IP Law Blog

By James Kachmar

We’ve become used to lawsuits being filed after a movie, TV show or song becomes a popular hit. Generally, once a show or song hits number one, someone files a lawsuit claiming that the song or show was their “idea”. ABC’s hit show “Lost” is no different. In 2009, Anthony Spinner, a television producer, writer and former studio executive brought an “idea submission” lawsuit against the American Broadcasting Company, Inc. (“ABC”) claiming that it used his ideas to develop the hit television series “Lost”. 

In the mid-1970s, Spinner was retained by ABC to develop a two-hour pilot tentatively called “L.O.S.T.” for $30,000. The script, which was completed in 1977, concerned a group of U.S. Olympians who survive a plane crash in the Himalayas. They proceed through a tunnel and discover a land inhabited by dinosaurs and prehistoric people. ABC decided to pass on the pilot, concluding it would be too expensive to produce. In 1991 and 1994, Spinner met with other executives at ABC to pitch a similar television show; however, the crash would take place in outer space. Once again, ABC passed on Spinner’s idea. 

Nearly 30 years later, an ABC executive came up with the idea of doing a show about a survivor on a desert island that would combine the elements of the hit movie “Castaway” with the hit TV show “Survivor”. He wanted to call this television show “Lost” based on a failed reality based TV show.

By Lisa Y. Wang

Back in the day when I used a VCR to record TV shows (one that forwarded through commercials by itself no less), it was impossible to imagine that something like TiVo and DVRs would be in over 50% of American homes. In May 2012, Dish Network took digital recording a step further. Its customers who subscribe to Hopper don't even have to manually fast forward through the commercials using their remote control. The "Auto Hop" feature of the Hopper automatically skips through the commercials of the all the broadcast network's prime time lineup by moving from segment to segment of the television show and skipping the ads. The AutoHop feature, coupled with Dish's "PrimeTime Anytime" feature, essentially allows consumers to concurrently record all prime-time broadcasting programming on all four networks without watching a single commercial without having to move a finger. With Dish Networks' $14 billion in annual revenue and 14 million subscribers, that's a lot of commercial revenue going down the drain. As a result, Dish Network has been sued by all four major networks for copyright infringement, and its Chief Executive Officer Charles Ergen has been dubbed by The Hollywood Reporter as "The Most Hated Man in Hollywood." 

In November 2012, Fox Broadcasting filed for a preliminary injunction claiming that Dish Network committed contributory and direct copyright infringement. The judge did not issue the injunction because Fox could not show irreparable harm and sided with Dish. Dish claimed the defense of fair use, which allows for the limited use of copyrighted works without having to obtain permission. Dish argued that it is the customers, not Dish, who are copying the prime-time network broadcasts, and that copying constitutes fair use, and the court agreed. In finding that Dish was not secondarily liable for copyright infringement for their "PrimeTime Anytime" feature, the court cited the Supreme Court case Sony v. University City Studios, 464 U.S. 417 (1984).  Sony held that the copying of television programs by consumers for time shifting was fair use. Since the consumers were not liable for copyright infringement, it was not possible for Dish to be liable for secondary infringement.  Likewise, Dish was not liable for direct infringement by offering "PrimeTime Anytime" to its consumers because the consumer is the one who directs its Hopper to create copies of the broadcasts and Dish merely passively provides the technology used for copying. 

Join Us April 23!

Weintraub Tobin and the LAVA Digital Media Group will host a panel discussion: "How Has Digital Media Changed the Way We Interact with Food" on Tuesday, April 23.

Whether it's finding a place to eat, sharing recommendations on your favorite dishes or ordering food online, investors have been hungry (sorry for the terrible pun) to invest in web and mobile-based food applications and platforms - aka food tech.

Over the last year, almost $350 million has been invested in Food Tech and deal activity to the burgeoning sector grew over 37% vs the prior year.

Panelists include:

• Bruce Seidel, Digital Media Strategist, and former CEO, Electus' YouTube Food Channel.
• Corianda Dimes, New Media Strategist, Bullfrog and Baum
• Nik Bauman, cofounder of Foodzie.com and Tonx, Inc. Nik has focused his entire professional career on e-commerce and food
• Moderated by Scott Hervey, Shareholder, Weintraub Tobin

"How Has Digital Media Changed the Way We Interact with Food" takes place Tuesday, April 23 at ROC, 604 Arizona Street in Santa Monica. Enjoy a social hour from 6:30-7 p.m. followed by the panel discussion and a Q and A session. Register here.

Follow the event on Twitter: @weintraub_law

#wtdmg

By Scott Hervey

This isn’t the first time a songwriter has used a celebrity’s name in a song, but it may be the first time a celebrity sued over such use. Musical writer and performer Armando Perez, well known by his rap name Pitbull, wrote and recorded the song “Give me Everything.” Approximately one third of the way through the song, Lohan’s name is used as follows: “So, I’m tiptoen’, to keep floin’ / I got it locked up like Lindsay Lohan”. Lohan, who did not grant consent to the use of her name in the song, sued Pitbull and his record label, Sony Music Entertainment, for violating Sections 50 and 51 of the New York Civil Rights Law, for unjust enrichment and for intentional infliction of emotional distress. The court dismissed Lohan’s complaint on the grounds that it fails to state a claim. While most are chalking this up as another legal loss for the challenged Lindsay Lohan, this case is an interesting commentary on the reach of New York’s right of publicity statutes.

Although New York does not recognize a common-law right of privacy, the State sought to provide a limited statutory right of privacy when it enacted Sections 50 and 51 of the New York Civil rights Law. Section 50 makes it a misdemeanor for any person to “use... for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without first having obtained the written consent of such person.” Section 50 provides:

Any person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained as provided [in Section 50] may maintain an equitable action in the supreme court of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use and if the defendant shall have knowingly used such person’s name, portrait, picture or voice in such manner as is forbidden or declared to be unlawful by section fifty of this article, the jury, in its discretion, may award exemplary damages.

Local artist (and Weintraub client) David Garibaldi will perform live on tonight's episode of NBC's "America's Got Talent." And he needs your votes to ensure he makes it to the next round.

David Garibaldi, 29, and his CMYK’s are among America's Got Talent's Top 48 contestants who are competing to win a $1 million prize.

The Sacramento group is widely known for transforming an empty canvas into a unique large-scale painting live on stage through music and dance. David, a former graffiti artist, was inspired to change direction by one of his high school teachers.

Follow David Garibaldi and his CMYK's America's Got Talent journey on their Facebook page here.

And help us get out the vote by watching the show and calling in to vote. Tonight's episode airs at 8:30 p.m. (PT) on NBC. 

By: Zachary Wadlé

On April 14, 2012 in Cleveland, Ohio, iconic rock band Guns N’ Roses will be inducted into the Rock and Roll Hall of Fame.  The induction comes 25 years after original members Axl Rose (lead vocals), Saul Hudson aka “Slash” (lead guitar), Izzy Stradlin (rhythm guitar), Duff McKagan (bass), and Steven Adler (drums) released their debut album, Appetite for Destruction, which sold more than 28 million copies worldwide and ranks as the best-selling debut album ever.  After a meteoric rise in popularity, the original lineup began to break up in the early 1990’s due to problems with substance abuse by various band-members and acrimonious infighting over the creative direction of the group.  This ultimately led to Axl Rose gaining sole control of all Guns N’ Roses intellectual property and its musical catalog, but also becoming estranged from the original members.  Today, Rose tours as Guns N’ Roses along with a group of new musicians who perform many of the band’s original tunes, along with the band’s new material from its most recent album, Chinese Democracy.

Rock and Roll Hall of Fame inductees traditionally perform a short set during the induction ceremony.  In years past, long-separated bands such as The Police and The Eagles have put aside their differences during the ceremony for a one-time-only reunion performance.  News of Guns N’ Roses’ induction has naturally produced speculation that the original lineup may reunite for the ceremony, which would be a highly anticipated event among the 30 and 40-something rock music crowd.  The only stumbling block appears to be continued animosity between Rose and Slash, which has resulted in multiple public spats and lawsuits over the years. 

Congratulations to our clients, executive producers Jason Hervey and Eric Bischoff, on Nick At Nite's pick up order of twenty episodes of the network's first original scripted comedy pilot, Daddy’s Home, starring Scott Baio.

For the full story, please click the link  to visit Deadline Hollywood:  http://www.deadline.com/2012/03/nick-at-night-picks-up-scott-baio-family-comedy-to-series/

By: James Kachmar

In late December, the Ninth Circuit revisited the “safe harbor” provisions of the Digital Millennium Copyright Act (“DMCA”) in the case UMG Recordings, Inc. v. Veoh Networks, Inc., 101 U.S.P.Q.2D (BNA) 1001. Veoh is a web service that allows users to view videos uploaded by other users.   Veoh was sued for copyright infringement by UMG, one of the world’s largest music and music publishing companies. 

Before a user can upload and share a video, on Veoh’s site, he/she must agree to Veoh’s publisher terms and conditions and terms of use, both of which bar the user from uploading any videos that infringe on another’s copyrights. Also immediately prior to uploading a video, a message appears on Veoh’s website warning the user not to upload infringing videos. 

By Zachary Wadlé

On Oct. 26, 2011, the Stop Online Piracy Act “SOPA” (H.R. 3261) was introduced in the United States House of Representatives. One of SOPA’s primary goals is to address the continuing problem of online digital piracy of counterfeit movie, music, and other copyrightable works engaged in through foreign websites. 

The 1998 Digital Millennium Copyright Act (DMCA) and the Copyright Act of 1976 are the primary existing U.S. laws that address copyright infringement, but both have limited ability to address foreign based websites that engage in digital piracy. SOPA attacks this problem by giving both government officials and copyright owners new powers to target foreign websites and infringers through the search engines, web hosts, and payment system providers that allow foreign websites to reach the U.S. market. 

By Scott Hervey

A California statute signed into law in 2005 by Governor Schwarzenegger was struck down by the United States Supreme Court on June 27 for running afoul of the First Amendment. The law prohibited the sale or rental of “violent video games” to minors; violations were punishable by a civil fine of up to $1,000.   The statute defined a “violent video game” as games in “which the range of options available to a player includes killing, maiming, dismembering, or sexually assaulting an image of a human being, if those acts are depicted” in a manner that a “reasonable person, considering the game a whole, would find appeals to a deviant or morbid interest of minors,” that is “patently offensive to prevailing standards in the community as to what is suitable for minors,” and that “causes the game, as a whole, to lack serious literary, artistic, political or scientific value for minors.” The Supreme Court found the statute to be overreaching and invalid.

by Scott Hervey

The rock band No Doubt had serious doubts about the way they were being portrayed in Activision’s video game Band Hero. No Doubt had licensed the likeness of its members for use in the video game but ultimately objected to Activision’s use and claimed that such use was outside of the scope of the license agreement between the Parties.

The agreement between the parties set for the terms upon which No Doubt gave Activision the right to utilize the band members’ name and likeness in the video game. Each band member had the right to approve their likeness as implemented in the game, as well as all other uses of use their name and/or likeness in the marketing and exploitation of the game. After signing the license agreement, the band members participated in a full day photography and data capture session at Activision’s studios so that the band members’ avatars in the video game would accurately reflect their appearances, movements and sounds. No Doubt reviewed the photography and the details related to the appearance and feature of their avatars and ultimately gave their approval.

by David Muradyan

Do promotional CDs sent by music recording companies to radio disc jockeys and music critics which contain labels restricting distribution of the CDs and purport to create a license agreement actually create a license agreement between the recording company and the recipient, thereby rendering inapplicable the “first sale” doctrine—an affirmative defense to copyright infringement that allows owners of copies of copyrighted works to resell those copies? In UMG Recordings, Inc. v. Augusto, No. 08-55998 (9^th Cir. Jan. 4, 2011) (“UMG Recordings”), the Ninth Circuit answered in the negative.

By Scott Hervey

The motion picture industry’s battle against cyber piracy took an interesting twist when an individual who allegedly engaged in the illegal downloading of the movie Far Cry filed a lawsuit against the Copyright Group and the law firm that has filed numerous suits against thousands of alleged infringers.  To date, the law firm, Dunlap, Grubb & Weaver has filed suit against 20,000 anonymous “Doe” defendants for illegal file trading copies of various motion pictures, including Hurt Locker and Far Cry. Once the firm determines a defendant’s true identity it then sends out a demand letter informing the individual that they have been identified as having illegally downloaded a motion picture and explaining that the plaintiff is entitled up to $30,000 in damages under the Copyright Act for each infringed work (and in cases where the plaintiff can prove that the infringement was intentional, up to $150,000 in damages.)   The firm then offers the individual an early opportunity to settle for $2,500 before it is named as a defendant in the complaint. 

by Scott Hervey

This is about a birthday card. Not just any birthday card mind you. This birthday card, produced by Hallmark Cards, depicts a cartoon waitress, dressed in an apron, serving food to a restaurant customer. However, not just any waitress could create such a controversy requiring an appeal to the 9^th Circuit. This waitress has, for her head, an oversized photograph of Paris Hilton’s head, and is engaged in witty banter with the customer wherein the cartoon waitress with the oversized Paris Hilton head states Paris’ trademarked (yes, she did file for Federal trademark protection) phrase, “That’s Hot.” What’s all the fuss about? Apparently Hallmark forgot to ask the young heiress if they could use her picture on their card.

by James Kachmar

In Cristoff v. Nestle USA, Inc., the California Supreme Court issued guidance in determining when the statute of limitations runs on a claim for appropriation of likeness. Russell Cristoff, the plaintiff, was a professional model who posed in 1986 for a photo with him gazing at a cup of coffee. Cristoff was paid $250 for the photo shoot which was arranged by Nestle (Canada). 

In 1997, Nestle decided to redesign its label for Taster’s Choice instant coffee but had difficulty locating the artwork that had been used for the original “taster” on its existing label. Nestle decided to use Cristoff’s image because he looked distinguished and similar to the original “taster”. Nestle believed that it could use the image because it had been widely used in Canada. Nestle did not, however, investigate the scope of Cristoff’s consent nor did it ask Cristoff if he would consent to Nestle’s use of his image.

by Scott Hervey

A ruling earlier this month by the Ninth Circuit provided three guidelines all marketing experts and their counsel should take note of.   These guidelines address the extent to which the Telephone Consumer Protection Act (“TCPA”) (and most likely other Federal regulations on telemarketing) impacts texting as part of a marketing campaign. 

In the case at issue, Simon & Schuster hired a third party to manage the promotional campaign for a new Stephen King book, including securing a list of 100,000 cell phone numbers from the licensing agent for Nextones. Nextones offers consumers free cell phone ring tones in exchange for the consumer providing various information, including a cell phone number, and agreeing to receive promotions from Nextone, its “affiliates and brands.”

Shameless Promotion: IP Law Blogger and WGC partner, Scott Hervey, served as production counsel for Hulk Hogan's Celebrity Championship Wrestling.  Be sure to tune in October 18th.

Go to www.hulkhogan.com to view the show's trailer.

By Scott Hervey

John Facenda is a football legend. His deep, baritone voice is “distinctive,” some say “legendary.” Without question, for most football fans, John Facenda was the voice of NFL Films. 

 For decades Facenda worked for NFL Films as an off camera commentator. He worked on a session by session basis under an oral agreement, receiving a per performance fee. Shortly before he died in 1984, Facenda signed a “standard release” contract with NFL Films which stated that NFL Films enjoys “the unequivocal right to use the audio and visual film sequences recorded of me, or any part of them… in perpetuity and by whatever media or manner NFL Films…sees fit, provided, however, such use does not constitute an endorsement of any product or service.” (Emphasis added.)

In 2005, NFL Films produced a 22 minute long television program entitled “The Making of Madden NFL 2006.” The program was about the soon to be released version of the highly popular video game, Madden NFL. The program featured interviews with NFL players and game producers; it contained several sequences comparing the games virtual environment with the actual NFL playing environment, and commented on the realism of the graphic quality of the video game. The program also featured audio and video clips from pervious NFL Films productions, including three sentences, lasting a total of 13 seconds, that were read by Facenda. The producers of the program modified Facenda’s audio clips to make his voice sound more like a computer.

Facenda’s estate sued NFL Films and others claiming that the use of Facenda’s voice in the program falsely implied that Facenda or his estate had agreed to endorse the video game. 

By Sarra Ziari

On August 20, 2008, in Lenz v. Universal Music Corp., Judge Fogel of the United States District Court, N.D. California ruled that copyright owners must consider fair use before issuing takedown notices under the Digital Millennium Copyright Act (“DMCA”), and issued a warning against the misuse of takedown notices by overreaching copyright owners. 

By: Dale C. Campbell and Serena Crouch, Third Year Law Student at McGeorge School of Law

Internet users and privacy advocates across the nation fear they are losing the continuing battle to protect internet privacy rights.  A court decision in a lawsuit between Viacom and YouTube.com is the most recent battlefield regarding data likely to provide the video viewing habits of millions around the world.  

In March 2007, Viacom sued YouTube and Google, Inc. in the United States District Court, Southern District of New York, seeking at least $1 billion in damages for alleged copyright infringement.  Viacom claims that YouTube built its business by willfully offering Viacom’s copyright protected material such as episodes of “The Daily Show with Jon Stewart” and the cartoon “SpongeBob SquarePants.”  Viacom claims that neither YouTube nor its users are licensed to upload its material in the manner it is being used.

By Scott Cameron

The Ninth Circuit just doesn’t like karaoke. At least, that’s what plaintiffs, manufacturers of karaoke machines, in two recent opinions involving copyright law would likely say. In both decisions, the Ninth Circuit affirmed the district courts’ dismissal of the complaints without leave to amend. Both of these decisions discussed the various copyrights that are implicated in a karaoke device, including the copyright of the performance of the song itself, the song lyrics, and the synchronization of the two. Both decisions also involved the licenses required by karaoke device manufacturers.

By Scott Hervey

Last October I had the good fortune of being invited to attend my friend’s “man shower” in Las Vegas. What made this trip interesting was the fact that this all guy’s version of a baby shower would be the subject of an episode of the VH1 reality TV show “Scott Baio is 46 and Pregnant.” While there are a number of interesting stories that came out of this first and only man style baby shower, the “what happens in Vegas stays in Vegas” rule prohibits me from telling you any. However, the tales fit for this article comes from my observations of the numerous, IP issues that came up during our two days of shooting.

As regular readers of my articles may know, part of my practice includes representing independent motion picture and reality television producers. While I have been production counsel for a number of movies and reality television shows, most of my work occurs before the cameras ever roll. Part of this work involves working with the production staff and preparing them to deal with those issues that may arrive when shooting in an environment you don’t entirely control. However, being on set and having to identify issues on the fly (especially when the person identifying the issues is not a lawyer) is very different from engaging in theoretical and hypothetical discussions.

By Scott Hervey

Just how valuable are baseball statistics? Apparently very valuable. In fact, baseball statistics are so valuable that CBC Distribution and Marketing, which has run the CDM Fantasy Sports leagues since 1992, sued Major League Baseball and challenged its ownership claim over player statistics.   In a matter which rose all the way to the United States Court of Appeals for the 8^th Circuit, CBC agued that baseball statistics become historical facts as soon as a game is over, and that it shouldn’t have to pay for the right to use them. Major League Baseball claimed that the right of publicity belonging to major league baseball players makes it illegal for fantasy leagues to commercially exploit the statistical profiles of its players.

By Scott Hervey

The United States District Court for the Southern District of New York rules that the downloading of a digital music file embodying a particular song does not constitute a "public performance" of that song within the meaning of the Copyright Act.  Thus, on-line music retailers need not negotiate a license with performance rights organizations like ASCAP and BMI in order to offer downloadable music files to consumers.

The opinion is available here

By W. Scott Cameron

Last month, in a lawsuit filed in the U.S. District Court for the Southern District of New York, the Motion Picture Association of America (MPAA) companies[1] sued Load ‘N Go Video, a small company that loads customer purchased DVDs onto their personal iPods, for copyright infringement and violating the Digital Millennium Copyright Act (DMCA).

By Scott Hervey

On October 16 the Register of Copyrights issued an interpretation of Section 115 of the Copyright Act that will make it easier for record labels and cellular phone services to offer ringtones to consumers. The question, whether compositions used for ringtones [monophonic (single melody line) or polyphonic (melody and harmony)] or for master ringtones (ringtones taken from a master recording) fall under the compulsory license provisions of Section 115 of the Copyright Act, was referred to the Register of Copyrights by the Copyright Royalty Board (“CRB”) acting on a request from the RIAA. The decision – that ringtones (including monophonic and polyphonic ringtones, as well as mastertones) may be subject to a compulsory license – marks a major victory for record labels and cellular phone services looking to fuel the ringtone hungry market.

By Scott Hervey

Wired reports that the French judiciary has been issuing lenient sentences and penalties to individuals involved in criminal proceedings involving illegal file trading.#160 The president of the French magistrate union, Judge Dominique Barella, has openly taken the position that the harsh criminal penalties imposed under French copyright law are inappropriate under the circumstances.#160 Wired reports#160 the Barella has insisted that a more appropriate policy needs to be adopted in France and in Europe that protects what he says are mostly young people of the MP3 generation who are weak targets against the machinations of the entertainment industry's legal agenda.

The French entertainment industry is not taking Barella's position lightly.#160 In a letter to the French Minister of Justice, representatives of France's entertainment, film, music associations stated "[w]e are surprised and shocked that the president of the magistrates union, given the level of influence he has on his colleagues, can publish in the press a call to not criminally sanction criminal acts, which contradicts the intentions of government bodies."

Barella defends his position, stating that the government's resources would be better spent focusing on large scale, international counterfeiting rings instead of targeting young Parisians who just want fill their ipod.

By Scott Hervey

If a sound recording produced before 1972 falls into the public domain in a foreign nation, is that sound recording still entitled to protection in the United States?#160 Recently, in Capitol Records, Inc. v. Naxos of America, the New York Court of Appeals (the State's highest court) issued an opinion addressing this question; a question that is substantially more complex than it first appears.#160 One reason for its complexity is that Congress, when amending the Copyright Act in 1972, provided protection for sound recordings produced after February 15, 1972, but did not extend statutory protection to recordings created before that date.

Capitol Records v. Naxos involved a dispute between two music recording companies over the right to manufacture and distribute certain sound recordings.#160 Capitol Records was the owner of the rights in several classical recordings made in the 1930s of three world-renowned artists: Yehudi Menuhin's July 1932 performance of Edward Elgar's "Violin Concerto in B minor, Opus 61"; Pablo Casals' performances of J.S. Bach's cello suites, recorded between November 1936 and June 1939; and Edwin Fischer's performances of Bach's "The Well Tempered Clavier, Book I," recorded between April 1933 and August 1934, and of Bach's "The Well Tempered Clavier, Book II," recorded between February 1935 and June 1936.#160 The rights to these sound recordings were originally owned by The Gramophone Company Limited, which later became know as EMI Records Limited.#160 All of the above-performances were recorded by Gramophone in England. At that time, the United Kingdom provided statutory copyright protection to sound recordings for only 50 years.#160 As such, all of these recordings entered the public domain in the United Kingdom by 1990.

In 1996, EMI entered into a series of agreements with Capitol granting Capitol exclusive licenses to exploit a variety of recordings in the United States, including the Gramophone recordings.#160 Capitol remastered the original recordings, improving their audio quality, and manufactured them in CD format and distributed them to record stores.

Naxos was also in the business of remastering and re-releasing historical recordings, and, as circumstances would have it, grew very interested in the Gramophone recordings. Naxos located copies of the original 1930 recordings and undertook its own restoration and remastering process in the United Kingdom. These remastered CDs were distributed for sale in the United States beginning in 1999, competing with Capitol's CDs.

Despite receiving cease and desist letters from Capitol, Naxos continued with the manufacture and sale in the United States of its CDs.#160 Naxos believed that because the sound recordings had entered into the public domain in England it was free to manufacture and sell in the United States its remastered versions.

Capitol sued Naxos for copyright infringement, unfair competition, misappropriation and unjust enrichment, all of which were premised on New York law.#160 Naxos moved to dismiss, arguing that the recordings had entered the public domain in the United Kingdom and, hence, the United States as well.#160 The District Court granted summary judgment to Naxos, concluding that Capitol did not have intellectual property rights in the original recordings because its copyrights had expired in the United Kingdom.#160 The Appeals Court upheld the District Court's hearing.#160 Capitol ultimately appealed to the State's highest court.

Before engaging in an analysis of the issues on appeal, the Court discussed the evolution of copyright protection in England and the American adaptation of copyrights.#160 The Court's discussion is not only enlightening, but helpful in understanding and appreciating the complexity of the issues it was facing.#160 The Court noted that when examining copyright law, "a page of history is worth a volume of logic" New York Trust Co. v Eisner, 256 US 345, 349 (1921)

Modern copyright law was born in England in the 15^th century, primarily as a result of the development of the printing press.#160 At that time it was printers and publishers, not the authors who initially sought to control the right to publish literary works.#160 At the same time, the Crown wanted to maintain censorship authority over the press.#160 As such, establishing a system to grant exclusive rights to reproduce printed materials served the government's desire to control and the printers' desire to limit competition.

In the mid 1600s, English law began to recognize an author's natural property right to control the dissemination of a literary creation.#160 Parliament's passage of the Statute of Anne in 1709 broadened the concept of copyright to include the ability of an author to decide whether a literary work would be published and disseminated to the public (referred to as the "right of first publication") and, if distributed, how the work would be reproduced in the future. The Statute of Anne vested an author or publisher of a literary work with statutory copyright protection for specified time periods - new works received 14 years of copyright protection (with a 14-year term renewal) and previously published works were entitled to 21 years of protection.

As America transformed itself from British colonies into independent states and commonwealths, the law makers and the courts looked to colonial common law, derived from English law, as the basis of national law as long as it was consistent with the acts of the colonial legislatures.#160 This included English common-law copyright protection.

Eventually, new states began adopting statutory protection for copyright, using the Statute of Anne as a guideline.#160 However, as the drafting of the national Constitution was underway, the Founders decided that federal copyright protection would be more effective and desirable than leaving the matter to the states.#160 The first Congress, having been granted the constitutional power to "promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries" enacted America's first federal copyright statute - the Copyright Act of 1790. The Act provided the author "of any map, chart, book or books," or the author's assignee, the exclusive "right and liberty of printing, reprinting, publishing and vending such map, chart, book or books" for up to 28 years.

At the dawn of the 20^th Century, America was facing the challenge of applying the Copyright Act to new forms of technology not anticipated in previous versions of the Act.#160 Although musical compositions were covered by the Act at that time, courts in that day were wrestling with the application of the Copyright Act to a new technology in music field - piano player rolls.#160 #160

In the early 1900's federal copyright protection was extended only to written works that could be "seen and read."#160 This did not bode well for the new piano player roll.#160 A Supreme Court case addressing the federal protectability of music rolls held that because they were incapable of being read by a person, federal statutory protection for "copies or publications of the copyrighted music" did not extend to music rolls.#160 Following this case, Congress passed the Copyright Act of 1909. Since the Supreme Court had declared that player piano rolls and, by implication, sound recordings could not be "published" (i.e., read by a person), Congress did not include protection for audio musical works in the new Act.#160 However, Congress acknowledged that sound recordings were eligible for state common-law protection and explicitly stated that the Act should not be construed to limit common law copyright interests.

The dual system of copyright protection resulted in court decisions that were difficult to harmonize.#160 In 1971, Congress amended the Copyright Act of 1909 to expressly include sound recordings within the classes of artistic and intellectual works entitled to federal copyright protection.#160 However, the amendment was a prospective only, so recordings created before February 15, 1972 - the effective date of the amendment - were not protected by federal law.#160 The states would have jurisdiction over pre-1972 sound recordings until February 15, 2047 - 75 years after the effective date of the 1971 amendment.

The court in Capitol, having determined that New York common law is not pre-empted by federal Copyright with respect to pre-1972 works, then turned its attention to whether the works being in the public domain in the United Kingdom would have an affect on the protectability of the works in the United States.#160 Naxos' entire defense relied on the presumption that the expiration of the works' copyright term in the United Kingdom terminated any copyright protection in the United States.

Naxos' position was not without support.#160 The Berne Convention and the Universal Copyright Convention both recognize the "Rule of the Shorter Term," which generally provides that the term of copyright in the nation where a work is first published should be applied by other nations that would grant a longer period of protection.#160 These treaties have the force and affect of federal law. However, neither treaty applies the Rule of the Shorter Term to sound recordings; sound recordings fall under the Phonograms Convention.#160 And then, this provision applies only to recordings fixed after March 10, 1974, the date this treaty became law in the United States.

The Capitol court came to the reasoned conclusion that neither federal statutory nor Constitutional law prohibits the states from providing common-law protection to artistic works that are in the public domain in the country of origin.#160 The Court found no justification under New York law for substituting the British copyright term in place of New York's common-law protection, which would continue until federal preemption occurs in 2047.#160 As such, although the works had fallen into the public domain in the United Kingdom, Naxos sale of the recordings in the United States infringed Capitol's copyright.