Bit Parts

Anti-Bootlegging Statute/ Constitutionality

In a ruling of first impression, the U.S. District Court for the Central District of California found 17 U.S.C. Sec. 1101(a)(3) of the federal civil anti-bootlegging statute to be unconstitutional. Kiss Catalog v. Passport Int'l Prods., 03-8514. In the suit by members of the rock band Kiss alleging unauthorized distribution of a DVD of a 1976 concert, the district court found the plaintiffs could proceed with their copyright infringement claim because they had pleaded ownership of the footage through a work-for-hire arrangement with concert promoter John Scher, registration of the copyright and alleged infringement by the defendants. The district court then noted that recordings made before Sec. 1101(a)(3)'s effective date of 1994, but distributed after, were covered by the statute. But the court concluded that by creating perpetual protection, the statute violated the limited times element of the copyright clause of the federal constitution. In September 2004, a Manhattan federal district court found 18 U.S.C. 2319A, the federal criminal anti-bootlegging statute, to be unconstitutional partly for the same reason. U.S. v. Martignon, 346 F. Supp. 2d 413 (S.D.N.Y. 2004).

Copyright Infringement/Access

A Manhattan federal district court granted summary judgment in favor of the defendants in a suit alleging that the Oscar-winning hit “Heart,” recorded by Celine Dion and featured in the film “Titanic,” infringed on the plaintiff's song. Jorgensen v. Epic/Sony Records, 00 Civ. 9181. On remand from the Second Circuit, the district court considered several new defense declarations, including from non-defendants and “Heart” songwriters James Horner and Will Jennings. The district court concluded: “Mr. Jorgensen, as the evidence developed on this motion clearly demonstrates, has shown no possibility, certainly not a 'reasonable' one and not even a 'bare' one that the authors of Heart ever had access to [Jorgensen's song] Lover. It is now crystal clear from the record on this motion that neither Horner nor Jennings were 'affiliated' with Sony during the relevant period of 1995-1997.”

Peer-to-Peer FileSharing/ Subpoenas

The U.S. Court of Appeals for the Eighth Circuit has become the second federal appeals court to quash subpoenas issued by federal district courts that required Internet service providers to disclose the names of customers allegedly engaged in the unauthorized trading of music through peer-to-peer file-sharing networks. In re: Charter Communications Inc., 03-3802. The Eight Circuit acknowledged: “We agree with and adopt the reasoning of the United States Court of Appeals for the District of Columbia Circuit in [Recording Ind. Ass'n of Am. v. Verizon Internet Servs. Inc., 351 F.3d 1229 (D.C. Cir. 2003)] as it pertains to this statutory issue. Thus, because the parties do not dispute that Charter's function was limited to acting as a conduit for the allegedly copyright protected material, we agree Sec. 512(h) [of the Digital Millennium Copyright Act] does not authorize the subpoenas issued here.”

Royalty Claims/ Statute of Limitations

The U.S. District Court for the Eastern District of Pennsylvania denied a request by the O'Jays to expand the scope of discovery to before 1998 in the group's music royalty suit against Philadelphia International Records, and producers Kenneth Gamble and Leon Huff. Levert v. Philadelphia International Records, 04-1489. The district court emphasized: “Plaintiffs have failed to exercise the due diligence required to toll the statute of limitations. First, plaintiffs were very successful recording artists and they were assisted by lawyers and accountants during the years in question. Second, if plaintiffs did not receive regular royalty statements, or if the statements were confusing, plaintiffs had an obligation to make inquiry. Plaintiff's depositions reveal that they personally failed to take much interest in their contractual rights.”

TV Production Deals/Good Faith and Fair Dealing

The U.S. District Court for the Central District of California ruled that a claim for breach of covenant of good faith and fair dealing by the producers of the TV series “Who Want to Be a Millionaire” wasn't superfluous to the plaintiffs' breach of contract claim against The Walt Disney Co. and the ABC-TV network. Celador International Ltd. v. The Walt Disney Co., 04-3541.

The plaintiff producers claimed, among other things, a failure by the defendants to obtain increased licensing fees, based on the success of the series, from its affiliated companies. In letting the breach-of-covenant claim proceed, the district court noted, “Even if the fact finder concludes that the consensual terms of the contract did not impose such obligations on Defendants, the fact finder could conclude that the actions of Defendants frustrated a benefit of the contract ' the benefit of receiving Contingent Compensation from the Series.”

Anti-Bootlegging Statute/ Constitutionality

In a ruling of first impression, the U.S. District Court for the Central District of California found 17 U.S.C. Sec. 1101(a)(3) of the federal civil anti-bootlegging statute to be unconstitutional. Kiss Catalog v. Passport Int'l Prods., 03-8514. In the suit by members of the rock band Kiss alleging unauthorized distribution of a DVD of a 1976 concert, the district court found the plaintiffs could proceed with their copyright infringement claim because they had pleaded ownership of the footage through a work-for-hire arrangement with concert promoter John Scher, registration of the copyright and alleged infringement by the defendants. The district court then noted that recordings made before Sec. 1101(a)(3)'s effective date of 1994, but distributed after, were covered by the statute. But the court concluded that by creating perpetual protection, the statute violated the limited times element of the copyright clause of the federal constitution. In September 2004, a Manhattan federal district court found 18 U.S.C. 2319A, the federal criminal anti-bootlegging statute, to be unconstitutional partly for the same reason. U.S. v. Martignon , 346 F. Supp. 2d 413 (S.D.N.Y. 2004).

Copyright Infringement/Access

A Manhattan federal district court granted summary judgment in favor of the defendants in a suit alleging that the Oscar-winning hit “Heart,” recorded by Celine Dion and featured in the film “Titanic,” infringed on the plaintiff's song. Jorgensen v. Epic/Sony Records, 00 Civ. 9181. On remand from the Second Circuit, the district court considered several new defense declarations, including from non-defendants and “Heart” songwriters James Horner and Will Jennings. The district court concluded: “Mr. Jorgensen, as the evidence developed on this motion clearly demonstrates, has shown no possibility, certainly not a 'reasonable' one and not even a 'bare' one that the authors of Heart ever had access to [Jorgensen's song] Lover. It is now crystal clear from the record on this motion that neither Horner nor Jennings were 'affiliated' with Sony during the relevant period of 1995-1997.”

Peer-to-Peer FileSharing/ Subpoenas

The U.S. Court of Appeals for the Eighth Circuit has become the second federal appeals court to quash subpoenas issued by federal district courts that required Internet service providers to disclose the names of customers allegedly engaged in the unauthorized trading of music through peer-to-peer file-sharing networks. In re: Charter Communications Inc., 03-3802. The Eight Circuit acknowledged: “We agree with and adopt the reasoning of the United States Court of Appeals for the District of Columbia Circuit in [ Recording Ind. Ass'n of Am. v. Verizon Internet Servs. Inc. , 351 F.3d 1229 (D.C. Cir. 2003)] as it pertains to this statutory issue. Thus, because the parties do not dispute that Charter's function was limited to acting as a conduit for the allegedly copyright protected material, we agree Sec. 512(h) [of the Digital Millennium Copyright Act] does not authorize the subpoenas issued here.”

Royalty Claims/ Statute of Limitations

The U.S. District Court for the Eastern District of Pennsylvania denied a request by the O'Jays to expand the scope of discovery to before 1998 in the group's music royalty suit against Philadelphia International Records, and producers Kenneth Gamble and Leon Huff. Levert v. Philadelphia International Records, 04-1489. The district court emphasized: “Plaintiffs have failed to exercise the due diligence required to toll the statute of limitations. First, plaintiffs were very successful recording artists and they were assisted by lawyers and accountants during the years in question. Second, if plaintiffs did not receive regular royalty statements, or if the statements were confusing, plaintiffs had an obligation to make inquiry. Plaintiff's depositions reveal that they personally failed to take much interest in their contractual rights.”

TV Production Deals/Good Faith and Fair Dealing

The U.S. District Court for the Central District of California ruled that a claim for breach of covenant of good faith and fair dealing by the producers of the TV series “Who Want to Be a Millionaire” wasn't superfluous to the plaintiffs' breach of contract claim against The Walt Disney Co. and the ABC-TV network. Celador International Ltd. v. The Walt Disney Co., 04-3541.

The plaintiff producers claimed, among other things, a failure by the defendants to obtain increased licensing fees, based on the success of the series, from its affiliated companies. In letting the breach-of-covenant claim proceed, the district court noted, “Even if the fact finder concludes that the consensual terms of the contract did not impose such obligations on Defendants, the fact finder could conclude that the actions of Defendants frustrated a benefit of the contract ' the benefit of receiving Contingent Compensation from the Series.”