… and your own concert video recordings on YouTube could be infringing, too

Prince has been gone for nearly four years. But his presence still looms large over copyright law. Even in death, Prince’s estate continues to keep a watchful eye over potential infringers of his musical works.[1] The latest dispute is a potentially haunting restriction of a popular feature on YouTube: people posting video clips of live performances. On January 6, 2020, the federal district court in Massachusetts determined that Prince’s estate has the sole right to distribute video clips of his live performances and that uploading certain song clips to a YouTube channel may even constitute copyright infringement.[2]

This case presents a multitude of legal issues to assess. Additionally, this ruling leaves a potential to a technology-based philosophical conundrum for future copyright cases as they intersect with YouTube style sites. I have a YouTube channel. On this channel I have posted covers of songs that I play on guitar. My videos are nothing fancy, but this recent case and others like it have determined that these videos can actually be infringing works. This article will try to address these legal landmines while exploring any possibility for copyright law as it exists today to be reconciled with how these personal camera-phone videos are treated by the law.

What is the problem here?

People holding up their phones and recording video of live music performances is a scourge upon society. For those in the audience it is not merely annoying, but also blocks the view of the show. Many bands hate this trend too – just ask Maynard how he feels. I tend to agree with this perspective. Yet I also love watching concert video clips at home on YouTube.

But the phones in the audience are just a personal pet peeve, right? Not exactly. Turns out copyright law has its own perspective on people recording video of live music performances. This view is not very audience-consumer friendly either. In fact it is a rather draconian viewpoint. Let’s use this recent Prince case as an example.

In Comerica Bank & Trust, N.A. v. Habib, the court granted summary judgment in favor of the bank (representing Prince’s estate) and against an individual who operated a free YouTube channel that posted random concert video clips. The court held that Habib’s posting of certain Prince songs recorded from concerts in 2013 and 2015 were infringing acts. The court also held that posting these concert video clips to YouTube was in violation of something called the civil anti-bootlegging statute,[3] which is also part of the Copyright Act.[4] Bootlegging. Yes, really. We really have returned to The Roaring ‘20s, huh? Prohibition-era terminology is back in style!

What did Mr. Habib do exactly? This case concerns five video clips from those two concerts that were uploaded by Habib to his personal YouTube channel using the internet alias “PersianCeltic.” These five videos were hand-held “grainy” video recordings that Habib took as a member of the audience watching the show. Just a regular guy in the crowd. Habib admits that these were recordings of Prince’s own songs being played by Prince himself and he did not alter the musical performance or the video recordings in any way. Nothing special; nothing fancy. Recorded video with his phone and then uploaded the same video clips directly to YouTube without any external editing. Thousands of people do this every single day.

The difference is that Prince (and now his estate) employed an entire staff of people whose only job was to monitor for unauthorized uses of his copyrights and trademarks, especially uses of his music. Not surprisingly, these videos were flagged and “takedown” notices were sent to YouTube on behalf of Prince’s estate, pursuant to the Digital Millennium Copyright Act (DMCA). YouTube then properly notified Habib of these acts, at which time Habib sent a counter notice asserting fair use of copyrights. Pursuant to YouTube’s policy, it then informed the Prince estate that it needed a court order to take further action. Prince’s estate subsequently sued Mr. Habib. Prince was notoriously litigious and this should not have been a surprise to YouTube or Habib. After all, the man used a symbol to get out of a record contract. He was not afraid of lawsuits or courtrooms or legal actions.

How is this Copyright Infringement??

The facts in this case are mostly undisputed. Prince performed live versions of his own songs but did not use pre-recorded sound records (i.e., not the radio versions). Meanwhile, Habib recorded all of this on his phone. This is where things get tricky. Prince owns the musical composition copyrights for all of his songs, specifically the musical composition (i.e., sheet music). Prince (or his record company) owns many of the copyrights for the parallel sound recordings too. Remember, there are usually two copyrights in any song. At the same time, believe it or not but Habib is the owner of the copyright in the video recording. As the person holding the camera-phone and recording the video, Habib is the “author” of that video and owns the copyright to any original works of art expressed in these recorded videos. See the conflict?

The difference is that as the author and owner of the musical composition, any rights in a “derivative work” also belong to Prince.[5] This includes the right to make audiovisual recordings of the song. Thus, any leftover originality in Habib’s video would be relegated to his selection of “lighting, timing, positioning, angle, and focus” as noted by the court.[6] Any music in Habib’s video still remains Prince’s intellectual property and the estate owns rights to that.

Habib made half-hearted arguments that he had an implied license because Prince made off-hand comments in music media about music belonging to the audience, but the court dismissed these claims as they lacked specificity to transfer a copyright interest to Habib himself. Habib also claimed “fair use” of Prince’s copyrights as an affirmative defense, but this argument was doomed to fail the entire time. Habib uploaded entire songs to YouTube, not short clips, and he used his channel to grow an audience that presumably took away from Prince’s own ability to market and sell video clips of these same songs. Fair use is usually a fact-intense and detailed analysis, and the court dutifully went through each of the factors in detail, but in this instance the fair use defense was dead on arrival because Habib could not make a reasonable argument for any of the fair use factors to apply in his favor.[7] Nor did Habib transform the underlying work (the songs) in any meaningful way as to give them a new meaning or perspective or provide comment or criticism in some newsworthy or academic manner. The fair use factors all strongly favored the Prince estate.

Habib also conceded that he did not acquire any synchronization license (or “sync” license) that would have explicitly allowed him to sync Prince’s music with any video that Habib recorded. This is necessary for almost any video using music on YouTube. I will address this license in more detail momentarily.

Without any other defenses, the court had no other option but to find Habib liable for copyright infringement of Prince’s musical compositions.

Wait! What about “cover” songs?
Are those Copyright Infringements too?

My first instinct was to try to compare Prince performing live versions of his songs to “cover” songs. Prince did not use the studio or master recordings when he played live. All of the music recorded by Habib was organic and unique to that venue on that night. Prince owned the musical composition copyright(s), but his live performance is essentially a “cover” version of his own songs. The Copyright Act explicitly grants a compulsory license to anyone who wants to cover a musical work, too. This statute merely requires that the artist covering the song not “change the basic melody or fundamental character” of the song.[8] This is what is commonly known as a “mechanical license.” A mechanical license is nice, but it is not a panacea.

The problem is that a “cover” and the mechanical license that goes with it only goes to the audio aspect of the live performance. It does not allow for a video recording of the cover that is separately fixed in an audiovisual work and subsequently distributed in commerce. This is where the “sync” license is separately needed. To play a cover of a song and have that fixed by a video recording, you need both the mechanical and the sync license to avoid copyright infringement. Fortunately, venues that host live music and internet outlets like YouTube often have pre-negotiated sync licenses in place and they have also struck deals with ASCAP and BMI to pay any necessary royalties for the use of third-parties’ musical composition copyrights.

In short, this is how most YouTube covers and videos overcome copyright takedown notices. YouTube even publishes a list of songs and sync license statuses – you can see for yourself what songs are currently granted permission to be performed on YouTube. The problem is that a songwriter like Prince can grant a license… and then revoke that same license. It is not a perpetual license and the artist usually retains exclusive rights which can change on a whim.

Alas, since Habib recorded this on video and uploaded that performance video to YouTube he cannot claim a sync license without express permission from Prince because most of these songs were not pre-approved. Since these are video clips, he cannot rest on having a mechanical license. The law simply is not on his side here. It also did not help that the Prince estate is doggedly aggressive on purging all unauthorized Prince music from the internet.

What was this about “Bootlegging” though?

Oh, yeah, the anti-bootlegging statute. It is really a thing! And adding insult to copyright infringement injury, the court also found Habib liable for violating the civil anti-bootlegging statute. This statute is part of the Copyright Act but it covers musical works that may not necessarily be subject to a copyright registration.[9] The actual text of the law is as follows:

(a) Unauthorized acts. Anyone who, without the consent of the performer or performers involved—
(1) fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord, or reproduces copies or phonorecords of such a performance from an unauthorized fixation,
(2) transmits or otherwise communicates to the public the sounds or sounds and images of a live musical performance, or
(3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or traffics in any copy or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred in the United States, shall be subject to the remedies provided in sections 502 through 505, to the same extent as an infringer of copyright.

17 U.S.C. 1101

This feels extremely harsh. The law was first passed in 1994 and amended in 2006, long before camera-phones became ubiquitous. The “internet” as we commonly know it in website form did not become mainstream popular until 1995. YouTube itself did not even exist until 2005. And the first iPhone did not hit the marketplace until 2007. This bootlegging act, while likely well-intentioned, certainly could not have foreseen the rise of YouTube, streaming video, HD video recording by a hand-held telephone, high speed internet, wifi transmission of data, or even common video-editing software.

The way this statute is written lacks technological foresight. To put it in a layman’s perspective, Congress originally passed this law when the predominant audiovisual technology was the VCR. We had not even reached the DVD stage of video presentation. In that context, this statute makes sense – because the act of recording, copying, and then distributing copies of a live music performance on a VHS tape was a cumbersome task and yet there was definitely a black market for this type of content.

Of course, that leads to a natural connection to the most famous “VCR” copyright case in law – the Sony case that went all the way to the Supreme Court.[10] While that case tried to tackle what was new technology at the time, the Supreme Court recognized that the law could not keep up with technology and tried to carve out pathways to avoid inherent copyright infringement every time a new technology was introduced to the masses. The DMCA, passed in 1998 and effective in 2000, was another attempt by Congress to regulate “new technology” through the Copyright Act.[11] At first, the DMCA was a satisfactory approach to technologies like Napster and the internet but it has since been abused and become a frustratingly outdated legal framework.

Conclusions? Thoughts?

Reading the first news stories on this latest Prince litigation made me feel queasy. Something did not feel legally justified in this transaction. Overall, I feel that the Copyright Act has failed to keep up with technology like YouTube, especially in the context of this case with Mr. Habib. Thousands of people very day are doing what Habib did, many thousands more are enjoying watching these videos on YouTube. While recording artists and musicians have had to adjust to the changing times, leaving a restrictive copyright law in place to punish consumers and everyday citizens is not the answer.

The law will always lag behind technology, but the answer is not to stick our heads in the sand and restrict the flow of creative output. Mr. Habib[12] may not be the ideal defendant and his case may lack the perfect facts to demonstrate these inadequacies in the law, but no matter how strong the copyright law (or the anti-bootlegging civil statute) may be, it will not stop people from recording video. It will not stop people from recording live music performances. It will not stop people from using their phones to share these videos with friends and others.

While the outcome of this case may be legally “right” based on the law as it is currently written, at the same time it feels out of touch with the current times and it calls for a new look at how we apply copyright laws to standard, daily activities by the average person.

[1] Copyrights remain valid for the life of the author, plus an additional 70 years! 17 U.S.C. § 302.

[2] Comerica Bank & Trust, N.A. v. Habib, No. 17-12418-LTS (D. Mass., January 6, 2020).

[3] 17 U.S.C. § 1101.

[4] 17 U.S.C. § 101 et seq.

[5] 17 U.S.C. § 106.

[6] The court cites to Harney v. Sony Pictures Television, Inc., 794 F.3d 173, 180 (1st Cir. 2013).

[7] Fair use is governed by 17 U.S.C. § 107 and the factors are generally: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

[8] 17 U.S.C. § 115(a)(2).

[9] 17 U.S.C. § 1001(a).

[10] Sony Corp. of Am. v. Univ. City Studios, Inc., 464 U.S. 417 (1984).

[11] I wrote my 2001 law review thesis on the DMCA, which was a new law at the time. I also write my masters’ thesis on the Sony Doctrine, which was based on the 1984 Sony copyright case and how that outdated law applied to the music industry resorting to suing its own customers for infringement in the 2003 timeframe. These topics are near and dear to me.

[12] There was a running “Habib” joke on Married… with Children, and I have done everything I can to restrain myself from making references to that show in this article. You’re welcome. I think. See generallyhttps://www.imdb.com/title/tt0642396/