Category Archives: film law

Is a notice terminating a license to use a copyrighted composition sufficient to establish willful copyright infringement?

In a recent decision, the United States District Court for the Southern District of New York held that evidence that a record company continued to sell records containing copyrighted compositions after receiving a notice terminating its compulsory licenses for failure to pay the required statutory royalties was sufficient to establish that the infringement was willful. EMI Entertainment World, Inc. v. Karen Records, Inc.  2011 WL 3795037, 1 (S.D.N.Y.,2011).

Plaintiff, EMI Entertainment World, Inc. is a music publisher and owns copyrights in the four musical compositions at issue in this case. EMI receives royalty payments for its compositions through Harry Fox Agency. Defendants are record companies owned by individual defendants Isabel Rodriguez and her husband Bienvenido Rodriguez. On Janurary 14, 2005, EMI filed a lawsuit for copyright infringement against the record company. Following discover, the Court granted partial summary judgment to EMI with respect to its claims of copyright infringement of the works for which royalty was not paid. However, the Court denied summary judgment to EMI for its claims for statutory damages for willful infringement. The Court requested the parties to submit supplemental evidence indicating the number of infringing sales that occurred during the time period for which damages were sought.

A plaintiff who successfully proves copyright infringement may request the court to award statutory damages under 17 U.S.C. §504(c) in addition to the award of actual damages and profits. “The Copyright Act affords a trial court ‘wide discretion … in setting the amount of statutory damages.’” Id at 2. In determining this amount, the trial court takes into account ‘the expenses saved and the profits reaped by the infringers’; ‘the revenues lost by the plaintiff’; ‘the value of the copyright’; ‘the potential for discouraging the defendant’ and ‘the deterrent effect on other besides the defendant.’ Id. In addition to these factors, it is also relevant to determine whether the defendants conduct was willful or innocent. To prove willful infringement under the Copyright Act, the plaintiff must show that the:

(1) Defendant was actually aware of the infringing activity; or

(2) Defendant’s actions were the result of the reckless disregard for, or willful blindness to, the copyright holder’s rights. Id. at 3.

In this case, EMI advanced three reasons for the Defendant’s willful infringement:

(1) The individual defendants had extensive experience in the industry who owned ‘more than six hundred copyrighted sound recordings and musical compositions’. Id. at 4.

(2) EMI’s prior suit against the Defendant’s with respect to other copyrights made the Defendant’s ‘well aware of the obligations to obtain mechanical licenses and pay statutory license fees for the use of others’ musical compositions.’ Id at 5.

(3) EMI’s letter to the Defendant’s put them on notice about the termination of its compulsory licenses for failure to pay the required statutory royalties. Id.

The Court held that EMI presented a strong circumstantial evidence of willfulness which warranted an award of enhanced statutory damages. The Court awarded EMI $25,000 in statutory damages for infringement of each composition.


© 2011 Nissenbaum Law Group, LLC

Will the Use of Common Elements and Themes Leave Filmmakers Susceptible to Copyright Infringement Suits?

Tales of drug-dealing, jail time and growing up in the ghetto are too common to be considered original elements of a copyrighted work.

The United States District Court for the District of New Jersey recently granted hip-hop artist 50 Cent’s motion to dismiss a suit brought by a plaintiff who sued the rapper for copyright infringement. Winstead v. Jackson, 2011 U.S. Dist. LEXIS 107560 (D.N.J. 2011).

The plaintiff, Shadrach Winstead (“Winstead”), claimed that 50 Cent (also known as Curtis Jackson) (“Jackson”) used words and plot themes from Winstead’s copyrighted autobiography “Preacher’s Son – But the Streets Turned Me Into a Gangster” (the “book”) in a CD/DVD set produced by Jackson in 2009. Winstead asserted that several elements from the autobiography – including jail time for the main characters, committing crimes for money, and the death of a parent – were also present in Jackson’s production “Before I Self-Destruct” (the “film”). Winstead also claimed that portions of dialogue were taken from his book and used in the script of the film.

Jackson filed a motion to dismiss the suit, arguing that Winstead failed to state a claim upon which relief can be granted. The Court granted Jackson’s motion, determining that the elements that Winstead argued he had copyright protection over were so common that they could not be considered copyrighted material. The decision relied on a copyright law doctrine known as “scenes a faire” which essentially means that there are certain elements to a work that are not protected by copyright since they are essential to express the character of the work itself.

To establish a claim of copyright infringement, a plaintiff must establish:

  1. ownership of a valid copyright; and
  2. unauthorized copying of original elements of the plaintiff’s work.”

Dun & Bradstreet Software Servs. v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d. Cir. 2002).

Though Winstead was able to prove ownership of a valid copyright in his book, the Court found that he could not prove any copying of original elements from his work. “[G]eneral plot ideas and themes lie in the public domain and are not protected by copyright law,” the Court stated. Id. at 6. “In addition, all situations and incidents which flow naturally from a basic plot premise, known as scenes a faire, are not entitled to copyright protection.” Id.

While the Court acknowledged the similarities between the two works’ characters, themes and settings, it held that these common features have been part of the public domain for some time and have provided the themes for many films and television programs before. “[A]ny common themes of a young male whose tumultuous upbringing leads him to resort to a life of crime and violence in order to gain power and money are scenes a faire.” Id. at 7.

Winstead also argued that Jackson lifted dialogue from his book – including phrases such as “ringing,” “stash,” and “get the dope, cut the dope” – for use in the film. However, the Court also found this language too common to be the protected under Winstead’s copyright. “The average layman, who would be observing these phrases in the context of an overall story or song, would not regard these minute snippets as unique or protectable,” the Court held. Id. at 9.

The Court’s decision is significant because it demonstrates that there are limits to how much copyrighted material is protected. Winstead’s copyright protection over his book did not extend to plot themes and generic language used in it. The Court’s holding gives copyright holders an example of elements in the public domain that are not included within the scope of copyright protection.


© 2011 Nissenbaum Law Group, LLC