In Urbont v. Sony Music Entertainment, No. 11 Civ. 4516 (S.D.N.Y. March 27, 2012), the federal District Court for the Southern District of New York was presented with the question of whether the discovery rule applies to causes of action under the Copyright Act.
The discovery rule allows parties to extend a statute of limitations because they did not have reason to know, nor did they know, that they had a potential cause of action. In this case, application of the discovery rule would have extended the three (3) year statute of limitations under the Copyright Act for infringement.
The court determined that the discovery rule would not apply here because there was no evidence of material concealment of the fraud that led to the alleged infringement. Instead, the plaintiff had complete access to all the information necessary to determine that an infringement had taken place, and he had simply not brought his cause of action within the applicable period.
© 2012 Nissenbaum Law Group, LLC
Does copyright protection extend to original pictures that users post on their Twitter account? That question was considered by the United States District Court for the Southern District of New York last year. Agence France Presse v. Morel, 2011 WL 147718 (S.D.N.Y. Jan. 14, 2011).
The defendant, Daniel Morel (“Morel”), was a photojournalist working in Haiti when an earthquake devastated the city in January 2010. After photographing the aftermath, he opened his Twitter account as well as Twitpic, a third-party application of Twitter. He uploaded his earthquake photos to Twitpic and then posted a message on Twitter that advertised that he had “exclusive earthquake photos,” while also providing a link on Twitter to his Twitpic page. There were no copyright notices on the images themselves, but his Twitpic page included the attributions “Morel” and “by photomorel.”
Minutes after the photos were posted, Dominican Republic resident Lisandro Suero (“Suero”) copied the photos, posted them on his Twitpic account and then “tweeted” that he had the “exclusive photographs of the catastrophe for credit and copyright.” Morel at 2. He did not give attribution to Morel. Eventually, the plaintiff, Agence France Press (“AFP”) and many other international news agencies began to acquire photos of the devastation. AFP emailed Morel asking if he had pictures the agency could use, but before he responded, AFP downloaded 13 of Morel’s earthquake photos from Suero’s Twitpic page. AFP placed the photos in its image forum, where they were transmitted to Getty (Getty holds exclusive rights to market AFP images in North America). AFP then included a credit line of “AFP/Getty/Lisandro Suero.” Getty subsequently licensed the photos to other news outlets, including CBS and CNN.
In December 2010, AFP brought a declaratory judgment action that alleged that it had an express license to use Morel’s photos and thus did not infringe on his copyright. In a counterclaim, Morel alleged that AFP had in fact infringed on his copyright. AFP made a motion to dismiss Morel’s counterclaim, but the Court denied it.
To prevail on a claim of copyright infringement, a plaintiff must demonstrate both:
1) ownership of a valid copyright, and
2) infringement of the copyright by the defendant.
Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 108-09 (2d. Cir. 2001).
However, even where both elements of the infringement claim are met, the existence of a license is a valid defense. Tasini v. N.Y. Times Co., Inc., 206 F.3d 161, 170-71 (2d. Cir. 2000). AFP argued that the Twitter and Twitpic Terms of Service granted the news agency an express license to use Morel’s photos and thus did not infringe on his copyright. However, the Court did not accept the argument, finding that the Terms of Service “by their express language […] grant a license to use content only to Twitter and it partners. Similarly, Twitpic’s terms grant a license to use photographs only to Twitpic.com or affiliated sites.” Morel at 6. The Court held that because AFP was not a partner or affiliate of Twitter, it had not proven that it had an express license to use the photos.
AFP also argued that it should be considered a third party beneficiary of the agreement between Morel and Twitter. However, the Court held that the contracting parties must have intended to benefit the third party in order for that party to be considered a beneficiary of the agreement. The Court did not find any evidence that the language of the agreement indicated any intention to confer a license upon third parties, even though the language might have encouraged re-use of any content that is posted. “That language is ambiguous and insufficient to establish on the pleadings that Morel ‘understood that [Twitter] had [the] intent’ to confer a license on other users.” Id.
The Morel Court declined AFP’s motion to dismiss the plaintiff’s counterclaim and found that the photographer could proceed with his copyright infringement claims.
© 2012 Nissenbaum Law Group, LLC
Appropriation artists deliberately copy images and present them in a new version or context. This art form has become a popular form of creative expression. But is it legal?
The United States District Court for the Southern District of New York recently faced that question and determined whether appropriators of images belonging to others are entitled to use the defense of fair use against a claim of copyright infringement. Cariou v. Prince, 784 F.Supp. 2d 337 (S.D.N.Y. 2011).
The plaintiff in that case, professional photographer Patrick Cariou (“Cariou”), had spent six years in Jamaica. After gaining the trust of the Rastafarians, he had been permitted to take their portraits. In 2000, Cariou published a book of his photographs. The book contained those portraits as well as landscape photos he had taken throughout Jamaica. According to the book’s colophon page and his testimony, Cariou was the sole copyright holder of the images that appeared in his book.
The defendant, Richard Prince (“Prince”), was a well-known appropriation artist who had shown his work at several museums. During an exhibit at a hotel in St. Barts between December 2007 and February 2008, Prince showed a collage entitled “Canal Zone (2007)” which included 35 photographs that had been taken from Cariou’s book. Prince painted over some portions of the photos. Some were displayed in their entirety, while others were only partially shown. Prince intended to use “Canal Zone (2007)” as a means of introducing characters he intended to include in a planned series of artworks. Cariou eventually claimed that Prince had infringed on his copyright, but Prince asserted that his works were protected by the defense of fair use.
The principle that photographs are protectable by the our copyright laws is over 100 years old. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884). Cariou clearly possessed undisputed ownership of a valid copyright in the photos.
The Court then considered whether Prince’s use of Cariou’s copyrighted work should be protected as a type of fair use. When determining whether a particular use of a copyrighted work qualifies as fair use, courts will consider four 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.
17 U.S.C. §107.
First, the Court considered the purpose and character of Prince’s use of the photos. It found its purpose to be substantially commercial, and interpreted Prince’s failure to obtain permission (and the co-defendant Gagosian Gallery’s failure to inquire as to whether Prince had obtained permission) to constitute bad faith. Cariou at 350-1. Thus, it determined that the first prong weighed heavily against Prince. In other words, it weighed against a finding that the doctrine of fair use applied.
Second, the Court found that Cariou’s photos were highly original and creative (as opposed to factual or informational). Again, the Court held that the use of such works without permission also weighs against fair use. Id. at 352.
Third, the Court considered the amount and substantiality of the portion of Cariou’s photos used in Prince’s works. It found that, in the majority of his works, Prince appropriated central figures that went to the very heart of Cariou’s works, and that this factor also weighed heavily against a finding of fair use. Id.
Finally, the Court found the fourth factor also weighed against fair use because Prince’s secondary use “unfairly damaged the original market for [Cariou’s] [p]hotos and, if widespread, would likely destroy any identifiable derivative market for [them].” Id. at 353. Because none of the four factors considered supported fair use, the Court found that the defendants were not entitled to the defense of fair use. Id. Accordingly, Cariou prevailed.
The Court’s decision in Cariou provides a framework for how other courts might treat appropriation artists who claim their alleged copyright-infringing behavior should be protected by fair use. This decision suggests that courts are less likely to accept a fair use defense when an appropriation artist produces a highly-commercial work that features the heart of the original work but the artist does not obtain the permission of the original author.
© 2012 Nissenbaum Law Group, LLC
© 2011 Nissenbaum Law Group, LLC
Tales of drug-dealing, jail time and growing up in the ghetto are too common to be considered original elements of a copyrighted work.
The United States District Court for the District of New Jersey recently granted hip-hop artist 50 Cent’s motion to dismiss a suit brought by a plaintiff who sued the rapper for copyright infringement. Winstead v. Jackson, 2011 U.S. Dist. LEXIS 107560 (D.N.J. 2011).
The plaintiff, Shadrach Winstead (“Winstead”), claimed that 50 Cent (also known as Curtis Jackson) (“Jackson”) used words and plot themes from Winstead’s copyrighted autobiography “Preacher’s Son – But the Streets Turned Me Into a Gangster” (the “book”) in a CD/DVD set produced by Jackson in 2009. Winstead asserted that several elements from the autobiography – including jail time for the main characters, committing crimes for money, and the death of a parent – were also present in Jackson’s production “Before I Self-Destruct” (the “film”). Winstead also claimed that portions of dialogue were taken from his book and used in the script of the film.
Jackson filed a motion to dismiss the suit, arguing that Winstead failed to state a claim upon which relief can be granted. The Court granted Jackson’s motion, determining that the elements that Winstead argued he had copyright protection over were so common that they could not be considered copyrighted material. The decision relied on a copyright law doctrine known as “scenes a faire” which essentially means that there are certain elements to a work that are not protected by copyright since they are essential to express the character of the work itself.
To establish a claim of copyright infringement, a plaintiff must establish:
- ownership of a valid copyright; and
- unauthorized copying of original elements of the plaintiff’s work.”
Dun & Bradstreet Software Servs. v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d. Cir. 2002).
Though Winstead was able to prove ownership of a valid copyright in his book, the Court found that he could not prove any copying of original elements from his work. “[G]eneral plot ideas and themes lie in the public domain and are not protected by copyright law,” the Court stated. Id. at 6. “In addition, all situations and incidents which flow naturally from a basic plot premise, known as scenes a faire, are not entitled to copyright protection.” Id.
While the Court acknowledged the similarities between the two works’ characters, themes and settings, it held that these common features have been part of the public domain for some time and have provided the themes for many films and television programs before. “[A]ny common themes of a young male whose tumultuous upbringing leads him to resort to a life of crime and violence in order to gain power and money are scenes a faire.” Id. at 7.
Winstead also argued that Jackson lifted dialogue from his book – including phrases such as “ringing,” “stash,” and “get the dope, cut the dope” – for use in the film. However, the Court also found this language too common to be the protected under Winstead’s copyright. “The average layman, who would be observing these phrases in the context of an overall story or song, would not regard these minute snippets as unique or protectable,” the Court held. Id. at 9.
The Court’s decision is significant because it demonstrates that there are limits to how much copyrighted material is protected. Winstead’s copyright protection over his book did not extend to plot themes and generic language used in it. The Court’s holding gives copyright holders an example of elements in the public domain that are not included within the scope of copyright protection.
© 2011 Nissenbaum Law Group, LLC