Moving from the celebratory to the spiritual, the lawyers who (literally) brought you “Happy Birthday” once again find themselves looking to overcome entrenched copyright interests related to one of the country’s most well-known anthems.  Attorneys Mark C. Rifkin and Randall Scott Newman, who recently succeeded in bringing “Happy Birthday” into the public domain, are aiming for a follow-up hit, filing suit against The Richmond Organization (TRO) and Ludlow Music over the copyright to the Civil Rights anthem “We Shall Overcome.”

TRO has held copyrights for “We Shall Overcome” since the early 1960s and has collected millions of dollars in fees for its use since then.  “We Shall Overcome” was popularized by folk singer Pete Seeger in the late 1940s and returned to prominence during the Civil Rights Movement in the 1960s.

Seeger Did Not Write “Overcome”

Rifkin and Newman, as they did in the “Happy Birthday” case, assert on plaintiffs’ behalf that the song is derived from works pre-dating the copyrighted versions.  “We Shall Overcome,” they say, is virtually identical in its musical and lyrical composition to “We Will Overcome,” which Mr. Seeger published and copyrighted in 1948.  Thus, say Rifkin and Newman, “[b]ecause the copyright to the 1948 publication of People’s Songs, Reg. No. B184728, was never renewed and thus expired  in September 1976, … We Shall Overcome entered the public domain no later than that date.”

Origins of the Song Date Back to Early 1900s

The attorneys actually believe that the song entered the public domain far earlier.  Indeed, “We Will Overcome” is a turn-of-the-20th-Century African-American spiritual that Mr. Seeger freely admits learning from a friend.  According to a Library of Congress blog post from 2014, the song appears to have roots in two different songs from that period, one from which its lyrics are derived, and the other from which it draws its melody.  The individual(s) who combined the two, however, is not currently known.

Only time will tell whether Rifkin and Newman turn out to be one hit wonders, or whether they can “Overcome” once again.  If only there were a song they could use to motivate themselves…

[This post was written by Jason Horst.]

A young actress agreed to appear in a low-budget, Middle Eastern themed action film. The producer re-cut and over-dubbed the video, which included five seconds of the actress’ performance, fashioning it into “Innocence of Muslims,” an anti-Islamic screed, which portrayed the Prophet Mohammed in an exceedingly offensive way. When the producer uploaded his video to YouTube, there were violent protests throughout the Middle-East. An Egyptian cleric issued a fatwa calling for the deaths of everyone involved in the video, including the actress. The actress sued the producer and Google, seeking an order to take down the video.

The Trial Courts Deny the Actress’ Motion for Takedown Orders

The actress sued the producer and Google, YouTube’s owner, in California Superior Court, alleging, inter alia, copyright infringement and sought an immediate take down order. The actress claimed that she owned the copyright to her performance and that the producer and Google violated that copyright. When the state court denied her motion for an injunction, she dismissed her state court action and filed a similar action in the U.S. District Court for the Central District of California, whose jurisdiction includes Hollywood. The District Court also denied the actress’ motion for a takedown order, finding (a) that she was unlikely to succeed on the merits because her copyright claims were unclear (since she had granted the producer an implied license to distribute her performance as part of the video) and (b) that the risk of irreparable harm had diminished since the video had been on the internet for five months.

9^th Circuit Panel Grants Takedown Order, Bad Film Makes Bad Law

The actress appealed, and Justice Kozinski, writing for a divided panel of three justices from the 9^th Circuit, found the district court abused its discretion and remanded the case back to the district court with clear guidance to grant the motion, even though the Court described the actress’ copyright claims as “debatable.”

The Court conceded that, even if the actress were to “complain that the film has a different title, that its historical depictions are inaccurate, that her scene is poorly edited or that the quality of the film isn’t as she imagined, she wouldn’t have a viable claim that her implied license had been exceeded.” But, in a statement reflecting subjectivity and jurisprudential gymnastics echoing Justice’s Stewart’s famous “I’ll know it when I see it” standard, the Court opined that her implied license was violated because the “the film isn’t intended to entertain at all.” The Court cited as evidence the fact that the producer lied to the actress regarding the nature of the film, which illustrates the Court’s extraordinary naiveté regarding the inner workings of Hollywood; it’s a rare exception when a finished film resembles the initial vision. The Court further disagreed with the lower court on the question of irreparable harm. Even though the actress’ name and photograph had been publicized and the fatwa had already issued, the Court concluded that the risk would reduce if Google took down the video. The Court rejected Google’s assertion that a takedown order was unconstitutional restraint of speech under the First Amendment.

The 9^th Circuit Order En Banc Reviews and Reverses the Panel, Reinstating the District Court’s Denial of the Injunction

The full 9^th Circuit, sitting en banc, reversed the panel’s decision.

Strike One-Actress’ Performance Not Copyrightable

9^th Circuit En Banc found that the actress’ performance was not the proper subject of copyright, noting that the Copyright Office generally refuses to copyright actors’ performances in motion pictures and had refused the actress’ application here, and that, while the producer had “fixed” her performance in a tangible medium (film), she had failed to do so.

Strike Two-Lack of Nexus Between Copyright Infringement and Irreparable Harm

The Court recognized the seriousness of the fatwa, but noted the “mismatch between her substantive copyright claim and the dangers she hopes to remedy….” The Court likened this to a prior case where wrestler Hulk Hogan sought to prevent the posting of a sex tape under a copyright infringement theory. Hulk Hogan lost because any irreparable harm flowed from the private nature of the video’s content and not from any “irreparable harm in the copyright sense.” The Court also agreed with the District Court’s finding that the actress’ delay in seeking relief undercut her claim for emergency relief.

Strike Three-The 9^th Circuit Panel’s Order “Gave Short Shrift to the First Amendment”

Finally, the 9^th Circuit’s En Banc decision admonished the panel for ignoring the “First Amendment values at stake. The mandatory injunction censored and suppressed a politically significant film-based upon a dubious and unprecedented theory of copyright.” Citing Supreme Court precedent that copyright claims are not “categorically immune from challenges under the First Amendment,” the Court held that “Prior restraints pose the ‘most serious and least tolerable infringement on First Amendment rights’ and [the actress] cannot overcome the historical and heavy presumption against such restraints with a thin copyright claim in a five-second performance.”

Dissent-Actress’ Performance is Copyrightable

In a dissent that is bound to launch a thousand law review articles, Justice Kozinski accused that majority of making “a total mess of copyright law, right here in the Hollywood Circuit.” In an argument that echoes the “when does human life begin” debate, Justice Kozinski argued that the majority erred in holding that only the final film is subject to copyright, when, in fact, each “contribution to a movie can be copyrightable (and thus can be a ‘work’).”

Michelle Phan is a YouTube celebrity and beauty guru and has garnered over 7 million subscribers and one billion lifetime views. However, not everyone is a fan of Ms. Phan. On July 16, 2014, Ultra International Music Publishing, LLC and Ultra Records, LLC (collectively, “Ultra”) sued Ms. Phan for copyright infringement for allegedly using their songs without a license. A licensing agreement is a legal contract between two parties, known as the licensor and the licensee. Here, Ultra (the licensor) would have granted Ms. Phan (the licensee) the right to Ultra’s copyrighted music. However, Ultra claims that Ms. Phan had illegally used forty-five (45) different songs, including sole works of Kaskade or a collaboration between Kaskade and other artists, in her YouTube videos and is seeking up to $150,000.00 in damages per infringement.

Although Kaskade declared his support for Ms. Phan by tweeting, “Summary: I’m not suing @MichellePhan + @ultrarecords isn’t my lapdog. I can’t do much about the lawsuit except voice support for her.” Ultra issued an official statement that reads, “When a music artist or songwriter signs to Ultra, it is our responsibility to protect what they have created. Enforcing copyrights is fundamental to the survival of artists, writers and producers, and to Ultra’s ability to continue to invest in and support them, so that they can continue to bring great music to music fans around the world. Whatever Ultra collects enforcing these important rights is shared with its artists according to their agreements.”

Armed with strong ammunition, Ms. Phan went on the defense and filed her counterclaim against Ultra on September 18, 2014 for Declaratory Relief, Violation of Section 512(f) of Digital Millennium Copyright Act, and Intentional Interference with Contract. In particular, Ms. Phan claims that in 2009 she contacted Ultra’s Senior New Media Manager to negotiate an agreement whereby she would be granted permission to use any of Ultra’s music in exchange for her including credit to the artist and an iTunes link in her YouTube videos. For the next four years, Ms. Phan and Ultra worked cooperatively pursuant to the aforementioned agreement. Ms. Phan alleges that Ultra’s representatives even offered suggestions to particular tracks by its artists that could be used as background music in her YouTube videos. However, on March 18, 2014, Ultra demanded that Ms. Phan cease and desist from using any of Ultra’s music. Ultra also sent takedown notices to YouTube for 12 of her videos. Ms. Phan is now seeking damages for Ultra’s takedown notices, which she claims were sent in bad faith, and for knowingly materially misrepresenting her infringing use of the music. She is also seeking damages for Ultra’s bad faith actions in attempting to disrupt her contractual relationship with YouTube.

It is unclear whether the negotiated terms of the agreement between Ms. Phan and Ultra was finalized in a written license agreement. However, it does not seem to be the case given that neither of parties attached any agreement to their respective complaint or counterclaim. If this is the case, the obvious take away message is to “get it in writing.” Although some licensing agreements can get lengthy and complicated, most agreements include terms such as the grant/scope of the license, royalty rates, how royalties are calculated, length of the license, and renewal options. A finalized license agreement probably could have saved each party time and money because now each side will have the additional “joy” of arguing whether a license agreement (if any) was formed via those emails between Ms. Phan and Ultra’s Senior New Media Manager and what were the terms of that agreement.

Sure, there are lots of viral YouTube videos.  There’s Katy Perry’s left shark, the owls dance off  and of course the kitten sup-purr bowl, but it might surprise you to learn that YouTube removed a video for being too popular.

That’s right, YouTube removed a music video of “Luv Ya Luv Ya Luv Ya” (“Luv Ya³”) by the alternative rock group Rasta Rock Opera, claiming it had become too popular through nefarious means.  A search for the video now results in the YouTube equivalent of  Microsoft’s blue screen of death.

YouTube alleged that Rasta Rock Opera’s distributor, Song Fi, gamed the music video’s “view count” by using robots or spiders (sounds like a David Bowie song) to ring up more views more quickly than was humanly possible.

Song Fi denied gaming the system and sued YouTube, and its parent Google, in the Federal Court for the District of Columbia.  Song Fi later amended its suit, adding a six year old who appeared in the music video, N.G.B., as a named plaintiff.  N.G.B. and his musical posse alleged breach of contract, libel, tortious interference with business relationships.  Plaintiffs’ Complaint alleges that YouTube discriminates against small, independent artists, while allowing major music labels to use spiders and robots to inflate view counts for “artists” like Psy (Gangnam Style) and Justin Bieber.  Plaintiffs sought a preliminary injunction ordering YouTube to restore Luv Ya³ along with its prior view count of over 23,000 views.  YouTube responded with motions to dismiss or to transfer the case to the Federal Court in Northern California.  The D.C. Court granted YouTube’s motion to transfer pursuant to the venue selection clause on YouTube’s terms of use, but denied, without prejudice, Plaintiffs’ motion for a preliminary injunction and YouTube’s motion to dismiss.

While not ruling on the merits of Plaintiffs’ claims, the D.C. Court showed some sympathy to Plaintiffs’ libel claim regarding YouTube’s posting that “[t]his video has been removed because its content violated YouTube’s Terms of Service.” While recognizing that YouTube’s terms of use prohibit the use of spiders and robots, the Court stated that “it seems to me that [false counts] are not content.”   In fact, the Court told the YouTube attorney she thought he should “take this back to your client and your client should rewrite the contract.”  If the California court agrees, YouTube may not be able to hide behind its current terms of use.

Of course, N.G.B. and the other Plaintiffs may have already won, as they stand to gain as much or more notoriety by suing YouTube/Google and having bloggers blog about it, as they do by posting music videos featuring six year olds.