court finds that transferring title to mural also transferred (c); VARA and CMI claims against ad also fail

Williams v. Hy-Vee, Inc., --- F.Supp.3d ----, 2023 WL 3602813, No. 4:22-cv-00025-RGE-HCA (S.D. Iowa Mar. 15, 2023)

Williams, a professional artist, was commissioned to paint an abstract mural on the wall of a building located in Des Moines, Iowa.  The contract provided that the buyer would own the “Work” once it was paid for and that “Purchaser and/or building owner may not copyright, reproduce, or merchandise images of the Work without the Artist’s written consent in advance.” The agreement also stated: “The Purchaser will not permit any use of the Artist’s name or misuse of the Work which would reflect discredit on his/her reputation as an artist or which would violate the spirit of the Work.” In the completed mural, William’s initials (“CAW”) and his Instagram username (“@KingCaw”) were included in the lowermost opposing corners.

a picture of the Williams mural

Hy-Vee, a grocery chain, aired a commercial during Super Bowl LIII, which featured portions of the mural. A longer version of the commercial was also posted on Hy-Vee’s Facebook page.

The central portion of the mural is depicted in the commercial, but not the lower right- and left-hand corners of the mural. Williams registered his copyright and sued, alleging infringement, violation of VARA, and §1202 violations. Hy-Vee counterclaimed for declaratory judgment that Williams’s copyright registration certificate for the mural is invalid because Williams knowingly provided inaccurate information to the Register of Copyrights when he filed his copyright registration application.

Williams wasn’t entitled to a rebuttable presumption that he was the copyright owner because he only submitted a copy of his Public Catalog search results, not his certificate of registration. The court found that the only reasonable interpretation of the contract was that “Work” referred to both the physical mural and the copyright. If the agreement was terminated before payment, the contract provided “all rights of ownership in the concept, design, and Work itself” to Williams, but didn’t reserve those rights if it was completed and paid for. “This omission is telling.” Reading the other provisions “to silently reserve to Williams the same rights expressly reserved in the immediately preceding clause would frustrate this objective” by rendering the express  reservation of Williams’s ownership rights in the “concept” and “design” of the mural superfluous. The requirement that the owner couldn’t “copyright, reproduce, or merchandise images of the Work without the Artist’s written consent in advance” wasn’t the same thing as a reservation of copyright. This provision didn’t make the copyright unusable, just restricted some of the rights in a copyright. Williams’s other arguments relying on extrinsic evidence thus couldn’t be considered because the contract wasn’t ambiguous.

VARA: VARA immunizes from liability “any reproduction, depiction, portrayal, or other use of a work in, upon, or in any connection with any item” enumerated in the Copyright Act’s list of items excluded from its definition of a “work of visual art,” including any “motion picture or other audiovisual work.” Thus, VARA’s attribution right did not apply to the commercial.

§1202 CMI removal: Although CAW/the Instagram handle met the definition of CMI, Hy-Vee didn’t violate §1202 by filming only sections of the mural without that CMI. The depiction of the center portion of the mural in the commercial didn’t constitute a “transfer or moving” of Williams’s copyright management information, nor a “change” in the substance of this information. The court didn’t reach the speculative allegation that the CMI might have been cropped in post-production.

Worse for Williams, Hy-Vee made out a prima facia case that the registration was invalid because Williams claimed he owned “all of the rights” in the mural. The court was required to seek the Copyright’s Office at this point, so it didn’t fully resolve the invalidity issue. In response to Hy-Vee’s argument that he knew he didn’t own the rights, he submitted sworn affidavits from himself and the executive director of the organization that hired him to paint the mural, both attesting to their understanding that copyright in the mural was reserved to Williams. But “[g]iven the terms and context of the Agreement, Hy-Vee has ample factual support to allege Williams either knew or was willfully blind at least to the necessity of transferring the right to publicly display the mural to 6th Avenue Corridor.” At the very least, the court reasoned, he’d transferred the right to publicly display the mural, since by its nature it was publicly displayed.

This fact alone provides strong basis for Hy-Vee’s allegation Williams knew he did not own all rights in the mural. It is more than plausible 6th Avenue Corridor would have acquired the right to publicly display the mural—the only way possible to display the mural—along with physical ownership of the mural. Williams’s argument that 6th Avenue Corridor was merely granted a “limited, non-exclusive license” to publicly display the mural is unconvincing. Williams fails to explain how the right to publicly display a mural fixed on the exterior of a building could be non-exclusive. conclude Williams retained ownership of the right to publicly display the mural would create an absurd and inefficient division of ownership.

[FWIW, I think the contract interpretation is wrong but plausible, but this part is just wrong, and continues the conflation between the work and the copy. §109 limits the public display right when someone is publicly displaying a lawfully made work they’ve purchased (without further transmission elsewhere). So it’s perfectly reasonable for Williams to believe he retained the entire public display right, subject to §109 and other limitations provided for by law.]

Holly Herndon and AI in the New Yorker

 Article here. I'm quoted.

Art kerfuffle of the day

 Stuart Semple has a well-publicized, highly entertaining feud with Anish Kapoor. According to the email I received, 

KAPOOR HAS FINALLY UNVELIED WHAT HE'S BEEN DOING WITH VANATABLACK THIS WHOLE TIME

AND IT'S NOTHING BIG OR CLEVER!

Hi Rebecca I always knew this day would come. A day where finally Anish Kapoor would show us all what he needed the exclusive rights over Vantablack for.  After years and years in the making... Little did I expect I'd wake up to mainstream newspapers trying to provoke another chapter of the art war, to promote his art show at the Venice Biennale.

Does his work above look familiar?  THAT'S PROBABLY BECAUSE IT'S ALMOST IDENTICAL TO THIS PIECE I MADE WITH OUR BLACK 3.0 A FEW MONTHS AGO! ... Anyway, Semple is offering his own Biennale in a Box: I've made a replica of his work, that he's unveiling at the Biennale. I want *everyone to be able to have it if they like, because art should be for everyone! *usual exclusions apply My note: I love that his asterisk refers to the "usual exclusions," which constitute his quite unusual exclusions for Kapoor and anyone associated with him.

Rogers question: could this art be explicitly misleading?

One reason that Gordon v. Drape Creative is so concerning is that it reads "explicit" to be something other than explicit--maybe a version of falsity by necessary implication, but one that wants to pose transformativeness as the thing that avoids explicit falsity. So what do we do with art objects like this one?  Is the traditional porcelain decoration sufficient for there to be something more than the McDonald's M present?  The V&A certainly thinks so ... but who should decide?

Li Lihong, McDonald's #1, 2007 (V&A Museum) porcelain, transfer-printed in underglaze blue: the explanation says that it "comments on the recent floods of global brands into China by rendering the famous 'golden arches' of the fast food chain in traditional blue-and-white. While contemporary in theme, Li's piece also reminds us that Chinese porcelain has been a global product for centuries."

False claims of "original" status don't support public interest in disseminating art for anti-SLAPP purposes

Coker v. Sassone, --- P.3d ----, 2019 WL 117467, 135 Nev. Adv. Op. 2, No. 73863 (Jan. 3, 2019)

In the course of interpreting the Nevada anti-SLAPP law, the Nevada Supreme Court says some things about the relationship between counterfeits that might easily be taken out of context and applied to any copies; I hope future applications heed its careful language.

Sassone is an artist and painter who has created numerous works of art, but never made original, signed lithographs. When he saw such advertised, he sued Coker, alleging that the copies being sold were counterfeit and that his signature was forged. Coker filed a special motion to dismiss under NRS 41.660, the state anti-SLAPP law, arguing that dissemination of artwork to the public is expressive conduct and is in the public interest. The district court denied Coker’s motion, finding that Coker failed to demonstrate that his conduct was “a good faith communication that was either truthful or made without knowledge of its falsehood,” one of the statutory requirements for anti-SLAPP protection. The Supreme Court affirmed, conducting a de novo review.

Under Nevada law, district court considering a special motion to dismiss must undertake a two-prong analysis. First, it must “[d]etermine whether the moving party has established, by a preponderance of the evidence, that the claim is based upon a good faith communication in furtherance of ... the right to free speech in direct connection with an issue of public concern.” At that point, “the burden shifts to the plaintiff to show ‘with prima facie evidence a probability of prevailing on the claim.’ ”

Only the first part was at issue here.  An anti-SLAPP movant  “need only demonstrate that his or her conduct falls within one of four statutorily defined categories of speech, rather than address difficult questions of First Amendment law.”  One such category is: “[c]ommunication made in direct connection with an issue of public interest in a place open to the public or in a public forum ... which is truthful or is made without knowledge of its falsehood.”  The truthful/good faith part was the problem here. Coker relied on his declaration that he bought the lithographs from a bulk art supplier and never personally created any copies of the artwork.  However, Sassone clarified that his complaint was based on Coker’s representation of the lithographs as originals. To take advantage of this category, “Coker would need to provide evidence persuading this court that at the time he advertised and sold the lithographs online, he believed that they were originals and, thus, advertised them as such. Tellingly, Coker has made no such statement. Nor has he provided this court with any evidence suggesting that he believed that the lithographs were, in fact, originals.” Thus, Coker failed to make the requisite showing.

In addition, Coker argued that his conduct was in direct connection with an issue of public interest, “widespread access to creative works.” However, Sassone wasn’t challenging “the mere dissemination of his artwork, but Coker’s description of the counterfeit works as originals. In this respect, Sassone acknowledges that had Coker copied Sassone’s works and sold the copies while disclosing them as such, Sassone would have no basis for his suit. We find this distinction imperative in concluding that Coker’s conduct was not made in direct connection with an issue of public interest” (emphasis added).

Under the governing law, which is statutory and not constitutional, and which is guided by similar California law, (1) “public interest” isn’t the same as mere curiosity; (2) a matter of public interest should be “of concern to a substantial number of people”; (3) there should be “some degree of closeness between the challenged statements and the asserted public interest—the assertion of a broad and amorphous public interest is not sufficient”; (4) the focus should be the public interest “rather than a mere effort to gather ammunition for another round of private controversy”; and (5) communicating something to a large number of people doesn’t alchemize it into a matter of public interest.

Here, (3) was lacking, as Coker failed to demonstrate how false advertising and the sale of counterfeit artwork was “sufficiently related to the dissemination of creative works.”  Stretching (4) out of its origin (to address the libel law scenario in which people are saying nasty things back & forth), the court also found that Coker failed to show that the focus of his conduct “was to increase access to creative works or advance the free flow of information. Without evidence suggesting otherwise, we conclude that his focus was to profit from the sale of artwork, and that increased access to creative work was merely incidental.”  [This is very troubling standing alone: a lot expressive activity, including online, is done for profit, and its content could easily be called “incidental”—at the very least, this idea should be rejected where a profit-seeking movant says that the content was deliberately chosen as content that deserved dissemination, though Coker apparently didn’t do that here.]  The conclusion was still limited: “we cannot conclude that selling counterfeit artwork online, while advertising it as original, is related to the asserted public interest of dissemination of creative works.”

Maloney v. T3Media, Inc., 853 F.3d 1004 (9th Cir. 2017), was not to the contrary. Maloney upheld the grant of a media company’s anti-SLAPP motion after the company was sued for distributing unlicensed photographs of NCAA student-athletes. The Ninth Circuit held that the activity was in the public interest “because the photographs memorialize cherished moments in NCAA sports history, and California defines ‘an issue of public interest’ broadly.” But Coker didn’t explain how sports memorabilia related to art. And Maloney didn’t justify extending the definition of “an issue of public interest” to include “the advertisement and sale of counterfeit artwork as original.” Whether this was expressive activity under the First Amendment was not relevant to the interpretation of the anti-SLAPP act.

2017 IPSC Conference at Cardozo School of Law

Usual disclaimers; there were lots of overlaps where I had to make tough choices, and I favored presentations where I hadn't previously commented on drafts.

Day 1 Breakout Session I

Trademark Doctrine

Mapping Confusion – Mark. P. McKenna & Rebecca Tushnet

Problem with LOC test.  Courts use the multifactor test.  Developed for a particular purpose: infringement in cases that didn’t involve directly competing goods, but related goods; and overwhelmingly in word mark/logo cases.  They’ve become a multipurpose tool in every sort of TM case, regardless of the theory of confusion and regardless of context.  One reason that happened is that 20^th c. courts collapsed a whole bunch of different forms of unfair competition claims into TM w/o much consideration of nuances.  Among other things—papered over significant conceptual differences b/t types of claims. Lost sight of use as heuristic, rather than end in itself.  Detached from sense of what they’re supposed to be measuring.  At the end, court shakes a magic 8-ball and tells you which factors matter.  7^th Circuit cases: reason, reason, reason, conclusion.

The LOC test is supposed to be measuring something other than itself. When it doesn’t measure that thing, it’s become detached from its conceptual anchor. Cts implicitly understand that and may truncate the test or abandon it altogether (Rogers/nominative fair use).  That seems awfully ad hoc.  What is the theory about which factors should apply when?  What is the theory for which theories of infringement should be used?  Cracker Barrel restaurants; Kraft’s preexisting processed cheese product Cracker Barrel.  Raises questions about priority in different markets, but 7^th Cir. treats it in conventional source confusion ways—whether people will think it’s the same thing as the restaurant, then says that restaurants differ from cheese. Entirely ignores co-branding (e.g. TGIF frozen foods)—straightforward sponsorship confusion claim. Can also see this in IIC cases or reverse confusion—Gibson guitar—court just says we won’t go there b/c it scares us; could swallow up the rest of confusion b/c in most case it’s reasonable to ask whether some people might wonder about source when they saw a thing.

Paper attempts to do descriptive mapping: you say LOC is the test for infringement, but in fact you’re not doing that.  Sometimes we can justify that—NFU.  But it’s not just theories of infringement but also context—trade dress cases differ from word mark cases, especially in product configuration—increasing emphasis on labeling, contextual aspects that don’t show up in other cases.  Prescriptive: whether it makes sense to explicitly break apart some other categories.

Examples: sensible to say we ought to treat trade dress cases differently, for the same reason we would’ve once treated them as unfair competition claims.  Ought to treat them differently from word mark and logos; we’ve lost something by refusing to consider ontology (at least claiming to).

RT: Rogers as proof of concept.  You don’t need and in fact don’t have a unitary likelihood of confusion test—the 2d Circuit’s recent treatment of nominative fair use notwithstanding.  One payoff: break out trade dress again, not in protectability but rather in infringement.

Dan Burk: is this a paper about LOC or a paper about how courts do things?  It could be said about Fed. Cir. and doctrine of equivalents, or 9^th Cir. and idea/expression.  This is what courts do w/tests.

McKenna: it’s about confusion too—how we ought to think about confusion assertions.  Right now P picks theories of confusion and one sticks (maybe), as if there’s nothing about those theories that fits a particular pattern of case.

Q: Restatement of TM?  After claim preclusion case, having PTO issue studies/working papers about how they might want confusion issues analyzed in different contexts—litigators might have different perspective.  Institutional way of thinking.

McKenna: that’s a bigger Q even than this paper. Believes should be done by courts, in part b/c Congress would not do well. Common law process has produced lessons that have been ignored/forgotten; we are trying to catch the patterns. Don’t want to let TM Ps tell us what they want.

Jennifer Rothman: Instead of unitary tests, we need lots of different tests?  Do we need a unitary concept?  We lose sight of what we’re actually trying to figure out, which is whether consumers are going to be confused [RT: and act on it]. Could more tests worsen that?  Second, you throw NFU and Rogers into the bucket, which are defenses not prima facie case—even if it’s confusing, we might let it go.

McKenna: Rogers is a nice example. What courts have done is recognize pattern of cases—deviate from LOC factors and ask a different set of questions, doesn’t bear much relationship to LOC multifactor test. It’s not a defense; it’s a mode of analysis for a particular type of case.  That’s not the only example, but there are other patterns and we should make that explicit. Part of the cost of using the multifactor test is that we have obscured that.  And it has also obscured, confusion about what?  Let’s be more careful about what we’re trying to measure and test.  Not about proliferation of tests but sometimes truncating the factors. This analysis might lead more naturally to double identity—same mark and same goods, no point in doing LOC test.  Old tests: only thing they really measured was similarity of marks, b/c competition was required. The LOC multifactor test was created because that got blown up. There are pockets that demand different approaches.

Jake Linford: Error costs v. administrative costs.  Do you approach this is concreteness about deviating from multifactor tests, or do you want offramps for different issues, like IIC or post-sale confusion.  You may have to wait for courts to follow things like Kozinski’s NFU test. Which courts should be the innovators?

McKenna: not the 7^th Cir.  Functionality law has crystallized around a pretty clear set of rules (except Fed. Cir.).  Most cases now have converged on results, w/slightly different terminology. This can happen and in some contexts is happening. We should build some conceptual coherence about it so it’s less ad hocery.

Graeme Dinwoodie: One thing that happened w/double identity was collapse into confusion analysis, but w/burdens of proof. Maybe what it highlights is whether you want to categorize types of case by type of use or by reference to the type of harm at issue. If you do the latter, which might be what IIC is about, you might have a vehicle in Lexmark for doing that in the courts. 

McKenna: There’s overlap in type of use/type of harm, but we’re trying to do both. We shouldn’t pretend that all assertions of harm are the same.

Deborah Gerhardt: type of mark too, descriptive v. suggestive?

Copyright Doctrine

Copyright’s Transformation – Glynn S. Lunney, Jr.

Analog drove a lot in © that we don’t even think about today: natural monopoly economics predominate b/c of costs of distribution. Digital era: no longer true.  Example of duration: book would be distributed and then go out of print. Duration didn’t matter b/c the book wasn’t going to be printed again. Similarly w/derivative work. High capital costs to make one film from a book. Public performance: broadcasting networks had limited bandwidth. Digital changes the high fixed costs/low marginal costs of natural monopoly environment.

All the re-users were natural monopolies—broadcasting networks.  License fees are not passed on to consumers: TV station needs license from ASCAP/BMI, that won’t change the number of ads per hour they run.  Derivative works licensing costs to author won’t change cost of movie ticket. A prospect theory of © made sense: assign rights to initial owner and allow them to decide on exploitation.  Without a natural monopoly, © itself becomes the monopoly. The reason we only have a couple of digital performance services is b/c there is a DPR and you need permissions from lots of © owners. We almost had widespread webcasting, but we don’t.  Films: took 40 years to get a good Star Wars sequel after Empire, but for the Long Island Lolita case we got 3 films quickly, each from a different person’s perspective.

Prices of 50 best books from 19^th c/20^th c.  In paper world, average cost was $9/copy for © works, a bit lower for not-in-©.  For digital, average cost was $10 for ©; $0 for not-in-©.  Electrons cost less than trees but consumers are still asked to pay more (transferring their surplus). Getting less (no right to transfer, give to library) but being charged more.

Value-based v. cost-based pricing. Imagine a world w/just 2 products, food and music.  Imagine: each consumer has $100 endowment and identical preferences, and cost of each is $10. If everything is cost-based, then consumers spend $10 on food and $10 on music and keep $80.  If music is value-based while food remains cost-based b/c it’s competitive market, consumers will have to pay $90.  If society gets wealthier and consumers have $120, all that value goes to the industry. © is thus a tax on the full value of everything created by society. What happens if food technology improves and becomes cheaper—do farmers get to keep the surplus? No, b/c it’s competitive/cost-based market. That money goes to the music sector too.

Result of digital age: overestimate social cost of lost incentives and underestimate social cost of lost access.

In the 90s, when we gave the music industry all that money, we don’t see response to incentives we would have expected under conventional theory.

RT: Wouldn’t that tax on innovation still exist if food were competitive regardless?  It goes to consumers or music industry.

Lunney: yes; he’s just trying to point out what it really means to say that the value-based pricing is fine, you can just charge what the market will bear.

Q: if people save instead of spending, does that factor in?  What about infringement factoring in, where people refuse to pay and use other means? Does that make it more like cost-based?

Lunney: I’ve set it up as perfect price discrimination by having step demand function and uniform preferences; in the real world no value-based system works that way and some will be more effective at price discrimination than others. So some will remain in consumers’ pockets.  There’s no cap on how much value-based industries can capture in the model, whereas in the real world you can’t.  [Also b/c in the real world eventually the peasants will revolt, which has some conceptual relationship to torrenting.]

Rosenblatt: demand issues—insatiable hunger for more Star Trek stuff, but maybe not for more copies of a particular Star Trek movie.  Can you account for that?

Lunney: that’s about the costs of licensing, which are treated as if they were still analog.

Incentivizing Conceptual Art Through Social Norms—Guy A. Rub

Multiple copy model (Harry Potter) and single copy model (Guernica).  Books have to control copying b/c this is where the money is made, whereas Picasso’s money isn’t in copies; copies are inferior substitutes, so all he needs is personal property law, not copyright law.  Conceptual art is somewhere in the middle.  Definition: “Art in which the concepts or ideas take precedence over traditional aesthetic concerns. This means the idea is important but the execution is a perfunctory affair.” Value is opposite place from where © locates it.  MOMA paid a lot for Duchamp’s shovel (In Advance of the Broken Arm)—no different to the art world than paying a lot for Guernica.  What do you do if there’s no specific object attached to the work of art?  Consider Felix Gonzalez-Torres, Untitled (Portrait of Ross in L.A.) (1991): It’s instructions.  175 pounds of cellophane-wrapped candies, visitors invited to take candy, museum replenishes the taken candies every day.  It has a meaning: 175 pounds was the weight Ross, his partner, was when he was healthy and not dying of AIDS; the candies are the diminishment of the disease.  But what color, shape, size is the work? None of this is defined.  Can be piled in a corner, put on the floor in a rectangle, used to form a line that encircles the museum.  Where is the © protection, even setting aside the fixation issue?  None of it is protected.  What does he sell? He sells the idea.  A similar work by the same artist sold for $8 million.  What did the museum buy?  Not the candies, and not the ©.  Nonetheless, descriptions do bear © notices in the name of the Felix Gonzalez-Torres Foundation.  The foundation claims to own © in “all works by Gonzalez-Torres” (some of his work has more physical components).

Curators say: these works are “owned,” typically by a museum, but it’s difficult to explain what is owned. They wouldn’t imagine presenting them w/o a lending agreement from the museum that “owns” them. Otherwise this would be “fake” or “forged.” Even though it’s the curator at the “borrowing” museum that decides the shape and arrangement of the candies.  In addition, get permission from relevant artist/foundation. Lending museum generally requires it, and even if not, we will do it. A “heavily inspired” work doesn’t need any of this. If the level of copying is artistically justifiable (“if it’s good”) we won’t ask for permission—curators even had a difficult time understanding the question.  “Copies” by individuals are sometimes perceived differently.

Artists have weapons in their arsenal to control works w/o law—Richard Prince says he doesn’t his like his 1980s work any more, doesn’t represent him as an artist. Some museums won’t show it any more, others will.  Lost at least some value.  He created a work for Ivanka Trump, then disowned it. 

Takeaways: strong gatekeepers/strong enough social norms: art world create a de facto in rem right in public ideas—private ordering steps in, but it mimics legal language of ownership/licensing.  Thin and flexible right, doesn’t seem to cover personal copies or derivative works.  The museum trusts the foundation of Felix Gonzalez-Torres b/c the person who runs it knew him well. Notion of exhaustion isn’t followed; artist and foundation are keepers of authenticity. Legal rights from VARA are limited but powered by community norms. Artists have leverage over “property” owner.

Q: What about the story behind the art? What gives it meaning is the reason that the candies are there and that they weigh 175 lbs. Isn’t that protectable expression?

A: I would push back on that. Those are facts. 

Q: isn’t the candy the expression of the story?  Undefined, but still.  The story that goes along w/it could limit the explanation others might offer.

A: context gives it power, yes

RT: Conceptual appropriation art: Did you ask them what would happen if I titled a pile of candy “After Felix Gonzalez-Torres”?

A: Asked them about appropriation art, though not this precise question.  They said they were happy with having appropriation art in their museums, so if it met that definition they’d be fine w/it.

Q: what would be the advantage of copying w/o permission?  It wouldn’t necessarily allow them to charge less for admission.  What happens to the rogue gatekeeper?  Will donations collapse?

A: they’d excommunicate the rogue. They’d say this isn’t art.

Perzanowski: Do they think they’re following the law?

A: Talking to their lawyers is next step, but his sense is that yes, they think they’re using legal concepts. [Which is consistent w/other things we know about how people tend to think that the law is what they think is just.]

Revisiting (Moral) Rights for IP-Wronged Music Vocalists—Tuneen E. Chisolm

Followup to earlier paper about ownership interests of music vocalists—seen up close inequities that are visited on vocalists because of industry practices/©.  This piece looks at moral rights justification for proposed © solutions.  Can they fill the gap for absence of moral rights protection for non-visual artists.  It’s a contract issue, but also a bargaining power issue.  Different rights for sound recordings; non-economic inequities from involuntary associations, such as political campaigns, advertising, sampling, objectionable soundtracks.  ROP: Hasn’t worked for vocalists when their actual recordings were used under license.  Could address inequities w/moral right of integrity, but also wants to explore whether © could do the job if © protected a fixed performance as an applied composition, w/vocalist as author & full bundle of rights, subject to license but not assignment.  Require consent from vocalist as author to create derivative works.  Practice of stripping out parts of sound recording to have only the voice—but the work is intended as an integrated whole; would require use of the integrated whole, consistent w/idea of what joint work is in the first place.

[This paper has an interesting dialogue w/Lunney’s paper.  Why would a vocalist still sign these contracts in the digital age?  And I don’t mean to suggest that they’re necessarily foolish to do so! Maybe we still have some non-© chokepoints based on legacy industry structure? What would you say to someone who claims that digital distribution will solve your problems of bad contracts.] [Not sure these treatments of uses in advertising are inequities: if someone owns the © in any work and licenses it for ad use, the non-owner creator is out of luck, right? Maybe a practical difference in recognizability]

A: use counter to vocalist’s personal values.  Digital simply hasn’t changed the inequities to date. The labels are consolidated into 3; at the end of the day because they monopolize a lot of distribution, artists still sign w/them.  Independent route is harder, costly to get your music heard above the fray.

Transformative work of the day, Jenny Holzer edition

The Toast offers us Baby Jenny Holzer.

IPSC: Other IP

Other IP  [Insert wry commentary about "fringe" fields like advertising law]

 

Sarah Burstein, The University of Oklahoma College of Law

Reviving Ornamentality 

 

Fed. Cir. killed the doctrine.  Statute says new, original, and ornamental designs can get a design patent—word has been in the statute from the start.  What now gets a design patent does not necessarily fit with assumptions: design patent for a “cage spinal implant.”  Or a “connector,” where the only claim is the interface with other parts of the connector to a computer.  Fuzzy slipper (no infringement but valid). 

 

Is the PTO asleep at the wheel? No, the problem is the Fed. Cir.  Regional circuits tended to have “dictated by function” as floor + something more—beauty, visual appeal.  Fed. Cir. has destroyed that.  (1) Ornamental is the opposite of functional.  (2) Thus ask whether design is primarily ornamental or primarily functional.  (3) Won’t choose the latter unless there are no (good) alternatives.  Clearly wrong: ornamental is not the opposite of functional.  A cup handle in the shape of a dragon can be both functional and ornamental.  They’re just different aspects.

 

And it’s not just about channeling.  Should the trade dress functionality requirement be the same as for design patent?  Apple v. Samsung: we use the same word for very different concepts, and should differentiate them further. In trade dress we want to protect real utility patents; don’t want useful design locked up. That’s part of ornamentality, but not all.  Some say the only good reason not to grant a design patent is to protect the utility patent system.  Rethink ornamentality.

 

The whole concept: make this the visual part, the unique/signature requirement of design patent; doesn’t appear in any other regime of law.  Material visual contribution to the art, using whatever aesthetic you want—has to be plausible that consumers would care. Traditional decorative arts = presumptively material.  Fed. Cir. allowed the spinal implant to be patented b/c the doctor would see it.  But the doctor has no reason to care.

 

RT: Really like the project. (1) If ornamental isn’t the opposite of functional, then where is the statutory basis for excluding functional designs from design patent?  (2) Why shouldn’t the utilitarian functionality standard be at least as broad in design patent as in TM?  Is your standard for patentability a requirement of aesthetic functionality? (Which might itself help serve a channeling function away from TM.)

 

A: (2) It sort of is.  That is what design patents are for.  (1) Ornamentality takes care of that. You have to care about it because of how it looks, not because of how it works.

 

Q: is it necessary to jettison the utilitarian component as much?  While the connector if functional, it also looks sleek and cool.  You buy the system because it all looks cool.

 

A: but it doesn’t have to be.  Apple wants it that way, but that’s a key issue with spare parts.

 

Q: Two formulations: one where the consumer is motivated to purchase, v. one where “do consumers care?”  The former wipes out a lot of elements that might be important—a Mercedes key looks really cool, as part of the whole design of the car.

 

Lisa Ramsey: Line drawing: who do we ask?  Industrial designers?  End consumers? 

 

Betsy Rosenblatt: Entire market value rule in patent asks a similar Q, why do people buy.  Ends up being very difficult to draw these lines—probably equally difficult in yours.

 

Q: wouldn’t this be redundant w/©, given the history of the relationship between the two? One of the reasons for design patent’s desuetude might be the expansion of ©.  Doesn’t seem like they became popular again until Fed. Cir. enabled them to do something with them that they couldn’t do with ©.

 

A: it’s not good that you can go under ©’s low bar.

 

Q: British case, Henshire v. ?, 10-12 judges talked about what they saw as artistic craftsmanship.  That was something that developed as a © category, in the background of Ruskin’s philosophy of art. Unworkable, but you still have design protection, to fill the gray area of functionality and aesthetics.

 

RT: Materiality jurisprudence can fix your problem of linedrawing!  Materiality is willing to judge based on wholesale ideas—this is the kind of thing that sells products of this type—rather than difficult individualized determinations.

 

Q: is there a difference between lock-in—things you have to buy—and not.  Also difficulty of competing without copying—costs of designing around.  “Material” in patent context immediately brings to mind inequitable conduct, and that’s a sticky idea for patent lawyers.

 

Q: Bleistein says you don’t have to make aesthetic judgments when looking at things that are inherently aesthetic, and you seem to agree, but I think that’s difficult/impossible. An aesthetic failure is an aesthetic move.

 

Yolanda King, Northern Illinois University College of Law

The Inadvisability of Nonuniformity in the Licensing of Cover Songs 

 

Copyright Office recommends change in 115(a)(2): compulsory license includes ability to make arrangement to conform it to style of performer but can’t change fundamental nature or melody and isn’t copyrightable as a derivative work w/o consent of copyright owner.  Much criticism of this, but CO recommends that licensing of cover songs in various formats be changed.  Physical format = subject to §115.  But if you’re going to create a cover and disseminate it in digital format—download, streaming—then it shouldn’t be subject to §115. 

 

Her piece analyzes the recommendations.  Most of the report is about harmonization, including in the music licensing marketplace, e.g., general public performance right for sound recordings. Here, they’re treating uses differently—disharmonization.  Change in music consumption: physical formats are predicted to disappear.  Which means digital uses will take over, not subject to compulsory licensing. Very strange recommendation; why not just do away with compulsory licensing if compulsory licensing is so bad?  Burden on creators: most creators of cover songs will be distributed digitally. 

 

Why would the CO do this?

 

Q: this sounds like politics, not logic. Want to know who was doing the lobbying.  May be available information.  (FOIA?) [But this doesn’t make as much sense as dividing terrestrial from digital radio, because almost everybody who makes physical records also sells them digitally.]

 

Q: sounds like a foot in the door—first you get digital, then you argue that digital only is unfair.

 

Q: huge potential deadweight losses in speech, b/c musical © owners want to extract rent; opportunity to get rents out of people who currently aren’t paying—people have been relying on that right for 100 years. 

 

A: Prince is an example: Prince would never license covers.  Unlike the rest of the report, which includes support and discussion, this change is proposed without much explanation/citation.

 

Rosenblatt: Some artists are deeply offended by the cover right.  That lobby is very loud in the conversation.  Look not just at ASCAP/Harry Fox but Tresonas of the world: seeks out high school show choirs & tells them to pay for custom arrangements.

 

Mira Sundara Rajan University of Glasgow – CREATe

Of Murals and Morals: Recent Art Controversies and What They Signify for the Visual Artists Rights Act (VARA) of 1990 

 

Nearing maturity—what’s happened?  Works themselves: artworks/cultural property represent a key interest.  Artists/creators have separate interests.  Owners of artworks; property owners—owners of buildings where artworks are situated.  The public as a separate interest holding group.

 

Required to implement Berne Convention.  Protection of artists is weak compared to other countries.  But also strong in some respects.  Strong preservation of artworks. 

 

What’s special about VARA? Destruction is generally prohibited, which is actually controversial in moral rights generally. Money damages play an important role and can be large: compensate the artists; compensate the public/cultural heritage loss.  Confusion about how to balance artistic interests with private property ownership.  Potential for radical action in the public interest, drawing on the ancestral power of VARA.

 

Kent Twitchell, $1.1 million for painting over his Ed Ruscha mural. Compare France, where in the Hugo case 1 Euro was awarded, as symbol.  But can money damages adequately compensate for the destruction of the work?  5Pointz controversy: court clearly says that they can—a case involving the “UN of Graffiti,” NY’s “Graffiti Mecca.”  Painted over by many artists over time.

 

US law is almost unique in destruction prevention (India also prohibits that) but requires works to be of recognized stature.  Amar Nath Sehgal v. Union of India (Delhi H.C. 2005)—mural damaged when being taken down for move to another site.  Damage to work occurred in 1978—wheels of justice grind slowly in India. Court: Moral rights exist in works of art if they acquire the status of cultural heritage of a nation, given the various int’l cultural property conventions India signed. 

 

5pointz: site as a whole is not an artwork; ephemeral nature may be important.  “Recognized stature”: under Carter v. Helmsley-Spear, must have (1) stature, (2) that is recognized by experts, public, segment of society. Experts disagreed on requirements for stature—public exposure; artist stature à work stature; consensus.  Bottom line: not a “work” and therefore stature didn’t matter; ephemeral nature of works argued against there being recognition.  Artists have now sued for destruction of their works—what a difference a day makes.  Ruling came out one day after the works had been whitewashed.

 

Picasso work: case won in the court of public opinion; outside VARA because of timeframe.  California Art Preservation Act allows public intervention to protect art—allows action to preserve cultural heritage.  Art preservation rather than artist rights’ statute?

 

Mary LaFrance University of Nevada, Las Vegas, William S. Boyd School of Law

False Advertising Claims Against Product Names and Labels 

 

Pom Wonderful: sued for having only a tiny bit of pomegranate and blueberry juice in its 99.4% apple and grape juice “Pomegranate Blueberry Juice” product.  SCt found no FDA safe harbor.  (DCt found same for USDA in 2008.)  So what makes a label false or misleading for state law and for the Lanham Act?  Potential for a flood of litigation.

 

Competitors risk the glass houses problem: their own label is vulnerable to challenge if they sue.  Pom’s Pomegranate Blueberry—what does that imply about the contents?  If they called it Blueberry Pomegranate would they be at risk?  Claims under state false advertising or deceptive trade practices acts?  Consumers do have standing/preemption question is unsettled.  Consumers don’t worry about the glass houses problem.  Class action issues.

 

Deceptively misdescriptive marks can be registered—PTO may have different perception of what is deceptive for registration versus false advertising purposes.  Non-deceptive in the abstract might be deceptive in context of label/ads. E.g., BREATHASURE.  Registered, but cancelled except for chewing gum.  Also registered HEALTHASURE for dietary supplements, which is still on the register.  Harder: health is so broad that perhaps this is puffery.  Mylanta NIGHT TIME STRENGTH—unregistered; found to be literally false. 

 

Gerber “Fruit Juice Snacks”—never even tried to register; false advertising claim allowed by 9^th Cir. Label said “nutritious,” “made w/real fruit juice and other all natural ingredients,” which were corn syrup and water. Package showed a variety of fruits, but only fruit juice was white grape juice from conentrate. Consumers might have different meanings.

 

FROOT LOOPS held not to be deceptive—nobody seeing the packaging would believe there was actual fruit.

 

Terms may have defined meanings under regs, but consumers probably don’t know those meanings.  What would consumers expect about Pomegranate Blueberry juice: 50/50? 85/15 (actual)?  15/85?  10% corn syrup?  What do consumers think? Expects a lot of variation in reactions.  How would Juicy Fruit fare if seeking registration today?

We don’t know what consumers think of the words: organic, natural, free range, low fat/fat free/low carb, light/lite, zero trans fat (up to .5 mg/serving by regs), cholesterol free (up to 2 mg/serving), low cholesterol (up to 20 mg/serving) , zero calories (up to 5 cal/serving), sugar free (up to .5 g/serving), healthy, nutritious, juice v. juice drink v. juice beverage; cane juice.

 

Courts don’t always require survey evidence and sometimes ignore survey evidence that was offered. When they believe they know what a reasonable consumer would infer from a name/label/context.  Courts have not articulated factors or guidelines for determining what a reasonable consumer infers, unlike the multifactor likely confusion analysis. [I think that’s a good thing.]  Consumers may see different things.  [What is wrong with probabalistic analysis?]  Courts do more gut-level analysis in many situations. [Not clear that differs from TM; see Barton Beebe’s study.]

 

Solutions?  Legislation/stricture FDA/USDA regulations. Court-developed standards similar to likelihood of confusion factors?  Will legal uncertainties be good for consumers by encouraging fuller disclosures on labels?

 

RT: Flood of litigation: there was a flood pre-Pom because of California’s law adopting FDA requirements as its own. Not clear how Pom increases the flood because the preemption and preclusion inquiries are different.

[more motivation for the cases you choose to describe: why ask about these particular terms]

Copyrighting appropriation art?

The Jim Crow Museum of Racist Memorabilia has an interesting discussion on the copyrightability of segregation signs. 

 

Q: Does anyone own copyrights to Jim Crow Era segregation signage, such as the famous “Whites Only” or “Colored Entrance” signs?

 

--Jerome Ward

Hartford, Connecticut

 

The answer begins correctly, then veers into wrong/deep theoretical water.  It correctly invokes the short phrases exclusion, then incorrectly invokes the useful article doctrine in claiming that “the signs would have to have artistic merit beyond their simple function to be copyrighted,” though the related doctrines of merger and the idea/expression distinction serve similar functions for informational artifacts.  Finally, there’s this statement:

 

Segregation signs can be copyrighted if they are used, or can be claimed as being used, as art or as artistic statement beyond their original function.  In the mid-to-late 1990s, African-American artist Marchel’le Renise Barber created a line of reproduction Jim Crow Era segregation signs and sold them in her store “Martha’s Crib”.  She copyrighted them as the Martha’s Crib Jim Crow Sign Series:  “Barber conscientiously marks her own signs as reproductions.  Although she meticulously imitates the lettering, shapes, colors, and borders of the originals, she stamps her versions ‘Historical Reproduction’ and sells them at the bargain rate of ten dollars apiece.  She also stamps them with the name of her store, the copyright symbol, and current date.  Her signature replaces that of the companies that commissioned and produced the originals… the date of the ordinance on the originals is displaced by the date of the copyright… it is not the original object or language, but the copy that is copyrighted, reserving to Martha’s Crib the exclusive right to continue to make copies.  The copy, apparently, is an original, a form of intellectual property, whose originality resides in its conception and execution as a copy.”

 

So, original Jim Crow Era segregation signs are not copyrighted in and of themselves, but reproductions or originals used in an art piece or installation can be copyrighted so long as they are used in an original construction or context beyond their original function.

 

While the author cited the Copyright Office for the short phrases/useful articles points, he cites Brian Norman, Representing Segregation: Toward an Aesthetics of Living Jim Crow, and Other Forms of Racial Division SUNY Press 2012 pp 29-30 for this last claim.  But putting a new signature on a public domain or uncopyrightable work won’t make that work copyrightable.  Amy Adler’s work on the functions of appropriation art makes clear that these are recognizable art objects and works of expression, even if they defy interpretation; whatever they are, they aren’t “the same” as the originals despite their near-identicality.  Still, a work can be a work of art without being copyrightable.  But I’ll admit, I’ve had students argue to the contrary, allowing Duchamp to be the author of his famous Fountain.

 

Also, to the extent the signs are assembled into an installation that counts as a fixation, the installation itself may well be a copyrightable compilation.  That just doesn’t confer any rights in the individual signs themselves.

 

H/T Zach Schrag.

Appropriation art and sf book covers

How a Science Fiction Book Cover Became a $5.7 Million Painting: Appropriation art that relies on expanding size, not shrinking compared to the original, for the claim of transformativeness.  E.g., from a program: “[The paintings] are unusual for Brown in that they are based upon paintings made specifically to be reproduced and reduced in scale – their originals versions were commissioned to illustrate the covers of popular science fiction novels. By enlarging them so dramatically, Brown merges the conventions of science fiction illustration with the spectacle of large-scale history or landscape painting by artists such as Jacques-Louis David and J.M.W. Turner.”  It’s not clear how much of the artist’s way of speaking about his work, and his gallery’s, have been affected by fair use case law—and, especially for an appropriation artist, why shouldn’t case law have influence on an artist’s self-concept, as the rest of culture surely does?  Also, this news comes not from the US, but from a country with a distinct fair dealing regime, and yet here the artist is—how should we think about that?

The work of art in an age of mechanical demolition?

Cohen v. G&M Realty L.P., No. 13-cv-05612 (E.D.N.Y. Nov. 20, 2013)

This VARA dispute makes some interesting moves on irreparable harm—it’s hard to see why courts are still stuck in “copyright/TM harm is irreparable” given what they’re doing elsewhere.

Plaintiffs sought to prevent the destruction of their graffiti art on the exterior of defendants’ buildings, which are scheduled for demolition.  The art has now been painted over; the opinion explains the court’s decision to deny a preliminary injunction against the destruction.

Because of the art, the buildings became a significant tourist attraction known as 5Pointz.  One of the pieces in question:

VARA protects against the destruction of works of visual art, but only if they are works of “recognized stature.” To figure out whether plaintiffs’ work qualified, the court went through the history of the art.  Cohen and Wolkoff, the effective owner of the buildings comprising 5Pointz, agreed that the buildings had become a place for distasteful graffiti.  To control the problem, Cohen approached Wolkoff in 2002 to become the curator, and Wolkoff agreed; Cohen was one of the principal contributors to the art and Wolkoff liked his work, though nothing was put in writing.

Under Cohen’s supervision, the quality of the art improved and the site “evolved into a mecca for high-end works by internationally recognized aerosol artists” and a “New York must-see.”  But Wolkoff planned to knock down the buildings to make room for two apartment complexes.  The planning commission required that defendants include 75 affordable housing units and 3,300 square feet of exterior art panels “to be used to maintain artist street wall art in the area.” There was no feasible way to incorporate the existing art into the new buildings.

The parties’ experts understandably disagreed about whether the 24 works at issue were of “recognized stature,” as required by VARA.  Much of the plaintiffs’ testimony “did not differentiate between these discrete words, and by and large assumed that if the work had artistic merit it was ipso facto of recognized stature.”  Defendants’ expert took a restrictive view, opining that a work of recognized stature should be at a level where scholars agree that it is “changing the history of art.”  (OK, I know there’s not much help in the legislative history, but I can’t imagine that’s the standard!)  The art at 5Pointz was not recognized by scholarly works.  Although the expert acknowledged 5Pointz’s recognition as a tourist attraction, she believed that this wouldn’t satisfy VARA unless visitors came to see a particular work, in which case it would be a work of recognized stature even without scholarly recognition. 

By contrast, plaintiff’s expert, whose testimony the court found credible, focused on the works’ quality.  She opined that “recognition” meant “there’s enough people that know what [the work] looks like, and feels like and what it’s trying to impart; that it would be, to me, if it was missing from the canon of art history, that it would be a loss.”  She testified that 5Pointz’s public exposure conferred the requisite stature, and pointed to a documentary he made featuring the site.  She also testified about the general reputation of the artists who contributed works, contending that their recognition conferred significance on any work they did.

The court then turned to the works’ ephemerality.  Wolkoff always told Cohen that he’d be knocking down the buildings, and there were numerous public statements by Cohen and other artists indicating that they knew the works were temporary.  Cohen allowed some works to be painted over; others he deemed “permanent,” meaning that they would last “[a]s long as [he was] there and the operation’s there.” He chose special places for them—mostly high up, and all around the building.  When a collapsed staircase was removed in 2009, the whole building was painted over with the exception of Lady Pink’s “Green Mother Earth.”  Since then, consistent with past years, about “1,000 new images” had been placed on the buildings each year.  At the preliminary injunction hearing, about 350 survived. 

Cohen said in an interview: “Anyone can paint. But not everyone’s art stays up for long. Some works last 12 hours; other pieces remain for two years.” Another artist, Danielle Mastrion, painted a celebrated portrait in July 2013, even though she had “been hearing for years that there’s always a chance that the building can come down,” and was “aware that [the owners] were obtaining approval to knock down the building at the time [she] put the piece on the building.”  Eighteen of the 24 works for which VARA protection was claimed were painted after 2010, and 8 were painted in September, weeks after the planning commission approved the development plan. Thus, “Cohen and his fellow plaintiffs undoubtedly understood that the nature of the exterior aerosol art on Wolkoff’s buildings was transient, and that all of the works that he allowed to be painted on the buildings would last only until they would be demolished to make room for Wolkoff’s housing project.” 

The court concluded that aerosol art can be visual art protected by VARA.  But VARA only protects a work.  There was no authority to preserve 5Pointz as a tourist site.  Thus, the court’s inquiry was limited to whether a particular work that was destroyed was one of “recognized stature.”  The court concluded that at least some of the 24 works, such as Lady Pink’s “Green Mother Earth,” could be shown to be of recognized stature, though that was for a full merits determination.

For preliminary injunctive relief, though, irreparable harm was required, including a showing that damages were inadequate.  And here the court gave short shrift to any nonmonetary interests, which might seem like an odd result in a moral rights case: “plaintiffs would be hard-pressed to contend that no amount of money would compensate them for their paintings; and VARA—which makes no distinction between temporary and permanent works of visual art—provides that significant monetary damages may be awarded for their wrongful destruction.”  Though the court emphasizes the temporary nature of this art, its reasons don’t seem so limited: “paintings generally are meant to be sold. Their value is invariably reflected in the money they command in the marketplace. Here, the works were painted for free, but surely the plaintiffs would gladly have accepted money from the defendants to acquire their works, albeit on a wall rather than on a canvas.”  In addition, the court found that “plaintiffs’ works can live on in other media,” specifically photography.  The works remained protected by copyright law “and could be marketed to the general public—even to those who had never been to 5Pointz.”

But, whether this was part of irreparable harm or of balancing hardships, “the ineluctable factor which precludes either preliminary or permanent injunctive relief was the transient nature of the plaintiffs’ works.”  Cohen always knew that the buildings were coming down “and that his paintings, as well as the others which he allowed to be placed on the walls, would be destroyed.”  The court was particularly distressed by the recent creation of many of the paintings, after the planning commission gave its final approval to the new construction.  “In a very real sense, plaintiffs have created their own hardships.”

Still, defendants shared some responsibility; Wolkoff “gave his blessings to Cohen and the aerosol artists to decorate the buildings, and he did not choose to protect himself from liability by requiring VARA waivers.”  Also, while he was a genuine art lover, he also benefited economically from all the attention to the site.  Since VARA protects even temporary works from discussion, the judge suggested that damages might ultimately be “significant” if a trial determined that the works were of recognized stature.

The public interest would be served by the new apartments, including affordable housing, and its aesthetic interests would be addressed by the new exterior surface available for art.  The court didn’t conceal its preference for defendants to do even more, presumably by way of settlement: “They can make much more space available, and give written permission to Cohen to continue to be the curator so that he may establish a large, permanent home for quality work by him and his acclaimed aerosol artists. For sure, the Court would look kindly on such largesse when it might be required to consider the issue of monetary damages; and 5Pointz, as reincarnated, would live.”

Cute rephrasing of Prince v. Cariou

I belatedly found Shane Ferro's take, via the Art Law Blog.  Worth reading in its (short) entirety, but:

You got yourself in a lot of trouble with this Canal Zone thing. Actually, you got yourself in a lot of trouble when you got sued and then you didn’t take the legal proceedings seriously, which really pissed off the district court judge. That was unappreciated.

However, the system can’t just go overturning current copyright jurisprudence because you were obnoxious under oath. Since you apparently don’t want to or are otherwise unable to argue transformative intent, I’m going to do that on your behalf right now (thank your lawyer). It’s pretty clear from looking at your artwork that the series is totally different from the underlying Cariou works. I get that feeling because they mostly seem to make fun of said works.

It’s not the usual way to defend fair use, but I can’t really argue with the work itself. Cariou’s photos are clearly meant to document, while yours seem to be intended to piss people off (including the artist being appropriated). That is, in fact, one way of being transformative. I find that your complete lack of regard for the meaning of the original works is decent evidence you weren’t stealing them outright.

Twitter as new frontier in appropriation art?

This person is slowly tweeting every line of The Great Gatsby, in between other tweets.  Discuss.

Some incisive commentary on Prince v. Cariou

From Robert Clarida, by way of Donn Zaretsky at the Art Law Blog.  Read it all, but here's an excerpt:

[B]y dwelling on the surface of the works the court may be turning back the clock a little. ... [I]f the standard is to compare the 'aesthetic' of two works, looking only at 'results,' the court has nothing to go on but the physical changes. So overall, I think the decision sort of de-conceptualizes the art and treats it as merely a bunch of marks on a surface -- very old-timey and reductionist.... [C]ertainly the purpose, context and intent of the five remanded pieces are not much different -- if at all -- from the pieces that qualified for fair use; the only difference is the way they look.

Transformativeness doesn't require commentary on original

Cariou v. Prince, No. 11-1197-cv (2d Cir. April 25, 2013)

The court of appeals reversed the grant of summary judgment to photographer Patrick Cariou, and ordered the entry of summary judgment in favor of well-known appropriation artist Richard Prince as to 25 out of 30 works, leaving the district court to analyze 5 for fair use on remand.

Cariou published Yes Rasta, “a book of [20] classical portraits and landscape photographs that he took over the course of six years spent living among Rastafarians in Jamaica.” He testified that the book was “extreme classical photography [and] portraiture,” and that he did not “want that book to look pop culture at all.” The book did not sell out of its initial printing of 7000, and fell out of print; almost 5800 copies were sold, almost 60% at a price below suggested retail of $60.  The publisher paid him just over $8000. Except for a handful of private sales to acquaintances, he never sold or licensed individual photos.

Prince altered and incorporated several of Cariou’s photographs into a series of paintings and collages, called Canal Zone, later exhibited at New York’s Gagosian Gallery. Gagosian sold an exhibition catalog that contained reproductions of Prince’s paintings and images from Prince’s workshop. The district court’s injunction, among other things, ordered the defendants to deliver to Cariou all unsold infringing works so that he could destroy them if he wanted (though on appeal he disavowed any such intention).

The court of appeals concluded that fair use did not require Prince to comment on Cariou, the photos, or aspects of popular culture closely associated with Cariou or the photos.

Prince is a “leading exponent” of the genre of appropriation art, “taking photographs and other images that others have produced and incorporating them into paintings and collages that he then presents, in a different context, as his own.”

In the Canal Zone show, Prince altered Cariou’s photographs “significantly,” “by among other things painting ‘lozenges’ over their subjects’ facial features and using only portions of some of the images.”  You can see all thirty challenged works, along with the Cariou photos incorporated into them, on the court’s website.  The portions of the photos used, and the amount of each Prince work they constituted, varied significantly.  In some, such as James Brown Disco Ball, Prince used headshots from Cariou on top of other appropriated images on top of a painted canvas, almost entirely obscuring Cariou’s work.  Prince’s work was also much larger.

In other works, “Cariou’s original work is readily apparent: Prince did little more than paint blue lozenges over the subject’s eyes and mouth, and paste a picture of a guitar over the subject’s body.” The catalog published by the Gagosian gallery included all the Canal Zone artworks, including some not displayed in the Gagosian show, and also included photos showing Cariou’s photos in Prince’s studio.

Before the Gagosian show, a gallery owner, Cristiane Celle, contacted Cariou and asked if he’d be interested in discussing an exhibit in New York, expressing interest in Cariou’s pictures of surfers.  They met and discussed a possible exhibit, including prints from Yes Rasta, but didn’t select a date, photos, or any other details. At some point during the Canal Zone show, Celle learned that Cariou’s photographs were “in the show with Richard Prince.” She called him, and when he didn’t respond, she mistakenly concluded that he was “doing something with Richard Prince . . . . [Maybe] he’s not pursuing me because he’s doing something better, bigger with this person. . . . [H]e didn’t want to tell the French girl I’m not doing it with you, you know, because we had started a relation and that would have been bad.”  Celle decided not to put on a “Rasta show” because it had been “done already,” but remained interested in exhibiting his surfer prints.

On appeal, the majority concluded that fair use could be resolved for 25 of the paintings on summary judgment.  “[T]he fair use determination is an open-ended and context-sensitive inquiry.” The court quoted Judge Leval’s influential article stating that “if [the original work] is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings – this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.”  

The district court mistakenly required Prince’s use to “comment on, relate to the historical context of, or critically refer back to the original works.”  Certainly this is true for many types of fair use, such as satire and parody.  However, there was no requirement of commentary on the original or its author for transformativeness, and a work may be a fair use even if it serves a purpose other than “criticism, comment, news reporting, teaching, scholarship, and research” as identified in the statutory preamble.  Instead, what is required is alteration of the original with new expression, meaning, or message.

The majority’s “observation of Prince’s artworks themselves” convinced it of the transformative nature of 25 of them.  They “manifest[ed] an entirely different aesthetic from Cariou’s photographs.”  Cariou offered “serene and deliberately composed portraits and landscape photographs depict[ing] the natural beauty of Rastafarians and their surrounding environs,” while Prince’s “crude and jarring works” were “hectic and provocative.”  While Cariou’s black and white photos were printed in a standard-sized photo book, Prince created “collages on canvas that incorporate color, feature distorted human and other forms and settings, and measure between ten and nearly a hundred times the size of the photographs.”  Overall, the “composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs, as is the expressive nature of Prince’s work.”

Moreover, Prince’s deposition testimony demonstrated his “drastically different approach and aesthetic.” He testified that he “[doesn’t] have any really interest in what [another artist’s] original intent is because . . . what I do is I completely try to change it into something that’s completely different. . . . I’m trying to make a kind of fantastic, absolutely hip, up to date, contemporary take on the music scene.”  His artworks related to a planned “post-apocalyptic screenplay” emphasizing themes of sexual equality, highlighting “the three relationships in the world, which are men and women, men and men, and women and women,” and portraying “a contemporary take on the music scene.”  

The district court focused on Prince’s testimony that he “do[es]n’t really have a message,” that he was not “trying to create anything with a new meaning or a new message,” and that he “do[es]n’t have any . . . interest in [Cariou’s] original intent.”  But that didn’t prevent the court from considering how Prince’s works may reasonably be perceived, which is the appropriate measure.  (I have argued as much!)  Prince didn’t need to claim his works were satire or parody.  “[W]e do not analyze satire or parody differently from any other transformative use.”

While it’s not surprising when an alleged infringer goes to great lengths to explain and defend his use, the fact that Prince didn’t do so here wasn’t dispositive.  “What is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work. Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so.”  Thus, the focus was primarily on the artworks themselves.  The court saw 25 of them as transformative as a matter of law, requiring no further factfinding.  (Citing Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012), which affirmed a finding of fair use on a motion to dismiss given the clarity of the transformation, there a parody.)

Not all cosmetic changes to photos are fair use.  As previously held, a derivative work that presents the same material in a new form, such as a book of synopses of TV shows, isn’t transformative.  (Is it adaptive?)  But 25 of the images had a “fundamentally different aesthetic.”  That being so, it didn’t much matter that they were unquestionably commercial (ed. note: copyright has a funky definition of commercial speech). 

Turning next to the effect on the market, it further demonstrated the significant differences between the works. The district court relied on Celle’s decision not to host a Yes Rasta show once she learned of the Canal Zone show and held that Prince damaged actual and potential markets for Cariou’s original work and for derivative work licenses.  But factor four doesn’t “focus principally on the question of damage to Cariou’s derivative market.” The concern is not suppression or destruction of the market for the original or derivatives, but rather usurpation of the market. Moreover, the market for derivative uses includes only those that creators of original works in general would develop/license.  This can occur when an infringer’s target audience and the nature of the infringing content is the same as the original, as with a book of Seinfeld trivia.  But the more transformative the use, the less likelihood of market substitution.

So here.  Celle didn’t decide against a Yes Rasta show because it had already been done, but because she mistakenly believed that Cariou had collaborated with Prince at the Gagosian show.  Prince didn’t usurp the market for the photos.  His audience was very different from Cariou’s, and there was no evidence that Prince’s work usurped either primary or derivative markets for Prince’s works.  Nothing in the record suggested that Cariou would license secondary uses “in the vein of” Prince’s work.  Nor did the record suggest that Prince’s works had any impact on the marketing of the photos. Cariou didn’t aggressively market his work anyway, and Prince’s work “appeals to an entirely different sort of collector”—the wealthy and the famous.  Prince sold works for millions of dollars, while Cariou didn’t, and nothing in the record suggested that anyone would avoid Cariou’s work “as a result of the market space that Prince’s work has taken up.”  Thus, the effect on the market weighed in Prince’s favor.

Given transformativeness, the creativity of Cariou’s work wasn’t important. However, the proportion of the original used (factor three), differed across works.  Some of Prince’s works used the Cariou photos “in whole or substantial part,” and in some works such as Charlie Company Prince didn’t alter the source photo very much.  In others, such as Djuana Barnes, Natalie Barney, Renee Vivien and Romaine Brooks take over the Guanahani, the entire photo was used but also “heavily obscured and altered” so that it was “barely recognizable.”  Copying the entire work doesn’t always weigh against fair use; the extent of permissible copying varies with the purpose and character of the use.

 

Charlie Company and original Cariou photo:

 

 

Djuana Barnes and Cariou photo:

 

The district court determined that Prince took substantially more than necessary.  “We are not clear as to how the district court could arrive at such a conclusion.”  (We’d first have to know what was necessary in art.)  Anyway, the law doesn’t require a secondary artist to take “no more than is necessary.”  The secondary use can conjure up at least enough of the original to fulfill its transformative purpose; use of key portions of Cariou’s photos was, in 25 instances, okay because Prince transformed them into something new and different, making factor three weigh heavily in Prince’s favor.

However, five works—Graduation, Meditation, Canal Zone (2008), Canal Zone (2007), and Charlie Company—weren’t sufficiently different from the photos for the court to be confident that they were transformative as a matter of law.  “Although the minimal alterations that Prince made in those instances moved the work in a different direction from Cariou’s classical portraiture and landscape photos, we can not say with certainty at this point whether those artworks present a “‘new expression, meaning, or message.’” True, there were “key differences” in things like tint and focus, as well as the lozenges over subjects’ eyes and mouth that made each “appear anonymous, rather than as the strong individual who appears in the original.”

Graduation and Cariou photo:

In Graduation, the lozenges combined with the enlarged hands and electric guitar to create the impression that the subject wasn’t quite human, compared to Cariou’s “human being in his natural habitat, looking intently ahead.” Cariou presented “someone comfortably at home in nature,” while Graduation “combines divergent elements to create a sense of discomfort.” But the court wasn’t certain enough to rule definitively, and it felt the same way about the other four.  Each was different from, but “still similar in key aesthetic ways,” to Cariou’s photographs.  For example, in Canal Zone (2008), Prince put the subject, with lozenges and guitar, on a collaged background, creating the cumulative effect of “the subject in a habitat replete with lush greenery, not dissimilar from many of Cariou’s Yes Rasta photographs”:

 

Charlie Company prominently displayed four substantially unaltered copies of a Cariou photo, which was aesthetically similar to the photo because it maintained the pastoral background and individual focal point of the original.  “While the lozenges, repetition of the images, and addition of the nude female unarguably change the tenor of the piece, it is unclear whether these alterations amount to a sufficient transformation of the original work of art such that the new work is transformative.” 

The district court was in the best position to make the initial determination of whether the relatively minimal alterations were fair uses, including whether they were transformative.  (What standard is the district court to use?  It sure seems like a new meaning or message may reasonably be perceived.  Aren’t circuit court judges reasonable as a matter of law?)

Judge Wallace (9^th Cir., by designation) concurred in part and dissented in part, arguing that the majority mostly got the law right but should have left all the application thereof to the district court on remand.  Plus, he would have allowed the court to consider Prince’s statements, since the court has relied on creators’ statements before, e.g., Blanch v. Koons and Castle Rock (the Seinfeld case).  Brownmark, the case on which the majority relied, was so clear a case that no further evidence other than a “fleeting glance” at the two works was required.  Judge Wallace didn’t believe that the transformativeness here could so readily be determined.  He wanted evidence other than “our own artistic perceptions of the original and secondary works.”  While he disclaimed expertise in art, he couldn’t see how the majority could “confidently” distinguish between the 25 works it blessed and the 5 it didn’t.  Quoting Campbell quoting Bleistein, “[I]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits.’”  (It’s not clear to me that sending it back to the district court, also embodied by a person trained to the law, solves this problem!  But he thinks there might be other evidence that might matter—though what?  Surveys?)