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.

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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.

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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.

 

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Une astreinte, c’est quoi? The Ninth Circuit has an answer

October 8, 2016 · by ·

On September 26, 2016, the Ninth Circuit held that courts have the right under Federal Rule of Civil Procedure 44.1 on determining Foreign Law to consider foreign legal materials at the pleading stage, including expert testimony and declarations. This allowed the Court to conclude that the French astreinte is not a fine or an award of damages, which now clears the way for the French Plaintiffs to receive compensation for copyright infringement. The case is Sicre de Fontbrune v. Wofsy, 3:13-cv-05957.

The case may be more of interest to federal procedure buffs than copyright buffs, but I offer it to your attention anyway as being one of the longest copyright infringement cases ever.12438085154_24aa8dd8a3_z

Pablo Picasso had a close relationship with photographer Christian Zervos and allowed him to take many pictures of his works. This led to the publication of the complete catalogue raisonné, published by Cahier d’Art, a publishing company owned by Christian Zervos, then by his heirs. Twenty-two volumes were published from 1932 to 1970, when Picasso was still alive, and eleven more volumes were published after his death. The thirty-three volumes reproduce some 16,000 of Picasso’s works and are regarded as the ultimate reference of Picasso’s work.

Yves Sicre de Fontbrune, now deceased and represented by the representatives of his estate, bought Cahier d’Art’s publisher  stock in 1979, thus acquiring the intellectual property right in the Zervos catalogue raisonné. Alan Wofsy is an American art editor who reproduced some of Zervos’ photographs in two volumes about Picasso, which he presented in 1996 at the annual Salon du Livre (book fair) in Paris. Mr. Sicre de Fontbrune found this use to be infringing and filed suit in 1996. The Paris Court of appeals ruled in his favor in 2001, awarding him an astreinte and forbidding Alan Wofsy “to use in any way whatsoever [the Zervos photographs] under an astreinte of 10,000 francs per infringement.

« Fait défense à Monsieur Alan WOFSY et à la société ALAN WOFSY & ASSOCIATES de faire usage de quelque manière que ce soit des photographies susvisées sous astreinte de 10.000 francs par infraction constatée, dans les 8 jours suivant signification de la présente décision. »

Under French law, an astreinte is a tool given to the judge so that she can insure that the court’s ecision will be executed. It is independent from damages, as stated by article 34-1 of the July 9, 1991 law, now abolished and replaced by article L. 131-2 of the Code des procedures civiles d’exécution which states the same.

Mr. Sicre de Fontbrune filed a claim at the Paris Court of first instance (TGI) to enforce the astreinte. The Court ruled in his favor in 2012 and ordered Alan Wofsy to pay him 2 million euros in astreinte. Mr. Sicre de Fontbrune then filed a suit in California to enforce the astreinte under the California Uniform Foreign-Court Monetary Judgment Recognition Act (CUFCMJRA), which governs the enforcement of foreign-country judgments which are final and enforceable, and which grant or deny monetary recovery.

Translation of astreinte leads to legal discussion

The English versions of both 2001 Paris Court of appeals judgment and the 2012 Paris TGI’s judgment had translated astreinte as an award of damages. Mr. Wofsy moved to dismiss, arguing that an astreinte is a “fine or other penalty” and that therefore the CUFCMJRA does not apply, as it does not apply to foreign judgments granting a “fine or other penalty.” The District Court granted his motion to dismiss, after having considered the declarations of the experts of both parties on the nature of astreinte in French law. The Ninth Circuit reversed and remanded, as it found an astreinte not to be a “fine or other penalty” under the CUFCMJRA.

Federal Rule of Civil Procedure 44.1 on determining Foreign Law

Federal Rule of Civil Procedure 44.1 on determining Foreign Law gives power to a federal court to “consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence [when determining foreign law]. The court’s determination must be treated as a ruling on a question of law.”

The Ninth Circuit found that Rule 44.1 gives the courts a “broad mandate” and that “foreign legal materials-including expert declarations on foreign law can be considered in ruling on a motion to dismiss where foreign law provides the basis for the claim.”

The California Uniform Foreign-Court Monetary Judgment Recognition Act

The Ninth Circuit then undertook the study of the nature of the astreinte in the French legal system, in general, and in particular in this case. To do so, the Court considered the French judgment against Wofsy, the expert declarations of both parties, and materials on astreinte submitted by both parties. It also undertook its own research into American and French law. It concluded that the astreinte was not a fine or an award of damages and thus fell within the scope of the CUFCMJRA.

An easy method to transfer money internationally

The case is interesting as it specifically states that courts may undertake independent judicial research, including research on foreign law, beyond the parties’ submissions (see p. 15). U.S. courts are slowly warming up to the idea of considering foreign law. Justice Stephen Breyer, from the U.S. Supreme Court, published about a year ago a book about the foreign laws which the U.S. Supreme Court Justices have had to consider in the past, which was probably read by many U.S judges.

This post was originally published on The 1709 Blog.

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NLRB Affirms Decision that Chipotle’s Social Media Rules Violated National Labor Relations Act

October 3, 2016 · by ·

I wrote a few months ago on this blog about the decision of Administrative Law Judge Susan A. Flynn from the National Labor Relations Board (NLRB), which ruled in Chipotle Services LLC d/b/a Chipotle Mexican Grill that Chipotle had violated Section 8(a)(1) of the National Labor Relations Act (NLRA) when it asked an employee, who was later fired, to delete some of his tweets about employees’ wages or other terms and conditions of employment.5336842036_e1ebb7d410_z

On August 18, 2016, a three-member panel of the NLRB affirmed, and ordered Chipotle to cease maintaining its ‘Social Media Code of Conduct’ which prohibits its employees from posting incomplete, confidential or inaccurate information and making disparaging, false or misleading statements.
Section 8(a)(1) of the NLRA prohibits employers “to interfere with, restrain, or coerce employees in the exercise of the rights guaranteed in Section 7 [of the NLRA].” Under Section 7 of the NLRA, employees, whether they belong to a union or not, have the right to engage in “concerted activity for the purpose of collective bargaining or other mutual aid or protection,” NLRA §7, 29 U.S.C. §157.

The two challenged provisions of Chipotle’s outdated social media policy were:

“If you aren’t careful and don’t use your head, your online activity can also damage Chipotle or spread incomplete, confidential, or inaccurate information.”
“You may not make disparaging, false, misleading, harassing or discriminatory statements about or relating to Chipotle, our employees, suppliers, customers, competition, or investors.”

However, the panel reversed Judge Flynn’s finding that Chipotle had violated Section 8(a)(1) by directing its employee to delete his tweets which commented on Chipotle’s hourly wage and on the fact that its employees have to go to work even on a snow day, because the panel “[did] not find that [the employee]’s underlying actions were concerted.” There are two prongs in Section 7, whether the activity was concerted and whether the activity was for mutual aid and protection, and so one prong was missing there, according to the panel.

The panel also ordered Chipotle to reinstate the employee who had been fired with back pay and other compensations.

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

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Does the Disparagement Provision of the Trademark Act Violate First Amendment? The Supreme Court Will Answer

September 30, 2016 · by ·

The Supreme Court agreed yesterday to review the case of Lee v. Tam. The Supreme Court will now rule on whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment. Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of… matter which may disparage.”

I wrote about the case on this blog three years ago and again a few months ago. Last June, I wrote about The Slants filing a petition for a writ of certiorari for the TTLF Newsletter on Transatlantic Antitrust and IPR Developments, published by the Stanford-Vienna Transatlantic Technology Law Forum. Here  it  is below.

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Re-appropriation, disparagement, and free speech. The Slants, continued

We saw in the last issue of the TTLF newsletter that the Federal Circuit held en banc that the disparagement provision of § 2(a) of the Trademark Act, 15 U.S.C. 1052(a), which forbids registration of disparaging trademarks, violates the First Amendment.

The case is about the mark THE SLANTS, which Simon Tam is seeking to register in connection for live performances of his dance-rock music group. The United States Patent and Trademark Office (PTO) refused to register it, claiming it was an ethnic slur disparaging to persons of Asian ancestry. The Trademark Trial and Appeal Board (TTAB) affirmed, but the Federal Circuit ruled in favor of Mr. Tam and remanded the case for further proceeding.

Now the PTO has filed a petition for a writ of certiorari asking the Supreme Court to answer “[w]hether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.”

The Federal Circuit held that §2(a) “penaliz[es] private speech merely because [the government] disapproves of the message it conveys.” The PTO argues in its petition that §2(a) does not prohibit any speech, but only “directs the PTO not to provide the benefit of federal registration to disparaging marks” (petition p. 8).

Would refusing to register THE SLANTS as a trademark merely deny Mr. Tam the benefits of federal trademark registration, or would his freedom of speech be violated?

PTO argument: Mr. Tam is merely denied the benefits of federal registration

The petition notes that federal registration does not create trademarks, but is merely “a supplement to common-law protection” and that a person who first uses a distinct mark in commerce acquires rights to this mark, citing the 1879 In re Trade-Mark Cases Supreme Court case (petition p. 3 and p. 11). The PTO further argues that “[t]he holder of a trademark may use and enforce his mark without federal registration” (petition p. 3). Mr. Tam would still have federal remedies available to him to protect his mark, even if THE SLANTS is not federally registered. For example, the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(D), does not require the mark seeking protection to be registered (petition p. 12).

For the PTO, Section 1052(a) is not unconstitutional, as it does not prohibit speech, nor does it proscribe any conduct or restrict the use of any trademark. Instead, it merely “directs the PTO not to provide the benefits of federal registration to disparaging marks.” Since a mark can function as a mark without the benefit of federal registration, even if a mark is speech, it does not need the benefit of federal registration to be expressed, and therefore, it is not a violation of the First Amendment to refuse to register it.

The PTO further argues that the purpose of Section 1052(a) is to avoid the federal government “affirmatively promot[ing] the use of racial slurs and other disparaging terms by granting them the benefits of registration” (petition p. 10) and that “Congress legitimately determined that a federal agency should not use government funds to issue certificates in the name of the United States of America conferring statutory benefits for use of racial slurs and other disparaging terms” (p. 15-16).

However, in In re Old Glory Condom Corp.(at FN3), the Trademark Trial and Appeal Board noted that “the issuance of a trademark registration for applicant’s mark [does not amount] to the awarding of the U.S. Government’s “imprimatur” to the mark.”

PTO argument: no violation of free speech, as Mr. Tam can still use his mark to convey his message

The PTO also argues that Section 1052(a) is not an affirmative restriction on speech because the federal law does not prevent Mr. Tam “from promoting his band using any racial slur or image he wishes,” does not limit Mr. Tam’s choice of songs played, or the messages he wishes to convey (petition p. 12).

The PTO gives Sons of Confederate Veterans, Inc. as an example of a case where the Supreme Court recognized the government’s right to “take into account the content of speech in deciding whether to assist would-be private speakers.” However, this case can be distinguished from our case. The Supreme Court held in Sons of Confederate Veterans that a state can refuse to issue a specialty license plate if it carries a symbol which the general public finds offensive, in that case a confederate flag. But the owner of a car can still reap the government benefits of car registration, which is mandatory to operate a motor vehicle, even though his speech has been suppressed by the government as disparaging, while, in our case Mr. Tam cannot reap the benefits provided to the holder of a federally registered mark. The fact that he still has some benefits as the owner of a common law mark is irrelevant.

The petition also gives National Endowment for the Arts v. Finley as an example of a case where the Supreme Court upheld the government’s right to take moral issues into consideration when denying a federal benefit. In this case, a court of appeals had held that §954(d) (1) of the National Foundation of the Art and the Humanities Act violated the First Amendment. This federal law requires the Chairperson of the National Endowment for the Arts (NEA) to make sure “that artistic excellence and artistic merit are the criteria by which applications are judged, taking into consideration general standards of decency and respect for the diverse beliefs and values of the American public.” The Supreme Court found in Finley that §954(d) (1) was constitutional.

However, Finley can also be distinguished from our case. The Supreme Court noted there that respondents had not “allege[d] discrimination in any particular funding decision” and that, therefore, the Supreme Court could not assess whether a particular refusal for the NEA grant was “the product of invidious viewpoint discrimination.” In our case, we do know that the only reason the PTO refused to register THE SLANTS is because it assessed the mark to be disparaging, and so the Supreme Court could very well find this decision to be an “invidious viewpoint discrimination.” Also, while not receiving a grant from the NEA may make it more difficult for an artist to create art, it does not entirely prevent it, even a particular piece of art which would shock standards of decency.

If a mark is a racial slur, should the intent of applicant for registering the mark matter?

The TTAB affirmed the refusal to register THE SLANTS because it was disparaging to persons of Asian ancestry and because the mark was disparaging to a substantial composite of this group. The PTO noted in its petition that the TTAB had determined “that Section 1052(a) prohibits registration of respondent mark despite the fact that respondent’s stated purpose for using the mark is to “reclaim” the slur as a sign or ethnic pride” (emphasis in original text, p. 13 of the petition). The PTO seems to argue that Section 1052(a) views disparaging content neutrally, without questioning the intent behind the choice of disparaging speech as trademark.

Judge Dyk from the Federal Circuit wrote in his concurring/dissenting opinion that he would have held that Section 1052(a) is facially constitutional because “the statute is designed to preclude the use of government resources not when the government disagrees with a trademark’s message, but rather when its meaning “may be disparaging to a substantial composite of the referenced group,” citing In re Lebanese Arak Corp.” In this case, the USPTO had refused to register KHORAN as a trademark for alcoholic beverages because it was disparaging to the beliefs of Muslims.

For Judge Dyk, the purpose of Section1052(a) is “to protect underrepresented groups in our society from being bombarded with demeaning messages in commercial advertising” and Section 1052(a) “is constitutional as applied to purely commercial trademarks, but not as to core political speech, of which Mr. Tam’s mark is one example.” Judge Dyk argued further that, while the First Amendment protects speech which is offensive to some in order to preserve a robust marketplace of ideas, “this principle simply does not apply in the commercial context,” giving as example racial or sexual harassment in the workplace.

But this argument seems to make a difference between registrants: Mr. Tam could register a racial slur to make a point, but could not do so if his purpose for registering the same mark would be to insult people of Asian descent. This interpretation of Section 1052(a) is troubling, as courts would have to determine if a particular mark is indeed political speech, then decide if it is “good” political speech or “bad” political speech. This is noted by the PTO in a footnote to the petition as being viewpoint discrimination which violates the First Amendment (p. 13).

The PTO argues that if Section 1052(a) is unconstitutional, then the PTO can no longer refuse to register as a trademark “even the most vile racial epithet” (p.10). Mr. Tam does not deny that “slant” is an ethnic slur. Indeed, he choose to name his band “The Slants” because it is a slur, in order to “take on stereotypes” about Asians (petition p. 5). Therefore, the mark may be an ethnic slur, but it is not disparaging. It all depends on the eyes and ears of the beholder. This was also the idea behind the attempted registration of HEEB or DIKES ON BIKE as trademarks.
Therefore, the question of who are the members of the group of reference is important. But it should not be.

Is it possible to protect minorities and the First Amendment?

If Mr. Tam would be authorized to register his trademark, it would be a victory for freedom of speech. The Slants would be able to promote further their anti-xenophobic message, and this would benefit the nation as a whole. But what if a person or an entity wishes to trademark a racial slur in order to advocate xenophobia? Owning the trademark could then serve as a tool to censor speech opposing racism. It would not be the first time that trademarks are used to suppress speech.

One can also argue that allowing disparaging trademark to be registered could confuse consumers about the origin of the product. Some consumers would not understand that a particular term is a racial slur. Others may understand it, but not know that it was meant to be used to fight prejudice. Since the function of a trademark is also to reduce consumer search costs, federal law could create a sign informing consumers that the trademark is used in an ironic way. I propose adding in these cases an irony punctuation (¿) after®. Is it a good idea?¿

Picture is courtesy of Flickr user leesean under a CC_BY_SA-2.0 license.

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Ladies [and Gentlemen] Now Let’s Get [IP] [“INFORMATION”]

September 30, 2016 · by ·

Matthew Fulks, an independent filmmaker, had filed a copyright infringement suit against Beyoncé on June 8, 2016, claiming that the trailer (the Trailer) for her “Lemonade” movie (the Movie), which accompanied the April 2016 release of her Lemonade album, infringed on his copyright in the short movie Palinoia. Fulks created the seven-minute Palinoia movie in 2014, which the Seconded Amended Complaint (SAC) describes as “carefully selected but seemingly unrelated visuals in a rapid montage, with the recitation of a poem used as voiceover against a distinctive audio soundtrack.” The short movie “depict[s] the pain of a tumultuous relationship.”

On September 12, 2016, Judge Rakoff from the Southern District of New York (SDNY) granted Beyoncé’s motion to dismiss, writing a thoughtful and entertaining opinion, where Voltaire, Oscar Wilde, the Beatles, Tchaikovsky, Andy Warhol and Taylor Swift all made an appearance. The case is Matthew Fulks v. Beyoncé Giselle Carter-Knowles, Sony Music Entertainment and al., 1:16-cv-04278-JSR.

Elements of a Copyright Infringement Suit

If there is no direct evidence of copying, then plaintiff in a copyright infringement suit must prove that the defendant had access to the protected work and that there are substantial similarities of protectable material in the two works.

Plaintiff claimed that Defendants had access to his movie, as Plaintiff had submitted Palinoia to Defendant Sony/Columbia in July 2015, as part of an application for a directing job, and its receipt was acknowledged by email. Defendants did not deny this.
Plaintiff further alleged in the SAC that the Lemonade Trailer was substantially similar to Palinoia, including, but not limited to its “visual and auditory elements, visual and auditory sequences, themes, format, mood, setting, plot, and pace, all of which create a protectable total concept and feel” and that it was an unauthorized derivative work.6817350670_37b75a516d_z

Judge Rakoff quoted the Second Circuit Yurman Design, Inc. v. PAJ, Inc. case, which defined substantially similar works as works which an “ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same,” and the Second Circuit Peter F. Gaito Architecture case, which explained that the courts apply the substantial similarity test by “compar[ing] the contested design’s total concept and overall feel with that of the allegedly infringed work… as instructed by our good eyes and common sense.”

No Substantial Similarity in the Visual Elements

Plaintiff alleged that the Trailer contained nine visual elements substantially similar to Palinoia’s visual elements. These elements are (1) a head down near a graffiti wall; (2) red persons with eyes obscured; (3) parking garage; (4) stairwell; (5) black and white eyes; (6) title cards screen; (7) grass scene; (8) feet on street; and (9) side-lit ominous figures. The SAC has side-to-side screenshots from both works illustrating the allegations.

Judge Rakoff engaged in an analysis of these nine elements, but was not convinced that the Trailer infringed Palinoia. Instead, “[o]nce stripped of unprotected elements and scenes a faire, these scenes from Palinoia and the Trailer and Film have very little in common.”

Not the Same Aesthetic Feel

Judge Rakoff was not convinced as “Plaintiff’s alleged similarities consist almost entirely of clearly defined ideas not original to plaintiff and of stock elements with which even a casual observer would be familiar. Moreover, to the very limited extent that there are even any superficial similarities, these are overwhelmed by the works’ vastly different creative choices and overall aesthetic feel.”

Judge Rakoff quoted the SDNY LaChapelle v. Fenty case, where the court explained that “[o]riginality in rendition may reside in the photographer’s selection of lighting, shade, lens, angle, depth of field, composition, and other choices that have an aesthetic effect on the final work.” In other words, you can have the idea of filming a parking garage, a grass scene or a distressed person heads down near a graffiti wall, but it is the expression of this idea which is protected, not the idea itself. As both works had been expressed in different ways, there were not similar.

For example, as explained by Judge Rakoff, when analyzing the first visual element claimed as original by plaintiff, a person seen head down near a graffiti wall, the concept of a “state of distress” is an unprotected idea, and it “flows naturally and necessarily that a distressed character would be leaning (as opposed to dancing) against something stable (as opposed to delicate) and that his or her head would be down (as opposed to up.)” Instead, what was essential as to whether there was infringement is the comparison of the way the two scenes were filmed. Because the scenes were aesthetically different, there was no infringement.Judge Rakoff analyzed all the nine visual elements in turn, and found that none of them had the same aesthetic than the Trailer. Therefore, he found them not similar with the Lemonade Trailer scenes.

No Substantial Similarity in the Auditory Elements

Plaintiff also alleged in his SAC that both works included “the voiceover of a narrator reciting poetry over the sounds in the background” and that the audio sequences of both works were substantially similar, as they both followed “a similar pattern in which harsh noises are separated by calmer sounds in a substantially similar time table” and both included “crescendos and decrescendos.”

But for Judge Rakoff, “no reasonable jury, properly instructed, could find infringement based on plaintiff’s… alleged similarities… [in] the works’ audio… The idea of juxtaposing poetry and disharmonious sound is not protectable.” Plaintiff must prove instead that the way he expressed this idea, such as his choice of poetry and sound, has been copied. However, Plaintiff did not prove this in this case.

Not the Same Total Concept and Overall Feel

For Plaintiff, the mood, setting, pace, and themes of both works were substantially similar which contributed “to the overwhelming similarity of total concept and feel.” Both moods were “heavy, dark, and angst-laden.’” Both settings included similar environments, such as an empty dark parking garage, grass field, and a stairwell. The pace of both works was “a rapid procession of short scenes or montage, interspersed with notable intermittent pauses through exaggeratedly slow scenes.” Also, both works had different themes “destruction, alienation, heartbreak, and chaos versus order.”
But Judge Rakoff noted, somewhat ironically, that:

“[a]pparently intent on exploring the boundary between idea and expression, plaintiff alleges that the works share the same narrative theme (“a struggle of a relationship”) and the same aesthetic mood and pace (“a pattern of successive montage of abstract scenes, with unknown or unclear meanings, pieced together in ‘short takes'”). These alleged similarities fall firmly on the side of unprotected ideas. The “struggle of a relationship” is a concept familiar to us all, and plaintiff is not the first individual – or artist – to comment on it. See, e.g., R. Hart-Davis, The Letters of Oscar Wilde 621 (1962) (“[H]earts are made to be broken”); Taylor Swift, “I Knew You Were Trouble”(2012).”

Plaintiff argued that the “race of the characters in the [Film] is irrelevant to the total concept and feel of a film about relationships.… Judge Rakoff wrote that the Lemonade Movie is not just about relationships, but instead:

“depicts the protagonist’s journey from a particular perspective: that of an African-American woman in a predominantly African-American community… The Film repeatedly references and dramatizes generations of African-American women, and in the background of one scene, the observer hears an excerpt from a speech by Malcolm X to the effect that the Black woman is the most “neglected” person in America…. This all takes place against what defendants accurately characterize as a “Southern Gothic feel.”… The settings transition between areas of New Orleans, the abandoned Fort Macomb, and an Antebellum plantation. These significant differences in characters, mood, and setting further distinguish the total concept and feel in the [Lemonade] Film from that in Palinoia.”

Plaintiff also argued that both works “portray a struggle of a relationship; the reasons for such struggle are unclear and irrelevant.” But for Judge Rakoff, “[t]his is like saying that Casablanca, Sleepless in Seattle, and Ghostbusters are substantially similar despite the different motivating forces behind the struggles there portrayed (Nazis, capitalism, and ghosts, respectively).”

Trailer, Movie, Album

Judge Rakoff remarked “that the differences in total concept and feel are initially more pronounced between Palinoia and the [Lemonade] Film than between Palinoia and the [Lemonade] Trailer” but that “the difference in overall concept and feel between Palinoia and the [Lemonade] Trailer still overwhelms any superficial similarities.”

I was surprised to read that Plaintiff claimed that the Trailer for the Lemonade Movie had infringed his own short movie, as it was meant to be a teaser announcement for both the Movie and the Lemonade album. As noted by Judge Rakoff, the Lemonade Movie “marks the protagonist’s progression through thematic headings, and narrates it with songs from the Lemonade album.” The Trailer shows scenes of the 58-minute Lemonade Movie, which itself follows the sequence of the Lemonade album, which itself narrates a story, from one song to another. There are several layers of creation behind the trailer, the originality of which stems from both the originality of the Lemonade Movie and the Lemonade album. The hurdles of proving substantial similarities between the trailer, a derivative work of an original work featuring another original work, and the short film, an original work in itself, was therefore very high.

This post was originally published on the 1709 Blog.

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Filed Under: Copyright, Southern District of New York, Uncategorized · 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.

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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.

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Narrow Scope of New York Right of Publicity Statute Favors First Amendment, Not Lindsay Lohan

September 20, 2016 · by ·

Readers of this blog may remember that actress Lindsay Lohan sued Take-Two Interactive, the maker of the “Grand Theft Auto V” video game, claiming that it used her image when creating one of the characters of the game, a blond starlet. But, on September 1, a New York appellate Court ruled against Lohan, and also, in the same decision, against Karen Gravano of the VH1 reality TV show Mob Wives, who had similarly claimed that Take-Two had used her likeness in the video game.2963094580_b53d22f0c6_z

The narrow scope of New York right of publicity law

New York has a limited right to privacy. Its only privacy law, New York Civil Rights Law §§ 50 and 51, does not recognize a general right to privacy, but only protects the right of publicity of a “person, firm or corporation” in order to prevent “uses for advertising purposes, or for the purposes of trade” of the “the name, portrait or picture of any living person without having first obtained the written consent of such person.”

Therefore, in order to be a misdemeanor under New York law, an unauthorized use of the name, portrait or picture of an individual must have been for trade or advertising. The scope of the law is quite narrow.

No use of the name, portrait or picture

The appellate Court dismissed Lohan’s claim, because the video game “never referred to Lohan by name or used her actual name in the video game, never used Lohan herself as an actor for the video game, and never used a photograph of Lohan.” Instead, the game features an avatar, not an actual image of Lohan. New York law does not recognize protection of the persona, and merely “evoking likeness,” such as using her hair length, white shirt, flashing the peace sign, or using her “screen persona,” as Lohan claimed Take-Two Interactive had done when creating the character, is not enough to trigger application of New York right of publicity statute.

No use in advertising or trade

The appellate court noted further that, even if the video game would indeed have used Lohan’s likeness within the meaning of New York right of publicity statute, it still would not have violated the law, because a video game is not an advertising or a trade within the meaning of New York Civil Rights Law § 50. Instead, it is a video game communicating ideas, and, as such, is protected by the First Amendment to the U.S. Constitution: “[t]his video game’s unique story, characters, dialogue, and environment, combined with the player’s ability to choose how to proceed in the game, render it a work of fiction and satire.”

A good decision for creators

If the New York law would be constructed by the courts to include use which merely “evoke” the persona of the plaintiff, creators of video games, such in this case, but also biographers, comic books artists, painters, caricaturists and novelists, who merely “evoked” the persona of an individual would have to prove that the use was protected by First Amendment, which may be challenging to do, and thus costly. The Supreme Court recently denied petition in the Electronic Arts v. Davis case, and so it will not answer the question asked by petitioner, “[w]hether the First Amendment protects a speaker against a state-law right-of-publicity claim that challenges the realistic portrayal of a person in an expressive work.” The Ninth Circuit did not find in this case that the use of likeness of former NFL players in a video game was protected by the First Amendment. This case was a California right of publicity case. Each state has its own statute, and there is no right of publicity federal statute, leaving for a diverse jurisprudence.

This article was originally published on The 1709 Blog.

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Cheese! I Voted! Is It Legal to Post Selfies on Voting Day in New York?

April 18, 2016 · by ·

New York State is voting on April 19. The New York presidential primary election is open to voters who are registered as Democrats or as Republicans. Registered Democrats will vote to nominate the Democratic candidate to the Presidential election and the registered Republicans will vote to nominate the Republican candidate to the Presidential election.

However, neither registered Democrats nor registered Republicans will be authorized to take selfies with their ballots and post them on social media. This is because, under New York election law, it is a misdemeanor to show one’s ballot “after it is prepared for voting, to any person so as to reveal the contents, or solicit a voter to do the same.”

New York Election Law § 17-130.10:

Misdemeanor in relation to elections. Any person who:

Shows his ballot after it is prepared for voting, to any person so as to reveal the contents, or solicits a voter to show the same [is guilty of a misdemeanor.]

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What does that mean?

That mean that you can take a selfie with your ballot, after you have filled out the bubbles for the candidates of your choice, the Presidential nominee and six of the delegates, or if you are voting with a voting machine, after you have made your choices before pulling the trigger down or pressing the button.

You cannot ask someone to post their own selfies with their ballots either, if they have filled out the bubbles as to reveal for whom they voted.

However, the law can be interpreted as authorizing voters to take a selfie with their ballot, before it has been prepared for voting. In New York, absentee voters are given paper ballots. Others are using voting machines. There are several voting machines models being used in New York State, depending on the county where you are voting. So you can take a selfie with your paper ballot, if it does not show for whom you are voting, and you can take a selfie in front of the voting machine, before starting the process to vote.

You can also take a selfie after you exit the voting poll, showing your nifty I Voted! sticker. However, New York Voting Laws prohibit, while the polls are open, to do

“any electioneering within the polling place, or in any public street, within a one hundred foot radial measured from the entrances designated by the inspectors of election, to such polling place or within such distance in any place in a public manner.”

This can be interpreted as requiring that you step out at least one hundred feet from the polling station before taking your selfie, if you plan to use that selfie to promote your candidate, or if you post it instantly on social media and certainly if you shout Yeah [insert name of your favorite candidate] ! while taking the selfie.

Also, it is forbidden by New York Election Law to have any “political banner, button, poster or placard in the polling place or within such one hundred foot radial.”

Therefore, you cannot wear the tee-shirt and the baseball cap you bought to support your candidate to go voting, nor can you wear any button showing your support for your candidate. If you wish to take a selfie wearing these after you voted, you will need to cover them up while in the polling place and while being within 100 feet from it. You can display them again or pull them out of your bag and take your selfie outside of this zone.

You may wonder: Why all these rules? Isn’t it free speech to take and publish a selfie?

Selfies Ban and Free Speech

This argument was made by three voters in New Hampshire who had posted pictures of their ballots on social media in 2014. But the State of New Hampshire had adopted that year a law making it unlawful for voters to take and disclose digital or photographic images of their completed ballots or to share such images on social media or by other means. This is considered a violation, and carries a possible fine of $1,000.

The law was enacted as a way to protect voters from being intimidated or coerced into voting for a particular candidate. One can imagine that a family member or an employer would pressure a voter to vote for a particular candidate and asking to see proof of it on social media. However, voter coercion is already prohibited by federal law.

  1. U.S.C. § 10307(b)

Intimidation, threats, or coercion

“No person, whether acting under color of law or otherwise, shall intimidate, threaten, or coerce, or attempt to intimidate, threaten, or coerce any person for voting or attempting to vote, or intimidate, threaten, or coerce, or attempt to intimidate, threaten, or coerce any person for urging or aiding any person to vote or attempt to vote, or intimidate, threaten, or coerce any person for exercising any powers or duties under section 10302(a), 10305, 10306, or 10308(e) of this title or section 1973d or 1973g of title 42.”

States also have their own laws prohibiting vote buying and voter coercion, and New Hampshire has sucha  law, including one prohibiting giving liquor to voters to influence an election.

N.H. Rev. Stat. 659:39 Giving Liquor

“Any person who shall directly or indirectly give intoxicating liquor to a voter at any time with a view to influencing any election shall be guilty as provided in RSA 640:2.

These three voters were investigated by the Attorney General’s Office, and they filed a suit to challenge the constitutionality of the law, claiming it was a violation of the First Amendment. They won in August of last year, as United States District Judge Paul Barbadoro from the Federal District Court of New Hampshire found the New Hampshire statute to be unconstitutional as a content-based restriction on speech. As such, in order to prevail, the government would have had to prove that they could not achieve their goal, to prevent vote buying and vote coercing, with less restrictive alternatives.

Judge Barbadoro noted that even as small cameras have been available for decades and smart phones equipped with a camera have been available for fifteen years, there had been no instance of them having been used to take images of ballots in order to buy or coerce votes.

Judge Barbadoro concluded that the government could “simply make it unlawful to use an image of a completed ballot in connection with vote buying and voter coercion schemes,” instead of generally prohibiting taking an image of one’s ballot.

House Bill 1143 was then introduced. It would have reversed the changes made in 2014 to the voting law and strike down the prohibition on showing a ballot. However, the bill was tabled (meaning it was killed) on March 23, as 221 representatives voted against it and only 119 in favor of it.

But the State of New Hampshire has appealed Judge Barbadoro’s decision. On April 15, the attorney for the three ballot selfie takers filed his brief for the appellees, and calls posting ballot selfies “innocent, political speech” (p.14). We’ll see how this case will evolve.

Go Vote!

Anyway, it is legal to encourage voters to go vote, and this is what I am doing now. Go vote on the 19th! If you are not yet registered, and you are eligible to register to vote, do so ASAP so you will be able to vote in the next election!

Image is courtesy of The New York Public Library Digital Collections (Public Domain)

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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).

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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.

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