The highly regarded “Guide to the Top Lawyers and Law Firms” described CDAS as a “highly skilled boutique offering excellent capabilities handling trademark and copyright infringement cases, as well as substantial portfolio management matters. [CDAS] exhibits expertise acting for market-leading entertainment, media and digital platform clients.” In addition to recognizing the firm for Intellectual Property: Trademark, Copyright & Trade Secrets (New York), Nancy Wolff was also recognized as “a leading attorney in IP issues relating to digital media, counseling clients in a broad range of matters including disputes and licensing.”
Four years ago, we reported on a headline-worthy copyright infringement lawsuit filed in the U.S. District Court for the Southern District of New York dealing with tattoos in video games. The case was brought by a licensing entity for tattoo artists against the makers of the popular NBA 2K games over depictions of real-life basketball players’ tattoos on their digital game avatars. Last week, after full discovery and extensive motion practice, Judge Laura Taylor Swain granted the defendants’ summary judgment motion dismissing the plaintiff’s copyright infringement claim on grounds of de minimis use and implied license and granted their cross-motion for a declaration that the depiction of the tattoos in the game constituted fair use. This was the result that we speculated as being the likely outcome in light of the dearth of on-point case law, and it seems to be the correct decision both as a legal and practical policy matter.
2K Games’ NBA 2K series is an annual blockbuster that simulates professional basketball with lifelike depictions of teams, players, arenas, and the sights and sounds of a real NBA game. The goal is a realistic and faithful rendering of the NBA experience. One of the lifelike aspects of the game is the re-creation of players’ distinctive tattoos. Plaintiff claimed that five tattoos for which it owns rights were depicted on NBA players Eric Bledsoe, LeBron James, and Kenyon Martin in the 2014-2016 versions of the game and that such public display violated the Copyright Act of 1976. Solid Oak owns an exclusive license to the five tattoos but does not have permission to recreate them and does not have publicity or trademark rights in the NBA players’ likenesses. On the other hand, the players provided the NBA with the right to license their likenesses to third parties, and the NBA granted such a license to defendants.
The court described the tattoos and explained that, for each one, the tattoo artist “knew and intended that when” the NBA player receiving the tattoo “appeared in public, on television, in commercials, or in other forms of media, he would display” the tattoo; that the artist intended that the tattoos would “become a part of [the player’s] likeness”; and that the player “was and is free to use as he desire[d], including allowing others to depict it, such as in advertisements and video games.” The artists also admittedly knew that the men at issue were NBA players and would likely appear in the media, as well as in video games.
These admissions by the artists were critical to the court’s decision concerning implied license, a critical defense in the context of tattoo copyrights. An implied license can be found “where one party created a work at the other’s request and handed it over intending that the other copy and distribute it.” The court held that such was the case here, explaining that that tattooists admittedly granted the NBA players nonexclusive licenses to use the art as part of their likenesses, prior to granting any rights to Solid Oak, and in turn, the players (through the NBA) implicitly granted defendants the right to depict the tattoos as part of their likenesses.
The court also spent significant time explaining its de minimis infringement ruling. To prove copyright infringement, the plaintiff must prove that the amount copied was not “so trivial as to fall below the quantitative threshold of substantial similarity.” To make this determination, the court analyzed the amount copied; the length of time the work can be seen; and other factors such as focus, lighting, and prominence, as seen through the eyes of an ordinary observer. The court held that all three factors weighed definitively in favor of the defendants and that “no reasonable trier of fact could find the Tattoos as they appear in NBA 2K to be substantially similar to the designs licensed to Solid Oak.”
Laying the foundation of its analysis by describing the many graphical, visual, auditory, and dramatic elements of the 2K games, the court put the overall prominence of the tattoos into stark relief. The five tattoos comprised between 0.000286% and 0.000431% of the total game data; were never depicted separately from the players (who comprised only 3 out of over 400 avatars); appeared between 4.4% and 10.96% of their actual size; and were only visible when a user selected a particular player, and even then were not fully visible, and were indecipherable during actual gameplay given the speed and erratic nature of the avatars’ movement. The court, agreeing with the defendants’ statement of undisputed facts, characterized the tattoos as appearing as nothing more than “visual noise,” and found that, even in the rare event the tattoos were displayed, such display was “small and indistinct” and “cannot be identified or observed.”
Finally, the court engaged in a fair use analysis, holding that all four statutory factors weighed in defendants’ favor. As to the first factor (purpose and character of the use), the court held that the defendants’ use was undisputedly “transformative,” a critical element of fair use. While the games depicted exact copies of the tattoos, its purpose in doing so was not the same as the tattoos’ original purposes of self-expression through body art. Rather, defendants depicted the tattoos to accurately depict the players, notably without even making the details of the tattoos observable. Moreover, the size of the tattoos was significantly reduced and distorted, such that the game offered no “more than a glimpse” of the tattoos’ expressive value and made up an “inconsequential portion of NBA 2K” on the whole. And while NBA 2K was undoubtedly a commercial product, the tattoos were incidental to the commercial value of the game and were not used in the game’s marketing.
The court’s analysis of the second factor (nature of the copyrighted work), was more detailed than a typical analysis of this element of fair use. The second factor asks whether the work is more expressive/creative or factual, and whether the work is published or unpublished, and is typically glossed over by courts as immaterial to the analysis. While the published nature of the tattoos tipped the second factor in defendants’ favor, the court went on to hold that the tattoo designs themselves were actually more factual than expressive “because they are each based on another factual work or comprise representational renderings of common objects and motifs that are frequently found in tattoos.” Downplaying the creative and expressive nature of each of the tattoos based on the circumstances behind their creation, the court observed that the tattooists had admitted that each work “copied common tattoo motifs or were copied from designs and pictures [the artists] themselves did not create.”
The third factor (amount and substantiality of the work used) is also typically glossed over, and this case was no exception. The court noted that even copying the entire work sometimes will fail to weigh against fair use where, as here, the use is deemed transformative. Even so, the court reiterated that the tattoo renditions were reduced in size and barely recognizable on the game screen.
The fourth factor (effect of the allegedly infringing work on existing or potential markets for the work) tends, like the first factor, to receive more weigh in the analysis, and the court found this factor to definitively favor defendants. The court held that the game’s depiction of the tattoos was not a competing substitute for the original. In light of the “transformative” use of the works, the tattoos featured in the games would not serve as market substitutes for the use of the tattoos in any other medium, and plaintiff even conceded that NBA 2K was not a market substitute for the tattoos. The court therefore decided that potential purchasers of the tattoo designs were unlikely to “opt to acquire the copy [in the game] in preference to the original.” Even so, the court found that there was no evidence in the record that a market for licensing tattoos for use in video games or other media was likely to develop.
While the Solid Oak case proceeds because defendants’ counterclaim for fraud on the Copyright Office remains in play, a solid precedent has been set in the new frontier of tattoo-based copyright law. While it is not yet binding (and would only be regionally binding if affirmed on appeal), this decision will be extremely important to digital media companies nationwide given its solid legal analysis and common-sense reasoning. The Solid Oak opinion should be at the top of this year’s cases-to-know list when it comes to content clearance, vetting, and risk assessment, and should ease the concerns of those scratching their heads when facing the potential licensing nightmare that could arise from attempting to clear all body art depicted in popular media. It will also likely prove to be a boon to the stock image industry during an era when tattoos are increasingly common and may appear in more images of people than ever before. On the other hand, artists, and tattoo artists especially, may decry the opinion, in particular the second-factor analysis, which may be interpreted as diminishing the copyrightability of tattoos that depict certain “typical” artistic elements like faces, flames, wizards, and sports equipment. But it is important to note that the ruling on that factor was context-specific, and every work of art will be different and will be created under unique circumstances. Overall, any feared risk to future creators is minimal and is significantly outweighed by the practical benefits afforded to established as well as new and developing forms of media.
Following hot on the heels of the Ninth Circuit’s en banc decision clearing Led Zeppelin of copyright infringement allegations relating to the classic “Stairway to Heaven” (which we reported here), a California federal judge last week overturned a jury’s finding of copyright infringement against Katy Perry regarding the pop hit “Dark Horse.” Songwriters still nervous in a post-“Blurred Lines” world will likely take solace in two decisions that – while in many ways different from Pharrell Williams’ and Robin Thicke’s case – solidify certain aspects of copyright law that may help musicians rest and write a bit easier.
The genesis of the “Dark Horse” case is not unlike any other you-copied-my-song litigation. Plaintiffs, successful songwriters and musicians in their own right, sued pop star Katy Perry, several other songwriters, and the record labels and publishers behind “Dark Horse,” claiming that an eight-note ostinato – a “short musical phrase or rhythmic pattern repeated in a musical composition” – in “Dark Horse” was substantially similar to one in plaintiffs’ song “Joyful Noise.” The alleged similarity between musical phrases as opposed to full musical compositions makes the “Dark Horse” case more like “Stairway to Heaven” than “Blurred Lines,” which dealt with infringement of an entire song. This distinction informed the court’s legal analysis as well, as discussed further below.
After a two-week trial in the summer of 2019, a jury found the defendants liable for copyright infringement and awarded plaintiffs $2.8 million in damages, and the defendants moved for judgment as a matter of law (or for a new trial). Courts will grant motions for judgment as a matter of law when there are no genuine factual disputes and “a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.” The court found these standards to be satisfied.
The court primarily addressed the evidence presented in support of the jury’s finding that the defendants’ ostinato was “substantially similar” to that of plaintiffs. As we discussed in connection with the “Stairway to Heaven” case [here], courts in the Ninth Circuit apply a two-step test to determine whether two works are substantially similar. Part one, the “extrinsic” test, sets forth a question of law for the court (often aided by experts) whether protected elements of the plaintiff’s work are objectively similar to corresponding elements of the defendants’ work. Part two, the “intrinsic” test, asks the jury to decide whether an ordinary reasonable person would find that the “total concept and feel” of the works was substantially similar. The court spent most of its analysis on part one.
As a threshold matter, the court explained that, where the work at issue consists of a combination of unprotected elements, an enforceable right in that combination only exists if the “elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.” This nuance is particularly relevant in music cases; citing “Stairway to Heaven,” the court explained that where “there is a narrow range of available creative choices” (such as notes in a scale or pleasing combinations of sounds) copyright protection is “thin” and to infringe, the allegedly infringing copy must be virtually identical. The difference between this case and the “Blurred Lines” case, according to the court, is that the “thin copyright” doctrine typically will not apply to entire musical works (as opposed to constituent elements). Citing its obligation to balance the First Amendment against the Copyright Act, the court also noted that the inherent nature of music as an art form was to borrow and build upon what had previously been created given that “many if not most of the elements that appear in popular music are not individually protectable.”
With this backdrop, the court first analyzed the constituent elements of plaintiffs’ ostinato, including the key, phrase length, pitch sequence, rhythm “shape,” and musical texture. Finding these elements to be individually common or even ubiquitous in pop music, the court held that “the uncontroverted evidence points to only one conclusion: that none of these individual elements are independently protectable.” This conclusion was supported by testimony from the plaintiff’s own expert musicologist.
The same conclusion was apparent when analyzing the elements taken together as combined: their selection, arrangement, and coordination was not original enough to warrant protection as an original work of authorship. The court held that the ostinato in “Joyful Noise” did not contain enough musical elements arranged in a “sufficiently original manner to warrant copyright protection.” While it is possible that a musical phrase as short as eight notes could be protected, the court noted the dearth of on-point cases where “an otherwise unprotected musical phrase, isolated from the rest of the musical composition, in fact warranted copyright protection.” The court explained that it was undisputed in light of the evidence at trial that “the signature elements of the 8-note ostinato in ‘Joyful Noise’” including its pitch sequence and rhythm, were “not a particularly unique or rare combination,” and that prior works composed by the parties and many others contained similar elements. The ostinato’s musical timbre, its “pingy synthesizer sound,”’ and its use of minor key did not tip the scales.
The court accordingly held that the ostinato did not constitute protectable expression and therefore the extrinsic test (step one) failed, entitling the defendants to judgment as a matter of law notwithstanding the jury verdict to the contrary. Although arguably not strictly necessary in light of this threshold ruling, the court went on to explain that, even if the plaintiffs’ ostinato was protectable, the defendants’ ostinato was not substantially similar. Owing to the “thin” nature of the protection that would have been afforded to the plaintiff’s composition had it been deemed copyrightable, the degree of similarity would have had to have been “virtually identical” for a finding of infringement, and the evidence did not support such a conclusion given “a number of undisputed objective distinctions,” as corroborated by plaintiffs’ own musicologist.
Interestingly, despite the court’s conclusion that defendants were entitled to judgment as a matter of law on the extrinsic test (arguably obviating the need to address the intrinsic test), the court proceeded to opine on the jury’s finding of intrinsic similarity. Because the intrinsic test is fact-sensitive and a question solely for the jury, the court held that, despite the court’s reversal on extrinsic liability, a reasonable jury could have found that the “total concept and feel” of the two ostinatos were “intrinsically” similar. This of course did not change the outcome of the decision.
The court also found that there had been enough evidence to support the jury’s conclusion that the plaintiffs had accessed the defendants’ song. Citing “Stairway to Heaven,” the court noted that reasonable minds could find that defendants “had a reasonable opportunity to [hear] plaintiff’s work” particularly in light of the current ubiquity of musical content and ready access to digital media online. In such circumstances access could be established “by a trivial showing that the work is available on demand,” and “Joyful Noise” had garnered more than 6 million plays online, hundreds of concert performances, and a Grammy nomination. But again, this did not change the result.
The “Dark Horse” case follows in the footsteps of “Stairway to Heaven” in establishing stricter boundaries around what musical elements are protectable but indirectly diminishing the importance of access in light of digital media and technological advancements. As the decision is applicable to song elements like ostinatos, and arguably by analogy guitar riffs or solos, basslines, synthesizer accompaniments and the like – as opposed to entire compositions – it will likely cabin future claims concerning these discrete musical structures and reduce the likelihood that a songwriter or performer will be hit with a multi-million-dollar jury verdict for creating a single song element. Decisions like “Dark Horse” and “Stairway to Heaven” will likely provide some comfort to musicians in being able to rely on those who came before them in writing their parts, but at the same time the decisions leave undisturbed the lessons from “Blurred Lines” when it comes to similarity of musical compositions in the aggregate whether one agrees with the outcome of that case or not.
In a decision that will likely be seen as a victory for photojournalism, a judge in the Eastern District of New York recently rejected the legal argument that an iPhone photograph, taken by a passerby who was in the right place at the right time, lacked originality. The decision represents a turn away from what the photography community would undoubtedly perceive as a slippery slope, i.e., if a court embraced a broad view that photographs captured by amateur photographers on their iPhones are not entitled to copyright protection.
The case pitted Alex Cruz, a passerby who captured a photograph of police apprehending a terrorist attack suspect in the Tribeca neighborhood of New York City in October 2017, against Cox Media Group, which holds a large portfolio of TV and radio stations, newspapers, and websites. After the photograph was posted to Instagram, Cruz licensed the image to media companies including CNN and NBC (https://www.nbcnews.com/slideshow/terrorist-truck-attack-shocks-new-york-city-n816236). Cox, without seeking permission, published the photograph in a gallery on one of its websites, accompanying an article about the suspect, as well as on its social media channel. Facing a copyright infringement claim, Cox later argued that Cruz’s photograph lacked sufficient originality to entitle it to copyright protection and support a copyright infringement claim.
Specifically, Cox alleged that Cruz did not make any creative choices in capturing the photograph, arguing that the photograph therefore did not possess a “modicum of creativity,” citing the oft-used language from Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991). Judge Garaufis did not agree with this argument, finding that Cruz’s photograph reflected several creative choices, including timing (i.e., being in the right place at the right time) and his decision to take the photograph when he did (when law enforcement was apprehending the suspect, who was lying on the ground).
The judge applied the law of the Second Circuit, citing precedents such as Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005), in which the Southern District of New York held that a photograph may be original in three respects: (1) rendition, (2) timing, and (3) creation of the subject, and Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992), in which the Second Circuit recognized that “original” elements of a photograph may include “posing the subjects, lighting, angle, selection of film and camera, evoking the desired express, and almost any other variant involved.”
Though there may be instances in which a photograph is a slavish copy (such as in cases involving a photograph of a photograph), or a photograph serves a purely utilitarian purpose (such as showing what a standard Chinese menu item dish contains), where a photographer (whether amateur or professional) exercises any creative choices to capture the photograph, this decision supports the principle that photographers should be deprived of copyright protection. Judge Garaufis recognized at least two creative choices relating to the timing of the photograph, but there were likely others, such as the angle and set-up of the shot. With technological advances, the abilities of iPhone (or other mobile device) users to capture creative photographs with their devices, rather than a traditional camera, are greatly increased. Aspects like depth of field, lighting, and frame can all be adjusted with a click of a button. In this instance, notwithstanding whether Cruz used additional iPhone features to capture the photograph, the court found that he still exercised sufficient creative choices in deciding when, where, and from what angle to take the photograph to capture an inherently newsworthy event. Indeed, some of the most memorable moments of photojournalism are based on the photographer being at the right place at the time and knowing how to frame a compelling image (https://www.digitalphotomentor.com/20-most-famous-photographs/).
Lack of originality is a difficult defense particularly in photo cases, as most photographs will be protected by copyright law, even if that protection is thin. Though judges should not place themselves in the situation of being arbiters of what is and is not art, oftentimes they are faced with the question of whether a work contains sufficient creative authorship to qualify for copyright protection, one of the prima facie elements of a copyright infringement claim. This case represented a reasoned application of well-settled law despite an unconventional defense that may have prevailed under different circumstances and as applied to different forms of art.
This case is Alex Cruz v. Cox Media Group, LLC, Case No. 2:18-cv-01041-NGG-AKT (E.D.N.Y. March 13, 2020).
In 2014, the United States Supreme Court, in American Broadcasting Companies v. Aereo, Inc., held that unlicensed re-broadcasts of copyrighted content over the Internet constituted public performances of copyrighted works in violation of content owners’ exclusive rights under the Copyright Act; as part of its discussion, the Court analogized services like Aereo’s to “cable services.” Emboldened by the Court’s comparison, Aereo competitor FilmOn X (formerly Aereokiller) took the “cable services” ball and ran with it. FilmOn X has sought to brand itself as a “cable service” under § 111 of the Copyright Act, a status that would entitled it to re-transmit performances of copyrighted works without securing prior consent if it complies with certain regulations and pays a minimal statutory fee – the “compulsory license.” FilmOn X is now fighting high-stakes copyright battles before several federal appellate courts around the country. On March 21, the Ninth Circuit dealt a blow to FilmOn X’s western front, becoming the second federal court of appeals (along with the Second Circuit in WPIX, Inc. v. ivi, Inc.) to hold that Internet re-transmitters do not constitute “cable systems” under the Copyright Act. Continue reading
Note: This blog is cross-posted from Law360.com with permission from Portfolio Media, Inc.
This spring, the U.S. Supreme Court will hear arguments in a case that could have significant impacts on several segments of the television industry. While it may seem unusual that a dispute centered on dime-sized antennas would capture the attention of the high court, the case captioned American Broadcasting Companies Inc. v. Aereo Inc., on certiorari from the Court of Appeals for the Second Circuit, sits in the context of a half-dozen pending litigations across the country; it also tests both the boundaries of a Second Circuit decision that the court refused to hear five years ago, and the language that Congress drafted over 35 years ago. Continue reading