Reconsideration in MP3Tunes Case

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Capitol Records, Inc. v. MP3Tunes, LLC, No. 07-cv-9931 (S.D.N.Y. filed May 14, 2013) [Doc. 368].

All parties moved for reconsideration of the Court's October 25, 2011 order (821 F. Supp. 2d 627), springing from the 2nd Circuit's decision in Viacom Int'l v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012).  Plaintiff's motion was granted in part and denied in part: plaintiff's motion was granted as to the issue of willful blindness and "red flag" knowledge, and denied as to the inducement of copyright claim.  Defendant's motion regarding direct copyright infringement was granted in part and denied in part.  Defendant's motion for reconsideration regarding infringement of cover art, regarding personal jurisdiction and summary judgment as to his vicarious liability was denied.

There is an interesting discussion of "red flag" knowledge of infringement, under which service providers can lose the protection of the DMCA safe harbors if they have actual or apparent (i.e., "red flag") knowledge of infringing conduct.

Trademark Denied; YouTube Clip Not Proper Specimen

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In re Rogowski, 2012 ILRC 3251 (TTAB Dec. 11, 2012).

The TTAB affirmed a refusal to register a mark because a screen shot of a YouTube webpage that showed a trademark applicant playing music did not clearly indicate that the video could be downloaded, and thus the specimen failed to show that the mark was “used in commerce.”

As found by the TTAB:


The submitted specimen, however, does not show the required correspondence between the mark and the identified goods being offered for sale or transport in commerce. We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant's specimen does not include a “download” or similar link to put the consumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof. We view this failing as being similar to on-line retailing situations in which a webpage specimen fails to show a means for ordering the goods or service. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (webpage specimen did not directly provide a means for ordering applicant's goods); In re Genitope Corp. 78 USPQ2d 1819, 1822 (TTAB 2006) (same). Cf. In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (website specimen for downloadable computer software acceptable when it includes method to download, purchase or order the software). See also, In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) (“Relevant factors include, for example, whether Sones’ webpages have a ‘point of sale nature….’”) (citation omitted).

We further acknowledge applicant's intent and his assertion that viewers of his uploaded videos on YouTube may use third party software such as RealPlayer to record the audio portions of the videos and ultimately transfer this music file to an MP3 player or other devices and formats. However, on the record before us, in the absence of a “download” link or the equivalent thereof, applicant's specimen on its face fails to show use of his mark in commerce for the identified goods

2d Cir Decision On DMCA Safe Harbor In Viacom v Youtube

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Viacom v. YouTube (2d Cir. Apr. 5, 2012). Decision. Not a "music" case, but extremely important decision that will impact future infringement cases.

This appeal required the Second Circuit to clarify the contours of the “safe harbor” provision of the Digital Millennium Copyright Act (DMCA) that limits the liability of online service providers for copyright infringement that occurs “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c). The District Court held that the defendants were entitled to DMCA safe harbor protection primarily because they had insufficient notice of the particular infringements in suit. The Second Circuit held:


We conclude that the District Court correctly held that the § 512(c) safe harbor requires knowledge or awareness of specific infringing activity, but we vacate the order granting summary judgment because a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website. We further hold that the District Court erred by interpreting the “right and ability to control” provision to require “item-specific” knowledge. Finally, we affirm the District Court’s holding that three of the challenged YouTube software functions fall within the safe harbor for infringement that occurs “by reason of” user storage; we remand for further fact-finding with respect to a fourth software function.


ASCAP Blanket Fees for YouTube

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U.S. v. ASCAP, NYLJ 5/21/2009 "Decision of Interest" (S.D.N.Y. May 13, 2009) (Connor, J.)

Proceeding was before the Court for the setting of interim fees for a blanket license for the public performance of any of the more than two million musical compositions in the repertory of the American Society of Composers, Authors and Publishers ("ASCAP") on the streaming video service provided on the Internet by YouTube, LLC f/k/a YouTube, Inc. ("YouTube").

The Court saw no reason why the basic formula that ASCAP proposed and the Court adopted in United States v. ASCAP in re AOL, RealNetworks and Yahoo! Inc., 562 F. Supp. 2d 413 (S.D.N.Y. 2008) ("In re AOL, et al.") was not equally appropriate in the present context.

It is therefore ordered (1) Within thirty days YouTube shall pay to ASCAP the sum of $1,610,000 for interim fees accrued through March 31, 2009; and (2) Within one week after the end of each calendar month after March 2009 until the determination of final fees in this proceeding, YouTube shall pay to ASCAP the sum of $70,000 for interim fees accruing during that month. These interim fees are subject to retroactive adjustment when final fees are determined.

Fair Use and DMCA Take-Downs

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Lenz v. Universal Music Publishing, Inc., No. 07-CV-03783, 2008 BL 247967 (N.D. Cal. Oct. 28, 2008), denying defendants Universal Music Publishing, Inc. and Universal Music Publishing Group’s (collectively, “Universal”) request for certification for interlocutory appeal in a case involving an allegedly infringing YouTube video.

Although Universal sought certification of a controlling question of first impression on the issue of fair use and a copyright owner’s obligations with regard to the Digital Millennium Copyright
Act (DMCA) takedown notice procedures, the court found the question did not provide substantial grounds for difference of opinion, nor that a resolution of the question would materially advance the litigation at this stage.

[More from Bloomberg.]

The court, in an earlier decision held that the DMCA requires consideration of fair use prior to sending a takedown notice. Universal then filed the instant motion, seeking certification for
interlocutory appeal pursuant to 28 U.S.C. § 1292(b) of the issue of “whether 17 U.S.C. § 512(c)(3)(v) requires a copyright owner to consider the fair use doctrine in formulating a good
faith belief that ‘use of the material in the manner complained of is not authorized by the copyright owner, its agent or the law.’” The court denied Universal’s motion for interlocutory appeal.

DMCA: Prince Blocks YouTube Video of 'Creep' Cover

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Here's an interesting question under the Digital Millennium Copyright Act:

Prince performs a cover of the Radiohead break-out hit "Creep" at the Coachella Music Festival. Fans post video of the public performance on YouTube. After already receiving thousands of hits, YouTube removes the video at Prince's label's request; however, Radiohead wants YouTube to "unblock" the video. What does YouTube do?

Billboard addressed the issue: Observing first that "the posted videos were shot by fans and, obviously, the song isn't Prince's", Billboard continues, "Whether the same [DMCA notice] could be done for a company not holding a copyright is less clear, but Yorke's argument would seem to bear some credence according to YouTube's policies".

So, notwithstanding your views on the DMCA, who has priority under the notice and take-down scheme -- the owner of copyright in the sound recording (Prince), or the owner of copyright in the underlying composition (Radiohead)?

Because this was a live performance, it is highly unlikely that there was any sort of publisher/performer agreement other than the public performance license (compositions) the venue pays.

Another tangential issue is Prince's right of publicity/privacy. Most performers prohibit video/flash-camera at their concerts, and in fact, Prince prohibited the standard arrangement of allowing photographers to shoot near the stage during the first three songs of his set. Instead, he had a camera crew filming his performance.

But, rights of privacy/publicity are state laws, and though related, do not come under the Copyright Act's umbrella.

[Update: Marty Schwimmer's post on the Trademark blog re: this "law school fact patter"]

Viacom v. YouTube - Answer

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Though not a "music case" per se, we venture to link to the Defendants' Answer in Viacom v. YouTube. The outcome of this case, without doubt, will have a tremendous impact on the world of copyright and in turn, the evolution of the music business in the digital age.

In reading the Answer, note that Defendants take the rare step of providing an introduction Rather than merely admit, deny, or d.k.i, Defendants offer a glimpse at their theory of the case.

Note also that Defendants assert twelve affirmative defenses. Although this case is pending in Federal Court in the Southern District of New York, in New York State courts (and especially the Second Department), one sentence affirmative defenses bereft of any factual support are subject to dismissal. Here, the affirmative defenses are one sentence and completely bereft of any factual support. [New York practioners: if you would like case citations, shoot an e-mail to OCTS.) Would Plaintiff's lawyers pursue such a motion, or would it be a waste of time, especially if Defendants can file an Amended Answer?

Safe Harbor No More?

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CMJ: Perfect 10 on remand. A challenge to DMCA safe harbor by requiring affirmative steps to protect against infringement? I think big-media (e.g., Viacom v. YouTube) will say "It's about time!"

But, smarter minds offer brighter opinions (the following is a polling of great copyright minds):

(1) The more accepted view is that 512 safe harbor provisions trump the common law doctrines of secondary liability. Thus, assuming that Google has complied with all the Section 512 preconditions (ie notice and takedown, repeat offender policy, etc.) there really ought not to be liability for the Google Image search.

(2) The Court is focusing on Google AdSense. It is not at all clear that Adsense "activity" is protected under the "search engine" prong of 512(d). So you are back to "traditional" contributory/vicarious liability analysis for the AdSense program.

...of course, Google is in the land of the 9th Circuit, home to Silicon Valley.