Owners, Borrowers & Thieves 2.0 : Husch Blackwell Sanders LLP : First Amendment, Commercial Speech

Coming soon to a blogoshpere near you . . .

As regular readers of this blog know, we have often used this space as a means to follow and comment on the continuing tension that results from trying to fit new technologies, new types of content and new content delivery systems into old paradigms of intellectual property law.  Sometimes it's copyright -- for example, YouTube's assault on (or defense behind) the DMCA;  sometimes its trademark -- for example, whether Google Keyword ads constitute trademark use for purposes of an infringement claim; sometimes it's even Comics!

Recently we've realized that our mutual interest in emerging technologies and how the law practice can adapt to a changing IP environment has been prompting us to adapt our blogging to fit our own new paradigm.  We're very excited about some changes that will be coming shortly, including adding a fresh new voice or two.

We hope we've been "fairly useful" (to borrow Professor Sag's great blog title) so far, and hope you'll check in regularly as we go forward.

Stay tuned . . .  

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The new year opened with an intriguing study by two American University professors that concludes that many online videos which use copyrighted materials do so in ways that are eligible for fair use consideration under copyright law.  These are, of course, the very same uses of copyrighted material under siege by a variety of "anti-piracy" measures online.

The study--Recut, Reframe, Recycle: Quoting Copyrighted Material in User-Generated Video--identifies nine kinds of uses of copyrighted material that are eligible for fair use consideration. They range from the incidental (such as a video maker’s family singing “Happy Birthday”) to parody (a Christian takeoff on the song “Baby Got Back”) to pastiche and collage (finger-dancing to “Harder, Better, Faster, Stronger”).

Better yet, the study contains links to dozens and dozens of videos--many of which are brilliant and hilarious--that demonstrate these various kinds of uses. WARNING: For those of you who've lost an hour or so of office time to the lure of the Sirens of the Island of the YouTube Concert Videos, prepare to land on Calypso's Island of Transformative Use, where you will be tempted by the vicious satire of George Bush Don't Like Black People and the astounding tour de force of History of Dance and the marvelously clever Ten Things I Hate About Commandments. And many, many more.

Kudos to the study's authors, Pat Aufderheide and Peter Jaszi, for shedding some coherent light on this vital new realm of fair use.  Pat Aufderheide is a professor in American University’s School of Communication and the director of the school's Center for Social Media.  Peter Jaszi is a professor in American University’s Washington College of Law and co-director of the law school’s Program on Information Justice and Intellectual Property.

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William Patry, the Mack Daddy of Copyright, has a fascinating post entitled, "The Effect of Judicial Ideology in IP Cases," on his eponymous blog.  (Ah, I finally found a way to use "eponymous.")

Patry discusses an empirical study by Professors Matthew Sag, Tonja Jacobi and Maxim Stych, posted here on the Social Science Research Network, in which the authors present the results of their examination of the past 22 years of Supreme Court decisions in the fields of patents, copyrights and trademarks.  According to the abstract of their article, their analysis shows "that ideology is a significant determinant of cases involving intellectual property rights."  Even more interesting, ideology seemed to dictate different results depending upon the type of intellectual property involved, e.g., the Justices were more likely to vote against a trademark owner but for a copyright owner.

On a less scholarly basis I have noticed similar -- and similarly unexpected -- ideological divides in lower courts in the field of right of publicity.  Given that the right of publicity is a property right, judges from which end of the political spectrum are more likely to protect it?  Wrong.

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It used to be pretty simple.  You went to a record store (or mailed in your record-club form), bought an album or CD, and you owned it.  As the owner, you had certain rights--under the First Sale and Fair Use doctrines, you could make a copy for your own personal use, give it away,  share it, even sell it.  Easy, right?

Well, the times they are a'changin'.  Like many people, I haven't bought a new CD in a long time -- I have all my music on my iPod and download it from iTunes (legally, of course).  Now I'm excited about Amazon.com's new MP3 Store, which promises cheaper music downloads, better sound, and--most importantly--the music is DRM-free, meaning I can play it on any device.  Great! 

But not so fast . . .

 

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Sunday night, my multiverse collapsed upon itself. The Season Six premiere of Family Guy: Blue Harvest has been stalking me all summer.

At Comic-Con International in San Diego, Friday was Star Wars Day and Seth MacFarlane discussed the premiere episode during the Family Guy panel. You may have noticed sketches of Yoda and an Imperial Stormtrooper (along with tagline “May the Force be With You”) on the menu I used to discuss enforcement practices. Two weeks later, I was at the ABA Annual Meeting in San Francisco attending the Intellectual Property Law Section’s activities. While there, I had the opportunity to hear David Anderman Senior Director of Business Affairs (and lead attorney) for Lucasfilm Ltd. speak on a panel entitled “‘The Whole World is Watching!’ Privacy, Copyright and Parental Control in the Age of YouTube, MySpace and Beyond,” sponsored by the Forum on Entertainment and Sports Industries. During Anderman’s portion of the panel he discussed the Lucasfilm approach to enforcement and the Family Guy premier. Anderman explained how Lucasfilm’s relationship with Family Guy exemplifies a realistic approach to enforcement that understands branding and that has evolved with technological changes in content creation and distribution.

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While death has ended James Brown's reign as Hardest Working Man in Show Business, his post-mortem litigation may yet snatch from Elvis the title Hardest Work Corpse in Lawsuits.  His latest appearance was in the Illinois Appellate Court, where he was the headliner in the appeal of a right-of-publicity claim against a company that licenses copyrights for stock photographs.  The case presents an intriguing and somewhat confusing fair-use struggle along the border between right of publicity and copyright law.

The basic facts are straightforward: The main defendant, Corbis Corp., licenses the use of stock photographs and images. Its customers range from newspapers and magazines to advertising agencies.  It had, for example, given Rolling Stone Magazine a license to use certain photographs of James Brown in a profile the magazine published under the title Being James Brown.

So far, so good.  Entirely proper, no cause of action.

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"The law is a seamless web."  Whether Oliver Wendel Holmes or Frederick Maitland first made that enigmatic claim, one way to put it to the test is to set aside the familiar cubbyholes we use to sort out legal issues -- antitrust, copyright, UCC, trusts & estates -- and instead pick a theme.  My fellow blogger Geoff Gerber has picked comic books as his theme.  Study the law of comic books, O Spidey, and you may indeed find yourself in a seamless web.  My current seamless -- or perhaps seamy -- web is the realm of dirty words and dirty pictures, a/k/a, "Censorship & the First Amendment," a course I teach at Washington University School of Law.

But if you'd prefer to earn a Juris Doctor Dre or would rather be sippin' on Gin & Jurisprudence, try the Law of Hip Hop, which traces its origins to the Mack Daddy of "fair use" cases, Campbell v. Acuff-Rose. How can you not love a U.S. Supreme Court decision that quotes these timeless lyrics from Luther "Luke" Campbell's version of the Roy Orbison classic, "Pretty Woman":

Big hairy woman, you need to shave that stuff
Big hairy woman, you know I bet it's tough
Big hairy woman, all that hair it ain't legit
Cause you look like "Cousin It"
Big hairy woman

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As should be pretty obvious from most of the posts on this blog, we like to focus on new cases, new industry developments and new technology and how all those new things fit in with old (or at least older) legal constructs.   Today I want to draw your attention to a new resource that focuses on the old practice of settling cases.

I recently discovered The IP ADR Blog, a new blog hosted by Victoria Pynchon, Michael Young, Les Weinstein and Eric Van Ginkel, a group of well-respected alternative dispute resolution specialists in Los Angeles.  The blog focuses exclusively on IP litigation/ADR-related issues such as licensing structures, negotiation and IP asset valuation, all with an eye on getting litigating parties out of the courtroom and back to business.  Often one of the biggest challenges we face when advising clients involved in IP disputes is not letting the legal issues get in the way of seeing the business realities.  From what I've seen so far, The IP ADR Blog looks like it's going to be a great resource in meeting this challenge.

As Victoria Pynchon says in one of the first posts on the blog:

"Collaboration and reciprocity are the by-words of the blogosphere and the key to the settlement -- or the effective management -- of complex IP litigation."

I agree -- and in that spirit, I look forward to joining the dialogue and learning from these authors.

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That might be an increasingly popular refrain heard by Canadian pop star Avril Lavigne, who is getting a lot of attention right now for her songwriting practices.  Last week, Lavigne was hit with a copyright infringement lawsuit over her song "Girlfriend."  The plaintiffs are the founder and former road manager of the '70's pop band the Rubinoos.  They claim that Lavigne's hit infringes their 1978 release "I Wanna Be Your Boyfriend."  As you would expect, you can already find many comparisons on YouTube and elsewhere, including the Rubinoos own website.  (Of course, all those who posted snippets of both Lavigne's and the Rubinoos' copyrighted music on YouTube and elsewhere should have a fair use right to do so, as long as they only used as much of the songs as was necessary to facilitate their commentary.)  Eminent copyright scholars like William Patry and almost everyone else seems to have weighed in on whether the suit has merit. 

Lavigne publicly responded this week by essentially asserting a "no access" defense -- that is, she claims she never heard the Rubinoos' song, so couldn't possibly have copied it.  Curiously, Lavigne does not say whether her co-writer, producer/remixer Dr. Luke, ever heard the song.

The "never heard it" defense won't help Miss Lavigne out of her most recent copying flap, however.  In the last two days, similar copying claims have surfaced regarding another of her songs, "I Don't Have To Try."  This time Lavigne allegedly copied the song "I'm The Kinda" by Peaches, an artist (and song) that Lavigne recently publicly stated was one of her biggest influences. 

I'm no musicologist, but at first blush both claims appear to have some merit, and they can't be good for the young pop star's reputation.  It may be great to be in Rolling Stone and on Perez Hilton, but there are better ways to be noticed.

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Beware the RAM . . .

From Gary's iPhone to my TiVo to your computer, we've begun to take the existence and use of digital devices almost completely for granted.  Most of us never think about the vast amounts of digital data that are being processed through our devices' random access memory (RAM).  On the most basic (non-technical) level, all digital devices create and very briefly store--often for only fractions of seconds--transient data "buffer" copies of digital information in order to ultimately display and/or process that information for the end user. 

Cool, but so what, right?

 

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Launch day for perhaps one of the most widely anticipated - and certainly one of the most wildly hyped - consumer electronics products in years seems an appropriate time to reflect on the state of the digital music revolution. Apple's iPhone combines, among other features, the high-end cell phone and the now ubiquitous iPod music player. (For deep background, see Marty Schwimmer's analysis of the brief trademark fight Apple stumbled into when it announced the name of the new product nearly six months ago here and here.) As such, it represents the convergence of the phenomenon often credited with pushing the music industry into its current state of plunging sales and the phenomenon much of the industry is looking to for salvation. Regardless of one's view of file-sharing web sites and CD-ripping laptops, the fact that the iPod has been a catalyst to major changes in the way consumers acquire and listen to music cannot be denied. Less certain is whether the practice of purchasing ring tones and other tunes for cell phones will provide the new and sustainable stream of revenue the industry so desperately needs.

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At some point early on in a copyright lawyer's career (or at least in this copyright lawyer's career), usually while you are seated in a chain restaurant listening to the waiters sing an unfamiliar birthday song to the beaming fellow at the next table, that mental lightbulb blinks on as you realize, "They aren't singing the Happy Birthday song because it's still covered by copyright, this is a commercial establishment, and they'd have to pay royalties."  And then you connect the dots to the "fair use" doctrine, realizing you can still sing it at home or at a friend's house without fear of a visit from an ASCAP goon.

Take that thought over to the realm of Karaoke, which is the subject of a fascinating recent decision by the Sixth Circuit in Zomba Enterprises, Inc. v. Panorama Records, Inc.  As Circuit Judge Karen Nelson Moore astutely observes in her opening paragraph:

Countless people have lined up at various venues to perform their favorite songs with, and in front of, their friends. But few participants (with the possible exception of IP lawyers) ever stop to consider the intellectual property regime governing karaoke.

While the decision offers important insights on various copyright topics, including calculation of statutory damages, the "fair use" discussion will, if nothing else, make you admire the moxie of the defendant's attorneys -- or at least make you sympathize with their plight.

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The rulings contained within District Judge Dean Pregerson's opinion dismissing Carol Burnett's lawsuit against Twentieth Century Fox could have been predicted the moment we heard about the case. If ever there were a textbook example of the "fair use" doctrine in copyright law and the "parody" exception in trademark and dilution law, this was it.

Burnett had sued over a short clip from Fox's animated television show, Family Guy. In the scene, Griffin family patriarch Peter Griffin and his pals visit a porn shop. Upon entering the store, Peter remarks that it is cleaner than he expected. One of his friends explains that "Carol Burnett works part time as a janitor."  The scene shifts to an animated figure resembling the Charwoman character from the Carol Burnett Show mopping the floor next to bin of life-size blow-up dolls and  a rack of XXX movies.  Judge Pregerson explains:

"As the 'Charwoman' mops, a slightly altered version of Carol's Theme from The Carol Burnett Show is playing.  The scene switches back to Peter and his friends.  One of the friends remarks, 'You know, when she tugged her ear at the end of that show, she was really saying goodnight to her mom.'  Another friend responds, 'I wonder what she tugged to say goodnight to her dad,' finishing with a comic's explanation, 'Oh!'"

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Senator and Presidential candidate Hillary Clinton today unveiled her latest campaign video, the ostensible purpose of which is to reveal the theme song for her campaign.  But what makes it the cleverest campaign video this year also makes it the most interesting copyright "fair use" video this year because, in the words of Kate Philips of the New York Times,

[T]he entire video announcing her choice for a campaign song tracks so closely to the bizarre ending of “The Sopranos” less than two weeks ago - from the soundtrack (”some will win … some will lose”), to the diner, to Bill Clinton’s comment that Chelsea was outside “parallel parking” just like Meadow.

(The Clintons even have a little fun over the onion rings - Mr. Clinton picks up a carrot slice, longs for onion rings but the senator tells him she’s only looking out for him. How’s the campaign going? he asks. She replies, just like A.J., “Focus on the good times.”)

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Books published before tape recorders were invented are now on CD, movies made before television was invented are now on DVD, and newspapers--that most venerable of media formats--are now online.  Each new technology creates the same old headache for the courts, especially in copyright infringement cases: the need to find the appropriate analogy. We've seen it before as courts try to determine whether the contractual right to publish a book also includes the right to publish an ebook or, as in last month's ruling, whether the 1939 grant of "motion picture and television rights" to the distributor of Citizen Kane includes the right to make and distribute the movie in home video form.

And now the latest round in freelance photographer Jerry Greenburg's copyright battle with the National Geographic Society, which has taken an ominous turn for him in this, its tenth year in the federal courts.  His lawsuit is the latest skirmish along the borders of  Section 201(c) of the Copyright Act, which governs the allocation of copyrights in "collective works" such as magazines, anthologies and encyclopedias. His lawsuit--and especially this week's decision by the 11th Circuit in Greenburg v. National Geographic Society vacating his $400,000 judgment--is an excellent example of the judiciary's ongoing struggle to apply to new technology the legal principles that were forged on old technology.

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Hopefully some of you will be going to museums, book stores, and movie theaters this weekend. If you are in Olympia, Washington, you may want to check out the Olympia Comics Festival. I like this year’s poster. It reminded me of the famous scene from Stanley Kubrick’s Dr. Strangelove (winner of the 1965 Hugo Award for Best Dramatic Presentation). You know, the one where Slim Pickens rides the nuclear bomb to earth. It also reminded me of the subtitle for the movie, Dr. Strangelove or: How I Learned to Stop Worrying and Love the Bomb. In fact, it is just like it.

 

There was a similar image in today’s St. Louis Post-Dispatch, which collected a political cartoon by Cam Cardow from the Ottawa Citizen.

Mike’s explanation of copyright parody raises a question about whether these two cartoons infringe the copyrights in Dr. Strangelove or in the character Major T.J. “King” Kong. Neither is a parody.

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When it comes to the doctrine of fair use, Mark Twain said it first and said it best: "Only one thing is impossible to God: to find any sense in any copyright law on the planet."  I've shared my fellow Missourian's sentiments more than once as I've tried to help clients navigate the murky waters of copyright fair use.  Is it a parody?  Or just a satire?  Is it "transformative"?  Is there a discernible "effect" upon the "potential market" of the original? The legal waters of fair use are almost as muddy as the waters of Mississippi River that I can see from my office window.

When I teach copyright fair use to my law school students, I stress how hard it is to pin down the key legal concepts or to make reliable predictions from past decisions.  For example, can you really draw a meaningful distinction between 2 Live Crew's use of all of the music and most of the key lyrical phrases from the song "Pretty Woman" in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), and Penguin Books' use of some of the art and some of the language from the works of Dr. Suess in The Cat NOT In the Hat, its witty riff on the O.J. Simpson trial in Dr. Suess Enterprises, Inc. v. Penguin Books USA, 109 F.3d 1394 (9th Cir. 1997)? The Ninth Circuit thought it could draw that distinction.  Penguin's pre-publication lawyers apparently did not.

But perhaps the science of statistics can provide the remedy to Mark Twain's complaint.  As I learned in William Patry's excellent copyright blog, Professor Barton Beebe of the Cardozo School of Law has completed an empirical study of all 306 U.S. copyright fair use opinions during the 28-year period from 1978 (the effective date of the new Copyright Act)  through 2005.  Although the results of that study will be published later this year in the Pennsylvania Law Review, you can read the article at Professor Beebe's website.  As he explains in his summary, his study "shows which factors and subfactors actually drive the outcome of the fair use test in practice, how the fair use factors interact, how courts inflect certain individual factors, and the extent to which judges stampede the factor outcomes to conform to the overall test outcome.  It also presents empirical evidence of the extent to which lower courts either deliberately ignored or were ignorant of the doctrine of the leading cases, particularly those from the Supreme Court. "  It is, indeed, a fascinating new look at how the various "fair use" factors affect the the outcomes of the cases.  Although Professor Beebe's work would not have satisfied Mark Twain, it does help the rest of us, including our clients, find a little more clarity in those muddy waters.

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SUX 2B CMG — CMG Worldwide that is. On May 7, CMG took a sizable summary judgment hit. CMG and Marilyn Monroe, LLC, the companies previously claiming all of the rights to control/profit from the most famous nativity songbird of all time, lost their right of publicity claim against the Shaw Family Archives, Ltd. (and others). CMG took issue with the licensing of Marilyn photographs taken by Sam Shaw without also paying CMG its licensing fee for Marilyn's identity. Photographs taken by Sam Shaw can be seen at these websites. CMG took issue with Marilyn's image on a T-shirt and label (as shown in the Court record), and on a licensing website.

This is a very big deal. The Art Law Blog has had three posts on this decision.

So far, the journalists are outperforming the law bloggers on the analysis. To its credit, the Law Blog at the Wall Street Journal linked to the pre-decision Wall Street Journal story about the case, which has great background on the post-mortem commercialization of Marilyn's identity. The Art Law Blog had a link to CMG’s own Indianapolis Business Journal, which had a more thorough discussion of the possible ways this decision could play out.

Normally one of the better legal voices on intellectual property issues, The Center for Internet and Society misses the point in this case. The folks at Stanford read the case to hold “that Marilyn Monroe’s heirs cannot claim post-mortem publicity rights because she died before the enactment of the statute that creates them in California (and, for reasons that are not important here, Indiana). So, according to this Court, her image, likeness and persona are all in the public domain.” That is not the holding.

The Trade Regulation Talk stated that “any publicity rights that Monroe enjoyed during her lifetime were extinguished at her death by operation of law.” This too, is not quite accurate.

This very important decision held that the post-mortem right of publicity could not be bequeathed by testamentary conveyance because the right did not exist at the time of Marilyn’s death. Accordingly, Marilyn Monroe, LLC — and by connection its agent CMG — did not acquire any post-mortem right of publicity because all of its rights arose from Marilyn’s will. The decision — extremely well-reasoned — does not hold Indiana’s attempt to create a retroactive post-mortem right invalid. It leaves that for another decision and leaves open the possibility that such a statutorily created right might vest in the dead celebrity’s statutory heirs.

The power of this decision and its future impact are not in suddenly delegating the post-mortem right of publicity to the public domain waste basket. Its power is in its sensible approach to a post-mortem right. Undoubtedly the decision will be appealed, either through a certified interlocutory appeal, or when the there is a final judgment; but, its careful position seems solid. According to the Indianapolis Business Journal, CMG manages a bundle of rights that “include branding rights, trademarks on Marilyn Monroe’s name and signature, and copyrights of certain photographs.” I suspect these trademarks and branding rights may be subject to attack if the putative owner has no corresponding right to Marilyn’s identity.

The real issue is how to fairly treat concurrent right of publicity and copyright rights in works, just as in the June Toney case last year (discussed in the Photoshop Blog and the Patry Copyright Blog). Surely it cannot be fair to require a photographer to negotiate a model contract for a post-mortem right of publicity that does not exist. Nor could it possibly be fair to make a photographer's heirs negotiate with a model's heirs over their respective inherited rights when the model and photographer could not have contemplated the issue.

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The tri-frontal attack on YouTube's business model spawned an interesting (probably to lawyers only) side skirmish the other day when a second class action complaint was filed by mandolin player and former Grateful Dead jammer David Grisman.  Grisman, along with his company Dawg Music and his partner Craig Miller, seek to represent a class of other musicians and copyright owners whose works are posted on YouTube without permission or compensation.  This filing falls on the heels of the class action complaint filed earlier this month by the English Premier League charging YouTube with massive copyright infringement.

The allegations in the two complaints are largely the same.  In fact, for the most part they are EXACTLY the same.  And that raises the question, asked by the Wall Street Journal Law Blog, whether wholesale copying of a filed complaint--alleging copyright infringement, no less--is itself copyright infringement.  Copies of both complaints are posted there.

This may be a bit of "inside baseball" to non-lawyers, but the blog post, and in particular the extensive comments thread, expose a heated debate that goes beyond the copyright question and touches on significant questions of legal ethics.  For example, many lawyers use form books or keep form files of different pleadings that they can lift from when preparing a new filing.  This can be very useful and efficient both for the lawyer and the client, and is probably not very controversial when you're talking about a simple appearance form or routine discovery requests.  However, what about a 40-page complaint?  Even if it contains similar factual allegations and legal theories, don't the lawyer's ethical obligations -- to investigate all the facts he or she alleges, for example -- require some modicum of originality?  And what about the bill the lawyer sends to the client? Is it OK to do wholesale copying if you only charge your client for the time it takes you to change the caption and the signature block? 

As to the copyright question, I tend to agree with Keith Henning at the copywrite blog.  He references an article by Professor Davida H. Isaacs applying a fair use analysis to the copyright question (see Davida H. Isaacs, The Highest Form of Flattery? Application of the Fair Use Defense against Copyright Claims for Unauthorized Appropriation of Litigation Documents, 71 Mo. L. Rev. 391 (2006)) as well as Professor Nimmer, but ultimately concludes that the allegations of fact in a complaint typically do not contain the level of originality required for copyright protection.  I don't think wholesale copying of this type is a good (or ethical) practice, but I'm not sure that it is copyright infringement.

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Some days, keeping watch along the fair use border makes you feel like Paris Hilton inside the Fermi National Accelerator Laboratory.  Other days you feel like a pledge at a wild Delta House frat party in Animal House.  Today is a Delta day, brought to you by the good jurists of the Seventh and Ninth Circuit.  To paraphrase Herman Melville, Call me Flounder.

We begin with the magical opening paragraph of Circuit Judge Diane Woods' opinion in the Seventh Circuit's recent copyright decision in JCW Investments, Inc. v. Novelty, Inc.:

Meet Pull My Finger Fred.  He is a white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white tank top and blue pants.  Fred is a plush doll and when one squeezes Fred's extended finger on his right hand, he farts.  He also makes somewhat crude, somewhat funny statements about the bodily noises he emits, such as "Did somebody step in a duck?" or "Silent but deadly."

And we continue with a bevvy of beautiful babes in the buff, delivered compliments of a Google "Image Search" for the phrase "Perfect 10" that is the subject of the Ninth Circuit's recent copyright opinion in Perfect 10 v. Amazon.com.  These two cases -- whose fact patterns could have been selected by the cast of Porky's -- shed important light on two fair use issues.

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This past Fall, the Second Circuit affirmed summary judgment in favor of Jeff Koons in a claim against him for copyright infringement. You can read a good analysis of this opinion at the Patry Copyright Blog. Be sure to check out the concurring analysis at the Art Law Blog as well. For a brief, but straightforward summary, look at the Fair Use Network’s post.

Here is an image of Koons’s challenged work, “Niagra” from the Court record (see the Guggenheim Museum’s website for the work in color).

You can compare that with the plaintiff’s appropriated work “Silk Sandals by Gucci” from Avedon protégé Andrea Blanch in the Allure advertisement from the Court record.

A good and fair result.

However, last Wednesday, the District Court in Blanch v. Koons, Case No. 03-cv-8026, (S. D. N.Y., Doc. 71, entered May 9, 2007), announced that his “fair use” cost Koons over $1 million in attorneys’ fees and costs.

As the District Court wrote:

17 U.S.C. § 505 provides in copyright actions that:

In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.

The standard for determining whether a party is entitled to attorneys’ fees is the same whether the prevailing party is the plaintiff or defendant. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994). The following factors may be used to guide a court’s discretion so long as they are faithful to the purposes of the Copyright Act: “‘frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.’” Id. at 534 n.19, quoting Lieb v. Topstone Industries, Inc., 788 F.2d 151, 156 (3d Cir. 1986).

The District Court seems to have relied heavily on the fact that Koons is an “appropriation artist” who has been sued before for copyright infringement. Appropriation art has a long lineage in the visual arts, extending back at least as far as Picasso and Duchamp, but it raises very difficult copyright issues, including derivative works and fair use. For an interesting discussion of the appropriation art intersection with law and economics, see William M. Landes, Copyright, Borrowed Images and Appropriation Art: An Economic Approach, (December 2000). University of Chicago Law & Economics, Olin Working Paper No. 113. Koons has been sued — and lost — several times for copyright infringement over his use of pre-existing images in his work: Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) (use of photograph of couple with puppies as basis for sculpture “String of Puppies”); United Features Syndicate, Inc. v. Koons, 817 F. Supp. 370 (S.D.N.Y. 1993) (use of Garfield comic strip character “Odie” in sculptures entitled “Wild Boy and Puppy”); and, Campbell v. Koons, Case No. 91-cv-6055, 1993 WL 97381 (S.D.N.Y. Apr. 1, 1993) (use of photograph of boy with pig as basis for sculpture “Ushering in Banality”).

Koons clearly pushes the fair-use envelope, but if it costs over $1 million dollars to defend a victorious fair use, how many people will risk it. If Blanch had prevailed, would she have recovered her attorneys’ fees and profits? Although fair use is now codified, it implicates the First Amendment. When the costs of litigation chill First Amendment expression, it certainly seems that attorneys fees and costs should be paid. Compare this in light of the Supreme Court concurrence recently noted at the Volokh Conspiracy regarding fee shifting in a First Amendment political speech case. Koons’s past cases may suggest that little would chill his speech, but what about other artists. If there is a post-modern/consumer-culture comment to be made with appropriation of a visual image, won’t the commentator think twice about making the comment before incurring the risk of substantial defense costs? If most commentators agree that in this particular instance, the fair-use defense was clearly right, then should the defendant bear the costs of the defense? It seems that the attorneys’ fee shifting provision in the Copyright Act would have remedied any past misjudgments and that each instance of speech should be examined on its own merits.

It strikes me that the litigation pendulum has swung back and forth in its appreciation of the First Amendment litigant. Some champions of the First Amendment have been heralded as heroes and others reviled as villains. As Larry Flynt is depicted as saying in The People v. Larry Flynt, “ If the First Amendment will protect a . . . scumbag like me, then it will protect all of you . . . ‘cause I’m the worst. Certainly some might place Koons into the same category as Larry Flynt. (Koons created sexually explicit artwork with his former wife Ilona Staller in arte Cicciolina, in a series entitled “Made in Heaven — this website has links to galleries of several of Koons’s series of works, including “Made in Heaven”). Regardless, I question whether the right to recover defense fees and costs should be based upon a judge’s subjective determination of the societal value of the challenged expression. I wonder whether the fee decision in Blanch v. Koons would have been different if fair use were a First Amendment action rather than a statutory defense? Should fair-use defendants assert a First-Amendment declaratory judgment counterclaim to increase their chances of recovering their defense costs as a prevailing party?.

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Is YouTube guilty of massive copyright infringement?  Or is it protected by the so-called "safe harbor" of the Digital Millennium Copyright Act, 17 U.S.C. 512(c)?  Yet another lawsuit now seeks to determine the answer to that question. 

(For a good primer on the DMCA's Safe Harbor provisions, see this very helpful FAQ at the internet law collaborative Chilling Effects Clearinghouse.)

The first big copyright challenge to YouTube's business model came last summer with a lawsuit filed by Robert Tur, a Los Angeles photojournalist whose video footage of the beating of Reginald Denny in the post-Rodney King verdict riots in 1992 became world-famous.  See Robert Tur v. YouTube, Inc., No. 2:06-cv-04436-FMC-AJW, United States District Court for the Central District of California, July 14, 2006.  Tur alleged that his Denny footage, along with copyrighted footage of the OJ Simpson chase and other events was posted on YouTube without his consent and viewed more than 1,000 times.  YouTube has defended by claiming that it is an Online Service Provider (OSP) protected by the DMCA safe harbor because it is not aware of and does not receive a financial benefit from the presence of infringing works on its site and its notice and take-down provisions meet the statute's requirement that infringing works be quickly removed.  YouTube filed a motion for summary judgment on the basis of this defense, which is currently set to be heard on May 21.  Tur has also filed a motion for summary adjudication on more narrow grounds, specifically challenging YouTube's claim that it does not receive a financial benefit from the presence of infringing works on its site.  This motion is also currently scheduled to be heard on May 21. 

The second front opened up in March of this year, when Viacom filed suit against YouTube and its parent Google, alleging massive copyright infringement of hundreds of thousands of Viacom properties.  See Viacom International, Inc. v. YouTube, Inc., No. 1:07-cv-02103 (LLS), United States District Court for the Southern District of New York.  Like Tur, the Viacom case will likely turn on whether YouTube's business model fits within the safe harbor provisions of section 512(c).     

Most recently, just days after filing its Answer in the Viacom lawsuit, and while it awaits the summary judgment ruling in the Tur case, YouTube and its parent Google were hit with another legal challenge to its highly successful but highly controversial business model.  This time it comes in the form of a class action complaint filed by the Football Association Premier League Limited (the top division of English soccer) and Bourne Co. (an independent music publisher in New York). 

Many of the contours of this lawsuit are similar to Tur and Viacom, but the class action approach is a new angle.  For one thing, you too might be a class member if you own the copyright or relevant exclusive rights in a registered copyright or certain sound recordings that have appeared on YouTube any time after December 15, 2005.  Obviously, that potential class is enormous, and probably renders many of YouTube's most fervent devotees potential plaintiffs against it.  I'm not going to try to address all the class certification issues that may come up, but suffice to say that will be a battle in itself.

One of the main substantive challenges brought by the plaintiffs in all three of these cases focuses on YouTube's claim that it does not derive a financial benefit attributable to the presence of infringing material on its site.  YouTube sells advertisements that run along side its video clips, including infringing clips, but these ads are not directly triggered by or connected to any particular video clip, infringing or otherwise.  There can be no doubt that YouTube has made huge amounts of money from these ads, and the plaintiffs all argue that YouTube would not be making the money it has but for the presence of so much infringing material on its site.  This could ultimately be a decisive factor in these cases, in part because a court could find YouTube outside of the safe harbor without having to address the propriety of its notice and take-down procedures.

It will be interesting to watch if any more suits are filed, or if other potential plaintiffs will wait for a key ruling in one of these cases.  The Tur case could lead the way depending on how the court rules on YouTube's pending summary judgment motion.  While the Central District of California's ruling will not be binding on the Southern District of New York, it will likely carry significant weight. 

Almost certainly aware of this, and obviously interested in the pending motions on YouTube's assertion of the DMCA's safe harbor defense, last week Viacom and NBC Universal asked permission to file an amici curiae ("friends of the court") brief in support of Tur's claims on this issue.  According to the court's electronic filing database, however, on Tuesday the court denied this request, finding that the brief was not offered to aid the court in its decision-making (as required for submission of such briefs), but was in reality "an effort by parties engaged in similar litigation against Defendant, to intervene in this case for their own benefit."  Like the rest of us, Viacom and NBC will just have to watch from the sidelines.

We'll be watching these cases closely, and should have more analysis of some of the specific legal issues later. 

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Since Professor Lessig and a large bi-partisan group of others issued their call to the Repubican and Democratic National Committees to require television networks to make the video recordings of all Presidential Debates available to the public for free -- either by placing the videos in the public domain or issuing them under a Creative Commons (Attribution) license (see earlier post here) -- several candidates and two networks have weighed in.

According to Lessig's blog, Democrats Barack Obama, John Edwards and Chris Dodd have all written strong letters to the DNC announcing their support for this proposal.  Apparently there is nothing yet from any of the Republican candidates, and Democrat Hillary Clinton has also remained silent. 

Among the networks, CNN has come out in support of this proposal and has announced that it will place no restrictions on presidential debate footage:

Due to the historical nature of presidential debates and the significance of these forums to the American public, CNN believes strongly that the debates should be accessible to the public. The candidates need to be held accountable for what they say throughout the election process. The presidential debates are an integral part of our system of government, in which the American people have the opportunity to make informed choices about who will serve them. Therefore, CNN debate coverage will be made available without restrictions at the conclusion of each live debate. We believe this is good for the country and good for the electoral process.

By contrast, Lessig and USA Today's OnPolitics blog are reporting that Fox News Channel will not follow CNN's lead and will not make its video footage available for all to use. 

No word  yet from either the RNC or the DNC.  Check with Lessig for regular updates -- he's keeping a good scorecard . . .

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Professor Lessig (and a long list of other prominent people) are calling on the Republicans and the Democrats to eliminate unnecessary regulation of political speech, particularly when it comes to Presidential debates.  Lessig talks about the increasing uncertainty surrounding the application of copyright laws -- and the confines of the "fair use" defense -- to internet-based forums such as YouTube, and the potential temptation for some politicians to use copyright law as a club to block critical commentary. 

While some might view this as simply an extension of Lessig's well known views in favor of less restrictive copyright laws in general, I think his key point is right here:

"I am confident that I won’t like much of what this freedom will engender. But if that were a legitimate reason to regulate political speech, this would be a very different world. We should all, regardless of our political persuasion, be encouraging a wide ranging debate about our political future. And we all need to hear more from those with whom we disagree."

I could not agree more, especially in today's world.  Read the whole post and consider adding your voice by contacting the RNC and the DNC directly.

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Confused or conflicted about copyrights and music downloads and the RIAA's aggressive practice of suing its customers?  Me too.  In fact, I don't know how many times this has happened to me:  I'm talking with someone (old friend or brand new acquaintance, it doesn't matter) and it comes up that I am an attorney with a copyright and entertainment practice, and the other person says some version of  either "I can't believe the record companies are suing their customers over music downloads" or "I can't believe people think it's OK to just steal music", etc., etc.  I usually just make a serious face and say "well, of course it depends on several factors, and lawyerblah, lawyerblah, lawyerblah . . . "

I found this post today and I think it neatly sums up the two camps on this issue, and even offers a "modest proposal" for a future "annual license" model as a way to resolve the issue.  It's very interesting reading -- well written and thoughtful (along with the comments and internal links).  I'm not sure it would work, but it's an example of the kind of creative thinking that becomes necessary when new technology stretches the limits of old legal models.

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