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. 

US Supreme Court: Copyright Registration Occurs When Copyright Office Registers Copyright

It is not often that the US Supreme Court hands down a copyright-related decision, an unanimous one to boot, and so yesterday was quite a day for US copyright owners and IP practitioners.

The US Copyright Act, 17 U.S.C. § 411(a), states that “registration" of a copyright is a precondition to filing suit for copyright infringement.  Some courts of appeal interpreted “registration” as meaning “filing an application to register the copyright” while others interpreted it as “the Register of Copyrights registers the copyright.”

On March 4, 2019, the US Supreme Court resolved the circuit courts split and ruled that registration occurs when the Copyright Office registers the copyright.  Only after that may a plaintiff file a copyright infringement suit. However, once the copyright is registered, the owner can recover for infringement which occurred both before and after the registration.

The case is Fourth Estate Public Benefit Corp. v. Wall Street LLC.

Justice Ginzburg, who wrote the opinion, noted that registration is not necessary to obtain copyright protection under §408(a) of the Copyright Act.

Justice Ginsburg then wrote about the statutory exemptions to registration before filing suit, such as §408(f)(2) of the Copyright Act, which provides limited circumstances where copyright owners can file an infringement suit before registration. This section was enacted to protect the owners of works having a history of infringement prior to authorized commercial distribution, such as movies or musical compositions. They can file a preregistration no later than 3 months after the first publication.  

Justice Ginzburg wrote that Section 408(f)’s preregistration option, too, “would have little utility if a completed application constituted registration” and that a “copyright owner who fears prepublication infringement would have no reason to apply for preregistration…  if she could instead simply complete an application for registration and immediately commence an infringement suit. “

§411(c) of the Copyright Act provides the owner of a work which is fixed and broadcasted simultaneously the right to file a copyright infringement suit either before or after the work has been thus fixed.

The Court reasoned that “[i]f application alone sufficed to “ma[ke]” registration, §411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous.” It states that:

“In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.”

The Court also found the final sentence of §411(a) to be persuasive as it requires the Register to act before a copyright infringement suit can be filed if the work is not registered: it allows the Register to “become a party to the action with respect to the issue of registrability of the copyright claim.”  Justice Ginsburg wrote that “[t]his allowance would be negated, and the court conducting an infringement suit would lack the benefit of the Register’s assessment, if an infringement suit could be filed and resolved before the Register acted on an application.”

The Petitioner had argued that a copyright owner may not be able to enforce her rights if the Copyright Act’s three-year statute of limitations runs out before the Copyright Office acts on her application for registration. Justice Ginzburg wrote that such “fear is overstated, as the average processing time for registration applications is currently seven months, leaving ample time to sue after the Register’s decision, even for infringement that began before submission of an application. See U. S. Copyright Office, Registration Processing Times (Oct. 2, 2018).”

This case is likely to stimulate a flurry of copyright registrations, which in turn, may slow down the copyright registration process.

Image is courtesy of Flickr user Tony Webster under a CC BY 2.0 license.

Copyright and the US Government Shutdown

I suspect few people have missed the news that the US is currently operating without a federal government. However, some IP enthusiasts may have missed how the US government shutdown is affecting copyright.

So far the most important consequence of the shutdown for copyright has been the closure of the Copyright Office. Since the October 1, the Copyright Office website has displayed the following message:

As the message states, copyright registrations are currently being accepted, but will not be processed until the office reopens. In addition the electronic registration records are not being updated, although the existing records are still searchable.

More recently, the US Patents and Trademarks Office has delayed an important meeting on the issue of copyright reform, citing "complications" due to the shutdown. The meeting on “Copyright Policy, Creation, and Innovation in the Digital Economy” has been postponed from October 30 to December 12. However, comments are still being sought on being sought on the Commerce Department’s Internet Policy Task Force green paper, “Copyright Policy, Creativity, andInnovation in the Digital Economy.” Let’s hope the US has a government by December.