If there is one thing you need to do by the end of the year, it is refiling your designated agent registration with the Copyright Office. The message from the Copyright Office is very clear — if you do not refile by December 31, you will lose the safe harbor protections under the Digital Millennium Copyright Act (DMCA). Consequently, you will forfeit all shields from monetary liability and may end up paying statutory damages and attorney’s fees if you are found liable for copyright infringement claims caused by user-uploaded materials.

Refiling the agent designation is relatively simple — you can do so online through the Copyright Office’s electronic registration system.  Under the new electronic system, an individual can be identified as the agent, as well as a specific position, title or department of the agent.  The process will likely take less than 20 minutes and costs just $6.00. Renewal is required in three years.

Under the DMCA, online service providers, such as providers and operators of any website, mobile app, game, etc., can protect themselves from copyright infringement claims arising out of user-uploaded materials by registering an agent and promptly taking down allegedly infringing content.  To continue benefiting from such safe harbor protections after December 31, designated agent information must remain up-to-date in the Copyright Office database so that the public can send DMCA take-down notices to the designated agent. These changes are meant to simplify the Copyright Office’s maintenance of the designated agent database and, more importantly, to provide the most up-to-date designated agent information to the public.

Trust us, this will be the most valuable $6.00 you spend over the next three years. View our November 2016 legal update for more information about the changes to the DMCA registration system.

Having read the recent Supreme Court decision of Star Athletica v. Varsity Brands and the new unified test for copyright protectability in useful articles, we can now turn to the challenge of what actual changes will result from this opinion. http://www.lanepowell.com/wp-content/uploads/20170329Intellectual-Property-Legal-Update-Spelman.pdf.

While nothing changes with regard to how trademarks are handled in the useful article world, there are some practice tips that will strengthen the opportunity to protect what designs are eligible for copyright. Each of the practice tips below revolves around working proactively. Copyright is a game played proactively for best and most predictable results. These tips are calculated to make that proactivity a system that works in your favor:

1. Document: as you design, keep documentation of the iterative drafts and the dead ends that you consider as well as the final design. If there is a challenge that your design in an infringement, it is useful evidence to demonstrate that you were truly designing new work and that you evolved the final design out a whole field of discarded drafts;

2. Focus: if you do review the current field of existing designs as you search for the new design option, clear the work area of all the prior designs. It is too easy to “borrow” or be “inspired” by existing designs when that prior design is right there in front of you;

3. Register: file copyright applications early and often at the U.S. Copyright Office using the “Electronic Copyright Office” (“ECO”) filing system. Optimally, you will keep a file of the works that you are designing. Filing a batch of new copyright applications every calendar quarter (90 days) is a sure way to be certain that you are going to get the benefits of claiming statutory damages and attorney’s fees in every dispute… And the consequential benefit of having a remarkable archival demonstration of what you are creating and have created;

4. Drive: check to be sure that any license or distribution agreement includes provisions that you are in control of dispute resolution, including litigation. Sometimes found in the “indemnity” clause; sometimes in a separate clause, but do provide for what happens when things go wrong:

5. Notice: while no longer mandatory, there are substantial legal and practical benefits to affixing notice on the article being distributed. For instance, if you are publishing code for 3-D printing, be sure to include a copyright notice in the object code, or as part of the surface of what is “printed”;

6. Clarify Ownership: be sure to clarify who is the claimant/author of the work each time. Who owns the design becomes very important. Remember that independent contractors (those whom you pay using an IRS 1099 reporting form) are the authors of their design unless there is a written assignment to you.

Copyright is stronger and a more reliable as an asset when the ownership and the registration process is faithfully worked through as a standard operating procedure. Proactive habits are pivotal to a viable copyright program.

Does your business run and maintain a website? Does it create or license website or other content? Does it run and implement software? If you’ve answered yes to these questions, but haven’t yet considered the importance of copyright to your business, here are 10 tips to ring in a safe and proactive 2017.

  1. The Digital Millennium Copyright Act (DMCA) imposes strict piracy “anti-circumvention” measures meant to protect copyright holders from copyright infringement on the internet. But because the DMCA captures an otherwise large swath of internet service providers who do not have control over what content is posted to or distributed from their websites, the DMCA has a “safe harbor” provision that protects service providers from incurring legal liability in copyright infringement actions. If you qualify for the DMCA Safe Harbor, you must register your company as a Designated Agent for Service of Process at the Copyright Office to benefit from the Safe Harbor protections. To learn more about the DMCA, read this recent white paper.
  1. Unsure how copyright applies to your business? Continue your own copyright education and task someone within your company to keep abreast of the latest developments in copyright protection and compliance.
  1. Develop a written copyright policy or copyright guidelines. Have the same copyright questions arisen again and again in your organization? Year end is an ideal time to compile nagging questions and prepare short practical answers. Circulate copyright Q&As to your colleagues or post them to your intranet site. Having a copyright knowledge database may help your organization better comply with copyright laws, and help you identify how you can improve or update your policies or guidelines.
  1. Do you create content that you distribute to the public? Your content may be a “work” that qualifies for copyright protection. Although copyright registration is voluntary in most countries, consider registering your works with your country’s copyright office. Rather than registering individual works, register a group or collection of works produced during the year to save time and registration fees. While the grant of copyright arises automatically, copyright registration is necessary if you plan to enforce your rights through legal action.
  1. Have you licensed content outside of your organization? Prepare a database of all content your organization has licensed. Whether it’s an image to use on a promotional brochure, or content from a large electronic database, include all content in a single searchable database that allows you to quickly and easily locate that content and determine what rights you have in it.
  1. Review your license agreements and create an “ultimate” list of protections and guarantees that your organization needs from its license agreements. Do you need remote access or the right to share a PDF file? Do you need to make print-outs, or post articles to your intranet? What about using portions of the database for internal education or external seminars? Use the list to set the parameters for your future license negotiations.
  1. Consider your 2017 budget for permissions, licenses and copyright training. Consult with subject matter experts in your organization to understand their needs and preferences. Prepare a budget and ensure you have the funds you need to meet your copyright management goals. Brainstorm how to get the copyright message to your colleagues and employees. Often, recurring lunches or coffee chats with a diverse group of internal stakeholders and speakers from photography, library services, web design or other professional disciplines with copyright expertise can help sensitize your office to important copyright issues without overburdening your team with cold policy documents or rote lectures.
  1. Review your agreements with consultants. Does your company expect to retain copyright ownership in consulting reports? Make sure that this is clearly stated in your agreement and, if necessary, provide for an assignment of rights to your organization. If consultants own their works, review the rights your organization retains in any consultant work. If you are a consultant, review and understand the rights you have in your work.
  1. Undergo an intellectual property (IP) audit. It’s important to know that the content and computer software you are using is legal and properly licensed. Also, an IP audit will identify the IP that you own. Armed with that knowledge, you can then learn how to market, license and/or profit from leveraging your IP.
  1. Set up a mechanism for monitoring the legal use of your own online content on an international basis. This can be as simple as regularly undertaking search engine searches. But you can also hire a professional who specializes in finding unauthorized uses of content. Piracy is not only the domain of the software and entertainment industries. You may be surprised to find that your individual or organization’s rights are being exploited, and that your works are being used and perhaps even sold without your permission.

Copyright is a value-add opportunity for every business, and the best benefits are obtained by acting proactively to ascertain ownership and keep the copyright assets in ready order for offensive or defensive play.

In Brief: The recent Second Circuit decision in EMI Christian Music, Inc. v. MP3tunes, LLC builds on BMG Rights Management et al v. Cox Communications, further emphasizing that courts expect online service providers and website platforms to develop and enforce robust infringement response policies — or else risk losing their safe harbor under the Digital Millennium Copyright Act (DMCA). EMI stands as an important notice to all online service providers, especially those with peer-to-peer sharing or user-generated content features, to be vigilant and thoughtful about addressing infringement.


Online service providers should not turn a blind eye to copyright infringement happening on their watch. Since the rise of peer-to-peer file sharing, Internet service providers (ISPs) and website platforms have become the front line for preventing copyright infringement.

Content sharing on the Internet sparked a new line of case law in the early 1990s, including the seminal Religious Technology Center v. Netcom On-Line Communication Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995), wherein the court found that a large Internet access provider could be liable for the copyright infringement of its subscribers. A few years after the case, in 1998, Congress passed the DMCA as a means of regulating online service providers and giving them some safeguards.

As peer-to-peer sharing platforms began to gain popularity in the early 2000s, copyright holders could no longer easily pursue individual infringers and began looking for alternative ways to protect their interests. The DMCA proved to initially be a barrier because it has a safe harbor to shield online service providers from monetary liability when someone brings a copyright infringement claim, making recovery against online service providers difficult for copyright holders. But the safe harbor is not a free lunch — online service providers must meet a variety of criteria in order to remain eligible for its protections.

Copyright holders have taken hold of the safe harbor eligibility requirements as a litigation tool for recovering from ISPs and website platforms. In BMG Rights Management et al. v. Cox Communications, 2016 WL 4224964 (E.D. Va. Aug. 8, 2016), which has been appealed to the Fourth Circuit, the court began its opinion by setting the historical stage: “This lawsuit is the latest in a years-long initiative by copyright holders to enlist the courts in the effort to curb the rampant infringement made possible by peer-to-peer file sharing on the Internet.”

One major statutory requirement for safe harbor protection is that the service provider must have adopted and reasonably implemented an internal policy for terminating subscribers and users of its system or network who are repeat infringers. Courts have increasingly emphasized the importance of this statutory requirement. It has become a key battleground, forming the center of the disputes in two pivotal cases: BMG Rights Management et al. v. Cox Communications, 2016 WL 4224964 (E.D. Va. Aug. 8, 2016) and EMI Christian Music, Inc. v. MP3tunes, LLC, 2016 WL 6211836 (2d Cir. Oct. 25, 2016).

In BMG, the copyright holder went directly to the source — the ISP — as the party responsible for preventing copyright management and ensuring users do not abuse website platforms. The BMG court allowed this approach, putting the onus on ISPs to develop real programs to combat infringement. The work begun in BMG was amplified in EMI, wherein the court held that online service providers that passively allow website or service users to engage in copyright infringement and fail to develop real policies to prevent abuse run the risk of losing their DMCA safe harbor protections. The resounding message from this line of cases: If ISPs and website platforms want to maintain their DMCA safe harbor, they need to develop and enforce robust response mechanisms.

Repeated Infringement Policies and Safe Harbor: A Closer Look

The BMG case involved BMG, a music company, suing Cox Communications, an ISP, for users of Cox’s ISP engaging in illegal music sharing on their network. Cox claimed that it could rely on the DMCA safe harbor because it had a response system for addressing repeat infringers. The court described Cox’s system as “essentially a thirteen-strike policy” wherein a user would have to commit several violations in order to be terminated — and even then could be reactivated quickly. The jury sided with BMG, finding Cox liable for willful contributory infringement and awarding BMG $25 million in damages. Cox sought to have the court overturn the verdict, but the Court declined. Instead, the court found, among other things, that “there was sufficient evidence for a reasonable jury to hold Cox responsible for the infringement of BMG’s copyrights on its network. . . . Cox could not [ ] turn a blind eye to specific infringement occurring on its network.” The court acknowledged that exposing ISPs and other intermediary online service providers to exposure for their users’ behavior “raises the specter of undesirable consequences that may follow,” but the court hoped the BMG case “may provide the vehicle for consideration of those questions.” The BMG case certainly held open the door for other courts to consider what policies and practices ISPs and other online service providers must have in place against repeat infringers to keep their DMCA safe harbor intact.

In EMI, the Second Circuit took up this question with MP3tunes, a music storage site that allows users to upload and store songs obtained from elsewhere on the Internet. EMI brought an action against MP3tunes in the Southern District of New York, claiming that MP3tunes was lax in responding to repeat infringers. The District Court disagreed, but the Circuit Court overturned the District Court and held MP3tunes in violation. The Circuit Court issued two main holdings:

  1. The meaning of “repeat infringers” in the DMCA does not require that the infringers be willful. Someone can qualify as a repeat infringer even if they have no knowledge that their behavior is infringing another’s work. “[T]he legislative history of the DMCA indicates that a ‘repeat infringer’ does not need to know of the infringing nature of its online activities, or to upload rather than download content.” This puts more pressure on online service providers to take serious efforts to connect infringing activity to users, checking for patterns and notifying all users who infringe. MP3tunes failed to do this because it did not investigate those who downloaded content and did not attempt to monitor use patterns in a consistent way.
  1. The EMI Circuit Court turned to what triggers need to be present before the online service provider needs to act to keep its DMCA safe harbor. The DMCA does not obligate a service provider to actively monitor or act on only a “generalized awareness” of infringement. If a copyright owner wants to overcome a service provider’s DMCA safe harbor, the copyright owner needs to prove that the service provider had 1) actual knowledge or 2) an awareness of facts or circumstances making specific acts of infringement obvious. The Circuit Court, based on this rule, upheld the jury’s verdict due to MP3tunes’ apparent knowledge.

Following the EMI ruling, MP3tunes requested reconsideration under the argument that the EMI court had effectively eliminated the DMCA safe harbor. The Second Circuit recently declined to reconsider its decision.

The Bottom Line: Take Steps to Stop Repeat Infringers

The case law is still in flux, but what the BMG and EMI opinions demonstrate is an increasing judicial focus on ensuring that ISPs and online service providers take tangible measures to prevent repeat infringers — or risk jeopardizing their DMCA safe harbor.

A recent case out of the Second Circuit says “Yes. Third parties have standing to assert the defense that a copyright owner’s claim of ownership is erroneously based on Work Made for Hire (WMFH).”

Urbont v. Sony Music held that the defendant did have standing to challenge the validity of the WMFH ownership claim. Sony claimed that they owned music by virtue of WMFH; and Jack Urbont, defendant, challenged that WMFH status of ownership. This is noteworthy because it was Marvel, not Sony, who was the copyright claimant under a theory of WMFH.  The music at issue was the theme song to the movie “IronMan.” Marvel was an unrelated party to Sony at the time that the work was created.

The defendant rested its claim on the premise that Marvel had no employees who were composers; and that music does not qualify for WMFH  status under the nine categories of work.

The Second Circuit ruled that whether the work was indeed a WMFH was a relevant issue; and that defendants were entitled to raise the defense; and such a defense rested on facts that precluded summary judgment.

The opinion came down on July 29 of this year. Discussing it before now seemed premature as it wasn’t clear whether Sony was going to appeal. This week, Urbont is reported to be the prevailing party. Urbont v. Sony settled on confidential terms. There will be no further appeal.

Pro-tip take away:  An assignment would have solved the problem.  The nine narrow categories of WMFH applying to non-employees is increasingly being read narrowly.  “Audio-visual works” are covered in one of the nine categories, but not just audio alone (namely music). To refresh your recollection, the nine categories listed in Section 101 of Title 17 of the copyright statute are:

  1. A contribution to a collective work (like a piece for a magazine, anthology or encyclopedia);
  2. A part of a motion picture or other audiovisual work;
  3. A translation;
  4. A supplementary work (like a foreword, afterword, bibliography, appendix, index or editorial notes);
  5. A compilation (like an anthology, database or anything that qualifies as a “collective work” from category 1 above);
  6. An instructional text (generally, any text that could go in a textbook);
  7. A test;
  8. Answer material for a test; and
  9. An atlas.

And even if your work falls into one of these nine categories, the statute states that there must also be a written agreement stating that it’s a “Work Made For Hire.” To be safe, the agreement should be signed before the work is created and signed by both parties.

Urbont v. Sony Music Entertainment Inc., Second Circuit July 29, 2016,  15-1778

Rarely does one think of copyright issues surrounding how research is conducted for feature films that are based on real life events, but 54 Sudanese refugees are forging that new connection between research and copyright in one lawsuit pending in the U.S. District Court of Georgia sitting in Atlanta. 

Those refugees, who survived starvation, disease and the militia attacks in Darfur, arrived in the U.S. and then sat down with film producer Robert Newmyer and screenwriter Margaret Nagle back in 2003 where they shared their life stories in a series of recorded interviews. The court found the 54 refugees to be joint authors of the script for the 2014 “The Good Lie” film starring Reese Witherspoon. The refugees created original expression in their oral telling of their stories that were fixed in tangible medium in the recorded interviews. “While some common elements of the Lost Boys’ story were publicly available, Newmyer and Nagle wanted to create a movie with real, personal and emotional details otherwise unavailable to the public at large,” says the lawsuit. “Newmyer and Nagle needed the details from the Lost Boys’ personal stories and permission to use those details in a screenplay and subsequent film. The title of The Good Lie, for instance, is said to refer to a lie once told by one of the refugees on the taped interview to would-be-captors that saved his life.

The defendants argued that the 54 refugees’ answers in the interview do not possess the modicum of creativity to constitute an original work of authorship under copyright law.  U.S. District Judge Leigh Martin May found otherwise in her recent 54-page ruling:

“The Interviews, however, did not consist merely of ‘ideas, facts and opinion made during a conversation,’ like the interviews by journalists in the cases Defendants cite,” responds May. “Rather, the Interviews were a creative process designed to create material for a screenplay and film. All that an ‘original work’ must possess is ‘some minimal degree of creativity’ … even a slight amount will suffice. Plaintiffs’ telling of their personal stories in response to questions designed to elicit material to create a fictional script for a feature film likely includes enough creativity to render the Interviews an original work of authorship.”

A major flaw in the case arose when it was shown that the 54 refugees do not have U. S. Copyright registrations of the taped interviews. The defendants argued that the case must be dismissed for the plaintiffs’ failure to obtain the requisite registrations; however, the court held that the failure to register was solely due to the defendants’ refusal to provide the 54 refugees with copies of the interviews. The defendants were found to have been the sole obstacle to the plaintiff having the tape recordings to satisfy the U.S. Copyright Office requirement that the tapes be submitted as specimens of the work at issue.

The court found that the umbrella organization, the Foundation for Lost Boys and Girls of Sudan, and the 54 refugees’ lawsuit may proceed based on copyright infringement, breach of the joint venture agreement, breach of fiduciary duty, conversion of plaintiffs’ ideas, breach of the covenant of good faith and fair dealing, unjust enrichment, promissory estoppel and other claims. The complaint alleges that Robert Newmyer and others orally promised the 54 refugees that the Foundation  would be one of the joint  members of the movie venture; and, that the Foundation would be the sole beneficiary of any fundraising efforts associated with the movie. The court held in its March 2016 opinion both that a jointly authored copyright arose in the recorded interviews; and also that an oral promise to be joint participants in the venture is enforceable notwithstanding Newmyer’s untimely death in 2005.

This lawsuit is noteworthy even beyond the allegations of the Hollywood exploitation of Sudanese refugees as it is an ambitious attempt at a declaratory judgment over authorship predicated upon tape recorded interviews. This is a case to watch.

 

Static timing analysis (STA) is a simulation method of computing the expected timing of a digital circuit without requiring a simulation of the full circuit. This complicated area of measuring effective timing and power characterization flows in asynchronous circuits is often the basis of patent applications. The code of these complicated analytical tools also forms the basis of copyrights and copyright applications.

The Northern California jury’s award yesterday to Synopsys of $30 million against ATopTech was not on the basis of a patent infringement but for copyright infringement. The software of ATopTech’s product “Aprisa” infringes the Synopsys product “Prime Time”; and the jury awarded the damages allowed under the Copyright Act of the summation of the profits that ATopTech generated ($22 million) plus the lost profits that Synopsys failed to accrue by reason of the infringement ($8.2 million) for a total exceeding $30 million.

This case represents a trend in the intellectual property world post-Alice. Since June of 2014 when the Supreme Court struck down the patents in Alice for “abstractness”, the successful enforcement of patents has proven unpredictable. Over 70 percent of the patents in inter partes disputes have been found invalid — a new low water mark for patent enforceability in the U.S. As a consequence, intellectual property portfolio owners have moved the basis of their enforcement actions from patents (where the result is less certain) to copyrights where the result, as seen today in the Synopsys case, is more predictable and for sizable awards.