Ten Questions: Intellectual Property, Copyright, and Streaming Media

Elliot Zimmerman discusses IP issues facing content creators, owners, and publishers.

The questions surrounding intellectual property are too numerous and varied to be boiled down to a checklist the way we’ve done with other “Ten Questions” articles in this issue. Instead, we sat down with Elliot Zimmerman—a Florida-based entertainment attorney who has represented clients including Aretha Franklin and jazz pianist Ahmad Jamal and others in cases involving copyright and trademarks, and who now specializes in “cyberlaw” legal issues related to the internet—to learn a little bit more about IP issues facing content creators, owners, and publishers.

1. What’s the most important issue related to intellectual property for an online content publisher?

The first issue is who owns the content. The question of ownership is very technical. It’s a jigsaw puzzle. There are copyrights, trademarks, licenses, and all sorts of things that you need to consider first to make sure that you’re nice and safe.

Copyrights protect original works of authorship that are fixed in a tangible medium of expression. Trademark laws speak to what branding and names have become indicative of a particular service or product. In most situations, to work through this you’ll have to examine all the separate elements of what you’re about to stream.

When you’re talking about streaming video, things get especially complicated. You’ve got several separate elements to investigate, including text, art, music, video, photographs, trade and service marks, rights of publicity, and more. For example, if video is going to be synched with music and streamed over the internet, you’ll need a new-media license, a video-sync license, and the rights of publicity releases for those who appear in the file . . . and that’s just for starters.

Then you’ll need to think about copy protection and other demands made by licensees or owners of the product.

2. What’s the difference between an assignment, a work made for hire, and a license?

If you want ownership, you’ll either have to get an assignment or the work will have to be a work made for hire. If your job is to write copy or produce video and you are a salaried employee who works regular hours at your employer’s place of business and your employer withholds taxes and provides you with the tools of your trade, your works are probably made for hire and belong to the employer at creation. An assignment is where the creator of the work sells rights to another. Under U.S. copyright laws, after 35 years, an assignor can make legal moves to regain ownership. That’s not so with a work made for hire.

If you don’t own the content, you need to find out who does! Also, find out what licensing you need for your intended use, and you need to know what it is you’re licensing. Not only the licensor, but the licensee better be sure as to what he’s getting. As a licensee you want to get as much permission from the licensor as possible.

3. Why should I care so much about getting these ownership issues resolved?

It’s something the person should not take lightly, especially since the Copyright Act has such horrible consequences. You can get sued for up to $30,000 for each instance of infringement. It could even be innocent infringement. If you play someone else’s work without permission or license, if you don’t have ownership and someone else does, you’re in trouble whether you did it intentionally or not. That doesn’t mean you’re automatically down $30,000, but even if the owners don’t go for actual damages or profits, they can go for statutory damages, which can be anywhere from $750 to $30,000 per count. If it’s willful, it can go up to $150,000 per count, plus attorney’s fees.

Aside from the civil there are also criminal penalties, including jail time for those people who do certain criminal acts. Once in a while infringing conduct can turn criminal. Pirating is a criminal offense. There are state and federal laws regarding intellectual property. The Copyright Act has criminal penalties. State laws also have criminal penalties.

4. When am I liable for infringement?

Even if you run a blog site and someone uploads copyrighted material to it and you haven’t made certain filings with the U.S. Copyright Office for safe harbor, you’re in trouble. If you’re an online service provider (OSP), and one of your users posts an illegal MP3, and you basically have no knowledge of it, but it’s in a cache and it’s found on your machine, you have exposure to $30,000 that you could have avoided had you first consulted with a learned attorney. Even if you didn't know, you’re liable for innocent infringement, unless you filed for safe harbor. If you knew, it gets worse.

5. How do sites like YouTube get away with it?

When their users sign on, they swear to all that is holy that they own this stuff, and they control the rights. If you read the YouTube terms of use, when you take a look at that document, you give everything except your mother’s underwear, usually some kind of perpetual nonexclusive royalty-free license. In some of these agreements you agree to indemnify them.

Sitting on top of that, Congress, in all its wisdom, said, “You know, no one will ever exchange information if you’ve got to check everything out so thoroughly. So, if you are an OSP that filed for safe harbor and get a notice that someone has posted infringing material on your site, if you take the infringing material off your site, you’re protected.” The term “OSP” has not been fully litigated so just who qualifies is questionable. Whether an OSP is the telephone company, the cable company, the hosting company, and/or the website owner has yet to be defined. How far down the chain the safe harbor goes we don’t quite know yet.

6. What about linking to videos?

What has been uniformly held to be legal is, if the site you’re linking to says it’s OK to link to them, then you can index their site and provide a link that brings up the linked web page as long as it’s not grouped within your framing so that you can’t tell where the source of the video is. Framing it inside your own stuff is impermissible, unless the (originating) site allows it, like YouTube. Indexing and then providing a link to the site as if it were a phonebook has been held permissible in several cases so long as you don’t make the link look like the content is yours.

7. How can I protect myself when I’m licensing content?

Let’s say you’re a media streamer and you want to have an instructional video on something or another. Somebody appears at your door. “Hi, I’m the production company.” “Oh, that’s wonderful. I need some content.” “I have this with these rights, and this with these rights.” Someone has to go through what contracts have been signed to be sure of what you’re buying, because no matter what is written and no matter who reviews it, there are always openings. That’s why we have copyright and trademark insurance. I would investigate insurance, because you’re never really safe. They’ll insure you against claims of copyright infringements and trademark infringement provided you do certain things. I wouldn’t start a streaming business without some insurance.

8. Why is this all so complicated?

A famous judge by the name of Benjamin N. Cardozo compared conduct to law as one would compare space and time—the theory of relativity. If you have two objects and one moves and the other moves identically, is there any movement between them? The answer is no, because they’re moving relatively the same to each other. Law and conduct should strive for that. Law is always racing to keep up with conduct as it changes.

If you go back to 1909, there was a gaping hole in the Copyright Act. For some reason, player-piano rolls were not mentioned in copyright laws. The Copyright Act didn’t quite catch up to that new technology. That’s what’s happening now. We’ve got the digital age of information. Conduct is changing rapidly. Technology is changing rapidly. And the law is struggling to make no movement from the governance of this conduct so it will not lose its grip on keeping those who would steal in check, or those who are not honoring the Constitution.

The Copyright Act is a piece of work. This act changes so much and the conduct changes so much that you may read a section from year to year and not find a similar word. Also, some passages are so technical, you might read the same wording 30 times and not fully understand them.

In fact, the Copyright Act has even been brought back from the dead! There was a way you could actually lose your copyright in the 1980s. (Some horrible things happened to foreign works and to works that were published without notice.) Some works that fell into the public domain were “resurrected” in the mid-1990s and restored to full Copyright status. Wow!

At one point, sound recordings were able to be commissioned works for hire. Four times in a three-year period, Congress changed its mind. (See 17 U.S.C. 101.) The foregoing section has been changed so much that Congress entered a blurb in the statute informing judges to make nothing of the fact that at one time certain works were allowed to be commissioned works made for hire, then not, then again, then not, and so on. Congress basically said, “Forget about what has gone before and don’t try to understand what we intended to do by making so many changes.“

9. How can I successfully navigate these thorny, complex issues of copyright and ownership?

I’d hire an attorney. I think it’s too complicated for somebody without experience to do it. Each individual project has its own set of parameters depending on what you own, what you don’t own, what you need to license, and what you need to license it for. Even the art of hiring someone to create things is an issue, whether it’s a work made for hire or not. The issue of ownership is tremendous.

I firmly believe that in the cyberworld of today, if you’re not an attorney versed in cyberlaw or cyber-entertainment law, that you’re going to have a problem doing it yourself, and I would not recommend it. An ounce of prevention is worth a pound of cure. It’s not what you know that’s going to hurt you. It’s what you don’t know.

10. What changes might there be in the future, especially as the world becomes a smaller place?
The world is coming to be a closer place as a result of the sharing of information over the internet. We have to think of our neighbors more when we fashion U.S. law, and they have to think more about us as well. Whether we’ll have a uniform act, I don’t know, but we are getting very close now to some general concepts that are true in a majority of the countries, and that’s the future because the internet truly is global. There are some universal truths that exist in copyright law. I do believe, though, that it’s only going to get better.