Tattoo Copyright Infringement Suit Dribbles On

November 14, 2017 · by ·

Readers of this blog may remember that Solid Oaks Sketches filed a copyright infringement suit against Take-2 Software, the maker of the NBA 2K video game, claiming that its reproduction of several tattoos worn by famous basketball players was copyright infringement. The case is still ongoing in the Southern District of New York, and defendants filed last August a motion for judgment on the pleadings, where they argue that the use was fair use. HT to the Hollywood Reporter.

Solid Oaks bought the copyright for the tattoos of Eric Bledsoe, Lebron James, and Kenyon Martin, which were created by several tattoo artists. These players appear in the NBA 2K game, complete with their tattoos. Solid Oaks claims this is copyright infringement. Take-2 argues that the use is de minimis and fair use.

A real-life depiction

The tattoos “only appear on the players on which they were inked in real life, not other real-world players or fictional characters” (p. 13). Indeed, the NBA 2K game, which is updated every year, depicts over 400 current and retired NBA players “realistically. …These depictions have realistic facial and physical features… They wear jerseys and sportswear with the numbers, colors and logos of their teams. The game even depicts NBA-branded socks” (p.9).

The tattoos at stake were each created specifically for the players. As explained in the motion, “[e]ach tattoo was created as a custom tattoo intended only for the player on which it was inked… Thus, they are imbued with special meaning for the players. For instance, Solid Oak admits that “Child Portrait Tattoo Artwork” depicts LeBron James’s son… Similarly, “330 and Flames Tattoo Artwork” depicts the number 330, which is the area code for Mr. James’s hometown” (p. 12).

Defendant argues that Plaintiffs “seek to hinder the ability to depict people as they appear in real life” (p.6), and that Plaintiff is contending that these famous basketball players must now seek its permission each time they appear in public, in films, or when being photographed.

Use is de minimis

Defendant is arguing that the use of the protected work is de minimis. “[T}rivial copying does not constitute actionable infringement” Newton v. Diamond, 388 F.3d 1189, 1193.

There are 400 players available in the video game, and so the tattoos only appear when the three players featuring the tattoos which copyright is owned by plaintiff appear in the game. Also, the tattoos appear very small in the game and thus are very difficult to see. For Defendant’s the tattoos “are just one of the myriad of elements that makeup NBA 2K” (p.13).

Use is fair use

Defendant is also arguing that it “is not a rival tattooist that has replicated a creative design and inked it on a new person. Rather, its use is completely different in a massive, highly creative video game featuring a virtual world that only uses player tattoos to realistically capture how the players actually look. Each of the factors that courts consider supports a finding of fair use.”

Defendant reviewed each of the four fair use factors and argued that each of the factors is in its favor.

The first factor, the purpose and character of the use, is in Take-Two’s favor because it “uses the Tattoos for a different purpose than that for which they were originally created. While the Tattoos originally were created as the NBA players’ self-expression, Take-Two uses them merely to replicate how the players appear in real life.”

The second factor, the nature of the copyrighted work, should also be in Defendant’s favor because “Take-Two uses them to depict the world accurately.”

The third factor, the amount and substantiality of the portion used, should be in Defendant’s favor because the “use was reasonable given that its purpose was to depict real life accurately, and using any less of the Tattoos would defeat that purpose.”

The fourth fair use factor, the effect of the use upon the potential market, should be in Defendant’s favor because Plaintiff “admitted that it is contractually prohibited from inking the Tattoos on other people, meaning that Take-Two’s use cannot harm that market.”

What about right of publicity?

This is a copyright infringement suit and the players are not parties in the suit. However, one could imagine that they could file a suit against the owner of the copyright of their tattoos for tortious interference in contractual relations, if not owning the copyright of their tattoos would prevent them from licensing their likeness. On the other hand, one can argue that the owner of the copyright has the right to be financially compensated if the work is reproduced, especially for in a commercial venture.

These players are celebrities, but our likeness is more and more used for marketing purposes. A few thousand followers on social media may land us all a lucrative marketing deal. If we sports tattoos but do not own their copyright, should we secure a license before posting selfies? As Jack London once said [on Twitter]: Show me a man with a tattoo and I’ll show you a man with an interesting copyright license.

Image is courtesy of Flickr user Carlos 90 under a CC BY-SA 2.0 license.

This blog post was first published on The 1709 Blog.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright, Right of Publicity · Tagged: , ,

Athletes’ Right of Publicity Claim Preempted by Copyright Act

November 9, 2017 · by ·

The U.S. Court of Appeals for the Ninth Circuit ruled on 5 April 2017 that the Copyright Act preempted the California right of publicity claims of Plaintiffs, former college athletes whose photographs are part of the National Collegiate Athletic Association (NCAA) library of images license online by Defendant. The case is Maloney v. T3Media, 15-55630.

Plaintiffs played on the Catholic University basketball team from 1997 to 2001, which won the 2001 Men’s Division III NCAA championship game. Defendant T3Media entered into an agreement with NCAA in 2012 to store, host and license the images in the NCAA photo library. The NCAA runs 90 championships in 24 sports across 3 divisions, and its library contains thousands of photographs of championship games, including some taken during the 2001 Men’s Division III championship game in which Plaintiffs participated.

T3Media sold non-exclusive licenses online for two years that allowed users to download copies of the NCAA photographs for personal use. Plaintiffs contended that such action was a violation of their California statutory right of publicity, California Civil Code § 3344, California common law right of publicity, and a violation of California Unfair Competition Law.

They filed a putative class action suit in June 2014 in the U.S. Central District Court of California on behalf of current and former NCAA athletes whose names, images and likeness had been used without their consent by Defendant for purpose of advertising, selling, or soliciting the purchase of these photographs.

The two-steps of an anti-SLAPP analysis

Defendant moved for a special motion to strike under California anti-SLAPP statute, Cal. Code Civ. Proc. § 425.16, which aims to prevent strategic lawsuits against public participation (SLAPP). Courts follow two-steps when assessing an anti-SLAPP motion to strike: first the moving defendant must show that plaintiff’s suit arises from an act in furtherance of defendant’s right to free speech, as protected by the First Amendment. The second part of the assessment shifts the burden to plaintiff who must demonstrate a probability of prevailing on any of her claims.

T3Media had argued that the photographs at stake, and their captions, had been published in a public forum in connection with a matter of public interest. The district court agreed, finding that the photographs “fell within the realm of an issue of public interest” (District Court, at 1134).

This shifted the burden to Plaintiffs to demonstrate a reasonable probability of prevailing on any of their claims. Defendant claimed three affirmative defenses: (1) Plaintiffs’ claims were preempted by federal copyright law, (2) were barred under the First Amendment, and (3) California right of publicity law exempts from liability use of likeness in connection with any news, public affairs, or sports broadcast or account.

The district court did not address the last two defenses as it found that Plaintiffs’ claims were preempted by the Copyright Act, because Plaintiffs asserted rights that fell within the subject matter of copyright, and granted Defendant special motion to strike. Plaintiffs appealed to the Ninth Circuit, which affirmed.

As Plaintiffs had conceded that their suit arose from acts in furtherance of T3Media’s right to free speech, the Ninth Circuit only examined whether Plaintiffs indeed had demonstrated a reasonable probability of prevailing on their claims, and found they had not met that burden, as the Copyright Act preempted their claims.

The copyright preemption two-part test

Section 301 of the Copyright Act provides that common law or statutory state laws are preempted by rights “equivalent to any of the exclusive rights within the general scope of copyright.” Courts in the Ninth Circuit use a two-part test to determine whether a state law claim is preempted the Copyright Act: the courts first decide if the subject matter of the state law is within the subject matter of copyright, and then determine if the rights asserted under state law are equivalent to the exclusive rights of the copyright holders, as determined by Section 106 of the Copyright Act. Parties only argued about the first part of the test.

The right of publicity claim is not preempted if its basis is the use of a likeness

Plaintiffs argued that their right of publicity claim was not preempted by the Copyright Act because publicity right claims protect the persona of an individual, which cannot be fixed in a tangible medium of expression (p. 12). They relied on Downing v. Abercrombie & Fitch, where the Ninth Circuit held that “the content of the protected right must fall within the subject matter of copyright” for the Copyright Act to preempt the state claim (Downing at 1003). Plaintiffs reasoned that their likeness is not with the subject matter of copyright and thus their state claim cannot be preempted by the Copyright Act.

Defendants argued that Plaintiffs’ likeness had been captured in an artistic work and had not been used on merchandise or in advertising. Indeed, the Ninth Circuit noted that “the “core” of the publicity right is the right not to have one’s identity used in advertising” (p. 13). The court of appeals concluded “that a publicity-right claim is not preempted when it targets non-consensual use of one’s name or likeness on merchandise or in advertising. But when a likeness had been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use, a publicity-right claim interferes with the exclusive rights of the copyright holder, as is preempted by section 301 of the Copyright Act“ (p. 13)(emphasis of the Court).

The Ninth Circuit distinguished its Downing case from the case at stake, as the right of publicity claim in Downing is not about the publication of the photograph, but its use: Abercrombie used the surfer’s likeness in the catalog and had also sold reproductions of the tee-shirts worn by them in the photograph. The Ninth Circuit concluded that If the basis of the right of publicity claim is the use of a likeness in a photograph, the right of publicity claim is not preempted by copyright (p. 17).

When is a likeness misused in a work protected by copyright?

Therefore, the “crux of the issue” was whether the basis of the publicity-right claim was indeed to defend Plaintiff against a misuse of their likeness by Defendant. The court reasoned that Section 301 does not distinguish among different types of work protected by copyright, and that the pertinent issue was the way the likeness was used, not the type of the copyrighted work. In Downing, the basis of the publicity-right claim was not the publication of the photograph, but its use to advertise Abercrombie’s products and the creation of tee-shirts similar to those worn by Plaintiffs in the photograph, which were commercial exploitation of Plaintiff’s likeness (p. 19).

The Ninth Circuit noted further that it held in 2006, in Laws v. Sony Music Entertainment, Inc., that “federal copyright law preempts a claim alleging misappropriation of one’s voice when the entirety of the allegedly misappropriated vocal performance is contained within a copyrighted medium” (Laws at 1141). The Ninth Circuit also cited its Jules Jordan Video, Inc. v. 144942 Canada Inc. 2010 case, where it ruled that federal copyright law preempts a claim alleging misappropriation of one’s name and persona based entirely on the misappropriation of DVDs of movies in which plaintiff performed and of which he owned the copyright. Plaintiff had objected to the use of his likeness on the covers of counterfeit DVDs, which the Ninth Circuit found to be “still shots” of the performance protected by copyright. The Ninth Circuit reasoned that Plaintiff claim was a copyright claim, not a claim that his likeness has been used on an unrelated product or in advertising. For the Ninth Circuit, a likeness embodied in a work protected by copyright is misused if it is used on an unrelated product or in advertising.

Why did Plaintiffs’ claim fail

Plaintiffs’ attorney argued at the hearing that Defendant was selling the photographs “as poster art, as desktop backgrounds, as digital goods” (video at 11:36). This is an interesting argument, as the Ninth Circuit attaches great importance to the type of use of the likeness. However, it is the consumers who are choosing how to use the images, within the rights provided to them by the license, not the Defendant.

The District Court explained that ruling in favor of Plaintiffs “would destroy copyright holders’ ability to exercise their exclusive rights under the Copyright Act, effectively giving the subject of every photograph veto power over the artist’s rights under the Copyright Act and destroying the exclusivity of rights the Copyright Act aims to protect” (District Court at 1138).

Plaintiff’s attorney recognized during the hearing that non-commercial use of the photos would be acceptable (video at 13:36). When asked by the judges to give an example of non-commercial use, he suggested editorial use, in a student newspaper or a national newspaper. While the Court did thus not address the issue of free speech, several media organizations filed an amici curiae brief in support of Defendant, to ensure that “the right of publicity is not transformed into a right of censorship—one that can be used to prevent the dissemination of matters of public importance” (amici curiae brief p. 9).

This post has been first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

Image is courtesy of Flickr user Tom Woodward under a CC BY-SA 2.0 license.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Right of Publicity, Sports Law, TTLF Newsletter · Tagged: , ,

Richard Prince May Offer the SDNY Another Chance to Define Transformative Use of a Work

January 2, 2017 · by ·

Richard Prince was sued on November 16 by yet another photographer over the use of a photograph in his New Portraits series. The case is Eric McNatt v. Richard Prince, 1:16-cv-08896, Southern District of New York (SDNY).

Readers of this blog may remember that Richard Prince used various photographs protected by copyright to create his New Portraits exhibition. He had commented, cryptically, or nonsensically, whatever your mood is, below several photographs which had been uploaded by others on Instagram. He then printed the results on canvas to create a series of works, New Portraits, which has been shown in New York. Prince has been sued by some of the copyright holders of the original works. One of these cases, Donald Graham v. Prince, is still pending at the SDNY.

This time, it is photographer Eric McNatt who is suing Richard Prince and the Blum and Poe Gallery for copyright infringement. The complaint alleges that Richard Prince reproduced a photograph taken by Plaintiff of Kim Gordon, a founding member and bassist of Sonic Youth, by downloading it from the web, where it had been published with a copyright notice, and uploading it on his own Instagram account. Prince has since deleted this account. Prince then wrote three lines of comments under the photograph:  “Portrait of Kim Gordon,” then “Kool Thang You Make My Heart Sang You Make Everythang Groovy” and finally added a string of music-related emojis.

This Instagram post and its comments was then printed and added to the New Portraits exhibition, which was shown in the spring of 2015 by the Blum & Poe gallery in Tokyo and featured in the catalog of the exhibition.7197150970_772ee19f92_z

Will TCA Television Corp. v. McCollum Influence the Outcome of this Case?

The Donald Graham v. Richard Prince case is still pending at the SDNY. On November 4, attorneys for Donald Graham sent a letter to Judge Sidney Stein from the SDNY, who is presiding over the case, to alert him of the recent TCA Television Corp. v. McCollum Second Circuit case (2nd Circ. Oct. 11, 2016), which, in their view, “undermines Defendants ‘motion to dismiss on fair use grounds.”

In TCA Television Corp., the author of the play Hand of God had been sued by the heirs of Abbot and Costello over the use of their famous “Who’s on First” routine. The main character of the play recites the routine verbatim in the play with his trusty (but evil) sock puppet acting as sidekick. Judge Daniels from the SDNY had dismissed the copyright infringement suit, finding the use of the routine in the play to be fair use. The Second Circuit affirmed, but on alternative grounds: the use of the routine was not transformative enough to be fair use, but the heirs had not proven that they owned the copyright in the routine.

Attorneys for Prince sent their own letter a few days later, where they argued that the holding in TCA Television is distinguishable from the case, that the TCA Television case is not even related to fair use and that thus “the entire discussion of fair use is dicta.” They also argue that the Second Circuit did not find the use of the routine to be fair because, according to the Court, “the extent of defendants’ taking is identically comedic to that of the original authors, that is, to have two performers expand on a singular joke in order to generate increasing audience laughter.”

Attorneys for Prince also argued in the letter, that, “[b]y contrast, Prince used Graham’s photograph for a highly transformative purpose: as a commentary on social media. This new meaning and message is apparent to any reasonable observer who looks at the artwork. “Prince’s attorneys also argued that “Prince’s transformative purpose [was] to provide a commentary on social media [and thus] required the incorporation of the entire Instagram post… to accomplish that purpose. “

Is the use of the McNatt Photograph Transformative Enough to be Fair Use?

What is transformative use? We still do not have a “so transformative it is fair use” test. However, the TCA Television case may influence the McNatt v. Prince case. If we consider that Prince’s purpose for reproducing Eric McNatt’s photograph of Kim Gordon was to comment on social media, as claimed by Prince’s attorneys in the Graham v. Prince case, then it is fair use under Cariou if Prince added something materially new or provided a different aesthetic. The Second Circuit had found in Cariou v. Prince that Prince’s use of Cariou’s photographs was fair use, because he had used them to create new works and had “employ[ed] new aesthetics with creative and communicative results distinct from Cariou.”

Judge Daniels from the SDNY had found in TCA Television that the use of the routine was fair use, explaining that “[t]he contrast between Jason’s seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet, is, among other things, a darkly comedic critique of the social norms governing a small town in the Bible Belt. Thus, Defendants’ use of part of the Routine is not an attempt to usurp plaintiffs’ material in order to “avoid the drudgery in working up something fresh.” Campbell, 510 U.S. at 580, 114 S.Ct. 1164. Nor is the original performance of the [r]outine “merely repackaged or republished.” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 97 (2d Cir.2014).”

The Second Circuit found that the use was not fair because it had not transformed the routine’s aesthetic, it had appropriated the routine extensively, and “[n]o new dramatic purpose was served by so much copying” and “there is nothing transformative about using an original work in the manner it was made to be used.”

If we apply this to our case, then Prince must prove that he used the original work in a different manner than it was made to be used. Should we only look at the comments written by Prince to decide if the use is transformative enough to be fair, or at the ensemble, work and comments? In both ways, the Prince’s work could be considered fair use if proven to be a critique on the desperate banality of social media and social media comments. But is it?

As noted by the Complaint, “Kool Thang You Make My Heart Sang You make Everythang Groovy” is “a transliteration of lyrics to the 1960 song “Wild Thing,”written by Chip Taylor, except that the word “Kool” replaces the word “Wild.” “Kool Thing” is the title of Sonic Youths first major label record single.” As itself, this comment may not be original enough to be protected by copyright yet it is more creative than most social media comments. The emojis chosen by Prince, however, are quite banal and so their banality may comment on banality. Pass the aspirin.

Image is courtesy of Flickr user torbakhopper under a CC BY 2.0 license.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright, Fair Use · Tagged: , ,

CJEU: Posting a hyperlink to infringing content not a communication to public, unless…

October 26, 2016 · by ·

Is providing a hyperlink to a work protected by copyright, which was published online without the authorization of the right holder, an infringement of copyright under European Union law? In order to answer this question, the European Court of Justice (ECJ) had to decide whether providing such a hyperlink is a communication to the public within the meaning of Article 3(1) of Directive 2001/29 on the harmonisation of certain aspects of copyright and related rights in the information society (the InfoSoc Directive).

Article 3(1) provides that authors have the exclusive right to authorize or prohibit “any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.” The InfoSoc Directive does not define communication of the work to the public. Its Recital 23, however, specifies that such right “should be understood in a broad sense covering all communication to the public not present at the place where the communication originates.”

The European Court of Justice (EJC) had ruled in 2014 in Svensson and Others (Svensson) that Article 3(1) must be interpreted as meaning that providing a hyperlink on one website to works made freely available  on another website is not a communication to the public because “a communication . . . concerning the same works as those covered by the initial communication and made… by the same technical means [as the initial communication] must also be directed at a new public.”16545913218_ee57b4f493_z

The ECJ defined “new public” as a “public which had not been taken into account by the copyright holders when they authorized the initial communication to the public.“ The ECJ concluded that making a work available by a clickable link does not communicate it to a new public (Svensson at 24), but did not specify if it would make a difference if the works had been made available without the authorization of the right holder.
The European Court of Justice (ECJ) answered that question on 8 September  2016 when it ruled in GS Media BV v. Sanoma Media Netherlands BV, Playboy Enterprises International Inc., Britt Geertruida Dekker (GS Media) that posting hyperlinks to protected works, if they were made freely available to the public but without the consent of the right holder, is not a communication to the public within the meaning of article 3(1). However, if the hyperlinks have been posted for profit, then it is presumed that it is a communication to the public, although that presumption is rebuttable (at 51).

Facts of the case

Here are the facts which led to GS Media. Sanoma publishes Playboy magazine. It commissioned Mr. Hermès, a photographer, to take nude pictures of Dutch starlet Britt Dekker. Samona has Hermès’ full power of attorney to represent him in enforcng his rights in the photographs. GS Media operates the GeenStijl website. In October 2011 it published a report about the leak of Ms. Dekker’s photos. The report included a hyperlink leading viewers to Filefactory, an Australian data-storage website, where, by clicking on another hyperlink, visitors could access a folder containing eleven photographs of Ms. Dekker. GeenStijl had been informed that these photos were available online by an anonymous tip, but had not published them itself on Filefactory.

Sanoma repeatedly asked GS Media to remove the GeenStijl hyperlink to Filefactory but to no avail. However, the photographs were removed from Filefactory. GS Media then published another report with a hyperlink leading to another site where the photographs were available. Playboy published Ms. Dekker’s pictures in December 2011.

Samona sued GS Media for copyright infringement in the District Court of Amsterdam and won. On appeal, the Amsterdam Court of Appeal held that GS Media had not infringed the copyright of the photographer because the photographs had already been communicated to the public when posted on Filefactory. GS Media and Sanoma cross-appealed to the Supreme Court of the Netherlands.

Samona argued that, in view of Svensson, posting a link to a website on which a work has been published is a communication to the public, whether the work was published previously with the right holder’s consent or not. The Supreme Court of the Netherlands stayed its proceeding and requested a preliminary ruling, asking the ECJ to clarify whether there is a communication to the public within the meaning of Article 3(1) if the copyright holder has not authorized to make the work available on the website to which the hyperlink directs.

AG Wathelet: Posting hyperlinks not communication to the public, unless circumvents restriction access

Advocate General Wathelet (AG Wathelet) delivered his opinion on the case on 7 April 2016. He reviewed the two cumulative criteria used by the ECJ in Svensson to analyze whether an act of communication is made to the public: there must be an “act of communication” of a work and such communication must have been made “to a public.”

For AG Wathelet, posting a hyperlink on a site which directs to works protected by copyright that are freely accessible on another website is not an “act of communication” within the meaning of Article 3(1) because it is not “indispensable” to post the hyperlink to make the protected works available to the public (AG Wathelet opinion at 60). The act which made the work available is the one made by the person who originally posted the protected work.

AG Wathelet also examined whether such communication is made “to a public” even though it was “irrelevant” to do so in this case (AG opinion at 61). AG Wathelet held that the “new public” criterion introduced by Svensson did not apply in this case because that criterion is only applicable if the copyright holder has authorised the initial communication to the public (AG opinion at 67). He noted further that, in Svensson, the ECJ had ruled (paragraphs 28 and 30) that if “there is no new public, the authorisation of the copyright holders is . . . not required for the communication to the public in question.” For AG Wathelet, even if the ECJ would apply the “made to a public” criterion to GS Media, it would not be satisfied in this case because the ECJ clearly indicated in Svensson that there is a new public only if publishing the hyperlink was “indispensable” for making the protected work available to the new public (AG opinion at 69).

In this case, the photographs had already been made available by the file sharing site. AG Wathelet noted, however, that it was not clear from the facts whether the photographs were indeed freely accessible. He invited the referring court to verify whether the file sharing sites had put access-restrictions in place, and, if it had, verifying if the link posted on GeenStijl “merely facilitated access to a certain degree” (AG opinion at 71). If the GeenStijl hyperlink had allowed users to circumvent restrictions put in place by the third-party to limit access to protected works, then it was “an indispensable intervention without which those users could not enjoy the works . . . and . . . an act of communication to a public which must be authorised by the copyright holder pursuant to Article 3(1) of Directive 2001/29” (AG opinion at 73).

Therefore, for AG Wathelet, linking to content protected by copyright made freely accessible to the public, whether such publication had been authorized by the right holder or not, is not a communication to the public, unless the website publishing the content had put in place some restriction to access.

The ECJ ruling: Posting hyperlinks not communication to the public, unless made for profit

The ECJ did not entirely follow the conclusions of its AG and ruled instead that hyperlinks to protected works, which are freely available on another website without the consent of the copyright holder, are not a communication to the public within the meaning of Article 3(1), but only if the hyperlinks are “provided without the pursuit of financial gain by a person who did not know or could not reasonably have known the illegal nature of the publication of those works on that other website” (at 56). However, if the links are published for profit, then knowledge of the illegal nature of the publication must be presumed.

The ECJ explained that this ruling allows copyright holders to act against the unauthorized publication of their work on the website, to act against “any person posting for profit a hyperlink to the work illegally published,” and also to act against any person who posted the links without pursuing financial gain, but who knew, or should have known that the work had been illegally published, or if posting such link circumvents access restrictions put in place by the website which originally published the work illegally (GS Media at 53).

Is GS Media a good decision?

GS Media is a good decision, but only because ruling otherwise, as noted by the ECJ at paragraph 46, would mean that individuals providing hyperlinks on their sites would have to check whether the content posted on the site to which they direct infringes the rights of copyholders. However, GS Media is also a potentially troubling decision as it leaves the door open to allowing right holders to sue individuals posting hyperlinks to works protected by copyright, without circumventing access protection, even if they did not post the link for profit.

Indeed, the presumption that an individual posting hyperlink not for profit “does not  . . . [have] full knowledge of the consequences of his conduct in order to give customers access to a work illegally posted on the Internet” (at 48) is rebuttable (at 51). The right holder can rebut the presumption by proving that the individual knew that the work had been illegally published, but also by proving that he “ought to have known  . . . for example . . . [if] he was notified thereof by the copyright holders” (at 49). But notification is presented as only one example of the ways it may be presumed that the individual posting the hyperlink “ought to have known” that the content had been posted illegally.

The next ECJ case about hyperlinks and article 3(1) will likely clarify the instances in which courts must rule that the individuals ought to have had such knowledge. Meanwhile, individuals posting hyperlinks to content protected by copyright illegally published, even for non-profit, remain vulnerable to, at best, cease-and-desist letters, and, at worst, lawsuits.

This article was first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.
Image is courtesy of Flickr user FaceMePLS under a CC BY 2.0 license.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: EU Copyright, TTLF Newsletter · Tagged: , , , , , , ,

New York Fashion Company Sued Over Use of Photograph on Instagram

October 14, 2016 · by ·

On September 27, 2016, Matilde Gatoni, a French-Italian photographer based in Milan, filed a copyright infringement suit against New York fashion company Tibi in the Southern District of New York (SDNY). Plaintiff alleges that Tibi reproduced without authorization one of her photographs (the Photograph) by posting it on its Instagram account.

Ms. Gatoni regularly posts photographs on her Instagram account. On August 26, 2016, she posted a picture of a building in Essaouira, Morocco. The building is seen from the street, where it commands a corner and the Photograpgh allows the viewer to see it on both sides, which are painted in blue, yellow, white and pink. A woman wearing a long flowing dress in the same color tones of the walls is seen from the back at the right of Photograph. The posting on Instagram was the first publication of the Photograph.

5227966623_a9df0c59ca_z

Defendant Tibi also has an Instagram account. The complaint alleges that the fashion company reproduced the Photograph by cropping it and posting it on its own Instagram account, without Plaintiff’s authorization. Exhibit D shows the picture as allegedly posted on Instagram. The picture has been cropped on the right side and on the lower side,  cutting the woman off and making the pink part of the wall the center of the image.

Plaintiff is seeking damages and Defendant’s profits pursuant to 17 U.S.C. § 504(b) for the alleged infringement, and statutory damages up to $150,000 per work infringed for Defendant’s willful infringement of the Photograph, pursuant to 17 U.S.C. § 504(c).

Complaint also alleges that Tibi “intentionally and knowingly removed copyright management information identifying Plaintiff as the owner of the Photograph,” in violation of 17 U.S.C. § 1202(b), Section 1202(b) of the Digital Millennium Copyright Act, which prevents the unauthorized intentional removal or alteration of any copyright management information. Plaintiff alleges that such removal was done “intentionally, knowingly and with the intent to induce, enable, facilitate, or conceal their infringement of Plaintiff’s copyrights in the Photograph [and that] Tibi … knew, or should have known, that such falsification, alteration and/or removal of said copyright management information would induce, enable, facilitate, or conceal their infringement of Plaintiff’s copyright in the Photograph.”

Plaintiff seeks Plaintiff’s actual damages and Defendant’s profits, gains or advantages of any kind which can be attributed to the falsification, removal and alteration of copyright management information, or statutory damages of at least $2,500 and up to $25,000 for each instance of  false copyright management information and/or removal or alteration of copyright management information.

Copyright registration of the Photograph is pending, but there is no doubt that it will be granted, as the picture meets and exceeds the threshold of originality. Copyright registration is necessary when suing for copyright infringement, but is not necessary to protect one’s work by copyright, nor it is necessary that the work contains a copyright notice. It suffices that the work has been fixed and that it is original.

The case will probably settle, but it is interesting to see that copyright infringement suits are still being filed against Defendants who found a work on social media and allegedly used it without permission. Tibi’s Instagram account alternates posts of Tibi’s own models with random photographs of buildings, furniture or landscapes, a sort of digital mood board echoing the colors and shapes of the garments. Both the photos of Tibi’s models and the random photos garner appreciative comments from Instagram followers. The fashion industry is indeed hungry for images and Instagram plays an increasing role in fashion companies ‘marketing mix.

Should Instagram put in place a proprietary licensing program? This may allow companies interested in featuring a particular photographs an easy way to secure a license.

Picture is courtesy of Flickr user Mike Linksvayer, public domain.

This post was first published on The 1709 Blog.

 

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright, Fashion Law · Tagged: , ,

We all root for a single conceptual separability test

September 22, 2016 · by ·

On 2 May 2016, the U.S. Supreme Court agreed to answer this question: “[w]hat is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act”? The answer is likely to impact the U.S. fashion industry, as it may make copyright protection of designs easier or more difficult.

Clothes cannot be protected by copyright in the U.S. because they are un-copyrightable useful works, but some of their features or elements may be protected if they can be identified separately and exist independently of the utilitarian aspect of the garment. However, the circuit courts are using different tests to decide whether a particular feature can be conceptually separated from the useful article and thus protected by copyright.

5012123334_058c30c57f_z
Now, an ongoing dispute between two cheerleader uniform companies over whether the designs adorning uniforms can be protected by copyright will allow the Supreme Court to unify the conceptual separability test and provide clearer guidelines to designers seeking to protect at least some features of the clothes they create.

Varsity Brands (Varsity) designs, manufactures and sells cheerleading uniforms. It registered its copyright in five two-dimensional designs featuring various combinations of color blocks and stripes, some forming chevrons. In 2010, competitor Star Athletica (Star) published a catalog of cheerleading uniforms which Varsity believed to be infringing of its designs. Varsity filed a copyright infringement suit in the Western District Court of Tennessee against Star, which moved for summary judgment, claiming that the pictorial, graphical or sculptural elements of Varsity’s designs were not physically or conceptually separable from the utilitarian functions of the cheerleading uniforms.

Indeed, while §102(a)(5) of the Copyright Act expressively protects pictorial, graphic and sculptural works, useful articles are not protected by copyright. §101 of the Copyright Act defines a useful article as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” However, §101 of the Copyright Act also states that a useful article may be protected if it “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

On 1 March 2014, the Western District Court of Tennessee entered summary judgment in favor of Star, finding that the aesthetic features of the uniforms had merged with their functional features and were thus not conceptually separated from the utilitarian uniforms. Varsity appealed to the Sixth Circuit, which reversed the judgment. Star then filed a petition for certiorari to the Supreme Court, which was granted.

Physical separability

In order to find out whether a particular design which is part of a useful article can nevertheless be protected by copyright, courts determine if the design is separable, whether physically or conceptually, from the utilitarian aspects of the article or sculptural work.
§ 924.2(A) of the Copyright Office Compendium defines physical-separability as meaning “that the useful article contains pictorial, graphic, or sculptural features that can be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact.” This stems from the 1954 Mazer v. Stein Supreme Court case, where a statuette which served as a lamp base was held to be copyrightable.

Conceptual separability

However, it is often not possible to physically separate a design from the utilitarian article, and thus courts also use a conceptual separability test. However, there is not just one separability test. Petitioner’s brief to the Supreme Court notes that there are nine conceptual separability tests, and that the Ninth Circuit rejected all of them in our case to create a tenth one.

For instance, the Second Circuit uses the Kieselstein-Cord test and checks whether the artistic features are “primary” and the utilitarian features “subsidiary.” The Seventh Circuit uses the aesthetic influence test, first applied in Pivot Point v. Charlene Products, Inc., where conceptual separability exists if the elements at stake “reflect the independent, artistic judgment of the designer.”
Law professors weighted in on the issue as well. For instance, Professor Paul Goldstein proposed a test to find out whether “a pictorial, graphic or sculptural feature incorporated in the design of a useful article is conceptually separable if it can stand on its own as work of art traditionally conceived, and if the useful article in which it is embodied would be equally useful without it.” Professor David Nimmer proposed the marketability test, where “conceptual severability exists when there is any substantial likelihood that even if the article had no utilitarian use, it would still be marketable to some significant segment of the community simply because of its aesthetic qualities.”

Varsity had unsuccessfully argued in front of the federal district court that because it sketches uniform designs independently of functional influences, the designs are conceptually separable from the utilitarian features of the uniforms, and thus protected by copyright under the Seventh Circuit’s aesthetic influence test. Instead, the district court found the Second Circuit Jovani Fashion Inc. v. Fiesta Fashions case persuasive, where the court had found the designs of prom dresses not protectable by copyright, because the decorative choices made to create the dresses had merged with their function of covering the body in an attractive way. The Second Circuit noted that the “design elements are used precisely to enhance the functionality of the dress as clothing for a special occasion.” Similarly, the District Court found in Varsity, citing Jovani, that a cheerleading uniform, just like a prom dress, is “a garment specifically meant to cover the body in an attractive way for a special occasion” and concluded that “a cheerleading uniform loses its utilitarian function as a cheerleading uniform when it lacks all design and is merely a blank canvas.”

The Sixth Circuit conceptual separability test

The Sixth Circuit created a five-part test to find whether a particular design is copyrightable. First, the court must find out whether a design is a pictorial, graphic or sculptural work. Such was the case here. Then then court must find out if the design is the design of a useful article. Such was the case here as well. Thirdly, the court must find out “[w]hat are the utilitarian aspects of the useful article.” The Sixth Circuit found that the function of the designs was to decorate the uniforms, noting that it is “well established” that fabric designs are protected by copyright. The fourth part of the test asks whether the viewer of a design can identify the pictorial, graphic or sculptural features separately from the utilitarian aspects of the useful article. The Sixth Circuit answered affirmatively, noting that “[t]he top and skirt are still easily identified as cheerleading uniforms without any stripes, chevrons, zigzags or color-blocking.” Finally, the fifth part of the test asks whether the design features exist independently of the utilitarian aspects of the useful article. The Sixth Circuit answered affirmatively, as the designs of the uniform are “wholly unnecessary to the performance of the garment’s ability to cover the body, permit free movement and wick moisture.”

The Sixth Circuit concluded that because the graphic features of Varsity’s designs can be identified separately and are capable of existing independently of the utilitarian asserts of the uniforms, they can be protected by copyright. It gave as an example the famous Mondrian dress created by Yves Saint Laurent, and noted that “the graphic features of Varsity’ cheerleading-uniforms designs are more like fabric design than dress design.”

Toward a single conceptual separability test

It is likely that the Supreme Court will coin its own conceptual separability test, which will then have to be used by all the courts. The fashion industry has much at stake in this case, as such a test may help designers to claim copyright protection for clothes and other useful works, such as handbags or shoes, or could make claiming copyright protection even more difficult.

This article was first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright, Fashion Law, TTLF Newsletter · Tagged: , , ,

Plus Ça Change… Prince, Rastafarians, and Fair Use

April 15, 2016 · by ·
You may remember that Richard Prince, the Gagosian Gallery, and Larry Gagosian have been sued by photographer Donald Graham for copyright infringement in the Southern District of New York (SDNY). Plaintiffs moved to dismiss on February 22, asserting a fair use defense (motion).

112782360_9e8c14a9cd_z

Appropriation artists and copyright

Prince used Graham’s Untitled (Portrait) to create one of the works presented at his New Portraits exhibition (I wrote about it here). The original image had been cropped and posted on Instagram, without Graham’s permission, by another Instagram user, then reposted by yet another user. Prince reposted it again from his own Instagram account, adding the comment “ReCanal Zinian da lam jam,” followed by an emoji (see p. 11 of the motion).

 In his motion, Prince placed himself in “a long line of[appropriation] artists” such as Marcel Duchamp, Jasper Johns and Jeff Koons. The latter has been involved in several copyright infringement suits over his work, for instance Rogers v. Koons where the Second Circuit found no fair use. But in Blanch v. Koons, the Second Circuit found that Koon’s appropriation of a photograph reproduced, at a different angle, in a painting was protected by fair use. Following this Second Circuit decision, Judge Stanton from the SDNY denied plaintiff Blanch’s motion for sanctions, which gave him an opportunity to explain the dynamic between appropriation artists and copyright:

“Appropriation artists take other artists’ work and use it in their own art, appropriating it and incorporating it in their own product with or without changes. Because of this appropriation, often (as in this case) done without giving credit to the original artist, the appropriation artists can expect that their work may attract lawsuits. They must accept the risks of defense, including the time, effort, and expenses involved. While that does not remove the appropriation artist from the protection of the statute, litigation is a risk he knowingly incurs when he copies the other’s work.”

Is this case the same as Cariou?

In his motion, Prince argued that, in Cariou v. Prince, “the Second Circuit held that “appropriation art” created by Prince that is substantially similar to the artwork at issue here constituted fair use as a matter of law” and argues that the Graham lawsuit “reflects an attempt to essentially re-litigate Cariou and should be dismissed with prejudice”(p. 2). [I wrote about the Cariou v. Prince case here.)

However, every fair use case is different since fair use is a mixed question of law and fact, as acknowledged by Prince on p. 12 of his motion. In Cariou, the Second Circuit set aside five artworks, remanding to the SDNY to consider whether the use of Cariou’s work was fair. Because the case settled, the SDNY did not have an opportunity to rule on that point on remand. Whether a court will find this Prince work to be fair use is an open question.

Is Prince’s character of the use of Graham’s photograph the same than his use of Cariou’s photographs? The Second Circuit noted in Cariou that “[t]he portions of the [Cariou photographs] used, and the amount of each artwork that they constitute, vary significantly from piece to piece” (at 699). As the affirmative defense of fair use is a matter of both law and fact, Cariou cannot be interpreted as the Second Circuit having given carte blanche to Prince to create any derivative works based on Rastafarian photographs “as a matter of law.” Indeed, in Cariou, the Second Circuit took care to note that its conclusion that twenty-five of Prince’s works were protected by fair use “should not be taken to suggest… that any cosmetic changes to the photographs would necessarily constitute fair use“ (at 708).

Fair use or not?

The Graham photograph is somewhat similar to the Cariou photographs, as they are classic black and white portraits of a Rastafarian. However, if the nature of the original work is one of the four fair use factors used by courts to determine whether a particular use of a work protected by copyright is fair, the first factor, the purpose and the character of the use, is “[t]he heart of the fair use inquiry” (Blanch at 251).

A work is transformative, as explained by the Supreme Court in 1994, if it does not merely supersede the original work, but instead “adds something new, with a further purpose or different character, altering the first with a new expression, meaning or message… in other words, whether and to what extent the new work is transformative”,Campbell v. Acuff-Rose Music, Inc., at 577-578.

What is determining is whether the new work is transformative, and Prince recognizes this in his motion (p.1). He argued that, by incorporating Plaintiff’s photograph into a social media post, and adding “Instagram visuals and text,” the derivative work has become “a commentary on the power of social media to broadly disseminate others’ work” (p.3).

To create his Canal Zone series, Prince had torn multiple photographs from the Cariou book, enlarged them using inkjet printing, pinned them to plywood, then altered them by painting or collaging over them, sometimes using only parts of the original photographs, sometimes tinting them, sometimes adding photographs from other artists. The result was declared fair use by the Second Circuit. In our case, Prince inkjet printed his original Instagram repost of the Graham picture, complete with his comment, with no further change, except for the change in format and size.

But whether a particular work is transformative does not depend on the amount of sweat of the brow, and a derivative work can be created by a mere stroke of the pen, such as Marcel Duchamp’s L.H.O.O.Q. Nevertheless, the more detailed the process to create a derivate work is, the more likely it is transformative.

It remains to be seen if the SDNY will find this new Prince appropriation work to be fair use. The court is becoming somewhat an expert on appropriation art. Jeff Koons has recently been sued in the SDNY for copyright infringement over the use of a photograph by a commercial photographer, Mitchel Gray. Gray claims that his photograph of a couple on a beach, which he had licensed in 1986 to Gordon’s Gin for the company to create an ad, was reproduced the same year by Koons as part of his “Luxury and Degradation” series. Koons reproduced the whole ad, with no change. Mr. Gray only discovered this use in July 2015 and filed his suit.

We’ll see how this case and the Koons case will proceed. ReCanal Zinian da lam jam.

The post first appeared on The 1709 Blog. 

Image is courtesy of Flickr user Joseph Teegardin under a CC BY-ND 2.0 license.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright, Fair Use · Tagged: , , ,

Crowdfunding May Take Fair Use Where It Has Never Gone Before

April 8, 2016 · by ·

On December 29, 2015, Paramount Pictures and CBS Studios sued Axanar Productions and its principal Alec Peters, claiming that its short movie Prelude to Axanar infringes their copyright in Star Trek, as it is an unauthorized derivative work (Complaint). On February 22, 2015, Defendants filed a motion to dismiss (Motion), claiming that the complaint does not contain sufficient factual matters to put Defendants on fair notice of the claims against them.

Star Trek first appeared on television in 1966, and the original series ran three seasons until 1969. The franchise now comprises six television series and twelve movies. Another movie is set to be released on July 22, and another television show is planned. The Complaint claims that Star Trek is “one of the most successful entertainment franchises of all time.”4658982704_1cd132f682_z

In one of the episodes of the original series, Captain Kirk, the captain of the U.S.S. Enterprise, meets his hero, former Starfleet captain Garth of Izar, and they discuss the battle of Axanar between the Klingon Empire and the Federation, which was won by Garth. Reading about the battle is required at the Starfleet Academy, of which Captain Kirk is a proud graduate. This is the only time the battle is mentioned in Star Trek.

The battle of Axanar is the topic of a short movie written, directed and produced by Defendants after a successful crowdsourcing campaign on Kickstarter. The movie has been shown for free on YouTube since 2014. Defendants are now raising money through crowdsourcing to produce a longer Axanar movie.

However, Defendants moved to strike Complaint’s allegation that they “are in the process of producing a film called Axanar.” They also argued the copyright infringement claim regarding the movie is premature, at it has not yet been made, and that “seeking to stop the creation of a work at this stage would [be] an impermissible prior restraint” (Motion to Dismiss p. 10).

Fan Fiction

The Complaint states that Star Trek “has become a cultural phenomenon that is eagerly followed by millions of fans throughout the world.” Indeed, Star Trek has its own fan fiction cottage industry. It includes short stories, novels, and even new episodes, such as those produced by “Star Trek: New Voyages,” a project which is also crowdfunded and produced by a non-profit. The first New Voyage episode was released in 2004 and the project is still going strong, without apparent concern from CBS and Paramount.

In an article published in 1997, Professor Rebecca Tushnet traces “[f]an fiction and organized media fandom… to the second season of Star Trek in 1967,” and cites a much earlier instance of fan fiction when Lord Tennyson imagined what happened next to Ulysses.

Under Section 106(2) of the Copyright Act, the copyright owner has the exclusive right to prepare derivative works. There is no doubt that fan fiction is derivative work, that is, “a work based upon one or more preexisting works.” Is fan fiction copyright infringement?

Copyright Infringement

Plaintiff in a copyright infringement suit must prove ownership of the copyright and must also prove actual copying. Copying may be proven by circumstantial evidence by showing access to the protected work and substantial similarity.

Plaintiffs claimed they own copyrights in the Star Trek television series and motion pictures. However, Defendants argued that the Complaint “lump[s] both Plaintiffs together and appear to allege collective ownership of all of the Star Trek [c]opyrighted [w]orks,” even though Plaintiffs cite a copyright assignment from Paramount to CBS, and “fail[ed] to specify which of those copyrights Defendants have allegedly infringed.”

Defendant, of course, had access to Star Trek. But Plaintiff must also prove substantial similarity between the original and the derivative work. The Ninth Circuit uses the extrinsic/intrinsic test created in the Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp. case. The extrinsic text is thus called “because it depends not on the responses of the trier of fact, but on specific criteria which can be listed and analyzed. Such criteria include the type of artwork involved, the materials used, the subject matter, and the setting for the subject. Since it is an extrinsic test, analytic dissection and expert testimony are appropriate” (Sid & Marty Krofft at 1164).

The Complaint claims that Defendant’s short movie is substantially similar to the Star Trek works, listing similar characters, the use of the Federation, similar costumes, sets, props, and logos, and further claims that the “feel and the mood” of Defendant’s work is similar to the original works.

It is interesting to note that the Star Trek New Voyages project has also replicated some sets of the original series, such as the transporter room, the sick bay and the bridge of the Starship Enterprise, and used Star Trek characters and costumes, without having been sued for copyright infringement.

Possible Defense

Plaintiffs argue that the Axanar short movie is neither a parody nor fair use. Defendants calls it a “short mockumentary.” Could the fair use defense be successful? Defendants did not address the issue, arguing instead that the claim is unripe.

The four fair use factors are 1) purpose and character of the use, 2) nature of the copyrighted work, 3) amount and substantiality taken, and 4) effect of the use upon the potential market.

The purpose and the character of the use factor inquiry includes whether the use is commercial. Defendants explained on their website that Axanar is not licensed by Paramount and CBS, but that it is an “independent project that uses the intellectual property of CBS under the provision that Axanar is totally non-commercial. That means we can never charge for anything featuring their marks or intellectual property and we will never sell the movie, DVD/Blu-ray copies, T-shirts, or anything which uses CBS owned marks or intellectual property.” This statement has been since deleted. In a crowdfunding pitch video , Alec Peters explains that CBS has “graciously allowed” that he and others make Star Trek movies as long as they do not profit from it, sell anything with ‘Star Trek’ on it, and that they “have to honor the best story – telling tradition of Star Trek.”

Indeed, this is what Star Trek New Voyages has been doing for years. Defendants claim in their Motion that Prelude to Axanar is a ‘mockumentary,’ and indeed the video narrates the battle of Axanar using a format favored by the History Channel, as explained on Defendants’ site.

As for the nature of the copyrighted work, there is little doubt that the argument would go in Plaintiff’s favor, as the television series and the movies are highly creative. The third factor, the amount taken, could be in Plaintiffs or Defendant’s favor. It is hard to say without engaging in a complete analysis.

As for the effect upon the potential market, it could be argued that it is actually beneficial for Plaintiffs, not detrimental, and thus the fourth factor could be in favor of Defendants. Professor Tushnet noted in her article on fan fiction that the great success of the official Star Trek derivative works co-existed with numerous Star Trek fan fiction, and that this “provides strong evidence against the claim that fan fiction fills the same market niche as official fiction” (p.672). Could the same be argued for the Axanar movie if it is ever produced?8234194645_23515ea9fe_z

This Case May Very Well Stretch the Limits of Fair Use

This case is interesting as it shows that crowdfunded User-Generated Content could stretch the limits of fair use. It seems that CBS and Paramount have tolerated Star Trek fan fiction for years, understanding that what a copyright attorney may regard as unauthorized derivative work is indeed valuable user-generated marketing and promotional content.

But written fan fiction, even if published online, may not replace the experience of watching a Star Trek movie or television show. Crowdfunding has allowed the Axanar project to be built as a non-profit project, and it would not be shown in movie theaters. But it could nevertheless compete on the market with official Star Trek movies. Watching the Axanar short movie was quite entertaining, and I expect the future movie to be as well.

Producing such fan movies is not possible without crowdfunding. As more fan fiction is likely to be financed this way in the future, it will be interesting to see the effect of this practice on fair use, although I do hope fair use will live long and prosper.

This blog post was first published on The 1709 Blog.

Image of Star Trek figurines is courtesy of Flickr user Kevin Dooley under a CC BY 2.0 license.

Image of Spock being watched is courtesy of Flickr user JD Hancock under a CC BY 2.0 license.

 

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright · Tagged: , ,

Only Thing That Counts is… Fair Use?

February 11, 2016 · by ·

Appropriation artist Richard Prince is famous and is not known by every IP attorney in the U.S., following the Cariou v. Prince case (see earlier blog post here.)  He recently  ‘repurposed’ again more photographs taken by third parties to create this time art presented in his New Portraits exhibition, and a rather lucrative art that is, both for him and for the gallery representing him.

Now, photographer Donald Graham has filed a copyright infringement suit against Prince, the Gagosian Gallery, and its owner Larry Gagosian. Graham claims that Prince used the “Rastafarian Smoking a Joint” photograph without permission in the New Portraits exhibition. Prince presented inkjet prints on canvases of images he had found on Instagram, complete with his own comments as @richardprince4nd. This did not fare well with several authors of the photographs, but so far Donald Graham is the only one who has taken legal action.

It is not the first time that Richard Prince is been sued for copyright infringement. Patrick Cariou, the author of the Yes Rasta photography book, sued Prince after he had used some of the Yes Rasta photographs to create his Canal Zone series, also presented at the Gagosian Gallery. The Second Circuit found this use to be fair. Just like Cariou, Graham had traveled to Jamaica and taken black and white pictures of Rastafarians after gaining their trust. Does that insure that a court will find Prince’s use of Graham’s work to be fair?Prince

This Time, It May Not Be Fair Use

Fair use is a defense to copyright infringement, but it is not fool-proof or automatic. Instead, judges use four non-exclusives factors to determine if a particular use of a work protected by copyright is fair: (1) purpose and character of the use, (2) nature of the copyrighted work, (3) amount and substantiality of the portion taken, and (4) effect of the use on the potential market.

The second and the third factor are likely to favor Graham, as the work reproduced is artistic, and has been reproduced in its entirety. Therefore, the first and the fourth factor will probably decide whether the use is fair or not.

Graham had not posted himself a reproduction of his work on Instagram, but a third party did, without Graham’s authorization. Under the post, Prince added the comment ““Canal Zinian da lam jam”, which may allude to his Canal Zone series, deemed to be fair use, and printed the page featuring the Graham photograph and his comments.

In Cariou v. Prince, the Second Circuit noted that “Prince altered [the Cariou] photographs significantly” (at 699). Adding a nonsensical comment under a photograph, even if one chooses to describe it as poetry, is not a significant alteration of the original work. This point is likely to be debated by the parties, as the Supreme Court stared in Campbell v. Acuff-Rose Music, when explaining the first fair use factor, that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that weigh against a finding of fair use” (at 579).

In Cariou, the Second Circuit explained:

“These twenty-five of Prince’s artworks manifest an entirely different aesthetic from Cariou’s photographs. Where Cariou’s serene and deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs, Prince’s crude and jarring works, on the other hand, are hectic and provocative.”

In our case, one would be at pain to describe Prince’s use of Graham’s photography as being “hectic and provocative. “ It may be considered a provocation, but this does still not make the work “provocative” for fair use purposes.

Prince knows how to provoke: he posted a comment about the Graham suit on Twitter: “U want fame? Take mine. Only thing that counts is good art. All the everything else is bullshit.” Interestingly, fair use protects art whether it is good or not, without the judges having to concern themselves about whether fair use is good art or not, or even if it is art at all, or whether the author of the work is famous or not .

As for the fourth factor, the effect on the use on the market, Graham does license his work, including the work at stake, which was not the case in Cariou, and so Prince’s use may be deemed to have an effect on the market.

A Lucrative Business, Thanks to Copyright

Graham posted on Instagram a view of the New Portraits exhibition, including the print reproducing his own work, and added the hashtag #PrinceofAppropriation. The complaint argues that Prince “has achieved notoriety in the “appropriation art” industry for his blatant disregard of copyright law” (at 23).

All the prints forming the New Portraits exhibition have been sold. The Gagosian Gallery has published a catalog of the exhibition, and, according to the Complaint (at 35) “a gigantic photograph of the Exhibition prominently featuring the Infringing Work on a billboard at 50th Street and West Side Highway in New York City for several months, until at least July 2015.”

As noted in the complaint (at 28), the Gagosian Gallery is aware that copyright law prevents a third party to reproduce its inventory without permission (“All images are subject to copyright. Gallery approval must be granted prior to reproduction.” Therefore, Graham himself would have to ask permission to reproduce the unauthorized reproduction of this work by Prince reproducing the original unauthorized post on Instagram by a third party (dizzy yet?).

This case is on the watch list of every IP attorney in the US.

This post was first published on The 1709 Blog.

Image is courtesy of Flickr user jpmueller99 under a CC BY 2.0 license

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright, Fair Use, Southern District of New York · Tagged: , ,

Did you RT a © today? Photographer Sues Infringers and Retweeters

July 14, 2015 · by ·

A photographer is suing a beverage company which allegedly used without permission one of his photographs on social media. The case is interesting, as the photographer chose to sue not only the company and its employees and contractors, but also the social media users who republished the photograph on social media, by a retweet, or a pin. The case is Dennis Flaherty v. Big Red, 1:15-cv-00566.Dennis Flaherty (Plaintiff) is a professional photographer, living in California. He claims that beverage company Big Red (Defendant) used without permission one of his photographs representing Fort Alamo at night, or a “near perfect copy” of it, to create social media postings marking the 179th anniversary of the Battle of the Alamo, which ended on March 6, 1836. Big Red is located in Texas and thus the photograph “conveys a meaning and a direct relationship” with its place of business. Plaintiff owns the copyright of the photograph and registered it with the Copyright Office.16358615653_6305c3e39a_z

Defendant allegedly added a watermark or logo of BIG RED on the photograph before posting it online and Plaintiff claims that, as such, Defendant placed its registered trademark on the photograph. Plaintiff provided screenshots of alleged social media use of this photograph by Defendant (see here for screen shot of use on Twitter and on Facebook). They show images of Fort Alamo at night, identical or very similar to Plaintiff’s own photograph, with some slight modifications such as deleting a flag pole. Plaintiff is seeking  statutory damages for copyright infringement.

Posting on Social Media as Vicarious Infringement

Plaintiff is also suing John Does, employees or contactors of Big Red who were in charge of creating, monitoring, controlling and editing these social accounts, for vicarious copyright infringement, which “occurred because Defendants have or had a right and ability to supervise the infringing act, and received a benefit or a direct financial interest therefrom.” The complaint alleges that Defendants “received a direct financial benefit” from the infringing use of the photograph, as at was used to “draw…. customers, third parties, internet users, followers… to Defendants business activities.” Plaintiff is seeking actual, or, alternatively, statutory damages for vicarious infringement.

Retweeting as Contributory Infringement

Plaintiff also claims that Defendants induced copyright infringement by distributing the photograph to third parties, that is, social media users who retweeted, pinned or liked the original social media post containing the infringing photograph. Plaintiff claims that, as such, they “stood in the shoes of the Plaintiff and licensed the image to Twitter,” citing Twitter’s Terms of Service which provide that by submitting content, users provide Twitter with a royalty-free license, thus allowing the social media site to make one’s tweets “available to the rest of the world and let others do the same.” Plaintiff is seeking actual, or, alternatively, statutory damages, for contributory infringement as well.

It is very unlikely that Plaintiff will be awarded any damages from any social media user. Plaintiff claims that the contributory infringement was intentional, but proving that it is would be impossible. As noted by Plaintiff himself, the photograph bore the Big Red trademark. As such, social media users were likely to believe that the use was legal, even if they knew that the copyright of the photograph was owned by Plaintiff, as he could very well have licensed it.

But this case got me thinking about copyright small claims courts. If such courts are ever established in the United States, would copyright owners sue social media users who had republished infringing material? Let’s say that social media users would ‘only’ face, for instance, a $50 fee awarded in a small claim court for having retweeted or pinned infringing material. Granted, only people posting under their real name could effectively be sued. But Facebook has a “use only your own name” policy, which is enforced, and many Pinterest or Twitter users post under their real name as a way to promote themselves and to build relationships and contacts. Fearing that retweeting a particular tweet may or may not lead to a fee would certainly have a chilling effect on speech, especially if the fees start to add up. Retweeting an ad may not necessarily contribute much to the marketplace of ideas, but the ad in our case meant to commemorate an historical event, and showcased one of the most famous U.S. monuments.

However, some may argue that having a way to make social users pay a fee for unauthorized use of protected work may eventually lead to people thinking twice before using images found online. The debate is likely to heat up if the issue of copyright small claims courts takes central stage in Congress (not likely for now).

Image is courtesy of Flickr user Jerry Huddleston under a CC BY 2.0 license.

 

This blog post was originally published on The 1709 Blog.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright, Social Media Law · Tagged: , , ,
« Previous Page
Next Page »