Jersey Boys’ Use of Seven Second Clip from The Ed Sullivan Show Fair Use

Dodger Productions, Inc. used a seven-second clip from The Ed Sullivan Show in its stage musical, Jersey BoysJersey Boys is a play recounting the history of the pop band, the Four Seasons, and its members.  SOFA Entertainment owns the copyrights for the entire series of The Ed Sullivan Show, from 1948 to 1971.  SOFA sued Dodger for copyright infringement for its unlicensed use of the clip.

Dodger asserted a fair use defense to SOFA’s lawsuit.  Both parties moved for summary judgment on the fair use issue.  The district court ruled in Dodger’s favor, agreeing that Dodger’s use in the Jersey Boys was a fair use.  The district court also granted Dodger’s request for attorney’s fees and costs of $155,000.  “The district court viewed SOFA’s infringement claim as objectively unreasonable and determined that awarding fees would deter future lawsuits that might chill the creative endeavors of others.”  (Opinion pdf page 6).  The Ninth Circuit affirmed the district court’s decision.

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No Fair Use of Secret Wedding Photos Covertly Obtained, then Published by Gossip Magazine

Latin American celebrities Noelia Monge and Jorge Reynoso secretly wed at the Little White Wedding Chapel in Las Vegas, Nevada on January 3, 2007.  Three pictures were taken at the wedding ceremony and three more were taken that evening.  Monge and Reynoso kept their marriage a secret, in part to promote Monge’s image as a young, single singer.  Not even Monge’s and Reynoso’s family members and friends knew of their marriage.  In the summer of 2008, Reynoso used Oscar Viqueira’s car.  Viqueira later found a memory chip in the ashtray.  Viqueira discovered that the memory chip contained 3 videos and over 400 photos, including the photos taken at Monge’s and Reynoso’s wedding ceremony and on the wedding night.  Viqueira sold the images to Maya, which publishes a number of magazines.  Maya published the images in “TVNotas,” a Spanish-language gossip magazine.  The publication of the photos disclosed the marriage of Monge and Reynoso to the world.

Mongo and Reynoso registered copyrights in five of the six photos.  They then sued Maya for copyright infringement.  Maya claimed fair use and the district court agreed.  On appeal, the Ninth Circuit Court of Appeals reversed the district court, ruling that the district court did not properly analyze the fair use factors.

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Copyright Owner Out-Hustles Flynt

When Ohio newscaster Catherine Bosley (aka Catherine Balsley) entered a wet t-shirt contest and danced nude at a bar while on vacation in Florida in March 2003, she didn’t realize that an amateur photographer was taking photographs of her.  Bosley lost her job as a news anchor when the amateur photographer posted photos of Bosley on the photographer’s website.  Bosley and her husband acquired all rights to the photos from the photographer and registered the copyrights with the Copyright Office in August 2004.

LFP, Inc. (aka Larry Flynt Publications) publishes Hustler magazine, which “contains graphic images and stories about sex.”  “Hot News Babes” is a recurring item in the magazine.  A Hustler reader nominated Bosley as a “hot news babe” in August 2005.  The reader did not provide Hustler with photos of Bosley, but told Hustler that it could find photos on the Internet.  One of the photos Hustler obtained online was a photo for which Bosley and her husband owned the copyright.  The photo included a visual copyright notice.  Hustler’s editors knew that the photo was copyrighted, but published the photo in the February 2006 edition without locating the copyright owner and without obtaining a license.  Hustler’s attorney advised Hustler that it could publish the photo as a fair use.  Bosley found out about the publication and filed suit against LFP for copyright infringement and other claims in February 2008.

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South Park WWITB Video Fair Use, Rules Seventh Circuit

Was South Park’s video version of What What (In The Butt) a fair use of Brownmark’s original viral video version of What What (In The Butt)?  The district court thought so.  It made its decision based on South Park Digital Studios’ (SPDS) Fed.R.Civ.P. 12(b)(6) motion, comparing the two videos without considering other evidence.  Brownmark appealed to the Seventh Circuit Court of Appeals, arguing that the district court could not base its decision in a Rule 12(b)(6) motion on an affirmative defense. 

In a Rule 12(b)(6) motion, the defendant argues that the plaintiff failed to state a claim upon which relief can be granted.  Fair use (17 U.S.C. §107) is an affirmative defense, meaning that establishing the defense nullifies a claim of copyright infringement.  Brownmark argued that it is improper procedure for a district court to consider the defendant’s affirmative defense in a motion addressing the sufficiency of the plaintiff’s complaint.  The Seventh Circuit affirmed the district court’s ruling on both the procedural issue and the fair use issue, stating that the South Park video “is clearly a parody of the original WWITB video, providing commentary on the ridiculousness of the original video and the viral nature of certain YouTube videos.”  (Opinion pdf page 10).

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Photograph of Model Dancing Copyrighted Bronze Dance Steps Could Be Fair Use

Earlier this year, posts on this blog discussed fair use in the context of the Shepard Fairey/AP dispute over Fairey’s use of AP’s photo to create his Obama HOPE poster and the Cooks Source Magazine controversy about the use of a blogger’s recipe in that magazine.  The source of the fair use dispute discussed in this post is the bronze dance steps on Broadway Street in Seattle.  The Story Behind the Steps in the Sidewalk includes a picture showing some of the steps.  Western District of Washington Judge Robert S. Lasnik recently denied plaintiff’s motion for summary judgment to dismiss defendant’s fair use affirmative defense.

Facts.  The court indicated that these facts are undisputed.  The significance of an undisputed fact is that an undisputed fact cannot create a genuine issue of material fact.  A summary judgment motion is defeated by genuine issues of material fact.  A genuine issue of material fact is a disagreement between the parties on the facts legally relevant to a claim.

Plaintiff Jack Mackie is a creator and copyright owner of bronze dance steps that are embedded in the sidewalk along Broadway Street in Seattle.  The work is entitled “Dance Steps on Broadway” and is comprised of eight different dance patterns embedded in separate locations along Broadway.  Plaintiff was inspired by Gene Kelly’s singing and dancing in the street in the movie, Singin’ in the Rain.  He wanted to see whether people would dance along the street if they were given the steps.  Plaintiff researched the dances, learned the steps, and worked with a foundry on the molds.

Defendant Michael J. Hipple is a photographer who took a picture of a model’s feet and legs while the model was dancing on the Mambo portion of plaintiff’s work.  Defendant’s intent was to try out his new swing tilt camera lens.  He intended for the bronze steps to be part of the photograph, but intended the dancing “feet with the star shoes and the legs of the model” to be the focus of the photograph. 

Plaintiff sued defendant for copyright infringement and brought a motion for summary judgment to dismiss defendant’s fair use affirmative defense.

Summary Judgment Legal Standard.  “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”  Fed.R.Civ.P. 56(a).  To win a summary judgment motion, the moving party must show that no reasonable trier of fact could find for the non-moving party on any issue in which the moving party has the burden of proof at trial.  “The Court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inference in that party’s favor.”  (Order pdf page 3).

Fair Use.

The fair use defense permits the use of copyrighted works without the copyright owner’s consent under certain situations….The defense encourages and allows the development of new ideas that build on earlier ones, thus providing a necessary counterbalance to the copyright law’s goal of protecting creators’ work product.

(Order pdf page 4). 

Courts examine four factors to determine whether the use of a copyrighted work is a fair use:

  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.

17 U.S.C. §107.

Purpose and Character of Use.  Analysis of this factor includes these subfactors:  whether the use is of a commercial nature, whether defendant acted in good faith, and whether the new work is transformative.  (Order pdf page 5). 

The court indicated that a commercial use is presumptively an unfair exploitation of the copyright owner’s monopoly privilege.  The “crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the use stands to profit from exploitation of the copyrighted material without paying the customary price.”  (Order pdf page 5).  Defendant was in a position to make a small profit from his photograph.

The defendant’s conduct is relevant to the character of the use.  Defendant argued that he acted in good faith and plaintiff did not contest the propriety of defendant’s conduct.

The parties disagreed on the transformative nature of defendant’s work.  A transformative work “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.”  (Order pdf page 5).  The court found that there was an issue of material fact regarding whether defendant’s work was transformative enough.

Nature of Copyrighted Work.  Some works are more creative than others.  Fair use is harder to establish when the original work is highly creative.  Defendant argued that because plaintiff undertook extensive research, his dance steps are informational.  Although plaintiff researched the steps, he also changed the steps to make it more clear where to step next.  The court thought the plaintiff had a stronger argument that the dance steps are creative in nature, but ruled that there was an issue of material fact regarding the nature of the copyrighted work.

Amount and Substantiality of the Portion Used.  The court indicated that defendant’s photo quantitatively used a small portion of the copyrighted work.  The work includes eight dance patterns and the photo included a portion of one, the Mambo.  Plaintiff argued that the amount used by defendant captures the essence of the work.  The court ruled that “a reasonable juror could conclude that the legs and shoes were the focal point of the photograph, rather than the dance steps,” and ruled that plaintiff did not meet his burden on this factor.

Effect of Use upon Potential Market.  The court declared that this is the “single most important element of fair use.”  (Order pdf page 7). 

Fair use, when properly applied, is limited to copying by others which does not materially impair the marketability of the work which is copied.

(Order pdf page 7).

Although plaintiff does not sell photographs of his dance steps work and has not received a fee for licenses or releases he has given, the past conduct of the copyright holder is not the proper focus of this inquiry.  The court stated that “unauthorized photographs of the dance steps sold for profit could have an adverse market effect on the original and derivative works.”  (Order pdf page 7).

Even though “plaintiff’s arguments are stronger in some factors, and weaker in others,” the court ruled that the plaintiff did not meet his burden on summary judgment and denied plaintiff’s motion to dismiss defendant’s fair use defense.  (Order pdf page 8).

The parties notified the court of a settlement and the case was dismissed on June 21, 2011.

This case is Jack Mackie v. Michael J. Hipple, et al, C09-164 RSL, Western District of Washington at Seattle.

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. 

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.