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.  

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

By Dave Rein

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

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

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

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

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

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

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

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

 

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.