Trademark & Copyright Law Blog : Intellectual Property Lawyers & Attorneys : Foley Hoag Law Firm : Washington D.C., Boston

 Along with January’s hot activity in the race for the Republican Presidential nomination, we also saw the emergence of two more stories about the intersection of intellectual property and political ads.

One issue is “déjà vu all over again”: political fair use. We are once again confronted with the question of to what extent the fair use doctrine (http://www.copyright.gov/fls/fl102.html) allows for the use of copyrighted news clips in political advertisements. We’ve previously written about this issue here, here, and here.

This time, it’s Mitt v. NBC. On-again off-again front runner Mitt Romney has issued an attack ad against latest rival Newt Gingrich. The ad, entitled “History Lesson”, is little more than a short clip of a 1997 episode of NBC’s Nightly News, reporting that Gingrich was found guilty of ethics violations. Along the bottom, just under Tom Brokaw’s tie, are the words “Paid for by Romney for President, Inc. Approved by Mitt Romney.”

Upon seeing the ad, NBC’s vice president of media law, David N. Sternlicht, shot off a missive to the Romney campaign, demanding that NBC’s copyrighted material be taken out of the ad. The Romney campaign says that it intends to keep running the ad (unlike the last time, when it backed down after a similar demand from CNN of an anti-Perry ad).

This time, the story also has a twist. NBC is claiming that, in addition to the copyright violations, the ad falsely implies that NBC or Tom Brokaw have endorsed its content. Mr. Sternlicht wrote that “[a]side from the obvious copyright issues, this use of the voice of Mr. Brokaw and the NBC News name exploits him and the journalistic credibility of NBC News.” Tom Brokaw issued a similar statement, reported in the Washington Post: “I am extremely uncomfortable with the extended use of my personal image in this political ad.” In other words, NBC and Brokaw are asserting that, in addition to infringing on their copyright, the ad is also a violation of their “Right of Publicity” or perhaps a False Designation of Origin under the Lanham Act.

Neither NBC nor Brokaw have filed suit yet but, in a similar case, candidate Ron Paul has done just that. On January 4, 2012, an anonymous YouTube user named “NHLiberty4Paul” uploaded a vicious advertisement, subtitled “The Manchurian Candidate,” which alleged that then-candidate John Huntsman was beholden to Chinese interests. The ad ends with the text “VOTE RON PAUL.”

Within less than 10 days, Paul initiated a lawsuit in the Northern District of California against the anonymous makers of the ad. Paul claims include False Designation of Origin under the Lanham act and common law defamation.

So far, things haven’t been going well for the Paul lawsuit. Paul sought immediate discovery from YouTube in order to discover the identity of NHLiberty4Paul, but Magistrate Judge Maria-Elena James denied the request without prejudice on the grounds that Paul’s motion had failed to address the legal standard for expedited discovery. Otherwise, the case appears to be proceeding in the normal course. We’ll keep you posted.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Political primary season is upon us and, just like a bad hangover, one particular political speech question just keeps creating headaches. To what extent is the unauthorized use of copyrighted material in political campaign advertisements protected by the fair use doctrine? Can political ads borrow a clip from a presidential debate? From a televised sporting event? How about a photograph created by an opponent’s campaign?

We previously reported on copyright dustups over the “Miracle On Ice” ads by former U.S. Presidential candidate Tim Pawlenty, and attack ads against Canadian Liberal Party leader Michael Ignatieff. In both of these instances, political campaigns ads used copyrighted material from major news organizations. In each case, the news organizations made some noise about copyright infringement and then backed down before things got litigious.

Then, in October, as reported by Talking Points Memo’s Benjy Sarlin, Presidential candidate Mitt Romney’s campaign released the “Ready to Lead?” internet attack ad against Texas Governor Rick Perry. The ad questioned Perry’s general competence with clips of “brutal” reviews of his debate performances by television commentators from CNN, FOX and elsewhere. (In one clip, Fox News’ Britt Hume announces: “Perry really did throw up all over himself in the debate.”). CNN, claiming copyright infringement, demanded that Romney remove the video from the internet. This time, it was the candidate that backed down. Romney’s campaign vigorously claimed that it was protected by the fair use doctrine . . . but nonetheless took the video down only a few hours after it was posted.

So is anybody going to hang in there, to sue or be sued, so we can develop some modern case law on this issue?

The latest candidate for political fair use torch-bearer is Los Angeles County Deputy District Attorney Alan Jackson. In his bid to knock City Attorney Carmen Trutanich out of the race for Los Angeles District Attorney in 2012, Jackson released an attack ad inspired by “The Hangover” movie franchise, featuring various photographs of Trutanich instead of the movie characters.

So, who’s complaining? The producers of the “The Hangover”? Nope. The Trutanich campaign? Well, maybe. The Contra Costa times has reported that the photographs of Trutanich which were used in the ad were actually taken by a Trutanich campaign photographer in 2009. The photographer has retained counsel and sent a demand letter threatening a copyright infringement claim. Jackson’s campaign, for its part, has invoked the First Amendment, presaging a fair use defense.

Is this one going to go the distance? Will the photographer really bring suit and force Jackson to defend on the basis of fair use, perhaps resulting in a big fat juicy Ninth Circuit opinion? Or, as the Jackson campaign has implied, is the threatened lawsuit nothing more than a concoction of the Trutanich campaign, designed to evaporate once the requisite political points are scored? If history is any judge, it will probably be the latter, and we’ll be left to nurse our political fair use headaches once again.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

No, monkeys can’t own copyrights. But please read on. This relatively simple answer to a question nobody is seriously asking hasn’t prevented the emergence of a strange copyright controversy over a series of monkey-taken photographs, including the self-portrait on the left.

Wildlife photographer David Slater was visiting a North Sulawesi national park in Indonesia when he left his camera unattended. A crested black macaque grabbed the camera and managed to snap some stunning images. The photographs ended up in the July 5 edition of the UK’s Daily Mail, some of them bearing the copyright notices of the Caters News Agency.

That’s when things started to get weird.

Online magazine Techdirt reprinted the photographs a couple of days later, expressed doubt as to whether Caters could actually own the copyright and queried: “Can a Monkey License its Copyrights to a News Agency?”

The following Monday, Caters sent a ersatz take-down notice to Techdirt, claiming to represent Mr. Slater and asking that the images be removed from Techdirt’s website. Techdirt refused, claiming that the images were in the public domain and that its use of them was fair use. Slater, in a statement reprinted by Techdirt, responded that, contrary to the impression given by the original Daily Mail story, the photograph was not so much an accident as a planned artistic endeavor. “Until I hear from the monkey’s lawyers,” Slater said, “I will stick to the belief that I own the copyright.”

So who’s right? We are unlikely to find out anytime soon, because there is really nothing here to sue over.

First, as noted in another blog entry earlier this year, the republishing of a photograph for the purpose of discussing the copyright issues surrounding that photograph is almost certainly fair use, and it’s doubtful that Caters will bother spending the money to test that theory, at least in the U.S.

At the same time, Techdirt’s tongue-in-cheek suggestion that the monkey owns the copyright is a non-starter. As Techdirt itself notes, Copyright Office Rule 503.03(a) states that

In order to be entitled to copyright registration, a work must be the product of human authorship . . . a work owing its form to the forces of nature and lacking human authorship is not registrable; thus, for example, a piece of driftwood even if polished and mounted is not registrable.

Notwithstanding this rule, neither the Copyright Act nor the Constitution explicitly limits copyright authorship to human beings. However, the few arguments advanced in favor of expanding eligibility for authorship beyond human beings are unconvincing. For one thing, monkeys and other nonhumans don’t need monetary incentives to create, which is arguably the whole point of copyright law in the first place. And who exactly is going to sue on behalf of the monkey anyway?

But even though this controversy remains mostly academic, Techdirt’s provocative position has raised at least one very interesting issue. A monkey can’t own a copyright, but can a monkey or some other non-human agency prevent a human from owning a copyright, thus pushing the work into the public domain? What if, for example, all the creative and copyrightable aspects of a work are attributable to a super-intelligent computer which for one reason or another randomly or arbitrarily created it? Will that prevent the owner or the programmer of the computer from becoming an author under the Copyright Act? As artificial intelligence becomes more sophisticated, these issues are likely to arise again and again with each new generation of computers.

And if they ever invent a super-intelligent monkey robot, hold on to your camera. 

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Several months ago, we highlighted the Canadian Conservative party’s use of the Canadian Broadcasting Company’s copyrighted footage in political attack ads. (Not Quite Fair Use: Canada's Fair Dealing Exception to Copyright Infringement in the Political Spotlight). In defense of its ads, the Conservative party argued by analogy that such use of copyrighted material for political purposes would be “fair use” in the United States.

ABC Sports has a chance to test that theory.

Last Wednesday, former Governor and Republican presidential candidate Tim Pawlenty began running ads comparing his underdog political campaign to the 1980 United States Olympic hockey team and its “Miracle on Ice” win over the Soviet Union. In the ad, Pawlenty freely uses footage and voice-over sound owned by ABC Sports. Pawlenty’s campaign didn’t bother to seek permission from ABC Sports, claiming protection of the fair use doctrine.

The next day, the Des Moines Register reported that ABC Sports was considering issuing a cease and desist order to the Pawlenty campaign. However, the broadcaster later dialed it back, stating that it hadn’t yet decided what to do.

Pawlenty’s campaign is currently attracting only about 3% of likely Republican voters, according to polls. His campaign’s slow fade into obscurity may therefore render ABC Sports’ concerns moot as a practical matter. But what if Pawlenty’s bid to associate himself with bygone sporting glory rallies the voters, and the “Miracle on Ice” footage ends up getting used in thousands of Pawlenty ads across the country, not just a few in Iowa? Will ABC Sports act, or just let it go? Time will tell, but for now it appears that ABC Sports is going to stick to the hockey arena and stay out of the political one. Some full-contact sports are just too rough.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

In May 2011, a bench trial commenced in the Federal District Court for Northern Georgia which may change the way college libraries everywhere operate. In 2008, Academic publishers Cambridge University Press, Oxford University Press, and Sage Publications filed a complaint against Georgia State University, alleging copyright infringement on a grand scale by the school’s library system. No doubt with an eye towards public relations, the plaintiffs are not looking for money, but for a systemic change to the University’s copyright policy. Understood broadly, the change the publishers seek, if endorsed by the court, could change the use of electronic reserves at university libraries across the country.

The fair use provision of the Copyright Act, 17 U.S.C. § 107, expressly provides that the copying of a work is more likely to be a “fair use” when it is for a “non-profit educational purpose.” Up through the 1980’s, it was assumed by academics that this provision protected the creation of college “course packets,” that is, anthologies of photocopied textbook chapters or other written materials. However, a series of cases brought by the publishing industry in the 1990’s forever disabused academia of this misconception and made it clear that the creation of course packets, without permission by the authors or publishers, was in most cases infringement and not fair use. Indeed, the educational nature of a use is only one of several fair use factors, and the Supreme Court has held that “the mere fact that a use is educational and not for profit does not insulate it from a finding of infringement.”

Enter the electronic reserve, the publishing industry’s new bogey man. In the traditional paper library reserve, a professor made one or two photocopies of a chapter available for temporary borrowing through the campus library, usually as an optional reading assignment. Such traditional reserves are generally viewed as non-infringing due to fair use principles and the library exemptions to copyright infringement contained in 17 U.S.C § 108. However, digital technology has complicated this analysis. At Georgia State and elsewhere, professors can now make reading material available on-line through the library’s electronic reserve system or on individual class websites. The University allows each professor to determine for herself whether the posting of this material is fair use, based in part on a “Fair Use Checklist”, the utility and legality of which the parties hotly dispute.

What cannot be in serious dispute, however, is that the ability to put documents on electronic reserve is a game changer in the college library context. Now, instead of waiting in line for one or two available photocopies, all students can get a copy at once. Instead of having to return the photocopy to the library, a student can simply retain it forever. And, most galling to the publishing industry, instead of paying for a course packet, students get the same material for free.

So what is an electronic reserve? Is it just like a paper reserve, only in a different format? Or is it more akin (and being used as a substitute for) the course packet? If the former, Georgia State University should not have change its policy and the days of the course packets will be numbered as other institutions follow suit. If the latter, college copyright policies across the country, as well as electronic reserve guidelines issued by such groups as the American Library Association, will likely require radical alteration.

The Georgia case may or may not answer these questions. It is possible that the Court will decide the matter on narrow grounds which do not fully tackle the fair use issue or provide guidance for other institutions. Additionally, Georgia State allegedly engaged in some practices that may not be common to all educational institutions: encouraging professors to use electronic reserves as a substitute for course packets, copying multiple chapters of the same book or excerpts hundreds of pages long, maintaining copies of documents in the electronic reserve system instead of terminating the reserve at the end of the semester, allowing students to download and keep copies, delegating fair use decisions to individual professors with little or no institutional oversight, and in general creating a policy so lax that one commentator described it as “just say yes to everything.” But whether or not this case shows the way for the rest of academia, the electronic reserve genie is now out of the bottle, and this controversy will no doubt spawn additional litigation until the issue is resolved.

• Email This
• Print
• Comments (4)
• Trackbacks
• Share Link

In the latest episode of the hit Fox show Glee, entitled “Original Song,” the high school glee club, “New Directions,” prepares to perform the track “Sing” by My Chemical Romance in a regional competition. Out of nowhere, My Chemical Romance sends a cease and desist letter to the kids forbidding them from using the song. Although it later turns out that the letter was forged by the evil Sue Sylvester, the gang is forced to abandon their plans and write an original song to perform at the last minute. They work with diligence and passion, and miraculously and brilliantly compose the perfect song just in time to win the big competition. Phew!

Nice premise. But could My Chemical Romance really prevent a bunch of high school kids from performing “Sing”? Is there no protection for these youngsters?

The most common impulse in these situations is to turn to the fair use doctrine. The performance of “Sing” appears at first glance to be protected by the doctrine, which directs a court to consider “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” However, one can imagine that the other fair use factors of the notoriously fuzzy doctrine (the nature of the copyrighted work, the amount and substantiality of the portion used and the effect on the market) might cut the other way, depending on the circumstances. Also, the copyright office has made it clear that, irrespective of any public perception to the contrary, educational use does not automatically equal fair use, especially where an entire song is used.

But fair use isn’t the only exemption to copyright infringement. The Copyright Act’s “Exemption of certain performances and displays,” 17 USC § 110(4), provides that the live performance of a nondramatic musical work, in which the performers and organizers are not compensated, is not infringement if (a) there is no admission charge or (b) even if there is an admission charge and as long as the copyright holder does not object in writing, the profits from the performance are directed exclusively to educational, religious or charitable purposes.

There is precious little case law concerning 17 USC § 110(4), and no published cases about its application in the educational context. It is therefore not clear whether the New Directions kids would be barred from the protection of this exemption due to the fact that their teacher and other “organizers” of the competition might be compensated for their time. Putting that issue aside, however, if the fictional competition did not charge an entrance fee, it appears that My Chemical Romance would have been totally out of luck even if they objected, and New Directions could have stuck with their original plan. All that work for nothing!

• Email This
• Print
• Comments
• Trackbacks
• Share Link

When the Canadian Conservative Party released a raft of attack ads last month against Liberal Party leader Michael Ignatieff, it was the Canadian Broadcasting Corporation (“CBC”) that led the counterattack. Why? In constructing their ads, the Conservative Party used without permission CBC’s copyrighted file footage of Ignatieff. The CBC claimed that the use of its footage in partisan ads undermined its reputation as an independent news source, and has accused the Conservatives of copyright infringement. The Conservatives responded that the ads were “free speech.” Besides, the Conservatives argued, the use of such clips for political speech purposes is “fair use” under United States copyright law, so it must be protected by the equivalent “fair dealing” provisions of the Canadian Copyright Act.

Are the Conservatives right? Not quite. There are important differences between American “fair use” and Canadian “fair dealing.” Fair use, as set forth in 17 U.S.C. § 107, protects an otherwise infringing use if it is “for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.” It is well recognized that this list is non-exhaustive and flexible, so that virtually any use might be considered fair use if it meets the four-factor balancing test set forth in the statute.

By contrast, Canadian fair dealing, as set forth in Chapter C-42, Section 29 of the Canadian Copyright Act, protects only “research or private study,” “criticism or review” and news reporting. This list is considered to be rigid and exhaustive, so it arguably does not cover non-enumerated uses such as parody, education and time-shift viewing.

Does fair dealing protect political speech? It remains to be seen whether the CBC will sue and whether that suit will be successful. In recent years, some Canadian courts have shown a willingness to give the fair dealing categories a “large and liberal” interpretation, but it is still far from clear that political attack ads will qualify as “criticism.”

In the meantime, the controversial Bill C-32, which includes fair dealing reform legislation drafted by the Conservative Party, is being considered by the Canadian parliament. Some advocates had lobbied for this bill to replace the rigid fair dealing categories with a flexible American-style fair use model. Instead, the Conservative’s bill would maintain the inflexibility of the current system but would add new fair dealing categories protecting parody, satire and education, as well as additional exceptions that may address time-shift viewing. Ironically, the Conservatives decided not to include an exception for political speech.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

In a bid to win the hearts and minds of voters, lately political candidates have touted, among other things, their musical predilections. In at least two recent cases, candidates have sanctioned the alteration of the lyrics, but not the tune, of some of their favorite music to shore up political support. The musicians who own the copyrights in those songs weren’t exactly thrilled.

All They Want To Do Is Campaign

In April 2009, various musicians, including Don Henley, sued Charles DeVore, who unsuccessfully sought the Republican nomination for a U.S. Senate seat currently held by Senator Barbara Boxer, for, among other things, infringing the musicians’ copyrights. The musicians alleged (PDF) that DeVore produced videos reworking the lyrics of the musicians’ songs “The Boys of Summer” and “All She Wants to Do Is Dance” into songs titled “The Hope of November” and “All She Wants To Do Is Tax,” which poked fun at President Obama, his supporters, and Senator Boxer. DeVore asserted that “The Hope of November” and “All She Wants To Do Is Tax,” constituted parodies, and were thus protected by the fair use doctrine. Specifically, DeVore maintained that the altered songs commented on political views conveyed in the songs. On cross-motions for summary judgment, the court disagreed (PDF), reasoning in large part that DeVore’s videos did not target Henley’s political views so much as they targeted views that may have been held by Henley (the court noted that Henley disputed DeVore’s assumption that he held liberal-leaning views, but explained that its inquiry focused on whether a work’s parodic character could reasonably be perceived).   DeVore recently apologized for using the musicians’ work without their permission and settled the matter for an undisclosed amount.

In another case this past January, Peter Paterno, an attorney for Joe Walsh, a guitarist for the Eagles, wrote to Joe Walsh (PDF), a Republican candidate for Congress, about the unlicensed use of his client’s song, “Walk Away,” in which the narrator ostensibly recounts his unsuccessful efforts to mend his relationship with an uninterested partner, to compose “Lead the Way,” which extolls Joe Walsh’s ability to “lead the way” in battle against Democratic policies and positions.  In the bitingly sarcastic letter, Paterno demanded that the candidate discontinue his unlicensed use of Walsh’s song.  Walsh refused, claiming that “Lead the Way” was a “parody song of the political process.” However, a “parody of the political process” standing by itself is insufficient to demonstrate the parodic nature of the work for purposes of a copyright infringement; rather, Walsh had to show that “Lead the Way” lampooned or commented on “Walk Away.” Perhaps having realized that his song had very little, if anything, to do with trying to fix a broken relationship, Walsh ultimately decided to take “Lead the Way” down from his website.

Fair Use Funny?

For purposes of a copyright infringement action, a work qualifies as a parody if it uses aspects of a copyrighted work to create a new work that comments on the underlying copyrighted work.

Owing to the limitation that a parody comment on an underlying copyrighted work, parodies enjoy a somewhat favored status under the fair use doctrine. This is because the four factors used to determine whether the fair use doctrine protects a putative parody—the purpose and character of the use, the nature of a copyrighted work, the amount copied, and the effect upon the potential market—typically weigh in favor of finding that an alleged parody constitutes a fair use since a parody by its very nature is transformative and expressive, requires significant borrowing from the underlying work, and the author of a copyrighted work will not likely license a work criticizing the author’s own work.

In contrast, satirical works, which use another’s work to comment on something other than the underlying work, do not necessarily fare as well under these factors because satirical works typically require greater justification for appropriating a copyrighted material. For this reason, would-be satirists often try to stretch the meaning or message ascribable to a copyrighted work in order to assert a parody-based fair use defense and avoid the heavier burden typically applied to satires.

Aren’t There Different Rules For Politicians Political Speech?

The fine distinction between satire and parody exists in a certain amount of tension with the relatively strong protections afforded political speech under the First Amendment.   Although copyright law does not proscribe the substance or ideas behind political messages, it does potentially entitle an author to enjoin the form in which a political message may be delivered.

As the DeVore and Walsh cases demonstrate, parody will rarely, if ever, serve as a viable defense in a copyright infringement action where the allegedly infringing work fixates on a political view rather than the underlying work itself. To stave off claims of copyright infringement, political satirists would thus do well to take aim at works with overtly political tones or otherwise limit their commentary to the works from which they borrow.  

• Email This
• Print
• Comments
• Trackbacks
• Share Link

This week, the Computer & Communications Industry Association (CCIA) released the report Fair Use in the U.S. Economy (.pdf) concluding that industries that rely on the "fair use" exception in copyright law contributed $4.7 trillion or 16% of the  U.S. gross domestic product in 2007, growing faster than the other sectors of the U.S. economy.  The report credits the fair use of copyrighted works for the success of search engines, software developers and a number of other "new economy" industries.

The Fair Use Doctrine is derived from Section 107 of the Copyright Act, which reads:

[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

The CCIA Report examines industries that benefit from the Fair Use Doctrine, particularly Internet search engines, software developers and the makers of music and media players, and concludes that "exceptions to copyright protection . . . promote innovation and are a major catalyst of U.S. economic growth."  The report cautions that these findings do not necessarily call for scaling back copyright protections:

Certainly, copyright protection provides an incentive for the production of creative works and these works have a positive impact on the U.S. economy.  The positive aspects of copyright protection should not, however, obscure that fair use is also a vital economic driver.

The CCIA report does not explain in detail what "fair use" helped drive the growth of MP3 players, but everyone should keep in mind that, as far as current caselaw is concerned, we still need to pay for songs downloaded from iTunes. 

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link