5 More Contested Cases Before the Copyright Claims Board
Created by the CASE Act in 2021, the Copyright Claims Board (CCB) opened its doors in June 2022, offering a small claims court alternative to the federal court system for copyright disputes.
As we near the one-year mark of the CCB, it’s safe to say that things have moved slowly for the board. As of today, the CCB has only decided one case (with another final determination in a case that was settled) and, though hundreds of cases have been filed, they’ve been beset by filer mistakes, opt-outs and early dismissals.
However, things are starting to pick up steam for the CCB. In May, there have been five cases where the respondent has filed a response, setting the stage for a contested case.
This raises a simple question: What cases are going the distance in the CCB, and what are the likely implications and outcomes?
To that end, we’ll take a look at the five newest contested cases one at a time.
22-CCB-0244: Grand United Order of Oddfellows in American and Jurisdiction v. Cannon
Filed in November 2022, the case pits the Grand United Order of Oddfellows (GUOOF) against a former member, Shawn O’Cannon.
The case is somewhat backwards, as GUOFF filed the case seeking a claim of non-infringement of a book created by O’Cannon. O’Cannon had threatened legal action against the organization after they allegedly used work from a book that O’Cannon created entitled A Compilation of books of the Grand United Order of Odd Fellows.
According to the complaint, O’Cannon does not own the material in that book, noting that most of it was public domain and that all of it was created by members of the group. O’Cannon, on the other hand, argues that he does own the copyright in the compilation as a whole and the changes/updates that he made to the works as he went compiled the work.
According to O’Cannon, he only made two copies of the book, one of which was gifted to a member of the GUOOF, only to have the organization make unauthorized copies and even sell the work. Thus, the GUOOF is seeking a statement that the use was non-infringing while, obviously, O’Cannon wants damages connected with the alleged infringement.
This case gets into the weeds of copyright law. It deals with both the question of what rights does one have to a work they edited, and the concept of copyright in a compilation.
To be clear, compilation works can have copyright protection, as long as there is a requisite level of creativity in the selection. A phone book that simply lists every person alphabetically doesn’t qualify for protection, but a top ten list of the best restaurants in an area might.
That may be difficult for O’Conner to prove in this case. Much of this will hinge upon details that aren’t readily available in the claim and response.
In the end, this will be an interesting case to watch as the CCB will be examining some of the more nuanced areas of copyright, something we haven’t seen it do yet.
22-CCB-0093: Markham v. Horton Records, LTD.
Originally filed in August 2022, this case pits songwriter Jimmy Markham against the record label Horton Records.
According to the amended claim filed by Markham, Horton records has been making use of and selling copies of covers of two songs he wrote, Black Cherry and Desiree. He claims that the company has no license to use the songs and has paid no royalties.
Horton, for their part, don’t deny using the compositions. However, they say that the use was covered under a compulsory mechanical license and that they have paid royalty through Easy Song Licensing and that any issues with payment are due to bad metadata and information.
They further claim that Markham is not the sole composer of the songs, meaning that he is not the sole copyright holder and doesn’t have standing in court. Markham is seeking $22,500 in statutory damages, and Horton is asking that the case be dismissed.
This case hinges on whether Horton completed the requirements of the compulsory license. On that front, Horton makes a good argument that they at least tried, even providing specific royalties that were paid.
However, this issue of metadata and payment of mechanical royalties is a thorny one that goes well beyond this case. For example, the Music Modernization Act of 2017 was passed to address these issues when it comes to streaming services. Even with that law, there have been plenty of songwriters who have struggled to collect royalties due to questionable metadata.
Ultimately, the case may not be decided on those grounds. The issue of whether the compositions are works of joint authorship may torpedo Markham’s arguments. If he doesn’t have an exclusive right to license the work, which he wouldn’t if it’s a joint work, he has no standing in the case.
All in all, this is a rare foray for the CCB into the world of music licensing, making it an important one to watch.
22-CCB-0008: Corjulo v. Mandrell
Filed in June 2022, this case was actually the 8th one filed with the CCB. However, progress on the case has been slow as the respondent, Scott Mandrell, has been largely uncooperative with the process.
The claim was filed by photographer Daniel C Corjulo, who claims that Mandrell used images he took of from a trip down the Mississippi River on his website without permission. Furthermore, Corjulo claims that, when he contacted Mandrell about the infringement, he refused to take down the work and threatened him.
That alleged gruffness continued with Mandrell refusing service in the case and telling the process server to, “get off his property,“ according to the server.
Mandrell, initially, did not respond to the case. He did not attend a pre-discovery conference in January 2023 and the case was heading toward a default. Mandrell didn’t email the CCB until April 2023, narrowly averting a default.
Mandrell has now filed a response to the claim and argues that the works were shared freely with him as well as others, that they had, “reason to believe they were unavailable to us since it was and remains our vessel.” He further adds that Cojulo was happy about the use of the images until he and others “publicly exposed the author for falsifying material facts in his book.”
On the whole, Mandrell’s arguments are not very convincing. While he claims to have not used the images for any kind of profit, that doesn’t mean the use is not an infringement. Furthermore, any claim to an implied license or even a verbal one erodes after he was informed, in writing, to stop using the images.
However, one area that is interesting is the issue of statute of limitations. According to Mandrell, Cojulo was aware of the alleged infringement as far back as 2016, and failed to take action until recently.
But even this likely falls short. Since the image wasn’t removed from the website, the last act of copyright infringement may still not have happened. As we’ve seen in other cases, even a long-forgotten webpage can sustain a copyright infringement claim as long as someone accessed it within the past three years.
Still, it will be interesting to get the CCB’s take on these issues of statute of limitations because there is currently a divide among US courts we have no idea how the CCB will handle such issues.
22-CCB-0058: Shocked v. Billington
Originally filed in July 2022, this case went through a few amended claims before finally being approved in December 2022.
The facts of this case are remarkably simple. Michelle Shocked is a musician who filed the case against eBay seller James Billington. According to Shocked, Billington was selling an unlicensed CD of her music named The Texas Campfire Tapes.
Billington, for his part, says that he bought the CD from a Goodwill store and even provided the receipt of his purchase. He argues that the first sale doctrine gives him the right to resell any legally-acquired copy he owns.
While there may be an open question about whether the CD is authorized, it seems pretty clear that Billington did nothing other than purchase a used CD from a thrift store and try to resell it online. If it is a bootleg CD, it’s unlikely that Billington was aware of it.
However, it is unclear from the public record why Shocked believes that the CD was not used or second-hand. The album itself was released in 1986 and the photos provided match the official release. Other copies of the CD are available.
The case is a baffling one, but Bilington has provided some proof of a legitimate purchase. If so, he’s fully right that the first sale doctrine protects his right to resell the work. Though he may have some liability if he was reselling a bootleg CD, even if doing so unknowingly, there’s no evidence in the public record that the CD wasn’t authentic.
Still, this is another area I’m surprised to see the CCB delve into, so it will be interesting to see how they handle this case, especially with the limited evidence on both sides.
22-CCB-0269: Armatus Dealer Uplift, LLC v. Wooden Automotive Consultants
Originally filed in December 2022, the case pits Armatus Dealer Uplift, a Retail Warranty Reimbursement firm, which helps car dealers get full reimbursement from manufacturers for warranty repairs, against a competing service, Wooden Automotive Consultants.
According to Armatus, as part of their promotion of their service, they created a video entitled Armatus Dealer Uplift: Retail Warranty Reimbursement that explains the type of work they do. They then claim that Wooden then took the script, structure and other elements from that video to produce a remarkably similar one.
They highlighted the similarities between the videos with a PDF of side-by-side screenshots, showing the same verbiage (with different visuals) in each video in the same order.
Wooden, for their part, denies any infringement. They claim that they hired an unnamed third party to develop the video and website, meaning that they are not liable. They further claim that the similarities in the videos are not protectable under copyright and that Armatus has not suffered any damages.
They add that they worked quickly to remove the video from their site when they were notified and that they were, at the very least, not willful infringers.
To my mind, Wooden’s arguments fall pretty flat. First, they argue that they aren’t responsible for the infringement because a third party designed the site. However, as we’ve seen time and again, that isn’t the case.
It was still their website, they were the ones distributing the allegedly infringing video, and they were the ones benefiting from it. Depending on the contract they have with their designer, they may have a case against them, but that’s a separate matter.
Likewise, while they are correct that the individual elements of the videos that are similar wouldn’t qualify for protection, the original claim highlighted nine separate similarities between the videos, which is impressive because they are both roughly 90 seconds long.
Armatus provides a pretty compelling argument that the Wooden video is a derivative work based on their video. While this might be a situation where the damages should be mitigated because of Wooden’s lack of knowledge and quick action, Armatus makes compelling arguments that infringement did take place.
Given that so many of the CCB cases, including the first one that was decided by the CCB, involved photographers, I was surprised that only one of these five did.
This grouping is actually a very diverse collection of both creator types and legal issues. Though there’s still plenty of opportunity for any or all of these cases to be settled or otherwise dismissed, they’ve passed the largest hurdles in filing a case with the CCB, so we will likely start seeing some clues on how the CCB will rule moving forward.
In short, things are starting to heat up for the CCB and, after a long period where little was going on, we’re now going to get some answers on how the CCB will decide these cases.
These will be five cases to watch, especially if you are considering filing a case with the CCB in the near future.