Category: Intellectual Property

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.

Jury finds Kat Von D tattoo does not infringe. But stand by.

Sedlik

Last Friday, a Los Angeles jury returned a verdict that celebrity tattoo artist Kat Von D did not infringe the copyright rights of photographer Jeff Sedlik when she made a tattoo that (it must be said) is strikingly similar to Sedlik’s portrait of Miles Davis. Sedlik filed a copyright infringement suit in response to Kat Von D reproducing an unlicensed copy of the photograph, tracing over printouts of the photograph, making social media posts that include the photograph, and tattooing the Miles Davis image onto the arm of Blake Farmer, a friend and colleague whom she did not charge for the tattoo.

Although this case is far from over, Kat Von D has been quoted in the press as saying, “I’m excited to be done. If we didn’t fight this, it would have done so much harm to an industry that’s already struggling.” I’ll comment below on the industry harm allegation, but Kat Von D’s celebrity status should not confuse anyone into believing that she is the party litigating on principle. Sedlik only filed suit—the first in his career—after Kat Von D refused to have a conversation in response to a letter about the use of the photograph.[1] Sedlik’s view is that artists should respect one another’s rights when it comes to preparing derivatives of each other’s works, a theme lately made clear in the outcomes in both AWF v. Warhol and in Graham and McNatt v. Richard Prince.

Not only will Sedlik appeal, but the results of last week’s trial imply errors by this court and a curious jury verdict because it is not clear that Judge Dale Fischer properly distinguished between questions of law (the court’s purview) and questions of fact (the jury’s purview). To clarify any misreporting in the press and/or social media posts, the jury did not find that the tattoo itself is fair use but found that four of the social media posts depicting Kat Von D working with Sedlik’s photograph to be fair use.[2] The tattoo itself was found by the jury to be non-infringing on the basis that it is not “substantially similar” to the photograph—a verdict that will make many a copyright watcher curious as to how, or why, this jury was instructed to consider the matter. “The question of substantial similarity should never have gone before the jury. That should have been decided as a matter of law.” Sedlik’s attorney, Robert Allen, stated. And probably with good reason.

Ordinarily, the court would separate the non-protected elements of a work (e.g., the facts of Davis’s likeness) from the expression created by the photographer (e.g., Sedlik’s explicit posing of Davis’s hand, lighting, and composition choices) and then determine whether the secondary work copies the expression in the original. This is not analysis performed by a jury. Moreover, in this instance, where there is evidence of copying (e.g., photographs of Kat Von D inking the tattoo with Sedlik’s photograph by her side), Ninth Circuit precedent holds that a substantial similarity test need not be performed at all in order to prove copying by inference. Then, of course, there is the commonsense factor that no reasonable person could look at the images side-by-side and not see that the tattoo copies the main expression in the photograph.

Sedlik photograph of Miles Davis and Kat Von D tattoo.
Sedlik portrait (1989). Kat Von D tattoo (2017)
Social post - Kat Von D copying Jeff Sedlik photo of Miles Davis
Social Media Post ~90,000 likes.

The fair use saga in this trial thus far also raises some questions, including Judge Fischer’s own fair use analysis before trial and the jury’s decision that the four social media posts are fair use. But because there is a lot to unpack, and because the jury found the tattoo itself to be non-infringing as a threshold question, I will leave fair use for a follow-up post.

Trials in the Court of Public Opinion

It is interesting that this case, Warhol, and the recent judgments for Graham and McNatt against Richard Prince all share common elements of fact and law, filtered through cultural perceptions that have little to do with either fact or law. Anecdotally, I would say that sympathies broke almost evenly between Lynn Goldsmith and the late Andy Warhol, both inside and outside the art community. Richard Prince does not earn much sympathy outside certain art salons, and that’s partly because appropriations like “New Portraits” are seen as lazy and uninspired, and because he personally makes strident declarations that piss off a lot of creators.

In a different light, Kat Von D is both popular and sympathetic, especially with her post-trial claim to be litigating on behalf of the tattoo industry, combined with her statement that this case has turned her off ever making another tattoo. I get why this will play well in the court of public opinion, but as a legal matter, the assumption that she was allowed to use Sedlik’s photograph is highly analogous to the assumptions made by Warhol and Prince, also using photographs to make unlicensed derivative works. And they both lost on questions relevant to Kat Von D’s defense.

For example, Von D is on record saying that she could have based the tattoo on any number of images of Miles Davis and didn’t need to use Sedlik’s photograph, meaning there was no justification for her unauthorized use—a concept that was at the forefront of the Warhol case. This militates against her claim that she is defending the industry in general. Although I believe Sedlik is correct on the law in this instance, Kat Von D’s allegation that licensing would cause significant harm to the tattoo industry is questionable, not least because Sedlik presented evidence that tattoo artists do license images.[3]  

As a hypothetical question, if Blake Farmer had presented Kat Von D with the Sedlik photograph and asked her to reproduce it on his arm, would it have been fatal to High Volage, and the entire industry, if she had to reply that she could ink Davis but not that specific image? To be clear, a tattoo artist is free to look at photographic portraits of a subject and then render her own drawing of that subject as a tattoo. If the tattoo artist is good, as indeed Kat Von D is, then the customer gets a quality tattoo of the subject he wants but not an expression belonging to another artist.

Perhaps most damming to Kat Von D’s claim to be defending the industry is the verdict itself. Although I expect the Ninth Circuit will be reversing a few findings in this case, any artist following this story should recognize that were this verdict to stand, it means nothing for tattoo artists in general. Just because one alleged copy is held to be non-infringing on the basis that it is not substantially similar to the plaintiff’s work, this predicts little to nothing about the next potential claim of infringement in the tattoo world, or for artists in any other media.[4]

So, Kat Von D’s declaration to have fought and won on behalf of tattoo artists everywhere is as misguided as it is prematurely announced. On the other side of the equation, Sedlik’s argument, not unlike Goldsmith, Graham, and McNatt, is that it is indeed detrimental to all artists when fellow artists working in any medium copy their work as if it is simply there to be taken. There will be more to say about this case. Stand by.

[1] Sedlik Complaint (Document 1).

[2] Redacted Verdict Form (Document 217).

[3] For example, tattoo “flash” includes images that are licensed.

[4] Also, I wouldn’t expect the same result in, say, a New York court.

Photo source by: korobskyph