Cameo Clips

COPYRIGHT JURISDICTION/ REGISTRATION REQUIRED

The U.S. District Court for the Southern District of New York decided that it lacked subject matter jurisdiction over a claim for actual damages in an infringement suit in which the plaintiff filed for but hadn't yet obtained a certification of registration from the U.S. Copyright Office. DMBJ Productions v. TMZ TV, 08 Civ. 6160 (S.D.N.Y. 2009). DMBJ Productions sued over the alleged unauthorized inclusion in TMZ's TV entertainment-news show of the plaintiff's footage of Jennifer Lopez entering a TV studio. Section 411(a) of the Copyright Act provides that “no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” DMBJ applied for but had not yet received a certificate of registration.

District Judge Deborah A. Batts initially noted that the “plain language of this section rejects the notion that submission of the application for registration is sufficient to confer federal question jurisdiction over a claim for copyright infringement.” (In a case pending before it, the U.S. Supreme Court will decide whether registration is a jurisdictional requirement under '411(a). In re Literary Works in Electronic Databases Copyright Litigation, 509 F.3d 116 (2d Cir. 2007), cert. granted sub nom., Reed Elsevier Inc. v. Muchnick, 129 S.Ct. 1523 (2009).) TMZ TV is based in California, but the district judge also noted: “Defendants contend that complete diversity of citizenship is lacking in this action because Plaintiff DMBJ and Defendant Time Warner [TMZ's parent company] were both citizens of New York when the action commenced. Defendant Time Warner has put forward a good faith basis ' for the claim that its principal place of business is in New York, at One Time Warner Center in New York City.”

The U.S. Court of Appeals for the Seventh Circuit decided that a song used for local tourism efforts was a joint work. Janky v. Lake County Convention and Visitors Bureau, 07-2350. Cheryl Janky wrote the initial version of the song “Wonders of Indiana” after hearing from Henry Farag, a member with Janky in the doo-wop group Stormy Weather, that Lake County was seeking a promotional tune. Janky originally listed herself on the copyright registration form as sole author of the song, but later filed a registration with Farag listed as co-author for creating “additional lyrics.” Farag gave the Lake County Convention and Visitors Bureau a non-exclusive license to use the song for marketing purposes. But Janky filed another copyright registration once again listing herself as sole author and filed an infringement suit alleging she hadn't given the county permission for the song. A federal magistrate ruled that Janky was the sole author and a jury awarded her $100,000.

Reversing and remanding, the appeals court explained that the Seventh Circuit test for a joint work is: whether each co-author contributed an independently copyrightable part; and whether the parties intended to create a single work, not whether they intended to see each other as co-authors.

The Seventh Circuit found “the song here was the product of Janky and Farag. Farag wielded considerable control over what the song finally looked like; one could even say he demanded the changes. More important, however, is the evidence of intent supplied by Janky herself. ' In addition, while Farag's changes may have accounted for only 10[%] of the lyrics, they were significant. They were important not only to the final sound, but also to its commercial viability. Before Farag became involved, the song celebrated the charm of Indiana as a state; Farag shifted the focus to Lake County. Without Farag's input, it is unlikely that the Bureau would have embraced the song the way it did.”

(Editor's Note: In a ruling issued several days before the Seventh Circuit's decision, the U.S. District Court for the Northern District of Indiana sanctioned Janky's lawyers under Rule 11 of the Federal Rules of Civil Procedure for filing a second federal suit, one that challenged the legitimacy of the Lake County defenses in the first federal suit that resulted in the appeals court decision discussed above. District Judge Philip P. Simon noted in the sanctions decision ' in which he separately sanctioned client Janky under Rule 11(b)(1) ' that the second federal suit against Lake County “was brought for an improper purpose, both to harass Defendants and to needlessly increase the cost of litigation.” Janky v. Batistatos, 2:07-CV-339 PPS APR. Janky still has a suit pending in Indiana state court against Lake County and Farag.)

United States Magistrate Judge Gabriel W. Gorenstein of the Southern District of New York decided that the unauthorized uses of music and accompanying, synchronized visual display of the song's lyrics in “CD+G” karaoke recordings constituted infringement of one work under the Copyright Act. Manno v. Tennessee Production Center Inc., 07 Civ. 10360(BSJ)(GWG). The federal magistrate awarded $5,000 to songwriter Karen Manno under 17 U.S.C. '504(c)(2) (which allows up to a maximum of $150,000 per work) for the defendant's willful infringement of Manno's song “The One” on several CD+G karaoke recordings.

But Manno argued that Tennessee Production's “reprinting of the lyrics of plaintiff's musical composition constitutes a separate infringement under the Copyright Act.” The magistrate noted, however, that “the Copyright Act treats a CD+G disk containing both music and lyrics simply as an 'audiovisual work' under the Copyright Act, ABKCO Music Inc. v. Stellar Records Inc., 96 F.3d 60, 65 (2d Cir.1996), and the statutory definition of 'audiovisual work' confirms that it already consists of both 'images' ' in this case, the lyrics ' 'together with accompanying sounds' ' the music ' The fact that a separate copyright may be obtained for lyrics does not alter the fact that the actual infringement here was of a single work: the song identified in the Copyright Registration, which explicitly references both music and lyrics.”

The magistrate added that Manno “cites to cases that stand only for the unrelated proposition that a compulsory license for use of a phonorecord (not at issue in this case) does not allow the license-holder to also sell karaoke CD+G's because karaoke CD+G's are audiovisual works.” As for the $5,000 award, the magistrate explained, “In light of the fact that Tennessee Production must bear a significant cost in the form of Manno's attorney's fees [i.e., a total of $47,273.94 in fees and litigation costs], the [c]ourt does not believe a higher award is necessary.”

The U.S. District Court for the Southern District of New York dismissed for lack of personal jurisdiction a suit against a Virginia-based operator of Web site, www.dishant.com, that enables visitors to create playlists of Indian music and to download Bollywood movie ringtones. The Royalty Network Inc. v. Dishant.Com LLC, 08 Civ. 8558(SHS). New York-based Royalty Network is the U.S. administrator of music for Saregama India. Dishant.com promotes itself as the “home to Indian music.” Royalty Network's complaint against Dishant.com alleged copyright, Lanham Act and state law violations.

District Judge Sidney H. Stein noted that, under New York's long-arm statute, N.Y.C.P.L. '302: “Royalty contends that the [W]eb site purposefully targets the Indian population, that a significant percentage of the Indian population within the United States resides in New York, and, therefore, that New York residents must have used the [W]eb site and that defendants must have intended such use, thereby purposefully availing itself of the New York market. ' Indeed, Royalty's own data shows that users from the United States (and thus any New York-based subset of those users) comprise a tiny fragment ' just [5%] ' of the [W]eb site's total monthly visitors, ' thus confirming defendants' averment that 'New York visitor traffic is negligible with respect to visitors in India.'” But Royalty Network also claimed the defendants sold website ads to national advertisers based in New York. The court found, however, “there is no direct evidence that defendants touted their ability to reach the New York market to anyone. Moreover, as discussed above, Royalty's data confirms that defendants' [W]eb site actually attracts visitors primarily from India, not from America, and that 'New York visitor traffic is negligible' compared to visitors to the site residing in India.” Finally, even thought the defendants had registered their domain name through a New York company, “that general and undisputed fact ' is insufficient here because the transaction has no specific connection to this litigation. That it took place in New York is 'merely coincidental' and of no relevance to the facts or legal issues underlying this suit.”

COPYRIGHT JURISDICTION/ REGISTRATION REQUIRED

The U.S. District Court for the Southern District of New York decided that it lacked subject matter jurisdiction over a claim for actual damages in an infringement suit in which the plaintiff filed for but hadn't yet obtained a certification of registration from the U.S. Copyright Office. DMBJ Productions v. TMZ TV, 08 Civ. 6160 (S.D.N.Y. 2009). DMBJ Productions sued over the alleged unauthorized inclusion in TMZ's TV entertainment-news show of the plaintiff's footage of Jennifer Lopez entering a TV studio. Section 411(a) of the Copyright Act provides that “no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” DMBJ applied for but had not yet received a certificate of registration.

District Judge Deborah A. Batts initially noted that the “plain language of this section rejects the notion that submission of the application for registration is sufficient to confer federal question jurisdiction over a claim for copyright infringement.” (In a case pending before it, the U.S. Supreme Court will decide whether registration is a jurisdictional requirement under '411(a). In re Literary Works in Electronic Databases Copyright Litigation , 509 F.3d 116 (2d Cir. 2007), cert. granted sub nom., Reed Elsevier Inc. v. Muchnick , 129 S.Ct. 1523 (2009).) TMZ TV is based in California, but the district judge also noted: “Defendants contend that complete diversity of citizenship is lacking in this action because Plaintiff DMBJ and Defendant Time Warner [TMZ's parent company] were both citizens of New York when the action commenced. Defendant Time Warner has put forward a good faith basis ' for the claim that its principal place of business is in New York, at One Time Warner Center in New York City.”

The U.S. Court of Appeals for the Seventh Circuit decided that a song used for local tourism efforts was a joint work. Janky v. Lake County Convention and Visitors Bureau, 07-2350. Cheryl Janky wrote the initial version of the song “Wonders of Indiana” after hearing from Henry Farag, a member with Janky in the doo-wop group Stormy Weather, that Lake County was seeking a promotional tune. Janky originally listed herself on the copyright registration form as sole author of the song, but later filed a registration with Farag listed as co-author for creating “additional lyrics.” Farag gave the Lake County Convention and Visitors Bureau a non-exclusive license to use the song for marketing purposes. But Janky filed another copyright registration once again listing herself as sole author and filed an infringement suit alleging she hadn't given the county permission for the song. A federal magistrate ruled that Janky was the sole author and a jury awarded her $100,000.

Reversing and remanding, the appeals court explained that the Seventh Circuit test for a joint work is: whether each co-author contributed an independently copyrightable part; and whether the parties intended to create a single work, not whether they intended to see each other as co-authors.

The Seventh Circuit found “the song here was the product of Janky and Farag. Farag wielded considerable control over what the song finally looked like; one could even say he demanded the changes. More important, however, is the evidence of intent supplied by Janky herself. ' In addition, while Farag's changes may have accounted for only 10[%] of the lyrics, they were significant. They were important not only to the final sound, but also to its commercial viability. Before Farag became involved, the song celebrated the charm of Indiana as a state; Farag shifted the focus to Lake County. Without Farag's input, it is unlikely that the Bureau would have embraced the song the way it did.”

(Editor's Note: In a ruling issued several days before the Seventh Circuit's decision, the U.S. District Court for the Northern District of Indiana sanctioned Janky's lawyers under Rule 11 of the Federal Rules of Civil Procedure for filing a second federal suit, one that challenged the legitimacy of the Lake County defenses in the first federal suit that resulted in the appeals court decision discussed above. District Judge Philip P. Simon noted in the sanctions decision ' in which he separately sanctioned client Janky under Rule 11(b)(1) ' that the second federal suit against Lake County “was brought for an improper purpose, both to harass Defendants and to needlessly increase the cost of litigation.” Janky v. Batistatos, 2:07-CV-339 PPS APR. Janky still has a suit pending in Indiana state court against Lake County and Farag.)

United States Magistrate Judge Gabriel W. Gorenstein of the Southern District of New York decided that the unauthorized uses of music and accompanying, synchronized visual display of the song's lyrics in “CD+G” karaoke recordings constituted infringement of one work under the Copyright Act. Manno v. Tennessee Production Center Inc., 07 Civ. 10360(BSJ)(GWG). The federal magistrate awarded $5,000 to songwriter Karen Manno under 17 U.S.C. '504(c)(2) (which allows up to a maximum of $150,000 per work) for the defendant's willful infringement of Manno's song “The One” on several CD+G karaoke recordings.

But Manno argued that Tennessee Production's “reprinting of the lyrics of plaintiff's musical composition constitutes a separate infringement under the Copyright Act.” The magistrate noted, however, that “the Copyright Act treats a CD+G disk containing both music and lyrics simply as an 'audiovisual work' under the Copyright Act, ABKCO Music Inc. v. Stellar Records Inc. , 96 F.3d 60, 65 (2d Cir.1996), and the statutory definition of 'audiovisual work' confirms that it already consists of both 'images' ' in this case, the lyrics ' 'together with accompanying sounds' ' the music ' The fact that a separate copyright may be obtained for lyrics does not alter the fact that the actual infringement here was of a single work: the song identified in the Copyright Registration, which explicitly references both music and lyrics.”

The magistrate added that Manno “cites to cases that stand only for the unrelated proposition that a compulsory license for use of a phonorecord (not at issue in this case) does not allow the license-holder to also sell karaoke CD+G's because karaoke CD+G's are audiovisual works.” As for the $5,000 award, the magistrate explained, “In light of the fact that Tennessee Production must bear a significant cost in the form of Manno's attorney's fees [i.e., a total of $47,273.94 in fees and litigation costs], the [c]ourt does not believe a higher award is necessary.”

The U.S. District Court for the Southern District of New York dismissed for lack of personal jurisdiction a suit against a Virginia-based operator of Web site, www.dishant.com, that enables visitors to create playlists of Indian music and to download Bollywood movie ringtones. The Royalty Network Inc. v. Dishant.Com LLC, 08 Civ. 8558(SHS). New York-based Royalty Network is the U.S. administrator of music for Saregama India. Dishant.com promotes itself as the “home to Indian music.” Royalty Network's complaint against Dishant.com alleged copyright, Lanham Act and state law violations.

District Judge Sidney H. Stein noted that, under New York's long-arm statute, N.Y.C.P.L. '302: “Royalty contends that the [W]eb site purposefully targets the Indian population, that a significant percentage of the Indian population within the United States resides in New York, and, therefore, that New York residents must have used the [W]eb site and that defendants must have intended such use, thereby purposefully availing itself of the New York market. ' Indeed, Royalty's own data shows that users from the United States (and thus any New York-based subset of those users) comprise a tiny fragment ' just [5%] ' of the [W]eb site's total monthly visitors, ' thus confirming defendants' averment that 'New York visitor traffic is negligible with respect to visitors in India.'” But Royalty Network also claimed the defendants sold website ads to national advertisers based in New York. The court found, however, “there is no direct evidence that defendants touted their ability to reach the New York market to anyone. Moreover, as discussed above, Royalty's data confirms that defendants' [W]eb site actually attracts visitors primarily from India, not from America, and that 'New York visitor traffic is negligible' compared to visitors to the site residing in India.” Finally, even thought the defendants had registered their domain name through a New York company, “that general and undisputed fact ' is insufficient here because the transaction has no specific connection to this litigation. That it took place in New York is 'merely coincidental' and of no relevance to the facts or legal issues underlying this suit.”