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.

Fourth Circuit in Brammer: A Win for Copyright Sanity. A Guide for Users of Works.

Visual artists should be very relieved by last week’s decision at the Fourth Circuit Court of Appeals, overturning the District Court’s finding of fair use in Brammer v. Violent Hues.  Frankly, fair use advocates should be happy about the ruling, too, because nobody who sincerely cares about copyright should celebrate an error of law.  If a court simply disregards the exclusive rights of authors, as the District Court did in this case, the fair use doctrine becomes a meaningless exception to a non-existent rule. 

“…difference in purpose is not quite the same thing as transformation.”

If I had to pick one takeaway from this case for users of works in the digital age, it would be the citation to this quote from Infinity Broadcasting Corp. v. Kirkwood (1998).  As mentioned many times on this blog and elsewhere, the “transformativeness” test, which became part of the fair use analysis after 1990, is a troublemaker.  For a great summary describing how and why it became a troublemaker, I recommend this three-part post written by Scott Alan Burroughs on Above the Law.  

To stress what a pain in the butt this concept can be, I stated in a recent post that simply “placing a work in a new context” is not “transformative.”  But even using the term “context” is nettlesome because courts may use that term to describe “transformative” uses that are non-expressive.  For instance, the Fourth Circuit in Brammer has provided a handy explanation of the distinction between those uses and the infringement committed by Violent Hues.  The opinion states that there are two viable paths for finding fair use when a contextual (i.e. non-creative) change is “transformative”:  technological uses and documentary uses …

Technological

“In the first category, copyrighted works provide raw material for new technological functions. These functions are indifferent to the expressive aspects of the copied works. For example, we have held transformative the total reproduction of student essays for a plagiarism detection service because the database served an “entirely different function” that was unrelated to the expressive content of those essays.”

Documentary

“In the second category, copyrighted works serve documentary purposes and may be important to the accurate representations of historical events. These representations often have scholarly, biographical, or journalistic value, and are frequently accompanied by commentary on the copyrighted work itself.”

Admittedly, even documentary does not easily fit into the non-expressive family of fair uses because documentary is expressive and, perhaps most importantly, scholarship, biography, journalism, and commentary were already stated among the purposes of fair use fourteen years before Judge Pierre Leval wrote the paper, Toward a Fair Use Standard, which added the concept of “transformativeness” to the fair use test.  

We’ll leave that can of worms unopened for now. Suffice to say that Violent Hues’s publishing Brammer’s photograph on a website to promote a film festival does not describe either of the court’s two contextual fair uses. “What Violent Hues did was publish a tourism guide for a commercial event and include the Photo to make the end product more visually interesting,” states the opinion. “Such a use would not constitute fair use when done in print, and it does not constitute fair use on the Internet.”

It is so easy to click, edit, and repost any image that pausing to consider legality is apparently overwritten as a necessary step.  (And the defendant in this case is a professional image-maker who should have known better.) I’ve said it before in posts about fair use.  There are too many messages whirling around in cyberspace, denigrating copyright owners’ rights and disfiguring the nature of fair use, that it is easy to imagine how a gist of these ideas seeps into the mind of a user about to publish a work he has no right to use. 

For users who would prefer not to wander into the tall grass where attorneys, scholars, and jurists debate the meaning (or lack thereof) of “transformativeness,” there is little need to go there.  The Fourth Circuit in Brammer has provided a pretty basic set of rules for the use of works “in new contexts,” which I presume to summarize as follows:

If you are not engaged in a fairly large-scale technology enterprise using the non-expressive aspects of a corpus of works to power a new and useful system, your use is very likely not “transformative.”

If you are not producing a work, in which you comment upon the used work, your use is very likely not “transformative.”  

If you are not producing a new expression that depends upon altering the used work, your use is very likely not “transformative.”

If, you “find”a photograph online that you think would jazz up your web page, no matter what you think it’s communicating, either get permission, make sure it’s free to use, take your own picture, or license a cheaper picture because your attorney is probably going to fail—at least on appeal—in any attempt to TRANSFORM your lapse in judgment into a sound fair use defense.  

Meanwhile, don’t try assessing “transformativeness” at home when even the legal experts are still arguing about what it means.  As Burroughs addresses in his posts, the “transformativeness” test does not have the caselaw-to-statutory history that produced the four-factor test for fair use codified in 1976.  This is unfortunate because a prospective user of a work should be able to conduct at least a preliminary fair use test without an attorney; and the original four-factor test, while subjective, is much easier without the “transformative” filter.  

Most simply, a user like Violent Hues should jump straight to Factor Four and ask themselves whether the proposed, unlicensed use, if made repeatedly by other parties, would deprive the copyright owner of a market opportunity that is rightly his to exploit.  The unequivocal answer to that question in this case was yes.  If a photographer does not have the right to license his images, then his exclusive rights in the copyright law do not exist; and if those rights do not exist, then neither does the fair use exception or, for that matter, the entire miscarriage of reason that produced this fiasco of a lawsuit.

Skin in the Game: World IP Day 2019

The theme of year’s World IP Day celebration is sports.  And although I’ve never been what you might call a major sports fan, it does occur to me that the business of athletics is about as IP-rich and environment as one might imagine.  Covering all the bases, as it were, the world of professional sports is steeped in every kind of intellectual property you can name—from broadcast rights under copyright that enable the majority of fans to watch games and events, to trademarks and patents for all that equipment, to publicity rights that popular athletes negotiate for their endorsements of goods and services.  And that doesn’t even include all the IP-related activity spawned by sports like photography, journalism, biography, gaming, etc.

The World Intellectual Property Organization (WIPO) summarizes this year’s attention on athletics as follows:

The global sports ecosystem is made up of a complex web of players and commercial relationships underpinned by IP rights. The strategic use of these rights has, to a large extent, enabled the rapid growth of the global sports industry, and will continue to play a central role in the future evolution of sports in a rapidly evolving and evermore technology-driven landscape. A focus on IP and sports also offers significant opportunities to foster the social, economic and cultural development of all nations.

And that’s all well and good from the thirty-thousand-foot perspective, but perhaps one of the most significant narratives in regard to athletics is not so much that we could unpack all the IP related to the career of Serena Williams or Lionel Messi, but that we might instead recognize the significance of IP for the kid who just signed up for little league or junior hockey or Tae Kwon Do.  Because the likelihood that her parents are going to buy equipment online is quite high, and unfortunately the growth of global e-commerce has also fueled a companion growth in e-counterfeiting.  And right now, the safeguards for that new athlete are inconsistent at best.

A counterfeit jersey is bad for business, but it isn’t going to get anyone killed.  That may not be the case with counterfeit ski boots or a face-mask or padding.  While that comment may seem alarmist, the present condition is that online counterfeiting is already outpacing enforcement—especially for any business that is not yet a mega-brand.  I don’t mean to suggest that the mom buying sporting goods on Amazon for will automatically be presented with counterfeits more often than the real thing, but the probability is increasing that she will see counterfeits alongside the real thing and will not be able to tell the difference.

How often have you shopped for a product online and found what you were looking for at a price that seemed unrealistically low?  That’s because the counterfeiter, most likely operating in China, has infringed the brand’s trademarked logo, infringed the copyrighted photograph of the real product to feature online, and will ship you an inferior-grade knock-off made by some company you’ve never heard of and never will.  Again, if it’s earbuds that don’t work well, lesson learned.  If it’s protective gear, different story.

Unfortunately, neither the current legal frameworks nor prevailing cultural attitudes about online infringement have kept pace with the counterfeiters’ ability to move very fast and break many things.  The narrative that began more than twenty years ago as the alleged “victimless crime” of music piracy today frustrates the urgency to address online counterfeiting of physical goods where the clearly-identifiable victims may be consumers buying inferior products and/or small businesses that can been wiped out by rampant counterfeiting.  (See 2018 article in the Atlantic.)

While Amazon states that it devotes considerable resources to weeding out bogus suppliers—and no doubt they do—the fulfillment giant (along with many other e-commerce sites) remains shielded by 90s-era “safe harbors” that indemnify web platforms for third-party copyright infringement under the DMCA and for third-party harm in nearly all other forms under Section 230 of the CDA.  So, inasmuch as Amazon may indeed be working to mitigate counterfeits, the fact remains that, to-date, the company has no skin in the game.  It’s buyer beware.  Except you will not actually see that warning at the top of their webpages.  

And that point raises one of the most blatant hypocrisies when it comes to intellectual property in the digital age.  As a trademarked brand itself, Amazon et al are a beneficiaries of the underlying value of trademark law, which is to foster consumer confidence.  But the brand identities protected by those marks are anathema to the aforementioned lack of liability when it comes to protecting consumers or the trademarks of the legitimate suppliers that sell their products on their platforms.  

To be clear, I’m not dinging Amazon because they’re so terrible but rather because they are the largest and almost certainly the best in the business.  Removing infringing material from Amazon can be costly and time-consuming, but it’s a cakewalk compared to, say, Alibaba whose obfuscating takedown process is like following assembly instructions written in badly-translated Chinese to English.  But foreign-based sites and trade negotiations notwithstanding, it is time to get our own house in order when it comes to the presumed “neutrality” of web platforms, and WIPO’s attention to sports this year makes a good a case as any for doing so.

E-commerce sites like Amazon, EBay, Wal-Mart, et al are not strictly “neutral highways on which goods travel.”  They are toll roads that collect fees for every transaction, and they have brand names protected by law for the benefit of the consuming public.  While it seems neither fair nor tenable to hold these platforms responsible for every bad actor who slips through the cracks, it is likewise unacceptable to resign ourselves to a lazy policy of saying “cracks happen.”  

In this regard, I am reminded of former Senator Franken’s pointed question to Facebook in November 2017 as to why the company could not connect two dots linking American political ads being paid for in rubles and conclude that there might have been a problem.  By the same principle, we should expect a robust data company like Amazon to identify various yellow flags that would indicate the Rawlings product being offered is not the real deal.  So, while it is certainly true that the world of professional sports is complexly intertwined with every type of IP, sometimes it is the most basic stories that make the best policy arguments.  And what can be more basic than buying your kid a batting helmet?