Fox News Motion for Summary Judgment Denied in 9/11 Photograph Fair Use Case

March 16, 2015 · by ·

On February 10, Judge Edgardo Ramos from the Southern District of New York (SDNY) denied Fox News Network’s motion for summary judgment of a copyright infringement suit filed by the copyright holder of an iconic 9/11 photograph. The case is North Jersey Media Group Inc. v. Jeanine Pirro and Fox News Network, LLC.

Plaintiff is North Jersey Media Group, the publisher of New Jersey newspaper The Record. It holds the copyright of the widely published photograph of three New York firefighters raising the American flag near the ruins of the World Trade Center.  This photograph was taken on 9/11 by photojournalist Thomas E. Franklin while on assignment from The Record. It has since genreated more than $1 million in licensing revenue.IMG_4146B

On September 11, 2013, a Fox News employee posted this photograph on the Facebook page of one of Fox’s television shows, Justice with Judge Jeanine, and chose to associate it with another iconic photograph, taken by Joe Rosenthal, which shows four U.S. Marines raising the American flag on Iwo Jima, during World War II.  The two images were not otherwise altered, but the employee juxtaposed #neverforget on the images before posting them on Facebook.

Plaintiff contacted Fox News on September 13, 2013, asking the photograph to be taken down. The posting was deleted a few days later. In October 2013, Plaintiff filed a copyright infringement suit against Jeanine Pirro, aka Judge Jeanine, and against the network. Defendants moved for summary judgment, claiming fair use. The SDNY denied the motion, after having examined the four fair use factors set forth by Section 107 of the Copyright Act.

The Supreme Court explained in 1994 in its Campbell v. Acuff-Rose case that, under this first factor,  courts must assess whether the new work merely supersedes the original work or if it “instead adds something new, with a further purpose or different character [and] alter[s] the first [work] with new expression, meaning, or message, … in other words, whether and to what extent the new work is “transformative.”

First Fair Use Factor: Purpose and Character of the Use

Defendants argued that their use was transformative as it drew a parallel between 9/11 and Iwo Jima and, as such, had to be categorized as comment under Section 107, which lists comments as one of the categories of use which may be protected by fair use. Defendants also argued that adding the hashtag #neverforget “signaled FoxNews’ participation in an ongoing, global discussion” about 9/11, and that they had altered the original work by using a cropped lower-resolution version of it.

Judge Ramos was not convinced by these arguments, as these changes were “barely discernable” (sic) and because Second Circuit case law requires more changes for the use to be transformative. Judge Ramos gave as examples the works created by Richard Prince from Patrick Cariou’s photographs of Rastafarians used by Richard Prince to create his “Canal Zone” series, noting that Prince had varied the portions of the original works used, and had also changed the scale and medium of the original works.

One remembers that the Second Circuit had found twenty-five out of thirty of Prince’s works to be transformative in Cariou v. Prince. Judge Ramos concluded that the 9/11 photograph was even less transformed by Defendants than the five Prince works which the Second Circuit did not find to be transformative. It is interesting to see how the thirty works at stake in Cariou were used by Judge Ramos as visual fair use “benchmarks” to assess whether a particular use is transformative enough to be protected by fair use.

Judge Ramos also noted that “#neverforget was a ubiquitous presence on social media that day [and that] [t]hus Fox News ‘commentary, if such it was, merely amounted to exclaiming “Me too.” The first factor was found to favor Plaintiff.

Second Fair Use Factor: Commercial Use and Nature and of the Work

Fox News operates for profit and Judge Jeanine’s Facebook page “is intended to capture revenues for the network.” Therefore, the use of the protected work was commercial. However, Second Circuit courts, when assessing fair use, discount the fact that almost all newspapers are published for profit. Doing otherwise would mean that commercial uses are presumptively not protected by fair use. That was not the intent of the Congress, according to the Supreme Court (Campbell, at 584).

Instead, courts consider that “the more transformative the work, the less important the commercial purpose.” As Judge Ramos did not find Defendants’use to be transformative, the second factor had thus to be carefully weighed. He concluded that there was “at least a question of material fact as to whether Fox News posted [the combined photographs] for the purely expressive purpose of commenting on the events of September 11, 2001, or whether it did so for the  commercial purpose of promoting the [Judge Jeanine] program.” Therefore, this point would have to be debated in court.

Courts distinguish expressive works from factual works in their analysis of the nature of a work, and that leads to a discussion on the nature and even the scope of copyright protection of photographs depicting current events. Defendants claimed that the copyright in the photograph taken by Thomas Franklin had to be limited “to Franklin’s decisions in taking the photograph” and that “Plaintiff cannot claim ownership in the firefighters’ actions, the expressions on their faces, their ashen uniforms, or the American flag.” Plaintiff instead claimed that the work “involved many creative decisions,” such as the lens chosen and the orientation of the photograph.

The Katz v. Chevaldina case in on appeal in the Eleventh Circuit, and our case is likely to go to trial. Therefore, the issue of copyright protection afforded by works of photojournalists may be further debated this year in US courts.Judge Ramos found that the second factor favored a finding of fair use, noting that Franklin “did not create the scene or stage his subjects.” Judge Ramos cited the Southern District of Florida Katz v. Chevaldina case, where the plaintiff had registered the copyright in a photograph representing him in an unflattering way and then filed a copyright infringement suit against a blogger who had used it to illustrate blog posts criticizing the plaintiff. The Southern District of Florida had found “no evidence that the photographer influenced, at all, the Plaintiff’s activity, pose, expression or clothing” and that, therefore, the second fair use factor weighted in favor of defendant.

Third Fair Use Factor: Amount and Substantiality of the Portion Used

Judge Ramos quoted the recent Second Circuit Authors Guild v. Hathi Trust case, where the court quoted the Supreme Court in Campbell:  “[t]he crux of the inquiry is whether ‘no more was taken than necessary.’ Judge Ramous concluded that this factor was neutral, as it was not clear whether Defendants could have used less of the protected work and still make sure that the public would recognize the iconic 9/11 photograph.

Fourth Fair Use Factor: Effect on the Market

Judge Ramos quoted the Second Circuit Cariou case, where the court noted that what matters when assessing this factor is “not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps the market of the original work” (emphasis in original). For the Second Circuit, a defendant in a copyright infringement cases has usurped the market if her target audience and the nature of the infringing content are the same as the original work. Courts must also consider whether the use is transformative.

This illustrates that the four factors are not compartmentalized: whether a use is transformative (first factor) may determine the nature of the work (second factor), which may in turn determine the effect on the market (fourth factor). In our case, Judge Ramos weighted against a finding of fair use, as Fox News did not substantially transform the original work, and also because Plaintiff still derives significant licensing revenue from the protected work.

Judge Ramos denied Defendants’ motion for summary judgment. The issue of fair use will have to be decided in court, unless the parties decide to settle.

This post was originally published on The 1709 Blog. 

Image of truck courtesy of Flickr user (vincent desjardins) under a CC BY 2.0 license.

 

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France: Text Messages Sent and Received on Business Phone May Be Examined by Employer

March 11, 2015 · by ·

A February 10, 2015 opinion of the Commercial Chamber of the Cour de Cassation, France’s highest civil court, should interest U.S. companies having employees in France.

According to the Cour de Cassation, employers can read text messages sent and received on electronic devices provided to their employees, if the personal nature of these messages is not indicated. As it is difficult, if not impossible, to indicate that a particular text message is personal, it seems that all text messages sent and received on a professional phone must be regarded as professional and thus may be accessed by the employer.textmessages

In this case, Newedge, a French financial company, was blaming GFI, a British financial company, of a wave of employees’ departures and even alleged it had “poached” employees, which had disrupted its activities. Newedge had obtained in November 2011 from the President of the Paris Commercial Court an emergency order authorizing a search of GFI’s premises. In support of its request, Newedge had produced text messages, and documents reproducing text messages, which had been received and sent by its former employees. GFI unsuccessfully moved to revoke the emergency order, and then appealed, but the Paris Court of Appeals upheld the emergency order on January 10, 2013. GFI then appealed in cassation.

 The principle of fairness in the administration of evidence

GFI had argued before the Court of Appeals that Newedge had produced, in support of its emergency order request, documents obtained unlawfully and unfairly, especially text messages. These messages, according to GFI, had been obtained unfairly because they violated the rights of employees, particularly their right to privacy and of secrecy of their correspondence.

Newedge had, however, argued that there was a legitimate reason to produce these documents, within the meaning of article 145 of the French Code of civil procedure, because Newedge needed to prove GFI’s alleged employee poaching and unfair competition.

GFI had argued that it was impossible to identify as “personal” text messages, as they do not have a “subject” field. Therefore, according to GFI, Newedge had procured these messages by an unfair process that made their production inadmissible as evidence. GFI further argued that the Court of Appeals had violated Articles 6 § 1 of the European Convention of Human Rights (ECHR), which protects the right to a fair trial, and Article 9 of the French Civil Code which protects privacy.

Indeed, under French law, evidence obtained by unfair means, such an invasion of privacy, is not admissible in court. According to Article 8 paragraph 1 of the ECHR, everyone has the right to the secrecy of their correspondence, and Article 9 of the French Civil Code protects the right to private life, including the right to confidentiality of correspondence.

French Employees Have a Right to Privacy in the Workplace

The Social Chamber of the Cour de Cassation had held on October, 2, 2001, in  the famous Nikon case, based on section 8 of the ECHR and article 9 of the Civil Code, that

“An employee is entitled, even at his place of work, to respect for his privacy; that this implies in particular the confidentiality of correspondence. The employer may therefore not violate this fundamental freedom by accessing the employee’s personal messages which he received on a computer made available to him for his work, and this even if the employer had  prohibited personal use of the computer.”

In addition, the Social Chamber provided a way for employees to protect the privacy of their files when it found, on October 18, 2006, that “the folders and files created by an employee on a computer made available by the employer to the employee to execute his work, are presumed to be professional in nature so that the employer can access in his absence unless the employee has identified them as personal.”

In our case, the Paris Court of Appeals had found that “the documents, folders, and files created or held by an employee at his disposal in the company office are, unless they have been identified as personal, presumed to be professional, and the employer can access them even in the absence of the employee. This includes electronic messages sent by e-mail or text messages.”

The Cour de Cassation approved the Court of Appeals because “text messages sent or received by the employee on a phone made available to her by the employer for work purposes are presumed to professional so that the employer has the right to consult them outside of the presence of the person concerned, unless they are identified as being personal. ”

The text messages produced as evidence by Newedge had not been identified as “personal” by its employees, and therefore Newedge had not obtained this evidence unfairly within the meaning of article 9 of the French Civil Code and article 6 §1 of the ECHR.

Are Text Messages Sent and Received on a Professional Electronic Device Always Professional?

Does this mean that text messages sent and received using an electronic device provided to employees by an employer are necessarily of a professional nature, since it is not technically possible to indicate their personal nature?  

The Paris Court of Appeals noted that article 4.1 on email monitoring, and article 4.3 about information collection, of Appendix 2 of Newedge’s Charter of Use of Electronic Devices, which was applicable to all employees, clearly stated that messages sent and received by employees were stored and could be searched using keywords. In addition, article 3 of the Charter stated that a message sent or received from workstations made available to the employees were of a professional nature. Furthermore, Article 11 of Newedge’s Internal Rules (Règlement Intérieur) stated that “staff members should not use the company’s communication tools for personal purposes.”

It is true that Article 3.3 of the Charter allowed for reasonable private use of professional electronic devices, but stated they were only considered as private messages with “personal” (personnel) in the subject field. The judge ruling in emergency had thus been right when he found that emails and text messages, sent and received on professional electronic devices, the personal character of which had not been stated, could be investigated by the employer for legitimate reasons.

The fact remains that it is technically impossible to identify personal text messages. Will technology eventually adapt to offer employees a way to indicate which of their text messages are private?

Meanwhile, French employees must be aware that their employer has the right to access all text messages sent and received on their business phone.

(The French version of this post can be found here).

Image is courtesy of Flickr user Kamil Porembiński under a  CC BY-SA 2.0 license. 

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Copyright Infringement Suit Filed By Graffiti Artists against Roberto Cavalli Will Proceed

March 3, 2015 · by ·

This post originally appeared on The 1709 Blog. 

Will representing graffiti artists soon become a micro niche for US IP attorneys? Here is another case where graffiti artists sued a corporation for allegedly using their art. On February 12, the Central District Court of California (CD California) denied Defendant Roberto Cavalli’s motion to dismiss a copyright infringement suit filed last year by Jason Williams and others graffiti artists. The case is Williams et. Al v. Roberto Cavalli S.p.A. et al., cv 14-06659.c

Plaintiffs are Jason Williams, known as Revok, Victor Chapa, known as Reyes, and Jeffrey Rubin, known as Steel. They are graffiti artists who had been invited in 2012 by a San Francisco property owner to create a mural in San Francisco’s Mission District (the “Mural”). Revok and Steel painted their signatures, over a background of “revolutions” imagery which is Chapa’s signature style (CD California p. 1 & 2).

Defendant is Roberto Cavalli, an Italian fashion company known for its colorful prints.  It produces and markets a lower-priced brand called Just Cavalli, which introduced in March 2014 a capsule line of clothing and accessories decorated with graffiti art (the “Graffiti Collection”). Revok, Reyes and Steel claimed that the line reproduced without authorization elements of the Mural, using high-resolution photography. They asked Defendant to stop selling the Graffiti Collection, but Defendant did not comply. One of the reasons for not complying was apparently that Italians are on vacation in August (!) (amended complaint at 34).

Plaintiffs then filed a copyright and trademark suit against Cavalli, the company producing the goods, and retailers selling the line, such as Amazon and Nordstrom. Defendant moved for summary judgment, which was denied by the CD California.  As this is a copyright law blog, I will only comment about copyright infringement.

Signature and Droit Moral

Revok and Steel had  used their respective signatures as part of the design, and claimed that Defendant made them indiscernible and superimposed the Just Cavalli name over Chapa’s imagery, even adding sometimes its own signature, thus giving the impression that Roberto Cavalli created these designs. Plaintiffs considered this to be “a defacement” and also “a false representation that {Roberto Cavalli] rather than Plaintiffs was the creator” (amended complaint at 32). However, they did not claim that Defendant had thus violated the Visual Artists Rights Act of 1990 (VARA).

VARA, 17 U.S.C. § 106A, was enacted to implement article 6bis of the Berne Convention into U.S law. It provides authors of a work of visual art the right to claim authorship of that work, to prevent the use of his or her name as the author of any work of visual art which he or she did not create, and to prevent “the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation.“ Under § 101 of the Copyright Act, a painting or drawing  existing in a single copy is indeed a work of visual art, and thus it can be argued that VARA applies to the Mural.

However, VARA is not always successfully used by graffiti artists in a court of law. In 2013, New York City graffiti artists claimed in the Eastern District of New York (EDNY) that a realtor about to destroy the 5Pointz buildings in Queens, on which they had painted several of their works, would thus violate VARA, as destroying their work would be prejudicial to their honor and reputation. But Judge Block from the EDNY was not convinced, noting that Plaintiffs knew that the  buildings were intended to be demolished, and that they therefore had “created their own hardships” when painting on a support they knew was doomed (the case is Cohen v. G&M Realty LP).

In our case, the possible VARA issue was not the destruction of the support, but the alteration of the signature, which could possibly prevent the artists to claim authorship of the Mural. However, Plaintiffs chose not to argue that Defendant violated their rights under VARA.

Signature as Copyright Management Information

Instead, they claimed that the signatures on the mural constitute copyright management information (CMI), which is protected by § 1202 (b) of the Copyright Act, under which no person can remove or alter any copyright management information without the authority of the copyright owner or the law.§ 1202(c) lists “[t]he name of, and other identifying information about, the author of a work” as CMI.

For the Plaintiffs, Defendant intentionally removed this information “with the intent to induce, enable, facilitate, or conceal an infringement of Plaintiff’s right under the [Copyright] Act“ and, in some pieces of the Graffiti Collection, even “replaced such information with false, altered and inaccurate copyright management information” (amended complaint at 49).

Defendant argued that section 1202 does not protect signatures. However, as it did not cite any authority for that proposition, this argument failed to convince the court, noting that “a signature seems to be the exact type of information that would identity the author of a work” and, as such, are within the scope of  § 1202(c)(2).

Defendant also argued that, as § 1202 was enacted as part of the Digital Millennium Copyright Act (DMCA), some technological process must be used to place or remove the signature, and that it was not the case here. However, the court cited several cases from courts belonging to the Ninth Circuit which had found signatures not in digital form to be CMIs. Therefore, the CD California denied Defendant’s motion to dismiss Plaintiff’s cause of action for violation of § 1202 of the Copyright Act. The suit will now proceed.

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

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French Mayor Sued by Artist for Repainting Fountain Without Authorization

February 27, 2015 · by ·

This post was previously published on The 1709 Blog. 

A French sculptor is suing the mayor of Hayange, a French town in Lorraine, for having repainted one of his works without authorization. The sculptor filed suit in Nancy last week, seeking 10,000 Euros in moral damages.

The French artist, Alain Mila created a fountain, composed of a rectangular natural granite stone block, which stands in a small pool and is pierced in the middle by a round conduit carrying out splashing water over a big egg. The work has been publicly displayed in Hayange since 2001, after it was bought by the then socialist mayor and mayoral team.

The newly elected Front National(FN) mayor of the town, Fabien Engelman, found the fountain quite ugly (“affreuse”) and he took the matter into his own hands last July. He had the egg repainted in baby blue and the fountain pool repainted in a darker shade of blue. The mayor was quoted in a local paper explaining he wanted to “cheer up the town” and that the town  had also repainted the barriers to that effect…

PaintBox

De Gustibus…

As the Front National represents itself as a patriotic, France above all kind of party, one wonders what may have triggered the choice of baby blue for an egg. I do not know of any French chicken producing blue eggs, and robins are not common in France. Alain Mila, the creator of the sculpture, noted that one of the colors used to repaint the fountain was similar to the color of the Front National logo. Indeed, the extreme-right party favors  blue, especially navy blue, which allows for a play on the words “Bleu Marine,” Marine being the first name of the current head of the FN, Marine Le Pen.

The office of Aurélie Filippetti, who was at the time French Minister of Culture, issued a statement about the painting of the fountain, writing that:

“This is a clear violation of the moral right and the basic rules of the Code of Intellectual Property and protection of patrimony. This incident is indicative of the cultural policy concepts of the elected officials of the Front National, which calls for greater vigilance. Aurélie  Filippetti is surprised that one can decide to “paint a work so it is more decorative” in defiance of its creation and of the crafts trade which are  entitled to expect, on the part of those responsible for  enforcing the law, respect for their rights and for the integrity of their work. The Minister of Culture and Communication recalls that works of art belonging to the State public domain or to public authorities are inalienable and cannot be sold. Consequently, these works cannot be modified or even moved, let alone destroyed without the permission of the artist or his successors in title. They cannot in any case be sold.”

The mayor then ordered the paint to be removed, but the restoration was not quite finished, and the stripping of the paint even damaged the work. Negotiations between the mayor and the artist did not lead to an agreement, and Mr. Mila filed suit.

Droit Moral

Mr. Mila deplored this act in the press, saying that it was an attack on his works and his personal values.

Indeed, article 121-1 of French Intellectual Property Code (FIPC) provides that the author has a moral right over the respect of his work. This right is “attached to his person” and so it is a personal right. However, the law does not directly provide for compensation.  Article 6bis of the Berne Convention also provides authors the right “to object to any distortion, mutilation or other modification of, or other derogatory action in relation to… [the] work, which would be prejudicial to his honor or reputation.”  French law has a larger scope than article 6bis, as the changes made to the work do not have to be proven prejudicial to the honor or reputation of the author.

French courts have regularly found that the moral right of an artist has been infringed because of changes made without authorization. Such changes found to be illegal were adding a too brilliant varnish on a painting or using tacky colors to restore a painting. I have not found the complaint in our case, but I have found a November 28, 1988 case from the Tribunal administratif of Montpellier where the court found that a town which had destroyed a monumental sculpture without the consent of its creator was liable for this action, and sentenced it to damages.

I believe that Mr. Mila is likely to prevail in his claim, and I will keep us posted on further developments.

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

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Paparazzi’s Photographs Protectable by US Copyright

February 18, 2015 · by ·

This blog post was first published on The 1709 Blog.

On January 26, 2015, the Southern District Court of New York (SDNY) denied summary judgment to Defendant, a web site which had used Plaintiff’s protected photographs without authorization. The case is BWP Media USA, Inc. v. Gossip Cop Media, LLC,13-civ-7574 (KPF) (SDNY 2015).

Plaintiff BWP Media is a media company specializing in celebrity pictures, which can either be described as “entertainment-related photojournalism,” as did the complaint, or, less demurely, as employing paparazzi to follow celebrities around and take their pictures. Plaintiff licenses its works to various media outlets, including TMZ. Defendant Gossip Cop is a website commenting celebrity gossip news and sometimes rating their accuracy on a scale from zero to ten.

gossipingladiesSecond Circuit Requires Plaintiff to Have Already Registered its Copyright

In order to illustrate some of its articles, Defendant reproduced without authorization three photographs and one video in which Plaintiff claimed copyright ownership. Defendant moved to dismiss, claiming fair use, but its arguments did not convince the court.

As copyright registration for the video, featuring actress Gwyneth Paltrow on a scooter, was pending at the time the copyright infringement was filed, the SDNY granted the motion to dismiss with respect to the video. Indeed, a majority of Second Circuit courts, of which the SDNY belongs, have held that a pending copyright application is not a copyright registration, which is a necessary prerequisite to file a copyright infringement suit under 17 USC §411(a).

Fair Use Claim Survives Motion to Dismiss

The three remaining works were photographs of celebrities, taken by paparazzi, which had been published online by various news organizations. For instance, a picture of Mila Kunis and Ashton Kutcher had been published by The Sun to illustrate an article claiming that the couple was moving to the UK. Defendant reproduced the photograph in an article rating this information to be false. Another image showed Robert Pattinson leaving the Chateau Marmont hotel. This image was used by Defendant to deny a report that the actor had partied hard that night. A third image showed Liberty Ross sans wedding ring, but Defendant did not comment on the original story about her alleged marital troubles.

The SDNY denied Defendant’s motion to dismiss the copyright infringement claim for these three pictures. Defendant had claimed fair use. The fair use defense is provided by 17 USC § 107, which  enumerates fours nonexclusive factors, the purpose and character of the use, the nature of the copyrighted work, the amount taken by Defendant and the effect of the use on the potential market. Even though this defense is a mixed  question of fact and law, the Second Circuit allows resolution of fair use inquiry at the motion to dismiss stage, if the facts necessary to establish the defense are evident on the face of the complaint.

First Factor: Transformative Use

The first factor asks whether the infringing work merely supersedes the original work or if, instead, it adds something new and is thus transformative.

The SDNY noted that the Second Circuit in Cariou v. Prince found that “[t]he law imposes no requirement that a work comment on the original or its author in order to be considered transformative” (at 706). The Cariou court had also noted that the commercial use of an infringing work may still be considered fair use, if it is transformative. Also, the Second Circuit recognized last year in Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P. that “[a]lmost all newspapers, books and magazines are published by commercial enterprises that seek a profit.”

The SDNY reasoned that Defendant is indeed a for-profit entity, but that it used the infringing pictures “to illustrate or bolster the stories run by The Sun [and other media outlets], and proceeds to attack the factual bases of these stories.” The SDNY added that “while [Defendant] Cop may [be] a far cry from Woodward and Bernstein” [that is called an “ironic understatement”] the fact that the news thus analyzed was “on the tawdry side of the news ledger” does not prevent a finding of fair use. The SDNY found the first factor to weigh in Defendant’s favor for the Kunis/Kutcher and the Patterson photographs, but not for the Ross’ photograph, as Defendant had not commented on the original report that the actress may have marital troubles.

Second Factor: Nature of the Work- Paparazzi Pictures may be Creative Works

IP attorneys feeling guilty if reading gossip magazines while waiting for their nails to dry may welcome the news that they are thus assessing whether such images should be protected by copyright. In the Second Circuit, it seems that the answer is yes.

The SDNY quoted a 2012 Sixth Circuit case, Balsey v. LFP, Inc., which held that, while a paparazzi photographer does “not direct [the subject] or create the background for the images,” he, however, does “ha[ve] control over the exposure of the film…[and] use[s] his artistic skills to edit the pictures for size, color, clarity, and [chooses] which images to publish based on the allurement of the subject” (Balsey at 760). Therefore, Plaintiff’s images may be considered creative works, even though they were taken by paparazzi. The SDNY nevertheless declined to give weight to the second favor in favor of either party.

Third Factor: The Amount Taken

To assess the third fair use factor, Second Circuit courts examined the portion of the original work which was used without authorization, which must be “reasonable in relation to the purpose of the copying” (Blanch v. Koons at 257). Also, the Supreme Court noted in Campbell v. Acuff-Rose that courts must look at the quantity of the materials used, but also their quality and importance (Campbell at 587).

Here, Defendant copied Plaintiff’s works in their entirety, which, according to the SDNY, “suggests that they were used to convey the ‘fact’ of the photograph to viewers” and that purpose is indeed reasonable for the SDNY. However, the SDNY once again differentiates the Liberty Ross ‘photograph from the other ones, as Defendant did not use it to comment about the veracity of breaking up rumors. As such, it “was used to convey precisely the same information as in its original publication.” The SDNY found the third factor to weigh in Plaintiff’s favor.

Fourth Factor: Effect on the Market

If the unauthorized copy usurps the market by offering a substitute product, there is no fair use. Defendant argued that it operates a “unique, transformative news reporting market” as it evaluates gossip, not merely republished them from other sources. However, the SDNY found that Defendant’s articles may be found to be adequate substitutes for the original articles. Therefore, they could deprive the media outlets buying pictures from Plaintiff, and, by extension, Plaintiff itself, of a portion of their market. The SDNY found therefore that the fourth factor weighed in Plaintiff’s favor.

The case will now proceed further.

Image of the ladies gossiping courtesy of the Boston Public Library, under a CC BY 2.0 license, 

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Zebra Stripes and Polka Dots May be Protected by U.S. Copyright

February 4, 2015 · by ·

This post was originally published on The 1709 Blog. 

On January 12, 2015, the Eleventh Circuit affirmed a decision of the Southern District Court of Florida which had granted summary judgment to Washington Shoe, finding that Olem Shoe had infringed its copyright in several designs adorning rain boots, albeit not willfully. The case is Olem Shoe Corp. v. Washington Shoe Corp, No. 13-14728.zebra

Washington Shoes designs and sells rain boots. In the fall of 2009, it sent a cease-and-desist letter to Olem Shoe Corporation, a shoe wholesale company, claiming that one of Olem’s rain boot models infringed Washington Shoe’s copyright in its “Ditsy Dots” design, a particular polka dot pattern.

Olem filed suit to have the copyright declared invalid. Washington Shoe counterclaimed, and sent another cease-and-desist letter in early 2010, claiming copyright infringement in its “Zebra Supreme” design. Both of the allegedly infringing Olem models had been sourced in China. Pictures of all these models can be found on p.31 of the case.

Washington Shoe then filed a motion for summary judgment. The district court granted it with respect to the copyright claim, but denied it with respect that the infringement was “willful.” Washington Shoe appealed to the Eleventh Circuit, Olem cross appealed, and the court affirmed.Olem filed a motion to dismiss Washington Shoe’s counterclaim, asserting that Washington Shoe’s copyrights protected only the two-dimensional drawings filed with the Copyright Office, not the boots themselves. But the district court found in April 2010 that, while the utilitarian functions of boots could not be protected by copyright, the designs printed on their surface could be protected.

Filing the Copyright Infringement Suit

The plaintiff in a copyright infringement suit must prove that he owns a valid copyright, meaning that the work is original and that plaintiff has obtained a registration certificate. The plaintiff must also prove that the defendant has copied elements of his work which are original.

Olem argued in front of the district court that the registered Ditsy Dots design was not original enough to be protected by copyright, as it was too generic to be sufficiently original. However, the district court found that the polka dots design was sufficiently original to be protected by copyright, relying onPrinceGroup, Inc. v. MTS Products, a 1997 Southern District of New York case, where the court had found that a particular polka-dots fabric pattern met the low threshold of creativity to be protected by copyright.

In our case, the district court found that “the particular arrangement of different sized dots at varying distances along vertical and horizontal planes… [was] an artistic decision that distinguishes Ditzy Dots from generic polka dots.” However, some irregularities in dot-shape could not be protected by copyright, as they “surely derive[d] from the process of stretching a two-dimensional design over a three-dimensional boot.”

Proving Copying of Constituent Elements of the Protected Work

Also, the district court was mindful to note that “only… the conceptually severable patterned designs on the face of the boots… not any utilitarian functions of the boots themselves” are protected by copyright. Indeed, U.S. Copyright law does not protect useful articles. However, §101 of the Copyright Act provides that “the design of a useful article… shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design 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.” The District Court found that Olem Shoe had copied constituent elements of the designs which were original.

The district court also found the designs on Plaintiff and Defendant’s boots to be substantially similar, after having compared them from four different angles, and concluded that Olem had infringed Washington Shoe’s copyright. The Eleventh Circuit noted that two works essentially or virtually identical are strikingly similar, and that the copying elements of an infringement claim was satisfied in this case. The Eleventh Circuit found the polka dots and the zebra stripes designs virtually identical and thus strikingly similar, and affirmed the district court’s finding that Olem had copied Washington Shoe’s design.As Washington Shoe could not prove copying, it had to establish access and substantial similarity with its designs. The district court found that Olem had “access” to the registered designs, as the boots bearing the protected designs were sold nationwide at Target, which has numerous stores in Florida, were Olem is located. The boots were also sold at Target.com. Also, Washington Shoe had presented these boots in tradeshows which had been attended by Olem. For all of these reasons, Olem was found to have had access to the protected designs.

No Independent Creation But No Willful Infringement Either

Olem had unsuccessfully argued in front of the district court that it had independently created its own design, submitting testimonies that the company had received these designs from a Chinese supplier, and then used them on its boots without knowing that they were protected by copyright.

While this was not sufficient to establish independent creation, the district court nevertheless took it into consideration to hold that Olem had not willfully infringed Washington Shoe’s copyrights. As the parties did not cite any Eleventh Circuit cases, nor did the District Court identify cases establishing willful infringement standards, the district court had adopted as definition of willful copyright infringement a Second Circuit definition, where courts examine “whether the defendant had knowledge that [its] product represented infringement or perhaps recklessly disregarded the possibility.”

The Eleventh Circuit noted that “[g]enerally, establishing a reckless state of mind in a copyright case requires a showing that the infringer possessed particular knowledge from which willfulness could be inferred, such as evidence that the infringer was given samples of the copyrighted work prior to producing the infringing work” (p. 13).

The Eleventh Circuit was not convinced by Washington Shoe’s argument that, merely because the designs were strikingly similar, Olem recklessly disregarded the likelihood that it infringed Washington Shoe’s copyright, reasoning that “striking similarity… says little about the state of mind of the copier”(p. 12).

Of the Importance of Sending Detailed Cease-and-Desist Letters

The Eleventh Circuit was not convinced either by Washington Shoe’s argument that the cease-and-desist letters sent to Olem prove that it knew that it was infringing protected copyright.

Indeed, Washington Shoe had sent Olem two cease-and-desist letters, but Olem could still “reasonably and in good faith have believed that there was no infringement,” according to the district court, as the letters did not include identifying information for the registration or a sample of the allegedly infringing work. Therefore, these letters were not probative evidence that Olem knew that it infringed Washington Shoe’s copyright, and the copyright infringement was thus not willful.

The Eleventh Circuit agreed with the district court on this point, noting that the letters, as sent, “provided nothing from which Olem could have determined that the claim was legitimate” (p.11).

This should give pause to copyright practitioners when writing their next cease-and-desist letters. These documents should include enough information as to effectively put the receiver on notice that he does indeed infringe their client’s copyright.

Image of the birdhouse is courtesy of Flickr user JB Kilpatrick under a CC BY 2.0 license.

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Be Mindful of Your Ability to Copy Street Art

February 2, 2015 · by ·

This blog post was originally published on The 1709 Blog. 

Mark Anthony Miller is a Brooklyn street artist, known as CAM, whose works can be seen in Brooklyn’s DUMBO neighborhood. His work is often inspired by stained glasses, as could be seen last year in theAlways be Mindful of your Ability to Fly exhibition at the DUMBO Art Festival.

On January 21, he filed a complaint in the Eastern District Court of New York for copyright infringement against Toll Brothers, Inc., a real estate development company, claiming that Defendant used without permission a reproduction of one of his works, a mural in DUMBO now destroyed. The case is Craig Anthony Miller v. Toll Brothers, Inc.,no. 1:15-cv-0032. Here is a link to the complaint, courtesy of New York attorney Mark Jaffe.

Plaintiff, as part of the 303 Collective, painted in 2009 a90-foot “elephant mural” on a warehouse located at Water Street in DUMBO. The owner of the wall had given the artists permission to paint it. The work was a striking piece, featuring lush vegetation, angels, and wild animals, including elephants, over a vivid orange background. As explained on his web site, CAM is inspired by the Hindu God Ganesh, who is represented as having the head of an elephant. The elephant mural was painted over in 2009, and the warehouse itself was eventually torn down for make way to, surprise, surprise, a luxury apartment development.

Plaintiff claims that Defendant used in 2012, without his permission, a photograph of the elephant mural in advertisements for its 205 Water Street in Brooklyn luxury condominium development. At the time, the mural had not yet been destroyed, and had, according to the complaint, “served as the backdrop for countless videos, weddings, engagements, fashion shoots, television and print advertisements” (p.2). Defendant’s advertisements were posted in the New York City subways, telephone booths and bus shelters, and also in the print and the online version of The New York Times.dumbo

The complaint states that Plaintiff contacted Defendant after learning about the advertisement and that they engaged in negotiations over possible compensation for this unauthorized use. However, while “Plaintiff produced work for [Defendant] for a number of months,… no projects ever materialized and no payment was ever made to Plaintiff for the  infringing use of the [elephant mural]”(p. 4).

Plaintiff has registered the copyright for the mural, and he is claiming infringement of his exclusive rights. He is seeking either actual or statutory damages, as provided by §504 of the Copyright Act, attorney’s fees, as provided by §505 of the Copyright Act, and injunctive relief, under §502 of the Copyright Act, asking the Court to order Defendant to destroy all copies of the allegedly infringing advertisement.

There have been several similar cases lately, where graffiti artists sued a company for infringement of their copyright (see here, here and here). It will be interesting to see when this trend will die down, signaling that corporate counsels are finally aware that street art is, well, art, and as such, original enough to be fully protected by U.S. copyright.

Image is courtesy of Flickr user dumbonyc under a CC BY-SA2.0 license.

 

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First Sale Doctrine Allows Retailer to Sell in U.S. Gray Market Watches Bought Abroad

January 29, 2015 · by ·

This blog post was originally published on The IPKat blog. 

On January 20, 2015, a three-judge panel from the 9th Circuit affirmed a Central District of California’s decision which had granted summary judgment to defendant U.S. discount retailer Costco. The discounter had been sued for copyright infringement by Swiss luxury watch manufacturer Omega. The case is Omega S.A. v. Costco Wholesale Corp., No. 11-57137 (9th Circ.).costco1

A Gray-Market of Genuine Luxury Goods

Costco sold Omega “Seamaster” watches in its stores. It had purchased them abroad in 2004 in the “gray market,”after Omega had sold the watches to authorized foreign distributors. Indeed, instead of buying goods directly from an official supplier, some companies buy genuine goods in the secondary market, after they have been first sold by an authorized distributor.

Choosing where your products will be sold, or “placement,” is an important part of the marketing mix. The watches were sold by Costco for 35% less than Omega’s suggested retail price (p.19) and “Price” is also a component of the marketing mix. It is therefore not surprising that many luxury companies are less than happy to see their products sold by discount retailers, for fear of losing the aura of prestige which is one of the reasons customers may buy a luxury product.

Omega did not want its watches to be sold by Costco, and sued the discount retailer for copyright infringement, arguing that it had breached §602 of the Copyright Act, which forbids importing protected works into the United States “without the authority of the owner of copyright.” As watches cannot usually be protected by copyright in the U.S., because they are useful articles, Omega had each of the Seamaster watches engraved on its underside with a tiny copyrighted Omega design, the “Globe De
sign,” in order to be able to assert a copyright in them. Costco did not have permission to use this design.

Costco asserted a first sale doctrine defense. The Central District of California granted summary judgment to Costco, noting that Omega had engraved the Globe Design on its watches at least in part to control importation of the watches, and thus had misused its copyright. But the 9th Circuit reversed the decision in 2008 and remanded, holding that the first sale doctrine does not apply to copies of works produced abroad. The Supreme Court affirmed per curiam in 2010. On remand, the district court granted again summary judgment to Costco. Omega appealed and the 9th Circuit affirmed this time, because the Supreme Court held in 2013 in Kirtsaeng v. John Wiley & Sons that the first sale doctrine applies to goods manufactured abroad.

First Sale Doctrine

109(a) of the Copyright Act authorizes the owner of a lawfully made copy of a protected work to sell or dispose of that copy without having to ask permission of the copyright owner. Therefore, once a copy of a protected work has been lawfully sold, the owner of that copy, and the subsequent owners as well, may dispose of it as they wish, because the first sale of the work has “exhausted” the copyright owner’s exclusive distribution right under § 106(3).

In Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., the Supreme Court held in 1998 that §602(a)(1), which refers to §106(3)’s exclusive distribution right, incorporates the “first sale” doctrine limitation. That means that §602(a)(1) allows the importation into the United States of a copy of a protected work purchased abroad. In the Quality King case, however, the copy, while purchased abroad, had been manufactured in the U.S.A., and thus the case could be distinguished from the Costco case.

But while the Costco suit was under way, the Supreme Court held in 2013, in Kirtsaeng v. John Wiley & Sons, that the first sale doctrine also applies to copies of protected works lawfully manufactured abroad. The Kirtsaeng judgment retroactively applied in the Costco case, and therefore, the Ninth Circuit found that Omega had no copyright infringement cause of action against Costco:

“Omega’right to control importation and distribution of its copyrighted Omega Globe expired after that authorized first sale, and Costco’s subsequent sale of the watches did not constitute copyright infringement” (p.7).

This decision is a big victory for Costco and similar retailers alike. As noted by Judge Wardlaw in her concurring opinion, Costco sells “a wide range of luxury goods, including Dom Pérignon Champagne, Waterford crystal, Dolce & Gabbana handbags”(p. 9). We may soon see more luxury goods in discounter’s aisles, alongside gallons of laundry detergent and giant cans of tomato soup.

 

Image  is courtesy of Flickr user Bas Lammers under a CC BY-SA 2.0 license. 

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Musician Don Henley Files Right of Publicity Suit Against Retailer

October 21, 2014 · by ·

I recently wrote a post for The IPKat blog on an interesting right of publicity and trademark infringement case in the Central District of California. The blog post has been quoted by Techdirt.

In this case, Don Henley, member of the music band Eagles, sued retailer Duluth Trading Company over an ad where Defendants urged its customers to “Don a Henley” and to “Take it Easy.” A Henley tee-shirt is a particular type of tee-shirt, and “Take it Easy“ is a name of a famous Eagles song.HenleyinKent

Don Henley registered his name as a trademark in two classes and he is claiming that Defendant’s ad is an infringement of his trademarks and false advertising. He is also claiming that the ad is an infringement of his right of publicity as protected by California statutory law and common law.

I do not believe that the trademark and false advertising claims are likely to succeed, but the right of publicity claim may be successful, if, however, Plaintiff convinces the Court that Defendant indeed used his identity.

Under §3344 of California Civil Code, it is forbidden to knowingly use “another person’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian.”

The name of Plaintiff is Don Henley and the ad urges to “Don a Henley.” To don is a verb meaning “to wear” and a Henley is a common name for a shirt. So Plaintiff’s first name is also an English verb and his last name is also an English noun. If the ad would merely urge customers to Don a Henley, Plaintiff would have no chance to win the case, as he has no right to prevent others from using a verb and a noun which are part of the English language, even if pairing them together may give the appearance that one is referring to Don Henley the musician.

But the ad also urged its readers to “Take it Easy.” So semantically we have: Don+Henley+ Take it Easy ( the name of the Eagles song).Therefore, the ad may be found to refer at Plaintiff’s identity, and to profit commercially from that unauthorized use.

Similarly, the 6th Circuit held in 1983, in Carson v. Here’s Johnny Portable Toilets, Inc., that using the phrase “Here’s Johnny” as a name for portable toilets was an infringement of Johnny Carson’s right of publicity. Johnny Carson had been introduced by Ed McMahon each night on The Tonight Show with the phrase “Here’s Johnny” and even if Defendant had not used Johnny Carson’s name, “Here’s Johnny” had been selected by Defendant “because of its identification with Carson.”

Judge Cordelia Kennedy’s dissent in the Carson case is interesting for our case even if a dissent is not, of course, persuasive. For Judge Kenney, “[t]here [was] nothing in the record to suggest that “Here’s Johnny “has any nexus to Johnny Carson other than being the introduction to his personal appearances. The phrase is not the part of an identity that he created” (my emphasis).

This last phrase could be the stepping stone for Defendant’s line of defense, by arguing that “Take it Easy” is not the part of Defendant’s identity, and therefore, Defendant did not use commercially and without authorization Plaintiff’s identity.

Photograph is Henley’s Cable Works Research Laboratory by Flickr user Brian Fuller under a CC BY-ND 2.0 license.

CC BY-ND 2.0

 

CC BY-ND 2.0

 

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Three’s Company and Four Fair Use Factors

September 3, 2014 · by ·

dringThe European Court of Justice just released today its Deckmyn judgment, where it defines what a parody is under European Union law. I wrote about it a while ago, and will come back to it. Meanwhile, there is an interesting parody case just here in New York, David Adjmi v. Dlt Entertainment Ltd., 14 cv.0568.

Plaintiff David Adjmi is a playwright, and his plays have been performed at the Royal Shakespeare Company in England, Lincoln Center, and the American Repertory Theather among others. He wrote 3C, an original play parodying the television show Three’s Company, which ran from 1977 to 1984. Defendant DLT Entertainment holds the copyright to Three’s Company. It sent Plaintiff a cease and desist letter in June 2012, asking that the production of 3C, which played Off Broadway in 2012, to be stopped. After the production ended as scheduled in July 2012, a publisher expressed interest in publishing 3C in a book of Plaintiff’s plays, and an another publisher want to prepare an acting edition of 3C, and also license its future productions on behalf of the playwright.

Plaintiff then filed suit in the Southern District of New York (SDNY) on January 30, 2014, seeking a declaration that his play does not infringe DLT’s copyright, and filed an amended complaint in February 25. Defendants filed a counterclaim for copyright infringement against both the playwright and the producers of 3C, claiming that the play is not fair use, but rather is an unauthorized derivative work. The playwright moved for judgment on the pleading, and, on August 25, filed a memorandum of law to support this motion, addressing the four fair use factors.

The doctrine of fair use is codified in the Copyright Act of 1976, 17 U.S.C. §107, and provides an affirmative defense to a copyright infringement claim. 17 U.S.C. §107 lists four non-exclusive four factors , which the courts consider when determining if a particular use of a protected work is fair:

“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

A determination of fair use is a mixed question of law and fact, and no factor is dispositive. The memorandum of law argues that the play is a parody, and, as such, is “quintessential fair use.” It cites the Campbell v. Acuff-Rose Music case, where the Supreme Court explained that “the heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s work.” As such, parody is speech protected by the First Amendment.

In Three’s Company, Chrissy and Janet are sharing an apartment in Santa Monica with Jack. Although their relationships are platonic, Jack is pretending to be gay as their landlord frowns upon a man being the roommate of two women. 3C also features two women sharing platonically an apartment with a man. However, the man is really homosexual, but has not revealed his sexuality publicly, as he is afraid of people’s reactions. Indeed, his landlord is homophobic. One of the women is a cocaine user and has been in an abusive relationship. The other woman has very poor self-esteem to the point she allows her lecherous landlord to molest her.

The memorandum argues that the play “demonstrates how some of the assumptions and stereotypes on which the superficial comedy of Three’s Company was based were harmful, even toxic, to real people.” Plaintiff stated in his original complaint that, in writing 3C, he “wanted to deconstruct the sunny, silly sitcom visions of Three’s Company and contrast it with the reality of life in the 1970’s for many people.” The complaint states further that “Three’s Company was a light-hearted farce; 3C is heavy and dark” and that that 3C is a parody and thus fair use.

The memorandum addresses the four fair use factors. As for the first factor, the purpose and character of the use, Plaintiff argues that he “altered [Three’s Company’s] characters and invented his own plot for them.” He parodied the television show “to expose and criticize the toxic assumptions about sexuality, gender, and age at the heart [of the show.]” As such, the use of the original work is transformative. In Campbell, the Supreme Court explained that the first factor must aim at determining whether the new work merely supersedes the original work or if the use is instead transformative.

Plaintiff also argued that the second factor, the nature of the original work, should weigh in his favor, albeit he did not elaborate much. It is surprising that Plaintiff did not reiterate there that his work is creative.

As for the third factor, the amount and substantiality of Plaintiff’s use in relation to the original work, the memorandum quoted the Seventh Circuit case Chicago Bd. Of Educ. v.Substance, Inc., where the court recognized that “a parodist has to be able to quote, sometimes very extensively, from the parodied work in order to make the criticism.” It also quoted the Campbell case, where the Supreme Court explained that copying for parodic purpose “does not become excessive… merely because the portion taken was the original’s heart.”

It also cited the Eleventh Circuit‘s Suntrust Bank v. Houghton Mifflin Co. case, which is probably the most permanent case law in that matter. The Eleventh Circuit found the novel The Wind Done Gone, written by Alice Randall, to be fair use, even though it had appropriated characters, plot, and major scenes from Gone With the Wind, as the novel “generally sets out to demystify GWTW and strip the romanticism from Mitchell’s specific account of this period of our history.” The Eleventh Circuit defined parody as a work aiming to “comment upon or criticize a prior work by appropriating elements of the original in creating a new artistic, as opposed to scholarly or journalistic, work.” Plaintiff acknowledged the title of the play refers to the television show, but that he did not copy dialogue and added many new elements,

Plaintiff notes that the fourth factor, the effect on the market for the original work “generally weighs in favor of a parodist,” noting that , if only licensed parody would be permitted, a copyright owner could prevent parody of his work, to the detriment of free expression. A parody does not satisfy the demand for the original, and plaintiff argues his play, which has so far only played for a limited time Off Broadway, does not fulfill the demand for the television show, which is still in syndication.

 

Image is Ye Olde Doorbell (306/365) by Flickr user derrickcollins, under a CC BY-ND 2.0 license. 

CC BY-ND 2.0)

 

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