On December 27, 2020, the Economic Aid to Hard-Hit Small Businesses, Nonprofits and Venues Act, was signed into law. The Act introduces a new $15 billion grant program through which the U.S. Small Business Administration (SBA) will provide aid to struggling live venue operators or promoters, theatrical producers, or live performing arts organization operators, relevant museum operators, motion picture theatres, and talent representative/agents. This program offers a critical lifeline from the Federal government for the nation’s performing arts venues, movie theatres and museums. More information can be found here:
NEW FEDERAL COPYRIGHT LAW: CASE ACT = small claims for copyright infringement.
On December 27, 2020, the long-awaited CASE Act was signed into law. It establishes a small claims court for copyright infringement claims under $30,000.
If your book, website, photograph, visual work or other creative project has been infringed, you can opt to bring an action before the “Copyright Claims Board” (“CCB”) and you can represent yourself without a lawyer. However, knowledge of copyright law and Federal Rules of Civil Procedure and Evidence are still required. Claims cannot be filed until the Copyright Office creates the CCB and enact rules and regulations.
Here are the highlights of the CASE Act:
- You must have applied for or received a copyright registration for your book, photograph, website, etc.
- You pay a filing fee and include a statement of facts in your claim filed with the CCB.
- The CCB may accept your claim, deny your claim, or allow you to amend and resubmit your claim.
- If your claim is accepted, you must send a notice (that includes the correct information) to the infringer.
- The infringer can “opt out” of the and you must then take your claim to the Federal Court (the regular way of suing for copyright infringement).
- If the infringer does not opt out, he/she loses the opportunity to have the dispute decided by a court and waives the right to a jury trial.
- If the infringer does not opt out, the infringer may bring counterclaims against you.
- The CCB schedules proceedings, settlement, conferences, discovery, just like a regular court action. Proceedings are held by video conference – no travel to Washington D.C. is required.
- If the CCB finds that your copyright was infringed, you may recover actual or statutory damages.
- If your copyright was not registered at the time of the infringement, CCB can award statutory damages of up to $7,500 per infringement.
- If your copyright was registered at the time of infringement, CCB can award you statutory damages of up to $15,000 per infringement.
- The infringer can raise defenses and mitigating factors for CCB to consider when awarding damages.
- Total damages are limited to $30,000 not including legal fees.
- After the CCB renders its decision, either party can request reconsideration. If denied, the losing party can ask the Register of Copyrights to review the decision.
- The losing party has limited grounds to appeal the decision in Federal Court.
- The CCB may find that that an infringement claim was made in “bad faith” If so, it can award fees and costs of up to $5,000 to the other side.
The Copyright Office has until December 27, 2021 to establish the CCB and it is now enacting regulations to make the law effective. As soon as claims can be filed, I will post another notice here.
Summary for self-administered composers (without a publisher)
The MMA is now effective. If you are a songwriter, you need to get your songs into the now effective national database. It is the database that it intended to act as the U.S. universal database and for copyright mechanical licensing purposes.
Here is a quick to do list if you self-administer your compositions. If you have a publisher, you should contact it to see if they are actively registering your songs in the MLC database.
- Watch video here: https://vimeo.com/487019593. This is a good overview of music business and copyright law and How the MLC works.
- All Songwriters should join the MLC. Link here: https://www.themlc.com/membership
- Register your compositions and/or review the MLC database for accuracy.
- Also, make sure you have registered all of your sound recordings with SoundExchange here: soundexchange.com. If you are registered with a company such as TuneCore, they may have already registered your master recordings. Check with all services you may be associated with such as TuneCore, The Orchard, etc.
The Mechanical Licensing Collective (The MLC) is a nonprofit organization designated by the U.S. Copyright Office pursuant to the historic Music Modernization Act of 2018. Starting in January 2021, The MLC will administer blanket mechanical licenses to eligible streaming and download services (digital service providers or DSPs) in the United States. The MLC will then collect the royalties due under those licenses from the DSPs and pay self-administered songwriters, composers, lyricists and music publishers.
January 2018 To-Do for Individuals and Companies who Own Intellectual Property
By Connie J. Mableson
If you individually own or if you have an interest in a company that owns intellectual property (IP) assets, January is a good time to prepare an IP audit for you IP assets. An IP audit is simply a list or database pertaining to your IP. It can help you identify IP assets, make the proper registrations to protect the IP, administer any IP licenses, help you to keep tract of the IP’s monetization, and help you collect IP royalties. Your IP audit will create an immediate and long-term impact on your assets and potential income to be collected.
STEP 1: MAKE AN INVENTORY OF ALL YOUR IP. What is IP? It includes:
A. Copyrights: Any creative expression such as text, artwork, graphics, PPT presentations, website HTML, Website code, text on websites, and brochures. Trademarks, Patents, and Trade secrets.
B. Your WEBSITE. Make sure you OWN your (a) URL and (b) your HTML and website. Perform a WHOIS search at www.whois.net to see if you (or your website development company) own your URL. If not, make sure you get the purported owner to transfer ownership to you and make sure the registrant’s records (like GoDaddy) are changed. Then make sure you get, from your website developer and anyone who contributed anything to the website, a release of rights to you. Under copyright law, the developer of your website owns your website unless the developer has transferred ownership to you IN WRITING.
C. Music. IP includes any musical compositions or master sound recordings you may have made.
D. AV Productions. IP includes any audio-visual productions you made. From corporate videos, to product videos, music videos, or any YouTube videos. This can also include films, documentaries, commercial adverts, etc.
E. Trademarks. Are you using any word marks like company name, product names, services names? What company or brand logos are you using? Make a list.
F. Patents. DO you have any utility or design patents?
G. Trade Secrets. Do you have any trade secrets in the way of processes, formulas, methods, that need protection but have not been protected by filing a copyright or patent? These need to be listed and identified as CONFIDENTIAL INFORMATION. Only certain people should have access to your trade secrets and they should only be disclosed on a need to know basis and always under a Non-disclosure agreement.
Step 2: PROTECT YOUR IP.
A. Copyrights. Any creative expression such as text, artwork, graphics, PPT presentations, website HTML, Website code, text on websites and brochures, musical compositions, master sound recordings, and audio-visual productions should be registered through the U.S. Copyright Office.
B. Patents should be registered with the USPTO-Patent Office.
C. Trademarks should be registered:
-at the state level. Either with your state’s corporation commission or secretary of state (each state is different), you should register your marks, names, and logos so you have priority in your state.
-federal level -USPTO. If your marks, words, slogans or logos are used in more than one state, you can apply for a federal trademark registration. Consider conferring with a Trademark attorney to get this done properly. Not all marks or names are eligible for registration.
D. Trade Secrets can only be protected by Non-Disclosure Agreements. Make sure you have a form of NDA that includes a non-circumvention provision and is up to date.
Step 3: CHECK YOUR CONTRACTS. Some of your IP may be licensed under License or similar agreements. Make sure you have copies of all licenses in the file for the specific IP. Check the licenses to make sure you are in compliance and that the licensee is also in compliance for payments, reporting, etc. If not, you may want to see legal counsel to help you get the licensee in compliance.
Step 4: DECIDE OF YOU NEED FOREIGN PROTECTION. This may be the year you decide to obtain foreign protection for your IP. This could mean foreign copyright application, foreign trademark application or Madrid protocol or other international registration for trademarks.
Step 5: TICKLE ALL DEADLINES for filing updates, renewals, etc., in your individual/company master calendar. Trademarks and patents require renewal. Tickle these dates. Also, all of your IP contracts should have dates tickled for termination, renewal, option periods and anything in the contract that requires action by either party. By doing this, you can also budget for the renewals and have a good idea what monies you will need and when for renewals.
DISCLAIMER: The materials in this article and as may appear on www.mablesonlaw.com, www.dmcabook.com, and www.literaryattorney.com (the “materials & websites”) are made available by Connie J. Mableson, PLLC for informational purposes only and are not legal advice. The transmission and receipt of information contained in and on the materials & websites do not form or constitute an attorney-client relationship. I am not your attorney unless you have signed a written engagement letter with my firm. Persons receiving the information in and on the materials & websites should not act upon the information without seeking professional legal counsel. In the event the materials & websites are not consistent with the rules or laws governing communications of legal services in a particular state, and a client contact is generated as a direct result of such materials, Connie J. Mableson, PLLC is unwilling to assume the representation of the client contact.
Client and fellow attorney, Kerrie Droban, just published her 6th best-selling (just watch!) True Crime book from St. Martin’s Press. THE LAST CHICAGO BOSS: My Life with the Chicago Outlaws Motorcycle Club (St. Martin’s Press, 2017), is Peter “Big Pete” James’ explosive memoir about becoming “The Godfather” of the Chicago Outlaws. Over 20 years, Big Pete formed and commanded a coalition of 38 motorcycle clubs and 8 outlaw motorcycle club chapters in the Chicagoland area. In voyeuristic fashion, his story exposes readers to the inner sanctum of the Chicago Outlaws, rival gang wars, the many foiled Hells Angel “hunts” and the symbiotic relationship between outlaw biker and Chicago mobster. THE LAST CHICAGO BOSS reads like the real “Sons of Anarchy.” Big Pete’s powerful and extraordinarily commanding criminal syndicate boasted extortion, contract murders, drug and arms trafficking, money laundering, and assassinations.
Kerrie has penned five best-selling true crime books for St. Martin’s Press and she has twice won the USA News National Book Award for best True Crime and Best Memoir. Her books include A Socialite Scorned: The Murder of Gary Triano, Running with the Devil, Prodigal Father, Pagan Son, Vagos, Mongols, and now, Outlaws. Her book, A Socialite Scorned: The Murder of Gary Triano, was featured on Dateline and in “Murders and Mansions” produced by La Brea Entertainment. Her book, Running with the Devil, was recently made into a television series now in its second season entitled “Gangland Undercover” produced by the History Channel. It wouldn’t surprise me if Outlaws goes to TV as well. Now that is the power of the “derivative right” under the Copyright Act.
Kerry has written articles for TIME and has appeared on national television on CNN, CNBC’s American Greed, “A Widow’s Web,” “A & E’s “Gangland,” “Behind Enemy Lines”, the American Hero’s Channel, “Codes and Conspiracies,” Investigation ID and the Discovery Channel’s “Deadly Devotion,” and in a series entitled, “Deep Undercover.”
Recently, we assisted Derek Hales of Sleepopolis regarding a dispute with Casper mattresses about Derek’s successful mattress review site. Derek no longer owns the website, Sleepopolis, but here is a link to the Fast Company story about his legal journey.
A Trademark Application for “It’s 1700 Hours Somewhere” has been filed by Veteran Beverage Company at the USPTO. Jimmy Buffet’s Margaritaville Enterprises, which owns trademarks on the phrase “It’s Five O’Clock Somewhere” and several variations, has challenged the application at the TTAB (the Trademark Office’s Administrative Tribunal). The Trademark application is for beer, which is closely related to Margaritaville’s beverage and bar services marks, and that the only difference is that it shows 5:00 p.m. in military time. Margaritaville Enterprises v. Veteran Beverage Co., No. 91236809 (T.T.A.B., filed September 22, 2017).
If you are a copyright owner of a video that has been copied or pirated without your permission, Facebook is making it easier for you to police the social platform for unauthorized and pirated videos — and then either monitor or block them, or potentially make money from them.
Facebook’s Rights Manager allows copyright holders to identify unauthorized video sharing based on reference files. But using the system has largely been a manual process, unless rights owners developed hooks from their own automated systems into the Rights Manager’s API.
Facebook now is directly integrating Rights Manager with services from three third-party providers —Zefr, Friend MTS, and MarkMonitor — to provide new options to automate such tasks. Although Facebook doesn’t charge any fees to use Rights Manager, the third-party partners do.
Zefr: Zefr’s RightsID system was originally created for YouTube. Through Zefr’s access to Facebook’s video-search API, it can help rights holders find intellectual property via descriptive search; Zefr also will offer clients the capability to manage the queues of automated matches returned by Rights Manager.
Mark Monitor: MarkMonitor provides antipiracy-screening services for on-demand and live-streaming video.
Friends MTS: U.K.-based Friend MTS’s services for TV broadcasters let them find illegal live-streams of their channels
Facebook’s Rights Manager lets content owners create automated rules to determine what actions to take when it finds a copyright-infringing video. They can block the video from being viewed; leave the video up and monitor it for activity; or claim a share of any advertising revenue generated if an ad break runs during the video. In addition, rights holders can choose to manually review the videos that are flagged as a match.
Content owners must be approved to access to Facebook’s Rights Manager tool, via an application available at rightsmanager.fb.com.
NEW LAW ALERT –MISSION CRITICAL TO YOUR WEBSITE BUSINESS
IF YOU OWN A WEBSITE and you allow others to post reviews, comments, pictures, or any content, you may be liable for contributory copyright infringement if you do not comply with the DMCA. Even a single claim of copyright infringement could cost you thousands in attorneys’ fees, not including damages.
The DMCA has changed. YOU MUST ELECTRONICALLY FILE YOUR DESIGNATED AGENT (THE PERSON WHO RECEIVES THE DMCA NOTICES REGARDING YOUR WEBSITE) BEFORE DECEMBER 31, 2017 OR YOU LOSE DMCA SAFE HARBOR PROTECTION. Even if you have filed an agent already, you must re-file using the new electronic filing system.
For existing and former clients, I will act as your designated agent (if you want me to) and/or will file your designated agent information electronically with the U.S. Copyright Office for a flat fee (including the filing costs) of $100.00 per URL/website. Please provide the following information: (1) the URL of your website; (2) the owner name of the website (your company name or individual name); (3) address (no P.O. Boxes); (4) telephone number; (5) email address, and remit $100.00 to me prior to December 27, 2017.
You must also post certain information on your Website to qualify for DMCA and this is a good time to evaluate your compliance with DMCA to maintain complete DMCA safe harbor protection.
Feel free to call me if you have any questions. Connie 602-277-8100.
“Reaction Videos” are videos that show the emotional reactions of people viewing television series episodes or film trailers and have grown in popularity on YouTube. These videos must necessarily use copyrighted content owned by others (such as the television show) as a part of the “reactions”. The United States Southern District Court of New York recently ruled that in at least one case, the use of the borrowed content was a “fair use” and could be used without the permission of the content owner.
The case concerned a video uploaded to YouTube by the h3h3Productions channel (Ethan and Hila Klein) in which the Kleins mock a video of another professional YouTuber, Matt Hosseinzadeh. The five-minute video by Mr. Hosseinzadeh is a fictional portrayal of a character played by the author chasing after a woman who challenges him to a parkour race. The Kleins’ video intercuts clips from Mr. Hosseinzadeh’s video with their commentary, as the couple criticize a range of aspects of the video including the production values of the segment, Mr. Hosseinzadeh’s fashion styling and the author’s portrayal of women.
Mr. Hosseinzadeh filed a DMCA Notice (Digital Millennium Copyright Act) with YouTube. YouTube responded by taking down the Kleins’ video, which led the Klein’s to submit a DMCA counter-notification challenging Mr Hosseinzadeh’s DMCA Notice and claiming that the video was fair use of the original work, and therefore did not infringe Mr Hossenzadeh’s copyright in the video.
Following this, the legal action in question was filed, with Mr. Hosseinzadeh alleging copyright infringement and misrepresentation.
The Court held on summary judgment that the Kleins’ use of Mr. Hosseinzadeh’s video was “fair use” after applying the 4 fair use factors.
For more information about the DMCA and fair use, see our webpages here.
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