An engaging image, be it a photograph, line art or other graphic, can capture the reader’s attention and drive interest in an online post. Bloggers, especially, are well aware of the attention grabbing benefits of a great photograph or graphic.  And in striving to find just the right image, it is an oft expressed sentiment that an apparent harmless use of a graphic poached from some obscure corner of the internet is fair game.

Is it legal to use that photo of Superman you found in a quick Google search to illustrate your blog post about the best action superheroes of all time?  Or an image of Darth Vader in a post about the best villains?  The answer implicates a wide range of intellectual property rights governing the use of images.

The careful blogger must ask himself or herself a series of questions in order to get to the bottom of the propriety of using an image as part of an online blog post.

1. Is the image copyrighted?
2. Is the image in the public domain?
3. Is the image available for the intended use under a licensing scheme?
4. If someone has a copyright in the image, can its use be defended as “fair use?”
5. Does your intended use comply with your service provider’s guidelines?
6. Does the use of the image violate anyone’s trademark, tradedress, commercial use, publicity, privacy or other rights?

Let’s consider each of these questions further.

Is the image copyrighted?

Original works of authorship, including photographs or graphic designs, are subject to copyright protection under federal law. A survey of the law of copyright is beyond the scope of this post.  However, a basic familiarity with copyright law principles may be helpful in working through the questions raised by the use of images sourced from the internet.  A basic primer on copyright law is published by the U.S. Copyright Office: http://copyright.gov/circs/circ01.pdf.

The first question to ask yourself is do you know the original “author” of the image?  For photographs that implicates the original photographer.  Of course, ownership of the copyright might, for any number of different reasons, rest not with the original photographer, but with some other owner.

Realistically, the causal blogger is unlikely to know the source and current ownership of most photographs or graphic images found on the internet, as least to the extent they are found by a key word search through a search engine like Google Images. For most bloggers the hassle and expense of verifying ownership or tracking down an original author or current copyright owner and securing permission is, as a practical matter, prohibitive.

Effectively this means that much of the body of images that can be readily found on the internet should not be used by a blogger unless they fall into one of the categories below.

Is the image in the public domain?

Sometimes it is possible to ascertain that an image is in the public domain and not subject to copyright protection. A work might be in the public domain because its copyright expired long ago or it is outside of the scope of the copyright laws for some particular reason such as the owner of the copyright having released ownership rights.  This determination turns on the particulars of the image in question and, again, may present a problem for the casual blogger who does not have the ability or inclination to investigate and ascertain the source or history of the image.

Is the image available for the intended use under a licensing scheme?

Some copyrighted images may be available for use under a specific licensing scheme. Various organizations have created different licensing models for authors of works to make them available for use under various conditions.  For example, Creative Commons is a non-profit organization that has developed various forms of licenses that can be adopted by authors of works to permit those works to be used by others (see http://creativecommons.org).

When you pull an image governed by a specified licensing scheme, you need to be aware of the parameters of the use allowed and any requirements in connection with the use of the governing license. Many images can be found that are adequately tagged with information about the governing licenses and the extent of the use that can be made (for example, whether the image can be shared or altered and whether any attribution must be made to the original author).

For most causal bloggers, the easiest route to take is to source images from an online archive that provides images that are represented to be free and available for use, either under a Creative Commons license or as free public domain images. Developing a good list of online resources may well be the best starting point for the casual blogger.  See the following posting of online links to such image archives:

http://www.ragan.com/Main/Articles/49536.aspx?utm_medium=email&utm_source=Savicom&utm_campaign=1450796530.32507&utm_term=http%3A%2F%2Fwww.ragan.com%2FMain%2FArticles%2F49536.aspx

If someone has a copyright in the image, can its use be defended as “fair use?”

For a basic explanation of the concept of “fair use” see my recent blog post entitled Google’s Effort to Digitize Millions of Books is Fair Use. 

What constitutes fair use is an expansive topic and requires a case-by-case analysis and an evaluation of the following factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.   See Mattel, Inc. v. Walking Mountain Productions (9th Cir. 2003) 353 F.3d 792, 800, citing Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc. (9th Cir. 1997) 109 F.3d at 1399–1404.

While the doctrine of fair use is nuanced and may even differ from jurisdiction to jurisdiction, some guidelines can be deduced from some of the leading authorities dealing with the law of fair use and copyrighted images:

• Exact reproduction of an unaltered copyrighted image in a blog is less likely to be found a fair use unless the use of the image in the context of the blog itself substantially furthers the purpose of critical commentary, news reporting, teaching, scholarship, research or other recognized fair use purpose such as parody and, in doing so, gives the image some new meaning or message.
• Editing and remixing the image into a new image which itself conveys meaning in relation to the accompanying blog will increase the likelihood of a finding of fair use.
• Attribution, while not by itself excusing infringement, will generally weigh in favor of a finding of fair use.
• If the purpose of the use of an image in a blog post is primarily non-commercial and the accompanying blog post is likely to be viewed as news reporting, opinion or commentary, a finding of fair use is more likely.
• Fair use is less likely where an image has already been used in another online news or blog forum and is only being repurposed in the infringer’s blog for the same purpose. A conflict with the nature of the owner’s use will mitigate against fair use.

Importantly, there are no hard and fast rules and just because a blogger might conclude that a use of a copyrighted image is “fair use” does not mean that the blogger cannot be sued by a copyright owner who alleges that the use exceeded the boundaries of use fair.  Any use runs the risk of a confrontation with an owner or purported owner of a copyright in the work.

While far oversimplified, the take away here is that the more transformative the use of the “borrowed” image is and the more the transformation serves a purpose that can be defended as being a legitimate, recognized aim of fair use—such as critical commentary—the more likely the use will be considered a fair use within the meaning of the copyright laws. On the other hand, merely cutting and pasting images into your blog from other sources reporting on similar content is much more likely to amount to copyright infringement.

Some instructive cases relating to the fair use of borrowed images include Cariou v. Prince (2d Cir. 2013) 714 F.3d 694, 708, cert. denied, 134 S. Ct. 618 (alteration and incorporation of original photographs in new work amounted to fair use as to those images that may reasonably be perceived to alter the originals with new expression and meaning), Sixto Nunez v. Caribbean International News Corp. (1st Cir. 2000) 235 F.3d 18, 22-23 (the republication in a newspaper of photographs taken for a modeling portfolio was transformative because the use of the photographs served to inform, as well as to entertain) and Perfect 10, Inc. v. Amazon.com, Inc. (9th Cir. 2007) 508 F.3d 1146 (online search engine’s display of thumbnail images of copyright owner’s photographs was fair use).

Does your intended use comply with your service provider’s guidelines?

Legal liability for copyright infringement is not the only, and perhaps even the chief, concern. The likelihood of a copyright infringement law suit may well be quite small in relation to the likelihood that your use of an image will draw a complaint to whatever service provider hosts your blog site.

Depending on the service provider, the blog may be subject to anything from the removal of the allegedly offending image (or post containing the image) all the way to deletion of the alleged offender’s account. Deletion of an account could result in the loss of valuable data for the blogger in addition to the obvious impact on the blog itself, including having to relocate to another provider.

Many service providers will act aggressively to try to avoid any allegation of liability for contributory copyright infringement and to utilize a certain “safe harbor” exemption provided by the Digital Millennium Copyright Act (“DMCA”). See 17 U.S.C. § 512(c)(1) (a service provider is not liable for certain relief for copyright infringement where “upon notification of claimed infringement … [the service provider] responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.”).  Under the DMCA, the service provider may require the removal (sometimes referred to as a “takedown”) of supposedly infringing material by the user (including a blogger with an account hosting a blog).

If your service provider has a formal, written policy about the use of images in blogs or other accounts hosted by the provider and the making of and responding to DMCA takedown notices, you should obtain and review a copy of that policy.

Does the use of the image violate anyone’s trademark, tradedress, commercial use, publicity, privacy or other rights?

This final question is a broad one that implicates many other areas of intellectual property rights and other areas of the law that are not addressed in depth here. Suffice it to say, that the blogger will want to do further homework if an image appears, on its face, to implicate any trademark, tradedress, commercial use, publicity, privacy or other similar rights.

Among the uses of an image that should raise concern are:

• Use of a person’s photograph or likeness so as to violate state or federal laws governing a person’s use and publicity rights in his or her own image or likeness. This is less likely to be a concern for bloggers whose posts are unlikely to be seen as seeking to imply an endorsement or support by person or celebrity featured in an accompanying image. However, the nature and content of a blog could impact that conclusion.
• Use of an image that violates a person’s privacy rights. You should avoid the use of a photograph of a person in non-public place or in a manner that arguably might be viewed as harassing or an invasion of a reasonable expectation of privacy.
• Use of a person’s photograph or likeness in a way that potentially opens up exposure to a claim that the use of the image is disparaging or damaging to a person’s reputation. Avoid, for example, the use of an image that arguably associates some untrue (or questionable) fact with a person or entity.
• Use of a company’s (or any owner’s) trademark or tradedress in an image. Such claims could be varied, depending on the nature of the use and the trademark or tradedress rights involved. For example, a blogger might want to use an image of the famous Nike “Swoosh” trademark as an image to accompany a blog post about the Nike company. As a general rule, use of a trademark to refer to or describe a particular company or product is likely to be considered a permissible, non-infringing use.  See 15 U.S.C. § 1115(b)(4) (trademark law recognizes a defense where the mark is used only “to describe the goods or services of [a] party…”); New Kids on the Block v. News America Publishing, Inc. (9th Cir. 1992) 971 F.2d 302, 306 (the “nominative fair use” doctrine may be a defense to trademark infringement in certain circumstances where the alleged infringer uses a trademark to refer to a particular product for purposes of comparison, criticism or a point of reference); see also Toyota Motor Sales, U.S.A., Inc. v. Tabari (9th Cir. 2010) 610 F.3d 1171 (holding that a car broker’s internet domain names, including “buy-a-lexus.com,” may be protected as nominative fair use because they describe the make of the cars being sold).  Still, in close cases, it may well be best to simply avoid the use of any image that appears to contain trademark protected material.  While the actual trademark status of certain imagery may not be apparent, the casual blogger will want to generally avoid any image with company branding, logos or names unless doing so is essential to reference the company, product or service that is the subject of the substantive content of the blog post itself (and there is no likelihood of confusion as to sponsorship or endorsement by the referenced entity).

You know those cheesy variations on the “Happy Birthday” song performed by a half-dozen waiters and waitresses that your friends make you suffer through on your birthday? You notice that for all of the birthday parties you have watched on TV and in the movies, you rarely see a family singing “Happy Birthday” to their loved ones as they turn one year older?  All of that is about to change… maybe.

Parties recently settled an action related to the copyright on “Happy Birthday.” Terms of the settlement have yet to be disclosed, but they are not expected to undo a federal judge’s recent ruling in the case that the copyright, under which Warner/Chappelle Music and its predecessors have collected licensing fees for more than six decades, is invalid. So, it appears that “Happy Birthday” now officially belongs to all of us.

The Lawsuit

As discussed in a previous post, Plaintiffs brought suit claiming that the song is in the public domain because Warner/Chappelle had no valid copyright to the “Happy Birthday” lyrics. In September, a federal judge agreed with Plaintiffs and granted summary judgment that Warner/Chappelle Music “do not own a valid copyright in the Happy Birthday lyrics.” Warner/Chappelle announced that it would seek reconsideration of the court’s order or leave to immediately appeal the ruling.

Added Complications

Shortly after this ruling, plaintiffs sought to expand the class to include anyone from whom Warner/Chappelle had collected licensing fees dating back to 1949. This move created the prospect of substantial damages to be awarded against Warner/Chappelle. Then, last month, the charity organization Association for Childhood Education International, made a competing claim to the rights to use of the song as the heir of others to whom its authorship is attributed.

The Settlement

Rather than fighting this battle in Court, the parties have settled their matter. The financial terms have not been disclosed to the public. The settlement, however, appears to leave in tact the judge’s ruling invalidating the copyright and placing “Happy Birthday” in the public domain.  So, while being serenaded by waiters in front of a restaurant full of people will still be embarrassing, at least the song they are singing will be familiar.

In a recent decision handed down by the United States Court of Appeals for the Second Circuit, the court found that Google’s scanning of copyrighted books as part of its Library Project amounted to “fair use” and did not violate federal copyright law.

In The Authors Guild, et al. v. Google, Inc., Google was sued by a group of authors who alleged it violated their copyrights by making digital copies of their works. As part of the project, the plaintiff authors’ copyrighted books had been scanned without their permission by Google. The Authors Guild, et al. v. Google, Inc. (2d Cir. Oct. 16, 2015) No. 13-4829-CV, 2015 WL 6079426, at *2. Google then made them available for search by internet users who could access a “snippet” view through Google’s service.  This was done as part of Google’s Library Project, in which Google partnered with major research libraries to scan selected works from their collections.  Since 2004, Google has scanned more than 20 million books.  Some of those books are works in the public domain.  However, many are copyrighted.  Google’s service allows a copyright holder to exclude the work from “snippet” views by request.

After a proposed settlement was rejected by the federal district court, Google brought a motion for summary judgment on its fair use defense. In 2013, the federal district court granted Google’s motion, finding that Google’s project constituted fair use. In its recent decision, the Second Circuit upheld that ruling.

What is Fair Use?

The doctrine of fair use allows unauthorized copying of otherwise copyrighted works for certain limited purposes. The modern fair use doctrine is codified in Section 107 of the Copyright Act of 1976.  17 U.S.C. § 107.  The statute provides that “fair use” for purposes such as “criticism, comment, news reporting, teaching … scholarship, or research” is not an infringement of copyright.  The statute contains a list of various factors to be considered in determining if any given use is a protected fair use. Those factors include the “purpose and character of the use,” “the nature of the copyrighted work,” “the amount and substantiality of the portion used,” and the impact on the “the potential market for or value” of the copyrighted work.

The purpose and character of the purported fair use will weigh in favor of a finding of fair use where there is a “transformative use” that “communicates something new and different from the original or expands its utility…”  Authors Guild, supra, at *7.  In this case, the Court concluded that the making of a digital copy of copyrighted works to allow the sort of advanced search capabilities allowed by Google’s Library Project amounted to “a highly transformative purpose.”  Authors Guild, supra, at *8.

The Court observed that providing “tiny snippets” for view was designed to permit a researcher just enough context around a search term to evaluate whether the work was of relevance or not without “revealing so much as to threaten the author’s copyright interests.”  Authors Guild, supra, at *10. Interestingly, the court noted that it saw no reason to conclude that “Google’s overall profit motivation should prevail as a reason for denying fair use” in light of what the court viewed as a “highly convincing transformative purpose.”  Authors Guild, supra, at *11.

What Does the Decision Mean for Authors?

Authors or copyright holders with concerns about having portions of their works available for view through the Google’s Library Project should consider initiating the opt out procedure.  However, for many, the exposure and ease of search provided by Google’s service will outweigh any concerns over a “snippet” view available in the context of making the work searchable for online users.

Some years ago, Aaron Sorkin (bar none the greatest television writer of all time) spent a few minutes of an episode of Sports Night making light of the fact that the song “Happy Birthday” is outside the public domain. Onscreen, his characters quipped:

Dan: I’ve got the intellectual property cops crawling up my butt.

Isaac: The intellectual property cops?

Dan: I sang happy birthday to Casey on air.

Isaac: When?

Dan: Well, on his birthday, Isaac…

Isaac: Someone holds the copyright to “Happy Birthday”?

Dan: The representatives of Patty and Mildred Hill.

Isaac: Took two people to write that song?

In fact, it apparently took four people to write that song. While the Hill sisters are credited with writing the melody to “Happy Birthday,” two different authors, Preston Ware Orem and Mrs. R.R. Forman, were credited when a copyright on the song was first registered in 1935. Now, however, a group of plaintiffs is citing the fact that the song was published in 1922 sans copyright in arguing that the song is in the public domain.

Big Dollars at Stake

Warner Music Group currently owns the copyright to “Happy Birthday,” having purchased the company that registered the copyright in 1988. At the time, the “Happy Birthday” copyright alone was valued at $5 million. That figure would certainly be higher today, so Warner has a great deal at stake in this litigation.

We Could Be Singing Any Day Now

We may not have to wait long to learn the fate of “Happy Birthday.” Cross-motions for summary judgment are now pending before the District Court, which could rule on the motions with or without further hearings. While you wait, enjoy more fun banter from Sorkin on the topic:

After two years of battle in court, Tory Burch LLC (“Tory Burch”) wins $41.2 million ($38.9 million in damages and $2.3 million in attorneys’ fees) in its trademark infringement lawsuit against Lin & J International, Inc. (“Lin & J”), which was filed on May 31, 2013, in the U.S. District Court of the Southern District of New York. Tory Burch alleged in its 2013 complaint that Lin & J’s unauthorized use of Tory Burch’s federally registered trademarks and copyrighted works violated trademark counterfeiting, trademark infringement, trademark dilution, copyright infringement, and unfair competition laws.  In particular, Tory Burch claimed that Lin & J wrongfully reproduced earrings, necklaces, pendants, cuffs, bangles, and bracelets bearing unauthorized reproductions of Tory Burch’s famous TT Designs (see below).

Despite the apparent similarities, Lin & J had countersued Tory Burch for unfair trade practices, tortious interference with its business relationships, defamation, and trademark infringement. Lin & J claimed that its Isis Design is inspired by the Isis cross or a Coptic cross, which is a symmetrical cross with short, flanged bars, typically set in a circle. Nonetheless, in addition to finding that Lin & J had fabricated and destroyed evidence, the court ruled against Lin & J. This $41.2 million win for Tory Burch will be another notch added to her designer belt and not to mention her $3 billion (yes, with a “B” billion) empire.

You see them every day; those funny-looking characters and symbols splashed all over goods and advertisements.  Ⓡ.  Ⓒ.  Our friends “^TM” and “^SM” and even Ⓟ.  Like modern hieroglyphs, we know that these symbols have some cryptic meaning or purpose, but what do they really mean and why use them?

All of these symbols function as sign-posts to signal to the world that somebody has or is claiming intellectual property rights.

The Ⓡ symbol tells the viewer that he or she is face to face with someone’s registered trademark under federal law.  It puts that person on notice—take heed that someone has important and protectable rights in this particular name or mark.  15 U.S.C.A. § 1111 (a registrant of a trademark with the United States Patent and Trademark Office may give notice that a trademark is registered by displaying with the mark the words “Registered in U. S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, Ⓡ).  Absent such notice, the owner’s ability to recover damages for infringement by others is limited under federal law unless the owner can show that the infringer had actual notice of the trademark registration.  Never use the Ⓡ symbol for an unregistered trademark, however.  Improper use of a registration notice with an unregistered trademark, if done with the intent to deceive, is a ground for denying the registration of an otherwise valid mark.  Copelands’ Enterprises, Inc. v. CNV, Inc. (Fed. Cir. 1991) 945 F.2d 1563, 1566.  It may also be found to be an affirmative misrepresentation raising the spectre of civil or criminal liability.

Where a trademark is not registered, those claiming a protectable trademark or servicemark can make use of the “^TM” and “^SM” symbols.   The former signals a claimed trademark, while the latter is used with servicemarks (a servicemark is a trademark used to identify a service rather than a product).  No specific federal statutes authorize the use of the “^TM” symbol, limits its use, or states definitively what it does or does not convey to the public.  Southern Snow Manufacturing Co. v. Snow Wizard Holdings, Inc. (E.D. La. 2011) 829 F.Supp.2d 437, 452 (“Southern Snow”).  Historically, however, the designation has been used as a way of alerting the public to a claim of ownership of a trademark.  Southern Snow, at p. 452.  Such a claim does not necessarily equate with any actual, protectable rights.  “…[T]he TM symbol does not mean that the party has trademark rights in the name or can ensure that the mark is capable of serving as a trademark…”  Southern Snow, at p. 453-454.

However, using the “^TM” and “^SM” symbols can help establish a trademark.  The courts may consider such use as evidence demonstrating that a name or mark is being used in the sense of a trademark or servicemark to reflect the origin of the goods or services, a factor in the overall determination of the existence of trademark protection.  The fact that no symbol is used to designate an alleged trademark is evidence that the mark is not being used as a trademark.  T.A.D. Avanti, Inc. v. Phone-Mate, Inc. (C.D. Cal. 1978) 1978 WL 21444, *6.

Use of the copyright related symbols Ⓒ and Ⓟ, can be a bit more complicated.  For works first published after March 1, 1989, a formal copyright notice is optional.  17 U.S.C.A. § 401(a).  There are several formats for this notice proscribed by federal statute.  Federal law specifies that the notice may be in any one of the following forms:  (1) the symbol Ⓒ (the letter C in a circle), (2) the word “Copyright” or (3) the abbreviation “Copr.”  17 U.S.C.A. § 401(b)(1).  For sound recordings, a different form of notice is used—the symbol Ⓟ (the letter P in a circle) along with the year of first publication and the designation of the owner.  17 U.S.C.A. § 402(b).  While not required, including a copyright notice on a published work can negate an infringer’s ability to rely on the “innocent infringement” defense to avoid the imposition of certain damages.  17 U.S.C.A. §§ 401(d) and 402(d).

A copyright notice was required for works published before March 1, 1989 (the effective date, as to the United States, of the international copyright treaty known as the Berne Convention).  General publication before that date without a copyright notice could cause a work to enter the public domain if the copyright owner failed to cure the omission of the mandatory copyright notice.  There are, however, some limited circumstances in which the omission of the copyright notice from authorized copies distributed by the copyright owner does not invalidate the copyright in a work.  For example, a copyright is not lost if an otherwise required copyright notice was left off in violation of an express written requirement contained in the owner’s authorization of the public distribution of the work.  17 U.S.C.A. § 405(a)(3).

Unless you are adept at reading hieroglyphs, consulting with a trademark attorney before making use of any of these symbols in corporate logos, advertisements or other communications is a must.

A young actress agreed to appear in a low-budget, Middle Eastern themed action film. The producer re-cut and over-dubbed the video, which included five seconds of the actress’ performance, fashioning it into “Innocence of Muslims,” an anti-Islamic screed, which portrayed the Prophet Mohammed in an exceedingly offensive way. When the producer uploaded his video to YouTube, there were violent protests throughout the Middle-East. An Egyptian cleric issued a fatwa calling for the deaths of everyone involved in the video, including the actress. The actress sued the producer and Google, seeking an order to take down the video.

The Trial Courts Deny the Actress’ Motion for Takedown Orders

The actress sued the producer and Google, YouTube’s owner, in California Superior Court, alleging, inter alia, copyright infringement and sought an immediate take down order. The actress claimed that she owned the copyright to her performance and that the producer and Google violated that copyright. When the state court denied her motion for an injunction, she dismissed her state court action and filed a similar action in the U.S. District Court for the Central District of California, whose jurisdiction includes Hollywood. The District Court also denied the actress’ motion for a takedown order, finding (a) that she was unlikely to succeed on the merits because her copyright claims were unclear (since she had granted the producer an implied license to distribute her performance as part of the video) and (b) that the risk of irreparable harm had diminished since the video had been on the internet for five months.

9^th Circuit Panel Grants Takedown Order, Bad Film Makes Bad Law

The actress appealed, and Justice Kozinski, writing for a divided panel of three justices from the 9^th Circuit, found the district court abused its discretion and remanded the case back to the district court with clear guidance to grant the motion, even though the Court described the actress’ copyright claims as “debatable.”

The Court conceded that, even if the actress were to “complain that the film has a different title, that its historical depictions are inaccurate, that her scene is poorly edited or that the quality of the film isn’t as she imagined, she wouldn’t have a viable claim that her implied license had been exceeded.” But, in a statement reflecting subjectivity and jurisprudential gymnastics echoing Justice’s Stewart’s famous “I’ll know it when I see it” standard, the Court opined that her implied license was violated because the “the film isn’t intended to entertain at all.” The Court cited as evidence the fact that the producer lied to the actress regarding the nature of the film, which illustrates the Court’s extraordinary naiveté regarding the inner workings of Hollywood; it’s a rare exception when a finished film resembles the initial vision. The Court further disagreed with the lower court on the question of irreparable harm. Even though the actress’ name and photograph had been publicized and the fatwa had already issued, the Court concluded that the risk would reduce if Google took down the video. The Court rejected Google’s assertion that a takedown order was unconstitutional restraint of speech under the First Amendment.

The 9^th Circuit Order En Banc Reviews and Reverses the Panel, Reinstating the District Court’s Denial of the Injunction

The full 9^th Circuit, sitting en banc, reversed the panel’s decision.

Strike One-Actress’ Performance Not Copyrightable

9^th Circuit En Banc found that the actress’ performance was not the proper subject of copyright, noting that the Copyright Office generally refuses to copyright actors’ performances in motion pictures and had refused the actress’ application here, and that, while the producer had “fixed” her performance in a tangible medium (film), she had failed to do so.

Strike Two-Lack of Nexus Between Copyright Infringement and Irreparable Harm

The Court recognized the seriousness of the fatwa, but noted the “mismatch between her substantive copyright claim and the dangers she hopes to remedy….” The Court likened this to a prior case where wrestler Hulk Hogan sought to prevent the posting of a sex tape under a copyright infringement theory. Hulk Hogan lost because any irreparable harm flowed from the private nature of the video’s content and not from any “irreparable harm in the copyright sense.” The Court also agreed with the District Court’s finding that the actress’ delay in seeking relief undercut her claim for emergency relief.

Strike Three-The 9^th Circuit Panel’s Order “Gave Short Shrift to the First Amendment”

Finally, the 9^th Circuit’s En Banc decision admonished the panel for ignoring the “First Amendment values at stake. The mandatory injunction censored and suppressed a politically significant film-based upon a dubious and unprecedented theory of copyright.” Citing Supreme Court precedent that copyright claims are not “categorically immune from challenges under the First Amendment,” the Court held that “Prior restraints pose the ‘most serious and least tolerable infringement on First Amendment rights’ and [the actress] cannot overcome the historical and heavy presumption against such restraints with a thin copyright claim in a five-second performance.”

Dissent-Actress’ Performance is Copyrightable

In a dissent that is bound to launch a thousand law review articles, Justice Kozinski accused that majority of making “a total mess of copyright law, right here in the Hollywood Circuit.” In an argument that echoes the “when does human life begin” debate, Justice Kozinski argued that the majority erred in holding that only the final film is subject to copyright, when, in fact, each “contribution to a movie can be copyrightable (and thus can be a ‘work’).”

Elsa and Anna are going to trial.  Well, Olaf and Sven are headed there, at any rate.  The sanguine snowman and his reindeer buddy were featured in a trailer for the Disney hit Frozen that is now the subject of a lawsuit claiming that the trailer infringed a Mill Valley animator’s copyright for a 2010 animated short film, The Snowman.  A federal judge in April denied Disney’s motion for summary judgment in the case, finding that a reasonable jury could decide that the trailer and the short film were “substantially similar” under copyright law.

Reasonable Jury Could “Go Either Way” on Substantial Similarity

The animator, Kelly Wilson, sued Disney in 2014, alleging that Disney had the opportunity to view The Snowman prior to creating the trailer and that the studio copied the “the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events from Wilson’s film.  Wilson’s complaint presents a frame-by-frame comparison of the two to establish their substantial similarity (below).

While the court agreed with Wilson that a jury could find the two films similar, it also declined to grant summary judgment in her favor, holding that “a reasonable jury could go either way on whether the Frozen trailer and The Snowman are ‘substantially similar.'”

Genuine Dispute Regarding Disney’s Access

Because a jury “could go either way,” Disney must prove that it did not have access to The Snowman before creating the Frozen trailer.  The court, however, found that Disney could not avoid a genuine dispute on this issue based primarily on the fact that The Snowman was screened at the 2011 San Francisco International Film Festival, along with Play by Play, a short film produced by Pixar, a Disney subsidiary.  Among the Pixar employees in attendance was Executive Producer, Elyse Klaidman, who works directly with Disney creative director John Lasseter, who was “heavily involved” in the creation of the trailer.  The court contrasted this situation with those in which the only established connection with copyrighted work is through “some random employee.”

So, it’s off to trial they go.  The trial is currently set for October of 2015.

Michelle Phan is a YouTube celebrity and beauty guru and has garnered over 7 million subscribers and one billion lifetime views. However, not everyone is a fan of Ms. Phan. On July 16, 2014, Ultra International Music Publishing, LLC and Ultra Records, LLC (collectively, “Ultra”) sued Ms. Phan for copyright infringement for allegedly using their songs without a license. A licensing agreement is a legal contract between two parties, known as the licensor and the licensee. Here, Ultra (the licensor) would have granted Ms. Phan (the licensee) the right to Ultra’s copyrighted music. However, Ultra claims that Ms. Phan had illegally used forty-five (45) different songs, including sole works of Kaskade or a collaboration between Kaskade and other artists, in her YouTube videos and is seeking up to $150,000.00 in damages per infringement.

Although Kaskade declared his support for Ms. Phan by tweeting, “Summary: I’m not suing @MichellePhan + @ultrarecords isn’t my lapdog. I can’t do much about the lawsuit except voice support for her.” Ultra issued an official statement that reads, “When a music artist or songwriter signs to Ultra, it is our responsibility to protect what they have created. Enforcing copyrights is fundamental to the survival of artists, writers and producers, and to Ultra’s ability to continue to invest in and support them, so that they can continue to bring great music to music fans around the world. Whatever Ultra collects enforcing these important rights is shared with its artists according to their agreements.”

Armed with strong ammunition, Ms. Phan went on the defense and filed her counterclaim against Ultra on September 18, 2014 for Declaratory Relief, Violation of Section 512(f) of Digital Millennium Copyright Act, and Intentional Interference with Contract. In particular, Ms. Phan claims that in 2009 she contacted Ultra’s Senior New Media Manager to negotiate an agreement whereby she would be granted permission to use any of Ultra’s music in exchange for her including credit to the artist and an iTunes link in her YouTube videos. For the next four years, Ms. Phan and Ultra worked cooperatively pursuant to the aforementioned agreement. Ms. Phan alleges that Ultra’s representatives even offered suggestions to particular tracks by its artists that could be used as background music in her YouTube videos. However, on March 18, 2014, Ultra demanded that Ms. Phan cease and desist from using any of Ultra’s music. Ultra also sent takedown notices to YouTube for 12 of her videos. Ms. Phan is now seeking damages for Ultra’s takedown notices, which she claims were sent in bad faith, and for knowingly materially misrepresenting her infringing use of the music. She is also seeking damages for Ultra’s bad faith actions in attempting to disrupt her contractual relationship with YouTube.

It is unclear whether the negotiated terms of the agreement between Ms. Phan and Ultra was finalized in a written license agreement. However, it does not seem to be the case given that neither of parties attached any agreement to their respective complaint or counterclaim. If this is the case, the obvious take away message is to “get it in writing.” Although some licensing agreements can get lengthy and complicated, most agreements include terms such as the grant/scope of the license, royalty rates, how royalties are calculated, length of the license, and renewal options. A finalized license agreement probably could have saved each party time and money because now each side will have the additional “joy” of arguing whether a license agreement (if any) was formed via those emails between Ms. Phan and Ultra’s Senior New Media Manager and what were the terms of that agreement.

Seems that someone’s always thinking of you, especially if you’re Smokey Robinson and you’re about to reclaim ownership of popular songs you wrote back in the day, like “I Second that Emotion,” “The Tears of a Clown,” “The Tracks of My Tears,” “My Girl” and “You’ve Really Got a Hold on Me.”

Smokey has preemptively filed suit against his ex-wife, Claudette Robinson, asking the court to declare him the sole owner of the copyrights of the songs that he wrote during his marriage with Claudette. According to his complaint, Smokey had previously assigned the rights to his songs to Jobete Music Co., Inc., a music publishing company. When he and Claudette divorced in 1986, the parties agreed to co-own the copyrights 50-50, so they would benefit equally from any proceeds received from the assigned copyrights.

Under the 1976 Copyright Act, an author of an original work who had assigned his copyrights can terminate the assignment and “recapture” his or her copyright 35 years after the assignment (for post-1978 copyrights), or 56 years after the copyright date (for pre-1978 copyrights) by sending out a notice of termination to the assignee.

Smokey’s complaint says that once he started sending out termination notices and negotiating with buyers to resell the copyrights, Claudette notified SESAC, Inc., a performing rights organization, that because the parties’ divorce agreement provides that she is a 50% owner of the original copyrights, she was also entitled to 50% when Smokey recaptures those copyrights. As Smokey alleges, Claudette’s potential 50% claim is interfering with Smokey’s efforts to secure new agreements on the recaptured copyrights and is putting a damper on Smokey’s ability to shop his songs around.

How Can You Split Up A Copyright Anyway?

Under the Copyright Act, a copyright can be shared in a few ways. Co-contributors to a particular work, like Lennon and McCartney, may co-own a copyright. Additionally, the Act expressly allows an owner to transfer his or her copyright, “in whole or in part” in many ways – by an agreement, a will, intestate succession, or operation of law.

California courts have interpreted this to mean that the state’s community property laws apply to copyrights. In In re Marriage of Worth, 195 Cal. App. 3d 768 (1987), the Court found that under California community property law, an ex-wife was entitled to 50% of any proceeds her ex-husband author received from his copyright infringement lawsuit for books that he wrote during the marriage. The husband’s copyright was a divisible asset just like anything else upon divorce.

If the original copyright is community property (or subject to a 50-50 agreement), then it should remain community property if the author gets it back, right?

Maybe not, and that’s the issue here. From the complaint, it sounds like Smokey’s attorneys are claiming three things:

1) The “termination right” is completely separate from the copyright itself. According to Smokey’s complaint, unlike the original copyright, which (according to California case law, at least) may be divided upon divorce, the right to terminate an assignment of the copyright is exclusively held by the original author(s), unless the author is no longer living. Furthermore, this right doesn’t have to be exercised. It’s up to the author to decide whether he wants to terminate the assignment.

2) Smokey’s right to terminate the assignments (and therefore “recapture” his copyrights) did not even exist until at least 35 years after he assigned his post-1978 songs, or 56 years after he obtained the original copyright to his pre-1978 songs. Therefore, it was impossible to transfer something that wasn’t in existence at the time he and Claudette divorced in 1985.

3) The copyrights obtained after termination are new copyrights that belong solely to Smokey because he will not have gotten them back until long after the parties’ divorce. These recaptured copyrights are not subject to the parties’ agreement to share the original copyrights 50-50.

So this recapture right essentially lets Smokey get around his prior agreement to share his copyrights 50-50 with Claudette. That doesn’t seem fair.

That’s essentially what Claudette’s attorneys are arguing. Among other things, Claudette’s counter-suit says that she is entitled to 50% of any proceeds Smokey receives by re-selling his recaptured copyrights and claims that Smokey’s failure to tell her about his termination right when they divorced was a breach of his fiduciary duty to her. She alleges that Smokey’s claim to 100% of the recapture rights is an attempt to bypass their 50-50 agreement.

What will the outcome be?

While litigation can be unpredictable, I think the most favorable and likely outcome would be to cut ties once and for all – a settlement of an undisclosed (but large) amount of money to Claudette in exchange for dropping her 50% ownership claim over the recaptured copyrights. Regardless of whether the Copyright Act is on his side, Smokey’s got to be willing to pay some agony (either to Claudette or his attorneys), and Claudette will have to do the leaving if they finally want to be free of each other. For now, she appears to really have a hold on Smokey.