Artist News Business News Digital Labels & Publishers Legal

Apple’s legal battle with Harold Arlen estate likely to proceed to jury

By | Published on Friday 28 January 2022

Harold Arlen iTunes

The Californian judge overseeing a legal battle between Apple and the estates of Harold Arlen, Ray Henderson and Harry Warren said earlier this week that he’s not inclined to grant either side in the dispute the summary judgements they had requested, meaning all elements of the case could go before a jury.

Apple was hoping to persuade the judge to remove the specific claims of wilful copyright infringement that have been made against it, the ‘wilful’ bit usually significantly increasing any damages that may be awarded down the line.

The tech giant argued that it was at least one step removed from any alleged infringement, and that it was impractical for it to check whether every label and distributor it has deals with in the US has correctly licensed the song rights contained in their recordings.

It also accused the three estates of choosing to go straight to litigation over the alleged copyright infringement because that way there could be decent damages for their lawyers to share in. However, the judge said that he felt there was probably enough factual disputes in this case to require jury deliberations, even on the wilful infringement claim.

This legal action was originally instigated by the estate of Arlen, who wrote ‘Over The Rainbow’, ‘I’ve Got The World On A String’ and ‘Get Happy’, among many other famous works. His estate argues that an assortment of labels and distributors have uploaded bootleg versions of recordings of those songs to otherwise legitimate download stores and streaming services.

The Arlen estate is suing not as the owner of the recording rights in those tracks, but in relation to the accompanying song rights. Although the mechanical copying of songs is covered by a compulsory licence in the US – via which the Arlen estate would usually get paid its song royalties – that compulsory licence does not apply if a recording is unlicensed. So the digital delivery of such recordings would infringe the song copyrights too.

The estate sued various digital platforms over the alleged infringement, with the estates of Warren and Henderson subsequently joining as co-plaintiffs. The original lawsuit was ultimately dismissed at the request of those various plaintiffs, but new litigation was then promptly filed, including against Apple and its iTunes Store.

According to Law360, at a hearing on the case earlier this week, Apple pointed out that the estates did not send takedown notices to the iTunes Store in relation to the specific tracks they are taking issue with in this lawsuit.

That’s because, Apple’s lawyers argued, the estates didn’t simply want the allegedly infringing tracks removed and any previously unpaid song royalties paid, they were more interested in pursuing millions of dollars in so called statutory damages through the courts.

Apple also noted that, with the iTunes Store in the US, it is not directly involved in the licensing of song rights – unlike with the Apple Music streaming service and the iTunes Store in most other countries.

That means it is the labels and distributors that need to sort out the administration of the aforementioned compulsory licence in relation to any songs contained in the recordings they release. Not being directly involved in that process, Apple added, it’s impossible for the tech giant to be proactively aware of any unlicensed songs, meaning it can’t possibly be liable for wilful infringement.

However, legal reps for the estates countered, while they may have not sent takedown requests relating to the specific tracks mentioned in this case, they had sent takedown requests in the past relating to other tracks and no action had been taken by the iTunes Store.

“I think the evidence will show Apple ignores takedown notices”, attorney Matthew Francis Schwartz told the judge.

The real problem here, Schwartz added, is that Apple does not have effective systems in place to deal with labels and distributors that routinely upload recordings to its system that they do not own or control. Companies which are, in Schwartz’s words, “unmitigated, massive pirates”.

Those companies – which are distributing recordings that they do not have any right to distribute – are unlikely to comply with their obligations under the compulsory licence on the songs side. And even if they do, that compulsory licence does not apply because of the infringement on the recordings side.

So, plenty of claims from both plaintiffs and defendants, creating the factual disputes which, judge William H Orrick pretty much concluded, need to go before a jury.

As this case proceeds, a separate lawsuit filed against Google on the same issue was seemingly settled last year.