New York City Accessory Company Files Trade Dress Infringement Suit to Protect its Bucket Bag

March 18, 2016 · by ·

On March 10, Mansur Gavriel, a New York City fashion accessory company founded in 2012 by Rachel Mansur and Floriana Gavriel, filed a trade dress infringement, unfair competition, deceptive trade practices and trade dress dilution suit against several Italian companies, claiming that they are manufacturing, distributing and selling knock-offs of several of Plaintiff’s models, including its famous MG bucket bag. I will only address the trade dress infringement claim in this blog post.

To establish a claim for unregistered trade dress infringement, a plaintiff must demonstrate that the claimed trade dress (1) is distinctive, (2) is nonfunctional and that (3) its imitation would likely cause confusion for consumers as to the source of the product.

Bucket Bag

Can a bag be protected by trade dress?

A bag can be protected by trade dress, a form of trademark. For instance, the trade dress of Hermès Birkin bag is a registered trademark and so is Longchamp’s foldable bag. To be protected by trade dress, the product must be able to indicate its source, just as a trademark does. This means that when a consumer sees the product, he must be able to recognize which company put it on the market. Mansur Gavriel claims this is the case for their bucket bag and related products.

This is how the complaint describes the MG bucket bag:

“(1) a bag constructed from two pieces of leather that are cut, folded, and sewn to create a design that is clean and crisp, structured and sleek, rigid and minimalist in design, (2) contrasting interior and exterior colors, (3) minimal stitching and hardware, (4) a brand logo in small metallic font centered at the front bottom of the bag, (5) a drawstring closure cinched through openings with no hardware or very subtle hardware, and (6) a long adjustable strap with flat construction and subtle metal detailing.”

As such described, Mansur Gavriel claims that the bucket bag can serve as an indication of origin: you see this bag in a store, you immediately know it is a Mansur Gavriel bag, not, say, a Kate Spade or a Coach bag.

To be protected by trade dress, the bag must be distinctive.

Section 2 (f) of the Lanham Act provides that a descriptive mark can be registered if it “has become distinctive of the applicant’s goods in commerce.” To be protected by trade dress, a bag must be inherently distinctive or must have acquired secondary meaning. However, inherently distinctive trade dress is not required to prove secondary meaning, see Two Pesos, Inc. v. Taco Cabana, Inc., 505 US 763, 774. A trade dress may be registered or unregistered. Masur Gavriel has not registered the trade dress of its bags.

Mansur Gavriel claims in its complaint that the trade dress of the MG bucket bags and the trade dress of its associated bags and related goods are inherently distinctive, non-functional, and have acquired secondary meaning. The complaint further claim that this “unique and distinctive trade dress” extends to the other associated Mansur Gavriel bags and accessories, which also bear a combination of these features.

If the case goes to trial, Mansur Gavriel will have to prove that the bags are inherently distinctive or have acquired secondary meaning. It could do so by showing evidence of the length of use, how much they spend on advertising, their promotion expenditures, media coverage, and sales figures. Plaintiff indeed argues in the complaint that it “has acquired substantial public recognition and good will” for its MG bucket bag, associated bags, and accessories, and further claims that these bags are “instantly recognizable to the public.”

To be protected by trade dress, the bag must be non-functional.

To be protected under section 43(a) of the Lanham Act, trade dress must not be functional, Qualitex Co. v. Jacobson Products Co., 514 US 159,165. In Qualitex, the Supreme Court explained that a product feature is functional, and thus cannot be a trademark, “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,” meaning that the “exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” Therefore, functionality is available to Defendants as a defense.

Defendant could thus argue that what Plaintiff claims to be trade dress are instead functional elements of the bags, which are essential to their use and purpose, or affect their costs. For instance, Defendants could claim that preventing them from not using metallic grommets affects the cost of manufacturing a bucket bag. Also, they could claim that a drawstring closure is what defines a bucket bag, a bag which has a history, as its popularity has come and gone in the last one hundred years or so. Defendants should be well inspired to study closely this chapter of fashion history, and to find historical examples of the use of the same features they used to create their own bags.

Infringement: Plaintiff needs to show confusion.

Since a bag protected by trade dress is recognized by the public as designating its source, a trade dress is infringed by a similar product which creates consumer confusion, which is a “false designation of origin” under Section 43(a) the Lanham Act.

The complaint offers a side by side comparison of Plaintiff’s bucket bag, tote, wallet backpack and lady bag, and the Schöneberg bags which are manufactured and sold online by Defendants, and alleges that Defendant’s bags “are nearly identical to and are colorable imitations of Plaintiff’s unique, distinctive MG [b]ucket [b]ag [t]rade [d]ress.

The complaint further alleges that Defendants’ bags are “likely to continue to cause confusion in the marketplace.” However, the complaint does not list any instances of such confusion.

Several fashion accessories companies have successfully protected their products lately by claiming trade dress infringement, such as Adidas or Christian Louboutin. This new case is thus interesting to keep on our watch list.

Image is courtesy of Flickr user Geroithe Chia under a CC BY-SA 2.0 license.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Fashion Law, Trade Dress, Trademark ·

Update: Pro Bono

March 18, 2016 · by ·

Journalists are pillars of our democracies, and many of them are performing their duties in difficult, if not dangerous conditions. It takes courage to be a journalist. You can be hurt. You can be sued.

But it takes money to go to court. This is why I admire the Media Legal Defence Initiative’s commitment to providing legal help for journalists, bloggers, and independent media all around the world, as legal costs should not be a worry for journalists and citizen journalists, alike on trial for doing their jobs. MLDI fulfills this mission by providing journalists access to pro bono attorneys, by paying their legal fees if necessary, and by helping building stronger cases by filing amici curia briefs.

photo

One of these cases is Butkevich v. Russia, which is currently pending at the European Court of Human Rights in Strasbourg.  Applicant Maksim Butkevich, a Ukrainian journalist, was covering a protest which took place during the 2006 G8 Summit in St Petersburg. Applicant claims that he was arrested by the Russian police while taking pictures, even though he had complied with the order to stop taking photographs and even though he showed his press-card to the police. He was convicted of having participated in an unauthorized march and sentenced to two days of detention which he served.

Mr. Butkevich is asking the court to rule that his arrest was unlawful, that he did not receive a fair trial, and that his freedom of expression as protected by Article 10 of the European Convention on Human Rights has been violated.

MLDI has filed their comments on this case with the European Court of Human Rights, jointly with Mass Media Defence Centre and ARTICLE 19.

I had the pleasure to be able to provide MLDI, pro bono, some input about how French press law deals with journalists working on protests.

See MLDI press release here.

Image is courtesy of Flickr user Pierre-Selim under a CC-BY-SA 2.0 license.

 

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Free Speech ·

Hoops, Tattoos, and Video Games

March 16, 2016 · by ·
Football season ended in the U.S. and baseball season (alas!) has not started yet. Basketball season is in full bloom (go Knicks!), but will end in the Spring. People are filling now their NCAA brackets.

But basketball fans may assuage their end-of-season blues by playing basketball video games all year long. These games features digital versions of the current players, and thus are regularly updated. Last fall, video game company 2K Games, Inc. (2K) released the 2016 version of its annual basketball video game, NBA 2K16. Four million copies were sold its first week on the market.

hoops
The game reproduces the likeness of basketball players. Some of them, LeBron James, Kobe Bryant, Eric Bledsoe, DeAndre Jordan, and Kenyon Martin sport tattoos in real life, and their digital representation sport the same tattoos in the NBA 2K16 game, as they already did in the NBA 2K14 and the NBA 2K15 games.

The design of these tattoos had been created by several artists who later signed licensing agreements with Solid Oaks Sketches, LLC. (Solid Oaks). Following the release of the NBA 2K14 and NB 2K15, Solid Oaks engaged in a negotiation with 2K in July 2015, in anticipation of the September release of NBA 2K16, as it believes that, by reproducing the tattoos in its video games, 2K infringed Solid Oaks ’copyright.

The negotiation fell through and, on February 1, 2016, Solid Oaks filed a copyright infringement suit in the Southern District of New York (SDNY) against 2K, game publisher Take Two, and game developer Visual. The case is Solid Oaks Sketches, LLC. V. Visual Concept, LLC and 2K Games, Inc., and Take Two Interactive Software, Inc., 1:16-cv-00724.

Are Tattoos Protected by Copyright?

The designs at stake are all registered with the Copyright Office, as tattoo artworks. What about the real tattoos?

Plaintiff argues that tattoos are protected by copyright, as they are “pictorial, graphic, and sculptural works” under17 U.S.C. §102(a) (5). Plaintiff also argues that tattoos are fixed in a tangible medium of expression, noting that “the tattoos designs are imprinted permanently upon the skin of humans, clearly stable and able to be perceived for much more than a transitory duration” (at 28). Tattoos also satisfy the “minimal degree of creativity” requirement set by the Supreme Court in Feist Publications, Inc. v.  Rural Tel. Serv. Co.

Plaintiff cites an article by Yolanda M. King, The Challenges Facing Copyright Protection for Tattoos to support its claim but notes, however, that “[t]he issue of tattoo copyrightability has yet to be decided upon in court due to numerous settlements preventing a final judicial opinion.”

It seems that tattoos may be  protected by copyright. Is there a defense available to the Defendants?

Possible Defenses: Fair Use and De Minimis

Fair use is a defense to a copyright infringement claim, and the SDNY would look at the four fair use factors, (1) purpose and character of the use, (2) nature of the copyrighted work, (3) amount and substantiality of the portion used in relation to the copyrighted work as a whole and (4) effect of the use upon the potential market for or value of the copyrighted work to find whether the use of the tattoos was fair.

Defendants in this case could certainly claim that the amount taken in relation to the video game was small enough to be fair. They could even claim that the use of original work was so little that it does not even warrant a review by the court, as de minimis non curat praetor, the court does not concern itself with trifles.

However, plaintiff took care to note in the complaint that “On social media, 2K has promoted the improved tattoo customization as a major feature in the game” (at 15) and that “Game reviewers praised NBA 2K16’s improved visuals, which included smoother looking character models and more individualized tattoos” (at 16), and so probably stands ready to argue that the use was significant, both quantitatively and qualitatively.

A Possible Defense: Terms of Players’ Contracts with Their Tattoo Artists

Did the players themselves have a licensing contract with the tattoo artists who applied the designs at stake on their bodies?

Indeed, sports agents should be well advised to explain to their clients that sporting one or more tattoos may impede their ability to monetize their image. While his tattoos make LeBron James an even more interesting player, having a court find out that their reproduction infringes the right of a third party would rather complicate the drafting of a (lucrative) agreement to license his image.

Should players be advised to secure the exclusive right of their tattoos before going under the inky needles? An author has argued for the need of an implied license.

It has been reported in 2013 that the National Football Association Players Association advised agents to recommend that their clients secure a release from the tattoo artist, and even to track down the artists who have done their previous tattoos to secure such release as well. This advice was given following the Whitmill vs. Warner Bros. Entertainment Inc., 11-cv-00752 (E.D. Mo.) case, where the tattoo artist who had created the highly original tattoo sported by Mike Tyson filed a copyright infringement suit to prevent the release of The Hangover2, where actor Ed Helms sports a similar tattoo.

The National Basketball Players Association will probably issue similar advice following the 2K Games copyright infringement complaint, if it has not done it already. Meanwhile, many IP attorneys are hoping the 2K16 case will not settle, so that the SDNY will have an opportunity to rule on whether tattoos in general, and tattoos reproduced in video games in particular, are indeed protected by copyright. It should not be a slam dunk case (sorry).

Photo is courtesy of Flickr user Chili Head under a CC BY 2.0 license.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Copyright, Sports Law ·

Defectum Humoris non Curat Lex: The Law Does Not Reward a Lack of Humor

February 22, 2016 · by ·

4003298384_46dd8c3f28_z (2)Plaintiffs in two recent Intellectual Property cases were urged from the bench to have a little bit more humor.

In the first case, Louis Vuitton Malletier, S.A. (Vuitton) sued My Other Bag, Inc. (MOB) for trademark infringement, trademark dilution, and copyright infringement in the Southern District of New York (SDNY). MOB moved for summary judgment and Judge Furman from the SDNY granted the motion on January 6, 2016.

MOB sells canvas tote bags printed with “My Other Bag…” on one side and drawings of luxury handbags, on the other. One of MOB’s bags features a drawing of a Louis Vuitton bag.The handbag at stake reproduced an image drawn to evoke a Louis Vuitton monogram bag, but which did not faithfully reproduce it. For example, the monogram of the MOB bag bears ‘MOB’ initials, not ‘LV’ as in the luxury bags.

Tara Martin, the founder of MOB, testified that the name of her company, “My Other Bag,” was inspired by the “My other car is [insert luxury car]…” bumper stickers often seen on the well-worn bumpers of beaten up or inexpensive cars. Judge Furman wondered if Plaintiff was “perhaps unfamiliar with the “my other car” trope. Or maybe it just cannot take a joke.”

Vuitton claimed the bag diluted its trademark by blurring , but the Judge Furman held that the MOB bags do not dilute the Louis Vuitton trademark by blurring, neither under the Lanham Act, 15 U.S.C. § 1125(c), nor under New York General Business Law § 360-l. Dilution by blurring has been defined by the Second Circuit as “the gradual diminishment of a famous mark’s acquired ability… to clearly and unmistakably distinguish one source through unauthorized use,” Hormel Foods Corp. v. Jim Henson Prods., Inc. The New York statute does not require the allegedly blurred mark to be famous.

Fair Use Defense to Trademark Dilution Claim

The Trademark Act provides for a fair use defense, as 15 U.S.C. § 1125(c)(3) provides that “[a]ny fair use … of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with… identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner” is not dilution by blurring or by tarnishment.

While the Trademark Act does not define “ parody,” the Fourth Circuit defined it, in a case where Louis Vuitton was also the Plaintiff, as the juxtaposition of “the irreverent representation of the trademark with the idealized image created by the mark’s owner, ”Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC.

Judge Furman found that the MOB bag parodied Louis Vuitton bags and was therefore protected by fair use. The MOB bags clearly indicate to the ordinary observer “that the defendant is not connected in any way with the owner of the target trademark.” Judge Furman reasoned that this is precisely what MOB is conveying, by using the well-worn “my other car is [luxurious and expensive]” joke to convey that MOB bag is not a Vuitton bag, and further noted that

“That joke — combined with the stylized, almost cartoonish renderings of Louis Vuitton’s bags depicted on the totes — builds significant distance between MOB’s inexpensive workhorse totes and the expensive handbags they are meant to evoke, and invites an amusing comparison between MOB and the luxury status of Louis Vuitton.

And the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton’s sense of humor (or lack thereof) does not delineate the parameters of its rights (or MOB’s rights) under trademark law”

While New York law does provide a fair use defense, the SDNY considered that since New York anti-dilution law is “substantively similar” to federal law, both claims “may be analyzed together,” and noted that “courts have held that when a defendant establishes fair use for purposes of federal law, related state law claims also fail.“

No Infringement of Foot Bag Champion Right of Publicity

In another case, Martin v. Living Essentials, LLC, the holder of the world record for the most consecutive hacky sacks (a sort of footbag) kicks sued the maker of a five-hour energy drink. Martin claimed that Defendant’s commercial infringed his right of publicity rights under the Illinois Right to Publicity Act (IRPA) and also was false advertising under the Lanham Act, 15 U.S.C. § 1125. The commercial featured an actor pretending that Defendant’s energy drink had allowed him, in the last five hours, to perform such diverse feats as disproving the theory of relativity, swimming the English Channel (and back!), finding Bigfoot, and mastering origami while beating “the record for Hacky Sack.”

Judge John J. Tharp, Jr. from the Northern District of Illinois, started his order dismissing plaintiff’s claim with an Oscar Wilde quote: “It is a curious fact that people are never so trivial as when they take themselves seriously.”

Judge Tharp found the IRPA claim to be time-barred and dismissed it, but nevertheless discussed the claim and found it would not have succeed even if Plaintiff’s claim had not been time-barred.

Defendant had argued that it had not used Plaintiff’s name or likeness in its commercial. However, this argument alone was not enough to dismiss the claim, as the IRPA broadly defines “identity” as “any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener.” Being the holder of a footbag record is indeed part of Plaintiff’s identity.

But Judge Tharp found that the phrase used in the commercial, “the record for Hacky Sack,” does not identify Plaintiff, as it is “far too ambiguous to do so.” Judge Tharp pointed out that there are several other records listed as Footbag Guinness World Record, which Plaintiff himself admitted, thus “effectively conced[ing] the ambiguity of a reference to “the Hacky Sack record.”

But the most conclusive argument in favor of dismissing the case was that the commercial was meant to be a joke, and that the outrageous claims made by the actor “[were] not intended to be taken as true.” Judge Tharp also pointed out that the commercial includes a disclaimer, and portrays someone who not only holds a footbag record, but is also a physics genius, accomplished hunter, swimmer and origami master, which Plaintiff does not claim to be.

Judge Tharp concluded:

“To the maxim de minimis non curat lex, then, let us add a complementary proscription: defectum humoris non curat lex—the law does not reward humorlessness. Martin’s premise that the Commercial exploits his identity because someone might believe that the actor (or whoever he portrays) actually broke Martin’s record depends on an interpretation so blind to its comedic nature that it is unreasonable and therefore beyond the law’s protection.”

Plaintiff’s claims for false advertising claim under the Lanham Act also failed because the commercial is

“an obvious farce that would not lead anyone to believe that Martin, or anyone else, had actually accomplished all of the remarkable feats described. Even unsophisticated consumers would get the joke.”

Therefore, there could not have been any consumer confusion, and the commercial is “better described as farce than mere puffery—upon which no reasonable consumer would rely.“

The judges in these two cases pointed out that Plaintiffs lacked a sense of humor. But they also assumed that consumers (us!) generally have enough sense of humor as not to be confused as to the source of a product, or to the identity of a person. The law assumes that the average consumer has a sense of humor. It is comforting to know.

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

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Fashion Law, Right of Publicity, Trademark · Tagged: ,

Selfie, Privacy, and Freedom of Speech Collide in France

February 19, 2016 · by ·

On December 12, 2015, Brahim Zaibat, a dancer and choreographer, posted on social media a selfie he had taken two years ago, showing him in an airplane, just a seat behind the one where Jean-Marie Le Pen, the honorary president of the French National Front, had fallen asleep.

Mr. Zaibat wrote under the selfie: “Put them KO tomorrow by going to vote. To preserve our fraternal France !!! ” Mr. Zaibat was referring to the second round of France’s regional elections, which were to take place the next day, on December 13, 2015, as the National Front, a party on the far right, was leading in the first round of the election in six of the thirteen French regions.17431042963_bd7983b82d_o

Mr. Le Pen took umbrage at this photograph as he considered it to be an infringement of his privacy and of his right to his image (droit à l’image). He sued Mr. Zaibat on December 31, 2015, and asked the Tribunal de Grande Instance (TGI) of Paris, sitting in emergency, to order the selfie to be taken down from the social media site, to order the publication in several magazines of a message informing the public about this judicial measure, and to order Mr. Zaibat to pay a provisional fine of 50,000 euros.

Mr. Zaibat argued in defense that ordering his selfie to be removed would undermine his freedom of expression as protected by article 10 of the European Convention on Human Rights (ECHR). According to Mr. Zaibat, he had “not overstepped the limits of freedom of expression, in a humorous way, in the context of a political debate on a topic of general interest.” For Mr. Zaibat, the selfie was a photograph taken in public, which represented, in a humorous way, a politician whose party was then in the spotlight.

But the judge, quoting both article 9 of the French civil Code, and article 8 of the ECHR, both protecting privacy, considered that the selfie indeed had violated Mr. Le Pen’s privacy and the right to his image. But she considered that since the selfie was “neither degrading nor malicious,” it was appropriate to award the politician only one euro compensation. However, the judge forbade Mr. Zaibat to republish the photograph under penalty of 1,000 euros per infringement.

Mr. Zaibat has appealed the interim order.

No legal definition of privacy

Article 9 of the French civil Code provides that “[e]veryone has the right to respect for his private life” but it does not define what privacy is. Similarly, article 8 of the ECHR guarantees the right to respect for private life, without defining that concept. In 1970, the Parliamentary Assembly of the Council of Europe defined the right to respect for privacy in its declaration on mass communication media and human rights, Resolution 428, as “consist[ing] essentially in the right to live one’s own life with a minimum of interference” which includes “non-revelation of irrelevant and embarrassing facts, unauthorized publication of private photographs.”

Freedom of expression

Article 10 of the ECHR protects freedom of expression, which may nevertheless, under Article 10-2 of the Convention, “be subject to such formalities, conditions, restrictions or penalties as are prescribed by law and are necessary in a democratic society.” The Court interpreted this text in 1979, in Sunday Times v. The United Kingdom, as requiring that such measures necessary in a democratic society must correspond to a pressing social need, which must be proportionate to the legitimate aim pursued. Furthermore, the reasons given by the national authorities to justify such measures must be relevant and sufficient (see Sunday Times v. The United Kingdom § 62).

The difficult balance between freedom of expression and protection of privacy

The selfie violates the privacy of Mr. Le Pen. But does his right to privacy necessarily prevail over the right of Mr. Zaibat to express himself and over the public’s right to be informed?

It can be argued that a public person has the right to fall sleep on an airplane without having his picture taken and the photo published. Mr. Le Pen had argued in court that Mr. Zaibat was not a political debater or a comedian, but a dancer, and thus could not avail himself of free political expression, but that he had “in fact expressed himself as a private citizen and had simply taken advantage of the political agenda to create some “buzz ” by broadcasting a stolen photograph taken two years before.” But freedom of opinion belongs to everyone, dancers, politicians, and media.

In a recent judgment, Couderc and Hachette Filipacchi Associés v. France, the Grand Chamber of the European Court of Human Rights unanimously held that France had violated Article 10 of the ECHR when interfering in 2005 with the right of weekly magazine Paris Match to publish photos of the then secret son of Prince Albert of Monaco.

In Couderc, the Court observed that “[t]he right to the protection of one’s image is… one of the essential components of personal development. It mainly presupposes the individual’s right to control the use of that image, including the right to refuse publication thereof” (Couderc § 85).

The Court added:

“In determining whether or not the publication of a photograph interferes with an applicant’s right to respect for his or her private life, the Court takes account of the manner in which the information or photograph was obtained. In particular, it stresses the importance of obtaining the consent of the persons concerned, and the more or less strong sense of intrusion caused by a photograph… In this connection, the Court has had occasion to note that photographs appearing in the “sensationalist” press or in “romance” magazines, which generally aim to satisfy the public’s curiosity regarding the details of a person’s strictly private life… are often obtained in a climate of continual harassment which may induce in the person concerned a very strong sense of intrusion into their private life or even of persecution” (Couderc § 86).

What about the picture taken by Mr. Zaibat? Does it represent Mr. Le Pen in his private life or in his public life? Mr. Le Pen is a public person. The photo was taken in a public place, an airplane, without the subject of photography being harassed. All persons in the aircraft could see Mr. Le Pen asleep in his seat, if passing by him in the aisle. But does the public have the right to know that he was asleep in this plane?

The judge took the position to subjectively define privacy as the sphere that the person herself defines when determining what can be disclosed by the press.

“In accordance with Article 9 of the Civil Code and Article 8 of the [ECHR] every person, regardless of his reputation, has a right to privacy and is entitled to get protection by setting herself what may be disclosed by the press. ”

But this is an “extreme” conception of privacy according to three law professors (Traité du Droit de la Presse et des Medias, Bernard Beignier, Bertrand De Lamy, and Emmanuel Dreyer, paragraph 1589). The authors note that this conception allows an individual to “oppose any publication even in the presence of a legitimate public interest.” According to the authors, this conception of privacy is “not viable.”

In a case with facts somewhat similar to ours, François Hollande, then First Secretary of the French Socialist Party, was photographed in 2006 while on vacation, in a market in the South of France. The photos were published in a weekly magazine which illustrated them with humorous comments referring to current events. Mr. Hollande sued the magazine for invasion of privacy. The Cour de Cassation, France’s highest civil court, ruled on October22, 2007, that the photos indeed had interfered with the privacy of Mr. Holland:

“Whereas the limits of the protection afforded by article 9 of the civil Code can be interpreted more widely in respect of persons performing official and public functions, the information revealed in this case are not directly related to the political functions exercised by the applicant as the photographs were taken on the occasion of a private activity carried out during his vacation; these elements are therefore not within a legitimate public information, despite the humorous reference in the article to the next organization by François Hollande of a conference on the purchasing power of the French.

Did Mr. Zaibat participate in a debate of general interest by publishing the selfie? In its judgment in Von Hannover v. Germany (n. 2), the European Court of Human Rights explained that:

“an initial essential criterion is the contribution made by photos or articles in the press to a debate of general interest… the definition of what constitutes a subject of general interest will depend on the circumstances of the case“ (Von Hannover v. Germany (n. 2) § 109).

Yet, after its Couderc case of November 2015, the European Court of Human Rights seems to tip the balance in favor of freedom of expression. However, the French courts are often more favorable to the protection of privacy. Stay tuned…

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

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: Free Speech, Privacy, Right of Publicity, Uncategorized · Tagged: , , , ,

Changes Ahead in U.S. Copyright Statutory Damages Law

February 18, 2016 · by ·

The U.S. Department of Commerce’s Internet Policy Task Force  (the Task Force), which is led by both the U.S. Patent and Trademark Office (USPTO) and the National Telecommunications and Information Administration (NTIA), published on January 28 a  White Paper on Remixes, First Sale, and Statutory Damages which addresses three issues:

  • 1) the legal framework for the creation of remixes;
  • 2) the relevance and scope of the first sale doctrine in the digital environment; and
  • 3) the application of statutory damages in the context of individual file-sharers and secondary liability for large-scale online infringement.

The Task Force had published a Green Paper, “Copyright Policy, Creativity, and Innovation in the Digital Economy” on July 31, 2013, which had identified these three issues warranting further review by the Task Force.

The Task Force then published a Notice in the Federal Register seeking comment on these issues. It conducted a public meeting in December 2013 and also held roundtables around the U.S., before reviewing comments from stakeholders as diverse as rights holder organizations, Internet-based companies, public interest groups, libraries, academics, and individual authors and artists.

Remixes

Remixes use existing works, some of them still protected by copyright, to create new works, which may be compilations or derivative works under the Copyright Act, or collective works.  As noted by the Task Force, user generated content (“UGC”) “has become a hallmark of the Internet” (p.6).

Some of the remixes, such as fan fiction and fan videos, are created by non-professionals, while others, such as music mashups, are created by professionals and may even be sold. Several stakeholders noted that “the lines between amateur and professional, and between noncommercial and commercial, are often blurred” (p. 7). Others noted that “noncommercial activities can cause harm to the market for the original work or for licensed derivative works” (p.8).

Some remixes are fair use, some are not, and determining what is fair use or not is not easily determinable, even by attorneys or by courts, as noted by some stakeholders (p.10). The Copyright Office maintains an online fair use index to help determine whether a particular use may be fair or not, but this tool alone does not provide an absolute determination of whether a particular use is fair or not.piano rolls

The Task Force did not believe that a compulsory license, such as the one provided by section 115 of the Copyright Act for phono records, would be advisable. At the time this compulsory license was enacted, one company had the monopoly on the piano roll market, and the Task Force has not seen evidence that a similar monopoly exists today for remixes or their licensing.

Also, such compulsory licenses would allow the creation of derivative works, whereas statutory licenses now only permit reproducing, distributing, and public performance of the licensed work, without alteration (p. 26). While the Task Force acknowledged that remixes are “valuable contributions to society… the record has not established a need to amend existing law to create a specific exception or a compulsory license for remix uses” (p. 4).

Instead, the Task Force recommends three goals to be pursued so that remixers would understand when a use is fair or not, and to understand how to obtain licenses.

These three goals are:

  1. developing negotiated guidelines which would provide greater clarity as to the application of fair use to remixes;
  2. expanding the availability of a wider variety of voluntary licensing options; and
  3. increasing educational efforts aimed at broadening an understanding of fair use.

The guidelines could be developed independently or with the collaboration of the government (p. 28) and should be written in language easily understandable by the general public (p.29). The White Paper notes that such guidelines already exist, such as the Principles for User Generated Content Services which aims at “foster[ing] an online environment that promotes the promises and benefits of UGC Services and protects the rights of Copyright Owners.”

As licensing would remain voluntary, authors and rights holders would have the option to refuse granting a license, “especially when the prospective licensee is seeking permission for a use that the author or rights holder considers offensive” (p. 30).

A stakeholder gave the example of the Beatles Hey Jude song used to create an Anti-Semitic work (see note 44 of the White Paper). But such hateful use would probably be fair use, and protected by the First Amendment. Only granting authors a moral right would allow them to bar every use they find offensive. By the way, what is “offensive”?  The Beatles example would be considered offensive by many, if not all, but what about use of a protected work to comment on issues where opinions diverge more, such as political opinions?

First Sale Doctrine

The Task Force noted that works distributed online are often licensed, not sold, and “this could make the resale market obsolete” (p. 35). Some stakeholders noted that the contractual terms of such licenses are often “opaque” (p.39).

Libraries expressed concerns that their use of digital works may be limited, including eBook library loans (p. 47). Indeed, libraries may only lend books thanks to the first sale doctrine, but the Task Force believes that “early government intervention into the eBook market could skew the development of innovative and mutually beneficial arrangements” between eBook publishers and libraries. However, this may change if libraries are not able to “appropriately serve their patrons due to overly restrictive terms imposed by publishers” (p.4).

In order to preserve the first sale doctrine in the online environment, the Task Force believes it is not advisable to extend the first sale doctrine to digital transmissions of copyrighted works, because of the risks that would cause to copyright owners’ primary markets.

The Task Force noted that digital works are offered at lower prices than the hard copies of the works and thus deliver the benefit offered by the first sale doctrine to consumers who may purchase used books and used copies of protected works at a lower price (p.58).

While consumers are not allowed to resell their digital copies, “[i]t is difficult… to determined the value of this lost benefit” as the Task Force does not have “sufficient data to conduct an authoritative  cost-benefit analysis of the trade-offs between the consumer benefits from the first sale doctrine and from licensed online services”(p. 59).

So U.S. law is not (yet) ready to authorize the resale of digital goods.

Statutory Damages

Statutory damages have been applied against individuals sharing files online and against online services found to be secondarily liable for such infringements. Remix artists often refrain from using a protected work, even they believe their use is fair, as fair use can not be accurately predicted and “the threat of high statutory damages can stifle lawful activity” (p.33). Some stakeholders also argued that statutory damages have a chilling effect on innovation and investment (p.80), an assessment disputed by some right holder groups (p. 81).troll

Statutory damages have also allowed the development of a noxious “business model” of massive copyright infringement suits (aka copyright trolls), which abuse the litigation process by filing hundreds of boilerplate copyright infringement suits, using the subpoena power of the courts to find the identity of Internet users. These suits are, however, rarely litigated, but instead are settled after intimidating correspondence (p. 74).

The Task Force recommends three amendments to the Copyright Act so that the needs of copyright owners, users, and intermediaries may be better balanced:

First, the Task Force recommended that Congress add a new paragraph in Section 504 of the Copyright Act to provide a list of factors for courts and juries to consider when determining the amount of a statutory damages award. It proposed the insertion of this new clause in subsection Section 504(c): (p.87)

FACTORS TO CONSIDER — In making any award under this subsection, a court shall consider the following nonexclusive factors in determining the appropriate amount of the award:

(1) The plaintiff’s revenues lost and the difficulty of proving damages.

(2) The defendant’s expenses saved, profits reaped, and other benefits from the infringement.

(3) The need to deter future infringements.

(4) The defendant’s financial situation.

(5) The value or nature of the work infringed.

(6) The circumstances, duration, and scope of the infringement, including whether it was commercial in nature.

(7) In cases involving infringement of multiple works, whether the total sum of damages, taking into account the number of works infringed and number of awards made, is commensurate with the overall harm caused by the infringement.

(8) The defendant’s state of mind, including whether the defendant was a willful or innocent infringer.

(9) In the case of willful infringement, whether it is appropriate to punish the defendant and if so, the amount of damages that would result in an appropriate punishment.

The Task Force explained that these factors “should be weighted holistically” (p. 88).

Secondly, the Task Force recommended amending Section 401(d) and 402 (d) of the Copyright Act to expand eligibility for the lower “innocent infringement” statutory damages awards (p. 97).

Thirdly, the Task Force recommended giving courts discretion to assess statutory damages other than on a strict per-work basis in cases of non-willful secondary liability for large scale online services (p. 97).

Small Claims Tribunal

The Task Force is also in favor of establishing a small claims tribunal, as it believes this “could help diminish the risk of disproportionate levels of damages against individual file-sharers” (p.5). This has been proposed by the Copyright Office itself.

The tribunal would be centralized, in a single location, and would provide for a cap on awards of both statutory and actual damages. There would be limited discovery and counterclaims, and all relevant defenses could be asserted, including fair use. Also, it would not be mandatory to be represented by an attorney, and the tribunal could award costs and fees against frivolous litigants (p. 99). This is a very interesting proposal and I hope it will be implemented soon.

This post was first published on The 1709 Blog.

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

Only Thing That Counts is… Fair Use?

February 11, 2016 · by ·

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

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

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

This Time, It May Not Be Fair Use

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

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

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

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

In Cariou, the Second Circuit explained:

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

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

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

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

A Lucrative Business, Thanks to Copyright

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

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

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

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

This post was first published on The 1709 Blog.

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

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

The Paris Court of Appeals Gives Freedom of Expression the Ax in Favor of Droit Moral

February 10, 2016 · by ·

The Paris Court of Appeal recognized on October 13 that the opera Le Dialogue des Carmélites, as staged by Dmitry Chernyakov for the Opera of Bavaria in 2010, had violated the moral rights of the composer and the librettist. The music for the Dialogue des Carmélites was written by Francis Poulenc and its libretto adapted the eponymous theatrical work of Georges Bernanos.

The opera tells the story of a young French aristocrat, Blanche de la Force, who is painfully shy and fearful. As the French Revolution is about to start, she decides to become a Carmelite, or rather, to seek refuge in a convent. After the Carmelites are forbidden by the revolutionaries to be nuns and are ordered to go back to their civil life, they take a vow of martyrdom. Blanche flees the convent. The nuns are later arrested and sentenced to death.
In the last scene of the opera, which is the only scene in contention in this case, the Carmelites go one by one to the scaffold, while singing Salve Regina, a choir which decreases voice by voice after the sound of the ax, repeated regularly by the orchestra, indicates that the blade of the guillotine has cut off yet another head. Blanche suddenly appears at the scene, serene, just before the last nun, the young Constance, is about to be guillotined. Constance dies knowing that Blanche has been able to overcome her fears. The opera ends with Blanche calmly climbing the steps to the scaffold while singing the Veni Creator, and dying. The orchestra then plays again the opera’s motif, first played in its opening, albeit more plaintively this time. The whole scene is chilling.nun

Dmitry Chernyakov chose to place the action of the opera in the contemporary world, not during the French revolution. There is no guillotine in the last scene, and the nuns are instead held prisoners in a shed, waiting to be gased. Blanche suddenly arrives at the scene, albeit not to share the nun’s martyrdom, but to save them one by one, each of the rescues being punctuated, rather oddly, by the sound of the guillotine. Blanche then goes back inside the shed which explodes, killing her. It is unclear whether it is an accident or a suicide.

The heirs of Poulenc and Bernanos, as holders of their moral rights, brought an action in France against the director, the editor of the DVD of the opera, published in France, and the Munich Opera in the person of the Länder of Bavaria. They argued that the staging transformed the end of the work so much that it had distorted it and thus had violated the moral rights of the authors. Under Article L. 121-1 of the French intellectual property code, authors of an original work have a moral right over it, which is perpetual and transferable upon death.
The Tribunal de Grande Instance in Paris rejected the request of the heirs in 2014, concluding that the changes made by the staging were not a distortion violating the moral rights of the authors.

On appeal, by the heirs, the Länder of Bavaria argued that neither the libretto nor the music had been changed, and that only the staging, as performed by the singers during the last scene of the opera, had been modified. The Länder further argued that Mr. Chernyakov’s staging had conferred to the work “a more universal significance and is consistent with the spirit of the original work, since it respects its essential theme, which is hope.” One of the DVD producers argued that the appellants themselves had recognized in their conclusions that neither the libretto nor the music had been modified by the staging, and, that therefore, “the debate is outside the moral right and the legal debate, but is about the interpretation of the work and the artistic and historical controversy.”

The Court of Appeal stated:

“that if some freedom can be granted to the director performing his staging, this freedom is limited by the moral rights of the author and respect for his work, his integrity and his mind, and that this should not be distorted.”

The Court of Appeals admitted that the final scene of the opera as directed by Mr. Tcherniakov does not change the dialogue which is not even spoken during the final scene, nor the music, as the orchestra dutifully played each sound of the falling guillotine even though there was no guillotine on stage. However, the Court noted that these changes are “enigmatic or incomprehensible, or imperceptible to the neophyte.”

For the Court, even if Mr. Tcherniakov’s staging respected the central themes of the opera, which are hope, martyrdom and the transfer of grace, “it profoundly changes the end of the story as intended by [the authors] (…) and is the climax of the story, magnified in Poulenc’s opera, where text and music come into perfect harmony.” The Court of Appeals concluded that the staging had distorted the spirit of the work.

The sale of the DVD is now banned in France, but the heirs have not obtained the complete prohibition of the representation on other stages. This must be welcomed, as it would be dangerous for freedom of expression, particularly freedom of artistic expression, if moral rights could thus become a universal instrument of censorship.

This post was originally published on The 1709 Blog.

Facebooktwitterredditpinterestlinkedinmailby feather
Filed Under: French Copyright · Tagged: , , ,

New York State Still Does Not Recognize Post Mortem Right to Publicity

July 21, 2015 · by ·

A New York Senate bill, S560-2015, introduced in May by State Senator John A. DeFrancisco, would provide a post mortem right of publicity to deceased New Yorkers’ estates for seventy years after their death. The bill explicitly refers to these rights as personal property, which can be freely transferrable or descendable, and thus are more akin to intellectual property rights than privacy rights. The Senate bill is the same as New York House bill A7904-2015 . It would be retroactive and “deemed to have existed at the time of death of any individual who died seventy years prior to the effective date of this [law.]”252919487_b6da302500_z

S550-2015 would introduce an article 3-A to New York civil rights law (NYCRL): the new section 32 of NYCRL would forbid the use in New York, for commercial purposes, of the persona of any deceased individual without first obtaining the written consent of the person or persons owning more than fifty percent of the deceased person’s publicity rights. Even though the justification of the bill notes that the “bill provides for a “right of publicity” for deceased personalities,” (my emphasis) the bill only mentions “deceased individuals,” defined as “any natural person who died a domiciliary of the State of New York on or after, or within seventy years prior to the effective date of [the law.]” and so it seems that everybody, famous or unknown, would benefit from this right.

Bill Drafted to Respect First Amendment

However, no consent would be required if the use is not an “advertisement, endorsement or solicitation for the sale of purchase of a product, article or merchandise, good or service, other than for the work itself and the work does not contain an image or likeness that is primarily commercial, not transformative and is not otherwise protected by the First Amendment of the United States Constitution or New York State Constitution” (Section 34).

The bill lists uses protected by the First Amendment. They are: “a play, book, graphic novel or other literary or theatrical work; a work of political or newsworthy value concerning public interest, including a television broadcast or an article, editorial or commentary in a magazine, newspaper, newsletter or other periodical; an original musical composition, musical sound recording or other similar musical work; or an original work of fine art or a work of fine art reproduction.”

A “work of fine art” is broadly defined by Section 30-5 as “a visual rendition including, but not limited to, a painting, drawing, sculpture, mosaic, videotape or photograph; a work of calligraphy; a work of graphic art including, but not limited to, an etching, lithograph, serigraph, or offset print; a craft work in materials including, but not limited to, clay, textile, fiber, wood, metal, plastic or glass; or a work of mixed media including, but not limited to, a collage, assemblage, or work consisting of any combination of [work of fine arts as defined in Section 305]”.

Therefore, artists would be authorized to use the likeness of a deceased personality to create new works, and the list of what would be considered to be fine art is an open one. The bill uses the soon to be archaic “videotape” word, which could, however, be interpreted as encompassing digital videos and probably even holograms. Reviving dead celebrities by holograms is becoming a lucrative commercial venture, but artists could also create holograms of deceased celebrities.

A Broad (Overbroad?) Definition of Persona

The bill defines “persona” as “the name, portrait, picture, voice, signature, photograph, image, likeness or distinctive appearance, gesture, mannerisms or other indicia of a deceased individual” (Section 30-4). This definition of persona is broader than the current definition by NYCR §50 of what is protected by New York right to publicity, that is, an individual’s name, portrait or picture. Readers of the IPKat blog may remember that Lindsay Lohan tried last year to convince a New York court that a video game had infringed her rights to publicity when depicting a blonde woman making the “V” sign, as Ms. Lohan is sweet on doing. But this pose is favored by many teenagers and teenagers alike when taking selfies. Would such a pose be considered a “mannerism an “indicia” protected by the post mortem right to publicity?

No Moral Rights

The bill does not provide any moral right, and this is not surprising as the U.S recognizes only very limited moral rights. Not providing moral rights is, of course, protective of freedom of expression, yet may lead to tensions and possibly lawsuits if a use, otherwise authorized by the new law, would be considered by the right holders as tainting the memory of the deceased. Such tainted use could be pornographic or presenting ideas which were repulsive to the celebrity during her lifetime. However, such uses would likely to be found protected by the First Amendment, unless commercial.

As the New York Senate has concluded its business for its 2015 regular session, this bill will not be enacted this year. It is not the first time that a New York bill providing for a post mortem right to publicity has failed to be enacted, but as some celebrities are now earning millions of dollars years after their demise, New York is likely to eventually join California and other the states which already have post mortem right to publicity statutes. Let’s wait and see what 2016 will bring in Albany.

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

This post was originally published on The 1709 Blog.

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

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

July 14, 2015 · by ·

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

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

Posting on Social Media as Vicarious Infringement

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

Retweeting as Contributory Infringement

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

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

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

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

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

 

This blog post was originally published on The 1709 Blog.

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