The Settlement of Summer - Don Henley v. Chuck DeVore

Earlier this month, Don Henley (along with fellow songwriters Mike Campbell and Danny Kortchmar) settled a copyright lawsuit with California State Assemblyman and former Senate hopeful Chuck DeVore.

Copyright Chronicle has been following this case, which involved two music videos made by DeVore’s campaign using the music and lyrics from Don Henley’s songs “The Boys of Summer” and “All She Wants to Do Is Dance.” DeVore changed “The Boys of Summer” to “The Hope of November,” with lyrics mocking Barack Obama and “All She Wants to Do Is Dance” to “All She Wants to Do is Tax,” with lyrics aimed at Senator Barbara Boxer.

In DeVore’s cross-motion for summary judgment, he claimed the fair use defense. According to DeVore, the use of Henley’s songs was intended to parody Henley and the liberal bias in Hollywood. (I’ve previously mentioned how the parody defense would be a tough sell for DeVore considering the subjects of the commentary in his two songs are not the subjects of Henley’s songs.)

In June, U.S. District Judge James Selna rejected DeVore’s parody claims, ruling that DeVore had not established a fair use defense, and granted Henley summary judgment on the copyright infringement claims. A full-text of the decision can be found here.

A large portion of the Court’s decision focused on the parody inquiry and the distinction between parody and satire. While parody of a work is considered fair use, the Court noted that many courts remain split over whether parody of the author of a work is also protected. In the decision, the Court framed its analysis of DeVore’s songs with the assumption that “parody-of-the-author” would constitute fair use. Under this framework, the Court found that “Dance” was purely satire, as the song “makes no implicit or explicit reference to Henley or Kortchmar, much less ridicules them” (p. 17). “November” was found to have parodic element, as the narrator in both songs express disillusionment with politics; however, it was only a minor part and therefore the extent of DeVore’s use was not justified.

The Court also found that DeVore’s use of the songs as campaign advertisements was commercial. In his opposition brief, Henley argued that the videos were intended to increase campaign donations (each of the videos contained links to DeVore’s campaign website and the emails publicizing the videos linked directly the donation page on DeVore’s website). See Harper & Row, Publishers, Inc. v. National Enterprises, 471 U.S. 539; 105 S. Ct. 2218; 85 L. Ed.2d 588; 53 U.S.L.W. 4562.

The court agreed with Henley. Despite noting that courts have normally ruled campaign advertisements as non-commercial speech (See Mastercard Int’l Inc. v. Nader 2000 Primary Comm., No. 00 Civ. 6068 (GBD), 2004 WL 434404 at *12 (S.D.N.Y. Mar. 8, 2004)), the Court based their decision on the Ninth Circuit case Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 110, 117 (9th Cir. 2000):

“Like the church in Worldwide Church, which stood to gain parishioners through the unlicensed use of the plaintiff’s copyrighted work, DeVore and Hart stood to gain publicity and campaign donations from their use of Henley’s music. In fact, the videos contained links directing viewers to the DeVore campaign website, encouraging viewers to directly donate. Thus, under the logic of Worldwide Church, the Defendants “profited” from their use in the sense that they benefitted or gained an advantage without having to pay customary licensing fees to the Plaintiffs. 227 F.3d at 1118.” (p. 19)

Despite deciding for Henley on the issue of copyright infringement, the Court declined to rule on whether DeVore’s infringement was willful. The Court also rejected the Henley’s Lanham Act claims and granted summary judgment on the issue in favor of DeVore.

Do you remember when I licensed that copyright to you?

S...The law says that license ends in 35 years if I want it to.

Not a lot of people realize that copyright assignments can be terminated after 35 years. There is a five year window to terminate. It is written into the Copyright Act. 17 U.S.C. § 203(a)(3) for transfers executed by the author on or after January 1, 1978. There is a process by which the author (or his/her heirs) can terminate the license. (Other statutes and time periods apply for works created prior to the enactment of the 1976 Copyright Act which are governed by 17 U.S.C. § 304.)

The first set of terminations may take place for licenses made in 1978 (for works created pursuant to the 1976 Copyright Act) in 2013. Notifications can already be served and must provide at a minimum 2 years before the termination date. 17 U.S.C. § 203(a)(3) and 203(a)(4)(A).

There are not many reported cases involving copyright termination rights. These cases all involve terminations made prior to the 1976 Act and usually involve the heirs of an author. One such case involves Superman. See Siegel v. Warner Brothers Entertainment, Inc., 542 F. Supp 2d 1098 (C.D. Cal. 2008). In that case, the widow and daughter of Jerome Siegel, one of the joint owners of the Superman character, was able to terminate the copyright assignment to Warner Bros. (the successor in interest to DC Comics). Siegel, 542 F. Supp 2d at 1145. The heirs of the other owner (Joseph Shuster) are now attempting to terminate its license and have filed termination notices effective in 2013.

Both Siegel and Shuster’s heirs are using the same lawyer – Marc Toberoff to terminate the rights in the Superman character.
DC Comics sued Toberoff claiming Toberoff is preventing his clients from settling or negotiating with DC. DC also claims that he wants a share in the rights. The case is pending and Toberoff recently filed a motion to strike based on California’s anti-SLAPP laws. (See Toberoff’s motion here, via THR, Esq.)

Despite the new provisions, termination of granted rights is not guaranteed. The few reported cases involving copyright termination are likely to provide guidance for the future of copyright terminations.

Several recent cases deal with the “agreement to the contrary” provision found in §304(c), which states, “termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make any future grant.” 17 U.S.C. §304(c)(5).

Twice, courts have denied heirs’ efforts to terminate rights granted prior to 1978. In both cases, the courts ruled that the termination rights to the original grants were considered forfeited due to post-1978 grants by the heirs. See Penguin Group (USA) v. Steinbeck, 537 F. 3d 193 (2d Cir. 2008) (termination notice to rights granted in 1938 was ruled invalid due to a 1994 agreement between Steinbeck’s wife and the publishing company); Milne v. Stephen Slesinger, Inc., 430 F. 3d 1036 (9th Cir. 2005) (termination notice to 1930 grant ruled invalid due to 1983 agreement).

The Ninth Circuit addressed §304(c)(5)’s language again in 2008 in Classic Media, Inc. v. Mewborn, 532 F.3d 978 (9th Cir. 2008) and in this case ruled that the rights to Lassie could come home to the daughter of author Eric Knight, despite an 1978 assignment. (Interesting note: Marc Tobleroff was counsel for Mewborn, Knight’s daughter)

It will be interesting to see how many copyrights transfers are terminated. I suspect that there will be many more of these suits in the future. The ramifications of these termination provisions will be the subject of (what is likely to be) a series of posts.

What If They Take Away Your Internet?

In the U.S. there is the dramshop rule where if you drink too much alcohol, the provider will cut you off. If a new law is passed in New Zealand, if you commit copyright infringement over the Internet, the court may order your internet service cut off.

It is always interesting to see how other countries handle the problems of copyright infringement. In most instances, governments cannot keep up with the technologies to create laws to prevent certain infringing activities before they develop.

This dilemma has been compounded by the Internet which allows the sharing (and copying) of copyrighted materials almost instantaneously.

For instance, in Canada, a copyright reform bill has been proposed to develop a system of copyright laws to catch up with technology. In New Zealand, a new bill proposes a court injunction to suspend copyright infringers’ internet service provider account for six months. (I am not sure this idea has been fully developed as it would be difficult to prevent someone from opening up a new internet account or obtaining a new computer or going to a library or internet café for access.) Such a remedy would certainly face a high level of scrutiny in other places.

Internet access has been treated as a human right in countries such as France and Finland. It would seem more difficult to enforce a remedy such as the one proposed in New Zealand where broadband and wireless communications would make it difficult to track infringers who were denied internet access.

While the proposed remedy may be an effective tool to prevent copyright infringement over the Internet, whether this spreads to other countries remains to be seen.

Protecting Your Website

In reviewing this recent article about a law firm that is primarily involved in settling copyright infringement lawsuits involving downloads of movies from BitTorrent (including The Hurt Locker which I have previously discussed), it serves as an overlooked reminder for protection of intellectual property rights – copyright your website.

The U.S. Copyright Group claims that they never had a live site (located at dglegal.force.com/sitelogindglegal.com) similar to the one located at www.copyrightsettlements.com. The U.S. Copyright Group’s website does not look this way.

However, this may serve as an important reminder that a website may be copyrighted as to the text and pictures (and the compilation and/or arrangement of these elements) located on the web. Time, effort, energy, creativity, research, development and marketing decisions go into many companies’ outward public appearance – such as brochures, advertisements, press kits, and press releases.

Many of these materials are copyrighted to protect from having anyone else copy these efforts. Websites should be thought of similarly. It is fairly easy to copy someone’s website (and in fact, very often, the underlying code to produce such a website can be easily reproduced). Some also offer a service on how to copy other websites.

There are copyright infringement lawsuits in instances where a copyrighted website is lifted and posted at other locations. See FragranceNet.com, Inc. v. FragranceX.com, Inc., 679 F. Supp. 2d 312 (E.D.N.Y. 2010) (where defendant used over 900 copyrighted images from Plaintiff's website). See also SMC Promotions, Inc., et al. v. SMC Promotions, et al., 355 F. Supp. 2d 1127 (C.D.Cal. 2005) (where defendant used copyrighted photos and product descriptions from plaintiff's online members-only catalog).

For those who hire web designers to create their websites, they should make sure that there are proper contracts in place to ensure that the designer has created an original work and that the resulting website is not infringing on anyone else’s work. Also, a copyright registration for the website is necessary in order for U.S. based authors to sue possible infringers.

For the most part websites contain text and visual works which in combination comprise the copyrighted work. In the course of a copyright application, the applicant must disclaim any part of the works which they cannot claim copyright protection in (such as a previous work or a work not made by the author).

Also if a website contains video and or sound recordings (such as background music), I would recommend that this material be separately copyrighted (apart from the website itself) as these materials could be easily lifted separately and may have their own independent worth. (Also, an applicant should realize that when a deposit for registration for a copyright which includes “screen shots” of the website – it does not include the contents of the videos or the background music – and thus would not be registered.)

(Full disclosure: Collen IP does offer copyright registration services for websites including enhanced services under its Brutus® Protection Program.)