Category Archives: Foreign

Australian court finds plaintiff is owner of “Kookaburra”; case to proceed to issue of infringement

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Shourin Sen - 1 August 2009 – 1:00 am
Filed under Australia, Foreign, Music, Ownership

Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2009] FCA 799

It feels good to be blogging again, and I have a charming little decision to come back to.  On Friday, the Honourable Justice Jacobson of the Federal Court of Australia, New South Whales District, issued a decision in Larrikin Music Publishing’s infringement suit against EMI and the author’s of the ’80s hit “Down Under.” This suit has garnered a fair bit of publicity on the intertubes.  To briefly review, Larrikin, an Australian music publisher, alleged that “Down Under” infringed it’s copyright in the round “Kookaburra Sits in the Old Gum Tree.”

    Men at Work’s performance of “Down Under”

Justice Jacobson had requested briefing on the preliminary issue of whether Larrikin was the copyright owner of the musical composition. “Kookaburra” was penned in 1932 as an entry in a competition/fundraiser conducted by the Girl Guides Association of Victoria.  (The song won.)  One of the rules that accompanied the advertisement for entry stated that “[a]ll matter entered to become the property of the Guide Association.” Neither party could locate the entry materials. EMI argued that an assignment could be presumed from the circumstances, that the author of “Kookaburra” was aware of the printed contest rules and accepted the terms through her entry, and that by including her name in the entry — ah, the age of hand-written correspondence –  she wasn’t merely providing contact information, but executing a valid assignment.

    A Performance of “Kookaburra sits in the Old Gum Tree” by KaiLi kids

In the question at bar, the Court addressed whether, under the Australian Copyright Act of 1912, which was in effect in 1932, the clause in the rules of entry assigned the copyright in “Kookaburra” to the Victorian Girl Guides. Section 5(2) of the1912 Australian Copyright Act (which is derived from the 1911 British Copyright Act) provides that no “assignment or grant shall be valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorized agent.”

Justice Jacobson found that, at least for purposes of the suit, Larrikin was the copyright owner of “Kookaburra.” The Court found that it was equally probable that the composer learned of the competition by word of mouth and was not aware of the rules; that the communications between the Girl Guides and the author of “Kookaburra” show that there was no assignment; that the inclusion of the author’s name in the entry was likely for identification purposes and not an assignation; and that the operative language, “all matter entered [in the competition] to become the property” of the Victorian Girl Guides, was “more apt” to have referred to the physical property than the copyright in the work.

Assignments and burden:

The Court appeared to toy with the idea that there should be a burden on the defendants to prove that the author of “Kookaburra” executed an assignment.  See, for example:

The test is that there must be shown to be more than “conflicting inferences of equal degrees of probability so that the choice between them is a mere matter of conjecture.” (117, citing Nominal Defendant v Owens (1978) 22 ALR 128 at 132.)

* * * * *

It is apparent that the admissibility of the evidence must be distinguished from its sufficiency to establish or support an affirmative conclusion in favour of the party who tenders it, when the burden of proof lies upon that party. (163, citing Lustre Hosiery Limited v York [1935] HCA 71; (1935) 54 CLR 134, 138–139 (Rich, Dixon, Evatt and McTiernan JJ) (emphasis added.)

If it was indeed the intent of the Court to assume a burden on behalf of the defendant, there are policy rationales for such a conclusion. William Patry argues that “the purpose of the writing requirement is not to effectuate the parties’ intent but principally to protect authors from those claiming, contrary to the author’s view of the facts, that he or she transferred rights in the work.  The purpose of the  writing requirement is thus to effectuate a congressional policy of protecting authors, even from themselves if need be.” Patry on Copyright at 5-218, citing Imperial Residential Design, Inc. v. Palms Development Group, Inc., 70 F.3d 96 (11th Cir. 1995) (“[T]he chief purpose of section 204(a), (like the Statute of Frauds), is to resolve disputes between copyright owners and transferees and to protect copyright holders from persons mistakenly or fraudulently claiming oral licenses or copyright ownership.”) (emphasis added); Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (“Section 204 ensures that the creator of a work will not give away his copyright inadvertently and forces a party who wants to use the copyrighted work to negotiate with the creator to determine precisely what rights are being transferred and at what price.”)

H.R. 505: An amendment to 17 U.S.C. 119 just for Sooners

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Shourin Sen - 30 January 2009 – 1:29 am
Filed under Foreign, Legislation

Dan Boren (OK-2) has introduced the first bill of the 111th Congress that would amend the Copyright Act.  H.R. 505 would allow Oklahoma residents, who can only get secondary transmissions from out of state broadcasters, to receive instate broadcasts via satellite under the 17 U.S.C. 119 statutory license.  Full amendment below.

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111th CONGRESS, 1st Session:  H. R. 505

A BILL to amend section 119 of title 17, United States Code, to allow the secondary transmission to any subscriber in the State of Oklahoma of primary transmissions of local network stations in that State.

SECTION 1. SECONDARY TRANSMISSIONS TO SUBSCRIBERS IN OKLAHOMA.
    • (1) in clause (v), by striking ‘and (iv)’ and inserting ‘(iv), and (v)’;

      (2) by redesignating clause (v) as clause (vi); and

      (3) by inserting after clause (iv) the following new clause:

      ‘(v) SUBSCRIBERS IN THE STATE OF OKLAHOMA-

      ‘(I) ELIGIBILITY TO RECEIVE TRANSMISSIONS OF LOCAL STATIONS IN OKLAHOMA- With respect to any subscriber described in subclause (II), the statutory license provided for in subparagraph (A) shall apply to the secondary transmission by a satellite carrier to that subscriber of primary transmissions of network stations located in the State of Oklahoma.

      ‘(II) ELIGIBLE SUBSCRIBERS- Subclause (I) applies to any subscriber who–

    • Section 119(a)(2)(C) of title 17, United States Code, is amended–

‘(aa) resides in the State of Oklahoma but does not receive the secondary transmissions of any network station located in that State because of the assignment of the subscriber to a local market receiving secondary transmissions of network stations located in another State; and

‘(bb) elects to receive the secondary transmissions of network stations located in the State of Oklahoma instead of the secondary transmissions of network stations located in that other State.’.

Odds and ends

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Shourin Sen - 29 January 2009 – 1:30 am
Filed under Fair Use, Foreign, IP Czar, News

IP-Czar and President Obama’s Excecutive Order on transparency/lobbyist ties

The always insightful Ben Sheffner wrote a response to my post on the IP-Czar and President Obama’s Executive Order on lobbying.  If I were to reply to Mr. Sheffner, I’d make the exact same point Ben made when I first questioned whether President Obama’s campaign promises would affect his decision: On issues like these, we the voters are both judge and jury.

It’s pretty obvious that Obama’s Executive Order, as well as many of his and other candidates’ campaign promises are designed to be open-ended.   They’re meant to sound expansive but tie the candidate down to very little, lest they be unable to deliver.

I don’t disagree with Ben’s comments that the Order is drafted in such a fashion that you can poke holes in the text.  But to draw a line between a “general” issue and a “specific” issue would render the executive order just about completely meaningless.   And since we the public get to be both judge and jury on these types of issues, I hereby decree, with the power invested in me by neighbor’s cat, that if President Obama tries to pick apart minutia and make that argument, I’m going to disagree.  To state otherwise would be a little too reminiscent of  Bill Clinton and the definition of “is.”

Microsoft Corp. v. Big Boy Distribution LLC:

About a month ago, I wrote about a case in the S.D. Fla, Microsoft Corp. v. Big Boy Distribution LLC, et al.  Counsel for Big Boy had filed a motion to reconsider summary judgment on the grounds that the tribunal should have applied Jordanian law while evaluating the license at issue.   On January 13, the Court dismissed the motion to reconsider sans accompanying memorandum.

And finally from the 1981 time machine:

Imagine if you will, sitting down for your morning coffee, and turning on your home computer to read the day’s newspaper.  Well, it’s not as far fetched as it may seem.

Krishnamurthy: The Statutory Mechanical License in India: Whose Version [of the Law] is Correct?

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Shourin Sen - 29 November 2008 – 10:38 pm
Filed under Academia, Foreign, India, Mechanical royalties, Music

Nikhil Krishnamurthy, everyone’s favorite Indian practitioner/flamethrower, recently posted an article on the compulsory license in musical compositions. I wrote about one of Mr. Krishnamurthy’s other papers last week.

Apparently, Indian courts have split on whether an artist can cover a song under the Copyright Act’s compulsory license provision without first obtaining permission from the original author (provided that an authorized version of the song has been released for two-years). The relevant part of Section 52(1)(j) of the Indian Copyright Act states as follows:

The following acts shall not constitute an infringement of copyright, namely: (j) the making of sound recordings in respect of any. . . musical work, if . . .(ii) the person making the sound recordings has given notice of his intention to make the sound recordings, has provided copies of all covers or labels with which the sound recordings are to be sold, and has paid in the prescribed manner to the owner of rights in the work royalties in respect of all such sound recordings to be made by him, at the rate fixed by the Copyright Board in this behalf[;] Provided that. . . (iii) no such sound recording shall be made until the expiration of two calendar years after the end of the year in which the first sound recording of the work was made. . .

    Mr. Krishnamurthy contends that permission of the original author isn’t required for a subsequent musician to record a cover, provided that an authorized version of the original was released two-years earlier. First, Mr. Krishnamurthy’s argues that Section 52(1)(j) would be redundant if permission were always required. Secondly, Mr. Krishnamurthy makes the historical argument that Indian copyright law has featured a compulsory license provision since the Copyright Act of 1957 incorporated the scheme of the English Gregory Report (report of the Copyright Committee of 1952).  Mr. Krishnamurthy’s states that, absent any evidence to the contrary, there should be a presumption that Parliament didn’t intend “drastic” changes to a policy the Indian Copyright Act has contained since its foundation.

    ___________________________

    I find the idea that it would be financially advantageous for the Indian recording industry to limit  covers interesting, even if it’s only for a period of two years. There is no comparable holding-period under American copyright law. This seems like the type of limitation that the American recording industry could have pushed Congress to enact years ago if there was any impetus. This brings us to my favorite topic: how it may be beneficial for individual countries to have differing copyright structures, and inversely, how differing copyright structures may foster varying performance practices.

    I can think of a number of reasons for why the Indian recording industry might want a two-year exclusivity period, when it wouldn’t be called for in the U.S.:

    • First, as suggested by Mr. Krishnamurthy in his article, the Indian music industry is centered around Bollywood musicals.  Given that film is central to marketing, it’s not unreasonable to think that songs in India are more important to a recording’s success than they are in the U.S.  I.e. in India, songs are the stars; in the U.S., performers have a comparatively larger effect than songs on album sales.
    • The absence of a performance right in sound recordings under U.S. copyright law provides a disincentive for American musicians to make cover recordings.  Unless an American musician records songs that they write, they are closed out of radio related royalties.  Indian copyright law grants performance rights to both composers and performers so that, even if an Indian performer records a song they didn’t write, they still receive some royalties for radio play.
    • Perhaps there are segments of the Indian market that give less credence to branding and are more accepting of sound-alike albums than many segments of the American market.
    • It may be more costly to track sales of cover recordings for royalty collection in India than it is in the United States.  It may make more sense for Indian labels to limit all covers rather than spending money trying to track cover sales.

    These are just my best guesses.  If any of this blog’s Indian readers would like to evaluate or add to the potential rationales, I would love to hear any comments.

    Nikhil Krishnamurthy, The Statutory Mechanical License in India: Whose Version [Of the Law] is Correct?, Manupatra Intellectual Property Reports, MIPR, Vol. 1, p. A-115 (March 01, 2007).

    Krishnamurthy: Sound Advice [Or What You Always Wanted to Know About Phonographic Performance But Were Afraid to Ask]

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    Shourin Sen - 21 November 2008 – 3:24 pm
    Filed under Academia, Foreign, Legislation, Music

    SSRN has a plethora of new academic papers that look yummy.  l will try to get to a couple of them over the next few weeks.  In particular a white paper by Nikhil Krishnamurthy on performance rights piqued my interest.  Mr. Krishnamurthy is a Senior Partner at the Bangalore firm of Krishnamurthy & Co.

    Performance rights is an issue that is personally close to my heart.  Mr. Krishnamurhy’s paper reads like a legal article with an investigatory journalism slant.  His main points:

    • American recordings are not granted performance rights under Indian copyright law because the United States doesn’t grant these rights domestically.  Section 40 Clause 42 of the Indian Copyright Bill of 1955 states that India grants rights to works published outside of the country on a “reciprocal” basis.
    • Nonetheless, the Phonographic Performance Ltd. (PPL), an Indian licensor for public performance rights, is still collecting royalties from radio stations, hotels and bars.  Says Mr. Krishnamurthy: “This state of affairs is certainly due to the ignorance of the law on the part of the  music user and must be remedied at the earliest.”
    • Mr. Krishnamurthy then argues that the high licensing rates being applied by the PPL are “in gross abuse of its monopoly position” and “have no relation to worldwide practices of corresponding societies.”  Furthermore, PPL is collecting licensing fees for music videos even though the organization is statutorily prohibited from “carrying on business in other works” such as working with videograms (music videos).
    • The paper takes a fun shot at the Clinton Administration for, in the author’s view, not adequately protecting the rights of Indian record labels under American copyright law, while simultaneously putting India on a watch list for not providing effective copyright enforcement for American works.
    • Lastly, the author suggests that Indian businesses should adopt a policy of exclusively performing American works as a bargaining chip to deprive the PPL of royalties and force more equitable licensing terms for Indian works.

    Links:

    Nikhil Krishnamurthy, Sound Advice [Or What You Always Wanted to Know About Phonographic Performance But Were Afraid to Ask] (June 1, 2007). Manupatra Intellectual Property Reports (MIPR), Vol. 2, p. A12, 2007.