Some Answers Are Not So Hard In The Copyright Debate. Or Are They?

By Dave Rein

One of my favorite sports columnists is Joe Posnanski who writes for Sports Illustrated and periodically, for the Kansas City Star.  But, as insightful and funny as he is about sports and life, he's not the first place to turn for intellectual property issues.  I don't think Posnanski would disagree.  

So why am I reading a copyright article written by one of my favorite technology columnists, David Pogue?  I guess that I can't help myself.

One of Pogue's posts, "No Easy Answers In The Copyright Debate" highlights the never-ending debate about whether it is okay to download someone's creative work without their permission.  The blog post described a song writer's efforts to stop people from downloading his sheet music for free.

The song writer, Jason Robert Brown, was frustrated by the thousands of people who were trading his work for free when he was trying to make his living by selling the sheet music.  His correspondence with one teenager who had a different view is not only an interesting read in that it highlights many of the arguments made by both sides of the debate, but also sheds some light on the cultural issues as well.  A post by Digital Society provides another view supporting the song writer.  But, Pogue's post raises one argument that I had not heard before.  

In the post, he quotes a classical pianist who justifies his downloading of sheet music without permission as an effort to preserve works that would otherwise be lost to the ages of time.  Of course, anyone could justify illegal downloading on this basis.  Nobody would have to honor a copyright if all that he had to say was that his intentions were pure and he was simply acting as his own Library of Congress.

Yet, Pogue does end the post with an interesting question:  Is digital piracy justified if it is difficult or impossible to figure out if the item is for sale?  I think another way of asking the question is  should you be able to use a work if the copyright owner cannot be found?  

I don't think one gets to use a work for free just because it is difficult or even impossible to find the artist or copyright owner of the work.  It is frustrating, however, when a work does not identify the copyright owner.  Unfortunately, after several attempts, Congress has not been able to agree on Orphan Works legislation -- resolving how someone can use a copyrighted work when its owner cannot be realistically determined. 

The failure of Congress to act doesn't justify violating a copyright, but does this debate suggest the need to revisit passing Orphan Works legislation? 

Less Hope For Shepard Fairey in Obama Hope Poster Case?

By Dave Rein

If the street artist, Shepard Fairey, initially thought the copyright litigation over the Obama Hope poster would be a good-natured pillow fight with the Associated Press, he probably knew that it was going to get ugly once it came to light that he was less than truthful to the court in representing which photograph he used to create the Hope poster.

Mr. Fairey sued the AP last year asking the court to declare that the Hope poster does not infringe any of the AP's rights.  The AP countersued for copyright infringement and others have joined or been brought in as well.  It is now getting uglier for Mr. Fairey.  An earlier post describes Mr. Fairey's confession, but the saga continues. The court has shown that it is receptive to allowing discovery not just on which photograph Mr. Fairey actually used, but also on making him name names.

Specifically, Judge Alvin Hellerstein ruled on April 5, 2010 that Mr. Fairey must disclose who was involved in destroying documents in an effort to hide how the Hope poster was actually created:  "Plaintiffs shall disclose the identities of those who did the deletion and destruction and of those who knew about such deletion and destruction."  Mr. Fairey will have to disclose who performed the destruction, who supervised it and who knew about the destruction.   

The court's April 5th order itself may not elicit much excitement, but it raises several questions:  why did the court agree to allow discovery on the destruction of documents?  Although documents bearing on the creation of the Hope poster would be relevant, Mr. Fairey has already admitted that he used the photograph that the AP believed he used.  Does the discovery go to potential sanctions against Mr. Fairey and others who assisted in the destruction of documents?  If so, does the court intend to impose sanctions on top of the related criminal investigation?  Is such discovery relevant to undercut Mr. Fairey's fair use defense?  Neither the court's order nor the joint letter that the parties submitted to the court address the relevancy of the discovery.  

Regardless, the potential that others may have helped destroy documents on Mr. Fairey's behalf means that we may have more twists and turns to come in this case.

Supreme Court Rules On Copyright Registration: What Does It Mean?

By Dave Rein

I previously wrote that I was hoping the United States Supreme Court’s decision in Reed Elsevier Inc. v. Muchnick would finally answer the question of whether copyright registration is necessary for courts to have subject matter jurisdiction. We now have a ruling – it is not jurisdictional -- but the impact of the decision is somewhat unclear.  Certainly, some will cheer (can anyone say Google?) the decision, but for the vast majority of copyright cases, will the decision matter? Maybe, but probably not.

The courts have been split as to whether to dismiss copyright cases for the lack of subject matter jurisdiction if the plaintiff has not registered its copyrighted works. The Supreme Court ruled that registration is not jurisdictional because Section 411(a) did not “clearly state” that it is jurisdictional. 

Instead of jurisdictional, registration is a precondition to filing a lawsuit or similar to a “claim-processing rule.” In other words, a plaintiff needs to comply with the requirements of the statute to proceed, but the failure to do so does not deny the court subject matter jurisdiction. 

Presumably, if the plaintiff sues for a work that is not yet registered, a defendant will now bring a motion to dismiss the claim for the failure to state a claim. If you are in a jurisdiction that previously dismissed cases for lack of subject matter jurisdiction, a court may likely still dismiss the case although the reason for dismissal will change to “failure to state a claim.” Only the label or rationale change. Likewise, if you are in a jurisdiction that took a different approach to registration, the court will likely continue to apply that approach.

The instances of where it does matter are probably few and far between. The background of the Reed Elsevier case illustrates at least one category of cases, i.e. settlements of certain class actions, that will feel the impact of this case. 

In Reed Elsevier, a group of publishers who wanted to publish certain works digitally reached a settlement with almost all of the members of a class of freelance authors – some of whose works were registered and some whose were not. When the district court approved the settlement, some freelance authors objected and appealed. The Second Circuit held that the district court did not have authority to approve the settlement because some of the works were not registered. The Supreme Court reversed and in effect, allowed the district court to approve the settlement even though some class members never registered their copyrights.

Sounds pretty narrow. Who else would care? The thousand-pound gorilla of copyright – Google. If the Supreme Court had said that a court cannot approve a settlement of copyright claims whose class included unregistered works, how would have changed the proposed Google Books Search Settlement?  If the final settlement proposal does not include unregistered works (except foreign works), then perhaps not much.  But, does anyone think that the book search is the last expansive project Google will take on?  I doubt it.

 

Federal Circuit Says Korean War Memorial Stamp Violated Sculptor's Copyright

By Dave Rein

Sometimes a 37¢ stamp does buy quite a bit.  One lucky sculptor, Frank Gaylord, may find that such a stamp could give him some extra spending money in the neighborhood of six or seven figures.

The Court of Appeals for the Federal Circuit recently reversed the lower court and ruled that the U.S. Postal Service violated Mr. Gaylord's copyright when it issued a stamp based upon a photograph of a sculpture called "The Column".  The Column is composed of 19 statutes representing a platoon of soldiers such as the one on the left and is part of the Korean War  Memorial.  

Years after the memorial was opened, the Postal Service decided to use a photograph of the Column that John Alli shot early in the morning after a snowstorm.  It paid Mr. Alli $1,500 to use the photograph.  

To show how difficult it can sometimes be to determine who owns a copyright, Mr. Alli believed he had authority to commercially exploit his photograph because he entered into a license agreement with an entity that said that it held the copyright in The Column.  Only later did Mr. Alli learn that Mr. Gaylord actually held the copyright.

While it may have been difficult for Mr. Alli to determine who owned the copyright in The Column, the government was certainly aware of Mr. Gaylord as it worked with him on certain aspects of The Column (the degree of which was disputed).  Surprisingly, it never required Mr. Gaylord to either share his copyrights or provide it with a license to use The Column. 

Mr. Gaylord sued the Postal Service claiming that he was owed a 10% royalty on the sales of $17 million worth of postage stamps plus other merchandise that featured images of the stamp.  

The parties agreed that Mr. Alli was entitled to his own copyright protection in his photograph as a derivative work. Although the parties stipulated that the photograph was a derivative work, as I noted elsewhere, this is still an open question.

There were multiple issues before the Federal Circuit, but the main one was whether or not the  stamp's depiction of The Column was fair use under 17 U.S.C. § 107.  It was not only the crux of the parties' argument, but also one of the first times that the Federal Circuit weighed in on fair use.

Typically, fair use is "for purposes such as criticism, comment, news reporting, teaching . . . scholarship, or research", but it also applies more generally to uses that fall within the four statutory factors.  The Federal Circuit agreed that the stamp did not effect the potential market or value of The Column, but it found that the other three factors weighed against the government.

The parties' argument about the first factor, i.e. the purpose and character of the infringing use, centered on whether or not the stamp was "transformative" of the original sculpture.  Mr. Gaylord argued that the stamp could not be transformative because the stamp and The Column both have the same purpose of honoring the veterans of the Korean War.  The court agreed and rejected the government's argument that the addition of snow and muted colors enhanced the sculpture's surreal character because they do not change the  "character, meaning or message" expressed in the sculpture.   As the court said:  "Nature's decision to snow cannot deprive Mr. Gaylord of an otherwise valid right to exclude."  

The Court of Appeals also seemed troubled that the stamp did not comment upon the original work nor was it part of a biography.   It will be interesting to see whether this case will be interpreted as narrowing the test for what constitutes a transformative use. 

Because the stamp was not a transformative use and was for a commercial purpose, the court held the first factor weighed against fair use. The second (the nature of the copyrighted work) and third (the amount and substantiality of the portion used) factors also weighed against fair use according to the Federal Circuit.  At least one commentator believes that the Federal Circuit's decision was right.  

Regardless of whether it is right or not, this case illustrates the importance of licensing.  The government decided it did not need a formal agreement that allowed it to use the sculpture.  I applaud public entities for making sure that they treat artists fairly, but they also need to make sure that they think through the repercussions of not obtaining some protection in the form of joint ownership in the copyrights or a perpetual license to use the copyrighted works upon terms that are fair for everyone.  

You Choose: Four Years of Litigation or Taking Care of the Copyright Portfolio

By Dave Rein

As one of my daughters has discovered Calvin & Hobbes cartoons, I wonder whether she'll be inspired to try some of Calvin's outlandish ideas such as barreling down a steep hillside and over the abyss in a red wagon or if she'll make the proverbial "note to self" not to follow Calvin when the last frame shows the resulting crash.

I get it.  There are metaphors and life lessons and the yearning for a more exciting life.  But, I'm not sure that casting away the "dull and boring" best practices is a good way to protect one's intellectual property.  The Seventh Circuit in Schrock v. Learning Curve Int'l, Inc. helped clarify some lingering questions about derivatives in the copyright world -- at least in that circuit.  As I mentioned in an earlier post, to do so, the parties spent four years just to get to an oral argument before the Court of Appeals.

In reading the opinion, two things struck me that might have avoided the litigation or at least kept it from being so prolonged.  First, it could have registered its copyrights in the toys.  Some of the toy maker's registrations only applied to literary works related to the toys, but not the toys themselves.  Whether the toy maker was the owner of the copyrights and whether they were properly registered (and therefore entitled to all presumptions that follow) was a matter the judges expressed considerable interest in at oral argument.  

Second, the licensing agreement between the toy maker and the photographer consisted of the terms stated in the photographer's invoices.  Leaving the determination of who owns a copyright and its licensing terms to the battle of the forms should make the true copyright owner nervous.  In Schrock, the toy maker realized what happened years after it started doing business with the photographer and asked him to sign a "work for hire contract".   He refused, but even if the photographer had signed the contract years after he first provided photographs, that may not have solved the problem.  Some jurisdictions require that the contract be signed before the work is created or at least require that it memorialize an oral agreement made before the work's creation. That may have been too high a hurdle in this case although it likely would have been effective if entered at the onset of the work.

Regardless of whether a work-for-hire contract would have been effective, the court noted that the parties could have contractually agreed that the photographer would not register his copyrights in the photographs.  Actually, it did more than note that issue.  It remanded the case back to the district court to determine if the parties agreed to such a limitation.   

Certainly keeping up with copyright registrations and thousands of contracts is a constant struggle for companies or individuals that continuously create new content.  In these times when general counsels are under increasing pressure to reduce their departments' budgets, it is even harder to do so.  The challenge then is how can they convince upper management of the wisdom to spend money now to avoid paying even more later.

The parties' ordeal in Schrock may be useful to show that even companies with good copyright practices might benefit if more resources are devoted to auditing the company's contracts and copyrights and maintaining them. Litigation is not always avoidable, but anyone who owns copyrights and enters into contracts involving copyrights might be able to avoid prolonging the litigation and save money in the long run. At least it is better than throwing your copyrights on a red wagon with Calvin and hoping that they fly safely across the abyss.

Debate Continues Whether A Photograph Is A Derivative Work But 7th Circuit Issues Broad Ruling

By Dave Rein

Derivative.  Is there a less appealing or scarier word in which to start a horror novel or blog post? The very word conjures up everything complex in the financial world and is synonymous with our current economic disaster. Woe be to the one who missteps in the financial derivative world for he or she will quickly be escorted by a torch-lit mob to the nearest Congressional inquiry!

So it is in the wide world of copyrights.  The simple mention of the phrase "derivative work" is likely to spur many a copyright lawyer to dust off the copyright statutes and brandish them in one hand while holding a Tiki torch in the other.

When one makes a movie which is substantially based upon a novel, he or she is making a derivative work.  A derivative work is one "based upon one or more preexisting works such as a . . . musical arrangement, dramatization . . . or any other form in which a work may be recast, transformed, or adopted. 17 U.S.C. § 101.   As the owner of the underlying work has the exclusive right to make derivative works, whether a work is or is not a derivative work matters. 

Is a photograph of a sculpture or a toy a derivative work?  Professor Patry  has firmly stated more than once that a photograph of another copyrighted work is not a derivative work, but the extensive comments to his blog posts demonstrate that others are not persuaded.  Likewise, the courts have yet to find their footing on this issue as well. 

And so I've been curious to watch the reaction to the 7th Circuit's decision in Schrock v. Learning Curve.  Short of a few comments including one from Michael Kahn, the reaction has been muted.  No torches, no dramatic readings from 17 U.S.C. § 101 . . . nothing.  Admittedly, the Seventh Circuit two-stepped around the question that we were waiting for it to answer: "Is a photograph a derivative work?"  It did so by assuming -- without deciding -- that the photographs were derivative works.  But, the case is still worth a read whether or not you have any interest in photographs because it did address two broader questions about derivative works: 

(1) Should the new derivative work be subject to a higher standard of originality before it receives its own copyright?

(2) Does the creator of the derivative work need the original creator's permission to register the copyright of the derivative work?

The 7th Circuit said "No" to both questions and changed its prior rulings or at least its dicta that was followed by the lower courts.  The case involved the maker of Thomas & Friends toy trains, Madeline and other toys along with Daniel Schrock who was hired to photograph the company's toys for marketing.  Just like in all good litigation, the relationship soured.  When the toy maker allegedly breached the terms under which the photographs were licensed, Schrock sued for copyright infringement. 

Surprisingly, the toy maker spent considerable time in oral argument pressing that the photographs themselves were not sufficiently original to to be copyrightable.  The 7th Circuit stood fast that the test for whether a photograph is entitled to a copyright is not a high hurdle to overcome and found, like most every court, that originality can be found in the staging of the scene, the choice of perspective, focus, lens and lighting.  As the court said, the toy maker's alternative argument, i.e. that a heightened standard of originality should apply to determine if a derivative work is copyrightable was a more interesting argument -- even if it was equally unsuccessful: 

If the photographer's rendition of a copyrighted work varies enough from the underlying work to enable the photograph to be distinguished from the underlying work . . . then the photograph contains sufficient incremental originality to qualify for copyright.  Schrock's photos of the 'Thomas & Friends' toys are highly accurate product photos but contain minimally sufficient variation in angle, perspective, lighting, and dimension to be distinguishable from the underlying works; they are not 'slavish copies.'

The 7th Circuit also changed course on one other question about derivative works.  The toy maker argued that:  (a)  even though the photographer had permission to take the pictures (it hired him to do so), it never gave him permission to register the copyrights and (b) without registration, the photographer could not sue for copyright infringement.  This had seemed to be the rule of law in the 7th Circuit.  Therefore, any creator of a derivative work would not only have to have permission to create the work, but also the underlying copyright owner's permission to register the copyright in the derivative work.  After Schrock (at least in the 7th Circuit), one who creates a derivative work no longer has to get permission from the owner of the underlying copyright to register the new copyright.  

Could the parties have avoided four years of litigation and lawyers with Tiki torches?  Absolutely!  How they could have done so is the subject of my next post. 

Now For Something Completely Different: Mattel Licenses "Barbie Girl" From Aqua

By Dave Rein

commercial that played this Halloween promoting a new line of Barbie Fashionista dolls reminded me of an earlier blog post in which I wrote about some of the legal lessons learned from Barbie.  One of those lessons involved the parody of Barbie in the song "Barbie Girl" by the group Aqua to which Mattel did not take kindly and sued.  In 2002, the Ninth Circuit ruled against Mattel in an opinion written by Judge Kozinski and in the process, helped shape the contours of the First Amendment and the trademark fair use defense.

The commercial shows that it took seven years, but the parties have apparently heeded Judge Kozinski's admonition that the:  "parties are advised to chill."  In a "Now For Something Completely Different" moment, Mattel and Aqua have joined forces in a series of commercials to promote the Barbie line of dolls and Barbie's first music video by using a reworked version of the "Barbie Girl" song:

I am not privy to the licensing deal, but in answer to a number of commentators and bloggers, Mattel is not using the song for free.  Aqua and MCA Records were successful in their fair use defense because the song is a parody of Barbie.  The reworked song is not.  Nor could Mattel say that it was making fun of itself or of the song.  Instead, Mattel acknowledges that is is using the song because the song has become the "epitome of Barbie" and is now "iconic."

There may be those like Charlie Brown's sister, Sally, who decry that Aqua has "sold out" (7:25 into the video clip) to Mattel, but even Sally can agree that Aqua is getting its "restitution" through this licensing deal even if she lost out on trick-or-treating this Halloween.

A Stunning Confession Potentially Destroys Fairey's Fair Use Defense

By Dave Rein

Source of Poster:  Stephen Fairey; Source of Photograph:  Mannie GarciaDespite depictions in TV shows and the movies, most court cases do not involve dramatic confessions, cover ups and Presidential politics.  Of course, most court cases don't involve Stephen Fairey.  From pasting the Obey Giant (now his Twitter name) and other "Obey" posters on public property (much to the ire of city officials around the country) to talking smack with the Associated Press over the Presidential candidate Obama Hope poster, he seems to seek and thrive on controversey.

But the controversey with the AP over the Obama Hope poster may have seriously backfired on Fairey.  On February 9, 2009, Fairey filed a Complaint in the Southern District of New York saying that his use of a photograph claimed by the AP fell within the fair use defense and therefore, he owed the AP nothing for using the photograph to create the Obama poster.  One former blogger on this site thought that if Fairey's inspiration for the poster did come from the picture of Obama and George Clooney at a press conference as Fairey claimed, then Fairey might succeed.  It is unlikely that we will find out if he was right. 

On October 16, 2009, Fairey confessed that he used a different picture from the same press conference, one that more closely resembles the Obama poster.  A number of bloggers including Tom GralishPhoto District News and others had suspected as much, but Fairey had denied their claims until now.

An AP article appearing in the New York Times could barely conceal its delight of the confession and the news that Fairey's legal defense team from the Stanford Fair Use Project intend to withdrawal their representation because Fairey lied to them and tried to cover it all up. 

Fairey can likely afford to hire other legal counsel, but the legal arguments for his new defense team just got a lot more difficult.  One of the four fair use factors analyzes the amount of copyrighted work taken.  When the Obama Hope poster is compared to the picture that Fairey now confesses to using, this prong may now weigh against him where it may have helped in in the other picture.  

But beyond the simple analysis of the factors, it should be remembered that the fair use defense is an equitable rule.  Fairey's confessed dishonesty undercuts his ability to ask for equity, i.e. fairness.  In other cases, the courts have not looked kindly on those accursed of infringing a work who denied that he or she used the accuser's work and then later tried to invoke the fair use defense.  Further, should this case go to trial, the AP will likely be able to tell the jury that Fairey initially lied about the picture and that he lied because he thought that he would lose if the actual photograph was known.  Much of the jury sympathy that Fairey might have had has likely been lost.

While Fairey's case against the AP still raises interesting questions such as whether the AP or Mannie Garcia, the photographer, own the copyright to the photograph, it now looks like a much anticipated case analyzing the fair use defense will disappoint many.

Michael Jackson: The Music And Copyright Infringement Lawsuit Continues

By Dave Rein

While on a vacation in Northern Michigan recently, Michael Jackson's "Thriller" started playing in a local tavern.  The song seemed out of place in the northern woods, but as I looked around, I could sense that the conversation at a number of tables had changed once the song began playing.  It has been almost two months since Jackson's untimely death and yet, people across the country are still moved by his death.  It seems appropriate then to write a short piece before Jackson's burial sometime around September 3rd.

As a pop star, Jackson was no stranger to copyright infringement lawsuits.  But, even with his death, Jackson will play a role in shaping copyright law.  The battle for his stake in the Sony-ATV Music Publishing catalog (which includes the Beatles, Elvis and contemporary artists) along with the catalog to his own songs has been discussed extensively and will likely be a topic worth following for sometime to come.

There is also the little issue of an ongoing copyright lawsuit.  The lawsuit by Cameroon sax man, Manu Dibango, against Michael Jackson and Rihanna received a flurry of attention when it was filed in February, yet except for a wonderful article in the New Yorker, it has received almost no attention since then. 

Dibango struck gold with his 1972 song, "Soul Makossa", that some credit as an early disco staple.  He reaped an additional pot of gold ten years later with his lawsuit against Jackson who admitted that he borrowed the phrase:  "ma ma se, ma ma sa, ma ma coo sa" in his song,"Wanna Be Startin' Something" on the Thriller album from Soul Makossa.  After reaching a settlement, Jackson and Dibango moved on happily ever after.

Actually, not happily ever after.  Fast forward to 2007 and things get interesting again.  Pop star Rihanna received Jackson's permission to use the "Ma ma se, ma ma sa, ma ma coo sa" phrase in what became one of her many hit songs:  "Don't Stop the Music".  But, she did not receive permission from Dibango and it it does not appear that she asked him for permission.   Dibango is suing for about $650,000 -- those who follow the exchange rate between the CFA (Communauté Financière Africaine) and the U.S. dollar can give us daily updates.

Absent Jackson's death, this battle of superstars with their millions of dollars would likely have been resolved quietly and quickly.  But because it is unclear who will control and ultimately act on behalf of Jackson's estate, a quiet and quick resolution does not seem to be possible.  For those of us curious about intellectual property issues, keeping the case moving towards trial will be enlightening.  Some unanswered questions:

  • Why were Rhianna's lawyers savvy enough to track down Jackson to get his permission, but not Dibango's?
  • What rights in the "ma ma se . . . " phrase did Jackson get in his settlement with Dibango?
  • If Jackson didn't acquire any rights from Dibango to the phrase other than a license to use it in the "Wanna Be Startin' Something" song, what rights did Jackson's lawyers represent he had in the "ma ma se" phrase to even give Rihanna?

We may never find out the answers to these questions if the case does not go to trial.  Perhaps the bigger shame would be that we would never see Jackson jumping out of his casket and moonwalk to the witness stand one last time to the beat of Thriller:

"That this is thriller, thriller night
'Cause I can thrill you more than any ghost would ever dare try
Thriller, thriller night . . . "
 

Are You Gambling With Your Copyright By Entering That Photography Contest?

By Dave Rein

"Winner, winner, chicken dinner!"  I'm told that the phrase first started in Las Vegas casinos where you would hear gamblers and dealers yell it out  as winners would earn enough from their bets to buy the three-piece chicken special at the casinos.  Whatever its origins, the phrase makes me smile after hearing it.  

Thoughts of winning one of the countless photography contests also brings a smile to many as well -- amateurs and professionals alike.  Who wouldn't like to win a Canon 5D Mark II or maybe that lens you've been eying?  Before sending the kids out to lure the buffalo herd a little closer to get that winning shot, you might want to do some reading.

Reading, as in reading those pesky rules or what is usually called "terms and conditions."  The terms vary from a photographer giving the promoter a non-exclusive right to use the photograph for a limited purpose and limited period of time to granting the promoter all the rights in your photograph.  Of course, if you care to give the promoter all of the rights to your photograph, you might consider taking it off of your website and stop selling those signed prints because you might get sued!

Far fetched?  Gary Crabee wrote in his Enlightened Images photoblog about Costco's photo contest in which, by entering the contest, the contestants assign the copyright to any image to Costco.  Costco is not alone.  There may be questions of the enforceability of the clause, but Gary is right that Costco and others with these terms arguably can sue any contestant who continues to reproduce or distribute what used to be the contestant's own photograph!  I like to think that Costco would not enforce the full-extent of the assignment, but do you gamble on that by entering one of your bread-and-butter photographs in the contest?  By assigning all your rights, stock agencies like Getty Images are also not likely to accept your photograph.  Presto!  You've just deprived you of another source of income.

Most contests don't require the photographer to assign all of his or her rights, yet the terms and conditions can still be fairly broad.  In Walt Disney's Messy Baby Contest, you grant Disney the right to use your photograph throughout the "universe" in "perpetuity" although you have the right to use the photography as well.  I'm at a bit of a loss in calculating the going rate for using an Ansel Adams photograph on Saturn or elsewhere in the universe.  But if you have a gem on your hands, do you think you can compete with Disney's marketing muscle here on Earth?  Sorry, but my money is on Disney. 

So what can you do to protect yourself before entering a contest?  Here are a few suggestions:

  1. Read --the terms and conditions of the contest;
  2. Examine -- by following any links on the terms and conditions to see if there are any buried terms.
  3. Think -- before entering a contest where you assign "all the intellectual property rights",  grant "exclusive rights" or "perpetual rights";
  4. Consider recommendations -- by Pro-Imaging and others who monitor these contests.  Pro-Imaging, for example, uses its photographer's Bill of Rights to develop a list of "bad" contests and list of "good" contests

Armed with a little information, you can avoid the "sucker's bet" and call out with the rest of the contestants:  "Winner, winner, chicken dinner!"

 

Judge Posner's Copyright Proposal To Save Newspapers -- A Cosmic Paperboy?

By Dave Rein

I still turn to newspapers, whether on paper or on the Internet for my primary source of news, but it is no secret that newspapers are fighting for their lives -- not unlike Bruce Willis in pretty much any Die Hard movie.  Newspapers, rallying around AP, blame Google for their troubles.  Mike Masnick of techdirt, points to the staggering amounts of debt that the newspapers took on and there are probably a dozen other ailments giving newspapers the blues.

Many have suggested cures for the newspapers' ailments, including, as R. David Donoghue of the Chicago IP Law blog points out, the esteemed Judge Posner who hails from the Seventh Circuit in Chicago.  Judge Posner wrote in the Becker-Posner blog that we should ban online access to articles and bar anyone from paraphrasing or linking to a newspaper article without the newspaper's consent.  Otherwise, Judge Posner argues, free-loaders will run newspapers out of business. 

The commentary in response to Judge Posner's proposal focuses on skepticism that the proposal is workable, that he has become too sentimental for printed newspapers and that he is out of touch with social media.  But, what troubles me about the proposal is it appears to  venture awfully close to allowing newspapers to copyright facts.

The proposal to bar online access to copyrighted material without the copyright holder's consent is something the WSJ and a few other newspapers do already.  For example, to get full access to the WSJ's article about the AP creating an association to license and monitor who is republishing newspaper articles, you would need to subscribe to the WSJ.

Judge Posner's second suggestion, i.e. bar linking to or paraphrasing news articles, potentially could have greater implications.  Currently, copyright allows all of us to repeat facts found in books, newspapers and on the Internet if we do not copy the way those facts were repeated.  Copyright will protect how historical facts are expressed and not the facts themselves. 

To be fair, Judge Posner proposes a ban on paraphrasing newspaper articles or linking to the article.  He doesn't propose that newspapers should be able to copyright facts, but if nobody can paraphrase the article or link to it, does it effectively do the same thing?  Is there an argument that repeating a key fact or facts in an article is paraphrasing the article?  It strikes me that from a copyright perspective, Judge Posner's proposal has even wider implications than just for newspapers.

With that said, count me among the people who still subscribe to a printed newspaper and wouldn't mind having it stick around for a little longer.  If only the newspapers could create a real-life Early Edition where the hero received the Chicago Sun-Times the day before the news actually occurred:

[Discussing the mysterious newspaper]
Gary Hobson: Where is it coming from?
Marissa Clark: The hallway.
Gary Hobson: That's not what I meant.
Marissa Clark: Maybe it comes from God.
Gary Hobson: Yeah, God's a cosmic paperboy. 
 

A $1.92 Million Win For The Music Industry. Now What?

By Dave Rein

As I read Ben Sheffner's tweets about the Capital v. Thomas case with interest, I was struck by how quickly the jury issued its decision to award the record companies $1.92 million -- about $1.7 million more than the original jury awarded.  I instantly thought of this picture as I think both Ms. Thomas and her attorney are going to need plenty of this and some lucky lottery tickets.  

From the music industry's perspective, this was an important win.  The stunning size of the verdict and the swiftness with which the jury came back with the award should please those who were tasked with the aggressive campaign against copyright infringement.  

I agree with Sheffner that the judge will likely slash the jury's award, but it shouldn't come to that.  As I mentioned in a previous post, winning the case is only the first step for the music industry.  It has won the case and now it needs to win the public relations battle by not overreaching.  

The music industry has every incentive to keep the decision from spinning into a public relations circus like what happened in the Pirate Bay case.  It appears that Thomas and her attorney want to quietly put an end to this case so the record companies now have the opportunity to win the public relations battle.  They can do so by not insisting on a settlement that results in financial ruin for Thomas, but instead reaches a confidential settlement that Thomas can live with.

Settlement will not undermine its message that although the Pirates of the Caribbean would have considered the copyright code to be more like  "guidelines" than actual rules, the music industry politely and firmly begs to differ.  "Welcome aboard the Black Pearl", Ms. Thomas.

The Music Industry Will Need To Win More Than Just The Legal Arguments In Capital v. Thomas

By Dave Rein

They do things differently in Sweden.  If there was an RSS feed for all the political news happening in Sweden, I think I would subscribe.  I remember in college hearing that Donald Duck beat out several political parties in the Swedish elections.  You know it is time to give it up and run for the dog catcher position when you lose to Donald Duck.  

The independent streak seems to continue today.  For most of us, the only way last week's European Union parliamentary elections were going to catch our attention was if another Donald Duck episode occurred.  Sure enough, the voters in Sweden obliged. 

In a reaction to the landmark file-sharing case (i.e. sharing of music, movies and books) popularly known by the file-sharing site's name, the Pirate Bay, the voters elected a member of Sweden's Pirate Party to the European Parliament. For those who are not up to speed with the Pirate Bay case, take a look at the the Wall Street Journal post for background or just know that Sweden's tolerant view on copyright infringement changed when a court announced that the Pirate Bay defendants were liable to the record companies to the tune of $3.6 million.  Apparently, the Swedish voters were not pleased with the court's decision and voted in protest for the Pirate Party.

But, don't just file this under:  "Funny Things That Happen In Sweden."  Of the thousands of copyright litigation cases that the music industry filed here in the U.S., only one ever made it to trial.  And that case returned to the courtroom this week.  

The case is Capital v. Thomas and involves six record companies suing Jammie Thomas for allegedly using a peer-to-peer network to share and download music.  To learn the details of the case, I recommend reading Ben Sheffner's posts.  He has been blogging extensively about the case and is covering each blow-by-blow during the trial. 

I don't predict that the outcome of the trial will launch new political parties in the U.S. who send representatives to Washington D.C. under a pirate flag.  But, managing the public's perception of the case will be important.  The voters who sent the Pirate Party to Parliament were largely 18-24 year olds -- an important demographic for the music industry and a group that will soon move on to positions where they will make policy decisions on copyright issues for years to come. 

Right or wrong, the music industry needs to not only win the Thomas case, but also the public relations battle as well.  If it does, the music industry will be able to quote one of our favorite pirates, Captain Jack Sparrow, who said:  "I think we’ve all arrived at a very special place. Spiritually, ecumenically, grammatically."  "Savvy?"

 

The Supreme Court May Decide Whether Registration Is Required To File A Copyright Lawsuit

By Dave Rein

We at the Owners, Borrowers & Thieves 2.0 are big enough to admit to our mistakes when, after an exhaustive search, we can't find anyone else to blame.  Not finding anyone to blame other than the sheer height of the stack labeled:  "Interesting Things I May Never Have Time To Read", I'll have to confess that if you were interested in the post about the Dr. Jekyll and Mr. Hyde approach that the courts have taken on the issue of copyright registration, there is even more to the story. 

The issue of whether you need to register your copyright before filing a lawsuit may very well have floated up to the Supreme Court after all.  In March, the Supreme Court accepted certiorari in Reed Elsevier v. Muchnick which might resolve the copyright registration issue.  Then again, it might not.

Shourin Sen., who writes the Exclusive Rights blog, has an great post walking through the case.  For those who think these issues sound like a good substitute for a sleep aide, another commentator says oh contraire -- these issues are "sexy"!

I'm not ready to say that the issue is "sexy".  At the same time, while none of the briefs filed in the case will find their way into your local bookstore, they do make for an interesting read.  I was especially absorbed in the United States' brief filed three days ago which takes a nuanced approach to the issue.

For those who don't care to immerse themselves in reading the briefs, the take away is that even though the Petition for Certiorari focused on a couple of narrow issues, the Court ultimately asked the parties to brief a broader issue:  "Does 17 U.S.C. § 411(a) restrict the subject matter jurisdiction of the federal courts over copyright infringement actions?" 

So, although the Court could still avoid ruling on the issue directly, it is looking more and more hopeful that we will get that long-awaited guidance from the Supreme Court after all! 

More Chaos On Whether Registration Is Required To File A Copyright Infringement Case

By Dave Rein

Forum shopping in not just for patent and securities attorneys although their shopping habits have a greater tendency to get picked up by the Wall Street Journal law bloggers.  Even in the copyright world, crossing state lines to a different circuit or district court can mean the difference between winning and losing.

The Copyright Act requires authors to register their works with the Copyright office before filing a lawsuit.  Does this requirement mean that the copyright owner has to wait until the Copyright Office actually issues a registration or is it enough that the owner applied for the copyright registration?  Even though the language of 17 U.S.C. § 411(a) uses the same words in New York as it does in Texas, the courts are horribly split on this issue.  It is not getting any better.

The recent district court decision in Minnesota, Tri-Marketing, Inc. v. Mainstream Marketing Services, Inc., highlights that the split is not just among the circuit courts.  With the new decision, the Eighth Circuit now has:

  1. two Minnesota district courts reaching opposite conclusions;
  2. dicta from an Eighth Circuit court decision suggesting one conclusion; and
  3. a district court in Nebraska saying that suggestion is a bunch of baloney. 

Don't blame this mess on the drinking water in the Eighth Circuit.  The D.C. courts have reached opposite conclusions as have district courts in New York and elsewhere. It appears that the district courts are running in random directions in those circuits which have not weighed in yet. The recent decision from Minnesota just reminded me how much we need the circuit courts to take these cases.  It may take the Supreme Court to straighten this out, but it will take more circuit courts accusing the others of an inability to read English to get the Supreme Court's attention.

Is this stuff that only a law professor could love?  Hardly.  Consider the example of an architect who learns that plans which show promise of launching his career suddenly appeared on the Internet or a photographer who discovers her images will be used in a political campaign without her permission and against her own wishes.  The common thread in both is that each will want an immediate injunction to shut down the infringer.  

In a circuit or district court that requires registration first, the court won't issue an injunction based on copyright infringement -- at least not until you file for an expedited registration to try and jump in front of the incredible backlog at the Copyright Office.   Yet, cross a state line and the outcome may be entirely different.  The court may or may not grant the injunction, but at least the court will listen to you.  All this leads to forum shopping and races to the courthouse -- which just increases the cost of litigation that is already too expensive for many.

The American Bar Association has been studying the issue and may try to get Congress to clarify the law rather than waiting for the process to slowly play its way through the courts.  Then again, it may not.  What do you think?  Is this a "who cares" issue?  If it is worth our attention, what is the solution?

Before Revealing Your Masterpiece On Facebook, Read The Terms Of Use

By Dave Rein

Either this week or next, Facebook will make it official that it will follow its new terms of use -- the legal stuff buried in a link at the bottom of the homepage entitled "Terms".  Who cares?

If you are a writer, photographer, musician or other creative type, you are likely to have a Facebook page and you definitely should care.

But, you don't need to be a writer or other artist to care.  What you post today may be worth something tomorrow -- whether by design or dumb luck.  If you are reading this blog and are under the age of 106, you are likely to be on Facebook or some other social networking site.  Facebook alone claims to have 200 million users and there seem to be enough social networking sites to fill a Costco-sized grocery cart.

Still, many creative people are using the enormous popularity of social networking sites to tap an international audience in hopes of creating a buzz that will promote his or her creations.  It is not uncommon for photographers, for example, to post pictures such as this one -- albeit much cooler -- on their page to generate interest.  Of course, this is not unique to photographers.  Writers, musicians and others who develop creative material regularly post their creations on social networking sites.  

Perhaps because there are so many people who have posted their creative works on Facebook, a mini-revolt took place when Facebook announced that it was changing the terms of use.  As the Consumerist reported, bloggers discovered that Facebook had changed its terms to arguably grant itself significant new rights to the creative works that users posted.  The change led several artists such as photographer, Jim Goldstein of San Francisco, to announce that they were removing their work from Facebook.

Facebook did back off of its broad terms and agreed to allow the Facebook community to chose whether to adopt the old set of terms or a revised set of terms.  Last Friday, Facebook announced that the tenative results (presumably subject to an inspection for hanging chads) showed that its users voted to approve the revised set of terms that are somewhat less broad that the ones that set off the mini-revolt.  I expect that we will hear an official confirmation of the vote soon.

So is it now safe to post your creative work on social networks?  I count myself as one who takes Facebook CEO Mark Zuckerberg at his word when he says that there was no intent to make a mass grab at the intellectual property rights stemming from user generated content.  But, you still need to get the terms of use right else a court may listen sympathetically and then rule:  "So sorry, too bad."

I am still puzzled by the expansive language that has been adopted.  One who posts anything on Facebook still gives Facebook a license to use the work for almost any purpose.  This is in stark contrast to terms on MySpace, Xanga and Bebo for example that more narrowly restrict the purpose for which the social network receives a license to use posted content.  Even better, Twitter expressly states that it does not claim any intellectual property rights over the material provided to Twitter.

For now, I think that someone who posts work that he or she created on Facebook should be cautious.  I don't think that there is anything sinister going on at Facebook, but the legal language still does not match its public statements.  The terms are better at several other social networking sites, but they are still fairly broad so read the terms of any social networking site before posting your work and check periodically to see that the terms have not changed.  Take these precautions before you post and avoid hearing the judge rule:  "So sorry, too bad!"

Can Contract Law Tame Public Art Controversies?

By Dave Rein

The story of a thirty-two foot tall blue demon with glowing red eyes that that killed its famous creator and greets those arriving at the Denver airport was picked up nationally by the Wall Street Journal, the New York Times and other newspapers.  "Demon" is a bit strong as it was the long-awaited installation of Luis Jiménez's blue mustang commissioned by the Denver International Airport.  But, it has all the ingredients of an attention-getting story:  fame, money, death and even a protest using Facebook.

With some calling for the removal of the blue mustang from the airport, the DIA has been in an uncomfortable spotlight.  But, the DIA has one thing going for it.

Kudos should go out to whomever inserted a provision in the contract between the DIA and the artist that the statue remain in place for five years.  A short detour before I explain why . . . .

Is there any other legal reason why the statute would have to stay in its current location?  Some have suggested that the Visual Artists Rights Act (VARA) which provides artists with limited moral rights in addition to the usual copyright protection would prevent the DIA from removing the enormous mustang. That day may come, but as it stands now, I agree with the Patry Copyright Blog that nothing in the VARA would prevent the DIA from moving the blue mustang -- even if the artist believes that a different location alters the vision he or she had for the art.

An early decision interpreting the VARA (English v. BFC&R East 11th St. LLC) held that moving a sculpture does not, by itself, constitute "destruction, distortion or mutilation."  Although the courts have prevented some entities from moving a sculpture when it would destroy the work itself (i.e. Carter v. Helmsley-Spear), the DIA can rope and move the wild mustang without damaging it.

So why are kudos deserved?  Absent the contractual language, the DIA would have to take a side in the dispute -- understandably, politicians are not eager to take a position over public art that may alienate potential voters.  Likewise, the artist may welcome the attention.  After all, the whole idea of the art may have been to engage us in a conversation.  But, even someone like Jimenez (assuming he was still alive) who has works at the Smithsonian and in several cities -- including my own Kansas City, may not have the clout or financial wherewithal to wage a public relations campaign.  

A contract clause that keeps the art in place at a specific location for 5 years or even 1 year protects both the artist and the public entity that commissions the art from what usually amounts to a vocal minority of the public.  Such a clause effectively creates a "cooling off" period during which the public entity can state that its "hands are tied" because the contract requires the statute to remain in place. The artist can rest assured that for some period of time, his or her art will not be relegated to an obscure location or warehouse.  At the end of the cooling-off period, more reasoned decisions can be made.

Not every contract between an artist and a public entity should include such a clause, but it should be used more frequently than it currently is used.   After all, the blue mustang is hardly the first or last public art project to stir debate or passions.  Just last week, the Artist's Magazine Blog noted the "Money for a Bunny" controversy stemming from Sacramento's commission of a large red rabbit for its airport.  To round out our primary colors, I predict that an airport in the eastern United States will announce the commission of a green elephant -- you heard it here first!   

Sure contracts can be broken, but don't dismiss them as toothless wonders.  One only needs to look to see how the United States government was powerless to stop from giving $165 million or so in bonuses to those in the very unit of AIG that is the poster child for the world-wide economic debacle.

There is nothing wrong with controversy and it may be welcome.  But adding the contract clause should help both the artist and the public entity ride safely through the storm.

When Celebrities Hang Out At The Pawnshop

By Dave Rein

It is no secret that banks large and small pulled the Persian rug (perhaps a green one for St. Patrick's Day) out from art buyers who sought to finance their purchases with a loan.  The Wall Street Journal noted this trend back in April 2008.

So given the current economic mess we are in, it should not come as a surprise that the borrowing-to-buy-art trend has taken a step in the other direction -- the number of pawnshops dedicated to loaning money in return for high-end art as collateral is on the rise.  An article in the New York Times mentioned several prominent art pawnshops:

It is also not unusual for auction houses such as Christie's and Sotheby's to provide a similar service as the art pawnshops by providing a bridge loan to tide the seller over until the auction is over and the proceeds have been collected.  But, the auction houses generally did not offer their clients the ability to pawn art.  In the bad old days of economic prosperity, someone pledging his or her Andy Warhol used to have to stand in line at a traditional pawnshop behind the guy pledging his toaster oven.  Not anymore apparently.

The part of the NYT article that caught my eye was that Annie Leibovitz, one of the most famous celebrity photographers of our time, pledged all of her photographs to Art Capital Group for $15.5 million.  The terms  include not only all of the photographs and contract rights of those that she has taken, but also all of the photographs that she will take.  The Guardian has an excellent audio discussion of the Leibovitz transaction and the possible reasons why Ms. Leibovitz may have been compelled to pledge all of her photographs.  

The photograph that Ms. Leibovitz takes next week?  Pledged to the Art Capital Group.  Next year?  Art Capital Group gets those as well.  That's on top of the 6 to 16% interest rate.  Those are tough terms.

Presumably she gets to receive the income stream from fees and royalties that her photographs generate unless her loan goes into default.  She has a number of projects in the works which should bring in a tidy wad of cash so nobody should count her out yet.

I am still curious about the remaining terms of these types of loans and how, if at all, they would affect her copyright ownership and the right to enforce them.  During the term of the loan, does she retain all rights to the copyrights?  Does she retain the right to enforce the copyright?  My suspicion is that Ms. Leibovitz retains her ownership and enforcement rights unless the loan goes in default.

But what other terms does the contract provide?  For example, it would seem that among the terms is the requirement that she enforce the copyrights so as to protect the value of the pledged collateral, but how much discretion does she have in deciding whether to sue a possible infringer?  Please let me know if you are familiar with the loan terms and the impact on her copyrights.

If there is a clear winner in this story, it is probably Art Capital Group because others looking to pawn their art may be more inclined to use Art Capital Group knowing that prominent artists themselves have pledged their work to it.  But, will it be a short-term winner?  Will there be a great demand to pawn expensive pieces of art when the economy bounces back and we can once again crawl out of the Stone Age?   

Happy Birthday Barbie! Things I Learned From Barbie . . .

By Dave Rein

Barbie, the iconic doll who lines the shelves of big box and mom-and-pop toy stores everywhere, celebrates her 50th birthday today.  I was more of a G.I. Joe kid growing up, but I'll be the first to admit that Barbie has done more for teaching us the ins and outs of trademark and copyright law than tough Joe ever did.

While others have used her birthday to look back at her last 50 years to ponder whether she has been a good or bad influence on generations of kids, her power in the fashion world, or the enormous amount of money collectors will pay for her, I was curious as to how she has shaped our view of intellectual property.  Frankly, it is somewhat surreal that when I stand before a judge or jury to argue a point, some of my arguments have been shaped by an unusually shapely plastic doll.

There are a staggering number of cases involving Barbie or cases that refer to Barbie in courts' opinions, but the most obvious area in which Barbie's charms have had the strongest influence is on our notion of parody for both trademark and copyright law. 

Perhaps the most well-known of these cases involved the song "Barbie Girl" and probably the only song by the group, Aqua, to hit the charts in the U.S.  YouTube, probably at MCA Records' request, no longer allows users to embed video of "Barbie Girl", but you can still watch it here.

The maker of Barbie, Mattel, was not terribly happy with a song that makes fun of Barbie and sued for trademark infringement.  The Court of Appeals noted that Aqua would likely lose if it used Barbie to mock others, but because the song makes fun of Barbie herself and the values that the group claims she represents, the First Amendment compels a different result. 

The same result occurred when Mattel challenged a photographer, Tom Forsythe, who displayed nude Barbies in not so flattering poses and situations.  His defense to a lawsuit for copyright and trademark infringement was successful because he was able to show that the use of Barbie in the photographs was fair use to parody and comment on his perception of Barbie's influence.  

Don't get the impression that Barbie has not done well in court.  Her $100 million win against Bratz  last year and a long string of other victories show that she is a formidable opponent in the courtroom. 

But, let's not dwell on the number of notches Barbie has on her stylish belt.  Instead, let's wish her a hearty "Happy Birthday!" and look forward to her future exploits in the courtroom over the next 50 years.

 

Fair Use or Copyright Infringement? Iconic Obama Poster Sparks Debate

By Pete Salsich III

Whether you view it as an iconic image for a hopeful progressive nation or nothing more than a thinly-veiled attempt at Soviet-style propaganda, you've almost certainly seen one of the now-famous Obama posters created by artist Shephard Fairey.  (above right)

Two weeks ago, the Associated Press accused Fairey of copyright infringement because the poster was based on a photograph taken in April 2006 by Mannie Garcia while on assignment for AP.  (above left)

Last week, Fairey countered by filing a declaratory judgment action in the Southern District of New York, claiming that his use of the original photograph is protected by the Fair Use Doctrine.  According to his Complaint (.PDF here), "Fairey used the Garcia Photograph as a visual reference for a highly transformative purpose; Fairey altered the original with new meaning, new expression, and new messages; and Fairey did not create any of the Obama Works for the sake of commercial gain."   

I think he's right.  Fair Use can be a notoriously slippery concept to apply, but in this case I think the transformative nature of Fairey's posters tips the case in his favor.  Moreover, he used only a portion of the original photograph--only as much as necessary to achieve his expressive purpose--and I think it unlikely that the AP could prove Fairey's posters have had a negative impact on the commercial market for the photograph.

In an added wrinkle, apparently the AP's claims of copyright ownership in the photograph are being questioned by Garcia himself.  This looks more like a PR blunder for the AP than anything else, but at least Garcia's work as a photographer is getting noticed along with Fairey's ubiquitous poster.

Owners, Borrowers & Thieves 2.0

By Pete Salsich III

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 . . .  

Fair Use In a Realm of New Use: User-Generated Videos

By

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.

Judicial Ideology and Right of Publicity Cases

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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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Contracting Away Fair Use Rights: Amazon's MP3 Store, Lucasfilms and Blanket Licensing

By Pete Salsich III

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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Empire Declares Truce with Rebel Alliance

By Geoffrey Gerber

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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James Brown "Live": Papa's Got a Brand New Claim

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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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Go, Shorty, It's Your Copyright -- Not

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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-RoseHow 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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Settling The IP Litigation Case: A Great New Blog Resource

By Pete Salsich III

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.

"Hey! (hey!) You! (you!), I wanna be your lawyer!"

By Pete Salsich III

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.

Copyright Infringement, Digital Devices and Electronic Discovery: Courts Have Random Access Memory Lapses

By Pete Salsich III

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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Thoughts to ponder while camped out in front of the Apple store.

By Gary Pierson

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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The Karaoke Case: Fair Use or Infringement To A Fair-Thee-Well?

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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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Carol Burnett and Fox TV: Who's Fair and Balanced Now?

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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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Hillary's Sopranos Spoof: Pretty Woman or the Candidate NOT in the Hat?

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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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Son of Tasini -- or Desperately Seeking Analogies

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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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Parody without the porn - and without the parody

By Geoffrey Gerber

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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Making Sense of Fair Use: A Scientific Approach

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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.

The Year of the Blond Bombshells - or - Time to Scour the Obituaries.

By Geoffrey Gerber

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.

Copying the Copyright Infringement Complaint: A Sidebar in the YouTube Litigation

By Pete Salsich III

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.

Naked Women, Farting Dolls and Fair Use, Oh My

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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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Fair Use Victory Costs Defendant Over $1 Million

By Geoffrey Gerber

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?.

Copyright Class Action: YouTube and Google Face Another Legal Front

By Pete Salsich III

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. 

Fair Use of Presidential Debates: Scorecard Update

By Pete Salsich III

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 . . .

Fair Use of Presidential Debates, please.

By Pete Salsich III

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.

Copyrights and Music Downloads: Selling or Licensing?

By Pete Salsich III

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.