Dentist Claiming to Own Copyright in Patient’s Negative Comments about Her Misused Copyright Law

March 24, 2015 · by ·

Going to the dentist is not particularly pleasant, but, at least, one does not usually expect to have to consult a copyright attorney before sitting in the chair.

However, patients of a Manhattan dentist had to sign, before being able to receive any treatment, including emergency treatment, a confidentiality agreement which assigned to the dentist and her dental practice a copyright over any comments made about her or her practice.

One of these patients was not satisfied by Defendant’s dental services and wrote about his dissatisfaction on Yelp and other sites allowing users to comment about services. According to the complaint, Defendant unsuccessfully asked these sites to remove Plaintiff’s comments, sent Plaintiff invoices purporting to charge $100 per day for the posting of these comments, and threatened to file a copyright infringement, breach of contract, and defamation suit if the comments were not removed from the sites.dentist

Several of the dentist’s patients filed a class action suit in November 2011 in the Southern District of New York (SDNY), claiming that, even if Defendant does indeed own the copyright in these comments, they were not infringing under the fair use defense of Section 107 of the Copyright Act. Defendant moved to dismiss but the motion was denied on March 27, 2013, by Judge Paul A. Crotty from the SDNY.

On February 27, 2015, Judge Crotty rendered a default judgment in favor of Plaintiff. The case is Lee v. Makhenevich, 1:11-cv-08665 (SDNY).

For Judge Crotty, the comments posted by Plaintiff were not infringing as they were fair use. Also, for the SDNY,

“[o[btaining the promise by plaintiff… in the [m]utual [a]greement to [m]aintain [p]rivacy… not to publish criticism of defendants, the [a]greement’s purported assignment of copyrights, and the assertion of copyright claims by defendants for the express purpose of preventing the dissemination of [plaintiff]’s [c]ommentary, constitute breaches of fiduciary duty and violations of dental ethics and are subject to the equitable defenses of unclean hands, and, as to such assignment and assertion, constitute copyright misuse.”

Judge Crotty also ruled that

“[Plaintiff]’s  assignment and promise in the [a]greement not to publish criticisms of defendant… are null and void for lack of consideration… [that Plaintiff]’s assignment and promise in the [a]greement not to publish criticisms of defendants are null and void for unconscionability… [that] [t]he [a]greement is a deceptive act or practice in violation of Section 349(a) of the New York General Business Law… and [that] [Plaintiff’]’s [c]ommentary is not actionable defamation under New York common law. “

I will only write about the copyright issues in this case.

Using Copyright to Suppress Speech

This case is interesting because it is a textbook example of a case where a party is using copyright to attempt to suppress speech.

The agreement signed by Plaintiff read, in part, that in consideration for the dentist to agree not to provide any lists of patients or personal information to any marketing companies, the patient would “assign… all Intellectual Property rights, including copyrights, to Dentist for any written, pictorial, and/or electronic commentary.” The agreement claimed that dentists are able to provide such information to third parties because of a “loophole” in HIPAA, the federal medical data privacy law, and added further that “Dentist feels strongly about Patient’s privacy as well as the Practice’s right to control its public image and privacy.” The agreement would last five years from the date of the dentist’s last service to the patient, or three years after the termination of the dentist-patient relationship.

HIPAA, however, forbids covered entities, such as MDs and dentists, from disseminating patient information for marketing purpose, so there is no need for such agreement to protect patient’s privacy.  The complaint argued that, since there are no “loopholes” in HIPAA, the assignment was null and void for lack of consideration. Judge Crotty agreed.

In his March 2013 order, Judge Crotty referred to all these actions as “aggressive and threatening conduct.” Indeed they were.

After Plaintiff had published negative comments on both Yelp and DoctorBase, he first received a letter from “North East PC/Attn Urgent/Legal” [catchy title, eh?] threatening him with a $100 000 lawsuit because he had violated the agreement. The letter, signed “Corporate Practice”, informed Plaintiff that the letter “shall serve [him] as the only notice prior to litigation” and contained a draft of a complaint which appeared ready to be filed, if the Plaintiff did not comply with the letter’s demands. The office of the dentist also sent Yelp and DoctorBase DMCA takedown notices, telling them that the dentist owned the copyright in the comments and asking them to take the comments down.

On October 17, 2011, Plaintiff received a letter from Defendant’s attorney, which stated that his comments posted online included damaging inferences which denigrate, defame, and cast aspersions upon the dentist and the dental office” and that “according to The Ethics of Medical Justice / Dental Justice Agreements, under the Code of Internet Ethics, your comments are not considered constructive commentaries but rather as personal attacks to the office’s well-being and reputation.” Medical Justice is the company which had written the agreement used by Defendant. The Center for Technology and Democracy filed a complaint in November 2011 with the Federal Trade Commission asking it to investigate Medical Justice, and the company has since stopped proposing such agreements to dentists and MDs.

Copyright Registration

But after having claimed that the comments infringed her copyright, and after having threatened to sue Plaintiff for copyright infringement, Defendant argued that there could not be a copyright infringement suit at all. In her memorandum of law to support her motion to dismiss, Defendant had claimed that the suit had to be dismissed because a copyright registration is a pre-requisite to any copyright infringement suit, but that Defendant had not registered her copyright in the comments.

Judge Crotty noted though,  in his March 2013 order,  that Plaintiff does not claim that his own copyright has been infringed, but, rather, that his comments “about Defendants’ hardly defensible practices are subject to copyright protection. Defendant’s argument that the copyright must be registered before relief turns the law upside down.”

Fair Use

Instead, Plaintiff claimed that “non-commercial use of copyrighted materials for criticism and comment is a paradigmatic fair use that is not infringing” and that “[t]he posting of [his comments]… can have no effect on their potential market or value because no such value exists.” On February 27, Judge Crotty agreed on that point.

Misuse 

Plaintiff also sought a declaration that the agreement’s promise not to publish criticisms, the purported acquisition of copyrights in the comments, and the assertion of copyright claims, constituted breaches of fiduciary duty, violations of dental ethics, and were subject to the equitable defenses of unclean hands and copyright misuse.

Judge Crotty agreed with Plaintiff on these points as well, and awarded him $4,766 in damages.

 

This post was originally published on The 1709 Blog.

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

March 16, 2015 · by ·

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

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

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

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

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

First Fair Use Factor: Purpose and Character of the Use

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

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

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

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

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

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

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

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

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

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

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

Fourth Fair Use Factor: Effect on the Market

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

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

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

This post was originally published on The 1709 Blog. 

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

 

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Paparazzi’s Photographs Protectable by US Copyright

February 18, 2015 · by ·

This blog post was first published on The 1709 Blog.

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

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

gossipingladiesSecond Circuit Requires Plaintiff to Have Already Registered its Copyright

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

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

Fair Use Claim Survives Motion to Dismiss

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

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

First Factor: Transformative Use

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

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

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

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

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

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

Third Factor: The Amount Taken

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

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

Fourth Factor: Effect on the Market

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

The case will now proceed further.

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

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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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A Congressional Hearing About Fair Use

February 24, 2014 · by ·

419527851_77ca29a596The House Subcommittee on Courts, Intellectual Property and the Internet of the Judiciary Committee of the House of Representatives, held a hearing on January 28 on The Scope of Fair Use.

What is Fair Use?

The doctrine of fair use, originally created by the courts, is now codified in §107 of the Copyright Act of 1976. The written testimony of Kurt Wimmer, General Counsel for the Newspaper Association of America, provided an interesting recap of some of the early fair use cases in his written testimony.

Fair use is an affirmative defense to a claim of copyright infringement. To assess whether a particular unauthorized use of a work protected by copyright is fair, courts are using four factors enumerated by §107.

They are:

(1) the purpose and character of the use;

(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;

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

No single factor is determinative, but the first factor, purpose and character of the use, is usually considered the more important one by the courts, along with the fourth one, commercial use.

A recent Commerce Department Green Paper stated that fair use is “inherently fact-intensive” (p. 21). Indeed, as the fair use defense is a mixed question of law and fact, it may be difficult to predict with certainty the outcome of a particular case. However, one of the witnesses, Professor Peter Jaszi from American University, provided in his written testimony references to two recent scholarly articles demonstrating that fair use may actually be predictable (Professor Jaszi’s written testimony p. 5).

Some Transformative Works…

The first factor plays in defendant’s favor in a copyright infringement suit if his use of the protected work was “transformative.”  A transformative work was defined by the Supreme Court in 1994 as “add[ing] something new, with a further purpose or a different character, altering the first [work] with new expression, meaning or message.”

That is important, as the purpose of copyright, under article I, § 8, cl. 8. of the  U.S. Constitution, is to “promote the progress of science and useful arts.” If the new work is transformative, the other three factors, even the fourth factor, commercialism, carry less weight.

One of the witnesses invited to testify was David Lowery, who has recently published a list of the Fifty Undesirable Lyric Websites, that is, unlicensed lyrics sites publishing songs’ lyrics without seeking permission.

David Lowery, who is also a songwriter, noted in his written testimony that he receives revenues from some sites, but not from others. From his point of view, this unauthorized use competes with the revenue he receives from licensed sites. The site which made top of his list, RapGenius, allows users to annotate and comment on the lyrics posted.

The example of RapGenius is interesting, as it is a lyrics and text annotation site. Users are invited to participate by adding their own comments and explanations about the lyrics posted on the site. Is this copyright infringement, or should this type of work be protected by fair use? Under §106 of the Copyright Act, the owner of the copyright has the exclusive right to prepare derivative works based upon the copyrighted work, but specifically subjects this right to §107.

Derivative work? Transformative work? What RapGenius does could also be described as mass digitization, which in turn may benefit the public by enabling research and comments. For instance, a blog used RapGenius to write a post about the frequency of some words in rap songs. I was interested reading that ‘crouton’, ‘sushi’ and ‘lobster’ are words shunned by rappers…

Anyway, RapGenius has recently entered into a licensing agreement with Universal Music.

But transformative works do not necessarily create a new work, they also may be transformative because they make a new use of prior protected works.

Not all the witnesses were of that opinion however. Professor June Besek from Columbia University expressed her concerns about this interpretation of a ‘transformative’ work,  noting that this “enables new business models, not new works of authorship. “ Kurt Wimmer testified that the transformative use concept has started to ascend since the late Nineties and that this has “unsettled the marketplace.”

New Uses of Protected Works

Of course, the mass digitization project to trump all mass digitization projects is the Google Books case.

In the recent Authors Guild v. Google case, Judge Denny Chin, from the Southern District Court of New York, found that Google’s mass digitization of books for its Google Books Project was “highly transformative,” as it had created “a comprehensive word index that helps readers, scholars, researchers, and others find books.” Judge Chin concluded that “[i]n [his] view, Google Books provides significant public benefits.”

Judge Chin quoted the Bill Graham Archives v. Dorling Kindersly case where the Second Circuit found in 2006 that the unauthorized use of thumbnails images of Grateful Dead posters in a book was fair use.

Kurt Wimmer testified that he did not agree with the court in the Bill Graham case, while Naomi Novik, a bestselling author who founded the Organization for Transformative Works, instead told members of Congress that, in her view, the use of the Grateful Dead posters was transformative, and did not replace the original work, as the chronological timeline of posters allowed readers to easily observe the transformation of their style throughout the years.

In that case, defendant had published a 480-page coffee table book about the story of the Grateful Dead, using a timeline format through the book which combined more that 2000 images in thumbnail format presented chronologically. Plaintiffs sued over the unauthorized use of seven images.

The Second Circuit emphasized in its first fair use factor reasoning that the work was a biography. Since §107 cites scholarship and research as one of the possible categories of fair use, the nature of the work played in defendant’s (and fair use) favor.

Here, 2,000 images were at stake, a rather modest number. Could  mass digitization be fair use?

Professor June Besek expressed concerns in her written testimony about whether fair use should indeed protect “copying the full contents of millions of works” (emphasis by Professor Besek, p. 3 of her testimony).

For Professor Besek, fair use is “extraordinarily expanding” as copying the content of millions of works may now qualify as fair use, and advised Congress to address the issue of mass digitization which, she believes, “is skewing the law.” Professor Besek concluded her written testimony by suggesting that “Congress might separately address the problems of mass digitization, including whether authors should be compensated for publicly beneficial uses” noting that, right now, compensation is not an option under §107.

A recent Southern District of New York case, cited by Kurt Wimmer in his written testimony, found that Meltwater, a SaaS offering news monitoring services to its clients, had infringed the copyright of the Associated Press when it scraped AP news from online sources using automated computer algorithms. The SDNY did not find the use transformative, as it did not add ”any commentary or insight in its News Reports.”  Instead, Meltwater was acting as a substitute.

However, Professor Jaszi testified that the recent mass digitization cases from the SDNY Google Book cases were “excellent examples“ of the fair use doctrine “fulfilling its purpose.”

Do We Need a Fair Use Reform?

Professor Jaszi does not believe so, stating that “fair use is working.” He warned Congress in his written testimony that “tweaks or improvements… could have serious and adverse unintended consequences” and would discourage new creativity (p.7 of Prof. Jaszi’s testimony).

However, he also testified that fair use could use legislative support, for instance by exempting non-commercial creators of derivative work from potential statutory damages, as this chills the exercise of free speech. Indeed, defendants may be taking a gamble when deciding to go to court, instead of merely taking down the allegedly infringing work after having been contacted by the copyright owner of the original work,as they risk having to pay statutory damages

Professor Jaszi cited while testifying the January 27, 2014 Second Circuit decision, Swatch Group v. Bloomberg, where the Second Circuit found that the unauthorized publication by Bloomberg of a sound recording of a conference call to discuss Swatch’s recently released earning report with investment analysts was fair use.

The Second Circuit held there that:

“[i]n the context of news reporting and analogous activities, moreover, the need to convey information to the public accurately may in some instances make it desirable and consonant with copyright law for a defendant to faithfully reproduce an original work rather than transform it. In such cases, courts often find transformation by emphasizing the altered purpose or context of the work, as evidenced by surrounding commentary or criticism”

The public interest to access information was thus served. In this case, no copyrightable work was created, but useful knowledge has been disseminated, and that benefits the public.

Should Fair Use Law be Updated?

Professor Jaszi does not believe that fair use needs to be updated to adapt to “the new conditions of digital information exchange” as the doctrine is flexible enough to adapt to new practices such as remixes or mass digitization (written testimony p. 6). Kurt Wimmer does not believe the law needs to be changed either, and wrote that the NAAA “believes that the courts, rather than Congress, should … be the appropriate forum for resolving issues surrounding fair use” (written testimony p. 6).

In her written testimony, Naomi Novik urged Congress “to resist any suggestion of narrowing fair use, including by trying to replace it with licensing.”

However, Professor Besek warned in her written testimony that “[a]n increasingly expansive fair use exception risks violating each of the [TRIPS Three Step Test]” as stated by Annex 1C, article 13 of the TRIPS:

“Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.”

It remains to be seen if Congress will undertake reforming fair use law.

Image is courtesy of Flickr user R.B. Boyer pursuant to a  CC BY-SA 2.0 license.


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Appropriation Art and Fair Use

May 24, 2013 · by ·

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

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

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

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

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

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

What is Appropriation Art?

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

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

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

Fair Use Defense

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

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

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

2)      The nature of the copyrighted work

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

4)      The effect of that use on the market

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

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

First Factor: What is Transformative Use?

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

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

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

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

First Factor: The Commercial Use

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

Fourth Factor: The Effect on the Market

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

Second Factor: The Nature of the Work

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

Third Factor: The Amount of the Use

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

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

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

Judges as Art Experts?

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

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

 

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