Nothing to be “Glee-ful” About

Show Choir Litigation Devolves into Copyright Morass

A Burbank show choir that purportedly served as the inspiration for the hit television series “Glee,” has been making headlines recently as the principal named defendants in a major music copyright infringement action.

Tresona Multimedia versus Burbank High School Vocal Music Association et al. potentially has tremendous implications for music copyright law.

First, a bit of background. A music copyright actually comprises a bundle of exclusive rights.  The copyright owner, typically a music publisher, has the exclusive rights (i) to reproduce and distribute the work, (ii) to prepare or authorize derivative works, like arrangements, (iii) to perform the work publicly, for example, by digital audio transmission and (iv) to display the work.  Music publishers carefully parse out these respective rights and monetize them through third-party licensing organizations, such as ASCAP (for performance rights) and the Harry Fox Agency (for mechanical reproduction rights).

Because of these separate rights, clearance can be tricky: You cannot assume that if you have cleared a particular right that you have cleared all of the respective rights that you need for a particular use of music or activity.  For instance, a repeat airing of a television program requires both a performance license covering the broadcast, and also a synchronization license covering the inclusion of the music “in timed relation with” or synchronization with the program video.

The longstanding practice, with respect to custom arrangements made for performances by choirs and bands, has been to request and obtain a permission to arrange from the publisher of the underlying music composition that is being arranged. The permission to arrange authorizes the creation of a custom arrangement for performance and also permits the reproduction of the custom arrangement in sufficient copies for use by the singers and performers in concert.  While the Copyright Act does not specifically state that custom band and choral arrangements comprise a derivative work requiring permission from the copyright owner, this has always been the assumption, based on general principles of music copyright law.

Section 115 of the Copyright Act, by contrast, which confers a compulsory mechanical license for permitting reproduction of musical works in sound recordings, does expressly confer a limited right to arrange a work for recording as part of the compulsory license.

In the past several years, Tresona has begun to serve as a licensing agent for a number of music publishing companies, issuing various types of permissions to choirs, bands and other performing groups, for purposes of creating arrangements along with synchronization, mechanical and grand rights licenses (for dramatizing a work).

Tresona learned that the Burbank High School Choir had not been obtaining permissions to arrange or other related types of standard clearance licenses for its concerts or related activities. After efforts to resolve the matter were unsuccessful, Tresona brought suit for copyright infringement.  Tresona’s complaint named not only the choral organization, but also its director, individual board members and even their spouses (board members and spouses were named under the theory that they were indirectly benefitting from the alleged copyright infringement by virtue of certain scholarships alleged to have been awarded to the children of board members).

The matter initially came before the court on cross motions for partial summary judgment on the issue of whether it was appropriate to retain the Choir’s Director, Brett Carroll as Defendant. This determination in turn hinged on whether Carroll had qualified immunity as a public official (as an employee and instructor at Burbank High School, a public school).

In its preliminarily issued ruling on December22, 2016, the Court found that it could not be established, as a matter of law, that Carroll either “violated clearly established rights” or clearly acted in a fashion that was not “objectively reasonable.” The Court explained:

This Court finds that the copyright laws Carroll allegedly violated were not “clearly established…” This Court agrees with Tresona that copyright laws in general were firmly established in 2011, including the need for a license to create a derivative work, distribute audiovisual recordings of a copyrighted work, or perform a musical work in a dramatic fashion. See dkt. 89 at 15-22. However, the Court finds that “the contours” of these rights were not “sufficiently clear· [so] that a reasonable official would understand that what he is doing violates that right.” See Anderson v. Creighton, 483 U.S. at 639…

Use of a copyrighted work “is not an infringement of copyright” when used “for purposes such as … teaching (including multiple copies for classroom use), scholarship, or research.” 17 U.S.C. § 107 (emphasis added).… In this motion, the parties did not brief for the Court the issue of fair use, and thus the Court does not resolve whether fair use would be a successful defense on the merits. At this stage, the Court merely finds that since teaching is explicitly listed as fair use, a public school teacher acting in his teaching capacity would be reasonable in believing the fair use defense applies.

Choir directors attending choral conventions like Hinshaw’s Celebration typically know the in’s and out’s of getting necessary permssions

 

Because of the unique procedural posture of the case, this opinion leaves even more unresolved the following critical questions:

  • How broadly may individuals be insulated from personally liability for copyright infringement as “public officials”?
  • Is the law really unsettled with respect to the need for obtaining a permission to arrange for performance by a band or choir?
  • Why does an in-classroom fair use exemption have any bearing on separate concert activities?

Music publishers and performing arts groups will certainly be following this case closely, and, presumably, some of them may also be contacting their elected representatives in Congress to propose legislation clarifying these issues.

In the meantime, if there is any interest in following custom and practice, please find a sample permission to arrange posted here by the Music Publishers Association: http://www.mpa.org/sites/mpa.org/files/Permission%20to%20Arrange.pdf

New Online Registration System for DMCA Safe Harbor Protection Now in Effect

Many companies and organizations comprise “online service providers” and therefore may be eligible for DMCA Safe Harbor Protection exempting them from liability for certain types of contributory copyright infringement. Online retailers, schools, arts organizations, non-profits and other entities with an online presence that provide “online services,” such as a website, email service, discussion forum or chat room, or have websites or other online platforms that allow others to post or store materials on their sites or systems, typically qualify as service providers under the DMCA.   Providing internet access and storage qualifies as well.

In addition to those who post infringing content, service providers who essentially “publish” this infringing content may also be liable for copyright infringement. The purpose of the DMCA Safe Harbor provisions is to absolve service providers from this form of secondary liability for copyright infringement.  But for DMCA Safe Harbor immunity, a service provider could be named as a defendant in copyright litigation over the unauthorized posting of photos, videos or other user-generated content found on its site.  In this sense, qualifying for the DMCA Safe Harbor can be a valuable tool in minimizing an entity’s exposure to liability for copyright infringement.

However, in order to qualify for Safe Harbor Protection, it is essential for the service provider to designate an agent who is empowered to receive notification of claims to copyright infringement under the DMCA. This agent designation is effectuated through the US Copyright Office’s new online registration system, which took effect a few weeks ago.  A link to the registration system and information can be found here:  https://www.copyright.gov/dmca-directory/

While there are a few other additional requirements for qualifying for Safe Harbor Protection, the first and foremost requirement is making this agency designation. The other requirements are relatively easy to comply with.

Selecting a Name for Your New North Carolina Business

Selecting a name for your new North Carolina business is one of the most important initial decisions that you will make. Why? If you simply select a name without performing any clearance, there is a good chance that another business will contact you and demand that you stop using your name because it is too close to the name of that other business or to the name of similar products or services offered by that business.

You may also encounter problems when you try to incorporate your company through the North Carolina Secretary of State (“NC-SOS”).  The NC-SOS produces an excellent  online pamphlet available online really this is must reading for anyone who wants to form a business in North Carolina. The very first section of the pamphlet addresses name selection.

In North Carolina, there are two (2) principal requirements for selecting a name with respect to the NC-SOS, which are that:

  1. The name must not contain any language stating or implying that the corporation is organized for any purpose other than a purpose that it is lawful and permitted by its articles of corporation.
  2. The name is “distinguishable upon the records of the Secretary of State from the name of any domestic corporation or the name of any foreign corporation authorized to transact business or conduct affairs in North Carolina.”

In essence, these NC-SOS restrictions require you to perform at least some minimal pre-screening of a corporate name.

In practice, the NC-SOS typically will accept even slight variations for purposes of satisfying the above “distinguishable upon the records” requirement. Therefore there are many North Carolina corporations with similar names.  Assume, for example, that “XYZ Corporation” is registered with the NC-SOS.  If you wanted to incorporate as “XYZ Ceramics Corporation,”  the addition of the word “Ceramics” would satisfy the “distinguishable” requirement.   However, if XYZ Corporation is heavily engaged in the ceramics industry and well known, you may still have a larger trademark clearance issue and concerns about infringement, notwithstanding the fact that the NC-SOS will permit registration of XYZ Ceramics Corporation.

For this reason, simply satisfying the NC-SOS name selection requirements for incorporation does not mean that you are free and clear to use the name.  Clearance for purposes of  NC-SOS incorporation does not equate to clearance for trademark purposes.  From a trademark standpoint, a broader preliminary check is warranted and highly advisable.

For trademark clearance, there are some very simple steps for reducing the risk of infringing someone else’s rights in a particular name or trademark. There are also more advanced and complex steps clearance options that will even further reduce the risk of an infringement and also potentially provide greater enforcement rights in a potential name. Often these additional steps are handled through engagement of a trademark attorney.

Even if you do not wish to take these more advanced and complex steps at the very least, it is highly advisable to do the following:

  1. Google your contemplated name and study your search results. Is there a well-known entity, especially in the field that you are planning to enter, using this name either for its’ company or for its goods or services. If so, you may have an issue. Try searching Google in various different ways and be sure to review more than just the first page of search results.
  2. Check both the NC-SOS corporations index and the NC-SOS North Carolina State trademark registration index found at the following link: http://www.secretary.state.nc.us/trademrk/ThePage.aspx
  3. The Federal Patent and Trademark Office also maintains a database of federally registered trademarks and pending applications found at this link http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4802:177iqt.1.1. The basic search function permits you to type in your contemplated name to see if there is a federal trademark registration covering it.  In general, it is best to search as narrow a portion of your name as possible to maximize the number of related “hits.”  For example if you are thinking of the name Acme Publishing Company, you should search the name “Acme” by itself rather than “Acme Publishing” or “Acme Publishing Company.”
  4. Because many businesses operate under an assumed name it is also advisable to at least check the Register of Deeds in your county to see if there is an assumed name certificate filed for the particular name that you are contemplating.
  5. It is also advisable to check domain name availability for your contemplated company, and, ideally, to secure your new company’s “.com” domain name.