Photographer Claims Versace Removed CMI in Instagram Post of Jennifer Lopez

Photographer Robert Barbera has just filed a copyright infringement suit against Versace USA in the Southern District of New York, claiming that the fashion company did not have the right to publish, on its Instagram account, a photograph of Jennifer Lopez wearing Versace [see here]. [This is the second time in a row I am mentioning J-Lo in a blog post…]

Barbera registered the photograph with the Copyright Office. He did not license it to Versace.

Versace’s Instagram account is used to promote the brand and features many pictures of products and models, presumably taken as part of the company’s marketing and public relations strategy. The account is obviously used as a promotional tool. 

Is Versace in hot cappuccino? 

Copyright Management Information and Moral Rights  

Barbera claims copyright infringement and also alleges that Versace “intentionally and knowingly removed copyright management information identifying Plaintiff as the photographer of the Photograph,” thus violating 17 U.S.C. § 1202(b), which forbids to intentionally remove or alter any copyright management information without authorization of the copyright owner.

Copyright management information (CMI) includes, under Section 1202, the “title and other information identifying the work, including the information set forth on a notice of copyright… [t]he name of, and other identifying information about, the author of a work [and] [t]he name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.”

This is an interesting claim as the Copyright Office has just published its study of attribution and integrity rights in the United States. It addresses the issue of CMI and notes (p.86) that “[i]t is common practice in the digital world for CMI to be stripped from works, disconnecting a work from its authorship and ownership information” and further notes that the provisions of section 1202 “provide a form of quasi-moral rights protection by effectively preserving the names of authors, owners, and other creators in connection with their works.”

In our case, Plaintiff claims that Versace removed the CMI “intentionally, knowingly and with the intent to induce, enable, facilitate, or conceal their infringement of Plaintiff’s copyright in the Photograph. Versace also knew, or should have known, that such falsification, alteration and/or removal of said copyright management information would induce, enable, facilitate, or conceal their infringement of Plaintiff’s copyright in the Photograph.”

Could First Amendment be a Defense?

What about originality? The photograph has been registered and thus was deemed original enough to be protected by copyright. Yet, the pose, the angle, the light, are all quite mundane. What is original in the picture is the striking pattern of the Versace outfit worn by Miss Lopez.

While fashion designs are not protected by copyright in the US, with a few rare exceptions, patterns are protected and the one adorning the cat suit outfit featured in the allegedly infringing photograph is certainly original enough to be protected by copyright. However, Versace could not claim infringement as the picture is protected by the First Amendment: it was taken at a public event, the 2018 MTV Video Music Awards, and Versace used #VMAs as a hashtag. Could posting the picture on its corporate account be protected by the First Amendment? It certainly could be argued.

What about J.Lo.? By thus appearing in the Versace account, dressed in a Versace outfit, her likeness is used for commercial purpose. If this use is unauthorized, she could file a right of publicity suit. However, Versace could then also use the First Amendment as a defense.

However, it is possible, even likely, that the famous singer and actress has an agreement with Versace and that therefore the use of her likeness is authorized. She is one of the #Versacecelebrities, another hashtag used in the post, and has been wearing the brand for years, making headlines sometimes doing so. She was recently nominated CFDA's 2019 Fashion Icon. I won’t write about her in my next blog post. 

Image is courtesy of Flickr user irene. under a CC BY-ND 2.0 license. 

Mr. Enjoy is Mr. Plaintiff (Was he the Boss in E*Trade’s Commercials as Well?)

Gianluca Vacchi is a social media influencer and DJ, who has more than 12 million followers on Instagram. He appeared last year in a commercial (do not watch while drinking) for the Bank of Georgia, Europe, which was so successful that “that many United States residents registered as clients of the bank” (because nothing gives you more confidence than a Santa Claus in an orange satin robe).

While Italian and living in Milan, Vacchi travels around the world to dance on roof tops, DJing, and generally having a good time. He chose Mr. Enjoy as his nickname. After all, as another Italian influencer, who also meddled a bit with music, urged us: “Godiam, la tazza e il cantico, La notte abbella e il riso. »

But Vacchi is not enjoying two of online investing company E*Trade’s commercials, [here is the other one] which were produced in mid-2017, where a middle-aged man, presented as “your boss,” is featured dancing with abandon (with who?)… with scantily dressed women.

Vacchi has just filed suit in the Southern District of New York against E*Trade, claiming “copyright infringement, as well as false endorsement and misappropriation of protectable character, protectable scenes, and image and persona of “the coolest man on Instagram.” Will he be successful? 

Grandpa was a social media influencer 

New York Right of Publicity

New York Civil Rights Law §§ 50 and 51 is the state of New York’s only right to privacy, which is not otherwise recognized by its common law. The statute makes it a misdemeanor to use the name, portrait or picture of a living person for advertising or trade purposes without prior written consent.

The E*Trade commercials are certainly “for advertising or trade purposes.” What is less certain, however, is whether the “name, portrait, or picture” of Vacchi has been used by Defendant.

Protecting the Persona?

“In fact, even a simple Google search for “dancing millionaire” inevitably shows Plaintiff in the top results” (Complaint).

Plaintiff claims a use of his image and his persona.

New York courts have recognized that using a "lookalike" of a well-known personality for commercial purposes is a violation of New York Civil Rights Law §§ 50 and 51. In this case, a lookalike of Jacqueline Kennedy Onassis has been featured in a Dior ad. The court noted that “Plaintiff's name appears nowhere in the advertisement. Nevertheless, the picture of a well-known personality, used in an ad and instantly recognizable, will still serve as a badge of approval for that commercial product.” In our case, Vacchi’s name is not used in the commercial either.

Lindsay Lohan was not able to convince the courts last year either that Take-Two Interactive Software, the developer and distributor of the Grand Theft Auto V video game, had used her likeness and persona to create the character Lacey Jonas (see here and here). But the case was about a video game, not an advertisement, and the court in Onassis v. Dior distinguished artistic from commercial endeavors.

In our case, Plaintiff is a middle aged man, with trimmed grey beard and hair, a toned and tattooed body, and a propensity to take pictures of himself while bare chested.  This is his image, his likeness, his resemblance.

Plaintiff claims that Defendant used a “clone of Vacchi, dancing with women on a boat while DJ’ing: conduct that based upon numerous YouTube videos, photographs, and music videos created and published by Vacchi, has become synonymous with the image and persona,” and describes “the E*Trade Character [as] a heavily-tattooed male with bare torso dancing with a beautiful female companion.”

Vacchi self-described persona is “the coolest man on Instagram,” and he very well may be if cool is defined by sunsets seen from high rise balconies, partying, the beaches, dancing around rooftop swimming pools, and leopard cushions. No coupon clipping for him.

So Plaintiff’s persona could be: man + middle-aged + toned and tattooed body + glasses + dancing + trim gray beard + exotic locales + women in teeny weeny bathing suits. This could also describe an aged James Bond after one too many stirred Martinis led him to the tattoo parlor, or Queequeg if Moby-Dick had shed some blubber and got a bikini wax.

The E*Trade character is a middle-aged  man, with glasses, bare chested, with tattoos, dancing with young women in bathing suits, on a yacht. He wears suspenders, as does Plaintiff sometimes.

It could be argued, as in the Onassis v. Dior case, that “plaintiff's identity was impermissibly misappropriated for the purposes of trade and advertising, and that it makes no difference if the picture used to establish that identity was genuine or counterfeit.” Plaintiff would still need to prove that Defendant used his image. Or maybe it meant to portray the Most Interesting Man in the World.

Copyright Infringement

Plaintiff also claims that Defendant’s videos are infringing derivative works  and that “E*Trade’s commercial is simply a rip-off of a number of videos created and published by Vacchi over the years.”

Plaintiff regularly posts short videos on his Instagram account, featuring him and other persons in exotic locales. He is seen doing less than mundane activities, such as tattooing a female doll (cringe alert on this one), or pedaling on a stationary bike in his private jet. 

Plaintiff did not obtain a registration for these videos before filing suit, because “Plaintiff is a foreign citizen and did not register all of his videos and photos in the United States.“

This is too bad, as the U.S. Supreme Court held last month, in Fourth Estate Public Benefit Corp. v. Wallstreet.com LLC, that a plaintiff claiming copyright infringement must first register the work with the U.S. copyright Office before filing suit. 

Plaintiff’s Instagram videos are probably not original enough to be protected by copyright anyway. The Copyright Office appears to be less and less inclined these days [see here and here]  to register such works, because they are not original enough to be worthy of copyright protection.

The videos feature cliché images of sunsets on the beach, descending the steps of a private jet, big designer bags, having a manservant in livery, leopard cushions, party, party, party, and young women in bikinis. They look sometimes like a Michael Kors ad. Whether they are to be taken with a grain of salt is irrelevant, as they are unprotectable scènes à faire of a “Let’s live in a Jennifer Lopez video” lifestyle (I love that song).

The case will probably settle (alas, may I add, rather selfishly).

Looking Further Under the Airbrushed Hoodie

You may have read on this blog a few weeks ago that Balenciaga America is being sued in the Southern District of New York for having allegedly copied the designs of a New York souvenir manufacturer.

Defendant, Balenciaga USA, had allegedly featured Plaintiff’s designs, a stylized New York City skyline, on a hoodie, a tote bag, pouches and skirts. These luxury models had been designed and produced in France by Balenciaga for its 2017 ‘Balenciaga NYC Tourist Collection,’ whereas Plaintiff’s goods are sold in souvenir shops and airports around New York. 

The case is following its course, and Balenciaga America moved last month to oppose Plaintiff’s motion for a preliminary injunction and an order of seizure. Plaintiff claims that Balenciaga America will be transferring the allegedly infringing merchandise out of the United States and has requested an injunction from the court.

The French fashion house detailed its arguments in a memorandum filed on October 18. It claims that it is holding the 36 products at stake in inventory in the U.S., with no intention to export them, and that the preliminary motion is thus unnecessary. It then goes on presenting its defense to the copyright infringement claim.

The legal standard for preliminary injunction

Section 502 of the Copyright Act gives courts the power to grant temporary and final injunctions in copyright infringement suits.

Before the eBay v. MercExchange Supreme Court patent case in 2006, plaintiffs did not have to show irreparable harm to be awarded injunctive relief, but only needed to establish the likelihood of success of the lawsuit. That changed after eBay v. MercExchange, as the Supreme Court held that a Plaintiff seeking a permanent injunction must show he has suffered an irreparable injury. The Supreme Court further explained in Winter v. Natural Resources Defense Council, Inc. that a plaintiff seeking a preliminary injunction must establish: (1) that he is likely to succeed on the merits; (2) that he is likely to suffer irreparable harm in the absence of preliminary relief; (3) that the balance of equities tip in his favors, and (4) that an injunction is in the public interest.

Plaintiff claims that transferring the products at stake outside of the country would make it more difficult to recover damages for illegal overseas sales. Defendant claims Plaintiff has not showed irreparable harm, and it was merely the importer of the goods in the U.S.  

Defendant quotes Music Sales Ltd. V. Charles Dumont & Son, a 2009 case from the District Court of New Jersey to posit that exporting goods to the U.S. is not infringement under the Copyright Act, unless a predicate act has occurred in the U.S. that is itself infringement under the Copyright Act. Defendant also cited a Second Circuit case, Update Art Inc. v. Modiin Publ’g Ltd., where the court noted that it is “well established that copyright laws generally do not have extraterritorial application.”

Plaintiff does not quote the next phrase in Update Art, which states the exception to the rule, ”when the type of infringement permits further reproduction abroad — such as the unauthorized manufacture of copyrighted material in the United States.” This does not appear, however, to be the case here, as the allegedly infringing designs have been originally designed and produced in France. Selling them in the U.S. does facilitate further reproduction abroad, especially since Defendant wisely pulled these products from the stores.

The copyright infringement defenses

Balenciaga America claims that Plaintiff’s original design is a mere “collage of some of the most well-known landmarks in the New York City skyline” and are not protected by copyright.

These “unprotectible elements” are arranged in a different way than the way they have been arranged by Plaintiff. Balenciaga admits that there may be some similarity in the “look and feel “of both works, but that is because they are both done “in a style that has long been associated with hot rods, graffiti art, and hip hop, a style that is decidedly not original to Plaintiff.” Indeed, hot rod cars are often airbrushed, and both designs mimic this technique. 

As the works at stake contain both protectable and non-protectable elements, Defendant argue that the court must not use the “ordinary observer test,”used by the Second Circuit courts to assess copyright infringement, which asks “whether the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal the same,” but the “discerning ordinary observer test.” This test dos not call for “a piecemeal comparison of each of the protectible elements with its putative imitation, but rather a careful assessment of the "total concept and feel" of the works at issue, after the non-protectible elements have been eliminated from consideration,” Silberstein v. Fox Entertainment Group, Inc.

Defendant argues that both style of the designs are similar only as they “both pay homage to hot rod and graffiti-style airbrushed styles, which belongs to no one (and everyone).” This argument is a bit farfetched, as validating it would mean that no graffiti artists can claim copyright protection for his or her work as the style belongs to no one.

For Defendants, the New York City landmarks must necessarily be used to evoke the city’s skyline and are thus scènes à faire, as “[d]epictions of New York City landmarks and the words “New York City” are stock images and phrases standard in tourist souvenirs.”

Defendant claimed that it arranged these unprotectible elements in a different way than Plaintiff did in its own works, and that when these elements are filtered out the only copyrightable element left is the arrangement of the building, which is different in Plaintiff’s works and Defendant’s works.  

Plaintiff argued in its reply that Balenciaga “had offered no evidence of unoriginality,” quoting Yurman Design Inc. v. PAJ Inc., where the Second Circuit wrote that "[c]opyright law may protect a combination of elements that are unoriginal in themselves.”

Indeed, as explained by the Supreme Court in Feist, “[f]actual compilations… may possess the requisite originality [to be protected by copyright]. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original [to be protected by copyright].”

 Fair use

The first of the four fair use factors of Section 107 of the Copyright Act, the purpose and the character of the use, focuses on whether the use is transformative.

Balenciaga America claims that the designs are transformative, as they offer “as subversive, tongue-in-cheek commentary on fusty notions of propriety in fashion, and emphasizing the beauty in the ordinary.” It explains that the design were inspired by ordinary objects, comparing the process to Marcel Duchamp using an urinal to create Fountain and Andy Warhol painting cans of Campbell soup (he even declared tomato to be his favorite flavor, although this has been debunked).

Defendant argues that the second factor, whether the protected work is factual or expressive, also plays in its favor as Plaintiff’s work merely depicts New York’s trademark. The third factor should be in its favor as well as it only tool, if indeed it took anything, unprotectible elements. As for the fourth factor, the effect on the potential market, Defendant notes that “it is not unreasonable to think that Plaintiff’s sales have increased from the publicity around this case.”

I must admit that Plaintiff’s products must be on every fashionable copyright attorney or scholar’s wish list now. See you at JFK’s gift shop!

Image of the Empire State Building, U.S. Government Work.

Poster from the Hot Rod Girl movie (1956).

Is Richard Prince in a Jam?

We have often written on this blog about the appropriation artist Richard Prince, whose work was at the origin of several copyright infringement cases, including the Cariou v. Prince case (see here, here, here, and here). Copyright bloggers owe him a full bowl of da la jam gratitude. 

Prince is still embroiled in two copyright infringement suits following his New Portraits 2014 exhibition at Gagosian : a copyright infringement suit was filed by photographer Donald Graham (see here) and another by photographer Eric McNatt (see here), both in the Southern District of New York (SDNY). These two cases are Eric McNatt v. Richard Prince et al., 1:16-cv-08896 and Graham v. Prince et al., 1:15-cv-10160. Richard Prince filed last week his two memorandums of law in support of his motions for summary judgment in these two cases, see here and here.

Richard Prince is an appropriation artist. He explained in his motion to dismiss the McNatt case that the New Portraits “continue Prince over 40-year career of using found photos and objects in order to comment on society, through the use of text and recontextualisation.” The New Portraits, reproductions of Instagram posts complete with a Prince’s comment, are each approximatively 41 by 41 inches, as an homage to Andy Warhol who used this format for his portraits, as explained in the McNatt memo.

In the McNatt case, Prince used a photograph of Kim Gordon, taken by Eric McNatt, and which has been published on social media, to create one of his New Portraits works. In the Graham case, Prince used Graham’s photograph of a Rastafarian smoking a joint “which already existed pervasively on the Internet, largely through Donald Graham’s own actions” according to Prince’s memorandum, to create Portrait of Rastajay92. This is a rather odd argument, as Graham, as the copyright holder, has the exclusive right to publish his work as he wished to do, including on the web. This action does not give carte blanche to third parties to copy and use the work without permission.

Did Donald Graham grant an implied license?

Prince argued that Donald Graham had published his work on his Facebook page on a public setting, thus granting Facebook a non-exclusive, transferable license to use the photograph. Prince also argued that Graham did not use any embedded watermarks on his work, had not set any privacy settings for viewing the work, and that he understood that once published on the web, it was forever published on the web.  

Prince argued that he “reasonably interpreted Graham’s conduct as permission to use the [p]hotograph in a new way” and had a “non-exclusive implied license” to use the work, citing the Field v. Google case from the Nevada district court. In this case, the court had found that Google had an implied license to display works protected by copyright in cached links, even though the copyright owner did not explicitly authorize such use. However, the court noted that Field could have used a tag directing Google not to archive the pages, but did not do so and thus had implicitly given Google a license to display his works.

Prince claimed in the McNatt case memo that Eric McNatt and Kim Gordon had posted the original work on their Instagram accounts, and that McNatt still features the photograph on his website without embedded watermarks. The original Graham work had been republished on Instagram by a third party, user Rastajay92, and it is this social media post which was reproduced by Prince, complete with his own comment: “Canal Zinian da lam jam,” an allusion to his Canal Zone show, or, as Prince puts it, a “self-referential allusio[n] to his own artistic biography.” I wrote “da lam jam” on the Google translate box: it detected Arabic as a language, and offered “it did not g” as a translation. Curiouser and curiouser!

Prince’s memorandum in the Graham case argues that his New Portraits exhibition was a “social commentary” and thus a “core fair use principle… expressed through a novel technological and sociological medium and context” and that the forfeiture of the works, as asked by Plaintiff Donald Graham, “would have a chilling effect on the progress of the arts, to the detriment of the public.”

An ode to social media

Prince argued that his use of Graham’s work was highly transformative, because he used what he described as “an austere description of a Rastafarian” and turned it into “an ode to social media.” Prince further argued that the fact that he did not add anything to the original work, unlike in his works in the Cariou case, enhances his fair use claim, not weakens it, because he needed to “authentically replicate in the physical world the virtual world of social media.”

He used similar arguments in his motion to dismiss the McNatt case, that he “imbued what was once an austere depiction, documenting a female rocker in a defiant pose into part of an ode to social media.“

It may be an ode to social media, but it is also copyright infringement. The defense is fair use.

Is this ode to social media fair use?

Prince argued that his New Portraits were a parody of the social media posts as a whole. So it is an ode to social media which is also a parody. A parody is indeed highly transformative, and a highly transformative work is likely to be considered by courts as a fair use of a protected work, under the first fair use factor.

Prince argued that he used the Kim Gordon photograph to comment on social media, about “the whole idea of putting up images on a new platform that was available to anyone, to an entire population” and that artistic purpose was “a world-away from McNatt’s purpose in making the [p]hotograph.”

For Prince, Graham’s sales of his works have not suffered because of Prince’s use and Graham’s notoriety has even been greatly enhanced by Prince’s use, and that thus the fourth fair use factor, the effect on the market, should weigh in Prince’s favor.

Prince also argued that Graham did not have the right to exploit the photograph, as the right of publicity of its subject is governed by Jamaican law, and that therefore any harm done by Prince’s use of the work would harm an “illegitimate market.” Prince used a similar argument in his McNatt memo, arguing that the photographer did not obtain Kim Gordon’s written authorization to use her image, as required by the New York right of publicity statute, other than for their original use, a publication in Paper magazine.

Prince also argued that the second fair use factor, the nature of the copyrighted work, should be in his favor, as the original Graham work was “more factual than creative.” As for the third factor, the amount and substantiality of the work used, in relation to the protected work as a whole, Prince cited the Bill Graham case, in both of his memos, where the Second Circuit held that the third factor can weigh in favor of the defendant even if the work is reproduced in its entirety.

Prince argued that the original Graham work has been cropped and that the remaining work was necessary to serve Prince’s purpose, commenting about social media. He argued in the McNatt memo that Prince used an entire Instagram post, complete with “colorized emojis” and thus drew the viewer’s attention around the image, thus “reducing the artistic or intellectual importance of the photographic image relative to its physical portion of the painting.”

This is quite a fair use battle royal. Copyrights enthusiasts will keep watching, and possibly, cheering.

Image is courtesy of Flickr user (vincent desjardins) under a CC BY 2.0 license.

Licensing Like a Champion (Can it be an Afterthought?)

Fall is back, and, in the United States, that means pumpkin-flavored products and (American) football galore. If you have not yet eaten pumpkin-flavored pop-corn, drunk pumpkin-flavored coffee and watched at least one game of football, well, your neighbors probably consider you to be weird. 

So grab a pumpkin-flavored cookie and read this blog about a recent Second Circuit decision, Spinelli v. National Football League, No 17-0673 (HT Court House News for the link to the document). The case is about copyright licensing, retroactive and royalty-free licensing and a touch (down) of football.

Plaintiffs are seven sports photographers. Defendants are the Associated Press (AP), the National Football League (NFL) and the 32 NFL teams. If you do not know the names of the NFL teams, you can read their complete list in the document (The Falcons! The Steelers! The Forty Niners!)

The photographers filed a copyright infringement suit in 2013 against the NFL and AP in the Southern District of New York (SDNY), claiming that AP had granted the NFL a royalty-free license without permission from the authors of the photographs.

Plaintiffs also argued that the NFL and AP had conspired to restrain trade in the market for commercial licenses of NFL event photographs thus breaching antitrust laws (I will not write about this issue).

Defendants moved to dismiss and the SDNY granted their motion in 2015. Plaintiffs appealed. On September 11, 2018, the Second Circuit remanded the case which is now likely to go to trial.

In order to take and use photographs from an NFL event, one needs to secure a license from the NFL, as such photographs almost always contain NFL trademarks. Getty had the exclusive worldwide right to license NFL’s pictures from 2004 to 2009, and then AP became the NFL’s exclusive licensor.

Plaintiffs had entered into “contributor agreements” with AP which allowed them to access NFL events, and to obtain licenses for the intellectual property contained in the photographs they took at these events. Plaintiffs took thousands of NFL photographs, during games or practices. Some of these pictures feature NFL trademarks, but others did not.

The 2009-2012 NFL-AP agreement

The original agreement between the NFL and AP, which lasted from 2009 to 2012, had granted the NFL a royalty-free license to use “AP-owned” images, but had not extended this license to images taken by non-AP contributors. However a new agreement, entered into in 2012, extended the royalty-free license granted to the NFL to photographs taken by non-AP contributing photographers.

Plaintiffs had indeed provided AP a “perpetual, irrevocable transferable worldwide right and license to reproduce, edit, translate the caption of, prepare derivative works of, publicly perform, publicly display, load into computer memory, cache, store and otherwise use“ their works along with the right to "transfer or sublicense these rights to other entities." This agreement was lucrative for the Plaintiffs, as AP payed royalties when it licensed one of the works. At issue in this case was whether Plaintiffs had thus allowed AP to grant royalty-free licenses to the NFL.

For the SDNY, copyright law gives copyright owners and their exclusive licensees the right to freely grant a license "after the fact" as they see fit, quoting Wu v. Pearson, 2013 WL 145666, at 4: "[T]here is no legal prohibition to obtaining a retroactive license if it is authorized by the rights holder." Plaintiffs had argued instead that, citing the 2007 Davis v. Blige Second Circuit decision, that AP could not grant a retroactive license. In Davis, the Second Circuit had rejected retroactive copyright licensing as a way to cure past infringement.

In our case, the Second Circuit found that even though facts in our case were slightly different than the ones in Davis, the court had to come to the same conclusion. The Second Circuit reasoned that Plaintiffs had the right, before the execution of the 2012 AP-NFL agreement, to sue the NFL for copyright infringement. Therefore, if AP could grant a license to the NFL retroactively in 2012, that right would have thus been extinguished, and “[d]oing so was impermissible, irrespective of whether AP had the authority to issue a prospective license to the NFL starting in 2009.”

The case was kicked back to the lower court

The SDNY had dismissed their claim because the license Plaintiffs had provided AP was as broad as their own copyright in their photos, and “[n]othing in the license require[d] AP to issue only royalty-bearing sublicense.” For the SDNY, the language of the agreement made clear that the rights granted by Plaintiffs to AP, including the right to sublicense, were “broad and unlimited.”

However, the Second Circuit found the 2012 contract to be “ambiguous” and recognized that it could be interpreted as limiting the ways AP can sublicense Plaintiffs’ photographs to third parties. The court remanded the case to the lower court. Litigation is not a contact sport. But you must win the last game.

Copyright’s Conceptual Cabin Fever

Readers of this blog may remember that artist Cady Noland filed a copyright infringement suit last year, claiming that, by reconstructing one of her wooden sculptures which had been damaged, a museum had thus infringed her copyright by reproducing her work and had also violated her moral rights, as provided to her by the Visual Artists Rights Act and Section 14.03 of the New York Arts & Cultural Affairs Law.

Cady Noland had created in 1990 her “Log Cabin Blank With Screw Eyes and Cafe Door” (the Work), made out of wooden logs. It represents the façade of a log cabin, with one open door and two windows, and “[t]wo U.S. flags are an integral part of the sculpture,” according to the July 2017 complaint. The work was created to be displayed outdoors, and after years exposed to the sun and cold of Berlin, the wood used to create the Work had rotted. 

Cady Nolan asserted in the 2017 complaint that she "has continuously owned the copyright to the Work.  An application for registration of the copyright to Log Cabin together with the required fee and deposit material was transmitted to the Copyright Office in proper form and registration was refused.  Plaintiff has complied with the requirements for registration of Log Cabin as provided in 17 U.S.C.  § 411(a), and in accordance with said section will be serving notice and a copy of this Complaint on the Register of Copyrights” (my emphasis).

Indeed, the artist had filed an application to register the Work as a sculpture in July 2017, but this was denied the same month, because the work “lacks the authorship necessary to support a copyright claims” and because it “is a useful article… that … does not contain any non-useful design element that could be copyrighted and registered.”

The following month, Noland requested the Review Board to reconsider this decision and to register her work. This time, the Copyright Office considered the work to be a sculpture and not a useful article (indeed, what exactly is the use of a single log wall?), but refused to register it anyway, as it did “not contain a sufficient amount of creativity either elementally or as a whole to warrant registration.”

In December 2017, Noland requested the Review Board of the United States Copyright Office (the Board) to reconsider the Registration Program's refusal to register her work a second and final time, claiming that the work was original enough to be protected by copyright, and arguing she had made creative choices in order for the work to embody her idea to “construct the front of a house… to showcase the failed promise of the American dream” and that “the selection, arrangement, and combination of elements present in [the] work clearly meet the threshold of creativity required for a work to obtain copyright protection.”

On May 25, 2018, the Board affirmed the Copyright Registration Program’s denial to register Cady Nolan’s Log Cabin.

Defendant in the copyright infringement suit filed a motion to dismiss last April and this month Nolan filed an opposition to the motion. Plaintiff in a copyright infringement suit must prove ownership of a valid copyright, and thus the Board denial of copyright registration is likely to influence the outcome of the current lawsuit.

Why is Log Cabin not original enough to be protected by copyright?

A work needs to be original to be protected by copyright. The Copyright Act does not define what is “originality,” but the Supreme Court defined it in Feist as “mean[ing] only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” The Board quoted Feist, and also Section 906.1 of the Compendium on “uncopyrightable material,” which explains that “[t]he Copyright Act does not protect common geometric shapes, either in two-dimensional or three-dimensional form.” Such shapes must be combined “in a distinct manner indicating ingenuity” (Atari Games Corp at 883). Indeed, while geometric shapes cannot be protected by copyright, their creative arrangement, if original, can be protected.

The Board analyzed Noland’s Work and found that it “does not contain a sufficient amount of original and creative artistic or graphic authorship to sustain a claim in copyright. The Work is a simple representation of a standard log cabin façade with joinery; thus any authorship is de minimis and does not support registration. “

Nolan had argued that, while some of its elements are found in architectural work, it is a sculpture. The Board recognized that argument, and agreed that the work is a sculpture. It added, however, that the Work “is a simple expression of rote designs and representations of a log cabin; the fact that it is not functional or useful is irrelevant to that analysis” and concluded that “[t]he Work thus is a standard representation of a log cabin façade, which does not meet the minimum degree of creativity required for copyright protection.”

Conceptual art and copyright

Copyright and conceptual art have a somewhat difficult relationship and rooted in the necessity to prove their originality and fixation in a tangible medium of expression.

Wildflower Work is such conceptual work of art which has been denied copyright protection. It was a flower garden designed by Chapman Kelley and planted in the eighties in Chicago’s Grant Park In Kelley v. Chicago Park District, the Seventh Circuit found that Wildflower Work was original enough to be protected by copyright, but could not be protected because it “lack[ed] the kind of authorship and stable fixation normally required to support copyright.”

The Seventh Circuit explained that:

“recognizing copyright in Wildflower Works presses too hard on these basic principles. We fully accept that the artistic community might classify Kelley's garden as a work of postmodern conceptual art. We acknowledge as well that copyright's prerequisites of authorship and fixation are broadly defined. But the law must have some limits; not all conceptual art may be copyrighted.”… A garden's constituent elements are alive and inherently changeable, not fixed. Most of what we see and experience in a garden — the colors, shapes, textures, and scents of the plants — originates in nature, not in the mind of the gardener.”

The district court in Kelley had found the work to be uncopyrightable for lack of originality because its design used simple elliptical shapes. However, the Seventh Circuit found this argument to be “misplaced,” explaining that “an author's expressive combination or arrangement of otherwise noncopyrightable elements (like geometric shapes) may satisfy the originality requirement.” 

In our case, the Board cited Satava v. Lowry, a Ninth Circuit case  which explained that “a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

Cady Nolan is not yet out of the woods (sorry).

Image is courtesy of Flickr user Thomas Hawk under a CC BY-NC 2.0 license.

French and Faux? Balenciaga or JFK Souvenir Shop?

You may have heard of high and low fashion styling, where we are urged to wear our diamond tiara with a Zara top.  This story is a twist on the theme, as Balenciaga offers you a way to spend some serious money on a leather bag somewhat similar to plastic bags sold in New York City souvenir shops and airport stores. Copyright infringement suit ensued. The case is City Merchandise, Inc., v. Balenciaga America, Inc., 1:18-cv-06748 (SDNY).

City Merchandise, a New York City company designing souvenirs goods had created a plastic bag featuring the New York skyline over a pink sky, and the words NEW YORK CITY towering above the image. This how Plaintiff’s attorney describes it in the complaint, in legal yet poetic prose:

“Design encompasses a collage of portions of recognized NYC landmarks prominently featured in the forefront with several other buildings interspersed therein. The Design also features an airbrushed hot pink sky, accented with clouds. In addition, large, purple, fanciful cursive letters, unevenly bordered in white, float above the skyline. The letters opulently glisten and fittingly read, "New York City".”

Source: Balenciaga

The design was used by Plaintiff on several models, a tote, a coin purse, which Plaintiff started selling in late 2014, early 2015. This season, Balenciaga sold a bag and a hoodie, featuring a New York skyline over a pink sky, and the words NEW YORK CITY in a font in large cursive letters. City Merchandise deemed these goods to be infringing and filed a copyright infringement suit in the Southern District of New York against Balenciaga. 

Is it copyright infringement?

City Merchandise’s design is registered with the Copyright Office. It is certainly original enough to be protected by copyright (remember, one only needs a “modicum” of originality for a work to be protected by copyright).

Featuring landmark buildings on a design, such as the Empire State Building, the Flatiron Building and the Freedom Tower, along with the Statue of Liberty (technically in New Jersey harbor, but still a New York symbol) is not original per se, but the way the buildings are placed, the use of a bright pink sky, the fanciful font used for NEW YORK CITY, all make the design original enough to be protected by copyright.

Balenciaga’s design features the same buildings, but shown from different angles, and arranged in a somewhat different way: for instance, the Statue of Liberty is at the left in Balenciaga’s design, whereas it is featured at the right of Plaintiff’s design.

Plaintiffs claim that the “total concept and feel” between its original design and Balenciaga’s are identical. Courts in the Second Circuit apply an "ordinary observer test to determine if two works are substantially similar, but apply a “more discerning test” if works have both protectible and unprotectible elements or if, as in our case, copying is not exact. Judges then mustn’t dissect the works into separate components and compare only copyrightable or similar elements, but must instead compare the allegedly infringing design’s “total concept and overall feel'” with that of the original design.

Could Balenciaga assert fair use as a defense? Interestingly, the fourth fair use factor, the effect on the market, would likely be in Defendant’s favor, as using the protected design on goods sold in the luxury category would indeed have effect on the market, but a positive one (I will look for the original bag next time I am at JFK!).

The economic purpose of copyright

You may remember Balenciaga offering for sale its own version of the blue Ikea bag, and Ikea’s humorous response. One of Plaintiff’s exhibits, an article about this episode explains that Balenciaga also reproduced in leather a colorful Thai laundry bag originally made out of plastic. 

Plaintiff’s bags retail from $19.99 to $5.99, while buying Balenciaga’s versions will set you backfrom $500 to $2,000. Does Plaintiff lose its economic incentive to create a design if a third party use it to make a more expensive version? Copyright law does not care about the price of the object, and a Van Gogh is protected as well as a pattern used for airplane interiors.

Balenciaga saved costs by not having to create the design. It probably did not copy the design to save money, to “free ride”, but more likely to comment on “what makes fashion fashion”: is it the design, or is fashion and style in the eye of the beholder?  After all, Balenciaga head designer is Demna Gvasalia, who became famous thanks to his Vetement brand, which once famously sold once a DHL tee-shirt.

Balenciaga seems to use now tourist goods to comment on fashion: it currently sells a Paris sweatshirt, resembling those found at Parisian tourist shops and showed in its Fall 2018 a model wearing a World Food Program sweat shirt and fanny pack. Reverse snobbism?  Copyright infringement? Or both?