Music Publishers, Photo Agencies Battle Claims of Licensing Public Domain Works

Dismissal motions come in lawsuits over "This Land" and thousands of photographs donated to the Library of Congress.
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Woody Guthrie

When music publisher Warner/Chappell agreed to pay $14 million earlier this year to end a lawsuit challenging its hold on the song, "Happy Birthday to You," the development brought massive attention to the issue of material claimed to be in the public domain but being licensed anyway. The controversial topic shows no signs of abating anytime soon. From the masked vigilante character Zorro to the iconic civil rights song, "We Shall Overcome," there are works waiting adjudication on whether or not they will be freed from copyright grips. Meanwhile, those on the receiving end of lawsuits are fighting back.

This is true in two cases that both sparked motions to dismiss this week. One deals with Woody Guthrie's iconic folk song, "This Land," while the other is a $1 billion suit against Getty Images and a couple of other photo licensing outfits over images donated to the public for free via the Library of Congress. The disputes each deal with alleged misuse of public domain material, but are different enough to showcase the various obstacles that plaintiffs face when going to court over allegedly inappropriate licensing conduct.

The lawsuit over "This Land" comes from members of the rock band Satorii, who created a different version that uses Guthrie's lyrics but with a different melody. They are challenging The Richmond Organization and Ludlow Music, who are maintaining ownership despite copyright registrations that plaintiffs say never disclosed that elements of the song had been previously published.

True or not, the defendants on Tuesday asked a New York judge to reject the lawsuit because of a lack of live controversy that they argue leaves Satorii without sufficient standing.

"In contrast to Plaintiffs’ counsel’s previous case regarding the song "Happy Birthday to You," the actual Plaintiffs here had no direct contact with Defendants, were not asked to pay a license fee for use of the Song, and were not denied a request to use the Song in any medium," states a motion to dismiss. "Plaintiffs’ claimed harm — both for the completely theoretical threat of an infringement suit and for the theoretical claim of their inability to release a song with the same lyrics but a different tune — is not sufficiently imminent to give them a right to relief."

The Richmond Organization is warning the judge of the consequences of being permissive with these kind of lawsuits.

"Taken to its logical extreme, the principle Plaintiffs are asking this Court to endorse, is that anyone wishing to record a version of a copyrighted song, by, for instance, singing into a voice-recording application on their cellular phone and sending a check for 9.1 cents (along with a Notice) to a copyright owner or the Copyright Office (see 17 U.S.C. § 115), could thereby challenge any historical copyright of their choosing in federal court," the memorandum continues. "Beyond the fact that there is no statutory support in the Copyright Act for the type of claim Plaintiffs are attempting to bring here, the practical effect of a ruling that such a claim is viable would put all songwriters and the entirety of the music industry at risk of unimaginable harassment."

The lawsuit against Getty doesn't have this exact standing issue, but the plaintiff will still need to explain to a court her basis for proceeding.

Carol Highsmith is the one suing, and theoretically, she should be in better position because she is the one who injected the works into the public domain in the first place. She's a photographer and a pretty renowned one. Her work has been featured in 50 books, on U.S. postage stamps and has been licensed for use in films including the recently released Batman v. Superman: Dawn of Justice. For nearly three decades, she's been providing the Library of Congress tens of thousands of her photographs for public use.

Now, she claims that Getty, Alamy and Picscout have misappropriated her "generous gift to the American people" by "not only unlawfully charging licensing fees to people and organizations who were already authorized to reproduce and display the donated photographs for free, but ... [also] threatening individuals and companies with copyright infringement lawsuits that the Defendants could not actually lawfully pursue."

Specifically, Highsmith is claiming a violation of the provision of the Digital Millennium Copyright Act that pertains to copyright management information by doing things like putting watermarks on the photos falsely identifying the works as belonging to the defendants, plus committing false advertising and unfair competition under the Lanham Act.

In response to the lawsuit asserting more than $1 billion in damages, Getty moved for dismissal this week with the argument that she gave up her right to assert a copyright violation when she disclaimed rights through her donation. In doing so, the licensing agency points out that "public domain works are routinely commercialized — e.g., publishers charge money for their copies of Dickens novels and Shakespeare plays, etc."

Getty explains that the photographs came to its image catalog via a "contributor" to its website and tells the court that it would only be liable if it acted with “the intent to induce, enable, facilitate or conceal infringement,” but because the photos are no longer subject to copyright, these works "by definition, cannot be infringed" and thus, there can be no showing of the requisite intent or knowledge of infringement.

As for the other claim that it is essentially confusing the marketplace as to the source of these photographs, Getty is leaning on the landmark Supreme Court opinion in Dastar Corp. v. Twentieth Century Fox Film. Ironically, that decision became shorthand for the proposition that trademarks can't be used as perpetual swords to counter copyrighted work falling into the public domain. Here, Getty picks up on the late Justice Antonin Scalia's discussion of attribution and how the Lanham Act applies to "the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept or communication embodied in those goods."

Applying this, Getty asserts that the lawsuit is seeking "to protect not the producer of the copies of the Photos at issue — under Dastar, Getty Images is the producer of those copies — but rather the author of the Photos, Plaintiff Highsmith."

Here's Getty's full memorandum.

How the judges in these cases rule will likely impact future controversies by spelling out when challengers — whether they be the original authors, ones making derivatives or those looking to use material free of threat — can take action over the use or misuse of public domain material.

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