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.

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.  

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 . . . "
 

Google Takes Keywords Global -- Making Lawyers Around The World Happy

By Dave Rein

We previously wrote that the Second Circuit handed Google a defeat in its efforts to sell trademarks of competitors for its lucrative keyword advertising scheme.  Apparently undeterred by that setback or ongoing action with Louis Vuitton which is now in the European Court of Justice, we learn from our favorite blog on all things IP in the European world, IPKat, that Google announced that it will expand sales of keyword advertising (including the sale of a competitor's trademarks) to 194 more countries.

The Internet World Club reports that the move to expand keyword advertising globally is not going to make Google many friends among the companies with stables of thoroughbred trademarks and will add new fuel to the Louis Vuitton case.  The Vegas betting line is that Google will lose the action before the European Court of Justice which, according to IPKat, is expected to announce its decision on the same day that Google is expanding its keyword advertising scheme.

While I do not profess to hold a crystal ball of any renown, I can already envision IP lawyers from around the globe rejoicing and powering up their computers to prepare lawsuits against Google.  Likewise, I suspect Google has received one or two phones calls and e-mails from IP defense counsel offering their services.  Meanwhile, I suspect that Microsoft is enjoying a brief moment of respite from being the center of controversy. For the rest of us, we can watch what is sure to be some exciting clashes over the issue of keyword advertising.

Can Google Sell Trademarks As Keywords To Trigger Advertising?

By Dave Rein

If I search for "Delta Airlines" on Google so I can book my flight to Washington D.C. to see the cherry blossoms, can Google sell American Airlines the "Delta" trademark as a keyword to ensure that American's advertisement appears with my search results?  It does not appear that American Airlines does this, but other companies do and litigation ensues.

The Second Circuit waited until the American Bar Association's Intellectual Property conference and the bloom of the cherry trees to release its long-awaited decision in Rescuecom Corp. v. Google Inc.  -- the first circuit court to directly address the issue of keyword advertising. 

For the uninitiated, Google sells keywords to advertisers -- including the trademarks of an advertiser's competitors -- which it calls contextual advertising so that when a user types a keyword into a Google search, the advertiser's link will appear in an area above or to the right of the natural search results labeled "Sponsored Links."  So a business could "buy" its competitor's trademark as a keyword to trigger its own advertising in the Sponsor Links section.  

One of Rescuecom's competitors paid Google the right to use the RESCUECOM trademark as a keyword to trigger its advertising. Rescuecom sued Google for trademark infringement, dilution and other claims.  The district court ruled in Google's favor as had every other district court in the Second Circuit.  The court held that there is no cause of action because, in part,  the user never sees the RESCUECOM trademark -- the Google results do not show the trademark in the Sponsored Links section.  But, decisions outside of the Second Circuit held that selling a trademark as a keyword to trigger advertising does state a cause of action for trademark infringement.  For those of you who are a glutton for punishment, you can find the main briefs filed with the circuit court at Professor Eric Goldman's blog, Technology & Marketing Law Blog.

Apparently, the Second Circuit put a lot of thought in its decision as it took exactly one year to the day from the time it was argued for the court to release its decision.  The decision reversed the district court and held that Rescuecom did state a cause of action and could proceed with proving the rest of the requirements to establish trademark infringement.  Professor Goldman provides one early analysis of the decision.  As the Wall Street Journal noted, however, the Second Circuit decision only allows the case to go forward. 

Rescuecom still has to prove the rest of its case before it can declare victory which the Progress & Freedom Foundation (which Google appears to be a member of), does not believe is likely.  Regardless, the decision is noteworthy as the first circuit court to weigh in on whether selling a competitor's keyword to trigger advertising can be the basis for a trademark infringement lawsuit.  I suspect it will also initiate a new round of litigation against Google in an effort to claim some of the advertising revenue Google receives under this program.

One curious part of the thirty-four page decision is that on page fifteen, the Second Circuit concludes its analysis.   To what do we owe these extra nineteen pages?  An Appendix.  Usually, an appendix is the place to dump graphs, pictures and incomprehensible data.  But in this case, the court examines the real nut of the advertising keyword debate. After an exhaustive examination of the statute and legislative history, the court concludes that it can't reach a conclusion because the statute, the Lanham Act, and its history are just too ambiguous to reach a conclusion! 

The court, in the Appendix, then calls on Congress to fix the problem.  Given that Congress is preoccupied with the economic crisis, two wars and a handful of other social issues, I wouldn't hold my breath while waiting for that to happen.  Perhaps someone at the court decided that the research that they did on the issue should not be buried somewhere never to be seen again, but the Appendix still strikes me as odd.

While we wait for Congress, I suspect that someone in Las Vegas would be willing to take a bet as to which circuit court will be the next one to weigh in on this issue.  My money is on the Ninth Circuit.  What's your bet?

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

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

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

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

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

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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Fantasy Baseball 2, Real Baseball Zero

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The Eighth Circuit handed down its much awaited fantasy baseball decision in CBC Distribution & Marketing, Inc. v. Major League Baseball Advanced Media, L.P., the appeal of the district court's summary judgment in favor of CBC.  CBC had brought a declaratory judgment case in St. Louis to establish its right to use -- without license or compensation -- the names and statistical information of real major league baseball players in its fantasy baseball products.  The players had counterclaimed, maintaining that CBC's fantasy baseball products violated their rights of publicity.

Although the Eighth Circuit concluded that use by CBC of the names and statistics of the players in its commercial fantasy baseball operations satisfied all three elements of the Missouri tort -- namely, (1) use of the player's name as a symbol of his identify, (2) without his consent, and (3) with the intent to obtain a commercial advantage -- it held that this use was nevertheless a "fair use" under the First Amendment.

But of more interest to me -- and to those concerned that right-of-publicity has become the tort of choice for celebrities seeking to avoid the First Amendment barriers to libel and privacy claims -- is the Eighth Circuit's treatment of the controversial  First Amendment test created by the Missouri Supreme Court in the Tony Twist case, which is also the same case that articulated the three elements of the tort claim set forth in the preceding paragraph.

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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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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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Valerie Plame Redux, Southwest Style

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While all versions of "fair use" share some of the same 1st Amendment genetic code, the doctrine has one meaning in copyright law, other meanings under trademark law (such as 15 U.S.C. Sections 1115(b)(4) & 1125(c)(4)), and yet other meanings in the field of right of publicity

But for those of us who toil in the journalism vineyards -- where the purest and oldest of those DNA strands are found -- the fair use defense actually travels, at least in invasion of privacy lawsuits, under the alias of "newsworthiness."  The scope of that doctrine took center stage in Alvarado v. KOB-TV, a recent 10th Circuit decision affirming a district court's dismissal of a lawsuit filed by two undercover cops against an Albuquerque TV station that broadcast their identities. The  plaintiffs were Albuquerque cops who were named on the news show as suspects in a sexual assault case; in addition, the station aired video footage of each man opening the door to his home after the reporter rang the doorbell.  The cops were eventually cleared of the sexual assault charge, although they continued to receive threats as a result of the broadcast. There was no defamation claim because the station's broadcast was entirely true: they had indeed been charged with a crime.  So instead, they (and their wives) sued the station for invasion of privacy and intentional infliction of emotional distress.

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Beckham Beckons: Using Real People's Names In Movie Titles

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The recent explosion of media coverage over the California arrival of David Beckham got me thinking about the use -- or more precisely, the "fair use" -- of his name in the title of the motion picture Bend It Like Beckham.  When I first heard that title back at the time of the movie's release in 2002, I had only the vaguest knowledge of David Beckham and made no connection between him and the rest of the title.  Indeed, to this ignorant American the title had mysterious and vaguely erotic connotations, as if it referred to a position in the Kama Sutra.  But the rest of the world, of course, knew immediately that the Beckham in the title was THE most famous athlete on the planet and that the title itself referred to Beckham's amazing skill at scoring on free kicks by “bending" (curving) the ball, which makes it veer out of the goalie's reach.

Knowing Hollywood, we can assume that all of the necessary permissions were signed in triplicate long before the first scene was shot.  But what if Beckham had refused to give permission?  Could you still include the name of the most famous athlete on the planet in the title of your motion picture?  Could you use for free a name that had a commercial endorsement value worth tens of millions of dollars?

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Pine Tar, Stealth Condoms and Dead Fish

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I am falling in love.  The object of my affection is the prose of a judge from the Seventh Circuit named Terrence T. Evans who seems equally at home in the worlds of jurisprudence, hip hop and baseball.  My infatuation began with Judge Evans' opinion in United States v. Murphy, 406 F.3d 857 (7th Cir. 2005), an otherwise run-of-the-mill drug case in which he famously paused to drop a footnote correcting the court reporter's misspelling of the term "ho":

The trial transcript quotes Ms. Hayden as saying Murphy called her a snitch bitch "hoe." A "hoe," of course, is a tool used for weeding and gardening. We think the court reporter, unfamiliar with rap music (perhaps thankfully so), misunderstood Hayden's response. We have taken the liberty of changing "hoe" to "ho," a staple of rap music vernacular as, for example, when Ludacris raps "You doin' ho activities with ho tendencies."

If that footnote doesn't make you swoon, check out his latest opinion, Central Manufacturing, Inc. v. George Brett, et al. -- a trademark infringement case in which the lead defendant is indeed THAT George Brett, now enshrined in the Baseball Hall of Fame.  The Gods of Serendipity sent the appeal to a panel that included Judge Evans, and the resulting opinion will surely please them.

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And the Keyword Beat Goes On

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Eric Goldman's Technology & Marketing Law Blog offers an excellent analysis of the latest district court decision to weigh in on the question of whether the purchase of a Google keyword ad that uses a competitor's trademark or the use of that trademark in the defendant's metatags constitutes a trademark use "in commerce" under the Lanham Act (and the equivalent state trademark laws).  Better yet, Eric saves me from having to update Pete's update of my original post on the topic. This latest decision, FragranceNet.com, Inc. v. FragranceX.com, Inc., (E.D.N.Y. June 12, 2007), is the fourth one in a Second Circuit jurisdiction holding that buying a keyword ads is not a trademark use in commerce.  The lesson for would-be trademark plaintiffs: sue outside the Second Circuit.

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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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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Dead Celebrities and Dead Presidents: Round 2

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Following up on Geoff's post on the recent New York federal district court decision finding that Indiana's privacy statute (and, in passing, New York's as well) does not grant celebrities post-mortem publicity rights, the New York State Assembly and Senate now have pending before them legislation to revive dead celebrities -- or, more precisely, to give heirs the ability to turn dear old mom into hard cash.  In my other life (which also includes the pen name Michael Baron), I am a member of the Authors Guild, which has launched a campaign opposing enactment of the legislation.  Check it out.

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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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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Porn Names, Part II

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Geoff's musings over porn star names aroused, er, got me thinking about a related  "fair use" issue, namely, the porn industry's unauthorized use of slightly altered titles of famous motion pictures.  Such as On Golden Blonde.  Breakfast on Tiffany. Inspect Her Gadget.  And any on the Top Ten list compiled by BBspot, which begins, at #10, with Forrest Hump.

Each use is an obvious commercial attempt to cash in on the widespread awareness and recognition of the original title.  Each use is also an obvious commercial attempt to capture the prospective buyer's attention, to stand out in a crowd of titles.

But are these uses "fair uses"?

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What is your porn star name?

By Geoffrey Gerber

Apparently you take the name of your first pet and add the name of the street on which you were raised. Sorry I couldn't find a safe link to cite for authority, but there is an R-rated monologue on point in YouTube.  -- Warning! If you do not employ this somewhat random name generation technique, you might be inviting a lawsuit.

No there isn't one yet, but the New York Post's Page Six reported that Katie Holmes, former Dawson's Creek ingenue, is considering available recourse (presumably legal) to pursue against Katee Holmes. Apparently Ms. Holmes ("ee" not "ie"), a self-proclaimed virgin, announced her intention to launch a career as a porn star by filming her first sexual encounter. I will  not provide the link to her website (with its countdown clock), but the Defamer blogs about it.

Normally the career choices and self-promotional efforts of eighteen-year-old fashion students do not merit much serious consideration for litigation. The difference in this case: the New York Post reports that the young woman in question "changed her name" to Katee Holmes to launch her direct-to-video career. Such a calculated move invites a right of publicity lawsuit, the crux of which is invoking a celebrity's identity to obtain a commercial advantage.

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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.

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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