Fair Use in AP Fairey Dispute but not in Cooks Source Magazine Controversy

In writing posts for this blog, I receive helpful feedback from Dee, my partner, and staff members at LexBlog.  In response to my post AP and Fairey Fair Use Dispute Resolved, one of the LexBlog staff members asked me how the AP/Fairey fair use situation differs from the Cooks Source Magazine controversy.  The specific question was whether my argument in the AP/Fairey post that Fairey created the market for the AP photo is valid when the editor of the Cooks Source Magazine was severely criticized online for copying a web article, editing it to improve it and publishing it in the magazine without permission.  The editor of Cooks Source Magazine arguably created a greater market for the web article.  The argument that the editor of Cooks Source Magazine helped the writer by copying her online article is invalid as a defense to copyright infringement, so why is a similar argument in the AP/Fairey case not also invalid?

For readers unfamiliar with the Cooks Source Magazine controversy, Caitlin Fitzsimmons provides a nice description in Cooks Source Magazine Forced to Close, Following Facebook Backlash.  Monica Gaudio posted a story called A Tale of Two Tarts  on the Gode Cookery website.  She discovered that Cooks Source Magazine republished the article without her permission.  When Ms. Gaudio contacted Judith Griggs, the editor of Cooks Source Magazine, about the infringement, she was told that content on the web is in the public domain and she should compensate Ms. Griggs for editing the story.  This account of the story was posted by Ms. Gaudio on her blog under Copyright Infringement and Me.  Ms. Griggs and the magazine became the subject of enough negative reaction on the Internet that the magazine lost advertisers and was forced to go out of business.

Ms. Gaudio points out on her blog that the Gode Cookery webpage displays a copyright notice.  A writing on the Internet is protected by copyright law even though it does not display a copyright notice.  Copyright is created by the act of fixing an original work in any tangible medium of expression, such as posting an article on a website.  The use of a copyright notice has the benefit of eliminating the innocent infringer defense.  For example, the copier cannot credibly argue that she thought the copied work was in the public domain if it contains a copyright notice.  Most of the material posted on the Internet is not in the public domain.  The general rule for copying material from the Internet is that if you didn’t write it, the copyright belongs to someone else and that if you want to repost it or republish it without infringing the copyright, you need to get permission.

Getting back to the question from the first paragraph, how is it that creating the market for a copyrighted work is a valid argument in the AP/Fairey case but not in the Cooks Source Magazine controversy?  There are some important differences between the two cases.  Firstly, the Cooks Source editor admitted copying Gaudio’s article and did not claim fair use.  Instead, she reportedly made the outrageous claim that material posted on the web is in the public domain.  Secondly, in a fair use case, the statute requires the court to consider “the effect of the use upon the potential market for or value of the copyrighted work.”  So in a fair use case, arguing that the copier created the market for the original work is a valid argument, as the court is required to examine the market for the original work.

What makes a case a fair use case?  It starts off with the alleged infringer claiming fair use.  Fair use is not merely copying, but creating a derivative work.  A derivative work is based on a preexisting work and involves recasting, transforming or adapting the preexisting work.  Creating a derivative work is one of the exclusive rights reserved to the copyright owner.  Fair use is a defense to copyright infringement, hence the name of the fair use statute:  “Limitations on exclusive rights:  Fair use.” 

Fair use is not an available defense for the Cooks Source editor, as she argued that the web article was in the public domain.  The fair use defense does not apply unless there is first an infringement.  If something is in the public domain, it is not copyrightable and the Copyright Act does not apply.  There can be no copyright infringement of a work in the public domain.  In the AP/Fairey case, Fairey made an AP photo of Obama into a stylized poster.  Whether Fairey’s transformation of the AP photo into a new work was sufficient to gain the protection of the fair use statute is the unanswered question from the AP/Fairey case.

AP and Fairey Fair Use Dispute Resolved

The dispute between artist Shepard Fairey and the Associated Press over Fairey’s use of an AP Obama photo to create his “Hope” poster generated intense debate over the question:  “What is fair use?”  On a human interest level, the opposing forces of the AP, the giant content owner, versus Fairey, the artist, made for a good story.  Fairey deserves respect for asserting his fair use rights, for filing the declaratory judgment lawsuit and for not backing down.  The declaratory judgment action was reported in AP Says it Owns Copyright to Street Artist’s Obama HOPE Image, by Debra Cassens Weiss. The AP gets credit, too, for having sense enough not to be as heavy-handed as it could have been in pursuing its claim of copyright ownership.

Fairey and the AP recently settled their dispute.  Copyright Dispute over AP Photo in Obama Poster is Resolved with Deal to Collaborate, by Debra Cassens Weiss, sets out the nutshell version of the settlement.  Both sides maintain the validity of their positions. 

Fair use can be a confusing concept.  It started out as a common law doctrine, but was codified in §107 of the Copyright Act.  Fair use purposes include criticism, comment, news reporting, teaching, scholarship and research.  The list is not exclusive.  Four factors are considered in evaluating whether the use is a fair use:

  • the purpose and character of the use
  • the nature of the copyrighted work 
  • the amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • the effect of the use upon the potential market for or value of the copyrighted work

This dispute focused on “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.”  The greater the portion of AP’s photo that Fairey used, the less likely that Fairey would succeed in his fair use claim.

How much of the AP’s photo did Fairey use?  He used the whole thing.  The focus of the dispute involves just one of four factors, but all factors “shall” be considered, according to the statute.  Another of the fair use factors is “the effect of the use upon the potential market for or value of the copyrighted work.”  What was the effect of Fairey’s use on the potential market for or the value of the AP’s photo?  Arguably, Fairey’s use created the market value for the original.  The original is not an interesting photo.  A photo that probably would have been stuck in the archives somewhere, never to be seen again, has repeatedly circulated around the world due to Fairey’s poster and to the Fairey/AP dispute.  Associated Press Settles Copyright Lawsuit Against Obama ‘Hope’ Artist, by David Kravets, compares the images involved.

In the future, Fairey and the AP will share rights in the Hope image, they will collaborate on new images that Fairey will create from AP photos and Fairey will get a license from the AP to use its images.  Although neither party conceded its position, the settlement seems like a recognition that Fairey created whatever market exists for the AP photo and that Fairey could have avoided the dispute by obtaining a license.  The AP website contains information on how others may obtain rights to use its photos.  Many of the photos are available royalty free. 

Not All Organizational Secrets are Trade Secrets

Tech group wants Boy Scout ‘perversion files’ blocked is an article written by Nigel Duara that recently appeared in the Seattle Times.  The article describes how TechAmerica, a leading technology trade association, wrote a brief supporting the Boys Scouts of America in its attempt to prevent its “perversion files,” also called “ineligible volunteer files” from being made public.  The perversion files monitor those who violate the rules of the Boys Scouts of American and include files on suspected pedophiles.  The Boys Scouts uses this information to try to prevent those individuals from volunteering again.  The current controversy arose when “[a] Multnomah County Circuit Court judge ruled that 20 years worth of Boy Scouts’ ineligible volunteer files, from 1965 to 1985, could be used in court, and in June ruled that they should be opened to the public.”  The Boy Scouts appealed.  TechAmerica wrote a brief supporting the Boy Scouts, arguing that opening the files to the public eliminates judicial protection of trade secrets.  TechAmerica seems to consider the perversion files a trade secret of the Boy Scouts.

What is a trade secret?  Washington State, which adopted the Uniform Trade Secrets Act, defines a trade secret as “information, including a formula, pattern, compilation, program, device, method, technique, or process that:  (a) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and (b) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”  According to the U.S. Supreme Court, ‘[t]he maintenance of standards of commercial ethics and the encouragement of invention are the broadly stated policies behind trade secret law.”

Do the perversion files actually derive independent economic value from not being generally known to other persons who can obtain economic value from their disclosure or use?  Do the perversion files give the Boy Scouts an economic advantage over its competitors?  Is this situation akin to a business protecting its source code by keeping it secret?  How does keeping the perversion files from the public maintain standards of commercial ethics and encourage invention?

Not all information a company or organization wants to keep secret rises to the level of trade secrets as defined above.  It seems that TechAmerica’s real argument is that corporate secrets should be protected, period.  That is not and never has been the law.

Anticircumvention Provisions: Another side of the DMCA

Most people know of the Digital Millennium Copyright Act (DMCA) as a result of its takedown notice and safe harbor provisions.  Those provisions generate frequent discussion, particularly in the wake of a high profile case such as Viacom International, Inc. v. YouTube, Inc. YouTube’s motion for summary judgment in the face of Viacom’s claims of intentional, direct and vicarious copyright infringement was granted on the basis that YouTube was protected by the §512(c) safe harbor.

Anticircumvention is a less well-know side of the DMCA.  The DMCA anticircumvention provisions prohibit hacking software designed to prevent unauthorized copying, for example.  Antcircumvention was one of the topics in I Like (Big) Bots and I Cannot Lie: Bots as Copyright Infringement and DMCA Violations, an excellent post by Drew Boortz on Developing Concerns. Boortz described a recent case in which, as he saw it, the Ninth Circuit ruled that the copyright owner’s right to guard against unwanted access is one of the rights in the copyright bundle and was created by the DMCA. For those who have always believed that §106 defines the copyright bundle of rights, that’s an amazing ruling!   For me, the most intriguing part of the post was Boortz’s reference to the DMCA exemptions.

The DMCA implements two World Intellectual Property Organization treaties and contains five titles. Section 1201 incorporates the anticircumvention provisions. The first sentence reads, “No person shall circumvent a technological measure that effectively controls access to a work protected under this title.”  Under a 2001 court ruling, this meant that people were prohibited from using a decryption computer program to bypass the encryption features of a motion picture DVD so that they could freely copy the DVD. One of the arguments against technologic measures used to protect copyrighted works is that they prevent the fair use of those works.

That seems like a pretty straightforward prohibition, right?  Not so fast!  Section 1201(a)(1) also provides for a rulemaking procedure designed to soften the impact of the circumvention prohibition by exempting users of certain classes of copyrighted works from application of the prohibition.  Every 3 years, the Librarian of Congress, with input from the Register of Copyrights and the Assistant Secretary for Communications and Information of the Department of Commerce, sets the rules for the next three years.  The most recent set of rules became effective on July 27, 2010. If the exemptions change every three years, what does that mean for people who have built businesses or livelihoods that depend on the existence of one or more exemptions?

Six classes of works are currently exempt from the circumvention prohibition. Technical protections for motion pictures on DVDs can now be circumvented solely to allow the incorporation of short portions of the film into new works for the purpose of criticism or comment.  The use is limited to educational uses by college and university professors and certain students, to documentary filmmaking and to noncommercial videos.  It looks like some of the people who may have decrypted DVDs for fair use purposes prior to 2001 joined forces to persuade the Librarian of Congress to grant them an exemption. Other classes of exempt works include circumventing computer programs on wireless phones to enable application interoperability and to allow owners of used handsets to access a wireless network, and circumventing controls on personal computer video games to fix security bugs. I wonder how many similarly situated groups of potential fair users there are who could benefit from such an exemption.  It seems that taking advantage of the rule setting process is a great strategy for those who want to make fair use of copyrighted materials that are currently protected by technical measures.