Author: David Newhoff

David is an author, communications professional, and copyright advocate. After more than 20 years providing creative services and consulting in corporate communications, he shifted his attention to law and policy, beginning with advocacy of copyright and the value of creative professionals to America’s economy, core principles, and culture.

Copyright Troll Smackdown Reveals Need for CASE ACT

The wicked deeds of the infamous copyright troll have been cited among the excuses to reject many proposed improvements for copyright enforcement in the digital age. For anyone unfamiliar with the term, copyright trolls (and their cousins the patent trolls), are the ambulance-chasers of IP law. They file often dubious copyright claims with the sole purpose of frightening settlements out of respondents. They work on volume (more claims filed equals more settlements), and the claims themselves will often lack merit outright, or they will fail to follow proper civil procedure.

Enter Richard Liebowitz, a notorious copyright troll, who has been sanctioned multiple times by multiple courts for his conduct and was recently smacked down in very strident terms—first by the Southern District of Illinois and then by the Southern District of New York, on May 7th and 8th respectively. In both cases, both involving claims by photographers, it was Liebowitz’s blatant disregard for civil procedure that raised the hackles of Judges Rosenstengel (Illinois), and Caproni (New York), and the two provided plenty of Twitter material for law hawks to share.

Judge Rosenstengel, in the case Ward v. Consequence, sanctioned Liebowitz for “vexatious and bad faith practice,” referring to him as exemplary of the “worst kind of lawyering.” Judge Caproni of New York, in Chevrestt v. Barstool Sports, also imposed sanctions after expressing her disdain for his recidivist conduct, stating, “Mr. Liebowitz has ‘earned the distinction of being a regular target of sanction-related motions and orders,’ and ‘it is no exaggeration to say that there is a growing body of law in this District devoted to the question of whether and when to impose sanctions on Mr. Liebowitz alone.'”

So, ouch. But these opinions, and primarily the opinion in Ward, reveal why the small claim proposal known as the CASE Act is so essential for independent creators in the digital age—and why it is technically absurd that anyone would argue that the Copyright Claims Board (CCB) would be a venue of opportunity for copyright trolls. First, Judge Rosenstengel is unequivocal in describing how Liebowitz’s trolling is just as toxic to the plaintiff as it may be to a respondent …

“It is a simple matter for the Court to conclude that Liebowitz’s conduct in this case has been irresponsible, unreasonable, and detrimental to the fair administration of justice, harming both Consequence, the Court, and even his own client, who has lost his opportunity to advance what appears to have been a meritorious claim.”

Then, because the claim was likely meritorious, she later explains her rationale for restoring only a portion of Consequence’s legal fees pursuant to Liebowitz’s misconduct, admonishing the respondent thus:

“The Court hopes that Consequence’s remaining uncompensated financial expenditure and the experience of wrangling with legal lampreys such as Liebowitz will serve to ensure that Consequence in the future exercises the merest modicum of caution necessary to avoid misusing the intellectual property of others.”

But it is the following comments from the judge’s discussion that truly sum up the problem faced by so many creators today, and also point to the need for the small-claim alterative called for in the CASE Act …

“Misuse of intellectual property has become a pervasive problem in the internet era and one that is especially pernicious for freelance photographers like Ward, who often lack the resources to pursue claims in court against organizations like Consequence, knowing that even if successful they may receive mere token payments of a few hundred dollars for their work, far less than their legal fees. Aggressive plaintiffs’ attorneys such as Liebowitz, then, can be said to represent the fetid backwash of online media providers’ own persistent and willful disregard for intellectual property norms, and the Court is not overly sympathetic to Consequence’s plea to be made whole.” [Emphasis added]

Arguments for passing the CASE Act can be found in these opinions, along with one very strong counterargument against the implications made by anti-copyright activists that the small-claim CCB would provide a rich hunting ground for copyright trolls. To the contrary, the CASE Act just might be a copyright troll destroyer.

As I opined regarding the Brammer case, Ward presents a scenario in which both parties would likely have come to a much easier and less costly resolution if a small-claim option had existed. Consequence admitted its wrongful use of Jesse Ward’s photograph and would, therefore, likely have been willing to voluntarily submit to the cheaper and less burdensome small-claim tribunal. (As it is, Consequence paid its attorney and Ward got nothing.) I cannot say the same about photographer Angel Chevrestt and Barstool, as the latter seems to have at least some record for “persistent and willful disregard for intellectual property norms,” but less hassle is less hassle for any party.

The opinions written by both judges in these cases provide a glimpse into the troll business model, which appears to depend on certain elements that would be unavailable via the CCB. As mentioned, the troll relies on volume. Point enough $150,000 (statutory damage award) guns at enough targets, and the troll will frighten at least a percentage of those targets to settle claims for several thousand dollars, long before they might ever pay a lawyer to discover whether the claim has merit, or might otherwise fail for the kind of procedural sloppiness alluded to in both of these cases.   

This shotgun approach to litigation would be very difficult in the more constrained environment of the CCB than it is in Article III courts. Unlike the court system, the CCB is a single venue, which has a statutory responsibility to flag repeated claims (even valid claims) filed by any one party, and it has the discretion to limit the number of claims filed by any single party. The CCB is also authorized to ban any party for filing one unmeritorious claim and, as a consequence, throw out all other claims filed by that party.

The CCB may fine a party $5,000 for abuse of the system and/or bar them from filing with the board for up to one year. Add to all that the fact that the small-claim tribunal is voluntary, plus the fact that the lion’s share of the substantially lower damage awards should go to the clients, and the CCB begins to look like a money-losing proposition by the time the troll does the math. In fact, it was designed that way because, contrary to many opinions out there, copyright advocates don’t like trolls either.  

Finally, and perhaps most intriguingly, because the CCB is an alternative dispute resolution forum designed to be used with or without counsel, its availability would leave both complainants and respondents far less susceptible to unwittingly engaging troll attorneys, as seems to be the case in Ward. So, oddly enough, in addition to the intrinsic mechanisms in CASE that were specifically written as anti-troll provisions, the very existence of the CCB could, over time, shrink the market of desperate creators who may inadvertently become the clients of “legal lampreys.” If we, therefore, take a much broader view, not only would the CCB be a poor environment for the troll to ply his dark arts, but the availability of a small-claim option may eventually put a lot of trolls out of business, while still providing work for conscientious attorneys to assist with small claims where that assistance is desired.   

Troll image by: Kaselmeyk

Georgia v. Public Resource: Much Ado About Very Little

I was on the fence with regard to commenting on Georgia v. Public Resource. Its details are arcane, rather dull, and, despite rising to the level of a Supreme Court decision, is generally inapplicable to copyright law. In essence, the Court succeeded in commenting on a matter of contract law because the upshot of this will be that States seeking to hold copyrights in the kind of works at issue in this case will simply amend their relationships with the private third parties that produce such works. I think my biggest resistance to this story was summarizing the facts because holy moly are they boring! So, here they are, cut and pasted from the SCOTUS Syllabus:

The Official Code of Georgia Annotated (OCGA) includes the text of every Georgia statute currently in force, as well as a set of non-binding annotations. The annotations typically include summaries of pertinent opinions of the state attorney general, and a list of related law review articles and other reference materials.  The annotations were produced by Matthew Bender & Co., Inc. a division of LexisNexis Group, pursuant to a work-for-hire agreement with the Code Revision Commission, a state entity composed mostly of legislators.  

Respondent Public.Resource.Org (PRO), a nonprofit dedicated to facilitating public access to government records, posted the OCGA online and distributed copies to various organizations and Georgia officials. The Commission sued for copyright infringement; PRO argued that the entire OCGA, including the annotations, fell in the public domain. The District Court held that the annotations were eligible for copyright protection. The Eleventh Circuit reversed.

So, to clear up one possible confusion about this case, what was NOT at issue, despite some murmuring you may get from the blogosphere, was any question that the law can be copyrighted. It cannot. That question was generally settled in the very first copyright case considered by the United States Supreme Court in 1834 known as Wheaton v. Peters. At issue here were those annotations, the descriptive summaries of either case law or statutes; and there is no controversy as to whether annotations in general can be the subject of copyright. They can. So, what was the big whoop in Georgia v. Public Resource?

The not-so-big whoop came down to the majority’s opinion, written by Justice Roberts, about the relationship between Georgia’s Code Revision Commission and the private party, Matthew Bender, hired to produce the annotations. “Under the agreement, Lexis drafts the annotations under the supervision of the Commission, which specifies what the annotations must include in exacting detail. The agreement also states that any copyright in the OCGA vests in the State of Georgia, acting through the Commission.”

What that boils down to is that because Lexis was contracted under a Work Made For Hire (WMFH) agreement, the Commission is the “author,” and is, therefore, barred by this decision from owning copyright on the grounds that the Commission is acting in its official capacity as an extension of the state legislature. At least that’s what the majority held, albeit after a longwinded tour through the nineteenth century meaning of “author” that I frankly cannot be bothered to summarize here because it hardly matters.

Suffice to say the Georgia decision changes nothing in the longstanding doctrine that works written by judges and legislators, as part of their official duties, may not be copyrighted. But if you read the mercifully crisp dissent written by Justice Ginsburg, joined by Justice Breyer, the distinctions she describes about annotations makes one thing abundantly clear—they are optional. “Annotations aid the legal researcher, and that aid is enhanced when annotations are printed beneath or alongside the relevant statutory text,” Justice Ginsburg writes. “But the placement of annotations in the OCGA does not alter their auxiliary, nonlegislative character.”

States have to make their statutes and court opinions freely available to the public, but they are not obligated to hire a company like Matthew Bender to create annotations that serve as a convenience to the reader. Somebody has to get paid to do the annotating work, and the State’s copyright in the OCGA was just one way to skin that particular cat.

One possible outcome of this decision could be that some states get out of the “official” annotation business, leaving a company like Lexis to still do the work but also own the copyrights. Or the states could simply restructure the way they work with third parties, like dropping the approval process and/or revising the contracts. Or they could just stop producing annotations altogether. So, all in all, much ado about nothing for the Supreme Court, but perhaps a nice respite from larger storms brewing.

Still, Mike Masnick at Techdirt seemed to feel there was a lot to say about this case, presumably because he does present it in his post as a matter in which the state was “locking up its laws under copyright.” That would be a big deal if it were true, but the error explains why Masnick characterizes Justice Ginsburg’s dissent as exemplary of what he calls her “copyright maximalism.” I still maintain, as I wrote years ago, that I have no idea what a copyright maximalist is, but if RBG is one, sign me up. Because just maybe there is a correlation between Justice Ginsburg’s notorious support for authors’ rights and her no-bullshit distillation of this nothing of a case.

Things Creators Can Learn From Seuss v. ComicMix

I listened yesterday morning to oral arguments presented (via video conference) on Monday before the Ninth Circuit Court of Appeals in the case Dr. Seuss Enterprises v. ComicMix LLC. As a quick recap, in 2016, Dr. Seuss Enterprises (DSE) filed a copyright claim against publisher ComicMix over a mash-up book called Oh, the Places You’ll Boldly Go!. The author/illustrator team who created the work used iconic illustrations from various titles in the Seuss portfolio, and combined the images with themes and characters from the Start Trek series. In 2019, a California District Court found that “Boldly” was fair use, applying first and fourth factor analyses that many creators found troubling. 

For deeper dives into the legal particulars, see my post from last August and/or posts here and here by Stephen Carlisle of NOVA Southeastern University. But suffice to say, I think most copyright watchers would agree that the appellate panel also found the District Court’s fair use analysis disconcerting and will at least remand, if it does not overturn the decision. Already quoted on social media by copyright advocates is this riposte by Judge M. Margaret McKeown:

“The district court seemed to take the position that if you take existing expression and then you interspersed it with new expression, you have a transformative work. That is a definition of transformative use that I haven’t seen before. It would seem to sting the notion of copyright protection, and almost everything would be a fair use.”

While it can be folly to read too much into judges’ comments at oral arguments, the panel did seem to express concern with three key points in this case:  1) that the lower court may have erred in finding “Boldly” a transformative work under the first fair use factor; 2) that the lower court applied the wrong analysis in considering the potential market harm to DSE under the fourth fair use factor; and 3) as a procedural matter intertwining the two factors, that even a correct finding of transformativeness does not shift the burden from the defendant to the plaintiff to disprove (or prove) potential market harm under the fourth factor. 

Now, I could break down what that all means, but would frankly rather wait until the court renders its decision, and, in the meantime, note that the complexity implied by these considerations leads to a different proposal I would make to most creators out there:  Don’t do this to yourselves. There are way better places you could go.

If you have talent and a desire to express something to the world—and you would rather spend your time creating works than fighting legal battles—the decisions made by “Boldly’s” authors in this instance provide a pretty good guide (Things 1-5, if you will) for avoiding legal complications, even if you want to parody classic material.  

Thing One – Learn What Parody Is

Thanks, in large part, to the volume of works used in funny YouTube videos and such, the word parody is too often invoked to describe every use of a work for the purpose of comic effect. This is an error, both as a literary and legal definition of parody. As discussed in more detail in this post in 2014, a true parody must comment on the original work being used. When ComicMix attorney Dan Booth was asked about this distinction on Monday, he averred that “Boldly” parodies the original work because Seuss’s character is “individualistic and narcissistic,” while Star Trek conveys themes of “teamwork” and “universalism.” 

While I am in no position to judge evidence I cannot fully review, that sounds like a very slippery (i.e. loose) grasp on any claim to parody. Merely using protected works in a new context does not favor a finding of fair use. If “Boldly” is indeed a parody, it should directly lampoon the values or ideas expressed in “Go” by mocking or critiquing Seuss’s original themes of individual empowerment through imagining possibilities. (And even then, we get into some murky waters with regard to copying visual works for the purpose of commenting on textual expression. But let’s not go there, boldly or otherwise, right now.)

I would further argue that the authors’ use of illustrations from multiple Seuss books militates against a finding that “Boldly” is directly commenting upon “Go.” In fact, one illustration from “Boldly,” shown on this ComicMix post from 2017, depicts two Spocks in the manner of Seuss’s The Zax, and the text actually reinforces a theme of individuality. So, maybe there is real parody in “Boldly” somewhere, but it doesn’t sound like there is.  

Thing Two – A Mashup is Not Automatically Fair Use

At oral argument, Booth described the mashup as an “innovative form that takes different sources and puts them in dialogue with one another.” Okay. But even if that were a universally applied description of the mashup aesthetic, it does nothing to place the form in any special category of consideration under a fair use analysis. 

As a general statement, one can assume that, for instance, two sources “in dialogue with one another” will create a third voice, and that this would be consistent with the purpose of fair use, but any given mashup will be subject to the same case-by-case analysis that will be applied to any other type of use. Moreover, because mashups generally involve works owned by more than one copyright owner, they can invite more than one legal complaint.

Thing Three – Apply an Inverse Rule When Creating Parody

One of the errors I find most troubling in this case, even to hear it presented, is the implication that ComicMix needed to create imitations of Seuss’s visual works in order to convey the parodic nature of “Boldly” (assuming parody is even present). This argument is anathema to what I would describe as an inverse proportion rule that says:  The more widely recognized the original work, the less the parodist needs to copy in order to express a commentary about the work.

Seuss’s illustrations are so iconic and so universally recognized that one need not copy every tittle and jot with the precision of a Talmudic scribe in order to lampoon the work—if indeed parody is the real goal. On the contrary, a true parodist would seek to mock an artist’s visual language by selecting certain characteristics to overstate or understate, rather than create a work that so slavishly mimics the original that an ordinary observer would fail to perceive that any visual parody exists at all.

This is one of the weakest aspects of ComicMix’s appeal to parody in my view—that an average consumer, seeing “Boldly” on a store shelf, might easily think that DSE had produced the mashup. Never mind the trademark implications, but a sendup of Dr. Seuss should be almost immediately recognizable as not Seuss and yet Seuss-like enough to know that a joke is being conveyed. We see examples of effective parody through limited copying all the time. Hence the general fair use guideline, to take only as much of the work as necessary is, in fact, easier to apply when parodying the most recognizable works.

Thing Four – Be More Creative

Let’s be honest. A great deal of the time, making substantial use of existing works—especially works as famous as the Geisel oeuvre—is motivated by marketing more than a burning need to express something new. Again, I won’t judge “Boldly” as a work without being able to read the whole thing—and its creators are experienced professionals—but Seuss is such an obvious source for this kind of appropriation that it is difficult to see such uses as more than gimmicks, seeking to profit off the notoriety of the original. 

My oldest kid and I used to riff on the idea of famous Nazis reading Seuss-like works to children, including the book Oh, Zee Places You Vill Invade (and let’s not get started on the Sneetches with the stars.) But if we had developed that inside joke into a book a la “Boldly,” would it imply transformativeness under a fair use analysis? 

The target of the mockery isn’t Seuss, it’s Nazis. Seuss is merely an obvious context in which to place Nazis for satirical effect, but that would not make this hypothetical use a fair use. More specifically, if we did produce such a book, would we need to slavishly copy Seuss’s illustrations to make the joke work? Nope. Readers would get it through the use of illustrations that evoke Seussness without copying Seuss. 

Thing 5 – Work Around Copyright

Finally, if the goal is to produce new creative works—rather than spend years in copyright disputes—it is worth remembering the many, many stories in which creators start out intending to use existing works and then, by navigating around copyrights, discover new and better ideas that would not have occurred otherwise. Happens all the time. 

I wrote about this process in 2013, and that post was later cited in a paper by scholar Joseph Fishman called Working Around Copyright, in which he describes, in legal-scholar terms, what millions of creators already know: that overcoming obstacles to initial creative instincts tends to produce better results. And when that first instinct is to copy protected works, there’s a good chance that the still-untapped idea is probably much better.