“A ‘Sirius’ Question of Sound Recording Rights,” by R. Clarida and R. Bernstein

I am pleased to post our February 23, 2015 New York Law Journal Copyright Law Column on the latest developments in the New York branch of three pending cases concerning the claims of Flo & Eddie that, as the copyright proprietors of the Turtles’ 1967 hit recording of “Happy Together,” they enjoy exclusive rights under state law in its public performance.  Although, pursuant to a 1972 amendment to the U.S. Copyright Act, sound recording copyrights came under exclusive federal protection, pre-1972 recordings remain governed by state law.

As discussed in the article, the question whether New York recognizes a public performance right in pre-1972 sound recordings may be certified by the U.S. Court of Appeals for the Second Circuit to the New York Court of Appeals.  Any such decision would have a huge impact on the recording industry and the various ways in which pre-1972 sound recordings are broadcast, both over the internet and by AM/FM stations.

Here is our article:  A Sirius Question of Sound Recording Rights__Clarida and Bernstein__NYLJ__Feb. 23, 2015

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Grammys, Love, Angst, Striving, Synergy, Creativity & Copyright

Greatly enjoyed last night’s Grammys  from a front-row seat in my favorite chair, feeling all the love and power of music to bring together different generations and cultural backgrounds with synergistic results.  The power of music is so great, and the fragility of its remunerative distribution system so precarious in these times, that I only wish the important message of securing fair and deserving compensation for the creative blessings bestowed upon us by composers, lyricists, artists, performers, producers, designers and the entire panoply of persons responsible for such a great night of music had been delivered early and often rather than at the end of the broadcast.

There must be a more direct connection between, and an omnipresent awareness of, the connection between our enjoyment of musical treasures and the promotion of their creation.  By ensuring that artists, musicians, songwriters and other creators enjoy the fruits of their glorious labors — most of which are spent in arduous hours of striving  before their works see the light of day and the love of their fans — we invest wisely in the cultural wealth that makes living worthwhile.  So let’s show more love for what we receive from these modern Michelangelos, and work together to ensure that their livelihoods and those of emerging artists are unblemished by piracy, casual theft, or inadequate attention to appropriate distribution controls.

Music is a gift, but it is not free.  The artists, composers and performers who work so hard to make the most of their gifts and who delight us with their creations are certainly no less entitled to receive the fruits of their labors than the butcher, baker or candlestick maker.  Given the intangible character of copyright; the elusive but sublime combinations of melody, harmony, rhythm and lyrics that characterize our greatest songs; and the resulting far greater obstacles to keeping adequate track of their distribution in comparison to the butcher’s inventory, we should be striving to ensure widespread societal recognition that, if we allow the songs to leave the barn before they enter the royalty stream, it will not only be the cows who have nothing to dance to.

Bob Bernstein
Stamford, Connecticut
Grammys Day Plus One, 2015

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Authors Guild v. Google Oral Argument Before Second Circuit on December 3, 2014

robertjbernsteinblog post on December 6, 2014

I have uploaded in the above file my report on the oral argument in AG v. Google before the Second Circuit (Honorable Jose A. Cabranes, the Honorable Pierre N. Leval,  and the Honorable Barrington D. Parker) on Wednesday, December 3, 2014.  This report is designed to provide a detailed exposition of the oral argument as it unfolded in real time, and hopefully will be of interest to those who follow copyright law but were unable to attend the oral argument.  As set forth at the outset of the report in its disclaimer section, the readers should be aware that I represented as co-counsel, with fellow co-counsel Peter Jaszi and lead counsel Daniel F. Goldstein, the intervenors (National Federation of the Blind, and three print-disabled students and scholars) in AG v. HathiTrust in both the Southern District and Second Circuit.  Notwithstanding such involvement, I have endeavored in this report to objectively set forth the statements, questions and comments as they occurred.  The readers may judge for themselves whether I have succeeded when the transcript/CD of the argument becomes available.

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Welcome to my Blog!

Thankfully, at this tail end of the Thanksgiving weekend, I have nothing of substance to say because my mind and body are finally at rest after this great and exhausting American tradition.  However, as this is my first original post (the initial one being merely a recently  published New York Law Journal Copyright Law Column), I will give you a hint of what’s to come to the extent it is foreseeable.

I am excited to have gained entrance to the blogosphere (through the good offices of experts Becca and Matt), and from time to time will be posting a variety of observations here after subjecting them to hopefully sufficient self-editing to avoid redundancy, regret or blogospheric pollution.

Here are some topics this blog may explore:

Legal Topics:

Copyright Law, including copyrightability, infringement, fair use, and remedies (including statutory damages, actual damages, apportionment of damages. and preliminary and permanent injunctions).

The importance of a balanced view of copyright:  specifically, the need to recognize that creators and users are often one and the same.

Trademark Law, including validity, likelihood of confusion, infringement and non-trademark (non-infringing) use, damages and injunctions.

The right of publicity in one’s name, image and persona.

The litigation 0f all of the above.

Alternative Dispute Resolution (ADR), with a focus on mediation.

Other Topics:

[List in Formation and Evolution]

As a newbie, I hesitate to foretell what may strike my fancy in a way in which I might have something useful to contribute, but I reserve the right to go beyond the law occasionally, and possibly even to insert some iambic pentameter or other metered verse (but only after clearance by my editor, the Honorable Janet Bernstein, whose authority is unquestioned).

Over and Out:

May this pre-holiday season give you reason to cheer.

All best wishes.

Bob Bernstein

Stamford, CT
November 30,2014

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New York Law Journal Copyright Law Column: “Fair Use of Abusive Film,” October 20, 2014

COPYRIGHT LAW [First Published in New York Law Journal, October 20, 2014, p.2]

By Robert J. Bernstein and Robert W. Clarida


Those of you who were sentient in the immediate aftermath of the Nixon resignation will know that an individual dubbed “Deep Throat” was so named by Woodward and Bernstein (no relation) after an infamous pornographic film released two years earlier. In 2005, Watergate’s “Deep Throat” was revealed to be then FBI Deputy Director W. Mark Felt. Twenty-five years earlier, the true story of the film Deep Throat and its star, Linda Lovelace (“LL”), was revealed in her autobiography, Ordeal, an exposé of spousal abuse and exploitation by producers of pornography. LL continued her campaign against pornography until her death in 2002, and thereafter her message was given wider voice in a 2013 film produced by The Weinstein Company (“Weinstein”) entitled Lovelace. The copyright owners of Deep Throat, Arrow Productions (“Arrow”), sought to halt distribution of Lovelace, claiming copyright infringement based on the alleged re-creation of three scenes from Deep Throat. In a careful and detailed opinion[1] issued on August 25, 2014, the Honorable Thomas P. Griesa of the Southern District of New York upheld the defense of fair use and granted Weinstein’s motion for judgment on the pleadings.

The Two Films

The Court pulled no punches in describing the relevant portions of the plaintiff’s film, some of which may be familiar to older readers in light of the fanfare, controversy and wide distribution of the film notwithstanding counterproductive attempts to censor it. Those who seek a more detailed explication of the facts will find it in the opinion, or in the works themselves; here, we will be more general in our depiction.

Deep Throat is a farcical pornographic film with sophomoric humor and some original plot elements and dialogue serving to set up long and repetitive sequences of oral sex. Judge Griesa – eschewing value judgments, as precedent instructs – found that Deep Throat is a “creative and expressive” work within the core of copyright protection, including the three scenes Arrow claimed were unlawfully re-created in Lovelace. These scenes were (i) the opening scene from Deep Throat in which LL is driving along the water and through Miami streets until she arrives at her house while the film’s credits are displayed (the “Driving Scene”); (ii) a scene in which LL comes upon her housemate who is apparently enjoying a moment with a grocery delivery boy, following which LL voices great dissatisfaction with her erotic experience (the “Kitchen Scene”); and (iii) the most well-known scene – echoing the film’s title — in which a “doctor” examines LL and discovers her problem and a solution (the “Eponymous Scene”). Notwithstanding the original elements in these scenes (with the Driving Scene being the least original of the three), the court observed that “[t]he heart, or core, of Deep Throat is that it is a pornographic film that in particular, focuses on one type of pornographic act.”[2]

In contrast, the court described Lovelace as having “an entirely different purpose – it is a critical, biographical film.” Lovelace, like the LL autobiography on which it is based, is a polemical revelation of the seduction, exploitation, abuse and degradation which LL experienced in the pornography industry, and presents these realities as part of LL’s campaign to warn other women against participation and to demonstrate the importance of unhesitating termination of abusive relationships.   To the extent that Lovelace re-created the three scenes from Deep Throat, including some dialogue, the court determined that each use furthered the film’s contrasting purpose and was appropriately limited to the extent necessary to do so. The court also noted that the total time elapsed during the re-created scenes represented just 4 minutes out of Deep Throat’s 61 minutes. Judge Griesa further found that in Lovelace the re-created scenes were shot from a “behind-the-scenes” perspective to reflect how LL experienced the filming of the original scenes. Thus, in contrast to her depiction as an enthusiastic participant in Deep Throat, the re-creations in Lovelace presented LL as a nervous, naïve and hesitant first-time “actress” who was pushed into the part by her abusive and controlling husband.

The Fair Use Factors

            Section 107 of the U.S. Copyright Act, 17 U.S.C. § 107, provides that four non-exclusive factors shall be considered in determining fair use:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

As instructed by the Supreme Court in Campbell v. Acuff Rose (“Campbell”), the four statutory factors must not be treated in isolation; rather, “[a]ll are to be explored, and the results weighed together, in light of the purposes of copyright.” [3]

Campbell characterized the “central purpose” of first factor analysis as follows: to see “whether the new work merely ‘supersede[s] the objects’ of the original creation, . . . or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.’”[4] Campbell also invested “transformative use” with heightened influence within the inquiries into third factor (whether the amount copied was reasonable in relation to the purpose and character of the use), the fourth factor (the more transformative the use, the less likely it is to substitute for the original), and in the overall inquiry:

Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright, . . . [T]he more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”[5]
The Fair Use Analysis in Lovelace

Relying on Campbell, its application by the Southern District and Second Circuit in Bill Graham Archives, LLC v. Dorling Kindersley Ltd. (“BGA”)[6] and by the Second Circuit in Cariou v. Prince (“Cariou”),[7] Judge Griesa determined that the first (purpose of use), third (amount used) and fourth (market harm) factors favored fair use. He found that the second factor (nature of the work copied) weighed against fair use but noted that this factor was not given significant weight in the overall analysis. He noted that no one factor is determinative, and that “the fair use determination is an open-ended and context sensitive inquiry” in which “[t]he ultimate test … is whether the copyright law’s goal of promoting the Progress of Science and useful Arts would be better served by allowing the use than by preventing it.”[8]

The court first disposed of Arrow’s argument that fair use is not appropriate for resolution on a motion for judgment on the pleadings. Judge Griesa observed that, notwithstanding the generally “fact-driven” nature of fair use analysis, there is no Second Circuit authority preventing a determination of fair use on a motion for judgment on the pleadings. Although an atypical context for this determination, he considered it appropriate here because the operative facts were undisputed and contained in the films themselves. Thus, “there is a complete factual record before the court and discovery would not provide any additional relevant information in this inquiry.”[9]

The court described the first factor (“the purpose and character of the use”) as “the heart of the fair use inquiry.” Moreover, Judge Griesa noted that in the Second Circuit “[t]here is a strong presumption … [that the first] factor favors defendant if the allegedly infringing work fits within the Section 107 preamble uses: criticism, comment, or research.”[10] In addition, “‘[b]iographies in general, and critical biographies in particular, fit comfortably within these statutory categories of uses that can be fair.”[11] As a result, the court had “no doubt that Lovelace, which is a critical biographical work, is entitled to a presumption of fair use.”[12]

The court then examined what it viewed as “[t]he more important question under the first factor

and in the fair use analysis generally” – whether the use is “transformative.”[13] On this question, the court determined that all of the re-created scenes from Deep Throat were used in a transformative manner

because they appeared in new contexts and with changed components in service of a new purpose, i.e.,

to place the original pornographic fantasies under the light of the harsh realities of exploitation and abuse permeating the pornography industry. Nor did Lovelace’s use of a few memorable lines of dialogue

from Deep Throat change the court’s analysis. In support of this point, Judge Griesa cited the BGA

district court finding that “it is both reasonable and customary for biographers to refer to and utilize

earlier works dealing with the subject of the work and occasionally to quote directly from such works”[14]

The court considered Lovelace’s substitution of LL’s behind-the-scenes perspective on the

re-created scenes for the original’s pornographic focus, and its use of the scenes to establish a

reference point for critical commentary, to be significant elements establishing transformative use.

The first factor was therefore weighed in favor of fair use.

Because the second factor – the nature of the copyrighted work – is rarely significant in the

overall determination of fair use, the court’s evaluation of Deep Throat as a “creative and expressive”

work “within the core of copyright protection” (perhaps due to its fanciful, farcical and far-fetched

plot lines) may be viewed by others as not wholly deserved. In any event, it should have scant precedential value given the ad hoc and subjective nature of an inquiry into creative merit. One is reminded of

Justice Potter Stewart’s observation,[15] when grappling with First Amendment issues, that “hard core pornography” is difficult to define, but “I know it when I see it.” “Redeeming social value” — like

artistic merit — is quintissentially in the eyes of the beholder.

On the third factor – amount and substantiality of the portion used – the court noted that the

re-creations constitute only four minutes of Deep Throat, a very small percentage, quantitatively,

of plaintiff’s sixty-one minute movie. Arrow argued, however, that, qualitatively, the scene in which

LL first visited the “doctor” was qualitatively a key scene in Deep Throat and another re-created scene

was also qualitatively significant. The court held, however, that because the re-created scenes were

necessary to effectuate Lovelace’s transformative purpose, the third factor weighed in favor of fair use.

Judge Griesa also found that because Lovelace, at its core, is a critical biography, and Deep

Throat, at its core, is pornography, “it is impossible that defendants could have copied the core of

Deep Throat.”[16] This last observation is dicta, as the court had already found that the third factor

favored Lovelace because it copied only what was necessary to its transformative purpose. Considering

what might be “possible” under a different set of facts would require an advisory opinion on

hypothetical circumstances.

On the fourth factor – potential market harm – the court looked to both current and likely-to-be-developed markets, including markets for derivative works based on Deep Throat. Arrow identified one potential third-party license for a biographical film based on Deep Throat and its star which Arrow

claimed was lost due to Lovelace. The court, however, determined that because the use in Lovelace was a

transformative fair use which Arrow had no right to monopolize, the claimed harm was not cognizable

under factor four. Moreover, as to market harm generally, the court determined that the entirely different purposes of Deep Throat and Lovelace made it unlikely that potential fans of the former would be lost to viewers of the latter. Factor four was therefore weighed in favor of fair use.

In his aggregate assessment, Judge Griesa succinctly concluded that, in light of his factorial

analysis, “defendants’ recreation of the three scenes from Deep Throat constitutes fair use” and does

not infringe upon plaintiff’s copyright. The court also dismissed Arrow’s trademark infringement and

dilution claims for reasons that are beyond the scope of this article.

In a final section, the court denied Weinstein’s motion for an award of attorney’s fees under

17 U.S.C. § 505 on the ground that, even though defendants prevailed on their fair use defense “as a

matter of law,” plaintiff’s copyright claims were not “so unreasonable as to warrant” attorney’s

fees. Although reasonable minds could differ on this point, the court has wide discretion to award or deny attorney’s fees in copyright cases.


Judge Griesa’s factorial and overall determination placed Lovelace squarely within the boundaries

of fair use for criticism, commentary and biography. On September 23rd Arrow filed a notice of appeal

seeking a reversal of the fair use determination, and on October 3rd defendants filed a notice of cross-

appeal seeking a reversal of the district court’s denial of their motion for attorney’s fees. Having

carefully analyzed the facts under the legal standards set forth by the Supreme Court in Campbell and

by the Second Circuit, inter alia, in BGA and Cariou, there does not appear to be a likelihood of reversal

on the merits.

Copyright © 2014 Robert J. Bernstein and Robert W. Clarida

Robert J. Bernstein practices law in New York City in The Law Office of Robert J. Bernstein. He is a frequent author and lecturer on copyright law and litigation, an Honorary Trustee and past President of the Copyright Society of the U.S.A., a member of the Copyright and Literary Property Committee of the New York City Bar Association, and formerly served as Chairman of the Copyright Law Committee of the American Intellectual Property Law Association and as a member of its Board of Directors

Robert W. Clarida is a partner in the New York law firm of Reitler, Kailas & Rosenblatt, LLC and speaks and writes frequently on copyright law. He is the author of the recent Copyright Law Deskbook (BNA), co-author, with Thomas Kjellberg, of “Recent Developments in Copyright,” a review of copyright decisions delivered each year at the annual meeting of the Copyright Society of the U.S.A., and is a past Trustee of the Copyright Society and former chair of the Copyright and Literary Property Committee of the Association of the Bar of the City of New York.

[1] Arrow Productions, LTD. v. The Weinstein Company LLC, No. 13-5488, ___ F.Supp.2d___, 2014 WL 4211350 (S.D.N.Y. August 25, 2014) (“Arrow”).

[2] Id., 2014 WL 4211350 at *10.

[3] Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 578 (1994). (“Campbell”) (quoting U.S. Const., art.   I, § 8, cl. 8).

[4] Id., at 579 (citing Leval, at 1111). Notwithstanding Campbell’s emphasis on transformative use, a recent, and aberrational, Seventh Circuit decision mischaracterized Campbell as merely “mentioning” transformative use, and declined to apply that concept in its fair use analysis. Kienitz v. Sconnie Nation LLC, No. 13-3004, ___ F.3d ___, 2014 WL 4494835 (7th Cir. September 15, 2014).

[5] Id.

[6] 386 F.Supp.2d 324 (S.D.N.Y. 2005), aff’d 448 F.3d 605 (2d Cir. 2006).

[7] 714 F.3d 694 (2d Cir. 2013).

[8] Arrow, supra, 2014 WL 4211350 at *5 (citing Cariou, supra, 714 F.3d at 705) (internal quotation marks omitted).

[9] Id. at *6.

[10] Id. (citation and internal quotation marks omitted).

[11] Id. (citation and internal quotation marks omitted).

[12] Id.

[13] Id.

[14] Id. at *7, n.2 (citing BGA, supra, 386 F.Supp.2d at 328) (internal quotation marks omitted).

[15] Jacobellis v. Ohio, 378 U.S. 197 (1964) (Potter, J., concurring).

[16] Arrow, supra, 2014 WL 4211350 at *10.

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