Right of Publicity and Freedom of Speech Clash in Manhattan

April 27, 2015 · by ·

270710213_23c8d502be_zThis New York Appellate Division case affirmed the First Amendment right of Defendant, a photographer, over the right to privacy of Plaintiffs’ children, whose pictures were taken surreptitiously using a high powered camera lens and became the subject of an art exhibition. The case is Martha Foster et al. v. Arne Svenson, (2015 NY Slip Op 03068).

Defendant Arne Svenson is a photographer. As he explained on his web site, “he has turned outward from his usual studio based practice to study the daily activities of his downtown Manhattan neighbors as seen through his windows into theirs.” The result of this work became the series The Neighbors, which was exhibited in 2013 in New York and Los Angeles, and will be exhibited next year in Denver. Svenson used a telephoto lens,inherited from a bird-watching friend, to take pictures, from his own downtown Manhattan apartment, of people living or working in a  building across the street, without their knowledge, taking advantage of its glass facade and open windows.

Defendant took pictures of Plaintiffs’ minor children, then three and one year old, which became part of the exhibition. Plaintiffs asked the defendant to stop selling these pictures, and defendant took down a picture representing the two children together, but kept offering for sale the picture representing Plaintiffs’ daughter alone. Plaintiffs then sent the gallery a cease-and-desist letter, asking it to take down the pictures from its site and to stop selling them. It complied, but the photographs were shown on several media channels reporting about the exhibition, and the address of the building was also made public.

Plaintiff filed a suit against Svenson, claiming invasion of privacy and intentional infliction of emotional distress. The New York Supreme Court, a court of first instance, denied the claim on August 5, 2013 and granted defendant’s motion to dismiss. Plaintiffs appealed.

(I wrote about the New York Supreme Court case here.)

New York’s Statutory Right to Privacy

New York State does not does not recognize a common-law right of privacy, and its only privacy statute,  New York Civil Rights Law §§ 50 and 51, is a right of publicity statute. The Appellate Division provides a short history of the New York privacy law in its discussion.

Under § 50, “[a] person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.” § 51 of the statute provides for injunctive relief and damages. As such, the statute only forbids nonconsensual commercial appropriations of the name, portrait or picture of a living person. If the person whose likeness has been appropriated consents to this use, or if the use is noncommercial, then it is not prohibited.

The New York Supreme Court had noted in the Svenson case that “the question… is whether the photographs used by the photographer in a show or as examples of his art qualified as a commercial use or for the purpose of advertising or trade” and that the New York legislature “also sought to protect the constitutional right of freedom of expression.”

Is Selling Art Commercial Appropriation?

The photographs taken by Defendant had been offered for sale. Does that mean that taking them without authorization constituted commercial appropriation? Plaintiffs were arguing that these photographs were bought and sold in commerce. However, the Appellate Division noted that New York courts “have refused to adopt a literal construction [of “for advertising purpose” and “for the purpose of trade”] because the advertising and trade limitations of the privacy statute were drafted with the First Amendment in mind.”

The Appellate Division also cited its own Nussenzweig v. diCorcia 2007 case, where plaintiff, Erno Nussenzweig, had claimed that defendant, Philip diCorcia, had violated his New York statutory right of privacy when presenting in an art exhibition, and selling to the public, a photograph of Plaintiff taken in the streets of New York. Plaintiff argued that the photographer had made a commercial use of his image. Indeed, diCorcia had grossed about $240,000 from the sale of a limited edition of the photographs from this exhibition, and the photographs had been sold for $ 20, 000 to $30,000 each.

The invasion of privacy action was found to be time-barred in Nussenzweig, but two Justices wrote in a concurring opinion that the artwork “constitutes a matter of general public interest entitled to First Amendment protection.” They noted that plaintiff’s photograph had been published “in both the popular press and art media [which] confirm[ed] that the image is “a matter of legitimate public interest to readers” so as to bring its use within the newsworthiness exception to the privacy statute” and that “the inclusion of the photograph in a catalog sold in connection with an exhibition of the artist’s work does not render its use commercial, as plaintiff suggests [because][i]f the image is a matter of public interest, it is immaterial whether that interest is satisfied by viewing the original in a museum, art gallery or private dwelling or by perusing a reproduction in an art magazine or other publication.”

The Appellate Division concurred with the Nussenzweig concurrence. There was no doubt for the court that Defendant’s photographs must be considered works of art, as even Plaintiffs had conceded that Defendant was a renowned art photographer and that he had assembled photographs to present them in an art gallery exhibition.

For the Appellate Division, the fact that Svenson had made a profit from the sale of the photographs does not render the use of the photographs commercial, citing the Stephano v. News Group Publications 1984 case, where the New York Court of Appeals explained that it was the content of the article at stake, but not the publisher’s motive to increase circulation which determines, under the New York privacy statute, whether a particular item is newsworthy, and thus protected by the First Amendment, or merely commercial.

The Photographs are Protected by the First Amendment

New York courts may find that a particular use of someone’s likeness is protected by the First Amendment and is thus outside the scope of New York Civil Rights Law §§ 50 and 51. In our case, the photographs were presented in an art gallery.

The Appellate Division noted that, “[a]lthough the Court of Appeals has not been confronted with the issue of whether works of art fall outside the ambit of the privacy statute, others courts that have addressed the issue have consistently found that they do,”citing as an example the 2002 Hoepker v. Kruger Southern District of New York (SDNY) case, where the court found that that ”a careful weighing of interests” between privacy and freedom of speech is necessary, and must be done by the courts on a case by case basis. This may be particularly difficult if the protected speech is art, as art is not “newsworthy events or matters of public interest” the protection of which prevails over right of privacy, but stated that “New York courts have taken the position in the right of privacy context that art is speech, and, accordingly, that art is entitled to First Amendment protection vis-à-vis the right of privacy.”

Infliction of Emotional Distress?

Plaintiffs had also argued that the photographs had been obtained in an improper manner and thus should not been exempt from being considered as advertising or trade under the statute. They did not, however, cite any authority supporting this position. The Appellate Division took the view that Plaintiffs were thus arguing that “the manner in which the photographs were obtained constitute[d] the extreme and outrageous conduct contemplated by the tort of intentional infliction of emotional distress and serves to overcome the First Amendment protection.”However, the court did not find that Defendant’s behavior had been outrageous, even if the pictures were taken while the children were inside their home, as Defendant’s actions “certainly do not rise to the level of atrocious, indecent and utterly despicable.” Also, the Appellate Division noted that “the depiction of children, by itself, does not create special circumstances which should make a privacy claim more readily available.”

An Appeal to the Legislature

New York, unlike other States, does not have a general invasion of privacy statute, only a right to publicity statute. While the Appellate Division reluctantly affirmed that there was no cause of action for violation of the New York statute, it added that “in these times of heighted threats to privacy posed by new and ever more invasive technologies, we call upon the Legislature to revisit this important issue, as we are constrained to apply the law as it exists.” It remains to be seen if the New York Assembly will hear this plea.

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

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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Streaming of Unique Copies of Broadcast Television Programs Not a Public Performance

April 10, 2013 · by ·

antennaOn April 1, 2013, the United States Court of Appeals for the Second Circuit held in WNET v. Aereo that Aereo, a start-up company located in New York City, which streams broadcast programs and allows its users to watch or record them from their computer, telephone, or tablet, does not infringe the Plaintiffs’rights of public performance.

Plaintiffs were broadcasters of some of the programs streamed by Aereo. They had unsuccessfully tried to bar Defendant from transmitting broadcast television programs to its subscribers during the broadcast of these programs. The lower federal court, the Southern District of New York, denied their motion. Plaintiffs appealed, and the Second Circuit affirmed the order of the SDNY.

Aereo Business Model

Aereo is a start-up company located in New York City. It is only available in New York City for the moment, but the company has plans to expand soon to twenty-two other cities in the U.S.

This is how it Aereo works. Instead of using a roof antenna to receive publicly broadcasted channels, Aereo subscribers lease a tiny TV antenna, which is also connected to the Internet. All the leased antennas are all hosted in Aereo’s facility, not at the subscribers’ homes.

When a particular subscriber decides to watch or record a particular program, a signal is sent to Aereo’s antenna server. The server tunes the antenna assigned to the subscriber to the broadcast frequency of the channel chosen by him. A transcoder, well, transcodes data received by the antenna and sends it to another Aereo server, which saves the program chosen by the subscriber on her directory in a large hard drive.

The subscriber watches the program streamed from the copy of the program in the subscriber’s directory, either live, or by recording it, from her computer, phone or tablet, by accessing her account on Aereo’s site.

Is is an infringement of the plaintiff’s exclusive right of performance? The Court of Appeals said no. Here is why.

Public Performance Right

Plaintiffs claimed that Aereo was publicly performing their protected work without a license.

One of the exclusive rights provided to the owner of a copyright by § 106 of the Copyright Act is the exclusive right to publicly perform the work. Transmitting or communicating a performance using any device or process to the public is also a performance the under the ‘Transmit Clause’ of the Copyright Act.

The district court had found that the case could not be distinguished from the Second Circuit 2008 decision in Cartoon Network v. CSC, and the Second Circuit agreed with that view.

In the Cartoon Network case, Cablevision, a cable company, provided its subscribers with a Remote Storage Digital Video Recorder System (RS-DVR).The Second Circuit had found that each of the RS-DVR playback transmissions to a particular subscriber were using a single unique copy made for that subscriber, and therefore such transmissions were not public performances under the Copyright Act. That is because the subscriber was the only potential audience for that unique copy, and thus the transmission was not made to the public.

The fact that in Cablevision each copy was made for a distinct user and was not shared among users was important, because  the Second Circuit found relevant, when applying the Transmit Clause to a particular case, to consider whether  a copy is distinct or shared. If a copy is shared, the transmission is a public performance as the transmission can be received by the general public. If a copy is not shared, the transmission is not a public performance as only one subscriber can receive that performance.

The facts in the Aereo case were very similar, as each subscriber is assigned his own tiny antenna. The Second Circuit noted that an antenna does not generate multiple copies of each program but that only the user who requested a copy to be made can watch that copy. Therefore, the court concluded that:

“Aereo’s transmissions of unique copies of broadcast television programs created at its users’requests and transmitted while the programs are still airing on broadcast television are not “public performances” of the Plaintiff’s copyrighted works under Cablevision.”

Therefore, it is legal for consumers to stream a broadcast program that is available to them in their local market instead of watching it on their television, even if the company providing the streaming does not pay a licensing fee to the broadcasters. The broadcasters will probably try to have the case reviewed by the Supreme Court. Stay tuned…

Image is Antenna schmantenna courtesy of Flickr user rednuht pursuant to a Creative Commons CC BY-2.0 license.

 

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No Sales of ‘Used’ Digital Music Files

April 4, 2013 · by ·

2606063781_cdfde8a420One of my favorite things to do is to browse a used book store. I almost always find out-of-print books that I never knew could be so interesting. Same goes with buying used LPs. Yes I have some Luddite left in me…

Such browsing can also be done online. However, one is not likely to be able soon to browse a used digital music store. Here is why…

A federal court, the Southern District of New York, held on March 30 in Capitol Records v. ReDigi that the first sale doctrine does not authorize the lawful owner of a digital music file to resell it, even if only one file exists before or after the transfer.

Plaintiff in this case was Capital Records, which owns the copyright in many recordings. The defendant was ReDigi, which, according to its site, is the “World’s First Pre Owned Digital Marketplace.” It describes itself as being a “free cloud service that allows you to sell your legally purchased digital music.”

This is how it works, or worked. A ReDigi user is able to upload his legally purchased digital music files to a remote server, ReDigi’s “Cloud Locker.” The files are stored, and are available to the user for streaming, but he may also elect to sell one or more files. In that case, he can no longer access the digital file which was sold, and exclusive access to this file is transferred to the user who purchased it ‘used.’

The main issue in this case was whether a ReDigi user “migrates” a digital music file when uploading it to the ReDigi server, or if he makes a copy of it. This was important because, under the Copyright Act, the owner of a copyright has the exclusive right to reproduce, distribute or perform the copyrighted work. Also, Section 106(1) of the Copyright Act gives the owner of the copyright the exclusive right “to reproduce the copyrighted work in copies or phonorecords.”

Is transferring a digital file from a hard drive to a server copying that file?

Under Section 101 of the Copyright Act,  a ‘phonorecord’ is the material object in which the sounds are fixed by any method.

“Phonorecords” are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “phonorecords” includes the material object in which the sounds are first fixed.

In this case, the copyrighted work is the digital music file, and the “phonorecord” is the segment of the hard disk where the file is embodied.

ReDigi’s system aims at preventing illegal copying. First, it does not allow music files illegally downloaded or copied from a CD to be sold on its site. It acknowledged, however, that the program it uses to detect illegal copying cannot detect copies stored in other locations than a user’s hard drive. ReDigi’s “Media Manager” program, which users must install on their computers, can, however, detect if a copy of a digital file uploaded on ReDigi remains on a user’s hard drive. In that case, ReDigi contacts the user and asks that the file be deleted. Not doing so may lead to the account being terminated.

ReDigi argued that a user does not copy the musical file he originally had acquired legally, but merely “migrates” it, and thus it is the same file that is transferred from the hard drive of the ReDigi’s user to the ReDigi’s server, and then is eventually sold to another ReDigi user.

The Court was not convinced, finding instead that a reproduction occurs each time a user uploads a digital file into ReDigi’s server. It noted that “[i]t is beside the point that the original phonorecord no longer exists. It matters only that a new phonorecord has been created.”

The Court reasoned that the copyrighted work, fixed in a phonorecord, is copied if it is fixed in a new material object, and therefore the plaintiff’s copyright was infringed each time a digital music file of which Capital Records owns the copyright was uploaded into ReDigi’s server.

The First Sale Doctrine Defense Does Not Excuse the Infringement

ReDigi asserted a first sale defense, but the court disagreed.

Under the first sale doctrine, the owner of the copyright cannot prevent the legitimate owner of a book or a phonorecord protected by copyright to resell or to give it away. That is the federal law which authorizes us to sell or to give away our books, our CDs, and our DVDs. Once the owner of a coypyrighted work has placed it in the stream of commerce by selling it, he has exhausted his exclusive right to distribute the work.

The doctrine was originally recognized by a court in 1908, and has been codified in the 1976 Copyright Act.

Under its section 109(a):

“the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.”

But the first sale doctrine could not be used as a defense, according to the Court, because ReDigi’services infringed Plaintiff’s reproduction right. Additionally,  the first sale doctrine could not be a defense in this case, as it is only a defense if plaintiff claims a violation of his right to distribute.

Also, according to the Court, the first sale doctrine could not protect ReDigi as it only protects the legitimate owner of a copy or a phonorecord, and the digital music files sold on ReDigi’s site were not lawfully made under the Copyright Act.

Here is what the court said:

“Here, a ReDigi user owns the phonorecord that was created when she purchased and downloaded a song from iTunes to her hard disk. But to sell that song on ReDigi, she must produce a new phonorecord on the ReDigi server. Because it is therefore impossible for the user to sell her “particular” phonorecord on ReDigi, the first sale statute cannot provide a defense. Put another way, the first sale defense is limited to material items, like records, that the copyright owner put into the stream of commerce.”

It looks like we may not be able to resell the digital music we fell out of love anytime soon…

Image is 174/366  courtesy of Flickr user irrezolut pursuant to a Creative Commons CC BY-SA 2.0 license.

 

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