Legal Blog

Second Circuit Finds Warhol Artwork of Prince Infringing: Drawing a Line Between Infringing Derivative Works and Transformative Fair Use with Appropriation Art

By Elizabeth Altman

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir.), opinion withdrawn and superseded on reh’g sub nom. Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021)

The Second Circuit recently upheld its earlier March 26 decision in Warhol v. Goldsmith, following the recent Supreme Court decision in Oracle v. Google.  The Warhol estate had asked for a rehearing after Oracle, which marked the Supreme Court’s first fair use foray in over 25 years, specifying that Google’s copying of Oracle’s Java API code to develop its Android mobile operating systems was fair use. Ultimately, however, and notwithstanding the Estate’s attempt to frame Oracle as broadening the scope of transformative use, the Warhol results remained unchanged. The Second Circuit affirmed its holding that artist Andy Warhol’s famed Prince series, based on a photograph by Lynn Goldsmith, was not fair use, limiting the Oracle decision to cases involving software code, particularly considering that code serves a utilitarian, not artistic, function. Reiterating its application of the four fair use factors, the court found Warhol’s use of Goldsmith’s photograph an infringing derivative work rather than a transformative fair use.

The Warhol dispute itself centered around a 16-work series by Warhol—silkscreen prints and pencil illustrations—which he based on Goldsmith’s 1981 black-and-white photographic portrait of Prince. Goldsmith, who had originally licensed the photo to Vanity Fair for use as an artist reference, was apparently unaware for decades that the artist behind the subsequent work was the famed Warhol. Further, Warhol had exceeded the intended scope of the license, creating not just one image, as he was commissioned to do by the magazine, but 15 additional ones, that became his well-known Prince series.

Goldsmith first learned of the series following Prince’s death in 2016, and notified the Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) that she believed it violated her copyright in the original photograph. Seeking to ward off prospective litigation, AWF initiated a suit against Goldsmith’s studio for a declaratory judgment that Warhol’s works were non-infringing, or alternatively a fair use. Goldsmith countersued for infringement.

The case had a few twists and turns as it first passed through the Southern District of New York, which held that it was “plain” that Warhol’s series was protected by fair use. Driving this decision was the court’s finding that under the first fair use factor, which addresses the purpose and character of the secondary artist’s use, Warhol’s use had been transformative, changing the character of the original image by “transform[ing] Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” This finding in turn swayed the remaining second and third factors, addressing the nature of the work and the amount of the work used, and as to the fourth, which addressed the potential for market harm for the original, the court believed that Warhol’s art and Goldsmith’s prints operated in separate markets that would not affect each other.

The Second Circuit’s reversal marked a departure from both this holding and its own precedent on transformativeness with respect to appropriation art, particularly from its 2013 ruling in the Cariou v. Prince, which had addressed another famous artist’s—Richard Prince’s—alteration of a photographer’s work, finding it to be transformative and fair use.Although the Second Circuit took pains to note that it would remain bound by Cariou as precedent, it did single out the decision, seeking to clarify—and for all intents and purposes gut—the case’s application of transformativeness with respect to appropriation art.

Transformativeness derives from an earlier a Supreme Court decision, Campbell v. Acuff-Rose Music, Inc.,and directs courts to examine the degree to which a secondary work transforms the original, imbuing it with a new meaning or message, or a further purpose or different character. Courts consider whether a work is transformative by how it may be reasonably perceived. Works that are found to be transformative often sway the first factor towards a fair use finding. The Second Circuit’s particular concern over the application of Cariou’s transformativeness approach was that the Southern District had read it to support a rule that any secondary work is transformative if, compared with the original, it displays a different character, new expression, or employs new aesthetics with creative, communicative results. However, just because a secondary work adds new expression or aesthetics, does not necessarily mean it has transformed the original, cautioned the court. Where the work “does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created,” it should not be deemed transformative. The court compared the works deemed to be fair use in Cariou with the ones that could not be determined to be fair use as a matter of law and noted that those that were considered fair use were more collage-like and consisted of many elements, in contrast to works in which the artist had only added a few elements to the photograph, which were remanded to the district court.

In the case at hand, conceivably, any photograph of Prince would have sufficed to meet Warhol’s purposes, not merely Goldsmith’s particular work, and as such, the court declined to treat his output as more than a derivative work, for which he would owe a licensing fee. Notwithstanding the fact that a derivative work will likely look at least somewhat dissimilar or altered when compared to the original, because Warhol had not undertaken the alterations to comment on the underlying work, it could not qualify as transformative, which the court stressed requires much more in the context of appropriation art to qualify as fair use, so as not to deprive the original creator of their owed license.

Revisiting the first factor analysis, the Second Circuit held that the purpose and function of the two works in Warhol was one and the same, as both were works of visual arts that portrayed Prince. Any deviations Warhol made to imbue the print with his signature style did not transform the work in the fair use sense of the term, but merely adapted it by removing some of the image’s depth and heightening its contrast with loud, unnatural colors. The photograph remained the recognizable foundation of the work. The amended decision did note, however, that in the context of visual artworks, purpose is “perhaps a less useful metric” considering both the original and secondary work take as their purpose the aim of serving as visual art. The deciding factor, the court advised, was a comparison of the secondary work with the source material. In Cariou, for example, fair use arose for those works that were most collage-like and most rendered the original unrecognizable. The main test, therefore, is whether the secondary work’s use of the source material serves a fundamentally different and new purpose and character, rendering the work unique from its raw material. It is not enough, as in Warhol, for an artist to merely impose his style on the primary work, leaving the essential elements of both intact. While such an undertaking may serve as an adaptation or derivative, it is not transformative.

Further, it would not suffice to allow Warhol a “hall pass” merely because the work he created was immediately recognizable as a “Warhol,” as such a standard risks creating a “celebrity-plagiarist” loophole, where, in actuality, Warhol had the same responsibility to license the original as any less famous artist. Nor would it suffice for the artist to merely state that the series was transformative, or for the court to discern such intent.  

As to the second and third factors, which typically hold less sway in the overall analysis, the court, with the blinder of transformativeness removed, found that the amount and substantiality of the portion used strongly favored Goldsmith, considering that Warhol had copied the photo wholesale. Diverging again, from the district court’s view, the Second Circuit believed it irrelevant that Warhol had made certain alterations, like cropping and flattening the photo. And, contrary to the district court’s view of the fourth factor’s effect on the market for the original, the Second Circuit did believe that the series could threaten Goldsmith’s licensing markets, considering that fair use examines potential, as well as existing markets. The court believed the works shared the same secondary licensing markets, as both appealed to magazines and other publications providing content relating to Prince. This emphasis on the fourth factor further departed from Cariou, which had placed the greatest weight on the transformativeness analysis; in giving the fourth factor its fair due, the Second Circuit joined the growing number of courts reemphasizing the fourth fair use factor as primary, or at the very least, not a factor to be subsumed into shadow of transformativeness.

Overall, the key Warhol lesson that artists should take away is to be aware that courts have grown less inclined to permit fair use to safeguard wholesale copying, or appropriation, where a new work does not truly transform the original by incorporating a new message, even if visual elements of the original have been substantially modified. In cases where the second work does not comment directly on the original, as in Warhol where the works remain visually substantially similar, fair use is less of a given, and the work will instead likely be deemed derivative. Although Warhol’s use of photographs aimed to effect social commentary, the Second Circuit now requires appropriation art to actually change the underlying work (if not commenting on the underlying work), which disfavors conceptual art that comments more broadly on society, such as Warhol’s commentary on celebrity icons with his series on Marilyn Monroe, versus collage artists such as Richard Prince who combine many elements of published works. Since the selection of the underlying image was not relevant to Warhol, he could have licensed any photograph of Prince’s image to use as a derivative work. Although Cariou remains good law, its approach to transformativeness no longer applies; instead, the burden of showing transformativeness is now set at a higher bar. It’s also possible that other photographers will see this case as an open door to bring suit, where the statute of limitations allows, against artists, even Warhol, who arguably applied a light hand in creating secondary works from their material. Yet, it’s important to remember that, for better or worse, fair use cases tend to be very contextual, and may depend on the type of work infringed, as demonstrated by the Second Circuit’s refusal to apply Oracle’s holding on code to appropriation art. Finally, as discussed in the latest Warhol decision’s concurrence, although galleries, art dealers, and museums that acquired the appropriation art should not be affected by the case (i.e., they would not owe damages or royalties to plaintiff), its holding may apply to entities like magazines, that commercially license the work. This is so because, as the concurrence observed, Warhol’s series and Goldsmith’s photograph shared overlapping licensing markets owing to their similar expressive capacity as Prince portraiture.

Ninth Circuit corrects the record on de minimis use in photograph dispute

By Daniel McAuliffe and Nancy Wolff

The Ninth Circuit recently clarified that the de minimis use defense (meaning too minor to constitute an infringement) is not an affirmative defense in a copyright infringement case involving an identical use of a photograph, reversing a finding in favor of the defendant asserting the defense.  Instead, the court stressed that an inquiry into de minimis use must begin by asking whether the use is “substantially similar to the copyrighted work.”  If there is identical copying, as the court found, then there cannot be a de minimis defense—no matter how trivial the displaying of the content might be.

With the increased use of image recognition technology and image enforcement companies representing photographers, website operators and business owners are defending copyright claims based on images published, in some cases, decades ago.  In this instance, Richard Bell, a retired attorney and active litigant, sued Wilmott Storage Service over a twenty-year-old photo of the Indianapolis skyline.  Wilmott had displayed the photograph on its website, where it resided on its server, but could only be found using reverse image search technology or a direct link.  Based on this limited display use, the district court awarded summary judgment in favor of Wilmott, finding Wilmott’s use to be de minimis, and Bell appealed.

On appeal, the court focused on two questions: 1) whether Wilmott was truly displaying the photo if it could not be found by running a basic Google search, and 2) whether Wilmott’s use was de minimis.  While the appellate court acknowledged that the “average internet user” would not have had access to the photograph on Wilmott’s website unless it conducted a reverse image search like Bell or had a direct link, the court concluded that Wilmott had displayed the photograph under the server test.

The server test, first affirmed by the Ninth Circuit in Perfect 10, Inc. v. Amazon,508 F.3d 1146 (9th Cir. 2007), examines whether an entity is displaying a work within the meaning of the Copyright Act by looking at whether an entity is storing (or serving) content on its servers, or is just linking to another website that is storing the content.  While the photo at issue here was available only via reverse image search, or by using a specific URL, the court concluded that: “Wilmott transmitted, and therefore displayed, the Indianapolis photo without Bell’s permission.”  It did not matter that the photo would not populate via a regular Google text search, as the court held that Bell did not “need to prove there was some minimum number of users who in fact accessed the Indianapolis photo to make out a … case of infringement.”

Dealing next with the issue of de minimis use, the court emphasized that its circuit (along with other circuits) does not view de minimis use as an affirmative defense to infringement.  Instead, the de minimis doctrine acts as a threshold question to actionable copying.  Any copying, to be actionable, must be substantially similar to the registered work.  A use can only be de minimis if it is not substantially similar to the work.  In this case, because Wilmott stored a wholesale replication of the photo, its use of the photo could not be de minimis.

To help illustrate this concept, the court referenced a case, Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004), where the Ninth Circuit found de minimis use over the Beastie Boys’ unauthorized use of a six-second sample in a copyrighted jazz song.  In contrast, Wilmott used the entirety of the photograph unlike the small, unrecognizable portion of the work that the Beastie Boys used in Newton.  As a result, the appellate court rejected the district court’s theory that Wilmott’s use of the photo was only a “technical violation” because the Copyright Act details several exceptions to infringement but none of them provide for a technical violation.  Finding a technical violation as the district court did was not within the spirit of what Congress intended for the Copyright Act.

By overturning Wilmott’s lower court victory, the Ninth Circuit has clarified its position on de minimis use: the defense is available only to those who do not substantially copy a work.  When the infringing work is an identical copy, there cannot be de minimis use, even if the infringing use is difficult to find online or otherwise.  

As for Bell, two concurring opinions suggest that he may not be victorious even as the district court reconsiders his lawsuit.  One judge labeled Bell a “copyright troll” who has filed more than 100 lawsuits concerning the Indianapolis photo.  Further, he also raised a legitimate concern that Bell himself does not even own the copyright to the photograph.  The other concurring judge noted that Bell had prevailed in other lawsuits via default judgment and encouraged the lower court to address the issue of whether Bell owns the copyright before proceeding further.

While there may be many legitimate defenses in a copyright infringement suit, arguing de minimis use in instances of the full use of a photograph is no longer a tool for defendants to rely on, at least in the Ninth Circuit.

Bell v. Wilmott Storage Services, LLC, No. 19-55882, 2021 WL 4097499 (9th Cir. Sept. 9, 2021).

#BlackTikTokStrike: How TikTok Dance Creators Can Begin to Protect Their Choreographic Works

By Kamilah Moore

The hashtag “BlackTikTokStrike” has been viewed more than six million times on TikTok, a free video-sharing-focused social networking service. TikTok has created superstars like Addison Rae and Charli D’Amelio, but these stars have mostly been white women and girls, and they have often gained notoriety and received millions of views by parroting dance routines primarily created by Black creators and other creators of color.

In March, TikTok star turned media personality Addison Rae made an appearance on The Tonight Show Starring Jimmy Fallon teaching the late-night host eight of the most trending or popular dances on the social media platform. Fallon and Rae subsequently received major backlash for initially failing to credit the originators of each of the eight dances.

Jalaiah Harmon, the creator of the “Renegade” dance, Keara Wilson, creator of the dance to Megan Thee Stallion’s “Savage Remix”, and Dorian Scott, creator of the “Corvette Corvette” dance, are just a few Black creators who did not initially receive credit for their viral dance routines. The mishap on The Tonight Show serves as just one of many examples where Black creators and other creators of color have not received proper attribution in the marketplace for their creativity.

Noticing this trend, a growing number of Black TikTok users, rather than choreographing and posting viral-worthy dance routines, are instead posting videos bringing awareness to the strike. Dancer Erick Louis, one of the first to announce the boycott, stated in his post: “This app would be nothing without [Black] people.”

Against the backdrop of the strike, what can Black creators and other creators of color do to protect their choreographic works, protect their rights, and monetize their creativity? Part of the answer may lie in gaining a solid understanding of United States copyright law and an understanding of its importance and relevance to digital media and the culture of platforms like TikTok.

How TikTok Dance Routines and U.S. Copyright Law Intersect

If a TikTok user creates a viral-worthy dance routine to one of the most popular songs in the country, and then proceeds to post a tutorial video on TikTok, what are the creator’s rights and how can she/they/he protect them? It is important to first address: what is a copyright?  

A copyright is defined as a form of intellectual property that protects original works of authorship as soon as the author fixes the work in a tangible medium of expression. Further, section 102(a)(4) of the U.S. Copyright Act of 1976 provides for copyright protection in “…choreographic works.”

In other words, a dance routine can become copyrightable. For example, an original dance routine is considered an “original work of authorship”, and it becomes copyrightable once the creator posts or ‘fixes’ the dance routine on a platform or “tangible medium of expression”, like in the form of a TikTok video.

Once a creator posts their dance routine on TikTok (or on any other platform), they are the author and the owner of such work, and therefore, are immediately afforded exclusive rights under U.S. copyright law. Some of these rights include, but are not limited to:

  • Performing and displaying the dance routine publicly. 
  • Preparing derivative works (other creative works based on the dance routine).
  • Authorizing others to exercise these exclusive rights, subject to certain statutory limitations.

Although the creator is afforded the above-mentioned rights immediately upon posting their dance tutorial on social media, registering the actual dance routine with the U.S. Copyright Office will enhance the creator’s protections. Thus, while copyright registration is not required, it does provide creators with enhanced rights and benefits. Some of these enhanced rights and benefits include: 

  • Presumption of ownership of the dance routine.
  • Public record of ownership of the dance routine. 
  • Ability to enforce copyrights by filing a federal lawsuit for copyright infringement of the dance routine. 
  • Eligibility for statutory damages (monetary damages set by the law that do not have to be specifically proved), attorney fees, and costs of suit.

In summary, copyright is less about attribution and credit and more about monetary incentives and being compensated for your work while fostering creativity. Black TikTok creators and other creators of color may seek legal protection by immediately registering their choreographic works with the U.S. Copyright Office. One caveat: the U.S. Supreme Court ruled in Fourth Estate Public Benefit Corp. v. Wall-Street.com, 139 S. Ct. 881 (2019) that copyright owners must wait for the U.S. Copyright Office to approve their application before filing a lawsuit for infringement.

Critical Takeaways for TikTok and Other Dance Content Creators: 

  • Continue cultivating and building your choreographic skills!
  • Consult with an attorney for advice on whether your choreographic work(s) qualify for copyright protection.
  • If so, consult with an attorney to register your choreographic work(s) with the U.S. Copyright Office.  
  • Consider forming a company such as an LLC to treat your hard work like a business – and get paid!

Disclaimer: The materials available on this website are for informational purposes only and not to provide legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem. Use of and access to this Web site or any of the e-mail links contained within the site do not create an attorney-client relationship between Cowan, DeBaets, Abrahams, and Sheppard LLP and the user or browser. The opinions expressed at or through this site are the individual author’s opinions and may not reflect the firm’s opinions or any individual attorney.

Copyright Preempts Right of Publicity: SDNY rules against “Stuttering John” favoring copyright over publicity rights in Melendez v. Sirius XM Radio

By Nancy Wolff and Olivia Rose

In a clash between a radio personality’s right of publicity claim and a satellite radio’s copyright claim, the Southern District of New York recently dismissed John Melendez’s complaint against Sirius XM Radio alleging violation of California statutory and common law rights of publicity, holding that the promotion and rebroadcasting of his radio shows was preempted by federal copyright law. This case is a win for content owners who face claims by personalities trying to make an end run around improbable copyright claims and instead assert rights of publicity claims for use of their “attributes.”

Plaintiff Melendez is popularly known for his humorous “Stuttering John” radio interviews that aired for 16 years on the Howard Stern Show beginning in 1988 where he asked politicians, celebrities, and athletes outrageous questions. In 2004, Melendez left the show to become the announcer for Jay Leno’s The Tonight Show. Two years later, Howard Stern signed a deal with Sirius XM to move his show from terrestrial radio to the subscription-based satellite radio service. As a part of the deal, Sirius acquired a license to air current episodes of the show and to air full or partial episodes from the Howard Stern Show archives that feature Melendez as Stuttering John. According to the complaint, Melendez alleged that Sirius continuously aired old shows featuring Melendez and used his likeness to promote Sirius radio. Melendez sued in the Southern District of New York claiming Sirius violated his California statutory and common law rights of publicity.

The court dismissed the complaint with prejudice, finding that Melendez was attempting to prevent the airing of radio broadcasts, works that could be subject to copyright and that are governed by federal copyright law. The federal preemption provision, 17 U.S.C. § 301(a) establishes a two-pronged test to be applied in preemption cases. Under this test, states are precluded from enforcing penalties for state law violations if the intellectual property at issue falls within the “subject matter of copyright” as defined by federal law and if the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law. 

Under the first prong, courts look at whether the subject matter at issue (here, sound recordings) pertain to subject matter covered by copyright. Even though the recordings of Melendez were not copyrighted (and may not even have been eligible for copyright protection), this did not preclude preemption because it was sufficient that the claim was subject to the possibility of statutory preemption.  In short, Sirius did not actually need to be a copyright holder to prevail.

In addressing Melendez’s right of publicity claim, the court looked at whether his claim aimed to vindicate the misuse of Melendez’s likeness by implying a false endorsement or to exploit a work that could be subject to copyright protection, or if Melendez was attempting to control the dissemination of the work under copyright.  Since Sirius was using the recordings to advertise the Howard Stern episodes featuring Melendez, and not Sirius itself, the court rejected Melendez’s argument of implied endorsement under California right of publicity.  Melendez failed to plead any plausible facts that suggest Sirius’ intended audience could reasonably construe the advertisements as an endorsement of Sirius. The court noted that the only commercial advantage Sirius gains from playing the old clips of Melendez flows from the sound recordings themselves, not from Melendez’s identity.

Under the second prong of the copyright preemption test, the court must decide if the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law.  In order to decide this factor, the court’s analysis focuses on whether the nature of the state law action is qualitatively different from a copyright infringement claim.

The court held that Melendez’s claims are not qualitatively different from copyright infringement claims because they are effectively claims for wrongful rebroadcasting of copyrightable sound recordings. Additionally, Melendez’s request for the court to permanently enjoin Sirius from “continuing the improper acts” made it clear to the court that Melendez was attempting to control the broadcasting of sound recordings—a right that is exclusive to the copyright holder—under the guise of protecting his right of publicity. As a result, the court dismissed the complaint with prejudice, ending Stuttering Johns’ action against Sirius from the onset.

This case is consistent with other court decisions refusing to enjoin the sale or distribution of a product based on state right of publicity laws where the product itself is a work subject to copyright (such as a photograph) and the celebrity’s attributes are not being used to endorse or sell a different commercial product, protecting the copyright holder of the works from questionable publicity claims.

Legal Drama over Docudramas: New York Appeals Court Rules in Favor of Film Producer in Porco v. Lifetime Entertainment Services, LLC

By Scott J. Sholder and Leah Scholnick

On June 24, a New York appeals court ruled in favor of docudrama makers in Porco v. Lifetime Entertainment Services, LLC,clarifying when filmmakers and producers who make unauthorized use of an individual’s name or likeness are shielded from liability under New York’s statutory right of publicity. The decision is a victory for First Amendment advocates and the media and entertainment industries in general, more clearly delineating the freedoms afforded to creators of docudramas when conveying important matters of public interest. Prior right of publicity cases in New York have not directly addressed the genre of docudramas and this case harmonizes New York law with other jurisdictions, most notably California.

Plaintiff Christopher Porco, who was convicted of brutally murdering his father and attempting to murder his mother, sued Lifetime over the docudrama entitled Romeo Killer: The Chris Porco Story, which depicted the events surrounding the murder in a semi-fictionalized manner. Porco alleged that Lifetime made a commercial, nonconsensual use of his name and likeness and that the docudrama was highly inaccurate, violating New York’s statutory right of publicity found in Civil Rights Law Sections 50 and 51. Lifetime argued that there was no such violation because the film used Porco’s name and likeness in reasonable relation to newsworthy events, invoking the “newsworthiness” exception. The trial court denied both parties’ motions for summary judgement, holding that there were issues of fact relating to whether the film was so materially and substantially fictitious that it no longer served the goal of conveying newsworthy information.

On appeal, a panel of the New York Supreme Court Appellate Division, Third Department explained that to prevail on his claim, Porco needed to demonstrate that Lifetime knowingly fictionalized incidents and made a substantially fictitious biography solely to trade on Porco’s persona. The court’s analysis delved into the history and interpretation of New York’s statutory right of publicity, which was enacted over a century ago to provide limited civil and criminal liability for the nonconsensual, commercial use of a living person’s name or likeness for advertising or trade purposes. New York courts have long recognized that this narrow right must be balanced against First Amendment guarantees of free speech, and as such, have carved out an exception for newsworthy events and matters of public of interest, even if the ultimate use is for profit. According to the court, many diverse forms of expression—even those created mainly for entertainment purposes—can be considered newsworthy because they provide audiences with access to information about various subjects of public interest.

However, the exception does not apply when biographical information is so fictionalized that it no longer serves the goal of providing that information to the public. Where to draw the line was the key question at issue in Porco, and is one that is relevant to all docudramas, a genre rooted in presenting historical events in an entertaining manner that risks misleading viewers as to the complete accuracy of the events. Porco’s sensational, newsworthy crime made it a likely candidate for a true crime docudrama, which Lifetime did not need Porco’s permission to create as long as the filmmakers did not create a fictionalization of the events that would no longer serve the goals of the newsworthiness exception.

Porco argued that Lifetime’s film was fictionalized to the point of being an “invented biography” that no longer fit within the scope of the newsworthiness exception. The court reviewed case law in which the newsworthiness exception did not apply, including where a writer was held liable for an unauthorized biography of a baseball player that included so much “material and substantial falsification” that it no longer served the purpose of providing access to information of public interest, and where a filmmaker was held liable for a “fanciful” dramatization of the true story of a “daring sea rescue” that would have had newsworthy value had it bore any relation to the actual event.

The court ultimately found Porco’s case distinguishable from these precedents. After the court reviewed the film, a timed dialogue script, media interviews, and transcripts from Porco’s real-life criminal trial, it concluded that the film satisfied the newsworthiness exception. Despite the dramatization of certain elements in the film—such as recreation of dialogue, use of flashbacks and staged interviews, and use of fictional names and composite characters—the film constituted a “broadly accurate depiction of the crime.” Additionally, the court emphasized the critical fact that Lifetime acknowledged and informed viewers, both in the beginning and at the end of the film, that the events were dramatized and “based on” a true story. This disclaimer, the court held, was necessary to prevent viewers from believing that the film’s depiction of Porco was entirely true.

In sum, the court held the newsworthiness exception applied even to highly dramatized works as long as the work does not mislead viewers into believing that embellished depictions of individuals or events are entirely true. For these reasons, the Appellate Division reversed the trial court’s denial of Lifetime’s summary judgement motion because Porco failed to raise an issue of material fact as to whether the film amounted to a fictitious biography that defeated the goal of conveying information about a matter of public interest.

As a point of comparison, the 2018 California case de Havilland v. FX Networks, LLC similarly addressed the unauthorized use one’s persona, specifically the name and likeness of actress Olivia De Havilland in a docudrama series entitled Feud: Bette and Joan. The California Court of Appeals, in also ruling in favor of the defendant, focused more on the importance of First Amendment protections of docudramas measured not necessarily by their newsworthiness, but by whether they are merely advertisements for the sale of goods or services, whether the depictions of the plaintiff were transformative, and whether the work primarily derives its value from those depictions. While their rationales differed, both the de Havilland and Porco decisions resulted in broader freedoms for producers and filmmakers of docudramas to rely on the First Amendment—framed by court-articulated guideposts—as a shield for their creative works. Both discussions complement each other and provide a broader understanding of increasing protections for hybrid fictional/factual works in the entertainment and media epicenters of the country.

In light of the Porco ruling, New York creators of docudramas may use an individual’s name and likeness as long as the overall work remains generally accurate and any dramatizations and fictionalizations are made clear to the audience through the use of disclaimers and other disclosures that the work, while based on true events, is not meant as a purely factual depiction of history.

Navigating NFTs: Considering Best Practices and Avoiding Pitfalls

By Sarah Conley Odenkirk, Partner

All of a sudden, no one can talk about anything but NFTs!  For those people who have used up all of their tech tolerance on Zoom meetings this year, understanding this latest frenzy can seem like an insurmountable task.  But FOMO tends to be very motivational!  Given that the value of the crypto art market has now reportedly surpassed $200 million, the fear of missing out may very well be warranted.  And actually, as it turns out, NFTs really aren’t that difficult to understand.  If you can shop online, then you can understand NFTs.

Let’s start with the 30,000-foot-view of what exactly is going on:  NFTs—or non-fungible tokens—are a mechanism to make digital files into a unique asset, created and sold on the blockchain using cryptocurrency.  If you only understood one or two words in the previous sentence, everything will be explained shortly.  In the meantime, as you may be aware, an important event happened few weeks ago when Christie’s auction house sold an NFT for $69 Million and everyone went crazy.  Now that it looks like there is a market with real money for digital assets, people are creating NFTs by the thousands in an effort to participate in the gold rush.  While this frenzy will likely settle down sooner than later (predictions of a bursting bubble are already circulating), there is technology here that is evolving, and almost certainly some version of what is happening now will endure into the future.  So, it is definitely worthwhile to become at least somewhat familiar with what this is all about.

There is a large quantity of incredibly complex information, and those with advanced crypto-savvy will want to interject all of the various nuances and details into the somewhat simplified explanations here, but this is crypto-triage.  If at the end of reading this article, your interest is piqued and you’re hungry for more, there is an entire (ever-expanding) universe of information online just waiting for you to dive in.  Hopefully, with the information here, you can at least doggie paddle your way through some of the more sophisticated information waiting for you in the digital ocean.

Part of the challenge for those trying to catch up is that the acronym “NFT” has been layered on top of “blockchain” and “cryptocurrency” and since many people are still struggling with those concepts, one more new tech term can easily lead to panic and surrender.  So let’s start at the beginning and break it down a piece at a time with some extremely simplified explanations in plain(ish) English.  Along the way, questions and considerations are highlighted so that you can start thinking about how to position yourself and hopefully avoid any big blunders.

Blockchain.  (If this is the 600,000th time you’ve heard this foundational element described, skip down to Cryptocurrency). The blockchain is an immutable ledger that stores information on a network of computers (each is called a “node”).  It is considered to be a secure system because once the information is entered into the blockchain, it cannot be changed.  One of the biggest pitfalls of the blockchain is a “garbage in, garbage out” problem.  In other words, if incorrect information is entered into a blockchain—intentionally or not—it cannot be edited or corrected. 

Best Practice:  Look before you leap!  Make sure that your information is correct and that, if applicable, you have all underlying rights, titles, permissions, and licenses before entering anything onto the blockchain.

Cryptocurrency.  (If you have cryptocurrency all figured out, skip down to NFTs).  Cryptocurrency is digital currency, or tokens, for which transactions are verified and maintained on the blockchain.  Cryptocurrency may be acquired three basic ways:  Mining, baking, or purchasing.

The most well-known and widely-used currency is Ethereum, which is based on a Proof of Work (POW) system. Mining is required for POW currencies.   Mining means having computers (often enormous groups of computers) solve complex algorithms to add blocks to the chain and in the process earn currency.  Whoever solves the algorithm first, wins the tokens as a reward.  The big criticism of this process is that it uses an enormous amount of carbon-based resources in powering the computers which are all competing to solve the algorithms first, making the whole process ridiculously harmful to the environment. 

Additionally, the transaction validation process of POW systems involves all nodes on the blockchain.  This creates a structure that is not easily scalable.  As it grows (ie. more blocks on the chain are added), more computational power is required, and thus more resources are used.  As a result, payments (called “gas”) are charged to users to compensate for the energy required to process and validate transactions on the blockchain.  These fees may change depending on the congestion on the blockchain at the moment that the user wishes to enter information onto the chain. 

The alternative cryptocurrency system is called Proof of Stake (POS).  With POS, tokens are earned by depositing an amount of that currency in an account where it is essentially an investment in the system.  Based on the value of the stake (and sometimes other factors as well), the owner staking the currency will be assigned blocks to solve and receive new tokens without competing.  This process is called “baking”, requires far less computing power, and is therefore a much more environmentally sound system.  Since transactions do not rely on computational power, gas is not an issue and transactions are extremely inexpensive.

While POS currencies are lagging behind their POW siblings, in the last few weeks, the chorus of environmentally-conscious cryptoverse voices has grown louder and is putting pressure on the entire ecosystem to embrace more earth-friendly solutions.  There is no question that as the NFT market evolves, the POS systems will gain traction and stability.  Certainly if this new frontier is to continue to develop in a sustainable manner, POS will have to lead the way.

Finally, you can, of course, simply purchase crypto with your debit or credit card online.  There are over 1500 currencies to choose from, and many fluctuate in value tremendously.  While you can always exchange currencies on exchange platforms, be aware of the fees and costs of buying with fiat and making exchanges.

Best Practice:  Understand the environmental consequences of your choices in cryptocurrencies and, of course, never invest more than you can afford to lose!  Also, it is important to note that there are potential tax consequences relating to exchanging crypto into fiat, so proceed with caution when pulling value out of cryptocurrencies to make use of it in dollars.

Wallets.  Cryptocurrency and the digital assets you purchase with it are stored in a “wallet”. This might be called a cryptocurrency wallet, or a blockchain wallet.  The password for a wallet is incredibly important to keep someplace safe as there is no way to retrieve a password (or in some cases a “seed phrase” consisting of a string of random words) if it is lost or forgotten.  If you lose the password, you lose your wallet.  As you can imagine, there have been some incredible, if not heartbreaking, stories of enormous amounts of cryptocurrency and digital assets lost when the holder of the password loses it or dies without storing the information someplace discoverable. 

Best Practice:  Hope for the best, but plan for the worst.  It is always good to keep your password someplace secure, but make sure that it is safely accessible in the event you forget it, or meet an untimely demise.  

NFTs.  (If you’ve already spent your mad money collecting the latest that Nifty Gateway has to offer, you can either skip to the last few paragraphs of this article, or go finish binging Cobra Kai, which I predict will be selling its own NFTs shortly).  So finally, we get to the heart of the matter:  NFTs.  Non-fungible token is just a fancy term for a unique item—in this case a unique digital asset.  This is in contrast to a fungible item such as currency where one item is interchangeable for another . . . like a dollar bill or Ethereum.  

NFTs are “minted” by using an online platform that creates the NFT by customizing a “smart contract” to include specific information pertaining to a particular asset.  In the case of artwork, music, or other creative endeavors contained in a digital file, the NFT includes metadata that points to the file containing the artwork.  The file might be “baked into” the NFT, but given the limited storage on the blockchain, the actual artwork most likely “lives” on an Interplanetary File Server (IPFS) off of the blockchain on which the NFT exists.

“Smart contract” is actually a somewhat inaccurate term to describe the coding that underpins NFTs.  Anyone who was first introduced to computer coding in the after-school classes at Radio Shack in the early 1980s, knows that the simplest form of coding relies on “if-then” propositions.  This is all that an NFT is—a series of “if-thens” that determine what happens when an NFT is bought or sold. 

NFTs can nevertheless be quite powerful in creating new standards for art world transactions.  Currently, one feature that often is included is a built-in resale royalties term.  This is one way that NFTs could potentially create real long term disruption in art market transactions—at least those happening online (we’ll have to see how well these new practices translate to non-digital transactions).  Some people minting NFTs are adding other terms as well, such as dedicating a portion of the sales to carbon offsets—presumably to make up for the horrendous toll all of this digital transacting is taking on our planet.

With the potential to be creative in customizing some of the transaction terms, NFTs could provide an interesting testing ground for new business models.  It is important to understand, however, that the terms embedded in the NFT are fairly limited currently due to the cost involved with creating elaborate and new structures.  The more elaborate, the more likely there will be problems in the ability of the NFT to interact in the digital ecosystem.  Until this environment has evolved quite a bit further, off-chain contracts—meaning agreements that are not embedded in the NFT itself—will still need to be integrated into the promotion and sale of NFTs.  These off-chain contracts can be pointed to in the metadata in the same way the NFT links to the artistic asset.  Thus, making sure that an NFT asset is protected over the long term will require a balancing of embedded language and referenced documents.   

Best Practice:  Understand the limits of NFT embedded terms and make sure to consider the entire scope of protection needed to ensure the sustainability of an NFT asset.  Figuring out how to dovetail “smart contacts” with off-chain contracts currently remains crucial.

If the NFT market can legitimately and sustainably grow beyond the group of crypto-bros who have made millions in the crypto market and need to circulate their inflated fortunes, NFTs could be the new gateway drug to developing new collectors of both digital and object-based art in the fine art marketplace.  Or NFTs might just evolve to be another world parallel to and only loosely affiliated with the fine art market. Given the flexibility of NFTs, it will likely be a little of everything, and without a doubt, the possibilities are endless.  For now, it is an exciting new frontier that offers a complex online laboratory for testing new business models in a wide range of creative practices.  While this digital frenzy sorts itself out, remembering to rely on common sense, well-drafted agreements, and traditional rights protection tools will be key in tempering the potential risks posed by this lightning-fast technological marketplace transformation.  Bottom line:  keep your crypto wallet close, and your legal counsel closer.

Congress Passes CASE Act Ushering in Crucial Copyright Reform

By Nancy E. Wolff and Elizabeth Altman

On December 21, 2020, Congress passed the long-awaited Copyright Alternative in Small-Claims Enforcement Act of 2019 (the “CASE Act”), as part of its omnibus spending and COVID-19 relief bill, H.R. 133. The law was enacted on December 27, 2020 and is poised to reform copyright litigation in the United States in the coming year, creating a centralized, voluntary, and affordable venue to bring claims of lesser value, without the need for attorneys or personal appearances. The Copyright Office has one year to implement the CASE Act, with an ability to extend the enactment for up to 180 days, if necessary.

Background

The CASE Act has been many years in the making, and is largely the result of prior recommendations by the Copyright Office, particularly its 2013 Copyright Small Claims Report, and the support of many creator groups. Recognizing the significant barriers of entry creators faced when attempting to bring small-value copyright claims in the federal court system—considering the substantial costs and time associated with litigation—the Office recommended establishing and housing an alternative, voluntary adjudicatory system. Honing and, now, codifying this recommendation with the CASE Act, Congress provides a solution for the many individual creators who wish to assert their rights but lack the financial wherewithal or high-value claim to make pursuing a federal case worthwhile.

Copyright Claims Board

Central to the Act is the creation of a centralized tribunal within the Copyright Office called the Copyright Claims Board (“CCB”). Presided over by qualified copyright attorneys, it will serve as a venue for claimants to bring copyright claims of lesser value, expanding upon the federal court systems’ otherwise exclusive jurisdiction for copyright infringement claims. Claimants may use the CCB to seek rulings on infringement, declarations of noninfringement, and to bring certain DMCA claims, such as claims that a party knowingly sent false takedown notices.

A. Process & Procedures

The copyright attorneys heading the CCB, called “Copyright Claims Officers,” will be experienced in copyright infringement, litigation, and alternative dispute resolution, and appointed by the Librarian of Congress for renewable terms. As copyright claims come in—brought by claimants who file a certified statement of material facts and submit the requisite filing fee—the Officers will review them for compliance with the Act. The filing fee is still unknown, but it will be at least $100 and no more than $400. Claims must be served upon the opposing party in accordance with the Act. Since the tribunal is voluntary, parties against whom an action is brought before the CCB will also have a 60-day “opt out” period after receiving notice of the claim, requiring the claimant to bring its claim in federal court (or abandon it). Libraries and archives who qualify under Section 108 of the Copyright Act will also have the opportunity to preemptively opt out, by filing a notice with the Copyright Office.

During the hearing, the Officers will consider the evidence and arguments both parties present. The CCB will make certain formalities optional, such as representation by counsel and personal appearances; likewise, the CCB will provide a process for only limited discovery. Law students will be permitted to represent parties.

Creators must register their work with the Copyright Office before the CCB will hear the infringement claim. To facilitate the process, the Register of Copyrights shall establish regulations allowing the Copyright Office to make expedited registration decisions for any unregistered works appearing before the CCB. As in the federal courts, when a rightsholder has registered will also affect how much he or she can recover, although unlike claims brought in federal courts, owners of unregistered works at the time of the infringement can still obtain half the level of the capped statutory damages provided for by the CASE Act.

Where the CCB rules in favor of the copyright holder, a defendant may be required to remove infringing content and/or pay statutory or actual damages. Parties that wish to challenge a CCB decision will have the opportunity, though, first by seeking CCB reconsideration, and, if denied, by requesting the Register of Copyrights to review the ruling for abuse of discretion. If, in turn, the Register does not provide the requested relief, a party may seek an order from a federal court vacating or modifying the CCB’s decision where the CCB ruling was fraudulent, or where the CCB engaged in misconduct, exceeded its authority, failed to render a final determination, or made a default determination or determination based on a failure to prosecute due to excusable neglect.

B. Damages

True to the Act’s name, eligible claims that go before the CCB should be small, with damage awards capped at $15,000 per claim, with a case maximum of $30,000 (with claims for untimely registered works capped at $7,500). The Act envisions an even more streamlined process for claims seeking damages of $5,000 or less. As in federal court, the CCB will consider various factors in determining damages, such as the length of time the work was infringed, profits, lost income, and any steps the infringer or claimant may have taken to mitigate the infringement.

The Benefits of Electing to Bring A Claim Under the CASE Act

First and foremost, the Act will afford those in the creative community with more channels to protect their works and assert their rights, by allowing photographers, songwriters, authors, and other rightsholders to pursue infringers outside of the bureaucratic, often complicated, and expensive federal court system. Considering that lawsuits often last years and incur costs that soar into the six-figures, many creators would otherwise abandon valid small claims, risk their livelihoods to pursue them, or rely on questionable contingency fee lawyers, labeled “copyright trolls” by the federal courts, for their practice of aggregating unsustainable numbers of low-value claims—often related to single unlicensed uses of photography—for which they seek unrealistic maximum statutory damages. The Act will allow creators to bypass this melee by bringing their small-value claims in a straightforward manner directly before the CCB. This low-cost, streamlined tribunal could be an attractive forum for publishers and other businesses to efficiently resolve lower value claims, where the cost of defense can far exceed the value of the claim. The opportunity to resolve a claim, without the necessity of lawyers, can also benefit all parties by encouraging reasonable settlements. While this forum may not attract those that have turned to litigation as a business model to leverage the high costs of federal litigation, creators that are simply looking for fair compensation may welcome the opportunity to resolve disputes without the need to engage a lawyer and pay hefty contingency fees.

Overall, the Act presents an opportunity to rebalance a copyright regime that has, in recent years, provided insufficient redress for individual creators with legitimate, but small, claims, and which has, in the process, disincentivized them from putting forth new works of art that they believe they cannot protect. Instead, the Act levels the playing field, making valid copyright protection available to all strata of creators, and reinstituting confidence in copyright. The Act will also likely foster more robust licensing, decreasing the threat of rampant and unchecked small-value infringement that discourages this type of investment.

Addressing Concerns

In an effort to ward off misuse and address concerns over the new system, the Act includes numerous safeguards. With damages capped at $30,000, creators cannot bring claims for large groups of infringements.  Further, CCB officers may dismiss claims without prejudice that are not suited for this forum and may even dismiss claims filed for a “harassing or improper purpose.” Generally, damages do not include attorney’s fees and costs, except that in the event of cases brought for harassing purposes, the CCB may award up to $5,000 for respondents’ attorney’s fees and costs, and in the case of “extraordinary circumstances” of bad faith conduct, the CCB may increase this amount. Sanctions are also available against a party who uses the CCB to bring a frivolous or abusive claim. Further, repeat offenders may be barred from bringing claims before the CCB for up to a year. Copyright Claims Officers are themselves subject to sanction or removal by the Librarian of Congress for misconduct.

One of the primary concerns amongst critics is that providing an avenue for small copyright claims will actually drive up the overall number of claims, harming online creators behind generally insignificant content that has become a staple of Internet culture, such as memes, videos, etc. This outcome is unlikely, however, considering that CCB officers are tasked with evaluating claims for validity and must consider standard procedural defenses, affirmative defenses such as fair use, and other considerations like platform-type, audience size, and the purpose of the use. As in federal court, statutory damages are within the CCB’s discretion and the $7,500 or $15,000 maximum fee is an outer limit, meaning that awards could be less. What’s more, this amount is still far less than the $150,000 maximum statutory damages per infringed work for willful infringements often invoked in federal court—even where completely unrealistic and only meant to drive defendants to a higher negotiated settlement. As a model, the United Kingdom has had a similar copyright small claims court since 2012, which has often worked to curb the bringing of claims, as would-be infringers are aware that creators have a real recourse to pursuing a small-value payment that may be higher than a mere license fee, and so pay for the work they use at the outset.

Finally, it is worth noting that the Act is one of the rare pieces of litigation with bipartisan support among Congress, as well as many leading institutions, including the Authors Guild, Songwriters Guild of America, the Copyright Alliance, and many visual arts associations, who have supported it in order to give creators a streamlined, cost-effective way to enforce their rights.

Over the next year, the Copyright Office will be setting up procedures to implement the Act. We will continue to update you on further CASE Act developments, and we also recommend the Copyright Office’s NewsNet bulletin updates for further updates. Once implemented, we will know how well this voluntary tribunal is embraced by both the creative and media community.

California District Court Dismisses “Tiger King” Case, Citing First Amendment Interests

After captivating home-bound viewers earlier this year, Netflix’s documentary series “Tiger King” had its day in court recently when a California district judge dismissed a case brought by the publisher of Hollywood Weekly Magazine (“HW”) against the producers and distributors of the show.  See Prather Jackson v. Netflix, Inc., Case No. 2:20-cv-06354-MCS-GJS (C.D. Cal. Dec. 9, 2020).  The magazine complained that Netflix had used two of its trademarks in the show: (1) the magazine’s name, and (2) “Tiger King,” a term which HW claimed that it had coined in 2013 when it published a series of articles that profiled Joseph Maldonado-Passage a/k/a Joe Exotic, who is now widely known as the Tiger King.  On Netflix’s motion to dismiss, Judge Mark C. Scarsi of the Central District of California determined that First Amendment interests in the expressive work “Tiger King” outweighed HW’s Lanham Act claims.

The dismissal adds to a growing body of case law stemming from the Second Circuit’s 1989 decision in Rogers v. Grimaldi.  In that case, actress and dancer Ginger Rogers asserted Lanham Act claims against the producers and distributors of a film entitled “Ginger and Fred”; the court considered how the Lanham Act should be construed so that it does not intrude on First Amendment values.  The Second Circuit adopted a test to determine when the Lanham Act should apply to artistic or express works—namely, when the use has “no artistic relevance to the underlying work whatsoever,” or when it “explicitly misleads as to the source or the content of the work.”  Though the use in question before the Rogers court was the name of a celebrity in the title of a film, the Second Circuit’s test has been extended to apply when a Lanham Act claim is asserted against a use of a trademark within an expressive work. 

As the Ninth Circuit adopted the Rogers test in 2002, the California district court was obliged to apply it to HW’s four Lanham Act claims for trademark infringement of its two marks, dilution, and false designation of origin, and in doing so, rejected HW’s arguments.  Applying the first  “artistic relevance” factor, the court considered the use of term “Tiger King” as both the title of Netflix’s documentary and within scenes throughout the film.  Notably, the term was used to refer to Joe Exotic, as he himself used it on merchandise, in the name of his reality television show, and in his short-lived campaign for president, which the documentary detailed.  The series also depicted issues of the magazine, bearing HW’s name, as Joe Exotic proudly showed off the articles that dubbed him the “Tiger King.”  As artistic relevance is a low threshold—the use of the mark need only have “some relevance” to the work—the court determined that this prong was easily met, because the documentary chronicles the life and business of Joe Exotic, who is publicly known as the Tiger King.

For the second prong of the test, the court considered whether Netflix’s use of the unregistered “Tiger King” mark would make the public believe that HW was somehow behind the documentary or sponsored the work. Because the question is whether the work explicitly misleads—or as the Rogers court put it, the work contains an “explicit indication,” “overt claim,” or “explicit misstatement”—the court was not satisfied by HW’s inability to point to any statement in the series that explicitly misled about the sponsorship of the documentary.  In its complaint, HW relied upon conclusory legal statements, rather than any allegations of explicit deception that would satisfy the second prong of the Rogers test.  The court applied the same analyses on the first and second prongs for the “Tiger King” mark to the HW mark and determined that Netflix’s use of the magazine’s name in the series did not give rise to actionable Lanham Act claims.

Additionally, the court dismissed HW’s copyright infringement claim over Netflix’s depiction of certain issues of the magazine, citing the deficiencies in HW’s allegations regarding what works their cited registrations covered and which parts of the copyrights Netflix infringed.  Though Netflix had also briefed a fair use argument for this claim, the court did not reach it since it determined that HW’s copyright infringement claim failed on the face of HW’s pleading.

Although HW can assert Lanham Act claims regardless of the federal registration status of its two trademarks, it is worth noting that HW is also facing an uphill battle with the U.S. Patent & Trademark Office (“USPTO”) over the registration of the “Tiger King” mark, which has become quite popular over the past year.  Notably, while HW claimed to have coined the term in 2013, it did not file for federal registration until July 2020 after the Netflix series had debuted and a host of others had already filed applications for the same mark.  HW is currently facing an office action from the USPTO, which is refusing registration on numerous grounds including the words Tiger King’s failure to function as a trademark.

The dismissal in this case is the latest decision in a robust and growing line of case law balancing First Amendment interests against Lanham Act claims.  As most courts have adopted the Rogers test (or some iteration thereof), the “Tiger King” decision provides further armaments to litigants facing Lanham Act claims for their use of a mark or other protected designation in an expressive work.  Clients clearing rights in expressive works should remember to consider the Rogers test, in addition to other commonly used doctrines like classic or nominative fair use and, when in doubt, seek legal counsel.

New York Enacts a Post-Mortem Right of Publicity Law and Addresses Deep Fakes

Joining the majority of states, New York recently enacted a new right of publicity statute that extends the right past death.  New York Governor Andrew Cuomo signed the legislation on November 30, 2020, establishing a right of publicity (N.Y. Civ. Rights Law § 50-f) for deceased persons (and their descendants) domiciled in New York to protect against the commercial exploitation of the person’s name, voice, signature, photograph, or likeness after death.  However, unlike other post-mortem right of publicity laws that are broader in reach, New York’s statute carries a caveat—the post-mortem right only protects persons whose rights of publicity have commercial value either at the time of their death or because of their death.

In addition to the “commercial value” requirement, which the legislation employs by providing a definition of the qualifying person who is referred to as a “deceased personality,” Section 50-f also contains a few other restrictions.  Notably, the law only protects qualifying deceased personalities for a period of forty years after death.  As the legislation also makes clear, the statute will not have retroactive effect, and will not take effect until May 29, 2021. 

The legislation leaves New York’s other rights of privacy/publicity statutes for living persons—N.Y. Civ. Rights Law § 50 and § 51—untouched yet goes further than Section 50, by extending the right to protect against exploitation of a deceased person’s “likeness, whereas the statute applicable to the living only protects “name, portrait or picture.”  Additionally, the statute is one of the first to restrict “deep fakes” and provides protections to “deceased performer[s],” which is broadly defined, against deceptive use of their “digital replica[s] in a scripted audiovisual work as a fictional character or for the live performance of a musical work.”  Disclaimer language can be used to avoid liability.

The new post-mortem statute provides that these rights may be transferred by contract, license, trust, or will, but successors in interest must register the right with the Secretary of State in order to be able to bring a claim.  Section 50-f also includes provisions authorizing statutory damages of $2,000, in addition to profit awards from attributable unauthorized use and punitive damages, but no attorneys’ fees.

Notably, the statute contains specific exceptions to provide First Amendment breathing room, for both newsworthy and expressive works.  As New York is home to many entertainment, broadcasting, publishing, sports, and arts industries, specific exemptions cover the publication of literary, educational, and other audio-visual and creative works for broad purposes including political, public interest, and newsworthy uses, such as for comment, criticism, parody, or satire.  Significantly, for the television and film industry, it clearly protects documentaries, docudramas, and historical or biographical works, regardless of the degree of fictionalization.

The enactment of Section 50-f is a win for celebrities, unions, and advocacy groups that have led efforts to expand the state’s right of publicity law to provide post-mortem rights, while at the same time giving the entertainment industry clear carve-outs from liability.  New York has for a long time remained a notable holdout, while other states have passed expansive descendible statutory rights of publicity, treating the right as a property right, transferable at death instead of a personal right that expires at death.  As New York does not recognize common law protection for rights of publicity, the passage of an enhanced statutory right was necessary to permit recognition of post-mortem rights in the state, which first passed its statutory right of publicity bill for living persons in 1904.

New York Passes Anti-SLAPP Legislation to Protect Speech Rights

On November 10, 2020, Governor Cuomo signed into law a robust expansion to New York’s existing anti-SLAPP legislation, in a significant effort to curb lawsuits filed with the goal of intimidating and suppressing free speech. Amending New York’s current statute—Sections 70-a and 76-a of the New York Civil Rights Law—the law addresses the problem of “strategic lawsuits against public participation,” which threaten burdensome, costly, and time-consuming litigation in order to chill defendants’ speech.

Although New York has had anti-SLAPP legislation on the books since 1992, its provisions were narrow, protecting only against lawsuits brought by a “public applicant or permittee” against defendants who had spoken out against an application or permit, such as a real estate developer that sued a citizen who opposed a project. Under the prior enactment, free speech in a broader context was unprotected, leaving defendants who work within the media or entertainment fields without much recourse against speech intimidation suits, a particularly troubling oversight for the nation’s media capital.

However, the signing of the new legislation, which passed the New York legislature in July, broadens New York’s approach considerably, bringing it into line with a growing number of states, including California, Nevada, Georgia, Colorado, Oregon, Louisiana, Tennessee, and Oklahoma, as well as Washington D.C., that have also worked to enact or strengthen anti-SLAPP laws. New York’s law now covers any speech or other lawful First Amendment conduct that relates to an issue of public interest. The law specifically applies to “any communication in a place open to the public or a public forum in connection with an issue of public interest” or “any other lawful conduct in furtherance of the exercise of the constitutional right of free speech in connection with an issue of public interest, or in furtherance of the exercise of the constitutional right of petition.” The law commits to broad speech protection, providing that “public interest” should be broadly construed to mean any subject other than a purely private matter.

In practice, the New York law provides defendants an effective, powerful tool by allowing them to file an anti-SLAPP motion to dismiss. Upon such a motion, the court must stay discovery, as well as pending hearings and motions while it makes its determination, although a court may order limited discovery to allow a plaintiff to respond to the motion. During this time, a court must also consider supporting and opposing affidavits—meaning that a defendant need not solely base his or her motion to dismiss on the pleadings or items for judicial notice—and a court must grant preference in the hearing of the anti-SLAPP motion. A judge must dismiss a case where a defendant has shown that the claim surrounding his or her speech or conduct lacks “a substantial basis in law or is [not] supported by a substantial argument for an extension, modification or reversal of existing law.” In such cases, the plaintiff must cover the defendant’s legal fees. These provisions undercut the luster of SLAPP lawsuits in the first instance, as defendants can potentially stop a case early in its tracks—filing a motion to dismiss prior to discovery, in fact—and saddle plaintiffs with mandatory fees, should the motion be successful.

Although it remains to be seen how the law will be interpreted and carried out by New York courts in practice, other states with similar anti-SLAPP laws provide some guidance. For instance, other states to consider the meaning of “public forum” under their legislation have extended the designation to websites accessible to the public, as well as blogs and email listservs. California courts have held that determining whether a communication has been made in connection with an issue of public interest requires a consideration of the context of the statement, as well as its content. Litigants in other states have invoked anti-SLAPP statutes in a wide variety of cases, from business disparagement and tortious interference with contract or business relations to false light, false advertising, malicious prosecution, intentional and negligent infliction of emotional distress, and breach of contract.

One of the bill’s drafters commented that it was indeed President Trump who had provided an impetus for the bill, considering his history of filing frivolous lawsuits against critics, in order to harass, intimidate, and bankrupt them. With the law’s signing this November, New York is poised to curb such meritless litigation and may serve as a model for other states, as it ascends the ranks to have one of the strongest anti-SLAPP laws nationwide.

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