The orphan works problem is a by-product of a series of changes in the copyright laws that eliminated previous requirements that copyright owners publish, register, renew, and attach copyright notices to their works in order to receive copyright protection.  One of the most common misconceptions I frequently hear from clients is that the law requires affirmative actions by the owner (such as registration or affixing copyright notices) in order to protect a copyright – but in fact, the only thing that an owner must do to own a copyright is to create something original, fixed in a tangible medium.  There are additional benefits conferred to a copyright owner upon timely registration, such as the potential recovery of statutory damages and attorneys’ fees in an infringement suit.  However, registration isn’t required in order for a copyright to be valid.   

The problem that arises when copyright owners aren’t required to register copyrights or to attach notice of their claim to ownership is that many copyright owners go missing.  According to the Copyright Office, this orphan works problem is especially pervasive for photographs, but it also arises frequently with other types of works, such as books and musical works.

Previous attempts at legislation attempted to strike a balance between the rights of copyright holders and good faith users by allowing use of an orphan work as long as the user made a “reasonably diligent effort” to locate the copyright owner.  In the event the owner came forward at a later date, the remedies would be limited to payment of “reasonable compensation” for use of the work.  The proposed legislation was ultimately unsuccessful, so Congress at the early proposal stages did not specify what would constitute a “diligent effort” to locate the owner (i.e., what technology and/or search practices should be used); or how “reasonable compensation” would be determined (i.e., whether by mutual agreement, or a license fee determined by a court or by statute). 

The Copyright Office is currently accepting comments from interested parties regarding the problem of orphan works, in preparation for a recommendation to Congress for proposed legislation.   Comments may be submitted until March 6, 2013.  

The above advertisement was originally published in the New York Clipper in 1906.

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K2 - Siren of the Himalayas from Ursus Films on Vimeo.

Prior election campaigns have also received cease and desist letters and even been served with a few lawsuits brought by musicians objecting to the use of their songs at campaign rallies and in political advertisements.  The McCain campaign received cease and desist letters from both the Foo Fighters and the band Heart objecting to the use of their songs "My Hero" and "Barracuda" at campaign rallies.  During an ultimately unsuccessful Senate campaign, former Florida governor Charlie Crist was sued by the Talking Heads when their song "Road to Nowhere" was used in a web video targeting Crist's opponent, Marco Rubio.  As a condition of settlement, Crist was required to post this awkward apology video on YouTube: 

So can musicians prevent usage of their songs in connection with political campaigns? 

It depends on how the songs are used by the campaign.

If a song is used in a video advertisement without obtaining a synchronization license, the songwriter and/or music publisher can assert claims of copyright infringement against the offending campaign.  If a song is used at a campaign rally, the viability of a copyright infringement claim is less clear.  As explained in a previous post, most all musicians affiliate with one of the performing rights organizations – ASCAP, BMI, or SESAC – for the collection of royalties and enforcement of blanket licenses for the public performance of music in places such as bars, restaurants, nightclubs, and other public venues.  Both the McCain and the Romney campaigns have claimed that their usage of artists' music at campaign rallies was lawful pursuant to the venue’s public performance blanket licenses. 

However, the stronger claim for musicians to assert in objecting to the usage of their songs at campaign rallies is for false endorsement.  Under the Lanham Act, if the campaign’s usage of a song implies a sponsorship or endorsement by the band, the campaign could be held liable for false endorsement.

Until the extent to which a political party’s usage of artists’ music is litigated and defined by the courts, it seems the best approach for the political parties would be to ask for artists’ permission to use their music.  When artists object to the use of their music in connection with political campaigns, at a minimum, it results in unfavorable publicity for the candidate, but at worst, it could also potentially result in legal liability for false endorsement under the Lanham Act.

To be considered scandalous, a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable…giving offense to the conscience or moral feelings…or calling out for condemnation, in the context of the marketplace as applied to the goods and/or services described in the application.”  Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, and in the context of contemporary attitudes.”  In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994).  Examples of previous trademark applications that were refused registration on this basis include “1-800-JACK-OFF,” “BULLSHIT,” “A-HOLE PATROL,” “SEX ROD,” and “COCAINE.” 

What may have prompted LMFAO’s recent trademark applications is the USPTO’s approval in 2011 of an application for LMFAO, filed by an unrelated third party.  In response to the Examining Attorney’s inquiry regarding the meaning of LMFAO, the applicant responded, “LMFAO appearing in the mark…is a term of art for Laughing My Freaking Ass Off.”  Interestingly, the recent applications filed by the musical group LMFAO contain this same disclaimer as to the meaning of the acronym.

Although the USPTO has allowed a previous application for LMFAO, it likely won’t be relevant to the applications filed by the musical group LMFAO.  USPTO Examining Attorneys are not bound by decisions made by other Examining Attorneys.  Rather, an Examining Attorney’s decision is based solely on the unique facts and evidence of record in connection with a particular application.  TMEP § 1216.01. 

Will the Examining Attorney find that LMFAO is an immoral and scandalous mark, seemingly in contradiction of another recently approved application?  It’s difficult to predict. 

In the meantime, I’m going to LMFAO at this hilarious video…wiggle wiggle wiggle wiggle wiggle, yeah!

"The App, a video game, is a parody of the commercial success of the Defendant and any celebrity. The parody app portrays a beaver floating on a log down a river. The beaver presents with bangs, a lance, and a purple sweater. The beaver knocks 'Phot-Hogs' that are attempting to take his photograph into the river with his lance. The beaver also signs 'Otter-graphs.' The beaver also must dodge the 'whirlpool of success,' which will lead beaver out of control, while navigating the river."

Bieber's camp objected to the game on the grounds that it implied a false endorsement by Bieber, and infringed on his rights of publicity (i.e., his image and likeness).  If the lawsuit moves forward, the outcome will likely depend on whether Bieber can show that consumers would be confused as to affiliation, sponsorship, or endorsement by Bieber.  However, if RC3's parody accomplishes its purpose, consumers will not be confused because they will recognize that "Joustin Beaver" is merely making fun of Justin Bieber.  Judge for yourself: 

East Coast Foods, Inc., owner of the chain of restaurants known as "Roscoe's House of Chicken and Waffles," has lost an appeal of a judgment awarding damages, attorney's fees and costs arising out of the restaurant's failure to obtain a license from ASCAP to play music in the restaurant.  The district court granted summary judgment to the Plaintiffs (consisting of various songwriters and music publishers, represented by ASCAP), based primarily on the testimony of an ASCAP representative that visited Roscoe's and heard numerous recognizable songs played by both a DJ and a live band in the restaurant.  East Coast Foods challenged the testimony as expert testimony by a lay witness that should have been excluded from evidence by the district court.  The Court of Appeals disagreed:

"[I]dentifying popular songs does not require scientific, technical, or other specialized knowledge...On the contrary, identifying music is a reflexive daily process for millions of radio listeners, amateur karaoke singers, and fans of Name That Tune reruns...Clearly, the district court correctly determined that [the representative's] testimony was admissible."

The Court of Appeals concluded that the district court correctly determined that there was no issue of material fact that the Defendant committed copyright infringement.  The Court of Appeals affirmed the award of statutory damages against the Defendant in the amount of $36,000, as well as the far greater award of $162,728.22 against the Defendant for the Plaintiffs' attorney's fees and costs.  Although the fee award was discretionary, the Court of Appeals showed little empathy, finding that the Defendant could have avoided liability by purchasing a valid license at any point during the seven years in which ASCAP made repeated requests for Defendant to do so. 

Moral of the story: don't ignore a request by a performing rights society to obtain a proper license to play music at your venue.  The case is Range Road Music, Inc. et. al. v. East Coast Foods, Inc., et. al., Docket No. 10-55691, U.S. Ninth Circuit Court of Appeals, filed February 16, 2012.  A copy of the full opinion can be found here.