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

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? 

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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.  

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Whether you were looking for false advertising claims on the Super Bowl commercials, roving the streets of Miami looking for counterfeit merchandise or just enjoying the game, the Super Bowl had a little something for everyone.  

The NFL even threw those who have a special interest in trademarks a big meaty bone to chew on when the NFL claimed trademark rights in the chant:  "Who Dat?"  

The origins of "Who Dat" are not entirely clear, but it certainly has been used for many years and most recently by New Orleans Saints fans who chant:  "Who dat? Who dat? Who dat say dey gunna beat them Saints?" 

A furor immediately broke out when the NFL sent cease and desist letters to T-shirt shops in New Orleans selling merchandise with "Who Dat" on them.  Days before the Super Bowl, the NFL appeared to change its position when it claimed that it would only pursue those who use "Who Dat" in connection with other Saints trademarks.

But, there are plenty of others besides the NFL who claim to own a trademark in "Who Dat".  A search at the United States Trademark Office shows applications for "Who Dat" for pretty much any kind of apparel that you can think of, action figures and variations of the mark including "Who Dat!!" for more apparel, "Who Dat? Blues Band" for entertainment and "Who Dat' Je Crois" for T-shirts.  For a store owner such as Lauren Thom, the NFL's announcement that it is no longer laying claim on "Who Dat" only provides some relief given the myriad of claims on the phrase.

I thought it was interesting to review the USPTO applications for "Who Dat", "Who Dat?" and "Who Dat!!" for apparel.  The only difference between the applications, of course, being that one has no punctuation mark and the others have either a question mark or two exclamation marks.  Likewise, other applications simply added "Je Crois" to "Who Dat".  While these applications may be of limited use to one defending against claims of trademark infringement, they do give attorneys who are untangling this web a lot to talk about. 

Regardless, the Saints and their fans had a lot to cheer about this weekend.  In the space of a few days, they not only beat the Indianapolis Colts to win the Super Bowl, but they also beat the NFL itself.  Who Dat!

Correction: the earlier post incorrectly referred to registrations instead of applications. 

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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.

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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. 

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A 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.

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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 . . . "
 

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"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!"

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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!"

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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:

• Art Capital Group

• Art Finance Partners

• ArtLoan

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?   

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Coming soon to a blogoshpere near you . . .

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

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

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

Stay tuned . . .  

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

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

But not so fast . . .

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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