the pitches on strong melodic and harmonic beats . . . , which are what the listener perceives as most definitive of melody and, to a lesser extent, the harmonic accompaniment to a given melody.”

Inspiration Spaceship is a Portland creative law firm monitoring copyright protection and infringement issues and representing creative clients in related matters. Please contact the firm with any questions about this post or copyright in music and other creative works.