Monthly Archives: June, 2012

L.A. Printex v. Aeropostale III – Copyright Registration Errors

This third post discussing the L.A. Printex case concerns the effect of errors in copyright applications. The defendants sought summary judgment on the ground that L.A. Printex’s registration should be held invalid because its designs were registered as an unpublished collection, but included two designs that previously had been published.

The rule, however, is “inadvertent mistakes on registration certificates do not invalidate a copyright and thus do not bar infringement actions, unless the alleged infringer has relied to its detriment on the mistake, or the claimant intended to defraud the Copyright Office by making the misstatement.” The court held that the error did not invalidate the registration or render the certificate of registration incapable of supporting a copyright infringement claim. There was no evidence that L.A. Printex knew that the two designs had been published at the time it submitted its application for copyright registration, or that it intended to defraud the Copyright Office. Upon learning of its registration error, L.A. Printex corrected it. It filed an application for supplementary registration, communicated with the Copyright Office about the error through email and phone correspondence, and filed a second application for supplementary registration. Moreover, the Copyright Office’s decision to issue a supplementary registration after it was told of the two designs’ prior publication shows that the error was not one that “if known, would have caused the Register of Copyrights to refuse registration.

Monthly Archives: June, 2012

L.A. Printex v. Aeropostale – Part II Substantial Similarity

The Ninth Circuit’s opinion in the L.A. Printex case offers two useful insights with respect to the manner in which courts in that circuit are to evaluate substantial similarity. 

The first is a re-affirmation that a court should not evaluate the intrinsic test, involving a subjective comparison of the two works, on summary judgment.  The subjective comparison should be reserved for trial.  Court’s should only conduct the intrinsic test, the objective listing and comparison of similarities on summary judgment.

The second is the court’s actual application of the intrinsic test.  Here is an excerpt:

C30020 is a repeating pattern of bouquets of flowers and three-leaf branches. The idea of a floral pattern depicting bouquets and branches is not protectible, and C30020 has elements that are not protectible, for example the combination of open flowers and closed buds in a single bouquet or the green color of stems and leaves. However, L.A. Printex’s original selection, coordination, and arrangement of such elements is protectible. Because there is “a wide range of expression” for selecting, coordinating, and arranging floral elements in stylized fabric designs, “copyright protection is ‘broad’ and a work will infringe if it’s ‘substantially similar’ to the copyrighted work.” That is, “there are gazillions of ways” to combine petals, buds, stems, leaves, and colors in floral designs on fabric, in contrast to the limited number of ways to, for example, “paint a red bouncy ball on black canvas” or make a lifelike glass-in-glass jellyfish sculpture. Our comparison of Defendants’ allegedly infringing design and C30020 reveals objective similarities in protectable elements. Both patterns feature two types of small bouquets of flowers, one featuring the largest flower in profile view, the other featuring the largest flower in an open-face view, and both emerging from three buds. Both patterns also depict small, three-leaf branches interspersed between the two types of bouquets. The shape and number of the flower petals and leaves are similar in the two designs. The two types of bouquets are arranged at similar angles in both designs, and the bouquets and branches are coordinated in similar spatial combinations on a grid of similar scale and layout.  Moreover, the color arrangement of C30020 in white/berry is markedly similar to the color arrangement of Defendants’ design…The differences noted by the district court do not compel the conclusion that no reasonable juror could find that Defendants’ design is substantially similar to C30020. Rather, in light of the similarities described above, the differences support the opposite conclusion, that there is a genuine dispute of material fact on substantial similarity. It is true that the flowers, stems, and leaves in Defendants’ design are less detailed than those in C30020, and that Defendants’ design does not use multiple shades of color to give the flowers and leaves definition as does C30020. But a rational jury could find that these differences result from the fabric printing process generally and are “inconsequential,” or could credit Jae Nah’s assertion that these differences result in part from “print[ing] using cruder, lower quality techniques and machinery. Moreover, because we conclude that stylized fabric designs like C30020 are properly entitled to “broad” copyright protection, it is not necessary that Defendants’ design be “virtually identical” to infringe. A rational jury could find that despite some differences between Defendants’ design and C30020, the similarities in the selection, coordination, and arrangement of bouquets and three-leaf branches are sufficiently substantial to support an inference of copying. Accordingly, we hold that objective similarities in the expressive elements of Defendants’ design and C30020 present a genuine dispute of material fact under the extrinsic test.

If you don’t understand the intrinsic/extrinsic distinction, call me up or send an email.  I can probably confuse you even more.  Look for further discussion of this case, hopefully with pictures of the works in question, in the 2013 update of Substantial Similarity in Copyright Law.


Monthly Archives: June, 2012

L. A. Printex v. Aeropostale, Part I-Access

Widespread dissemination of a work sufficient to show a reasonable possibility of access can be confined to particular region and/or industry. That is one of the rulings in the Ninth’s Circuit’s recent decision in L. A. Printex v. Aeropostale.  This is the first of three posts about the case, each addressing a single aspect of the court’s opinion.

Most readers of this blog will know that in order to prove copyright infringement, a copyright owner must prove that the defendant copied the copyrighted work.  In most cases there is no confession, eyewitness or other direct evidence of copying, so plaintiffs typically prove copying by proving that the defendant had access to the plaintiff’s work, and that similarities between the plaintiff’s work and defendant’s suggest copying.

In the Aeropostale case, L. A. Printex claimed that Aeropostale and co-defendant Ms. Bubbles infringed L.A. Printiex’s copyright in a floral fabric design.  L.A. Printex asserted that defendants had access to the copyrighted print because it was widely disseminated in the Los Angeles fashion industry.  The Ninth Circuit agreed, writing:

L.A. Printex and Ms. Bubbles (Aeropostale’s wholesaler and co-defendant) operate in the same industry in the same Los Angeles area. L.A. Printex, a fabric printing company, sold more than 50,000 yards of fabric bearing C30020 to fabric converters. It is a reasonable inference that many or most of these purchasers were in the Los Angeles area. Apparel vendors like Ms. Bubbles purchase fabric from fabric printing companies and fabric converters. In addition, the dissemination of C30020 occurred over a four-year period immediately preceding Defendants’ alleged infringement. A reasonable jury could find that C30020 was widely disseminated in the Los Angeles-area fabric industry, and hence that there was a “reasonable possibility” that Defendants had an opportunity to view and copy L.A. Printex’s design…We hold that L.A. Printex raised a genuine dispute of material fact on access.


Monthly Archives: June, 2012

A Primer on Copyright Termination for Recording Artists

As the name suggests, copyright termination rights give authors the ability to terminate copyright assignments and licenses.  The effect of termination is to put both the author and assignee/licensee back where they were originally.  After termination, the author has all the rights he had originally.  The assignee/licensee has no rights, except with respect to derivative works, a topic for another time.

Different termination rights apply depending on when the copyright was assigned or licensed.  The important date for termination purposes is the date of the grant (assignment or license), not the date the work was created.  For sound recordings (masters), there are basically three categories.

On or After January 1, 1978.  Recording artists (or their heirs) can terminate grants executed after January 1, 1978, effective between 35 and 40 years after the date of the grant (with some variables depending on publication issues).

February 15, 1972 through December 31, 1977.  Recording artists (or their heirs), can terminate grants executed between February 15, 1972 and December 31, 1977, effective between 56 and 61 years after the date of the grant.

Pre-February 15, 1972.  Because pre-1972 sound recordings are not subject to U.S. copyright law, there are no termination rights with respect to them.

The first category, post-January 1, 1978 grants, is the one that has been getting attention recently because the termination period for 1978 works is imminent.  1978 grants can be terminated effective next year, 2013.

The mechanics of termination are very important.  In order to be effective, termination notices must be sent within a specific time period, between 2 and 10 years before the date of intended termination.  As an example, anyone wanting to terminate a January 1, 1978 grant as of January 1, 2013, should have given notice between January 1, 2003 and January 1, 2011.  If one were to give notice today, the earliest termination could be effective is May 17, 2014.  Any notice given after January 1, 2016 would be ineffective.  Notices must include specific information, must be delivered in specific ways, and must be recorded in the Copyright Office prior to the effective date of termination. 

Termination rights do not apply to works made for hire.  Record companies have taken the position that sound recordings are works for hire, and therefore not subject to termination.  They also assert that regardless of who owns the copyright in the recording, they own the actual master.  Therefore, they reason, even if an artist can recover the copyright in the recording, he cannot recover the recording itself.  So, if an artist terminates we will have a stalemate where the record company cannot exploit the master because of the copyright law, and the artist cannot exploit it because he cannot get access to the recording.  The courts have not ruled definitively on either of these issues.

A third issue that may be raised is whether a sound recording is a collective work, or a joint work.  If a sound recording were a collective work, each band member might own their own part, and the record company may claim that it owns the copyright in the whole.  Even if the recording is not characterized as a collective work, it may be a joint work: the product of all of the musicians, and perhaps even the producer, who performed on the recording.  In the case of a joint work, a majority of the authors who executed the grant must terminate for the termination to be effective.  This is one of the issues in the recent Village People case.  Apparently, various members of the Village People executed  separate grants to the music publisher.  The court ruled that one author could terminate his grant because he was the only one who executed it, but presumably the grants from the other group members are left standing.  One then must determine how the patchwork of grants affects the rights.

Here are links to a New York Times article describing the termination controversy with respect to sound recordings, a Rolling Stone interview with Don Henley about the subject, and an AFTRA notice regarding termination

Here are links to the termination statute and a Copyright Office circular describing termination rights

Work to Do

Recording artists should consider whether their ultimate goal is to obtain possession of the masters, or to negotiate a new agreement, which could include an advance.  At a minimum, termination creates an opportunity for recording artists to negotiate new agreements with their record companies. Therefore, no matter what the artist’s intentions, he may want to consider sending notices of termination at the appropriate times, or at least tell his record company that he is considering sending such notices as a starting point for negotiations.  Attorneys can help with calculating deadlines and preparing the notices.  Artists may also want their attorney to review the artist’s recording contracts, learn the facts concerning the contributions of other musicians who performed on the recordings and review their agreements if possible, and otherwise evaluate the factual and legal issues pertaining to their individual case. 

Once termination notices have been served, one should expect there to be negotiation with the artist's current record company, and perhaps other record companies, band members and producers.  Some artists may prefer to engage an attorney who specializes in negotiating record deals for artists to do that work, but one should be aware that record deal experience does not translate precisely to negotiation concerning termination rights. Negotiating points are different because the masters already have been recorded, and many issues relating to things such as recording costs, promotion, etc., are significantly different from the issues in the typical recording contract.  Depending on the results of negotiations, or if either side is unwilling to negotiate, there could be litigation concerning whether the artist is entitled to recover the masters.