Copyright News to Watch

Publishers File Brief in Response to Internet Archive Appeal

On Friday, the publishers in Hachette, et al. v. Internet Archive filed their response brief opposing the archive’s appeal of its loss in district court. IA maintains that its practice of “Controlled Digital Lending” is not copyright infringement under the doctrine of fair use despite the lower court’s fast and resounding decision rejecting that defense in late March 2023. As the lower court stated:

At bottom, IA’s fair use defense rests on the notion that lawfully acquiring a copyrighted print book entitles the recipient to make an unauthorized copy and distribute it in place of the print book, so long as it does not simultaneously lend the print book. But no case or legal principle supports that notion. Every authority points the other direction.

Given the amount of Second Circuit precedent contributing to the district court’s four-day turnaround decision, it is hard to see how IA will fare any better on appeal. But we shall see.

Santos v. Kimmel May Be Entertaining

In a complaint filed in mid-February, American fabulist George Santos accuses comedian Jimmy Kimmel et al. of copyright infringement, fraudulent inducement, breach of contract, and unjust enrichment, all arising from Kimmel’s pranking Santos’s new gig making personalized video messages on Cameo.com. Kimmel allegedly tricked Santos by creating fake customer identities and then, posing as those “customers,” requested absurd material for Santos to record. Kimmel then played five of the Cameo videos on his TV show to mock Santos.

I read the Santos complaint over the weekend, and if the facts presented are accurate, the case could provide some interesting details for copyright nerds. But given that we’re talking about George Santos, the prudent course at the moment is to at least wait for the defendants’ response before commenting.

Goldsmith and Andy Warhol Foundation Settle

In a court filing on Friday, photographer Lynn Goldsmith and Andy Warhol Foundation (AWF) agreed to settlement terms, concluding the landmark fair use case. AWF will pay Goldsmith $10,250 based on the original licensing fee for use of her photo in the Warhol screen prepared for the Conde Nast issue, and it will pay another $11,272.94 in taxable costs. Both parties are responsible for other expenses and attorney fees.

“AWF’s position is that the original creation of the Prince Series was fair use, and that nothing in the Supreme Court’s opinion undermines that view,” the court filing states. Indeed, the legality of the entire Prince Series prepared by Warhol was not addressed in this case. But the clarification on “transformative” use delivered by the Court—and which led directly to judgments against appropriation artist Richard Prince—suggests that AWF should probably not evangelize that opinion in the art world.

More Suing of Generative AI

On March 8^th, authors Abdi Nazemian, Brian Keene, and Stewart O’Nan filed a class-action lawsuit against NVIDIA Corporation, alleging copyright infringement of books for the purpose of training the NeMo Megatron–GPT, a Large Language Model (LLM). The claim rests entirely on the allegation of unauthorized reproduction in the training process, and as with the Chabon lawsuit against Open AI, plaintiffs here accuse the defendant of accessing large volumes of books from dubious sources…

Bibliotik is one of a number of notorious “shadow library” websites that also includes Library Genesis (aka LibGen), Z-Library (aka B-ok), Sci-Hub, and Anna’s Archive. These shadow libraries have long been of interest to the AI-training community because they host and distribute vast quantities of unlicensed copyrighted material. For that reason, these shadow libraries also violate the U.S. Copyright Act.

Given the general consistency in both the legal and factual allegations in most of the cases against generative AI developers, the earliest outcomes could signal a blowout for either creators or the developers. As stated in earlier posts, if the reproduction right is held to be violated in the process of machine learning, it is hard to see how any of the developers overcome that claim. The case to watch is arguably New York Times v. Open AI, because the Times has presented so much compelling evidence that works output by the system are substantially similar to works input by the system. In a close second, is probably Concord v. Anthropic, where music publishers have likewise presented evidence of substantially similar lyrics output by the system.

Medical Illustrator Westwood Files Substantial Claim Against Publisher Thieme

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 23^rd Medical Illustration Detachment with the Army’s 2^nd 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 3^rd 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.

Thus ends the 12^th 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

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