Tag: Instagram

Court in Richard Prince Case Affirms that “Transformative” Has Boundaries

The big battle over application of the fair use defense has been focused on the highly subjective, often confusing, doctrine of “transformativeness,” which is addressed under factor one of the four-factor test. Factor one considers the purpose of the use, including whether the purpose is commercial; and over the past decade or so, several high-profile defendants have sought to broaden the concept of a “transformative” purpose to encompass any use of a work that results in any new development, from fine art to technology.

The courts have largely rejected this over-broad approach because it would render fair use a boundaryless and, therefore, meaningless aspect of copyright law. And in an opinion delivered last week, we see why it is essential to draw contours around the “transformativeness” doctrine because the “purpose” inquiry so often controls the rest of the fair use analysis.

In a case that I frankly did not realize was still active, the S.D.N.Y. affirmed the significance of a meaningful “transformativeness” consideration when it denied the fair-use-based motion for summary judgment (MSJ) to famed appropriation artist Richard Prince and co-defendant Gagosian Gallery. At issue are photographs taken by Donald Graham and Eric McNatt, which Prince reproduced, displayed, and offered for sale as part of his “New Portraits” series in 2015. The story went viral when Prince created (and sold for six-figure prices) the series of canvasses made from enlarged screen grabs of Instagram posts. Because the main expression in each of the canvasses is someone else’s visual work, which Prince used without permission, photographers and other artists responded with mixed, but generally negative, feelings about the exhibit.

Although I discussed the idea that the “New Portrait” series itself was an artistic and engaging statement about social media, I also noted, regarding the Graham complaint, that finding creative significance in the exhibit itself does not mean that any of the works copied were fairly used. According to the opinion released last week, the years since the MSJ was filed have entailed a lengthy discovery process during which Prince apparently changed his “purpose” statement from a nondescript intent “to make art” to a more assertive claim that the “New Portraits” series is a comment about social media and its role in contemporary culture.

Inconsistency in testimony notwithstanding, the court found Prince’s elaborated statement of intended social message no more persuasive that his use was “transformative” than his originally stated intent to just “make art.” Citing substantial circuit precedent, the district court reiterated the opinion that the user of a protected work must in some way comment upon the work used, not merely use a work to make a statement about something else.

…where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created, the bare assertion of a ‘higher or different artistic use’ … is insufficient to render a work transformative.[1] 

The court found that Prince’s latter testimony about the intent of the series only reinforced the fact that he could have selected any of the millions of images posted to Instagram and that he in no way commented upon or added new expression to the photographs made by Graham and McNatt. Combine the finding that the appropriator could have selected any work for his purpose with the fact that the works used happen to convey the heart of the follow-on expression, and then find the purpose to be commercial, and factor one is likely fatal to the defendant’s claim of fair use. In fact, this opinion, while not articulating anything new, is a good example of how the “transformative” question affects other dispositive aspects of the fair use inquiry.

As usual, the court addressed factor two (nature of the work used) as a simple, binary question finding the photographs in suit to be expressive in nature and, so, favors the plaintiffs with scant discussion on the matter. The factor three analysis (amount of the work used) restates that while it is possible to make fair use of a whole work, this inquiry is dependent upon factor one. “Because Prince’s use is not transformative, his use of nearly the entirety of plaintiffs’ photographs cannot be deemed ‘reasonable,’” the opinion states. [2] The court found that the fourth factor (potential market harm to the work used), “weighs slightly in favor of fair use” based on evidence indicating that Prince’s use does not threaten the market for the Graham and McNatt photographs, but…

…Prince has failed to show that other artists would not be emboldened by his success in declining to compensate plaintiffs for his non-transformative use, which negatively affects the value of the original works.

So, with three factors favoring the plaintiffs and the fourth maybe “partially” supporting the defendants, Prince and Gagosian lose on the MSJ. The consistency of this opinion with Second Circuit caselaw could mean that this litigation is about to settle. On the other hand, the Supreme Court has yet to drop its later-than-expected opinion in Andy Warhol Foundation v. Lynn Goldsmith—another Second Circuit case presenting a similar question on the meaning of “transformativeness.”

Warhol is more complicated than the “New Portraits” case for several reasons, including the fact that it highlights the tension between “transformative” for an unauthorized fair use, and “transformative” for an authorized derivative work. But AWF’s argument is similar to Richard Prince’s—namely that Warhol’s use is “transformative” because it expresses a “new meaning or message.” Thus, the Supreme Court may also find that this is too broad a definition for a prong of the inquiry that so often carries the day. As argued in an older post on Warhol, requiring that some comment on the work used must be present in the follow-on work would be consistent with the purpose of the fair use exception, and it would inject some long-needed clarity into a doctrine that has caused much confusion for all parties.

[1] Warhol v. Goldsmith citing Rodgers v. Koons (2nd Cir.)

[2] Citing Cariou v. Prince (2nd Cir).

Is Instagram (Facebook) Blocking DMCA Takedowns?

When the news broke that Charlie Watts had passed away, Instagram, Facebook, et al naturally bloomed with tributes, editorials, eulogies, and personal notes of gratitude for the late percussionist’s contributions to music. But although the virtual vigil has become standard practice every time a beloved cultural figure passes away, one overlooked difficulty of this and similar trends is that all that sharing is not particularly good for the photographers. Those men and women you likely never heard of who captured the images tend to lose opportunities as a result of all that sharing.

The force that motivates fans to search for that iconic photo of Watts or Ed Asner and add it to their social feeds is, of course, timeliness. But timeliness is also what drives news media and other commercial enterprises to license photos that accompany obituaries, tributes, creative commentary, etc. So, the problem with all that sharing (loving though it may be) is that it dilutes the value of these images, and often during the same periods when interest in the images is at its peak. And that does not even account for the commercial entities that publicly display images without license “because it’s already all over the internet anyway.”

As Martin McNeil, a former pro photographer in Glasgow tells me during an interview, “The only way to preserve the value of your work, truly, is to prevent dilution.” And that is precisely why he sent thirty-four DMCA takedown notices to Instagram directed at pages displaying his photograph of Ray Harryhausen, all uploaded around the May anniversary of the filmmaker’s passing (in 2013). The photo depicting Harryhausen with several of his iconic creature sculptures, was captured at the Edinburgh International Film Festival in June of 2008, and McNeil says he is used to seeing it trend on social media in May and June, corresponding to the observance of Harryhausen’s passing and birthday, respectively. But this year was the first time McNeil says that has ever seen Instagram erect a gauntlet of roadblocks to his takedown requests.

Instagram Exceeding Its Authority Under DMCA

I mention the dilution problem in order to frame the broader economic challenge for visual artists, but the plain fact is that the takedown provision of the DMCA does not require a stated reason for a copyright owner to send a request to an ISP to remove a work. As long as the sender of the notice is the legal owner of the copyright, or an agent of the owner, and the rest of the notice conditions are met, the default terms of the statute require that the ISP “expeditiously remove” the material. More information may be required from the copyright owner if the user/uploader files a counter-notice alleging that the takedown was wrongful (either for administrative or legal reasons), but no questions of that nature apply to the incoherent and legally untenable responses that McNeil received from Instagram regarding his takedown requests.

As McNeil details in a thread comprising over sixty tweets he addressed to Head of Instagram Adam Mosseri, one of his takedowns was honored right away, while the other thirty-three triggered boilerplate emails asking for “An explanation of how you believe the reported content is infringing your copyright.” “I was knocked back on my heels,” McNeil tells me, and for good reason. Because Instagram has no business asking this question. As such, he responded to all thirty-three messages with his own boilerplate, correctly stating that nowhere in the §512 of statute is there a requirement for the claimant to follow up on a properly filed takedown notice with further legal explanation as to why a use is infringing. The fact that Instagram asked the question at all is anathema to the foundation of §512, which was written to immunize platforms as neutral providers that bear no liability for the actions of their users.

After his follow-up responses to the thirty-three emails, McNeil received partial satisfaction, but in a manner that is even more absurd than the first round of responses. Because with regard to eleven his requests, the Insta-minions told McNeil that “…it’s not clear that you have rights to the reported content. In particular, it does not appear that you (or your client) created the reported content, or that you are otherwise authorized to submit this report.” Um. What?

Instagram has no authority under the terms of the statute to allege that a notice sender is not the owner of a work, or agent of the owner, subject to a takedown request. All DMCA forms, by law, contain a statement that, under penalty of perjury, the filer warrants that to the best of his knowledge, that the information provided is accurate. And that is supposed to be the end of the conversation for the ISP. Only the user/uploader of the material is empowered to respond if he believes, in good faith, that the notice filer has misrepresented himself as the copyright owner or agent of same. Remember, the ISP is allegedly neutral under the law, which is why it is shielded from liability in the first place.

So, to add outrage to absurdity, the fact that twenty-two Insta-minions removed McNeil’s photo as requested, while eleven of their Insta-colleagues accused McNeil of lying about his ownership of the same photo, should make any reasonable person ask the obvious question:  WTF is going on at Instagram?  Is this about inconsistency in training among the staff assigned to address DMCA matters? Or is there something special about the eleven uses that Instagram is reluctant to remove? Or is there fresh policy at Facebook/Instagram to slow walk takedown requests and/or construct new obstacles to dissuade rightsholders from enforcement?

After all, the average photographer, especially the one just starting her career, is likely not as legally savvy as Martin, who happens to be pursuing a law degree today. And from Facebook’s point of view, every valid but unsuccessful takedown only serves the company’s strategic interests.

As noted, McNeil says that in his experience, this kind of dithering by Instagram is relatively new behavior, which at least implies that a policy change may be lurking behind the opaque walls at Facebook HQ. But whether the scattershot responses he received are the result of executive suite decisions or cubicle level incompetence, what they do indicate at scale is that Instagram is guilty of noncompliance with the statutory conditions required to retain its “safe harbor” immunity under Section 512.

Assuming McNeil’s experience is not unique (why would it be?) and thousands of copyright owners are lately receiving emails alleging that they are not rightfully authorized to submit takedowns, this begins to look like a strategy which endeavors to avoid expeditious removal of material upon receipt of properly filed takedown requests. If that is what’s going on, Facebook’s attorneys should perhaps look at what happened to Cox Communications when it lost its §512 immunity and ask themselves, WTF are they doing? Because demanding that a notice filer prove, beyond the statutory requirements of the DMCA, that he is the copyright owner, does appear to be an even brighter red-line violation of the conditional safe harbor than Cox’s pattern of avoiding account termination in its litigations with record labels.

Still, McNeil did provide the Insta-minions with the most reasonable proof of ownership available (short of a full-blown discovery process), despite being under no obligation to do so. He sent them side-by-side composites of his Harryhausen photograph next to the relevant Instagram copies, and … nothing. Just a repeat of the same allegations that perhaps McNeil is not telling the truth about being the owner of the work.

The fact that this legally unfounded insult is aggravated by the inconsistency that twenty-two takedowns of the same image were eventually honored is enough to make a sane man weep into the pages of his Kafka anthology. So, when the anti-copyright crowd says that DMCA abuse is a problem, they’re not wrong, except of course about who they say is abusing it.  

Also see story at Fstoppers.

Photo by: pareap

New Class Action Accuses Instagram of Mass Copyright Infringement

On May 19, two California photographers filed a class action suit alleging that Instagram is liable for inducement of copyright infringement, contributory copyright infringement, and vicarious copyright infringement due to the platform’s implementation and promotion of its “embed” function. The complaint begins: “This case is about Instagram’s scheme to generate substantial revenue for its parent, Facebook, Inc., by encouraging, inducing, and facilitating third parties to commit widespread copyright infringement.” Assuming this case proceeds, it could be a doozy, but first a little background.

The Server Rule and Terms of Service

Simply put, when an Instagram user uploads an image to a public account, a third party can cause that image to be displayed on its own web pages by means of copying HTML code that “points” to the image on Instagram’s server without copying the image onto the third party’s server. This act of “pointing” to a file on a host server is referred to as embedding or in-line linking or sometimes just linking.

Since 2007, and until quite recently, the practice of embedding, without making a copy on a different server, was held not to infringe copyright, thereby establishing the judge-made “server rule” in the case Perfect 10 v. Amazon. But more recent jurisprudence, particularly in instances when third-party users are commercial enterprises, courts have recognized that although embedding does not implicate the reproduction right, it still implicates the display right, which is simply common sense to most of us.

If a news organization causes a photograph to be shown on its web page along with a story it publishes, this is unquestionably a “public display” of the work. And the benefit derived by the news organization’s use of the image is a paradigmatic example of a use that requires a license. And that is a digest version of what a New York district court held in 2018 in Goldman v. Breitbart et al, after which several news organizations settled with photographer Justin Goldman for unlicensed display of one of his photographs by means of embedding from Goldman’s Twitter feed.

Thus, after Goldman, the server rule was held (and I think correctly) not to relieve the end-user third party from its obligation to license a work because the use still implicates the exclusive right of public display. At least in the SDNY. Then, in a related case (Sinclair v. Ziff-Davis), photographer Stephanie Sinclair complained that Mashable had caused her unlicensed image to be displayed, via Instagram’s embed API, for one of its articles.

But there, a New York district court articulated nothing about the server rule (or copyright per se) because the judge stated that she had no choice other than to affirm that any user who uploads an image to a public Instagram account grants that platform a very broad license to sub-license works to third parties. As discussed in my post about this ruling, under its TOS, Instagram can even charge fees to third parties for these sub-licenses, but so far, the platforms have not been quite so brazen.

Partly in response to Sinclair, a spokesperson for parent company Facebook stated to Ars Technica, “While our terms allow us to grant a sub-license, we do not grant one for our embeds API.” Ars also reports in the same article (albeit under the banner of whining about “web culture”) that another judge weighing a similar case in the same district (McGucken v. Newsweek) had not been so quick to dismiss the complaint on the TOS-based precedent articulated in Sinclair.

Holding Instagram Liable

None of those cases, of course, implicates the source platforms where the copyright owners originally upload their images. And that brings us to the class action Hunley et al v. Instagram, which alleges that the Facebook-owned platform has intentionally caused chronic third-party infringements of primarily photographic and videographic works. To meet the standards under the allegations filed, plaintiffs will have to demonstrate, to put it in simple terms, that Instagram’s managers knowingly fostered third-party infringements and did so for its own material gain.

But before this case enters that discovery phase, I imagine Instagram will file a motion to dismiss based on both the server rule and the TOS contract to which the plaintiff class has agreed by using Instagram in the first place. In the first matter, it may prove unfortunate for the plaintiffs that this complaint was filed in the Ninth Circuit, where the server rule is precedent, while it is only in the Second Circuit where district courts have articulated that the rule should not extend to infringing the display right. If the California district court defers to the server rule, it may find that the third parties did not infringe and, therefore, no basis for secondary forms of infringement exists. Alternatively, in a potential win for rightsholders overall, courts in the Ninth Circuit will agree with the display right limit, and at least the server rule will cease to be a free pass for parties to infringe visual works.

On the TOS question, the plaintiff class could, at least initially, run into the same problem as Sinclair because the language granting Instagram the right to sub-license is quite clear. Just because a Facebook PR person stated that third parties need to obtain licenses, that does not amend the contract with users (TOS) giving Instagram the authority to grant sub-licenses. The plaintiff class will seek to prove that Instagram is playing games—that although it is not exercising its contractual authority to sub-license, it has instead engaged in conduct to induce third parties to intentionally and chronically infringe works, and it has done so for its own material gain. From the complaint:

Embedding was originally marketed as a new tool to share one’s own photos or videos from one’s Instagram account to ‘your own website or blog.’ But Instagram had other plans that it was less public about, including the embedding of copyrighted works onto third party websites and blogs that were hosted outside of Instagram’s platform. That month [July 2013], Instagram rolled out a ‘pilot program’ with Bleacher Report, Mashable.com. CNN.com, HuffPost.com, and People.com to test drive the new ‘embedding’ tool.

To secretly enhance Instagram’s embedding tool’s functionality and generation of revenue, in 2016 or earlier, Instagram started putting tracking code technology that attached to users’ photos and videos uploaded to Instagram as a means to measure, handle, monitor, track and monetize the most valuable copyrighted works, i.e. the works that generated the most traffic.

Certainly, these allegations (and others in the complaint) are consistent with the manner in which platforms exploit the traffic or data generated by third-party infringements, while claiming to have no involvement in the infringements themselves. As such, especially if the plaintiff class can overcome the server rule hurdle in the Ninth Circuit, this case could prove to be a game-changer for online copyright enforcement. On the other hand, a class action against a giant like Facebook could last a decade or more, at which point the proverbial game may look very different.