Net Neutrality, CLE, Blurred Lines, and Recent Events

Your Action Needed to Restore Net Neutrality

Senator Ed Markey introduced a Congressional Review Act resolution in the Senate, and Representatives Nancy Pelosi and Mike Doyle have introduced a CRA resolution in the House of Representatives that would restore net neutrality.  We encourage you to check out these web pages for CNNPublic Knowledge and Fight for the Future for further explanation of the resolution and information on steps you can take to tell Congress you support the use of the CRA resolution to restore net neutrality.



Highlights from IIPSJ's 15th Annual IP and Social Justice CLE Program at the Howard University School of Law

Check out our website for highlights from this year's CLE program.  We take a look back at 15 years of providing CLE programming on IP and Social Justice, as well as provide a summary of the event and some of the panels including student reporting on various panels available at the specified links



Update on Blurred Lines

As reported last month, the Ninth Circuit affirmed the jury verdict in favor of Marvin Gaye's Estate. As this blog post by author and creator David Newhoff demonstrates, the debates in the music world are far from over.  Check out this blog post by David Newhoff, Blurred Lines in More Ways Than One - Part III.

"As mentioned in Part II, I didn’t expect to write several posts about this litigation, but it turns out that “Blurred Lines” (Williams v. Gaye) raises several copyright issues—doctrinal, cultural, and historical—worthy of consideration and not easily condensed into a single article. In the first post, I alluded to an editorial written in 2015 by scholars Lateef Mtima and Sean O’Connor supporting the outcome in Williams from a historical perspective, asserting that traditional means of registering works and identifying infringement disfavored artists of color."  Click the link in the title to read more.


IIPSJ Community IP Education and Outreach

On April 19, 2018, IIPSJ co-sponsored the community IP Education program  “Respecting IP: What Aspiring Innovators and Entrepreneurs Should Know” which was hosted by the Washington D.C. Chapter of Young African Professionals (YAP). The program keynote was given by Karen Temple, Acting Register of Copyrights and panellists included Prof. Mtima, Mariessa Terrell, and Adia Burriss Coleman.  For more information, visit




Thursday, April 26 was World IP Day.  This year's theme was: Powering change: Women in innovation and creativity.  More information on this year's celebration can be found on WIPO's website.


For Graffiti Artists, Musicians, Small Business Owners, and more

This month's newsletter includes links to information on:
-  Copyrights and graffiti artists;
-  IP legal clinics (free & low-cost legal services);
-  Update on the Blurred Lines litigation and the impact on
Marvin Gaye's estate and other African American artists; and
-  IP resources for small business owners.


Copyright Claims for Graffiti Artists

In the article Graffiti: Copyrightable Art, Illegal Activity or Both? on the IP Watchdog website, author Katie Scholz discusses copyright claims for use of graffiti art without the artist's permission.


Copyright Claims for Graffiti Artists

In the article Graffiti: Copyrightable Art, Illegal Activity or Both? on the IP Watchdog website, author Katie Scholz discusses copyright claims for use of graffiti art without the artist's permission.



A Deep Dive on Legal Clinics in the Field of IP Law

Professors and IP Law Clinic Directors Cynthia Dahl and Victoria Phillips have written a research paper detailing the increasing need for and role of legal clinics in the field of IP.  You can download their paper, Innovation & Tradition: A Survey of Intellectual Property & Technology Legal Clinics here.

And check out the Legal Services page under the Resources tab on our website for a list of some of the programs providing pro bono services in the field of IP.



Blurred Lines Decision a Social Justice Win?

Professors Sean O'Connor, Lateef Mtima, and Steven Jamar have written the op-ed, 'Blurred Lines' Ruling Brings Justice to Composers Like Marvin Gayewhich was published in The Seattle Times.  In it, they explain why the decision advances social justice for songwriters that are aural composers and don't use European-based sheet music.  Check out the article for the full discussion.

If you would like to read a more in-depth analysis of the jury verdict and the trial court's decision (affirmed by the Ninth Circuit) and the social justice implications, take a look at the IIPSJ Scholarship page which includes the 2015 Mtima article The Blurred Lines Controversy: Attaining IP Social Justice for African American Composers.


Small Business IP Resources

-  World Intellectual Property Organization's practical guide on trademarks for small and medium-sized businesses.

-  The U.S. Small Business Administration has a variety of online courses for small business owners including courses on IP.  To start, check out their video Patents, Trademarks, and Copyrights.

Blurred Lines Decision a Social Justice Win?

Blurred Lines’ ruling brings justice to composers like Marvin Gaye

In mid-March, a federal appellate court correctly affirmed the 2015 verdict against Robin Thicke and Pharrell Williams, finding their 2013 “Blurred Lines” hit infringed on Marvin Gaye’s seminal “Got To Give It Up.”



Unhappy with the result, Thicke and Williams have just requested a rehearing of the case. They are likely bolstered by critics who claim composers will be stifled and fearful because of the ruling. But the sky is not falling: The creation of new music can proceed as it always has before.

In fact, the ruling may clarify the scope of musical works, by endorsing audio recordings as evidence of the compositions of “aural” composers who do not use European-based sheet music. This advances social justice for songwriters from disadvantaged backgrounds who were exploited under earlier copyright registration rules and fosters the creation of original compositions going forward.

Our litigation system, contested facts are usually sent to the jury. A judge will decide copyright infringement as a matter of law only where there is a complete absence of credible evidence on one side. In the “Blurred Lines” case, expert musicologists for both sides presented reasonable evidence. Consequently, the trial court rightly submitted this factual dispute for the jury to decide, and the appellate court affirmed that decision.

All parties agree that neither musical style nor musical genre is protected by copyright. Style and genre are abstractions that identify the kinds of musical elements repeatedly used by a composer (style) or by composers in a particular musical field (genre). As abstractions or ideas, they are not copyrightable. Groove is not an abstraction, but rather the particular rhythm instrument parts of a composition taken together. As with any other specific and original composed parts, or particular original combination of parts, a groove can be protectable.

The Gayes’ experts identified particular expressions of both (1) individual elements, such as an original bass line and vocal melodies, and (2) a compilation of musical elements. They also opined that these elements had been copied by Williams and Thicke.

The Thicke parties retained their own experts who disagreed. Because of the importance of observing witnesses and experts firsthand in making decisions about credibility, appellate courts normally defer to jury verdicts absent fatal procedural errors. It is not a judge’s role to second-guess evidence properly presented by a party. The underlying rules of law and procedure have not been changed by the “Blurred Lines” decisions. Indeed, the decisions are examples of those rules being applied in a straightforward fashion.

But something else may have changed for the better. Gaye, like many iconic 20th-century pop composers, was not fluent in European-based sheet music notation. The copyright registration system of the time required “aural” composers (those composing by ear) such as Gaye to submit written notation. Music publishers had employees score a bare-bones interpretation of the composer’s actual song, which might not contain all of its parts, as a placeholder for the full composition.

Multitrack recording technologies allowed aural composers to “score” and arrange their songs on tape. Actual recordings are the best evidence of the full scope of the composition. The year after Gaye composed “Got to Give It Up” in the recording studio, the U.S. Copyright Office changed its rules and allowed the deposit of audio recordings of musical compositions for copyright purposes.

In an amicus brief to the appellate court, we argued that courts should allow such recordings as evidence of the full scope of aural composer’s works. The appellate court noted this and stated that trial courts could address the use of this evidence. Going forward, justice may finally be done for aural composers who have been systematically exploited by the system.

Copyright Claims for Graffiti Artists

Graffiti: Copyrightable Art, Illegal Activity, or Both?

Graffiti on buildings, in alleys, and on trains – sometimes signed, sometimes anonymous, and usually unwanted by the property owner.  However, often these creations are both beautiful and edgy. A perfect match for marketing clothing whose image so desperately wants to align!  Many brands attract customers based on advertising themselves as street-savvy and edgy.  And, while many graffiti artists often do not seek attribution, for obvious legal reasons, that does not necessarily mean that their artwork is free to use by others.

In recent years, the issue of unauthorized use of graffiti in advertising has bubbled up frequently.  In 2014, David Anasagasti, a well-known street artist in Miami, sued American Eagle for copyright infringement, alleging unauthorized use of his signature “droopy eyes” in their advertisements.  American Eagle used the imagery on their website, as part of their social media presence, as well as in-store displays globally.  The case ended in a private settlement.

In the same year, the Italian brand Roberto Cavalli was sued by a group of graffiti artists from California for allegedly using their artwork on the Just Cavalli line of clothing.

The most recent case sparking off a fresh round of discussion on the topic involves H&M, who received a cease and desist letter from Jason “Revok” Williams, over the use of a mural he created in Brooklyn in their ads. In response, H&M filed a lawsuit asking the court to declare that Williams had no copyright to assert because his art was a criminal act.  Possibly due to pressure from street artists’ and supporters’ calls for a boycott, H&M withdrew the lawsuit in March 2018.

Does Copyright Protect Graffiti?

United States Copyright law, as stated in 17 U.S.C. §102(a) states that copyright protection subsists “in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Copyright protection is derived from the US Constitution, specifically Article 1, Section 8, Clause 8, which states “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

Another recent case, 5pointz, turned on the Visual Artists Rights Act (VARA) protection granted to artists of authorized works. While street art, the murals at issue were there with the permission of the property owner.  This case was a little different in that, the artists had permission to create their murals, with a verbal warning that it could be destroyed at any time.  While that case found in favour of the artists, the decision may have had more to do with the “willful” destruction of the street art without sufficient warning to the artist.

VARA, enacted in 1990, recognized the moral rights of artists to their visual works of arts. Codified in 17 U.S.C. § 106A, VARA grants authors of visual work additional rights regarding attribution of the visual art.  Specifically, the moral rights of artists of VARA-protected works must be disclaimed, in writing, which did not occur in the 5pointz case.

What does this mean going forward?

Many of the defendants in recent copyright infringement cases involving graffiti have been slow to respond to why they did not simply ask for permission.  Some, like H&M, may have been hoping to rely on the defence that unauthorized graffiti is un-copyrightable because it is not legal.  Others may have been unable to contact the original artist or assumed they would not take action to protect their intellectual property.

Additionally, property owners, such as those in the 5Pointz case, should not assume that they have the right to destroy or mutilate artwork without obtaining required permits, permission from the artists, or by obtaining a VARA waiver in advance.

Getting a federal court decision stating that graffiti is protected by copyright could have some interesting implications.  It will certainly increase the likelihood that retail companies will do additional due diligence to clear the use of graffiti in advertising or, alternatively, not use unauthorized graffiti at all.  Additionally, while H&M’s production agency did contact the New York City Parks and Recreation Department for permission, the inability to find an author may not be enough to protect against an infringement allegation in the future.

Likely, some types of commercial use will still be allowed – currently, for architectural and visual works the exceptions of Fair Use and Incidental Use apply to accusations of infringement.  For example, the recent Gayle v. Home Box Office, 17-CV-5867 (SDNY May 1, 2018) dismissed an alleged copyright infringement case concerning a shot of graffiti on a dumpster that appeared in the HBO series Vinyl.  Interestingly, the court in Gayle did not directly address the question whether graffiti was generally protected by copyright.  Instead, the court ruled that the graffiti in question was “never fully visible, let alone legible” and was, therefore, de minimus.

However, commercial users – such as retailers, film studios, etc. – will need to be careful to ensure that, if graffiti features prominently in the commercial use, permission is obtained.  Otherwise, a lawsuit could follow.  And, while all of the lawsuits involving graffiti have settled to date, it may not be cheap to do so.

So, while existing graffiti may indeed provide a tempting edge for a new marketing campaign, or as the backdrop for a great commercial, companies will need to decide if it is worth the legal or public relations risk.  If the original graffiti artist cannot be found or is unwilling to allow their art to be used, it may end up being less expensive to start from scratch than to manage the fallout from an allegation of stolen artwork, damaged reputation, and a lawyer for the lawsuit that follows.

Update on Blurred Lines

Blurred Lines in More Ways Than One – Part III

‘As mentioned in Part II, I didn’t expect to write several posts about this litigation, but it turns out that “Blurred Lines” (Williams v. Gaye) raises several copyright issues—doctrinal, cultural, and historical—worthy of consideration and not easily condensed into a single article. In the first post, I alluded to an editorial written in 2015 by scholars Lateef Mtima and Sean O’Connor supporting the outcome in Williams from a historical perspective, asserting that traditional means of registering works and identifying infringement disfavored artists of color.

Citing this OpEd drew some criticism from a few readers, particularly musicians, who noted that people of color comprised two-thirds of the authors of “Blurred Lines” and that the Mtima/O’Connor opinion seems to be a matter of looking for a problem that doesn’t exist, comparable to often-overwrought and ahistorical complaints about “cultural appropriation.” But discussions about cultural cross-pollination in the art are largely separate from the issues these scholars are raising about copyright law. Still, for context, we must acknowledge that a vast amount of American popular music in the 20th century—jazz, blues, rock, funk, soul, R&B, rap, etc.—is more deeply rooted in African-American traditions than Euro-American traditions.

The amicus brief Mtima and O’Connor wrote with colleague Steven D. Jamar was submitted to the Ninth Circuit in 2016 on behalf of the Institute for Intellectual Property and Social Justice. It argues for affirming the jury’s verdict in Williams, concurring in part and dissenting in part with regard to the evidence admitted at trial. Although the jury arrived at the opinion favored by the brief’s authors, the reasons why Gaye’s sound recording was not admitted as evidence points to the fact that “Got To Give It Up” is among thousands of musical works that happen to fall within an abstruse window in copyright history that, the authors argue, especially disfavored artists of color. For concision, I’ll refer to the amicus brief as the IPSJ Brief, which states …

“For reasons not fully known and not linked to any further change in the statute, at some point (in the 1930s we believe) the Copyright Office began requiring written notation deposits, before again allowing deposits of phonorecordings for musical compositions beginning in the 1980s, and again not linked to statutory changes.”

Like many artists who did not receive formal training, least of all in European staff notation, Marvin Gaye composed by getting the music that was inside him to come out through the instruments and the players and then record the finished sounds in the studio. Many composers—regardless of race or culture—work this way today, of course, and their sound recordings are both valid for copyright registration and as evidence in a prospective infringement litigation.

But Gaye’s 1977 hit was subject to the 1909 Copyright Act, and it predated the apparently inscrutable shift in USCO policy that finally allowed sound recordings as registration deposit copies in the 1980s. Although the IPSJ Brief cannot fully explain a rationale for the fifty-year period when only written-notation scores were accepted for deposit (e.g. the statute did not mandate this), the brief’s authors do allude to lingering, judicial ambiguity stemming from White-Smith v. Apollo, which held in 1908 that piano rolls were not copies of compositions because they were not readable by humans.

Had that ruling gone the other way, it might have set a precedent for accepting sound recordings as deposit copies much earlier in the 20th century. And although SCOTUS held that sound recordings are, constitutionally, “writings” in Goldstein v. California in 1973, there is apparently no clear explanation as to why the Copyright Office did not amend its deposit requirements for musical works for nearly another decade.

As a matter of social justice, and in the service of demanding that copyright must empower the broadest diversity of authors, the IPSJ Brief asserts that the seemingly arbitrary emphasis on written notation between the 1930s and the 1980s was especially harmful to artists of color, who composed almost exclusively in aural traditions. Certainly, it is hard to miss the fact that this period encompasses the span of time when certain styles of black music sneaked into the mainstream via white artists beginning in the 1950s and slowly gained wider acceptance as black music by black artists through the 1960s and 70s.

Partly because written-notation scores were required as registration deposit copies, composers like Gaye relied on other parties to transpose their sound recordings into musical notation. This practice led to two recurring problems, according to the IPSJ Brief: 1) the scores did not always adequately represent the compositions; and 2) unscrupulous managers, label owners, et al sometimes exploited the opportunity to falsely assert co-authorship of the compositions. The brief states …

“The Copyright Office should have accepted phone recordings as registration deposits throughout the entire period in which the 1909 Act was in effect. Neither Gaye nor other composers should today be penalized by restricting evidence of their compositions to a stripped-down lead sheet deposit created to comply with an extra-statutory administrative practice, especially where that deposit does not match the work composed by the author in the studio.”

In the “Blurred Lines” case, the jury was not allowed to compare the two sound recordings but was allowed to consider the “lead sheets” and expert testimony by musicologists. As the IPSJ Brief explains, lead sheets are somewhat rudimentary versions of musical scores that are generally of use only to professional musicians, who can interpolate what’s not on the page and play the song (by ear or from memory) the way the composer meant for it to be played. To get an idea of the difference, I’ll borrow a reference cited in the Brief and direct you to the page for “Got To Give It Up,” where you can play a computer’s interpretation of the score and decide how much those lifeless and literal beeps and bloops sound like the Marvin Gaye song you know.

The IPSJ Brief asserts that only the sound recording correctly represents the originality (ergo the protectable aspects) in Marvin Gaye’s composition—and that the same is true for thousands of compositions made by artists, who worked in aural traditions rather than standard notation during the rough half-century at issue. Thus, the brief’s authors support the evidence presented by the Gayes’ musicologists, asserting that these experts correctly identified the protectable elements in the work, giving the jury fact-based reason to find infringement. Nevertheless, the authors remain critical of the fact that the sound recording of “Got To Give It Up” was not admitted into evidence.

The IPSJ Brief also argues that the outcome in Williams does not, as many fear, “copyright musical style.” To the contrary, the authors assert that the lines separating “style” (idea) from “originality” (expression) have instead been too often drawn incorrectly due to bias tilting toward certain musical traditions. In practical terms, this means that a composer like Gaye can arrange a dozen unprotectable ideas in a manner that is uniquely expressive, and this can only be analyzed in context to his studio-based process rather than on paper alone.

Whether or not one agrees with this analysis—or with the jury in Williams—Mtima, O’Connor, and Jamar offer an intriguing discussion about copyright history and practice during one of the most prolific, experimental, and culture-shattering periods in Western music. As much as it would be absurd to overlook American musicians of color between the 1930s and 1980s, it seems likewise inappropriate to ignore this aspect of the “Blurred Lines” case rather than to view it in tandem with the subjects of infringement doctrine, case law, and circuit court splits that this litigation has inspired other scholars to address.

IP Community Outreach, Education, and Pro Bono legal support

Recent E-Mail Update

This month our focus is on IP Community Outreach, Education, and Pro Bono legal support. IIPSJ is involved in various new initiatives to promote IP Empowerment and entrepreneurship in marginalized communities which we thought you might find of interest.

The Lawyers’ Committee for Civil Rights: Creative Control

This Fall the Lawyers’ Committee for Civil Rights will launch Creative Control – an initiative which will examine how intellectual property law and policy impacts historically marginalized communities and will provide pro bono IP legal support to community creators and innovators. The goal of Creative Control is to educate community creators and innovators as to the importance of IP rights and protections, to empower online expression, and to provide one-on-one free legal advice from IP attorneys.

LCCR hosted a soft launch of Creative Control at Smith Commons on July 25, 2017, at which more than 70 community creators joined IP experts for discussions on IP protection and how IP law and policy impact creators. In addition, LCCR collaborated with lawyers from the Hogan Lovells law firm to provide one-on-one legal sessions for 22 DC community creators.

IIPSJ Director Professor Lateef Mtima participated in the July soft launch of Creative Control – here’s a link to a sixty-second montage of the launch which highlights the diversity of the attendees and the legal and creative talent showcased during the event:

The official launch this Fall will also include the release of the LCCR  white paper, know your (IP) rights primer and the commencement of the pro bono IP legal clinic component.

IP Pro Bono Clinic Database

We have recently updated our website to add a growing list of IP legal clinics and other resources for low or no cost legal services.

Other Topic of Interest

Recently, a federal district court judge struck down part of the copyright for the song “We Shall Overcome”.  The song is of unknown origin and was particularly popular during the civil rights era.  The copyright was held by several songwriters, including Pete Seeger, since the 1960’s for changes to the original melody and some of the wording.  Part of the royalties from the copyright is used for social and cultural programs in the South.

You can read more in the New York Times article “'We Shall Overcome’ Verse Not Under Copyright, Judge Rules” or listen to a music news segment on National Public Radio “Federal Judge Rules First Verse Of 'We Shall Overcome' Public Domain.”

Follow-up on Net Neutrality – Last month we discussed the FCC rulemaking on Net Neutrality.  We appreciate the many comments and questions we received in connection with our distribution on net neutrality, we thought you might be interested in formal comments file by National Hispanic Media Coalition regarding the social justice implications.  You can find the full comments here and a summary here.