How Litigation in Nashville is Different than in Bigger Cities

I get asked a lot to serve as local counsel on cases for lawyers from LA, New York, Chicago and DC.  (I also end up hiring lawyers in those cities.)  Sometimes we’re asked to play a minor role – some call this “elbow counsel,” where we’re really just on the case in name only.  Generally, though, lead counsel sees that we can offer valuable insight into not just the substantive law but also the local landscape.  And I assure you the landscape here in Nashville is much different than it is in larger cities.

Given the sheer size of bigger cities, lawyers there often never appear more than once in front of the same judge and often never interact with the same opposing counsel.  With the virtual anonymity that comes with the territory in those jurisdictions, lawyers have every reason to practice scorched-earth litigation.  They can be as ruthless as they want – no one knows who they are and, very likely, no one will ever see them again.

Practice here in Nashville is completely different.  Although our city is booming, we have only four active U.S. District Judges and only four chancellors at the state court level.  In this big small town, everyone knows everyone. And how you conduct yourself in a single case can be remembered for the rest of your career.  Although we advocate zealously, we refuse to stab each other in the back.   And we know how easy it is to be short-sighted.  Given the close-knit relationships here, we still litigate with a Southern gentility, or what the profession calls “civility.”  I hope it always stays this way, even as we grow and welcome newcomers from other jurisdictions.

Lessons Businesses & Public Figures Can Learn from NCAA Football Players

Businesses who use celebrities to endorse their products should pay attention to two recent decisions, as should celebrities and other public figures.

In two recent cases, former college football players filed suit against Electronic Arts, Inc., better known as EA, the maker of video game "NCAA Football."  The two primary plaintiffs were Ryan Hart, who played quarterback for Rutgers in the early 2000s, and Samuel Keller, who was QB at Arizona State in the mid 2000s.


Although EA never used the players' names, it honed in on real-life details of each player, including jersey number, jersey color, type of helmet and facemask, player height and weight, physical appearance, and throwing and interception stats.  The players sued on behalf of themselves and other players.  The heart of each suit was that EA had violated their right of publicity.

The right of publicity is a creature of state law and, although they have a lot in common, all 50 states treat the right of publicity differently.  Typically a plaintiff must show the a defendant used an individual's name, photograph or likeness to advertise goods or services without the plaintiff's prior consent.  The right typically covers any form of an individual's likeness or persona.  For example, Bette Midler sued when Ford used someone who sounded like her to promote a car in a song, and Vanna White sued Samsung for using a robot dressed in a wig, gown and jewelry to turn letters on a game resembling Wheel of Fortune.  The right also typically covers any medium, from photographs to films to video games.

In these two most recent cases, EA argued that it had a First Amendment right to use these college players' likenesses in its video games.  The Third Circuit and Ninth Circuit Courts of Appeals acknowledged that a First Amendment right of expression extends to video games but held that the players' right of publicity trumped EA's First Amendment right.  The courts both employed the "Transformative Use" balancing test and concluded that EA's video game failed to transform the players' likenesses.  The dissenting judges in both cases disagreed, finding that the video games were highly transformative, given that gamers have the ability to change the avatars' appearances and to never encounter Hart or Keller if they so choose.

Businesses who utilize the images and personas of public figures and celebrities should always obtain consent prior to using the image.  Celebrities often give consent to have their songs recorded and published (a right governed by copyright), but that consent often does not encompass the right of publicity.  Celebrities should always check to see to what extent they have consented to having their right of publicity used.  The right of publicity continues to be one of the most rapidly changing and evolving areas of intellectual property law.

Nashville Film Festival Begins -- Good Time to Consider Legal Issues in Film

Get ready for some great films, Nashville.  Running continuously since 1969, this year's Nashville Film Festival is slated for April 18-25, 2013.  This year's Festival will also celebrate Kurdish Films, presented in part by the Academy of Motion Picture Arts & Sciences.

This is also a great time to consider legal issues in film.  For film-makers, these range from obtaining clearance to use music in films to protecting your script and your work through copyright, both pre-publication and after the movie has been shown to the public; from protecting the name of your film and merchandise through trademark to obtaining permission to model characters after actual people (the "right of publicity"); and from drafting contracts to obtain financing to negotiating distribution deals.  When these issues aren't dealt with on the front end, confusion ensues, feelings get hurt, and lawsuits get filed.

For some good free resources, check out the websites of Arts & Business Council of Greater Nashville and FilmNashville.  For more tailored advice, talk with your attorney or one who focuses on entertainment legal issues.

Stop by this year's Film Festival for not only a movie but also one of the panels that explore some of these specific legal issues.  Get your tickets here.


Three Days in January that Made Copyright History

Three days in January 2012 witnessed some of the most important events in recent history in the world of copyright. On January 18, the Supreme Court issued Golan v. Holder, which held that Congress is empowered remove works like the symphony classic Peter and the Wolf from the public domain in the United States, preventing orchestras, musicians and others from using these works unless they get permission and pay a license fee to the copyright holders. On the same day, the technology community mobilized millions of people to voice their disagreement with SOPA and PIPA, two bills supported by the entertainment industry that were designed to fight online piracy. After blackouts by Wikipedia and protests encouraged by tech giants like Google, by January 19 most members of Congress had withdrawn their support for both bills.On January 20, the United States arrested Kim Dotcom. He was arrested in Auckland, New Zealand for a file-sharing site called that was based in Hong Kong. The site allegedly generated over $175 million by illegally copying and distributing music, movies and other copyrighted material without authorization.

What does all of this tell us? Three important things.

First, protection of our country’s intellectual property relies on international cooperation. For us to arrest Mr. Dotcom, who is alleged to have stolen millions from American content creators, we needed the help of authorities in Hong Kong and New Zealand. Which is where Golan v. Holder comes in: no one likes hearing that Peter and the Wolf and other classics have fallen out of the public domain and back into exclusive ownership, but for our country to benefit from international copyright treaties, we also must abide by them. International treaties are what prompted Congress to pull certain works out of the public domain, and what prompted the Supreme Court to reach the conclusion it reached in that lawsuit.

Second, if we didn’t recognize it before the rise and fall of SOPA and PIPA, there’s no denying the tension between content creators and content providers; between the entertainment industry and the technology industry. Our technology is intertwined with our entertainment and our content, so we need these camps to work together. Unfortunately for now, the tension is insurmountable: technology camps want free flow of information while content creators want protection for their original works. Ultimately, these two teams will have to reach a compromise, and Congress cannot ignore the need to protect American intellectual property from online international piracy, like the theft allegedly coordinated by Mr. Dotcom.

Finally, the online protests of SOPA and PIPA mobilized a new segment of concerned citizens. Google claims it gathered over seven million signatures in 24 hours in opposition to the bills. The implications of that statistic are at the same time impressive, intimidating and infinite.


Recent Interview on TV about Recapturing Copyrights

Recently my law partner, Stephanie Taylor, and I were interviewed by Jesse Goldberg, on his show, “Mind Your Own Music Business.”  Following up on an article that I wrote for The Tennessean, we discussed copyright recapture rights. 

This is a very important issue right now for any authors and heirs of original works who transferred rights in their copyrights in the past under the 1976 Copyright Act, which affects works first published on or after January 1, 1978.  Thirty-five years after the initial transfer, a five year window opens up during which the authors/heirs may provide notice of their desire to recapture the copyrights that they previously transferred.  To make it more complicated, authors and heirs must provide notice of their intent to recapture no earlier than ten, and no later than two, years prior to the notice being effective.   Thus, for those authors wishing to recapture copyrights that they transferred in 1978 (for which the five year window opens up in 2013 and runs through 2018), the minimum two-year notice prior to the five year window is right now in 2011. 

We discussed a variety of issues, many of which have not made their way to the courts yet, but surely which will require litigation.  These included whether sound recordings are considered works for hire, and thus not eligible for recapturing; whether session musicians, producers, sound engineers, and others might qualify as authors; and the gap grant problem for those authors who entered into contracts transferring their copyrights pre-1978, but who didn’t create or publish their works until after January 1, 1978.  We also discussed how Nashville courts likely will be called on to decide some of these significant legal issues in the coming years, given Nashville’s importance in the entertainment, publishing, and technology industries. 

As soon as the show airs on TV and is up on the web, I'll update this post and provide links.

"Anonymous Online Defamation: Fighting Back to Protect Yourself and Your Business"

With the explosion of social media, businesses and individuals are becoming daily victims of anonymous online defamation.

With tools like Twitter and Topix, now everyone has a megaphone to say whatever they want to the widest possible audience.  Many say this is freedom of speech at its best.  But as with anything, this freedom comes at a high price.

Putting bloggers on equal footing with traditional journalism has many upsides, but now we are beginning to see the downsides, as well. Online reviews of restaurants and movies, for example, are often helpful. Generally, those reviews state opinions rather than facts, such as: “This movie was terrible,” or “This restaurant has the best food.”  Opinion cannot constitute defamation. But websites today also allow patients to review doctors, students to review teachers, and customers to review everything from iPads to car repair service. When these reviews include untrue facts, they may constitute defamation.  For example, a review expressing a diner’s opinion about how food tastes is mere opinion and does not constitute defamation, but a review claiming that a restaurant had a health department rating of 65 when the actual rating was 97 is an untrue fact that likely could serve as the basis of a defamation claim.

Sometimes the negative comments are minor and the best advice is to brush them off.  But other times the comments are serious and deserve a stronger response, such as when they indicate you committed scandalous or criminal conduct, that you are untrustworthy, or that you have committed malpractice. These comments can damage your reputation and harm you economically if they steer business away from you.  When that happens, especially if it happens more than once from the same person, you may have grounds to assert a claim of business interference, and not just defamation.

One of the biggest challenges with the Web 2.0 is the fact that most online reviews and comments are made anonymously.  If that’s the case, how can you protect yourself?  How can you even find out the identity of the poster?

Fortunately, victims are not without recourse.  Most people think that they can say whatever they want online and that no one will ever know who said it.  This is incorrect.  There are ways to find out the identity of online posters, but you need to act quickly since Internet service providers (ISPs) often destroy records of online activity after 180 days.

If you find that you are the victim of disparaging comments made online, you won’t get very far suing the website that hosts the comments (known as user generated comment or “UGC”).  Hosting websites are immune from liability related to UGC under Section 230 of the Communications Decency Act.  But you can have your attorney send a cease and desist letter to the website demanding that the comments be removed.  Sometimes websites comply; other times their terms and conditions do not allow them to comply without a court order.

When you want to find the identity of the anonymous poster, and not just have the comments removed, you can also file a “John Doe” lawsuit against unknown defendants, empowering you to subpoena the host website for the IP address of the person posting the comments.  From there, you can determine the ISP.  Because the Cable Communications Policy Act of 1984 prohibits ISPs from disclosing personally identifying information about Internet users to non-governmental entities without a court order, the next step is to obtain a court order allowing you to subpoena the ISP for the identity of the poster.  Recently, a court in Nashville refused to allow an anonymous poster to hide his identity, and allowed the victim to move forward with its subpoena of the ISP.

Finally, responding to anonymous online defamation often requires a multi-faceted approach. Recently, one of my business clients found several comments online that accused its employee of criminal and scandalous conduct. Given the context, the client needed legal advice on not just the social media issues, above, but also with employment law issues.  If defamatory comments are made that threaten to damage your reputation and your business, don’t just sit back and take it.  Instead, consider your options in fighting back.