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

September 30, 2016 · by ·

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

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

Elements of a Copyright Infringement Suit

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

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

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

No Substantial Similarity in the Visual Elements

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

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

Not the Same Aesthetic Feel

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

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

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

No Substantial Similarity in the Auditory Elements

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

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

Not the Same Total Concept and Overall Feel

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

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

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

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

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

Trailer, Movie, Album

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

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

This post was originally published on the 1709 Blog.

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Monkey Business (Law): A TTLF Post

April 8, 2016 · by ·

The infamous monkey selfie is quite an interesting copyright case. I wrote about it in the latest issue of the Transatlantic Technology Law Forum (TTLF) newsletter. The blog post is here. What is the case about?

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A human photographer set a camera in a reserve in Indonesia. A macaque named Naruto clicked the button while looking at the camera. A beautiful selfie is taken. Who owns the copyright of this photograph? Is the selfie in the public domain? Does the human photographer own the copyright? Or does Naruto own it?

The human photographer published a book featuring the selfie, along with other pictures taken by Naruto. The People for the Ethical Treatment of Animals (PETA) filed a complaint against him and the publisher, acting on behalf of the monkey. PETA lost the case.

Naruto had argued that he had:
“the right to own and benefit from the copyright in the Monkey Selfies in the same manner and to the same extent as any other author. Had the Monkey Selfies been made by a human using Slater’s unattended camera, that human would be declared the photographs’ author and copyright owner. While the claim of authorship by species other than homo sapiens may be novel, “authorship” under the Copyright Act, 17 U.S.C. § 101 et seq., is sufficiently broad so as to permit the protections of the law to extend to any original work, including those created by Naruto.”

Alas! Animals have no standing under the Copyright Act, meaning they cannot filed a copyright infringement suit (or any other lawsuit for that matter.) In Cetacean Community v. Bush, the Ninth Circuit Court of Appeals held that “if Congress and the President intended to take the extraordinary step of authorizing animals as well as people and legal entities to sue, they could, and should, have said so plainly.”

But that does not necessary mean that the human photographer owns the copyright in the selfie. The selfie is probably in the public domain in the U.S., but may not be in the European Union.

Image is courtesy of Flickr User Carine06 under a CC BY-SA 2.0 license.

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Be Mindful of Your Ability to Copy Street Art

February 2, 2015 · by ·

This blog post was originally published on The 1709 Blog. 

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

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

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

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

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

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

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

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

 

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Three’s Company and Four Fair Use Factors

September 3, 2014 · by ·

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

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

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

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

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

(2) the nature of the copyrighted work;

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

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

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

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

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

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

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

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

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

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

 

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

CC BY-ND 2.0)

 

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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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