Who Owns Copyright in Piano Arrangements?

Dear Rich: If a sheet music publisher wants to license my songs for a folio (a collection of all songs from an album), with the proviso that their particular, notated piano arrangements of my songs are being created as a work-made-for-hire for me, then can the sheet music publisher nevertheless claim copyright in the overall folio as a collection? Or to phrase my question a bit differently: Is the copyright in a collection a "derivative copyright," which I would have to expressly grant to the sheet music publisher? Speaking of sheet music, we recently downloaded sheet music from Appetite for Destruction by Guns N' Roses (the 11th best-selling album of all time) from Musicnotes.com. Wow, the world has come a long way. We can't prevent world hunger or predict earthquakes but we can get the guitar tabs for Welcome to the Jungle in a few keystrokes. Yea!
Right, you had a question. We're going to assume that you granted the sheet music publisher exclusive rights to publish the portfolio. In that case, the publisher (as exclusive licensee) is considered the “copyright owner” of that collection of sheet music and has the right to register the collection and to file an infringement action in court to stop a rival sheet music publisher who rips off the portfolio. In reality, the rights acquired by the copyright owner are narrow because the sheet music publisher doesn't own copyright in the songs or their arrangements -- that's yours. What the folio publisher owns is the equivalent of a "thin copyright" -- a work that contains limited copyrightable subject matter. The key to the publisher's ability to claim its copyright is that the license you granted is exclusive. A non-exclusive license won't cut it.
Do you have to expressly grant a derivative copyright? No, not exactly, but you do have to grant the exclusive license which automatically gives rise to the publisher's ability to register its rights and pursue thieves. The agreement may also modify the rights and relationships of the two parties. So, you could request that if the publisher is going to go after someone that you be notified immediately so that you can also pursue the infringers as well. You can also request to be asked to be named on any copyright filings and of course, once the license ends, all rights revert to you.

How Do I License Information Designs?

Dear Rich: I have created several information designs in the past few years in the hope of seeing them improve commercial communication. I have the additional hope that they could be licensed and generate a little royalty. Is there a company like the Copyright Clearance Center which might work for me? Do I have to PAY a lot up front, especially to an attorney? We think we have a rough idea what information design is all about and we assume that you're talking about licensing specific information design works (for example, things like this or this) and not the underlying tools, elements or processes used to create your designs. These types of works could possibly be licensed through CCC under their RightsLink program (which does not require an attorney's help.) (And of course, you would need to provide a format that contains the various works -- a website, book, or other collective work -- to enable the viewing of your works.)  Organizations such as CCC will manage license arrangements and collect fees but they don't actually bring in the licensing customers. That's still your obligation, either via web traffic or old-fashioned solicitations. To that extent, if you can find licensees on your own, you probably don't need an organization's services and can license directly to customers. You can find plenty of examples of license agreements at Nolo's website or through other sources.

Does Downloading MP3s Trigger Public Performance Payment?

Dear Rich: In your Getting Permission book, when you discuss digital download permissions for MP3s, you write that "Music publishers currently seek to get paid in two ways (referred to as “double-dipping”), once for the reproduction of the MP3 file and again for the transmission of the file over the Internet." I thought that they could only get paid for the downloads. You're right. The statement in the book is outdated. In a 2007 decision, a federal court held:

"Although we acknowledge that the term “perform” should be broadly construed [cite omitted] we can conceive of no construction that extends it to the copying of a digital file from one computer to another in the absence of any perceptible rendition. Rather, the downloading of a music file is more accurately characterized as a method of reproducing that file."

It's true that music publishers are still seeking to get paid both ways and that they petitioned Congress to revise the copyright law accordingly. But their desires have not yet been transformed into law and we'll report if and when things change.

He Needs Poets' Permission for Choral Work

Dear Rich: I am a professional composer and I am looking to gain the text permissions from several authors for use in a commissioned choral composition I am writing. The author's works are found in a book entitled Earth Prayers, published by HarperCollins Publishers. The work I am writing has been commissioned by The Bucks County Choral Society. The authors are as follows; Wendell Berry, W. E. B. DuBois, Joyce Fossen, and Stephanie Kaza. I am comfortable with the fact that I may not be able to get any permissions from these authors. The DuBois permission I am sure would be through some estate. Since Berry is still alive and his poetry is widely published, he may deny permission as well. He may not even like music, though I cant imagine that. I just would like the chance to ask him. Joyce and Stephanie, I am not sure of. My initial research of their works online have yielded little results. The Dear Rich Staff wishes you well and hopes you don't run into the kind of problems faced by composer Eric Whiteacre (but if you do, there's always crowdsourcing). As for your permissions:

• It's possible that some (if not all) works by W.E. DuBois (above) are in the public domain. DuBois lived from 1868 to 1963. Any works of his published before 1923 -- for example Darkwater: voices from within the veil (published in 1920) -- are in the public domain. And all works published before 1964 were subject to renewal; most works were not renewed. Many of DuBois' works written after 1923 have been the subject of multiple copyright claimants, a strong sign that these works are either in the public domain, or that nobody is pursuing rights. You can check these details further by searching Copyright Office records. 
• Stephanie Kaza appears to retain copyright in her work, at least according to Copyright Office records. So, you could start your search for her by checking with her most recent publisher Shambhala. They published her recent (2005) work, Hooked! Buddhist writings on greed, desire and the urge to consume. 
• We love Wendell Berry (especially his recent book, Remembering).You should probably start your search through his current publisher, Counterpoint, which maintains the Wendell Berry website.
• We located Joyce Fossen in the Copyright Office records and if it is the poet you're seeking, she appears to have passed away in 1989. The copyright claimant for her work is a George J. Fossen and we imagine he would be the person to contact for permission (although we have no way of locating that information).

Does Copyright Office Check for Conflicts?

Dear Rich: Are works submitted for copyright protection automatically registered, or does the copyright office check for conflicts before registering submitted materials? Unlike when you file for a patent, or a trademark, there is no "similarity check" when filing for a copyright registration. (Don't worry, we won't bore you with a long explanation as to why that is.) When an application arrives, the Copyright Office checks: (1) that the application is complete -- that is, all of the parts are there, (2) that there are no obvious errors in the application (see below), and (3) that the work being registered is appropriate "subject matter" for copyright. The best way to get an idea of what matters to the Copyright Office and whether an error has been made in the application is to review the Copyright Compendium II, the 'rule book' for Copyright Office examiners. In addition, these internal rules overlap with 37 C.F.R. Sections 201-202 (the Code of Federal Regulations). By the way, the fee for filing a paper application has risen from $45 to $50. The fee for electronic filing is still $35.

How Do You Apportion an Infringer's Profits?

Tell It To The Hand. Today’s inspirational quotes by Learned Hand:

“We may win when we lose, if we have done what we can; for by so doing we have made real at least some part of that finished product in whose fabrication we are most concerned: ourselves.”

“To be pulled in many opposite ways at once results negatively, but it is not the same thing as to feel no impulse at all. An ass between two bales of hay is said to have died of starvation, but not from indifference.”

“[L]life is made up of a series of judgments on insufficient data, and if we waited to run down all our doubts, it would flow past us.”

“The spirit of liberty is the spirit which is not too sure that it is right; the spirit of liberty is the spirit which seeks to understand the minds of other men and women; the spirit of liberty is the spirit which weighs their interests alongside its own without bias; the spirit of liberty remembers that not even a sparrow falls to earth unheeded”

The last quote comes from a 1944 address given to a small crowd in Central Park. The speech was reprinted in Life, Reader’s Digest, The New Yorker and many newspapers. It struck a tone of tolerance that reverberated around the country and brought Hand unexpected attention and celebrity from the non-legal world.

Edward B. Marks Music Corp. v. Jerry Vogel Music 1 and Edward B. Marks Music Corp. v. Jerry Vogel Music 2. In 1907, the Edison Company released a performance of The Bird on Nellie's Hat. It was co-authored by Edward B. Marks and written in the 1890s. Marks also co-authored a song, “December and May.” In the early 1940s both songs became intertwined in a dispute that resulted in two separate lawsuits. One suit was about who had renewal rights to “December and May” and the other was an infringement action over “The Bird on Nellie's Hat.” In the latter, the defendant (the author of the infringing song) argued that both co owners (not just Marks) must sue him in order for the case to go forward. Judge Hand disagreed. He established the important legal principle, that either co-owner of copyright may bargain for, or litigate rights regarding the copyright, provided that the other co-owner receives an equitable interest in the results of the bargain or lawsuit. In the second case, Hand established that the same co-authorship principle applied for renewal as well -- that is, either co-owner may file the renewal of a copyright and that renewal benefited both co-owners, not just the co-owner who files the renewal.

Sheldon v. Metro-Goldwyn Pictures Corporation 2. Yesterday we discussed a case involving a Joan Crawford film, Letty Lynton, that infringed a play, Dishonored Lady. After resolving the issue of infringement, the case returned to the Second Circuit Court of Appeals and Hand again wrote the opinion. This time around the dispute was over how much MGM had to pay in damages. Until that time, the courts had taken the 1909 Copyright Act at its literal word; it stated the prevailing plaintiff in an infringement action was entitled to all of the defendant’s profits derived from the infringement. This was how the district court ruled and MGM appealed, claiming that only those profits attributable to the use (or portion of use) should be owed. Judge Hand acknowledged the difficulty in apportioning profits from a movie:

“Strictly and literally, it is true that the problem is insoluble. The profits from a picture consist of admission fees, which the playgoers pay because the picture attracts them with the hope of enjoyment. That enjoyment, which is one source of its further popularity, is made up of many factors: the actors, the work of the producer and director, the story, the scenery and costumes. The attraction and the hope which first draws them are principally aroused by advertisements, and the reputation of the stars and the producing company.”

Despite the difficulty, Hand jumped in to the fray and after deducting certain MGM expenses, discounting expert accounting opinions, and apportioning a reasonable value to the use of the material from Dishonored Lady, he determined that the owners of the play were entitled to one-fifth of the film’s profits. In this decision, Hand ended the era of “all profits to the winner” and set the modern standard for copyright damages still used today. Although other judges have advanced theories of damages, Hand’s analysis is still considered the gold standard.
The Complete Hand. We've said a lot of nice things about Learned Hand during the past week but we’re not trying to paint him as a saint (can an agnostic be a saint?). There are a few eccentricities to report as well.  Hand did not believe that the Bill of Rights should be considered “law” but merely "admonitory"principles. (He also advocated for the removal of the due process clauses from the Constitution and -- though strongly in favor of equal rights -- he criticized the Warren Court for its legal basis for striking down state segregationist laws.) He was a melancholic, highly self-critical and despised his own ambitions. When FDR failed to appoint him to the Supreme Court, he confided, "It was the importance, the power, the trappings of the God damn thing that really drew me on.” We’ve also seen he was a bit of a curmudgeon when it came to popular culture as evidenced by his distaste for Hollywood movies ("trivial"), comics ("silly pictures"), and popular music ("treacle"). But none of that means much compared to his accomplishments. This was, after all, the man who saved the Wright Brothers' patents and Superman's copyright. No fear of flying here. Thanks, Judge!

What is "Original" under Copyright Law?

Tell It To The Hand! In 1910, one year after being appointed as a district court judge, Learned Hand issued an injunction preventing the French aviator Louis Paulhan from making flights within the U.S. At issue were patents for the airplane’s rudder, owned by the Wright Brothers. The defendant argued that the flying machine's rudder was not novel. Judge Hand disagreed, dryly noting mankind's previous difficulty in becoming airborne.

"The number of persons who can fly at all is so limited that it is not surprising that infringers have not arisen in great numbers."

Responding to the issue of whether the rudder was novel or obvious at the time of its invention, Hand said:

“Many great inventions are of this character, and the reason why the ordinary man does not discover them although they are so plain when some one else has done so is that habit has limited his power to see what he has not been accustomed to see, and his selective attention is fast bound by his past experience.”

Two for One. In an effort to further drive down our dwindling readership, we’re going to include two of Hand’s copyright decisions today, both discussing the standard of originality.
Arnstein v. Edward B. Marks Music Corp (1936) This case is the first of five lawsuits for copyright infringement brought by songwriter Ira Arnstein over a ten-year period, most of them based on a semi-paranoid notion that famous songwriters (or their agents) had stolen Arnstein's songs by various nefarious means (including breaking into his apartment). Although not labeled as a vexatious litigant (the term hadn’t been invented then), one judge did chastise Arnstein for his “persecution mania.” (The last of the Arnstein cases was brought against Cole Porter and set the standard for summary judgment in copyright cases.) Several of the Arnstein cases are described in detail here, along with relevant sound clips.
In Arnstein v. Edward B. Marks Music Corp, Arnstein believed his melody for “I Love You Madly” had been stolen and used in defendant’s song, “Play, Fiddle, Play.” The similarities apparently were driving Arnstein mad, as he stated under oath, "I was desperate. I heard my song being played everywhere, and I was starving. I was out of my mind and might have committed murder.” Arnstein lost at trial and on appeal, he used various means to attempt to show similarities between the two songs. Alas, he misjudged Judge Hand’s knowledge of musical composition. Hand wrote:

"The second phrase of the chorus has no resemblance whatever to the next phrase of the song, but if one takes some notes of the treble in the accompaniment, moves them to the melody, raises them an octave, and cuts short the resulting melodic phrase, an identity can be made to appear. When the two songs are played the phrases show no resemblance, at least to the untrained ear. To a mind already set to find piracy, this of course seems proof strong as Holy Writ, but it is really of no significance.”

In truth, Hand did not have much affection for either composition – he referred to the lyrics of the defendant’s work as “the kind of treacle which passes in a popular love song” -- and believed pop music was an arbitrary and unpredictable business. After demolishing the plaintiff’s claims, Hand observed, “Success in such music as this is by no means a test of rarity or merit; it is a commonplace that the most experienced are usually unable to tell in advance what will hit the public fancy and what will not. Were it otherwise much waste could be avoided.”

Sheldon v. Metro Goldwyn Mayer (1936). The owners of the play, Dishonored Lady, sued the makers of the movie, Lettie Lynton, for infringement. Both works were based on a true story about a Scottish woman who was accused of poisoning her lover. The trial judge had determined there was no infringement, perhaps influenced by the fact that none of the play’s dialogue had been lifted. Judge Hand reversed:

“The play is the sequence of the confluents of all these means, bound together in an inseparable unity; it may often be most effectively pirated by leaving out the speech, for which a substitute can be found, which keeps the whole dramatic meaning. That as it appears to us is exactly what the defendants have done here; the dramatic significance of the scenes we have recited is the same, almost to the letter. True, much of the picture owes nothing to the play; some of it is plainly drawn from the novel; but that is entirely immaterial; it is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate.”

Hand continued with a statement familiar to most students of copyright:

"If by some magic a man who had never known it were to compose anew Keats's Ode on a Grecian Urn, he would be an "author," and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats's."

In other words, copyright does not protect against similarities, it protects against copying. The Sheldon case also led to another important copyright standard known as the Sheldon Rule, and we’ll discuss that in tomorrow’s final entry. Thanks Judge.