Fair Use – Media Tech Law

Copyright, Fair Use, and the Kissing Picture: Storms v. New England Sports Network, Inc.

Posted June 18, 2017 by Andrew Mirsky 0

Recently, a photojournalist, Michael Storms, filed an intriguing lawsuit in the U.S. District Court for the Southern District of New York against a website that published photographs taken by Mr. Storm without his permission and without paying Mr. Storms a licensing fee. The photos were of New York Mets pitcher Matt Harvey kissing Victoria Secret model Adriana Lima at a restaurant in Miami, not long after Ms. Lima broke up with New England Patriots wide receiver Julian Edelman. The pictures were posted on the website of the New England Sports Network (NESN). (The case is Storms v. New England Sports Network, Inc.)

On its face, the complaint is relatively short and generic, but it will be interesting to see the defendant’s reply, whether the network argues that its use of the photos constitutes permissible “fair use,” and the potential effect of the court’s decision on copyright law as a whole.

Under the U.S. Copyright Act, 17 U.S.C. §§ 101 et seq., the “fair use of a copyrighted work, including . . . for purposes such as . . . news reporting . . . is not an infringement of copyright.” While there is no strict formula for how a court determines “fair use”, the Copyright Act (17 U.S. Code § 107) requires consideration of 4 factors:

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
the nature of the copyrighted work;
the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
the effect of the use upon the potential market for or value of the copyrighted work.

Blogs and Writings We Like

Posted March 21, 2017 by Andrew Mirsky 0

This week we highlight 3 fine writers discussing timely subjects in media tech law: Beverly Berman writing about website terms of service and fair use, Leonard Gordon writing about “astroturfing” in advertising law, and John Buchanan and Dustin Cho writing about a gaping coverage gap with cybersecurity insurance.

Hot Topic: Fake News

Beverly Berneman’s timely post, “Hot Topic: Fake News” blog post (on the “IP News For Business” blog of Chicago firm Golan Christie Taglia), offers a simple cautionary tale about publishing your copyrighted artwork on the internet, or in this case publishing on a website (DeviantArt) promoting the works of visual artists. One such artist’s posting subsequently appeared for sale, unauthorized, on t-shirts promoted on the website of another company (Hot Topic). The aggrieved artist then sought recourse from DeviantArt. Berneman (like DeviantArt) pointed to DeviantArt’s terms of use, which prohibited downloading or using artwork for commercial purposes without permission from the copyright owner – leaving the artist with no claim against DeviantArt.

Berneman correctly highlights the need to read website terms of use before publishing your artwork on third party sites, especially if you expect that website to enforce piracy by other parties. Berneman also dismisses arguments about fair use made by some commentators about this case, adding “If Hot Topic used the fan art without the artist’s permission and for commercial purposes, it was not fair use.”

What we like: We like Berneman’s concise and spot-on guidance about the need to read website terms of use and, of course, when fair use is not “fair”. Plus her witty tie-in to “fake news”.

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NY AG Keeps up the Pressure on Astroturfing

Leonard Gordon, writing in Venable’s “All About Advertising Law” blog, offered a nice write-up of several recent settlements of “Astroturfing” enforcement actions by New York State’s Attorney General. First, what is Astroturfing? Gordon defines it as “the posting of fake reviews”, although blogger Sharyl Attkisson put it more vividly: “What’s most successful when it appears to be something it’s not? Astroturf. As in fake grassroots.” (And for the partisan spin on this, Attkisson follows that up with her personal conclusions as to who makes up the “Top 10 Astroturfers”, including “Moms Demand Action for Gun Sense in America and Everytown” and The Huffington Post. Ok now. But we digress ….)

The first case involved an urgent care provider (Medrite), which evidently contracted with freelancers and firms to write favorable reviews on sites like Yelp and Google Plus. Reviewers were not required to have been actual urgent care patients, nor were they required to disclose that they were compensated for their reviews.

The second case involved a car service (Carmel). The AG claimed that Carmel solicited favorable Yelp reviews from customers in exchange for discount cards on future use of the service. As with Medrite, reviewers were not required to disclose compensation for favorable reviews, and customers posting negative reviews were not given discount cards.

The settlements both involved monetary penalties and commitments against compensating reviewers without requiring the reviewers to disclose compensation. And in the Carmel settlement, Carmel took on affirmative obligations to educate its industry against conducting these practices.

What we like: We like Gordon’s commentary about this case, particularly its advisory conclusion: “Failure to do that could cause you to end up with a nasty case of “turf toe” from the FTC or an AG.” Very nice.

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Insurance Coverage Issues for Cyber-Physical Risks

John Buchanan and Dustin Cho write in Covington’s Inside Privacy blog about a gaping insurance coverage gap from risks to physical property from cybersecurity attacks, as opposed to the more familiar privacy breaches. Buchanan and Cho report on a recently published report from the U.S. Government’s National Institute of Standards and Technology (NIST), helpfully titled “Systems Security Engineering Considerations for a Multidisciplinary Approach in the Engineering of Trustworthy Secure Systems”. Rolls off the tongue.

The NIST report is a dense read (257 pages), and covers much more than insurance issues, in particular recommendations for improvements to system security engineering for (among other things) critical infrastructure, medical devices and hospital equipment and networked home devices (IoT or the Internet of Things).

Buchanan and Cho’s post addresses insurance issues, noting that “purchasers of cyber insurance are finding that nearly all of the available cyber insurance products expressly exclude coverage for physical bodily injury and property damage”.

What we like: Insurance is always an important and underappreciated business issue, with even less public understanding of the property and injury risks to (and coverage from) cyber damage. We like how Buchanan and Cho took the time to plow through an opaque government report to tell a simple and important story.

Did the Richard Prince Fair Use Case Just Swallow Copyright Law? Add Some Blue to the Other Guy’s Photo, Call it Fair Use – Really?

Posted May 14, 2013 by Andrew Mirsky 0

Fair use update: I wrote last year about the fair use case in New York involving photographer Richard Prince, where a federal district court rejected Prince’s claim of fair use of photographer Patrick Cariou’s photos of Rastafarians.

Prince appealed his defeat and late last month won a reversal from the US Court of Appeals for the Second Circuit, in New York. The case may not be all that useful guidance for would-be artists on the limits of fair use – more on this below – but more of a legal scrum over what is (or is not) a “transformative” use of a previously copyrighted artwork. Or more particularly, how much a court should get involved in evaluating whether a later user’s re-use of an earlier artist’s work is “transformative” at all.

Copyright from Beyond the Grave: William Faulkner Sues … Woody Allen?

Posted March 1, 2013 by Andrew Mirsky 0

How can Woody Allen infringe the copyright of William Faulkner, who has been dead since 1962? Wouldn’t Faulkner’s works be in the public domain? Turns out … no, and the case illustrates many aspects of copyright law basics. Whether or not Allen’s 2011 film, Midnight in Paris, actually infringed Faulkner’s copyright.

Copyright has expired for all works published in the United States before 1923. 1923 is significant because in 1998, 75 years after 1923, Congress amended the Copyright Act (the “Sonny Bono Copyright Term Extension Act“) such that no new works would fall into the public domain until 2019. In 2019, public domain for works published in 1923 would kick in, with 1924 next, then 1925 and so on. In other words, as to all works from 1923 and later that had not already fallen in the public domain by 1998, copyrights were extended until at least 2019.

E-SIGN and Copyright: Uploading Photos to Website Equals Consent (and Copyright Assignment)

Posted February 13, 2013 by Britnie Morris 0

Does use of a website constitute implicit consent to the site’s Terms of Use (TOU)? And if the TOU provides for copyright assignment, does that use thus constitute a valid assignment of copyright under the federal Copyright Act? Those were the questions last August before the US District Court for the District of Maryland, which granted the real estate multiple-listing service known as “Metropolitan Regional Information Systems” (MRIS) a preliminary injunction against defendant American Home Reality Network (AHRN). The court’s opinion can be found here. The case was discussed in some detail by RIS Media, a real estate technology blog, particularly the role of electronic signatures under the federal E-SIGN Act for valid assignments under the Copyright Act.

The court enjoined AHRN from copying and uploading MRIS’ photographs to AHRN’s website Neighborcity.com. Pamela Chestek, in her blog “Property, intangible”, points out that although the preliminary injunction was granted solely on the claim of infringement of photos in the MRIS database, MRIS had alleged infringement on its entire database.

Copyright of “Public Facts”: Craigslist v. PadMapper (updated)

Posted November 29, 2012 by Andrew Mirsky 0

Craigslist was meant for the common good, or as founder Craig Newmark puts it, “doing well by doing good”. At least, that has been its announced mission since it began as an email distribution among friends. Craigslist kept its mantra through its rise to Silicon Valley stardom, snubbing multi-million dollar buyout offers and fighting attempts to monetize the site along the way.

The physical layout of Craigslist hasn’t changed much over the years. Point your browser in its direction and, like an old friend, you’ll be greeted with the same underlined blue links you’ve known for years. Fans are legion, but so too are critics: Critics see stagnation in this comfort, some of whom have taken matters into their own hands through attempts at innovation. However, as some have already discovered, developing tools to work around (critics would say “enhance”) Craigslist’s simple functionality can invite legal response. Is an early darling of Silicon Valley showing a decidedly uglier side, or is Craigslist still simply looking out for the common good?

This past July, Craigslist filed a lawsuit in the US District Court, Northern District of California, alleging that apartment-hunting site PadMapper and its data exchange partner, 3Taps, unlawfully repurpose Craigslist postings and therefore undermine “the integrity of local Craigslist communities, ultimately harming both Craigslist and its users.” While the complaint parallels Craigslist’s “common good” business model, 3Taps CEO Greg Kidd sees it differently. “We believe Craigslist is acting like a copyright troll,” Kidd recently told AllThingsD. Kidd’s company provides PadMapper an API for data about Craigslist postings that 3Taps gathers via means it claims are not subject to Craigslist’s Terms of Use and that likewise do not violate Craigslist’s copyrights.

This isn’t the first time Craigslist has claimed such violations, including several now-shuttered earlier services built on top of Craigslist’s platform. In July 2010, Newmark took to Q&A site Quora to defend his company’s actions in a case similar to Padmapper’s, saying he did not take issue with sites that do not affect Craigslist’s servers. “Actually, we take issue with only services which consume a lot of bandwidth, it’s that simple,” Newmark wrote.

June 22: Craigslist sends Padmapper a cease and desist letter and blocks PadMapper from pulling CL ads (at least from doing so directly). According to CL’s complaint (filed July 20th), traffic to Padmapper immediately plummeted.

PadMapper claims not to siphon off Craigslist’s servers. Through its partnership with 3Taps, PadMapper accesses a database of Craigslist listings found and organized from search engines including Google and Bing.

July 9: Padmapper re-launches using 3Taps data.

July 20: Craigslist sues 3Taps and Padmapper. CL claims:

Copyright infringement (for the CL site and for CL listings)
Contributory copyright infringement (against 3Taps)
Breach of contract (TOS)
Trademark infringement
Trademark dilution
Unfair trade practices

Perhaps that’s why Craigslist is now requiring users to “expressly grant and assign to Craigslist all rights” to enforce the copyright. Other sites like Yelp! and Facebook only require a non-exclusive license to their users’ content. But even if courts interpret this as a legally binding transfer of copyright to Craigslist, facts, like those in classified listings, often cannot be copyrighted. Therefore, it is possible that details such as an apartment’s price, address and number of bedrooms will not be protected.

This is of course Greg Kidd’s argument. “No Terms of Use can ride roughshod over the fact that there is no copyright in facts,” Kidd says. “Padmapper’s use of exchange posting is not infringing use. It is fair use or free use … of public facts.” According to Kidd, PadMapper could just be the beginning to what could be, “a whole class of use case conflicts if this stands.” Via this interpretation, as Kidd sees it, “a [Craigslist] posting retweeted via Twitter is going to be just as problematic as one through PadMapper.”

This argument inelegantly ignores 2 obstacles under contract and copyright.

Contract

First contract law, by virtue of the binding nature of Craiglist’s TOU as a contract. So, as Craigslist notes in its complaint:

[3Taps and Padmapper] regularly accessed the CL website and affirmatively accepted and agreed to the [TOU] to, among other things, test, design, and/or use the software that allows Defendants to provide their services. Likewise … Defendants regularly accessed the CL website with knowledge of the [TOU] and its prohibitions against copying, aggregating, displaying, distributing, performing and derivative use of the CL website and any content posted on the CL website … and regularly access the CL website and copied, aggregated, displayed, distributed, and made derivative use of the CL website and the content posted therein.

3Taps disagrees: 3Taps cannot be bound by Craigslist’s TOU, since 3Taps never touches Craigslist’s servers to obtain the data it provides via its API. Says Kidd:

The [CL] data in question is indexed by public search engines and is made available in the public domain. One does not have to belong to or even go to Craigslist to find this information on the description, price, and time of availability of a posting. The information is freely available in the public domain and is a fundamental component of transparency of supply and demand and price discovery that are the foundation of free markets.

Craigslist then says that 3Taps’ argument about not directly accessing data from Craigslist is absurd:

3Taps copies all of craigslist’s content – including time stamps and unique craigslist user ID numbers – and makes it available to third parties for use in competing websites or, for whatever other purpose they wish. On information and belief, 3Taps is obtaining this content by improperly accessing craigslist’s website and “scraping” content.

Copyright – Facts and Facts

Kidd’s “public domain” argument – challenging Craigslist’s private ownership of public “facts” – has its own problems. That’s because there are public facts and … there are public facts. For starters, what makes an apartment listing a public fact? Arguably, an apartment listing is a private piece of information uniquely created and formatted by a landlord and Craigslist: How listed, what information is listed, what pricing, etc. Perhaps not the most highly creative of copyright subject matters protected by “original works of authorship fixed in any tangible medium of expression” US Copyright Act (Title 17 US Code), but nonetheless protected by copyright.

No, Craigslist may not be able to protect names and addresses, but it may be able to protect Craigslist’s particular presentation of those names and addresses. And Craigslist makes this very point in its complaint, claiming that 3Taps “displays craigslist’s copyrighted content in virtually identical visual fashion to the manner in which they appear on craigslist.”

August 1: After filing its July suit, Craigslist amends its TOU, telling users they were not permitted to cross-post their sales items anywhere else on the internet:

Clicking ‘continue’ confirms that Craigslist is the exclusive licensee of this content, with the exclusive right to enforce copyrights against anyone copying, republishing, distributing, or preparing derivative works without its consent.

August 5: Craigslist instructs all general search engines to stop indexing CL postings.

August 9: CL amends its TOU – again – to remove “exclusive license” language from its TOS:

Second, Craigslist may be able to rely on copyright arguments similar to those historically made by mapmakers and telephone book publishers, where the compilation of otherwise public facts is itself copyrightable. (See, for example, Feist Publications, Inc. v. Rural Telephone Service Co., 499 US 340 (1991).) This argument, where the unique presentation, design, layout, or formatting give a compiler a copyright edge, still gives scant protection to the component parts, but it can give viability to a legal claim of misappropriation.

Other Arguments – Trademark and Unfair Competition

Craigslist makes other legal arguments, including most notably trademark infringement and dilution claims and California state law unfair competition claims. These are subjects beyond the scope of the present discussion, although they do seem to raise the kinds of issues that the likes of Rockefeller Plaza in New York City deals with: Once a year, every year, the plaza is closed to public access in order to allow its owners to continue to assert their private ownership. Perhaps Craigslist, too, feels some periodic necessity to remind its users that freedom of internet use is not free.

September 24: 3Taps files answer and counterclaim against CL. Counterclaims:

Antitrust
Unfair competition
Interference with economic advantage

From 3Taps antitrust counterclaim complaint:

3taps is not alleging that craigslist acquired its widespread monopoly power improperly – far from it; craigslist should be applauded for bringing online classifieds into the modern age and achieving its initial dominance over various U.S. markets for the “onboarding” (i.e., the process of inputting and uploading factual content on the internet) of user-generated classified ads by those seeking a personal exchange transaction for various goods and services, including apartment rentals, jobs, personal services, general goods, and other sales.

What 3taps is complaining about is how craigslist has maintained (and continues to maintain) its monopoly power in these three related markets. Certainly, craigslist has not maintained this power by competing on the merits. Indeed, for years, craigslist has espoused the classic principles of a monopolist that believed it did not need to compete: a “strategy” of “unbranding,” “demonetizing,” and “uncompeting” —the epitome of a lethargic monopolist. And why not? As an unchallenged monopolist across these various markets, craigslist has generated revenues somewhere between $100-$300 million per year, and that’s without sinking any significant costs into research and development or innovation.

September 24: Craigslist launches its own mapping capability.

Bruce Fryer, an intern with Mirsky & Company, PLLC, contributed to this post.

Pinterest: Fair Use of Images, Building Communities, Fan Pages, Copyright

Posted October 4, 2012 by Andrew Mirsky 0

When using Pinterest (and Flickr and YouTube and Facebook and on and on), what copyright, fair use, trademark and other issues weigh on building communities and fan pages and social media generally? A hypothetical “Company” has plans for its Pinterest “community”, and in particular, wonders about these situations:

Using Images of Identifiable People
Fair Use and Images
Trademarks: When is a “Fair Use” Argument Strongest?
Why Attribution and Linking to Original Sources is Important

3 introductory questions:

Question #1: Someone used to be a paid Company sponsor or spokesperson. They are no longer. Can the Company continue to post a photo of the old sponsor to Pinterest? Short Answer: If the contract with the sponsor expressly permits it, yes. Ordinarily, the contract would specify engagement for limited time, and that would prohibit rights to use images beyond the contract period. But it really depends on what the contract says.

Question #2: Can the Company post a photo of a fan of the Company? Short Answer: Express consent is required, either through a release or the fan’s agreement (whenever the photo is submitted) to terms of service. Exceptions are discussed below.

Question #3: Can the Company post a photo of a Coca-Cola bottle on its Pinterest page? Short Answer: If the use of the image does not suggest (implicitly or explicitly) endorsement or association, then yes.

Can I Print This? 3D Printing and Intellectual Property (Q&A)

Posted September 3, 2012 by Britnie Morris 0

My colleague, Miguel Abaunza, works in design and recently purchased a 3D printer. Miguel started bringing me and my roommate jewelry, some small trinkets and this really cool bulb cover I was immediately curious about the extent of these capabilities: what all could this printer actually print? Miguel pointed me in the direction of a Ted Talk in which Marc Goodman mentions that 3D printers can print in chocolate! Goodman also highlights security risks that these machines may pose as the technology advances and becomes more accessible. I became curious about the implications of intellectual property law in 3D printing.

In this post, I called on Andrew Mirsky to answer some questions I have on this topic. Andrew is an attorney with Mirsky & Company, PLLC:

First some background: 3D printers print objects. After you input a design, the print job yields a three-dimensional figure composed of tightly-welded plastic or metal.

Tootsie Roll vs. Footzy Roll: Clever Marketing or Trademark Infringement?

Posted August 14, 2012 by Britnie Morris 0

As a twentysomething female who likes to dress for success but not suffer without end in the unrelenting DC humidity, flat, practical shoes can offer a sweet reprieve from uncomfortable heels. Rollashoe’s premier product, the Footzy Roll, a ballet-style, compactible slipper can be stored easily for the girl on the go. They’re great to casually slip on after a night out on the town or for happy hour after a day in the office. They’re also edible. Just kidding.

Tootsie Roll seeks to block Rollashoe’s trademark for “Footzy Rolls” in the US Patent and Trademark Office, as Reuters reported last fall. Tootsie, which, as reported in the Chicago Tribune, earned $521 million in 2010, filed suit against Rollashoe, LLC in federal court in Chicago, claiming that Footzy Roll will confuse and deceive consumers and dilute Tootsie’s trademarks.

Fair Use or Just Plain Stealing? “Transformative” Art in a Digital World

Posted February 21, 2012 by Andrew Mirsky 0

A recent New York Times article discussed the case of an artist was sued for copyright infringement after he created paintings and collages based on photographs without crediting or obtaining permission from the photographer.

The artist, Richard Prince, based his works on photographs from a book about Rastafarians “to create the collages and a series of paintings based on [those photographs],” reported Randy Kennedy in the Times.

Then ensued a discussion of the degree to which material must be transformed to fall under copyright law’s “fair use” protection, which would allow use of copyrighted material if, as the article explains, “the new thing ‘adds value to the original’ so that society as a whole is culturally enriched by it.” (The reference is to a 1990 Harvard Law Review article by Federal Judge Pierre Leval. I previously discussed fair use’s 4-prong analysis in the context of photographs and artwork, here and in mashups here.)

What is a “Trademark Use”? Using Other’s Trademarks

Posted October 14, 2011 by Andrew Mirsky 0

What is a “trademark use”? This question comes up in this way: You want to use a trademarked name or brand or logo (not yours). You want to make commentary about the trademark, or simply reference the trademark in some way.

Trademark protections give their owners the right of exclusive use to the trademark, but only when used “as a trademark”. If the use of the mark is for any purpose not a “trademark use”, that use does not fall within the exclusive rights of the trademark owner.

The Good and The Ugly – Trademark Use Examples

Some examples illustrate the point:

1. A magazine story features a photograph of a woman wearing a tee-shirt with picture of a Marvel Comics character. The story is about the woman and her battle with a difficult disease, having nothing to do with the Marvel trademark. The trademark is clearly incidental to the photo and to the story.

2. A cash-for-gold jewelry dealer in Toronto (featured in a New Yorker profile this past week) promotes his business through television commercials featuring the character “Cashman” dressed in a red cape and pair of blue tights and dollar signs on his chest. “Cashman” bursts out of telephone booths to frighten desperate Torontonians into parting with their family heirlooms. The owner of the Superman trademarks felt compelled to ask – nicely at first, not so nicely in the subsequent lawsuit – that “Cashman” stop trading on the Superman goodwill.

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Does Demand Media Really “Suck”? Fair Use and Freedom to Bash Your Boss

Posted August 3, 2011 by Kate Tummarello 0

Kate Tummarello is a Research and Social Media Intern with Mirsky & Company and a reporter at Roll Call/Congressional Quarterly. Follow Kate on Twitter @ktummarello. Andrew Mirsky of Mirsky & Company contributed to this post.

Gone are the days of bashing your boss in the breakroom. Now, colleagues gather online to anonymously air their grievances. A group of disgruntled Demand Media, Inc. employees did just that with their website DemandStudiosSucks.com. Then Demand Media struck back.

Late last month, attorneys for Demand Media, a content production company whose properties include eHow, LIVESTRONG.com, Cracked.com, typeF.com, Trails.com and GolfLink, sent a letter to DemandStudiosSucks.com asking it to remove content that had been copyrighted by Demand Media.

The media company accused the people behind this censorious website of creating and maintaining “a forum in which users can, and do, post and misuse Demand Media’s trademark, copyrighted material, including confidential and proprietary copy editing tests.” The letter also referenced “an internal presentation regarding the company’s business plans”, published without permission on DemandStudiosSucks.com.

Immediately, of course, the letter was posted on DemandStudiosSucks.com.

The next day, a user named “Partick O’Doare,” who has posted the majority of the content on the site, published an open letter addressing the claims made by Demand Media’s attorneys. Although the website removed the content addressed in the letter, O’Doare explained that the site’s creators had not acknowledged any infringement in removing the content.

Instead, those behind the website claimed that their use of the Demand Media content fell under fair use guidelines, specifically protections for commentary and criticism. “Let’s be honest,” the open letter says, “if ever there was a case of unequivocal fair use, this would be it.” A statement which should raise flags to anyone who previously felt similarly.

Fair use is a defense to a claim of copyright infringement, but not other claims. A fair use argument cannot simply succeed on its merits where other legal rights are violated. Context matters. So, for example, as seen in some Facebook “suck site” cases, fair use will not protect against a claim of defamation. Employees who publish company trade secrets and other proprietary information cannot rely on fair use to defend against claims of violations of corporate and employment law.

O’Daire’s letter proudly boasts that the voices behind DemandStudiosSucks.com were fully prepared to defend themselves, citing the fair use cases Lenz v. Universal Music Corp. and Online Policy Group v. Diebold, Inc.
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MediaTech Law

By MIRSKY & COMPANY, PLLC