Category: Copyright

Medical Illustrator Westwood Files Substantial Claim Against Publisher Thieme

Medical illustrator William Westwood

I met Bill Westwood last year when he contacted me to very kindly ask if I would like to speak to the Association of Medical Illustrators (AMI) about copyright and artificial intelligence. I was aware of medical illustration as a specialized field but didn’t know much about it until I drove up to Albany to visit Westwood at his studio. In business for himself since 1982, the tools and artifacts in his workspace span old and new school—ink and paper alongside stylus, tablet, and large-screen monitor. The bookshelves indicate the substantial amount of research and medical training involved in the craft, and yes, a skull sits on one of the tables, completing the Vanitas tableau.

In a copyright context, I was curious about the creative aspects of medical illustration, assuming the specialty demands rigorous attention to unprotectable facts serving a highly utilitarian purpose. And although that’s true, perhaps the creativity of the illustrator is most essential when the utilitarian demand is most critical. For instance, Westwood showed me illustrations he was making for a plaintiff in an injury lawsuit and described the process of achieving clinical accuracy that also conveys the nature of the injury to a lay jury. I winced at one of the drawings, and he said, “See, that’s just about the right response. Not freaked out, but you get it. Because by the time the plaintiff is in court, she has already healed, so the illustrations tell the jury what really happened to her in the accident.”

A leader in the field and recipient of multiple awards, Westwood was introduced to medical illustration in 1966 during his junior year at Georgia’s Mercer University. A professor had given him a poor grade in a design class, and when he confronted her about it, the ensuing conversation included her recommendation that he look into the medical specialty. Westwood had never heard of medical illustration, but when the head of the art department arranged a visit to the graduate program in Augusta—one of four in the country at the time—Westwood was hooked. “Within a matter of a couple of hours, my mind was totally blown, and I said this is what I gotta do,” he explains in a video profile produced by WMHT.

Drafted into the Infantry during the Vietnam War, Westwood had to postpone the final year of the three-year graduate program, but he was fortunate to avoid combat when he was attached to the 23rd Medical Illustration Detachment with the Army’s 2nd General Hospital in Landstuhl, Germany. After the service and completing the Augusta program, he worked as the Surgical Illustrator at the Mayo Clinic, where he met the Head of Plastic Surgery, Dr. Ian Jackson, a star in the field. In 1982, Westwood opened his own studio, and shortly thereafter, Dr. Jackson contacted him about providing the illustrations for what would become a landmark textbook entitled Jackson’s Local Flaps in Head and Neck Reconstruction.

First published in 1985 by Mosby, Westwood drew 527 illustrations for the book and, by contract, retained his copyright rights in the images. Dr. Jackson has passed away, but his original textbook is now in its 3rd edition, retailing on Amazon for over $300, and is today published by Thieme. One problem, though:  around 400 of the now-colorized original illustrations still appear in the book without attribution to, or license by, Bill Westwood. After attempting, through his attorney Ed Greenberg, to resolve the matter outside court, Westwood filed suit last month against the publisher, naming current authors, Drs. Peter Neligan, David Mathes, and Brian Boyd as co-defendants. A response is due in a few weeks, and I am curious as all getout as to what the defense will say about this one.

The alleged infringements appear to suggest one those instances when intellectual property is transferred by sale—Thieme is the third to publish the title—but nobody is being careful about all the rights and contracts attached to the property. Either that, or someone made an affirmative and unwise decision to both prepare unlicensed derivatives of Westwood’s illustrations and to remove his name and notice of copyright from the book.

Although a notice of copyright is no longer required, removal of a notice with intent to infringe is a violation of law, and at the very least, the removal of a notice weighs against any attempt by a defendant to claim “innocent infringement.” Also, it seems rather difficult to claim innocence while revising material in a nearly 400-page textbook that’s been around for 40 years. Willfulness is a big deal here because if Westwood proves the infringement was willful, the maximum statutory damage award is $150,000 x “at least” 397 images, according to the complaint. That’s about $60 million plus attorney fees, if the case goes that far.

I contacted Ed Greenberg, who’s been practicing copyright law for about as long as the textbook has been around. “I don’t go to court without a solid case, and we sent Thieme a seven-page letter asking them if they could produce any exculpatory evidence—anything showing that they had reason to believe they had a right to use Bill’s illustrations. And we received nothing.”

In the same way that Westwood’s illustrations provide the above-mentioned injury case with insight that words cannot convey, I imagine the customer who buys Dr. Jackson’s book would find its value substantially diminished without the illustrations. As such, and given the scope of the entire project, a case like this confuses me. I get why certain parties, especially individuals, make infringing use of one work or make poor assumptions about fair use. But Thieme is a global operation as a publisher. How does nobody check the licensing status of several hundred images being reused in a new edition? You would think somebody might ask the $60 million question, but we’ll see what Thieme et al. say in response.

It’s Fair Use Week again, but the party’s over.

fair use week 2024

Thus ends the 12th Annual Fair Use Week, and after the Warhol decision, it must be asked whether the parties who invented this holy week of the copyleft intend to continue the farce much longer. As a refresher, the fair use doctrine has been part of the U.S. Copyright Act since 1976 and a subject of judge-made law since at least 1841. So, why did certain parties begin celebrating Fair Use Week in 2013, and to what end? As stated in past posts, celebrating fair use is not comparable to something like Banned Books Week. The latter is a simple enough concept—namely, to oppose book banning on principle by highlighting and celebrating the titles that have been targeted. There is no complexity or nuance to consider beyond book banning is wrong, if that is one’s view, and it is certainly mine.

By contrast, fair use is not the antithesis of copyright protection for creative works, but a limiting doctrine that expands or enlarges the foundation of copyright’s constitutional purpose to promote progress. For instance, a follow-on work that makes fair use of a prior work is also protected by copyright’s exclusive rights, so the doctrine is complex and nuanced even before one gets to the application of a fair use defense in court. But Fair Use Week, since its inception, has been a PR tool of the “free culture” movement led by various anti-copyright scholars advocating a more expansive reading of the doctrine. By my lights, the campaign has done little for ordinary creators other than to sow confusion and, quite possibly, help certain parties get themselves into legal trouble.

Now, after the March 2023 Supreme Court ruling in Andy Warhol Foundation v. Goldsmith, the tip of the spear in the “fair use” campaign has been shorn off by Justice Sotomayor and thrown back to the year 1994. Or as stated in one of two recent academic papers, “Warhol drove a dagger into the free culture movement’s critique of copyright law.” In tandem, the two papers written by Professors Shyamklrishna Balganesh, Peter Menell, and Lateef Mtima, cite the legislative difficulty in codifying the judge-made fair use doctrine into the 1976 Act and illustrate a broad recognition of the doctrine’s inherent tension with the copyright owner’s exclusive right to “prepare derivative works” (§106(2)).

The Balganesh/Menell paper describes how the Warhol decision reconciled the concept of “transformativeness” with the derivative work right after years in which lower courts overlooked the distinction. Further, the authors, whose amicus brief was echoed by the Court, assert that the Warhol decision leaves behind a sound test—a “blueprint”—for courts to weigh the long-overlooked distinction between a transformative use and derivative work. The paper states:

The majority opinion in Warhol could not have been clearer in purporting to offer a theory to reconcile the derivative work right with fair use as understood in Campbell. Instead of rejecting the idea of transformativeness, it instead integrated that element into an analysis that would serve copyright’s overall goals.

The Menell/Mtima paper builds on that foundation and proposes that preservation of the derivative work right is essential as a matter of justice, perhaps most especially for new, or lesser-known, or potentially marginalized creators. For instance, citing two famous cases in which the transformative analysis crowded or weakened the derivative right, the authors state:

Both the Blanch and Cariou decisions illustrate the harm from the trampling of the derivative work right. Although Andrea Blanch and Patrick Cariou had not become household names, they were professional photographers looking to support themselves through photography. They had each achieved a modicum of success and no doubt would have been receptive to offers to sell and license their works. Unfortunately, however, copyright’s fair use doctrine veered off the rails at key points in their career, emboldening well-heeled appropriation artists to treat their photographs as free raw material for million dollar projects.

How this Relates to Fair Use Week

The “free culture” movement led by Lawrence Lessig and others who followed is primarily focused on the “derivative work” right. Whether advocating fan fiction, “remix culture” on YouTube, or the alleged right of everyone to rework and reuse material that is deeply ingrained in popular culture, all those purposes imply some form of “derivative works,” which only the copyright owner can legally authorize. The two main prongs of the campaign against the derivative work right have been 1) complaining about copyright duration (an unlikely path to actual revision of the law); and 2) promoting a broad interpretation of “transformative” use under the fair use doctrine.

As Balganesh, Menell, and Mtima describe—and as many copyright experts recognize—between 2006 (Blanch v. Koons) and 2013 (Cariou v. Prince), it was looking a lot like the courts’ interpretation of a “transformative” use might swallow the derivative work right altogether. In summary, there were two key problems in the making: 1) “transformative” was being more expansively interpreted to encompass nearly any use that produces something different; and 2) finding a use “transformative” on Factor One was tending to carry the entire four-factor fair use test with it. In other words, winning on “transformativeness” often meant winning on fair use across the board. In combination, these two judicial trends threatened to erase the boundaries of fair use and obliterate the derivative work right at the same time.

Although many a Lessig disciple might describe Warhol as altering fair use doctrine, this is incorrect. Instead, the 7-2 opinion merely re-sharpened the limits (i.e., meaning) of “transformativeness,” relying substantially on the 1994 opinion in Campbell v. Acuff-Rose to reaffirm that some element of “critical bearing” (comment) must be present to find that the purpose of the use favors fair use. Further, the Court also affirmed in Warhol that the “transformativeness” question is not wholly determinative of the fair use analysis.

In plain terms, the “free culture” movement’s effort to expand fair use doctrine alongside public-facing campaigns like Fair Use Week has lost the fight. The derivative work right endures, and the courts’ understanding of “transformativeness” has been restored to its seminal meaning articulated thirty years ago. If Warhol was the final word on that question, the recent judgment against appropriation artist Richard Prince in the “New Portraits” case was arguably the final act. In light of these events, perhaps the founders and proponents of Fair Use Week might realize that their rhetoric is more likely to confuse and harm creators than help them.

NOTES:

Balganesh/Menell: Going “Beyond” Mere Transformation:  Warhol and Reconciliation of the Derivative Work Right and Fair Use, Columbia Journal of Law & the Arts, Vol. 47, forthcoming 2024

Menell/Mtima: Exploring the Economic, Social, and Moral Justice Ramifications of the Warhol Decision, Columbia Journal of Law & the Arts, Vol. 47, 2024

Photo source by: bondarillia

Internet Archive Introduces “Rice Krispies” Defense in Copyright Case

Internet Archive advances Rice Krispies defense.

When Internet Archive lost resoundingly in the Hachette (book publishers) case, the court rejected its cockamamie legal theory called controlled digital lending (CDL). Then, when a group of record labels (UMG et al.) filed suit against IA for infringing reproduction, distribution, and performance of sound recordings, I wrote at the time that there’s no way IA has an unfounded theory to test drive in this case. Who knew they had yet another cockamamie idea on deck?

In a small, semantic gift to counsel for plaintiffs, IA has argued that the preservation of “hisses, crackles, and pops” on the pre-1978 sound recordings favors a finding that their reproduction, distribution, and performance of those recordings is fair use. “Defendants’ newly devised Rice Krispies argument for fair use here is even less credible than Internet Archive’s previous fabricated fair-use theory for books that the Southern District of New York recently eviscerated,” the plaintiffs’ response states.

At issue is IA’s “Great ’78 Project,” which digitizes, distributes, and digitally streams older sound recordings on the premise that it does so for preservation purposes and to make “rare” recordings available to the public. If the recordings at issue were indeed rare, the project might have a reasonable claim to exceptions under the Music Modernization Act (2018) which allows libraries and archives to make pre-1972 sound recordings available if they make a good-faith effort to determine that the recordings are not commercially available. Here, the record labels present evidence that the relevant sound recordings IA makes available can be found commercially, including on major streaming platforms.

So, because IA does not have a solid argument that the sound recordings at issue are hard to find, it overstates the historic value of the Great 78 Project thus: “Preserving these records as they would have been heard and experienced by listeners at the time they were made approximately one hundred years ago is a critically important part of archiving these works.” Is it though?

If we’re going to play this game, a 78RPM shellac resin disk that has degraded in random ways over the decades, and is then digitized and played via computer in the 2020s will NOT match the “experience of a listener” in, say, 1935. A brand-new disk in 1935 played on a phonograph of the period sounded different to that listener than the file IA produces by acquiring and digitizing that disk in 2018. Relatedly, a serious audiophile will tell you that a pristine vinyl album plays back sounds (overtones, etc.) that are lost in digital reproductions like CDs. Yet, these qualitative distinctions have no bearing on the copyright rights in the sound recordings, whether the reproductions are fixed in vinyl, CD, MPEG file, or crystals.

To the extent that there is some forensic, archeological value in any of the dust and noise in the old grooves of a 78 disk, this implies such a distinctive (if not eccentric) field of research, that it hardly justifies making the material available to the general public via the internet. I think a conservator would agree that the physical disks comprise a valuable collection and that, perhaps, storing a digital archive would be of use, but a conservator might question the historic significance of modern, random damage done to a given disk embodying an old recording. What if two tiny scratches were made in 1973 and 1996? What history is the contemporary listener hearing? Even if we knew that history, how important is the scratch Betty made when she bumped the record player that time Larry tried to cop a feel? It’s not quite the same as, say, the margin notes written by the composer on the original sheet music.

I’ll leave the preservation discussion there, however, because as a legal argument, the Rice Krispies defense is rather soggy. As the response for the plaintiffs states, “Fair use cannot be perverted into forfeiting a sound recording’s protection under copyright law just because the recording is copied, distributed, and performed in something other than its cleanest sound. If ever there were a theory of fair use invented for litigation, this is it.”

Presumably, IA wants to show that for the purpose of “education” or “scholarship,” named in the preamble of the fair use statute, its reproduction and distribution of the sound recordings “as listeners would have heard them a hundred years ago” is sufficient to find that the factor one analysis favors fair use. Notwithstanding the other three factors, even if IA could convince the court that random “hisses, crackles, and pops” are of general cultural value, the archive is overreaching on fair use.

The fair use exception anticipates some new authorship that enhances or expands the value of the work used. In the context of scholarship, this typically means that a scholar uses some portion of a work to author commentary, criticism, or analysis. Further, the scholar’s new work is separately protected by copyright as a new expression. By contrast, IA reproduces, distributes, and performs protected expression (the music recording) mixed with extraneous and random sounds that nobody has authored.

Just because someone might be able to ascribe significance to those random noises, this does not exempt the use under factor one—especially after the Supreme Court in Warhol rejected such broad and vague rationales of this nature. To put it another way, even if a human author were to intentionally add crackles and pops to a sound recording, he would have to prove that those additions comment upon the original work, or his reproduction would be an unlicensed (infringing) derivative work.

IA is trying to fit itself for a fair use defense that no individual, follow-on author could easily advance. Of course, their grasping at fair use is based partly on the fact that IA is an archive providing a useful resource like Google Books. But as they have not presented an argument on that basis (which would also not win), and because they tacitly admit that the Great ‘78 Project falls outside statutory exemptions, it looks once again like the anti-copyright ideology of Brewster Kahle is the reason they’re bringing Rice Krispy Treats to this party. What can I say? The guy’s a cereal infringer.