Plaintiffs Appeal in Manhattan Privacy Case

September 16, 2013 · by ·

2890653367_3beb209a81Plaintiffs who lost last month their privacy case against a photographer who had taken pictures of them and their children without permission filed a notice of appeal to the Appellate Division of the New York Supreme Court on September 5.

This is an interesting case about balancing two competing interests, the right to privacy and the right to freedom of expression.

Using a telephoto lens, defendant Arne Svenson took several photographs of people living in the building across from his own apartment in Manhattan, taking advantage of the fact that the building is a glass tower with floor-to-ceiling windows for each apartment. People are shown going on with their daily activities, having their breakfast, cleaning or sleeping.

Svenson did not ask for permission to take these pictures and later used these images for an exhibition, “The Neighbors” presented this year at a Chelsea art gallery.

Some of the people photographed were minors, and their parents, Martha and Matthew Foster, filed suit individually and on behalf of their children against Svenson. Judge Eileen Rakower from the Supreme Court of New York granted on August 1 defendant’s motion to dismiss.

New York Privacy Law

The state of New York does not recognize a common law right of privacy. It only recognizes a right not to have one’s likeness used for commercial purposes, New York Civil Rights Law §§ 50 and 51. Under § 50,“[a] person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.” § 51 provides plaintiff for injunctive relief and damages.

Therefore, it is not illegal under New York law to use someone’s likeness without permission for a purpose which is not commercial. Plaintiff must prove to succeed in his claim the (1) use of his name, portrait, picture or voice (2) “for advertising purposes or for the purposes of trade” (3) without consent and (4) within the state of New York.

Svenson certainly used the likeness of plaintiffs. The faces of his subjects are not seen, but some of them are shown in “lost profile” which certainly would allow people knowing them to recognize them. The preliminary injunction sought to immediately end “the dissemination of two photographs showing the ‘[plaintiffs’] children faces and partially-clad bodies. “

So Svenson used the likeness of the plaintiffs, without their consent, within the state of New York. Was this use “for advertising purposes or for the purposes of trade”?

Trade/Advertising Purposes or Free Speech?

Plaintiffs alleged defendant’s photos constituted advertising and trade under §§ 50 and 51, as Svenson sold his photographs through the gallery which organized “The Neighbors” exhibition.

But their arguments did not convince Judge Rakower from the New York Supreme Court who found this was not a commercial use of the likeness of plaintiffs and their children. That is consistent with New York case law. For instance, in Simeonov v. Tiegs, the New York City Civil Court held in 1993 that” [a]n artist may make a work of art that includes a recognizable likeness of a person without her or his written consent and sell at least a limited number of copies thereof without violating Civil Rights Law §§ 50 and 51.”

Judge Rakower also noted that New York law protects freedom of expression, citing a 1982 New York Court of Appeals case, Arrington v. N.Y. Times. In Arrington, the photograph of plaintiff, taken without his permission in the streets of New York City, was later used to illustrate an article on “The Black Middle Class” in the New York Times magazine. The Court of Appeals ruled that the use was not commercial, even” though the dissemination of news and views is carried on for a profit or that illustrations are added for the very purpose of encouraging sales of the publications.”

Judge Rakower cited the Southern District of New York Hoepker v. Kruger case, where the SDNY ruled in 2002 that artist Barbara Kruger could use plaintiff Charlotte Dabney’s likeness in her “It’s a small world, but not if you have to clean it” work . The SDNY noted then that “[t]he advertising and trade limitation in New York’s privacy statutes was crafted with the First Amendment in mind. Through Sections 50 and 51, the New York legislature sought to protect a person’s right to be free from unwarranted intrusions into his or her privacy, while at the same time protecting the quintessential American right to freedom of expression.”

In our case, Judge Rakower reasoned that Svenson was “communicating his thoughts and ideas to the public” and that his photographs “serve more than just an advertising or trade purpose because they promote the enjoyment of art in a form of a displayed exhibition.” Even if the exhibition had been advertised, that was “beyond the limits of the statute because it related to the protected exhibition itself.”

As plaintiffs could not establish a likelihood of success on the merits, the NY Supreme Court granted defendant’s motion to dismiss. Judge Rakower noted that “[w]hile it makes Plaintiffs cringe to think their private lives and images of their small children can find their way into the public forum of an art exhibition, there is no redress under the current laws of the State of New York.” It is doubtful that the Appellate Division will have a different view of the case, but we’ll see.

Image is Goat on a Ledge in Aruba,, courtesy of Flickr user Serge Melki pursuant to a CC BY 2.0 license.

 

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Marvel Wins Copyright Suit Against Jack Kirby’s Heirs

September 5, 2013 · by ·

2708971745_a4680c8f56Jack Kirby needs no introduction to comic book lovers, as he is, according to the Second Circuit decision I am commenting today, “considered one of the most influential comic book artists of all time.”

Here are the facts of the case. In September 2009, the four children of Jack Kirby served Marvel, the comic book publisher, with termination notices, seeking to terminate all grants of copyright for works made by their father for Marvel before January 1, 1978, and any grants of copyright made prior to that date for a stated future date.

The works at stake were made between 1958 and 1963, and featured famous characters such as Spider Man, Hulk, or the Fantastic Four. Marvel and Kirby had executed a written agreement in 1972, which assigned to Marvel “any and all right, title and interest [Kirby] may have or control” in the work he had created for Marvel. Kirby also acknowledged that all the work he did for Marvel was done as an employee of Marvel.

Section 304(c) of the Copyright Act indeed gives authors and their heirs the right to terminate a grant of copyright fifty-six years after the original grant, unless another agreement to the contrary does exist.  However, grants in works made for hire cannot be terminated.

Marvel filed suit in January 2010 seeking the court to declare that the Kirbys had no right to terminate the transfers, as the works in contention were works-for-hire in which Marvel holds the copyright. Defendants filed a motion to dismiss the complaint, which was denied by the Southern District of New York (SDNY) on November 22, 2010.

The SDNY then granted summary judgment to Marvel on July 28, 2011, finding that the works at stake were indeed works-for-hire within the meaning of the Copyright Act of 1909, and that thus the termination notices did not convey the copyright in these works back to the Kirbys.

The heirs appealed to the Second Circuit, and on August 8, 2013, the Court affirmed the judgment as to two of the Kirbys and vacated the judgment as to the two siblings over which the SDNY had no personal jurisdiction. However, the Second Circuit did not find that they were indispensable parties to the suit under Fed. R. Civ. P. 19, and thus that the suit did not have to be dismissed in its entirety.

When are Works-Made-for-Hire?

Jack Kirby drew many comics for Marvel between 1958 and 1963. At this time, the copyright law was the Copyright Act of 1909, which still applies to all works published before January 1, 1978. Under the 1909 Act, an employer who hired someone to create a copyrightable work is the author of the work. However, the 1909 Act did not define what is an ‘employer’ or even a ‘work-for-hire,’ and that task fell to the courts.

In the Second Circuit, courts apply a two-pronged test, the “instance and expense” test, to determine if a work is made for hire under the 1909 Act. Under this test, the copyright belongs to the person at whose “instance and expense” the work was created. The hiring party induces the creation of the work and has the right to direct and supervises the manner the work is carried out (Martha Graham School and Dance Foundation. v. Martha Graham Center of Contemporary Dance, 2d Cir. 2004, at 635).

However, the Second Circuit noted that “inducement” or “control” may be so incidental that the copyright does not belong to the hiring party, and states that whether the test is indeed conclusive depends on what was the creative and financial arrangement between the parties for each case.

The “Marvel Method”

In this case, the SDNY explained how Stan Lee, the Marvel editor from sometimes in the 40’s until the early 1970’s, devised the “Marvel Method” during the 50’s. Before that, Lee prepared detailed scripts, featuring panel-by-panel breakdown of the stories that comic artists had to follow.

In order to accelerate the comics production, Lee stopped writing these detailed outlines to favor instead “plotting conferences” with the artists, where the plot for new stories where discussed. Lee and other Marvel artists testified that Lee described the plot to the artist during the conference. Lee then edited the work and added dialogues and captions. He also retained the right to approve the final work or to reject it altogether. This method allowed Lee to work with several artists simultaneously.

Kirby did not work without having received an assignment from Lee. However, evidence in the record showed that Kirby was given a somewhat freer hand, that is, was given more general instructions, not page-by-page instructions.

The Kirby’s works were created at Marvel’s instance

An employer may well direct and supervise an independent contractor, not only an employee, as courts focus on whether the hiring party had the right to control and supervise the work, that is, had the power to accept, reject, or modify the work.

In this case, the SDNY had found that there was a presumption that the works at stake had been created at Marvel’s ‘instance. The Second Circuit was of the same opinion, noting that Kirby’s works for Marvel from 1958 to 1963 “were hardly self-directed projects,” but, rather, that Kirby “created the… works pursuant to Marvel’s assignment.”

The Kirby’s works were created at Marvel’s expense  

There is an almost irrebutable presumption under the test that any person who paid another to create a copyrightable work is the author of the work.

Kirby paid for his own supplies, worked at home, and did not receive any benefits from Marvel. He was paid at a page rate multiplied by the number of pages, but never received royalties for his work.

However, Marvel argued successfully that it took the financial risks involved with publishing the works, and thus the works had been created at its expense. The Kirbys argued in front of the Second Circuit that it was instead their father who had taken the financial risks, by working and providing supplies without knowing for sure if his work would be accepted by Marvel. This argument did not convince the Second Circuit, as Marvel and Kirby had a standing engagement, where Kirby produced works following Marvel’s specs.

The Second Circuit found that Marvel had satisfied the instance and expense test, and that Kirby’s heirs failed to rebut the work-for-hire presumption. Therefore, the Second Circuit affirmed the judgment of the SDNY for the two parties under its jurisdiction.

The money interests at stake in this suit were high. Disney bought Marvel in 2009 for four billion dollars and has since released several movies about famous Marvel characters. It joined Marvel to defend the suit. Spider Man is now a Broadway play. A movie featuring the Thor character is scheduled for release next November.

Image is Spiderman for a day, courtesy of Flickr user chispita_666 pursuant to a CC BY 2.0 license.

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Filed Under: Copyright ·

Nikita and Natasha

August 21, 2013 · by ·

loveThe Seventh Circuit affirmed on July 17 a judgment of the Northern District of Illinois which had dismissed a copyright infringement suit brought against Elton John over his “Nikita” song by Guy Hobbs, an amateur songwriter.

Hobbs wrote the lyrics of a song, “Natasha,” inspired by a brief relationship he had in the Eighties with a Russian woman while working on a cruise ship. He registered the copyright for the lyrics in the U.K. in 1983, and, in 1984, forwarded the lyrics to be considered for publishing to Big Pig, a music publisher. Neither Big Pig nor any other music publisher ever published these lyrics.

In 2001, Hobbs read for the first time the lyrics of the song “Nikita,” written by Elton John and long-time collaborator Bernie Taupin, which had been copyrighted by Big Pig in 1985. Hobbs contacted the authors of the Nikita song, and since, according to the N.D. of Illinois, “has consistently communicated with [Elton John and Bernie Taupin] and their attorneys demanding compensation for the unauthorized use of his lyrics.”

Hobbs eventually filed suit for copyright infringement in April 2012. On October 29, 2012, the N.D. of Illinois granted defendants’ motion to dismiss in its entirety. Hobbs appealed, but the Seventh Circuit affirmed. Here are a few of the reasons Hobbs was not successful.

Titles Not Protected by Copyright

While the titles of both songs, “Nikita” and Natasha,” are somewhat similar, titles are not protected by copyright. The N.D. Court of Illinois had taken care to note that other songs sharing the same titles could be found when searching the Copyright Office’s database. Even if both titles contain a Russian name starting with “N” and ending in “A”, these elements are commonplace.

Ideas Are Not Protected By Copyright

Plaintiff argued in front of the N.D. Court of Illinois that both songs had for theme an impossible love between a Westerner and a Communist woman during the Cold war. But, as noted by the Seventh Circuit, “the Copyright Act does not protect general ideas, but only the particular expression of an idea.” 17 U.S.C. § 102(b) clearly states that “[i]n no case does copyright protection for an original work of authorship extend to any idea…”

The N.D. Court of Illinois had noted that the Cold War love affair has been for decades a common theme in songs, books, and movies. Indeed, if the theme of the western man in love of with a woman living beyond the Iron Curtain could be protected by copyright, French singer Gilbert Bécaud would have prevented all further songs using that theme, when he released his hit, Nathalie, in 1964, complete with an early “video clip” featuring the chanteur visiting Moscow in the company of a guide with almond-shaped pale eyes.

I mention the color of the guide’s eyes in the Bécaud’s clip, as plaintiff in Hobbs argued in front of the N.D. Court of Illinois that “a postal theme” and “references to a woman’s pale eyes” are protected by the Copyright Act. But the court’s lapidary answer was that such themes are “rudimentary, commonplace and standard under the scènes à faire doctrine.”

This is the doctrine under which scenes which “have to be done” are not protected copyright. Such scenes and themes, which are a necessary part of a work, are merely ideas. The Seventh Circuit quoted its own 2003 Bucklew v. Hawkins case, where it explained the doctrine of scènes à faire as meaning that “a copyright owner can’t prove infringement by pointing to features of his work that are found in the defendant’s work as well but that are so rudimentary, commonplace, standard, or unavoidable that they do not serve to distinguish one work within a class of works from another.”

Unique Combination

Even though individual elements were not protectable by copyright, Hobbs argued that the selection, arrangement and protection of these unprotectable elements constituted a “unique combination” which can be protected by copyright. The N.D. Court of Illinois rejected that argument as, in Peters v. West, the Seventh Circuit had held in 2012 that if parts of the works are not protectable by copyright on their own plaintiff cannot claim copyright infringement for the whole work. Hobbs only relied on the “unique combination” theory on appeal. But the Seventh Circuit held that there was not infringement as “even when the allegedly similar elements between the songs are considered in combination, the songs are not substantially similar” and thus the court did not need to decide if plaintiff’s argument was indeed correct.

The Two Songs are Not Similar

Instead, the Seventh Circuit reviewed the case de novo to find out whether both songs were substantially similar, which would then permit to infer that the defendant has copied the original work. When having to rule whether a particular work infringes another one, judges are looking at whether the allegedly infringing work is not substantially similar to the original work, meaning that they “do not share enough unique features to give rise to a breach of the duty not to copy another’s work,”Peters at 633-34.

The Seventh Circuit did not find that the two songs were similar. First,they do not tell the same story. In “Natasha,” the two lovers had a brief romance, but their relationship was doomed because “a Ukraine girl and a UK guy just never stood a chance.” Instead, the “Nikita” song is about a relationship that never could happen because Nikita lives on the other side of the wall, and thus the protagonist of the song “will never know how good it feels to hold [Nikita].”

Also, the expressions used in both songs are not similar. Natasha has “pale blue eyes,” Nikita has “eyes that looked like ice on fire.” Natasha never sent a Valentine to her lover, whereas the singer in Nikita does not know if the letters he sends to Nikita are even received.

Hobbs also contended that both songs used the word “never,”,the phrase “to hold you,” the phrase “I need you” and some form of the phrase “you will never know.” This argument was not conclusive either. As any regular listener of hit parades would know, these phrases were and are used regularly (too regularly? ) in pop songs, and the Seventh Circuit even noted that “[r]epetition is ubiquitous in popular music.”

As the songs were found not “substantially similar,” the Seventh Circuit concluded that there was no copyright infringement.

Image is Love courtesy of Flickr user  Alberto Garcia pursuant to a CC BY-SA 2.0 license.

 

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New York Senator Asks FTC to Allow Consumers to Opt Out of Store Tracking Programs

July 31, 2013 · by ·

tracksI wrote a post yesterday on The Secure Times Online Forum, the online forum of the American Bar Association Section of Antitrust Law’s Privacy and Information Security Committee.

It is about the press conference held by Senator Charles Schumer (D-NY) last Sunday  in Manhattan, where he called on the Federal Trade Commission  to allow consumers to opt out of being tracked while visiting retail stores.

Senator Schumer suggested that the FTC should require retailers to inform consumers about their opt-out option by sending an electronic notice to their smartphones before starting to track them.

Senator Schumer also sent a letter to Edith Ramirez, the FTC chairwoman, asking the FTC to investigate this practice which he called unfair and deceptive.

 

Image is tracks courtesy of Flickr user  John-Morgan pursuant to a CC BY-SA 2.0 license.

 

 

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A Ballot Initiative Seeks to Add a Right to Privacy in PII to the California Constitution

July 30, 2013 · by ·

privacyI wrote a post yesterday on The Secure Times Online Forum, the online forum of the American Bar Association Section of Antitrust Law’s Privacy and Information Security Committee.

It is about a recent ballot  initiative in California which seeks to have voters decide whether a right to privacy in personally identifiable information (PII) should be added to the California Constitution.

 

 

 

 

 

Image is privacy courtesy of Flickr user  doegox pursuant to a CC BY-SA 2.0 license.

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French Designer Isabel Marant Gains Rights to Delete Infringing Listing from Third Party Site

July 25, 2013 · by ·

French fashion designer Isabel Marant has been steadily gaining international notoriety over the last decade. Some of her designs, such as the low cowboy boots, are particularly recognizable. Her special collection for H&M will be sold in November.

She is also savvy at starprotecting her intellectual property. Her group (Marant Group) recently resolved a dispute with the U.S. site iOffer.com by a settlement agreement which has been approved by the Paris Court of First Instance (scroll down for the English version of the agreement).

iOffer describes itself as “a place to buy, sell, & trade… allow[ing] buyers and sellers to negotiate to buy and sell items in an interactive and open format.” It offers trading services, but does not market or sell goods itself.

According to the agreement, the Marant Group contacted iOffer in November 2011 asking it to remove from its site items which allegedly were counterfeiting Isabelle Marant’s trademarks. The site quickly responded to the Marant Group asking for the URLs of the allegedly infringing listings, so they could be disabled.

However, in June 2012, the M. group brought proceedings against iOffer before the Paris Court of First Instance, apparently stating that the site was favoring the distribution and sale of counterfeit products infringing on the M. Group’s rights.

While the case was pending, the parties reached an amicable solution, and the settlement was approved by the Court on June 20, 2013.

Under the terms of the settlement, iOffer grants access to its site to the Marant Group’s designated agent, by granting him user name and password. According to the agreement, the agent will thus be able to delete, using a simplified notification procedure, any listing he would consider as infringing on the Marant Group’s rights. These withdrawals will be made under the sole responsibility of the Marant Group.

iOffer has also put in place two alerts on the key words “lsabel Marant ” and “Marant,” so that the agent can be informed by email if new listings are published using these keywords.

This case is an interesting example of active international enforcement of a fashion designer’s intellectual property rights. U.S. law does not protect fashion designs by copyright, as they are considered “useful articles” by the Copyright Act, and U.S. copyright does not protect useful articles. However, U.S. trademark law may offer protection, such as in the Isabel Marant case. Indeed, the trademarks “Isabel Marant” and “Isabelle Marant Étoile” are protected by U.S. trademarks.

Also, trade dress can be registered as a trademark. Trade dress is not necessarily a dress ;), although BCBG is successful protecting Hervé Léger’s ‘bandage dress’ by trade dress. Trade dress can also protect shoes, bags, or other fashion goods. However, because the purpose of a trademark is to identify and distinguish goods and to indicate the source of the goods, a trade dress must be distinctive, meaning that consumers recognize a particular company as the source of the product. In other words, you see a pair of shoes, and you know they are designed by a particular fashion designer (the source of the product).

Image is  Étoile filante // Shooting star courtesy of Flickr user  Stéfan pursuant to a CC BY-SA 2.0 license.

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Summer Reading :)

July 10, 2013 · by ·

photo

The New York State Bar Association has published a new book, In the Arena, A Sports Law Handbook.

The book features 15 chapters each presenting a particular topic. I had the pleasure writing its chapter 14, An Introduction to European Union Sports Law.

Other chapters deal with the law of mascots, right of publicity, or collective bargaining. You can find the table of contents here.

 

 

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Filed Under: Sports Law ·

Big Data and Privacy at the American Bar Association

June 24, 2013 · by ·

bdI will be presenting next Friday the part on privacy and Big Data in this  CLE webinar presented by the American Bar Association: The Big Data IP Problem: Big Issues for “Big Data.”

From the program description:

The program will explore the ways that “big data” enhances and impedes innovation, the privacy issues it creates, and the viable solutions to creating a more secure system of compiling data.

 

 

Image is no Spin-Torque MRAM courtesy of Flickr user jurvetson pursuant to a  CC BY 2.0 license.

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How to Tweet an Endorsement

May 29, 2013 · by ·

EndorsementSocial media is now an effective medium for advertising campaigns, as consumers forsake television for their computers, tablets and smart phones. Many marketers choose to launch a ‘word of mouth’ marketing campaign on social media site and encourage users to discuss a particular product or service.

However, such messages are not always a spontaneous publication of one’s opinion. Influential users or celebrities with many ‘followers’ on Twitter are sometimes approached by marketing agencies to promote a particular product or service to their audience. It they act on behalf of the advertiser or one of its agents, the tweets they post about the particular product/service ‘endorses‘ the service or product of the advertiser.

An Ad Must not be Unfair or Deceptive

For the Federal Trade Commission (FTC), such tweets are advertisements. Under the Federal Trade Commission Act, the FTC has the power to prevent unfair or deceptive acts and practices affecting commerce. An advertisement must not be unfair or deceptive, and advertisers must have evidence to back up their claims. An ad is deceptive if it misleads consumers or if it affects their behavior or their decisions about the product or service advertised.

The platform used to advertise does not matter, whether it is a billboard on Times Square or a 140-character tweet, and the same rules must be followed.

The FTC Updated its Dot Com Disclosures

When the FTC “Dot Com Disclosures Guidance” (the Dot Com Guidance) was first published in 2000, social media sites were not around, and people still used their phones well, to make phone calls. Now, 67% of US Internet users are using social networking sites, according to a recent survey by the Pew Research Center, and, according to a Comscore report, smartphones reached a 50-percent market penetration in 2012.

It is therefore welcome that the FTC updated in March the Dot Com Guidance which now explains how to ‘make effective disclosures in digital advertising,’ and applies to offline and online commercial mediums. There is much to say about the updated Dot Com Guidance but, on this post, I will concentrate on endorsements via Twitter.

 General Rules About Endorsement

An endorsement is a particular type of advertising. The FTC updated in 2009 its Guides Concerning the Use of Endorsements and Testimonials in Advertising (the Endorsement Guides) but did not change the definition of an endorsement.

Under the Endorsement Guides, 16 C.F.R. Part 255.0b, an endorsement is:

“… any advertising message … that consumers are likely to believe reflects the opinions, beliefs, findings, or experiences of a party other than the sponsoring advertiser, even if the views expressed by that party are identical to those of the sponsoring advertiser. The party whose opinions, beliefs, findings, or experience the message appears to reflect will be called the endorser and may be an individual, group, or institution.”

So what is important is the subjective view of what a consumer may see as reflecting somebody’s opinion on whether a particular statement reflects the personal view of the endorser or is an ad.

The Guides also addressed the application of Section 5 of the FTC Act to endorsements and testimonials in advertising. Such endorsements and testimonials must not be deceptive, and they also must “reflect the honest opinions, findings, beliefs, or experience of the endorser.”

In order for such endorsements not to be deceptive, it is sometimes necessary to publish a disclosure. Disclosures must be clear and conspicuous, and that comes with some challenges when using Twitter.

How to Disclose an Endorsement on Twitter

If an endorsement is not disclosed, then the ad is deceptive and unfair. Therefore, it is very important that a Twitter user being paid by an advertiser to post a certain message discloses such relationship.

A disclosure must be disclosed in every tweet, as a Twitter user reading his timeline would not necessarily view the sponsored tweets one after another, as other tweets may be come between other tweets (see Dot Com Guidance p. A-19).

During a Twitter chat, an attorney from the FTC answering questions from the public about the Dot Com Guidance said that putting  #ad, ‘ad’ or ‘sponsor’ on a tweet would adequately disclose that a particular tweet is sponsored. #Spon is however not an appropriate way to disclose an endorsement, as consumers might not understand this hashtag as meaning that the message is sponsored by an advertiser.

Also, posting the disclosure on a website and linking to this site from the post is not sufficient, because some consumers may not click on the link.

How to Disclose a Disclaimer on Twitter

Disclosure of additional information may be necessary to prevent a tweet from being deceptive or unfair. If a tweet warrants a disclaimer, then that disclaimer must be included in the tweet. Merely adding a link to the disclaimer is not enough. The tweet must state the disclaimer, so that consumers understand that the link is a disclaimer. The Dot Com Guidance gave as an example a fictitious tweet  which adequately disclosed both the fact that the tweet by an user was an ad (Ad) and that the weight loss experienced by the user was not typical (Typical loss: 1lb/wk), see Dot Com Guidance p. A18.

One must remember that the Dot Com Guidance is a compliance document, not a law, and was only published to inform. It should not even be viewed as a safe harbor from liabilities, but mere guidance.

 

Image is no endorsements courtesy of Flickr user sookie pursuant to a  CC BY 2.0 license.

 

 

 

 

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Filed Under: Social Media Law, Uncategorized ·

Appropriation Art and Fair Use

May 24, 2013 · by ·

fair useThe US Court of Appeals for the Second Circuit issued last month an important decision for artists. The Andy Warhol Foundation, which had filed a brief of amicus curiae in favor of Prince, stated that it “does not object to other artists building freely on Mr. Warhol’s work in the creation of new art, because it recognizes that such freedom is essential to fulfilling copyright’s goal of promoting creativity and artistic expression.“

At issue was whether Richard Prince’s artwork had made fair use of Patrick Cariou’s copyrighted photographs.

Patrick Cariou published in 2000 a book, Yes Rasta, which featured photographs taken during his 6-year long stay in Jamaica. Richard Prince used some of these photographs to create his Canal Zone series.  Prince enlarged the Cariou photographs and sometimes cropped them. He also painted over on some of the faces and bodies of the subjects of the photographs, but used some of the Cariou photographs almost entirely. Prince did not seek licensing nor did he ask Cariou for permission to use his work.

Canal Zone was exhibited at the Gagosian Gallery in New York, and the gallery also published and sold a catalog for this exhibition reproducing the Richard Prince’s artworks.

Cariou sued both Prince and the Gagosian Gallery for copyright infringement, and the defendants raised a fair use defense. Fair use is an affirmative defense to a claim of copyright infringement. The United States District Court for the Southern District of New York (SDNY) found in 2011 that the use by Richard Price of photographs taken by Cariou to create his Canal Zone series was not fair use. It consequently ordered all infringing copies of the series to be delivered so that they can be destroyed. Defendants appealed.

The Second Circuit held on April 25 that the SDNY had applied the incorrect standard to determine whether Prince’s use of Cariou’s work was fair use, and concluded, after extensive analysis of the paintings, that all but five of Prince’s works made fair use of the original works. The Court remanded to the SDNY to decide whether Prince is entitled to a fair use defense for these five works as well.

What is Appropriation Art?

As noted by the Second Circuit, “Prince is a well-known appropriation artist” and quotes a definition of the Tate Gallery of appropriation art as “the more or less direct taking over of work of art a real object or even an existing work of art.”

The Gagosian Gallery describes Prince’s way to work as “[m]ining images from mass media, advertising and entertainment” adding that “Prince has redefined the concepts of authorship, ownership, and aura.”

Another artist using such techniques, Jeff Koons, was also the defendant in several fair use cases. In Blanch v. Koons, the Second Circuit held in 2006 that the use by Jeff Koons of a copyrighted fashion photograph in his collage painting, Niagara, was fair use.

Fair Use Defense

As noted by the Second Circuit in its Blanch v. Koons decision, referring to such art as ‘appropriation art’ may be unfortunate in a legal context. Indeed, copyright law provides copyright owners exclusive rights in their works, and appropriation of a copyrighted photograph to create a new work may or may not be fair use. In practice, it means that the outcome of a fair use case is difficult, if not impossible to predict.

So, what is fair use? The Copyright Act, 17 U.S.C. § 107, provides a fair use  limitation on copyright owners ‘rights, and provides four non-exclusive  factors that courts must follow in order to find out, case by case, if a particular use of a protected work is fair. These four factors are:

1)      The purpose and character of the use (the transformative use, the commercial use)

2)      The nature of the copyrighted work

3)      The amount and substantiality of the portion used in relation to the copyrighted works as a whole

4)      The effect of that use on the market

The SDNY had found that none of these four factors supported a finding of fair use in favor of the defendants.

I will discuss the fair use factors in the order used by the Second Circuit.

First Factor: What is Transformative Use?

The Supreme Court explained in the 1994 Campbell v. Acuff-Rose case what constitutes transformative use. The new work adds something new, and alters the original work while adding a new expression or message. Even if it is not necessary that the use be transformative to find fair use, the Supreme Court noted that “[s]uch transformative works lie at the heart of the fair use doctrine.”

The SDNY interpreted transformative use as meaning that the new work has to comment on the original work, and that if Prince’s works would “merely recast, transform, or adapt the [Cariou] [p]hotos,” they would be infringing. Prince had testified that he did not intend to comment on the original work of Cariou, nor even on “the broader culture,” and thus the SDNY concluded that the first factor weighted against the Defendants.

However, the Second Circuit found that, because the new work does not necessarily have to comment on the original work in order to be transformative, the SDNY had applied an incorrect legal standard. Instead, the Second Circuit stated, quoting Campbell, that the “new work generally must alter the original with “new expression, meaning or message.””

The Second Circuit found than most of the Prince works added something new to the plaintiff’s photographs and “presented images with a fundamentally different aesthetic.”

First Factor: The Commercial Use

The SDNY also found that the Defendant’s use of the Carious’s photos was “substantially commercial” as Gagosian sold paintings from the Canal Zone series for a total of $ 10,480,000.00, traded some for other works of art at an estimated value of $6 million to $8 million, and also sold catalogs of the exhibition. However, the Second Circuit, while noting that Prince’s works are indeed commercial, did not give much significance to it, as his work was transformative enough to make the issue of commercial use insignificant.

Fourth Factor: The Effect on the Market

As Prince’s work is highly transformative, it did not usurp the primary or derivative market for Cariou’s work. The record shows that Cariou had not marketed his work “aggressively.” He earned about $8,000 in royalties from the sale of his Yes Rasta book, and only sold four prints of the photographs. Also, the potential buyers of Prince’s works are not the same than Cariou’s works. The Second Circuit noted for instance that Jay-Z and Angelina Jolie were invited to the opening diner of the Canal Zone show at Gagosian.

Second Factor: The Nature of the Work

The defendants had unsuccessfully argued in front of the SDNY that Cariou’s works were merely compilations of facts about Jamaican Rastafarians, and thus not protected by copyright. The Second Circuit pointed out that it is undisputed that Cariou’s work is creative. However, as Prince’s work used it for transformative purpose, this factor has limited, if any use.

Third Factor: The Amount of the Use

While some of the original photographs of the Yes Rasta book can easily be recognized in the Canal Zone series, others are hardly identifiable as in, for instance, James Brown Disco Ball (you can see it here).  However, the photograph taken by Cariou of a man looking at the camera from a three quarter angle is easily recognizable in Graduation, in spite of the addition of a guitar and the paint over the face.

Even copying the entirety of a work may be fair use. The SDNY found that Prince had taken more of the Cariou work than necessary, but the Second Circuit points out it is not required by law to only take what is necessary, and, in any case, it could not understand how the SDNY had actually come to that conclusion.

The Second Circuit engaged in its own pictorial analysis, and came to the conclusion that twenty five of Prince’s photographs transformed Cariou’s work “into something new and different,” but that Graduation, Meditation, Canal Zone (2008), Canal Zone (2007) and Charlie Company were not transformative enough, and remanded to the SDNY to determine if these five works are indeed transformative.

Judges as Art Experts?

Senior Circuit Judge Wallace, from the Ninth Circuit, sitting by designation, concurred with the majority that the SDNY had applied an incorrect legal standard. However, he dissented in part as, he believed that the whole case should have been remanded to the SDNY so that the lower court could analyze all the paintings using the proper standard, after new evidence is presented. Judge Wallace regretted that the Second Circuit judges used their own artistic judgment to determine whether the works were transformative or not.  Fair use is a mixed question of law and fact. Therefore, each fair use case requires extensive analysis of the works of both plaintiff and defendant, even to the point as making a judgment of the worthiness of a particular work. This is troubling, and Justice Holmes famously wrote in the 1903 case Bleistein v. Donaldson Lithographing Co. that “[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations.”

The image is my own play with a photography from the Yes Rasta book… Yes, it was a wise choice to go to law school, not art school…

 

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