Termination of Transfer Part 2: Clearing the Flaming Hoops

Termination of Transfer Part 2: Clearing the Flaming Hoops By Joshua Graubart

{3:30 minutes to read} Terminating a transfer of copyright is far more technically complicated than one might expect.

As discussed in my last post, the termination of transfer provisions in the current Copyright Act of 1976 are embodied in sections 203 and 304:

  • Section 203 addresses works that were created or transferred on or after January 1, 1978;
  • Section 304 addresses works that were assigned or licensed before January 1, 1978 (the day the 1976 Act went into effect).

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Termination of Transfer – Part 1

Termination of Transfer - Part 1 by Joshua Graubart{5:24 minutes to read} It takes money to make money. For most of modern history, artists seeking mass-market success have had to partner with “production companies”—record labels, publishers, and film studios—in order to get their work in front of the public.

Though technology has in recent years reduced the burden of that requirement a bit, that very easing has also unleashed a flood of creative work in the market (much of it of indifferent quality) and mainstream success still—perhaps now more than ever—requires funds and expertise in production and promotion. It is instructive, for example, to note that in the past 20 years, only one record—Macklemore & Ryan Lewis’s 2013 Thrift Shophas topped the Billboard Hot 100 without the backing of a major record label. Read more

Copyright Class Actions Part 3 – The Class Representative

Copyright Class Actions Part 3 - The Class Representative By Joshua Graubart{4:42 minutes to read} In my last post, I discussed the first set of criteria which a court must consider in certifying a potential class action: is a class the most efficient way to serve justice?

If the court determines that a class is appropriate, it must then turn to the second set of criteria: whether the claimant(s) initiating the suit—the “representative plaintiffs”—are suitable to represent the class members. Again, it must satisfy itself as to two questions:

  1. Typicality: Are the claims made by the proposed class representatives typical of the claims of the class members as a whole?
  2. Adequacy: Will the proposed class representatives fairly and adequately protect the interests of other class members?


The first question is similar to the second question discussed in the last post—do the potential class members’ claims have one or more particular questions of law or facts in common? But here the question is focused on the “averageness” of the representative plaintiffs. Do the representative plaintiffs’ claims look like the claims which the bulk of the class members would make if they participated as individuals, or is there something unusual about these claims? Read more

Copyright Class Actions Part 2

Copyright Class Actions Part 2 By Joshua Graubart{5:06 minutes to read} As discussed in my prior post, litigating a low-value copyright infringement claim is often simply not worth the time and expense required. However, such a claim can sometimes be made cost-effective by aggregating it with similar claims in a class action. A single copyright holder with a small claim can serve as a representative of a “class” of similarly affected rightsholders.

The “class” in this example would be a large group of copyright holders, each of whom owns a work which has been infringed in the same way by the defendant(s). However, it is not enough for a copyright holder to determine that a class of similarly-situated defendants exists. The court must investigate and certify that a class is the most efficient way to obtain justice, and whether the copyright holder initiating the suit is a suitable person to represent the class. In this post, I will discuss how a court determines whether a class is an appropriate vehicle for obtaining justice. Read more

The Copyright Infringement Class Action: Cost-Effective Recovery for Low-Value Cases

{3:54 minutes to read} No matter the value of an infringement claim, there is no way to enforce a copyright claim except – literally – to make a federal case of it. The federal courts have exclusive jurisdiction over copyright disputes,[1] so copyright infringement actions must be brought in the federal courts.

Federal courts, unlike many state courts, do not have a “small claims” division.[2] Consequently, even a low-value copyright infringement claim is processed using the same rules as a multi-billion dollar commercial dispute. The cost of prosecuting a low-value copyright action may be more than the rightsholder can expect to receive in damages.

It is true that § 505 of the Copyright Act permits the court, in its discretion, to award a prevailing party his costs and attorney’s fees, but the key word is “discretion.” The court is not obligated to make such an award at all, or to make an award equal to the winner’s actual expenses. Though you may be lucky, it is quite risky to depend on an anticipated damages award. For the same reason, an attorney willing to work on a contingent fee basis – that is, to take a smaller hourly fee, or no fee at all, in exchange for a share of any proceeds – may be hard to find for a low-value claim.

So are low-value claims simply an example of rights without effective remedies? Yes and no. If the infringement is not part of a larger pattern or practice by the infringer – that is, if the infringer isn’t similarly and systematically infringing other works as well – then, yes, the cure may, financially speaking, be worse than the disease.

However, if the infringement is part of a systematic infringement – for example, if the infringer is a company whose business plan includes the infringement of thousands of copyrights – a class action may allow a single rightsholder to stand as a representative for the rights holders of all infringed works (the “class”), and to bring suit premised not on a single infringement, but on thousands. That single rightsholder is called a “representative plaintiff,” as he is meant to represent all the other class members.

By doing so, the representative plaintiff can now make his low-value claim – as a stand-in for thousands of similar claims – far more attractive to a contingent fee attorney. While a single low-value claim is too cost-inefficient, a consolidation of thousands of such claims holds the possibility of a high-value judgment or settlement. In addition, the representative plaintiff, in recognition of his initiative and the inconveniences attendant on litigation, may receive an additional “incentive award” from the class award, to encourage rightsholders with such low-value claims to prosecute them on behalf of an injured class.

In a future post, we will discuss the requirements a court considers in class certification, the process of determining whether a class exists, whether the representative plaintiff is typical of the class members, and whether litigation by a class is the most practical way to achieve justice.

[1]There is a single exception.  Prior to 1972, sound recordings were not protected by federal copyright, but were generally protected by state law.  Consequently, infringement claims regarding copyrights in sound recordings made prior to February 15, 1972 may be brought in state court.

[2] The U.S. Copyright Office has proposed the creation of a voluntary “small claims” process for copyright claims as an alternative to federal court litigation, but to date, it has not been enacted.

Valuing a Copyright Infringement Claim

Valuing a Copyright Infringement Claim by Joshua Graubart{4:12 minutes to read} “How much is my claim worth?” This vexing question returns every time I consider a client’s copyright infringement claim. Attempting to predict a court verdict is a fool’s game, but there are some basic markers to guide us in valuing a claim.

Section 504 of the US Copyright Act provides 2 alternative methods of calculating damages.

  1. “Actual damages” – familiar to litigators the world over
  2. “Statutory damages” – an unusual method, often intriguing to non-U.S. claimants – that can be quite valuable to copyright holders

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Public Performance, Communication & Display: What Is “Public”?

Public Performance, Communication & Display  What Is Public By Joshua Graubart{3:06 minutes to read} As discussed in earlier posts, among the exclusive rights accorded to copyright holders is the right to perform or display their works publicly, or to authorize others to do so.  Consequently, copyright law generally limits the exclusive rights of the copyright holder, and thus permits certain private uses of a protected work without the rightsholder’s permission, whereas public exploitation requires permission and/or payment.  It follows that the definition of “public” is of great importance and varies from jurisdiction to jurisdiction.  Read more

Public Performance of Music: Dramatic, or Non-Dramatic?

Public Performance of Music:  Dramatic, or Non-Dramatic? by Joshua Graubart“On entering an opera or concert hall in Paris you come face to face with a long counter, presided over by three gentlemanly-looking individuals in evening dress, to whom your ticket is given, they replacing it with another, by which you are seated.”
— New York Musical Courier, Oct. 1894.

{4:06 minutes to read} Two of these Parisian gentlemen were representatives of two different French performing rights societies (PROs). (The third, incidentally, was a representative of the Parisian public hospital system, which was then supported by a performance tax.) “Each,” as the Courier explained, was present “to figure his receipts for the day.”  Read more

The Right of Public Performance

The Right of Public Performance by Joshua Graubart{3:40 minutes to read}

Among the exclusive rights accorded to copyright holders is the right to perform their works publicly, or to permit others to do so.

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Copyright Registration – Fact and Myth

copyright with magnifier[Time to read: 4.8 mins ]

Generally speaking, works published in the US before January 1st, 1978, were only protected by copyright if they were registered at or before publication. Under the current Act, all works are subject to copyright protection from the moment of their creation, regardless of registration.  

Unfortunately, this change has made creators complacent about registration. Why register if the work is protected without registration? Read more