Fair Use is Not Always Fair

Photographer TC Reiner sued Watkins Institute and one of its students Ryon Nishimori for copyright infringement when Nishimori incorporated one of Reiner’s copyrighted photographs into a mock advertisement for a classroom assignment, and saved his work on Flickr, along the way removing Reiner’s copyright notice to improve the appearance of the mock advertisement and giving rise to a DMCA claim as well.

Fortunately for the school and the student, the court granted summary judgment that the uses were a fair use under 17 U.S.C. §107.  The Court examined each of the four factors enumerated in the statute:

In evaluating the first factor, the Court considered whether the new work is transformative, and whether the use of that work is for commercial or noncommercial purposes.” The Federal Circuit agreed that Watkins gave the photograph to the students so that the students could learn to create a mock advertisement, not so the students would benefit merely from absorbing the content of the photograph itself. This is a nonprofit educational purpose.

In evaluating the second factor, the nature of the copyrighted work weighs slightly against finding fair use. Courts consider two aspects of the work in evaluating this factor: first, the extent to which it is a creative work enjoying broader copyright protection as opposed to a factual work requiring broader dissemination, and second, whether it is unpublished, in which case the right of first publication is implicated.

In evaluating the third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole also weighs against finding fair use because defendants used Reiner’s entire photograph.

In evaluating the fourth factor, the court said that the burden of proof as to the market effect rests with the Reiner where the challenged use is of a noncommercial educational nature.  The court found a complete absence of proof of any impact on the market for the work.

After weighing all the factors in the light consistent with the purpose of the fair use doctrine, the Court conclude that the school’s educational use of the photograph was fair use.  The court made a similar conclusion with respect to Nishimori’s uses.  Finally, the court found that a DMCA requires knowing or having reasonable grounds to know that removal of Reiner’s copyright notice will induce, enable, facilitate, or conceal an infringement of the federal copyright laws.  The Court said it was undisputed the Nishimori did not know or have reasonable grounds to know that removing Reiner’s name, the name of the photograph, or the copyright tracking number, would induce, enable, facilitate, infringement, and thus did not violate 17 U.S.C. §1202(b)(1).

In the end, the fair use exception of 17 U.S.C. §107 protected the school and its student from liability for using a copyrighted photograph in an academic assignment, but it did not save them from just over two years of litigation, and the accompanying costs.  Just because a use qualifies as a fair use, does mean you are going to be treated fairly.




Just Because You Own a Copy Doesn’t Mean You Own the Copyright

The Estate of Vivian Maier has sued Jeffrey Goldstein and his company Vivian Maier Prints, Inc. for copyright infringement.  Vivian Maier was an American street photographer, who worked for about forty years as a nanny in Chicago’s North Shore, while pursuing photography during her spare time.  Chicago art collector Jeffrey Goldstein accumulated a significant quantity of Maier’s work, includign 17,500 negatives, 2,000 prints, 30 homemade movies, and numerous slides.  Before selling his collection in 2014, Goldstein formed Vivian Maier Prints, Inc., to sell prints.

On April 20, 2017, the Estate of Vivian Maier sued Goldstein for “copyright infringement, trademark infringement, false designation of
origin, unfair competition, unfair trade practices, and cybersquatting under the Copyright Act, 17 U.S.C. §§101 et seq., the Lanham Act, 15 U.S.C. §§1051 et seq., and the laws of the State of Illinois, based on, among other acts, Defendants’ unlawful copying, distribution, sale, and public exhibition of the Estate’s copyrighted works, Defendants’ use of the Estate’s registered mark VIVIAN MAIER, and Defendants’ false portrayal of their activities as officially endorsed or connected with Vivian Maier or her estate.”

Goldstein may or may not have been aware of 17 USC §102, whihc provides:

Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

This statute, which on some levels is intuitive, often leads to some surprising results.  Most of use understand and accept that buying a book doesn’t give the purchase the right to make a movie based upon the purchased  book.  However, it is less intuitive that the purchaser of a painting cannot hang the picture in a public place (because of the public display right), or the purchaser of a movie on DVD cannot show the movie in public (private showing is not prohibited, and is impliedly licensed in any event).  Does he owner of negatives get to make prints of the negatives — the only real use for them?  That would be making a copy of the image, and is arguably an infringement.

Given that Goldstein sold his collection nearly three years ago, and the copyright statute has just a three year statute of limitations, what does the  Estate hope to accomplish with the filing?  Well among other things, it may be a grab for whatever Maier materials Goldstein still has:

Perhaps getting back the materials that Goldstein accumulated is the ultimate goal.  The separation of copyright from the physical work works both ways: while the owner of the physical image can’t exploit the image without access to the copyright rights, the owner of the copyright rights in an image can’t exploit that copyright without access to the physical image.

The Estate also complains about Goldstein using the name Vivian Maier in selling prints of Vivian Maier’s photographs.  The Estate obtained an assignment of Supplemental Registration No. 4057824 on VIVIAN MAIER from another collector of Vivian Maier images, John Maloof, and on March 29, 2017, applied for another registration on VIVIAN MAIER (Application No. 4057824).  Is is really infringement of the Estate’s right to call a VIVIAN MAIER print a VIVIAN MAIER print?


“Begun, the Clone War Has”

Hot on the “heels” of the Supreme Court’s decision in Star Athletica, LLC v. Varsity Brands, Inc., (2:17-cv-02523PUMA SE has sued Forever 21 in the Central District of California (or among other things, copyright infringement in making a product simulating  Puma’s CREEPER, FUR SLIDE, and BOW SLIDE sneakers.

Puma asserts its U.S. Patent No. D774,288 on the CREEPER sneaker:

Puma also asserts its trade dress rights in the CREEPER, as well as in the FUR SLIDE:

and the BOW SLIDE:

And last but not least, citing Start Athletica, Puma asserts copyrights in all three styles:

The asserted expansion of copyright protection to such such designs seems to be the exact thing that Justice Breyer was concerned about in his dissent in Star Athletica.  Are fuzzy flip flops really something worthy of a century or more of protection? Should competitors have to risk substantial awards of statutory damages and attorneys fees, as well as possible criminal penalties to satisfy consumer demand for a product.  As Justice Breyer said (quoting Thomas Jefferson), sometimes costs can outweigh the benefit even of limited monopoly.  Or, more ominously, as Yoda once said, “Begun, the clone wars has.”





Soft Kitty, Warm Kitty, Little Furry Plaintiff . . .

In Chase v. Warner Bros. Enetertainment, Inc., 1:15-cv-10063-NRB (March 27, 2017), Judge Buchwald of the Southern District of New York, granted Warner Bros. motion to dismiss a copyright infringement suit brought by the daughters and heirs of  Edith Newlin, author of the lyrics to Warm Kitty.  Plaintiff’s charged that the song Soft Kitty, popularized by The Big Bang Theory, infringed the copyright in Warm Kitty.

Unfortunately for plaintiff’s they could not prove ownership of the copyright.  While the song was published in an song book that was copyrighted, and the copyright in the collection was renewed, neither the author nor her successors renewed the copyright in the individual song, so their rights lapsed.

Plaintiffs were the victims of the complexities of the 1909 Copyright Act, which are still being felt more than 100 years later.  At least they have a nice, public domain song to comfort them.

Getting a Copyright Registration in Advance Not Only Speeds Enforcement, but it Improves Your Remedies

On January 23, 2017. Forever 21, Inc. sued C Luce, Inc., and Cornerstone Apparel, Inc. for copyright pantsinfringement, selling copies of Forever 21’s Ikat Harem Patent.  Nothing remarkable in the story so far, but was is remarkable that Forever 21 had the foresight to register the copyright in their Ikat pattern back in 2013.  Having a registration is usually a prerequisite to bringing an infringement action.  Furthermore, if the registration is obtained within five years of first publication, the certificate of a registration is prima facie evidence of the validity of the copyright and of the facts stated in the certificate. 17 U.S.C. §410(c).  Finally if the registrations is obtained before the infringement begins, a  prevailing copyright owner has access to an award of statutory damages and attorneys fees.  17 U.S.C. §412.

See Forever 21, Inc. v. C Luce, Civil Action No. 2:17-cv-0553 (C.D.Cal. 2017).

District Court held that Copyright Law Protects Standards that Have Been Incorporated into Federal Regulations

ASTM et al. v. Public Resource, Civil Action No. 13-cv-1215 (D.D.C Feb. 2, 2017) involved 257 of ASTM’s standards and the 1999 AERA standards that have been incorporated by reference into federal law.  Public Resource posted these standards on the internet.  ASTM sued for copyright and trademark infringement, and Public Resource counterclaimed for a declaration that its conduct did not violate copyright law or trademark law. The parties cross-moved for summary judgment.

At the heart of Public Resources Defendant’s defense is the argument that Plaintiffs’ standards lost their copyright protections the instant they were incorporated by reference into federal regulations.  The district court found that Congress has already passed on the question of revoking copyright protection for standards that have been incorporated by reference into regulations, and any further consideration of the issue must be left to Congress for amendment.  Specifically, the court looked to Section 105 of the Copyright Act, which states that “[c]opyright protection under this title is not available for any work of the United States Government.”  Section 101 defined a work of the United States Government as “a work prepared by an officer or employee of the United States Government as part of that person’s official duties.” The court concluded that:

These are the only government-related works that outright lack copyright under the law. For other types of works, such as those commissioned by the government or created under government contract by private parties, Congress chose to make case-by-case decisions and leave the determination of whether private copyright should exist to the federal agency that commissioned or contracted for the work.

Significant to the court was the fact that Congress was aware of the practice of incorporating standards by reference into regulations when it passed the current copyright law, but  made no mention of these incorporated works.  Moreover, the court noted that Congress has determined that online access to the nation’s laws and regulations need not be provided for no cost.

The court concluded that the situation invoves policy balancing that Congress is presumed to have already engaged in, and any further changes to the law in light of new technological developments and resulting changes in public expectations of access to information are best addressed by Congress, rather than this court.

Public Resource also raised due process requirements of access the text of “the law,” including the standards at issue here. The court noted taht four Circuit Courts have considered similar arguments regarding copyrighted works incorporated by reference into state and federal regulations.  The First, Second, Fifth, and Ninth each dealt with similar issues, with mixed results.  The court found that the ASTM standards have not entered the public domain upon their incorporation by reference into federal regulations and do not lose their copyright protection.

When Imitation Goes Beyond Flattery

In a lawsuit filed in the Eastern District of Missouri today, Energizer Brands complained about Spectrum Brands’ “imitation” of its packaging, raising claims of trade dress infringement, false designation of origin, unfair competition,  federal trademark infringement, federal trademark dilution, injury to business reputation, trademark and trade dress infringement, dilution, and unfair competition under state law, and . . . copyright infringement.

Trade dress cases are not unusual, but Energizer had the foresight to seek copyright registrations on some of its packaging:

























These copyright registrations give Energizer an additional path to victory, as well as enhanced remedies if it gets there.  A likelihood of confusion is a requirement for most infringement and unfair competition claims, and the prominent display of a trademark might make it hard to show the confusion is likely.



However, the availability of a copyright claim means that the trade dress owner doesn’t have to establish a likelihood of confusion, merely copying, something that can be shown from the similarity of the packages.

Regardless of whether Energizer is ultimately successful in its lawsuit, today’s filing demonstrates the value of copyrighting packaging and marketing materials.


Losing Control of V

A common client question is: “Can I ‘get in trouble’ for copying a picture, drawing, or cartoon and pasting it into my report, PowerPoint, etc.?”  Before you can answer, they try to answer their own question adding “everyone is doing it, so it must be ok”.  That answer is only half right — everyone is doing it.  It is so easy to copy <CTRL> C and paste <CTRL> V virtually anything you can find in a Google search, and add that extra something to your soporific presentation that only a cat video or epic fail image can provide.

However copying is copying, an fair use does not extend as far as every PowerPoint maestro believes (or hopes) it does. This was most recently illustrated by in a lawsuit filed in the Northern District of Illinois by David Kittos against the Trump Campaign, complaining about their use of his photograph of a bowl of skittles to illustrate a tweet send by Donald Trump, Jr., and retweeted by the campaign, infringed his copyright.

Donald, Jr. probably thought a bowl of skittles is a bowl of skittles.  He obvious did not appreciate the artistry involved in photographing confections in crockery:



Assuming that getting sued meets the threshold for the original “get in trouble” question posed at the beginning of this post, the answer to that question is a resounding “yes,” you can get in trouble for copying other people’s work, even if the leave it carelessly lying around on the internet.  The likelihood of getting in trouble depends upon whether the author of the copied work finds out about it, and whether the author objects to the use.  If your last name is Trump, the answer is almost always going to be “yes” and “yes,” but even if your name is not as famous, if you are copying someone’s work for a business or commercial purpose, there is a chance they will find out about it, and a chance they are not going to appreciate it.

You may have a fair use defense — just as Donald Jr. may have — but you may not be in a good a position to assert it.  When copying and pasting materials in your work, look for materials you created or materials that are in the public domain or that you have permission to use.  If you must use copyrighted materials, make sure that you have a bona fide fair use defense (saving your audience from boredom is not such a bona fide fair use).  In other words, control your <CTRL> V.