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In December 2019, Scott Hervey wrote about the copyright infringement lawsuit filed against Taylor Swift by the writers of the song “Playas Gon’ Play.”  The song was released by the girl group 3LW in 2001 and included the lyrics “Playa, they gonna play / And haters, they gonna hate.”  In 2014, Taylor Swift released “Shake It Off,” which included the lyrics “Cause the players gonna play, play, play, play, play / And the haters gonna hate, hate, hate, hate, hate.”

Swift was originally successful on a motion to dismiss the infringement claim.  The district court held that the lyrics were “too brief, unoriginal and uncreative to warrant protection under the Copyright Act.”  However, the writers of “Playas Gon’ Play” appealed, and the 9th Circuit reversed the district court’s ruling.  Swift found herself back in court doing discovery to determine the creative worth of the lyrics.  As Scott Hervey noted, the 9th Circuit’s ruling made it more difficult to obtain dismissal of a frivolous infringement case and gave copyright trolls the ability to force defendants into expensive discovery.

On July 19, Swift filed a motion for summary judgment on the substantive issue of the similarity between the songs.  A plaintiff alleging copyright infringement must demonstrate that there was “unlawful appropriation” by showing that the two works are substantially similar.  The court will apply an extrinsic test comparing the objective similarities of expressive elements in the two works.  There is only liability if the specific protectible elements of “Shake It Off” are substantially similar to “Playas Gon’ Play.”

Both sides have done substantial discovery and have retained musicologists as expert witnesses to parse the songs.  Swift’s expert musicologist claims that there are no structural similarities between the two songs.  They are in different keys, have vastly different tempos (93 beats per minute for “Playas Gon’ Play” versus 160 beats per minute for “Shake It Off”), and entirely different melodies.  In addition, “Playas Gon’ Play” is about breaking up with a romantic partner while “Shake It Off” is about the singer shaking off criticism.

The writers of “Playas Gon’ Play” face an apparent uphill battle to demonstrate that there is in fact substantial similarity between these songs.  The motion is set for hearing on August 30, 2021.

The case is Sean Hall et al. v. Taylor Swift et al., Case No. 2:17-cv-06882, U.S. District Court for the Central District of California.

Over the past few weeks, there have been a number of news articles and stories about police officers playing popular music during a citizen/officer interaction that is being filmed by the citizen.  For example, Vice reported on a Beverly Hills police officer breaking out his phone and playing over a minute of Sublime’s “Santeria” when the officer discovered that his interaction with a well-known LA-area activist was being live-streamed by the citizen via Instagram.  Similarly, Mashable reported that an Alameda County Sheriff’s deputy played a Taylor Swift song during an encounter.  Why is this happening?  There seems to be a belief that police service, when paired with a musical interlude, will prevent a recording of the interaction from being posted on social media due to algorithms that detect and remove videos incorporating copyrighted music (among other types of content).

YouTube’s system for detecting and managing copyrighted content is called Content ID.  Copyright owners load their content into the Content ID system, and the system then creates a digital fingerprint for each piece of content and searches all of the videos within YouTube and new videos loaded into YouTube for a match.  If a match is found, the copyright owner is notified and can elect to either block the video (thus making it unavailable for viewing), or allow the video to stay up and monetize it with ad revenue going to the copyright owner.  While this election can be done on a case by case basis, most copyright owners set a default election and let the Content ID system do the rest.

If the Content ID system blocks a video, the owner of that video has the opportunity to address the block by either requesting the copyright owner to retract the block or by submitting a challenge to the block via the system.  If the copyright owner has Content ID operating via a default block setting, a retraction request or challenge will require manual interaction.  In both instances, the video owner will have the opportunity to explain why its video is not infringing the rights of the copyright holder.  If a block is challenged, the system will notify the copyright holder who must then either reinstate the block or release the video.  If the block is reinstated, the video owner is notified and can reinstate its challenge to the block.  At that point the copyright owner must then release the video or issue a takedown under the Digital Millennium Copyright Act (DMCA).

The filing of a counter notice under the DMCA is not to be taken lightly as it requires the video owner to declare, under penalty of perjury, that he or she has a good faith belief that its video was wrongfully removed. This would include a belief that the display or performance of the copyrighted material in the video was covered under fair use.

So would the inclusion of the Taylor Swift or Sublime song recorded in the police/civilian interaction videos mentioned above constitute fair use?   Under the Copyright Act, fair use is determined by looking at the following four factors: (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 Copyright Act specifies certain categories of use that generally qualify as fair use; this includes use for news reporting purposes.  Although these videos very likely qualify as news reporting, they still would need to satisfy the fair use factors.

The purpose of the first fair use factor – a review of the purpose and character of the use – is to see whether the new work merely “supersedes the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”  Generally, the determination that a work is transformative is entitled to substantial weight in determining fair use.

Here, it seems fairly clear that the inclusion of the copyrighted song in these police/citizen interaction videos is transformative.  The purpose is not to recreate the copyrighted song but rather to document and report on a citizen/police interaction for the purpose of holding police actions up to public scrutiny (whether for good behavior or bad).

The “Set of Principles in Fair Use for Journalism” and the “Documentary Filmmaker Best Practices of Fair Use” both identify the incorporation of copyrighted material captured incidentally and fortuitously in the process of recording and disseminating news or recording something else as constituting fair use.  For journalists, the material captured incidentally in the course of reporting on specific events and activities “is an inseparable part of the reality they seek to portray.  Excluding (or drastically curtailing) the amount of such material contained in reporting would compromise the truth-telling mission of journalism.”  For documentary filmmakers, “the incidentally captured material is an integral part of the ordinary reality being documented.”

Would the situation be different if the above police officers played a recording of their own original music?  The outcome for the citizen would most likely be the same but the police officer could be in a worse position if he/she issued a takedown in such a situation for his/her own original music.  Pursuant to the 2015 case of Lenz v. Universal Music Group, when issuing a takedown notice under the DMCA the copyright holder must consider fair use.  The court held that, for the purposes of the DMCA, fair use is uniquely situated in copyright law so as to be treated differently than traditional affirmative defenses; fair use is “authorized by the law” and a copyright holder must consider the existence of fair use before sending a takedown notification under Section 512(c).  Not doing so could subject the copyright holder to potential liability for damages under Section 512(f). And while the fair use analysis does not need to be “intensive” and the court in Lenz seemed to be willing to give deference to the results of a copyright holder’s analysis, the court warned that a copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to Section 512(f) liability.

In recent years, the Supreme Court has decided a number of cases, including Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad, and Alice Corp. v. CLS Bank Int’l, which involve the limits on patent eligibility under 35 U.S.C. § 101.   For example, in Alice, the court stated “[t]he ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable.” The Supreme Court further recognized that “laws of nature, natural phenomena, and abstract ideas” are not patent-eligible subject matter under 35 U.S.C. §101.

To determine whether claims are patent-eligible the Supreme Court set forth a two-part test in Mayo as further explained in Alice. This test consists of the following steps:

Step 1: The court determines whether the claims are directed to an abstract idea.

Step 2: If the claims are directed to an abstract idea, then the court determines whether the claims include elements showing an inventive concept that transforms the idea into a patent-eligible invention. Step 2 is satisfied when the claim limitations “involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’”

Since these Supreme Court decisions, the Court of Appeals for the Federal Circuit has applied this two-step test and issued a number of opinions as to whether a particular subject matter is patent-eligible.  At times, it has been difficult to understand the reason one invention was found patent-eligible while another similar invention was not.  When the Federal Circuit has been asked to rehear various cases en banc, the multiple, separate opinions have made it even more clear that the court is rather divided as to the boundaries of what is and what is not patent-eligible.  Patent attorneys and inventors are often left to guess whether a particular invention is patent-eligible.

Recently Senators Tillis, Hirono, Cotton, and Coons asked the United States Patent and Trademark Office (“USPTO”) to seek information from the public as to “how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.”  After evaluating the public’s responses, the Senators requested that the USPTO prepare a summary of its findings by March 5, 2022.

As a result, the USPTO has requested comments from the public on 13 topics, which can be found at this link and are paraphrased and summarized below.

1. Explain how the current state of patent eligibility jurisprudence affects the conduct of business in your technology areas.
2. Explain what impacts you have experienced as a result of the current state of patent eligibility jurisprudence in the United States, including concrete examples in the following areas: patent prosecution strategy and portfolio management, patent enforcement and litigation, patent counseling and opinions, research and development, employment, procurement, marketing, ability to obtain financing from investors or financial institutions, investment strategy, licensing of patents and patent applications, product development, sales, innovation, and competition.
3. Explain how the current state of patent eligibility jurisprudence in the United States impacts particular technological fields, involving investment and innovation in quantum computing, artificial intelligence, precision medicine, diagnostic methods, pharmaceutical treatments, and other computer-related inventions such as software, business methods, computer security, database and data structures, computer networking, and graphical user interfaces.
4. Explain how your experiences with the application of subject matter eligibility requirements in other jurisdictions, such as China, Japan, Korea, and Europe, differ from your experiences in the United States.
5. Identify instances where you have been denied patent protection for an invention in the United States solely on the basis of patent subject matter ineligibility, but obtained protection for the same invention in a foreign jurisdiction, or vice versa.
6. Explain whether the state of patent eligibility jurisprudence in the United States has caused you to modify or shift investment, research and development activities, or jobs from the United States to other jurisdictions, or vice versa.
7. Explain whether the state of patent eligibility jurisprudence in the United States has caused you to change business strategies for protecting your intellectual property, such as shifting from patents to trade secrets, or vice versa.
8. Explain whether you have changed your behavior with regard to filing, purchasing, licensing, selling, or maintaining patent applications and patents in the United States as a result of the current state of patent eligibility jurisprudence in the United States.
9. Explain how the status of patent eligibility jurisprudence in the United States has affected any litigation for patent infringement in the United States in which you have been involved.
10. Identify how the current state of patent eligibility jurisprudence in the United States impacts the global strength of U.S. intellectual property.
11. Identify how the current state of patent eligibility jurisprudence in the United States impacts the U.S. economy.
12. Identify how the current state of the subject matter eligibility jurisprudence in the United States impacts the global strength of the U.S. economy in the areas of quantum computing, artificial intelligence, precision medicine, diagnostic methods, pharmaceutical treatments, and other computer-related inventions.
13. Identify how the current state of patent eligibility jurisprudence in the United States affects the public, such as the availability, effectiveness, or cost of personalized medicine, diagnostics, pharmaceutical treatments, software, or computer-implemented invention

Comments must be received by the USPTO by September 7, 2021.

Loud parties, surveillance cameras, and a neighbor dispute? The Court of Appeal for the Second Appellate District in California was recently faced with these issues in a case involving claims that one neighbor’s use of surveillance cameras violated the other neighbor’s right to privacy. The fact that one of the defendants was comedian, Kathy Griffin, only added to the case’s interest. In the end, the Court sided with Ms. Griffin and her boyfriend in the case: Mezger v. Bick, et al. (decided July 1, 2021).

Ms. Griffin and her boyfriend, Randy Ralph Bick, Jr., moved next door to Sandra and Jeffrey Mezger in July 2016. The Mezgers claimed that their new neighbors began making noise complaints to the HOA about them shortly after moving in. In September 2017, the police visited the Mezgers to advise them that they were investigating another noise complaint and apparently told the Mezgers that their neighbors “had recorded them.” A few days later, the Huffington Post published a portion of a recording of Mr. Mezger apparently angry about one of the noise complaints. Ms. Griffin also apparently used some of the recordings during her acts.

In July 2018, the Mezgers sued their neighbors claiming violation of their rights to privacy under common law and the California Constitution and violation of Penal Code section 632, among other claims. After discovery, Ms. Griffin and Mr. Bick moved for summary judgment as to the above claims. They provided the Court with evidence that they had installed the security cameras for protection as a result of death threats Ms. Griffin had received and that the cameras were entirely on their own property. They further offered evidence that the cameras were positioned to “maximize [Ms. Griffin’s] safety” and were not intended to “spy” on the Mezgers, although one camera apparently captured a portion of the Mezger’s backyard.

Ms. Griffin also submitted evidence that she sometimes used her phone to make short videos documenting the loud party noises that came from the Mezger’s yard. She provided evidence that she was always on her own property when she made these videos and that any recorded sounds “were so loud that they emanated onto [her] property….”

The Mezgers opposed the motions by claiming that the purpose of the surveillance cameras was solely to spy on them to “document” their conduct to substantiate the noise complaints made by Ms. Griffin and Mr. Bick. They further offered evidence that these recordings were made without their consent or knowledge. They also offered a number of recordings that they had obtained during discovery to show the extent of the claimed invasions of their privacy.

In February 2020, the trial court issued a tentative ruling indicating that it would grant the summary judgment motions of Ms. Griffin and Mr. Bick. After hearing oral argument from both sides, the trial court took the matter under submission and on March 2, 2020, issued its ruling granting the summary judgment motions. The Mezgers then filed an application to submit additional evidence, which the trial court granted. They offered further evidence: (1) demonstrating that they did not believe their conversations could be overheard by their neighbors and thus, they had an expectation of privacy in their conversations; and (2) providing expert witness opinion testimony that the voices on the recordings were “amplified” and sounded louder than they actually were. The trial court rejected this additional evidence and reaffirmed its granting of summary judgment as to these claims. The Mezgers then dismissed their remaining claims and appealed the granting of summary judgment.

The appellate court began by recognizing the applicable standards involved with summary judgment motions. It noted that the burden was on the Mezgers to show with admissible evidence “the specific facts showing that a triable issue of material fact exists….” With that, the Court then turned to each of the Mezgers’ claims.

The Court began with the common law invasion of privacy claim. The elements of this claim are “intrusion in to a private place, conversation, or matter, in a manner highly offensive to a reasonable person.” In order to determine whether “offensiveness” exists, a court must look at: “(1) the degree of intrusion; (2) the context, conduct and circumstances surrounding the intrusion; (3) the intruder’s motives and objectives; (4) the setting into which the intrusion occurs; and (5) the expectations of those whose privacy is invaded.” The Court found in favor of Ms. Griffin and Mr. Bick as to these issues.

First, the Court found that they had established that they had legitimate safety concerns given Ms. Griffin’s public exposure and past death threats and stalking incidents. The Court was further persuaded that the recordings were made entirely on their property, captured sounds that could be heard from their property, and any video images of the Mezger’s backyard “was incidental to [the defendants’] interest in securing [their] second-story bedroom.”

Next, the Court rejected the Mezgers’ arguments that these “safety concerns” were mere pretext, i.e. that the real purpose of the cameras was to spy on the Mezgers. The Court found that there was no evidence to support a claim of pretext in that there was no evidence that re-positioning the cameras would achieve the same safety interests or that Ms. Griffin and Mr. Mezger intended to spy on their neighbors. The Court also rejected the Mezgers’ attempt to analogize their claims to those involving privacy interests implicated by governmental search and seizures that may violate a person’s Fourth Amendment rights. Finally, the Court found it significant that ordinary conversations that may have taken place in the Mezgers’ backyard “could not be discerned,” only those spoken “at elevated volumes” for which the Mezgers “could not reasonably expect to remain private.”

The Court then turned to the Mezgers’ claim for invasion of privacy under California’s Constitution. The Court recognized that this claim had “standards similar” to the common law claim and thus failed for the same reasons.

The Court concluded by taking up the Mezgers’ Penal Code section 632 claim. This law prohibits a person from “eavesdropping” or recording “a confidential communication” without “the consent of all parties.” The Court noted that a “conversation is confidential if a party to that conversation has an objectively reasonable expectation that the conversation is not being overheard or recorded.” The Court found that this claim failed because, as mentioned above, the only communications that were caught on the cameras “were spoken at elevated volumes” and thus, “could not reasonably [be expected] to remain private in an outdoor residential setting, with neighbors nearby.”

The Mezger case is an illustration of some of the hurdles a plaintiff may face in asserting claims for invasion of privacy, specifically that the communications allegedly intruded upon are in fact confidential or private. On the upside, Ms. Griffin has apparently sold her home so hopefully, this will be the end of this neighborhood dispute.