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WORKING WITH FREELANCE LOGO DESIGNERS: A CHECKLIST

• According to U.S. Copyright Law, the freelancer initially owns the copyright to the work (logo) that was created for you.

• Ownership of the copyright does not automatically transfer to you just because you paid the freelancer to design the logo.

• If you hired the freelancer through an online platform such as Fiverr or Upwork, check the platform’s terms and conditions to see if it addresses who owns the copyright to the logo.

• Even if the platform’s terms and conditions state that you own the copyright in the work, at a minimum, get confirmation of this in writing (i.e. email) from the freelancer. Best practice is to include a clause to transfer ownership of the work product and copyright to you in a written agreement signed by you and the freelancer.

• If the platform’s terms and conditions don’t specifically state that you own the copyright, or state that copyright ownership is governed by agreement between the customer and freelancer, be sure to enter into a written service contract with the freelancer which includes a clause to transfer ownership of the work product and copyright to you.

• If you have questions or are uncertain as to issues of copyright ownership, contact an attorney that specializes in representing clients in intellectual property matters, including copyright law.

 

Post is for educational purposes only. If you are seeking legal advice, call or email us to set up a consultation today:
☎ 812-492-4478 📧 admin@ipsolutionslaw.com

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A BRIDGERTON TOO FAR – WHEN FAN FICTION BECOMES COPYRIGHT AND TRADEMARK INFRINGEMENT

On Christmas Day 2020, in the midst of a global pandemic, Netflix debuted “Bridgerton”, a new series based on a collection of novels by author Julia Quinn. The series is set in Regency-Era London during the social season, and revolves around the fictional Bridgerton family. The show got generally good reviews in its first season, and in it’s second season became a worldwide sensation. As with anything or anyone famous these days, this resulted in a number of fan pages and “tributes” on social media sites. Among those was a TikTok tribute by started by fans Abigail Barlow and Emily Bear in early 2021. That fandom grew into a 15 song album, The Unofficial Bridgerton Musical, which was released in September 2021 and won a Grammy Award for best musical theater album in 2022. The songs on that album include verbatim lyrics, plot elements and scenes and characters that are lifted from Netflix’s Bridgerton series.

Then, on July 26, 2022, Barlow and Bear performed a live, for-profit stage show entitled “The Unofficial Bridgerton Musical Album Live in Concert” before a sold out audience at the Kennedy Center in Washington, DC. Three days later, Netflix filed suit alleging copyright infringement and trademark infringement in that Barlow and Bear have “taken valuable intellectual property from the Netflix original series Bridgerton to build an international brand for themselves.”

There can be little argument that the Unofficial Bridgerton Musical album and the live performance are derivative works based on the copyrighted Bridgerton series. Likewise, Barlow and Bear’s use of the term “Bridgerton” in its title, absent some other justification, is clearly a violation of Netflix’s trademark rights, notwithstanding the use of the word “Unofficial”. To hold otherwise would be akin to Ricky Bobby’s argument that he could say whatever he wanted so long as it was prefaced by “with all due respect”.

On it’s face, this would appear to be an open and shut case of copyright and trademark infringement. However, there are at least three legal theories upon which Barlow and Bear could prevail – fair use, latches and estoppel.

Does the Unofficial Bridgerton Musical constitute “Fair Use”

The doctrine of fair use permits limited use of copyrighted material without having to first acquire permission from the copyright holder. Fair use is often applied where the subsequent work is being used for purposes such as criticism, commentary, news reporting, teaching, scholarship or research. Four factors must be considered in determining whether the fair use exception applies:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • The effect of the use upon the potential market for or value of the copyrighted work.

While no one factor alone is determinative, the first and fourth factors are generally given the most weight. Looking at the first factor, the fact that the live performance was for profit makes it less likely to qualify as fair use. Unless the live musical performance can be considered “transformative” – a use that adds something new, with a further purpose or a different character”, the first factor is likely to weigh heavily in favor of Netflix. With regard to the fourth factor, Netflix alleges that the live performance adversely affects its ability to profit from its own planned release of a live event entitled “The Queen’s Ball: A Bridgerton Experience.” Given the commercial nature of the live performance, it is difficult to imagine a court siding with Barlow and Bear on a fair use defense.

Laches and Estoppel – Did Netflix waive its right to object to continued and/or further use?

Even according to the complaint filed by Netflix, they took little more than token efforts to stop the infringing actions of Barlow and Bear for more than a year and a half. The doctrines of laches and estoppel provide for the denial of claims of infringement where the claim is not acted on in a timely manner.

When asked about the impending release of the Unofficial Bridgerton Musical Album in a September 2021 interview, Barlow stated “Ask and you shall receive. Netflix was very, very supportive”  suggesting that Netflix may have given permission. Netflix’s own complaint admits that they knew about Barlow and Bear’s Bridgerton inspired TikTok posts as early as December 2020. Although Netflix alleges that they repeatedly told Barlow and Bear that their works were not authorized, Netflix did nothing to stop those unauthorized works until after the live musical performance in July 2022. The complaint specifically states that Netflix believed that it “would be consulted before Barlow & Bear took steps beyond streaming their album online in audio-only format.” Is that an acknowledgement of permission? Time will tell.

How will the outcome of this case affect fan fiction in the future?

If the case proceeds to trial, which is rare in intellectual property litigation, the court’s decision could have a significant affect on fan fiction activities in the future. If the court sides with Brown & Barlow and finds that the doctrines of laches and estoppel prevent Netflix from asserting claims of copyright and trademark infringement, you can expect movie and music producers like Netflix to be far more aggressive in pursuing posts on TikTok and social media that make unauthorized use of their materials. On the other hand, if the court rules in favor of Netflix, there may be a chilling effect on fan fiction posts on social media in the future. While this may better protect the intellectual property interests of companies like Netflix, the support from fan fiction posts is certainly good for their brand too. In the end, the best interests of both parties is likely better served by maintaining the status quo rather than having the courts draw a line in the sand that may not be good for either.

 

 

 

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WHY THE COPYRIGHT INFRINGEMENT SUIT OVER TOP GUN MAVERICK MAY CRASH AND BURN

As of the writing of this blogpost, Top Gun Maverick is the top grossing film of 2022, having earned $401.8 Million at the box office to date. You may also have heard that shortly after the movie’s release, the family Ehud Yonay, the author whose 1983 “Top Guns” article inspired the original 1986 “Top Gun,” filed suit against Paramount Pictures alleging copyright infringement. The suit alleges that in 2018 Yonay’s heirs acted to recapture the rights to Yonay’s 1983 article, and, without their blessing (aka a license or assignment), Paramount’s 2022 sequel constitutes an infringement of elements of Yonay’s original story.

TALK TO ME GOOSE – WHY DO THEY CLAIM COPYRIGHT INFRINGEMENT?

The suit alleges that Ehud Yonay is the author of the original 1983 “Top Guns” article which appeared in the little known California Magazine. Shortly thereafter, Paramount acquired the rights to the story from Yonay for its 1986 motion picture “Top Gun”, which was a blockbuster success. For years it has been rumored that a Top Gun sequel was in the works. Top Gun: Maverick was originally scheduled to release on July 12, 2019, but was postponed, first to June 26, 2020, and then, after several more delays due to the Covid 19 pandemic, it was finally released on May 27, 2022.

There is a provision in the Copyright Act that allows an author to recapture the copyright to the author’s original material, after a set period of time – in this case between 35 and 40 years after the date the rights were transferred. Those rights can be recaptured by simply serving advance notice of the recapture on the original grantee, and recording that notice with the U.S. Copyright Office. Yonay’s heirs allege that the properly did that in January of 2018, by sending Paramount notice that it was terminating the transfer and recapturing the copyright effective January 24, 2020, and recording that notice  with the Copyright Office.  They contend that on January 24, 2020, the copyright to the Top Guns story reverted to Yonay’s heirs.  The suit alleges that Paramount deliberately ignored Yonay’s recapture of the copyright and proceeded with completion and release of the 2022 Top Gun: Maverick sequel without re-securing the needed rights to the original Top Guns story from Yonay’s heirs.

MAYDAY, MAYDAY, YONAY’S IN TROUBLE

While Yonay’s heirs may not be in a flat spin heading out to sea, we have reviewed the complaint and have more than a few concerns as to whether the complaint for copyright infringement can survive a motion for summary judgment. The first concern is whether Yonay’s heirs have standing to bring the suit in the first place. That is, are they the proper party who is the owner or a registered copyright in the Top Guns article. The second concern is one of timing. Was the film “completed” before the termination of rights that allegedly became effective on January 24, 2020?

DID THE HEIRS SLIDE INTO THE COPYRIGHT OWNER’S SPOT?

As we advised in our August 2019 Blogpost – you can’t bring an action for copyright infringement unless and until you register, or attempt to register, your work with the U.S. Copyright Office. So unless Yonay’s Top Guns article was properly registered with the U.S. Copyright Office, his heirs cannot bring suit. The complaint alleges that Yonay’s Top Guns story “was registered in the U.S. Copyright Office on October 3, 1983 (Reg. No. TX0001213463).” However, a closer look at that copyright registration reveals that this statement is not entirely accurate. Reg. No. TX0001213463 is for a “serial publication” and lists issues of the California Magazine published between February 1983 and January 1984 as being covered under the registration. Thus, the registration does not appear to specifically cover Yonay’s Top Guns story. Further, the owner of the registration is listed as being California Magazine, Inc. Therefore, it does not appear that Yonay, nor his heirs, are the owners of the claimed copyright registration. While Yonay’s heirs may claim that the spot was theirs and they didn’t slide into it, the registration which they claim gets them in the door does not help their case.

NEGATIVE GHOST RIDER, THE PATTERN IS FULL – YONAY’S TERMINATION MAY BE INVALID

Yonay’s heirs claim that Section 203 of the Copyright Act gave them the right to terminate the rights that had previously been granted to Paramount in the 80’s. However, the statute specifically and unambiguously states that the right to terminate a license or transfer of rights in a copyright does not apply to works for hire. The registration upon which Yonay’s heirs rely further indicates that California Magazine, Inc. was an “employer for hire”. So, there is a significant question as to whether Yonay or his heirs even had the right to terminate under section 203 as claimed, since it specfically does not apply to works for hire.

HIT THE BRAKES, AND MAYBE HE WON’T FLY RIGHT BY – TIMING IS CRUCIAL

Filming for Top Gun: Maverick began in May 2018, and it was originally scheduled to release on July 12, 2019. Had things gone as planned, the film would have been released well before the effective date of Yonay’s termination in January 2020. But the release, as often happens with large budget films ,was postponed to June 26, 2020. Then, after several more delays due to the Covid 19 pandemic, it was finally released on May 27, 2022. In this case, hitting the brakes caused the collision, where Yonay may have merely flown by if things progressed on schedule. Yonay’s heirs allege that “Maverick” did not finish the production in 2019, prior to the transfer of the copyright, but rather in May 2021. It is unclear when Paramount officially completed production of Maverick, but that timeline will likely play a critical role in the case.

HOLLYWOOD (PARAMOUNT), YOU LOOK GOOD

While it’s early in the case and many facts have yet to be revealed, Yonay’s heirs are no where near achieving missile lock tone on making a sucessful case against Paramount. If you have questions about copyright matters affecting you, we’d be happy to be your wingman. Contact us to see how we can help you lock in your rights!

 

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2022 Party Over its Out of Time – Does Andy Warhol’s Illustration of Prince Infringe Lynn Goldsmith’s 1981 Copyrighted Photo?

A Case of You – What Brought this About?

In 1984, artist Andy Warhol created a series of silkscreen prints and pencil illustrations depicting the musician Prince (Warhol’s illustration is shown above on the right). Warhol’s prints and illustrations were based on a photograph of Prince that was taken by photographer Lynn Goldsmith in 1981 in which she holds copyright (Goldsmith’s photo is shown above on the left). Goldsmith licensed the photograph to Vanity Fair magazine for use as an artist reference. Unbeknownst to Goldsmith, that artist was Warhol. Also unbeknownst to Goldsmith (and remaining unknown to her until 2016), Warhol did not stop with the image that Vanity Fair had commissioned him to create, but created an additional fifteen works, which together became known as the Prince Series.

The Question of U – What is Fair Use?

Copyright protection extends both to the original creative work itself and to derivative works, which it defines as, in relevant part, “a work based upon one or more preexisting works, such as a[n] . . . art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.”

The fair use doctrine seeks to strike a balance between an artist’s intellectual property rights to the fruits of his/her own creative labor and the ability of others to express themselves by reference to the original work. The statute provides a nonexclusive list of four factors that courts are to consider when evaluating whether the use of a copyrighted work is “fair use.” These factors are:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fair use determination is an open ended and context-sensitive inquiry, “not to be simplified with bright-line rules[.] . . . All [four statutory factors] are to be explored, and the results weighed together, in light of the purposes of copyright.”

Controversy -Transformative Work or Derivative Work?

While a determination of whether “fair use” exempts a work from infringement, this post, and the case involving the Prince Series, focuses primarily on the first factor – the purpose and character of the use. This factor requires consideration of the extent to which the secondary work is “transformative” or “derivative” in nature. In making this determination, one must consider “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” The intent of the artist to create something of a different nature or character is not controlling.  Rather, one must consider how the secondary work may “reasonably be perceived” in relation to the original work.

Congress, in defining “fair use” in the Copyright Act, specifically recognized certain uses as being transformative. Criticism, comment, news reporting, teaching, scholarship, and research are all considered by statute to be “transformative” and thus not an infringement. The Supreme Court has further recognized parody as transformative in that it “needs to mimic an original to make its point”. In each of these situations, it is quite easy to see how the secondary work serves a manifestly different purpose from the original work itself.

The “transformative uses” listed in the statute are not exclusive. Courts have determined many secondary works to be transformative that do not fall into these enumerated categories.  For example, in another case similar to this one, a court considered secondary works that incorporated, among other materials, various black-and-white photographs of Rastafarians
from the primary work. In determining that at least some of the secondary works were transformative, the court observed that the secondary artist had incorporated the primary photographer’s “serene and deliberately composed portraits and landscape
photographs” into his own “crude and jarring works . . . [that] incorporate[d] color, feature[d] distorted human and other forms and settings, and measure[d] between ten and nearly a hundred times the size of the photographs.”

On the other hand, lets consider a film adaptation of a novel. Such adaptations commonly add a significant amount to their source material: characters are combined, eliminated, or created out of thin air; plot elements are simplified or eliminated; or new scenes are added to name a few. These modifications are further filtered through the creative contributions of the screenwriter, director, cast, camera crew, set designers, cinematographers, editors, sound engineers, and myriad other individuals integral to the creation of a film. Courts have long recognized that “[w]hen a novel is converted to a film . . . [t]he invention of the original author combines with the cinematographic interpretive skills of the filmmaker to produce something that neither could have produced independently.” Despite the extent to which the resulting movie may transform the aesthetic and message of the underlying literary work, film adaptations are almost universally considered to be derivative works rather than transformative. For instance, even though one familiar with his work can readily recognize the Godfather films as a product of Francis Ford Coppola, they nonetheless are still too closely based on the novel by Mario Puzo to be considered transformative.

Nothing Compares 2 U – Goldsmith’s Photo compared to Warhol’s Illustrations

One can see that in the case of the Prince Series, there is no clear cut answer.  Warhol’s secondary work cannot reasonably be perceived as commentary, criticism, parody, or any of the other recognized uses that are routinely considered transformative.  On the one hand, Goldsmith argues that the pose in which Prince is depicted in her photo bears a number of striking similarities to the pose in Wahol’s illustration – the angle, expression, even Prince’s hair style are “substantially similar”. Goldsmith further argues that in copying these aspects of her photo into his illustration, Warhol has failed to transform the meaning or message of the work into something different from the original. Goldsmith concludes that the Warhol illustration shared the same purpose as her photograph and retained its essential artistic elements, and therefore is not transformative.

Warhol, on the other hand, points to the removal of certain elements from the Goldsmith Photograph, such as depth and contrast, and embellishing the flattened images with “loud, unnatural colors” as transformative in portraying Prince as an “iconic” figure rather than the “vulnerable human being” depicted in Goldsmith’s photograph. While these changes clearly turn the work into something that is readily recognized as a work by Warhol, the appeals court considered this to be akin to the adaptation of a novel into a film. Just as Coppola’s adaptation of Puzo’s The Godfather was not transformative, even though it is readily recognized as a Coppola film, the court concluded that Warhol’s adaptation of Goldsmith’s photo was not transformative.

Sign O’ The Times – SCOTUS to make final decision

On March 25, 2022, the U.S. Supreme Court agreed to review the appellate court’s finding that the Worhol painting was not transformative. The Court could either side with the lower court finding that the Worhol work was transformative, or affirm the appeals court finding that it was not. In any event, the Court will almost certainly give some additional guidance on how to apply the fair use test to determine when such works do, or do not, qualify as a transformative use that does not infringe. The Court isn’t expected to hear the case until the fall term commences in October, so a decision won’t be made until probably sometime in early 2023. Stay tuned and we will provide updates when the case is heard and decided.  In the meantime, if you have issues or concerns regarding copyright infringement, contact us – we would be happy to help you!

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SOCIAL MEDIA POST MAY FORFEIT COPYRIGHT PROTECTION

Posting your artwork or photographs to social media sites Instagram and Facebook (and possibly others) may forfeit your ability to prevent copying by other users. Best case scenario – you give control to the social media platform (Instagram or Facebook) as to how, where, when and under what circumstances the image can be reused.  Worst case scenario – you grant a license to any other user on that platform to use the image and the works depicted therein without paying you or getting your approval as to how, where and when the image will be used.

BEST CASE SCENARIO – INSTAGRAM OR FACEBOOK HAS CONTROL OVER HOW, WHEN AND WHERE OTHERS CAN USE YOUR WORK

Copyright protection for a work of authorship (photographs, videos, graphic designs, paintings, sculptures, songs, etc.) attaches upon creation of the work and the author owns the exclusive right to control the use and reproduction of that work. Copyright ownership gives the holder of the copyright in an original work of authorship the following exclusive rights:

  • The right to reproduce and make copies of an original work;
  • The right to prepare derivative works based on the original work;
  • The right to distribute copies to the public by sale or another form of transfer, such as rental or lending;
  • The right to publicly perform the work; and
  • The right to publicly display the work.

The author may, by agreement, transfer that right to another party or parties.  This is typically done by way of an assignment, where the author transfers ownership of a work to another party, or a license, where the author retains ownership but authorizes another party to use or reproduce the work.  In the case of social media platforms such as Instagram and Facebook, the Terms and Conditions of Use, which every user must agree to before being granted access, have provisions governing the ownership and license of intellectual property rights, including copyright. The relevant portions of the Terms & Conditions for Instagram and Facebook as of the date of this blog are as follows:

INSTAGRAM Permissions from Terms of Use:

When you share, post, or upload content that is covered by intellectual property rights (like photos or videos) on or in connection with our Service, you hereby grant to us a non-exclusive, royalty-free, transferable, sub-licensable, worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content (consistent with your privacy and application settings). This license will end when your content is deleted from our systems.

FACEBOOK Permissions from Terms of Use:

Specifically, when you share, post, or upload content that is covered by intellectual property rights on or in connection with our Products, you grant us a non-exclusive, transferable, sub-licensable, royalty-free, and worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content (consistent with your privacy and application settings). This means, for example, that if you share a photo on Facebook, you give us permission to store, copy, and share it with others (again, consistent with your settings) such as service providers that support our service or other Facebook Products you use.This license will end when your content is deleted from our systems.

TRANSLATION OF LEGALESE:

Note that in both permissions, the license is described as being royalty-free. That means Instagram and Facebook don’t have to pay you a dime for authorized use.  The language in both also indicate that the licenses are transferable and sub-licenseable.  That means that Instagram and Facebook may, without the author’s further permission, authorize others to use the work at its discretion.  Moreover, the rights granted by the license – hosting, using, distributing, modifying, running, copying, publicly performing or displaying, translating, and creating derivative works – when compared to the rights listed above that are granted to the author upon creation, strongly suggests that the licenses applies to ALL rights of the author.  Bottom line – by posting on Instagram or Facebook, you are allowing them (for free) to do anything with your work that you otherwise could do yourself, AND you are allowing them to authorize anyone else they choose (also for free) to do the same.

COURT CASES DO NOT FAVOR THE CREATOR

This is not just my interpretation.  Last year, in two separate cases, the United States District Court for the Southern District of New York came to the exact same conclusion!  The first case, Sinclair v. Ziff Davis, LLC and Mashable, Inc., involved the use of professional photographer Sinclair’s copyrighted photograph entitled “Child, Bride, Mother/Child Marriage in Guatemala”.  Sinclair posted the image on her Instagram account.  Mashable contacted Sinclair to request a license, and Sinclair refused. Shortly thereafter, Mashable published an article on its website which included a copy of the copyrighted photograph by way of an embedded link to Sinclair’s Instagram post.  Mashable filed a motion to dismiss the complaint for copyright infringement, alleging that it used the photograph pursuant to a valid sub-license from Instagram.  The court agreed, finding that Sinclair, by creating an Instagram account, agreed to Instagram’s Terms of Use, and therefore “granted Instagram the right to sublicense the photograph, and Instagram validly exercised that right by granting Mashable a sublicense to display the Photograph.” In the second case, McGucken v. Newsweek, Inc., McGucken, a photographer who focuses on landscapes and seascapes, operated a public account on Instagram where he posted some of his photographs.  One day after he posted a photograph depicting a large lake in Death Valley National Park, Newsweek published an article on its website incorporating the photograph from McGucken’s Instagram post through embedding.  In ruling against McGucken, the court made flattering reference to the judge’s decision in Sinclair, and went on further to say that “insofar as [McGucken] contends that Instagram lacks the right to sublicense his publicly posted photographs to other users, the Court flatly rejects that argument. The Terms of Use unequivocally grant Instagram a license to sublicense [McGucken’s] publicly posted content.”

WORST CASE SCENARIO – ANY USER OF INSTAGRAM OR FACEBOOK CAN USE YOUR WORK HOWEVER, WHENEVER, AND WHEREVER THEY CHOOSE

In its original opinion, without any evidence of an agreement between Instagram and Mashable beyond the Terms of Use, the Court in Sinclair further concluded that “Instagram granted Mashable a sublicense to embed the Photograph on its website, and Mashable exercised its right pursuant to that sublicense.” After Sinclair moved for reconsideration, the Court took a step back from this ruling, but did not foreclose the possibility that such a license may exist solely on the basis of the Terms of Use.  The Court on the request for reconsideration concluded that although Instagram’s Terms of Use clearly authorized Instagram to grant a sublicense to users like Mashable, the pleadings in that case did not contain sufficient evidence that Instagram exercised its right to grant a sublicense to Mashable.  Similarly, the Court in McGucken denied Newsweek’s motion to dismiss on the grounds that “there is no evidence before the Court of a sublicense between Instagram and Defendant.”  Both the Mashable and McGucken cases are still active and further rulings on this issue are expected in the forseeable future.  It is interesting to note that the Court in McGucken specifically stated “that it may be possible to read Instagram’s various terms and policies to grant a sublicense to embedders”, leaving open the possibility that an artist or photographer who posts his or her works on Instagram automatically grants a blanket license to the copyrighted work to all other users!

HOW DOES AN ARTIST OR PHOTOGRAPHER PROTECT HIS OR HER WORKS IN LIGHT OF THESE RULINGS?

With roughly one billion active monthly users, Instagram is almost certainly the most popular public photo sharing platform in the world.  This creates quite a dilemma for artists and photographers.  Posting to Instagram and Facebook is a very inexpensive way to get their works in front of billions of potential patrons and customers.  However, based on the Sinclair and McGucken decisions, the photographer or artist may be giving up his or her rights to receive royalties from other users who copy that work.  Moreover, the artist or photographer clearly abdicates control over the work to the social media platform and/or other users of the platform.  So what can an artist/photographer do to protect his/her rights?  Click here to get our FREE REPORT with details and suggestions on actions that you can take to protect your rights.

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STREET ART – CAN I TAKE A PHOTOGRAPH?

Street Art is artwork that is displayed on buildings, streets, walls, doors, windows, buses, trains, and on other public surfaces.  When applied to walls or barriers, street art is commonly referred to as a mural.  Street art traces its origins to graffiti and vandalism which were historically denounced as illegal and lacking in artistic merit.  However, in the past decade or so there has been a significant shift of street art to the mainstream.  One court recently noted that “street art” has “blossomed into far more than spray-painted tags and quickly vanishing pieces . . . painted by rebellious urbanites. In some quarters, it has become high art.”

COPYRIGHT INFRINGEMENT

Copyright laws exist to protect the rights of artists in their works.  The issue of whether street art is protected under U.S. Copyright laws has recently been decided in favor of the artists. Copyright ownership gives the holder of the copyright the right to: 1) reproduce and make copies of an original work; 2) prepare derivative works based on the original work; 3) distribute copies to the public by sale or another form of transfer; 4) publicly perform the work; 5) publicly display the work, and 6) perform sound recordings publicly through digital audio transmission.

Because it is displayed in public areas, street art is easily copied by anyone with a camera or cell phone.  Indeed, some public art, like that of mural artist Colette Miller, is specifically designed for the public to immerse themselves in by taking photos of themselves or “selfies” with the artwork.  The act of photographing a copyrighted work does not itself constitute copyright infringement under the U.S. Copyright laws.  However, the way in which that photograph is subsequently USED determines whether the photograph infringes the copyright owner’s rights.

THE “FAIR USE” EXCEPTION

Photographs of copyrighted street art that fall within the “fair use” exception do not constitute infringement and are permitted.  Personal use of a photograph depicting copyrighted street art falls within this exception.  Incidental use, where the artwork is virtually unrecognizable, appears for only a moment, or is not the main purpose of the image also fall within the fair use exception.  In contrast, unauthorized commercial use resulting in income to someone other than the artist is generally prohibited.

The following illustrations provide some guidance on what is and is not appropriate.

Street Art - Good of the Hive mural

Good of the Hive mural in Peterborough, New Hampshire

CASE STUDY #1

Buzz is a budding entrepreneur.  He started a business offering pollination as a service, deploying boxes of bees on-premises to help farmers increase crop yields.  On a recent trip to Peterborough, New Hampshire, Buzz came across The Good of the Hive mural by Matthew Willey.  Buzz takes a photograph of the mural and decides to use it as the background photo for his business’ website.  Because Buzz intends to use the photograph for commercial purposes, that use is infringement of Willey’s copyright.

Street Art - Greetings from Alaska mural

Greetings from Alaska mural in Anchorage, Alaska

CASE STUDY #2

Disheartened after his divorce, Sal is convinced by his friend Dean to quit his job, sell his belongings and buy an RV to travel the 50 states.  On their travels, Sal and Dean encounter several “Greetings From” murals by Victor Ving and Lisa Beggs, including the Greetings from Alaska mural in Anchorage, Alaska.  The design and beauty of each mural encountered captivates Sal and Dean.  Sal takes a photograph of each mural and uploads it as his Facebook Cover Photo until encountering the next one.  Although Sal is technically re-publishing the work,  the use in question is personal rather than commercial.  As such, it likely falls within the fair use exception.  However, what if Sal were to later author a book based on those travels using the photographs?  That would change the nature of the use to commercial and, without the author’s written consent, constitute copyright infringement.

CASE STUDY #3

Kylie is a social media influencer with 10 million followers on Instagram.  Because she has access to a huge audience and can persuade others to act based on her recommendations, companies pay Kylie to post photographs of her using their product on Instagram.  One of the companies that pays Kylie for posting images of her using their product is GreenCow Energy Drinks.  GreenCow just released a new watermelon flavored energy drink.  Kylie decides that it would be a good way to promote the new watermelon flavored energy drink by taking a selfie holding the drink in front of the Watermelon House by Wade Wilson (not to be confused with Deadpool) and Robert Banaszak in Washington, DC.  Given the facts presented, Kylie’s use appears to be “commercial” rather than personal and would most likely constitute copyright infringement.

MARTIN IP IS HERE TO HELP

These are just a few examples of common situations that arise in the context of photography of street art.  Every situation is fact sensitive.  If you have concerns about copyright infringement relating to street art, contact us to see how we can help.

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L.A. Jury Awards $2.8 Million to Christian Rap Artist

Because of the time and expense involved, it is rare for any intellectual property infringement action to be tried before a jury. Recently, a case against pop star Katy Perry did just that, and resulted in a $2.8 Million verdict against Perry and her producers. The ruling is part of a growing trend of claims against big time pop song artists and is causing a great deal of concern among musicians and songwriters who are concerned that the ruling stifles creativity.

The lawsuit concerned alleged similarities between Perry’s 2013 hit song “Dark Horse” and a 2008 Christian rap song “Joyful Noise,” by Marcus Gray aka Flame. The lawsuit alleged that Perry and her collaborators copied Joyful Noise’s hook. The case was filed in 2014 and concluded with a seven day jury trial in July 2019. As discussed in our March 2019 Blogpost, a copyright plaintiff must register his or her work with the U.S. Copyright Office prior to bringing suit in Federal Court, something that Gray did by securing Copyright Registration No. PA0001900321 for “Joyful Noise.” It is worth noting that Gray did not secure copyright registration until June 3, 2014 — seven years after creation of “Joyful Noise”, and presumably very shortly before filing suit against Perry. One has to wonder if the jury’s award would have been even bigger had Gray registered the work within three months of its publication which would have entitled him to statutory damages of $150,000 per infringement, plus attorney fees.

In order to prevail in his copyright infringement claim, Gray also had to prove that Perry and her collaborators “copied” his work. Theoretically, two works could be identical and there not be infringement if the second work was independently created without the author having knowledge of the previous work. Not surprisingly, Perry and her collaborators claimed that they had never heard of “Joyful Noise” before writing and recording “Dark Horse.” But since most artists don’t live the isolated life of a Buddhist monk at the Key Monastery, factors other than an artists claim to have independently created a work must be considered. Most often this is done be the copyright plaintiff showing that the alleged infringer had access to the copyrighted work and that the works are substantially similar. Gray did so in this case by claiming that “Joyful Noise” had been widely distributed (more than 2 million YouTube views) and that there was a good chance the Perry, who started her career as a Christian musician, or her collaborators could have heard the song before writing and recording “Dark Horse.” In finding for Gray, the jury apparently believed that Perry had access and that the two works were substantially similar.

The question of substantial similarity in this case also raises significant concerns for songwriters. Western music is made up of only 12 notes, which means that there are nearly 9 trillion different combinations that can be made. A copyright plaintiff does not have to show that the works are identical, only that they are substantially similar. So if the combination of a series of notes are not identical, but close, infringement can still be found. My more experienced readers may recall the case of alleged copying by Vanilla Ice in his song “Ice, Ice Baby” of the bass line from Queen/David Bowie’s “Under Pressure.” Notwithstanding Ice’s infamous claim that his song was different because he added a beat between notes, the case was settled out of court and Queen/Bowie received songwriting credit. More recently, in 2015 Robin Thicke’s “Blurred Lines” was found to have infringed Marvin Gaye’s 1977 “Got to Give it Up,” resulting in a $7.3 Million verdict.
Many in the music industry claim that the musical elements at issue in the Perry/Gray dispute are generic. Perry’s attorney went so far as to claim that “they’re trying to own basic building blocks of music, the alphabet of music that should be available to everyone.” They argued further that the beats found in the songs are so common they can be found in tunes as standard as “Mary Had a Little Lamb.” One concern expressed is that such rulings will lead to increased litigation which they worry will stifle creativity. The concern appears to be well founded given the consistent rise in copyright infringement cases since the “Blurred Lines” ruling in 2015.

What do you think? Are the two songs “substantially similar”? Are the musical elements at issue generic? Check them out – Joyful Noise  – and post your opinion!

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USE OF AN UNAUTHORIZED IMAGE MAY COST YOU THOUSANDS OF DOLLARS

Nearly everyone if familiar with the old adage “a picture is worth a thousand words”. It refers to the notion that a picture often times can convey a message better than a written description, That adage is particularly true when it comes to creating your company’s image and brand, both through traditional means and online through websites, blogs, Facebook and other social media platforms and the like. But beware, the unauthorized use of “free” downloaded images may end up costing you thousands of dollars.

The creator of a photograph or other image has the exclusive right under the law to display, publish or distribute copies of their work and to authorize (or not authorize) others to do the same. The use of a copyrighted image without permission could result in a statutory damage award of between $750 (minimum amount by law) and $150,000 (maximum award for willful infringement). Statutory damages are available to the copyright owner even if they cannot prove that they suffered any actual damages as a result of the infringement!

The availability of statutory damages has, in part, contributed to the existence of copyright trolls – lawyers who scour the web for copyright infringement and then take a cut from defendants who pay a settlement to avoid being sued. These trolls utilize sophisticated computer programs that scour the web 24/7 for unauthorized copies of protected images, so it’s not a matter of “if” an infringing image will be detected, it’s a matter of “when”.

How to avoid paying a toll to the trolls

The simple solution is to create your own images and avoid downloading and using any images from the web. There are a number of graphics software available for download, either paid or free, that can accomplish this task if you have some design skills. Alternatively, you could pay for downloaded images from a site such as Getty Images or Adobe Stock, or reputable free sites such as Pixabay, Unsplash or Dreamstime. When going with one of these options, particularly with the free downloads, make sure to check the “License Information” page of the website to make sure that the license for the image you are downloading covers your particular use. Also, if the download requests or requires credit be given (see image above), make sure to add the appropriate credits to or near the image.

What if I receive a letter from a troll?

If you have already received a letter from a copyright troll demanding payment for an alleged copyright infringement, you should contact an attorney experienced in handling copyright matters immediately. Depending on your particular circumstances, there may be legitimate defenses to the allegations. Even if you are in the wrong, often times a skilled attorney can negotiate a lower settlement payment and potentially save you thousands, if not tens-of-thousands of dollars.

The attorneys at Martin IP Law Group are experienced in representing clients in copyright matters including allegations of infringement for all types of creative works, including images used on websites, social media and blogs. Contact us today for advice on how to avoid paying tolls to trolls, or negotiating a reduction in the toll so you can go about your business.

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ARTISTS, AUTHORS, SONGWRITERS AND OTHER CREATIVE PEOPLE TAKE NOTE – SCOTUS ISSUES TWO DECISIONS THAT AFFECT THE RIGHTS IN YOUR WORKS

In our January 2018 blogpost, we reported to you that the U.S. Supreme Court was considering whether to hear a case that would resolve a spilt between circuit courts in different parts of the country as to when a copyright owner could file suit for infringement. On March 4th, in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, the Supreme Court did just that, holding that a copyright owner could not file suit against a potential infringer until the Copyright Office has acted on the owner’s application for registration. This effectively overruled the practice in the Fifth Circuit (Texas, Louisiana, Mississippi) and Ninth Circuit (California, Arizona, Nevada, Oregon, Washington, Idaho, Montana) of permitting plaintiffs to file actions for copyright infringement once their application for registration was filed with the Copyright Office.

Register your Work Early for the Best Protection.
In a unanimous opinion authored by Justice Ruth Bader Ginsburg, the Supreme Court held that the language “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made” enumerated in 18 U.S.C. 411(a) means precisely what it says, and that no suit for infringement may be filed until the work is registered. In so holding, the Court pointed to language in the very next sentence of Section 411(a) providing an exception to the registration requirement in cases where “registration has been refused”, in support of it’s reasoning that the mere filing of an application for registration is not sufficient to satisfy the statute. In the later case, where registration has been refused, the plaintiff must also serve a copy of the complaint on the Register of Copyrights, who may, at his or her option become a party to the action on the issue of registerability of the copyright claim.
So what is the impact of this decision on authors, songwriters, artists the other people who create copyrightable work? Because the creator of a work must now wait until a decision is made on his or her application for registration, we expect to see a substantial increase in requests for “special handling” of applications from those parts of the county where a mere application had been sufficient to allow suit to be filed. “Special Handling” with regard to a copyright registration is a process where, for an extra fee ($800.00), an applicant is effectively bumped to the front of the line and a decision on registration is made within five (5) business days instead of the normal six to eight months. The normal fee to file an application for registration is $55.00, so the extra $800 fee per claim can be significant for those who create a number of works they wish to protect, or for “starving artists” with limited financial resources. In addition, when you consider that for registrations filed within three months of the work’s publication or before the infringement occurs a copyright owner is eligible for statutory damages of up to $150,000 per infringement, plus attorneys’ fees, the case for registering works sooner rather than later is even more compelling.
The best strategy for the average author, artist or songwriter is to file their application for registration with the Copyright Office early – within three (3) months of publication, or sooner to preserve the potential recovery of statutory damages and attorney fees and to give the application time to be processed before infringement occurs. In contrast, a person who waits until infringement occurs will need to either pay an additional $800 for “special handling” or wait 6-8 months before suit can be filed. Add to that the potential forfeiture of statutory damages and attorney fees, and the case for early registration makes perfect sense.

Don’t expect Hot Dogs with your Ticket Plan.
The ability to maximize a damages award under Section 504 which includes statutory damages and attorney fees discussed above is even more critical now that the Supreme Court has limited what a prevailing claimant can recover as costs in a successful lawsuit. In Rimini Street Inc. v. Oracle USA Inc., another March 4th unanimous Supreme Court opinion, the Court narrowly construed what “costs” could be recovered under Section 505 of the Copyright Act which states that a prevailing party may, in the discretion of the court, recover “full costs”. The Supreme Court struck down the Ninth Circuit’s expansive interpretation of the term “full costs” to mean something more than the “costs” typically awarded in other statutes and governed by 28 U.S.C. 1821 and 1920. Writing for the majority, Justice Kavanaugh quipped that “‘A ‘full moon’ means the moon, not Mars. A ‘full breakfast’ means breakfast, not lunch. A ‘full season ticket plan’ means tickets, not hot dogs. So too, the term ‘full costs’ means costs, not other expenses.”

Recommended Actions.
In response to these two decisions, we think that copyright owners should take the following steps to best protect their creative works:
Take action early. If at all possible, file an application for registration of your work within 3 months of the first publication of your work, and before a dispute arises. This puts you in the best position to act when infringement does occur, and puts you in a position to maximize the potential damages available if you prevail.
Request Special Handling. If infringement is already occurring, or is imminent, you should request expedited handling of your application for registration. While the $800 filing fee may seem excessive, it is far better than having to wait 6-8 months for the Copyright Office to act while your valuable work is being pirated by others.
Don’t expect hot dogs with your ticket. Litigation is expensive, time consuming and emotionally draining. Don’t expect a court to fully compensate you for your loss by awarding you “full costs” for all of your out-of-pocket expenses. If you followed our advice under bullet point one above, you may be able to recover statutory damages which can help ease the sting.
Don’t go it alone. While fling your own application for copyright registration may initially seem easy and fun (if you are a masochist), those unfamiliar with the process can make errors that may delay the application or result in a refusal which places the owner in a much less-desirable position. The attorneys at Martin IP Law Group are experienced in applying for and obtaining copyright registrations for clients involving all types of creative works. Contact Us today to see how we can help you protect your most important creations.

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Rocket City Trash Pandas – A baseball team in Northern Alabama or a Guardian of the Galaxy?

After several months of consideration and public polling, on September 5, 2018 the town of Madison, Alabama (a suburb of Huntsville, nicknamed “The Rocket City” for its close association with U.S. space missions) and team owner BallCorps, LLC announced the name of its new AA baseball team, which will be known as the “Rocket City Trash Pandas.” For those of you unfamiliar with the modern slang terminology, “trash panda” is a commonly used term for a raccoon. The name makes sense, right? Rocket City for the region where the team will be based and Trash Pandas for an animal (commonly used as mascots for many sports teams) that is indigenous to the region. The name is fun, catchy and creative and perfectly suitable for use in connection with a baseball team in this universe. But, for a moment, let’s consider the Marvel Universe®.

Marvel Characters, Inc. currently holds, or is pursuing federal trademark registrations on almost 1,500 different marks and has been granted almost 10,000 federal copyright registrations. Included in that mix are trademark and copyright registrations to the Guardians of the Galaxy®️ movie and characters, including Rocket Raccoon®️, depicted in the second photo. When compared to the first photo that accompanied the Rocket City Trash Pandas announcement, we think you will see why we have concerns. Will a company that spends millions (perhaps billions) of dollars creating, developing and marketing its characters sit idly by while a AA baseball team in Northern Alabama uses images of an armor-clad Rocket Raccoon®️ to brand its new baseball team called the Rocket City Trash Pandas? We would be surprised if they do – Marvel even has a page on its website for people to report suspected infringement.

In the Trademark Universe, the owner of a mark may be provided with protection for a character’s name, physical appearance and distinctive designs and perhaps other qualities. Famous marks, which invoke an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service, are given a broader scope of protection than ordinary marks. Examples of famous trademarks are APPLE, GOOGLE, MICKEY MOUSE and MAGIC KINGDOM. Acquiring famous mark status “often requires a very distinct mark, enormous advertising investments and a product of lasting value.” It is more than plausible that Marvel could make a case that its Guardians of the Galaxy®️ and Rocket Raccoon®️ marks have achieved “famous mark” status.

Even in the absence of a likelihood of confusion, the owner of a famous mark can bring an action for trademark dilution, which allows the owner of a famous trademark to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another’s trademark on products or services that do not compete with, and have little connection with, those of the trademark owner. So it is not inconceivable that a famous trademark used by Marvel to refer to a comic book character might be diluted if another company began using a similar mark to refer to a baseball team.

In some ways the Copyright Universe presents a parallel universe. Under federal copyright law, it is well settled that stock characters are free for anyone to use. However, characters that are depicted graphically or visually, such as in comic books, television, or film are more likely to be extended copyright protection. Thus, a stock picture or graphic of a raccoon as part of the Trash Pandas logo would not likely constitute an infringement. However, as we can see from the second photo, the Rocket Raccoon character is not a “stock” character. Rather, there are elements to the character that render it protectable under copyright law – the particular look and features of the character’s face and the clothing are a few examples. Comparing the two photos above raises some serious issues of copyright infringement should BallCorps use the proposed logo design or one similar to it. Use of a stock image of a raccoon, or one that doesn’t look so strikingly similar to the Rocket Raccoon®️ character would diminish the potential for copyright infringement significantly, but may not be enough to avoid allegations of infringment which can be very expensive to defend.

Apparently BallCorps is not totally oblivious to issues of intellectual property regarding the naming of its team. On July 26, 2018 it filed two applications with the U.S. Trademark Office for registration of the name TRASH PANDAS. If the mark passes muster with the trademark examiner, it will be published for opposition for 30 days in the Official Gazette. It would not surprise us in the least to see Marvel oppose registration of this mark on the basis of potential dilution of its marks. We will continue to monitor the status of these applications as they progress and provide updates along the way.

What lessons can we take from this situation? When starting a new business and branding for that business, file early and often. The US Trademark Office allows an applicant to file an application for registration based on “intent to use” the mark, so actual use is not required. Thus, it may be possible to obtain approval of the mark before you even begin using the name/mark. The applications should also cover any and all goods AND services you intend to offer under the mark. You should also register your logo, slogans and other branding associated with your products and services. A clearance search and opinion from an experienced intellectual property attorney can also give you insight into the rights of others who may have similar marks, which could avoid costly litigation in the future. If you are starting a new business, launching a new product, or re-branding an existing company or product, contact us to ensure your path is clear and your assets are protected.

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