This DMCA Notice Got Runover By A Reindeer...

from the sing-along! dept

Tue, Jan 18th 2011 9:07am — Mike Masnick

Eric Goldman alerts us to a lawsuit involving copyright on the infamous song, Grandma Got Run Over By A Reindeer" (yeah, I thought we'd heard the last of that one for another 11 months too...). Apparently, one of the performers on the original song, Elmo Shropshire holds at least some of the copyright on that song (on the underlying composition). Shropshire got upset when he learned that Canadian resident Aubrey Canning had uploaded a video to YouTube, which involved pictures of (you guessed it) reindeer, along with a cover version of the song. After sending a takedown to Canning (which he ignored) and then to YouTube, the video was taken offline. Canning filed a DMCA counternotice, claiming fair use, and Shropshire sued Canning and YouTube (then later dropped YouTube).

The court has ruled on the initial part of the lawsuit (ruling embedded below), dumping the lawsuit mainly due to mistakes by Shropshire, who may amend the lawsuit and refile (which seems likely). Still, there are some interesting elements of the lawsuit, including that part of Shropshire's claims is that the "fair use" DMCA counternotice was a misrepresentation and thus violates 512(f) of the DMCA. In the past, we've only seen 512(f) used (and rarely at that) against people for filing bogus takedowns, rather than for bogus counternotices. It's the part of the statute that says you can be liable for damages if you misrepresent anything in filing DMCA notices. It seems like a stretch to claim that a legitimate belief that a video was fair use -- even if it later turns out it was not -- would qualify as a 512(f) trigger. In fact, the court points out that nothing in Shropshire's lawsuit appears to indicate any actual misrepresentation.

On top of that, the main claim of the lawsuit -- straight up infringement -- failed because Canning is in Canada, and Shropshire didn't do much to say that any infringement happened in the US. Shropshire had initially claimed that the creation of the video itself was infringing, but the court points out that the creation was entirely in Canada. Shropshire's response was to then say that it was the uploading of the video in the US that was the problem. The problem with that is that's not what he claimed originally -- so changing the claim midway through isn't looked upon kindly. It's worth pointing out that Shropshire (and Canning, for that matter) appear to be fighting this battle without any lawyers, which makes for a high level of sloppy arguments.

Another -- perhaps bigger -- mistake that Shropshire made is that he apparently did not inform the co-holder of the copyright on the composition, Patsy Trigg (via Kris Publishing) and did not include Trigg/Kris as co-plaintiffs in the lawsuit. Shropshire claims he was only seeking his portion of the royalties for this video, so he didn't need to include Trigg (who appears to be his ex-wife). However, the court notes that Trigg and Kris Publishing are a "necessary and indispensable party" to any such lawsuit, since their agreement is that Shropshire and his publishing representative, Evergreen Publishing, cannot grant a license without approval of Kris Publishing -- and that Kris Publishing "is entitled to a portion of �all royalties, monies, and all other compensation� associated with musical composition." In other words, any money he gets for the song, she gets some too -- and thus she should be a part of this lawsuit.

Along those lines, another possible mistake is that Shropshire had granted an exclusive license over the copyright on the composition of the song to the publishing company, Evergreen Publishing, which was not a party to the suit. The court declines to rule directly on the matter, but at least suggests there may be an argument that Evergreen should be a party to the lawsuit as well, rather than Shropshire trying to work his way around them.

One final point: this seems like a ridiculous amount of work to go through to slap down someone who put up a video of your campy novelty song with some photos of reindeer. But, perhaps that's just me.

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Filed Under: copyright, dmca, elmo shropshire

31 Comments

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Anonymous Coward, 18 Jan 2011 @ 9:22am

he court notes that Trigg and Kris Publishing are a "necessary and indispensable party" to any such lawsuit, since their agreement is that Shropshire and his publishing representative, Evergreen Publishing, cannot grant a license without approval of Kris Publishing -- and that Kris Publishing "is entitled to a portion of �all royalties, monies, and all other compensation� associated with musical composition." In other words, any money he gets for the song, she gets some too -- and thus she should be a part of this lawsuit.

There is a reverse on this too, which makes the DMCA pretty much correct (even if filed incorrectly): Nobody could issue a license without the other, and as such, the guy in Canada could not obtain a license.

As YouTube is based in the US, the copyright violation occurs in part in the US. As the US and Canada have various trade agreements (including some on copyright), Canada isn't a place where someone can go hide. Sort of explains why ACTA style agreements are needed to make this stuff more transparent, even as it goes over borders.

In the end, the judge explained to the plaintiff exactly how to get the job done. It could have more easily been done by only sending a DMCA to youtube, who would have likely just taken the video down.
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- Anonymous Coward, 18 Jan 2011 @ 9:40am
  
  Re:
  Just so long as the law is saving culture otherwise what would be the point to all this?
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- MrWilson, 18 Jan 2011 @ 9:40am
  
  Re:
  Oh the irony of saying that ACTA style agreements lead to transparency! The only transparency involved in ACTA was how transparent it was that the negotiating parties were being underhanded and secretive and were subverting democratic processes.
  
  ACTA style agreements are needed like a dead artist needs extended copyrights to incentivize the creation of more works.
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- Anonymous Coward, 18 Jan 2011 @ 9:57am
  
  Re:
  You fail to see the point... he didn't want the video taken down (he did as last resort), he wanted his cut of the profits.
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  - Vincent Clement (profile), 18 Jan 2011 @ 11:02am
    
    Re: Re:
    What profits?
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    - The Groove Tiger (profile), 18 Jan 2011 @ 6:58pm
      
      Re: Re: Re:
      All that internet money!
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- Mike Masnick (profile), 18 Jan 2011 @ 11:04am
  
  Re:
  It could have more easily been done by only sending a DMCA to youtube, who would have likely just taken the video down.
  
  As mentioned in the very first paragraph, the guy DID send a DMCA takedown to YouTube who took it offline.
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  - Pamela Sue (profile), 19 Jan 2011 @ 8:59am
    
    Re: Re:
    Yes. And then the defendant filed a counter-notification even though he did not own any rights to the recording/song/photos.
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- Richard (profile), 18 Jan 2011 @ 1:02pm
  
  Re:
  There is a reverse on this too, which makes the DMCA pretty much correct (even if filed incorrectly): Nobody could issue a license without the other, and as such, the guy in Canada could not obtain a license.
  
  For cover versions the license is compulsory. All the guy had to do was go to the appropriate agency and pay the fee. No-one can stop him.
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  - Pamela Sue (profile), 19 Jan 2011 @ 9:04am
    
    Re: Re:
    Ricahrd, A "synchronization" license is different from a license to make a music CD. You can not take a compulsory "synch" license. You have to be granted the license by the publishers.
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- Pam Wendell, 19 Jan 2011 @ 8:15am
  
  Re:
  A DMCA was filed with You Tube. The defendant then filed a counter-notification, even though he did not own the copyright OR the recording he was using OR any of the photos for that matter. So You Tube re-instated the video leaving no choice for the Plaintiff except to sue to have it removed.
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jenningsthecat (profile), 18 Jan 2011 @ 9:40am

Shooting oneself in the foot...
Gee - it's amazing how hard some people will fight against free promotion for their songs. Likelihood of the YouTube posting causing even one lost sale? Pretty close to ZERO. Likelihood of the YouTube posting generating sales that would otherwise never have occurred? Very high.

I don't understand how people can think that a lack of exposure is somehow better than a very small handful, (if that), of sales lost due to 'pirating' some YouTube posting.
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- Anonymous Coward, 18 Jan 2011 @ 9:59am
  
  Re: Shooting oneself in the foot...
  Exposure doesn't pay the bills... any "1 hit wonder" is likely to want "his share of the profit" as they like to call it.
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- Anonymous Coward, 18 Jan 2011 @ 10:06am
  
  Re: Shooting oneself in the foot...
  I wonder how many of the photographers are filing DMCA notices for the pictures used in the video? My guess is zero.
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PRMan, 18 Jan 2011 @ 9:48am

I wonder why he's divorced...
Hmmm....
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- Pamela Sue (profile), 19 Jan 2011 @ 8:27am
  
  Re: I wonder why he's divorced...
  Not divorced. Elmo is very happily married and has been for 11 years.
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Anonymous Coward, 18 Jan 2011 @ 9:53am

Guy takes song - guy creates new medium for song to exist in - song was a cover (unedited & unchanged) - new work meant for non-commercial activities = fair use.

Am I missing something here?
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- Marcus Carab (profile), 18 Jan 2011 @ 11:36am
  
  Re:
  Am I missing something here?
  
  a high-priced lawyer
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- Anonymous Coward, 18 Jan 2011 @ 11:53am
  
  Re:
  He put it on youtube, which is commercial in nature.
  
  Remember, fair use for non-commercial means keeping it to yourself. Publishing it in public, even if you have no intention of making money from it, makes it a commercial work. Putting it on a for profit website (trading hosting for the video) makes it a commercial transaction.
  
  Perhaps you need to relearn what "non-commercial" really applies to.
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  - Anonymous Coward, 18 Jan 2011 @ 12:50pm
    
    Re: Re:
    "Publishing it in public, even if you have no intention of making money from it, makes it a commercial work."
    
    Better to be fool and keep your mouth shut, then to say something and prove that you are.
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  - Anonymous Coward, 18 Jan 2011 @ 12:50pm
    
    Re: Re:
    "Publishing it in public, even if you have no intention of making money from it, makes it a commercial work."
    
    Better to be fool and keep your mouth shut, then to say something and prove that you are.
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  - Richard (profile), 18 Jan 2011 @ 12:57pm
    
    Re: Re:
    Remember, fair use for non-commercial means keeping it to yourself. Publishing it in public, even if you have no intention of making money from it, makes it a commercial work.
    
    You are simply incorrect here.
    
    Read (for example) the terms and conditions for non-commercial use of Magnatune music which is licensed via a cc non-commercial license and you will find that YouTube is regarded as non-commercial.
    
    You are trying to push the law beyond what it actually says. (A common trait amongst legal extortioners).
    Using the logic that you are applying I could prove that absolutely EVERY use is commercial.
    
    It is you that needs re-education.
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  - Mike Masnick (profile), 18 Jan 2011 @ 5:25pm
    
    Re: Re:
    Remember, fair use for non-commercial means keeping it to yourself. Publishing it in public, even if you have no intention of making money from it, makes it a commercial work. Putting it on a for profit website (trading hosting for the video) makes it a commercial transaction.
    
    Almost every claim in the paragraph above is false.
    
    I mean, you're not even close.
    
    Putting content on YouTube does not take away fair use defenses. Publishing something in public does not make something commercial. And, even if something is commercial (which this was not), it does not remove a fair use defense. Commercial use is only one factor, and as we've discussed many times in the past, there is a ton of fair use that is commercial.
    
    Not sure why you would put forth an entire paragraph that is 100% wrong, but next time, perhaps, consult the law.
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    - The Groove Tiger (profile), 18 Jan 2011 @ 7:03pm
      
      Re: Re: Re:
      How do you publish something in private anyway? Do you privash it?
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Logan2057 (profile), 18 Jan 2011 @ 10:06am

DMCA NOTICE
What I find hilarious after reading this story is the fact that apparently the original writer of the song gave them a tape to learn the song. Nowhere in the story does it say he gave them any type of rights to copy-right it or to start a company based on it. Seems to me the original creator of the song is the one who should be issuing the DMCA take down notice not someone who simply sang the song. Here's the link to the information:http://en.wikipedia.org/wiki/Grandma_Got_Run_Over_by_a_Reindeer
Take a look and see if you see where the original writer as I said, gave them the rights to that song to do as they see fit.
Maybe I'm crazy but this whole law suit seems a massive waste of time
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Anonymous Coward, 18 Jan 2011 @ 10:20am

Can't blame a man for falling on hard times and mustering all his resources to make a few bucks. Oh wait, yes I can, he is wasting my tax dollars on legal shenanigans while empowering bloodthirsty lawyers. Screw that guy.
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mike allen (profile), 18 Jan 2011 @ 10:59am

As far as I can see it is a cover version since when are cover versions of songs illegal i assume the writrers get their share of the royalties. THEREFORE TELL EM TO STICK IT WHERE THE SUN DIONT SHINE.
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- Pamela Sue (profile), 19 Jan 2011 @ 8:39am
  
  Re:
  "Cover" versions of songs are legal as long as the artists are paying the publishing royalties. Your assumption that the "writrers" of the song get their share of the roylties is wrong. Although this was a big hit in Canada, the writers and publishers have not been paid in years. They possibly do not want to advertise on You Tube for a version where they cannot make their living, which may take sales away from actual royalty-paying versions.
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Thomas (profile), 18 Jan 2011 @ 12:40pm

Why stop at just the one video?
I say we all pitch in and help get all performances of this song removed from everywhere.
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GeneralEmergency (profile), 18 Jan 2011 @ 3:47pm

Sing with me now...
"Shropshire got run down by his trial Judge..."
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Dan, 19 Jan 2011 @ 5:26am

It would be hilarious if..
It would be hilarious if a bunch of Canadians created more videos/covers of the song, posting them to servers in Canada. Fair use, and (in theory?) beyond the reach of DCMA.

Suck on that, Shropshire.
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