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PLEASE TAKE NOTICE: BOSTON* just got real (Boston 3)

Originally posted 2013-06-26 14:54:53. Republished by Blog Post Promoter

*Preliminary note: I know that the band BOSTON is not a party to Ahern v. Scholz, but all the same I like thinking of this case as the BOSTON case, because it involves BOSTON songs, and I like typing BOSTON in all caps, so I hope you’ll forgive me this impertinence/indulgence.

What was until this week a simple federal copyright action is now being brought to the attention of the Attorney General of the United States (who might or might not have other things on his mind just now). Plaintiffs Ahern and Next Decade Entertainment have given notice to Eric Holder of the presence of a constitutional question raised in the pleadings of the suit. (For a refresher of the allegations, see this post and then this post.)

mdbheadshotfinalIn turn, the United States District Court for the Southern District of New York has issued an order certifying the matter to the AG. “In the parties’ Joint Pretrial Statement, filed with this Court on June 7, 2013,” the order reads,

the plaintiffs… asserted that, should the Court interpret Section 203 of the Copyright Act to allow termination of certain grants of copyrights, such application of the statute would constitute an unconstitutional taking of private property under the Fifth Amendment to the United States Constitution.

Whoa. That’s heavy. And that’s the sort of thing that 28 U.S.C. 2403(a) and F.R.C.P. Rule 5.1. mandates be brought to the attention of the AG.

The constitutional question as framed by Ahern:

Whether an author of musical compositions, written in whole or in part after January 1, 1978, whose copyright ownership had been transferred by him to a third party pursuant to a grant in the form of a five-year agreement entered into in 1975 encompassing all songs written by the author through 1980 [“Gap Works”], can invoke the termination of copyright assignment provisions of Section 203 of the Copyright Act….

Permitting Gap Works to qualify for the provisions of [S]ection 203… would result in [the plaintiffs]’ copyright ownership… being reduced from the fifty-six years set forth in Section 304… the law in existence at the time the 1975 [agreement] was executed… to only thirty-five years. Such a reduction… constitutes a violation of the Fifth Amendment to the United States Constitution in that it is an unlawful taking of private property without compensation to promote a public purpose (i.e., the public policy decision to afford composers the opportunity to reclaim their copyrights).

So now, if we’re lucky, we’ll get to read what Mr. Holder has to say about all this.

Best of 2009: I can’t stands no more!

Well blow me down!

Well blow me down!

Published on January 6, 2009.

The Popeye copyrights are now in the public domain in Europe. That’s copyright, not trademark.  As Mark Owen, an IP lawyer at the UK firm of Harbottle & Lewis is quoted as putting it:

The Segar drawings are out of copyright [yes, that’s how they put it over there — RDC], so anyone could put those on T-shirts, posters and cards and create a thriving business. If you sold a Popeye toy or Popeye spinach can, you could be infringing the trademark.



I assume he means “anyone may put those on T-shirts, posters and cards and create thriving business,” or otherwise why would he be practicing law? But I do think he illustrated the distinction between exploiting copyright and trademark rights nicely, and in a manner quite a few lawyers could do to comprehend. Read More…

The Seventh Circuit solution

The needle, Watson!

The needle, Watson!

Matthew David Brozik wrote here about the December 2013 Holmes copyright expiration decision out of the U.S. District of Illinois shortly after it came out.  Go there to understand what the case is about, as I did.

Today that District Court opinion was affirmed by the Seventh Circuit.  Here’s a link to the Seventh Circuit opinion.


The appeal challenges the judgment on two alternative grounds. The first is that the district court had no subject-matter jurisdiction because there is no actual case or contro-versy between the parties. The second ground is that if there is jurisdiction, the estate is entitled to judgment on the merits, because, it argues, copyright on a “complex” character in a story, such as Sherlock Holmes or Dr. Watson, whose full complexity is not revealed until a later story, remains under copyright until the later story falls into the public domain. The estate argues that the fact that early stories in which Holmes or Watson appeared are already in the public do-main does not permit their less than fully “complexified” characters in the early stories to be copied even though the stories themselves are in the public domain.

[T]he judge was right to assert (and retain) jurisdiction over the case, and we come to the merits, where the issue as we said is whether copyright protection of a fictional character can be extended beyond the expiration of the copyright on it because the author altered the character in a subse-quent work. In such a case, the Doyle estate contends, the original character cannot lawfully be copied without a li-cense from the writer until the copyright on the later work, in which that character appears in a different form, expires.

We cannot find any basis in statute or case law for extending a copyright beyond its expiration. When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow-on authors, as held in Silverman v. CBS Inc., 870 F.2d 40, 49–51 (2d Cir. 1989), a case much like this one. . . The court ruled that “a copyright affords protection only for original works of authorship and, consequently, copyrights in derivative works secure protection only for the incremental additions of originality contributed by the authors of the derivative works.” Id. at 49; see Leslie A. Kurtz, “The Methuselah Factor: When Characters Outlive Their Copyrights,” 11 U. Miami Entertainment & Sports L. Rev. 437, 447–48 (1994). The copyrights on the derivative works, corresponding to the copyrights on the ten last Sherlock Holmes stories, were not extended by virtue of the incremental additions of originality in the derivative works.

And so it is in our case. Read More…

Detective work: Hunting down the copyright victory (of a “cop”).

mdbheadshotfinalIf you want to read an article about an important development in copyright news, but you don’t want to be distracted by a lot of “facts” and such, enjoy this piece in the New York Times about Victor Willis, formerly of the Village People. You’ll learn next to nothing! And that’s too bad.

Rumor has had it for some time that the Times is written at an eighth-grade reading level. I went to eighth grade. I can read and understand this Times article. What I can’t understand is why the piece links to such things as an interview with a French record producer, but not to such things as the court decision that informs the news purportedly being reported: to wit, that Mr. Willis is the first musician to successfully reclaim, under Section 203 of the Copyright Act, his rights in and to musical compositions transferred some 35 years ago. Indeed, I had to read the article several times before I realized that there has in fact been a court decision. And I successfully completed eighth grade!

Fortunately, I am something of an amateur detective, and there are some clues in the Times piece. The name of a party (likely not the plaintiff, because the way these termination cases are coming to court is that the creators of the works at issue are sending termination notices to the transferees, and then the transferees are consequently filing declaratory judgment actions) is one—Victor Willis, the “police officer” of the Village People. (Now you get the “cop” joke, yes?) Also, the article mentions “Federal District Court in Los Angeles.” So to PACER I go… ah, but first to a map of California, because I honestly do not know where in the state L.A. is. No, I’m not kidding. I’m a New Yorker. Turns out, Los Angeles is in the Central District, and… well, this is interesting:

There is no such case in the Central District of California, according to PACER. No case under the name of Victor Willis, nor the entities to which he assigned his rights years ago (and from which he has reportedly reclaimed them), Scorpio Music S.A. and Can’t Stop Productions, Inc. (neither mentioned in the Times piece). But what’s this? Scorpio Music S.A. et al v. Willis… in the Southern District of California (San Diego)? And doesn’t the Times piece mention that Mr. Willis spoke to the Times by telephone “from his home in Southern California”? Also, the photo accompanying the piece shows Mr. Willis “in downtown San Diego.” Okay, so maybe the Times made a simple mistake, and the case was heard in “Federal District Court in San Diego.” (This leads to the obvious question—sing it with me: “Why, NYT?”)

No harm, no foul. Read More…

But It’s Not a Good Feeling.

mdbheadshotfinalI’m sorry. “More Than a Feeling” is the only Boston song I’ve ever heard—or even heard of. For a while, in fact, I was fairly certain that Boston, Foreigner, and Journey were all the same band. But Boston’s the band with all the spaceship artwork, right? Even though the group’s named after a city on Earth? But I digress before I’ve even begun…

On March 19, an interesting (enough) complaint began a lawsuit in the United States District Court for the Southern District of New York. A man named Paul Ahern and a company called Next Decade Entertainment, Inc. are suing another man named Donald Thomas Scholz. If any of those means anything to you, it’s almost certainly going to be the name of the defendant, known better as “Tom” Scholz, and mostly to aficionados, of a certain age, of music of a certain kind. Tom Scholz is a founding member of the band Boston, and the lawsuit concerns several songs that Scholz wrote and that Boston recorded.

Paul Ahern is not a musician himself, but was for a time a co-manager of the band. He was also—and remains—in the business of music publishing (“the business of publishing and otherwise commercially exploiting musical compositions,” in the verbiage of the complaint). Same with Next Decade, which is the exclusive administrator, the world over, of those musical compositions owned and published by Ahern. (We’re just going to treat Ahern and his company as a single entity, since they are, as we say, united in interest; and we’ll just call them “Ahern.”)

boston-more-than-a-feeling-1976-9On or about November 15, 1975—when the number one song in the United States was “Island Girl” by Elton John—Ahern entered into an agreement with Scholz under the terms of which Scholz would render, on an exclusive basis, his services as a songwriter to Ahern. Scholz would assign to Ahern the rights to all songs he (Scholz) had written before that date and as well “all musical works… composed, created or conceived in whole or in part by him for a period of five years” thence. So, until November 15, 1980 (when the number one song in the country would be “Lady,” by Kenny Rogers). As contemplated by the agreement, Scholz composed, and Ahern published—and Boston recorded—six songs that appeared on the band’s first album and another six that appeared on the band’s second. In 1975 and ’76, Ahern “secured copyright registrations” for the first six songs; in 1978 he secured registrations for the second set.

So far, so good. But here comes the red herring: In November 1975, the members of Boston had hired Ahern and his “business associate” Charles McKenzie to manage the group. Scholz and McKenzie didn’t get along, and between the release of “Boston” and “Don’t Look Back,” the band’s first and second albums, respectively, Scholz (according to the complaint) “demanded that [Ahern] sever his ties with McKenzie” and that McKenzie have nothing more to do with the management of the band. Ahern “succumbed to the pressure from… Scholz,” Ahern claims, and on or about April 24, 1978 (no. one song: “Night Fever,” by the Bee Gees), Ahern and the members of Boston entered into an agreement regarding management of the band, but which “had no effect whatsoever on the 1975 Songwriter Agreement.” The one between Ahern and Scholz, that is.

Nevertheless… Read More…

Lawyers of steel

Super bowling

This story is all over the everywhere; I’ll let Eriq Gardner sum it up, as he does so very nicely:

Warner Bros. has won a blockbuster victory that could entitle it to maintain its copyright stake in Superman.

On Wednesday, a federal judge in California granted the studio’s motion for summary judgment on the question of whether a 1992 agreement with Jean Peavy, the sister of Superman co-creator Joe Shuster, precludes the estate’s attempt to terminate a copyright grant. The decision by U.S. District Court Judge Otis D. Wright comes four years after another federal judge in California confirmed the validity of a termination notice from the estate of the other co-creator, Jerry Siegel. The termination attempts have threatened Warners’ hold on its lucrative Superman franchise.

Here’s the full ruling.

Okay, wait — “terminate a copyright grant”?  What’s that?  I’ve never really written about copyright termination here.  It’s something we’ll see more of, that’s for sure.  Jonathan Bailey explains:

The basic principle of copyright termination is that creators may not know the value of their work or be in a position to negotiate favorable terms when they are starting out. [Therefore], they often sign deals to their work that are less-than-favorable, especially if the work takes off and becomes extremely popular.

To prevent having creators live with these bad deals they made earlier in their careers, the law grants them or their heirs the right to revoke any copyright transfers or exclusive licenses that they granted in the work after a certain amount of time has passed.

For assignments made before January 1, 1978, that time is 56 years, letting the creator recapture the last 39 years of the copyright term in the work. For those deals struck on or after that date, the time is reduced to 35 years, unless the grant covers the right of publication, where it is the earliest of 40 years after execution of the grant or 35 years after publication.


That’s beginning to read a lot like math, so I’ll break off the excerpt here.  Eriq explains that these termination rights, a bone thrown by Congress to creators who risk exploitation at the hands of major publishers (such as music producers, movie studios and book publishers), have ironically given those creators increasing leverage over Hollywood and New York even as the copyright term has been extended at Big Content’s behest.  The trick, however, is terminating ju-u-u-u-u-st so.  And evidently the heirs of one of the two Superman creators, the Shusters, weren’t so super about that part:

As the copyright term has since been extended even further over the years, so too has the power of these termination rights.

But executing a termination notice isn’t easy because artists need to adhere to a strict protocol, including sending out precise “termination notices” during a short few-year window. Terminations also have been subject to other limitations such as when an artist and studio make what’s known as an “agreement to the contrary,” negating the termination powers.

Despite the odds, the Siegels tasted success in 2008 when a federal judge ruled they successfully had recaptured copyrights to some—but not all—of Superman’s defining characteristics, such as his costume, Clark Kent and his origin story, as described in the first editions of Action Comics. The scope of the ruling is now under appeal at the 9th Circuit with arguments being heard soon.

But the Shusters aren’t so lucky.

The lawyers for both sides, however, are.  As Eriq notes, the appeal of this ruling, and the Seigel litigation — currently on appeal — should roll on for a long time.  Some things, after all, should never terminate.

I can’t stands no more!

Well blow me down!

Well blow me down!

The Popeye copyrights are now in the public domain in Europe. That’s copyright, not trademark.  As Mark Owen, an IP lawyer at the UK firm of Harbottle & Lewis is quoted as putting it:

The Segar drawings are out of copyright [yes, that’s how they put it over there — RDC], so anyone could put those on T-shirts, posters and cards and create a thriving business. If you sold a Popeye toy or Popeye spinach can, you could be infringing the trademark.

I assume he means “anyone may put those on T-shirts, posters and cards and create thriving business,” or otherwise why would he be practicing law? But I do think he illustrated the distinction between exploiting copyright and trademark rights nicely, and in a manner quite a few lawyers could do to comprehend.

In any case this is the second time in a month I’ve had the opportunity to think about that beloved ancient mariner who was once my daily friend.  But alas I’ll have to hold back on creating my own thriving “green” (spinach-based) enterprise: As the article points out, the rule in the EU is that copyright expires 70 years after the death of the creator, whereas thanks in part to America’s other vertically romantically mismatched gargoyle it will be no less than another quarter century before I can — er, may — move into the Popeye fashion field on this side of the pond.

Ill gladly pay you Tuesday for a hamburger today

I’ll gladly pay you Tuesday for a hamburger today

That’s assuming, rashly, that that bunch of swabbies Popeye would call “Congricks” doesn’t do the bidding of Hearst, Disney and company and award them an extension for yet another generation of their respective monopolies before then.  After all, if anyone can say “I brings home the ham ’cause I yam what I yam,” it’s Congricks (who also perfected the concept enunciated by Popeye’s famous friend at right).

Free expression:  Quoting Popeye one more time, “That was a nice ship we had once!”