Category Archives: Copyright

Case Act Overwhelming Passes the House of Representatives

We are thrilled to report that the CASE Act (H.R. 2426) was passed by the House of Representative this evening, October 22, 2019, by a vote of 410-6.  It’s a great day for creators!

“Today’s vote by the House further attests to the tremendous support that’s been demonstrated for the CASE Act, legislation that will provide U.S. creators with a viable means for defending their copyrighted works through the creation of a small claims tribunal within the U.S. Copyright Office”, says Keith Kupferschmid, CEO of the Copyright Alliance.

He continues “Today’s vote by the House demonstrates not only the support for the bill but also the fact that members of Congress could not be bamboozled into believing the numerous falsehoods about the CASE Act that were proffered by those who philosophically oppose any copyright legislation that will help the creative community and who will use any means to achieve their illicit goals.”

DMLA has been working on this bill along with the Copyright Alliance and a group of other visual associations over the last ten years and it is great to see all the hard work pay off.  A special thanks to Nancy Wolff, DMLA Counsel and Cathy Aron, DMLA Executive Director for their roles in this important legislation.

We still have work to do to make sure this gets passed in the Senate, so please keep the pressure on with your U.S. Senators.

A copy of the bill can be found here.

Artist v. Artist

The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith Et. Al.

Fair Use broadens in Artist Works

A recent court decision in the Second Circuit solidified the expanding and evolving scope of fair use in appropriation art, showing that obtaining a license to use other copyrighted works as artistic inspiration is not always necessary. In the opinion, published on July 1, 2019, Manhattan Federal Judge John G. Koeltel held that Andy Warhol’s use of a photograph of Prince as “source art” is fair use and requires no license, credit or compensation to the original photographer.

Original Warhol works

The history of the case is as follows. In 1984,Vanity Fair obtained a $400 license from celebrity photographer, Lynn Goldsmith, to supply her portraits of Prince as source art to another artist for one of their upcoming articles, none other than Andy Warhol. Warhol took the portraits Goldsmith had taken of Prince years prior and used them as inspiration to create sixteen new works – twelve silk-screen paintings, 2 screen prints on paper, and 2 drawings. In classic Warhol fashion, the works cropped the original photo and added bright, unnatural coloring to Goldsmith’s black and white originals. One of the pieces was chosen to accompany a Vanity Fair article about Prince titled “Purple Fame,” and the magazine included a small source credit to Goldsmith.

Above: Goldsmith’s portrait; 1984 Vanity Fair article 

When Prince passed away in 2016, Vanity Fair republished the Warhol work; this time, without a license and without giving credit to Goldsmith. According to Goldsmith, it was not until this 2016 republication that she became aware of the Warhol works based on her photograph. Soon after, Goldsmith notified the Andy Warhol Foundation (AWF), which manages Warhol’s works, sharing that she believed there had been an infringement of her copyright. In disagreement, AWF filed a motion for declaratory judgement that the Warhol works do not constitute copyright infringement under the affirmative defense of fair use. She counter-sued for infringement.

Vanity Fair 2006 reprint of Warhol’s work

According to Goldsmith, her black and white portraits were intended to capture Prince’s vulnerability and demeanor as “not a comfortable person.” Meanwhile, the court found that the Warhol works transforms Prince “from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” Such transformation is essential to the outcome of this case.

To analyze a fair use defense and allow for circumvention of traditional copyright requirements, courts will balance the following factors (The Copyright Act of 1976, 17 U.S.C. §107):

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

In the decision, Judge Koeltel emphasized that the more transformative a work is, the less important each factor becomes and the more likely it is that a work is covered by fair use. In this case, the purpose and character of Warhol’s work was to accompany a commercial article discussing Prince’s fame – not his vulnerability. The purpose of the work was so transformed that the works are not substantially similar or likely to be confused. Similarly, although substantial use of an original can weigh against a finding of fair use, the court emphasized that a transformative work, by nature, needs to copy a substantial amount of the original in order to transform it, justifying Warhol’s substantial use of Goldsmith’s work as source art.

Ultimately, while the Warhol works in this case merely cropped and added colors to Goldsmith’s original portrait, the court found that the overall result was transformative such that there was no copyright infringement issue. Giving rise to public controversy, the court also considered factors outside of fair use, such as the public benefit of having access to Warhol’s works and the fact that Warhol’s works are immediately recognizable as his own.

Fair use is decided on a case by case basis, no two cases are alike. How one judges whether a use is transformative and non-infringing or derivative and infringing can be a close call. It is helpful in comparing works to consider the following. Is the purpose of the final product or project similar to the original? How much of the copyright-able elements (e.g., lighting, positioning, imagery, etc.) of the original will be retained? Would the other work create legitimate and direct market competition to the original work, including a license for a derivative? If the new use is a work of visual art and does not retain much of the underlying copyright-able elements of the original, it is likely that the use will be considered transformative and non- infringing, especially if created by Warhol.

______________________________________________________________________

To read the full case, see: https://law.justia.com/cases/federal/district-courts/new-york/nysdce/1:2017cv02532/472094/84/

 

Case Act Takes Big Step Forward

June 24, 2019 — DMLA board member Rick Gell, spoke briefly with Nancy Wolff, DMLA’s Senior Legal Counsel, who has been in the trenches fighting for the CASE Act on behalf of our content licensing community. The Case Act just took a big step in Congress.

Nancy, briefly, what happened last week?

The Case Act was marked up by the Judiciary Committee of the Senate and will now move to the full Senate. We are still waiting for the House Judiciary Committee to mark up a similar bill.

I know a thing or two about IP Law, but nothing about Small Claims Courts. Can you provide a little background?

Because copyright is a federal law, copyright disputes can only be resolved in federal court, which is an expensive forum for the typical disputes involving the misuse of images and video. Just to start a claim, the filing fee is $400 and you need to use an experienced federal court attorney. Litigation can cost hundreds of thousands of dollars. Small claims courts most people are familiar with cannot be used because they are only for claims that can be brought in state court.

The UK established a copyright Small Claims Court in 2012 which is dedicated only to copyright cases. What is being proposed in Congress is to have claims of relatively lesser value resolved by a special tribunal at the Copyright Office. You would not need to have a lawyer and the claims could primarily be resolved on paper or by telephonic calls, without travel expenses.

So, if I understand this correctly, in a proposed copyright small claims court, both parties agree to appear before this tribunal and wave a trial by jury, therefore it is “voluntary”?

Yes. You can bring a claim in the copyright Small Claims Tribunal, and the other side can agree to use the tribunal or “opt out”. If the other party opts out, it can still be sued in federal court.

It creates a new pathway for those who allege their copyright has been infringed and those who are facing a claim of infringement. If your copyright claim is less than $15,000 for each instance, $30,000 in total – you are eligible.

When did the idea of using a Small Claims Court for IP start?

Many of us, including myself, have worked on enacting a copyright Small Claims Court for over ten years. The Copyright Office began studying this issue, conducted hearings and wrote a report in September 2013 recommending a separate copyright tribunal. The DMLA has been working with a coalition of associations of visual artists for many years, as well as the Copyright Alliance, Songwriters Guild, Authors Guild and many others, meeting with Congress and encouraging grassroots efforts by members to obtain sponsors for the CASE Act in both the House and Senate and to ultimately get this bill passed.

Who will the judges be?

The US Copyright Office will create a panel of three officials, who are experts in copyright law to oversee the process. This should encourage registration as there may finally be an affordable venue for enforcement.

There has been some recent opposition, primarily from the Electronic Frontier Foundation about encouraging copyright trolls. Can you speak to their concern?

The CASE Act in both the House and Senate have precautions against abuse and excessive filings. Creators are entitled to enforce copyright when their works are infringed. The use of the terms copyright troll is often misused and attributed to anyone trying to enforce copyright. Courts have generally reserved this term for attorneys who file a high volume of cases without trying to settle first, in order to obtain higher fees than are reasonable. It is not likely these attorneys will participate in this tribunal. If creators have a viable option, they can bring standard copyright claims in this tribunal without attorneys.

As the tribunal is optional, the EFF should not have any concerns as anyone can elect to opt out. The EFF often portrays copyright infringement as infringing on free speech, without properly recognizing copyright owners legitimate right to control the use of their works. The DMLA and our members are strong supporters of free speech and the Copyright Act provides limited use without permission under the fair use doctrine in keeping with the First Amendment. Copyright enforcement and free speech are not mutually exclusive and copyright infringement is not equivalent to censorship.

What is the next step?

When the full senate returns from vacation, hopefully Mitch McConnell will bring the measure to the floor for a full vote. Then on to the House.