Less Hope For Shepard Fairey in Obama Hope Poster Case?

By Dave Rein

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

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

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

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

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

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

By Dave Rein

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

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

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

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

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

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

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

 

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

By Dave Rein

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

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

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

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

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

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

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

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

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

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

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

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

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

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 . . . "
 

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

By Dave Rein

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

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

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

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

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

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

By Dave Rein

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

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

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

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

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

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

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