Substantially Similar--A Blog on IP Issues, Writing and Film

Campaign Songs and Copyright Infringement?

by John Aquino on 02/02/12

A turbulent political campaign season can bring litigation.

On Jan. 30, 2012, songwriter Frankie Sullivan alleged in litigation filed in the U.S. District Court for the Northern District of Chicago that Republican Presidential Candidate Newt Gingrich had violated his copyright by playing the song "Eye of the Tiger" from the 1982 movie Rocky III at rallies, Rude Music Inc. v. Newt 2012, N.D. Ill., 1:12-cv-00640,filed 1/30/12. And this is just the most recent incident involving campaign songs and attorneys. In 2011. Tom Petty’s lawyers sent a cease and desist letter to Rep. Michelle Bachman who was using his song“American Girl” in her campaign for the Republican nomination.

Political campaigns have adopted popular songs almost since the founding of the United States, from Martin Van Buren's 1840 use of “Rockabye Baby” to Harry S. Truman's 1948 campaign reuse of “I'm Just Wild About Harry” to Bill Clinton’s 1992 adoption of Fleetwood Mac's“Don't Stop (Thinking About Tomorrow),” which the reunited group also agreed to perform at Clinton's 1993 inaugural ball.

But just as there have been singers and copyright holders who were excited about a campaign’s use of material, there was also Bruce Springstein who objected to Ronald Reagan's 1984 use of “Born in the USA, and Rondor Music International’s annoyance when in 1996 Bob Dole’s presidential campaign Sam Moore of the group Sam & Dave reworded its “Soul Man,” to “Dole Man.”

What usually happens is that the performer or copyright holder complains, and the song is withdrawn. I remember that in 1964 there was a monster hit musical on Broadway called Hello, Dolly!, which five years later became a movie of the same name starring Barbara Streisand. The title song of the musical became a hit record for the jazz trumpeter and singer Louis Armstrong, who later sang the song with Streisand in the movie. During the 1964 presidential campaign, Republican nominee Barry Goldwater’s staff appropriated the title song and changed the first line to “Hello, Barry!” The producer of Hello, Dolly!, David Merrick, announced that the song was being used without permission and that he was dedicating the song to the campaign of the Democratic candidate Lyndon B. Johnson, whose campaign used the song, changing the first line to, “Hello, Lyndon!” Johnson won. Four years later, Merrick dedicated another song from another one of his shows—“Step to the Rear”(“Will everyone here kindly step to the rear and let a winner lead the way”) from How Now, Dow Jones—to the campaign of the Democratic presidential nominee Hubert Humphrey. The show was not as successful as Hello, Dolly!,” running only 220 performance with no movie sale, and Humphrey lost.

But Frankie Sullivan is actually suing. We, of course, have to wait for the case to play out. The courts have indicated that political speech is entitled to a broader scope of protection under the First Amendment than ordinary commercial speech. And, as noted, when challenged the candidates have generally just pulled the songs.

But Sullivan was quoted as saying the use of his group Survivor’s music without permission can falsely give people the impression that the group is a supporter of Gingrich’s campaign. He doesn’t say this in the complaint, which just states that the use of the song by the campaign was “unlicensed and unauthorized.” But in the quote Sullivan seems to be offering a consumer confusion argument that is more appropriate for trademark law. He could conceivably have filed the litigation under the false endorsement provision of the Lanham Act or state-based right of publicity actions

But he didn’t sue under the Lanham Act or for trademark infringement or violation of state publicity laws. He sued for copyright infringement, which is a strict liability tort. Innocent copyright infringement is still infringement. But consumer confusion, to the best of my knowledge, is not something normally discussed in copyright infringement cases, so this argument would be an attempt to expand the field.

If the venue where the song was played had a license from ASCAP or BMI, then the use would not appear to be without permission, although the Sullivan quote suggests they may be going beyond the issue of license.

But again, all we have is the complaint. We’ll have to see how it plays out.

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Salinger v. Colting: New Standard, More Questions

by John Aquino on 01/31/12

Written for the Maryland State Bar Association’s Intellectual Property Section’s Annual Law Update, June 2011

A case in which a federal appeals court vacated a district court’s granting of a preliminary injunction barring the publication of a book using characters from an American classic set a new standard for a preliminary injunction in intellectual property infringement cases and also once again did not address the issue whether barring such use by defendants is inconsistent with First Amendment case law.

Vacating a preliminary injunction, the U.S. Court of Appeals for the Second Circuit in Salinger v. Colting, 2d Cir., No. 09-2878-cv, 4/30/10, remanded the matter for reconsideration under the standard set forth by the Supreme Court in eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006).

The original plaintiff, J.D. Salinger, authored the classic novel The Catcher in the Rye, which was published in 1951, a story told from the point of view of a young man named Holden Caulfield. A reclusive author, Salinger did not publish any works after 1965, never authorized new narratives involving Caufield, and, except for 1949 film adaptation of one of his short stories, did not permit derivative works of his writings.

In May 2009, Swedish writer Fredrik Colting published a book in England under the pseudonym “J.D. California” titled 60 Years Later: Coming Through the Rye, which features “Mr. C,” a man in his 70s, whose narration style is similar to that of Holden Caulfield's. The Colting book also includes a character based on Salinger himself. On the book jacket of the novel when it was first released, 60 Years Later was described as “a marvelous sequel to one our most beloved classics.”

The novel was scheduled to be published in the United States in September 2009, but Salinger filed a complaint in the U. S. District Court for the Southern District of New York against Colting and his publishers and distributors, alleging that Colting's book constituted an unauthorized sequel to Catcher in the Rye. Salinger sought a permanent injunction barring the reproduction, publication, advertisement, distribution, and other dissemination of the J.D. California book.

Colting responded that 60 Years Later was not, and was never intended to be, a sequel to Catcher but rather, “a critical examination of the character Holden and the way he is portrayed in [Catcher], the relationship between Salinger and his iconic creation, and the life of a particular author as he grows old but remains imprisoned by the literary character he created." Colting emphasized that a main character in 60 Years Later--Salinger himself, who narrates portions of the novel--did not appear in Catcher and that the Mr. C character evolved from a two-dimensional and absurd version of a sixteen-year-old into a real person with a rich life completely apart from Catcher.

Judge Deborah A. Batts issued a preliminary injunction, barring distribution of the Colting book in the United States. Salinger v. Doe, No. 09-cv-5095 (S.D.N.Y., July 1, 2009). Using the four factors of “fair use” in response to Colting’s evoking of that defense, Batts held that the Holden character was not sufficiently “transformative” of Catcher under Campbell v. Acuff-Rose Music Inc, 510 U.S. 569, 579 (1994) in that it did not constitute a parody of either Catcher or Caufield, although it might parody Salinger himself.

Colting appealed the injunction, arguing, among other things, that his use of the Caufield character was actually justified by the Supreme Court’s ruling in Campbell, which held that a commercial parody can qualify as fair use. Following Salinger's death in January 2009, his claim was taken up by Colleen M. Salinger and Matthew R. Salinger, as trustees of the J.D. Salinger Literary Trust.

New Test, Remand Necessary

In the appeals court decision, Senior Judge Guido Calabresi noted that once a plaintiff in a copyright infringement case has established a likelihood of success on the merits, the Second Circuit, in cases such as Richard Feiner & Co. v. Turner Entertainment Co., 98 F.3d 33 (2d Cir. 1996), has presumed that the plaintiff is likely to suffer irreparable harm in the absence of a preliminary injunction.

Colting argued that this standard, however, was in conflict with the Supreme Court's eBay decision, which required that, in a patent infringement case, an injunction should be issued to a prevailing patent owner only after application of a traditional four-part equitable test.

Recognizing that the eBay decision involved a patent infringement action and a permanent injunction, rather than a copyright action and a preliminary injunction, as was the case in Salinger, the court nevertheless agreed with Colting's argument.

“We hold today that eBay applies with equal force (a) to preliminary injunctions (b) that are issued for alleged copyright infringement,” the court said.

The court found nothing in the Supreme Court's decision that would limit its application to patent cases. “On the contrary, eBay strongly indicates that the traditional principles of equity it employed are the presumptive standard for injunctions in any context,” the court said.

The standard applied by the district court, derived from the Second Circuit's own jurisprudence, was in conflict with the Supreme Court's pronouncement, the court said. The court then set forth the test to be applied when considering whether to issue a preliminary injunction in a copyright case, in order to be consistent with eBay:

First, as in most other kinds of cases in our Circuit, a court may issue a preliminary injunction in a copyright case only if the plaintiff has demonstrated “either (a) a likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the [plaintiff]'s favor.” … Second, the court may issue the injunction only if the plaintiff has demonstrated “that he is likely to suffer irreparable injury in the absence of an injunction.” … The court must not adopt a “categorical” or “general” rule or presume that the plaintiff will suffer irreparable harm (unless such a “departure from the long tradition of equity practice” was intended by Congress). … Instead, the court must actually consider the injury the plaintiff will suffer if he or she loses on the preliminary injunction but ultimately prevails on the merits, paying particular attention to whether the “remedies available at law, such as monetary damages, are inadequate to compensate for that injury.” … Third, a court must consider the balance of hardships between the plaintiff and defendant and issue the injunction only if the balance of hardships tips in the plaintiff's favor. … Finally, the court must ensure that the “public interest would not be disserved” by the issuance of a preliminary injunction.

The court cautioned again that irreparable harm could not be presumed upon a finding of likelihood of success on the merits.

Since only the first factor of the four-part test had been applied, the court vacated the injunction and remanded the question for further consideration.

The court did state some agreement with the district court’s assessment that the defendants would not prevail with their fair use defense, noting that the book jacket had described 60 Years Later as a sequel to Catcher and not a critique of Salinger and his persona. The court did add, however, “It may be that a court can find the fair use factor favors a defendant even when the defendant and his work lack a transformative purpose.”

The district court closed the case in January 2011 as the result of a settlement between the parties under which the defendants agreed not to distribute the book in the United States or Canada until Catcher entered the public domain and to change the title. They remained free to sell and distribute the book in all other countries.

Decision’s Impact

The Second Circuit’s decision immediately raised concern that plaintiffs in copyright, patent, or trademark infringement cases, now deprived of the “free pass” that resided in the presumption of irreparable harm, would have difficulty in obtaining a preliminary injunction.[i] Some responded that in satisfying the requirement of proof of irreparable harm plaintiffs should look to such factors as loss of market share, loss of incentive to create, and market confusion.[ii] And, for now, the ruling is limited to the jurisdiction of the Second Circuit.

Another impact of the decision may be one of absence in that the appeals court did not address Coltin’s parody/fair use issue. In many ways, the case is similar to Suntrust Bank v. Houghton-Mifflin Co., 11^th Cir., No. 01-12200, 5/20/01, which involved an unauthorized sequel to Margaret Mitchell’s Gone with the Wind by Alice Randall titled Wind Done Gone. The Margaret Mitchell estate sued Randal and her publisher for copyright infringement claiming that Wind Done Gone was an unauthorized derivative work of Gone with the Wind. The U.S. District Court for the District of Georgia granted the estate a preliminary injunction. The defendants argued that the work was a commentary and in the broader sense a parody of the Mitchell novel in that it was told from the perspective of slaves on the Tara plantation. As parody, Randall contended the work was protected under the Supreme Court’s ruling in Campbell. The U.S. Court of Appeals for the Eleventh Circuit vacated the injunction, and the case was settled in 2002 when the publisher agreed to make an unspecified donation to Morehouse College in Georgia in exchange for Mitchell’s estate dropping the litigation. As a result, the sequel as “parody” issue was never litigated.

Faced with going forward after appeals court reversals, in both cases, the plaintiffs chose to settle, presumably on the belief that a loss would have had long-term ramification for authors, publishers, filmmakers, and all participants in intellectual property.

The unanswered question only raises more. Could, for example, a filmmaker, using the character of Father O’Malley in the 1944 film Going My Way, portray him as a pedophile and claim fair use protection against charges of copyright infringement because the new film was a parody/commentary of the pedophile/priest scandal of the last few years?

As a result of Salinger, plaintiffs in any intellectual property infringement litigation now face a different, and some will say more difficult, standard in moving for a preliminary injunction. The case also left for another day whether authors may publish sequels to classic works using the argument that they are parodies under Campbell, although the Salinger court did raise the possibility that a court could find the fair use factors favor a defendant even when the defendant and his or her work lack a transformative purpose.

[i] See Michelle Mancino Marsh and Eric Carnevale, “The Impact of Salinger v. Colting in Preliminary Injunctions in Trademark Cases,” Intellectual Property Magazine, September 2010, and Andrew Beckerman-Rodau, “Salinger v. Colting, Second Circuit Vacates Preliminary Injunction Citing eBay v. Merc Exchange,” ipwatchdog.com, 5/2/10.

[ii] Andrew Berger, “Don't Despair: Even Without a Presumption of Irreparable Harm, IP Plaintiffs Are Still Likely to Win a Preliminary Injunction After Establishing a Likelihood of Success on the Merits.” Patent and Trademark Daily Bulletin, 7/16/10.v

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Creativity--A Primer

by John Aquino on 01/24/12

As far as the copyright law is concerned, the threshold for creativity in a work is very low. And yet, creativity is very important to the author as well as to intellectual property law.

It is the creative works that are the subject of copyright disputes, after all. Copyright litigation is often focused on the creative process and when the idea became a work of authorship that is protected by the copyright laws in the United States and its treaty nations.

I doubt if one can say one ever understands the creative process. But one does appreciate it.

I remember when I was just starting out as an editor. I was managing editor for Music Educators Journal, then the official magazine of the Music Educators National Conference. The editor, the late Malcolm Bessom, wanted to do a special issue on creativity, and he sent me a scholarly journal that had published an article on creativity by Steve Allen.

For those who are not of a certain age, Steve Allen was a Renaissance Man in the 20^th century. He was a pianist, he wrote music, lyrics, books. He was the first host of television’s the Tonight Show. Allen is credited with having written 14,000 songs in his career. In this article, Allen discussed the creative process.

I kept the article for the longest time, but at some point lost it, so this is from memory. (Allen may well have used the material in the article in one of his many books, but I just haven’t found it.) To begin his discussion of creativity, Allen described a much discussed stunt in which he was the principal actor. Because he wrote songs and wrote them quickly, some entertainer—I though Allen said it was the comedian Shecky Greene but I have read others say it was the singer Julius LaRosa—challenged Allen to a contest. Greene or LaRosa bet Allen that he could not sit in the window of a music store with a piano and wrote 50 songs a day for a week. Allen took the bet and won it.

In the article, Allen confessed that he didn’t have to take a day to write the 50 songs. It only took him an hour!

And if you know Allen’s work, this is not a surprising admission. Allen used to perform a segment on his television shows where he would ask the audience to shout out numbers with each number representing a note on the scale. I remember once, after others had shouted 1, 3, 2, 4, someone shouted 9, which would make the melody suddenly jump up the scale. Allen just smiled, nodded at the band and produced a melody from those five notes. Among other styles of music, Allen was trained in jazz improvisation and how to do riffs on existing melodies. He utilized this technique in doing this songwriting segment on his tv shows and, surely, when he wrote 50 songs a day in the window of the music store.

Allen used the story as an example of creativity. But then the somewhat sad but necessary acknowledgement comes. Allen wrote14,000 songs, but how many of them are remembered today? Allen wrote “This Could Be the Start of Something Big,” a standard that you can still hear in cabarets and piano bars today. He wrote the lyrics to the music George Duning composed for the 1955 movie Picnic, which became known, as a song, as “Theme from Picnic.” There may be one or two others that some reading this can remember, but not that many.

I once heard someone compare Allen to the baseball player Moe Berg. He was only an average player for the Chicago White Sox, Boston Red Sox, and Washington Senators. But, a graduate of Princeton and Columbia Law School, Berg appeared on the radio quiz show Information, Please! and was recruited during World War Two to spy for the OSS and after the war for the CIA. Sadly, he spent the last two decades of his life unemployed and living with relatives.

A fellow ballplayer once said of him, “Mel could speak a dozen languages, but he couldn’t hit in any of them!”

There’s a difference between creativity and knowledge, between creativity and a certain facility.

Creativity is a process that ends in a spark that ends in the expression of something in a new and different way. And even that expression is not as creative as I would like it to be.

In intellectual property, the works people fight over have that spark. Usually, the work that someone claims was infringed by a best-selling novel or prize-winning play or movie, doesn’t have the spark.

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Why You Can't Really Say, It's Only a Movie

by John Aquino on 01/19/12

I have written a book and a number of articles on the legal issues surrounding fictionalizations that occur in fact-based films. The issue come up when people see themselves or family members portrayed in films and feel the portrayals are false. This has happened to the middleweight boxer Joey Giardello, who watched the movie Hurricane and saw himself portrayed as a pudgy fellow being beaten up by Hurricane Carter but winning the fight because the judges were racists. It happened to the family of Thomas E. Dewey, the late governor of New York and Republican presidential candidate, whose family saw him portrayed in the movie Hoodlum as a lawyer on the take. The Dewey family learned that libel laws protect reputations, a reputation is personal to that individual, and when he or she dies the ability to sue for libel dies with them. Giradello, however, did sue, and the fimmakers settled.

When I have given presentations or workshops on the topic, someone usually asks, basically, What's the big deal? Everybody knows movies make things up. Nobody is going to take what they say seriously.

The answer is, it's not that simple. Reputations are sullied in many ways, by rumors, for example, which fly in the air and stick in the mind. How do we assimilate information? We're told things, some of them we remember, some we do not, and even the ones we remember we may not recall where we got the information.

As an attorney, I was once reviewing a book manuscript for an author who was dealing with a battle that still exists today--whether the Bible or science should govern the teaching in schools of how the universe was created. The author wrote that this is not a new concern, that everyone remembers how in 1925 John Scopes, a teacher in Dayton, Tennessee, was arrested in class when he was teaching about evolution and put in jail for violating the Butler Act, which prohibited the teaching of evolution in schools. I wrote in the manuscript's margin, "You're remembering the movie!"

The movie was Inherit the Wind, which was based on a play of the same name. The playwrights had fictionalized the events of 1925, readily admitted it, and even changed the names of the teacher and his attorney and all the other characters for the play. Scopes was never arrested and never spent a night in jail. The ACLU had announced that it would finance a challenge to the Butler Act, and Scopes volunteered to be the defendant in the trial while admitting that he did not recall teaching evolution although the book he used in class mentioned it. When William Jennings Bryant, who would assist the prosection in Scopes' trial, came to town, there was a big banquet and Scopes was invited to attend.

The movie, however, begins with a scene where Dick York, playing the Scopes character, is arrested and put in jail. The manuscript's author may have known at one time that the play and film were fictionalized, but obviously didn't remember that. What the author did remember was the scene of the teacher being arrested, one picture being worth a thousand words.

Film images of very powerful things. We remember them. And most of the time it is not as easy to distinguish fact from fiction in movie portrayals. The filmmakers may not change the character names--they didn't in the Hurricane--and while they may run a disclaimer it usually says that some characters and events have been fictionalized, leaving the audience to guess which ones, and it usually runs in small print at the end of the movie's credits, which nowadays run for nine minutes. Very few people stay to read it.

The movie may be the only information audience members will have about the person being portrayed, and, barring someone telling them otherwise, they will take it away with them.

When Giardello sued the makers of Hurricane, they quickly settled. As part of the settlement, a disclaimer was put at the beginning of the DVD release, and Norman Jewison, the film's director, spoke on one of the tracks of the DVD and said that of course Giardello had really won the fight but that Jewison was using the fight as a metaphor for all of the racism Hurricane Carter had experienced.

The problem was, the audience members had no way of knowing they were watching a metaphor.

And this is why the topic is important.

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