Barry Skidelsky

Yes, that's a real place in New York state—as already known at least by my colleagues in NYSBA's Entertainment, Arts and Sports Law Section (EASL), and by readers of the recent EASL Journal special edition celebrating the Section's 30th anniversary.

EASL's 2019 annual meeting program at the Hilton (Tuesday, January 15) will include CLE panels addressing legal ethics for entertainment and other lawyers, plus various transactional, litigation and regulatory matters concerning underlying rights and adaptations in multiple media.

If you cannot attend our program and/or joint networking reception with the Intellectual Property Section (EASL loves to cross-pollinate with other NYSBA sections, bar associations, and law firms), here is a brief introduction to what copyright law calls “derivative works” (plus mention of a related lawsuit doubling as a warning for podcasters and others).

The Copyright Act defines derivative works as those based on or adapted from one or more pre-existing works. Traditional and obvious examples include sound recordings based on a musical composition (i.e., the music and lyrics of a song), and motion pictures or theatrical plays based on a previously published book. More modern and less obvious examples are podcasts, apps and websites. All involve multiple works and underlying rights that must be “cleared.” Failure to do so upfront increases risks and costs.

The right to create derivative works (and to prohibit others from creating them) is part of a bundle of exclusive rights a copyright holder has which arise when a work of original authorship is fixed in tangible form (including as MP3 and other digital media files). Copyright registration is not required, but is generally recommended to obtain added value, statutory damages and counsel fees.

Related lawsuits (often at federal and state courts in New York and California, where many entertainment, media and technology matters are litigated) have followed the emergence and adoption of each new media technology.

A chronological list of some relevant traditional media technology well developed over the last century includes printed sheet music, mechanical piano player rolls, film, sound recordings, radio, television, and home video recorders. Newer online and mobile digital media technologies that emerged over the last couple of decades continue to develop and supplant at an accelerated pace, creating global opportunities and challenges.

Legislators and judges struggle to adapt copyright and other law to emerging digital media. Consider the recently enacted Music Modernization Act (music licensing reform primarily promoted by large streaming services), and UMG v. iBus Media (case no. 2:18-cv-9709, U.S. District Court, Central District of California, filed Nov. 16, 2018).

UMG is one of the first nationally prominent cases concerning podcasts. Various record labels and music publishers sued the owner of pokernews.com for willful copyright infringement relating to unauthorized use of music in the defendant's poker related podcasts. Given statutory damages of $150,000 per infringed work, the total tab could easily exceed $6 million. Space constraints here aside, more information is available at nysba.org/easl.

Barry Skidelsky has experience as a musician, broadcaster, bankruptcy trustee, FCC trustee, arbitrator, and general counsel. Based in New York City, he currently owns a national consulting and legal practice with particular interests and expertise in media, entertainment, communications and technology.