uzz Aldrin Grounded

By Nancy E. Wolff

November 19, 2011

The Topps Company recently released a set of “American Heroes” trading cards which include well-known politicians, actors, athletes, scientists and events. Famed astronaut Buzz Aldrin attempted to block the release of certain cards believing the cards improperly incorporate his name, likeness and image in a commercial manner. The cards in question include the famous “Visor Shot” image of Aldrin on the outside of the cardboard box packaging, a mission card, and a “signature cut” card which contains original signatures taken from other documents.

Aldrin brought the suit in a California Federal Court alleging violations of California’s common law and statutory rights to publicity, among other claims. Topps moved to strike the complaint under California’s anti-SLAPP (Strategic Lawsuits Against Public Participation) statute which allows a defendant to strike a complaint that attempts to restrict their right of free speech in connection with a public issue.

When examining the special motion to strike, the court must first determine “whether the defendant has made a threshold showing that the challenged cause of action is one arising from protected activity.” The court must then decide whether the plaintiff has evidenced that the activity is not protected. If it is found that the activity is protected, and the plaintiff cannot show a legally sufficient complaint supported by a prima facie showing of facts, the cause of action should be stricken under the anti-SLAPP statute.

In this action, the cards were found to be protected speech relating to a public issue. The court distinguished this situation from prior cases in which the use of a prominent person’s name or likeness were found to constitute unprotected commercial speech. Here the court focused on the fact that the cards convey information about historically significant achievements, propose no commercial transaction, and are not advertisements for any related or unrelated products. Additionally, the court reasoned that the “Visor Shot” on the outside packaging is a “mere adjunct” to the cards themselves, and therefore does not constitute an advertisement. The court rejected Aldrin’s claim that the cards were no more than commercial merchandise.

The court held that Topps met its burden of demonstrating that the cards are protected speech, whereas Aldrin did not meet his burden of refuting that status. As a result, the Topps motion to strike Aldrin’s complaint was granted. The case is currently being appealed.

With its focus on trading cards, the case may reflect a shifting line between what is viewed as purely pop commercial merchandise even simple advertisement on the one hand — and informational even educational protected speech on the other. Though trading cards have existed for generations, protected speech here seems less bound to traditional media in an age where youth increasingly get their information through pop commercial media such as videogames, social media, comics, etc.

CLIENT ADVISORY: Sunrise Period for Trademark Owners Seeking to Defensively Block Registrations of .xxx Domain Names Is Now Open

The new .xxx top-level domain (TLD), designed to cater to the online adult entertainment community, is now available for registrations. But brand owners with registered trademarks outside that industry have a limited opportunity to defensively block registrations before the operator of a pornographic website claims BRAND.xxx – as long as the brand owner acts before the blocking period closes on October 28, 2011. After that date, trademark blocks will no longer be available.

Background and Key Dates

In late March of this year, the Internet Corporation for Assigned Names and Numbers (ICANN) approved .xxx as a new sponsored TLD designed for use by providers of “online adult entertainment intended for consenting adults,” and those who provide products or services to those providers (the “Sponsored Community”). ICM Registry LLC, appointed by ICANN, will start to launch the .xxx TLD, on December 6, 2011.

Before the launch date, there are two Sunrise periods to note (A and B) that run from September 7, 2011 through October 28, 2011. The Sunrise A category includes only members of the Sponsored Community who: (a) either own a registered trademark in use, and/or (b) operate a corresponding domain name created on or before February 1, 2010.

If a brand owner is not in the Sponsored Community, it may qualify for the Sunrise B category if it owns a trademark or service mark registration issued prior to September 1, 2011. Because the .xxx TLD is designed for the Sponsored Community, domain names reserved under Sunrise B will not technically be registered but will resolve to a standard page that indicates that the name is not available for registration. After the sunrise period, the “Landrush” phase of registration will be open from November 8 through 25, allowing members of the online adult entertainment industry to register .xxx domain names. The General Availability period opens on December 6, 2011 at which point anyone may register a .xxx domain name. During Landrush, competing requests will be allocated in a closed auction. After General Availability opens, domain names will be granted on a first-come, first-served basis.

What types of trademarks are eligible for Sunrise B reservation?

Only trademarks registered before September 1, 2011 and valid at the time of the domain name application are eligible for the Sunrise B period. The ICM Registry may also require proof of use in commerce, a caveat that is particularly relevant to those who intend to rely on registrations in countries where (unlike in the U.S.) proof of use is not required for registration. All other marks are ineligible, i.e., trademarks that are the subject of pending applications as of September 1, 2011, “dead” marks, marks with all text disclaimed, unregistered trademarks, U.S. state trademarks, marks that are the subject of international applications through the Madrid system (unless there is a corresponding registered national trademark), and marks on the Supplemental Register.

While trademark owners with hyphens, ampersands or other special characters in the name may record the mark to be blocked in forms with and without the special character, defensive registration against “typosquatting” is not permitted in the sunrise phase. The block must correspond to the exact trademark without any additional letters or terms, or any misspellings.

How much will it cost?

Fees vary by registrar, but filing fees charged by the registry are estimated to range between $200 to $500 per mark. For Sunrise B, this is a one-time fee only, and there are no annual registration fees.

How long does the block last?

Subject to any enforcement policies, the Sunrise B registration is permanent. However, the ICM Registry does have the right to reinstate any name if the underlying trademark registration used to reserve it lapses.

After the sunrise period there will be no permanent opt-out. Non-members of the community may register a non-resolving site and keep the registration by paying annual renewal fees.

For those brand owners who do not want to police the .xxx domain over the years, the Sunrise registration may have its advantages in spite of the fees. Already many celebrities have taken advantage of the blocking period to protect their names.

If you have any questions on this advisory, please contact your CDAS attorney.

Good Day for Green Day: Judge Rules in Favor of Fair Use

By Nancy E. Wolff

Sept. 18, 2011

In a lawsuit against the band Green Day, by Derek Seltzer (an L.A. Based Artist), the U.S. District Court Judge ruled in favor of Green Day in a motion for summary judgment on the basis of their fair use defense. Seltzer accused Green Day of violating his intellectual property rights through their unauthorized use of, and by altering, Seltzer’s notorious work, “Scream Icon”. Green Day’s use of the work appeared in a video backdrop during live performances of their song East Jesus Nowhere, throughout their 2009 tour.

Green Day undisputedly used the image and their set designer, Richard Straub (also a defendant), admitted to altering the image by adding a brick wall with a large red cross sprayed over it. Straub explained he did this so that, in concert with the song, it may convey a message about the “relationship between organized religion — and pain and suffering”.

At the heart of Seltzer’s argument, he claimed that Green Day’s alteration and unauthorized use of his work not only changed, but defaced and devalued both his original work and the meaning his original work was intended to convey.

Green Day however claimed their use of the image was transformative because their use “added something new, with a further purpose or different character than the original work.” Based on the plaintiff admitting Green Day’s use of the image changed the meaning of work, the judge ruled in favor of Green Day’s transformative use and thereby deemed it a valid fair use.

To sustain an argument in favor of fair use, generally the courts consider four basic elements: (1) The purpose and character of the use, (2) The nature of the copyrighted work, (3) The amount and substantiality of the use, and (4) The effect of the use on the market for the original work.

In this case, the judge claimed that the use was transformative and its appearance beforehand on the Internet made the second factor “fall slightly in favor of fair use”. The judge also ruled that although the defendant used the entire work, it was merely part of a composite image in the background which included many other images and graphics. Furthermore, the judge ruled that Plaintiff failed to show the connection between Defendant’s use of the work and a negative impact on Plaintiff’s ability to license the work.

Whether appropriation art is fair use or foul, it is controversial, and courts have never consistently ruled in favor of the appropriation artist. Jeffrey Koons is an example of an artist who lost his fair use case involving a sculpture based on a photograph of a couple holding puppies, and won a fair use case based on a photograph used in a collage painting. Fair use is decided on a case by case basis and this case seemed easy for the courts to decide as the plaintiff all by conceded that the work was transformative. The controversy over appropriation art will continue. The tension remains between the first artist’s exclusive right to authorize a derivative work, and the appropriation artist’s view that other works are part of their artistic toolbox, just as the paint and the brush.

Either way, the fair use defense leaves much to be debated regardless of which side the court rules.

(Click here for Civil Minutes, Derek Seltzer v. Green Day et al).

Madonna’s Not the Only “Material Girl”: Judge Denies Summary Judgment

By Nancy E. Wolff

Sept. 18, 2011

In California, a Federal Court Judge denied the defendent’s — Madonna’s — Motion for Summary Judgment that she is the “senior trademark user” of the “Material Girl” mark. This now clears the path for a lawsuit by the plaintiff, clothing company L.A. Triumph, which has sold a “Material Girl clothing line since 1997.

Madonna and her company MG ICON, LLC claim that she was the first to create, use, and popularize the mark through her 1985 song, “Material Girl,” its accompanying video, and sales of clothing through her worldwide tours over the years since.

At the heart of the case is the issue of what defines seniority in legal use of a mark. Madonna claims that based on her music and the accompanying clothing sales beginning in 1985, that she was the first to hold the rights to use the mark. However, the plaintiff contends that Madonna’s use was merely merchandising to promote her music, not use in an established clothing line in retail locations across the country as L.A. Triumph’s brand is. The judge agreed. Performing a song does not in itself earn rights to use a related trademark without establishing the trademark’s use in commerce. Since Madonna could only evidence clothing sales baring the mark from 2001 to 2005, that use did not precede L.A. Triumph’s use of the mark since they launched their line in 1997.

Additionally, the court addressed the issue of the likelihood of confusion of the two brands. Defendants suggested that there would be no confusion between the two brands because Madonna’s brand was distributed through a higher-end retailer, Macy’s, while Plaintiff’s brand is generally found in discount retailers. However, Plaintiff showed evidence that Macy’s clothes are also sold in discount retailers, therefore their appearance could create confusion for consumers. The judge felt there are several issues of material fact that should be decided before a jury rather than by summary judgment.

This case could also present an interesting challenge to what constitutes use of a trademark in commerce. Is printing and selling merchandise baring the mark to promote its use and brand different than starting a fashion label baring the mark that also seeks to promote brand identity? If artists create the recognition of a particular word or phrase and it becomes synonymous with their persona in the media, does that recognition deserve ip rights and protections? Did the plaintiff’s line garner more sales as a result of Madonna’s popularity and use of the mark a decade prior and throughout her 25-year career? Expect similar questions to be answered in the trial scheduled for October of this year. It could have an interesting impact on trademark case law.

(Click here for Civil Minutes, L.A. Triumph v. Madonna, MG Icon, LLC).

Update On Google Books Settlement

By Mary E. Rasenberger

Sept. 18, 2011

In a new twist in the Google Books case, it appears that the publishers and authors may be going separate ways. The parties had a conference with Judge Denny Chin this past Thursday, September 15th. Judge Chin had admonished the parties in the last conference on July 20th to hasten their settlement discussion and to come prepared on September 15th with a new settlement agreement, and if no settlement could be reached, a discovery and briefing schedule on the merits. From the start of the conference, it was clear that the parties had not come prepared to discuss a new settlement.

(PLEASE CLICK HERE to read Ms. Rasenberger’s entire article on the EASL blog of the NYSBA, reprinted here by permission).

Sony BMG v. Tenenbaum: District Court Erred in Finding Statutory Copyright Damages Unconstitutional

By Eleanor M. Lackman

September 18, 2011

On September 16, 2011, the First Circuit reversed the district court’s opinion in Sony BMG v. Tenenbaum — which found a jury verdict awarding statutory damages to plaintiffs to be unconstitutional and reduced the amount of damages on that ground — thereby reinstating the jury’s award of $675,000 to the plaintiff copyright holders.

Background of the appeal

The 65-page ruling stems from one of only two cases to have gone to trial in the group of lawsuits brought by record companies against individual file-sharers. The legal issues on appeal arose from a five-day trial in 2009, which pitted Sony BMG and other record companies against Joel Tenenbaum. Sony alleged that Tenenbaum willfully infringed the copyrights of thirty music recordings by using file sharing software, such as Napster, to download and distribute those recordings without authorization; although Sony pursued claims on only thirty copyrighted works, it presented evidence at trial that Tenenbaum willfully violated thousands of copyrights.

Section 504(c) of the Copyright Act authorizes damages in the range of $750 to $150,000 per willful act of infringement. At the close of the 2009 trial, the jury found that all thirty acts of infringement by Tenenbaum had been willful and awarded a judgment to the plaintiffs in the amount of $22,500 per infringement, an amount well within the statutory range set by Congress. Tenenbaum then filed a post-trial motion seeking a reduction of the jury’s award, arguing that (i) common law remittitur was appropriate in his case, and (ii) the award was excessive such that it violated due process.

Remittitur is a process whereby a court deems an award to be excessive; the court will order the plaintiff to remit a particular amount of the award. However, the plaintiff has the discretion of accepting the reduced award, or rejecting the remittitur in which case a new trial for damages would ensue.

The district court declined to decide Tenenbaum’s motion on the remittitur issue, reasoning that Sony would not likely agree to a reduction of the award, thereby requiring a new trial on the issue of damages. Proceeding to constitutional analysis, the district court found that the jury award was excessive to the point that it violated due process and reduced the award from $22,500 per infringement to $2,250 per infringement.

The First Circuit’s decision and order

On appeal, the First Circuit held that the district court was wrong to reduce the jury award on the grounds that it violated due process. Although the ruling appears to be an immediate victory for copyright holders, the First Circuit’s reversal was based mainly on procedural error. The canon of constitutional avoidance is a long standing principle of judicial restraint that requires courts to avoid reaching constitutional questions when a matter can be decided on other grounds. In this case, the district court erred by not first deciding the issue of reducing damages according to remittitur. Had the district court ordered remittitur, it would have avoided not only the due process consideration, but also the unnecessary resolution of issues arising under the Seventh Amendment, specifically, whether a statutory damage award under the Copyright Act may be reduced without offering the plaintiffs a new trial. Accordingly, the First Circuit remanded the case to the district court in order to decide the issue of whether remittitur is appropriate.

It should be noted that the First Circuit rejected additional arguments made by Tenenbaum on appeal, including an argument that “consumer copiers” such as himself are not subject to the Copyright Act. The court explained that even if Tenenbaum was a so called “consumer copier”, which it decided he was not, the clear language of the Copyright Act would not exempt such a category of infringer from liability.

What does this decision mean for future copyright litigation?

For now, this decision means that the constitutionality of the statutory damage range set by Congress for willful copyright infringement remains undisturbed in the First Circuit. For the District of Massachusetts, the task is to determine whether the case can be resolved according to remittitur in the district court. If not, the First Circuit may be forced to decide whether an award for willful copyright infringement within the statutory range can actually be considered unconstitutional. Perhaps the First Circuit foreshadowed in its opinion how it would handle the question: “We comment that this case raises concerns about application of the Copyright Act which Congress may wish to examine.” Such a statement may very well mean that the Court will not find any award within the statutory range set by Congress to be unconstitutional, and that the only redress in such a situation would be to lobby Congress for change in the Copyright Act.

Either way, it remains to be seen whether the court in Capitol Records v. Thomas-Rasset — the other similar post-trial copyright infringement casewhere a district court in Minnesota recently held the jury award to be unconstitutional — will heed the First Circuit’s statement as a warning that courts should not hold copyright infringement damages that are within the Copyright Act’s statutory range to be unconstitutional; the record companies in that case have recently appealed the Thomas-Rasset case to the Eighth Circuit.

What’s Protectable?: Claim of Copyright Infringement of LaChapelle’s Photos in Rihanna’s ‘S&M’

By Nancy E. Wolff

Shira Scheindlin, a U.S. District Court Judge in the Southern District of New York, recently denied Robin “Rihanna” Fenty’s (“Rihanna”) Motion to Dismiss the copyright infringement element of a claim instituted by famed photographer David LaChapelle regarding Rihanna’s highly sensationalized ‘S&M’ video. LaChapelle asserts that the protectable elements of eight of his photographs were used in the creation of the video. The court ruled that LaChapelle successfully proved that a Motion to Dismiss was improper because the video was “substantially similar to particular original expressions of the subjects in the photos.”

LaChapelle argued that although certain themes were not protectable (e.g. S&M, bondage), the way he “selects and orchestrates the themes, props, settings, wardrobe, and colors” while controlling the “angles posing, and lighting” are uniquely his way of expressing those themes which remain copyrightable. The court agreed, stating that if the work is so substantially similar that the ‘Ordinary Observer’ would recognize the copy as having been appropriated from the copyrighted work, copying each detail is not necessary to meet a threshold of infringement. The court did dismiss the federal trade dress claim and other state common law claims brought by LaChapelle.

This case raises the issue of what elements of a photographic work are protectable under the Copyright Act and what visual elements are free to copy as the law does not protect ideas but only their tangible expression. How does one determine what is merely a theme in the work verses the expression of that theme? In the motion, the court references unprotectable elements as those that “flow naturally and necessarily from the choice [subject].” This line between permissible “inspiration” and infringing “duplication” is one that is difficult to articulate when comparing two works of visual art. The Southern District of New York has had its fair share of these cases, and courts have attempted to distinguish between photographing a similar theme on the one hand, while on the other “borrowing” details specifically chosen by the photographer to illustrate the theme. Relying on these past decisions, Judge Scheindlin saw too much similarity in color and in the staging of scenes labeled “Striped Face” and “Pink Room” in particular. She also rejected the fair use defense as there was no evidence of commentary on LaChapelle’s work.

While these visual art case decisions are often controversial, particularly for those artists in the appropriation art movement, the distinctions established by the courts based on these previous rulings will shape how LaChapelle and other visual artists can benefit from copyright protection while leaving room for artistic expression to flourish. Where more intricate details from the original — not necessary to the scene — are “borrowed”, the more likely a judge will allow a case to move forward to a jury. At that point, most of these cases settle and we have no further judicial guidance.

(For more see LaChapelle v Rihanna 11 Civ 0945, SDNY July 20, 2011)

War for your “App Store”: Apple vs. Amazon: Federal Judge Unconvinced

By Nancy E. Wolff

Federal Judge Phyllis Hamilton of the U.S. District Court for the Northern District of California, denied Apple’s request for a preliminary injunction to bar Amazon.com from referring to its online software marketplace as an “Appstore” pending the outcome of Apple’s suit regarding the matter. Since 2008, Apple has used the term “App Store” to describe the online location where its shoppers can purchase software applications for their mobile devices (such as the iPhone and iPod). Since then, the online market has become saturated with similar downloadable software applications for mobile devices and online shops to purchase these products.

Apple argued that the term “App Store” was suggestive and not descriptive, while Amazon asserted that the mark was generic, and if descriptive was not inherently distinctive. The court disagreed with Apple’s argument that the mark was suggestive but would not go as far as saying that the term was “generic”. The court simply found no likelihood of confusion by consumers who know the difference between Apple products and Android.

Apple also asserted that Amazon’s use diluted its famous mark. As the early entrant in the market, Apple claims it has spent millions of dollars in marketing for the use of the term “App Store”. Nowadays the term is widely used across the industry by other software companies that provide software applications for mobile devices (such as Google, Microsoft, etc), causing the mark “App Store” to be perceived as a more descriptive and generic term rather than the dilution of a famous mark.

At the heart of their argument, Apple alleged there would be a “likelihood of confusion” amongst the “unsophisticated” consumer if Amazon continued to use the term “Appstore” in its title, although Amazon’s full title is, “Appstore for Andriod.” Amazon claimed the allegation is unsubstantiated because the entire title indicates that the applications in its online shop are solely for consumers using mobile devices powered by Android. Additionally, Apple urged the court to look at the term “App Store” as one term to determine that the mark was inherently famous as opposed to looking at both terms separately. Looking at the words separately, App (meaning “applications”) + Store would more likely deem the term descriptive, garnering little protection under U.S. trademark law.

This case raises interesting questions about the registration of marks that contain descriptive words in the title. To succeed on a dilution claim, a mark must be deemed famous and this analysis has several elements (See 15 U.S.C. §1125 (c)(2) (A)). However, famous or not, the question remains as to the protection of a term that accurately identifies a goods or service when that term is widely used in the industry. Judge Hamilton indicated it is unclear whether the term “App Store” gained recognition as an Apple trademark or was merely a descriptive term for electronic shopping. Even so, the court found that the term is not famous because Apple has not proven the term is “prominent or renowned.”

As Apple’s preliminary injunction was denied, other cases raising the question of descriptive vs. famous will most certainly come down the pipeline and force the courts to take a closer look at what marks are worthy of registration as our technology and consumer brands develop and evolve. Clearly the courts in the 9th Circuit are concerned with giving the early entrant a monopoly over a term that is used industry-wide.

For more see Apple Inc. v. Amazon.com Inc., 11-1327, U.S. District Court, Northern District of California (Oakland).

Christian Louboutin and the Fight for Your Red Sole!

By Nancy E. Wolff

Christian Louboutin (“Louboutin”), the popular shoe company, has sued several other companies for the infringing use of their trademarked red sole which has become synonymous with the brand’s identity for over 20 years. Louboutin first registered the red sole in 2008 and has since sued such brands as Carmen Steffans, Oh…DEER!, and most recently Yves Saint Laurent (“YSL”). Louboutin claimed YSL, another brand associated with luxury, infringed their trademark with YSL’s new line of shoes, that include red-soled shoes amongst other colors.

In the complaint, Louboutin claimed YSL sought to take advantage of their brand recognition as an attempt to confuse the public and thereby impaired Louboutin in their ability to control their recognition through the dilution of their mark. The Court will apply the “likelihood of confusion” test to determine whether the consumer will be confused by the source of the shoes.

When the courts use the “likelihood of confusion” test they look at the following factors: the strength of the mark, the proximity of the goods, the similarity of the marks, evidence of actual confusion, the similarity of marketing channels used, the degree of caution exercised by the typical purchaser, and the defendant’s intent. In the case of YSL, the Court will have to balance these factors, as both the plaintiff and defendant are luxury brands servicing a very similar consumer.

Although trademark owners who fail to enforce their marks risk losing them as a matter of law, the question arises whether registering a color is an overreaching use of trademark law. Those who believe it is argue that registering a color provides an unfair competitive advantage. However, supporters argue that it strengthens the market by providing consumers with easily recognizable brands they can associate with the quality they desire.

Louboutin is not the first to vigorously enforce his trademark, as the color argument in association with “Trademark Dilution” is a widely debated issue. The outcome of this case could lead to other businesses using alternative means to keep their brand recognizable in the eyes of the consumer… or at least it may deter them from using red soles on their shoes.

Defendant’s Attorney’s Fees Awarded After Successfully Defending Against Infringement Claim

By Nancy E. Wolff

The American Society of Composers, Authors, and Publisher’s (“ASCAP”) successfully defended against a claim of copyright infringement asserted by Latin American Music Company (“LAMCO”) and, as a result, was awarded over $82,000 in attorney’s fees and costs. The U.S. Court of Appeals for the First Circuit stated that the Copyright Act did not prohibit the recovery of attorney’s fees in a case of non-infringement where the defendant prevails against the assertion.

LAMCO, a music publishing company based in New York, claimed that ASCAP along with other defendants, infringed their rights in over 500 music compositions. As ASCAP, successfully defended against the case by jury verdict, they moved for and were awarded attorney’s fees. LAMCO promptly appealed the decision.

At heart of their argument LAMCO referenced Section 412 of the Copyright Act. They claimed the disputed song “Caballo Viejo” was not timely registered, therefore recovery of attorney’s fees was prohibited as a matter of law. However, this argument fails on its merits because it is impossible for a defendant to comply with this requirement as it applies to plaintiffs asserting their copyrights, not those defending against infringement.

The ramifications of this case could elicit a demand for changes in the law to prevent all defendants from moving for the Court to grant attorney’s fees when they successfully defend against an infringement claim. As the award of attorney’s fees shifts to the prevailing party in Copyright Law, this case serves as a reminder for potential plaintiffs that their costs could be beyond what they anticipated if they are not the prevailing party. Let the plaintiff beware.

How Much Is Too Much? Transformative Works vs. Derivative Works: Photographer Wins Appropriation Art Copyright Case

By Nancy E. Wolff and Kenneth N. Swezey

Patrick Cariou, a professional photographer won his case in District Court in New York against well-known appropriation artist Richard Prince and the Gagosian Gallery after several of Cariou’s pieces were appropriated without consent in Prince’s “Canal Zone” series showing at the Gagosian in 2008.

Prince admits to appropriating a total of 41 photographs from Cariou’s book, “Yes, Rasta” published in 2000, for his show but claimed the “fair use” defense, citing that his work was sufficiently transformative to be deemed a new work of art. The District Court disagreed. Judge Deborah Batts, granted a Motion for Summary Judgment in favor of Cariou on the issue of copyright infringement and ordered Prince to deliver all infringing copies of the work for impounding and destruction.

Embodied in Section 107 of the 1976 Copyright Act are four elements courts must consider when determining whether fair use is an adequate and applicable defense: (1) the purpose and character of the work (i.e. the extent to which the work is transformative, not merely derivative of a earlier work), (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 heart of this case focused on the first element and examining whether Prince’s work was merely derivative of the original photos or transforms them. While the Defendants argued use of copyrighted materials as “raw ingredients” when creating “appropriation art” is always transformative and fair use, the Judge disagreed stating there was no precedent that would deem this use fair absent transformative comment on the original work.

The preamble of Section 107 describes certain types of works that fit within the purpose of fair use, such as criticism, comment, news reporting, teaching scholarship or research. The four factors are to be considered in examining the purpose. Courts have distinguished infringing derivative works from transforming fair use by requiring that the new work must “supersede the objects of the original creation…altering the first [work] with new expression, meaning or message.” A derivative work is one that merely “recasts, transforms, or adapts an original work into a new mode of presentation.”

The Judge’s analysis highlights the distinction between a derivative work that requires consent from the underlying copyright owner and a transformative work in situations where an artist appropriates the work of another artist’s as the “raw ingredients” for their own work. As the term “transforms” is included in the definition of a derivative work, if the new work is absent any comment on the original or on the broader culture associated with the underlying art, it will be infringing. To hold otherwise would be eviscerate the original artist’s right to authorize derivative works. There would be no need for the distinction and no limitation on how one artist can appropriate the aesthetic value of another artist’s work.

A redefinition of the fair use defense as sought by Prince and his gallery would create a level of disrespect to the original artist’s work because it would promote a devaluation of the art as its only seen as “ingredients” to “play with” in the creation of a new piece. Their work would have no more value than the cloth of a designer before they create fashion design or paint to a painter before it graces the canvas. As Prince testified that he did not “really have a message” in using the photographs, the judge ruled there was little to no transformative intent.

As the history of the fair use defense makes evident, the doctrine calls for a case-by-case analysis. But if the applicability of the fair use defense hinges on whether the artist has the intent to create a new message, why should caveats exist for “appropriation art” that do not exist in other mediums?

Supreme Court to Consider Constitutionality of Act Restoring Certain Foreign Copyrights

By Al J. Daniel, Jr.

On March 2, 2011, the Supreme Court of the United States granted certiorari in a 10th Circuit case to review whether the Court of Appeals correctly upheld the constitutionality of §104A of the Copyright Act, which created or restored U.S. copyright protection to foreign works in 1996 which never had U.S. protections or had earlier fallen into the public domain in the U.S. because they failed to comply with certain formalities of U.S. copyright law. Petitioners claim that the 15 year-old statute violates the Copyright Clause by restoring copyrights of public domain works and violates a First Amendment right to exploit these restored works without permission from the owners.

This will be a decision of great interest to foreign copyright owners and rights holders of foreign works.

The article by CDAS attorney Al J. Daniel, Jr. can be viewed here. It was published in the MLRC MediaLawLetter, March 2011, pp. 9-10, and is reprinted with permission.