Part II: Short Essays

Last time, I explained my philosophy informing the way I constructed the final exam I gave to my copyright class last semester at Vanderbilt University Law School (which happens to be where I went to law school), plus Part I of said exam which consisted of 12 short answers.

Here, now, is my annotated Part II, complete with my comments about how the essay topics should have been addressed.

Preliminary note: The students were presented with eight short-essay topics a week before the exam period began. Of those, I chose four, and each student chose three of those to answer. That’s why the topic numbers go 1, 2, 4, 7. So, on the one hand, the students got to prepare in detail. On the other hand, there were diminishing returns in over-preparing. I chose to do this because of the three-hour time constraint. The idea is that the students would be able to address the topics in less time if they were able to prepare for specific topics. As a side-benefit, they were also forced to prepare for a wider range of topics than could actually be crammed into a three-hour exam.*

* The idea came to me from my days of teaching at Lawrence Tech in the late 1990’s. We would give the students the essay topics in advance and allow them to bring in a single index card of notes. Testing everything is best, I suppose, but requiring that the students assimilate the knowledge for an exam is second best.

In case you can’t tell from the questions, technology’s more my thing. I’m not unfamiliar with music and entertainment issues, but I usually defer to Tara, who has a lot more experience. Also, we didn’t have time to get into much detail about the music and entertainment industries. Still, I thought it was important to include at least one entertainment question for those students who were considering that area of practice.

Part II: Short Essay:

27% of total grade.

Write short essays—the equivalent of three solid paragraphs or so—on any three (3) of the following topics. Unless specifically requested, you should not perform a fair-use analysis on any of the topics, no matter how tempted! Unless specifically told otherwise, assume all copyrights have been properly and timely registered. Each essay is worth nine (9) points. Try not to spend more than 45 minutes on this Part.

GENERAL COMMENT: Except topic no. 1, my main intent was to present you with the type of fact patterns you might end up with after an initial consultation with a client or potential client. You don’t have all the facts, but you can certainly make reasonable inferences. Human nature is part of the facts, and your ability to extrapolate from the facts is being tested—because lawyers do that all the time. Also, except for topic no. 1, each of these topics are based on actual cases.

-1-

Lana Hitchcock and Peter Gonzales are a song-writing team. She writes lyrics; he writes music. Together, they’ve written about 100 songs, including “Smells Like Love.” Lana sells her copyrights to the music publisher Lazy B Music, LLC, in exchange for 50% of royalties received by Lazy B Music, via a writing that identifies the songs, signed by Lana. Peter, by contrast, holds onto his copyrights. Both Lana and Peter are members of ASCAP and register their works with the Harry Fox Agency (“HFA”). Note that HFA represents songwriters’ interests, not artists’ or music labels’.

Luckily, “Smells Like Love” is a really good country song, and it came to the attention of country-music star Kenny Cheeze, who both sings and plays guitar. His music label is Stiff Board Entertainment, LLC (“Stiff Board”), and pursuant to Cheeze’s contract with Stiff Board, Cheeze transfers all of his copyrights to Stiff Board Entertainment in exchange for a 25% share in all profits made by Stiff Board Entertainment from Cheeze’s work. Stiff Board contracted through HFA for the right to record and distribute “Smells Like Love.” Cheeze and his four-member band recorded “Smells Like Love” on Cheeze’s album, Mild Country, which has ten songs on it total, all of which are performed by Cheeze and his band. Stiff Board manufactures and distributes to the public CDs of Mild Country.

Stiff Board also licenses each song of Mild Country, including “Smells Like Love,” individually to Banana Corp., to be sold as digital downloads through Banana’s “uTunes” service. Pursuant to that license, Banana pays Stiff Board 50 cents for every digital download.

“Smells Like Love” is a hit, and many radio stations play it several times a day for a few months. Sales of Mild Country are also brisk.

GENERAL COMMENT: This was the least popular of the four choices, as I had expected. I wanted a short essay for students who were interested in the entertainment law side of things. To make this question work based on how lightly we touched the subject, I had to skate over SEVERAL details about the the music industry, especially the role HFA plays. As you know, music and entertainment aren’t my focus (though they are my law partner’s), but it’s only fair that folks interested in those fields have an opportunity to show what they know.

Answer the following questions, with a brief explanation of your reasoning:

A. After taking its cut, ASCAP distributes $100,000 in royalties to all rights holders of “Smells Like Love.” What exclusive right or rights is/are implicated? Of this $100,000, how much does Lana, Peter and Cheeze each receive?

COMMENT: The public performance rights in the music are implicated, not any rights in sound recordings (thanks to § 114(a)). Lana and Peter are joint authors. Cheeze (and Stiff Board) has no interest in the distribution because ASCAP collects only for public performance of music, not sound recordings, and Cheeze’s interest would only be in sound recordings. Peter owns his 50% interest in the song, so he gets half of the $100,000, or $50,000. Lana, however, must split her $50,000 with her publisher, per her contract, so she only gets $25,000. Bonus points for wondering about the validity of Lana’s assignment.

B. Stiff Board makes $1,000,000 profit from sales of Mild Country CDs, and HFA, pursuant to its agreement with Stiff Board, is ready to distribute $100,000 (after taking its cut) related to “Smells Like Love.” What exclusive right or rights is/are implicated? How much does Lana, Peter and Cheeze receive, and from whom?

COMMENT: Reproduction (and distribution) rights in both the music and the sound recordings are implicated, so Lana, Peter and Cheeze should all get something. HFA handles songwriters’ rights (i.e., in reproduction of the song, not the sound recording), so it’ll distribute the $100,000 the same way as for part A above. Thus, Peter will get $50,000 but Lana only $25,000. Cheeze gets 25% of the $1 million profit, or $250,000.

C. You operate a small record store, purchase 100 Mild Country CDs from an authorized distributor with the intent to sell them the public for a profit. Do you need a license to do so? If so, from whom?

COMMENT: No, you don’t because you purchased the copies outright. Under the First-Sale Doctrine, you’re OK to re-sell. Note that § 109(b)(1)(A) doesn’t apply here because it is limited to lending and leasing for profit.

D. If Banana sold 10,000 digital downloads of “Smells Like Love,” what exclusive rights are implicated? Will Lana and Peter be receiving royalties via HFA, ASCAP, both or neither?

COMMENT: The reproduction (and distribution) rights in both the music and the sound recording (and certainly not a public performance right, however much ASCAP wished otherwise—bonus points for mentioning the ASCAP decision). Since HFA already has an arrangement with Stiff Board, Lana and Peter should look to HFA for their royalties.

E. If, after Mild Country has been released, filmmaker Hiro Hideki was making a short movie, Viva Nashvegas, and wanted to use about 45 seconds of “Smells Like Love” from Mild Country as background music, for which exclusive rights would Hideki need to obtain licenses, and from whom, to use the song this way?

COMMENT: What Hideki wants to do requires a “sync license,” and he must go to the actual rights holders. He’ll need to obtain reproduction and public-performance licenses from Lazy B OR Peter and from Stiff Board. Bonus points for noting that you actually only need a license from Lazy B OR Peter (and even better for noting that the licensor has to account to the other).

F. How, if at all, would your answer change if Hideki’s friend, Benny Whizz, recorded a version of “Smells Like Love” that sounds nearly identical to Cheeze’s version, and Hideki used that version in Viva Nashvegas?

COMMENT: In this case, Hideki would still need to get a license from Peter OR Lazy B. He might be able to take advantage of a compulsory license under § 115 (from HFA, since that’s its primary mission), but it’s unclear how the ‘for private use” would shake out.

G. Hideki ends up making Viva Nashvegas with the Cheeze version of “Smells Like Love,” and he successfully obtains the necessary licenses, which are NOT transferrable. In exchange for a cut of revenues, Hideki licenses Viva Nashvegas to VideoBee, LLC, for on-demand streaming. VideoBee is savvy, wants to “play it safe” and has long since learned that its revenue model effectively prevents it from taking advantage of any of the DMCA safe harbors. If you were advising VideoBee, for which exclusive rights, if any, and from whom, if anyone, would you advise VideoBee to obtain licenses related to “Smells Like Love”?

COMMENT: Because streaming might implicate both the public performance and (somewhat surprisingly) the reproduction right, VideoBee should obtain those rights from Lazy B and Peter; AND it should obtain the reproduction right from Stiff Board. (If you were really sharp, you’d realize that VideoBee also needs a license to “perform the copyrighted work publicly by means of a digital audio transmission,” not a public-performance license, but we didn’t cover that specifically in class.) Bonus points for mentioning the Rogers & Hammerstein case.

-2-

Henry starts a retail business selling vintage hipster clothing in Nashville, Tennessee, called “Hipchic.” His girlfriend, Sheila, is a free-lance web designer, and Henry asks her to make a website for his business. She consults with Henry regarding what he wants the webpages to look like and what functions he wants them to perform (e.g., a map function, to show where his store his located, and a “shopping cart” functionality). Based on that consultation, as well as on her capabilities and Henry’s budget, she presents him with a number of design and function options that Henry can mix and match to some extent. Henry, again with Sheila’s consultation, makes his choices, and Sheila gets to work.

Normally, to create these webpages, Sheila would need to compose a good deal of HTML code (for the design features) and Javascript code (for the special functions). You can think of the HTML and Javascript code for each webpage as a separate program. Fortunately, she doesn’t have to because there is made freely available “modules” of such code that will enable all of the design features and all but one of the special functions. All Sheila needs to do is arrange the modules within the larger webpage-program. Most of Sheila’s programming peers would agree on the best way to arrange the modules.

The exception is a feature that allows visitors to the website to click on a picture of an item of clothing and rotate the picture as though it were three-dimensional (the “3D Rotation Feature”). There was no freely-available module of Javascript that performed exactly that function, so she wrote the necessary Javascript herself, with some difficulty. But, in the end, she was successful.

The website is successfully implemented, and Henry is very pleased. The website is hosted by a third party, but Sheila kept a copy of the webpage programs (i.e., all of the HTML and Javascript code), which is a normal practice among web designers. Later, however, Henry and Sheila break up, and Sheila uses the Hipchic website’s HTML and javascript to make and place online a website that is nearly identical to the Hipchic website, but subtly mocks Henry for his supposed shortcomings as a boyfriend. It does NOT mock his business, merchandise or business skills—her site is purely a personal attack.

May Henry enjoin the mock-Hipchic website? May Sheila enjoin Henry’s real Hipchic website? Is there anything Sheila might need to do first before she can enjoin Henry’s website? Is there anything, short of taking down his whole website, that Henry could do to protect himself? Assume proof of irreversible harm in both cases.

COMMENT: How many works are there? Are we dealing with a single unified work, or two works: the design of the website and the underlying code? Pretty strong case that there are two copyrights here. Hardly anyone really dealt with this explicitly, but it was clear that the best answers all assumed two different copyrights. The analysis is certainly much easier.

Initial ownership: How you come out on this issue colors the rest of your answer. If the website is a work made for hire, then Henry is the owner of the copyright. But the website doesn’t fall into any of the “work made for hire” categories, and it’s a real stretch to describe Sheila as Henry’s employee under Community for Creative Non-Violence. Still, you have to put this possibility to rest before moving on. Is it a joint work? If so, then both Henry and Sheila are permitted to exploit the work how they see fit—more important, they can’t enjoin each other. Here, deciding whether we have one copyright or two might make a big difference. Henry clearly has no claim on copyright in the underlying code, but he MIGHT on the design. In the end, Henry is really just making suggestions and minor choices; Sheila is the real driving creative force, if we’re following Childress. (Not all courts would be as definitive.) Some very sharp minds, however, realized that Henry would logically have written the marketing materials used in the website, and that might strengthen his argument for a joint work.

Copyrightability: Again, it helps to view the website as two copyrights: visual design and underlying code. The visual design is copyrightable, even if the images and writing were prepared by someone else, because Sheila had to decide on the arrangement of those elements. Turning to the underlying code, you really needed to perform a quick analysis under Computer Associates. You have to throw out all the modules except the 3D module because they’re in the public domain. The arrangement of and inter-relationships between the modules might be copyrightable, but we have evidence that Sheila’s choices were dictated by efficiency. The 3D modules by itself, however, is probably copyrightable—but only the expressive code, not the idea of a rotating 3D image. That the coding was difficult is irrelevant.

Implied License: If Henry has any kind of license from Sheila, he’s protected. There isn’t an explicit license, but this is a classic case for an implied license. In fact, there’s a good case for a non-revocable implied license because there’s some evidence that Sheila was compensated (e.g., mention of Henry’s budget, which implied payment of some kind). However, the fact that Henry and Sheila were dated clouds the issue because perhaps he didn’t pay and she didn’t insist. (Maybe that’s why they broke up in the first place?)

(Registration: Several people doubted that either party registered the copyright in any part of the website. I was honestly impressed by the observation, despite the clear instruction that we’re to assume timely registration, because that’s realistic.)

Applying the Injunction Factors: Remember, we are assuming irreparable harm. Henry’s case falls apart as soon as you consider likelihood of success, unless you somehow convinced yourself that he had initial ownership of Sheila’s work. Sheila’s case isn’t much better, even if you concluded (correctly, in my opinion) that she owns the copyright, unless you concluded that the implied license is revocable. Several smart people, in balancing the hardships, were concerned about the effect on Henry’s business of granting Sheila an injunction. In reality, most courts wouldn’t be all that worried: he just needs a new website is all. The fact that Sheila’s website is mean-spirited is just a huge red herring that many people fell for.

Henry’s Best Course of Action: He could simply re-design the website (that wouldn’t be that hard—you should re-design your website every year or so anyway), and have someone re-write the 3D module from scratch.

Unbidden, a few very perceptive people suggested that Sheila send a DMCA take-down notice to Henry’s web-hosting company. That’s clever and a little bit nasty. The open question is whether Sheila needs to evaluate the implied-license defense.

-4-

Slick Productions, LLC, produces “skins” for smart phones, like the iPhone and Galaxy. The skins serve several practical functions: they protect the phone and make it easier to grasp. But they also look nice, with cool, hip and/or retro designs printed on them. Slick Productions’ “skins” are made from molded plastic, and fit the form of the phone for which they’re designed. However, Slick Productions has recently introduced a  new line of “skins” called “3D” that still fit the phone snuggly but also have design elements protruding from the skin. Two of these designs are:

a. The “Shark Skin”: This skin has a shark-like dorsal fin sticking out of the side of the skin. Its printed design consists of numerous fluorescent dots evenly spaced against a lime-green background.

b. The “Chibi Cat Skin”: This “skin” has two cat-like ears sticking out of the top of the skin. Its printed design is a cheerful pink with the image of a happy, cute cartoon kitten on the back.

These designs have been fairly popular, though some customers complain that the shark fin makes it hard to fit in their pockets.

Knockoff Productions, LLC, is now selling exact duplicates of the shark-like and cat-like skins, including the cat-like and shark-like protrusions. Meanwhile, Offknock Productions, LLC, is selling skins that duplicate the imagery of the skins but not the cat-like and shark-like protrusions.

Slick Productions sues both Knockoff Productions and Offknock Productions. Assuming irreparable harm, assess the strength of Slick Productions’s claim for permanent injunction against both defendants as to the “Shark Skin” and the “Chibi Cat Design.” Assume that your circuit has applied both the Kieselstein-Cord and the Brandir tests, but not any of the others.

COMMENT: It’s easiest if you mentally separate (as it were) the 3D elements from the 2D elements. You really don’t need to apply a conceptual-separability analysis to the 2D elements. If you copied the designs onto paper, or if you copied a copyrighted image onto a phone case, would your analysis really be any different?

There are two keys to analyzing this problem. First, you had to do more than just quote the Brandir and Kieselstein-Cord tests. You had to show you understood them through analysis. I chose those two tests because they yielded appreciably different results. Under Brandir, it seems to me, copyrightability is all but assured. Under Kieselstein-Cord, by contrast, it’s a much closer question. The lesson here is that what test you use sometimes matters, and sometimes the tests aren’t good fits for a particular fact pattern.

The shark-fin made that phone cast much more likely to be copyrightable because it’s impracticable. Its choice was almost certainly aesthetic, not functional. But many people made the logical error of assuming the lack of an impracticable element, by itself, doomed the Chibi Cat phone case. By no means. It just makes it a harder case. You still need to do the analyses.

The other key is to perform a minimum-creativity test on the dot-pattern on the Shark case. This could have gone either way. Evenly-spaced dots aren’t very creative, but color choice and choice of the spacing might be creative enough. (My intuition is that this doesn’t quite cut it. But without an actual picture, it’s hard to tell.) Many people missed this issue or skated over it.

Some people went the extra mile and performed a short infringement analysis, noting that popularity implied access, or discussing the “striking similarity” doctrine. A number of people brought up Posner’s tongue-in-cheek suggestion that we compare the shark fin and cat ears to real shark fins and real cat ears. Some people also remembered that conceptual separability isn’t the only kind of separability: there’s physical separability, too. More important, the shark case is arguably copyrightable under physical separability.

-7-

George Kearns is a well-established portrait artist who lives in Germantown, Tennessee, a wealthy suburb of Memphis, Tennessee. He is popular among both “new money” and “old money” in and around Memphis. He has become a big fan of the new television show Memphis, which is about the music industry in Memphis and its intersection with local corrupt politics. Memphis is produced by Local Trousers, LLC, and carried by the major network, XYZ Broadcasting, which is owned by Lerner Corp.

One of the main protagonists of Memphis is Mary Bell, an aging blues singer who remains popular but whose star is fading, in part because her preeminence is being challenged by a more “urban” and younger blues singer. On the show, “Mary Bell” still lives well, with a nice house, and in her bedroom are two portraits of girls who are supposed to be “Mary Bell’s” daughters. George is a fan of the show. One evening while watching the show, he nearly fell out of his chair when he recognized one of the portraits because he had painted it!

George’s work was called Portrait of Laura Snowe, a portrait of a little girl. He painted it several years ago and sold it to Hank Snowe, the man who commissioned it and the little girl’s father. Hank Snowe has never made any copies of Portrait of Laura Snowe and has never displayed it outside his home.

The child of the Memphis painting was different, but everything else in the painting was exactly the same as Portrait of Laura Snowe. The Memphis painting was on-screen for perhaps 2 seconds, and it’s a little out of focus, but George had no trouble recognizing it immediately.

George called XYZ Broadcasting and learned that Local Trousers uses an artist, Susan Lax, for the show’s paintings. Lax swears that she’s never seen George’s original Portrait of Laura Snowe, and she has never visited Hank Snowe’s home (Hank can confirm that). George does use a digital copy of Portrait of Laura Snowe on his website to promote his talents, and he wonders if that’s how Lax got a copy of it. It is not very difficult to use computer software to modify to replace the subject of a portrait with a different subject.

Unfortunately, until recently, George never knew it was a good idea to register copyrights. His lawyer has now registered the copyright Portrait of Laura Snowe, using an expedited process. If George sues Lax, Lerner Corp. and Local Trousers, how strong would you assess his copyright claims to be? Assuming George does not wish to pursue a preliminary injunction, what remedies would you say are available against each?

COMMENT: The key to this topic is to recognize the different exclusive rights at issue and to be sure to analyze them correctly:

Lax: She is accused of reproducing and/or adapting George’s painting. As a few sharp minds pointed out, it hardly matters which right is implicated, since the analysis is going to be the same. Lax “swears” she’s never seen George’s painting, but do you really believe her? The paintings are exactly the same, except for the subject of the portrait, we’re told photoshopping could easily swap out one child for another.  And we also know that a digital version (making it easy to photoshop) of the painting was available, which is probably enough evidence of access in light of the similarities.

Local Trousers: There are two exclusive rights at issue with Local Trousers. First is the public display right, which leads almost immediately into a discussion of de minimis displays on TV, which most people handled really well. (The best discussions on this subject noted that George isn’t a very good source of evidence for substantial similarity since he’s hardly an “ordinary viewer.”) Second is the reproduction right. In order to shoot the film, Local Trousers necessarily made a reproduction of the painting on videotape (or whatever). And that infringement isn’t de minimis at all. There is also a question about whether Lax is an employee of Local Trousers (the question wasn’t very clear), which might make Local Trouser’s directly liable for Lax’s actions under respondeat superior. It doesn’t change the analysis that much, since that wouldn’t let Lax off the hook, and Local Trousers is already in trouble.

Lerner: OK, now Lerner is only directly liable if there is a violation of the display right, since it broadcasts the TV show. Again, people handled the de minimis display discussion very well, generally.

Secondary Liability: Especially enterprising students also examined whether Local Trousers and/or Lerner might be liable under contributory or vicarious liability. I think the answer is no in both cases because they don’t have the requisite knowledge for contributory and lack the control over Lax for vicarious.

Turning to remedies: If you decided the public display right wasn’t violated (and students split about 50-50 on that), then Lax is in some trouble because she certainly made a profit that can be disgorged (i.e., the amount she received from Local Trousers). Getting a remedy from Local Trousers, however, would appear to be very difficult. Apportioning profit would seem to be impossible. The best one could hope for is evidence showing the “going rate” for paintings used in TV. A permanent injunction might not be as valueless as some assumed. It would be of minimal value against Lax, who is unlikely to pull such a stunt again, but if Memphis is popular enough to go into re-runs or even syndication, an injunction might be useful leverage.

So much for Part II. Next time, Part III, which consists of two long essay topics. You might get a kick out of one of them.

Thanks for reading!