Upcoming Sale of An Empowering NFT

The New York Times recently published an article about the upcoming auction of Buying Myself Back: A Model for Redistribution’, a nonfungible token (NFT) to be auctioned by Christie’s on May 14.

Buyers purchasing an NFT become owners of a digital good, which can be an image, as is A Model for Redistribution, a video, or even a music album, all sold in the form of a unique blockchain digital token.

Such tokens are non-fungible, meaning they are unique and cannot be exchanged for their equivalent. Interestingly, works which were not originally digital, such as this photograph of Keith Haring, may be made an NFT, thus reaching new markets and increasing their value, as NFT technology makes a work verifiably unique. Scarcity enhances values and then artists, or content owners may benefit.

This new technology is not confined to the art world. The NBA introduced its Top Shot marketplace where fans can buy NFT videos of their favorite players, thus buying a licensed video, just as, not a long time ago it seems, fans collected trading cards of their favorite players. A paper trading card featuring Lebron James recently sold for $5.2 million, setting a record. NBA NFT, while not (yet) as pricey, are not cheap either. It remains to be seen, however, if the market will remain strong allowing for NFT high prices to hold.

The NFT market is new and evolving: Everydays: The First 5000 Days, a NFT digital collage created by Beeple, was sold last March by Christie’s for 69,346,250 US dollars. However, some NFTs can be purchased for a reasonable price. The buyer must, however, have a bitcoin wallet to pay for the purchase. Even Christie’s accepted to be paid in bitcoins for the sale of Everydays: The First 5000 Days.

Blockchain technology also ensures the authenticity of the work and records its provenance. Art historians compiling catalogues raisonnés of NFT artists will be able to rely on blockchain technology to establish the provenance of the work. A NFT may be copied easily, as it is a digital work, but the original work will be the only one with a blockchain, thus authenticating ownership and provenance.

Christie’s explains that the token “reinstates Ratajkowski’s agency over her own image by allowing her access to its monetary and symbolic value, both of which she and other women in similar professions have too often been deprived.”

The Buying Myself Back: A Model for Redistribution NFT has an interesting story. It features a photograph of fashion model Emily Ratajkowski in front of a work by Prince’s featuring her, which was part of the New Portraits exhibition at the Gagosian Gallery in 2014. Prince reproduced Instagram posts on canvas, after adding a comment or two under the post using his own Instagram account. This method of creating a piece of art did not fare well with one of the original artists (see here).

The title of the work sold by Ms. Ratajkowski alludes to an essay she wrote, Buying Myself Back, published last September by New York Magazine and was widely shared, where she describes how she came into possession of the Prince work, including having to buy it back from a former boyfriend. She also described a 2012 photo session where she posed nude, after which some polaroids taken at the session became part of a book published without her permission.

Ms. Ratajkowski wrote the essay after being sued for copyright infringement in October 2019 by photographer Robert O’Neil after the model had posted on her Instagram account a photograph O’Neil had taken of her in the streets of New York. Her image, his copyright (allegedly at least, the case is ongoing).

Announcing the sale of Buying Myself Back: A Model for Redistribution on her Instagram account, Ms. Ratajkowski wrote:”

The digital terrain should be a place where women can share their likeness as they choose, controlling the usage of their image and receiving whatever potential capital attached. Instead, the internet has more frequently served as a space where others exploit and distribute images of women’s bodies without their consent and for another’s profit.”

She explained further in a Twitter post that

using the newly introduced medium of NFTs, [she] hoped to symbolically set a precedent for women and ownership online, one that allows for women to have ongoing authority over their image and to receive rightful compensation for its usage and distribution.”

Christie’s describes the work as a “conceptual work.” Considering this statement from a copyright point of view, we ask : is the work protected by copyright?

Starting with basic concepts of copyright law, only works fixed in a “tangible medium of expression… sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration” are protected by copyright.

As such, a NFT can be protected by copyright, because it is fixed in tangible medium of expression and can be communicated for more than a transitory period of time, even though Christie’s “lot essay” explains that Ms. Ratajkowski “employ[s] the NFT as a tradeable metaphor for that which has no physical embodiment.”

A work must also be original to be protected. It is probably original enough to be protected, especially considering that it is original to have the model of a painting pose in front of it.

The work is a derivative work of the original Prince’s work, which itself reproduced a photo which copyright he did not own. As Prince claims fair use, the copyright owner of Buying Myself Back: A Model for Redistribution, in the unlikely event h/she would be sued by Prince, could also claim fair use.

What about copyright’s ownership? The original owner is likely to be the person who took the photograph, but Ms. Ratajkowski may have acquired the right.

As a note, merely creating an NFT from an original work is unlikely to be considered derivative work protected by fair use. A NFT Jean-Michel Basquiat’s drawing was recently withdrawn from sale because the seller did not own its copyright nor a copyright license. Similarly with the recent sale of a Bansky NFT, the buyer would have been given the right to destroy the sale, a move which would not have violated the Visual Artists Rights Act of 1990 as it protects certain works of art only during the lifetime of the artist (this contrasts greatly with, say, French law, which recognizes that moral rights are perpetual…).

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Oh, the Places You’ll Go! (Or Maybe Not)

The US Court of Appeals for the Ninth Circuit held on December 18, 2020, that the Oh, the Places You’ll Go! comic book infringed the rights of the owner of the Oh, the Places You’ll Go! Dr Seuss book as it is not fair use.

The case is  Dr. Seuss Enterprises, L.P. v. Comic Mix LLC.

Appellant is Dr. Seuss Enterprises (DSE) which holds the copyright to the works of Theodor S. Geisel, aka “Dr. Seuss,” including his final book, Oh, the Places You’ll Go!  (Go!) and runs a product licensing and merchandising program. The Ninth Circuit noted that “Dr. Seuss” was the top licensed book brand in 2017, and a popular choice as graduation present.

Appellee Comic Mix developed and published the Oh, the Places You’ll Boldly Go! book (Boldly) which is a mash-up of the Dr. Seuss book and Star Trek, using elements from each of works. “Mash-up” refers to a work created from combining elements of others works but is not a legal term. If a mash-up uses elements protected by copyright, it may not be infringing if it is fair use. Comix Mix did not seek to obtain a license from DSE, nor did it obtain authorization to use elements of Go!.

DSE considered the mash-up to be infringing and sent several letters to Defendants. It also sent a DMCA takedown notice to Kickstarter, which then took down the fundraising page and blocked the pledged funds. DSE then filed a copyright and trademark infringement suit. Comic Mix had sought to fund the publication of the book by a Kickstart crowdfunding campaign.

Comic Mix moved to dismiss the trademark infringement claims arguing that use of the trademarks in the title, artistic style or fonts of the mash-up book is protected by the First Amendment under the Rogers v. Grimaldi test, which requires judges to examine if (1) the mark has artistic relevance and (2) if so, if use of the work is explicitly misleading. The District Court dismissed Plaintiff’s trademark claim, finding that that use was nominative fair use.

Comix Mix also argued that the mash-up was a parody and thus fair use. While a parody is fair use, fair use can be found by the courts even if the derivative work is not a parody. As defined by the Supreme Court in its 1994 Campbell case, a parody uses elements of the original work to comment, at least in part, on the author of the work. Fair use, in contrast, is determined by examining four fair use factors. The District Court did not find the mash-up to be a parody, but granted summary judgment, because the mash-up was fair use.

DSE appealed and a panel of Ninth Circuit held an hearing on April 27, 2020. DSE’s counsel argued that Boldly! is a “market substitute” for Go! and that it “would compete head-to-head in the graduation gift market.” Comic Mix’s counsel argued it was a parody. .

On December 18, 2020,  the panel reversed the US District Court’s grant of summary judgment, finding that the use was not fair use.

The Four fair Use Factors

The first fair use factor, the purpose and character of the use, weighed against fair use. The use is commercial, and the mash-up is not a parody, as it does not critique or ridicule Dr. Seuss’s works. The panel did not find use of the original work to be otherwise transformative either, but that Boldly! “merely repackaged Go!.” There was no new purpose or character, according to the Ninth Circuit but Boldly! merely recontextualized the original expression. It “[did] not alter Go! with new expression, meaning or message” either, noting that “the world of Go! remains intact, ” and that the derivative work  “was merely repackaged into a new format, ” noting further that the “Seussian world… is otherwise unchanged.”

The second fair use factor, the nature of the work, also weighed against fair use, as Go! is a creative and expressive work.

The third fair use factor, the amount and substantiality of the use, weighed “decisively” against fair use, as both quantitative and qualitative use were substantial. The Ninth Circuit found the copying to be “considerable,” around 60% of the Dr. Seuss’s book, including illustrations, and “took the heart of Dr. Seuss’s works, ”giving as example the use of the “highly imaginative and intricately drawn machine that can take the star-shaped status-symbol on and off the bellies of the Sneetches,” from the Sneetches book.

The fourth and final factor, the effect of the use on the potential market, also weighted against fair use. It is the proponent of the affirmative defense of fair use who has the burden of proof, and the Court did not find that Comic Mix had not proven there was no potential market harm. Comic Mix tried unsuccessfully to argue that fair use is not an affirmative defense and that it was thus DSE which had to prove potential market harm. Counsel for DSE argued during the April 2020 hearing that the District Court had incorrectly place the burden of proof of the fourth factor on DSE, a decision he found to be “inconsistent” with Campbell.

The Ninth Circuit noted that Comic Mix had “intentionally targeted and aimed to capitalize on the same graduation market as Go!” and that it had planned to release Bold!in time for school graduations,” and that the unauthorized derivative work curtailed Go! ‘s potential derivative market, noting further that DSE “[had] already vetted and authorized multiple derivatives of Go! ”. DSE’s counsel reminded the panel during the April 2020 debate that the Supreme Court had emphasized in Campbell that licensing of derivatives is an important incentive to creation.[

Comic Mix’s counsel argued, curiously, that DSE did not have the right to control the “fair use market for transformative work,” but acknowledged that DSE was entitled to make transformative works. Indeed, this right is provided to DSE by Section 106 (2) of the Copyright Act. The Ninth Circuit noted that DSE “certainly has the right to “the artistic decision not to saturate those markets with variations of their original,” citing Castle Rock Ent., a case where the Second Circuit Court of Appeals stated that  even though the owner of the copyright of the Seinfeld television series “[had] evidenced little if any interest in exploiting this market for derivative works based on Seinfeld, such as by creating and publishing Seinfeld trivia books… the copyright law must respect that creative and economic choice.”

 

Image is courtesy of Flickr user Sarah B Brooks under a CC BY 2.0 license.

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Donald Graham’s Copyright Infringement Suit against Richard Prince Allowed to Go Forward

People interested in the U.S. fair use doctrine owe appropriation artist Richard Prince gratitude for providing several interesting fair use cases to monitor and comment about.

Prince has been the defendant in several high profile cases in the Second Circuit (see here and here). He famously won the Second Circuit Cariou v. Prince case (see here), where the Court of Appeals found that Prince’s  use of Patrick Cariou’s photographs to create his thirty paintings and collages featured in his Canal Zone exhibition was fair use, as it was transformative.Prince Street Photographer Donald Graham filed a copyright infringement suit against Prince in 2016 (see here and here), claiming that Prince’s use without permission of Graham’s Rastafarian Smoking a Joint photograph, to create an Untitled (Portrait) featured in Prince’s New Portraits exhibition, was copyright infringement. Prince claims it is fair use.

On July 18, U.S. District Judge Sidney H. Stein from the Southern District of New York allowed the case to go forward, as, while granting Prince’s request to dismiss Graham’s demand for punitive damages, he denied Prince’s motion to dismiss the case. The case is Graham v. Prince, 1:15-cv-10160.

Judge Stein noted that, because the fair use defense is fact-related, discovery will be necessary to conduct the fair use inquiry. Therefore, the case cannot be dismissed and will have to go forward. Judge Stein quoted the Second Circuit in Cariou v. Prince, which stated that finding whether a particular use is fair or not requires “an open-ended and context-sensitive inquiry.”

Prince used Graham’s work almost in its entirety, when he printed and exhibited the original work as originally cropped and posted on Instagram, without Graham’s permission, by another Instagram user, then reposted by yet another user and finally reposted by Prince on his own Instagram account. Prince added the nonsensical comment “ReCanal Zinian da lam jam,” followed by an emoji. Is this add-on enough to make Prince’s work transformative enough to be found fair use?

Prince argued that the use was transformative as it added new messages such as “a commentary on the power of social media to broadly disseminate others work, an endorsement of social media’s  ability to generate[ ] discussion of art,”or a “condemnation of the vanity of social media.”

Judge Stein was not convinced, finding “evident” that Prince’s work is not “so aesthetically different”from the original work and thus not transformative enough. Untitled (Portrait) does not manifest “an entirely different aesthetic” from the original work, as required under Cariou. Unlike the works featured in the Canal Zone exhibition, Untitled (Portrait) does not render the original work, according to Judge Stein, “barely recognizable” as Princes works did in Cariou.

Instead,

“[t]he primary image in both works is the photograph itself… Untitled simply reproduces the entirety of Graham’s photograph –  with some de minimis cropping – “ in the frame of an Instagram post, along with a cryptic comment written by Prince… There is no question that, notwithstanding Prince’s additions, Graham’s unobstructed and unaltered photograph is the dominant image in Untitled.”

Judge Stein concluded that “[b]ecause Prince’s Untitled is not transformative as a matter of law, the Court cannot determine on a motion to dismiss that a “reasonable viewer” would conclude that Prince’s alterations imbued the original work “with new expression, meaning, or message,” quoting the U.S. Supreme Court Campbell v. Acuff-Rose Music 1994 case.

 Given Prince’s  use of essentially the entirety of Grahamâ’s photograph, defendants will not be able to establish that Untitled is a transformative work without substantial evidentiary support. This evidence may include art criticism, such as the articles accompanying defendant’s briefing, which the Court may not consider in the context of this motion.”

Judge Stein called Cariou v. Prince a “prequel to this action.” However, his fair use analysis does not bode well for Prince, who may this time be found to have appropriated a bit too much. To be continued…

Image is courtesy of Gryffindor under a  CC BY-SA 3.0 license.

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Fair Use… The Final Frontier?

Judge Klausner from the  Central District of California Court denied summary judgment on January 4 for both parties in the Paramount v. Axanar case. Plaintiffs Paramount Pictures and CBS Studios were moving for partial summary judgment for direct, contributory and vicarious copyright infringement claims against Defendants Axanar Production and its owner Alec Peters. Defendants were moving for summary judgment. Hat’s tip to Ars Technica for providing the link to these two motions.

Star Trek Pizza CutterI am writing here only about the two motions and will comment on yesterday’s ruling later on.

Readers of this blog may remember that Paramount Pictures and CBS Studios are suing Axanar Productions and Alec Peters, “one of Star Trek’s biggest fans” (Defendants motion p. 7), claiming that the short movie Star Trek: Prelude to Axanar and the full-length movie titled Star Trek: Axanar, which Defendants plan to release soon(ish), are infringing unauthorized derivative works of the original Star Trek works.

Defendant’s short movie is a prequel to the original television series and movies. Defendants call it a “mockumentary, ”with direct interviews of characters, in “a style never before used by either Plaintiffs or in any other Star Trek fan fiction” (Defendants’ motion p. 10). It features Klingons, Vulcans, and some other characters originally created for the CBS television series. Axanar is a battle between the United Federation of Planets and the Klingon Empire which was won by one of Captain Kirk’s hero, Starfleet Captain Garth of Izar. CBS will premiere in 2017 a new Star Trek series, Star Trek: Discovery, which will be a prequel to the original series, taking place about twenty years before Captain Kirk took command of the U.S.S. Enterprise.

Let’s first note that both of the Defendants’ movies are crowd-funded. The issue of whether the individuals who contributed to finance these movies, and the crowdsourcing platform, could be sued for contributory infringement would make a fun “additional question” in a copyright law exam.
As the full-length Axanar movie has not been made yet, let alone released, Defendants are claiming that Plaintiffs‘claims with respect of the full length movie are premature, as the Court cannot compare the two works for similarities to decide whether or not there is infringement. The movie’s script is still evolving, and thus the dispute is not ripe. Defendants cite in their motion several cases where courts refused to review drafts to determine substantial similarities (Defendants’ motion p. 15).

Copyright Infringement Claims

Plaintiffs are claiming that Defendants’ works are substantially similar to the original Star Trek works and that Defendants‘works are not fair use. Plaintiffs claim that these works are not “fan films” but rather unlicensed professional productions, and that they take place in the “alien star systems created by Plaintiffs, on spaceships belonging to the United Federation of Planets, on Klingon battlecruisers fighting the Klingon Empire, and on planets such as Qo’nos, Vulcan and Axanar” (Plaintiffs’ motion p. 21 and 22).

Defendants are arguing that their works are not substantially similar to Plaintiff’s works and that Plaintiffs, while owning a limited number of Star Trek episodes and films, “do not own a copyright to the idea of Star Trek, or the Star Trek Universe as a whole” (Defendants’ motion p. 7). Defendants further argue that Plaintiffs cannot claim copyright in “the general mood and theme of science fiction; names and words used in Plaintiff’s Works; elements in the public domain and nature; the Klingon language; Scènes à Faire [for once spelled correctly, I tip my hat to Defendants’ attorneys]; most specific characters; and the general costuming and appearance of, or shapes affiliated with, characters in Plaintiffs’ Works.” Once these unprotectable elements are filtered out, Defendants claim that both Plaintiffs and Defendant’s work are not substantially similar (Defendants’ motion p. 17).

Characters

Plaintiffs claimed that Defendants infringed on the Star Trek characters which are protected by copyright. They cited the Ninth Circuit DC Comics v. Towle case, where the Court found the Batmobile to be a character protected by copyright. The Court laid out then a three-part test to determine whether a particular character is protected by copyright: the character must have “physical as well as conceptual qualities,” the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears, and the character must be “especially distinctive” and “contain some unique elements of expression.”

Defendants argued that such elements as “pointy ears” cannot be protected but, as noted in Plaintiffs’ motion, though ideas are not protectable by copyright, the expression of these ideas can be protected. Plaintiffs claim that Defendants have copied the exact Star Trek characters in their movie. Defendants admit that Plaintiffs own the copyright in the Spock and Captain Kirk characters, but that its works do not include them, “or any other characters to which Plaintiffs own separate copyright” (Defendants’ motion p. 9). Defendants also noted that the still unfinished script of the full-length movie features 50 original characters out of 57 characters in total.

Is Prelude to Axanar Fan Fiction?

Defendants are claiming that their work is fan fiction, made “to celebrate their love of Star Trek” (Defendants’ motion p. 9), and is protected by fair use. They note that there is a “longstanding tradition of Star Trek [f]an [f]iction” and that Star Trek’s creator, Gene Roddenberry, encouraged fan fiction (Defendants’ motion p. 13 and p. 14). As there is no “fan fiction” provision in the Copyright Act, fan fiction is not infringing if it is fair use. Is it the case here?

Plaintiffs claim that the use of the Star Trek characters, setting and plots are not fair use, as they are not a parody or a satire, nor were they created for purposes of criticism or teaching, and thus furthered the goals of the Copyright Act. They also argue that the use is not transformative enough to be fair use, but that, instead, Defendants have “meticulously replicate[d]” the Star Trek works. For Plaintiffs, merely setting the action of the movie in a different time is not transformative enough, as the “creation of a derivative work that is set in a (slightly) different time than the original does not constitute a “transformative use” (Plaintiffs’ motion p. 19).

Defendants are arguing that their works “are transformative-going where no man has gone before” [ah!), and feature “numerous original characters, original dialogue, a unique plot, and an unexplored timeline” (Defendant’s motion p. 8). Also, “the styling of Prelude [to Axanar] as a short mockumentary featuring first-person interviews makes it especially unique and distinctive from Plaintiffs’ Works”(Defendants’ motion p. 22).

Plaintiffs claim that Defendants’ plot is directly taken from the original Star Trek television show episode which introduced Garth of Izar and also took story elements from a Star Trek role playing game book. For them, the effect on the market, which is one of the four fair use factors, is significant, as Defendants damaged Plaintiffs’ potential market for derivative works (Plaintiffs’ motion p. 23). Defendants are arguing instead that their works have no effect on the potential market, but instead “offer free promotional value to Plaintiffs (Defendant’s motion p. 19 and p. 20).They “do not act as a substitute for Plaintiff’s work.”

Defendants are claiming that their works “are not intended to be commercialized” and that “Defendants have no ambitions of competing against Plaintiffs’ Works in movie theaters, on television, over premium streaming services or to otherwise sell their [w]orks for profits” (Defendant’s motion p. 11). In the eyes of the  Defendants, their works are protected by fair use.

Image is courtesy of Flickr user Joe Hall, under a CC BY 2.0 license.

This blog post was first published on The 1709 Blog.

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Who’s on Second (Circuit)? Transformative fair use

The Second Circuit found on 11 October 2016 that verbatim use of the famous ‘Who’s on First’ Abbott and Costello routine in the Hand to God play was not transformative enough to be fair use. The Second Circuit nevertheless affirmed the dismissal of the lower judgment as Plaintiffs did not have a valid copyright interest in the routine. The case is TCA Television Corp. v. McCollum, No. 1:16-cv-0134 (2d Cir. Oct. 11, 2016).

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William ‘Bud’ Abbott and Lou Costello formed a comedy duo which was popular in the thirties and forties. Who’s on First is one their most famous routines, where Abbott plays the manager of a baseball team which Costello just joined. The newbie wants to know the name of his fellow players and the manager obliges: they are “Who,” “What,” and “I Don’t Know.” Misunderstandings ensue, fired up at a rapid pace. The routine was named “Best comedy routine of the 20th Century” by Time magazine in 1999.

The play Hand to God, written by Robert Askins, was shown off-Broadway in 2011 at The Ensemble Studio Theatre, and has since been shown on Broadway and in London. The play is about Jason, an introverted young man from a small Texas town who participates in his church’s “Christian Puppet Ministry,” a sock puppet show. Tyrone, Jason’s sock puppet takes a life on its own and blurts out embarrassing facts, maybe because it is an incarnation of the devil, maybe because Jason uses him to say what he truly thinks. Jason recites Who’s on First, with Tyrone as his partner, to a young woman in order impress her, and then pretends that he is the one who came up with the routine. Tyrone then calls him a liar and tells the girl she is stupid for believing that Jason indeed created the routine. An excerpt of that scene was used in a promotional video for the play.

When Abbott and Costello’s heirs learned about this use, they filed a copyright infringement suit against the Ensemble Studio Theatre and the playwright in the Southern District of New York (SDNY). Defendants conceded that they had used part of the routine, but argued in defense that is was “part of a sophisticated artistic expression” and also that Plaintiffs do not own a valid copyright in the routine.

On December 17, 2015, Judge Daniels from the SDNY dismissed the copyright infringement suit brought by Plaintiffs because, while Plaintiffs had indeed established a continuous chain of title in the copyright, use of the routine by Defendants was fair use. Plaintiffs appealed.

The use of the routine is not protected by fair use

Plaintiffs had argued that the play had not added anything new to the original routine as Jason merely recited it without transforming it, and that therefore is was not fair use. The Second Circuit agreed.

When examining whether a particular use of a work protected by copyright is fair, courts use the four factors enumerated by Section 107 of the Copyright Act: the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used and the effect of the use on the market.

Judge Daniels had found, when examining the purpose and the character of the use of the routine in the play, that it was transformative enough to be fair use. He had cited the Second Circuit Cariou v. Prince case, where the Court had found that Richard Prince’s use of Cariou’s photographs to create new works was transformative enough to be fair use because Prince had “employ[ed] new aesthetics with creative and communicative results distinct from Cariou’s” and also had incorporated “new expression” in his works.

For Judge Daniels, “the performance through the anti-hero puppet… create[d] new aesthetics and understandings about the relationship between horror and comedy that are absent from Abbott and Costello’s… routine.” He further explained that “[t]he contrast between Jason’s s seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet, is, among other things, a darkly comedic critique of the social norms governing a small town in the Bible Belt.”

The Second Circuit found this reasoning to be “flawed in what it identifies are the general artistic and critical purpose and character of the [p]lay” and that the court did not explain how “extensive copying of [the] routine was necessary to this purpose.” Section 107 enumerates the uses which are fair: criticism, comment, news reporting, teaching, scholarship and research. For the Second Circuit, the use of the routine “does not appear to fit within any of these statutory categories.”

Even though the Second Circuit had held in Cariou that it is not essential that a use comments on the original work to be transformative, it also held that a use is transformative only if it alters the original work with “new expression, meaning, or message.” For the Second Circuit, this was not the case as the routine had not been altered in the play, but used for what it is, a famous classic routine, instantly recognizable by the audience. The Court quoted its own On Davis v. Gap, Inc. case which explained that a use is not transformative if it used the original “in the manner it was made to be” used. The Court pointed out that it was necessary that the routine is not altered, so that the audience can recognize it and laugh when Jason pretends he created it. For the Second Circuit, the use of the routine is  a mere “McGuffin,” an event which sets the plot, in that case informing the audience that Tyrone the sock puppet can speak unprompted and has a foul mouth. However, not “any new dramatic purpose justif[ied] [d]efendants’ extensive copying of the [r]outine.” As the use was not transformative, the purpose and character of the use factor weighed in Plaintiff’s favor.

The Court also found that the nature of the work factor weighed in favor of Plaintiffs, as the routine was created to entertain the public, and thus is “at the heart of copyright’s intended protection.” It dismissed Defendants’ argument that use of the routine was justified by the need to use “an instantly recognizable “cultural” touchstone in the relevant scene” because Defendants could have used another cultural touchstone, such as “inventing the Internet” or “out-swimming Michael Phelps.” These examples are not convincing as they are not examples of cultural touchstones performed by a duo, a format which was needed in a play about a man and his evil sock puppet.

The amount and substantiality of the use factor weighted “strongly” in favor of Plaintiffs as the copying of the original work was “substantial” and because, while even a substantial use can be fair use “if justified,” it was not the case here. The fourth factor, the effect on the potential market, also did weigh in favor of Plaintiffs because there is a licensing market for the routine.

However, even though all of the fair use factors weighed in favor of Plaintiffs, the Second Circuit nevertheless affirmed the dismissal of the case because Plaintiffs failed to prove they own a valid copyright in the routine.

Plaintiffs do not own the copyright in Who’s on First

Judge Daniels had found that Plaintiffs had proven a continuous chain of title in the copyright of the routine, but the Second Circuit disagreed.
The routine was first performed in 1938 on the radio. It was also performed by Abbot and Costello in their 1940 One Night in the Tropics movie (Tropics) and in 1945 in their Naughty Nineties movie. As both the routine and the two movies were created before January 1, 1978, date of the entry into force of the 1976 Copyright Act, they are subject to the 1909 Copyright Act, which only protects published or registered works. A work was protected for twenty-eight years under the 1909 Copyright Act, if it was published with the required copyright notice. However, public performance of a work was not a publication under the 1909 Copyright Act, Silverman v. CBS Inc. (SDNY 1986), and therefore the routine was not first published in 1938, but in 1940. Unpublished and unregistered works were protected indefinitely by common law, but became automatically protected by copyright on January 1, 1978.

In November 1940, Abbot and Costello allegedly assigned their rights in the routine as performed in the two movies to Universal Pictures Company (UPC), which registered the copyright of Tropics in 1940 and of The Naughty Nineties in 1945, and timely renewed both copyrights. As the common law copyright of the routine as first performed in 1938 was never assigned, Abbot and Costello had retained it. They registered a copyright for “Abbott and Costello Baseball Routine” in 1944, but did not renew it and thus the work is in the public domain since 1972.

Plaintiff did not rely on the 1944 registration to claim they own the copyright, but rather in an agreement made in 1984 where UPC quitclaimed all of its rights in the performance of the routine to Abbott &Costello Enterprises (ACE), a general partnership formed by the comedians’ heirs. ACE was later dissolved and copyrights’ ownership were divided among Abbot and Costello heirs.

Defendants had argued that the routine was in the public domain because only Abbott and Costello could have renewed the copyright of the movies, but Plaintiffs argued that UPC had the authority to do it because the comedians had assigned ownership of their common law copyright in the routine to UPC, the routine had merged into Tropics, and the copyright was transferred to ACE by the quitclaim.

For Judge Daniels, the 1940 registration of the One Night movie by UPC in 1940 “extinguished whatever common law copyright Abbott and Costello had in the unpublished version of the [r]outine.” However, the Second Circuit found that Abbott and Costello had merely intended to license the use of the routine to UPC, not to assign their common law copyright in it. The Second Circuit did not interpret the agreement as being a work-for-hire agreement either, because the routine had already been created in 1938 and thus could not have been created at UPC’s “instance and expense” as required it to be a work for hire, Playboy Enters., v. Dumas (2d Cir. 1995). The routine had not merged in the movies either, as “authors of freestanding works that are incorporated into a film… may copyright these ‘separate and independent works’”, 16 Casa Duse, LLC v. Merkin (2d Cir. 2015) and the routine is such a freestanding work.

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

This article was first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

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Richard Prince May Offer the SDNY Another Chance to Define Transformative Use of a Work

Richard Prince was sued on November 16 by yet another photographer over the use of a photograph in his New Portraits series. The case is Eric McNatt v. Richard Prince, 1:16-cv-08896, Southern District of New York (SDNY).

Readers of this blog may remember that Richard Prince used various photographs protected by copyright to create his New Portraits exhibition. He had commented, cryptically, or nonsensically, whatever your mood is, below several photographs which had been uploaded by others on Instagram. He then printed the results on canvas to create a series of works, New Portraits, which has been shown in New York. Prince has been sued by some of the copyright holders of the original works. One of these cases, Donald Graham v. Prince, is still pending at the SDNY.

This time, it is photographer Eric McNatt who is suing Richard Prince and the Blum and Poe Gallery for copyright infringement. The complaint alleges that Richard Prince reproduced a photograph taken by Plaintiff of Kim Gordon, a founding member and bassist of Sonic Youth, by downloading it from the web, where it had been published with a copyright notice, and uploading it on his own Instagram account. Prince has since deleted this account. Prince then wrote three lines of comments under the photograph:  “Portrait of Kim Gordon,” then “Kool Thang You Make My Heart Sang You Make Everythang Groovy” and finally added a string of music-related emojis.

This Instagram post and its comments was then printed and added to the New Portraits exhibition, which was shown in the spring of 2015 by the Blum & Poe gallery in Tokyo and featured in the catalog of the exhibition.7197150970_772ee19f92_z

Will TCA Television Corp. v. McCollum Influence the Outcome of this Case?

The Donald Graham v. Richard Prince case is still pending at the SDNY. On November 4, attorneys for Donald Graham sent a letter to Judge Sidney Stein from the SDNY, who is presiding over the case, to alert him of the recent TCA Television Corp. v. McCollum Second Circuit case (2nd Circ. Oct. 11, 2016), which, in their view, “undermines Defendants ‘motion to dismiss on fair use grounds.”

In TCA Television Corp., the author of the play Hand of God had been sued by the heirs of Abbot and Costello over the use of their famous “Who’s on First” routine. The main character of the play recites the routine verbatim in the play with his trusty (but evil) sock puppet acting as sidekick. Judge Daniels from the SDNY had dismissed the copyright infringement suit, finding the use of the routine in the play to be fair use. The Second Circuit affirmed, but on alternative grounds: the use of the routine was not transformative enough to be fair use, but the heirs had not proven that they owned the copyright in the routine.

Attorneys for Prince sent their own letter a few days later, where they argued that the holding in TCA Television is distinguishable from the case, that the TCA Television case is not even related to fair use and that thus “the entire discussion of fair use is dicta.” They also argue that the Second Circuit did not find the use of the routine to be fair because, according to the Court, “the extent of defendants’ taking is identically comedic to that of the original authors, that is, to have two performers expand on a singular joke in order to generate increasing audience laughter.”

Attorneys for Prince also argued in the letter, that, “[b]y contrast, Prince used Graham’s photograph for a highly transformative purpose: as a commentary on social media. This new meaning and message is apparent to any reasonable observer who looks at the artwork. “Prince’s attorneys also argued that “Prince’s transformative purpose [was] to provide a commentary on social media [and thus] required the incorporation of the entire Instagram post… to accomplish that purpose. “

Is the use of the McNatt Photograph Transformative Enough to be Fair Use?

What is transformative use? We still do not have a “so transformative it is fair use” test. However, the TCA Television case may influence the McNatt v. Prince case. If we consider that Prince’s purpose for reproducing Eric McNatt’s photograph of Kim Gordon was to comment on social media, as claimed by Prince’s attorneys in the Graham v. Prince case, then it is fair use under Cariou if Prince added something materially new or provided a different aesthetic. The Second Circuit had found in Cariou v. Prince that Prince’s use of Cariou’s photographs was fair use, because he had used them to create new works and had “employ[ed] new aesthetics with creative and communicative results distinct from Cariou.”

Judge Daniels from the SDNY had found in TCA Television that the use of the routine was fair use, explaining that “[t]he contrast between Jason’s seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet, is, among other things, a darkly comedic critique of the social norms governing a small town in the Bible Belt. Thus, Defendants’ use of part of the Routine is not an attempt to usurp plaintiffs’ material in order to “avoid the drudgery in working up something fresh.” Campbell, 510 U.S. at 580, 114 S.Ct. 1164. Nor is the original performance of the [r]outine “merely repackaged or republished.” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 97 (2d Cir.2014).”

The Second Circuit found that the use was not fair because it had not transformed the routine’s aesthetic, it had appropriated the routine extensively, and “[n]o new dramatic purpose was served by so much copying” and “there is nothing transformative about using an original work in the manner it was made to be used.”

If we apply this to our case, then Prince must prove that he used the original work in a different manner than it was made to be used. Should we only look at the comments written by Prince to decide if the use is transformative enough to be fair, or at the ensemble, work and comments? In both ways, the Prince’s work could be considered fair use if proven to be a critique on the desperate banality of social media and social media comments. But is it?

As noted by the Complaint, “Kool Thang You Make My Heart Sang You make Everythang Groovy” is “a transliteration of lyrics to the 1960 song “Wild Thing,”written by Chip Taylor, except that the word “Kool” replaces the word “Wild.” “Kool Thing” is the title of Sonic Youths first major label record single.” As itself, this comment may not be original enough to be protected by copyright yet it is more creative than most social media comments. The emojis chosen by Prince, however, are quite banal and so their banality may comment on banality. Pass the aspirin.

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

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Plus Ça Change… Prince, Rastafarians, and Fair Use

You may remember that Richard Prince, the Gagosian Gallery, and Larry Gagosian have been sued by photographer Donald Graham for copyright infringement in the Southern District of New York (SDNY). Plaintiffs moved to dismiss on February 22, asserting a fair use defense (motion).

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Appropriation artists and copyright

Prince used Graham’s Untitled (Portrait) to create one of the works presented at his New Portraits exhibition (I wrote about it here). The original image had been cropped and posted on Instagram, without Graham’s permission, by another Instagram user, then reposted by yet another user. Prince reposted it again from his own Instagram account, adding the comment “ReCanal Zinian da lam jam,” followed by an emoji (see p. 11 of the motion).

 In his motion, Prince placed himself in “a long line of[appropriation] artists” such as Marcel Duchamp, Jasper Johns and Jeff Koons. The latter has been involved in several copyright infringement suits over his work, for instance Rogers v. Koons where the Second Circuit found no fair use. But in Blanch v. Koons, the Second Circuit found that Koon’s appropriation of a photograph reproduced, at a different angle, in a painting was protected by fair use. Following this Second Circuit decision, Judge Stanton from the SDNY denied plaintiff Blanch’s motion for sanctions, which gave him an opportunity to explain the dynamic between appropriation artists and copyright:

“Appropriation artists take other artists’ work and use it in their own art, appropriating it and incorporating it in their own product with or without changes. Because of this appropriation, often (as in this case) done without giving credit to the original artist, the appropriation artists can expect that their work may attract lawsuits. They must accept the risks of defense, including the time, effort, and expenses involved. While that does not remove the appropriation artist from the protection of the statute, litigation is a risk he knowingly incurs when he copies the other’s work.”

Is this case the same as Cariou?

In his motion, Prince argued that, in Cariou v. Prince, “the Second Circuit held that “appropriation art” created by Prince that is substantially similar to the artwork at issue here constituted fair use as a matter of law” and argues that the Graham lawsuit “reflects an attempt to essentially re-litigate Cariou and should be dismissed with prejudice”(p. 2). [I wrote about the Cariou v. Prince case here.)

However, every fair use case is different since fair use is a mixed question of law and fact, as acknowledged by Prince on p. 12 of his motion. In Cariou, the Second Circuit set aside five artworks, remanding to the SDNY to consider whether the use of Cariou’s work was fair. Because the case settled, the SDNY did not have an opportunity to rule on that point on remand. Whether a court will find this Prince work to be fair use is an open question.

Is Prince’s character of the use of Graham’s photograph the same than his use of Cariou’s photographs? The Second Circuit noted in Cariou that “[t]he portions of the [Cariou photographs] used, and the amount of each artwork that they constitute, vary significantly from piece to piece” (at 699). As the affirmative defense of fair use is a matter of both law and fact, Cariou cannot be interpreted as the Second Circuit having given carte blanche to Prince to create any derivative works based on Rastafarian photographs “as a matter of law.” Indeed, in Cariou, the Second Circuit took care to note that its conclusion that twenty-five of Prince’s works were protected by fair use “should not be taken to suggest… that any cosmetic changes to the photographs would necessarily constitute fair use“ (at 708).

Fair use or not?

The Graham photograph is somewhat similar to the Cariou photographs, as they are classic black and white portraits of a Rastafarian. However, if the nature of the original work is one of the four fair use factors used by courts to determine whether a particular use of a work protected by copyright is fair, the first factor, the purpose and the character of the use, is “[t]he heart of the fair use inquiry” (Blanch at 251).

A work is transformative, as explained by the Supreme Court in 1994, if it does not merely supersede the original work, but instead “adds something new, with a further purpose or different character, altering the first with a new expression, meaning or message… in other words, whether and to what extent the new work is transformative”,Campbell v. Acuff-Rose Music, Inc., at 577-578.

What is determining is whether the new work is transformative, and Prince recognizes this in his motion (p.1). He argued that, by incorporating Plaintiff’s photograph into a social media post, and adding “Instagram visuals and text,” the derivative work has become “a commentary on the power of social media to broadly disseminate others’ work” (p.3).

To create his Canal Zone series, Prince had torn multiple photographs from the Cariou book, enlarged them using inkjet printing, pinned them to plywood, then altered them by painting or collaging over them, sometimes using only parts of the original photographs, sometimes tinting them, sometimes adding photographs from other artists. The result was declared fair use by the Second Circuit. In our case, Prince inkjet printed his original Instagram repost of the Graham picture, complete with his comment, with no further change, except for the change in format and size.

But whether a particular work is transformative does not depend on the amount of sweat of the brow, and a derivative work can be created by a mere stroke of the pen, such as Marcel Duchamp’s L.H.O.O.Q. Nevertheless, the more detailed the process to create a derivate work is, the more likely it is transformative.

It remains to be seen if the SDNY will find this new Prince appropriation work to be fair use. The court is becoming somewhat an expert on appropriation art. Jeff Koons has recently been sued in the SDNY for copyright infringement over the use of a photograph by a commercial photographer, Mitchel Gray. Gray claims that his photograph of a couple on a beach, which he had licensed in 1986 to Gordon’s Gin for the company to create an ad, was reproduced the same year by Koons as part of his “Luxury and Degradation” series. Koons reproduced the whole ad, with no change. Mr. Gray only discovered this use in July 2015 and filed his suit.

We’ll see how this case and the Koons case will proceed. ReCanal Zinian da lam jam.

The post first appeared on The 1709 Blog. 

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

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Crowdfunding May Take Fair Use Where It Has Never Gone Before

On December 29, 2015, Paramount Pictures and CBS Studios sued Axanar Productions and its principal Alec Peters, claiming that its short movie Prelude to Axanar infringes their copyright in Star Trek, as it is an unauthorized derivative work (Complaint). On February 22, 2015, Defendants filed a motion to dismiss (Motion), claiming that the complaint does not contain sufficient factual matters to put Defendants on fair notice of the claims against them.

Star Trek first appeared on television in 1966, and the original series ran three seasons until 1969. The franchise now comprises six television series and twelve movies. Another movie is set to be released on July 22, and another television show is planned. The Complaint claims that Star Trek is “one of the most successful entertainment franchises of all time.”4658982704_1cd132f682_z

In one of the episodes of the original series, Captain Kirk, the captain of the U.S.S. Enterprise, meets his hero, former Starfleet captain Garth of Izar, and they discuss the battle of Axanar between the Klingon Empire and the Federation, which was won by Garth. Reading about the battle is required at the Starfleet Academy, of which Captain Kirk is a proud graduate. This is the only time the battle is mentioned in Star Trek.

The battle of Axanar is the topic of a short movie written, directed and produced by Defendants after a successful crowdsourcing campaign on Kickstarter. The movie has been shown for free on YouTube since 2014. Defendants are now raising money through crowdsourcing to produce a longer Axanar movie.

However, Defendants moved to strike Complaint’s allegation that they “are in the process of producing a film called Axanar.” They also argued the copyright infringement claim regarding the movie is premature, at it has not yet been made, and that “seeking to stop the creation of a work at this stage would [be] an impermissible prior restraint” (Motion to Dismiss p. 10).

Fan Fiction

The Complaint states that Star Trek “has become a cultural phenomenon that is eagerly followed by millions of fans throughout the world.” Indeed, Star Trek has its own fan fiction cottage industry. It includes short stories, novels, and even new episodes, such as those produced by “Star Trek: New Voyages,” a project which is also crowdfunded and produced by a non-profit. The first New Voyage episode was released in 2004 and the project is still going strong, without apparent concern from CBS and Paramount.

In an article published in 1997, Professor Rebecca Tushnet traces “[f]an fiction and organized media fandom… to the second season of Star Trek in 1967,” and cites a much earlier instance of fan fiction when Lord Tennyson imagined what happened next to Ulysses.

Under Section 106(2) of the Copyright Act, the copyright owner has the exclusive right to prepare derivative works. There is no doubt that fan fiction is derivative work, that is, “a work based upon one or more preexisting works.” Is fan fiction copyright infringement?

Copyright Infringement

Plaintiff in a copyright infringement suit must prove ownership of the copyright and must also prove actual copying. Copying may be proven by circumstantial evidence by showing access to the protected work and substantial similarity.

Plaintiffs claimed they own copyrights in the Star Trek television series and motion pictures. However, Defendants argued that the Complaint “lump[s] both Plaintiffs together and appear to allege collective ownership of all of the Star Trek [c]opyrighted [w]orks,” even though Plaintiffs cite a copyright assignment from Paramount to CBS, and “fail[ed] to specify which of those copyrights Defendants have allegedly infringed.”

Defendant, of course, had access to Star Trek. But Plaintiff must also prove substantial similarity between the original and the derivative work. The Ninth Circuit uses the extrinsic/intrinsic test created in the Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp. case. The extrinsic text is thus called “because it depends not on the responses of the trier of fact, but on specific criteria which can be listed and analyzed. Such criteria include the type of artwork involved, the materials used, the subject matter, and the setting for the subject. Since it is an extrinsic test, analytic dissection and expert testimony are appropriate” (Sid & Marty Krofft at 1164).

The Complaint claims that Defendant’s short movie is substantially similar to the Star Trek works, listing similar characters, the use of the Federation, similar costumes, sets, props, and logos, and further claims that the “feel and the mood” of Defendant’s work is similar to the original works.

It is interesting to note that the Star Trek New Voyages project has also replicated some sets of the original series, such as the transporter room, the sick bay and the bridge of the Starship Enterprise, and used Star Trek characters and costumes, without having been sued for copyright infringement.

Possible Defense

Plaintiffs argue that the Axanar short movie is neither a parody nor fair use. Defendants calls it a “short mockumentary.” Could the fair use defense be successful? Defendants did not address the issue, arguing instead that the claim is unripe.

The four fair use factors are 1) purpose and character of the use, 2) nature of the copyrighted work, 3) amount and substantiality taken, and 4) effect of the use upon the potential market.

The purpose and the character of the use factor inquiry includes whether the use is commercial. Defendants explained on their website that Axanar is not licensed by Paramount and CBS, but that it is an “independent project that uses the intellectual property of CBS under the provision that Axanar is totally non-commercial. That means we can never charge for anything featuring their marks or intellectual property and we will never sell the movie, DVD/Blu-ray copies, T-shirts, or anything which uses CBS owned marks or intellectual property.” This statement has been since deleted. In a crowdfunding pitch video , Alec Peters explains that CBS has “graciously allowed” that he and others make Star Trek movies as long as they do not profit from it, sell anything with ‘Star Trek’ on it, and that they “have to honor the best story – telling tradition of Star Trek.”

Indeed, this is what Star Trek New Voyages has been doing for years. Defendants claim in their Motion that Prelude to Axanar is a ‘mockumentary,’ and indeed the video narrates the battle of Axanar using a format favored by the History Channel, as explained on Defendants’ site.

As for the nature of the copyrighted work, there is little doubt that the argument would go in Plaintiff’s favor, as the television series and the movies are highly creative. The third factor, the amount taken, could be in Plaintiffs or Defendant’s favor. It is hard to say without engaging in a complete analysis.

As for the effect upon the potential market, it could be argued that it is actually beneficial for Plaintiffs, not detrimental, and thus the fourth factor could be in favor of Defendants. Professor Tushnet noted in her article on fan fiction that the great success of the official Star Trek derivative works co-existed with numerous Star Trek fan fiction, and that this “provides strong evidence against the claim that fan fiction fills the same market niche as official fiction” (p.672). Could the same be argued for the Axanar movie if it is ever produced?8234194645_23515ea9fe_z

This Case May Very Well Stretch the Limits of Fair Use

This case is interesting as it shows that crowdfunded User-Generated Content could stretch the limits of fair use. It seems that CBS and Paramount have tolerated Star Trek fan fiction for years, understanding that what a copyright attorney may regard as unauthorized derivative work is indeed valuable user-generated marketing and promotional content.

But written fan fiction, even if published online, may not replace the experience of watching a Star Trek movie or television show. Crowdfunding has allowed the Axanar project to be built as a non-profit project, and it would not be shown in movie theaters. But it could nevertheless compete on the market with official Star Trek movies. Watching the Axanar short movie was quite entertaining, and I expect the future movie to be as well.

Producing such fan movies is not possible without crowdfunding. As more fan fiction is likely to be financed this way in the future, it will be interesting to see the effect of this practice on fair use, although I do hope fair use will live long and prosper.

This blog post was first published on The 1709 Blog.

Image of Star Trek figurines is courtesy of Flickr user Kevin Dooley under a CC BY 2.0 license.

Image of Spock being watched is courtesy of Flickr user JD Hancock under a CC BY 2.0 license.

 

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Only Thing That Counts is… Fair Use?

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

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Latest Issue of the Transatlantic Technology Law Forum Newsletter

The latest issue of the Transatlantic Technology Law Forum (TTLF) Newsletter has been published. You can download the newsletter on the Stanford Law School website, or on the TTLF blog.

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I have contributed three articles to this newsletter:

3C is fair use, too: Judge Loretta Preska of the Southern District of New York dismissed a copyright infringement case against playwright David Adjmi, finding his play 3Cto be fair use of television show Three’s Company, as it is “a highly transformative parody of Three’s Company.”

Supreme Court holds that TTAB’s decisions have preclusive effect on courts: the U.S. Supreme Court held that Decisions of the Trademark Trial and Appeal Board (TTAB) have a preclusive effect in subsequent trademark infringement suits if the other ordinary elements of issue preclusion are met.

European Court of Justice decides that reduced VAT rate cannot be applied to supply of e-books: the European Court of Justice held on March 5, 2015, that France and Luxembourg could not apply a reduced value added tax rate to the supply of digital or electronic books.

I hope you will find this newsletter of interest.

Image courtesy of Flickr user Dennis Skley under a CC BY-ND 2.0 license

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