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USC IP Conference in Review 2008

Reported by Robert Frank, Esq.
March 27, 2008

I’m always interested in attending these events but they don’t have a great deal of entertainment value. This one was held at the famous Beverly Hills Hotel. It started with a panel of Circuit Court Appellate Judges from Washington, D.C., discussing how the Supreme Court, in effect, has been “clipping their wings” in response to their interpretations of laws applicable to copyright, patent and, trademark.

Photo: Robert Frank, Esq.

The Justices weren’t too happy about this because they have wrestled rigorously to provide reasoned results for each of the extremely important cases they must decide in this rapidly evolving technological universe.After the Justices, Mark Lemley, a Professor from Stanford, gave an excellent, concise yet thorough summary of patent law developments during the past year – something that ordinarily wouldn’t inspire most music or entertainment-oriented people. This seemingly separate subject matter, however, intersects with the entertainment biz in many ways. For example, there is (and has been) great debate about the patentability of computer software and programming. Methods of protection and innovation in delivery systems and business methods trigger substantial questions. Our Supreme Court has shown great inclination to provide relatively little protection for much innovation, employing reasoning that tangible things – not intangible ideas – are subject to the benefit of patent laws. Some of the cases discussed were Microsoft v. AT&T and Verizon v. Vonage, involving the VOIP technology.

At this point, we split into smaller seminars. My preference was “A Decade Under the Digital Millennium Copyright Act: the Good, Bad and the Ugly”. This panel included Congressman Howard Berman, who is the Chairman of the Subcommittee on Courts, Intellectual Property and the Internet. The panel also included Bruce G. Joseph and Stephen J. Metalitz, lead counsel in high-profile cases that have shaped the application and impact of the DMCA since its enactment in 1998.

The DMCA sought to anticipate and address complex global disputes and, inherent to that, to implement methodology for policing and enforcement – seemingly a Herculean task. It’s remarkable that the DMCA has stood up so well given the advances emanating from the fertile minds of the high-tech community. That’s a tribute to its initial authorship, which, in many respects, was penned broadly. At the same time, that broad stroke provides fodder for many legitimate points of view, each of which must be weighed thoughtfully in order to gain minimal control over this runaway train of technology. The discussion focused upon injunctive relief and other enforcement tools provided by sections 1201 and 512 of the Act, with particular scrutiny of service providers – the most effective way to regulate improper transmissions. A “notice and take down” letter to such a provider, undoubtedly, is the most economical and practical way to get results here since the providers may be subject to vicarious liability if the conduct persists and, more often than not, the provider has no vested interest in the subject matter. The primary defense to a “notice and take down” letter is that the material is a “fair use”. This phrase has become the bane or blessing of the DMCA, depending upon your point of view. Although this panel stressed that the doctrine of “fair use” was not a defense to injunctive relief pursuant to section 1201 of the Act, it certainly was a defense to liability on the part of all associated with the offending conduct, including the service provider.

After lunch, Congressman Henry Waxman (Chairman of the House Committee on Oversight and Government Reform) spoke on the patent fights going on with respect to the drug companies to discourage introduction of generics and the bio-tech industry efforts to obtain maximum protections of their “proprietary” discoveries. I then attended the panel entitled “Fair Use or Unfair Infringement”.

The “Fair Use” doctrine stems from the 1976 Copyright Act and has been exploited by defense attorneys to allow all sorts of usages of otherwise protected material. Factors to be weighed in this determination include the degree of similarity of the works, the purpose of the use of the work (e.g., educational, commercial, etc.) and the effect of that use upon the market value of the copyrighted work. “Fair Use”, quite simply, is the codification of 1st Amendment rights of free speech, which is subject to regulation or restraint only in specific circumstances – copyright being one of great concern to the recording arts. The panel’s discussion focused upon transformative use, deriving from the 2-Live Crew case, entitled Campbell v. Acuff-Rose Music, decided in 1994 and, more recently, in Perfect 10 v. Google (2007). That doctrine allows, in theory, a transformed or substantially changed usage of protected works. This also is defined as using the original work for a different purpose than it was originally intended. Unfortunately, no attorney (and no Court, for that matter) can say with any authority whether any given usage will be protected under that doctrine. Notwithstanding a recent ruling in Blanch v. Koons, which would seem to allow use of any transformed protected work (such as a sample in a different song), you’d better have a lot at stake (and a big bank account) to fund this type of litigation, with little security as to how and when it might be resolved.

My final panel of the day was “The Global Impact of the Internet on Copyright Law”. As with all others, the panelists were superb and acknowledged leaders in their field. These are the global enforcers and, to my surprise, they have had substantial success in shutting down illegal activity worldwide. To great extent, the focus has been on peer-to-peer services that represent about 85% of the entire illegal transfer of files. Services such as Limewire, Bitorrent and eDonkey have been substantially impaired and others have been chased around the globe with significant consequences. Again, the reality here is that this type of enforcement involves tremendous expense and diligence since it involves multiple jurisdictions, often with significant conflicts of law. This policing, undertaken by industry watchdogs, inures to the benefit of every copyright owner. It is ongoing and surprisingly effective.

These events provide an excellent source of updates for high-level intellectual property attorneys and an opportunity to break bread with some true heavyweights. If you’re not in that category, you can get the basics online by running searches for “Fair Use”, “Digital Millennium Copyright Act” or some of the names of cases cited that will provide a more in depth discussion of the issues.


Mr. Frank is an attorney who founded Music Producers International
( Recently, he formed United World Artists (, specifically aimed for the global promotion of select independent artists in music and media. Mr. Frank is a member of ASCAP and periodically provides legal services for NARIP.