What's New

Part 2

Winter 1996: January 17

[Copyrights for Musicians] [Trademarks for Restaurants] [IMEC SS ASICs]

Contributions -- Legal Advice:

Introduction:

The U.S. Copyright Act is Federal legislation enacted by Congress under its Constitutional grant of authority to protect the writings of authors. A copyright gives the owner the exclusive right to reproduce, distribute, perform, display, or license his work. The owner also receives the exclusive right to produce or license the production of derivatives of his work. Limited exceptions to this exclusivity exist for types of "fair use," such as book reviews.

Changing technology has led to an ever expanding use and understanding of the word "writings." The Copyright Act now reaches architectural design, software, the graphic arts, motion pictures, and sound recordings. This expansion has resulted in the increasing need for musicians performers, composers and producers to understand the applications of copyright law to the music industry.

This paper will address a number of key legal issues pertinent to copyright law applications within the music industry. Specifically, the issues of originality, copying, derivative works, fair use and musical parodies will be examined, and court decisions which establish the legal boundaries of these issues will be discussed. Similarly, applicable general rules of law will be provided.

Originality:

Copyright protects only an author's original expression. It doesn't expand to any ideas, system or factual information that is conveyed in a copyrighted work, and it doesn't extend to any pre-existing material that the author has incorporated into a work. The standard for originality is quite low. "Original" in this context means only that the work has its origin in the author. There is no requirement that the work be different from everything that has come before it need only embody a minimum level of creativity and owe its origin to the author claiming the copyright. As an extreme example, if two poets, each working in total isolation and unaware of one another's work, were to compose identical poems, both of the poems would meet the originality requirement for purposes of the copyright statute (Feist Publications, Inc. v. Rural Telephone Service Company, Inc., 111 S. Ct., 1991).

Evidence of Copying:

Although lack of originality, or copying, is an essential element in copyright infringement, direct evidence of copying is not usually available. Therefore, copying is generally proved through verification of one or more of these three circumstances access and substantial similarity, striking similarity, and subconscious copying. It has been established that access to a particular copyrighted recording, and substantial similarity between it and the "infringing" work are in themselves deemed sufficient to create an inference of infringement (Broadcast Music, Inc. v. Moore-Law, Inc., 484 F. Supp. 357, 1980). It has also been established that proof of access and copying in music plagiarism cases can be established through striking similarity between an existing and a new work (Selle v. Gibb: Entertainment and Sports Law Journal , 139, 1984). Also, if two works are so strikingly similar as to preclude the possibility of independent creation, copying may be proved without a showing of access (Ferguson v. NBC, 584 F. 2d 111, 1978). Finally, intentional copying may not even be at issue. George Harrison's "My Sweet Lord" was determined to be strikingly similar to the Chiffons' "He's So Fine." The court found infringement through "subconscious copying" in Bright Tunes Music Corp. v. Harrisongs Music, LTD., 420 F. Supp. 177 (1976).

It should be noted that, in suits for infringement, similarity is not established through the "dissection to which a musical composition would be submitted under the microscopic eye of a musician," rather, from the impression that the allegedly infringing song conveys to the ear of the average person (Carew v. RKO Radio Pictures, 43 F. Supp. 199, 1942). Moreover, in an action for the infringement of a copyrighted song, proof that other songs are similar to it is immaterial unless it casts doubt upon the originality of the copyrighted song or upon the allegation that the defendant copied it (Baron v. Leo Feist, 78 F. Supp. 686, 1948).

Words, Phrases, Notes and Chords:

There is a very fine line between copyright infringement and no infringement with respect to the use of words, phrases, notes, musical patterns and chords. Easily arrived at phrases and chord progressions in song are usually noncopyrightable, and may therefore be "copied." Likewise, clichèd language, phrases and expressions conveying an idea that is typically expressed in a limited number of stereotypic fashions are not subject to copyright protection. However, if a piece is sufficiently distinctive, it is copyrightable. For instance, the five notes played by the spaceship in "Close Encounters of the Third Kind" are copyrightable because of their originality, even though they are just five notes.

It has been determined that the repetition of a unique musical pattern in copyrighted songs and allegedly infringing songs constitutes requisite substantial similarity to find infringement (Abkco Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 1983). However, in another similar case, the court determined that a song recorded by Julio Iglesias did not constitute infringement because the inclusion of commonly occurring chord structures in a song is not considered infringement, owing to the limited number of note and chord progressions (Intersong-USA v. CBS, Inc., 757 F. Supp. 274, 1991).

In an interesting case regarding originality and copyright law, the court was required to decide whether a single word, if wholly original and sufficiently long, was capable of sustaining a copyright. The plaintiff contended that his copyright in a song entitled "Supercalafajalistickespeealodojus" had been infringed by a song from the movie Mary Poppins entitled "Supercalifragilisticespialidocious." Noting that the only similarity between the songs was in the use of the word, the court held that although the plaintiff claimed to have coined it and introduced it to the public in his song, he had failed to establish, in view of evidence that the word had been known earlier, that the defendants were guilty of copying from his work (Life Music, Inc. v. Wonderland Music Co., 241 F. Supp. 653, 1965).

Derivative Works:

As pertains to copyright law, a "derivative work" is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A musical arrangement that is a "derivative work" is protectible by copyright. In Woods v. Bourne Co., 841 F. Supp. 118 (1994), the court held that to qualify as a derivative work, there must be such things as unusual vocal treatment, additional lyrics of consequence, unusual altered harmonics, novel sequential uses of themes, or something of substance added which makes the piece to some extent a new work. However, in Tempo Music v. Morris, 838 F. Supp. 162 (1994), the court denied summary judgment and held that there were material issues of fact as to whether the addition of "harmony" was sufficiently original to warrant protection.

Fair Use:

The Fair Use Doctrine is a legal concept that was originally created by the courts to allow some copying of copyrighted works in spite of the seemingly absolute rules against it in the 1909 Copyright Act. The courts recognized that such things as quoting brief passages for scholarly criticism or satire were reasonable and did not interfere with the copyright owner's financial return. The 1976 Copyright Act established guidelines for determining which uses of copyrighted works are fair. The four factors which must be considered are:

1. The purpose and character of the use, including whether it is for profit or for a nonprofit educational purpose.
2. The nature of the copyrighted work.
3. The percentage of the total work that is used.
4. The effect the use will have on the value or profit-making potential of the original work.

The issue of "fair use" is pertinent to musical recordings where segments of copyrighted songs are used in other recordings, and in the creation of musical parodies. Where a copyright question involves only portions of a work, the question that must be answered is whether the defendant appropriated, either quantitatively or qualitatively, constituent elements of the work that are original. In 1942 it was established that "infringement must be founded upon more than the adoption of a few measures here and there. The theme and general melody must be substantially lifted" (Arnstein v. BMI, Inc., 46 F. Supp. 379). From another case in the same time period, it was determined that a portion of the lyrics of a copyrighted song may be quoted without permission in fiction or non-fiction, provided the use is casual and for the purpose of establishing mood or background (Broadway Music Corp. v. F-R Publishing Corp., 31 F. Supp. 817, 1940).

In 1993, a songwriter brought action against defendants who digitally sampled sections of the songwriter's song, alleging copyright infringement. Summary judgment was denied the defendants because the judge held that genuine issues of material fact existed as to whether the phrases "ooh," "moves," and "free your body" used in the plaintiff's musical composition were significant to his song (Jarvis v. A & M Records, U.S. D. Ct., N.J).

Fair Use and Musical Parodies:

Musical parodies often raise the question of fair use. In 1984, radio personality Rick Dees rewrote the lyrics to the song "When Sunny Gets Blue" and called the song "When Sonny Sniffs Glue." Dees ended up in court for copyright infringement. In Fisher v. Dees 794 F. 2d 432 (1986), the ninth circuit U.S. Court of Appeals produced a ruling that clarified the scope of the Fair Use Doctrine. The appellate court affirmed a trial judge's decision to dismiss the lawsuit without a trial, saying that the unauthorized revision of the lyrics was unmistakably a parody that it was not intended to tap the same market as the original song. The court reaffirmed the principle that someone may do a parody or satire of a copyrighted work without infringing the copyright.

A number of other courts have disagreed with that conclusion. The growing number of sampling techniques in which one recording artist borrows from the work of others has produced still more lawsuits in which millions of dollars are at stake. In 1993 the U.S. Supreme court agreed to hear a case involving the use of a take-off on a Roy Orbison song from the 1960s, "Oh, Pretty Woman," by the rap group 2 Live Crew. In Campbell v. Acuff-Rose Music Co. 972 F. 2d 1429 (1992), a lower federal court ruled that 2 Live Crew's adaptation of Orbison's song was not a fair use because of 2 Live Crew's "blatantly commercial purpose." The court relied heavily on two other cases for the legal proposition that the unauthorized use of a copyrighted work for primarily commercial purposes is presumptively an unfair use.

Conversely, as in the Dees case, a short parody of the "I Love New York" advertising theme on the comedy show "Saturday Night Live" was found to be a fair use in Elsmere Music Inc. v. National Broadcasting Co., 623 F. 2d 252 (1980). Hence, the validity of the need for a Supreme Court decision on the issue of musical parodies.

The Supreme Court answered the parody question with a definite "maybe" when it remanded the 2 Live Crew case back to the district court for more thorough consideration of the four fair use factors. The Court held 2 Live Crew's commercial parody may be a fair use (Campbell v. Acuff-Rose, U.S. 114 S. Ct. 1164, 1994).

The situation with respect to parodies is not necessarily a split of authority regarding the commercial nature of the recording. The cases indicate a consistent relationship between the substantiality of the taking and whether or not the use was found to be fair. Where parodies were "sung to the tune of," or the takings were small less than 30 seconds, and where the parodies were small parts of a satirical and comedic whole, no infringement has been found. On the other hand, where nearly entire songs have been appropriated, and where works are of a commercial nature, infringement is generally found.

Conclusions and Recommendations:

As can be seen, the issues of originality of composition, evidence of copying, derivative works, fair use of musical segments, and musical parodies each have many implications with respect to copyright law and copyright infringement. Some of these implications are quite subtle and some, as in the legal cases dealing with musical parodies and fair use doctrine, have yet to receive clear resolution in the courts.

For these reasons, it is important that performers, composers and producers new to the music industry familiarize themselves with historical and contemporary copyright law as applied within this industry. This familiarity will help these individuals to protect their own works from copyright infringement, and themselves from the liabilities of infringing on the works of others.

William G. Wood is a Plant Manager for Fiberite, Inc., a manufacturer of advanced composite materials. He holds a B.S. in Chemical Engineering from the University of Utah, and is currently enrolled in the M.B.A. program at the University of Phoenix.

Alfred V. Jackson is a Correspondence Analyst for the document company, Xerox. His education includes a B.A. in Community and Urban Development Business Administration (University of Maryland, 1981). He is currently enrolled in the M.B.A. program at the University of Phoenix.

Contributions -- Legal Advice:

A single location restaurant may be able to obtain federal service mark registration. The ability to acquire and maintain federal registration is important to a restaurant's identity and exclusivity. The most serious challenge to the ability to register is the requirement that the applicant show that the restaurant is engaged in interstate commerce.

Since the restaurant business is very competitive, a new concept must generally be shown to be successful before investors will invest in chain expansion. As a result, even the most successful restaurant chains began as a single location restaurant. Early protection for the restaurant's name and logo can prove essential in preventing imitators from either taking or diluting the single location restaurant's identity.

Federal protection for restaurants is typically obtained by filing a service mark application for class 42, for the services of providing food and drink. Of course, where the restaurant also sells, other separately identifiable products it may also separately seek trademark protection for those items. Such trademark protection will based upon meeting interstate commerce requirements for each trademark.

The service mark will usually include the restaurant's name, logo, or combination of name and logo. In order to obtain registrations for these, the restaurant must make an adequate showing to the Patent & Trademark Office that the applicant is doing business in interstate commerce. For restaurant chains which are operating in more than one state, this standard is easily shown. The single location restaurant as a practical matter must go to greater effort to show its affect on interstate commerce.

Two prominent cases, Lobo Enterprises Inc. v. The Tunnel Inc., 3 USPQ2d 1446 (CA 2 1987), and Larry Harmon Pictures Corp. v. The Williams Restaurant Corp., 18 USPQ2d 1292, (CAFC 1991), combine to give some indication of how interstate commerce may be successfully shown.

In Lobo, federal jurisdiction based upon interstate commerce was found to be proper in a lawsuit between two single use restaurants located in the same state over an unregistered mark, based upon extensive advertisement in travel guides and magazines having interstate circulation. The court in Williams rejected the use of a stringent formula requiring location on an interstate highway, greater than 50% of meals served to interstate travelers, or regular advertisements in out-of-state media. Of course, any single location restaurant which can exceed this onerous test should be able to convince the Patent & Trademark Office of its effect on interstate commerce.

The arguments between the majority and dissenting opinions in Williams, and from the opinion in Lobo, yield a checklist of items which could be used to show an effect on interstate commerce. First, collect articles from out of state or national publications which mention the restaurant. Second, try to have the restaurant listed in a travel guide or travel magazine. If you can show that you advertise to the interstate traveler, you will have a better chance of showing interstate commerce. Airline magazines, the Automobile Association and similar travel guides are suggested.

Since service mark use is shown by advertising, the use of interstate targeted advertising as specimens when applying for the federal service mark will give direct support in the application that the restaurant is doing business in interstate commerce. Interstate advertising should be maximized, limited only by an advertising budget. Other suggestions include the acceptance of credit cards and having a telephone reservation policy, since telephone and credit card use are so much a part of interstate commerce.

Where possible, and especially where the restaurant owner is intending the start of a national chain, the restaurant should be located near an interstate highway. At the extreme, and where the restaurant's theme allows, the restaurant management should attempt to construct some method for showing that out of state customers make up a significant portion of the restaurants business. A visitation register may go well in some establishments, while others may want to keep a record of out of state checks to directly show of interstate commerce.

Record keeping should begin early since the cases indicate that records generated after the filing of the service mark application are more likely to be held insufficient and imply an attempt at artificially manufacturing favorable records. It is therefore preferable for the evidence showing interstate commerce to have a date before an application for a service mark is made.

CURTIS L. HARRINGTON, is of Counsel to the Newport Beach law firm of Hawes & Fischer (714)374-9549 and practices in the areas of Patent, Trademark, Copyright and Trade Secret law, and is an Adjunct Professor at the University of Phoenix in Southern California. He is admitted to practice before the state bars of California, Texas, and Arizona, and admitted to practice before the U.S. District Court, the U.S. Court of Appeals, Fifth and Ninth Circuits, the U.S. Supreme Court and registered to practice before the U.S. Patent and Trademark Office. His education includes a B.S. Chemistry (Auburn University, 1974); M.S. Chemical Engineering (Georgia Institute of Technology, 1977); M.S. Electrical Engineering (California State University - Long Beach, 1990); a Master of Business Administration (University of Oklahoma, 1985); and Juris Doctorate (University of Houston, 1983). He is a member of the Long Beach Bar Association Board of Governors, the Orange County Bar Association and the Japan America Society of Southern California.

New SS ASICs from IMEC

The IMEC PMCM Digital SS Transceiver Chip

IMEC has developed a range of flexible direct sequence spread spectrum ASICs, for use in satellite communications and terrestrial networks. The devices have been developed in collaboration with SAIT Systems, a Belgium telecom company, and the European Space Agency.

The family of spread spectrum chips currently available aims at niche markets where highly reliable wireless communications are required, such as industrial networks for monitoring and control.

The Programmable Mobile Communications Modem (PMCM) is a digital transceiver chip integrating baseband and IF functionality with very low implementation loss. Fully programmable spreader and correlator functions, band-limiting oversampling filters and IF up-and down-converters are on chip. The ASIC can process 10 Mchips/s and incorporates an interface for an external processor for the application-dependent functionality. The PMCM encapsulates a complexity equal to 95,000 gates.

The PMCM provides a low cost and highly-miniaturized solution for applications such as VSAT communications and terminals for Private Mobile Radio networks via satellite. Code lengths of up to 1024 are supported. The high processing gain also makes the PMCM a versatile key component for wireless LAN applications where robustness of the link is crucial, such as in industrial environments with high and unpredictable interference levels.

The Advanced Spread spectrum Transceiver ASIC (ASTRA) is a high speed, low power version of the PMCM, providing 15 Mchips/s, parallel demodulation of 4 channels and a 32-bit interface to a host processor.

The Direct Sequence Integrated Receiver with ARM (TM) Core (DIRAC) chip combines flexible and highly integrated IF receiver chain with an on-chip 32-bit ARM microprocessor core. Cost effective spread spectrum receivers, for satellite services for example, can be built using this device.

A spread spectrum development kit built around the PMCM allows users to explore programmable parameter ranges and to determine the parameter set tuned towards a particular application.

A rapid design turnaround cycle - in the order of weeks - towards customized components is possible due to the modular architecture of the devices and the advanced CATHEDRAL CAD environment developed at IMEC. Specification, synthesis and simulation at different abstraction levels are all provided in an integrated toolbox. A link with the Synopsys, Inc.'s (Mountain View, CA) design tools ensures compliance with industrial standards of ASIC design. The design path is open to any foundry.

A current development is the integration of digital, and analog modem components in an MCM (Multi-Chip Module) package, which enables further reductions in size and cost.

The next generation of ASICs will concentrate on high-speed operation for markets such as wireless LAN, wireless multimedia and wireless office products.

IMEC was founded in 1984 and today is the largest independent research and development center of its kind in Europe. IMEC employs over 500 people. Its 36,000 sq. ft. clean room is dedicated to advanced research and development into semiconductor processing technologies. Its nearly $60 million revenue is derived from agreements and contracts with government agencies, aerospace and semiconductor industry companies world-wide.

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