Category Archives: Copyright

Does the New Netflix Movie “Enola Holmes” Infringe the Copyright in Sherlock Holmes?

A recently filed lawsuit in federal court in New Mexico raises the question of whether the new Netflix film “Enola Holmes,” a film about Sherlock Holmes’ sister, infringes the copyright in the Sherlock Holmes character and stories owned by the Arthur Conan Doyle Estate.

As reported in a June 24, 2020 article in the Hollywood Reporter (see https://www.hollywoodreporter.com/thr-esq/conan-doyle-estate-sues-netflix-coming-movie-sherlock-holmes-sister-1300108), the Conan Doyle Estate has sued Netflix, Legendary Pictures, Penguin Random House and others, including author Nancy Springer, whose book series forms the basis of the new movie, claiming that the Enola Holmes character and story infringe the copyright in Arthur Conan Doyle’s famous character and stories.

The complicating factor for the Doyle Estate is that in 2014, the Doyle Estate lost most of its copyright rights to Sherlock Holmes when a federal appellate court ruled that all of the stories authored about the Holmes character before 1923 were in the public domain. But the ruling didn’t strip away the Doyle Estate’s copyright on the last 10 original Sherlock Holmes stories authored between 1923 and 1927.

Under well settled copyright law, only the original elements of Doyle’s last ten Holmes stories are protected by copyright. And the copyright does not protect what are known as scènes à faire, which are standard and customary plot elements standard for the works in a particular genre. Think of a car chase in a crime drama.

To try to get around the public domain and scènes à faire problems, the Estate’s complaint alleges that “After the stories that are now in the public domain, and before the Copyrighted Stories, the Great War happened . . . In World War I Conan Doyle lost his eldest son, Arthur Alleyne Kingsley. Four months later he lost his brother, Brigadier-general Innes Doyle. When Conan Doyle came back to Holmes in the Copyrighted Stories between 1923 and 1927, it was no longer enough that the Holmes character was the most brilliant rational and analytical mind. Holmes needed to be human. The character needed to develop human connection and empathy.”

And so Sherlock “became warmer,” continues the complaint, setting up the question of whether the development of feelings is something that can be protected by copyright and whether the alleged depiction of Sherlock in “Enola Holmes” is somehow derivative and therefore infringing.

It will be interesting to see how this case plays out. The estate likely will have to convince the court that the “warmer” Sherlock Holmes character in the stories still protected by copyright is expressed sufficiently differently from the colder one in the public domain stories such that the warmer character acquired protectable elements. Then, the estate also will have to prove that the warmer character in the allegedly infringing works is warmer in the same manner as the character in the works protected by the copyright.

A copy of the complaint can be found here: https://www.documentcloud.org/documents/6956021-Sherlock.html

Photographers and Visual Artists Beware! You May Lose Exclusive Control Of Your Copyrighted Work By Posting on Social Media

Many photographers and others involved in the visual arts often post their works on Instagram and other social media sites as a way to advertise and promote themselves, showcase their works, and try to license or sell the posted works. In most cases, the posted works are protected by copyright in favor of the author.

Among the rights granted to to the author of a copyrighted work are the exclusive right to control the reproduction and copying of the work, the exclusive right to control the distribution of the work (including to license the work), and the exclusive right to control the display of the copyrighted work. In a recent case from a federal court in New York that sent shockwaves through the copyright world, the court held that a third party who “embedded” a link to a photograph posted on the public portion of Instagram did not infringe the copyright owner’s exclusive rights because the terms and conditions for the use of Instagram grant Instagram the right to sublicense works posted on the public portion of Instagram.

The case in question is Sinclair v. Ziff Davis, LLC, Case No. 18-CV-790 (KMW), decided by Judge Kimba Wood of the United States District Court for the Southern District of New York on April 13, 2020, often referred to as the “Mashable” case because the website that was alleged to have infringed the plaintiff’s copyright was the Mashable site.

In the Mashable case, the plaintiff was a professional photographer who owned the exclusive copyright in a photograph (the “Photograph”) titled “Child, Bride, Mother/Child Marriage in Guatemala.” The plaintiff posted a copy of the Photograph to her Instagram account, which was a “public” account, viewable by anyone.

Mashable offered the plaintiff $50.00 to license the Photograph for use in connection with an article about female photographers, which the plaintiff rejected. Mashable nevertheless featured the Photograph in its article even though the plaintiff did not give Mashable permission or consent to use the Photograph, and in fact rejected Mashable’s attempt to obtain a license.

Mashable used a technical process called “embedding” to incorporate the Photograph into its article. Embedding allows a website coder to incorporate content, such as an image, that is located on a third-party’s server, into the coder’s website. When an individual visits a website that includes an “embed code,” the user’s internet browser is directed to retrieve the embedded content from the third-party server and display it on the website. As a result of this process, the user sees the embedded content
on the website, even though the content is actually hosted on a third-party’s server, rather than on the server that hosts the website.

Judge Wood held that Mashable did not infringe the plaintiff’s copyright because the plaintiff granted Instagram the right to sublicense the Photograph when the plaintiff created her Instagram account and agreed to Instagram’s terms and conditions, and Instagram validly exercised that right by granting Mashable a sublicense to display the Photograph.

As Judge Wood explained her decision, the terms and conditions for use of the public portion of the Instagram site state that “by posting content to Instagram, the user “grant[s] to Instagram a nonexclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content
that you post.” Based on this language, Judge Wood found that, because Plaintiff uploaded the Photograph to Instagram and designated it as
“public,” she agreed to allow Mashable, as Instagram’s sublicensee, to embed the Photograph in its website so there was no copyright infringement.

There are a number of important take-aways from the Mashable case:

1. Although the Mashable case involved the Instagram terms and conditions, virtually all social media sites — like Twitter, Facebook, etc. — have the same or similar terms and conditions which allow sublicensing, so the Mashable case may be extended to infringement claims based on works posted on other social media sites.

2. The Mashable case is limited to situations where the accused infringer displayed the copyrighted work by embedding the work on its website. Traditional copyright infringement analysis still will apply in those cases where there is actual copying – in other words, where the accused infringer publishes a digital copy of a copyrighted work on its website rather than just using embedding.

3. It is not clear how far the Mashable case will extend. The Mashable case is a trial court decision that has no binding effect on any other court in the United States. There have not been any cases outside the Southern District of New York that have addressed the same issue as the Mashable case. In another recent decision from the Southern District of New York on June 1, 2020 that also involved embedding a copyrighted photograph from Instagram (McGucken v. Newsweek, LLC, Case No. 19-CIV-9617 (KPF)), Judge Katherine Polk Failla confirmed the Mashable holding but refused to dismiss her case because she found there was no evidence of a sublicense between Instagram and Newsweek. The McGucken decision is interesting and curious because the facts were virtually the same as the Mashable case.

4. Finally, and perhaps most importantly, Instagram itself has expressly stated and made clear that users of its embedding feature don’t get licenses from Instagram to display copyrighted photographs of others.

So what does this all mean? For photographs and visual artists, the safest way to protect their copyrights is to switch their Instagram and other social media accounts to private until we have more clarity about the reach of the Mashable decision. But of course, such a switch will prevent users on the Instagram platform from seeing their content, which can be a career liability for professionals. Unfortunately, right now, Instagram does not offer an option to make content public inside the Instagram platform while disabling embedding on external websites.

For media companies and those who want to display photographs and other works posted by others on Instagram and other social media sites, the decision is clear: do not rely on the Mashable decision to shield you from liability for copyright infringement even if you intend to just embed the work. Instead, get permission from the artist to display his or her work and do not display if the artist says no.

Essential Intellectual Property Tips For Startup Companies

Readers may be surprised to learn how often we are consulted by clients who face the following predicament: an individual or group of people get together to start a business.  Working out of a home, or a garage, or a small workspace, they create a product or come up with a service that they think they can sell and proceed through sheer will and hard work to get the product or service to a point where the product really takes off.

Sounds like a success story, right? And it is.  But then what too often happens is problems arise.  Infighting starts about who created what, who owns what rights and who is entitled to what payments.  And of course competitors notice the success of the product or service and before long knock-offs start appearing.

To do as much as is possible to protect against the foregoing problems and other intellectual property issues, we offer the following tips:

  1.  Protect your intellectual property before you do anything else – consult with an experienced intellectual property attorney who can help identify what intellectual property rights exist and how best to protect them.  Make sure you budget sufficient funds for legal advice and intellectual property protection – it will be money well spent in the long run.
  2. Put agreements in place to define specifically who created what intellectual property, who owns what and who gets what payments – such agreements can include corporate shareholder agreements, LLC operating agreements, license agreements, and assignment agreements. Also address at the front end what will happen if one or more of the founders wants out or if the success of the business fades – it is important to consider at the front end what will happen to the business assets and intellectual property down the road.  The key is everything must be in writing – do not rely on trust, handshake agreements, oral agreements or any non-written agreement!
  3. A non-disclosure/confidentiality agreement is essential and must be in place before you discuss your product with anyone – and this includes not only potential vendors, business partners, etc. but also visitors to the place of business, friends, etc. if any protected details of products or services will be disclosed.
  4. Make sure to protect ownership through appropriate agreements – all employees and independent contractors should execute appropriate assignment agreements and work made for hire agreements.    This is especially important with respect to website design and maintenance, marketing activities, outside sales people, and customer lists.  It bears repeating: everything must be in writing!
  5. Put appropriate agreements in place if others will use your intellectual property to make sure there is no question who owns what and what uses can be made of the intellectual property.

California Halts Efforts to Seek Copyright Protection for Public Records

On June 21, 2016, we published a post discussing an effort by the State of California to obtain copyright protection for public records.  The proposed legislation sought to give copyright protection to public records created using taxpayer funds (such as maps, hearing transcripts, legislative reports, etc.), and would have authorized state and county governments to control and even prohibit their use.  The proposed legislation met with strong opposition, primarily from free speech and open government advocates.  Fortunately, the author of the controversial legislation (Assemblyman Mark Stone of Monterey Bay) saw the error of his proposal and has abandoned the proposed legislation.

Controversial Copyright Bill Advances in California

The California Assembly recently passed a measure that would allow the state government to obtain copyrights for materials that it creates. Critics, such as the Electronic Frontier Foundation, claim that this measure could suppress the dissemination of government funded works. The measure, AB 2880, was passed by a vote of 76-3. Peter Scheer, Executive Director of the First Amendment Coalition, says that the assembly is stepping into a hornet’s nest, noting that the federal government itself does not claim copyright protection in its public works. Jim Ewert, General Counsel for the California Newspaper Publishers Association, says that his concern is the potential for an agency to use copyright as a means to limit the public’s ability to use records that a state or local agency has created. The California Chamber of Commerce has also come out against the proposed legislation.

Important Copyright Tips For Businesses

Copyrights are very powerful rights but often are not fully understood or protected by business owners.  Here are some important tips about copyrights with which all businesses should be familiar:

  1. Register: Businesses should identify and register their copyrights within 90 days of the publication of the copyrighted work.
  2. Notice:  Even though not required, we strongly recommend that businesses place an appropriate copyright notice on all copyrighted works to discourage infringement and cut off the “innocent infringer” defense.
  3. Rights: All businesses must make sure that they have the right (documented in writing) to use any copyrighted materials created by others.  Copyright issues sometimes can be hard to spot so we strongly recommend that businesses retain an experienced intellectual property attorney to conduct a periodic intellectual property audit.
  4. Agreements: All businesses must make sure they have appropriate written agreements in place with employees and other creative personnel regarding ownership and use of copyrighted materials (including, most particularly, materials created by employees and contractors) as well as agreements establishing the right to use copyrighted materials owned by others.
  5. Insurance: Businesses involved in any way in areas that involve the creation and use of copyrighted materials should explore obtaining insurance for infringement claims.  Please note that most commercial general liability policies do not cover intellectual property claims – the purchase of separate coverage usually is required.
  6. Infringement: Businesses should take seriously any infringement of its copyrighted materials as well as claims of infringement asserted by third parties.  In both situations, the business should promptly consult with an experienced copyright lawyer to determine an appropriate and cost-effective course of action.

Supreme Court to Hear Fight Over Cheerleader Uniforms

On September 30, 2015, we posted about a recent case that addressed whether decorative aspects of cheerleader uniforms could be the subject of copyright protection.  Our September 30 post can be found here: https://affinitylaw.wordpress.com/2015/09/30/three-cheers-for-the-wood-flooring-recent-cases-confirm-copyright-protection-for-cheerleader-uniforms-and-wood-flooring-pattern/

The United States Supreme Court recently decided to review the case.  More information can be found in this recent article in The Hollywood Reporter: http://www.hollywoodreporter.com/thr-esq/supreme-court-hear-fight-cheerleader-889321

As the article notes, while the case nominally is about cheerleader uniforms, the Supreme Court’s decision could have far-reaching implications  for Hollywood and could set  boundaries on the copyright protection afforded to costumes.  Stay tuned to this space for updates.

A Brief History Of Copyright Litigation About Popular Songs

Many of our readers may have read with interest the recent media about the copyright litigation concerning Led Zeppelin’s iconic “Stairway to Heaven” where the owners of the rights to a song entitled “Taurus” put out by the 60s band Spirit have sued Led Zeppelin for copyright infringement by the song “Stairway to Heaven.”  This is just the latest in a long line of lawsuits involving alleged infringement and plagiarism of the rights to popular songs.  Accusations of musical plagiarism are a recurring phenomenon, but only rarely end up being heard in formal legal proceedings. Many readers will remember the 2015 case where a jury awarded damages of $7.2 million against Robin Thicke and Pharrel Williams for infringing the copyright in Marvin Gaye’s “Got to Give It Up.”  These artists settled out of court because their songs too closely resembled songs by other artists:

 The Doors’ “Hello I Love You” (1968) – The Kinks’ “All Day and All of the Night” (1965).

Led Zeppelin’s “Whole Lotta Love” (1969) – Willie Dixon’s “You Need Love” (1962).

George Harrison’s “My Sweet Lord” (1970) – The Chiffons’ “He’s So Fine” (1962).

Rod Stewart’s “Da Ya Think I’m Sexy?” (1978) – Jorge Ben’s “Taj Mahal” (1972).

Steely Dan’s “Gaucho” (1980) – Keith Jarrett’s “Long As You Know You’re Living Yours” (1974).

Ray Parker Jr.’s “Ghostbusters” (1984) – Huey Lewis & The News’ “I Want a New Drug” (1984).

Hootie & The Blowfish’s “Tangled Up in Blue” (1995) – Bob Dylan’s “Tangled Up in Blue” (1975).

Janet Jackson’s “Got ‘Til It’s Gone” (1997) – Des’ree’s “Feels So High” (1991).

The Verve’s “Bittersweet Symphony” (1998) – The Rolling Stones’ “The Last Time” (1965).

Avril Lavigne’s “Girlfriend” (2007) – The Rubinoos’ “I Wanna Be Your Boyfriend” (1979).

Here are some sound-alike songs where copying has been rumored but have not resulted in formal legal cases:

Led Zeppelin’s “Since I’ve Been Loving You” (1970) – Moby Grape’s “Never” (1968)

Steely Dan’s “Rikki Don’t Lose That Number” (1974) – Horace Silver’s “Song for My Father” (1964)

Steve Miller Band’s “Rock n’ Me” (1976) – Free’s “Alright Now” (1970)

The Eagles’ “Hotel California” (1976) – Jethro Tull’s “We Used to Know” (1969)

Robbie Dupree’s “Steal Away” (1980) – The Doobie Brothers’ “What a Fool Believes” (1979)

Belinda Carlisle’s “Heaven Is a Place on Earth” (1987) – Bon Jovi’s “You Give Love a Bad Name” (1986)

R.E.M.’s “Hope” (1998) – Leonard Cohen’s “Suzanne” (1968)

Red Hot Chili Peppers’ “Dani California” (2006) – Tom Petty “Mary Jane’s Last Dance” (1993)

Bruce Springsteen’s “Radio Nowhere” (2007) – Tommy Tutone’s “867-5309/Jenny” (1982)

Prince’s “Guitar” (2007) – U2’s “I Will Follow” (1980)

 

Given the enduring popularity of “Stairway to Heaven,” the potential infringement damages could be massive – it will be interesting to see if Led Zeppelin chooses to litigate or settle out of court.  Stay tuned.

 

 

While The Scope Of Copyright Protection Is Broad, Two Recent Cases Involving Yoga Positions And Recipes Show That There Are Limits

In a recent post in this space, we commented on several cases that illustrated that the scope of copyright protection is extremely broad (see here: https://affinitylaw.wordpress.com/2015/09/30/three-cheers-for-the-wood-flooring-recent-cases-confirm-copyright-protection-for-cheerleader-uniforms-and-wood-flooring-pattern).  Two recent cases show that while copyright protection is broad, there still are limits:

Bikram’s Yoga College of India, L.P. v. Evolution Yoga, LLC:  In this well-publicized case, the issue was whether a sequence of 26 yoga positions and two breathing exercises practiced in a specific order, called the “Sequence” and developed by Bikram Choudhury (a seminal figure in making yoga so popular in the United States and throughout the world and the creator of Bikram Yoga, sometimes called “hot yoga”), could qualify for copyright protection.  In 1979, Choudhury published the book “Bikram’s Beginning Yoga Class” that includes descriptions and photographs of the Sequence in practice. In 2002, Choudhury also registered a copyright on the “compilation of exercises” contained in his book.  In 2009, the defendants founded their own yoga studio and offered “hot yoga” classes that included the Sequence.  Choudhury sued for copyright infringement claiming that the defendants infringed on his copyrighted works by offering yoga classes featuring the Sequence.

On October 8, 2015, the Ninth Circuit Court of Appeals held that the Sequence falls squarely within the exclusion detailed in Section 102(b) of the Copyright Act, which excludes from copyright protection “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embedded in such work.”  The Ninth Circuit found the Sequence was a process for obtaining physical and emotional fitness and was, therefore, not copyrightable.

Tomaydo-Tomahhdo, LLC v. Vozary:  The issue in the Tomaydo-Tomahhdo case was whether a book of recipes could qualify for copyright protection.  The plaintiff was a restaurateur who created and ran a successful restaurant and delivery catering business.  In 2012, the plaintiff assembled a book of recipes that had been developed for the restaurant.  The defendant was a former partner in the plaintiff’s business.  He copied the plaintiff’s recipes and used them in a competing catering business, and the plaintiff sued him for copyright infringement.

On October 20, 2015, the Sixth Circuit Court of Appeals held there was no copyright infringement because neither the recipes themselves nor the book which compiled the recipes were entitled to copyright protection.  In so holding, the Sixth Circuit explained that the recipes themselves are not covered by copyright because they are simply listings of facts (i.e. the ingredients) and functional instructions how to assemble the ingredients.  Likewise, the Sixth Circuit held that the recipe book did not have any originality (such as original commentary, pictures, etc. by the author) that qualified for copyright protection separate from the recipes themselves.

In both the Bikram Yoga case and the Tomaydo-Tomahhdo case, the parties claiming copyright protection may have been able to take steps to protect their intellectual property other than merely claiming copyrights in the materials addressed by those cases.  As always, we highly recommend that businesses consult with experienced intellectual property counsel to assess what IP protection may be available to the business.

 

 

 

 

Three Cheers for the Wood Flooring! Recent Cases Confirm Copyright Protection for Cheerleader Uniforms and Wood Flooring Pattern.

Two recent cases show that the bar to obtain copyright protection is very low, and that designs on a variety of media can qualify for copyright protection if the design is not functional and demonstrates a minimal level of creativity:

Varsity Brands v. Star Athletica:  The issue in the Varsity Brands case was whether the decorative designs on cheerleading uniforms were eligible for copyright protection.  By way of background, the Copyright Act does not provide copyright protection for the functional aspects of clothing but it is possible to obtain copyright protection for purely decorative features of clothing.  Where to draw the line between these two bedrock principles of copyright law in the fashion design context has perplexed many courts over the years.

In the Varsity Brands case, the Sixth Circuit Court of Appeals held that the decorative elements of a cheerleading uniform (such as chevrons, stripes, etc.) could be “identified separately from, and are capable of existing independently of, the utilitarian aspects of [the] uniforms” and consequently that the graphic designs on cheerleading uniforms are copyrightable subject matter if sufficiently creative.  The court’s holding in such regard is an application of the copyright doctrine known as the “separability” doctrine.

In so holding, the Sixth Circuit was careful to distinguish between fabric design and dress design.  Fabric design covers designs printed on a finished garment and have been treated by the courts as features that are not functional and therefore are subject to copyright protection.  Dress design graphically sets forth the shape, style, cut and dimensions for converting fabric into a finished garment and has been held to be functional and thus not capable of copyright protection.

Home Legend LLC v. Mannington Mills, Inc.:  The issue in the Home Legend case was whether a two-dimensional laminate flooring design qualified for copyright protection.  By way of background, laminate flooring consists of three functional layers.  Laminate flooring manufacturers then add a decorative layer called “décor paper” which places two-dimensional artwork on top of the laminate flooring.

The decorative layer at issue in the Home Legend case was a layer that simulated the distressed look of a maple floor after years of wear and tear.  The Eleventh Circuit Court of Appeals held that the design was separable from the flooring itself (another application of the separability doctrine) and displayed a sufficiently minimum level of creativity to “hurdle the low bar of copyright originality.”

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