Case Digest : Agee v. Paramount Communications USCA, 2nd District, June 26, 1995

The Parties:

1. Plaintiff-appellant Michael L. Agee, a California resident, is proprietor of L & H Records, a music recording studio located in California.   Through L & H Records, Agee owns copyrights in two sound recordings, “Laurel and Hardy's Music Box” (“Music Box”) and “Laurel and Hardy's Music Box:  Volume II” (“Music Box-Two”).   Agee does not own the copyright in the musical compositions embodied in these sound recordings.

2. Defendant-appellee Paramount Communications, Inc. is a Delaware corporation whose principal place of business is California.  Defendants-appellees Paramount Pictures and Paramount Television Group are divisions of Paramount.   Paramount Pictures produces the daily, half-hour news magazine television program Hard Copy and transmits it to independently owned and operated television stations for broadcast nationwide.

Facts:

1. Paramount copied portions of three songs from Agee's “Music Box-Two,” entitled “Ku-Ku,” “Cops,” and “The Donkey's Ears,” to make the audio track of a four-minute segment of its Hard Copy feature called “Caught on Tape.”   After duplicating parts of the recording, Paramount created an audiovisual work that timed or “synchronized” portions of the duplicated recording to visual images showing two young men engaged in an unsuccessful burglary attempt.

 

2. Paramount recorded the “Caught on Tape” feature on February 15, 1993, and integrated it into the Hard Copy program for satellite transmission to the TV stations for airing the next day.   Portions of the feature, including Agee's recording, were also included in the opening and closing credits of the program.   In addition, Paramount produced and transmitted to the TV stations a promotional commercial excerpted from the program, again including Agee's copyrighted work.   The TV stations made their own copies of the program and the commercial and broadcast them to the public.   Paramount neither sought nor obtained a license from Agee for the use of his recording, nor did it refer to him in the program's credits.

 

3. On September 10, 1993, Agee brought a copyright infringement action against Paramount and the TV stations for the unauthorized copying and synchronization of the songs from his sound recording, creation of a derivative work, and distribution or publication of that work to the public.   Agee also alleged that defendants had engaged in unfair competition and that Paramount's use of his recording violated section 43(a) of the Lanham Act.

Issue:

Whether incorporating a copyrighted sound recording into the soundtrack of a taped commercial television production infringes the copyright owner's exclusive right of reproduction under the Copyright Act of 1976, 17 U.S.C. §§ 106 and 114(b) (1993)  YES

Whether the copies of the program, including the duplicated portions of Agee's work, made by the TV stations violate the Lanham Act NO

Whether the copies of the program, including the duplicated portions of Agee's work, made by the TV stations constitute unfair competition NO

Ruling:

RE: Copyright Infringement

Section 106 of the Copyright Act of 1976 gives owners of copyrights in most works the exclusive right to reproduce the copyrighted work in copies or phonorecords, to prepare derivative works based upon the copyrighted work, to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending, to perform the work publicly, and to display the work publicly.  17 U.S.C. § 106.   However, with respect to copyrights in sound recordings, which the Act defines as “works that result from the fixation of a series of musical, spoken, or other sounds,” id. § 101, the Act confers more limited rights.   Only the rights of reproduction, preparation of derivative works, and distribution of copies are conferred, and a performance right is explicitly not conferred.  Id. § 114(a).   Moreover, the rights that are conferred are more limited than in the case of other works.

The reproduction right is limited to the right “to duplicate the sound recording in the form of phonorecords, or of copies of motion pictures and other audiovisual works, that directly or indirectly recapture the actual sounds fixed in the recording.”  Id. § 114(b) (emphasis added).   The derivative work right is limited to the right “to prepare a derivative work in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality.”  Id.

 

Also pertinent to our inquiry in this case is the exemption that section 114 extends to broadcasters for “ephemeral recordings.”   Specifically, it is not an infringement for a “transmitting organization entitled to transmit to the public a performance or display of a work, under a license or transfer of the copyright or under the limitations on exclusive rights in sound recordings specified by section 114(a), to make no more than one copy or phonorecord of a particular transmission program embodying the performance or display.”   Id. § 112(a).  To be eligible for this exemption, a “transmitting organization” must satisfy three conditions:  (1) the copy must be used solely by the transmitting organization that made it, and no further copies can be reproduced from it;  (2) the copy must be used “solely for the transmitting organization's own transmissions within its local service area, or for purposes of archival preservation or security”;  and (3) unless preserved exclusively for archival purposes, the copy must be destroyed within six months from the date the program was first transmitted to the public.

Paramount infringed the reproduction rights of Agee’s. House Report at 106 infringement of copyright owner's reproduction right takes place “whenever all or any substantial portion of the actual sounds that go to make up a copyrighted sound recording are reproduced in phonorecords ․ by reproducing them in the soundtrack or audio portion of a motion picture or other audiovisual work”). A synchronization of previously recorded sounds onto the soundtrack of an audiovisual work is simply an example of the reproduction right explicitly granted by section 114(b) to the owner of rights in a sound recording. Paramount derived independent commercial value from copying Agee's sound recording because that reproduction not only shifted the timing of performance but actually enhanced the performance by ensuring that there would be no mistakes in the synchronized program broadcast to viewers.   Reproducing Agee's recording in the soundtrack of Hard Copy also enabled Paramount to preserve the program intact for possible distribution or re-broadcast at a later date. It therefore infringed Agee's sound recording at the moment it put portions of his recording on tape to make a segment of Hard Copy.   Its incorporation of the sound recording without permission violated Agee's reproduction right.

Paramount’s act of mere synchronization of Agee’s sound recording with visual images did not create an infringing derivative work. Under the Copyright Act, a “derivative work” is defined as a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.   See 17 U.S.C. § 101.

In the case of sound recordings, the Copyright Act imposes additional requirements before such a “transformation” of a preexisting work is sufficient to create a derivative work.   See id. § 114(b);  House Report at 106.   Under section 114(b), the use of a sound recording qualifies as a derivative work only if “the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality.”

Paramount did not infringe Agee’s exclusive right to distribute his sound recording when it transmitted Hard Copy, including his work, by satellite to the TV stations because such a transmission did not constitute a distribution of one or more copies of his recording “to the public” under 17 U.S.C. § 106(3).  The Court finds no basis for concluding that Paramount's transmission of Agee's recording to viewers via the TV stations, rather than directly, was a “distribution.”   In a slightly different context, a number of courts have held that “[t]ransmissions by a cable network or service to local cable companies who in turn transmit to individual cable subscribers constitute ‘public performances' by the network under [the Copyright Act].” 

RE: Violation of Lanham Act

To state a claim for damages under the Lanham Act, Agee must allege a false representation of the source of his sound recording and actual confusion by consumers as to the source. However, Agee has alleged no facts suggesting that appellees “deliberately engaged in a deceptive commercial practice” designed to deceive the public as to the source of the product. Agee based his Lanham Act claim entirely on the fact that appellees made unauthorized use of his sound recording without paying him a royalty or recognizing him in the credits to the program.   See Merchant v. Lymon, 828 F.Supp. 1048, 1060 (S.D.N.Y.1993) (extending Lanham Act to cover “circumstances where an artist has not been properly credited for his ownership would simply transform every copyright action into a Lanham Act action as well”).   Consequently, dismissal of the Lanham Act claim for failure to state a cause of action was appropriate.

RE: Unfair Competition

Agee's state law unfair competition claim is baseless.   Although Agee alleges that appellees' use of his sound recording has caused a “diminution of good will” by connecting his sound recording to “criminal activities” or associating it with Hard Copy, Agee has failed to plead facts indicating that his record sales or licensing revenues have in any way been affected by Paramount's use of the recording.   There is no reasonable ground for believing that Agee has suffered economic losses as a result of appellees' actions, or that consumers think less of the recording.

Case Digest : Time Inc. v. Bernard Geis Associates, 293 F. Supp. 130 (S.D.N.Y. 1968)

 

Topics:

1. Copyrightability of Photographs The Copyright Act provides (17 U.S.C. §§ 4, 5(j)) that "Photographs" may be the subject matter of copyright. The Court held that the photograph was a writing of which the photographer was the author and that the Congress could constitutionally make such photograph the subject of copyright. This left open whether an ordinary photograph of a real life object could constitutionally be a proper subject of copyright. The Court found it "obvious" that the result could not be affected by the fact that the pictures represented "actual groups visible things" and that such pictures "drawn from the life" (as opposed to a "composed" subject) could be copyrighted. In this connection, the Court declared: "Others are free to copy the original. They are not free to copy the copy." (188 U.S. at 249, 23 S.Ct. at 299). And later: "The least pretentious picture has more originality in it than directories and the like, which may be copyrighted" (188 U.S. at 250, 23 S.Ct. at 300). In Pagano v. Beseler Co., 234 Fed. 963, 964 (2 Cir. 1916, the Supreme Court held that "It undoubtedly requires originality to determine just when to take the photograph, so as to bring out the proper setting for both animate and inanimate objects, with the adjunctive features of light, shade, position, etc."
2. Limitations on exclusive rights: Fair Use

Object of the Copyright Controversy
Life	Thompson
480 frames of Zapruder film, of which 140 show the immediate events of the Kennedy shooting incident and 40 are relevant to the shots themselves Life bought the original and all three copies of the film (two of which were noted as then in the possession of the Secret Service).	For failure to obtain consent of Life to use Zapruder’s film in his book, Six Seconds in Dallas, he used "sketches" in the Book. The Supreme Court held that the “sketches” are in fact copies of the copyrighted film. That they were done in charcoal by an "artist" is of no moment.

The Parties:

1. Time Incorporated (Time Inc.), the plaintiff, is a corporation which, among other things, publishes "Life", "Time" and "Fortune" magazines; it also publishes books; and it has "Broadcast divisions", the operations of which presumably involve radio or television broadcasting or both.

2. Abraham Zapruder >> When President Kennedy was killed in Dallas on November 22, 1963, Abraham Zapruder, a Dallas dress manufacturer, was by sheer happenstance at the scene taking home movie pictures with his camera. His filman historic document and undoubtedly the most important photographic evidence concerning the fatal shots was bought a few days later by Life; parts of the film were printed in several issues of the magazine. As to these issues and their contents (including, of course, the Zapruder pictures) and as to the film itself, Life has complied with all provisions of the Copyright Act (17 U.S.C. § 1 and following; the Act).

3. Defendant Thompson has written a book, "Six Seconds in Dallas" (the Book), which is a study of the assassination. It is a serious, thoughtful and impressive analysis of the evidence. The Book contains a number of what are called "sketches" but which are in fact copies of parts of the Zapruder film.

4. Defendant Bernard Geis Associates (Associates), a partnership, published the Book on November 18, 1967 and defendant Random House, Inc. has been distributing the Book to the public. Defendant Bernard Geis is the only general partner of Associates.

Facts:

1. The complaint in a single count charges that certain frames of the Zapruder film were "stolen surreptitiously" from Life by Thompson and that copies of these frames appear in the Book as published.

2. The complaint avers that the conduct of defendants is an infringement of statutory copyrights, an unfair trade practice, and unfair competition.

3. While the word "frame" with respect to motion picture film is generally understood, it may be advisable briefly to explain it. [A frame is one of the many still images which compose the complete moving picture.]   A motion picture consists of a series of photographs showing the objects in a scene in successive positions slightly changed. When the series is presented in rapid succession, the optical effect is of a picture in which the objects move. Each separate photograph in the series is called a "frame". Webster's Third New International Dictionary, pp. 902, 1475.

4. Defendants answered on January 15, 1968 and the answer in substance denies that plaintiff has any claim, then pleads nine affirmative defenses, and then pleads the nine affirmative defenses as a partial defense. The affirmative defenses are as follows: first, consent; second, that the Zapruder film could not be the subject of copyright because not original; third, that the Zapruder film could not be the subject of copyright because it could be made "in only a limited number of ways" and to allow copyright would result in the appropriation of the subject matter * * * by a limited number of copyright proprietors"; fourth, through seventh, fair use; eighth, that the Book is protected by the First Amendment and on that account an injunction cannot issue; and ninth, that an injunction will cause defendants irreparable harm.

Issues:

1. Whether the Zapruder pictures of the Kennedy shooting incident are copyrightable. Yes, photographs are copyrightable.

2. Whether the defendants are liable for copyright infringement for using sketches of Zapruder's film in his Book, Six Seconds in Dallas. No because the copying by the defendants is found a fair use.

3. Whether the defendants are liable for unfair competition. No, the parties are not in competition and it has been found that the copying by defendants was fair and reasonable. If the copying of a copyrighted work is not actionable under the Copyright Act, it is doubtful that it is unfair competition under the law of New York.

Ruling:

Re: Copyrightability of Photographs

It is said for defendants that the pictures are simply records of what took place, without any "elements" personal to Zapruder, and that "news" cannot be the subject of copyright.

The Zapruder pictures are "photographs" of an event. The Copyright Act provides (17 U.S.C. §§ 4, 5(j)) that "Photographs" may be the subject matter of copyright. If this were all to be considered, it would seem clear that the pictures here were properly copyrighted because Congress has expressly made photographs the subject of copyright, without any limitation.

In Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 4 S. Ct. 279, 28 L. Ed. 349 (1884), the Supreme Court found that the photograph in suit had involved the posing of the subject and a choice of costume, background, etc. The Court held that the photograph was a writing of which the photographer was the author and that the Congress could constitutionally make such photograph the subject of copyright. This left open whether an ordinary photograph of a real life object could constitutionally be a proper subject of copyright.

In Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S. Ct. 298, 47 L. Ed. 460 (1903), the Court found it "obvious" that the result could not be affected by the fact that the pictures represented "actual groups visible things" and that such pictures "drawn from the life" (as opposed to a "composed" subject) could be copyrighted. In this connection, the Court declared: "Others are free to copy the original. They are not free to copy the copy." (188 U.S. at 249, 23 S.Ct. at 299). And later: "The least pretentious picture has more originality in it than directories and the like, which may be copyrighted" (188 U.S. at 250, 23 S.Ct. at 300).

Judge Learned Hand believed that any photograph could be the subject of copyright because in Bleistein the Supreme Court had ruled that "no photograph, however simple, can be unaffected by the personal influence of the author, and no two will be absolutely alike".

There is an interesting case in this Court some fifty years ago. The question was whether a photograph of a street scene showing the Public Library on Fifth Avenue could be the subject of copyright. The decision upheld the copyright, saying among other things (Pagano v. Beseler Co., 234 Fed. 963, 964 (2 Cir. 1916):

 

"It undoubtedly requires originality to determine just when to take the photograph, so as to bring out the proper setting for both animate and inanimate objects, with the adjunctive features of light, shade, position, etc."

Thus, if Zapruder had made his pictures at a point in time before the shooting, he would clearly have been entitled to copyright. On what principle can it be denied because of the tragic event it records?

The defendants argue that "news cannot be copyrighted" citing the Associated Press case and National Tel. News Co. v. Western Union, 119 Fed. 294, 60 L.R.A. 805 (7th Cir. 1902).

Defendants are perfectly correct in their contention. A news event may not be copyrighted, as the cited cases hold. Life claims no copyright in the news element of the event but only in the particular form of record made by Zapruder.

The Associated Press case involved news articles (words) and not photographs. The Associated Press case did not involve copyrighted material but the Court discussed news articles as subjects of copyright. The Court carefully distinguished between the "news element", the "substance of the information" on the one hand, and "the particular form or collocation of words in which the writer has communicated it" (248 U.S. at 234, 39 S.Ct. at 70) on the other. The latter, the "particular form", was recognized as a proper subject of copyright, the Court saying (248 U.S. at 234, 39 S.Ct. at 70):

 

"No doubt news articles often posses a literary quality, and are the subject of literary property at the common law; nor do we question that such an article, as a literary production, is the subject of copyright by the terms of the act as it now stands."

It is said for defendants that the pictures cannot be copyrighted because of "lack of creativity".

This argument has already been dealt with in the discussion just above.

Any photograph reflects "the personal influence of the author, and no two will be absolutely alike", to use the words of Judge Learned Hand.

The Zapruder pictures in fact have many elements of creativity. Among other things, Zapruder selected the kind of camera (movies, not snapshots), the kind of film (color), the kind of lens (telephoto), the area in which the pictures were to be taken, the time they were to be taken, and (after testing several sites) the spot on which the camera would be operated.

Re:  Limitations on exclusive rights: Fair Use

The test of fair use was primarily the degree of injury to the plaintiff (9 Fed. Cas. at 348, 349):

 

"If so much is taken, that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another, that is sufficient, in point of law, to constitute a piracy pro tanto.

 

* * * * * *

 

"But if the defendants may take three hundred and nineteen letters, included in the plaintiffs' copyright, and exclusively belonging to them, there is no reason why another bookseller may not take other five hundred letters, and a third, one thousand letters, and so on, and thereby the plaintiffs' copyright be totally destroyed."

Section 107 of H.R. 2512 and of S. 597 is as follows:

 

"Limitations on exclusive rights: Fair Use

 

Notwithstanding the provisions of section 106, the fair use of a copyright work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use, the factors to be considered shall include:

 

(1) the purpose and character of the use;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work."

With respect to this provision, the Report of the Committee on the Judiciary of the House said (H.R.Rep.No. 83, 90th Cong., 1st Sess. 29-30 (1967)):

 

"Although the courts have considered and ruled upon the fair use doctrine over and over again, no real definition of the concept has ever emerged. Indeed, since the doctrine is an equitable rule of reason, no generally applicable definition is possible, and each case raising the question must be decided on its own facts. On the other hand, the courts have evolved a set of criteria which though in no sense definitive or determinative, provide some gage for balancing the equities. These criteria have been stated in various ways, but essentially they can all be reduced to the four standards which were stated in the 1964 bill and have been adopted again in the committee's amendment of section 107: `(1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work'."

The Committee noted that any precise definition of fair use was impossible and said (at 32) that

 

"* * * the endless variety of situations and combinations of circumstances that can arise in particular cases precludes the formulation of exact rules in the statute. We endorse the purpose and general scope of the judicial doctrine of fair use, as outlined earlier in this report, but there is no disposition to freeze the doctrine in the statute, especially during a period of rapid technological change. Beyond a very broad statutory explanation of what fair use is and some of the criteria applicable to it, the courts must be free to adapt the doctrine to particular situations on a case-by-case basis.

 

"Section 107, as revised by the committee, is intended to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way."

The difficult job is to apply the relevant criteria.

There is an initial reluctance to find any fair use by defendants because of the conduct of Thompson in making his copies and because of the deliberate appropriation in the Book, in defiance of the copyright owner. Fair use presupposes "good faith and fair dealing".

In determining the issue of fair use, the balance seems to be in favor of defendants.

There is a public interest in having the fullest information available on the murder of President Kennedy. Thompson did serious work on the subject and has a theory entitled to public consideration. While doubtless the theory could be explained with sketches of the type used at page 87 of the Book and in The Saturday Evening Post, the explanation actually made in the Book with copies is easier to understand. The Book is not bought because it contained the Zapruder pictures; the Book is bought because of the theory of Thompson and its explanation, supported by Zapruder pictures.

There seems little, if any, injury to plaintiff, the copyright owner. There is no competition between plaintiff and defendants. Plaintiff does not sell the Zapruder pictures as such and no market for the copyrighted work appears to be affected. Defendants do not publish a magazine. There are projects for use by plaintiff of the film in the future as a motion picture or in books, but the effect of the use of certain frames in the Book on such projects is speculative. It seems more reasonable to speculate that the Book would, if anything, enhance the value of the copyrighted work; it is difficult to see any decrease in its value.