Article: THE SONG REMAINS THE SAME
Articles / December 2003

Click here to download this article as a PDF file (.pdf) “The Song Remains the Same: A Review of the Legalities of Music Sampling” by Ben Challis December, 2003 Sampling copyrighted music and lyrics – without permission – remains a common activity in the area of music creation. In this article, Ben Challis explains the extent to which this practice is legal. Relevant case law examples from the UK and USA are identified for consideration. Sampling can be simply defined as the incorporation of pre-existing recordings into a new recording. It can be extended to include the incorporation of part or the whole of a ‘tune’ (a melody) and/or lyrics into another work. Copyright subsists in sound recordings, and in the music and lyrics to a song, pursuant to section 1(1) of the Copyright Designs and Patents Act 1988 (CDPA). The CDPA provides in section 16(1) that the owner of a work has a number of acts restricted to him or her, which are to: Copy the work Issue copies of the work or lend or rent copies of the work to the public Perform, show or play the work in public Broadcast the work or include it in a cable programme; and:…

Chinese Rights Owners Seek Payment For Mobile Telephone Use
China
South Korea

COPYRIGHT Record Labels, Music Publishers, Telecommunications The Music Copyright Society of China is seeking US$1.4 million, from China’s second biggest mobile phone operator, TCL Mobile Communication and its distributor, Beijing Digital Electronic Communication Technology, for installing 107 copyrighted Chinese tunes on 12 TCL models. TCL has offered to pay only about a quarter of the damages. A court ruling is pending after a hearing last week in Beijing. China, which is plagued by pirated CDs and DVDs which are on sale on street corners shortly after first release has vowed to crack down on copycats and strengthen intellectual property protection after the country joined the World Trade Organization two years ago. Chinese copyright laws do not specify how much cellphone makers should pay when they include copyright material. “Butterfly Lovers Concerto,” based on a Chinese tragic love story, and “Full Moon of the Fifteenth,” are among the most popular among Chinese cellphone users. China overtook the United States as the world’s biggest cellular market last year. With 244 million users at the end of August. The Chinese copyright owners have demanded 1.4 U.S. cents, for every tune installed on a phone and the dispute is really about how much TCL…

Australian Internet Service Provider Faces Claim For Copyright Infringement
Australia

COPYRIGHT Record Labels, Music Publishers, Internet The Australian music industry has listed an internet service provider (ISP) as a respondent in a court case involving alleged music piracy. E-Talk Communications, trading as Comcen Internet Services, has been served with a law suit in Federal Court (Justice Brian Tamberlin) charged with making money from the provision of copyright-infringing music files. This is the first time the music industry has accused an ISP of being directly involved in piracy by allowing its infrastructure to be used for file-trading activities according to Music Industry Piracy Investigations (MIPI), who led the industry’s investigation. The tactic marks the escalation in the simmering battle between the music industry and the ISPs over how much responsibility the latter should take for any copyright infringing behaviour of their subscribers. The charge is the result of an 11-month investigation into the web site MP3s4Free.net. The registrant of the domain name, Australian Stephen Cooper, was also charged. The MIPI claimed that the website was highly organised and allowed and assisted users to find and download music files. The site received 7 million unique visits in the previous 12 months and MIPI claim that E-Talk economically benefited by hosting the website….

Actress Awarded Damages of £38,000 For Libel
Artists , Defamation / December 2003
UK

DEFAMATION Artists Actress Dame Diana Rigg has accepted the sum of £38,000 for libel and breach of privacy in a High Court action against the London Evening Standard and the Daily Mail. The newspapers had both published articles which said that the actress, famous for her inconic role as Emma Peel in The Avengers, was an ’embittered woman’, ‘lived in France’, was ‘critical of British men’ and had ‘retired’. None of these statements were true and Dame Diana had been upset by the way she had been portrayed and worried that the articles might harm her chance of securing work as an actress. Dame Diana has had a hugely successful television, film and theatrical career in the UK and worldwide. Under UK law a defamatory statement is one which brings the plaintiff into ‘hatred, ridicule or contempt’ or one which ‘lowers the plaintiff in the estimation of right thinking members of society’. Defamation in a permanent form is called libel. In the 1997 case of Burchill -v- Berkoff actor Stephen Berkoff won a libel action after being labelled ‘hideously ugly’ by writer Julie Burchill. £30,000 was awarded for defamation and £8,000 for breach of privacy. Dame Diana will also receive costs and an apology. Part of the settlement…

French Mayor Questions Whether Novel Is a Work of Fiction
Artists , Defamation / December 2003
France

DEFAMATION Artists Jean-Michel Couve, mayor of Saint-Tropez, is bringing a legal action against a fellow local resident and political rival, Christian Millau, claiming that he can recognise himself in Mr Millau’s novel ‘A Campaign In The Sun’. The main character in the novel, Max Farini, is re-elected mayor of a Cote D’Azur town after a hard fought local election, and is corrupt and turns a blind eye to planning regulations. Mr Couve won his last election against an opponent whose campaign was masterminded by Mr Millau by just 11 votes. But Mr Millau has been ordered to take down his 1989 residence which was built without planning regulations. The Mayor’s lawyer pointed out that other authors in France had been convicted of defamation after having ‘described reality too accurately’ in works of fiction. The defence have suggested that in admitting he recognises himself, the mayor is admitting to all of the alleged behaviour in Mr Millau’s novel. See: http://www.guardian.co.uk/france

British Comedian Faces Damages Claim For Show Cancellation
Artists , Contract , Live Events / December 2003
UK

CONTRACTS Artists, Live Concert Industry The British comedian Jim Davidson faces a claim of £35,000 after he cancelled a show at Plymouth Pavilions. The comedian backed out of the show after audience members in wheelchairs refused to move from the front row of the theatre before the show began. The venue refunded 1,700 audience members with the cost of their tickets (£17.50 and £19.50) and the cost of programmes bought. However, Mr Davidson justified his actions because his show involves him ‘taking the micky’ out of the front row of any show and in the circumstances he did not want to appear to be insulting the front row which was wholly made up of disabled patrons. It appears that Mr Davidson did not want to compromise his show or be seen to insult disabled patrons. Source: The Times 22 October 2003

Van Morrison Ordered To Pay Damages For Cancelled Contract
Artists , Contract , Live Events / December 2003
UK

CONTRACTS Artists, Live Concert Industry English pub landlord Gary Marlow has been awarded approximately £40,000 in damages after Van Morrison cancelled a concert at the Crown Hotel public House in 2002. The singer, and his production company Exile, claimed that the contract had been breached by Marlow publicly advertising the event – but the court thought otherwise. The damages included the return of a £20,000 deposit. However, the damages fell far short of what Mr Marlow had asked for – he claimed the failed concert severely damaged the business of his pub and wanted damages of £400,000 for the long term damages to his business. This was not accepted in the High Court and Mr Marlow faces a substantial legal bill – it is also thought he may have turned down an offer of more than £40,000 from the singer to pursue the claim. A review of the judgement by Richard Taylor and Emma Stoker can be seen at:http://www.simkins.com/ebulletins/archive/default.aspx and see: http://www.ilmc.com

“Doublemint” Cannot Be Registered As a Trademark
Artists , Trade Mark / December 2003
EU

TRADE MARK Artists, Merchandising European Court of Justice C-191/01 The European Court of Justice has upheld the decision of the EU’s Office of Harmonisation of the Internal Market that the brand name ‘double mint’ could not be registered as a trade mark as it was not a mere brand name but a description of a product. Such descriptive words and phrases cannot be registered as they are to be kept free for use for everyone else. A wordmark with several different descriptive meanings is not registrable. Wrigley, who manufacture the chewing gum had won on appeal at the European Court of Fist Instance who accepted that the use of the two words together deprived the phrase of any descriptive function but the ECJ overturned this decision saying that the name is one which other chewing gum manufacturers might legitimately want to use. ECJ C-191/01 23 October 2003 See: http://www.ip-firm.de/index.htm

The GHETTOPOLY Version of Monopoly Leads To a Legal Action
Copyright , Trade Mark / December 2003
USA

COPYRIGHT, TRADE MARK Merchandising Whilst the game of Monopoly may be economically out of date (houses in London cost more than a few hundred pounds now) but the makers of board game are to take legal action against spoof version Ghettopoly, which satirises hip-hop culture. The game, based on the traditional family board game, became an instant hit when it went on sale in the US and Europe earlier this year. However, Hasbro, which makes Monopoly, is claiming copyright violation and trademark rights against Ghettopoly. The game sees players get rich through buying stolen properties. In place of the Monopoly top hat, little car and dog players, Ghettopoly players use machine gun, marijuana leaf and basketball icons. According to Ghettopoly creator David Chang, the game also sees “playas” competing with each other by “pimpin’ hoes, building crack houses and getting car jacked”. And instead of Monopoly’s Mayfair or Park Lane, Ghettopoly’s properties include Northside Liquor, The Pawn Shop, Ling Ling’s Massage Parlour or Tyron’s Gun Shop. Apart from copyright and trademark issues, the game has caused outrage in the States. A number of retailers of the game in the US and Europe have decided to stop selling it. The original…

Adidas-Salomon AG v Fitnessworld Trading Ltd
Trade Mark / December 2003
EU

TRADE MARK Merchandising European Court of Justice case C-408/01 This case upheld the decision of the case of Davidoff et Cie SA v Gofkid Ltd (C292/00) and the European Court held that article 5(2) of Directive 89/104/EEC could be used by owners of registered marks to prevent use in relation to services which were both similar to the use of the mark by the registered owner and in relation to goods and services which were not similar. Here Adidas, who have a mark registered at the Benelux Trade Mark Office, wished to use EC trademark law to protect their mark: the mark is three parallel stripes of equal width running on the side and down the length clothing. The stripes are always of a contrasting colour to the base colour of the clothing. The defendant marketed fitness clothing with a similar double stripe motiff. The ECJ held that a member state must offer protection in cases of use by third parties of a later mark or sign which was identical or similar both in relation to goods and services which were not similar, and for goods and services which were covered by the mark’s registration or use. As for the similarities of…

Protecting Existing Marks
Artists , Trade Mark / December 2003
UK
USA

TRADE MARK Artists, Merchandising In the United Kingdom, the Ministry of Defence has filed an application at the UK Patents Office to register the RAF’s red, white and blue ‘target’ or roundel as a trade mark. Registration will include use in clothing. A number of fashion companies have opposed the registration saying that the roundel entered the public domain in the 60s when the ‘mods’ started using the same red, white and blue roundel as a symbol. The owner of the Lambretta clothing company pointed out that the target device had been used since and is closely associated with the style of dress worn by mods, with the band The Who and with the film Quadrophenia which starred Sting and Phil Daniels. The RAF (Royal Air Force) still use the roundel on their military aircraft. In the United States, Native American tribes are seeking to protect their tribal names from commercial exploitation. The tribes point to uses such as the Cherokee Jeep and names for sports teams such as the ‘Redskins’. The tribes have persuaded the US Patent & Trademark Office to created a database of official Native American insignia and logos with the aim of preventing the use of such for…

Responsibility For Security
Health & Safety , Live Events / December 2003
UK

HEALTH & SAFETY LAW Live Concert Industry There would be a presumption that the employer of a security guard who deliberately assaulted a member of the public attending a event would be responsible for the security guard’s actions unless it was clear that the guard’s actions were wholly unrelated to his activities as a security guard – for example, if the guard knew the person assaulted and the act was a personal vendetta against that person. In Mattis -v- Pollock (t/a) Flamingos Nightclub (The Times Law Report 16 July 2003) the Court of Appeal held that a club doorman who stabbed a person in the vicinity of the club in revenge for an earlier violent attack on him in the club was acting in the course of his employment and so the club owner was vicariously liable for the doorman’s actions. The doorman was involved in a fight inside the club. The knifing happened after the doorman had gone home to get a knife and then attacked the victim some 100 metres away from the club. The victim was seriously injured. The doorman was convicted in a criminal court for grievous bodily harm (GBH) and sentenced to 8 years in prison. This civil action…

Ghostface Killah Wins Copyright Infringement Case
USA

COPYRIGHT Music Publishing, Record Labels A New York federal court has upheld the “fair use” doctrine by dismissing a lawsuit against Sony Music Entertainment and rappers Ghostface Killah, Raekwon and the Alchemist for copyright infringement. The plaintiff, Abilene Music, accused the rappers and Sony, which released the album, of infringing its copyright in the well known song “What a Wonderful World.” The infraction allegedly occurred when the trio made slang references to marijuana in a rap that began with a variation on the first three lines of the song popularized by Louis Armstrong (news). The defendants successfully argued that while the song’s lyrics were adapted from “What a Wonderful World,” they were protected as fair use under the Copyright Act. In granting a summary judgement for Sony and the rappers, Judge Gerard Lynch said the rap was clearly a parody, intended to criticise and ridicule the cheerful perspective of the original song. The judge also noted that the rap made key changes to the lyrics and to the overall effect of the lines, and it was not an imitation of the original. The Judge held that whereas the original first three lines of ‘Wonderful World’ describe the beauty of nature,…

Sampling Newton -v- Diamond and Others (2003)
USA

COPYRIGHT Music Publishing, Record Labels, Artists In 1992 the Beastie Boys got a license from ECM Records to sample a copyrighted sound recording from James W. Newton Jr.’s flute composition, Choir. The group sampled and used a six-second, three-note sequence and looped it throughout its song “Pass the Mic,” featured on the Capitol album “Check Your Head.” In 2000, Newton who also composed the work, sued the Beastie Boys, alleging that the remix infringed the “heart” of his flute composition, and that the band should have obtained a license from him as the composer of the underlying work in addition to obtaining a sample to use the recording. The US Appeals Court, affirming the court of first instance’s decision, held that there was no infringement because the use of the sample was minimal and there were no substantial similarities between the two works or that the average person would recognise the appropriation. COMMENT : The band clearly felt that they had obtained the relevant appropriate licence: They had gone to the owner of a recording they wished to sample and licensed this. As they had only used three ‘unidentifiable’ notes in sequence they believed (rightly it seems) that they hadn’t used the…

Microsoft To Settle Class Actions, Record Labels Face Scrutiny
Competition , Record Labels / December 2003
USA

COMPETITION Computer Software, Telecommunications, Record Labels Microsoft has agreed to settle class action lawsuits from a number of US states which alleged that the software giant abused its dominant market position. Microsoft are handing out discounts worth approximately USD $200 million to consumers and schools in several US states including Kansas, North Dakota, South Dakota and Tennessee. The Times(29/10/03) estimate that Microsoft has paid out more than $1.5 billion over the last ten years in anti-trust and competition payments. Microsoft is now facing further actions from the US Government and state justice departments who have raised concerns the world’s largest software maker is trying to use its dominant Windows operating system to influence where customers buy their music online. If action is brought, it will be the first test of Microsoft’s unique and federal Court approved anti-trust settlement. The Justice Department and 19 state attorneys general have formally complained to a federal judge about a design feature of Windows that compels consumers who buy music online to use only Microsoft’s Internet Explorer browser and steers them to a web site operated by the company. Microsoft is also now facing competition investigations from the European Commission. In another anti-trust action, the five…

Judgement For Damages In Holly Valance Management Dispute
Artists , Contract / December 2003
Australia

CONTRACTS Artists Holly Valance’s Australian ex-manager, Scott Michaelson, has been awarded AU$350,000 (approx £160,000) in damages after the singer wrongly terminated his management contract. Justice Clifford Einstein found that the artist had breached the contract and awarded the damages for loss of earnings and management commission. Ms Valance will also have to pay costs. Mr Michaelson’s damages were limited to Holly Valance’s first album and he will not receive commissions from her yet to be released second album. See: http://www.theage.com.au/articles/2003/11/06/1068013328625.html

Zeta Jones and Douglas Win Limited Damages
Artists , Consumers , Image Rights , Privacy / December 2003
Germany
UK

PRIVACY, IMAGE RIGHTS, COMMERCIAL CONFIDENCE Artists The photographs snatched by papparatzi at Catherine Zeta-Jones and Michael Douglas’ wedding have cost Hello! Magazine more than £1 million in damages. In the High Court, Mr Justice Lindsay awarded a total of £14,600 damages to the couple and also awarded OK! Magazine £1,033,156 in damages for commercial damage to its exclusive coverage of the New York wedding in November 2000. See Law Updates May 2003 COMMENT : The judgement in this case sees only limited damages awarded to the couple : a nominal £50 to each of the claimants for data protection infringements and £3,750 each for the ‘distress’. The substantial award of damages is to OK magazine who lost their right to exclusive pictures from the celebrity wedding and Mr Justice Lindsey accepted that the magazine had lost substantial sales. To take this further, this ‘commercial confidence’ must be based on the licence of certain rights Catherine Zeta Jones and Michael Douglas has – and it is suggested that this is not only to the ‘event’ itself, the wedding, but to their own image. Most recently F1 driver Eddie Irving won a case against TalkRadio after they used the driver’s image in an…

Massive Piracy Raid in Italy
Copyright , Record Labels / December 2003
Italy

COPYRIGHT Record Labels Police in Italy have dismantled a major organised ring involved in the mass duplication of music, movies and software. The raids, in the Naples area, struck a blow against organised CD-R and DVD burning and distribution in the country. The raids followed months of investigation, and involved 50 of Italy’s Fiscal Police who located and seized six undercover burning laboratories in the suburbs of Naples on October 24. The raids netted 496 CD and DVD burners, including 200 CD burners found at one location. Over 60,000 burned CDs and DVDs ready for distribution throughout Italy were also found. They included the latest film and music titles, such as Tomb Raiders II and The Best of R.E.M. The value of related equipment, including computers, burned CDs and DVDs and blank discs is estimated at hundreds of thousands of Euros. Nine people have been charged with criminal copyright law infringement. The BSA (Business Software Alliance), FAPAV (the Italian branch of the Motion Picture Association) and FPM (Italian Record Industry and the IFPI) assisted in the raids. See: http://www.ifpi.org

US Copyright Office Review
USA

COPYRIGHT Record Labels, Music Publishers, Computer Technology, Internet, Telecommunications The U.S. Copyright Office has rejected dozens of requests to relax a 1998 federal copyright law, including proposals to allow people to play DVDs bought in other countries and to copy DVD bonus materials for non-commercial use. This week’s ruling concludes a review conducted every three years on whether the legal use of some copyright materials has been hurt by the Digital Millennium Copyright Act, which bans the bypassing of copy protection on digital music, movies and other works. More than 50 requests for exemptions were made but the Copyright Office granted only two new exemptions. One permits access to electronic books by software for the blind and to computer programs and video games distributed in formats now obsolete.

R v Clark (2003) Re-broadcasting Foreign Television Signals
Copyright / December 2003
UK

COPYRIGHT Televison, Radio Pubs and clubs which illegally screen live football matches from the English Premiership league in England face prosecution as the Federation Against Copyright Theft (FACT) which acts for Premier League, which owns the copyright to the matches, takes action against infringers. Live football is banned in the UK on Saturday afternoons to promote match attendance and income from TV rights. In R v White, Hertfordshire bar manager William Clark was found guilty of copyright infringement and fined £500 and £720 costs. The maximum fine in a magistrates court is £5,000 for this offence. Foreign signals (which of course can be legally transmitted in the countries to which they are licensed) but which can be downlinked in the UK include Canal + in Holland and Poland and Sport TV in Portugal. All show live Premiership matches, although without English commentary. The Evening Standard, 4 November 2003

Federal Communications Commission (FCC) Back The ‘Broadcast Flag’
Copyright / December 2003
USA

COPYRIGHT Film, Television The US FCC has approved plans to embed a digital marker or flag in all digital television programmes in order to prevent their illegal distribution over the Internet as broadband develops. Broadcasters and film makers are particularly concerned that illegal copies will reach foreign markets in a digital form before foreign broadcasters have had a chance to legally broadcast there. In the UK, a number of foreign series such as Friends are often months, if not years, behind first transmission in the US. But the Electronic Frontier Foundation (EFF) have voiced serious concerns about the broadcast flag and its impact on the manufacturing of digital televisions and DVD recorders as well as on the personal liberty of consumers – “The FCC today has taken a step that will shape the future of television,” said EFF Senior Intellectual Property Attorney Fred von Lohmann. “Sadly, this represents a step in the wrong direction, a step that will undermine innovation, fair use, and competition.” The EFF’s pre-ruling ‘action alert newsletter’ commented: Hollywood is at it again, trying to control the design of new digital technologies. If the motion picture studios have their way, the Federal Communications Commission (FCC) will force manufacturers to include…

India’s State Broadcaster To Take Action As Cricket Footage Is Illegally Broadcast On Rival Channels
Copyright / December 2003
India

COPYRIGHT Film, Television Indian state broadcaster, Prasar Bharti, is planning to take legal action against a number of privately owned news and sports channels which are re-transmitting cricket footage which is owned and licenced to Prasar Bharti’s national Doordarshan channel. Under Indian national custom and practice, other channels can air up to 30 seconds from rival broadcaster’s footage for news and review purposes provided that dues acknowledgement is given to the copyright owner. Using more than 30 seconds is a copyright infringement. See: http://timesofindia.indiatimes.com/cms.dll/html/uncomp/articleshow?msid=270364

Piracy News From Around The World
Malaysia
UK
USA

COPYRIGHT Record Labels, Music Publishing, Internet A recent report published by NPD in the US shows that the threat of legal action against individuals who download copyrighted songs and swap files has led to a reduction in the number of infringements. The number of US households acquiring digital music via p2p file-sharing services declined by 11% from August to September and the total number of music files downloaded decreased 9%, says the company. However, the report also shows that the public image of record labels has suffered badly. In Malaysia, the record industry has resorted to ‘digital watermarking’ preview CDs sent to journalists after numerous album titles were found on the Internet before release but after review copies had been sent to the press. The watermarking is a series of invisible and unique digital codes embedded onto the CD which allows investigators to trace the source of the download. However, and in contrast to the problems reported by the record industry, US collection society Broadcast Music Incorporated (BMI) which represents music publishers and artists such as Britney Spears, Sheryl Crow, Pink and Eminen has announced increased annual revenues for last year, pre record industry actions. The performing right organisation distributed…