WINNER OF THE THIRD ANNUAL LASTOWKA SHORT-FORM WRITING COMPETITION

By Matthew Yost (Rutgers Law Student)

In July of 2016, Justin Goldman took a photograph of New England Patriots quarterback Tom Brady alongside Boston Celtics general manager Danny Ainge and posted the photo to Snapchat. Goldman’s photo went viral, working its way from Snapchat to Reddit to Twitter. A tweet displaying the photo wound up embedded on various news websites owned and operated by media outlets such as Breitbart News, the Boston Globe, Vox Media, and Yahoo.

Embedding a tweet allows one to bring content from a Twitter post to another website. Each tweet contains a code provided by Twitter in a drop-down menu. The code is then copied and pasted into the website’s code, where it is displayed as embedded into the site’s content.

Goldman sued the news outlets that embedded the tweet, claiming violations of his right to display his photo. Under the Copyright Act, to display a work publicly means to “show a copy of it….” The parties agreed to split litigation into separate phases – first, to determine whether embedding a tweet violates a copyright owner’s exclusive right to display; and second, to determine whether any defenses apply to the infringement.

The defendants relied on the so-called “Server Test” developed in the Ninth Circuit. The Server Test developed from Perfect 10 v. Google, Inc., which addressed the questions of, first, whether thumbnail images that appeared in Google search results violated display rights and, second, whether full size images that appeared after a user clicked on the thumbnail also violated the right to display. The Perfect 10 court came out differently for each question. First, the court determined that because the thumbnails were stored on Google’s server, there was infringement. However, because the full-size images were stored on third-party servers and essentially embedded into Google’s webpage, there was no infringement on the second issue. Accordingly, liability ultimately turned on whether the defendant hosted the allegedly infringing image on its own server or on a third party’s server.

The Perfect 10 ruling was affirmed by the Ninth Circuit on appeal, where the court also determined Google was likely to succeed on a fair use defense.

The Goldman defendants’ argument was simple: by embedding a tweet, the media websites claimed they simply provided a guide for the user to access to copyrighted content. In this sense, embedding a tweet is merely the same as using the Dewey Decimal System to locate a book in the library. The library’s card catalog does not infringe on a display right, the analogy dictates.

However, the Goldman court did not find the defendants’ arguments, nor Perfect 10, persuasive. The court held that Perfect 10 was out of circuit, had been repeatedly rejected by other courts within the Second Circuit, and was cabined to pertain solely to search engines. Further, the court correctly noted the flaw in the defendants’ position. Embedding a tweet displays the tweet: it actually provides the copyrighted content. The card catalog does not magically present a user with the book.

Although many quickly criticized the decision, the court was not wrong. As the opinion pointed out, there is no meaningful distinction between displaying an image from your own server or displaying an image from someone else’s. This may be relevant for the exclusive right to make a copy a work, but that presents an entirely different question from the right to display the work.

However, hope is not lost, and the internet is not necessarily going to be radically transformed. The court merely determined that embedding tweets violates the display right. It has yet to address the issue of whether some admittedly strong defenses will apply.

First, the court has conceded that there appears to be a “very serious and strong fair use defense.” Such a defense would allow media outlets and social media users to continue to embed tweets into their content without fear of liability. Second, the court also recognized that defenses under the DMCA may apply. Further, the court left open the possibility of limiting damages based on innocent infringement.

There is also the possibility that the court could find implied consent to the displaying of embedded tweets. By default, Twitter allows users to retweet content posted by other users. This is common knowledge to even novice users of the platform. It is plausible then that a court could find one posting to Twitter implicitly recognizes that their tweet could be retweeted, which is essentially embedding the tweet into a new tweet.

Twitter also offers one the ability to “lock” his or her tweets and prevent them from being retweeted. Locking a tweet does not necessarily protect it against being embedded into third party websites, but it is one step in showing that the artist did not mean for their post to become viral. Facebook offers similar technology with its “share function.”

Other social media, such as Snapchat – where Goldman originally shared his photo – and Instagram do not have share or repost functions built in. But this could be where the court effectively uses fair use and other available defenses.

By Timothy McMahon (Rutgers Law Student)

In 2016, a Federal District Court in California sent shock waves throughout the realm of sound recordings. ABS Entertainment vs. CBS Corporation, ABS v. CBS, began when a collective group of copyright owners of pre-1972 sound recordings brought suit against CBS for infringing on their public performance rights under state law. CBS brought forth a daring argument that the sound records they used were not the pre-1972 sound recordings instead when the pre-1972 sound recordings were transferred from analog format to digital format it created derivative works, and thus subject to the compulsory licensing scheme set up under the Copyright Act. The court agreed and found that these digital copies were in fact derivative works. What is most surprising about this holding is how low the court set the bar for originality for derivative sound recordings—a medium that should require a higher originality requirement. 

 At the heart of the case was the question of originality. The threshold for originality is low and the degree of creativity needed to satisfy originality is only “minimal” or “extremely low”—even a slight amount will suffice. The standard does not change when the work in question is a derivative work, however, there must be sufficient variation from the original work to distinguish it from the prior work in a meaningful manner.

The court relied on Circular 56  to determine whether the new sound recordings meet the minimal threshold of originality. Circular 56 states that a derivative sound recording must “be rearranged, remixed, or otherwise altered in sequence or character, or the recording must contain additional new sounds” to meet the originality requirement. The originality requirement will not be met if “mechanical changes or process, such as a change in format, delinking, or noise reduction” are made to the preexisting work.

CBS argued that changes to the timbre, spatial imagery, sound balance, and loudness were sufficient to meet the originality that Circular 56 laid out. They introduced two sound engineer’s expert testimony—one of the sound engineers personally remastered a number of the sound recordings at issue—to support their argument. The first sound engineer claimed that remastering process requires substantial “personal aesthetic” choices, and a good sound engineer would never do a simply “drag and drop” when converting the sound recording from analog to digital. The second sound engineer performed forensic test that focused on the timbre, spatial imagery, sound balance, and loudness of the two sound recordings and concluded that they were different. He did not elaborate how they differed with regards to these four areas, only that the sound recordings differed. The court found this to be enough originality to be considered derivative works and granted summary judgment.

The court is creating serious problems by holding the bar for originality in derivative sound recordings so low. Holding the originality requirement low for other derivative works is problematic, but these problems are magnified in derivative sound recordings because of the unique nature of a sound recording. Each musical track has two distinct and independent copyrighted works (1) the musical composition and (2) the sound recording. The listener’s focus will be on the musical composition and not pay attention to the sound recording. An artist could modify a painting slightly and viewers will take notice, the same cannot be said about sound recordings. Only when changes are drastic will listeners take notice. The difficulty of ascertaining what has changed in a derivative sound recording calls for a greater originality requirement in sound recordings as compared to other derivative works, and the following problems will emerge if this low standard is kept.

The first of such problems is trying to determine what is actually protectable. In derivative works, only the original elements added to the pre-existing work are actually protected in their copyright. With the bar as low as it was set in ABS v. CBS, it will be difficult—if not downright impossible—to determine what preciously is copyrightable in the derivative sound recording. The sound engineer who performed the forensic test could only determine the sound recordings were different with regard to four areas. He was unable to pinpoint how they were different, only that they differed. If we cannot identify preciously what new element has been added or changed, then we cannot grant copyright protection.

 Another problem that could arise from a low bar of originality for derivative sound recordings is the possibility of judicial error in adjudicating cases. In Gracen v. Bradford Exchange,  Judge Posner stated that artistic originality is not the same as originality under the Copyright Act and should not be the end all be all for in determining originality. Most artistic choices can be identified and raise no problem with originality, but certain choices may be so nuanced that they escape the notice of the judge. Judges after all are human and are capable of making mistakes, if the originality is ever so slight it is foreseeable that judges will make errors in adjudicating cases. The possibility of this occurring in derivative works is higher, thus Judge Posner required a higher level of originality was needed for derivative works. The possibility for judicial error will be even greater in sound recordings if the originality of a work can only be discovered through a forensic test.

The final problem with holding the bar so low is how will a copyright owner—either the original sound recording or the derivative sound recording—know when their rights have been infringed. Posner allude to this in Gracen, that if an original work of authorship and a derivative work were insurmountably similar it would lead to overlapping claims.  When the creator of a remastered work could not identify what he added by the naked ear, how will anyone know which version is being used? How will a copyright owner be able to determine if their rights have been infringed? A higher originality standard would allow copyright owners to know if and when their rights have been infringed upon.

By holding the requirement for originality for derivative sound recordings so low, the court in ABS v. CBS is opening the flood gates for future problems. In order to correct these problems, the Ninth Circuit should overturn the District Court and should implement a higher threshold of originality for derivative sound recordings.

By Timothy McMahon (Rutgers Law Student)

Currently a trio of acts are making their way through Congress that could forever change copyright law for sound recordings. The Music Modernization Act and the Allocation for Music Producers Act (AMP Act) are aimed at altering mechanical licensing, ASCAP and BMI rate setting, and the procedure on how producers collect royalties operate. The last of the trio, the Compensating Legacy Artists for their Songs, Service, & Important Contributions to Society Act (CLASSICS Act), seeks to do something that music producers and copyright lawyers have wanted for decades, to grant federal copyright protect to pre-1972 sound recordings. Two questions that need to be asked are how will the CLASSICS Act impact these sound recordings and will the it actually pass Congress?

Sound recordings are “works that result from the fixation of a series of musical, spoken, or other sounds but not including sounds accompanying a motion picture or other audiovisual work.” The copyright in a sound recording exists separate and independent of the copyright of the underlying work. Originally sound recordings were protected by a mixture of state statutes and common law. This changed when Congress enacted the Sound Recording Protection Act of 1971 to grant federal copyright protection for sound recordings made after February 15th, 1972. Sound recordings created before this date, pre-1972 sound recordings, were not granted federal copyright protection, however, they were not stripped of their copyrights either. Instead the Act allowed for these pre-1972 sound recordings to remain protected under the current patch work of state laws.  

Sound recordings made after February 15, 1972 are governed under the Copyright Act are subject to a compulsory licensing scheme. This compulsory licensing system is put in place to minimize transaction cost associated with finding and negotiating with individual copyright holders. Section 114(d)(1) of the Copyright Act grants terrestrial broadcast radio a license without having to pay to perform the sound recordings. Later, in the Digital Performance Right in Sound Recordings Act of 1995 (DPRA), Congress established a performance right in sound recordings in digital transmission and created a licensing system for digital broadcast radio. Unlike terrestrial radio, digital radio must pay for this license through the SoundExchange. No matter what type of radio station is playing the sound recording, the copyright owner of the underlying work still collects a royalty.

Pre-1972 sound recordings are not governed by the federal regime of copyright law, thus are not subjected to this compulsory licensing scheme. This has created conflicts between radio stations and copyright owners. Theoretically, both terrestrial and internet radio broadcasters would need to find and negotiate the use of each sound recording in order to play it on the radio—this rarely occurs. The amount of settlements and litigation over the violation of pre-1972 sound recordings have increased dramatically and copyright owners are learning the hard way that state copyright laws are inadequate in protecting public performance rights. Some states like Florida and New York have concluded that public performance rights do not exist in sound thereby allowing radio stations to freely broad cast the sound recordings without paying the copyright owner. Even in states where a public performance right exists, radio broadcasters still freely violate them. Pre-1972 sound recording copyright owners are crying out that it is unfair to be treated differently from their federally protected counter parts and has caused them to miss out on revenue they should be entitled to.

How will the CLASSICS Act seek to remedy this problem? The act falls short of fully federalizing these sound recordings, however, it does solve the problem of a lacking uniform licensing scheme for pre-1972 sound recordings. The Act gives pre-1972 sound recordings a public performance right and incorporates them into the current federal licensing scheme—where terrestrial radio broadcasters do not pay royalties and digital radio broadcasters pay royalties. The Act also clarifies that pre-1972 works are protected under the same safe harbors as sound recordings governed under the Copyright Act. Outside of these two changes, the Act leaves intact the state regimes for governing pre-1972 laws. While this act leaves open future problems that can arise by not fully federalizing pre-1972 sound recordings, it would be a major step forward for ensuring economic fairness among copyright owners in pre-1972 sound recordings and clearing up this current legal grey area.

The second question that must be asked is how likely will the CLASSICS Act be passed? Previous attempts and advocacy for pre-1972 sound recordings to be brought into the federal copyright regime have failed to gain traction, however, the current outlook is far better than previous attempts. The cause has gained momentum and the Act has currently been introduced in both the House and the Senate, with support from both parties.  In addition, prominent music organizations and 240 prominent artists have been actively campaigning for Congress to pass the Act.  With the growing number of lawsuits and cloud of doubt surrounding this area of law, the support for this Act will only continue to grow.

Despite growing awareness and support, there are some reasons that could either delay or defeat the passage of the CLASSICS Act. If Congress does not pass the Act prior to summer recess it will certainly lose momentum in the immediate future. This is because in the fall many members of Congress will be more focused on campaigning then legislating. In addition, two key sponsors of the Act, Representative Issa and Representative Goodlatte, are not seeking re-election and will be leaving Congress. This means that the Act is about to lose two of its major advocates. Also, the Act is expected to face stiff resistance from digital radio broadcasters. Sirius XM has already begun advocating against it. In an opinion piece, Sirius XM CEO Jim Meyer attacked the bill as being unfair to digital radio. Jim Meyer claims that by treating radio broadcasters differently this Act would again benefit terrestrial radio and imposes greater costs on digital radio. He suggested the Act should force terrestrial radio to pay for their license at the same rate as digital radio. Bringing terrestrial radio into the realm of paying for their license has struggled under the Fair Play Fair Pay Act.  If Congress were to amend the CLASSICS Act to reflect Meyer’s wishes it would almost certainly quash any hope of the Act passing.  Due to these factors—and the stiff resistance expected from digital broadcasters—it is unlikely that the current Congress passes the CLASSICS Act.

In summation, the CLASSICS Act would do a lot to solve the fairness problems and the legal grey area that surrounds pre-1972 sound recordings. Eventually this growing momentum will push this Act to become law, but do not expect it to be passed by the current Congress.