Rebecca Tushnet

I had a great time presenting this to the Copyright Society of Los Angeles. My slides.

This is going to be an opinionated overview; I know you’re
an expert audience and I’m going to try to highlight developments you may have
heard less about or at least spent less time thinking about.

I’m going to begin with some notes about legislative and
administrative developments—the Next Great Copyright Act may not be coming, but
changes well beyond the Music Modernization Act are on the horizon. After that
I’ll review a number of cases with not necessarily much of a throughline,
though I have some larger thoughts about various topics.

Legislatively:

We may get the CASE Act as part of the continuing resolution:
This would mean the institution of copyright Small claims run out of the
Copyright Office. The key features are: removal of registration requirement for
up to $15,000 in statutory damages; opt-out instead of opt-in; constitutional
questions because of the very limited possibility of Article III review
contemplated by the setup (due process because of the lack of an opt-in
requirement and separation of powers issues because these would be Article I
judges not in the executive branch); increased deference to Copyright Office in
other areas on the horizon?

DMCA reform: Sen. Tillis plans to release a draft next week. 

1201 rulemaking for exemptions from the prohibition on
circumventing access control  measures:
Ongoing; second round using a streamlined process for renewing existing
exemptions. The Copyright Office is obviously interested in minimizing the ongoing
burden of the exemption proceedings, and enthusiastic about getting Congress to
at least let it make permanent exemptions so that it doesn’t have to redo all
this work every three years. Until then, it has indicated its intention to
renew every exemption for which a short-form petition asserting the continued
need for that exemption has been filed, in the absence of something more than
pro forma opposition from the usual suspects—which is to say representatives of
the music and movie industries.

Music Choice v. Copyright Royalty Board, 970 F.3d 418 (2020)

Illustrates that the increased judicial skepticism of administrative
lawmaking may well be coming for certain Copyright Office functions as well.
Specific holdings:

Under the DMCA, a lower grandfathered royalty rate is paid
by some music services that were early providers of digital music
transmissions. The Board’s categorical exclusion of Music Choice’s
transmissions from the grandfathered rate conflicted with the unambiguous
statutory language, though the board had discretion to determine whether parts
of Music Choice’s current service offering, which includes mobile applications
and internet-exclusive channels, should be excluded from the grandfathered
rate. The Board also acted arbitrarily and capriciously in altering the audit
standards for Music Choice.

Other Caselaw: I’m roughly going to follow the outline of my
copyright course, though the emphasis will be on new and interesting cases
rather than trying to cover all the aspects of the course.

I.          Subject
Matter

Obviously this is the marquee area with high profile cases,
but Google v. Oracle is still pending so it will be a big case of 2021.

With respect to the other Supreme Court case about copyright
subject matter, Georgia v. Publicresource.org: Supreme Court articulates a
“government edicts” doctrine that says the law is not copyrightable even
without the need for the statutory exclusion making works of the US government
uncopyrightable.

The most interesting thing to me is that we are constantly
told how textualist the new conservative majority is going to be. This isn’t
even close to a textualist decision; instead it is derived from basic
principles that inform the legal meaning of the word “author” despite the fact
that no one would reasonably expect those principles to show up in a generalist
dictionary definition; particularly striking contrast to Star Athletica decided
only a couple of years earlier which disregards even legislative history. I
speculate that one reason that the Justices in the majority were willing to do
this is that the subject matter involved the actual text of the law itself,
whose fundamental nature they think they understand much better than they understand the average
subject matter like visual art or music. When it comes to law, they lack any
epistemological humility about its essence. And that might well be ok!

Second, as stated, the rule that there’s no © in works “(1)
created by judges and legislators (2) in the course of their judicial and
legislative duties,” leaves open what happens if the works are created by
lobbyists and then incorporated into law, or if they’re made part of the law
like building codes drafted by private parties.

International Code Council, Inc. v. UpCodes, Inc., 2020 WL
2750636 (S.D.N.Y. May 26, 2020): Refused to decide on summary judgment both the protectability and fair use questions; note inclusion of constitutional argument that if it’s not copyrightable, then the legislature engages in a taking by enacting a private code into law.

Bork v. Tran Huong Quynh, 2020 WL 4474485 (M.D. Fla. Aug. 4,
2020): Not a really significant case, but I like it because it involves a
strong illustration of the concept of relativity of title—the owner of these
works is not Disney, and successfully registered the copyright thereto and
asserted an infringement claim against a person who copied these works on Etsy.

II.        Authorship

Everly v. Everly, 958 F.3d 442 (6th Cir. 2020) is a case
that suggests the possibility of new things: Existing precedents hold that a
claim for ownership “accrues only once, and if an action is not brought within
three years of accrual, it is forever barred” and this includes claims for
authorship. Though there can be disputes over what starts the limitations
period running, an express repudiation of a person’s authorship claim will do
so. Recently appointed Judge Murphy’s concurrence, however, suggested that the
statutory language and other rules of construction compelled a different
finding: authorship, too, should be subject to the rule of Petrella and the
remedies created by a successful authorship claim should merely stretch back
only three years.

Biggest takeaway: the federal judiciary has been
comprehensively reshaped over the past 4 years by people who were not hired for
their opinions on IP. There is the potential for very big, but highly
unpredictable, changes in IP doctrines.

III.       Infringement

The removal of the blanket license for licenses that host
political events has led to a number of C&D letters and the occasional
lawsuit against the Trump campaign, highlighting the importance of the ASCAP
etc. licenses for daily business life, and also highlighting the relevance of
privately negotiated agreements to changing statutory schemes. Here I will tout
the work of Kristelia Garcia who has written fascinatingly about private
agreements and how they interface with the statute, including sometimes by
depriving artists of the royalties they might otherwise be entitled to get.

Embedding as implicating any of the exclusive rights:
thought it was settled; isn’t: McGucken v. Newsweek LLC, 464 F.Supp.3d 594 (SDNY 2020). Instagram is leaving users of its embed feature twisting in the wind (also
rejecting a fair use defense on a motion to dismiss though leaving open a
little room for a different result later; in the unlikely event that the
Supreme Court says something about the relationship between common industry
beliefs and fair use, that could bear on the outcome)

Skidmore and progeny: While 2019 might have been the peak
year for finding musical work infringement based on stylistic similarities—both
in the Blurred Lines case and in the Taylor Swift lawsuit over players gonna
play/haters gonna hate—2020 represented a real reversal of the trend, not just
in Skidmore itself but in some cases that clearly took guidance from it.

1.    
Skidmore: it is not enough to assert “a
‘combination of unprotectable elements’ without explaining how these elements
are particularly selected and arranged.”

2.    
Cortes v. Universal Music Latino, — F.Supp.3d
—- (2020) “Despacito” or “Despasito” As Title and Lyric and other shared
words were not protectable, nor were the number of times the words were used,
nor was the general style or theme of the works

3.    
Gray v. Perry, 2020 WL 1275221 (C.D. Cal. Mar.
16, 2020): Many if not most of the elements that appear
in popular music are not individually protectable. Music, perhaps more than any
other work of art, “borrows, and must necessarily borrow, and use much which
was well known and used before.” Further, the court held, none of these
individual elements are independently protectable. It was plaintiffs’ burden to
establish the protected elements of their allegedly infringed work, and they
didn’t show that what was copied was protectable. “A relatively common 8-note
combination of unprotected elements that happens to be played in a timbre
common to a particular genre of music cannot be so original as to warrant
copyright protection.”

But compare: Compulife Software Inc. v. Newman, 959 F.3d
1288 (11th Cir. 2020): In a software case using the abstraction, filtration,
comparison approach, the burden of proof on the protectability of what was
copied is on the defendant in the filtration analysis, not on the plaintiff. Not
yet determined: Will this be hugely significant in many cases? The question of
what is an idea or a scene a faire may be determinable as a matter of law, but
it does make things look harder for a defendant that concedes copying for
purposes of summary judgment.

Potential signal: SAS Institute Inc. v. World Programming Limited, 2020 WL
6271230 (E.D. Tex. Oct. 26, 2020): once the defendant contests the
protectability of the things it copied, the burden shifts back to the plaintiff
to “face[ ] the manageable task of responding to the appropriately narrowed
issue” and combat the allegations. This may occur either by showing what
defendant alleges as not protectable actually is entitled to protection, or by
coming back and showing that there are remaining and identifiable protectable
elements that defendant copied. In SAS, the defendant got summary judgment
because SAS didn’t do that.

IV.       Moral Rights

After big damages in 5Pointz case, we can also expect more
attention to the Visual Artists Rights Act—where, as with 1202 violations,
statutory damages are available independent of registration.

VARA provides visual artists the right to “prevent any
intentional distortion, mutilation, or other modification” of a covered work “which
would be prejudicial to his or her honor or reputation, and any intentional
distortion, mutilation, or modification of that work is a violation of that
right,” and also the right “to prevent any destruction of a work of recognized
stature . . . . “

Cavallero case: Alleges that the defendants trespassed in
order to destroy his cheese wall. If proved, might justify enhanced damages.

Kerson v. Vermont Law School, Inc., No. 20-cv-00202-cr (D.
Vt. filed Dec. 2, 2020): The Law School is apparently planning to put acoustical
tiles over the mural, presumably thinking that covering it up does not violate
the statute, but Kerson seeks to enjoin the coverup. This is unlikely to
succeed but, perhaps surprisingly given that VARA has been around for so many
years, a novel issue.

Also not resolved:
what happens when the art is put up without permission. The plain text of the
statute gives the artist the right to object to its removal or destruction
without reference to whether the artist placed the artwork with the permission
of a building owner, and related precedents on art that violates non-copyright
laws suggest that VARA might apply even to trespassing art, so watch this space
(no pun intended)

V.        Fair Use and
other defenses

One way to think of this year’s roughly 40 new fair use
cases is to divide them into cases featuring Richard Liebowitz’s firm as the
plaintiff’s attorney and cases not featuring that firm. Starting with the
latter:

“Experimental use” comes to copyright law: Nicki Minaj
avoided liability for private use of Tracy Chapman’s work in order to
experiment with it before seeking a license. The evidence was that making the
work before seeking the license “was customary practice because rights holders
often request copies of new works during licensing discussions and prospective
licensees usually include their proposed derivative works with their initial
licensing requests.” The court reasoned that interfering with this industry
practice would be inconsistent with copyright’s purposes, and that because it
was private and experimental it didn’t have a negative market impact.

Estate of Smith v. Graham, 799 Fed.Appx. 36 (2d Cir. 2020): “Pound Cake”: The first identified instance of transformativeness
without parody in a music case! However, the district court found that the
defendant’s use was implicitly critical of the original, which had celebrated
jazz over all other forms of music; the defendant’s rap song claimed the same
longevity for all real music including rap.

Perhaps most interesting in the case, however, is the
court’s statement that “Nor is there evidence of the existence of an active market
for ‘Jimmy Smith Rap,’ which is vital for defeating Defendants’ fair use
defense.” This attention to the market for the specific work at issue, rather
than the overall market for works of the same general type, is of increasing
importance in fair use cases of many kinds, including educational uses in last
year’s University of Georgia case and in cases where fair use fails, like the
TVEyes v. Fox dispute.

Hughes v. Benjamin, 437 F.Supp.3d 382 (SDNY 2020): On a
motion to dismiss. Showing a series of clips of another YouTuber of the
opposite political persuasion, with a mocking title, was transformative and
fair. The context—including the selection of clips, the title, and the poster’s
other political commentary, was enough to create comment and a new message.
Subsequently, the court awarded nearly $40,000 in attorneys’ fees to the
prevailing defendant.

Also: dueling tattoo cases: disputes over whether summary
judgment should be granted to defendants: (1) the second case follows a pattern
of treating videogames worse than other artworks in holding that the videogame
might have the same purpose as the original tattoo; (2) Google v. Oracle might
give some signals about how courts should think about summary judgment in fair
use cases, but it’s an unusual enough case that I wouldn’t put too much
confidence in that.

Educational uses, or uses that courts clearly think
contribute to education, continue to have some sway with courts: Tresóna Multimedia, LLC v. Burbank High School Vocal Music
Ass’n, 953 F.3d 638 (9th Cir. 2020) Use of a portion of a musical work in a new
arrangement for a show choir was a nonprofit educational use, and the use of a
portion of the song to tell a new story as part of an audiovisual presentation
was transformative (remand to award attorneys’ fees to the defendant—not just
for reconsideration by the district court: Tresona’s fair use argument was
“objectively unreasonable” because the use was nonprofit teaching and highly
transformative, and its litigation strategy was unduly aggressive; it sued
parent volunteers!)

And the Bell v. Worthington City School District, 2020 WL
2905803 (S.D. Ohio Jun. 2, 2020): case granted summary judgment to the
defendants, reasoning that an athletic coach’s retweet of an inspirational
passage about how winning isn’t usual was fair because the use was educational
and noncommercial, and the defendant couldn’t show market harm from loss of a
tweet license for noncommercial use—this is another of the cases where the
court itself puts the copyrighted material online for free by reproducing it in
its entirety.

Now to the other half of the cases: Richard Liebowitz
continued his one-man crusade to further develop the law of fair use of
photographs on a motion to dismiss.

Yang v. Mic Network, Inc., 2020 WL 6562403 (S.D.N.Y. Nov. 9,
2020): fair use on a motion to dismiss where the defendant used a screenshot of
an article that included roughly the top half of the relevant photo.

Boesen: embedded Instagram post was fair use for purposes of
reporting on the story generated by the Instagram post.

Walsh v. Townsquare Media, Inc., 464 F.Supp.3d 570 (S.D.N.Y.
2020): (Cardi B) same thing.

Schwartzwald v. Oath Inc., No. 19-CV-9938 (RA) (S.D.N.Y.
Sept. 10, 2020): (altered photo of Jon Hamm commenting on the ridiculousness
of people caring about Jon Hamm’s penis)

Marano v. Metropolitan Museum of Art, — F.Supp.3d —-,
2020 WL 3962009 (S.D.N.Y. 2020) (focus on history of guitar, rather than on
musician, was transformative)

Harbus v. Manhattan Institute for Policy Research, Inc. 2020
WL 1990866 (S.D.N.Y. Apr. 27, 2020): (granting motion to dismiss where the use
highlighted the defendant’s own research and educational mission)

But he didn’t lose every fair use defense: Iantosca v. Elie Tahari, Ltd., 2020 WL 5603538 (S.D.N.Y.
Sept. 18, 2020). Unauthorized use by a clothing designer in its social media
to show off a model wearing the designer’s clothes was not fair use! Not
transformative.

Cruz v. Cox Media Group, LLC, 444 F.Supp.3d 457 (E.D.N.Y.
2020) News use of newsworthy photo by amateur photographer not fair use (I will
note that the relevant photo is now freely available to the public because the
court included it in the opinion).

And he lost fees in a different failed fair use defense: Otto v. Hearst (court found that license fee was $100 and awarded $750 in
statutory damages).

Emerging, tentative pattern: people in the business of
making and using photos as part of their ordinary operations have to pay for
photography, but people primarily in the commentary business don’t.

Grant v. Trump: Pending litigation over the use of music in political ads.
Will this be the first finding of fair use in unaltered use of a portion of sound
recording in a political ad? Trump’s motion to dismiss relies on recent cases like Smith
and Brown v. Netflix, Inc., 462 F. Supp. 3d 453, 460 (S.D.N.Y. May 27, 2020), which found that
short excerpts of a recording in a larger work were fair use, to argue that its
40 seconds were limited enough to be fair. Fair warning: The Trump campaign’s papers are much better than the ones that have made the news of late.

VI.       Secondary
Liability/512

512(a)’s protections for conduits aren’t really working any
more. Sony Music Entertainment v. Cox Communications, Inc., 464
F.Supp.3d 795 (E.D. Va. 2020). $ 1 billion damages award upheld against post trial motions.

Warner Records Inc. v. Charter Communications, Inc., 454
F.Supp.3d 1069 (2020): vicarious and contributory liability by provider of high
speed internet access was sufficiently alleged. UMG Recordings, Inc. v. RCN Telecom Services, LLC, 2020 WL
5204067 (D.N.J. Aug. 30, 2020) same. UMG Recordings, Inc. v. Bright House Networks, LLC, 2020 WL
3957675 (M.D. Fla. Jul. 8, 2020): Vicarious liability failed for want of direct
financial benefit:

“This interpretation of the direct financial benefit
requirement effectively reads the limiting term “direct” out of the test,
allowing the imposition of vicarious liability based on indirect, highly
attenuated connections between infringing conduct of the patron and alleged
financial benefits.” What Plaintiffs alleged was that Bright House’s internet
speed and efficiency are “draws” to the service, but that wasn’t enough: “It is
not readily apparent or plausibly alleged that an internet thief would be
“drawn” by the efficiency of internet service any more than the average
law-abiding purchaser of copyrighted content.”

But contributory infringement claims survived.

ALS Scan, Inc. v. Steadfast Networks, LLC, 819 Fed.Appx. 522
(2020): Over a dissent, the Ninth Circuit held that a data-center
service provider took adequate “simple measures” to avoid contributory
copyright infringement by forwarding notices of such infringement to the
hosting website — and every alleged infringement was taken down. Even if the
notices kept coming, generalized knowledge of likely infringement wasn’t enough
where each specific infringement was taken down and the data center didn’t
control the website where the infringements were allegedly occurring. The
plaintiff could sue the website if it was liable for the underlying
infringement. Important case in rejecting an attempt to evade the DMCA’s
requirements.

512(f): Beyond Blond: allegedly false takedowns sent to
Amazon based on public domain materials; though the plaintiff counternoticed,
Amazon declined to honor the counternotice unless the notices were actually
withdrawn. 512(f) can preempt state law tortious interference and
related claims if they’re based on bad copyright notices—but if the notice
sender also alleges trademark issues, that may not be preempted (but the recipient likely has a harm causation problem). Because the standard for succeeding on a 512(f) claim is so
stringent, 512(f) can leave people who received bad takedown notices in a worse
position than if it didn’t exist.

VIII.    1202 Gains
Momentum

Sometimes it takes a while for lawyers to discover a cause
of action. Most important case: Mango v. BuzzFeed, Inc., 970 F.3d 167 (2d
Cir. 2020): Digital Millennium Copyright Act (DMCA) includes double scienter
requirement; but publisher knew of CMI removal and publisher had reason to know
distribution with altered CMI concealed infringement.

Recif Resources, LLC v. Juniper Capital Advisors, L.P., 2020
WL 5739138 (S.D. Tex. Sept. 24, 2020) timely registration isn’t required for
statutory damages under 1202.

Fischer v. Forrest, 968 F.3d 216 (2d Cir. 2020):

While an author’s name can
constitute CMI, not every mention of the name does. Here, “Fischer’s” is part
of a product name; it is not a reference to “James H. Fischer” as the owner of
a copyrighted text. What was removed was not Fischer’s name as the copyright
holder of the advertising text, but “Fischer’s” insofar as it was a part of the
actual product’s name. …  “Fischer’s”
cannot be construed as CMI with respect to the advertising text at issue
because it is simply the name of the product being described. In short: context
matters.

Mills v. Netflix, Inc., 2020 WL 548558 (C.D. Cal. Feb. 3,
2020): where the defendant kept the plaintiff’s name visible in its screenshots
of plaintiff’s video, it wasn’t plausible that it intentionally removed CMI in
order to facilitate or conceal infringement. Continues the divide in courts
about whether the CMI has to be integrated into the work or really close to the
work in order to count as CMI.

Kirk Kara Corp. v. Western Stone and Metal Corp., 2020 WL
5991503 (C.D. Cal. Aug. 14, 2020): “Based on a review of the side-by-side
images included in the Complaint, the Court can determine that, while the works
may be substantially similar, Defendant did not make identical copies of
Plaintiff’s works and then remove the engraved CMI. In such cases, even where
the underlying works are similar, courts have found that no DMCA violation exists
where the works are not identical.”

Takeaway: Courts are not really reading “remove” to mean
“remove,” even though they probably should—they are often reading “remove” to
include “making copies without the CMI.”  Someone who makes a nonexact copy will often not
be held to have “removed” CMI. However, this isn’t always the case and
especially not on a motion to dismiss, example: Pilla v. Gilat, 2020 WL 1309086
(S.D.N.Y. Mar. 19, 2020): use to create infringing derivative work could
plausibly state a claim for removing CMI.

IX. Remedies

Greg Young Publishing, Inc. v. Zazzle, 2020 WL 3871451 (C.D.
Cal. Jul. 9, 2020) (now on appeal): Despite finding willful infringement by Zazzle through sales
of items bearing infringing images, the court denied a permanent injunction: irreparable
harm is not likely when high-volume sellers promptly and voluntarily remove
infringing items. Zazzle can afford to pay money damages. Loss of exclusive
rights of copyright is not itself irreparable harm after eBay v. Mercexchange.
In terms of balancing the equities, GYPI has not presented any evidence of a
more effective way for Zazzle to prevent infringement than its current system

Disney Enterprises, Inc. v. VidAngel, 2020 WL 2738233 (C.D.
Cal. Mar. 31, 2020): Over $62 million in statutory damages for copying, altering,
and streaming over 800 Disney movies.

Energy Intelligence Group, Incorporated v. Kayne Anderson
Capital Advisors, L.P., 948 F.3d 261 (5th Cir. 2020) (failure to mitigate is
not a complete defense to statutory damages): Plaintiffs produced a specialized newsletter and basically
did not try to stop copying for a while, then sued for over 1600 infringements
and 425 DMCA §1202 violations. At trial, the defendants persuaded the jury that
the plaintiff could reasonably have avoided almost all the copyright and DMCA
violations at issue. EIG took nothing for those violations and received $15,000
in statutory damages for 39 infringed works, about half a million dollars. The
court of appeals remanded on the infringement damages because it couldn’t tell
whether the jury intended to award EIG $15,000 per infringed work if failure to
mitigate wasn’t a complete defense and held that the plaintiff should get $2500
per DMCA violation, over $1 million.

X. Licensing

Tresona again: The plaintiff didn’t own exclusive rights in
certain songs because it was only licensed by a co-author, and the other
co-authors could have licensed the songs, thus it owned no exclusive rights.
This seems correct but the Ninth Circuit’s attempt to distinguish previous
precedent is a bit puzzling.

XI.       Preemption

Jackson v. Roberts, No. 19-480 (2d Cir. Aug. 19, 2020): The Second Circuit reached a conclusion for which I and
others like Jennifer Rothman have long argued: especially with respect to the
right of publicity, conflict preemption, not §301 preemption, determines what
happens when right of publicity claims are asserted against ordinary uses of
copyrighted works in which the plaintiff consented to perform. Because
non-advertising exploitation of such works is at the core of copyright rights,
a subject’s assertion of the right of publicity to stop that exploitation
fundamentally conflicts with copyright’s purposes. This reasoning preserves
false association and privacy claims, but not right of publicity claims
predicated merely on unauthorized exploitation of a work in which the claimant
consented to appear.

Of particular note: Many courts have, with much more
confused reasoning, reached similar results when the defendant is the copyright
owner or is licensed by the copyright owner, the Second Circuit went further, I
think properly, and held that a pure attempt to control a work’s distribution
on right of publicity grounds is preempted even if the copyright owner didn’t
authorize the distribution. There might or might not be a copyright claim—the
use might be fair, for example—but either way the right is the copyright
owner’s.

Conflict preemption reasoning explains the actual results of
the cases much better than invocation of express preemption under §301. One of
my remaining questions is: why do courts insist the result has to be different
with advertising uses? Advertising use can be nonconfusing use—like using a
licensed image of Kim Kardashian and saying “Kim wouldn’t be caught dead using
our product”—and licensing copyrighted works for use in advertising is
certainly an ordinary use for copyrighted works.

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