With the rise of social distancing and stay-at-home orders, the demand for online content has increased exponentially. Given this new reality, online content creators must take steps to ensure that their online creations don’t land them in legal hot water. One of the most prevalent cross-industry issues is music licensing. Music is everywhere in online content and often plays an integral part in the overall experience. From video game players streaming music as they show off their skills on the largest video platforms to fitness instructors using popular music to pump up their workout classes, individuals and companies must ensure that they don’t run afoul of the copyright laws when they incorporate music into their online content.

Copyright owners are granted an exclusive bundle of rights in relation to their copyrighted works, including the exclusive rights to reproduce, perform publicly, and distribute their copyrighted works.1 The copyright in music is broken down into two separate rights—one for the music’s composition (i.e., music and lyrics) and one for the actual sound recording (i.e., a fixed performance). Because of these dual rights, using copyrighted music may require two different licenses.

Whenever you release a video with a song that someone else wrote and composed, you need a synchronization (sync) license. For example, if you release a video of your band playing an Incubus song, you need a sync license to use the music and lyrics of that song, even if it’s a small portion of the song. You do not, however, need a sync license for songs that you wrote and composed yourself or songs in the public domain, so you’re free to use the song “Danny Boy” in your next YouTube video. But if you use a copyrighted sound recording in your video, you will need a sync license for the composition and a master use license for the original recording. Again, this applies even if you’re using a small portion of the original sound recording. Master use licenses are negotiated with a song’s owner—typically, a record label or the recording artist. Sync licenses and master use licenses are separate and distinct from public performance and personal entertainment licenses, which are not covered in this article. For a broader look at music licensing, please read this companion article. The following examples and best practices illustrate and address the challenges associated with using music in online content.


Continue Reading Legal Implications of Syncing Copyrighted Music with Other Content

The perfect addition to any project is music. Whether you are making a video advertisement for your product; including music in your posts on your company website, TikTok, or YouTube; posting an at-home workout video for your clients; using music at corporate events; or playing music at your bar or restaurant – music is a vital part of society. Music is also the most common reason your content may be muted or taken down from social media, in addition to being exposed to potential liability for copyright infringement and related monetary damages. When you use someone’s music without their permission, absent a few extremely limited exceptions, you are infringing on their copyright.1

For the vast majority of music uses, you will first need to obtain permission. In this article, we lay out some fundamentals to assist in determining the type of license an average company would need and some potential alternatives. Bottom line: when you are planning and budgeting for music in a project, make sure you get the proper rights and permissions in place before pressing “Play.”


Continue Reading Conducting Your Way Through Music Licensing: The Most Common Issues

In a victory for plaintiffs bringing Lanham Act claims to protect their trademarks, the Supreme Court held on April 23, 2020, that a plaintiff is not required to show that the defendant “willfully” infringed its trademark in order to recover the defendant’s ill-gotten profits under the Act. The ruling favors Lanham Act false advertising plaintiffs as well.

In Romag Fasteners, Inc. v. Fossil, Inc., 140 S. Ct. 1492 (2020), Romag and Fossil signed an agreement allowing Fossil to use Romag’s fasteners in Fossil’s handbags and other products. Romag later discovered that the production factories Fossil hired in China were using counterfeit Romag fasteners while Fossil did little to stop them. Romag alleged that Fossil infringed on Romag’s trademark rights and falsely represented that Fossil’s fasteners came from Romag. The jury agreed and found that Fossil had acted “in callous disregard” of Romag’s rights. However, the jury also found that Fossil did not act willfully. Relying on Second Circuit precedent requiring a plaintiff seeking profits to prove that the defendant’s infringement was willful, the district court ruled that Romag could not recover Fossil’s profits. After the Federal Circuit affirmed, the Supreme Court agreed to resolve the circuit split on this issue.


Continue Reading Supreme Court’s Lanham Act Ruling Paves Easier Path to Profits for False Advertising Plaintiffs

Have you renewed your DMCA Designated Agent designation with the Copyright Office yet? (If you are unfamiliar with a DMCA Designated Agent, read below for an explanation.) Any company that may have previously qualified for the safe harbor from liability for copyright infringement under Section 512 of the DMCA will lose any ability to claim this safe harbor if the company does not renew its designation of agent within three years of the last online filing (or amendment), assuming you did this correctly between December 1, 2016 and December 31, 2017.

In late 2016, the Copyright Office issued a rule that everyone needed to file new online Digital Millennium Copyright Act “DMCA” agent designations between December 1, 2016 and December 31, 2017. Any DMCA agent designations that were filed at the Copyright Office prior to December 31, 2016 expired on December 31, 2017 if not renewed online. If you did not file any new DMCA agent designation online between December 1, 2016 and December 31, 2017, then your designation has expired and your company would not qualify for the safe harbor under the DMCA. If applicable to you, your company should file one immediately and hope that you had no copyright liability exposure during the intervening time.

If you did file a new online designation of your DMCA agent between December 1, 2016 and December 31, 2017, then you are required to file a renewal within three years of the date you filed your original online designation (unless you already amended in the meantime, in which case your three-year clock runs again from the date you amended it). This means that many companies have these renewals due between December 1, 2019 and December 31, 2020, depending on when they filed the original online designation. Simply put, if you filed your online designation of agent December 15, 2016, then your renewal is due no later than December 15, 2019. If filed your designation of agent December 15, 2016, but then amended your online designation in the meantime on January 1, 2018, then your renewal is not due until January 1, 2021.


Continue Reading ‘Tis the Season: Make Certain That You Renew Your DMCA Designated Agent with The US Copyright Office or Say Goodbye to Your Potential Safe Harbor from Copyright Liability

Lettuce Turnip the Beet: When puns are “functional”

In LTTB LLC v. Redbubble, Inc., plaintiff LTTB, an online apparel company, contended its success was “largely due to public fascination with its Lettuce Turnip the Beet trademark,” and alleged that defendant Redbubble’s sale of products featuring the phrase “Lettuce Turnip the Beet” infringed its mark, 18-cv-00509-RS. Redbubble, an online marketplace selling products made by independent artists, argued that LTTB was not entitled to preclude others from using the “Lettuce Turnip the Beet” pun absent any evidence of source confusion. On July 12, 2019, the Northern District of California issued its decision granting summary judgment in favor of defendant Redbubble, finding that LTTB did not have an exclusive right to sell products displaying the pun “Lettuce Turnip the Beet,” and that LTTB therefore did not have a viable trademark infringement claim.

The court’s decision turned on its application of the “aesthetic functionality doctrine,” a controversial trademark law principle unevenly applied by federal courts. See McCarthy on Trademarks and Unfair Competition § 7:80 (5th ed.). Under the aesthetic functionality doctrine, when goods are bought largely for their aesthetic value, their features may be functional – if a feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright. See Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952). The issue in LTTB was whether LTTB had a viable infringement claim where the alleged infringing products merely displayed the pun “Lettuce Turnip the Beet” and did not otherwise include any indication that they were produced by LTTB. In other words, was the pun “Lettuce Turnip the Beet” a functional feature permitting imitation? The LTTB court explained that while the Ninth Circuit’s modern application of the “aesthetic functionality” doctrine has been more limited, the circumstances of the LTTB case “undeniably” called for the application of the aesthetic functionality doctrine.


Continue Reading We Got The Beet: Trademark Claims and Puns

Amazon has just announced Project Zero to potentially assist brand owners in combatting counterfeit goods by removing products likely to be fake from the online retailer’s platform. Project Zero would allow brand owners to designate product listings for removal, instead of undergoing Amazon’s prior reporting and removal process, which required brand owners to report counterfeit

questionsBusinesses often have a need to make use of photographs as decorative art, for illustration, in connection with programs, events, or seminars, or for other purposes. For photographs not created by the respective business, the question arises whether photos from other sources can be used without first obtaining a license. The general answer is no.

digital copyright displayDoes your business or publication link or embed copyrighted content on your website or social media? If you routinely do the latter, a recent decision in the U.S. District Court for the Southern District of New York suggests that the tide is turning to the former.

Although this holding is merely persuasive outside of the Southern District of New York, there is a possibility that other districts could adopt the same reasoning, finding businesses liable for violating a copyright holder’s right of display by embedding content from third-party servers.


Continue Reading Embed at Your Own Risk, Says a New York Federal Court: Embedding Copyrighted Images on Your Website and Social Media May Lead to Charges of Copyright Infringement

It looks like the Vegas Golden Knights will need their own parachute, in the form of a strong trademark attorney, to escape potential brand free-fall. While U.S. government agencies have not always been the most effective in policing trademark rights, it appears the Vegas hockey team is now in their sights.

Earlier this month, the United States Army instituted trademark oppositions against two applications filed by the Las Vegas Golden Knights hockey team. The Army is alleging likelihood of confusion with the brand of its Golden Knights parachute demonstration team, as well as dilution and false suggestion of a connection.

The opposition is the culmination of a dispute that started with the unveiling of the NHL expansion team’s name in November 2016. At that time, the Army indicated it was evaluating the name for potential likelihood of confusion concerns; however, the NHL Golden Knights dived into their first season without changing the name.


Continue Reading Vegas Golden Knights Brand in Free-Fall?

playing with VelcroWant to be a trademark lawyer? Well, you might need to have a creative streak.

In recent weeks, at least two major brands have used attention-grabbing strategies to protect their trademarks while raising awareness about the unauthorized use of their intellectual property. And these efforts are generating more than a little buzz.

The Velcro Companies released a video, “Don’t Say Velcro,” in which an ensemble of dancing, singing trademark attorneys implores consumers not to use the Velcro brand’s name as a generic noun or verb to describe a product with “hook and loop” fasteners, or those “scratchy, hairy fasteners” that you find on Velcro shoes, gloves, and wallets. The video, which features mostly actors, but a few real lawyers, is part of a larger campaign designed to educate consumers about the brand and the proper use of its name.


Continue Reading Trademark Law Gets Creative