2019 IP Law Year in Review – Copyrights


Executive Summary

In many ways, copyright jurisprudence in 2019 was a study in contrasts. While certain cases represented a “back to basics” approach, answering fundamental questions such as “When can a copyright owner sue for copyright infringement?” and “What costs can a prevailing copyright owner recover?,” others addressed thorny issues involving fair use and the first sale doctrine.

In the wake of several pivotal copyright decisions involving the music industry in 2018, such as the watershed “Blurred Lines” verdict, disputes involving music continued to provide fuel for the courts to weigh in on copyright this year. As we look to 2020, all eyes will be on the Supreme Court and its decision in the epic battle between Google and Oracle and the protectability of software. This report provides a summary of 2019’s important copyright decisions with the hopes of assisting those navigating copyright infringement and enforcement issues in the coming year.


Music - First Sale Doctrine, Fair Use and Protectability

Jodi Benassi

From the first sale doctrine to fair use to protectability, music provided plenty of copyright fodder for the courts this past year.

Commonly known as the “first sale” doctrine, 17 U.S.C. § 109(a) permits a lawful purchaser of a copy of a work to resell, give, or transfer that copy without violating a copyright owner’s right to exclusive distribution. The Second Circuit confronted the issue of whether an Internet marketplace designed to allow users to resell their digital music purchased from iTunes was permitted under the first sale doctrine. Capitol Records, LLC, et al. v. ReDigi. (IP Update Vol. 22, No. 1).

When a digital music file was uploaded to ReDigi’s servers, a copy of the digital music file was created. The Second Circuit reasoned that those unauthorized copies violated a copyright owner’s right to exclusive control of reproduction. Unauthorized copies are not protected under the first sale doctrine. Weighing the statutory factors, the Court further determined that ReDigi’s actions were not protected under the doctrine of fair use, particularly in light of the negative impact ReDigi’s use would have on the market for music. With no available first sale or first use defense, the Second Circuit affirmed the district court’s determination that ReDigi was liable for copyright infringement.

The Second Circuit again addressed the issue of fair use in Abiodun Oyewole v. Rita Ora, Case No. 18-1311 (2d Cir. Sept. 4, 2019). There, the plaintiff alleged exclusive rights in the phrase “party and bullshit” based on his use in a prior song in the 1960s. The phrase was later used by the late rapper Notorious B.I.G. and licensed by the rapper’s estate to singer Rita Ora.

After a thorough analysis of the statutory fair use factors, the district court determined that the fair use doctrine applied and dismissed the copyright infringement complaint against Ora. The district court determined that the newer use of the works had transformed the phrase into something entirely new: the original use of the phrase had a negative connotation, whereas Notorious B.I.G. and Ora had used it positively.

The Second Circuit, on appeal, affirmed the lower court’s fair use analysis in all respects, finding that Ora’s use of “party and bullshit” constituted fair use and was thus not infringing.

2020 Outlook

Jodi Benassi

As we look to 2020, we expect that, in addition to the Supreme Court’s hotly anticipated decision in Google v. Oracle, software and technology disputes will continue to yield decisions on such important issues as licensing and the first use doctrine.

In addition to Google v. Oracle, the Supreme Court is poised to weigh in on two other copyright cases involving state sovereign immunity and whether state and local governments may charge fees for access to legal texts. Finally, in the age of mashups and memes, we expect courts to continue to wrestle with when use is “transformative” and thus protected under the doctrine of fair use.