Published on February 2nd, 2021 📆 | 6103 Views ⚑
0Gibson Dunn | Media, Entertainment and Technology Group 2020 Year-End Review
February 2, 2021
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As we wrap up a particularly unique year in the legal industry, Gibson Dunnâs Media, Entertainment and Technology Practice Group highlights some of the notable rulings, developments, and trends that will inform industry litigation long after the COVID-19 pandemic has faded from view.
A.   Copyright Litigation
1.   Second Circuit Finds 50 Centâs Right of Publicity Claim Against Rick Ross Preempted
On August 19, 2020, the Second Circuit held that the Copyright Act preempted a Connecticut common law right of publicity claim brought by Curtis James Jackson III (the hip-hop artist known as 50 Cent) against William Roberts (the hip-hop artist known as Rick Ross).[1] Jackson alleged that Roberts violated Jacksonâs personal right of publicity when Roberts used a sample from one of Jacksonâs best-known songs, âIn Da Club,â in a free mixtape that Roberts released in 2015.[2] Affirming the district courtâs grant of summary judgment, Judge Pierre Leval wrote for the panel that the Copyright Act impliedly preempted and, in the alternative, expressly preempted, Jacksonâs state law right of publicity claim.
As to implied preemption, the Second Circuit examined the state interests at play and the potential for conflict between the state law claim and the operation of federal copyright law. First, the circuit court held that âRobertsâs mere reproduction of a sound that can be recognized as Jacksonâs voice, . . . do[es] not violate any substantial state law publicity interest.â[3] In reaching that conclusion, the Second Circuit emphasized that Roberts had not used Jacksonâs name or persona âin a manner that falsely implied Jacksonâs endorsement of Robertsâ or his mixtapeâi.e., Jacksonâs right of publicity claim was not seeking to vindicate an interest in preventing consumer confusion or false endorsements.[4] Nor had Roberts used Jacksonâs music âin any way derogatory, or an invasion of Jacksonâs privacyââi.e., Jacksonâs claim was not seeking to vindicate a reputational or privacy interest.[5] Rather, in the circuit courtâs view, the âpredominant focusâ of Jacksonâs right of publicity claim was simply to challenge the unauthorized use of a copyright-protected sound recording.[6] But, as the Second Court noted, Jackson holds no copyright interest in âIn Da Club,â which is owned by Shady Records/Aftermath Recordsânon-parties to the litigation.[7] If such a right of publicity claim were allowed to proceed, it âwould impair the ability of a copyright holder or licensee to exploit the rights guaranteed under the Copyright Act.â[8]
Second, the appellate court examined the potential for conflict between state law and federal copyright law, finding two potential conflicts weighing in favor of a finding of preemption: (a)Â applying the right of publicity to the publication, reproduction, or performance of the many works featuring depictions or appearances of real persons raises an âobvious and substantialâ âpotential for impairment of the ability of copyright holders and licensees to exploit the rights conferred by the Copyright Actâ; and (b)Â Jacksonâs suit âis more properly seen as a thinly disguised effort by the creator and performer of a work within the subject matter of copyrightâwho owns no copyright interest in the workâto nonetheless exert control over its distribution.â[9] The Second Circuit thus found Jacksonâs claim impliedly preempted by the Copyright Act.
The Second Circuit held in the alternative that Jacksonâs claim was expressly (i.e., statutorily) preempted by Section 301 of the Copyright Act, finding that Jacksonâs right of publicity claim focused on Robertsâs use of a work that plainly fell âwithin the subject matter of copyright,â as opposed to a use of Jacksonâs voice independent of a work covered by the Copyright Act for the purpose of an endorsement.[10] The circuit court also found that the basis for Jacksonâs right of publicity claim was âin no meaningful fashion distinguishable from infringement of a copyright.â[11] Thus, the claim was expressly preempted.
2.   Ninth Circuit Adopts New âAsserted Truthsâ Doctrine for Nonfiction Works
On September 8, 2020, as part of a long-running dispute, the Ninth Circuit affirmed the U.S. District Court for the District of Nevadaâs decision granting judgment as a matter of law in favor of Frankie Valli, his former Four Seasons bandmates, and others involved in the creation of the musical Jersey Boys, holding that they did not infringe the copyright in a biography about the Four Seasons when creating and performing the musical.[12] Donna Corbello, widow of the ghostwriter and copyright owner of Tommy Devitoâs unpublished autobiography about the band, alleged that the creators of Jersey Boys had access to the autobiography and that, in addition to infringing the copyright in the book, they had also breached a contract among the band members. At trial, a jury found that Jersey Boys infringed the book and was not a fair use. The district court subsequently vacated the juryâs verdict and entered judgment as a matter of law in favor of the defendant on the grounds that the musical was a fair use, and ordered a new trial on damages apportionment as it related to the contract issues.
The Ninth Circuit affirmed without reaching the district courtâs analysis of the fair use defense, finding instead that Jersey Boys did not infringe Corbelloâs copyright in the work in the first place. Applying the extrinsic test for substantial similarity, the Ninth Circuit found that half of the alleged similarities between the musical and the book were common phrases, scenes-a-faire, or otherwise non-protectable, non-copyrightable elements, and the other half were non-protectable because they were held out by the bookâs authors as factual.[13]
In so holding, the Ninth Circuit adopted a new circuit standard for copyright protection for non-fiction works, which it dubbed the âasserted truthsâ doctrine, adapted from what other circuits and district courts have called âcopyright estoppelââa doctrine in which âelements of a work presented as fact are treated as fact, even if the party claiming infringement contends that the elements are actually fictional.â[14] Under this doctrine, â[a]n author who holds their work out as nonfiction [] cannot later claim, in litigation, that aspects of the work were actually made up and so are entitled to full copyright protection.â[15] The Ninth Circuit described the breadth of the asserted truths doctrine, noting that it âapplies not only to the narrative but also to dialogue reproduced in a historical nonfiction work represented to be entirely truthful,â[16] and found it applied to bar the assertion of infringement as to numerous alleged similarities given the bookâs âemphatic representation that it is a nonfiction autobiography.â[17]
3.   Seinfeld Prevails in âComedians in Carsâ Copyright Ownership Dispute
On May 7, 2020, the Second Circuit rejected a copyright lawsuit targeting Jerry Seinfeldâs hit Netflix show, âComedians in Cars Getting Coffee.â[18] Shortly after Netflix announced a deal to stream the show, Christian Charles, whom Mr. Seinfeld hired to direct the showâs pilot, filed suit against Mr. Seinfeld, Netflix, and Sony Pictures, alleging that Mr. Seinfeld stole the concept for the show and that heânot Mr. Seinfeldâwas the owner of the showâs copyrights.[19] Judge Nathan of the U.S. District Court for the Southern District of New York dismissed the copyright claims with prejudice, ruling that they were time-barred by the Copyright Actâs three-year statute of limitations and that the facts pled in the complaint were self-defeating.[20] The district court found that Mr. Charlesâs âattempts to distinguish Second Circuit precedentâ were âunavailingâ and concluded that, â[b]ecause Charles was on notice that his ownership claim had been repudiated since at least 2012, his infringement claim is time-barred.â[21] Specifically, the court held that Mr. Seinfeld expressly repudiated Mr. Charlesâs ownership claim âin 2011 [when he] twice rejected Charlesâs request for backend compensation and made it clear that Charlesâs only involvement was to be on a âwork-for-hireâ basisâ and in 2012 when Mr. Seinfeld âwent on to produce and distribute the show without giving any credit to Charles.â[22] The court also recognized the opportunistic nature of the lawsuit, finding that Charles was prompted to sue after the announcement in 2017 that âNetflix inked a lucrative new deal for the show to join their platform.â[23]
The Second Circuit issued a summary order affirming the judgment of the district court âfor substantially the same reasons that [the district court] set out in its well-reasoned opinion.â[24] The Second Circuit agreed that the case concerned a copyright ownership dispute, as opposed to an infringement disputeâa key distinction for determining accrual of the Copyright Actâs statute of limitations, as while an infringement claim accrues after each separate infringement, an ownership claim accrues only once. The Second Circuit reaffirmed its precedent by holding that if âthe ownership claim is time-barred, the infringement claim itself is also time-barred, even if any allegedly infringing activity occurred within the limitations period.â[25] Siding with the defendantsâ classification of the dispute as one over copyright ownership, the Second Circuit found that Mr. Charlesâs arguments to the contrary were âseriously undermined by his statements in various filings throughout this litigation which consistently assert that ownership is a central question.â[26] The Second Circuit then agreed with the defendantsâ argument that Charlesâs self-defeating allegations in his complaint were âenough to place [him] on notice that his ownership claim was disputed [as of 2012] and therefore this action, filed six years later, was brought too late.â[27]
Shortly thereafter, Charles filed a petition for panel rehearing.[28] Citing a recently decided Sixth Circuit Court of Appeals copyright case, Everly v. Everly[29]âdiscussed below in this updateâCharles argued that the Second Circuit erred by failing to distinguish between authorship and ownership claims in the context of determining when the statute of limitations accrued.[30] On June 10, 2020, the Second Circuit declined to adopt Everly and summarily denied Charlesâs petition for panel rehearing.[31] Charles filed a petition for a writ of certiorariâarguing that Everly created a circuit splitâwhich the U.S. Supreme Court denied on December 14, 2020.[32] The defendantsâ motion for attorneysâ fees and costs is currently pending before Judge Nathan.[33] [Disclosure: Gibson Dunn represents the defendants in this action.]
4.   Ninth Circuit Rules Dr. SeussâStar Trek Mashup Not a Fair Use
On December 18, 2020, the Ninth Circuit held that a comic book âmashupâ of Dr. Seuss and Star Trek was not protected against copyright claims as a fair use.[34] The mashup, which combined Dr. Seussâs Oh, the Places Youâll Go! with elements of the television program Star Trek, is entitled Oh, the Places Youâll Boldly Go! The Ninth Circuitâs ruling revived the 2016 infringement lawsuit brought by Dr. Seuss Enterprises against ComicMix, the creator of the comic book, after the district court entered summary judgment in favor of ComicMix last year on the basis that the comic was a fair use, but affirmed the district courtâs Rule 12(c) dismissal and grant of summary judgment in favor of ComicMix on Seuss Enterprisesâ trademark claim.[35]
On the copyright infringement claim, the Ninth Circuit rejected the district courtâs fair use conclusion, finding that each of the four statutory fair use factors weighs against Boldly! being considered a fair use. The circuit court found Boldly! was not a fair use because it placed characters in a âSeussian world that is otherwise unchanged,â was not transformative, failed to parody or comment on Dr. Seussâs work, used a substantial quantitative amount of Go! (âreplicat[ing], as much and as closely as possible from Go!, the exact composition, the particular arrangements of visual components, and the swatches of well-known illustrationsâ), âtook the heart of Dr. Seussâs works,â and harmed Seussâs ability to sell derivative works, particularly where Seuss had a history of licensing authorized derivatives.[36]
The Ninth Circuit, however, affirmed the district courtâs ruling that Seussâs trademark infringement claim failed because Boldly! is protected as an expressive work under the Rogers test (of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), as adopted and extended by the Ninth Circuitâs precedents).[37] Under the Rogers test, âwhich balances artistic free expression and trademark rights,â the Ninth Circuit held that the Lanham Act does not apply because Boldly! was ânot explicitly misleading as to its source.â[38]
5.   Liability for âMaking Availableâ Works Protected by Copyright
Federal courts continue to grapple with the bounds of the exclusive distribution right under the Copyright Act and whether an ownerâs copyright has been infringed when a protected work is âmade availableâ to the public for permanent download or streaming, even if no one purchases the work or listens to the clip. In June 2020, in Sony Music Entertainment et al. v. Cox Communications Inc., the U.S. District Court for the Eastern District of Virginia upheld a jury verdict finding Cox, an Internet service provider, vicariously and contributorily liable for its subscribersâ infringement of the plaintiffsâ copyrights in their sound recordings and musical compositions.[39] Cox argued that direct infringement by its subscribers was not sufficiently proven at trial as the evidence supported only that the plaintiffsâ works were available for sharing, but not that they were disseminated.[40] The court considered prior Fourth Circuit caselaw holding that a work made available to the âborrowing or browsing public [ ] has completed all the steps necessary for distribution to the public,â[41] but found that line of cases to be of limited applicability, noting that direct proof of dissemination is unnecessary to bring a claim under the Copyright Act.[42] Consequently, the court found overwhelming circumstantial evidence of direct infringement through distribution based on Coxâs subscribersâ use of P2P (peer-to-peer) networks such as BitTorrent to share files.[43] On January 12, 2021, the court upheld the $1 billion award against Cox and entered judgment.
The U.S. District Court for the Western District of Washington considered similar issues in SA Music, LLC v. Amazon.com, Inc., et al., addressing whether a violation of a copyright ownerâs exclusive distribution rights requires actual dissemination of the infringed works by sale or other transfer of ownership, or by rental, lease or lending.[44] The plaintiffsâheirs to the rights of composers Harold Arlen, Ray Henderson, and Harry Warrenâalleged that a content provider had pirated thousands of recordings of their compositions and then made them available, and sold them, in the United States through Amazonâs digital music store.[45] Amazon moved to dismiss the plaintiffsâ âmaking availableâ theory of liability (i.e., liability for making the allegedly infringing works available in Amazonâs digital music store, without corresponding sales).[46] The court granted the motion, holding that distribution of a copyright-protected recording under § 106(3) of the Copyright Act on a digital music store requires the transfer or download of a file containing the work from one computer to another.[47] In so holding, the court distinguished Fourth Circuit precedent, reasoning that although a protected work may be deemed distributed when made available in a public library or a file-sharing network, when it comes to an online music store, the work is not distributed simply by being made available because the user cannot access the full work without first paying for the right to download the work.[48]
B.   Trademark Litigation
1.   Supreme Court Holds that Combining â.comâ with a Generic Term Can Create a Protectable Mark.
As we wrote last summer, on June 30, 2020, the Supreme Court voted 8-1 to reject a bright-line rule promulgated by the U.S. Patent and Trademark Office (PTO) that would prevent registration of an otherwise generic term in combination with a top-level Internet domain (such as â.comâ), finding that the combination can create a protectable mark if consumers recognize the term to identify a specific source of goods or services.[49] Booking.com, a hotel reservation website, applied to register the mark BOOKING.COM. The PTO denied registration because it broke down the proposed mark into its constituent elements and determined that âbookingâ is the generic term for hotel reservation services and â.comâ is a generic indicator of a website.[50] Booking.com appealed that decision in district court, which ruled in favor of Booking.com, relying heavily on evidence that consumers recognized the term as a unique brand name and not a generic term.[51] The Fourth Circuit affirmed.[52]
The Supreme Court affirmed, with Justice Ruth Bader Ginsburg writing for the Court.[53] The Court based its holding on the âprinciple that consumer perception demarcates a termâs meaning.â[54] That principle applies even to marks that combine generic elements; â[b]ecause âBooking.comâ is not a generic name to consumers, it is not generic.â[55] The Court, however, did not adopt its own bright-line rule that all â.comâ marks are protectable. Rather, the Court made clear that the protectability of marks is a fact question under the Lanham Act, and all relevant evidence must be taken into account in deciding the ultimate question of whether consumers understand a particular term to serve as a trademark, including consumer surveys, dictionaries, and usage by consumers and competitors. The Court noted that the likelihood of confusion element of a trademark claim and affirmative defenses such as fair use will prevent companies like Booking.com from claiming a monopoly over otherwise generic terms, like âbooking.â[56] [Disclosure: Gibson Dunn submitted an amicus brief on behalf of Salesforce.com, Inc. et al. in support of Booking.com BV.]
2.   Videogameâs Depiction of Humvees Protected Under First Amendment
On March 31, 2020, District Judge George B. Daniels of the U.S. District Court for the Southern District of New York ruled that the First Amendment protects Activision Blizzardâs depiction of real-life Humvee vehicles in the popular Call of Duty series of war videogames.[57] Humvee manufacturer AM General brought claims under the Lanham Act and New York state law against Activision over its widespread depiction of the vehicles across nine Call of Duty games, which allow players to ride in and interact with Humvees.[58]
The court held that because the Call of Duty games are âartistic or expressive,â the âRogers testâ of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) applied to the videogamesâ depictions of Humvees.[59] Under the Rogers test, courts must determine whether the contested use is an ââintegral elementâ of the artistic expression.â[60] The court held that, even accepting AM Generalâs evidence of some actual confusion by consumers, the depiction of Humvee vehicles in Call of Duty that bear recognizable trademarks does not infringe the trademark holderâs rights because â[i]f realism is an artistic goal, then the presence in modern warfare games of vehicles employed by actual militaries undoubtedly furthers that goal.â[61] In doing so, the district court acknowledged that commercial and artistic motivations behind a depiction can coexist, and that âan artist can sell her art without the First Amendment abandoning her.â[62]
C.   First Amendment Litigation & Developments
1.   United States Agency for Global Media Senior Officials Preliminarily Enjoined from Interfering with Journalistic Activity
On November 20, 2020, Chief Judge Beryl A. Howell of the U.S. District Court for the District of Columbia issued a preliminary injunction in Turner v. USAGM, prohibiting the Trump-appointed CEO of the United States Agency for Global Media (âUSAGMâ), Michael Pack, and his appointed officials, from âcontinuingâ activities likely to violate the First Amendment.[63] The defendantsâ conduct at issue was directed towards journalists and editors of USAGMâs publicly funded international broadcasting networks, such Voice of America (âVOAâ), and included âtaking or influencing personnel actions againstâ journalists or editors, âattempting to influence content through communications with individual journalists or editors, and investigating purported breaches of journalistic ethics.â[64]
The case was brought by career civil servants of USAGM and VOA who asserted that soon after the Senateâs June 4, 2020 confirmation of Pack as CEO of USAGM, Pack and his co-defendants âcommenced a series of events designed to fundamentally undermine the networksâ independenceâ from the agencyâs political leadership.[65] Plaintiffs claimed these eventsâincluding (among other things) attempts by the defendants to interfere âdirectly in the newsrooms at VOA and [other] networksâ and to commence investigations into purported âbreaches of journalistic ethics . . . to root out perceived liberal biasââviolated the International Broadcasting Act, 22 U.S.C. §§ 6201-16, and associated regulations, designed to âguarantee . . . the networksâ journalistic independence in the face of government oversightââas well as the First Amendment.[66]
While the district court found that subject matter jurisdiction was âlikely lacking over plaintiffsâ statutory and regulatory claims,â it held that one of the plaintiffs, VOAâs Program Director, was likely to succeed on the merits of her First Amendment claim.[67] The district court rejected the defendantsâ argument that this plaintiff had âno First Amendment protection for speech taken pursuant to [her] official duties,â holding that ânetwork speech made in relation to editorial and journalistic activities is protected under the First Amendment,â specifically under the standard set forth in Pickering v. Board of Education, 391 U.S. 563 (1968).[68] Applying that standard, the court concluded that to the extent defendants had âtaken or influenced personnel actions against individual journalists or editors,â had tried âto monitor VOA and network content through communications with individual editors or journalists,â and had undertaken âtheir own investigations of alleged discrete breaches of journalistic ethics,â the plaintiff was likely to succeed on her First Amendment claim.[69] The court found that each of the remaining preliminary injunction factors favored issuing an injunction. The courtâs preliminary injunction order is currently on appeal before the D.C. Circuit.[70] [Disclosure: Gibson Dunn represents the plaintiffs in this action.]
2.   New York Passes New Right of Publicity Law.
As we noted in our Fall 2020 update, in July 2020, the New York state legislature passed a much-anticipated right of publicity bill.[71] On November 30, 2020, Governor Andrew Cuomo signed the bill into law.[72] The bill, Senate Bill S5959D/Assembly Bill No. A05605B, replaced New York Civil Rights Law § 50 and changed the right of publicity landscape in the state.[73] Significantly, the bill makes a personâs right of publicity an independent property right that is freely transferable and creates postmortem rights for forty years after the death of an individual.[74] It further âprotects a deceased performerâs digital replica in expressive works to protect against persons or corporations from misappropriating a professional performance.â[75]
After signing the bill into law, Governor Cuomo stated that â[i]n the digital age, deceased individuals can often fall victim to bad actors that seek to capitalize on their death and profit off of their likeness after they pass awayâthat ends today.â[76] He said that â[t]his legislation is an important step in protecting the rights of deceased individuals while creating a safer, fairer New York for decades to come.â[77] SAG-AFTRA praised Governor Cuomo for signing the legislation, which it believes protects its members and their families who are at risk for post-mortem exploitation.[78] The New York State Broadcasters Association, Inc., on the other hand, noted elements of the law that may narrow its scope and reduce the risk of litigation, including: (i)Â decedents must be domiciled in New York at the time of death; (ii)Â the law applies only to those who die after the legislation takes effect; (iii)Â rights extend for only 40 years after death; and (iv)Â the decedentâs estate must register with the New York Secretary of State before filing a lawsuit.[79]
Governor Cuomoâs signing of the right of publicity bill followed his signing in November 2020 of another notable piece of media-related legislation: New Yorkâs revised anti-SLAPP law. We wrote about the details of that law in a prior alert, here.
3.   First Amendment Bars Right of Publicity Claim for Alleged Inspiration of Gears of War Character
In September 2020, the Third Circuit rejected a former professional wrestlerâs right of publicity lawsuit against Microsoft over a character in the Gears of War videogame, finding that the former athleteâs suit was barred by the First Amendment.[80] Lenwood Hamilton, a former professional wrestler and entertainer, alleged that Microsoft misappropriated his likeness to create the Augustus âCole Trainâ Cole character.[81] The U.S. District Court for the Eastern District of Pennsylvania granted Microsoftâs motion for summary judgment, finding that the Cole character appears in such a âprofoundly transformative contextâ that its use in Gears of Wars is protected by the First Amendment under the Transformative Use Test employed by the Third Circuit.[82]
The Third Circuit affirmed.[83] Applying the Transformative Use Test, the Third Circuit found that no reasonable juror could conclude that Hamilton was the âsum and substanceâ of the Cole character.[84] Despite acknowledging that Hamilton and Cole undoubtedly shared similaritiesâsuch as skin tone, facial features, and buildâthe Third Circuit found that significant differences revealed that Hamilton was at most, one of the âraw materialsâ that inspired the Cole character.[85] The circuit court explained that while Cole fights âa fantastic breed of creatures in a fictional world,â Hamilton âof course, does not.â[86] Similarly, the Third Circuit noted that in the game, the Cole character is not a wrestlerâas Hamilton wasâbut a fictional soldier.[87] It also remarked that Hamilton himself admitted the âCole characterâs persona [was] alien to himâ and unreflective of Hamiltonâs actual personality.[88] Finding that the Cole character had been âso transformed as to become primarily the defendantâs own expression,â the Third Circuit held that the First Amendment barred Hamiltonâs claims.[89]
D.   Music Litigation & Related Developments
1.   D.C. Circuit Finds Copyright Royalty Board Improperly Set Streaming Royalties
On August 7, 2020, the D.C. Circuit held that the Copyright Royalty Board (the âBoardâ) failed to provide fair notice or adequately explain its decision making when setting royalty rates for the period from January 1, 2018 through December 31, 2022.[90] The Copyright Act charges the Board with setting the royalty rates and terms every five years for the compulsory mechanical licenses that allow musicians to record their own versions of songs that have been publicly released in return for set compensation.[91] On January 27, 2018, the Board issued its Initial Determination of the royalty rates and terms for the 2018-2022 mechanical license, replacing the use of different formulas and percentages for different categories with a single, uncapped total content cost rate for all categories of offerings. The Board also increased the total content cost rate to 26.2% (the rates previously ranged from about 17% to 22%) and the revenue rate from 10.5% (for most but not all categories) to 15.1%. On November 5, 2018, the Board issued its Final Determination, which closely tracked the Initial Determination, but redefined how âService Revenueâ would be calculated for bundled offerings.[92]
Ruling in favor of streamers Spotify, Amazon, Google, and Pandora, the D.C. Circuit held that the Board failed to provide adequate notice of the rate structure it adopted, which deviated âsubstantially and unforeseeablyâ from the partiesâ proposals, the arguments made during the evidentiary hearing, and preexisting rate structures.[93] The D.C. Circuit emphasized that the parties were deprived of the opportunity to object to the new structure, address the interplay between the new structure and increased rates, and create a record confronting the âsignificant, and significantly adverse, overhaul of the mechanical license royalty scheme.â[94] It further held that the Board failed to explain its rejection of prior settlements as benchmarks.[95] Finally, it held that the Board failed to explain what authority it had to redefine âService Revenueâ after publishing its Initial Determination, and remanded to the Board for further consideration.[96]
2.   Sixth Circuit Revives Suit Concerning One Everly Brotherâs Termination Rights to Best-Selling Song Cathyâs Clown
On May 4, 2020, the Sixth Circuit revived a copyright dispute between Don Everly and the successors-in-interest of his deceased brother, Phil Everly, over termination rights to the former duoâs best-selling single, Cathyâs Clown.[97] When the song was written, recorded, and copyrighted by Don and Phil in 1960, both brothers were listed as authors, received royalties, and took credit publicly for having co-authored the song.[98] But, the brothers granted the copyrights to a third party, Acuff-Rose Publications.[99] Following a personal dispute, Don and Phil executed a Release and Assignment in 1980, under which Phil relinquished to Don all of his rights and interests in the song, including as to royalties and any claim of co-authorship.[100] Even after the agreement was executed, however, both brothers continued to make public statements crediting Phil as co-author.[101] Over 30 years later, in 2011, Don sought to terminate the 1960 copyright grant to Acuff-Rose Publications, and, in doing so, claimed to have exclusive copyright ownership of the song.[102] Then, in 2016, Philâs successors-in-interest attempted to terminate the 1980 assignment of Philâs rights to Don.[103]
Don filed a complaint for declaratory relief in 2017, seeking an order declaring that he was the sole author of Cathyâs Clown and that the 1980 agreement did not grant Phil termination rights under the Copyright Act of 1976.[104] Philâs successors-in-interest filed a counter-claim, seeking a declaration that Phil was a co-author of the song and that he had termination rights under the 2018 agreement.[105] Judge Aleta Trauger of the U.S. District Court for the Middle District of Tennessee granted summary judgment in favor of Don, finding that Philâs authorship had been expressly repudiated no later than 2011, when he filed his notice of termination of the 1960 grant.[106] Philâs claim of authorship was thus barred by the Copyright Actâs statute of limitations.[107]
Reversing the district court, the Sixth Circuit held that a genuine factual dispute existed as to whether Donâs actions constituted express repudiation of Philâs claims for authorship, when Phil was indisputably not the owner of the song.[108] The circuit court held that in the rare case where a dispute involves âauthorship claim[s] without [] corresponding ownership claim[s],â the statute of limitations on the authorship claim does not begin until an individual claiming authorship expressly repudiates authorship status, rather than ownership status, (1)Â privately through direct communication; (2) publicly, including in a listed credit on the published work; or (3)Â implicitly by receiving remuneration for the work to which the plaintiff is entitled.[109] The Sixth Circuit explained that its test of express repudiation in the ownership context is âconsistentâ with the Second Circuitâs test and âshould apply to such a claim for a declaration of authorship rights.â[110] Because a reasonable juror could find that no repudiation of Philâs authorship status had taken place, the circuit court held that summary judgment was improper.[111] Judge Ralph B. Guy, Jr. dissented, reasoning that the 1980 Release constituted express repudiation and that âone cannot avoid the accrual of a claim based on a dispute over co-authorship by agreeing to give up the right to claim to be a co-author.â[112]
3.   High School Prevails in Copyright Appeal Over Choral Performances
On March 24, 2020, the Ninth Circuit upheld the U.S. District Court for the Central District of Californiaâs grant of summary judgment in favor of Burbank High School and its competitive show choirsâthe same choirs that reportedly inspired the television program Gleeâin a copyright infringement suit brought by TresĂłna Multimedia.[113] TresĂłna had alleged that Burbank High violated its copyrights interests by failing to obtain licenses before incorporating segments of four songs into choir performances.[114] The district court had granted summary judgment in favor of Burbank High with regard to the alleged infringement of three of the songs, reasoning that TresĂłna did not have standing to sue under the Copyright Act because it held only non-exclusive licenses in those works.[115] As to the fourth work, Olivia Newton Johnâs song âMagic,â the district court ruled that the choir director was entitled to qualified immunity and that the Booster Club and parent-members could not be held liable for any alleged infringement.[116]
The Ninth Circuit largely affirmed the district court in an opinion that strongly criticized TresĂłna for its âaggressive litigation strategyâ against a public high school engaging in educational extracurricular activities.[117] The court agreed that TresĂłnaâs licenses in the three songs were not exclusive because TresĂłna received its interests âfrom individual co-owners of copyright, without the consent of the other co-owners.â[118] With respect to one of the songs (âMagicâ), the Ninth Circuit affirmed on the ground that the schoolâs ânon-profit educational and transformativeâ use of the song constituted fair use.[119]
After this ruling was handed down, TresĂłna asked the Ninth Circuit to stay its mandate to allow TresĂłna to petition for a writ of certiorari in the United States Supreme Court, contending that the Ninth Circuit incorrectly interpreted the Copyright Act.[120] Approximately five months after this motion was filed, the parties reached a settlement.[121]
4.   Musicians Sue Trump Campaign Over Song Usage
On August 4, 2020, Neil Young filed a copyright infringement lawsuit against Donald Trumpâs campaign for unauthorized use of his songs at campaign rallies, stating that âPlaintiff in good conscience cannot allow his music to be used as a âtheme songâ for a divisive, un-American campaign of ignorance and hate.â[122] The complaint objected to use of the songs âRockinâ the Free Worldâ and âDevilâs Sidewalk.â[123] On December 7, 2020, following the election, Young filed papers to dismiss the suit.[124] Lawsuits such as Youngâs do not often prevail, as campaign venues obtain public performance licenses from ASCAP and BMI. However, due to recent controversies over the Trump campaign (primarily) performing artistsâ songs against their wishes, ASCAP and BMI have begun to allow songwriters to exclude their music for political use, and warn candidates that a performance license may not cover all claims by musicians.[125] Courts have yet to determine whether this limitation is permitted under ASCAP and BMI consent decrees.
Weeks after Youngâs suit, on September 1, 2020, Eddy Grant filed a lawsuit against the Trump campaign, alleging the use of his song âElectric Avenueâ in a campaign video tweeted by Trump infringed Grantâs copyright.[126] Trumpâs campaign filed a motion to dismiss the suit on November 11, 2020.[127] Grantâs complaint, however, did not raise the issue of public performance, such as at campaign rallies, because his rights were allegedly infringed by unauthorized use in a recorded video. In its motion to dismiss, the Trump campaign claimed that its use of the song constitutes fair use, arguing that the song has been transformed by a clear âcomedic, political purpose,â and that the video was âchoreographed to mock President Trumpâs political opponent.â[128] A ruling on the motion to dismiss is pending.
E.   Social Media Litigation
1.   TikTok Challenges Trumpâs Executive Order
On December 7, 2020, U.S. District Judge Carl J. Nichols of the U.S. District Court for the District of Columbia issued a preliminary injunction barring enforcement of a set of restrictions that the Trump administration issued to ban the operation of social media application TikTok in the United States.[129] The challenged restrictions, which were published by the Secretary of Commerce in September 2020, prohibited five different types of transactions, including the provision of internet hosting services and content delivery network services, and the utilization of constituent code.[130] Plaintiffs TikTok and ByteDance filed suit on September 18, 2020, arguing that the restrictions violate the Administrative Procedure Act (âAPAâ) as well as several constitutional provisions, and exceed the President and Secretaryâs authority under the International Emergency Economic Powers Act (âIEEPAâ). On September 27, 2020, the court granted a partial preliminary injunction, enjoining the first of the five restrictions.[131] A month later, on October 30, 2020, in a separate case brought by a different plaintiff, a federal district court in Pennsylvania preliminarily enjoined all five prohibitions.[132]
TikTok then renewed its motion to enjoin all five restrictions in the District of Columbia. Following a hearing, Judge Nichols found that TikTok was likely to succeed on the merits of its APA and IEEPA claims. The IEEPA expressly provides that the Presidentâs authority âdoes not include the authority to regulate or prohibit, directly or indirectly,â certain activities, including âpersonal communications and the import or export of informational materials.â[133] The court looked to the governmentâs âstated goalsâ in issuing the prohibitions, which included âstopping the exportation of dataâ and âstopping the importation of propaganda,â[134] and concluded that those intended regulatory objects constituted âinformational materialsâ and likely exceeded the President and Secretaryâs IEEPA authority.[135] As to the APA claim, the court found that TikTok was likely to succeed in its claim that the Secretaryâs action was arbitrary and capricious, as a result of âthe Secretaryâs failure to adequately consider an obvious and reasonable alternativeâ before issuing the prohibitions.[136] The court also declined to refrain from issuing the injunction because the restrictions at issue were also enjoined in the parallel Pennsylvania case, concluding that the Pennsylvania order was subject to appeal and could be âmodified, stayed, or vacated at any time.â[137]
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   [1]    In re Jackson, 972 F.3d 25 (2d Cir. 2020).
   [9]    Id. at 39-40.
   [11]  Id. at 54 (citation omitted).
   [12]  Corbello v. Valli, 974 F.3d 965, 984 (9th Cir. 2020).
   [18]  Charles v. Seinfeld, 803 F. Appâx 550, 552 (2d Cir. 2020), cert. denied, 2020 WL 7327869 (U.S. Dec. 14, 2020).
   [19]  Charles v. Seinfeld, 410 F. Supp. 3d 656, 658 (S.D.N.Y. 2019).
   [21]  Id. at 659, 661.
   [24]  Charles, 803 F. Appâx at 551.
   [28]  Charles v. Seinfeld, No. 19-3335-cv, Pet. for Rehearing, ECF 94 (2d Cir. May 21, 2020) [hereinafter, Pet. for Rehearing].
   [29]  Everly v. Everly, 958 F.3d 442 (6th Cir. 2020).
   [30]  Pet. for Rehearing at 8-12.
   [31]  Charles v. Seinfeld, No. 19-3335-cv, Order Denying Pet. for Rehearing, ECF 101 (2d Cir. June 10, 2020).
   [32]  Charles v. Seinfeld, 2020 WL 7327869, at *1 (U.S. Dec. 14, 2020).
   [33]  Charles v. Seinfeld, No. 18-cv-01196, Motion for Attorneysâ Fees and Costs, ECF 124 (S.D.N.Y. July 1, 2020).
   [34]  Dr. Seuss Enterprises L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020).
   [35]  Dr. Seuss Enterprises L.P. v. ComicMix LLC, 372 F. Supp. 3d 1101, 1128 (S.D. Cal. 2019).
   [36]  Dr. Seuss Enterprises L.P., 983 F.3d at 451â61.
   [37]  Id. at 461â63.
   [39]  464 F. Supp. 3d 795, 805 (E.D. Va. June 2, 2020).
   [41]  Id. at 810 (quoting Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 203 (4th Cir. 1997)).
   [44]  No. 2:20-cv-00105-BAT (Arlen Docket), 2020 WL 3128534 (W.D. Wash. June 12, 2020).
   [49]  U.S. Patent and Trademark Office v. Booking.com B.V., 140 S.Ct. 2298 (2020).
   [51]  Id.; see also, Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017).
   [52]  Id. at 2304; see also, Booking.com B.V. v. U.S. Patent and Trademark Office, 915 F. 3d 171, 184 (2019).
   [54]  U.S. Patent and Trademark Office v. Booking.com B.V., 140 S.Ct. 2298, 2304 n.3 (2020).
   [57]  AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020).
   [63]  No. 20-2885 (BAH), 2020 WL 6822780, at *34.
   [70]  Grant Turner v. U.S. Agency for Global Media, No. 20-5374 (D.C. Cir. Dec. 18, 2020).
   [71]  Senate Bill S5959D, 2019-2020 Legislative Session of The New York State Senate (last accessed Aug. 26, 2020), https://www.nysenate.gov/legislation/bills/2019/s5959.
   [72]  Governor Cuomo Signs Legislation Establishing a âRight To Publicityâ for Deceased Individuals to Protect Against the Commercial Exploitation of their Name or Likeness, Office of New York Governor Andrew M. Cuomo (last accessed Jan. 8, 2021), https://www.governor.ny.gov/news/governor-cuomo-signs-legislation-establishing-right-publicity-deceased-individuals-protect.
   [73]  Jennifer E. Rothman, New York Reintroduces Right of Publicity Bill with Dueling Versions, Rothmanâs Roadmap to the Right of Publicity (May 22, 2019), https://www.rightofpublicityroadmap.com/news-commentary/new-york-reintroduces-right-publicity-bill-dueling-versions.
   [74]  Senate Bill S5959D, Summary Memo, supra note 72.
   [76]  Governor Cuomo Signs Legislation, supra note 73.
   [78]  Kevin Stawicki, Cuomo Signs Bill Recognizing Post-Mortem Publicity Rights, Law360, https://www.law360.com/articles/1333362/cuomo-signs-bill-recognizing-post-mortem-publicity-rights.
   [79]  Senate Bill S5959D, Summary Memo, supra note 72; Governor Signs New Right of Publicity/Digital Replica and Deep Fakes Bill â Broadcasters Protected from Unwarranted Lawsuits; New York State Broadcasters Association, Inc., https://nysbroadcasters.org/2020/12/governor-signs-new-right-of-publicity-digital-replica-and-deep-fakes-bill-broadcasters-protected-from-unwarranted-lawsuits/.
   [80]  Hamilton v. Speight, 827 F. Appâx 238 (3d Cir. 2020).
   [82]  Hamilton v. Speight, 413 F. Supp. 3d 423, 433-34 (E.D. Penn. 2019).
   [83]  Hamilton, 827 F. Appâx at 241.
   [90]  Johnson v. Copyright Royalty Bd., 969 F.3d 363 (D.C. Cir. 2020).
   [91]  17 U.S.C. §§ 115, 801(b).
   [92]  84 Fed. Reg. 1918 (Feb. 5, 2019).
   [93]  Johnson, 969 F.3d at 382.
   [94]  Id. at 381, 383.
   [96]  Id. at 389-92, 397.
   [97]  Everly v. Everly, 958 F.3d 442 (6th Cir. 2020).
   [112] Id. at 470 (Guy, J., dissenting).
   [113] TresĂłna Multimedia, LLC v. Burbank High Sch. Vocal Music Assân, 953 F.3d 638, 642, 655 (9th Cir. 2020).
   [115] TresĂłna Multimedia, LLC v. Burbank High Sch. Vocal Music Assân, No. CV 16-4781-SVW-FFM, 2016 WL 9223889, at *3 (C.D. Cal. Dec. 22, 2016).
   [116] Id. at *8; TresĂłna Multimedia, LLC v. Burbank High Sch. Vocal Music Assân, No. CV 16-04781-SVW-FFM, 2017 WL 2728589, at *6 (C.D. Cal. Feb. 22, 2017).
   [117] TresĂłna Multimedia, LLC, 953 F.3d at 647, 652â53.
   [118] TresĂłna, 953 F.3d at 646â67.
   [120] TresĂłna Multimedia, LLC v. Burbank High Sch. Vocal Music Assân, Nos. 17-56006, 17-56417, 17-56419, TresĂłna Multimedia, LLCâs Motion For Stay of Mandate (9th Cir. May 21, 2020).
   [121] TresĂłna Multimedia, LLC v. Burbank High Sch. Vocal Music Assân, Nos. 17-56006, 17-56417, 17-56419, TresĂłna Multimedia, LLCâs Notice of Settlement and Stipulation of Dismissal (9th Cir. Oct. 13, 2020).
   [122] Complaint ¶ 1, Young v. Donald J. Trump for President, Inc., No. 20-cv-06063 (S.D.N.Y.) (ECF No. 6).
   [124] Notice of Voluntary Dismissal, Young v. Donald J. Trump for President, Inc., No. 20-cv-06063 (S.D.N.Y.) (ECF No. 21).
   [125] See âUsing Music In Political Campaigns,â ASCAP, https://www.ascap.com/~/media/files/pdf/advocacy-legislation/political_campaign.pdf.
   [126] Complaint, Grant v. Trump, No. 20-cv-07103 (S.D.N.Y.) (ECF No. 1).
   [127] Motion to Dismiss, Grant v. Trump, No. 20-cv-07103 (S.D.N.Y.) (ECF No. 19).
   [129] TikTok Inc. v. Trump, No. 1:20-cv-02658, 2020 WL 7233557, at *1 (D.D.C. Dec. 7, 2020).
   [132] Marland v. Trump, No. 20-4597, 2020 WL 6381397, at *14-15 (E.D.Pa. Oct. 30, 2020).
   [133] TikTok, 2020 WL 7233557, at *7 (citing 50 U.S.C. § 1702(b)).
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